CreAgri, Inc. v. Pinnaclife, Inc.

Where a patent's description amounts only to a wish or plan to achieve the claimed invention the description does not meet the written description requirement and the patent is invalid.

Opinion (KOH): CreAgri, Inc. ("CreAgri") sued Pinnaclife ("Pinnaclife") alleging infringement of its Pat. Nos. 6,416,808 and 8,216,599. The '808 patent claims dietary supplements made from olives, while the '599 claims a method for using compounds derived from olives in the treatment of inflammation caused by seven distinct conditions. Pinnaclife moved for summary judgment of invalidity for both patents. A patent is invalid if the invention was described in a previously issued patent or if its subject matter was known before the challenged patent's application was filed. In its anticipation analysis the district court considered a patent and an article both of which described using the compositions claimed in the '808 patent. Because the prior art contained all of patent's claims, the court held the '808 patent invalid for anticipation. Pinnaclife challenged the '599 patent by arguing that it was insufficiently enabled and that its specification failed to provide a sufficient written description. A patent's specification must provide a written description that would allow a person skilled in the art to determine that the inventor actually invented the claimed invention. The '599 specification did not include any data or basis from which one could conclude that the treatment described was effective at the time the application was filed. A description that only amounts to a wish or plan to achieve the claimed invention does not meet the written description requirement. Because the specification did not demonstrate that the inventor actually possessed a functional treatment, the district court held the '599 patent invalid. To qualify for protection a patent claim must provide sufficient detail to enable one skilled in the art to successfully build and operate the claimed invention. Accordingly, where a patentee cannot demonstrate that his claimed invention actually operates, his patent is insufficiently enabled. The '599 patent did not demonstrate that the methods claimed were effective in treating inflammation from all of the causes claimed. Because it did not demonstrate that it actually operated to relieve inflammation from all of the claimed sources, the court held the patent INVALID for insufficient enablement.