D Three v Sunmodo Corp

D THREE ENTERPRISES, LLC, Plaintiff-Appellant v. SUNMODO CORPORATION, Defendant-Appellee

2017-1909, 2017-1910
Decided: May 21, 2018

The district court granted summary judgment in favor of appellees based on a determination that D Three could not claim priority from a provisional application filed February 9, 2009 (“2009 Application”). The priority claim was necessary to D Three’s case, since it was undisputed that the appellees’ allegedly infringing products were available to the public prior to the effective filing dates of the utility applications upon which the infringement claims were based. The Court affirmed, finding that the 2009 Application did not meet the written description requirement of 35 U.S.C. § 112(a).

The patents-in-suit were directed to roof mount sealing assemblies that allow mounting of objects on a roof and sealing the mounting location against water. The Court stated that all but one claim in each of the two asserted patents “recite washerless assemblies.” The district court determined that the 2009 Application disclosed only one washerless assembly having only one type of attachment bracket.

The Court agreed that the disclosure of the 2009 Application was inadequate to support the priority claim, stating: “to claim a genus, a patentee must disclose ‘a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that [a PHOSITA] can visualize or recognize the members of the genus,’” citing Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc). The Court also stated that “the 2009 Application in no way contemplates the use of other types of attachment brackets in a washerless assembly” and “never uses the term washerless, or describes any other types of attachment brackets that could be used in the claimed roof mount assemblies.”

Read more: Federal Bar member attorneys may access the full case summary by registered patent attorney B.C. “Bill” Killough in the June 2018 issue of Federal Circuit Case Digest

B.C. Killough is a registered patent attorney based in Charleston, SC. On behalf of his clients, Bill has obtained more than 300 United States patents, participated in prosecuting more than 100 foreign patent applications and he has filed more than 1000 trademark applications with the US Patent and Trademark Offices.

Additionally, you may read the full opinion here.