Judge Andrews Denies Written Description Defense at Motion to Dismiss Stage

January 5, 2016

Publication| Intellectual Property

In Blackbird Tech LLC v. Service Lighting and Electrical, C.A. No. 15-53-RGA (D. Del. Dec. 1, 2015), Judge Andrews denied defendants’ motion to dismiss on the basis that the claims of the patent-in-suit were invalid for lack of written description. Rejecting defendants’ argument that it was proper to decide whether a patent was invalid for lack of adequate written description based solely on the pleadings, Judge Andrews explained that “[t]ypically, to make such a finding requires claim construction and expert testimony about what those skilled in the art would understand from the specification.” Judge Andrews concluded that, as there had been no claim construction and expert testimony at the motion to dismiss stage, it would not be appropriate to consider a motion to dismiss based on a lack of written description.

Analysis: In contrast to the growing number of motions to dismiss being granted on patent ineligibility under 35 U.S.C. § 101, lack of written description under 35 U.S.C. § 112 remains a defense less appropriate for resolution at the motion to dismiss stage.

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