Specification’s Focus on Unclaimed Embodiment Does Not Preclude Written Description Support, and Assembler of Multi-Component System Can Infringe Even if It Does Not Make Each Component

The patentee appealed a summary judgment decision finding its claims invalid for lack of written description and not infringed. The Federal Circuit reversed.

“Only two sentences” of the specification described the claimed embodiment. In finding invalidity, “the district court leaned heavily on the fact that the specification devoted relatively less attention” to that embodiment than an unclaimed alternative. However, “the fact that the bulk of the specification discusses a system” that is unclaimed “does not necessarily mean that the inventors did not also constructively reduce to practice” the claimed invention. Nor does the specification need to recite details of the invention that are “not particularly complex or unpredictable.”

On infringement, the district court incorrectly “held that a defendant must be the actor who assembles the entire claimed system to be liable for direct infringement.” Instead, “a final assembler can be liable for making an infringing combination – assuming the evidence supports such a finding – even if it does not make each individual component element.”