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Judge Andrews: Written Description is a Question of Fact and Not Appropriate to Resolve on a Motion to Dismiss

Several defendants in these cases filed motions to dismiss on the basis that the asserted patent claims are invalid for lack of written description. In briefing, the parties each pointed out that neither side had provided case law addressing whether a District Court does or does not have authority to resolve a written description dispute on the pleadings. Judge Andrews agreed with the “valid concerns” raised by the Plaintiff and denied the motions without prejudice: “Adequate written description is a question of fact. Patent claims are presumed to be valid. In order to invalidate a patent claim on the basis of inadequate written description, I would have to find, by clear and convincing evidence, that the patent specification does not describe the claimed invention sufficiently to reasonably convey to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Typically, to make such a finding requires claim construction and expert testimony about what those skilled in the art would understand from the specification. At this stage of the proceeding, there has been no claim construction, and, of course, on a motion to dismiss there will be no expert testimony. I do not believe that it is appropriate at this time to consider inadequate written description on these motions to dismiss.” Blackbird Tech LLC v. Service Lighting and Electrical, et al., C.A. No. 15-53-RGA, Memo. Or. at 1-2 (D. Del. Dec. 1, 2015) (internal quotations omitted).

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