In In re Global IP Holdings LLC, decided July 5, 2019, the Federal Circuit found the United States Patent and Trademark Office (USPTO) decision, which found the reissue claims unpatentable under the written description requirement of 35 U.S.C. § 112, first paragraph, was deficient. For example, the PTAB failed to properly consider predictability and criticality, based on the record evidence.

Global’s patent claimed carpeted automotive vehicle load floors having sandwich-type composite panels with cellular cores. Global had filed a reissue application seeking to replace the term “thermoplastic” with “plastic” in independent claims.

The Court stated that the PTAB should consider “the predictability of substituting generic plastics for thermoplastics in the skins and cellular cores of vehicle load floors [because it] is relevant to the written description inquiry” and that “in some cases, the criticality or importance of the expressly disclosed species may be relevant to whether an inventor had possession of a claimed genus.”