LizardTech, Inc. v. Earth Resource Mapping, Inc.

LizardTech, Inc. (plaintiff) was an exclusive licensee under a patent (the ‘835 patent) directed to a method for producing a seamless discrete wavelet transform (DWT), which was intended to reduce edge artifacts produced between pieces, or tiles, of a digital image when a conventional DWT was performed for compression purposes. The ‘835 patent specification described several steps in producing a seamless DWT, including performing a DWT on each tile to output each tile image data “as a succession of DWT coefficients,” then “maintaining updated sums of said DWT coefficients,” then “periodically compressing said sums.” The specification did not disclose any other method of performing a seamless DWT. Claim 1 of the ‘835 patent recited “[a] method for selectively viewing areas of an image at multiple resolutions in a computer” and listed several steps, including the update and compression steps. Claim 21 of the ‘835 patent was identical to claim 1, except that claim 21 did not recite the update and compression steps. Claim 21 also did not use the word “seamless.” LizardTech sued Earth Source Mapping, Inc. (ERM) (defendant), alleging infringement of claims 1, 13, 21–25, 27, and 28 of the ‘835 patent. ERM raised an invalidity defense as to claim 21 and its dependent claims (22–25, 27, and 28), contending that those claims were invalid for failing to satisfy the written-description requirement of 35 U.S.C. § 112. The United States District Court for the Western District of Washington agreed and entered a final judgment of invalidity of claims 21–25, 27, and 28 for noncompliance with 35 U.S.C. § 112. LizardTech appealed and argued that claim 21 complied with the written-description requirement because the ‘835 patent specification adequately described each individual step recited in claim 21 and because the specification adequately described a process of creating a seamless DWT.