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February 10, 2008

Black Hole of Enablement

Enablement was spun into a black hole of uncertainty by the CAFC in Sitrick v. Dreamworks, which expanded the enablement requirement at least to the degree that an accused product must be a disclosed embodiment for a claim to be enabled. Hal Wegner: "In essence, Sitrick voids any generic claim that is fully enabled as to a preferred embodiment, but includes other embodiments not yet enabled." Can a patent now be invalidated by showing any undisclosed embodiment within the scope of a claim?

In Sitrick, the court cleared its throat with the phlegmatic:

The "enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation." AK Steel Corp. v. Sollac, 344 F.3d 1244 (Fed. Cir. 2003)

But then shoots the moon with:

The full scope of the claimed invention must be enabled. See Auto. Techs. Int'l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1285 (Fed. Cir. 2007). The rationale for this statutory requirement is straightforward. Enabling the full scope of each claim is "part of the quid pro quo of the patent bargain." AK Steel, 344 F.3d at 1244. A patentee who chooses broad claim language must make sure the broad claims are fully enabled. "The scope of the claims must be less than or equal to the scope of the enablement" to "ensure[] that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims." Nat'l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195-96 (Fed. Cir. 1999).

The case law "practice the claimed invention without undue experimentation" dovetails nicely with the statutory "full, clear, concise, and exact terms as to enable any person skilled in the art to make and use the same... invention;" but there is a huge leap to "the full scope of the claimed invention must be enabled."

Hal Wegner (analysis):

In Sitrick v. Dreamworks, LLC, __ F.3d __ (Fed. Cir. 2008)(Moore, J.) (attached), a generic claim fully enabled for a preferred embodiment was nevertheless struck down for invalidity under 35 USC § 112, ¶ 1, because other embodiments within the genus were not enabled, creating a conflict with a separate line of case law manifested by CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333 (Fed. Cir. 2003)(Rader, J.). Sitrick also perpetuates a conflict a long line of Supreme Court precedent manifested by teachings from Deering v. Winona Harvester Works, 155 U.S. 286 (1894); and Essex Razor Blade Corp. v. Gillette Safety Razor Co., 299 U.S. 94 (1936).

In a nutshell, Sitrick denies validity of a generic claim fully enabled for its preferred embodiment where the claim uses terminology open to include other not yet enabled embodiments. In contrast to Sitrick, early Supreme Court precedent has expressed approval for broad generic protection for a pioneer inventor who has provided only a limited scope of enablement, including examples Elias Howe's sewing machine needle and King C. Gillette's safety razor.

Modern precedent following the Supreme Court is manifested in Judge Rader's statement in 2003 that "[i]mprovement and selection inventions are ubiquitous in patent law; such developments do not alone cast doubt on enablement of the original invention." CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1340 (Fed. Cir. 2003)(Rader, J.), citing Hormone Research Found., Inc. v. Genentech, Inc., 904 F.2d 1558, 1568 (Fed.Cir.1990), citing In re Hogan, 559 F.2d 595 (CCPA 1977). Thus, "[i]n general, few patented inventions are an immediate commercial success. Rather, most inventions require further development to achieve commercial success. Thus, additional inventive work does not alone show nonenablement." Id.

Professor Dennis Crouch:

The "full scope" doctrine has serious deficiencies. The most notable are the potentially chaotic results from applying the doctrine to claims that include the comprising transition language. The problem arises because the comprising transition allows a claim implicitly encompass a wide variety of add on limitations that might be found in an infringing device.

The doomed claims were image processing method and system means claims.

Sitrick has unsettled what constitutes enablement; and is likely to reverberate as a tool to try to invalidate patents, by showing undisclosed embodiments within claim scope, until further clarification, either from the CAFC or SCOTUS.

Posted by Patent Hawk at February 10, 2008 11:15 PM | § 112

Comments

One can always construct a non-functional embodiment inside the scope of a claim, if that is what the reader of the patent is deemed to be trying his best to achieve. But, come on, that's no serious evidence of invalidity, is it? Conversely, if the reader of the patent is presumed to be trying in good faith to perform the claimed invention throughout the claimed range yet, despite best efforts, simply can't, then the "deal" between Inventor and Public is not done. This is pretty fundamental stuff, intrinsic to any right-thinking patent system isn't it? Prof. Crouch fears chaos. No sign of that yet in the EPO, after 30 years and literally thousands of decisions on exactly this point. The EPO utilises the "Principle of Synthetical Propensity". Judge Rader comes to Europe relatively often. I bet he's heard of it. The EPO chemical Boards of Appeal distinguish quite effortlessly between Type I cases "Whole New Principle claimed: one Example enough" and Type II cases "Surprising experimental result: no reason to expect other molecules to do the same". Come on, no reason to panic, if the Europeans can do it, so can you, no?

Posted by: MaxDrei at February 11, 2008 3:53 AM

Before we go off the "deep end" (and into the "black hole") on what Sitrick stands for on "enabling the claim scope," and admittedly in defense of Judge Moore's opinion (what an unpleasant and disturbing thought), let's consider the facts of this case. First, the patentee wanted to claim both video games and movies, but only detailed the exemplification for video games for the "black box" controller 260C, and provided only a paucity of exemplification for controller 260C for movies (and not even any incorporation by reference from other sources). Second, as the evidence at trial pointed out (if it is to be believed) is that going from video games to movies was not so readily apparent to one skilled in the art as far as controller 260C is concerned. So let's cool our jets here (and believe my jets can sometimes get too hot before I do some reflection) and not suddenly raise Sitrick to the level that some have raised it to on "enabling the scope of the claim."

Posted by: EG at February 11, 2008 8:18 AM

If an inventor thinks of an improved 'best mode of the invention' shown in the drawings submitted after their patent application is filed,would that new best mode be protected by the patent if it issues since the new best mode of the invention is enabled in the specification and drawings but has a minor but substantial improvement onto its shape, simplifying manufacturing possibilities? Or should the inventor file a CIP and disclose it in a new application? What's the foolproof method as a potential infringer could think of the minor improved but easier to manufacture version of the invention and think they have 'designed around' the issued patent's apparatus claims? Thank you.

Posted by: Joe F. at February 23, 2008 7:40 AM