Sitrick v. DreamWorks and Warner Brothers (CAFC 2007-1174)

The accused product was ReVoice Studio, which lets users add their own voiceover to a pre-made DVD.

While the district court engaged a Special Master, the output was ignored. That didn't stop Central California Judge Stephen Wilson from ruling.

The Special Master's cursory report regarding Defendants' motion for summary judgment of invalidity for lack of enablement included no discussion of the asserted claims. The Special Master nonetheless recommended denying the motion because neither Sitrick nor Defendants presented specific evidence regarding the level of ordinary skill in the art.

The district court declined to adopt the Special Master's recommendation and in a detailed and thorough opinion granted summary judgment in favor of Defendants because it found all asserted claims of the '864 and '825 patents invalid for lack of enablement as to movies. Sitrick v. Dreamworks, LLC, No. 03-4265 (N.D. Cal. July 21, 2006). The district court did not reach the issue of whether the asserted claims would have been enabled for video games. Id. at 73. The district court also found the claims of the '825 patent invalid for indefiniteness, and found there existed no triable issue of fact as to infringement of claim 54 of the '864 patent. Id. at 17, 84-91.

The court extends case law: claims must be fully enabled -

The evidentiary burden to show facts supporting a conclusion of invalidity is one of clear and convincing evidence because a patent is presumed valid. AK Steel Corp. v. Sollac, 344 F.3d 1234, 1238-39 (Fed. Cir. 2003). The "enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation." Id. at 1244.

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 asserted claims encompassed both video games and movies, and so both embodiments were needed to be enabled, so the CAFC ruled.

Because the asserted claims are broad enough to cover both movies and video games, the patents must enable both embodiments. See Auto. Techs. Int'l, 501 F.3d at 1285 ("Disclosure of only mechanical side impact sensors does not permit one skilled in the art to make and use the invention as broadly as it was claimed, which includes electronic side impact sensors."). Even if the claims are enabled with respect to video games--an issue we need not decide--the claims are not enabled if the patents do not also enable for movies.

The defendants met their evidentiary burden by specification analysis and expert witnesses.

Defendants showed with clear and convincing evidence that one skilled in the art could not take the disclosure in the specification with respect to substitution or integration of user images in video games and substitute a user image for a pre-existing character image in movies without undue experimentation. Defendants supported their motion for summary judgment of invalidity by reference to the teachings of the specifications and the opinions of their two experts.

An enablement analysis begins with the disclosure in the specification. Neither patent specification in this case teaches how the substitution and integration of a user image would be accomplished in movies.

Defendants' two experts explained that one skilled in the art would not to be able to take the teachings regarding video games and apply them to movies. Both experts explained that movies and video games are technically different. The experts opined that the claims are not enabled because the analysis techniques described in the specification for identifying character functions or intercepting character signals have no relevance to movies.