April 26, 2008
21st Century Schizoid Everyman
Sitrick v. Dreamworks stirred muddy water. Marc Brown of McDermott Will & Emery worries: "Without realizing it, a recent series of Federal Circuit decisions has established a standard for enablement that may arguably be higher than any patent can meet." Is the concern justified? Why hasn't enablement had a head-on collision with its alter ego behind obviousness and the doctrine of equivalents?
In Sitrick v. Dreamworks, the CAFC stretched § 112, ¶ 1 enablement into full-scope claim coverage:
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)
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).
Sitrick claimed "video." Sitrick disclosed video games. Sitrick asserted against Dreamworks for movies. The claims were invalidated. Be careful what you assert against.
ATI v. BMW et al was similar. The ATI patent had means claims, applicable to mechanical and electronic sensors. The spec elaborated on mechanical side-impact sensors, but fell short on electronic sensors, the asserted technology. Hence killed by the written description requirement.
§ 112, ¶ 1 does require "full, clear, concise, and exact terms." But no attention was paid to the case law incongruity between "undue experimentation" in AK Steel and "full scope" enablement in the ATI and Sitrick cases.
There's a gaping double standard of "ordinary skill in the art" between the current enablement regime and prior art invalidity. KSR-empowered obviousness, with its omnificent, creative everyman, allows leaps of technology to damn patentability. In Leapfrog v. Fisher-Price & Mattel, an electronic child learning toy is obvious in view of an ersatz mechanical version lacking claimed features, combined with other technologies necessary to make the old toy seem shiny.
In Sitrick, Joe "KSR" Ordinary would have had no problem adapting the video teaching to movies.
Sitrick and ATI both went to claim scope covering different but equivalent technologies.
Where is the line now drawn for § 112, ¶ 1? What of enablement for the same technology? Is a genus claim invalid for asserting against a different species from that disclosed when the technologies are identical?
At what point does "undue experimentation" take the stage?
Just a few years ago, Mr. Undue was more reticent. Judge Rader, on the Sitrick panel, wrote CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333 (Fed. Cir. 2003).
Improvement and selection inventions are ubiquitous in patent law; such developments do not alone cast doubt on enablement of the original invention. See 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)). In 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.
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.
If there is any logical place to demarcate a decimating enablement standard under the new regime, it is at obvious developments in the same technology.
In KSR obviousness, everything is obvious to try. The combinatorial possibilities or permutations must be infinite before experimentation becomes undue.
Roll in the doctrine of equivalents, underpinned by what one of ordinary skill would consider similar. The recent CAFC Honeywell v. Hamilton Sundstrand cited the cornerstone of DOE.
Under the doctrine of the equivalents, "a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is 'equivalence' between the elements of the accused product or process and the claimed elements of the patented invention." Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997) (citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950)).
DOE goes down in prosecution estoppel flames over foreseeability. Honeywell again -
By its very nature, objective unforeseeability depends on underlying factual issues relating to, for example, the state of the art and the understanding of a hypothetical person of ordinary skill in the art at the time of the amendment.
Like obviousness, much equivalence is foreseeable to a court-empowered everyman. But, under the most recent CAFC rulings, Joe Ordinary couldn't enable his way out of a paper bag. Guess that's the difference between hindsight and real problem-solving, to a hypothetical CAFC patent everyman.
Something is obviously wrong with patent case law when "one of ordinary skill in the art" is so divergently defined.
Posted by Patent Hawk at April 26, 2008 3:40 PM | § 112
To answer your question:
Why hasn't enablement had a head-on collision with its alter ego behind obviousness and the doctrine of equivalents?
Judges read the business press and hear the relentless drumbeat about the patent system being "broken." The ubiquitous anti-patent attitude is also fueled by non-scientist law school professors (who write amicus briefs) [I know that some of them are trained in the sciences, but many are not]. I wouldn't be surprised if some of these guys receive research grants from CPF companies - law professors are certainly CHEAPER to buy off than senators.
Posted by: anonymousAgent at April 26, 2008 11:42 PM
Should we not limit inventors to their actual inventions (and equivalents) they had at the time of filing?
Inventors write their own application, have every means at their disposal to describe their invention at the time of filing and are the masters of the scope of their disclosures. Therefore, should it not be incumbent upon them to explain the scope of their invention. Why is everyone crying for Sitrick? How hard, if they honestly had an invention to cover movies, would it be for them to mention that in the specification. Movies have been around longer than video games, and I am sure that the Sitrick inventors had seen a movie before. Thus if the invention actually applied to movie/video, why was it not stated so? The fact of the matter is that the Inventors had not invented a system that was to be used with movies. If they had, they could have included one simple sentence: “This invention is also to be used with movies.”
Posted by: Austin at April 27, 2008 8:37 AM
Nice post, Hawk. Don't know if you're aware that in the chemical sphere we've got the Rasmusson decision from a few years back that says the same thing - applicant's description wasn't good enough for enablement, but earlier publication of the same description in Europe was good enough to be invalidating prior art. In that decision they cite an earlier one, the name of which escapes me right now, in support of their proposition that the patent statute itself establishes two different criteria for skill in the art when it comes to enablement versus obviousness.
Posted by: Federally Circuitous at April 27, 2008 12:34 PM
Thanks for the comments.
The drug case referred to is Rasmusson v. Smithkline Beecham (CAFC 04-191, -1192): http://www.cafc.uscourts.gov/opinions/04-1191.pdf
The context is different, as it goes to drug efficacy. But the double standard for anticipation and enablement is enunciated, court-contrived rigging without basis in statute: “The standard for what constitutes proper enablement of a prior art reference for purposes of anticipation under section 102, however, differs from the enablement standard under section 112.”
In order to satisfy the enablement requirement of section 112, an applicant must describe the manner of making and using the invention “in such full, clear, concise, and exact terms as to enable any person skilled in the art . . . to make and use the same . . . .” 35 U.S.C. § 112, para. 1. As this court has explained, “the how to use prong of section 112 incorporates as a matter of law the requirement of 35 U.S.C. § 101 that the specification disclose as a matter of fact a practical utility for the invention.” In re Cortright, 165 F.3d 1353, 1356 (Fed. Cir. 1999), quoting In re Ziegler, 992 F.2d 1197, 1200 (Fed. Cir. 1993); see also In re Schoenwald, 964 F.2d 1122, 1124 (Fed. Cir. 1992) (stating that utility must be disclosed to satisfy the section 112 enablement requirement). In explaining what constitutes a sufficient showing of utility in the context of the enablement requirement, this court has stated that an applicant’s failure to disclose how to use an invention may support a rejection under either section 112, paragraph 1 for lack of enablement, or “section 101 for lack of utility ‘when there is a complete absence of data supporting the statements which set forth the desired results of the claimed invention.’” Cortright, 165 F.3d at 1356, quoting Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 762 (Fed. Cir. 1984).
In the context of determining whether sufficient “utility as a drug, medicant, and the like in human therapy” has been alleged, “it is proper for the examiner to ask for substantiating evidence unless one with ordinary skill in the art would accept the allegations as obviously correct.” In re Jolles, 628 F.2d 1327, 1332 (Fed. Cir. 1980), citing In re Novak, 306 F.2d 924 (CCPA 1962); see Application of Irons, 340 F.2d 974, 977-78 (CCPA 1965). Indeed, in In re Brana, 51 F.3d 1560 (Fed. Cir. 1995), we stated that “a specification disclosure which contains a teaching of the manner and process of making and using the invention . . . must be taken as in compliance with the enabling requirement of the first paragraph of § 112 unless there is reason to doubt the objective truth of the statements contained therein which must be relied on for enabling support.” Id. at 1566, quoting Marzocchi, 439 F.2d 220, 223 (CCPA 1971); Fiers v. Revel, 984 F.2d 1164, 1171-72 (Fed. Cir. 1993), quoting Marzocchi, 439 F.2d at 223; see also Application of Armbruster, 512 F.2d 676, 677 (CCPA 1975); Application of Knowlton, 500 F.2d 566, 571 (CCPA 1974); Application of Bowen, 492 F.2d 859 (CCPA 1974); Application of Hawkins, 486 F.2d 569, 576 (CCPA 1973). However, where there is “no indication that one skilled in [the] art would accept without question statements [as to the effects of the claimed drug products] and no evidence has been presented to demonstrate that the claimed products do have those effects,” an applicant has failed to demonstrate sufficient utility and therefore cannot establish enablement. Novak, 306 F.2d at 928.
With regard to §102, the ruling traces the degradation of prior art needing to be enabled to be anticipatory. That standard has degraded by the courts in all technologies.
A patent claim “cannot be anticipated by a prior art reference if the allegedly anticipatory disclosures cited as prior art are not enabled.” Elan Pharm., Inc. v. Mayo Found. for Med. Educ. & Research, 346 F.3d 1051, 1054 (Fed. Cir. 2003). The standard for what constitutes proper enablement of a prior art reference for purposes of anticipation under section 102, however, differs from the enablement standard under section 112. In In re Hafner, 410 F.2d 1403 (CCPA 1969), the court stated that “a disclosure lacking a teaching of how to use a fully disclosed compound for a specific, substantial utility or of how to use for such purpose a compound produced by a fully disclosed process is, under the present state of the law, entirely adequate to anticipate a claim to either the product or the process and, at the same time, entirely inadequate to support the allowance of such a claim.” Id. at 1405; see Schoenwald, 964 F.2d at 1124; In re Samour, 571 F.2d 559, 563-64 (CCPA 1978). The reason is that section 112 “provides that the specification must enable one skilled in the art to ‘use’ the invention whereas [section] 102 makes no such requirement as to an anticipatory disclosure.” Hafner, 410 F.2d at 1405; see 1 Donald S. Chisum, Chisum on Patents § 3.04[c] (2002); see also In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349-52 (Fed. Cir. 2001) (finding anticipation where applicant sought a patent based on a new use for a previously disclosed method).
Since Hafner, this court has continued to recognize that a prior art reference need not demonstrate utility in order to serve as an anticipating reference under section 102. See Schoenwald, 964 F.2d at 1124 (“it is beyond argument that no utility need be disclosed for a reference to be anticipatory of a claim”); In re Donohue, 632 F.2d 123, 126 n.6 (CCPA 1980) (“proof of utility is not a prerequisite to availability of a prior art reference under 35 U.S.C. § 102(b)”), citing In re Samour, 571 F.2d at 563-64; see also Application of Lukach, 442 F.2d 967, 969 (CCPA 1971) (recognizing that there are “anomalies between the requirements for claim-anticipating disclosures and for claim-supporting disclosures” and citing Hafner as an example).
In the Bristol-Myers Squibb case, the article and the patent disclosed the same method for administering the drug. The article, however, presented data purporting to show that the method was not effective in providing anti-tumor effects, while the patent contained data purporting to show the opposite. The court decided that the negative results reported in the article did not prevent the article from anticipating the patent given that “[n]ewly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.” 236 F.3d at 1376. The court explained that “a reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. Thus, the question whether a reference ‘teaches away’ from the invention is inapplicable to an anticipation analysis.” Id. at 1378., quoting Celeritas Techs., Ltd. v. Rockwell Int’l Group, 150 F.3d 1354, 1361 (Fed. Cir. 1998). The court added that “anticipation does not require actual performance of suggestions in a disclosure.” 246 F.3d at 1379.
Posted by: Patent Hawk at April 27, 2008 3:24 PM