August 14, 2012
The CAFC again limits patent protection without basis in statute. Under government grant, MIT developed a device, usable as a sensor or computer memory, employing quantum mechanical effects; patented as 5,629,922. Exclusive licensee Masgil and MIT launched an enforcement campaign against 20+ disk drive makers. In summary judgment, the district court found '922 not enabled, for the sin of being too valuable a patent. A CAFC panel affirmed.
Masgil & MIT v. Hitachi Global Storage Technologies et al (CAFC 2011-1221) Judges Rader (author), O'Malley and Reyna
Enablement is a question of law based on underlying factual findings. In re Wands, 858 F.2d 731, 735 (Fed. Cir. 1988). A party must prove invalidity based on non-enablement by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P'ship, 131 S. Ct. 2238, 2242 (2011); AK Steel Corp. v. Sollac, 344 F.3d 1234, 1238-39 (Fed. Cir. 2003). Thirty-five U.S.C. § 112 sets forth the enablement requirement:
[t]he specification shall contain a written description of the invention, and the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.
35 U.S.C. § 112, ¶ 1. "To be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without 'undue experimentation.'" Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)). The enablement determination proceeds as of the effective filing date of the patent. Plant Genetic Sys., N.V. v. DeKalb Genetics Corp., 315 F.3d 1335, 1339 (Fed. Cir. 2003).
The law does not require "full scope." This is a restriction introduced by the CAFC to eliminate overly broad claims.
Enablement serves the dual function in the patent system of ensuring adequate disclosure of the claimed invention and of preventing claims broader than the disclosed invention. See AK Steel, 344 F.3d at 1244. This important doctrine prevents both inadequate disclosure of an invention and overbroad claiming that might otherwise attempt to cover more than was actually invented. Thus, a patentee chooses broad claim language at the peril of losing any claim that cannot be enabled across its full scope of coverage. "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." Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008) (quoting Nat'l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195-96 (Fed. Cir. 1999)); see also In re Fisher, 427 F.2d 833, 839 (CCPA 1970) ("[T]he scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification to persons of ordinary skill in the art.").
In sum, this field of art has advanced vastly after the filing of the claimed invention. The specification containing these broad claims, however, does not contain sufficient disclosure to present even a remote possibility that an ordinarily skilled artisan could have achieved the modern dimensions of this art. Thus, the specification enabled a marginal advance over the prior art.
Rader is rank with specious logic. He does not say that the claims were not enabled. He instead invalidates the patent for later improvements covered by the claims.
Further, there is no logical basis to conclude that future improvements in an art area means that a specification was only "a marginal advance." The specification appears a major leap in technology, upon which marginal advances were later made.
The technological advances that the court pointed to were mere improvements in efficiency. '922 fully enabled the claims, and was entitled to their scope under the law.
The CAFC's underlying rationale is that any aspect of claim scope which is improved upon technologically in the future - after a patent is granted - invalidates a patent. This is an extreme ruling, in that the courts have invalidated the patent simply because of market value, under the guise of claim breadth.
There is no basis in law for this. This does not serve the idea of having a patent system. It merely robs inventors of their invention, in a capricious manner. This is not rule of law.
The CAFC continues its criminality by taking inventions away whenever they become too valuable in the marketplace: plutocratic kleptomania.
Posted by Patent Hawk at August 14, 2012 10:14 PM | § 112