The New Law of Enablement

Liebel-Flarsheim v. Medrad (Fed. Cir. 2007).

This case raises an interesting enablement issue. The issue involves how we should interpret patent claims that extend coverege over material that is not enabled.  This is an important question because most patent claims are written to literally cover embodiments that are not fully enabled. 

Facts: Liebel-Flarsheim’s patent describes a preferred embodiment of a needle holder that includes an associated pressure jacket but do not enable a jacket-free embodiment.  The patent claims did not claim (or even mention) the pressure jacket and thus, based on comprising language, were construed to cover injectors regardless of whether they have an associated pressure jacket.  Medrad’s accused products do not have the pressure jacket.

Lower Court: The lower court found the patent invalid as not enabled — holding that it would have taken undue experimentation to practice the claimed invention without the pressure jacket.

Argument on Appeal: Liebel argues that "the asserted claims do not recite or require the absence of a pressure jacket and the court improperly focused on such an embodiment."  In particular, the question of creating an embodiment without a pressure jacket is not one of "experimentation" but rather additional follow-on innovation.

Appellate Decision: On appeal, CAFC panel found the patent invalid as not enabled.

We have previously construed the claims … such that they are not limited to an injector with a pressure jacket, and therefore the full scope of the claimed inventions includes injectors with and without a pressure jacket. That full scope must be enabled, and the district court was correct that it was not enabled.

There must be “reasonable enablement of the scope of the range” which, in this case, includes both injector systems with and without a pressure jacket.

The irony of this situation is that Liebel successfully pressed to have its claims include a jacketless system, but, having won that battle, it then had to show that such a claim was fully enabled, a challenge it could not meet. The motto, “beware of what one asks for,” might be applicable here.

Invalidity affirmed.

Notes:

  • "During the prosecution of the front-loading patents, Liebel removed all references in the claims to a pressure jacket."

296 thoughts on “The New Law of Enablement

  1. “A+B+C falls clearly within the claim scope of A+B. What the hell is the definition of claim scope if it doesn’t include infringing embodiments?”

    Gideon, please, follow me through this (I know it’s tedious, but humor me):
    We agree that A+B+C has a narrower scope than A+B. We agree that A+B+C and A+B have scopes that overlap somwhere and that this overlap gives rise to infringement.
    You, however, think that the entire narrower scope of A+B+C is within the broader scope of A+B. This cannot be. A+B+C and A+B only partially overlap, and A+B+C, although narrower, has some scope outside A+B. Here’s why: A+B+C will also infringe B+C, and B+C is completely outside the scope of A+B. (Proof: B+C and A+B cannot infringe each other).
    Thus A+B+C has a narrower scope than A+B, and some of that narrower A+B+C scope falls outside the broader scope of A+B. (I know this is contrary to the classic patent professor’s model of concentric circles of different claim scopes, but that model is an over-simplification.) To answer your original question, claim scope must at least partially include infringing embodiments, but the scope doesn’t necessarily completely encompass those infringing embodiments.

    In the context of this current case, the court does not say that entire A+B+C scope must be enabled by the spec in order for A+B to be valid. Rather, they say that the overlapping portion giving rise to the infringement must be enabled. Hence open-ended claims are not necessarily invalidated by this opinion.

    Where I take umbridge is the court’s willingness to invalidate all of A+B if any of the overlapping portion is not enabled. Why not simply narrow the scope of A+B to what is enabled (here A+B+Z) and find no infringement if the competitor’s product (here A+B+Y) does not overlap this scope.

    Mooney wants the whole scope invalidated as an incentive not to assert invalid claims. Why aren’t court costs (and maybe attorneys fees and rule 11 sanctions if claim is flagrantly meritless) to the plaintiff enough of an incentive?

  2. “redraft claims drawn to a disclaimed embodiment I ask: How exactly can you do that without entering new matter?”

    It helps if you are taking a limitation out of the claims, just like Liebel did. And I’m guessing the Examiner did not give them a terribly hard time about their statements in the specification.

    As claims go, the ones at issue here were not terribly shocking. Amazing things can and do happen. You just have to put your mind to it. Click your ruby slippers together … wish upon a star …

  3. Mooney said: “redraft claims drawn to a disclaimed embodiment”

    I ask: How exactly can you do that without entering new matter?

  4. “You seem to want to punish any patentee that seeks to enforce claims to an otherwise patentable invention simply because the infringer is using the invention in a way that the patentee did not foresee.”

    I want broad non-enabled claims to be held invalid. The patentee here not only did not foresee the jacketless syringe embodiment of the invention, the patentee did not even consider claiming such an invention and plainly did not even consider such a device to BE his/her invention until he/she saw the infringer’s device!

    Someone upthread posted some feelgood stuff about promoting innovation. How would innovation be promoted by someone designing around a patent, only to have the patentee return to the pending continuation to redraft claims drawn to a disclaimed embodiment which happens to be the competitors’ design-around, which are then allowed by the Examiner, which are then upheld as enabled by CAFC?

    Does that encourage innovation? Surely not. I’ll tell you what it does encourage: keeping continuations pending forever “just in case.” So guess what’s next on the chopping block, my friends. As Bob Zimmerman famously sang: “Now ain’t the time for your tears.”

  5. Gideon

    “I think it would be suicidal to tell clients to narrow claims based on this decision.”

    Maybe, unless the client (1) had only really broad claims and (2) had support for narrower claims which covered the accused infringer’s product. In the latter case it would be very reasonable for the patentee to throw the patent into reexam and get some narrower claims which were less subject to attack on enablement, novelty or non-obvious grounds. Okay, maybe sue the competitor first to get some discovery and figure out what prior art they were sitting on and THEN throw the case into reexam and stay the litigation.

  6. “Is there any reason that dependent claims could not be held invalid on the same enablement basis?”

    The question is: is there any reason that the patentee would try to capture an infringer who was doing something that was more or less disclaimed in the specification of my application.

    The question is: is there any reason that the patentee would seek a construction of the claim which would render HALF the scope non-enabled, including the half which was practiced by the accused infringer.

    And the answer is: yes, there is one reason. That reason is if the patentee can control itself. As I mentioned upthread, sometimes there are reasons for patentees to go gonzo with their claims and threaten everybody in sight. The reality in 2007 is that such behavior is increasingly likely to result in dead claims. Deal with it. It’s not the end of the world for patenting. It’s the beginning of a more realistic one. My heart bleeds for all the applicants and patentees and half-assed attorneys who didn’t cash in while the getting was good. Really, I’m terribly concerned for those people who will surely be wandering homeless through the parks of San Diego now that the CAFC has rendered their “comprising” claims worthless.

  7. Wow, Mr. 30 years experience EU lawyer, why are you getting so personal with me? Just because my opinion is X and yours is Y doesn’t mean that I have a problem with you or your expertise.

    Seriously, back off. I gave my review of the case and the law. Obviously, discard it if you don’t like it. But don’t imply that I’ve somehow attacked you. I didn’t.

    Validate only in Germany?

    So if an infringer makes a product in China and sells it in every country of the EU except Germany, we’re all set if we only validated in Germany?

    So it’s clearly malpractice for my EU attorneys not to have told me this yet right? I should sue them, right?

    Get real man. France and Britain and Spain are not “2 million” people tiny nations. Even if you only validate in 10 countries, you’re still looking at 40-60 grand. Really ridiculous.

    Don’t be so prideful my EU German friend. The fact is that processing applications in the EU is disgustingly expensive.

    Most practitioners want 5 grand – now 6 with the decline in the dollar – simply to file out of the PCT.

    What a joke. It should cost less than a grand.

    But you socialists over there have a closed, non-competitive system with a very limited number of practices.

    There are only about 50 registered patent attorneys in Ireland. How is that possible? Germany and the UK appear to have fewer than 1,000.

    I’m not sure how you keep that union shop so closed up, but it results in a 5000 filing fee to simply slap a cover page on an EU filing of a PCT.

    Someone wrote: “If my claim is X comprising: A + B, then the claim is *infringed* by A + B + C, but the claim *scope* is not necessarily A + B + C (for example, a combo A + B + C, where C is a new thing added on to A + B, could be patentable over A + B)”

    I disagree. A+B+C falls clearly within the claim scope of A+B. The fact that you can get a patent issued on A+B+C is irrelevant to this.

    If you’re not sure, get the claim issued on ABC and then call up the patent holder on AB and say “ABC is not within your claim scope.”

    What the hell is the definition of claim scope if it doesn’t include infringing embodiments?

    As for you Mooney, I’ll tell my clients what I have always told my clients – the case law on enablement is garbage and unclear. It’s always been that way, and it won’t change.

    I think it would be suicidal to tell clients to narrow claims based on this decision.

    The answer to this case is the answer to all cases of this jumbled ilk – get the broadest claims allowed that you can and provide a tight set of dependent claims.

  8. Brian stated: “Aside from the outcome of this case, what is your basis for your “SHOULD HAVE BEEN” conclusion?”

    Malcholm replied:

    “Aside from the outcome? You mean aside from the reasonable conclusion that the CAFC reached? The conclusion that has not resulted in emergency congressional hearings to restore validity to the hundreds of thousands of “comprising” claims?

    My basis is the CAFC’s basis. Judge Lourie’s basis. It’s a good basis.”

    You must realize that to those who think the case was wrongly decided, this is not very persuasive.

    Malcolm stated: “No, I add dependent claims which remain valid if the broad claim fails (e.g., if the broad claim is found invalid because the patentee decides to stretch it to cover something which literally infringes but is not enabled).”

    Open ended claims always cover something which literally infringes but is not enabled. Even your dependent claims would do so. Is there any reason that dependent claims could not be held invalid on the same enablement basis?

    You seem to want to punish any patentee that seeks to enforce claims to an otherwise patentable invention simply because the infringer is using the invention in a way that the patentee did not foresee. If you think claims should not be enforcible against infringers that use the invention in unforeen ways, then we do not have enough common ground for a reasoned discussion.

  9. Um, that supports my argument, not yours. Under Fisher, Liebel’s claims would be enabled. How can you reasonably conclude otherwise?

    How many times must this simple point be made? As Judge Lourie points out in the decision: given the facts in this case, the reasonable scope for enablement MUST include the jacketless embodiment of the invention. And in light of ALL the facts in this case, that embodiment was not enabled.

    ” the teachings of the specification must not be ignored ”

    Yes, like the teachings in the spec which say, effectively, “We, the applicants, think jacketless needle holders are impractical and we do not describe such an embodiment here because, well, we can’t figure out a practical way to do it.” Why are YOU ignoring those teachings? Why are you ignoring the case itself, which sets forth this issue in black and white? Not to mention this comments thread where this issue has been addressed several times already …

    “Claims are not rejected as broader than the enabling disclosure under section 35 U.S.C. 112 for noninclusion of limitations dealing with factors which must be presumed to be within the level of ordinary skill in the art”

    Again, jacketless needle holder embodiments of this invention were not “within the level of ordinary skill” as of the filing date. Did you notice that they didn’t bother to pursue such claims until AFTER they discovered the infringer’s product?

    “[T]o provide effective incentives, claims must adequately protect inventors.”

    Liebel is adequately protected. They still have viable claims. They are free to sue other people.

  10. Malcolm quoted “All that is necessary is that one skilled in the art be able to practice the claimed invention, given the level of knowledge and skill in the art. Further the scope of enablement must only bear a “reasonable correlation” to the scope of the claims. See, e.g., In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970).”

    Um, that supports my argument, not yours. Under Fisher, Liebel’s claims would be enabled. How can you reasonably conclude otherwise?

    See the following passages also from section 2164.08 (case cites omitted for space)

    “When analyzing the enabled scope of a claim, the teachings of the specification must not be ignored because claims are to be given their broadest reasonable interpretation that is consistent with the specification.”

    Or how about

    “Claims are not rejected as broader than the enabling disclosure under section 35 U.S.C. 112 for noninclusion of limitations dealing with factors which must be presumed to be within the level of ordinary skill in the art; the claims need not recite such factors where one of ordinary skill in the art to whom the specification and claims are directed would consider them obvious. One does not look to the claims but to the specification to find out how to practice the claimed invention.”

    “[T]o provide effective incentives, claims must adequately protect inventors. To demand that the first to disclose shall limit his claims to what he has found will work or to materials which meet the guidelines specified for “preferred” materials in a process such as the one herein involved would not serve the constitutional purpose of promoting progress in the useful arts.”

  11. “Aside from the outcome of this case, what is your basis for your “SHOULD HAVE BEEN” conclusion?”

    Aside from the outcome? You mean aside from the reasonable conclusion that the CAFC reached? The conclusion that has not resulted in emergency congressional hearings to restore validity to the hundreds of thousands of “comprising” claims?

    My basis is the CAFC’s basis. Judge Lourie’s basis. It’s a good basis.

    “”tainted by greed?” Give me a freakin break, you seem to be inclined to impute emotion into everything.”

    I’m not “imputing emotion” into anything. Who was it who first brought up the childish scolding: “Be careful what you wish for”?

    “You have yet to cite one source in support of your “definition” of overbreadth.”

    M.P.E.P. Section 2164.08, Enablement Commensurate in Scope With the Claims

    All that is necessary is that one skilled in the art be able to practice the claimed invention, given the level of knowledge and skill in the art. Further the scope of enablement must only bear a “reasonable correlation” to the scope of the claims. See, e.g., In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970).

    “If your claim already distinguishes over the art, do you add limitations simply because you feel that it would be wrong to get your client the broader claim?”

    No, I add dependent claims which remain valid if the broad claim fails (e.g., if the broad claim is found invalid because the patentee decides to stretch it to cover something which literally infringes but is not enabled).

    “He might sound smart at first, but after a while you realize you’re talking to a nut…”

    Reminds me: does anyone else here prefer stale Peeps over fresh Peeps?

  12. Malcolm, can you cite one case or resource that contadicts my statement. No? I thought so. You have yet to cite one source in support of your “definition” of overbreadth.

    Also, remember, we are talking about the predictable arts here, not the unpredictable ones.

  13. Having a conversation with Malcolm is like visiting an asylum and talking to some random guy in the hallway, or chatting it up with a homeless guy in the NYC subway system. He might sound smart at first, but after a while you realize you’re talking to a nut…

    “tainted by greed?” Give me a freakin break, you seem to be inclined to impute emotion into everything. Get a puppy for goodness sake. And have another glass of Chardonnay. Maybe write some poetry.

  14. Malchom: The jacket was not part of the invention as claimed but here’s the rub: it SHOULD HAVE BEEN part of the invention as claimed.

    Aside from the outcome of this case, what is your basis for your “SHOULD HAVE BEEN” conclusion?

    If the combination recited by the claim was novel and non-obvious, then the jacket limitation SHOULD NOT HAVE BEEN in the claims in the first place.

    Do you throw limitations into your broadest claims simply because they recite features that happen to appear in the preferred embodiment? If your claim already distinguishes over the art, do you add limitations simply because you feel that it would be wrong to get your client the broader claim? In my practice, the broadest claim should not include any limitation that is not required to distinguish the invention over the art. Anything narrower than that is cheating your client.

  15. “If I claim a new electric motor and someone builds a car using my motor, I cannot sue them for using my motor if I did not include a claim to a car using my motor in my patent?”

    More like this: if the only embodiment you teach in your specification is a car motor for an electric car and you teach that the use of your motor in a gas car is impractical and expensive, then when you sue the manufacturer of the gas car with your broad motor claim (not limited to any type of car), your motor claim is likely to crash and burn.

    That’s all.

  16. Lionel

    “And Malcolm, the first thing I thought of when I read this case was the Reverse DOE. I actually think this case goes a long way to bringing that back.”

    Quite the opposite. It provides a much more palatable alternative. If the reverse DOE comes back, it’ll take a more bizarre set of facts than the facts here where the patentee was tainted by greed.

    As for your other propositions (“Overbreadth only applies where I have claimed something that has not been enabled at all”), some citations to the case law would be nice. It’s easy to make up rules that don’t exist or plainly contradict those which do. Let’s not go there, m’kay?

  17. “(1) the jacket was inherent and if it was inherent, then the CAFC could have simply stated that”

    You mean read the limitation into the claim in order to “save it” so you can sleep better at night knowing that the poor wittle claim didn’t die?

    I hope this case is the beginning of a trend away from such tactics. It’s time for everybody to grow up.

    “The claim was for the syringe, the jacket/no jacket was not part of the invention as claimed.”

    Very good. The jacket was not part of the invention as claimed but here’s the rub: it SHOULD HAVE BEEN part of the invention as claimed. If the jacket had been claimed, then we wouldn’t be here because Liebel wouldn’t have asserted claims which it hadn’t enabled.

    It’s pretty straightforward, actually.

  18. And Malcolm, the first thing I thought of when I read this case was the Reverse DOE. I actually think this case goes a long way to bringing that back.

  19. Malcolm, if I claim to broadly, then the claim may be invalid due to the existence of prior art, but not due to enablement.

    Overbreadth only applies where I have claimed something that has not been enabled at all. If an embodiemnt in the application supports the claim as written, then it IS enabled. Please cite a case stating otherwise.

    If you want to resort to the facts of this case, it appears that the claims of Liebel were supported by the embodiment in the spec. It also appears that the defendant had a syringe system that infringed the claim. The defendant’s syringe system had no jacket, but that was not a limitation in Liebel’s claim. Now, because the only embodiments disclosed included a pressure jacket, it may be reasonable to read that limitation into the claim. But in that case then the defendant should be found to infringe. The claim should not have been invalidated.

    If I claim a new electric motor and someone builds a car using my motor, I cannot sue them for using my motor if I did not include a claim to a car using my motor in my patent?

  20. Malcolm stated “The case itself states the well-known rule: there must be “reasonable enablement of the scope of the range.” In this case, “reasonable enablement of the scope” includes THAT SCOPE which is embodied by the accused infringer’s device. You think it’s unreasonable for claims to be enabled so much as to at least cover the embodiment of the claimed invention found in the accused infringer’s device?”

    It did. The claim was for the syringe, the jacket/no jacket was not part of the invention as claimed. Now either (1) the jacket was inherent and if it was inherent, then the CAFC could have simply stated that, or (2) it was not inherent and the defendant either infringed or did not infringe. There was no reason to invalidate the claim.

    And I remind you, the amendments Liebel made are irrelevant to the Court’s ruling.

  21. Brian: you invent a new, nonobvious gizmo and you claim the new, nonobvious gizmo. Someone copies your gizmo and uses it in a context or combination that you did not foresee or enable. Your claim to the gizmo is now invalid for lack of enablement of their combination.

    Dispute that: That’s right. That’s why you’d argue and a court would hold that your claim doesn’t cover the combination. And if you do want your claim to cover the nonenabled combination, then of course your claim is invalid.

    In my example, your claim to the gizmo DOES cover the combination, regardless of what you do or do not argue during litigation. It seems that you are saying that a claim to the gizmo doesn’t read on a non-enabled combination that includes the gizmo simply because you don’t argue that it does. That is not the case. A claim to ABC reads on the combination ABCD even if you don’t argue that it does.

    I hope we don’t get to the point that the coverage of a claim is entirely decoupled from the literal meaning of a claim. After all, the claims are intended to give the public “notice” about the scope of protection. A claim to the combination ABC should give notice that any combination that includes ABC is covered by the patent.

  22. For the critics of this case, you have to admit it could have been worse. Instead of using enablement to tank the claims, the CAFC could have reanimated the reverse doctrine of equivalents to find non-infringement.

    Somebody needs to open up the crypt and cut that zombie’s head off before it’s too late …

  23. Brian,

    That’s right. That’s why you’d argue and a court would hold that your claim doesn’t cover the combination. And if you do want your claim to cover the nonenabled combination, then of course your claim is invalid.

    I take your point that my example is bad because the claim is also invalid for other reasons. But the example isn’t wrong. Enablement would still invalidate the claim, in addition to novelty, obviousness, etc.

  24. I Dispute that wrote: If I invent a wonderful new, nonobvious gizmo but draft only a single claim to “a thing,” no more, then my whole claim is invalid, even though that means I don’t get protection of what I invented. My fault for not claiming more narrowly.

    Bad example. A claim to “a thing” would be invalid because of prior art, not because of lack of enablement.

    A correct example: you invent a new, nonobvious gizmo and you claim the new, nonobvious gizmo. Someone copies your gizmo and uses it in a context or combination that you did not foresee or enable. Your claim to the gizmo is now invalid for lack of enablement of their combination.

  25. “The fact is, if the Applicant’s claims are supported by any disclosed embodiment, then they are valid”

    Untrue. Untrue before this case and untrue after. Scope of the claims has to be reasonably enabled. If you want broad claims, you need to provide more support than if you want narrow claims. Nothing shocking or new about this.

  26. Gideon

    “The principle of this case is that … anything less than complete enablement accross the entire scope of the claims renders the claims invalid. There is no clear qualifier to that conclusion.”

    Okay, go ahead and tell your clients that. Then, after you’ve screwed them over, they can find better attorneys.

    The case itself states the well-known rule: there must be “reasonable enablement of the scope of the range.” In this case, “reasonable enablement of the scope” includes THAT SCOPE which is embodied by the accused infringer’s device. You think it’s unreasonable for claims to be enabled so much as to at least cover the embodiment of the claimed invention found in the accused infringer’s device?

    I don’t.

  27. As I said earlier, there would be no discussion if the CAFC simply stated that the jacket was inherent in to the claims whether or not it was explicitly removed from the claim.

    The fact is, if the Applicant’s claims are supported by any disclosed embodiment, then they are valid, or were valid until this decision. Whether the alleged infringer infringed those claims due to decidedly inherent limitations such as a pressure jacket is another story. Unless this case is overturned or quickly followed up with a clarifying case, every alleged infringer now has a brand new invalidity argument in their toolbox of defenses.

  28. Gideon – I’m not convinced that every open-ended claim will be invalid under this opinion. But I’m open to being convinced.

    If my claim is X comprising: A + B, then the claim is *infringed* by A + B + C, but the claim *scope* is not necessarily A + B + C (for example, a combo A + B + C, where C is a new thing added on to A + B, could be patentable over A + B). So X wouldn’t need to enable A + B + C; that is, A + B is enough to get infringment as long as A + B scope is enabled. Is there an opinion holding that transitions determine infringement *and* claim scope to be enabled? (if so, I’m wrong and convinced of your point ;) )

    Where I do agree the problem is when you claim A + B, and in your spec A + B is joined together by C (that is, C enables A + B for you) but you don’t claim C. When your competitor puts together A + B with D, which required undue experimentation, he not only has designed around your patent, but invalidated yours as well under this opinion.

    In sum, open-ended claims can still be valid, as long as the new features in the competitor’s device aren’t used to enable your explicit claim elements.

  29. so you agree that your talk is not about what the law “is”, but rather about what you “philosophically” believe the law “should” be..

  30. That’s sad Gideon. You dismiss the entire corpus of European patent law on the basis that every little 2 million resident member State wants the translation income, to keep its patent lawyers alive. Why do you validate in 15 countries? Most patent owners validate just in Germany. That’s enough to stop infringement in EU, for many technologies. Your pet idea that enablement across the entire scope renders every claim invalid doesn’t stand up to open-minded scrutiny. Read my post above, on the Principle of Synthetical Propensity. In my 30 plus years of practice, I have gradually found out that the ones who are quickest to announce others are stupid are themselves the least intelligent. Do you not agree? And evolution (or God) was kind to those of intelligence average or below, in leaving them unaware of their stupidity. For if they were aware that they are not so bright as other people, life would be miserable. Do you not agree? Let’s try in this blog for a discourse in which there is more recognition that the other fellow just might have a point. Finally, if you are a lawyer and you don’t care whether or not the law dispenses a result that is just, then I hope that not all US lawyers are like you. Can’t we have BOTH legal certainty AND fairness?

    Rick, so you know words from Festo. Don’t we all. But they are not the Tablets coming down the mountain. They are not the Last Word. The law continues to develop, when wise lawyers focus on what should be the right balance, between legal certainty and fairness to inventors. Catch the UK decision mentioned above, for a different and better view. As to “after-arising” my understanding of the classic case is the claim that recites “thermionic valve” and then, during the pendency of the patent term, the transistor is invented. Could inventor have foreseen that after-arising technology. Should his claim cover an embodiment with a transistor replacing the valve? Maybe. But such cases are rare, rare, rare.

  31. And by the way, if any readers don’t believe/understand that any comprising claim has an infinite number of unenabled embodiments, then post a patent number and claim number and I’ll post a dependent claim that proves the point.

  32. 2-3=1?

    Anyway, answering Max, who wrote:”Are you thinking that the inventor “got” too much scope, or too little? . . . A government would be crazy, to handicap its domestic industry so grotesquely by the deliberate and calculated issue of such claims.”

    I don’t care whether the inventor (assignee) got too much or too little. That’s hardly the point. The point isn’t that Roe’s abortion attempt was OKed – the point is that abortion was made legal, fair or unfair to Roe.

    Here too, I don’t care much about the facts or whether it was fair to patentee or not.

    The principle of this case, which I read and found to be poorly written, is that anything less than complete enablement accross the entire scope of the claims renders the claims invalid. There is no clear qualifier to that conclusion. That is, the Court did not write or imply, as an addendum, ” . . . but this only applies in cases where claims are amended to a broader scope to attempt . . . ” or something like that.

    One poster offered that an “enabled” dependent claim would have cured this issue.

    Not so. As I noted above, if the definition of “enabled” is “enabled accross the full scope of the claims”, then no comprising claim I have ever read is enabled.

    So the point is, if you define enablement as an “accross the full scope” concept, then you may not attempt to show which comprising claims are enabled, because every comprising claim has embodiments that no man could make. Ergo, the best that can be said is that comprising claims are enabled differentially, with some enabled not at all, some a bit, and so on.

    If you want to get real philosophical, comprising claims include an infinite number of embodiments, most all of which are certainly not enabled.

    So what it comes down to for me is very simple . . .

    any attempt to define “enablement” as requiring a “full scope” enablement fails.

    So what to do?

    The obvious answer is to change the law, or at least produce a case precedent that doesn’t rely on the twisted logic that “this” claim is fully enabled while “that one is only partly enabled”.

    And what should the law be?

    I’m not sure. Perhaps the law should be that a claim is only valid for enabled embodiments, with failure to enable leading to non-infringement rather than invalidity.

    Haven’t really thought of it much.

    To me, Patents Law is just a way to make a buck. I don’t really give a crap about the whole “societal give and take” with regard to inventors.

    Anybody familiar with the patent system knows that the Patent system f_____s over inventors.

    You want to go national in 15 states in the European Union? That’s about 100 large.

    And you know, there’s a lot of guys who invent things who have 100 grand stuffed under the bed just ready to be spent protecting that invention in Europa.

    And if you really want to get serious, and you consider yourself a scientific thinker, then I’d suggest that Peak Oil will make all of this legal nonsense moot within a decade anyway.

    When oil is at 300 a barrel, you really think anybody is going to give a rat’s ass about the Federal Circuit enablement decision?

  33. Tom, there is no mix-up here. My argument is carefully articulated in several of my posts.

    Let me walk you through step-by-step:

    Did you ever of think of “why” it is possible to infringe under the doctrine equivalents?
    Here is your answer from the Supreme Court: “we described the doctrine of equivalents as growing out of a legally implied term in each patent claim that “the claim extends to the thing patented, however its form or proportions may be varied.” (Warner Jenksinson)

    O.k. – so the DOE enlarges the claim scope to cover equivalents.

    Did you know that under the DOE a claim can actually cover such equivalents that aren’t really enabled by your specification (i.e. after-arising-technology)? In fact according to judge Rader “a primary justification for the doctrine of equivalents is to accommodate after arising technologies” (Festo 234 F.3d 558, 619, Rader, J. concurring-in-part and dissenting-in-part).

    O.k. – so you now you know that a claim can encompass under the doctrine-of-equivalents such embodiments that are not fully enabled by the specification.

    Now – doesn’t it follow that just as after-arising-technology can be covered under DOE, then it should no less be coverable under a literal claim scope?

    O.k. – so a claim can cover after-arising-technology, which is not fully enabled by the specification.

    Bottom line – the CAFC is wrong to hold that a claim that also covers such embodiments that are not enabled by the specification is invalid.

    1 + 1 = 2
    2 – 3 = 1
    0 – 0 = 0

  34. Rick, you seem to be mixing up validity and infringement. The question of whether a claim is valid is answered differently than the question of whether an accused product is infringing a claim. The cases you cite deal with infringement. The Doctrine of Equivalents applies to infringement issues, not claim validity. The Doctrine expands the scope of a claim beyond its literal interpretation when deciding whether an accused product infringes that claim.

    A claim is valid if it meets the statutory requirements. If an inventor asserts a claim interpretation that makes the claim not meet the statutory requirements, then the claim is invalid, which is what happened here. The Doctrine of Equivalents does not enter into the analysis.

    Do you know of any cases where the issue was validity and the court used the Doctrine of Equivalents in its analysis?

  35. MaxDrei,
    “inapt” and “inept” have very similar meaning – look it up.

    What I wrote about the doctrine of equivalents – is not what I “appreciated” it to be, but rather the way the doctrine is explained by the U.S. Supreme Court in its opinions addressing the doctrine. The most recent opinions being:
    1. Graver Tank
    2. Warner Jenkinson
    3. Festo

    Some quotes for you convenience:
    “…we described the doctrine of equivalents as growing out of a legally implied term in each patent claim that “the claim extends to the thing patented, however its form or proportions may be varied.” (Warner Jenksinson)

    “…the doctrine of equivalents allows the patentee to claim those insubstantial alterations
    that were not captured in drafting the original patent claim but which could be created through trivial changes.” (Festo)

    “…a competing inventor can avoid literal infringement by developing a new device that
    distinguishes the patented invention through slight modifications to its claims. Because the language of claims can never perfectly describe an invention or anticipate all the ways
    in which it might be modified, patents’ protective function calls for claims to be read broadly. “(Festo)

    ….the Court is concerned that the doctrine, as it has come to be broadly applied …. conflicts with the Court’s numerous holdings that a patent may not be enlarged beyond the scope of its claims. The way to reconcile the two lines of authority is to apply the doctrine to each of the individual elements of a claim, rather than to the accused product or process as a whole. Doing so will preserve some meaning for each of a claim’s elements, all of which are deemed material to defining the invention’s scope. So long as the doctrine does not encroach beyond these limits…it will not vitiate the central functions of patent claims to define the invention and to notify the public of the patent’s scope.” (Warner Jenkinson)

    [See also Festo for lengthy discussion regarding the balancing of the “notice function” and the “protection function” of patents. The “notice function” calls for only “literal claim scope”. The “protection function” calls for very broad protection of equivalents. To balance the two functions we require rules such as: prosecution history estoppel; function-way-result; element by element, etc.]

  36. As a lawyer trained in the English common law tradition, I have to agree with Max: this case is a classic patent law squeeze, and a completely unremarkable one at that. Mind you, we dispensed with the one-way test of enablement some time ago. For those interested, there is a nice discussion of the differences between the English, purposive approach to claim interpretation and the doctrine of equivalents by Lord Hoffman in Amgen v TKT [2005] RPC 169.

  37. You’ve lost me there Rick. I didn’t appreciate that there is a “balance” between 1) the statutory requirement that the claim define the protected area and 2) the Doctrine of Equivalence. The one is inherent to all modern laws of patents. The other is judge-made, fully unnecessary, breeds legal uncertainty and obfuscation and, needless to say, misconceived. At the risk of repetition, the modern English way to construe a patent claim is to ask what the PHOSITA would understand as that which the writer of the claim was using the language of the claim to mean. No need for any “balance” there, just construe the claim in a common sense real life way and Bob’s your Uncle. After all, the intended reader of a claim is a PHOSITA, right, not some tricky lawyer busy giving the law a bad name by arguing that black means white. Your “after-arising” still leaves me unconvinced. Let’s see what others contribute, by tomorrow. Lastly, I am taking it that you intended to assert that the CAFC is “inept”, not “inapt”. I think you do the CAFC wrong. I think it was right, and conveyed its rightness entirely competently.

  38. MaxDrei,
    A non-pressure-jacket was not enabled by the spec. But at some later date, Medrad did manage to enable non-pressure-jackets. Isn’t that “after-arising-technology”?

    If we freely apply the doctrine-of-equivalents to after-arising-technology, isn’t it axiomatic that such after-arising-technology should be allowed to be incorporated within the claim scope?

    Of course, I am not implying, that we should apply the “function-way-result/insubstantial/element-by-element” tests when doing an enablement analysis. Of course, the Supreme Court specifically designed these tests, only, for the doctrine of equivalents, in order to strike the balance between the statutory requirement that the claims define the scope of the invention – and the doctrine of equivalents. Obviously, these tests are inapplicable when doing an enablement analysis for the literal interpretation of a claim.

    The point is that the doctrine-of-equivalents should be INSTRUCTIVE – repeat – INSTRUCITVE – that there is no requirement that “every” conceivable embodiment covered by a claim need to be enabled by the spec. Rather, only a “single” embodiment need to be enabled in order to fulfill the “enablement” requirement. Otherwise – repeat – how do you apply the doctrine of equivalents to after-arising-technology?

    Remember, the doctrine-of-equivalents is nothing more but an “implied” broad construction of the claims. Any, invalidity issue that applies to the literal claim, also applies to the doctrine-of-equivalents, e.g. prior-art, 101, AND enablement. Thus, if enablement is an issue for alternative embodiments under a literal claim reading, it should be an invalidity issue (or at least bar…) for the doctrine of equivalents.

    The above analysis PROVES the CAFC holding is wrong – or at least inaptly conveyed.

  39. “Woe” you say Ralley but that woe leaves me singularly unmoved. The greater mischief is the Applicant who extrapolates away from the published record of the application, or the claim, to capture what he himself wasn’t cute enough to enable or (in Cross) claim literally, and then seeks to enjoin the competitor who was smarter. I’m with Judge Rader’s concurring opinion in Cross Medical, and his judicious balance between the rights one awards to the patent owner, and the freedom that those rights takes away from the innovative competitor.

  40. Tom – I think claims 14 and 24 that include a pressure jacket are not asserted or otherwise relevent to the case is because “Medrad’s accused products do not have the pressure jacket.”

    MaxDrei – I think you’re right that you should get a monopoly only to what you enable. What troubles me is that the court appears to be ready to invalidate claims that have some of their scope enabled and some not – the end result being you get no protection for what you did enable. Unless, As I Dispute That says (and I said in my first post), you made sure you get a dependent claim to every feature of your invention (essentially claim youe example embodiment in dependent claims). Woe to the drafter/inventor who fails to recognize an essential feature, even if that feature is nonexistant at the time of invention.

  41. I Dispute That said
    “If the drafters here had just added a dependent claim with their original limitation of a pressure jacket, the dependent claim would probably be valid and the would get protection for what they enabled.”

    In my previous comment, I said “Read the case. Read the patent.”

    Claim 14 of the ’669 patent depends from Claim 10 and includes a pressure jacket. But, this dependent claim was not at issue on appeal. Independent Claim 24 of the ’669 patent includes a pressure jacket, but, again, this claim was not at issue on appeal. I have not read the full cause below, nor the prior appeal, nor examined the filewrapper. So, I am not going to guess why Claims 14 and 24 were not sufficient to end the case.

    Also, the opinion concludes “we affirm the conclusion that all the asserted claims are invalid.” Presumably, the claims not asserted, which includes Claims 10 and 24, are still valid.

  42. MaxDrei wrote: “you get a monopoly, of a scope commensurate with what you enable”

    Gideon wrote: “That’s not what the patentee in this case got, so, without a doubt, your suggested legal principle is incorrect.”

    But MaxDrei’s legal principle is correct if you change it just slightly to say, “You get a monopoly, a.k.a. right to exclude, for claims whose scope you enable.”

    If the drafters here had just added a dependent claim with their original limitation of a pressure jacket, the dependent claim would probably be valid and the would get protection for what they enabled. It’s not the patent law’s fault that the drafters here tried to claim too broadly.

    If I invent a wonderful new, nonobvious gizmo but draft only a single claim to “a thing,” no more, then my whole claim is invalid, even though that means I don’t get protection of what I invented. My fault for not claiming more narrowly.

  43. Hi Gideon, spot on, American is not my first language. I checked “bloviate” in Wikipedia and learned about President Harding and Fox News. Most educational. I haven’t yet needed “bloviate” in my vocabulary but if I go on reading US patent law blogs maybe I can myself use it soon. Thanks for teaching me something I didn’t know before.

    This point of ours, whether the scope the Liebel inventor “got” was proportionate, needs to be pinned down precisely. If you are still there, let’s do that, so others tomorrow can chip in with comment that is focussed.

    Are you thinking that the inventor “got” too much scope, or too little? Do you mean that the inventor really did deserve the full scope of the claim that issued from the USPTO? Or do you mean that the inventor deserved something more than what emerged from the CAFC? I guess the former but, if so, I still don’t see the public policy reason for giving an inventor a monopoly over an area of technology, wherein he is quite unable to tell us how to realise his claimed concept. A government would be crazy, to handicap its domestic industry so grotesquely by the deliberate and calculated issue of such claims.

    BTW, thinking of other earlier contributors to this thread, there never was a patent yet, in which it is impossible to devise a non-functional embodiment within the scope of a claim. If that were the test of validity, every patent ever issued would be invalid. Those contributors should check out the “Principle of Synthetical Propensity” which is by now unassailable in the EPO. I am sure that US patent law also recognises the same universal legal principle but, no doubt, under an American name ;).

    Gideon, do you have a view on “after-arising”? I thought this was to cover the case where the equivalent was using some scientific advance (discovery) that simply wasn’t known at the time when the draftsperson wrote the claim. We don’t have that in Liebel, do we? So, is Liebel really a “classic” after-arising equivalents case?

  44. MaxDrei, not sure if there is a language barrier or something, but I couldn’t understand your post.

    American must not be your native language. ;)

    MaxDrei wrote: “you get a monopoly, of a scope commensurate with what you enable”

    That’s not what the patentee in this case got, so, without a doubt, your suggested legal principle is incorrect.

    Anyone else want to give it a shot.

  45. Thanks Gideon and Rick for confirming some of my prejudices about US lawyers. Come on readers, give us your reactions. Gideon, I should have thought that the legal principles are not difficult: you get a monopoly, of a scope commensurate with what you enable(otherwise the balance between what the public gains from a patent system and what the inventor gains, is wrong). The only difficult bit is having the clout to apply judiciously the (clear) principles to the (clear) facts. I will have to look up “bloviating”. Sounds nice. Must be onomatapaeic (not sure how to spell that). Fart we do have in England, also in some law offices, but unlike Malcolm Mooney they wouldn’t be able to see off their opponents in blogs like this one. Rick, looks like you and me understand “after-arising” technology differently. Readers, Rick says it’s a “classic” example. Really?

  46. The non-pressue jacket used by Medrad to substitute Liebel-Flarsheim’s pressure jacket, is a classical example of “after-arising” technology.

    That is why this CAFC decision begs the question:

    If, under the doctrine of equivalents, a claim can cover a defendant’s infringing device which includes “after-arising” technology, then doesn’t it necessarily follow, that such claim could be initially drafted to “literally” cover the “after arising” technology?

    Summary of Malcolm Mooney’s logic:
    The patentee is definitely the greedy type…
    Your gut feeling tells you the patentee is wrong…
    All you need is a “formal” decision…
    Oops…Sorry.. the decision came-out a bit messy…
    But don’t fret – the patentee is wrong and greedy – deserves to be punished…

    Lesson: Just trust your gut – everything will turn out just fine (just ask President Bush…)

  47. Mooney, I find you neither well informed nor interesting to read. You strike me as one of the bloviating old farts who wander around the halls of patent firms expecting to be taken seriously because you have gray hair and a receding hair line and some dumb ass clients gave you work for 30 years.

    This case is, flat out, retarded.

    Not much legalese in that conclusion, I realize, but true nonetheless.

    Some posters seem to be trying very hard to argue that this was “a one-off case”. A beat down of a greedy patentee.

    But, whether that was the panel’s intent or not, the effect of these types of cases is always to open the door up to litigation, reexamination, and otherwize jeapardize patented claims.

    In other words, focus on facts in cases is usually a mistake.

    The better question is always, “what is the principle of law that has been established/contradicted/reinforced”.

    Sure, you need to understand the facts of the case to understand the point of law, but thereafter the facts are no longer informative.

    So stop trying to argue that the facts of this case make the legal conclusion correct. They don’t and that is not the direction that the law demands.

    You apply the law to the facts.

    So what is the legal proposition for which this case stands?

    If you can’t give the legal conclusion without using the facts of the case, then I’d say you need to work on your legal skills.

    The first day I understood both what “enablement” meant and what the use of the transtion phrase “comprising” did to the scope of the claim was the first day that I understood that the determination of “enablement” was, at best, a gray area of the law.

    After asking a few bloviating old farts about it, and getting ridiculous answers with brave attempts at case references, I realized that it was likely to be a murky area of the law on the day I ceased practicing.

    So now I’m pretty far along, and – it just got murkier.

  48. To Tom Kulaga: I’m not sure how bothered I am about the absolute level of “credibility” in this blog. It’s not exactly the top criterion that keeps me logging on. I would much prefer witty debate. The other patent blogs are pretty much devoid of participation, and so are not fun. DENNIS: if I remember it right, the British BBC mission statement from almost 100 years ago was to “Inform, educate and entertain”. Not bad. Dennis, you keep it up please.

  49. I said “I don’t see why everyone is getting excited over this case.”
    Malcolm said “I blame Dennis and the sexy title for this thread.”

    I agree. In “Pull My Finger Fred,” Dennis wrote: “In the appeal, the 7th Circuit agreed that a single seller of farting dolls was enough and upheld the copyright on Fred.” This “poetic license” was a bit of sensationalism I assume was intended to increase interest in the post.

    Unfortunately, such sensationalism (or Yellow Journalism) affects the credibility of this blog. When I read the next post, instead of assuming that Dennis accurately reported the case, my first thought was “I wonder if this is what the case is really about.”

  50. Above are 115 comments, many rather excited, on a case which is trumpeted as “New Law” yet which strikes one practising in Europe as banal, and indistinguishable from the daily run of thousands of cases within the examining divisions of the EPO. The CAFC artisans were tasked to adjudicate the dispute, using the legal tools available. Liebel is a fine example of that good old principle known to artisans, that if your toolbox has the right tool, the job is easy, but if your toolbox lacks the right tool, the job is tedious. In the European toolbox there is an extra tool. When Europe set up the EPO from scratch in 1978 it included the “new subject matter” tool. That tool stops parties like Liebel coming back in a continuation (we all it a divisional)for a second bite at the cherry, a new claim, that is clear of the art and wide enough to embrace the competitor’s device. The “new subject matter” tool is good because 1) it nips the problem in the bud (the claim doesn’t survive examination on the merits) 2) but, if it gets through to issue, the party putting validity in issue doesn’t need discovery or a witness to reveal it as invalid, but just the prosecution history 3) thereby avoiding grotesquely expensive legal dispute about difficult concepts like “enablement”, “insufficiency”, “inequitable conduct” etc, etc.

    Even apart from the killer “new subject matter” objection to the claim, what I miss from the above comments is any reference to a British-style, scope vs validity, “squeeze” argument, going something like:

    Claimant: My claim covers the competitor’s device, and you have not proved that it is invalid.

    Defendant: To be valid, the claim must enable, to an extent commensurate with the extent of the protected area. It doesn’t enable jacketless devices so, to the extent that it embraces the accused jacketless device, it cannot be a claim that is both valid and infringed

    Court: So, Claimant, how am I to understand your claim? What is the claim construction you are contending for, that puts the accused device inside the scope of a valid claim?

    Claimant: Bluster. Case closes.

    When diametrical opposites England and Germany did the near impossible, and did actually harmonise under the EPC, it brought the patent law of the English common law world and the civil law (DE, JP, CN etc) world together, and gave them a working patent law toolbox that gets the job done efficiently. One good effect of cases like Liebel, and threads like the one above, is to remind ROW what arguments are still live, in territories where the EPC model is not adopted.

    The musings above, that every claim that recites “comprising” is invalid for insufficiency, strikes me as absurdly overblown. The writers contending for a claim to be valid over some but not all of their extent are pleading for a system in which there are no dependent claims and every independent claim is speculative and covetous. Doesn’t most everybody want a system that encourages Applicants to strive for claims that will withstand any attack on any part of their scope? Isn’t it the job of a properly graded set of dependent claims (onion skin model) to announce fall back positions of enhanced validity, if the main claim cannot withstand all validity attacks?

    Aren’t these postulates fundamental to any properly functioning patent system? Isn’t the CAFC only trying to inject some of this fundamental stuff into the current US jurisprudence? Three cheers for the CAFC.

    I should say (in case any reader is affronted by my comments) that the “new subject matter ” tool works well only in conjunction with 1)continental European ideas (Art 69 EPC and Protocol)about the non-literal scope of protection of an issued claim, put into effect by 2) English rules (Hoffmann, Kirin) how to get at the real meaning of the claim.

  51. The court didn’t address this point, but I think there may be a more fundamental enablement problem with claim 10 of the ‘669 patent.

    Claim 10 is directed to a “method of loading a tubular replacement syringe in to a high pressure power injector…comprising the steps of providing a power injector having…a plunger axially slidable in the body, the syringe body being structurally capable of withstanding ..at least 100 psi within the interior thereof…”

    But as noted above, the specification teaches that disposable syringe bodies, by themselves, are not capable of withstanding pressures greater than 25 psi. Doesn’t that mean that this claim is not enabled since the tubular replacement cylinders are limited to those that do not exist?

  52. Lionel Hutz said: “The point is if the combination A+B+C is patentable in and of itself, then Liebel’s invention, according to Chisum, Landis, is on the syringe regardless of whether a jacket is used.”

    Nobody’s disputing the idea of blocking patents, I think. The fact that A+B+C+D is patentable does not mean that the full scope of A+B+C was not necessarily enabled. As someone posted upthread, “Something can be novel and developed without undue experimentation (very similar to how something can be novel and obvious).”

    Lionel Hutz then said: “If the syringe design as claimed by Liebel would not work without a jacket then a jacket may be considered to be inherent in the claims and if Lourie’s opinion had just said that, this case would have no hoopla.”

    Read the case. The district court originally said exactly that — your claims cover only devices with a pressure jacket. Then in a previous appeal to the Federal Circuit, that court reversed the claim construction. It said, sorry, but when you specifically amended your claims to take out the work “pressure jacket,” then we will not read it back in. Thus, Lourie’s opinion *could not* have said what you asked — the law of the case on claim construction was otherwise, and properly so.

  53. I Dispute That said “Yet you do not accept the fact that a claim covering that embodiment plus *more* subject matter (i.e., a claim to A+B+C whatever else might be in the embodiment) would be invalid even though it covers nonenabled material.”

    I do not believe the OP is disputing that. What he is saying is that if I have a patent covering A+B+C that patent covers anybody who has that combination in their product including A+B+C, A+B+C+D, A+B+C+E, A+B+C+D+E+F, etc. Now the makers of those products may be able to get patents on those configurations, but they would not be legally allowed to practice their invention without taking a license from me. I would not be able to practice their inventions without taking a license from them either. The point is if the combination A+B+C is patentable in and of itself, then Liebel’s invention, according to Chisum, Landis, is on the syringe regardless of whether a jacket is used.

    If the syringe design as claimed by Liebel would not work without a jacket then a jacket may be considered to be inherent in the claims and if Lourie’s opinion had just said that, this case would have no hoopla. However, if the syringe design as claimed by Liebel required a jacket, then how would the accused infringer’s device infringe?

  54. In this case:

    1. Claims require device to operate a high pressures.
    2. Specification specifically teaches away from syringe without pressure jacket.
    3. No figures showed syringe without pressure jacket.
    4. There is no teaching in the specification of how to make or use such a high pressure device.
    5. Persons of skill in the art, at least those at Liebel, could not make such a device and admitted this.
    6. More than routine experimentation would have been required to make such a device. In fact, it is probably a separate invention.
    7. Claims were broadened in prosecution to read on the accused device, which did not have a pressure jacket.

    Therefore, the Court held that claims are invalid for lack of enablement in spite of the fact that the claims read on at least one enabled embodiment.

    One problem here is that if the claims had not been asserted against an accused device that was so clearly outside the scope of Liebel’s invention, the claims might still be held valid. So asserting them against this device caused the claims to be lost forever. This is disturbing. If the claims were asserted against a different device, one that did not implicated the presence or lack thereof of a pressure jacket, would the result have been different?

    If the claims were interpreted solely in light of the specification without the accused device even being known, would the claims be valid? Do claims change their construction depending on the device against which they are asserted?

    Enablement requires that the inventor enable a person of skill in the art to make and use the full scope of the claimed invention. If the invention is a syringe with a pressure jacket, then the claims are enabled. A construction in light of the specification would so conclude. So there is an issue of how the court came up with the fact that the scope of the claims included a syringe both with and without a pressure jacket. How can the court come up with a construction that is not correct in light of the specification?

    It seems something went wrong with the claim construction phase. The court construes the claims to be outside the scope of the invention, and then declares the claims to be invalid because they are outside that scope. In Athletic Alternatives, it was held that where there is an equal choice between a broader or narrower construction, and the specification indicates that the patentee is entitled to at least the narrower construction, then the claim should be so interpreted. So the claims should have been construed to be limited to syringes with pressure jackets, if at all possible.

  55. This continues to be a very interesting discussion.

    Brian Hickman said: “I have no problem with the proposition that I don’t get a patent to A, B, C and E if I haven’t enabled A, B, C and E. I think we all agree that you cannot claim an invention that you did not enable. That is not the issue. This case seems to be saying that I cannot get a patent on A, B, and C, which I did enable, simply because I did not enable the combination A, B, C and E.

    “My problem is that a claim to A, B and C would be invalid at all, simply because someone is using it in combination with another element.”

    Let me make sure I understand you: You accept the fact that a claim to A+B+C+E would be invalid because the specification does not enable that subject matter. Yet you do not accept the fact that a claim covering that embodiment plus *more* subject matter (i.e., a claim to A+B+C whatever else might be in the embodiment) would be invalid even though it covers nonenabled material.

    I’m just going to have to refer you to Chisum then. I’m at home, but I think it’s in chapter 7, the subsection on overbreadth. I’m pretty sure he gives an example almost exactly like yours and cites case law that your A+B+C claim is invalid if it covers nonenabled subject matter.

    As to Malcolm’s, “I’m speechless” response, I’ll take that as a complement. Go get that drink, then come back and tell me what in the patent code itself says what do when some subject matter of an invention, but not all of it, is invalid. Due to tradition and the convenience that comes from having the subject matter broken into claims, we invalidate claims containing the invalid subject matter. Point me to where in the patent code that is the required approach, rather than the de facto or the convenient approach in practice.

  56. ” don’t see why everyone is getting excited over this case.”

    I blame Dennis and the sexy title for this thread.

  57. Well, my practice focuses on mech/elec, and I agree wholeheartedly with Malcolm. Read the case. Read the patents. Apply common sense. I don’t see why everyone is getting excited over this case.

  58. “Given the facts of this case — not simply the facially broad scope of the claims but ALL THE FACTS — the result reached by the CAFC is not suprising in the least.”

    That’s fine and dandy, but as they say “bad facts make bad law.” My problem is not with the ultimate decision against Liebel but with the very real logical interpretation of Judge Lourie’s decision – namely, that any open-ended claim is essentially invalid. I am not sure why you seem to be having trouble grasping that.

  59. I Dispute That,

    I think you may be confusing anticipation and patentability. If I patent ABC and You come out with ABCDE, I can still assert my patent against You and get an injunction or at least damages. You, on the other hand can get a patent to ABCDE and if the improvement is something I want to use, I will have to get a license from You and we will likely end up cross-licensing each other (unless You sell me the patent outright).

    To apply this to the current facts, they are exactly as Mr. Hickman concisely stated.

    Joe

  60. “On my side of the fence, this case (if taken seriously) invalidates almost every claim I have written.”

    For the record, I seem to differ not only in the field in which my practice focuses (chem/bio) but in my experience, which includes a fair amount of litigation (on both sides, representing small clients going after big guys, and big guys defending themselves from small guys).

    And frankly it’s that latter experience which informs my view that your statements about the effects of “taking this case seriously” are off the reservation.

    In Liebel’s case, you really do need to ask yourself what they were thinking. Here’s my guess: “hey, if we broaden our claims, we can threaten Medrad and get some big $$$ out of them, maybe drive those axxholes out of business. There’s a big chance we might lose the case but it’s worth the risk because nobody is buying our dumb needle holders anyway and, if nothing else, we can bleed Medrad and distract them while we blah blah blah”

    Something like that. I suggest that rather than soil yourself worrying about the validity of your “comprising” claims, you and your clients take seriously Judge Lourie’s express advice: be careful what you ask for. And perhaps if your patent is valuable and you want to continue enforcing it, maybe DON’T try to push it too hard at the well-moneyed competitor with serious non-infringement and/or enablement arguments.

    Given the facts of this case — not simply the facially broad scope of the claims but ALL THE FACTS — the result reached by the CAFC is not suprising in the least.

  61. Dispute That: That is the whole idea of the patent system. We the people give you a patent over the new things you enable us to do. You have not enabled us to make “A, B, C, and E,” so you don’t get a patent to it.

    I have no problem with the proposition that I don’t get a patent to A, B, C and E if I haven’t enabled A, B, C and E. I think we all agree that you cannot claim an invention that you did not enable.

    That is not the issue. This case seems to be saying that I cannot get a patent on A, B, and C, which I did enable, simply because I did not enable the combination A, B, C and E.

    Dispute That: Again, I say that the problem you seem to be having is with the unit by which invalidity is determined — the claim. Do you not agree?

    I don’t think so. My problem is that a claim to A, B and C would be invalid at all, simply because someone is using it in combination with another element.

    Based on all the comments here, who is writing them, and the examples that they give, it appears that there is a huge chasm between chemical/biotech practice and electrical/mechanical practice. I fall on the electrical/mechanical side of things. On my side of the fence, this case (if taken seriously) invalidates almost every claim I have written. Software inventions, for example, can almost always be used in combinations or contexts that the specification does not enable.

  62. “The statute says that “the invention” shall be those things. In my mind, that leaves open the question of what do to if some of the invention meets those requirements and some does not.”

    I’m speechless. Or maybe I just need a drink so bad I can’t think straight.

  63. I Dispute That,

    I like your analysis and agree that the court should invalidate only that which is not enabled, not necessarily the entire claim (for the case of enablement deficiencies – prior art, etc may be another story). Or simply offer non-enablement as a defense in itself to accused infringers instead of invalidity.

    You should write a paper.

  64. Not so, Malcolm Mooney.

    You are probably thinking of section 112, para. 2:
    “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”

    That pretty clearly says that the claims just define the subject matter that comprises “his invention.”

    Look at section 112, para. 1, for example:
    “The specification shall contain a written description of the invention . . . .”

    It doesn’t say “the inventions,” it says “the invention.”

    Thus, each patent is to one invention, the subject matter of which is defined by several claims.

    But the statute does not say that “the claim” shall novel, not obvious, useful, and enabled.

    The statute says that “the invention” shall be those things. In my mind, that leaves open the question of what do to if some of the invention meets those requirements and some does not.

    Right now, we break the invention down by claims for those purposes. It is not apparent to me that the patent code requires that.

    I concede fully that this is not our long historical tradition. My point is just about the patent code itself.

  65. “I do not see anything in the patent code that tells us we have to invalidate the invention claim-by-claim.”

    Each claim *defines* an invention. I think that is in the patent code somewhere.

  66. “No – because this case will be overturned or signicantly limited.”

    It won’t be overturned. And I agree that is unlikely to become the leading case on enablement law because the patentee here begged for a smackdown.

  67. Brian Hickman said: “Think of it this way… my invention is the combination of A, B and C. I disclose an embodiment that has the combination A, B, C and D. I claim the combination A, B and C. D is not required to distinguish over the art, because the combination A, B and C is itself novel and non-obvious.

    “Someone copies my invention A, B, and C, but instead of using it in combination with D, they use it in combination with E. Thus, their combination A, B, C and E literally infringes my claim, but is an unforseen, undisclosed embodiment of my invention A, B and C. My specification did not enable the use of A, B and C in combination with E.

    “Is my claim to A, B, and C invalid because they figured out how to combine it with E instead of D? Do they escape infringement because they figured out how to combine it with E instead of D?”

    === My response ===

    If your claim is “a gizmo having A, B, and C,” then you can argue that the nature of a “gizmo” is that the person of skill in the art at the time of filing would not have understood it to include that bizarre element “E”.

    For example, if you claim “a car with an a drive train, wheels, and seats,” you can argue that the person of skill in the art at the time of drafting would not understand a “car” to include a nuclear-power plant. If that is true, then your claim will not be invalidated by someone showing that your specification does not enable what we now call a “car” that has a drive train, wheels, seats, and a fission reactor that was completely not enabled at the time of patenting.

    But if your claim is just “a thing having A, B, and C,” and if you want to exclude from the scope of *that* claim, then yes, of course that claim is invalid if you have not enabled people to make the entire scope of the claim, including A, B, C, and E.

    That is the whole idea of the patent system. We the people give you a patent over the new things you enable us to do. You have not enabled us to make “A, B, C, and E,” so you don’t get a patent to it.

    Again, I say that the problem you seem to be having is with the unit by which invalidity is determined — the claim. Do you not agree?

    You would presumably have no problem if a court invalidated a patent holder’s ability to exclude others from making, using, and selling just the non-enabled invention comprising A, B, C, and E, right?

    But when you group that subject matter with other subject matter than is enabled (namely, A, B, C, and D) by putting the two in a single claim to A, B, and C, then the law as it stands invalidates the claim containing the non-enabled subject matter.

    Your objection is thus that invalidation occurs per claim, as opposed to per embodiment.

    To show that, answer my earlier question: Suppose you have a claim that effectively says, “I claim something made of A or B.” If B is anticipated by the prior art, is not the whole claim invalid, even if A meets the requirements for patenting?

    If that is the case, how is invalidity for failing to comply with one statutory directive (section 102) different than invalidity for failing to comply with another statutory directive (section 112, para. 1)?

    Don’t both say that “the invention” must meet certain requirements (novelty, enablement)?

    And if we invalidate a patented invention claim-by-claim in one instance, why do we get to do it differently in another?

    In sum, your problem is with the unit of invalidation. On that point, I agree with you. I do not see anything in the patent code that tells us we have to invalidate the invention claim-by-claim. I think the patent laws leave that open.

  68. “Seriously. Is that what you are going to do?”

    No – because this case will be overturned or signicantly limited.

  69. My apologies Zeke – you did say: “So, Liebel gets steaming mad because they couldn’t figure it out, amends their claims to remove the wheels and sues.” I read over “amends” as “construes.” So your analogy is correct.

    The remainder of my comments and questions are valid and stand (have you read them yet Mooney?)

  70. “I meant use of the word “comprise” in and of itself will be enough to render claims invalid”

    Is that what you will advise your clients? Are you going to write a spam email telling them that they should consider immediately re-examining all of their claims which recite “comprising”, and cite this case?

    Seriously. Is that what you are going to do?

  71. “I’m not sure if your mischaracterization is satire or actual ignorance. The correct analogy would be “claims a car” not “claims a car having wheels”

    No, Zeke got it right. Liebel changed its original claimed invention — and pretended that it invented something it hadn’t — to secure allowance of claims which encompassed its competitors product. See page 5 of the case (have you read it yet?):

    “The claims in the originally-filed application explicitly recited a pressure jacket in front of the syringe receiving opening. During the prosecution of the front-loading patents, Liebel removed all references in the claims to a pressure jacket. Medrad asserted, and the district court agreed, that during the prosecution of the front-loading patents, the applicants became aware of Medrad’s jacketless injector system and then deleted all references to a pressure jacket in the asserted claims in order to encompass Medrad’s injector within the scope of the claims. The examiner allowed the claims, and the claims as issued do not contain an explicit recitation of a pressure jacket.”

    Recall that issued claims are merely *presumed* valid. It’s an important point to keep in mind when reading this case. The claims should never have issued. The issued claims allowed Liebel to harass Medrad for a period of time which ended on the day the CAFC’s opinion was published.

  72. Me – “I think the issue as some people have tried to express is that virtually every claim that uses “comprises” can now be rendered invalid.”

    MM’S response – “Nothing new here. That was always true of every claim.”

    I meant use of the word “comprise” in and of itself will be enough to render claims invalid, but you knew that was my meaning.

    Me – “Certainly, I probably would have added a new dependent claim that included the jacket if I removed it from the main claim, but that does not change the fact that the jacket was not part of the invention proper.”

    MM’s response – “The “fact” is that claims which did not recite a jacket were found not enabled by the CAFC and, I submit, correctly so. Perhaps your real complaint is with the Examiner who issued the invalid claims in the first place.”

    Maybe I was unclear – I believe Lieber did not claim a jacketless embodiment. Lieber arguably claimed his invention, which was a syringe independent of the jacket. The patent practitioner determined that the jacket was not part of the syringe invention. For example, if the jacket design did not change when the new syringe design was introduced then the new syringe design clearly does not encompass the jacket and should not be part of the claim.

  73. Zeke,

    I’m not sure if your mischaracterization is satire or actual ignorance. The correct analogy would be “claims a car” not “claims a car having wheels”

    Nobody here is arguing that Liebel deserves a monopoly over something they did not invent or that shey should prevail in this infringement suit. Rather, the fact that the entire claim was invalidated is the problem. The broad language about having to enable a full claim scope is the problem or face invalidity is untenable.

    Regarding the “they got greedy refrain” wouldn’t court costs be a punishment for incorrectly asserting the patent?

  74. “The sole fact that someone so generally hostile to the patent system (e.g., “I think it’s well known that a significant fraction of patents are already worthless”)”

    Nice ad hominem. I’m not hostile to the patent system. Far from it. I just don’t approve of folks who deny reality. It’s healthy to approach these cases in a sober manner, rather than making hysterical judgments like, “every claim that recites “comprising” is now invalid.”

    If you have some statistics which show that most patents have significant value (greater than the cost of applying for them would be nice) I’d like to see them. Please share those statistics. Maybe I’ll start filing my own.

    I understand that “innovating” in the “business method” field is pretty straightforward.

  75. Haha. I read half of it already.

    So, Liebel invents a car having wheels, claims a car having wheels, and discloses only embodiments of cars having wheels.

    Then some Schmuck makes a version of the Liebel car but omits the wheels, aka, the wheel-less car. And lo, it drives! So, Liebel gets steaming mad because they couldn’t figure it out, amends their claims to remove the wheels and sues.

    On the stand, the inventors of the Liebel wheeled car admit that they didn’t know how to make a car without wheels. Seems like the wheels were pretty essential to the invention, no? Is it normal to omit from a claim an essential part of an invention?

    Or a better question, does Liebel deserve a monopoly for teaching the world how to make a wheel-less car?

    Seems to my small brain that Liebel got greedy and tied to sue someone who invented what they couldn’t. They got caught and had their patent invalidated as punishment. Good riddance. Hopefully they’ll learn their lesson spend more money on innovation and less on sourpuss lawsuits.

  76. This is nuts. Has the CAFC lost its mind?! I for one am going to start drafting all my claims with “consists” rather then “comprises” in protest. After all, they mean the same thing now.

    Look, if I claim X Y Z Q A b 4 G^2, anybody can make X z A b 5 G^3 and there’s nothing I can do about it!!! All thanks to this horrible, horrible case. Arg!

    Well, anyhoo, I’m sure I’ll get around to reading the actual case next week, but I’ll probably stop half way. And all these comments, well, 87 is far too many for anything other than skimming.

  77. Just want to add that I made factual statements about Liebel’s side that may not be true. My statements were made giving Liebel the benfit of the doubt. Things may not have happened the way I stated. However, they could have and I have no reason to believe the court would have ruled differently.

  78. What if the applicant had claimed “a syringe for an injection system” and not “an injection system”?

    Is a component of a system (like a syringe) not enabled because it may take undue experimentation to use that component in systems not described in the patent?

  79. The sole fact that someone so generally hostile to the patent system (e.g., “I think it’s well known that a significant fraction of patents are already worthless”) likes this opinion (“The CAFC got it right: the patentee here got greedy”) is enough to call into question Judge Lourie’s opinion here. The high theatrical interjections, pageantry, and name calling are just added bonuses.

  80. “I think the issue as some people have tried to express is that virtually every claim that uses “comprises” can now be rendered invalid.”

    Nothing new here. That was always true of every claim.

    “To argue that the patent holders demanded that their invention encompassed a jacketless embodiment is misleading.”

    Read the patentee’s claim construction brief. There’s nothing misleading about my statement.

    “Certainly, I probably would have added a new dependent claim that included the jacket if I removed it from the main claim, but that does not change the fact that the jacket was not part of the invention proper.”

    The “fact” is that claims which did not recite a jacket were found not enabled by the CAFC and, I submit, correctly so. Perhaps your real complaint is with the Examiner who issued the invalid claims in the first place.

  81. “This case kills open-ended claims unless confined to facts with broadening of claims.”

    Gosh, I better go amend the claims in all my pending cases right now!!! Call your clients!!!!! Call your clients!!!!!!

  82. So, specifications now have to teach the defendant’s implementation of the invention?

    Such a rule would render most patents worthless.”

    I think it’s well known that a significant fraction of patents are already worthless so don’t fret.

    As for your statement that “specifications now have to teach the defendant’s implementation of the invention” aren’t all the best specifications written that way? I know that my clients insist that I put in as many of the presently operative embodiments that we can think of, in addition to some prophetic ones. But I don’t expect to get a claim which recites, “Chemical X, wherein said chemical is in a tab in the glove compartment of a gravity car.” That claim isn’t enabled. Get it?

    I don’t understand why folks here so inclined to believe that this case isn’t going to end up mostly limited to its facts? It wasn’t an en banc decision addressing the law of enablement. It was a greedy patentee getting shot down. That’s all.

    Chill, people. Besides, it’s Friday.

  83. Malchom Mooney said: The issue here was whether the jacketless embodiment of the claimed invention — the accused infringers’ device — was taught by the specification. It wasn’t. So the claim is invalid.

    So, specifications now have to teach the defendant’s implementation of the invention?

    Such a rule would render most patents worthless.

  84. “I was not referring to inoperative embodiments. I was referring to operative, not-disclosed embodiments.”

    Was a jacketless needle holder comprising the patentee’s invention “operative” as of the filing date? I don’t think so. The patentee didn’t think so and provided no teaching whatsoever as to how it could be accomplished.

    And it’s not an issue of some minor fraction of the scope being not enabled. It’s essentially half the scope. And it’s the half embodied by the infringer’s product.

    Big problem.

  85. I think the issue as some people have tried to express is that virtually every claim that uses “comprises” can now be rendered invalid.

    To argue that the patent holders demanded that their invention encompassed a jacketless embodiment is misleading. The jacket was unimportant and not part of the invention. When drafting claims, a good practitioner tries to limit the detail in the claim to only the barest invention. As Rick previously stated, the novelty of the invention has only to do with the design of the syringe. Just because Liebel’s embodiments required a jacket does not in any way mean the invention included a jacket. The invention had nothing to do with the jacket. They changed their claims upon realizing the competitor that was allegedly using their syringe design did not use a jacket. They or their attorney realized (s)he had made a mistake when drafting the claims and had explicitly included the jacket although it was not part of the actual invention. Certainly, I probably would have added a new dependent claim that included the jacket if I removed it from the main claim, but that does not change the fact that the jacket was not part of the invention proper.

    Given the facts in this case and the behavior of the patent holder, I might concur in the judgment, but the statements by Justice Lourie in this decision are terrible.

    I think some of the people who support or are OK with this decision probably practice in the chemical or biotech areas (unpredictable arts), where more specificity is the norm. But this a HUGE change in the law for electrical/mechanical practitioners if this case is not reheard or overturned at some point.

  86. Malchom Mooney said: I agree that inoperative embodiments do not tank claims as a per se matter.

    A prophetic embodiment in the spec will actually tank your claim. But this case isn’t about that. It’s about embodiments you didn’t put in the spec and may have not even known about.

    Brian Hickman, Gideon, ralley, Rick, T.Edison: I’m with you. This case kills open-ended claims unless confined to facts with broadening of claims.

  87. Brian Hickman said: “There has never been a requirement that the specification enable ALL possible embodiments of the invention. Such a requirement could never be satisfied.”

    Malchom Mooney said: I agree that inoperative embodiments do not tank claims as a per se matter. But that is not what this case is about. Read the thread. This issue has been addressed a dozen times already.

    I was not referring to inoperative embodiments. I was referring to operative, not-disclosed embodiments.

    Virtually every claim covers operative, not-disclosed embodiments. That is what this case is about… the operative, not-disclosed embodiment that was developed by the defendant.

    —-

    Brian Hickman said: “There has never been a requirement that the specification enable ALL possible embodiments of the invention. Such a requirement could never be satisfied. (there will always be unforseen embodiments that are literally covered by the claim).”

    Malchom said: Yes, there has been and is. You raise the spectre of unforseen embodiments literally covered by the claim. That calls back to the earlier example of the “lightning rod more than 10 feet long.”

    I’m not sure why “unforeen embodiments literally covered by the claim” is a “spectre”. I would guess that a large percentage of infringing products are “unforseen embodiments literally covered by the claim”.

    Think of it this way… my invention is the combination of A, B and C. I disclose an embodiment that has the combination A, B, C and D. I claim the combination A, B and C. D is not required to distinguish over the art, because the combination A, B and C is itself novel and non-obvious.

    Someone copies my invention A, B, and C, but instead of using it in combination with D, they use it in combination with E. Thus, their combination A, B, C and E literally infringes my claim, but is an unforseen, undisclosed embodiment of my invention A, B and C. My specification did not enable the use of A, B and C in combination with E.

    Is my claim to A, B, and C invalid because they figured out how to combine it with E instead of D? Do they escape infringement because they figured out how to combine it with E instead of D?

  88. It looks to me that you guys are confusing the PATENTABLE FEATURE with the ENTIRE DEVICE described in the specification.

    That’s the rub here. It looks like they invalidated a patentable feature (described in the claim) because the patent did not disclose a later developed entire device where the patented feature was useful and thus incorporated.

    That’s more than a little interesting and will require a more detailed read of the case.

  89. Malcolm said: “The patentee in this case recognized the possibility of jacketless syringes and taught away from their use.”

    That’s heading in the right direction, but possibly not quite accurate depending on word choice.

    The patentee never “taught away” from jacketless disposable syringes in the sense of saying that they were not preferable. Rather, the patentee just said that jacketless syringes were too expensive to be practical and inexpensive (i.e., disposable).

    Saying that something is not preferable (teaching away) is slightly different than saying that something is preferable but not achievable (what the specification essentially did).

  90. Brian Hickman said: “There has never been a requirement that the specification enable ALL possible embodiments of the invention. Such a requirement could never be satisfied.”

    I agree that inoperative embodiments do not tank claims as a per se matter. But that is not what this case is about. Read the thread. This issue has been addressed a dozen times already.

    “(some may argue that the jacket was “essential” to the practice of the claimed invention. Obviously, that is wrong. If that were true, then the defendant’s jacketless implementation of the claimed invention would not be possible.)”

    Again, read the thread and read the case. The patentee in this case recognized the possibility of jacketless syringes and taught away from their use. Some people here seem to think that such statements should have caused the CAFC to construe the claims more narrowly (to exclude jacketless syringe embodiments) and maybe if the issue was presented from a different posture that might have happened. But here it must be recognized that the patentee went out of its way to have its claims written broadly and DEMANDED that its claims be construed broadly to cover the accused infringer’s device. The patentee overreached. The patentee’s hand got stuck in the cookie jar. The patentee was thus unable to open the door and run away when the tiger entered the kitchen and was attacked.

  91. Rick said: “You just need to provide one example in order to enable the claim.”

    I fundamentally dispute that as a universal proposition. What you need to do is what the statute provides: enable the claimed invention. In many cases, enabling one example within the scope of the invention will do because the rest of the scope of the invention can then be “used and made” without undue experimentation.

    The facts of this case, however, show that it is not always true that enabling one embodiment of the claimed invention will enable another embodiment, much less the full scope of the invention.

    Rick said: “The fact, that the skilled artisan then chooses other methods to practice the invention, using technology that your spec does not enable, does not invalidate your claim.”

    Yes, it does invalidate your claim if you claim that other technology, and if, as your statement seems to assume, that other technology is not enabled by your specification (i.e., the person of skill in the art could not make and use that other technology without undue experimentation).

    Rick gave as an example: Suppose “[y]ou describe ‘one’ method for synthesizing a compound. Your claims can now cover the actual compound, regardless of the different method the compound is synthesized by others.”

    There is some ambiguity in your example. If yours is a compound claim, then no method is claimed so there would be no requirement that any particular method of making the compound be enabled.

    If your claim is to a single method, then you are incorrect that your claim covers another method for synthesizing the same invention. Thus, that other method need not be enabled under section 112, para. 1.

    But if you claim “a method for making this compound by either method A or by method B,” and if your specification only enables method A and not method B, then of course your claim is invalid.

    Likewise, if you claim simply “a method for making this compound,” and if your specification only enables one method for doing so, and if we agree that the claim reads on another method for doing so, then again your claim is of course invalid as nonenabled.

    I really hope that clears up the confusion, Rick.

    Brian Hickman said: “There has never been a requirement that the specification enable ALL possible embodiments of the invention. Such a requirement could never be satisfied. (there will always be unforseen embodiments that are literally covered by the claim).”

    Yes, there has been and is. You raise the spectre of unforseen embodiments literally covered by the claim. That calls back to the earlier example of the “lightning rod more than 10 feet long.”

    You are correct that a metal pole that is 10,000 feet long is one of those embodiments that is literally more than 10 feet long.

    But the reason your specification does not have to enable the 10,000 feet pole is not because section 112, para. 1, requires enablement of less than the full scope of the invention.

    Rather, the reason is because the person of skill in the art understand your claim to a “lightning rod” to put an upper cap of some amount on its length — a pole 10,000 feet long would not be conceived of as a lightning rod.

    You might respond by having us suppose that the claim just says “a metal pole of more than 10 feet long.” Well, if your claim is that broad, then it should be deemed invalid unless the person of skill in the art can make the 10,000 foot, or 100,000 foot, or 1 million foot pole without undue experimentation. That’s why you don’t claim overly broadly.

  92. Two more points to ponder:

    Can a defendant that has implemented the patentee’s disclosed embodiment of the invention still be able to get the claim invalidated by proving the existence of a non-enabled embodiment of the claimed invention?

    Isn’t there a non-enabled implementation for virtually every claim?

  93. This case is the “enablement” version of “Gentry”.

    I find both cases very disturbing.

    The problem: claims no longer define the invention. The courts decide what the invention is independent of the claims, and then determine whether they “agree” with the scope of the claims. If they do not agree, then they either read a limitation into the claims, or they hold them invalid.

    In this case, the “invention” recited by the claim had nothing to do with whether the apparatus had a jacket. The combination of claimed features was patentable, regardless of whether the embodiment in which it is implemented has other features.

    There has never been a requirement that the specification enable ALL possible embodiments of the invention. Such a requirement could never be satisfied. (there will always be unforseen embodiments that are literally covered by the claim)

    The fact that a literal infringer of a claim has developed an unforeen embodiment should not get them off the hook… much less result in invalidation of your claims.

    Put another way, the question should not be whether your specification enables the literal infringer’s implementation of your claimed invention. It should be whether your specification enables any implementation of your claimed invention.

    (some may argue that the jacket was “essential” to the practice of the claimed invention. Obviously, that is wrong. If that were true, then the defendant’s jacketless implementation of the claimed invention would not be possible.)

  94. “Thus your claims are going to fail if they omit anything required to enable the “full scope” of the claims, dependent only on what the court determines is the “full scope” and regardless of how “essential” or “bad” you’ve called things in your spec.”

    How can you read that out of this case? It can’t be ignored that the applicant in this case DEMANDED that the claims be read broadly, specifically to include the jacketless embodiment. So yes, the “full scope” include jacket and jacketless embodiments. But it certainly included more stuff that the Federal Circuit didn’t bother to analyze. Why? Because that wasn’t the issue here. The issue here was whether the jacketless embodiment of the claimed invention — the accused infringers’ device — was taught by the specification. It wasn’t. So the claim is invalid.

    The lesson is an old one: don’t be greedy.

    I agree that there is some muddling of written description and enablement issues but that is because written description and enablement are two sides of the same coin (no matter how many times the CAFC tries to pretend otherwise). They’ll never succeed in not muddling the two concepts.

  95. “Good — that’ll help to keep the prices of the new devices down.”

    Of course, this approach will also keep the pace of innovation down, unless you consider innovation to be tiny, incremental “me too” changes in existing technology that don’t push the technology forward (and that are simple to draft narrow little claims to protect). Patents, particularly pioneer patents, have to protect the inventor’s market against the incremental copyist, else there is little incentive to spend the time, effort and funds to innovate.

    People who stand on the shoulders of innovators owe the innovators something more than just an invalid patent.

  96. “Note that this says person skilled in the art must be able to make “the invention.”"

    That is precisely the point. If you have given the skilled artisan enough information, so that he is “enabled” to practice the invention, then you have satisfied the statutory requirement. The fact, that the skilled artisan then chooses other methods to practice the invention, using technology that your spec does not enable, does not invalidate your claim.

    Remember: You just need to provide one example in order to enable the claim.

    Example: You describe “one” method for synthesizing a compound. Your claims can now cover the actual compound, regardless of the different method the compound is synthesized by others..

  97. Lesson from the Case: You better think long and hard before disparaging prior art features (jacketless systems) to sell your invention. If you end up accusing a system that includes these features, courts will think you’re unfairly trying to cover an alternative to your invention and will try to find some way to screw you over.

    For example, in Inpro II Licensing v. T-Mobile USA, Inc. (Fed. Cir. May 11, 2006), the background section made disparging comments about prior art serial communication interfaces to sell the parallel communication interface of its invention. The applicant later obtained claims that recited a generic “host interface” because the point of novelty was irrelevant to the host interface. When the applicant asserted the claim against a system with a serial interface, the court construed the claimed “host interface” to mean a “parallel interface” and found no infringement.

  98. Rick said: “The CAFC made-up a new law that every embodiment covered by the claim needs to be enabled by the specification. Such holding has no grounding in statute, policy or equity.”

    35 U.S.C. 112, para. 1, says:
    “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such . . . terms as to enable any person skilled in the art . . . to make and use the same . . . .”

    Note that this says person skilled in the art must be able to make “the invention.”

    That term, “the invention,” is then defined in 35 U.S.C. 112, para. 2, which says that the specification must have “claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”

    So if you have to enable “the invention” and “the invention” is what is claimed, then logically you have to enable what is claimed. How does that not make sense?

    It seems like your concern is really that you think the result of not satisfying the statutory directive is to invalidate only what is not enabled. But that’s a whole separate issue.

    Do you dispute that if a claim specifically says “I claim X and Y,” then if Y is anticipated, the whole claim (including X) is invalid?

    If you do not dispute that, then how do you distinguish the facts of this case?

    Really the concern that people have is addressed by claim construction. If you say, “I claim lightning rods of more than 10 feet long,” the worry is that someone who makes a lightning rod of 11 feet could argue your claim is invalid because your claim reads on rods that are 10,000 feet long and nobody knew how to make such poles without undue experimentation.

    The answer is claim construction. If someone makes that argument, the response is that the art-skilled worker would not understand “lighting rod” to include something 10,000 feet long. It’s a bit of circular argument, but it reflects reality — the art-skilled worker really wouldn’t envision a 10,000 foot long rod if you asked him to think of lightning rods.

    And its more logically clean than saying that less than all of the claimed subject matter must be enabled because doctrine already recognizes that the art-skilled worker’s understanding defines claim construction. There is no recognition now that the enablement requirement extends only to those embodiments of a claim that the art-skilled worker would think could be intended.

  99. rick – that is still incorrect. If X+Y+Z+b does not require undue experimentation to creat from X+Y+Z+a, then X+Y+Z+b is enabled and valid. Novelty of b is irrelevent. Something can be novel and developed without undue experimentation (very similar to how something can be novel and obvious).

  100. Muncie Gear Works, Inc. v. Outboard Marine & Mfg. Co., 315 U.S. 759, 62 S.Ct. 865, 86 L.Ed. 1171 (1942) is kind of the grandfather of these types of cases which relate to the issue of enablement, but cause a panic among practitioners. Muncie Gear led to the practice of “picture claiming” as suggested above, a dependent claim describing the preferred embodiment in great detail. Muncie Gear was responsible for the so-called doctrine of against “late claiming”, the idea that changing your claims during prosecution was not permissible. However the real question is one of fairness, in the sense of the disclosure to the public, in return for the exclusive grant. The classical example is that of disclosing a biplane, and amending your claims to cover a monoplane which seems fundamentally unfair versus enforcing biplane claims against a triplane which does seem fair even though a triplane might be as innovative as a monoplane. The difference is a triplane builds on a biplane and so includes the enabled invention, whereas a monoplane is really something completely different and does not include the enabled invention.

  101. “this is not a dig at Lourie – but he does tend to have some of the more broadly-worded and potentially confusing decisions”

    Why this forgiving tone?

    Lourie is not a Congressman or even a District Court judge. We are talking about a Federal Circuit judge – which as a practical matter – has the last word on patent law jurisprudence. The CAFC’s words are scripture – at least for the time being.

    There are a million of patents and billions of dollars at stake. Badly-worded and confusing decisions can simply not pass.

  102. anon – wrong analogy.
    If you invent “Y”, then only “Y” is after-arising technology – not “X+Y”.

    The correct analogy would be as follows:

    I describe my invention as X+Y+Z+a [“a” is only a screw used in fastening the invented device].

    Thereafter, you invent X+Y+Z+b [“b” being a different type of fastener, e.g. a novel glue].

    I then patent claims for only X+Y+Z (I intnetionally omit “a”, in order to cover after-arising technology such a “b”. According to the CAFC, the claims are invalid, because a claim to X+Y+Z covers non-enabled technology at the time of the invention such as X+Y+Z+b.

    The irony is – that if I would have claimed X+Y+Z+a, then your device would have infringed under the “doctrine of equitvalents”. Doesn’t that tell us that the CAFC’s “enablement” standard is wrong?

  103. ““after arising” technology is – by definition – non-enabled by the specification”

    Simply not true. You invent X today and get a patent with a claim on X. Tomorrow, I invent X+Y, making X+Y after arising technology. X+Y does not require undue experimentation to create from X, which I got from your spec. Thus X+Y is after-arising and enabled. QED

    Maybe you’re thinking written description instead of enablement.

  104. Courts and the Office have never held that the a patent is limited ONLY to practiced embodiments. If this were the case, work-arounds would be trivial and the value of a patent would be extrmely low. Somewhere there is a line as to what is enabled, but there is certainly no limitation to ONLY what is practiced or shown. Expert testimony may be required to answer this in each case, but I think it must be addresed on a case by case basis as each patent and each technology area differ.

  105. To the extent, the inventor had stated that pressure jackets are essential to the invention, then fine – it would be a classical case of written description requirement. [albeit – not enablement. Can you name a single case in which “essential” was used in an enablement analysis? If indeed the CAFC “confused” WDR with enablement – as one poster suggested – well that by itself is enough reason for outrage.]

    However, in this case the invention “per se” is directed entirely to the injector. The pressure jacket is nothing more but an external component to the invention. You either use the pressure jacket or use some other mechanism (expensive and impractical as it may be). What difference does it make to the “actual” invention?

    Moreover, the inventor never described pressure jackets as being essential to the invention. All he said is that other mechanisms are impractical – i.e. the pressure jacket is the “preferred mode” – the inventor simply exercised his duty under the “best mode requirement”?

    This CAFC holding can only be read in “one” way: The CAFC made-up a new law that every embodiment covered by the claim needs to be enabled by the specification. Such holding has no grounding in statute, policy or equity. [Indeed, as noted above, the CAFC should take instruction from the “doctrine of equivalents” which applies to “after-arising” technology, despite the fact that “after arising” technology is – by definition – non-enabled by the specification.]

    ENOUGH CONFUSION! We want CLARITY!

  106. “a claim is invalid if it includes the bad, or omits the essential.”

    LRtDbSOHoF, if the case were limited to this rule, I think we’re fine. But I think the case is much broader, by its own words:

    “We have previously construed the claims of the front-loading patents such that they are not limited to an injector with a pressure jacket, and therefore the full scope of the claimed inventions includes injectors with and without a pressure jacket. That full scope must be enabled…”

    Thus your claims are going to fail if they omit anything required to enable the “full scope” of the claims, dependent only on what the court determines is the “full scope” and regardless of how “essential” or “bad” you’ve called things in your spec.

    As pointed out above, courts don’t construe claims in order to preserve their validity. If experimentation and development subsequently adds entirely new types of invention to that covered by the construed, full scope of your original claim, then your full scope isn’t enabled. According to Lourie – your whole claim is now invalid!

    I hope that the court isn’t really saying this, and that this decision is as limited as you say, but the language is sweeping. (this is not a dig at Lourie – but he does tend to have some of the more broadly-worded and potentially confusing decisions)

  107. “If the specification is enabling for the equivalent as of the priority date, then infringement can only be literal.”

    For the love of gorb, what is Mooney talking about. She is up to her old tricks again.

  108. This is no wholesale rewite of the law. It’s just an ordinary enablement case, based on statements in the specification. Here’s the key paragraph at pages 12-13:

    In fact, the specification teaches away from such an invention. In the “Background of the Invention,” the specification describes general injectors and explains that during the injection phase, a plunger is driven forward and pressure develops in the syringe, ranging from 25 psi to over 1000 psi. Without a pressure jacket, syringes that are able to withstand such high pressures are “expensive and therefore impractical where the syringes are to be disposable. Accordingly, many such injectors . . . have been provided with pressure jackets fixed to the injector units and into which the syringes are inserted.” ’669 patent, col.1 ll.23-31. The specification thus teaches away from a disposable syringe without a pressure jacket by stating that such syringes are “impractical.” As we have held previously, where the specification teaches against a purported aspect of an invention, such a teaching “is itself evidence that at least a significant amount of experimentation would have been necessary to practice the claimed invention.” AK Steel, 344 F.3d at 1244.

    The law has long been clear that you can present claims to part of an invention, omitting language that used to be in the claim. Carl Zeiss Stiftung v. Renishaw PLC, 945 F.2d 1173, 1180-81, 20 USPQ2d 1094, 1100 (Fed. Cir. 1991); Lampi Corp v. American Power Products Inc, 228 F.3d 1365, 1378, 56 USPQ2d 1445 (Fed. Cir. 2000). Leibel-Flarsheim does nothing to change this.

    However, it has also long been clear that if the specification makes an affirmative statement about the scope of enablement, for example to say that certain embodiments are bad, or that a given element is “essential,” then a claim is invalid if it includes the bad, or omits the essential. In re Curtis, 354 F.3d 1347, 1353-54, 69 USPQ2d 1274, 1279 (Fed. Cir. 2004); Gentry Gallery Inc. v. The Berkline Corp., 134 F.3d 1473, 1476-80, 45 USPQ2d 1498, 1501-03 (Fed. Cir. 1998).

    Leibel-Flarshiem fits comfortably in this line of cases.

    It’s simply another example of the advice I’ve been giving my colleges for years: in the specification, all embodiments are created equal. Nothing is good, nothing is bad. Everything “may be,” and stands on equal footing with everything else.

  109. I don’t know why everyone is getting so enraged by this Fed. Cir. decision.

    This is simply a case where the Fed. Cir. panel confused the concept of “enablement” for the concept of “written description”.

    “Enablement” is about what the inventor empowers others to do.

    “Written description” is about what the inventor himself was in appreciative possession of.

    Sometimes you have an inventor who is in appreciative possession of less than what his disclosure empowers others to do.

  110. The novelty of the invention has only to do with the design of the “syringe” and has nothing to do with the “pressure jacket”. Medrad copied the novel syringe design. Why should they be allowed to be free-riding?

    Here is an analogy:

    Suppose someone invents a novel “optical disk reader”. He invests millions of dollars in bringing the device to market. However, his specification only describes and enables the invention as being powered by conventional power supplies. Along comes a competitor; copies the entire novel system; but replaces the power supply component with some newly invented power supply system. Should this competitor receive a free-ride? Is there no way the inventor can patent his device to cover the novel system without regard as to how it is powered? With which party does the equity square?

    At least from a statutory standpoint, there is nothing in the statute that requires a specification to enable every embodiment covered by the claim.

    This is just some made-up CAFC law, which is entirely unjustified from both a statutory and equity standpoint.

  111. Len — I think that claim would fall regardless of who it was being enforced against. Which is why you would have a narrower, fully enabled claim as backup. That claim would cover wheels, but not an anti-gravity car and so would be enforceable against the wheel embodiment, but not against a hovercraft. Now, if you got greedy and tried to enforce it against hovercraft, a situation analagous to this case, you would most likely lose.

  112. ” By your logic, my smooth-driving car claim is perfectly valid so long as I assert it against cars with wheels, but the minute I assert it against a hovercraft — POOF! my patent rights are gone, and I can’t assert against anyone. That just isn’t right.”

    As a test of the “logic” of claim construction it might not be satisfying but as a practical matter I don’t find the results discomforting. There is a good reason that patentees can NOT take a court’s “finding” that their claims are enabled and valid and proceed to beat every possible infringer over the head with the patent without any fear that the patent will get tanked in a different venue when it is asserted against a different product (or even the same product made by a different manufacturer).

    If I had a patent with broad claims and I was reading the Leibel case I would not be inclined to ask a court to construe my claims so broadly UNLESS I ABSOLUTELY HAD TO. If Leibel had intended to have their claims construed more narrowly, they would have had a good chance of doing so, I think. An accused infringer in that case would probably have a hard time getting the court to construe the claims more broadly.

  113. Malcolm — I agree, but you didn’t address the main point, which is, why should the VALIDITY of a claim depend on who you enforce it against. By your logic, my smooth-driving car claim is perfectly valid so long as I assert it against cars with wheels, but the minute I assert it against a hovercraft — POOF! my patent rights are gone, and I can’t assert against anyone. That just isn’t right.

    I would have preferred a middle ground: You can’t enforce your patent against a particular person where that person’s product or method, although literally within the scope of the claim, is not enabled by your disclosure. In this case you would still be free to assert your claims against those who’s products/methods are infringed and enabled.

  114. “Does that mean any preamble that recites an automobile must include wheels in the body of the claim?”

    No. (by the way, hovercrafts are old in the art)

    But be careful how broadly you demand that your claims be construed.

    Let’s say you have a claim to a “smooth driving automobile” that you filed two years ago and that issued today. Let’s say the “smooth driving” derives from really great shock absorbers. Your claims don’t recite wheels however. Nowhere in the application do you teach how to make and use an anti-gravity car — in fact you point out that such a car would be desirable but is too advanced to manufacture at present — but it so happens that your broadest claim literally covers the wheel-less anti-gravity car which floats off the assembly line in 2013.

    You think that if you assert that your broad LITERALLY covers anti-gravity cars that you aren’t stepping in a Section 112-shaped hole? Guess again.

    As Dennis wrote, “most patent claims are written to literally cover embodiments that are not fully enabled.” This is true. And a significant portion of those claims literally cover embodiments that are in the prior art, but for one reason or another (e.g., sand-shifting positions taken by the applicant during prosecution), the claims were allowed over that art. When you push too hard on those claims by sueing infringers whose products lie on the frontiers of claim validity — whether enablement or novelty/obviousness — you will get burned more often than when you take the simple two-point layup. That’s what the CAFC meant when it said to beware of what you ask for.

  115. I think it would take undue experimentation to build an automobile without wheels. Does that mean any preamble that recites an automobile must include wheels in the body of the claim?

  116. “Actually, yes, i own a lot of old patents that were the first in their field. the device i invented was unknown at the time so my patents claim little more than just the device and are thus pretty broad.”

    Really? Show me one.

    “my patents will be invalidated because they don’t teach how to make the new devices.”

    Good — that’ll help to keep the prices of the new devices down. Your patents probably also teach that the new fangled allegedly infringing devices which incorporate your invention would be expensive and impractical to develop, just like the patent teaches in this case. It would be really silly to try to go after the infringers with your absurdly broad and invalid claims under these circumstances.

  117. “But suppose you had the exact same fact scenario except that Liebel didn’t sue Medrad, but sued another competitor, say Competitor X, for exactly copying the jacketed system Liebel described in their patent. Suppose Competitor X had asserted the exact same arguments about invalidity that Medrad did only this time they said…”

    The hypo is messed up because Liebel would not have broadened their claims to go after Competitor X like they did in the real world case. Liebel would have kept at least *some* dependent claims reciting a jacketed syringe holder and the issue of enablement of the broader claims would likely be moot for appeal purposes. The CAFC would sleep like babies.

  118. Gideon,

    Agreed, you did hit it the nail on the head.

    As I read the case, it seemed to me that the court was reacting primarily to the fact that Liebel was trying to cover an invention they hadn’t made and couldn’t make. So in this particular case, perhaps justice was done.

    But suppose you had the exact same fact scenario except that Liebel didn’t sue Medrad, but sued another competitor, say Competitor X, for exactly copying the jacketed system Liebel described in their patent. Suppose Competitor X had asserted the exact same arguments about invalidity that Medrad did only this time they said…

    “Yes we exactly copied the plaintiff’s disclosed invention, but their patent claims are invalid because in the meantime someone else invented an improved version of their claimed invention that they hadn’t thought of.”

    Would the CAFC still feel that justice is served by invalidating the claims? If instead they wanted to hold that the claims were valid, what cases would they cite?

  119. Actually, yes, i own a lot of old patents that were the first in their field. the device i invented was unknown at the time so my patents claim little more than just the device and are thus pretty broad.

    Since my patent has issued, several other types of the device have been developed using methods I was unaware of 16 years ago. these new types of the device still infringe my claims (they are all called the same thing still, using my original name or the device), but my patents will be invalidated because they don’t teach how to make the new devices.

  120. “herwise ralley’s first post and Gideon are accurate forecasters of the horrors to follow.”

    Wow, you must own a lot of patents with broad claims to be so a-scared!

    “My hope and belief is that the rule in case will be limited only to cases where the applicant has broadened claims originally directed to a sole embodiment.”

    No, that surely isn’t the rule of the case.

  121. My hope and belief is that the rule in case will be limited only to cases where the applicant has broadened claims originally directed to a sole embodiment.

    Otherwise ralley’s first post and Gideon are accurate forecasters of the horrors to follow.

  122. Gideon, fantastic comment ! Hit it on the nail.

    There’s an uptrend in WDR and enablement opinions, as we are seeing patentees being more careful with their claim drafting, in light of cases such as Phillips.

    So now patents are being whacked from a different angle.

    It’s about time the issues go cert.

  123. Enablement, like several other aspects of Patent Law, is a mess.

    As a first matter, chew on this:

    Any claim using the “comprising” language is NOT enabled accross the full scope of the claims.

    If you don’t see that, then go read Landis.

    Consequently, if enablement requires enablement accross the full scope of the claims, then every “comprising” claim that has ever issued is invalid.

    So, like other enablement decisions, this one is retarded. It seems to mix PHE and enablement.

    How about the embodiment where the “jacket” is 2 Angstroms thick? Whoop? Not enabled. How about the embodiment that has Argon as the main component of the jacket? Whoop, not enabled.

    Enablement and written description – both big messes.

  124. “Again, the critical fact here is that the patentee went after an accused infringer whose particular device, while literally infringing, was NOT enabled by the specification.”

    Are you perhaps suggesting that the issue before the court was infringement? If yes, wrong.

    The issue is that of validity. The accused infringers device is of non-issue here.

    The court simply held that because the claim covered “both” enabled and nonenabled embodiments, the claim must be invlaid.

    and so I repeat what I have said before “…the CAFC is wrong when it says that the specification must enable every embodiment covered by the claim.”

  125. Mr. Mooney:

    The “hypothetical claim” test is intructive about what lies at the heart of the DOE, i.e. an implied broadening of the claim scope.

    You ask:
    “Where does the CAFC say that?”

    For your convenience, here are some quotes from the Liebel-Flarsheim opinion:

    “…That full scope must be enabled, and the district court was correct that it was not enabled.”

    “…as part of the quid pro quo of the patent bargain, the applicant’s specification must enable one of ordinary skill in the art to practice the full scope of the claimed invention.”

    “…There must be “reasonable enablement of the scope of the range” which, in this case, includes both injector systems with and without a pressure jacket.”

  126. “There were no jacketless disposable syringes at the time of filing.”

    According to the Court, not true. The specifiation of the patent describes jacketless syringes capable of withstanding high pressure as “expensive” and “impractical.”

    The patentee’s competitors were able to overcome those issues through research and experimentation.

  127. “Similarly, in this case, the asserted claims read on, and the full scope of the claimed invention includes, an injector system with and without a pressure jacket. There must be “reasonable enablement of the scope of the range” which, in this case, includes both injector systems with and without a pressure jacket. Id.”

    Wow. This quote from the Fed. Cir. calls for a replaying of the Time-Warp Dance song out of the Rocky Horror Picture Show. Since when does enablement get measured at a time after issuance of the patent rather than from the time of filing?

    There were no jacketless disposable syringes at the time of filing. Thus the ordinary artisan could not read the claims as referring to a jacketless syringe.

    Let’s do the time warp dance.

  128. “It also seems to be a rule encouraging patentees to claim only their example embodiments. This too seems like a radical change in patent laws.”

    By “it” I assume you mean the Liebel-Flarsheim holding and not your proposed solution. If this case seems “radical” to you, I suggest you read the case again with close attention to the facts relating to the differences between a needle-holder with a pressure jacket and one without. In the future, you will find litigants successfully distinguishing themselves from this case by reference to those facts.

  129. “No, it seems like a radical change to the patent laws.”

    It also seems to be a rule encouraging patentees to claim only their example embodiments. This too seems like a radical change in patent laws.

  130. “it is for this reason that I believe that the CAFC is wrong when it says that the specification must enable every embodiment covered by the claim.”

    Where does the CAFC say that? In fact, the CAFC has long held the opposite: inoperable embodiments reading on the claim do NOT mean that the claim is not enabled.

    Again, the critical fact here is that the patentee went after an accused infringer whose particular device, while literally infringing, was NOT enabled by the specification.

    Note that any discussion about infringement under the DOE ends right there. The claim is invalid. That’s it. So I guess one answer to the mysterious “question” posed upthread is that this claim will reduce findings of infringement under the DOE to the extent it leads to the invalidation of more claims.

  131. ralley

    “I merely suggest an additional defense to literal infringers – that if the claims at issue are not enabled for my accused infringing device, I am not liable.”

    Yes, you are not liable because the claims are INVALID.

    “Thus no finding of infringement, and no throwing out the entire claim either, because the claim does have some valid scope. Doesn’t this seem reasonable and low burden?”

    No, it seems like a radical change to the patent laws.

    If your claims are so broad that they cover an infringing device but they are not enabled for that breadth, they are invalid. This is old. This is wise. This is how greedy people waving their overbroad patents at everybody get their comeuppance. It’s the threat of having one’s claims invalidated in court, in part, that encourages patentees to accept small payments from dubious infringers instead of taking them to court.

  132. “The “hypothetical claim” test is as follows:
    If by hypothetically drafting the claim to include the equivalent, the claim would as a result have been inavlid, then DOE cannot be applied.”

    Rick, WILSON’s test is concerned with prior art, not enablement.

  133. “If by hypothetically drafting the claim to include the equivalent, the claim would as a result have been inavlid, then DOE cannot be applied.”

    “DOE applies to non-enabling equivalents – therefore, “literaly” claims can also cover non-enabled equivalents.”

    listen to yourself man. “DOE cannot be applied” if claims not enabled and “DOE applies” if claims not enabled.

  134. Mooney and Rick,

    To get back to the root of this wild tangent, Rick asked how this ruling would affect DOE. DOE isn’t addressed in this case so the precedential answer is “not at all.” Our discussion is nothing but description of how this approach to enablement might affect DOE if Rick’s enablement requirement for equivalent infringment is implemented, which it is not. (and thus not really all that relevant to the case at hand).

    My suggestion was that DOE *shouldn’t* be substantially affected if equivalents had to be enabled to infringe under DOE (per Rick’s original hypo), since after-arising technology can be created without undue experimentation. Specifically, the Wands factors do not overlap with the substantial effects or vitiation rules of the DOE. So Mooney, you’re basically arguing that Rick’s hypo is inapt for a different reason.

    Now Mr. Mooney – you had a good comment regarding my original idea on this case about narrowing the claims to their enabled scope. I don’t propose a second Markman tier to construe the claims as enabled. I merely suggest an additional defense to literal infringers – that if the claims at issue are not enabled for my accused infringing device, I am not liable. Thus no finding of infringement, and no throwing out the entire claim either, because the claim does have some valid scope. Doesn’t this seem reasonable and low burden?

  135. Mr. Mooney:

    I will also direct to Wilson Sporting Goods v. David Geoffrey and Assoicates (904 F.2d 677), an elaborative opinion on the DOE written by Fed. Cir. Judge Rich.

    Judge Rich developed the “hypothetical claim” test to determine whether an equivalent is allowed by the claim.

    The “hypothetical claim” test is as follows:
    If by hypothetically drafting the claim to include the equivalent, the claim would as a result have been inavlid, then DOE cannot be applied.

    Hence, my argument:
    DOE applies to non-enabling equivalents – therefore, “literaly” claims can also cover non-enabled equivalents.

  136. Mr. Mooney:

    I will also direct to Wilson Sporting Goods v. David Geoffrey and Assoicates (904 F.2d 677), an elaborative opinion on the DOE written by Fed. Cir. Judge Rich.

    Judge Rich developed the “hypothetical claim” test to determine whether an equivalent is allowed by the claim.

    The “hypothetical claim” test is as follows:
    If by hypothetically drafting the claim to include the equivalent, the claim would as a result have been inavlid, then DOE cannot be applied.

    Hence, my argument:
    DOE applies to non-enabling equivalents – therefore, “literaly” claims can also cover non-enabled equivalents.

  137. Thanks Mr. Mooney:

    That’s my precisely my point.

    The DOE is nothing more, but an implied construction of claims. Indeed, many courts have explained the DOE as being similar to implied clauses in contracts. In other words, the patentee, gives notice to the public that he is claiming X..Y..Z.. “and its equivalents”.

    [sample quote: “The doctrine of equivalents allows the patentee to claim those insubstantial alterations
    that were not captured in drafting the original patent claim but which could be created through trivial changes. (Supreme Court, Festo)”]

    Hence, one cannot attempt to achieve through the DOE, i.e. cover emobdiments, that would have been precluded under literal claim scope for invalidity reasons.

    I agree with you that equivalents need not be enabled. But it is for this reason that I believe that the CAFC is wrong when it says that the specification must enable every embodiment covered by the claim. As noted, such holding is in pure contravention to the DOE.

  138. “I think most later-created “equivalents” will be derived without undue experimentation …”

    The term “undue experimentation” is a non-sequitur in this context so it’s impossible to know what you are thinking or why.

    That said, Rick is right that the DOE was intended to capture later-developed technologies without any consideration for HOW those technologies were developed. The origin of the equivalent is not relevant, except to the extent its manufacture and use in the invention was foreseeable … in which case the DOE is precluded.

  139. Ralley:

    I should rephrase that: Having considered your ideas, I beleive they are not normative. They are not consonant with the expansive case law on the DOE.

  140. “In any event, my questions were unanswered. Later-developed technology is by definition non-enabled. How then, can we incorporate non-enabling embodiments with the claim scope via the DOE?”

    I gave you the answer: enablement is not a requirement for infringement of the DOE; indeed, enablement of the equivalent is, for practical purposes, fatal to the successful application of the DOE. Again, if you are aware of a situation where a specification has enabled the equivalent at issue but the application of the DOE is NOT precluded, I’d like to hear the facts of that situation.

    Also, maybe you can explain what you mean when you use the term “how” in your question.

    My understanding of “how” is that, presuming that the DOE is not precluded by one of the Festo considerations, a jury looks at the facts and finds that the equivalent performs substantially the same function in substantially the same way to achieve substantially the same result. That is “how.”

  141. Ralley:

    Having considered the normative value of your ideas, I nonetheless conclude, that given the enormous amount of discussion and debate – at many levels – regarding the DOE, the fact that no court has ever required later-developed equivalents to be developed “only” with undue experimentation, proves that your idea is untrue.

  142. Mr. Mooney:

    The “forseeability rule” is a very narrow rule and it is only applied in cases of “simple structure” or when the language of the patentee implies that the equivalent is clearly foreseeable.

    quote:
    “The claim at issue defines a relatively simple structural device. A skilled patent drafter would foresee the limiting potential of the “over said slot” limitation.” Sage Products, Inc. v. Devon Industries, Inc., 126 F.3d 1420, 1425, 44 U.S.P.Q.2d 1103, 1107 (Fed. Cir. 1997)

    In any event, my questions were unanswered. Later-developed technology is by definition non-enabled. How then, can we incorporate non-enabling embodiments with the claim scope via the DOE?

    Is the DOE so powerful that it can enlarge the scope of the claim in a way that would have been illegal under a literal claim scope?

  143. Rick,

    The “I think” phrase should have been enough to disavow any court endorsement of the following sentences. ;)

    Rather, consider the normative value of my ideas, which I believe are consonant with Professor Rader’s statement. Simply because a technology is after-arising does not mean that it required undue experimentation to develop. Thus, many after-arising technologies can be enabled by the prior patent and infringe that patent under DOE if not disclosed in it.

  144. tiredofMooney wrote

    “hat’s not this case. Here the spec clearly enabled the claim scope of jacketted devices.”

    What’s your point? It’s the jacketless embodiment that was not enabled. They sued an infringer with a jacket-less needle holder and asked that their claims be construed broadly to encompass a jacket-less needle-holder, in spite of the fact that they had not taught one of skill how to make and use a jacket-less needle-holder without undue experimentation.

  145. Ralley wrote:
    “I think most later-created “equivalents” will be derived without undue experimentation, and thus infringe under DOE. The scope of later-arising inventions that will infringe under DOE extends exactly to that which can be developed without undue experimentation.”

    Wow! that’s a huge statement!

    “Most” later-created equivalents will be developed without undue experimentation? uh?

    DOE only extends to later developed equivalents that are developed without undue-experimentation?

    Any case law to support that?

    But here’s a quote from a renowned CAFC judge: “a primary justification for the doctrine of equivalents is to accommodate after arising technologies” (Festo 234 F.3d 558, 619, Rader, J. concurring-in-part and dissenting-in-part)

  146. “However, beyond the “dedication rule” or the “forseeability rule”, there’s no per se rule that “enabling equivalent []as of the priority date [] can only be literal”.”

    Huh? Let’s go back to what I wrote: “If the specification is enabling for the equivalent as of the priority date, then infringement can only be literal.”

    Can you give me an example where a specification is enabling for equivalent X (i.e., X could have been expressly recited in a valid claim as of the priority date) but infringement under the doctrine of equivalents is NOT precluded?

    I predict you can not because if the equivalent is enabled, then it’s dedicated or forseeable. How could it be otherwise?

  147. “”The scope of later-arising inventions that will infringe under DOE extends exactly to that which can be developed without undue experimentation.”

    Is there a post-Festo DOE case which states this rule?”

    No. This is just my observation as to how an enablement rule for later-developed equivalents would not often interfere with a DOE infringment.

  148. “there is no clear indication from the specification or prosecution history that the claims should be construed otherwise.”

    That’s not this case. Here the spec clearly enabled the claim scope of jacketted devices.

  149. “The scope of later-arising inventions that will infringe under DOE extends exactly to that which can be developed without undue experimentation.”

    Is there a post-Festo DOE case which states this rule?

  150. Malcom Mooney wrote:
    “If the specification is enabling for the equivalent as of the priority date, then infringement can only be literal.”

    Sorry, but the above assertion is plainly incorrect. No basis whatsoever in Fed. Cir. case law.

    The Fed. Cir. did create the “dedication rule”. Subject matter disclosed, but not claimed, cannot be incorportaed via the DOE (see. e.g. Maxwell v. J. Baker 86 F.3d 1098 ; ).
    The “dedication rule” was also extended in Sage to the “forseeability rule”.

    However, beyond the “dedication rule” or the “forseeability rule”, there’s no per se rule that “enabling equivalent []as of the priority date [] can only be literal”.

  151. “How does ruling effect the doctrine of equivalents? The DOE was clearly meant to include “later developed equivalents”. But how can a patent specification enables embodiment that include “later developed equivalents”? Are not later developed equivalents – by definition – non-enabled?”

    Remember a showing of non-enablement requires a showing of “undue experimentation.” I think most later-created “equivalents” will be derived without undue experimentation, and thus infringe under DOE. The scope of later-arising inventions that will infringe under DOE extends exactly to that which can be developed without undue experimentation.

  152. “Actually, if you took my suggestion of limiting the claim to only what is enabled,”

    The facts in the case at issue and in my hypo are that the patentee is asking the court to construe the claims broadly and the court is obliging the patentee because there is no clear indication from the specification or prosecution history that the claims should be construed otherwise.

    You seem to want to be wanting to abuse the oft-abused doctrine of “construing claims to preserve their validity”. That doctrine, you’ll recall, has very limited use in the post-Phillips (and even pre-Phillips) universe. Courts are certainly not required to do a pre-Markman enablement analysis, ESPECIALLY not where the patentee has asked that the claims be construed to cover everything except the kitchen sink.

  153. “How does ruling effect the doctrine of equivalents? The DOE was clearly meant to include “later developed equivalents”. But how can a patent specification enables embodiment that include “later developed equivalents”? Are not later developed equivalents – by definition – non-enabled?”

    If the specification is enabling for the equivalent as of the priority date, then infringement can only be literal. If the spec is enabling but the claims don’t cover the equivalent, that is the applicant’s mistake and one that should not be remedied by begging a jury for “justice.”

  154. “the competitor’s formulation surely literally infringes the claim”

    Actually, if you took my suggestion of limiting the claim to only what is enabled, the patent would be valid only for concentrations of U & V that are in the spec. So actually probably no infringement (and no total invalidity either).

    And if the trace amounts are in the spec, then yeah, you deserve to infringe because you’re copying something I invented and disclosed that works. (although if you have an improvement with those additional compouds, I’ll probably license from you).

  155. This is indeed increasingly becoming “The New Law of Enablement”. Another recent case, in which the court applied similar rationale, is Brainlab v. Medtronic 06-1289 (Fed. Cir. construed claim narrowly, because broader interpretation would overreach into non-enabling embodiments.)

    Precedent case law in this regard is quite scarce. Some prior cases having passing statements that “the specification must enable the full scope of the invention”. However, these cases cannot be taken literally. After all, it is widely accepted that only a single embodiment is required for showing enablement.

    How does ruling effect the doctrine of equivalents? The DOE was clearly meant to include “later developed equivalents”. But how can a patent specification enables embodiment that include “later developed equivalents”? Are not later developed equivalents – by definition – non-enabled?

  156. “n my opinion, the court should simply limit the claims to the enabled portion, not invalidate the entire claim.”

    For the love of gorb, no! The patentee is entitled to ask for a big bite of the apple but no way should she get a refund if she happens to swallow a worm.

    The CAFC got it right: the patentee here got greedy and asserted its broad claims of dubious validity against an infringer whose embodiment of the composition recited in the claims was simply not within the grasp of the patentee as of the patent’s priority date.

    As I’ve stated in these comments before, this situation crops up in the context of biotech formulation claims which recites a composition comprising chemicals U and V (with no practical limitations as to concentration) to achieve a (typically) vaguely defined property A (e.g., “antimicrobial” or “heat stable”). In some cases, the “support” for the claims is two or three example formulations.

    Now let’s say a competitor comes along with a formulation with V, W, Y, Z, and *trace amounts* of U, which has property A (but is even better at A than the patentee’s formulation). The patentee sues the competitor and says that it’s claims — which recite no concentrations — include compositions comprising U and V in trace amounts.

    If that construction is accepted, the competitor’s formulation surely literally infringes the claim but, **unless the specification expressly teaches a solution with trace amounts of U**, how can a claim of such breadth possibly be found enabled??? The answer is that it should never be found enabled and the correct approach is the approach the CAFC used here, which is doubly applicable in the “unpredictable” art of biochemistry.

  157. Anyone care to comment on how this decision is likely to now cause huge problems for both broadening reissues and continuations with broader claims?

  158. This is bothersome. If the claims recited a “jacket-free” apparatus, then, yes, easy 112-1 rejection, because the entire claim scope (jacket-free apparatuses) is not enabled by the spec. But here the claims do not recite “jacket-free” and thus are enabled for a portion of their scope (the jacketted apparatuses).

    Thus court says, if disclosed embodiments enable only a portion of the claim scope, the entire claim is invalid, at least when you’ve broadened their scope during prosecution to read beyond disclosed embodiments when before they did not. Thus if you claim an engine that requires gasoline and amend to claim just an engine, prepare to be invalidated if your spec discloses only engines with gasoline.

    In my opinion, the court should simply limit the claims to the enabled portion, not invalidate the entire claim. I think this is in line with 112-1, as “the invention” simply becomes whatever is enabled by the spec. The court does as much when it reads limitations from the spec into the claims because “that’s how a phosita would understand the claims,” i.e., in light of the spec. (I suspect the prosecution history made them dislike the enabled portion here.)

    So I guess the lesson here is to include a dependent claim reciting every aspect of disclosed embodiments. Or ensure that your independent claim recites every potentially necessary feature of the invention.

Comments are closed.