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."

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

296 thoughts on “The New Law of Enablement

  1. Dear Dennis,

    Could you please meta-tag this post with “enablement” so that it will come up with the other recent decisions … ?

    Thank you so much for what you’re doing with this blog.

  2. “At least now I know I am dealing with someone who has never practiced patent law.”

    Grow up, Lionel. Your ad hominem garbage is tiresome and (more importantly) not clever.

    Returning for a moment to your ridiculous claim that the calender is not an important tool for determining the validity of a patent claim, can I ask a simple question: are you high? God, I hope so.

  3. Malcolm wrote – “Yo, Peanut, did you ever hear of this thing called “a calender”? It is an important tool when evaluating the validity of patent claims. Look it up. I’m not kidding.”

    Yo, Malcolm, actually, it’s not. Look it up. At least now I know I am dealing with someone who has never practiced patent law.

  4. Zeke: “the jacket was essential. It may not have been a part of the invention, but it was essential to the device claimed.”

    Peanut Gallery: “Not so. The defendents made the claimed device without the jacket.”

    Yo, Peanut, did you ever hear of this thing called “a calender”? It is an important tool when evaluating the validity of patent claims. Look it up. I’m not kidding.

  5. Zeke: “the jacket was essential. It may not have been a part of the invention, but it was essential to the device claimed.”

    Not so. The defendents made the claimed device without the jacket. Therefore, even if the inventors thought a jacket was essential at the time of filing, it turns out that it was not essential to the device claimed.

  6. Zeke: “For example, if you want to claim a car, you can’t leave the wheels out of the claim, even if the wheels are unrelated to your invention of, say, a GPS system. Leaving the wheels out is a clear cut enablement problem.”

    That can’t be true. If that were the case, the claim would be invalid even if it had the “jacket” limitation… there are a lot of other things needed to create an entire “syringe” than simply the claimed elements and a pressure jacket.

    Using your analogy, if you wanted to claim the combination of a car with a GPS system, you would have to include the wheels, steering wheel, seats, drive train, engine, windshield, brakes, gas tank, lugnuts …. all in the claim.

    In the sofware arts, we wouldn’t be able to claim a computer with a processor and memory containing instructions for doing X. We would have to recite a hard drive, a bus, I/O cards, a display…

  7. Lionel:

    “Removing unnecessary limitations from a claim generally expands the scope of a claim.”

    The passage I cited clearly shows that the jacket was essential. It may not have been a part of the invention, but it was essential to the device claimed.

    For example, if you want to claim a car, you can’t leave the wheels out of the claim, even if the wheels are unrelated to your invention of, say, a GPS system. Leaving the wheels out is a clear cut enablement problem. If you want to protect your GPS system in any vehicle produced in the next 20 years including flying cars and fancy nuclear powered cars yet to be invented, by all means, you certainly can. All you have to do is write a claim directed to the GPS system, not the entire car. If you then sit down to write this claim but can’t figure out how to put your GPS system into a car that doesn’t have wheels, then the wheels are essential, no?

  8. “the presence or absence of a jacket had nothing to do with the invention and the passage you cite does not in any way refute that argument.”

    Actually, the passage blows your strange contentions out of the water. Have you called Liebel to discuss your theories with them? They may need your expertise for their cert petition.

    “Removing unnecessary limitations from a claim generally expands the scope of a claim.”

    Nobody has argued otherwise. The limitations removed from the claims here certainly expanded the scope of the claims. Sadly for Liebel, they got too greedy and found themselves bitten in the hind quarters by their own specification.

    “It is irrelevant how much he disparaged jacketless injectors.”

    False. Pretty much everything an applicant says in the specification or prosecution history is relevant when analyzing claim validity. This case demonstrates that trivial point as well as any other.

  9. Zeke,

    An argument can be made that the plaintiff removed the limitation from his claims so that his claims would cover both jacketed and jacketless embodiments, because the presence or absence of a jacket had nothing to do with the invention and the passage you cite does not in any way refute that argument.

    Removing unnecessary limitations from a claim generally expands the scope of a claim. It is irrelevant how much he disparaged jacketless injectors. Jacketless systems were not an alternative to the plaintiff’s system obviously because the defendant’s syringe system apparently infringed but for the jacketless system they used. If the claim is to the syringe system , it covers other like syringe systems and it does not matter what other novel elements the defendant contributes.

  10. Again Malcolm, some basis for your opinion would be appreciated, but seeing as there is no case law (until this decision) that supports your view, I understand why you don’t.

  11. Lionel

    “If I claim ABCD, then I see realize that “You know what, D is not really part of my invention and I may be unnecessarily limiting myself even if I cannot currently see how my invention would work without D.” I will remove D as a limitation.”

    Go right ahead, Lionel. Go right ahead.

  12. ****Malcolm wrote “Liebel’s broad claims are enabled for the jacketless syringe embodiment expressly…”***

    Okay, not only has the thread jumped the shark, but it has now landed squarely in the chum barrel. I did post a comment which included the quoted words. Search the thread for the original quote and ask yourself if context matters.

  13. Lionel:

    “He intended it to cover jacketless embodiments, absolutely…”

    Haha. What?

    From the opinion:

    “The court further noted that the inventors themselves testified as to the importance of the pressure jacket around the syringe and that the experiments with and testing of jacketless systems were unsuccessful. The court also relied on testimony of Liebel’s engineers that a jacketless system was not a mere design option and that one skilled in the art would not know how to make a jacketless system. The court further found that no prototypes of a jacketless injector had been made or described at the time of filing, and that the state of the art was such that a jacketless system with a disposable syringe would have been a “true innovation.” ”

  14. Malcolm wrote, “No, I mean “expressly encompass”. I mean that is what the patentee wanted when it amended its claims to remove any reference to jackets from its claims. I mean that is the construction of the claim that the patentee asked for during litigation. I mean that is the only embodiment of the claim that mattered to the patentee.”

    He intended it to cover jacketless embodiments, absolutely, but he never limited the claim to jacketless embodiments. Again Malcolm, this has NEVER been held to be an enablement issue in the past. Please cite ONE nonchemical or nonbiotech case that supports your conclusion here.

  15. Malcolm wrote “Liebel’s broad claims are enabled for the jacketless syringe embodiment expressly…”

    Is this a typo? because if it had been enabled for this embodiment then the claims would be valid wouldn’t they? and this whole discussion would be moot.

    “and very much intentionally encompassed by those claims.”

    Absolutely untrue. Please point out some evidence from the patent or the case that in any way supports this assertion. The jacketless embodiment was brought into the scope of the claim by the removal of the limitation, but the whole point is that whether the syringe had a jacket or not was unimportant to the invention.

    If I claim ABCD, then I see realize that “You know what, D is not really part of my invention and I may be unnecessarily limiting myself even if I cannot currently see how my invention would work without D.” I will remvove D as a limitation. This has NEVER been an enablement issue in the past in the electrical and mechanical arts. It has solely been a prior art issue.

  16. I’m flailing Malcolm? Your opinion has no basis in the case law or the statutes, yet you continue to carry on despite the facts. Why don’t you attempt to refute my arguments instead of resorting to simple dismissiveness.

    Actually, the real problem is you have failed to make any sort of actual argument for your position.

    And for the last time, this is the CAFC, where they treat precedent as a mere suggestion to be taken lightly. The decision you get is almost invariably going to be based upon the panel you get. I will advise my clients the same way I always have as this case will likely be contradicted within the next year.

  17. “Your use of “expressly” is not accurate.”

    Yes it is. The patentee asserted that its claims read on a jacketless embodiment. It’s all there in black and white. There is no “implied” scope here. The defendant isn’t playing any tricks with words to invalidate this claim. The defendant is simply taking the patentee’s express statements at face value.

  18. “why do you feel that removal of the “jacket” limitation did not “plainly indicate” that they rescinded their previous remarks?”

    Remarks? I’m talking about the *specification*. Can you rescind your specification?

    Answer: no, not without changing your priority date.

  19. Malcolm:

    No, I mean “expressly encompass”. I mean that is what the patentee wanted when it amended its claims to remove any reference to jackets from its claims. I mean that is the construction of the claim that the patentee asked for during litigation. I mean that is the only embodiment of the claim that mattered to the patentee.

    Response:

    You mean “read on”. Your use of “expressly” is not accurate.

    Malcholm:

    They construed the claim very reasonably.

    Response:

    Agreed

    Malcolm:

    The scope of the claim included a needle-holder

    Response:

    Agreed

    Malcolm:

    that applicants’ had plainly indicated was not their invention.

    Response:

    Disagree, but even if it were as “plain” as you think it is, why do you feel that removal of the “jacket” limitation did not “plainly indicate” that they rescinded their previous remarks?

    Malcolm:

    Think about what you’re saying.

    Response:

    I think deeply about what I say. I think you should start thinking about what I say.

  20. One last try stated:

    2) I claim a food *comprising* peanut butter mixed with jelly. In my spec I disclose and enable the mixing of peanut butter with jelly – my example embodiment puts the mixture into a jar. Except this time, peanut butter and jelly do not mix when placed between bread,

    I respond:

    I am beginning to appreciate the subtle difference you make in your two scenarios. So far, it is the only explanation that comes close to making sense to me.

    If I understand it correctly, your rule would be: a claim to the combination ABC is invalid if the teachings of the specification do not enable ABC to be combined together in all embodiments that would be literally covered by the claim.

    That rule is certainly better than: a claim to the combination ABC is invalid if the teachings of the specification do not enable ABC to be used in combination with all possible combinations of all possible additional components.

    However, I still think that both rules are way too broad.

    For example, I disclose an embodiment where ABC are glued together. I claim ABC. If someone puts my claimed embodiment in water, my enabled embodiemnt of ABC falls apart. Therefore, I have not enabled a water-proof embodiment of ABC, but my claims would cover a water-proof embodiment of ABC. My claims are therefore not enabled?

    If the answer is “yes”, then what do I have to disclose for a claim to ABC to be enabled? Do I have to disclose how to make ABC work in water, in acid, in space, in oven temperatures, in sub-zero tempertures… etc.? Can anyone enable ABC in all contexts? If not, then a claim to ABC will always cover a non-enabled embodiment of ABC.

    If the answer is “no, enablement does not require enablement of ABC under all conditions”, then what additional facts does the non-enablement holding of Liebel hinge on?

    Does enablement hinge on whether a water-proof embodiment is possible?
    Does enablement hinge on whether a water-proof embodiment was actually developed by some third party (by welding ABC together in a non-obvious manner)?
    Does enablement hinge on whether my specification admitted that the glue used in my preferred embodiment would fall apart in water (“teaching away” from an embodiment literally covered by my claim)?
    Does enablement hinge on whether I am suing a defendant that has developed a water-proof embodiment of ABC?
    Does enablement hinge on whether the claims originally recited the glue, but then had the glue limitation removed during prosecution so that I could sue the maker of a welded, water-proof embodiment of ABC?

  21. “Another point to ponder… at least before this claim, “disclaimer” affected claim construction, not enablement.”

    I guarantee you that evidence of non-enablement was found in previous cases by looking, at least in part, at similar disparaging statements in an applicants specification or prosecution history.

  22. “The court reaches the enablement decision by treating a claim that “reads on” a non-enabled combination as if the claim “expressly recited” the non-enabled combination.”

    They construed the claim very reasonably. The scope of the claim included a needle-holder that applicants’ had plainly indicated was not their invention. The claim should never have issued.

    “Why wasn’t the removal of the “jacket” limitation an implicit rescision of the implicit disclaimer?”

    Think about what you’re saying.

  23. “By “expressly encompass” do you mean “expressly recites”?

    No, I mean “expressly encompass”. I mean that is what the patentee wanted when it amended its claims to remove any reference to jackets from its claims. I mean that is the construction of the claim that the patentee asked for during litigation. I mean that is the only embodiment of the claim that mattered to the patentee.

  24. Malcolm: “… the jacketless syringe embodiment expressly and very much intentionally encompassed by those claims.”

    By “expressly encompass” do you mean “expressly recites”? If so, you are wrong. Liebel’s claims do not expressly recite a jacketless syringe.

    If you mean “read on”, that is very different than “expressly encompass”. You are right that Liebel’s claims “read on” the jacketless syringe.

    The difference between “read on” and “expressly recite” is huge, particularly for enablement and written description. Both you and the CAFC seem to be getting the two confused.

    The court reaches the enablement decision by treating a claim that “reads on” a non-enabled combination as if the claim “expressly recited” the non-enabled combination.

  25. For those who think this case hinges on Liebel’s implicit “disclaimer”…

    Why wasn’t the removal of the “jacket” limitation an implicit rescision of the implicit disclaimer?

    The CAFC recently held that disclaimed scope can be recaptured during prosecution by rescinding previously disclaimed scope.

    Another point to ponder… at least before this claim, “disclaimer” affected claim construction, not enablement. The Liebel court held that the proper construction of Liebel’s claim did not require the jacket. Is that not a clear indication that the court considered the “disclaimer” to have been effectively rescinded by the intentional removal of the jacket limitation?

  26. “ONLY a statement or implication that the present invention is substantially incompatible (or incompatible enough that undue experimentation would be required to make them compatible) could reasonably be considered a disclaimer of scope.”

    You’re flailing, Lionel, and you are standing in knee-deep water. The implication you seek is plain as paint in the background section of the specification, but it has nothing to do with “disclaiming scope” and everything to do with the issue of whether Liebel’s broad claims are enabled for the jacketless syringe embodiment expressly and very much intentionally encompassed by those claims.

    By the way, have you called all your clients yet to warn them of the impending doom? Has Liebel petitioned for cert yet?

  27. Also, simply stating that jacketless injectors are expensive, unwieldy, or simply suck does not in any way disclaim them as a possibility. ONLY a statement or implication that the present invention is substantially incompatible (or incompatible enough that undue experimentation would be required to make them compatible) could reasonably be considered a disclaimer of scope.

  28. One Last Try wrote “I claim a food *comprising* peanut butter mixed with jelly. In my spec I disclose and enable the mixing of peanut butter with jelly – my example embodiment puts the mixture into a jar. Except this time, peanut butter and jelly do not mix when placed between bread, which I fail realize and disclaim from my claim. You, after much experimentation into a new mixing method, figure out how to mix peanut butter and jelly between bread, and you do so. You infringe my claim with your sandwich. My claim is *invalid* because it doesn’t enable what it claimed: the mixing of peanut butter and jelly. Your undue experimentation was directed toward something within my claim scope, and I needed to enable that scope to have a valid claim.”

    Did Liebel in his response to one or more office actions explicitly state that his invention would not work with jacketless injectors or did Liebel simply remove any references to jackets from the independent claims and state that jackets were not necessary?

    If it’s the former than I take back everything I have previously stated in this forum. If it’s the latter, than Lourie’s decision is as bad as I and others have been saying.

    Saying that an element is not a requirement of the claim is not the same as explicitly disclaiming scope. That was not how I read the decision, but I may have misread it.

  29. Malcolm wrote, “As I noted upthread, the specification does much more than simply make an offhand statement about the high cost of jacketless syringes. Rather, applicants’ invention is FRAMED as a solution, at least in part, to the problems (‘expensive’ ‘impractical’) presented by jacketless syringes. This is not a trivial distinction.”

    Good point. Disparagement of a prior art feature *plus* silence of the use of that feature in the invention *plus* setting up your invention as a solution and/or alternative to the prior art feature will almost assuredly hang an applicant — especially when the prior art feature and lauded inventive feature are opposites (e.g., jacketless and jacketed).

  30. “Take any claim, add “… used in a perpetual motion machine” to create a non-enabled embodiment that is literally covered by the original claim.”

    Careful – this is more like scenario 1 in the peanut-butter-and-jelly hypo, where you’ve added a claim element (the perpetual motion machine). You don’t have to enable the perpetual motion machine, you only have to enable your claim elements within the machine.

    The whole point of the PB&J hypo was to show that if your claim elements are all used in a future combination with other elements, your claim elements need be enabled only with each other in that combo, not with the new elements to avoid invalidity. Thus if the future combination doesn’t work (i.e., isn’t enabled), but only your original elements within the future combination are still combinable or do work as you claimed them (i.e., are enabled), then your claim is still valid.

    So people can imagine an infinite number of cominations with your original claim elements, and as long as your original claim elements are enabled with each other in those combos, you remain valid, even if the infinite combos are not. You say “So even if nobody figures out how to mix peanut butter and jelly between bread, the claims are not enabled? Even if it is not possible to mix peanut butter and jelly between bread?” Correct.

    In this case, Liebel couldn’t get their original claim elements (and only their original claim elements) to work in the future combination. Thus invalid.

    I, like others above, don’t like this result. See the PB&J post for a potential solution.

  31. “It was strange, however, to see that the court decided this case on enablement. Enablement does not require that the enabled invention be cost effective — which makes the patentee’s disparaging comments in this case much less relevant.”

    As I noted upthread, the specification does much more than simply make an offhand statement about the high cost of jacketless syringes. Rather, applicants’ invention is FRAMED as a solution, at least in part, to the problems (“expensive” “impractical”) presented by jacketless syringes. This is not a trivial distinction.

  32. One Last Try:

    Never enabled. The claims are not enabled at time of filing for their full literal scope. But you (and probably your Examiner) do not (or can’t) appreciate this. Claims invalid.

    Respone:

    So even if nobody figures out how to mix peanut butter and jelly between bread, the claims are not enabled? Even if it is not possible to mix peanut butter and jelly between bread?

    I hope you can see the problem with a rule that says a claim is invalid as long as someone can imagine a not-yet-achieved combination which, if achieved, would (1) require undue experimentation and (b) read on the claim.

    Take any claim, add “… used in a perpetual motion machine” to create a non-enabled embodiment that is literally covered by the original claim. Is the claim invalid at the time of filing, or does someone actually have to figure out how to use the invention in a perpetual motion machine to render the claim invalid? If someone has to actually have to figure out how to use the invention in a perpetual motion machine to render the claim invalid, then the event that “dis-enables” the specification is the creation of the non-enabled embodiment. This occurs after the filing, so the disablement is retroactive.

    Returning to the claims of Liebel, if nobody had ever invented a jacketless embodiment, do you still think Liebel’s claims have been invalid?

    If no, then it was the creation of a jacketless embodiment that retroactively invalidated the claims.

    If so, then are all claims invalid as long as an infringer can imagine a not-yet-invented embodiment that would be literally covered by the specification and yet would require undue experimentation?

  33. “So before someone figures out how to mix peanut butter and jelly between bread, your claims are enabled?”

    Never enabled. The claims are not enabled at time of filing for their full literal scope. But you (and probably your Examiner) do not (or can’t) appreciate this. Claims invalid.

    “If someone is accused of infringement, should pour their efforts into retroactively disabling the infringed claims? (or at least search for later-developed technology that retroactively disables the claims?)”

    It wouldn’t be “retroactively” enabling because the claims were never enabled for their full scope. You and the Examiner just didn’t have the time, money, intelligence, foresight, or other resources to realize this. But your mega-corp infringer does.

    To answer the question, sounds like a good strategy after Liebel, but I’m betting Liebel will get limited to instances where prosecution broadens, spec disparages, and accused infringer falls within the broadened and disparaged scope. (We’ll call this the case of the greedy patentee, for Mooney’s sake). The real test case will be when a copyist tries to invalidate a plaintiff’s claims by arguing non-enablement of some obscure scope of the literal claims that is irrelevant to his infringing copy.

  34. SF stated:

    If a patentee disparages a prior art feature (e.g., jacketless systems are too expensive to be practical) and then is silent as to whether its invention could use that prior art feature, one can expect the court to say that there is no written description for using that feature in the invention.

    Response:

    Why does it matter that “there is no writted description for using that feature in the invention”?

    The written description requirement is that the specification include a written description of the claimed invention. The claimed invention did not “use that feature”. I don’t think that anyone would dispute that if the claim had said “… in a jacketless-syringe” the claim would have been invalid both under written description and under enablement.

  35. One last try said:

    2) I claim a food *comprising* peanut butter mixed with jelly. In my spec I disclose and enable the mixing of peanut butter with jelly – my example embodiment puts the mixture into a jar. Except this time, peanut butter and jelly do not mix when placed between bread, which I fail realize and disclaim from my claim. You, after much experimentation into a new mixing method, figure out how to mix peanut butter and jelly between bread, and you do so. You infringe my claim with your sandwich. My claim is *invalid* because it doesn’t enable what it claimed: the mixing of peanut butter and jelly. Your undue experimentation was directed toward something within my claim scope, and I needed to enable that scope to have a valid claim.

    Response:

    So before someone figures out how to mix peanut butter and jelly between bread, your claims are enabled?

    After someone figures out how to mix peanut butter and jelly between bread, your claims are retroactively non-enabled?

    Does this case then establish a new “retroactive disablement” doctrine?

    If someone is accused of infringement, should pour their efforts into retroactively disabling the infringed claims? (or at least search for later-developed technology that retroactively disables the claims?)

  36. Hot Airbag Stated:

    In this case, the applicant asserted that his claim had a very broad interpretation. The applicant asserted this broad interpretation to ensure that the claim read on his competitor’s product. The court determined that the asserted interpretation was not enabled. The only reason the alledged infringer’s product comes into the picture is because that determined how the applicant wanted his claim interpreted. If the alleged infringer was using a pressure jacket, the claim would be enabled because the applicant would have argued for a narrower interpretation that does not include a jacketless device and the claim is enabled for a jacketed device.

    Reply:

    You seem to assume that the scope of claims is determined by what the patentee alleges it to be during litigation. Most patentees would like that rule, but I have a feeling that the courts will not adopt it.

    In Liebel, the only reason why what the patentee argued has any relevance is because the patentee’s claim construction accurately reflected what one would have understood the claim to literally cover. That is, the patentee only pointed out the obvious… a claim with no mention of a jacket does not require a jacket (especially if a “jacket” limitation was expressly removed during prosecution).

    Logically, the scope of the claims should have nothing to do with what the patentee wants the scope to be at the time of litigation. The scope should be what one would have understood it to be upon reading the claims and the specification. (that’s the whole “notice” function of the claims)

    Even if Liebel had sued an infringer that had a pressure-jacket implementation of the invention, the “enablement” question should have resulted in the same outcome. That is because Liebel’s claims did not require a jacket, and would still read on Medrad’s non-enabled embodiment.

  37. commenter said: “Clearly Hot Airbag believes that enablement hinges on how the infringer implemented your invention. Thus, a claim asserted against one defendant may be enabled by the specification, while the same claim asserted against another defendant is not enabled by the same specification.”

    You are correct. Depending on what the claim is asserted against, the claim may be or may not be enabled. Enablement is based on claim interpretation. And, ultimately, claim interpretation depends upon the accused device. (Parties do not normally dispute claim terms, definitions, etc., unless it is dispositive to the infringement issue.)

    In this case, the applicant asserted that his claim had a very broad interpretation. The applicant asserted this broad interpretation to ensure that the claim read on his competitor’s product. The court determined that the asserted interpretation was not enabled. The only reason the alledged infringer’s product comes into the picture is because that determined how the applicant wanted his claim interpreted. If the alleged infringer was using a pressure jacket, the claim would be enabled because the applicant would have argued for a narrower interpretation that does not include a jacketless device and the claim is enabled for a jacketed device.

  38. commenter wrote, “The specification did not say or imply that the needle holder that was ultimately claimed could not be used as part of an expensive jacketless syringe.”

    If a patentee disparages a prior art feature (e.g., jacketless systems are too expensive to be practical) and then is silent as to whether its invention could use that prior art feature, one can expect the court to say that there is no written description for using that feature in the invention.

    It was strange, however, to see that the court decided this case on enablement. Enablement does not require that the enabled invention be cost effective — which makes the patentee’s disparaging comments in this case much less relevant.

  39. Hot Airbag wrote, “If you were to assert your airbag claim against someone who did not have an electrical system in their car, I think you would end up with the same result.”

    Clearly Hot Airbag believes that enablement hinges on how the infringer implemented your invention. Thus, a claim asserted against one defendant may be enabled by the specification, while the same claim asserted against another defendant is not enabled by the same specification.

    Am I the only one that finds that disturbing?

  40. Doug wrote:

    Your application for a widget discloses one embodiment of the widget which has elements A, B, C, D and E. An enabling disclosure of that widget is included in the specification.

    If your claim is for a widget comprising A+B+C, pursuant to Leibel-Flarsheim, must your specification also provide an enabling disclosure for a widget which includes A+B+C but does NOT include either D or E?

    Similarly, if you also claim a widget comprising A+B+E, must your specification also provide an enabling disclosure for a widget which includes A+B+E but does NOT include either C or D?

    Any thoughts/comments would be appreciated.

    Response:

    Those are the million dollar questions.

    Most people who dislike this case (including myself) believe that the answer to both your questions is yes.

    In fact, it may be even worse than that. Even if you disclose an embodiment that includes A+B+C and not D and E, your claim to A+B+C would still be invalid if someone is able to make A+B+C+F+G, which is literally covered by your claim to A+B+C. This, of course, assumes that A+B+C+F+G is a non-enabled combination that uses your claimed A+B+C invention.

    Stated another way, there is no way to be sure that your claim to A+B+C is enabled, no matter how many embodiments you disclose that have A+B+C, as long as someone is able to prove the existence of any non-enabled embodiment that includes A+B+C.

    Some people who like this case would answer your questions with “more information is needed”.

    Specifically, some supporters of this case have expressed the opinion that the enablement outcome of this case hinges on the facts that (1) the patent’s specification disparaged jacketless syringes, and (2) the accused device used the invention as part of a jacketless syringe.

    The scenarios you posed say nothing about whether your specification made disparaging statements about some characteristic of the context in which the infringers use the invention A+B+C. Without these facts, supporters of this case may not be able to answer your question.

    The court, and some of the commenters in this thread, have gone so far as to say that the Liebel specification “taught away” from jacketless syringes. In fact, some have even said that Liebel “disclaimed” the jacketless embodiment. I think that this is a clear overstatement, since the specification merely said that jacketless syringes were expensive. The specification did not say or imply that the needle holder that was ultimately claimed could not be used as part of an expensive jacketless syringe.

    Nevertheless, the court obviously considered the disparagement of jacketless syringes to be a factor in their holding that enablement was not satisfied. Whether the court would have arrived at the same conclusion if the disparaging remarks did not exist is hard to say.

    To me, there is something intellectually disturbing about the idea that the question of whether *your specification* enables *your claimed invention* has anything to do with whether you disparaged a characteristic of the infringer’s embodiment of your invention. If the court wants to let the infringer off because you disparaged a characteristic of their embodiment, the basis for letting them off should not be enablement.

    I guess I’m a “purist” with respect to enablement. To me, enablement should only involve what you claim and what you disclose. It should not have anything to do with how the accused infringer has used your invention.

    In other words, the enablement decision should be the same whether or not the accused device had a pressure jacket. In fact, the enablement decision should be the same whether or not a jacketless embodiment of the invention was even possible.

    What the court did really looks a lot more like a form of estoppel (i.e. we the court will not allow you to stop the defendant from using an embodiment of your claimed invention that includes a feature that your specification disparages). The fact that they used an enablement determination as the means to implement their estoppel powers is unfortunate for those who enjoy clarity of thought.

  41. Let me try to clarify (one last time) how this case doesn’t ruin all open-ended claims. Contrast the two following scenarios:

    1) I claim a food *comprising* peanut butter mixed with jelly. In my spec I disclose and enable the mixing of peanut butter with jelly – my example embodiment puts the mixture into a jar. You, after much experimentation as to the best base for peanut butter and jelly, put a mixture of peanut butter and jelly between bread. You literally infringe my claim with your sandwich because you mixed peanut butter with jelly. My claim is *valid* because it enables what it claimed: the mixing of peanut butter and jelly. Your undue experimentation was directed toward something beyond my recited claim scope (including a base with the mixture), and I need only enable the mixing of peanut butter and jelly, which you did without undue experimentation.

    2) I claim a food *comprising* peanut butter mixed with jelly. In my spec I disclose and enable the mixing of peanut butter with jelly – my example embodiment puts the mixture into a jar. Except this time, peanut butter and jelly do not mix when placed between bread, which I fail realize and disclaim from my claim. You, after much experimentation into a new mixing method, figure out how to mix peanut butter and jelly between bread, and you do so. You infringe my claim with your sandwich. My claim is *invalid* because it doesn’t enable what it claimed: the mixing of peanut butter and jelly. Your undue experimentation was directed toward something within my claim scope, and I needed to enable that scope to have a valid claim.

    Liebel fell in scenario 2, but many open-ended claims will fall in scenario 1.

    Now, regarding the policy of invalidating the entire claim instead of narrowing it, Zeke writes: “And what’s wrong with this picture exactly? An inventor who wants a monopoly is in the best position to know what the invention is and to have it written up by a competent drafter. Claims that omit essential elements or that only have partially enabled scope are bad mojo for innovation.”

    Many times inventors can’t realize that their combinations won’t work for a particular scenario because the elements of the nonenabled scenario might not be in the inventor’s field or even yet exist when the inventor claims her combination. Thus this case encourages inventors to claim only their example embodiment that they know works, because it may be difficult to predict in what scenarios the claims won’t work. It’s even more burdensome on small-entity or uneducated inventors who have less knowledge of unrelated fields. Limiting claims to example embodiments seems to be a radical shift from typical patent policy. If courts would instead simply narrow the claims to what is enabled, this will limit both infringement and invalidity and will allow inventors to claim broader and ensnare near-copyists, which seems to strike a better balance.

  42. Let me try to clarify (one last time) how this case doesn’t ruin all open-ended claims. Contrast the two following scenarios:

    1) I claim a food *comprising* peanut butter mixed with jelly. In my spec I disclose and enable the mixing of peanut butter with jelly – my example embodiment puts the mixture into a jar. You, after much experimentation as to the best base for peanut butter and jelly, put a mixture of peanut butter and jelly between bread. You literally infringe my claim with your sandwich because you mixed peanut butter with jelly. My claim is *valid* because it enables what it claimed: the mixing of peanut butter and jelly. Your undue experimentation was directed toward something beyond my recited claim scope (including a base with the mixture), and I need only enable the mixing of peanut butter and jelly, which you did without undue experimentation.

    2) I claim a food *comprising* peanut butter mixed with jelly. In my spec I disclose and enable the mixing of peanut butter with jelly – my example embodiment puts the mixture into a jar. Except this time, peanut butter and jelly do not mix when placed between bread, which I fail realize and disclaim from my claim. You, after much experimentation into a new mixing method, figure out how to mix peanut butter and jelly between bread, and you do so. You infringe my claim with your sandwich. My claim is *invalid* because it doesn’t enable what it claimed: the mixing of peanut butter and jelly. Your undue experimentation was directed toward something within my claim scope, and I needed to enable that scope to have a valid claim.

    Liebel fell in scenario 2, but many open-ended claims will fall in scenario 1.

    Now, regarding the policy of invalidating the entire claim instead of narrowing it, Zeke writes: “And what’s wrong with this picture exactly? An inventor who wants a monopoly is in the best position to know what the invention is and to have it written up by a competent drafter. Claims that omit essential elements or that only have partially enabled scope are bad mojo for innovation.”

    Many times inventors can’t realize that their combinations won’t work for a particular scenario because the elements of the nonenabled scenario might not be in the inventor’s field or even yet exist when the inventor claims her combination. Thus this case encourages inventors to claim only their example embodiment that they know works, because it may be difficult to predict in what scenarios the claims won’t work. It’s even more burdensome on small-entity or uneducated inventors who have less knowledge of unrelated fields. Limiting claims to example embodiments seems to be a radical shift from typical patent policy. If courts would instead simply narrow the claims to what is enabled, this will limit both infringement and invalidity and will allow inventors to claim broader and ensnare near-copyists, which seems to strike a better balance.

  43. I predict that, in the next few years, several litigators will argue for the invalidity of a subcomponent claim based on this case. After all, you can simply depose an inventor and ask them if their claimed subcomponent would work without a particular non-recited component. When the inventor admits it can’t, you argue that the inventor claimed a (non recited component)-less system and yet didn’t enable it. I also predict that virtually all of these arguments will fail.

  44. If the Federal Circuit had affirmed on the basis of written description, this thread would have had less than 20 entries. In this case, as Malcolm has noted, the patentee (1) effectively disclaimed jacketless systems by recognizing the possibility of jacketless syringes and teaching away from jacketless syringes and (2) after seeing a competitor’s jacketless product, removed all references to the jacket from the claims in order to cover that product. While the Federal Circuit hasn’t provided a bright line distinction between enablement and written description, these facts best lend themselves to the written description. And, apparently from the oral argument, the district court rendered an opinion about written description and only mentioned enablement in passing. But the Federal Circuit panel decided to discuss enablement — perhaps because Judge Radar wasn’t interested in perpetuating the two-part interpretation of 112 paragraph 1 (the “written description” part and “enablement” part).

  45. “You keep saying the case is fine because the plaintiff got what he deserved. You keep wanting to tie it to the facts of this case as if this case exists in a vacuum. ”

    Sorry, Lionel. What I want is for you and some other chicken littles to understand is that Judge Lourie’s opinion does not invalidate every comprising claim that has been granted. Does it weaken some “comprising” claims? Probably. I’ve outlined the circumstances in which certain “comprising” claims would be weakened, in light of this case, about twenty times. Time will tell. Since my assertions in that regard are neither outrageous or shocking, I expect to be vindicated. Perhaps you’d like to wager?

    Elsewhere you mock me for not knowing “US patent law” but every decent US patent lawyer knows that the holdings of patent cases — especially cases that were not decided en banc or by the Supreme Court — are successfully distinguished on their facts every day. So your mockery is misplaced. It being Friday, I won’t tell you to where to look to find a more fruitful target. I will note, however, that Beverages and More is selling Dunlivet Scotch at absurdly cheap prices.

  46. “Query: Could the Court have reached the same result on another, better basis?

    Perhaps I’m not the first to propose the reverse doctrine of equivalents”

    No, I proposed up thread 100 comments ago as a joke. The reverse doctrine of equivalents has never been used by the CAFC to find non-infringement and they’ve gone out of their way on at least two occasions to remind petitioners that it’s essentially a dead doctrine, which is where every reasonable person hopes that it remains.

  47. “Scary” is how Jim Beran assesses this decision. There’s nothing scary about a requirement that the reader of the patent should be enabled to work an area of technology in proportion to the scope monopolised by the claim, because that’s the essence of the “contract” between the inventor and the monopoly-granting authority. Don’t be scared. Instead, be happy that Judge Lourie is injecting some sense into the system. BTW, binding precedent is characteristic of common law (USA, England) and alien to ROW civil law. Interesting is whether, on balance, it’s a “good thing”. The testbed for this question is common law England, now subservient to civil law EU.

  48. Lionel,

    “The people who dislike this decision don’t think of Liebel as a victim. They just appreciate the fact that Judge Lourie made a lot of bad precedent-setting statements in the course of his decision.”

    Query: Could the Court have reached the same result on another, better basis?

    Perhaps I’m not the first to propose the reverse doctrine of equivalents–Under that doctrine, according to Scripps v. Genentech (Fed. Cir. 1991), facts specific to the accused device are “weighed against the equitable scope of the claims, which in turn is determined in light of the specification, the prosecution history, and the prior art.” The purpose “is to prevent unwarranted extension of the claims beyond a fair scope of the patentee’s invention.”

    Sounds spot on to me. And, because of its equitable and fact-specific basis, much less scary than what the Court did, at least for those of us who procure patents in rapidly developing technologies.

  49. Malcolm wrote – “Applicant craps on X, and gets claims to Y. Applicant sees competitor making X, so rewrites claims to cover X. Sleepy Examiner allows claims. Applicants sues. Applicants watch in horror as Judge Lourie lights his joint with their patent.”

    Malcolm, do you have any familiarity with the US legal system? It does not seem like it from your posts.

    You keep saying the case is fine because the plaintiff got what he deserved. You keep wanting to tie it to the facts of this case as if this case exists in a vacuum.

    Please note that the US legal system is based upon precedent and the rationale for one decision may be used in another, later case to arrive at a decision. (Given that the CAFC routinely ignores its own precedent, this point may be moot.) The people who dislike this decision don’t think of Liebel as a victim. They just appreciate the fact that Judge Lourie made a lot of bad precedent-setting statements in the course of his decision.

  50. “MM:functional limitations should be outlawed? Bit drastic, what, even as a “General Rule”? I think they are needed, from time to time, to trim the claim scope (primarily defined by structural elements) to that which corresponds to the proper scope and to shut out marginal, non-functional embodiments. Trouble starts when the functional bit is all that separates the subject mater of the claim from the prior art.”

    Agreed. And you’ve hit the nail on the head re where the trouble starts. Perhaps a less drastic rule would be to prohibit (or not construe as limiting) recitation of any functional language where the functional language represents the desired outcome, i.e., the problem to be solved. To some extent the case law re preambles has addressed this issue but it’s still a confusing mess and provides an excuse for much mischief during prosecution.

  51. SF

    “But no one has cited any “relevant facts” that meaningfully distinguish this case from any other claim to a subcomponent.”

    As twilight approaches, some of the commenters begin to dream …

  52. I find it somewhat ironic that the patentee’s spec, that was probably only glanced at or skimmed over by the examiner and granted(see Patently-O blog-Jan. 2007- most barely read it), now has their spec. come full circle and bite them in the ass(evidently the Courts will certainly take the time to read it). Moral of the story… Be careful of what you bloviate for.

  53. Thanks Anon. I was thinking of (all ways to result X) claims that merely state the problem “A widget with more X power” and then comes the StepBack rebuttal example “Compound XYZ that cures cancer”. The more fitting counterpart chemical “problem” claim would have been: What I Claim Is: “Chemical compound, that cures cancer”. When StepBack cites “Compound XYZ, to cure cancer” he is reciting not the problem but the solution, and not proving me wrong at all. BTW Stepback, thanks for the tip to patent my new and inventive level of wrongness. I’m not sure whether to take you seriously. Could I do that, in USA?

  54. Stepback wrote:

    ‘Maxi dear, you’ve taken “wrong” to a whole new level and deserve a patent for your advanced work in the art of wrongness.

    Here’s an example: “I claim a novel and useful compound XYZ which cures cancer and heals the mentally indigent and whose synthesis is enabled by the above disclosure in this specification.”

    There. That covers “all” ways of getting to compound XYZ. It is a claim to a composition of matter which is novel, nonobvious and provides its claimed utility (we assume the last to be a given for argument’s sake).

    The main issue in patent law is not that of “desire”, but rather of “enablement”. Lots of people “desire” things. Only a few enable their attainment.’

    Patent law is not about desire??? Unbelievable. In any event, I believe Max is talking about desideratum claims, i.e. where the desired end result is known, but nobody knows how to get there. In your example, xyz cannot be known, otherwise its both obvious and lacks novelty. A cure for cancer is not known, but that doesn’t mean that the inventor of xyz can prevent others from achieving that goal by different means. If Max is wrong, then he’s in good company:

    ‘Whenever anything inventive is done for the first time it is the result of the addition of a new idea to the existing stock of knowledge. Sometimes, it is the idea of using established techniques to do something which no one had previously thought of doing. In that case, the inventive idea will be doing the new thing. Sometimes, it is finding a way of doing something which people had wanted to do but could not think how. The inventive idea would be the way of achieving the goal. In yet other cases, many people may have a general idea of how they might achieve a goal but not know how to solve a particular problem which stands in their way. If someone devises a way of solving the problem, his inventive step will be that solution, but not the goal itself of the general method of achieving it.’ Biogen v Medeva [1997] RPC 1, at p. 34 per Lord Hoffman.

  55. Malcolm:

    You didn’t feel a disturbance in The Force (as if hundreds of thousands of claims cried in pain from being invalidated) because it didn’t happen.

    Claims cannot be possibly be invalid because they omit interrelated subcomponents without which the claimed subcomponents could not function.

    But no one has cited any “relevant facts” that meaningfully distinguish this case from any other claim to a subcomponent. The disparaging comments you mentioned merely demonstrate that the jacket (the omitted, interrelated subcomponent) was necessary for the claimed subcomponents to function.

  56. Thank you StepBack and Malcolm Mooney. SB: Whether a novel chemical compound is or is not obvious is an interesting question, but not a very convincing proof of the wrongness of my proposition on the patentability of (mechanical)widgets with improved performance. There was I, thinking that Liebel was a mechanical case. Chemistry is different, don’t you agree? MM:functional limitations should be outlawed? Bit drastic, what, even as a “General Rule”? I think they are needed, from time to time, to trim the claim scope (primarily defined by structural elements) to that which corresponds to the proper scope and to shut out marginal, non-functional embodiments. Trouble starts when the functional bit is all that separates the subject mater of the claim from the prior art.

  57. “If you’re correct, hundreds of thousands of claims are invalid”

    I didn’t feel a disturbance in The Force.

  58. MaxDrei

    “When X is a desirable result that those skilled in the art at the date of the claim were already desiring, it is not an invention to write that known desire down, in the form of a patent claim.”

    No doubt. As a general rule, functional limitations should be verboten. That’s part of the reason why the CAFC’s case law on construing preambles is (drum roll) a joke.

    Oh, and SF: please don’t pretend that the CAFC has clearly defined the difference between “written description” and “enablement.” The distinction may be identifiable in certain contexts (e.g., monoclonal antibody deposits) but not generally. Whether the CAFC’s decision here rests on enablement or written description grounds is uninteresting. Regardless of which clause of 112P1 you use, the asserted claims are equally invalid.

  59. Hot Airbag wrote, “If you were to assert your airbag claim against someone who did not have an electrical system in their car, I think you would end up with the same result. Bottom line is that if your airbag invention needs electricity to operate and the alleged infringer does not use electricity, then you did not invent the device of the alleged infringer. In your hypothetical, the airbag inventor did not invent an apparatus that operates without electricity.”

    If you’re correct, hundreds of thousands of claims are invalid because they omit interrelated subcomponents without which the claimed subcomponents could not function.

  60. Malcolm wrote, “The answer is (in part): when you do not intend to sue people who are making or doing something that you expressly disparaged in your specification as inferior to your invention.”

    That’s great evidence if this case had been decided under written description. But it wasn’t: “Because we are resolving this issue on the enablement ground, we do not need to consider the written description holding of invalidity.”

  61. ralley:

    “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.”

    And what’s wrong with this picture exactly? An inventor who wants a monopoly is in the best position to know what the invention is and to have it written up by a competent drafter.

    Claims that omit essential elements or that only have partially enabled scope are bad mojo for innovation. They misinform the public as to the scope of the monopoly. They erect a fence around public land. Or is everyone who reads the patent supposed to pay an attorney $30,000 to do a full legal analysis of it?

    If it were okay for people to over-claim and then have the courts do their work for them later by cleaning up the claims, who do you suppose would take advantage of this? Honest patentees who innovate and license? Or patentees who cast claims over inventions made by others and then sue?

    Yes, “Woe to the drafter/inventor who fails to recognize an essential feature” because they are the ones in the best position to know this information and they are the ones demanding a monopoly in exchange for what they teach. If they fail in this but gave it an honest go, hopefully the courts will be generous. If they fail while trying to screw someone over, tough luck.

    If you build a fence around a public park, you can be expected to be told to take it down. If you build such a fence and then start charging entrance fees to the park, I hope that they bulldoze the fence and give you a stiff fine.

  62. Maxi dear, you’ve taken “wrong” to a whole new level and deserve a patent for your advanced work in the art of wrongness.

    Here’s an example: “I claim a novel and useful compound XYZ which cures cancer and heals the mentally indigent and whose synthesis is enabled by the above disclosure in this specification.”

    There. That covers “all” ways of getting to compound XYZ. It is a claim to a composition of matter which is novel, nonobvious and provides its claimed utility (we assume the last to be a given for argument’s sake).

    The main issue in patent law is not that of “desire”, but rather of “enablement”. Lots of people “desire” things. Only a few enable their attainment.

  63. The claim covering all ways to achieve result X is usually a claim directed to a mere desirable result. When X is a desirable result that those skilled in the art at the date of the claim were already desiring, it is not an invention to write that known desire down, in the form of a patent claim. A claim of that scope defines subject matter (the wish) that is OBVIOUS. The valid claim is the one that corresponds to the enabled solution to the problem, rather than defines the problem itself. Fascinating for Europeans is how any patent attorney can write an application that sets out: Known widgets don’t have enough X. There is a need to get more X into widgets. What we claim is: Widget with an X content of more than Y, and seriously expect any Patent Office to allow such a claim. Yet, as a European prosecutor, I find amongst my instructing US associates blank incomprehension that any such claim could be dismissed as obvious. Tell me I am wrong, somebody, please.

  64. There is no bright line rule on enablement, and I doubt there ever will be. The general rule applied on this side of the Atlantic, where we have been working with the Leibel-Flarsheim principle for some time, is the degree of disclosure/enablement should be commensurate with the scope of the claim: the broader the claim, the greater the degree of enabling disclosure required. Enabling one embodiment will suffice in some cases, not in others. Context is everything. As Lord Hoffman said in Biogen v Medeva:

    ‘It is not whether the claimed invention could deliver the goods, but whether the claims cover other ways in which they might be delivered: ways which owe nothing to the teaching of the patent or any principle which it disclosed.’

  65. Your application for a widget discloses one embodiment of the widget which has elements A, B, C, D and E. An enabling disclosure of that widget is included in the specification.

    If your claim is for a widget comprising A+B+C, pursuant to Leibel-Flarsheim, must your specification also provide an enabling disclosure for a widget which includes A+B+C but does NOT include either D or E?

    Similarly, if you also claim a widget comprising A+B+E, must your specification also provide an enabling disclosure for a widget which includes A+B+E but does NOT include either C or D?

    Any thoughts/comments would be appreciated.

  66. “Why should the method claim in the case at issue be treated differently than the apparatus claim to the airbag?”

    If you were to assert your airbag claim against someone who did not have an electrical system in their car, I think you would end up with the same result. Bottom line is that if your airbag invention needs electricity to operate and the alleged infringer does not use electricity, then you did not invent the device of the alleged infringer. In your hypothetical, the airbag inventor did not invent an apparatus that operates without electricity.

    In this case, the inventors did not invent a device that operated without the pressure jacket. To me, lack of enablement is a fancy way of saying they did not invent it.

  67. “Why should the method claim in the case at issue be treated differently than the apparatus claim to the airbag? ”

    I don’t want to say SF except that the method claim in this case IS DIFFERENT from your airbag claim, as are the rest of the relevant facts. Do you really believe that a **bright line rule** about the enablement of a claim is desirable, such that you can look for two seconds at a claim and the spec and say “Yup, it’s enabled for anything that falls within the literal scope, period.”

    “Both hypos raise this issue: when can you generically claim method/apparatus that achieves a result versus merely a particular method/apparatus for acheiving the result.”

    The answer is (in part): when you do not intend to sue people who are making or doing something that you expressly disparaged in your specification as inferior to your invention.

  68. “Haters of this case think that the claim is valid as is.”

    Haters of this case need to adjust their expectations because, for all the reasons Judge Lourie provided and others have reiterated here, the decision is reasonable and well-grounded in the established case law.

    “So, if the CAFC wrote it, it’s a good decision?”

    LOL! I think not.

    Applicant craps on X, and gets claims to Y. Applicant sees competitor making X, so rewrites claims to cover X. Sleepy Examiner allows claims. Applicants sues. Applicants watch in horror as Judge Lourie lights his joint with their patent.

    What’s to hate? This result is at least as just and fulfilling as watching Armando Benitez throw away a Giants game.

  69. Malcolm:

    I’m almost persuaded. Perhaps you can close the gap.

    In oral argument, the court used a similar hypo to your “smooth driving” analogy. Specifically, the court asked whether the first person to create an engine that reached a particular level of miles-per-gallon efficiency had enabled all engines that reached that efficiency. (I think the panel decision or en banc denial of LizardTech used the same engine hypo.)

    Both hypos raise this issue: when can you generically claim method/apparatus that achieves a result versus merely a particular method/apparatus for acheiving the result.

    Here, the inventor’s essentially admitted that their invention could not achieve any result without the jacket. However, the airbag inventor (from my hypothetical) would likewise have to admit that their airbag could not achieve any result without electrical power from the electrical system.

    Why should the method claim in the case at issue be treated differently than the apparatus claim to the airbag?

  70. Malcolm wrote – “Huh. Have you told Medrad the bad news?”

    So, if the CAFC wrote it, it’s a good decision? Or have you agreed with every court case decision you have ever read? Does this mean that every dissenting justice is a fool?

    Given the chaos that is the CAFC’s case law, you must be one mixed up bird.

  71. Malcolm said: What doctrine(s) of claim construction should the CAFC have used to read the jacketless limitation back into the claim — a limitation that was indisputably TAKEN OUT of the claim by the patentee for the express purpose of sueing this infringer

    Haters of this case do not think that the jacketless limitation should be read back into the claim. Haters of this case think that the claim is valid as is.

    Some people like the no-infringement outcome of the case, but think they should have arrived at that conclusion by reading limitations into the claim. People in that group are not true haters of this case. There is not doctrine of claim construction that would allow this (which isn’t to say that the court hasn’t done it in other cases).

  72. Malcolm wrote “Does the claim recite a jacket? Nope. Is it enabled for a jacketless embodiment? Nope. It’s fairly straightforward.”

    See, what you wrote is flat out wrong. You have a fundamental misunderstanding of patent law. I am not sure how to dissuade you of your black is white philosophy here. And I sincerely hope you do not represent clients in a court of law or I feel very sorry for your clients.

  73. Malcolm wrote “What doctrine(s) of claim construction should the CAFC have used to read the jacketless limitation back into the claim — a limitation that was indisputably TAKEN OUT of the claim by the patentee for the express purpose of sueing this infringer.”

    No doctrine. It does not need to be and should not be read back into the claim. The jackelt/lack thereof was not a claim element. The elements of the claim were either infringed or not infringed by the Defendant’s product, regardless of whether it had a jacket or not.

    Whether the court believes a jacket is an inherent limitation of the claims at issue is another story. Inherency is not generally a validity issue. Besides, nothing, not even the patentee’s removal of the limitation, prevents the court from determining that a jacket is inherent and finding the claims not infringed.

  74. “Could you cite a date and time for that analogy? After 100 plus entries, it’s a little hard to locate.”

    Mar 23, 2007 at 01:02 AM

  75. Malcolm wrote, “But I notice that they are present in my analogy and they are discussed by several others upthread.”

    Could you cite a date and time for that analogy? After 100 plus entries, it’s a little hard to locate.

  76. “the proper question to ask appears to be whether the statements in the patent actually presented a “clear discouragement”

    A fair point. Assuming for argument that this is the proper standard, it seems that the standard is met in this case where the only mention of a jacketless syringe holder is the disparagement of such holders in the Background, i.e., impractical, expensive jacketless syringe holders are part of the problem in the art that is being addressed by the invention. If that’s not “clear discouragement,” then what is? The issue of a jacketless embodiment not being expressly referred to as a “preferred” embodiment does not even exist in this case.

  77. “Under the proper legal standard, a reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant’s invention. (In re Gurley, 27 F.3d 551553 (Fed. Cir. 1994). A statement that a particular combination is not a preferred embodiment does not teach away absent clear discouragement of that combination. In re Fulton, 391 F.3d at 1199-1200.”

    Syntex and Allergan v. Apotex

    Although this issue has generally arisen in the context of whether or not a patent was obvious in view of several references (i.e. did a particular reference teach away from using a particular feature in a combination), the proper question to ask appears to be whether the statements in the patent actually presented a “clear discouragement” of NOT using a pressure jacket in combination with the other features.

  78. IDT complained about unanswered questions. Here’s my unanswered question for the haters of this case:

    What doctrine(s) of claim construction should the CAFC have used to read the jacketless limitation back into the claim — a limitation that was indisputably TAKEN OUT of the claim by the patentee for the express purpose of sueing this infringer.

    Think carefully and please address the “far reaching implications” of your answer.

  79. “the enablement requirement is written as (and was intended to be) a requirement about the content of the specification, not the breadth of the claim.”

    Now we have Brian playing word games and pretending that enablement is not related to claim scope. Please: we’re not that stupid. Try proofreading.

    “A statement that syringes without pressure jackets are expensive is completely different than a statement that implies that you can’t use my novel needle with an expensive jacketless syringe.”

    Yes, but again: that’s not an accurate description of what the specification taught. If the specification said simply, “You could use our needle holders with a jacketless syringe by doing X, Y, and Z, but it would be really expensive,” you would have a point.

    But that’s not what happened here. Not at all. The specification is teaching away from the use of jacketless syringes, disparaging them by saying they are expensive and impractical. In other words, the applicant is saying, “This invention is not about jacketless syringes because they cost too much and we think they suck. Our invention is a different and better alternative.”

    It’s not “bad reasoning.” The reasoning has case law to support it: 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.

    Get it? It’s “evidence”. And it’s just a piece of the body of evidence which weighs against finding enablement of Liebel’s overly broad, non-enabled, post-hoc claims.

  80. There seems to be a lot of nonsense being written here.

    Someone said:

    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.

    I respond:

    This quote does not help those who like this decision. A statement that syringes without pressure jackets are expensive is completely different than a statement that implies that you can’t use my novel needle with an expensive jacketless syringe. Therefore, the conclusion that this “teaches against a purported aspect of the invention” is more evidence of the bad reasoning present in this case.

    Someone said:

    “This is mostly wrong. ALL A+B+C infringe A+B.”
    All A+B+C? Even just the B+C part?

    I respond:

    Remember, we are talking “comprising”. Therefore A+B+C is a subset of B+C, not the other way around. A+B+C is entirely covered by A+B and entirely covered by B+C.

    Someone said:

    Because its invention could not function without the jacket, the patentee lost.

    I respond:

    The claimed invention could function without the jacket. The defendent’s implementation proves it.

    I Dispute that said:

    I still have no takers on my question, which indicates to me that nobody has a good answer. Anyone care to explain why my view is wrong?

    Here’s the question: If you have a claim (to a dohicky comprising A, B, and C), it reads on a dohicky containing A, B, C, and D. If embodiment ABCD is in the prior art, then the law treats the entire claim as invalid for anticipation, even if a dohicky containing A, B, C, and E is novel, nonobvious, useful, etc. Given that the law invalidates an entire claim if it reads on a single embodiment that is not novel, what in the patent laws makes you think that the law does *not* invalidate an entire claim if it covers a single embodiment that is not enabled?

    I respond:

    A claim to ABC would be invalidated by prior art that contains ABCD… that is true.

    That is because a single instance of prior art that is literally covered by a claim will invalidate the claim.

    You then question why a single instance of non-enabled art should not also invalite a claim.

    The answer is that a claim that literally covers the prior art does not recite anything that is novel and non-obvious. A claim that covers an instance of non-enabled art, on the other hand, may be novel and non-obvious. In fact, as pointed out by many in the thread, virtually every valid claim covers non-enabled embodiments of the invention.

    One thing that everyone, including the court, seems to be missing… the enablement requirement is written as (and was intended to be) a requirement about the content of the specification, not the breadth of the claim. At least in the predictable arts, it has always been sufficient for the specification to disclose and enable a single embodiment of the claimed invention.

    I Dispute that said:

    you’re not claiming that ABCD is within the scope of your invention, just that your claim reads on ABCD.

    I respond:

    I think this statement indicates a source of confusion. For most people, “the scope of the invention”, “the scope of the claim” and “what the claims read on” are all the same thing. If these phrases have different meanings to you, then you may have to explain those differences before using those terms in a discussion.

  81. David French writes:

    A closely related issue arises when a patent claim is declared invalid because it reads upon an inoperative embodiment.

    I have always been personally bothered by this policy. Why should it matter if a claim incidentally describes something that doesn’t work? Why should a claim be invalidated when it could never have interfered with the public interest?

    An answer has occurred to me: a claim can be legitimately invalidated if it necessarily reads-on an inoperative embodiment. This is what happened in 1948 in Canada when the Privy Council invalidated a Canadian patent because the claims read-on cellulose xanthate. The claims stipulated for cellulose xanthate and that composition did not work in the intended process.

    If you are affirmatively attempting to claim something that doesn’t work, then there will be insufficient support for the claim.

    The situation is different, however, when a claim does not necessarily stipulate for an inoperative embodiment. Inoperative embodiments for virtually every claim can be conceived very easily. A wing will not work in outer space. The Supreme Court of Canada dealt with this issue in the ECG cream case where they inferred from the preamble of the claim that the pH range stipulated thereafter should not include corrosive compositions for a substance which is intended to be applied to the skin.

    In the CAFC decision under discussion, the court failed to make this distinction. The relevant claims did not necessarily stipulate for a fragile, disposable syringe. Accordingly, there should have been no necessity for the specification to describe how such a syringe could be employed. The fact that the inventors had not address the problem of building a robust disposable syringe should not have denied the patentee coverage of their mechanical injector in combination with such a syringe.

  82. With the possible exception of Learned Hand J, has there ever been a really articulate US judge? examples please…………..

  83. With the possible exception of Learned Hand J, has there ever been a really articulate US judge? examples please…………..

  84. ABC said: “In your example, D is not part of my invention, so it does not need to be enabled. If I have invented ABC, I must enable ABC to get any valid claims to ABC.”

    I think I see your point: If someone builds an ABCD and you claim that the ABC in it infringes, then you’re not claiming that ABCD is within the scope of your invention, just that your claim reads on ABCD. Am I understanding you? I think that’s correct.

    But is that what you think Liebel required? I don’t think that’s what Liebel did. Here’s why:

    To use actual terms from the patent, our imaginary claim to a dohicky with A, B, C was, in the Liebel case, a claim to a working high-pressure injector (a dohicky) with a body (A), a drive ram (B), and an opening containing a disposable syringe (C).

    But in Liebel, there was not a dispute about whether the patent enabled a dohicky with A, B, C, and other components. The dispute was just whether the dohicky with A, B, and C was enabled.

    The answer is that it was not enabled in all cases. Although the patent did teach you how to build a working high-pressure injector with A, B, and C, you necessarily had to have a fourth component also to make it work (a pressure jacket). Because an injector with just A, B, and C would not have worked at high-pressures (because it did not have a pressure jacket), the full scope of the claim was not enabled.

  85. I still have no takers on my question, which indicates to me that nobody has a good answer. Anyone care to explain why my view is wrong?

    Here’s the question: If you have a claim (to a dohicky comprising A, B, and C), it reads on a dohicky containing A, B, C, and D. If embodiment ABCD is in the prior art, then the law treats the entire claim as invalid for anticipation, even if a dohicky containing A, B, C, and E is novel, nonobvious, useful, etc. Given that the law invalidates an entire claim if it reads on a single embodiment that is not novel, what in the patent laws makes you think that the law does *not* invalidate an entire claim if it covers a single embodiment that is not enabled?

  86. ‘I’ve seen some great language quoted by EP associates that says the invention is construed from the vantage point of “one who is willing to understand.”‘

    Oh yes, the EPO jurisprudence is full of such gems. My personal favourite, not from the EPO but the House of Lords, is: ‘the hypothetical addressee is a workman, but you are not to assume he is also a lunatic’.

  87. Malcolm, indeed, the “mind willing to understand” viewpoint to be attributed to the skilled reader is exactly the “Principle of Synthetical Propensity” (try Googling it)that I mentioned up above. There never was a patent issued yet, that is 100% clear. There never was a claim yet, that can defy efforts of lawyers to put a non-functional embodiment within its scope. So, a system that announces as invalid any such claim is a disfunctioning one. Even though it falls to the Court to construe the claim, the notional reader it must impute to the patent is technical, not legal, hungry to learn just what is the contribution to the art, and looking to the claim for a scope of the forbidden area, that strikes him/her as commensurate with the contribution. Incidentally, somebody above called the EPO a train wreck. May we know precisely which of its wheels have fallen off? Insights from completely outside one’s own cosy domestic world are often enlightening.

  88. “A bloviating old fart on the English Court of Appeal once said that the question of claim scope is to be determined as a practical matter, since the skilled worker is deemed to be looking for success, and little weight is to be given to puzzles set out at the edge of the claim. I realise that this is not an entirely satisfactory response, but it does go some way to imposing a limit on covetous claims.”

    I’ve seen some great language quoted by EP associates that says the invention is construed from the vantage point of “one who is willing to understand.”

  89. Malcolm wrote:

    ‘I seem to recall that in litigation in Australia they narrow claims, rather than invalidate them. Or at least they used to.’

    Correct you are Malcolm. You can seek leave to amend, which is generally granted where the effect of the amendment is to narrow the claims. You can seek leave to amend at any time, not just in litigation. It is the same as the old English law relating to amendment. In Australia, the broadest claims in this case would be regarded as sufficiently enabled (we still cling to the ‘one-way rule’ of enablement described by Lord Hoffman in Biogen and Medeva as ‘mechanistic and impoverished’), but they would be invalid for want of fair basis (which, roughly, corresponds to support (Art. 84 EPC) or written description (of the Enzo type)).

    Max wrote:

    ‘Anybody out here from England? Remember our old enablement/sufficiency theory, that “One way is enough”(even for mech cases) before Europe cottoned on to the idea that there ought to be enablement over a scope that broadly corresponds to the scope of the asserted claim?’

    Aye, Max, and I made mention of that rule’s demise in a post a couple of days ago with reference to Amgen v TKT. However, we should not forget that the introduction of the ‘whole width of claim’ approach to enablement was not without difficulty (remember ‘Biogen insufficiency?’). Pre-1977, the principle underlying the ‘whole width of claim’ approach to enablement was supported by other doctrines, namely inutility and fair basis (which Lord Hoffman creatively imported into the law of enablement in Biogen). I suspect that at least some of the angst expressed on this board over the last few days is a manifestation of the same anxiety felt by many in the UK when this issue came to light in the 80’s. But the underlying principle is, I think, unimpeachable. To quote an old House of Lords judgment, the claim and the disclosure must equiparate.

    Gideon wrote:

    ‘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.’

    I went back and read my copy of Landis, Gideon, and I could find no support for your view therein. You also posted that, philosophically, ‘comprising claims include an infinite number of embodiments, most all of which are certainly not enabled.’ Of course, but metaphysical reflection is not the measure of enablement. The claims are to be read in light of the description. That, plus the common general knowledge, provides the basis for the skilled readers’ understanding of what it is that the patentee claims to have invented. A bloviating old fart on the English Court of Appeal once said that the question of claim scope is to be determined as a practical matter, since the skilled worker is deemed to be looking for success, and little weight is to be given to puzzles set out at the edge of the claim. I realise that this is not an entirely satisfactory response, but it does go some way to imposing a limit on covetous claims.

  90. “the applicant had not enabled a “jacketless” injection system. Because its invention could not function without the jacket, the patentee lost. Please explain how these facts are not correct”

    Strawman. I never said they were incorrect. I said your description “failed miserably.”

    It’s misleading by omission. The CAFC’s Opinion does not omit the relevant facts. On the contrary, Judge Lourie walks the reader through the relevant facts.

    I don’t see those relevant facts addressed in your poor airbag analogy. But I notice that they are present in my analogy and they are discussed by several others upthread. Why ignore them? Why pretend those facts aren’t relevant? The court went out of its way to present them to you.

    Sure, some litigators down the road will try to argue that, based on this case, “comprising claims” are per se non-enabled. You think those are good arguments? Would you advise a client accused of infringing a comprising claim to keep infringing, given the holding in this case?

    Gosh, I hope not.

  91. Malcolm,

    The Court, in its opinion and in oral argument (gotta love those mp3 downloads), stressed that the applicant had not enabled a “jacketless” injection system. Because its invention could not function without the jacket, the patentee lost. Please explain how these facts are not correct or how the airbag-electrical system analogy doesn’t work.

  92. “Patent practitioners routinely claim systems (e.g., a car) comprising one or more subcomponents (e.g., an airbag) — even though they know that the subcomponent can’t function without several other subcomponents that are not recited (e.g., an electrical system).”

    That’s right. Of course, as a summary of the facts of this case, your description fails miserably, doesn’t it?

  93. Malcolm:

    Patent practitioners routinely claim systems (e.g., a car) comprising one or more subcomponents (e.g., an airbag) — even though they know that the subcomponent can’t function without several other subcomponents that are not recited (e.g., an electrical system).

    Should applicants that have invented a new airbag have to claim the electrical system just because the new airbag would not function without them? Under this case, they would have to because they’re not entitled to an electrical-system-less airbag.

  94. zed:
    “Still waiting for someone to provide comments on the effect of this decision on broadening continuations/reissues.”

    There should be little effect, unless the parent application contains any statements which could be construed as requiring an element which is removed from the claims.

  95. I Dispute That:
    “If you agree with both of those propositions, then how to you get to the point where your patent does not need to enable the art-skilled worker to make and use, without undue experimentation, a dohicky made of parts A, B, C, and D?”

    In your example, D is not part of my invention, so it does not need to be enabled. If I have invented ABC, I must enable ABC to get any valid claims to ABC.

    If you come along and add D, so that your dohicky has ABCD, you will infringe my claims to ABC. I do not need to assert any claim to ABCD (nor could I) to succeed. You have done ABC (since your dohicky includes all of ABC), which I have claimed (and enabled). It is no defense for you to argue that I have not enabled D.

  96. ABC, easy as 123 said: “A claim reciting elements A, B and C must be supported by a specification that enables all of A, B and C. Such a claim would read on any accused system with the combination of elements A, B and C – the presence of other elements in an accused system is not relevant.”

    === Response ===

    Do you accept the idea expressed, for example, in Johns Hopkins University v. CellPro, Inc., 152 F.3d 1342 (Fed. Cir. 1998), that the patent must enable “the full breadth of the asserted claims”?

    Do you accept the idea that my dohicky made of parts A, B, C, and D is within the scope of your claim to “a dohicky comprised of A, B, and C,” i.e., that your claim entitles you to exclude from my dohicky?

    If you agree with both of those propositions, then how to you get to the point where your patent does not need to enable the art-skilled worker to make and use, without undue experimentation, a dohicky made of parts A, B, C, and D?

    I Dispute That wrote – “I was just making sure we had the same understanding of what the claim was. If you agree that a claim reads on embodiment ABCD, and that embodiment ABCD is not enabled, then why do you think the claim is valid?”

    Because then nearly every single mechanical, electrical, and software patent filed would have invalid claims. ANY claim written using the word comprising encompasses embodiments that are not enabled.

  97. Still waiting for someone to provide comments on the effect of this decision on broadening continuations/reissues.

  98. Re Hutz comments of 4:47pm

    In terms of the A,B,C analogy:
    The claim recited A + B NOT A + B but not C.
    Thus, whether or not C was in the infringing device should have been irrelevant to the claim scope.

    Note I am not talking about enablement here, merely claim scope.

  99. “He claimed a needle holder having particular elements and was silent as to whether a jacket was present or not.”

    On the contrary. He was not silent. This is why specifications and prosecution histories and even extrinsic evidence matter.

    “The fact that the alleged infringer’s device was jacketless should not have mattered as that was not part of the claim.”

    Does the claim recite a jacket? Nope. Is it enabled for a jacketless embodiment? Nope. It’s fairly straightforward.

    See my March 23 1:02 am post for an example that might help you understand the issues at play.

  100. Malcolm,

    From the case

    “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, and the district court was correct that it was not enabled.”

    This, for example, is entirely new (not counting some possible chemical/biotech cases)

    Liebel never claimed a jacketless needle holder. He claimed a needle holder having particular elements and was silent as to whether a jacket was present or not. Therefore, his claim should not be found invalid.

    The fact that the alleged infringer’s device was jacketless should not have mattered as that was not part of the claim.

  101. “However, the court could have decided for the defendant using language that does not muck up the enablement requirement.”

    So tell me: what doctrine of claim construction would they use to read that limitation back into the claim — a limitation that was TAKEN OUT of the claim by the patentee for the express purpose of sueing this infringer.

    Think carefully before you answer and consider the “far reaching implications” of your answer.

  102. “This case just makes enablement a more unpredictable are of the law then it currently is.”

    Why? What previously undisputed rule relating to enablement was smashed against the rocks by Judge Lourie?

  103. Malcolm stated – “LOL! What planet is this?”

    See, I don’t understand this myopia of yours. The facts of the case are irrelevant to this discussion. The legal conclusions set forth by Judge Lourie are. In this case, I tend to agree that the bad apple got punished. However, the court could have decided for the defendant using language that does not muck up the enablement requirement.

  104. “If you would actually read the case Malcolm”

    You mean the case where Judge Lourie bases his opinion of non-enablement on the fact that the patentee, in order to have a case for infringement, redrafted and construed his claims to cover an embodiment which was not taught but was, in fact, effectively disclaimed in the specification? That case?

    I read that case. Let’s see what you wrote about that case: “If That were the basis of Judge Lourie’s opinion, I would support it.”

    I guess you support the case then.

    So tell me about the “far reaching implications.” What are you going to tell your clients? Specifically: what are you going to tell them to do in response to this shocking development?

  105. Also, I was not planning to advise my clients any differently then I do now. This case just makes enablement a more unpredictable are of the law then it currently is.

  106. Malcolm wrote – “Yeah, right. And what are those “far reaching implications” again? What are you going to tell your clients to do exactly, in light of this legal earthquake?

    This case is no more or less significant than any other case in which a greedy patentee got his fingers chopped off by 112P”

    If you would actually read the case Malcolm you would see what those implications are and I have stated them numerous times throughout this list. I am not sure how to dumb it down any more for you.

  107. “If That were the basis of Judge Lourie’s opinion, I would support it. Instead he had to draft his decision with much more far reaching implications.”

    Yeah, right. And what are those “far reaching implications” again? What are you going to tell your clients to do exactly, in light of this legal earthquake?

    This case is no more or less significant than any other case in which a greedy patentee got his fingers chopped off by 112P1.

  108. There seems to be some conflation between what a claim recites, and what it reads on. A claim reads on an accused system if the accused system has all of the elements recited in the claim. The accused system may have other elements not recited in the claim, yet still infringe the claim.

    A claim reciting elements A, B and C must be supported by a specification that enables all of A, B and C. Such a claim would read on any accused system with the combination of elements A, B and C – the presence of other elements in an accused system is not relevant.

  109. Ralley wrote “All A+B+C? Even just the B+C part?”

    This does not make sense. Of course, AB does not infrnge BC. However, we are talking about ABC as you indicated in the quote. ABC infringes AB period, irrespective of what C is.

  110. I Dispute That wrote – “I was just making sure we had the same understanding of what the claim was. If you agree that a claim reads on embodiment ABCD, and that embodiment ABCD is not enabled, then why do you think the claim is valid?”

    Because then nearly every single mechanical, electrical, and software patent filed would have invalid claims. ANY claim written using the word comprising encompasses embodiments that are not enabled.

    A claim to ABC reads on ABCD, ABCE, ABCXYZ, etc.

  111. Ralley wrote (to someone else) ” 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).”

    This is mostly wrong. ALL A+B+C infringe A+B. This is fundamental to patent law. A+B+C is patentable over A+B and if the owner of A+B wanted to practice A+B+C they would need to take a license from the owner of A+B+C But, the owner of A+B+C cannot use their invention at all without taking a license to the owner of A+B.

  112. Malcolm wrote “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.”

    If That were the basis of Judge Lourie’s opinion, I would support it. Instead he had to draft his decision with much more far reaching implications.

    It is irrelevant who was a good guy and who was bad. Let’s assume every negative assumption that can be inferred regarding Liebel is true. The decision as written in still bad.

  113. “As I’ve said like 8 times now, I still dislike the opinion for the complete invalidation opposed to narrowing.”

    I seem to recall that in litigation in Australia they narrow claims, rather than invalidate them. Or at least they used to.

  114. “where the two larger circles have portions that do not overlap each other.”

    No, as I said, the two larger circles do not overlap *at all* or else they infringe each other. AB and BC do not infringe each other.

    So, draw two circles side-by-side with a small space between them. These are AB and BC. Draw a smaller circle overlapping both AB and BC. This is ABC. ABC overlaps and infringes both AB and BC, and AB and BC do not overlap.

    In your spec for a patent to AB, you have to enable the overlapping portion of ABC and AB, NOT ALL OF ABC. So while ABC will have some scope not enabled by your spec, that won’t invalidate your open-ended claim AB.

    As I’ve said like 8 times now, I still dislike the opinion for the complete invalidation opposed to narrowing.

  115. Someone said: 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).

    Someone did not do well in set theory.

    Make a small circle. Encompass it with two larger circles, where the two larger circles have portions that do not overlap each other. The small circle represents the combination ABC. The larger two represent a claim to AB and a claim to BC. This shows how the scope of ABC falls entirely within AB, and entirely within BC.

  116. Max, there’s nothing more annoying than a European acting high fallutin’.

    Please get off your horse.

    I think the U.S. patent system is a mess, but if you think the costly train wreck known as the EPO is siginficantly better, then you have more pride than wisdom.

    As for being the model for the JPO?

    There is no Japanese Patent Office. It’s a ruse.

  117. Dear Step Back, I grant your request. I promise to be patient with you (even though it is clear from your post that you have not the faintest clue how the EPC, learning from US experience, balances inventor rights with competitor freedoms. I imagine you believe in the merits of competition. When ROW chooses what patent law to install, it installs the EPO system. Look up and look around the world. Maybe that’s because the EPO system is a recent harmonisation between German patent law (the model for Japan and China) and English law (the model for US patent law). Or maybe it’s because Europe has more “soft power” around the world than USA?? By all means cling to your best mode and all the other special bits of US law. My view is that compromise between USA and ROW will likely damage the integrity of both patent systems. Much better that you (in your “stinkhole” didn’t you call it?) crack on with your system, and ROW cracks on with its.

  118. Brian says: “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 was just making sure we had the same understanding of what the claim was. If you agree that a claim reads on embodiment ABCD, and that embodiment ABCD is not enabled, then why do you think the claim is valid?

    Still nobody has answered my question: If you have a claim that reads on embodiment ABCD and embodiment ABCD is in the prior art, then isn’t the entire claim invalid for anticipation? If so, what makes you think that the law invalidates an entire claim if it covers one non-novel embodiment but that the law does not invalidate an entire claim if it covers one non-enabled embodiment?

    And how do you account for this quotation from Chisum: “[I]f an inventor claims a group encompassing A, B, and C, and the specification adequately teaches how to make and use B and C but not A, the claim will be rejected.” Chisum on Patents sec. 7.03[7][a].

    In other words, if the claim by assumption encompasses XYZA, XYZB, and XYZC, and if XYZA is not enabled, then the claim is invalid. Johns Hopkins University v. CellPro, Inc., 152 F.3d 1342 (Fed. Cir. 1998) (the patent must enable “the full breadth of the asserted claims”).

  119. Gideon says:
    “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.”

    The UK is far from a closed shop. The regulations on who may practice before the UK Patent Office are more liberalised than the USPTO. The EPO permits employees of European-based businesses to represent their employer without being qualified.

    However, businesses appreciate the value in having someone who has qualified through a rigorous examination and training system to represent them in handling what might be exceedingly valuable rights.

  120. Dear Max,
    Congratulations.
    Yes, you are superior to and smarter than all us clueless Yanks.

    In this stinkhole on the other side of the Great Pond we have something called a Constitution. The Preamble of that worthless document mentions something about promoting “the general welfare”. It talks about securing certain benefits not only for ourselves, but also for our posterity.

    In light of that, our most ignorant legislators created a patent system that:

    1) Forces inventors to disclose their best modes;
    2) Limits the inventor’s scope of exclusivity to no more than that which he empowers (enables) others to make and use; and
    3) Limits the inventor’s scope of exclusivity to no more than that which he himself was in appreciative possesion of (this last one being known as the “written description” requirement).

    Some of us Yanks are aware of that other patent system (as such) that exists in the innovative center of the Universe (a.k.a. the EU) and how all the American inventors are flocking to that spot because that’s where they receive the most protection. Nonetheless, we clueless Yanks have a certain fondness for our way of doing things. Please be patient with us.

  121. Anybody out here from England? Can you believe the facility of some US patent lawyers to make simple things complicated, and to be unable to see the wood from the trees? Remember our old enablement/sufficiency theory, that “One way is enough”(even for mech cases) before Europe cottoned on to the idea that there ought to be enablement over a scope that broadly corresponds to the scope of the asserted claim? Note that the Liebel patent owner had perfectly good and valid dependent claims, but didn’t assert them cos they were too narrow. This was a case where the ONLY claim wide enough to catch the Defendant was the main claim and all dependent claims wide of the mark. Such situations signify a risky case to litigate, no?

    One correspondent castigates Europe for having too many languages. I would respond by casigating US patent law for having too much Doctrine of Equivalents. What a money-spinner and hours-generator for US patent lawyers. As a patent owner, ask if it is worth asserting the patent, and get an opinion that the claim can be asserted successfully. As a compeitor, ask if the other fellow’s patent contains a valid infringed claim. “Could be” comes the answer. This is the famous “transaction cost multipier” legal uncertainty on which lawyers feed, and of which industry vociferously complains, and this thread cotains any amount of evidence, how big a multipier that is.

    To those who accuse me of writing what I want the law to be, rather than what it is, Yes, I do. I hope to influence US opinion now re-writing US patent law, to the benefit of my clients, who are mostly of US nationality.

    And now I will sign off, and do some work. Don’t be discouraged Malcolm. I for one enjoy your stuff

  122. “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.”

    Look man, I’ll turn in my reg number if this is true.

    Let’s get away from letters, for a sec.

    Claim – A doohicky comprising element A and element B.

    Sample – A doohicky having element A, element B, and element C.

    This is claims 101. The sample is within the scope of the claim, and infringes.

    There is no other way to look at this.

    Sure, a doohicky with elements B and C, but not A, is not within the scope of the claim.

    So what? That’s not what your hypo was.

    If the claim is to “THING comprising A and B”,

    Then “THING having A, B, and C” ALWAYS is within the claim scope.

    Seriously, how can you possibly stand by the nonsensical conclusion that . . .

    “some infringing embodiments are not within the claim scope”

    Huh???

  123. “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.”

    Look man, I’ll turn in my reg number if this is true.

    Let’s get away from letters, for a sec.

    Claim – A doohicky comprising element A and element B.

    Sample – A doohicky having element A, element B, and element C.

    This is claims 101. The sample is within the scope of the claim, and infringes.

    There is no other way to look at this.

    Sure, a doohicky with elements B and C, but not A, is not within the scope of the claim.

    So what? That’s not what your hypo was.

    If the claim is to “THING comprising A and B”,

    Then “THING having A, B, and C” ALWAYS is within the claim scope.

    Seriously, how can you possibly stand by the nonsensical conclusion that . . .

    “some infringing embodiments are not within the claim scope”

    Huh???

  124. From the decision:

    “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, and the district court was correct that it was not enabled.”

    Question:

    If Medrad had an issued claim to a pressure jacket-less prior art-type injector, but the specification of Medrad’s patent didn’t enable a pressure jacket-less Liebel-type injector, would Liebel be able to produce a pressure jacket-less Liebel-type injector without infringing?

  125. The word is “umbrage” and I think you mean “to the defendant” not “to the plaintiff”

  126. “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?

  127. “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 …

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

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

  129. “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.”

  130. 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.

  131. “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.

  132. 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.

  133. 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.

  134. 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.

  135. 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.”

  136. “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?

  137. 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.

  138. 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.

  139. 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.

  140. “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.

  141. 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?

  142. “(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.

  143. 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.

  144. 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?

  145. 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.

  146. 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.

  147. 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 …

  148. 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.

  149. 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.

  150. “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.

  151. 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.

  152. 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.

  153. 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.

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

  155. 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.

  156. 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.

  157. 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?

  158. 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

  159. 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?

  160. 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.]

  161. 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.

  162. 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.

  163. 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.

  164. “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.

  165. 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.

  166. 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.

  167. 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.

  168. 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?

  169. 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.

  170. 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?

  171. 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…)

  172. 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.

  173. 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.

  174. 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.”

  175. 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.

  176. 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?

  177. 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.

  178. 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?

  179. 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.

  180. 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.

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

    I blame Dennis and the sexy title for this thread.

  182. 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.

  183. “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.

  184. 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

  185. “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.

  186. 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.

  187. “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.

  188. 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.

  189. 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.

  190. “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.

  191. “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.

  192. 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.

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

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

  194. 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?)

  195. “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?

  196. “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.

  197. 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.

  198. 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?

  199. “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.

  200. 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.

  201. 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.

  202. 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.

  203. 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?

  204. 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.

  205. “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.

  206. “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!!!!!!

  207. 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.

  208. 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.

  209. “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.

  210. 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.

  211. 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.

  212. 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?

  213. 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.

  214. 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).

  215. 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.

  216. 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.

  217. 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?

  218. 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.)

  219. “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.

  220. “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.

  221. “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..

  222. 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.

  223. 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.

  224. 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).

  225. 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.

  226. “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.

  227. 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?

  228. ““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.

  229. 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.

  230. 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!

  231. “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)

  232. “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.

  233. 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.

  234. 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.

  235. 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.

  236. 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.

  237. ” 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.

  238. 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.

  239. “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.

  240. 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?

  241. “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.

  242. “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.

  243. 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?

  244. 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.

  245. “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.

  246. 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.

  247. 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.

  248. 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.

  249. “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.”

  250. 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.”

  251. “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.

  252. “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.

  253. “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.

  254. “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.

  255. “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.

  256. 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.

  257. “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.

  258. “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.

  259. 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?

  260. 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.

  261. 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.

  262. 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.

  263. “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.

  264. 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.

  265. “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.”

  266. 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.

  267. 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?

  268. 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.

  269. 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.

  270. 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)

  271. “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?

  272. “”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.

  273. “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.

  274. “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?

  275. 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”.

  276. “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.

  277. “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.

  278. “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.”

  279. “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).

  280. 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?

  281. “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.

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

  283. 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.

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