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."