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."
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.
“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.
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.
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.
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.
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…
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?
“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.
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.
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.
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.
****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.
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.” ”
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.
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.
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.
“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.
“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.
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.
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?
“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.
“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.
“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.
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.
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?
“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?
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.
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.
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).
“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.
“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.
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?
“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.
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.
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?)
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.
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.
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.
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?
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.
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.
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.
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.
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).
“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.
“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.
“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.
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.
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.
“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.
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 …
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.
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?
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.
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.
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.
“If you’re correct, hundreds of thousands of claims are invalid”
I didn’t feel a disturbance in The Force.
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.
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.
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.”
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.
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.
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.
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.’
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.
“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.
“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.
“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.
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?
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.
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).
“See, what you wrote is flat out wrong.”
Huh. Have you told Medrad the bad news?
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.
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.
“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
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.
“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.
“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.
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.
“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.
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.