McRO Returns to Federal Circuit: Valid but Not Infringed

by Dennis Crouch

McRO, Inc. (Planet Blue) v. Bandai Namco Games (Fed. Cir. 2020)

This case has returned to the Federal Circuit. In 2016, the court issued an important legibility decision in the case — finding the algorithm for syncing anime lip-movements with various sounds to be patent eligible. McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) (McRO I). Less than four years later, McRO I has been cited by over 2000 PTAB decisions as well as 200+ court decisions. The only more-cited patent cases from 2016 are Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016); and Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).

On remand, the accused infringers again successfully moved for dismissal — this time on summary judgment of invalidity (enablement) and non-infringement. On appeal, the Federal Circuit has vacated the invalidity holding, but upheld the non-infringement determination.

Non-Enablement and Point of Novelty: Aspects of the invention that are known in the art need not be fully described.  Rather, the law relies upon the artisanal  knowledge to fill the gaps. A “patent need not teach, and preferably omits, what is well known in the art.” AK Steele (Fed. Cir. 2003). However, novel aspects of the invention must be enabled – and must reasonably teach how to make and use that aspect of the invention.

Non-Enablement by Example: Enablement requires that the patentee “teach the public how ‘to practice the full scope of the claimed invention.'” without undue experimentation. Slip Op. quoting AK Steele.  In a number of cases, the courts have invalidated patents on enablement grounds after identifying infringing products/processes that are not enabled. On appeal here, the Federal Circuit offered a limiting principle to that approach — it must be tied to a particular and actual product/process, not simply “an abstract assertion of breadth.”

In the case, the accused infringers identified two particular techniques that were not enabled (“bones” and BALDI).  However, a narrow claim construction meant that neither of those were actually covered by the claims.  And, only the claimed invention need be enabled.

No other concretely identified animation techniques have been advanced to support the district court’s and Developers’ enablement analyses.

Slip Op. Without any other particular example of infringing but non-enabled activity, the court held that theory of enablement failed.  The district court noted the breadth of the claims and narrowness of the specification.  On appeal, the Federal Circuit found that conclusion suggestive of an enablement problem, but insufficient:

[T]hese observations merely state the conclusion that the claims are too broad and the specification’s discussion is too narrow. The observations do not justify the conclusion with any concrete support. To say that the “first set of rules” limitation is broader than “if . . . then . . . else” statements based on keyframes is not to say what else is or may be within the phrase—and it was the burden of the Developers, not McRO, to prove that such specific content exists and that it is not enabled.

The appellate panel does not delve into this, but remember that enablement is a question of law, not a question of fact.  The result then is that the defendant has the burden of persuading the judge on enablement, not proving its case.  Lack of enablement can be supported by various factual conclusions, and those must be proven with clear and convincing evidence.

Non-Infringement: McRO’s non-infringement argument hinged upon claim construction of the claim term “morph weight set.” The morph weights identify how much and in what direction various morph targets (such as lip portions) move.  The district court interpreted the term to require these be in 3-D geometric vector form. The result of that claim construction was no-infringement because the accused infringers “do not represent the displacements of each vertex in terms of a simple xyz displacement vector.”

On appeal, the Federal Circuit affirmed the claim construction — holding that “the specification compels the three-dimensional geometric construction of ‘vector’ adopted by the district court.”  McRO had argued that vector should be given a broader definition to include how it is used in computer science — as a sequential list of numbers.

Three notes

  • I don’t know why the Federal Circuit allowed the focus of this whole argument to be on the term ‘vector.’ Here, the argument was on how to define the term used to define the actual claim terms. Rather, the focus should have zeroed in on the claim term itself (“morph weight set”) and decide what that claim term required.
  • In a bit of an oddity, Federal Circuit’s opinion actually uses vector in the computer science form — noting that the accused process “stores information, whether as a 4×4 matrix or as an equivalent 16-term vector.”
  • Without knowing more, the difference being argued about here appears to be resolvable with a mere mathematical transform that could be seen as the equivalent.  No doctrine of equivalents argument was presented on appeal.

U.S. Patent No. 6,611,278 (“Method for automatically animating lip synchronization and facial expression of animated characters”).

57 thoughts on “McRO Returns to Federal Circuit: Valid but Not Infringed

  1. 6

    Our patent law is broken and needs to be fixed. No one has any idea what McRO invented and owns exclusive rights to. This is total chaos. What are inventors required to do? From the latest of an indefinite number of remands (each costing several million dollars in legal fees) –

    According to McRO, the phrase “a vector from each vertex n on the reference” implies that each vertex on the reference can have multiple corresponding vectors because “it is a well settled rule that the article ‘a’ means one or more and not ‘a single.'”…The patent would have used the phrase “a single vector,” McRO argues, if it had meant to require one-to-one correspondence. But McRO misreads KCJ Corp., which explains that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’”

    This specific canon of claim construction has no bearing here. And as discussed, the word “a” is hardly the only relevant textual evidence of meaning.

    McRO’s second argument, which relies on the paragraph in the specification that precedes the key definitional sentence, gives too much weight to an ambiguous phrase that does not clearly refer to the relevant term. After discussing the topological correspondence between the neutral model and each morph target, the passage states that “such rigid correspondence may not be necessary.”

  2. 5

    You know this enablement argument that is being pushed by the anti-patent judicial activists is pretty important to understand. A lot of the Alice jurisprudence is built on the false assertion that anything that can be written in a claim for information processing can be done and is thus per se obvious. This was Stevens point in writing that all you do is write what you want and give it to a clerk to write a computer program.

    Many examples through the years have been provided that illustrate this is simply wrong. A program to identify a bird was almost impossible to write 10 years ago, but now thanks to deep learning in AI we can write programs that can identify birds. And there are many thousands of examples such as this.

    The fact is that when a set of claims is written in information processing whether they are enabled or not is a big deal and is something that people like me that are experts in the field can tell fairly quickly.

    The judicial activists anti-patent crowd is trying to confuse later arising technologies that fall within a claim scope with enablement. A claim scope should be the same as what is enabled. There is a problem that a new technology may arise that falls within the claim scope but was not enabled by the specification. This seems unfair and seems to be a disincentive. But there is case law to address these issues, which basically says that if there is no other way to claim the new invention and the old claims are too broad, then they are invalid. But this is only done within the context of the new invention. And it is actually a fairly rare thing to happen.

    Anyway, what is happening is there are subtle points that require understanding patent law and technology, so naturally the anti-patent judicial activists try to exploit this to try make false claims about claim scope.

    1. 5.1

      And the key to understanding this is that in EE/CS there are always tens of thousands of ways to solve the same problem.

      If someone said we need a device that performs function X, then we could do that in firmware, software, or a dedicated processor. We could use 1000 different software compliers to write software. We would write the software using tens of different algorithms and software structures. We might do the software crafted for the specific purpose which would be more work but would be smaller and more efficient.

      But—guess what—we know what is enabled and what is not enabled.

  3. 4

    Where is this case?

    1. 4.1

      I am going to have to read this. It looks like another anti-patent judicial activism one.

    2. 4.2

      The better question is “where did the comments go on the “Guest Post: Spurring and Clearing the Path for Open COVID Innovation Through Contextual Patent Disclosure” thread?

      An editorial choice to silence the backlash against academics basically H1JACK1NG the innovation protection mechanism of patents with a heavy dose of NON-patent thinking (but insisting on using an Orwellian approach of redefined words) is even more troubling than the article itself.

      Choosing a narrative is one thing.
      FORCING silence to those that would oppose that narrative is quite another.

      1. 4.2.1

        It is and particularly given the “academic source”, which is almost certainly paid for by Google. So paid advocates for large corporations getting free shots and being treated like academics.

        What. A. Joke.

        1. 4.2.1.1

          What about how Dennis somehow forgot how hide part of that rather lengthy post below the fold? Nope, gotta scroll past the whole thing every time. Boo.

          1. 4.2.1.1.1

            ?

            Do you have a clue Ben?

            Serious question.

            1. 4.2.1.1.1.1

              He is obviously a paid blogger anon.

              1. 4.2.1.1.1.1.1

                I don’t really understand this response. I am actually annoyed about Crouch’s special treatment of that post, including putting the whole thing on the front page.

                Reviewing my post, I suppose “Boo” could seem sarcastic. It’s not, I meant it as indicator of mild complaint. We don’t all jump to calling people child abusers, you know.

            2. 4.2.1.1.1.2

              anon, Ben is just like MM in that he is on here to push the party line. The anti-patent groups have position statements and all he does is push it out. And then he just responds to our posts to try and confuse people that don’t understand patent law.

              He is a paid blogger. I’d even bet that Ben is MM.

              1. 4.2.1.1.1.2.1

                Ben is not Malcolm.

                A Malcolm follower?

                Definitely.

            3. 4.2.1.1.1.3

              anon, you need to get in touch with the points the anti-patent groups put out. There are some of the sites, which I don’t even remember anymore, that put out their points. They pay people to follow these things and put out position statements. All Ben is doing is pushing those out just like MM did.

              1. 4.2.1.1.1.3.1

                I need to…?

                You do realize that you are taking to the number one person that consistently diffused the propaganda of Malcolm, right?

                1. I do. But you need to learn to recognize that people like Ben are just presenting canned arguments made for them by propaganda organizations that are paid for by SV.

                  They aren’t doing the work themselves.

                2. Meh.

                  Ben’s views are clearly shaped by his being an examiner and the belief that “patents are bad.”

                  MUCH of what he writes still reflects the propaganda that Malcolm spouted.

                  Which is one reason why I always made it a point that SILENCE to those spouting propaganda was NOT a good thing — silence only breeds MORE of that “well, I saw it on Patently-O and no one disagreed so it must be true” type of cognitive bias of confirmation bias.

                  Being “nice” is of NO help — as witness how those who stop engaging ‘because the other side is mean’ are even worse when it comes to confirmation bias.

                  In fact, if this were my blog, I would have it that you would NOT BE ALLOWED to say something more than once when that something has been challenged (without replying to the merits of the challenge).

                  Certain (anti-patent) narratives would disappear REALLY fast.

      2. 4.2.2

        All animals are equal, but some are more equal than others.

  4. 3

    The district court noted the breadth of the claims and narrowness of the specification. On appeal, the Federal Circuit found that conclusion suggestive of an enablement problem, but insufficient:

    [T]hese observations merely state the conclusion that the claims are too broad and the specification’s discussion is too narrow. The observations do not justify the conclusion with any concrete support. To say that the “first set of rules” limitation is broader than “if . . . then . . . else” statements based on keyframes is not to say what else is or may be within the phrase—and it was the burden of the Developers, not McRO, to prove that such specific content exists and that it is not enabled.

    I agree that this is what the Federal Circuit thinks – they are being accurate for their own caselaw. But this logic is the exact opposite of the overbreadth concern the Supreme Court keeps restating, most notably in Morse. In Morse it was sufficient to recognize the distinction the FC agrees exists – the distinction in scope between the spec and the claims – to carry the defendant’s burden. It is the *threat* of overbreadth that creates the issue. In other words, the notion that one must identify a concrete unenabled example outside of the scope is legal error. The correct standard is that the defendant need only show the scope differential, and that shifts the burden to the patentee to prove that the scope differential is a null set. The whole point is to prevent the chilling effect of using intentionally vague language to describe the invention.

    This case has the perfect language for a cross appeal.

    1. 3.1

      it was sufficient to recognize… to carry the defendant’s burden.

      Really? Is that what you think?

      Why exactly? Because you feel like it?

      1. 3.1.1

        Why exactly? Because you feel like it?

        Because the FC’s standard requires extrinsic evidence and yet the Supreme Court used to invalidate claims based solely on intrinsic evidence, which shows that the FC standard is incorrect. Because the supreme court identified that the law was concerned about overbroad claim scopes chilling the progress of the art and the FC has a standard that requires someone to point to a concrete, identifiable embodiment that falls outside of the scope and therefore literally requires someone to brave the chill in order to defend the public.

        For example: I invent the bow. I put forward a specification that describes the bow. But I claim a machine that fires projectiles. The federal circuit would have you believe that the the burden is on the defendant/public to invent the gun and then point to the gun as proof that the bow fails to fill the full scope of the claim. But that puts the cart before the horse – the existence of the overbroad bow claim chills research into the very gun that would prove its overbreadth.

        Moreover, as a practical matter, the system counts on the patent office to do an examination (after all, that’s why patentees get the clear and convincing benefit post-issuance) but the office lacks the resources to even attempt to counter-invent claimed embodiments outside of the specification examples – we could never invent the gun – and therefore could never test enablement on their own. We would have to hope that in the interim between the filing and the examination, some third party filed another embodiment falling within the claim scope but outside of the spec disclosure.

        It makes little sense to have a test where an examiner might properly/correctly allow a claim following a good search if they examine it a day after it is filed, but might properly/correctly reject the very same claim on the exact same search if they wait a year to examine it because third parties filed postdated references in the interim. That should especially concern you since the office does take about a year to examine something, and the amount of variance in both time-to-first-action and time-until-completed-examining is high both from examiner to examiner and across tech fields. In other words, if the office actually implemented this case, it would lead to massive unfairness in 112(a) examination. Does complete unfairness due to no fault of the applicant with no mechanism to overcome it count as a valid concern for you or just a bad “feeling” for me?

        The test the supreme court laid down is that the fact that the gun *could be invented* was the thing which rendered the claim overbroad. In other words, the uncertainty/speculation that exists at the time of the application filing (could there be unequivalent machines from those described in the specification that achieve the claimed function of firing projectiles that are not equivalent to the bow?) cuts against the applicant/patentee, not the public – the applicant has to provide some sort of reason that the bow fills the scope of the claim. Because it is generally difficult to prove a negative, it is generally difficult to claim a function absent the structural limitations that *this inventor* conceives of achieving the functionality.

        Again, when Morse invented the telegraph, the Supreme Court didn’t wait around until someone came up with a fax machine to invalidate his claim. Instead they reasoned (correctly and unsurprisingly) that the onward march of science would eventually produce a machine better than the telegraph, so the idea that Morse had enabled the full scope of his claim was just speculation. It’s kind of hard to argue with that logic. Unless you have the hubris to say that your patent application will be the last word in the field, or have access to some kind of deductive reasoning anchor in an inductive world, the fact is that a true claim embodiment that lies outside of your specification teaching will always exist, it just may not have been discovered yet, so it’s irrelevant whether one is cited by a defendant or not. And, as with the examination example, it is potentially unjust: A scope may be enabled as to a first defendant and unenabled to a second defendant only because the time between the first and second suits produced a post-effective-filing-date embodiment – that’s no way to be just on a test that is anchored in an at-the-time-of-filing timeframe. The only question is an intrinsic one: Are the claims reasonably representative of the embodiments disclosed vis-a-vis the skill in the art at the time of filing or not?

        1. 3.1.1.1

          >>(after all, that’s why patentees get the clear and convincing benefit post-issuance)

          Greg had a post awhile ago that made a compelling (if not totally convincin, I think?) case against this being true.

          But if it wasn’t the original idea, it should be adopted now.

          1. 3.1.1.1.1

            Ben,

            What are you talking about?

            There has never been compelling case for being against clear and convincing.

            If anything, Greg has posted against a pure registration system – the ONLY reason why dropping the presence AND level might remotely be worth considering.

            Perhaps you are remembering Greg’s confusion as to the fact that there IS both a presence and a certain level of that presence.

            He was ripped to shreds though — by multiple people and for multiple reasons (myself included, as well as Ron Katznelson who provided a hard numbers analysis).

          2. 3.1.1.1.2

            Greg had a post awhile ago that made a compelling (if not totally convincin, I think?) case against this being true.

            To be fair, I am not sure how much credit I should get here, given that my posts merely rehash Katznelson’s argument (see, below). Bottom line: the SCOTUS has been applying the c-&-c standard for invalidation for as long as they have been adjudicating patent disputes—including during those periods in our history when we had a mere registration system.

            A common misapprehension has taken hold among many otherwise lucid and learned individuals that c-&-c is applied to invalidity contests because of examination, but this is not so. The case law is quite clear that c-&-c would apply even if we were to shift to a registration system.

            link to works.bepress.com

  5. 2

    >>the Federal Circuit offered a limiting principle to that approach — it must be tied to a particular and actual product/process, not simply “an abstract assertion of breadth.”

    Cool. As the PTO cannot plausibly evaluate enablement under this standard, perhaps the law should be modified so that enablement is excluded from the presumption of validity?

    1. 2.1

      So quick to denigrate the patent right, here you jump at the wrong context of that standard (one in which an infringer is saying that MY item does not infringe because)

      The answer to Examiners doing a CRPPY job is NOT to remove the presumption of validity.

      IF you want to go down that path, I recommend that you ENTIRELY remove examination and just go with a registration system (and drop the presumption of validity).

      You do know that innovators foot the bill of the patent office at a rate of more than 3 BILLION dollars a year. One can easily set up a much more functionable registration system and run it for a very small fraction of that amount.

      1. 2.1.1

        If anyone else subscribes to anon’s argument I’d be happy to hear further explanation.

        Despite how Dennis characterization this case as limiting one approach to showing non-enablement, the decision doesn’t immediately appear to suggest that to me.

        “In short, none of the cases invoked by the district court
        and by the Developers have involved an abstract assertion
        of breadth, without concrete identification of matter that is
        not enabled but is or may be within the claim scope.”

        “it was the burden of the
        Developers, not McRO, to prove that such specific content
        exists and that it is not enabled.”

        Sounds like you need an example of the unenabled material… which the office will never have.

        1. 2.1.1.1

          Sounds like you need an example of the unenabled material… which the office will never have.

          Hm, I disagree slightly. First, the court here was careful to say that the defendant’s arguments here did not satisfy the clear-&-convincing evidence requirement. The PTO has no such c-&-c requirement, so this case is not super-applicable to your line of work.

          Second, I think that you are selling yourself short here. I can think of many occasions where an examiner has identified a particular embodiment within my claim scope that was more-likely-than-not unenabled. If one examiner can do it, so can another.

          1. 2.1.1.1.1

            >>the court here was careful to say that the defendant’s arguments here did not satisfy the clear-&-convincing evidence requirement. The PTO has no such c-&-c requirement

            Fair point!

            >>I can think of many occasions where an examiner has identified a particular embodiment within my claim scope that was more-likely-than-not unenabled

            I doubt this would be applicable to all technologies. At the level of abstraction I’m already seeing claims, any made up example of unenabled material will not come off as “concrete”.

            1. 2.1.1.1.1.1

              I have no idea what you are talking about Ben.

              I am a person skilled in the art of computer science. I can evaluate enablement fairly easily for many areas and could for any area with a little time. The same goes for electrical engineering.

              You are just pushing the anti-patent position of trying to remove responsibility from the PTO and lay it on the lap of the inventor as it makes patents weaker and removes the presumption of validity.

              1. 2.1.1.1.1.1.1

                Obviously bleating your opinion on enablement is quite easy. I should have said “provide a prima facie case” rather than “evaluate”. If providing concrete examples was required (and I think Greg is right that it would not be), it would be difficult for computer-arts examiners to provide [b]concrete[/b] examples of unenabled species.

                1. Really Ben? No. In fact the opposite is true in CS/EE.

                  Those of us skilled in the art can evaluate inventions very quickly for enablement. I don’t know anyone —and I work with people with Ph.D.’s from MIT and Stanford all the time–that would agree with your nonsense. In fact, what we spend years learning is what is possible and what is not possible.

                  And your claims are obviously anti-patent propaganda.

                  Again, you have attitude with no substance. And you are just pushing the party line that is paid for by SV.

                2. And, in fact, finding a species that is not enabled would be easy. And is easy.

                  In fact, those of skilled in the art of CS/EE have spent many years working on these problems.

                  You are better than MM at putting out the propaganda, but I can tell you are a paid blogger. Your opinions match the party line that of the non-profits trying to burn down the patent system.

                3. You are better than MM at putting out the propaganda, but

                  I would beg to differ.

                  He may be more polite than Malcolm was, but in no way does this make the ‘putting out the propaganda’ better.

                  That ‘putting our the propaganda’ still bl0ws because merely ‘putting it out’ is NOT ENOUGH.

                  Engaging, defending, incorporating counter points made — each of these are necessary for ANY sense of being ‘better.’

                  Anyone can do the ‘drive-by monologue’ routine.

                  And quite literally, those that do have NO sense of being ‘better’ in ‘putting out the propaganda.’

                4. anon

                  I recently had a hope that MM was literally gone… I gather other aliases from the same individual are in play.. can you remind me which identities MM is running now?

                5. Anon2,

                  After posting for a number of years, it has become pretty easy to tell when someone is posting under multiple pseudonyms.

                  Malcolm was no exception.

                  However, Malcolm’s (rampant) use of pseudonyms was pretty much constrained to his posts on PatentDocs.

                  On this blog, he pretty much stuck to the monicker of “MM” (shortened of course from his original monicker of Malcolm Mooney).

                  Alas, given that his last post of any ‘substance’ (and one MUST use that word in quotes, for obvious reasons), was more than two months ago, I would posit that Malcolm has indeed left this mortal coil and we will not see him again.

                  That’s NOT to say that followers of Malcolm (or those that would fancy ploying the same inane rhetorical tactics) are gone. These wanna-he’s certainly are still around.

                6. And, in fact, finding a species that is not enabled would be easy. And is easy.

                  This is the same guy that constantly says that abstract idea rejections should not be made because the only test should be scope of enablement and all of the abstract claims meet the scope of enablement test hahaha. When we see a 101 case, the exact opposite argument is made – not only is it not easy to find an unenabled species, no unenabled species exist!

                7. >>And, in fact, finding a species that is not enabled would be easy. And is easy.

                  It’s an easy claim to make. To be clear, I am talking about actual concrete examples in the current art, and not just tacking on a non-concrete statement like “wherein the algorithm used is an algorithm with O(n^(1/1000)) complexity”. I’d be extremely interested in an example case if you could provide one, but I don’t think it’s reasonable to ask for one*.

                  *Seriously, I know we’ve feueded about this issue of asking for information in the past, but I recognize that a request here would be a major inconvenience, and the above is said with no insincerity.

                8. A great deal of work for what? A species for the current case that is not enabled?

                  The things you are saying just don’t make sense for CS/EE.

                  You sound like a bio/chem person to me where enablement may be a lot more of an issue.

                9. Ben what are you talking about?

                  Are you claiming that it is hard to find a non-enabled species within that is covered by any claim?

                10. I do not think it’s difficult to make up an unenabled species.

                  I think it is difficult to find evidence OF a unenabled species.

                  I really don’t know how to make this more clear.

            2. 2.1.1.1.1.2

              At the level of abstraction I’m already seeing claims,

              I have to wonder what exactly it is that you think that this means.

              Are you applying Random’s two-rung ladder, or something else?

              1. 2.1.1.1.1.2.1

                anon, Ben is so FULL of shite. The “level of abstract”.

                So, Ben, you can’t work up and down the ladder of abstraction? You can’t identify a species? You are either incompetent or lying and I think we all know that it is the ladder.

                Man, what pernicious lies Ben spouts. And, anon, take note. The enablement argument goes to the heart of the anti-patent movement. It goes to Stevens comments about you write down on a piece of paper what you want and a boy goes and does it for you. It goes to the heart of MM’s spouting too.

              2. 2.1.1.1.1.2.2

                “level of abstraction”??

                So Ben is unable to walk the ladder of abstraction? In fact, the breadth of the claim is something that a person skilled in the art can easily assess.

      2. 2.1.2

        anon, it is just the same old game of trying to remove the presumption of validity and shift the burden of examination on the applicant. Just like they try to remove the expert nature of the prior art search.

        Just same old, same old, from Ben. He/she just pushes the anti-patent rhetoric, although I admit he is much better at than MM was. Who knows maybe he is a new incarnation of MM.

        1. 2.1.2.1

          +1

    2. 2.2

      As the PTO cannot plausibly evaluate enablement under this standard, perhaps the law should be modified so that enablement is excluded from the presumption of validity?

      Well it could, it just couldn’t evaluate it very well. You just broaden your search to postdating art, and you find a reference that discloses an embodiment that post-dates the filing and is not enabled by the spec-at-issue.

      I do agree with your larger point that it is a bad enablement standard.

      1. 2.2.1

        How the F are you an examiner?

        Serious question.

      2. 2.2.2

        Another good point! Thank you guys for completely crushing my earlier opinion.

  6. 1

    I am not certain that this statement is accurate:

    The result then is that the defendant has the burden of persuading the judge on enablement, not proving its case.

    Proving the case is STILL required – very much in evidence on this particular point in this particular decision.

    Maybe you were going for a comment that only factual matters require proof to a clear and convincing level (and even that would need more explanation)…

    1. 1.1

      I assume Dennis meant you only need to convince the judge of lack of enablement, not convince a jury in a trial of that.

      But it’s not that significant statistically since judges in patent cases rarely find lack of enablement, or get such a finding sustained on appeal if they did, for other than “means for” claim elements with no spec support at all.

      1. 1.1.1

        meh – the “not proving its case” is nonsense.

        I have a feeling that feelings snuck in.

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