The New Law of Enablement

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

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

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

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

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

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

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

...

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

...

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

Invalidity affirmed.

Notes:

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

Comments

[ralley]

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

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

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

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

[zed]

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

[Malcom Mooney]

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

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

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

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

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

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

[Rick]

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

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

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

[ralley]

"the competitor's formulation surely literally infringes the claim"

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

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

[Malcom Mooney]

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

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

[Malcom Mooney]

"Actually, if you took my suggestion of limiting the claim to only what is enabled,"

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

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

[ralley]

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

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

[Rick]

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

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

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

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

[Malcom Mooney]

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

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

[tiredofMooney]

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

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

[ralley]

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

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

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

[Malcom Mooney]

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

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

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

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

[Rick]

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

Wow! that's a huge statement!

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

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

Any case law to support that?

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

[Malcom Mooney]

tiredofMooney wrote

"hat's not this case. Here the spec clearly enabled the claim scope of jacketted devices."

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

[ralley]

Rick,

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

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

[Rick]

Mr. Mooney:

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

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

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

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

[Rick]

Ralley:

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

[ralley]

"Having considered the normative value of your ideas, I nonetheless conclude that . . . proves that your idea is untrue."

http://en.wikipedia.org/wiki/Normative

[Malcom Mooney]

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

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

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

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

[Rick]

Ralley:

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

[Malcom Mooney]

"I think most later-created "equivalents" will be derived without undue experimentation ..."

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

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

[anon]

this case along with Dippin' Dots certainly gives accused infringers a lot to work with.

[Rick]

Thanks Mr. Mooney:

That's my precisely my point.

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

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

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

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

[Rick]

Mr. Mooney:

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

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

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

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

[Rick]

Mr. Mooney:

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

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

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

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

[ralley]

Mooney and Rick,

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

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

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

[Zeno]

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

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

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

[Malcom Mooney]

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

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

[Malcom Mooney]

ralley

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

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

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

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

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

[Malcom Mooney]

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

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

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

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

[ralley]

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

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

[Malcom Mooney]

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

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

[stepback]

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

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

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

Let's do the time warp dance.

[Malcom Mooney]

"There were no jacketless disposable syringes at the time of filing."

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

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

[Rick]

Mr. Mooney:

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

You ask:
"Where does the CAFC say that?"

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

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

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

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

[Rick]

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

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

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

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

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

[Gideon]

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

As a first matter, chew on this:

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

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

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

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

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

Enablement and written description - both big messes.

[Rick]

Gideon, fantastic comment ! Hit it on the nail.

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

So now patents are being whacked from a different angle.

It's about time the issues go cert.

[Gordion Knot]

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

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

[Malcolm Mooney]

"herwise ralley's first post and Gideon are accurate forecasters of the horrors to follow."

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

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

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

[Gordion Knot]

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

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

[Mark Nowotarski]

Gideon,

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

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

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

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

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

[Malcolm Mooney]

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

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

[Malcolm Mooney]

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

Really? Show me one.

"my patents will be invalidated because they don't teach how to make the new devices."

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

[SF]

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

[Malcolm Mooney]

"Does that mean any preamble that recites an automobile must include wheels in the body of the claim?"

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

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

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

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

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

[Len]

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

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

[Malcolm Mooney]

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

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

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

[Darren Gardner]

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

[Rick]

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

Here is an analogy:

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

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

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

[step_back]

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

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

"Enablement" is about what the inventor empowers others to do.

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

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

[Let's Read the Decision before Setting Our Hair on Fire]

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

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

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

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

Leibel-Flarshiem fits comfortably in this line of cases.

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

[CaveMan]

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

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

[ralley]

"a claim is invalid if it includes the bad, or omits the essential."

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

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

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

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

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

[Rick]

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

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

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

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

ENOUGH CONFUSION! We want CLARITY!

[me]

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

[anon]

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

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

Maybe you're thinking written description instead of enablement.

[T. Edison]

You realize that all open-ended claims are now invalid.

[Rick]

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

The correct analogy would be as follows:

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

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

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

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

[Rick]

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

Why this forgiving tone?

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

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

[Patrick Stiennon]

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

[anon]

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

[What Do You Mean No Grounding]

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

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

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

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

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

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

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

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

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

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

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

[SF]

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

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

[Rick]

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

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

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

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

[Lawrence]

"Good -- that'll help to keep the prices of the new devices down."

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

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

[Malcolm Mooney]

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

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

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

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

[Malcolm Mooney]

"pioneer patents"

No you didn't!

[Brian Hickman]

This case is the "enablement" version of "Gentry".

I find both cases very disturbing.

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

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

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

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

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

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

[Brian Hickman]

Two more points to ponder:

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

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

[I Dispute That]

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

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

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

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

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

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

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

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

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

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

I really hope that clears up the confusion, Rick.

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

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

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

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

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

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

[Malcolm Mooney]

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

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

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

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

[Slight Difference]

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

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

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

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

[Mark Pitchford]

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

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

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

[Brian Hickman]

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

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

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

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

----

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

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

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

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

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

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

[Under-Secretary Dudas's Friend]

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

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

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

[Lionel Hutz]

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

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

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

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

[Malcolm Mooney]

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

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

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

Big problem.

[Brian Hickman]

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

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

Such a rule would render most patents worthless.

[Malcolm Mooney]

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

Such a rule would render most patents worthless."

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

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

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

Chill, people. Besides, it's Friday.

[Malcolm Mooney]

"This case kills open-ended claims unless confined to facts with broadening of claims."

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

[Malcolm Mooney]

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

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

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

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

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

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

[anon]

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

[SF]

What if the applicant had claimed "a syringe for an injection system" and not "an injection system"?

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

[Lionel Hutz]

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

[Zeke]

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

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

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

[Zeke]

Haha. I read half of it already.

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

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

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

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

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

[Malcolm Mooney]

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

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

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

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

[ralley]

Zeke,

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

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

Regarding the "they got greedy refrain" wouldn't court costs be a punishment for incorrectly asserting the patent?

[Lionel Hutz]

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

MM'S response - "Nothing new here. That was always true of every claim."

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

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

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

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

[Malcolm Mooney]

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

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

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

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

[Malcolm Mooney]

"I meant use of the word "comprise" in and of itself will be enough to render claims invalid"

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

Seriously. Is that what you are going to do?

[ralley]

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

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

[Horace]

"Seriously. Is that what you are going to do?"

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

[I Dispute That]

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

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

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

=== My response ===

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

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

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

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

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

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

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

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

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

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

Don't both say that "the invention" must meet certain requirements (novelty, enablement)?

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

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

[Malcolm Mooney]

"No - because this case will be overturned or signicantly limited."

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

[Malcolm Mooney]

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

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

[I Dispute That]

Not so, Malcolm Mooney.

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

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

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

It doesn't say "the inventions," it says "the invention."

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

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

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

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

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

[ralley]

I Dispute That,

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

You should write a paper.