Sitrick v. Dreamworks (Fed. Cir. 2008)
Sitrick’s patented invention involves a method for a integrating user-generated audio and visual effects into a video game or movie. The solo-inventor sued Dreamworks and other defendants who use the “ReVoice Studio” software to allow users to add their own voice to the imagery. The issue on appeal is whether the asserted claims are enabled under 35 U.S.C. 112 ¶ 1.
Full Scope Enablement: Although loosely tied to the patent statute — the enablement requirement continues to grow and develop through Federal Circuit panel opinions. Generally, the “requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation.”
When analyzing enablement, the court looks to ensure that the “full scope of the invention” is enabled — and thus looking beyond whether the particular accused design is enabled. The “full scope” doctrine has recently been applied by the Federal Circuit to invalidate several patents. (See below)
Broad Claim Narrow Disclosure: It is easy to criticize patentees who attempt to enforce broad claims supported only by a narrow disclosure. This is especially true in cases such as Liebel’s where the claim scope had been expanded well after filing the original application. (i.e., “late claiming”).
However, the “full scope” doctrine has serious deficiencies. The most notable are the potentially chaotic results from applying the doctrine to claims that include the comprising transition language. The problem arises because the comprising transition allows a claim to implicitly encompass a wide variety of add on limitations that might be found in an infringing device. See, for example Automotive Technologies Int’l v. BMW (Fed. Cir. 2007) (claim scope that implicitly covered both mechanical and electrical sensor was not enabled by description of mechanical sensor); Liebel-Flarsheim v. Medrad (Fed. Cir. 2007) (claim scope that implicitly covered both jacketed and jacket-free needle holders was not enabled by description of jacketed needle holders).
Here, the asserted claims were construed as covering both movies and video games. Thus, the patent must enable both types of applications. Here, the CAFC confirmed that Sitrick had failed to enable its use in movies — and thus that the claims are not fully enabled.
- Buyer Beware: As with other recent enablement cases, this one may be best seen through the lens of the claim construction process. In each case, the patentee requested (or at least did not challenge) broad claim construction. Consequently, the court was not sympathetic to enablement arguments that could have been avoided by a narrower construction of the claims. This line of thinking was spelled out by Judge Laurie in the Liebel case: “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.” This buyer beware theory is also useful to break the potential analytical morass of full scope enablement of claims drafted with comprising transitions.
- Don’t Begin with the Specification: One aspect of enablement that is continually bothersome. In the opinion, the court noted that “enablement analysis begins with the disclosure in the specification.” That approach unduly confuses enablement with written description. Rather, I would contend that enablement should begin with the knowledge of one skilled in the art and move forward from there.
- Johnson v. M’Intosh: In my property law class, we recently discussed Johnson v. M’Intosh and the doctrine of of sovereign authorized discovery of land. In those empire building years, we also saw over-zealous claiming.
- David Sitrick: The inventor, David Sitrick, is a Skokie based patent attorney registered with the firm of Sitrick & Sitrick. (Reg. No. 29349). Mr. Sitrick prosecuted the patent himself. His son, Greg Sitrick, is an associate at the Bell Boyd firm in Chicago. (Reg. No. 57195).
Good post!!!and thanks for the information. All are closely related to the automobile industry as the parts are from the source.
“maybe you better make sure that you disclose the best embodiment that can be made, and that you are at the forefront of your field at all times.”
Has anyone ever disclosed the best embodiment that CAN be made? of anything? ever?
“But is it right/fair/good public policy that Exxon should be held to infringe. In what sense is Exxon taking advantage of A’s contribution to the progress of the useful arts?”
Exxon is taking advantage of the fact that A invented the molecule. Without A’s invention, Exxon would not have the molecule to experiment with. Presumably, that particular molecule had never been known before A created it. (if it had been known, then A could not have obtained the patent on the molecule. A would have been stuck with a patent on the use thereof).
“If you can get damages and an injunction against an infringer, you SHOULD have enabled the infringer’s device.”
This statement, and this line of cases, is ludicrous. Think about what such a rule would mean…
You can avoid infringing, and even invalidate, any patent claim by improving the claimed invention in a way that is not enabled by their specification.
You invent and claim X.
I make improved X+ (which literally infringes your claims)
As long as I can prove that you did not enable my improvement, your claim is invalid, and I can go ahead a make X and X+.
Agreed A. But is it right/fair/good public policy that Exxon should be held to infringe. In what sense is Exxon taking advantage of A’s contribution to the progress of the useful arts?
I concede that my question is a bit “off thread” but as the thread involves discussion about the relationship between scope of protection granted in return for extent of disclosure presented in the app as filed, I thought I would toss it up and see who responds. As one example: Germany has had “absolute Stoffschutz” (claims to molecule X unlimited by application) only since 1969. In these days of unprecedented criticism of the patent system, why not re-balance the “deal” between the inventor and the public, in a way which reflects the newly-emerged shifted balance of wealth-generating potential between inventors and manufacturers, on a basis of: 20 years of exclusivity, yes, but only with a scope strictly commensurate with the technical advance that the inventor brings to the party, no more no less? With such re-balancing, the patents system will be better placed to withstand ignorant (but nevertheless potent) criticism from non-specialists.
“Does Exxon infringe? ”
It seems to me that if A has a patent on the molecule and Exxon uses the molecule in any way, that’s infringement. It’s not infringment if A has a method claim e.g. A method of curing a disease.
Now Exxon can get a method claim e.g. A method comprising using X in a car engine but may still have to pay A for a license to X.
Let’s suppose A finds out the molecule X, taken orally, cures some dread disease, and gets issue of a claim to “Molecule X”. Later, Exxon Corp finds out that a small amount of molecule X, borne into the engine of your car with each swig of gas, improves its performance. Does Exxon infringe? Should A be entitled to enjoin Exxon? Does he “deserve” a royalty flow, on sales of the improved auto fuel? I’m not a chemist, but this aspect of chemical patent law has always troubled me.
Let me try a more literal example. Let’s say I design and claim a novel engine for an automobile. At least one claim is to the engine proper and does not reference an automobile. Someone else adapts that engine to work in a boat and that adaptation is non-trivial. If that someone else is still using my engine as claimed, I should be able to obtain a judgment of infringement, regardless of whether I could have easily adapted my engine to work on a boat, because s/he was still using my engine as claimed. S/he could certainly obtain a patent on the use of my engine in a boat and prevent me from marketing boats with my engine without obtaining a license, but that should not prevent me from enforcing my patent claim.
David French writes:
“But if you claim A, B and any of C1, C2, C3, C4, or C5 and you only enable C1 and cna’t show that one of ordinary skill in the art could readily make C2-C5, good luck going after someone who makes A, B and C4.”
This problem requires a real investment in clear thinking. If you claim C2, C3, C4, or C5 expressly then there must be a teaching in the disclosure that these elements will work. This is a clear case of false promise. An explicit false promise should be fatal.
If your claim describes subject matter adequately elucidated in the disclosure, then is it fair to object that the claim incidentally covers something that doesn’t work?
I claim “a pencil with an eraser made of natural rubber attached at one end for erasing pencil marks from paper”. Then I find out that natural rubber doesn’t work at -40C/-40F Fahrenheit. Should the claim be invalid?
This problem requires a real investment in clear thinking.
Upthread, an Examiner contemplated detecting claims covering large areas of territory, for which Applicant gives no solution to the problem of how to work that invention over most of that claimed territory. That Exr perceives the public mischief their issue will perpetrate, yet writes that it’s nevertheless NOT his business to object to them on behalf of the Great American Public. That Exr is doling out 20 year monopoly rights to aggressive owners (alien as well as American, I hope), enabling them thereupon promptly to enjoy and exploit the famous Presumption of Validity. What sort of public services is that then? Do I see it right? I’ve been wondering what a “strong” patent system involves. I see it better now.
There never was a patent issued, ever, that didn’t have a claim wide enough to embrace non-functional embodiments. If you ask an engineer to build something that’s inside the claim but doesn’t work, he can. But that’s not the point. The notional reader is presumed to be trying to get the thing to fly, over the scope odf the claim. If, despite that mindset, he can’t, well then the claim is wider than its owner “deserves”. Simple isn’t it?
“What are we gunnuh do tonight, Brain”
“We are going to do what we do every night Pinky – we are going to try to take over the world.”
“Is that enabled Brain?”
Brian, you fail to understand the issue at hand. There exists as of now two big areas of claim ambiguity (there may be more) which unfairly present rights to the patent owner:
1. When future advances not known to the inventor at the time the invention was made enable further non-trivial enhancments to his device yet his claim covers those modifications as well even though the inventor never had the faintest clue about such inventions to come, or at least did not publicly disclose such clues and thus should not have right to prevent others from using what they rightfully contributed.
2. When embodiments of the broadly claimed invention would not be adequately explained to one of ordinary skill, by the disclosure, as to enable him to practice such an embodiment without further non-trivial modification of the disclosure.
We should require any and all embodiments that the inventor wishes to exclude others from using to be sufficiently enabling, to one of ordinary skill in the art, so that the inventor of one invention does not get credit (right to exclude) for being the first to teach us how to do something which he did not even teach us how to do.
You notice however, that under DOE, only the modifications which are covered are those that are trivial and were thus sufficiently enabled to one of ordinary skill by the inventors disclosure so as to give him the credit.
Perhaps you need some examples. And I’ll see what I can do sometime for now I’ve gtg.
“If embodiments covered under the DOE do not need to be enabled – then why should we require “every” embodiments covered under literal claim scope to be enabled?”
Excuse me, brian? You are missing the boat. Unfortunately, we have lifted anchor and are now heading back to shore. Hold onto that volleyball and pray for rain.
“No, that’s my special way of saying that you don’t understand what courts mean when they say that the DOE is an equitable doctrine.”
Well does that mean that DOE can extend coverage beyond what you inevented and enabled?
On numerous occassion the U.S. Supreme Court made clear that the DOE is nothing more but an implied extension of the claim scope: Warner Jenksinson v. Hilton David Chemical 520 U.S. 17 (1997) (“In Winans v. Denmead, 15 How. 330, 343 (1854), we described the doctrine of equivalents as growing out of a legally implied term in each patent claim that “the claim extends to the thing patented, however its form or proportions may be varied.”); Festo v. Shoketsu Kinzoku 535 U.S. 722 (2002) (“The language in the patent claims may not capture every nuance of the invention or describe with complete precision the range of its novelty.”… “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.” …“The doctrine of equivalents is premised on language.s inability to capture the essence of innovation”)
Judge Rich of the Federal Circuit voiced similar reasoning when he explained in Wilson Sporting Good Co. v. David Geoffrey & Assocs., 904 F.2d 677, 684 (Fed. Cir. 1990): “[A] patentee should not be able to obtain, under the doctrine of equivalents, coverage which he could not lawfully have obtained from the PTO by literal claims. The doctrine of equivalents exists to prevent a fraud on a patent … not to give a patentee something which he could not lawfully have obtained from the PTO had he tried.”
Malcolm, your are beating around the bush, instead of directly confronting the question/paradox I presented.
The DOE, while equitable in nature, is intended to expand the claims (112 para. 2) – not the invention (112 para. 1).
If embodiments covered under the DOE do not need to be enabled – then why should we require “every” embodiments covered under literal claim scope to be enabled?
Since a patent is presumed valid during a trial, shouldn’t the court just narrow the overly broad claim construction, instead of invalidating the patent?
“I guess that’s your special way of saying “I don’t know the answer”.
No, that’s my special way of saying that you don’t understand what courts mean when they say that the DOE is an equitable doctrine.
“But if you claim A, B and any of C1, C2, C3, C4, or C5 and you only enable C1 and cna’t show that one of ordinary skill in the art could readily make C2-C5, good luck going after someone who makes A, B and C4.”
So you are suggesting that the claim be limited to A, B and C1. But can C2-C5 be at least covered under the doctrine of equivalents?
Does it make sense that embodiments covered under the DOE need not be enabled – but when you try to capture them within the literal claim scope then they do need to be enabled?
Isn’t this clearly paradoxical?!
The CAFC bright-line rule that “all embodiments covered by the claim need to be enabled”, seems to be greatly at odds with well-established law that equiavlents covered under the DOE need not be enabled.
By definition, coverage under the DOE is inferior to – not superior – to literal claim coverage.
This is all so weird.
“Dude, chill out on the DOE. It’s boring and not very useful.”
I guess that’s your special way of saying “I don’t know the answer”.
If embodiments covered under the DOE do not need to be enabled – then why should we require “every” embodiment covered under literal claim scope to be enabled?
This is a very troubling jurisprudential paradox.
I guess some squarehead practicioners find such paradoxes utterly boring.
“But if you claim A, B and any of C1, C2, C3, C4, or C5 and you only enable C1 and cna’t show that one of ordinary skill in the art could readily make C2-C5, good luck going after someone who makes A, B and C4.”
Of course. I do not see anyone on this list arguing otherwise.
“If equivalents are being swept into the scope of the invention, then shouldn’t the speciciation enable equivalents as well?
”
Dude, chill out on the DOE. It’s boring and not very useful.
Malcolm:
Thanks.
Why shouldn’t equivalents be enabled as well?
Isn’t the the DOE nothing more but an implied broadening of the claim scope?
The specification requires you to enable “the invention”. If equivalents are being swept into the scope of the invention, then shouldn’t the speciciation enable equivalents as well?
“But let’s face it: infringement under the DOE is a near-total crapshoot.”
DOE is the equivalent of a crapshoot?
“Does this mean that certain embodiments can “only” be covered under the doctrine of equivalents”
In some cases a narrower claim with a small halo of equivalents may be more valuable than a broad claim with serious enablement issues.
But let’s face it: infringement under the DOE is a near-total crapshoot.
“Nothing is enabled.”
That’s either a profoundly existential statement, or insolubly ambiguous. I bet the CAFC would select the latter.
Nothing is enabled.
Malcolm:
Thanks for the answer.
Does this mean that certain embodiments can “only” be covered under the doctrine of equivalents, because coverage under literal claim scope would render the claims non-enabled?
“What’s the law when the defendant’s product is infringing under the doctrine of equivalents? Do the equivalents need to be enabled by the specification?”
No. There is no enablement requirement for equivalents.
What’s the law when the defendant’s product is infringing under the doctrine of equivalents? Do the equivalents need to be enabled by the specification?
“Anyone skilled in the art could do it, you say? Reasonable expectation of success, you say? Hmmm.”
The accused infringers did it. Well, sort of:
“ReVoice Studio is a remarkable new PC-based interactive product that lets you select film or music clips and instantly replace the voices of the performers with your recorded voice. ReVoice Studio puts your voice in perfect lip-sync automatically and lets you and your friends provide the actors’ or singers’ voices with hilarious and entertaining results.”
Based on a 35-second infringement analysis, it seems that in order to prevail the patentee here would have to get a generous construction of “synthesizing” and “interjecting.” Or a generous doctrine of equivalents.
Most of the claims at issue, however, were directed to an analogous technique for replacing a character’s IMAGE with a moving IMAGE of the user. The specification made clear that the input image data could be video game images or movie images. It provided a somewhat plausible approach for implementing the claim for video game images. The technique clearly (to experts, anyway) would NOT work for movie images. The specification did not provide an alternative method for movie images.
This is not a case of unanticipated technological developments, nor is it a case where the CAFC says that the patent failed to enable the accused product. Rather, the specification explicitly said that the claimed invention could accomplish a specific task with two types of data, and then failed to explain how.
Here’s another 2007 enablement case Dennis fails to mention. Medtronic Navigation v. Brainlab (06-1289). (The court reversed a broad claim construction to preserve claim validity – preventing broad claim from covering non-enabled embodiments.
But one important question remains unanswered:
What’s the law when the defendant’s product is infringing under the doctrine of equivalents? Do the equivalents need to be enabled by the specification?
But if you claim A, B and any of C1, C2, C3, C4, or C5 and you only enable C1 and cna’t show that one of ordinary skill in the art could readily make C2-C5, good luck going after someone who makes A, B and C4.
Thank you Mr. Morgan for providing the proper perspective on this line of cases. For 90% (and that’s being conservative) of the claims in non-chemical/unpredictable arts, one can come up with a product, apparatus, or method that falls within the scope of the claim, but is not enabled by the specification.
Basically the rule has always been if X claim a widget having A, B, and C, and Y produces a widget having A, B, C, D, and E, then Y infringes X’s patent. Some people seem to think the scope of these decisions will be limited, but the wording does not inspire confidence that will be the case.
“In my view there is a far more unfair aspect of this new case law than the one Prof Crouch notes. ”
Yeah, it’s so unfair that this patent attorney got himself granted incredibly broad patent claims like this:
54. A method of integrating a user voice image into a presentation output, the method
comprising the steps of:
sampling a user’s voice;
analyzing the sampled user’s voice to provide user voice parameter data representative of the user voice image;
storing the user voice parameter data;
synthesizing and interjecting the user’s voice into the presentation output responsive to the user voice parameter data comprising the step of associating a particular predefined character image within the presentation with the user’s voice so that when the particular predefined character is speaking, the user voice parameter data is input as a model to a voice synthesizer that effects the integration of the user’s voice into the presentation output as associated with the predefined character image.
without disclosing any info whatsoever as to how it could be achieved in movies (nice laugh-out-loud moment in the opinion regarding that expert testimony, btw).
Anyone skilled in the art could do it, you say? Reasonable expectation of success, you say? Hmmm.
Another troll thinks he can be the next Lemelson and forces the CAFC to mess up patent law further.
This surprising new CAFC sua sponte basis for claim invalidity may now be necessary to consider in most claim validity/invalidity opinions and litigation ?
For at least 150 years of prior case law most generic mechanical and electrical patent claims were considered adequately supported and enabled by even a single specification species example falling under the scope of the generic claim. [Of course the claim cannot be so broad as to read on prior art.]
Only chemical and other “unpredictable arts” had regularly required generic claims to be 35 USC 112 limited to some extent by the number and scope of specification examples provided.
Several CAFC panels for several years now have been [inconsistently] interpreting broad claims narrowly for non-infringement by judicially narrowing them to a specification example [especially if it was called “the invention” in a sub-title or elsewhere]. [Notwithstanding the en banc Phillips case reaffirmation of the principle that the claims define the scope of protection.]
However, now this more recent, more dangerous, anti-patent CAFC panel development has began to invalidate [not just narrow] generic claims in mechanical and electrical patents under 35 USC 112.
This new defense appears to have started with LizardTech, Inc. v. Earth Resource Mapping, Inc., __ F.3d __(Fed. Cir. 2006 ) denying r’hg en banc of the earlier panel opinion, 424 F.3d 1336 (Fed. Cir. 2005). Per LizardTech, if there is only one embodiment of an electrical invention claim term disclosed in the specification, then that claim is invalid for that reason [not just interpreted narrowly]. Now we have further such CAFC panel decisions, most recently the subject Sitrick v. Dreamworks (Fed. Cir. 2008). Also Automotive Technologies Int’l v. BMW (Fed. Cir. 2007) and Liebel-Flarsheim v. Medrad (Fed. Cir. 2007)
In my view there is a far more unfair aspect of this new case law than the one Prof Crouch notes. Namely that this is another retroactive change in patent law by CAFC panels invalidating and narrowing millions of issued patent claims with little or no ex post facto recourse by patent owners and inventors. One cannot read the facts of these cases without being led to conclude that this is another CAFC twisting of established claim infringement law to avoid addressing the need for better, faster and much cheaper invalidity determinations.
go figure, means plus function given new life. Probably the only sure fire way to avoid the new scope of enablement trap.
Here’s another winnner from Mr. Sitrick
“1. A method for preventing videotaping of a movie projected onto a projection screen for viewing by an audience, the method comprising: projecting visible light images onto the projection screen to provide for a visual presentation; selectively providing anti-piracy means to preclude videotaping of the movie projected onto the projection screen; sensing an absence of the anti-piracy means; and generating a violation signal responsive to the sensing an absence.”
From the specification: “A movie anti-piracy system with sensing and reporting is provided. A movie projector projects a light image to reflect off of a screen, while an anti-piracy system is implemented ranging from physical security with people, to an infrared energy projection source generating an infrared energy pattern which is reflected off the screen (or otherwise projected) in the same field of view as the light images reflecting from the screen.”
20070061890
Truly an ordinary inventor.
examiner6k,
You quote Halliburton: “Because claims delineate the patentee’s right to exclude, the patent statute requires that the scope of the claims be sufficiently definite to inform the public of the bounds of the protected invention, i.e., what subject matter is covered by the exclusive rights of the patent. Otherwise, competitors cannot avoid infringement, defeating the public notice function of patent claims.”
This is not new. Compare with MPEP 2173: “The primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent.”
You don’t need a new CAFC case to issue Section 112 definiteness rejections. Please read the ENTIRE section 2173, however.
Dennis
I respectfully and humbly submit that you are scrambling unrelated aphorisms. Buyer beware or “caveat emptor” is a clearly distinguishable concept from J.Laurie’s “beware of what you ask for it might come true.”
The former is exemplified by those who voted for Bush thinking he had a brain in his head, and the latter is exemplified by those supporting Hillary knowing she has one in hers. His lack of intelligence was a sort of a pig-in-a-poke fraud, while her abundance of intelligence and cunning will result in a “stop whining, you asked for it” situation should she become president.
Same result; two different concepts.
“Again, if he invented and patented the first horseless carriage (that uses back wheel drive) then he must claim, claim 1. a horseless carriage with back-wheel drive.”
Touché. You are correct – he must include all essential elements in his claim – and in this respect my hypothetical was lacking.
That said, however, the claim can be broader than the preferred (RWD) embodiments if the disclosure teaches (112) how to make the broad claim, or if the broad claim is a genus, the disclosure teaches a sufficient number of species (no I can’t define a rule for what is sufficient). And any claim, broad or narrow, covers more narrow embodiments that were not enabled by the disclosure.
real anonymous says: “Such a patent system could never promote the progress”
You are correct. I should have limited my comment in the following way:
“Yes, and I think that’s fair. If you can get damages and an injunction against an infringer, you SHOULD have enabled the infringer’s device *to the degree your claim reads on the infringing device.*”
That is, I don’t have to enable your improved device, but I must enable the aspects of your device contained in my claim. So, if your improvement appropriates every enabled element of my claim and contains an improvement that doesn’t alter that enablement, you, of course, infringe.
Now, there might be a conjectural way that your improvement somehow affects the elements of my claim in a way that makes them non-enabled. That is, say you couldn’t have built the non-improved aspect of the improved invention based on my disclosure, despite the non-improved aspect containing each and every element of my claim. Here too, you should not infringe. I am wanting for an example, but hopefully you see my point.
I must admit for the first time I agree with the host. Enablement must begin the person of ordinary skill in the art. I think the confusion rests with the codification of 35 USC 112. While the analysis of 35 USC 112 should begin with the written description, the enablement requirement is a separate sub-analysis of the 35 USC 112 analysis. It should go like this
First antecedent basis (written description) analysis
Second enablement analaysis
Third best mode analysis.
Oh, btw, here’s an excerpt from the court case I cited the other day. Halliburton Energy Services, Inc. v M-I LLC
“Because claims delineate the patentee’s right to exclude, the patent statute requires that the scope of the claims be sufficiently definite to inform the public of the bounds of the protected invention, i.e., what subject matter is covered by the exclusive rights of the patent. Otherwise, competitors cannot avoid infringement, defeating the public notice function of patent claims.”
“We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation”
And bam, we have the case where the judges explicitly state examiners are to demand clarification. If you read the whole thing you will see where the court uses a hypothetical composition to invalidate the claims, not only the accused infringing composition. Matter of fact, iirc they specifically state that they don’t even have to consider that because the claims are invalid right off the bat thus infringment is impossible.
Imo I should start using this today. But I’ll hold off until we have the training.
“What a mess. So now you need to enable the infringing system – not just the claim?”
Um, no, you only get to claim that which you enable. I.e. no more claiming “a car” when you really invented a car with 4 wheel drive, or back-wheel drive. You have to include those limitations in the ind., this should also stomp some of the problems with wild goose chase dep’s we get here.
“So, if you invent and patent the first horseless carriage and five years later I invent and patent a front-wheel drive horseless carriage (I advanced your RWD design, but took the rest of my engine/drivetrain and carriage body layout straight from your teaching), I shouldn’t need to license your patent because you didn’t enable FWD? Such a patent system could never promote the progress, because all I the next guy would have to do is add something (anything) to the patented invention, and say, “See, my device wasn’t enabled!””
Again, if he invented and patented the first horseless carriage (that uses back wheel drive) then he must claim, claim 1. a horseless carriage with back-wheel drive. And then when you come along and make a front-wheel drive embodiment you don’t infringe his design (unless he seperately patented his drive train, engine etc. which you actually stole) and can certainly claim, claim 1. a horseless carriage with front-wheel drive. That claim might be held obvious however, I’m not saying that it wouldn’t, but his carriage design does not infringe yours. This, my good fellow certainly does promote the usefull arts as people no longer need worry that someone made an inferior product that opened up a new field. IF however, you want to make a carriage with back-wheel drive and windshield wipers then you’re infringing on his back-wheel drive carriage design. Now he gets a licensing agreement.
If you believe that this wouldn’t work because people would just take your idea and design around it so that they don’t infring then maybe you better make sure that you disclose the best embodiment that can be made, and that you are at the forefront of your field at all times. Of course, as we all know, this is not maintainable, even though a big corp. 1 has more resources, little guy 1 might weasel his way in the market by innovation on the corps design. This is not a bad thing, the public benefits because they’re now going to get a better product from the second guy. Maybe the corp 1 goes under, but that’s because they didn’t come up with the right product. Too bad for them.
Oh, and yes, we have been currently under orders to ignore 112’s in this capacity. Why? Because the courts haven’t backed us up. Now however…
“Broadest reasonable construction” upthread makes a good point about these cases: be careful who you sue.
You put your hands into the tiger cage, you risk having your fingers turned into tiger chow.
“Yes, and I think that’s fair.”
Only if you define fairness like the CPF does (fair=freedom to use)
So, if you invent and patent the first horseless carriage and five years later I invent and patent a front-wheel drive horseless carriage (I advanced your RWD design, but took the rest of my engine/drivetrain and carriage body layout straight from your teaching), I shouldn’t need to license your patent because you didn’t enable FWD? Such a patent system could never promote the progress, because all I the next guy would have to do is add something (anything) to the patented invention, and say, “See, my device wasn’t enabled!”
“So now you need to enable the infringing system – not just the claim?”
No, that’s not the law, but you do have to enable the full scope of your claim – and that’s always been the law (though I think USPTO examiners have often ignored this aspect of 112 first, for lack of training and/or understanding).
For example, if I claim polishing a component to a surface roughness of “less than 100 nm ra”, but my disclosed method(s) can only achieve 30 nm ra at best, I will have serious invalidity problems (since my claim covers roughnesses down to zero which I haven’t enabled). These problems will become especially evident when future advances require roughneses below 20 nm ra and the industry embraces newer technology [not disclosed by me] that is capable of achieving such roughnesses that I claimed but did not by my disclosure enable.
Simply being the first to claim something doesn’t make me the first to invent (enable) it.
In my opinion, it’s about time someone started enforcing 112 first, to ensure that the claim scope is commensurate (or reasonably commensurate) with the disclosure.
“So now you need to enable the infringing system – not just the claim?”
Yes, and I think that’s fair. If you can get damages and an injunction against an infringer, you SHOULD have enabled the infringer’s device. Otherwise, it is the “infringer” who is the inventive entity and who shouldn’t be punished.
Now, I would be all in favor of simply finding non-infringement (and maybe attoryney’s costs) in these contexts instead of invalidating the entire claim. But I think another recent case (Halliburton v. M-I) somewhat gutted this rule, or at least limited the leading case for it (Athletic Alternatives). SO I guess the CAFC disagrees.
“Then, perhaps, these cases are applicable to prosecution. Until then, they appear limited to over-claiming in litigation contexts only (i.e., arguing for or aquiescing to a non-enabled construction).”
I agree. For an examiner to be rejecting claims on this line of cases is, at best, premature and, at worst, incorrect.
All of these cases have dealt with the claims not being enabled wrt the accused infringing device/method.
I want to see the case where the claims are invalidated for being non-enabled wrt an embodiment that is not the accused infringer’s. That is, I sue you for infringing with a device that clearly falls within my enabled claim scope, but you invalidate my claim based on some other hypothetical device that falls within my claim scope but isn’t enabled.
Then, perhaps, these cases are applicable to prosecution. Until then, they appear limited to over-claiming in litigation contexts only (i.e., arguing for or aquiescing to a non-enabled construction).
What a mess. So now you need to enable the infringing system – not just the claim? The statute says enable the claimed invention. One would think that the doctrine of preserving validity and phillips would create a claim limiting non-infringement position. But now it sounds like the presumption of validity has been turned on its head. More results oriented decision making from cafc – no claim ever written can survive this gotcha test – get a markman order for a single limitation not explicitly disclosed – and bam – the whole claims falls for lack of enablement as a matter of law.
Daniel asked: “What about a CIP with broad claims based on an early priority narrow disclosure and later priority expanded disclosure. Can someone tell me whether the broad claims benefit from the early priority date, or can they be knocked out by prior art between the two dates?”
Unless the early narrow priority document provides full 112 support for the broad claims in the CIP, then the broad claims will not benefit from the early priority date. See, e.g., the New Railhead and Vas-Cath cases. In fact, if the priority document is published before the CIP is filed, it can even constitute 102 prior art as to the claims of the CIP that don’t get the benefit of that earlier priority date. As the court stated in Vas-Cath: “A description of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes, whereas the same information in a specification might not alone be enough to provide a description of that invention for purposes of adequate disclosure.”
Let me clarify my “incorporation by reference” comment. Certainly, it would be advisable to have provided some description in the patent spec on how to enable system 260C for movies. But showing by, for example, patents incorporated by reference, that one skilled in the art could readily do this would have helped, in my opinion.
Dennis: I’ve read Automotive Technologies and it’s not contrary to my thought about incorporation by reference to show what one skilled in art would readily know about enabling an aspect of an embodiment. There the description of the electronic sensor (v. mechanical sensor) was so sparse that it didn’t enable one skill the art to practice the electronic sensor aspect. To my point, there wasn’t even an incorporation by reference to show that enablement of the electronic sensor aspect would have been readily understood by one skille in the art, but simply an allegation in litigation after the fact that one skilled in the art would be able to enable the electronic sensor aspect.
RE: Incorporation by Reference.
In Automotive Technologies Int’l v. BMW (Fed. Cir. 2007), the court held that, novel aspects of an invention must be enabled by the specification even if implementation would have been within the PHOSITA’s skill level.
link to patentlyo.com
“The applicant/patentee might have benefited from some “incorporation by reference disclosure” on how analysis system 260C would work when used with movies.”
I didn’t think incorporation by reference saved a failure to enable if that incorporation was never actually used to add text or drawings.
Daniel, internationally (for what that’s worth to you) The Paris Convention awards a right of priority ONLY when the priority application is an application for protection of the SAME invention (the word “same” is literally in Paris). One defines an invention in a claim by recitation of technical features. Same technical features = same invention. Different technical features = not same invention. What if the inventor claims ABCD in the prio and claims ABC in the formal app one year later. Claim 1 isn’t entitled to prio. But claim 2, dependent on claim 1, and reciting ABCD, is entitled to priority.
If USA wants to play on its own playing field, with its own special domestic priority rules, that’s fine too, so long as it doesn’t forget that it signed up to Paris, when was it? Centuries ago, I think.
JAOI(TM) you expressed it much more pungently than I ever could.
Who got the last laugh huh? Who got the last laugh?
Me.
I was citing another case the other day addressing this very issue, except they threw in the relevant sections throughout the whole dang opinion so it’s hard to pull out what they’re saying. Not only are they continuing to expand it, they’re going whole hog are the rumors around the way, they’re finally going to make 112’s do what 112’s are SUPPOSED to do. I’m going to be honest with everyone, with this concept properly in effect at time of examination, along with the new obviousness standards, I’m almost in agreement that patent reform might not be needed. Might not. This combined with the obviousness thing before is another about turn come to jesus by the courts. Why has this hogwash been accepted for half a century or more?
Overclaiming? 112’d buh bye, come back when you have your act together.
QUESTION:
Can a broadly construed claim cover “after-arising technology”? Or would the claim by definition be rendered invalid – as the full claim scope would be lacking enablement (i.e. as to the after arising technology)?
It is bedrock law that the doctrine of equivalents “can” cover after-arising technologies.
Thus, are we therefore to assume that after-arising technologies can “only” be covered via the doctrine of equivalents, but are foreclosed being covered under literal claim scope – lest the claim be invalidated for lack of enablement?
The applicant/patentee might have benefited from some “incorporation by reference disclosure” on how analysis system 260C would work when used with movies. To only talk about video games with regard to system 260C when, apparently, this wasn’t as easily translatable for movies seems to me to be asking for trouble.
Daniel,
Good question. This may be an oversimplification, but, logically, the intervening art would knock out claims with elements that were (first) disclosed in the CIP filing.
Why so hard to swallow? The public is giving Applicant a right to exclude all others from an area in the middle of the playing field. It cordons off an area of the field of play for the beneficial effect on innovation of having a patents system in the first place. So, why not have a patents system that awards a scope of monopoly commensurate with the “contribution” to the art. In some fields, one embodiment is enough (like when inventor reveals to the public a whole new area of ground to till). In other areas (chemistry) inventor with a claim to A-Z had better show in his app that the technical effect he got for molecule A is also likely (at least) to be delivered broadly, over the claimed range. Or else see his claim go down for obviousness, or want of sufficiency. Why give him B-Z (which may or may not work) just for working A?. In Europe, the concept “Scope commensurate with contribution” informs not only sufficiency of description but also obviousness. In practice, it works just fine. And it’s intellectually a good principle too, isn’t it? Frankly, I think the CAFC borrows copiously from Europe.
I find this whole business very hard to swallow. Where do you draw the line? Aren’t claims ALWAYS much broader than the specific examples in the spec.? If you’re smart enough to write a broad claim which is useful, new and non-obvious over everything known to man, and you’ve described a best mode way of implementing it in the spec., why the darn shouldn’t you be entitled to protection for it.
And practically, how does this work. What about a CIP with broad claims based on an early priority narrow disclosure and later priority expanded disclosure. Can someone tell me whether the broad claims benefit from the early priority date, or can they be knocked out by prior art between the two dates? Does it depend what option I choose during claim construction when I get to litigation? Now there’s fair public notice for you.
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