PAR v. Roxane on enablement under 35 USC 112
Judge Moore cited Ormco v. Aligned for the proposition that a patent claim is presumed enabled unless proven otherwise by clear and convincing evidence. Moore cited Liebel-Flarsheim, 481 F.3d 1371 for "beware of what one asks for." Moore also cited Liebel for the proposition that the full scope of the claims must be enabled.
The decision got into the concept of inoperative embodiments, citing Atlas Powder, 750 F.2d 1569 (tho Graver Tank - I could have been cited).
Judge Moore cited to In re Wands, 858 F.2d 731, 737 for the "Wands factors" on enablement. If one has broad claims in an unpredictable art, there is a high burden that the patent disclosure must meet. Judge Moore also talked about the impact of a large number of inoperative combinations, citing to Atlas Powder, 750 F.2d 1569.
On the facts, PAR's specification had three working examples. Judge Moore concluded that these three working examples did NOT provide an enabling disclosure commensurate with the entire scope of the claims.
Remember the new URL for the CAFC: