MIT patent invalid for lack of enablement
The CAFC noted:
Enablement is a question of law based on underly- ing factual findings. In re Wands, 858 F.2d 731, 735 (Fed. Cir. 1988). A party must prove invalidity based on non- enablement by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2242 (2011); AK Steel Corp. v. Sollac, 344 F.3d 1234, 1238-39 (Fed. Cir. 2003). Thirty-five U.S.C. § 112 sets forth the enablement requirement:
[t]he specification shall contain a written descrip- tion of the invention, and the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.
35 U.S.C. § 112, ¶ 1. “To be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” Genentech, Inc. v. Novo Nord- isk, A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)). The enablement determination proceeds as of the effective filing date of the patent. Plant Genetic Sys., N.V. v. DeKalb Genetics Corp., 315 F.3d 1335, 1339 (Fed. Cir. 2003).
Enablement serves the dual function in the patent system of ensuring adequate disclosure of the claimed invention and of preventing claims broader than the disclosed invention. See AK Steel, 344 F.3d at 1244. This important doctrine prevents both inadequate disclosure of an invention and overbroad claiming that might other- wise attempt to cover more than was actually invented. Thus, a patentee chooses broad claim language at the peril of losing any claim that cannot be enabled across its full scope of coverage. “The scope of the claims must be less than or equal to the scope of the enablement to en- sure that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims.” Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008) (quoting Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195-96 (Fed. Cir. 1999)); see also In re Fisher, 427 F.2d 833, 839 (CCPA 1970) (“[T]he scope of the claims must bear a reasonable correlation to the scope of en- ablement provided by the specification to persons of ordinary skill in the art.”).
One must enable the FULL scope of the claims:
The specification must contain sufficient disclosure to enable an ordinarily skilled artisan to make and use the entire scope of the claimed invention at the time of filing. Sitrick, 516 F.3d at 1000. Here, the specification teaches that the fundamental science of the tunneling junction was known “for many years,” but past efforts did not produce effective use of the phenomenon. ’922 patent col. 2 ll. 3-8. The specification discloses a 1975 publication by Michel Julliere that predicted an ideal tunnel junction could yield around a 24% change in resistance. Yet, the specification teaches that twenty years later, when the application was filed, the best achievement was an 11.8% change. Named inventor Dr. Meservey also testified that before the application was filed, he did not know how to achieve a tunnel junction with greater than 20% change in resistance.
In sum, this field of art has advanced vastly after the filing of the claimed invention. The specification contain- ing these broad claims, however, does not contain suffi- cient disclosure to present even a remote possibility that an ordinarily skilled artisan could have achieved the modern dimensions of this art. Thus, the specification enabled a marginal advance over the prior art, but did not enable at the time of filing a tunnel junction of resistive changes reaching even up to 20%, let alone the more recent achievements above 600%.
The trial court’s finding of an enablement deficiency falls squarely within this court’s precedent. See Fisher, 427 F.2d 833. In Fisher, the patent application was directed to a system for production of substances contain- ing adrenocorticotropic hormone (ACTH) that were suit- able for injection into humans for adrenal gland stimulation. 427 F.2d at 834.
Here, the claim term “change in the resistance by at least 10%” is very similar to the “open-ended” term in Fisher because it has a lower threshold, but not an upper limit. The asserted claims of the ’922 patent cover resis- tive changes from 10% up to infinity, while the ’922 patent specification only discloses enough information to achieve an 11.8% resistive change. The specification discloses that artisans hoped to achieve values of around 24%, but had not done so. During prosecution MagSil believed that the highest possible resistive change was 100%. Yet, the claims covered changes far above 20% or 100% even when the inventors could not explain any way to achieve these levels. As MagSil’s expert Dr. Murdock testified, since 1995 when the specification was filed, resistive changes now stretch up to above 600%.
The open claim language chosen by the inventors does not grant them any forgiveness on the scope of required enablement. Open claim language, such as the word “comprising” as a transition from the preamble to the body of a claim, “signals that the entire claim is presumptively open-ended.” Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005). “The transition ‘comprising’ creates a presumption that the recited ele- ments are only a part of the device, that the claim does not exclude additional, unrecited elements.” Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). MagSil seeks some easing of the enablement requirement by using this language in the asserted claims.
As to policy:
The enablement doctrine’s prevention of over broad claims ensures that the patent system pre- serves necessary incentives for follow-on or improvement inventions. In this case, for instance, many additional inventions and advances were necessary to take this technology from a 20% resistance change to the over 600% change in present data storage systems. Moreover this technology area will continue to profit from inventive contributions. Enablement operates to ensure fulsome protection and thus “enable” these upcoming advances.
The problem with overreaching:
MagSil’s difficulty in enabling the asserted claims is a problem of its own making. See Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1380 (Fed. Cir. 2007) (“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.”) This court holds that the asserted claims are invalid for lack of enablement because their broad scope is not reasonably supported by the scope of enablement in the specification. See Fisher, 427 F.2d at 839. MagSil did not fully enable its broad claim scope. Therefore, it cannot claim an exclusive right to exclude later tri-layer tunnel junctions that greatly exceed a 10% resistive change. Id.