Posts Tagged “Enablement”

When your patent attorney prepares your patent application he or she is trying to help. But like an inept version of Paladin (Have Gun – Will Travel) sometimes the bullet will end up in your foot.

One of these miss-aimed bullets is the almost catechismal recitation of the weasel words “those having ordinary skill in the art will appreciate that the specific devices and processes described herein are intended as merely illustrative of their more general counterparts” or other similar boilerplate. A similar bullet is the slavish use of “exemplary embodiment” language.

These locutions are intended to arm you to do doctrine-of-equivalents battle against infringers by broadening your claims, but there are times when they can work against you.

In a recent Court of Appeals case, Edward Jung’s patent claim for a circuit that included a “well-charge-level controller” was rejected as being anticipated by an earlier patent. That is, the examiner believed Jung’s claim was broad enough to include the earlier circuit, and so, if allowed, would make the prior art infringing.

Jung, at a late point in the discussion, pointed out that his controller, as described in the specification, was much more complex than the prior art reset controller and, given those complexities, would not turn the prior art circuit into an infringing product. Basically Jung was arguing that he had defined his complex controller in the specification and thus did not have to re-define it in the claim.

And the examiner agreed…up to a point. The examiner, the Board of Appeal, and the Court of Appeals agreed with Jung that a patent on his complex controller would not turn the prior art into an infringing product. But, as the Court of Appeals pointed out:

Jung “had the opportunity to amend the claims to achieve more precise claim coverage, i.e., to limit the claim to the ‘exemplary process’ disclosed in the Specification, but did not do so.” … Because the specification explicitly noted that the examples were merely exemplary and were made only to show how the invention “typically” worked, the Board [properly] determined that the claim language could not be limited to those embodiments. [emphasis added]

The lesson is NOT that you should avoid making clear that your invention is broader than the specific embodiments. The lesson is that your specification should try to describe your invention as separate from its embodiments. The description of the invention should be definitive; its embodiments can be exemplary.

As an aside, you should note that the Jung’s real problem is that he didn’t know when to quit arguing. Long ago a dependent claim that included the complexities of his controller had been allowed but he continued to fight the rejection of his independent claim up to the Court of Appeals for the Federal Circuit.

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Conventional wisdom dictates “Make your claims as broad as possible” but some inventors and their attorneys seem to forget that, broad or narrow, the claims have to define the invention you have, not the invention you wish you had. In a recent case, Liebel-Flarsheim Company overplayed their hand by filing (and getting) overly broad claims, made a losing bet by suing Medrad for infringing, and capped it all off by doubling down with an appeal in which their patent was ruled infringed but invalid.

Liebel’s invention was a fluid injector with a pressure jacket to contain the high pressures involved. At some point in the prosecution of their patent application someone got the bright idea that they could get broader protection by leaving out some of the limitations in their claims (a truth); they removed all references in the claims to the pressure jacket. The patent examiner allowed the claims.

The patent examiner did them no favor. When Liebel sued Medrad, they first lost the claims construction battle (the judge decided that the claims required the pressure jacket) but then won the appeals battle (the CAFC said NO pressure jacket was required). Based on the new claims construction, the district court concluded that Liebel’s patent was infringed (by the jacketless Medrad device) but that the claims were invalid because Liebel had failed to comply with the written description and enablement requirements!

This conclusion was to be expected – Liebel had never successfully made a jacketless system; their engineers testified that the use of a jacket was not a mere design option and that one of skill in the art would not know how to make a jacketless system; the specification described jacketless systems as “impractical“; the inventors had tried unsuccessfully to produce a jacketless system and that it was “too risky” to pursue further.

Yet, in spite of this understanding of the limits of the invention, in spite of having filed all claims with the limitation of a pressure jacket, Liebel and its patent attorney decided to delete these limitations from the claims and get a patent on the invention they wish they had invented.

Although I put most of the blame on Liebel’s patent attorneys, I also blame the patent examiner for allowing claims for which there was little or no support in the specification – no matter how loudly the patent attorneys cried.

Remember, to paraphrase Don Rumsfeld, you have to go to the patent office with the invention you have, not the invention you want.

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In drafting your claims it is so tempting to take that extra bite out of the apple. You know you want to get a patent issued to stake out market territory and you know what your product goals are. With a public release date looming your patent attorney says you’ve got to file now. Surely it will all be working soon. So what do you file: an application for what you have or an application for what you plan to have?

A Court of Appeals for the Federal Circuit decision from last summer confirmed what you already knew: an invention without enablement is not a [patentable] invention. Align Technologies, the company behind Invisalign® braces, was sued by Ormco Corp. for allegedly infringing a series of patents relating to computer-aided design and manufacture of custom orthodontic appliances.

Ormco’s patent claims seemed to cover the Invisalign system. However, during claim construction (a determination by the judge of exactly what the claims mean) Ormco was told that their claims only covered a process in which final treatment positions are automatically determined (viz., by computer software) whereas the Invisalign system uses “skilled operators” to determine the final positions of the teeth. The judge issued a summary judgement of non-infringement. If that were not bad enough for Ormco, the patent was also declared invalid for lack of enablement.

 How did Ormco wind up with no infringer to sue and no valid patent? Trying to reconstruct the back story, I think this is what happened. Ormco was trying to develop a fully automated system but had a market-ready orthodontic system even without that final computerized step. Anticipating success, they applied for their patent.

At the same time their patent attorneys were doing what is generally accepted to be the best strategy – they filed the broadest claims possible, claims that did not include the limitation of the computerized step. Claims that were ultimately allowed.

Once Ormco was successfully in the marketplace I suspect they gave up on, or at least greatly reduced, their efforts to get the computerized aspect of the system working; after all, dentists were probably just as happy to see a system that required their skilled intervention.

All was well until the Court looked at the specification and the prosecution history and determined that the broad allowed claims must actually be construed as narrowed by requiring a fully automatic process. Apparently, in the specification and history, it was clear that the inventors’ primary basis for distinguishing their invention from the prior art was its high level of automation.

Then, when one of the inventors testified that:

  • Ormco had never attempted to create a computerized system that automatically determined tooth positions without human decision making;
  • The manual override had been used on all of the approximately forty cases treated using the Insignia product;
  • It was a goal to have the software generate final tooth positions that would not require use of the override, [but] variations in human anatomy had prevented the attainment of that goal; and
  • [He] was also unsure if the problems due to variations in human anatomy could be overcome,

the invalidity for lack of enablement case was sealed. As the court concluded:

If an inventor attempts but fails to enable his invention in a commercial product that purports to be an embodiment of the patented invention, that is strong evidence that the patent specification lacks enablement.

So if you are still making adjustments in your invention when your patent gets filed, be aware that your lack of enablement may let your infringers take a bite out of your market.

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 Everybody wants broad patent claims; have you ever pushed your patent attorney to include something in a claim that you really haven’t quite figured out how to implement just to “cover all the bases”? If so, you may be treated like a crash test dummy when you try to enforce your patent.

Back in the late 1980’s Automotive Technologies International had an important idea – how to make an accelerometer to trigger side-impact airbags (front impact sensors don’t respond quickly enough) – and obtain a patent to protect it. Twelve years later it sued a laundry list of automobile companies for infringement. During the “claims construction” portion of the trail, ATI pushed the court to include both mechanical and electronic sensors in the scope of all the claims. [BAH NOTE: presumably this was done because the alleged infringing sensors were electronic]. Having won that battle, ATI now proceeded to lose the war with a flawed specification.

ATI fell into a familiar trap. Having invented a fast acting mechanical accelerometer (in which a hinged plate swings to close the electrical contact), they recognized that certainly there must be an electronic way to sense the movement of the mass and didn’t want to lose out on protecting their market to someone with an electronic solution. So they described the concept (viz,. electronic instead of mechanical sensing of mass movement) and hoped (probably) that they could make a doctrine-of-equivalents argument against whoever came up with an electronic sensor, by pointing to the section of the specification in which they clearly recognized that an electronic sensor was an equivalent approach.

Unfortunately for ATI, when your whole invention is involved, when you spend a page of text and 5 figures describing the mechanical approach, when your “equivalent” approach is described in only one short paragraph and one “conceptual” figure (ATI Electrical Sensor Figure) you are not going to convince anyone that you were doing anything but speculating that the electronic version could be made to work.

The specific legal point being argued was whether ATI had fully “enabled” its claims. Enablement – the requirement that you describe your invention in enough detail so that the rest of us can make your invention with “undue” experimentation – is closely related to, but separate from, reduction-to-practice. RTP is what defines a completed invention (inspiration -> perspiration -> RTP) while enablement is the description of the completed invention that you include in your patent specification. Enablement is what you share with society in exchange for getting your limited monopoly.

With hindsight we see that ATI tried to obtain protection for a concept, not an invention. They should not have tossed in the description and figure for their concept of an electronic side impact sensor. Instead, they should have focused their R&D efforts to complete this next generation sensor and filed an application on it in its own right.

How about you? Have you tried to stretch a patent application to cover something you only believe will work? It’s a shortcut that might get you a patent that fails you when the legal hit comes along – side or front impact.

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