Patent Law

21st Century Schizoid Everyman

By Gary Odom and Jordan Kuhn

Sitrick v. Dreamworks stirred muddy water. Marc Brown of McDermott Will & Emery worries: "Without realizing it, a recent series of Federal Circuit decisions has established a standard for enablement that may arguably be higher than any patent can meet." Is the concern justified? Why hasn't enablement had a head-on collision with its alter ego behind obviousness and the doctrine of equivalents?

In Sitrick v. Dreamworks, the CAFC stretched § 112, ¶ 1 enablement into full-scope claim coverage:

The "enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation." AK Steel Corp. v. Sollac, 344 F.3d 1244 (Fed. Cir. 2003)

The full scope of the claimed invention must be enabled. See Auto. Techs. Int'l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1285 (Fed. Cir. 2007).

Sitrick claimed "video." Sitrick disclosed video games. Sitrick asserted against Dreamworks for movies. The claims were invalidated. Be careful what you assert against.

ATI v. BMW et al was similar. The ATI patent had means claims, applicable to mechanical and electronic sensors. The spec elaborated on mechanical side-impact sensors, but fell short on electronic sensors, the asserted technology. Hence killed by the written description requirement.

§ 112, ¶ 1 does require "full, clear, concise, and exact terms." But no attention was paid to the case law incongruity between "undue experimentation" in AK Steel and "full scope" enablement in the ATI and Sitrick cases.

There's a gaping double standard of "ordinary skill in the art" between the current enablement regime and prior art invalidity. KSR-empowered obviousness, with its omnificent, creative everyman, allows leaps of technology to damn patentability. In Leapfrog v. Fisher-Price & Mattel, an electronic child learning toy is obvious in view of an ersatz mechanical version lacking claimed features, combined with other technologies necessary to make the old toy seem shiny.

In Sitrick, Joe "KSR" Ordinary would have had no problem adapting the video teaching to movies.

Sitrick and ATI both went to claim scope covering different but equivalent technologies.

Where is the line now drawn for § 112, ¶ 1? What of enablement for the same technology? Is a genus claim invalid for asserting against a different species from that disclosed when the technologies are identical?

At what point does "undue experimentation" take the stage?

Just a few years ago, Mr. Undue was more reticent. Judge Rader, who penned Sitrick, also wrote CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333 (Fed. Cir. 2003).

Improvement and selection inventions are ubiquitous in patent law; such developments do not alone cast doubt on enablement of the original invention. See Hormone Research Found., Inc. v. Genentech, Inc., 904 F.2d 1558, 1568 (Fed.Cir.1990) (citing In re Hogan, 559 F.2d 595 (CCPA 1977)). In general, few patented inventions are an immediate commercial success. Rather, most inventions require further development to achieve commercial success. Thus, additional inventive work does not alone show nonenablement.

As Hal Wegner of Foley & Lardner observed:

In contrast to Sitrick, early Supreme Court precedent has expressed approval for broad generic protection for a pioneer inventor who has provided only a limited scope of enablement, including examples Elias Howe's sewing machine needle and King C. Gillette's safety razor.

If there is any logical place to demarcate a decimating enablement standard under the new regime, it is at obvious developments in the same technology.

In KSR obviousness, everything is obvious to try. The combinatorial possibilities or permutations must be infinite before experimentation becomes undue.

Roll in the doctrine of equivalents, underpinned by what one of ordinary skill would consider similar. The recent CAFC Honeywell v. Hamilton Sundstrand cited the cornerstone of DOE.

Under the doctrine of the equivalents, "a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is 'equivalence' between the elements of the accused product or process and the claimed elements of the patented invention." Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997) (citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950)).

DOE goes down in prosecution estoppel flames over foreseeability. Honeywell again -

By its very nature, objective unforeseeability depends on underlying factual issues relating to, for example, the state of the art and the understanding of a hypothetical person of ordinary skill in the art at the time of the amendment.

Like obviousness, much equivalence is foreseeable to a court-empowered everyman. But, under the most recent CAFC rulings, Joe Ordinary couldn't enable his way out of a paper bag. Guess that's the difference between hindsight and real problem-solving, to a hypothetical CAFC patent everyman.

Something is obviously wrong with patent case law when "one of ordinary skill in the art" is so divergently defined.

Full post as published by The Patent Prospector on April 26, 2008 (boomark / email).