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Federal Circuit reiterates that full scope of claim must be enabled to meet enablement requirement

By McKee, Voorhees & Sease, P.L.C.

In a decision last week, the Federal Circuit affirmed a district court's decision holding several claims of two patents invalid for lack of enablement.  The district court held that while a portion of the scope of the claims was enabled, the full breadth of the claims were not, and as a result, the claims did not meet the enablement requirement of § 112.

The Federal Circuit affirmed.  The court stated that even if the claims were enabled for one embodiment, they were not enabled for a second embodiment also falling within the claim scope.  The court analogized another recent case with similar facts where although two embodiments were covered by the claims, only one was enabled by the specification, leading to a conclusion of invalidity.

The patentee's case was also not saved by the proffered expert testimony, as the plaintiff's expert was an expert in only one of the two applicable fields, and as a result could not opine competently regarding the enablement of the claims in the second field.  As such, because the full scope of the claims was not enabled, the court affirmed the summary judgment of no enablement.

More detail of Sitrick v. Dreamworks, LLC after the jump.

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Full post as published by FileWrapper on February 04, 2008 (boomark / email).