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The Specification Must Enable the Entire Scope of a Claim, Including the Novel Aspect, to Satisfy the Enablement Requirement

06-1013
September 06, 2007

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Last Month at the Federal Circuit - October 2007

Judges: Lourie (author), Rader, Prost

[Appealed from: E.D. Mich., Judge Cleland]

In Automotive Technologies International, Inc. v. BMW of North America, Inc., Nos. 06-1013, -1037 (Fed. Cir. Sept. 6, 2007), the Federal Circuit affirmed the district court’s grant of SJ of invalidity of claims 1-44 of Automotive Technologies International, Inc.’s (“ATI”) U.S. Patent No. 5,231,253 (“the ’253 patent”), holding that the claims of the ’253 patent were invalid for lack of enablement.

The technology at issue involves crash sensing devices for deployment in an occupant protection apparatus, such as an airbag, during an impact or crash involving the side of a vehicle. The ’253 patent, entitled “Side Impact Sensors,” is directed to a velocity-type sensor, which is a sensor that triggers when a velocity change sensed in a crash exceeds a threshold value.

In May 2001, ATI filed a complaint against numerous defendants in the automotive industry, alleging infringement of the ’253 patent. In March 2004, the district court conducted a Markman hearing and construed the relevant claims. In light of the district court’s claim construction, several defendants, including Siemens Automotive Corporation, Ford Motor Company, and Hyundai Motor Company, filed a motion for partial SJ of noninfringement, which the district court granted. Defendants Calsonic Kansei Corporation (“Calsonic”) and Nissan North America, Inc. (“Nissan”) also filed a separate motion for SJ of noninfringement, but the district court denied their motion. In addition, various defendants filed a motion for SJ that claims 1-44 were invalid for failing to comply with the written description requirement under 35 U.S.C. § 112, ¶ 1. The district court granted this motion.

In addition, defendant Delphi Corporation (“Delphi”) filed a motion for SJ that the claims of the ’253 patent were invalid for lack of enablement. The district court granted Delphi’s motion as well. It noted that ATI advocated for and obtained a broad claim construction for the phrase “means responsive to the motion of said mass upon acceleration of said housing in excess of a predetermined threshold value, for initiating an occupant protection apparatus” to include both mechanical side impact sensors and electronic side impact sensors. However, because it found that the specification did not enable the electronic sensors, it concluded that the full scope of the claims was not enabled and that the claims were invalid for lack of enablement.

ATI appealed from the district court’s grant of SJ of noninfringement and invalidity, while Calsonic and Nissan cross-appealed from the district court’s denial of their SJ motion. On appeal, the Federal Circuit affirmed the district court’s finding of invalidity based on the enablement requirement and, given its decision on enablement, did not reach the other issues on appeal.

With respect to enablement, the Federal Circuit observed that the enablement requirement is set forth in 35 U.S.C. § 112, ¶ 1, and that it is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation. The Court noted that the district court construed the phrase “means responsive to the motion of said mass” to include both mechanical and electronic sensors, and that the parties did not dispute that construction, nor did they dispute that the specification enabled mechanical sensors. The Court noted that under the district court’s construction, however, the full scope must be enabled, and agreed with the district court that the specification did not enable the full scope of the invention because it did not enable the electronic sensors.

The Court first looked at the specification and noted that although two full columns and five figures of the ’253 patent discussed mechanical sensors, only one short paragraph and one figure related to an electronic sensor. Importantly, stated the Court, “that paragraph and figure [did] little more than provide an overview of an electronic sensor without providing any details of how the electronic sensor operate[d].” Slip op. at 14. The Court noted that the figure “represent[ed] a concept of an electronic sensor, not a figure providing details that would show one skilled in the art how to make or use an electronic side impact sensor” and that “the textual description of [the figure], which [was] the only description of an electronic sensor in the patent, provide[d] little detail concerning how the electronic sensor is built or operated.” Id. at 14-15. In addition, the Court noted that the inventors stated that the figure was “not meant to represent any specific design or sensor or anything, just a concept” and “admitted that the specification fail[ed] to disclose structure for any of the technologies mentioned.” Id. The Court concluded that this “general description . . . fail[ed] to provide a structure or description of how a person having ordinary skill in the art would make or use an electronic side impact sensor.” Id. at 15.

ATI argued that despite the limited disclosure, the knowledge of one skilled in the art was sufficient to supply the missing information. The Federal Circuit did not agree, noting that “[a]lthough the knowledge of one skilled in the art is indeed relevant, the novel aspect of an invention must be enabled in the patent.” Id. at 15-16. The Court observed that during prosecution, ATI had stated that using inertial or acceleration sensors to sense side impacts represented a “breakthrough” in side impact crashing. It reasoned that “[g]iven that the novel aspect of the invention [was] side impact sensors, it [was] insufficient to merely state that known technologies [could] be used to create an electronic sensor.” Id. at 16. The Court explained that “the rule that a specification need not disclose what is well known in the art is ‘merely a rule of supplementation, not a substitute for a basic enabling disclosure.’” Id. (citation omitted). It added that the “omission of minor details does not cause a specification to fail to meet the enablement requirement. However, when there is no disclosure of any specific starting material or of any of the conditions under which a process can be carried out, undue experimentation is required.” Id. (citation omitted).

Moreover, the Court observed that the specification stated that “[s]ide impact sensing is a new field,” and that ATI stated at the time it filed the application for the ’253 patent that it did not know of any electronic sensors used to sense side impact crashes. It reasoned that, given these facts, “it was especially important for the specification to discuss how an electronic sensor would operate to detect side impacts and to provide details of its construction.” Id. at 17. The Court added that “the specification provide[d] ‘only a starting point, a direction for further research’ on using electronic sensors for sensing side impact crashes; it [did] not provide guidance to a person of ordinary skill in the art on how to make or use an electronic side impact sensor.” Id. It concluded that “[t]he specification fail[ed] to provide ‘reasonable detail’ sufficient to enable use of electronic side impact sensors.” Id.

The Court stated that the inadequacy of the description of an electronic side impact sensor was highlighted by the comparison with the extensive disclosure of how to make and use a mechanical side impact sensor, consisting of two full columns. It also relied on Delphi’s expert and inventor’s testimony as additional support for the conclusion of lack of enablement. Specifically, Delphi’s expert discussed at length how a great deal of experimentation would have been necessary, and one of the inventors stated that, based on his experience, electronic sensors for detecting side impact crashes could not be obtained commercially and would have had to be developed. The inventor also admitted that he had never built such a sensor. In so relying on this testimony, the Federal Circuit rejected the testimony of ATI’s expert, noting that his testimony failed to provide any detail regarding why no experimentation was necessary and, thus, did not create a genuine issue of material fact as to enablement.

Finally, the Federal Circuit also rejected ATI’s argument that because the specification enabled one mode of practicing the invention, the mechanical side impact sensors, the enablement requirement was satisfied. The Court reasoned that “[d]isclosure of only mechanical side impact sensors does not permit one skilled in the art to make and use the invention as broadly as it was claimed, which includes electronic side impact sensors.” Id. at 19. The Court noted that electronic side impact sensors were not just another known species of a genus consisting of sensors, but were distinctly different sensors compared with the well-enabled mechanical side impact sensors that were fully discussed in the specification. It concluded that, thus, in order to fulfill the enablement requirement, the specification must enable the full scope of the claims that includes both electronic and mechanical side impact sensors, which the specification failed to do.