The U.S. Court of Appeals for the Federal Circuit has held that a claim does not necessarily lack enablement just because the inventor described aspects of the claimed invention in only the background section of the patent and in a disparaging manner. Callicrate v. Wadsworth Mfg., Inc., Case Nos. 04-1597,-1598 (Fed. Cir. Oct. 31, 2005) (Rader, J.).
Callicrate’s patents disclose an apparatus for castrating large animals that includes a component for tightening a ligature. The background section of the parent specification generally faulted conventional tightening mechanisms, describing a new, winding assembly-type mechanism. In two later applications claiming priority to the earlier application, Callicrate employed means-plus-function claim language that described both the new winding mechanism and the disparaged traditional mechanism.
At trial, Wadsworth successfully argued that Callicrate’s later claims (encompassing the traditional mechanism) were not enabled by the original application and, therefore, were not entitled to the earlier effective filing date. The trial court agreed, holding Callicrate’s failure to describe the traditional mechanism anywhere in the application other than the background section, coupled with the disparaging nature of those remarks, demonstrated that the application did not disclose the use of the traditional mechanism. Without the benefit of the earlier effective filing date, Callicrate’s later patents were found invalid in view of intervening prior art. Callicrate appealed.
The Federal Circuit reversed, holding a patent specification may sufficiently enable a feature under § 112, ¶ 1 even if only the background section provides the enabling disclosure. Furthermore, the Court indicated that disparaging remarks in a background section, or remarks characterizing the prior art as less effective, do not remove those disclosures as enabling references. Finally, the Court rejected Wadsworth’s argument that comments made during prosecution narrowed the scope of the claims, noting the comments merely repeated facts from the background section.
Because the record lacked any indication that one of skill in the art could not make and use the patented invention with the traditional mechanism based on the patent’s disclosure, the Court held that Callicrate’s later patents could properly base priority on their relationship to the earlier one. Accordingly, the Court reversed the district court’s verdict of invalidity and remanded the case.
Practice Note:
Because neither side had raised it the Court did not consider the question of the adequacy of the written description to support the claimed inventionThe content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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