United States: When is Experimentation "Undue"?

Showing uncharacteristic deference to a jury’s findings regarding validity, a divided panel of the U.S. Court of Appeals for the Federal Circuit struck down two patents directed to antennas designed to receive both satellite and terrestrial broadcast signals at the same frequency. Northpoint Technology, Ltd. v. MDS America, Case Nos. 04-1249, -1295 (Fed. Cir. June 28, 2005) (Bryson, J.). The Court upheld jury findings that the patent claims were invalid due to lack of enablement, holding there was substantial evidence to show undue experimentation would be necessary to practice the patents.

Northpoint devised and patented a system that receives both satellite and terrestrial signals in the same frequency range. The preferred embodiment shows a first directional antenna, pointed north, receiving the terrestrial signal, and a second directional antenna, pointed south, receiving the satellite signal. The terrestrial signal does not interfere with the satellite signal because—in the phrase used in the patent claims—the signal received by each antenna will be outside the "directional reception range" of the other antenna.

The defendants argued the "directional reception range" limitation was not enabled because the patents did not disclose how to ensure an antenna would not receive signals from unwanted directions. The defendants introduced evidence that many additional parameters besides physical direction, such as power level, flux density and carrier frequencies—none of which were described in the patents—are necessary to avoid interference between the two antennas. This evidence included testimony of a named inventor and a report by Northpoint to the U.S. Federal Communications Commission detailing interference mitigation techniques. Although Northpoint argued these techniques would be obvious to one of skill in the art, the Court concluded "[b]ased on that evidence, the jury could properly conclude that the techniques for avoiding interference were not so plain to a person of skill in the art so as to obviate the need for any enabling disclosure in the patent." As for the jury finding, the majority stated, "[w]hile determining whether the required amount of experimentation is ‘undue’ is an inherently imprecise undertaking, the jury was properly instructed as to its task, and it reached a reasonable conclusion."

Judge Dyk, writing in dissent, sharply disagreed that the evidence was sufficient to show undue experimentation, arguing the defendants’ evidence merely "establish[es] that experimentation was required to determine the required power level." Observing that no witness testified the experimentation required was "undue," Dyk said "[u]ndue experimentation is a matter of law based on underlying fact," and "the evidence presented by MDS was legally insufficient to establish lack of enablement."

This case highlights that patent prosecutors should take care to avoid later second-guessing as to whether implementation techniques prescribed on the specification are sufficiently enabling by including as much detail as practical, especially if the applicant has published such details elsewhere. Litigators should take note of the deference the Federal Circuit showed the jury finding that the patents have insufficient detail for them to be enabling where too much material known to the applicant was left out of the patent applications.

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