The U.S. Court of Appeals for the Federal Circuit affirmed the district court’s grant of summary judgment in favor of defendant, holding the patent in suit invalid for lack of enablement and anticipation. Liebel-Flarsheim Co. v. Medrad, Inc., Case Nos. 06-1156, -1157 (Fed. Cir., Mar. 22, 2007) (Lourie, J.).
Liebel asserted four patents against Medrad: two were directed to "a front loading injector … for delivering a contrast agent to a patient" and two were directed to "a computer-controlled injector" for controlling a plunger in a syringe. As to the front loading injector patents, each matured from the identical specification that specifically mentioned that a "pressure jacket" was necessary to practice the claimed invention and that specifically taught away a "jacketless system" as being impractical. During prosecution, however, Liebel was informed that Medrad, a competitor, was using jacketless injectors. Liebel subsequently broadened several of its claims to read on Medrad’s injectors. In doing so, however, the court termed Liebel the "Pyrrhic victor," in that its initial success of having broad claims issue, ultimately led to the patent being held invalid as not enabling the claimed "jacketless system."
Medrad argued that the broadened claims were invalid under §112, ¶ 1 in that the specification did not describe "the manner and process of making and using" the invention "so as to enable any person skilled in the art to make and use it" without undue experimentation. In this case, the Court noted that in instances in which the specification teaches away from an aspect of the claimed invention, that, in and of itself, is "evidence that at least a significant amount of experimentation would have been necessary to practice the claimed invention." In addition, the specification did not provide any support relating to the "making or using" of a jacketless system. After noting that the inventors had previously made unsuccessful attempts to produce a "jacketless system" the Court concluded that no genuine issue of material fact existed with respect to whether one of ordinary skill in the art must engage in undue experimentation to practice a jacketless system based on the teachings at hand and affirmed the district court’s finding of invalidity.
As for the two "computer-controlled injector" patents, Medrad asserted that its own patent disclosed "every limitation of the claimed invention, either explicitly or inherently," and thus, invalidated Liebel’s patents under §102. Although the Medrad prior art had been previously disclosed to the patent examiner, the Court concluded that the prior art clearly disclosed the subject matter claimed in Liebel’s broadened patent claims. The Court noted that Liebel successfully broadened its claims during prosecution and urged a broad construction during the claim interpretation phase of the district court proceeding. As a result of this success, the Federal Circuit found the broadened claims were anticipated.
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