In a sequel to its early 2007 decision in Liebel-Flarsheim Co. v. Medrad, Inc., the U.S. Court of Appeals for the Federal Circuit denied another patentee’s attempt to have its claim scope and enablement too in Automotive Technologies International v. BMW, et al., Case Nos. 06-1013, -1037 (Fed. Cir., Sept. 6, 2007) (Lourie, J.; Rader, J.; Prost, J.). when the unanimous panel upheld the district court’s ruling that the asserted claims were invalid for lack of enablement.
In 2001 Automotive Technologies International (ATI) filed a complaint against various entities alleging infringement of U.S. Patent No. 5,231,253. The technology at issue involved "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." Following a Markman hearing, the district court issued an order construing the relevant claims, one of which included the means-plus-function limitation of "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." The parties agreed that "the stated function is initiating an occupant protection apparatus." ATI, however, argued that the corresponding structure included "not only mechanical switch assemblies, but also electronic switch assemblies, as identified in the specification." After the district court adopted ATI’s construction of that limitation, various defendants filed, inter alia, a motion for summary judgment that the asserted claims were invalid for failure to comply with the enablement requirement set forth in 35 U.S.C. § 112, ¶ 1. The district court granted the motion, finding that "the specification failed to enable electronic sensors for sensing side impacts." ATI appealed.
On appeal, the Federal Circuit upheld the district court’s ruling. As an initial matter, the Federal Circuit noted that the district court construed the relevant limitation "to include both mechanical side impact sensors and electronic side impact sensors." (Emphasis added.) Thus, "[u]nder the district court’s construction … that full scope must be enabled." Turning to whether that full scope had in fact been enabled, the Federal Circuit determined that it had not.
In its factual analysis, the Federal Circuit highlighted three areas in the record. First, the Court noted the disparity in the amount of detail dedicated to explaining mechanical side impact sensor vis-à-vis electronic side impact sensors—the patent’s explanation of the former far outstripped its explanation of the latter. Second, the Court pointed to references in the record where ATI, or the inventor, characterized the sole figure showing an electronic side impact sensor as nothing more than a "conceptual view" of the technology. A drawing of a concept, the Court found, does not suffice to provide "details that would show one skilled in the art how to make or use an electronic side impact sensor." Finally, the content provided within the specification simply "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."
The Court’s legal analysis focused on the requisite nexus between a patent’s "novel aspect" and "the knowledge of one skilled in the art." ATI argued that "despite [the patent’s] limited disclosure [regarding electronic side impact sensors], the knowledge of one skilled in the art was sufficient to supply the missing information." The Court disagreed, finding ATI’s arguments circular and noting that "[g]iven that the novel aspect of the invention is side impact sensors, it is insufficient to merely state that known technologies can be used to create an electronic sensor." In sum, "[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."
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