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Tuesday, August 14, 2012
Enabling inventions
One of the fundamental doctrines of patent law is that the patent must contain sufficient technical detail so that someone reading the patent can practice the invention. This is known as the “enablement” requirement. But there is pervasive conceptual confusion about what the “invention” means for this purpose.
Say that I invent a supersonic airplane. What do I have to teach? If the point is that I have to describe one particular supersonic airplane, then most patentees describe one such embodiment, and meeting the requirement is easy. But if the point is that I must teach every supersonic airplane, then it is impossible to meet this standard, because it is impossible to teach an airplane that flies at the speed of infinity.
A case out of the Federal Circuit today provides a great example. In Magsil Corp. v. Hitachi Global Storage, the patentee claimed to have invented an electrical insulator used in hard drives with a change in resistance of “at least 10%.” The Federal Circuit struck this patent down, saying that the patentee had not taught how to make a insulator with an infinite change of resistance. Applying this logic, an inventor who invents a faster-than-light spaceship could not claim a faster-than-light spaceship, because he cannot teach every spaceship that flies at all speeds up to infinity (faster than light is still not infinity).
The Federal Circuit comes back and says that the patentee brought this problem on himself, because he should include both a lower and upper bound for the resistance (i.e. “at least 10% and not more than 12%”). But it is important to realize that an accused infringer in litigation has an unlimited number features to pick bones with. By default, patent law sets the upper bound for everything at infinity unless it is expressly disclaimed. By the Magsil logic, every patentee must specify the upper and lower bound for the shades of paint color, the upper and lower bound for the number of screws, and then the upper and lower bound for the size of each individual screw, etc. Nobody does this, so taking Magsil seriously would invalidate every patent in existence.
What this shows is that the Federal Circuit oscillates between conceptualizing the invention as an embodiment and as an idea. If the enablement doctrine is conceptualized as requiring only one embodiment of what is claimed--a supersonic airplane or an insulator with at least 10% change of resistance--then the requirement is meetable and is usually met. If the enablement requirement is conceptualized to require teaching every embodiment of what is claimed--every supersonic airplane or every insulator with at least 10% change of resistence--then it is impossible to meet. And what happens in reality is that the courts subtly oscillate between the two conceptions, to strike down patents they don't like and uphold the ones they do, all sub rosa.
Posted by Tun-Jen Chiang on August 14, 2012 at 02:47 PM | Permalink
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Comments
While the holding of Magsil (as you describe it) sounds questionable, I don't think the enablement doctrine can be validly "conceptualized as requiring only one embodiment of what is claimed," nor do I think requiring enablement of the full scope of a claim is necessarily impossible to meet.
A patentee's monopoly rights are not limited to the specific embodiment they invented. They extend to any embodiment within the scope of the claims. The enablement requirement is necessary to prevent patentees from obtaining monopoly rights that are broader than what they invented.
I don't think requiring enablement of the full scope of the claim is as prohibitively difficult as you suggest. First, the situations in which one might inadvertently capture an infinite range seem fairly uncommon and usually avoidable. I can't see, for example, how one would accidentally claim infinite screws. Second, patents are construed in light of the understanding of those of skill in the art, so unless the defendant can prove that one of skill would consider an ostensibly straightforward claim to include some impossible quantity, they should not be able to prevail on enablement even if the claims could theoretically be read that way. Third, a patentee doesn't need to specifically teach how to make each and every possible embodiment. As long as they teach enough so those skilled in the art could figure out how to make other embodiments, the patent is enabled.
That said, I don't disagree that enablement can be difficult to apply in practice. But I do think it is a necessarily part of patent law, and I don't think there is any attraction to the idea that only one embodiment needs to be enabled.
Posted by: AF | Aug 14, 2012 5:08:19 PM
AF, you obviously have some background about patent law, so I'll go inside baseball here. A pretty straightforward claim to a screw (e.g. "an object with a spiral groove, wherein said object is capable of being inserted into material by a rotating motion") would encompass all screws of any size and any material. So if somebody invents a gigantic screw in the future that is designed to drill a tunnel to the core of the earth, that would be a "screw" as I have just claimed it.
Unless you think there is something wrong with the claim that I wrote (which I admit I wrote quickly), or you think that a screw as I have claimed it should not be found to be patentable at all, please tell me how someone can teach how to make and use a gigantic drill to the core of the earth. And I'll be super generous and ask for an enabling description as of today, not of the 3rd century BC when screws were actually invented.
Posted by: TJ | Aug 14, 2012 5:23:15 PM
TJ, your screw patent would not have an enablement problem. To the extent that large sizes and materials were already known in the art at the time of the patent, the claim would be enabled because "[i]t is well-established . . . that a specification need not disclose what is well-known in the art.” Streck v. Research & Diagnostic Systems, 665 F.3d 1269, 1288 (Fed. Cir. 2012). To the extent that later technology is developed that comes within the scope of the claims, you would not have an enablement problem because "[t]he law does not expect an applicant to disclose knowledge invented or developed after the filing date. Such disclosure would be impossible.” Chiron v. Genentech, 363 F.3d 1247, 1254 (Fed. Cir. 2004).
What you seem to be missing is the distinction between a patent that describes the invention in general terms that may *cover* later improvements on that technology (eg, your screw patent), which is indeed unavoidable, and a patent that actually *claims* later-developed technology the inventor did not invent (arguably, the patent in Magsil).
The distinction between claiming and covering is important, in part because of the problem you describe and in part because of the impact on future innovation. A patent that merely covers a future invention does not necessarily invalidate the future invention, because invalidity for anticipation requires that all of the elements and limitations of the claim be found within a single prior art reference. Your screw claim would not anticipate a future claim for a screw large enough to drill to the core of the earth, because it does not contain any element relating to size or function. But if you went on to add a dependent claim stating, "the invention of claim 1, wherein the device is between .01 inch and 1000 miles in length," then you are *claiming* a screw that you did not invent and also invalidating the patent of the future inventor who actually does figure out how to drill to the center of the earth.
Needless to say, this distinction isn't always easy to draw. The infamous telegraph patent, for example, could be characterized as describing the invention broadly rather than claiming an element that was never invented. Ultimately, the inquiry is a practical one, requiring that the actual invention described in the specification be "commensurate with the scope of the claims." Sitrick v. Dreamworks LLC, 516 F.3d 993, 999 (Fed. Cir. 2008). Courts' attempts to enforce the requirement that claims be commensurate with the invention do involve judgment, but I don't think that demonstrates that the concept of enablement is incoherent or that the judgments being made are necessarily arbitrary or sub rosa.
Posted by: AF | Aug 15, 2012 11:51:11 AM
AF, citing cases won't help you here, because for every case I can find a countercase.
1. Saying that large sizes were "well known in the art" is simply wrong here. Under standard principles, only the things that can be actually made by a person of skill in the art are considered "known." If a gigantic drill is known in the art, so too would an infinite change in resistance in Magsil.
2. "The law does not expect an applicant to disclose knowledge invented or developed after the filing date"? Not true. See Automotive Tech v. BMW, 501 F.3d 1274, 1281 (Fed. Cir. 2007) (invalidating claim to a "sensor" because the spec did not teach how to make a later developed electronic sensor).
3. I must admit I find you distinction between "claiming" and "covering" incomprehensible. A claim covers what is claimed.
4. Your then seem to rephrase the point as being about infringement versus anticipation. If I get you right, you seem to say the test is this: (a) a patent "covers" what its general language says, but (b) the claim *claims* (for clarification I'll add stars to denote your special usage of *claims*)--and thus spec needs only teach--what is claimed so specifically as to invalidate a later patent. If a later blocking patent is not anticipated, then the later technology is not *claimed*, and there is no need for the spec to teach the later technology.
That test renders enablement utterly meaningless and is always met, because I can teach one embodiment (no matter how rudimentary) and then claim all future variants in general language. Take the classic Incandescent Lamp case. I invent a barely working carbon paper lamp. I claim "an incandescent lamp" in general language. I do not anticipate later lamps, so by your test there is no need for my spec to enable those later lamps. Of course that is not what the Supreme Court actually decided. Once again, for every case there is a countercase.
5. At bottom, you basically concede this with you "distinction isn't always easy to draw" and "the inquiry is a practical one" lines. Whenever courts and lawyers say that "the inquiry is a practical one," that almost always says to me that they have no theory and are making I-know-it-when-I-see-it judgments.
Posted by: TJ | Aug 15, 2012 2:55:41 PM
TJ, to your last point I would respond that whenever law professors say that the doctrine is entirely incoherent and that for every case there is a countercase, they are usually taking particular dicta out of context and not presenting a fair reading of the overall state of the law. Which isn't to deny that judges and (even more frequently) litigants also take dicta out of context on occasion.
One clear error in your article is your reading of Invitrogen Corp. v. Clontech Laboratories, Inc as creating a “one-embodiment-enables-everything” rule. The statement you rely on is the statement that "enablement requirement is met if the description enables any mode of making and using the invention." The key words there are "mode of making and using." Invitrogen does *not* say that a single embodiment can enable the full scope of a claim. It says that when the claims "are not limited by the method of achieving" the claimed invention, *then* a single "mode of making" the invention is enabling -- precisely because the mode of making the invention is not part of the claim. As the court acknowledged, the analysis would be different if the method of making the invention was part of the claim. This is consistent with the idea that the full scope of the *claims* must be enabled.
Posted by: AF | Aug 15, 2012 3:27:56 PM
I don't want to divert the discussion (readers interested in the article can click the link for themselves), but I wasn't citing Invitrogen as by itself "creating" a one-embodiment-enables-everything rule. I was citing it as one member of a long line of cases that collectively reflect the rule, and as the case that most clearly articulates the underlying economic reasoning for the rule. Every lawyer is familiar with courts inserting qualifications that back away from the full implications of their underlying logic. Saying my citation of Invitrogen is a "clear error" is like saying that citing Lawrence v. Texas as reflecting support for a right of same-sex marriage is clear error because the opinion contains a carve out of that specific issue.
Posted by: TJ | Aug 15, 2012 3:47:28 PM
TJ, I read your article and respectfully don't believe that it establishes that there are a "long line of cases that collectively reflect" a rule that "one embodiment enables everything." The main case you cite is Invitrogen and it holds something quite different; it holds that one *mode of making* an embodiment of the invention enables the entire invention *when the mode of making the invention is not claimed.* Unlike the rule that you want to extract from the case law, this rule is logically consistent with the line of cases holding that "full scope" of a claim must be enabled. The evidence that you cite in your article does not support your assertion that there are two irreconcilable lines of enablement cases. Again, this is not to deny the existence of some of the tensions you identify. But I think you overstate your case.
Posted by: AF | Aug 15, 2012 4:37:39 PM
AF, I think we are at the end of diminishing marginal returns here. You say that I haven't established there is a long line of cases that establishes a one-embodiment-enables-everything rule. But you yourself quoted a bunch of cases for several propositions that then logically reduced to exactly such a rule. See my point (4) previously.
More broadly, it takes a theory to beat a theory. I still think Invitrogen is a very good example of one side of the contradiction, because it articulates the economic logic. But, regardless, saying that Invitrogen is a bad example doesn't get you very far. You yourself admit that there are "tensions" between the cases. Once you concede that basic point, the task is not simply to pick bones with my examples. You need to affirmatively articulate a theory of why the "tensions" are not actually irreconcilable contradictions. Simply asserting "Chiang overstates on 'contradiction' but he correctly identifies some 'tension,' but I won't tell you why the tensions are not contradictions" is a hit-and-run argument.
Posted by: TJ | Aug 15, 2012 5:12:54 PM
TJ, I tried to explain why in my view the tensions aren't irreconcilable contradictions. The tensions I see in the case law result from courts' more or less conscious struggles to articulate the precise line between claims that are written at an appropriate level of generality and claims which are impermissibly overbroad; they do not result from courts' sub rosa choice between the two allegedly irreconcilable propositions you propose. Good discussion.
Posted by: AF | Aug 16, 2012 7:19:37 AM
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