Liebel-Flarsheim v. Medrad (Fed. Cir. 2007). Patently-O Commentaries
Dennis Crouch’s blog posting of March 22, 2007 entitled: “The New Law of Enablement” provides a commentary on the US Court of Appeals for the Federal Circuit case of Liebel-Flarsheim v. Medrad (Fed. Cir. 2007). This posting has inspired an exceptionally long thread of commentary, giving rise to this commentary as a consequence.
Essentially, the CFCA ruled on a claim to a mechanical drive for a hypodermic needle injector for use with a disposable syringe. The patent included a description which addressed inclusion (only) of a pressure jacket to protect the disposable syringe from bursting under pressure. The CFCA ruled that such claims were invalid when the patent owner attempted to apply the claims against a competitor manufacturing a needle injector without a pressure jacket.
The patent specification indicated in the background discussion that existing disposable syringes required a pressure jacket because syringes that are able to withstand high pressures are “expensive and therefore impractical where the syringes are to be disposable.” The CFCA observed that this taught away from the use of the new style mechanical drive needle injector for use with a disposable syringe in the absence of a pressure jacket.
The competitor developed a mechanical drive hypodermic needle injector system for use with a disposable syringe that did not require a pressure jacket. Essentially, the competitor invented a disposable syringe that was strong enough. The competitor defended itself against the relevant claims on the basis that the patentee had failed to provide an enabling disclosure that would describe how its hypodermic needle injector could be made to work with a disposable syringe in the absence of a pressure jacket.
Even the patentee’s inventors admitted that they were stymied by the challenge of producing a pressure-jacketless system that would work with existing disposable syringes. The competitor succeeded where the patentees inventors said they were not able to provide a solution.
When the application was originally filed, the claims to the mechanical drive included the limitation that the needle injector was claimed in association with a pressure jacket for containing disposable syringes. That limitation was removed during the prosecution of a subsequent Continuation application after the patentees learned of the activities of the competitor in building a system that lacked a pressure jacket.
The CFCA adopted the principle that a patentee’s specification: “must enable one of ordinary skill in the art to practice the full scope of the claimed invention.” (emphasis in original).
Because in the present case the asserted claims read-on and included an injector system with and without a pressure jacket, this was held to be the full scope of the claimed invention. The claims were, on this basis, held invalid. The claims read-on the competitor’s system because the claims were silent about the presence of a pressure jacket.
The principle of this ruling is hotly contested by many of the commentators to the above blog. Some felt that it was unjust for a patentee to be the denied the benefit of claim coverage where the competitor was using all of the features of claims that could not be invalidated on the basis of the prior art. Others felt that the claims should be held invalid where the patentee had failed to provide an enabling disclosure for the full scope of patent claim coverage that the patentee was asserting.
This debate is reminiscent of the often-raise defense in Canadian patent proceedings, that the patentee has: “claimed more than he has invented”. I’’ve always been puzzled at this allegation. If a patent claim fairly describes a characteristic of the preferred embodiment using language which prevents the claim from describing anything in the prior art, then such a claim would seem to be valid. The statement that such a claim covers more than was invented is really a statement that the claim should have included further limitations. But if the claim can stand-up to novelty and obviousness tests, why can’’t such a claim be held valid?
I have always thought that it was permissible to claim a sub-component of an apparatus, focusing the claim on the aspect of an apparatus that is novel and inventive. For example: “a vehicle having a windscreen and a wiper for removing water from the windscreen wherein ……(describing the wiper) “ . If the inventor has described a highway motor vehicle as his preferred embodiment, would it be outside the scope of such a claim to cover such a wiper when carried by a boat, or an aircraft? Would it matter if the disclosure acknowledged that the rubber used in the wiper as described in the preferred embodiment would be susceptible of deterioration in the presence of saltwater, but the claim is silent as to the type of rubber to be used in the wiper?
Could a competitor then adopt the wiper for use with a boat in a saltwater environment by substituting a different rubber not ever mentioned in the original patent disclosure? Would it matter if the different rubber qualifies as a new invention?
Another analogy might be the case where the wiper inventor observed in his patent disclosure that his wiper may be susceptible to lift-off in the presence of high-speed winds. Then a competitor invents a deflector vane which remedies this defect. However, the competitor uses exactly the wiper as conceived and claimed by the patentee.
In either of such cases, could it be said that the patentee had “claimed more than he had invented”; or, as the CFCA had phrased it, failed to: “enable one of ordinary skill in the art to practice the full scope of the claimed invention”?
The key question is whether the “invention” is delimited by the claim or the “invention” is no broader than the inventor’s understanding at the time that the patent description is filed. Reference may also be made to the Canadian Patent Act section 32 which addresses the patenting of improvement inventions.
The exceptional number of commentaries forming the thread for the above blog posting shows the great disparity of opinion arising around this question. There are really two issues at stake. The first is what the law requires, and the second is what good sense would suggest to be appropriate.