Juicy Whip, Inc. v. Orange Bang, Inc. , 51 U.S.P.Q.2d 1700

(Fed.Cir. 1999)

¶ 1 Written Description of Claimed Invention

Disclosure/Enablement, § 112

¶ 1 Enablement of one skilled in the art without undue experimentation of:

• how to make• how to use

¶ 1 Best Mode contemplated by inventor¶ 2,6 Claims - definiteness

U.S.C. § 112: ¶ 1Disclosure/Enablement, § 112

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

U.S.C. § 112: ¶ 2

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

U.S.C. § 112: ¶ 3

A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.

U.S.C. § 112: ¶ 4

Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

U.S.C. § 112: ¶ 5A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.

U.S.C. § 112: ¶ 6

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Base, with passageway

U-shaped bar

Cutting element attached to bar

Rotating handle at end of barCLAIM 1:ELEMENTS

Enablement/Written DescriptionCheese Slicer Specifications, ¶ X

“The handle may be turned to ... draw the cutting elementtaut so that it may properly perform its cutting function.”

Rotating handle at end of bar

Cutting element attached to bar

Base, with passageway

U-shaped bar

Claim ElementsRotating handle at end of bar

The Incandescent Lamp Patent

Incandescing conductor

Bamboo discovered as an incandescing conductor.

Sawyer and Mann PatentClaimed: “All Fibrous and textile material” (6,000 plus embodiments)

Enabled: Carbonized paper, plus?

Updating Incandescent Lamp

• Federal Circuit:– Enablement is an issue of fact

• Standard has not changed

Patents are required to "teach those skilled in the art how to make and use the full scope of the claimed invention without 'undue experimentation.' " Genentech Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed.Cir.1997).

Contrasting Recent Cases

• Koito Manufacturing Co., Ltd. v. Turn Key Tech, 2004 WL 1872719 C.A.Fed. (Cal.), Aug. 23, 2004.– Enablement satisfied

• AK Steel Corp. v. Sollac and Ugine, 344 F.3d 1234, C.A.Fed. (Ohio), 2003.– Invalid, lack of enablement

• United States Patent 5,045,268 Sorensen September 3, 1991 Cross-lamination injection molding

• Abstract• A plastic product having a cross-laminated section including a first

plastic layer and a second plastic layer is injection molded in a mold system that includes a first mold cavity with a first-layer-defining-mold-cavity-section and a second mold cavity with a second-layer-defining-mold-cavity-section that has a second-cavity-section-wall. The product is molded by injecting a quantity of first plastic into the first mold cavity so that first plastic flows from a flow channel into the first-layer-defining-mold-cavity-section in a first predetermined general direction that is different than the direction of the flow channel; solidifying at least partly the flowed first plastic in the first-layer-defining-mold-cavity-section to thereby form said first plastic layer having a first-direction-flow-record; adjusting the mold system to provide the second mold cavity, with the second-cavity-section-wall including the first plastic layer; injecting a quantity of second plastic into the second mold cavity

“Koito also argues on appeal that certain details used by Turn-Key, such as injection parameters and gate size, were necessary for one of skill in the art to practice the claimed invention without undue experimentation. We again find that Koito failed to put forth clear and convincing evidence at trial that knowledge of such production details was necessary to practice the claimed invention without undue experimentation.”

“In contrast to the absence of evidence by Koito, Turn-Key presented evidence by the inventor of the '268 patent that these details were omitted from the patent because they are "standard in the industry." This Court has repeatedly explained that a patent applicant does not need to include in the specification that which is already known to and available to one of ordinary skill in the art.” -- 2004 WL 1872719, at 10.

“We thus have noted that "[n]ot every last detail is to be described, else patent specifications would turn into production specifications, which they were never intended to be ." In re Gay, 50 C.C.P.A. 725, 309 F.2d 769, 774 (CCPA 1962). Unless there is evidence to the contrary, therefore, the lack of certain production details does not indicate failure of enablement.” – Id.

AK Steel• United States Patent 5,066,549 Kilbane ,   et al. *

November 19, 1991 Hot dip aluminum coated chromium alloy steel

• Abstract• Continuously hot dip aluminum coated ferritic chromium

alloy steel strip. After the steel has been given a pretreatment to remove surface contaminants, the steel is protected in a hydrogen atmosphere until it is passed into the molten aluminum coating metal. The coating metal readily wets the steel surface to prevent uncoated areas or pin holes in the coating layer.

“[A]s part of the quid pro quo of the patent bargain, the applicant's specification must enable one of ordinary skill in the art to practice the full scope of the claimed invention. Wright, 999 F.2d at 1561. That is not to say that the specification itself must necessarily describe how to make and use every possible variant . . .” -- 344 F3 1244

“Sollac presented documentary and testimonial evidence from AK Steel that despite its desire to utilize a Type 1 aluminum coating, it was unable to do so at the time of the effective filing date. AK Steel, 234 F.Supp.2d at 782-83. Furthermore, as explained above, the specification's teaching is itself evidence that at least a significant amount of experimentation would have been necessary to practice the claimed invention utilizing Type 1 aluminum.” – Id.