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Federal Circuit reiterates that full scope of claim must be enabled to meet enablement requirement
February 04, 2008
In a decision last week, the Federal Circuit affirmed a district court's decision holding several claims of two patents invalid for lack of enablement. The district court held that while a portion of the scope of the claims was enabled, the full breadth of the claims were not, and as a result, the claims did not meet the enablement requirement of § 112.The Federal Circuit affirmed. The court stated that even if the claims were enabled for one embodiment, they were not enabled for a second embodiment also falling within the claim scope. The court analogized another recent case with similar facts where although two embodiments were covered by the claims, only one was enabled by the specification, leading to a conclusion of invalidity.The patentee's case was also not saved by the proffered expert testimony, as the plaintiff's expert was an expert in only one of the two applicable fields, and as a result could not opine competently regarding the enablement of the claims in the second field. As such, because the full scope of the claims was not enabled, the court affirmed the summary judgment of no enablement.More detail of Sitrick v. Dreamworks, LLC after the jump.The Plaintiff is an individual owner of two patents relating to the integration of a user's audio signal or visual image into a pre-existing video game or movie. The Defendants are motion picture studios and other companies that produce and distribute DVDs of movies that include a feature known as "ReVoice Studio," which allows users to combine their own voice with pre-existing video images stored on the DVD.The district court issued a granted summary judgment in favor of the defendants, finding all asserted claims of the patents to be invalid for lack of enablement. The asserted claims encompass both video games and movies, as admitted by the plaintiff. The claims require integration or substitution of a visual or audio user image in place of a pre-defined image of a video game or movie. The integration or substitution is performed by an "intercept adapter interface system" (IAIS), which the district court found to be the most fundamental part of both patents. For video games, the IAIS functions to intercept address signals from the game going to the game card, and if the address signals correspond to the character functions that are to be placed with the user image, the IAIS reconfigures the signals so as to substitute the user image for the pre-defined character image of the video game. However, unlike video games, pre-existing movies do not employ discrete address and control signals or any other means for requesting separate image segments to be assembled into the character or the overall image that appear within each frame of the movie.The district court concluded that the patents failed to explain how the IAIS functions outside of a video game. The Defendants' experts demonstrated that none of the identified analysis techniques for selecting, analyzing or identifying character functions were intercepting character signals in video games would work for movies. These experts noted the technological differences between video games and movies and opined that the disclosure regarding video games did not enable use of the IAIS to substitute or integrate user images in movies. The Plaintiff presented no competent evidence to contradict this testimony, as the Plaintiff's expert was an expert in the field of video games, and could not offer an opinion regarding the claims' enablement outside that context. Therefore, the district court granted summary judgment of no enablement.On appeal, the Federal Circuit explained that the full scope of the claimed invention must be enabled, citing another recent case on the issue, Auto Technologies International, Inc. v. BMW of North America, Inc. This is part of the quid pro quo of the patent bargain, and as a result, a patentee who chooses broad claim language must make sure the broad claims are fully enabled. As stated by the court: "The scope of the claims must be less than or equal to the scope of the enablement" to "ensure that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims." Here, it was undisputed that the claims covered both movies and video games, and as a result, the patents must enable both embodiments. Accordingly, even if the claims are enabled for video games, they must also be enabled for movies to meet the enablement requirement.

The Federal Circuit explained that an enablement analysis begins with the disclosure in the specification. Here, neither patent's specification taught how the substitution and integration of a user image could be accomplished in movies. The Defendants' experts explained that one skilled in the art would not be able to take the teachings regarding video games and apply them to movies, which are technically different than video games. These experts opined that the claims were not enabled because the analysis techniques described in the specification for identifying character functions or intercepting character signals in video games have no relevance to movies.The Plaintiff's expert testimony did not raise an issue of fact because his statements were conclusory and unsupported by any actual information, and he admittedly was not skilled in the art of movie making, but was instead an expert in video games. As conclusory expert assertions cannot raise triable issues of material fact on summary judgment, the court rejected this testimony as providing a genuine issue of material fact. As a result, the court affirmed the district court's summary judgment of no enablement.To read the full decision in Sitrick v. Dreamworks, LLC, click here.
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