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Full scope of claims must be enabled to meet enablement requirement

September 07, 2007
Post by Blog Staff

The Federal Circuit yesterday affirmed a district court's holding of invalidity based on lack of enablement. At issue was a claim that encompassed two different types of structures for side-impact sensing in motor vehicles, a mechanical sensor and an electronic sensor. The court noted that the full scope of a claim must be enabled in order to satisfy § 112, and that "the specification, not the knowledge of one of ordinary skill in the art . . . must supply the novel aspects of an invention in order to constitute adequate enablement." The court held that while the mechanical sensor was adequately enabled, the electronic sensor was not. As a result, the full scope of the claim was not enabled, and the district court's invalidity ruling was affirmed. More detail of Auto. Techs. Int'l, Inc. v. BMW of N. Am., Inc. after the jump.Automotive Technologies International (ATI) brought an infringement suit against multiple automaker defendants, including BMW, Delphi Automotive Systems, DaimlerChrysler, and General Motors. ATI alleged that the defendants had infringed its patent for side impact sensors that are placed in vehicles to deploy airbags in the event of an accident. Among other things, the defendants moved for summary judgment of invalidity based on lack of enablement because the claims at issue had been construed to cover both electronic and mechanical sensors. They argued the specification failed to teach how to make and use of electronic sensors without undue experimentation. The district court granted defendant's summary judgment motion and ATI appealed. ATI argued that an electronic sensor had been adequately enabled through the specification, and even if the specification did not adequately disclose an electronic sensor, enablement was still satisfied because the specification enabled one mode of practice, specifically the mechanical sensors. The Federal Circuit first addressed whether the specification of ATI's patent adequately enabled an electronic sensor without undue experimentation. The court recounted how "although two full columns and five figures of the '253 patent detail mechanical side impact sensors, only one short paragraph and one figure relate to an electronic sensor." It further noted that the figure of the electronic sensor was only a "conceptual view," and that it only represented a "concept of an electronic sensor, not a figure providing details that would show one skilled in the art how to make or use" an electronic sensor. It also found that the textual description given of the electronic sensor was only a "general description." The figures for the mechanical and electronic sensors are shown below:Mechanical sensor Electronic sensor
The specification's description of the electronic sensor was simply:

FIG. 11 is a conceptional view of an electronic sensor assembly 201 built according to the teachings of this invention. This sensor contains a sensing mass 202 which moves relative to housing 203 in response to the acceleration of housing 203 which accompanies a side impact crash. The motion of the sensing mass 202 can be sensed by a variety of technologies using, for example, optics, resistance change, capacitance change or magnetic reluctance change. Output from the sensing circuitry can be further processed to achieve a variety of sensor response characteristics as desired by the sensor designer.
ATI argued that "the knowledge of one skilled in the art was sufficient to supply the missing information" needed to enable the electronic sensor. The Federal Circuit rejected this argument, stating that "although knowledge of one skilled in the art is indeed relevant, the novel aspect of the invention must be enabled in the patent." Here, it was "insufficient to merely state that known technologies cam be used to create an electronic sensor," as ATI had asserted, because the novelty of the invention was the use of the special type of sensor, as opposed to the crush sensors that had been used in the prior art. The idea that the specification does not need to disclose what is already known in the art is a rule of supplementation, not a substitution for an enabling disclosure. The court noted that ATI had given great detail to enable the mechanical sensors in the specification, and asked "[i]f such a disclosure is needed to enable making and using a mechanical side impact sensor, why is not a similar disclosure needed to enable making and using an electronic side impact sensor, which is an essential aspect of the invention?" The court also relied on Delphi's expert witness which explained how making an electronic side impact sensor in light of the specification would have involved a "great deal of experimentation" because there were several problems distinctly related to an electronic sensor used with side impacts. The Federal Circuit also rejected ATI's argument that because the specification enables how to practice a mechanical sensor, it is adequately enabled with the enablement of the mechanical sensor alone. The court, looking to recent Federal Circuit case law, found that the "specification must enable the full scope of the claims that includes both electronic and mechanical side impact sensors" in order to meet the enablement requirement. The court analogized the Leibel-Flarsheim "pressure jacket" case, where the patentee successfully argued for a claim construction that included embodiments of a syringe with or without a pressure jacket, but did not enable jacketless embodiments. Similarly here, because the electronic sensor was part of the full scope of the claims, the lack of enablement of an electronic sensor meant that the claims were not enabled and therefore invalid.To read the full decision in Auto. Techs. Int'l, Inc. v. BMW of N. Am., Inc., click here.


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