Failure to Develop a Working Commercial Product Demonstrated Patent's Failure of Enablement

Case: Ormco Corp. v. Align Tech., Inc. (Fed. Cir. No. 2006-1240, 2006-1274 8/24/07)

The One Sentence Summary: The specification and prosecution history limited claims for the manufacture of orthodontic appliances, and claims for automatic determination of tooth position were not enabled where a commercial product could not be developed using the specification.



Federal Circuit Holdings:

• The district court properly interpreted the Ormco patent claims at issue to require automatic determination of tooth position by computer without human judgment even though the claims did not expressly state that the tooth position was determined by computer. The specification repeatedly emphasized the computerized nature of the invention. Moreover, in the prosecution of a parent application, the applicant had disavowed human settings for tooth positions by distinguishing prior art on this basis. In addition, in the prosecution history, the inventors described their invention as "fully automated."
• As to certain patent claims, the district court properly granted summary judgment of invalidity due to failure to enable the invention. Ormco's failure to create commercial products that would automatically determine tooth position without human decision making was clear and convincing evidence that the specification did not allow a person of ordinary skill in the art to practice the invention.
• The trial court correctly found that the law of the case doctrine required a finding that Align's patent claims were obvious where there were only small differences from claims that had been held to be obvious in a prior opinion in the case.