Lack of Enablement for the Full Claim Scope Dooms Patent

Case: Automotive Tech. Int'l v. BMW of North America, Inc., 2006-1013, 1037 (Fed. Cir. 9/6/07)

The One Sentence Summary: Affirming summary judgment finding of invalidity and noninfringement based on conclusion that the claims were invalid for lack of enablement, where the specification only described the manner and process of making one embodiment of the claimed invention.

What They Were Fighting About: Prior art sensors for side impacts were crush sensors, triggered when crushed or deformed, which closed a circuit. The problem was they were not triggered where the impact did not crush the side, but was still so severe that the occupant needed side protection. Velocity-type sensors would solve this problem, but conventional wisdom had been they would not reliably trigger for side impacts (though they had been used for front impacts). Here, the inventors found a design that did work for side impacts. The specifications described both mechanical and electronic sensors. The claim included the phrase "means responsive to the motion of said mass upon acceleration of said housing in excess of a predetermined threshold value, for initiating an occupant protection apparatus." It was agreed by all that this was a means plus function limitation, where the function was initiating an occupant protection apparatus. However, the parties disagreed as to the corresponding structure, and whether electronic sensors were included.

Federal Circuit Holdings:

• The district court had found that the claim included both mechanical and electronic sensors, but the specification failed to provide sufficient detail allowing one of ordinary skill in the art to make and use the electronic sensor without undue experimentation. The only figure showing the electronic sensor failed to show any specific design for it, and ATI's representative had admitted the specification failed to disclose structure for the general reference to sensing technologies. Moreover, the description was vague, and failed to disclose a reasonable basic enabling structure for using existing electronic sensing technologies to achieve the desired characteristics.


• The Federal Circuit rejected the argument that merely because one embodiment, for a mechanical sensor, was enabled, that was sufficient to satisfy the enablement requirement for an electronic sensor. Having construed the claims to cover both mechanical and electronic sensors, both types must be enabled. There must be reasonable embodiment of the scope of the range.


• The Federal Circuit noted that the only drawing of the electronic sensor was described as a "conceptual view" in the specification, and was a very general view. One of the inventors had even described that figure as "not meant to represent any specific design or anything, just a concept." Similarly, the description failed to provide a structure or description of how a person of ordinary skill in the art would make or use an electronic side impact sensor.


• Citing Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d. 1361, 1366 (Fed. Cir. 1997), the Federal Circuit reiterated that the specification, not the knowledge of one ordinarily skilled in the art, must supply the novel aspects of the invention for adequate enablement. Here, the novel aspect was side impact sensors, so it was insufficient to merely state that known technologies could be used.


• The Federal Circuit further noted that the inadequacy of the electronic sensor enablement was highlighted by the detailed description of the mechanical sensor. If two full columns were needed for the latter, why did the electronic sensor, which was an essential aspect of the invention, not require at least as much disclosure?


• The panel further reasoned that expert testimony offered to show why undue experimentation was not required to develop the electronic sensors was inadequate because it failed to discuss what types of tests would have been needed to adapt existing electronic sensors to this purpose, and provided no detail on adapting existing technologies.