Liebel-Flarsheim Co. v. Medrad, Inc. (Fed. Cir. 2007)
A patent specifi cation is required to enable one of ordinary skill in the art to practice the broadest claim of an invention, even though more explicitly covered embodiments are enabled in the specifi cation, according to the Federal Circuit.
Liebel-Flarsheim owns patents for a front-loading fluid injector, for delivering a contrast agent to a patient, and a computer-controlled injector, where a motor advances and retracts a plunger in a syringe. The originally fi led claims recited a pressure jacket in front of the syringe opening. During prosecution, the applicants deleted all references to a pressure jacket to bring Medrad’s injector within the scope of the claims. The claims were subsequently allowed without a recitation of a pressure jacket.
Liebel-Flarsheim sued Medrad for infringement. The district court construed Liebel’s claims to be limited to syringes with a pressure jacket, despite the absence of such a limitation in the claims. The Federal Circuit subsequently reversed the district court’s claim construction. On remand, the district court applied a broader claim construction to fi nd infringement. However, the district court concluded that the patents were invalid under 35 U.S.C. § 112, fi rst paragraph (i.e., the enablement requirement) since the specifi cation failed to describe and enable a jacketless injector.
The Federal Circuit affi rmed the district court’s decision. The Court noted that, although the jacketless injector is encompassed by the broader claim construction, the specifi cation teaches away from a jacketless injector. The Court rejected Liebel’s argument that the specifi cation’s enablement of one embodiment (e.g., an injector with a pressure jacket) is suffi cient to satisfy the enablement requirement of the broad claim (e.g., a jacketless injector). The Court stated that Liebel’s reliance on Spectra-Physics Inc. v. Coherent, Inc. for this proposition is misplaced. In that case, the claims were invalid because of failure to disclose the best known way to practice the invention (i.e., the best mode requirement under 35 U.S.C. § 112), even though the specifi cation enabled practice of the claims. The Court noted that, in Spectra-Physics, the means not enabled in the specifi cation of the patent were enabled in the specifi cations of other patents directed to the relevant technology. The Court stated that those disclosures permitted one skilled in the art to make and use the invention as broadly as it was claimed. However, in this case, the Court stated that the disclosure of an injector system with a pressure jacket does not permit one skilled in the art to make and use the invention as broadly as it was claimed (e.g., a jacketless injector).
The Court explained that the more relevant case is AK Steel Corp. v. Sollace & Ugine, where the patent disclosed several embodiments within the properly construed claim, but the specifi cation only described how to make and use one embodiment. In AK Steel, the Court acknowledged that the specifi cation need not describe how to make and use every embodiment of the invention where knowledge of the prior art and routine experimentation can fi ll the gaps. Thus, the Court stated, the relevant inquiry is whether one skilled in the art would have been able to make and use the embodiment alleged to be within the scope of the claims as of the patent’s filing date.
The Court concluded that while the claims in this case read on an injector both with and without a pressure jacket, the specifi cation lacks a reasonable enablement of that claim scope. The Court noted that the specifi cation explicitly teaches away from an injector system having a disposable syringe without a pressure jacket. In addition, there was testimonial evidence that a jacketless injector could not have been produced at the time of filing.