Trustees of Boston University v. Everlight Electronics Co., Nos. 2016-2576, 2016-2577, 2016-2578, 2016-2579, 2016-2580, 2016-2581, 2016-2582, 2016-2591, 2016-2592, 2016-2593, 2016-2594, and 2016-2595 (Fed. Cir. July 25, 2018)

A jury found that the accused infringer failed to prove the asserted patent’s invalidity. The accused infringer filed a renewed judgment as a matter of law (JMOL) that the patent is invalid for not meeting the pre-AIA § 112 enablement requirement. The enablement issue concerned one of the six permutations contemplated by the asserted claim under the patentee’s constructions. The district court then denied the JMOL, concluding that the patent did not have to enable that specific permutation as long as it enabled other permutations.

On appeal, the Federal Circuit reversed, holding that the patent is not enabled as to the permutation at issue. The Federal Circuit explained that the enablement inquiry is not whether it was, or is, possible to make the full scope of the claimed device – the inquiry is whether the patent’s specification taught one of skill in the art how to make such a device without undue experimentation as of the patent’s effective filing date. Simply observing that it could be done –years after the patent’s effective filing date – bears little on the enablement inquiry. The court reiterated that the specification must enable the full scope of the claimed invention, but that a specification need not disclose what is well known in the art. In this instance, the Federal Circuit concluded that the permutation would have required undue experimentation – indeed, that it could safely conclude that the specification does not enable what the experts agree is impossible.

A copy of the opinion can be found here