Automotive Technologies Int’l, Inc. v. BMW of North America, Inc.

(Fed. Cir. 2007)

The Federal Circuit re-emphasized that to fulfill the enablement requirement, the specification of a patent application must enable all embodiments deemed to fall within the scope of the claims.

Automotive Technologies International, Inc. (“ATI”) is the assignee of a patent relating to crash-sensing devices for deployment in an occupant protection apparatus, such as an airbag, during an impact or crash involving the side of a vehicle. According to the patent, prior art solutions used crash sensors that would trigger when crushed or deformed. According to ATI, velocitytype sensors, which had been successfully used for sensing impacts to the front of a vehicle, would activate too slowly to deploy an airbag during a side impact crash. The inventors of the patent in suit, however, discovered that velocity-type sensors, when properly designed, could successfully and timely operate to deploy an airbag in a side collision.

In a claim directed toward a side-impact crash sensor for a vehicle having front and rear wheels, the claim language at issue involved a “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.” The specifi cation described two types of sensors that may be used: mechanical sensors and electronic sensors. The description of the mechanical sensor was detailed, while, in comparison, the description of the electronic sensor did not include much detail for the “conceptional view of an electronic sensor assembly.”

The District Court granted the defendants’ motion for summary judgment of invalidity for lack of enablement because the corresponding structure for the “means responsive” included both mechanical means and electronic means, but the court determined that the specification failed to enable electronic sensors for sensing side impacts. Thus, since the full scope of the claims (i.e., both mechanical and electronic sensors) was not enabled by the specification, the patent is invalid.

ATI argued that because one embodiment of the invention is enabled (a mechanical side-impact sensor), the enablement requirement is satisfied. The defendants countered that it is well-established that the specification must enable the full scope of the claims as construed by the court. In this case, the full scope of the claims as construed by the court included both mechanical side-impact sensors and electronic side-impact sensors.

The Federal Circuit rejected ATI’s argument and stated that, “in order to fulfill the enablement requirement, the specification must enable the full scope of the claims that includes both electronic and mechanical side impact sensors, which the specification fails to do.” Interestingly, however, the court noted that it was ATI that argued for the scope of the claims to include both mechanical and electronic sensors, thereby suggesting that if ATI had not argued for the “means responsive” to include both sensors and/or if the district court determined “means for” included only mechanical sensors, the court may have found the patent valid, since the full scope of the claims, as interpreted by the court, would have been enabled by the specification.

Practice Tip: When drafting a patent application, extra care should be taken to ensure that all embodiments that may fall within the full scope of the claims are enabled. Additionally, patent holders should also think carefully about claim construction during litigation. By arguing for a broader claim interpretation, a patent holder could be widening the area of potential attack if the full scope of the claims, as interpreted by the court, is not enabled by the specification.