The Unbearable Sightlessness of Breadth – Liebel v. Medrad

Having patents accords the holder so much due process that it isn’t funny.  Liebel-Flarsheim docketed in 2001 (or earlier) a suit for infringement of a patent that issued in 1993, from an application divided from a 1991 parent application.  Liebel got all the due process accorded a patent applicant in the USPTO’s ex parte procedures, then all that a patentee plaintiff gets in district court when suing for infringement.  Liebel too, was due two appeals to the Federal Circuit, and the due process rendered there, was reversal of a summary judgment of non-infringement (Liebel 1), and affirmance of findings of infringed, but invalid (Liebel 2).

Liebel 1 is a pre-Phillips v. AWH decision on claim interpretation.  It courses through the vagaries of “importing” from the written description as apart from reading “in light of” it, of claim differentiation, of the “single embodiment” rule, and of “objectives” in the specification being read as limitations, and the presumptions against those and how rebutted.  Don’t go trying to find any of those constructs in the Patent Act, because none are the words of Congress made manifest.

Liebel 2 steps out onto the slippery surfaces laid down in 1.  The CAFC, being limited in its jurisdictional charter to only review the record, must embrace the claims interpretations ruling and dicta from Liebel 1 and the remand of 1.  Liebel, which overcame arguments of importing, singularity, differentiation, and presumptions in 1, now had to pass under the never-clear wand of enablement in 2. 

Let’s hold up, and take a question from the back, “Yes, what is the CAFC’s doctrine on enablement?”  “The doctrine enables the use of Article III in our Constitution to operate as a grant of authority to legislate patent reform.”  Might I digress on that.  Even one skilled in the electronic arts can comprehend a “syringe” with an “injector” imparting “pressure,” so that one might too indulge in a presumption that, without unduly experimenting, those skilled in the syringe arts could fabricate those.  More often than ever, the CAFC invokes enablement to ‘trim down’ ever-growing fields of issued patents.  Each time you read a pending application for a wireless or web method of doing business, ask, is there enough here to enable all of this to be made?  If it is less apparent, than say, a syringe, then perhaps not.

Most commentators will seize upon the “irony” comment by the Liebel 2 panelists.  The patentee got so much breadth through claim interpretation, that it expanded beyond what the written description enabled one of skill to make and use.  Does not ever patentee want (1) breadth when its claims are allowed, and (2) breadth enough to capture the infringing embodiment, and (3) no more?  The retort of the CAFC to (1) and (2) is “beware of what one asks for.”  Magniloquent!

Due process allows the Court to expand beyond the actual controversy over one-for-one comparision between the claims and the accused device, and venture into whether a hypothetical artisan could, without undue experimentation, make and use something not plainly claimed, which something is not the accused infringing device.

All that due process is accorded to every patentee for only the few hundred dollars of filing fees charged by the USPTO.  Consider it like a 20-year eurail pass through the vagaries and curiosities of current patent jurisprudence.
Trivia: The optional name to this post was Dis-Enabling The Cincinnatians – why?  Because Liebel 2 quotes AK Steel v. Sollac often, and in both, fine Cincinnati patent lawyers were on the losing side of the enablement argument.