Be Careful What You Ask For in Claim Construction

Liebel-FLarsheim Co. v. Medrad, Inc., [06-1156, -1157](March 22, 2007)[LOURIE, Rader, Bryson] The Federal Circuit affirmed the trial courts holding of invalidity for lack of enablement.
SIGNIFICANCE: Although you only have to claim the invention, if you do not enable embodiments missing conventional elements, your failure to include conventional elements will invalidate your patent. Be careful when asking for a broad claim construction.
BRIEF: The claims in the patent did not specifically include a pressure jacket. Because the specification did not describe a jacketless embodiment the district court concluded that the patent lacked an adequate written description, and was invalid. NOTE: This was based in part on the inventor's testimony of the importance of the jacket. The Federal Circuit said that the enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation. The Federal Circuit then turned to the specification, noting that nowhere did the specification disclose a device without a pressure jacket. Furthermore, the Federal Circuit said that the specification taught away form devices without pressure jacket, because it noted that jacketless devices were too expensive to be practical. The Federal Circuit also noted that the testimonial evidence established that undue experimentation was needed to create a jacketless embodiment. The Federal Circuit rejected the patentee's argument that as long as the specification enabled one mode of making and using the invention, the enablement requirement was satisfied. The Federal Circuit found that the specification simply did not enable the invention to be practiced as broadly as it has been claimed, including without a pressure jacket. While the specification need not describe how to make and use every embodiment of the invention, because the artisan's knowledge and routine experimentation can fill in the gaps, if it does not enable the scope of the claimed invention without undue experimentation, it is invalid. The Federal Circuit pointed out the irony that Liebel was successful in construing its claims to cover jacketless systems, and then could not meet its burden to show that such broad claims were enabled, observing "The motto, 'beware of what one asks for,' might be applicable here.
To add insult to injury, the Federal Circuit went on to find that the patent was anticipated by prior art considered by the examiner during prosecution. Again the Federal Circuit noted the Pyrrhic victory of obtaining a broad construction of the claims, which allows the prior art anticipate the claims.
COMMENT: The statute says that the inventor only has to claim the invention. The inventor should not have to burden the claims and limit the scope with the recitation of conventional elements, but it appears that if the inventor omits a such an element from the claims, but does not enable the invention with the conventional element, the claims are invalid. So much for the statute.