If the Invenstors Can't Practice The Invention, There Are Enablement Issues

Ormco Corp. v. Align Technology, Inc., [2006-01240, -1274](August 24, 2007)[LOURIE, Dyk, O'Malley] The Federal Circuit affirmed in part justment that Ormco's patents were not infringed and were invalid, and affirmed summary judgment of invalidity of Allign's patent.
SIGNIFICANCE: 1. A disclaimer can result from disavowals made in ancestor patent applications. 2. If the inventor had trouble practicing the claimed invention, there is a good chance the claims are not enabled. 3. Law of the case is mandates the same result in a subsequent appeal of the same case, absent new evidence, new law, or clear error.
BRIEF: "It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." However, "claims ‘must be read in view of the specification, of which they are a part,’" and "[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction." The Federal Circuit noted numerous references in the specification to the automated determiation of the final position of teeth, and the absence of any human intervention except at the start of the process. The Federal Circuit then turned to the prosecution history. "[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." The Federal Circuit said that prosecution disclaimer may arise from disavowals made during the prosecution of ancestor patent applications. Considering the prosecution histories, the Federal Circuit affirmed the determination that the claims were limited to methods where the final tooth positions are automatically calculated.
LOF: Enablement is a question of law that we renew de novo. The Federal Circuit said that if an inventor attempts but fails to enable his invention in a commercial product that purports to be an embodiment of the patented invention, that is strong evidence that the patent specification lacks enablement. The Federal Circuit said that substantial doubt concerning enablement was case by the inventors in this case, that's what the district court concluded, and the Federal Circuti had not rason to disagree, and affirmed the grant of summary judgment of invalidity.
Regarding the cross-appeal, LOF: Anticipation is a question of fact, but, in reviewing a grant of summary judgment of invalidity for anticipation, we determine de novo whether the evidence creates genuine issues of material fact that should have precluded summary judgment. The Federal Circuit applied its prior holding on this issue as law of the case, and affirmed. "Under [the law of the case] doctrine a court adheres to a decision in a prior appeal in the same case unless one of three exceptional circumstances exist: (1) the evidence in a subsequent trial is substantially different; (2) controlling authority has since made a contrary decision of the law applicable to the issues; or (3) the earlier ruling was clearly erroneous and would work a manifest injustice."