A Patentee Who Chooses Broad Claim Language Must Make Sure the Claims Are Enabled

Sitrick v. Dreamworks, LLC., [2007-1174](February 1, 2008)[MOORE, Michel, Rader] The Federal Circuit affirmed the district court's judgment that Sitrick's U.S. Patent Nos. 5,553,864 and 6,425,825 were invalid for lack of enablement and indefiniteness.
SIGNIFICANCE: A Patentee who chocses broad claim lanaguage must make sure the broad claims are fully enabled.
BRIEF: The patents in suit relate to combining a user's audio with a preexisting videogame or movie. The district court granted summary judgment that because integration wtih movies was not enabled, the claims were invalid. The Federal Circuit said the full scope of the claimed invention must be enabled. The rationale for this statutory requirement is straightforward. Enabling the full scope of each claim is "part of the quid pro quo of the patent bargain." The Federal Circuit warned that a patentee who chooses broad claim language must make sure the broad claims are fully enabled." The scope of the claims must be less than or equal to the scope of the enablement to ensure that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims.
Because the asserted claims are broad enough to cover both movies and video games, the Federal Circuit said that the patents must enable both embodiments: "Even if the claims are enabled with respect to video games—an issue we need not decide—the claims are not enabled if the patents do not also enable for movies." The Federal Circuit said that an enablement analysis begins with the disclosure in the specification, and found that neither patent specification in this case teaches how the substitution and integration of a user image would be accomplished in movies. Finding clear and convincing evidence of the lack of enablement, the Federal Circuit affirmed, and did not have to reach the other issues of the appeal, except to not that plaintiff's objection to the transfer of venue below had been waived.