Latest Federal Court Cases, 04/19/21
Raytheon Techs. Corp. v. General Elec. Co., Appeal No. 2020-1755 (Fed. Cir. Apr. 16, 2021)
In its only precedential patent decision this week, the Federal Circuit issued an important ruling about the issue of enablement as it applies to prior references used in an obviousness analysis.
Raytheon owned a patent related to gas turbine engines. Specifically, the patent claimed various aspects of such an engine in addition to “a power density at Sea Level Takeoff” between two specific values. Power density is the sea-level-takeoff thrust divided by the engine turbine volume.
General Electric filed an inter partes review petition challenging the claims. It relied on a 1987 NASA technical memorandum by Knip that envisioned superior performance characteristics for an imagined turbofan engine made from composite materials. “[T]he construction of a turbofan engine incorporating such composite materials was undisputably unattainable at the time (and, according to the record, continues to this day to be beyond reality).” Nonetheless, “an imagined application of these “revolutionary” composite materials to a turbofan engine allowed the author of Knip to assume aggressive performance parameters for an ‘advanced engine,’” which “would permit … significant reductions in engine volume and weight leading to ‘improvement in … thrust-to-weight ratios.” It did not disclose actual power density values, but provided sufficient information that those values could be derived from the provided information.
The Board found the patent obvious. It determined that the issue of enablement was a threshold issue, but found Knip to be enabling. Specifically, “it provided enough information to allow a skilled artisan to ‘determine a power density as defined in claim 1, and within the range proscribed in claim 1.’” In its obviousness analysis, the Board concluded that the patent was obvious, because “Knip provided enough disclosure to enable a skilled artisan to calculate what would be the power density of Knip’s advanced engine.”
On appeal, the Federal Circuit reversed. The Court started by revisiting the case law concerning the enablement requirement in an obviousness analysis. Specifically, “a prior art reference asserted under § 103 does not necessarily have to enable its own disclosure, i.e., be ‘self-enabling,’ to be relevant to the obviousness inquiry.” The Court quoted a Sixth Circuit opinion pre-dating the Federal Circuit:
The enabling disclosure concept [for a prior art reference] is a commonsense factor in making a determination of obviousness, for if neither any item of prior art, nor the background knowledge of one with ordinary skill in the art, would enable one to arrive at an invention, that invention would not be obvious. But to argue, as does [the patentee], that the sufficiency of each prior art teaching must be tested under the strict standard requiring an enabling disclosure is to shift the emphasis from obviousness in light of the prior art, taken as a whole, to the sufficiency of each prior art teaching separately considered.
Minn. Mining & Mfg. Co. v. Blume, 684 F.2d 1166, 1173 n.10 (6th Cir. 1982). The Court continued, “In the absence of such other supporting evidence to enable a skilled artisan to make the claimed invention, a standalone § 103 reference must enable the portions of its disclosure being relied upon. … In this context the reference must necessarily enable the relied-upon portion of its own disclosure—the same standard applied to anticipatory references.”
Applying that legal standard, the Court held that GE had failed to prove the patent was obvious. The Court criticized the Board’s enablement analysis: “rather than determining whether Knip enabled a skilled artisan to make and use the claimed invention, the Board focused only on whether [a skilled artisan] is provided with sufficient parameters in Knip to determine … a power density.” GE argued that “it is irrelevant whether Knip actually enables a [skilled artisan] to build the specific engine contemplated by Knip.” But the Court responded, “That position may have carried the day if GE had presented other evidence to establish that a skilled artisan could have made the claimed turbofan engine with the recited power density. But no such other evidence was presented.” Thus, with no other evidence in the record, Knip’s lack of self-enablement was dispositive.
A copy of the opinion can be found here.
By Nika Aldrich