Emerging technologies are developing at a blistering pace. One challenge for today’s patent practitioner is determining the extent to which a patent specification may rely on the knowledge of a person of ordinary skill in the art to provide support for certain claimed embodiments. That creates a tension between a company’s desire to protect valuable trade secrets versus the need to provide an enabling disclosure.
Historically, practitioners have often relied on a line of cases holding that “[i]f an invention pertains to an art where the results are predictable, e.g., mechanical as opposed to chemical arts, a broad claim can be enabled by disclosure of a single embodiment, and is not invalid for lack of enablement simply because it reads on another embodiment of the invention which is less adequately disclosed.”
For example that was the case in the Federal Circuit’s 1987 decision in Spectra-Physics, Inc. v. Coherent, Inc. The underlying assumption in these cases is that the skilled artisan can rely on the teachings of a single embodiment and the artisan’s own knowledge in the art in order to fill in missing pieces from the written description with respect to other embodiments. However, a more recent parallel line of cases suggest that disclosure of a single embodiment may not suffice to support differently scoped claims, regardless of the predictability of the art. One of the more prominent decisions in this recent line of cases, Automotive Technologies International v. BMW of North America, held that innovations in “new fields” may not rely on knowledge of a person of ordinary skill in the art to satisfy disclosure obligations to the same extent to which inventions in more mature fields may.
The Federal Circuit’s decision in Trustees of Boston University v. Everlight Electronics Co., Ltd., as well as the USPTO’s January 2019 Guidelines on Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112 may have brought the contrast between these two lines of case law into focus. In particular, the Guidelines’ instruction to Examiners to focus their enablement inquiry on (1) how broad the claim is with respect to the disclosure and (2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation. Of particular note, the practitioner should be aware of a potentially heightened requirement to provide additional information – which might otherwise be maintained as a trade secret – in patent specifications (the written text and drawings) in order to be granted patent rights for emerging technologies.
Trade secret and patent laws both protect intellectual property rights but have conflicting obligations which challenge companies seeking to maximize protection under each right. For trade secret protection, a company must keep information secret and out of the public domain. Accordingly, companies proactively control and limit disclosures of confidential trade secret information, even in patent applications, as such disclosures destroy trade secret protection.
By contrast, patent laws require disclosure of a minimum threshold of information enabling the person of ordinary skill in the art to practice the claimed invention in order for patent rights to be granted. This creates a dynamic tension on the amount of confidential information which must be disclosed to protect trade secret versus patent intellectual property rights, with that tension becoming even more apparent with emerging technologies.
Section 112 of the US patent statute includes what is known as the enablement requirement: a patent specification must contain information that would enable a person of ordinary skill in the art of the invention to make and use the patented invention without undue experimentation. This enablement requirement ensures that, in exchange for granting to an inventor a monopoly on a patented invention for a term of years, the public in turn obtains the benefit of being able to freely and fully make and use that invention once that term expires.
What constitutes a sufficient enablement is complicated by two competing principles. First, a seemingly opposing patent rule which provides that an invention need not even be reduced to practice (i.e., made) prior to an inventor filing a patent application. Indeed, an application may be filed on an invention that is only in its conception stage if the inventor discloses sufficient information in the application to enable the person of ordinary skill in the art to practice and use the invention without undue experimentation.
Second, a series of decisions from the Court of Appeals for the Federal Circuit (discussed above) holding that a patent specification need not disclose what is already well known in the art. More specifically, an artisan’s knowledge of the prior art and routine experimentation can often allow that artisan to fill disclosure gaps, interpolate between embodiments, and perhaps even extrapolate beyond the disclosed embodiments in order to achieve the patented invention. The degree to which this is allowed depends upon the predictability of the art, as noted above. However, the decision in Automotive Tech suggests that when relying on an artisan’s knowledge, there may exist a different enablement standard for emerging technologies as compared to mature technologies.
In Automotive Tech, the technology at issue involved crash sensing devices used to determine when air bags were deployed during a side impact. The specification of Automotive Tech’s patent (no. 5,231,253) described an embodiment of the device utilizing a mechanical sensor in considerable detail, and also described another embodiment that utilized an electronic sensor, albeit with less detail, ostensibly relying on the artisan’s knowledge to fill in the gaps with respect to the electronic sensor embodiment.
At trial, Automotive Tech’s expert even testified that a person of ordinary skill in the art could select off-the-shelf components that were commercially available before the filing of the ‘253 patent and use well-known circuit design and programming techniques to achieve the claimed invention. Despite this, the Federal Circuit found that the claims, which encompassed both embodiments, were invalid as not being sufficiently enabled with respect to the electronic sensor embodiment. Although Automotive Tech was decided in 2007, the patent application was filed in 1992 when air bag deployment sensors were arguably still an emerging technology. Notably, determination of whether the enablement requirement was satisfied was based on the invention at the time the application was filed. The Federal Circuit classified the invention in Automotive Tech as related to a “new field.” This raises a challenge to determine whether a particular field of an invention is considered new and, therefore, to what extent a patent application covering the invention may rely on an artisan’s knowledge to comply with Section 112’s enablement requirement.
That challenge is compounded when a patent practitioner attempts to support claims covering different embodiments by requiring the person of ordinary skill in the art to extrapolate support for certain embodiments which have minimal overlap in description with other more well-described embodiments. By declaring the field of the invention “new” in Automotive Tech, the Federal Circuit found that the specification of the patent only provided a starting point for future research but did not allow a person of ordinary skill in the art in the field to make or use the claimed invention.
The holding in Automotive Tech appears to conflict with the rationale of the traditional line of Federal Circuit cases espoused in Spectra-Physics, Inc., which hold that inventions in technology fields that have been held to be predictable (e.g., software, mechanical and electrical arts) may more appropriately rely on the artisan’s knowledge to “fill gaps” in the level of disclosure needed. That compares with inventions in technology fields that have been held to be unpredictable such as those involving chemical reactions. The tension arises because Automotive Tech’s holding, that inventions in “new fields” may not rely as extensively on the artisan’s knowledge regardless of whether the field is in a predictable art or not appears to conflict with the decision in Spectra-Physics, Inc., which holds that the artisan’s knowledge may be relied on to a larger extent if the invention lies in a predictable field.
By classifying the field of Automotive Tech’s invention as a “new field”—despite using off-the-shelf components and well-known design techniques—the Federal Circuit appears to have eviscerated its predictable arts doctrine from Spectra-Physics, Inc., leaving a significant question of where the practitioner should draw the line on the amount of disclosure required in a patent specification for an invention in a new field versus a predictable art. Further complicating the matter, the Federal Circuit has not identified any bright-line test to determine whether the field of an invention is “new” or not, leaving practitioners uncertain as to whether a patent specification must explicitly enable each embodiment they wish to cover in a claim or rely on well-known (but not disclosed) knowledge and routine experimentation in the field of the invention. Stated simply, “new” inventions even in predictable fields such as software or electrical engineering arts may now be subject to disclosure requirements which are challenging to determine.
For entities more concerned with trade secret protection, it is important for the practitioner to keep in mind that questions of patent invention enablement under 35 U.S.C. Section 112(a) are evaluated against “claimed” subject matter, with a focus on whether everything within the scope of each claim is enabled. If information to enable such claims cannot be easily reverse engineered and therefore has more value as a trade secret, the practitioner, in close partnership with the inventor or other subject matter experts, should consider omitting claims which might require disclosure of non-readily discernable information that would otherwise need to be disclosed in order to satisfy patent enablement standards.
Finally, the lack of clarity on the extent to which a specification may rely on the artisan’s knowledge has important downstream effects on strategies taken by patentees looking to assert patents. With contradictory and unclear guidance on when and to what degree a patent disclosure may rely on the artisan’s knowledge to fill gaps in an otherwise non-enabling disclosure, patentees should carefully consider the scope of claim terms being construed through the lens of a careful and thorough analysis of not only the level of detail in a patent’s specification, but also the state of the art of the field of that invention at the time that the underlying patent application was first filed.
For that reason, if, years after a patent application was originally filed, a patentee or its subject matter experts believes that there is a credible risk that the field of the patented invention may be determined to be “new” at the time of the underlying patent application’s filing, the patentee would benefit by either narrowing its claim term constructions and even not asserting claims that are found to have a less robust enabling disclosure, in order to avoid an enablement challenge that ultimately invalidates the entire patent, as was the case in the Fed Circuit’s 2008 decision in Sitrick v. Dreamworks, LLC.