Enablement (Sec. 112(1/a))

• BASICS: “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, ….” 35 U.S.C. § 112(1/a). “Amgen made clear that § 112(a) requires inventors to enable the ‘full scope’ of the claimed invention without unreasonable experimentation.” Baxalta II (Fed. Cir. 09/20/23). Enablement requires that the disclosure teach PHOSITA to make or carry out (use) the claimed invention without undue experimentation, including disclosing a practical utility for the invention. Rasmusson (Fed. Cir. 06/27/05); see Edwards Life Sci. (Fed. Cir. 11/13/12) (approving a jury instruction on enablement, and aff’g rejection of enablement defense despite stent/valve not being developed sufficiently for use in humans). “‘A considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance.’” Cephalon (Fed. Cir. 02/14/13) (rev’g bench trial judgment of non-enablement, rejecting expert’s testimony as unsubstantiated, and explaining meaning of “undue” experimentation). The Spec. must enable the “full scope” of the claim. Promega I (Fed. Cir. 12/15/14) (rev’g denial of Summ. J. of non-enablement of open-ended claim in unpredictable field whose full scope was not enabled), reconfirmed Promega II (Fed. Cir. 11/13/17) (on remand from S. Ct.). But this does not require that each conceivable embodiment within the claim be enabled. “‘That is not to say that the specification itself must necessarily describe how to make and use every possible variant of the claimed invention, for the artisan’s knowledge of the prior art and routine experimentation can often fill gaps, interpolate between embodiments, and perhaps even extrapolate beyond the disclosed embodiments, depending upon the predictability of the art.’ AK Steel (Fed. Cir. 09/23/03).” Chiron (Fed. Cir. 03/30/04). In Sec. 112(1/a), so part of Sec. 120.
• Future Technology Need Not Be Enabled But Nascent Technology Must Be: Chiron (Fed. Cir. 03/30/04) distinguishes between routine technology and future technology (neither of which need to be enabled in the Spec.) vs. nascent technology (which must be enabled with “specific and useful teaching”). See In re Hogan (CCPA 07/28/77) (claims encompassing both crystalline polymer and amorphous polymer were sufficiently enabled by ancestor application enabling only crystalline polymer because amorphous polymer was not discovered until after that application was filed).
• Must Enable Making The Claim-Recited New Compounds Used For Treatment: “To establish enablement of a claim whereby new chemical compounds are provided for use to treat disease, the application must enable production or synthesis of the new compounds.” Storer (Fed. Cir. 06/21/17) (aff’g PTAB interference decision; applying Wands factors, including named inventor’s post filing efforts toward reduction to practice; provisional application did not enable count).
• Good Summary Judgment Prospects: This is a question of law (based on facts) and Summ. J. has been granted often. E.g., Wyeth (Fed. Cir. 06/26/13) (aff’g Summ. J. of no full scope enablement, based on patent owner’s proposed claim construction, where Spec. “discloses only a starting point for further iterative research in an unpredictable and poorly understood field.”); Magsil (Fed. Cir. 08/14/12); Auto. Techs. Int’l (Fed. Cir. 09/06/07) (claims’ recited sensor covered mechanical and electronic sensors; disclosure had long discussion of mechanical, but short mention of electrical; full scope not enabled.); Ormco (Fed. Cir. 08/24/07) (claims require purely automatic operation, not enabled in Spec.); Sitrick (Fed. Cir. 02/01/08) (broad claims covered both movies and video games, but patents did not teach how to implement the claimed “invention” in the context of movies); cf. Streck (Fed. Cir. 01/10/12) (aff’g Summ. J. of sufficient enablement: “Unlike the situation in Automotive Tech., where the electronic sensors differed in structure and operation from mechanical sensors, here, there was unrebutted evidence that true reticulocytes and Ryan’s reticulocyte analogs ‘work in exactly the same way in a hematology control, and are virtually indistinguishable, even to one skilled in the art.’”)
• Specification, Not Knowledge Of Skilled Artisan, Must Enable Novel Aspects Of Claims: “‘It is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement.’ … [R]eliance on a POSA is insufficient to meet the enablement requirement. A patent owner is ‘required to provide an enabling disclosure in the specification; it cannot simply rely on the knowledge of a person of ordinary skill to serve as a substitute for the missing information in the specification.”” Idenix Pharm. (Fed. Cir. 10/30/19) (2-1) (rejecting patent owner’s attempt to limit the number of possible candidates a skilled artisan would explore based on certain knowledge not reflected in the claims or Spec., as “an impermissible end-run around the requirement to enable the full scope of the claim”); but see Falko-Gunter (Fed. Cir. 05/26/06) (“The person of ordinary skill in the art would clearly have possessed such knowledge, and given the ready accessibility of the journals, the absence of incorporation by reference is not problematic.”).
• Knowledge Of Skilled Artisan Does Not Include Section 102(e) Prior Art Unpublished As Of Application’s Effective Filing Date: Section 102(e) patents that were still secret as of the application’s filing date “does not show what is known generally to ‘any person skilled in the art’” as of that filing date. In re Glass (CCPA 02/28/74) (rejecting patent applicant’s attempted reliance on Section 102(e) prior art patents to try to show enablement).
• Enablement Must Follow The Steps Disclosed In The Spec.: This aspect of Nat’l Recovery (Fed. Cir. 02/04/99) is promising for seeking Summ. J. on an enablement defense: “If, by following the steps set forth in the specification, one of ordinary skill in the art is not able to replicate the claimed invention without undue experimentation, the claim has not been enabled as required by 112, paragraph 1.” To extent patent owner argues that PHOSITA could have reached the claimed result, the challenger can respond: “only by deviating from the steps recited in the Spec.” Accord Trustees of Boston Univ. (Fed. Cir. 07/25/18) (“But the inquiry is not whether it was, or is, possible to make the full scope of the claimed device—a scope that here covers a monocrystalline growth layer directly on an amorphous layer. The inquiry is whether the patent’s specification taught one of skill in the art how to make such a device without undue experimentation as of the patent’s effective filing date. Viewed in this light, BU’s evidence [that the inventor and others have been able to perform this permutation] is not probative of enablement.”). But obvious error PHOSITA would have disregarded as typographical error does not defeat enablement. American Nat’l (Fed. Cir. 11/14/22).
• Need Not Enable More Than Construed Claim Requires: Where claim construed to not require a certain utility, e.g., a level of safety or efficacy, then specification need not enable that utility. United Therapeutics (Fed. Cir. 07/24/23) (aff’g ruling rejecting non-enablement defense: “A subset of unresponsive patients is not analogous to unsupported species in a generic claim to chemical compounds.”).
• Prosecution History May Establish Unpredictable Field: Applicant arguments in prosecution distinguishing specific claimed combinations from prior art helped establish lack of full scope of enablement of claims construed to encompass non-disclosed combinations. Promega I (Fed. Cir. 12/15/14), reconfirmed Promega II (Fed. Cir. 11/13/17) (on remand from S. Ct.).
• Lack Of Utility May Show Non-Enablement: one-page Spec. without experimental test results failed to establish therapeutic utility, and thus failed enablement requirement. In re ’318 Patent (Fed. Cir. 09/25/09).

a) which disclosure governs

• Unsettled Whether Asserted Priority Application Or Issued Application Governs: Unclear whether the asserted priority application or the issued application governs. See discussion under “Written Description.” But either way the relevant date is the effective filing date that is sought. Application (continuation of divisional of two CIPs) “should have been tested for compliance with § 112, first paragraph, ‘as though filed on the date of the prior application’” to which the patent applicant claim priority under Sec. 120, on claim-by-claim basis, even when claim actually not entitled to that date. In re Hogan (CCPA 07/28/77); see Plant Genetic (Fed. Cir. 02/20/03) (“Enablement is determined as of the effective filing date of the patent” (citing In re Hogan); effective filing date here undisputed); Trustees of Boston Univ. (Fed. Cir. 07/25/18) (analyzing enablement as of patent’s asserted effective filing date); Pacific BioSciences (Fed. Cir. 05/11/21) (without discussion, analyzing enablement as of asserted priority date, the provisional application’s filing date).

b) enable “full scope” of claim

• Full Scope Enablement An “Important Doctrine”: “If a patent claims an entire class of processes, machines, manufactures, or compositions of matter, the patent’s specification must enable a person skilled in the art to make and use the entire class. In other words, the specification must enable the full scope of the invention as defined by its claims. The more one claims, the more one must enable…. For if our cases teach anything, it is that the more a party claims, the broader the monopoly it demands, the more it must enable. That holds true whether the case involves telegraphs de­vised in the 19th century, glues invented in the 20th, or an­tibody treatments developed in the 21st.” Amgen (U.S. 05/18/2023) (aff’g lack of full-scope enablement of functionally defined antibody claims: “Amgen has failed to enable all that it has claimed, even allowing for a reasonable degree of experimentation.”); Baxalta II (Fed. Cir. 09/20/23) (aff’g Summ. J. non-enablement of functional antibody claims, finding facts materially indistinguishable from Amgen; even if “skilled artisans will generate at least one claimed antibody each time they follow the disclosed process, this does not take the process out of the realm of the trial-and-error approaches rejected in Amgen”); Medytox (Fed. Cir. 06/27/23) (aff’g PTAB proposed substitute claim’s element of “50% or greater” (construed as range of 50% to 100%) effect of dosage, lacked full-scope enablement, where Spec. disclosed “at most three examples of responder rates above 50% at 16 weeks: 52%, 61%, and 62%,” citing Amgen). “This important doctrine prevents both inadequate disclosure of an invention and overbroad claiming that might otherwise attempt to cover more than was actually invented. Thus, a patentee chooses broad claim language at the peril of losing any claim that cannot be enabled across its full scope of coverage.” Patent owner asserted that the open-ended element in claims of causing a “change in the resistance by at ‘least 10%” covered performance gains “up to infinity.” “In sum, this field of art has advanced vastly after the filing of the claimed invention. The specification containing these broad claims, however, does not contain sufficient disclosure to present even a remote possibility that an ordinarily skilled artisan could have achieved the modern dimensions of this art. Thus, the specification enabled a marginal advance over the prior art, but did not enable at the time of filing a tunnel junction of resistive changes reaching even up to 20%, let alone the more recent achievements above 600%.” Magsil (Fed. Cir. 08/14/12) (aff’g Summ. J. of invalidity for lack of full scope enablement); Pacific BioSciences (Fed. Cir. 05/11/21) (aff’g denial of JMOL after jury verdict of non-enablement despite alleged infringer expert’s admission that artisan could practice claimed method using prior art method, as jury may have understood that admission to be limited to synthetic nucleic acids not biological DNA which were also encompassed by full scope of claim); Trustees of Boston Univ. (Fed. Cir. 07/25/18) (rev’g denial of JMOL; no enablement as a matter of law; “BU notes that there is no dispute as to enablement of five out of the six referenced permutations and argues ‘[t]hat is sufficient.’ We disagree. Our precedents make clear that the specification must enable the full scope of the claimed invention.”); Idenix Pharma. (Fed. Cir. 10/30/19) (2-1) (aff’g JMOL of no full-scope enablement; “an enabling disclosure must ‘be commensurate in scope with the claim.’”); Sitrick (Fed. Cir. 02/01/08) (aff’g Summ. J. of non-enablement: “Because the asserted claims are broad enough to cover both movies and video games, the patents must enable both embodiments.”); Alcon Res. (Fed. Cir. 08/08/12) (in context of construing claim: “When you claim a concentration range of 0.0001-5% w/v (as claim 2), you can’t simply disavow the invalid portion and keep the valid portion of the claim. If everything up to 0.001% w/v is admittedly not enabled, then the entire claim is invalid.”); In re The Pen (Fed. Cir. 06/12/24) (non-precedential) (aff’g rejection of ex parte application claims for lack of full-scope enablement where full scope of the claims encompassed “polymers with any “R” group and an “n” of more than 8, at least 50, or at least 1000,” but prior art achieved an “n” to 8. “In short, the more you claim, the more you must explain.”); Creative Kingdoms (Fed. Cir. 12/19/14) (non-precedential) (aff’g invalidity for lack of enablement: “Here, the novelty of the asserted claims includes the use of sensors in combination, and the scope of the asserted claims includes both mechanical and electronic sensors. But the two specifications contain no guidance as to how electronic sensors … can be substituted or added to detect different motions, as required by the asserted claims.”); Enzo IV (Fed. Cir. 07/05/19) (aff’g Summ. J. of non-enablement: claims required “not just a particular structure, but a particular functionality” and the Spec. did not teach “whether the many [potential] embodiments of the broad claims would exhibit that required functionality”; the art was unpredictable and each of the “extremely large number of possible embodiments” would need to be tested to determine if it had that functionality); In re Hyatt (Fed. Cir. 06/06/83) (aff’g rejection of single “means” claim under “the requirement of the first paragraph of § 112 that the enabling disclosure of the specification be commensurate in scope with the claim under consideration.” “The long-recognized problem with a single means claim is that it covers every conceivable means for achieving the stated result, while the specification discloses at most only those means known to the inventor.”). But see Alcon Res. (Fed. Cir. 03/18/14) (rev’g full scope enablement invalidity judgment, for failure to make required threshold showing that some experimentation is necessary to practice the claimed methods, as opposed to optimizing their results). See generally Sanofi BIO (S. Ct. 03/14/2022) (defending requirement that full scope of claim be enabled); Sanofi Br. for Respondents (S. Ct. 02/03/2023) (same).
  • Not Every Variation Of Condition Or Disease Should Be Treated As Separate Species For Which Enablement Must Be Shown: “Liquidia essentially asks us to treat Group 2 PH as a claimed species within a larger genus (i.e., all five groups of pulmonary hypertension). But analogizing a subset of patients having a variant of a particular disease to traditional genus and species claims is inapt. It would be incorrect to fractionate a disease or condition that a method of treatment claim is directed to, and to require a separate disclosure in the specification for each individual variant of the condition (here, an individual group of pulmonary hypertension patients) in order to satisfy the enablement and written description provisions of 35 U.S.C. § 112, unless these variants are specified in the claims.” United Therapeutics (Fed. Cir. 07/24/23) (aff’g ruling rejecting written-description defense).
• Full Scope Enablement Defense May Require Identifying Some Non-Enabled Embodiment(s): “It is important to consider the quantity of experimentation that would be required to make and use, not only the limited number of embodiments that the patent discloses, but also the full scope of the claim.” Amgen (Sanofi) II (Fed. Cir. 02/11/21) (aff’g JMOL of no enablement of full scope of functionally defined broad class of antibodies (i.e., covering any isolated monoclonal antibody that binds to at least two identified amino acid residues on the naturally occurring protein PCSK9 and blocks PCSK9 from binding to LDL receptors in the liver) with millions of candidates, in an unpredictable field, where Spec. disclosed roughly two dozen antibodies within the scope of the claims), aff’d, (U.S. 05/18/2023). Argument Transcript (U.S. 03/27/2023). “Conducting the Wands analysis has routinely involved concrete identification of at least some embodiment or embodiments asserted not to be enabled—including what particular products or processes are or may be within the claim, so that breadth is shown concretely and not just as an abstract possibility, and how much experimentation a skilled artisan would have to undertake to make and use those products or processes.” McRO II (Fed. Cir. 05/20/20)  (vacating judgment of no full scope enablement as being too abstract).
• Generally, Need Not Disclose Working Example Of Every Embodiment Within Claim Scope: Spec. “need not include a working example of every possible embodiment to enable the full scope of the claims.” Bayer (Fed. Cir. 03/01/21) (aff’g jury verdict rejecting enablement defense).  See Amgen (U.S. 05/18/2023) (Spec. need not always “describe with particularity how to make and use every single embodiment within a claimed class. For instance, it may suffice to give an example (or a few examples) if the specification also discloses ‘some general quality . . . running through’ the class that gives it ‘a peculiar fitness for the particular purpose.’”).
• Broad Functional Claim Elements Non-Enabled If Requires Undue Experimentation To Identify Undisclosed Structures That Perform The Function: “While functional claim limitations are not necessarily precluded in claims that meet the enablement requirement, such limitations pose high hurdles in fulfilling the enablement requirement for claims with broad functional language…. We do not hold that the effort required to exhaust a genus is dispositive. It is appropriate, however, to look at the amount of effort needed to obtain embodiments outside the scope of the disclosed examples and guidance.” Amgen (Sanofi) II (Fed. Cir. 02/11/21) (aff’g JMOL of no enablement of full scope of functionally defined broad class of antibodies with millions of candidates: “If the genus is analogized to a plot of land, the disclosed species and guidance ‘only abide in a corner of the genus.’”), separate op. on denial en banc review (Fed. Cir. 06/21/21) (3 panel judges) (“Drawing a broad fence around subject matter, without filling in the holes, is not inventing the genus. It in fact discourages invention by others.” “Claims defining a composition of matter by function raise special problems because one may not know whether a species is within the scope of a generic claim until one has made it and one can ascertain whether it possesses the claimed function, hence that it has been enabled. In such cases, it is circular; enablement comes only with success, which depends upon enablement. It is not the law that one can put forth an idea, or a result or function, and claim all methods of achieving it; one cannot claim everything that works.”), cert. petition (11/18/21) (challenging enablement being a question of law and challenging “full scope” enablement doctrine), CVSG (U.S. 04/18/2022), U.S. Amicus (09/21/2022) (urging denial of Cert.: enablement is a mixed question of law and fact and Fed. Cir. correctly applies JMOL standard to Wands facts; “where a patentee purports to invent an entire genus, it must enable the entire genus”; “disclosing how to produce some antibodies that perform a specified function is not equivalent to disclosing how to produce all such antibodies—and it is the latter that petitioners claim as their invention”; S. Ct. decisions support requirement of enabling full scope; decision reasonable on the facts), aff’d, (U.S. 05/18/2023) (a Spec. is not “necessarily inadequate just because it leaves the skilled artist to engage in some measure of adaptation or testing.” Spec. “may call for a reasonable amount of experimentation to make and use a patented invention. What is reasonable in any case will depend on the nature of the invention and the underlying art. But in allowing that much tolerance, courts cannot detract from the basic statutory requirement that a patent’s specification describe the invention ‘in such full, clear, concise, and exact terms as to enable any person skilled in the art’ to ‘make and use’ the invention.”); In re Starrett (Fed. Cir. 06/08/23) (aff’g for lack of enablement Examiner rejection of claims reciting a “machine learning task” in part based on Amgen).
  • S. Ct. Decisions: Amgen (U.S. 05/18/2023) (claims to “an entire class of things defined by their function—every antibody that both binds to particular areas of the sweet spot of PCSK9 and blocks PCSK9 from binding to LDL receptors” invalid for non-enablement because class includes a “vast number” of antibodies not described by their amino acid sequences and the additional teachings in the Spec. “amount to little more than two research assignments” that are trial-and-error methods); Consolidated Elec. Light (11/11/1895) (broad claims invalid under precursor to Sec. 112(a) (and as being “indefinite”) where Spec. disclosed carbonized paper and wood carbon filaments as incandescent light bulb filaments and claimed filaments composed of any “carbonized fibrous or textile material” but Spec. did not identify “some general quality, running through the whole fibrous and textile kingdom, which distinguished it from every other, and gave it a peculiar fitness for the particular purpose,” and “the most careful and painstaking experimentation” would have been necessary “for a person to know what fibrous or textile material was adapted to the purpose of an incandescent conductor,” and Thomas Edison later discovered that particular type of bamboo was well-suited for the purpose but many other species within claim were not); Holland Furniture (U.S. 05/14/1928) (claim to a starch glue described as being as effective as animal glue invalid; “a claim so broad, if allowed, would operate to enable the inventor who has discovered that a defined type of starch answers the required purpose to exclude others from all other types of starch and so foreclose efforts to discover other and better types. The patent monopoly would thus be extended beyond the discovery and would discourage rather than promote invention. That the patentee may not by claiming a patent on the result or function of a machine extend his patent to devices or mechanisms not described in the patent is well understood.”). “One attempting to use or avoid the use of [the] discovery as so claimed and described functionally could do so only after elaborate experimentation.”); Bene (U.S. 03/05/1889) (aff’g no infringement; broader claims if construed literally would lack enabling dislosure: “the specification is not full and clear enough to give one skilled in chemistry such an idea of the particular kinds and character of the chemicals, or combination of chemicals, with the relative proportions of each, as would enable him to use the invention without having to resort to experiments of his own to discover those ingredients”). Cf. Minerals Separation (U.S. 12/11/1916) (upholding claims for separating metallic from nonmetallic material in ore by agitating the ore in a solution of water and oil, despite “that when different ores are treated preliminary tests must be made to determine the amount of oil and the extent of agitation necessary in order to obtain the best results,” because “the process is one for dealing with a large class of substances and the range of treatment within the terms of the claims, while leaving something to the skill of persons applying the invention, is clearly sufficiently definite to guide those skilled in the art to its successful application”).
• Full Scope Enablement (Or Written Description) Defense Effectively Can Be Won In Claim Construction: At patent owner’s urging, Fed. Cir. construed claims not to be limited to an injector with a pressure jacket, but Spec. enabled only injector with a pressure jacket, so full scope of claim not enabled. Liebel-Flarsheim (Fed. Cir. 03/22/07); cf. Idenix Pharma. (Fed. Cir. 10/30/19) (2-1) (aff’g JMOL of no full-scope enablement based on Wands factors applied to evidence presented to jury, while conceding that claims might be enabled under narrower construction. Based on unappealed claim constructions, “there are billions of potential 2′-methyl-up nucleosides,” or at least “many, many thousands.” “The key enablement question is whether a person of ordinary skill in the art would know, without undue experimentation, which 2′-methyl-up nucleosides would be effective for treating HCV.”); Trustees of Boston Univ. (Fed. Cir. 07/25/18) (rev’g denial of JMOL after jury verdict rejecting enablement defense; no enablement as a matter of law; claim construction sought by patent owner created six permutations of the relationship between two layers in a semiconductor, but Spec. did not enable one permutation that experts agreed was physically impossible using type of methods disclosed in Spec. (“a monocrystalline growth layer formed directly on an amorphous buffer layer”). “Having obtained a claim construction that included a purely amorphous layer within the scope of the claim, BU then needed to successfully defend against an enablement challenge as to the claim’s full scope.”); Synthes (Fed. Cir. 10/29/13) (2-1) (claim construed broadly at plaintiff’s urging, to cover “openings” in an implant, but Spec. disclosed only grooves not slots or channels: aff’d jury verdict claim invalid for lack of written description support); Magsil (Fed. Cir. 08/14/12) (patent owner “advocated for a broad construction of this claim term” that covered large performance gains over prior art; “MagSil’s difficulty in enabling the asserted claims is a problem of its own making.”); Alza (Fed. Cir. 04/26/10) (claimed methods for treating ADHD using a methylphenidate (“MPH”) drug dosage form whose release rate ascends over an extended period of time. Series of apps. included CIP, continuation and provisional. Ancestor app. mentioned non-osmotic and osmotic embodiments but enabled only the latter. Patent owner obtained construction covering both Claims therefore invalid for lack of enablement. “Enablement is determined as of the effective filing date of the patent’s application.”); Promega I (Fed. Cir. 12/15/14) (undisputed claim construction encompassed not only recited reaction but any other larger, more complex multiplex reaction; citing MagSil with approval), reconfirmed Promega II (Fed. Cir. 11/13/17) (on remand from S. Ct.); Convolve I (Fed. Cir. 07/01/13) (non-precedential) (aff’g Summ. J. of no full scope enablement; “claims purport to cover inputs into any and all physical systems, including disk drives”). Cf. Graver Tank (U.S. 02/28/1949) (claim reciting “metallic silicates” invalid where only nine metallic silicates had been disclosed in Spec. and proved operative, and no basis for construing claims to be limited to those nine).
  • Open-Ended Limitations: open-ended claim limitations, such as “at least …,” particularly when reciting some alleged performance improvement, are well-suited to a full scope enablement challenge. Magsil (Fed. Cir. 08/14/12) (claim recited causing a “change in the resistance by at ‘least 10%’”); Promega I (Fed. Cir. 12/15/14) (claim element “comprising” a combination of three specific elements construed to be open-ended and thus encompassed larger, more complex combinations not enabled by Spec.), reconfirmed Promega II (Fed. Cir. 11/13/17) (on remand from S. Ct.). Andersen test applies to open-ended limitations: “They may be supported if there is an inherent, albeit not precisely known, upper limit and the specification enables one of skill in the art to approach that limit.” FS.com (Fed. Cir. 04/20/23) (aff’g ITC finding enablement of limitations “a fiber optic connection density of at least ninety-eight (98) fiber optic connections per U space” and “…at least one hundred forty-four (144) …,” where parties agreed to use of Andersen test and upper limit established by evidence that as of priority date artisans would have understood densities substantially above 144 “were technologically infeasible” so claims were construed to not exceed that upper limit); Andersen (Fed. Cir. 01/26/07) (aff’g jury verdict of enablement of “a Young’s modulus rating of greater than 500,000” where artisan would recognize upper limit of the Young’s modulus of the structural member would be between Young’s modulus of the wood fiber and of the polymer used in the composition); Scripps Clinic (Fed. Cir. 03/11/91) (“Open-ended claims are not inherently improper; as for all claims their appropriateness depends on the particular facts of the invention, the disclosure, and the prior art. They may be supported if there is an inherent, albeit not precisely known, upper limit and the specification enables one of skill in the art to approach that limit.”); In re Fisher (CCPA 06/11/70) (“In cases involving unpredictable factors, such as most chemical reactions and physiological activity, the scope of enablement obviously varies inversely with the degree of unpredictability of the factors involved. In the present case we must conclude, on the record before us, that appellant has not enabled the preparation of ACTHs having potencies much greater than 2.3, and the claim recitations of potency of ‘at least 1’ render the claims insufficiently supported under the first paragraph of 35 U.S.C. § 112.”).
  • Purely Functional (Desired Result) Limitations: USPTO will reject for lack of enablement a claim reciting a “purely functional claim element” with no limitation of structure, whether or not at the point of novelty, unless it triggers Sec. 112, ¶ 6. Ex parte Miyazaki (BPAI 11/19/08) (precedential) (“the claimed ‘sheet feeding area operable to feed …’ is a purely functional recitation with no limitation of structure” and thus unpatentable for lack of definiteness and lack of enablement).  See In re Xencor (Fed. Cir. 01/23/24) (non-precedential) (permitting remand at USPTO request “so that the USPTO’s Appeals Review Panel can be convened to ‘clarify the USPTO’s position on the proper analysis of Jepson-format and means-plus function claims in the field of biotechnology, and particularly in the antibody art’”).
• TIPS:

c) undue/unreasonable experimentation

• Undue/Unreasonable Experimentation (Wands Factors): “determination of whether the requisite amount of experimentation is undue may include consideration of: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.” Elan (Fed. Cir. 10/02/03) (in context of whether prior art reference is enabling) (citing In re Wands (Fed. Cir. 09/30/88) (rev’g BPAI rejection of claims for non-enablement)). But need not address each factor. In re Hillis (Fed. Cir. 05/21/12) (aff’g PTO non-enablement rejection). First challenger must show that some experimentation would be necessary to practice the claimed invention. Alcon Res. (Fed. Cir. 03/18/14) (“After the challenger has put forward evidence that some experimentation is needed to practice the patented claim, the factors set forth in Wands then provide the factual considerations that a court may consider when determining whether the amount of that experimentation is either ‘undue’ or sufficiently routine such that an ordinarily skilled artisan would reasonably be expected to carry it out.”); Vasudevan Software (Fed. Cir. 04/03/15) (rev’g Summ. J. of no enablement where some Wands factors genuinely disputed; difficulty developing commercially acceptable embodiment not dispositive). See Idenix Pharm. (Fed. Cir. 10/30/19) (2-1) (aff’g JMOL of no full scope enablement, based on applying each Wands factor to evidence before jury).  See Baxalta II (Fed. Cir. 09/20/23) (“We do not interpret Amgen to have disturbed our prior enablement case law, including Wands and its factors.” “We see no meaningful difference between Wands’ ‘undue experimentation’ and Amgen’s ‘[un]reasonable experimentation’ standards.”).
• Patent Applicants’ Difficulty Or Failure To Implement Disclosed Technique Is Strong Evidence Of Non-Enablement: “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.” Ormco (Fed. Cir. 08/24/07) (aff’g Summ. J. of no enablement); Convolve I (Fed. Cir. 07/01/13) (non-precedential) (aff’g Summ. J. of no full scope enablement based on inventor testimony that it took him nine years to fully implement the invention in disk drives); Taylor (2018-1047) (Fed. Cir. 04/03/20) (non-precedential) (aff’g Summ. J. in Sec. 145 review of non-enablement rejection of claims, relying in part on applicant’s admission that he was waiting for other developments). But Spec. need not enable most efficient commercial embodiment. Transocean (Fed. Cir. 08/18/10) (rev’g Summ. J. of invalidity for non-enablement). Evidence that patent applicants engaged in arguably undue experimentation to implement claimed invention is relevant to enablement even if those efforts occurred after the priority date sought. Amgen (Sanofi) I (Fed. Cir. 10/05/17). Explore in discovery.
• Must Teach Skilled Artisan Which Combinations Will Produce The Claimed Functionality: Even if disclosure teaches how to make “the broad range of labeled polynucleotides covered by the claims,” it fails to teach which combinations will provide the claimed functionality. Enzo Life Sci. (Fed. Cir. 07/05/19) (aff’g Summ. J. non-enablement; in highly unpredictable art, with tens of thousands of possible embodiments, sparse Spec. fails to teach “whether the many embodiments of the broad claims would exhibit that required functionality.”); Wyeth (Fed. Cir. 06/26/13) (aff’g Summ. J.; would have required undue experimentation to determine which compounds in the claimed class, with at least tens of thousands of candidates, would have the required functionality).

d) teaching away

• Teaching Away May Show Non-Enablement: If a Spec. teaches away from a substantial portion of the claim, there is no enablement. AK Steel (Fed. Cir. 09/23/03) (claims construed to “read on steel strips containing either a Type 1 or a Type 2 aluminum coating,” but Spec. admitted its technique would not achieve claimed result with a Type 1 coating: “We have discovered this [Type 1] aluminum coating metal does not wet well with ferritic chromium alloy steel, even when using the hydrogen protective atmosphere. . . .   Commercially pure hot dip aluminum coatings, otherwise known as Type 2 in the industry, are preferred for our invention.”). But see Callicrate (Fed. Cir. 10/31/05) (a disclosure in background section sufficient for enablement even though the patent criticized it, stating “disparaging remarks in a background section or remarks characterizing the prior art as less effective do not remove those disclosures as enabling references”).