National Recovery Technologies, Inc. v. Magnetic Separation Systems, Inc.

United States Court of Appeals for the Federal Circuit (Fed. Cir). February 4, 1999

BACKGROUND
Your competitor announces that it has received a very broad patent that may cover technology that you are currently developing. Scooped again? Upon review of the specification and the claims, you note that the claims encompass what you consider to be a bit of science fiction along with the science and wonder if the claims are valid.

EXECUTIVE SUMMARY
In this patent infringement case relating to systems for sorting recyclable plastic materials, the District Court and the Fed. Cir. were faced with determining whether the claimed invention, as interpreted by the courts, was enabled by the specification. In practicing the invention, electromagnetic radiation is passed through plastic materials and the exiting electromagnetic radiation analyzed so that the chemical characteristics of the plastic material can be determined. Based on the determined chemical characteristics, plastic materials can be properly sorted for recycling. One problem to be overcome was the presence of irregularities in plastic materials, such as bottles, which could impact the method. At the heart of the matter was the language "selecting for processing those of said process signals which do not pass through irregularities in the bodies of said material items" (emphasis added). The courts interpreted "selecting" in light of its ordinary meaning, particularly "choosing" or "picking out." The District Court found that the specification taught a proxy for the selecting step, but did not teach the selecting step itself, and that the specification indicated that such a selecting step was not possible. The District Court held that one of ordinary skill in the art could not select for signals that do not pass through irregularities in the plastic materials without undue experimentation because the written description did not explain how to distinguish between signals that pass through irregular portions and those that did not. The District Court found the claims invalid and the Fed. Cir. affirmed.

IMPORTANCE OF THE CASE
This case is important because it indicates that although the patent laws do not require the claimed invention to work perfectly under all circumstances, the requirements of enablement under 35 U.S.C. 112, first paragraph, will be carefully scrutinized. In particular, this case points to the importance of claiming what was invented, rather than what one hopes to invent.

THE LAW
The first paragraph of 35 U.S.C. 112 states:

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, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

The enablement requirement of the first paragraph of 35 U.S.C. 112 requires that the patent specification enable those skilled in the art to make and use the full scope of the claimed invention without undue experimentation based on the underlying facts. Genentech, Inc. v. Novo Nordisk A/S, 42 USPQ2d 1001, 1004 (Fed. Cir. 1997); In re Wright, 27 USPQ2d 1510 1513 (Fed. Cir. 1993); and In re Vaeck, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991). In short, the specification and the claims must be in balance.

Factors to be considered when evaluating whether there is undue experimentation include: 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 non predictability of the art, and 8) the breadth of the claims. In re Wands, 8 USPQ2d 1400 (Fed. Cir. 1988).
In this case, the Fed. Cir. noted that: In order to satisfy the enablement requirement of [section] 112, paragraph 1, the specification must enable one of ordinary skill in the art to practice the claimed invention without undue experimentation. Thus, with respect to enablement the relevant inquiry lies in the relationship between the specification, the claims, and the knowledge of one of ordinary skill in the art. If, by following the steps set forth in the specification, one or 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 [section] 112, first paragraph.