Thursday, September 06, 2007

"Conceptional" Disclosure Sinks Patent Under 35 U.S.C. 112(1)

Automotive Technologies International, Inc. v. BMW of North America, Inc. (2006-1013, -1037), September 6, 2007 (link)

During litigation, the district court invalidated ATI's patent under 35 U.S.C. 112, first paragraph for failing to comply with the written description requirement and lack of enablement.

ATI's patent dealt with a crash sensing device for deployment in an "occupant protection apparatus" (e.g., airbag) during an impact or crash involving the side of a vehicle. The invention was directed to a velocity-type sensor placed in a position within a vehicle on order to sense a side impact. The sensor was considered an improvement over "crush sensors" which triggered only when they were crushed or deformed.

The district court construed the relevant phrase "means responsive to the motion of said mass" to include both mechanical side impact sensors and electronic side impact sensors for performing the function of initiating an occupant protection apparatus. The problem was that the specification only provided details on the mechanical side, with little left over for the electronic side:

Considering first the specification, although two full columns and five figures of the ’253 patent detail mechanical side impact sensors, only one short paragraph and one figure relate to an electronic sensor. Importantly, that paragraph and figure do little more than provide an overview of an electronic sensor without providing any details of how the electronic sensor operates . . . The specification even states that Figure 11 is a "conceptional view" of an electronic sensor. This is supported by the statement of one of the inventors that Figure 11 "is not meant to represent any specific design or sensor or anything, just a concept."

Moreover, the textual description of Figure 11, which is the only description of an electronic sensor in the patent, provides little detail concerning how the electronic sensor is built or operated . . . That general description, however, fails to provide a structure or description of how a person having ordinary skill in the art would make or use an electronic side impact sensor. Indeed, inventor Breed admitted that the specification fails to disclose structure for any of the technologies mentioned. Noticeably absent is any discussion of the circuitry involved in the electronic side impact sensor that would provide more detail on how the sensor operates. The mere boxed figure of the electronic sensor and the few lines of description fail to apprise one of ordinary skill how to make and use the electronic sensor.

ATI argued that despite the limited disclosure, the knowledge of one skilled in the art was sufficient to supply the missing information. The CAFC disagreed:
In Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997), we stated: "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." Although the knowledge of one skilled in the art is indeed relevant, the novel aspect of an invention must be enabled in the patent. The novel aspect of this invention is using a velocity-type sensor for side impact sensing. During prosecution, ATI stated that prior to its invention, "it was assumed that [conventional] inertial sensors would actuate too slowly to deploy an air bag in a side impact situation" and also that it "was unexpected that frontal impact sensors, properly designed, would work in sensing side impacts." ATI further stated that the "essential concept of the
invention" is to use "an inertial or acceleration sensor on a motor vehicle for sensing side impacts." Thus, according to ATI, using inertial or acceleration sensors to sense side impacts represented a "breakthrough" in side impact crash sensing. Given that the novel aspect of the invention is side impact sensors, it is insufficient to merely state that known technologies can be used to create an electronic sensor . . . [w]hen there is no disclosure of any specific starting material or of any of the conditions
under which a process can be carried out, undue experimentation is required.


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