Last Wednesday, in MagSil Corp. v. Seagate Technology, C.A. No. 08-940 (D. Del. Feb. 16, 2011), Chief Judge Bartle (sitting by designation from the District of New Jersey) granted Defendants’ motion for summary judgment and issued a memorandum opinion addressing Plaintiff’s asserted claims in light of the enablement requirement of 35 U.S.C. § 112.
The asserted claims related to a junction consisting of two or more electrodes separated by a layer of insulation. The junction exhibited an electrical resistance which could be increased or decreased by exposing the junction to magnetic fields. Id. at 4. While the specification taught a method of constructing junctions with a maximum resistive change of 11.8%, the inventors claimed junctions with resistive changes of “at least 10%” – essentially claiming not only the junction taught by the specification, but all junctions “with resistive changes of 20%, 200%, 2000%, and up to infinity[.]” Id. at 8. Because the asserted claims had no upper limit on resistive change, id. at 8, Defendants proved by clear and convincing evidence that the specification was “insufficient to enable one of ordinary skill in the art to make and use the full scope” of the claims without undue experimentation, making the claims invalid. Id. at 18-19.