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Judge Burke recommends granting motion for summary judgment of no invalidity based on non-enablement and insufficient written description

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In a recent Report and Recommendation, Magistrate Judge Christopher J. Burke recommended that the court grant plaintiff’s motion for summary judgment of no invalidity based on (i) non-enablement and (ii) insufficient written description for U.S. Patent No. 5,735,892 (“the ‘892 patent”), which is directed to thin-wall intraluminal graft devices. W.L. Gore & Associates, Inc. v. C.R. Bard, et al., C.A. No. 11-515-LPS-CJB (D. Del. Nov. 16, 2015).

First, Judge Burke found that defendants failed to present evidence sufficient to raise a genuine issue of fact regarding whether plaintiff failed to satisfy the enablement requirement. Id. at 17. As Judge Burke observed, “[t]he crux of the parties’ dispute with respect to enablement is whether the ‘892 patent enables the full scope of the claimed ‘tubular covering’ of ePTFE.” Id. at 8. Defendants argued that “because the covering limitation is not limited to those made from films, the ‘892 patent fails to enable the skilled artisan to practice the full scope of the claimed invention because it does not teach the use of coverings made from extruded tubes.” Id. As Judge Burke explained, however, “where a product claim does not limit a component part to the method of making (as here), it is irrelevant whether an alternative method requires undue experimentation—since . . . only one method of making the invention need be enabled.” Id. at 16. Accordingly, “[i]n circumstances like these—where a material difference has not been demonstrated in an end product made by two different methods—the method of constructing the claimed covering using extruded tubes simply amounts to an improved mode of achieving the claimed invention that need not be enabled by the patent.” Id. at 16-17.

Defendants raised a similar argument as to the written description requirement, contending that the ‘892 patent “does not convey that the inventors had possession of any embodiment of the invention that used extruded tubes to achieve the claimed device.” Id. at 18. Judge Burke found this argument failed “[f]or the same reasons that [defendants’] arguments failed with respect to enablement.” Id. at 18-19. Judge Burke thus found defendants failed to raise a genuine issue of fact as to whether plaintiff failed to satisfy the written description requirement. See id.

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