Federal Circuit Clarifies Enablement Requirement For Embodiments Not Fully Explained in Specification But Included in the Scope of the Claims

In Sitrick v. Dreamworks LLC, 85 USPQ2d 1826 (Fed. Cir. 2008), David Sitrick is the owner of the two patents at issue in this case: U.S. Patent No. 5,553,864 and U.S. Patent No. 6,425,825.  These two patents are both directed toward integrating a user’s appearance and voice into a video game or a movie.  Sitrick sued Dreamworks and a host of other motion picture studios, alleging that the “ReVoice Studio” program distributed by the defendants infringed Sitrick’s patents.  The defendants filed a motion for summary judgment, in part, on the grounds that the patents did not enable the full scope of the claims; in particular, the patents did not enable the claims with respect to movies.  The District Court granted the motion.

On appeal, the Federal Circuit affirmed the District Court’s grant of the defendant’s motion for summary judgment.  Specifically, the Federal Circuit agreed with Dreamworks, finding that the specification only enabled the claims with respect to video games, and noted that the uncontested claim scope was broader than video games and encompassed video.  In reviewing the law of enablement, the Federal Circuit found that the enablement requirement of the first paragraph of 35 U.S.C. § 112 requires that the specification of a patent must enable a person of ordinary skill in the art to make and use the invention described in the claims.  This requirement is satisfied if, after reading the specification, a person of ordinary skill in the art would be able to practice the invention without undue experimentation.  Sitrick, slip op. at 8 (citing AK Steel Corp. v. Sollac, 344 F.3d 1234, 1238-39 (Fed. Cir. 2003)). The full scope of the claims must be enabled.  Id. (citing Auto. Techs. Int’l v. BMW of N. Am., Inc., 501 F.3d 1274, 1285 (Fed. Cir. 2007)). Importantly, this enablement must be to the full scope of the claim.

The claims in the two patents encompassed both video games and movies, the Federal Circuit found, citing disclosures in the specifications as well as Sitrick’s assertions during litigation.  Sitrick, slip op. at 3. The specifications disclose a system where a user can integrate a video, image, or voice into an “audiovisual presentation”, such as a video game or a movie.  Id. at 5. As such, to satisfy the enablement requirement, there must be sufficient disclosure in the specification with regard to the use of the disclosed system with a movie.

In reviewing the specification, the Federal Circuit noted that the integration function is performed by an Intercept Adapter Interface System (IAIS).  The IAIS intercepts address signals transmitted from a video game apparatus.  If the address signals correspond to functions that are to be replaced by a user image, the IAIS reconfigures the signals so as to integrate the user image into the data stream.  A user image is broadly defined in the specifications as including both a video image and an audio signal.

Movies, however, operate under a principle significantly different than video games.  According to the testimony of Dreamworks’ experts, movies do not employ the sort of character functions of video games.  Sitrick, slip op. at 11.  In video games, the character functions of the various characters appearing within the video game environment are separated into distinguishable address signals, and the motion of the characters within the environment is controlled by discrete signals that a controller, like the IAIS, can detect and modify.  On the other hand, movies do not have such signals.  Movies provide a series of complete frames that, when taken together, form a continuously moving picture.  The process of inserting a user image into a motion picture frame is very different from the process of inserting a user image into a video game, because the motion picture frame lacks the easily discernable character signals found in the video game.  The specifications of the patents provided no guidance as to how the IAIS could be used to integrate a user image into a motion picture frame.  Given the differences between movies and video games, the lack of information as to how the system would work with movies provided clear and convincing evidence that the specification did not enable the claims with respect to movies, which was admitted to be within the scope of the claims.  Without an enabling disclosure for movies, the Federal Circuit upheld the invalidity of the claims.

The Federal Circuit discounted the testimony of Sitrick’s expert.  Sitrick’s expert admitted that he was not familiar with motion pictures, and testified that he did not know if he would be able to modify the IAIS to work with movies.  Sitrick, slip op. at 12.  The expert’s inability to support his conclusion did not create a triable issue of material fact sufficient to defeat the summary judgment motion when viewed in light of the evidence provided by the Defendant’s two experts .  Id.

The Federal Circuit also turned aside Sitrick’s objections to claim construction.  Sitrick argued that the District Court had erred in constructing claim 54 of the ‘864 patent, which included a step of synthesizing a user’s voice, wherein the “user voice parameter data is input as a model to a voice synthesizer”.  Sitrick, slip op. at 12-13.  Sitrick argued that this language should include the mere playback of the user’s voice sample.  However, the District Court found, and the Federal Circuit agreed, that the language of the claim plainly specified that the user’s voice was to be a model for the voice synthesizer.  The synthesizer could replay the words the user spoke in the sample, but the synthesizer could not merely play back the sample.  Rather, the synthesizer needed to generate the words using the user sample.  Applying this construction, the Federal Circuit agreed that the claims were not enabled, because nothing in the specification explained how the synthesizer could perform this function, which, according to the experts, was “difficult and problematic”.

Finally, the Federal Circuit discounted Sitrick’s argument that the case should be transferred from the Central District of California to the Northern District of Illinois, citing the two years during which Sitrick litigated the case in California without attempting to transfer venue.  Id. at 14.

Significance to Patent Applicants and Owners

Sitrick serves as a warning to patent applicants that the Federal Circuit is looking for increased support in the specification in order to support broad claim language.  As such, where broad claim language is being utilized, it is important that patent applicants, during the application drafting process, provide information as to likely mechanisms for alternative embodiments.  Moreover, for existing patents, Sitrick also demonstrates the importance of choosing the right experts during enforcement actions.  In Sitrick, the patent owner’s expert’s inability to describe how one of ordinary skill in the art would be able to more broadly apply the teachings of the specification was fatal to the patent itself.  As such, Sitrick further demonstrates the importance of ensuring an expert is capable of describing such use, and is properly prepared to be asked questions relating to enablement during enforcement.

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