In McRO, Inc. v. Bandai Namco, Inc. et al., No. 2019-1557, __ F.3d __ (Fed. Cir. May 20, 2020), the Federal Circuit reversed a judgment of invalidity and in doing so provided needed clarity concerning the application of the enablement requirement. This guidance is useful to patent owners and patent challengers, as the decision explains both how to craft enablement challenges and also how to sidestep such challenges.
The claims at issue in McRO concerned “method[s] for automatically generating animations, with a three-dimensional appearance, depicting lip movements and facial expressions.” At the district court, the defendants secured a summary judgment of invalidity by arguing that McRO’s claims lacked enablement because the claims covered two specific forms of animation that McRO’s specification did not teach how to make or use. On appeal, the Federal Circuit vacated the summary judgment of invalidity, clarifying several key points concerning enablement.
First, the court reiterated that a patent “need not teach, and preferably omits, what is well-known in the art.” Slip op. at 18. For this reason, enablement focuses only on the novel aspects of the claims. Id. As a consequence, a claim feature that is not well described in the specification does not lack enablement if that feature is nonetheless well-known in the art. Id.
Second, the court explained that because enablement concerns only what is within the scope of the claims, a feature that is not within the scope of the claims cannot be the basis for a lack of enablement. Id. at 19-20. Regarding the two forms of animation the challengers had alleged were within the scope of McRO’s claims but were not enabled by McRO’s specification, the Federal Circuit explained that neither of these two animation forms were in fact within the scope of the claims, and as a consequence, these forms of animation were “irrelevant to enablement.” Id. at 20.
Third, the court explained that the district court’s enablement analysis was insufficiently detailed. Instead of explaining the precise basis for the alleged lack of enablement, the district court’s analysis “merely state[d] the conclusion that the claims are too broad and the specification’s discussion is too narrow,” and the court saw “no reason in this case to depart from our usual requirement that the challenger identify specific [examples] that are or may be within the claim but are not enabled.” Id. at 22.
McRO thus provides useful pointers for both patent owners and patent challengers. A patent owner facing an enablement challenge should consider a defense that frames the challenger’s enablement position as (1) erroneously focusing on an embodiment outside the claim scope or (2) erroneously focusing on a claim feature that is already well-known. On the flip side, patent challengers should take care to confirm that the allegedly non-enabled embodiment on which they rely (1) truly is within the scope of the challenged claim and (2) is a point of novelty for the challenged claim and is not something that was already well-known in the art.