Appeal from judgment declaring patent invalid for lack of utility and lack of enabling disclosure. The invention involved was a self-cleaning common cavity oven, which purported to solve problems in the prior art relating to contamination of the microwave feed system. The patent contained 5 independent claims (1-5) and 2 dependent claims (6 & 5).
The district court interpreted claims 1, 3 and 4 as requiring a means for continuing convection during auto-ignition. Finding, however, that convection did not in fact occur when there was auto-ignition, the district court held the claims invalid for lack of utility. The Federal Circuit affirmed the district court’s holding for claim 1, but reversed for claims 3 and 4, noting that just because “claims are interpreted in light of the specification does not mean that everything expressed in the specification must be read into all the claims†and finding that the district court erroneously read the auto-ignition claim language of claim 1 into claims 3 and 4. Id. at 957. With regard to the fact that claim 1 required something that cannot physically happen, the court noted that “{w}hile a patent covering a meritorious invention should not be struck down because the patentee has misconceived the scientific principle of his invention, the error cannot be overlooked when the misconception is embodied in the claim.†Id. at 956. Additionally, the court noted that “when a claim requires a means for accomplishing an unattainable result, the claimed invention must be considered inoperative as claimed and the claim must be held invalid under either § 101 or § 112 of 35 U.S.C.†Id.
The district court interpreted claims 1, 2, and 5-7 as requiring the prevention of auto-ignition. Because auto-ignition did occur in the invention, the district court held the claims invalid for lack of utility. The Federal Circuit reversed the district court, noting that the inventor claimed only to prevent explosions, not prevent auto-ignition, and further noting that the patent itself addressed auto-ignition as something to be “resisted,†not eliminated.
After interpreting the claims as requiring prevention of backflow and auto-ignition, the district court held the claims invalid for lack of utility because they failed to accomplish all of the objectives stated in the patent. The Federal Circuit reversed this holding. Noting that “{w}hen a properly claimed invention meets at least one stated objective, utility under § 101 is clearly shown,†the court found that at least one of the patentee’s objectives had been accomplished. Id. at 959. With regard to one of the patentee’s theories about operation of the invention, which turned out to be incorrect, the court found that “a patentee is not responsible for the correctness of such theories and explanations when their correctness is not related to validity of the claims under consideration.†Id.
Finally, the Federal Circuit found that a lack of utility cannot co-exist with infringement and commercial success. The court stated that “{a} correct finding of infringement of otherwise valid claims mandates as a matter of law a finding of utility under § 101.†Id. at 959. The court justified this rule on the basis that it “relates to the time of decision{,} not to the time of trial, and is but a common sense approach to the law. If a party has made, sold, or used a properly claimed device, and has thus infringed, proof of that device's utility is thereby established. People rarely, if ever, appropriate useless inventions.†Id. The court also noted that proof of utility is further supported when the invention, as set forth in the claims, has on its merits been met with commercial success.
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Tuesday 30 of September, 2008 13:45:42 GMT by Unknown
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Tuesday 30 of September, 2008 13:45:42 GMT by Unknown