United States District Court, W.D. Wisconsin
WILLIAM M. CONLEY, DISTRICT JUDGE.
on divergent testimony during the liability phase of trial as
to the plain meaning of the term “enriched” as
used in the last step of “photo-damaging the selected
sperm cells to product an enriched population of sperm with
respect to either characteristic A or characteristic B”
in claim 1 of the '987 patent, the court invited the
parties to submit a proposed instruction on its meaning.
('503 dkt. #257-8.) In response, ABS filed a proposed
construction of this term to require “a viable enriched
sperm sample of at least 85% purity.” (ABS's Br.
('503 dkt. #1098) 2.) For the reasons explained on the
record and set out formally in this opinion, the court
rejects ABS's request.
explained in an earlier order, ABS attempted to read in a
claim requirement on remand of a “photo-damage sorter
that produces sexed semen at commercially usable speeds,
purities, and viability levels, ” based solely on
comments by the Seventh Circuit in its discussion of
obviousness. In rejecting that argument, the court explained
that the Seventh Circuit not only failed to adopt that
construction, but the Federal Circuit has consistently
rejected requiring a commercially viable embodiment in
determining whether a patent is enabled unless the claim
itself contained such a requirement. (9/3/19 Order ('503
dkt. #1085) 2 (citing CFMT, Inc. v. Yieldup Int'l
Corp., 349 F.3d 1333, 1338 (Fed. Cir. 2003), among other
cases).) As the Federal Circuit observed in CFMT, where a
patent simply claims improvement, without reference to a
specific amount or degree of removal of contaminants,
“the disclosure enables that invention by showing
improvements in the overall system.” 349 F.3d at 1338.
Likewise, in Transocean Offshore Deepwater Drilling, Inc.
v. Maersk Contractors USA, Inc., 617 F.3d 1296 (Fed.
Cir. 2010), the Federal Circuit observed, “[i]t is not
required to enable the most optimized configuration, unless
this is an explicit part of the claims.” Id.
at 1306-07. In contrast, where the patent claims a specific,
measured result, the specification must enable up to that
amount. See Emergency Fuel, LLC v. Penzoil-Quaker State
Co., 71 Fed.Appx. 826, 831 (Fed. Cir. 2003)
(“Generally increasing the octane of the emergency
fuel, however, is not commensurate with the scope of the
claim limitation, which requires raising the octane No. above
86.”) (citing Nat'l Recovery Techs., Inc. v.
Magnetic Separation Sys., 166 F.3d 1190, 1196 (Fed. Cir.
1999) (stating “[t]he scope of the claims must be less
than or equal to the scope of the enablement”)).
support of its position, ABS cites to two cases, both of
which appear to be distinguishable from the claims at issue
in the '987 patent. In MagSil Corporation v. Hitachi
Global Storage Technologies, Inc., 687 F.3d 1377 (Fed.
Cir. 2012), the Federal Circuit affirmed the district
court's finding of nonenablement. Specifically, the court
concluded that the specification disclosed a maximum change
of resistance of only 10%, and given the district court's
construction of the “at least 10%” to mean
“resistance changes beyond 10% up to infinity, ”
the specification did not teach one skilled in the art to
practice the full scope of this claim requirement.
Id. at 1381-84. Here, the parties did not request,
and the court did not construe, the “enriched”
requirement in claim 1 of the '987 patent to cover a
specific range of purity, either in the first trial or after
remand by the Seventh Circuit. Even assuming the holding in
MagSil is not an outlier, it is distinguishable based on the
broad construction of the term, covering increases in
resistance changes literally “to infinity.”
See Advanced Fiber Techs. (AFT) Tr. v. J & L Fiber
Servs., Inc., No. 1:07-CV-1191 LEK/DEP, 2015 WL 1472015,
at *17 (N.D.N.Y. Mar. 31, 2015) (distinguishing MagSil on the
same basis). The court concludes that this case is more
similar to the claim at issue in CFMT, which simply disclosed
a method for cleaning semiconductor wafers, without
disclosing a specific degree or amount of removal of
contaminants. 349 F.3d at 1335.
MagSil court also cited to a 1970 opinion, In re
Fisher, 427 F.2d 833 (C.C.P.A. 1970), from the Court of
Customs and Patent Appeals, the predecessor of the Federal
Circuit, that ABS also cites in its brief in support of this
construction. In Fisher, the court affirmed the
denial of a patent for insufficient disclosure by the Board
of Appeals of the United States Patent Office. Specifically,
the court reasoned that the open-ended requirement that the
claimed product -- a hormone suitable for humans --
“exhibits . . . activity equal to at least [one]
International Unit of ACTH per milligram” permitted the
patent applicant to claim potencies extending well beyond the
2.3 measurement disclosed in the specification. Id.
at 839. Even then, the court limited its ruling to patents
involving “unpredictable factors, such as most chemical
reactions and physiological activity, ” contrasting
patents dealing with “mechanical or electrical
elements, ” where “a single embodiment provides
broad enablement in the sense that, once imagined, other
embodiments can be made without difficulty and their
performance characteristics predicted by resort to known
scientific laws.” Id.; see also
Cedarapids, Inc. v. Nordberg, Inc., 121 F.3d 727 (Fed.
Cir. 1997) (reiterating distinction between patents involving
unpredictable and predictable factors).
ABS never developed any argument explaining why the '987
patent involves unpredictable factors. Indeed, in
Fisher, the court expressly distinguished broad
claims --for example, claims to “substantially pure
compositions” -- reasoning that those claims at least
have an “upper limit of 100% Purity.”
Id. at 840. Therefore, the CCPA found that those
claims do not suffer from the same theoretical possibility of
infinite potencies. Id.
these cases had some application to the claims of the
'987 patent, the court further finds that ABS waived this
new claim construction by failing to raise it timely during
ABS I, upon remand by the Seventh Circuit, or until
almost the close of evidence on liability. To have allowed
such a last-minute construction far exceeding the plain
meaning of “enriched” as understood by one
skilled in the art mid-trial would be inappropriate under any
sense of basic fairness at trial, especially following
adoption of the Federal Rules of Civil Trial and abandonment
of “trial by ambush.” See NLRB v. Robbins
Tire & Rubber Co., 437 U.S. ...