Kennametal – The Circuit affirms the invalidation of claims in an inter partes review based upon anticipation and obviousness, ruling that substantial evidence supports the Board’s decision. The claims are anticipated becausea patent to Grab discloses a finite number of combinations such that one of ordinary skill would “at once envision” the claimed combination. As to obviousness, because the combination is taught by Grab, the offered unexpected results were from something other ‎than what is both claimed and novel in the claim, so there is no nexus to the merits of the claimed ‎invention. ‎

Apotex – Apotex filed a D. J. action, contending it would not infringe two patents covering Daiichi’s Benicar®, a hyper tension drug, by selling a generic bioequivalent. Daiichi disclaimed one of the patents, but Apotex claims an interest in obtaining a judgment of non-infringement as to that patent because such a judgment would enable Apotex to receive marketing approval from the FDA and to enter the market sooner. The panel reverses a dismissal for lack of a case or controversy, holding that Apotex has a concrete, potentially high-value stake in obtaining the judgment it seeks. The Circuit also reverses the denial of Mylan’s motion to intervene under Rule 24(a) due to its obvious interest in this dispute.

Intellectual Ventures – IV brought suit against JPMorgan Chase, alleging infringement of five patents. JPMC moved to stay the action on grounds that it intended to file petitions seeking covered business method reviews (“CBMR”) with respect to four of the patents in suit. After two CBMR petitions were filed by JPMC, but before the PTAB acted on them, the district court denied JPMC’s motion to stay. JPMC then sought interlocutory review of that ruling. Because a majority of the panel feels the Circuit does not have jurisdiction to review the denial of the motion to stay, the appeal is dismissed.

Vasudevan –The Circuit affirms claim construction and the judgment of noninfringement but in the more interesting holding of the case, reverses summary judgments of invalidity based on lack of written description and enablement. As to written description, defendants argued and the district court held that expert witness testimony as to the adequacy of the description was merely conclusory. But the panel disagrees because plaintiff presented no expert testimony contradicting that of defendants’ expert. Similarly as to enablement, the district court relied on the fact that it took that patentee years to develop a commercial product but the Circuit noted that section 112 does not require enablement to produce a commercially viable product. The panel again notes there was no expert witness testimony to contradict that of defendants’ expert.

Kennametal, Inc. v. Ingersoll Cutting Tool Company , Fed. Cir. Case 2014-1350, (March 25, 2015)

The patent in suit relates to cutting tools containing ruthenium as a binder that are coated using physical vapor deposition (PVD). Cemented carbide cutting tools are made using a binder, which often includes cobalt. The patent states that it was unusual to include ruthenium with cobalt in the binder, and that no one had coated such tools using PVD.

Ingersoll submitted a request for IPR, and in response the examiner rejected all of the claims as obvious. Kennametal amended its claims and added new claims, all of which were rejected as being obvious.

Findings of the Board

Representative claim 1 recites, “a cemented carbide substrate, wherein the substrate comprises hard particles and a binder, and the binder comprises ruthenium” and “at least one physical vapor deposition coating on at least a portion of the substrate.” The Board noted that claims in a prior art patent to Grab recited a cutting insert having a hard refractory coating, a substrate comprising between about 3 weight percent and about 12 weight percent cobalt, and at least 0.09 weight percent chromium where the cobalt and the chromium form a binder alloy. According to the Board, it did not matter that other methods of coating were characterized by Grab as preferred. Since there were only fifteen combinations of metals and coatings, the Board found this was a sufficiently definite and limited class to provide anticipation. The Board refused to make findings as to obviousness as it determined the claims to be invalid as anticipated.

The Board separately found additional claims obvious over Grab and other prior art, rejecting Kennametal’s assertion of unexpected results because the unexpected results lacked a nexus to the limitations recited in the claims.

Standard of Review on Appeal

Applying the same standards it would apply in an appeal of a rejected patent application, the panel noted that anticipation is a question of fact, while obviousness is a question of law based on underlying findings of fact. The Board’s factual findings are reviewed for substantial evidence and its legal conclusions are reviewed without deference.

Anticipation

According to the panel, a reference can anticipate a claim even if it does not expressly spell out all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would “at once envisage” the claimed arrangement or combination.

Kennametal argued that Grab does not disclose the combination of ruthenium as a binder and a PVD coating, noting that there were 31 different binder possibilities (including combinations) and 351 possible coatings (including multiple layers), leading to 10,881 possibilities. The panel disagrees, finding that substantial evidence supports the Board’s anticipation determination. It was uncontested that Grab expressly recites all the elements of claim 1 because it recites binder, which could be ruthenium, together with a coating, one example of which is PVD. Despite Grab’s focus on other coatings, Grab also contemplated that one or more layers of a coating scheme may be applied by PVD.

Because Grab specifically disclosed all the limitations of the claim, the question for the purposes of anticipation is “whether the number of categories and components” disclosed in Grab is so large that the recited combination “would not be immediately apparent to one of ordinary skill in the art.” The panel deems Grab’s express contemplation of PVD coatings to be sufficient evidence that a person of skill in the art would immediately envisage applying a PVD coating with a ruthenium binder. The Circuit thus found that substantial evidence supported the Board’s conclusion.

Obviousness

Unlike the Board, the panel considered the obviousness issues, even as to claims that were found anticipated. As noted earlier, there was substantial evidence to support the finding of anticipation as to many of the claims. “While references that anticipate an invention can, theoretically, still not make it obvious, …, that is the rare case.” Here, because one with ordinary skill in the art, reading Grab, would readily envisage the claimed combination, it would have been obvious to that person that these two could be combined with a reasonable expectation of success. There is also substantial evidence to support the Board’s obviousness determination as to the other claims at issue.

With regard to the unexpected results, because the combination of ruthenium binders and PVD coatings was taught in Grab, the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, so there is no nexus to the merits of the claimed invention.

Apotex, Inc. v. Daiichi Sankyo, Inc., Fed. Cir. Case 2014-1282, 2014-1291 (March 31, 2015)

In seeking FDA approval for its hypertension drug Benicar®, Daiichi listed two patents in the FDA’s Orange Book. (Patents must be identified that “could reasonably be asserted if a person not licensed by the owner engaged in the manufacture, use, or sale of the drug.) The first, the ‘599 patent, covers the active ingredient of the drug, olmesartan medoxomil. It expires on April 25, 2016, but because Daiichi provided the FDA certain data concerning the drug’s effects on children, the FDA must wait six months longer— i.e., until October 25, 2016—before approving a generic version of the drug. Daiichi’s second listed patent, the ‘703 patent, covers methods of treatment, and expires on November 19, 2021.

Mylan was the first to seek approval of selling a generic bioequivalent in April 2006. In that application, Mylan certified that both the ‘599 and ‘703 patents were invalid or would not be infringed by Mylan’s proposed drug.

In early July 2006, after receiving notice of Mylan’s certification, Daiichi disclaimed all claims of the ‘703 patent. Having disclaimed the ‘703 patent, Daiichi sued Mylan for infringing the ‘599 patent, based on Mylan’s submission of a certification. Only validity was disputed in the case, and after a full trial, the district court upheld the validity of the ‘599 patent and entered judgment of infringement against Mylan. The Circuit affirmed. With the ‘703 patent disclaimed and the ‘599 patent upheld, Mylan’s earliest date of market entry—the earliest effective date of any FDA approval for Mylan—is October 25, 2016, six months after the expiration date of the ‘599 patent.

In June 2012, Apotex filed its ANDA, including two different certifications. One was a certification accepting, rather than disputing, the result of the 2006– 2010 litigation. That certification states that the ‘599 patent is valid and that Apotex’s product would infringe, thereby barring FDA approval any earlier than October 25, 2016. Apotex’s other certification stated that Apotex’s product would not infringe the ‘703 patent.

As is undisputed here, non-infringement of the ‘703 patent follows as a matter of law from the fact that Daiichi has formally disclaimed it. Daiichi did not sue Apotex for infringing the ‘703 patent, and the FDA has not removed the ‘703 patent from the Orange Book, despite Daiichi’s 2006 request. But Apotex sued Daiichi, seeking a declaratory judgment that its product would not infringe the disclaimed ‘703 patent. Mylan moved to intervene, and both it and Daiichi moved to dismiss Apotex’s complaint. Given the non-infringement consequence of the Daiichi disclaimer, the dispute in the district court was not over the merits of infringement. Rather, the dispute was over whether, because non-infringement is indisputable, the district court must deny the requested declaratory judgment for lack of a case or controversy.

Apotex asserted that it has a concrete stake in securing the requested declaratory judgment because, under the governing statutory provisions, the requested judgment would allow it to enter the market earlier than it could without the judgment. Daiichi and Mylan did not dispute that an earlier-than-otherwise Apotex entry into the market would likely have the identified effects, to Apotex’s benefit and Daiichi’s and Mylan’s detriment. But Daiichi argued that no controversy exists because it could not now assert the disclaimed ‘703 patent against Apotex. The district court granted Daiichi’s motion. It reasoned that “both Daiichi and Apotex no longer hold any meaningful interest in the now disclaimed patent” and that the FDA’s continuing to list the ‘703 patent in the Orange Book does not create a case or controversy by which Apotex may seek a declaratory judgment regarding a nonexistent patent The court denied Mylan’s motion to intervene as moot in light of its grant of Daiichi’s dismissal motion.

Apotex appeals, and Mylan cross-appeals the denial of its motion to intervene.

Mylan’s Right to Intervene

The panel begins its discussion by confirming Mylan’s right to be a party in this case because of its obvious stake in the dispute. Rule 24(a) Fed. R. Civ. P., establishes a right to intervene when a person “claims an interest relating to the property or transaction that is the subject of the action, and is so situated that disposing of the action may as a practical matter impair or impede the movant’s ability to protect its interest, unless existing parties adequately represent that interest.” Mylan readily meets that standard.

In this action, Apotex seeks to cause a forfeiture of Mylan’s presumed market-exclusivity period, and Mylan has a concrete monetary interest in retaining such exclusivity—six months of more sales and/or higher prices than are likely when Apotex enters the market. Although Daiichi likely benefits from the 180-day exclusivity period as well, Mylan’s interest exists apart from that of Daiichi, which, as a rival of Mylan’s, has its own incentives affecting decisions about how to conduct this litigation. Accordingly, the panel reverses the denial of Mylan’s motion to intervene.

There is a Case or Controversy

The stakes over which the parties are fighting are concrete and substantial: the amount of revenue there will be from sales of olmesartan medoxomil, and who will get what portions of it, during a period of at least six months. The facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. See, MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007).

The panel therefore reverses the denial of Mylan’s motion to intervene and the dismissal of the declaratory judgment action brought by Apotex.

Intellectual Ventures II LLC v. JP Morgan Chase & Co., et al., Fed. Cir. Case 2014-1724
(April 1, 2015)

IV sued for infringement of five patents. A year later JPMC moved to stay the case pending the result of four CBMR petitions JPMC said it was planning to file. Shortly after filing the motion to stay, JPMC filed two CBMR petitions but never filed the other two promised petitions.

The district court denied JPMC’s motion to stay, applying the four-factor test set forth in § 18(b)(1) of the AIA. The court first noted that because there are multiple patents and claims in suit, it would be inappropriate to stay the entire litigation while waiting to see if the PTAB would choose to initiate review of only two of the patents at issue. The court noted that it expected the litigation to be resolved in less than a year. Since the PTAB is authorized to take twelve months to complete a CBMR, the PTAB could extend that time by another six months, and those time periods would not begin to run until a CBMR petition was actually granted, the court concluded that the litigation would likely be resolved more quickly than the CBM review.

JPMC appealed, arguing that the Circuit has jurisdiction to hear an interlocutory appeal of a denial of a motion to stay relating to CBMR proceedings. As of the date of oral arguments, the PTAB had not acted on the CBMR petitions at issue.

There is no Appellate Jurisdiction until the CBMR has been Instituted.

Consistent with the final judgment rule, the Circuit normally only has jurisdiction to review “a final decision of the district court.” Exceptions to the final judgment rule, whether statutory or arising from common law, are to be narrowly construed.

Section 18 of the AIA states in relevant part: (b) REQUEST FOR STAY —

(1) IN GENERAL — If a party seeks a stay of a civil action alleging infringement of a patent under section 281 of title 35, United States Code, relating to a [CBMR] proceeding for that patent, the court shall decide whether to enter a stay. . . . .

(2) REVIEW — A party may take an immediate interlocutory appeal from a district court’s decision under paragraph (1). The United States Court of Appeals for the Federal Circuit shall review the district court’s decision to ensure consistent application of established precedent, and such review may be de novo.

In other words, the Circuit has jurisdiction over an immediate interlocutory appeal from a decision on a motion to stay “relating to a [CBMR] proceeding for that patent.” Because the district court’s order on JPMC’s motion to stay considered two CBMR petitions pending before the PTAB, the Circuit must decide whether the proper interpretation of CBMR “proceeding” in § 18(b)(2) encompasses pending CBMR petitions on which the PTAB has not yet acted. IV contends that a CBMR proceeding does not begin until the PTAB institutes a review. JPMC argues that a CBMR proceeding begins as soon a party files a CBMR petition. In previous appeals where this court exercised jurisdiction over an interlocutory appeal under § 18(b)(2) of the AIA, the PTAB already had granted CBMR petitions and instituted CBM reviews. See, e.g., VirtualAgility, Inc. v. Salesforce.com, 759 F.3d 1307 (Fed. Cir. 2014). This is, therefore, an issue of first impression.

Our first step in construing the statute is to look to the language of the AIA. The AIA differentiates between a petition for a CBMR proceeding (which a party files) and the act of instituting such a proceeding (which the Director is authorized to do). For instance, AIA § 18(a)(1)(B) refers to when a person may file a “petition for a [CBMR] proceeding,” which suggests that a petition is a request for a CBMR proceeding, not that the petition itself is part of the proceeding. Section 18(a)(3)(B) uses similar language—referring to “any petition for a [CBMR] proceeding”—again suggesting that the petition is a request that a proceeding be instituted, not that the petition itself institutes a proceeding. Comparing this language with that in § 18(a)(1)(E), which states that “[t]he Director may institute a [CBMR] proceeding only for a patent that is a covered business method patent,” is telling. Because the Director decides whether to “institute,” or begin, a CBMR proceeding, and necessarily bases that decision on the strength of the petition, the petition itself cannot substitute for the exercise of the Director’s discretion.

This interpretation is consistent with the use of “proceeding” in Chapter 32 of Title 35, which covers post grant reviews generally and to which § 18(a) expressly refers. E.g., 35 U.S.C. § 325(d) (“In determining whether to institute or order a proceeding under this chapter, . . . the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” § 326 (setting forth guidelines for discovery and oral argument for proceedings); § 327 (providing for termination of the proceeding if the parties settle, “unless the Office has decided the merits of the proceeding before the request for termination is filed”). The uses of “proceeding” in the post-grant review sections reinforce the distinction between a petition and a proceeding, and indicate that the Director decides whether to “institute or order” a proceeding based on a party’s “petition or request.” The use of “proceeding” in 35 U.S.C. § 135 for derivation proceedings is likewise consistent with this interpretation. See, e.g., 35 U.S.C. § 135(a)(1) (“An applicant for patent may file a petition with respect to an invention to institute a derivation proceeding in the Office.”).

Like the language in the statute, the legislative history suggests that the CBMR proceedings will not begin until the PTAB institutes the proceedings and the PTAB will only institute a proceeding if a party’s petition presents a “high up-front showing of likely invalidity.” Senator Schumer stated: “[s]ince the denial of a stay pending post-grant review under this amendment is an extraordinary and extremely rare circumstance, the filing of an interlocutory appeal should result in the stay of proceedings in the district court pending appeal.” Because district courts would often deny a stay in the face of a mere petition for CBMR—waiting to see what the PTAB view of the merits of that petition are—that circumstance can hardly be the extraordinary and extremely rare circumstance that Senator Schumer contemplated. Indeed, in VirtualAgility, we said that “it [is] not error for the district court to wait until the PTAB made its decision to institute CBM review before it ruled on the motion.” Similarly, when discussing the program for covered business method patents, the House Report on the bill that became the AIA anticipated that “[a]ny party may request a stay of a civil action if a related post-grant proceeding is granted.”

Because the language of the statutory scheme consistently defines “proceeding” as beginning when the PTAB institutes review, the panel adopts that interpretation. The fact that some district courts have relied on the PTO’s definition or used the same broad interpretation of proceeding, which appellant now urges, does not dictate our construction of a statute that expands our jurisdiction. Not only do these district court decisions not bind us, but § 18(b)(2) does not create jurisdiction for district courts; they already had the authority to consider motions to stay litigation before them under their broad equitable powers, regardless of the existence of a “proceeding” before the PTAB. District courts are therefore not subject to the same jurisdiction-expanding considerations as this court in interpreting § 18(b)(2).

JPMC contends that—even if we accept the fact that a CBMR proceeding does not commence until the Director acts to institute such a proceeding—a petition for a proceeding, or even the anticipation of the filing of a petition, is sufficiently related to a proceeding to give rise to jurisdiction under § 18(b)(2). This interpretation of “relating to,” however, is inconsistent with the language in the AIA. The AIA grants us jurisdiction over interlocutory appeals “from a district court’s decision” “[i]f a party seeks a stay of a civil action alleging infringement of a patent . . . relating to a [CBMR] proceeding for that patent.” § 18(b)(1)–(2). Under the only fair reading of the AIA, this means that we only have jurisdiction under § 18(b)(2) if the party’s motion to stay is “relat[ed] to” a CMBR proceeding. Absent the existence of a proceeding, jurisdiction is not conferred upon us by § 18(b)(2).

Judge Hughes’ Dissent

The AIA created a procedure to challenge the validity of covered business method patents before the PTO. The AIA also permits parties to seek stays of related district court litigation while CBM challenges are pending. And to ensure uniformity in stay decisions, the AIA gave the Circuit the authority to immediately review the district court’s grant or denial of a stay. The majority improperly limits our review authority to only stay decisions predicated on an already instituted CBM proceeding. Because the majority’s conclusion relies on an overly narrow textual analysis and is at odds with the overall purpose of the AIA and the specific purpose of the CBM procedure, I respectfully dissent.

Vasudevan Software, Inc. v. Microstrategy, Inc., et al., Fed. Cir. Case 2014-1094 (April 3, 2015)

The patents-in-suit are directed to different features of an online analytical processing (“OLAP”) cube capable of collecting and processing “live” data from multiple incompatible databases. According to the patents-in-suit, prior to the invention, data from different databases had to be converted into a compatible format and stored in a data warehouse before the data could be analyzed. Prior art systems were thus analyzing “stale” data. The patents-in-suit sought to overcome that problem by creating an OLAP cube capable of collecting and processing information from incompatible databases at run-time without going through an intermediate warehouse repository of “stale” data. The claims of the patents recite a system that accesses “disparate databases” although one of the patents instead uses the expression “incompatible databases of different types.”

The Panel Affirms the District Court’s Construction of “disparate databases” and “incompatible databases of different types.”

The district court agreed with defendants, ruling that the applicant defined “disparate databases” when he stated during prosecution:

“The disparate nature of the above databases refers to [an] absence of compatible keys or record identifier (ID) columns of similar value or format in the schemas or structures of the database that would otherwise enable linking data within the constituent databases.”

The court further held that because VSi had previously prevailed in its argument that “incompatible databases of different types” should be equated with “disparate databases,” VSi was now estopped from claiming that the two phrases have different meanings. In view of the court’s claim construction, the parties stipulated to non-infringement.

Because the district court essentially limited its review to intrinsic evidence, the Circuit’s appellate review is de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015).

The district court examined the intrinsic record and, finding the prosecution history compelling, construed “disparate databases” to mean databases having: (1) an absence of compatible keys; and (2) an absence of record ID columns of similar value; and (3) an absence of record ID columns of similar format in the schemas or structures that would otherwise enable linking data.

Because the specification, the stipulation and the referenced marketing materials leave uncertain the full scope and meaning of the term “disparate databases,” the panel conducts a detailed review of the prosecution history, which was central to the district court’s claim construction. For reasons that are similar to the district court’s, the Circuit agrees with the district court’s analysis and construction of “disparate databases.”

The panel finds no basis to disturb the district court’s ruling that VSi is estopped from arguing that “incompatible databases of different types” should be construed differently than ‎‎”disparate databases.” While more properly characterized as waiver, the panel affirms the district court’s treatment of “incompatible databases” as being subject to the same construction as “disparate databases.”

The Circuit therefore affirms the judgment of noninfringement to which the parties stipulated based on the district court’s construction.

The panel finds Issues of Fact so Reverses Summary Judgments of Invalidity as to Written Description and Enablement.

1. Written Description

The district court granted summary judgment that the claims of the ‘864 patent that VSi asserted against TIBCO were invalid for lack of written description support. It held that there was no question of material fact that the written description would not convey to one of skill in the art that VSi had possession of a means of accessing “disparate databases” at the time of filing. Though VSi’s expert, Dr. Cardenas, opined that the specification contains adequate written description support, the district court dismissed his opinion as “conclusory.”

Drawing all reasonable inferences in favor of VSi as the non-movant, the panel holds that there are genuine issues of material fact regarding whether the specification is adequate and shows possession of the claimed invention. The specification of the patents-in-suit describes dynamically “accessing a plurality of incompatible source databases,” and in originally filed claim 11 recited accessing “databases that are incompatible.” The fact that these portions of the specification do not speak of accessing “disparate databases” does not eliminate as a genuine issue of material fact the existence of at least some discussion, and, therefore, possession, of the accessing of disparate databases, as claimed.

The more telling question is whether the specification shows possession by the inventor of how accessing disparate databases is achieved. Contrary to the district court, the panel finds the testimony of Dr. Cardenas to raise a genuine issue of material fact on whether the specification shows how to achieve the functionality of accessing disparate databases. The district court questioned the sufficiency of Dr. Cardenas’s opinion, but the panel disagrees, as the opinion points to specific portions of the ‘006 patent as showing how to access disparate databases. Dr. Cardenas’ opinion, which was not challenged by any contrary expert testimony, at least raises a genuine issue of material fact regarding whether the patents-in-suit disclose how to access disparate databases. Cf. Provenz v. Miller, 102 F.3d 1478 (9th Cir. 1996) (“As a general rule, summary judgment is inappropriate where an expert’s testimony supports the non-moving party’s case.”) Accordingly, the Circuit reverses the district court’s determination of summary judgment that the claims asserted against TIBCO are invalid for lack of written description support.

2. Enablement

The district court ruled that the patents-in-suit do not enable accessing “disparate databases.” The court relied on the following facts: at the time of filing the inventor did not have a working example of the “disparate databases” feature; it took the inventor three calendar years from the time of filing to build a functioning embodiment of the invention; the specification shows screenshots from the Jasmine software, and the inventor was unable to practice the claimed invention on that software; the specification lacks a working example; the problem solved by the patent had confounded inventors for 20 years; others had failed to practice the alleged invention; and the claim scope was broad. Of all the factors, the district court focused most on the time it took the inventor to reduce the invention to practice. The court did acknowledge that the relative skill in the art and the predictability of the art were high, but found that other factors provided clear and convincing evidence that the claims were not enabled.

A specification must “enable” a person of skill in the art to make and use the claimed invention. 35 U.S.C. § 112 ¶1 (2006). A claim is sufficiently enabled even if “a considerable amount of experimentation” is necessary, so long as the experimentation “is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed.” On the other hand, if “undue experimentation” is needed, the claims are invalid. In determining whether experimentation is undue, a number of factors should be considered: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. A party must prove invalidity for lack of enablement by clear and convincing evidence.

The panel concludes that there are genuine issues of material fact relating to several of these factors, which, taken together, preclude summary judgment of non-enablement. First, the panel finds that the effort it took the inventor to reduce the invention to practice does not conclusively show a lack of enablement. The inventor testified that he developed a “commercial-grade software product.” Title 35 does not require that a patent disclosure enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment, so the time it took to make a commercial-grade embodiment is not, itself, determinative of non-enablement. VSi claims that the inventor could have developed a functional prototype with far less experimentation. This is buttressed by Dr. Cardenas’ opinion that the inventor’s one man-year experimentation was not undue. And, as with written description, neither defendant provided contrary expert testimony.

Second, drawing all reasonable inferences in favor of VSi, the panel finds that there is a genuine issue of material fact whether the ‘006 patent specification provides a reasonable amount of guidance. Crediting Dr. Cardenas’ testimony, the ‘006 specification shows how to access disparate databases using correlation parameters. The district court found that the ‘006 patent “teaches away” from a working embodiment because the specification describes a preferred database as “an object database, such as Jasmine,” but the inventor “could not implement the invention using that particular database.” The inventor, however, explained that his problems getting the claimed functionality to work stemmed from a different product, which is never mentioned in the specification. Drawing all reasonable inferences in favor of VSi, the panel rules that there is a genuine issue of material fact whether the Jasmine software could be used to make a working embodiment.

Comment: This case presents an excellent example of how dangerous it is not to have an expert witness critique the opposition’s expert testimony. As to both written description and enablement, the opinion focuses on the fact that there was no expert testimony to contradict that of Dr. Cardenas.