In patent disputes involving complex technologies, especially if the disputed patent was developed at an early stage in the technical field, research and similar publications are often used to resolve obvious invalidity problems. It is common for such research to contain predictions or aspirations regarding possible future developments in the field. These aspirational statements are routinely used to support motivations to combine the prior art and assertions that the direction of progress predicted by these statements makes the claimed invention of a patent apparent.
The Federal Circuit’s ruling in the prime Raytheon Technology Corporation v General Electric Company demonstrates the importance of producing sufficient evidence to determine that the parts are relied on to rely on forward-looking or “ambitious” research papers in an obscurity attack of the prior art would enable one of ordinary skill in the art (AKA, the “Skilled Craftsman”) to manufacture and use the contested claimed inventor or an element thereof.
The Inter Partes Review
In 2018, GE filed an inter-party review (IPR) request for $ 9,695,751 (‘571 patent) which was assigned to Raytheon. The ‘571 patent is directed to a “geared turbofan gas turbine engine architecture” that has a “power density range” that is much higher than the prior art. In its IPR petition, GE objected to several patent claims as evident in the face of a single 1987 NASA technical memorandum from Gerald Knip Jr. entitled “Analysis of an Advanced Subsonic Turbofan Incorporating Revolution Material” (“Knip”). . Knip describes himself as a “study” on the possibility of improved engine performance and reduced weight advantages in the development of turbofan engines made from completely revolutionary composite materials that will be developed in the future. Knip provides the parameters expected by the author for the “approximate cycle and configuration” of such an engine and the potential fuel savings of such an engine compared to existing jet engines in the late 1980s. Essentially, as the GE expert has characterized, Knip is an ambitious “what if” paper for advanced engine design of the future, using “revolutionary” materials that have not yet been implemented.
In its IPR petition, GE claimed that Knip had disclosed performance parameters that would enable a person skilled in the art to derive engine power densities that would make the power density range claimed in the ‘571 patent apparent. Alternatively, GE went on to claim that since power density is an “earnings variable”, even if Knip had not disclosed an engine that resulted in power density within the claimed range, it would have been obvious to a skilled craftsman to determine the thrust and / or to modify the turbine volume of Knip’s thought experiment or “imaginary” engine to optimize the power density. In support of these claims, the GE expert even constructed a computer engine model of the engine presented in Knip, although at no point was an actual, working, physical version of the engine ever made.
In its patentee’s response to the petition, Raytheon countered GE’s claims with what the Federal Circuit described as “extensive, unrefuted evidence of non-activation.” Such evidence included an expert statement from a professor of materials science stating the unavailability of such revolutionary composites being considered by Knip, as well as evidence that the exceptional temperature and pressure parameters mentioned in Knip at the time of the priority date of the 751 patent.
In its final written decision, the PTAB concluded that Knip “enabled” and therefore made the contested claims obvious to a person skilled in the art. According to Federal Circuit, the PTAB’s general conclusion was closely focused on whether Knip provided enough information to enable a skilled craftsman to calculate the power density of the Knip motor, and that GE’s expert convincingly demonstrated that a skilled craftsman could do the Engine cycle and turbine volume measurement parameters explicitly provided in Knip, along with certain reasonable assumptions and estimates regarding missing parameters to result in values within the claimed range, thereby making the offending claimed apparent.
Appeal to the Federal Circuit
Raytheon appealed the board’s decision, asking a single question: whether the board was wrong to find that Knip “enabled” the claimed invention. According to Raytheon, the PTAB applied the wrong legal standard and wrongly focused only on whether Knip would allow a skilled craftsman to calculate the power density of the Knip futuristic motor under consideration, rather than checking whether Knip would allow a skilled craftsman to actually make the claimed invention. The Federal Circuit agreed with Raytheon’s argument and reversed the PTAB’s conclusion for obviousness.
The Federal Circuit decided that
“[i]n the lack of [any] If a person skilled in the art can provide other evidence for the production of the claimed invention, an independent reference under Section 103 must enable the parts of its disclosure to be accessed. “Conversely:” If there is an obvious case [solely] Given a non-self-activated reference and no other reference or evidence of the prior art, a person skilled in the art could have made the claimed invention, then it cannot be said that the invention was obvious. “
In its statement, the Federal Circuit reiterated the rule that the prior art, when viewed as a whole, must enable any person skilled in the art to make and use the claimed invention. There is no absolute requirement that a reliable reference in the context of Section 103 be self-sufficient, as long as the overall record of what was known at the time of the invention shows that an experienced craftsman could have made and used the claimed invention. For example, if a reference does not provide enabling disclosure for a particular claim limitation, it can still be used as a motivation for combining and combining with another reference that enables that claim limitation.
In the situation in this case, in which the obviousness is based solely on a single independent reference under Section 103, this reference must, however, enable the parts of its disclosure on which the obviousness is based. Thus, unless the prior art reference is itself activated and no other prior art reference or evidence is introduced to determine that a person skilled in the art would have been able to make the claimed invention, it cannot be said that the invention was obvious. As the Federal Circuit stated, “In the absence of such other supporting evidence to enable any person skilled in the art to make the claimed invention, a separate reference under Section 103 must allow the portions of its disclosure to be consulted.”
Intellectual property rights issues and litigation issues often stem from technical research and publications. This is especially true in situations where there is not much patent status, for example in cases where complex or early-developing technologies are used. When practitioners rely on such research to support a disability challenge, it is up to the practitioner to work with their experts to ensure that the prior art reference enables itself and, if not, additional prior art references that allow disclosure for the claim elements challenged in the non-activated reference. Conversely, in defending a challenge to the validity of a patent where the challenge is based on aspirational or “what if” forward-looking statements in a reference, practitioners should determine whether the reference is appropriate. If not, practitioners should determine whether supporting evidence helps activate the unactivated reference and whether there is enough evidence to combine the teachings of the unactivated reference with the activating evidence offered.