Patent Case Summaries April 21, 2021

Patent Case Summaries | Week Ending April 16, 2021

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

Raytheon Technologies Corp. v. General Electric Co., No. 2020-1755 (Fed. Cir. (PTAB) Apr. 16, 2021). Opinion by Chen, joined by Lourie and Hughes.

GE initiated an IPR proceeding challenging the patentability of certain claims in a Raytheon patent. The claims cover gas turbine engines having a “power density” range that the patent describes as being “much higher than in the prior art.” GE asserted that the claims were unpatentable as obvious in view of the “Knip” reference.

Knip is a NASA technical memorandum described by the Federal Circuit as disclosing certain “performance characteristics for an imagined ‘advanced [turbofan] engine.” During the IPR, Raytheon argued that Knip’s disclosure did not enable skilled artisans to make and use the claimed invention. Raytheon submitted unrebutted evidence establishing that “Knip’s disclosure of highly aggressive performance characteristics for a futuristic turbine engine was based on the use of nonexistent composite materials.”

In response, GE argued that the issue of whether Knip enabled its advanced engine was irrelevant to the question whether a skilled artisan reviewing Knip could have made the claimed engine without undue experimentation. The Patent Trial and Appeal Board found Knip to be enabling and, ultimately, found the challenged claims unpatentable as obvious in view of Knip.

The Federal Circuit reversed. The court explained the pertinent legal standards as follows (citations omitted):

“To render a claim obvious, the prior art, taken as a whole, must enable a skilled artisan to make and use the claimed invention. In general, a prior art reference asserted under § 103 does not necessarily have to enable its own disclosure, i.e., be ‘self-enabling,’ to be relevant to the obviousness inquiry. For example, a reference that does not provide an enabling disclosure for a particular claim limitation may nonetheless furnish the motivation to combine, and be combined with, another reference in which that limitation is enabled. … But even though a non-enabling reference can play a role in an obviousness analysis, the evidence of record must still establish that a skilled artisan could have made the claimed invention.” In the context of single-reference obviousness, as here, the court stated that a standalone reference “must enable the portions of the disclosure being relied upon.”

Applying these standards, the Federal Circuit ruled that Raytheon presented “extensive, unrebutted evidence of non-enablement,” and GE “failed to provide an evidence-based case” for how the claimed turbofan engine is enabled by Knip’s disclosure. Thus, the Federal Circuit ruled that “the Board’s finding that Knip is ‘enabling’ is legal error.”

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