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Claims Not Enabled for Movies
In Sitrick v. Dreamworks, LLC, 2007-1174 (February 1, 2008) (appeal from summary judgment), the federal circuit agreed that a number of claims in two patents should be invalidated for lack of enablement.
The invention described in U.S. Patent Nos. 5,553,864 and 6,425,825 involves integrating a user’s audio signal or visual image into a pre-existing video game or movie. Two sorts of claims involved. The dispute over the first concerns whether the claims encompass the use of the invention in the context of movies, and, if they do, whether claims of such scope would be enabled. The dispute over the second sort concerns whether claims require modeling a voice for reproduction by a voice synthesizer, and if so, whether claims with such scope would be enabled. In both cases, the court answered in the affirmative with respect to claim scope, and in the negative with respect to enablement.
The federal circuit agreed with the defendants that the relevant claims included embodiments that involve movies. The court’s primary argument rested on statements made in the written description that represented the inventions in broad terms. According to the court:
The asserted claims encompass both video games and movies. The ’864 patent states that the system “provides an environment whereby a user can create a video or other image . . . and whereby the user created image . . . can be communicated and integrated into the audiovisual presentation, and game play of a video game.” ’864 patent col.1 ll.54-62. The ’825 patent states that “[t] his invention relates to predefined video and audiovisual presentations such as movies and video games.” ’825 patent col.1 ll.9-10. The Summary of the Invention provides that the “present invention encompasses an entertainment system capable of integrating images into a predefined audiovisual presentation” through use of a “controller” said to receive audio and video signals from any source and that “analyzes the audio and video signals and modifies the signals to integrate the user image into the audiovisual presentation.”
Slip op. at 3. Although reliance on statements about the breadth of the invention made in the written description is troubling—since not everything in the written description need be claimed or even patentable—the court secondarily appears to have relied in the fact that the plaintiff in this case had at the district court opposed a construction of the claims that would have excluded movies. “[Defendant] convinced the district court to deny Defendants’ request that the claims be limited to video games. And he accused Defendants’ movies of infringing the claims by incorporating computer-generated effects during production.” Slip op. at 3-4. Thus, the analysis provided by the court concerning whether the claims encompass the use of the technology in movies—if perhaps not a model for how to understand the meaning of claims—appears at least to be internally consistent with the position the plaintiff had taken below.
Stating the legal requirement that “The full scope of the claimed invention must be enabled[,]” slip op. at 8, the court concluded that movies were not enabled, emasculating the plaintiff’s expert’s opinion as “conclusory,” slip op. at 11-12, and therefore incapable of establishing a genuine issue of material fact.
The second set of claims involved the question of whether the claims require modeling a voice for reproduction by a voice synthesizer. Here, the court analyzed claim construction in a more traditional manner, considering the claim language in light of the remainder of the specification. Concluding that the claims should be interpreted as containing the limitation, the court went on to adopt the defendant’s expert’s view that the patents contained no discussion of how to model a voice for reproduction by a voice synthesizer. Accordingly, here too the full scope of the invention was not enabled.
Posted by at February 6, 2008 1:17 PM in Claim Construction, News & Commentary, Recent Cases | Permalink
