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Sitrick v. DreamWorks, LLC et al.
516 F.3d 993 (Fed. Cir. 2008)


This case, decided February 1, 2008, emphasizes the importance of enablement in determining the validity of patent claims, specifically when a patent owner is advocating a broad claim construction.

At issue were two patents, U.S. Patent Nos. 5,553,864 (the ’864 patent) and 6,425,825 (the ’825 patent), owned by David Sitrick, an individual inventor. These patents claimed the process of integrating user-generated audio and video into pre-existing video games and movies, so the user could incorporate his voice and image into the medium.

The basic premise of the invention is that a controller, called an Intercept Adapter Integration System (IAIS), would “intercept address signals coming from the video game apparatus and going to the game card or storage card. If address signals correspond to the character functions that are to be replaced with a user image, the IAIS reconfigures the signals so that when the signal gets to the game card or storage card, the user image is substituted for the predefined character image.” Sitrick v. DreamWorks, 516 F.3d 993 (Fed. Cir. 2008). For example, the process of intercepting the signal for a video game character and substituting it with the user-made voice and image could be used to create a personalized character.

Sitrick brought this patent infringement suit against DreamWorks and other DVD producers and distributors for their use of the allegedly infringing product ReVoice Studio which allows users to integrate their own voices into pre-existing video images on the DVD. The District Court for the Central District of California granted summary judgment of non-infringement for the defendants after finding the asserted claims to be indefinite and invalid for lack of enablement as to movies. The issue on appeal was whether the asserted claims were fully enabled as required by 35 U.S.C. 112 ¶ 1. The Federal Circuit affirmed the District Court’s ruling, agreeing that the claims were not enabled.

The first key decision the court made was regarding claim construction. The defendants urged the district court to adopt the narrow construction that the patent claims only covered video games (and therefore, their use of ReVoice with movies alone would not be infringement). Instead, the court construed the claims broadly, as Sitrick requested, covering both video games and movies. After determining that the claims included movies, the court engaged in an enablement analysis.

According to the enablement requirement of 35 U.S.C. 112 ¶ 1, a patent’s specifications must contain “a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” This requirement is met if the skilled person can read the patent specifications and then use the invention without “undue experimentation.” Sitrick, 516 F.3d at 999 (quoting AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003)). The full scope of the claimed invention must be enabled. Id. (citing Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1285 (Fed. Cir. 2007)).

Therefore, a patent owner who chooses broad claim language must make sure the expansive claims are fully enabled. Courts don’t want patent owners to be able to claim protection for more than what they clearly designed/invented, so courts won’t be sympathetic to a patentee who fails to enable a patent when he could have just claimed the invention more narrowly. Here, because the broad patent claims covered video games and movies, the patent specifications needed to fully describe how the invention would work for movies as well as video games.

The patent specifications mentioned how the patent would be applied to movies, but the defendants’ experts showed they weren’t clear enough so that a person trained in the art would be able to replicate the patent process of substituting or integrating user images for pre-existing characters in a movie “without undue experimentation” – likely because it would be so hard to do. The IAIS/invention intercepts signals regarding the pre-existing medium and substitutes the user-generated audio and/or visual images. This works well for substituting personalized characters in video games because the characters are separately controlled functions from the rest of the game. As the district court recognized, “[m]ovies do not have easily separable character functions, as video games do” and movie characters cannot be selected and analyzed, so it would be hard to intercept a specific signal and replace it with the user-created image. Sitrick, 516 F.3d at 1000. Movie characters are inseparable from the surrounding images. The defendants’ experts effectively showed that the techniques that would be used for intercepting & substituting characters in a videogame would be of no use for doing the same in a movie.

Sitrick’s expert did not create a genuine issue of material fact (which would defeat summary judgment for the defendants) because he equivocated on whether the integration and substitution could be done in movies, and he admitted that he was not an expert in movie-making. Enablement has to be judged by someone skilled in the art.

The Federal Circuit swept aside Sitrick’s argument that the court didn’t fully consider the patents’ explanations/teachings with respect to video games by saying that the patents’ clear specifications for enabling videogames were irrelevant; the enablement requirement was not met unless the patents were enabled for both embodiments of the claim – videogames and movies.

A second point in controversy between the parties concerned the claim construction for Sitrick’s voice synthesizer process of the ‘864 patent and the meaning of “model” as it was used in claim 54: “the user voice parameter data is input as a model to a voice synthesizer.” The court required that the synthesized voice produce an entirely synthetic voice saying new words, not simply a playback of the user’s sample. The court found that given its claim construction, the ’864 patent failed to enable modeling a voice for reproduction by a voice synthesizer.

Overall, the court held that the defendants met their burden of proving by clear and convincing evidence that one skilled in the art wouldn’t be able to replicate the processes in the specifications without undue experimentation. Therefore, the patents were not fully enabled with respect to the full scope of the asserted claims, and the patents were therefore invalid.

So what does this case mean for future patent validity cases? The IP Law Blog suggests that, while obviousness based on prior art is used more often, lack of enablement may be becoming a stronger tool for invalidating patents. It further notes that “[s]ome commentators have questioned whether the Federal Circuit is setting the enablement standard too high.” Unfair standard or not, the consensus seems to be that complete enablement and accurate claim construction are crucial to winning a patent validity contest. If you’re seeking broad claims (during prosecution) or requesting a broad claim construction (in litigation), you darn well better make sure you’ve got the entire scope of your claims enabled in your specification, precisely and in detail. However, it's a bit of a double edged sword: one the one hand you have narrow claims that are hard to read on alleged infringers; on the other hand you have broad claims susceptible to an invalidity attack based on lack of enablement of the full scope of the claims.

For further information and analysis on this case, see commentary at Patently-O Blog and The IP Law Blog.

Read the full opinion here.
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