Aipla’s Model Patent Jury Instructions

8. Enablement

[The defendant] contends that claim[s] ____ of the [abbreviated patent number] patent [is] [are] invalid for lack of enablement. [The defendant] bears the burden of establishing lack of enablement by the highly probable standard.

A patent must disclose sufficient information to enable or teach persons of ordinary skill in the field of the invention, at the time the [priority] patent application was filed, to make and use the full scope of the claimed invention without undue experimentation. This requirement is known as the enablement requirement. If a patent claim is not enabled, it is invalid.

In considering whether a patent complies with the enablement requirement, you must keep in mind that patents are written for persons of ordinary skill in the field of the invention. Thus, a patent need not expressly state information that persons of ordinary skill would be likely to know or could obtain.

The fact that some experimentation may be required for a person of ordinary skill to practice the claimed invention does not mean that a patent does not meet the enablement requirement. Factors that you may consider in determining whether persons of ordinary skill in the field of the invention would require undue experimentation to make and use the full scope of the claimed invention include:

1. 
   the quantity of experimentation necessary and whether that experimentation involves only known or commonly used techniques. [The question of undue experimentation is a matter of degree. Even extensive experimentation does not necessarily make the experiments unduly extensive where the experiments are routine, such as repetition of known or commonly used techniques. But permissible experimentation is not without bounds. [Cephalon, Inc. v. Watson Pharm., Inc., 707 F.3d 1330, 1338 (Fed. Cir. 2013); see also Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1360–61 (Fed. Cir. 1998).]];
   

26. 
    the amount of direction or guidance disclosed in the patent;
    
27. 
    the presence or absence of working examples in the patent;
    
28. 
    the nature of the invention;
    
29. 
    the state of the prior art;
    
30. 
    the relative skill of those in the art;
    
31. 
    the predictability of the art; and
    
32. 
    the breadth of the claims.
    

You need not review all factors to find the patent enabled or find lack of enablement. If you find that [the defendant] has proven that it is highly probable that the [abbreviated patent number] patent does not enable the invention[s] of claims ____, then you must find that the claim[s] [is] [are] invalid.

35 U.S.C. § 112; Streck, Inc. v. Research & Diagnostic Sys., 665 F.3d 1269, 1288-89 (Fed. Cir. 2012); Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1305-07 (Fed. Cir. 2010); ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935, 939-43 (Fed. Cir. 2010); Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1377-79 (Fed. Cir. 2009); Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999-1002 (Fed. Cir. 2008); Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1380 (Fed. Cir. 2007); AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003); Durel Corp. v. Osram Sylvania Inc., 256 F.3d 1298, 1306 (Fed. Cir. 2001); Union Pac. Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684, 690-92 (Fed. Cir. 2001); Ajinomoto Co. v. Archer- Daniels-Midland Co., 228 F.3d 1338, 1345-46 (Fed. Cir. 2000); Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195-98 (Fed. Cir. 1999); Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999); In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988); Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991).

9. Written Description Requirement

The [Defendant] contends that claim[s] ____ of the [abbreviated patent number] patent [is] [are] invalid for failure to satisfy the written description requirement. [The defendant] bears the burden of establishing lack of written description by the highly probable standard of proof.

A patent must contain a written description of the [product or process] claimed in the patent. The written description requirement helps to ensure that the patent applicant actually invented the claimed subject matter. To satisfy the written description requirement, the patent specification must describe each and every limitation of a patent claim, in sufficient detail, although the exact words found in the claim need not be used. When determining whether the specification discloses the invention, the claim must be viewed as a whole, rather than as a collection of independent limitations.

The written description requirement is satisfied if persons of ordinary skill in the field of the invention would recognize, from reading the patent specification, that the inventor possessed the subject matter finally claimed in the patent. The written description requirement is satisfied if the specification shows that the inventor possessed his or her invention as of the date the [priority] patent application was filed, even though the claims themselves may have been changed or new claims added since that time.

It is unnecessary to spell out every detail of the invention in the specification, and specific examples are not required; only enough must be included in the specification to convince persons of ordinary skill in the art that the inventor possessed the full scope of the invention. In evaluating whether the specification has provided an adequate written description, you may take into account such factors as (i) the nature and scope of the patent claims, (ii) the complexity, predictability, and maturity of the technology at issue, (iii) the existing knowledge in the relevant field, and (iv) the scope and content of the prior art.

[The issue of written description is decided on a claim-by-claim basis, not as to the entire patent or groups of claims.]

If you find that [the defendant] has proven by clear and convincing evidence that [abbreviated patent number] does not contain a written description for the invention[s] of claims _____, then you must find that the claim[s] [is] [are] invalid. 35 U.S.C. § 112; Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., 670 F.3d 1171, 1188-89 (Fed. Cir. 2012), aff’d on reh’g, 682 F.3d 1003, 1005 (Fed. Cir. 2012); Streck, Inc. v. Research & Diagnostic Sys., 665 F.3d 1269, 1284-87 (Fed. Cir. 2012); Atl. Research Mktg. Sys. v. Troy, 659 F.3d 1345, 1353-55 (Fed. Cir. 2011); Boston Sci. Corp. v. Johnson & Johnson, 647 F.3d 1353, 1361-63 (Fed. Cir. 2011); Crown Packaging Tech. v. Ball Metal Bev. Container Corp., 635 F.3d 1373, 1379-80 (Fed. Cir. 2011); Centocor Ortho Biotech, Inc. v. Abbott Labs., 636 F.3d 1341, 1347-48 (Fed. Cir. 2011); Ariad Pharms., Inc. v. Mass. Instit. of Tech., 598 F.3d 1336, 1351-52 (Fed. Cir. 2010) (en banc); Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 870 (Fed. Cir. 2010); Laryngeal Mask Co. v. Ambu A/S, 618 F.3d 1367, 1373-74 (Fed. Cir. 2010); Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1366 (Fed. Cir. 2009); PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008); Falko-Gunter Faulkner v. Inglis, 448 F.3d 1357, 1366 (Fed. Cir. 2006); Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 968 (Fed. Cir. 2006); Monsanto Co. v. Scruggs, 459 F.3d 1328, 1336 (Fed. Cir. 2006); Univ. of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 922-28 (Fed. Cir. 2004); Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964 (Fed. Cir. 2002).