McRo Inc. v. Namco Bandai et al.
United States District Court for the Central District of California
Issued November 13, 2018, Case No: CV 12-10322-GW(FFMx)
On November 13, 2018, the Central District of California issued a ruling which added another wrinkle to the McRo, Inc. v. Namco Bandai saga. As a quick recap, McRo asserted two patents related to animated lip synchronizing against pretty much the entire the video game industry. The district court initially found the patents to be invalid under 35 U.S.C. 101 as directed to an abstract idea, but the Federal Circuit reversed, finding the patents to be valid. For a more in-depth analysis click here to read our previous post. Now, on remand, the district court has issued summary judgment holding U.S. patent No. 6,611,278 (the ‘278 Patent) invalid under 35 U.S.C. 112 for lack of enablement (§ 112 also covers definiteness of claims). Typically, questions regarding enablement go before a jury, so it is somewhat unusual for a judge to grant a summary judgment based on enablement under § 112.
A patent must describe “the manner and process of making and using, 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 invention].” 35 U.S.C. 112. According to section 112, a patent is enabled when a person skilled in the art can read the patent and recreate the invention. Section 112 allows for some experimentation if it is merely routine or the patent provides guidance about the direction. See Vasudevan Software, Inc. v. MicroStrategy Inc., 782 F.3d 671, 684 (Fed. Cir. 2015). However, a patent must enable the full scope of the claims. See Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1285 (Fed. Cir. 2007); see also LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346 (Fed. Cir. 2005). If a patent claim is written broadly to encompass several methods but the disclosure only mentions one method, then the patent might not be enabled as to the full scope of the claims.
The District Court found the ‘278 Patent was not enabled because the claims were too broad for a person skilled in the art to make and use the full scope of the invention. McRo argued for and was able to secure a broad construction of the ‘278 Patent claims earlier during the litigation, but the broad construction has now worked against them. The district court found that the patent claims were written too broadly for a person of ordinary skill in the art to understand the full scope of the claims. McRo tried to argue that the unmentioned details for implementing the full, broad scope of the claims were well known in the art and already discussed within other prior art, but the district court rejected that argument. McRo also alleged that the ‘278 Patent was enabled because it disclosed a single method. The district court held disclosing a single method was not enough to enable the full scope of the claims of the ’278 Patent. Thus, the district court found the ‘278 Patent invalid because the description of the invention did not enable the full scope of the claims. The court also found the defendants did not infringe the ‘278 Patent since it is invalid.
This case highlights the tightrope that litigants walk when they pursue broad claim construction. While that might help their infringement case, it can come back to haunt their validity defense, as evidenced here.
McRo could appeal the District Court’s ruling to the Federal Circuit. Even if McRo does not appeal, there is still ongoing litigation involving McRo and Square Enix over a different patent. In either situation, we will provide an update when available.