Last Week in the Federal Circuit (April 12-16): Self-Enabling Prior Art

It was a busy week for the Federal Circuit, with a total of 18 new opinions, including a precedential opinion on enablement in the context of § 103 obviousness references.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions: 2

Non-precedential opinions: 12

Rule 36: 4

Longest and shortest (non-Rule 36) pending case from argument:  Raytheon Technologies Corp. v. General Electric Company, No. 20-1755 (72 days)

Case of the week:  Raytheon Technologies Corp. v. General Electric Company, No. 20-1755, April 16, 2021

Panel:  Judges Lourie, Chen, and Hughes, with Judge Chen writing the opinion

You should read this case if:  you have a case involving (1) single-reference obviousness, or (2) prior art that is significantly older than the effective priority date of the patent.

In this week’s featured case, the Federal Circuit rejected an obviousness theory based on a single prior-art reference for lack of evidence that the reference enabled its own disclosure (i.e., is “self-enabling”) or other supporting evidence showing a skilled artisan could have made the claimed invention.

Raytheon owns a patent to a gas turbine engine, commonly used for powering airplanes.  The claims require the turbine to have a “power density” alleged to be “much higher than in the prior art” as the “key distinguishing feature of the claims.”

The PTAB had found the patent unpatentable as obvious in view of Knip, a NASA technical memorandum.  Knip dates back to 1987, 25 years before the Raytheon patent’s alleged priority date.  Knip is a forward-looking document that “envisions superior performance characteristics for an imagined” engine.  It was undisputed that Knip’s “advanced” engine used “then-unachievable pressure ratios and turbine temperatures,” making the engine “unattainable at that time.”  It also was undisputed that the revolutionary materials required by Knip were unavailable by Raytheon’s priority date.  The PTAB nevertheless held the claims unpatentable for obviousness because it found that a skilled artisan could have used Knip’s disclosures to calculate the power density claimed by Raytheon’s patent.

The Federal Circuit reversed because the PTAB’s focus was too narrow.  Rather than asking only whether Knip would have enabled a skilled artisan to calculate the claimed power density, the PTAB should have asked whether Knip enabled a skilled artisan to make the claimed invention as a whole.  And had it done so, it would have seen that there was no evidence of enablement of the invention as a whole.  In fact, the record would have shown only “extensive, unrebutted evidence of non-enablement.”

The Federal Circuit was careful to explain that not all obviousness cases will require the same enablement inquiry.  It clarified that a 103 reference can be relevant without being self-enabling.  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 where, as here, the reference is asserted on its own, without any other supporting evidence, the reference must “enable the portions of its disclosure being relied upon.”