While somewhat of a fact specific case, the main lesson here is to be careful on how broadly you craft your claims and to provide at least some dependent claims that more specifically target working embodiments. As the court remind us, “[b]y choosing such broad claim language, [the patentee] put itself at the peril of losing any claim that cannot be enabled across its full scope of coverage.”
Background / Facts: The patents asserted in this case are directed to a software motion control technology called input shaping, which is used to dampen vibration and noise in hard disk drives during “seeking” operations. In this regard, the claims broadly recite a method for “generating an input to a physical system to minimize unwanted dynamics in the physical system response.” The claims therefore purport to cover inputs into any and all physical systems, including disk drives.
Issue(s): Whether the patent enables one of ordinary skill in the art to generate inputs to minimize unwanted dynamics for all physical systems.
Holding(s): No. The court focused primarily on the fact that the inventor conceded that he was “unable to implement his own method on disk drives until almost nine years after the filing date of the patent.” In particular, it appears that the inventor had problems implementing his invention on “long seeks” where vibrations are more pronounced. Contrary to the patentee’s arguments, the court found that “long seeks are critical to the fundamental workings of these particular physical systems, i.e., disk drives,” and not merely a commercial embodiment outside the purview of the enablement requirement.