Full Claim Scope Must Be Enabled To Avoid Invalidity


In Sitrick v. Dreamworks, LLC, (No. 07-1174, February 1, 2008), a Federal Circuit panel affirms a district court’s judgment of invalidity for lack of enablement. The claims at issue are directed to integrating user generated audio or visual content into a pre-existing video game or movie by “selectively substitut[ing] user image data for predefined character image data so as to provide an audiovisual presentation that includes the [user provided] image integrated therein.” The accused product allows users to combine their own voice with pre-existing video images stored on a DVD.

Citing to Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274 (Fed. Cir. 2007), the panel reasons that, because the asserted claims are broad enough to cover both movies and video games, the patent disclosure must enable both embodiments. According to the panel opinion, a “patentee who chooses broad claim language must make sure the broad claims are fully enabled.” The asserted claims are not deemed to be enabled in the context of movies because, unlike video games, movies do not rely on discrete address and control signals. In support of its conclusion, the Federal Circuit panel also notes the undisputed evidence showing that it is difficult, if not impossible, to isolate any one voice from the rest of the sounds in movie soundtracks.