United States: Test Results Showing Invention Failed to Satisfy Commercial Standards Are Not Material to Patentability

The U.S. Court of Appeals for the Federal Circuit has vacated a district court’s summary judgment of lack of enablement and reversed its finding of inequitable conduct, holding instead that an applicant does not necessarily have a duty to disclose disappointing test results. CFMT, Inc. v. Yieldup Int’l Corp., No. 01-1452 (Fed. Cir. Nov. 12, 2003). The two patents in suit were directed to systems for cleaning semiconductor wafers. While the applications were still pending, the inventors tested the patented machine at a Texas Instruments (TI) facility, where it failed to meet TI’s cleanliness standards for removing particulates. In response, the inventors came up with improvements for which they sought and obtained another patent.

The district court found the claims of the patents in suit were not enabled because the claimed invention failed to remove particulates. The court also held that the issuance of the improvement patent showed that undue experimentation was required to practice the patents in suit. The district court further found the inventors had committed inequitable conduct by failing to disclose the negative TI test results to the U.S. Patent and Trademark Office.

Construing the claims to require any level—not some specific level—of contaminant removal, the Federal Circuit found the claims were enabled by the specification because the inventors’ prototype removed penciled grease marks. The Federal Circuit observed that the enablement requirement "does not require that a patent disclosure enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect." Moreover, the Federal Circuit found that even if the prototype did not achieve "complete cleaning," the claimed invention would not be inoperative on that ground alone. The Federal Circuit rejected the district court’s holding that the improvement patent demonstrated that undue experimentation was required to enable the claims of the two patents in suit.

As to unenforceability, the Federal Circuit held the negative TI test results were not material to the patentability of the claimed invention because the TI data "reflects a commercial, not a statutory, standard for enablement."