Patent Invalid – Not Enabled: DreamWorks Wins Patent Invalidity Appeal For Voiceover Patents Appealed From Los Angeles, California District Court

February 1, 2008. The Los Angeles, California district court issued summary judgment of invalidity of plaintiff David Sitrick’s asserted claims from his two U.S. patents (5,553,864 and 6,425,825) against DreamWorks and Warner Brothers. The patents claim the replacement of images and voices into pre-existing movies and video games. The District Court held that the asserted claims were invalid for lack of enablement for integration of voice or images into DVDs (i.e. the specification did not teach a person of ordinary skill in the art how to practice the invention – without undue experimentation – as claimed for movies). Even though the patents enabled practicing the invention for video games, the district court held that the full scope of the claimed invention – including integration into movies – must be enabled.

The Court of Appeals For the Federal Circuit (“CAFC”) affirmed the lower court’s ruling and the invalidity of the asserted claims for lack of enablement:

Defendants showed with clear and convincing evidence that one skilled in the art could not take the disclosure in the specification with respect to substitution or integration of user images in video games and substitute a user image for a pre-existing character image in movies without undue experimentation. Defendants supported their motion for summary judgment of invalidity by reference to the teachings of the specifications and the opinions of their two experts. Read the CAFC opinion.

The CAFC stated that the full scope of the claimed invention must be enabled and not merely one portion thereof. See Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1285 (Fed. Cir. 2007). Read the CAFC opinion.

Sitrick also appealed the transfer of the case from Illinois to the Central District of California. The CAFC held that Sitrick had waived his objections to venue in California because he did not assert them in his complaint or by motion, despite litigating the case for more than three years in California.