Junction patent is held invalid for lack of enablement
Magsil Corp., et al. v. Seagate Technology, et al., Civil Action No. 08-940-HB, February 16, 2011.
Bartle C. J. (by designation) Defendants’ motion for summary judgment on invalidity for lack of enablement is granted.
The disputed technology concerns a junction which consists of electrodes separated by insulation. The court agrees with defendants that the plaintiffs are claiming a patent on junctions with resistive changes of 20%, 200%, 2000%, and up to infinity while the specification teaches how to construct junctions with a maximum resistive change of up to 11.8%, over plaintiffs’ argument that the specification need teach only one mode of practicing the invention and not all possible modes. The patent reveals that the innovators’ best efforts yielded a maximum resistance change of 11.8% and one inventor testified he did not know how to achieve a tunnel junction generating more than a 20% change. When the inventors created a junction generating resistance at 11.8 %, they still managed to achieve less than half of the maximum resistance predicted 20 years earlier. An inventor can not claim what was desired but difficult to obtain unless the patent discloses how to make and use it.
