Case: 18-1047   Document: 93     Page: 1   Filed: 04/03/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

     WILLIAM MICHAEL FREDERICK TAYLOR,
               Plaintiff-Appellant

                            v.

     ANDREI IANCU, UNDER SECRETARY OF
   COMMERCE FOR INTELLECTUAL PROPERTY
    AND DIRECTOR OF THE UNITED STATES
      PATENT AND TRADEMARK OFFICE,
               Defendant-Appellee
             ______________________

                       2018-1047
                 ______________________

    Appeal from the United States District Court for the
 Eastern District of Virginia in No. 1:15-cv-01607-LMB-
 JFA, United States District Judge Leonie M. Brinkema.
                 ______________________

                  Decided: April 3, 2020
                 ______________________

    WILLIAM MICHAEL FREDERICK TAYLOR, Chiddingfold,
 Surrey, United Kingdom, pro se.

     THOMAS W. KRAUSE, Office of the Solicitor, United
 States Patent and Trademark Office, Alexandria, VA, for
 defendant-appellee. Also represented by JOSEPH MATAL,
 MEREDITH HOPE SCHOENFELD, MAI-TRANG DUC DANG.
Case: 18-1047     Document: 93      Page: 2    Filed: 04/03/2020




 2                                             TAYLOR   v. IANCU



                   ______________________

         Before DYK, CHEN, and STOLL, Circuit Judges.
 PER CURIAM.
      William Michael Frederick Taylor (“Mr. Taylor”) sued
 the Director of the U.S. Patent and Trademark Office (“Pa-
 tent Office”) under 35 U.S.C. § 145, challenging the Patent
 Office’s rejection of U.S. Application Serial No. 11/807,860
 (“the ’860 application”), of which Mr. Taylor is the inven-
 tor. 1 The district court granted summary judgment to the
 Patent Office, concluding that all of the ’860 application’s
 claims are not enabled and are indefinite. We affirm on the
 ground that the ’860 application’s claims lack enablement.
                         BACKGROUND
      The ’860 application claims priority to United Kingdom
 Patent Application No. GB9310175.6, filed on May 18,
 1993. The specification describes a system called “GPS Ex-
 plorer.” J.A. 277. GPS Explorer, the specification explains,
 “is designed to provide information [to a user] on the move,”
 such as “while driving, flying, sailing, riding or walking.”
 J.A. 277, 278. GPS Explorer allows a user to “select one or
 more of [GPS Explorer’s] many modes of operation.” J.A.
 280. In “Simulation Mode,” “the user may access [a]



     1   Mr. Taylor also challenged, in separate cases, the
 Patent Office’s rejection of two of his related applications:
 U.S. Application Serial Nos. 10/425,553 (“the ’553 applica-
 tion”) and 11/391,501 (“the ’501 application”). The district
 court consolidated the three cases, and concluded that each
 of the applications was unpatentable. Mr. Taylor sepa-
 rately appeals the district court’s decision as to the ’553 ap-
 plication (Case No. 18-1048) and as to the ’501 application
 (Case No. 18-1070). Our decisions on those appeals are be-
 ing issued concurrently with this decision.
Case: 18-1047        Document: 93    Page: 3    Filed: 04/03/2020




 TAYLOR   v. IANCU                                             3



 database to obtain a computer[-]based simulation of some
 aspect of [a] location.” J.A. 286. The specification explains
 that simulation mode can be used:
       to see the route of a proposed new road or the sim-
       ulated facade of a proposed new building. By walk-
       ing around the physical site, as the GPS data
       changes so will the simulation to illustrate the sim-
       ulated views from the new physical position taking
       into consideration the user[’]s orientation, height,
       direction of view, view angle of azimuth and time
       of day. The simulation may be presented on a dis-
       play screen or any form of image projection system
       such as a virtual reality helmet or other device. If
       used in conjunction with a head up display the user
       will have both the present image and simulated fu-
       ture in view simultaneously enabling comparison.
 Id.
     Each of the ’860 application’s independent claims—
 claims 1 and 19—presents data to a user as a “computer-
 based simulation” and based on a user-specified “mode of
 operation.” Claim 1 recites:
       1. A system for mobile searching of information,
       comprising:
           a portable device that accesses a database,
           wherein the portable device further com-
           prises;
           an input component which allows a user to
           select type of data of interest to the user;
           a position determining component sensing
           a position of the portable device, and
           providing the sensed position to a compu-
           ting component of the portable device;
           an orientation determining component
           which determines a user’s view angle of
Case: 18-1047    Document: 93     Page: 4    Filed: 04/03/2020




 4                                           TAYLOR   v. IANCU



        azimuth and provides the user’s view angle
        of azimuth to a presentation component;
        the computing component operable to ac-
        cess the database and retrieve data from
        the database based on the type of data of
        interest, and the received sensed position;
        and
        the presentation component presenting the
        retrieved data to the user as a computer-
        based simulation that illustrates an aspect
        of a physical location at the sensed position
        based on the user's view angle of azimuth
        from the physical location, wherein the in-
        put component receives a specified mode of
        operation of the portable device from the
        user, and the presentation component pre-
        sents the retrieved data to the user based
        on the specified mode of operation.
 J.A. 77 (emphasis added). Claim 19 recites:
     19. A method of mobile searching of information us-
     ing a portable device, the method comprising:
        on the portable device, receiving selected
        type of data of interest and a specified mode
        of operation of the portable device from the
        user;
        sensing a position of the portable device
        and determining a user's view angle of azi-
        muth;
        accessing a database attached to the porta-
        ble device and retrieving data from the da-
        tabase based on the type of data of interest
        and the sensed position; and
        presenting the retrieved data to the user as
        a   computer-based      simulation      that
Case: 18-1047        Document: 93   Page: 5   Filed: 04/03/2020




 TAYLOR   v. IANCU                                          5



          illustrates an aspect of a physical location
          at the sensed position based on the user’s
          view angle of azimuth, wherein the pre-
          senting the retrieved data further com-
          prises presenting the retrieved data to the
          user based on the specified mode of opera-
          tion.
 J.A. 78–79 (emphasis added).
     In a final Office Action, the examiner rejected claims 1
 and 19 as lacking enablement and as obvious in light of
 several prior art references. The Patent Trial and Appeal
 Board (“Board”) affirmed the examiner’s enablement rejec-
 tion and further rejected the claims as indefinite under 35
 U.S.C. § 112, second paragraph. The Board reversed the
 examiner’s obviousness rejections, reasoning that the
 claims were too indefinite for the Board to “make a proper
 review of the prior art rejections.” J.A. 1235. The Board
 denied Mr. Taylor’s request for rehearing.
     Mr. Taylor then filed a complaint under 35 U.S.C. § 145
 in district court, seeking judgment that the ’860 applica-
 tion’s claims were patentable. The district court granted
 summary judgment to the Patent Office, concluding that
 the ’860 application’s claims were “non-enabled and indef-
 inite,” J.A. 65, and denied Mr. Taylor’s motion for reconsid-
 eration.
     Mr. Taylor appeals. We have jurisdiction to review the
 district court’s decision under 28 U.S.C. § 1295(a)(4)(C).
 We address only the issue of enablement.
                           DISCUSSION
     We review the district court’s grant or denial of sum-
 mary judgment de novo. MicroStrategy Inc. v. Bus. Objects,
 S.A., 429 F.3d 1344, 1348–49 (Fed. Cir. 2005). The pre-AIA
 version of 35 U.S.C. § 112, first paragraph, which applies
Case: 18-1047     Document: 93     Page: 6    Filed: 04/03/2020




 6                                            TAYLOR   v. IANCU



 here, sets forth the requirement that a patent be enabled,
 providing relevant part:
     The specification shall contain . . . the manner and
     process of making and using [the invention] in such
     full, clear, concise, and exact terms as to enable any
     person skilled in the art to which it pertains, or
     with which it is most nearly connected, to make
     and use the same . . . .
 35 U.S.C. § 112, ¶ 1 (2010). Enablement is a question of
 law based on underlying factual inquiries. ALZA Corp.
 v. Andrx Pharm., LLC, 603 F.3d 935, 940 (Fed. Cir. 2010)
 (citing Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362,
 1369 (Fed. Cir. 1999)).
     The specification describes several “mode[s] of opera-
 tion,” including “En Route Mode,” “Tour Mode,” “Hazard
 Warning Mode,” “Guidance Mode,” “Destination Oriented
 Guidance Mode,” “What’s On Mode,” “Walking[,] Driving[,
 and] Flying Mode[s],” “Pre-View Mode,” “More Detail
 Mode,” and “Simulation Mode.” J.A. 280–86. The manner
 in which information is presented to the user differs for
 each of these modes of operation. “For example, when
 walking slowly around a town the user will be given more
 detail than when driving through the town or flying over-
 head.” J.A. 282.
     The Board concluded that the claims were not enabled
 because the specification did not teach a person of skill how
 to “present[] . . . retrieved data to the user based on [a
 user-]specified mode of operation” during a “computer-
 based simulation,” as recited by claims 1 and 19. The
 Board reasoned that although the specification describes a
 “simulation mode,” “[i]n describing that embodiment, the
 specification never discusse[s] simulation within a mode or
 concurrent modes.” J.A. 59 (emphasis added). The district
 court agreed, as do we.
Case: 18-1047        Document: 93   Page: 7   Filed: 04/03/2020




 TAYLOR   v. IANCU                                          7



     To enable the claims, the specification must enable
 simulation of all modes of operation. See MagSil Corp. v.
 Hitachi Glob. Storage Techs., Inc., 687 F.3d 1377, 1381
 (Fed. Cir. 2012) (noting that “a patentee chooses broad
 claim language at the peril of losing any claim that cannot
 be enabled across its full scope of coverage” (emphasis
 added)). Yet nothing in the specification, whether in the
 paragraph describing “simulation mode” or elsewhere, con-
 templates multiple kinds of simulations depending on a
 mode of operation selected by the user—let alone explains
 how such functionality would be achieved.
      The Patent Office’s expert testimony supporting this
 conclusion was unrebutted. Dr. Peter Dana, the Patent Of-
 fice’s technical expert, testified that:
    [t]he specification does not describe providing dif-
    ferent simulations based on the user’s mode of op-
    eration or how the device would generate different
    simulations based on whether the user is walking
    or flying. Systems intended to simulate a variety
    of user actions would require the simulation of ve-
    hicle dynamics and the software (or hardware) fil-
    ters required to handle different dynamic
    scenarios.
 Expert Report of Peter Dana, Ph.D., Taylor v. Matal, No.
 1:15-cv-1607, ECF No. 86-1, at 15–16. Dr. Dana thus con-
 cluded that the claims of the ’860 application were “non-
 enabled.” Id. at 15. Though Mr. Taylor’s four experts tes-
 tified as to the enablement of certain features of GPS Ex-
 plorer (e.g., video overlays and the determination of
 geographic orientation), none explained how the specifica-
 tion teaches a person of skill in the art to run another
 “mode of operation” while inside “simulation mode.”
     Mr. Taylor asserts that “[t]he specification comprehen-
 sively described many modes by which the ’860 system will
 adjust the presentation of information to suit the mode of
Case: 18-1047    Document: 93      Page: 8    Filed: 04/03/2020




 8                                            TAYLOR   v. IANCU



 travel selected by the user and the GPS calculated speed.
 The word ‘mode’ appears 32 times in the specification.” Ap-
 pellant’s Br. 39. But the relevant question is not whether
 the specification discloses modes of operations. It is, in-
 stead, whether the specification teaches a person of skill
 how to “present[ ] retrieved data to the user as a computer-
 based simulation” while simultaneously “present[ing] the
 retrieved data to the user based on the specified mode of
 operation,” as the ’860 application claims. On this, the
 specification is silent.
      Mr. Taylor’s own experience in attempting to imple-
 ment the invention further supports finding a lack of ena-
 blement here. Mr. Taylor admitted that in 1993, when he
 filed his initial application, “there was no internet,” and
 that once the internet was developed he “attempt[ed] to
 play catch-up and move from [his] previous conception [of
 the invention] to [one] having more of an involvement in
 the internet.” Deposition of William Michael Frederick
 Taylor (day 2), Taylor v. Matal, No. 16-cv-12, ECF No. 51-
 3, at 11–12. Mr. Taylor also admitted that even after filing
 his application he was “waiting and waiting and waiting
 for a suitable platform to become available” to allow him to
 implement his idea. Id. at 12. Indeed, as the district court
 found, Mr. Taylor’s “first prototype was not operational un-
 til 1998 and neither that prototype nor the 2001 version
 contained all the features described in the specification,
 much less the claims.” J.A. 65. Mr. Taylor’s own experi-
 ence thus shows that the specification did not enable the
 claimed invention but was instead “only a starting point, a
 direction for further research.” ALZA, 603 F.3d at 941
 (quoting Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501
 F.3d 1274, 1284 (Fed. Cir. 2007)).
     No reasonable factfinder could conclude that the
 ’860 application meets the enablement requirement. Be-
 cause we hold the ’860 application unpatentable for the
Case: 18-1047        Document: 93   Page: 9   Filed: 04/03/2020




 TAYLOR   v. IANCU                                          9



 reasons above, we need not reach the other grounds raised
 on appeal.
                          AFFIRMED
