            In the United States Court of Federal Claims
                                       No. 12-303C

                            (Filed Under Seal: December 5, 2014)

                               (Reissued: December 12, 2014)

**********************************          )
                                            )      Patent case; U.S. Patent No. 7,175,722
HITKANSUT LLC, a Michigan                   )      entitled “Methods and Apparatus for
corporation, & ACCELEDYNE                   )      Stress Relief Using Multiple Energy
TECHNOLOGIES, LTD., LLC, a                  )      Sources;” enablement challenge; 35
Michigan corporation,                       )      U.S.C. § 112, Paragraph 1 (2006);
                                            )      Wands factors; dependent claim that
                      Plaintiffs,           )      does not state a further limitation on the
                                            )      independent claim upon which it depends;
       v.                                   )      35 U.S.C. § 112, Paragraph 4 (2006)
                                            )
UNITED STATES,                              )
                                            )
                      Defendant.            )
                                            )
**********************************

        John S. Artz, Dickinson Wright, PLLC, Troy, Michigan, for plaintiffs. With him on the
briefs were John A. Artz, Bryan J. Schomer, and Franklin M. Smith, Dickinson Wright, PLLC,
Troy, Michigan.

       Gary L. Hausken, Assistant Director, Commercial Litigation Branch, Civil Division,
United States Department of Justice, Washington, D.C., for defendant. With him on the briefs
were Stuart F. Delery, Assistant Attorney General, Civil Division, and John Fargo, Director,
Commercial Litigation Branch, Civil Division, United States Department of Justice, Washington,
D.C. Of counsel was Benjamin S. Richards, Attorney, Commercial Litigation Branch, Civil
Division, United States Department of Justice, Washington, D.C.

                                    OPINION AND ORDER1

LETTOW, Judge.



       1
         Because this opinion and order might have contained confidential or proprietary
information within the meaning of Rule 26(c)(1)(G) of the Rules of the Court of Federal Claims
(“RCFC”) and the protective order entered in this case, it was initially filed under seal. The
parties were requested to review this order and to provide proposed redactions of any
confidential or proprietary information. No redactions were requested.
        This patent case concerns a thermomagnetic processing method employed in research
conducted by the government acting through Oak Ridge National Laboratory (“Oak Ridge” or
“the government”) and by private entities through contractual Cooperative Research and
Development Agreements (“CRADAs”) with the government. Plaintiffs Hitkansut LLC and
Acceledyne Technologies, Ltd. LLC (collectively, “Hitkansut”) allege that the United States,
through Oak Ridge, infringed upon Claims 1, 2, 6, 7, 8, 11, and 14 of its patent, United States
Patent No. 7,175,722 (“the ’722 patent”), entitled “Methods and Apparatus for Stress Relief
Using Multiple Energy Sources.” Before the court is the government’s motion for summary
judgment of invalidity pursuant to RCFC 56 with respect to Claims 1, 2, 6, and 11 of the ’722
patent. Def.’s Mot. for Summary Judgment of Invalidity of U.S. Patent No. 7,175,722 Pursuant
to [35] U.S.C. § 112 (“Def.’s Mot.”), ECF No. 80. Plaintiffs resist this motion and defend the
validity of the claims in the ’722 patent. See Pls.’ Opp’n to Mot. for Summary Judgment of
Invalidity of U.S. Patent No. 7,175,722 Pursuant to 35 U.S.C. § 112 (“Pls.’ Opp’n”), ECF No.
91. The pending motion represents the second motion by the government for partial summary
judgment in this case; the court previously granted summary judgment to the government
invalidating Claims 7, 8, and 14 of the ’722 patent for failure to claim patent eligible subject
matter under 35 U.S.C. § 101. Hitkansut LLC v. United States, 115 Fed. Cl. 719 (2014)
(“Hitkansut III”). The pending motion has been fully briefed, and a hearing was conducted on
November 10, 2014.

                                        BACKGROUND

        Hitkansut claims that its principal, Ms. Donna Walker, invented “a method of achieving a
desired physical property in a structure . . . through the concurrent application of two different
energies . . . [where t]he first energy may be thermal energy (i.e. heat) and the second energy
may be mechanical vibration, sonic, laser, microwave, or magnetic energy.” Pls.’ Mot. to
Compel & for Entry of a Protective Order at 1-2, ECF No. 11. Ms. Walker filed a provisional
patent application for this material-processing method on August 16, 2002 and was granted a
patent on February 13, 2007. Hitkansut avers that Oak Ridge and its contractual partners are
using the method and therefore infringing the process outlined in the claims of the ’722 patent.
See Compl. ¶¶ 22, 45 & Ex. A.2

        The ’722 patent consists of fourteen claims, seven of which are the subject of this action.
In May 2013, this court held a claim-construction hearing, and it issued its constructions of the
pertinent claim terms on July 31, 2013. See Hitkansut II, 114 Fed. Cl. 410. In September 2013,
the government filed its first motion for summary judgment, asserting the invalidity of the ’722
patent because its claims sought to patent nonstatutory subject matter under 35 U.S.C. § 101.
Hitkansut cross moved for a declaration that the claims are eligible for patent protection. On
May 2, 2014, the court issued an opinion and order invalidating Claims 7, 8, and 14 for failure to
claim patent eligible subject matter under 35 U.S.C. § 101. See Hitkansut III, 115 Fed. Cl. 719.

       2
        Hitkansut claims that Ms. Walker disclosed her process to Oak Ridge employees while
serving as a guest researcher there from 2003 to 2005, and Oak Ridge proceeded to use the
process after discussing but failing to reach an agreement with Ms. Walker regarding a
collaborative research effort. See Hitkansut LLC v. United States, 114 Fed. Cl. 410, 415 (2013)
(construing disputed claim terms) (“Hitkansut II”).


                                                 2
The court withheld summary judgment with respect to Claims 1, 2, 6, and 11 because the
remaining claims raised issues beyond subject-matter eligibility. Id. at 734 n.17.
        On August 11, 2014, the government filed its second motion for summary judgment,
alleging that the disclosed method of determining time and operational settings from a Larson-
Miller relationship was inoperable due to the presence of several significant errors in the
specification and claims and that Claims 1, 2, 6, and 11 were not enabled by the disclosure in the
patent under 35 U.S.C. § 112. Def.’s Mot. at 1. Hitkansut responded by arguing that any errors
in the specification and claims are trivial and insignificant and the disclosure regarding the
claims is sufficient to satisfy the enablement requirement. Pls.’ Opp’n at 12, 18-27.

       Of the four remaining asserted claims, Claim 1 is an independent claim, on which Claims
2 and 6 depend. Claim 11 is a separate independent claim upon which no other claim depends.

                                STANDARDS FOR DECISION

        Under RCFC 56, “[t]he court shall grant summary judgment if the movant shows that
there is no genuine dispute as to any material fact and the movant is entitled to judgment as a
matter of law.” RCFC 56(a). A fact is material if it “might affect the outcome of the suit under
governing law;” an issue is genuine if it “may reasonably be resolved in favor of either party.”
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 250 (1986). The initial burden rests on the
moving party to demonstrate the absence of any genuine issue of material fact. Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986). The moving party may relieve its burden by “pointing out . . .
that there is an absence of evidence to support the nonmoving party’s case.” Id. at 325.

       35 U.S.C. § 112 sets forth the enablement requirement as follows:

       The specification shall contain a written description of the invention, and of the
       manner and process of making and using it, 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, and shall set forth the best
       mode contemplated by the inventor of carrying out his invention.

35 U.S.C. § 112, Paragraph 1 (2006).3

        Enablement poses a question of law based on underlying findings of fact. Alcon, 745
F.3d at 1188; In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991). The enabling disclosure must
appear in the specification of the patent at the time of filing. MagSil Corp. v. Hitachi Global
Storage Technologies, Inc., 687 F.3d 1377, 1382 (Fed. Cir. 2012). A challenger to a patent’s
validity based on a lack of enablement has the burden of proving by clear and convincing

       3
         Paragraph 1 of 35 U.S.C. § 112 was replaced with newly designated § 112(a) by
Subsection 4(c) of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat.
296, and AIA Subsection 4(e) makes those changes applicable to any patent application filed on
or after September 16, 2012. Because the ’722 patent’s application was filed before that date,
the court will rely on the pre-AIA version of § 112. See Alcon Research Ltd. v. Barr Labs., Inc.,
745 F.3d 1180, 1183 n.1 (Fed. Cir. 2014).


                                                 3
evidence that a person of ordinary skill in the art would not be able to practice the full scope of
the claimed invention without “undue experimentation.” Alcon, 745 F.3d at 1188 (citing In re
Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988); Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d
1342, 1360 (Fed. Cir. 1998)); see also In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993).
Whether the required experimentation is “undue” is “not a single, simple factual determination,
but rather is a conclusion reached by weighing many factual considerations.” Wands, 858 F.2d
at 737. For a given case, the determination of what constitutes undue experimentation requires
the application of a standard of reasonableness, with “due regard for the nature of the invention
and the state of the art.” Id. (citing Ansul Co. v. Uniroyal, Inc., 448 F.2d 872, 878-79 (2d Cir.
1971)). In Wands, the court of appeals set forth relevant factors that may be weighed in
determining whether the amount of experimentation required is undue or sufficiently routine
such that an ordinarily skilled artisan would reasonably be expected to complete it. Alcon, 745
F.3d at 1188 (citing Wands, 858 F.2d at 737).4 Those factors include:

       (1) the quantity of experimentation necessary,
       (2) the amount of direction or guidance presented,
       (3) the presence or absence of working examples,
       (4) the nature of the invention,
       (5) the state of the prior art,
       (6) the relative skill of those in the art,
       (7) the predictability or unpredictability of the art, and
       (8) the breadth of the claims.

Wands, 858 F.2d at 737.

        In the patent system, enablement serves the dual purpose of “ensuring adequate
disclosure of the claimed invention and of preventing claims broader than the disclosed
invention.” MagSil, 687 F.3d at 1381 (citing AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234,
1244 (Fed. Cir. 2003)). To ensure adequate public knowledge, the scope of the enablement must
be greater than or equal to the scope of the claims. Id.; see also Sitrick v. Dreamworks, LLC, 516
F.3d 993, 999 (Fed. Cir. 2008); Automotive Technologies Int’l, Inc. v. BMW of N. Am., Inc., 501
F.3d 1274, 1281 (Fed. Cir. 2007). “[A] patent must be precise enough to afford clear notice of
what is claimed, thereby apprising the public of what is still open to them. Otherwise there would
be a zone of uncertainty which enterprise and experimentation may enter only at the risk of
infringement claims.” Nautilus, Inc. v. Biosig Instruments, Inc., __ U.S. __, __, 134 S. Ct. 2120,
2129 (2014) (internal citations omitted).

                                            ANALYSIS

                                    A. Errors in the ’722 Patent

       The government claims that the ’722 patent fails the enablement requirement in part
because Claims 1, 2, 6, and 11 contain substantial errors, the identification and correction of

       4
        The Wands factors are not mandatory, and a court may find a lack of enablement without
an analysis of all eight factors. See Cephalon, Inc. v. Watson Pharm., Inc., 707 F.3d 1330, 1336
(Fed. Cir. 2013).


                                                  4
which would require undue experimentation by a person of ordinary skill in the art. Def.’s Mot.
at 9-15. Hitkansut concedes that the ’722 patent contains errors, but insists that they ultimately
are insignificant because persons of ordinary skill in the art, based on their education and
experience, would be able to correct them and operate the protected process. Pls.’ Opp’n at 10.
In support of their position, Hitkansut offers the declarations of Dr. Robert H. Wagoner5 and the
inventor, Ms. Walker, experts whom they claim qualify as persons of ordinary skill in the art. Id.
at 9.6

        In PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558 (Fed. Cir. 1996), the Federal
Circuit addressed the issue of errors in a patent as they relate to the statutory enablement
requirement. In that case, the court held that the inventor’s use of flawed testing equipment,
which led to the belief that glass with a composition equal to that of the competitor’s glass would
not satisfy the patent’s ultraviolet transmission limitation, did not prevent the patent from
satisfying the enablement requirement. Id. at 1564. The court noted that undue experimentation
       5
        Dr. Wagoner is Professor Emeritus of Materials Science and Engineering at Ohio State
University. Pls.’ Opp’n at Ex. D (Decl. of Dr. Robert H. Wagoner (Sept. 17, 2014)) (“Wagoner
Decl.”) at 1. From 1983 to 2013, he was the George K. Smith Chair and Professor in the
Departments of Materials Science and Engineering and Mechanical Engineering at Ohio State
University. Id.
       6
          Both parties have submitted similar definitions of persons who qualify as those of
ordinary skill in the relevant art. Compare Def.’s Claim Constr. Br. at 14-15, ECF No. 20, with
Pls.’ Opp’n at 11-12, and Wagoner Decl. at 4. Both sides agree that such a person would have at
least a baccalaureate degree in materials science or engineering or in a related field, such as
physics or physical chemistry, and “would also have some practical experience in working with
solid materials.” Def.’s Claim Constr. Br. at 15. The court in its enablement analysis may
properly rely on the expert testimony of those of ordinary skill in the art. See ALZA Corp. v.
Andrx Pharm., LLC, 603 F.3d 935, 942 n.8 (Fed. Cir. 2010) (“We find that the district court did
not clearly err in crediting the testimony of [defendant’s expert], whose analysis was based on
the level of skill in the art that the court adopted.”).
           Notably, the government neglected to proffer any expert testimony on the issue of
enablement. Instead, the government in its motion cited heavily to a deposition of Ms. Walker,
the inventor of the process set forth in the ’722 patent. However, as the government itself
conceded, “the inventor’s memory is irrelevant to answering a simple question about the primary
exemplary embodiment described in [the ’722] patent.” Def.’s Mot. at 10-11. The court
therefore declines to give weight to the deposition testimony of Ms. Walker in its assessment of
whether the ’722 patent meets the enablement requirement. See generally Solomon v. Kimberly-
Clark Corp., 216 F.3d 1372 (Fed. Cir. 2000) (holding that inventor testimony obtained in the
context of litigation should not be used to invalidate issued claims under the second paragraph of
35 U.S.C. § 112); Roton Barrier, Inc. v. The Stanley Works, 79 F.3d 1112, 1126 (Fed. Cir. 1996)
(noting in the context of claim construction, “[w]e have previously stated that an inventor’s
“‘after-the-fact testimony is of little weight compared to the clear import of the patent disclosure
itself.’”) (quoting North Am. Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1577 (Fed.
Cir. 1993)); Markman v. Westview Instruments, Inc., 52 F.3d 967, 985 (Fed. Cir. 1995), aff’d,
517 U.S. 370 (1996).



                                                 5
“is a matter of degree,” and relied on the district court’s finding that PPG’s calculation error was
“harmless, inconsequential, and easily detectable by anyone who was skilled in the art of
processing solar controlled glass.” Id. The court concluded that despite the errors, the patent
taught those skilled in the art how to make and use the full scope of the claimed invention. Id.

        In this case, the errors identified by the government in the ’722 patent are similar to those
present in the patent at issue in PPG. The first error that the government identifies is the
inclusion in the specification of incorrect calculations in the rows of Tables 1 and 2
corresponding to a time of “0.” Def.’s Mot. at 9-15 (referring to ’722 patent, col. 14, line 50 to
col. 15, line 20).7 The government contends that these calculations are “nonsense” and would
necessarily require significant recalculation by one skilled in the art. Id. at 10-11.8 However, as
the government itself notes, Ms. Walker intended these rows to establish a baseline
measurement, id. at 11, and the act of establishing a baseline is explicitly referenced in the
patent’s specification, see ’722 Patent, col. 14, lines 15-18 (“A baseline stress measurement
was taken on one of the halves.”). Use of a baseline is routine in experimentation, and
Dr. Wagoner’s declaration indicates that one skilled in the art would recognize such rows as
irrelevant to the plot trend reported in the ’722 patent and not rely on them in practicing the
protected process. Wagoner Decl. at 6 n.2. Like the influence of the mistaken application of
software in PPG, inclusion of the values corresponding to a time value of “0” is best categorized
as a representational error easily detectable by one skilled in the art of materials processing.

        The government also notes that the patent includes an incorrect value of the Larson-
Miller constant “C” for aluminum. Def.’s Mot. at 9-10. The patent instructs use of a value for C
of 10 instead of 20, the accepted standard constant for aluminum in the Larson-Miller equation.
Pls.’ Opp’n at 14; Wagoner Decl. at 6 n.1. However, far from inhibiting the use of the claimed
process, the error is typographical and would easily be understood and corrected by those of skill
in the art who would have familiarity with commonly accepted values applicable to the Larson-
Miller relationship. See Wagoner Decl. at 5-7.9 Use of the incorrect constant is even less
significant than the errors that were present and found to be insignificant in PPG, which involved
the application of flawed testing equipment that resulted in incorrect conclusions about
ultraviolet transmissions. See PPG, 75 F.3d 1558.

       Finally, the government asserts that the ’722 patent is characterized by incorrect and an
inconsistent use of units for time and temperature, and the improper use of a natural logarithm

       7
        Table 1 contains raw data used to construct the thermal Larson-Miller curve shown in
Figure 4A. ’722 Patent, col. 14, lines 50-66.
       8
         The patent incorporates the Larson-Miller relationship, the equation for which requires
taking the log of “t,” i.e., time. If time equals zero, the log is undefined and thus not meaningful.
See Def.’s Mot. at 10 (citing Def.’s App. 251, Holliday, et al., Algebra 2, at 511 (Glencoe
McGraw-Hill 2008) (explaining that the domain of logarithmic functions “is the set of all
positive real numbers”) (emphasis added)).
       9
        Similarly, the use of the capital letter “T” for time rather than the lower case “t” in
Tables 1 and 2 is an insignificant typographical error. See Pls.’ Opp’n at 14.


                                                  6
rather than a base-10 logarithm in its application of the Larson-Miller relationship. Def.’s Mot.
at 12-14, 27. Specifically, the government notes that the ’722 patent does not instruct a person
practicing the claimed method to use degrees Rankine for temperature “T” or to calculate time
“t” in hours. The result of these errors is the incorrect calculation of the “final” combined
Larson-Miller parameter Pf, allegedly rendering the claimed process inoperable. Id. at 14.10
While the government is correct that the patent contains unit errors, the court finds that any
errors or omissions in the patent’s specification with regard to units or the applicable type of
logarithm are insignificant because of the patent’s incorporation of the Larson-Miller
relationship. The relationship first identified by Larson and Miller is considered fundamental
and “taught in basic undergraduate engineering courses in metallurgy and material engineering.”
Pls.’ Opp’n at 13; see also Wagoner Decl. at 5. Even in their original article outlining the
relationship, Larson and Miller instructed that for a given stress, the time is related to
temperature by the equation P=T (20 + log (t)) where “t” is the time “in hours” and “T is the
absolute temperature in (deg[rees] R[ankine]).” See Pls.’ Opp’n at Ex. J (F. R. Larson and James
Miller, A Time-Temperature Relationship for Rupture and Creep Stresses, Transactions of the
ASME, July 1952)). Those of skill in the art would be familiar with the proper units
corresponding to the Larson-Miller relationship and would easily be able to recognize and
correct any errors. Wagoner Decl. at 5. In fact, at the hearing held November 10, 2014, the
government acknowledged that there is a way to correct each of the identified errors and make
the patented process work for metals. Hr’g Tr. 25:3-7 (Nov. 10, 2014) (The question really isn’t
. . . there a way to make this process work. . . . There is a way to correct all the errors and to
essentially make this work at least for metals.”). Dr. Wagoner in his declaration explained that it
took him approximately one hour to read and understand the patent and invention and to
calculate, reproduce, and confirm the appropriate Larson-Miller parameters and operational
settings described in the specification. Wagoner Decl. at 5-6.11

        In sum, while the ’722 patent does contain representational errors and flaws in
nomenclature, these errors are ultimately not significant because of the patent’s incorporation of
the Larson-Miller relationship, which is well understood and fundamental in the field of
materials processing. A person of ordinary skill in the art would be able to correct the value of
“C” for aluminum from 10 to 20, adjust the units of temperature “T” to degrees Rankine and the
units of time “t” to hours, and apply a base-10 logarithm instead of a natural logarithm to the
Larson Miller calculation. Wagoner Decl. at 5.12 Because no undue experimentation would be
necessary, the errors do not prevent the patent from enabling the protected process.

       10
          The “final” Larson-Miller parameter, Pf = Pv – Pt is required to solve the Larson-Miller
relationship, P f = T(C + log (t)), where T is temperature, t is time, and C is a unitless constant
that varies depending on the applicable material. See ’722 Patent, col. 15, lines 45-48.
       11
          Dr. Wagoner in his declaration stated, “[T]he errors found in the ’722 [p]atent should be
considered isolated, insignificant, and narrow . . . . One of a high level of skill required in the art
. . . would recognize these errors without any experimentation.” Wagoner Decl. at 7 (emphasis
added).
       12
         In the patent prosecution process, counsel for Ms. Walker submitted a supplemental
declaration by her dated April 3, 2006, transmitting additional experimental data. Pls.’ Opp’n


                                                  7
                                          B. Enablement13

         The government argues that apart from the errors in the ’722 patent, all eight Wands
factors “strongly support the conclusion that undue experimentation would be required to
practice [C]laims 1, 2, 6, and 11.” Def.’s Mot. at 16. The government first addresses the eighth
Wands factor: the breadth of the claims. Specifically, the government contends that the breadth
of Claims 1, 2, 6, and 11 exceeds the patent’s accompanying disclosure, requiring a person
practicing the process to engage in undue experimentation to practice its full scope. Id. at 16-17.
First, the government notes that the term “structure” in Claim 1 is overbroad, citing the court’s
claim-construction ruling that “structure” means “a physical object that has been constructed or
manufactured and to which the claimed invention is applied.” Id. (quoting Hitkansut II, 114 Fed.
Cl. at 416). The government contends that the ’722 patent’s disclosure only describes how to use
the method with crystalline solids. Id. at 17. Similarly, the government argues that the reference
in Claim 1 to “oscillatory” energy does not inherently limit “oscillatory” to apply only to an
oscillatory source with mechanical vibrations, as described in the ’722 patent’s disclosure. Id. at
17-18. The government also underscores the fact that Claim 11 does not limit itself to the
requirement present in Claims 1, 2, and 6 that one of the two applied energies must be oscillatory
while the other must be thermal. Id. at 18. Finally, the government states that Claims 1, 2, and
11 are overbroad because they encompass “changing a physical property” without restricting the
applicable property to internal stress. Id. at 19.14

       In raising its objection of a lack of enablement based on overbreadth of the patent claims,
the government improperly relies on the deposition of the inventor, Ms. Walker, in identifying


Ex. F (Inventor Supplemental Decl.), ECF No. 91-7. Those data reflected stress relief tests on
4340 steel, using vibratory and thermal means. Id. at 19-23. The Larson-Miller equations were
stated in terms of temperature “T” expressed in degrees Rankine and time “t” expressed in hours.
The values for the constant “C” varied between 20 and 10. Id.
       13
           In their briefing, plaintiffs also include arguments asserting that the claims in the ’722
patent are not indefinite. Pls.’ Opp’n at 9-10. As the government noted in its reply brief and at
the hearing held on November 10, 2014, the government did not raise any objection to the ’722
patent claims on the ground of indefiniteness. Def.’s Reply in Support of Mot. for Summary
Judgment of Invalidity of U.S. Patent No. 7,175,722 Pursuant to 35 U.S.C. § 112 at 2, ECF No.
93. The enablement and written-description requirements are separate and distinct. Hr’g Tr.
4:22 to 5:21 (Nov. 10, 2014); see also Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340
(Fed. Cir. 2010) (en banc). Likewise, the definiteness requirement, which arises under the
second paragraph of Section 112, is distinct from the enablement requirement, which is set out in
the first paragraph of Section 112. See 28 U.S.C. § 112 (2006). Only the issue of enablement
has been put at issue by the government’s motion.
       14
          Because the Larson-Miller relationship describes a time and temperature relationship
for relieving creep stress and preventing catastrophic failure or rupture, the government asserts
that if another property were to be altered by applying the protected process, the disclosure offers
no guidance as to how the process should be modified, requiring one skilled in the art to fill in
the gaps by engaging in undue experimentation. Def.’s Mot. at 19-20.


                                                 8
the proper boundaries that delineate the “full scope” of the ’722 patent. See, e.g., Def.’s Mot. at
17 (“[W]hile the inventor claims that the process works on carbon structures, her testimony
reveals that she did not discover as much until a couple of years ago”) (internal citation omitted);
id. at 18 (“[A]ccording to the inventor’s understanding, any energy source could satisfy the
oscillatory energy ‘limitation’ of [C]laim 1”). Nonetheless, it is not the inventor’s opinion, but
rather the patent as understood by one of ordinary skill in the relevant art, that controls.

        The government avers that “the invention embraces methods of changing any physical
property of a structure without regard to the material the structure is made out of, or the
particular manner by which energy is applied to effect that change.” However, the government’s
assertion overstates the scope of the invention because the Larson-Miller relationship provides
context for the ’722 patent. Def.’s Mot. at 35.15 That context inherently limits the types of
materials to which the process can be applied and any potential physical properties affected by
the process.16 That is the reason “structure” as used in the claims is construed to mean “a
physical object that has been constructed or manufactured and to which the claimed invention is
applied.” Hitkansut II, 114 Fed. Cl. at 416 (emphasis added). The claimed invention uniformly
and consistently invokes the Larson-Miller relationship and thus a structure covered by the
claims would necessarily have to be susceptible to being affected by operations conducted
pursuant to the relationship. Other structures, i.e., those not so affected, would be outside the
coverage of the claims.

        The government also argues that the first three Wands factors each support its position
that the protected process is not enabled by the disclosure. Def.’s Mot. at 23-29. The
government asserts that the specification of the ’722 patent fails to disclose, inter alia, (1) the
types of energy that may be used in the process; (2) the suitability of a given energy type for
each material; (3) the settings governing non-thermal energies used with the method; (4) the
proper tuning process; and (5) a method for altering the Larson-Miller relationship to account for
two energy processes that do not depend on temperature “T.” Additionally, the government
argues that the single detailed example in the specification of how to use the claimed method
provides inadequate guidance to those of ordinary skill in the art to apply the protected process.
Id. at 27-29.

        As the government acknowledges, “a specification need not disclose what is well-known
in the art,” Def.’s Mot. at 32 (quoting Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d
1269, 1288 (Fed. Cir. 2012)), and where the applicable skill level is high, “it may be appropriate
to infer that a person of ordinary skill already possesses a wide array of knowledge that need not
be disclosed in the specification,” id. While the government categorizes the level of one of

       15
         Moreover, the fact that claims might be broad is itself insufficient to invalidate a patent
based on a lack of enablement. See Ariad Pharm., 598 F.3d at 1359 (Newman, additional views)
(“Indeed, pioneering inventions can receive broad patents, when shown to have broad scope.”).
       16
         In his declaration, Dr. Wagoner explains that stress relief is a standard process that one
of ordinary skill would associate only with metals and alloys because stress relief occurs by
ameliorating dislocations, which appear in metals, alloys, and, rarely, in other crystalline solids
such as ceramics. See Wagoner Decl. at 8.


                                                 9
ordinary skill in the art as “low,” id., it acknowledges that a person of the requisite skill would
have a background in metallurgy, material science, or engineering including two to three years of
work in a laboratory and would therefore be familiar with the Larson-Miller relationship, which
is typically taught in undergraduate engineering courses, id. at 33. As Dr. Wagoner stated in his
declaration, despite the alleged omissions identified by the government, a person of ordinary
skill in the art would be able to correct the minor errors in the ’722 patent, calculate the Larson-
Miller parameters, calculate the operational settings in accordance with the specification, and
recreate the Larson-Miller plots of Figures 2a and 2b of the specification in “an hour or less.”
Wagoner Decl. at 7. He further declared, “[b]ased on the extent of the disclosure in the
specification, not only is no undue experimentation required to practice the process set forth in
the ’722 patent, but no experimentation at all is required to practice it. . . . All that is required is
simple calculations and basic analysis, no experimentation.” Id. at 7-8. These circumstances are
readily distinguishable from those encountered in decisions finding lack of enablement because
of a need for extensive experimentation. See ALZA Corp., 603 F.3d 941 (holding that claims
failed for lack of enablement where plaintiff conceded that even with the guidance provided in
the specification, a person of ordinary skill in the art would be “required to engage in an
iterative, trial-and-error process to practice the claimed invention”); see also White Consol.
Indus., Inc. v. Vega Servo-Control, Inc., 713 F.2d 788, 790-92 (Fed. Cir. 1983) (finding that a
requirement of 18 months to 2 years’ work to practice the patented invention is “undue
experimentation”); cf. PPG, 75 F.3d at 1565 (quoting In re Ghiron, 442 F.2d 985, 992 (C.C.P.A.
1971) (a development period of “‘many months or years . . . does not bespeak a routine operation
but of extensive experimentation and development work’”)). Dr. Wagoner’s testimony indicates
that the disclosures identified by the government are not necessary to practice the claimed
process because any missing information is provided by the incorporation of the Larson-Miller
relationship.

        Finally, the government argues that the ’722 patent is not enabled based on the state of
the prior art. According to the government, because the concurrent application of heat and
vibration to relieve stress was well known prior to the inventor’s application for the ’722 patent,
“whatever novelty exists in the ’722 [p]atent inures from the method it describes for calculating
time and temperature values according to a L[arson]-M[iller] relationship.” Def.’s Mot. at 29.17
The government’s depiction of the prior art as it existed at the time of Ms. Walker’s application
is not persuasive insofar as enablement is concerned. While other patents in existence at the time
of the ’722 patent’s filing combined heat and vibration to alter residual stress, the ’722 process
was the first to use Larson-Miller relationships to select times and temperatures in concurrently
applying two energy sources to accelerate or enhance physical changes in certain materials. That
is the novelty of Ms. Walker’s invention. See Pls.’ Opp’n at 24.

       In sum, the court finds that the government has failed to demonstrate that Claims 1, 2, 6,
and 11 are not enabled by the disclosure of the ’722 patent.



        17
         The government identifies three patents, U.S. Patent No. 3,999,276; U.S. Patent No.
5,252,152; and U.S. Patent No. 6,223,974 in this regard. Def.’s Mot. at 30-31. These patents are
included in the list of references cited in the ’722 patent, and each of them combines vibrations
and heat to alter residual stress.


                                                  10
                                       C. The Validity of Claim 2

        The government also avers that Claim 2 of the ’722 patent is invalid under 35 U.S.C.
§ 112, Paragraph 4 (2006) because it does not specify a further limitation of the subject matter
disclosed in Claim 1, the independent claim upon which it depends. Def.’s Mot. at 36.18
Plaintiffs counter by noting that Claim 2 contains language referring to a “Larson[-]Miller
parameter” and a “second one” of a temperature setting or time value which are not mentioned in
Claim 1. Pls.’ Opp’n at 27.

       Although slightly different language appears in Claim 1, Claim 2 essentially restates a
process already addressed in Claim 1. Claim 2 reads:

       The method of claim 1, further comprising:

                 determining a first Larson Miller parameter according to the first
                 Larson Miller relationship, the first Larson Miller parameter
                 corresponding to the desired physical property value;

                 determining a second Larson Miller parameter according to the second
                 Larson Miller relationship, the second Larson Miller parameter
                 corresponding to the desired physical property value;

                 selecting a first one of the temperature selling and the time value;

                 selecting a second one of the temperature setting and the time value
                 according to the first and second Larson Miller parameters, according
                 to the first Larson Miller relationship, and according to the first one of
                 the temperature setting and the time value.

’722 Patent, col. 20, lines 17-32.

         Each of the limitations listed in Claim 2 are addressed in the independent claim. For
example, Claim 1 similarly requires selection of a temperature setting or time value “according
to a first order rate relationship for the first energy process, according to a first order rate
relationship for a second energy process, and according to a desired physical property value”

       18
            The cited portion of Section 112 states

                 [A] claim in dependent form shall contain a reference to a
                 claim previously set forth and then specify a further limitation
                 of the subject matter claimed. A claim in dependent form shall
                 be construed to incorporate by reference all the limitations of
                 the claim to which it refers.

35 U.S.C § 112, Paragraph 4 (2006).


                                                   11
and limits such first order rate relationships to Larson-Miller relationships. ’722 Patent, col. 19,
lines 48-51. In addition, instructions regarding the determination of the first and second Larson-
Miller parameters are outlined in the patent’s specification. Id., col. 13, line 50 to col. 16, line
31. Rather than specifying a further limitation beyond those incorporated in Claim 1, Claim 2
recites limitations already required by that claim. Accordingly, the court finds that Claim 2 is
invalid under 35 U.S.C. §112, Paragraph 4 (2006). See Pfizer, Inc. v. Ranbaxy Labs Ltd., 457
F.3d 1284, 1291-92 (Fed. Cir. 2006).

                                         CONCLUSION

        For the reasons stated, defendant’s motion for summary judgment of invalidity with
respect to Claims 1, 6, and 11 is DENIED. Defendant’s motion for summary judgment of
invalidity with respect to Claim 2 is GRANTED.

       It is so ORDERED.

                                                   s/ Charles F. Lettow
                                                   Charles F. Lettow
                                                   Judge




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