Federal Circuit Holds that a Standalone Reference Fails to Render Claims Obvious Due to Lack of Enablement

In Raytheon Technologies Corp. v. General Electric Co., No. 2020-1755 (Fed. Cir. Apr. 16, 2021), the Federal Circuit reversed an IPR decision by the PTAB and held that two claims of a Raytheon patent were not obvious over a single reference because it was not self-enabled.  The Federal Circuit agreed with Raytheon that the PTAB legally erred in finding the reference enabling because the PTAB focused only on whether the requirements of the claims directed to a gas turbine engine could be calculated rather than also considering whether the reference was sufficient to enable a skilled artisan to make the claimed invention.  The Federal Circuit reasoned that because GE, the challenger, relied solely on the single reference for enablement, and its expert only simulated the reference’s turbine engine without any showing of how the reference could be used to build a physical working engine, Raytheon’s unrebutted evidence showing the reference was not enabling was persuasive. 

The opinion is located here.