## Facts

- Cedarapids owned U.S. Patent No. 4,697,745, directed to increasing rock-crusher output without enlarging the crushing chamber by increasing both crusher “speed” and “throw.”
- The specification provided quantitative guidance and examples tied to a seven-foot cone crusher, including approximate ranges for increased throw and increased speed relative to standard settings.
- The patent did not provide specific numerical ranges or formulas for other crusher sizes, raising whether skilled engineers could apply the disclosure to different sizes without undue experimentation.
- Cedarapids accused Nordberg’s high-performance cone crushers of infringing by using the claimed combination of increased throw and speed.
- Nordberg denied infringement and asserted invalidity defenses, including lack of enablement and indefiniteness under 35 U.S.C. § 112 and prior-art invalidity theories.
- The district court granted summary judgment of invalidity for lack of enablement, reasoning that disclosure limited to a seven-foot example did not enable the full claim scope covering other crusher sizes.

## Issues

1. Whether the patent enabled a person of ordinary skill in the art to make and use the claimed invention across its full scope, including crushers of different sizes, without undue experimentation under 35 U.S.C. § 112.
2. Whether summary judgment of non-enablement was proper given disputed expert testimony about predictability, the amount of experimentation required, and the ability to extrapolate from the seven-foot example.
3. What effect reversal of the enablement ruling would have on remaining validity and infringement matters addressed or mooted below.

## Decision

- The Federal Circuit reversed the summary judgment of invalidity for lack of enablement and remanded for further proceedings.
- The court held that the district court applied an overly rigid approach and did not properly assess whether practicing the full scope would require undue experimentation in this mechanical field.
- The court concluded that the summary-judgment record presented genuine disputes of material fact on enablement, making summary judgment improper.
- Because the non-enablement ruling was the foundation for the invalidity judgment, the case was returned for reconsideration of validity defenses and infringement issues consistent with the correct enablement analysis.

## Legal Principles

- Enablement under 35 U.S.C. § 112 is a legal conclusion resting on underlying factual determinations, including the nature of the invention, the state of the prior art, the level of skill, the predictability of the art, claim breadth, and the quantity of experimentation required.
- The proper question is whether the disclosure permits a skilled artisan to practice the full claimed scope without undue experimentation; there is no per se rule requiring numerical examples for every embodiment.
- “Undue experimentation” is fact-intensive and commonly assessed using factors associated with *In re Wands*, including guidance in the specification, presence of working examples, predictability, and claim breadth.
- Enablement analysis is context-dependent; in predictable mechanical arts, a representative example plus engineering guidance may enable broader claims if routine scaling and adjustment are within ordinary skill.
- Summary judgment on enablement is generally inappropriate when expert testimony creates material factual disputes about required experimentation and the ability to extrapolate from disclosed embodiments.

## Conclusion

The Federal Circuit held that the record did not establish non-enablement as a matter of law and that factual disputes about undue experimentation and predictability in the mechanical field required remand for further proceedings on validity and infringement.


Cedarapids, Inc. v. Nordberg, Inc., 121 F.3d 727 (Fed. Cir. 1997)