Royce C. Lamberth, Chief Judge.
Table saws can be dangerous. Fortunately, inventors have designed safety mechanisms capable of stopping a saw nearly instantaneously upon human contact. This case involves two rival designs for such a safety mechanism, both of which purport to stop the blade within 10 (or perhaps even 5) milliseconds of contact. The first was patented in 1974. The patent application for the second was filed in 2002 and was rejected.
SD3 filed the rejected application and now brings this action, pursuant to 35 U.S.C. § 145, to set aside the U.S. Patent and Trademark Office (“PTO”) Board of Patent Appeals and Interferences’s (“BPAI”) decision. Defendant Jon Dudas, the Director of the PTO (“the Director”), has moved for summary judgment. Def.’s Mot., ECF No. 7. Because SD3 may be able to carry its burden in showing that the earlier patent could not possibly perform what it claims, the motion for summary judgment is DENIED.
A. The “Friemann” Patent
United States Patent No. 3, 858, 095, issued in 1974, describes a design for a system to “provide a protective circuit arrangement suitable for a motor driven band cutter and which immediately stops the band cutter when it is touched.” U.S. Patent No. 3, 858, 095 col.1 ll.44–47. (The design was invented by Wolfgang Friemann and Josef Proschka, and will be referred to throughout as “the Friemann patent.”) The braking system outlined in the patent involves two subsystems: a motor brake and an electromechanical brake. Id. at col.1 ll.65–68. Friemann stated that “[e]xperiments have shown that with a protective circuit arrangement in accordance with the invention it is possible for a band cutter to be stopped in about 1/200th second [(5 milliseconds)]. . . .” Id. at col.2 ll.15. He further stated that the braking mechanism of his invention stops the band cutter in “less than 1/100th second [(10 milliseconds)].” Id. col.4 ll.5–6.
B. SD3’s Application
In 2002, SD3 filed a patent application for a safety system which “detects [contact] between a person and the cutting tool and then stops the cutting tool within 10 milliseconds to mitigate [any injury].” Def.’s Statement ¶ 2; Pl.’s Statement 3. Claim 1 of the SD3 application reads:
A machine comprising:
an operative structure adapted to perform a task, where the operative structure includes a mechanical cutting tool adapted to move in at least one motion;
a safety system adapted to detect the occurrence of an unsafe condition between a person and the cutting tool, where the safety system includes a detection subsystem adapted to detect the unsafe condition, and a reaction subsystem adapted to mitigate the unsafe condition;
where the reaction subsystem includes a brake mechanism adapted to stop at least one motion of the cutting tool within 10 milliseconds after detection of the unsafe condition.
Def.’s Statement ¶ 3; Pl.’s Statement 3. Claim 30 further limits the brake mechanism described in claim 1 to one that is “adapted to stop at least one motion of the cutting tool in less than 5 milliseconds.” Def.’s Statement ¶ 4; Pl.’s Statement 3.
C. Rejection of SD3’s Application
The Examiner rejected Claim 1 of SD3’s patent application as anticipated by the Friemann patent under 35 U.S.C. § 102, and Claim 30 as obvious over the same patent under 35 U.S.C. § 103. Ex Parte Stephen F. Gass, David A. Fanning, David J. Fulmer & David S. Dascenzo, APL 2007-4061, 2008 WL 2195265, *3–6 (B.P.A.I. May 27, 2008). SD3 appealed this rejection to the BPAI. Id. Its appeal pressed only a single issue: that the Friemann design did not “enable” the brake mechanism to stop a cutting tool in 10 milliseconds. Id. at 3. To show non-enablement of the Friemann patent (and thereby save its own application) SD3 presented declarations of its own inventor, Dr. Stephen F. Gass, and a Professor of Mechanical Engineering, Dr. David A. Turcic, stating that the Friemann design was physically incapable of performing what the patent claimed. Id.
The BPAI found SD3’s evidence “deficient as a matter of law for establishing non-enablement of Friemann.” Id. at *4. The BPAI credited Dr. Turcic’s expertise, but complained that his declaration relied on “significant assumptions and conjecture regarding the device of Friemann” and “focuse[d] on his own personal knowledge rather than the experimentation necessary for one of ordinary skill to make and use the invention the reference discloses.” Id.
First, the BPAI found that both declarations relied on an unjustified assumption about the nature of the relays used in making their calculation; both assumed that the system would use relatively slow “standard relays” when in fact quicker relays were available. Id. The BPAI rejected the declarants’ contention that these quicker relays were inappropriate for this system as there was “insufficient evidence in the record as to the state of the relay art, that such relays identified by the Examiner could not be used for the purposes of a braking system of Friemann.” Id.
Second, the BPAI found that both declarations relied on “a specific configuration of the motor and the brake in the analyses presented rather than focusing on the undue experimentation analysis required by the jurisprudence.” Id. at *5 Third, the BPAI suggested that Dr. Turcic’s analysis failed to evaluate the combination of the two systems—direct current (“DC”) braking of the motor and application of the electromechanical brake. Id.
Fourth, the BPAI found that Dr. Turcic failed to model “a DC motor that [has] sufficiently low rotational inertia to stop in 6 ms.” Id.
Fifth, the BPAI found that both declarations inappropriately relied on measurements inferred from drawings not drawn to scale. Id.
Sixth, the BPAI found that the declarations focused on electromagnetic brakes when in fact the disclosed electro-mechanical brake and “magnet brake” may not “refer exclusively to electromagnetic brakes.” Id.
Seventh, the BPAI found that the declarations mistakenly “assume[d] various characteristics of the pulleys [in the system] such as dimension, configuration, mass, etc., and assumes that there is no slippage between the band cutter and the guide rollers.” Id. at *6.
D. This Action
SD3 filed this action pursuant to 35 U.S.C. § 145, to set aside the BPAI’s rejection. It concedes that if the Friemann system “can, in fact, stop a blade within 10 milliseconds”—or, “using patent terminology, if the Friemann patent ‘enables’ such a machine”—then “the rejection of plaintiff’s patent application is correct.” Pl.’s Opp’n 2. To support its position that Friemann does not “enable” such a machine, SD3 provides updated declarations from Dr. Turcic and Dr. Gass, as well as a declaration from another mechanical engineer William Emery.
1. Dr. Gass’ Declaration
Dr. Gass holds several degrees, including a Ph.D. in physics from the University of California San Diego. Dr. Stephen Gass Decl. ¶ 2, ECF No. 10-3. He is the founder and manager of SD3, and the inventor of the new design at issue in this case. Id. ¶¶ 1, 5.
He states that “it is impossible for the motor brake and electromechanical brake disclosed in [the] Friemann [patent] to stop the blade” in 10 milliseconds because “[t]he mass and inertia of the motor and rollers . . . and the way motors and electromechanical brakes operate, make that impossible.” Id. ¶ 14. He purports to demonstrate the inadequacy of the motor brake by way of a mathematical calculation based on the speed of the blade according to Friemann, “conservative estimates” about the mass and radius of each roller, the number of rollers, and the strength of the motor. Id. ¶¶ 15–21. He concludes: “The electric motor and rotating rollers used in a band saw as disclosed by Friemann would have rotational inertia and energy that must be absorbed to stop the blade, and electric motors simply cannot provide sufficient braking torque to stop themselves and the rollers in [a 10 millisecond] time frame.” Id. ¶ 21. As to the electromechanical brake, he states that “[e]lectromechanical brakes able to provide stopping torque on the order ...