dissenting.
Because I believe the district court abused its discretion in granting a new trial on the validity issues because it thought that alleged attorney misconduct prejudiced the verdict, and that the verdict was against the weight of the evidence, I dissent. I would sustain the jury’s findings that U.S. Patent Nos. 4,908,343 and 5,057,481, the salt patents, are invalid for lack of enablement.
I
Shell’s statements at trial do not suggest that it was reasonably probable that the verdict was adversely influenced. The district court was attentive to the possibility of prejudice and kept tight control over courtroom proceedings. She barred any reference to prior litigation in which Union Carbide had entered into a consent decree acknowledging that some of its catalysts infringed certain Shell patents. The district court summarized Shell’s primary comments as (1) “bad act copying” allegations supported by the prior litigation made during opening statements, which were offset by Union Carbide’s allegations that Shell illegally took Union Carbide’s invention without permission; (2) two references to the prior litigation made on the fifth and tenth days of trial respectively for which Union Carbide’s objections were sustained; and (3) two “copying” comments made during closing arguments with respect to prior invention, which the court had deemed appropriate. Union Carbide Chems. v. Shell Oil Co., 163 F.Supp.2d 426, 458-64 (D.Del.2001).
These instances over the course of a twelve-day trial may have been improper, but their cumulation could not reasonably have resulted in a prejudiced determination of invalidity and they do not approach the level of conduct required by Third Circuit precedent for a new trial. See Fineman v. Armstrong World Indus., 980 F.2d 171, 206-07 (3d Cir.1992) (affirming the grant of a new trial when plaintiffs counsel during summation remarked on his own truthfulness and trustworthiness, referred to facts not in evidence, accused the defense’s witnesses of being liars and perjurers, and made disparaging attacks on defense counsel); Draper v. Airco, Inc., 580 F.2d 91, 95 (3d Cir.1978) (finding a new trial appropriate when plaintiffs counsel during closing argument made repeated inappropriate remarks about the defendant’s wealth, inserted his personal opinion, referred to facts not in evidence, and made vituperative and insulting references to defendant’s counsel). Moreover, sustaining invalid patents is an inappropriate cure for alleged attorney misconduct.
II
I would uphold the jury’s finding of invalidity of the salt patents for lack of enablement as supported by substantial evidence. A court’s determination of en-ablement is a question of law that we review de novo, but based upon factual findings that we review for substantial evidence. Bio-Tech. Gen. Corp. v. Genentech, Inc., 267 F.3d 1325, 1329, 60 USPQ2d 1430, 1433 (Fed.Cir.2001). We must determine whether substantial evidence presented at the trial supports the jury’s verdict. Id. An enabling specification must *1192teach one of skill in the art how “to make and use the full scope of the claimed invention without ‘undue experimentation.’ ” Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365, 42 USPQ2d 1001, 1004 (Fed.Cir.1997) (quoting In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed.Cir.1993)) (emphasis added).
In this case, both salt patents claim an extremely large breadth of combinations and permutations of materials. The '343 patent, in claim 1, claims a catalyst containing “an efficiency-enhancing amount ... of a mixture of (i) a cesium salt of an oxyanion of an element selected from Groups 3 through [sic] 7b inclusive of the Periodic Table of the Elements, and (ii) at least one of an alkali metal salt of lithium, sodium, potassium, and rubidium and an alkaline earth metal salt .... ” The '481 patent, in claim 1, claims a catalyst containing “an efficiency-enhancing amount ... of a mixture of cesium salts, at least one of which is a cesium salt in which the anion thereof is an oxyanion of an element having the atomic number of 21 to 75 and being from groups 3b through 7b inclusive, of the Periodic Table of the Elements.”
The full scope of the claimed mixtures is not enabled by the specifications. See In re Fisher, 57 C.C.P.A. 1099, 427 F.2d 833, 839, 166 U.S.P.Q. 18, 24 (1970) (“[T]he scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification to persons of ordinary skill in the art.”). The patents’ specifications list examples of combinations of the claimed elements that result in efficiency enhancing catalysts. And by using these select examples, one of skill in the art may generate efficiency enhancing catalysts.* The claims, however, are not limited to these examples and many claimed combinations do not result in efficiency enhancing agents. Contrary to the court’s misreading of the record, Dr. Conn, one of Shell’s expert witnesses, testified that Union Carbide’s laboratory notebooks contain “hundreds and hundreds of examples of catalysts prepared using those components that were not efficiency enhancing.”
This court affirms the trial court’s decision to overturn the jury verdict of nonen-ablement by casually dismissing evidence of these nonefficiency enhancing combinations as general and vague and declining to decide whether such evidence is material. But it is error to exclude from the enablement analysis the excessive amount of experimentation that is required to find the right mixture of listed claim limitations, from a major portion of the usable Periodic Table, to produce the efficiency enhancing effect. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 336 U.S. 271, 276, 69 S.Ct. 535, 93 L.Ed. 672 (1949) (reinstating a district court decision finding patent claims invalid for being too broad and comprehending more than the invention when the claims contained the term “metallic silicates” and the specification contained only nine metallic silicates which had been proven operative); Durel Corp. v. Osram Sylvania Inc., 256 F.3d 1298, 1306-07, 59 USPQ2d 1238, 1244 (Fed.Cir.2001) (“If Sylvania had shown that a significant percentage of oxide coatings within the scope of the claims were not enabled, that might have been sufficient to prove invalidity.”); Atlas Powder Co. v. E.I. duPont de Nemours & Co., 750 F.2d 1569, 1576-77, 224 USPQ 409, 414 (Fed.Cir.1984) (“Even if some of the claimed combinations were *1193inoperative, the claims are not necessarily invalid.... [I]f the number of inoperative combinations becomes significant, and in effect forces one of ordinary skill in the art to experiment unduly in order to practice the claimed invention, the claims might indeed be invalid.”). Union Carbide’s notebooks, which listed hundreds of ineffective catalysts, demonstrate that to generate an efficiency enhancing catalyst under the salt patents requires one of ordinary skill in the art to conduct undue experimentation. The evidence presented at trial leads to but one conclusion, that the jury correctly decided that the salt patents are not enabled. The district court’s action in countermanding the jury contravened Graver Tank, 336 U.S. at 277, 69 S.Ct. 535 (Claims are not to be saved when they overclaim an invention, even if the specification is less inclusive than the claims.).
The trial court improperly overturned the jury's verdict on this basis. Union Carbide, 163 F.Supp.2d at 445. To do so, it misconstrued Shell's expert's statement that the '481 patent taught one of skill in the art to make several cesium-containing catalysts as an admission that the patent was enabled, i.e., that it enabled all the listed possible cesium combinations. Id.