When a Genus Anticipates
Mar 14th, 2012 by Jon Schuchardt | Recent News & Articles |
ClearValue Inc. v. Pearl River Polymers Inc.
The Court of Appeals for the Federal Circuit recently ruled (ClearValue Inc. v. Pearl River Polymers Inc., Fed. Cir., No. 2011-1078, Feb. 17, 2012) that a genus anticipates a species, at least sometimes. We all learned once that disclosure of a species will anticipate a later-claimed genus. However, the converse is usually not true. In ClearValue, the Federal Circuit reversed a district court (Texas, E.D.) ruling and invalidated ClearValue’s patent claim. It held that a generic disclosure anticipates a species claim, even if the reference discloses no example within the claimed range, unless the patent owner can show that the clamed range is somehow “critical” or that the examples of the claimed range “work differently.”
ClearValue’s U.S. Pat. No. 6,120,690 claimed a “process for clarification of water of raw alkalinity less than or equal to 50 ppm by chemical treatment . . . .” The claimed process used a combination of a high molecular weight diallyl dimethyl ammonium chloride (“DADMAC”) and polyaluminum hydroxyl chloride (“ACH”). Pearl River allegedly infringed the ‘690 patent indirectly because it sold DADMAC to customers that used it with ACH to clarify water with alkalinity below 50 ppm.
In the district court contest, a jury ruled that Peal River infringed. Although Pearl River insisted that U.S. Pat. No. 4,800,039 (“Hassick”) anticipated the ‘690 patent, ClearValue’s expert satisfied a jury that Hassick actually “teaches away” from claim 1. In particular, the ClearValue expert opined that the skilled person would not have clarified water with ACH and DADMAC because Hassick showed that this combination does not work well.
The Federal Circuit panel reversed the district court and concluded that the lower court erred in applying an obviousness analysis to a case of anticipation. The panel agreed with Pearl River that Hassick, which taught to clarify water with an alkalinity of “150 ppm or less,” anticipated the later claim of “less than or equal to 50 ppm.”
ClearValue relied on Atofina v. Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006) for the idea that a broad genus does not anticipate a later-claimed species. In Atofina, the court held that disclosure of a broad temperature range (100oC to 500oC) in the prior art did not anticipate a narrower claimed range (330oC to 450oC). However, the Federal Circuit distinguished its holding in Atofina from the ClearValue facts. Atofina had argued and shown by examples that the narrower range claimed later was “critical” for operability, and that its process would not work outside the claimed range.
In contrast, ClearValue conceded that, except for the alkalinity numbers, Hassick taught all of the other elements of its claim 1. Moreover, the court explained, “ClearValue has not argued that the 50 ppm limitation in claim 1 is ‘critical,’ or that the claimed method works differently at different points within the prior art range of 150 ppm or less . . . Hassick discloses the exact process claimed and explains that the chemical treatment can be used for clarification of water with 150 ppm or less . . . Moreover, Hassick gives examples, including one with water with ‘a total alkalinity of 60-70 ppm.’”
Interestingly, the court further noted that “it is not this example at 60-70 ppm that anticipates because 60-70 ppm is not 50 ppm or less as the claim requires. But rather the disclosure that this chemical process works for systems with 150 ppm or less is what anticipates . . . the example in Hassick at 60-70 ppm supports the fact that the disclosure of 150 ppm or less does teach one of skill in the art how to make and use the process at 50 ppm. ”
The court’s decision in ClearValue seems justified, and the panel cogently explained why Atofina is distinguishable. However, as the court noted, ClearValue’s claim requires 50 ppm or less. What if Hassick had taught that its system worked for “500 ppm or less,” “0.5 wt.% or less,” or “5 wt.% or less”? Which of these disclosures, if any, would still anticipate the later claim of “50 ppm or less”? On these somewhat modified facts, would the outcome have been the same? When we apply the court’s logic, we must conclude that all of those disclosures “anticipate” unless the patentee could prove that the higher values are somehow inoperable.
The Federal Circuit panel criticized the district court for basing its decision on expert testimony about a “teaching away.” It seems apparent, however, that at the jury trial, the patentee had already overcome the anticipation hurdle based on the idea that “less than or equal to 50 ppm” is simply not identical to “less than 150 ppm.” The parties had effectively “moved on,” and the issue became whether it was obvious to claim “less than or equal to 50 ppm” given the largely overlapping range of “less than 150 ppm.” In that context, it would have made sense to entertain expert testimony regarding whether or not the reference “taught away” from the claimed invention.
And what weight should we afford Hassick’s example at 60-70 ppm alkalinity (Table 1, Exs. 15-17)? The court dangled that tantalizing morsel before our eyes, but then admonished that its decision did not depend on it. (Perhaps the court sensed a trap; after all, ClearValue’s claim requires 50 ppm or less.) Would the outcome have been the same if the only examples in Hassick were the ones at 150 ppm alkalinity (see Exs. 59-64, Table 2)? What if there were no examples, but only a one sentence disclosure like the one at col. 3, ll. 2-6 of Hassick?
The bright line between anticipation and obviousness is a bit blurrier after ClearValue. It will be interesting to see how the Federal Circuit decision is interpreted when courts apply it to fact patterns that are somewhat more compelling for the patentee. Stay tuned!
— Jon Schuchardt
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