Lack of demonstrated criticality of narrowly claimed range fails to overcome anticipation rejection based on broadly disclosed prior art range

Ken Salen | February 22, 2012

ClearValue, Inc. v. Pearl River Polymers, Inc.

February 17, 2012

Panel:  Prost, Schall and Moore.  Opinion by Moore.

Summary

ClearValue accused Pearl River of infringing U.S. Patent No. 6,120,690 (’690 patent).  The jury found that the ’690 patent was valid and indirectly infringed.  The 5th Circuit District court denied Pearl River’s subsequent motions for judgment as a matter of law (JMOL) of invalidity and noninfringement of the ‘690 patent. Pearl River appealed the district court’s denial of its motions for JMOL.  Holding that the jury’s verdict was not supported by substantial evidence, the CAFC reversed the denial of the motion for JMOL of invalidity (i.e., the CAFC held the patent-in-suit invalid), concluding that a prior art limitation of “less than 150 ppm” anticipates a claimed range of “less than or equal to 50” unless criticality of the narrowly claimed range is demonstrated.

Details

ClearValue alleged that Pearl River indirectly infringed claim 1 of the ‘690 patent by selling high molecular weight quaternized polymers (DADMAC) that its customers used in combination with aluminum polymers to clarify water with alkalinity below 50 ppm.

 The ’690 patent is directed to a process for clarifying low alkalinity water using a blend of DADMAC and an aluminum polymer.

Claim 1, the only claim at issue on appeal, recites:

A process for clarification of water of raw alkalinity less than or equal to 50 ppm by chemical treatment, said process comprising:

adding to the water and, prior to or after adding to the water, blending at least one aluminum polymer with a high molecular weight quaternized ammonium polymer in an amount sufficient to form a flocculated suspension in the water and to remove turbidity from the water, said high molecular weight quaternized ammonium polymer comprising at least an effective amount of

high molecular weight DADMAC having a molecular weight of at least approximately 1,000,000 to approximately 3,000,000 and

said aluminum polymer including at least an effective amount of poly-aluminum hydroxychloride [ACH] of a basicity equal to or greater than 50%.

(emphasis added).

A jury found Pearl River liable for both induced and contributory infringement of claim 1, and on appeal the district court denied Pearl River’s JMOL of invalidity and noninfringement. Pearl River filed a motion for JMOL of invalidity, in which it argued that the ’690 patent was anticipated by U.S. Patent No. 4,800,039 (“Hassick”).

Hassick teaches that a combination of high molecular weight DADMAC polymer with ACH “synergistically reduce[s] turbidity in aqueous systems, particularly low-turbidity… low-alkalinity systems (i.e., 150 ppm or less).” Further, Example 15 of Hassick teaches using a blend of ACH and DADMAC with a molecular weight between 1-2 million to clarify water with alkalinity of between 60-70 ppm.

The district court denied Pearl River’s motion for JMOL of invalidity and noninfringement because it concluded that Hassick “‘teaches away’ from the ’690 patent.” The court relied on testimony by ClearValue’s expert that it would not have been obvious to one of ordinary skill to clarify water using ACH with high molecular weight DADMAC because Hassick shows this combination does not work well. The district court held that this “teaching away” was sufficient evidence to support the jury’s finding of no anticipation or obviousness based on Hassick.

The CAFC noted that although “teaching away” would be relevant to an obviousness analysis, “whether a reference ‘teaches away’ from [an] invention is inapplicable to an anticipation analysis.” The district court thus erred by holding that this testimony was substantial evidence supporting the jury’s verdict of no anticipation.

Pearl River argued that the jury’s verdict was not supported by substantial evidence because Hassick teaches every limitation of claim 1 of the ’690 patent, including “A process for clarification of water of raw alkalinity less than or equal to 50 ppm…”. The CAFC agreed.

ClearValue conceded that Hassick teaches every limitation of claim 1, however, ClearValue argued that Hassick’s disclosure of clarifying water with alkalinity of “150 ppm or less” was too broad to anticipate the 50 ppm limitation of claim 1. In support of its argument, ClearValue cited Atofina v. Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006), discussed in the U.S. Manual of Patent Examining Procedure (MPEP) §2131.03:

PRIOR ART WHICH TEACHES A RANGE OVERLAPPING OR TOUCHING THE CLAIMED RANGE ANTICIPATES IF THE PRIOR ART RANGE DISCLOSES THE CLAIMED RANGE WITH “SUFFICIENT SPECIFICITY”

If the claims are directed to a narrow range, and the reference teaches a broad range, depending on the other facts of the case, it may be reasonable to conclude that the narrow range is not disclosed with “sufficient specificity” to constitute an anticipation of the claims. MPEP §2131.03(II)

The patent in Atofina claimed a method of synthesizing difluoromethane at a temperature between 330-450 °C, where the prior art disclosed a process in a broad range of 100-500 °C. The patent stated that “only a narrow temperature range enables” the process to operate as claimed, and that problems occur when operating the reaction either below 330 °C or above 400 °C. During the prosecution of the Atofina patent, Atofina also noted during prosecution that the patent’s comparative example 1 “shows that a temperature of 300 °C does not allow” the synthesis reaction to operate as claimed.

The court in Atofina held that the “considerable difference between the claimed [temperature] range and the range in the prior art” precluded a finding of anticipation, explaining that the prior art’s teaching of a broad genus does not disclose every species within that genus. In Atofina, the evidence showed that one of ordinary skill would have expected the synthesis process to operate differently outside the claimed temperature range, which the patentee described as “critical” to enable the process to operate effectively. Based on this “considerable difference” between the prior art’s broad disclosure and the “critical” temperature range claimed in the patent, the court held that “no reasonable fact finder could conclude that the prior art describes the claimed range with sufficient specificity to anticipate this limitation of the claim.”

In the present case, the CAFC held that ClearValue’s reliance on Atofina was misplaced. Stating emphatically that “[t]his case is not Atofina”, the CAFC noted that ClearValue did not argue that the 50 ppm limitation is “critical,” or that the claimed method works differently at different points within the disclosed prior art range of 150 ppm or less. The conclusion was that the narrower claimed range was in fact anticipated by the broader prior art range.

The CAFC also noted that ClearValue also failed to argue that the Hassick reference fails to teach one of ordinary skill in the art how to use the claimed invention, i.e., that Hassick is not enabled to the extent required to practice claim 1 of the ’690 patent.

The CAFC noted that Hassick explains that its chemical treatment can be used for clarification of water with 150 ppm or less alkalinity, and specifically noted Hassick’s example of use with water having with “a total alkalinity of 60-70 ppm.”

The CAFC explained that, unlike Atofina where there was a broad genus and evidence that different portions of the broad range would work differently, here, there is no allegation of criticality or any evidence demonstrating any difference across the range. The CAFC clarified that the example in Hassick at 60-70 ppm supports the fact that the disclosure of “150 ppm or less” teaches one of skill in the art how to make and use the process at 50 ppm. The CAFC conclusion was that, unlike Atofina, there was no “considerable difference between the claimed range and the range in the prior art” demonstrated.

Prosecution Tips

Generally speaking, this CAFC decision teaches that in order to argue against anticipation of a narrow range when a prior art reference teaches a broader range, the Applicant must clearly consider, demonstrate and assert the criticality of the claimed range.

Applicant should further consider submitting evidence that the prior art is not enabled for the claimed range, and thus is not read upon by the narrower claimed range.

(Of course, this is limited to anticipation rejections, and does not address the obviousness rejection likely to be asserted against claimed range.)

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