Claimed Narrow Range Must Be Shown To Be Critical To Operability Of Invention To Avoid Anticipation By Broader Range

Le-Nhung McLeland | April 27, 2015

Ineos USA LLC v. Berry Plastics Corp.

April 16, 2015

Before: Dyk, Moore and O’Malley. Opinion by Moore.

Background:  Appeal from U.S. District Court for Southern District of Texas which granted summary judgment that patent asserted by Ineos is invalid for anticipation.

Summary:

U.S. Patent No. 6,846,863 (the ‘863 patent) claims a polyethylene-based composition which can be used to form shaped products, in particular bottle caps.  The composition contains a lubricant to optimize the cap’s slip properties.  The ‘863 patent asserts that the composition does not impart a bad odor and flavor to food products stored in contact with the composition, which is an improvement over prior art polyethylene composition containing a lubricant.

Claim 1 is the only independent claim:

1.  Composition comprising at least

[1] 94.5% by weight of a polyethylene with a standard density of more than 940 kg/m3,

[2] 0.05 to 0.5% by weight of at least one saturated fatty acid amide represented by CH3(CH2)nCONH2 in which n ranges from 6 to 28[,]

[3] 0 to 0.15% by weight of a subsidiary lubricant selected from fatty acids, fatty acid esters, fatty acid salts, mono-unsaturated fatty acid amides, polyols containing at least 4 carbon atoms, mono or poly-alcohol monoethers, glycerol esters, paraffins, polysiloxanes, fluoropolymers and mixtures thereof, and

[4] 0 to 5% by weight of one or more additives selected from antioxidants, antacids, UV stabilizers, colorants and antistatic agents.  (emphasis added)

The CAFC opinion inserted the bracketed numbers into the claims to identify the components of the composition.  In addition to the base polyethylene (component 1), the only required component is the specifically defined saturated fatty acid amide (component 2, which serves as a primary lubricant.)

Claim 1 recites a range of 0.05 to 0.5% by weight for the lubricant.  Berry asserts that claim 1 is anticipated by U.S. Patent No. 5,948,846 (the ‘846 reference patent) which discloses a polyethylene based composition containing stearamide, a compound falling within the group of saturated fatty ester amide (2) recited in claim 1 of the ‘863 patent.  The broad range of 0.1 to 5 parts by weight disclosed in the ‘846 reference patent for component (2) overlaps with the relatively narrow range recited in claim 1 of the asserted patent, as shown below (not to scale):

 

 

 

The ‘846 reference patent also describes the amount of the lubricant as being “at least 0.1 part by weight per 100 parts of polyolefin, in particular of at least 0.2 parts by weight, quantities of at least 0.4 parts by weight being the most common ones”.

The district court found claim 1 and the dependent asserted claims to be anticipated by the ‘846 reference patent, and granted summary judgment for Berry Plastics.

Discussion:

The CAFC reviews the grant of summary judgment de novo, following the law of the Fifth Circuit. Ineos argued that the ‘846 reference patent does not disclose that the lubricant should be used in the range recited in claim 1, and contends that, at the very least, summary judgment should not have been granted in view of the testimony presented by Ineos that the ranges recited in the claims are critical.

The CAFC affirmed the grant of summary judgment. The opinion reviews the case law with regard to anticipation of a recited range as follows:

  • The range in a patent claim is anticipated by a prior art reference if the reference discloses a point within the range. Titanium Metals Corp. v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985).
  • If the prior art discloses its own range, rather than a specific point, then the prior art is anticipatory only if it “describes the claimed range with sufficient specificity such that a reasonable fact finder could conclude that there is no reasonable difference in how the invention operates over the ranges.”  Atofina, 441 F.3d at 999; Clear Value Inc. v. Pear River Polymers, Inc., 668 F.3d 1340, 1345 (Fed. Cir. 2012).

In this case the CAFC disagreed with the finding of the district court that the ‘846 reference patent discloses individual values, noting that the language “at least”, “does not exceed” and “maximum values” accompanying the recitation of a numerical value clearly pertained to ranges, as opposed to individual values.  Nevertheless the CAFC found summary judgment to be proper because “Ineos failed to raise a genuine question of fact about whether the range claimed is critical to the operability of the invention.”  Specifically, with respect to the slip properties of the bottle cap and its lack of odor or taste problems, “Ineos has not established that any of these properties would differ if the range from the prior art ‘846 patent is substituted for the range of limitation 2.”

Ineos had presented testimony by one of the inventors that the claimed range is critical to avoid unnecessary manufacturing costs and the appearance of undesirable blemishes on the bottle caps.  The CAFC faults this testimony because Ineos has not established any relationship between these advantages and the slip properties and odor/taste properties.  Therefore, Ineos has not set forth facts that raise a genuine issue of material fact about the criticality of the recited range for the primary lubricant.  “There is no evidence that the operability of the bottle caps would be improved by the claimed range.”

Takeaway:

  • In writing a patent application, an effort should be made to select a range for a component which corresponds to the actual limits of “operability” of the invention. At the very least, the application should disclose a preferred range (as opposed to a broader range) which corresponds to those actual limits of “operability”. The preferred range can provide a fallback limitation when and if the applicant/patentee is forced to prove that the range is critical to the “operability” of the invention.
  • The concept of “operability” is somewhat troublesome because its definition is not entirely clear in the context of proving the criticality of a claimed range to show lack of anticipation by the prior art.

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