anticipation : CAFC Alert

Back to Basics: In re Chudik offers a refresher on the law of anticipation for functional limitations

Cindy Chen | April 17, 2017

In re Chudik

March 27, 2017

Before Dyk, Reyna, and Stoll. Opinion by Reyna.

Summary

This decision is a refresher on the basic law of anticipation for functional claim elements. A prior art does not anticipate a functional claim element merely because it is “capable of” performing the recited function, but rather, such capability must be achieved without “distortion” or “modification” to the prior art.


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Evidence showing conversion of units to find anticipation

Yoshiya Nakamura | December 9, 2016

REG Synthetic Fuels, LLC. v. Neste Oil Oyj

November 8, 2016

Before Prost, Taranto and Chen.  Opinion by Chen.

Summary

REG Synthetic Fuels, LLC (REG) owns U.S. Patent No. 8,231,804 (’804 patent).  Neste Oil Oyj (Neste) requested inter partes review against claims 1–5 and 8 of the ’804 patent, which were directed to a composition comprising paraffins (hydrocarbons) useful as heat-insulation material in a house.  PTAB found that claim 1 was anticipated by cited references including Craig.  CAFC affirmed.  The key feature of claim 1 was the limitation: “comprising at least 75 wt% (weight percent) even-carbon-number paraffins.”  Craig disclosed the production of hydrocarbon compositions and the hydrocarbon amounts therein defined by a different unit, “peak area percentages” measured by a mass spectral analysis.  Neste relied upon their expert’s calculation using three different conversion factors to calculate corresponding wt.% from the peak area %.  CAFC held that Neste’s expert’s calculation established by a preponderance of evidence that the claimed composition read on the prior art compositions.

Details

Claim 1 representative of the ’804 patent:

  1.  A phase change material composition comprising at least 75 wt% even carbon number paraffins, wherein the paraffins are produced by hydrogenation/ hydrogenolysis of naturally occurring fatty acids and esters.

A key feature in claim 1 was the limitation with “at least 75 wt% even carbon number paraffins,” as CAFC agreed with the PTO’s interpretation that the preamble part (the phase change material) and the wherein-clause (the product-by-process limitation) are not limiting.  The main issue in this appeal was whether Craig taught the limitation of “at least 75 wt% even carbon number paraffins.”

Craig disclosed hydrocarbon products obtained from naturally occurring feedstocks, and the results of quantitative analysis of the products.  The critical disclosure was Table 9 (reproduced below in part).  The table showed “peak area percentages” of each even-carbon-number paraffin such as C16, C18, or C20 in the hydrocarbon products.  However, Craig did not disclose corresponding weight percentages.  Nor did it disclose how to calculate weight percentages from weight percentages.

 

 

 

 

As evidence, Neste’s expert (Dr. Klein) submitted data showing conversion of peak area percentages to weight percentages.  As shown in Table 2 (reproduced from the opinion), the peak area percentages of each hydrocarbon were calculated using three relative response factors, i.e., “Hsu,” “Gorocs,” and “Chaurasia.”

REG argued that the conversion of peak area percentages into weight percentages is “not straightforward” and Craig did “not provide enough information to accurately convert the GC-MS peak area percentages to weight percentages using relative response factors.”  However, REG’s expert (Dr. Lamb) agreed that the peak area percentages could be converted to weight percentages by using relative response factors, and other references cited in Dr. Lamb’s opinion in fact disclosed two of the factors (Gorocs and Chaurasia).

table-2

 

 

 

 

 

 

REG’s arguments relied mostly upon the complex nature of the biological feedstocks and their own expert’s opinion that the resulting product is a very complex mixture which affects the phase change characteristic.  REG argued that Craig disclosed a distillation process to separate the obtained mixture into fractions and such additional process would result in “structural and functional differences in the products.”  However, REG did not submit any evidence or data showing the asserted differences.  PTAB rejected the REG’s arguments because there was no credible evidence or disclosure in the specification supporting their arguments.  Particularly, as noted by PTAB, claim 1 did not exclude distilled products.

Turning to the issue as to whether the peak area percentages disclosed in Craig read on the claimed weight percentages, CAFC noted, as PTAB held, that claim 1 was anticipated since “a person of ordinary skill in the art could readily convert the disclosed peak area percentages into their corresponding weight percentages, and the sum of the converted peak area percentages of Craig met the claim requirement that the overall weight percentage of even-carbon-number paraffins be at least 75 wt%.”  It was specifically noted that each of the calculated weight percentages for “Canola Premium” met the claimed range and “82.31 wt%” was “more than 7% higher than” the claimed l limit, 75 wt%.

CAFC agreed with the PTAB’s view that “it unlikely that any correction required by the experimental conditions would result in a weight percentage of less than the 75 wt%” because Table 2 showed that the different weight percentages obtained by using the different relative response factors “were very small.”

CAFC added that “this is not an inherency issue, however, because the challenged limitation is not missing from Craig” as Neste’s expert “simply converted one unit of measurement (area percent) into another unit of measurement (weight percent) by using relative response factors from the prior art.”

Take Away

According to this decision, conversion of units or parameters one another is not an inherency issue, but all about evidence.  This is one example showing that IPRs help the Patent Office find better interpretation of prior art, which may not easily be examined without expert’s opinions from each party.  In addition, the preponderance of evidence standard is available to fill a gap between cited prior art and patented claims in IPRs.  Good reasons to use IPRs.

Full Opinion

The USPTO Appeals Board Must Adequately Explain Its Reasoning

Bill Schertler | August 27, 2015

Power Integrations v. Lee

August 12, 2015

Before: Moore, Mayer, Linn, opinion by Mayer

Summary

Power Integrations challenged a decision of the Board of Patent Appeals and Interferences (“board”) affirming the rejection of claims 1, 17, 18 and 19 of US Patent No. 6,249,876 (the ‘876 patent) as anticipated under 35 U.S.C. §102(b). The board’s construction of the claim term “coupled” was not adequately explained. The court vacated and remanded the board’s decision, holding only that the board on remand should carefully and fully assess whether the disputed claims of the ’876 patent are anticipated by the prior art, setting out its reasoning in sufficient detail to permit meaningful appellate review.


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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.


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The act of contemplation then creates the thing created (Isaac D’Israeli).

Adele Critchley | April 21, 2015

Kennametal, Inc., v. Ingersoll Cutting Tool Company.

March 25, 2015

Before: Newman and Linn. Opinion by Linn.

Summary:

The CAFC affirmed the decision of the Patent Trial and Appeal Board (the “Board”) in an inter partes reexamination of U.S. Patent No. 7,244,519 (the ‘519 Patent) in which the Board (i) entered a new anticipation ground of rejection asserted by Ingersoll over US. Patent No. 6,554,548 (Grab); and (ii) affirmed the Examiner’s obviousness rejection.

The CAFC held that “contemplation” of a method in a prior art reference is sufficient disclosure for a rejection under §102. The CAFC further held that a finite number of solutions were present in Grab for the specific claimed combination, and that the motivation to select the specific combination was not undermined by the known problem of cobalt capping.


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Public use bar inappropriate when participants in clinical trials do not discern specifics of new product

Sung-Hoon Kim | May 22, 2013

Dey, L.P. v. Sunovion Pharmaceuticals, Inc.

May 20, 2013

Panel:  Bryson, O’Malley, and Newman.  Opinion by Bryson.  Dissent by Newman.

Summary:

The Federal Circuit reversed and remanded the holding of the District Court that some of Dey’s patents were invalid because a Sunovion’s clinical trial, where Sunovion tested its own product, constituted an invalidating public use.  The Federal Circuit determined that although some of test samples were lost and clinical trial was not perfectly confidential, Sunovion’s clinical trial is not an invalidating public use as long as participants do not recognize the specifics of a new drug.

연방지방법원 뉴욕 남부지원(U.S. District Court for the Southern District of New York)은 Sunovion의 임상실험 (clinical trial)이 공용 (public use)에 해당된다고 판단하여, Dey의 특허가 무효 (invalid)라도 판결하였다.

이에 불복하여, 원고는 연방항소법원 (U.S. Court of Appeals for the Federal Circuit)에 상고 (appeal)하였다.  연방항소법원은 임상실험 도중 test sample이 분실되었거나 임상실험이 완벽히 비공개로 진행되지 않았더라도 실험참가자가 신약에 대한 자세한 정보를 모른다면Sunovion의 임상실험은 공용에 해당되지 않는다고 판결하였다.


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Prior Art Reference Must Disclose Arrangement of Elements, Not Merely Each Discrete Element

Thomas Brown | March 20, 2013

SynQor, Inc., v. Artesyn Technologies, Inc., et al.

March 13, 2013

Panel:  Rader, Lourie and Daniel (Chief District Judge).  Opinion by Rader.

Summary

SynQor sued Artesyn Technologies, Inc., and eight other power converter manufactures (Defendants) for infringement of five of SynQor’s U.S. Patents in the United States District Court (“DC”) for the Eastern District of Texas.  The DC granted partial summary judgment of infringement of against the Defendants.  The DC denied Defendants’ motion for judgment as a matter of law (JMOL) or a new trial after the jury found all asserted claims infringed, not invalid, and awarded lost-profits of $95 million.  On appeal, the CAFC affirmed the DC based on a review of the record evidence.


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Board Should Consider Appellee’s Grounds For Affirming Rejection Presented To Examiner During Reexamination, Even If Grounds Had Not Been Raised On Appeal

Bill Schertler | February 6, 2013

Rexnord Industries v. Kappos

January 23, 2013

Panel:  Newman, Lourie, Prost.  Opinion by Newman.

Summary:

In 2003 Habasit filed an infringement suit against Rexnord in the United States District Court for the District of Delaware for infringement of its U.S. Patent No. 6,523,680 (the ’680 patent).  Rexnord then requested inter partes reexamination of the ’680 patent, and the district court stayed the infringement suit pending completion of reexamination.

On reexamination, the examiner held all of the claims in the ’680 patent unpatentable for anticipation and obviousness.  Habasit appealed the examiner’s decision to the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board).  On appeal, the Board reversed the examiner’s decision and held the claims patentable.

Rexnord appealed to the CAFC.  The CAFC affirmed that the claims are not anticipated, and reversed the Board’s determination that the claimed invention is not obvious in view of certain prior art.


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Prior art can show what the claims would mean to those skilled in the art

Sung-Hoon Kim | December 5, 2012

ArcelorMittal v. AK Steel Corp.

November 30, 2012

Panel: Dyk, Clevenger, and Wallach.  Opinion by Dyk.

Summary:

The U.S. District Court for the District of Delaware held that defendants AK Steel did not infringe plaintiffs ArcelorMittal’s U.S. Patent No. 6,296,805 (the ‘805 patent), and that the asserted claims were invalid as anticipated and obvious based on a jury verdict.

ArcelorMittal appealed the district court’s decision.  On appeal, the CAFC upheld the district court’s claim construction in part and reverse it in part.  With regard to anticipation, the CAFC reversed the jury’s verdict of anticipation.  With regard to obviousness, the CAFC held that a new trial is required because the district court’s claim construction error prevented the jury from properly considering ArcelorMittal’s evidence of commercial success.

미국 델라웨어주 연방지방법원 (U.S. District Court for the District of Delaware)은 원고 (ArcelorMittal)가 피고 (AK Steel)를 상대로 낸 특허 침해 소송에서 원고의 특허 (U.S. Patent No. 6,296,805)가 예견가능성 (anticipation) 및 자명성 (obviousness) 기준을 통과하지 못하였다는 배심원의 판단을 바탕으로 피고가 원고의 특허를 침해하지 않았다고 판결하였다.

이에 불복하여 원고는 연방항소법원 (U.S. Court of Appeals for the Federal Circuit)에서 상고 (appeal) 하였으며, 연방항소법원은 지방법원의 청구항 해석 (claim construction)에 대해 일정 부분은 확인하였으나, 나머지 부분은 번복하였다.

예견가능성과 관련하여 연방항소법원은 배심원의 예견가능성 판단과 다른 결정을 내렸다.

자명성과 관련해서는 연방지방법원의 잘못된 청구항 해석으로 인하여 배심원이 원고의 상업적 성공 (commercial success) 증거를 고려하지 않았기때문에 재심 (new trial)이 필요하다고 판결하였다.


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Like prior art patents, potentially anticipatory non-patent printed publications are presumed to be enabling

Cindy Chen | October 5, 2012

In re Antor Media Corporation

July 27, 2012

Panel: Rader, Lourie and Bryson. Opinion by Lourie.

Summary

Antor Media Corp. appeals from the decision of the Board of Patent Appeals and Interferences rejecting on reexamination the claims of its patent as anticipated and obvious over four prior art references.  The prior art references include three printed publications and one U.S. patent.  The Board found that two of the printed publications anticipated the claims in Antor’s patent. Here, Antor argues that since the printed publications are not enabling, they could not have anticipated the claims. Antor further argues that unlike prior art patents, prior art printed publications are not presumptively enabling.  The principal issue on appeal is therefore whether the presumption that prior art patents are enabling can be logically extended to printed publications. The Federal Circuit answers that it can, holding that a prior art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent applicant or patentee.


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