Federal Circuit Affirms Anticipation Based On A Prior Art Genus And A Lack Of Criticality For The Claimed Subgenus

February 23, 2012 – Blog Post

On February 17, 2012, the Federal Circuit issued a precedential ruling in Clearvalue, Inc.. v Pearl River Polymers, Inc (2011-1078) that was an appeal from a jury verdict in an infringement suit in the District Court involving U.S. patent no. 6,120,690. While there were several issues, the issue of this article focuses on is the question of substantial evidence to support a JMOL that the claim, which recited in relevant part “raw alkalinity less than or equal to 50 ppm” in a process for clarifying water, not invalid based on a prior patent to Hassick (U.S. 4,800,039) that teaches in relevant part low alkalinity systems of 150 ppm or less?.

The jury in the District Court found that the ‘690 patent claims were not invalid and the District Court denied Pearl River’s JMOL of invalidity based on expert testimony of a “teaching away” proffered by an expert during trial. Judge Moore, who authored the decision, reversed the District Court’s denial for JMOL for two reasons.

First, Judge Moore opines that teaching away is a relevant inquiry in obviousness analysis but irrelevant for anticipation citing Celeritas Techs., Ltd v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (“whether a reference ‘teaches away’ from [an] invention is inapplicable to an anticipation analysis.”

Second, Judge Moore opines that ClearValue’s argument that Hassick’s 150 ppm or less is too broad to anticipate 50 ppm or less (ClearValue cited Atofina v. Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006) is misplaced. Judge Moore opines that, in contrast to the facts of Atofina where there was a criticality disclosed and argued during prosecution to the numerical range, ClearValue had no such criticality:

This case is not Atofina. 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. Nor does ClearValue 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. Hassick discloses the exact process claimed and explains that the chemical treatment can be used for clarification of water with 150 ppm or less. Hassick col.2 l.53-col.3 1.6. Moreover, Hassick gives examples, including one with water with “a total alkalinity of 60-70 ppm.” Id. col.4 l.40-col.51 .29. Certainly if this example had been at 50 ppm there would be no dispute but that Hassick anticipates. To be clear, 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 disclosure of 150 ppm or less is a genus disclosure as in Atofina. But 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. In fact, 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. Unlike Atofina, here there is no “considerable difference between the claimed range and the range in the prior art.” See 441 F.3d at 999. Hassick teaches one of ordinary skill to use a high molecular weight DADMAC in combination with ACH to synergistically clarify water with alkalinity of 150 ppm or less. Hassick col.2 l.53-col.3 1.6. Hassick thus teaches and enables each and every element of claim 1. For these reasons, we find that the jury lacked substantial evidence to find Hassick did not anticipate that claim 1. We thus reverse the district court’s denial of Pearl River’s JMOL of invalidity.