Anticipation no longer the epitome of obviousness? Claims can be anticipated but nonobvious

October 16, 2008
Post by Blog Staff

The Federal Circuit recently affirmed a district court's finding of non-willful infringement for one product, reversed its claim construction and related finding of noninfringement of a second product, and vacated its judgment as a matter of law on the issue of anticipation. The district court, at the charge conference near the end of the jury trial in this case, decided not to instruct the jury on anticipation, holding the defendant's anticipation argument was "iffy," and that the arguments were "best captured by obviousness."

The Federal Circuit held this determination was in error. As stated by the court, "[a]n 'iffy' anticipation case, however, does not foreclose a favorable verdict." Further, the court noted it is the party's right to make the strategic decision about which defenses to present to the jury, so long as there is sufficient evidence to generate a verdict in the party's favor. The court rejected the contention that every anticipated claim is also obvious, and as a result of the lack of complete overlap between the defenses, remanded the case for a determination of whether the claims were anticipated.

Judge Mayer dissented on this issue. In his opinion, the majority's conclusion regarding the overlap of anticipation and obviousness is incorrect. He attacked the majority's citations as "unsupportable," observing the majority was "unable to cite a case remanding to the district court for consideration of anticipation, while at the same time sustaining a determination that the claims at issue are not obvious."

Cohesive Technologies sued Waters Corporation for infringing its 5,772,874 and 5,919,368 patents, both directed to high-performance liquid chromatography (HPLC). HPLC technology separates, identifies, and measures compounds contained in a liquid by determining the rate at which compounds pass through a packed column of particles under pressure. A column of "chromotographically active particles" is provided, the particles having affinities for a variety of molecular components. The liquid to be tested is positioned above the column and then pressurized. As the liquid is passed through the column, various compounds in the liquid are attracted to the "chromotographically active particles" for various periods of time. Eventually the compounds release and are deposited into a recepticle. The time it takes for each compound to pass through the column is compared to known values and the properties of the compounds can be determined.Cohesive alleged infringement by Waters of each of its patents by Waters' 30µm and 25µm columns. Waters counterclaimed that the asserted claims were invalid as anticipated, obvious, and unenforceable due to inequitable conduct.

The effectiveness of HPLC is based on several variables, including the size and structure of particles in the column. Cohesive's patent described a column having "rigid. . .particles having average diameters of greater than about 30µm." The district court held prosecution estoppel did not bar a construction of "rigid" that included the accused columns. Cohesive's claim that Waters' 25µm columns infringed its patents depends on the construction of the limitation "greater than about 30µm." The particles at issue are not uniform, and have irregular shapes. Varying methods of calculation provide average or mean diameters. Depdending on the method of calculation, Water's 25µm components were either 25.16 - 25.22µm (according to Waters) or 29.01µm (according to Cohesive). The district court construed the term "greater than about 30µm" to not include diameters of 29.01µm, and therefore the patent was not literally infringed. The district court also held there could be no infringement under the doctrine of equivalents, because Cohesive had "carved out a substantial set of diameters for particle structure." Based on this finding of noninfringement, the district court also held Cohesive was not entitled to lost profits, as the 25µm columns were found to be acceptable noninfringing substitutes.

Regarding invalidity, the court granted judgment as a matter of law that the asserted claims were not anticipated, observing the anticipation argument was "iffy," and the evidence of invalidity was "best captured by obviousness." The jury eventually held the claims were not obvious.

Two issues stood out among the various appeals by both sides. First, whether the district court had properly construed the claim limitation of "greater than about 30 µm," and second, whether the district court properly granted a directed verdict on the issue of anticipation in light of presenting the issue of obviousness to the jury.

The Federal Circuit reversed the district court's construction of "greater than about 30µm." The court held the district court's construction improperly read the term "about" out of the claim. The court attempted to define the meaning of the term "about" in this context, by looking to the purposes of the invention. In the end, based on the tolerances disclosed in the specification, the court held the term literally covered at least down to 25.434µm, and there was potential coverage for particles as low as 23.044µm, depending on whether they fulfilled the claimed function, namely attaining turbulence in the column. Based on the differing measures of particle size, the court reversed the district court's noninfringement holding, noting the 25µm columns fell either within the literal scope of the claim (if using Cohesive's measure) or in the "grey area" (if using Waters' measure). Interestingly, the court also held that "by electing to include the broadening words 'about' in the claim, the patentee has . . . already captured what would otherwise be equivalents within the literal scope of the claim." The issue was remanded to the district court for final determination of infringement. Because the question of infringement of the 25µm columns was back in play, the court also reversed the district court's conclusion that lost profits were not available.

The Federal Circuit also reversed the district court's judgment as a matter of law on anticipation. As stated by the court, "the district court '[thought] of anticipation as being a subset of obviousness,'" and therefore did not submit the question of anticipation to the jury. However, according to the court, obviousness and anticipation are separate conditions of patentability, and therefore separate defenses to infringement. Additionally, even if the anticipitory documents would be considered for obviousness, the court did not consider if a reasonable jury could have found the claim anticipated. As a result, the court remanded the question of anticipation for reconsideration.

Judge Mayer dissented on this issue. In his opinion, the majority's conclusion regarding the overlap of anticipation and obviousness is incorrect. He attacked the majority's citations as "unsupportable," observing the majority was "unable to cite a case remanding to the district court for consideration of anticipation, while at the same time sustaining a determination that the claims at issue are not obvious."

To read the full decision in Cohesive Techs., Inc. v. Waters Corp., click here.

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