In ClearValue, Inc. v. Pearl River Polymers, Inc., the Federal Circuit found that a jury verdict of validity was not supported by substantial evidence, and so reversed the district court’s decision denying Pearl River’s motion for judgment as a matter of law (JMOL). This case is interesting because it explains when a broad range may or may not anticipate a narrower range.
The Patent At Issue
The patent at issue was U.S. Patent 6,120,690, directed to processes of clarifying water. Claim 1 was the only claim at issue on appeal, and recites:
1. 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 di-allyl di-methyl ammonium chloride (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%.
The Asserted Prior Art
Pearl River asserted that the ’690 patent was anticipated by and obvious in view of U.S. Patent 4,800,039, which is directed to compositions for reducing turbidity in aqueous systems. The ‘039 patent states that its “compositions are especially effective in low-turbidity, low-alkalinity waters, but they are also effective in other waters. Low-alkalinity waters, as used herein, are waters having total alkalinity values of 150 ppm or less.
The district court found that the ‘039 patent teaches away from the claimed process because it shows that the combination of ACH and DADMAC “does not work well.”
The Federal Circuit Decision
The Federal Circuit quickly disposed of the “teaching away” rationale that the district court relied on:
Although this alleged teaching away would be relevant to an obviousness analysis, “whether a reference ‘teaches away’ from [an] invention is inapplicable to an anticipation analysis.” Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (citation omitted). The district court thus erred by holding that this testimony was substantial evidence supporting the jury’s verdict of no anticipation.
The Federal Circuit also addressed ClearValue’s argument that the teachings in the ‘039 patent of methods of “clarifying water with alkalinity of 150 ppm or less is too broad to anticipate the 50 ppm limitation of claim 1.” While a broad range does not always anticipate a narrower sub-range, ClearValue did not establish that this was such a case. Factors the Federal Circuit considered include:
- “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.
- “ClearValue did not argue that the [‘039 patent] fails to teach one of ordinary skill in the art how to use the claimed invention,” i.e., that it does not enable the claimed methods.
- The ‘039 patent includes an example treating water with “a total alkalinity of 60-70 ppm,” which “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.”
The Federal Circuit therefore concluded that the ‘039 patent “teaches and enables each and every element of claim 1,” and so reversed the district court’s denial of Pearl River’s JMOL of invalidity, holding the patent invalid.
The USPTO’s Manual of Patent Examination and Procedure (MPEP) includes sections addressing both anticipation and obviousness of ranges.
MPEP § 2131.03 relates to anticipation and appears to provide somewhat conflicting guidance, based on Federal Circuit decisions addressing specific fact patterns:
I. A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE
“[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.” Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) (emphasis in original).
II. 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
When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with “sufficient specificity to constitute an anticipation under the statute.” What constitutes a “sufficient specificity” is fact dependent. 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. See, e.g., Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
(ClearValue cited Atofina in support of its argument that claim 1 was not anticipated by the ’390 patent.)
III. PRIOR ART WHICH TEACHES A VALUE OR RANGE THAT IS VERY CLOSE TO, BUT DOES NOT OVERLAP OR TOUCH, THE CLAIMED RANGE DOES NOT ANTICIPATE THE CLAIMED RANGE
“[A]nticipation under § 102 can be found only when the reference discloses exactly what is claimed and that where there are differences between the reference disclosure and the claim, the rejection must be based on § 103 which takes differences into account.” Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
MPEP § 2144.05 relates to obviousness and, interestingly, discusses the “criticality” factor that the Federal Circuit discusses in the context of anticipation:
III. REBUTTAL OF PRIMA FACIE CASE OF OBVIOUSNESS
Applicants can rebut a prima facie case of obviousness based on overlapping ranges by showing the criticality of the claimed range. . . .
A prima facie case of obviousness may also be rebutted by showing that the art, in any material respect, teaches away from the claimed invention. . . .
Applicant can rebut a presumption of obviousness based on a claimed invention that falls within a prior art range by showing “(1) [t]hat the prior art taught away from the claimed invention…or (2) that there are new and unexpected results relative to the prior art.” Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228 (Fed. Cir. 2004).
Criticality Is Critical
The Federal Circuit decision in ClearValue underscores the importance of having meaningful claim limitations to distinguish the prior art. If ClearValue had been able to establish some criticality to the 50 ppm or less claim limitation, it might have been able to avoid anticipation, and had an opportunity to establish non-obviousness based on a teaching away, unexpected results, or some other evidence of non-obviousness.