ClearValue, Inc. v. Pearl River Polymers, Inc.
668 F.3d 1340
| Fed. Cir. | 2012Background
- ClearValue alleged Pearl River indirectly infringed claim 1 of the '690 patent by selling high MW DADMAC polymers used with aluminum polymer ACH to clarify low-alkalinity water.
- Jury found the patent valid and indirectly infringing; district court denied Pearl River's JMOL motions for invalidity and noninfringement.
- District court treated Hassick as teaching away, but on appeal we review invalidity de novo for anticipation.
- ClearValue claimed trade secret 1 (combination of high MW polymers with ACH) was misappropriated; district court granted Pearl River JMOL on misappropriation.
- Hassick allegedly discloses the elements of Trade Secret 1 before misappropriation; court considered whether Hassick discloses its effectiveness.
- Overall, the court reverses on invalidity and affirms in part the trade secret ruling.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Anticipation of claim 1 | ClearValue: Hassick does not anticipate because 50 ppm limit is not disclosed with sufficient specificity. | Pearl River: Hassick discloses all elements of claim 1 for 150 ppm or less and thus anticipates. | Hassick anticipates; JMOL of invalidity reversed. |
| Trade secret misappropriation | ClearValue: Hassick does not disclose Trade Secret 1's effectiveness. | Pearl River: Hassick discloses Trade Secret 1 elements and their effectiveness. | Trade secret misappropriation not supported; JMOL affirmed. |
Key Cases Cited
- Summit Tech., Inc. v. Nidek Co., 363 F.3d 1219 (Fed. Cir. 2004) (JMOL standard on appeal de novo review)
- Med. Care Am., Inc. v. Nat'l Union Fire Ins. Co., 341 F.3d 415 (5th Cir. 2003) (substantial evidence standard for JMOL)
- ACCO Brands, Inc. v. ABA Locks Mfrs. Co., 501 F.3d 1307 (Fed. Cir. 2007) (substantial evidence and anticipation standards)
- z4 Techs., Inc. v. Microsoft Corp., 507 F.3d 1340 (Fed. Cir. 2007) (anticipation and enablement considerations)
- Atofina v. Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006) (genus disclosure vs. species within prior art; criticality concept)