U.S. Water Services, Inc. v. Novozymes A/S, 843 F.3d 1345

U.S. Water sued Novozymes for indirect infringement of two related patents (the ’137 and ’399 patents) covering methods of reducing fouling in ethanol production by adding the enzyme phytase.
The patents are continuations in a family (including the ’244 patent) that generally claim adding phytase to ethanol-processing fluids to convert phytic acid/phytate salts to soluble products.
District Court granted summary judgment that many asserted claims were invalid as inherently anticipated by prior art (Veit and Antrim), but denied Novozymes’ motion on inequitable conduct.
Veit discloses adding phytase during saccharification or fermentation to improve yields; Antrim discloses removing/inactivating phytate to improve liquefaction.
U.S. Water presented expert testimony disputing that practicing Veit or Antrim necessarily reduces insoluble deposit formation; this evidence was central to the appeal.
During prosecution and related litigation (ChemTreat), U.S. Water made statements and claim amendments regarding timing/location of phytase addition; Novozymes alleged these interactions supported an inequitable conduct claim.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether asserted claims are inherently anticipated by Veit or Antrim (summary judgment)	U.S. Water: District Court erred because genuine dispute exists—expert evidence shows practicing Veit/Antrim will not inevitably reduce deposits.	Novozymes: Prior art discloses overlapping conditions (dosage, pH, temperature) so deposit reduction is a natural and inevitable result—anticipation proper.	Vacated-in-part: summary judgment of inherent anticipation was inappropriate because material factual dispute (expert testimony) precluded finding inevitability.
Whether U.S. Water committed inequitable conduct during prosecution (withholding/misrepresenting ChemTreat litigation materials)	Novozymes: U.S. Water withheld material litigation disclosures and made misleading statements to PTO; if known, claims would not have issued.	U.S. Water: Examiner was aware of distinctions and third-party submissions; materials were not but-for material and were effectively before the examiner.	Affirmed-in-part: District Court did not err—Novozymes failed to show materiality (and thus no need to reach intent).

Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292 (Fed. Cir.) (claim construction prerequisite to anticipation inquiry)
Eli Lilly & Co. v. Zenith Goldline Pharm., Inc., 471 F.3d 1369 (Fed. Cir.) (anticipation requires disclosure of every claim element explicitly or inherently)
Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373 (Fed. Cir.) (inherent anticipation doctrine explained)
Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364 (Fed. Cir.) (inherency requires that the unstated limitation necessarily be present)
Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264 (Fed. Cir.) (inherency not proved by possibilities or probabilities)
In re Montgomery, 677 F.3d 1375 (Fed. Cir.) (inherent result must inevitably flow from prior art)
Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (U.S.) (standard for genuine dispute at summary judgment; credibility/weighing are jury functions)
Celotex Corp. v. Catrett, 477 U.S. 317 (U.S.) (summary judgment standard)
Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir.) (standards for proving inequitable conduct)
Ohio Willow Wood Co. v. Alps S., LLC, 813 F.3d 1350 (Fed. Cir.) (inequitable conduct requires materiality and intent; both needed)
Bombard v. Fort Wayne Newspapers, Inc., 92 F.3d 560 (7th Cir.) (summary-judgment review—view evidence in light most favorable to nonmovant)