*1 Cir.1986) (“Whеn conflicting ... there that the ac- are Valji also testified A445. Dr. evidence, in the neither the trial ex- elements ... to allow[ed] cused device “when may nor court on JNOV this court substi- the expand will both pand by deployment, jury.”). its for that of the tute choice of the inner lumen shape and diameter meeting “expands to graft” ... the explained, As the district court a reason- claim limitation. Record conform” jury able could have reached the verdict of contrary argu- Datascope made A436. must, I infringement. respectfully, dis- ments, urging conclusions. opposite sent. in infringement, on jury found agreed by par that were structions court, Data- denying
ties. The district motion,
scope’s “[t]he stated that JMOL finding certainly against not
jury’s was In of the evidence.” weight
the clear
deed, there was substantial evidence not verdict. Whether or
support of the on was also substantial evidence
there side, court cannot appellate other “[a]n TECHNOLOGIES, COHESIVE evi interpretation its substitute INC., Plaintiff-Appellant, simply of the trial court dence for that v. reviewing give court ‘might because construction, another resolve facts CORPORATION, Defendant- WATERS differently, and find a more ambiguities Appellant. Cross cast actions which District sinister ” In apparently deemed innocent.’ Court 2008-1030, 2008-1029, 2008- Nos. Laboratories, Inc. v. Ives Laborato wood 1031, 2008-1032, 2008-1059. 844, 857-58, ries, Inc., 456 102 S.Ct. U.S. Appeals, United States Court (1982)
2182,
(quoting
72 L.Ed.2d
Federal Circuit.
Boards,
v. Real Estate
United States
485, 495,
711,
reweigh by which reason
substantial evidence its
able could have reached verdict. jury Peoria Pekin Union
See Tennant v. & 409, Co.,
Ry. 64 S.Ct. 321 U.S. (“Courts (1944) are not free
L.Ed. 520 set
reweigh the evidence and aside merely jury could
jury verdict because or con
have drawn difference inferences feel that other judges
clusions or because DMI, reasonable.”); Inc. are
results more (Fed. Co.,
v. & Deere *6 Stier, Jr.,
Robert H. Pierce Atwood LLP, Portland, ME, of argued plain- for tiff-appellant. With him the on brief were Michael J. Sullivan and L. Sweeney. Sean Scofield, Jr., William A. Lahive & Cock- field, MA, LLP, Boston, of argued for appellant. defendant-cross With him on Sibley the brief Reppert. was P. opinion Dissenting filed Circuit Judge MAYER. for judgment noninfringe- ters’s motion of
LINN, Judge. Circuit law. ment as a matter of We further case. patent infringement This district court committed conclude (“Cohesive”) Technologies, Inc. Cohesive concluding no clear error in Waters accusing actions Wa- three related brought prove deceptive to intent neces- failed (“Waters”) infringing of Corporation ters sary inequitable claim to sustain its (the 5,772,874 pat- “'874 Patent No. U.S. However, agree conduct. we with Waters (the ent”) 5,919,368 No. Patent and U.S. wrong that the district court was enter “ action, No. In the first patent”). '368 judgment anticipa- as matter law on 98-CV-12308, Waters’s accused Cohesive submitting tion the issue without p,m liquid chro- high-performance Oasis jury- (“HPLC”) (the “30 columns matography columns”) infringing pat- the '874 disagree p,m products, As to the 25 we ixm Techs., v. Waters Inc. ent. See Cohesive with the district court’s construction of (D.Mass.2007). Corр., F.Supp.2d p,m.” “greater than about 30 Under the 99-CV-11528, action, No. In the second construction, was not enti- correct Waters |rm columns accused the same 30 Cohesive summary judgment tled to of no literal id. patent. See infringing the '368 was, infringement. The district court how- 01-CV-12307, action, Cohe- No. third ever, motion grant correct Waters’s |xm25 Oasis HPLC sive accused Waters’s judgment no summary infringement un- columns”) (the infring- |xm “25 columns though not equivalents, der the doctrine of id. ing patents. both See court ar- for the reasons that district ticulated. action that the juryA in the first found invalid, was the 30 '874 the district damages, As to because patent. '874 infringed columns ixm incorrectly |xm considered the court then court held See id. district *7 an product acceptable noninfringing on hearing bench trial and dam- combined substitute, it is and because unclear wheth- inequitable ages, infringement, and willful product, standing er the other available action, prelimi- on in the first and conduct alone, acceptable an sub- would have been judgment nary injunction summary and stitute, judg- the district court’s we vacate third actions. in the second and motions was not entitled lost ment that Cohesive in fa- judgment court entered district by profits and remand for reconsideration action, granted in first
vor of Cohesive the the court in the first instance. We district judgment summary for Cohesive’s motion in the court’s find clear error district no invalidity in no thе infringement and infringement was conclusion that Waters’s action, damages. Id. second and awarded Cohesive’s Finally, not we decline willful. action, However, in the third the at 126. assign to a different request to this matter motion for granted district court Waters’s remand. Accord- judge district court on noninfringement, judgment of summary reverse-in-part, ingly, affirm-in-part, we |xm concluding products 25 did not the vacate-in-part, and remand. parties either Id. Both infringe patent. judgment. of the appeal aspects numerous I. BACKGROUND we conclude |xm products, to the 30
As patents and both relate to The '874 '368 correctly court construed that the district separating, process a for HPLC. HPLC is “rigid” properly the and denied Wa- term surfaces, identifying, measuring compounds liquid said mix- flowing a in liquid. contained Pharmaceutical containing ture said through solute testing in companies drug often use HPLC body velocity said at a sufficient to compounds from separate absorbed induce flow of said mixture within at HPLC, liquid containing blood. the portion least a substantial said in- passed un- compounds be measured terstitial volume at a velocity reduced packed pressure through der column of 5,000. greater than about particles. chromatographically active See patent '874 col.20 11.20-34. Each '874 col.l 11.24-28.Because the dif- patent requires essentially asserted clаims liquid in components ferent molecular two key same limitations at in issue this have different affinities appeal: particles that column, “rigid” are and have each is extracted component and, average “greater liquid from at a different diameters than about rate therefore, at along a different location pm.” 11.38-42,54-56, See id. col.20 60-65 column. See (claims id. col.l 11.28-32.The effec- 3, 7, 9 depending from claim separating tiveness of HPLC at molecules (claim 1); col.21 id. 1.36-col.22 1.8 15 re- liquid from on depends several varia- quiring “rigid particles” having solid “sub- bles, including the size structure stantially uniform mean diameters column. particles in the See id. col.2 11.3- pm”); than less about 30 id. 11.9-21 col.22 19. (claim solid, requiring “rigid, porous particles” “substantially with uniform aver- patent The '368 issued from a divisional age range diameters between about application application that resulted pm”); 30 to about patent, id. col.22 patents the '874 and the share 11.33-35 (claim specification. 16); depending same Cohesive from asserted claim '368 1, 3, 7, 9, 15, 16, (claim claims and 20 of the '874 patent col.20 11.14-28 1 requiring patent 1, 3, and claims and 8 of the '368 solid, step of ... “packing rigid, porous Cohesive, patent. 526 F.Supp.2d See at particles” “average with diameters of not Claim of the '874 recites: pm”); than less about 30 id. col.20 11.32- (claims 36, 53-56 3 and depending from Chromatography аpparatus comprising, l).1 combination, claim body a chromatographic as a formed brought infringement Cohesive its first *8 substantially uniformly distributed 1998, against action in alleging Waters that solid, multiplicity rigid, porous par- of pm infringed the 30 columns pat- the '874 with chromatographically ticles active In ent. while the first action was surfaces, particles said having average pending, the patent '368 issued. Cohesive greater diameters of than about 30 then filed a infringement second action pm, the interstitial volume between Waters, against asserting that use of the particles being said not than less pm30 same columns infringed the method about 45% of the total volume of said claims of the patent. '368 column; and for In the court a loading means said with district held sixteen- surfaces at least one solute that is with day jury reactive trial in the first During action. would, Although "greater 1. pm and than” "between” 30 this distinction is not relevant pm larger and a would number not encom- analysis our for in this case. pass exactly pun, while "not than” less (concerning trial, presented replacement evi- third case the alleged and Waters columns) pm in the form of a for patent the of the '874 motion dence that claims prior summary an by separate judgment, and Waters made anticipated were seven summary that alleged judgment also oral cross-motion for аrt references. Waters obvious, hearing. at patent noninfringement the '874 were of the the claims of indepen- in of each reference light both later, years the Five district court en- dently, light of combinations and various tered a order disposing memorandum and objec- of the references. Over Waters’s all issues in all three In first of cases. the tion, not the district court chose to submit case, concerning of infringement the '874 anticipation jury, Waters because pm columns, patent by the 30 district obviousness, and the district alleged had (1) post-trial court: denied mo- Waters’s being a anticipation of “[thought] court of judgment tions for as a matter law on Ac- of J.A. 5710. subset obviousness.” (2) infringement 95; at invalidity, and id. sua en- cordingly, sponte the district court that had its found Waters failed meet a in favor of Cohe- tered directed verdict conduct, prove inequitable burden to id. at sive, not patent that '874 was finding (3) 103; infringe- and found that Waters’s Cohesive, at anticipated. F.Supp.2d willful, ment was not id. at 106-07. In the 89. case, concerning infringement second columns, patent by pm on jury finding returned a verdict the '368 pm infringed pat- summary judgment, the 80 columns the '874 cross-motions (1) granted and the '874 not obvi- district court: Cohesive’s mo- ent was verdict, judgment of and By summary time tion for direct ous. Waters (2) columns, 112; selling pm infringement, indirect id. at stopped had the 80 summary motion for selling replacement granted and instead was Cohesive’s pm at judgment invalidity, of no id. 113. product with smaller —the case, infringement in- concerning filed third the third columns. Cohesive then its columns, action, pm fringement alleging patents by the re- the 25 both summary judgment pm infringed granted both district court placement 25 columns Waters, noninfringement favor patents. the '874 and the '368 Cohesive of pm25 columns injunction against finding that did preliminary moved for a meet, literally equivalents, or pm either the 25 columns. requiring particle size claim limitations bench The district court held combined Id. pm.” “about 30 at 116. greater than At hearing pro- trial and damages, Finally, as to the district court ar- ceeding, court evidence and heard entitled to lost held that Cohesive was not con- inequitable gument on issues law, as matter id. profits duct, infringement, damages willful *9 royalty a payment of reasonable ordered the first case. Id. at 88. The district columns, pm id. 125. of at on sales the 30 parties’ court considered the cross- also timely appealed on issues the sec- the summary judgment motions for in Cohesive (1) of term case, claim construction the concerning ond whether those same of: (2) summary judgment of pm”; 30 pm infringed patent. the '368 “about 30 columns columns; pm noninfringement by at the of the Additionally, request Id. at 89. (4) (3) court, infringement; presented profits; its lost willful the district Cohesive (5) Cohesive also injunction damagеs. in the and enhanced preliminary motion novo, (en banc), Cybor we review de requested that the case be to a that assigned Inc., Techs., v. Corp. FAS judge different district on remand. Wa- 138 F.3d (Fed.Cir.1998) (en banc). timely cross-appealed ters on of: the issues We deter- (1) “rigid”; ordinary customary meaning claim of the mine the construction term and (2) by of denial of as a of law undefined claim terms as understood judgment matter columns; by person ordinary in noninfringement p,m the 30 skill the art at the (3) invention, the using time of the grant of as a of law methodolo- judgment matter Phillips v. (4) Corp., AWH gy in on anticipation; inequitable con- (Fed.Cir.2005) (en banc). 1303, 1312-19 duct. jurisdiction pursuant We have to 28 court 1295(a)(1). looks to those sources § “[T]he avail- U.S.C. public able to the what a person that show of skill the art have would understood II. DISCUSSION disputed claim language mean. Those sources include the of the words claims p,m A. The Columns themselves, specifica- the of the remainder We first address whether district tion, prosecution history, and extrinsic properly court pat- concluded that the '874 concerning evidence relevant scientific columns, ent infringed by |jum was the 30 terms, principles, meaning of technical invalid, and not unenforceable. of the art.” Id. at 1314 state and the (internal quotation marks and citations omitted). 1. Claim Construction Here, challenges Waters district there argument is no that court’s “rigid,” ordinary construction the term meaning “rigid” word itself which is to all monomeric, common asserted claims. requires particle be The “rigid” district court Likewise, construed than polymeric. rather although mean object’s capacity “an to maintain the embodiments of the invention de- substantially changes density zero specification only scribed all disclose see, volume packing pressure under at e.g., particles, least monomeric '874 patent about psi 11.29-32, 1.58, as a consequence eol.18,1.21, sub col.13 col.14 those stantially plastic to resist deformation un embodiments cannot limit the otherwise Cohesive, der pressure.” such See Phillips, claim “rigid.” broad term F.Supp.2d at district court con (“[Although specifi- “rigid” strued it so did not “exclude very cation often specific describes embod- (as polymeric particles opposed invention, mo of the iments we have repeated- nomeric particles referred pre ly to in the against confining warned the claims to ferred embodiments.”). patent).” embodiment '874 those Id. Waters argues to ex failure however, polymeric argues,
clude Waters particles the construc error, tion Cohesive disclaimed “rigid” because, polymeric particles during was during prosecution. reject The examiner prosecution, Cohesivе polymer disclaimed ed claims of ic the '874 being rigid. as not antici pated or obvious over U.S. Patent No. 5,019,270, Claim construction is an issue of Afeyan issued B. to Noubar et *10 Instruments, law, Markman v. Westview (“Afeyan”). al. In response, Cohesive ar Inc., (Fed.Cir.1995) that, F.3d 970-71 gued Afeyan, unlike the claims re- of particular 418. unmistakable disavowal the “truly particles. J.A. rigid” quired Afeyan, in it not a particles to the ex- used but Additionally, submitted Cohesive particles. of chromatography polymeric of disavowal all the declaration aminer Guiochon, pursuant to 35 George expert that, if argues Waters further even declaration, § his Guio- 1.132. In
C.F.R. history read to prosecution the cannot be in particles the distinguished between chon polymeric it particles, have disclaimed all particles and the claimed invention the type the particular nonetheless disclaimed in Afeyan: described used in the accused polymeric particles of they Afeyan et al mention While disagree. poly q,m columns. We The solids, rigid particles their be desire in particles meric disclaimed the Guiochon in the be read best comment can such “divinylbenzene and the declaration were ... teachings their that mention light of Afeyan The like.” J.A. 430. divinyl- such as only polymeric materials distinguishes declaration de the Guiochon polymeric and the like. Such benzene сomposition particles the of the scribes expected to maintain material cannot be follows: rigidity withstand requisite poly- particles are fabricated from to obtain a reduced required pressure as, styrene such for example, mers higher through velocity of 5000 or divinylbenzene, with or var- cross-linked particles column with chromatographic such copolymers including ious by Afeyan et related the diameter disclosed of al, p-bromostyrene, p-styryldi- to be a materials as so cannot be considered vinyl particles p-amino sytrene, within teaching rigid phenylphosphine, of solid chlorides, and me- meaning acrylates the claims.... and various of thacrylates, designed to be preferably contends that the Guio- 430. Waters J.A. derivatizable, heavily and cross-linked of resulted a disclaimer chon declaration copolymerized with a moi- e.g., glycidyl not within “rigid” material” as “polymeric ethylenedimethacrylate. ety or claims. meaning contrast, By Afeyan col.16 1.67-col.l7 1.7. may mean patentee limit the “[A] |xm are in the 30 columns particles by making a claim a clear ing term n-vinyl- divinylbenzene copolymers during of scope unmistakable disavowal divinylben- copolymer A pyrrolidone. Computer Docking Station prosecution.” n-vinylpyrrolidone is not one zene Dell, Inc., Corp. v. Afeyan and was pоlymers described (Fed.Cir.2008) Pharma (quoting Purdue specifically disclaimed the Guiochon not Inc., Pharms., L.P. v. Endo declaration. (Fed.Cir.2006)). case, this specific argues that the disclaim- distinguish does Waters declaration not Guiochon to dis- divinylbenzene should suffice they are er of Afeyan particles because in the instead, polymers particles it claim polymeric; distinguishes columns, pm because those taught materials polymeric particular divinylbenzene.” Br. “made 80% the like”— are from Afeyan “divinylbenzene and — Appellant Waters are of Defendanl^Cross polymeric materials” “[s]uch because the fact ignores at 42. But Waters Corp. when sufficiently rigid exposed divinylbenzene alone and a that a molecule pressure. level The Guiochon relevant therefore, divinylbenzene containing 80% copolymer a clear and may, be declaration *11 1362 compounds, argues different Waters that the evidence at trial
are chemical with properties including permit different was insufficient a different to reasonable — if rigidities. By patentee jury particles a 30 analogy, dis- conclude that pm hydro- rigid. claims like columns “flammable substances were The district during patentee “rigid” court’s gen” prosecution, required has construction (1) particles: nonflammable “maintain not disclaimed the com- substan- H20, tially density zero just changes it is and volume pound because two-thirds under packing pressure of at least hydrogen. about (2) psi”; “substantially and resist sum, agree plastic we with the district pressure.” deformation under such trial, court that construction of proper “rig expert gave At Cohesive’s his under- in the not require standing id” asserted claims does “substantially the terms zero volume,” particles changes density that the be monomeric. We af and and “sub- stantially firm the plastic district court’s construction of resist deformation.” He “rigid” object’s capacity as “an to maintain further testified that he had tested the substantially changes in density particles pm zero and by packing the 30 columns pressure volume under of at packing psi, least them at 5000 that he observed “sub- a psi consequence stantially changes about 5000 in density as sub zero and vol- stantially ume,” plastic to resist deformation un that the did not “ex- pressure.” such any der hibit plastic deformation.” J.A. 1463- Thus,
64. in response question, “If rigid object’s capacity means an to main- Infringement 2. tain substantially changes density zero argues Waters the district volume, a packing pressure under by denying judgment court erred it as a 5,000 psi, least about and as a conse- law, matter of because evidence was quence, substantially plastic to resist de- insufficient prove infringement even un pressure, formation under such dо the Wa- der the district claim court’s construction. particles qualify ters’ as rigid?,” Cohesive’s grant “The or denial of a motion for judg expert answered, “Yes, they do.” J.A. ment as a procedural matter of law is a 1462. This is sufficient permit evidence to law, unique issue not reviewed jury reasonable to conclude that the 30 regional under the law of the circuit in pm rigid. columns were The district court appeal which the from district court therefore properly denied Waters’s motion Tech., usually would lie.” Summit Inc. v. for judgment as a matter of law of nonin- Co., (Fed.Cir. Nidek fringement. 2004). The First Circuit reviews the dis grant trict court’s judgment or denial of Invalidity 3. a matter of law Espada de novo. v. Lugo, (1st Cir.2002); F.3d Larch v. argues Waters the district Dept., Mun. Elec. F.3d court erred granting directed ver Mansfield (1st Cir.2001). i.e., We therefore judgment consider as a matter of law— dict — evidence, whether the when viewed in the for Cohesive anticipation, on the issue of Cohesive, most light favorable to jury would rather than allow the to decide the permit jury reasonable to find in reviewing favor of issue. “In the district court’s on any permissible Cohesive claim ruling, apply or theo we same standards as the Larch, ry. court, meaning F.3d at district examine that we
1363 gic why judgment,” all fair inferences a defendant “would the evidence and may charge anticipation they to and want on light [Waters] [a] most fаvorable when witnesses, 5719, credibility get of one on J.A. 5717. not consider obviousness.” testimony, or evaluate The court that it resolve conflicts district concluded could Guilloty Per not that weight requirements of the evidence.” “find here of (1st Pierluisi, 43, anticipation 50 have been in the ez v. 339 F.3d Cir. met” submit- (internal 2003) prior references, and it quotation marks cita ted art and therefore omitted). jury anticipation. If a could of tions reasonable directed a verdict no J.A. any have that of the asserted refer 2654. found judg then anticipated patent, ences by granting district court erred improper.
ment as a matter of law was judgment as a on matter of law the issue Moreau, 50, (1st F.3d 52 Wilson v. 492 See anticipation jury of before the was allowed Perez, Cir.2007); Guilloty see also 339 to the claim. The consider district court (“If that at we conclude ‘fair- F.3d 50 did not make a that no finding reasonable persons could different infer minded draw jury could conclude that the asserted ref- trial, presented ences from the evidence Rather, anticipated. erences the district judgment and jury,’ the matter is for court characterized the anticipation itself grant improperly as a matter of law was case, “iffy.” “iffy” anticipation case An as 2)). (quoting Espada, 312 F.3d at ed.” however, not does foreclose favorable to the grant (requiring The circumstances that led verdict. See 50 Fed.R.Civ.P. judgment jury a matter law case that find as of this the court “that reasonable charge At a a legally were unusual. conference would not have sufficient eviden- trial, tiary party near the end of the district court to find for a before basis” law). charge judgment it did intend to a matter granting indicated that not jury anticipation. Specifically, on after Moreover, the district court was argument and reviewing Waters’s evidence wrong granting judgment to conclude that obviousness, and anticipation on the dis- anticipation as a of law would matter on trict court concluded that “the contentions Waters, jury not simply harm because the is making [are] the defendant best had consider opportunity the same obviousness,” captured by rather than an- purposes of obviousness. references ticipation. 2654. The district court J.A. Despite quoted maxim that antic the often that, reading, commented a strict “[u]nder obviousness,” “epitome ipation is anticipation proof did see the [it not] 959, Kalm, re 54 C.C.P.A. any of art prior publications,” (1967), § novelty 35 102 under U.S.C. “iffy,” anticipation case was Waters’s § under 35 nonobviousness U.S.C. none “gut response that its of [the patentability separate are conditions prior art are winners.” references] J.A. separate and therefore defenses available 5680, 5704, Moreover, the 5720. district infringement in an action. See 35 U.S.C. declining charge court commented that (2000); Hardy, F.2d § v. Jones “any anticipation on would not cause real (Fed.Cir.1984) (“[T]hough antic defendant,” harm would not obviousness, epitome of ipation is the very “make much difference because it [they] separate and distinct con are comes in obviousness” J.A. v. cepts.”); also Mendenhall Cedara expressly stated that it see The district court (Fed.Cir.1993) Inc., understand, 1557, 1563 pids, as matter of “strate- did invention, (holding ground § the proper verdict nonobviousness is not *13 obviousness.”). anticipation, § but 103 with verdict was not inconsistent of antici- Moreover, requires analysis obviousness use, pation by prior despite “legal public secondary considerations of nonobvious- homily” epitome that is the anticipation ness, secondary while considerations are obviousness); 1026, Meyer, 599 F.2d re not an claim anticipation. element of a (CCPA 1979) (holding 1031 that rejection Compare King Corp. Instrument v. Otari § ground under 102 new following was (Fed.Cir.1985) 853, Corp., 767 F.2d 857 103, § previous rejection under despite (“In § analysis, a 103 obviousness Graham maxim “anticipation epitome that is the Co., 1, [v. John Deere 383 U.S. 86 S.Ct. obviousness”). (1966) 684, 15 requires L.Ed.2d 545 that ] the trier underlying assess certain facts: commonly While it is understood (1) scope art, prior and content of the prior that anticipate art references that a (2) (3) ordinary art, the level of skill claim will usually render that claim obvi the differences between the claimed inven- ous, necessarily it is not true that a verdict art, (4) tion prior and the and the so-called anticipation. nonobviousness forecloses ”), ‘secondary considerations.’ with Hakim The tests anticipation for and obviousness PLC, v. Group, Cannon Avent 479 F.3d See, Duro-Last, are e.g., different. Inc. v. 1313, (Fed.Cir.2007) (“ 1319 ‘Anticipation’ Seal, Inc., 1098, Custom F.3d 321 1107-08 means the claimed pre- invention was (Fed.Cir.2003) (“Succinctly put, the various known, viously that all of and the elements unenforceability invalidity defenses and limitations of the claim are described may be raised a ineq reference.”). defendant — in a single prior art And conduct, uitable the several forms of antici although anticipation proven can be inher- pation right 102, § and loss of under ently, proof anticipation of inherent is not § require obviousness under differ proof same as of obviousness. 103— See ent proof.”) elements of Obviousness can Perricone v. Corp., Medicis Pharm. proven by combining be existing prior (Fed.Cir.2005) (“[A] 1368, art F.3d prior references, anticipation requires while art express all reference without reference to a claim may elements of a claim to be limitation disclosed within a nonetheless antici- pate Indus., by inherency.”); single Trintec Compare reference. Inc. MEHL/Bio Top-U.S.A. v. Corp., F.3d phile Int’l Corp. Milgraum, v. 192 F.3d (Fed.Cir.2002) (“[0]bviousness is not in- 1362, 1365(Fed.Cir.1999) (“To anticipate, a Thus, herent anticipation.”). “it does not single every reference must teach limita every technically follow that anticipated invention.”), tion of the claimed with invention would also have been obvious.” Scripps Clinic & Research Found v. Gen (CCPA Fracalossi, In re F.2d entech, Inc., (Fed.Cir. 1982) (Miller, J., concurring).2 1991) (“If necessary it is beyond reach single boundaries of a reference to A court cannot refuse to submit provide missing disclosure of the claimed the issue of anticipation jury simply 2. The categorically alloy dissent "every claims an properties with the of the claimed anticipated alloy, claim obvious.” may Post at 1377. others have tried and failed to Consider, and, But produce disclosed, this is not correct. alloy, for exam- such an once ple, particular a alloy may claim directed toward a alloy the claimed high have received alloy may praise of metal. metal The claimed have and seen commercial success. Never- theless, all the hallmarks of a nonobvious may invention— there alchemy be centuries-old that, there long was a but felt unresolved need describing any for textbook while not metal ing materiality. has “We review the district infringer also as- the accused because It findings is for court’s on the threshold issues an obviousness defense. serted for materiality the court—to make and intent clear error.... litigants —not to whether assert ultimate strategic regarding decision as We review the decision one, both, these in a inequitable or neither of defenses of discre conduct abuse Foods, Ltd., intro- infringer An jury trial. accused tion.” Inc. v. Cargill, Canbra (Fed.Cir.2007). prior art reference makes 1359, 1364-65 duces *14 “each ev- argument that and non-frivolous that argued to the district court Waters found, a expressly limitation of claim is ery inequitable Cohesive committed conduct single prior art inherently, [that] or by submitting the Guiochon declaration generally is entitled to have reference” failing but to disclose the United States by the finder of fact. anticipation decided (the “Patent Patent and Trademark Office Int’l, Bingo, v. Planet LLC GameTech See Office”) did that that Guiochon not believe (Fed.Cir.2006). Inc., 1338, 472 F.3d 1346 flow” generated the invention “turbulent did in this precisely what Waters That is from or distinguished “laminar” reverse district case. We therefore Cohesive, F.Supp.2d “smooth” flow. 526 a grant judgment as matter of court’s at 95 & 2. that its n. Cohesive admitted re- anticipation, on the issue of and law that generated believed the flow inventors further consistent proceedings mand for by pat- of the invention '874 '368 opinion. with this
ents characterized as “turbulent” was best disagreed. at 99. and that Id. Guiochon 4. Conduct Inequitable However, argued prose- that its Cohesive cuting attorney distinc- did believe this that the district argues Waters material, “tur- tion to be because the term clearly by failing to find the court erred appear any of the bulent flow” does not necessary to a intent sustain deceptive patent claims of and is not defined either inequitable conduct errone finding court in the Id. The district specification. for” test determin- ously applied “but 1342, that, (Fed.Cir.1998) (remarking in alloys, practiced if n. 21 describes a method 1357 actually allow- produces alloy. court did not err in precisely, the claimed footnote that trial alchemy anticipa- prior argument ing parties present While the art textbook inher- on 102, obviousness); § ently anticipates under the claim v. during tion trial on Connell 1542, Sears, Co., may not be under claim be said to obvious 722 1548 & F.2d Roebuck (Fed.Cir.1983) § quoted 103. (prefacing discussion and obvi- relationship anticipation between why precedent precisely our has This is necessary to so with "it is never ousness "legal homily” rejected reliance that on Fracalossi, (address- hold”); at 794 681 F.2d "anticipation epitome of obviousness.” rejection ing specific anticipation whether Mendenhall, We at 1563. have ex- F.3d evidentiary support obvious- was sufficient upheld jury anticipation pressly verdict 1399, Pearson, rejection); In re ness 102(b), jury § even when the same under (CCPA 1974) (affirming rejection § 103 § patent 103. found the nonobvious under rejection have been § when would also Though argues "long that a Id. dissent Kalm, appropriate); In re 54 C.C.P.A. argument precedent” supports line of its (1967) anticipa- (reversing F.2d obvious, every anticipated claim is not a sin- We rejection). tion cannot conclude—as actually gle one of the cases it cites holds novelty reasoning implies dissent's jury "epitome” precludes a from maxim —that surplussage, requirement § 102 is mere § finding simply invalid under requirement § the nonobviousness subsumed it is under 103. See because nonobvious CellPro, Inc., of§ Hopkins Johns Univ. v. testimony “credited] Cohesive’s that it did of Appellant Defendant-Cross Waters not believe Guiochon’s definitional distinc- Corp. at 75. But the district court ex- tion was material to the ultimate conclu- pressly testimony credited the pros- sion of his and accordingly declaration” ecuting attorney and Guiochon they found no intent to deceive the Patent Of- believed material, the distinction was not fice. Id. and concluded that there was no “clear and
convincing evidence that Cohesive’s omis-
regard
deceptive
“With
in
sion constituted intentional deceit.” Cohe-
conduct],
tent prong
inequitаble
[of
we
sive,
F.Supp.2d
at 100. Waters has
emphasized
have
‘materiality
does not
offered no reason for us to disturb these
presume intent,
separate
which is a
findings.
essential component
inequitable
con
We therefore conclude
”
that the district
duct.’
Scientific,
Star
Inc. v.
Reyn
R.J.
*15
court did not clearly err in its determina-
Co.,
olds Tobacco
tion that Waters had failed to meet its
(Fed.Cir.2008)
GFI,
(quoting
Inc. v.
burden of establishing inequitable conduct.
(Fed.
Corp.,
Franklin
See, e.g.,
Scientific,
Star
Waters has independent cited no evi- Preliminarily, we note that the name “25 specific dence of intent pun deceive. In- columns” is somewhat deceiving. stead, it argues that Cohesive’s failure to Apart from the size of particles disclose Guiochon’s belief that the flow up column, make |xm the 25 columns generated by the claimed invention was are identical infringing |xm30 col- properly characterized Cohesive, as “turbulent” umns. F.Supp.2d at 114. “can have been nothing other both, than inten- particles themselves irreg- are tional.” Reply Br. of Defendant-Cross ular in shape, as best figure shown in 3 of Appellant 20; Corp. Waters see also Br. patent, the '874 reproduced below: pm” expressly is not a 30 with reference to the shape particles Because alleged average particles the ac- diameter of the sphere, uniform *16 actually pm have pm25 columns do not in the accused 25 columns: cused Moreover, pm. par- the diameters of 25 “greater I than language construe the parti- dispute average the size of the ties microns” to exclude 29.01 mi- about 30 pm Ac- in the accused 25 columns. cles crons. Cohesive, in the 25 cording particles to the Cohesive, F.Supp.2d 526 at 115. pm average columns have an diameter However, according to pm. 29.01 Id. Wa- Although appropriate “it is for ters, average have an diame- particles the the accused device a court to consider pm, depending ter of either 25.22 or 25.16 determining aspect what of the claim when Id. on the method of calculation. construed,” appropriate it should be solely a claim to for the court to construe 1. Claim Construction Exigent exclude the accused device. Solutions, Inc., Tech., 442 Atrana Inc. v. pat- both All of the asserted claims of (Fed.Cir.2006). A 1301, n. 10 F.3d 1310 in requiring included limitations effect ents light in the of the clаim “claim is construed average particles the column have in of the accused language light ... not pm.” “greater than about 30 diameters Int’l v. Matsu (quoting device.” Id. SRI See, patent (requir- col.20 11.25-26 e.g., '874 Am., Corp. shita Elec. greater than ing “average diameters (en banc)) (alteration (Fed.Cir.1985) 1118 pm”); n. 1. Faced supra about 30 see also Rather, original). in the emphasis (the pm col- product with an accused 25 court identified once the district umns) infringing that was identical to an pm” lan 30 was the “greater than about columns) (the pm all re- product construed, its task that should be guage size, except particle the district spects ordinary the and custom was to determine on the “about 30 properly court focused as understood However, ary meaning of that term pm” limitation of the claims. in the art at the ordinary skill person than about “greater the district construed invention, following guid- range interpreted ameter. Its must be time of the technologic stylistic context.” Id. its Phillips. ance of determining beyond In how far only court erred not range The district claimed the term “about” extends merely claim, ... by construing the claim to exclude must focus on the “[w]e device, criticality of by reading [numerical limitation] but also the accused Pharm., the invention.” Ortho-McNeil out of the claim. The dis term “about” Labs., Ltd., Inc. v. Caraco Pharm. trict court stated that it not hesitate “d[id] (Fed.Cir.2007). F.3d other construing ‘about 30 microns’ to exclude words, purpose we must look to the microns,” magnitude of 29.01 because serves, |xm” the “about 30 limitation patent have for a patentee applied “could |xm determine how much smaller than 30 ‘greater that included than 29 ” average particle diameter can be and if it microns’ that is what had intended. clear, that purpose. still serve To be it is Cohesive, F.Supp.2d at 115. But the purpose of the limitation in the patentee have drafted the likewise could purpose claimed invention—not the of the |xm” “greater limitation as than 30 —rather Thus, invention itself—that is relevant. “greater |xm” than than about 30 it had—if |xm” what we ask function the “about 30 scope intended the narrow that the district particle plays low-end limit on size gave court to the claim. are “[CJlaims operation apparatus of the claimed interpreted eye giving with an toward ef method. Bicon, fect to all terms in the claim.” Inc. Co., (Fed. v. Straumann F.3d Here, place the reason that the claims Cir.2006). Here, by including the word particle low-end limit on size is clear from “about,” patentee plainly intended the specification. specification “greater |xm” limitation than about 30 '874 shows that the function of the *17 encompass particles columns with with av particle low-end limit on sizе relates to the erage |xm, diameters are less than 30 ability capture compounds of the column to greater |xm.
but are still than “about” 30 liquid from the at high Specifi- flow rates. Quantum Rodime, PLC, Corp. v. Cf. cally, specification the teaches that “it is (Fed.Cir.1995) (“The F.3d addi believed that the engendered turbulence ‘approximately’ tion of which means ‘rea by ... high speed flow enhances the load- to,’ sonably close precise eliminates the ing of the solute molecules onto the deriva- and, range, lower limit of doing [a] so tized pores particles surfaces of the (footnote scope range.” extends the of the in the column.” patent '874 col.1711.48-51. omitted)). The specification describes three exam- “nominal
ples, particles in which of aver- word ‘about’ does not “[T]he aged |xm, |xm, diameters” of 50 and 10 claims, have a meaning patent universal were evaluated at different flow rates. ixm meaning depends on the [its] techno Id. col.15 11.18-62. It concludes that logical particular facts of the case.” Pall desired “turbulence could not be attained” Inc., Corp. v. Micron Separations, using particles average of nominal diame- (Fed.Cir.1995). 1211, 1217 When “about” |xm |xm, ters of 20 or 10 but was attained part is used as of a range, numeric “the using particles average of nominal diame- ‘about,’ use of the word avoids a |xm. 11.1-19; strict ters of 50 Id. col.10 see also boundary numerical specified par- figs.5-7. id. turbulence, “that desired while turbulence also teaches specification particles” could not be attained with of 20 the same size or need not be
particles
pm
Thus,
(“[The]
diameters.
Id. col.10 11.1-13.
parti-
id. col.8 11.62-63
shape. See
pm”
pm.
cannot
“about 30
include
range
in a
and selected
shaped
cles are
Otherwise,
purpose
of the “about 30
”).
fact,
In
non-
shapes....
sizes
pm” limitation would not be achieved.
shaped particles
differently
spherical
taught
preferred.
as
See id.
expressly
are
Second, in
an
describing
analysis of the
that mean or
(teaching
11 11.19-28
col.
columns,
porosity
specification
construed
is “not to be
average diameter
states:
necessarily
that are
particles
as limited to
porosity,
To measure
a number of batch-
and that “a
regular
or
solids”
spherical
examined,
particles
es of
were
the first
present
invention
preferred aspect
being
(designated
a batch
herein as CT-
shape”); id.
irregularity
particles’
is
50A1-002)
uncoated,
unfunctionalized
(“In
embodiment,
preferred
11.2-5
col.9
highly irregularly shaped, porous alumi-
of the col-
particularly
particles
where the
having
na
a nominal diameter
particles
accept-
umn are near the lower end of
diameter,
50p,
an actual
but
mean
as
dimensions, the
range
able
of cross-section
analysis,
determined
Coulter
(il-
”);
fig.3
....
id.
irregular
are
particles
lp2.39\Lwithin a 95% confidence factor.
particles).
lustrating irregularly shaped
Moreover,
specification
added).
makes clear
(emphases
Id.
col.14 11.22-28
average
par- Thus,
diameter of the
that even the
according
specification,
certainty.
an
particles
ticles cannot be measured with
batch of
with
actual mean
pm may
qualify
diameter of 42.39
still
(describing
id. col.ll 11.25-26
measure-
See
pm.
a nominal diameter of 50
having
confi-
ment of mean diameters with 95%
words,
specification
treats an
dence).
other
particles
Because the
are not
pm
of 42.39
as an aver-
average diameter
uniformly shaped, and not
spherical, not
pm.
repre-
This
age diameter of about 50
measureable, it
surprising
is not
precisely
acceptable
an
variance of at least
sents
claim a low-end
would
pm
15.22% from the 50
nominal diameter.
pm,”
than
threshold of “about 30
rather
It
therefore reasonable to conclude
pm.” Notably, it is the nom-
precisely “30
pm” encompasses at
least
“about 30
specifi-
that the
inal diameter of
*18
Thus,
pm.
variance from 30
15.22%
it
the
cation uses when
concludes
pm”
encompass at leаst
“about 30
should
cannot be at-
desired level of turbulence
15.22%, i.e.,
pm
±pm
between 25.434
too
average particle
tained when the
size is
pm.
and 34.566
Thus,
id. col.1011.8-19.
the low-
small. See
func-
particle
performs
limit on
size
its
end
Likewise,
pm particles
the nominal 20
average diameter of
tion when the nominal
permit
required
the
level
do
(30 pm),
above the limit
particles
is
actual diame-
presumably
turbulence
have
average
if
actual
diameter varies.
even the
15.22%, i.e.,
±
between
pm20
ters of
Thus,
pm
pm.
our con-
16.956
and 23.044
specification
The
contains two relevant
pm” should not en-
struction of “about 30
range that
statements that bear on the
pm or
compass actual diameters of 23.044
in the
encompass
was intended to
“about”
less.
First,
patents
in suit.
context
speci-
evidence in the
particles
clear that
From the intrinsic
specification makes
fication,
conclude that “about
attain
we therefore
|xm
nominal 50
diameters
with
Waters,
individual,
pm”
particles
ing
non-spherical
include
with
to
an
should
larger,
particle may
average
but
have an
diameter
pm
25.434
diameters and
pm
|xm,
that is “about”—but less than —30
but
with 23.044
particles
should exclude
average
average
of all of the
diameters
The specification
diameters and smaller.3
particles
of all of the
in the
not, however,
column must
prоvide any concrete
does
|xm.
greater
disagree.
be
than 30
We
guidance
par
to whether a column with
specification
it
makes clear that when
with
diameters between
ticles
measured
diameter,
an average
refers to
it is refer-
pm
|xm meets the “about
23.044
and 25.434
an
ring
average
multiple
to
diameter of
any
pm”
guid
limitation. Absent
such
particles
given configuration,
in a
not the
ance,
draw a
we neither can nor should
average
single particle.
diameter of a
Id.
Rather,
hard and fast numeric line.
we
(“The
col.11
term
11.19-28
‘mean diameter’
pm”
accomplish
construe
“about 30
as used herein is intended to mean the
particle
function of the
limit on
low-end
(mean)
average
diameter or cross-section
specification.
in the
From
size described
particles regardless
dimension of the
that,
that,
particles
be
we conclude
particle configuration and is not to be
|xm
pm,
tween 23.044
and 25.434
“about 30
particles
construed as limited to
that are
|xm”
particle
sufficiently large
means a
necessarily spherical
regular
or
solids
containing
size to assure that a column
”
added)).
(emphases
....
attaining
capable
is
turbulence.
approach
necessary
This functional
Second, Waters claims that “[t]he
appropriate,
impre
because the deliberate
history
filе
conclusively
establishes
cision
in
inherent
the word “about” makes
the inventor intended and understood that
impossible
it
to “capture the essence” of
required particles
his invention
with a min
the claimed
in
invention
strict numeric
average
pm.”
imum
diameter of 30
Br. of
terms.
Corp.
Festo
v. Shoketsu Kinzo
Cf.
Appellant
Corp.
Defendant-Cross
Waters
Co., Ltd.,
Kogyo
ku
Kabushiki
535 U.S.
points
at 10.
Waters
various state
722, 731,
122 S.Ct.
Cohesive
brought
equiva
what would
apply
otherwise be
limitation to which Cohesive seeks to
scope
lents of
limitation into the literal
of
equivalents
thе doctrine of
is the “about 30
claim,
equivalents
the doctrine of
held,
pun” limitation. As we have
because
scope
unavailable to further broaden the
way
patentee
that the
has used the
circumstances,
claim.
pat
these
word “about” in the context of the written
rely
equiv
entee cannot
on the doctrine of
case,
claims in this
description and the
encompass
alents to
equivalents
equiva
pan”
the term “about 30
construction of
Here,
|xm”
lents.
because the “about 30
requires
purpose
consideration of the
or
already literally
limitation
encompasses di
“criticality” of the limitation to the inven-
equivalent
pm
ameters that are
in
Ortho-McNeil,
U.S.
S.Ct.
137 L.Ed.2d
(1997) (“An analysis
played
of the role
1. Lost Profits
by each element
in the context of the
specific patent claim will thus inform the
trial,
Following a bench
the dis
inquiry
toas whether a substitute element
court,
trict
applying the so-called Panduit
function, way,
matches the
and result of
test, concluded that Cohesive failed to
element,
the claimed
or whether the sub-
prove
profits
that it was entitled to lost
plays
substantially
stitute element
a role
a result of infringement by Waters’s 30
element.”)
from
different
the claimed
Cohesive,
pm columns.
F.Supp.2d
has,
patentee
here
its choice of claim 118;
generally
see
Corp.
Panduit
v. Stah
language, captured
“range
the same
Works,
(6th
lin Bros. Fibre
whether the
specification
prosecution history,
noninfringing substitutes
as
acceptable
require polymeric particles.
See id. at
that
used in
term is
Standard Havens.
“rigid”
susceptible
106 & n. 6. Because
was
to a reasonable construction under which
Infringement
2. Willful
products
infringe,
Waters’s
did not
there
Applying the standard that we
objectively
not an
that
high
was
likelihood
in In re Seagate Technology,
articulated
infringement.
Waters’s actions constituted
Cir.2007)
LLC,
1360,
(Fed.
497 F.3d
Seagate,
See
F.Supp.2d 107. establish “[T]o Damages 3. Enhanced infringement, patentee willful a must show argues that Cohesive the district court by convincing clear and evidence erred in declining to award enhanced dam infringer despite objectively high acted an ages, finding even the absence of a its in likelihood actions constituted Specifically, willfulness. relying on the fringement of a valid If patent.... this analysis Gajarsa’s in Judge concurring objective satisfied, threshold standard is opinion Seagate, Cohesive asks the court patentee must also demonstrate that to overrule Beatrice Foods Co. v. New (determined objectively-defined this risk England Printing Co., & Lithographing by developed infringe the record which we held that “enhancement of dam proceeding) ment was either known or so ages premised infringe must be on willful that it obvious should have been known to 1576, ment or bad faith.” 923 F.2d infringer.” Seagate, accused 497 F.3d (Fed.Cir.1991) (quoting Yarway Corp. v. at 1371. “The finding court’s willful [on] USA, Inc., Eur-Control 775 F.2d fact, infringement subject is one of (Fed.Cir.1985)); Seagate, see also 497 F.3d clearly erroneous standard of review.” J., (Gajarsa, concurring) (urging Orths., Inc., Stryker v. Corp. Intermеdies overruled). that Beatrice Foods be (Fed.Cir.1996). 1409, 1413 majority of en Seagate banc court in Foods, did not elect to overrule Beatrice above, As discussed in detail proper and we therefore remain bound “rigid” dispute. construction of was in Ac- See, Fin., e.g., decision. Hometown Inc. v. Waters, cording to Cohesive had disa- States, (Fed. United polymeric particles vowed all as not “rigid” Cir.2005) (“[W]e are bound to follow our during prosecution based on the Guiochon precedent own by prior pan set forth we, declaration. While like district els....”). court, have concluded that the Guiochon declaration did not disavow all polymeric D. Reassignment Cohesive, particles, see 526 F.Supp.2d at agree 106 n. we nonetheless with the requests Cohesive this district court that reasonably assigned Waters could case be a different district proper we describing Because conclude that the claim the district court’s factual errors in sufficiently question testing performed construction was close that Waters to assess willfulness, finding plastic foreclose we need whether its resisted deforma- arguments concerning not address Cohesive’s tion. remand, turbing is the fact that Cohesive moved for pursuant to 28 judge on court injunction preliminary against |xm the 25 of a reassignment § 2106. “The U.S.C. *23 7, 2002, on March that columns Cohesive after judge district court to a new case that converted motion to motion for sum- that is not question a procedural remand is mary judgment sug- at the district court’s jurisdiction. to this court’s exclusive unique and that the gestion, district court still did regional governs circuit law Accordingly, years, not rule on the motion for five de- Techs., Eolas questions.” reassignment inquiries. status spite repeated See 526 1279, Corp., 457 F.3d v. Inc. Microsoft F.Supp.2d at (Fed.Cir.2006). First Circuit inquiry to determine three-part Despite displeasure delays uses a our with the case, appropriate: reassign- in this we decline to order reassignment is whether argument makes no ment. Cohesive —and (1) original judge would whether no reason —that the district court we see remand to reasonably expected upon be difficulty put- substantial judge would have difficulty putting in out have substantial ting previously expressed his views or previously-expressed of his or her mind Moreover, findings out of his mind. reas- findings determined to be erro- views or signment necessarily great would entail a that must be neous or based on evidence duplication deal of and of effort. waste rejected, have affirmed much of the district We (2) case, to reassignment judgment is advisable court’s in this and the lim- whether justice, ited issues on which we have remanded appearance and preserve easily judge addressed will be most (3) reassignment would еntail whether presided jury who over the earlier proportion out of duplication waste and already is familiar with bench trials and any gain preserving appearance balance, conclude that no the case. On we of fairness. necessary expect reassignment is Garcia, Santiago Velazquez remaining v. on remand will Maldonado the issues be Cir.1987). (1st delay. addressed without undue single argument makes a Cohesive III. CONCLUSION year reassignment: that the six favor of reasons, reject foregoing For the we of in- delay jury’s verdict between court’s construction of the term district judg- court’s fringement and the district term |xm” and construe the “about remaining on the issues shows ment reverse the district described above. We antipa- a “clear judge the district court has summary judgment of no grant court’s matter,” reassignment thy for this so columns, pm infringement by literal the 25 necessary preserve appearance grant judg- the district court’s reverse justice. Plaintiff-Appellant Br. of Cohesive of law on the issue of ment as matter Techs., Inc. at 54-55. Waters has court’s anticipation, vacate the district opposes indicated whether it favors or judgment that Cohesive is not entitled reassignment. remand. In all other damages, actual judgment of the district court respects, that there was agree with Cohesive We is affirmed. unacceрtable delay an unreasonable and AFFIRMED-IN-PART, conclusion of the bench trial between the REVERSED- IN-PART, VACATED-IN-PART, AND court’s August 2002 and the district Even more dis- REMANDED judgment August 2007. Although a claimed invention can be ob
COSTS it anticipated, vious but not “cannot have bear its own costs. party Each shall anticipated and not been obvi been have Fracalossi, ous.” In re 1982) (CCPA added). Indeed, (emphasis MAYER, Judge, dissenting. Circuit repeatedly emphasized this court has majority’s I dissent from the decision to anticipates “a disclosure that ... also ren anticipation remand issue § ders the claim invalid under *24 anticipation epitome is the at The obviousness.” district court. See ante 1362-65. Sears, Co., Connell v. Roebuck & 722 F.2d jury having that found U.S. Patent No. (Fed.Cir.1983) (citations 1542, in 1548 5,772,874 is not obvious under 35 U.S.C. omitted); quotation ternal marks see 103, § remanding the case for “further CellPro, Inc., Hopkins v. Johns Univ. on whether the an- proceedings” is (Fed.Cir.1998) (a 1342, F.3d 1357 n. 21 ticipated is a waste of time and resources. anticipates disclosure that also renders a obvious); Pearson, It is true that the tests for obviousness claim In re 494 F.2d (CCPA 1974) 1399, distinct, (anticipation is anticipation are and that a obviousness”) (citations ... “the ultimate district court should not refuse submit omitted); quotation and internal marks anticipation jury merely claim of to the Kalm, 1466, 959, re 54 C.C.P.A. 378 F.2d infringer because an accused also asserts (1967) (“Necessarily, description in a an obviousness defеnse. It does not fol reference which is insufficient as a matter however, low, jury already that if a has composition of law to render a of matter determined that an invention is not obvi ordinary obvious to one of skill in the art ous, required remand is it can so would a fortiori be insufficient ‘describe’ anticipat consider whether the invention is composition as that term is used [for jury ed. The here considered all of the purposes establishing anticipation], references, allegedly prior art anticipating complete description being but the ulti but nonetheless returned a verdict that the obviousness.”). epitome mate or The asserted claims are non-obvious. If a ser majority’s assertion that a claim can be prior art ies references did not render obvious, anticipated but not flies obvious, the claimed invention how could long precedent face of a line of one of those references contain each and contrary. surprisingly, Not it is unable to every element of the claimed invention so remanding cite a case to the district court it anticipated? Schering as to render See anticipation, for consideration of while at Pharms., Inc., sustaining the same time a determination Corp. v. Geneva 339 F.3d claims issue are not obvious.** (Fed.Cir.2003) (a claim is antici pated every if each and limitation is found fallacy The majority’s approach reference).* in a art single prior can be illustrated a simple example. * Indus., majority Top- The cites Trintec Inc. v. claims that are not obvious can ever be antici- (Fed.Cir. pated. Corp., Trintec does not state that non-obvi- U.S.A. 2002) inherently anticipated. ous claims can be proposition for the that “obviousness is ** anticipation.” inherent Ante at 1364. majority’s The reliance on Mendenhall v. Ce Inc., Trintec held that an (Fed.Cir. invention is not inherent darapids, ly anticipated merely 1993), because it is obvious. unsupportable. That case held that That, however, wholly separate is a issue from a district court did not abuse its discretion in here, presented refusing jury the issue which is whether to set aside a verdict of non- follows, there- a fruit. It Every apple is fruit, it
fore, something is not a if Similarly, since our apple. an
cannot be every antici- makes clear
precedent obvious, that if a it follows
pated claim is obvious, anticipat- it cannot be
claim is not
ed. already dispute has present I nearly a decade and see
dragged on for the district court and
no reason to burden proceedings. parties with additional majority anticipa-
Although the sends court for
tion issue back to the district with proceedings [its]
“further consistent *25 ante it one wonders what
opinion,” prior do. Given the
expects the court to determination, it can
non-obviousness
hardly expect the district court to conclude anticipa-
that there is sufficient evidence jury. to a new I
tion to send the issue court’s directed
would affirm the district anticipation.
verdict on DRAKE, Petitioner, R.
Matthew
v. FOR INTERNATIONAL
AGENCY
DEVELOPMENT,
Respondent.
No. 2008-3048. Appeals,
United States Court
Federal Circuit.
7,Oct. public can be sus- though jury also re- use and non-obviousness obviousness even tained, required to byprior public whether remand is anticipation but turned a verdict of however, here, jury anticipation even after the has is not whether consider use. The issue are not obvious. finding anticipation by prior determined the claims a verdict both