Docket No. 2011-1078, -1100
PROST, SCHALL, MOORE
February 17, 2012
Brief summary: Teaching away is relevant to an obviousness analysis but not anticipation. A broad range (genus) can anticipate a limited range (species) if one cannot show anything special (“critical”) about the limited range (e.g., Atofina, FC 2006).
Summary: Pearl River appealed jury finding that ClearValue’s U.S. patent no. 6,120,690 directed to a processs for clarifying water having a “raw alkalinity less than or equal to 50 ppm” was valid and indirectly infringed and DC denial of its motion for JMOL of invalidity and noninfringement. The jury concluded that Pearl River indirectly infringed the patent “by selling high molecular weight polymers that customers allegedly used in combination with aluminum polymers to clarify water with alkalinity below 50 ppm”; this finding was affirmed. However, the panel disagreed with ClearValue that Pearl River had waived the invalidity defense but the panel disagreed and found the patent anticipated. The DC denied Pearl River’s motion because it concluded the reference taught away “from the true inventiveness of the ’690 patent”, but FC concluded that “teaching away” is “inapplicable to an anticipation analysis” (Celeritas, FC 1998). In fact, ClearValue conceded that the reference teaches every element of the disputed claim but that the range “150 ppm or less is too broad to anticipate the 50 ppm limitation” (citing Atofina, FC 2006). However, the panel noted that the patent in Atofina states that “‘only a narrow temperature range enables the process to operate as claimed, and that problems occur when operating the reaction either below 330°C or above 400°C” (described during prosecution as “critical”). Thus, the broad range of 100-500°C was found not to be anticipatory (“a broad genus (i.e., broad temperature range) does not disclose every species within that genus”). However, in this case, the panel found that ClearValue had not argued that the 50 ppm limitation is “critical” or that “the claimed method works differently at different points within the prior art range of 150 ppm or less”. Thus, the panel reversed because “there is no allegation of criticality or any evidence demonstrating any difference across the range” and, therefore, “the reference teaches and enables each and every element of claim 1”. ClearValue also appealed the DC grant of JMOL that Pearl River did not misappropriate ClearValue’s trade secret. Pearl River successfully argued that the same reference disclosed ClearValue’s trade secret before Pearl River’s alleged misappropriation. ClearValue argued that the reference did not teach “effective” clarification of low alkalinity water but the panel found the alleged trade secret did not contain an “effectiveness requirement”. The trade secret decision was therefore affirmed.
Federal Circuit summaries 