Docket Nos. 2012-1091, -1135
O’MALLEY, PLAGER, REYNA
December 13, 2012
Brief Summary: A broad genus (e.g., range) may not necessarily anticipate a species where sub-range shown to be critical, or that the claimed method worked differently at different points within the prior art range. A trial court must provide an explanation regarding obviousness conclusions (“Merely saying that an invention is a logical, commonsense solution to a known problem does not make it so.”)
Summary: OSRAM appealed DC grant of SJ of invalidity of certain claims of its U.S. Pat. No. 5,834,905 relating to electric lamp assemblies. The DC granted SJ to AITI regarding OSRAM’s claim 32, finding it expressly or inherently disclosed (anticipated) by an earlier US patent to Anderson (‘334 patent). It found the remaining claims to close to grant SJ for anticipation to either party (“battle of the experts”) but also found, after reconsideration, those claims to be obvious in view of Anderson and another reference (Wharmby). The arguments in the appeal relate to “whether the Anderson ’334 patent discloses a buffer gas pressure of less than 0.5 torr”, with AITI relying upon the argument “that the earlier disclosed genus—1 torr or less—necessarily anticipates the later species—less than 0.5 torr” (citing Bristol-Myers Squibb Co., FC 2011 (“the disclosure of a small genus may anticipate the species of that genus even if the species are not themselves recited”); Atofina, FC 2006; and ClearValue, Inc, FC 2012). The FC panel disagreed with AITI, noting that in ClearValue, for instance, the claimed limitation of 50 ppm” was anticipated by “a chemical process with a range of 150 ppm or less” because (at least in part) “ClearValue did not argue that the 50 ppm limitation was critical, or that the claimed method worked differently at different points within the prior art range of 150 ppm or less.” Here, however, the panel concluded that the evidence revealed “clear disputed material” and therefore reversed as to anticipation. Regarding obviousness, the FC panel concluded that the DC “did no more than recite the test of KSR and draw general conclusions based thereon in its ruling on obviousness” (“a trial court must at least provide its analysis and grounds for entering judgment somewhere in the record”) (citing TriMed, FC 2010 (“Instead of supporting its obviousness analysis with cogent reasoning, the order merely states that ‘[a] common sense [sic] solution to this problem [i.e., pin migration] involves stabilizing the pin against…displacement…[and] the logical solution would be to select a prior art plate that had holes with an appropriate diameter’…Merely saying that an invention is a logical, commonsense solution to a known problem does not make it so.”)) For this and other substantive reasons, the DC grant of SJ was reversed and remanded with instructions to consider OSRAM’s evidence regarding secondary considerations (“long felt need, failure of others, and industry praise”).