Docket No. 2014-1540
DYK, MOORE, O’MALLEY
April 16, 2015
Brief Summary: DC grant of SJ for anticipation affirmed in part because questions regarding the criticality of the claimed ranges to the problem being solved were not raised.
Summary: Ineos appealed DC grant of SJ that US 6,846,863 directed to polyethylene-based compositions used to make shaped products such as screw caps for bottles is invalid as anticipated under 35 U.S.C. § 102 (2006). The ‘863 patent focused on including specific amounts of polyethylene (94.5%, standard density of 945 kg/m3), amounts and types of lubricants (0.05-0.5% of a particular type of fatty acid amide, 0-0.15% of a “subsidiary lubricant”) and additives (0 to 5% “selected from…”) to solve problems associated with bad odor and flavor of food products stored in contact with prior art caps. Berry successfully argued the ‘863 claims were anticipatd by US 5,948,846 since the “subsidiary lubricant” and “additive” limitations are optional since the claimed range begins with 0%. The FC opinion explained that the grant of SJ is reviewed under the law of the relevant regional circuit, here the Fifth Circuit which reviews such grants de novo. Ineos argued the court erred in granting SJ because genuine disputes of material fact were present (“the ‘846 patent discloses no single species within the genus of claim 1”, only “discloses ranges for amounts of lubricants, not particular individual point values” which it alleged are critical (citing OSRAM Sylvania, FC 2012), and inventor testimony that the range is critical to avoid unnecessary manufacturing costs and improves appearance). The FC agreed with the DC, explaining that “[w]hen a patent claims a range, as in this case, that range is anticipated by a prior art reference if the reference discloses a point within the range” (Titanium Metals, FC 1985). It also explained that “[i]f the prior art discloses its own range, rather than a specific point, then the prior art is only anticipatory if it describes the claimed range with sufficient specificity that a reasonable fact finder could conclude that there is no reasonable difference in how the invention operates over the ranges” and “the disclosure of a range…does not constitute a specific disclosure of the endpoints of that range” (Atofina, FC 2006 and ClearValue, FC 2012). Regarding this point, then, the FC concluded the DC erred in concluding the ‘846 patent discloses particular points (the phrases “at least” and “does not exceed…clearly discloses ranges, not particular individual values”). However, this was found not to be fatal to Berry’s case “because Ineos failed to raise a genuine question of fact about whether the range claimed is critical to the operability of the invention” (citing Atofina (350-450oC critical), OSRAM (“less than 0.5 torr” critical), ClearValue (“50 ppm or less” not argued to be critical vs. prior art “150 ppm or less”)). Ineos’ inventor testimony was found to provide any link to “the claimed invention’s slip properties or elimination of odor or taste problems” (not claimed, explained in specification to be the problems solved (see col. 1, lines 5-35 of the ‘863 patent)). The FC also agreed with the DC regarding the “0%” limitations and anticipation of dependent claim 3 (saturated fatty acid is behenamide falls within disclosed genus of 12-35 carbon atoms and Berry’s expert testimony that is a common lubricating agent). The DC grant of SJ was therefore affirmed.