Docket No. 2015-1950, -1967
WALLACH, HUGHES, STOLL
December 15, 2016
Brief Summary: DC grant of SJ for invalidity (inherent anticipation) reversed; grant of SJ of no inequitable conduct affirmed.
Summary: U.S. Water (USW) appealed DC grant of SJ to Novozymes based on invalidity of its US 8,415,137 and 8,609,399 relating to methods for producing ethanol from milled grain (“methods of reducing fouling through the use of phytase”) as inherently anticipated. Novozymes appealed DC finding of no inequitable conduct. The DC found that the first seven elements of the claims were disclosed by Veit and Antrim and “determined that ‘the critical issue’ was whether Veit or Antrim inherently disclosed ‘adding phytase for the purpose of reducing deposits.’” It concluded it was inherently disclosed because “deposit reduction [was] a natural result of the methods” disclosed by the prior art but noted that “Veit and Antrim do not expressly identify the benefit that [USW’s] patents identify” but “nevertheless inherently disclose that benefit.” USW argued grant of SJ was improper because the DC “acknowledged the existence of a genuine dispute as to a material fact.” The FC panel opinion explained that “[i]nherency…may not be established by probabilities or possibilities” (“The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Cont’l Can, FC 1991) It concluded the DC erred in deeming irrelevant the fact that “U.S. Water…adduced evidence[, including expert testimony,]…that practicing Veit and Antrim will not always results in deposit reduction”, noting that the DC “recognized this was conflicting evidence that went to the core of an inherenty anticipation analysis, but concluded this evidence did not preclude” SJ and “improperly made credibility determinations and weight conflicting evidence” which are “jury functions” (Anderson, US 1986). Thus, the grant of SJ based on invalidity for inherent anticipation was reversed. Novozymes argued the DC erred in granting SJ of no inequitable conduct (Therasense, FC 2011; Ferring, FC 2006; Ohio Willow Wood, FC 2016 (“withholding or misrepresentation” that “would have prevented a patent claim from issuing” (materiality) and “specific intent to mislead”)). It argued that during prosecution of related US 8,039,244 USW argued its amendment “overcame Veit, where ‘phytase is added before fermentation’” but “[a]round the same time” made “seemingly contradictory statements” (according to the presiding judge in that hearing) during litigation with another party. The application leading to the ‘137 patent was then amended to “broadly require ‘adding phytase to an ethanol processing fluid in the plant’” (and “identified the differences with claim 1 of the ‘244 patent), and “this purported distinction” was later identified by a third party which was noted in the file history by the examiner. The DC concluded “Novozymes falls short of establishing the but-for materiality” of the litigation-related information and that the differences in the ‘244 and ‘137 claims “would have been amply clear to the examiner” and “th[e] third party submission provides one more reason”. The FC panel found “no genuine dispute about this material fact” and that is therefore did not need to address intent (“U.S. Water did not withhold or misrepresent information to the USPTO.”)