The following is a summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit for the week ending April 17, 2015. Linda Chang and Michele Glessner prepared this edition.
Patentable Invention: Anticipation: Generally
Ineos USA LLC v. Berry Plastics Corp., No. 14-1540 (Fed. Cir. (S.D. Tex.) Apr. 16, 2015). Opinion by Moore, joined by Dyk and O’Malley.
In affirming summary judgment that a patent was invalid as anticipated under 35 U.S.C. § 102, the Federal Circuit held that disclosure of a small genus in the prior art can be an anticipatory disclosure of each species of that genus. Specifically, when a patent claims a range, that range is anticipated by prior art that discloses a point within the range. If the prior art discloses a range, rather than a specific point, then the prior art is only anticipatory if there is no reasonable difference in how the invention operates over the ranges.
Ineos USA LLC (“Ineos”) sued Berry Plastics Corporation in district court for infringement of various claims of its U.S. Patent No. 6,846,863 (“the ’863 patent”) dealing with polyethylene-based compositions that can be used to form shaped products such as screw caps for bottles. The district court ruled on summary judgment that the ’863 patent was invalid as anticipated by prior art reference U.S. Patent No. 5,948,846 (“the prior art patent”). Ineos appealed.
Independent Claim 1 required that the composition have 0.05 to 0.5% by weight of a primary lubricant that is a saturated fatty acid amide. The prior art patent disclosed a composition having 0.1 to 5% by weight of stearamide, which is a saturated fatty acid amide. The Federal Circuit held that Ineos failed to raise a genuine question of fact about whether the claimed range is critical to the operability of the invention because, even though the specification of the ’863 patent disclosed improved properties that resulted from the claimed invention, Ineos did not establish why those properties would differ if the range from the prior art was substituted by the range claimed in the patent, nor did Ineos discuss why those properties would not have been expected based on the prior art. Thus, the prior art patent’s range anticipated the claimed range.
Moreover, because the prior art patent disclosed zero secondary lubricant and the claims at issue recited subsidiary lubricant in an amount between 0 and 0.15% by weight, the prior art patent disclosed one species of the claimed genus, and thus the criticality of the claimed range of secondary lubricant was not relevant. Therefore, the court affirmed the district court’s grant of summary judgment on this claim.
With respect to dependent Claim 3, the prior art patent disclosed a genus of saturated fatty acid amides, whereas Claim 3 recited a particular saturated fatty acid amide falling within the narrower preferred genus disclosed in the prior art. The Federal Circuit held that verbatim disclosure of a particular species is not required in every case for anticipation because disclosure of a small genus can be a disclosure of each species within the genus. Thus, the court held that because Ineos did not provide any information to support its contention that the prior art genus does not disclose the recited species, Ineos failed to raise a genuine dispute of material fact with respect to Claim 3. The court thus affirmed the district court’s grant of summary judgment for this claim.
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