Judges: Mayer (dissenting), Linn (author), Prost

[Appealed from D. Mass., Judge Woodlock]

In Cohesive Technologies, Inc. v. Waters Corp., Nos. 08-1029, -1030, -1031, -1032, -1059 (Fed. Cir. Oct. 7, 2008), the Federal Circuit affi rmed-in-part, reversed-in-part, vacated-in-part, and remanded the district court’s holdings regarding infringement, invalidity, inequitable conduct, and damages.

Cohesive Technologies, Inc. (“Cohesive”) owns U.S. Patent Nos. 5,772,874 (“the ’874 patent”) and 5,919,368 (“the ’368 patent”), both directed to high-performance liquid chromatography (“HPLC”) columns. In HPLC, a liquid containing compounds to be separated and measured is passed under pressure through a packed column of chromatographically active particles. The effectiveness of HPLC at separating the compounds from the liquid depends on several variables, including the size and structure of the particles in the column. Each of the ’874 and ’368 patent claims at issue required the same two key limitations: particles that are “rigid” and have average diameters of “greater than about 30 μm.”

Cohesive brought three related actions against Waters Corporation (“Waters”). The fi rst action alleged that Waters’s 30 μm HPLC columns infringe the ’874 patent. The second action alleged that Waters’s 30 μm columns infringe the ’368 patent. And the third action alleged that Waters’s 25 μm columns infringed both patents. In the first action, because Waters alleged that the asserted claims were both obvious and anticipated, the district court chose not to submit anticipation to the jury because it considered anticipation to be a subset of obviousness. The court thus sua sponte entered a directed verdict finding that the ’874 patent was not anticipated. A jury found that the 30 μm columns infringed the ’874 patent and that the ’874 patent was not obvious. The district court then held a combined bench trial on damages, willful infringement, and inequitable conduct in the fi rst action, and on preliminary injunction and SJ motions in the second and third actions. The district court entered judgment in favor of Cohesive in the fi rst action and granted Cohesive’s motion for SJ of infringement and no invalidity in the second action. In the third action, the district court granted Waters’s motion for SJ of noninfringement, concluding that the 25 μm columns did not infringe either patent. Both parties appealed.

On appeal, Waters first challenged the district court’s construction of the claim term “rigid.” The district court construed “rigid” as not excluding polymeric particles. Waters argued that Cohesive had disclaimed polymeric particles during prosecution. The Federal Circuit disagreed, fi nding that Cohesive had disclaimed only particular polymeric particles by distinguishing its particles from the prior art.

The Court also disagreed that the trial evidence was insufficient to permit a reasonable jury to conclude that the particles of its 30 μm columns were rigid. The Court noted that the district court’s construction of “rigid” required that the particles exhibit two characteristics. As Cohesive’s expert at trial had testifi ed to observing both characteristics in Waters’s columns, the Court concluded that there was suffi cient evidence to permit a reasonable jury to conclude that Waters’s 30 μm columns were rigid. The Court therefore affi rmed the district court’s construction of “rigid” and its denial of Waters’s motion for JMOL of noninfringement of the ’874 patent.

Waters next argued that the district court erred in granting JMOL for Cohesive on anticipation rather than allowing the jury to decide the issue. The Federal Circuit agreed, fi nding that the district court did not make a fi nding that no reasonable jury could conclude that the asserted references anticipated. The district court characterized the anticipation case as “iffy,” which does not foreclose a favorable verdict. The Court noted that novelty and nonobviousness are separate conditions of patentability and separate defenses available in an infringement action. The Court stated, “While it is commonly understood that prior art references that anticipate a claim will usually render that claim obvious, it is not necessarily true that a verdict of nonobviousness forecloses anticipation.” Slip op. at 14. Thus, the Federal Circuit held, a court cannot refuse to submit the issue of anticipation to the jury simply because the accused infringer has also asserted an obviousness defense. It is for the litigants— not the court—to make the strategic decision as to whether to assert one, both, or neither of those defenses in a jury trial. The Court therefore reversed the district court’s grant of JMOL on the issue of anticipation.

Finally, Waters asserted that the district court clearly erred by failing to fi nd inequitable conduct. According to Waters, Cohesive committed inequitable conduct by submitting a declaration but failing to disclose that the declarant disagreed with the inventors as to whether the invention generated “turbulent fl ow.” The Federal Circuit noted that the district court had credited Cohesive’s testimony that it did not believe the declarant’s difference of opinion was material to the ultimate conclusion of his declaration and accordingly found no intent to deceive the PTO. Further, Waters had not cited any independent evidence of specifi c intent to deceive. The Court therefore affi rmed the district court’s determination that Waters failed to establish inequitable conduct.

The Federal Circuit next turned to Cohesive’s appeal of the district court’s grant of SJ of noninfringement by Waters’s 25 μm columns. The asserted claims of both patents required that the column particles have average diameters “greater than about 30 μm.” However, because the shape of the particles in an HPLC column is not a uniform sphere, the particles in, for instance, a 25 μm column do not actually have diameters of 25 μm. As a result, the parties disputed the average size of the particles in the accused 25 μm columns—Cohesive alleged an average diameter of 29.01 μm, while Waters asserted an average diameter of 25.22 or 25.16 μm. At trial, the district court construed the language “greater than about 30 μm” to exclude 29.01 μm.

The Federal Circuit held the district court erred in its construction because a court should not construe a claim solely to exclude the accused device and because the district court read the term “about” out of the claim. The Court noted that the term “about” does not have a universal meaning in patent claims. Instead, to construe “about,” a court must focus on the purpose of the limitation in the claimed invention.

Here, the Federal Circuit found that the purpose of the low-end limit on particle size was evident from the specifi cation. The specifi cation taught that the desired fl ow turbulence could not be attained using particles of nominal average diameters of 20 μm, but could use particles of 50 μm. The specifi cation also stated that particles having nominal average diameters of 50 μm had actual average diameters of 42.39 μm—a variance of 15.22%. As a result, the Court determined that the language “about 30 μm” should encompass at least 30 μm ± 15.22%, but not 20 μm ± 15.22%. That is, particles with actual average diameters of 25.434 μm and larger fell within the claims, but not particles having 23.044 μm actual average diameters and smaller. As to particles having actual average diameters between 23.044 μm and 25.434 μm, the Court found that such particles would fall within the claims if the particles were capable of attaining turbulence. Applying this construction to the facts, the Federal Circuit found that the actual average diameters of Waters’s 25 μm column particles and their ability to attain turbulence were disputed issues of material fact. As a result, the district court’s grant of SJ of no literal infringement was inappropriate, and the Federal Circuit reversed.

The Federal Circuit, however, affi rmed the district court’s grant of SJ of noninfringement under the DOE. As the Court explained, though the recitation of numeric ranges in claims does not, by itself, preclude reliance on the DOE, in this case, “about 30 μm” already encompassed particle diameters that performed the same function, in the same way, with the same result as the 30 μm particles. Thus, by electing to include the broadening word “about” in the claim, the Federal Circuit concluded that the patentee had already captured what would otherwise be equivalents within the literal scope of the claim. The Court held that “[w]here, as here, a patentee has brought what would otherwise be equivalents of a limitation into the literal scope of the claim, the doctrine of equivalents is unavailable to further broaden the scope of the claim.” Id. at 29.

Finally, the Federal Circuit vacated the district court’s lost profits conclusion and remanded for a reconsideration of whether the 25 μm columns and another column are acceptable noninfringing substitutes. The Court also affi rmed the district court’s willful infringement determination because the proper construction of “rigid” was a suffi ciently close question to foreclose a fi nding of willfulness. Finally, although the Court agreed that the six-year delay between the jury’s verdict of infringement and the district court’s judgment was unreasonable and unacceptable, the Court denied Cohesive’s request for reassignment on remand, fi nding no evidence that the district court judge would have substantial diffi culty putting his previously expressed views out of his mind.

In his dissent, Judge Mayer disagreed with the majority’s decision to remand the issue of anticipation to the district court. He concluded that if a jury has already determined that an invention is not obvious, it is not possible that the invention could be anticipated by the same references. Accordingly, he would have affi rmed the district court’s directed verdict on anticipation.