Federal Circuit No. 2014-1540
The Federal Circuit in Ineos USA LLC v. Berry Plastics Corp. (Fed. Cir. April 16, 2015) affirmed the summary judgment decision by the U.S. District Court for the Southern District of Texas that found Ineos’s patent invalid as anticipated under pre-AIA 35 U.S.C. § 102. Ineos had accused Berry Plastics of infringing U.S. Patent No. 6,846,863 (the ‘863 Patent).
The ‘863 patent is directed to polyethylene-based compositions that can be used to form shaped products, such as screw caps for bottles. At the time of the invention, the lubricants employed to optimize the slip properties of such screw caps were known to impart bad odor and flavor to products stored within the bottles. The solution set forth by the ‘863 patent is a composition with specific amounts of polyethylene, a primary lubricant, an optional subsidiary lubricant, and an optional additive. In particular, claim 1 of the ‘863 patent requires “0.05 to 0.5% by weight” of the primary lubricant, which is defined in the claim as a class of saturated fatty acid amides.
Berry plastics asserted that claim 1 of the ‘863 patent is anticipated by U.S. Patent No. 5,948,846 (the ‘846 reference). Similar to the ‘863 patent, the ‘846 reference is directed to a polyolefin-based composition including a lubricating agent for the manufacture of shaped objects, particularly bottle caps. The parties did not dispute that stearamide, which is disclosed in the ‘846 reference, is a compound within the class of saturated fatty acid amides recited as the primary lubricant in claim 1 of the ‘863 patent.
Regarding the content of the lubricant, the ‘846 reference discloses “a total quantity of at least 0.1 parts by weight per 100 parts by weight of polyolefin, in particular of at least 0.2 parts by weight, quantities of at least 0.4 parts by weight being the most common ones; the total quantity of lubricating agents does not exceed5 parts by weight, more especially 2 parts by weight, maximum valuesof 1 part by weight per 100 parts by weight of polyolefin being recommended.” Note: The parties agreed for this litigation that parts by weight is equivalent to percent by weight (hereinafter “wt%”). The court determined that the disclosure “at least 0.1” wt% set a minimum content of lubricant, and that the disclosure “does not exceed 5” wt% set a maximum content of lubricant. This results in the ‘846 reference disclosing a range of lubricant of from 0.1 to 5 wt%. Thus, the primary issue in Ineos was whether the broad range of the ‘846 reference (0.1 to 5 wt%), which overlaps the range of the ‘863 patent (0.05 to 0.5 wt%), is anticipating.
The court first determined that this disclosure does not anticipate by virtue of disclosing a point (i.e., 0.1 wt%) within the claimed range (0.05 to 0.5 wt%). SeeTitanium Metals v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985) (“When a patent claims a range, … that range is anticipated by a prior art reference if the reference discloses a point within the range.”). The court stated that the ‘846 reference is clearly disclosing ranges with regard to the content of the lubricant, not particular individual values. Further, the court noted that “the disclosure of a range … does not constitute a specific disclosure of the endpoints of that range.” Atofina v. Great Lakes, 441 F.3d 991, 1000 (Fed. Cir. 2006).
The court then looked at whether the overlapping range was anticipating. According to the court,“[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 withsufficient specificitysuch that a reasonable fact finder could conclude that there isno reasonable difference in how the invention operates over the ranges.” SeeAtofina v. Great Lakes, 441 F.3d 991, 999 (Fed. Cir. 2006); ClearValue v. Pearl River Polymers, 668 F.3d 1340, 1345 (Fed. Cir. 2012). In other words, while Titanium metals holds that the disclosure of a species will anticipate a genus, Atofina and ClearValue stand for the proposition that the disclosure of genus does not always anticipate a species.
The court then reviewed its decisions in Atofina (overlapping range anticipating), ClearValue (overlapping range not anticipating) and OSRAM Sylvania v. American Induction Technologies, 701 F.3d 698 (Fed. Cir. 2012) (summary judgment of anticipation by an overlapping range over ruled). In other words, the court reviewed these cases to determine whether claim 1 of the ‘863 patent would be saved (Atofina / OSRAM) or lost (ClearValue).
Atofina involved a patent claiming a method of synthesizing difluoromethane at a temperature between 330-450 °C. The prior art reference disclosed a broad range of 100-500 °C, and a preferred range 150-350 °C. According to the court, Atofina’s patent and its prosecution history described the claimed temperature range as critical to the invention, and stated that the synthesis reaction would not operate as claimed at a temperature outside the claimed range. Thus, the court held that the patent in Atofina was not anticipated. The court asserted that, because the claimed method operated differently, or not at all, outside the claimed range, there was a “considerable difference” between the prior art’s broad disclosure and the claimed “critical” temperature range, such that “no reasonable fact finder could conclude that the prior art describes the claimed range with sufficient specificity to anticipate this limitation.
ClearValue involved a patent claiming a method “for clarification of water of raw alkalinity less than or equal to 50 ppm by chemical treatment.” The prior art taught clarifying water with alkalinity of150 ppm or less. Here, the overlapping range of the prior art was found to be anticipating. The court stated that ClearValue did not argue that the claimed range was critical to the invention, and did not argue that the claimed method would work differently within the prior art range of 150 ppm or less. Accordingly, there was no evidence of a considerable difference between how the method would operate within the claimed range and within the range disclosed in the prior art.
In OSRAM, the court reverseda grant of summary judgment of anticipation where the patentee raised a genuine issue of material fact concerning the criticality of a claimed range. The patentee presented unrebutted expert testimony and evidence that the claimed pressure range “less than 0.5 torr” was central to the invention and critical to the operation of its lamp. The overlapping prior art range was “approximately 1 torr or less.”
Turning to the present case, Ineos asserted that the summary judgment of anticipation was improper because it allegedly had presented unrebutted evidence that the range was critical to the invention. In other words, Ineosbelieved it raised a genuine issue of material fact, rendering the facts of this case similar to Atofina and OSRAM. However, the Federal Circuit disagreed, concluding that Ineos failed to put forth facts that created a genuine issue of material fact about the criticality of the range.
The Federal Circuit first looked to the specification of the ‘863 patent. The court cited the ‘863 patent as disclosing that the lubricants included in the invention function to improve the caps’ slip properties and ability to be unscrewed from a bottle. Further, the court cited the ‘863 patent as disclosing that the novelty of the invention was eliminating the odor and taste problems associated with prior art bottle caps while still maintaining good slip properties. In view of this description, the court asserted that Ineos had not established that any of the properties described in the specification (i.e., slip, odor or taste) would differ if the range from the prior art ‘846 reference is substituted for the claimed range of the primary lubricant.
Next, the court looked at the evidence offered by Ineos as allegedly establishing criticality. Here, Ineos relied on the testimony of an inventor of the ‘863 patent stating that the claimed range is critical to avoid unnecessary manufacturing costs and the appearance of undesirable blemishes on the bottle caps. However, the Federal Circuit did not find this evidence relevant to criticality analysis. According to the court, even if true, this has nothing to do with the operability or functionality of the claimed invention. Thus, Ineos had not established any relationship between avoided cost and prevention of undesirable blemishes, and the invention’s slip properties or elimination of odor and taste problems. Further, the court noted that Ineos did not suggest that the invention’s slip properties or improved odor and taste properties would have been unexpected based on the prior art.
The Federal Circuit summarized that, when the prior art discloses a range, rather than a point, the court must evaluate whether the patentee has established that the claimed range is critical to the operability of the claimed invention. Here, however, the court held that Ineos failed to put forth facts in opposition to summary judgment that created a genuine issue of material fact about the criticality of the range of the primary operability. Accordingly, there was no evidence that the operability of the bottle cap would be improved by the claimed range.
This case provides a good review of the decisions in Atofina, ClearValue, and OSRAM regarding anticipation when the prior discloses a range, rather than a point within the range. Ineos also serves as a reminder that an overlapping range is not necessarily anticipating. In prosecution, an examiner will often conclude, without explanation, that an overlapping range anticipates. However, Ineos holds that evidence of criticality or a difference across the range can be effectively used to rebut anticipation by an overlapping range, at least where that evidence is related to the operability of the invention. While this is substantially consistent with Patent Office practice under MPEP 2131.03(II), you will usually have to remind the Examiner.