To anticipate, a prior art reference must disclose, either expressly or inherently, all of the elements of the claim arranged or combined in the same way as recited in the claim.

Therasense, Inc. v. Becton, Dickinson and Co., No. 2009-1008, -1009, -1010, -1034, -1035, -1036, -1037 (Fed. Cir. Jan. 25, 2010)

The patentee sued for infringement of a patent related to the placement of electrochemical sensors for measuring the glucose level in blood. The alleged infringer argued that the claims were anticipated and obvious. The district court instructed the jury on anticipation and obviousness. For anticipation, the jury was instructed that: “it is not necessary that the prior-art reference expressly lay out the elements in the exact way laid out in the claim.” The jury answered yes in response to a single question as to whether the claims were anticipated or obvious. The district court denied the patentee’s motion for judgment as a matter of law, which contended that the jury was erroneously instructed on anticipation, and the patentee appealed. The Federal Circuit affirmed.

The court agreed with the patentee that the district court’s instruction on anticipation was erroneous. The anticipation instruction incorrectly suggested that anticipation could be proven by “a prior art disclosure of individual claim elements that ‘could have been arranged’ in a way that is not itself described or depicted in the anticipatory reference.” To anticipate, a prior art reference must expressly or inherently disclose the elements of the claim “arranged or combined in the same way as recited in the claim.” A prior art disclosure merely cataloging separate elements of the claim without arranging or combining the elements is not sufficient for anticipation.

A jury verdict will be set aside based on erroneous jury instructions only if the error had a prejudicial effect. In this case, because the jury answered a single question that the claims were anticipated or obvious, the erroneous instruction would not have had a prejudicial effect if the claims “would have been obvious as a matter of law, such that no reasonable jury could have returned a verdict that the claims are not obvious.” After a detailed analysis of the prior art, the court concluded that the claims would have been obvious as a matter of law. Thus, there was no prejudicial effect from the erroneous jury instruction.

A copy of the opinion can be found here.