Difference in Prior Art Requirements in Obviousness and Anticipation; Broad Genus Disclosures in Prior Art

By Charles Pierce

 

In ClearValue, Inc. v. Pearl River Polymers, Inc., the Federal Circuit ruled that Claim 1 of U.S. Patent No. 6,120,690 (the ‘690 patent) was invalid because it was anticipated by a broad genus disclosure in U.S. Patent No. 4,800,039 (Hassick).

ClearValue accused Pear River of indirectly infringing the ‘690 patent by selling high molecular weight DADMAC polymers to customers who would then use the DADMAC polymers and aluminum polymers to clarify water.  Claim 1 of the ‘690 patent reads:

A process for clarification of water of raw alkalinity less than or equal to 50 ppm by chemical treatment, said process comprising:

adding to the water and, prior to or after adding to the water, blending at least one aluminum polymer with a high molecular weight quaternized ammonium polymer in an amount sufficient to form a flocculated suspension in the water and to remove turbidity from the water, said high molecular weight quaternized ammonium polymer comprising at least an effective amount of

high molecular weight di-allyl di-methyl ammonium chloride (DADMAC) having a molecular weight of at least approximately 1,000,000 to 3,000,00 and

said aluminum polymer including at least an effective amount of poly-aluminum hydroxychloride [ACH] of a basicity equal to or greater than 50%.

(Emphasis added.)  ClearValue also alleged misappropriation of trade secrets, one of which covered a similar clarification process.  The jury found for ClearValue on both issues.  The district court denied Pearl River’s motions for JMOL of no infringement and invalidity, but granted Pearl River’s motion for JMOL of no misappropriation.

The Hassick patent discloses a “composition useful for reducing turbidity in aqueous systems which comprises (a) [ACH]; and (b) at least one water-soluble cationic polymer selected from [a group which includes di-allyl di-methyl ammonium chloride].”  Hassick further discloses that this composition can be used to “synergistically reduce turbidity in aqueous systems, particularly low-turbidity . . . low-alkalinity systems (i.e. 150 ppm or less).”  Hassick’s results, however, also showed that the DADMAC and ACH combination does not work well in reducing the turbidity of low-alkalinity water.

ClearValue argued that Hassick’s results teach away from the inventiveness of the ‘690 patent, and therefore, the use of ACH with high molecular DADMAC would not have been obvious to one of ordinary skill in the art.  The district court cited this as sufficient to uphold the jury’s finding of no anticipation or obviousness.  While agreeing that whether prior art teaches away from an invention is relevant to obvious analysis, the Federal Circuit ruled that this was of no consequence to anticipation analysis.  The only requirement is that the prior art describe “every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.”  35 U.S.C. § 192.

ClearValue also argued that Hassick’s disclosed method was too broad to anticipate Claim 1.  Specifically, that because Hassick described a method of clarifying water with an alkalinity of 150 ppm or less, it did not anticipate the claimed method of clarifying water with an alkalinity of 50 ppm or less.  ClearValue cited Atofina v. Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006).

In Atofina, the patent at issue claimed a method of synthesizing difluoromethane at a temperature between 330 and 450 degrees Celsius.  Atofina noted that the particular temperature range was critical to the process, and that a lower temperature of 300 degrees Celsius would not work.  The prior art disclosed a temperature range of 100 to 500 degrees Celsius.

The Federal Circuit distinguished Atofina on this basis, stating, “In Atofina, the evidence showed that one of ordinary skill would have expected the synthesis process to operate differently outside the claimed temperature range . . .”  While the prior art in both cases taught a broad genus, in ClearView there was no such indication that the 50 ppm disclosed is necessary to the process, nor was there any indication that the process would operate differently.  Moreover, one of Hassick’s examples took place at 60-70 ppm.  Because of the lack of a “considerable difference between the claimed range and the range in the prior art,” the Federal Circuit ruled that Claim 1 of the ‘690 patent was anticipated, and therefore unpatentable.

Finally, the Federal Circuit affirmed the district court’s grant of JMOL that Pearl River did not misappropriate ClearView’s trade secret because Hassick publicly disclosed the elements of the trade secret in question prior to the alleged misappropriation.

 

Key Points and Practice Tips:

  • While the fact that prior teaches away from an invention irrelevant in an obviousness analysis, it is not relevant to an anticipation analysis.
  • A genus disclosure does not necessarily disclose every species within the genus, there must be a “considerable difference between the claimed range and the range in the prior art.”  If a claim falls within a described genus, emphasize the differences between the ranges claimed and points outside that range.
  • If all the elements of a trade secret are publicly disclosed before an alleged misappropriation, then there is no misappropriation because there is no trade secret.  This is true even if the reference “teaches away from” the process claimed as a trade secret.
  • Be careful when writing a patent application.  If prior art discloses a wide range that encompasses a range claimed in the invention, then stress why the range claimed is different or necessary.  In Atofina, the “considerable difference between the claimed range and the range in the prior art” was what precluded a finding of anticipation.
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2 thoughts on “Difference in Prior Art Requirements in Obviousness and Anticipation; Broad Genus Disclosures in Prior Art

  1. Key in the ClearValue Case and evidenced all over the case, as well as the prosecution file, is that the overlapping range was molecular weight, wherein was demonstrated both critical range and surprising/unexpected results.

    The real question is “Why did the panel ignore the critical parameter which had demonstrated surprising/unepxted results and argue that an overlapping yet non-critical paramter should have been labelled critical?”

    Further, there is no evidence of ClearValue stating that Hassick taught all of the claim limitaitons.

    Further still, the footnote on page 6 of the Ruling referencing Hassick is incorrect.

    Is this not creating facts?

    Is this not ex-post facto and a violation of the 7th Amendment?

    Lastly, what about Texas Trade Secret Law. The Trade Secret Claim Standard is In re Bass in Texas. How can a federal circuit judge re-write Texas Law?

    This makes no sense to me. Someone, please help?

    • The molecular weight range of DADMACs used in the ‘690 patent is 1,000,000 to 3,000,000. Hassick discloses the use of DADMACs with molecular weights of 1,000,000 to 2,000,000. I would guess that the Court thought these ranges were similar enough that this issue did not warrant further attention.

      It does not appear that any claims that ClearValue explicitly stated that Hassick taught all of the claim limitations were made. Pearl River argued that ClearValue impliedly admitted that Hassick taught all of the claim limitations by arguing that Hassick teaches away from the use of high molecular weight DADMACs.

      By my reading, the footnote on page 6 of the Federal Circuit’s ruling is correct. Looking at Hassick, it does in fact teach that a combination of ACH and high molecular weight DADMAC polymer reduces rabidity in aqueous systems. Hassick does not use the DADMAC abbreviation, however, preferring to use DMDAAC. Because the footnote is not wrong, I do not think the Court was creating facts.

      Finally, the Federal Circuit did not rewrite Texas law. They affirmed the district court’s decision to grant Pearl River’s motion for JMOLs. The district court’s decision was based on In re Bass. See ClearValue, Inc. v. Pearl River Polymers, Inc., 735 F. Supp. 2d 560, 571 (E.D. Texas 2010).

      Charles Pierce

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