Changes in the PTAB: From BRI to Ordinary and Customary Meaning

By Carla Vercellone

In May of this year, the U.S. Patent and Trademark Office (‘USPTO’) issued a Notice of Proposed Rulemaking. Therein, it solicited and collected comments on the potential switch from the Broadest Reasonable Interpretation (‘BRI’) standard to the Ordinary and Customary meaning of a claim in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Circ. 2005) on claim construction for AIA Trial Proceedings. Due to the public’s favoring of this change, the issue was submitted to the Office of Management & Budget (‘OMB’) for final regulatory approval. Finally, the Final Rule Package was published on October 10th, 2018; it will affect inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) proceedings before the PTAB filed on or after the effective date of this new rule, November 13th, 2018.

There are three parts within a claim that patent owners need to keep in mind as they write it: it must be written in a way that an ordinary person could understand; it must cover what the inventor wanted to create and what was actually created; and, it must prove that the claim is valid over prior art. When determining whether patent infringement has occurred, both legal teams and the court look at the patent claims, how they were construed, and interpret the meaning of said claims in order to determine whether a proposed product or method infringes patent rights or whether they are invalid. [1]

The final rule replaces the BRI standard with the claim construction standard used by US federal courts and the International Trade Commission (ITC)—the standard applied in Phillips. Under the final rule, the PTAB will take into consideration any prior claim construction determination that has been made in a civil action or a proceeding before the ITC, if that prior claim construction is timely made of record.

A petition for inter partes review is timely if it’s filed within one year of being served with a complaint alleging patent infringement. 35 USC §315 (b). However, despite filing a petition in a timely manner, the PTAB may still reject an IPR proceeding considering the status of any legal related litigation, such as a district court proceeding. NHK Spring Co. v. Intri-Plex Techs., Inc., Case IPR2018-00752, Paper 8 (PTAB Sep. 12, 2018). On the other hand, the Court of Appeals Federal Circuit has now reversed the common practice of the PTAB to accept certain IPR petitions outside of the 1-year window: previously, if a first-filed complaint outside of this window was dismissed without prejudice, the 1-year period reset. The Court reversed the Board’s long-standing practice in Click-to-call Techs., LP, v. Ingenio Inc., LLC., F.3d, 2015-1242 (Fed. Cir. Aug. 16, 2018).

Until now, parties challenging an unexpired patent in PTAB proceedings often had argued that under the BRI standard a challenged claim must be broader than how a court would interpret the claim, thus increasing the possibility that the claim, read more broadly, would encompass prior art and be canceled as unpatentable. [2] Switching to a standard of construing patent claims in accordance with the Ordinary and Customary meaning from Phillips will minimize differences between the decisions issued in the various fora on similar matters, and will lead to greater uniformity and predictability of the patent grant, improving the integrity of the patent system.

Although the change has officially been made, the Broadest Reasonable Interpretation standard will still be used during patent prosecution and PTAB appeals until November 13th, 2018; if filed on or after said date, the inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) proceedings before the PTAB will be subject to the new rule.

You may read the full Final Rule Package text here, and the UPSTO’s summary here.


[1] Know, Patent. “Patent Claim Construction: Everything You Need To Know”. Upcounsel, 2018

[2] Tennant, David M. “USPTO Changes PTAB Claim Construction Standard From Broadest Reasonable Interpretation To The Standard Used By Courts | White & Case LLP International Law Firm, Global Law Practice”. Whitecase.Com, 2018


Claim Construction By Federal Circuit In Owens Corning v. Fast Felt Corp.

By Michael D. Stein


The Federal Circuit in Owens Corning v. Fast Felt Corporation, 2016-2613 (Fed. Cir. 2017) reversed the Patent Trial and Appeal Board’s (PTAB) final written decision in IPR2015-00650, providing additional guidance on claim construction.  In the Final Written Decision, the Board found that all of the elements of the independent claims of US Patent 8,137,757 are disclosed in Lassiter when combined with either Hefele or Eaton, contrary to Fast Felt’s assertions.  But the Board also found that Owens Corning failed to show that a skilled artisan would have combined Lassiter with Hefele or Eaton.  Thus, the Board rejected Owen’s challenges to claims 1, 2, 4, 6 and 7.  The Final Written Decision hinged on the scope of the phrase “roofing or building cover material.”

In the claim construction analysis, the Board construed the claim term “roofing or building cover material” to mean base substrate materials such as dry felt, fiberglass mat, and/or polyester mat, before coating or saturation with asphalt or asphalt mix, and asphalt coated or saturated substrates such as tar paper and saturated felt.”  The Board performed its claim construction analysis according to the broadest reasonable interpretation standard.  The Board noted that this construction “does not require an asphalt-coated substrate.”  The Board made clear when evaluating Owens Corning’s arguments regarding motivation to combine and reasonable expectation of success, that in view of its construction, the claims required materials that would eventually be coated with asphalt even if they had not already been coated with asphalt.

The preferred embodiments in the ‘757 patent focus on roofing materials that are or will be coated or saturated with asphalt or asphalt mix.  The Federal Circuit however held that the claims were not so limited, and they are not even limited to “roofing materials” as they expressly include “building cover material also.

The Federal Circuit stated that the broadest reasonable construction of “roofing or building cover material” would include materials that neither have been nor are to be coated or saturated with asphalt, and thus the Board erred in construing the claims.  According to the court, Lassiter teaches using building cover materials that are not and will not be asphalt coated.  Under that claim construction, the Federal Circuit held that the claims are obvious in view of the cited references, stating that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.  Fast Felt’s expert witness did not provide any meaningful evidence using the above-noted claim construction.

Patent practitioners should be aware that the Federal Circuit may overturn a PTAB decision if it determines that the PTAB has adopted an incorrect claim construction analysis, and that evidence, arguments and expert testimony should be provided by a party under different claim constructions.  Plus, the court will not necessarily limit the scope of the claims to preferred embodiments disclosed in the specification.  Practitioners should also consider that the claims may be interpreted by the PTAB using a broadest reasonable construction analysis.  And still further, practitioners should consider adding claims of narrower scope or dependent claims which limit the scope of the independent claim so that these claims can provide



Claim Language Defined in the Specification Is Reason for Overturning District Courts Ruling of Invalidity for Violating the Recapture Rule

By Kevin M. Repper

In AIA Engineering Ltd. v. Magotteaux Intern. S/A, 657 F.3d 1264 (Fed.Cir.2011), the Federal Circuit overturned a district court judgment of invalidity under the recapture rule of 35 U.S.C. § 251.  The court held that the patentee was acting as his own lexicographer, instead of attempting to broaden his own claims, when he repeatedly used the term “solid solution” during patent prosecution.

Magotteaux International was granted aU.S.patent directed to wear products used for crushing and grinding abrasive materials.  Consistently throughout the prosecution of the patent, the patentee used the claim language “ceramic pads consisting of a homogenous solid solution of 20-80 percent aluminum oxide and 80-20 percent zirconium oxide.”  Magotteaux later applied for reissue to change “consisting of” to “comprising” and “solid solution” to a “ceramic composition.”  The reissue patent was granted.

A year later, AIA Engineering sued Magotteaux in the U.S. District Court for Middle District of Tennessee.  AIA sought declaratory judgment of noninfringement, invalidity, and unenforceability of the reissue patent while Magotteaux countered for patent infringement.  The Judge for the District court ruled in favor of AIA for the motion for summary judgment of invalidity. The Judge found that the substitution of “ceramic composite” for “solid solution” broadened the scope of the claim and that Magotteaux relied on the “solid solution” to overcome the prior art.

The Federal Circuit Judge reversed this ruling, citing the three-step test for applying the recapture rule: “(1) first we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.” Medtronic Inc. v. Guidant Corp., 465 F.3d 1360, 1373, 80 USPQ2d 1558 (Fed. Cir. 2006).

The Federal Circuit concluded that the language “solid solution” and “ceramic composite” were synonymous in light of the specification, prosecution history, and extrinsic evidence.  Therefore, the court did not need to reach the third step in determining the recapture rule.

The two constituent materials of the patent, aluminum oxide and zirconium oxide, retain a distinct composition and/or crystal structure. Both parties agreed that the ordinary meaning of “solid solution” would require a “single, uniform crystalline structure.” Therefore, it would have been impossible to make an alumina-zirconia “solid solution” as disclosed in the original claims.  The court concluded, however, that because the applicant repeatedly disclosed “solid solution” in the specification, the applicant acted as his own lexicographer, providing a special definition for the term that was a synonym for “homogeneous ceramic composite.”

The court used both extrinsic and intrinsic evidence to determine the outcome of the case. First, it was determined that solid aluminum oxide and solid zirconium oxide do not share a common crystal structure at any temperature. Therefore, the impossibility of the solid solution of the original claim would have been apparent to one of ordinary skill. The court concluded that when the specification discloses a special meaning for a term that ultimately differs from the common meaning, the special meaning governs, “particularly when it also serves to avoid an inoperable claim construction.

Key Points

The Federal Circuit overturned the District Court by determining the meaning of “solid solution” as it pertains to the specific patent.  The court concluded by the extrinsic evidence that it would be impossible for a “solid solution” to be incorporated into the claims. The court examined the intrinsic evidence to determine how the “solid solution” was defined in the specification. The court concluded that although a “solid solution” and a “ceramic composite” may not mean the same thing to one of ordinary skill, the two terms were synonymous in light of the specification.

The District Court failed to observe the intrinsic evidence for the definition of “solid solution” within the specification and therefore failed to determine that “solid solution,” as defined by the specification, was synonymous with “ceramic composite.”

AIA Engineering Ltd. v. Magotteaux Intern highlights that a common definition of language in the claim is overshadowed by a special meaning of the language in the specification.  As demonstrated, this allows an invalid claim (due to common definitions of the language in the claim) to be valid, as long as a special meaning of the claim language in the specification is enabling.

Typhoon Touch v. Dell: Claims Saved From Aristocrat Invalidity But No Infringement Found

By Chris Reaves

A massive infringement suit against the major players in the touch-screen mobile market ended in the Federal Circuit, which confirmed that two patents required that a computer have specific software installed, not merely the capacity to run said software should it be installed.  In a small comfort to the patent holder, the Circuit also reversed a holding that certain patent claims were unsupported means-plus-function claims, finding that a textual description of the procedure involved qualified as an “algorithm” for Aristocrat purposes.


In 1988, prosecution began on a chain of patent applications that culminated in Patents No. 5,379,057 (‘057) and No. 5,675,362 (‘362), issued in 1995 and 1997 respectively.  Both patents disclosed a “portable, keyboardless computer” with components including “a touch-sensitive screen … configured for entry of responses” and an “application generator for generating [at least one] data collection application and for creating different functional libraries”.

Typhoon Touch Technologies, Inc., the present assignee of the patents, sued numerous producers of tablets and smart phones for infringement of the patents.  However, in examining the claims at issue, the district court found that some were invalid as indefinite, and regardless that none were infringed as construed.  It therefore dismissed the case, and Typhoon Touch appealed the dismissal to the Federal Circuit.

Ruling 1: Devices Must Be Configured to Perform Function In Order to Infringe

Typhoon first protested the district court’s decision that, in various means-plus-function terms, the allegedly infringing structure “must perform the recited function”.  Under the rule of Microprocessor Enhancement Corp. (520 F.3d 1367), Typhoon argued, it was sufficient that the structure could be configured or programmed to perform the function, and therefore devices without said programming could still infringe.  The Circuit panel was unmoved, stating that although Microprocessor did allow for infringement by a structure already capable of performing a required function, it did not reach one that first needed to be “specifically so programmed or configured.”

Additionally, the district court had interpreted “keyboardless” to have its ordinary meaning: “without a mechanically integrated keyboard.”  The specification stated that the device was “keyboardless in that it does not require a keyboard for use”, which according to Typhoon redefined “keyboardless” to mean it could take input without a physical keyboard even if it had one.  However, although the Circuit acknowledged that a patentee may change the ordinary meaning of a term in the specification, it found no evidence of that in the instant case.  To the contrary, the specification was full of criticism of the use of mechanical keyboards in general, and never once disclosed a device with an integrated keyboard.

The panel also found no importance in Typhoon’s argument that the district court “constru[ed] the claims in order to target the accused devices and demonstrate their non-infringement.”  Rather, it stated, “[I]t is not inappropriate for a court to consider the accused devices when construing claim terms, for the purpose of ‘claim construction’ is to resolve issues of infringement.”

The Circuit therefore upheld all constructions of the district court. As Typhoon conceded that its patents were not infringed under the district court’s construction, the panel also upheld the judgment of non-infringement.

Ruling 2: Software Means-Plus-Function Claims Require Only a Procedure

In a Pyrrhic victory for Typhoon, the Circuit reversed the decision of invalidity for three claims that included a “means for cross-referencing said responses…” The district court had held these to be indefinite under § 112 ¶ 2, finding no “algorithm” in the description to perform the function, as required for software means-plus-function claims by Aristocrat Technology (521 F.3d 1328).  However, the Circuit found the district court’s interpretation of “algorithm” too restrictive in the context of computing.  A step-by-step procedure was sufficient – computer code was certainly not required – and although the Typhoon patents did not disclose this procedure through a flow chart, a “prose” disclosure in the text of the description served the same purpose.

“[T]he amount of detail that must be included in the specification depends on the subject matter that is described and its role in the invention as a whole, in view of the existing knowledge in the field of the invention.”  Because the specification described the steps of the cross-referencing procedure in terms that “a programmer of ordinary skill” could implement, the Circuit found the claims were supported and reversed the district court’s holding of indefiniteness.  It was no “concession,” as the district court felt it was, that Typhoon admitted “the specific algorithm connoting the structure of the means for cross-referencing element is not explicitly disclosed in the specification.”

Post-Case Analysis

The Circuit’s requirement of specific configuration seems not only sound but necessary, at least in the context of hardware and software.  Modern computers are quite capable of being programmed to run any number of procedures.  Once one has a computer meeting the hardware elements of a claim, no matter how general those elements, one can always install the software elements later, but that should not make the computer alone an infringement.  Presumably, the software is part of what makes the patent patentable, or the prosecutor would have patented the hardware alone, so a valid construction should not effectively make the software elements moot.  (Of course, if the hardware itself is specially designed to run the software in question, contributory infringement principles apply even without a software installation.  But this assumes the hardware has no other uses, and here it did.)

The opinion did not even address an argument that Typhoon tried to emphasize during oral arguments: that the patent claimed priority back to 1988, when hardware capable of executing the software (now ubiquitous) was itself new and arguably inventive.  This issue was beside the point.  Typhoon did not patent the hardware itself; it patented the hardware combined with software (at minimum, the “application generator”).  Again, if it did so because the hardware by itself was not new and unobvious even in 1988, removing the software requirement would have been a gross misreading of what the Patent Office had granted.  If it did so because the prosecutors were too focused on the software and did not consider the potential of the hardware alone, this serves as a lesson to future prosecutors: always remember to claim pieces as well as the whole, if the pieces are also inventive.  One never knows for sure which pieces might be discarded and which might come to dominate the market.

In regards to the “keyboardless” definition, the lesson is simply to remember that CCS Fitness (288 F.3d 1359) asks you to “clearly” redefine terms if you plan to do so.  Do not count on a court to pick up on subtleties and make the inference you want; be explicit with language such as “we define the term X herein to mean…”  Alternatively, use more natural terminology in the first place, such as, in this case, “capable of keyboardless data entry.”

In an interesting aside, the Circuit endorses a court molding its construction around the defendant’s claims, or at least focusing on the most applicable elements.  This approach would mean that the construction of a claim may vary depending on its first alleged infringer.  Issue preclusion applies to Markman constructions, albeit inconsistently and not in all circumstances (see RF Delaware (326 F.3d 1255), which applies a regional circuit’s law of preclusion).  And invalidation of a claim is binding in all courts even if a different construction would have saved the same claim.  It may be wise, therefore, to consider where and how a patent’s boundaries will be tested before deciding which infringing device to sue over first.

As is often the case, even the patent owner’s victories show where it could have drafted a better patent.  As Typhoon stated in oral arguments, had the cross-referencing procedure disclosed in the description been converted to a figure or flow chart, “we wouldn’t be here.”  The attorney meant it as an argument in support of validity, but it’s also a warning to future prosecutors: next time, include the flow chart.  Sometimes, it is the difference between a procedure a skilled programmer can understand and one she can’t, and even if not, it helps the judge understand it.

The opinion is available at:

Oral arguments may be heard at:

Federal Circuit Overturns District Court’s Claim Construction in Markem-Imaje Corp. v. Zipher Ltd.

.By Zi Wang

In Markem-Imaje Corp. v. Zipher Ltd., 657 F.3d 1293 (Fed. Cir. 2011), the Federal Circuit per curiam majority overturned the district court’s claim construction and summary judgment of noninfringement.

Markem-Imaje Corp. sued Zipher Ltd. and Videojet Technologies, Inc. (together “Zipher”), requesting a declaratory judgment that Zipher’s ‘572 patent is not infringed by Markem.  The ‘572 patent is directed to a heat transfer printing apparatus that provides increased control over the acceleration, deceleration, speed, and positional accuracy of the printing operation.  In transfer printers in general, the ink ribbon is wound on two spools, one spool for supplying the ribbon for positioning on the substrate, and the other spool for taking up the ribbon after use.  Maintaining correct ribbon tension is essential for proper functioning of the printer.  The patent specification explains the problems with the mechanism that has been used to provide ribbon tension in prior art printers.  It then distinguishes the prior apparatus from what the ‘572 patent calls the “push-pull” mechanism of the ‘572 apparatus, and claims that this new mechanism solves various problems encountered with prior devices.  The “push-pull” mechanism is implemented using microcontroller-controlled stepper motors.

Claim 1, the broadest claim of the ‘572 patent, is directed to a tape drive that corrects tension divergences from the predetermined limit in this manner:

A tape drive comprising:

two motors, at least one of which is a stepper motor;

two tape spool supports on which spools of tape are mounted, each spool being driveable by a respective one of said motors;

a controller adapted to control energization of said two motors such that tape is transported in at least one direction between spools of tape mounted on the spool supports;

wherein the controller energizes both said motors to drive the spools in a tape transport direction, and

said controller calculates a length of tape to be added to or subtracted from tape extending between said spools in order to maintain tension in said tape between predetermined limit values and controls said motors to drive the spools to add or subtract the calculated length of tape to or from the tape extending between said spools.

The district court construed “driveable” and “drive” to mean “rotateable” and “rotate”, rejecting Zipher’s broader construction.  The district court reasoned that although the ordinary meaning of “drive” can be broad enough to encompass not only the rotation of the spools but also application of a holding torque that prevents the spool from rotating and that references to driving the spools in the specification could accommodate either construction, giving “drive” a meaning broader than “rotation” would be contradictory to the meaning of “drive” in the tape transport clause, which states that “the controller energizes both said motors to drive the spools in a tape transport direction.”  Moreover, according to the district court, because the claim clause “controls said motors to drive the spools” already used the word “control,” the patentee could not have intended “control” and “drive” to mean the same thing.  The district court also pointed to a few places in the specification that use the word “drive” narrowly.  The district court further construed the use of the plural word “spools” in the claim clause “to drive the spools to add or subtract the calculated length of tape” to mean that both spools must rotate to add or subtract a single calculated length of tape.

Because only a single spool is rotated to achieve each tension adjustment in Markem’s accused devices, the district court readily found noninfringement.  Zipher then appealed the district court’s claim construction and summary judgment to the Federal Circuit.

On appeal, Zipher argued that “drive”, similar to “control”, has the inclusive meaning of not only rotate but also “hold steady in a commanded position.”  Markem, on the other hand, relied on Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) for its position.  Phillips court stated that “claim terms are normally used consistently throughout the patent,” and that “a claim term should be construed consistently with its appearance in other places in the same claim or in other claims of the same patent.”  The Federal Circuit majority sided with Zipher, holding that “drive” need not be narrowly construed merely because a broader construction would make it similar to the word “control” that is also used in the claim.  The majority also stated that nothing in the specification or the overall invention as presented in the claim and as argued to the patent examiner requires the narrow construction.

In addition to the district court’s construction of “drive the spools”, Zipher also appealed its construction that the claims require “some method of deriving a tension measurement.”  The district court opined that “without having a reasonable estimate of the current tape tension, it is not possible to identify whether the tension is approaching or exceeding the limit values.”  Zipher argued that since the claim does not recite measuring tension, the district court’s construction would import a limitation into the claims from the specification and violate the mandate of Rambus Inc. v. Infineon Tech. AG, 318 F.3d 1081 (Fed. Cir. 2003) that “the claims need not recite every component necessary to enable operation of a working device.”  The majority again agreed with Zipher and drew an analogy with a car engine: “a claim to an engine providing motive power to a car should not be construed to incorporate a limitation for an exhaust pipe, though an engine may not function without one.”

Judge Newman dissented in part. She disagreed with the majority’s reliance on the “mandate” of Rambus.  According to Newman, the panel majority ignored “the paramount importance of the specification in claim construction.”  Citing a series of cases to support her position, Newman stated that she would hold that “while the invention is flexible as to how tension is measured, and permits measurement through indirect methods, some method of measurement is contemplated and required.”

This is the third time in 2011 that the Federal Circuit has been divided and reached contradictory decisions on the issue as to how to reconcile claim language with the description in the specification.  The other two cases are Arlington Industries Inc. v. Bridgeport Fittings Inc.,632 F.3d 1246 (Fed. Cir. 2011), and Retractable Technologies Inc. v. Becton, Dickinson & Co., 653 F.3d 1296 (Fed. Cir. 2011).  J. Lourie and CJ. Rader were on opposite sides of the issue in these two cases, each in turn penning the majority opinion in one and the dissenting opinion in the other.  The Federal Circuit rejected the opportunity to rehear Retractable en banc in Retractable Technologies Inc. v. Becton Dickinson & Co., 659 F.3d 1369 (Fed. Cir. 2011), before it was presented with the same problem in the present case.

Take-away points:  Patent prosecutors should use the same word in a consistent manner throughout the whole application to avoid ambiguity.  What’s more, contrary to good general practice in writing, it is probably preferable to stick with the same word when expressing the same idea in patent applications.

Vexatious Plaintiff Is Slapped With $4.5M In Fees

By Zi Wang

In MarcTec LLC v. Johnson & Johnson, 664 F.3d 907 (Fed. Cir. 2012), the Federal Circuit affirmed the district court’s holding that the case is exceptional and awarded a total amount of more than $4.5 million in attorney and expert fees to the defendant.

Plaintiff MarcTec filed suit against Cordis, a subsidiary of Johnson & Johnson, alleging the latter of infringing the ‘753 and ‘290 patents. The two patents-in-suit are directed at surgical devices and implants with a therapeutic-agent-containing coating bonded by heat.  According to the prosecution history, in order to overcome the PTO’s rejection over the ‘417 patent, the patentee highlighted the fact that the coating is to be bonded by heat.  The patentee also tried to distinguish his invention from stents during prosecution for similar reasons.  The allegedly infringing product in question is the Cypher stent manufactured by Cordis.  The product utilizes the technology disclosed by the ‘417 patent, the same patent plaintiff distinguished and disclaimed to obtain allowance for his own patents. The Cypher’s coating is sprayed onto the stent at room temperature and bonds to it at room temperature. Continue reading Vexatious Plaintiff Is Slapped With $4.5M In Fees

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.