Whether a Prior Art Reference ‘Teaches Away’ from a Claimed Invention Is Irrelevant to §102 Anticipation Analysis
February 17, 2012
A federal district court erroneously found that a water clarification patent was not invalid for anticipation under §102 of the Patent Act after reasoning that the cited reference in the prior art “teaches away” from the invention claimed in the patent, the U.S. Court of Appeals for the Federal Circuit ruled Feb. 17 (ClearValue Inc. v. Pearl River Polymers Inc., Fed. Cir., No. 2011-1078, 2/17/12).
Although whether a prior art reference “teaches away” from a claimed invention is relevant to invalidity for obviousness under §103 of the Patent Act, it is irrelevant to the question of invalidity for anticipation under §102, the court held.
Water Clarification Patent.
In this case, ClearValue Inc. and inventor Richard Haase alleged that their patent (6,120,690) was indirectly infringed by Pearl River Polymers Inc.’s sale of high molecular weight di-allyl di-methyl ammonium chloride (DADMAC), which customers used in combination with aluminum polymers such as aluminum chlorohydrate (ACH) to clarify water with alkalinity below 50 parts per million (ppm).
After a jury found infringement, Judge Leonard Davis of the U.S. District Court for the Eastern District of Texas denied Pearl River’s motion for a judgment as a matter of law (JMOL) that the patent was invalid for anticipation under Patent Act §102, 35 U.S.C. §102. While the jury also found trade secret misappropriation, the court granted Pearl River a JMOL after ruling that no evidence supported the jury’s determination that Trade Secret #1 was actually a trade secret.
Pearl River appealed the denial of the JMOL as to invalidity, and ClearValue cross-appealed the JMOL that Trade Secret #1 was not misappropriated.
Teaching Away Is Irrelevant to Anticipation by Hassick Patent.
The Federal Circuit first reversed the district court’s denial of the JMOL as to anticipation.
The district court based its denial on expert testimony that a skilled artisan would not have used the claimed combination to clarify water because the prior art Hassick patent (4,800,039) “teaches away” from the inventiveness of the ‘690 patent and shows that this combination does not work well. While a teaching away theory would be relevant to an obviousness analysis under Patent Act §103, “whether a reference ‘teaches away’ from [an] invention is inapplicable to an anticipation analysis” under §102, the court clarified, quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp.,150 F.3d 1354 (Fed. Cir. 1998).
To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe . . . each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation,” Judge Kimberly Moore observed, quoting American Calcar Inc. v. American Honda Motor Corp., 651 F.3d 1318 (Fed. Cir. 2011). Agreeing that the jury verdict lacked substantial evidence because Hassick teaches each and every limitation of Claim 1 of the ’690 patent, Moore stressed that this limitation claims “A process for clarification of water of raw alkalinity less than or equal to 50 ppm.” She said that “Hassick teaches one of ordinary skill to use a high molecular weight DADMAC in combination with ACH to synergistically clarify water with alkalinity of 150 ppm or less,” and “thus teaches and enables each and every element of claim 1.”
While ClearValue cited Atofina v. Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006), to argue that alkalinity of 150 ppm or less is too broad to anticipate the 50 ppm limitation of Claim 1, Moore said that its reliance on Atofina is “misplaced.” The patent in that case claimed a method of synthesizing difluoromethane at a temperature between 330-450 °C and stated that “only a narrow temperature range enables” the process to operate as claimed, and that problems occur when performing the reaction either below 330 °C or above 400 °C. In Atofina, the Federal Circuit held that the “considerable difference between the claimed [temperature] range and the range in the prior art” precluded a finding of anticipation.
Distinguishing that case from the facts here, Moore wrote:
This case is not Atofina. ClearValue has not argued that the 50 ppm limitation in claim 1 is “critical,” or that the claimed method works differently at different points within the prior art range of 150 ppm or less. Nor does ClearValue argue that the Hassick reference fails to teach one of ordinary skill in the art how to use the claimed invention, i.e., that Hassick is not enabled to the extent required to practice claim 1 of the ’690 patent. Hassick discloses the exact process claimed and explains that the chemical treatment can be used for clarification of water with 150 ppm or less. … Moreover, Hassick gives examples, including one with water with “a total alkalinity of 60-70 ppm.” … Certainly if this example had been at 50 ppm there would be no dispute but that Hassick anticipates. To be clear, it is not this example at 60-70 ppm that anticipates because 60-70 ppm is not 50 ppm or less as the claim requires. But rather the disclosure that this chemical process works for systems with 150 ppm or less is what anticipates. The disclosure of 150 ppm or less is a genus disclosure as in Atofina. But unlike Atofina where there was a broad genus and evidence that different portions of the broad range would work differently, here, there is no allegation of criticality or any evidence demonstrating any difference across the range.
Accordingly, the appellate court reversed the denial of Pearl River’s JMOL of invalidity.
No Trade Secret to Misappropriate.
However, the appellate court did affirm the district court’s ruling that ClearValue’s asserted Trade Secret #1 was not misappropriated. Because the Hassick patent already publicly disclosed this asserted secret—combining a high molecular weight organic polymers and aluminum chlorohydrate to clarify water—there was no trade secret, and thus no trade misappropriation, the court reasoned.
The district court’s ruling was reversed in part and affirmed in part.
ClearValue and Haase were represented by Arnold A. Vickery of Vickery, Waldner & Mallia, Houston.
Pearl River was represented by John T. Gallagher of Dickstein Shapiro, New York.Read the ClearValue Inc. v. Pearl River Polymers Inc. decision.