Leggett & Platt v. VUTEk (CAFC 2007-1515)

The CAFC distinguished the threshold of anticipation between structural and functional claim language.

[T]he district court construed the term "substantially cure" to mean "cured to a great extent or almost completely cured." Markman Order at 25. Thus, the relevant portion of claim 1 simply requires a cold UV source (e.g., LEDs) that is "effective to impinge sufficient UV light on the ink" to cure the ink to a great extent or almost completely cure it. Moreover, because the claim is written with functional rather than structural language--it requires the cold UV assembly to be "effective to" substantially cure rather than requiring ink to be substantially cured--the claim limitation will be anticipated so long as the LEDs disclosed in the '823 patent are able to cure the ink to a great extent. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (explaining a risk of functional claiming is that the functional limitation may be an inherent characteristic of the prior art).

The district court rendered invalidity two-fold in summary judgment. The appeals court only dealt with prior art invalidity.

The district court found the asserted claims to be invalid on two of these grounds. Id. at 2. First, the district court first concluded that claims 1, 9, 10, and 19 of the '518 patent are invalid as anticipated by VUTEk's U.S. Patent No. 6,457,823 (the "'823 patent") and claims 2, 3, and 7 are invalid as obvious in light of a combination of the '823 patent and VUTEk's U.S. Patent No. 6,616,355 (the "'355 patent"). Id. at 5-18. "Alternatively," the district court "reluctantly" agreed that these claims are invalid as indefinite because the terms "deform, deforming, and deformation," which are present in each claim, "are not capable of being construed in a way that meets the definiteness requirement of [35 U.S.C.] § 112." Id. at 18-23.

Was the summary judgment justified? What defines, as a matter of law, "substantially cure"? The standard is "that even if all material factual inferences are drawn in favor of the non-movant, there is no reasonable basis on which the non-movant can prevail."

Figure 7B shows that the LEDs will cure the ink 75-80% (as indicated by line d3) when the printer carriage is operating at the slowest speed and passes over the ink five times. '823 patent fig. 7B, col.5 ll.64-67; see J.A. 2192 (testimony from L&P's expert that d3 represents 75-80% cured). A reasonable mind might well find 75-80% cured to be "substantially cured" and, thus, would conclude that the disclosed LEDs are effective to cure the ink to a great extent. To grant summary judgment, however, we must conclude "that even if all material factual inferences are drawn in favor of the non-movant, there is no reasonable basis on which the non-movant can prevail." Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991). Under this strict standard, we cannot say that, as a matter of law, 75-80% cured is "cured to a great extent or almost completely cured."

If prior art does not explicitly spell it out, but, in reading between the lines... inherency.

We can, however, conclude as a matter of law that the '823 patent inherently discloses LEDs that are "effective to impinge sufficient UV light on the ink to" cure the ink to a great extent. "Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claims limitations, it anticipates." Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376 (Fed. Cir. 2005) (quoting In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002)). "Thus, a prior art reference may anticipate when the claim limitation or limitations not expressly found in that reference are nonetheless inherent in it." MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999). In other words, the '823 patent will anticipate by inherency if its LEDs necessarily are "effective to impinge sufficient UV light on the ink to substantially cure the ink."

Moreover, the '823 patent later expressly discloses that "LEDs . . . [can be] used to cure and/or set the ink." Id. at col.6 ll.25-30. Thus, while the '823 patent may not expressly disclose that the LEDs cure the ink to a great extent, it inherently discloses LEDs that are "effective to" do so. See In re Schreiber, 128 F.3d at 1478 (concluding that prior art inherently taught the patent's requirement that the claimed device "allows several kernels of popped popcorn to pass through at the same time" while "permit[ting] the dispensing of only a few kernels" at a time).

L&P fails to raise a disputed issue of material fact with regard to whether the '823 patent anticipates. It argues, for example, that the '823 patent does not inherently disclose LEDs that are able to substantially cure the ink because LEDs were unable to do so at the time. In support, L&P relies on its expert's testimony that "LEDs were not capable of emitting sufficient radiation to cure." We are not persuaded, however, by L&P's repeated efforts to conflate "substantially cure" and simply "cure." The claim speaks of substantially curing, not fully curing, and VUTEk's expert asserts that the difference is significant.

Prior art invalidates "to the extent of its enabling disclosure." ""Teaching away" is irrelevant to anticipation."

L&P also argues that the reference does not anticipate because it repeatedly discusses using the LEDs to set and a downstream curing station to subsequently cure the ink. This argument relies on the erroneous assumption that the disclosure of multiple examples renders one example less anticipatory. See Perricone, 432 F.3d at 1376 (rejecting the argument that one example "cannot anticipate because it appears without special emphasis in a longer list" because a "disclosure is prior art to the extent of its enabling disclosure"). L&P also argues that the '823 patent expressly teaches away from using LEDs to substantially cure the ink, but "teaching away" is irrelevant to anticipation. Celeritas Techs., 150 F.3d at 1361 ("[T]he question whether a reference 'teaches away' from the invention is inapplicable to an anticipation analysis.").

More than mention, inherency requires an expressed embodiment of the claimed limitation being a "one of the possibilities (or examples)" in the prior art reference.

L&P also asserts that the district court erred by allegedly concluding that the '823 patent inherently taught the disputed aspects because "the patent reveals the possibility, which is all that is necessary." See Summary Judgment Order at 11. Our law is clear--the fact that a claim limitation may be present in a reference does not establish that the reference inherently discloses that limitation. MEHL/Biophile, 192 F.3d at 1365. After reviewing the context of this statement, however, we understand that the district court found that the reference disclosed the limitation as a "possibility" in the sense that an embodiment is one of the possibilities (or examples) disclosed by a patent. We conclude that this analysis, in its entirety, does not run afoul of our basic rule.

The CAFC was not one to beat this dead horse.

Because we affirm the district court's original basis for granting VUTEk's motion for summary judgment of invalidity--i.e., that claims 1-3, 7, 9-10, and 19 of the '518 patent are invalid for anticipation and obviousness--we need not address L&P's appeal of the court's alternative basis for granting this motion--i.e., that these claims are invalid for indefiniteness.

Affirmed.