« No Respect | Main | Complexities »

October 9, 2008

Anticipation Without Obviousness

Cohesive Technologies sued Waters for infringing patents claiming liquid chromatography. A jury found the patents not obvious over "seven separate prior art references." In a 2-1 appeal decision, the CAFC remands because seven patents that singularly or in combination didn't render the patents obvious, to which all agreed, but the appeals court majority thought they might anticipate. Huh? Obzilla obviousness nothing to straight-laced anticipation? Surely they jest. Alas, no. The dissent was a scathing straight arrow.

Cohesive Technologies v. Waters (CAFC 2008-1029, -1030, -1031, -1032, -1059)

Judges Linn and Prost formed a majority, with Mayer vigorously dissenting.

5,772,874 and 5,919,368 were the asserted patents.

Liquid chromatography involves processes "for separating, identifying, and measuring compounds contained in a liquid. Pharmaceutical companies often use HPLC in drug testing to separate absorbed compounds from blood."

In 2001, the district court held a sixteen-day jury trial in the first action. During trial, Waters alleged and presented evidence that the claims of the '874 patent were anticipated by seven separate prior art references. Waters also alleged that the claims of the '874 patent were obvious, both in light of each reference independently, and in light of various combinations of the references. Over Waters's objection, the district court chose not to submit anticipation to the jury, because Waters had alleged obviousness, and the district court "[thought] of anticipation as being a subset of obviousness." J.A. 5710. Accordingly, the district court sua sponte entered a directed verdict in favor of Cohesive, finding that the '874 patent was not anticipated. Cohesive, 526 F. Supp. 2d at 89.

Again the jurist alchemist's dance of transforming fact into a pure matter of law by substituting judicial power for jury consideration. What "a reasonable jury could have found" is merely "a matter of law." These CAFC cats are not just judges, they're psychic. Someone remind me what illusion is being maintained by bothering with juries anyway.

If a reasonable jury could have found that any of the asserted references anticipated the patent, then judgment as a matter of law was improper. See Wilson v. Moreau, 492 F.3d 50, 52 (1st Cir. 2007); see also Guilloty Perez, 399 F.3d at 50 ("If we conclude that 'fair-minded persons could draw different inferences from the evidence presented at trial, the matter is for the jury,' and judgment as a matter of law was improperly granted." (quoting Espada, 312 F.3d at 2)).

To the district court, anticipation was covered by considering obviousness.

The circumstances that led to the grant of judgment as a matter of law in this case were unusual. At a charge conference near the end of trial, the district court indicated that it did not intend to charge the jury on anticipation. Specifically, after reviewing Waters's evidence and argument on anticipation and obviousness, the district court concluded that "the contentions that the defendant is making [are] best captured by obviousness," rather than anticipation. J.A. 2654. The district court commented that, "[u]nder a strict reading, [it did not] see the proof of anticipation in any of the prior art publications," that Waters's anticipation case was "iffy," and that its "gut response is that none of [the prior art references] are winners." J.A. 5680, 5704, 5720. Moreover, the district court commented that declining to charge on anticipation would not cause "any real harm to the defendant," and would not "make very much difference because it comes in in obviousness" J.A. 5680, 5703. The district court expressly stated that it did not understand, as a matter of "strategic judgment," why a defendant "would want [a] charge on anticipation when they get one on obviousness." J.A. 5719, 5717. The district court concluded that it could not "find here that the requirements of anticipation have been met" in the submitted prior art references, and it therefore directed a verdict of no anticipation. J.A. 2654.

The district court erred by granting judgment as a matter of law on the issue of anticipation before the jury was allowed to consider the claim. The district court did not make a finding that no reasonable jury could conclude that the asserted references anticipated. Rather, the district court itself characterized the anticipation case as "iffy." An "iffy" anticipation case, however, does not foreclose a favorable verdict. See Fed. R. Civ. P. 50 (requiring that the court find "that a reasonable jury would not have a legally sufficient evidentiary basis" to find for a party before granting judgment as a matter of law).

In dismissing the prospect of anticipation, the district court had, as a basis for "granting judgment as a matter of law", "that a reasonable jury would not have a legally sufficient evidentiary basis" to find a patent anticipated because the jury found the patent non-obvious.

Longstanding is the axiom: "Obviousness can be proven by combining existing prior art references, while anticipation requires all elements of a claim to be disclosed within a single reference." The majority opinion finds no precedent for its stance that something could be non-obvious but anticipated. Case law only provides that obviousness is a lower threshold for invalidity than anticipation, in both quantity (single-reference anticipation versus combinatorial obviousness) and quality - the big foot of Obzilla stomps havoc by being close enough, while anticipation treads a straight-and-narrow, save a sliver of inherency for what one of skill in the art could infer from mere mention.

Moreover, the district court was wrong to conclude that granting judgment as a matter of law on anticipation would not harm Waters, simply because the jury had the opportunity to consider the same references for purposes of obviousness. Despite the often quoted maxim that anticipation is the "epitome of obviousness," In re Kalm, 378 F.2d 959, 962 (CCPA 1967), novelty under 35 U.S.C. § 102 and nonobviousness under 35 U.S.C. § 103 are separate conditions of patentability and therefore separate defenses available in an infringement action. See 35 U.S.C. § 282 (2000); Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984) ("[T]hough anticipation is the epitome of obviousness, [they] are separate and distinct concepts."); see also Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 1563 (Fed. Cir. 1993) (holding that verdict of nonobviousness was not inconsistent with verdict of anticipation by prior public use, despite "legal homily" that anticipation is the epitome of obviousness); In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979) (holding that rejection under § 102 was new ground following previous rejection under § 103, despite maxim that "anticipation is the epitome of obviousness").

While it is commonly understood that prior art references that anticipate a claim will usually render that claim obvious, it is not necessarily true that a verdict of nonobviousness forecloses anticipation. The tests for anticipation and obviousness are different. See, e.g., Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1098, 1107-08 (Fed. Cir. 2003) ("Succinctly put, the various unenforceability and invalidity defenses that may be raised by a defendant--inequitable conduct, the several forms of anticipation and loss of right under § 102, and obviousness under § 103--require different elements of proof.") Obviousness can be proven by combining existing prior art references, while anticipation requires all elements of a claim to be disclosed within a single reference. Compare MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) ("To anticipate, a single reference must teach every limitation of the claimed invention."), with Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1577 (Fed. Cir. 1991) ("If it is necessary to reach beyond the boundaries of a single reference to provide missing disclosure of the claimed invention, the proper ground is not § 102 anticipation, but § 103 obviousness."). Moreover, obviousness requires analysis of secondary considerations of nonobviousness, while secondary considerations are not an element of a claim of anticipation. Compare King Instrument Corp. v. Otari Corp., 767 F.2d 853, 857 (Fed. Cir. 1985) ("In a § 103 obviousness analysis, Graham [v. John Deere Co., 383 U.S. 1 (1966)] requires that the trier assess certain underlying facts: (1) the scope and content of the prior art, (2) the level of ordinary skill in the art, (3) the differences between the claimed invention and the prior art, and (4) the so-called 'secondary considerations.'"), with Hakim v. Cannon Avent Group, PLC, 479 F.3d 1313, 1319 (Fed. Cir. 2007) ("'Anticipation' means that the claimed invention was previously known, and that all of the elements and limitations of the claim are described in a single prior art reference."). And although anticipation can be proven inherently, proof of inherent anticipation is not the same as proof of obviousness. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) ("[A] prior art reference without express reference to a claim limitation may nonetheless anticipate by inherency."); Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002) ("[O]bviousness is not inherent anticipation."). Thus, "it does not follow that every technically anticipated invention would also have been obvious." In re Fracalossi, 681 F.2d 792, 796 (CCPA 1982) (Miller, J., concurring).2

2 The dissent claims categorically that "every anticipated claim is obvious." Post at 3. But this is not correct. Consider, for example, a claim directed toward a particular alloy of metal. The claimed metal alloy may have all the hallmarks of a nonobvious invention--there was a long felt but resolved need for an alloy with the properties of the claimed alloy, others may have tried and failed to produce such an alloy, and, once disclosed, the claimed alloy may have received high praise and seen commercial success. Nevertheless, there may be a centuries-old alchemy textbook that, while not describing any metal alloys, describes a method that, if practiced precisely, actually produces the claimed alloy. While the prior art alchemy textbook inherently anticipates the claim under § 102, the claim may not be said to be obvious under § 103.

The fly in that ointment comes from citing only secondary factors for obviousness in the above analysis.  Bear in mind the statute - § 103: "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time." If the above alchemy textbook described the exact process, it would have anticipated. Lacking that, with some minor differences between the textbook and the claim, anticipation would fail, but the textbook would render the claimed process obvious.

The majority concocts an off-point semantic straw-man with a non-statutory euphemism, the characterization of "epitome."

This is precisely why our precedent has rejected reliance on the "legal homily" that "anticipation is the epitome of obviousness." Mendenhall, 5 F.3d at 1563. We have expressly upheld a jury verdict of anticipation under § 102(b), even when the same jury found the patent nonobvious under § 103. Id. Though the dissent argues that a "long line of precedent" supports its argument that every anticipated claim is obvious, not a single one of the cases it cites actually holds that the "epitome" maxim precludes a jury from finding a patent invalid under § 102, simply because it is nonobvious under § 103. See Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1357 n.21 (Fed. Cir. 1998) (remarking in footnote that trial court did not err in allowing parties to present argument on anticipation during trial on obviousness); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (prefacing quoted discussion of relationship between anticipation and obviousness with "it is never necessary to so hold"); Fracalossi, 6 F.2d at 794 (addressing whether specific anticipation rejection was sufficient evidentiary support for obviousness rejection); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974) (affirming § 103 rejection when § 102 rejection would also have been appropriate); In re Kalm, 378 F.2d 959, 963 (CCPA 1967) (reversing anticipation rejection). We cannot conclude--as the dissent's reasoning implies--that the novelty requirement of § 102 is mere surplussage, subsumed by the nonobviousness requirement of § 103.

On solid ground is that the defendant argued anticipation, and that was not presented to the jury. That is a procedural mistake worth correcting, by noting the trial judge was in error, but the error is mooted by the references not being anticipatory by way of not provoking obviousness. The substantive issue of something not being obvious but being anticipated is something else entirely, namely, fiction.

A court cannot refuse to submit the issue of anticipation to the jury simply because the accused infringer has also asserted an obviousness defense. It is for the litigants--not the court--to make the strategic decision as to whether to assert one, both, or neither of these defenses in a jury trial. An accused infringer that introduces a prior art reference and makes a non-frivolous argument that "each and every limitation of a claim is found, expressly or inherently, in [that] single prior art reference" generally is entitled to have anticipation decided by the finder of fact. See Planet Bingo, LLC v. GameTech Int'l, Inc., 472 F.3d 1338, 1346 (Fed. Cir. 2006). That is precisely what Waters did in this case. We therefore reverse the district court's grant of judgment as a matter of law on the issue of anticipation, and remand for further proceedings consistent with this opinion.

The dissent by Mayer was compelling in its streams of simplicity: the majority's nonsense and a lack of precedence.

The jury having found that U.S. Patent No. 5,772,874 is not obvious under 35 U.S.C. § 103, remanding the case for "further proceedings" on whether the patent is anticipated is a waste of time and resources.

It is true that the tests for obviousness and anticipation are distinct, and that a district court should not refuse to submit a claim of anticipation to the jury merely because an accused infringer also asserts an obviousness defense. It does not follow, however, that if a jury has already determined that an invention is not obvious, remand is required so that it can consider whether the invention is anticipated. The jury here considered all of the allegedly anticipating prior art references, but nonetheless returned a verdict that the asserted claims are non-obvious. If a series of prior art references did not render the claimed invention obvious, how could one of those references contain each and every element of the claimed invention so as to render it anticipated? See Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003) (a claim is anticipated if each and every limitation is found in a single prior art reference).*

*The majority cites Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002) for the proposition that "obviousness is not inherent anticipation." Ante at 15. Trintec held that an invention is not inherently anticipated merely because it is obvious. That, however, is a wholly separate issue from the issue presented here, which is whether claims that are not obvious can ever be anticipated. Trintec does not state that non-obvious claims can be inherently anticipated.

Although a claimed invention can be obvious but not anticipated, it "cannot have been anticipated and not have been obvious." In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (emphasis added). Indeed, this court has repeatedly emphasized that "a disclosure that anticipates . . . also renders the claim invalid under § 103, for anticipation is the epitome of obviousness." Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (citations and internal quotation marks omitted); see Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1357 n.21 (Fed. Cir. 1998) (a disclosure that anticipates also renders a claim obvious); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974) (anticipation is "the ultimate . . . obviousness") (citations and internal quotation marks omitted); In re Kalm, 378 F.2d 959, 962 (CCPA 1967) ("Necessarily, a description in a reference which is insufficient as a matter of law to render a composition of matter obvious to one of ordinary skill in the art would a fortiori be insufficient to 'describe' the composition as that term is used [for purposes of establishing anticipation], a complete description being but the ultimate or epitome of obviousness."). The majority's assertion that a claim can be anticipated but not obvious, flies in the face of a long line of precedent to the contrary. Not surprisingly, it is unable to cite a case remanding to the district court for consideration of anticipation, while at the same time sustaining a determination that claims at issue are not obvious.**

**The majority's reliance on Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 1563 (Fed. Cir. 1993), is unsupportable. That case held that a district court did not abuse its discretion in refusing to set aside a jury verdict of non-obviousness even though the jury also returned a verdict of anticipation by prior public use. The issue here, however, is not whether a verdict finding both anticipation by prior public use and non-obviousness can be sustained, but whether remand is required to consider anticipation even after the jury has determined the claims are not obvious.

The fallacy of the majority's approach can be illustrated by a simple example. Every apple is a fruit. It follows, therefore, that if something is not a fruit, it cannot be an apple. Similarly, since our precedent makes clear that every anticipated claim is obvious, it follows that if a claim is not obvious, it cannot be anticipated.

The present dispute has already dragged on for nearly a decade and I see no reason to burden the district court and the parties with additional proceedings. Although the majority sends the anticipation issue back to the district court for "further proceedings consistent with [its] opinion," ante at 17, one wonders what it expects the court to do. Given the prior non-obviousness determination, it can hardly expect the district court to conclude that there is sufficient evidence of anticipation to send the issue to a new jury. I would affirm the district court's directed verdict on anticipation.

Posted by Patent Hawk at October 9, 2008 10:43 PM | Prior Art


Hawk doesn't it all depend on the definition of the state of the art for 1) novelty and 2) obviousness? Just suppose, for example, that the obviousness state of the art is "everything made available to any member of the public, before the date of the claim, by written or oral description, by use, or in any other way, anywhere in the world" and the state of the art for novelty is all of that PLUS the entire disclosure content of other filings at the PTO, that got in before the date of the claim. That's the deadly simple prescription, throughout most of the world except the USA, and it routinely leads to claims surviving obviousness attacks but going down to a novelty attack (which would be an interference in the USA).

Posted by: MaxDrei at October 10, 2008 2:30 PM

Hi Max:

Anticipation (§ 102) and obviousness (§ 103(a)) are the U.S. prior art statutes discussed here.

If this entry confused you, you're at least as good as the majority in the panel here.

"Obviousness can be proven by combining existing prior art references, while anticipation requires all elements of a claim to be disclosed within a single reference."

Obviousness can also be shown with a single reference that is deficient in modest aspects well known in the prior art. That is where obviousness comes closest to anticipation, which also allows for inherency.

Posted by: Patent Hawk at October 10, 2008 3:50 PM

Hawk, of course I do realise that we're talking 102 and 103 here. It's just that I don't understand how documents that are unknown to the public, including the PHOSITA, can render anything obvious to the PHOSITA. Above, I didn't want to write directly that 102/103 make no sense to me, in case it upsets your readers, so I wrote something indirect, instead.

Posted by: MaxDrei at October 11, 2008 12:00 PM

Sorry Max, I think you lost me.

"documents that are unknown to the public" - I don't see that is relevant to this case. The U.S. courts consider something public if it is indexed or otherwise organized, and not restricted access. A very broad definition.

If you are worried about upsetting readers, you're about the only one. While the comments and the writing herein to be taken seriously tend toward civility, at least in an expansive definition, public discourse is seldom without its transgressions to delicate sensibilities. In other words, blast away.

Posted by: Patent Hawk at October 11, 2008 12:42 PM

Sorry Hawk, for my being so opaque. Here, I'll try again.

The original topic was whether something can be anticipated, but not obvious. In Europe, the answer is a clear YES, because the definition of the art is different, for novelty and obviousness. I think that's right, because the only logical way to test obviousness is relative to the real life knowledge of the PHOSITA. I was thinking that, in the USA, one tests obviousness with respect to inter alia the content of specifications (of issued US patents) that were not yet available to the public, at the specific date relative to which the obviousness has to be assessed. The logic of that is hard to get across, to intelligent inventors and business people.

Posted by: MaxDrei at October 11, 2008 3:13 PM