Clearvlaue v. Pearl River Polymers et al (CAFC 2011-1078, -1100) precedential; Judges Prost, Schall, and Moore (author)

The key limitation lies in the preamble: 

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

The district court did not disturb the jury's finding of validity, both anticipation and obviousness, buying the argument that the jury bought: the prior art "'teaches away' from the true inventiveness of the '690 patent."

The CAFC warms up by noting that "teaching away" has no truck in an anticipation analysis.

Although this alleged teaching away would be relevant to an obviousness analysis, "whether a reference 'teaches away' from [an] invention is inapplicable to an anticipation analysis." Celeritas Techs., Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (citation omitted). The district court thus erred by holding that this testimony was substantial evidence supporting the jury's verdict of no anticipation.

Anticipation is merely claim element mapping to the prior art (in this instance: Hassick):

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." Am. Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)).

ClearValue concedes that Hassick teaches every limitation of claim 1.1 ClearValue argues, however, that substantial evidence supported the jury's verdict of no anticipation because Hassick's disclosure of clarifying water with alkalinity of 150 ppm or less is too broad to anticipate the 50 ppm limitation of claim 1.

The CAFC panel simply figured that disclosing 150 ppm or less includes the claimed 50 ppm. Pretty incredible mind-trick, to put a positive spin on it, that a jury and district court judge couldn't catch on to that.

Reversed.