Posts Tagged “anticipation”

What does my daughter’s blog post of a raspberry goat cheese brownie recipe have in common with getting a valid patent? Too many calories? No, but her recipe (invention) was based (an advance in the state of the art), with attribution, from another source (prior art). So too with many inventions; in fact most patents are granted on improvements on existing technologies and are not total new, world-changing technologies. And it is left to the patent examiner, or maybe a court, to determine if the invention is anticipated or or obvious in light of the prior art.

One truly fuzzy area are inventions that  involve ranges of one or more parameter values (bake for 45 to 55 minutes?); often the prior art will describe a very broad parameter range while your invention claims a narrower sub-range (bake for 50 minutes) or a range that is just outside the prior art range (bake for 55 to 60 minutes). In such cases you must be very careful to point out in your specification the considerations that make your invention novel and non-obvious.

In a recent Court of Appeals decision – ClearValue, Inc. v. Pearl River Polymers, Inc.ClearValue tried in vain to claim that their process, which applied to  “water of raw alkalinity less than or equal to 50 ppm” was NOT anticipated by a prior patent that applied to water of raw alkalinity of “up to 150 ppm”. To bolster its argument, ClearValue pointed to a previous case (“Atofina”) decided by the Court in which the prior art described a process that operated from 100 ° C to 500 ° C but the new, claimed reaction operated in a range between 330° C and 450° C.

The Court rejected ClearValue’s argument by pointing out several differences between the prior case and this one. First, although both new inventions operated inside the prior art’s broad range, ClearValue was claiming a full 33% of the prior art range whereas in Atofina the new claim covered at most 20% of the prior art range and preferably only 12.5%.

Second, and more importantly, in Atofina’s specification they showed that the claimed temperture range [between 330° C and 450° C,” and more preferably at a temperature between 350-400 °C] was critical to the reaction and that the reaction did not work at below 300°C. ClearValue could  not argue that their 50 ppm maximum limitation was “critical,” or that the claimed method works differently at different points within the prior art range of 150 ppm or less.

Finally, the real nail in ClearValue’s argument is that the prior art actually gave an example using a raw alkalinity of 60-70 ppm, showing that ClearValue’s 50 ppm limitation had no relationship to the operation of the process.

The take away from ClearValue’s situation is that it is important to explain in your specification why your narrower or adjacent parameter range makes a difference – demonstrate, for example, that the process or apparatus performs differently at different points within the prior art’s broad range. And the narrower your critical operating range is, relative to the prior art’s range, the better off you are. And if you can demonstrate that your version of the process or apparatus doesn’t perform as expected outside your narrow range you can argue that the prior art could not have enabled your invention in its broad range.

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In a perfect (IP) world your patent, once issued, would never be found to be invalid (assuming you didn’t “cheat”). In the real world your patent is only presumed to be valid, a presumption that can be proved wrong in court. Like the presumably innocent defendant, your presumably valid patent can quickly be found “guilty” and become a nice piece of wallpaper. A typical ground for invalidation is “anticipation” by a [single] prior reference that describes all aspects of your invention.

“But how can that happen!”, you ask. Didn’t I do my prior art search in the USPTO database? Didn’t the patent examiner do that too? Ah, yes, but the anticipating reference doesn’t have to be a patent (or patent application). An anticipating reference doesn’t even have to be a single document…or even a document. In a recent District Court decision (IP Innovations LLC v. Red Hat, Inc.) described in the All Things Pros blog, the defendant demonstrated that the patent in question was anticipated by a publicly used system that was described in two complementary, non-patent, publicly available documents.

In this case the patented invention (a  a software system of virtual workspaces) had actually been previously developed by a graduate student (“Chan”), implemented for an undergraduate course, and described in Chan’s thesis and in an academic paper by Chan’s supervisor. The patent holder tried to argue that the two published documents could not be used as the “single reference” needed to demonstrate anticipation. That argument failed.

The key here is that the requirement for anticipation is for all aspects of the invention be found in a single entity where that entity can be a single reference, device, or process. How that single reference, device, or process is described publicly – in a single document or multiple documents – is irrelevant. In this case the defendant had no problem showing that the two documents were both describing a single entity – Chan’s software system.

I don’t know the details of what was described in the thesis and the paper such that both documents were required to demonstrate anticipation but it seems to me that had the patent holder overcome the “invalidity by anticipation” defense, he would have then had an uphill battle to overcome an “invalidity by obviousness” defense, since obviousness allows multiple prior references to be combined.

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An advertisement in a muscle magazine for a dietary supplement was all it took to invalidate Iovate’s licensed patent. Iovate is the licensee of U.S. Patent 6,100,287, which claims the use of nutritional supplements containing a ketoacid and an amino acid to enhance muscle performance or recovery from fatigue. When they sued a competitor, BSN, Inc., for infringement for selling a competing supplement the courts found that an ad for Weider’s VICTORYTM Professional Protein published in Flex magazine was an anticipating printed publication of the invention. That is, the ad disclosed every limitation of the claimed invention.

 I often tell clients that the value of a patent is only determined if someone cares enough to want to infringe it. And if someone does find it worthwhile to infringe, you can be sure they will invest in finding any invalidating prior art they can. That’s too late for you to find out your patent should never have been allowed; you should have done research up-front, before investing in a patent application. Like the old oil change ad said, “you can pay me now, or you can pay me later”.

Most people understand the importance of doing a patent search before investing heavily in the development of a new product. Some people understand the value of doing a patent search before investing in the patent application process. But too few people understand that reviewing the NON-PATENT prior art before investing in that patent application is also an important up-front investment to make before plunging into the patenting process.

In fact, in many situations it may be more important to look at the non-patent prior art. The patent examiner, bless his or her heart, will at least do some sort of search in the US Patent database. If you’ve filed under the Patent Cooperation Treaty, you’ll get a search of various international patents. But you’re pretty much on your own when it comes to bringing forth the non-patent prior art. And that makes sense – after all, you are the expert in the field of your invention, aren’t you?

Clients’ first reaction to this advice is almost uniformly: “But then I might not get my patent!” True, true. But if you do get a patent and, like Iovate, a competitor infringes, don’t you think he will find that prior art and turn your patent into an expensive piece of wallpaper?

How confident are you that your patents will stand up to a court challenge?


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In the last post I explained how a single prior art reference could describe all the elements in your invention but still notanticipateit, although it might make your invention obvious. In a recent court ruling it now seems the converse might also be possible – that an invention ruled non-obvious given the totality of the prior art might still be anticipated by a single prior art reference!

Just to make the terminology clear:

Anticipated = completely described in a single reference = not novel;
Obvious = insubstantively different from an existing invention or
                 a non-inventive combination of existing inventions.

In the case of Cohesive Technologies v. Waters, Waters was sued for infringing several patents. As part of its defense Waters alleged that the asserted claims were both anticipated (not novel) and obvious (trivially different). The trial court, in an unusual move…

…concluded that “the contentions that the defendant is making [are] best captured by obviousness,” rather than anticipation [and] 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.”

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”.

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.”

Acting on it’s opinion, the district court did not let the jury address the anticipation defense and instead provided a directed verdict against Waters. On appeal to the CAFC Waters won a reversal on this matter. In its written opinion the CAFC really wanted to make two legal points, neither of which are really likely to help Waters.

First, the CAFC wanted to correct the trend to conflate novelty and obviousness in so far as they apply to single prior art references. As exemplified by the district court’s thinking, many people feel that “anticipation…comes in in obviousness”. And it’s certainly true that an anticipating prior art reference will almost always support an obviousness defense (if the invention is not new/novel surely it’s at most trivially different). The CAFC, however, wanted to remind the district courts that novelty and obviousness are two independent sections of the patent law are should be treated as such (“We cannot conclude…that the novelty requirement of § 102 is mere surplussage, subsumed by the nonobviousness requirement of § 103.”)

Second, the CAFC wanted to chastise the district court for replacing Waters’ preferred legal strategy with the court’s preference. As the CAFC said:

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.

As a practical matter the CAFC’s ruling that a non-obvious claim might be anticipated by a prior art reference will have little impact on 99+% of all cases. The only situation the CAFC could envision was when the prior art reference “inherently” anticipates the invention in question. [Inherent anticipation is when a reference does describe the invention but in an indirect manner.] An anticipated claim can be non-obvious when, unlike Sherlock Homes with the perloined letter, a person of ordinary skill in the art does not recognize the inherently anticipated invention in the prior art, even though it’s there.

As an indication of how arcane this circumstance is, the CAFC turned to a rather odd example:

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.

I’m not sure what it says about the court that we need to call in Merlin to find anticipation, but it does suggest that the real point of the CAFC’s decision was to ensure that every defendent is allowed to set his own legal strategy and to chastise a legally sloppy district court.

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