In the recently issued case of ClearValue, Inc. v. Pearl River Polymers, Inc., Judge Moore, writing for the Federal Circuit panel, distinguished the holding in the 2006 case of Atofina v. Great Lakes Chemical Corp. In ClearValue, Judge Moore ruled that a process having a claimed raw alkalinity of “less than or equal to 50 ppm” was anticipated under 35 U.S.C. § 102 by a prior art process disclosing an alkalinity of “150 ppm or less.” I believe Judge Moore was correct in ruling that the claimed alkalinity of “less than or equal to 50 ppm” was anticipated by the art disclosed alkalinity of “150 ppm or less.” But her basis for distinguishing Atofina in ClearValue is very problematic in a number of respects, and could create further unnecessary confusion as to when a narrower claimed range in a process is anticipated by a broader range disclosed by the prior art.
As illustrated by the ClearValue and Atofina cases, one area where the Federal Circuit sometimes struggles in articulating clear doctrine is when is a narrower claimed range in a process is anticipated under 35 U.S.C. § 102 by a broader range disclosed by the prior art. A significant contributor to this problem is the unfortunate and interchangeable use by the Federal Circuit of the phrases “overlapping” and “encompassing.” (I have also found patent examiners fail to understand the difference between these phrases.) In my view, the phrase “overlapping” should be used only when the claimed and the art disclosed ranges partially overlap or share at least one common end point. By contrast, when a narrower claimed range fits within a broader range disclosed by the prior art, the term “encompassing” is more appropriate to describe the relationship of the claimed narrower range to the disclosed broader range. (Some refer to an “encompassed” range as a “sub-range.”)
To understand this unfortunate conflation by the Federal Circuit of “overlapped” process ranges versus “encompassed” process ranges, we must first start with the Atofina case. In Atofina, Judge Lourie, writing for a unanimous Federal Circuit panel, held that a process conducted at a temperature of between 330o and 450oC was not anticipated by prior art disclosing a temperature range of from 100o and 500oC. As correctly observed by Judge Lourie in Atofina, the art disclosed range is “broader than and fully encompasses the specific temperature range claimed.” (Judge Lourie further stated that, “[g]iven the considerable difference between the claimed range and the range in the prior art, no reasonable fact finder could conclude that the prior art describes the claimed range with sufficient specificity to anticipate this limitation of the claim” (emphasis added). As will be discussed below, this reference to “considerable difference” would cause trouble later in ClearValue.)
In determining that there was no anticipation under 35 U.S.C. § 102 of this narrower and “encompassed” temperature range, a key point articulated by the Judge Lourie in Atofina is that “the disclosure of a range is no more a disclosure of the end points of the range than it is of each of the intermediate points.” In other words, and as also stated by Judge Lourie in Atofina, “the [art] disclosure is only that of a range, not a specific temperature in that range” (emphasis added). I would agree with that statement in characterizing the impact of the broader art disclosed temperature range of from 100o and 500oC, relative to the narrower and “encompassed” claimed temperature range of “between 330o and 450oC.” But Judge Lourie unfortunately made these observations with respect to an additional and narrower art disclosed temperature range of from 150o to 350oC which truly “overlaps” the claimed temperature range, such “slight overlap” being characterized by Lourie as not disclosing the claimed temperature range. I have a hard time accepting that this “overlap,” even though slight, didn’t constitute an anticipatory disclosure of the claimed temperature range.
This issue of “overlapping” ranges in Atofina was also not limited to the temperature range of the claimed process. Regarding another key process parameter (the molar ratio of oxygen to methylene chloride), the claimed range of 0.1 to 5.0 percent was “slightly overlap[ped]” by the art disclosed range of 0.001 to 1.0 percent. Judge Lourie again ruled that this art disclosed “slightly overlap[ped]” percentage range did not “describe the entire claimed range with sufficient specificity to anticipate this limitation of the claim.” I must again “raise my eyebrows” as to how Judge Lourie could characterize this “overlap” between the claimed and art disclosed percentage ranges as being anything other than anticipatory, be it “slight” or otherwise.
Even with this problematic characterization of the “overlap” between these two process parameters, Judge Lourie’s ruling in Atofina may nonetheless be justified for additional reasons. First, because two (not simply one) of the process parameters were only “slightly overlapping,” and because there were apparently no teachings in the art reference of a specific temperature (or molar ratio) within the claimed ranges, it could be logically argued that this art, when view in its entirety, did not clearly anticipate the claimed process. (Or as Judge Learned Hand correctly observed in the 1942 case of Dewey & Almy Chemical Co. v. Mimex Co., anticipation is not a “hit or miss” proposition, but must involve the art squarely “aiming at the target.”)
In fact, where Judge Lourie’s opinion shockingly fails to “aim at the target” is in not recognizing that the situation in Atofina involves multiple “overlapped” ranges. In fact, much of Lourie’s opinion addresses the district court’s reliance (or more appropriately, misreliance) upon the 1985 case of Titanium Metal Corporation v. Banner in finding the claimed temperature and molar ratio ranges anticipated. Titanium Metal involved a much different factual situation where a single prior art reference specifically taught (“bullseyed”) the levels of two different metal components squarely within the ranges claimed for these components in the alloy, and thus was anticipatory. See MPEP § 2131.03 (Anticipation of Ranges) which refers to and discusses the Atofina case, as well as the Titanium Metal case.
Besides distinguishing Titanium Metal, Judge Lourie would have done better to further consider the cases cited MPEP § 2144.05 (Obviousness of Ranges), and in particular the 2003 and 2005 cases of In re Peterson and In re Harris cited in subsection I (Overlap of Ranges). As the Peterson and Harris cases show, the issue of “overlapping” multiple ranges most often comes up in the context of metallurgy (in this regard, Peterson and Harris share a pedigree with Titanium Metal). But the Peterson and Harris cases are also instructive in that the multiple claimed ranges that “overlapped” with the prior art reference went down based on prima facie obviousness under 35 U.S.C. § 103, not anticipation under 35 U.S.C. § 102. Similarly, because Atofina involved multiple “overlapping” ranges, the claimed process there should have been addressed as a potential issue of prima facie obviousness, not anticipation. And unfortunately, the discussion of Atofina in the MPEP § 2131.03 on anticipation of ranges (instead of MPEP § 2144.05 on obviousness of ranges) is likely to, and has already caused in my experience, confusion as to whether 35 U.S.C. § 102 or 35 U.S.C. § 103 applies when narrower “encompassed” process ranges are involved.
Second, Judge Lourie further observed that the art failed to disclose at all the claimed contact time of the gas phase mixture (i.e., methylene chloride, anhydrous hydrogen fluoride, and oxygen) with the catalyst of between 0.01 and 10 seconds. That finding, by itself, would negate anticipation of the claimed process under 35 U.S.C. § 102. But it should also be noted that this claimed contact time was only recited in some, not all, of the claims asserted in Atofina.
It is with this “muddled” ruling in Atofina about when art disclosed ranges are anticipatory that we now return to the ClearValue case. In ClearValue, the patentee asserted U.S. Pat. No. 6,120,690 (the “‘690 patent”) as being indirectly infringed by the defendants (collectively referred to as “Pearl River”). The ‘690 patent was directed to a process for clarifying low alkalinity water by using a combination of a high molecular weight di-allyl di-methyl ammonium chloride (“DADMAC”) and an aluminum polymer including an effective amount of poly-aluminum hydroxychloride (“ACH”) of a basicity equal to or greater than 50%. Pearl River asserted that the ‘690 patent was anticipated under 35 U.S.C. § 102 by U.S. Pat. No. 4,800,039 (“Hassick”). After a jury ruled in favor of the patentee, the district court denied Pearl River’s motion for JMOL based on the patentee’s testimony that Hassick “teaches away” from the claimed process (i.e., Hassick suggested the combination of ACH and the high molecular weight DADMAC didn’t work as well in clarifying water).
On appeal, Judge Moore was confronted by the patentee with Judge Lourie’s earlier ruling in Atofina on when art disclosed ranges are anticipatory under 35 U.S.C. § 102. If Harrick’s disclosed alkalinity of “150 ppm or less” was anticipatory of the claimed alkalinity of “less than or equal to 50 ppm,” the patentee’s testimony on Hassick “teaching away” from the claimed process would then be irrelevant. (As correctly observed by Judge Moore, whether a reference “teaches away” is “inapplicable to an anticipation analysis” under 35 U.S.C. § 102, citing the 1998 Federal Circuit case of Celeritas Technologies., Ltd. v. Rockwell International Corp.) But if this disclosed alkalinity in Harrick was not anticipatory, then 35 U.S.C. § 103 should instead apply, and the patentee’s “teaching away” testimony would be clearly relevant in determining “obviousness” under 35 U.S.C. § 103.
Confronted with this evidentiary dilemma posed by “anticipation versus obviousness,” Judge Moore chose to finesse the evidentiary dilemma by distinguishing Atofina so that her validity ruling in ClearValue would be based squarely on anticipation under 35 U.S.C. § 102, and not obviousness under 35 U.S.C. § 103. A primary basis for Moore distinguishing Atofina was that the patentee in Atofina had described the claimed temperature range as being “critical” in enabling the claimed process to operate. By contrast, the patentee in ClearValue “had not argued that the 50 ppm limitation” in the claimed process was “critical.”
Judge Moore’s “failure to assert criticality” proposition for the claimed alkalinity range might have worked as a basis for distinguishing Atofina. Unfortunately, there is one very significant legal flaw in Moore’s reasoning for distinguishing Atofina: “criticality” of the claimed temperature range was never mentioned by Judge Lourie as his ratio decidendi for the ruling in Atofina that the “overlapping” art disclosed temperature range was not anticipatory. Instead, Lourie’s ruling of no anticipation of the claimed temperature range was without any regard to any such alleged “criticality.” Accordingly, this alleged “failure to assert criticality” proposition by Judge Moore won’t work as a logical basis for distinguishing Atofina.
Judge Moore’s opinion very wisely stayed away from relying solely upon the specific example of 60-70 ppm alkalinity disclosed by Harrick as being “close enough” to claimed alkalinity range. (“Close enough” might work with horseshoes or hand grenades, but as subsection III of MPEP § 2131.03 correctly points out, it doesn’t work in supporting a rejection of claimed ranges as being anticipated.) Instead, she relied squarely upon the broader disclosed alkalinity range of “150 ppm or less” taught by Harrick for anticipation.
But Moore’s opinion again heads into troublesome “deep water” by referring to this disclosed alkalinity range of “150 ppm or less” as “a genus disclosure as in Atofina.” In Moore’s defense, this reference to this alkalinity range of “150 ppm or less” of Harrick as a “genus disclosure” is caused by an unfortunate choice of phrases (as well as analogies) by Judge Lourie in Atofina. In Atofina, Lourie refers to the art disclosed broader temperature range as the “genus” of the narrower claimed temperature range, again citing Titanium Metal.
But this unfortunate “genus versus species” analogy is unsupported by the Titanium Metal case, which makes no reference at all to “genus versus species,” but simply holds (as discussed above) that a single art disclosed alloy example can anticipate the ranges of component metals claimed in an alloy. The “genus versus species” phraseology may be appropriate in determining when individual compounds (“species”) are not anticipated by, or rendered obvious over, a disclosure of the compound class or formula (the “genus”) that encompasses those species. But in my opinion, such “genus versus species” phraseology only causes unnecessary confusion when determining when a claimed range of a process is anticipated by an art disclosed process range. Instead, it would have been better to refer to the broader disclosed process range as “generic,” and to refer to the narrower claimed process range as a specific or preferred “embodiment” of the “generic” process range.
Judge Moore’s opinion also unfortunately says that, “unlike Atofina, here there is no ‘considerable difference between the claimed range and the range in the art.’” This latching onto the “no considerable difference” distinction is as inadequate for supporting the anticipation ruling of the claimed alkalinity range in ClearValue, as it is for holding no anticipation either of the claimed temperature range or molar ratio range in Atofina. As Judge Learned suggested in Dewey & Almy Chemical Co., anticipation is not based on “considerable differences,” but on only whether there is any difference at all between what is claimed and was is disclosed. (Or as Judge Hand essentially said in Dewey & Almy Chemical Co., there can be no “hit or miss” in anticipation, only squarely hitting the “target” that was “aimed” at by the art). In fact, Moore’s opinion in ClearValue fails to squarely address why the difference of 100 ppm between the claimed upper alkalinity limit and the art disclosed upper alkalinity limit isn’t a “considerable difference” in view of Atofina.
If Judge Moore hadn’t had to contend with Judge Lourie’s earlier ruling in Atofina, she would have had a much more direct (and logically correct) path towards anticipation under 35 U.S.C. § 102: the art disclosed alkalinity of “150 ppm or less” clearly “overlaps” the claimed alkalinity of “less than or equal to 50 ppm.” In fact, by disclosing “or less” with respect to alkalinity, Harrick clearly taught ranges that would include the claimed “less than or equal to 50 ppm.” By “overlapping” the claimed alkalinity range (and not simply “encompassing” a narrower claimed range as discussed by Judge Lourie with reference to the broader disclosed temperature range in Atofina), Harrick was clearly anticipatory under 35 U.S.C. § 102 of the claimed alkalinity of “less than or equal to 50 ppm.”
In fact, calling the claimed alkalinity of “less than or equal to 50 ppm” a range is somewhat of a misnomer. Instead, it would be more appropriate to refer to this process parameter as a “maximum” level as it reads on an alkalinity of 0 ppm, as also did the art disclosed alkalinity levels. In a situation involving “overlapped” maximal levels, the correctness of Moore’s anticipation ruling under 35 U.S.C. § 102 is even clearer to me (but not for the reasons she relies upon) as both the claimed and disclosed alkalinity range share a common “end point,” namely 0 ppm.
But unfortunately for Judge Moore, Judge Lourie’s opinion in Atofina greatly (and in my view unnecessarily) “muddies the water” on when a disclosed process range anticipates a claimed process range. Unlike Atofina, ClearValue involves, at most, only one “overlapped” process range (and, in my opinion, shouldn’t even be characterized as a situation involving “overlapped” process ranges, but instead as “overlapped” maximal levels). While Judge Moore’s opinion in ClearValue is heavily burdened by Lourie’s analytical “sloppiness,” and poor choice of “phraseology in, Atofina, Moore nonetheless compounds this problem by choosing bases for distinguishing Atofina that don’t stand up under careful scrutiny. And unless the Federal Circuit grants an en banc hearing in the ClearValue case, the proper distinction between “overlapping” and “encompassing” process ranges in determining anticipation (or obviousness) may remain as “murky” as ever.
*© 2012 Eric W. Guttag. Posted February 22, 2012 on IPWatchdog.com.