Anticipation (Sec. 102)

  • BASICS: “A prior art reference anticipates a patent’s claim … ‘when the four corners of [that] . . . document describe every element of the claimed invention, either expressly or inherently, such that a [PHOSITA] could practice the invention without undue experimentation.’” VirnetX (Fed. Cir. 12/09/16) (non-precedential) (2-1) (aff’g PTAB anticipation determination); TF3 Ltd. (Fed. Cir. 07/13/18) (rev’g PTAB anticipation finding; “claims cannot be ‘anticipated’ by devices that are not the same. Invalidity for anticipation requires that ‘[t]he identical invention must be shown in as complete detail as contained in the patent claim.’”). Must be based on a single prior art reference that contains an enabling disclosure of each and every element of the claim, arranged as in the claim. Cornell (Fed. Cir. 11/23/83) (“Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.”); see 35 U.S.C. § 102 (pre-AIA); A prior art reference’s disclosure is tested in essentially the same manner as a Spec. under the “written description” requirement (i.e., it may be explicit or inherent). Schering (Fed. Cir. 08/01/03) (“inherent anticipation does not require that a person of ordinary skill in the art at the time would have recognized the inherent disclosure”). See generally DDR Holdings (Fed. Cir. 12/05/14) (rev’g jury verdict of no anticipation); Minerals Separation (U.S. 02/24/1930) (earlier patent’s teaching was a general one which anticipated claims of asserted patent).
  • Anticipation Is A Question Of Fact: “The Supreme Court and this court has stated for decades that anticipation is a factual question.” Microsoft (Biscotti) (Fed. Cir. 12/28/17) (2-1) (aff’g PTAB decision of no anticipation). Anticipation and what a reference discloses are questions of fact but whether a reference is enabling is a question of law based on underlying factual inquiries. In re NTP (Seven Appeals) (Fed. Cir. 08/01/11).
  • Extrinsic Evidence May Prove What Is Disclosed In Reference, And In Some Cases May Be Required, But May Not Add To Reference’s Disclosures: Extrinsic evidence may be considered to prove what’s disclosed inherently in the single reference. Monsanto (Fed. Cir. 01/05/18) (aff’g propriety of PTAB inherent anticipation and obviousness findings that relied on declaration from prior art patent’s inventor regarding what was necessarily sometimes produced by methods disclosed in prior art reference); Parkervision (Fed. Cir. 07/31/15) (non-precedential) (rev’g denial of JMOL of anticipation; unrefuted expert testimony showed what was “implicit” in reference’s circuit operation). “The purpose of extrinsic evidence in an anticipation analysis ‘is to educate the decision-maker to what the reference meant to persons of ordinary skill in the field of the invention, not to fill gaps in the reference.’” Wilson (Fed. Cir. 10/21/19) (non-precedential) (aff’g PTAB anticipation decision based in part on expert testimony). If technology is complex expert testimony may be required to show anticipation. Synopsys (Mentor) I (Fed. Cir. 02/10/16) (dictum). While proper to rely on second reference to show that first reference is enabling, may not turn to second reference “for a very specific teaching” of what is not expressly or inherently disclosed in the alleged anticipatory reference. Galderma (Fed. Cir. 01/29/20) (non-precedential) (rev’g anticipation judgment based on incorporating a specific disclosure from one reference into the primary reference).
  • Reference Discloses Whatever Skilled Artisan Would “Reasonably Understand Or Infer” From It, But Not What It Merely Suggests Or Makes Obvious: “The Board was correct in characterizing the dispositive question regarding anticipation as whether one skilled in the art would reasonably understand or infer from the [reference’s] that” an element had the feature required by the later claim. In re Baxter Travenol (Fed. Cir. 12/31/91); Blephex (Fed. Cir. 02/02/22) (aff’g preliminary injunction; aff’g finding that artisan would not “at once envisage” combining elements of two different embodiments in reference); Acoustic Tech. (Fed. Cir. 02/13/20) (aff’g PTAB anticipation as supported by expert testimony of what skilled artisan would recognize that reference disclosed); Blue Calypso (Fed. Cir. 03/01/16) (aff’g CBM anticipation decision; “skilled artisan would ‘at once envisage’ the combination of two of the disclosed tools” shown separated in the reference; sufficient if “reference teaches that the disclosed components or functionalities may be combined”); Kennametal (Fed. Cir. 03/25/15) (“a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.”); In re Preda (CCPA 10/24/68) (“in considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”); In re Arkley (CCPA 02/17/72) (rev’g PTO rejection of claims; to anticipate under sec. 102(e), reference “must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference”); Hayward (Fed. Cir. 06/12/20) (non-precedential) (vacating PTAB no anticipation finding; reference discloses claimed combination of elements albeit not as part of single embodiment); cf. Nidec Motor (Fed. Cir. 03/14/17) (rev’g PTAB anticipation finding; distinguishing Kennametal: “Kennametal does not stand for the proposition that a reference missing a limitation can anticipate a claim if a skilled artisan viewing the reference would ‘at once envisage’ the missing limitation. Rather, Kennametal addresses whether the disclosure of a limited number of combination possibilities discloses one of the possible combinations.”); but see UCB (Fed. Cir. 04/12/23) (rev’g anticipation (but aff’g obviousness) where claimed range overlapped prior art reference’s range; trial court erred by applying Kennemetal “immediately envisage” analysis (which would apply if reference disclosed a point within the claimed range) rather than “considering the criticality of the claimed range” as required); Eli Lilly (Fed. Cir. 02/28/17) (aff’g PTAB rejection of anticipation: reference must disclose not merely suggest claim limitation; “a fair reading of” of prior art “is that it refers to daily administration for at least three days, and more if the erectile dysfunction persists. That does not disclose the treatment of penile fibrosis for at least 45 days, particularly in light of the fact that the only daily dosing done in Whitaker lasted for at most three weeks.”); AstraZeneca (Fed. Cir. 11/01/10) (“In the context of anticipation, the question is not whether a prior art reference ‘suggests’ the claimed subject matter.”); Virnetx (Fed. Cir. 10/20/23) (non-precedential) (aff’g anticipation: “The core inquiry is whether a person of ordinary skill in the art would understand the reference to disclose the limitation in question, rather than merely ‘envisage’ a limitation that is in fact missing from the reference.”).
  • A Reference May Anticipate Without Using The Same Language As The Claim: “The invention is not the language of the [claim] but the subject matter thereby defined. Thus, a prior art inventor need not conceive of its invention using the same words as the patentee would later use to claim it.” Adasa (Fed. Cir. 12/16/22) (rev’g Summ. J. of no anticipation).
  • A Reference Does Not Disclose What A PHOSITA Would Have Disregarded As An Obvious Error: “‘Where a prior art reference includes an obvious error of a typographical or similar nature that would be apparent to one of ordinary skill in the art who would mentally disregard the errant information as a misprint or mentally substitute it for the correct information, the errant information cannot be said to disclose subject matter.’” LG Elecs. (Fed. Cir. 07/11/22) (2-1) (aff’g PTAB non-obviousness where PHOSITA would have concluded that the reference’s teaching was due to an obvious transcription error from Japanese parent application); In re Yale (CCPA 12/10/70) (since the reference’s listing of a compound was “an error obvious to one of ordinary skill in the art, it cannot be said to describe or suggest that compound to those in the art”).
  • Two Embodiments Or Widely Spaced Disclosures In Reference Sometimes May Be Combined To Anticipate Claim: Compare Chamberlain Grp. (Fed. Cir. 08/21/19) (aff’g jury verdict of no anticipation, but no “blanket rule that two embodiments disclosed in a reference can never be considered in combination to make a finding of anticipation”) with In re Gates (Fed. Cir. 10/16/19) (non-precedential) (rev’g PTO anticipation rejection of claims; no disclosure of embodiment having both features recited in claim). See Intel (Fed. Cir. 06/27/23) (non-precedential) (aff’g PTAB finding that two Figures in reference were separate embodiments; Intel waived arguing their combination anticipated); CG Tech. (Fed. Cir. 12/17/19) (non-precedential) (aff’g that patent reference discloses feature, based on disclosures 20 columns apart). Cf. Broadcom (Fed. Cir. 03/08/22) (as part of obviousness analysis PTAB did not err combining two embodiments of the reference because they were part of the same invention).
  • Ambiguous Disclosure Does Not Anticipate: “Anticipation requires that a single reference ‘describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.’ For this reason, it has long been understood that ambiguous references do not, as a matter of law, anticipate a claim.” Wasica Finance (Fed. Cir. 04/04/17) (aff’g PTAB determination of no anticipation); In re Arkley (CCPA 02/17/72) (rev’g PTO rejection of claims; to anticipate under sec. 102(e), reference “must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference”); In re Turlay (CCPA 07/25/62) (rev’g anticipation: “It is well established that an anticipation rejection cannot be predicated on an ambiguous reference.”). See Wi-Lan (Fed. Cir. 01/17/17) (2-1) (non-precedential) (rev’g Summ. J. of anticipation; reference’s disclosure ambiguous).
  •  A Reference That Must Be Modified To Disclose Claimed Combination Does Not Anticipate: “It is not sufficient to constitute an anticipation that the device relied upon might, by modification, be made to accomplish the function performed by the patent in question, if it were not designed by its maker, nor adapted, nor actually used, for the performance of such functions.” Enplas Display (Fed. Cir. 11/19/18) (aff’g Summ. J. of no anticipation; “prior art that must be modified to meet the disputed claim limitation does not anticipate the claim.”); Topliff (U.S. 05/02/1892); Apple (Fed. Cir. 06/23/21) (non-precedential) (reference contained an error such that two lenses occupied same space, unless disclosure modified to correct that error that embodiment would be inoperative, and therefore no anticipation).
  • Teaching Away From Claimed Invention Not Relevant To Anticipation: That reference teaches away from claimed invention is irrelevant to anticipation. Clearvalue (Fed. Cir. 02/17/12) (rev’g denial of JMOL motion arguing anticipation).
  • Must Disclose Claimed Combination Of Elements, Not Just All Claim Elements, But That Combination Need Not Be Express: “We thus hold that unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIn (Fed. Cir. 10/20/08) (rev’g anticipation by reference disclosing all claim limitations but in two alternative protocols neither of which had all claim limitations); accord In re Chudik (Fed. Cir. 03/27/17) (rev’g PTAB anticipation rejection: “a prior art reference anticipates a claim only if it discloses all the elements ‘in the same form and order as in the claim.’”); Therasense (Fed. Cir. 01/25/10) (rejecting contrary jury instruction) (reinstated en banc); SynQor (Fed. Cir. 03/13/13) (even if reference “discloses each discrete element of each claim,” it “does not disclose those elements arranged as required by the claim.”); Trustees of Columbia (Fed. Cir. 07/17/15) (non-precedential) (aff’g PTAB obviousness holding: paragraphs disclosing the two elements being adjacent teaches utility of using elements together); Purdue Pharma (Fed. Cir. 02/01/16) (aff’g anticipation; “an anticipating reference ‘must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.’”); Victaulic (Fed. Cir. 11/29/18) (non-precedential) (aff’g PTAB anticipation decision; reference’s description of elements in summary of the invention not limited to describing particular preferred embodiments (none of which had all elements combined).) Cf. Tech. Consumer (Fed. Cir. 04/08/20) (vacating PTAB finding of no anticipation; because one member in reference satisfies claim-recited dimensions of claimed “heat sink,” the reference anticipates despite it having a second heat sink member that does not meet claim’s requirements; distinguishing Chudik).
  • Limitations Must Be Arranged Or Combined In Same Way As In Claim: All claim limitations must be arranged in reference as in the claim. Sanofi-Synthelabo (Fed. Cir. 12/12/08); all limitations must be “arranged or combined in the same way as in the claim.” Net MoneyIn (Fed. Cir. 10/20/08).
  • Claim Requiring Certain Information To Be Always Indicated Not Anticipated By Sometimes Indicating That Information: “‘The mere fact that a certain thing may result from a given set of circumstances is not sufficient’ to show anticipation where the claim, as here, requires more.” Synopsys (Mentor) I (Fed. Cir. 02/10/16).
  • Claim with Negative Limitation Anticipated By Reference Disclosing That Limitation As Optional: “An ‘optional inclusion’ of a feature in the prior art anticipates a claim that excludes the feature.” Prolitec (Fed. Cir. 12/04/15); Upsher-Smith (Fed. Cir. 06/17/05) (where claim recited “composition being essentially free of anti[]oxidants,” and prior art reference disclosed that inclusion of antioxidants was optional, the reference anticipated the negative limitation, “despite no express teaching to exclude the antioxidants” and despite discussing the benefits of adding antioxidants). Cf. AC Tech. (Fed. Cir. 01/09/19) (aff’g PTAB obviousness; “a reference need not state a feature’s absence in order to disclose a negative limitation”); Almirall (Fed. Cir. 03/14/22) (aff’g that reference disclosed negative limitation because it disclosed a complete formulation that lacked the element excluded by the negative limitation); Sud-Chemie (Fed. Cir. 01/30/09) (vacating obviousness Summ. J. on other grounds; reference disclosing a technique that does not require coating thereby disclosed the claim limitation “uncoated”).
  • Claim Encompassing Multiple Embodiments Anticipated By Reference Disclosing Any One Embodiment: “‘When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art.” In re Theresa (Fed. Cir. 01/17/18) (non-precedential).; In re Lukash (CCPA 05/27/71) (“the description of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes.”)
  • Single Feature In Reference May Disclose Multiple Claim Elements: “In infringement or obviousness analysis, a single element, feature, or mechanism can ordinarily satisfy multiple claim limitations, including by performing multiple claimed functions.” Google (Fed. Cir. 08/01/18) (non-precedential) (aff’g PTAB obviousness decision).
  • A Prior Art Patent’s Claims Are Part Of Its Disclosure: A prior art patent’s broad claim not requiring a particular limitation helps show that the patent’s disclosure is not so limited, and claim differentiation may show that the limitation is not required. Therasense (Fed. Cir. 01/25/10) (reinstated en banc); In re AT&T (Fed. Cir. 05/10/17) (aff’g PTAB anticipation finding; reference disclosed both broadly and more narrowly (in a preferred embodiment) as shown by reference’s broad claim 1 and narrower dependent claim); Grit (Fed. Cir. 04/30/20) (2-1) (rev’g PTAB interpretation of prior art patent’s disclosure; reference’s claim’s disclosure that a pin could be placed in either of two locations broader than “non-limiting” example (showing placement opposite of that of challenged claims) despite having reference numbers referring to that non-limiting example).
  • Anticipating Disclosure May Be In Drawings Alone: “‘Description for the purposes of anticipation can be by drawings alone as well as by words.’” In re Mraz (CCPA 03/09/72) (aff’g obviousness rejection); Google (Intellectual Ventures II LLC) (Fed. Cir. 07/10/17) (non-precedential) (remanding to PTAB to explain no-anticipation finding); see Paice (Ford) (Fed. Cir. 02/01/18) (non-precedential) (2-1) (aff’g PTAB obviousness finding based in part on drawing in prior art reference which “provides some scale information—which expert evidence reasonably found telling on the point at issue.”) But see Hockerson-Halberstadt (Fed. Cir. 07/27/00) (rejecting proposed broader claim construction; “patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”)
  • Allegation Of Infringement Sufficient To Establish Anticipation (If Accused Product Shown To Be Prior Art): Patent owner’s allegation that accused product (shown to be prior art) infringes, meets the alleged infringer’s burden to prove that the prior art anticipates. Vanmoor (Fed. Cir. 03/07/00) (aff’g on sale bar invalidity Summ. J., despite the defendants having denied infringement), where “the pre-critical date sales were of completed cartridges made to specifications that remain unchanged to the present day”); Evans Cooling (Fed. Cir. 09/16/97) (aff’g on sale bar invalidity Summ. J., despite the defendants having denied infringement). See Peters (U.S. 03/05/1889) (“That which infringes, if later, would anticipate, if earlier.”); CommScope (Fed. Cir. 08/24/21) (aff’g JMOL of non-infringement where patent owner’s infringement contentions contradicted its non-anticipation arguments on same claim element: “a patent may not, like a nose of wax, be twisted one way to avoid anticipation and another to find infringement”).
  • TIPS:

a) inherent disclosure

  • Inherent Anticipation Requires That Unstated Limitation Necessarily Be Present: “Anticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation.” Transclean (Fed. Cir. 05/21/02) (no inherent anticipation despite possibility that limitation of equalizing flow rates would be met under some circumstances); Personal Web (Fed. Cir. 03/08/19) (rev’g PTAB inherency finding and obviousness as asserted disclosure was not necessarily present); Google (At Home) (Fed. Cir. 02/22/18) (non-precedential) (aff’g PTAB finding that reference’s disclosure of CGI script request (which typically is not blocked by a cache system) did not necessarily disclose non-blockable request because of evidence that some CGI script requests are blocked); 3Form (Fed. Cir. 02/02/17) (non-precedential) (aff’g inherent anticipation based in part on expert’s test using prior art reference method); U.S. Water Services I (Fed. Cir. 12/15/16) (vacating Summ. J. of inherency anticipation; whether feature necessarily present genuinely disputed); LBT IP (Fed. Cir. 06/09/23) (non-precedential) (rev’g PTAB obviousness finding; expert testimony insufficient to show missing feature necessarily present); U.S. Water Services II (Fed. Cir. 04/19/19) (non-precedential) (rev’g district court JMOL of inherent anticipation; there is substantial evidence to support jury finding that reference’s example “only discloses the possibility of reducing phytic acid concentration below detection levels,” which is “not legally sufficient to demonstrate inherent anticipation.”). “‘The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’” White (Fed. Cir. 02/19/16) (non-precedential) (aff’g PTAB decision that reference inherently disclosed that cover was totally removable from container because did not disclose a stop and disclosed that user determined how far to peel back the cover.) “[T]here are strict requirements before a finding of inherent anticipation is made. Indeed, inevitability is at the heart of inherency.” Howmedica (Fed. Cir. 02/26/16) (non-precedential) (aff’g PTAB finding of inherency based on declarant’s reproduction of prior art).
  • Discovering Property Of Prior Art Not Patentable: Under the principle of inherent anticipation, “The general principle that a newly-discovered property of the prior art cannot support a patent on that same art is not avoided if the patentee explicitly claims that property.” Abbott Labs (Fed. Cir. 11/09/06); In re Montgomery (Fed. Cir. 05/08/12) (2-1) (“result is only inherent if it inevitably flows from the prior art disclosure;” aff’g BPAI anticipation rejection); Endo Pharma. (Fed. Cir. 07/13/18) (aff’g finding no inherency; “an inherent characteristic of a formulation can be part of the prior art in an obviousness analysis even if the inherent characteristic was unrecognized or unappreciated by a skilled artisan.”); In re Swinehart (CCPA 04/01/71) (“it is elementary that the mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art”).
  • Patent May Admit That Claim-Recited Property Is Inherent In Prior Art: “‘[e]ven if no prior art of record explicitly discusses the [limitation], the [patent applicant’s] application itself instructs that [the limitation] is not an additional requirement imposed by the claims on the [claimed invention], but rather a property necessarily present in the [claimed invention].’” Alcon Res. (Fed. Cir. 08/08/12) (quoting In re Kubin (Fed. Cir. 04/03/09)) (claim language “does not impose any additional requirement” because patent states that the property is necessarily present at the claimed concentrations).
  • Inherency Finding May Be Based On Non Prior Art Data: Hospira (Fed. Cir. 01/09/20) (aff’g inherency finding, and obviousness based thereon, based in part on patentee admissions and in part on data from post priority date test samples of prior art formulation); Cornell Research (Fed. Cir. 05/24/22) (non-precedential) (aff’g PTAB obviousness based on inherency finding supported by statements in challenged patent).

b) genus – species

  • Disclosing Genus (e.g., Broader Range) May Or May Not Anticipate Claimed Species (e.g., Narrower Range): Disclosing a broader genus does not necessarily disclose all species within that genus. ArcelorMittal I (Fed. Cir. 11/30/12) (“when a prior art reference discloses a ‘definite and limited class’ of suitable members within a general formula, it may be read to disclose each member of that class”). Compare Shire (Fed. Cir. 09/24/15) (aff’g Summ. J. of non-obviousness; reference disclosed “thousands of possible compounds” and 30 specific examples, none of which was claimed compound; did not disclose a “definite and limited class” including claimed composition); Atofina (Fed. Cir. 03/23/06) (reference disclosing temperature range of 100°-500° C did not anticipate claimed range of 330° – 400° C, which range patent said was critical); Osram Sylvania (Fed. Cir. 12/13/12) (rev’g Summ. J.; genuinely disputed whether genus prior art disclosure “approximately 1 torr or less” anticipates claimed species “less than 0.5 torr” range); and In re Stepan (Fed. Cir. 08/25/17) (2-1) (vacating Sec. 103 rejection of app. claims; PTO did not meet its burden to make prima facie showing that claimed element of “achieving a cloud point above 70° C” would have been obvious from reference teaching cloud point should be above 60° C) with VirnetX (Fed. Cir. 12/09/16) (non-precedential) (2-1) (aff’g PTAB anticipation determination that disclosure of the genus “computer” encompasses the claimed “notebook computer” species, despite lack of expert testimony on the point); Warner Chilcott (Fed. Cir. 03/18/16) (non-precedential) (aff’g Sec. 103 invalidity; reference disclosed range including claimed amount and that amount not critical where Spec. disclosed varying values) Clearvalue (Fed. Cir. 02/17/12) (reference disclosing alkalinity of 150 ppm or less anticipated claim reciting alkalinity of 50 ppm or less: no allegation of criticality in narrower range or any evidence that the chemical process works differently across the broader range). But disclosing a list of enabled species does disclose each member of that list. In re Gleave (Fed. Cir. 03/26/09); Ineos (Fed. Cir. 04/16/15) (a claimed range is anticipated by disclosure of a point within that range; a reference disclosing a range is not disclosure of the endpoints of that range; disclosure of a range anticipates only “if it describes the claimed range with sufficient specificity such that a reasonable fact finder could conclude that there is no reasonable difference in how the invention operates over the ranges”); UCB (Fed. Cir. 04/12/23) (rev’g anticipation (but aff’g obviousness) where claimed range overlapped prior art reference’s range; trial court erred by applying Kennemetal “immediately envisage” analysis (which would apply if reference disclosed a point within the claimed range) rather than “considering the criticality of the claimed range” as required). Where reference discloses genus the issue is “whether the genus was of such a defined and limited class that one of ordinary skill in the art could ‘at once envisage’ each member of the genus,” but where reference discloses numerous species the issue is whether the number disclosed “was so large that the [claimed] combination would not be immediately apparent to one of ordinary skill in the art.” WM Wrigley (Fed. Cir. 06/22/12); Kennametal (Fed. Cir. 03/25/15) (substantial evidence supports anticipation); Ineos (Fed. Cir. 04/16/15) (aff’g Summ. J. of anticipation where prior art range broader than claimed range; patent owner “has not established that any of these properties [that the Spec. attributes to the claimed element range] would differ if the range from the prior art … patent is substituted for the range of limitation”); In re Petering (CCPA 04/13/62) (reference disclosing class of 20 compounds disclosed each of them because skilled artisan reading the reference would “at once envisage each member of this limited class”); Cf. BASF (Fed. Cir. 07/17/18) (non-precedential) (aff’g PTAB obviousness decision, substantial evidence supports finding that reference’s phrase “reduction of oxides in nitrogen” “include[s] and disclose[s] ammonia SCR”).
    • Instances Where Genus-Species Analysis Does Not Apply: Method claim using materials having certain claim-recited properties, where prior art references disclose myriad variations of compositions having those properties, does not present a genus-species situation for purposes of anticipation. Incept (Fed. Cir. 08/16/23) (aff’g IPR Board finding anticipation despite prior art disclosing millions of variations of its compositions); Google (At Home) (Fed. Cir. 02/22/18) (non-precedential) (rejecting argument that non-blockable CGI request was necessarily present in “genus” disclosure of a CGI request without specifying if blockable or non-blockable: “The genus-species analysis is not applicable here. Silence is not a genus. The issue here is whether there is any disclosure of a non-blockable request at all.”).
  • Where Claimed Range Overlaps Reference’s Range, Patent Owner Bears Burden Of Production To Show Criticality Of Claimed Range: “Once the patent challenger has established, through overlapping ranges, its prima facie case of anticipation, ‘the court must evaluate whether the patentee has established that the claimed range is critical to the operability of the claimed invention.’” Genentech (Hospira) (Fed. Cir. 01/10/20) (2-1) (aff’g PTAB anticipation finding); Ineos (Fed. Cir. 04/16/15) (aff’g Summ. J. of anticipation where prior art range broader than claimed range; “when the prior art discloses a range, rather than a point, the court must evaluate whether the patentee has established that the claimed range is critical to the operability of the claimed invention”). See Moderna (Fed. Cir. 12/01/21) (aff’g PTAB non-obviousness based on failure to show prior art necessarily disclosed overlapping ranges, in part because “here the assumption necessary to derive the implicit overlapping range is itself undermined by the unpredictable interactivity between the components”).

c) method claims

  • Part-Time Performance Of Method Sufficient To Anticipate: Just as part-time performance of a method is infringement, part-time performance of a method (by a prior art teaching) is anticipation. “It does not matter that the use of alphabetical order for locations would not always result in farther-over-nearer ordering. It is enough that the combination would sometimes perform all the method steps, including farther-over-nearer ordering.” Unwired Planet (Fed. Cir. 11/15/16) (combination of art listed search results alphabetically which would sometimes satisfy claim-recited output of further service provider ahead of nearer service provider); Hewlett-Packard (Fed. Cir. 08/07/03) (“Just as ‘an accused product that sometimes, but not always, embodies a claimed method nonetheless infringes,’ a prior art product that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention.”); Target (Fed. Cir. 09/20/23) (non-precedential) (vacating PTAB non-obviousness finding in IPR for error of law where undisputed prior art design would perform method claim’s step in some environments and situations); cf. ParkerVision (Fed. Cir. 09/13/18) (aff’g PTAB decision that method claims not anticipated (but rev’g on apparatus claims); although prior art device capable of the claimed operation in some modes of operation, there was no showing “why a person of ordinary skill in the art would have been motivated to use the particular inputs that would result in such an output.”)
  • Anticipation Of Method Claim With Contingent (Conditional) Steps (If-Then/If-Then-Else): Perhaps rely on this non-precedential dictum and argue that an anticipatory reference need not disclose a contingent step and need disclose only one branch of an if-then-else pair of alternative steps: “It is of course true that method steps may be contingent. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.” Cybersettle (Fed. Cir. 07/24/07) (non-precedential); see Schumer (Fed. Cir. 10/22/02) (method claim infringed; the method step: “receiving a definition of a second coordinate system for the digitizer, which second coordinate system allows specification of points specified in the digitizer’s coordinate system but is not congruent with the digitizer’s coordinate system because one of the following elements is different from the digitizer’s coordinate system: location of the point of origin, or angle of rotation, or …” “is performed if any of the three features of a coordinate system is translated, and thus, infringement occurs if any one of these translations is performed.”); Brown (Fed. Cir. 09/18/01) (apparatus claim anticipated by reference that used only two-digit representations, where recited “a[t] least one database file stored in the memory containing records with year-date data with years being represented by at least one of two-digit, three-digit, or four-digit year-date representations.”) See MPHJ (Fed. Cir. 02/13/17) (O’Malley, J., dissenting) (in analyzing anticipation of system claim, “the “wherein” limitation at issue is conditional; it explains that a specific protocol is used when one of said external destinations is email application software. Under the broadest reasonable interpretation of claim 1, the limitations in the “wherein” clause would not apply because email application software is not required to be the external destination in all embodiments.”)
  • TIPS:

d) apparatus claims

  • Apparatus Claim Needs Structural Novelty: “apparatus claims cover what a device is, not what a device does. An invention need not operate differently than the prior art to be patentable, but need only be different.” Hewlett-Packard (Fed. Cir. 07/30/90). Apparatus claims must distinguish prior art based on structure, not just function, and not differences in the material worked upon, In re Otto, 312 F2d 937 (CCPA 1963), or the manner of intended use, In re Casey, 370 F.2d 576 (CCPA 1967) (per MPEP 2115: “an apparatus claim recited ‘[a] taping machine comprising a supporting structure, a brush attached to said supporting structure, said brush being formed with projecting bristles which terminate in free ends to collectively define a surface to which adhesive tape will detachably adhere, and means for providing relative motion between said brush and said supporting structure while said adhesive tape is adhered to said surface.’ An obviousness rejection was made over a reference to Kienzle which taught a machine for perforating sheets. The court upheld the rejection stating that ‘the references in claim 1 to adhesive tape handling do not expressly or impliedly require any particular structure in addition to that of Kienzle.’ The perforating device had the structure of the taping device as claimed, the difference was in the use of the device, and ‘the manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself.’”) See MPEP 2114 and 2115. In re Chudik (Fed. Cir. 08/25/17) (non-precedential) (aff’g anticipation rejection of app. claims; “The patentability of an apparatus claim ‘depends on the claimed structure, not on the use or purpose of that structure.’” Claim to “a humeral implant comprising a humeral surface component having a non-articular surface configured for long-lasting fixation of the implant on a humeral head and no stem,” anticipated by glenoid implant). But see In re Rehrig (Fed. Cir. 01/30/12) (non-precedential) (rejecting BPAI construction that “construed top frame as a structure that is merely ‘capable of being used’ on top of a pallet of goods to stabilize them;” instead holding that “a top frame must be a structure placed on top of a layer of objects”; and rev’g BPAI anticipation holding based on reference that did not disclose that “structural limitation that a top frame must be used on top of a pallet of goods”).
  • Part-Time Performance Of Claimed Function (Capability) Sufficient Unless Claim Requires Different Physical Configuration (Structure): “A prior art reference may anticipate or render obvious an apparatus claim—depending on the claim language—if the reference discloses an apparatus that is reasonably capable of operating so as to meet the claim limitations, even if it does not meet the claim limitations in all modes of operation. … Our cases distinguish between claims with language that recites capability, and those that recite configuration.” ParkerVision (Fed. Cir. 09/13/18) (aff’g PTAB obviousness decision as to apparatus claims but not method claims. Apparatus claim recited “a switch module to receive said shaped string of pulses and a bias signal, wherein said shaped string of pulses causes said switch module to gate said bias signal and thereby generate a periodic signal having a plurality of harmonics.” This requires only “an oscillating signal that is reasonably capable of gating the bias signal in a manner that generates a periodic signal having a plurality of harmonics. And, unlike in Ball Aerosol, the claims here recite no structural limitations that would preclude a prior art reference that discloses a different structure from performing the claimed function.” Because prior art device “necessarily will” perform recited function “under some, albeit not all, conditions,” the petitioner “was neither required to identify the conditions under which” the prior art device would do so “nor obligated to explain why a person of skill in the art would have selected such operating conditions.” [But for method claims, needed but failed to show motivation to operate prior art device in manner that satisfied the corresponding method step.]); INVT (Fed. Cir. 08/31/22) (aff’g ITC non-infringement finding, despite claims requiring mere capability not configuration, i.e., “the claims recite a device with the capability of performing the recited functions when in operation without any modification or further programming.” “‘For performing’-type language like in Finjan is not the only way for a computer-implemented claim to be directed to capability,”; distinguishing Cross Med. and Ball Aerosol); Power Integrations (Fed. Cir. 12/12/16) (overturning jury verdict of no anticipation of apparatus claim; (reciting “the comparator having a second input coupled to receive a variable current limit threshold that increases during the on time of the switch”); reference met claimed functional element of apparatus claim during start up so irrelevant not met during normal operation); Iron Oak (Fed. Cir. 05/24/21) (non-precedential) (aff’g claim construction that did not limit “operable to” language to require operability at any particular time, relying on ParkerVision).
  • That Element Had Different Purpose In Prior Art Reference Irrelevant To Whether It Discloses Claimed Function: “Regardless of its ‘fundamental objective,’ Wood’s condensate drain operates just as the claimed vent. It is irrelevant that the prior art primarily used the drain for a different purpose.” South-Tek (Fed. Cir. 09/20/18) (non-precedential) (rejecting PTAB finding that reference in asserted 103 combination failed to disclose claimed function, but affirming finding of lack of motivation to combine).

e) reference enabling

  • U.S. Patent Prior Art (And Possibly Any Publication) Is Presumed Enabling: A U.S. patent reference is presumed to be enabling. Impax (Fed. Cir. 10/03/08) (presumption rebutted); Amgen (Fed. Cir. 03/03/03) (both claimed and unclaimed subject matter in a patent presumed enabling); cf. In re Antor Media (Fed. Cir. 07/27/12) (during patent prosecution, Examiner may presume that non-patent prior art publication is enabling unless shown otherwise); In re Morsa I (Fed. Cir. 04/05/13) (but patent applicant does not necessarily need expert testimony to shift burden back to PTO.); In re Morsa II (Fed. Cir. 10/19/15) (2-1) (aff’g PTAB holding that reference was enabling). This presumption of enablement does not establish a reasonable expectation of success as to all species within a claimed genus. UCB (Fed. Cir. 05/23/18) (aff’g no double patenting because insufficient prior art or other evidence of reasonable expectation of success); Cameron (Fed. Cir. 03/04/22) (non-precedential) (aff’g PTAB finding that prior art reference was enabling; U.S. “prior art published patent applications are presumed enabling”); Cf. Apple (Fed. Cir. 06/23/21) (non-precedential) (PTAB (harmless) error to put burden of persuasion on challenger to prove prior art published Japanese application enabled; in the context of district court litigation, patent prosecution, and AIA trial proceedings, “prior art patents and publications enjoy a presumption of enablement, and the patentee/applicant has the burden to prove nonenablement for such prior art.”) [Note: this appears to extend beyond prosecution, and without acknowledging it is doing so, the rule of In re Antor Media (Fed. Cir. 07/27/12)]. Cf. Novartis (Fed. Cir. 01/03/22) (2-1) (issued patent reference is presumed to have written description support, but not a non-patent publication), vacated Novartis (Fed. Cir. 06/21/22) (2-1) (J. Hughes replaced J. O’Malley on rehearing) (rev’g D. Ct. finding that negative limitation was disclosed).
  • Reference Itself May Establish That It Is Enabling: In re NTP (Seven Appeals) (Fed. Cir. 08/01/11) (“The Telenor reference itself provides the necessary evidence to satisfy this requirement.”).
  • Combining PHOSITA’s Knowledge Is OK For Enablement: A claim can be anticipated by a prior art reference so long as its teachings combined with the knowledge of a PHOSITA would cause the PHOSITA to consider the reference to enable the claimed “invention.” Iovate (Fed. Cir. 11/19/09).
  • No Need For Reference To Disclose Utility Or Efficacy: To anticipate a method claim, a reference needs to enable use of the claimed method, but otherwise a reference need not disclose utility of the claimed “invention” to anticipate the claim. In re Gleave (Fed. Cir. 03/26/09); Duke Univ. (Fed. Cir. 04/25/17) (non-precedential) (aff’g PTAB anticipation decision; “proof of efficacy or an actual reduction to practice … is not required for a reference to be an anticipation of … method of treatment claims”).
  • Accidental Disclosure May Anticipate: Where a drawing clearly discloses the claimed invention, it does not matter if rest of the reference shows that such disclosure was accidental. Plasmart (Fed. Cir. 05/22/12) (non-precedential).
  • Others’ Inability To Reproduce Reference’s Results Is Evidence That It Is Not Enabling: Bard Peripheral I (Fed. Cir. 02/10/12) (aff’g jury verdict of no anticipation).
  • No Need That Reference’s Approach Be Practical At Time Of Prior Art: Prior art reference inherently disclosed system “effective to” (per asserted claims) achieve claimed result, even though not practical at the time of the reference. Leggett & Platt (Fed. Cir. 08/21/08).

f) single reference

  • Related Spec. May Or May Not Constitute A Single Reference At Least In Part: Compare Kyocera (Fed. Cir. 10/14/08) (different parts of overall standard are not single reference despite cross references: “the incorporating document must identify the incorporated document with detailed particularity, clearly indicating the specific material for incorporation.”) with Vicor (Fed. Cir. 03/13/15) (non-precedential) (treated as same single reference as to at least part of the description: one prior art patent incorporated by reference another, co-owned patent, calling it “related”; parts of drawings identical and parts of descriptions nearly verbatim; incorporating patent description referenced drawing item number appearing only in incorporated patent).
  • Associated Product Functionality May Be Used To Explain Teaching Of A Publication: Although panel did not discuss this point, it cited evidence about functionality of the electronic parts catalog when finding anticipation by a promotional publication describing that system. Orion (Fed. Cir. 05/17/10) (rev’g denial of JMOL).
  • Material Incorporated Into Reference Is Considered Part Of Single Reference: Two references are treated as single reference where one incorporates the other by reference and makes clear what is incorporated, which presents a question of law. Virnetx (Fed. Cir. 10/20/23) (non-precedential) (aff’g PTO treatment of product user guide and reference guide as single reference for anticipation where former cited to particular portions of the latter).

g) expert testimony

  • Requirements For Anticipation Testimony: “‘Typically, testimony concerning anticipation must be testimony from one skilled in the art and must identify each claim element, state the witnesses’ interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference. The testimony is insufficient if it is merely conclusory.’” Koito Mfg. (Fed. Cir. 08/23/04) (rev’g denial of JMOL against jury anticipation finding, because expert did not single out the asserted reference and compare to the claims) (citation omitted).
  • Conclusory Expert Testimony Cannot Defeat Anticipation: Krippelz (Fed. Cir. 01/27/12) (rev’g $56 judgment and denial of JMOL of anticipation; conclusory expert testimony insufficient to support jury’s verdict); Ericsson (Fed. Cir. 05/29/18) (rev’g PTAB non-anticipation decision; “to contradict a reference, an unsupported opinion is not substantial evidence.”)
  • Expert Testimony May Be Undermined By Hindsight: An expert’s experiment to show that a prior art reference inherently led to a certain result, may be undermined by the expert having first read the patent in suit suggesting an approach to achieving that result. Glaxo (Fed. Cir. 07/27/04).
  • Non-Experts May Not Testify On Invalidity Conclusion Or Technical Subsidiary Questions: “The prohibition of unqualified witness testimony extends to the ultimate conclusions of infringement and validity as well as to the underlying technical questions.” HVLOP2 (Fed. Cir. 02/05/20) (granting new trial where trial court allowed non-expert (not disclosed as expert) to testify that some modification was obvious to him).

h) relationship to written description support

  • Anticipation Is Asymmetric With Sec. 112 Support: The same text can anticipate a claim without supporting it under Sec. 112. The text (e.g., published foreign counterpart) might, e.g., describe and enable an embodiment within the scope of the claim, but not describe and/or enable the full scope of the claim as required by Sec. 112. “But whether the [under-reexamination] patent’s ‘at least one-half the height’ limitation reads on a full-size expeller such as the one disclosed by [the prior art reference] is a different analysis from whether the parent’s disclosure of a full-size expeller meets the written description requirement.” In re Meyer Mfg. (Fed. Cir. 12/17/10) (non-precedential); In re Morsa II (Fed. Cir. 10/19/15) (2-1) (aff’g PTAB holding that prior art was enabling; need enable only an embodiment within the claim).
  • Disclosure May Anticipate Claim Without Supporting It: See, e.g., Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (patent claims anticipated by foreign counterpart to an ancestor patent because claimed invention was distinct from invention disclosed in Spec.); Chester v. Miller, 906 F.2d 1574 (Fed. Cir. 1990) (patent claims held anticipated by a published parent patent application, even though those claims were not supported by that parent disclosure under Sec. 112); Indivior UK (Fed. Cir. 11/24/21) (2-1) (aff’g PTAB that claimed ranges not supported by written description of various values and different ranges in asserted priority ancestor app. and therefore anticipated by publication of that app., which anticipation was uncontested if claims not entitled to asserted priority date); Orthoaccel (Fed. Cir. 09/23/19) (non-precedential) (aff’g denial of preliminary injunction based on preliminary finding that claims in child of a CIP not entitled to ancestor’s filing date and anticipated by that same ancestor, where ancestor disclosed vibrating “for ‘approximately’ or ‘about’ twenty minutes per day” and that “longer or shorter” time periods may be used; CIP Spec. disclosed applying vibration “for a period of 1–60 minutes, preferably about 1–30 or 1–10 minutes or 20 minutes;” but claim recited “1 to 20 minutes”); Rasmusson (Fed. Cir. 06/27/05) (a reference may be enabling for anticipation purposes without being enabling for Sec. 112 support purposes; “a prior art reference need not demonstrate utility in order to serve as an anticipating reference under section 102”); In re Lukach, 442 F.2d 967 (CCPA 1971) (publication of a British counterpart to a grandparent patent application anticipated claims even though those claims were not supported under Sec. 112 by that grandparent application). See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562 (Fed. Cir. 1991) (“The CCPA also recognized a subtle distinction between a written description adequate to support a claim under § 112 and a written description sufficient to anticipate its subject matter under § 102(b). The difference between “claim-supporting disclosures” and “claim-anticipating disclosures” was dispositive in In re Lukach, 442 F.2d 967 (CCPA 1971), where the court held that a U.S. “grandparent” application did not sufficiently describe the later-claimed invention, but that the appellant’s intervening British application, a counterpart to the U.S. application, anticipated the claimed subject matter. As the court pointed out, “the description of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes …, whereas the same information in a specification might not alone be enough to provide a description of that invention for purposes of adequate disclosure….” Id. at 970 (citations omitted).”) Cf. Encyclopaedia Britannica (Fed. Cir. 06/18/10) (claims anticipated by published foreign counterpart patent application where chain of continuity broken by failure of intermediate application, as filed or amended, to refer to antecedent application in chain.); Medtronic (Fed. Cir. 01/22/14) (same); Natural Alternatives (Fed. Cir. 10/01/18) (aff’g PTAB anticipation rejection over ancestor patent where priority chain broken between fifth and sixth applications in family); Konda (Fed. Cir. 05/06/22) (non-precedential) (aff’g PTAB IPR finding of anticipation or obviousness; PTAB found that neither provisional nor PCT application provided sec. 112(a) support for claims issued from national stage (not challenged on appeal); making PCT publication and its incorporated provisional (available to public under 37 C.F.R. § 1.14(a)(1)(vi)), prior art). See Hologic (Fed. Cir. 03/14/18) (aff’g PTAB that ancestor PCT had sufficient written description for claims, but noting issue as: “If it does, then the [patent] properly claim[] priority based on [the] PCT. If it does not, then [the] PCT is prior art to the [patent] and invalidates it as obvious.”). Cf. Arthrex (Fed. Cir. 05/27/22) (aff’g PTAB anticipation and finding that claims not entitled to priority date of ancestor’s filing date; publication of ancestor application disclosing both rigid and flexible eyelet embodiments anticipated claim to generic eyelet where patent issued from series of applications, some CIPs, one incorporating by reference the ancestor application but criticizing its flexible eyelet and therefore did not describe generic eyelet); Parus Holdings (Fed. Cir. 06/12/23) (aff’g PTAB finding that continuation patent obvious over references including published ancestor application, which ancestor application lacked sufficient written description for those claims).
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