1. Whether process patent claims are anticipated by prior art articles or by a scientist's public presentation if the entire process is not fully described in any one reference.
2. Whether an invention that combines two known elements is obvious when nothing in the prior art as a whole suggests, teaches, or motivates one of ordinary skill in the art to make the combination.
3. Whether evidence of secondary considerations can rebut a prima facie case of obviousness and raise a genuine issue of fact that requires a remand for trial of the issue.
1. No. Prior references that do not expressly teach the process described in the a patent do not anticipate the patent.
2. No. Obviousness cannot be established by combining the teachings of the prior art to produce the claimed invention, absent some teaching or suggestion supporting the combination.
3. Yes. Evidence of secondary considerations are used as indicia of obviousness or nonobviousness and may raise a sufficient issue of fact to require a remand for trial on the issue.
Ecolochem, Inc. ("Ecolochem") owns U.S. Patent Nos. 4,556,492 ("the '492 patent") and 4,818,411 ("the ‘411 patent"), directed to methods of demineralization and deoxygenation of water. Ecolochem developed the patented technology while contracting its water purification and supply services to Southern California Edison Company ("Edison") during the time that Edison was constructing its own water purification facility. Upon completion of the project, Ecolochem filed suit against Edison in the U.S. District Court for the Central District of California, alleging that Edison's water purification facility infringed Ecolochem's patents. The district court granted partial summary judgment to Edison and invalidated claims of the ‘492 and ‘411 patents, holding that the subject matter of these claims was either anticipated under 35 U.S.C. § 102 and/or obvious under 35 U.S.C. §103. On appeal, the Federal Circuit reversed, finding that Ecolochem's evidence of secondary considerations left the issue of invalidity still in dispute. The Court remanded for trial on the validity of Ecolochem's patents.
Following a bench trial, the district court found that Edison willfully infringed Ecolochem's patents, but again held the infringed claims to be invalid. In addition, the district court concluded that the patents were invalid for obviousness. Specifically, the district court reasoned that the combination of information from an article, the Houghton reference, with other references that suggested using a mixed-bed ion exchange resin rendered Ecolochem's patents obvious. Ecolochem appeal the holdings of invalidity and obviousness as to claims 1, 3-13, 15, 17, 18, and 20 of the ‘411 patent, but did not assert the '492 patent against Edison.
In a de novo review, the Federal Circuit reversed the district court's determination that two prior art articles discussing applications of deoxygenated water anticipated Ecolochem's claims. The Court noted that the prior art taught use of hydrogen to deoxygenate water, but did not anticipate Ecolochem's patents that teach deoxygentation by hydrazine in combination with a mixed-bed ion exchange resin.
The Federal Circuit also reversed the district court's holding that a scientist's public presentation anticipated Ecolochem's claims involving the removal of excess hydrazine in the final ion exchange step. The Federal Circuit found that this part of this process was omitted from the presentation and therefore did not anticipate Ecolochem's claims. However, the Court found that the entire process described in claim 20 was indeed anticipated by the scientist's presentation; thus, the Federal Circuit affirmed the district court's ruling that claim 20 was anticipated and therefore invalid.
In a de novo review of obviousness, the Federal Circuit noted that the combination of two prior art references does not render patent claims obvious if there was no evidence of any suggestion, teaching, or motivation to combine the information from the prior art and where there was evidence that the prior art actually taught away from the patented process.
In Ecolochem's case, the prior art taught away from the mixed-bed ion exchange process; therefore, no motivation existed for one of ordinary skill in the art to produce the patented technology.Finally, the Federal Circuit examined Ecolochem's evidence of secondary considerations offered to counter the obviousness of claim 20 of the '411 patent. The Court affirmed the district court's holding that claim 20 was obvious. The Court reasoned that the absence of evidence that others were trying to copy the process in Ecolochem's patent in addition to evidence that showed that Ecolochem's process was not developed in response to a "long felt need" was more indicative of obviousness than commercial success and teaching away from the process were to the contrary. Finally, the Court held that Ecolochem had not rebutted the prima case of obviousness with regard to claim 20. Thus the Federal Circuit affirmed the district court's ruling with respect to claim 20 and reversed its findings regarding the remaining claims. The Federal Circuit remanded for an award of damages to Ecolochem for Edison's infringement of the valid claims of the '411 patent.
Prepared by the liibulletin-patent Editorial Board.