[SUMMARY] | [ISSUE & DISPOSITION] | [AUTHORITIES CITED] | [COMMENTARY]
Petitioner Atlas Powder Company appealed the separate district court rulings that IRECO Inc. did not infringe U.S. Patent No. 4,111,727 (the Clay patent) or its reissue, U.S. Patent No. RE 33,788 (the reissue patent) because those patents were invalid as a result of anticipation by either U.S. Patent No. 3,161,551 (the Egly patent) or U.K. Patent No. 1,306,546 (the Butterworth patent).
The Clay, Egly and Butterworth patents each claim explosive compositions. For a chemical composition to result in an explosion, fuel and oxidizers must be present. The chemical elements claimed in the Clay patent were present in overlapping ranges in the Egly and Butterworth patents. The Clay patent claimed an additional composition element, "in which sufficient aeration is entrapped to enhance sensitivity to a substantial degree."
The District Court found that the prior art of the Egly and Butterworth patents would "inevitably and inherently" have interstitial air, and that the amount of interstitial air would be in sufficient measure to enhance sensitivity. Those of ordinary skill in the art at the time of the Clay patent application would understand that interstitial air (air between the oxidizer particles) and porous air (air within the pores of the oxidizer particles) enhance sensitivity. The District Court also found that Butterworth specifically disclosed the other type of aeration, porous air, and that the Egly composition as claimed would have porous air, even though Elgy teaches away from air entrapment, as it seeks to obtain greater density.
The Court held that anticipation is a question of fact, but is reviewable under the clearly erroneous standard by the Federal Circuit as claim construction, which is a matter of law. The Court affirmed the finding of invalidity after concluding that the district court correctly interpreted the claims and applied the law of anticipation.
1. Whether the District Court's construction of the term "sufficient aeration," to encompass interstitial and porous air, is clearly erroneous.
2. Whether the District Court's finding of anticipation, due to inherency of the Clay patent term "sufficient aeration" in prior art, was clearly erroneous even though one patent out of the prior art, the Egly patent, did not recognize the value of aeration in the invention and in fact taught away from air entrapment.
1. No. The District Court's claim construction is adequately supported by expert testimony, including the supporting testimony from Dr. Clay, the inventor of the patent at suit.
2. No. Anticipation due to inherency is not defeated by the prior art patentee's insufficient understanding of its inherent properties, and alternatively, a finding of anticipation could be adequately supported by reliance on prior art other than the Egly patent.
Cases Cited by the Court
Other Sources Cited by the Court
The first step on the appeal of a patent case is to independently construe the disputed claim terms to determine the scope of the patent. In a case tried before a jury, the court has the power and obligation to construe, as a matter of law, the meaning of the language used in a patent claim. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995).
"A person shall be entitled to a patent unless the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent." 35 U.S.C. § 102(e). Section 102(e) bars the issuance of a patent if its generic claims are anticipated by prior art disclosing individual chemical species, and these species fall within the scope of the generic claims. See In re Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1986).
To find anticipation of a patent claim, the claim at issue must "read on" a prior art reference. See Titanium Metals Corp. v. Banner, 778 F.2d 775, 781 (Fed. Cir. 1985). To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); See also Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Anticipation can occur when a claimed limitation is "inherent" or otherwise implicit in the relevant prior art reference, and therefore, need not duplicate verbatim the content of the claims. See Standard Havens Products, Inc. v. Gencor Industries, Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991). Under the principles of inherency, if a structure in the prior art necessarily functions in accordance with the limitations of a process or method claim of an application, the claim is anticipated. See In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986).
The Federal Circuit has stated that, "Congress has not seen fit to permit the patenting of an old [composition], known to others . . ., by one who has discovered its . . . useful properties." See Titanium Metals Corp., 778 F.2d at 782. In other words, insufficient prior understanding of the inherent properties of a known composition does not defeat a finding of anticipation. See Id. It is immaterial, on the issue of novelty, whether the patent applicants have discovered the inherent chemical properties. See Id.
"It is also an elementary principle of patent law that when, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is 'anticipated' if one of them is in the prior art." Titanium Metals Corp., 778 F.2d at 781. The question is whether the claims, if allowed, would enable the patent holder to exclude others from practicing the prior art. Id. If the claims would enable the patent holder to exclude others, the claims are anticipated.
Anticipation is a question of fact, and the question whether a claim limitation is inherent in a prior art reference is a factual issue on which evidence may be introduced. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Because anticipation presents questions of fact, courts have reviewed a finding of anticipation under the clearly erroneous standard. See Gechter v. Davidson, 116 F.3d 1454, 1456 (Fed. Cir. 1997).
The United States Court of Appeals for the Federal Circuit affirmed that under the law of anticipation, an invention is not patentable if the claimed novel step is inherent to prior art. It is irrelevant whether the prior art recognized or delineated the inherent phenomenon; additionally, the prior art may actually have a mistaken understanding of the correct function of the inherent property. Thus, the failure of the owners of the prior art to accurately recognize a function of the invention does not vitiate a finding that the function was inherent to the invention and thus anticipated.
The analysis for anticipation is different than a determination of whether the inherent property is obvious to a person of ordinary skill in the art. The anticipation analysis here is whether the use of the prior art patent would constitute infringement of the new patent. If so, then the invention is anticipated and not patentable.
The Federal Circuit interpreted the term "sufficent aeration" used in the Clay patent and the Clay reissue patent. At least in the context of composite explosives, the Federal Circuit held that the word "aeration" was a broad term that, unless specified otherwise, refers to both interstitial and porous air within the composite material. "Aeration" is without qualitative limits because the Court found that in the explosives industry the common usage of the word indicated both interstitial and porous air.
1. Does the scope of the Atlas holding extend beyond chemical composition patents?
2. Considering that the issue of aeration is tangential to the claim in the Egly patent, if a claim for a patent is based on an incorrect understanding of the entire invention, are subsequent patents precluded by anticipation?