Ineos USA LLC v. Berry Plastics Corp., No. 2014-1540, 2015 U.S. App. LEXIS 6175 (Fed. Cir. Apr. 16, 2015) (Moore, J.). Click Here for a copy of the opinion.
Ineos sued Berry Plastics for infringement of U.S. Patent No. 6,846,863 ('863 Patent), which claimed a polyethylene-based composition for manufacturing screw caps for bottles. The broadest asserted claim of the '863 Patent recited a composition comprising four elements: (1) 94.5% by weight of polyethylene, (2) 0.05 to 0.5% by weight of at least one saturated fatty acid amide, (3) 0 to 0.15% by weight of a subsidiary lubricant selected from a fatty acids and other enumerated materials, and (4) 0 to 5% by weight of one or more additives selected from antioxidants, antacids, UV stabilizers, colorants, and antistatic agents.
Berry argued that the '863 Patent was anticipated by U.S. Patent No. 5,948,846 ('846 Reference), which disclosed a composition comprising 94.5% by weight of polyethylene, and 0.1 to 5 parts per hundred by weight of stearamide, a saturated fatty acid amide. The reference further disclosed at least 0.1, 0.2, and 0.4 parts of stearamide. The district court held on summary judgment that the '846 Reference anticipated the '863 Patent, because the same amount of polyethylene was disclosed and the disclosure of 0.1, 0.2 and 0.4 parts stearamide were specific points within the claimed range for the fatty acid. The other ingredients were optional, because the claimed ranges encompassed 0%. Ineos appealed, and the Federal Circuit affirmed.
Patents that claim ranges are anticipated when a reference discloses a point within the claimed range. When the prior art discloses an overlapping range, rather than a specifically covered point, the claim is anticipated only if a reasonable fact finder could conclude that there is no reasonable difference in how the invention operates over the claimed range. On summary judgment, there must be a genuine issue of material fact that a narrower range in the patent is critical to how the invention operates.
Here, the Federal Circuit found that the disclosure of 0.1, 0.2, and 0.4 parts of stearamide did not disclose specific points with a range; they were beginning points for different ranges. To avoid a summary judgment of anticipation, Ineos had to show a genuine issue of fact that the specific range it claimed was critical to how the invention operates. Ineos failed to do so.
Ineos could only point to inventor testimony that the claimed range is critical to avoid unnecessary manufacturing costs and the appearance of undesirable blemishes on the bottle caps. The Federal Circuit held that these features have nothing to do with operability or function, because the specification describes the invention as providing slip properties, while avoiding odor and taste problems. Thus, Ineos could not show a genuine issue of fact with respect to the criticality of the claimed range.
The Federal Circuit also reviewed claim 3, which recited that the primary lubricant was benhenamide. The '846 Reference did not disclose benhenamide, but did disclose the use of saturated fatty acid amides. Ineos argued that benhenamide was not a common lubricating agent, and thus was not a part of the genus described in the '846 Reference. Berry argued that benhnamide was a common lubricating agent, and offered an expert declaration that it was a common fatty acid used in packaging. The Federal Circuit concluding it could find no error in finding that the '846 reference implicitly disclosed benhenamide. A verbatim disclosure of a particular species is not required when a genus of limited scope effectively discloses each species therein.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
