Ineos USA LLC v. Berry Plastics Corp.
Addressing anticipation under pre-AIA § 102 in the context of a claimed numerical range and prior art disclosing a broader, overlapping range, the U.S. Court of Appeals for the Federal Circuit affirmed a lower court's summary judgment ruling of invalidity noting that the patent owner failed to raise a genuine question of fact about whether the claimed range was critical to the operability of the invention. Ineos USA LLC v. Berry Plastics Corp., Case No. 14-0540 (Fed. Cir., Apr. 16, 2015) (Moore, J.)
Ineos is the owner of a patent relating to polyethylene-based compositions used to form shape products, including screw caps for bottles. Prior art screw cap polyethylene compositions employed lubricants to enhance slip properties, but also imparted an odor issue and a flavor to contacted food products. The patent purportedly eliminated the odor and flavor problems, claiming specific amounts of polyethylene, lubricants and additives.
After Ineos sued Berry Plastics for infringement of certain claims of the patent, Berry Plastics moved for summary judgment that the asserted claims were invalid as anticipated by various prior art references. The patent claimed "0.05 to 0.5% by weight of at least one saturated fatty acid amide" lubricant. Berry Plastics asserted that the prior art reference was anticipatory because it disclosed the same class of lubricant in an overlapping range of "0.1 to 5 parts by weight." The parties agreed that a measurement in "% by weight" was equivalent to one in "parts by weight."
After the district court ruled in favor of Berry Plastics, finding that the prior art reference disclosed the same class of lubricant, as well as specific values in the broader range of 0.1 to 5 parts by weight, and that the prior art therefore anticipated the asserted patent. The district court further found that claims of the specific lubricant behenamide were anticipated by the prior art disclosure of saturated fatty acid amides having 12 to 35 carbons. Ineos appealed.
The Federal Circuit explained that when a patent claims a range, the claimed range is anticipated by a prior art reference disclosing a point within that range. On the other hand, if the prior art reference discloses a range, and not a specific point, the claimed range is anticipated only if the prior art range is described with sufficient specificity that a reasonable fact finder could conclude that there is no reasonable difference in how the invention operates over the ranges.
In applying this framework, the Federal Circuit concluded that while the district court erred in concluding that the prior reference disclosed specific values within 0.1 to 5 parts by weight range, the error was harmless. As the Court explained, the criticality of a claimed range must be established to avoid anticipation by a prior art reference disclosing a broader, overlapping range, and Ineos failed to raise a genuine question of fact about whether the claimed range was at all critical to the operability of the invention. In other words, Ineos failed to raise an issue of fact that the properties of the polyethylene composition would differ if the prior art range was substituted for the claimed range. The Court explained that evidence that the claimed range was critical to avoid unnecessary manufacturing costs and blemishes on the screw caps was not dispositive because such alleged benefits had no relation to the operability or functionality of the claimed invention.
Finally, the Federal Circuit agreed with the district court that the prior art disclosure of a saturated fatty acid amide lubricant having 12 to 35 carbon atoms anticipated the claimed lubricant behenamide, which contained 22 carbon atoms. As the Court explained, verbatim disclosure of a particular species is not necessarily required for anticipation, where disclosure of a small genus represents a disclosure of each species within the genus. Hence, the patent owner did not raise a genuine issue of material fact that behenamide did not fall within the prior art disclosed genus, or that behenamide was not a common lubricant within the genus.
Need To Establish Criticality Of Claimed Range To Avoid Anticipation By Broader, Overlapping Range
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