United States: A Range Disclosed By The Prior Art Is Only Anticipatory If It Describes The Claimed Range With Sufficient Specificity

In Ineos USA LLC v. Berry Plastics Corp., No. 14-1540 (Fed. Cir. Apr. 16, 2015), the Federal Circuit affirmed the district court's SJ dismissing Ineos USA LLC's ("Ineos") patent infringement suit based on anticipation of the asserted claims.

Ineos accused Berry Plastics Corporation ("Berry Plastics") of infringing U.S. Patent No. 6,846,863 ("the '863 patent").  Berry Plastics moved for SJ that the asserted claims were anticipated by certain prior art references, including U.S. Patent No. 5,948,846 ("the '846 patent"). 

The '863 patent is directed to polyethylene-based compositions.  Claim 1 is the only independent claim of the '863 patent:

1. Composition comprising at least [1] 94.5% by weight of a polyethylene with a standard density of more than 940 kg/m3, [2] 0.05 to 0.5% by weight of at least one saturated fatty acid amide represented by CH3(CH2)nCONH2 in which n ranges from 6 to 28[,] [3] 0 to 0.15% by weight of a subsidiary lubricant selected from fatty acids, fatty acid esters, fatty acid salts, mono-unsaturated fatty acid amides, polyols containing at least 4 carbon atoms, mono- or poly-alcohol monoethers, glycerol esters, paraffins, polysiloxanes, fluoropolymers and mixtures thereof, and [4] 0 to 5% by weight of one or more additives selected from antioxidants, antacids, UV stabilizers, colorants and antistatic agents.

Slip op. at 2-3 (alterations in original).

There was no dispute that the '846 patent disclosed 94.5% by weight of a polyethylene with a standard density of more than 940 kg/m3, and that stearamide, disclosed in the '846 patent, is a compound within the class of saturated fatty acid amides represented by CH3(CH2)nCONH2 in which n ranges from 6 to 28.  The district court found that the '846 patent's disclosure of a lubricant, which could be stearamide, in amounts from 0.1 to 5 parts by weight—and more specifically of "at least 0.1 part by weight per 100 parts by weight of polyolefin, in particular of at least 0.2 parts by weight, quantities of at least 0.4 parts by weight being the most common ones"—describes specific values (e.g., 0.1 part by weight) along with the broader disclosure of the full range (0.1 to 5 parts by weight).  Id. at 3 (citation omitted).  Thus, the district court concluded that the '846 patent's disclosure of stearamide in these amounts met limitation 2.  The district court then determined that the subsidiary lubricant of limitation 3 and the additive of limitation 4 are optional in the claimed composition because limitations 3 and 4 set forth ranges beginning with 0%.  Based on these conclusions, the district court held that the '846 patent anticipated the asserted claims of the '863 patent.  Ineos appealed the district court's decision.

"When a patent claims a range, as in this case, that range is anticipated by a prior art reference if the reference discloses a point within the range.  Titanium Metals Corp. v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985).  If the prior art discloses its own range, rather than a specific point, then the prior art is only anticipatory 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.  Atofina [v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006)]."  Slip op. at 6.

"Verbatim disclosure of a particular species is not required in every case for anticipation because disclosure of a small genus can be a disclosure of each species within the genus."  Id. at 12 (citing Atofina, 441 F.3d at 999).

The Federal Circuit held that the district court correctly granted SJ of anticipation.  Even though the district court erred in concluding that the '846 patent discloses particular points within the range recited in limitation 2 because of the use of the phrase "at least," the Court found that it was not fatal to Berry Plastics' case because Ineos failed to raise a genuine question of fact about whether the range claimed is critical to the operability of the invention.  The Federal Circuit explained that the specification of the '863 patent described the novelty of the invention as eliminating the odor and taste problems associated with prior art bottle caps while still maintaining good slip properties.  However, the Court held that Ineos had not established that any of these properties would differ if the range from the prior art '846 patent was substituted for the range of limitation 2.  The Court also found that testimony that the range was critical to avoid unnecessary manufacturing costs and the appearance of undesirable blemishes had nothing to do with the operability or functionality of the claimed invention.  Thus, the Court found that Ineos had not raised a genuine question of fact about whether the range recited in limitation 2 was critical to the invention.

The Federal Circuit affirmed the district court's interpretation that limitations 3 and 4 were met with the '846 patent's disclosure of 0% of subsidiary lubricant and additional additives, and further found that Ineos's criticality evidence was not relevant because the '846 patent disclosed a particular value instead of a range.  The Federal Circuit also affirmed the district court's conclusion that claim 3 was anticipated.  Claim 3, which depends from claim 1, specifies that the primary lubricant is the saturated fatty acid amide behenamide.  The Court found that the '846 patent's specification "discloses the genus of saturated fatty acid amides and states that good results are achieved with the narrower genus of saturated fatty acid amides having 12 to 35 carbon atoms."  Id. at 11-12.  The Court determined that behenamide fell within the narrower preferred genus because it is a saturated fatty acid amide with 22 carbon atoms.  Berry Plastics asserted that behenamide is a common lubricating agent in the packaging industry, which was supported by an expert declaration.  From this evidence, the Court affirmed the district court's finding that the '846 patent discloses behenamide, in the holding that "[v]erbatim disclosure of a particular species is not required in every case for anticipation because disclosure of a small genus can be a disclosure of each species within the genus."  Id. at 12 (citing Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006)).

Accordingly, the Federal Circuit affirmed the district court's grant of SJ of anticipation.

Judges:  Dyk, Moore (author), O'Malley

[Appealed from S.D. Tex., Judge Costa]

This article previously appeared in Last Month at the Federal Circuit, May, 2015.

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.

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