• Patent Challenger Entitled to Remand on Anticipation despite Jury Verdict of Nonobviousness
  • November 2, 2008 | Authors: Mark Supko; Mary R. Bram
  • Law Firm: Crowell & Moring LLP - Washington Office
  • In Cohesive Technologies, Inc. v. Waters Corp. (Nos. 08-1029, -1030, -1031, -1032, -1059; October 7, 2008), the Federal Circuit reverses a district court's judgment as a matter of law of no anticipation and remands for consideration of the patent challenger's anticipation defense.

    Near the end of trial, the district court decided not to charge the jury on anticipation because the defendant's anticipation case was "iffy" and because declining to charge on anticipation would not harm the defendant. In direct contravention to the district court, the Federal Circuit holds that an "iffy" case does not foreclose a reasonable jury from finding anticipation. Furthermore, the Federal Circuit holds the district court incorrectly concluded a directed verdict on anticipation would not harm the defendant. While acknowledging the maxim that anticipation is the "epitome of obviousness" and the jury's verdict of nonobviousness, the court clarifies that anticipation under 35 U.S.C. §102 and obviousness under 35 U.S.C. §103 are separate defenses. Specifically, anticipation and obviousness require different elements of proof. For example, anticipation requires that a single prior art reference disclose all the elements of a claim, while obviousness requires analysis of secondary considerations. Thus, a finding of nonobviousness does not necessarily exclude anticipation.

    The Federal Circuit provides a prophetic example of an invention that is anticipated, yet nonobvious. A claim to a particular alloy of metal may exhibit many secondary considerations proving nonobviousness such as, for example, long felt but unsolved need, failure of others, recognition by others, and commercial success. However, an old alchemy textbook may describe a method, when practiced, that produces the claimed alloy even though the textbook does not disclose any particular metal alloys. The textbook would inherently anticipate the claimed alloy, although it is nonobvious.