• Anticipated, But Not Obvious
  • October 27, 2008 | Author: Joshua R. Slavitt
  • Law Firm: Pepper Hamilton LLP - Philadelphia Office
  • In Cohesive Technologies, Inc. v. Waters Corp., (Docket Nos. 2008-1029, -1030, -1031, -1032, -1059, October 7, 2008), the Federal Circuit made a series of rulings regarding patentability including, notably, the reversal of the district court’s grant of judgment as a matter of law on anticipation as a basis for invalidity. In so doing, the Federal Circuit took the opportunity to articulate a subtle point of patent law that has a potentially significant impact in patent infringement litigation strategy.

    The Federal Circuit began its analysis by observing that the district court had not specifically found that no reasonable jury could have concluded that the asserted references anticipated the claimed invention. This observation is of no particular moment, as it was narrowly drawn to the well-established standards applicable to the granting of directed verdicts. Moreover, this observation was legally sufficient, on its own, to support the reversal of the district court on this issue. The Federal Circuit, however, went on to provide a further rationale for why the district court was wrong to conclude that granting judgment as a matter of law on anticipation would not adversely affect the accused infringer’s invalidity argument because the jury still had the opportunity to consider the same references for purposes of obviousness. To appreciate the Court’s point, a brief detour through patent law basics will be helpful.

    Under the Patent Act, inventors may obtain patents for their inventions provided they are “new and useful”. While “useful” (i.e., the requirement of utility) is a broadly construed concept that presents a low threshold for inventors to clear, the requirement that inventions be “new” is the more demanding hurdle that is articulated as both novelty and non-obviousness. An invention is not novel, i.e., it is anticipated, if every limitation of the claimed invention is found, explicitly or inherently, within a single reference. If no single reference contains every such limitation, an invention may still be unpatentable if every limitation can be found across a combination of references where one of ordinary skill (in the relevant art) would have reason to combine such references to arrive at the claimed invention. Stated in this manner, novelty is essentially framed as a “subset” of the broader concept of obviousness -- the special case in which all of the elements of an invention are found in a single reference instead of across multiple references. As a consequence, if a reference anticipates an invention, it necessarily renders such invention obvious as well. Anticipation becomes, as put by the oft-repeated maxim, the “epitome of obviousness.”

    Against this apparently stable background, the Federal Circuit’s opinion in Cohesive Technologies is notable for its assertion that a reference may anticipate an invention, while not rendering such invention obvious. As stated by the Court, “[d]espite the often quoted maxim that anticipation is the ‘epitome of obviousness,’ In re Kalm, 378 F.2d 959, 962 (CCPA 1967), novelty under 35 U.S.C. § 102 and non-obviousness under 35 U.S.C. § 103 are separate conditions of patentability and therefore separate defenses available in an infringement action.” 1 While prior art references that anticipate a claim will usually render that claim obvious, the Federal Circuit recognized that such is not always the case. According to the Federal Circuit, it is not necessarily true that a verdict of non-obviousness forecloses anticipation because the tests for anticipation and obviousness are different.2 Obviousness, according to the Federal Circuit, can be proven by combining existing prior art references, while anticipation requires all elements of a claim to be disclosed within a single reference. Moreover, the obviousness analysis requires consideration of additional factors not part of the anticipation analysis. As a result, the Federal Circuit concluded as follows:

    A court cannot refuse to submit the issue of anticipation to the jury simply because the accused infringer has also asserted an obviousness defense. It is for the litigants—not the court—to make the strategic decision as to whether to assert one, both, or neither of these defenses in a jury trial. An accused infringer that introduces a prior art reference and makes a non-frivolous argument that “each and every limitation of a claim is found, expressly or inherently, in [that] single prior art reference” generally is entitled to have anticipation decided by the finder of fact.3

    Apart from the counterintuitive aspect of the Federal Circuit’s conclusion that a reference can anticipate an invention without rendering it obvious, the holding in Cohesive Technologies should be of significant interest to those who formulate and execute strategies to attack or defend the validity of patents. Apart from their conceptual relationship, the principles of anticipation to obviousness are treated differently in the context of patent litigation. As noted by the Federal Circuit, while anticipation requires that the entire invention be found within a single reference, there is no requirement, as there is in the obviousness analysis, to address each of the Graham factors: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; (4) objective evidence of non-obviousness; and (5) secondary considerations (i.e., commercial success, long-felt but unsolved needs, and failure of others).4

    Moreover, while obviousness is based on these underlying factual findings, it is considered a question of law to be decided by the trial court. Anticipation, on the other hand, is considered a question of fact for the jury. Further, findings of obviousness are reviewed on appeal de novo, while jury determinations of anticipation are given greater deference under a clear error standard. As a result, even in cases where the trial court has already decided that asserted references do not render the claimed invention obvious, as it had in Cohesive Technologies, attacks on the validity of the patents in suit may still be maintained for anticipation based on the same references considered in the obviousness analysis.

    The ability to maintain the vitality of an invalidity argument independent of the question of obviousness is of significant strategic importance to those defending against charges of infringement. Accused infringers are provided an additional avenue for avoiding what might otherwise be a summary disposition of the case, thereby increasing the cost of litigation to the patent holder and the uncertainty of outcome. Further, in the event the jury ends up finding that a reference anticipates the claimed invention, such determinations, unlike comparable determinations of obviousness made by the trial court, are given deference on appeal. Thus, while the distinction between anticipation and obviousness made by the Federal Circuit in Cohesive Technologies might appear as merely an esoteric diversion, it actually provides accused infringers with a potential strategic advantage both in settlement discussions as well as at trial.


    1Cohesive Technologies at 14 (citing 35 U.S.C. § 282 (2000); Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984) (“[T]hough anticipation is the epitome of obviousness, [they] are separate and distinct concepts.”); see also Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 1563 (Fed. Cir. 1993) (holding that verdict of non-obviousness was not inconsistent with verdict of anticipation by prior public use, despite “legal homily” that anticipation is the epitome of obviousness); In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979) (holding that rejection under § 102 was new ground following previous rejection under § 103, despite maxim that “anticipation is the epitome of obviousness”)).

    2Cohesive Technologies at 14 (citing Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1098, 1107-08 (Fed. Cir. 2003) (“Succinctly put, the various unenforceability and invalidity defenses that may be raised by a defendant—inequitable conduct, the several forms of anticipation and loss of right under § 102, and obviousness under § 103—require different elements of proof.”)

    3Cohesive Technologies at 16 (citing Planet Bingo, LLC v. GameTech Int’l, Inc., 472 F.3d 1338, 1346 (Fed. Cir. 2006)

    4Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966)