- Summary of OSRAM Sylvania, Inc. v. American Induction Technologies, Inc, 2012-1091, -1135
- February 21, 2013
- Law Firm: Sughrue Mion PLLC - Washington Office
The Court reversed and remanded the grant of summary judgment of invalidity of claims 1, 17, 25, 27, and 32 of U.S. Patent No. 5,834,905 which was handed down by the United States District Court for the Central District of California, finding that there are “genuine issues of material fact that preclude a finding of anticipation and obviousness on summary judgment.”
The claims at issue are directed to a closed-loop tubular electrodeless lamp which has certain parameters, including “a buffer gas at a pressure less than 0.5 torr.” AITI relied on a prior art patent that discloses “a pressure of approximately 1 torr or less,” arguing that this disclosure renders the above-recited claim feature as being anticipated as a matter of law. OSRAM presented evidence and expert testimony to support its contention that the limitation of “a pressure less than 0.5 torr” is central to the invention, and that a lamp would operate differently at different points within the range disclosed in the prior art reference.
The Court held that a prior disclosure of a genus does not automatically anticipate a claim directed to a species which is encompassed by the disclosed genus. Instead, the Court held that “this inquiry necessarily includes a factual component.” In this aspect, the Court set forth the principle that if the patentee can show that the claimed species is sufficiently distinct from the broader disclosed genus, then the question of whether the claim is anticipated and/or obvious is a jury question: “How one of ordinary skill would understand the relative size of a genus or species in a particular technology is of critical importance.” The Court also indicated that objective evidence of nonobviousness (i.e., “secondary considerations”) should also be considered when relevant.