Precedential Patent Cases From the Federal Circuit in the Past Week
Ineos – The Circuit affirms the grant of summary judgment of anticipation of a patent directed to the manufacture of polyethylene bottle caps. The claims recite a range, and a reference disclosed an overlapping range. Affirmance is appropriate because Ineos failed to show that there were genuine issues of material fact as to whether the operability of the cap within the claimed range is critical to the invention.
Ineos USA LLC v. Berry Plastics Corp. , Fed. Cir. Case 2014-1540 (April 16, 2015)
The patent in suit is directed to polyethylene-based compositions which can be used to form shaped products, such as screw caps for bottles. Prior art polyethylene bottle caps incorporated a lubricant to optimize the cap's slip properties and to facilitate unscrewing of the cap, but these compositions imparted bad odor and flavor to food products in contact with the compositions. Claim 1 is the only independent claim and is illustrative:
1. Composition comprising at least  94.5% by weight of a polyethylene with a standard density of more than 940 kg/m3,
 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[,]
 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, monoor poly-alcohol monoethers, glycerol esters, paraffins, polysiloxanes, fluoropolymers and mixtures thereof, and
 0 to 5% by weight of one or more additives selected from antioxidants, antacids, UV stabilizers, colorants and antistatic agents.
Ineos argues that the court erred in finding claim 1 anticipated and in concluding that it failed to raise a genuine dispute of material fact in opposing summary judgment. Ineos asserts that although the '846 patent discloses stearamide—one of the primary lubricants of limitation 2—the '846 patent does not disclose or suggest that stearamide or any other primary lubricant "should be included as a lubricant in an amount between 0.05 and 0.5% by weight while entirely excluding or severely limiting any other lubricant to no more than 0.15% by weight." Relying on Atofina v. Great Lakes Chemical Corp., 441 F.3d 991 (Fed.Cir. 2006), Ineos argues that because the ranges concerning the amounts of lubricants disclosed in the '846 patent only slightly overlap with the ranges of limitations 2 and 3 in claim 1, the '846 patent does not disclose these limitations. Ineos contends that, at the very least, under OSRAM Sylvania, Inc. v. American Induction Technologies, Inc., 701 F.3d 698 (Fed. Cir. 2012), the court should not have granted summary judgment in light of Ineos's proffered testimony that the ranges claimed in the '863 patent are critical.
The panel holds that the district court correctly granted summary judgment of anticipation. When a patent claims a range, that range is anticipated by a prior art reference if the reference discloses a point within the range. 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. Limitation 2 is met by the disclosure of the '846 patent, the specification of which states:
The composition according to the invention includes the lubricating agent in a total quantity 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; the total quantity of lubricating agents does not exceed 5 parts by weight, more especially 2 parts by weight, maximum values of 1 part by weight per 100 parts by weight of polyolefin being recommended.
The phrases "at least" and "does not exceed" set forth corresponding minimum and maximum amounts for the primary lubricant. This portion of the specification clearly discloses ranges, not particular individual values. As we stated in Atofina, "the disclosure of a range . . . does not constitute a specific disclosure of the endpoints of that range." The court therefore erred in concluding that the '846 patent discloses particular points within the range recited in limitation 2. This conclusion is not fatal to Berry Plastics' case, however, because Ineos failed to raise a genuine question of fact about whether the range claimed is critical to the operability of the invention.
In Atofina, we reversed the district court's finding of anticipation where the patent-in-suit claimed a temperature range that was critical to the operability of the invention and the range disclosed in the prior art was substantially different. Atofina's patent and its prosecution history described the claimed temperature range as critical to the invention, and stated that the synthesis reaction would not operate as claimed at a temperature outside the claimed range. The prior art at issue in Atofina disclosed a broad temperature range of 100-500 °C. The patent-in-suit was not anticipated because there was a "considerable difference" between the prior art's broad disclosure and the claimed "critical" temperature range, such that "no reasonable fact finder could conclude that the prior art describes the claimed range with sufficient specificity to anticipate this limitation of the claim." Key to this conclusion was the fact that the evidence showed that a person of ordinary skill in the art would have expected the synthesis reaction to operate differently, or not all, outside of the temperature range claimed in the patent-in-suit.
In ClearValue, we further explained the importance of establishing the criticality of a claimed range to the claimed invention in order to avoid anticipation by a prior art reference disclosing a broader, overlapping range. The patent at issue in ClearValue claimed a method "for clarification of water of raw alkalinity less than or equal to 50 ppm by chemical treatment." After a jury found ClearValue's patent not anticipated by prior art disclosing clarifying water with alkalinity of "150 ppm or less," we reversed and held the patent invalid as anticipated. Notably, ClearValue did not argue that the claimed range was critical to the invention or that the claimed method would work differently within the prior art range of 150 ppm or less.
We have, however, reversed a grant of summary judgment of anticipation where the patentee raised a genuine dispute of material fact concerning the criticality of a claimed range. In OSRAM, the patentee argued that the claimed pressure range "less than 0.5 torr" was critical to the operation of its claimed lamp assembly. There, the patentee presented expert testimony and evidence supporting its assertion that the "less than 0.5 torr" limitation was "central to the invention claimed" and "that a lamp would operate differently at various points within the range disclosed" in the prior art reference at issue. This evidence was unrebutted. Noting the district court's failure to justify its rejection of OSRAM's expert testimony and the lack of support for the court's conclusion that the claimed range was narrowly encompassed within the prior art range, we reversed.
In this case, Ineos argues that because the prior art '846 patent discloses a range that overlaps with the range recited in limitation 2, the court should not have found claim 1 anticipated. Ineos asserts that it presented unrebutted evidence that the range recited in limitation 2 is critical to the invention and therefore, under OSRAM, the court erred in granting summary judgment in Berry Plastics' favor.
The court's conclusion that limitation 2 was met by the '846 patent was correct because Ineos did not raise a genuine question of fact about whether the range recited in limitation 2 is critical to the invention. The '863 patent specification indicates that the lubricants included in the invention function to improve the caps' slip properties and ability to be unscrewed from a bottle. It then describes the novelty of the invention as eliminating the odor and taste problems associated with prior art bottle caps while still maintaining good slip properties. Ineos has not established that any of these properties would differ if the range from the prior art '846 patent is substituted for the range of limitation 2.
Ineos relies on the testimony of one of the inventors of the '863 patent stating that the range claimed in limitation 2 is critical to avoid unnecessary manufacturing costs and the appearance of undesirable blemishes on the bottle caps. But even if true, this has nothing to do with the operability or functionality of the claimed invention. Ineos has not established any relationship between avoided cost and prevention of undesirable blemishes, and the claimed invention's slip properties or elimination of odor and taste problems. Ineos does not suggest that the claimed invention's slip properties or improved odor and taste properties would not have been expected based on the prior art. While we do not rule out the possibility that testimony concerning reduced manufacturing costs could be relevant where a method of manufacture claim is at issue, this is not the case before us.