For this week's blog
posts, the theme is obviousness. I wanted to discuss an article from
Patentlyo.com titled, "Whither Obviousness: Narrow Range Anticipated by
Broader Range in Disclosure" by Dennis Crouch. Consider an invention "that is anticipated, but
likely not obvious. According to the apellate panel, the prior artfully
discloses and enables the invention but also teaches that the proposed
invention is impractical and does not work well." [1] This is part of a
classic hypothetical case presented in law schools.
The patent that we
are considering is given in link [2] below. This patent protects a process for
clarifying water using a flocculated suspension of aluminum and quarternized
polymers. The patent owner and inventor, Richard Haase, has filed more than 50 patents
on water purification/ energy and is the CEO of ClearValue. Pearl River, who
was once a customer of ClearValue, later began making its own patented process. Haase sued them for patent
infringement and for trade secret violation. The conclusion is that "a
broad range disclosure found in the prior art ("less than 150 ppm")
anticipates the narrower range found in the claims ("less than 50
ppm"). Under 35 U.S.C. § 102, "a claim will be anticipated and
therefore invalid if a single prior art reference describes 'each and every
claim limitation and enable[s] one of skill in the art to practice an
embodiment of the claimed invention without undue experimentation'"[1]
The Federal Circuit
addressed a similar situation in the 2006 Atofina decision, in which there was
a narrow claimed temperature range and the prior art dictated a broader
temperature range. At that time, the final decision was that the broad range
disclosed in the prior art did not anticipate the narrow range claimed later.
Instead, it was agreed that there was something significant about the claimed
temperature range. However, in this case, the court ruled that "the narrow
range is not critically different from the broad range….[and] that the claimed
narrow range was fully disclosed by the broad range and therefore is
unpatentable."[1]
Okay, so how does
all this relate to obviousness? The article states:
"The mechanism that the court used to
distinguish this case from Atofina is very much akin to obviousness
principles-- looking essentially for synergy or unexpected results that make
the narrow range qualitatively different from the broad range" [1]
Take a look at the
article and actual patent if you are interested in learning more about the
case! (see links below)
I think the hypothetical situation that you brought up would be a good opportunity for the court to apply the secondary considerations the Supreme Court developed. For example, even if the prior art teaches that the new invention will not be practical and won't work well, the inventor should have the ability to prove the author of the prior art patent wrong. The author should be given the opportunity to prove that his or her invention can be a (1) commercial success or (2) fulfill a long-term void.
ReplyDeleteI thought this post was very insightful in a key point that the narrow coverage of a patent could allow it to be differentiated from a broad prior art claim. From what we learn in class, infringing a patent means infringing on at least one of the claims. This intuitively motivated us write multiple claims in our patent in order to cover more ground. Yet this case shows that sometimes being able to be more focused is actually what is key to a patent. I totally agree with this point! Hopefully this will motivate patent claims to be stronger by covering a lot of ground but being very specific
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