Assignment 9: Blog Post 2: Anticipation versus Nonobviousness

For this blog post, I decided to discuss an article by Dennis Crouch on patentlyo.com. The case under review is Cohesive Tech. versus Water Corp. First, a brief background about this case: This is a patent infringement case, where Cohesive accused Water's 30 micrometer Oasis HPLC (high performance liquid chromatography) columns to infringe their '874 patent in the first action and their '368 patent in the second action. In the third action, Cohesive claimed Water's 25 micrometer Oasis HPLC columns to infringe both patents. Having used HPLC before, I thought this case was interesting. For those of you who are new to this field, HPLC is basically a process used to separate, identify, and measure compounds in a liquid.

In the first action, the jury decided that the '874 patent was valid and that the HPLC columns infringed the patent. In the third action, the court was on Water's side (no infringement).  For the first two actions (regarding the 30 micrometer HPLC column), the district court concluded that "Waters failed to prove the deceptive intent necessary to sustain its claim of inequitable product"[2].

 The article discusses the idea that novelty and nonobviousness are "separate and distinct inquiries"[1]. See figure 1. Dennis Crouch mentions how the Cohesive's HPLC patent may be obvious, but was not anticipated. Water appealed and argued that "the judgment was logically incorrect if anticipation truly is the 'epitome of obviousness'. On appeal, the Federal Circuit confirmed that novelty and obviousness are separate and distinct-- one does not necessarily follow the other"[1]. Thus, it is important to realize that the tests for anticipation and obviousness are different.

The confusion may arise because it may seem that if there are references in the prior art (what has already been done before) that anticipate a claim, it will usually mean that the claim is obvious. However, two circumstances were suggested in which the anticipated claim may still be nonobvious. The first circumstance is that secondary considerations of nonobviousness may exist that are not relevant in the anticipation claim in the prior art. I talked about these secondary considerations in my previous blog post. The second circumstance suggested by the court is when "although inherent elements apply in an anticipation, inherence is generally not applicable to nonobviousness"[1].

The Patentlyo article had a very good example, that I will copy below, because it really helps in the understanding this idea:

“Consider, for example, a claim directed toward a particular alloy of metal. The claimed metal alloy may have all the hallmarks of a nonobvious invention—there was a long felt but resolved need for an alloy with the properties of the claimed alloy, others may have tried and failed to produce such an alloy, and, once disclosed, the claimed alloy may have received high praise and seen commercial success. Nevertheless, there may be a centuries-old alchemy textbook that, while not describing any metal alloys, describes a method that, if practiced precisely, actually produces the claimed alloy. While the prior art alchemy textbook inherently anticipates the claim under § 102, the claim may not be said to be obvious under § 103.”

In contrast to Figure 1, Judge Mayer thinks of the relationship between obviousness and anticipation more closely to Figure 2, where anticipation is a subset of nonobviousness. So what do you all think about this distinction between anticipation and obviousness? Let me know in the comments below.

 

           Figure 1                                                                                      Figure 2

Links:

1. http://patentlyo.com/patent/2008/10/nonobvious-yet.html
2. http://www.finnegan.com/files/Publication/96c5dafa-fe96-4f24-b6e5-1172ae640ba5/Presentation/PublicationAttachment/c81948b7-039c-4bec-82d3-11dfb8dd620d/08-1029%2010-07-2008.pdf