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Whether Earlier Disclosed Genus Anticipates Later Claimed Species Necessarily Includes Factual Component That Can Preclude SJ

December 13, 2012

Decision icon Decision

Judges: O'Malley (author), Plager, Reyna

[Appealed from: C.D. Cal., Judge Real]

In Osram Sylvania, Inc. v. American Induction Technologies, Inc., Nos. 12-1091, -1135 (Fed. Cir. Dec. 13, 2012), the Federal Circuit reversed and remanded the district court’s grant of SJ invalidating claims 1, 17, 25, 27, and 32 of U.S. Patent No. 5,834,905 (“the ’905 patent”). The Court also held that the district court erred in failing to consider objective evidence of nonobviousness during an obviousness inquiry.

The ’905 patent was assigned to Osram Sylvania, Inc. (“Osram”) and is directed to a closed-loop tubular electrodeless lamp having certain and specific discharge current and pressure parameters. Representative claim 1 is directed to, inter alia, an electrodeless lamp that comprises a buffer gas at a pressure less than 0.5 torr and a radio frequency power source that supplies sufficient energy to the buffer gas to produce a discharge current equal to or greater than about 2 amperes. As described in the ’905 patent’s “Background of the Invention,” U.S. Patent No. 3,987,334 (“the ’334 patent”) is directed to a lamp that “operate[s] with a buffer gas pressure of ‘approximately 1 torr or less.’” Slip op. at 3. The specification of the ’905 patent makes it clear that a novel relationship that combines a high discharge current with low buffer gas pressure results in an increased efficiency and reduced power loss over conventional electroded lamps.

Osram sued American Induction Technologies, Inc. (“AITI”), who denied infringement of the ’905 patent and sought DJ of invalidity on various grounds, including anticipation and obviousness. In response to SJ motions by both parties, the district court found that claim 32 of the ’905 patent was invalid as anticipated by the ’334 patent and that genuine issues of material fact precluded SJ in favor of either party with respect to the remaining claims. Next, AITI renewed its SJ motion for invalidity of claims 1, 25, and 27 of the ’905 patent based on a combination of the ’334 patent and an article (“the Wharmby article”). On the renewed SJ motion, the district court concluded that claims 1, 17, 25, and 27 were invalid as obvious over the prior art. Regarding claim 17, the district court sua sponte found it obvious after AITI expressly dropped the claim from its renewed SJ motion.

On appeal, Osram argued that the district court resolved a disputed issue of material fact in its anticipation finding, namely, that the ’334 patent disclosed the operating condition of less than 0.5 torr through its reference to a lamp with “a pressure of approximately 1 torr or less,” and resolved numerous disputed issues of fact in its obviousness finding relating the interchangeability of lamp shapes. Additionally, OSRAM contended that the district court’s failure to address evidence of secondary considerations of nonobviousness alone warranted reversal. AITI countered that the earlier disclosed genus—1 torr or less—necessarily anticipates the later species—less than 0.5 torr—and that the claims are otherwise obvious in light of various combinations of prior art. AITI also contends that OSRAM failed to present evidence of a nexus between the claimed invention and the alleged secondary considerations, and, therefore, it was not an error for the district court not to consider them.

The Federal Circuit first addressed the district court’s finding that the ’334 patent anticipated claim 32 of the ’905 patent. The Court noted that the dispute centered on whether the ’334 patent discloses a buffer gas pressure of less than 0.5 torr. AITI argued that the range in the ’334 patent is sufficient to disclose the claimed range of the ’905 patent because the range of the ’334 patent completely encompasses the claimed range of the ’905 patent. The Court rejected AITI’s argument, stating that
“[w]hile it is true that an earlier disclosed genus may, in certain circumstances, anticipate a later species, this inquiry necessarily includes a factual component.” Id. at 11.

The Court reminded that “the prior art’s teaching of a broad genus does not necessarily disclose every species within that genus.” Id. The Court noted that the holding in Atofina was premised on the “considerable difference between the claimed [temperature] range and the range in the prior art,” and further that under the circumstances presented, “no reasonable fact finder could conclude that the prior art describes the claimed range with sufficient specificity to anticipate this limitation of the claim.” Id. (alteration in original). The Court found a clear disputed material issue of fact because Osram presented expert testimony showing that “the limitation of less than 0.5 torr is central to the invention claimed in the ’905 patent and that a lamp would operate differently at various points within the range disclosed in the . . . ’334 patent.” Id. at 12. The Court also noted that this dispute cannot be resolved as a matter of law based on the record because a trial may reveal that a minimal difference exists between the disclosed range of the ’334 patent and the claimed range of the ’905 patent. Accordingly, the Court reversed the district court’s SJ finding of anticipation of claim 32 (quoting Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006)).

The Federal Circuit also reversed the district court’s SJ finding that claims 1, 17, 25, and 27 are obvious over the ’334 patent and the Wharmby article. The Court noted that the district court “did not make any specific findings of fact and gave no basis—other than an admission that it previously failed to consider submissions by the parties—for reversing its prior statement that disputed issues of fact existed.” Id. at 14. The Court also noted that “both this Circuit and the Ninth Circuit repeatedly have made clear that a trial court must at least provide its analysis and grounds for entering judgment somewhere in the record.” Id. The Court further noted that the Federal Circuit “must be furnished ‘sufficient findings and reasoning to permit meaningful appellate scrutiny.’” Id. at 15 (quoting Nazomi Commc’ns, Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1371 (Fed. Cir. 2005)). Because the district court failed to explain its conclusion for granting the renewed SJ motion, especially when there was evidence in the record supporting the nonmovant’s position, the Court remanded the issue to the district court to perform the requisite analysis.

The Court also reversed the district court’s SJ determination of obviousness because substantial factual disputes existed. The district court concluded that the lamp’s “shape is irrelevant.” Id. at 16 (citation omitted). The Federal Circuit noted that substantial factual disputes existed whether one of ordinary skill would consider the lamp’s shape irrelevant and whether one of ordinary skill would be motivated to combine the ’334 patent with the Wharmby article. The Court found that Osram presented evidence through expert testimony that the Wharmby article teaches away from the closed-loop tubular design of the ’905 patent and further that discharge plasmas are inherently unpredictable. The Court also noted that there was evidence that showed a disputed issue of fact regarding the teachings of the Wharmby article because the district court concluded, at an inequitable conduct trial, that the inventors of the ’905 patent credibly believed that the Wharmby article was not material to the ’905 patent. For at least these reasons, the Federal Circuit reversed the grant of SJ and remanded for further proceedings.

The Court also concluded that a reversal of the district court’s SJ finding of obviousness was warranted because the district court failed to consider the patentee’s unrebutted evidence of secondary considerations of nonobviousness, including long-felt need, failure of others, and industry praise. On remand, the Court required the district court to consider secondary considerations in its obviousness analysis.

The Federal Circuit finally held that the district court erred in sua sponte finding claim 17 obvious after AITI expressly dropped the claim from its renewed SJ motion because the district court may not invalidate a claim sua sponte without giving notice and an opportunity for the nonmovant to address such an unanticipated action.

Summary authored by Goutham Kondapalli, student associate at Finnegan.