Keeping Boundaries on 'At Once Envisage' in Anticipation

The law of anticipation is often recited in terms that are nearly the very definition of a "bright-line" rule:

Anticipation under 35 U.S.C. § 102 requires the presence in a single prior art disclosure of each and every element of a claimed invention.… That which would literally infringe if later in time anticipates if earlier than the date of invention.¹

[R]ejections under 35 U.S.C. § 102 are proper only when the claimed subject matter is identically disclosed or described in the prior art. …the [prior art] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.²

But, is the issue really that simple? The law of anticipation in genus/species situations may be less clear:

[T]he issue of anticipation turns on whether the genus was of such a defined and limited class that one of ordinary skill in the art could "at once envisage" each member of the genus.³

One might think that in such situations, the person of ordinary skill in the art (POSITA) is to be defined, followed by an effort to ascertain exactly what the POSITA would "at once envisage" from the genus.

And what is the result for situations involving lists of species?

In this case, the prior art does not merely disclose a genus of skin benefit ingredients without disclosing the particular claimed ingredient. Rather Pereira specifically discloses ascorbyl palmitate. That specific disclosure, even in a list, makes this case different from cases involving disclosure of a broad genus without reference to the potentially anticipating species.⁴

In Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, the Federal Circuit arguably went further and found anticipation where there were two lists of components in the prior art reference which the alleged infringer argued a POSITA could choose from to arrive at the claimed invention.

Wrigley argued that even if the claim limitations were disclosed, they were not disclosed in combination as set forth in the claim, a requirement, according to Wrigley, of finding anticipation.⁵ After acknowledging the case that an anticipating reference must "disclose all of the limitations of the claim, 'arranged or combined in the same way as in the claim[,]'"⁶ a majority of the Federal Circuit found anticipation, concluding that the determinative issue was what the POSITA would at once have envisaged as "immediately apparent":

[t]he question for purposes of anticipation is therefore whether the number of categories and components in [the single prior art reference] was so large that the combination of [one item from each list] would not be immediately apparent to one of ordinary skill in the art.⁷

But there was a dissent in Wrigley. In particular, Judge Pauline Newman took issue with the anticipation holding because the reference did "not show the claimed combination at all, but merely present[ed] the ingredients on lists."⁸ A finding of anticipation means that the invention was "previously known." Even if volume is a proper basis of determination as to what would have been immediately envisaged, Judge Newman found that this reference did "not present so short and selective a list of these ingredients as to warrant an inference that their combination was already known."⁹ Rather, the lists provided components which could be combined "in over a million possible combinations."¹⁰

Judge Newman went back to the "at once envisage" language in rejecting the distinction between the test for genus/species disclosure and lists:

When the listing of many possible ingredients does not produce immediate recognition of the specific combination, the list does not "anticipate" that combination. My colleagues misconstrue Perricone, for that case does not rely on the distinction between a list and a genus in determining whether the claimed invention is "new," and does not hold that every list, of whatever form and length and complexity, anticipates every combination of the listed components. … The district court erred in viewing Perricone as holding that "the mere fact that the elements of a claim are set forth in the prior art patent in a list along with the other ingredients without any 'special emphasis' is irrelevant to an anticipation analysis. Instead, all that is relevant is whether the prior art disclosure is enabling." … To the contrary, the way the elements are set forth in the reference and its lists is highly relevant, for an anticipating reference must show the specific ingredients and direct their selection such that the specific combination is deemed to have existed.¹¹

The Federal Circuit upheld an anticipation finding in Kennametal Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015), perhaps expansively applying the "at once envisage" language of In re Petering by stating:

a reference can anticipate a claim even if it "d[oes] not expressly spell out" all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would "at once envisage" the claimed arrangement or combination. In re Petering, 49 CCPA 993, 301 F.2d 676, 681 (1962).¹²

In Petering, the Court of Customs and Patent Appeal was discussing the allegedly anticipating prior art reference and noted:

We think the Karrer patent, as a printed publication, describes to one skilled in this art not only the broad class but also this much more limited class within that broad class, and we think it is immaterial that Karrer did not expressly spell out the limited class as we have done here. It is our opinion that one skilled in this art would, on reading the Karrer patent, at once envisage each member of this limited class, even though this skilled person might not at once define in his mind the formal boundaries of the class as we have done here.¹³

Arguably, Petering does not stand for the proposition that a limitation may be "read in" to find a reference anticipating. Rather, the limitation needs to be at once envisaged.

In Kennametal, the reference disclosed a cutting tool assembled by combining different classes of materials with multiple options for each class. The claims at issue recited a specific combination of these materials. The Patent Trial and Appeal Board held that the reference anticipated each of the numerous possibilities that resulted from the permutations of the options disclosed in the reference, and the Federal Circuit affirmed.

The Federal Circuit perhaps tried to clarify Kennametal recently in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 851 F.3d 1270 (Fed. Cir. 2017).¹⁴ The challenged claims required a "scaled torque demand" to be able to calculate an 'IQr demand'." The "IQr demand" was not defined expressly in the specification.

In the inter partes review, the PTAB held that Nidec’s claim was unpatentable as anticipated.15 In particular, the PTAB held that the reference’s disclosure of "the set of Iu*, Iv*, and Iw* is an IQdr demand." The PTAB cited the Federal Circuit’s 2015 Kennametal opinion¹⁶ in support of finding that “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out' all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would 'at once envisage' the claimed arrangement or combination."

On appeal, Nidec argued the reference did not anticipate because it did not disclose "produc[ing] an IQdr demand." The reference disclosed "three separate phase currents in the stationary frame of reference, rather than an IQdr demand, which must be in the rotating frame of reference."

The Federal Circuit reversed the PTAB’s conclusion of anticipation as unsupported by substantial evidence, emphasizing that the reference relied upon did not disclose an IQdr demand. The Federal Circuit specifically found error in the PTAB’s understanding of Kennametal:

Kennametal does not stand for the proposition that a reference missing a limitation can anticipate a claim if a skilled artisan viewing the reference would ‘at once envisage’ the missing limitation. Rather, Kennametal addresses whether the disclosure of a limited number of combination possibilities discloses one of the possible combinations. … Kennametal does not permit the Board to fill in missing limitations simply because a skilled artisan would immediately envision them.¹⁷

Also recently in Wasica Finance GmbH v. Continental Automotive Systems Inc., 853 F.3d 1272 (Fed. Cir. 2017),¹⁸ the Federal Circuit reiterated the principle that "[a]mbiguous references do not anticipate a claim."¹⁹ Rather, "a single reference" must "describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art." citing Verve LLC v. Crane Cams Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002).²⁰ In Wasica, the Federal Circuit upheld the PTAB’s determination that an instituted claim reciting the limitation of a "constant frequency" was not unpatentable for anticipation by a reference that disclosed a "common" working frequency. Because the reference could use constant or nonconstant frequencies, it was "ambiguous as to whether it disclose[d]" the recited limitation.²¹

Furthermore, the reference’s disclosure of a genus ("any modulation scheme"), "did not disclose with sufficient particularity" the species recited in the instituted claim ("constant-frequency modulation scheme").22 The Federal Circuit distinguished this case from Kennametal because in this case, there was no evidence supporting the legal theory that a POSITA would "at once envisage" the claimed species from the ambiguous disclosure.23

In Blue Calypso LLC v. Groupon Inc., 815 F.3d 1331 (Fed. Cir. 2016), the Federal Circuit seemed to be trying to harmonize Kennametal with more-established case law about anticipating lists. In Blue Calypso, the Federal Circuit heard an appeal of five covered business method reviews of five of Blue Calypso’s patents. The PTAB held all instituted claims unpatentable, many for anticipation.

On appeal Blue Calypso argued that although the applied reference disclosed the claimed elements, it did not explicitly disclose a combination and therefore the PTAB’s anticipation conclusion was in error.

The Federal Circuit found that the PTAB understood the reference to "explicitly contemplate[] the combination of the disclosed functionalities." This understanding was supported by expert testimony.

This, according to the Federal Circuit, made the case "akin to our decision in Kennametal."²⁴ In Blue Calypso, “the Federal Circuit agreed with the PTAB that, "given Paul’s discussion of combining features disclosed therein, a skilled artisan would 'at once envisage' the combination of two of the disclosed tools … to arrive at the system claimed in the Blue Calypso Patents."²⁵

Judge Alvin Schall, however, dissented to the anticipation holding. Judge Schall first acknowledged that "[a]lthough anticipation typically cannot be found without an express or inherent disclosure, there is a line of cases where 'the issue of anticipation turns on whether [a disclosed] genus was of such a defined and limited class that one of ordinary skill in the art could 'at once envisage' each member of the genus.' Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361 (Fed.Cir.2012)."

Judge Schall then objected to the lack of explanation by the PTAB as to whether it was relying on a theory of anticipation by inherency or anticipation "because a a person of skill in the art, reading Paul, would "at once envisage" the claimed arrangement."²⁶ Furthermore, Judge Schall disagreed that the case was "akin" to Kennametal, and instead found that the "evidence, at most … reveals that Paul discloses a single system with multiple tools that are capable of functioning together. This is not enough for anticipation. The Board’s ‘analysis [therefore] goes astray because it assumes what [Paul] neither disclose[s] nor render[s] inherent.'"

There is yet another line of cases holding that "picking and choosing" is not appropriate because the standard for anticipation is supposed to be "as arranged in the claim. Examples in this line of cases include Impax Laboratories Inc. v. Aventis Pharmaceuticals Inc., 545 F.3d 1312 (Fed. Cir. 2008) and Net MoneyIN Inc. v. VeriSign,Inc., 545 F.3d 1359 (Fed. Cir. 2008). As stated in NetMoney:

Because the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must  not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements "arranged as in the claim." Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983).5 The meaning of the expression "arranged as in the claim" is readily understood in relation to claims drawn to things such as ingredients mixed in some claimed order. In such instances, a reference that discloses all of the claimed ingredients, but not in the order claimed, would not anticipate, because the reference would be missing any disclosure of the limitations of the claimed invention "arranged as in the claim." But the "arranged as in the claim" requirement is not limited to such a narrow set of "order of limitations" claims. Rather, our precedent informs that the "arranged as in the claim" requirement applies to all claims and refers to the need for an anticipatory reference to show all of the limitations of the claims arranged or combined in the same way as recited in the claims, not merely in a particular order. The test is thus more accurately understood to mean "arranged or combined in the same way as in the claim."²⁷

… We thus hold that unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.²⁸

How should the practitioner proceed in light of this somewhat disparate precedent? For the patentee, if faced with an argument like the Nidec PTAB final written decision where the examiner or adjudicator seems to be filling in a claim limitation, the patentee might argue that the Nidec Federal Circuit decision stemmed that way of thinking and places limits on the "immediately envisage" analysis. Further support can be found in the Wasica Federal Circuit decision rejecting the disclosure as too ambiguous for a POSITA to understand that the claimed subject matter was already known.

The patentee might also urge that the Impax and Net MoneyIn lines of argument require that, if the POSITA is to be able to immediately envisage, the allegedly anticipatory reference must arrange or combine all the claim limitations in the same way as in the claim. Such reasoning may damper an over-expansive view of "immediately envisage." Otherwise, an examiner or petitioner in a PTAB challenge would need only to show that all the elements of the claim are somehow recited somewhere, however disconnected, in the prior art. But that might allow for an argument by the patentee that there is sufficient lack of connectivity of all elements to establish that the reference arranges or combines all the claim limitations in the same way as in the claim.

Endnotes
¹ Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744 (Fed. Cir. 1987)

² In re Arkley, 59 C.C.P.A. 804, 455 F.2d 586, 587 (1972). See also, In re Petering, 49 C.C.P.A. 993, 1000-01 (CCPA 1962)("It is our  opinion that one skilled in this art would, on reading the Karrer patent, at once envisage each member of this limited class, even though this skilled person might not at once define in his mind the formal boundaries of the class as we have done here…. we hold that each compound within the limited class in Karrer, as defined supra, has been described in a printed publication within the meaning of 35 U.S.C. § 102(b), and that it is of no moment that each compound is not specifically named or shown by structural formula in that publication.").

³ Eli Lilly & Co. v. Zenith Goldline Pharm., Inc., 471 F.3d 1369, 1376 (Fed. Cir. 2006).

⁴ Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1377 (Fed.Cir.2005).

⁵ In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990); Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).

⁶ Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361 (Fed. Cir. 2012), citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008).

⁷ Id. at 1361. The Federal Circuit also distinguished Impax Laboratories, Inc. v. Aventis Pharmaceuticals Inc., 545 F.3d 1312 (Fed. Cir. 2008), where the prior art reference was not anticipating because one of ordinary skill in the art would be required to pick items from "hundreds or thousands of compound" to arrive at the claimed invention.

⁸ Id. at 1371.

⁹ Id.

¹⁰ Id.

¹¹ Id. at 1372.

¹² Kennametal, 780 F.3d at 1381.

¹³ Petering, 301 F.2d at 681.

¹⁴ Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 851 F.3d 1270 (Fed. Cir. 2017).

¹⁵ Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corp., IPR2014-01122, Paper 41 (P.T.A.B. Jan. 12, 2016).

¹⁶ IPR2014-01122, Paper 41 at 15, citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015).

¹⁷ Nidec, 851 F.3d at 1274.

¹⁸ Wasica Finance GmbH v. Continental Automotive Systems, Inc., 853 F.3d 1272 (Fed. Cir. 2017).

¹⁹ Wasica, 853 F.3d at 1284.

²⁰ Id.

²¹ Id.

²² Id. at 1285.

²³ Id.

²⁴ Blue Calypso, 815 F.3d at 1343.

²⁵ Id. at 1344.

²⁶ Id. at 1352.

²⁷ Net MoneyIn, 545 F.3d at 1369-70.

²⁸ Id. at 1371.

*Stacy Lewis is a law clerk at Finnegan.