That which infringes if later, anticipates if earlier – But Elements of Anticipation Must Still be Proven

PatentLawPic278Zenith Electronics v. PDI Communications (Fed. Cir. 2008)

Zenith’s patents related to TV remote control devices for use in hospital beds.  In patent infringement litigation, the accused infringer (PDI) won on summary judgment of invalidity by anticipation. For its defense, PDI had argued that its accused system was identical to the prior art. 

On appeal, the CAFC found the practicing prior art defense lacking — holding instead that “anticipation cannot be proved by merely establishing that one ‘practices the prior art.’”  This decision flows from the 2002 Tate Access holding that, accused infringers are not free to flout the requirement of proving invalidity by clear and convincing evidence by asserting a ‘practicing prior art’ defense to literal infringement under the less stringent preponderance of the evidence standard.”

At first glance, this decision might appear in direct conflict with numerous Supreme Court and Federal Circuit opinions stemming from the 1884 Ohio Circuit Court statement: “That which infringes if later, anticipates if earlier.” Peters v. Active Mfg., 21 F. 319 (W.D.Ohio 1884) (affirmed and quoted in 129 U.S. 530 (1889)).  That initial notion, however, can be pushed aside by understanding that the CAFC’s problem with the pithy maxim is that it serves as a poor rule of evidence.  The court has established a specific element by element procedure for determining anticipation by a clear and convincing standard.  When those standards are applied the maxim will be upheld.

On remand, PDI must prove the elements of anticipation. I.e., the defendant must show “that each element of the claim at issue, properly construed, is found in a single prior art reference.” 

23 thoughts on “That which infringes if later, anticipates if earlier – But Elements of Anticipation Must Still be Proven

  1. This was a reversal of a summary judgment ruling. The patentee/plaintiff has the duty of proving infringement in the first instance. Instead of going through that analysis, the defendant fell back on the defense stated, and was reversed.

    Would the result have been different, in spite of the different standards of review, if the plaintiff had proved its case in chief, i.e. infringement, and the defendant then proved prior sale/use?

  2. I was initially troubled by the problem that the defendant may not be able to find a prior art reference showing each and every claimed element, even if it had been practicing the invention before the patentee had applied for his patent. But then, another poster found the way out of this in many cases – the on-sale bar.

    Admittedly, this doesn’t get around the case, but does potentially provide a way out in some situations.

  3. “Regarding: “… sometimes the prior product was NOT as identical to the currently accused product as the client thinks it was.” I agree. A defendant alleging “practicing the prior art” should have to prove identity of product to before the effective prior art date of the patent in order to make their case.”

    For the record, I do not believe that anyone disagrees with this proposition *where the defendant’s defense is challenged* by the patentee. But if patentee admits or fails to respond the defendant’s assertion that the defendant’s product (or anyone else’s product) is prior art falling within the claim scope … goodbye patent. No “element-by-element” analysis necessary. Admissions can be deadly. In part, that is why defendants get to take discovery.

  4. Regarding: “Even if the patentee makes the proposed admission, that doesn’t determine whether the claim is anticipated or simply not infringed.” Yes, without further analysis that might be the case, but the patentee-plaintiff is the one making the allegation in the first place and is the one who has initiated the lawsuit, forcing the defendant to undergo expense of trying to prove invalidity or noninfringement. Surely the patentee has some responsibility in this matter and should have to undergo some risk, possibly of losing their patent, when making such an allegation. They should be held accountable to admissions made in their pleading, even if wrong. Before initiating a suit, a simple preliminary investigation should reveal how long the alleged infringing product has been on the market and if it predates the patent.

    Regarding: “… sometimes the prior product was NOT as identical to the currently accused product as the client thinks it was.” I agree. A defendant alleging “practicing the prior art” should have to prove identity of product to before the effective prior art date of the patent in order to make their case.

  5. If the product formally asserted as infringed by the patent owner is proven by clear and convincing evidence [or uncontestedly] to have been the very same product on sale more than a year before that patent was filed, then the appropriate decision should be invalidity by ESTOPPEL, without requiring this element by element analysis for aniticipation, and there is CAFC case law on point. [That is not the same as erroniously trying to win by arguing non-infringement with the old [and dead] “practicing the prior art” argument.]

    [But as one commentator has noted, sometimes the prior product was NOT as identical to the currently accused product as the client thinks it was.]

  6. Malcolm Mooney:

    SKB v. Apotex does not establish “…if the patentee admits that the prior art is identical to the infringer’s product, then surely that is the end of the analysis,” regardless of what “the end of the analysis” means. Even if the patentee makes the proposed admission, that doesn’t determine whether the claim is anticipated or simply not infringed.

    In SKB, the CAFC took the shortcut that, since the claim was product-by-process AND since they view novelty of a PBP claim as dependent on the novelty of the product, the admission DID establish anticipation.

    Furthermore, in SKB, it wasn’t the infringer’s product that was novelty-defeating, but the patentee’s. So the admission you propose wasn’t even part of that case.

  7. There’s a very interesting discussion of implied license on pages 17-23 of the opinion.

    Does it appear to anyone that the CAFC has backed off its opinion in the LG v. Quanta case and taken the position the Supreme Court might adopt in the appeal?

  8. “The quality of the application is of but minor import. Any lawyer can tell you this, it is the basis of their profession.”

    totally unnecessary and counterproductive posting, e6k

  9. Sean: “Malcolm Mooney, that SKB v. Apotex case is not really on point. ”

    It’s directly on point.

    “For a product-by-process claim, the CAFC maintains that if the product is already in the prior art, then the claim is not patentable”

    In fact, this is true for any composition claim and is the basis for the holding in SKB v. Apotex. More importantly, the CAFC goes out of its way to note that the reason they do not need to do a “limitation by limitation” analysis of the claim is that the patentee never disputed the fact that the infringer’s product was identical to a prior art product.

  10. Why yes Mark, in a rational world it would be. But remember, this is patent law, not a rational world. You simply must keep that in mind. The system is designed specifically to reward people for sending in applications. The quality of the application is of but minor import. Any lawyer can tell you this, it is the basis of their profession.

  11. This problem arises from having different evidence standards for infringement and anticipation. If the standards were the same, the maxim of “that which infringes if later, anticipates if earlier” would reduce defendants statement that it “practices the prior art” to an assertion that if plaintiff were to succeed in proving literal infringement, then the plaintiff, by that very act, would also prove anticipation and undermine its own patent, and so, why bother going through the exercise and expense of a trial. Thus the defendant’s statement of practicing the prior art would be an offer to the plaintiff of a pyrrhic victory: if you win, you lose. Alas, the evidence standards are different. So, defendant has to prove with clear and convincing evidence that its own prior acts anticipate the patent claims, while the plaintiff need only prove infringement by a preponderance of the evidence, leading to potential absurdities in outcome, literal infringement but no anticipation.

    I can see why there would be different standards, the presumption of patent validity being one reason, but the defense should only have to prove by clear and convincing evidence that its acts predate the effective date of the application/invention and thus qualify as prior art, and such acts are the same then as they are at present. The other aspect of anticipation (“same elements”) is already asserted by the plaintiff in their infringement action, so why have different standards for plaintiff and defendant? Isn’t that point already conceded by both parties?

  12. That which does not anticipate if earlier, cannot infringe if later? (not true due to bar dates and enablement tricks)

    That which infringes under the Doctrine of Equivalents if later, renders obvious if earlier? (no court will say)

  13. So, I’m Just Saying, “the patentee is going to lose” whatever. Then how come the action is still on its feet? Why is the patent owner still pouring his hard-earned cash into the lawyers’ pockets? Oh, I forgot, no “Loser Pays” Rule.

  14. Malcolm Mooney, that SKB v. Apotex case is not really on point. For a product-by-process claim, the CAFC maintains that if the product is already in the prior art, then the claim is not patentable. The claim is only patentable if the process AND product are novel.

    In that regard, the analysis for a product-by-process claim can be considered a bit of an anomaly. You only have to show that the product is not novel, not that all elements of the process are found, along with the product, in a single reference. (“…[O]nce a product is fully disclosed in the art, future claims to that same product are precluded, even if that product is claimed as made by a new process.”)

    (By the way, Judges Rader and Gajarsa dissented on the denial of a petition for en banc rehearing, on the ground that the panel took an impermissible shortcut.)

  15. I think folks are missing the point. It is a who has the burden of proof question, not necessarily the height of the burden (though that does play into it somewhat). The accused infringer has the burden of proving that the patent is invalid. Just because the the patentee is accusing their product of infringement, doesn’t mean that it does infringe — as we know, it is often the case that an accused product doesn’t infringe. And, if it turns out that the accused product doesn’t infringe, then it may very well may be that the prior art which is identical to the accused product doesn’t anticipate. In that instance, the patentee would still lose, but it would lose on infringement rather than validity, and then patent would still potentially have life so that the patentee could wrongly accuse some other defendant of infringing it.

    So, I think the point is that if the accused product is identical to the prior art, the patentee is going to lose. But, you can’t assume that they’re going to lose on invalidity rather than non-infringement, so you can’t grant a summary judgment of invalidity unless and until the one with the burden of proof (the accused infringer) actually proves it.

  16. MaxDrei:

    Here’s the link:

    link to cafc.uscourts.gov

    However, I’ve never found a lawyer or judge who could really explain what “clear and convincing” means. And I don’t believe Juries either understand it or apply it.

  17. Great topic Dennis. Want to read the Decision but couldn’t find a link. The USA is a country that follows the Rule of Law, right. The law says “clear and convincing evidence” is a necessary condition for finding a claim invalid. The CAFC is simply following the law as it stands, right?

    When non-Americans question the public policy benefits of “clear and convincing” we are told that c+c is one of the hallmarks of the USA’s uniquely “strong” patent system that made America great, and that to drop down to a preponderance standard will reduce the quality of the US patent system to the lower level that obtains in the rest of the world. So why, when the CAFC simply nurtures the c+c standard, is it “comedy central”? Is the Rule of Law currently suspended, inside the USPTO?

  18. It is my experience as a long-term inhouse attorney that the language “that which infringes if later, anticipates if earlier” and “we are practicing the prior art” are often the two most common remarks from management when faced with an IP problem. They also are the most misunderstood as management often refuses to understand the issues raised by metoo.

  19. Invalidity by anticipation.

    Now that’s a bit of a problem.

    Rumor has it that we’ve turned you down.

    And of course the CAFC has its reputation to consider.

    Facts, and evidence.

    Facts, and evidence, oh you’ll find plenty of both down there at the district court.

    You bring the prior art to our CAFC court, you insult our process of establishing a clear and convincing standard of invalidating evidence, you threaten our patent holders with invalidity and only having a fair chance, oh, we’ve chosen our words carefully, and perhaps you should have done the same.

    “This is blasphemy, this is MADNESS!!!”

    Madness? This. IS. C A F Ceeeeee!!!!!!!!!

    “AHHHHHH”

    Lol 300. link to youtube.com I love the CAFC. They’re better than comedy central.

  20. Doesn’t this just point out the problems with the clear and convincing evidence standard? Suppose, e.g.,

    1. The parties stipulate that the accused product has been in use, unmodified, since the dawn of civilization.

    2. The jury finds, by a preponderance of evidence, that it infringes. But it cannot find, by clear and convincing evidence, that it anticipates. More likely, the jury simply returns a general verdict for the patentee and you construe it in the most favorable way.

    3. By the Federal Circuit decision, patentee wins–but it is absurd under Peters.

  21. “On appeal, the CAFC found the practicing prior art defense lacking — holding instead that “anticipation cannot be proved by merely establishing that one ‘practices the prior art.’”

    On the other hand, if the patentee admits that the prior art is identical to the infringer’s product, then surely that is the end of the analysis.

    See, e.g., SmithKline Beecham v. Apotex, 439 F.3d 1312, 1318-19 (Fed. Cir. 2006) (“It makes no difference here whether the ’944 patent’s product-by-process claims are construed broadly to cover the product made by any process or narrowly to cover only the product made by a dry admixing process. Either way, anticipation by an earlier product disclosure (which disclosed the product itself) cannot be avoided.”)

  22. I think that the maxim of “that which infringes if later, anticipates if earlier” is still valid – you just can’t use it as a shortcut. At the end of the day, all this amounts to is that the accused infringer has to prove by “clear and convincing evidence” that their current product/method is prior art for the patent claims (assuming that there are no differences between their current product/method and what they claim is prior art).

Comments are closed.