Jury Wrong on Anticipation; But Claims are Obvious as a Matter of Law

[Updated to correct an error]

PatentLawPic901Therasense, Inc. (Abbott) v. Becton, Dickinson and Co. (Fed. Cir. 2010) (Case No. 2009-1008)

The Abbott patent covers a glucose meter designed with an additional sensor that ensures that a sufficient blood sample is obtained prior to the measurement. (Patent No. 5,628,890). Abbott sued BD and Nova Biomed for infringement. At the close of trial, the jury returned a verdict that the patent was infringed but invalid. The jury indicated that the patent was invalid for “anticipation or obviousness” and also invalid for failing the written description requirement of Section 112.

Law of Anticipation: On appeal, the Federal Circuit first determined that the jury instructions on the law of anticipation were incorrect. Notably, the district court judge had told the jury that “for anticipation, it is sufficient if the single reference would have informed those skilled in the art that all of the claimed elements could have been arranged as in the claimed invention.”  (emphasis added). Of course, anticipation requires that the reference disclose the same elements in the same arrangement. 

The requirement that the prior art elements themselves be “arranged as in the claim” means that claims cannot be “treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.” Quoting Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984).

Harmless Error: Under Federal Circuit law, erroneous jury instructions will lead to vacatur unless the error “could not have changed the result.”  Here, the jury decided obviousness and anticipation together and the Federal Circuit found that the overwelming evidence of obviousness renders the error on anticipation “harmless.”

“[A]n erroneous instruction on the law of anticipation could not have changed the result in this case if claims 11 and 12 would have been obvious as a matter of law, such that no reasonable jury could have returned a verdict that the claims are not obvious.”

Obvious as a Matter of Law: The appellate panel held here that the asserted claims “would have been obvious over [the Nankai reference] as a matter of law.”  The court’s approach to his holding of obviousness will be important for future summary judgment motions.  In particular, Abbott’s downfall was its own broad claim language that encompassed the prior art.  One clear difference between the claims and the prior art was admitted by the patentee to be “insubstantial.”

Written Description: Because the claims were obvious, the court did not consider the written description appeal.

Cross Appeal: BD filed a cross-appeal in the case asking the court to overturn the holding of infringement. The Federal Circuit rejected that cross-appeal — holding that it lacked jurisdiction. Notably, a cross-appeal is only appropriate when “a party seeks to enlarge its won rights under the judgment or to lessen the rights of its adversary under the judgment.” Here, the cross-appeal was improper because a holding of non-infringement would not change the ultimate outcome of the case.

Note: The Federal Circuit has also decided the related case No. 2008-1511 (Therasense, Inc. v. Becton, Dickinson and Co.). That opinion focuses on obviousness and inequitable conduct.

14 thoughts on “Jury Wrong on Anticipation; But Claims are Obvious as a Matter of Law

  1. 14

    No EPA then Just. So it was an ordinary member of the lay public in the jury room who:-

    “…was trying to distinguish between the instructions on obviousness and those on anticipation and rightly suspected that the instructions on anticipation were in error.”

    Respect. Perhaps in future juries should do more, and judges less?

  2. 13

    What was the jury thinking of when it asked the judge Do you really mean “could” or is it “would”.

    I believe the jury was trying to distinguish between the instructions on obviousness and those on anticipation and rightly suspected that the instructions on anticipation were in error.

    “Was there a European patent attorney in the jury room”

    Sigh…

  3. 12

    To JAOI:

    Mooney’s post above @ Jan 27, 2010 at 04:30 PM shows that even a baboon can do italics and bold on and off together.

    My guess is that he was just trying to steal some of my glory.

    No big surprise.

  4. 11

    The judge permitted a jury to decide validity? Isn’t that a question reserved to the robed ones?

    The function of the courts is to apply the law to the facts presented by the parties.

    If there’s any dispute about a relevant fact, such as what a person skilled in the art would understand from a particular reference, that’s a question for the jury. The judge still decides the law, often of the form “if you find this fact, this legal conclusion results”.

    I think it’s ridiculous to have juries in civil trials, especially with highly technical facts at issue, but there you have it.

  5. 8

    I see the 1511 decision on the obviousness aspects, referred to above, runs to 67 pages and I haven’t read it yet but this much shorter one I must comment on, if only because, in the picture above, the product has my name on it.

    Bit of a sad case really, The invention solved a problem and met a long felt want, yet was still found old and obvious because the prior art device “could” have been arranged in a way that would leave it inside the claim. I’m thinking:

    1. Shame the killer art wasn’t found prior to issue, so Applicant could make clear before issue the patentable distinction over it,

    2. How kind to Applicants the EPO is. On obviousness, for example, it isn’t enough for the Exr to show “could”. Rather, the Exr has to show that the PHOSITA “would” have adopted the claimed combination of technical features, and

    3. What was the jury thinking of when it asked the judge “Do you really mean “could” or is it “would”. Was there a European patent attorney in the jury room?

  6. 6

    “By the same logic, if one of skill in the art can envisage all possible ways of combining a list of admittedly combineable component elements in a prior art reference, then the prior art reference anticipates.”

    Never took statistics, huh?

  7. 5

    Notably, the district court judge had told the jury that “for anticipation, it is sufficient if the single reference would have informed those skilled in the art that all of the claimed elements could have been arranged as in the claimed invention.” (emphasis added). Of course, anticipation requires that the reference disclose the same elements in the same arrangement.

    Except where it doesn’t. See, e.g., In re Gleave.

    For the purposes of whether they are anticipatory, lists and genera are often
    treated differently under our case law. Compare Perricone v. Medicis Pharm. Corp.,
    432 F.3d 1368, 1376 (Fed. Cir. 2005) (rejecting “the notion that [a compound] cannot
    anticipate because it appears without special emphasis in a longer list”) with Atofina v.
    Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006) (“It is well established
    that the disclosure of a genus in the prior art is not necessarily a disclosure of every
    species that is a member of that genus.”). This distinction collapses when the class of
    compounds that falls within the genus is so limited that a person of ordinary skill in the
    art can “at once envisage each member of this limited class.”
    Eli Lilly, 471 F.3d at 1376.
    In that limited circumstance, a reference describing the genus anticipates every species
    within the genus. See Perricone, 432 F.3d at 1377.

    By the same logic, if one of skill in the art can envisage all possible ways of combining a list of admittedly combineable component elements in a prior art reference, then the prior art reference anticipates.

    Not sure why the panel felt compelled to be so hard-axxed on this point. Perhaps they felt they needed to find something — anything! — to correct Judge Alsup about.

    Fyi, the related case is more interesting: a classic tale of inequitable conduct blowing up in the applicant’s face.

  8. 3

    “but the error on the anticipation instructions is harmless if the jury properly held the patent invalid on another ground”

    But here we don’t know on what ground the jury held the patent invalid. I’m having difficulty believing that merely showing that the jury merely might have used the other standard is enough. The panel cited authority for the following rule:

    “When the error in a jury instruction ‘could not have changed the result, the erroneous instruction is harmless’ and will be upheld.

    Under the standard the panel used, it seems to me that finding the claims obvious as law was needed.

  9. 2

    JV — I may not have explained this well, but the error on the anticipation instructions is harmless if the jury properly held the patent invalid on another ground. The jury’s verdict on the other grounds should be upheld unless it reached a “seriously erroneous result.” So, the court could have held that an obviousness finding would not be “seriously erroneous” rather than holding that the claims are obvious as a matter of law.

  10. 1

    DC says,

    “Going beyond what was legally necessary to uphold the jury verdict, the appellate panel held here that the asserted claims “would have been obvious over [the Nankai reference] as a matter of law.”

    I’m not sure how the panel could have avoided this holding. After the conclusion that the anticipation instructions were fatally incorrect, how else could the panel have shown that the error was harmless?

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