Ineos v. Berry: Anticipation by an Overlapping Range

By Jason Rantanen

Ineos USA LLC v. Berry Plastics Corporation (Fed. Cir. 2015) Download Opinion [2015 WL 1727013]
Panel: Dyk, Moore (author), O’Malley

It is bedrock patent law that while a species anticipates a genus, a genus does not necessarily anticipate a species.  That axiom does not mean, however, that a genus may not anticipate a species.  Here, the Federal Circuit affirms the district court’s grant of summary judgment that the prior art, which disclosed a broader range that overlapped with the range claimed in the patent-in-suit, anticipates.  The court’s opinion also involves an interesting shift of the burden of production, one that parties litigating this issue should take into consideration.

Ineos alleged that Berry Plastic infringes several claims of Patent No. 6,846,863 and Berry argued that the ‘863 patent is invalid.  The key part of the court’s analysis focuses on claim 1:

1. Composition comprising at least [1] 94.5% by weight of a polyethylene with a standard density of more than 940 kg/m3,

[2] 0.05 to 0.5% by weight of at least one saturated fatty acid amide represented by CH3(CH2)nCONH2 in which n ranges from 6 to 28[,]

[3] 0 to 0.15% by weight of a subsidiary lubricant selected from fatty acids, fatty acid esters, fatty acid salts, mono-unsaturated fatty acid amides, polyols containing at least 4 carbon atoms, monoor poly-alcohol monoethers, glycerol esters, paraffins,
polysiloxanes, fluoropolymers and mixtures thereof, and

[4] 0 to 5% by weight of one or more additives selected from antioxidants, antacids, UV stabilizers, colorants and antistatic agents.

(bracketed numbers inserted by the court).  The district court granted summary judgment for Berry on the basis that the asserted claims were anticipated by U.S. Patent No. 5,948,846.  (The court refers to this prior art reference as the ‘846 patent, which makes it unnecessarily confusing given its similarity to the abbreviation of the patent in suit, the ‘863 patent.  I’ll refer to the prior art as the ‘846 reference and the patent in suit as the ‘863 patent for clarity purposes.)  The pre-America Invents Act version of the anticipation statute (35 U.S.C. § 102) applied, but the difference is irrelevant for the issue on appeal.

Genus-Species Problem: The parties did not dispute that the ‘846 reference contained many of the elements elements of claim 1.  Of the disputed elements, limitation [2] involves the genus-species problem.  With respect to that limitation, the ‘846 reference disclosed steamramide, a compound within the relevant class of saturated fatty amino acid amides, in amounts from 0.1 to 5 parts  by weight, in contrast with the limitation 2 of the ‘863 patent, which claimed 0.05 to 0.5% by weight of at least one  of that type of saturated fatty acid amides.  The prior art reference and the claimed range thus overlapped.  (The opinion notes that “The parties agree for purposes of this appeal that measurements in “% by weight” are equivalent to measurements in “parts by weight.”)

“When a patent claims a range, as in this case, that range is anticipated by a
prior art reference if the reference discloses a point within the range. Titanium Metals Corp. v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985).”  Slip Op. at 6.  However, “If the prior art discloses its own range, rather than a specific point, then the prior art is only anticipatory if it describes the claimed range with sufficient specificity such that a reasonable fact finder could conclude that there is no reasonable difference in how the invention operates over the ranges. Atofina, 441 F.3d at 999; ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1345 (Fed. Cir. 2012).”  Id.  And since “the disclosure of a range…does not constitute a specific disclosure of the endpoints of that range,” id. citing Atofina, 441 F.3d at 1000, the fact that the ‘834 reference disclosed an endpoint within the range claimed by the ‘863 reference meant that the species-genus rule did not apply.

Burden-shifting or not? The Federal Circuit nonetheless affirmed the district court because it concluded that Ineos had no evidence that the range claimed by the ‘863 patent was critical to the operability of the invention.  In Atofina, for example, “the evidence showed that a person of ordinary skill in the art would have expected the synthesis reaction to operate differently, or not all, outside of the temperature range claimed in the patent-in-suit.”  Id. at 7.  Thus, it was the criticality of the range in the ‘863 patent relative to the ‘846 reference that mattered.

While Ineos did present evidence, the Federal Circuit disagreed that it was relevant. “even if true, this has nothing to do with the operability or functionality of the claimed invention. Ineos has not established any relationship between avoided cost and prevention of undesirable blemishes, and the claimed invention’s slip properties or elimination of odor and taste problems. Ineos does not suggest that the claimed invention’s slip properties or improved odor and taste properties would not have been expected based on the prior art.  Because Ineos failed to “raise a genuine issue of fact about whether the range recited in limitation 2 of the patent is critical to the invention,” the court concluded that limitation 2 was present in the ‘846 reference.

This raises an interesting issue of burden-shifting.  Because a patent is presumed valid, an accused infringer bears the burdens of persuasion and production.  By requiring that Ineos show how the ‘863 limitation was different from what was found in the prior art, the criticality rule shifts the burden of production, placing it on Ineos to prove that the ‘846 reference does not contain the disputed limitation.   This makes me think of the burden-shifting discussed in Mahurkar v. C.R. Bard, 79 F.3d 1572 (Fed. Cir. 1996.  In Mahurkar, there was no dispute that the prior art reference contained all the elements of the claimed invention; that shifted the burden of production to Dr. Mahurkar to come forward with evidence of prior invention even as the burden of persuasion always remained with the patent challenger.  Shifting the burden of production is noteworthy because it only occurs in the face of very strong evidence: evidence so strong that no reasonable jury could find otherwise.  Further complicating the analysis, the result here flows from what looks like a legal rule: because the claimed range overlapped with the range in the prior art, the consequence was that Ineos now needed to prove criticality.

But is this really burden shifting?  Or is it instead an articulation of the anticipation inquiry itself?  From a burden-shifting perspective, the rule would be that the burden of production shifts to the patent holder when the challenger brings forth a reference that contains a range that overlaps with the claimed range; that overlapping range is itself extremely strong evidence of anticipation.  From this perspective, this case is interesting because it is the evidentiary value of the overlapping range that is so high as to shift the burden.   From the perspective of articulating the anticipation inquiry, the rule would be that a reference that contains a range that overlaps with the claimed range anticipates unless the patent holder can prove criticality.  This perspective is interesting because it seemingly places the burden of a factual element of the anticipation inquiry squarely on the patent holder at the outset.

(Post revised on 4/20/2015)

51 thoughts on “Ineos v. Berry: Anticipation by an Overlapping Range

  1. 9

    The present case is a departure from controlling law, e.g., Atofina, and cannot be considered to be properly decided.

    Ranges are presumed critical.

    Overlapping prior art ranges do not anticipate — the issue is obviousness.

    The one exception is where the prior art range is entirely with the claimed range.

    En banc review of this case is in order to bring it into line with controlling authority.

    ClearValue is another case that was not properly decided.

    1. 9.1

      Jason writes:

      “But is this really burden shifting? Or is it instead an articulation of the anticipation inquiry itself? From a burden-shifting perspective, the rule would be that the burden of production shifts to the patent holder when the challenger brings forth a reference that contains a range that overlaps with the claimed range; that overlapping range is itself extremely strong evidence of anticipation. From this perspective, this case is interesting because it is the evidentiary value of the overlapping range that is so high as to shift the burden. From the perspective of articulating the anticipation inquiry, the rule would be that a reference that contains a range that overlaps with the claimed range anticipates unless the patent holder can prove criticality. This perspective is interesting because it seemingly places the burden of a factual element of the anticipation inquiry squarely on the patent holder at the outset.”

      Forcing the patent owner to prove criticality to avoid anticipation rather than the proponent of invalidity to prove that the claimed range did not define something different from the prior art is, actually, a departure from controlling law. Conduct the tests. Demonstrate that there is no difference. It cannot be that hard to do.

      It might work differently in the PTO where the PTO does not have the resources to prove that a claimed range actually defines something old and known. The presumption of non critically of a claimed range seem well suit for this environment.

      But having the patent owner prove criticality when his patent is presumed valid and the proof of non criticality is available to the proponent of invalidity seems wrong.

  2. 7

    What I find fascinating is that “stearamide” is mentioned in the prior art reference as one of many possible lubricants:

    “The lubricating agent of the composition according to the invention may be chosen from fatty acids (such as lauric, oleic or stearic acid), fatty acid esters, fatty acid salts (such as calcium or zinc stearate), fatty acid amides (such as oleamide, stearamide and docosenoamide) polyols (such as trimethylolpropane or pentaerythritol), mono- or poly-alcohol monoethers (such as polyethylene glycol monoether), glycerol esters (such as glycerol monostearate), waxes (such as polyolefins of low molecular mass), polysiloxanes (such as dimethylpolysiloxane) and fluoropolymers (such as polyvinylidene fluoride or polytetrafluoroethylene). Lubricating agents which give good results are glycerol esters, polysiloxanes and amides of saturated or unsaturated fatty acids containing from 12 to 35 carbon atoms, and mixtures thereof. Preference is given to glycerol esters and amides of unsaturated fatty acids containing from 15 to 30 carbon atoms, and in particular glycerol monostearate, 13-docosenoamide and mixtures thereof.”

    There is no specific mention of using stearamide, let alone in an amount and in a combination that would fall within the range of the claim in dispute: the subsequent paragraph says, “The composition according to the invention includes the lubricating agent in a total quantity of at least 0.1 part by weight per 100 parts by weight of polyolefin, in particular of at least 0.2 parts by weight, quantities of at least 0.4 parts by weight being the most common ones; the total quantity of lubricating agents does not exceed 5 parts by weight, more especially 2 parts by weight, maximum values of 1 part by weight per 100 parts by weight of polyolefin being recommended.” And the lone example uses a combination of glycerol monostearate and docosenoamide as lubricating agent.

    I can think of several jurisdictions where such a situation would not be deemed anticipatory.

    On the other hand, the one example in the reference recites a composition containing:

    100 parts by weight of polyethylene (containing approximately 3 mol % of butene) exhibiting an MI of 1.8 g/10 min and an SD of 952 kg/m3 ;

    0.05 parts by weight of antiacid agent (calcium stearate);

    0.025 parts by weight of antioxidant stearyl beta-(3,5-di-t-butyl-4-hydroxyphenyl)propionate!;

    0.04 parts by weight of antioxidant bis(2,4-di-t-butyl)pentaerythritol diphosphite!;

    0.25 parts by weight of lubricating agent (glycerol monostearate);

    0.2 parts by weight of lubricating agent (docosenoamide);

    0.2 party by weight of UV stabilizer (a polyester of succinic acid and of N-beta-hydroxyethyl-2,2,6,6-tetramethyl-4-hydroxypiperidine);

    0.1 part by weight of Abscents® 3000 zeolite produced by the company UOP (exhibiting an Si/Al molar ratio higher than 35, a mean pore diameter greater than 5.5 Å and a water adsorptivity lower than 10% by weight).

    Docosenoamide is a saturated fatty acid amide that meets claim limitation [2]. Thus this composition has 96.2 % polyethylene, 0.2 % fatty acid amine, 0.25% of a subsidiary lubricant (glycerol monostearate, a fatty acid ester) and a small but non-zero percent anti-oxidant. So the subsidiary lubricant fell outside the claimed range, but why wasn’t this example relied upon as a basis for an obviousness argument? I find that more convincing than the anticipation argument that relies on one member of a long list.

  3. 6

    This appears to be a case of misguided evidence. Judge Moore held that the district court erroneously found that the prior art ‘846 patent disclosed an individual point value. However, he also held that the error was harmless because Ineos failed to present any evidence of functional criticality of the claimed range, and instead presented inventor testimony that the Ineos range was determined in order to reduce manufacturing costs and cosmetic blemishes.

    If the non-overlapping values provided some improvement over the prior art, and the ‘846 patent in particular, that a person of ordinary skill would not have expected, then Ineos should have presented such evidence in order to avoid summary judgment.

    1. 6.1

      Steve, here is more on Judge Moore, link to alum.mit.edu

      “On September 8, 2006, four months after President George W. Bush nominated her to the U.S. Court of Appeals for the Federal Circuit in Washington, DC, she became the youngest person to join the federal judiciary. And in early March, Moore became the first sitting federal judge to give birth.”

      1. 6.1.1

        Maybe in between your correcting people on the gender of judges and your playing of computer games, you can find the time to watch The Paper Chase and note the astute comment at the hour and six minute mark, Ned.

        Let me know what that remark is, and why it is that I ask you to note it.

        Thanks.

          1. 6.1.1.1.1

            It’s like 3 bucks on youtube if you’re really wanting to watch ned. But it looks like it is the sux so I advise against it. Just watching one scene where the wussy protagonist throws up because he can’t answer a question is enough to put me off the whole movie.

            1. 6.1.1.1.1.1

              but it looks like it is the sux so I advise against it.

              LOL – a mind ever eager NOT to learn….

              Gee, maybe instead of learning about a valuable distinction between statutory and common law, we can have some “riveting” discussion of non sequitur computer games on this “America’s leading source of something other than patent law.”

              The silence (to the point I put on the table for discussion) screams volumes.

            2. 6.1.1.1.1.2

              It is the sux, in fact, although it has the bionic woman in it, before she got bionic.

            3. 6.1.1.1.1.3

              But it accurately reflects the internal tension of many law school students at a top law school.

              Of course, that’s before they discover that folks who get A’s in law school go on to be law professors, while folks who get B’s go on to be judges. Folks who get C’s become regular lawyers and make lots of money. (This was before salaries for judges and professors increased over the market value of regular attorneys.)

                1. Even more odd then Ned, that you have evaded the simple request I put to you to watch the movie and note the dialogue at the hour and six minute mark, as you would most likely enjoy the movie and refresh a rather important principle in the relation between statutory law and common law, an important understanding to be had in your view of the Supreme Court.

      2. 6.1.2

        Ned, next time, consider the possibility that there’s typo and that what was meant was “she” instead of “he”.

        1. 6.1.2.1

          Actually, Mr. A, this is not the first time I saw Steve referring to a CAFC judge as a he who was in fact a she. I was not trying to poke fun.

          It would also be nice if the CAFC web site showed pictures of the good judges, as well as a short bio.

  4. 5

    This raises an interesting issue of burden-shifting. Since a patent is presumed valid, an accused infringer has the burden to prove that it is not. By requiring that Ineos show how the ‘863 limitation was different from what was found in the prior art, the criticality rule seemingly flips the burden, placing it on Ineos to prove that the ‘846 reference does not contain the disputed limitation.

    Burden-shifting or not?

    There’s two burdens, there’s the ultimate burden of proving invalidity, which always remains upon the defendant, and there’s the burden of going forward, which shifts. The presumption of validity simply means that the defendant has to make a certain standard to make their prima facie case. Once the prima facie case is made the burden of going forward shifts to the patentee to rebut. The defendant showed something which on it’s face appeared to be the element, so the burden shifts to the patentee to show the differences are important (i.e. your apparent X is not X).

    It’s burden shifting, but not the burden that you appear to mean. The Federal Circuit isn’t doing anything wrong here. These two sentences are both true, but have little to do with each other: Since a patent is presumed valid, an accused infringer has the burden to prove that it is not. By requiring that Ineos show how the ‘863 limitation was different from what was found in the prior art, the criticality rule seemingly flips the burden,

    1. 5.1

      Exactly. All that is being done here is burden-shifting after the party with the ultimate burden of persuasion has put forth a prima facie case. That isn’t all that uncommon in other areas of the law (employment discrimination being the best example) and it doesn’t shift the ultimate burden of persuasion – it simply requires a party to rebut the prima facie case that has been made out with some relevant evidence. There’s definitely nothing wrong here, as you said – the accused infringer has proven that the patent falls within the scope of the prior art, at which point, the patentee has to rebut that case by proving how the change is critical to the invention such that there is no anticipation.

      1. 5.1.1

        Guest, define “prima facie” case.

        Take criminal law. The prosecution has to show the suspect did it and knew right from wrong.

        Here, why doesn’t the proponent have to show both overlapping ranges and that the claimed range is non critical for the operability purposes?

        1. 5.1.1.1

          This gets to the meat of the issue. Very nicely done, Ned.

          The important question is what is included in the presumption of validity–a presumption that attaches, because the granting of the patent is a legal fact.

          “Validity” includes, among other things, “not anticipated”–and this is an ENTIRE presumption, meaning that a valid patent is presumed to not be anticipated by any and all prior art in existence. Such prior art includes, of course, prior art that discloses overlapping ranges, as does the art in this case, which can invalidate on the basis of non-criticality.

          It appears that the presumption of validity must therefore necessarily include a presumption of criticality, otherwise the presumption of validity–of which the presumption of criticality is one necessary component–would be vitiated.

          It would be logical to conclude that a prima facie case of invalidity based on prior art disclosing overlapping ranges would require the adducing of evidence proving non-criticality to some standard of proof.

          This is important for obvious reasons. I think the court got it wrong.

        2. 5.1.1.2

          Here, why doesn’t the proponent have to show both overlapping ranges and that the claimed range is non critical for the operability purposes?

          For the same reason that once you show a prior public use the burden shifts to the patentee to prove the use was experimental Ned.

          1. 5.1.1.2.1

            However, it is also clear that Atofina had a presumption of criticality and that ClearValue introduced instead a presumption of non criticality.

            Under Federal Circuit law, Atofina should control. But, as we know, the Fed. Cir. itself develops two lines of authority depending on panel.

            We now have another example of this.

    2. 5.2

      I agree generally with what you say and will clarify in the post. It’s the burden of going forward/burden of production that flips, not the burden of persuasion. Both are initially borne by the patent challenger due to the presumption of validity, but only the burden of production can flip. However, my understanding is that the burden of production only flips when there is overwhelming evidence – in other words, evidence that is so strong that no reasonably jury could find otherwise. Just meeting the burden of production isn’t sufficient to flip it. In other words, it’s not like a tennis match where the parties must hit the ball back over the net or lose. There’s a big middle zone where most factual disputes fall. This case is interesting because it’s one of those rare instances where the evidence is sufficient to flip the burden to the patent holder. In addition, it looks like it’s driven by a legal rule: if the claimed range overlaps with what’s described in the prior art, the burden of production is now flips to the patent holder to come forward with evidence.

      1. 5.2.1

        Jason, evidence of what, though?

        There seems to be an operative presumption that the ranges are non critical. Thus, when the ranges overlap, the we don’t even get to 103.

        But, where did this presumption of non criticality come from? What can the specification include to rebut the presumption?

        1. 5.2.1.1

          All, check MPEP 2131.03(II). In Atofina, the prior art range of 100-500 was held not to disclose the claimed 330-450. There was no discussion of criticality — it was assume/presumed.

          “In ClearValue, the court reassessed Atofina and added facts.
          “ClearValue’s reliance on Atofina is misplaced. The patent at issue in Atofina claims a method of synthesizing difluoromethane at a temperature between 330-450 °C. U.S. patent no. 5,900,514 col.3 ll.61-62 (‘514 patent); see also Atofina, 441 F.3d at 993. The patent states that “only a narrow temperature range enables” the process to operate as claimed, and that problems occur when operating the reaction either below 330 °C or above 400 °C. ‘514 patent col.3 ll.23-29. For these reasons, the patent in Atofina taught that the claimed reaction “must be carried out at a temperature of between 330° C and 450° C,” and more preferably at a temperature 1345*1345 between 350-400 °C. Id. col.3 ll.61-65. During the prosecution of the Atofina patent, Atofina described this temperature range as “critical.” Atofina, J.A. 1304, 1312. Atofina also noted during prosecution that the patent’s comparative example 1 “shows that a temperature of 300°C does not allow” the synthesis reaction to operate as claimed. Atofina, J.A. 1306, 1311-12. By contrast, the prior art in Atofina disclosed a broad temperature range of 100-500 °C. Atofina, 441 F.3d at 999.

          In Atofina, we held that the “considerable difference between the claimed [temperature] range and the range in the prior art” precluded a finding of anticipation. 441 F.3d at 999. We explained that the prior art’s teaching of a broad genus (i.e., broad temperature range) does not disclose every species.”

          Of course, all of that is not found in the Court’s opinion in Atofina except for the very last part.

      2. 5.2.2

        With respect, this writing is garbled.

        For clarity: burden of proof = burden of going forward = burden of production = burden of persuasion

        I will use the word “burden” to include all the above.

        The initial burden on any issue is assigned by law to one of the parties, as a pragmatic way of beginning the resolution of a dispute. This is the basic procedural teleology of our law. The assignment of the initial burden to one party is often made by a legal presumption in favor of the opposing party.

        In any dispute about the validity of a granted patent, the initial burden is on the challenger to prove to some standard that the patent is invalid. In those cases where validity is challenged as anticipated, there must logically be a presumption that all the required conditions for novelty have been satisfied. When the evidence supporting the proof of anticipation includes an overlapping range, criticality of the claimed range is one of the conditions that is presumed to have been met.

        The burden is thereby initially placed on the challenger to prove to some standard that the claimed range is non-critical. This proof requires the production of evidence accompanied by cogent argument, and must meet some legal standard of proof before non-criticality, and therefore invalidity, is presumed to have been legally proved.

        The burden is then shifted to the patent-holder to rebut that presumption of non-criticality, and therefore invalidity–hence the term “rebuttal”. The object of rebuttal is to reduce the quality of the challenger’s proof of non-criticality, and therefore invalidity, below the threshold required to be attained by the challenger, thereby removing the presumption of its having been proved.

        If anything is bedrock in our legal system, it is this procedural teleology. That it should should not be understood, or not be properly effected, by the CAFC, is abominable.

        1. 5.2.2.1

          I disagree that all four of these things are the same. Wright & Miller discuss the difference extensively, describing the burden of proof and the burden of production as separate legal concepts. The burden of proof = the burden of persuasion; the burden of going forward = the burden of production; but the burden of proof =/= the burden of production. RandomGuy properly pointed out that I was not distinguishing between the two, which I should have been more careful about.

          1. 5.2.2.1.1

            I don’t accept this at face value, even in view of the authors cited.

            These terms “going forward” and “production” are unhelpful. I would appreciate you providing more clear definitions, but I will proceed simply: “production” as I understand it refers to the requirement to “produce” some evidence. Such production is only one component of the burden of proof. As you know, the purpose of evidence is to support the proof of a proposition.

            “Burden of production” is nothing more than a burden of proof that has an associated standard of proof of stating the proposition and producing the required quality of supporting evidence.

            I will try to illustrate the truth of the generalization in a different way, by first asking you whether you believe that a presumption of criticality is a necessary component of the presumption of validity, in those cases where anticipation and overlapping ranges are involved.

            1. 5.2.2.1.1.1

              Excellent discussion – Prof. Rantanen is correct about the items being legally different, but IBP is correct on the larger point (call it what you will), that the court here appears to have botched the burden (overall) switch, and his different way illustration is a solid point in his favor.

              Different burdens have different bursting points for engaging a switch, and the court may have “burst” too many bubbles at once.

            2. 5.2.2.1.1.2

              I agree with your overall point, but see this as depending on how the anticipation inquiry is framed when overlapping ranges are involved. Two possibilities:

              Articulation 1: A prior art reference anticipates if it contains a range that overlaps with the claimed range and the range claimed in the patent is not critical to the operation of the invention.

              Articulation 2: A prior art reference that contains a range that overlaps with the claimed range creates a presumption that the reference anticipates. That presumption may be rebutted by a showing that the claimed range is critical to the operation of the invention.

              In the former, the burden to produce evidence showing non-criticality would be on the patent challenger; in the latter, the patent challenger would have the burden of producing a prior art reference with the claimed range; that would shift the burden of production to the patent owner to produce evidence of criticality. I’m reading your point as saying that something that looks like the first articulation is right and the second articulation is wrong. If the first articulation is the correct one, then I’d agree with you that there’s a problem with the Federal Circuit’s approach to the burden of production. On the other hand, if the second articulation is the “right” anticipation inquiry, then the Federal Circuit correctly applied the burden of production-shifting analysis.

              On burden-shifting more generally, Wright & Miller has a detailed discussion of the different burdens in Section 5122. The difference between burden of persuasion and burden of production is also at the heart of Director, Office of Workers’ Compensation Programs v. Greenwich Collieries, 512 U.S. 267 (1994). That case explores the historical development of their meanings.

              1. 5.2.2.1.1.2.1

                Prof. Rantanen,

                The problem I see with your articulation 2: is that such a reading requires a submarine-like presumption of anticipation after grant (against the overall word of Congress), that lies dormant until (and if) some challenger in court speaks up and “automatically” claims that presumption.

                I just don’t see authority for such a mechanism in the statute, and have to wonder at the particularity of this device (arising out of any common law) surviving the plain words of the statute (and IBP’s position) that the grant of a patent grants a FULL presumption of validity.

                Not only does Aeticulation 2: seem tortured to arrive it, one must wonder at its authority in such a particularized setting.

                Overall, I tend to look at this as an evolution of unfortunate language. Instead of a genus-species analogy, I think the better evolution would have been to nullify the broader claim as inoperative over the span of the “genus” claim. As the case seems to indicate, the second narrower claim was what worked and the wider claim did not in fact work (at least for the second claimed invention). If we are truly talking overlap of both range and claimed invention, anticipation must only follow for the enabled and possessed range. The earlier wider range showing (later) to NOT work merely shows the early range not possessed or enabled. That first patent then is out as a reference – and a second question may then be asked as to if the true invention with the known smaller range that actually worked was in fact known, possessed and enabled for the proper range.

            3. 5.2.2.1.1.3

              Here’s a concise description of the two burdens that Craig Nard wrote as a footnote to Mahurkar v. Bard in his casebook:

              [The burden of persuasion–also known as the burden of proof–is an “obligation which rests on one of the parties to an action to persuade the trier of the facts, generally the jury, of the truth of a proposition which he has affirmatively asserted by the pleadings.” [citing Greenwhich Collieries]. The burden of production, a distinct burden, refers to “a party’s obligation to come forward with evidence to support its claim.” Id. at 272.]

              The burden of production can shift; the burden of persuasion never does. This ends up being a central issue in Mahurkar.

      3. 5.2.3

        However, my understanding is that the burden of production only flips when there is overwhelming evidence – in other words, evidence that is so strong that no reasonably jury could find otherwise.

        Let’s pretend it was a preponderance standard – the burden shifts after the proposition becomes 51% likely. Now, the proponent only makes the 51% standard, it’s going to be pretty easy to rebut, but the burden shifts at the prima facie standard, not at some “overwhelming” point.

        Just meeting the burden of production isn’t sufficient to flip it.

        Yes, it is.

        In other words, it’s not like a tennis match where the parties must hit the ball back over the net or lose.

        It’s precisely like that, and with an invalidity defense the defendant serves.

        You’re confusing not knowing when you’ve made the prima facie case with what the results are once you’ve made it. Nobody can tell you what a reasonable doubt is, but if the prosecution rests and there are none, it’s incumbent on the defendant to create one right then, without the prosecution doing more. Just because it’s not clear when there are reasonable doubts doesn’t mean there’s some super-standard.

        1. 5.2.3.1

          Simply meeting the burden of production is not enough to shift it. Both Wright & Miller and the Evidence casebook in front of me are very clear on this. Here’s what the casebook says:

          “Success in carrying the burden of production does not necessarily shift that burden to the adversary. If Agnes offers sufficient evidence to support a finding that Burt was negligent, the trier of fact ordinarily remains free to reject her proof. Hence the burden of production does not pass to Burt, and he might win even if he produces no counterproof, though the risk that the trier will find against him may be higher if he stands silent rather than offering credible counterproof.

          If the party bearing the burden of production carries it very well, however, the burden does shift to her opponent. That means he loses automatically if he does not offer rebuttal evidence. Jurisdictions vary in defining proof that shifts the burden of production to the opponent. As a convenient shorthand, we use the term ‘cogent and compelling,’ but remember that the concept is not uniform.”

          Christopher B. Mueller & Laird C. Kirkpatrick, Evidence Under the Rules, 4th Ed., 769 (Aspen 2000).

          Wright & Miller has a similar but longer discussion; the bottom line is that there is a zone between evidence sufficient to satisfy the burden of production and evidence strong enough to shift the burden of production. That treatise does observe that “Some writers refer to the evidence needed to reach this level as a ‘prima facie case'” but comments that this is “an unhappy usage since as we have seen the same phrase is often used to refer to the quantum evidence necessary to satisfy the burden of production.”

          1. 5.2.3.1.1

            Jason, I will soon make a post to this thread that you may find interesting. Please check back soon.

  5. 4

    “Ineos had no evidence that the range claimed by the ‘863 patent was critical to the operability of the invention”

    I’m not sure how that is applicable according to the law of anticipation.

    “Thus, it was the criticality of the range in the ‘863 patent relative to the ‘846 reference that mattered.”

    Dangerously close to secondary factors applying to anticipation. I see what they’re talking about, but frankly I have to disagree about their little “ranges don’t disclose the endpoints” ‘rule’.

    1. 4.1

      It looks like the Feds have gone off the deep end one more, confusing 102/103.

      A species of a genus is patentable if it has unexpected properties. Ditto small range of a larger, as in this case.

      But now the Feds move the unexpected results discussion from 103 to 102.

      Bizarre.

      1. 4.1.1

        Not following you here Ned.

        I think this less a 102/103 thing and more a bit of inapt language with genus/species.

        After all, if the subset within the larger set behaves differently (surprisingly), do you really have the genus you thought you previously had? Isn’t there still a requirement that everything in a genus is approximately the same? Aren’t you really just showing that what was once thought to be a genus was mistakenly thought so, since now you have something in the (initial) range that acts surprisingly different? Different enough in fact to be considered patent worthy on its own?

        1. 4.1.1.1

          anon, all good points.

          But really, if the prior art range is entirely within the claimed range, it anticipates just like a species of a genus. It may be the species has unexpected beneficial properties, but so what. The genus claim cannot withdraw from the public the species, and that is what the genus claim would do.

          In contrast, if the claim is to a species in a genus, the species may nevertheless be patentable if unexpected properties exist.

          Now if the claims overlap and the prior art range does not describe a species within the claimed genus with any specificity, it is hard to see anticipation. They are simply different ranges.

          In ClearValue, the prior art disclosed a large range. The claim was to a narrower range within it. Under controlling law, such a large range could not anticipate the claimed range for the reasons stated. The question was rather one of obviousness. But to show that the claimed range was non obvious, I would think the presumption of validity would have required a showing that the claimed range did not have unexpected advantages/criticality.

          The present case extends the heresy of ClearValue, conflating/confusing 102/103 and the burdens of proof. En banc review is in order.

          1. 4.1.1.1.1

            You have your genus and species flip-flopped.

            The genus was there first, and it is not the prior art range totally within the (new) claimed range, but the opposite.

            All you are doing is repeating yourself and ignoring the “all good points” that you just said that I made. The “controlling law” is the law that I mentioned appears to be inapt in its use of the terms genus and species, since by definition (hence the “logic” of the court) all of the species are really alike within the genus – and that is being shown not to be the case.

            1. 4.1.1.1.1.1

              I’m sorry anon, but we appear not to be communicating once more.

              The cases clearly held the the ONLY anticipation of a patented range by a prior art range occurs WHEN the prior art range lies entirely within the claimed range.

              See, Atofina.

  6. 3

    Speaking of “burden shifting,” one of the issues in MCM Portfolio LLC v. Hewlett-Packard, No. 15-1091, is whether the burden is on the patent owner to prove patentability once trial is instituted on the theory that the institution decision determines that there is a prima facie case.

    1. 3.1

      Now now now Ned – that’s clearly a bit different, eh? Didn’t you lose the presumption at the institution point?

      Now it may be a different matter (but one you did not argue), that you suffered a taking of one of the sticks in your bundle of property rights at the moment of institution.

      1. 3.1.1

        anon, consider a preliminary hearing. The judge decides whether there is probable cause. Does this shift the burden to the defendant to prove innocence?

        Consider the preliminary injunction. The court finds likelihood of success. Does this shift the burden to the defendant to prove non infringement?

        1. 3.1.1.1

          Ned,

          Please consider kindly returning to the actual point I brought up and not try to cloud the issue with other legal situations not pertinent to the point of difference in your case,

          Thank you ever so much.

  7. 2

    If the range of .05 to 0.5% is not critical, why didn’t Barry use 0.6% and be done with it? Anything in the case to explain?

    1. 2.1

      Troubled, just to be clear, the ranges of the compound may have critical — but not for functional reasons. The testimony was that the ranges had to do with lowering manufacturing costs.

      Since the claim was to a composition to reduce odors, not to reduce manufacturing costs, it seems that the claim element could have said any known lubricant of the type in a known range.

      Regardless, the ranges claimed were not critical for operability purposes and could not distinguish the prior art that disclosed overlapping ranges.

  8. 1

    I’m glad I am not the only one that found this opinion difficult to follow because of the references to “the ‘863 patent” and “the ‘846 patent.”

    1. 1.1

      Drives me right up the wall too. It’s probably why most examiners reject claims by naming the references by inventor or author rather than calling them by number. Why the courts can’t do this is beyond me.

      1. 1.1.1

        …especially when you consider that courts refer to earlier court decisions by name, introducing the docket, West or Lexis number only upon first mention of the decision. It’s only with patents that they say “the ‘XYZ patent”.

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