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  94.5% by weight of a polyethylene with a standard density of more than 940 kg/m3,
 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[,]
 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
 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  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)