Anticipation Not "the Epitome of Obviousness"

In Cohesive Tech. Inc. v. Waters Corp.. (October 7, 2008), the Federal Circuit held the district court erred by granting judgment as a matter of law on the issue of anticipation before the jury was allowed to consider the claim.

The district court did not make a finding that no reasonable jury could conclude that the asserted references anticipated. Rather, the district court itself characterized the anticipation case as “iffy.” Specifically, after reviewing Waters’s evidence and argument on anticipation and obviousness, the district court concluded that “the contentions that the defendant is making [are] best captured by obviousness,” rather than anticipation. The district court expressly stated that it did not understand, as a matter of “strategic judgment,” why a defendant “would want [a] charge on anticipation when they get one on obviousness.”

According to the opinion by Circuit Judge Linn,

Despite theoften quoted maxim that anticipation is the “epitome of obviousness,” In re Kalm, 378 F.2d 959, 962 (CCPA 1967), novelty under 35 U.S.C. § 102 and nonobviousness under 35 U.S.C. § 103 are separate conditions of patentability and therefore separate defenses available in an infringement action. See 35 U.S.C. § 282 (2000). . . .

While it is commonly understood that prior art references that anticipate a claim
will usually render that claim obvious, it is not necessarily true that a verdict of
nonobviousness forecloses anticipation. The tests for anticipation and obviousness are different. See, e.g., Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1098, 1107-08 (Fed.Cir. 2003) (“Succinctly put, the various unenforceability and invalidity defenses that maybe raised by a defendant—inequitable conduct, the several forms of anticipation and loss of right under § 102, and obviousness under §
103—require different elements of proof.”). . . .

Moreover, obviousness requires analysis of secondary considerations of nonobviousness, while secondary considerations are not an element of a claim of anticipation. Compare King Instrument Corp. v. Otari Corp., 767 F.2d 853, 857 (Fed. Cir. 1985) (“In a § 103 obviousness analysis, Graham [v. John Deere Co., 383 U.S. 1 (1966)] requires that the trier assess certain underlying facts: (1) the scope and content of the prior art, (2) the level of ordinary skill in the art, (3) the differences between the claimed invention and the priorart, and (4) the so-called ‘secondary considerations.’”), with Hakim v. Cannon AventGroup, PLC, 479 F.3d 1313, 1319 (Fed. Cir. 2007) (“‘Anticipation’ means that theclaimed invention was previously known, and that all of the elements and limitations ofthe claim are described in a single prior art reference.”). And although anticipation canbe proven inherently, proof of inherent anticipation is not the same as proof ofobviousness. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir.2005) (“[A] prior art reference without express reference to a claim limitation may nonetheless anticipate by inherency.”); Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002) (“[O]bviousness is not inherent anticipation.”). Thus, “it does not follow that every technically anticipated invention would also have been obvious.” In re Fracalossi, 681 F.2d 792, 796 (CCPA 1982) (Miller, J., concurring).2

FOOTNOTE 2: The dissent claims categorically that “every anticipated claim is obvious.”Post at 3. But this is not correct. Consider, for example, a claim directed toward aparticular alloy of metal. The claimed metal alloy may have all the hallmarks of a nonobvious invention—there was a long felt but resolved need for an alloy with the properties of the claimed alloy, others may have tried and failed to produce such an alloy, and, once disclosed, the claimed alloy may have received high praise and seen commercial success. Nevertheless, there may be a centuries-old alchemy textbook that, while not describing any metal alloys, describes a method that, if practiced precisely, actually produces the claimed alloy. While the prior art alchemy textbook inherently anticipates the claim under § 102, the claim may not be said to be obvious under § 103.

This is precisely why our precedent has rejected reliance on the “legal homily”
that “anticipation is the epitome of obviousness.” Mendenhall, 5 F.3d at 1563. We have expressly upheld a jury verdict of anticipation under § 102(b), even when the same jury found the patent nonobvious under § 103. Id. Though the dissent argues that a “long line of precedent” supports its argument that every anticipated claim is obvious, not a single one of the cases it cites actually holds that the “epitome” maxim precludes a jury from finding a patent invalid under § 102, simply because it is nonobvious under § 103. See Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1357 n.21 (Fed. Cir. 1998)(remarking in footnote that trial court did not err in allowing parties to present argument on anticipation during trial on obviousness); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (prefacing quoted discussion of relationship between anticipation and obviousness with “it is never necessary to so hold”); Fracalossi, 6 F.2d at 794 (addressing whether specific anticipation rejection was sufficient evidentiary support for obviousness rejection); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974)(affirming § 103 rejection when § 102 rejection would also have been appropriate); In re Kalm, 378 F.2d 959, 963(CCPA 1967) (reversing anticipation rejection). We cannot conclude—as the dissent’s reasoning implies—that the novelty requirement of § 102 is mere surplussage, subsumed by the nonobviousness requirement of § 103.