AUSTIN PATENT ATTORNEY OVERVIEW:
This is an interesting case that holds that a claimed “range” limitation may not be met even if cited art discloses a wider range. The full opinion can be found here. http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1091.pdf
OSRAM SYLVANIA appealed the district courts grant of summary judgment of invalidity of the independent claims in U.S. Patent No. 5,834,905. For your reference, a representative independent claim and figure are shown below.
- An electric lamp assembly comprising:
an electrodeless lamp including a closed-loop, tubular lamp envelope enclosing mercury vapor and a buffer gas at a pressure less than 0.5 torr;
a transformer core disposed so as to surround a portion of said closed-loop lamp envelope;
an input winding disposed on said transformer core; and
a radio frequency power source coupled to said input winding for supplying sufficient radio frequency energy to said mercury vapor and said buffer gas to produce in said lamp envelope a discharge having a discharge current equal to or greater than about 2 amperes.
OSRAMS patented technology is directed towards closed-loop tubular electrodeless lamps that uses a low pressure (less than .5 torr), high intensity light source to produce more light than conventional lamps. Within the background of the invention section of the patent, the ‘905 patent cited a patent Anderson 3,987,334. The ‘334 patent discloses an inner surface of a tube is coated with phosphor that emits visible light when irradiated by photons emitted by the excited mercury gas items with a buffer gas pressure of approximately 1torr or less.
The district court ruled that the ‘905 anticipated OSRAMS patent because the ‘334 patent disclosed a buffer gas pressure range that completely encompasses that disclosed in the ‘905 patent. OSRAM additionally argued that the ‘334 patent did not disclose the shape of the ‘994 patent. In response, the district court held that given the virtually interchangeability between different topologies and the fact that the consequences of increasing radio frequency discharge was well known in the prior art, a person or ordinary skill in the art would recognize the increasing radio frequency discharge would improve other topologies of lamps. However, ATTI failed to submit proposed findings of facts supporting this conclusion.
On appeal, OSRAM argued that the district court erred in granting summary judgment that the ‘905 patent is anticipated/obvious in view of the ‘334 patent in combination with Wharmby. Specifically, OSRAM argued that although the ‘334 patent disclosed a range of less than 1 torr that encompasses the claimed less than .5 limitation due to secondary considerations and the shape of the lamp was important.
The court of appeals, stated that an earlier disclosed genus (range) may anticipate a later species (range), but this inquiry includes a factual component. In prior cases, such as Atofina, 441 F.3d
at 999 and In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994), have held that a prior art’s teching of a broad genus does not necessarily disclose every species within that genus. Under the circumstances in Atofina, the court held that “no reasonable fact finder could conclude that the prior art describes that claimed range with sufficient specificity to anticipate this limitation of the claim.” The court of appeals further stated that the evidence presented in this present case reveals clear disputed material issues of fact and mandates reversal of the district court’s finding of anticipation.
The court reasoned, that a trial may reveal minimal difference between the ‘334 patent prior range and the claimed range in the ‘905 patent or that one or ordinary skill would interpret “approximately 1torr or less” as clearly disclosing less than .5 torr as an acceptable choice within range, but those questions are not questions of law. The court further reasoned that because AITI did not make any arguments rebutting OSRAM’s testimony of the importance of the claimed pressure, that mere conclusiory statements do not meet the required standard of law. The court further reasoned that the trial court must explain how it reached the conclusions it does, particularly where there is evidence in the record supporting the non-movant’s position. More so, the court stated that factual disputes are still pending concerning whether one of ordinary skill in the art would have been motivated to combine the ‘334 patent with the shape disclosed with Wharmby or operate the ‘334 patent at conditions as disclosed in Wharmby
PATENT ATTORNEY TAKEAWAYS:
1) This case is also consstent with section 2131.03 of the MPEP (http://www.uspto.gov/web/offices/pac/mpep/s2131.html) that is directed towards the anticipation of ranges. Specifically, the MPEP states:
When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with “sufficient specificity to constitute an anticipation under the statute.” What constitutes a “sufficient specificity” is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broad range, depending on the other facts of the case, it may be reasonable to conclude that the narrow range is not disclosed with “sufficient specificity” to constitute an anticipation of the claims. See, e.g., Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006) wherein the court held that a reference temperature range of 100-500 degrees C did not describe the claimed range of 330-450 degrees C with sufficient specificity to be anticipatory. Further, while there was a slight overlap between the reference’s preferred range (150-350 degrees C) and the claimed range, that overlap was not sufficient for anticipation.
As such, if an Examiner claims that a cited art reference meets your claims because of a taught range. It is important to see if the cited range can actually be used in the manner of your invention. Therefore, this is a classic patent case where it may be good for a patent attorney to ask the inventors for help in the prosecution stages to at least get the range arguments on the record. However, I feel like a patent Examiner will not adhere to these standards in open prosecution, but these arguments may work on appeal, which would cost significantly less than a trial.
2) When claiming a specific range that you know is encompassed by the cited art, it may be a good idea to in the patent state why the range stated in the prior art is too broad to work with your claimed invention.