Intellectual Property Law

Anticipation no longer the epitome of obviousness? Claims can be anticipated but nonobvious

By McKee, Voorhees & Sease, P.L.C.

The Federal Circuit recently affirmed a district court's finding of non-willful infringement for one product, reversed its claim construction and related finding of noninfringement of a second product, and vacated its judgment as a matter of law on the issue of anticipation.  The district court, at the charge conference near the end of the jury trial in this case, decided not to instruct the jury on anticipation, holding the defendant's anticipation argument was "iffy," and that the arguments were "best captured by obviousness."

The Federal Circuit held this determination was in error.  As stated by the court, "[a]n 'iffy' anticipation case, however, does not foreclose a favorable verdict."  Further, the court noted it is the party's right to make the strategic decision about which defenses to present to the jury, so long as there is sufficient evidence to generate a verdict in the party's favor.  The court rejected the contention that every anticipated claim is also obvious, and as a result of the lack of complete overlap between the defenses, remanded the case for a determination of whether the claims were anticipated.

Judge Mayer dissented on this issue.  In his opinion, the majority's conclusion regarding the overlap of anticipation and obviousness is incorrect.  He attacked the majority's citations as "unsupportable," observing the majority was "unable to cite a case remanding to the district court for consideration of anticipation, while at the same time sustaining a determination that the claims at issue are not obvious."

More detail of Cohesive Techs., Inc. v. Waters Corp. after the jump.

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Full post as published by FileWrapper on October 16, 2008 (boomark / email).