Cohesive Technologies, Inc. v. Waters Corp.

United States Court of Appeals for the Federal Circuit
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COHESIVE TECHNOLOGIES, INC.,
Plaintiff-Appellant,
v.
WATERS CORPORATION,
Defendant-Cross Appellant.
Robert H. Stier, Jr., Pierce Atwood LLP, of Portland, Maine, argued for plaintiff-
appellant. With him on the brief were Michael J. Sullivan and Sean L. Sweeney.
Wiilliam A. Scofield, Jr., Lahive & Cockfield, LLP, of Boston, Massachusetts,
argued for defendant-cross appellant. With him on the brief was Sibley P. Reppert.
Appealed from: United States District Court for the District of Massachusetts
Judge Douglas P. Woodlock
United States Court of Appeals for the Federal Circuit
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COHESIVE TECHNOLOGIES, INC.,
Plaintiff-Appellant,
v.
WATERS CORPORATION,
Defendant-Cross Appellant.
Appeal from the United States District Court for the District of Massachusetts in case
nos. 98-CV-12308, 99-CV-11528, and 01-CV-12307, Judge Douglas P. Woodlock.
__________________________
DECIDED: October 7, 2008
__________________________
Before MAYER, LINN, and PROST, Circuit Judges.
Opinion for the court filed by Circuit Judge LINN. Dissenting opinion filed by Circuit
Judge MAYER.
LINN, Circuit Judge.
This is a patent infringement case. Cohesive Technologies, Inc. (“Cohesive”)
brought three related actions accusing Waters Corporation (“Waters”) of infringing U.S.
Patent No. 5,772,874 (the “’874 patent”) and U.S. Patent No. 5,919,368 (the “’368
patent”). In the first action, No. 98-CV-12308, Cohesive accused Waters’s 30 μm Oasis
high-performance liquid chromatography (“HPLC”) columns (the “30 μm columns”) of
infringing the ’874 patent. See Cohesive Techs., Inc. v. Waters Corp., 526 F. Supp. 2d
84, 88 (D. Mass. 2007). In the second action, No. 99-CV-11528, Cohesive accused the
same 30 μm columns of infringing the ’368 patent. See id. In the third action, No. 01-
CV-12307, Cohesive accused Waters’s 25 μm Oasis HPLC columns (the “25 μm
columns”) of infringing both patents. See id.A jury in the first action found that the ’874 patent was not invalid, and that the
30 μm columns infringed the ’874 patent. See id. The district court then held a
combined bench trial and hearing on damages, willful infringement, and inequitable
conduct in the first action, and on preliminary injunction and summary judgment motions
in the second and third actions. The district court entered judgment in favor of Cohesive
in the first action, granted Cohesive’s motion for summary judgment of infringement and
no invalidity in the second action, and awarded damages. Id. at 126. However, in the
third action, the district court granted Waters’s motion for summary judgment of
noninfringement, concluding that the 25 μm products did not infringe either patent. Id.Both parties appeal numerous aspects of the judgment.
As to the 30 μm products, we conclude that the district court correctly construed
the term “rigid” and properly denied Waters’s motion for judgment of noninfringement as
a matter of law. We further conclude that the district court committed no clear error in
concluding that Waters failed to prove the deceptive intent necessary to sustain its claim
of inequitable conduct. However, we agree with Waters that the district court was
wrong to enter judgment as a matter of law on anticipation without submitting the issue
to the jury.
As to the 25 μm products, we disagree with the district court’s construction of
“greater than about 30 μm.” Under the correct construction, Waters was not entitled to
summary judgment of no literal infringement. The district court was, however, correct to
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grant Waters’s motion for summary judgment of no infringement under the doctrine of
equivalents, though not for the reasons that the district court articulated.
As to damages, because the district court incorrectly considered the 25 μm
product as an acceptable noninfringing substitute, and because it is unclear whether the
other available product, standing alone, would have been an acceptable substitute, we
vacate the district court’s judgment that Cohesive was not entitled to lost profits and
remand for reconsideration by the district court in the first instance. We find no clear
error in the district court’s conclusion that Waters’s infringement was not willful. Finally,
we decline Cohesive’s request to assign this matter to a different district court judge on
remand. Accordingly, we affirm-in-part, reverse-in-part, vacate-in-part, and remand.
I. BACKGROUND
The ’874 and ’368 patents both relate to HPLC. HPLC is a process for
separating, identifying, and measuring compounds contained in a liquid.
Pharmaceutical companies often use HPLC in drug testing to separate absorbed
compounds from blood. In HPLC, a liquid containing the compounds to be measured is
passed under pressure through a packed column of chromatographically active
particles. See ’874 patent col.1 ll.24-28. Because the different molecular components
in the liquid have different affinities for the particles in the column, each component is
extracted from the liquid at a different rate and, therefore, at a different location along
the column. See id. col.1 ll.28-32. The effectiveness of HPLC at separating molecules
from the liquid depends on several variables, including the size and structure of the
particles in the column. See id. col.2 ll.3-19.
The ’368 patent issued from a divisional application of the application that
resulted in the ’874 patent, and the patents share the same specification. Cohesive
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asserted claims 1, 3, 7, 9, 15, 16, and 20 of the ’874 patent and claims 1, 3, and 8 of the
’368 patent. See Cohesive, 526 F. Supp. 2d at 107. Claim 1 of the ’874 patent recites:
Chromatography apparatus comprising, in combination,
a chromatographic body formed as a substantially uniformly
distributed multiplicity of rigid, solid, porous particles with
chromatographically active surfaces, said particles having average
diameters of greater than about 30 μm, the interstitial volume
between said particles being not less than about 45% of the total
volume of said column; and
means for loading said surfaces with at least one solute that is
reactive with said surfaces, by flowing a liquid mixture containing
said solute through said body at a velocity sufficient to induce flow
of said mixture within at least a substantial portion of said interstitial
volume at a reduced velocity greater than about 5,000.
’874 patent col.20 ll.20-34. Each of the asserted claims requires essentially the same
two key limitations at issue in this appeal: particles that are “rigid” and have average
diameters “greater than about 30 μm.” See id. col.20 ll.38-42, 54-56, 60-65 (claims 3, 7,
and 9 depending from claim 1); id. col.21 l.36-col.22 l.8 (claim 15 requiring “rigid solid
particles” having “substantially uniform mean diameters of not less than about 30 μm”);
id. col.22 ll.9-21 (claim 16 requiring “rigid, solid, porous particles” with “substantially
uniform average diameters in the range between about 30 to about 500 μm”); id. col.22
ll.33-35 (claim 20 depending from claim 16); ’368 patent col.20 ll.14-28 (claim 1
requiring step of “packing . . . rigid, solid, porous particles” with “average diameters of
not less than about 30 μm”); id. col.20 ll.32-36, 53-56 (claims 3 and 8 depending from
claim 1). 1
1
Although “greater than” and “between” 30 μm and a larger number would
not encompass exactly 30 μm, while “not less than” 30 μm would, this distinction is not
relevant for our analysis in this case.
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Cohesive brought its first infringement action against Waters in 1998, alleging
that the 30 μm columns infringed the ’874 patent. In 1999, while the first action was
pending, the ’368 patent issued. Cohesive then filed a second infringement action
against Waters, asserting that use of the same 30 μm columns infringed the method
claims of the ’368 patent.
In 2001, the district court held a sixteen-day jury trial in the first action. During
trial, Waters alleged and presented evidence that the claims of the ’874 patent were
anticipated by seven separate prior art references. Waters also alleged that the claims
of the ’874 patent were obvious, both in light of each reference independently, and in
light of various combinations of the references. Over Waters’s objection, the district
court chose not to submit anticipation to the jury, because Waters had alleged
obviousness, and the district court “[thought] of anticipation as being a subset of
obviousness.” J.A. 5710. Accordingly, the district court sua sponte entered a directed
verdict in favor of Cohesive, finding that the ’874 patent was not anticipated. Cohesive,
526 F. Supp. 2d at 89.
The jury returned a verdict finding that the 30 μm columns infringed the ’874
patent and that the ’874 patent was not obvious. By the time of the verdict, Waters had
stopped selling the 30 μm columns, and instead was selling a replacement product with
smaller particles—the 25 μm columns. Cohesive then filed its third infringement action,
alleging that the replacement 25 μm columns infringed both the ’874 and the ’368
patents. Cohesive moved for a preliminary injunction against the 25 μm columns.
The district court held a combined bench trial and hearing in 2002. At that
proceeding, the court heard evidence and argument on the issues of inequitable
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conduct, willful infringement, and damages in the first case. Id. at 88. The district court
also considered the parties’ cross-motions for summary judgment in the second case,
concerning whether those same 30 μm columns infringed the ’368 patent. Id. at 89.
Additionally, at the request of the district court, Cohesive presented its motion for a
preliminary injunction in the third case (concerning the replacement 25 μm columns) in
the form of a motion for summary judgment, and Waters made an oral cross-motion for
summary judgment of noninfringement at the hearing.
Five years later, the district court entered a memorandum and order disposing of
all issues in all three cases. In the first case, concerning infringement of the ’874 patent
by the 30 μm columns, the district court: (1) denied Waters’s post-trial motions for
judgment as a matter of law on infringement and invalidity, id. at 95; (2) found that
Waters had failed to meet its burden to prove inequitable conduct, id. at 103; and
(3) found that Waters’s infringement was not willful, id. at 106-07. In the second case,
concerning infringement of the ’368 patent by the 30 μm columns, on cross-motions for
summary judgment, the district court: (1) granted Cohesive’s motion for summary
judgment of direct and indirect infringement, id. at 112; and (2) granted Cohesive’s
motion for summary judgment of no invalidity, id. at 113. In the third case, concerning
infringement of both patents by the 25 μm columns, the district court granted summary
judgment of noninfringement in favor of Waters, finding that the 25 μm columns did not
meet, either literally or by equivalents, the claim limitations requiring particle size greater
than “about 30 μm.” Id. at 116. Finally, as to damages, the district court held that
Cohesive was not entitled to lost profits as a matter of law, id. at 121, and ordered
payment of a reasonable royalty on sales of the 30 μm columns, id. at 125.
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Cohesive timely appealed on the issues of: (1) claim construction of the term
“about 30 μm”; (2) summary judgment of noninfringement by the 25 μm columns; (3)
lost profits; (4) willful infringement; and (5) enhanced damages. Cohesive also
requested that the case be assigned to a different district judge on remand. Waters
timely cross-appealed on the issues of: (1) claim construction of the term “rigid”; (2)
denial of judgment as a matter of law of noninfringement by the 30 μm columns; (3)
grant of judgment as a matter of law on anticipation; and (4) inequitable conduct. We
have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
II. DISCUSSION
A. The 30 μm Columns
We first address whether the district court properly concluded that the ’874 patent
was infringed by the 30 μm columns, not invalid, and not unenforceable.
1. Claim Construction
Waters challenges the district court’s construction of the term “rigid,” which is
common to all asserted claims. The district court construed “rigid” to mean “an object’s
capacity to maintain substantially zero changes in density and volume under packing
pressure of at least about 5000 psi and as a consequence substantially to resist plastic
deformation under such pressure.” Cohesive, 526 F. Supp. 2d at 89. The district court
construed “rigid” so that it did not “exclude polymeric particles (as opposed to the
monomeric particles referred to in the preferred embodiment of the ’874 patent).” Id.Waters argues that the failure to exclude polymeric particles in the construction of “rigid”
was error, because, during prosecution, Cohesive disclaimed polymeric particles as not
being rigid.
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Claim construction is an issue of law, Markman v. Westview Instruments, Inc., 52
F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), that we review de novo, Cybor Corp. v.
FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). We determine the
ordinary and customary meaning of undefined claim terms as understood by a person of
ordinary skill in the art at the time of the invention, using the methodology in Phillips v.
AWH Corp., 415 F.3d 1303, 1312-19 (Fed. Cir. 2005) (en banc). “[T]he court looks to
those sources available to the public that show what a person of skill in the art would
have understood disputed claim language to mean. Those sources include the words of
the claims themselves, the remainder of the specification, the prosecution history, and
extrinsic evidence concerning relevant scientific principles, the meaning of technical
terms, and the state of the art.” Id. at 1314 (internal quotation marks and citations
omitted).
Here, there is no argument that the ordinary meaning of the word “rigid” itself
requires that a particle be monomeric, rather than polymeric. Likewise, although the
embodiments of the invention described in the specification all disclose only monomeric
particles, see, e.g., ’874 patent col.13 ll.29-32, col.14 l.58, col.18, l.21, those
embodiments cannot limit the otherwise broad claim term “rigid.” See Phillips, 415 F.3d
at 1323 (“[A]lthough the specification often describes very specific embodiments of the
invention, we have repeatedly warned against confining the claims to those
embodiments.”).
Waters argues, however, that Cohesive disclaimed polymeric particles during
prosecution. The examiner rejected the claims of the ’874 patent as anticipated by or
obvious over U.S. Patent No. 5,019,270, issued to Noubar B. Afeyan et al. (“Afeyan”).
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In response, Cohesive argued that, unlike Afeyan, the claims required “truly rigid”
particles. J.A. 418. Additionally, Cohesive submitted to the examiner the declaration of
chromatography expert George Guiochon, pursuant to 35 C.F.R. § 1.132. In his
declaration, Guiochon distinguished between the particles in the claimed invention and
the particles described in Afeyan:
While Afeyan et al mention that they desire their particles to be rigid
solids, such comment can be read best in the light of their teachings . . .
that mention only polymeric materials such as divinylbenzene and the like.
Such polymeric material cannot be expected to maintain the requisite
rigidity to withstand the pressure required to obtain a reduced velocity of
5000 or higher through a chromatographic column with particles of the
diameter disclosed by Afeyan et al, so cannot be considered to be a
teaching of rigid solid particles within the meaning of the claims . . . .
J.A. 430. Waters contends that the Guiochon declaration resulted in a disclaimer of
“polymeric material” as not “rigid” within the meaning of the claims.
“[A] patentee may limit the meaning of a claim term by making a clear and
unmistakable disavowal of scope during prosecution.” Computer Docking Station Corp.
v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008) (quoting Purdue Pharma L.P. v. Endo
Pharms., Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006)). In this case, the Guiochon
declaration does not distinguish the Afeyan particles because they are polymeric;
instead, it distinguishes the particular polymeric materials taught in Afeyan—
“divinylbenzene and the like”—because “[s]uch polymeric materials” are not sufficiently
rigid when exposed to the relevant level of pressure. The Guiochon declaration may,
therefore, be a clear and unmistakable disavowal of the particular particles used in
Afeyan, but it is not a disavowal of all polymeric particles.
Waters argues further that, even if the prosecution history cannot be read to have
disclaimed all polymeric particles, it nonetheless disclaimed the particular type of
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polymeric particles used in the accused 30 μm columns. We disagree. The polymeric
particles disclaimed in the Guiochon declaration were “divinylbenzene and the like.”
J.A. 430. The Afeyan patent that the Guiochon declaration distinguishes describes the
composition of the particles as follows:
The particles are fabricated from polymers such as, for example, styrene
cross-linked with divinylbenzene, or various related copolymers including
such materials as p-bromostyrene, p-styryldiphenylphosphine, p-amino
sytrene, vinyl chlorides, and various acrylates and methacrylates,
preferably designed to be heavily cross-linked and derivatizable, e.g.,
copolymerized with a glycidyl moiety or ethylenedimethacrylate.
Afeyan col.16 l.67-col.17 l.7. By contrast, the particles in the 30 μm columns are
copolymers of divinylbenzene and n-vinylpyrrolidone. A copolymer of divinylbenzene
and n-vinylpyrrolidone is not one of the polymers described in Afeyan and was not
specifically disclaimed in the Guiochon declaration.
Waters argues that the specific disclaimer of divinylbenzene should suffice to
disclaim the polymers in the particles of the 30 μm columns, because those particles are
“made from 80% divinylbenzene.” Br. of Defendant-Cross Appellant Waters Corp. at
42. But Waters ignores the fact that a divinylbenzene molecule alone and a copolymer
containing 80% divinylbenzene are different chemical compounds, with different
properties—including different rigidities. By analogy, if a patentee disclaims “flammable
substances like hydrogen” during prosecution, the patentee has not disclaimed the
nonflammable compound H2O, just because it is two-thirds hydrogen.
In sum, we agree with the district court that the proper construction of “rigid” in
the asserted claims does not require that the particles be monomeric. We affirm the
district court’s construction of “rigid” as “an object’s capacity to maintain substantially
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zero changes in density and volume under packing pressure of at least about 5000 psi
and as a consequence substantially to resist plastic deformation under such pressure.”
2. Infringement
Waters argues that the district court erred by denying it judgment as a matter of
law, because the evidence was insufficient to prove infringement even under the district
court’s claim construction. “The grant or denial of a motion for judgment as a matter of
law is a procedural issue not unique to patent law, reviewed under the law of the
regional circuit in which the appeal from the district court would usually lie.” Summit
Tech., Inc. v. Nidek Co., 363 F.3d 1219, 1223 (Fed. Cir. 2004). The First Circuit
reviews the district court’s grant or denial of judgment as a matter of law de novo.
Espada v. Lugo, 312 F.3d 1, 2 (1st Cir. 2002); Larch v. Mansfield Mun. Elec. Dept., 272
F.3d 63, 67 (1st Cir. 2001). We therefore consider whether the evidence, when viewed
in the light most favorable to Cohesive, would permit a reasonable jury to find in favor of
Cohesive on any permissible claim or theory. Larch, 272 F.3d at 67.
Waters argues that the evidence at trial was insufficient to permit a reasonable
jury to conclude that the particles of the 30 μm columns were rigid. The district court’s
construction of “rigid” required that the particles: (1) “maintain substantially zero
changes in density and volume under packing pressure of at least about 5000 psi”; and
(2) “substantially resist plastic deformation under such pressure.” At trial, Cohesive’s
expert gave his understanding of the terms “substantially zero changes in density and
volume,” and “substantially resist plastic deformation.” He further testified that he had
tested the particles of the 30 μm columns by packing them at 5000 psi, that he observed
“substantially zero changes in density and volume,” and that the particles did not
“exhibit any plastic deformation.” J.A. 1463-64. Thus, in response to the question, “If
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rigid means an object’s capacity to maintain substantially zero changes in density and
volume, under a packing pressure of at least about 5,000 psi, and as a consequence,
substantially to resist plastic deformation under such pressure, do the Waters’ particles
qualify as rigid?,” Cohesive’s expert answered, “Yes, they do.” J.A. 1462. This is
sufficient evidence to permit a reasonable jury to conclude that the 30 μm columns were
rigid. The district court therefore properly denied Waters’s motion for judgment as a
matter of law of noninfringement.
3. Invalidity
Waters argues that the district court erred by granting a directed verdict—i.e.,
judgment as a matter of law—for Cohesive on the issue of anticipation, rather than allow
the jury to decide the issue. “In reviewing the district court’s ruling, we apply the same
standards as the district court, meaning that we examine the evidence and all fair
inferences in the light most favorable to [Waters] and may not consider the credibility of
witnesses, resolve conflicts in testimony, or evaluate the weight of the evidence.”
Guilloty Perez v. Pierluisi, 339 F.3d 43, 50 (1st Cir. 2003) (internal quotation marks and
citations omitted). If a reasonable jury could have found that any of the asserted
references anticipated the patent, then judgment as a matter of law was improper. See
Wilson v. Moreau, 492 F.3d 50, 52 (1st Cir. 2007); see also Guilloty Perez, 399 F.3d at
50 (“If we conclude that ‘fair-minded persons could draw different inferences from the
evidence presented at trial, the matter is for the jury,’ and judgment as a matter of law
was improperly granted.” (quoting Espada, 312 F.3d at 2)).
The circumstances that led to the grant of judgment as a matter of law in this
case were unusual. At a charge conference near the end of trial, the district court
indicated that it did not intend to charge the jury on anticipation. Specifically, after
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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. J.A. 2654. The district court commented that,
“[u]nder a strict reading, [it did not] see the proof of anticipation in any of the prior art
publications,” that Waters’s anticipation case was “iffy,” and that its “gut response is that
none of [the prior art references] are winners.” J.A. 5680, 5704, 5720. Moreover, the
district court commented that declining to charge on anticipation would not cause “any
real harm to the defendant,” and would not “make very much difference because it
comes in in obviousness” J.A. 5680, 5703. 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.” J.A. 5719, 5717. The
district court concluded that it could not “find here that the requirements of anticipation
have been met” in the submitted prior art references, and it therefore directed a verdict
of no anticipation. J.A. 2654.
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.”
An “iffy” anticipation case, however, does not foreclose a favorable verdict. See Fed. R.
Civ. P. 50 (requiring that the court find “that a reasonable jury would not have a legally
sufficient evidentiary basis” to find for a party before granting judgment as a matter of
law).
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Moreover, the district court was wrong to conclude that granting judgment as a
matter of law on anticipation would not harm Waters, simply because the jury had the
opportunity to consider the same references for purposes of obviousness. Despite the
often 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); Jones v.
Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984) (“[T]hough anticipation is the epitome of
obviousness, [they] are separate and distinct concepts.”); see also Mendenhall v.
Cedarapids, Inc., 5 F.3d 1557, 1563 (Fed. Cir. 1993) (holding that verdict of
nonobviousness was not inconsistent with verdict of anticipation by prior public use,
despite “legal homily” that anticipation is the epitome of obviousness); In re Meyer, 599
F.2d 1026, 1031 (CCPA 1979) (holding that rejection under § 102 was new ground
following previous rejection under § 103, despite maxim that “anticipation is the epitome
of obviousness”).
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 may
be 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.”) Obviousness can be proven by combining existing prior art references, while
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anticipation requires all elements of a claim to be disclosed within a single reference.
Compare MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999)
(“To anticipate, a single reference must teach every limitation of the claimed
invention.”), with Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565,
1577 (Fed. Cir. 1991) (“If it is necessary to reach beyond the boundaries of a single
reference to provide missing disclosure of the claimed invention, the proper ground is
not § 102 anticipation, but § 103 obviousness.”). 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 prior
art, and (4) the so-called ‘secondary considerations.’”), with Hakim v. Cannon Avent
Group, PLC, 479 F.3d 1313, 1319 (Fed. Cir. 2007) (“‘Anticipation’ means that the
claimed invention was previously known, and that all of the elements and limitations of
the claim are described in a single prior art reference.”). And although anticipation can
be proven inherently, proof of inherent anticipation is not the same as proof of
obviousness. 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,
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“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
A court cannot refuse to submit the issue of anticipation to the jury simply
because the accused infringer has also asserted an obviousness defense. It is for the
litigants—not the court—to make the strategic decision as to whether to assert one,
both, or neither of these defenses in a jury trial. An accused infringer that introduces a
prior art reference and makes a non-frivolous argument that “each and every limitation
of a claim is found, expressly or inherently, in [that] single prior art reference” generally
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 a
particular 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.
2008-1029, -1030, -1031, -1032, -1059 16
is entitled to have anticipation decided by the finder of fact. See Planet Bingo, LLC v.
GameTech Int’l, Inc., 472 F.3d 1338, 1346 (Fed. Cir. 2006). That is precisely what
Waters did in this case. We therefore reverse the district court’s grant of judgment as a
matter of law on the issue of anticipation, and remand for further proceedings consistent
with this opinion.
4. Inequitable Conduct
Waters argues that the district court clearly erred by failing to find the deceptive
intent necessary to sustain a finding of inequitable conduct and erroneously applied a
“but for” test in determining materiality. “We review the district court’s findings on the
threshold issues of materiality and intent for clear error. . . . We review the ultimate
decision regarding inequitable conduct for abuse of discretion.” Cargill, Inc. v. Canbra
Foods, Ltd., 476 F.3d 1359, 1364-65 (Fed. Cir. 2007).
Waters argued to the district court that Cohesive committed inequitable conduct
by submitting the Guiochon declaration but failing to disclose to the United States
Patent and Trademark Office (the “Patent Office”) that Guiochon did not believe that the
invention generated “turbulent flow” as distinguished from “laminar” or “smooth” flow.
Cohesive, 526 F. Supp. 2d at 95 & n.2. Cohesive admitted that its inventors believed
that the flow generated by the invention of the ’874 and ’368 patents was best
characterized as “turbulent” and that Guiochon disagreed. Id. at 99. However,
Cohesive argued that its prosecuting attorney did not believe this distinction to be
material, because the term “turbulent flow” does not appear in any of the claims of either
patent and is not defined in the specification. Id. The district court “credit[ed]
Cohesive’s testimony that it did not believe Guiochon’s definitional distinction was
2008-1029, -1030, -1031, -1032, -1059 17
material to the ultimate conclusion of his declaration” and accordingly found no intent to
deceive the Patent Office. Id.“With regard to the deceptive intent prong [of inequitable conduct], we have
emphasized that ‘materiality does not presume intent, which is a separate and essential
component of inequitable conduct.’” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
537 F.3d 1357, 1366 (Fed. Cir. 2008) (quoting GFI, Inc. v. Franklin Corp., 265 F.3d
1268, 1274 (Fed. Cir. 2001)). To prove the intent prong of inequitable conduct, “the
accused infringer must prove by clear and convincing evidence that the material
information was withheld with the specific intent to deceive the [Patent Office].” Id.Waters has cited no independent evidence of specific intent to deceive. Instead,
it argues that Cohesive’s failure to disclose Guiochon’s belief that the flow generated by
the claimed invention was not properly characterized as “turbulent” “can have been
nothing other than intentional.” Reply Br. of Defendant-Cross Appellant Waters Corp. at
20; see also Br. of Defendant-Cross Appellant Waters Corp. at 75. But the district court
expressly credited the testimony of the prosecuting attorney and Guiochon that they
believed the distinction was not material, and concluded that there was no “clear and
convincing evidence that Cohesive’s omission constituted intentional deceit.” Cohesive,
526 F. Supp. 2d at 100. Waters has offered no reason for us to disturb these findings.
We therefore conclude that the district court did not clearly err in its determination
that Waters had failed to meet its burden of establishing inequitable conduct. See, e.g.,
Star Scientific, 537 F.3d at 1365.
B. The 25 μm Columns
We turn next to Cohesive’s appeal of the grant of summary judgment of
noninfringement by the 25 μm columns.
2008-1029, -1030, -1031, -1032, -1059 18
Preliminarily, we note that the name “25 μm columns” is somewhat deceiving.
Apart from the size of the particles that make up the column, the 25 μm columns are
identical to the infringing 30 μm columns. Cohesive, 526 F. Supp. 2d at 114. In both,
the particles themselves are irregular in shape, as best shown in figure 3 of the ’874
patent, reproduced below:
Because the shape of the particles is not a uniform sphere, the particles in the accused
25 μm columns do not actually have diameters of 25 μm. Moreover, the parties dispute
the average size of the particles in the accused 25 μm columns. According to
Cohesive, the particles in the 25 μm columns have an average diameter of 29.01 μm.
Id. However, according to Waters, the particles have an average diameter of either
25.22 or 25.16 μm, depending on the method of calculation. Id.
1. Claim Construction
All of the asserted claims of both patents included limitations requiring in effect
that the column particles have average diameters “greater than about 30 μm.” See,
e.g., ’874 patent col.20 ll.25-26 (requiring “average diameters of greater than about
30 μm”); see also supra n.1. Faced with an accused product (the 25 μm columns) that
2008-1029, -1030, -1031, -1032, -1059 19
was identical to an infringing product (the 30 μm columns) in all respects except for
particle size, the district court properly focused on the “about 30 μm” limitation of the
claims. However, the district construed “greater than about 30 μm” expressly with
reference to the alleged average diameter of the particles in the accused 25 μm
columns:
I construe the language ‘‘greater than about 30 microns’’ to exclude 29.01
microns.
Cohesive, 526 F. Supp. 2d at 115.
Although “it is appropriate for a court to consider the accused device when
determining what aspect of the claim should be construed,” it is not appropriate for the
court to construe a claim solely to exclude the accused device. Exigent Tech., Inc. v.
Atrana Solutions, Inc., 442 F.3d 1301, 1310 n.10 (Fed. Cir. 2006). A “claim is construed
in the light of the claim language . . . not in light of the accused device.” Id. (quoting SRI
Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 (Fed. Cir. 1985) (en banc))
(alteration and emphasis in the original). Rather, once the district court identified that
“greater than about 30 μm” was the language that should be construed, its task was to
determine the ordinary and customary meaning of that term as understood by a person
of ordinary skill in the art at the time of the invention, following the guidance of Phillips.
The district court erred not only by construing the claim merely to exclude the
accused device, but also by reading the term “about” out of the claim. The district court
stated that it “d[id] not hesitate in construing ‘about 30 microns’ to exclude a magnitude
of 29.01 microns,” because the patentee “could have applied for a patent that included
particles of ‘greater than 29 microns’” if that is what it had intended. Cohesive, 526 F.
Supp. 2d at 115. But the patentee likewise could have drafted the limitation as “greater
2008-1029, -1030, -1031, -1032, -1059 20
than 30 μm”—rather than “greater than about 30 μm”—if it had intended the narrow
scope that the district court gave to the claim. “[C]laims are interpreted with an eye
toward giving effect to all terms in the claim.” Bicon, Inc. v. Straumann Co., 441 F.3d
945, 950 (Fed. Cir. 2006). Here, by including the word “about,” the patentee plainly
intended the limitation “greater than about 30 μm” to encompass columns with particles
with average diameters that are less than 30 μm, but are still greater than “about”
30 μm. Cf. Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1581 (Fed. Cir. 1995) (“The
addition of ‘approximately’ which means ‘reasonably close to,’ eliminates the precise
lower limit of [a] range, and, in so doing extends the scope of the range.” (footnote
omitted)).
“[T]he word ‘about’ does not have a universal meaning in patent claims, and [its]
meaning depends on the technological facts of the particular case.” Pall Corp. v. Micron
Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995). When “about” is used as part of
a numeric range, “the use of the word ‘about,’ avoids a strict numerical boundary to the
specified parameter. Its range must be interpreted in its technologic and stylistic
context.” Id. In determining how far beyond the claimed range the term “about” extends
the claim, “[w]e must focus . . . on the criticality of the [numerical limitation] to the
invention.” Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321,
1327 (Fed. Cir. 2007). In other words, we must look to the purpose that the “about
30 μm” limitation serves, to determine how much smaller than 30 μm the average
particle diameter can be and still serve that purpose. To be clear, it is the purpose of
the limitation in the claimed invention—not the purpose of the invention itself—that is
2008-1029, -1030, -1031, -1032, -1059 21
relevant. Thus, we ask what function the “about 30 μm” low-end limit on particle size
plays in the operation of the claimed apparatus and method.
Here, the reason that the claims place a low-end limit on particle size is clear
from the specification. The specification of the ’874 patent shows that the function of
the low-end limit on particle size relates to the ability of the column to capture
compounds from the liquid at high flow rates. Specifically, the specification teaches that
“it is believed that the turbulence engendered by . . . high speed flow enhances the
loading of the solute molecules onto the derivatized surfaces in the pores of the
particles in the column.” ’874 patent col.17 ll.48-51. The specification describes three
examples, in which particles of “nominal averaged diameters” of 50 μm, 20 μm, and 10
μm were evaluated at different flow rates. Id. col.15 ll.18-62. It concludes that the
desired “turbulence could not be attained” using particles of nominal average diameters
of 20 μm or 10 μm, but was attained using particles of nominal average diameters of 50
μm. Id. col.10 ll.1-19; see also id. figs.5-7.
The specification also teaches that the particles need not be the same size or
shape. See id. col.8 ll.62-63 (“[The] particles are shaped and selected in a range of
sizes and shapes . . . .”). In fact, non-spherical and differently shaped particles are
expressly taught as preferred. See id. col.11 ll.19-28 (teaching that mean or average
diameter is “not to be construed as limited to particles that are necessarily spherical or
regular solids” and that “a preferred aspect of the present invention is the irregularity of
particles’ shape”); id. col.9 ll.2-5 (“In a preferred embodiment, particularly where the
particles of the column are near the lower end of the acceptable range of cross-section
dimensions, the particles are irregular . . . .”); id. fig.3 (illustrating irregularly shaped
2008-1029, -1030, -1031, -1032, -1059 22
particles). Moreover, the specification makes clear that even the average diameter of
the particles cannot be measured with certainty. See id. col.11 ll.25-26 (describing
measurement of mean diameters with 95% confidence). Because the particles are not
spherical, not uniformly shaped, and not precisely measureable, it is not surprising that
the patent would claim a low-end threshold of “about 30 μm,” rather than precisely
“30 μm.” Notably, it is the nominal diameter of particles that the specification uses when
it concludes that the desired level of turbulence cannot be attained when the average
particle size is too small. See id. col.10 ll.8-19. Thus, the low-end limit on particle size
performs its function when the nominal average diameter of the particles is above the
limit (30 μm), even if the actual average diameter varies.
The specification contains two relevant statements that bear on the range that
“about” was intended to encompass in the context of the patents in suit. First, the
specification makes clear that particles with nominal 50 μm diameters attain the desired
turbulence, while “that turbulence could not be attained with particles” of 20 μm
diameters. Id. col.10 ll.1-13. Thus, “about 30 μm” cannot include 20 μm. Otherwise,
the purpose of the “about 30 μm” limitation would not be achieved.
Second, in describing an analysis of the porosity of columns, the specification
states:
To measure porosity, a number of batches of particles were examined, the
first being a batch (designated herein as CT-50A1-002) of uncoated,
unfunctionalized highly irregularly shaped, porous alumina particles having
a nominal diameter of 50μ, but an actual mean diameter, as determined
by Coulter analysis, of 42.39μ within a 95% confidence factor.
Id. col.14 ll.22-28 (emphases added). Thus, according to the specification, a batch of
particles with an actual mean diameter of 42.39 μm may still qualify as having a nominal
diameter of 50 μm. In other words, the specification treats an average diameter of
2008-1029, -1030, -1031, -1032, -1059 23
42.39 μm as an average diameter of about 50 μm. This represents an acceptable
variance of at least 15.22% from the 50 μm nominal diameter. It is therefore reasonable
to conclude that “about 30 μm” encompasses at least a 15.22% variance from 30 μm.
Thus, “about 30 μm” should encompass at least 30 μm ± 15.22%, i.e., between
25.434 μm and 34.566 μm.
Likewise, the nominal 20 μm particles that do not permit the required level of
turbulence presumably have actual diameters of 20 μm ± 15.22%, i.e., between
16.956 μm and 23.044 μm. Thus, our construction of “about 30 μm” should not
encompass actual diameters of 23.044 μm or less.
From the intrinsic evidence in the specification, we therefore conclude that “about
30 μm” should include particles with 25.434 μm diameters and larger, but should
exclude particles with 23.044 μm diameters and smaller. 3 The specification does not,
however, provide any concrete guidance as to whether a column with particles with
measured diameters between 23.044 μm and 25.434 μm meets the “about 30 μm”
limitation. Absent any such guidance, we neither can nor should draw a hard and fast
numeric line. Rather, we construe “about 30 μm” to accomplish the function of the low-
end limit on particle size described in the specification. From that, we conclude that, for
particles between 23.044 μm and 25.434 μm, “about 30 μm” means a particle of
sufficiently large size to assure that a column containing the particles is capable of
attaining turbulence. This functional approach is necessary and appropriate, because
3
Neither party has pointed to any relevant part of the prosecution history
that bears on the meaning of “about.” Cohesive points to one useful piece of extrinsic
evidence—an internal Waters analysis document indicating that Waters considered
particles as small as 25 μm to be within the range of acceptable measured average
diameters for a nominally 30 μm product. This evidence is generally consistent with our
conclusion that “about 30 μm” must encompass 25.434 μm.
2008-1029, -1030, -1031, -1032, -1059 24
the deliberate imprecision inherent in the word “about” makes it impossible to “capture
the essence” of the claimed invention in strict numeric terms. Cf. Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 731 (2002) (remarking in
discussion of purpose of doctrine of equivalents that “the nature of language makes it
impossible to capture the essence of a thing in a patent application”).
Waters makes two arguments in favor of the district court’s construction, both of
which we reject. First, Waters argues that the “about 30 μm” limitation applies to the
average diameter of a single particle, not to the average diameter of all of the particles
in the column. Thus, according to Waters, an individual, non-spherical particle may
have an average diameter that is “about”—but less than—30 μm, but the average of all
of the average diameters of all of the particles in the column must be greater than
30 μm. We disagree. The specification makes clear that when it refers to an average
diameter, it is referring to an average diameter of multiple particles in a given
configuration, not the average diameter of a single particle. Id. col.11 ll.19-28 (“The
term ‘mean diameter’ as used herein is intended to mean the average (mean) diameter
or cross-section dimension of the particles regardless of particle configuration and is not
to be construed as limited to particles that are necessarily spherical or regular solids
. . . .” (emphases added)).
Second, Waters claims that “[t]he file history establishes conclusively that the
inventor intended and understood that his invention required particles with a minimum
average diameter of 30 μm.” Br. of Defendant-Cross Appellant Waters Corp. at 10.
Waters points to various statements in the prosecution history that refer to “30 μm
particles” without the modifier “about.” But Waters ignores that the word “about”
2008-1029, -1030, -1031, -1032, -1059 25
appears in each of the claims. The claim term “about” cannot be eliminated by the
prosecution history, unless Cohesive made “a clear and unmistakable disavowal of
scope during prosecution.” Computer Docking Station Corp., 519 F.3d at 1374. Simply
using the phrase “30 μm particles” without the qualifier “about” during prosecution is not
such a clear and unmistakable disavowal.
Thus, applying the principles articulated in Phillips, 415 F.3d at 1312-19, we
conclude that the proper construction of “greater than about 30 μm” in claim 1 of the
’874 patent is: either (1) greater than 25.434 μm, or (2) both greater than 23.044 μm
and of sufficiently large size to assure that the column is capable of attaining turbulence.
The same construction is applicable to the terms “not less than about 30 μm” and “in the
range between about 30 to about 500 μm” in the other asserted claims of both patents.
2. Literal Infringement
Based on its erroneous claim construction, the district court concluded that, as a
matter of law, the 25 μm columns could not infringe, even if they contained particles with
an average diameter of 29.01 μm, as Cohesive argued. Cohesive, 526 F. Supp. 2d at
115. Applying the correct construction, if the particles in the 25 μm columns have an
average diameter of 29.01 μm, they would literally infringe. Summary judgment of
noninfringement must therefore be reversed.
However, the district court was correct to deny Cohesive’s motion for summary
judgment of infringement. Taken in the light most favorable to Waters, the 25 μm
columns have average diameters of 25.16 μm. Id. at 114. Under the proper claim
construction, if the average diameter of the 25 μm columns were found to be 25.16 μm,
they would only infringe if the columns were capable of attaining the desired turbulence.
Both the actual average diameter of the 25 μm columns and their ability to attain
2008-1029, -1030, -1031, -1032, -1059 26
turbulence are disputed issues of material fact, making summary judgment on literal
infringement inappropriate.
3. Doctrine of Equivalents
The district court granted summary judgment in favor of Waters, finding no
infringement under the doctrine of equivalents. Specifically, the district court held that
“Cohesive has carved out a substantial set of diameters for particle structure, and
cannot now use the doctrine of equivalents to broaden patent language which
specifically limits its property rights to a set of particles sized ‘not less than’ a certain
amount.” Id. at 116.
We agree that the doctrine of equivalents is not available to Cohesive in this
case, but for different reasons than those provided by the district court. The district
court’s analysis was incorrect for several reasons. First, as discussed above, the
district court incorrectly construed the claim term “about 30 μm” in its analysis of literal
infringement, and this error also infected its equivalents analysis. Second, the district
court’s argument, that the breadth of Cohesive’s claim—i.e., that it literally
encompasses “a substantial set of diameters”—somehow limits its ability to claim
infringement by equivalents, is wrong as a matter of law. We have never held that the
doctrine of equivalents is inapplicable to broad claims; to the contrary, we have
emphasized that pioneering inventions often, by their very nature, result in broader
application of the doctrine of equivalents. See, e.g., Augustine Med., Inc. v. Gaymar
Indus., Inc., 181 F.3d 1291, 1301-02 (Fed. Cir. 1999). Finally, the district court’s
analysis suggests that the doctrine of equivalents cannot be used to broaden a numeric
range. But as we have repeatedly held, “the fact that a claim recites numeric ranges
does not, by itself, preclude . . . [reliance] on the doctrine of equivalents.” U.S. Philips
2008-1029, -1030, -1031, -1032, -1059 27
Corp. v. Iwasaki Elec. Co. Ltd., 505 F.3d 1371, 1378 (Fed. Cir. 2007) (quoting Abbott
Labs. v. Dey, L.P., 287 F.3d 1097, 1107-08 (Fed. Cir. 2002)) (alterations in the original).
Nevertheless, we conclude that the doctrine of equivalents is not available to
Cohesive here, for a different reason. The limitation to which Cohesive seeks to apply
the doctrine of equivalents is the “about 30 μm” limitation. As we have held, because of
the way that the patentee has used the word “about” in the context of the written
description and the claims in this case, construction of the term “about 30 μm” requires
consideration of the purpose or “criticality” of the limitation to the invention. See Ortho-
McNeil, 476 F.3d at 1327. As our construction makes clear, “about 30 μm”
encompasses particle diameters that perform the same function, in the same way, with
the same result as the 30 μm particles, as long as those diameters are within the range
left open by the specific disclosures of the specification. Thus, by electing to include the
broadening word “about” in the claim, the patentee has in this case already captured
what would otherwise be equivalents within the literal scope of the claim. Cf. Warner-
Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997) (“An analysis of
the role played by each element in the context of the specific patent claim will thus
inform the inquiry as to whether a substitute element matches the function, way, and
result of the claimed element, or whether the substitute element plays a role
substantially different from the claimed element.”) The patentee here has, by its choice
of claim language, captured the same “range of novelty” that typically justifies
application of the doctrine of equivalents. See Festo, 535 U.S. at 731 (holding that
“[t]he scope of a patent is not limited to its literal terms but instead embraces all
equivalents to the claims described,” because “[t]he language in the patent claims may
2008-1029, -1030, -1031, -1032, -1059 28
not capture every nuance of the invention or describe with complete precision the range
of its novelty.”).
Where, as here, a patentee has brought what would otherwise be equivalents of
a limitation into the literal scope of the claim, the doctrine of equivalents is unavailable
to further broaden the scope of the claim. In these circumstances, a patentee cannot
rely on the doctrine of equivalents to encompass equivalents of equivalents. Here,
because the “about 30 μm” limitation already literally encompasses diameters that are
equivalent to 30 μm in the context of the patent, any particle diameter that performs the
same function, in the same way, with the same result as a 30 μm diameter is already
within the literal scope of the claim. Cohesive therefore cannot rely on the doctrine of
equivalents for that limitation. Since the “about 30 μm” limitation was the only disputed
limitation, the district court was correct to grant summary judgment in favor of Waters on
the issue of infringement by equivalents.
C. Damages
1. Lost Profits
Following a bench trial, the district court, applying the so-called Panduit test,
concluded that Cohesive failed to prove that it was entitled to lost profits as a result of
infringement by Waters’s 30 μm columns. Cohesive, 526 F. Supp. 2d at 118; see
generally Panduit Corp. v. Stahlin Bros. Fibre Works, 575 F.2d 1152 (6th Cir. 1978).
The district court found both that the 25 μm columns were an “acceptable yet
noninfringing substitute” for the 30 μm columns and that a separate Waters product—
the Waters 2.1 × 20 mm columns—were “a reasonably acceptable substitute.” Id. at
119-20. Cohesive appeals, arguing that neither product is an acceptable noninfringing
substitute. Although “[a]vailability of lost profits is a question of law reviewed without
2008-1029, -1030, -1031, -1032, -1059 29
deference,” Mars, Inc. v. Coin Acceptors, Inc., 527 F.3d 1359, 1365 (Fed. Cir. 2008),
“[t]he existence of a noninfringing substitute is a question of fact, reviewable under the
clearly erroneous standard,” Minn. Min. & Mfg. Co. v. Johnson & Johnson Orth., Inc.,
976 F.2d 1559, 1577 (Fed. Cir. 1992).
To recover lost profits under the Panduit test, “the patent owner must prove (1) a
demand for the patented product, (2) an absence of acceptable noninfringing
substitutes, (3) the manufacturing and marketing capability to exploit the demand, and
(4) the amount of profit the patent owner would have made.” Standard Havens Prods.,
Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1373 (Fed. Cir. 1991); see also Panduit, 575
F.2d at 1156. Standard Havens explains the “acceptable noninfringing substitutes”
analysis as follows:
[T]he mere existence of a competing device does not necessarily make
that device an acceptable substitute. A product on the market which lacks
the advantages of the patented product can hardly be termed a substitute
acceptable to the customer who wants those advantages. Accordingly, if
purchasers are motivated to purchase because of particular features
available only from the patented product, products without such features—
even if otherwise competing in the marketplace—would not be acceptable
noninfringing substitutes.
Thus, to prove that there are no acceptable noninfringing substitutes, the
patent owner must show either that (1) the purchasers in the marketplace
generally were willing to buy the patented product for its advantages, or
(2) the specific purchasers of the infringing product purchased on that
basis.
Id. (citations omitted).
As discussed above, we have concluded that the district court erred in granting
summary judgment that the 25 μm columns did not infringe the ’874 and ’368 patents.
Consequentially, the district court erred in concluding that the 25 μm columns were a
reasonable noninfringing substitute. The availability of the 25 μm columns cannot
2008-1029, -1030, -1031, -1032, -1059 30
preclude Cohesive from obtaining lost profits, unless and until the district court
determines that the 25 μm columns are not infringing under the correct claim
construction.
It is unclear from the record whether the district court’s findings as to the 2.1 ×
20 mm columns alone would satisfy the Panduit test. The district court made the
following limited findings as to the 2.1 × 20 mm columns:
The 2.1 x 20mm, of course, is also a differently-sized column than the
accused column. Although it is only slightly larger, it would likely not be a
fully-acceptable substitute for those customers would rather elute their
compounds over a smaller 1 × 50mm column. Nevertheless, I find it a
reasonably acceptable substitute.
Cohesive, 526 F. Supp. 2d at 119. We do not know what the district court means by
“fully-acceptable substitute” or “reasonably acceptable substitute.” The district court’s
finding—that the 2.1 × 20 mm columns were not “a fully-acceptable substitute” but were
nevertheless “a reasonably acceptable substitute”—does not resolve one way or
another whether they are an acceptable noninfringing substitute under the Standard
Havens test.
Thus, we vacate the district court’s determination that Cohesive is not entitled to
lost profits, and remand for reconsideration based upon its determination of: (1) whether
the 25 μm columns infringe under the correct claim construction; and (2) whether the
2.1 x 20 mm columns are acceptable noninfringing substitutes as that term is used in
Standard Havens.
2. Willful Infringement
Applying the standard that we articulated in In re Seagate Technology, LLC, 497
F.3d 1360, 1371 (Fed. Cir. 2007) (en banc), the district court concluded that Waters’s
infringement of the ’874 and ’368 patents was not willful. Cohesive, 526 F. Supp. 2d at
2008-1029, -1030, -1031, -1032, -1059 31
103, 107. “[T]o establish willful infringement, a patentee must show by clear and
convincing evidence that the infringer acted despite an objectively high likelihood that its
actions constituted infringement of a valid patent. . . . If this threshold objective
standard is satisfied, the patentee must also demonstrate that this objectively-defined
risk (determined by the record developed in the infringement proceeding) was either
known or so obvious that it should have been known to the accused infringer.”
Seagate, 497 F.3d at 1371. “The court’s finding [on] willful infringement is one of fact,
subject to the clearly erroneous standard of review.” Stryker Corp. v. Intermedics
Orths., Inc., 96 F.3d 1409, 1413 (Fed. Cir. 1996).
As discussed in detail above, the proper construction of “rigid” was in dispute.
According to Waters, Cohesive had disavowed all polymeric particles as not “rigid”
during prosecution based on the Guiochon declaration. While we, like the district court,
have concluded that the Guiochon declaration did not disavow all polymeric particles,
see Cohesive, 526 F. Supp. 2d at 106 n.6, we nonetheless agree with the district court
that Waters could reasonably have read the “rigid” limitation, in light of the specification
and prosecution history, to require polymeric particles. See id. at 106 & n.6. Because
“rigid” was susceptible to a reasonable construction under which Waters’s products did
not infringe, there was not an objectively high likelihood that Waters’s actions
constituted infringement. See Seagate, 497 F.3d at 1371. The district court’s finding of
no willful infringement was therefore not clearly erroneous. 4
4
Because we conclude that the proper claim construction was a sufficiently
close question to foreclose a finding of willfulness, we need not address Cohesive’s
arguments concerning the district court’s factual errors in describing the testing that
Waters performed to assess whether its particles resisted plastic deformation.
2008-1029, -1030, -1031, -1032, -1059 32
3. Enhanced Damages
Cohesive argues that the district court erred in declining to award enhanced
damages, even in the absence of a finding of willfulness. Specifically, relying on the
analysis in Judge Gajarsa’s concurring opinion in Seagate, Cohesive asks the court to
overrule Beatrice Foods Co. v. New England Printing & Lithographing Co., in which we
held that “enhancement of damages must be premised on willful infringement or bad
faith.” 923 F.2d 1576, 1578 (Fed. Cir. 1991) (quoting Yarway Corp. v. Eur-Control USA,
Inc., 775 F.2d 268, 277 (Fed. Cir. 1985)); see also Seagate, 497 F.3d at 1377 (Gajarsa,
J., concurring) (urging that Beatrice Foods be overruled). The majority of the en banc
court in Seagate did not elect to overrule Beatrice Foods, and we therefore remain
bound by that decision. See, e.g., Hometown Fin., Inc. v. United States, 409 F.3d 1360,
1365 (Fed. Cir. 2005) (“[W]e are bound to follow our own precedent as set forth by prior
panels. . . .”).
D. Reassignment
Cohesive requests that this case be assigned to a different district court judge on
remand, pursuant to 28 U.S.C. § 2106. “The reassignment of a case to a new district
court judge after remand is a procedural question that is not unique to this court’s
exclusive jurisdiction. Accordingly, regional circuit law governs reassignment
questions.” Eolas Techs., Inc. v. Microsoft Corp., 457 F.3d 1279, 1282 (Fed. Cir. 2006).
The First Circuit uses a three-part inquiry to determine whether reassignment is
appropriate:
(1) whether the original judge would reasonably be expected upon remand
to have substantial difficulty in putting out of his or her mind previously-
expressed views or findings determined to be erroneous or based on
evidence that must be rejected,
2008-1029, -1030, -1031, -1032, -1059 33
(2) whether reassignment is advisable to preserve the appearance of
justice, and
(3) whether reassignment would entail waste and duplication out of
proportion to any gain in preserving the appearance of fairness.
Maldonado Santiago v. Velazquez Garcia, 821 F.2d 822, 832 (1st Cir. 1987).
Cohesive makes a single argument in favor of reassignment: that the six year
delay between the jury’s verdict of infringement and the district court’s judgment on the
remaining issues shows that the district court judge has a “clear antipathy for this
matter,” so that reassignment is necessary to preserve the appearance of justice. Br. of
Plaintiff-Appellant Cohesive Techs., Inc. at 54-55. Waters has not indicated whether it
favors or opposes reassignment.
We agree with Cohesive that there was an unreasonable and unacceptable delay
between the conclusion of the bench trial in August 2002 and the district court’s
judgment in August 2007. Even more disturbing is the fact that Cohesive moved for a
preliminary injunction against the 25 μm columns on March 7, 2002, that Cohesive
converted that motion to a motion for summary judgment at the district court’s
suggestion, and that the district court still did not rule on the motion for five years,
despite repeated status inquiries. See 526 F. Supp. 2d at 114.
Despite our displeasure with the delays in this case, we decline to order
reassignment. Cohesive makes no argument—and we see no reason—that the district
court judge would have substantial difficulty putting his previously expressed views or
findings out of his mind. Moreover, reassignment would necessarily entail a great deal
of waste and duplication of effort. We have affirmed much of the district court’s
judgment in this case, and the limited issues on which we have remanded will be most
easily addressed by the judge who presided over the earlier jury and bench trials and is
2008-1029, -1030, -1031, -1032, -1059 34
already familiar with the case. On balance, we conclude that no reassignment is
necessary and expect that the issues remaining on remand will be addressed without
undue delay.
III. CONCLUSION
For the foregoing reasons, we reject the district court’s construction of the term
“about 30 μm” and construe the term as described above. We reverse the district
court’s grant of summary judgment of no literal infringement by the 25 μm columns,
reverse the district court’s grant of judgment as a matter of law on the issue of
anticipation, vacate the district court’s judgment that Cohesive is not entitled to actual
damages, and remand. In all other respects, the judgment of the district court is
affirmed.
AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-IN-PART, AND REMANDED
COSTS
Each party shall bear its own costs.
2008-1029, -1030, -1031, -1032, -1059 35
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
2008-1029,-1030,-1031,-1032,-1059
COHESIVE TECHNOLOGIES, INC.,
Plaintiff-Appellant,
v.
WATERS CORPORATION,
Defendant-Cross Appellant.
Appeal from the United States District Court for the District of Massachusetts in case
nos. 98-CV-12308, 99-CV-11528, and 01-CV-12307, Judge Douglas P. Woodlock.
MAYER, Circuit Judge, dissenting.
I dissent from the majority’s decision to remand the issue of anticipation to the
district court. See ante at 12-17. The jury having found that U.S. Patent No. 5,772,874is not obvious under 35 U.S.C. § 103, remanding the case for “further proceedings” on
whether the patent is anticipated is a waste of time and resources.
It is true that the tests for obviousness and anticipation are distinct, and that a
district court should not refuse to submit a claim of anticipation to the jury merely
because an accused infringer also asserts an obviousness defense. It does not follow,
however, that if a jury has already determined that an invention is not obvious, remand
is required so that it can consider whether the invention is anticipated. The jury here
considered all of the allegedly anticipating prior art references, but nonetheless returned
a verdict that the asserted claims are non-obvious. If a series of prior art references did
not render the claimed invention obvious, how could one of those references contain
each and every element of the claimed invention so as to render it anticipated? See
Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003) (a claim
is anticipated if each and every limitation is found in a single prior art reference). ∗
Although a claimed invention can be obvious but not anticipated, it “cannot have
been anticipated and not have been obvious.” In re Fracalossi, 681 F.2d 792,
794 (CCPA 1982) (emphasis added). Indeed, this court has repeatedly emphasized
that “a disclosure that anticipates . . . also renders the claim invalid under § 103, for
anticipation is the epitome of obviousness.” Connell v. Sears, Roebuck & Co., 722 F.2d
1542, 1548 (Fed. Cir. 1983) (citations and internal quotation marks omitted); see Johns
Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1357 n.21 (Fed. Cir. 1998) (a disclosure
that anticipates also renders a claim obvious); In re Pearson, 494 F.2d 1399, 1402
(CCPA 1974) (anticipation is “the ultimate . . . obviousness”) (citations and internal
quotation marks omitted); In re Kalm, 378 F.2d 959, 962 (CCPA 1967) (“Necessarily, a
description in a reference which is insufficient as a matter of law to render a composition
of matter obvious to one of ordinary skill in the art would a fortiori be insufficient to
‘describe’ the composition as that term is used [for purposes of establishing
anticipation], a complete description being but the ultimate or epitome of obviousness.”).
The majority’s assertion that a claim can be anticipated but not obvious, flies in the face
of a long line of precedent to the contrary. Not surprisingly, it is unable to cite a case
∗
The majority cites Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1296
(Fed. Cir. 2002) for the proposition that “obviousness is not inherent anticipation.”
Ante at 15. Trintec held that an invention is not inherently anticipated merely because it
is obvious. That, however, is a wholly separate issue from the issue presented here,
which is whether claims that are not obvious can ever be anticipated. Trintec does not
state that non-obvious claims can be inherently anticipated.
2008-1029,-1030,-1031,-1032,-1059 2
remanding to the district court for consideration of anticipation, while at the same time
sustaining a determination that claims at issue are not obvious. ∗ ∗
The fallacy of the majority’s approach can be illustrated by a simple example.
Every apple is a fruit. It follows, therefore, that if something is not a fruit, it cannot be an
apple. Similarly, since our precedent makes clear that every anticipated claim is
obvious, it follows that if a claim is not obvious, it cannot be anticipated.
The present dispute has already dragged on for nearly a decade and I see no
reason to burden the district court and the parties with additional proceedings. Although
the majority sends the anticipation issue back to the district court for “further
proceedings consistent with [its] opinion,” ante at 17, one wonders what it expects the
court to do. Given the prior non-obviousness determination, it can hardly expect the
district court to conclude that there is sufficient evidence of anticipation to send the
issue to a new jury. I would affirm the district court’s directed verdict on anticipation.
** The majority’s reliance on Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 1563
(Fed. Cir. 1993), is unsupportable. That case held that a district court did not abuse its
discretion in refusing to set aside a jury verdict of non-obviousness even though the jury
also returned a verdict of anticipation by prior public use. The issue here, however, is
not whether a verdict finding both anticipation by prior public use and non-obviousness
can be sustained, but whether remand is required to consider anticipation even after the
jury has determined the claims are not obvious.
2008-1029,-1030,-1031,-1032,-1059 3