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.
Thus, in response to the question, “If
2008-1029, -1030, -1031, -1032, -1059 11
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.
Of district court error-->
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. (...) An “iffy” anticipation case,
however, does not foreclose a favorable verdict.
Of anticipation and obviousness-->
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
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.
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.”).
“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).
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.