CAFC reverses ND Ill on anticipation matter

In SRAM v. AD-II, the CAFC reversed a decision by ND Ill in the area of
anticipation under 35 USC 102. [ The district court’s denial of AD-II’s motions for summary judgment of invalidity of
claims 16 and 27 based on the Japanese reference is reversed. ]

On the law of anticipation:

Schering Corp. v. Geneva Pharms., Inc., 339 F.3d
1373, 1377 (Fed. Cir. 2003). “[A] prior art reference may anticipate without disclosing a
feature of the claimed invention if that missing characteristic is necessarily present, or
inherent, in the single anticipating reference.” Id. However, a patent claim “cannot be
anticipated by a prior art reference if the allegedly anticipatory disclosures cited as prior
art are not enabled.” Elan Pharms., Inc. v. Mayo Found. for Med. Educ. & Research,
346 F.3d 1051, 1054 (Fed. Cir. 2003). “The standard for what constitutes proper
enablement of a prior art reference for purposes of anticipation under section 102,
however, differs from the enablement standard under section 112.” Rasmusson v.
SmithKline Beecham Corp., 413 F.3d 1318, 1325 (Fed. Cir. 2005). It is well-settled that
utility or efficacy need not be demonstrated for a reference to serve as anticipatory prior
art under section 102. See In re Schoenwald, 964 F.2d 1122, 1124 (Fed. Cir. 1992);
Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368 (Fed. Cir. 2001).

(...)

SRAM’s remaining arguments regarding inherency are equally unpersuasive. It
is irrelevant that the Japanese reference may not have recognized the problem of
cumulative lost motion or explicitly suggested a solution for it. See Schering Corp., 339
F.3d at 1377 (rejecting the contention that inherent anticipation requires recognition in
the prior art).

(...)

The question, however, is not
whether the inventor built or could have built an operative model of the device, but
whether the reference discloses each of the steps of the claimed method. Schering
Corp., 339 F.3d at 1380 (noting that a prior art reference may be enabling “even if [its]
author or inventor did not actually make or reduce to practice [the disclosed] subject
matter.” (citation omitted))