Friday, February 17, 2012

Pearl River wins on appeal at CAFC over ClearValue

Patent infringement defendant Pearl River appealed from a case tried in ED Texas, and ended up winning the appeal. The technology: The ’690 patent is directed to a process for clarifying low alkalinity water using a blend of a high molecular weight quaternized polymer (e.g., DADMAC) and an aluminum polymer.

As to anticipation, the CAFC noted:

This case is not Atofina. ClearValue has not argued that the 50 ppm limitation in claim 1 is “critical,” or that the claimed method works differently at different points within the prior art range of 150 ppm or less. Nor does ClearValue argue that the Hassick reference fails to teach one of ordinary skill in the art how to use the claimed invention, i.e., that Hassick is not enabled to the extent required to practice claim 1 of the ’690 patent. Hassick discloses the exact process claimed and explains that the chemical treatment can be used for clarification of water with 150 ppm or less. Hassick col.2 l.53-col.3 l.6. More- over, Hassick gives examples, including one with water with “a total alkalinity of 60-70 ppm.” Id. col.4 l.40-col.5 l.29. Certainly if this example had been at 50 ppm there would be no dispute but that Hassick anticipates. To be clear, it is not this example at 60-70 ppm that anticipates because 60-70 ppm is not 50 ppm or less as the claim requires. But rather the disclosure that this chemical process works for systems with 150 ppm or less is what anticipates. The disclosure of 150 ppm or less is a genus disclosure as in Atofina. But unlike Atofina where there was a broad genus and evidence that different portions of the broad range would work differently, here, there is no allegation of criticality or any evidence demonstrating any difference across the range. In fact, the example in Has- sick at 60-70 ppm supports the fact that the disclosure of 150 ppm or less does teach one of skill in the art how to
make and use the process at 50 ppm. Unlike Atofina, here there is no “considerable difference between the claimed range and the range in the prior art.” See 441 F.3d at 999. Hassick teaches one of ordinary skill to use a high molecular weight DADMAC in combination with ACH to synergistically clarify water with alkalinity of 150 ppm or less. Hassick col.2 l.53-col.3 l.6. Hassick thus teaches and enables each and every element of claim 1. For these reasons, we find that the jury lacked substantial evidence to find Hassick did not anticipate that claim 1. We thus reverse the district court’s denial of Pearl River’s JMOL of invalidity.
Thus, Pearl River wins.

As to trade secret misappropriation:

ClearValue cross-appeals the district court’s grant of Pearl River’s motion for JMOL that it did not misappropriate Trade Secret #1, which was presented to the jury as the “use [of] a combination of a high molecular weight organic polymers, specifically DADMACs or Epi-DMAs, and aluminum chlorohydrate, ACH, to clarify water.” J.A. 1549. The district court granted JMOL because it found no evidence to support the jury’s finding that Trade Secret #1 was, in fact, a trade secret. J.A. 11. In particular, the district court found that the Hassick reference publicly disclosed the elements of Trade Secret #1 before the alleged misappropriation by Pearl River.


We agree with the district court that Hassick publicly disclosed Trade Secret #1 before ClearValue communicated the alleged secret to Pearl River, and thus that the jury’s verdict of trade secret misappropriation was not supported by substantial evidence. As presented to the jury, the alleged trade secret contained no effectiveness requirement. (...) We thus affirm the district court’s grant of Pearl River’s motion for JMOL that it did not misappropriate Trade Secret #1 Thus, Pearl River wins.

Pearl River was represented by JOHN T. GALLAGHER, of Dickstein Shapiro, LLP, of New York, New York.

See 22 Feb 12 post CAFC Makes Murky Anticipation Ruling on Overlapped Process Ranges in ClearValue


In light of the comment below, IPBiz reproduces the claim, and footnote, in question:

A process for clarification of water of raw alkalinity less than or equal to 50 ppm by chemical treatment, said process comprising:

adding to the water and, prior to or after adding to the water, blending at least one aluminum polymer with a high molecular weight quaternized ammonium polymer in an amount sufficient to form a flocculated suspension in the water and to remove turbidity from the water, said high mo- lecular weight quaternized ammonium polymer comprising at least an effective amount of
high molecular weight di-allyl di-methyl ammonium chloride (DADMAC) having a molecular weight of at least approximately 1,000,000 to approximately 3,000,000 and
said aluminum polymer including at least an effective amount of poly-aluminum hy- droxychloride [ACH] of a basicity equal to or greater than 50%.

Footnote on page 6:

Hassick teaches that a combination of high mo- lecular weight DADMAC polymer with ACH “synergisti- cally reduce[s] turbidity in aqueous systems, particularly low-turbidity . . . low-alkalinity systems (i.e., 150 ppm or less).” Hassick col.3 ll.2-6; see also Hassick col.2 ll.53-65. Example 15 of Hassick teaches using a blend of ACH and DADMAC with a molecular weight between 1-2 million to clarify water with alkalinity of between 60-70 ppm. Id. col.4 l.5-col.5 l.29.


Blogger Richard Haase said...

Key in the ClearValue Case and evidenced all over the case, as well as the prosecution file, is that the overlapping range was molecular weight, wherein was demonstrated both critical range and surprising/unexpected results.

The real question is "Why did the panel ignore the critical parameter which had demonstrated surprising/unexpected results and argue that an overlapping yet non-critical parameter should have been labeled critical?"

Further, there is no evidence of ClearValue stating that Hassick taught all of the claim limitations.

Further still, the footnote on page 6 of the Ruling referencing Hassick is incorrect.

Is this not creating facts?

Is this not ex-post facto and a violation of the 7th Amendment?

Lastly, what about Texas Trade Secret Law? The Trade Secret Claim Standard is In re Bass, Texas 2003. How can a federal circuit judge re-write Texas Law?

This makes no sense to me. Someone, please help?

8:55 AM  

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