Factual Dispute Defeats Summary Judgment on Inherent Anticipation
Addressing inherent anticipation and inequitable conduct issues, the US Court of Appeals for the Federal Circuit vacated a summary judgment of inherent anticipation, finding that material facts remained in dispute, and affirmed in part the district court’s finding of no inequitable conduct. U.S. Water Servs., Inc. v. Novozymes A/S, Case Nos. 15-1950; -1967 (Fed. Cir., Dec. 15, 2016) (Wallach, J).
U.S. Water Services and Roy Johnson (collectively, Water Services) sued Novozymes for infringement of two patents related to the production of ethanol from a milled grain. Specifically, the patents disclose adding an enzyme known as phytase at various points during the ethanol production process to prevent fouling by converting the insoluble phytic acid or phytic salts (the unwanted byproduct) to soluble products. Fouling is a term used to describe the insoluble byproduct that deposits on or “fouls” the processing equipment.
The district court determined that two prior art references inherently anticipated the asserted claims by disclosing the addition of phytase, finding that all of the elements of the asserted claims were expressly disclosed in the prior art, except the element requiring reduction of the formation of insoluble deposits (fouls). The “critical issue” for the district court was whether the prior art inherently disclosed “adding phytase for the purpose of reducing deposits.” The district court noted that the asserted patents describe a specific method for using phytase in terms of ranges for dosage, temperature and pH, and that both prior art references disclosed the same method using overlapping and sometimes narrower parameters. According to the district court, because “deposit reduction [was] a natural result of the methods for adding phytase during ethanol production,” summary judgment was appropriate. Water Services appealed.
The Federal Circuit agreed that the question of inherent anticipation turned on whether the prior art inherently disclosed using phytase to reduce deposits in ethanol production. However, the Court reversed the summary judgment, noting that the record included expert testimony that raised a factual dispute as to whether adding phytase as described in the prior art would necessarily lead to a reduction of byproduct. The Court cautioned that the district court should not have “made credibility determinations and weighed conflicting evidence,” as such functions are reserved for jurors, not judges on summary judgment rulings.
The Federal Circuit next addressed Novozymes’ claim that Water Services committed inequitable conduct by taking allegedly contradictory positions before the US Patent and Trademark Office (PTO) and the courts, the latter during litigation of a related patent. Novozymes argued that the contradiction was not disclosed to the patent examiner. The Court, however, found that the examiner was fully aware of the differences between the pending claims of the patents-in-suit and the parent patent, and that therefore there was no genuine dispute as to whether Water Services withheld or misrepresented material information before the PTO. Having found no error under the materiality prong, the Court declined to address the issue of intent, since a party alleging inequitable conduct must prove both materiality and intent to deceive.