October 19, 2021

Volume XI, Number 292

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October 19, 2021

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October 18, 2021

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In Finding Nonanticipation, Federal Circuit Cannot Distinguish Prior Art Based on Features That Are Not Claim Imitations

MELCHIOR v. HILITE INTERNATIONAL: Dec. 12, 2016. Before Dyk (majority), Newman (concur), and Clevenger. (nonprecedential)                                                           

The Takeaway

Prior art cannot be distinguished on the ground that it lacks features that are not claim limitations.

Procedural Posture

Following a jury trial and verdict in favor of plaintiff Melchior, the N.D. Tex. denied defendant Hilite’s JMOL of noninfringement and invalidity. Hilite appealed. The CAFC reversed.

Analysis

  • Anticipation: The CAFC reversed the jury verdict of no anticipation. At trial, plaintiff’s invalidity expert conceded that the prior-art reference satisfied all but one of the limitations of the representative claim, the “transfer[ring]” limitation, because the prior art failed to disclose “direct transfer in a closed line.” Because neither the claims nor the specification provided support for a construction that required “direct transfer in a closed line,” that feature was not pertinent, and the reference anticipated the claim. “[P]rior art cannot be distinguished on the ground that it lacks features that are not claim limitations.”

  • Obviousness: The claims not found anticipated were found obvious. The only argument plaintiff presented at trial against obviousness was that the prior art did not teach “direct transfer in a closed line,” i.e., that the prior art did not anticipate. Because Melchior’s “sole argument against obviousness was premised on a lack of anticipation,” the CAFC concluded “that the remaining claims are invalid as obvious over [a combination of the prior art],” and that “the jury’s verdict of nonobviousness with respect to the remaining claims is not supported by substantial evidence.”

  • Concurrence: Judge Newman concurred with the judgment of no liability because no infringement was established, but she disagreed with the finding of anticipation because the jury verdict was supported by substantial evidence.

Copyright © 2021, Hunton Andrews Kurth LLP. All Rights Reserved.National Law Review, Volume VII, Number 23
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About this Author

Michael J. Block, Andrews Kurth, patent litigation lawyer, dispute resolution attorney
Associate

Michael is an Associate in the Intellectual Property section of the firm’s New York – Battery Park office. He focuses his practice on patent litigation and dispute resolution, especially in the field of electrical engineering.

Michael previously worked in-house at a company where he was engaged in the innovation, development, and monetization of intellectual property and mobile technologies. Michael also has experience in prosecuting patent applications and has written claims, responded to office actions, and participated in interviews with...

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 Vaibhav M. Sharma, Andrews Kurth, Trade Secret Enforcement Lawyer, Patent Litigation Attorney
Associate

Vaibhav is an Associate in the Intellectual Property section of the firm’s New York – Battery Park office. Intellectual property issues are critical to the success of any business, regardless of its size. Andrews Kurth Kenyon helps clients in virtually all industries obtain, protect and enforce patents, trademarks, copyrights, trade secrets and other intellectual property rights. Our IP lawyers have strong technical backgrounds and extensive legal and commercial experience as in-house IP counsel, patent and trademark examiners, engineers and scientists.

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