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 (nonprecedential)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