west law.
`
`--- F.3d ----, 2015 WL 1727013 (C.A.Fed. (Tex.))
`(Cite as: 2015 WL 1727013 (C.A.Fed. (Tex.)))
`
`Page 1
`
`H
`Only the Westlaw citation is currently available.
`
`of Prior Art in General
`29lk487(2) k. Enablement. Most
`
`United States Court of Appeals,
`Federal Circuit.
`INEOS USA LLC, Plaintiff-Appellant
`v.
`BERRY PLASTICS CORPORATION, Defend(cid:173)
`ant-Appellee.
`
`No. 2014-1540.
`Aprill6, 2015.
`
`Background: Owner of patent for polyethylene(cid:173)
`based compositions used to form shaped products
`filed infringement action against competitor. The
`United States District Court for the Southern Dis(cid:173)
`trict of Texas, Gregg Costa, J., 2014 WL 1493852,
`entered summary judgment of invalidity, and pat(cid:173)
`entee appealed.
`
`Holdings: The Court of Appeals, Moore, Circuit
`Judge, held that:
`(1) claim requiring that composition be comprised
`0.05 to 0.5% by weight of at least one saturated
`fatty acid amide was anticipated by prior art;
`(2) prior art's disclosure of optional subsidiary lub(cid:173)
`ricant and optional additive satisfied patent's limita(cid:173)
`tions; and
`(3) prior art anticipated specification for saturated
`fatty acid amide behenamide as primary lubricant.
`
`Affirmed.
`
`West Headnotes
`
`[1] Patents 291 ~487(2)
`
`291 Patents
`29lll Patentability and Validity
`29lii(C) Novelty; Anticipation
`29lii(C)l In General
`29lk483 Prior Art and Relation of
`Claimed Invention Thereto
`29lk487 Contents and Sufficiency
`
`Cited Cases
`
`Patents 291 ~489(2)
`
`291 Patents
`29lll Patentability and Validity
`29lii(C) Novelty; Anticipation
`29lii(C)l In General
`29lk483 Prior Art and Relation of
`Claimed Invention Thereto
`29lk489 Number of Prior Art Ref(cid:173)
`erences; Combinations
`29lk489(2) k. Single Reference
`Disclosing Every Element or Limitation of Claim.
`Most Cited Cases
`To anticipate patent claim, reference must de(cid:173)
`scribe each and every claim limitation and enable
`one of skill in art to practice embodiment of
`claimed invention without undue experimentation.
`35 U.S.C.A. § 102.
`
`[2] Patents 291 ~524
`
`291 Patents
`29lll Patentability and Validity
`29lii(C) Novelty; Anticipation
`29lii(C)2 Particular Fields of Invention
`29lk523 Chemicals
`29lk524 k. In General. Most Cited
`
`Cases
`Claim in patent for polyethylene-based com(cid:173)
`positions used to form shaped products, which re(cid:173)
`quired that composition be comprised 0.05 to 0.5%
`by weight of at least one saturated fatty acid amide,
`was anticipated by prior art that disclosed lubricant,
`which could be stearamide, in amounts from 0.1 to
`5 parts by weight, where patent specification indic(cid:173)
`ated that lubricants included in invention func(cid:173)
`tioned to improve plastic caps' slip properties and
`ability to be unscrewed from bottle and described
`invention's novelty as eliminating odor and taste
`problems associated with prior art bottle caps while
`
`© 2015 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`

`--- F.3d ----, 2015 WL 1727013 (C.A.Fed. (Tex.))
`(Cite as: 2015 WL 1727013 (C.A.Fed. (Tex.)))
`
`still maintaining good slip properties, and patentee
`failed to established that any of those properties
`would differ if range from prior art patent was sub(cid:173)
`stituted for range of limitation. 35 U. S.C.A. § 102.
`
`[3) Patents 291 €=488
`
`291 Patents
`291 II Patentability and Validity
`291II(C) Novelty; Anticipation
`29 1II(C)l In General
`291k483 Prior Art and Relation of
`Claimed Invention Thereto
`29lk488 k. Extent of Similarity or
`Difference Between Prior Art and Claimed Inven(cid:173)
`tion in General. Most Cited Cases
`When patent claims range, that range is anticip(cid:173)
`ated by prior art reference if reference discloses
`point within range. 35 U.S.C.A. § 102.
`
`[4) Patents 291 €=488
`
`291 Patents
`291II Patentability and Validity
`291II(C) Novelty; Anticipation
`29 1II(C)l In General
`291k483 Prior Art and Relation of
`Claimed Invention Thereto
`29lk488 k. Extent of Similarity or
`Difference Between Prior Art and Claimed Inven(cid:173)
`tion in General. Most Cited Cases
`If prior art discloses its own range, rather than
`specific point, then prior art is only anticipatory if it
`describes claimed range with sufficient specificity
`such that reasonable fact finder could conclude that
`there is no reasonable difference in how invention
`operates over ranges. 35 U. S.C.A. § 102.
`
`Page 2
`
`Cases
`Limitations in claim for patent for polyethyl(cid:173)
`ene-based compositions used to form shaped
`products, which described composition comprising
`0 to 0. 15% by weight of subsidiary lubricant and 0
`to 5% by weight of one or more additives, were op(cid:173)
`tional in claimed composition, and thus prior art's
`disclosure of optional subsidiary lubricant and op(cid:173)
`tional additive satisfied limitations. 35 U.S.C.A. §
`102.
`
`[6] Patents 291 €=524
`
`291 Patents
`291 II Patentability and Validity
`291II(C) Novelty; Anticipation
`291II(C)2 Particular Fields of Invention
`29l k523 Chemicals
`29lk524 k. In General. Most Cited
`
`Cases
`Prior art patent for polyethylene-based compos(cid:173)
`itions disclosing genus of saturated fatty acid
`amides and stating that good results were achieved
`with narrower genus of saturated fatty acid amides
`having 12 to 35 carbon atoms anticipated specifica(cid:173)
`tion in patent for polyethylene-based compositions
`used to fonn shaped products specifying that
`primary lubricant was saturated fatty acid amide be(cid:173)
`henamide, which had 22 carbon atoms. 35 U.S.C.A.
`§ 102.
`
`Patents 291 €=2091
`
`291 Patents
`291X Patents Enumerated
`29l k209 1 k. In General; Utility. Most Cited
`
`Cases
`
`[5] Patents 291 €=524
`
`Patents 291 €:=2091
`
`291 Patents
`291II Patentability and Validity
`291II(C) Novelty; Anticipation
`29 1II(C)2 Particular Fields ofinvention
`29l k523 Chemicals
`29lk524 k. In General. Most Cited
`
`291 Patents
`291X Patents Enumerated
`29lk2091 k. In General; Utility. Most Cited
`
`Cases
`
`Patents 291 €:=2091
`
`© 2015 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`2
`
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`

`--- F.3d ----, 2015 WL 1727013 (C.A.Fed. (Tex.))
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`
`Page 3
`
`291 Patents
`291X Patents Enumerated
`29l k2091 k. In General; Utility. Most Cited
`
`1. Composition comprising at least [1] 94.5% by
`weight of a polyethylene with a standard density
`of more than 940 kg/m3,
`
`Cases
`5,900,514. Cited.
`
`5,948,846. Cited as Prior Art.
`
`6,846,863. Invalid.
`
`Donald Robert Dunner, Finnegan, Henderson, Fara(cid:173)
`bow, Garrett & Dunner, LLP, Washington, DC, ar(cid:173)
`gued for plaintiff-appellant. Also represented by
`Allen Marcel Sakal.
`
`Deborah Pollack- Milgate, Barnes & Thornburg
`LLP, Indianapolis, IN, argued for defendant-ap(cid:173)
`pellee. Also represented by Jessica M. Lindemann.
`
`Before DYK, MOORE, and O'MALLEY, Circuit
`Judges.
`
`MOORE, Circuit Judge.
`*1 Ineos USA LLC accused Berry Plastics Cor(cid:173)
`poration of infringing U.S . Patent No . 6,846,863 .
`Ineos appeals from the district court's summary
`judgment that the '863 patent is invalid as anticip(cid:173)
`ated under 35 U.S. C. § 102 (2006). We affirm.
`
`BACKGROUND
`The ' 863 patent is directed to polyethylene(cid:173)
`based compositions which can be used to form
`shaped products, such as screw caps for bottles. '
`863 patent col. 1 ll. 5-8. Prior art polyethylene
`bottle caps incorporated a lubricant to optimize the
`cap's slip properties and to facilitate unscrewing of
`the cap. Id col. 1 11. 9-14. However, these compos(cid:173)
`itions suffered the disadvantage of imparting bad
`odor and flavor to food products stored in contact
`with the compositions. Id col. 1 11. 15-17. The '863
`patent explains that its compositions having specif(cid:173)
`ic amounts of polyethylene, lubricants, and addit(cid:173)
`ives solve this problem. I d col. 1 11. 24-35. Claim 1
`is the only independent claim and is illustrative:
`
`[2] 0.05 to 0.5% by weight of at least one satur(cid:173)
`by
`ated
`fatty
`acid
`amide
`represented
`CH3(CH2)nCONH2 in which n ranges from 6 to
`28[,]
`
`[3] 0 to 0.15% by weight of a subsidiary lubricant
`selected from fatty acids, fatty acid esters, fatty
`acid salts, mono-unsaturated fatty acid amides,
`polyols containing at least 4 carbon atoms, mono(cid:173)
`or poly-alcohol monoethers, glycerol esters, par(cid:173)
`affins, polysiloxanes, fluoropolymers and mix(cid:173)
`tures thereof, and
`
`[ 4] 0 to 5% by weight of one or more additives
`selected from antioxidants, antacids, UV stabil(cid:173)
`izers, colorants and antistatic agents.
`
`For ease of reference, we refer to the various
`limitations by the respective bracketed numbers in(cid:173)
`serted into the claim.
`
`Ineos alleged that Berry Plastics infringes
`claims 1-7 and 9-11 of the '863 patent. Berry
`Plastics moved for summary judgment that the as(cid:173)
`serted claims are anticipated independently by vari(cid:173)
`ous prior art references, including U. S. Patent No.
`5,948,846. The parties do not dispute that the '846
`patent discloses 94.5% by weight of a polyethylene
`with a standard density of more than 940 kg/m3 as
`described in limitation 1 of claim 1 of the ' 863 pat(cid:173)
`ent. Ineos USA LLC v. Berry Plastics Corp., No.
`13-cv-0017, slip op. at 11 (S.D. Tex. Apr. 15,
`2014), ECF No. 101 (Summary Judgment Order).
`Likewise, there is no dispute that stearamide, dis(cid:173)
`closed in the ' 846 patent, is a compound within the
`class of saturated fatty acid amides represented by
`CH3(CH2)nCONH2 in which n ranges from 6 to 28
`("primary lubricant") described in limitation 2. The
`court found that the '846 patent's disclosure of a
`lubricant, which could be stearamide, in amounts
`from 0.1 to 5 parts by weight,FNl and more spe(cid:173)
`cifically of "at least 0.1 part by weight per 100
`
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`
`parts by weight of polyolefin, in particular of at
`least 0.2 parts by weight, quantities of at least 0.4
`parts by weight being the most common ones" de(cid:173)
`scribes specific values (e.g., 0.1 part by weight)
`along with the broader disclosure of the full range
`(0.1 to 5 parts by weight). I d at 13-14. It therefore
`concluded that the ' 846 patent's disclosure of steara(cid:173)
`mide in these amounts met limitation 2. Id at
`11-14. It then determined that the subsidiary lubric(cid:173)
`ant of limitation 3 and the additive of limitation 4
`are optional in the claimed composition because
`limitations 3 and 4 set forth ranges beginning with
`0%. Id at 14-16. It therefore found that the '846
`patent's disclosure of an optional subsidiary lubric(cid:173)
`ant and an optional additive satisfied limitations 3
`and 4. Id The court concluded that the '846 patent
`anticipates the asserted claims. Ineos appeals. We
`have
`jurisdiction pursuant
`to 28 U.S.C.
`§
`1295(a)(l).
`
`DISCUSSION
`*2 [1 ] We review the grant of summary judg(cid:173)
`ment under the law of the relevant regional circuit.
`See Accenture Global Servs., GmbH v. Guidewire
`Software, Inc., 728 F.3d 1336, 1340 (Fed.Cir.2013).
`The Fifth Circuit reviews grants of summary judg(cid:173)
`ment de novo. Triple Tee Golf, Inc. v. Nike, Inc.,
`485 F.3d 253, 261 (5th Cir.2007). Summary judg(cid:173)
`ment is appropriate when there is no genuine issue
`of material fact and the moving party is entitled to
`judgment as a matter of law. Fed.R.Civ .P. 56(a). To
`anticipate a patent claim under 35 U.S. C. § 1 02, "a
`reference must describe
`each and every claim
`limitation and enable one of skill in the art to prac(cid:173)
`tice an embodiment of the claimed invention
`without undue experimentation." Am. Calcar, Inc.
`v. Am. Honda Motor Corp., 651 F.3d 1318, 1341
`(Fed.Cir.2011) (citing In re Gleave, 560 F. 3d 1331,
`1334 (Fed.Cir.2009)).
`
`I. Independent Claim 1
`Ineos argues that the court erred in finding
`claim 1 of the ' 863 patent anticipated by the '846
`patent and in concluding that Ineos failed to raise a
`genuine dispute of material fact in opposing sum-
`
`Page 4
`
`mary judgment. Ineos asserts that the '846 patent
`discloses no single species within the genus of
`claim 1. It asserts that although the '846 patent dis(cid:173)
`closes stearamide-one of the primary lubricants of
`limitation 2-the ' 846 patent does not disclose or
`suggest that stearamide or any other primary lubric(cid:173)
`ant "should be included as a lubricant in an amount
`between 0.05 and 0.5% by weight while entirely ex(cid:173)
`cluding or severely limiting any other lubricant to
`no more than 0.15% by weight." Appellant's Br. 28.
`Ineos argues that, contrary to the court's conclusion,
`the '846 patent discloses ranges for amounts of lub(cid:173)
`ricants, not particular individual point values. Rely(cid:173)
`ing on Atofina v. Great Lakes Chemical Corp., 441
`F.3d 991 (Fed. Cir.2006), Ineos argues that because
`the ranges concerning the amounts of lubricants
`disclosed in the '846 patent only slightly overlap
`with the ranges of limitations 2 and 3 in claim 1 of
`the '863 patent, the ' 846 patent does not disclose
`these limitations. Appellant's Br. 28-32. Ineos con(cid:173)
`tends
`that, at the very
`least, under OSRAM
`Sylvania, Inc. v. American Induction Technologies,
`Inc., 701 F.3d 698, 706 (Fed.Cir.2012), the court
`should not have granted summary judgment in light
`of Ineos's proffered testimony that the ranges
`claimed in the '863 patent are critical. Appellant's
`Br. 33-35.
`
`Berry Plastics responds that the court properly
`granted summary judgment. It argues that the de(cid:173)
`in
`'846 patent of stearamide
`scription
`in the
`amounts of "at least 0.1 part by weight per 100
`parts by weight of polyolefin, in particular at least
`0.2 parts by weight, quantities of at least 0.4 parts
`by weight being the most common ones" discloses
`particular points (i.e., 0.1 , 0.2, and 0.4 parts by
`weight) within the range claimed in limitation 2 of
`claim 1 of the '863 patent (i.e., 0.05 to 0.5% by
`weight). Similarly, Berry Plastics argues that the
`court correctly concluded that because the composi(cid:173)
`tions of the '846 patent contain "one or more lubric(cid:173)
`ating agents," the '846 patent discloses that a subsi(cid:173)
`diary lubricant is optional. Berry Plastics asserts
`that the court therefore correctly found that the '846
`patent met limitation 3 of claim 1 of the '863 patent.
`
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`

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`(Cite as: 2015 WL 1727013 (C.A.Fed. (Tex.)))
`
`Finally, Berry Plastics asserts that the court did not
`err in declining to consider the purported criticality
`of the claimed ranges in limitations 2 and 3 because
`such inquiry is not necessary where, as here, the
`prior art discloses particular points within the later
`claimed range.
`
`*3 [2][3][ 4] We hold that the district court cor(cid:173)
`rectly granted summary judgment of anticipation.
`When a patent claims a range, as in this case, that
`range is anticipated by a prior art reference if the
`reference discloses a point within the range. Titani(cid:173)
`um Metals Corp. v. Banner, 778 F.2d 775 , 782
`(Fed. Cir. l 985). If the prior art discloses its own
`range, rather than a specific point, then the prior art
`is only anticipatory if it describes the claimed range
`with sufficient specificity such that a reasonable
`fact finder could conclude that there is no reason(cid:173)
`able difference in how the invention operates over
`the ranges. Atofina, 441 F.3d at 999; ClearValue,
`Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340,
`1345 (Fed.Cir.2012). Limitation 2 is met by the dis(cid:173)
`closure of the '846 patent. The '846 patent specific(cid:173)
`ation states:
`
`The composition according to the invention in(cid:173)
`cludes the lubricating agent in a total quantity of
`at least 0.1 part by weight per 100 parts by
`weight of polyolefin, in particular of at least 0.2
`parts by weight, quantities of at least 0.4 parts by
`weight being the most common ones; the total
`quantity of lubricating agents does not exceed 5
`parts by weight, more especially 2 parts by
`weight, maximum values of 1 part by weight per
`100 parts by weight of polyolefin being recom(cid:173)
`mended.
`
`'846 patent col. 2 1. 66-col. 3 1. 7 (emphasis ad(cid:173)
`ded). The phrases "at least" and "does not exceed"
`set forth corresponding minimum and maximum
`amounts for the primary lubricant. This portion of
`the specification clearly discloses ranges, not par(cid:173)
`ticular individual values. As we stated in Atofina,
`"the disclosure of a range
`does not constitute a
`specific disclosure of the endpoints of that range."
`441 F.3d at 1000. The court therefore erred in con-
`
`Page 5
`
`eluding that the '846 patent discloses particular
`points within the range recited in limitation 2.
`
`This conclusion is not fatal to Berry Plastics'
`case, however, because Ineos failed to raise a genu(cid:173)
`ine question of fact about whether the range
`claimed is critical to the operability of the inven(cid:173)
`tion. Ineos has not demonstrated that Atofina or OS(cid:173)
`RAM requires reversal in this case.
`
`In Atofina, we reversed the district court's find(cid:173)
`ing of anticipation where the patent-in-suit claimed
`a temperature range that was critical to the operab(cid:173)
`ility of the invention and the range disclosed in the
`prior art was substantially different. Atofina in(cid:173)
`volved a patent claiming a method of synthesizing
`difluoromethane at a temperature between 330-450
`oc. Atofina, 441 F.3d at 993; U. S. Patent No.
`5,900,514 col. 3 11. 61-62. Atofina's patent and its
`prosecution history described the claimed temperat(cid:173)
`ure range as critical to the invention, and stated that
`the synthesis reaction would not operate as claimed
`at a temperature outside the claimed range. See
`Atofina, J.A. 1304, 1306, 1311-12; '514 patent col.
`3 ll. 61-65; see also ClearValue, 668 F.3d at
`1344- 45. The prior art at issue in Atofina disclosed
`a broad temperature range of 100-500 oc. Atofina,
`441 F.3d at 999 . The patent-in-suit was not anticip(cid:173)
`ated because there was a "considerable difference"
`between the prior art's broad disclosure and the
`claimed "critical" temperature range, such that "no
`reasonable fact finder could conclude that the prior
`art describes the claimed range with sufficient spe(cid:173)
`cificity to anticipate this limitation of the claim."
`Id at 999 ; see also ClearValue, 668 F.3d at 1345.
`Key to this conclusion was the fact that the evid(cid:173)
`ence showed that a person of ordinary skill in the
`art would have expected the synthesis reaction to
`operate differently, or not all, outside of the tem(cid:173)
`perature
`range claimed
`in
`the patent-in-suit.
`Atofina, 441 F.3d at 999 ; see also ClearValue, 668
`F.3d at 1345.
`
`*4 In ClearValue, we further explained the im(cid:173)
`portance of establishing the criticality of a claimed
`range to the claimed invention in order to avoid an-
`
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`

`--- F.3d ----, 2015 WL 1727013 (C.A.Fed. (Tex.))
`(Cite as: 2015 WL 1727013 (C.A.Fed. (Tex.)))
`
`ticipation by a prior art reference disclosing a
`broader, overlapping range. The patent at issue in
`ClearValue claimed a method "for clarification of
`water of raw alkalinity less than or equal to 50 ppm
`by chemical
`treatment." 668 F.3d at 1342
`(emphasis added). After a jury found ClearVa1ue's
`patent not anticipated by prior art disclosing clari(cid:173)
`fying water with alkalinity of "150 ppm or less,"
`we reversed and held the patent invalid as anticip(cid:173)
`ated.
`Id at 1342-46. Notably, Clear Value did not
`argue that the claimed range was critical to the in(cid:173)
`vention or that the claimed method would work dif(cid:173)
`ferently within the prior art range of 150 ppm or
`less. Id. "[U]nlike Atofina where there was a broad
`genus and evidence that different portions of the
`broad range would work differently," in ClearValue
`"there [was] no allegation of criticality or evidence
`demonstrating any difference across the range." I d.
`at 1345. There was no considerable difference
`between how the method would operate within the
`claimed range and within the range disclosed in the
`prior art. I d
`
`We have, however, reversed a grant of sum(cid:173)
`mary judgment of anticipation where the patentee
`raised a genuine dispute of material fact concerning
`the criticality of a claimed range. In OSRAM, the
`patentee argued that the claimed pressure range
`"less than 0.5 torr" was critical to the operation of
`its claimed lamp assembly. OSRAM, 701 F.3d at
`701 , 705- 06. There, the patentee presented expert
`testimony and evidence supporting its assertion that
`the "less than 0.5 torr" limitation was "central to
`the invention claimed" and "that a lamp would op(cid:173)
`erate differently at various points within the range
`disclosed" in the prior art reference at issue. Id. at
`706. This evidence was unrebutted. Id. We emphas(cid:173)
`ized that "how one of ordinary skill in the art would
`understand the relative size of a genus or species in
`a particular technology is of critical importance."
`Id Noting the district court's failure to justify its re(cid:173)
`jection of OSRAM's expert testimony and the lack
`of support for the court's conclusion that the
`claimed range was narrowly encompassed within
`the prior art range, we reversed. I d.
`
`Page 6
`
`In this case, Ineos argues that because the prior
`art '846 patent discloses a range that overlaps with
`the range recited in limitation 2, the court should
`not have found claim 1 anticipated. Ineos asserts
`that it presented unrebutted evidence that the range
`recited in limitation 2 is critical to the invention and
`therefore, under OSRAM, the court erred in granting
`summary judgment in Berry Plastics' favor.
`
`The court's conclusion that limitation 2 was
`met by the '846 patent was correct because Ineos
`did not raise a genuine question of fact about
`whether the range recited in limitation 2 is critical
`to the invention. The '863 patent specification in(cid:173)
`dicates that the lubricants included in the invention
`function to improve the caps' slip properties and
`ability to be unscrewed from a bottle. '863 patent
`col. 1 ll. 10-12. It then describes the novelty of the
`invention as eliminating the odor and taste prob(cid:173)
`lems associated with prior art bottle caps while still
`maintaining good slip properties. Id. col. 1 11.
`20-23, col. 3 1. 66-col. 4 1. 2. Ineos has not estab(cid:173)
`lished that any of these properties would differ if
`the range from the prior art '846 patent is substi(cid:173)
`tuted for the range of limitation 2.
`
`*5 Ineos relies on the testimony of one of the
`inventors of the '863 patent stating that the range
`claimed in limitation 2 is critical to avoid unneces(cid:173)
`sary manufacturing costs and the appearance of un(cid:173)
`desirable blemishes on the bottle caps. Appellant's
`Br. 33-34. But even if true, this has nothing to do
`with the operability or functionality of the claimed
`invention. Ineos has not established any relation(cid:173)
`ship between avoided cost and prevention of un(cid:173)
`desirable blemishes, and the claimed invention's
`slip properties or elimination of odor and taste
`problems. Ineos does not suggest that the claimed
`invention's slip properties or improved odor and
`taste properties would not have been expected
`based on the prior art. While we do not rule out the
`possibility that testimony concerning reduced man(cid:173)
`ufacturing costs could be relevant where a method
`of manufacture claim is at issue, this is not the case
`before usFN2
`
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`

`--- F.3d ----, 2015 WL 1727013 (C.A.Fed. (Tex.))
`(Cite as: 2015 WL 1727013 (C.A.Fed. (Tex.)))
`
`Ineos is correct that with regard to limitation 2,
`the '846 patent discloses a range, and not a point
`within the range. Ineos is also correct that when the
`prior art discloses a range, rather than a point, the
`court must evaluate whether the patentee has estab(cid:173)
`lished that the claimed range is critical to the oper(cid:173)
`ability of the claimed invention. Here, however, In(cid:173)
`eos failed to put forth facts in opposition to sum(cid:173)
`mary judgment that created a genuine issue of ma(cid:173)
`terial fact about the criticality of the range of limit(cid:173)
`ation 2. There is no evidence that the operability of
`the bottle cap would be improved by the claimed
`range.
`
`[5] Limitation 3 is also met by the '846 patent
`and Ineos's argument concerning the criticality of
`limitation 3 does not save the claim. The '846 pat(cid:173)
`ent discloses compositions containing a single lub(cid:173)
`ricating agent ("one") and allows for additional lub(cid:173)
`ricating agents. '846 patent col. 1 ll. 48-50. We,
`like the district court, interpret this language as ex(cid:173)
`pressly disclosing a composition with only one lub(cid:173)
`ricating agent-the primary lubricant-and zero
`subsidiary lubricant. Limitation 3 requires a subsi(cid:173)
`diary lubricant present in an amount between 0 and
`0.15% by weight. Because the '846 patent discloses
`0% of subsidiary lubricant, limitation 3 is satisfied.
`Ineos's criticality evidence is not relevant because
`that inquiry is appropriate only where the prior art
`discloses a range, not a particular value within the
`later claimed range. We see no error in the district
`1
`.
`h.
`. FN3
`courts ana ys1s on t 1s pomt.
`
`I
`
`II. Dependent Claim 3
`Claim 3, which depends from claim 1, specifies
`that the primary lubricant is the saturated fatty acid
`amide behenamide. The court found that because
`behenamide is one of a few common saturated fatty
`acid amide lubricating agents, the '846 patent's dis(cid:173)
`closure of the genus of saturated fatty acid amides
`anticipates claim 3. Summary Judgment Order at
`19-20 (citing In re Petering, 49 CCPA 993, 301
`F.2d 676 (1962)).
`
`Ineos argues that the court erred in finding
`claim 3 anticipated. It argues that the '846 patent
`
`Page 7
`
`does not explicitly disclose behenamide and that the
`court incorrectly concluded that the genus of satur(cid:173)
`ated fatty acid amides disclosed in the '846 patent
`describes behenamide. It asserts that the court in(cid:173)
`correctly concluded that behen-amide is a common
`saturated fatty acid amide lubricating agent. It as(cid:173)
`serts that the only pertinent record evidence is In(cid:173)
`eos's inventor declaration stating that behenamide
`was not recognized as "as one of the more effective
`lubricants for products."
`
`*6 [6) We affirm the court's conclusion that
`claim 3 is anticipated. With respect to claim 3, the '
`846 patent specification discloses the genus of sat(cid:173)
`urated fatty acid am ides and states that good results
`are achieved with the narrower genus of saturated
`fatty acid amides having 12 to 35 carbon atoms. '
`846 patent col. 2 11. 48-52, 59- 61. Behenamide
`falls within the narrower preferred genus because it
`is a saturated fatty acid amide with 22 carbon
`atoms. Berry Plastics asserted that behenamide is a
`common lubricating agent, and supported that con(cid:173)
`tention with an expert declaration stating that be(cid:173)
`henamide is a common fatty acid amide used in the
`packaging industry. From this evidence we cannot
`conclude that the court erred in finding that the '
`846 patent discloses behena-mide. Ineos has not
`demonstrated that it raised a genuine dispute of ma(cid:173)
`terial fact with respect to claim 3. Verbatim disclos(cid:173)
`ure of a particular species is not required in every
`case for anticipation because disclosure of a small
`genus can be a disclosure of each species within the
`genus. See Atofina, 441 F.3d at 999 (citing In re
`Petering, 301 F.2d at 682). Ineos does not dispute
`that behenamide falls within the narrow genus of
`saturated fatty acid amides having 12 to 35 carbon
`atoms. And Ineos provided no detailed information
`on how large this genus is to support its contention
`that this genus does not disclose behenamide. In(cid:173)
`eos's inventor declaration does not state that behen(cid:173)
`amide is not a common lubricant within this spe(cid:173)
`cies. We conclude that Ineos did not raise a genuine
`dispute of material fact with respect to claim 3.
`
`CONCLUSION
`
`© 2015 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`7
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`Page 8
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`--- F.3d ----, 2015 WL 1727013 (C.A.Fed. (Tex.))
`(Cite as: 2015 WL 1727013 (C.A.Fed. (Tex.)))
`
`We affirm the grant of summary judgment of
`anticipation.
`
`AFFIRMED.
`
`No costs.
`
`COSTS
`
`FNl . The parties agree for purposes of this
`appeal
`that measurements
`in "% by
`weight" are equivalent to measurements in
`"parts by weight."
`
`FN2. Ineos also cited an expert who testi(cid:173)
`fied about criticality, but Ineos agrees that
`expert testimony was limited to the critic(cid:173)
`ality of the range recited in limitation 3.
`Oral Arg. at 33:15-28, available at http :!/
`oralargu-
`ments. cafe. uscourts.gov /default.aspx?fl=20
`14-1540.mp3.
`
`FN3. Dependent claim 10 recites the com(cid:173)
`position of claim 1 that is free of a subsidi(cid:173)
`ary lubricant (i.e., 0% subsidiary lubric(cid:173)
`ant). The court concluded that the '846 pat(cid:173)
`ent's disclosure of an optional subsidiary
`lubricant anticipates claim 10. Summary
`Judgment Order at 21-22. We affirm.
`
`C.A.Fed. (Tex.),2015.
`Ineos USA LLC v. Berry Plastics Corp.
`--- F.3d ----, 2015 WL 1727013 (C.A.Fed. (Tex.))
`
`END OF DOCUMENT
`
`© 2015 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`8
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