Cobbling snippets together — does not teach

Patent prosecutors and their clients are familiar with an examiner picking and choosing unrelated pieces of text from a lengthy reference in order to reject a claim.  The Federal Circuit has noted that this is improper in the context of anticipation when the reference does not teach the elements of the claim as arranged in the claim.  The Federal Circuit has had occassion to reiterate this rule over the last couple of years in Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323 (Fed. Cir. 2008) and in NetMoneyIn v. Verisign, 545 F.3d 1359 (Fed. Cir. 2008).  Even more recently in Therasense v. Becton Dickinson and Co., 2009-1008 (Fed. Cir. Jan. 25, 2010) the Federal Circuit stated:


The way in which the elements are arranged or combined in the claim must itself be disclosed, either expressly or inherently, in an anticipatory reference. “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). The requirement that the prior art elements themselves be “arranged as in the claim” means that claims cannot be “treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.” Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984). “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added).


The concept of “inherent disclosure” does not alter the requirement that all elements must be disclosed in an anticipatory reference in the same way as they are arranged or combined in the claim. “[A]nticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation . . . .” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)); see also Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (“Inherent anticipation requires that the missing descriptive material is ‘necessarily present,’ not merely probably or possibly present, in the prior art.” (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999))). For a claim to be anticipated, each claim element must be disclosed, either expressly or inherently, in a single prior art reference, and the claimed arrangement or combination of those elements must also be disclosed, either expressly or inherently, in that same prior art reference.



In the context of inducing infringement, judges of the Federal Circuit have expressed a similar principle as well.  Namely, in the oral argument of E-Pass Technologies, Inc. v. 3COM Corp. et al., 2006-1356 (Fed. Cir. Jan. 12, 2007), the plaintiff asserted that pieces of information contained in a lengthy instruction manual for a PDA were sufficient to induce direct infringement of a method claim.  Chief Judge Michel and Judge Linn expressed significant doubt about such a theory because it required cobbling together snippets of information contained at disparate parts throughout the instruction manual.  [Listen] and [Listen].  In its opinion, the panel stated:


In contrast, the evidence here shows, at best, that the Palm defendants taught their customers each step of the claimed method in isolation. Nowhere do the manual excerpts teach all of the steps of the claimed method together, much less in the required order. Accordingly, it requires too speculative a leap to conclude that any customer actually performed the claimed method. Indeed, the very same record evidence upon which E-Pass attempts to rely also shows that the accused PDAs are general-purpose computing devices that can be used for a variety of purposes and in a variety of ways. In comparison, the device at issue in Moleculon was intended to be used in only one way—to practice the infringing method—and that method was explicitly taught by the proffered instructions. Id. If, as E-Pass argues, it is “unfathomable” that no user in possession of one of the accused devices and its manual has practiced the accused method, see E-Pass Repl. Br. at 16, E-Pass should have had no difficulty in meeting its burden of proof and in introducing testimony of even one such user. Having failed to meet that burden, E-Pass has no basis to overturn the district court’s decision.

You can listen to the entire E-Pass oral argument here: [Listen].

You can read the court’s  E-Pass opinion here: [Read].

You can listen to the oral argument in Therasense here: [Listen].

You can read the court’s Therasense opinion here: [Read].

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