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Patent Challenger Entitled to Remand on Anticipation Despite Jury Verdict of Nonobviousness

Client Alert | 1 min read | 10.22.08

In Cohesive Technologies, Inc. v. Waters Corp. (Nos. 08-1029, -1030, -1031, -1032, -1059; October 7, 2008), the Federal Circuit reverses a district court's judgment as a matter of law of no anticipation and remands for consideration of the patent challenger's anticipation defense.

Near the end of trial, the district court decided not to charge the jury on anticipation because the defendant's anticipation case was "iffy" and because declining to charge on anticipation would not harm the defendant. In direct contravention to the district court, the Federal Circuit holds that an "iffy" case does not foreclose a reasonable jury from finding anticipation. Furthermore, the Federal Circuit holds the district court incorrectly concluded a directed verdict on anticipation would not harm the defendant. While acknowledging the maxim that anticipation is the "epitome of obviousness" and the jury's verdict of nonobviousness, the court clarifies that anticipation under 35 U.S.C. §102 and obviousness under 35 U.S.C. §103 are separate defenses. Specifically, anticipation and obviousness require different elements of proof. For example, anticipation requires that a single prior art reference disclose all the elements of a claim, while obviousness requires analysis of secondary considerations. Thus, a finding of nonobviousness does not necessarily exclude anticipation.

The Federal Circuit provides a prophetic example of an invention that is anticipated, yet nonobvious. A claim to a particular alloy of metal may exhibit many secondary considerations proving nonobviousness such as, for example, long felt but unsolved need, failure of others, recognition by others, and commercial success. However, an old alchemy textbook may describe a method, when practiced, that produces the claimed alloy even though the textbook does not disclose any particular metal alloys. The textbook would inherently anticipate the claimed alloy, although it is nonobvious.

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Client Alert | 1 min read | 07.08.26

CAS Board Publishes Final Rule Rescinding CAS 404, 408, 409, and 4117

As part of its ongoing effort to conform the Cost Accounting Standards (“CAS”) to generally accepted accounting principles (“GAAP”), the CAS Board published a final rule rescinding CAS 408 (Accounting for costs of compensated personal absence) and CAS 411 (Accounting for acquisition costs of material).  The CAS Board also rescinded CAS 404 (Capitalization of tangible assets) and CAS 409 (Depreciation of tangible capital assets) but retained certain requirements of CAS 404 and 409, which will be located in new paragraphs of CAS 405 (Accounting for unallowable costs).  Specifically, the CAS Board retained the requirements currently located at CAS 404-50(d)(1), CAS 409-50(e)(5), CAS 409-50(j)(1), and CAS 409-50(j)(4), which the CAS Board explained are necessary to protect the Government’s interests.  Otherwise, the CAS Board determined that the requirements of CAS 404, 408, 409, and 411 overlapped with GAAP such that GAAP “may be applied reasonably as a substitute for CAS to support contract cost and pricing.”...

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