Case: ClearValue, Inc. v. Pearl River Polymers, Inc., No. 2011-1078 (Fed. Cir. Feb. 17, 2012).
When the business relationship between ClearValue and Pearl River soured, ClearValue sued Pearl River, accusing Pearl River of (1) indirectly infringing its patent by selling a polymer that purchasers used to infringe directly; and (2) misappropriating its trade secret. The jury found in favor of ClearValue on both claims. The district court denied Pearl River’s motion for JMOL of invalidity based on anticipation and obviousness and granted its motion for JMOL of no trade secret misappropriation. Both parties appealed.
On appeal, the Federal Circuit reversed the district court’s denial of Pearl River’s motion for JMOL of invalidity. Specifically, the Federal Circuit held that the district court erred by relying on expert testimony relevant to the obviousness determination, but irrelevant to the anticipation determination to conclude that the jury’s finding of no anticipation was supported by substantial evidence.
The Federal Circuit then considered whether substantial evidence supported the jury’s finding. Because the prior art taught clarifying water with alkalinity of 150 ppm or less, and claim 1 taught the same process for water with alkalinity of less than or equal to 50 ppm, Pearl River argued that the prior art anticipated claim 1. ClearValue conceded that point, but, relying on Atofina v. Great Lakes Chemical Corporation, 441 F.3d 991 (Fed. Cir. 2006), argued that the prior art was too broad to anticipate claim 1.
Atofina involved a patent claiming a “a method for synthesizing difluoromethane” and a range of temperatures for carrying out that reaction. Slip Opinion at 7. Although the prior art stated a temperature range that was “broader than and fully encompassed” the claimed temperature range, the Federal Circuit held that, “[g]iven the considerable difference between the claimed range and the range in the prior art, no reasonable fact finder could conclude that the prior art describe[d] the claimed range with sufficient specificity to anticipate this limitation of the claim.” Atofina, 441 F.3d at 999.
The Federal Circuit revisited the patent at issue in Atofina to describe “considerable difference” in greater detail. The patent in Atofina emphasized the claimed temperature range, describing it “as ‘critical’ to enable the process to operate effectively” and stating that the synthesis reaction “must be carried out at a temperature” within the claimed range. Slip Opinion at 7, 8. If the temperature is outside the claimed range, then “one of ordinary skill would have expected the synthesis process to operate differently.” Slip Opinion at 7.
Rejecting ClearValue’s argument, the Federal Circuit distinguished Atofina. Unlike Atofina, nothing demonstrated that “different portions of the broad range [water with alkalinity of 150 ppm or less] work[ed] differently” and nothing in the patent described claim 1’s range as “critical” to the operation of the clarification process. Slip Opinion at 8. Without any “allegation of criticality or any evidence demonstrating any difference across the range,” no “considerable difference” existed between a process clarifying water with the prior art’s alkalinity and claim 1’s alkalinity. Id. Without any “considerable difference,” the prior art anticipated claim 1, and substantial evidence did not support the jury’s finding.
Finally, the Federal Circuit affirmed the district court’s grant of Pearl River’s JMOL motion. The jury’s finding that Pearl River misappropriated ClearValue’s trade secret was not supported by substantial evidence because, as the district court similarly found, prior art “publicly disclosed Trade Secret #1 before ClearValue communicated the alleged secret to Pear River.” Slip Opinion at 10.