【判例】文字摘錄

http://fedcir.gov/opinions/04-1405.pdf

That which infringes, if later, would anticipate, if earlier.
引證案如果作為後案會侵權本案，則作為前案就會預見本案。
the question whether a reference ‘teaches away’ from the invention is inapplicable to an anticipation analysis.
teaches away不適合用作新穎性的分析。

Upsher-Smith concedes that the European Application contains every element of the asserted claims of the ’624 and ’646 patents except the limitation “essentially free of antioxidants.” Nevertheless, Upsher-Smith argues that because the European Application optionally includes antioxidants the district court erred in finding that it anticipates a limitation that expressly excludes antioxidants.

First, Upsher-Smith argues that the district court erred by placing the burden on Upsher-Smith to prove that the negative limitation was not found in the prior art rather than on Pamlab to prove the presence of the negative limitation in the prior art. The district court did not so err. A century-old axiom of patent law holds that a product “which would literally infringe if later in time anticipates if earlier.” Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003) (quoting Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001)); accord Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889) (“That which infringes, if later, would anticipate, if earlier.”). The European Application’s “optional inclusion” of antioxidants teaches vitamin supplement compositions that both do and do not contain antioxidants. Thus, because compositions made according to the European Application that do not contain antioxidants would infringe the asserted claims of the ’624 and ’646 patents, those compositions anticipate the asserted claims despite no express teaching to exclude the antioxidants in the European Application. Consequently, Pamlab presented a prima facie case of anticipation, and the district court properly placed the burden on Upsher-Smith to present rebuttal evidence sufficient to raise a genuine issue of material fact of no anticipation by the European Application.

In an attempt to rebut Pamlab’s evidence of anticipation, Upsher-Smith argues that the European Application’s discussion of the benefits of adding antioxidants to the compositions actually teaches away from expressly excluding antioxidants. However, “a reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. Thus, the question whether a reference ‘teaches away’ from the invention is inapplicable to an anticipation analysis.” Bristol-Myers Squibb Co., 246 F.3d at 1378 (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Consequently, this argument does not raise an issue of material fact.
Upsher-Smith argues next that the European Application teaches a “genus” of compositions that cannot anticipate the “species” compositions claimed in the ’624 and ’646 patents. This court has recognized that a prior “genus” will not necessarily prevent patenting of a “species.” Eli Lilly & Co. v. Bd. of Regents of the Univ. of Wa., 334 F.3d 1264, 1270 (Fed. Cir. 2003). However, this principle is not applicable to the facts of this case because the asserted claims of the ’624 and ’646 patents are not limited to a “species” of the compositions taught by the European Application. The compositions claimed in the ’624 and ’646 patents are as equally broad as the compositions taught by the European Application without antioxidants. Consequently, the claims of the ’624 and ’646 patents are not “species” of the compositions taught by the European Application.

At the heart of this case, Dr. Herbert appears to have been the first to precisely articulate that antioxidants destroy vitamin B12 and folate. Consequently, he observed that vitamin supplement compositions comprising vitamin B12 and folate are more effective without antioxidants. At the time of Dr. Herbert’s observation, however, vitamin supplement compositions consisting of vitamin B12 and folate and essentially free of antioxidants were known in the prior art. While this court does not discount the significance of Dr. Herbert’s discovery, “[t]he public remains free to make, use or sell prior art compositions or processes, regardless of whether or not they understand their complete makeup or the underlying scientific principles which allow them to operate.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1348-49 (Fed. Cir. 1999); accord Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379-80 (Fed. Cir. 2003). Consequently, Dr. Herbert’s discovery of the scientific principles explaining the reasons that prior art vitamin supplement compositions comprising vitamin B12 and folate and essentially free of antioxidants are more effective than similar compositions containing antioxidants does not entitle him to remove that prior art from the public domain by patenting those compositions.
This case comes very close to the reasoning in EMI Group North America, Inc. v. Cypress Semiconductor Corp., 268 F.3d 1342 (Fed. Cir. 2001). In that case, this court explained that people had used fires for thousands of years before the first discovery of oxygen as a component of combustion. The first discoverer of the role of oxygen could not have hypothetically claimed a method of making fire with oxygen. Id. at 1351. Similarly, Dr. Herbert cannot withdraw some vitamin compositions from the public domain by explaining or purporting to claim the scientific underpinnings of their operation.