Assessing patent validity: Prior art can anticipate patent claim even if claim is non-obvious

When determining whether a patent claim is valid in view of prior art, the USPTO or a court will examine whether a single prior art item anticipates the claim, or whether a combination of prior art renders it obvious.  In a recent Federal Circuit case, and as Josh Slavitt of Pepper Hamilton LLP explains in a recent article, “the Federal Circuit took the opportunity to articulate a subtle point of patent law that has a potentially significant impact in patent litigation strategy.”

In the case, Cohesive Technologies v. Water Corp., the Federal Circuit explained that anticipation and obviousness require different analyses:

While it is commonly understood that prior art references that anticipate a claim will usually render that claim obvious, it is not necessarily true that a verdict of nonobviousness forecloses anticipation.

The court illustrated this distinction by reciting an example:

[T]here may be a centuries-old alchemy textbook that, while not describing any metal alloys, describes a method that, if practiced precisely, actually produces the claimed alloy. While the prior art alchemy textbook inherently anticipates the claim under § 102, the claim may not be said to be obvious under § 103.

More details about how the case may affect litigation strategy are found in Slavitt’s article, available herePatently-O has also published an article with related discussion about the case, available here.

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