Chapter §7.03 Inherent Anticipation
| Jurisdiction | United States |
§7.03 Inherent Anticipation
[A] Generally
[1] "Necessarily Present"
The strict identity rule for anticipation provides that to anticipate a claimed invention, a single prior art reference must disclose every element of that invention, arranged as in the claim.154 A reference's disclosure of individual elements is usually explicit, but case law makes clear that the disclosure can also be inherent.155
The test for inherent anticipation is exacting, however. "A party seeking to establish inherent anticipation must show that a person of ordinary skill in the art would recognize that missing descriptive matter in a prior art reference is nevertheless necessarily present."156 The reference relied on must necessarily include the unstated limitation.157 Inherent anticipation cannot result from probabilities.158
The question " '[w]hether a claim limitation is inherent in a prior art reference is a [one] of fact.' "159 If the USPTO makes that factual determination, the Federal Circuit will review it under the deferential "substantial evidence" standard of review.
[2] Reference Failing to "Necessarily Disclose"
If inherency is to be relied upon to destroy novelty, it must be certain:
Inherency . . . 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. [Citations omitted.] If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient. 160
The Federal Circuit's December 2017 decision in HTC Corp. v. Cellular Commn's Equip., LLC161 illustrates prior art that did not necessarily or with certainty disclose claimed subject matter, and thus did not inherently anticipate.
Petitioners including HTC challenged Cellular Communication Equipment's (CCE's) U.S. Patent No. 7,941,174 ('174 patent) in an inter partes review. The PTAB instituted an IPR proceeding on grounds including that certain claims of the '174 patent were anticipated by a "Baker" prior art reference. In its final written decision, however, the Board rejected petitioner HTC's anticipation argument, concluding that HTC had failed to show that any of the challenged claims were unpatentable. In particular, the Board found that the Baker reference did not either explicitly or inherently disclose a particular claim limitation. The "mere possibility" that Baker might disclose the disputed limitation was not enough. The Federal Circuit affirmed the Board's finding of no anticipation for the reasons explained below.162
CCE's '174 patent (originally assigned to Nokia Siemens Networks GmbH & Co. KG) was titled "Method for multicode transmission by a subscriber station" and claimed priority to 2004. The patent concerned an efficient method for operating a radio communication system. According to the patent, mobile radio communication systems are often embodied as cellular systems including those conforming to the UMTS (Universal Mobile Telecommunications System) standard. Such systems have a network infrastructure formed of base stations, devices for monitoring and controlling the base stations, and further network-side equipment. The methods and apparatuses of the '174 patent assigned a plurality of codes for transmitting messages to "subscriber stations"; i.e., mobile devices. The assigned codes corresponded to data transmission channels in a UMTS, including an Enhanced Dedicated Uplink Channel (EDCH) for transmitting high bit rate messages.
The problem addressed by the '174 patent concerned the need to operate at maximum transmission power when radio conditions deteriorated. Operating at maximum transmission power meant that a subscriber station could not further increase transmission power to overcome the poor conditions, resulting in incomplete or aborted messages. To avoid this problem, the claimed invention set a "transmit power difference" or "power headroom" for the plurality of codes in the subscriber station at the beginning of a message transmission. Setting this power headroom permitted the subscriber station to increase transmit power when sending messages, thus overcoming interference and avoiding aborted message transmission. The transmit power difference "correspond[ed] to an unused transmit power at the start of the transmission" of a message, such as a message transmitted over an EDCH.163 The '174 patent also recognized that an EDCH message was measured in intervals of 10 milliseconds, which transmission time interval was referred to as a "frame."
Like the '174 patent, the prior art reference Baker (U.S. Patent Application Publication No. 2008/0151840) concerned a UMTS communication system. In the Baker system, a mobile station transmitted an acknowledgement ("ACK") signal or a non-acknowledgement ("NACK") signal to a base station upon receiving data from the base station. For the duration of the ACK/NACK transmission, the system scaled down the maximum transmit power allocated to the system's two transmission channels, the dedicated physical data channel ("DPDCH") and the dedicated physical control channel ("DPCCH"). Baker explained that "at the boundary of the frame or time slot immediately preceding the sending of an ACK or NACK, these amplitudes [transmit power] are adjusted by for example reducing DPCCH. . . ."164
Baker described amplitude adjustment at the boundary of the frame or timeslot immediately preceding the ACK/NACK signal, explaining that "at the boundary of the frame or time slot immediately preceding the sending of an ACK or NACK, these amplitudes [PC1 and PD1, the transmit power associated with each of the two transmission channels, DPDCH and DPCCH] are adjusted by for example reducing DPCCH whilst maintaining the power ratio PD/PC constant."165 Baker thus left capacity for the transmission of the ACK/NACK signal or for other types of signaling information.
The Board determined that Baker's teaching was not an express disclosure of "the start of a message transmission" limitation as recited in the '174 patent claims. It further determined that Baker did not inherently anticipate the "start of a message transmission" limitation. The Board found that petitioner HTC had failed to show that the Baker reference disclosed a mobile station that transmitted EDCH messages. It relied on an admission from HTC's counsel during oral argument that he did not know whether " 'Baker [was] talking about an EDCH message and not something else that can be more than one frame.' "166 Absent evidence that Baker disclosed a mobile station that sent single-frame EDCH messages, the Board found that the start of a frame in Baker was not inherently the claim-recited "start of a message transmission."167
The Federal Circuit affirmed, agreeing with the Board that HTC did not identify any disclosure in Baker showing that the frame boundary immediately preceding Baker's ACK/NACK transmission was the "start of a message transmission."168 Baker's description of the boundary of the frame or timeslot immediately preceding Baker's ACK/NACK signal did not expressly disclose the "start of a message transmission" limitation of the '174 claims.
Moreover, the Circuit agreed with the Board's finding that the start of a frame in Baker was not inherently the "start of a message transmission." Not having shown that Baker transmits EDCH messages, petitioner HTC had "only shown that it [was] possible for the start of a frame preceding an ACK/NACK signal to correspond to the start of a message transmission."169 This possibility was not the same as necessarily disclosing the "start of a message transmission" limitation. Accordingly, the Board's finding of no inherent anticipation was supported by substantial evidence.170
[3] Use of Extrinsic Evidence to Establish Inherency
One recognized exception to the "four corners" standard for anticipation examined supra171 is that evidence beyond a single prior art reference can be used to prove what that reference inherently discloses.172 The Federal Circuit holds that extrinsic evidence may be used to support what is "necessarily present" in a prior art reference's teaching. That is, "[e]xtrinsic evidence 'may be used to interpret the allegedly anticipating reference and [to] shed light on what it would have meant to [a PHOSITA].' "173 Such evidence need not be prior art; that is, it need not antedate the claimed invention (or the allegedly anticipatory reference).174
For example, suppose that the USPTO is examining for novelty a claim to "a container structure comprising a plurality of plastic ribs that are hollow." The examiner has located a prior art printed publication showing a container with several plastic ribs. This primary reference does not explicitly state that the ribs are hollow, but it does indicate that the ribs were formed by conventional blow-molding techniques.
If other evidence extrinsic to the primary reference (e.g., other documents or expert testimony) establishes that use of the blow-molding process would necessarily have resulted in hollow ribs, then the examiner would be justified in concluding that the primary reference inherently disclosed the "hollow" feature.175 Stated another way, practice of the prior art reference would inevitably have resulted in the claimed invention. A rejection of the claim for anticipation would be justified under these circumstances.176 If, however, the extrinsic evidence presents a legitimate question as to whether the blow-molding process would have resulted in hollow ribs, then anticipation by inherency has not been established.
The Circuit's January 2018 decision in Monsanto Tech. LLC v E.I. DuPont de Nemours & Co. illustrates the analysis.177 There the appellate court affirmed the PTAB's determination in an inter partes review that certain claims...
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