## United States Court of Appeals for the Federal Circuit

2008-1029, -1030, -1031, -1032, -1059

COHESIVE TECHNOLOGIES, INC., Plaintiff-Appellant,

v.
WATERS CORPORATION, Defendant-Cross Appellant. Robert H. Stier, Jr. , Pierce Atwood LLP, of Portl and, Maine, argued for plaintiffappellant. With him on the br ief were Michael J. Sullivan and Sean L. Sweeney

. Wiilliam A. Scofield, Jr. , Lahive & Cockfield, LLP, of Boston, Massachusetts, argued for defendant-cross appellant. With hi m on the brief was Sibley P. Reppert

. Appealed from: United States District C ourt for the District of Massachusetts Judge Douglas P. Woodlock

## United States Court of Appeals for the Federal Circuit 2008-1029, -1030, -1031, -1032, -1059

COHESIVE TECHNOLOGIES, INC., Plaintiff-Appellant,

v. WATERS CORPORATION, Defendant-Cross Appellant.

Appeal from the United States District Court for the District of Massachusetts in case nos. 98-CV-12308, 99-CV-1152 8, and 01-CV-12307, Judge Douglas P. Woodlock.

__________________________ DECIDED: October 7, 2008

__________________________ Before MAYER, LINN, and PROST, Circuit Judges

. Opinion for the court filed by Circuit Judge LINN. Dissenting opinion filed by Circuit Judge MAYER. LINN, Circuit Judge

. This is a patent infringem ent case. Cohesive Technologies, Inc. (“Cohesive”) brought three related actions accusing Waters Corporation (“Waters”) of infringing U.S. Patent No. 5,772,874 (the “’874 patent”) and U.S. Pat ent No. 5,919,368 (the “’368 patent”). In the first action, No. 98- CV-12308, Cohesive accused Waters’s 30 μ m Oasis high-performance liquid chromatography (“HPLC”) columns (the “30 μ m columns”) of infringing the ’874 patent. See Cohesive Techs., Inc. v. Waters Corp. , 526 F. Supp. 2d 84, 88 (D. Mass. 2007). In the second acti on, No. 99-CV-11528, Cohesive accused the same 30 μ m columns of infringing the ’368 patent. See id. In the third action, No. 01-CV-12307, Cohesive accused Waters’s 25 μ m Oasis HPLC columns (the “25 μ m columns”) of infringing both patents. See id. A jury in the first action found that t he ’874 patent was not invalid, and that the 30 μ m columns infringed the ’874 patent. See id. The district court then held a combined bench trial and hearing on damages, willful infringement, and inequitable conduct in the first action, and on preliminary injunction and summary judgment motions in the second and third actions. The district court entered judgment in favor of Cohesive in the first action, granted Cohesive’s moti on for summary judgment of infringement and no invalidity in the second action, and awarded damages. Id. at 126. However, in the third action, the district court granted Waters’s motion for summary judgment of noninfringement, concluding that the 25 μ m products did not infr inge either patent. Id. Both parties appeal numerous aspects of the judgment. As to the 30 μ m products, we conclude that the district court correctly construed the term “rigid” and properly denied Waters’s motion for judgment of noninfringement as a matter of law. We further conclude that t he district court committed no clear error in concluding that Waters failed to prove the dec eptive intent necessary to sustain its claim of inequitable conduct. However, we agree wi th Waters that the district court was wrong to enter judgment as a matter of law on anticipation without submitting the issue to the jury. As to the 25 μ m products, we disagree with the di strict court’s construction of “greater than about 30 μ m.” Under the correct constructi on, Waters was not entitled to summary judgment of no literal in fringement. The district court was, however, correct to

2008-1029, -1030, -1031, -1032, -1059 2grant Waters’s motion for summary judgmentof no infringement under the doctrine of equivalents, though not for t he reasons that the distri ct court articulated. As to damages, because the district court incorrectly considered the 25 μ m product as an acceptable noninfringing substitu te, and because it is unclear whether the other available product, standi ng alone, would have been an acceptable substitute, we vacate the district court’s judgment that C ohesive was not entitled to lost profits and remand for reconsideration by the district court in the first instance. We find no clear error in the district court’s conclusion that Waters’s infringement was not willful. Finally, we decline Cohesive’s request to assign this ma tter to a different di strict court judge on remand. Accordingly, we a ffirm-in-part, reverse-in-part, va cate-in-part, and remand. I. BACKGROUND The ’874 and ’368 pat ents both relate to HPLC. HPLC is a process for separating, identifying, and measuring compounds co ntained in a liquid. Pharmaceutical companies often use HPLC in drug testing to separate absorbed compounds from blood. In HPLC, a liquid containing the compounds to be measured is passed under pressure through a packed co lumn of chromatographically active particles. See ’874 patent col.1 ll.24-28. Becaus e the different molecular components in the liquid have different affinities for t he particles in the column, each component is extracted from the liquid at a different rate and, therefore, at a di fferent location along the column. See id. col.1 ll.28-32. The effectiveness of HPLC at separating molecules from the liquid depends on several variables, including the size and structure of the particles in the column. See id. col.2 ll.3-19. The ’368 patent issued from a divisiona l application of t he application that resulted in the ’874 patent, and the patents s hare the same specification. Cohesive
2008-1029, -1030, -1031, -1032, -1059 3asserted claims 1, 3, 7, 9, 15, 16, and 20 of the ’8 74 patent and claims 1, 3, and 8 of the ’368 patent. See Cohesive , 526 F. Supp. 2d at 107. Claim 1 of the ’874 patent recites: Chromatography apparatus compri sing, in combination, a chromatographic body formed as a substantially uniformly distributed multiplicity of rigi d, solid, porous particles with chromatographically active surfaces , said particles having average diameters of greater than about 30 μ m, the interstitial volume between said particles being not less than about 45% of the total volume of said column; and means for loading said surfaces wit h at least one solute that is reactive with said surfaces, by fl owing a liquid mixture containing said solute through said body at a velocity sufficient to induce flow of said mixture wit hin at least a substantial portion of said interstitial volume at a reduced velocity greater than about 5,000. ’874 patent col.20 ll.20-34. Each of the a sserted claims requires essentially the same two key limitations at issue in this appeal: particles that are “rigid” and have average diameters “greater than about 30 μ m.” See id. col.20 ll.38-42, 54-56, 60-65 (claims 3, 7, and 9 depending from claim 1); id. col.21 l.36-col.22 l.8 (claim 15 requiring “rigid solid particles” having “substantially uniform m ean diameters of not less than about 30 μ m”); id. col.22 ll.9-21 (claim 16 requiring “rigid, solid, porous particles” with “substantially uniform average diameters in the range between about 30 to about 500 μ m”); id. col.22 ll.33-35 (claim 20 depending from claim 16); ’368 patent col.20 ll.14-28 (claim 1 requiring step of “packing . . . rigid, solid, porous particles” with “average diameters of not less than about 30 μ m”); id. col.20 ll.32-36, 53-56 (cla ims 3 and 8 depending from claim 1). 1

1 Although “greater than” and “between” 30 μ m and a larger number would not encompass exactly30 μ m, while “not less than” 30 μ m would, this distinction is not relevant for our analysis in this case.
2008-1029, -1030, -1031, -1032, -1059 4Cohesive brought its first infringement ac tion against Waters in 1998, alleging that the 30 μ m columns infringed the ’874 patent. In 1999, while the first action was pending, the ’368 patent issued. Cohesive then filed a second in fringement action against Waters, asserting that use of the same 30 μ m columns infringed the method claims of the ’368 patent. In 2001, the district court hel d a sixteen-day jury trial in the first action. During trial, Waters alleged and presented evidence that the claims of the ’874 patent were anticipated by seven s eparate prior art references. Waters also alleged that the claims of the ’874 patent were obvi ous, both in light of each re ference independently, and in light of various combinations of the referenc es. Over Waters’s obj ection, the district court chose not to submit anticipation to the jury, because Waters had alleged obviousness, and the district court “[though t] of anticipation as being a subset of obviousness.” J.A. 5710. Accordingly, the district court sua sponte entered a directed verdict in favor of Cohesive, finding t hat the ’874 patent wa s not anticipated. Cohesive , 526 F. Supp. 2d at 89. The jury returned a verdict finding that the 30 μ m columns infringed the ’874 patent and that the ’874 patent was not obvious. By the time of the verdict, Waters had stopped selling the 30 μ m columns, and instead was selling a replacement product with smaller particles—the 25 μ m columns. Cohesive then filed its third infringement action, alleging that t he replacement 25 μ m columns infringed both the ’874 and the ’368 patents. Cohesive moved for a preliminary injunction against the 25 μ m columns. The district court held a combined benc h trial and hearing in 2002. At that proceeding, the court heard evidence and argument on the issues of inequitable

2008-1029, -1030, -1031, -1032, -1059 5conduct, willful infringement, and damages in the first case. Id. at 88. The district court also considered the parties’ cross-motions for summary judgment in the second case, concerning whether those same 30 μ m columns infringed the ’368 patent. Id. at 89. Additionally, at the request of the district court, Cohesiv e presented its motion for a preliminary injunction in the third ca se (concerning the replacement 25 μ m columns) in the form of a motion for summary judgment, and Waters made an oral cross-motion for summary judgment of noninfri ngement at the hearing. Five years later, the district court entered a memorandum and order disposing of all issues in all three cases. In the first case, concerning infringe ment of the ’874 patent by the 30 μ m columns, the district court: (1) deni ed Waters’s post-trial motions for judgment as a matter of law on infringement and invalidity, id. at 95; (2) found that Waters had failed to meet its bur den to prove inequitable conduct, id. at 103; and (3) found that Waters’s in fringement was not willful, id. at 106-07. In the second case, concerning infringement of the ’368 patent by the 30 μ m columns, on cross-motions for summary judgment, the district court: (1) granted Cohesive’s motion for summary judgment of direct and indirect infringement, id. at 112; and (2) granted Cohesive’s motion for summary judgment of no invalidity, id. at 113. In the th ird case, concerning infringement of bot h patents by the 25 μ m columns, the district court granted summary judgment of noninfringement in favor of Waters, finding that the 25 μ m columns did not meet, either literally or by equ ivalents, the claim limitations requiring particle size greater than “about 30 μ m.” Id. at 116. Finally, as to damages , the district court held that Cohesive was not entitled to lostprofits as a matter of law, id. at 121, and ordered payment of a reasonable royalty on sales of the 30 μ m columns, id. at 125.

2008-1029, -1030, -1031, -1032, -1059 6Cohesive timely appealed on the issues of: (1) claim construction of the term “about 30 μ m”; (2) summary judgment of noninfringement by the 25 μ m columns; (3) lost profits; (4) willful infringement; and (5) enhanced damages. Cohesive also requested that the case be assigned to a diffe rent district judge on remand. Waters timely cross-appealed on the issues of: (1) cl aim construction of the term “rigid”; (2) denial of judgment as a matter of law of noninfringement by the 30 μ m columns; (3) grant of judgment as a matter of law on an ticipation; and (4) ine quitable conduct. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). II. DISCUSSION A. The 30 μ m Columns We first address whether the district court properly concluded that the ’874 patent was infringed by the 30 μ m columns, not invalid, and not unenforceable. 1. Claim Construction Waters challenges the district court’s cons truction of the term “rigid,” which is common to all asserted claims. The districtcourt construed “rigid” to mean “an object’s capacity to maintain substantially zero ch anges in density and volume under packing pressure of at least about 5000 psi and as a c onsequence substantially to resist plastic deformation under such pressure.” Cohesive , 526 F. Supp. 2d at 89. The district court construed “rigid” so that it did not “exc lude polymeric particles (as opposed to the monomeric particles referred to in the pr eferred embodiment of the ’874 patent).” Id. Waters argues that the failure to exclude polymeric particles in the construction of “rigid” was error, because, during prosecution, Cohe sive disclaimed polymeric particles as not being rigid.

2008-1029, -1030, -1031, -1032, -1059 7Claim construction is an issue of law, Markman v. Westview Instruments, Inc. , 52 F.3d 967, 970-71 (Fed. Cir. 1995) ( en banc), that we review de novo , Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). We determine the ordinary and customary meaning of undefined claim terms as understood by a person of ordinary skill in the art at the time of the invention, using the methodology in Phillips v. AWH Corp. , 415 F.3d 1303, 1312-19 (Fed. Cir. 2005) (en banc). “[T]he court looks to those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean. Those sour ces include the words of the claims themselves, the remainder of the specification, the pros ecution history, and extrinsic evidence concerning re levant scientific principles , the meaning of technical terms, and the state of the art.” Id. at 1314 (internal quotation marks and citations omitted). Here, there is no argument that the ordi nary meaning of the word “rigid” itself requires that a particle be monomeric, rath er than polymeric. Likewise, although the embodiments of the invention de scribed in the specification all disclose only monomeric particles, see, e.g. , ’874 patent col.13 ll.29-32, col.14 l.58, col.18, l.21, those embodiments cannot limitthe otherwise broad claim term “rigid.” See Phillips , 415 F.3d at 1323 (“[A]lthough the specificat ion often describes very s pecific embodiments of the invention, we have repeatedly warned agai nst confining the claims to those embodiments.”). Waters argues, however, that Cohesive disclaimed polymeric particles during prosecution. The examiner re jected the claims of the ’874 patent as anticipated by or obvious over U.S. Patent No . 5,019,270, issued to Noubar B. Afeyan et al. (“Afeyan”).

2008-1029, -1030, -1031, -1032, -1059 8In response, Cohesive argued that, unlike Afey an, the claims required “truly rigid” particles. J.A. 418. Additionally, Cohesive s ubmitted to the examiner the declaration of chromatography expert George Guiochon, pur suant to 35 C.F.R. § 1.132. In his declaration, Guiochon distinguished between t he particles in the claimed invention and the particles described in Afeyan: While Afeyan et al mention that they desire their particles to be rigid solids, such comment can be read best in the light of their teachings . . . that mention only polymeric materials such as divinylbenzene and the like. Such polymeric material cannot be expected to maintain the requisite rigidity to withstand the pressure requi red to obtain a reduced velocity of 5000 or higher through a chromatographi c column with particles of the diameter disclosed by Afeyan et al , so cannot be considered to be a teaching of rigid solid particles within the meaning of the claims . . . . J.A. 430. Waters contends t hat the Guiochon declaration resulted in a disclaimer of “polymeric material” as not “rigid” within the meaning of the claims. “[A] patentee may limit the meaning of a claim term by making a clear and unmistakable disavowal of scope during prosecution.” Computer Docking Station Corp. v. Dell, Inc. , 519 F.3d 1366, 1374 (Fed. Cir. 2008) (quoting Purdue Pharma L.P. v. Endo Pharms., Inc. , 438 F.3d 1123, 1136 (Fed. Cir. 2006)). In this case, the Guiochon declaration does not distingui sh the Afeyan particles bec ause they are polymeric; instead, it distinguishes the particular polymeric materials taught in Afeyan— “divinylbenzene and the like”—because “ [s]uch polymeric materials” are not sufficiently rigid when exposed to the relevant level of pressure. The Guiochon declaration may, therefore, be a clear and unmis takable disavowal of the particular particles used in Afeyan, but it is not a disavowal of all polymeric particles. Waters argues further that, even if the prosecution history cannot be read to have disclaimed all polymeric particles, it nonetheless disclaimed the particular type of

2008-1029, -1030, -1031, -1032, -1059 9polymeric particles used in the accused 30 μ m columns. We disagree. The polymeric particles disclaimed in the Guiochon declarat ion were “divinylbenz ene and the like.” J.A. 430. The Afeyan patent that the Guiochon declaration distinguishes describes the composition of the particles as follows: The particles are fabricated from polym ers such as, for example, styrene cross-linked with divinylbenzene, or va rious related copolymers including such materials as p-bromostyrene, p-styryldiphenylphosphine, p-amino sytrene, vinyl chlorides, and vari ous acrylates and methacrylates, preferably designed to be heavily cro ss-linked and deriv atizable, e.g., copolymerized with a glycidyl moiety or ethylenedimethacrylate. Afeyan col.16 l.67-col.17 l.7. By contrast, the particles in the 30 μ m columns are copolymers of divinylbenzene an d n-vinylpyrrolidone. A copolymer of divinylbenzene and n-vinylpyrrolidone is not one of the polymers described in Afeyan and was not specifically disclaimed in the Guiochon declaration. Waters argues that the specific disclai mer of divinylbenzene should suffice to disclaim the polymers in the particles of the 30 μ m columns, because those particles are “made from 80% divinylbenzene. ” Br. of Defendant-Cross Ap pellant Waters Corp. at 42. But Waters ignores the fact that a divinylbenzene molecule alone and a copolymer containing 80% divinylbenzene are differ ent chemical compounds, with different properties—including different rigidities. By analogy, if a patentee disclaims “flammable substances like hydrogen” during prosecution, the patentee has notdisclaimed the nonflammable compound H 2 O, just because it is two-thirds hydrogen. In sum, we agree with the district court t hat the proper construc tion of “rigid” in the asserted claims does not require that the particles be monomeric. We affirm the district court’s construction of “rigid” as “ an object’s capacity to maintain substantially

2008-1029, -1030, -1031, -1032, -1059 10zero changes in density and volume under packi ng pressure of at least about 5000 psi and as a consequence substantially to resist plastic deformation under such pressure.” 2. Infringement Waters argues that the district court e rred by denying it judgment as a matter of law, because the evidence was insufficient to prove infringement even under the district court’s claim construction. “The grant or deni al of a motion for judgment as a matter of law is a procedural issue not unique to pat ent law, reviewed u nder the law of the regional circuit in which the appeal from the district court would usually lie.” Summit Tech., Inc. v. Nidek Co. , 363 F.3d 1219, 1223 (Fed. Cir. 2004). The First Circuit reviews the district court’s grant or denial of judgment as a matter of law de novo

. Espada v. Lugo , 312 F.3d 1, 2 (1st Cir. 2002); Larch v. Mansfield Mun. Elec. Dept. , 272 F.3d 63, 67 (1st Cir. 2001). We therefore c onsider whether the ev idence, when viewed in the light most favorable to Cohesive, would permit a reasonab le jury to find in favor of Cohesive on any permissibl e claim or theory. Larch , 272 F.3d at 67. Waters argues that the evidence at tria l was insufficient to permit a reasonable jury to conclude that the particles of the 30 μ m columns were rigid. The district court’s construction of “rigid” required that the particles: (1) “maintain substantially zero changes in density and volume under packing pressure of at least about 5000 psi”; and (2) “substantially resist plas tic deformation under such pressu re.” At trial, Cohesive’s expert gave his understanding of the terms “substantially zero changes in density and volume,” and “substantially resist plastic defo rmation.” He further testified that he had tested the particles of the 30 μ m columns by packing them at 5000 psi, that he observed “substantially zero changes in density and volume,” and that the particles did not “exhibit any plastic deformation.” J.A. 1463- 64. Thus, in response to the question, “If
2008-1029, -1030, -1031, -1032, -1059 11rigid means an object’s capacity to maintain substantially zero changes in density and volume, under a packing pressure of at least about 5,000 psi, and as a consequence, substantially to resist plastic deformation un der such pressure, do the Waters’ particles qualify as rigid?,” Cohesive’s expert answered, “Yes, they do.” J.A. 1462. This is sufficient evidence to permit a reasonab le jury to conclude that the 30 μ m columns were rigid. The district court therefore proper ly denied Waters’s motion for judgment as a matter of law of noninfringement. 3. Invalidity Waters argues that the di strict court erred by grant ing a directed verdict—i.e., judgment as a matter of law—for Cohesive on t he issue of anticipation, rather than allow the jury to decide the issue. “In reviewing t he district court’s ruling, we apply the same standards as the district court, meaning that we examine the evidence and all fair inferences in the light most favorable to [Waters] and may notconsider the credibility of witnesses, resolve conflicts in testimony, or evaluate the weight of the evidence.” Guilloty Perez v. Pierluisi , 339 F.3d 43, 50 (1st Cir. 2003) (internal quot ation marks and citations omitted). If a reasonable jury c ould have found that anyof the asserted references anticipated the patent, then judgment as a ma tter of law was improper. See Wilson v. Moreau , 492 F.3d 50, 52 (1st Cir. 2007); see also Guilloty Perez , 399 F.3d at 50 (“If we conclude that ‘fair-minded persons co uld draw different inferences from the evidence presented at trial, t he matter is for the jury,’ and judgment as a matter of law was improperly granted.” (quoting Espada , 312 F.3d at 2)). The circumstances that led to the grant of judgment as a matter of law in this case were unusual. At a ch arge conference near the end of trial, the district court indicated that it did not int end to charge the jury on antici pation. Specifically, after
2008-1029, -1030, -1031, -1032, -1059 12reviewing Waters’s evidence and argument on anticipation and obviousness, the district court concluded that “the cont entions that the defendant is making [are] best captured by obviousness,” rather than anticipation. J. A. 2654. The district court commented that, “[u]nder a strict reading, [it di d not] see the proof of anticipat ion in any of the prior art publications,” that Waters’s antic ipation case was “iffy,” and that its “gut response is that none of [the prior art references] are winner s.” J.A. 5680, 5704, 5720. Moreover, the district court commented that declining to charge on anticipation would not cause “any real harm to the defendant,” and would not “ma ke very much difference because it comes in in obviousness” J.A. 5680, 5703. The district court expressly stated that it did not understand, as a matter of “strategic ju dgment,” why a defendant “would want [a] charge on anticipation when they get one on obviousness.” J.A. 5719, 5717. The district court concluded that it could not “find her e that the requirem ents of anticipation have been met” in the submitt ed prior art references, and it therefore directed a verdict of no anticipation. J.A. 2654. The district court erred by granting judgm ent as a matter of law on the issue of anticipation before the jury was allowed to cons ider the claim. The district court did not make a finding that no reasonable jury c ould conclude that the asserted references anticipated. Rather, the districtcourt itself characterized the anticipation case as “iffy.” An “iffy” anticipation case, however, does not foreclose a favorable verdict. See Fed. R. Civ. P. 50 (requiring that the court find “that a reasonable jury would not have a legally sufficient evidentiary basis” to find for a party before granting judgm ent as a matter of law).

2008-1029, -1030, -1031, -1032, -1059 13Moreover, the district court was wrong to conclude th at granting judgment as a matter of law on anticipation would not harm Waters, simply because the jury had the opportunity to consider the same references for purposes of obviousness. Despite the often quoted maxim that ant icipation is the “epitome of obviousness,” In re Kalm , 378 F.2d 959, 962 (CCPA 1967), novelty under 35 U.S.C. § 102 and nonobviousness under 35 U.S.C. § 103 are separate conditions of patentabili ty and therefore separate defenses available in an infringement action. See 35 U.S.C. § 282 (2000); Jones v. Hardy , 727 F.2d 1524, 1529 (Fed. Cir. 1984) (“[T] hough anticipation is the epitome of obviousness, [they] are separat e and distinct concepts.”); see also Mendenhall v. Cedarapids, Inc. , 5 F.3d 1557, 1563 (Fed. Cir. 1993) (holding that verdict of nonobviousness was not inconsistent with verdic t of anticipation by prior public use, despite “legal homily” that anticipation is the epitome of obviousness); In re Meyer , 599 F.2d 1026, 1031 (CCPA 1979) (holding thatrejection under § 102 was new ground following previous rejection und er § 103, despite maxim that “anticipation is the epitome of obviousness”). 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 tests for anticipation and obviousness are different. See, e.g. , Duro-Last, Inc. v. Custom Seal, Inc. , 321 F.3d 1098, 1107-08 (Fed. Cir. 2003) (“Succinctly put, the various unenforc eability and invalidity defenses that may be raised by a defendant—inequi table conduct, the several forms of anticipation and loss of right under § 102, and obviousness under § 103—require different elements of proof.”) Obviousness can be proven by comb ining existing prior art references, while

2008-1029, -1030, -1031, -1032, -1059 14anticipation requires all elements of a claim to be disclosed within a single reference. Compare MEHL/Biophile Int’l Corp. v. Milgraum , 192 F.3d 1362, 1365 (Fed. Cir. 1999) (“To anticipate, a single reference must teach every limitation of the claimed invention.”), with Scripps Clinic & Research Found. v. Genentech, Inc. , 927 F.2d 1565, 1577 (Fed. Cir. 1991) (“If it is necessary to reach beyond the boundaries of a single reference to provide missing disclosure of t he claimed invention, the proper ground is not § 102 anticipation, but § 103 obviousne ss.”). Moreover, obviousness requires analysis of secondary considerations of nonobviousness, while secondary considerations are not an element of a claim of anticipation. Compare King Instrument Corp. v. Otari Corp. , 767 F.2d 853, 857 (Fed. Cir. 1985) (“In a § 103 obviousness analysis, Graham [ v. John Deere Co. , 383 U.S. 1 (1966)] require s that the trier assess certain underlying facts: (1) the scope and content of the prior art, (2) the level of ordinary skill in the art, (3) the differences between the claimed invention and the prior art, and (4) the so-called ‘sec ondary considerations.’”), with Hakim v. Cannon Avent Group, PLC , 479 F.3d 1313, 1319 (Fed. Cir. 2007) (“‘ Anticipation’ means that the claimed invention was previously known, and that all of the elements and limitations of the claim are described in a si ngle prior art reference.”). And although anticipation can be proven inherently, proof of inherent anticipation is notthe same as proof of obviousness. See Perricone v. Medicis Pharm. Corp. , 432 F.3d 1368, 1375 (Fed. Cir. 2005) (“[A] prior art reference without expr ess reference to a claim limitation may nonetheless anticipate by inherency.”); Trintec Indus., Inc. v. Top-U.S.A. Corp. , 295 F.3d 1292, 1296 (Fed. Cir. 2002) (“[O]bviousness is not inherent anticipation.”). Thus,

2008-1029, -1030, -1031, -1032, -1059 15“it does not follow that every technically an ticipated invention woul d also have been obvious.” In re Fracalossi , 681 F.2d 792, 796 (CCPA 1982) (Miller, J., concurring). 2
A court cannot refuse to submit the iss ue of anticipation to the jury simply because the accused infringer has also asse rted an obviousness defense. It is for the litigants—not the court—to make the strategi c decision as to whether to assert one, both, or neither of thes e defenses in a jury trial. An a ccused infringer that introduces a prior art reference and makes a non-frivolous argument that “each and every limitation of a claim is found, expressly or inherently, in [that] single prior art reference” generally

2 The dissent claims categorically that “every anticipated claim is obvious.” Postat 3. But this is not correct. Consid er, for example, a claim directed toward a particular alloy of metal. The claimed me tal alloy may have all the hallmarks of a nonobvious invention—there was a long feltbut resolved need for an alloy with the properties of the claimed al loy, others may have tried and failed to produce such an alloy, and, once disclosed, t he claimed alloy may have received high praise and seen commercial success. Nevertheless, there may be a centuries-old alchemy textbook that, while not describing anymetal alloys, describes a method that, if practiced precisely, actually produces the claimed a lloy. While the prior art alchemy textbook inherently anticipates the cl aim under § 102, the claim ma y not be said to be obvious under § 103. This is precisely why our precedent has rejected relia nce on the “legal homily” that “anticipation is the epitome of obviousness.” Mendenhall , 5 F.3d at 1563. We have expressly upheld a jury verdict of anticipat ion under § 102(b), even when the same jury found the patent nonobv ious under § 103. Id. Though the dissent argues that a “long line of precedent” supports its argument that every anticipat ed claim is obvious, not a single one of the case s it cites actually holds that the “epitome” maxim precludes a jury from finding a patent invalid under § 102, simp ly because it is no nobvious under § 103. See Johns Hopkins Univ. v. Cellpro, Inc. , 152 F.3d 1342, 1357 n.21 (Fed. Cir. 1998) (remarking in footnote that tria l court did not err in allowing parties to present argument on anticipation during trial on obviousness); Connell v. Sears, Roebuck & Co. , 722 F.2d 1542, 1548 (Fed. Cir. 1983) (prefacing quoted discussion of relationship between anticipation and obviousness with “it is never necessary to so hold”); Fracalossi , 6 F.2d at 794 (addressing whether specific anticipation rejection was sufficient evidentiary support for obviousness rejection); In re Pearson , 494 F.2d 1399, 1402 (CCPA 1974) (affirming § 103 rejection when § 102 reject ion would also have been appropriate); In re Kalm , 378 F.2d 959, 963 (CCPA 1967) (reversing an ticipation rejection). We cannot conclude—as the dissent’s reasoning implies—t hat the novelty requirement of § 102 is mere surplussage, subsumed by the nonobviousness requirement of § 103.
2008-1029, -1030, -1031, -1032, -1059 16is entitled to have anticipation decided by the finder of fact. See Planet Bingo, LLC v. GameTech Int’l, Inc. , 472 F.3d 1338, 1346 (Fed. Cir. 2006). That is precisely what Waters did in this case. We therefore reverse the district court’s grant of judgment as a matter of law on the issue of anticipation, and remand for further proceedings consistent with this opinion. 4. Inequitable Conduct Waters argues that the distri ct court clearly erred by failing to find the deceptive intent necessary to sustai n a finding of inequitable co nduct and erroneously applied a “but for” test in determining ma teriality. “We review the dist rict court’s findings on the threshold issues of materiality and intent for clear error. . . . We review the ultimate decision regarding inequi table conduct for abuse of discretion.” Cargill, Inc. v. Canbra Foods, Ltd. , 476 F.3d 1359, 1364-65 (F ed. Cir. 2007). Waters argued to the district court thatCohesive committed inequitable conduct by submitting the Guiochon declaration but failing to disclose to the United States Patent and Trademark Office (the “Patent Office”) that Guioc hon did not believe that the invention generated “turbulent flow ” as distinguished from “lam inar” or “smooth” flow. Cohesive , 526 F. Supp. 2d at 95 & n.2. Cohesive admitted that its inventors believed that the flow generated by the invention of the ’874 and ’368 patents was best characterized as “turbulent” an d that Guiochon disagreed. Id. at 99. However, Cohesive argued that its prosecuting attorney did not believe this distinction to be material, because the term “turbul ent flow” does not appear in any of the claims of either patent and is not defined in the specification. Id. The district court “credit[ed] Cohesive’s testimony that it did not belie ve Guiochon’s definitional distinction was

2008-1029, -1030, -1031, -1032, -1059 17material to the ultimate conclusion of his declaration” and accord ingly found no intent to deceive the Patent Office. Id. “With regard to the decept ive intent prong [of inequitable conduct], we have emphasized that ‘materiality does not presume intent, whic h is a separate and essential component of inequitable conduct.’” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co. , 537 F.3d 1357, 1366 (Fed. Cir. 2008) (quoting GFI, Inc. v. Franklin Corp. , 265 F.3d 1268, 1274 (Fed. Cir. 2001)). To prove t he intent prong of in equitable conduct, “the accused infringer must prove by clear an d convincing evidence that the material information was withheld with the specific in tent to deceive the [Patent Office].” Id. Waters has cited no independent evidence of s pecific intent to deceive. Instead, it argues that Cohesive’s failure to disclose Guiochon’s belief that the flow generated by the claimed invention was not properly characterized as “turbulent” “can have been nothing other than intentional.” Reply Br. of Defendant-Cross Appellant Waters Corp. at 20; see also Br. of Defendant-Cross Appellant Waters Corp. at 75. But the district court expressly credited the testimonyof the prosecuting attor ney and Guiochon that they believed the distinction was not material, and concluded that there was no “clear and convincing evidence that Cohesive’s omi ssion constituted intentional deceit.” Cohesive , 526 F. Supp. 2d at 100. Waters has offered no reason for us to disturb these findings. We therefore conclude that the district c ourt did not clearly err in its determination that Waters had failed to meet its burden of establishing inequitable conduct. See, e.g. , Star Scientific , 537 F.3d at 1365. B. The 25 μ m Columns We turn next to Cohesive’s appeal of the grant of su mmary judgment of noninfringement by the 25 μ m columns.
2008-1029, -1030, -1031, -1032, -1059 18Preliminarily, we note that the name “25 μ m columns” is somewhat deceiving. Apart from the size of the particles that make up the column, the 25 μ m columns are identical to the infringing 30 μ m columns. Cohesive , 526 F. Supp. 2d at 114. In both, the particles themselves are irregular in sh ape, as best shown in figure 3 of the ’874 patent, reproduced below:

Because the shape of the particles is not a uniform sphere, the particles in the accused 25 μ m columns do not actually have diameters of 25 μ m. Moreover, the parties dispute the average size of the particles in the accused 25 μ m columns. According to Cohesive, the particles in the 25 μ m columns have an average diameter of 29.01 μ m. Id. However, according to Waters, the part icles have an average diameter of either 25.22 or 25.16 μ m, depending on the method of calculation. Id. 1. Claim Construction All of the asserted claims of both patents in cluded limitations requ iring in effect that the column particles have av erage diameters “greater than about 30 μ m.” See,
e.g. , ’874 patent col.20 ll. 25-26 (requiring “average diamet ers of greater than about 30 μ m”); see also supra n.1. Faced with an accused product (the 25 μ m columns) that

2008-1029, -1030, -1031, -1032, -1059 19was identical to an infringing product (the 30 μ m columns) in all respects except for particle size, the district court properly focused on the “about 30 μ m” limitation of the claims. However, the district construed “greater than about 30 μ m” expressly with reference to the alleged av erage diameter of the particles in the accused 25 μ m columns: I construe the language ‘‘greater than about 30 microns’’ to exclude 29.01 microns. Cohesive , 526 F. Supp. 2d at 115. Although “it is appropriate for a court to consider the accused device when determining what aspect of the claim should be construed,” it is not appropriate for the court to construe a claim solely to exclude the accused device. Exigent Tech., Inc. v. Atrana Solutions, Inc. , 442 F.3d 1301, 1310 n.10 (Fed. Cir. 2006). A “claim is construed in the light of the claim language . . . notin light of the accused device.” Id. (quoting SRI Int’l v. Matsushita Elec. Corp. of Am. , 775 F.2d 1107, 1118 (Fed. Cir. 1985) (en banc)) (alteration and emphasis in the or iginal). Rather, once the district court identified that “greater than about 30 μ m” was the language that should be construed, its task was to determine the ordinary and custom ary meaning of that term as understood by a person of ordinary skill in the art at the time of the invent ion, following the guidance of Phillips

. The district court erred not only by c onstruing the claim merely to exclude the accused device, but also by reading the term “ about” out of the claim. The district court stated that it “d[id] not hesitate in cons truing ‘about 30 microns’ to exclude a magnitude of 29.01 microns,” because the patentee “coul d have applied for a patent that included particles of ‘greater than 29 microns’” if that is what it had intended. Cohesive , 526 F. Supp. 2d at 115. But the patent ee likewise could have drafted the limitation as “greater

2008-1029, -1030, -1031, -1032, -1059 20than 30 μ m”—rather than “greater than about30 μ m”—if it had intended the narrow scope that the district court gave to the clai m. “[C]laims are interpreted with an eye toward giving effect to all terms in the claim.” Bicon, Inc. v. Straumann Co. , 441 F.3d 945, 950 (Fed. Cir. 2006). Here, by includi ng the word “about,” the patentee plainly intended the limitation “g reater than about 30 μ m” to encompass columns with particles with average diameters that are less than 30 μ m, but are still great er than “about” 30 μ m. Cf. Quantum Corp. v. Rodime, PLC , 65 F.3d 1577, 1581 (F ed. Cir. 1995) (“The addition of ‘approximately’ which means ‘reas onably close to,’ elim inates the precise lower limit of [a] range, and, in so doing extends the sc ope of the range.” (footnote omitted)). “[T]he word ‘about’ does not have a univers al meaning in patent claims, and [its] meaning depends on the technological fa cts of the particular case.” Pall Corp. v. Micron Separations, Inc. , 66 F.3d 1211, 1217 (Fed. Cir. 1995). W hen “about” is used as part of a numeric range, “the use of t he word ‘about,’ avoids a stri ct numerical boundary to the specified parameter. Its r ange must be interpreted in it s technologic and stylistic context.” Id. In determining how far beyond the claimed range the term “about” extends the claim, “[w]e must focus . . . on the critic ality of the [numerical limitation] to the invention.” Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd. , 476 F.3d 1321, 1327 (Fed. Cir. 2007). In other words, we mu st look to the purpose that the “about 30 μ m” limitation serves, to determine how much smaller than 30 μ m the average particle diameter can be and still serve that purpose. To be clear, it is the purpose of the limitation in the claimed invention—not the pur pose of the inventi on itself—that is

2008-1029, -1030, -1031, -1032, -1059 21relevant. Thus, we ask what function the “about 30 μ m” low-end limit on particle size plays in the operation of the claimed apparatus and method. Here, the reason that the claims place a low-end limit on partic le size is clear from the specification. The sp ecification of the ’874 patentshows that the function of the low-end limit on particle size relates to the abili ty of the column to capture compounds from the liquid at high flow rates. Specifically, the specification teaches that “it is believed that the turbulence engender ed by . . . high speed flow enhances the loading of the solute molecules onto the derivatized surfaces in the pores of the particles in the column.” ’874 patent col.17 ll.48-51. The specification describes three examples, in which particles of “ nominal averaged diameters” of 50 μ m, 20 μ m, and 10
μ m were evaluated at different flow rates. Id. col.15 ll.18-62. It concludes that the desired “turbulence could not be attained” usi ng particles of nominal average diameters of 20 μ m or 10 μ m, but was attained using particles of nominal average diameters of 50
μ m. Id. col.10 ll.1-19; see also id. figs.5-7. The specification also teaches that the particles need not be the same size or shape. See id. col.8 ll.62-63 (“[The] particles are shaped and se lected in a range of sizes and shapes . . . .”). In fact, non-spher ical and differently shaped particles are expressly taught as preferred. See id. col.11 ll.19-28 (teaching that mean or average diameter is “not to be constr ued as limited to particles that are necessarily spherical or regular solids” and that “a preferred aspect of the present inve ntion is the irregularity of particles’ shape”); id. col.9 ll.2-5 (“In a preferred em bodiment, particularly where the particles of the column are near the lower end of the acc eptable range of cross-section dimensions, the particles are irregular . . . .”); id. fig.3 (illustrating irregularly shaped

2008-1029, -1030, -1031, -1032, -1059 22particles). Moreover, the s pecification makes clear that even the average diameter of the particles cannot be m easured with certainty. See id. col.11 ll.25-26 (describing measurement of mean diameters with 95% confidence). Because the particles are not spherical, not uniformly shaped, and not precisely measureable, it is not surprising that the patent would claim a low- end threshold of “about 30 μ m,” rather than precisely “30 μ m.” Notably, it is the nominal diameter of particles that the specification uses when it concludes that t he desired level of turb ulence cannot be attain ed when the average particle size is too small. See id. col.10 ll.8-19. Thus, the lo w-end limit on particle size performs its function when the nominal average diameter of the particles is above the limit (30 μ m), even if the actual av erage diameter varies. The specification contains two relevant statements thatbear on the range that “about” was intended to encompass in the cont ext of the patents in suit. First, the specification makes clear thatparticles with nominal 50 μ m diameters attain the desired turbulence, while “that turbulence coul d not be attained with particles” of 20 μ m diameters. Id. col.10 ll.1-13. Thus, “about 30 μ m” cannot include 20 μ m. Otherwise, the purpose of the “about 30 μ m” limitation would notbe achieved. Second, in describing an anal ysis of the porosity of co lumns, the specification
states: To measure porosity, a num ber of batches of particles were examined, the first being a batch (designated herei n as CT-50A1-002) of uncoated, unfunctionalized highly irregularly shaped, porous alumina particles having a nominal diameter of 50 μ , but an actual mean diameter, as determined by Coulter analysis, of 42.39 μ within a 95% confidence factor. Id. col.14 ll.22-28 (emphases added). Thus, acco rding to the specification, a batch of particles with an actual mean diameter of 42.39 μ m may still qualify as having a nominal diameter of 50 μ m. In other words, the specific ation treats an aver age diameter of
2008-1029, -1030, -1031, -1032, -1059 2342.39 μ m as an average diameter of about 50 μ m. This represents an acceptable variance of at least 15.22% from the 50 μ m nominal diameter. It is therefore reasonable to conclude that “about 30 μ m” encompasses at least a 15.22% variance from 30 μ m. Thus, “about 30 μ m” should encompass at least 30 μ m ± 15.22%, i.e., between 25.434 μ m and 34.566 μ m. Likewise, the nominal 20 μ m particles that do notpermit the required level of turbulence presumably have actual diameters of 20 μ m ± 15.22%, i.e., between 16.956 μ m and 23.044 μ m. Thus, our construction of “about 30 μ m” should not encompass actual diameters of 23.044 μ m or less. From the intrinsic evidence in the specific ation, we therefore conclude that “about 30 μ m” should include particles with 25.434 μ m diameters and larger, but should exclude particles with 23.044 μ m diameters and smaller. 3 The specification does not, however, provide any concrete guidance as to whether a column with particles with measured diameters between 23.044 μ m and 25.434 μ m meets the “about 30 μ m” limitation. Absent any such guidance, we neither can nor should draw a hard and fast numeric line. Rather , we construe “about 30 μ m” to accomplish the function of the lowend limit on particle size describ ed in the specification. From that, we conclude that, for particles between 23.044 μ m and 25.434 μ m, “about 30 μ m” means a particle of sufficiently large size to assure that a co lumn containing the pa rticles is capable of attaining turbulence. This functional approach is nece ssary and appropriate, because

3 Neither party has pointed to any rele vant part of the prosecution history that bears on the meaning of “about.” Cohesive points to one useful piece of extrinsic evidence—an internal Waters analysis docum ent indicating that Waters considered particles as small as 25 μ m to be within the range of acceptable measured average diameters for a nominally 30 μ m product. This evidence is g enerally consistent with our conclusion that “about 30 μ m” must encompass 25.434 μ m.
2008-1029, -1030, -1031, -1032, -1059 24the deliberate imprecis ion inherent in the word “about” makes it impossible to “capture the essence” of the cl aimed invention in st rict numeric terms. Cf. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. , 535 U.S. 722, 731 (2002) (remarking in discussion of purpose of doctrine of equivalents that “the nat ure of language makes it impossible to capture the essence of a thing in a patent appl ication”). Waters makes two arguments in favor of t he district court’s construction, both of which we reject. First, Wate rs argues thatthe “about 30 μ m” limitation applies to the average diameter of a si ngle particle, not to the average di ameter of all of the particles in the column. Thus, according to Waters , an individual, non-spherical particle may have an average diamet er that is “about”—but less than—30 μ m, but the average of all of the average diameters of al l of the particles in the column must be greater than 30 μ m. We disagree. The specification makes clear that when it refers to an average diameter, it is referring to an aver age diameter of multiple particle s in a given configuration, not th e average diameter of a single particle. Id. col.11 ll.19-28 (“The term ‘mean diameter’ as used herein is intended to mean the average (mean) diameter or cross-section dime nsion of the particle s regardless of particle configuration and is not to be construed as limited to particle s that are necessarily sp herical or regular solids . . . .” (emphases added)). Second, Waters claims that “[t]he file history establishes conclusively that the inventor intended and understoo d that his invention requir ed particles with a minimum average diameter of 30 μ m.” Br. of Defendant-Cross Appel lant Waters Corp. at 10. Waters points to various statements in t he prosecution history that refer to “30 μ m particles” without the modifier “about.” But Waters ignor es that the word “about”

2008-1029, -1030, -1031, -1032, -1059 25appears in each of the claims. The claim term “about” cannot be eliminated by the prosecution history, unless Cohesive made “a clear and unmistakable disavowal of scope during prosecution.” Computer Docking Station Corp. , 519 F.3d at 1374. Simply using the phrase “30 μ m particles” without the qualifier “ about” during prosecution is not such a clear and unmistakable disavowal. Thus, applying the princi ples articulated in Phillips , 415 F.3d at 1312-19, we conclude that the proper constr uction of “greater than about 30 μ m” in claim 1 of the ’874 patent is: either (1) greater than 25.434 μ m, or (2) both greater than 23.044 μ m and of sufficiently large size to assure that th e column is capable of attaining turbulence. The same construction is applicable to the terms “not less than about 30 μ m” and “in the range between about 30 to about 500 μ m” in the other asserted cl aims of both patents. 2. Literal Infringement Based on its erroneous claim construction, t he district court concluded that, as a matter of law, the 25 μ m columns could not infringe, even if they contained particles with an average diameter of 29.01 μ m, as Cohesive argued. Cohesive , 526 F. Supp. 2d at 115. Applying the correct construc tion, if the particles in the 25 μ m columns have an average diameter of 29.01 μ m, they would literally infr inge. Summary judgment of noninfringement must t herefore be reversed. However, the district court was correct to deny Cohesive’s motion for summary judgment of infringement. Taken in the li ght most favorable to Waters, the 25 μ m columns have average diameters of 25.16 μ m. Id. at 114. Under the proper claim construction, if the av erage diameter of the 25 μ m columns were found to be 25.16 μ m, they would only infringe if th e columns were capable of atta ining the desired turbulence. Both the actual aver age diameter of the 25 μ m columns and their ability to attain
2008-1029, -1030, -1031, -1032, -1059 26turbulence are disputed issues of material fact, making summary judgment on literal infringement inappropriate. 3. Doctrine of Equivalents The district court granted summary judg ment in favor of Waters, finding no infringement under the doctrine of equivalents. Specifically, the district court held that “Cohesive has carved out a substantial set of diameters for particle structure, and cannot now use the doctrine of equival ents to broaden patent language which specifically limits its property rights to a set of particl es sized ‘not less than’ a certain amount.” Id. at 116. We agree that the doctrine of equivalents is not available to Cohesive in this case, but for different reasons than those prov ided by the district c ourt. The district court’s analysis was incorrect for severa l reasons. First, as discussed above, the district court incorrectly construed the claim term “about 30 μ m” in its analysis of literal infringement, and this error also infected its equ ivalents analysis. Second, the district court’s argument, that the breadth of Cohes ive’s claim—i.e., that it literally encompasses “a substantial set of diamet ers”—somehow limits its ability to claim infringement by equivalents, is wrong as a matte r of law. We have never held that the doctrine of equivalents is inapplicable to broad claims; to the contrary, we have emphasized that pioneering invent ions often, by their very nature, result in broader application of the doctri ne of equivalents. See, e.g. , Augustine Med., Inc. v. Gaymar Indus., Inc. , 181 F.3d 1291, 1301-02 (Fed. Cir. 1999). Finally, the district court’s analysis suggests that the doc trine of equivalents cannotbe used to broaden a numeric range. But as we have repeatedly held, “the fact that a claim recites numeric ranges does not, by itself, preclude . . . [relia nce] on the doctrine of equivalents.” U.S. Philips
2008-1029, -1030, -1031, -1032, -1059 27Corp. v. Iwasaki Elec. Co. Ltd. , 505 F.3d 1371, 1378 (Fed. Cir. 2007) (quoting Abbott Labs. v. Dey, L.P. , 287 F.3d 1097, 1107-08 (Fed. Cir. 2002)) (a lterations in the original). Nevertheless, we conclude that the doctr ine of equivalents is not available to Cohesive here, for a different reason. The limitation to which Cohesive seeks to apply the doctrine of equiva lents is the “about 30 μ m” limitation. As we have held, because of the way that the patentee has used the word “about” in the context of the written description and the claims in this ca se, construction of the term “about 30 μ m” requires consideration of the purpose or “criticality” of the limit ation to the invention. See OrthoMcNeil , 476 F.3d at 1327. As our construction makes clear, “about 30 μ m” encompasses particle diameters t hat perform the same function, in the same way, with the same result as the 30 μ m particles, as long as those diameters are within the range left open by the specific disclosures of the spec ification. Thus, by electing to include the broadening word “about” in the claim, the patentee has in this case already captured what would otherwise be equivalents withi n the literal scope of the claim. Cf. WarnerJenkinson Co., Inc. v. Hilton Davis Chem. Co. , 520 U.S. 17, 40 (1997) (“An analysis of the role played by each element in the cont ext of the specific patent claim will thus inform the inquiry as to whether a substitu te element matches the function, way, and result of the claimed element, or whether the substitute element plays a role substantially different from t he claimed element.”) The patent ee here has, by its choice of claim language, captured the same “range of novelty” that typically justifies application of the doctr ine of equivalents. See Festo , 535 U.S. at 731 (holding that “[t]he scope of a patent is notlimited to its literal terms but instead embraces all equivalents to the claims described,” because “[t]he language in the patent claims may

2008-1029, -1030, -1031, -1032, -1059 28not capture every nuance of the invention or describe with complete precision the range of its novelty.”). Where, as here, a patentee has brought what would other wise be equivalents of a limitation into the literal scope of the clai m, the doctrine of equ ivalents is unavailable to further broaden the scope of the claim. In these circumstances, a patentee cannot rely on the doctrine of equivalents to encom pass equivalents of equivalents. Here, because the “about 30 μ m” limitation already literally encompasses diameters that are equivalent to 30 μ m in the context of the patent, any particle diameter that performs the same function, in the same way, with the same result as a 30 μ m diameter is already within the literal scope of the claim. Cohe sive therefore cannot re ly on the doctrine of equivalents for that limitati on. Since the “about 30 μ m” limitation was t he only disputed limitation, the district court was correct to grant summary judgment in favor of Waters on the issue of infringement by equivalents. C. Damages 1. Lost Profits Following a bench trial, the distri ct court, applying the so-called Panduittest, concluded that Cohesive failed to prove that it was entitled to lost profits as a result of infringement by Waters’s 30 μ m columns. Cohesive , 526 F. Supp. 2d at 118; see generally Panduit Corp. v. Stah lin Bros. Fibre Works , 575 F.2d 1152 (6th Cir. 1978). The district court found both that the 25 μ m columns were an “acceptable yet noninfringing substitute” for the 30 μ m columns and that a separate Waters product— the Waters 2.1 × 20 mm columns—were “a reasonably acceptable substitute.” Id. at 119-20. Cohesive appeals, argu ing that neither product is an acceptable noninfringing substitute. Although “[a]vailability of lost profits is a question of law reviewed without

2008-1029, -1030, -1031, -1032, -1059 29deference,” Mars, Inc. v. Coin Acceptors, Inc. , 527 F.3d 1359, 1365 (Fed. Cir. 2008), “[t]he existence of a noninfring ing substitute is a question of fact, reviewable under the clearly erroneous standard,” Minn. Min. & Mfg. Co. v. Johnson & Johnson Orth., Inc. , 976 F.2d 1559, 1577 (Fed. Cir. 1992). To recover lost profits under the Panduittest, “the patent owner must prove (1) a demand for the patented product, (2) an abs ence of acceptable noninfringing substitutes, (3) the manufacturing and marketing capability to exploit the demand, and (4) the amount of profit the patent owner would have made.” Standard Havens Prods., Inc. v. Gencor Indus., Inc. , 953 F.2d 1360, 1 373 (Fed. Cir. 1991); see also Panduit , 575 F.2d at 1156. Standard Havens explains the “acceptable noninfringing substitutes” analysis as follows: [T]he mere existence of a competi ng device does not necessarily make that device an acceptable substitute. A product on the market which lacks the advantages of the patented product c an hardly be termed a substitute acceptable to the customer who wants those advantages. Accordingly, if purchasers are motivated to purchas e because of particular features available only from the patented pr oduct, products without such features— even if otherwise competing in the marketplace—would not be acceptable noninfringing substitutes. Thus, to prove that there are no acc eptable noninfringing substitutes, the patent owner must show either that (1) the purchasers in the marketplace generally were willing to buy the patented product for its advantages, or (2) the specific purchasers of the infringing product purchased on that basis. Id. (citations omitted). As discussed above, we have concluded thatthe district court erred in granting summary judgment that the 25 μ m columns did not infringe the ’874 and ’368 patents. Consequentially, the district court erred in concluding that the 25 μ m columns were a reasonable noninfringing substitute. The av ailability of the 25 μ m columns cannot

2008-1029, -1030, -1031, -1032, -1059 30preclude Cohesive from obtai ning lost profits, unless and until the district court determines that the 25 μ m columns are not infringing under the correct claim construction. It is unclear from the record whether the district court’s findi ngs as to the 2.1 × 20 mm columns alone would satisfy the Panduittest. The district court made the following limited findings as to the 2.1 × 20 mm columns: The 2.1 x 20mm, of course, is also a differently-sized column than the accused column. Although it is only sl ightly larger, it would likely not be a fully-acceptable substitute for those customers would rather elute their compounds over a smaller 1 × 50mm column. Nevertheless, I find it a reasonably acceptable substitute. Cohesive , 526 F. Supp. 2d at 119. We do not knowwhat the district court means by “fully-acceptable substitute” or “reasonably acc eptable substitute.” The district court’s finding—that the 2.1 × 20 mm columns were not “a fully-acceptable substitute” but were nevertheless “a reasonably acceptable substitute”—does not resolve one way or another whether they are an acceptable noninfri nging substitute under the Standard Havens test. Thus, we vacate the district court’s dete rmination that Cohesive is not entitled to lost profits, and remand for reconsiderati on based upon its determination of: (1) whether the 25 μ m columns infringe under the correct cl aim construction; and (2) whether the 2.1 x 20 mm columns are acceptable noninfringing substitutes as that term is used in Standard Havens

. 2. Willful Infringement Applying the standard that we articulated in In re Seagate Technology, LLC , 497 F.3d 1360, 1371 (Fed. Cir. 2007) ( en banc), the district court concluded that Waters’s infringement of the ’874 and ’3 68 patents was not willful. Cohesive , 526 F. Supp. 2d at

2008-1029, -1030, -1031, -1032, -1059 31103, 107. “[T]o establish wi llful infringement, a patentee must show by clear and convincing evidence that the in fringer acted despite an objecti vely high likelihood that its actions constituted infringement of a valid patent. . . . If this threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer.” Seagate , 497 F.3d at 1371. “The court’s finding [ on] willful infringem ent is one of fact, subject to the clearly erroneous standard of review.” Stryker Corp. v. Intermedics Orths., Inc. , 96 F.3d 1409, 1413 (Fed. Cir. 1996). As discussed in detail above, the proper cons truction of “rigid” was in dispute. According to Waters, Cohesive had disavowed all polymeric particles as not “rigid” during prosecution based on the Guiochon declaration. While we , like the district court, have concluded that the Guiochon declaration did not disavow all polymeric particles,

see Cohesive , 526 F. Supp. 2d at 106 n. 6, we nonetheless agree with the district court that Waters could reasonably have read the “rigid” limitation, in light of the specification and prosecution history, to r equire polymeric particles. See id. at 106 & n.6. Because “rigid” was susceptible to a reasonable cons truction under which Waters’s products did not infringe, there was not an objectively high likelihood that Waters’s actions constituted infringement. See Seagate , 497 F.3d at 1371. The district court’s finding of no willful infringementwas therefore notclearly erroneous. 4

4 Because we conclude that the proper claim cons truction was a sufficiently close question to foreclose a finding of wi llfulness, we need not address Cohesive’s arguments concerning the distri ct court’s factual errors in describing the testing that Waters performed to assess whether its particles resisted plastic deformation.
2008-1029, -1030, -1031, -1032, -1059 323. Enhanced Damages Cohesive argues that the district court erred in declining to award enhanced damages, even in the absence of a finding of willfulness. Specifically, relying on the analysis in Judge Gajarsa’s concurring opinion in Seagate , Cohesive asks the court to overrule Beatrice Foods Co. v. New Engla nd Printing & Li thographing Co. , in which we held that “enhancement of damages must be pr emised on willful infr ingement or bad faith.” 923 F.2d 1576, 1578 (Fed. Cir. 1991) (quoting Yarway Corp. v. Eur-Control USA, Inc. , 775 F.2d 268, 277 (Fed. Cir. 1985)); see also Seagate , 497 F.3d at 1377 (Gajarsa, J., concurring) (urging that Beatrice Foods be overruled). The majority of the en banc court in Seagate did not elect to overrule Beatrice Foods , and we therefore remain bound by that decision. See, e.g. , Hometown Fin., Inc. v. United States , 409 F.3d 1360, 1365 (Fed. Cir. 2005) (“[W]e are bound to follow our own precedent as set forth by prior panels. . . .”). D. Reassignment Cohesive requests that this case be assigned to a different district court judge on remand, pursuant to 28 U.S.C. § 2106. “The r eassignment of a case to a new district court judge after remand is a procedural ques tion that is not unique to this court’s exclusive jurisdiction. Accordingly, regional circuit law governs reassignment questions.” Eolas Techs., Inc. v. Microsoft Corp. , 457 F.3d 1279, 1282 (Fed. Cir. 2006). The First Circuit uses a three-part inqui ry to determine whether reassignment is appropriate: (1) whether the original judge would reasonably be expected upon remand to have substantial difficulty in putti ng out of his or her mind previouslyexpressed views or findings dete rmined to be erroneous or based on evidence that must be rejected,

2008-1029, -1030, -1031, -1032, -1059 33(2) whether reassignment is advis able to preserve the appearance of justice, and (3) whether reassignment would entail waste and duplication out of proportion to any gain in preser ving the appearance of fairness. Maldonado Santiago v. Velazquez Garcia , 821 F.2d 822, 832 (1st Cir. 1987). Cohesive makes a single argument in favo r of reassignment: that the six year delay between the jury’s verdic t of infringement and the dist rict court’s judgment on the remaining issues shows that the district court judge has a “clear antipathy for this matter,” so that reassignment is necessary to preserve the ap pearance of justice. Br. of Plaintiff-Appellant Cohesive Techs., Inc. at 54-55. Waters has not indicated whether it favors or opposes reassignment. We agree with Cohesive that there was an unreasonable and un acceptable delay between the conclusion of the bench trial in August 2002 and the district court’s judgment in August 2007. Even more distur bing is the fact that Cohesive moved for a preliminary injunction against the 25 μ m columns on March 7, 2002, that Cohesive converted that motion to a motion for su mmary judgment at the district court’s suggestion, and that the district court still di d not rule on the motion for five years, despite repeated status inquiries. See 526 F. Supp. 2d at 114. Despite our displeasure with the delays in this case, we decline to order reassignment. Cohesive makes no argument— and we see no reason—that the district court judge would have substantial difficulty putting his previously expressed views or findings out of his mind. Moreover, reassi gnment would necessarilyentail a great deal of waste and duplicati on of effort. We have affirmed much of the district court’s judgment in this case, and the limited i ssues on which we hav e remanded will be most easily addressed by the judge who presided over the earlier ju ry and bench trials and is

2008-1029, -1030, -1031, -1032, -1059 342008-1029, -1030, -1031, -1032, -1059 35 already familiar with the case. On balance, we conclude that no reassignment is necessary and expect that the issues rema ining on remand will be addressed without undue delay. III. CONCLUSION For the foregoing reasons, we reject the di strict court’s construction of the term “about 30 μ m” and construe the term as described above. We reverse the district court’s grant of summary judgment of no literal infringement by the 25 μ m columns,

reverse the district court’s gr ant of judgment as a matte r of law on the issue of anticipation, vacate the district court’s j udgment that Cohesive is not entitled to actual damages, and remand . In all other respects, the j udgment of the district court is affirmed

.

AFFIRMED-IN-PART, REVERSED-IN-PAR T, VACATED-IN-PART, AND REMANDED COSTS Each party shall bear its own costs.

### UNITED STATES COURT OF APPEAL S FOR THE FEDERAL CIRCUIT

2008-1029,-1030,-1031,-1032,-1059

COHESIVE TECHNOLOGIES, INC., Plaintiff-Appellant,

v. WATERS CORPORATION, Defendant-Cross Appellant.

Appeal from the United States District Court for the District of Massachusetts in case nos. 98-CV-12308, 99-CV-1152 8, and 01-CV-12307, Judge Douglas P. Woodlock. MAYER, Circuit Judge , dissenting. I dissent from the majority’s decision to remand the issue of anticipation to the district court. See ante at 12-17. The jury having fou nd that U.S. Patent No. 5,772,874 is not obvious under 35 U.S.C. § 103, remanding the case for “further proceedings” on whether the patent is antic ipated is a waste of time and resources. It is true that the tests for obviousness and anticipation are distinct, and that a district court should not refuse to submit a claim of anticipation to the jury merely because an accused infringer also asserts an obviousness defense. It does not follow, however, that if a jury has already determi ned that an invention is not obvious, remand is required so that it can c onsider whether the in vention is anticipated . The jury here considered all of the allegedly anticipating pr ior art references, but nonetheless returned a verdict that the asserted claims are non-obvious . If a series of prior art references did not render the claimed invention obvious, how could one of those references containeach and every element of the claimed invention so as to render it anticipated? See Schering Corp. v. Geneva Pharms., Inc. , 339 F.3d 1373, 1379 (Fed. Cir. 2003) (a claim is anticipated if each and every limitation is found in a single prior art reference). ∗ Although a claimed invention can be obvious but not anticipated, it “ cannot have been anticipated and not have been obvious .” In re Fracalossi , 681 F.2d 792, 794 (CCPA 1982) (emphasis added). Indeed, this court has repeatedly emphasized that “a disclosure that anticipates . . . al so renders the claim invalid under § 103, for anticipation is the epitome of obviousness.” Connell v. Sears, Roebuck & Co. , 722 F.2d 1542, 1548 (Fed. Cir. 1983) (citations and internal quotation marks omitted); see Johns Hopkins Univ. v. Cellpro, Inc. , 152 F.3d 1342, 1357 n.21 (Fed. Cir. 1998) (a disclosure that anticipates also renders a claim obvious); In re Pearson , 494 F.2d 1399, 1402 (CCPA 1974) (anticipation is “the ultimate . . . obviousness”) (citations and internal quotation marks omitted); In re Kalm , 378 F.2d 959, 962 (CCPA 1967) (“Necessarily, a description in a reference which is insufficient as a matter of law to render a composition of matter obvious to one of or dinary skill in the art would a fortiori be insufficient to ‘describe’ the composition as that term is used [for purposes of establishing anticipation], a complete description being but the ultimate or epitome of obviousness.”). The majority’s assertion that a claim can be ant icipated but not obvious , flies in the face of a long line of precedent to the contrary. Not surprisingly, it is unable to cite a case

∗ The majority cites Trintec Indus., Inc. v. Top-U.S.A. Corp. , 295 F.3d 1292, 1296 (Fed. Cir. 2002) for the propositi on that “obviousness is not inherent anticipation.” Ante at 15. Trintecheld that an invention is not i nherently anticipated merely because it is obvious. That, however, is a wholly se parate issue from the issue presented here, which is whether claims that are not obvious can ever be anticipated. Trintecdoes not state that non-obvious claims can be inherently anticipated.
2008-1029,-1030,-1031,-1032,-1059 22008-1029,-1030,-1031,-1032,-1059 3 remanding to the district court for consideration of anticipation, while at the same time sustaining a determination that cl aims at issue are not obvious. ∗ ∗ The fallacy of the majority’s approach c an be illustrated by a simple example. Every apple is a fruit. It follows, therefore, that if something is not a fruit, it cannot be an apple. Similarly, since our precedent makes clear that every anticipated claim is obvious, it follows that if a claim is not obvious, it cannot be anticipated. The present dispute has already dr agged on for nearly a decade and I see no reason to burden the district court and the pa rties with additional proceedings. Although the majority sends the anticipation issue back to the district court for “further proceedings consistent with [its] opinion,” ante at 17, one wonders what it expects the court to do. Given the prior non-obviousne ss determination, it can hardly expect the district court to conclude that there is suffi cient evidence of anticipation to send the issue to a new jury. I would affirm the district court’s di rected verdict on anticipation.

** The majority’s reliance on Mendenhall v. Cedarapids, Inc. , 5 F.3d 1557, 1563 (Fed. Cir. 1993), is unsupportable. That case held that a dist rict court did not abuse its discretion in refusing to set aside a jury verdict of non-obviousness even though the jury also returned a verdict of anticipation by prior public use . The issue here, however, is not whether a verdict finding both anticipation by prior publ ic use and non-obviousness can be sustained, but whether remand is requir ed to consider anticipation even after the jury has determined the cl aims are not obvious.