United States Court of Appeals 

for the Federal Circuit ______________________ 

INEOS USA LLC,

Plaintiff-Appellant

v.

BERRY PLASTICS CORPORATION,

Defendant-Appellee

______________________ 

2014-1540

______________________ 

Appeal from the United States District Court for the 

Southern District of Texas in No. 3:13-cv-00017, Judge 

Gregg Costa.

______________________ 

Decided: April 16, 2015 

______________________ 

DONALD ROBERT DUNNER, Finnegan, Henderson, 

Farabow, Garrett & Dunner, LLP, Washington, DC, 

argued for plaintiff-appellant. Also represented by ALLEN 

MARCEL SOKAL. 

DEBORAH POLLACK-MILGATE, Barnes & Thornburg 

LLP, Indianapolis, IN, argued for defendant-appellee. 

Also represented by JESSICA M. LINDEMANN. 

______________________ 

Before DYK, MOORE, and O’MALLEY, Circuit Judges.
 2 INEOS USA LLC v. BERRY PLASTICS CORPORATION

MOORE, Circuit Judge.

Ineos USA LLC accused Berry Plastics Corporation of 

infringing U.S. Patent No. 6,846,863. Ineos appeals from 

the district court’s summary judgment that the ’863 

patent is invalid as anticipated under 35 U.S.C. § 102

(2006). We affirm. 

BACKGROUND

The ’863 patent is directed to polyethylene-based 

compositions which can be used to form shaped products, 

such as screw caps for bottles. ’863 patent col. 1 ll. 5–8. 

Prior art polyethylene bottle caps incorporated a lubricant 

to optimize the cap’s slip properties and to facilitate 

unscrewing of the cap. Id. col. 1 ll. 9–14. However, these 

compositions suffered the disadvantage of imparting bad 

odor and flavor to food products stored in contact with the 

compositions. Id. col. 1 ll. 15–17. The ’863 patent explains that its compositions having specific amounts of 

polyethylene, lubricants, and additives solve this problem. 

Id. col. 1 ll. 24–35. Claim 1 is the only independent claim 

and is illustrative:

1. Composition comprising at least [1] 94.5% by 

weight of a polyethylene with a standard density 

of more than 940 kg/m3, 

[2] 0.05 to 0.5% by weight of at least one saturated 

fatty acid amide represented by CH3(CH2)nCONH2

in which n ranges from 6 to 28[,] 

[3] 0 to 0.15% by weight of a subsidiary lubricant 

selected from fatty acids, fatty acid esters, fatty 

acid salts, mono-unsaturated fatty acid amides, 

polyols containing at least 4 carbon atoms, monoor poly-alcohol monoethers, glycerol esters, paraffins, polysiloxanes, fluoropolymers and mixtures 

thereof, and 
INEOS USA LLC v. BERRY PLASTICS CORPORATION 3

[4] 0 to 5% by weight of one or more additives selected from antioxidants, antacids, UV stabilizers, 

colorants and antistatic agents.

For ease of reference, we refer to the various limitations 

by the respective bracketed numbers inserted into the 

claim. 

Ineos alleged that Berry Plastics infringes claims 1–7 

and 9–11 of the ’863 patent. Berry Plastics moved for 

summary judgment that the asserted claims are anticipated independently by various prior art references, 

including U.S. Patent No. 5,948,846. The parties do not 

dispute that the ’846 patent discloses 94.5% by weight of a 

polyethylene with a standard density of more than 

940 kg/m3 as described in limitation 1 of claim 1 of the 

’863 patent. Ineos USA LLC v. Berry Plastics Corp., No. 

13-cv-0017, slip op. at 11 (S.D. Tex. Apr. 15, 2014), ECF 

No. 101 (Summary Judgment Order). Likewise, there is

no dispute that stearamide, disclosed in the ’846 patent, is 

a compound within the class of saturated fatty acid amides represented by CH3(CH2)nCONH2 in which n ranges 

from 6 to 28 (“primary lubricant”) described in limitation 

2. The court found that the ’846 patent’s disclosure of a 

lubricant, which could be stearamide, in amounts from 0.1 

to 5 parts by weight,1 and more specifically of “at least 0.1 

part by weight per 100 parts by weight of polyolefin, in 

particular of at least 0.2 parts by weight, quantities of at 

least 0.4 parts by weight being the most common ones” 

describes specific values (e.g., 0.1 part by weight) along 

with the broader disclosure of the full range (0.1 to 5 

parts by weight). Id. at 13–14. It therefore concluded 

that the ’846 patent’s disclosure of stearamide in these 

amounts met limitation 2. Id. at 11–14. It then deter1 The parties agree for purposes of this appeal that 

measurements in “% by weight” are equivalent to measurements in “parts by weight.” 

 
 4 INEOS USA LLC v. BERRY PLASTICS CORPORATION

mined that the subsidiary lubricant of limitation 3 and 

the additive of limitation 4 are optional in the claimed 

composition because limitations 3 and 4 set forth ranges 

beginning with 0%. Id. at 14–16. It therefore found that 

the ’846 patent’s disclosure of an optional subsidiary

lubricant and an optional additive satisfied limitations 3 

and 4. Id. The court concluded that the ’846 patent 

anticipates the asserted claims. Ineos appeals. We have 

jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

We review the grant of summary judgment under the 

law of the relevant regional circuit. See Accenture Global 

Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 

1340 (Fed. Cir. 2013). The Fifth Circuit reviews grants of 

summary judgment de novo. Triple Tee Golf, Inc. v. Nike, 

Inc., 485 F.3d 253, 261 (5th Cir. 2007). Summary judgment is appropriate when there is no genuine issue of 

material fact and the moving party is entitled to judgment 

as a matter of law. Fed. R. Civ. P. 56(a). To anticipate a 

patent claim under 35 U.S.C. § 102, “a reference must 

describe . . . each and every claim limitation and enable 

one of skill in the art to practice an embodiment of the 

claimed invention without undue experimentation.” Am. 

Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d 1318, 

1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 

1334 (Fed. Cir. 2009)). 

I. Independent Claim 1

Ineos argues that the court erred in finding claim 1 of 

the ’863 patent anticipated by the ’846 patent and in

concluding that Ineos failed to raise a genuine dispute of 

material fact in opposing summary judgment. Ineos 

asserts that the ’846 patent discloses no single species 

within the genus of claim 1. It asserts that although the 

’846 patent discloses stearamide—one of the primary 

lubricants of limitation 2—the ’846 patent does not disclose or suggest that stearamide or any other primary 
INEOS USA LLC v. BERRY PLASTICS CORPORATION 5

lubricant “should be included as a lubricant in an amount 

between 0.05 and 0.5% by weight while entirely excluding 

or severely limiting any other lubricant to no more than 

0.15% by weight.” Appellant’s Br. 28. Ineos argues that, 

contrary to the court’s conclusion, the ’846 patent discloses ranges for amounts of lubricants, not particular individual point values. Relying on Atofina v. Great Lakes 

Chemical Corp., 441 F.3d 991 (Fed. Cir. 2006), Ineos 

argues that because the ranges concerning the amounts of 

lubricants disclosed in the ’846 patent only slightly overlap with the ranges of limitations 2 and 3 in claim 1 of the 

’863 patent, the ’846 patent does not disclose these limitations. Appellant’s Br. 28–32. Ineos contends that, at the 

very least, under OSRAM Sylvania, Inc. v. American 

Induction Technologies, Inc., 701 F.3d 698, 706 (Fed. Cir. 

2012), the court should not have granted summary judgment in light of Ineos’s proffered testimony that the 

ranges claimed in the ’863 patent are critical. Appellant’s 

Br. 33–35. 

Berry Plastics responds that the court properly granted summary judgment. It argues that the description in 

the ’846 patent of stearamide in amounts of “at least 0.1 

part by weight per 100 parts by weight of polyolefin, in 

particular at least 0.2 parts by weight, quantities of at 

least 0.4 parts by weight being the most common ones” 

discloses particular points (i.e., 0.1, 0.2, and 0.4 parts by 

weight) within the range claimed in limitation 2 of claim 1 

of the ’863 patent (i.e., 0.05 to 0.5% by weight). Similarly, 

Berry Plastics argues that the court correctly concluded 

that because the compositions of the ’846 patent contain 

“one or more lubricating agents,” the ’846 patent discloses

that a subsidiary lubricant is optional. Berry Plastics 

asserts that the court therefore correctly found that the 

’846 patent met limitation 3 of claim 1 of the ’863 patent. 

Finally, Berry Plastics asserts that the court did not err 

in declining to consider the purported criticality of the 

claimed ranges in limitations 2 and 3 because such in-
 6 INEOS USA LLC v. BERRY PLASTICS CORPORATION

quiry is not necessary where, as here, the prior art discloses particular points within the later claimed range.

We hold that the district court correctly granted 

summary judgment of anticipation. When a patent claims 

a range, as in this case, that range is anticipated by a 

prior art reference if the reference discloses a point within 

the range. Titanium Metals Corp. v. Banner, 778 F.2d 

775, 782 (Fed. Cir. 1985). If the prior art discloses its own

range, rather than a specific point, then the prior art is 

only anticipatory if it describes the claimed range with 

sufficient specificity such that a reasonable fact finder 

could conclude that there is no reasonable difference in 

how the invention operates over the ranges. Atofina, 441 

F.3d at 999; ClearValue, Inc. v. Pearl River Polymers, Inc., 

668 F.3d 1340, 1345 (Fed. Cir. 2012). Limitation 2 is met 

by the disclosure of the ’846 patent. The ’846 patent 

specification states: 

The composition according to the invention includes the lubricating agent in a total quantity of 

at least 0.1 part by weight per 100 parts by weight 

of polyolefin, in particular of at least 0.2 parts by 

weight, quantities of at least 0.4 parts by weight 

being the most common ones; the total quantity of 

lubricating agents does not exceed 5 parts by 

weight, more especially 2 parts by weight, maximum values of 1 part by weight per 100 parts by 

weight of polyolefin being recommended.

’846 patent col. 2 l. 66–col. 3 l. 7 (emphasis added). The 

phrases “at least” and “does not exceed” set forth corresponding minimum and maximum amounts for the primary lubricant. This portion of the specification clearly 

discloses ranges, not particular individual values. As we 

stated in Atofina, “the disclosure of a range . . . does not 

constitute a specific disclosure of the endpoints of that 

range.” 441 F.3d at 1000. The court therefore erred in 
INEOS USA LLC v. BERRY PLASTICS CORPORATION 7

concluding that the ’846 patent discloses particular points 

within the range recited in limitation 2.

This conclusion is not fatal to Berry Plastics’ case, 

however, because Ineos failed to raise a genuine question 

of fact about whether the range claimed is critical to the 

operability of the invention. Ineos has not demonstrated 

that Atofina or OSRAM requires reversal in this case. 

In Atofina, we reversed the district court’s finding of 

anticipation where the patent-in-suit claimed a temperature range that was critical to the operability of the 

invention and the range disclosed in the prior art was 

substantially different. Atofina involved a patent claiming a method of synthesizing difluoromethane at a temperature between 330–450  ̊C. Atofina, 441 F.3d at 993; 

U.S. Patent No. 5,900,514 col. 3 ll. 61–62. Atofina’s

patent and its prosecution history described the claimed 

temperature range as critical to the invention, and stated 

that the synthesis reaction would not operate as claimed 

at a temperature outside the claimed range. See Atofina, 

J.A. 1304, 1306, 1311–12; ’514 patent col. 3 ll. 61–65; see 

also ClearValue, 668 F.3d at 1344–45. The prior art at 

issue in Atofina disclosed a broad temperature range of 

100–500  ̊C. Atofina, 441 F.3d at 999. The patent-in-suit 

was not anticipated because there was a “considerable 

difference” between the prior art’s broad disclosure and 

the claimed “critical” temperature range, such that “no 

reasonable fact finder could conclude that the prior art 

describes the claimed range with sufficient specificity to 

anticipate this limitation of the claim.” Id. at 999; see also 

ClearValue, 668 F.3d at 1345. Key to this conclusion was 

the fact that the evidence showed that a person of ordinary skill in the art would have expected the synthesis 

reaction to operate differently, or not all, outside of the 

temperature range claimed in the patent-in-suit. Atofina, 

441 F.3d at 999; see also ClearValue, 668 F.3d at 1345. 
 8 INEOS USA LLC v. BERRY PLASTICS CORPORATION

In ClearValue, we further explained the importance of 

establishing the criticality of a claimed range to the 

claimed invention in order to avoid anticipation by a prior 

art reference disclosing a broader, overlapping range. The 

patent at issue in ClearValue claimed a method “for 

clarification of water of raw alkalinity less than or equal 

to 50 ppm by chemical treatment.” 668 F.3d at 1342 

(emphasis added). After a jury found ClearValue’s patent 

not anticipated by prior art disclosing clarifying water 

with alkalinity of “150 ppm or less,” we reversed and held 

the patent invalid as anticipated. Id. at 1342–46. Notably, ClearValue did not argue that the claimed range was 

critical to the invention or that the claimed method would 

work differently within the prior art range of 150 ppm or 

less. Id. “[U]nlike Atofina where there was a broad genus 

and evidence that different portions of the broad range 

would work differently,” in ClearValue “there [was] no 

allegation of criticality or evidence demonstrating any 

difference across the range.” Id. at 1345. There was no 

considerable difference between how the method would 

operate within the claimed range and within the range 

disclosed in the prior art. Id. 

We have, however, reversed a grant of summary 

judgment of anticipation where the patentee raised a 

genuine dispute of material fact concerning the criticality 

of a claimed range. In OSRAM, the patentee argued that 

the claimed pressure range “less than 0.5 torr” was critical to the operation of its claimed lamp assembly. 

OSRAM, 701 F.3d at 701, 705–06. There, the patentee 

presented expert testimony and evidence supporting its 

assertion that the “less than 0.5 torr” limitation was 

“central to the invention claimed” and “that a lamp would 

operate differently at various points within the range 

disclosed” in the prior art reference at issue. Id. at 706. 

This evidence was unrebutted. Id. We emphasized that 

“how one of ordinary skill in the art would understand the 

relative size of a genus or species in a particular technolo-
INEOS USA LLC v. BERRY PLASTICS CORPORATION 9

gy is of critical importance.” Id. Noting the district 

court’s failure to justify its rejection of OSRAM’s expert 

testimony and the lack of support for the court’s conclusion that the claimed range was narrowly encompassed 

within the prior art range, we reversed. Id. 

In this case, Ineos argues that because the prior art 

’846 patent discloses a range that overlaps with the range 

recited in limitation 2, the court should not have found 

claim 1 anticipated. Ineos asserts that it presented 

unrebutted evidence that the range recited in limitation 2 

is critical to the invention and therefore, under OSRAM, 

the court erred in granting summary judgment in Berry 

Plastics’ favor. 

The court’s conclusion that limitation 2 was met by 

the ’846 patent was correct because Ineos did not raise a 

genuine question of fact about whether the range recited 

in limitation 2 is critical to the invention. The ’863 patent 

specification indicates that the lubricants included in the 

invention function to improve the caps’ slip properties and 

ability to be unscrewed from a bottle. ’863 patent col. 1 

ll. 10–12. It then describes the novelty of the invention as 

eliminating the odor and taste problems associated with 

prior art bottle caps while still maintaining good slip 

properties. Id. col. 1 ll. 20–23, col. 3 l. 66–col. 4 l. 2. Ineos 

has not established that any of these properties would 

differ if the range from the prior art ’846 patent is substituted for the range of limitation 2. 

Ineos relies on the testimony of one of the inventors of 

the ’863 patent stating that the range claimed in limitation 2 is critical to avoid unnecessary manufacturing costs 

and the appearance of undesirable blemishes on the bottle 

caps. Appellant’s Br. 33–34. But even if true, this has 

nothing to do with the operability or functionality of the 

claimed invention. Ineos has not established any relationship between avoided cost and prevention of undesirable blemishes, and the claimed invention’s slip 
 10 INEOS USA LLC v. BERRY PLASTICS CORPORATION

properties or elimination of odor and taste problems. 

Ineos does not suggest that the claimed invention’s slip 

properties or improved odor and taste properties would 

not have been expected based on the prior art. While we 

do not rule out the possibility that testimony concerning 

reduced manufacturing costs could be relevant where a 

method of manufacture claim is at issue, this is not the 

case before us.2 

Ineos is correct that with regard to limitation 2, the 

’846 patent discloses a range, and not a point within the 

range. Ineos is also correct that when the prior art discloses a range, rather than a point, the court must evaluate whether the patentee has established that the claimed 

range is critical to the operability of the claimed invention. Here, however, Ineos failed to put forth facts in 

opposition to summary judgment that created a genuine 

issue of material fact about the criticality of the range of 

limitation 2. There is no evidence that the operability of 

the bottle cap would be improved by the claimed range.

Limitation 3 is also met by the ’846 patent and Ineos’s 

argument concerning the criticality of limitation 3 does 

not save the claim. The ’846 patent discloses compositions containing a single lubricating agent (“one”) and 

allows for additional lubricating agents. ’846 patent col. 1 

ll. 48–50. We, like the district court, interpret this language as expressly disclosing a composition with only one 

lubricating agent—the primary lubricant—and zero 

subsidiary lubricant. Limitation 3 requires a subsidiary 

lubricant present in an amount between 0 and 0.15% by 

weight. Because the ’846 patent discloses 0% of subsidi2 Ineos also cited an expert who testified about criticality, but Ineos agrees that expert testimony was limited 

to the criticality of the range recited in limitation 3. Oral 

Arg. at 33:15–28, available at http://oralarguments.cafc.

uscourts.gov/default.aspx?fl=2014-1540.mp3. 

 
INEOS USA LLC v. BERRY PLASTICS CORPORATION 11

ary lubricant, limitation 3 is satisfied. Ineos’s criticality 

evidence is not relevant because that inquiry is appropriate only where the prior art discloses a range, not a 

particular value within the later claimed range. We see 

no error in the district court’s analysis on this point.3

II. Dependent Claim 3

Claim 3, which depends from claim 1, specifies that 

the primary lubricant is the saturated fatty acid amide 

behenamide. The court found that because behenamide is 

one of a few common saturated fatty acid amide lubricating agents, the ’846 patent’s disclosure of the genus of 

saturated fatty acid amides anticipates claim 3. Summary Judgment Order at 19–20 (citing In re Petering, 301 

F.2d 676 (C.C.P.A. 1962)). 

Ineos argues that the court erred in finding claim 3 

anticipated. It argues that the ’846 patent does not 

explicitly disclose behenamide and that the court incorrectly concluded that the genus of saturated fatty acid 

amides disclosed in the ’846 patent describes behenamide. 

It asserts that the court incorrectly concluded that behenamide is a common saturated fatty acid amide lubricating 

agent. It asserts that the only pertinent record evidence 

is Ineos’s inventor declaration stating that behenamide 

was not recognized as “as one of the more effective lubricants for products.” 

We affirm the court’s conclusion that claim 3 is anticipated. With respect to claim 3, the ’846 patent specification discloses the genus of saturated fatty acid amides 

3 Dependent claim 10 recites the composition of 

claim 1 that is free of a subsidiary lubricant (i.e., 0% 

subsidiary lubricant). The court concluded that the ’846 

patent’s disclosure of an optional subsidiary lubricant 

anticipates claim 10. Summary Judgment Order at 21–

22. We affirm. 

 
 12 INEOS USA LLC v. BERRY PLASTICS CORPORATION

and states that good results are achieved with the narrower genus of saturated fatty acid amides having 12 to 

35 carbon atoms. ’846 patent col. 2 ll. 48–52, 59–61. 

Behenamide falls within the narrower preferred genus

because it is a saturated fatty acid amide with 22 carbon 

atoms. Berry Plastics asserted that behenamide is a 

common lubricating agent, and supported that contention 

with an expert declaration stating that behenamide is a 

common fatty acid amide used in the packaging industry. 

From this evidence we cannot conclude that the court 

erred in finding that the ’846 patent discloses behenamide. Ineos has not demonstrated that it raised a genuine dispute of material fact with respect to claim 3. 

Verbatim disclosure of a particular species is not required

in every case for anticipation because disclosure of a small 

genus can be a disclosure of each species within the 

genus. See Atofina, 441 F.3d at 999 (citing In re Petering, 

301 F.2d at 682). Ineos does not dispute that behenamide 

falls within the narrow genus of saturated fatty acid 

amides having 12 to 35 carbon atoms. And Ineos provided 

no detailed information on how large this genus is to 

support its contention that this genus does not disclose 

behenamide. Ineos’s inventor declaration does not state 

that behenamide is not a common lubricant within this 

species. We conclude that Ineos did not raise a genuine 

dispute of material fact with respect to claim 3. 

CONCLUSION

We affirm the grant of summary judgment of anticipation.

AFFIRMED

COSTS

No costs.