Jushi Group Co, Ltd v OCV Intellectual Capital, LLC

For novelty, a claim is construed by asking what the skilled person would understand the words or numerical limits to mean. A prior disclosure of overlapping numerical ranges anticipates only where the skilled person would seriously contemplate applying the prior teaching within the area of overlap. The party alleging invalidity must identify the relevant overall overlap and provide evidence addressing it. Mere possibility, indiscriminate selection from several ranges, or an unsupported expectation of success is insufficient. Variations to a prior-art example are not workshop modifications merely because they appear numerically small; the evidence must show that the skilled person would regard them as obvious alternatives. A large prior-art class does not disclose every member of it without an individualised description. A technically advantageous sub-class may therefore be a valid selection invention.

Jushi sought revocation of the UK designation of European Patent 1 831 118 B1 and declarations of non-infringement concerning two proposed glass-fibre products. OCV counterclaimed for threatened infringement. Product 2 was admitted to infringe if the Patent was valid, while Product 1 fell outside the claims. The trial therefore concerned validity.

Jushi relied on lack of novelty and inventive step over US Patent No. 4,199,364 (Neely), including its specific examples and disclosed composition ranges. The central issues were whether numerical-range construction brought Neely example 5 within claim 1, whether overlapping ranges in Neely anticipated claims 1 and 6, whether variations to Neely’s examples were obvious, and whether the claimed subject matter could be treated as a patentable selection invention.

1. The Patent was valid. The claim 1 limits relating to the CaO/MgO ratio and the combined Al₂O₃, MgO and Li₂O content were not construed by applying the whole-number convention. The skilled person would understand the values as exact, and would also understand that the Patent identified Neely example 5 as a comparative example. Claim 1 was therefore not anticipated by that example.
2. For overlapping ranges, the court adopted the TBA’s serious-contemplation criterion. The question was whether, in light of the technical facts, the skilled person would seriously contemplate applying the prior-art teaching within the relevant overlap. The criterion did not eliminate the distinction between novelty and inventive step.
3. Jushi had not adequately identified the overall area of overlap between Neely’s multiple constituent ranges and the claims. Nor had its evidence shown that the skilled person would seriously contemplate making a composition satisfying all the claimed limits. Claims 1 and 6 were not anticipated by Neely Tables IV or VI.
4. The proposed ±6% variations to Neely examples 1 and 5 were not shown to be workshop modifications. Glass composition changes could affect production and physical properties, and testing the proposed variations would have involved research without a pre-conceived expectation of success. Claims 1 and 6 were not obvious on that basis. The evidence also did not establish obviousness over Table IV.
5. A large prior-art class does not necessarily disclose every member. An individualised description of the relevant sub-class is required for lack of novelty. The overlapping part of the claimed invention could properly be regarded as a selection invention. Neely did not direct the skilled person to that area, and the technical advantage was not alleged to be obvious. The selection was therefore novel and inventive. The Patent was valid and infringement had been threatened in relation to Product 2.