Broad List of References by PTAB Not Adequate Notice of Specific Combinations of Prior Art

Federal CircuitEmerachem Holdings, LLC v. Volkswagen Grp. of Am., Inc., No. 2016-1984, (Fed. Cir. June 15, 2017) (Before Moore, Clevenger, and Chen, J.) (Opinion for the court, Moore, J.)

EmeraChem owns the ’758 patent, which claims methods for regenerating a catalyst/absorber after extended exposure to oxidized nitrate pollutants in the combustion gases of engines. Guth and Campbell are named co-inventors of the ‘758 patent, which incorporates an earlier ’558 patent in its entirety. The ’558 patent discloses a catalyst/absorber used to absorb and oxidize pollutants from exhaust gas. Campbell, Daniziger, Guth, and Padron are named co-inventors of the ’558 patent.

Volkswagen petitioned for inter partes review of claims 1-14 and 16-20 of the ’758 patent. Its fourth ground for unpatentability alleged that these claims would have been obvious under 35 U.S.C. § 103(a) over the ’558 patent, plus the cited Hirota or Saito references, in view of the cited Stiles patent. The Board instituted review on four grounds, but the final written decision relied on this fourth ground to invalidate the claims. It concluded that the ’558 patent is prior art under 35 USC § 102(e).

The Board rejected Campbell’s declaration, which stated that he and Guth solely invented the ‘558 subject matter relied upon by Volkswagen as prior art. In other words, the relevant ‘558 disclosures were not the work of “another” and were not prior art. Instead, the Board agreed with Volkswagen that EmeraChem failed to explain the inventorship assertions in the Campbell Declaration, which was “2015 uncorroborated testimony by an interested witness about events occurring prior to 1995 ….” EmeraChem appealed, arguing that Campbell ’558 is not § 102(e) prior art and that it did not have sufficient notice and opportunity to respond to Stiles as grounds for rejecting dependent claims 3, 16, and 20. The Director of the USPTO intervened to defend the Board’s decision.

The Court first addressed whether Campbell ’558 is § 102(e) prior art. Section 102(e) states, “A person shall be entitled to a patent unless—(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent” (emphasis added). The reference “to another” means that an application issued to the same inventive entity cannot qualify as § 102(e) prior art. The question at issue here was “whether the portions of the reference relied on as prior art, and the subject matter of the claims in question, represent the work of a common inventive entity.” EmeraChem argued that the cited portions of Campbell ’558 are not “by another” and do not qualify as § 102(e) prior art because the Campbell Declaration unequivocally states that Campbell and Guth solely conceived of and invented the subject matter in Campbell ’558 that is cited against the ’758 patent. The Court sided with the Board and rejected this argument, finding that the declaration is simply “a naked assertion by an inventor that he and a co-inventor are the true inventors of the passages cited.” There was nothing in the declaration or in addition to the declaration that provided any context, explanation, or evidence to support the inventor’s “bare assertion.”

EmeraChem cited In re Debaun (C.C.P.A. 1982) to argue that Campbell did not need to corroborate his declaration. There, the inventor filed a declaration to which he attached a drawing to support the declaration. The CCPA held that based on the unequivocal declaration, the inventorship question was satisfactorily answered. The Court distinguished DeBaun from the instant case, explaining that the record in DeBaun included a drawing as corroboration. Here, the Campbell Declaration did not include any support for the assertion in the declaration itself. The Court also distinguished In re Katz (C.C.P.A. 1982), which relied on the inventor’s explanation that his co-authors were students under his direction and supervision. This explanation provided “a clear alternative conclusion to the board’s inference that their names were on the article because they were coinventors.”

However, the Court stated that an inventor is not required to produce contemporaneous documentary evidence. “An evaluation of all pertinent evidence must be made so that a sound determination of the credibility of the inventor’s story may be reached.” Here, the declaration was insufficient to demonstrate that the cited portions of the ’558 patent were not “by another.” The Board did not err in finding that the ’558 is § 102(e) prior art, and the Court affirmed the Board’s decision as to claims 1-2, 4-14, and 17-19.

Next, the Court addressed EmeraChem’s argument that it did not receive adequate notice of, or an opportunity to respond to, the Board’s reliance on Stiles as prior art for claims 3, 16, and 20. The Court agreed. While Volkswagen’s IPR petition stated broadly that the claims were obvious in view of Stiles, it made detailed allegations, including a claim chart, that claims 3, 16, and 20 were obvious, and cited Saito, but not Stiles. In contrast, the petition cited Saito, Hirota, and Stiles for claim 17. The Institution Decision also was not sufficient notice of the Board’s reliance on Stiles, which was cited as a potentially contributing reference in a broad statement regarding obviousness. Like the petition, the claim-by-claim grounds for review cited Saito (not Stiles) for the relevant claims, while citing Saito, Hirota, and Stiles for other claims.

The Court explained that “[w]here the petition uses certain prior art references to target specific claims with precision, or the Board does the same in its decision to institute, the patent owner is directed to particular bases for alleged obviousness. A general statement that lists all challenged claims and all asserted prior art is not a separate, additional articulation that each of the claims may be obvious over any combination of all listed prior art.”

The Court distinguished Cuozzo Speed Technologies, LLC (Fed. Cir. 2015). There, the Board found evidence to “exercise discretion to recognize that the assertion was implicitly made,” even though the combination of references was not explicit. Here, neither the petition nor the Institution Decision gave the patentee explicit or implicit notice that Stiles would be used to rejected claims 3, 16, and 20.

The Court warned that by holding that EmeraChem did not have adequate notice or opportunity to respond to Stiles, it was not holding that the Board is constricted in its final written decision to citing only the portions of a reference cited in its Institution Decision. “[W]ord-for-word parity between the institution and final written decisions” is not required; the question is whether the Board provided adequate notice and opportunity to respond.

The Court vacated the Board’s decision as to claims 3, 16, and 20 and remanded for clarification.

To prove that a prior invention was not created “by another,” an inventor’s declaration must be more than just a bare assertion. The declaration should provide some context, explanation, or supporting evidence. The Board must give a patent owner sufficient notice and opportunity to respond to its reliance on a particular use of prior art against particular claims. A general statement that lists all challenged claims and all asserted prior art is not sufficient notice of any and all specific combinations thereof which may arise.

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Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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There are currently 1 Comment comments.

  1. Paul F. Morgan June 24, 2017 12:42 pm

    This is another good example of the fact that in the infrequent cases in which a patent owner presents on appeal a clear case of being deprived of adequate due process in an IPR, that the Fed. Cir. can and will remand the case.