Nonprecedential CAFC Decision Presents Questions of Standing

By Eileen McDermott
October 17, 2019

“The CAFC said that Rockwool would have had standing with respect to the directly appealed claims, but that it had ‘failed to establish that it has suffered an injury in fact for purposes of maintaining a cross-appeal.’”

Federal CircuitIn Knauf Insulation, Inc. v. Rockwool International, the U.S. Court of Appeals for the Federal Circuit vacated and remanded the Patent Trial and Appeal Board’s determination in an inter partes reexamination that certain patent claims for two of Knauf’s patents covering fibrous products and related methods and binder and fiber glass products were obvious. The Court also found that certain other claims of the two patents were not unpatentable as obvious, and Rockwool International cross-appealed that determination, but the Court held that Rockwool did not have standing to cross-appeal and thus dismissed it. The decision was not precedential, but some have commented that the Court’s holding with respect to Rockwool’s lack of standing for a cross-appeal could have significant implications.

Non-Obviousness

The Court first found that the substantial evidence did not exist to support the combination of references relied on by the PTAB solely based on the similarity of their disclosed reactions. The PTAB held that the appealed claims were obvious because an ordinary artisan would have combined U.S. Pat. No. 2,215,825 (Wallace), U.S. Pat. No. 3,513,001 (Worthington), and U.S. Pat. Pub. No. 2005/020224 (Helbing) due to the similarity of their disclosed chemical reactions. While the Federal Circuit found that the Board’s determination that Worthington and Wallace inherently teach Maillard reactions (a type of chemical reaction) was supported by substantial evidence, the Court noted that “Wallace and Worthington do not teach the use of their reactions as binders for ‘mineral fibers and/or glass fibers,’ a ‘silicon-containing coupling agent,’ or ‘an initially alkaline [] solution,’ as required by the claims, and for which the Board relied on Helbing.” Thus, the described reactions “are not similar enough to constitute the sole reason to combine a mosaic of disclosures from each reference to reach the claimed invention.”

“The lack of similarity between the references undermines the Board’s finding that an ordinary artisan would combine their teachings to use the alkaline solution, use of the binder with fiberglass, and use the silicon-containing coupling agent of Helbing with the Maillard reaction inherently taught in Worthington/Wallace,” wrote Judge Linn for the Court.

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“Substantially All” is Enough

With respect to Knauf’s contention that the Board’s finding that the combination inherently disclosed the quantity limitations found in several of the appealed claims, the Court held that the Board erred. The claims at issue included a quantity limitation for the amount of binder that is melanoidin using the term “substantially all.” The Board held, among other points, that Knauf had not explained what amount of non-melanoidin was permitted by the claims and, therefore, that “any amount above a trace or impurity amount would satisfy the claim limitation,” ultimately leading to the conclusion that the limitation was inherently disclosed by the combination of Worthington, Wallace, and Helbing. The CAFC disagreed.

“The term ‘substantially all’ in claim 16 (and the quantity limitations in the other claims) means what it says,” wrote the Court. “The Board may not ignore this limitation or rewrite it to mean ‘at greater than impurity levels.’”

Thus, the decision vacated the Board’s holding that claims 16- 22 of Knauf’s ’445 patent and claims 29-32 of Knauf’s ’347 patent were obvious, and remanded for further proceedings consistent with the opinion.

No Leg to Stand On

Turning to the issue of Rockwool’s standing to cross-appeal the claims that the Board had found non-obvious, the Federal Circuit said that “Rockwool has not pointed to any evidence showing a case or controversy between the parties with respect to the cross-appealed claims.” Although Rockwool properly participated in the reexamination process, standing is required to seek review in federal court, said the Court. Citing Summers v. Earth Island Inst., 555 U.S. 488, 497 (2009), the Court said that “the ‘requirement of injury in fact is a hard floor of Article III jurisdiction that cannot be removed by statute.’”

Rockwool’s argument for standing included assertions that, 1) as it was involved in the reexamination process, if the Court were to affirm the cross-appealed claims, “the parties will be forced to return to the Patent Office and participate in further proceedings”; (2) that 28 U.S.C. § 1295(a)(4)(A) gives the Federal Circuit exclusive jurisdiction over appeals from the Board “at the instance of a party who exercised that party’s right to participate in the applicable proceeding before or appeal to the Board”; and (3) a cross-appeal is proper under Bailey v. Dart Container Corp. of Mich., 292 F.3d 1360, 1362 (Fed. Cir. 2002) whenever “a party seeks to enlarge its own rights under the judgment or to lessen the rights of its adversary under the judgment,” which allegedly occurred here. Rockwool also noted that “the Court generally finds jurisdiction in appeals and cross-appeals from Board decisions.”

The CAFC said that Rockwool would have had standing with respect to the directly appealed claims, but that it had “failed to establish that it has suffered an injury in fact for purposes of maintaining a cross-appeal.” To support its finding, the Court cited Consumer Watchdog v. Alumni Res. Found’n, 753 F.3d 1258. In that decision, the Court held that “a party’s interest in a desired outcome on reexamination did not confer standing because Consumer Watchdog was afforded everything to which it was entitled—an opportunity to request reexamination and participate—and that Congress’s grant of the procedural right to appeal the Board’s findings to the Federal Circuit did not eliminate the requirement that appellant have standing to exercise that procedural right.”

Because Rockwool was not a current or prospective competitor of Knauf; had not asserted anything apart from its past and future involvement in the reexamination at the USPTO; and had not alleged any action by Knauf that would create standing for Rockwool beyond the continued presence of the patent after reexamination, it was not enough to satisfy the standing requirement.

“There is no inconsistency between this Court having exclusive jurisdiction over appeals from the Board and this Court’s refusal to exercise its jurisdiction to provide an advisory opinion at the behest of a third-party without standing. In this context, the grant of a reexamination certificate is similar to the initial grant of a patent. It is well-established that having an issued patent does not itself confer jurisdiction on anyone wishing to challenge its validity.”

Rockwool had attempted to distinguish its position from that of Consumer Watchdog because of its intentions to seek to cancel the cross-appealed claims at the USPTO. But the Court found that “just as Rockwool’s current engagement with the PTO cannot itself create standing, its future pressing of its claims also cannot itself create standing here. The burden of participating in a hypothetical future inter partes reexamination does not itself constitute an injury-in-fact sufficient to confer standing here.”

A “Wooden” Reading

Jonathan Stroud, Chief IP Counsel Unified Patents, said in LinkedIn commentary on the case and in an email to IPWatchdog that the Court’s holding on standing is “troubling for a host of reasons, the primary one being that most courts find that if one party establishes standing, the court can properly find it has standing over the whole matter.” He added that the decision ultimately “leads to a rather ‘wooden’ reading of appellate standing” and that it probably should have been precedential—although he’s glad it wasn’t.

“Given that I disagree with the outcome, I’m glad it was non-precedential, but generally, I think as an issue of first instance it probably should have been precedential to avoid ambiguity or confusion,” Stroud said.

 

The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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There are currently 1 Comment comments. Join the discussion.

  1. B October 17, 2019 7:49 pm

    THIS is an interesting aspect of law, and it will likely bite a number of people in the behind in future cases. I’m not sure of the standing decision one way or another.

    That said, leave it the PTAB to get fundamental tenants of claim construction wrong, and leave it to the PTAB to get the whole lack of substantial evidence thing wrong. This isn’t a s101 issue where claim construction is despised and the substantial evidence can be ignored or distorted by the CAFC.

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