Docket No. 2015-1983, -2001
PROST, NEWMAN, TARANTO
October 11, 2017
Brief summary: PTAB decision following IPR sustaining the patentability of Rohm’s patents relating to polymers for use in paints and the like affirmed (e.g., Organik did not present any “evidence to contravene with the patent specification or the expert testimony.”)
Summary: Organik appealed PTAB decision following IPR sustaining the patentability of Rohm’s US 6,020,435 and 6,252,004 relating to processes for preparing emulsion polymers having improved opacity for use in paints and the like. Organik challenged the patents on the grounds of anticipation and obviousness. The FC panel explained that PTAB decisions regarding anticipation (a question of fact) are “reviewed for support by substantial evidence in the record before the PTO”, and obviousness “is a matter of law and receives plenary review on appeal, with any underlying findings of fact reviewed for support by substantial evidence in the PTO record” (Kennametal, FC 2015). For claim construction, “the PTAB relied principally on the intrinsic evidence” and therefore “receives de novo review on appeal” (Microsoft, FC 2015). Representaive ‘435 claim 1 is directed to “[a] process for preparing emulsion polymer particles comprising: (a) providing an aqueous emulsion” having specific characteristics and (b) reducing the level of monomer by at least fifty percent.” The “aqueous emulsion” requires a swelling agent and, according to Organik, the Board “improperly added a ‘swelling step’ into the claims” by including in its definition that “the swelling agent operates ‘under the conditions of the specific process for which the agent is to be used’”, and found the cited art does not disclose a “swelling agent” (same argument was raised regarding the ‘004 patent). Organik argued the PTAB (which relied in part on expert testimony) “improperly adopted the narrower of two possible constructions of a ‘grammatically ambiguous passage’” (“Suitable swelling agents include, are those which…”) and “the broader construction of any ambiguity is required by law” (In re Cuozzo, FC 2015 (US 2016) (broadest reasonable construction)). The FC panel agreed with the PTAB that “include’…is modified by the phrase immediately following it, i.e., ‘are those which’, suggesting that those suitable swelling agents include only those which exhibit the functional characteristics thereafter described” (“construction ‘cannot be divorced from the specification and the record evidence’ and ‘must be consistent with the one that those of skill in the art would reach’” (Microsoft, FC 2015; In re NTP, FC 2011; In re Cortright, FC 1999)), and noted that Organik did not present any “evidence to contravene with the patent specification or the expert testimony.” Organik argued that one of the prior art references (“Toda”) taught a “swelling agent” but Rohm’s expert “verified by experimentation” that Toda did not, and Organik “did not provide any contrary evidence” that “negate[d] and outweigh[ed]” Rohm’s evidence. The FC panel also agreed with the PTAB regarding the second prior art reference (“Touda”) for similar reasons (e.g., Organik criticized Rohm’s expert conclusions but “did not reproduce any of his experiments or any of the Touda examples”). And it agreed with the PTAB’s decision, based on the same reasoning, that these references did not invalidate the ‘004 claims.