E.I. DuPont De Nemours & Co. et al. v. Synvina C.V.


Docket No. 2017-1977 (IPR2015-01838)

LOURIE, O’MALLEY, CHEN
September 17, 2018

Brief summary: FC panel reversed the Board IPR decision of nonobviousness, writing that “this case involves a strong case of obviousness based on very close prior art and weak evidence of nonobviousness.”

Summary: DuPont appealed Board IPR decision that DuPont failed to prove by a preponderance of the evidence that Synvina’s US 8,865,921 is invalid for obviousness. The ‘921 patent claims “[a] method for the preparation of 2,5-furan dicarboxylic acid” (FDCA) using a compound selected from a list including 5-hydroymethylfurfual (HMF) “in the presence of an oxidation catalyst comprising both Co and Mn, and further a source of bromine, at a temperature between 140oC. and 200oC., wherein a solvent or solvent mixture comprising acetic acid or acidic acid and water mixtures is present.” The FC panel reviewed the specification with respect to each of the four conditions, explaining that the specification states that “[b]y conducting the oxidation reaction under the disclosed reaction conditions…the inventors ‘surprisingly’ achieved high yields of FDCA”. The Board instituted IPR of claims 1-5 and 7-9 on two of DuPont’s grounds, but not for other claims or grounds (as explained in FN8, neither party requested any action based on…SAS” (US 2018) and the FC does “not order such action sua sponte” (PGS Geophys., FC 2018). “[T]he Board held the instituted claims not unpatentable as obvious” and “rejected DuPont’s contention that a burden-shifting framework applied” under In re Magnum Oils (FC 2016) and Dynamic Drinkware (FC 2015) which “foreclosed such a framework in an IPR.” The Board recognized overlapping ranges between the prior art and the claims but found that none of the references “expressly taught a process” including the claimed conditions, and “held that DuPont failed to prove that ‘reaction temperature and [PO2] were recognized as result-effective variables in the prior art, or that the adjustment of those parameters to within the claimed ranges would have been a matter of routine experimentation.” The Board also found “then-patent owner” Furanix’s evidence of secondary considerations “to be less probative in supporting a conclusion of non-obviousness” (but did not find invalidity for obviousness). In this appeal, Synvina argued that DuPont lacked standing since it had “not suffered an actual or imminent injury in fact” and “can posit only speculative future harm” but the FC panel explained that “a petitioner who appeals from an IPR decision need not face ‘a specific threat of infringement litigation by the patentee’ to establish jurisdiction” (under Article III, case or controversy (ABB, FC 2011; MedImmune, US 2007; e.g., “DuPont currently operates a plant capable of infringing the ‘921 patent” (JTEKT, FC 2018)). On the nonobviousness conclusion, the FC panel explained that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (In re Aller, CCPA 1955; In re Peterson, FC 2003). The FC panel also explained that once a challenger has shown the entire claimed range was in the prior art and “there is no evidentiary reason to question” it, the challenger’s “burden of persuasion is necessarily satisfied” and it is then the patentee’s burden to rebut that evidence by showing, e.g., “teaching away, unexpected results or criticality, or other pertinent objective indicia” (Galderma, FC 2013), including in the context of an IPR (decided here for “the first time”). The Board, the FC panel found, therefore should have required Synvina to rebut DuPont’s evidence that the claimed range was previously disclosed. The FC panel also agreed with DuPont that “temperature and PO2 were recognized as result-effective variables” and that the Board erred in finding otherwise (“recognized by the prior art, either expressly or implicitly” to affect “the claimed oxidation reaction” (Antoine, CCPA 1977; Appl. Mat., FC 2012). The FC panel therefore reversed the Board decision, writing that “this case involves a strong case of obviousness based on very close prior art and weak evidence of nonobviousness.”

This entry was posted in Inter Parties Review (IPR), IPR, Obviousness. Bookmark the permalink.

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