PTAB obviousness decision vacated as being improperly based on inherency

Knauf Insulation, Inc. et al. v. Rockwool International A/S

Docket No. 2018-1810-11, -1891
October 15, 2019

Brief Summary: PTAB inter partes reexamination obviousness determination vacated as being based on inherency.

Summary: Knauf appealed PTAB’s inter partes reexamination decision finding certain claims of US 7,888,445 and 7,772,347 relating to compounds (malanoidins), compositions and methods used to produce fibrous products such as fiberglass to be invalid for obviousness. Rockwool cross-appealed the PTAB’s decision that other claims were not invalid for obviousness. PTAB found obviousness in view of a combination of three US patent references (Wallace, Worthington and Helbing). The FC panel opinion explained do not “explicitly teach that the disclosed reactions are Maillard reaction or disclose that the result of the reactions are melanoidin products”, but that substantial evidence supported “the Board’s determination that Worthington and Wallace inherently teach Maillard reactions”. The Board relied on Helbing to teach other aspects of the claims (e.g., “it would have been obvious [to have] utilized a carbohydrate in Helbing as an exemplification of a polyhydroxy compound.”) However, the FC panel also “conclude[d] that a finding of a motivation to combine based on similarity of the references in this case is unsupported by the evidence” since the reactions disclosed in the references “are not similar enough to constitute the sole reason to combine a mosaic of disclosures from each reference to reach the claimed invention” (e.g., “Replacing Helbing’s polyhydroxy component with a reducing sugar to engage a Maillard reaction would fundamentally change the nature of the reaction taught in Helbing, “there is no reason an ordinary artisan would make a fundamental change based on ‘similarity”, “[a]lthough a reference may be used for everything it teaches…the Board did not identify any suggestion in Helbing to use a reducing sugar’”). The FC panel explained that the PTAB’s reasoning is “classic hindsight bias in light of the claimed invention” (“an illusion build upon hindsight bias”) (W.L. Gore, FC 1983) and that “[e]ven after KSR, to support a determination of obviousness that a reference includes a broad generic disclosure and a common utility to that in the claims and other prior art references-there must be some reason to select a species from the genus” (In re Jones, FC 1992; Takeda, FC 2007). The FC panel also found the PTAB’s conclusion of obviousness regarding claims having “a quantity limitation” to be erroneous (e.g., “That a prior art reference satisfies these limitations in the reactants is not enough to allow the Board to find inherency in the products of the reaction, unless there is evidence that any reaction meeting these quantity of reactant limitations would result in the quantity of product limitation.” Citing Continental Can, FC 1991, which cites In re Oerlich, CCPA 1981 (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”)) The FC panel also found that Rockwell did not have standing to appeal “the Board’s holding of no invalidity with respect to the cross-appealed claims” even though it “participated in the reexamination”, as it does not have Article III standing with respect to those claims, only those “directly appealed” by Knauf (Consumer Watchdog, FC 2014 (requiring “a case or controversy between the parties”, “having an issued patent does not itself confer jurisdiction on anyone wishing to challenge its validity”).

This entry was posted in Article III disputes, Inter Parties Review (IPR), Obviousness, Reexamination, Uncategorized. Bookmark the permalink.

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