USPTO’s “Informative” denial of IPR institution finds Petitioner did not “explain[] sufficiently why” combination would have been made with a reasonable expectation of success

Johns Manville Corp. et al. (Petitioner) v. Knauf Insulation et al. (Patent Owner)

IPR2018-00827 (US 9,828,287 B2)
Final Written Decision entered October 16, 2018
Designated as Informative by the USPTO on December 11, 2019

Brief Summary: Informative FWD concluded Petitioner did not meet its burden to show obviousness (e.g., did not “explain[] sufficiently why” combination of references would have been made with a reasonable expectation of success).

Summary: In this final written decision, designated as Informative by the USPTO, the Board denied institution of IPR after determining that Johns Manville (JM) did not establish a reasonable likelihood that it would prevail in its obviousness challenges to Knauf’s US 9,828,287 B2 relating to “thermal or acoustical fiberglass insulation material” including particular amounts of several components (e.g., “the total weight of reactants ranges from about 73% to about 96%”, 75-99% glass fibers, “density of from about 0.4 lbs/ft3 to about 6 lbs/ft3”). The Board did not construe any of the claim terms (Vivid Techs., Fed. Cir. 1999), and determined one skilled in the art would have had a Ph.D. in Chemistry and 3-5 years industry experience in developing binders for fiberglass insulation products. JM argued “that a skilled artisan would have had several reasons to combine the teachings” of two prior art references, but Knauf argued the suggested reasons were insufficient (e.g., “picks and chooses binding components without explanation”, “being the same field of endeavor or analogous does not establish obviousness”, failed to support “assertion that” the references “could have been predictably combined”, “compatibility does not mean obvious to combine”, “a need for formaldehyde-free bindings is not a reason to modify”). The Board that demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish [a] reason to combine its teachings with other prior art” (citing Securus Tech., Fed. Cir. 1997) and that “[m]ere compatibility of [] references is likewise not sufficient” (Personal Web, Fed. Cir. 1997). The Board also found that JM did support its argument “that all thermoset binders are useful” or “in its claim-by-claim analysis, which elements of the cited references could be predictably combined” (e.g., expert testimony did not “explain[] sufficiently why” a particular prior art composition would have been selected as a binder). The Board also found JM did not sufficiently explain “the reasons for” the modifications of the prior art, “and whether there would be a reasonable expectation of success” (“An unsupported statement that combining the teachings of two references would have been ‘well within the skill of a POSA,’ because the results of reacting a reducing sugar with an amine reactant ‘were well-known and predictable’ does not meet Petitioner’s burden….Petitioner does not expressly discuss whether one of ordinary skill in the art would have had a reason to combine the cited teachings….”) (citing KSR, US 2007 (“Obviousness…requires a reason…to combine the elements”) and Intell. Biosys., Fed. Cir. 2016 (“reasonable expectation of success in doing so”)). The Board also found JM did not adequately explain why the claims of another patent claiming “[v]irtually all of the subject matter of the challenged claims” and found unpatentable after reexamination meant that the ‘287 claims were also unpatentable.

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

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