IPR obviousness decisions reversed for lacking a proper explanation and improperly considering the commercial sales evidence

Chemours Company FC, LLC v. Daikin Industries, Ltd. et al. (USPTO as Intervenor)

Docket No. 2020-1289, -1290 (IPR2018-00992, -00993) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1289.OPINION.7-22-2021_1808187.pdf)

NEWMAN, DYK, REYNA

July 22, 2021

Brief Summary:  Board obviousness IPR decisions reversed for lacking a proper explanation and improperly considering the commercial sales evidence.

Summary:  Chemours appealed two IPR final written decisions (FWDs) finding the challenged claims relating to polymers obvious.  Chemours argued “the Board erred in its obviousness factual findings and did not provide adequate support for its analysis of objective indicia of nonobviousness”.  Chemours also argued the decision violated “the Appointments Clause because the Board’s decision came after this court’s decision in Arthrex” (Arthrex, FC 2019), but this request was withdrawn.  Chemours argued that Daikin “did not meet its burden of proof because it failed to show that a person of ordinary skill in the art (‘POSA’) would modify Kaulbach’s [the prior art] polymer to achieve the claimed invention.”  The FC panel concluded that “the Board appears to have ignored the express disclosure in Kaulbach that teaches away from the claimed invention and relied on teachings from other references that were not concerned with the particular problems Kaulbach sought to solve” and “did not adequately grapple with why a skilled artisan would find it obvious to increase Kaulbach’s melt flow rate to the claimed range while retaining its critical ‘very narrow molecular-weight distribution’” or “explain why a POSA would be motivated to increase Kaulbach’s melt flow rate to the claimed range, when doing so would necessarily involve altering the inventive concept of a narrow molecular weight distribution polymer” (Stratoflex, FC 1983 (“the scope of the relevant prior art is that which is ‘reasonably pertinent to the particular problem with which the inventor was involved’”); In re GPAC, FC 1995 (“it is key to first determine whether the reference is within the inventor’s field of endeavor, and if not, ‘whether the reference is reasonably pertinent to the particular problem confronting the inventor’”); both citing In re Wood, CCPA 1979; Trivascular, FC 2016 (finding no motivation to modify the prior art where doing so “would destroy the basic objective” of the prior art); Judge Dyk dissented from this teaching away conclusion (Bayer, FC 2017 (“that ‘better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes’”)).  Further, the FC panel found the factors cited by the Board “do not demonstrate that a POSA would have had a ‘reason to attempt’ to get within the claimed range, as is required to make such an obviousness finding” (Procter & Gamble, FC 2009 (citing PharmaStem, FC 2007)).  The FC panel also explained that “evidence of objective indicia of nonobviousness must be considered if present” and have a “nexus to the claimed invention” that can be the “inventive combination of known elements” (Pentec, FC 1985; Graham, US 1966; In re GPAC; WBIP, FC 2016; Rambus, FC 2013 (“patented design as a whole”); “the separate disclosure of individual limitations, where the invention is a unique combination of three interdependent properties, does not negate a nexus”).  It concluded that the Board “erred in its analysis that gross sales figures, absent market share data, ‘are inadequate to establish commercial success’” of Chemour’s claimed invention.  The FC panel also disagreed with the Board’s determination that the commercial success evidence “was weak” because “the ’609 patent covering the FEP 9494 product would have precluded others from freely entering the market” as the challenged patent “cannot act as a blocking patent” (Acorda, FC 2018; Galderma, FC 2013; Prima Tek II, FC 2000).

This entry was posted in Inter Parties Review (IPR), IPR, Obviousness, Obviousness (Secondary Considerations), Obviousness-Teaching Away. Bookmark the permalink.

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