Did You Know About Supplemental Examination?

Photo of John P. Isacson
John P. Isacson

The America Invents Act (AIA) ushered in an era of Patent Office trials to adjudicate the validity of issued patents. The AIA, however, created an additional, lesser used, avenue to address patent validity. This procedure is known as Supplemental Examination under 35 USC 257.

Continue reading “Did You Know About Supplemental Examination?”

Federal Circuit Criticizes PTAB for Failing to Properly Weigh Objective Evidence of Non-Obviousness

By Tom Engellenner
The Federal Circuit Court of Appeals again vacated a Patent Trial and Appeal Board (PTAB) panel decision for failing to properly evaluate “objective evidence of non-obviousness” and remanded the case for determinations consistent with its opinion. Specifically, the Fed. Cir. panel faulted the PTAB’s analysis Patent Owner’s objective evidence of unexpected results and further found that Board had applied a “legally erroneous” standard by placing the burden on the patent owner to show that one skilled in the art would have expected “failure.”  (See, Honeywell International v. Mexichem Amanco (Fed. Cir.  No. 2016-1996, August 1, 2017).

The case involved an appeal to the PTAB of one of the last inter partes re-examinations to be rendered before the new America Invents Act (AIA) went into effect and provided new proceedings for challenging patents.  Nonetheless, the standards for evaluation of objective evidence of non-obviousness are equally applicable to inter partes review (IPR) and post grant review (PGR) proceedings.  And this case can be seem as yet another volley in the Federal Circuit’s ongoing criticism of how the PTAB has treated objective evidence of non-obviousness in many of its decisions.

The patents at issues involved a novel combination of an environmentally-friendly HFO hydroflurocarbon: 1,1,1,12-tetrafluorpropene (HFO-1234yf) and a polyalkylene glycol (PAG). The Patent Owner, Honeywell International, had argued that HFO compounds were known to be reactive and unstable and, hence, were considered a disfavored class of refrigerants.  Similarly, PAGs were known to hygroscopic and likewise unstable.  Honeywell submitted evidence showing that one of ordinary skill in the art would have expected the combination to result in peroxide formation and degradation of the refrigerant.  Honeywell further showed that the combination did not degrade and was in fact superior to similar refrigerants combined with PAG.

The Federal Circuit panel appeared particularly vexed by the logic of the PTAB reasoning on the obviousness issue:

[T]he Board erred in dismissing Honeywell’s evidence of unpredictability in the art when it stated that one of ordinary skill would no more have expected failure than success in combining the references. The Board made what amounts to a finding that one of ordinary skill would not have had a reasonable expectation of success in combining HFO-1234yf with PAG lubricants, but then seemed to make a burden-shifting argument that Honeywell did not persuasively establish that one of ordinary skill would have expected failure. . . . . The Board rejected Honeywell’s evidence, concluding that, because there would have been no reasonable expectation of success, one of ordinary skill would have arrived at the claimed combination by mere “routine testing.” . . . Thus, the Board seems to have determined that, because stability in the art was entirely unpredictable, one of ordinary skill would have made no predictions at all, but rather would have expected to undertake efforts to find an optimal combination and thus that “routine testing” would have led the skilled artisan to the claimed combination. Id.

In an inter partes reexamination involving obviousness, the standard is not whether the patent owner can persuasively show that one of ordinary skill would have expected failure. Rather, the burden is on the Examiner to show that one of ordinary skill would have had a motivation to combine the references with a reasonable expectation.

The Court of Appeals for the Federal Circuit has now criticized the PTAB several times now for not properly evaluating objective evidence of non-obviousness in inter partes review and/or reexamination proceedings.  For example, In PPC Broadband v. Corning Optical (Fed. Cir. 2015-1364) the Federal Circuit found that the PTAB erred in rejecting the Patent Owner’s commercial success evidence.  The Petitioner had failed to argue that the successful product did not embody the claimed invention and the Board erred in reaching that conclusion on its own.

In ClassCo v. Apple, Fed. Cir. 2015-1853 (September 2016), the Fed. Cir. nixed a stringent “nexus” requirement erected by early PTAB decisions. (These early decisions had suggested that it was not enough that a commercial product embodying the invention be successful, the Patent Owner had to prove that the success was due exclusively to the patented feature.)  In a precedential decision in the ClassCo class, the Federal Circuit made it clear that a nexus exists between the claimed invention and the objective evidence whenever the evidence is reasonably commensurate with the scope of the claims.  “[W]e have consistently held that a patent applicant ‘need not sell every conceivable embodiment of the claims in order to rely upon evidence of [objective indicia of nonobviousness].”

Despite PTAB “Sweet Talk” Federal Circuit Reverses Invalidity Of Deicing Patent

By Tom Engellenner
The Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) invalidity decision last week that had found a patent for a molasses-based, road deicing agent obvious over earlier patents on sugar-related inventions.  The Federal Circuit panel of Judges Pauline Newman, Raymond C. Clevenger and Kathleen M. O’Malley concluded that the U.S. Patent and Trademark Office (USPTO) finding of invalidity during reexamination proceedings was faulty because the USPTO had failed to set forth a prima facie case explaining why a person of ordinary skill in the art would have been motivated to combine references from disparate technological fields.  In Re Natural Alternatives, LLC (Fed. Cir. No. 2015-1911, August 31, 2016).

Univar, Inc., a licensee of U.S. Patent No. 6,080,330 owned by Natural Alternatives, LLC., filed three reexamination requests in 2011, seeking review of the licensed patent. The reexamination proceedings were consolidated, and the examiner found the claims drawn to a deicing composition comprising 25-99% desugared sugar beet molasses obvious in light of an earlier Polish patent combined with certain secondary prior art references.  Natural Alternatives appealed the reexamination decision to the PTAB but the board affirmed the examiner’s position, and the patent owner then appealed to the Court of  Appeals for the Federal Circuit.

In a decision handed down on August 31, 2016, the Federal Circuit disagreed with the PTAB’s reasoning.  First, the panel found the PTAB’s reliance on a 1990 Polish Patent No. PL 164018 to Zdzislaw (“Zdzislaw”) was misplaced because it did not teach the use of “desugared” molasses.  The process described in the Polish patent retained approximately 50% of the sugar in the molasses, while the patent at issue described processes for removal of most of the sugar.  Second, the Federal Circuit panel found one of the secondary references to be so far afield of the invention that a skilled artisan would not have motivated to combine it with Zdzislaw.  Finally, the panel found the examiner and the PTAB had improperly ignored the patent owner’s evidence of commercial success.

In particular, the decision criticized the PTAB’s reliance on U.S. Patent No. 5,639,319 to Daly (“Daly”); alone or together with a journal article titled “Winter is Hell,” published July 1997 in Public Works (“Public Works”).  The Daly patent was directed to the use of desugared sugar beet molasses (DSBM) as tire ballast, which served the unrelated purpose of stabilizing and balancing tires.  The Federal Circuit panel agreed with the patent owner that a person having ordinary skill in the art would not have found Daly to be reasonably pertinent to the problem of deicing road surfaces. Continue reading “Despite PTAB “Sweet Talk” Federal Circuit Reverses Invalidity Of Deicing Patent”