Home Legal Advice Arguing Obviousness: Teaching Away versus an Alternative Approach

Arguing Obviousness: Teaching Away versus an Alternative Approach

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by Dennis Crouch

Obviousness is the central doctrine of patent legislation.  It is each the most typical motive for rejection and infrequently essentially the most difficult concern due to each factual and authorized complexities.  The new Chemours Co. resolution gives an necessary addition to obviousness doctrine in two areas: (1) educating away; and (2) industrial success.  The majority sided with the patentee and reversed the IPR Board’s single-reference obviousness willpower.  The dissent argued that the opinion offers an excessive amount of energy to the teaching-away doctrine.

Chemours Company v. Daikin Industries (Fed. Cir. 2021)

Chemours is a 2015 spin-off from Du Pont. Its patents at points right here relate to a polymer having a excessive soften movement to permit high-speed extrusion to cowl electrical wires.  U.S. Patent Nos. 7,122,609 and eight,076,431.  The claims require a standardized soften movement fee vary: 30±three g/10 min together with different physical properties.

Daikin petitioned for inter partes assessment, and the PTAB agreed that the claims had been invalid as apparent based mostly upon a single prior artwork reference, U.S. Patent No. 6,541,588 (“Kaulbach”).  Judge Dyk’s dissenting opinion on this case explains that “[t]he only material difference between [Chemours] claim 1 and Kaulbach is that Kaulbach discloses (in Sample A11) a melt flow rate of 24 g/10 min, slightly lower than 27 g/10 min, the lower bound of the 30 ± 3 g/10 min rate claimed in claim 1 of the ’609 patent.”  Actually, Kaulbach goes even additional and expreslly discloses a soften movement fee of “15 g/10 min or greater” and consists of the instance of 24 g/10 min MFR.

On its face, Kaulbach discloses a movement fee that encompasses Chemours’ claimed fee — fairly good prima facie that this component was disclosed, however the Board hung its hat on the actual instance and concluded that it will have been apparent to switch Kaulbach’s 24 instance in order that it match Chemours’ 27 requirement.

The downside: Kaulbach additionally targeted on having a slim distribution of molecule sizes inside its polymer, and people expert within the artwork apparently didn’t know growing movement fee from 24 to 27 whereas sustaining the slim distribution. The Board resolved this rigidity in favor of an obviousness discovering, however you’ll be able to see from the patent that the inventors push in opposition to broad molecular weight approach:

[The prior art] mixtures have a really broad molecular weight distribution which in accordance with standard knowledge, leads to an improved extrudability. . . . [However, our invention] has a really slim molecular-weight distribution. i.e., a ratio of Mw to Mn of lower than about 2.

Kaulbach prior artwork patent.

Teaching Away: On appeal, the Federal Circuit reversed the obviousness willpower and held that the Board ought to have taken extra care in contemplating Kaulbach’s teaching-away from broader molecular weight distribution:

[T]he Board seems to have ignored the specific disclosure in Kaulbach that teaches away from the claimed invention and relied on teachings from different references that weren’t involved with the actual issues Kaulbach sought to resolve. In different phrases, the Board didn’t adequately grapple with why a talented artisan would discover it apparent to extend Kaulbach’s soften movement fee to the claimed vary whereas retaining its essential “very narrow molecular-weight distribution.”

Slip Op.  You’ll notice that the an inventor wouldn’t must shift removed from Kaulbach’s 24 g/10 min instance movement fee to get inside Chemours’ claimed fee that features about 27 g/10 min.  But, to take action pushes in opposition to the basic ingenious idea of Kaulbach of a slim molecular distribution. The PTAB’s resolution “does not 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.” Slip Op.  An necessary caveat right here is that Chemours’ patent doesn’t truly declare any specific molecular weight distribution, however knowledgeable testament apparently satisfied the Board {that a} broad molecular distribution was required.

In its resolution, the bulk ties concludes that the teaching-away negates a motivation to switch the prior artwork reference.  One oddity of the choice is that the court docket additionally spends a while reciting precedent on pertinent prior artwork, however doesn’t apply that doctrine in any significant method.

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The majority opinion was authored by Judge Reyna and joined by Judge Newman. Judge Dyk wrote in partial dissent.  According to Judge Dyk, the bulk positioned an excessive amount of weight on the teaching-away doctrine.

In specific, Judge Dyk reads the the prior artwork patent as offering another slim molecular weight distribution whereas additionally acknowledging the traditional knowledge and feasibility of getting a excessive distribution. “This is not a teaching away from the use of a higher molecular weight distribution polymer. . . . The majority’s approach impermissibly expands the teaching away doctrine such that it encompasses a reference’s mere preference for a particular alternative. ” Slip Op. Dissent.

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Secondary Indicia of Nonobviousness: During the IPR, Chemours  introduced proof of economic success as goal indicia of nonobviousness.  Generally, the industrial success of an invention can be utilized as circumstantial proof to show that the invention is non-obvious.  The primary concept right here is that an apparent precious invention would already be available in the market place.  Since there are a selection of the explanation why any specific product is perhaps profitable, patent legislation typically requires a displaying of nexus between the claimed invention and the success — that the innovation (relatively than advertising and marketing or non-claimed design parts) is answerable for the industrial success.

Here, the Board discovered the industrial success proof missing and thus gave it no weight within the obviousness evaluation.  On appeal, the Federal Circuit discovered three ways in which the Board’s resolution did not keep track of the legislation.

Nexus and Commercial Success: First, the Board discovered no nexus as a result of industrial success couldn’t be tied on to ingenious contribution of the Chemours patents.  Here, the Board’s resolution was odd.  The Board primarily discovered that the Chemours patent had no ingenious contribution (i.e., had no points of novelty) and due to this fact may don’t have any nexus.  On appeal, the Federal Circuit rejected that evaluation as opposite to legislation.

The Board discovered no nexus between the claimed invention and the alleged industrial success as a result of Kaulbach disclosed all options apart from the claimed soften movement fee. The Board then discovered that different prior artwork of file disclosed soften movement charges of 50 g/10 min.

Contrary to the Board’s resolution, the separate disclosure of particular person limitations, what place the invention is a singular mixture of three interdependent properties, doesn’t negate a nexus. Concluding in any other case would imply that nexus may by no means exist what place the claimed invention is a singular mixture of identified parts from the prior artwork.

Slip op.

Market Share vs Sales Numbers: The Board additionally held that market share proof (relatively than merely gross sales numbers) is required for a displaying of economic success. The Federal Circuit disagreed. “[M]arket share data, though potentially useful, is not required to show commercial success.”

Blocking Patents: Still on Commercial Success, the Board additionally rejected the industrial success argument after discovering that Chemours patents at concern blocked market competitors — in order that any industrial success could be as a result of patent’s existence relatively than the innovation’s marketability.   On appeal, the Federal Circuit rejected this conclusion additionally as opposite to legislation, discovering that the Board completely misapplied the blocking patent doctrine.

The Board erred by misapplying the “blocking patents” doctrine to the challenged patents themselves. A blocking patent is one that’s in place earlier than the claimed invention as a result of “such a blocking patent may deter non-owners and non-licensees from investing the resources needed to make, develop, and market such a later, ‘blocked’ invention.’” However, the challenged patent, which covers the claimed invention at concern, can not act as a blocking patent.

Slip Op. On this level, whereas I agree that Board’s resolution didn’t keep track of conventional blocking patent doctrine its approach is could also be helpful.

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