By Brian Craig, J.D.
The PTAB’s finding of a motivation to combine based on similarity of the references was unsupported by substantial evidence.
Concluding that substantial evidence did not support the Patent Trial and Appeal Board’s finding of obviousness of certain claims for two patents related to fiberglass insulation owned by Knauf Insulation, Inc., the U.S. Court of Appeals for the Federal Circuit has reversed the Board’s decision. Because the similarity of two prior art references was the Board’s only reason for combining the references, the Federal Circuit vacated the Board’s determination of obviousness. The Federal Circuit also held that Rockwool International, a company that participated in the inter partes review, failed to allege any injury in fact to establish standing to appeal the Board’s findings of non-obviousness of other claims for the two patents (Knauf Insulation, Inc. v. Rockwool International A/S, October 15, 2019, Linn, R.).
Knauf Insulation, Inc., a company that provides fiberglass insulation, owns U.S. Patent Nos. 7,888,445 and 7,772,347. In inter partes reexamination, the Board held that certain claims ("the appealed claims") of both patents were obvious, and that certain other claims ("the cross-appealed claims") of the two patents are not unpatentable as obvious. The Board held that the appealed claims were obvious because an ordinary artisan would have combined the Wallace (U.S. Pat. No. 2,215,825), Worthington (U.S. Pat. No. 3,513,001), and Helbing (U.S. Pat. Pub. No. 2005/020224) references because of the similarity of their disclosed chemical reactions. Knauf appealed the Board’s conclusion of obviousness. Rockwool International cross-appealed the Board’s conclusions of non-obviousness of the cross-appealed claims.
Obviousness. The Federal Circuit first concluded that the Board’s determination of obviousness of the appealed claims was not based on substantial evidence. The Federal Circuit held that a finding of a motivation to combine based on similarity of the references in this case was unsupported. The lack of similarity between the references undermined the Board’s finding that an ordinary artisan would combine their teachings. Because the similarity of the references was the Board’s only reason for combining the references, the Federal Circuit vacated the Board’s determination of obviousness based solely on the similarity of the cited references.
Knauf also contested the Board’s finding that the combination of references inherently disclosed the quantity limitations found in several of the appealed claims. That a prior art reference satisfied these limitations in the reactants was not enough to allow the Board to find inherency in the products of the reaction, unless there was evidence that any reaction meeting these quantity of reactant limitations would result in the quantity of product limitation. This limitation was inherently disclosed by the combination of Worthington, Wallace, and Helbing, and the Federal Circuit reiterated that inherency may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances was not sufficient. Accordingly, the Federal Circuit reversed the Board’s finding of obviousness for the appealed claims of the two patents.
Standing. Additionally, the Federal Circuit held that Rockwool lacked standing to challenge the Board’s holding of no invalidity with respect to the cross-appealed claims. Rockwool contested the Board’s conclusions of non-obviousness, but Rockwool failed to allege that it is a current or prospective competitor of Knauf or assert anything apart from its past and future involvement in the reexamination at the USPTO. Furthermore, Rockwool did not allege any action by Knauf that would create standing for Rockwool beyond the continued presence of the patent after reexamination. The Federal Circuit recognized that it is well established that having an issued patent does not itself confer jurisdiction on anyone wishing to challenge its validity. The burden of participating in a hypothetical future inter partes reexamination did not itself constitute an injury-in-fact sufficient to confer standing here. Therefore, the appeals court dismissed Rockwool’s cross-appeal for lack of standing.
Attorneys: Joshua Paul Larsen (Barnes & Thornburg LLP) for Knauf Insulation, Inc. and Knauf Insulation SPRL. David Clay Holloway (Kilpatrick Townsend & Stockton LLP) for Rockwool International A/S.
Companies: Knauf Insulation, Inc.; Knauf Insulation SPRL; Rockwool International A/S
MainStory: TopStory Patent FedCirNews
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