IP Law Daily The PTAB erred in finding that a patent directed to an insulating polymer was obvious
News
Thursday, July 22, 2021

The PTAB erred in finding that a patent directed to an insulating polymer was obvious

By Kevin M. Finson, J.D.

A prior art patent actually taught away from the claimed invention and the Board also erred in evaluating commercial success.

The Patent Trial and Appeal Board erred by invalidating on obviousness grounds a patent directed to a polymer for insulating communication cables when the cited prior art patent taught away from the challenged invention, the U.S. Court of Appeals for the Federal Circuit has held. The earlier patent’s inventive concept was contrary to the application it was put to in the new patent, so there was no reason to think that a person skilled in the art would modify the earlier patent in such a way as to produce the newly claimed invention. The Board also erred by holding that a showing of commercial success could not be made without market share data and by applying the blocking patent doctrine to the patent under review. Circuit Judge Dyk filed a dissenting opinion to express his view that the prior art patent did not teach away from the claimed invention (Chemours Co. FC, LLC v. Daikin Industries, Ltd., July 22, 2021, Reyna, J.).

Chemours Company, FC, LLC was the owner of U.S. Patents Nos. 7,122,609 (the ’609 patent) and 8,076,431 (the ’431 patent), both of which were directed to a polymer for insulating communication cables which had a particularly high melt flow range, allowing it to work at high speeds and high temperatures. Daikin Industries, Ltd. petitioned for inter partes review of both patents. The PTAB determined that all challenged claims of both patents were invalid as obvious in view of U.S. Patent No. 6,541,588 ("Kaulbach"). Chemours appealed. The Federal Circuit discussed claim 1 of the ’609 patent as representative of the issues on appeal.

Obviousness. Chemours argued that the Board’s factual finding that a person of ordinary skill in the art would modify Kaulbach to achieve the claimed invention was not supported by substantial evidence. Kaulbach taught a polymer for wire and cable coatings which could be processed at high speeds and temperatures through the use of a polymer with a narrow molecular weight distribution. The court held that Kaulbach actually taught away from the invention in the ’609 patent by requiring a narrow molecular weight distribution while the ’609 patent achieved its high melt flow rate by using a broad molecular weight distribution. Because the Board failed to articulate an explanation of how it reached its conclusion on the evidence in the record, the court reversed the finding of obviousness.

Objective indicia of nonobviousness. The Board erred by holding that a showing of commercial success could not be made without market share data. Chemours had presented gross sales data, but not market share data. The court held that the Board would be entitled to find that the gross sales data was insufficient to show commercial success, but wrong to hold categorically that commercial success cannot be shown without market share data. The Board also erred by applying the blocking patent doctrine to the ’609 patent. The Board had described the patent as blocking others from entering the market and therefore weakening the inference of non-obviousness from commercial success, but the Federal Circuit explained that a blocking patent is one which is in place prior to a claimed invention and prevents the practice of that later invention. Here, the patent was only blocking practice of the same invention it claimed, so it was not a "blocking patent."

Dissent. Circuit Judge Timothy Dyk dissented from the decision of the court on the question of whether Kaulbach taught away from the invention claimed by the ’609 patent. He would have found that Kaulbach expressly acknowledged the feasibility of a broad molecular weight distribution, and its preference for the narrow distribution was not enough to actually teach away from a broad distribution. Judge Dyk would have remanded the case to the Board for redetermination of the conclusion of obviousness in light of the secondary factors.

The case is Nos. 2020-1289 and 2020-1290.

Attorneys: Nitika Gupta Fiorella (Fish & Richardson, PC) for Chemours Co. FC, LLC. Gregory A. Castanias (Jones Day) for Daikin Industries, Ltd. and Daikin America, Inc.

Companies: Chemours Co. FC, LLC; Daikin Industries, Ltd.; Daikin America, Inc.

MainStory: TopStory Patent FedCirNews GCNNews

Back to Top

Interested in submitting an article?

Submit your information to us today!

Learn More

IP Law Daily: Breaking legal news at your fingertips

Sign up today for your free trial to this daily reporting service created by attorneys, for attorneys. Stay up to date on intellectual property legal matters with same-day coverage of breaking news, court decisions, legislation, and regulatory activity with easy access through email or mobile app.