In remanding a case back to the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit explained that it was procedurally improper for the PTAB to find claims obvious during inter partes review (IPR) where the patent owner was not provided notice of a prior art reference that was used as a basis for invalidity. EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc., Case No. 16-1984 (Fed. Cir., June 15, 2017) (Moore, J).
In 2014, Volkswagen petitioned for IPR of certain claims of EmeraChem’s patent related to methods for regenerating a catalyst after extended exposure to pollutants in the combustion gases of engines. The patent named a first inventor (Campbell) and incorporated by reference a prior patent (Campbell I) listing Campbell along with additional co-inventors. Volkswagen argued that the challenged claims were invalid over the combination of Campbell I and one or more of three secondary references (one of which was Stiles). EmeraChem submitted a declaration from Campbell that Campbell I could not count as prior art under § 102(e) because he invented the material from Campbell I that Volkswagen relied on to invalidate the challenged claims.
Volkswagen also included a claim chart specifically identifying the grounds for each challenged claim, but failed to identify Stiles for three of the challenged claims. On institution, the PTAB listed the challenged claims for which the petition was granted and the specific grounds for each, but did not list Stiles in connection with the three claims.
In its final decision, the PTAB invalidated all challenged claims, relying on Campbell I for all claims and on Stiles for the three claims not cited by the PTAB in its institution decision. It rejected Campbell’s declaration as uncorroborated and found that Campbell I qualified as § 102(e) prior art. EmeraChem appealed, challenging the PTAB’s reliance on Campbell I and arguing insufficient notice with respect to Stiles for the three challenged claims.
Addressing the prior art status of Campbell I, the Federal Circuit acknowledged that a reference cannot qualify as § 102(e) prior art if the portions of the reference relied upon and the subject matter of the claims represent the work of the same inventive entity, but agreed with the PTAB that Campbell’s declaration by itself was insufficient to demonstrate that the disclosure was not by another. The Court noted that while corroboration is not “required in every case,” in this case relying on the declaration alone “entails relying on an assertion by an inventor with an interest at stake” regarding portions of a patent issued years earlier that the disclosure relied on was not “by another.” Absent any corroboration of Campbell’s declaration, the Court affirmed that Campbell I qualified as prior art.
The Federal Circuit remanded the obviousness determinations of the three claims back to the PTAB for further clarification, however, as EmeraChem was not given sufficient notice that Stiles would be used as prior art to invalidate those claims. The Court found that general summaries included in the petition and institution decision stating that the challenged claims were invalid in view of Campbell I and Stiles were insufficient because the petition and institution decision also included specific grounds for each claim. These specific grounds failed to identify Stiles in connection with three challenged claims, so EmeraChem was not properly on notice. The Court also noted that “neither party ever mentioned Stiles in the context of discussing [the three] claims [during the later briefing], [which] helps make the point that neither party was on notice that Stiles was at issue as to those challenged claims.”
Patent Owner Must Receive Notice of References Against Each Challenged Claim
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