Yoshiya Nakamura | December 9, 2016
REG Synthetic Fuels, LLC. v. Neste Oil Oyj
November 8, 2016
Before Prost, Taranto and Chen. Opinion by Chen.
REG Synthetic Fuels, LLC (REG) owns U.S. Patent No. 8,231,804 (’804 patent). Neste Oil Oyj (Neste) requested inter partes review against claims 1–5 and 8 of the ’804 patent, which were directed to a composition comprising paraffins (hydrocarbons) useful as heat-insulation material in a house. PTAB found that claim 1 was anticipated by cited references including Craig. CAFC affirmed. The key feature of claim 1 was the limitation: “comprising at least 75 wt% (weight percent) even-carbon-number paraffins.” Craig disclosed the production of hydrocarbon compositions and the hydrocarbon amounts therein defined by a different unit, “peak area percentages” measured by a mass spectral analysis. Neste relied upon their expert’s calculation using three different conversion factors to calculate corresponding wt.% from the peak area %. CAFC held that Neste’s expert’s calculation established by a preponderance of evidence that the claimed composition read on the prior art compositions.
Claim 1 representative of the ’804 patent:
- A phase change material composition comprising at least 75 wt% even carbon number paraffins, wherein the paraffins are produced by hydrogenation/ hydrogenolysis of naturally occurring fatty acids and esters.
A key feature in claim 1 was the limitation with “at least 75 wt% even carbon number paraffins,” as CAFC agreed with the PTO’s interpretation that the preamble part (the phase change material) and the wherein-clause (the product-by-process limitation) are not limiting. The main issue in this appeal was whether Craig taught the limitation of “at least 75 wt% even carbon number paraffins.”
Craig disclosed hydrocarbon products obtained from naturally occurring feedstocks, and the results of quantitative analysis of the products. The critical disclosure was Table 9 (reproduced below in part). The table showed “peak area percentages” of each even-carbon-number paraffin such as C16, C18, or C20 in the hydrocarbon products. However, Craig did not disclose corresponding weight percentages. Nor did it disclose how to calculate weight percentages from weight percentages.
As evidence, Neste’s expert (Dr. Klein) submitted data showing conversion of peak area percentages to weight percentages. As shown in Table 2 (reproduced from the opinion), the peak area percentages of each hydrocarbon were calculated using three relative response factors, i.e., “Hsu,” “Gorocs,” and “Chaurasia.”
REG argued that the conversion of peak area percentages into weight percentages is “not straightforward” and Craig did “not provide enough information to accurately convert the GC-MS peak area percentages to weight percentages using relative response factors.” However, REG’s expert (Dr. Lamb) agreed that the peak area percentages could be converted to weight percentages by using relative response factors, and other references cited in Dr. Lamb’s opinion in fact disclosed two of the factors (Gorocs and Chaurasia).
REG’s arguments relied mostly upon the complex nature of the biological feedstocks and their own expert’s opinion that the resulting product is a very complex mixture which affects the phase change characteristic. REG argued that Craig disclosed a distillation process to separate the obtained mixture into fractions and such additional process would result in “structural and functional differences in the products.” However, REG did not submit any evidence or data showing the asserted differences. PTAB rejected the REG’s arguments because there was no credible evidence or disclosure in the specification supporting their arguments. Particularly, as noted by PTAB, claim 1 did not exclude distilled products.
Turning to the issue as to whether the peak area percentages disclosed in Craig read on the claimed weight percentages, CAFC noted, as PTAB held, that claim 1 was anticipated since “a person of ordinary skill in the art could readily convert the disclosed peak area percentages into their corresponding weight percentages, and the sum of the converted peak area percentages of Craig met the claim requirement that the overall weight percentage of even-carbon-number paraffins be at least 75 wt%.” It was specifically noted that each of the calculated weight percentages for “Canola Premium” met the claimed range and “82.31 wt%” was “more than 7% higher than” the claimed l limit, 75 wt%.
CAFC agreed with the PTAB’s view that “it unlikely that any correction required by the experimental conditions would result in a weight percentage of less than the 75 wt%” because Table 2 showed that the different weight percentages obtained by using the different relative response factors “were very small.”
CAFC added that “this is not an inherency issue, however, because the challenged limitation is not missing from Craig” as Neste’s expert “simply converted one unit of measurement (area percent) into another unit of measurement (weight percent) by using relative response factors from the prior art.”
According to this decision, conversion of units or parameters one another is not an inherency issue, but all about evidence. This is one example showing that IPRs help the Patent Office find better interpretation of prior art, which may not easily be examined without expert’s opinions from each party. In addition, the preponderance of evidence standard is available to fill a gap between cited prior art and patented claims in IPRs. Good reasons to use IPRs.