Case Summary : CAFC Alert

Obviousness Found Even When the Burden to Prove Inherency Remains on Examiner

Yoshiya Nakamura | October 18, 2017


September 8, 2017

Before Lourie, Moore and Hughes.  Opinion by Lourie.


Southwire Co. (the patent owner) owns No. 7,557,301 (the ’301 patent). An inter parte reexamination is initiated by a third party requestor, Cerro wire LLC (the requester).  All the claims of the ’301 patent are found obvious over prior art references under 35 U.S.C. § 103.  It is decided in the reexamination that one of the combinations of cited references inherently discloses a claimed parameter at issue.  CAFC affirms PTAB’s conclusion that the claims are unpatentable as obvious, while rejecting part of the reasoning that the claimed parameter is inherently disclosed in the cited references.

Japanese Summary




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A “Teaching Away” Argument Must be Commensurate in Scope with the Claims

Andrew Melick | October 17, 2017

Idemitsu Kosan Co., Ltd. v. SFC Co. Ltd.

September 15, 2017

Before Prost, O’Malley and Chen. Opinion by O’Malley.


This case is an appeal from an inter partes review of Idemitsu Kosan Co., Ltd’s (“Idemitsu”) U.S. Patent No. 8,334,648 (“the ‘648 patent”) brought by SFC Co. Ltd. (“SFC”). Idemitsu argued on appeal that the Patent Trial and Appeal Board (“PTAB”) did not explain why a skilled artisan would have been led to use the claimed combination of compounds from the teachings of the prior art reference Arakane given that Arakane limits its combination of compounds to combinations satisfying a special relationship. The CAFC agreed with the PTAB in holding that the Arakane reference teaches compounds (including the claimed compounds among others) that when combined, produce a light emitting layer, regardless of the special relationship. The CAFC further held that “evidence concerning whether the prior art teaches away from a given invention must relate to and be commensurate in scope with the ultimate claims at issue.” In this case, the CAFC said that it is not particularly important that Arakane teaches that combinations of compounds not satisfying the special relationship result in poor performance because the claims at issue do not include limitations with respect to performance.


Idemitsu’s ‘648 patent is to an “Organic Electroluminescence Device and Organic Light Emitting Medium.” Claim 1 is provided below:

 1.  An electroluminescence device comprising a pair of electrodes and a layer of an organic light emitting medium disposed between the pair of electrodes, wherein the layer of an organic light emitting medium is present as a light emitting layer and comprises:

(A) an arylamine compound represented by formula V:


wherein X3 is a substituted or unsubstituted pyrene residue,

Ar5 and Ar6 each independently represent a substituted or unsubstituted monovalent aromatic group having 6 to 40 carbon atoms, and

p represents an integer of 1 to 4; and

(B) at least one compound selected from the group consisting of anthracene derivatives and spirofluorene derivatives, wherein

said anthracene derivatives are represented by formula I:

wherein A1 and A2 may be the same or different and each independently represent a substituted or unsubstituted monophenylanthryl group or a substituted or unsubstituted diphenylanthryl group, and L represents a single bond or a divalent bonding group, and by formula II:


wherein An represents a substituted or unsubstituted divalent anthracene residue, A3 and A4 may be the same or different and each independently represent a substituted or unsubstituted aryl group having 6 to 40 carbon atoms, at least one of A3 and A4 represents a substituted or unsubstituted monovalent condensed aromatic ring group or a substituted or unsubstituted aryl group having 10 or more carbon atoms; and

said spirofluorene derivatives are represented by formula III:




wherein Ar1 represents a substituted or unsubstituted spirofluorene residue, A5 to A8 each independently represent a substituted or unsubstituted aryl group having 6 to 40 carbon atoms;

provided that the organic light emitting medium does not include a styryl aryl compound.

SFC petitioned for an inter partes review (IPR) of the ‘648 patent. The Patent Trial and Appeal Board (“PTAB”) instituted review of the claims on the grounds of obviousness based on a single reference to Arakane (WO 02/052904). The Arakane reference is assigned to Idemitsu and teaches an organic electroluminescence device. Arakane discloses:

The present invention provides an organic electroluminescence device including a pair of electrodes and an organic light emitting medium layer interposed between the electrodes wherein the organic light emitting medium layer has a mixture layer containing (A) at least one hole transporting [“HT”] compound and (B) at least one electron transporting [“ET”] compound and the energy gap Eg1 of the [HT] compound and the energy gap Eg2 of the [ET] compound satisfy the relation Eg1<Eg2.

Among the HT compounds, Arakane discloses a compound corresponding to formula V of claim 1. And among ET compounds, Arakane discloses compounds corresponding to compounds of formulas I and II of claim 1, respectively.

The PTAB held the claims of the ‘648 patent to be obvious over Arakane. Specifically, the PTAB held that Arakane’s HT compound corresponds with the formula V compound of claim 1; that Arakane’s ET compounds correspond with compounds of formulas (I) and (II) of claim 1; and that Arakane teaches that a light emitting layer can be formed by combining an HT and ET compound. The PTAB stated that the claimed invention “is the combination of recited components in a light emitting layer” and that “Arakane’s disclosure would have informed an ordinary artisan that combining components (A) and (B) would produce a light emitting layer.” The PTAB further stated that the obviousness of the combination “does not depend on whether the resulting light emitting layer would satisfy Arakane’s energy gap relationship.”

Idemitsu argued on appeal that the PTAB made no finding with respect to the energy gap relationship taught in Arakane, i.e., that the energy gap of the HT compound must be less than the energy gap of the ET compound. The CAFC stated that the PTAB correctly found that Arakane suggests combinations of HT and ET compounds that produce a light emitting layer, regardless of their energy gap relation.

Idemitsu also argued that this was raised too late because it was not in SFC’s petition or in the PTAB’s institution decision. However, the CAFC stated that Idemitsu is the party that implicitly raised the argument by arguing that SFC failed to explain why a skilled artisan would have been led to use the combination of HT and ET compounds given that Arakane limits the combination of compounds to combinations satisfying the energy gap relationship. In its counterargument, SFC argued that Arakane does not teach away from the claimed combination despite the absence of demonstrating that the combination would possess the preferred energy gap relationship. The CAFC stated that SFC’s statements were “the by-product of one party necessarily getting the last word,” and thus the argument was not raised too late.

The CAFC also noted that Idemitsu provided no supporting evidence for its position that Arakane teaches away from non-energy gap HT/ET combinations, and that SFC was not required to rebut attorney argument with expert testimony.

The CAFC further stated that Idemitsu’s argument regarding “teaching away” is of questionable relevance. The CAFC explained that “evidence concerning whether the prior art teaches away from a given invention must relate to and be commensurate in scope with the ultimate claims at issue.” The CAFC also included the following passage from In re Zhang, 654 F. App’x 490 (Fed. Cir. 2016): “While a prior art reference may indicate that a particular combination is undesirable for its own purposes, the reference can nevertheless teach that combination if it remains suitable for the claimed invention.” The claims at issue do not include limitations with respect to performance characteristics. And Arakane teaches that the only drawback of not satisfying the energy gap relationship is poor performance. Thus, the CAFC concluded that it is of substantially reduced importance that the non-energy-gap HT/ET combinations result in poor performance.

Take Away

As a patent applicant or patent owner, when arguing that a reference teaches away from a claimed invention to demonstrate non-obviousness, you should try to explain why the reference teaches unsuitability of the claimed invention. Relying solely on a teaching of undesirability in the prior art may not be enough to demonstrate a teaching away from the claimed invention.

This case also emphasizes the importance of supporting arguments with expert declarations in inter partes reviews. Idemitsu did not provide evidence supporting a teaching away argument. Thus, SFC and the PTAB could rely solely on the text of the reference.

Full Opinion

U.S. Patent 8,334,648
















Tell Me Why: A conclusion of obviousness based on routine optimization must be supported by articulated reasoning

Cindy Chen and John M. Wang | October 16, 2017

In re Stepan Company

August 25, 2017

Before Lourie, Moore, and O’Malley. Opinion by Moore. Dissent by Lourie.


The Federal Circuit vacated a Patent Trial and Appeal Board panel’s finding of obviousness based on routine optimization, for failing to articulate some rational underpinning as to “why” routine optimization would have made the claimed invention obvious.

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CAFC finds broadly claimed computer memory system eligible under first step of Alice.

Thomas Brown | September 21, 2017

Visual Memory LLC v Nvidia Corporation

August 15, 2017

Before O’Malley, Hughes and Stoll. Precedential Opinion by Stoll, joined by O’Malley; Dissent by Hughes.


Visual Memory sued Nvidia for infringement of USP 5,953,740 (the ‘740 patent).  The district court granted Nvidia’s motion to dismiss for failure to state a claim (rule 12(b)(6)) based on patent ineligible subject matter. The CAFC reversed and remanded finding that the computer memory systems claims of the ‘740 satisfied the first step of Alice.

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CAFC agrees with the Board that restriction in the identification of goods is meaningless

Kumiko Ide | September 19, 2017


August 8, 2017

Before: Prost, Lourie, and Schall. Opinion by Lourie.


The Board held, and the CAFC agreed that the restriction in the identification of goods, which stated “all associated with William Adams, professionally known as “” did not impact on the meaning or the overall commercial impression of the mark.  Further, the restriction provided no limitation on the nature of the goods, trade channels, or potential purchasers.  Where the marks are identical, and substantial evidence supports the goods are identical or closely related, the trade channels are identical, and classes of purchasers overlap, the CAFC upheld the Board’s decision affirming the examining attorney’s refusal to register the marks of the Appellant.

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Drug patent survives invalidity challenge based on lack of teaching or suggestion in the art, teaching away, unexpected results and long-felt need

Ryan Chirnomas | August 15, 2017

Millennium Pharmaceuticals Inc. v. Sandoz Inc., et al.

July 17, 2017

Before:  Newman, Mayer and O’Malley.  Opinion: Newman


The inventors discovered that freeze-drying mannitol with an existing, but unstable, drug resulted in an ester which solved stability and solubility problems of the drug alone.   The patent survived an invalidity challenge since there was no teaching or suggestion of freeze-drying this drug in the presence of mannitol.  Non-obviousness was further bolstered by a teaching away, unexpected results and evidence of a long-felt need.

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A diagnostic method that raises, not patent-eligibility, but written description issues.

Nicolas Seckel | July 24, 2017

Stanford Univ. v. The Chinese Univ. of Hong Kong (Precedential)

June 27, 2017

Before O’Malley, Reyna, and Chen.  Opinion by O’Malley.


In interferences involving a patent by Stanford and applications by the Chinese University of Hong Kong, the USPTO found the Stanford patent’s claims unpatentable as lacking written description. The Federal Circuit vacated and remanded. The USPTO was faulted for relying on post-filing date information as evidence of what the person of the art knew at the filing date.

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When Motion to amend is filed in IPR, Opponent can cite additional references.

Sadao Kinashi | July 18, 2017

Shinn Fu vs. Tire Hanger (Fed. Cir. 2017)

July 3, 2017

Before Prost, Reyna and Taranto. Opinion by Prost


This is an appeal from an inter partes review (IPR) of USP 6,681,897 (“’897 patent”).  The patentee filed a motion to amend.  Petitioner opposed to the motion and presented arguments of unpatentability adding new references.  The Board ignored Petitioner’s argument and granted the patent owner’s motion to amend and held the substitute claims patentable.

CAFC vacated and remanded holding that the Board did not properly consider the petitioner’s arguments in opposition to the Patentee’s motion to amend.



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Stephen G. Adrian | July 7, 2017

Storer v. Clark

June 21, 2017

Before Prost, Newman and Dyk.  Opinion by Newman.


Although the first-to-file provisions of the Leahy-Smith America Invents Act (AIA) went into effect March 16, 2013, interference proceedings are still with us, as highlighted by this decision from the Court of Appeals for the Federal Circuit (CAFC). An interference proceeding was declared December 3, 2013[1], between Storer’s U.S. Patent No. 7,608,600 (application filed June 27, 2003) and Clark’s pending application No. 11/854,218. The interfering claims are directed to treatment of hepatitis C using modified nucleoside compounds. Storer was initially designated senior party based upon its earlier provisional application No. 60/392,350, filed June 28, 2002. Clark claimed priority based on a provisional application filed May 30, 2003. Clark moved to deny Storer the priority date of the provisional application arguing that the provisional application did not enable a five-membered ring having a fluorine substituent in the 2’ (down) position:








The Patent Trial and Appeal Board (PTAB) held that Storer’s provisional application was not enabling for the count in the interference, and entered judgment granting priority to Clark.

The parties agreed that the only question at issue is whether Storer’s provisional application enables compounds having F in the 2’ (down) position (35 U.S.C. §112, first paragraph). The Board held that the provisional application, taken together with the prior art, did not enable the specific compounds having the identified structure.

“The enablement requirement is met where one skilled in the art, having read the specification, could practice the invention without ‘undue experimentation.’” Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1288 (Fed. Cir. 2012) (quoting ALZA Corp. v. Andrx Pharm., LLC, 603 F.3d 935, 940 (Fed. Cir. 2010)). Thus, an analysis was made as to whether undue experimentation was required. As summarized in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988), relevant factors to consider with respect to undue experimentation may “include (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.”

Storer did not dispute the Board’s conclusions of the Wands’ factors 3, 4, 5, 6 and 8, but argued that these factors are not dispositive of enablement. The Board found with respect to 3-6 and 8:

(3) The provisional application contains no specific examples of synthesis of compounds having the fluoro substituent in the 2’ (down) position.

(4) At the time of the provisional application, although organic fluoridation mechanisms were generally known, a 2’-fluoro-2’-methyl nucleoside with the fluoro substituent in the down position had not yet been synthesized.

(5) although organic fluoridation techniques were well-known in the art at the time the S1 application (Storer’s provisional application) was filed, fluoridation of tertiary alcohols to produce a 2ˊ “down” tertiary fluorine was not taught or suggested by the prior art.

(6) The level of skill in the art was highly sophisticated: a person possessing the ordinary level of skill in this art, as of the time of invention, would hold a doctoral degree in the field of organic, synthetic, or medicinal chemistry with at least a year’s experience in the field of nucleoside synthesis or relevant drug discovery.

(8) Neither party argued the breadth of the claims.

Thus, a closer examination of the Wands’ factors 1, 2 and 7 is made ((1) the quantity of experimentation necessary; (2) the amount of direction or guidance presented; and (7) the predictability or unpredictability of the art).

Although not stated in the decision, the provisional application was over 5000 pages, listing many specific compounds. Storer argued that the provisional application “performed the substantial step of disclosing the precise chemical structure of the target compound.” However, the pages of the specification highlighted by Storer only provide generic formulas which encompass the “target compounds”. Storer further argued that the prior art (Matsuda Compound 17) is a “precursor compound that is only one step away from the target compound.”










This compound contains a methyl group instead of fluoro, which Storer agued would be readily convertible into the target compound by known methods to produce the desired stereochemistry. The Matsuda Compound 17, however, is not disclosed in the provisional application.

Storer attempted to rely upon three reaction schemes disclosed in the provisional application as a path that would lead to the claimed compounds. These reaction schemes, however, showed products with opposite stereochemistry. In addition, it was found that the art was highly unpredictable, which seemed to weigh heavily against Storer’s argument. Evidence had been presented supporting the unpredictability of synthesizing the target compound. Although it was recognized that undue experimentation depends on the subject matter and the skill in the art, it was found that a high amount of experimentation and skill was required.

On review, the CAFC concludes “that substantial evidence supports the Board’s findings that the synthetic schemes in Storer’s provisional application do not teach or suggest conversion of any precursor into the 2´F (down) structure, and that the Matsuda synthesis of a corresponding 2´- methyl (down), 2´-hydroxyl (up) structure does not enable a person of ordinary skill to produce the target compounds without undue experimentation.”

As concluded by the CAFC:

We conclude that substantial evidence supports the Board’s finding that “a high amount of experimentation is necessary to synthesize” the target compound. The record before the Board showed sufficient variability and unpredictability to support the Board’s conclusion that Storer’s provisional application did not enable the interference subject matter. The Board’s decision is affirmed.


Although an extensive disclosure in a provisional application may be sufficient to support a relatively broad claim scope, such disclosure may not be considered enabling for specific compounds (species) within the broad claim scope, particularly in an unpredictable art. As stated by Board, for new chemical compounds the specification must provide sufficient guidance that undue experimentation is not required to obtain the new compounds.

[1]Storer initially filed in the District of Delaware seeking review under 35 U.S.C. §146 (Idenix Pharmaceuticals, LLC v. Gilead Pharmasset LLC. This case was dismissed based on Biogen MA, Inc. v. Japanese Foundation for Cancer Research, 785 F.3d 648 (Fed. Cir. 2016), ruling that the AIA eliminated the option of district court review under §146 for interferences declared after September 15, 2012.


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Statements made in IPR proceeding can be relied on to support a finding of prosecution disclaimer during claim construction

Shan Gong | July 5, 2017

Aylus Networks, Inc., v. Apple Inc.

May 11, 2017

Before Moore, Linn, and Stoll.  Opinion by Stoll.


Patent owner Aylus Networks, Inc. sued Apple Inc. in district court for infringement of the U.S. Patent No. RE 44,412 (“the ‘412 patent”). Apple filed two separate IPRs challenging validity of all the claims. PTAB denied to institute claim 2 based on Aylus’s explanation of a limitation to claim 2. During claim construction in district court, this same explanation is relied on to support a finding of prosecution disclaimer. CAFC affirmed the district court’s finding of prosecution history disclaimer. CAFC also stated that prosecution disclaimer applies whether a statement is made before or after instituting an IPR.

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