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18 September 2018Americas

Federal Circuit overturns PTAB decision, hands victory to DuPont

The US Court of Appeals for the Federal Circuit yesterday overturned a Patent Trial and Appeal Board (PTAB) decision that had said chemical company DuPont hadn’t proved that a patent was invalid.

Yesterday, September 17, the Federal Circuit handed down a precedential ruling, concluding that the PTAB had applied the wrong legal standards for obviousness.

Netherlands-based Synvina owns US patent number 8,865,921, which covers a method of “oxidising 5-hydroxymethylfurfural (HMF) or an HMF derivative” under specified reaction conditions to form “2,5-furan dicarboxylic acid”.

HMF is an organic compound formed by the dehydration of certain sugars.

DuPont petitioned the PTAB for an inter partes review (IPR) of the patent, claiming that the choice of temperature, pressure, catalyst, and solvent would have been obvious to a person of ordinary skill at the time of the invention.

However, the board held that the instituted claims were not unpatentable as obvious and rejected DuPont’s argument that a burden-shifting framework applied (so that the burden to show non-obviousness would be on Synvina).

DuPont appealed against the decision, challenging the board’s conclusion of non-obviousness.

In response, Synvina claimed that DuPont lacks standing to appeal, because no action for infringement of the ‘921 patent has been brought against DuPont.

The Federal Circuit sided with DuPont, concluding that because DuPont “has concrete plans” for present and future activity that creates a “substantial risk of future infringement or likely causes the patentee to assert a claim of infringement”, it had standing.

DuPont argued that the PTAB had misinterpreted the Federal Circuit’s precedent and “erroneously refused to apply a burden-shifting framework in the context of overlapping prior art ranges from cases such as In re Peterson and Ormco Corp v Align Technology”.

The court agreed with DuPont, finding that the board was wrong to conclude that the type of burden-shifting framework consistently applied in the Federal Circuit’s overlapping range cases—where ranges within prior art overlap with that of the claimed invention—was “implicitly foreclosed by subsequent cases not addressing this framework”.

It added that the usual obviousness burden shifting associated with ranges applies to IPR proceedings.

After outlining the standard, the Federal Circuit applied it to the evidence and found that the ranges disclosed in the prior art overlapped with those of claim 1. The other claims fared no differently from claim 1.

“At bottom, this case involves a strong case of obviousness based on very close prior art and weak evidence of non-obviousness,” added the Federal Circuit.

The court reversed the PTAB’s decision.

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