{"id":1606,"date":"2017-06-15T16:16:56","date_gmt":"2017-06-15T20:16:56","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1606"},"modified":"2017-06-17T17:07:25","modified_gmt":"2017-06-17T21:07:25","slug":"general-statements-in-petition-and-institution-decision-did-not-give-patent-owner-fair-notice-of-the-grounds-of-invalidity-in-the-final-written-decision","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1606","title":{"rendered":"General Statements in Petition and Institution Decision Did Not Give Patent Owner Fair Notice of the Grounds of Invalidity in the Final Written Decision"},"content":{"rendered":"

In Emerachem Holdings, LLC v. Volkswagen Group of America, Inc.<\/a>, [2016-1984] (June 15, 2017), the Federal Circuit affirmed\u00a0the Board\u2019s decision that claims 1\u20132, 4\u201314, and 17\u201319 of U.S. Patent No. 5,599,758 were obvious, and vacated and remand as to claims 3, 16,\u00a0and 20.<\/p>\n

The ‘558 patent\u00a0claims methods for regenerating a\u00a0catalyst\/absorber that has absorbed and\u00a0oxidized nitrates and nitrites from the combustion gases of an engine. \u00a0The\u00a0regeneration can be carried out in situ<\/em>, without
\nremoving and replacing the catalyst with a fresh, unreacted\u00a0one.<\/p>\n

The patent owner attempted to remove a reference under 102(e), with the declaration of the inventor, but the Board found the evidence insufficient. \u00a0The Federal Circuit agreed, noting that corroboration is always required of an inventor’s testimony about invention, although the level of corroboration depends upon the circumstances.<\/p>\n

The patent owner was more successful in its argument under the APA that it was denied adequate Notice and Opportunity to Respond. Petitioner’s provided detailed claim charts, but only cited to a single reference\u00a0for\u00a0dependent claims 3, 16, and 20, and the Board’s institution decision only cited the same one reference as to these claims. \u00a0However the final written decision relied upon a different reference.<\/p>\n

The Federal Circuit stated that in a formal adjudication, like an IPR, the APA imposes\u00a0particular procedural requirements on the USPTO. \u00a0In particular, the\u00a0agency must timely inform\u00a0the patent owner of the matters of fact and law asserted, and give all interested parties the opportunity to submit and consider facts and arguments, and allow a party \u201cto
\nsubmit rebuttal evidence as may be required for a full\u00a0and true disclosure of the facts. 5 U.S.C. \u00a7\u00a7 554(b)\u2013(c),\u00a0556(d).<\/p>\n

The Federal Circuit found that the Board denied patent owner its procedural rights guaranteed by the APA\u00a0by relying on a new reference for its disclosure of limitations in\u00a0dependent claims 3, 16, and 20. \u00a0The Federal Circuit rejected petitioner’s arguments that the patent owner had adequate notice of the reference from general comments about obviousness in the Petition. \u00a0The Federal Circuit also rejected petitioner’s arguments that the patent owner had adequate notice from general statements in the Institution Decision. \u00a0The Federal Circuit said that given the specificity with which the petition\u2019s claim\u00a0chart and the Institution Decision\u2019s list of claims expressly\u00a0identified particular references\u2019 disclosures for some\u00a0claims and not for others, it cannot be the case that the\u00a0general statements relied upon provided\u00a0sufficient notice that Stiles could be applied to all claims.<\/p>\n

The Federal Circuit distinguished\u00a0Cuozzo<\/em>, because the institution decision\u00a0gave the patentee notice of the prior art combination that
\nthe final decision relied upon, even though the petition did not. In the current case, neither the\u00a0petition nor the Institution Decision put the patentee on\u00a0notice of the reference that would be used to reject claims 3, 16,\u00a0and 20. \u00a0The Federal Circuit also distinguished\u00a0Genzyme<\/em> because \u00a0the patent owner had the opportunity to address the relied upon by the Board.<\/p>\n

The Federal Circuit explained that it was not holding\u00a0that the Board is constricted in its final written\u00a0decision to citing only the portions of a reference cited in\u00a0its Institution Decision — \u201cword-for-word\u00a0parity between the institution and final written decisions\u201d is not required. \u00a0The questions was not whether\u00a0the Board cited a\u00a0different passage of a reference than what it specifically cited in\u00a0the Institution Decision, rather the question was whether\u00a0the Board provided adequate notice and opportunity to\u00a0respond to the reference being used to reject claims 3, 16, and 20,\u00a0given the specificity with which the Board itemized the
\nchallenged claims with specific grounds for rejection in\u00a0the Institution Decision. On this question, the Federal Circuit said that the Board did not.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Emerachem Holdings, LLC v. Volkswagen Group of America, Inc., [2016-1984] (June 15, 2017), the Federal Circuit affirmed\u00a0the Board\u2019s decision that claims 1\u20132, 4\u201314, and 17\u201319 of U.S. Patent No. 5,599,758 were obvious, and vacated and remand as to claims … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[26,12],"tags":[],"class_list":["post-1606","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review","category-obviousness"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1606","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1606"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1606\/revisions"}],"predecessor-version":[{"id":1607,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1606\/revisions\/1607"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1606"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1606"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1606"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}