In KENNAMETAL, INC. v. INGERSOLL CUTTING TOOL CO., Appeal No. 2014-1350, the Federal Circuit affirmed the PTAB’s judgments of anticipation and obviousness.
Kennametal sued Ingersoll for infringing a patent on physical vapor deposition (PVD) coated cutting tools containing a ruthenium binder. Ingersoll successfully petitioned the PTO for inter partes reexamination of the patent. The PTAB found some of the claims anticipated by a prior art patent to Grab. The PTAB also found all of the claims to be obvious over Grab in view of additional prior art. Kennametal appealed, and the Federal Circuit affirmed.
Regarding anticipation, Kennametal argued that Grab’s disclosure allows an infinite number of options such that the claimed combination would not have been immediately apparent to a skilled artisan. The Federal Circuit determined Grab disclosed all the limitations of Kennametal’s claim, so the question was whether the number of categories and components in Grab is so large that the combination of ruthenium and PVD coatings would not be immediately apparent to one of ordinary skill in the art to establish anticipation. The Federal Circuit concluded a skilled artisan would immediately envisage the claimed combination in light of claim 5 of Grab, which narrowed the number of possible metals to five, one of which was ruthenium. The Federal Circuit also noted that Grab need not disclose “actual performance” of combining the ruthenium binder and PVD coatings to anticipate, as long as the suggestion in Grab enables one of skill in the art to make the combination.
On the issue of obviousness, Kennametal argued the combination of PVD-coating and ruthenium binders achieves a “surprising and unexpected” result. The Federal Circuit found this argument unavailing. The Federal Circuit reasoned that, because Grab discloses all limitations of Kennametal’s claim, it would have been obvious to a skilled artisan that the combination can be achieved with a reasonable expectation of success. “While references that anticipate an invention can, theoretically, still not make it obvious, that is the rare case.”