Takeaway: In an obviousness analysis, (1) to rely on inherency to establish the existence of a missing claim limitation the limitation necessarily must be present or the natural result of the combination of elements explicitly disclosed by the prior art, and (2) a party must avoid analyzing the prior art through the prism of hindsight and not imbue one of ordinary skill in the art with knowledge of the claimed invention when there is insufficient evidence of record to convey or suggest that knowledge.
In its Final Written Decision, the Board determined that Petitioner had not shown by a preponderance of the evidence that claim 10 of the ’509 patent is unpatentable. The ’509 patent “is directed to aluminum-lithium based alloy products displaying a combination of high strength and high fracture toughness.” Inter partes review of claim 10 had been instituted on three grounds of unpatentability based on obviousness.
As an initial matter, the Board previously “determined that the terms in the challenged claims did not need to be construed expressly” and saw “no reason to modify that determination in light of the record developed at trial.”
The Board then gave an overview of the pertinent prior art references and the alleged grounds of unpatentability. Specifically, Petitioner asserted that claim 10 is unpatentable under 35 U.S.C. § 103 over (1) Balmuth1; (2) the Starke Reference; and (3) the combination of ’662 Balmuth and ’910 Pickens. Petitioner further relied on various declarations.
Petitioner “contends that a person having ordinary skill in the art would predict that an aluminum alloy with the claimed chemistry (such as the thin sheets described in Balmuth1 and the Starke Reference) would inherently have the claimed properties when formed as a plate with a thickness of at least 3 inches.” “Petitioner further contends that a person having ordinary skill in the art would have predicted ‘that a thick plate aluminum alloy as known in the ’662 Balmuth patent would have improved properties upon the addition of Ag/Mg as taught by the ’910 Pickens patent’ and that ‘[t]hese improved properties would be inherent and/or predictable.’” In response, Patent Owner argues that Petitioner has not established that the claimed properties necessarily would be present in the alloys described in Balmuth1, the Starke Reference, or by the combination of ’662 Balmuth and ’910 Pickens.
The Board found Patent Owner’s arguments to be persuasive. “In order to rely on inherency to establish the existence of a missing claim limitation in an obviousness analysis, ‘the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.’ PAR Pharma., Inc. v. TWI Pharmas., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014).” Here, the Board found that Petitioner’s experts’ testimony was not “supported by sufficient objective evidence or analysis demonstrating that the claimed properties would necessarily be present in the thick plate.” Petitioner’s experts “simply state that such a thick plate would inherently have the properties necessitated by the chemistry involved, without providing sufficient and credible explanations as to why that would be the case.” In contrast, Patent Owner “provides reasoning as to why a person having ordinary skill in the art would not have understood that a thick plate would have similar properties to a thin sheet having the same chemistry.”
The Board also found Petitioner’s “argument that ‘one of ordinary skill in the art would have predicted that increasing the thickness” of the alloy compositions described in the prior art “would have resulted in an alloy having the claimed properties through routine experimentation’ to be similarly unpersuasive.” The Board continued:
Given the complexities involved in developing a thick plate composition from a thin sheet, and the breadth of potential applications within the aerospace industry, we determine that Mr. Balmuth and Dr. Starke fail to provide sufficient reasoning as to why one of ordinary skill in the art would have attempted to manufacture thick plates having the claimed properties from the thin sheets described in the prior art. See, e.g., InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1348–49 (Fed. Cir. 2014) (holding expert testimony to be impermissible hindsight for failing to explain what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place the prior art together).
In an obviousness determination, we must avoid analyzing the prior art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, 721 F.2d 1540, 1553 (Fed. Cir. 1983). Here, Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when there is insufficient evidence of record to convey or suggest that knowledge. Rather, Petitioner’s arguments that a person having ordinary skill in the art would have only needed to use routine experimentation to manufacture a thick plate alloy having the claimed properties appears to be premised on Petitioner’s knowledge of the ’509 patent itself. See, e.g., Pet. 20 (“In this case, the ’509 patent confirmed that the chemistry in the Balmuth1 reference relating to sheet material could be used for plate products without adjusting the chemistry to arrive at the beneficial strength and toughness properties using merely routine testing procedures.”).
Lastly, the Board found Petitioner’s contentions that it would have been obvious to try to be insufficient. The Board credited Patent Owner’s expert testimony “that designing a thick plate alloy product having the claimed properties from a thin sheet alloy product would be costly and unpredictable.” See Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1359 (Fed. Cir. 2008). As such, Petitioner has not demonstrated by a preponderance of the evidence that claim 10 of the ‘509 patent would have been obvious. Thus, the Board did not address the proffered objective indicia of nonobviousness.
Kaiser Aluminum v. Constellium Rolled Products Ravenswood, LLC, IPR2014-01002
Paper 64: Final Written Decision
Dated: November 2, 2015
Patent: 7,229,509 B2
Before: Michael P. Tierney, Donna M. Praiss, and Jo-Anne M. Kokoski
Written by: Kokoski