EMERACHEM HOLDINGS, LLC, v. VOLKSWAGEN GROUP OF AMERICA, INC.: No. 2016-1984; June 15, 2017. Before Moore, Clevenger, and Chen.

Takeaway:

  • An uncorroborated declaration by an interested inventor may not be sufficient to show that a reference is not “by another” for the purposes of removing the reference as prior art under § 102(e).
  • The Board failed to give sufficient notice as required by the Administrative Procedure Act when it relied on a new rationale to find unpatentability in its Final Written Decision.

Procedural Posture:

EmeraChem appealed an IPR decision finding claims 1-14 and 16-20 of U.S. Patent No. 5,599,758 unpatentable as obvious. The CAFC affirmed the Board’s decision with respect to claims 1, 2, 4-14, and 17-19 and vacated and remanded with respect to claims 3, 16, and 20.

Synopsis:

  • 102(e) Common Inventorship: The CAFC affirmed the Boards determination that U.S. Patent No. 5,451,558 (the “Campbell ’558 patent”) qualified as prior art under § 102(e). The Campbell ’558 patent lists four inventors, two of which are the inventors of the ’758 patent. EmeraChem submitted a declaration by the first named inventor, Larry Campbell, stating that the two common inventors solely conceived and invented the subject matter of the Campbell ’558 patent cited against the ’758 patent, and argued that the cited portions of the Campbell ’558 patent were not “by another” as § 102(e) requires, but rather by a common inventive entity. The CAFC found the declaration was merely a “naked assertion” of inventorship that lacked evidence and explanation, and, noting that uncorroborated testimony from an inventor is viewed with skepticism in priority disputes, ruled that the Campbell ’558 patent qualified as prior art.
  • Administrative Procedure Act: The CAFC vacated and remanded the Board’s determination that claims 3, 16, and 20 of the ’758 patent were obvious over U.S. Patent No. 5,362,463 because the Board “denied EmeraChem its procedural rights” guaranteed by the Administrative Procedure Act by relying on the ’463 patent. Volkswagen’s petition provided a detailed claim chart identifying the grounds for each challenged claim, but the chart cited only to a different reference, Japanese Patent Application No. 62-106826, for those dependent claims. The Board’s Institution Decision similarly identified only the Japanese application as the basis for challenging claims 3, 16, and 20. Neither party addressed the ’463 patent with respect to claims 3, 16, or 20 in briefing or argument, and the first time EmeraChem was given notice that the ’463 patent would be used to show claims 1, 16, and 20 were unpatentable was in the Board’s Final Written Decision.