Upholding a Patent Trial and Appeal Board (PTAB or Board) patentability finding, the US Court of Appeals for the Federal Circuit found that the PTAB did not err in determining the broadest reasonable construction of a claim term and finding that the record did not establish anticipation or obviousness. Organik Kimya AS v. Rohm & Haas Co., Case Nos. 15-1983; -2001 (Fed. Cir., Oct. 11, 2017) (Newman, J). 

Rohm & Haas owns two patents directed to a process for preparing emulsion polymers that can be used in opaque coatings, such as paints and inks. The opacity of the emulsion polymers is a property produced by voids formed within the polymer particles during the process. The claimed process requires the step of providing a monomer and a “swelling agent under conditions wherein there is no substantial polymerization of the monomer.” Organik Kimya filed petitions for inter partes review against both patents, each of which was instituted. During the trial, the PTAB construed the term “swelling agent” to mean “capable of permeating the shell and swelling the core, in the presence of the multistage polymer and monomer, under the conditions of the specific process for which the agent is to be used.” Based on this construction, the PTAB determined that the prior art did not anticipate or render the claims obvious. Organik Kimya appealed.

On appeal, Organik Kimya objected to the PTAB’s construction because it required that the swelling agent operate “under the conditions of the specific process for which the agent is to be used.” Organik Kimya argued that the term “swelling agent” requires only the addition of any base and does not require reference to whether the reaction conditions are suitable for swelling.

The Federal Circuit rejected Organik Kimya’s argument, focusing on language in the specification that stated “suitable swelling agents include, are those which, in the presence of the multistage emulsion polymer and monomer, are capable of permeating the shell and swelling the core.” The Court also found that substantial evidence supported the extrinsic evidence on which the PTAB relied. For instance, Rohm & Hass’s expert testified that the “swelling agent” is defined in the specification with reference to the process conditions in which it is used, and Organik Kimya’s expert testified that the function of the base depends on the conditions of its use.

Turning to patentability, the Federal Circuit found that substantial evidence supported the PTAB’s finding that the patents were novel and nonobvious over the prior art. The PTAB relied on evidence provided by Rohm & Haas’s expert witness, who replicated experiments disclosed in the prior art and found that in these experiments, the base did not penetrate to the core of the polymer particles and cause swelling therein. While Organik Kimya’s expert criticized these studies, he did not provide any contrary evidence. As a result, substantial evidence supported the PTAB’s conclusion that Rohm & Hass’s “experimental evidence outweighed the unsupported criticism of [Organik Kimya’s] methodology.”