Federal Circuit backs PTAB invalidation of electroluminescence patent
The US Court of Appeals for the Federal Circuit has affirmed that the Patent Trial and Appeal Board (PTAB) can reach a counterargument that was not preemptively addressed by a petition for review or institution decision.
In a precedential decision, handed down on Friday, September 15, the court affirmed the invalidation of US patent number 8,334,648, called “Organic electroluminescence device and organic light emitting medium”.
The ’648 patent, which is owned by Japan-based petroleum company Idemitsu Kosan, claims a device “containing a particular organic medium layered between an anode and cathode; when a voltage is applied through the electrodes, the organic medium emits light”.
In January 2015, SFC Co, a Korea-based company engaged in the production of materials for electronics, petitioned for an inter partes review of all of the claims (1-15) of the ‘648 patent on various grounds.
The PTAB instituted review in July 2015, on a single ground: whether certain claims were obvious over Arakane, International Publication WO 02/052904.
Arakane is assigned to Idemitsu. Translated from Japanese into English, the publication is called “Organic electroluminescence device”.
In August 2016, the board held that all of the instituted claims were obvious in light of Arakane.
Idemitsu Kosan appealed to the Federal Circuit, arguing that the PTAB had erred in finding that Arakane taught combining particular compounds for the purpose of creating a light-emitting layer in an electroluminescent device.
According to the Federal Circuit, Idemitsu Kosan did not appeal against the board’s factual findings on the correspondence between the ‘648 patent components and some of the components disclosed by Arakane.
“Specifically, Idemitsu claimed that Arakane features a requirement that, ‘when combined in a layer, the hole transporting (HT) compound and the electron transporting (ET) compound must be selected so that the energy gap of the HT compound is smaller than the energy gap of the ET compound’," said Circuit Judge Kathleen O’Malley on behalf of the court.
The PTAB didn’t make any findings with respect to the energy gap relationship, according to Idemitsu Kosan, so the board must have made one of two erroneous assumptions to find that Arakane taught the combination.
The two potential erroneous assumptions were: either a skilled person would have expected that all disclosed HT compounds in Arakane have a lower energy gap than all disclosed ET compounds, or Arakane suggests combinations of HT and ET compounds that do not satisfy the energy gap relation in addition to combinations that do.
“We find that the board plainly did not make the first assumption,” said O’Malley.
O’Malley went on to say that the portions of the PTAB’s decision that Idemitsu Kosan cited in its argument only demonstrate that the board was restating SFC’s argument, and not adopting it.
The Federal Circuit explained that the PTAB, if it made any assumption, made the second one suggested by Idemitsu Kosan.
“More precisely, it found that Arakane suggests combinations of HT and ET compounds that produce a light emitting layer, regardless of their energy gap relation. We discern no error in that finding,” said the court.
The Japan-based company claimed that this argument was “raised too late”, because it didn’t “appear in SFC’s petition or the [board]’s institution decision”.
In response, the Federal Circuit said: “Idemitsu’s contention misconstrues not only the record, but our case law as well.”
O’Malley added: “To the extent Idemitsu suggests that the board could not reach a counterargument because it was not preemptively addressed by the petition or institution decision, Idemitsu is plainly mistaken.”
There is no requirement for the institution decision to anticipate and set forth every legal or factual issue that might arise in the course of the trial, added the court, citing Genzyme Therapeutic v Biomarin Pharm.
The Federal Circuit affirmed the board’s finding of obviousness.
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