Federal Circuit partly affirms Volkswagen patent win
The US Court of Appeals for the Federal Circuit has affirmed a Patent Trial and Appeal Board (PTAB) decision that a number of claims of a patent challenged by Volkswagen were unpatentable as obvious.
Yesterday, June 15, the court partly affirmed the decision, but vacated and remanded invalidity findings on three claims.
The patent concerned, US Patent number 5,599,758, claims “methods for regenerating a devitalised catalyst/absorber that has absorbed and oxidised nitrates and nitrites after extended exposure to pollutants in the combustion gases of engines”.
The patent is owned by EmeraChem, a developer and manufacturer of catalytic technologies and related systems.
It incorporates US patent number 5,451,558 (Campbell) in its entirety.
Campbell discloses a catalyst/absorber used to absorb and oxidise pollutants from exhaust gas.
Volkswagen Group of America petitioned for inter partes review (IPR) of claims 1–14 and 16–20 of the ‘758 patent on four grounds.
Ground 4 of Volkswagen’s petition alleged claims 1–14 and 16–20 would have been obvious over the combination of Campbell and either US patent number 5,406,790 (Hirota) or Japanese patent application number 62-106826 (Saito), in view of US patent number 5,362,463 (Stiles).
Volkswagen included a claim chart in its proceedings which specifically identified the grounds for each challenged claim. The claim chart only cited Saito for dependent claims 3, 16, and 20.
Review was instituted on all four grounds and the board only identified Saito for claims 3, 16, and 20.
The PTAB rejected claims in its final written decision based only on Volkswagen’s fourth ground, determining that Campbell ‘558 was prior art.
It determined “Hirota need not be relied upon when analysing obviousness vis-à-vis the prior art combination of Campbell, Saito, and Stiles”, and concluded that claims 1–14 and 16–20 of the ‘758 patent were unpatentable.
EmeraChem appealed, arguing that Campbell is not prior art and that it did not have sufficient notice and opportunity to respond to Stiles as grounds for rejecting dependent claims 3, 16, and 20.
The director of the US Patent and Trademark Office (USPTO) intervened to defend the board’s decision.
According to the Federal Circuit, the PTAB had not erred in finding that Campbell was prior art, and so affirmed the board’s finding as to claims 1–2, 4–14, and 17–19.
However, it did find that the PTAB had violated the Administrative Procedure Act’s requirements of notice and an opportunity to respond.
The court found that EmeraChem didn’t receive adequate notice of, or an opportunity to respond to, the board’s reliance on Stiles for determining that claims 3, 16, and 20 of the ‘758 patent would have been obvious.
It rejected arguments from Volkswagen and the USPTO that EmeraChem had sufficient notice because the petition for IPR included “broad, general statements concerning obviousness that mention Stiles”.
The court vacated and remanded invalidity findings on the three claims.
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