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Emerachem Holdings, LLC v. Volkswagen Group of America, Inc.

United States Court of Appeals, Federal Circuit

June 15, 2017

EMERACHEM HOLDINGS, LLC, Appellant
v.
VOLKSWAGEN GROUP OF AMERICA, INC., Appellee JOSEPH MATAL, PERFORMING THE FUNCTIONS & DUTIES OF THE UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, U.S. PATENT & TRADEMARK OFFICE, Intervenor

         Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2014-01558.

          Michael J. Bradford, Ludeka Neely Group, PC, Knoxville, TN, argued for appellant. Also represented by Jacobus C. Rasser, Amsterdam, The Netherlands.

          Steven F. Meyer, Locke Lord LLP, New York, NY, argued for appellee. Also represented by Seth J. Atlas, Joseph Anthony Farco.

          Frances Lynch, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor. Also represented by Nathan K. Kelley, Scott Weidenfeller, Monica Barnes Lateef.

          Before Moore, Clevenger, and Chen, Circuit Judges.

          Moore, Circuit Judge.

         EmeraChem Holdings, LLC ("EmeraChem") appeals from a decision of the Patent Trial and Appeal Board ("Board") that claims 1-14 and 16-20 of U.S. Patent No. 5, 599, 758 ("the '758 patent") would have been obvious over U.S. Patent No. 5, 451, 558 ("Campbell '558"), Japanese Patent Application No. 62-106826 ("Saito"), and U.S. Patent No. 5, 362, 463 ("Stiles"). For the reasons set forth below, we affirm the Board's decisions as to claims 1-2, 4- 14, and 17-19 and vacate and remand as to claims 3, 16, and 20.

         Background

         The '758 patent claims methods for regenerating a devitalized catalyst/absorber that has absorbed and oxidized nitrates and nitrites after extended exposure to pollutants in the combustion gases of engines. '758 patent at Abstract, 1:6-9. The catalyst/absorber is revitalized for reuse by passing a regeneration gas over it. Id. at 2:47- 50. The regeneration gas consists of a reactant gas that reduces and removes the oxidized pollutants from the catalyst/absorber and an inert carrier gas. Id. at 2:55- 3:3. Regeneration can be carried out in situ, without removing and replacing the catalyst with a fresh, unre-acted one. Id. at 2:19-24, 2:38-41.

          The application for the '758 patent was filed on December 23, 1994, and the patent issued on February 4, 1997. Eugene D. Guth and Larry E. Campbell are named co-inventors. The '758 patent incorporates Campbell '558 in its entirety. The application for Campbell '558 was filed on February 4, 1994, and the patent issued on September 19, 1995. Mr. Campbell, Robert Danziger, Mr. Guth, and Sally Padron are named co-inventors of Campbell '558. Mr. Guth is deceased. Campbell '558 discloses a catalyst/absorber used to absorb and oxidize pollutants from exhaust gas. '758 patent at 1:57-2:15. Unlike the '758 patent's invention that allows for in situ regeneration of the catalyst/absorber, Campbell '558 requires removal of the catalyst/absorber from the exhaust system when it ceases to be effective. Id. at 2:16- 33.

         Volkswagen Group of America, Inc. ("Volkswagen") petitioned for inter partes review ("IPR") of claims 1-14 and 16-20 of the '758 patent on four grounds. Grounds 1- 3 alleged anticipation of various claims by U.S. Patent No. 5, 406, 790 ("Hirota"), European Patent App. Publ. No. 560, 991 ("Takeshima"), and Saito. Ground 4 alleged claims 1-14 and 16-20 would have been obvious under 35 U.S.C. § 103(a) over the combination of Campbell '558 and either Hirota or Saito, in view of Stiles.

         Volkswagen included in its petition a claim chart specifically identifying the grounds for each challenged claim. It introduced the claim chart by stating, "Claim charts identifying specific portions of Campbell (Ex. 1003) that support, in combination with Hirota (Ex. 1006) or Saito (Ex. 1008), a showing that claims 1-14 and 16-20 are obvious over the combination of Campbell and either Hirota or Saito, are provided below." J.A. 118. Relevant to this appeal, the claim chart only cited to Saito for dependent claims 3, 16, and 20. J.A. 123, 127, 129.

          The Board instituted review on all four grounds. Its Institution Decision provided an itemized list of challenged claims and identified specific references as grounds for rejection as to each. J.A. 175-76. Relevant to this appeal, it only identified Saito for claims 3, 16, and 20. Id.

         The Board rejected claims in its final written decision based only on Volkswagen's fourth ground. It determined Campbell '558 is prior art under 35 U.S.C. § 102(e), rejecting Mr. Campbell's inventor declaration (the "Campbell Declaration") that stated he and Mr. Guth solely invented the subject matter relied upon by Volkswagen from Campbell '558. It noted that EmeraChem did not call Mr. Danziger or Ms. Padron as witnesses and did not offer any contemporaneous documentary evidence in support of the Campbell Declaration. It agreed with Volkswagen that EmeraChem failed to explain the inventorship assertions in the Campbell Declaration and determined that the Campbell Declaration was "2015 uncorroborated testimony by an interested witness about events occurring prior to 1995-a period of at least twenty years." J.A. 31 (emphasis in original). It determined "Hirota need not be relied upon when analyzing 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 are unpatentable under 35 U.S.C. § 103(a)." J.A. 43, 54. It relied on Stiles to disclose claim 3's carbon dioxide gas limitation and claims 16 and 20's steam limitation. J.A. 44-45.

         EmeraChem appeals. It argues Campbell '558 is not § 102(e) 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 United States Patent and Trademark Office ("PTO") intervened to defend the Board's decision. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

          Discussion

         We review the Board's legal conclusions de novo and its factual findings for substantial evidence. In re Gart-side, 203 F.3d 1305, 1316 (Fed. Cir. 2000). Whether a reference qualifies as prior art under 35 U.S.C. § 103 is a legal question we review de novo. Riverwood Int'l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1352 (Fed. Cir. 2003). We review the Board's procedures for compliance with the Administrative Procedure Act ("APA") de novo, under which we must "hold unlawful and set aside agency action . . . not in accordance with the law [or] . . . without observance of procedure required by law." 5 ...


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