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.
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.
Moore, Clevenger, and Chen, Circuit Judges.
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.
'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.
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.
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.
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.
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.
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.
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).
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 ...