Patent Case Summaries - July 2021 #2

Alston & Bird

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

Chemours Co. FC, LLC v. Daikin Industries, Ltd., et al., Nos. 2020-1289, -1290 (Fed. Cir. (PTAB) July 22, 2021). Opinion by Reyna, joined by Newman. Opinion concurring in part and dissenting in part by Dyk.

Daikin petitioned for IPR of two patents owned by Chemours directed to a unique polymer for insulating communication cables formed by extrusion. The claimed polymer can be formed at high extrusion speeds via a “high melt flow rate.” Daikin asserted that the claims were obvious over a patent issued to Kaulbach.

In response, Chemours argued that Kaulbach taught away from the claimed invention. Chemours also argued that its own product had been commercially successful, indicating that the invention was not obvious. The Patent Trial and Appeal Board disagreed, finding that the challenged claims were obvious, and Chemours appealed.

In a divided opinion, the Federal Circuit reversed. First, the majority found that Kaulbach taught away from the claimed invention. The court stated that Kaulbach “includes numerous examples of processing techniques that are typically used to increase melt flow rate, which Kaulbach cautions should not be used due to the risk of obtaining a broader molecular weight distribution.” Thus, according to the court, Kaulbach taught away from the claimed invention because modifying Kaulbach’s melt flow rate would have altered Kaulbach’s inventive concept.

The Federal Circuit also addressed the Board’s rejection of Chemours’s evidence of commercial success. The court ruled that the Board had improperly required a nexus between commercial success and individual claim elements, rather than the invention as a whole. Also, the Federal Circuit ruled that the Board erred by requiring Chemours to provide market share evidence. The court explained that “market share data, though potentially useful, is not required to show commercial success.”

Judge Dyk dissented in part, disagreeing with the majority’s view that Kaulbach taught away. According to Judge Dyk, “even though Kaulback determined that ‘a narrow molecular weight distribution performs better,’ it expressly acknowledged the feasibility of using a broad molecular weight distribution to create polymers for high speed extrusion coating of wires.” Judge Dyk explained that “this is not a teaching away.” Under the Federal Circuit’s precedent, the fact “that better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.”

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