In IPR, Presumption of Obviousness for Claimed Ranges Within Prior Art Applies
Fed Cir reverses IPR confirmation of Synvina’s claims. The PTAB applied the wrong legal standards for obviousness. Synvina’s patent related to a method for making 2,5-furan dicarboxylic acid (“FDCA”), a bio-based reagent useful in “green” chemistry. The opinion finds that DuPont had appellate standing. The opinion describes how, in response to Synvina’s standing attack (presented in its Red Brief), DuPont submitted declarations describing an FDME-producing “demonstration plant” using the same reactants as in Synvina’s claims that DuPont was planning to build and, by the time of oral argument, had actually built and was operating. “Taken together, these facts demonstrate that DuPont, an avowed competitor of patent owner Synvina, has taken and ‘plans to take action that would implicate’ [Synvina’s] patent, including significant ‘involvement in research and commercial activities involving’ the claimed subject matter of the [Synvina] patent.” 904 F.3d at 1005 (quoting Phigenix, 845 F.3d 1168 (Fed. Cir. 2017) and Consumer Watchdog, 753 F.3d 1258 (Fed. Cir. 2014)).
The PTAB erred by failing to apply the appropriate burden-shifting framework to determine whether certain reaction condition ranges in Synvina’s claims were within the realm of “routine experimentation” of ranges in DuPont’s prior art. Per Galderma, 737 F.3d 731 (Fed. Cir. 2013), and other cases, where the claimed invention falls within a range disclosed by prior art, there is a presumption of obviousness, and the burden of production is on the patentee to come forward with evidence of nonobviousness (e.g., teaching away, unexpected results). The factfinder then evaluates that evidence to determine whether the patent challenger has carried its burden of persuasion to demonstrate obviousness. Neither Magnum Oil, 829 F.3d 1364 (Fed. Cir. 2016), nor Dynamic Drinkware, 800 F.3d 1375 (Fed. Cir. 2015), bars application of this burden-shifting framework in IPR.
The PTAB also erred in its evaluation of whether certain reaction conditions were “result-effective variables,” as per Antonie, 559 F.2d 618 (C.C.P.A. 1977), and Applied Materials, 692 F.3d 1289 (Fed. Cir. 2012). “Under the applicable standard, DuPont needed to show that it was recognized in the prior art, either expressly or implicitly, that the claimed oxidation reaction was affected by [the variables at issue].” 904 F.3d at 1009. The PTAB’s analysis applied an improperly restrictive standard (that Dow had to prove that the prior art disclosures “necessarily required” that the variables be within the claimed range, or that the variables “predictably affected” yields). Applying the correct standard, the opinion finds no “legitimate dispute” that the variables in question were result-effective. In a fact-intensive discussion, the opinion then determines that DuPont was entitled to a presumption that Synvina’s claimed ranges were the result of routine experimentation over the prior art, and Synvina failed to rebut. The claims were thus obvious.
KEYWORDS: INTER PARTES REVIEW; RANGE CLAIMS; OBVIOUSNESS (YES); BURDEN-SHIFTING