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

Uncorroborated Declaration Insufficient to Establish Inventorship for Cited Prior Art

EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc., (Fed. Cir. June 15, 2017) (MOORE, Clevenger, Chen) (PTAB) (2 of 5 stars)

Fed Cir affirms IPR obviousness determination as to some claims, vacates as to others. The Board did not err in rejecting EmeraChem’s contention that certain portions of a key reference were not § 102(e) prior art because they were not “by another.” EmeraChem’s sole evidence on this point was an uncorroborated declaration by an individual named as an inventor on both the patent under review and the prior art reference, and the PTAB was under no obligation to accept the declaration as true. In re DeBaun, 687 F.2d 459 (C.C.P.A. 1982), and In re Katz, 687 F.2d 450 (C.C.P.A. 1982), are not contrary. Though those cases involved reliance on a declaration, they “required more than a naked assertion by the inventor,” such as additional explanation of relevant circumstances. Op. at 10. The opinion notes that contemporary documentary corroboration is not required “in every case.” Id.

The Board erred in finding certain dependent claims obvious over a reference not cited for those claims in the IPR Petition or Institution Decision. That the Petition included general statements concerning this reference, or that the reference was cited for other claims, did not give EmeraChem sufficient notice under APA requirements. Cuozzo, 793 F.3d 1268 (Fed. Cir. 2015), aff’d, 136 S. Ct. 2131 (2016), is not contrary because in that case, the institution decision “gave the patentee notice of the prior art combination that the final decision relied upon.” Op. at 14. Genzyme, 825 F.3d 1360 (Fed. Cir. 2016), did not authorize the Board’s decision because in that case, the patentee had sufficient notice and opportunity to respond to the combination the Board ultimately used.

KEYWORDS: INTER PARTES REVIEW; ADMINISTRATIVE PROCEDURES ACT; INVENTORSHIP; CORROBORATION; EMERACHEM HOLDINGS, LLC; VOLKSWAGEN GROUP OF AMERICA, INC.