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Idemitsu Kosan Co. v. SFC Co.

IPR Decision May Rely on Post-Institution Argument, Where Only Attorney Argument Was in Play

Idemitsu Kosan Co. v. SFC Co., 2017 U.S. App. LEXIS 17856 (Fed. Cir. Sept. 15, 2017) (Prost, O’MALLEY, Chen) (PTAB) (3 of 5 stars)

Fed Cir affirms IPR obviousness determination. The PTAB did not err in determining that the prior art taught combining various compounds for the purpose of light emission. The opinion rejects Idemitsu’s argument that the Board made improper assumptions in its characterization of the prior art. It also rejects Idemitsu’s argument that the Board’s reasoning came from an argument that was raised “too late” in the IPR proceedings. The opinion describes the back-and-forth of SFC’s petition, Idemitsu’s response (which raised the issue in question), and SFC’s reply (which more fully developed the issue). “[W]hat Idemitsu characterizes as an argument raised ‘too late’ is simply the by-product of one party necessarily getting the last word.” Op. at 9. Per Genzyme, 825 F.3d 1360 (Fed. Cir. 2016), the Board is permitted to reach counterarguments not preemptively raised in either the petition or the institution decision. The opinion declines to find error in the Board’s fact-finding on this issue without expert testimony, at least in this context. While Idemitsu did argue in its response that the prior art taught away from the claimed technology, it did not provide supporting evidence. “SFC, of course, bears the ultimate burden of establishing unpatentability, but it is not required as a matter of law to rebut mere attorney argument with expert testimony in order to satisfy that burden.” Op. at 10. The opinion finds the Board’s fact-finding sufficiently supported by the record in that context.

KEYWORDS: INTER PARTES REVIEW; OBVIOUSNESS (YES)