Before Lourie, O’Malley, and Chen. Appeal from the Patent Trial and Appeal Board.
Summary: When the ranges identified in a claimed composition overlap with the ranges disclosed in the prior art, the burden shifts to the patentee to come forward with evidence of nonobviousness. This burden-shifting framework is applicable both in the context of district court cases and inter partes review proceedings.
DuPont petitioned for inter partes review of a patent owned by Synvina. The patent is directed to a method of oxidizing 5-hydroxymethylfurfural (“HMF”) or an HMF derivative to form 2,5-furan dicarboxylic acid (“FDCA”), a potentially important building block for bio-based chemicals. The Board instituted review of certain claims on obviousness grounds.
The Board found the claims were not obvious even though the prior art references disclosed oxidizing HMF to FDCA under conditions overlapping with those disclosed in the patent at issue. In arriving at its decision, the Board reasoned that none of the references relied upon expressly taught the particular combination of claimed reaction conditions. The Board rejected DuPont’s argument that the burden-shifting framework should be applied in the context of overlapping prior art ranges. The Board interpreted the recent Federal Circuit decisions in In re Magnum Oil Tools International, Ltd., 829F.3d 1364, 1375 (Fed. Cir. 2016) and Dynamic Drinkware, LLC v. National Graphics, Inc. 800F.3d 1375, 1378 (Fed. Cir. 2015) as prohibiting any burden-shifting framework from applying in an IPR. However, these decisions did not discuss the case law concerning overlapping ranges and the procedural framework relating to them. DuPont appealed the Board’s decision.
The Federal Circuit reversed and found the claims obvious. The Federal Circuit pointed out that the Board erred by applying the wrong legal standards for obviousness. The Board should have applied the burden-shifting framework, and the same scheme is applicable to IPR proceedings as district court cases and PTO examinations. The Federal Circuit found that the presumption of obviousness applied in this case because the claimed composition ranges fell within the ranges disclosed in the prior art. The Federal Circuit also found that the patentee failed to rebut this presumption by showing unexpected results, that the prior art taught away, that the parameter was not recognized as “result-effective” or that the disclosure of the broad ranges did not invite routine optimization.