EI DuPont de Nemours & Co. v. Synvina CV United States Court of Appeals of the Federal Circuit, 2018 904 F.3d 996

摘要

In an inter partes review (IPR) the Patent Trial and Appeal Board (the "Board") held that claims directed to a method of oxidizing 5-hydroxymethylfurfural (HMF) or an HMF derivative, under specified reaction conditions to form 2,5-furan dicarboxylic acid (FDCA), had not been proven obvious at the time of the claimed invention. The oxidation of HMF and its derivatives to yield FDCA was known at the time of the claimed invention. Thus the main issue on appeal was whether the claimed reaction conditions-specifically, the choice of temperature, pressure, catalyst, and solventwould have been obvious to a person of ordinary skill at the time of the invention. After ruling that DuPont had standing to bring the appeal forward, based in part on its operation of a manufacturing plant that appears to clearly infringe the challenged claims, the Federal Circuit moved to the merits of the appeal. The court held that the Board had misinterpreted precedent and erroneously refused to apply a burden-shifting framework in the context of overlapping prior-art ranges. It also found that the Board had improperly invoked a `` result-effective variable requirement. The court cited the well-established principle that an overlap between the ranges of a claimed composition and the ranges disclosed in the prior art creates a presumption of obviousness, and held that the patentee had failed to rebut that presumption. Because it had applied the wrong legal standards for obviousness, the Board's decision was reversed with respect to each of the instituted claims.