CAFC discusses APA’s requirements of notice and an opportunity to respond in Emerachem case

The caption for the "intervenor" in EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM is of interest:



JOSEPH MATAL, PERFORMING THE FUNCTIONS
& DUTIES OF THE UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR, U.S. PATENT & TRADEMARK
OFFICE,



The result was a mixed bag:


EmeraChem Holdings, LLC (“EmeraChem”) appeals
from a decision of the Patent Trial and Appeal Board
(“Board”) that claims 1–14 and 16–20 of U.S. Patent
No. 5,599,758 (“the ’758 patent”) would have been obvious
over U.S. Patent No. 5,451,558 (“Campbell ’558”), Japanese
Patent Application No. 62-106826 (“Saito”), and U.S.
Patent No. 5,362,463 (“Stiles”). For the reasons set forth
below, we affirm the Board’s decisions as to claims 1–2, 4–
14, and 17–19 and vacate and remand as to claims 3, 16,
and 20.



The technical area:



The ’758 patent claims methods for regenerating a
devitalized catalyst/absorber that has absorbed and
oxidized nitrates and nitrites after extended exposure to
pollutants in the combustion gases of engines.


Of inventor declaration:


The Campbell Declaration by itself fails to demonstrate
that the portions of Campbell ’558 relied upon as
prior art and the subject matter at issue in the ’758 patent
share a common inventive entity. In addition to
declaring “Eugene D. Guth and I are the sole inventors of
all inventions claimed in U.S. Patent No. 5,599,758,”
Mr. Campbell stated, “Eugen [sic] D. Guth and I solely
conceived of and invented the following subject matter
disclosed in U.S. Patent No. 5,451,558.” J.A. 1105. This
declaration amounts to a naked assertion by an inventor
that he and a co-inventor are the true inventors of the
passages cited. Nothing in the declaration itself, or in
addition to the declaration, provides any context, explanation,
or evidence to lend credence to the inventor’s bare
assertion.
We do not hold that corroboration of an inventor’s declaration
is required in every case, but we recognize that
corroborating an inventor’s testimony is a wellestablished
principle in our case law. See e.g., Coleman v.
Dines, 754 F.2d 353, 359 (Fed. Cir. 1985); Price v. Symsek,
988 F.2d 1187, 1194 (Fed. Cir. 1993);

(...)

DeBaun does not stand for the proposition that a declaration
alone is always sufficient to support an inventor’s
claim to inventorship. The CCPA recognized that “it was
incumbent on appellant to provide satisfactory evidence,
in light of the total circumstances of the case, that the
reference reflected his own work.” Id. at 463. It concluded
that Mr. DeBaun had successfully done so



In re Katz is mentioned:


In holding that the publication was not prior art, the
CCPA relied on Mr. Katz’s explanation that his coauthors
were students under his direction and supervision:
“This statement is of significance since it provides a
clear alternative conclusion to the board’s inference that
their names were on the article because they were coinventors.”
Id. at 455. Based on this record and the totality
of the circumstances, it concluded Mr. Katz made a sufficient
showing that the publication disclosed his invention.
Id. at 456.


The intervenor (Matal) did not fare well:


We reject Volkswagen and PTO Intervenor’s arguments
that EmeraChem had sufficient notice because the
petition for IPR included broad, general statements
concerning obviousness that mention Stiles. Although
Volkswagen’s petition stated broadly that “[c]laims 1–14
and 16–20 are obvious under 35 U.S.C. § 103(a) over the
combination of Campbell [’558] and either Hirota or Saito,
in view of Stiles,” J.A. 81, 114, it went on in a detailed
claim chart to identify, claim-by-claim and element-byelement,
the specific portions of the prior art references it
believed supported obviousness. For claim 3, Volkswagen
cited Saito as disclosing the claim’s carbon dioxide gas
limitation. J.A. 123. For claims 16 and 20, it cited to a
different portion of Saito as disclosing the claims’ steam
limitation. J.A. 127, 129. For these dependent claims,
Saito was the only reference listed. Yet for claim 17,
Volkswagen cited to portions of Saito, Hirota, and Stiles
as disclosing the claim’s nitrogen and hydrogen gas limitations.
J.A. 128.
We likewise reject Volkswagen and PTO Intervenor’s
argument that the Institution Decision provided EmeraChem
with sufficient notice of the Board’s reliance on
Stiles.
(...)
We also reject Volkswagen and PTO Intervenor’s arguments
that EmeraChem had sufficient notice because
the petition block quoted the portion of Stiles the Board
ultimately relied upon in its final written decision.


Genzyme v. Biomarin arises:


Relying on Genzyme, Volkswagen contends that the
Board can rely on prior art references that were not cited
in the Institution Decision. Genzyme Therapeutic Products
L.P. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366
(Fed. Cir. 2016) (“There is no requirement . . . for the
institution decision to anticipate and set forth every legal
or factual issue that might arise in the course of the
trial.”). We do not agree that Genzyme permits the Board
to rely on Stiles to reject claims 3, 16, and 20. In Genzyme,
the patent owner alleged the Board violated the
APA’s requirements of notice and an opportunity to
respond because the Board cited two references in its final
written decisions (Kikuchi and van der Ploeg ’91) that
were not specifically included in the combinations of prior
art on which the Board instituted review. Id. at 1366.

(...)

By holding EmeraChem did not receive adequate notice
or opportunity to respond with regard to Stiles, we do
not hold that the Board is constricted in its final written
decision to citing only the portions of a reference cited in
its Institution Decision. We do not require “word-for-word
parity between the institution and final written decisions.”
Genzyme, 825 F.3d at 1368 n.4. But in the case
before us, the question is not whether the Board cited a
different passage of Stiles than what it specifically cited in
the Institution Decision. Cf. id. The question is whether
the Board provided adequate notice and opportunity to
respond to Stiles being used to reject claims 3, 16, and 20,
given the specificity with which the Board itemized the
challenged claims with specific grounds for rejection in
the Institution Decision. On this question, we find it did
not.

(...)

The fact that neither party ever mentioned Stiles in
the context of discussing claims 3, 16, and 20, helps make
the point that neither party was on notice that Stiles was
at issue as to those challenged claims.



The conclusion



For the foregoing reasons, we hold that Campbell ’558
is prior art under 35 U.S.C. § 102(e) and affirm the
Board’s decision as to claims 1–2, 4–14, and 17–19. We
hold that the Board violated the APA’s requirements of
notice and an opportunity to respond with regard to
Stiles. EmeraChem agues Stiles was not a part of the
grounds for rejection of claims 3, 16, and 20 in either the
petition or the Institution Decision. Nor was it the subject
of any parties’ briefing before the Board in this IPR.
Under these circumstances, EmeraChem argues the
Board’s final written decision should be reversed. While
Volkswagen and PTO Intervenor dispute whether there
was sufficient notice, neither dispute the proper remedy.
Therefore, we consider them to have waived any argument
that any remedy other than reversal is appropriate
when a new rationale for unpatentability is adopted by
the Board in its final written decision. Because we are
unable to discern whether the Board found Saito does not
disclose the dependent limitations in claims 3, 16, and 20,
we vacate the Board’s decision as to these claims and
remand for clarification.