CAFC gives mixed decision in Hitachi v. Alliance

The outcome



Hitachi Metals, Ltd. (“Hitachi”) appeals from final
written decisions of the U.S. Patent and Trademark Office
(“the PTO”) Patent Trial and Appeal Board (“the Board”)
in two inter partes reviews (“IPRs”), concluding that
claims 1, 5, and 6 of U.S. Patent 6,537,385 (“the ’385
patent”) and claims 1–4, 11, 12, and 14–16 of U.S. Patent
6,491,765 (“the ’765 patent”) would have been obvious at
the time of their respective inventions and that claim 1 of
the ’385 patent was anticipated. See All. of Rare-Earth
Permanent Magnet Indus., IPR 2014-01265, 2016 Pat.
App. LEXIS 1082, at *41 (P.T.A.B. Feb. 8, 2016) (“’385
Decision”); All. of Rare-Earth Permanent Magnet Indus.,
IPR 2014-01266, 2016 Pat. App. LEXIS 1083, at *56
(P.T.A.B. Feb. 8, 2016) (“’765 Decision”). For the reasons
set forth below, we affirm in part and vacate and remand
in part.



KSR is invoked


In light of the foregoing, the Board found that the
claims were directed to nothing more than a “combination
of prior art elements according to known methods to yield
a predictable result.” ’385 Decision, 2016 Pat. App.
LEXIS 1082, at *21, *24. The Supreme Court has advised
that a combination of known elements is likely to be
obvious when it yields predictable results. KSR, 550 U.S.
at 416. And substantial evidence supports the Board’s
findings that the prior art elements were well-known, one
of ordinary skill would have known how to combine them,
and the results of so doing would have been predictable.
See ’385 Decision, 2016 Pat. App. LEXIS 1082, at *18, *20,
*27, *39.




The Board's analysis of claim 4 is questioned:



Thus, we reverse the Board’s construction of claim 4
and conclude that it requires a high-speed flow of gas
(claim 3) comprising oxygen (claim 4) for the “fine pulverization”
that occurs in the first sub-step—for example, by
“pulverizer 14” shown in Figure 2. Under the correct
construction, the Board’s obviousness determination as to
claim 4 must therefore be vacated. The Board premised
its finding that Ohashi’s use of an air stream for particle
classification (the second sub-step) taught the limitations
of claim 4 on its interpretation that claim 4 requires a
high-speed flow of gas for the umbrella step and that the
two sub-steps constitute one continuous process under the
umbrella step. Under that interpretation, the Board
found that Ohashi’s disclosure of a high-speed flow of gas
for the second sub-step constituted a teaching of gas for
the entire umbrella step. But the correct construction
precludes such a finding. Ohashi’s use of an air stream
for particle classification only cannot meet the limitation
of claim 4, which requires the use of a high-speed flow of
gas comprising oxygen for fine pulverization.
Therefore, because we reverse the Board’s claim construction,
we vacate its obviousness determination as to
claim 4 and remand for further consideration under the
proper construction.