Friday, September 15, 2017

CAFC affirms PTAB in IDEMITSU KOSAN CO., LTD. case: no obligation to rebut attorney argument with expert witness testimony

The technology relates to organic LEDs [ “Organic
Electroluminescence Device and Organic Light
Emitting Medium.” ]

The issue:

On appeal, Idemitsu does not appear to challenge the
Board’s factual findings with respect to the correspondence
between the ’648 patent’s components and some of
the compounds disclosed by Arakane. Rather, Idemitsu
argues that the Board erred in finding that Arakane
taught combining those particular compounds for the
purpose of creating a light emitting layer in an electroluminescent

The CAFC referenced PTAB:

(“This teaching regarding the energy gap relationship, however,
does not diminish Arakane’s disclosure of the fundamental
concept of forming a light emitting layer containing a
mixture of at least two components, (A) a hole transporting
compound and (B) an electron transporting compound.”).
In other words, the Board found that Arakane
teaches that combining any of the listed HT compounds
with any of the ET compounds would produce a light
emitting layer, and that—if the combination additionally
satisfies the energy gap relationship—then it will feature
improved durability and efficiency as well. Id. at *27-29.

The CAFC noted

This back-and-forth shows that what Idemitsu characterizes
as an argument raised “too late” is simply the
by-product of one party necessarily getting the last word.
If anything, Idemitsu is the party that first raised this
issue, by arguing—at least implicitly—that Arakane
teaches away from non-energy-gap combinations. SFC
simply countered, as it was entitled to do. To the extent
Idemitsu suggests that the Board could not reach a counterargument
because it was not preemptively addressed
by the petition or institution decision, Idemitsu is plainly
mistaken. See Genzyme Therapeutic Prod. Ltd. P’ship v.
Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir.
2016) (“There is no requirement, either in the Board’s
regulations, in the APA, or as a matter of due process, for
the institution decision to anticipate and set forth every
legal or factual issue that might arise in the course of the
Idemitsu’s only substantive argument on appeal appears
to be that the Board should not have engaged in
fact-finding on this issue without the benefit of additional
extrinsic evidence, such as expert testimony. See, e.g.,
Appellant Br. 43–44. In some cases, that method of factfinding
could indeed be problematic. See, e.g., Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed.
Cir. 2009) (“If the relevant technology were complex, the
court might require expert opinions.”); Proveris Sci. Corp.
v. Innovasystems, Inc., 536 F.3d 1256, 1267 (Fed. Cir.
2008) (affirming the district court’s requirement of expert
testimony to prove invalidity where “th[e] subject matter
[wa]s sufficiently complex to fall beyond the grasp of an
ordinary layperson”); Brand v. Miller, 487 F.3d 862, 869-
70 (Fed. Cir. 2007) (reversing the Board’s decision to
“reject[] as unconvincing the only relevant testimony” and
independently reach the opposite conclusion).
But here, Idemitsu provided no such supporting evidence
for its own position—that Arakane teaches away
from any non-energy-gap HT/ET combinations. 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. The Board weighed the
parties’ competing arguments—each relying solely on the
text of Arakane itself—and found SFC’s reading to be the
more plausible one. That is precisely what the Board is
supposed to do.

Comment: in the text

First, SFC argued in its petition that "Arakane teaches (i) that the [HT] compound can be an arylamine compound corresponding to Formula (V) of claims 1 and 13, (ii) that the [ET] compound can be anthracene derivatives corresponding to Formulas (I) and (II) of claims 1 and 13, and (iii) that the [HT] compound and [ET] compound are mixed in the organic light emit-ting medium." J.A. 15-16; see also J.A. 189-91. Second, Idemitsu argued in its response that SFC failed to "explain why a skilled artisan would have been led to use" that combination, given that "[t]he energy gap relation-ship limits the combinations of the compounds . . . encompassed by Arakane to combinations satisfying the relationship." J.A. 328. Third, SFC countered in its reply that Arakane does not teach away from "the claimed combination," despite "the absence of demonstrating that the combination would possess the preferred energy gap relationship," distinguishing certain comparative exam-ples. J.A. 382-83; see also Idemitsu, 2016 Pat. App. LEXIS 13340, at *24 -25.

we seem to have a generic disclosure within Arakane rendering obvious a claimed sub-genus. An issue would be "why" one of ordinary skill would have been motivated to select the sub-genus.

Citation to case on LEXIS: 2017 U.S. App. LEXIS 17856


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