EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc.
859 F.3d 1341
| Fed. Cir. | 2017Background
- EmeraChem owns U.S. Patent No. 5,599,758 (the ’758 patent) claiming in‑situ regeneration methods for a catalyst/absorber that had absorbed/oxidized nitrates/nitrites from engine exhaust. The ’758 patent incorporates U.S. Patent No. 5,451,558 (Campbell ’558).
- Volkswagen petitioned for IPR challenging claims 1–14 and 16–20 on multiple anticipation and obviousness grounds, including a combination of Campbell ’558 and other references, with Stiles cited as a background/reference of potential relevance.
- The PTAB instituted review on the asserted grounds and, in the final written decision, held claims 1–14 and 16–20 unpatentable as obvious over Campbell ’558 together with other references; the Board treated Campbell ’558 as § 102(e) prior art after rejecting an inventor declaration asserting common inventorship.
- EmeraChem appealed, arguing (1) Campbell ’558 should not qualify as § 102(e) prior art because portions relied on were by the same inventors (per Campbell’s declaration), and (2) the Board violated the APA by relying on Stiles to reject dependent claims 3, 16, and 20 without adequate notice or opportunity to respond.
- The Federal Circuit affirmed the Board that Campbell ’558 is § 102(e) prior art (finding the Campbell declaration uncorroborated and insufficient), affirmed invalidity for most claims, but vacated and remanded the Board’s rejection of claims 3, 16, and 20 for APA notice defects because Stiles was used against those claims without adequate identification in the petition or institution decision.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether portions of Campbell ’558 qualify as § 102(e) prior art (i.e., are "by another") | Campbell declaration shows Campbell and Guth were sole inventors of the cited portions, so Campbell ’558 is not "by another" | The declaration is uncorroborated; inventorship must be assessed by whether the reference and the challenged claims share a common inventive entity | Held: Campbell ’558 is § 102(e) prior art — declaration alone was insufficiently corroborated |
| Whether an uncorroborated inventor declaration can negate § 102(e) effect | DeBaun and Katz show declarations can suffice in some records; Campbell says his declaration is unequivocal | Board says DeBaun/Katz require more than a naked assertion; corroboration depends on totality of circumstances | Held: DeBaun/Katz do not mandate that a declaration alone always suffices; here corroboration lacking |
| Whether the Board violated APA notice/opportunity requirements by relying on Stiles to reject claims 3, 16, 20 | EmeraChem: petition and institution decision identified Saito (not Stiles) for these claims; reliance on Stiles was new and deprived Patent Owner of fair notice and chance to respond | Volkswagen/PTO: petition and institution referenced Stiles generally and cited Stiles elsewhere; reliance on additional references is permitted (Cuozzo, Genzyme) | Held: Board violated APA for claims 3, 16, 20 — insufficient notice that Stiles would be used as grounds for those specific claims; vacated and remanded those rejections |
| Remedy for APA violation | EmeraChem: final decision should be reversed for those claims | Volkswagen/PTO: do not dispute remedy alternatives | Held: Because it was unclear whether Board found Saito insufficient, court vacated and remanded the Stiles‑based findings for claims 3, 16, 20 |
Key Cases Cited
- Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346 (Fed. Cir.) (distinguishing § 102(e) prior art when same inventive entity authored both works)
- In re DeBaun, 687 F.2d 459 (C.C.P.A.) (declaration plus record evidence can rebut use of earlier patent as prior art)
- In re Katz, 687 F.2d 450 (C.C.P.A.) (declaration may suffice when supported by explanatory facts)
- Price v. Symsek, 988 F.2d 1187 (Fed. Cir.) (uncorroborated inventor testimony insufficient to prove conception)
- Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344 (Fed. Cir.) (contemporaneous documentary evidence is highly reliable corroboration)
- Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368 (Fed. Cir.) (skepticism toward uncorroborated testimony about long‑past events)
- In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir.) (Board may rely on grounds not explicitly in petition in some circumstances but institution decision must give notice)
- Genzyme Therapeutic Prods. L.P. v. Biomarin Pharm. Inc., 825 F.3d 1360 (Fed. Cir.) (no requirement that the institution decision anticipate every issue; actual notice and opportunity to respond matter)
- In re Gartside, 203 F.3d 1305 (Fed. Cir.) (standard of review: legal conclusions de novo, factual findings for substantial evidence)