Kennametal, Inc. v. Ingersoll Cutting Tool Company
780 F.3d 1376
| Fed. Cir. | 2015Background
- The ’519 patent (filed 2004, issued 2007) claims cemented carbide cutting tools with ruthenium-containing binders and at least one physical vapor deposition (PVD) coating.
- Ingersoll petitioned for inter partes reexamination; the PTO Examiner rejected the claims as obvious; the patentee amended claims and appealed.
- The PTAB (Initial Decision) found many claims anticipated by Grab (U.S. Patent No. 6,554,548) because Grab listed ruthenium as a binder option and expressly contemplated PVD as a coating method.
- The Board also affirmed obviousness rejections of numerous other claims over Leverenz and additional prior art (and adopted the Examiner’s Notice reasoning).
- Kennametal appealed the PTAB decision arguing Grab does not disclose the specific ruthenium + PVD combination and that claimed results were unexpected; the Federal Circuit reviewed factual findings for substantial evidence and legal conclusions de novo.
Issues
| Issue | Kennametal's Argument | Ingersoll's Argument | Held |
|---|---|---|---|
| Whether Grab anticipates claim 1 (ruthenium binder + PVD coating) | Grab’s disclosure is too broad/multi-option; PVD not shown in examples; skilled artisan would not immediately envisage ruthenium+PVD | Grab expressly contemplates PVD and lists ruthenium among binder metals, so it inherently teaches the combination | Anticipation affirmed: substantial evidence supports that Grab discloses the claimed combination |
| Whether various dependent and independent claims remain patentable (anticipation/waiver issues) | Some claims (e.g., claim 89) not separately argued on appeal; purported ambiguity about Board’s intent | Ingersoll asserted Board applied anticipation broadly to dependent claims | Court affirmed anticipation for the listed claims; arguments raised only in footnotes or not argued were waived |
| Whether Examiner/Board established prima facie obviousness for remaining claims | Cobalt capping made combination nonobvious; inventors’ declarations show unexpected results and nexus to claimed features | Prior art (Grab, Leverenz, others) taught finite, foreseeable combinations; solutions to cobalt capping were known and unrelated to ruthenium | Obviousness affirmed: substantial evidence supports that a skilled artisan would have combined teachings with a reasonable expectation of success |
| Whether claimed secondary considerations (unexpected results) establish nonobviousness | Patent’s data show surprising tool-life improvements tied to ruthenium+PVD | Evidence lacks nexus to features that are novel because Grab already taught the combination; claimed results likely attributable to known teachings | Secondary considerations rejected for lack of nexus; do not overcome the prima facie case |
Key Cases Cited
- Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367 (Fed. Cir. 2012) (standard of review: factual findings for substantial evidence; legal conclusions de novo)
- In re Applied Materials, Inc., 692 F.3d 1289 (Fed. Cir. 2012) (definition of substantial evidence)
- Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356 (Fed. Cir. 2012) (anticipation requires all claim limitations disclosed or be immediately envisaged)
- In re Petering, 301 F.2d 676 (C.C.P.A. 1962) (anticipation can be found where a skilled artisan would at once envisage the claimed arrangement)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (U.S. 2007) (obviousness analysis and reasonable expectation of success)
- Graham v. John Deere Co., 383 U.S. 1 (U.S. 1966) (Graham factors for obviousness)
- Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347 (Fed. Cir. 2005) (anticipation requires enablement to skilled artisan)
- Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368 (Fed. Cir. 2001) (enablement and anticipation principles)
- In re Huai-Hung Kao, 639 F.3d 1057 (Fed. Cir. 2011) (secondary considerations must have nexus to claimed novel features)