ORGANIK KIMYA AS v. ROHM AND HAAS COMPANY
873 F.3d 887
| Fed. Cir. | 2017Background
- Rohm & Haas owns U.S. Pat. No. 6,020,435 (’435) and its divisional U.S. Pat. No. 6,252,004 (’004) directed to processes that produce hollow (voided) multi‑stage emulsion polymer particles with improved opacity by adding a base "swelling agent" and excess monomer under conditions of no substantial polymerization, then reducing monomer levels.
- Organik Kimya filed two IPRs challenging claims of the ’435 and ’004 patents as anticipated or obvious in view of prior art including Toda and Touda (and secondary combinations). PTAB sustained patentability of the challenged claims; Organik appealed.
- Central claim limitation: a "swelling agent" that permeates the shell and swells the hydrophilic core under the process conditions disclosed (e.g., pH, temperature, monomer/base concentrations, and absence of substantial polymerization).
- PTAB relied on the patent specification and expert evidence (Rohm & Haas’s Dr. Schork) to construe "swelling agent" as functional and conditioned on the specific process conditions; Organik argued the term is broader and does not require a swelling step or specific conditions.
- PTAB found Toda and Touda disclose voided particles and bases present in their processes but do not teach or inherently disclose a swelling agent operating under the claimed conditions; PTAB credited Dr. Schork’s experimental replications showing no core swelling under those prior‑art conditions.
- The Federal Circuit affirmed: the Board’s construction of "swelling agent" accords with the specification and its factual findings (including reliance on experimental replication) are supported by substantial evidence; the prior art did not render the claims unpatentable.
Issues
| Issue | Organik's Argument | Rohm & Haas's Argument | Held |
|---|---|---|---|
| Proper construction of "swelling agent" | Term is broad/open‑ended; only requires adding a base; Board improperly imported a swelling step and process‑condition limits | Spec defines swelling agent functionally as a base that permeates the shell and swells the core under the patentee’s disclosed conditions; expert testimony supports this construction | Court upheld PTAB: construction tied to specification and process conditions is correct |
| Anticipation by Toda | Toda’s use of KOH and production of hollow particles anticipates claims because a base was present and similar voids formed | Toda’s process differs; KOH not shown to permeate shell and swell core under no‑substantial‑polymerization conditions; Board credited experiments showing no swelling | PTAB’s finding that Toda does not anticipate affirmed (substantial evidence) |
| Obviousness based on Touda | Touda’s use of NaOH and formation of microvoids renders claims obvious; base in prior art is a "swelling agent" | Touda’s conditions (e.g., shell hardness, temperatures) would prevent base permeation and core swelling; experiments showed no core swelling | PTAB’s nonobviousness conclusion affirmed (substantial evidence) |
| Obviousness of modifying Touda Example 2 by substituting cresol (’004) | Substitution of cresol for toluene would be an obvious modification to achieve claimed inhibitor step | Experimental evidence showed cresol prevents shell formation / stops polymerization such that process would not operate as claimed | PTAB’s finding that substitution would not render claims obvious affirmed (substantial evidence) |
Key Cases Cited
- Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir.) (standard: anticipation factual, obviousness legal with factual findings reviewed for substantial evidence)
- Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir.) (claim construction in PTAB proceedings relies on intrinsic evidence and must align with one skilled in the art)
- In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268 (Fed. Cir.) (discusses broadest reasonable interpretation in PTO practice)
- In re NTP, Inc., 654 F.3d 1279 (Fed. Cir.) (claim construction must be consistent with specification and skilled‑artisan understanding)
- In re Cortright, 165 F.3d 1353 (Fed. Cir.) (same: specification controls claim meaning)