Reg Synthetic Fuels, LLC v. Neste Oil Oyj
841 F.3d 954
| Fed. Cir. | 2016Background
- REG Synthetic Fuels owned U.S. Patent No. 8,231,804, directed to paraffin compositions that are at least 75 wt% even‑carbon‑number paraffins and methods of producing them by hydrogenation/hydrogenolysis of natural fatty acids/esters. Claim 2 requires ≥80 wt% even paraffins; other dependent claims specify carbon chain lengths or catalysts.
- Neste petitioned for inter partes review challenging claims 1–5 and 8 as anticipated by Craig (U.S. Patent No. 4,992,605) and Dindi (published application 2008/0312480). The PTAB instituted and found anticipation by Craig (claims 1, 3, 4, 8) and by Dindi (claims 1–3, 5, 8).
- Craig reported GC‑MS peak (area) percentages for hydrocarbon products; the Board accepted expert conversion of area% to weight% via relative response factors to show ≥75 wt% even paraffins. REG disputed the reliability of that conversion.
- REG attempted to antedate Dindi by proving inventor Abhari conceived and disclosed the invention before June 13, 2008, submitting emails and test results (Exs. 2011, 2058, 2061 and others). The Board excluded some exhibits as hearsay and found REG failed to establish prior conception/reduction to practice for certain claims.
- The Federal Circuit affirmed the Board’s anticipation finding as to Craig (claims 1, 3, 4, 8), reversed the Board’s exclusion of Exhibit 2061 and its related conclusion on conception, vacated anticipation of claims 2 and 5, and remanded for factfinding on diligence and reduction to practice; it left some evidentiary exclusions intact and vacated others for reconsideration.
Issues
| Issue | REG's Argument | Neste's Argument | Held |
|---|---|---|---|
| Whether Craig anticipates claims requiring wt% even‑carbon paraffins when Craig reports GC‑MS area% | Area% cannot reliably be converted to wt% without calibration; Craig lacks necessary data | A person skilled in the art can convert area% to wt% using relative response factors; expert conversion was reliable | Affirmed: substantial evidence supports conversion and anticipation for challenged claims (1,3,4,8) |
| Whether Dindi is prior art given REG's claim of prior conception/reduction to practice by Abhari | Abhari conceived and disclosed compositions ≥80% even paraffins before Dindi (emails, test data) | Board should treat REG's exhibits as hearsay and insufficiently corroborative | Reversed in part: Exhibits 2011, 2058, 2061 corroborate conception by April 2008; vacated anticipation of claims 2 and 5 and remanded for diligence/reduction findings |
| Admissibility of Exhibit 2061 (email to Microtek) | Offered to show inventor’s state of mind and that he communicated conception to third party (non‑hearsay purpose) | Hearsay; should be excluded | Reversed: Board erred in excluding content; email admissible for non‑hearsay purpose of showing inventor’s recognition/communication |
| Admissibility of several other REG exhibits (2012, 2013, 2057, 2062, 2003, 2006, 2053) | Exhibits relevant to corroboration, diligence, reduction to practice | Board excluded some for hearsay or lack of authentication | Vacated exclusion of 2012, 2013, 2057, 2062 and remanded; affirmed exclusion of 2003, 2006, 2053 for authentication/reply‑evidence issues |
Key Cases Cited
- Eli Lilly & Co. v. Bd. of Regents of Univ. of Wash., 334 F.3d 1264 (Fed. Cir.) (anticipation is a factual question reviewed for substantial evidence)
- Singh v. Brake, 317 F.3d 1334 (Fed. Cir.) (priority/conception/reduction to practice: legal conclusions reviewed de novo, factual findings for substantial evidence)
- Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306 (Fed. Cir.) (standards for proving prior invention via conception and reduction to practice or conception plus diligence)
- In re Gartside, 203 F.3d 1305 (Fed. Cir.) (corroboration is a subsidiary factual issue reviewed for substantial evidence)
- Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264 (Fed. Cir.) (anticipation and use of extrinsic evidence to fill gaps in a reference)
- Knorr v. Pearson, 671 F.2d 1368 (C.C.P.A.) (communications to third parties may be non‑hearsay when offered to show the fact of communication that has legal significance)