Rovalma, S.A. v. Bohler-Edelstahl Gmbh & Co. Kg
856 F.3d 1019
| Fed. Cir. | 2017Background
- Rovalma owns U.S. Patent No. 8,557,056 claiming processes to set room‑temperature thermal conductivity of hot‑work steels above specified thresholds by metallurgically creating internal microstructures (carbidic constituents, matrix, lattice defects) and selecting surface/volume fractions and conductivities.
- Böhler petitioned for inter partes review challenging claims 1–4, arguing the claims should be construed to cover compositions disclosed in the specification and that those compositions were obvious over prior art (e.g., EP 0,787,813). Böhler did not argue unpatentability under the process‑style claim construction later urged by Rovalma.
- The PTAB instituted review adopting Böhler’s construction, but in its final written decision the Board adopted Rovalma’s construction (requiring performance of the claimed process steps) and found the claims obvious over Böhler’s prior art as informed by the knowledge of a person of ordinary skill.
- The Board relied heavily on Rovalma’s own submissions (Patent Owner Response, thermoprocessing evidence, and oral‑argument statements) to find that a skilled artisan would have known how to use thermal processing and modeling tools to achieve the claimed conductivities and thus would have been motivated and had a reasonable expectation of success.
- Rovalma appealed, arguing (1) the Board’s obviousness findings lack substantial evidence and (2) the Board procedurally erred by relying on Rovalma’s own submissions without providing adequate notice and opportunity to respond; the Federal Circuit vacated and remanded for further explanation and proceedings.
Issues
| Issue | Plaintiff's Argument (Rovalma) | Defendant's Argument (Böhler) | Held |
|---|---|---|---|
| Whether the Board’s obviousness findings are supported by substantial evidence | Board failed to explain how Rovalma’s submissions show a skilled artisan would achieve the claimed conductivities; factual inferences unsupported | Prior art disclosed compositions and Board reasonably relied on record (including Rovalma's evidence) to infer skill‑art knowledge | Vacated and remanded: Board did not sufficiently explain evidentiary basis and inferences, so substantial‑evidence review is not possible |
| Whether the Board violated statutory limits by relying on Patent Owner’s submissions to find claims unpatentable | Board exceeded authority by using patent owner’s evidence against it to create a ground petitioner never argued | No statutory prohibition; Board may draw inferences from parties’ record if notice and opportunity to respond provided | No categorical statutory bar; reliance permissible in principle, subject to procedural fairness; remand to assess notice/opportunity |
| Whether Rovalma received adequate notice and opportunity to address the Board’s inferences | Patent owner lacked notice that the Board would adopt and rely on its thermo‑processing evidence to find obviousness; oral argument was too late | Petitioner had notice the Board might adopt Rovalma’s construction (it was argued in Patent Owner Response); petitioner could have preserved arguments | Remanded: Court cannot determine what inferences Board drew or whether parties had adequate opportunity; procedural adequacy unresolved |
| Adequacy of Board’s explanation for motivation and reasonable expectation of success | Board’s statements were conclusory; did not cite specific evidence showing motivation to increase conductivity to claimed levels or reasonable expectation of success | Board relied on record background knowledge and Rovalma’s submissions to support motivation and expectation findings | Vacated and remanded for the Board to identify evidence, explain its reasoning, and address procedural notice issues |
Key Cases Cited
- Bowman Transp., Inc. v. Ark.-Best Freight Sys., Inc., 419 U.S. 281 (administrative decisions upheld if agency’s path reasonably discernible)
- SEC v. Chenery Corp., 332 U.S. 194 (agency must supply its own reasoned basis for decision)
- SEC v. Chenery Corp., 318 U.S. 80 (agency must explain determinations on matters made material)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (obviousness: need to make motivation/analysis explicit)
- Personal Web Technologies, LLC v. Apple, Inc., 848 F.3d 987 (need for adequate Board explanation varies with complexity)
- In re NuVasive, Inc., 842 F.3d 1376 (Board must provide adequate explanation and notice)
- In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Board cannot shift burden by requiring patent owner to prove invalidity; notice/opportunity concerns)
- SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (remand required when Board adopts new construction without giving opposing party chance to argue unpatentability under it)
- Dell Inc. v. Acceleron, LLC, 818 F.3d 1293 (Board may not change theories midstream without notice and opportunity)
- Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (procedural protections: notice and chance to present arguments/evidence)
- Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034 (vacatur/remand where Board’s reasoning insufficient)