Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (2015)
`114 U.S.P.Q.2d 1250
`
`780 F.3d 1376
`United States Court of Appeals,
`Federal Circuit.
`
`KENNAMETAL, INC., Appellant
`v.
`INGERSOLL CUTTING TOOL COMPANY, Appellee.
`
`No. 2014–1350.
`
` | March 25, 2015.
`
`Synopsis
`Background: Competitor petitioned
`inter partes
`for
`reexamination of patent related to cutting tools containing
`ruthenium as a binder that are coated using physical vapor
`deposition (PVD). The United States Patent and Trademark
`Office, Patent Trial and Appeal Board, 2013 WL 6039030,
`entered finding that patent claims were invalid as obvious and
`anticipated. Patent assignee appealed.
`
`Holdings: The Court of Appeals, Linn, Circuit Judge, held
`that:
`
`evidence
`
`supported
`
`anticipation
`
`evidence
`
`supported
`
`obviousness
`
`substantial
`[1]
`determination, and
`
`substantial
`[2]
`determination.
`
`Affirmed.
`
`West Headnotes (15)
`
`[1]
`
`Patents
`Questions of law or fact
`Patents
`Questions of law or fact
`
`is a question of fact, while
`Anticipation
`obviousness is a question of law based on
`underlying findings of fact. 35 U.S.C.A. §§ 102,
`103.
`
`Cases that cite this headnote
`
`[2]
`
`Patents
`Scope of Review
`
`Court of Appeals reviews the factual findings
`of the Patent Trial and Appeal Board for
`substantial evidence and its legal conclusions
`without deference.
`
`Cases that cite this headnote
`
`[3]
`
`Patents
`Scope of Review
`
`For purposes of review of factual findings
`of Patent Trial and Appeal Board, substantial
`evidence
`is such relevant evidence as a
`reasonable mind might accept as adequate to
`support a conclusion.
`
`Cases that cite this headnote
`
`[4]
`
`Patents
`Single reference disclosing every element
`or limitation of claim
`
`A prior art reference can only anticipate a claim
`if it discloses all the claimed limitations arranged
`or combined in the same way as in the claim. 35
`U.S.C.A. § 102(b) (2006).
`
`1 Cases that cite this headnote
`
`[5]
`
`Patents
`Enablement
`
`A reference can anticipate a claim even if it
`does not expressly spell out all the limitations
`arranged or combined as in the claim, if a person
`of skill in the art, reading the reference, would
`at once envisage the claimed arrangement or
`combination. 35 U.S.C.A. § 102(b) (2006).
`
`1 Cases that cite this headnote
`
`[6]
`
`Patents
`Particular products or processes
`
`Substantial evidence supported determination of
`Patent Trial and Appeal Board in reexamination
`proceeding
`that pending claim of patent
`related to cutting tools containing ruthenium
`as a binder that are coated using physical
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
`
`1
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`SAMSUNG 1043
`Samsung Electronics v. SmartFlash
`CBM2014-00199
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`

`
`Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (2015)
`114 U.S.P.Q.2d 1250
`
`vapor deposition (PVD) was anticipated; with
`exception of combining ruthenium binders with
`PVD coatings, claim in prior art expressly recited
`all the elements of pending patent claim, and
`prior art claim recited using a binder consisting
`of one of five metals, one of which was
`ruthenium, together with a coating, and only
`disclosed three coating methods, one of which
`was PVD, and person of skill in the art, reading
`prior art claim, could envisage applying a PVD
`coating. 35 U.S.C.A. § 102(b) (2006).
`
`1 Cases that cite this headnote
`
`[7]
`
`Federal Courts
`Failure to mention or inadequacy of
`treatment of error in appellate briefs
`
`Arguments raised only in footnotes of appeal
`brief are waived.
`
`Cases that cite this headnote
`
`[8]
`
`Patents
`New grounds for rejection
`
`Patent assignee did not waive challenge to
`determination of Patent and Trial Appeal Board
`in reexamination proceeding that remaining
`claims
`in patent related
`to cutting
`tools
`containing ruthenium as a binder that are coated
`using physical vapor deposition (PVD) were
`obvious, although assignee failed to argue at
`Board for independent patentability of remaining
`claims, since at
`time of
`its briefing, all
`claims were rejected for obviousness, and only
`when Board instituted new basis for rejection,
`rejecting some claims for anticipation, and
`correspondingly regrouping claims, was there
`any reason assignee should have separately
`argued for patentability of the remaining claims.
`35 U.S.C.A. § 103(a) (2006).
`
`Cases that cite this headnote
`
`[9]
`
`Federal Courts
`Waiver of Error in Appellate Court
`
`Arguments cannot be deemed waived if they
`were not previously required to have been made.
`
`Cases that cite this headnote
`
`[10]
`
`Patents
`In general; multiple factors
`Patents
`Questions of law or fact
`
`Obviousness is a question of law, based on
`underlying factual determinations, including: the
`scope and content of the prior art, differences
`between the prior art and the claims at issue, the
`level of ordinary skill in the pertinent art, and
`such secondary considerations as commercial
`success, long felt but unsolved needs, failure of
`others, etc. 35 U.S.C.A. § 103(a) (2006).
`
`Cases that cite this headnote
`
`[11]
`
`Patents
`Presumptions and burden of proof
`
`The Patent and Trademark Office bears the
`initial burden of showing a prima facie case
`of obviousness; when a prima facie case of
`obviousness is made, the burden then shifts to the
`applicant to come forward with evidence and/or
`argument supporting patentability. 35 U.S.C.A.
`§ 103(a) (2006).
`
`Cases that cite this headnote
`
`[12]
`
`Patents
`Particular products or processes
`
`Substantial evidence supported finding of Patent
`Trial and Appeal Board
`in reexamination
`proceeding that claim in patent related to cutting
`tools containing ruthenium as a binder that are
`coated using physical vapor deposition (PVD)
`was obvious based on prior art; person of skill in
`the art reading prior art would readily envisage
`combination of ruthenium binders and PVD
`coatings, and it would have been obvious to that
`person that these two could be combined with
`reasonable expectation of success, and express
`teaching was not significantly undermined by the
`problem of cobalt capping. 35 U.S.C.A. § 103(a)
`(2006).
`
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`Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (2015)
`114 U.S.P.Q.2d 1250
`
`Cases that cite this headnote
`
`[13]
`
`Patents
`In general; utility
`
`US Patent 6,214,247. Cited as Prior Art.
`
`Cases that cite this headnote
`
`Co. v. TDY Indus., Reexamination Ctrl. No. 95/001,417,
`available at 2013 WL 6039030 (P.T.A.B. Nov. 12, 2013)
`(“Board Decision on Rehearing”); Ingersoll, available at
`2013 WL 3294868 (P.T.A.B. May 6, 2013) (“Initial
`Board Decision”). Because substantial evidence supports the
`Board's determinations of anticipation and obviousness and
`because we see no error in the Board's legal conclusion of
`obviousness, we affirm.
`
`[14]
`
`Patents
`In general; utility
`
`US Patent 6,554,548. Cited.
`
`Cases that cite this headnote
`
`[15]
`
`Patents
`In general; utility
`
`US Patent 7,244,519. Invalid.
`
`Cases that cite this headnote
`
`Attorneys and Law Firms
`
`*1378 Steven Moore, Kilpatrick Townsend & Stockton
`LLP, San Francisco, CA, argued for appellant. Also
`represented by J. Jason Link, N. Dean Powell, Winston–
`Salem, NC.
`
`Nanda Alapati, Womble, Carlyle, Sandridge & Rice, PLLC,
`Tysons Corner, VA, argued for appellee. Also represented
`by David Ryan Crowe, Greensboro, NC; Ian A. Calvert,
`Winston–Salem, NC.
`
`Before PROST, Chief Judge, NEWMAN, and LINN, Circuit
`Judges.
`
`Opinion
`
`LINN, Circuit Judge.
`
`Kennametal, Inc. (“Kennametal”) appeals the decision of
`the Patent Trial and Appeal Board (the “Board”) in an
`inter partes reexamination of U.S. Patent No. 7,244,519
`(the “#519 patent”) in which the Board: (a) entered a
`new anticipation ground of rejection asserted by Ingersoll
`Cutting Tool Co. (“Ingersoll”) against certain of the pending
`claims; and (b) affirmed the Examiner's obviousness rejection
`of certain remaining claims. See Ingersoll Cutting Tool
`
`I. BACKGROUND
`
`A. The ′519 Patent
`
`The ′519 patent was filed in 2004 and issued in 2007. The ′519
`patent relates to cutting tools containing ruthenium as a binder
`that are coated using physical vapor deposition (“PVD”).
`See, e.g., ′519 patent Title; id. Abstract. The patent explains
`that cemented carbide cutting tools are generally useful. Id.
`col. 1 ll. 15–19. These tools are made by consolidating hard
`particles and a binder to form a compact, which is then
`sintered to form a tool blank from which a variety of tools
`can be formed. Id. col. 1 ll. 19–26. Cobalt is often used in the
`binder. Id. col. 1 ll. 48–50.
`
`According to the ′519 patent, it was unusual to include
`ruthenium with cobalt in the binder, and, in those instances
`when a cobalt-ruthenium binder was used, no one had coated
`the tools using PVD. Id. col. 1 ll. 54–56, col. 2 ll. 58–61. The
`patent suggests that the reason cobalt-ruthenium binders were
`not coated by PVD was because *1379 the use of cobalt
`in a binder tends to create cobalt structures on the surface
`—a process known as “cobalt capping.” Id. col. 3 ll. 6–10;
`id. col. 3 ll. 38–40. This problem is supposedly exacerbated
`when ruthenium is included in the binder. Id. col. 3 ll. 13–
`15. According to the patent, PVD coating—which is done at
`a lower temperature than other methods of coating, such as
`chemical vapor deposition—is not hot enough to re-melt the
`surface of the binder, so coatings applied via PVD do not
`adhere well to binders that produce cobalt capping. Id. col. 3
`ll. 33–36. Additionally, PVD coatings, as the patent describes,
`can be too thin to compensate for the cobalt capping effect.
`Id. col. 3 ll. 36–37.
`
`The inventors assigned their interests in the invention claimed
`in the ′519 patent to TDY Industries, Inc. (“TDY”) at the time
`the application for the patent was filed. ′519 patent Assignee.
`In 2010, TDY sued Ingersoll for infringement of the ′519
`patent. TDY Indus. Inc. v. Ingersoll Cutting Tool Co., No.
`
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`Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (2015)
`114 U.S.P.Q.2d 1250
`
`2:10–cv–00790–CB (W.D.Pa., filed June 10, 2010). After the
`suit was filed, TDY assigned the ′519 patent to Kennametal.
`Ingersoll successfully petitioned the Patent and Trademark
`Office (the “Patent Office”) for inter partes reexamination
`of the ′519 patent, and the district court, in turn, stayed the
`litigation.
`
`B. Proceedings at the Patent Office
`
`Ingersoll submitted a request for inter partes reexamination,
`claiming that some of the original claims were anticipated
`under 35 U.S.C. § 102(b) and all of the claims were obvious
`under § 103(a). The Examiner did not adopt any of Ingersoll's
`proposed anticipation rejections but did reject all of the
`pending claims as obvious. In response, the patentee amended
`the existing claims and filed numerous new claims. Pending
`claim 1 is representative, and recites as amended:
`
`1. A cutting tool, comprising:
`
`a cemented carbide substrate, wherein the substrate
`comprises hard particles and a binder, and the binder
`comprises ruthenium; and
`
`at least one physical vapor deposition coating on at least
`a portion of the substrate.
`
`Ingersoll again proposed both anticipation and obviousness
`rejections. The Examiner refused to adopt the anticipation
`rejections but did reject all of the claims as obvious.
`Kennametal appealed the rejections, and Ingersoll cross-
`appealed the Examiner's refusal to adopt its proposed
`anticipation rejections.
`
`In the Initial Board Decision, the Board found that the
`Examiner erred in not adopting Ingersoll's proposed rejection
`of pending claims 1–4, 9–18, 23, 24, 27–31, 35, 36, 45, 46,
`49, 50, 58, 83, 85 and 89 as anticipated by U.S. Patent No.
`6,554,548 to Grab (“Grab”). Initial Board Decision, at *3–5.
`
`The Board found that claim 5 of Grab expressly described the
`majority of the elements recited in pending claim 1 of the ′519
`patent. Id. at *3–5. Claim 5 of Grab and its parent, claim 1,
`recite:
`
`1. A coated cutting insert comprising:
`
`a rake face and a flank face, a cutting edge at the juncture
`of the rake face and the flank face;
`
`the cutting insert having a hard refractory coating and a
`substrate wherein the coating is adherently bonded to the
`substrate;
`
`the substrate comprising a tungsten carbide-based
`material comprising a bulk composition of at least about
`70 weight percent tungsten and carbon, between about
`3 weight percent and *1380 about 12 weight percent
`cobalt, and at least 0.09 weight percent chromium;
`
`the cobalt and the chromium forming a binder alloy:
`
`wherein the binder alloy content being enriched in a
`surface zone of binder alloy enrichment beginning near
`and extending inwardly from a peripheral surface of the
`substrate; and
`
`wherein the bulk composition of the substrate further
`comprises tantalum in an amount up to about 10 weight
`percent, niobium in an amount up to about 6 weight
`percent, and titanium in an amount up to about 10 weight
`percent.
`
`5. The coated cutting insert of claim 1 wherein the binder
`alloy further includes one or more of tungsten, iron, nickel,
`ruthenium, and rhenium.
`
`The Board noted that claim 5 of Grab specifically recites five
`metals, one of which was ruthenium. Initial Board Decision,
`at *4. Claim 5 also recites a “coating,” but, the Board
`acknowledged, does not state that the coating is applied via
`PVD. Id. The Board noted, however, that the specification of
`Grab discloses PVD as one of three contemplated methods of
`coating. Id. Specifically, Grab states:
`
`Generally speaking, one or more of the coating layers
`of the coating schemes are applied by chemical vapor
`deposition (CVD) and moderate temperature chemical
`vapor deposition (MTCVD).
`
`However, applicants also contemplate that one or more
`layers of a coating scheme may be applied by physical
`vapor deposition (PVD).
`
`Grab col. 4 ll. 56–61. The Board also found that claim 5's
`recitation of a “coating” was “a specific hook back into the
`Grab disclosure for the further description of how that coating
`is applied.” Initial Board Decision, at *5. The Board found
`that the description of coating by PVD was not negated by the
`fact that CVD and MTCVD were “characterized by Grab as
`preferred.” Id. at *4. The combination of one of five metals
`
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`Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (2015)
`114 U.S.P.Q.2d 1250
`
`with one of three coatings leads to only fifteen possibilities,
`which, according to the Board, was a sufficiently definite and
`limited class so that each member of the class was anticipated
`by Grab. Id. at *4–5. The Board stated that Ingersoll provided
`evidence that claims 2–4, 9–18, 23, 24, 27–31, 35, 36, 45, 46,
`49, 50, 58, 83, 85 and 89 were also anticipated, and neither
`the Examiner nor the Patent Owner distinguished these claims
`from claim 1. Therefore, the Board ruled that these claims
`were also anticipated by Grab. Id. at *5.
`
`Because the Board found these claims anticipated, it refused
`to consider whether these claims were also obvious. Id. at *7.
`The Board separately found claims “5–8, 19–22, 23, 24, 25,
`26, 56, 57, 59, 86, and 90” 1 obvious over Grab in view of
`additionally cited prior art. Id.
`
`Regarding obviousness, the Board affirmed the Examiner's
`rejections of: claims 33, 34, 37–44, 47, 48 and 84 as obvious
`over U.S. Patent No. 6,214,247 to Leverenz (“Leverenz”);
`claims 24, 25, 26, 49–52, 56, 57, 59, 86–90 and 93 as obvious
`over Leverenz in view of other prior art; and claims 2–14,
`16–23, 27, 31, 33–48, 58, 84 and 85, “[w]ith respect to
`the dependent claims not already addressed,” 2 as obvious
`*1381 over Leverenz in view of T.L. Shing, et al., The effect
`of ruthenium additions on the hardness, toughness and grain
`size of WC–Co, 19 Int'l J. Refractory Metals & Hard Materials
`41 (2001). The Board rejected Kennametal's assertion that
`these claims provided unexpected results because it found that
`the unexpected results lacked a nexus to the limitations recited
`in the claims. Id. at *7–8.
`
`The Board denied Kennametal's request for a rehearing,
`finding that although Grab appeared not to have applied
`coatings by PVD, it still anticipated this usage. Board
`Decision on Rehearing, at *3. It also found that Grab's
`teachings, especially in view of the art at the time, would
`have avoided a cobalt capping problem and were therefore
`enabling. Id. at *4.
`
`II. DISCUSSION
`
`Kennametal appeals all the Board's rejections. We have
`jurisdiction pursuant to 28 U.S.C. § 1295(a)(4).
`
`A. Standard of Review
`
` [3]
` [2]
`[1]
` Anticipation under 35 U.S.C. § 102 is
`a question of fact, while obviousness under § 103 is a
`question of law based on underlying findings of fact. Flo
`Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1375
`(Fed.Cir.2012) (citing cases). We review the Board's factual
`findings for substantial evidence and its legal conclusions
`without deference. Id. at 1375–76 (citing cases). “Substantial
`evidence is ‘such relevant evidence as a reasonable mind
`might accept as adequate to support a conclusion.’ ” In re
`Applied Materials, Inc., 692 F.3d 1289, 1294 (Fed.Cir.2012)
`(quoting Consol. Edison Co. v. NLRB, 305 U.S. 197, 229, 59
`S.Ct. 206, 83 L.Ed. 126 (1938)).
`
`B. Anticipation
`
` [5]
`[4]
` A patent is invalid if “the invention was patented
`or described in a printed publication in this or a foreign
`country or in public use or on sale in this country, more
`than one year prior to the date of application for patent in
`the United States.” 35 U.S.C. § 102(b) (2006). 3 A prior art
`reference can only anticipate a claim if it discloses all the
`claimed limitations “arranged or combined in the same way
`as in the claim.” Wm. Wrigley Jr. Co. v. Cadbury Adams
`USA LLC, 683 F.3d 1356, 1361 (Fed.Cir.2012) (quoting
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370
`(Fed.Cir.2008)). However, a reference can anticipate a claim
`even if it “d[oes] not expressly spell out” all the limitations
`arranged or combined as in the claim, if a person of skill
`in the art, reading the reference, would “at once envisage”
`the claimed arrangement or combination. In re Petering, 49
`CCPA 993, 301 F.2d 676, 681 (1962).
`
`[6]
` Kennametal argues that Grab does not disclose the
`combination of ruthenium as a binder and a PVD coating.
`It notes that Grab discloses five potential metals to use in
`the binder, which, allowing for combinations of metals (e.g.,
`the combination of tungsten and ruthenium), allows for 31
`different possibilities—although it recognizes that 16 of these
`include ruthenium. Op. Br. at 38. Kennametal also notes that
`the examples in Grab include three to five coating layers.
`Kennametal asserts that allowing for three options for each
`coating creates a total of 351 possible coating solutions,
`which, when multiplied by the 31 *1382 different binder
`possibilities, allows for 10,881 possibilities. Op. Br. at 40.
`Kennametal further maintains that, in fact, claim 5 of Grab
`allows an infinite number of options since, for instance, the
`percentages of the various binders and the thickness of the
`coating are undefined. Kennametal claims that the number of
`
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`Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (2015)
`114 U.S.P.Q.2d 1250
`
`options taught by Grab distinguishes this case from Petering
`and makes it more akin to cases where this court did not find
`anticipation.
`
`Furthermore, every example in Grab, Kennametal points
`out, uses CVD or MTCVD methods of coating. Kennametal
`contends that in this context, the use of ruthenium as a binder
`and the contemplation of the use of PVD as a coating were
`among a multiplicity of options so that a person of skill in the
`art would not immediately envisage the claimed combination.
`Citing its expert's testimony, Kennametal claims that the
`specific combination of ruthenium metal and PVD coating
`would not have been considered viable.
`
`Ingersoll responds that Grab discusses a coating, which
`allows for three coating techniques, including PVD, along
`with any one of five metal binders, including ruthenium.
`Thus, according to Ingersoll, Grab effectively discloses the
`combination of PVD coating with ruthenium. Ingersoll also
`claims that the lack of PVD coating in the examples of Grab
`does not mean the reference cannot anticipate such coatings.
`
`According to Ingersoll, a person of skill in the art reading
`Grab would immediately envisage examples using one metal
`as a binder and one type of coating—not combinations
`of multiple metals or multiple coatings. In the alternative,
`Ingersoll claims that allowing for multiple coatings and/or
`metals only increases the likelihood that Grab would teach
`embodiments within the scope of the claim. For instance, of
`the 31 possible combinations of the five metals, 16 include
`ruthenium. Ingersoll claims that allowing for multi-metal
`and multi-coating embodiments makes 17% or 29% of the
`embodiments described by Grab fall within the ambit of
`pending claim 1. Resp. Br. at 20, 21. Ingersoll also argues that
`the fact that Grab teaches five similar metals and three well-
`settled methods of coating makes the scope of Grab's teaching
`narrower, and, consequently, more likely to be anticipatory.
`
`Substantial evidence supports the Board's determination that
`pending claim 1 of the ′519 patent is anticipated. Kennametal
`does not contest that, with the exception of combining
`ruthenium binders with PVD coatings, claim 5 of Grab
`expressly recites all the elements of pending claim 1. Claim
`5 of Grab recites using a binder consisting of one of five
`metals, one of which is ruthenium, together with a coating.
`Grab only discloses three coating methods, one of which is
`PVD. While CVD and MTCVD coatings are the coatings on
`which Grab focuses, it “also contemplate[d] that one or more
`layers of a coating scheme may be applied by physical vapor
`
`deposition.” Grab col.4 ll. 59–61. Because all the limitations
`of Kennametal's claim are specifically disclosed in Grab,
`the question for the purposes of anticipation is “whether the
`number of categories and components” disclosed in Grab is
`so large that the combination of ruthenium and PVD coatings
`“would not be immediately apparent to one of ordinary skill
`in the art.” Wrigley, 683 F.3d at 1361. The fact that a skilled
`artisan had various ways of formulating a coated cutting insert
`based on Grab's teaching does not help Kennametal, since
`many of these are within the scope of its claim. See id. at 1362
`n. 4 (“The fact that one of ordinary skill in the art might also
`have included other flavorings would not remove the resulting
`composition *1383 from the broad reach of [the challenged]
`claim 34.”).
`
`At the very least, Grab's express “contemplat[ion]” of PVD
`coatings is sufficient evidence that a reasonable mind could
`find that a person of skill in the art, reading Grab's claim 5,
`would immediately envisage applying a PVD coating. Grab
`col.4 l.59. Thus, substantial evidence supports the Board's
`conclusion that Grab effectively teaches 15 combinations, of
`which one anticipates pending claim 1.
`
`Though it is true that there is no evidence in Grab of “actual
`performance” of combining the ruthenium binder and PVD
`coatings, this is not required. Novo Nordisk Pharm., Inc. v.
`Bio–Tech. Gen. Corp., 424 F.3d 1347, 1355 (Fed.Cir.2005)
`(quoting Bristol–Myers Squibb Co. v. Ben Venue Labs., Inc.,
`246 F.3d 1368, 1379 (Fed.Cir.2001)). “Rather, anticipation
`only requires that those suggestions be enabled to one of skill
`in the art.” Id. (quoting Bristol–Myers Squibb, 246 F.3d at
`1379).
`
`[7]
` Accordingly, we affirm the Board's determination that
`pending claim 1 is anticipated. In its appeal brief, Kennametal
`did not argue that any of the claims depending from claim 1—
`namely pending claims 2–4, 9–18, 23, 24, 27–31, 35, 36, 45,
`46, 49, 50, 58, 83 or 85—are not anticipated for any reason
`not present for claim 1. As for independent claim 89, the
`only discussion of its independent patentability comes in a
`footnote, Op. Br. at 20 n. 9, which claims that it is “unclear”
`whether the Board intended to reject claim 89 as anticipated.
`Kennametal does not appear to make a substantive argument
`as to why claim 89 might not be anticipated even if claim
`1 is. In any event, “[a]rguments raised only in footnotes ...
`are waived.” Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d
`1280, 1294 (Fed.Cir.2012) (citing SmithKline Beecham Corp.
`v. Apotex Corp., 439 F.3d 1312, 1320 (Fed.Cir.2006)).
`Accordingly, we affirm the Board's determination that claims
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`Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (2015)
`114 U.S.P.Q.2d 1250
`
`2–4, 9–18, 23, 24, 27–31, 35, 36, 45, 46, 49, 50, 58, 83, 85 and
`89 are anticipated as well. See Sud–Chemie, Inc. v. Multisorb
`Techs., Inc., 554 F.3d 1001, 1009 (Fed.Cir.2009) (refusing to
`consider the independent validity of certain claims where the
`appellant did not separately argue that they were patentable).
`
`C. Obviousness
`
`1. Waiver
`
`As noted above, the Board found pending claims 2–14,
`16–31, 33–52, 56–59, 84–88, 90 and 93 obvious over a
`variety of prior art references. Initial Board Decision, at
`*9. Kennametal challenges these findings. However, before
`addressing the substance of these rejections we address the
`threshold question of whether Kennametal waived its right to
`challenge the Board's invalidity decisions for these claims.
`
`[8]
` In its brief to the Board appealing the Examiner's
`rejections, all of which were based on obviousness,
`Kennametal stated that “Patent Owner argues independent
`claims 1, 15, 83, 89, and 93 as a group. The respective
`dependent claims are not argued separately.” The Board noted
`this in its Initial Board Decision, at *5, *7.
`
`Ingersoll claims that because Kennametal failed to argue at
`the Board for the independent patentability of the remaining
`claims, we should not review the Board's decisions on these
`claims. Kennametal replies that, at the time of its briefing,
`all of the claims were rejected for obviousness. Kennametal
`argues that only when the Board instituted a new basis
`for rejection, rejecting some of the claims for anticipation,
`and correspondingly regrouping the claims, was there any
`reason Kennametal should have separately argued for the
`patentability of the remaining claims.
`
`*1384 [9]
` Kennametal is correct. “[A]rguments ... cannot
`be deemed waived if they were not previously required to
`have been made.” Hyatt v. Dudas, 551 F.3d 1307, 1314
`(Fed.Cir.2008). At the Board, Kennametal was facing a
`different set of rejections than it is now. Accordingly, we
`see no reason to foreclose Kennametal from independently
`challenging the obviousness determinations of these claims.
`
`[11]
`[10]
` “A patent may not be obtained ... if the
`
`differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole
`would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which
`said subject matter pertains.” 35 U.S.C. § 103(a) (2006).
`Obviousness is a question of law, based on underlying factual
`determinations, including: “the scope and content of the
`prior art”; “differences between the prior art and the claims
`at issue”; “the level of ordinary skill in the pertinent art”;
`and “[s]uch secondary considerations as commercial success,
`long felt but unsolved needs, failure of others, etc.” Graham
`v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d
`545 (1966), cited with approval in KSR Int'l Co. v. Teleflex
`Inc., 550 U.S. 398, 399, 127 S.Ct. 1727, 167 L.Ed.2d 705
`(2007). The Patent Office “bears the initial burden of showing
`a prima facie case of obviousness. When a prima facie case of
`obviousness is made, the burden then shifts to the applicant
`to come forward with evidence and/or argument supporting
`patentability.” Giannelli, 739 F.3d at 1379 (citations omitted).
`
`[12]
` Kennametal claims that the Board failed to establish
`a prima facie case of obviousness. Because of the problems
`relating to cobalt capping, Kennametal contends, it would
`not have been obvious to combine ruthenium binders with
`PVD coating. It cites the declarations of Dr. Gilles Festeau,
`one of the named inventors on the ′519 patent, and Dr. Craig
`Morton, who claim that prior to the ′519 patent it was difficult
`to manufacture PVD-coated ruthenium-featured cutting tools,
`at least partially because of cobalt capping effects. Dr.
`Morton claims that “[t]he inventors listed on the ′519 patent
`discovered” treatment conditions that unexpectedly allow for
`effective PVD-coating.
`
`Kennametal further claims that the Board erred in rejecting
`its evidence of secondary considerations. The ′519 patent
`compares the performance of various carbide cutting inserts.
`See ′519 patent Figure 2; id. col. 9 l. 33–col. 10 l. 23.
`According to Kennametal, the data demonstrate that the
`combination of PVD-coating and ruthenium binders achieves
`a “surprising and unexpected” tool lifetime. Kennametal
`claims that because the Board rejected the independent claims
`as anticipated by Grab, it never considered whether those
`claims would also be obvious. According to Kennametal, this
`is especially problematic for obviousness rejections of claims
`such as claim 33, which were not based on Grab at all.
`
`2. Analysis
`
`Ingersoll responds that the Examiner's Right of Appeal
`Notice (“Notice”) explained that both Grab and Leverenz
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`7
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`7
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`
`Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (2015)
`114 U.S.P.Q.2d 1250
`
`disclosed a finite number of possibilities, so that it would have
`been obvious to try ruthenium binders and PVD coatings,
`both of which were expressly taught. Ingersoll relies on
`the declarations of Dr. Dennis Quinto, who opined that the
`invention was obvious because there were a finite number
`of solutions, and Mr. Kenneth Brookes, who opined that the
`problem of cobalt capping and solutions to it have long been
`known, and these solutions are independent of the presence
`of ruthenium.
`
`*1385 Ingersoll argues that the Board correctly found that
`the unexpected results touted by Kennametal would have
`been present in the inserts made according to Grab and,
`therefore, lacked any nexus to a novel feature of the invention.
`Ingersoll further contends that by adopting the Notice, the
`Board adopted the Examiner's reasoned explanation that there
`was insufficient evidence to demonstrate that the unexpected
`results were due to the combination of PVD and ruthenium.
`
`As discussed earlier, infra at 1382–83, substantial evidence
`supports
`the Board's factual determination
`that Grab
`expressly taught combining a ruthenium binder with a PVD
`coating. While references that anticipate an invention can,
`theoretically, still not make it obvious, see Cohesive Techs.,
`Inc. v. Waters Corp., 543 F.3d 1351, 1364 n. 2 (Fed.Cir.2008),
`that is the rare case. Here, because a person of skill in the
`art reading Grab would readily envisage the combination of
`ruthenium binders and PVD coatings, it would have been
`obvious to that person that these two could be combined with
`a reasonable expectation of success. Substantial evidence
`supports the Board's finding that this express teaching was not
`significantly undermined by the problem of cobalt capping,
`especially in view of the similar teaching of Leverenz.
`
`Substantial evidence also supports the Board's determination
`that there was “factual[ ] support[ ]” for the Examiner's
`conclusion in the Notice that the limitations of claims 33,
`34, 37–44, 47, 48 and 84 were taught in Leverenz. Initial
`Board Decision, at *8 (citing Notice at 18–20). The Notice
`states that Leverenz teaches producing cutting inserts using
`elements “within Group VIII of the periodic table (elements
`having atomic numbers 26–28, 44–46, and 76–78),” and
`that ruthenium has atomic number 44. Notice at 19 (quoting
`Leverenz col. 5 ll. 46–48). The Notice also remarks that
`Leverenz teaches that the inserts can be coated using PVD.
`Id. (citing Leverenz col. 8 ll. 47–51). These teachings provide
`
`substantial evidence to support the Board's legal conclusion
`of obviousness.
`
`Kennametal's claim of unexpected results is unavailing.
`Kennametal cites to the ′519 patent that, allegedly, shows
`that the combination of ruthenium binder and PVD coating
`results in unexpected tool lifetimes. As discussed above, the
`precise combination of ruthenium binders and PVD coatings
`was taught in Grab. Accordingly, “the offered secondary
`consideration actually results from something other than what
`is both claimed and novel in the claim, [so] there is no nexus
`to the merits of the claimed invention.” In re Huai–Hung Kao,
`639 F.3d 1057, 1068 (Fed.Cir.2011). Thus, Kennametal's
`secondary consideration argument falls shor