Case: 17-1977.
`
`Document:64
`
`Page:1_
`
`Filed: 10/17/2018
`
`
`
`United States Court of Appeals
`|
`for the
`SHederal Circutt
`
`No. 2017-1977
`
`E.I. DUPONT DE NEMOURS & COMPANY,
`ARCHER DANIELS MIDLAND COMPANY,
`
`Lye
`
`SYNVINA C.V.,
`
`Appellants,
`
`Appellee.
`
`ON APPEAL FROM THE UNITED STATES PATENT AND TRADEMARKOFFICE,
`PATENT TRIAL AND APPEAL BOARDIN NO. IPR2015-01838
`(ADMINISTRATIVE PATENT JUDGES CHRISTOPHER G. PAULRAJ,
`TONI R. SCHEINER AND SHERIDAN K. SNEDDEN)
`
`COMBINED PETITION FOR PANEL REHEARING
`AND REHEARING EN BANC
`
`
`Paul M.Richter,Jr.
`PEPPER HAMILTON LLP
`The New York Times Building
`620 Eighth Avenue, 37th Floor
`New York, New York 10018
`(212) 808-7200
`— and —
`
`Mark A. Chapman
`HUNTON ANDREWSKURTH LLP
`200 Park Avenue
`New York, New York 10166
`(212) 309-1000
`
`Counselfor Appellee Synvina CLV.
`October 17, 2018
`
`
`
`Document:64
`
`Page:1_
`
`Filed: 10/17/2018
`
`
`
`United States Court of Appeals
`|
`for the
`SHederal Circutt
`
`No. 2017-1977
`
`E.I. DUPONT DE NEMOURS & COMPANY,
`ARCHER DANIELS MIDLAND COMPANY,
`
`Lye
`
`SYNVINA C.V.,
`
`Appellants,
`
`Appellee.
`
`ON APPEAL FROM THE UNITED STATES PATENT AND TRADEMARKOFFICE,
`PATENT TRIAL AND APPEAL BOARDIN NO. IPR2015-01838
`(ADMINISTRATIVE PATENT JUDGES CHRISTOPHER G. PAULRAJ,
`TONI R. SCHEINER AND SHERIDAN K. SNEDDEN)
`
`COMBINED PETITION FOR PANEL REHEARING
`AND REHEARING EN BANC
`
`
`Paul M.Richter,Jr.
`PEPPER HAMILTON LLP
`The New York Times Building
`620 Eighth Avenue, 37th Floor
`New York, New York 10018
`(212) 808-7200
`— and —
`
`Mark A. Chapman
`HUNTON ANDREWSKURTH LLP
`200 Park Avenue
`New York, New York 10166
`(212) 309-1000
`
`Counselfor Appellee Synvina CLV.
`October 17, 2018
`
`
`
`Case:17-1977
`
`Document:64
`
`Page:2_
`
`Filed: 10/17/2018
`
`FORM 9. Certificate of Interest
`
`Counselfor the:
`
`synvina C.V.
`
`Form 9
`Rev. 10/17
`
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`E.l.DuPontde Nemours
`=, SynvinaC.V.
`
`Case No. 17-1977
` CERTIFICATE OF INTEREST
`
`OC (petitioner) 0 (appellant) O (respondent) @ (appellee) O (amicus) UO (nameof party)
`
`
`Synvina C.V.
`certifies the following (use “None”if applicable; use extra sheets if necessary):
`
`
`
`
`2. Name of Real Party in interest
`3. Parent corporations and
`
`1. Full Nameof Party
`(Please only include anyreal party
`publicly held companies
`
`Represented by me
`in interest NOT identified in
`that own 10% or more of
`
`t
`Question 3) represented by me is:
`stock in the
`
`
`,
`Avantium N.V. and BASF SE
`
`
`
`
`
`4. The namesof all law firms and the partners or associates that appeared for the party or amicus now
`represented by mein the trial court or agency or are expected to appearin this court (and who have not
`or will not enter an appearancein this case) are:
`
` Kenyon & Kenyon LLP: Michael Glynn
`
`
`
`
`
`Case: 17-1977 Page:3_Filed: 10/17/2018Document:64
`
`
`
`5. The title and numberof any case knownto counsel to be pendingin this or any other court or agency
`that will directly affect or be directly affected by this court’s decision in the pending appeal. See Fed. Cir.
`R. 47. 4(a)(5) and 47.5(b). (The parties should attach continuation pages as necessary).
`
`cc. Counsel of Record tf t oa ; : . ut wt
`
`FORM9. Certificate of Interest
`
`Form 9
`Rev. 10/17
`
`None.
`
`10/17/2018
`Date
`
`Please Note: All questions must be answered
`
`/s/ Paul M. Richter, Jr.
`Signature of counsel
`Paul M. Richter, Jr.
`Printed nameof counsel
`
`.
`My
`- Reset Fields *.
`
`
`
`
`
`Case: 17-1977 Page:4_Filed: 10/17/2018Document:64
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`Il.
`
`Ill.
`
`RULE 35(b) STATEMENT 0... .ceecsssesssceecereesessseersetnecesenseeaeessereeeereveneense ]
`
`POINTS OF LAW OR FACT OVERLOOKED OR
`MISAPPREHENDED BY THE PANEL 1.000... ceceesccseeesteesecereeeeeeeseceeseneeseeanes 2
`
`ARGUMENTIN SUPPORT OF PANEL REHEARING AND
`REHEARING EN BANC Vu... ceccssccesscessesenceeeseessecesseeeeseeetaceeseeesaeeeaeeceeeeareraneeaes4
`
`A.
`
`The Panel Erroneously Failed to Analyze Whether Appellants
`Met the Requirements For Article [II Standing At the Time
`They Filed This Appeal ..0....... ccc ceccsssnceeeeesreeceesssneeecensneecesssaeessseeeesnes4
`
`B.—The Panel Erroneously Imposed a “Presumption of
`Obviousness” and Improperly Shifted the Burdento Patent
`Owner to Prove Non-ODViOUSNESS...........seeeseeeseeeeecetseeceseneeseceeeeasennees 9
`
`C.
`
`The Panel Incorrectly Concluded that Temperature and Oxygen
`Partial Pressure Are “Results-Effective Variables” and
`Overlooked The Substantial Evidence to the Contrary... eee 13
`
`
`
`Case: 17-1977
`
`Document: 64
`
`Page: 5
`
`Filed: 10/17/2018
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Consumer Watchdog v. Wis. Alumni Research Found.,
`753 F.3d 1258 (Fed. Cir, 2013) oc es eesesseceresseerseeeeeecnseneeesasessesssersesesessesesneenes 5
`
`Davis v. Fed. Election Comm’n,
`554 U.S. 724 (2008) ......ceccecscccsceesssecesseecssneccssascenaceeensaeeessesecssaseeseeeseneeeeeaeees 1, 2,5
`
`In re Aller,
`220 F.2d 454 (C.C.P.A. 1955) vee ceccsceeeceeeeteeneeeseesssscneerseessressaereessenessasseseeney 16
`
`In re Antonie,
`559 F.2d 618 (C.C.P.A. 1977) ...ccecccesseccsseeecssesseneeseenacseeseeseeseeeesieesenseeseesnersneteraes 16
`
`In re Applied Materials, Inc.,
`692 F.3d 1289 (Fed. Cir. 2012) oe eeesseeeeseessnceeeesseesesseessssesssaesersaeeevsesenss 3,14
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule PatentLitig.,
`676 F.3d 1063 (Fed. Cir. 2012) eee eeessesssertesesseessessersevsessorenssaseenses 1,3, 11,12
`
`In re Geisler,
`116 F.3d 1465 (Fed. Cir. 1997)... cceeesesecsssseeseccecnsaeeersceeessnesseeesensaeeossesesesereas 12
`
`In re Magnum Oil Tools Int'l, Lid.,
`829 F.3d 1364 (Fed. Cir. 2016) oo. eee cesenscereecsessesesseeeeresesreneensees 1,2, 10,11
`
`In re Woodruff,
`919 F.2d 1575 (Fed. Cir. 1990) 0... ee eessneceresneceeeresseeerersseeecensassevssssaseeseeseerans 12
`
`Iron Grip Barbell Co, v. USA Sports Inc.,
`392 F.3d 1317 (Fed. Cir. 2004) oo. ececseesecsscscessseseseescsersevsecsessessesessesseaeens 12
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 39K (2007) .ecssssessscccsscseccssesesseeseessesceneeeseeeeneecesseesnereeeersesennees 3,4, 14,17
`
`Lang v. Pacific Marine & Supply Co.,
`895 F.2d 761 (Fed. Cir, 1990) oe eee eeeseessceseeeseesseceseessscssesssssesesssersessssesesereeses7
`
`Lujan v. Defenders of Wildlife,
`504 U.S. 555 (1992) oe ceeeeseceeceeeeeseecnsesseeeereesseeersneseseecsusconsasesssersaseueseaesenes 6, 8
`
`i
`
`
`
`
`
`Case: 17-1977. Page:6_Filed: 10/17/2018Document:64
`
`
`
`MatthewsInt’l Corp. v. Biosafe Eng., LLC,
`695 F.3d 1322 (Fed. Cir. 2012) oo... cee eeeeessccesseesseeeseceetaecsaeecsesesseessneeseneesaeeneees 5,9
`
`Microsoft Corp. v. DataTern, Inc.,
`755 F.3d 899 (Fed. Cir, 2014) oo... cee eesccssesseceneeesssecsaceeseccsseecneesaeecseereeseeseteenseneees 5
`
`O’Sheav. Littleton,
`414 U.S. 488 (1974) oo. cecceccccssecscessseessessscesseecseeeseecssesseeecsssesensesseceaaaseaeecsesecteeseeeaes 7
`
`Prasco, LLC v. Medicis Pharm. Corp.,
`537 F.3d 1329 (Fed. Cir. 2008) 00... cesceesscssccsseetseecessecseeceescnseeseesseeseaeeeeeeneeesees 6
`
`Sierra Applied Sciences, Inc. v. Advanced Energy Indus., Inc.,
`363 F.3d 1361 (Fed. Cir, 2004) oo... ceescesecesseesseecserecneeceaeecsacesaeeceacecseeeesereasenaees 7
`
`U.S. Parole Comm’n v. Geraghty,
`445 U.S. 388 (L980) oo. eessessesstecssseesecessseeseceseecesaeesseessasesseerssessaeeesseesesneeeesseesae 5
`
`Whitmore v. Arkansas,
`A495 U.S. 149 (1990) occ eecsecsessseessessecesssecnsceeseecsseeecesesessaeeseeersaneseeceseneees 7, 8,9
`
`Statutes
`
`35 U.S.C. § 316(€) cee ecscccsscessececesrestectseeceseeseesenecesaeccaueesseseeeeseeeensaeceaeeees 2, 10, 11
`
`Other Authorities
`
`Definition of “Imminent”
`Concise Oxford Dictionary (10th ed.) (2002) at 709... eeceeeseeceneeeeeeteeeneeeens 7
`Webster’s New World Collegiate Dictionary (4th ed.) (2007) at 713.0... 7
`
`ili
`
`
`
`Case: 17-1977
`
`Document:64
`
`Page:7
`
`Filed: 10/17/2018
`
`I.
`
`RULE 35(b) STATEMENT
`
`Based on my professional judgment, I believe the Panel decision is contrary
`
`to the following precedents of the Supreme Court or this Court: Davis v. Fed.
`
`Election Comm’n, 554 U.S. 724 (2008);.Jn re Magnum Oil Tools Int’l, Ltd., 829
`
`F.3d 1364 (Fed. Cir. 2016); Jn re Cyclobenzaprine Hydrochloride Extended-
`
`Release Capsule Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012).
`
`Based on myprofessional judgment, I believe this appeal requires answers
`
`to the following precedent-setting questions of exceptional importance:
`
`1) Must a petitioner in an IPR meet the requirements for Article HI standing
`
`at the timeit files its appeal in this Court from the final decision of the PTAB?
`
`2) Wherethe priorart in an IPR discloses ranges that overlap with claimed
`
`ranges, can and must the PTAB impose a “presumption of obviousness”that shifts
`
`the burden of production to the patent owner to show that the claims are non-
`
`obvious?
`
`3) Wherevariables in the prior art are knownto affect the results of a
`
`claimed process, but they do so in an unpredictable way in the prior art, must those
`
`variables be deemed as recognized “results-effective variables,” such that the
`
`discovery of their optimum values necessarily would have been obvious?
`
`
`
`Case: 17-1977
`
`Document:64
`
`Page:8
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`Filed: 10/17/2018
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`II.
`
`POINTS OF LAW OR FACT OVERLOOKED
`OR MISAPPREHENDED BY THE PANEL
`
`First, the Panel overlooked or misapprehended that Appellants DuPont and
`
`ADM(collectively ““DuPont’’) had to meet the requirements for Article III standing |
`whenthis appeal wasfiled on May 2, 2017. See Davis v. Fed. Election Comm'n,
`
`554 U.S. 724, 734 (2008). The Panel erroneously analyzed whether DuPont
`
`currently meets the standing requirements andrelied on events that occurred after
`
`DuPontfiled its appeal, namely, that “DuPont currently operates a plant capable of
`
`infringing the ’921 patent” and that Appellee Synvina (“Synvina’) “refus[ed] to
`grant DuPont a covenantnotto sue” (which DuPont requested monthsafterit filed
`
`its appeal). Decision at 13-14. When standing is evaluated as of May 2, 2017, any
`
`supposed “injury” to DuPont was not “imminent” because the earliest DuPont
`
`could have carried out a potentially infringing process at its plant would have been
`
`one yearlater, after it opened on April 30, 2018.
`
`Second, the Panel overlooked that the burden of proving invalidity in an IPR
`
`always remainsonthe petitioner. Congress established this requirementin 35
`
`U.S.C. § 316(e), which the Panel did not address. This Court also previously held
`
`that “no burden shifts from the patent challenger to the patentee” in an IPR. /n re
`
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). The Panel’s
`“procedural scheme” improperly shifted the burden to synvina to prove non-
`
`obviousness, by imposing a presumption of obviousness based on overlapping
`
`2
`
`
`
`Case: 17-1977
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`Document:64
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`Page:9
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`Filed: 10/17/2018
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`rangesin the priorart, and then shifting the burden of production to Synvinato
`
`rebut that presumption.
`
`Even if the Panel’s “procedural scheme” for overlapping range cases is not
`
`precluded in an IPR,there is nothing requiring its use. This Court previously
`
`criticized using that procedural schemeinlitigation, which is like anIPR. See In
`
`re Cyclobenzaprine Hydrochloride Extended-Release Capsule PatentLitig., 676
`
`F.3d 1063, 1080 n.7 (Fed. Cir. 2012). The PTABin an IPR should have the same
`
`flexibility that a district court does to decide not to impose the Panel’s “procedural
`
`scheme.”
`
`Third, the Panel erroneously held that temperature and oxygenpartial
`
`pressure (“PO”) are “results-effective variables” if they were known to have any
`
`effect on results of the claimed process, regardless of other evidence. This Court
`
`previously explained that “evidence that [multiple results-effective] variables
`
`interacted in an unpredictable or unexpected way could render the combination
`
`nonobvious.” Jn re Applied Materials, Inc. 692 F.3d 1289, 1298 (Fed. Cir. 2012)
`
`(citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)). The Panel
`
`improperly overlooked extensive factual findings by the PTAB showing non-
`
`obviousnessof the ’921 patent claims, including that the combined effects of
`
`temperature and PO? were shownto be unpredictablein the prior art. Instead, the
`
`Panel relied solely on its conclusion that these variables were “results-effective.”
`
`
`
`Case: 17-1977.
`
`Document:64
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`Page: 10
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`Filed: 10/17/2018
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`Indeed, the Panel’s “procedural scheme” for overlapping range cases andits
`
`“results-effective variable” analysis are the sort of rigid obviousnesstests rejected
`
`by the Supreme Court, which instead requires a flexible obviousnessanalysis. See
`
`KSR, 550 USS. at 415, 419-20.
`
`Wt. ARGUMENT IN SUPPORT OF PANEL REHEARING
`AND REHEARING EN BANC
`
`Synvinarespectfully requests rehearing of the Panel decision and rehearing
`
`en banc, including of the threshold question of DuPont’s standing. No such
`
`standing exists and the appeal should be dismissed, but if not, the Panel’s decision
`
`should be set aside and the PTAB’s decision affirmed.
`
`A.
`
`The Panel Erroneously Failed to Analyze Whether Appellants
`Met the Requirements For Article III Standing At the Time They
`Filed This Appeal
`
`This appeal should be reheard by the Panel and en banc to reconsider
`
`whether DuPont has Article III standing to appeal the PTAB’s decision, in view of
`
`Supreme Court precedentthat requires standing to exist at the time the appeal was
`
`filed, and to clarify the standard for determining standing to appeal a PTAB
`
`decision. The Panel erroneously analyzed only whether DuPont meets the standing
`
`requirements now,as opposed to whether DuPont met the standing requirements
`
`whenit filed its appeal on May 2, 2017. When standing is evaluated as of
`
`DuPont’s appeal date, any supposed “injury” was not “imminent” becauseits plant
`
`would not open until a year later, on April 30, 2018.
`
`4
`
`
`
`Case: 17-1977
`
`Document:64
`
`Page:11
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`Filed: 10/17/2018
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`Supreme Court precedent requires that a party must meet the requirements
`
`for Article III standing at the time it files suit. See Davis v. Fed. Election Comm’n,
`
`554 U.S. 724, 734 (2008) (“[T]he standing inquiry remains focused on whetherthe
`
`party invoking jurisdiction had the requisite stake in the outcome whenthesuit was
`
`_filed.”) (citation omitted); id. at 732-33; U.S. Parole Comm’n v. Geraghty, 445
`
`U.S. 388, 411 (1980) (“[A]n actual case or controversy ... ‘must be extantatall
`
`3939
`stages of review.””) (citations omitted).
`
`This Court has also acknowledgedthat Article III standing must exist at the
`
`time of filing an appeal from a PTO decision. See Consumer Watchdogv. Wis.
`
`Alumni Research Found. , 753 F.3d 1258, 1261 (Fed. Cir. 2013) (“once a party
`
`seeks review in a federal court [of an agency’s decision], ‘the constitutional
`
`999
`requirementthat it have standing kicks in.””) (citation omitted).
`
`The Panel was required to analyze whether DuPont had standing whenit
`
`appealed on May2, 2017, but instead erroneously analyzed whether DuPont
`
`currently meets the standing requirements andrelied on events that occurred after
`
`' Similarly, an Article III controversy must exist when adeclaratory judgment
`action is filed, and later eventsare irrelevant. See Matthews Int'l Carp. v. Biosafe
`Eng., LLC, 695 F.3d 1322, 1328 (Fed. Cir. 2012) (“[AJn Article III case or
`controversy [must] exist[] at the time the claim for declaratoryrelief is filed.”);
`Microsoft Corp. v. DataTern, Inc., 755 F.3d 899, 906 (Fed. Cir. 2014) (“[P]ost-
`complaint facts cannot create jurisdiction where none existed at the time of
`filing.’’).
`
`
`
`Case: 17-1977
`
`Document:64
`
`Page:12
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`Filed: 10/17/2018
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`this appeal was filed. The Panel concluded that a “controversy exists here because
`
`DuPontcurrently operates a plant capable of infringing the °921 patent,” based on
`
`DuPont’s representation that “the plant opened on April 30, 2018 and is currently
`
`in operation.” Decision at 13-14 (emphasis added). The Panelalso relied on
`
`Synvina’s “refusal to grant DuPont a covenant not to sue”’—-which DuPontfirst
`
`requested on October 20, 2017 (see Appx4379-4380)—as “further confirm[ing]”’
`
`that DuPonthas standing.” Decision at 14.°
`
`The Panel decision is inconsistent with Supreme Court precedent requiring
`
`standing to exist at the time offiling the appeal. DuPont did not meet the standing
`requirements whenit filed this appeal, because any prospective “injury” to DuPont
`
`at that time wasnot “imminent”as required, but instead merely “conjectural or
`
`hypothetical.” See Lujany. Defenders of Wildlife, 504 U.S. 555, 560 (1992);
`
`? Even if Synvina’s refusal to grant a covenant could be considered, it would not
`create a justiciable controversy because there have been no “affirmative acts” by
`Synvinarelated to enforcementof the ’921 patent against DuPont. See Prasco,
`LLC v. Medicis Pharm. Corp., 537 F.3d 1329, 1341 (Fed. Cir. 2008) (declaratory
`judgment defendant’s failure to grant a covenant not to sue “not sufficient to
`create an actual controversy — someaffirmative actions by the defendantwill
`also generally be necessary”).
`
`* The Panel also erroneously cited Synvina’s copying allegation in the IPR as
`“further confirm[ing]” standing. Decision at 14. The Panel overlooked or
`misapprehendedthat, as Synvina explained, the experiment in the ADM patent
`application (that Synvina contended was copied) occurred before the ’921 patent
`issued and therefore cannot have evenpotentially infringed. Synvina Sur-Reply
`at 2.
`
`
`
`Case: 17-1977.
`
`Document:64
`
`Page: 13
`
`Filed: 10/17/2018
`
`Whitmore v. Arkansas, 495 U.S. 149, 158 (1990) (“Allegations ofpossible future
`
`injury do notsatisfy the requirements of Art. III. A threatened injury must be
`
`‘certainly impending’to constitute injury in fact.”’”); O’Sheav. Littleton, 414 US.
`
`488, 494 (1974) (plaintiff must be “immediately in danger of sustaining some
`
`direct injury’’).
`
`When DuPontappealed on May 2, 2017, its demonstration plant would not
`
`be operational until one year later, on April 30, 2018. Decision at 13. Thus, when
`
`DuPont appealed,it wasstill one year away from being able to carry out a process
`
`at the plant that could potentially infringe the °921 patent. One yearis not
`
`“imminent.” “Imminent” means“about to happen’and“likely to happen without
`delay.”> In the declaratory judgmentcontext, this Court has found no controversy
`
`of sufficient immediacy whenthe potentially infringing product would not be
`
`ready until one year or even nine monthsafter the complaint. See Sierra Applied
`
`Sciences, Inc. v. Advanced Energy Indus., Inc., 363 F.3d 1361, 1376 (Fed. Cir.
`
`2004) (no controversy of sufficient immediacy where prototype “was built and
`
`operational .
`
`.
`
`. about a year after the complaint”); Lang v. Pacific Marine &
`
`Supply Co., 895 F.2d 761, 765 (Fed. Cir. 1990) (same where product would not be
`
`finished until at least 9 months after complaint).
`
`4 Concise Oxford Dictionary (10th ed.) (2002) at 709.
`
`> Webster’s New World Collegiate Dictionary (4th ed.) (2007) at 713.
`
`
`
`Case: 17-1977
`
`Document: 64
`
`Page:14
`
`Filed: 10/17/2018
`
`Although DuPont announcedits plan in January 2016 to build the plant, the
`
`announcementdid not specify the process conditions that wouldbeused, including
`
`the temperature and POranges, which may not even have been knownthen.
`
`Appx4535, Appx4540-4541, Appx4574-4575, Appx4802, Appx4807, Appx4897—
`
`4898. DuPontfirst provided information about the ranges that might be usedin the
`
`plant in its reply brief declarations submitted in January 2018, eight monthsafter
`
`filing its appeal. Appx4447-4448, Appx4541, Appx4808. There is no evidence
`
`that, as of May 2, 2017, either of these ranges had been fixed to thoselater
`
`specified in the declarations. At that time, the potential for infringement was not
`
`“imminent”or “certainly impending,” but instead was merely “conjectural or
`
`hypothetical.” See Lujan, 504 US. at 560; Whitmore, 495 U.S. at 155, 158.
`
`Even if DuPont had fixed these process ranges as of May 2, 2017, the
`
`potential for infringementstill was merely “conjectural or hypothetical” because
`
`the declarations only state that the plant “is designed to operate within” rangesthat
`
`are broader than the claimed ranges of 140 to 200 °C and1 to 10 bar, i.e., “from
`
`120 to 250 °C, moreparticularly from 170 to 190 °C,” and “from 0.02 to 100 bar,
`
`moreparticularly from 0.2 to 21 bar.” Appx4447-4448, Appx4541, Appx4808.
`
`The declarations do vot state that the plant will operate within the claimed ranges.
`
`Thus, any potential infringementstill would have been “conjectural or
`
`hypothetical” at the time DuPontfiled its appeal, and even as oftoday. See Lujan,
`
`
`
`Case: 17-1977
`
`Document:64
`
`Page: 15
`
`Filed: 10/17/2018
`
`504 US. at 560; Whitmore, 495 U.S. at 155, 158; see also Matthews, 695 F.3d at
`
`1329 (dispute “too remote and speculative” where equipmentsold by DJ plaintiff
`could be operated using temperature and pressure parametersthat did not infringe
`
`the method patents and plaintiff alleged no facts regarding whether its customers
`
`plan to operate equipment “in a mannerthat could even arguably infringe”).
`The en bane Court should rehear this appeal to clarify that standing to appeal
`
`a PTAB decision mustexist at the time the appealis filed, and that later events are
`
`irrelevant. The Panel’s precedential decision is inconsistent with Supreme Court
`precedent. It should be corrected to provide guidance in this area, as has been done
`
`in the declaratory judgmentcontext.
`
`B.
`
`The Panel Erroneously Imposed a “Presumption of Obviousness”
`and Improperly Shifted the Burden to Patent Owner to Prove
`Non-Obviousness
`
`The Panel improperly used a “procedural schemefor overlapping range
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`cases” that: (1) imposed a “presumption of obviousness” because the claimed
`
`temperature and PO2 ranges overlap with prior art ranges; and (2) shifted the
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`burden of production to Synvina to prove non-obviousnessthrough unexpected
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`results, a teaching awayor other evidence. Decision at 17-18. According to the
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`Panel, this scheme nevershifts the burden of persuasion to the patentee, but instead
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`just shifts the burden of production (since patent owner could do nothing but hold
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`the petitioner to its burden of persuasion). Jd. at 20.
`
`
`
`Case: 17-1977
`
`Document:64
`
`Page: 16
`
`Filed: 10/17/2018
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`Yet, in practice this procedural schemeabsolutely places an improper burden
`
`on the patent owner to prove non-obviousnessafter the opposite presumptionis
`
`imposed. This appeal should be reheard by the Panel and en bancto reconsider the
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`propriety of using this schemein an IPR.
`
`The Panelfailed to address 35 U.S.C. § 316(e), which provides that in an
`
`IPR,“the petitioner shall have the burden of proving a proposition of
`unpatentability by a preponderance ofthe evidence.” Congress did not establish
`
`any “procedural scheme”that imposes a presumption of obviousnessorshifts the
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`burden ofproduction to the patent ownerin an IPR. Thestatute is clear that the
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`burden of proof remains with the petitionerat all times. Onthis basis alone, the
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`Panel decision was erroneousand contraryto statute.
`
`The Panel decision also conflicts with this Court’s decision in Magnum Oil.
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`There, the petitioner did not explain why a person ofordinary skill in the art
`
`(“POSA”) would have been motivated to combineprior art references. The PTAB
`
`found the claims obvious and required the patent ownerto rebut the assertion that
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`such a motivation existed, “withoutfirst requiring [the petitioner] to provide
`
`evidence to support its assertion.” Magnum Oil, 829 F.3d at 1377-78. This Court
`
`reversed because the “the Board improperly shifted the burden to [patent owner] to
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`disprove obviousness.” Jd. at 1378. The court also rejected the PTO’s argument
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`that the burden of producing evidence of non-obviousnessshifts to the patent
`
`10
`
`
`
`Case: 17-1977
`
`Document:64
`
`Page:17
`
`Filed: 10/17/2018
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`owneruponinstitution of the IPR, holding that “the petitioner continuesto bear the
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`burden of proving unpatentability after institution,” including “at trial.” Jd. at 1377
`
`(citing 35 U.S.C. § 316(e)).
`
`Magnum Oil certainly is applicable to overlapping range cases, in holding
`
`that “[w]here .
`
`.
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`. the only question presented is whether due consideration of the
`
`four Graham factors renders. .
`
`. claims obvious, no burden [of persuasion or
`
`production] shifts from the patent challenger to the patentee.” Magnum Oil, 829
`
`F.3d at 1376. Here, the PTAB properly determined there was no “presumption of
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`obviousness”or burden shifting to Synvina under Magnum Oil and § 316(e),
`
`despite the overlapping ranges, and then properly consideredall four Graham
`
`(+9
`factors to find non-obviousness. The Panel’s “procedural scheme” improperly
`
`short-circuited the Graham analysis by presuming obviousnessfirst, and then
`
`requiring Synvina to rebut that presumption.
`
`This Court sharply criticized the use of such a schemein patent litigation in
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`Cyclobenzaprine, 676 F.3d at 1077-78, explaining that: “the Supreme Court has
`
`never imposed nor even contemplated a formal burden-shifting framework in the
`
`patentlitigation context(, but] has, instead, required that all evidence relevant to
`
`obviousness or nonobviousness. .
`
`. be considered collectively.” The court further
`
`stated that “opinions of this court should not be read to require a burden-shifting
`
`framework in derogation of Stratoflex’s directive that objective evidence be
`
`11
`
`
`
`Case: 17-1977
`
`Document:64
`
`Page: 18
`
`Filed: 10/17/2018
`
`considered before making an obviousness determinationandin disregard of where
`
`the burdens ofproof and persuasion are properly placed in a district court litigation
`
`[because that] is inconsistent with Supreme Court case law.” Jd. at 1079-80.
`
`The Cyclobenzaprine Court observedthat the “two-part, burden shifting
`
`inquiry” in overlapping range cases appears to have been imported wrongly into
`
`district court cases, such as /ron Grip Barbell Co. v. USA Sports Inc., 392 F.3d
`
`1317 (Fed. Cir. 2004), from patent prosecution appeals such as Jn re Geisler, 116
`
`F.3d 1465 (Fed. Cir. 1997) and In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990).
`
`See id. at 1080 n. 7. Notably, the Panel relied on these three decisionsforits
`
`“procedural scheme”(see Decision at 16-18), even though the Cyclobenzaprine
`
`Court stated that “Courts should not apply the burden burden-shifting framework
`
`for patentability appeals to invalidity determinations appealed fromadistrict court
`
`... because the prosecution andlitigation contexts are distinct.” Jd.
`
`The Cyclobenzaprine Court explained that “a burden-shifting framework
`
`makessense in the prosecution context[, where] [t]he prima facie case furnishes a
`
`‘procedural tool allocating the burdens of going forward as between examiner and
`
`applicant.’” Jd. (citation omitted). However,“in litigation, all relevant evidenceis
`
`presented to the fact finder in a single proceeding,” and there “is simply no
`
`practical need to impose a burden-shifting frameworkin litigation.” Jd. This logic
`
`applies as well to an IPR, which is much more akinto litigation than prosecution,
`
`
`
`Case: 17-1977
`
`Document:64
`
`Page:19
`
`Filed: 10/17/2018
`
`particularly becauseall relevant evidence is presented to the PTABinasingle
`
`proceeding(justlike in district court), in contrast to the back and forth process of
`
`prosecution.
`
`There likewiseis “no practical need” for presumptions and burdenshifting
`
`in anIPR. Even if the Panel’s “procedural scheme”for overlapping rangecasesis
`
`permitted in an IPR,it should not be mandatory as the Panel erroneously held. The
`
`Panel erred in requiring the PTAB to adoptits “procedural scheme” for IPRs, and
`
`that requirement should be reviewed en bancandrejected.
`
`C.
`
`The Panel Incorrectly Concluded that Temperature and Oxygen
`Partial Pressure Are “Results-Effective Variables” and
`Overlooked The Substantial Evidence to the Contrary
`
`The Panel held that: (1) if it was recognizedin the art that the claimed
`
`oxidation reaction was affected by reaction temperature and PO2, regardless of any
`
`other evidence of non-obviousness, then those variables are “results-effective” and
`
`that provides the motivation to optimize them to yield the claimed process; and (2)
`
`the PTAB applied the wrong legal standard by requiring DuPontto provethat the
`
`disclosures in the prior art “necessarily required” the variable to be within the
`
`claimed range, or that the variables “predictably affected FDCA yields.” Decision
`
`at 21-22, 25.
`
`The PTAB applied the correct standard to find non-obviousness. This
`
`appeal should be reheard by the Panel and en bancto reconsiderthe “results-
`
`13
`
`
`
`Case: 17-1977.
`
`Document:64
`
`Page: 20
`
`Filed: 10/17/2018
`
`effective variable” test because the Panel: (1) misapprehendedthatvariables
`
`interacting unpredictably, like temperature and POo, are evidence of non-
`
`obviousness; and (2) overlooked the substantial evidence showing the
`
`unpredictability of these variables here.
`
`This Court has acknowledged that where multiple results-effective variables
`
`are combined, “evidence that the variables interacted in an unpredictable or
`
`unexpected way could render the combination nonobvious.” Applied Materials,
`
`9°
`
`692 F.3d at 1298 (emphasis added) (citing KSR, 550 U.S. at 421). Here, the PTAB
`
`found, after reviewingthe prior art and expert evidence, that temperature and PO?
`
`had unpredictable effects on the results of the prior art processes, and that finding
`
`is supported by substantial evidence. That unpredictability supports the PTAB’s
`
`determinationthat those variables are not results-effective and that the 921
`
`patent’s claims are non-obvious. Rather than review the PTAB’s findings under
`
`the substantial evidence standard, the Panel erroneously relied solely on its own
`
`finding that temperature and PO? are results-effective variables because they were
`
`known to have some effect on the claimed process, and that this would motivate a
`
`POSAto optimize them.
`
`The PTAB reviewedall ofthe evidence regarding the teachingsofthe prior
`
`art and the effects of varying temperature and POd, including expert evidence, and
`
`then properly found the claims non-obvious because there was no motivation to
`
`14
`
`
`
`Case: 17-1977
`
`Document:64
`
`Page: 21
`
`Filed: 10/17/2018
`
`optimize. Appx017-025; Appx3893-3897. The PTAB found: (a) the prior art
`
`demonstrates that the effect of varying temperature on results (FDCAyield) of the
`
`prior art processcs is unpredictable (Appx22-24), as increasing temperature in the
`
`examples of the ’732 publication resulted in increased, decreased,orlittle effect on
`
`FDCAyield (Appx3866-3873; Appx3893-3895; Appx3617); (b) a POSA would
`
`not have been motivated to lower the oxygen partial pressure of the 732
`publication’s process (which, at 14.5 bar, was well abovethe claimed range)
`
`because reducing oxygen would have been expected to reduce FDCAyield
`
`(Appx021; Appx3897); (3) there is nothing in the ’732 publication or othercited
`
`art to suggest that adjusting reaction temperature and PO? could havepredictably
`
`affected FDCA yields (Appx019; Appx3864-3873); and (4) the secondary
`
`Partenheimer reference underscores the unpredictability of temperature on FDCA
`
`yields (Appx024; Appx3873-3877).
`The Panel cited statements as supposedly showing that varying PO2 was
`
`knownin the prior art to affect the claimed oxidation reactions, making it a
`
`“results-effective variable.” Decision at 22. The Panel misapprehended the law
`
`and those statements, which are actually evidence of non-obviousness and show
`
`why PO:is not results-effective because its effect is unpredictable. The increased
`
`PO:of the 732 publication (14.5 bar) as comparedto the claims(1 to 10 bar)
`
`results in a lower yield for FDCA (maximum 58.8%) than the ’921 patent
`
`15
`
`
`
`Case: 17-1977
`
`Document:64
`
`Page: 22
`
`Filed: 10/17/2018
`
`(maximum 78.08%). Appx3903. A POSA would not expect that lowering the PO2
`to the claimed range would increase yield because oxygen is a reactant.
`Appx3897; Appx3854. That was unpredictable and supports the PTAB’sfinding
`
`that PO2is not a results-effective variable.
`
`The Panel’s overlooking of the PTAB’s extensive evidentiary findings also
`
`‘led it to sweep claim 2 into the same, flawed analysis as claim 1. Claim 2 is even
`
`further removed from the combinedprior art because the process of RU °177is
`
`limited to oxidizing 5-MF asthe starting material, which is not recited in claim 2’s
`
`feed stream. Claim 2 is separately patentable from claim 1 and would not have
`
`been obviousfor this additional reason over the asserted combination. Appx3897-
`
`3899; Appx3928. That further distinction was improperly overlooked by the
`
`Panel’s summary treatmentofall claims based onits rigid “results-effective
`
`variable” analysis.
`
`The Panel noted only one, narrow exception to the general principle of Jn re
`
`Aller, 220 F.2d 454 (C.C.P.A. 1955) that the discovery of an optimum value of a
`
`variable in a knownprocessis normally obvious, namely, where the “parameter
`
`optimized was not recognized to be a result-effective variable.” In re Antonie, 559
`
`F.2d 618, 620 (C.C.P.A. 1977). The Panel acknowledgedthatit “located no case
`wherethis court relied on a variable not being result-effective in an obviousness
`
`analysis.” Decision at 21. That no case has everfit the narrow exception
`
`16
`
`
`
`
`
`Case: 17-1977 Page: 23_Filed: 10/17/2018Document:64
`
`
`
`underscores the improperrigidity of the Panel’s “results-effective variable”test,
`
`which runs afoul of the flexible obviousness inquiry mandated by KSR, 550 USS. at
`
`415, 419-20.
`
`This appeal should be reheard en banc to clarify that where a variable has
`
`someeffect on a process’s results, but the effect is unpredictable (as the PTAB
`
`found here), that is evidence of non-obviousnessand the variable can be found not
`
`to be a “results-effective variable.”
`
`Dated: October 17, 2018
`
`Respectfully submitted,
`
`/s/
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