On June 5, 2015, the Board issued a final written decision in Reg Synthetic Fuels Llc, V.Neste Oil Oyj, IPR2014-00192, rejecting all challenged claims of U.S. Patent No. 8,278,492, but confirming the patentability of substitute claims submitted by Patent Owner.
The ‘492 patent is directed to a process for the manufacture of biodiesel fuel comprised of hydrocarbons from bio oils and fats. The ’492 patent discloses a two-step process in which a feed stream of biological origin, diluted with a hydrocarbon, is first hydrodeoxygenated, and then isomerized. According to the ’492 patent, deoxygenation via hydrogenolysis requires a large amount of hydrogen, and releases a significant amount of heat that must be dissipated. To avoid these problems, the patented process “spikes” the feed stream with sulfur to favor the decarboxylation/decarbonylation reaction pathways.
The Petitioner challenged all claims 1-24 as obvious over three primary prior art references, and two secondary references, asserting that all the elements and steps of the claimed process are disclosed in the prior art. The Board agreed with Petitioner’s argument that all the elements were disclosed in the cited art, but analyzed the patentability with respect to whether there was a reason to combine the references. The Patent Owner argued that the cited references teach away from the invention because they do not teach “spiking” the two-step process with sulfur. The Board did not accept the teaching away argument presented by Patent Owner, declared there was reason to combine the references, and canceled patent claims 1-24 unpatentable as obvious.
Next, the Board considered the Patent Owner’s Motion to Amend and add substitute claims 25-28. Claim 25 is an independent claim importing limitations from some of the dependent claims, but additionally specifying the amount of sulfur spiked into the process—a feature that was not previously recited in any claims. The Petitioner argued the Motion should be denied because Patent Owner did not show patentability over all art known to Patent Owner. The Board held that Patent Owner is not required to prove that the claims are patentable over every item of prior art, just over the prior art of record, and must show it was the first to invent the novel feature (Idle Free v. Bergstrom, IPR2012-00027).
Petitioner asserted three additional references against the new claims, but the Board considered 1) that the Patent Owner was not required to address these references, and 2) that these new references actually contributed to Patent Owner’s teaching away argument, supporting the assertion that the newly inserted range of sulfur content was not disclosed or suggested in the cited art. With respect to the range of sulfur inserted in the claim, the Board noted that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation,” citing In re Aller, 220 F.2d 454, 456 (CCPA 1955), but countered this with the holding in In re Antonie, 559 F.2d 618, 620 (CCPA 1977), that “[I]n order for routine optimization of reaction conditions to be considered obvious, however, the art must first recognize that the conditions are result-effective variables.”
Weighing all the evidence submitted by both parties in the present case, the Board held that substitute independent claim 25 and dependent claims 26-28 recited non-obvious ranges of sulfur in the process compared to those in the art of record, and held that the Patent Owner need not argue against all art known to the Patent Owner but not of record. This decision demonstrates that Motions to Amend can be successful if the newly added limitations can be shown to be patentable over the art of record and what was known to one of ordinary skill, and Patent Owner need not try and argue patentability over all known prior art references.