In EmeraChem Holdings, LLC v. Volkswagen Group of American, Inc. (Fed. Cir. June 15, 2017), the Federal Circuit determined that the Patent Owner’s uncorroborated declaration was insufficient to show that asserted prior art under pre-AIA 35 U.S.C. § 102(e) represented the work of the same inventive entity as the challenged claims, and with respect to certain claims the PTAB failed to provide sufficient notice and opportunity to respond. Accordingly, the court affirmed in part and vacated in part the PTAB’s decision that the challenged claims were unpatentable for obviousness.
EmeraChem’s U.S. Patent No. 5,599,758 claims methods for regenerating a devitalized catalyst/absorber that absorbed and oxidized nitrates and nitrites in engine exhaust gases. Volkswagen filed an IPR petition challenging several claims of the ’758 patent on four grounds, three anticipation grounds, and a fourth ground based on obviousness over various combinations of three references: Campbell ’558, Saito, and Stiles. The PTAB instituted review on all four grounds, and in its final written decision determined that the challenged claims were unpatentable for obviousness, under the fourth ground.
Uncorroborated Inventor Declaration Not Sufficient to Avoid § 102(e) Prior Art
Campbell ’558 was asserted in the IPR petition as prior art under § 102(e). Campbell ’558 is a patent that names inventors that overlap with, but are not identical to the inventors named in the challenged ’758 patent. In particular, the inventors of the ’758 patent are Guth and Campbell, however the named inventors of Campbell ’558 include Danziger and Padron, in addition to Guth and Campbell. Accordingly, Campbell ’558 is a patent “by another” inventive entity, which may qualify as prior art under § 102(e):
A person shall be entitled to a patent unless—(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent . . . .
35 U.S.C. § 102(e) (emphasis added). The Patent Owner attempted to show that Campbell ’558 was not § 102(e) art, by submitting Mr. Campbell’s declaration asserting that the cited portions of Campbell ’558 were the work of the same inventive entity as the challenged patent, not a patent “by another.” The Patent Owner argued that Mr. Campbell’s declaration alone was sufficient to demonstrate the common inventive entity between the challenged patent and Campbell ’558. The court disagreed, concluding that the uncorroborated declaration was not sufficient:
This declaration amounts to a naked assertion by an inventor that he and a co-inventor are the true inventors of the passages cited. Nothing in the declaration itself, or in addition to the declaration, provides any context, explanation, or evidence to lend credence to the inventor’s bare assertion.
The court did “not hold that corroboration of an inventor’s declaration is required in every case, but [recognized] that corroborating an inventor’s testimony is a well-established principle in [its] case law.” The court noted that the Patent Owner did not present testimony of the other named inventors or produce any contemporaneous documentary evidence in support of the declaration, and concluded that the PTAB properly relied on Campbell ’558 as prior art.
Notice and Opportunity to Respond
With respect to three of the challenged claims, the court concluded that the PTAB denied the Patent Owner its procedural rights under the Administrative Procedure Act (APA), by failing to provide notice and opportunity to respond to the particular combination of references the PTAB applied. For these three claims, the petition and institution decision both relied on the combination of Saito and Campbell ’558. The PTAB’s final written decision, however, relied on Stiles, not Saito, in combination with Campbell ’558. Although Stiles was of record and relied on for other claims, neither party mentioned Stiles in its briefing with respect to these three claims, demonstrating the neither party was on notice that Stiles was at issue with respect to those particular claims. Accordingly, the court vacated the PTAB’s decision as to those claims and remanded the case.
This decision is a reminder that declarations submitted to the PTAB may sometimes require corroborating evidence supporting the testimony, and as we have reported on for other cases, the PTAB cannot cancel claims without proper notice and opportunity to respond.