Federal Circuit Holds that an Obviousness Determination by the PTAB is Not Supported by Substantial Evidence Where There is No Motivation to Modify the Single Cited Reference

In Chemours Company FC, LLC v. Daikin Industries, LTD., No. 20-1289 (Fed. Cir. July 22, 2021), the Federal Circuit held that a modification of a teaching in a reference relied on in order to reject a claim as obvious must be supported by substantial evidence. Unclaimed steps in the teaching used to arrive at the claimed requirements cannot be disregarded when they must be modified to make the required showing. Daikin requested inter partes review of certain Chemours’ patents. The PTAB found the claims to be obvious over a single reference (“Kaulbach”) in combination with the motivation a person of ordinary skill would have to modify Kaulbach. In particular, the PTAB reasoned that it would be obvious to modify a sample described in Kaulbach with a melt flow rate of 24 g/10 min to arrive at a claimed melt flow rate of 30+-3 g/10 min. The Federal Circuit determined that the PTAB did not provide competent proof “showing a skilled artisan would have been motivated to, and reasonably expected to be able to, increase the melt flow rate of Kaulbach’s polymer to the claimed range when all known methods for doing so would go against Kaulbach’s invention by broadening molecular weight distribution.” The Federal Circuit pointed to the teachings of Kaulbach including “that a narrow molecular weight distribution performs better, thus overcoming a well-established prejudice” as guidance for a person of ordinary skill to avoid changes to Kaulbach that would increase molecular weight distribution. And, because obtaining a higher flow rate based on the teachings of Kaulbach would require an increase in the molecular weight distribution, the Federal Circuit was not convinced that reference to the sample of Kaulbach and the motivation of a person of ordinary skill would be sufficient to render the claims obvious.

The opinion can be found here:  http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1289.OPINION.7-22-2021_1808187.pdf