No Requirement For The Prior Art To Disclose 'Actual Performance' To Anticipate

In Kennametal, Inc. v. Ingersoll Cutting Tool Co., No. 14-1350 (Fed. Cir. Mar. 25, 2015), the Federal Circuit affirmed the Board's determinations of anticipation and obviousness of the claims of U.S. Patent No. 7,244,519 ("the '519 patent").

The '519 patent is directed to cutting tools containing a ruthenium binder and coated using physical vapor deposition ("PVD"). The inventors of the '519 patent assigned their interests in the invention to TDY Industries, Inc. ("TDY"). TDY sued Ingersoll Cutting Tool Co. ("Ingersoll") for infringement of the '519 patent. After filing suit, TDY assigned the '519 patent to Kennametal, Inc. ("Kennametal").

Ingersoll successfully petitioned for inter partes reexamination of the '519 patent, asserting that some of the original claims were anticipated by U.S. Patent No. 6,554,548 ("Grab") and all of the claims were obvious under 35 U.S.C. § 103(a). The examiner did not adopt Ingersoll's proposed anticipation rejections, but rejected all the pending claims as being obvious. In response, Kennametal amended the existing claims and filed new claims. Ingersoll again proposed both anticipation and obviousness rejections. The examiner again refused to adopt the anticipation rejections, but rejected all of the claims as being obvious. Kennametal appealed the rejections and Ingersoll cross-appealed the examiner's refusal to adopt its proposed anticipation rejections. The Board found that the examiner erred in not adopting Ingersoll's proposed anticipation rejections of several claims and affirmed the examiner's obviousness rejections. After the Board denied Kennametal's request for rehearing, Kennametal appealed.

"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." Slip op. at 11 (quoting Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1355 (Fed. Cir. 2005)).

On appeal, the Federal Circuit first considered Kennametal's argument that Grab did not disclose the combination of ruthenium as a binder and a PVD coating. Rejecting Kennametal's argument that a person of skill in the art would not immediately envisage the claimed combination, the Court found that claim 5 of Grab expressly recited a binder consisting of one of five metals, one of which is ruthenium, together with a coating. The Court determined that, although Grab did not focus on PVD coatings, PVD was one of three disclosed types of coatings. The...