Teaching Away May Preclude Motivation To Modify A Reference

• Published date: 07 September 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Mr Jeffrey Freeman, Stacy Lewis and Thomas L. Irving

Holding

In Chemours Company FC, LLC v. Daikin Industries, Ltd., a CAFC panel reversed an obviousness determination by the PTAB ("Board"), holding that the Board improperly found motivation to modify a prior art reference, where the "inventive concept' of the prior art reference taught away from that modification.

Background

The patents at issue in Chemours related to polymers with unique properties such that they can be formed at high extrusion speeds while still producing a high-quality coating on communication cables. Id. at *4. In particular, the claims recited that the polymers have "a high melt flow rate of about 30'3 g/10 min," which the patent taught enabled the polymer to be coated at higher speeds.

The Board found the claims to have been obvious over a single prior art reference, which taught each of the elements of the claimed polymer except the particular melt flow rate of 30'3 g/10 min. Instead of focusing on melt flow rate to achieve higher coat speeds, the "inventive concept" of the prior art reference was found to focus on maintaining a "narrow molecular weight distribution" of the polymer. With respect to melt flow rate, the prior art reference disclosed only that its polymers may have melt flow rates of "15 g/10 min or greater" in the specification and included an example with a melt flow rate of 24 g/10 min. Id. at *7.

Importantly, the Board found that increasing the melt flow rate of the prior art's example to within the claimed range would require broadening the molecular weight distribution of the polymer, which the Board acknowledged was contrary to the prior art's inventive concept of a narrow distribution. Nevertheless, the Board held that it would have been obvious to have modified the prior art reference to increase the melt flow rate because it found that other evidence of record taught increasing the melt flow rate as a means for achieving higher coating speeds. Id. at *4. The Board found that the "narrowing molecular weight distribution" teaching of the cited prior art would not have prevented the skilled artisan from considering other known techniques for increasing speed, such as increasing the melt flow rate. Id. at *8.

Federal Circuit Decision

The CAFC reversed, 2-1 on the issue of obviousness. A Board's determination of obviousness is a question of law that is based on underlying findings of fact, which are reviewed for substantial evidence. Such underlying questions of fact include what the prior art teaches, whether a...