United States: 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 Court then explained that "[b]ecause all the limitations of Kennametal's claim are specifically disclosed in Grab, the question for the purposes of anticipation is 'whether the number of categories and components' disclosed in Grab is so large that the combination of ruthenium and PVD coatings 'would not be immediately apparent to one of ordinary skill in the art.'"  Slip op. at 10 (quoting Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361 (Fed. Cir. 2012)).  The Court concluded that, "[t]hough 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."  Id. at 11 (quoting Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1355 (Fed. Cir. 2005)).  The Court explained that, instead, "anticipation only requires that those suggestions be enabled to one of skill in the art."  Id. (quoting Novo Nordisk, 424 F.3d at 1355).  The Court therefore held that substantial evidence supported the Board's finding of anticipation of independent claim 1.  The Court also affirmed the Board's finding as to the dependent claims because Kennametal did not separately argue any of the dependent claims.  Furthermore, because Kennametal argued the patentability of independent claim 89 only in a footnote, the Court also affirmed the Board's finding of anticipation of claim 89.  

The Court next turned to the Board's obviousness findings, first considering Ingersoll's argument that Kennametal failed to independently argue the patentability of the dependent claims at the Board and had thereby waived its right to challenge the Board's obviousness determinations for those claims.  Rejecting this argument, the Court observed that Kennametal faced a different set of rejections at the Board and was not previously required to independently challenge the obviousness determination of the dependent claims.  The Court explained that "[a]rguments . . . cannot be deemed waived if they were not previously required to have been made."  Id. at 13 (quoting Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008)).

The Court then turned to the merits of the Board's obviousness determination.  After considering the parties' arguments whether it would have been obvious to combine ruthenium binders with PVD coatings, the Court determined that "because a person of skill in the art reading Grab would readily envisage the combination of ruthenium binders and PVD coatings, it would have been obvious to that person that these two could be combined with a reasonable expectation of success."  Id. at 15.  Based on this finding, the Court held that substantial evidence supported the Board's obviousness finding.

The Court then considered and rejected Kennametal's arguments related to secondary considerations of unexpected results.  According to the Court, "the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, [so] there is no nexus to the merits of the claimed invention."  Id. at 16 (alteration in original) (quoting In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011)).  

The Court declined to consider Kennametal's arguments for patentability raised in the reply brief because "[a]rguments not raised until [the] reply brief are waived."  Id. (second alteration in original) (quoting Lifestyle Enter., Inc. v. United States, 751 F.3d 1371, 1377 (Fed. Cir. 2014)).

Accordingly, the Court affirmed the Board's determinations of anticipation and obviousness.

Judges: Prost, Newman, Linn (author) [Appealed from Board]

This article previously appeared in Last Month at the Federal Circuit, April, 2015

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Copyright © 2015 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP | All rights reserved

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