Federal Circuit reverses IPR decision, invalidates all claims challenged by Finnegan clients DuPont and Archer-Daniels-Midland

In an appeal from inter partes review (IPR) proceedings, Finnegan successfully persuaded the U.S. Court of Appeals for the Federal Circuit to reverse the Patent Trial and Appeal Board (PTAB)’s decision that patent claims challenged by E. I. du Pont de Nemours and Company (DuPont) and Archer-Daniels-Midland Co. (ADM) would not have been obvious. The patent, owned by DuPont and ADM’s competitor Synvina C.V., is directed to methods of producing the chemical FDCA, which is an important building block in the green chemical industry.

The Federal Circuit held that the PTAB erred by refusing to apply the burden-shifting framework applicable in cases where the process parameters disclosed in the prior art overlap with those claimed in a challenged patent. This was an issue of first impression in the IPR context. Furthermore, the court held that, contrary to the Board’s analysis, two process parameters—reaction temperature and oxygen partial pressure—were “result-effective variables” because the prior art recognized that those variables affected the claimed process for making FDCA. The court concluded that, under the correct obviousness framework, DuPont and ADM presented “a strong case of obviousness” and that all the challenged claims would have been obvious over “very close prior art and weak evidence of nonobviousness.”

The Federal Circuit also rejected Synvina’s challenge to DuPont and ADM’s standing to pursue the appeal. The court held that DuPont and ADM had standing in part because they compete with Synvina in the FDCA field and are currently operating a demonstration plant capable of operating under conditions within the ranges claimed in Synvina’s patent.