E.I. du Pont de Nemours and Company Vs. Synvina

E.I. du Pont de Nemours and Company and Archer Daniels Midland Company (collectively DuPont) petitioned for inter partes review of Synvina C.V.'s U.S. Patent 8,865,921 directed to oxidizing 5-hydroxymethylfurfural or derivatives under specific temperature pressure catalyst and solvent conditions to produce 2,5-furan dicarboxylic acid FDCA a green chemical precursor with DuPont challenging claims 1-5 and 7-9 as obvious over prior art disclosing overlapping reaction ranges. The PTAB in IPR2015-01838 held on 3 March 2017 that DuPont failed to prove obviousness by preponderant evidence reasoning no reference expressly taught the exact claimed combination and refusing burden-shifting for overlapping ranges. DuPont appealed arguing the Board applied incorrect legal standards. The Federal Circuit reasoned that prior art disclosed overlapping ranges for result-effective variables like temperature and oxygen partial pressure creating a prima facie case of obviousness shifting production burden to Synvina to rebut with evidence of teaching away unexpected results criticality or lack of routine optimization but Synvina failed to do so with weak evidence of nonobviousness. The court reversed the Board's decision holding claims 1-5 and 7-9 obvious and affirmed DuPont's standing due to competitive injury from operating a demonstration plant capable of infringing.

- When prior art discloses ranges overlapping with claimed ranges for result-effective variables a prima facie case of obviousness arises shifting production burden to patentee to rebut with evidence of teaching away unexpected results criticality or that broad ranges do not invite routine optimization: E.I. du Pont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1006-1008 (Fed. Cir. 2018).

- This burden-shifting framework for overlapping ranges applies in inter partes review proceedings as in examination and district court litigation: E.I. du Pont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1007-1008 (Fed. Cir. 2018).

- Standing to appeal PTAB decision exists where petitioner demonstrates concrete injury-in-fact from operating a plant capable of practicing claimed method and competitor refuses covenant not to sue: E.I. du Pont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1004-1005 (Fed. Cir. 2018).

E.I. du Pont de Nemours and Company Vs. Synvina C.V., Order date: 17 September 2018, Case Number: 2017-1977, Neutral Citation: 904 F.3d 996 (Fed. Cir. 2018), Name of court: United States Court of Appeals for the Federal Circuit, Name of Judge: Circuit Judge Alan D. Lourie (opinion), with Circuit Judges Kathleen M. O'Malley and Raymond C. Chen.

[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]  

[Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi]