September 15, 2017
Response Arguments Do Not Have to Be Preemptively Addressed in the Petition or Institution Decision
In Idemitsu Kosan Co., Ltd. v. SFC Co. Ltd., [2016-2721] (September 15, 2017), the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision that claims of U.S. Patent No. 8,334,648 were invalid for obviousness.
On appeal, Idemitsu argued that the Board erred in finding that prior art taught combining the particular compounds for the purpose of creating a light emitting layer in an electroluminescent device. The Federal Circuit found that what Idemitsu characterizes as an argument raised “too late” was simply the by-product of one party necessarily getting the last word.
Idemitsu argued that the prior art teaches away from combinations, and SFC simply countered, as it was entitled to do. The Federal Circuit found that to the extent Idemitsu suggests that the Board could not reach a counterargument because it was not preemptively addressed by the petition or institution decision, Idemitsu is plainly mistaken. The Federal Circuit noted that there is no requirement, either in the Board’s regulations, in the APA, or as a matter of due process, for the institution decision to anticipate and set forth every legal or factual issue that might arise in the course of the trial.