from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in Nos. IPR2014-00185, IPR2014-00350.
R. Barney, Finnegan, Henderson, Farabow, Garrett &
Dunner, LLP, Washington, DC, argued for appellant. Also
represented by Charles Collins-Chase, Eric Jay Fues, Timothy
Raymond N. Nimrod, Quinn Emanuel Urquhart & Sullivan,
LLP, New York, NY, argued for appellee. Also represented by
James Baker, Frank Charles Calvosa, Evangeline Shih; Philip
Charles Sternhell, Washington, DC.
Prost, Chief Judge, Newman and Taranto, Circuit Judges.
Newman, Circuit Judge.
Kimya AS ("Organik") appeals the decisions of the
Patent Trial and Appeal Board ("PTAB" or
"Board") in two related inter partes review
("IPR") proceedings for which Organik is the
Petitioner. The Patent Owner is the Rohm and Haas Company.
The PTAB sustained the patentability of claims 1-5 of U.S
Patent No. 6, 020, 435 ("the '435 Patent"), and
claims 1-7 of its division, U.S. Patent No. 6, 252, 004
("the '004 Patent"). On appellate review, we
affirm the PTAB's decisions.
'435 Patent and the '004 Patent are directed to
processes for preparing certain emulsion polymers having
improved opacity. These polymers are described as used in
opaque coatings such as paints, coatings, inks, and other
products benefitting from opacity. '435 Patent, col. 1,
ll. 21-25. These products provide opacity by
absorbing and scattering light, a property produced by voids
(hollows) within the polymer particles.
emulsion polymers were previously known. '435 Patent,
col. 1, ll. 39-45. The patents at issue state that their
method of manufacture produces products of improved opacity
and low density, based on the "discover[y] that by
providing an aqueous emulsion of a multi-stage emulsion
polymer, monomer and swelling agent under conditions wherein
there is no substantial polymerization of the monomer, we can
enhance the extent of swelling of the multistage emulsion
polymer." Id. col. 7, ll. 56-60.
claimed processes a base swelling agent and excess monomer
are introduced into an aqueous emulsion of the polymer, under
conditions in which there is no substantial polymerization.
Id. col. 7, ll. 43-60. The base permeates the outer
shell of the polymer particle and neutralizes the acid core,
creating a hydrophilic salt in the core. Id. col. 9
ll. 10-15. The hydrophilic salt promotes diffusion of water
into the core, swelling the polymer particle; when the
product is dried the water evaporates, leaving the enlarged
hollow core. Id. col. 9, ll. 15-33. The patents
state that suitable swelling agents include fixed or
permanent bases such as potassium hydroxide. Id.
col. 8, ll. 45-52.
proceedings were instituted on grounds of anticipation and
obviousness. Anticipation is a question of fact; findings of
a PTO tribunal are reviewed for support by substantial
evidence in the record before the PTO. Kennametal, Inc.
v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed.
Cir. 2015). Obviousness is a matter of law and receives
plenary review on appeal, with any underlying findings of
fact reviewed for support by substantial evidence in the PTO
claim construction, the PTAB relied principally on the
intrinsic evidence of the patent specification and the
prosecution history, whereby the claim construction receives
de novo review on appeal. Microsoft Corp. v. Proxyconn,
Inc., 789 F.3d 1292, 1297 (Fed. Cir. 2015). Any PTAB
factual findings based on extrinsic evidence, such as expert
testimony and documents not previously of record, are
reviewed for support by substantial evidence in the record
before the PTO. Id.
'435 Patent is entitled "Process for Preparing
Polymer Core Shell Type Emulsions and Polymers Formed
Therefrom." The PTAB instituted review of claims 1-5 on
the ground of anticipation by U.S. Patent No. 5, 360, 827
("Toda"), and obviousness over U.S. Patent No. 5,
077, 320 ("Touda"). Claim 1 was deemed
1. A process for preparing emulsion polymer particles
(a) providing an aqueous emulsion of
(i) multi-stage emulsion polymer, comprising a core stage
polymer and a shell stage polymer, wherein the core stage
polymer comprises, as polymerized units, from 5 to 100
percent by weight, based on the weight of the core stage
polymer, of hydrophilic monoethylenically unsaturated
monomer, and from 0 to 95 percent by weight, based on the
weight of the core stage polymer, of at least one nonionic
monoethylenically unsaturated monomer; and wherein the shell
stage polymer comprises, as polymerized units, at least 50
percent by weight of nonionic monoethylenically unsaturated
(ii) monomer at a level of at least 0.5 percent by weight
based on the weight of the multi-stage emulsion polymer; and
(iii) swelling agent under conditions wherein there is no
substantial polymerization of the monomer; and
(b) reducing the level of monomer by at least fifty percent.
PTAB found that the specification "describes a swelling
agent not merely as being capable of permeating a shell and
swelling the core of a multistage emulsion polymer in the
abstract, but specifically under the conditions of the
specific process for which the agent is to be used."
'435 Pat. Op. at *6. The PTAB then found that the Toda
and Touda references provide a general teaching of hollow
multistage emulsion polymers, but concluded, as we shall
discuss, that the processes here described and claimed are
not anticipated by or obvious from the cited references.
'435 Patent, Organik argues that the Board adopted an
overly narrow interpretation of the term "swelling
agent, " and improperly added a "swelling
step" into the claims. Organik also argues that the
Board erred in finding that the Toda and Touda references do
not disclose a "swelling agent."
challenged claim of the '435 Patent requires the addition
of a swelling agent as part of the claimed process. The Board