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Kimya AS v. Rohm and Haas Co.

United States Court of Appeals, Federal Circuit

October 11, 2017

ORGANIK KIMYA AS, Appellant
v.
ROHM AND HAAS COMPANY, Appellee

         Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2014-00185, IPR2014-00350.

          James R. Barney, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, argued for appellant. Also represented by Charles Collins-Chase, Eric Jay Fues, Timothy P. McAnulty.

          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.

          Before Prost, Chief Judge, Newman and Taranto, Circuit Judges.

          Newman, Circuit Judge.

         Organik 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").[1] On appellate review, we affirm the PTAB's decisions.

         Background

         The '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.[2] These products provide opacity by absorbing and scattering light, a property produced by voids (hollows) within the polymer particles.

         Hollow 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.

         In the 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.

         Discussion

         Standard of Review

         These 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 record. Id.

         In its 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.

         I

         The '435 Patent

         The '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 representative:

1. A process for preparing emulsion polymer particles comprising:
(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 monomer;
(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.

         The 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.

         For the '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."

         Claim Construction

         Each challenged claim of the '435 Patent requires the addition of a swelling agent as part of the claimed process. The Board ...


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