E.I. Dupont De Nemours v. Synvina C.V. , 904 F.3d 996 ( 2018 )

United States Court of Appeals
for the Federal Circuit
______________________
E.I. DUPONT DE NEMOURS & COMPANY,
ARCHER DANIELS MIDLAND COMPANY,
Appellants
v.
SYNVINA C.V.,
Appellee
______________________
2017-1977
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2015-
01838.
______________________
Decided: September 17, 2018
______________________
MICHAEL J. FLIBBERT, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Washington, DC, argued for
appellants. Also represented by CHARLES COLLINS-CHASE.
PAUL M. RICHTER, JR., Pepper Hamilton LLP, New
York, NY, argued for appellee. Also represented by MARK
ALEXANDER CHAPMAN, Hunton Andrews Kurth LLP, New
York, NY.
______________________
Before LOURIE, O’MALLEY, and CHEN, Circuit Judges.
2 E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
LOURIE, Circuit Judge.
E. I. du Pont de Nemours and Company and Archer-
Daniels-Midland Company (collectively, “DuPont”) appeal
from an inter partes review (“IPR”) decision of the United
States Patent and Trademark Office Patent Trial and
Appeal Board (the “Board”). See DuPont v. Furanix
Techs. B.V., No. IPR2015-01838, Paper No. 43, slip op.
(P.T.A.B. Mar. 3, 2017) (“Decision”). The Board held that
DuPont failed to prove by preponderant evidence that
claims 1–5 and 7–9 of U.S. Patent 8,865,921 (“’921 pa-
tent”) would have been obvious at the time of the claimed
invention. We conclude that the Board applied the wrong
legal standards for obviousness, and reverse.
I. BACKGROUND
Synvina C.V. (“Synvina”) 1 owns the ’921 patent, di-
rected to a method of oxidizing 5-hydroxymethylfurfural
(“HMF”) or an HMF derivative, such as 5-methylfurfural
(“5MF”) or 2,5-dimethylfuran (“DMF”), under specified
reaction conditions to form 2,5-furan dicarboxylic acid
(“FDCA”). ’921 patent Abstract; id. col. 7 l. 65. Undisput-
edly, the oxidation of HMF and its derivatives to yield
FDCA was known at the time of the claimed invention.
The main issue on appeal is whether the reaction condi-
tions claimed in the ’921 patent—specifically, the choice of
temperature, pressure, catalyst, and solvent—would have
been obvious to a person of ordinary skill at the time of
the invention.
A.
DuPont and Synvina are competitors in the produc-
tion of FDCA for industrial use. FDCA has attracted
1 Synvina acquired the ’921 patent from Furanix
Technologies B.V. (“Furanix”), the patent owner during
the IPR proceeding.
E.I. DUPONT DE NEMOURS v. SYNVINA C.V. 3
commercial interest because of its potential in the “green”
chemical industry. Since FDCA can be produced from
sugars using biological or chemical conversion, the U.S.
Department of Energy has identified FDCA as a potential
“building block[]” for “high-value bio-based chemicals or
materials.” U.S. Department of Energy, Top Value Added
Chemicals from Biomass 1 (2004); see ’921 patent col. 1 ll.
34–36.
The ’921 patent claims a method of producing FDCA
by oxidizing HMF or an HMF derivative with an oxygen-
containing gas such as air. Claim 1 is illustrative and
reads as follows:
1. A method for the preparation of 2,5-furan di-
carboxylic acid comprising the step of contacting a
feed comprising a compound selected from the
group consisting of 5-hydroxymethylfurfural
(“HMF”), an ester of 5-hydroxymethylfurfural, 5-
methylfurfural, 5-(chloromethyl)furfural, 5-
methylfuroic acid, 5-(chloromethyl)furoic acid, 2,5-
dimethylfuran and a mixture of two or more of
these compounds with an oxygen-containing gas,
in the presence of an oxidation catalyst comprising
both Co and Mn, and further a source of bromine,
at a temperature between 140° C. and 200° C. at
an oxygen partial pressure of 1 to 10 bar, wherein
a solvent or solvent mixture comprising acetic acid
or acetic acid and water mixtures is present.
’921 patent col. 7 l. 61–col. 8 l. 6 (emphasis added). Thus,
claim 1 recites four relevant reaction conditions: (1) a
temperature between 140°C and 200°C; (2) an oxygen
partial pressure (“PO2”) 2 of 1 to 10 bar; (3) a solvent
2 PO2 is the pressure in a gas mixture attributable
to oxygen. Adding up the partial pressures of each gas in
4 E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
comprising acetic acid; and (4) a catalyst comprising
cobalt (“Co”), manganese (“Mn”), and bromine (“Br”). Id.
The specification describes the reaction conditions in
further detail. We begin with temperature. At several
points, the specification refers to the reaction occurring at
temperatures “higher than 140° C.” Id. Abstract, col. 2 ll.
41–42, col. 2 ll. 57–58, col. 5 ll. 18–19, col. 5 l. 39, col. 5 l.
57. When the specification refers to the temperature
range in claim 1, it states that “[t]he temperature of the
reaction mixture is at least 140° C., preferably from 140
and 200° C., most preferably between 160 and 190° C.”
Id. col. 4 ll. 56–58. But “[t]emperatures higher than
180°C. may lead to decarboxylation and to other degrada-
tion products.” Id. col. 4 ll. 58–59.
Second, the specification provides the following guid-
ance regarding reaction pressure:
The pressure in a commercial oxidation process
may vary within wide ranges. When a diluent is
present, and in particular with acetic acid as dilu-
ent, the temperature and the pressure in such a
process are not independent. The pressure is de-
termined by the solvent (e.g., acetic acid) pressure
at a certain temperature. The pressure of the re-
action mixture is preferably selected such that the
solvent is mainly in the liquid phase.
Id. col. 4 ll. 34–41. Because oxygen functions as the
oxidant in the reaction, its partial pressure is particularly
relevant. “In the case of continuously feeding and remov-
ing the oxidant gas to and from the reactor, the oxygen
partial pressure will suitably be between 1 and 30 bar or
more preferably between 1 and 10 bar.” Id. col. 4 ll. 51–55
(emphasis added).
the mixture gives the total air pressure. Air consists of
about 21% oxygen. See, e.g., Decision, slip op. at 17–18.
E.I. DUPONT DE NEMOURS v. SYNVINA C.V. 5
Third, as indicated above, “[t]he most preferred sol-
vent is acetic acid.” Id. col. 4 ll. 17–18. Fourth, the cata-
lyst is preferably “based on both cobalt and manganese
and suitably containing a source of bromine.” Id. col. 3 ll.
38–40. The catalyst may also contain “one or more addi-
tional metals, in particular [zirconium] and/or [cerium].”
Id. col. 3 ll. 57–58.
Several dependent claims recite narrower conditions
than those recited in claim 1. Claims 2–5 each depend
from claim 1. Claim 2 limits the starting material to
HMF, esters of HMF, and a mixture thereof. Id. col. 8 ll.
7–10. Claims 3 and 4 recite a catalyst with an additional
metal, such as zirconium (“Zr”) or cerium (“Ce”). Id. col. 8
ll. 11–12, 60–61. And claim 5 recites a narrower tempera-
ture range between 160 and 190°C. Id. col. 8 ll. 62–63.
By conducting the oxidation reaction under the dis-
closed reaction conditions, the specification states that the
inventors “surprisingly” achieved high yields of FDCA, id.
col. 2 ll. 39–45, and both Furanix and Synvina have
pointed to these yields as objective evidence of nonobvi-
ousness. The ’921 patent reports yields for several reac-
tions under the claimed conditions. Table 1 summarizes
results for oxidizing HMF, an ester of HMF, 5-
acetoxymethylfurfural (“AMF”), or a mixture of the two to
produce FDCA. Multiple experiments were conducted at
a temperature of 180°C and a pressure of 20 bars air in an
acetic acid solvent. Id. col. 6 ll. 34–46. The highest yield
of 78.08% was obtained with only HMF as a reactant,
while the lowest was 46.85% using AMF alone. Id. Table
1.
Table 2 shows the FDCA yields reported in table 1 for
the AMF oxidation reactions compared to prior art pro-
cesses conducted at lower temperatures and a pressure of
30 bars air. Id. Table 2; id. col. 6 ll. 50–62. FDCA yields
achieved using prior art processes were “lower than the
6 E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
results obtained at higher temperature.” Id. col. 6 ll. 50–
61.
Table 3 shows FDCA yields for six experiments when
HMF derivatives 5MF or DMF are oxidized with air. The
temperature was 180°C, the air pressure was 50 bars, and
the solvent was acetic acid. Id. col. 6 l. 66–col. 7 l. 12.
Again, the concentration of bromine in the catalyst varied
across experiments. Reported FDCA yields for 5MF were
42.62% and 39.94%. Id. Table 3. For DMF, FDCA yields
ranged from 7.19% to 16.17%. Id.
In addition to claiming methods of producing FDCA,
the ’921 patent also claims certain post-production pro-
cesses. Claim 7 is independent and recites producing
FDCA under the conditions in claim 1, and then “esterify-
ing the thus obtained product.” Id. col. 9 ll. 1–14. Claims
8 and 9 depend from claim 7 and recite further details of
the esterification not relevant to this appeal. Id. col. 9 ll.
15–19. The specification recognizes that “[t]he esterifica-
tion of [FDCA] is known.” Id. col. 5 ll. 42–48 (citing U.S.
Patents 2,673,860 and 2,628,249); see also id. col. 5 l. 62–
col. 6 l. 2 (citing GB 621,971).
B.
DuPont petitioned for IPR of the ’921 patent. The pe-
tition asserted several grounds of obviousness, two of
which are relevant on appeal: (1) claims 1–5 over the ’732
publication, 3 alone or in combination with RU ’177 4 and
the ’318 publication; 5 and (2) claims 7–9 over the ’732
publication in view of Applicants Admitted Prior Art, or
3 International Publication WO 01/72732.
4 Inventor’s Certificate RU-448177.
5 U.S. Patent Application Publication
2008/0103318.
E.I. DUPONT DE NEMOURS v. SYNVINA C.V. 7
additionally Lewkowksi 6 and/or Oae, 7 and optionally in
view of RU ’177 and the ’318 publication.
The Board instituted review of claims 1–5 and 7–9
based on grounds 1 and 2 above, but did not institute
review of the other claims or grounds. 8 DuPont v. Fu-
ranix Techs. B.V., No. IPR2015-01838, Paper No. 10, slip
op. at 15, 19 (P.T.A.B. Mar. 9, 2016) (“Institution Deci-
sion”).
Each of the three references relevant to claims 1–5
disclosed oxidizing HMF or an HMF derivative to produce
FDCA, but did so under somewhat different conditions.
First, the ’732 publication disclosed oxidizing HMF to
FDCA. It included “preferred temperatures” of “about 50°
to 250°C, most preferentially about 50° to 160°C.” J.A.
2360. Like the ’921 patent, the ’732 publication indicated
that the reaction pressure “is such to keep the solvent
mostly in the liquid phase.” Id. Specifically, the reference
disclosed that an air pressure of 1000 psi “gave good
yields of [FDCA].” J.A. 2368. 1000 psi amounts to a PO2
of approximately 14.5 bars. The disclosed solvent was
“preferably acetic acid,” J.A. 2357, and “the catalyst can
be comprised of Co and/or Mn, and Br, and optionally Zr,”
6 Jaroslaw Lewkowski, Synthesis, Chemistry and
Applications of 5-Hydroxymethylfurfural and Its Deriva-
tives, ARKIVOC 17 (2001).
7 Shigeru Oae, A Study of the Acid Dissociation of
Furan- and Thiophenedicarboxylic Acids and of the Alka-
line Hydrolysis of Their Methyl Esters, 38(8) Soc. Jpn.
1247 (1965).
8 Neither party has requested any action based on
the Supreme Court’s decision in SAS Institute Inc. v.
Iancu, 138 S. Ct. 1348 (2018), and we do not order such
action sua sponte, see PGS Geophysical AS v. Iancu, 891
F.3d 1354, 1361–63 (Fed. Cir. 2018).
8 E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
J.A. 2358. Reported FDCA yields ranged from 14% to
58.8%.
Second, RU ’177 disclosed oxidizing 5MF to form
FDCA. It included a method where the oxidation reaction
“is conducted at the temperature of 115–140°C and air
pressure of 10–50 atm.” J.A. 2440. An air pressure of 10–
50 atm roughly corresponds to a PO2 of 2.1–10.5 bars. 9
RU ’177 also generally recites an “aliphatic carboxylic
acid” as the solvent, and an example in the specification
specifically uses acetic acid. Id. The catalyst in RU ’177
is “a mixture of cobalt acetate and manganese acetate, as
well as bromine-containing compounds, such as ammoni-
um bromide.” Id. Purportedly, the process “has a number
of advantages compared to prior art: it utilizes readily
available and inexpensive reagents as the initial com-
pound and catalysts; [and] the method is a one-step
process.” J.A. 2439. FDCA yields reportedly ranged from
23–36%.
Third, the ’318 publication taught the oxidation of
HMF to make FDCA. The reaction temperature was
“from about 50° C. to about 200° C,” with a preferred
range of 100–160°C. J.A. 2484, 2486. “A preferred pres-
sure can typically be in the range of 150–500 psi,” J.A.
2486, corresponding to a PO2 range in air of roughly 2.17–
7.24 bars. Unlike the ’921 patent and the other refer-
ences, the ’318 publication taught using water as a sol-
vent and a platinum catalyst. 10 Under these conditions,
the ’318 publication reported yields “as high as 98%.” J.A.
2486.
9 1 bar is approximately equal to 1 atm.
10 The ’318 publication did indicate, however, that
“[w]here an acidic aqueous solution solvent system is
utilized, an appropriate acid can be added such as, for
example, acetic acid.” J.A. 2486.
E.I. DUPONT DE NEMOURS v. SYNVINA C.V. 9
The table below summarizes the reaction conditions
disclosed in claim 1 of the ’921 patent and in the RU ’177,
’732, and ’318 references. For simplicity and to enable
comparison between pressure ranges, we restate only the
PO2 ranges in bars under the assumption that air is the
oxidant.
Reference Temperature Pressure Solvent Catalyst
’921 Between 1–10 Acetic Co/Mn/Br
patent 140–200°C bars acid
RU ’177 115–140°C 2.1–10.5 Acetic Co/Mn/Br
bars acid
’732 50–250°C, 14.5 Acetic Co/Mn/Br,
preferably bars acid optionally
50–160°C Zr
’318 50–200°C, 2.17– Water Pt
preferably 7.24
100–160°C bars
Two additional references, Lewkowski and Oae, are
relevant to the FDCA esterification claims 7–9. Con-
sistent with the ’921 patent’s acknowledgment that esteri-
fication of FDCA was known at the time of the invention,
’921 patent col. 5 l. 42, Lewkowski and Oae both disclosed
esterifying FDCA.
C.
In its final written decision, the Board held the insti-
tuted claims not unpatentable as obvious. The Board
rejected DuPont’s contention that a burden-shifting
framework applied, reasoning that our decisions in In re
Magnum Oil Tools International, Ltd., 829 F.3d 1364,
1375 (Fed. Cir. 2016), and Dynamic Drinkware, LLC v.
National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
10 E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
2015), foreclosed such a framework in an IPR. Decision,
slip op. at 15.
Although the Board recognized that the prior art dis-
closed oxidizing HMF or its derivatives to FDCA under
reaction conditions that overlapped with those claimed in
the ’921 patent, it found that “none of the references
relied upon by Petitioners expressly taught a process in
which HMF or its derivatives were oxidized to FDCA
using a Co/Mn/Br catalyst at a reaction temperature of
between 140°C and 200°C while also maintaining the
[PO2] between 1 and 10 bar.” Id. at 16. Furthermore, the
Board held that DuPont failed to prove that “reaction
temperature and [PO2] were recognized as result-effective
variables in the prior art, or that the adjustment of those
parameters to within the claimed ranges would have been
a matter of routine experimentation.” Id. at 25.
The Board considered objective evidence of nonobvi-
ousness, but found “that evidence to be less probative in
supporting a conclusion of non-obviousness.” Id. at 15.
Primarily, then-patent owner Furanix alleged that the
reaction conditions claimed in the ’921 patent achieved
unexpectedly high yields of FDCA. Id. at 25–26. While
the Board recognized that the reaction conditions recited
in claim 1 “can lead to higher FDCA yields at least in
some circumstances,” id. at 29, the Board observed the
following weaknesses in the evidence of unexpected
results: (1) Furanix relied only on results from a single
PO2 value, not values commensurate with the scope of the
claim; (2) Furanix did not demonstrate how the increased
yields would be considered a difference in kind rather
than degree; and (3) other, unclaimed parameters such as
reaction time and catalyst concentration could have
contributed to higher yields, and those parameters were
not held constant between the experiments from table 1
and experiments conducted under prior art conditions, id.
at 29–30. Thus, ultimately the Board found that Furanix
E.I. DUPONT DE NEMOURS v. SYNVINA C.V. 11
failed to establish unexpected results or criticality. Id. at
30.
Likewise, the Board determined that the process
claimed in the ’921 patent did not solve a long-felt need.
Id. at 31. Nor did the Board find that DuPont copied the
’921 patent. Id. at 32.
DuPont appealed, challenging the Board’s conclusion
of nonobviousness. In its responsive brief, Synvina as-
serted that DuPont lacks standing to appeal. Because
Synvina’s challenge to standing implicates our jurisdic-
tion, we first decide the standing issue, and then turn to
the merits.
DISCUSSION
I. Standing
Synvina argues that DuPont lacks standing to appeal
the Board’s decision to this court because DuPont has not
suffered an actual or imminent injury in fact. Since no
action for infringement of the ’921 patent has been
brought against DuPont, Synvina contends that DuPont
can posit only speculative future harm. According to
Synvina, such hypothetical injury is insufficient to meet
its burden to prove standing.
DuPont responds that a specific threat of infringe-
ment is not necessary for an appellant to demonstrate
injury in fact. Rather, DuPont contends that an appellant
must only face a significant risk of infringement liability,
and that it faces such a risk for several reasons:
(1) DuPont has built a demonstration plant to produce
FDCA and an FDCA ester (“FDME”), and the plant is
capable of operating under conditions within the claimed
ranges of the ’921 patent; (2) Synvina is a competitor that
alleged before the Board that Archer-Daniels-Midland
Company’s (“ADM”) processes for producing FDCA were
“embraced by the claims in the ’921 patent,” Reply Br. 25–
26 (quoting J.A. 2216); and (3) Synvina rejected DuPont’s
12 E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
request for a covenant not to sue. According to DuPont,
these facts are sufficient to prove an actual or imminent
injury in fact.
We have jurisdiction to review final decisions of the
Board under 28 U.S.C. § 1295(a)(4)(A). However, as an
Article III court, we are only empowered to adjudicate
“Cases” and “Controversies,” U.S. Const. Art. III, § 2,
“appropriately resolved through the judicial process,”
Lujan v. Defenders of Wildlife, 504 U.S. 555, 560 (1992)
(internal quotation marks omitted). To establish a case or
controversy, an appellant must meet “the irreducible
constitutional minimum of standing,” id., even if there is
no such requirement to appear before the administrative
agency being reviewed, Consumer Watchdog v. Wis.
Alumni Research Found., 753 F.3d 1258, 1261 (Fed. Cir.
2014). 11 Standing requires an appellant to have
“(1) suffered an injury in fact, (2) that is fairly traceable to
the challenged conduct of the defendant, and (3) that is
likely to be redressed by a favorable judicial decision.”
Spokeo, Inc. v. Robins, 136 S. Ct. 1540, 1547 (2016). As
the party seeking judicial review, the appellant bears the
burden of proving that it has standing. Phigenix, Inc. v.
Immunogen, Inc., 845 F.3d 1168, 1171 (Fed. Cir. 2017).
Under the circumstances here, we agree with DuPont
that it has standing to appeal the Board’s decision. As in
the declaratory judgment context, a petitioner who ap-
peals from an IPR decision need not face “a specific threat
of infringement litigation by the patentee” to establish
11 However, “where Congress has accorded a proce-
dural right to a litigant, such as the right to appeal an
administrative decision, certain requirements of stand-
ing—namely immediacy and redressability, as well as
prudential aspects that are not part of Article III—may be
relaxed.” Consumer Watchdog, 753 F.3d at 1261 (citing
Massachusetts v. EPA, 549 U.S. 497, 517–18 (2007)).
E.I. DUPONT DE NEMOURS v. SYNVINA C.V. 13
jurisdiction. ABB Inc. v. Cooper Indus., LLC, 635 F.3d
1345, 1348 (Fed. Cir. 2011). Rather, on appeal the peti-
tioner must generally show a controversy “of sufficient
immediacy and reality” to warrant the requested judicial
relief. Id. (citing MedImmune, Inc. v. Genentech, Inc., 549
U.S. 118, 127 (2007)).
Such a controversy exists here because DuPont cur-
rently operates a plant capable of infringing the ’921
patent. After Synvina challenged DuPont’s standing in
its responsive brief, 12 DuPont submitted several declara-
tions in support of standing. In the declarations, three
scientists employed by ADM or DuPont collectively
averred that: (1) in January 2016 ADM and DuPont
publicly announced a plan to build a 60 ton-per-year
demonstration plant to produce FDME, (2) FDME would
be produced at the plant by dehydrating fructose to com-
pounds including HMF which are then oxidized to FDCA
and esterified to FDME, (3) the process would occur in an
acetic acid solvent and with a Co/Mn/Br catalyst within a
temperature range of 120–250°C (preferably 170–190°C)
and a PO2 range of 0.02–100 bars (preferably 0.2–21
bars), and (4) the plant was expected to be mechanically
complete by January 2018 and online by the second
quarter of 2018. At oral argument, counsel for DuPont
confirmed that the plant opened on April 30, 2018 and is
currently in operation. Oral Arg. at 1:00–1:30,
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
17-1977.mp3.
Taken together, these facts demonstrate that DuPont,
an avowed competitor of patent owner Synvina, has taken
and “plans to take . . . action that would implicate” the
’921 patent, Phigenix, 845 F.3d at 1173–74, including
significant “involvement in research [and] commercial
12 Synvina did not earlier move to dismiss for lack of
standing.
14 E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
activities involving” the claimed subject matter of the ’921
patent, Consumer Watchdog, 753 F.3d at 1260. According
to DuPont’s declarations, the process conducted at its
plant uses the same reactants to generate the same
products using the same solvent and same catalysts as
the ’921 patent. Likewise, the temperature and PO2
ranges used at the plant overlap with those claimed in the
’921 patent. At the very least, this indicates that DuPont
“is engaged or will likely engage ‘in an[] activity that
would give rise to a possible infringement suit.’” JTEKT
Corp. v. GKN Auto. Ltd., 898 F.3d 1217, 1220 (Fed. Cir.
2018) (alteration in original) (quoting Consumer Watch-
dog, 753 F.3d at 1262). Synvina’s allegations of copying
before the Board and its refusal to grant DuPont a cove-
nant not to sue further confirm that DuPont’s risk of
liability is not “conjectural” or “hypothetical.” See Lujan,
504 U.S. at 560.
In sum, because DuPont “has concrete plans” for pre-
sent and “future activity that create[] a substantial risk of
future infringement or likely cause the patentee to assert
a claim of infringement,” JTEKT, 898 F.3d at 1221, we
conclude that DuPont has satisfied the injury in fact
requirement for Article III standing. As there is no
dispute that the risk of infringement liability is attributa-
ble to Synvina’s ’921 patent, and that the risk could be
redressed by our review of the Board’s decision, we con-
clude that DuPont has Article III standing. 13 We there-
fore proceed to the merits.
II. Obviousness
Our review of a Board decision is limited. In re Baxter
Int’l, Inc., 678 F.3d 1357, 1361 (Fed. Cir. 2012). We
13 However, beyond the issue of standing, we make
no judgment on whether DuPont has infringed or is
infringing the ’921 patent.
E.I. DUPONT DE NEMOURS v. SYNVINA C.V. 15
review the Board’s legal determinations de novo, In re
Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), but we
review the Board’s factual findings underlying those
determinations for substantial evidence, In re Gartside,
203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding is sup-
ported by substantial evidence if a reasonable mind might
accept the evidence as adequate to support the finding.
Consol. Edison Co. of N.Y. v. NLRB, 305 U.S. 197, 229
(1938).
DuPont asserts that the Board erred in its obvious-
ness analysis primarily in two ways. First, DuPont
argues that the Board misinterpreted our precedent and
erroneously refused to apply a burden-shifting framework
in the context of overlapping prior-art ranges from cases
such as In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003), and
Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299
(Fed. Cir. 2006). Second, DuPont contends that the Board
invoked a “result-effective variable” requirement incon-
sistent with precedent. Given these errors, DuPont
argues that the Board’s decision should be reversed with
respect to each instituted claim.
Synvina responds that the Board applied the proper
standards for obviousness, and that substantial evidence
supports the Board’s findings in favor of patentability of
the challenged claims.
A.
The legal principle at issue in this case is old. For
decades, this court and its predecessor have recognized
that “where the general conditions of a claim are disclosed
in the prior art, it is not inventive to discover the opti-
mum or workable ranges by routine experimentation.” In
re Aller, 220 F.2d 454, 456 (CCPA 1955); see also, e.g., In
re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997); In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Thus,
“[n]ormally, it is to be expected that a change in tempera-
ture, or in concentration, or in both, would be an un-
16 E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
patentable modification.” Aller, 220 F.2d at 456. A more
specific application of this general principle is that “[a]
prima facie case of obviousness typically exists when the
ranges of a claimed composition overlap the ranges dis-
closed in the prior art.” Peterson, 315 F.3d at 1329 (col-
lecting cases). We have said that such overlap creates a
presumption of obviousness. See Galderma Labs., L.P. v.
Tolmar, Inc., 737 F.3d 731, 737–38 (Fed. Cir. 2013);
Ormco, 463 F.3d at 1311; Iron Grip Barbell Co. v. USA
Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004).
There are several ways by which the patentee may
rebut that presumption. First, a modification of a process
parameter may be patentable if it “produce[s] a new and
unexpected result which is different in kind and not
merely in degree from the results of the prior art.” Aller,
220 F.2d at 456. A claimed range that demonstrates such
unexpected results is referred to as a “critical” range, and
the patentee has the burden of proving criticality. Id.
Second, and relatedly, a patentee may rebut the presump-
tion of obviousness by showing that the prior art taught
away from the claimed range. Ormco, 463 F.3d at 1311.
Third, a change to a parameter may be patentable if the
parameter was not recognized as “result-effective.” In re
Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir.
2012) (citing In re Antonie, 559 F.2d 618, 620 (CCPA
1977)). But “[a] recognition in the prior art that a proper-
ty is affected by the variable is sufficient to find the
variable result-effective.” Id. at 1297. Fourth, we have
reasoned that disclosure of very broad ranges may not
invite routine optimization. Genetics Inst., LLC v. Novar-
tis Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1306 (Fed.
Cir. 2011) (holding that ordinary motivation to optimize
did not apply where disclosure was 68,000 protein vari-
ants including 2,332 amino acids); Peterson, 315 F.3d at
1330 n.1. As we explain, the presumption of obviousness
applies here, and none of the means for rebutting it has
been shown.
E.I. DUPONT DE NEMOURS v. SYNVINA C.V. 17
B.
We first address DuPont’s argument that the Board
erred by not applying the burden-shifting framework
applicable to overlapping range cases. Synvina argues
that the Board correctly concluded that our decision in
Magnum Oil prohibited any burden-shifting framework
from applying in an IPR.
We agree with DuPont that the Board erred in con-
cluding that the type of burden-shifting framework con-
sistently applied in our overlapping range cases was
implicitly foreclosed by subsequent cases not addressing
this framework. We have articulated the relevant frame-
work as follows. “[W]here there is a range disclosed in the
prior art, and the claimed invention falls within that
range, the burden of production falls upon the patentee to
come forward with evidence” of teaching away, unex-
pected results, or other pertinent evidence of nonobvious-
ness. Galderma, 737 F.3d at 738; see Allergan, Inc. v.
Sandoz Inc., 796 F.3d 1293, 1304–05 (Fed. Cir. 2015)
(citing Galderma, 737 F.3d at 737–38); Ormco, 463 F.3d
at 1311 (“Where a claimed range overlaps with a range
disclosed in the prior art, there is a presumption of obvi-
ousness. The presumption can be rebutted if it can be
shown that the prior art teaches away from the claimed
range, or the claimed range produces new and unexpected
results.”) (citations omitted)); Iron Grip Barbell, 392 F.3d
at 1322 (same). The factfinder then assesses that evi-
dence, along with all other evidence of record, to deter-
mine whether a patent challenger has carried its burden
of persuasion to prove that the claimed range was obvi-
ous.
Galderma, Allergan, Ormco, and Iron Grip Barbell
each applied this concept in a district court case. The
same basic framework is also applicable to examination at
the United States Patent and Trademark Office (“PTO”).
18 E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
See, e.g., Peterson, 315 F.3d at 1329–30; Geisler, 116 F.3d
at 1469; Woodruff, 919 F.2d at 1578.
To our knowledge, this is the first time we have been
asked to decide whether this framework governs in the
IPR context. The Board addressed this issue in a single
paragraph, and did not cite, let alone discuss, the cases
above applying the framework in both district court and
PTO proceedings. Instead, the Board interpreted two
more recent cases, Dynamic Drinkware and Magnum Oil,
as prohibiting any burden-shifting framework from apply-
ing in an IPR. The Board erred, as these two cases did
not overturn the procedural scheme for overlapping range
cases.
Neither Dynamic Drinkware nor Magnum Oil in-
volved overlapping ranges. The issue in Dynamic Drink-
ware was the allocation of the burdens of persuasion and
production for anticipation and entitlement to an earlier
priority date in an IPR. 800 F.3d at 1378–80. We held
that the IPR petitioner “had the burden of persuasion to
prove unpatentability by a preponderance of the evidence,
and this burden never shifted.” Id. at 1379. The burden
of production, however, could shift with respect to the
presentation of evidence of anticipation or priority date.
Id. at 1379–80. While we recognized that different evi-
dentiary standards applied between district court litiga-
tion and IPRs, that difference did “not alter the shifting
burdens between the parties” because in both a district
court case and an IPR the patent challenger has the
burden of proving unpatentability. Id. at 1379. In other
words, we applied consistent procedural schemes between
district court litigation and IPRs, as the only relevant
difference was in the quantum of evidence necessary to
prove unpatentability.
In Magnum Oil, we rejected the PTO’s argument that
when the Board institutes IPR, and so concludes the
petitioner has met the “reasonable likelihood of success”
E.I. DUPONT DE NEMOURS v. SYNVINA C.V. 19
standard, that conclusion “operates to shift the burden of
producing evidence of nonobviousness to the patentee.”
829 F.3d at 1374. We observed that there was no dispute
that the burden of persuasion remained with the patent
challenger. Id. at 1375. Although we recognized that the
burden of production may shift in certain circumstances
in an IPR, id. at 1375–76 (discussing Dynamic Drinkware,
800 F.3d at 1379), we held that this burden did not shift
to the patentee to generally prove nonobviousness follow-
ing institution, id. at 1376. As in Dynamic Drinkware, we
did not discuss our case law concerning overlapping
ranges or the procedural framework relating to them.
Synvina points to broader statements in Magnum Oil
purportedly in tension with applying any burden shifting
framework in the obviousness context. Appellee Br. 40
(citing Magnum Oil, 829 F.3d at 1376 (“Where, as here,
the only question presented is whether due consideration
of the four Graham factors renders a claim or claims
obvious, no burden shifts from the patent challenger to
the patentee.”)). But such general statements must be
interpreted in context, as must the specific question we
address here. The point of our overlapping range cases is
that, in the absence of evidence indicating that there is
something special or critical about the claimed range, an
overlap suffices to show that the claimed range was
disclosed in—and therefore obvious in light of—the prior
art. Our use of the term “presumption” or the phrase
“burden-shifting framework” is merely a recognition of the
practical reality that a patent challenger would have
every incentive to point out the existence of an overlap-
ping range, and virtually none to differentiate the claimed
range from what was disclosed in the prior art. Im-
portantly, the language employed in our overlapping
range cases does not shift the burden of persuasion to the
patentee to prove nonobviousness by, for example, point-
ing to evidence of criticality or unexpected results. All our
case law states is that, absent a reason to conclude other-
20 E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
wise, a factfinder is justified in concluding that a disclosed
range does just that—discloses the entire range.
While a patentee technically has no “burden” to do
anything to defend the validity of its patent other than
hold the patent challenger to its own burden of persua-
sion, that burden of persuasion is necessarily satisfied
when there is no evidentiary reason to question the prior
art’s disclosure of a claimed range. Magnum Oil is not to
the contrary.
Since Dynamic Drinkware and Magnum Oil did not
alter the framework governing overlapping range cases,
and Synvina presents no persuasive argument supporting
a special rule for IPRs, we conclude that the same scheme
applicable to district court adjudications and PTO exami-
nations controls in IPR proceedings. Thus, “where there
is a range disclosed in the prior art, and the claimed
invention falls within that range, the burden of produc-
tion falls upon the patentee to come forward with evi-
dence” of teaching away, unexpected results or criticality,
or other pertinent objective indicia indicating that the
overlapping range would not have been obvious in light of
that prior art. Galderma, 737 F.3d at 738.
C.
Next, we address DuPont’s argument that the Board
erred in holding that the PO2 and temperature of a known
oxidation reaction were not “result-effective variables.”
Synvina disagrees, arguing that the Board properly
concluded that DuPont failed to prove that the claimed
parameters were result-effective.
We agree with DuPont that the Board erred in its
analysis of whether PO2 and temperature were result-
effective variables. As we explain, the Board did not
apply the proper legal standard for result-effective varia-
bles, and, under the correct standard, PO2 and tempera-
ture are result-effective variables.
E.I. DUPONT DE NEMOURS v. SYNVINA C.V. 21
The idea behind the “result-effective variable” analy-
sis is straightforward. Our predecessor court reasoned
that a person of ordinary skill would not always be moti-
vated to optimize a parameter “if there is no evidence in
the record that the prior art recognized that [that] partic-
ular parameter affected the result.” Antonie, 559 F.2d at
620. For example, in Antonie the claimed device was
characterized by a certain ratio, and the prior art did not
disclose that ratio and was silent regarding one of the
variables in the ratio. Id. at 619. Our predecessor court
thus reversed the Board’s conclusion of obviousness. Id.
at 620.
Antonie described the situation where a “parameter
optimized was not recognized to be a result-effective
variable” as an “exception” to the general principle in
Aller that “the discovery of an optimum value of a varia-
ble in a known process is normally obvious.” Id. at 620.
Our subsequent cases have confirmed that this exception
is a narrow one. Indeed, we have located no case where
this court relied on a variable not being result-effective in
an obviousness analysis. In summarizing the relevant
precedent from our predecessor court, we observed in
Applied Materials that “[i]n cases in which the disclosure
in the prior art was insufficient to find a variable result-
effective, there was essentially no disclosure of the rela-
tionship between the variable and the result in the prior
art.” 692 F.3d at 1297. Likewise, if the prior art does
recognize that the variable affects the relevant property
or result, then the variable is result-effective. Id. (“A
recognition in the prior art that a property is affected by
the variable is sufficient to find the variable result-
effective.”). And “the prior art need not provide the exact
method of optimization for the variable to be result-
effective.” Id.
Although the Board correctly articulated the basic
standard for result-effective variables, Decision, slip op. at
16–17 (citing Applied Materials, 692 F.3d at 1297), it did
22 E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
not follow it. Rather, the Board appears to have required
DuPont to prove that the disclosures in the prior art
“necessarily required” the variable to be within the
claimed range, or that the variables “predictably affected
FDCA yields.” Id. at 19. But that was not DuPont’s
burden. Under the applicable standard, DuPont needed
to show that it was recognized in the prior art, either
expressly or implicitly, that the claimed oxidation reac-
tion was affected by reaction temperature and PO2. See
Applied Materials, 692 F.3d at 1297; Antonie, 559 F.2d at
620. And there does not appear to be a legitimate dispute
that temperature and PO2 were understood to affect the
claimed oxidation reaction, which was known at the time
of invention.
Rather, each reference relevant to claims 1–5 express-
ly disclosed appropriate or preferred temperatures and air
pressures for the reaction, indicating that persons of
ordinary skill understood that the reaction was affected
by temperature and pressure. The testimony of then-
patent owner Furanix’s expert was consistent with this
understanding. He explained that temperature generally
affects the rate of chemical reactions, and if a tempera-
ture is too low, the reaction may not occur at all. J.A.
3852–53. Similarly, Furanix’s expert testified that the
partial pressure of oxygen would affect the reaction rate
because oxygen is a reactant. J.A. 3853–54. Moreover,
the Board itself reasoned that a person of ordinary skill
would have expected that increasing PO2 would increase
oxygen as a reactant and thereby increase yields of
FDCA. Decision, slip op. at 21. Synvina’s counsel repeat-
ed this line of reasoning at oral argument. Oral Arg. at
29:10–29:35. Thus, it cannot be said that “there was
essentially no disclosure of the relationship between”
temperature, PO2, and the claimed oxidation reaction.
Applied Materials, 692 F.3d at 1297. There was such
disclosure.
E.I. DUPONT DE NEMOURS v. SYNVINA C.V. 23
Altogether, the evidence in this case supports the un-
remarkable fact that an oxidation reaction is affected by
temperature and PO2. No substantial evidence supports
the Board’s contrary finding that it made under the wrong
legal standard. 14 On the record evidence, only one finding
was permissible: temperature and PO2 were recognized
as result-effective variables.
D.
Having articulated the legal standards applicable to
this case, we apply them to the challenged claims.
1. Claims 1–5
As previously discussed, claim 1 recites oxidizing
HMF, an HMF derivative such as 5MF, or an ester of
HMF to FDCA under the following conditions: (1) a
temperature between 140 and 200°C; (2) a PO2 of 1–10
bars; (3) a solvent comprising acetic acid; and (4) a cata-
lyst comprising cobalt, manganese, and bromine. ’921
patent col. 7 l. 61–col. 8 l. 6. The Board held that the
combination of the ’732 publication, RU ’177, and the ’318
publication did not render claims 1–5 unpatentable as
obvious. Under the applicable legal standards, we disa-
gree with the Board’s conclusion, and reverse.
The ’732 publication disclosed oxidizing HMF to
FDCA with a cobalt, manganese, and bromine catalyst
and an acetic acid solvent. RU ’177 similarly disclosed
the oxidation of 5MF to FDCA, also with a Co/Mn/Br
catalyst and an acetic acid solvent. Thus, the only rele-
vant difference between these references and claim 1 is in
14 We assume, without deciding, that whether a var-
iable was recognized as result-effective is a question of
fact. See Graham v. John Deere Co. of Kan. City, 383 U.S.
1, 17 (1966) (scope and content of the prior art are factual
issues).
24 E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
the disclosed ranges of temperature and PO2. As we have
concluded, temperature and PO2 were recognized as
result-effective variables, and “discovery of an optimum
value of a result effective variable in a known process is
ordinarily within the skill of the art.” In re Boesch, 617
F.2d 272, 276 (CCPA 1980). The record here presents
such an ordinary case.
The ranges disclosed in the prior art overlapped with
those of claim 1. The temperature range disclosed in the
’732 publication for the preparation of FDCA was 50–
250°C, most preferentially about 50–160°C. The full
range fully encompasses claim 1’s temperature range of
between 140°C and 200°C, and the preferred range over-
laps it. For pressure, the ’732 publication taught an air
pressure corresponding to a PO2 of 14.5 bars, somewhat
higher than the 1–10 bars recited in claim 1. But RU ’177
disclosed appropriate air pressures corresponding to a
PO2 range of 2.1–10.5 bars for the production of FDCA,
substantially overlapping with the claimed range, and the
’318 publication disclosed preferred air pressures corre-
sponding to a PO2 of 2.17–7.24 bars. The prior art thus
disclosed temperature and PO2 ranges which overlapped
with those claimed.
Claims 2–5 fare no differently from claim 1, as each of
these claims adds limitations taught by the ’732 publica-
tion. Claims 2–5 depend either directly or indirectly from
claim 1. Claim 2 limits the reactant to HMF, esters
thereof, and mixtures of the two. ’921 patent col. 8 ll. 7–
10. Claim 3 recites a catalyst with an additional metal,
id. col. 8 ll. 11–12, and claim 4 requires that additional
metal to be zirconium or cerium, id. col. 8 ll. 60–61.
Claim 5 narrows the temperature range to between 160°C
and 190°C. Id. col. 8 ll. 62–63. The ’732 publication
disclosed each of the added limitations of claims 2–4:
HMF as a reactant, and a Co/Mn/Br catalyst optionally
including zirconium. And the ’732 publication’s broad 50–
250°C range fully encompasses the 160–190°C range of
E.I. DUPONT DE NEMOURS v. SYNVINA C.V. 25
claim 5, and the ’732 publication’s preferred range of 50–
160°C abuts it. Thus, with respect to differences with the
prior art, claims 2–5 are not meaningfully distinguished
from claim 1.
As Synvina emphasizes, the Board found that a per-
son of ordinary skill would not have been motivated to
optimize the temperatures and pressures disclosed in the
’732 publication given the teachings of RU ’177 and the
’318 publication. See Decision, slip op. at 17–22. This
finding, however, was premised on the Board’s erroneous
determination that temperature and PO2 were not well-
understood result-effective variables. Consequently, the
Board did not consider the “normal desire of scientists or
artisans to improve upon what is already generally
known,” which “provides the motivation to determine
where in a disclosed set of . . . ranges is the optimum
combination.” Peterson, 315 F.3d at 1330; see also, e.g.,
Applied Materials, 692 F.3d at 1295. That motivation
was sufficient for a skilled artisan to adjust result-
effective parameters like PO2 and temperature to values
within the ranges disclosed in the asserted references that
each concern the same basic oxidation reaction.
Thus, DuPont demonstrated that the prior art as a
whole—three references each disclosing the same oxida-
tion reaction of HMF or an HMF derivative to FDCA—
taught the claimed reaction, as well as conditions either
identical to or overlapping with those of claims 1–5.
Under our precedent, this showing based on the prior art
shifted the burden of production to the patent owner to
demonstrate teaching away, unexpected results, or some
other evidence of nonobviousness. 15 E.g., Galderma, 737
15 We are not persuaded by Synvina’s argument that
our decision in Genetics Institute supports not applying
the burden-shifting framework. That case involved
disclosure of very broad ranges in the prior art—68,000
26 E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
F.3d at 738; Iron Grip Barbell, 392 F.3d at 1322; see
Applied Materials, 692 F.3d at 1298 (“Evidence that the
variables interacted in an unpredictable or unexpected
way could render the combination nonobvious . . . .”).
Furanix and Synvina have failed to do so.
Furanix did not present evidence that the prior art
taught away from the claimed invention, but did argue
that objective evidence of nonobviousness supported
patentability. However, we conclude that substantial
evidence supports the Board’s findings that Furanix failed
to establish unexpected results, satisfaction of a long-felt
need, or copying, and thus hold that the objective evidence
presented by the patent owner does not outweigh the
strong case of obviousness based on the prior art.
First, we address evidence of unexpected results,
which was the primary focus of the Board. The Board
found that Furanix did not establish unexpected results
or criticality for the claimed temperature range. Decision,
slip op. at 30. Synvina does not argue on appeal that the
Board’s findings lack substantial evidence, but does argue
that its objective evidence “is quite robust and deserving
of further evaluation.” Appellee Br. 48. We disagree.
The Board found that Furanix’s objective evidence
“tends to show” that the claimed temperature range may
lead to higher FDCA yields than the ’732 publication.
Decision, slip op. at 29. Specifically, the Board observed
that the ’921 patent specification disclosed an experiment
where HMF was oxidized to FDCA at 78.08% yield, which
is higher than the maximum yield of 58.8% reported in
variants of a protein made up of 2,332 amino acids—that
did not invite routine optimization. 655 F.3d at 1306. In
contrast, this case presents “not especially broad” ranges
of temperature and pressure. Peterson, 315 F.3d at 1330
n.1.
E.I. DUPONT DE NEMOURS v. SYNVINA C.V. 27
the ’732 publication and is also higher than highest
theoretical yield indicated by a different publication. Id.
The Board also found, however, that it could not rule out
other possible explanations for the higher yield than the
claimed temperature range, as other reaction conditions
such as catalyst concentration and reaction time, which
may affect FDCA yields, were not the same in the ’732
publication and the ’921 patent. Id. Perhaps more im-
portantly, the Board found that only a single pressure of
20 bars (4.2 bars PO2) was tested in the experiments
disclosed in table 1, so any unexpected results demon-
strated by Furanix were not commensurate with the scope
of the claims. Id. at 30 (citing Peterson, 315 F.3d at 1331
(affirming finding by the Board that unexpected results
commensurate in scope with claimed range of 1–3% were
not shown where unexpected results were only associated
with 2%)). 16
On appeal, Synvina does not address these shortcom-
ings in its objective evidence. We therefore conclude that
substantial evidence supports the Board’s determination
16 While the specification of the ’921 patent discuss-
es other experiments conducted at different pressures in
tables 2 and 3, ’921 patent col. 6 l. 50–col. 7 l. 12, Synvina
does not argue that these experiments achieved unex-
pected results. Table 2 included data from “comparative
experiments” conducted under a prior art process oxidiz-
ing AMF at a pressure of 30 bars air (6.3 bars PO2), but
these experiments achieved lower FDCA yields of 23.48%
and 29.05%, respectively. Id. col. 6 ll. 50–62, Table 2.
Table 3 reported the oxidation of 5MF at 50 bars air (10.5
bars PO2) and FDCA yields of 42.62% and 39.94%, respec-
tively. Id. col. 6 l. 66–col. 7 l. 12, Table 3. In the prior art,
RU ’177 disclosed appropriate pressures as high as 50
bars air and yields as high as 36% for the oxidation of
5MF to FDCA. J.A. 2439–40.
28 E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
that Furanix did not establish unexpected results or
criticality commensurate in scope with the claims. Accord
Aller, 220 F.2d at 457, 459 (finding no criticality where
claimed conditions allegedly contributed to roughly 20
percentage point improvement in yield).
Furanix also alleged evidence of a long-felt need for a
commercially viable process for making FDCA. Decision,
slip op. at 31. The Board agreed that there was a long-felt
need, but found that the evidence did not show how the
process disclosed in the ’921 patent solved that need, as
the patent only reported laboratory-scale, not commercial-
scale, experiments. Id. at 31–32. As with unexpected
results, on appeal Synvina does not argue that the
Board’s finding lacks substantial evidence, nor does it
explain how the ’921 patent’s lab results would scale to
industrial use. Synvina’s conclusory argument that lab
results suffice to show satisfaction of the long-felt need is
not sufficient to justify overturning the Board’s contrary
finding.
Finally, Furanix argued that DuPont and ADM copied
its process by filing a patent application including exam-
ples of the oxidation of HMF under conditions similar to
those in the ’921 patent. Id. at 32. DuPont responded
that the examples were based on other prior work done
elsewhere. Id. The Board determined that a single
example in a patent application was not sufficient evi-
dence to establish copying. Id. On appeal, Synvina points
to the patent application and DuPont’s recently con-
structed plant, along with its purported operating ranges
that DuPont relies on for standing, as evidence of copying.
Even considering the now-operating plant, we are not
persuaded by Synvina’s evidence of copying. Synvina has
not alleged any direct evidence of copying, and the prior
art disclosed the same reaction as the ’921 patent and
identical or overlapping reaction conditions. Where the
prior art is so close, it has not been shown that DuPont
E.I. DUPONT DE NEMOURS v. SYNVINA C.V. 29
copied the ’921 patent rather than the other references
within the prior art. See Wyers v. Master Lock Co., 616
F.3d 1231, 1246 (Fed. Cir. 2010) (“[C]opying requires
evidence of efforts to replicate a specific product . . . .”).
Thus, as with the other evidence of nonobviousness, we
conclude that substantial evidence supports the Board’s
findings.
At bottom, this case involves a strong case of obvious-
ness based on very close prior art and weak evidence of
nonobviousness. We conclude that the Board therefore
erred in not concluding that claims 1–5 would have been
obvious at the time of the claimed invention.
2. Claims 7–9
Claims 7–9 recite the same oxidation reaction as
claim 1 with the added limitation of esterifying the FDCA
product. The esterification of FDCA was known at the
time of the invention, as acknowledged in the ’921 patent,
col. 5 ll. 42–65. The Board found that the two additional
references relevant to claims 7–9, Lewkowski and Oae,
also disclosed the esterification of FDCA. Decision, slip
op. at 10–11. Synvina does not argue that claims 7–9 are
separately patentable from claims 1–5. See Appellee Br.
12 (“The Board’s determination that those claims are
patentable is supported by the same substantial evidence
as claims 1–5.”); Appellee Br. 40 (same). As we have
concluded that claims 1–5 would have been obvious at the
time of the invention, we hold the same for claims 7–9.
CONCLUSION
We have considered Synvina’s remaining arguments
but are not persuaded. 17 For the foregoing reasons, we
17We do not address DuPont’s claim construction
argument, as resolving it is unnecessary to our decision.
30 E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
reverse the Board’s decision with respect to claims 1–5
and 7–9.
REVERSED