Federal Circuit Report

• Jurisdiction: United States,Federal
• Citation: Vol. 43 No. 4
• Publication year: 2018
• Author: Rex Hwang
• topic: Patent law,Intellectual Property,Federal,Ongoing or Prospective Litigation

Federal Circuit Report

Rex Hwang

Jeffer Mangels Butler & Mitchell LLP

Desmond Jui

Lathrop Gage LLP

E.I. DUPONT DE NEMOURS & CO. V. SYNVINA C.V.

This quarter, we are going to Focus on a recent Federal Circuit decision that clarifies the burden of production in an inter partes review (IPR) proceeding when a claimed invention is shown to fall within a range disclosed in the prior art.¹ The Federal Circuit has long held that in invalidity proceedings before a district court, a demonstrated overlap between a claimed range and a prior art range creates an initial presumption of obviousness, shifting the burden to the patentee to produce contrary evidence of non-obviousness.² In a case of first impression, the Federal Circuit has extended this presumption and accompanying burden-shifting framework from overlapping range district court cases to IPRs. The new Synvina decision explains that it does not abrogate—but rather harmonizes with—other recent Federal Circuit decisions on IPR burdens, notably In re Magnum Oil Tools Int'l Ltd.,³ which held that no burden shifts from the petitioner to the patentee to produce evidence of non-obviousness upon the mere institution of an IPR, and reaffirmed that the ultimate burden of persuasion always remains with the petitioner.⁴ The Synvina decision provides concrete guidance for IPR litigants and practitioners tasked with challenging or defending patents that purport to claim inventions that overlap in some way with the prior art.

Brief Overview of Relevant Case History

The underlying IPR proceedings at issue here are deftly summarized in the Federal Circuit's opinion. Petitioner/appellants E.I. du Pont de Nemours and Archer-Daniels Midland (collectively, "DuPont") challenged U.S. Patent No. 8,865,921 ("the '921 Patent"),

which was owned by Furanix Technologies B.V. ("Furanix"). Appellee Synvina subsequently acquired the '921 Patent from Furanix.⁵ The '921 Patent claims, among other things, a method of oxidizing the compound 5-hydroxymethylfurfural ("HMF") or a derivative under specified conditions to form another compound, 2,5-furan dicarboxylic acid ("FDCA").⁶ Its claims and specification recite four relevant reactive conditions for forming FDCA by oxidizing HMF, each involving: a specified (1) temperature range; (2) oxygen partial pressure range; (3) solvent; and (4) catalyst.⁷

The Board instituted review as to Dupont's IPR request. Three of the instituted prior art references—patents referred to as "RU '177", "'732", and "'318"—disclosed oxidizing HMF or its derivatives to produce FDCA, albeit under different conditions.⁸ Those prior art conditions, however, were broader and overlapped in part with the conditions specified by the '921 Patent. The following table, reproduced directly from the Federal Circuit's opinion, compares the range of reactive conditions disclosed in the '921 Patent with those disclosed in the instituted prior art references:⁹

Reference	Temperature	Pressure	Solvent	Catalyst
'921 patent	Between 140-200°C	1-10 bars	Acetic acid	Co/Mn/Br
RU'177	115-140°C	2.1-10.5 bars	Acetic acid	Co/Mn/Br
'732

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