Federal Circuit Affirms PTAB Interference Decision Based on Claim Construction; Newman Dissents

On November 4, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), concluding that the PTAB did not err in its construction of a disputed claim limitation and affirming the PTAB’s judgment in favor of the University of Wyoming Research Corporation (Wyoming). Chevron U.S.A, Inc. v. University of Wyoming Research. Circuit Judge Newman wrote a separate dissenting opinion, arguing that the PTAB “erred at the threshold,” and there was no interference in fact.

District Court Claim Construction

Wyoming is the owner of U.S. Patent No. 8,367,425 (the ’425 patent), which is directed to a “procedure whereby (1) solvents of increasing strength are successively passed over asphaltenes that have been segregated in a packed column from a hydrocarbon such as oil; and (2) amounts of asphaltenes dissolved and eluted from the column by the various solvents yield information about the oil.” In the interference proceeding, the single Count of the interference was between claim 1 of Chevron U.S.A. Inc.’s (Chevron) U.S. Patent Application No. 12/833,814 (the ’814 application) and claim 5 of Wyoming’s ’425 patent, which was copied from Chevron in order to provoke the interference.

A main issue in the interference was the construction of the claim terms “gradually” and “continuously” in the limitation “gradually and continuously changing the alkane mobile phase solvent to a final mobile phase solvent.” The PTAB construed “gradually” to mean that “the alkane mobile phase solvent is incrementally removed from the column over a period of time by continuously adding a final mobile phase solvent” and construed “continuously” to mean “without interruption.” As a result of the claim constructions, the PTAB held that Wyoming’s ’425 patent had adequate written description for the limitation at issue. The PTAB also concluded that Wyoming was entitled to the benefit of two earlier filed patent applications and assigned Wyoming status as senior party and entered judgment in its favor. Chevron appealed to the PTAB.

CAFC Analysis

On appeal, Chevron argued that the PTAB’s construction of the limitation “gradually and continuously changing the alkane mobile phase solvent to a final mobile phase solvent” was erroneous and it should have been construed to mean that “the amount of alkane mobile phase solvent fed into the column is incrementally decreased from 100% to 0% over a period of time without interruption while the amount of final mobile phase solvent fed into the column is incrementally increased from 0% to 100% over the same period of time.” The PTAB rejected Chevron’s argument that “gradually and continuously changing” referred to feeding alkane mobile phase solvent to the “inlet of the column” and instead concluded that “gradually and continuously changing” referred to the change of solvents in the column, not at the inlet to the column. The PTAB also rejected Chevron’s assertion that the PTAB’s claim construction rendered the limitation meaningless because it encompassed even sudden, abrupt solvent changes. Noting that the PTAB’s construction “is consistent with, and indeed tracks a verbatim definition set forth in the ‘814 application,” the CAFC agreed with Wyoming that the PTAB did not err in its construction of the “gradually and continuously” limitation and affirmed the PTAB’s judgment in favor of Wyoming.

Judge Newman’s Dissent

Circuit Judge Newman wrote a separate dissenting opinion, expressing that the PTAB “erred at the threshold, in allowing Wyoming to copy Chevron’s claims, in the absence of written description and enablement of the Chevron method of gradual and continual change of solvent.” Newman also noted that since “Wyoming did not establish conception and reduction to practice of the subject matter of the Count, either constructively or through evidence,’ the PTAB’s award of priority to Wyoming was “contrary to law.”

Newman explained that Chevron argued that Wyoming did not have support for the “gradually and continuously changing” limitation and the PTAB recognized, but disregarded, the differences in the Wyoming method, which required an abrupt and discontinuous solvent change, and awarded Wyoming priority to Chevron’s method. Citing Storer v. Clark, Newman noted that “the specification must contain adequate written description and enablement for the subject matter of the Count.” Newman stated, “[t]hese requirements are plainly not met by Wyoming.” In addition, Newman pointed to the PTAB’s speculative statement that “at least in part we think,” as the only reason for the PTAB’s “ruling that Wyoming met the requirements of conception, written description, enablement, and reduction to practice of the interference Count.” Noting that the Wyoming and Chevron specifications describe and claim different inventions, Newman asserted that there was no interference in fact.