ORGANIK KIMYA AS v. ROHM AND HAAS COMPANY: October 11, 2017. Before Prost, Newman, and Taranto.

Takeaway:

• Where a patent specification uses the word ‘include’ immediately followed by the phrase ‘are those which,’ the element is properly limited to the embodiments “which exhibit the functional characteristics thereafter described.”

Procedural Posture:

The Petitioner, Organik Kimya AS (“Organik”) requested IPRs of two patents owned by Rohm & Haas, directed to processes for preparing certain emulsion polymers having improved opacity. The PTAB (“Board”) issued Final Written Decisions in both IPRs, sustaining patentability of all challenged claims. Petitioner appealed. The Federal Circuit affirmed patentability of all challenged claims.

Synopsis:

• Claim Construction: On appeal, Organik argued that the PTAB adopted an overly narrow interpretation of the term “swelling agent,” and that the word “include” opened the definition of “swelling agent” to include bases that do not act by penetrating the shell, that are not used under the conditions described in the specification, and that have not been shown to achieve swelling. The Federal Circuit It found appropriate the PTAB’s narrow construction of “swelling agent” because the word ‘include’ was immediately followed by the phrase ‘are those which,’ which limited suitable swelling agents to “only those which exhibit[ed] the functional characteristics thereafter described” in the patent.
• Inherent Anticipation: The Federal Circuit disagreed that the Toda reference disclosed a “swelling agent” as construed by the Board. Organik argued that inherently, “the potassium hydroxide used by Toda must be a swelling agent because it is a base, and the same type of voided polymer particles are produced by the methods disclosed in Toda as in the ’435 Patent.” The Federal Circuit rejected this argument, agreeing that the PTAB’s contrary finding was supported by substantial evidence. The potassium hydroxide base was present in Toda, “but not as a swelling agent and not under conditions that swell the core.” Patentee’s expert verified this by experimentation, and Organik did not present contradictory evidence.
• Obviousness: Organik argued that the Touda reference showed voided emulsion polymerization and the presence of a base, and thus the claims were obvious over it. The Federal Circuit disagreed, affirming PTAB’s factual findings that the core and the shell are only slightly acidic, and that the shell of the Touda polymer would be too hard for the bases to permeate under the described conditions. These findings were in accordance with law and supported by substantial evidence in the record—namely, the experiments and testimony of R&H’s expert—and Petitioner did not provide “any experimental evidence contradicting” that of the Patentee.