Here is a summary and analysis of the litigation in Chemours Company FC, LLC v. Daikin Industries, Ltd. (Case No. 1:17-cv-01612):
Background
Chemours Company FC, LLC filed a patent infringement lawsuit against Daikin Industries, Ltd. and Daikin America, Inc. in the U.S. District Court for the District of Delaware in 2017. The case involved two patents owned by Chemours:
- U.S. Patent No. 7,122,609 ('609 patent)
- U.S. Patent No. 8,076,431 ('431 patent)
These patents relate to fluorinated ethylene-propylene (FEP) copolymers with specific properties, including a certain melt flow rate range, low alkali metal content, and few unstable endgroups[1].
Key Events
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Daikin filed inter partes review (IPR) petitions challenging the validity of all claims in both patents in 2018[6].
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In November 2019, the Patent Trial and Appeal Board (PTAB) issued final written decisions finding all challenged claims unpatentable as obvious[4].
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Chemours appealed the PTAB decisions to the U.S. Court of Appeals for the Federal Circuit.
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On July 22, 2021, the Federal Circuit reversed the PTAB's unpatentability decisions[4].
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The case then returned to the district court for further proceedings on the infringement claims.
Federal Circuit Decision
The Federal Circuit's July 2021 decision addressed several key issues:
Teaching Away
The court found that the PTAB erred in its analysis of whether the prior art (Kaulbach patent) taught away from the claimed invention. The Federal Circuit determined that Kaulbach actually cautioned against using processing techniques that increase flow rate, which supported Chemours' non-obviousness argument[7][9].
Commercial Success
The Federal Circuit ruled that the PTAB improperly rejected Chemours' evidence of commercial success by:
- Using a limitation-by-limitation analysis rather than considering the invention as a whole[7].
- Requiring market share data when sales data alone can be sufficient to show commercial success[7][9].
Blocking Patent Doctrine
The court found that the PTAB misapplied the "blocking patent" doctrine by considering the challenged patents themselves as blocking patents. The Federal Circuit clarified that a blocking patent must predate the claimed invention[7][9].
Current Status and Implications
After the Federal Circuit's reversal, the case returned to the district court. The parties have engaged in claim construction proceedings, with disputes over terms like "melt flow rate"[4].
This case highlights several important patent law concepts:
- The proper application of the "teaching away" doctrine in obviousness analyses.
- The role of commercial success evidence in non-obviousness arguments.
- Correct application of the blocking patent doctrine.
The Federal Circuit's decision provides guidance on these issues that will likely impact future patent cases, particularly in the context of IPR proceedings and subsequent appeals.
Key Takeaways
- The case underscores the importance of a holistic analysis of prior art references in obviousness determinations.
- It reinforces that commercial success can be a powerful indicator of non-obviousness when properly linked to the claimed invention.
- The decision clarifies the limits of the blocking patent doctrine, preventing its misapplication to the challenged patents themselves.
This litigation demonstrates the complex interplay between district court proceedings and PTAB reviews, as well as the critical role of Federal Circuit appeals in shaping patent law doctrines.
"Contrary to the Board's decision, the separate disclosure of individual limitations, where the invention is a unique combination of three interdependent properties, does not negate a nexus." - Federal Circuit in Chemours v. Daikin[7]
FAQs
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What were the key patents involved in this litigation?
The key patents were U.S. Patent No. 7,122,609 and U.S. Patent No. 8,076,431, both owned by Chemours and relating to fluorinated ethylene-propylene (FEP) copolymers.
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What was the main issue decided by the Federal Circuit?
The Federal Circuit reversed the PTAB's decision that found the challenged patent claims obvious, addressing issues of teaching away, commercial success evidence, and the blocking patent doctrine.
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How did the Federal Circuit rule on the commercial success evidence?
The court found that the PTAB erred by rejecting commercial success evidence based on a limitation-by-limitation analysis and by requiring market share data when sales data alone can be sufficient.
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What is the significance of the "teaching away" doctrine in this case?
The Federal Circuit emphasized that the prior art (Kaulbach patent) actually cautioned against techniques that would lead to the claimed invention, supporting Chemours' non-obviousness argument.
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How did the court clarify the blocking patent doctrine?
The Federal Circuit explained that a blocking patent must predate the claimed invention and that the challenged patents themselves cannot be considered blocking patents in the analysis.
Sources:
- https://casetext.com/case/chemours-company-fc-llc-v-daikin-industries-ltd
- https://casetext.com/case/chemours-co-fc-v-daikin-indus
- https://fedcircuitblog.com/wp-content/uploads/2021/09/Petition-En-Banc-20-1289.pdf
- https://ipwatchdog.com/2021/07/30/teaching-away-commercial-success-blocking-patent-doctrines-cafc-spotlight/id=136135/
- https://maxeyfisher.com/chemours-v-daikin-the-us-court-of-appeals-for-the-federal-circuit-clarifies-concepts-of-teaching-away-and-commercial-success-from-ptab-decision/
