Federal Circuit Holds That Art Teaches Away From Its Own Disclosure

| Daniel P. Hughes


Before Newman, Dyk, and Reyna. Appeal from Patent Trial and Appeal Board.

Summary: A reference may teach away from modifying a particular embodiment to include features disclosed elsewhere in the same reference.

Daikin requested inter partes review of two of Chemours’ patents directed to insulating communication cables by pulling wires through melted polymers flowing at a flow rate. The PTAB found the challenged claims invalid as obvious, holding that it would have been obvious to modify an embodiment found in a prior art reference to use the claimed flow rate because the claimed flow rate was disclosed elsewhere in the same reference.

On appeal, the Federal Circuit reversed, finding that the prior art reference taught away from using the claimed flow rate in the relevant embodiment. The Federal Circuit also held that the Board legally erred by requiring evidence of market share to prove commercial success of the patented invention. Instead, the Federal Circuit found that evidence of sales alone could be enough. 

Judge Dyk dissented in part, stating that the prior art did not sufficiently teach away from the claimed flow rate.

Editor: Paul Stewart