Idemitsu Kosan Co., Ltd., v. SFC Co. Ltd. (Fed. Cir. 2017).
The decision here is important as one example of a single-reference obviousness decision upheld by the Federal Circuit on appeal. Here, the prior-art is a published international patent application also owned by the patentee and with overlapping (but not identical) inventorship.
Idemitsu’s U.S. Patent No. 8,334,648 covers an organic LED and claims priority back to a July 19, 2002 Japanese patent application. The asserted prior art is an international application (PCT) publication from a two-weeks prior – July 4, 2002. International Publication WO 02/052904 (claiming priority to December 2000 and named Arakane). At this point it is unclear why, but Idemitsu never challenged the status of prior-art status of Arakane.
In its obviousness analysis, the Board found that Arakane taught all of the elements of ‘648 patent’s challenged claims and that it would have been obvious to combine them in the way claimed. On appeal, the Federal Circuit has affirmed – holding that the Board had made reasonable conclusions both on the facts and the law.
The case includes a couple of procedural findings — importantly the Court permitted (at least in this situation) the PTAB to reach factual and legal conclusions not directly addressed in the petition.
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Note: The opinion here does not discuss why the single-reference decision was based upon OBVIOUSNESS rather than ANTICIPATION.