`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`E.I. DUPONT DE NEMOURS & COMPANY,
`ARCHER DANIELS MIDLAND COMPANY,
`Appellants
`
`v.
`
`SYNVINA C.V.,
`Appellee
`______________________
`
`2017-1977
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2015-
`01838.
`
`______________________
`
`Decided: September 17, 2018
`______________________
`
`MICHAEL J. FLIBBERT, Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP, Washington, DC, argued for
`appellants. Also represented by CHARLES COLLINS-CHASE.
`
` PAUL M. RICHTER, JR., Pepper Hamilton LLP, New
`York, NY, argued for appellee. Also represented by MARK
`ALEXANDER CHAPMAN, Hunton Andrews Kurth LLP, New
`York, NY.
` ______________________
`
`Before LOURIE, O’MALLEY, and CHEN, Circuit Judges.
`
`

`

`2
`
`E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
`
`LOURIE, Circuit Judge.
`E. I. du Pont de Nemours and Company and Archer-
`Daniels-Midland Company (collectively, “DuPont”) appeal
`from an inter partes review (“IPR”) decision of the United
`States Patent and Trademark Office Patent Trial and
`Appeal Board (the “Board”). See DuPont v. Furanix
`Techs. B.V., No. IPR2015-01838, Paper No. 43, slip op.
`(P.T.A.B. Mar. 3, 2017) (“Decision”). The Board held that
`DuPont failed to prove by preponderant evidence that
`claims 1–5 and 7–9 of U.S. Patent 8,865,921 (“’921 pa-
`tent”) would have been obvious at the time of the claimed
`invention. We conclude that the Board applied the wrong
`legal standards for obviousness, and reverse.
`I. BACKGROUND
`Synvina C.V. (“Synvina”)1 owns the ’921 patent, di-
`rected to a method of oxidizing 5-hydroxymethylfurfural
`(“HMF”) or an HMF derivative, such as 5-methylfurfural
`(“5MF”) or 2,5-dimethylfuran (“DMF”), under specified
`reaction conditions to form 2,5-furan dicarboxylic acid
`(“FDCA”). ’921 patent Abstract; id. col. 7 l. 65. Undisput-
`edly, the oxidation of HMF and its derivatives to yield
`FDCA was known at the time of the claimed invention.
`The main issue on appeal is whether the reaction condi-
`tions claimed in the ’921 patent—specifically, the choice of
`temperature, pressure, catalyst, and solvent—would have
`been obvious to a person of ordinary skill at the time of
`the invention.
`
`A.
`DuPont and Synvina are competitors in the produc-
`tion of FDCA for industrial use. FDCA has attracted
`
`
`1 Synvina acquired the ’921 patent from Furanix
`Technologies B.V. (“Furanix”), the patent owner during
`the IPR proceeding.
`
`

`

`E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
`
`3
`
`commercial interest because of its potential in the “green”
`chemical industry. Since FDCA can be produced from
`sugars using biological or chemical conversion, the U.S.
`Department of Energy has identified FDCA as a potential
`“building block[]” for “high-value bio-based chemicals or
`materials.” U.S. Department of Energy, Top Value Added
`Chemicals from Biomass 1 (2004); see ’921 patent col. 1 ll.
`34–36.
`The ’921 patent claims a method of producing FDCA
`by oxidizing HMF or an HMF derivative with an oxygen-
`containing gas such as air. Claim 1 is illustrative and
`reads as follows:
`1. A method for the preparation of 2,5-furan di-
`carboxylic acid comprising the step of contacting a
`feed comprising a compound selected from the
`group
`consisting of 5-hydroxymethylfurfural
`(“HMF”), an ester of 5-hydroxymethylfurfural, 5-
`methylfurfural,
`5-(chloromethyl)furfural,
`5-
`methylfuroic acid, 5-(chloromethyl)furoic acid, 2,5-
`dimethylfuran and a mixture of two or more of
`these compounds with an oxygen-containing gas,
`in the presence of an oxidation catalyst comprising
`both Co and Mn, and further a source of bromine,
`at a temperature between 140° C. and 200° C. at
`an oxygen partial pressure of 1 to 10 bar, wherein
`a solvent or solvent mixture comprising acetic acid
`or acetic acid and water mixtures is present.
`’921 patent col. 7 l. 61–col. 8 l. 6 (emphasis added). Thus,
`claim 1 recites four relevant reaction conditions: (1) a
`temperature between 140°C and 200°C; (2) an oxygen
`partial pressure (“PO2”)2 of 1 to 10 bar; (3) a solvent
`
`
`2 PO2 is the pressure in a gas mixture attributable
`to oxygen. Adding up the partial pressures of each gas in
`
`

`

`4
`
`E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
`
`comprising acetic acid; and (4) a catalyst comprising
`cobalt (“Co”), manganese (“Mn”), and bromine (“Br”). Id.
`The specification describes the reaction conditions in
`further detail. We begin with temperature. At several
`points, the specification refers to the reaction occurring at
`temperatures “higher than 140° C.” Id. Abstract, col. 2 ll.
`41–42, col. 2 ll. 57–58, col. 5 ll. 18–19, col. 5 l. 39, col. 5 l.
`57. When the specification refers to the temperature
`range in claim 1, it states that “[t]he temperature of the
`reaction mixture is at least 140° C., preferably from 140
`and 200° C., most preferably between 160 and 190° C.”
`Id. col. 4 ll. 56–58. But “[t]emperatures higher than
`180°C. may lead to decarboxylation and to other degrada-
`tion products.” Id. col. 4 ll. 58–59.
`Second, the specification provides the following guid-
`ance regarding reaction pressure:
`The pressure in a commercial oxidation process
`may vary within wide ranges. When a diluent is
`present, and in particular with acetic acid as dilu-
`ent, the temperature and the pressure in such a
`process are not independent. The pressure is de-
`termined by the solvent (e.g., acetic acid) pressure
`at a certain temperature. The pressure of the re-
`action mixture is preferably selected such that the
`solvent is mainly in the liquid phase.
`Id. col. 4 ll. 34–41. Because oxygen functions as the
`oxidant in the reaction, its partial pressure is particularly
`relevant. “In the case of continuously feeding and remov-
`ing the oxidant gas to and from the reactor, the oxygen
`partial pressure will suitably be between 1 and 30 bar or
`more preferably between 1 and 10 bar.” Id. col. 4 ll. 51–55
`(emphasis added).
`
`the mixture gives the total air pressure. Air consists of
`about 21% oxygen. See, e.g., Decision, slip op. at 17–18.
`
`

`

`E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
`
`5
`
`Third, as indicated above, “[t]he most preferred sol-
`
`vent is acetic acid.” Id. col. 4 ll. 17–18. Fourth, the cata-
`lyst is preferably “based on both cobalt and manganese
`and suitably containing a source of bromine.” Id. col. 3 ll.
`38–40. The catalyst may also contain “one or more addi-
`tional metals, in particular [zirconium] and/or [cerium].”
`Id. col. 3 ll. 57–58.
`Several dependent claims recite narrower conditions
`than those recited in claim 1. Claims 2–5 each depend
`from claim 1. Claim 2 limits the starting material to
`HMF, esters of HMF, and a mixture thereof. Id. col. 8 ll.
`7–10. Claims 3 and 4 recite a catalyst with an additional
`metal, such as zirconium (“Zr”) or cerium (“Ce”). Id. col. 8
`ll. 11–12, 60–61. And claim 5 recites a narrower tempera-
`ture range between 160 and 190°C. Id. col. 8 ll. 62–63.
`By conducting the oxidation reaction under the dis-
`closed reaction conditions, the specification states that the
`inventors “surprisingly” achieved high yields of FDCA, id.
`col. 2 ll. 39–45, and both Furanix and Synvina have
`pointed to these yields as objective evidence of nonobvi-
`ousness. The ’921 patent reports yields for several reac-
`tions under the claimed conditions. Table 1 summarizes
`results
`for oxidizing HMF, an ester of HMF, 5-
`acetoxymethylfurfural (“AMF”), or a mixture of the two to
`produce FDCA. Multiple experiments were conducted at
`a temperature of 180°C and a pressure of 20 bars air in an
`acetic acid solvent. Id. col. 6 ll. 34–46. The highest yield
`of 78.08% was obtained with only HMF as a reactant,
`while the lowest was 46.85% using AMF alone. Id. Table
`1.
`
`Table 2 shows the FDCA yields reported in table 1 for
`the AMF oxidation reactions compared to prior art pro-
`cesses conducted at lower temperatures and a pressure of
`30 bars air. Id. Table 2; id. col. 6 ll. 50–62. FDCA yields
`achieved using prior art processes were “lower than the
`
`

`

`6
`
`E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
`
`results obtained at higher temperature.” Id. col. 6 ll. 50–
`61.
`Table 3 shows FDCA yields for six experiments when
`HMF derivatives 5MF or DMF are oxidized with air. The
`temperature was 180°C, the air pressure was 50 bars, and
`the solvent was acetic acid. Id. col. 6 l. 66–col. 7 l. 12.
`Again, the concentration of bromine in the catalyst varied
`across experiments. Reported FDCA yields for 5MF were
`42.62% and 39.94%. Id. Table 3. For DMF, FDCA yields
`ranged from 7.19% to 16.17%. Id.
`In addition to claiming methods of producing FDCA,
`the ’921 patent also claims certain post-production pro-
`cesses. Claim 7 is independent and recites producing
`FDCA under the conditions in claim 1, and then “esterify-
`ing the thus obtained product.” Id. col. 9 ll. 1–14. Claims
`8 and 9 depend from claim 7 and recite further details of
`the esterification not relevant to this appeal. Id. col. 9 ll.
`15–19. The specification recognizes that “[t]he esterifica-
`tion of [FDCA] is known.” Id. col. 5 ll. 42–48 (citing U.S.
`Patents 2,673,860 and 2,628,249); see also id. col. 5 l. 62–
`col. 6 l. 2 (citing GB 621,971).
`B.
`DuPont petitioned for IPR of the ’921 patent. The pe-
`tition asserted several grounds of obviousness, two of
`which are relevant on appeal: (1) claims 1–5 over the ’732
`publication,3 alone or in combination with RU ’1774 and
`the ’318 publication;5 and (2) claims 7–9 over the ’732
`publication in view of Applicants Admitted Prior Art, or
`
`
`3
`International Publication WO 01/72732.
`4
`Inventor’s Certificate RU-448177.
`5 U.S.
`Patent
`Application
`2008/0103318.
`
`Publication
`
`

`

`E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
`
`7
`
`additionally Lewkowksi6 and/or Oae,7 and optionally in
`view of RU ’177 and the ’318 publication.
`The Board instituted review of claims 1–5 and 7–9
`based on grounds 1 and 2 above, but did not institute
`review of the other claims or grounds.8 DuPont v. Fu-
`ranix Techs. B.V., No. IPR2015-01838, Paper No. 10, slip
`op. at 15, 19 (P.T.A.B. Mar. 9, 2016) (“Institution Deci-
`sion”).
`Each of the three references relevant to claims 1–5
`disclosed oxidizing HMF or an HMF derivative to produce
`FDCA, but did so under somewhat different conditions.
`First, the ’732 publication disclosed oxidizing HMF to
`FDCA. It included “preferred temperatures” of “about 50°
`to 250°C, most preferentially about 50° to 160°C.” J.A.
`2360. Like the ’921 patent, the ’732 publication indicated
`that the reaction pressure “is such to keep the solvent
`mostly in the liquid phase.” Id. Specifically, the reference
`disclosed that an air pressure of 1000 psi “gave good
`yields of [FDCA].” J.A. 2368. 1000 psi amounts to a PO2
`of approximately 14.5 bars. The disclosed solvent was
`“preferably acetic acid,” J.A. 2357, and “the catalyst can
`be comprised of Co and/or Mn, and Br, and optionally Zr,”
`
`
`6 Jaroslaw Lewkowski, Synthesis, Chemistry and
`Applications of 5-Hydroxymethylfurfural and Its Deriva-
`tives, ARKIVOC 17 (2001).
`7 Shigeru Oae, A Study of the Acid Dissociation of
`Furan- and Thiophenedicarboxylic Acids and of the Alka-
`line Hydrolysis of Their Methyl Esters, 38(8) Soc. Jpn.
`1247 (1965).
`8 Neither party has requested any action based on
`the Supreme Court’s decision in SAS Institute Inc. v.
`Iancu, 138 S. Ct. 1348 (2018), and we do not order such
`action sua sponte, see PGS Geophysical AS v. Iancu, 891
`F.3d 1354, 1361–63 (Fed. Cir. 2018).
`
`

`

`8
`
`E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
`
`J.A. 2358. Reported FDCA yields ranged from 14% to
`58.8%.
`Second, RU ’177 disclosed oxidizing 5MF to form
`FDCA. It included a method where the oxidation reaction
`“is conducted at the temperature of 115–140°C and air
`pressure of 10–50 atm.” J.A. 2440. An air pressure of 10–
`50 atm roughly corresponds to a PO2 of 2.1–10.5 bars.9
`RU ’177 also generally recites an “aliphatic carboxylic
`acid” as the solvent, and an example in the specification
`specifically uses acetic acid. Id. The catalyst in RU ’177
`is “a mixture of cobalt acetate and manganese acetate, as
`well as bromine-containing compounds, such as ammoni-
`um bromide.” Id. Purportedly, the process “has a number
`of advantages compared to prior art: it utilizes readily
`available and inexpensive reagents as the initial com-
`pound and catalysts; [and] the method is a one-step
`process.” J.A. 2439. FDCA yields reportedly ranged from
`23–36%.
`Third, the ’318 publication taught the oxidation of
`HMF to make FDCA. The reaction temperature was
`“from about 50° C. to about 200° C,” with a preferred
`range of 100–160°C. J.A. 2484, 2486. “A preferred pres-
`sure can typically be in the range of 150–500 psi,” J.A.
`2486, corresponding to a PO2 range in air of roughly 2.17–
`7.24 bars. Unlike the ’921 patent and the other refer-
`ences, the ’318 publication taught using water as a sol-
`vent and a platinum catalyst.10 Under these conditions,
`the ’318 publication reported yields “as high as 98%.” J.A.
`2486.
`
`
`9 1 bar is approximately equal to 1 atm.
`10 The ’318 publication did indicate, however, that
`“[w]here an acidic aqueous solution solvent system is
`utilized, an appropriate acid can be added such as, for
`example, acetic acid.” J.A. 2486.
`
`

`

`E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
`
`9
`
`The table below summarizes the reaction conditions
`disclosed in claim 1 of the ’921 patent and in the RU ’177,
`’732, and ’318 references. For simplicity and to enable
`comparison between pressure ranges, we restate only the
`PO2 ranges in bars under the assumption that air is the
`oxidant.
`
`Reference Temperature Pressure Solvent Catalyst
`
`’921
`patent
`
`Between
`140–200°C
`
`1–10
`bars
`
`Acetic
`acid
`
`Co/Mn/Br
`
`RU ’177
`
`115–140°C
`
`2.1–10.5
`bars
`
`Acetic
`acid
`
`Co/Mn/Br
`
`’732
`
`’318
`
`50–250°C,
`preferably
`50–160°C
`
`50–200°C,
`preferably
`100–160°C
`
`14.5
`bars
`
`2.17–
`7.24
`bars
`
`Acetic
`acid
`
`Co/Mn/Br,
`optionally
`Zr
`
`Water
`
`Pt
`
`Two additional references, Lewkowski and Oae, are
`relevant to the FDCA esterification claims 7–9. Con-
`sistent with the ’921 patent’s acknowledgment that esteri-
`fication of FDCA was known at the time of the invention,
`’921 patent col. 5 l. 42, Lewkowski and Oae both disclosed
`esterifying FDCA.
`
`C.
`In its final written decision, the Board held the insti-
`tuted claims not unpatentable as obvious. The Board
`rejected DuPont’s contention that a burden-shifting
`framework applied, reasoning that our decisions in In re
`Magnum Oil Tools International, Ltd., 829 F.3d 1364,
`1375 (Fed. Cir. 2016), and Dynamic Drinkware, LLC v.
`National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`
`

`

`10
`
`E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
`
`2015), foreclosed such a framework in an IPR. Decision,
`slip op. at 15.
`Although the Board recognized that the prior art dis-
`closed oxidizing HMF or its derivatives to FDCA under
`reaction conditions that overlapped with those claimed in
`the ’921 patent, it found that “none of the references
`relied upon by Petitioners expressly taught a process in
`which HMF or its derivatives were oxidized to FDCA
`using a Co/Mn/Br catalyst at a reaction temperature of
`between 140°C and 200°C while also maintaining the
`[PO2] between 1 and 10 bar.” Id. at 16. Furthermore, the
`Board held that DuPont failed to prove that “reaction
`temperature and [PO2] were recognized as result-effective
`variables in the prior art, or that the adjustment of those
`parameters to within the claimed ranges would have been
`a matter of routine experimentation.” Id. at 25.
`The Board considered objective evidence of nonobvi-
`ousness, but found “that evidence to be less probative in
`supporting a conclusion of non-obviousness.” Id. at 15.
`Primarily, then-patent owner Furanix alleged that the
`reaction conditions claimed in the ’921 patent achieved
`unexpectedly high yields of FDCA. Id. at 25–26. While
`the Board recognized that the reaction conditions recited
`in claim 1 “can lead to higher FDCA yields at least in
`some circumstances,” id. at 29, the Board observed the
`following weaknesses in the evidence of unexpected
`results: (1) Furanix relied only on results from a single
`PO2 value, not values commensurate with the scope of the
`claim; (2) Furanix did not demonstrate how the increased
`yields would be considered a difference in kind rather
`than degree; and (3) other, unclaimed parameters such as
`reaction time and catalyst concentration could have
`contributed to higher yields, and those parameters were
`not held constant between the experiments from table 1
`and experiments conducted under prior art conditions, id.
`at 29–30. Thus, ultimately the Board found that Furanix
`
`

`

`E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
`
`11
`
`failed to establish unexpected results or criticality. Id. at
`30.
`Likewise, the Board determined that the process
`claimed in the ’921 patent did not solve a long-felt need.
`Id. at 31. Nor did the Board find that DuPont copied the
`’921 patent. Id. at 32.
`DuPont appealed, challenging the Board’s conclusion
`of nonobviousness. In its responsive brief, Synvina as-
`serted that DuPont lacks standing to appeal. Because
`Synvina’s challenge to standing implicates our jurisdic-
`tion, we first decide the standing issue, and then turn to
`the merits.
`
`DISCUSSION
`I. Standing
`Synvina argues that DuPont lacks standing to appeal
`the Board’s decision to this court because DuPont has not
`suffered an actual or imminent injury in fact. Since no
`action for infringement of the ’921 patent has been
`brought against DuPont, Synvina contends that DuPont
`can posit only speculative future harm. According to
`Synvina, such hypothetical injury is insufficient to meet
`its burden to prove standing.
`DuPont responds that a specific threat of infringe-
`ment is not necessary for an appellant to demonstrate
`injury in fact. Rather, DuPont contends that an appellant
`must only face a significant risk of infringement liability,
`and that it faces such a risk for several reasons:
`(1) DuPont has built a demonstration plant to produce
`FDCA and an FDCA ester (“FDME”), and the plant is
`capable of operating under conditions within the claimed
`ranges of the ’921 patent; (2) Synvina is a competitor that
`alleged before the Board that Archer-Daniels-Midland
`Company’s (“ADM”) processes for producing FDCA were
`“embraced by the claims in the ’921 patent,” Reply Br. 25–
`26 (quoting J.A. 2216); and (3) Synvina rejected DuPont’s
`
`

`

`12
`
`E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
`
`request for a covenant not to sue. According to DuPont,
`these facts are sufficient to prove an actual or imminent
`injury in fact.
`We have jurisdiction to review final decisions of the
`Board under 28 U.S.C. § 1295(a)(4)(A). However, as an
`Article III court, we are only empowered to adjudicate
`“Cases” and “Controversies,” U.S. Const. Art. III, § 2,
`“appropriately resolved through the judicial process,”
`Lujan v. Defenders of Wildlife, 504 U.S. 555, 560 (1992)
`(internal quotation marks omitted). To establish a case or
`controversy, an appellant must meet “the irreducible
`constitutional minimum of standing,” id., even if there is
`no such requirement to appear before the administrative
`agency being reviewed, Consumer Watchdog v. Wis.
`Alumni Research Found., 753 F.3d 1258, 1261 (Fed. Cir.
`2014).11
` Standing requires an appellant to have
`“(1) suffered an injury in fact, (2) that is fairly traceable to
`the challenged conduct of the defendant, and (3) that is
`likely to be redressed by a favorable judicial decision.”
`Spokeo, Inc. v. Robins, 136 S. Ct. 1540, 1547 (2016). As
`the party seeking judicial review, the appellant bears the
`burden of proving that it has standing. Phigenix, Inc. v.
`Immunogen, Inc., 845 F.3d 1168, 1171 (Fed. Cir. 2017).
`Under the circumstances here, we agree with DuPont
`that it has standing to appeal the Board’s decision. As in
`the declaratory judgment context, a petitioner who ap-
`peals from an IPR decision need not face “a specific threat
`of infringement litigation by the patentee” to establish
`
`11 However, “where Congress has accorded a proce-
`dural right to a litigant, such as the right to appeal an
`administrative decision, certain requirements of stand-
`ing—namely immediacy and redressability, as well as
`prudential aspects that are not part of Article III—may be
`relaxed.” Consumer Watchdog, 753 F.3d at 1261 (citing
`Massachusetts v. EPA, 549 U.S. 497, 517–18 (2007)).
`
`

`

`E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
`
`13
`
`jurisdiction. ABB Inc. v. Cooper Indus., LLC, 635 F.3d
`1345, 1348 (Fed. Cir. 2011). Rather, on appeal the peti-
`tioner must generally show a controversy “of sufficient
`immediacy and reality” to warrant the requested judicial
`relief. Id. (citing MedImmune, Inc. v. Genentech, Inc., 549
`U.S. 118, 127 (2007)).
`Such a controversy exists here because DuPont cur-
`rently operates a plant capable of infringing the ’921
`patent. After Synvina challenged DuPont’s standing in
`its responsive brief,12 DuPont submitted several declara-
`tions in support of standing. In the declarations, three
`scientists employed by ADM or DuPont collectively
`averred that: (1) in January 2016 ADM and DuPont
`publicly announced a plan to build a 60 ton-per-year
`demonstration plant to produce FDME, (2) FDME would
`be produced at the plant by dehydrating fructose to com-
`pounds including HMF which are then oxidized to FDCA
`and esterified to FDME, (3) the process would occur in an
`acetic acid solvent and with a Co/Mn/Br catalyst within a
`temperature range of 120–250°C (preferably 170–190°C)
`and a PO2 range of 0.02–100 bars (preferably 0.2–21
`bars), and (4) the plant was expected to be mechanically
`complete by January 2018 and online by the second
`quarter of 2018. At oral argument, counsel for DuPont
`confirmed that the plant opened on April 30, 2018 and is
`currently
`in operation.
` Oral Arg. at 1:00–1:30,
`http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
`17-1977.mp3.
`Taken together, these facts demonstrate that DuPont,
`an avowed competitor of patent owner Synvina, has taken
`and “plans to take . . . action that would implicate” the
`’921 patent, Phigenix, 845 F.3d at 1173–74, including
`significant “involvement in research [and] commercial
`
`12 Synvina did not earlier move to dismiss for lack of
`standing.
`
`

`

`14
`
`E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
`
`activities involving” the claimed subject matter of the ’921
`patent, Consumer Watchdog, 753 F.3d at 1260. According
`to DuPont’s declarations, the process conducted at its
`plant uses the same reactants to generate the same
`products using the same solvent and same catalysts as
`the ’921 patent. Likewise, the temperature and PO2
`ranges used at the plant overlap with those claimed in the
`’921 patent. At the very least, this indicates that DuPont
`“is engaged or will likely engage ‘in an[] activity that
`would give rise to a possible infringement suit.’” JTEKT
`Corp. v. GKN Auto. Ltd., 898 F.3d 1217, 1220 (Fed. Cir.
`2018) (alteration in original) (quoting Consumer Watch-
`dog, 753 F.3d at 1262). Synvina’s allegations of copying
`before the Board and its refusal to grant DuPont a cove-
`nant not to sue further confirm that DuPont’s risk of
`liability is not “conjectural” or “hypothetical.” See Lujan,
`504 U.S. at 560.
`In sum, because DuPont “has concrete plans” for pre-
`sent and “future activity that create[] a substantial risk of
`future infringement or likely cause the patentee to assert
`a claim of infringement,” JTEKT, 898 F.3d at 1221, we
`conclude that DuPont has satisfied the injury in fact
`requirement for Article III standing. As there is no
`dispute that the risk of infringement liability is attributa-
`ble to Synvina’s ’921 patent, and that the risk could be
`redressed by our review of the Board’s decision, we con-
`clude that DuPont has Article III standing.13 We there-
`fore proceed to the merits.
`II. Obviousness
`Our review of a Board decision is limited. In re Baxter
`Int’l, Inc., 678 F.3d 1357, 1361 (Fed. Cir. 2012). We
`
`
`13 However, beyond the issue of standing, we make
`no judgment on whether DuPont has infringed or is
`infringing the ’921 patent.
`
`

`

`E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
`
`15
`
`review the Board’s legal determinations de novo, In re
`Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), but we
`review the Board’s factual findings underlying those
`determinations for substantial evidence, In re Gartside,
`203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding is sup-
`ported by substantial evidence if a reasonable mind might
`accept the evidence as adequate to support the finding.
`Consol. Edison Co. of N.Y. v. NLRB, 305 U.S. 197, 229
`(1938).
`DuPont asserts that the Board erred in its obvious-
`ness analysis primarily in two ways. First, DuPont
`argues that the Board misinterpreted our precedent and
`erroneously refused to apply a burden-shifting framework
`in the context of overlapping prior-art ranges from cases
`such as In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003), and
`Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299
`(Fed. Cir. 2006). Second, DuPont contends that the Board
`invoked a “result-effective variable” requirement incon-
`sistent with precedent. Given these errors, DuPont
`argues that the Board’s decision should be reversed with
`respect to each instituted claim.
`Synvina responds that the Board applied the proper
`standards for obviousness, and that substantial evidence
`supports the Board’s findings in favor of patentability of
`the challenged claims.
`
`A.
`The legal principle at issue in this case is old. For
`decades, this court and its predecessor have recognized
`that “where the general conditions of a claim are disclosed
`in the prior art, it is not inventive to discover the opti-
`mum or workable ranges by routine experimentation.” In
`re Aller, 220 F.2d 454, 456 (CCPA 1955); see also, e.g., In
`re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997); In re
`Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Thus,
`“[n]ormally, it is to be expected that a change in tempera-
`ture, or in concentration, or in both, would be an un-
`
`

`

`16
`
`E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
`
`patentable modification.” Aller, 220 F.2d at 456. A more
`specific application of this general principle is that “[a]
`prima facie case of obviousness typically exists when the
`ranges of a claimed composition overlap the ranges dis-
`closed in the prior art.” Peterson, 315 F.3d at 1329 (col-
`lecting cases). We have said that such overlap creates a
`presumption of obviousness. See Galderma Labs., L.P. v.
`Tolmar, Inc., 737 F.3d 731, 737–38 (Fed. Cir. 2013);
`Ormco, 463 F.3d at 1311; Iron Grip Barbell Co. v. USA
`Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004).
`There are several ways by which the patentee may
`rebut that presumption. First, a modification of a process
`parameter may be patentable if it “produce[s] a new and
`unexpected result which is different in kind and not
`merely in degree from the results of the prior art.” Aller,
`220 F.2d at 456. A claimed range that demonstrates such
`unexpected results is referred to as a “critical” range, and
`the patentee has the burden of proving criticality. Id.
`Second, and relatedly, a patentee may rebut the presump-
`tion of obviousness by showing that the prior art taught
`away from the claimed range. Ormco, 463 F.3d at 1311.
`Third, a change to a parameter may be patentable if the
`parameter was not recognized as “result-effective.” In re
`Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir.
`2012) (citing In re Antonie, 559 F.2d 618, 620 (CCPA
`1977)). But “[a] recognition in the prior art that a proper-
`ty is affected by the variable is sufficient to find the
`variable result-effective.” Id. at 1297. Fourth, we have
`reasoned that disclosure of very broad ranges may not
`invite routine optimization. Genetics Inst., LLC v. Novar-
`tis Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1306 (Fed.
`Cir. 2011) (holding that ordinary motivation to optimize
`did not apply where disclosure was 68,000 protein vari-
`ants including 2,332 amino acids); Peterson, 315 F.3d at
`1330 n.1. As we explain, the presumption of obviousness
`applies here, and none of the means for rebutting it has
`been shown.
`
`

`

`E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
`
`17
`
`B.
`We first address DuPont’s argument that the Board
`erred by not applying the burden-shifting framework
`applicable to overlapping range cases. Synvina argues
`that the Board correctly concluded that our decision in
`Magnum Oil prohibited any burden-shifting framework
`from applying in an IPR.
`We agree with DuPont that the Board erred in con-
`cluding that the type of burden-shifting framework con-
`sistently applied in our overlapping range cases was
`implicitly foreclosed by subsequent cases not addressing
`this framework. We have articulated the relevant frame-
`work as follows. “[W]here there is a range disclosed in the
`prior art, and the claimed invention falls within that
`range, the burden of production falls upon the patentee to
`come forward with evidence” of teaching away, unex-
`pected results, or other pertinent evidence of nonobvious-
`ness. Galderma, 737 F.3d at 738; see Allergan, Inc. v.
`Sandoz Inc., 796 F.3d 1293, 1304–05 (Fed. Cir. 2015)
`(citing Galderma, 737 F.3d at 737–38); Ormco, 463 F.3d
`at 1311 (“Where a claimed range overlaps with a range
`disclosed in the prior art, there is a presumption of obvi-
`ousness. The presumption can be rebutted if it can be
`shown that the prior art teaches away from the claimed
`range, or the claimed range produces new and unexpected
`results.”) (citations omitted)); Iron Grip Barbell, 392 F.3d
`at 1322 (same). The factfinder then assesses that evi-
`dence, along with all other evidence of record, to deter-
`mine whether a patent challenger has carried its burden
`of persuasion to prove that the claimed range was obvi-
`ous.
`Galderma, Allergan, Ormco, and Iron Grip Barbell
`each applied this concept in a district court case. The
`same basic framework is also applicable to examination at
`the United States Patent and Trademark Office (“PTO”).
`
`

`

`18
`
`E.I. DUPONT DE NEMOURS v. SYNVINA C.V.
`
`See, e.g., Peterson, 315 F.3d at 1329–30; Geisler, 116 F.3d
`at 1469; Woodruff, 919 F.2d at 1578.
`To our knowledge, this is the first time we have been
`asked to decide whether this framework governs in the
`IPR context. The Board addressed this issue in a single
`paragraph, and did not cite, let alone discuss, the cases
`above applying the framework in both district court and
`PTO proceedings. Instead, the Board interpreted two
`more recent cases, Dynamic Drinkware and Magnum Oil,
`as prohibiting any burden-shifting framework from apply-
`ing in an IPR. The Board erred, as these two cases did
`not overturn the procedural scheme for overlapping range
`cases.
`Neither Dynamic Drinkware nor Magnum Oil in-
`volved overlapping ranges. The issue in Dynamic Drink-
`ware was the allocation of the burdens of persuasion and
`production for anticipation and entitlement to an earlier
`priority date in an IPR. 800 F.3d at 1378–80. We held
`that the IPR petitioner “had the burden of persuasion to
`prove unpatentability by a preponderance of the evidence,
`and this burden never shifted.” Id. at 1379. The burden
`of production, however, could shift with respect to the
`presentation of evidence of anticipation or priority date.
`Id. at 1379–80. While we recognized that different evi-
`dentiary standards applied between district court litiga-
`tion and IPRs, that difference did “not alter the shifting
`burdens between the parties” because in both a district
`court case and an IPR the patent challenger has the
`burden of proving unpatentability. Id. at 1379. In other
`words, we applied consistent procedural schemes between
`district court litigation and IPRs, as the only relevant
`difference was in the quantum of