Case: 20-1289 Document: 70 Page: 1 Filed: 07/22/2021
`
`
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`CHEMOURS COMPANY FC, LLC,
`Appellant
`
`v.
`
`DAIKIN INDUSTRIES, LTD., DAIKIN AMERICA,
`INC.,
`Appellees
`
`ANDREW HIRSHFELD, PERFORMING THE
`FUNCTIONS AND DUTIES OF THE UNDER
`SECRETARY OF COMMERCE FOR
`INTELLECTUAL PROPERTY AND DIRECTOR OF
`THE UNITED STATES PATENT AND TRADEMARK
`OFFICE,
`Intervenor
`______________________
`
`2020-1289, 2020-1290
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2018-
`00992, IPR2018-00993.
`______________________
`
`Decided: July 22, 2021
`______________________
`
`NITIKA GUPTA FIORELLA, Fish & Richardson, PC, Wil-
`mington, DE, argued for appellant. Also represented by
`MARTINA TYREUS HUFNAL; TIMOTHY RAWSON, San Diego,
`
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`2
`
`THE CHEMOURS COMPANY FC, LLC v.
` DAIKIN INDUSTRIES, LTD.
`
`CA.
`
` GREGORY A. CASTANIAS, Jones Day, Washington, DC,
`argued for appellees. Also represented by JOHN CHARLES
`EVANS, DAVID MICHAEL MAIORANA, Cleveland, OH;
`ANTHONY INSOGNA, San Diego, CA.
`
` MONICA BARNES LATEEF, Office of the Solicitor, United
`States Patent and Trademark Office, Alexandria, VA, for
`intervenor. Also represented by THOMAS W. KRAUSE,
`MAUREEN DONOVAN QUELER, FARHEENA YASMEEN
`RASHEED.
` ______________________
`
`Before NEWMAN, DYK, and REYNA, Circuit Judges.
`Opinion for the court filed by Circuit Judge REYNA.
`Opinion concurring in part and dissenting in part filed by
`Circuit Judge DYK.
`REYNA, Circuit Judge.
`Chemours Company FC, LLC, appeals the final written
`decisions of the Patent Trial and Appeal Board from two
`inter partes reviews brought by Daikan Industries, Ltd., et
`al. Chemours argues on appeal that the Board erred in its
`obviousness factual findings and did not provide adequate
`support for its analysis of objective indicia of nonobvious-
`ness. Chemours also argues that the Board issued its de-
`cision in violation of the Appointments Clause because the
`Board’s decision came after this court’s decision in Arthrex,
`Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1335 (Fed.
`Cir. 2019), but before this court issued its mandate.
`Chemours argues that the Board’s decision should be
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`THE CHEMOURS COMPANY FC, LLC v.
`DAIKIN INDUSTRIES, LTD.
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`3
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`vacated and remanded.1 We decline to vacate and remand
`this case pursuant to Arthrex. We conclude that the
`Board’s decision on obviousness is not supported by sub-
`stantial evidence and that the Board erred in its analysis
`of objective indicia of nonobviousness. Accordingly, we re-
`verse.
`
`BACKGROUND
`This consolidated appeal arises from two final written
`decisions in inter partes reviews, Daikin Industries Ltd. v.
`Chemours Co. FC, LLC, No. IPR2018-00992 (P.T.A.B. Nov.
`12, 2019), and Daikin Industries Ltd. v. Chemours Co. FC,
`LLC, No. IPR2018-00993 (P.T.A.B. Nov. 12, 2019). J.A. 1–
`129. Daikin Industries Ltd. and Daikin America, Inc. (col-
`lectively, “Daikin”) filed a petition at the Patent Trial and
`Appeal Board (“Board”) requesting an inter partes review
`of claims 1–7 of U.S. Patent No. 7,122,609 (the “’609 pa-
`tent”). IPR2018-00992, J.A. 1–67. Daikin also filed a peti-
`tion requesting an inter partes review of claims 3 and 4 of
`U.S. Patent No. 8,076,4312 (the “’431 patent”). IPR 2018-
`00993, J.A. 68–129.
`The ’609 patent relates to a unique polymer for insulat-
`ing communication cables formed by pulling wires through
`melted polymer to coat and insulate the wires, a process
`known as “extrusion.”3 ’609 patent col. 3 ll. 50–63.
`
`
`1 Following the Supreme Court’s decision in United
`States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), Chemours
`withdrew its request to vacate and remand to the Board.
`ECF No. 66.
`2 The asserted claims include claims 3 and 4 because
`claims 1, 2, and 5–7 of the ’431 patent were disclaimed.
`J.A. 3716.
`3 The specifications for both patents are nearly iden-
`tical as are the issues on appeal for both patents. See
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`THE CHEMOURS COMPANY FC, LLC v.
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`
`Specifically, Chemours’s patents relate to a polymer with
`unique properties such that it can be formed at high extru-
`sion speeds while still producing a high-quality coating on
`the communication cables. Id. Most relevant to the issues
`in this appeal, the claims provide that the polymer has a
`specific melt flow rate range, i.e., “a high melt flow rate of
`about 30±3 g/10 min,” which is the rate at which melted
`polymer flows under pressure. ’609 patent col. 10 ll. 19–20.
`The melt flow rate of a polymer is an indicator of how fast
`the melted polymer can flow under pressure, i.e., during
`extrusion. Appellant’s Br. 3. The higher the melt flow rate,
`the faster the polymer can be coated onto a wire. J.A.
`1150–1151 at ¶ 32. Claim 1 of the ’609 patent is repre-
`sentative of the issues on appeal:
`1. A partially-crystalline copolymer comprising tet-
`rafluoroethylene, hexafluoropropylene
`in
`an
`amount corresponding to a hexafluoropropylene in-
`dex (HFPl) of from about 2.8 to 5.3, said copolymer
`being polymerized and isolated in the absence of
`added alkali metal salt, having a melt flow rate of
`within the range of about 30±3 g/10 min, and having
`no more than about 50 unstable endgroups/106 car-
`bon atoms.
`’609 patent col. 10 ll. 15–21.
`The Board found all challenged claims of the ’609 pa-
`tent and the ’431 patent to be unpatentable as obvious in
`view of U.S. Patent No. 6,541,588 (“Kaulbach”). J.A. 66,
`345–51.
`Chemours appeals. We have jurisdiction under
`28 U.S.C. § 1295(a)(4)(A).
`
`
`Appellant’s Br. 2 n.1. When referencing both patents, this
`opinion will cite to the ’609 patent and IPR2018-00992, J.A.
`1-67.
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`THE CHEMOURS COMPANY FC, LLC v.
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`STANDARD OF REVIEW
`This court reviews the Board’s legal determinations de
`novo and its factual determinations for substantial evi-
`dence. See In re NuVasive, Inc., 842 F.3d 1376, 1379 (Fed.
`Cir. 2016). Substantial evidence requires more than a
`“mere scintilla” and must be enough such that a reasonable
`mind could accept the evidence as adequate to support the
`conclusion. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229
`(1938).
`Obviousness is a question of law based on underlying
`findings of fact. See In re NuVasive, Inc., 842 F.3d at 1381.
`“What the prior art teaches, whether a person of ordinary
`skill in the art would have been motivated to combine ref-
`erences, and whether a reference teaches away from the
`claimed invention are questions of fact.” Meiresonne v.
`Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (quoting
`Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1047–48
`(Fed. Cir. 2016) (en banc)).
`In making its factual findings, the Board must have
`both an adequate evidentiary basis for its findings and ar-
`ticulate a satisfactory explanation for those findings.
`NuVasive, 842 F.3d at 1382 (citing In re Lee, 277 F.3d 1338,
`1344 (Fed. Cir. 2002) and Synopsys, Inc. v. Mentor
`Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016)). We
`review for substantial evidence the underlying factual find-
`ings leading to an obviousness conclusion. Wasica Fin.
`GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1278 (Fed.
`Cir. 2017).
`
`DISCUSSION
`We first address Chemours’s argument concerning this
`court’s decision in Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320, 1335 (Fed. Cir. 2019).
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`THE CHEMOURS COMPANY FC, LLC v.
` DAIKIN INDUSTRIES, LTD.
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`I
`Chemours argues that the Board’s decision was issued
`in violation of the Appointments Clause because the Board
`issued its final written decisions in both inter partes re-
`views on November 12, 2019, which was after this court’s
`decision in Arthrex, but before the mandate was issued.
`Specifically, Chemours contends remand is required in this
`instance because the Arthrex decision was not final until
`its mandate issued, so the court had not cured the consti-
`tutional defect by the time the final written decisions were
`issued. Appellant’s Br. 42.
`Because Chemours has withdrawn its request based on
`Arthrex to vacate and remand to the Board, we decline to
`vacate the Board’s decision and remand to the Board.
`II
`Chemours argues that the Board’s final written deci-
`sion on obviousness is erroneous because its factual find-
`ings on motivation to combine are unsupported by
`substantial evidence. Appellant’s Br. 19. Specifically,
`Chemours argues that Daikin did not meet its burden of
`proof because it failed to show that a person of ordinary
`skill in the art (“POSA”) would modify Kaulbach’s polymer
`to achieve the claimed invention. Id. at 25–31.
`The Kaulbach reference teaches a polymer for wire and
`cable coatings that can be processed at higher speeds and
`at higher temperatures. Kaulbach col. 3 ll. 3–5. Kaulbach
`highlights that the polymer of the invention has a “very
`narrow molecular weight distribution.” Id. at col. 3 ll. 34–
`35, 59–65. Kaulbach discovered that prior beliefs that pol-
`ymers in high-speed extrusion application needed broad
`molecular weight distributions were incorrect because “a
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`narrow molecular weight distribution performs better.”4
`Id. at col. 3 ll. 61–65; see also col. 1 ll. 57–59. In order to
`achieve a narrower range, Kaulbach reduced the concen-
`tration of heavy metals such as iron, nickel and chromium
`in the polymer. Id. at col. 3 ll. 24–33.
`In the description of the invention, Kaulbach suggests
`that polymers used in “high speed wire extrusion” have
`melt flow rates of 15 g/10 min or greater. Id. at col. 3 ll.
`43–44. In the Kaulbach example relied on by the Board,
`Sample A11, Kaulbach’s melt flow rate is 24 g/10 min,
`while the claimed rate is 30±3 g/10 min. Id. at col.9 ll. 3–
`15.5 Kaulbach further touts as a benefit that the melt flow
`rate does not change during processing. Id. at col. 3 ll. 49–
`50, col. 4 ll. 1–2, col. 4 ll. 7–11.
`The Board found that Kaulbach’s melt flow rate range
`fully encompassed the claimed range, and that a skilled ar-
`tisan would have been motivated to increase the melt flow
`rate of Kaulbach’s preferred embodiment to within the
`claimed range in order to coat wires faster. J.A. 45–46. In
`making its findings, the Board relied on the teachings of
`other evidence. J.A. 42–46. Specifically, the Board found
`the following:
`
`
`4 Molecular weight distribution reflects the range of
`molecular weights (or chain lengths) in a given polymer.
`J.A. 1145 at ¶ 20. A polymer with a narrower molecular
`weight distribution has more polymer chains that are of
`similar lengths, while a broad molecular weight distribu-
`tion fluorinated ethylene propylene (“FEP”) has more vari-
`ation in polymer chain lengths. Id.
`5 Kaulbach refers to a “melt flow index” or “MFI”
`value. Kaulbach col.1 ll. 40–41, col. 3 ll. 43–44. Chemours
`acknowledges that “melt flow index” and “melt flow rate”
`may be used interchangeably.
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`THE CHEMOURS COMPANY FC, LLC v.
` DAIKIN INDUSTRIES, LTD.
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`In view of Kaulbach’s disclosure that [melt flow
`
`rate] values of ≥15 g/10 min are suitable for high[-]
`
`speed wire extrusion, and record evidence establish-
`ing that higher coating speeds of 2800 or 3000
`ft/min are possible, we are persuaded that the
`skilled artisan would have been motivated to im-
`prove upon the wire coating speeds observed with
`Kaulbach’s Sample A11. We also are persuaded
`that the skilled artisan would have been motivated
`to increase the [melt flow rate] of Kaulbach’s Sam-
`ple A11 to be within the recited range in order to
`achieve higher processing speeds, because the evi-
`dence of record teaches that achieving such speeds
`may be possible by increasing a [polymer’s] [melt
`flow rate].
`J.A. 45–46.
`While acknowledging that Kaulbach states that “‘a
`narrow molecular weight distribution performs better’ at
`achieving high processing rates than polymers with ‘broad’
`molecular distributions,” J.A. 50–51, the Board also found
`that “it is not clear on this fully developed record why the
`skilled artisan would have been motivated to maintain
`such a narrow molecular weight distribution when seeking
`to achieve even higher coating speeds with Kaulbach’s
`Sample A11,” J.A. 50. In addition, the Board found that
`the portions of Kaulbach’s disclosure lacked specificity re-
`garding what is deemed “narrow” and “broad,” and that it
`would have been obvious to “broaden” the molecular weight
`distribution of the claimed polymer:
`[E]ven though Kaulbach generically touts that
`“high processing rates can be achieved” “[d]espite a
`narrow molecular weight distribution” ([Kaulbach],
`3:59–60), this purported discovery would not have
`prevented the skilled artisan, at the time of the in-
`vention of the ’609 patent, from considering other
`techniques—such as broadening the polymer’s
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`molecular weight distribution—to achieve higher
`coating speeds with Sample A11. Based on the evi-
`dence presented, we are persuaded that one such
`technique would have included increasing Sample
`A11’s [melt flow rate] from 24 g/10 min to the re-
`cited range of “about 30±3 g/10 min,” even if doing
`so would have required broadening the molecular
`weight distribution of the polymer beyond the “nar-
`row molecular weight distribution” suggested, but
`not required or precisely defined, by Kaulbach.
`J.A. 51.
`The Board’s obviousness findings are not supported by
`substantial evidence. Although the Board may rely on
`other prior art to inform itself of the state of the art at the
`time of the invention, the scope of the relevant prior art is
`that which is “‘reasonably pertinent to the particular prob-
`lem with which the inventor was involved.’” Stratoflex, Inc.
`v. Aeroquip Corp., 713 F.2d 1530, 1535 (Fed. Cir. 1983)
`(quoting In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)). In
`deciding whether a reference is from a relevant art, it is
`key to first determine whether the reference is within the
`inventor’s field of endeavor, and if not, “whether the refer-
`ence is reasonably pertinent to the particular problem con-
`fronting the inventor.” In re GPAC Inc., 57 F.3d 1573, 1578
`(Fed. Cir. 1995) (citing Wood, 599 F.2d at 1036). Here, the
`Board appears to have ignored the express disclosure in
`Kaulbach that teaches away from the claimed invention
`and relied on teachings from other references that were not
`concerned with the particular problems Kaulbach sought
`to solve. In other words, the Board did not adequately
`grapple with why a skilled artisan would find it obvious to
`increase Kaulbach’s melt flow rate to the claimed range
`while retaining its critical “very narrow molecular-weight
`distribution.” Kaulbach col. 3 ll. 34–35, 59–65.
`The reasons that the Board provided are not persua-
`sive. The Board found that because “Kaulbach does not
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`THE CHEMOURS COMPANY FC, LLC v.
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`specifically set forth numerical limits on [what constitutes]
`‘narrow’ and ‘broad’ molecular weight distributions, it is
`plausible that the skilled artisan may have been able to
`slightly increase Sample A11’s [melt flow rate] of 24 g/10
`min to be within the claimed range, and still end up with a
`‘narrow’ [molecular weight distribution] polymer as sug-
`gested by Kaulbach, even if that meant slightly ‘broaden-
`ing’ Sample A11’s [molecular weight distribution].” J.A.
`49. This does not explain why a POSA would be motivated
`to increase Kaulbach’s melt flow rate to the claimed range,
`when doing so would necessarily involve altering the in-
`ventive concept of a narrow molecular weight distribution
`polymer. See Trivascular, Inc. v. Samuels, 812 F.3d 1056,
`1068 (Fed. Cir. 2016) (finding no motivation to modify the
`prior art where doing so “would destroy the basic objective”
`of the prior art).
`This is particularly true in light of the fact that the
`Kaulbach reference appears to teach away from broaden-
`ing molecular weight distribution and the known methods
`for increasing melt flow rate. Specifically, Kaulbach in-
`cludes numerous examples of processing techniques that
`are typically used to increase melt flow rate, which Kaulb-
`ach cautions should not be used due to the risk of obtaining
`a broader molecular weight distribution. Kaulbach col. 4
`ll. 47–50. For example, Kaulbach teaches against using
`chain transfer agents during polymerization, because they
`“intrinsically broaden the molecular weight distribution.”
`Id.; see also id. at col. 5 ll. 23–27 (teaching against using
`high fluorination temperatures, because doing so “can re-
`sult in a broadening of the molecular weight distribution
`and negatively effect [sic] performance”). These factors do
`not demonstrate that a POSA would have had a “reason to
`attempt” to get within the claimed range, as is required to
`make such an obviousness finding. Procter & Gamble Co.
`v. Teva Pharm. USA, Inc., 566 F.3d 989, 995 (Fed. Cir.
`2009) (quoting PharmaStem Therapeutics, Inc. v. ViaCell,
`Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007)).
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`THE CHEMOURS COMPANY FC, LLC v.
`DAIKIN INDUSTRIES, LTD.
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`11
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`Daikin points out that Chemours based its case on an
`unclaimed feature—molecular weight distribution. How-
`ever, Kaulbach is the sole prior art relied on by the Board,
`and Kaulbach identified a narrow molecular weight distri-
`bution as a key feature. Therefore, modifying Kaulbach as
`the Board suggested would not be obvious absent addi-
`tional evidence supporting that finding. As Chemours per-
`suasively argues, the Board needed competent proof
`showing a skilled artisan would have been motivated to,
`and reasonably expected to be able to, increase the melt
`flow rate of Kaulbach’s polymer to the claimed range when
`all known methods for doing so would go against Kaulb-
`ach’s invention by broadening molecular weight distribu-
`tion. Appellant’s Br. 12.
`We hold that the Board relied on an inadequate eviden-
`tiary basis and failed to articulate a satisfactory explana-
`tion that is based on substantial evidence for why a POSA
`would have been motivated to increase Kaulbach’s melt
`flow rate to the claimed range, when doing so would neces-
`sarily involve altering the inventive concept of a narrow
`molecular weight distribution polymer.
`III
`Before making a determination on the ultimate ques-
`tion of obviousness, the Board analyzed Chemours’s objec-
`tive indicia of nonobviousness. J.A. 52. Chemours argues
`that the Board legally erred in its analysis of objective in-
`dicia of nonobviousness finding an insufficient nexus be-
`tween the claimed invention and FEP 9494, Chemours’s
`commercial polymer, and its requirement of market share
`evidence to show commercial success. Appellant’s Br. 38.
`Chemours also argues that the Board misapplied the law
`on finding that the patents at issue were blocking patents.
`Id. at 39.
`In an obviousness inquiry, evidence of objective indicia
`of nonobviousness must be considered if present. See Pen-
`tec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 315 (Fed.
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`Cir. 1985). Such evidence includes, for example, the com-
`mercial success of the patented invention. Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966).
`A
`Chemours argues that the Board improperly rejected
`an extensive showing of commercial success by finding no
`nexus on a limitation-by-limitation basis, rather than the
`invention as a whole. Appellant’s Br. 36. Chemours con-
`tends that the novel combination of these properties drove
`the commercial success of FEP 9494. Id. Second,
`Chemours argues
`the Board
`improperly
`required
`Chemours to proffer market share data to show commercial
`success.
`In general, evidence supporting objective indicia of
`nonobviousness must be shown to have a nexus to the
`claimed invention. In re GPAC Inc., 57 F.3d at 1580. In
`the obviousness analysis, “the claimed invention is, admit-
`tedly, a combination of elements that were known individ-
`ually in the prior art.” WBIP, LLC v. Kohler Co., 829 F.3d
`1317, 1332 (Fed. Cir. 2016). Evidence of commercial suc-
`cess, therefore, can be linked to an “inventive combination
`of known elements” to show a sufficient nexus. Id.; see also
`Rambus Inc. v. Rea, 731 F.3d 1248, 1256–58 (Fed. Cir.
`2013) (holding that the Board erred when it found objective
`evidence lacked a nexus where at least some of the evidence
`related to the “patented design as a whole”).
`The Board found no nexus between the claimed inven-
`tion and the alleged commercial success because Kaulbach
`disclosed all features except for the claimed melt flow rate.
`J.A. 56. The Board then found that other prior art of record
`disclosed melt flow rates of 50 g/10 min. Id.
`Contrary to the Board’s decision, the separate disclo-
`sure of individual limitations, where the invention is a
`unique combination of three interdependent properties,
`does not negate a nexus. Concluding otherwise would
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`mean that nexus could never exist where the claimed in-
`vention is a unique combination of known elements from
`the prior art. See WBIP, 829 F.3d at 1332.
`Chemours also contends that the Board erred in its de-
`mand that market share evidence is necessary to sustain a
`finding of commercial success.
` Appellant’s Br. 38.
`Chemours argues that this court has held that evidence of
`market share is not required to prove commercial success.
`Appellant’s Br. 38–39. Chemours contends that sales data
`alone should be enough for commercial success. Id. We
`agree.
`“When a patentee can demonstrate commercial suc-
`cess, usually shown by significant sales in a relevant mar-
`ket, and that the successful product is the invention
`disclosed and claimed in the patent, it is presumed that the
`commercial success is due to the patented invention.” J.T.
`Eaton & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571
`(Fed. Cir. 1997); WBIP, 829 F.3d at 1329. However, market
`share data, though potentially useful, is not required to
`show commercial success. See Tec Air, Inc. v. Denso Mfg.
`Mich. Inc., 192 F.3d 1353, 1360–61 (Fed. Cir. 1999) (“Alt-
`hough sales figures coupled with market data provide
`stronger evidence of commercial success, sales figures
`alone are also evidence of commercial success.”); Gambro
`Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1579
`(Fed. Cir. 1997) (relying on sales information to show com-
`mercial success); J.T. Eaton, 106 F.3d at 1566, 1572 (same).
`The Board is certainly entitled to weigh evidence and
`find, if appropriate, that Chemours’s gross sales data were
`insufficient to show commercial success without market
`share data. The Board, however, erred in its analysis that
`gross sales figures, absent market share data, “are inade-
`quate to establish commercial success.” J.A. 57.
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`THE CHEMOURS COMPANY FC, LLC v.
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`B
`Finally, Chemours contends that the Board erred when
`it found that the asserted patents were “blocking patents,”
`that blocked others from entering the relevant market. Ap-
`pellant’s Br. 39–41.
`A blocking patent is an earlier patent that prevents
`practice of a later invention—the invention of the patent-
`in-dispute. See Acorda Therapeutics, Inc. v. Roxane Labs.,
`Inc., 903 F.3d 1310, 1337 (Fed. Cir. 2018) (“A patent has
`been called a ‘blocking patent’ where practice of a later in-
`vention would infringe the earlier patent.”); Galderma
`Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 740 (Fed. Cir.
`2013); Prima Tek II, LLC v. A-Roo Co., 222 F.3d 1372, 1379
`(Fed. Cir. 2000).
`The Board determined that the existence of the ’609 pa-
`tent covering the FEP 9494 product would have precluded
`others from freely entering the market. J.A. 57–58 (citing
`Galderma Labs., 737 F.3d at 740 (concluding that the in-
`ference of nonobviousness based on evidence of commercial
`success is weak where market entry by others is precluded
`due to blocking patents)). The Board concluded that the
`evidence proffered to establish commercial success was
`weak because the ’609 patent covering it blocked others
`from entering the market. J.A. 58.
`The Board erred by misapplying the “blocking patents”
`doctrine to the challenged patents themselves. A blocking
`patent is one that is in place before the claimed invention
`because “such a blocking patent may deter non-owners and
`non-licensees from investing the resources needed to make,
`develop, and market such a later, ‘blocked’ invention.’” Ac-
`corda, 903 F.3d at 1337. However, the challenged patent,
`which covers the claimed invention at issue, cannot act as
`a blocking patent. Accordingly, we reverse the Board as to
`these findings.
`
`

`

`Case: 20-1289 Document: 70 Page: 15 Filed: 07/22/2021
`
`THE CHEMOURS COMPANY FC, LLC v.
`DAIKIN INDUSTRIES, LTD.
`
`15
`
`CONCLUSION
`We decline to vacate and remand this case pursuant to
`Arthrex. We hold that the Board’s obviousness determina-
`tion is not supported by substantial evidence and that the
`Board erred in its analysis of certain objective indicia of
`nonobviousness. Accordingly, we reverse the Board’s de-
`termination.
`
`REVERSED
`
`

`

`Case: 20-1289 Document: 70 Page: 16 Filed: 07/22/2021
`
`
`
`
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`CHEMOURS COMPANY FC, LLC,
`Appellant
`
`v.
`
`DAIKIN INDUSTRIES, LTD., DAIKIN AMERICA,
`INC.,
`Appellees
`
`ANDREW HIRSHFELD, PERFORMING THE
`FUNCTIONS AND DUTIES OF THE UNDER
`SECRETARY OF COMMERCE FOR
`INTELLECTUAL PROPERTY AND DIRECTOR OF
`THE UNITED STATES PATENT AND TRADEMARK
`OFFICE,
`Intervenor
`______________________
`
`2020-1289, 2020-1290
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2018-
`00992, IPR2018-00993.
`______________________
`
`DYK, Circuit Judge, concurring in part and dissenting in
`part.
`I agree with Part I of the majority’s opinion and with
`the majority’s conclusion in Part III that the Patent Trial
`and Appeal Board (“Board”) erred “in its analysis that
`
`

`

`Case: 20-1289 Document: 70 Page: 17 Filed: 07/22/2021
`
`2
`
`THE CHEMOURS COMPANY FC, LLC v.
` DAIKIN INDUSTRIES, LTD.
`
`gross sales figures, absent market share data, ‘are inade-
`quate to establish commercial success,’” Maj. Op. 13 (quot-
`ing J.A. 57), and “by misapplying the ‘blocking patents’
`doctrine to the challenged patents themselves,” id. at 14.
`I respectfully dissent as to Part II. I think that the ma-
`jority’s conclusion that U.S. Patent No. 6,541,588 (“Kaulb-
`ach”) teaches away from the claimed invention is contrary
`to our precedent and that the Board properly rejected the
`teaching away theory.
`
`I
`Claim 1 of U.S. Patent No. 7,122,609 (“the ’609 patent”)
`covers
`A partially-crystalline copolymer comprising tetra-
`fluoroethylene, hexafluoropropylene in an amount
`corresponding to a hexafluoropropylene index
`(HFPI) of from about 2.8 to 5.3, said copolymer be-
`ing polymerized and isolated in the absence of
`added alkali metal salt, having a melt flow rate of
`within the range of about 30±3 g/10 min, and hav-
`ing no more than about 50 unstable endgroups/106
`carbon atoms.
`’609 patent col. 10 ll. 15–21.
`Like claim 1 of the ’609 patent, Kaulbach discloses a
`copolymer for high-speed extrusion coating of cables or
`wires. Kaulbach’s copolymer is nearly identical to the pol-
`ymer disclosed by claim 1 of the ’609 patent: Both copoly-
`mers are tetrafluoroethylene and hexafluoropropylene
`copolymers with decreased metal contamination and a low
`number of unstable endgroups. The only material differ-
`ence between claim 1 and Kaulbach is that Kaulbach dis-
`closes (in Sample A11) a melt flow rate of 24 g/10 min,
`slightly lower than 27 g/10 min, the lower bound of the
`30 ± 3 g/10 min rate claimed in claim 1 of the ’609 patent.
`
`

`

`Case: 20-1289 Document: 70 Page: 18 Filed: 07/22/2021
`
`THE CHEMOURS COMPANY FC, LLC v.
`DAIKIN INDUSTRIES, LTD.
`
`3
`
`The majority nevertheless concludes that Kaulbach
`teaches away from the claimed invention because increas-
`ing “Kaulbach’s melt flow rate to the claimed range . . .
`would necessarily involve altering [Kaulbach’s] inventive
`concept of a narrow molecular weight distribution poly-
`mer.” Maj. Op. 10. I disagree. Although it is true that
`Kaulbach’s invention is a narrow molecular weight distri-
`bution polymer, Kaulbach also acknowledges that “the art
`t[aught] that a broad molecular weight distribution [wa]s
`needed to achieve such high processing rates,” Kaulb-
`ach col. 3 ll. 60–62, and that prior art “mixtures ha[d] a
`very broad molecular weight distribution[,] which[,] ac-
`cording to conventional wisdom, results in an improved ex-
`trudability,”
`id. col. 1 ll. 57–59.
` Thus, even though
`Kaulbach determined that “a narrow molecular weight dis-
`tribution performs better,” it expressly acknowledged the
`feasibility of using a broad molecular weight distribution
`to create polymers for high speed extrusion coating of
`wires. Id. col. 3 ll. 62–65. This is not a teaching away from
`the use of a higher molecular weight distribution polymer.
`As our cases make clear, “that ‘better alternatives exist
`in the prior art does not mean that an inferior combination
`is inapt for obviousness purposes.’” Bayer Pharma AG v.
`Watson Lab’ys, Inc., 874 F.3d 1316, 1327 (Fed. Cir. 2017)
`(quoting In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir.
`2012)); see also In re Haase, 542 F. App’x 962, 969 (Fed. Cir.
`2013) (determining that a reference did not teach away
`from using an aluminum polymer with an ammonium pol-
`ymer just because the reference “show[ed] better turbidity
`results when using an aluminum polymer by itself”). The
`majority’s approach impermissibly expands the teaching
`away doctrine such that it encompasses a reference’s mere
`preference for a particular alternative.
`II
`Contrary to the majority’s assertion, modifying the mo-
`lecular weight distribution of Kaulbach’s disclosure of a
`
`

`

`Case: 20-1289 Document: 70 Page: 19 Filed: 07/22/2021
`
`4
`
`THE CHEMOURS COMPANY FC, LLC v.
` DAIKIN INDUSTRIES, LTD.
`
`24 g/10 min melt flow rate to achieve the 27 g/10 min melt
`flow rate of claim 1 would hardly “destroy the basic objec-
`tive” of Kaulbach as the majority claims. Maj. Op. 10 (quot-
`ing Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed.
`Cir. 2016)).
`As the Board determined, Kaulbach does not precisely
`define what constitutes a narrow molecular weight distri-
`bution, only defining a “very narrow molecular-weight dis-
`tribution” of “less than about 2” and “as low as 1.5.”
`Kaulbach col. 3 ll. 34–37. Sample A11 has a measured dis-
`tribution of 1.6, toward the lower end of this “very narrow”
`distribution range. Thus, Sample A11’s molecular weight
`distribution could be increased by 0.4 (25%) and still have
`a “very narrow” molecular weight distribution under
`Kaulbach. There is no support whatever for the theory that
`increasing the melt flow rate from 24 g/10 min (Kaulbach)
`to 27 g/10 min (the ’609 patent) (a 12.5% increase) would
`create more than a 0.4 increase (25%) in the molecular
`weight distribution and thus be contrary to Kaulbach’s
`supposed teaching to stay within the “very narrow” molec-
`ular weight distribution. The majority’s contrary conclu-
`sion constitutes nothing less than appellate factfinding,
`factfinding that has no record support.
`I would therefore affirm the Board’s determination
`that Ka