Last month, in Colas Solutions, Inc. v. Blacklidge Emulsions, Inc., the Federal Circuit affirmed determinations by the U.S. Patent and Trademark Office Patent Trial and Appeal Board in two inter partes reviews that certain claims of U.S. Patent Nos. 7,503,724 and 7,918,624 are not unpatentable in view of the prior art of record. In particular, the Board found that Colas Solutions, Inc. had failed to establish obviousness based on inherency, and that Colas' alternative obviousness theory was not timely presented.
The '724 and '624 patents, which are directed to a method of applying a specific asphalt emulsion coating, known as a "tack coat," to a road surface, are assigned to Blacklidge Emulsions, Inc. The claimed invention involves a method of bonding layers of asphalt using a tack coat that has a surface that resists adhering to vehicle tires but still functions as an adhesive for subsequent layers of pavement. The claims require that the tack coat has a specific range of "softening points," which is the temperature at which an asphalt composition becomes soft and flowable.
Colas filed petitions for inter partes review of the '724 and '624 patents, arguing that the claims were obvious in view of Bardesi et al., "A Novel Generation of Tack Coat Emulsions to Avoid Adhesion to Tyres," Third World Congress on Emulsions ("Bardesi"), which Colas contended met the "softening point" element of each claim. While Bardesi does not expressly disclose softening points for any of its asphalts, it discloses "pen values" (i.e., penetration value), which measures the distance in dmm (tenths of a millimeter) that a standard needle, under a standard loading, will penetrate a sample in a given time under known temperature conditions. Colas argued that based on the pen values disclosed in Bardesi, the reference inherently discloses the softening point limitation, supporting its argument with testimony from its expert, who opined that asphalt having a hardness of 20-pen or below, which Bardesi specifically teaches, will necessarily have a softening point greater than that recited in the claims. In reaching this conclusion, Colas' expert relied on the Pfeifer equation to calculate potential softening points for the asphalts disclosed in Bardesi.
Blacklidge responded by arguing that the calculations of Colas' expert were flawed, noting that Blacklidge's own expert applied the Pfieffer equation and arrived at different potential softening points for the asphalts disclosed in Bardesi. In its reply, Colas conceded that its expert had made a mathematical mistake and that Blacklidge's expert's calculations were accurate. Colas, however, argued that its expert's calculations still established that "most 10/20 pen asphalts, and certainly the better quality 10/20 pen asphalts" disclosed in Bardesi would have softening points that were encompassed by the claims of Blacklidge's patents, and also contended that "a prima facie case of obviousness still exists when the ranges of a claimed composition overlap the ranges disclosed in prior art."
The Board issued final written decisions concluding that Colas had not shown by a preponderance of the evidence that any of the challenged claims in either patent would have been obvious in view of the prior art. With respect to Colas' inherency theory, the Board noted that in order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis, the limitation at issue must necessarily be present, or be the natural result of the combination of elements explicitly disclosed by the prior art. In the instant case, the Board noted that Colas had conceded that not all 10-pen and 20-pen asphalts have a softening points required to meet the claims. With respect to Colas' alternative theory based on overlapping ranges, the Board found that the new theory had been waived because it had not been included in Colas' petitions (the Board also determined that the new theory was unsupported by the evidence). The Board therefore determined that Colas had failed to establish that the challenged claims of the '724 and '624 patents were obvious in view of the cited references.
On appeal, Colas focused solely on the Board's rejection of its alternative theory of overlapping ranges, arguing that the Board erred by declining to consider that theory. The Federal Circuit, however, agreed with the Board that Colas' alternative theory had been waived. In finding that Colas' theory was waived, the Federal Circuit noted that a review of Colas' petitions confirmed that inherency was Colas' only theory for the disputed claim element concerning softening points. The Court stated that "[t]he untimeliness of Colas's alternative theory is self-evident," noting that "Colas fails to point to a single line of its original Petition articulating this theory." The Court explained that:
In sum, inherency was an all or nothing theory. Colas's Petition and its evidence were tailored to prove inherency. That theory failed. Colas's belated attempt to stretch that evidence to fit its alternative "overlapping ranges" theory only underscores that this theory was an afterthought raised for the first time in its Reply. Thus, the Board correctly concluded the theory was waived.
In response to Colas' contention that Blacklidge opened the door to Colas' alternative theory in its Response, the Federal Circuit declared that this was "[n]ot so," pointing out that "[e]ven a cursory review of the record shows that Blacklidge's Response simply pointed out the flaws in the underlying evidence supporting Colas's inherency theory." As for Colas' argument that the Board and Blacklidge were aware of Colas' broader theory that the claimed ranges of softening points would have been obvious to one of skill in the art, the Court indicated that "[t]his argument misconstrues the record," explaining that:
[H]ad Colas adequately articulated such a theory, it would not need to rely on Blacklidge's statements. Colas should be able to point to its location in the Petition. It cannot do so.
The Federal Circuit concluded by noting that "Colas jettisoned its inherency theory and introduced a brand-new theory of 'overlapping ranges' to explain why one of ordinary skill would find the disputed element taught by Bardesi," finding that "[u]nder such circumstances, the Board does not abuse its discretion in declining to consider such untimely theories." The Court therefore affirmed the Board's final written decisions finding the challenged claims to be not obvious in view of the prior art.
Colas Solutions, Inc. v. Blacklidge Emulsions, Inc. (Fed. Cir. 2019)
Nonprecedential disposition
Panel: Chief Judge Prost and Circuit Judges O'Malley and Hughes
Opinion by Chief Judge Prost
