United States: Intellectual Property Practice Prevails In Important Inter Partes Review Before The Patent Trial And Appeal Board

Chicago Partner Maxwell Petersen succeeded in invalidating all claims of U.S. Patent 8,557,056, owned by Rovalma, S.A., before the U.S. Patent Trial And Appeal Board ("PTAB"). The patent covered a process for setting the thermal conductivity of a hot-work steel. The Decision, entered in IPR2015-00150 on April 20, 2016, represents an important victory for the firm's client, Bohler-Edelstahl GmbH & Co., who has a commercial interest in steels having high thermal conductivities.

The PTAB found that all patent claims were invalid over four combinations of prior art references cited by Bohler-Edelstahl, which disclosed hot-work steel compositions described in the Rovalma patent as having the claimed high thermal conductivities. Bohler-Edelstahl had argued that the patent was enabling only to the extent of the described steel compositions, which were known in the prior art. Rovalma had argued that the claimed process was independent of steel composition, the specific process steps were not disclosed in the prior art, and that the process steps could be practiced independently of steel composition using techniques familiar to ordinary skilled artisans, even though the techniques were not described in the patent specification. The PTAB found that the claims covered a broader range of compositions than those disclosed, and that practicing the process steps would have been obvious over the cited prior art, as read in light of the knowledge of ordinary skilled artisans.

PTAB trial proceedings have several advantages over U.S. District Court proceedings when challenging the validity of U.S. patents that pose a threat to a client's business. The advantages include a) broader claim construction that favors invalidity, b) issues decided by a panel of trained patent judges, c) faster decisions, typically in 18 months or less, and d) typical cost reduction of 75% to 90%. It is essential to develop a credible invalidity position before approaching the PTAB.

To view the fulll Decision, please click here.

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