Rohm & Haas Winning Polymer Patent Defense at PTO Upheld

By Tony Dutra

Rohm & Haas Co.'s focus on expert testimony to defend its patents at the Patent Trial and Appeal Board paid off as the federal patent appeals court affirmed Oct. 11 its win over competitor Organik Kimya AS ( Organik Kimya as v. Rohm & Haas Co. , Fed. Cir., No. 2015-2001, 10/11/17 ).

The challenger claimed the patents on polymers useful in coating compositions such as paints were invalid as non-novel and obvious. But Rohm & Haas’s expert conducted experiments to show that the earlier examples of technology Organik Kimya relied on didn’t replicate the patented claims.

The U.S. Court of Appeals for the Federal Circuit dismissed Organik’s complaint that it shouldn’t have to conduct its own experiments to produce contradictory evidence. Experiments aren’t required, but a challenger has to do more than criticize the patent owner’s evidence with labels such as “irrelevant” and “flawed,” the court said.

Rohm, a subsidiary of Dow Chemical Co., sued Organik in federal court for infringement of four patents, including the related U.S. Patent Nos. 6,020,435 and 6,252,004. Organik initiated the PTAB proceedings against the two patents.

The board held separate trials but ultimately ruled in favor of Rohm, relying heavily on the declaration of its expert, Joseph Schork, submitted after trial institution. For example, one of the board’s opinions mentioned Schork’s testimony 22 times.

Unsupported Criticism Is Not Evidence

In general, Organik’s argument depended on getting a broad definition of a “swelling agent” referenced in the patent claims and description. The Federal Circuit agreed with the board and Rohm that the term applied only to an agent that performs specific functions, under specific conditions. Schork’s experiments showed that the prior art lacked an agent suitable for creating the reaction conditions required under the patent claims. Prior art includes examples of earlier patents, patent applications or other documents intended to show the invention was not a new idea.

To rebut that evidence, Organik had to provide “evidence and argument to negate and outweigh the evidence and argument provided by Rohm and Haas,” the court said. Instead, the challenger only leveled “unsupported criticism of Dr. Schork’s methodology,” the court said.

The court also agreed with the PTAB in rejecting Organik’s argument about a grammatical ambiguity in the patent specification of using both the words “include” and “those which” in describing the swelling agent. The term “those which” usually defines a limited set of elements, such that “swelling agent” should be interpreted narrowly, but the word “include” usually refers to a subset, which would support the challenger’s preferred broader interpretation. The court agreed with the board that the term “those which” modified the word “include,” meaning the limited-set definition was correct.

Judge Pauline Newman wrote the court’s opinion, which was joined by Chief Judge Sharon Prost and Judge Richard G. Taranto.

“Dow has steadfastly maintained that Organik’s legal arguments were baseless, and the Court’s decision has now vindicated Dow’s position,” the company said in a statement emailed to Bloomberg BNA. “Dow will remain an innovation leader in the coatings industry by vigorously defending our intellectual property.”

Quinn Emanuel Urquhart & Sullivan LLP represented Rohm & Haas.

Finnegan, Henderson, Farabow, Garrett & Dunner LLP, counsel for Organik Kimya, didn’t immediately respond to Bloomberg BNA’s request for comment.

To contact the reporter on this story: Tony Dutra in Washington at adutra@bna.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bna.com

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