Anticipatory Reference Need Not Perform Claimed Combination; No Nexus Where Unexpected Results Stem from Something Other Than the Merits of the Claimed Invention

Kennametal, Inc. v. Ingersoll Cutting Tool Co., ___ F.3d. ___ (Fed. Cir. Mar. 25, 2015) (Prost, Newman, LINN) (PTAB) (1 of 5 stars)

Federal Circuit affirms PTAB's determinations of anticipation and obviousness in inter partes reexamination of patent directed to cutting tools containing ruthenium as a binder that are coated using physical vapor deposition ("PVD").

ANTICIPATION: Substantial evidence supports the Board's determination that certain claims were anticipated by the Grab patent, which recites using a binder consisting of one of five metals (including ruthenium) with one of three coatings (including PVD). The number of categories and components in Grab was not so large that the combination of using ruthenium and PVD coatings would not be immediately apparent. Grab expressly contemplated using PVD coatings and thus effectively taught 15 combinations, one of which anticipated the pending claim. The actual performance of combining the ruthenium binder and PVD coatings was not required, as anticipation only requires the suggested combination to be enabled.

WAIVER: Kennametal did not waive its right to challenge the Board's invalidity decisions for dependent claims where it did not separately argue for the patentability of those claims in its initial brief to the Board. At the time of its initial brief, there was no reason to separately argue for the patentability of the dependent claims because they were rejected for obviousness. Only on appeal did the Board institute a new basis for rejection, rejecting some claims for anticipation and regrouping the claims, thus necessitating separate arguments for the patentability of the remaining claims. "[A]rguments . . . cannot be deemed waived if they were not previously required to have been made." Slip Op. at 13 (quoting Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008)).

OBVIOUSNESS: Substantial evidence supports the obviousness finding of certain claims given the express teaching of combining ruthenium with PVD coating in Grab. A skilled artisan would readily envisage combining the two with a reasonable expectation of success and that was not undermined by the purported problem of cobalt capping in view of another reference. Moreover, Kennametal's secondary consideration argument that combining PVD-coating with ruthenium binders achieves a surprising and unexpected tool lifetime failed because it actually resulted from something other than what was claimed and novel in the claim, thus lacking a nexus to the merits of the claimed invention. Federal Circuit did not consider arguments that Kennametal raised in its reply brief because "arguments not raised until the reply brief are waived." Id. at 16.

Authors: Cherylyn Esoy Mizzo, Daniel A. Tishman