Procedural Over-Step by the Federal Circuit (Petition for Cert. in Daikin Industries v. Chemours Co.)

In 2021, Daikan brought an IPR against Chemours which resulted in the invalidation of two Chemours’ patents (US Patent Nos. 7,122,609 and 8,076,431). Daikin Industries has since petitioned for cert. arguing that the Federal Circuit violated the ADA by basing its decision on factual questions never considered by the PTAB.

In the PTAB, Chemours disclaimed the argument that prior art “taught away” from the claimed invention. However, in the Federal Circuit Chemours presented the argument to the court who in turn ruled in favor of Chemours. In so doing the court held that  ‘”the Board’s obviousness findings are not supported by substantial evidence,” because “the Board appears to have ignored the express disclosure in Kaulbach that teaches away from the claimed invention…”‘

In it’s petition for cert. Daikin presents the following question:

“May a federal appellate court, consistent with the Administrative Procedure Act and the principles of separation of powers embedded within that Act, reverse an administrative agency’s decision on a factual ground not addressed by the agency, without a remand to that agency?”

The response to the petition is due March 18, 2022.

Daikin petition for Cert

Link to additional articles:

https://patentlyo.com/patent/2022/02/flagrant-finding-federal.html