Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Rovalma, S.A. v. Bohler-Edelstahl GMBH & Co. Kg

United States Court of Appeals, Federal Circuit

May 11, 2017

ROVALMA, S.A., Appellant
v.
BOHLER-EDELSTAHL GMBH & CO. KG, Appellee

         Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2015-00150.

          Marc Wade Vander Tuig, Senniger Powers LLP, St. Louis, MO, argued for appellant. Also represented by Robert M. Evans, Jr., John R. Schroeder.

          Maxwell James Petersen, Lewis Brisbois Bisgaard & Smith, LLP, Chicago, IL, argued for appellee. Also represented by THOMAS A. DOUGHERTY, Denver, CO.

          Before WALLACH, Taranto, and Stoll, Circuit Judges.

          TARANTO, Circuit Judge.

         Rovalma, S.A. owns U.S. Patent No. 8, 557, 056, which describes and claims methods for making steels with certain desired thermal conductivities. In October 2014, Bbhler-Edelstahl GmbH & Co. KG (Bohler) petitioned the Patent Trial and Appeal Board for an inter partes review of claims 1-4 of the '056 patent. The Board instituted a review based on Bohler's construction of the claims at issue. In its final written decision, however, the Board rejected Bohler's construction and adopted Rovalma's construction instead. Bohler had not submitted arguments or evidence for unpatentability based on Rovalma's construction. Nevertheless, the Board determined that Rovalma's own submissions demonstrated that the claims, construed as Rovalma urged, would have been obvious to a relevant skilled artisan over the same prior art that Bohler invoked.

         Rovalma appeals. It argues both that substantial evidence does not support the Board's determination and that the Board committed prejudicial procedural errors in relying on Rovalma's own submissions when determining that the claims would have been obvious under Rovalma's construction. We conclude that the Board did not set forth its reasoning in sufficient detail for us to determine what inferences it drew from Rovalma's submissions. We therefore cannot determine whether the Board's decision was substantively supported and procedurally proper. We vacate the Board's decision and remand for further proceedings.

         I

         The '056 patent addresses hot-work steels. It is undisputed that hot-work steels are used at high temperatures and that the ability to conduct and thereby remove heat-thermal conductivity-is important for such steels. According to the patent, hot-work steels disclosed in the prior art had thermal conductivities of approximately 16- 37 W/mK (Watts per meter-Kelvin), which were inade- quate for certain applications. '056 patent, col. 1, lines 50-52; col. 4, lines 11-14. The patent claims processes for "setting" the thermal conductivity of a hot-work steel at room temperature to more than 42 W/mK (higher in the dependent claims). Id., col. 21, line 59 through col. 22, line 64. The '056 patent discloses an allegedly inventive process that, to achieve such higher thermal conductivities, focuses on carbides (metal-carbon compounds) in the steel's matrix, or lattice, structure. Id., col. 4, lines 35-63.

         The summary of the invention states that "an internal structure of the steel is metallurgically created in a defined manner such that the carbidic constituents thereof have a defined electron and phonon density and/or the crystal structure thereof has a mean free length of the path for the phonon and electron flow that is determined by specifically created lattice defects." Id., col. 4, lines 37-43. Alternatively, the internal structure may have "in its carbidic constituents an increased electron and phonon density and/or which has as a result of a low defect content in the crystal structure of the carbides and of the metallic matrix surrounding them an increased mean free length of the path for the phonon and electron flow." Id., col. 4, lines 54-58.

The patent includes four claims. Claim 1 recites:
1. A process for setting a thermal conductivity of a hot-work steel, which comprises the steps of:
providing a hot-work steel, including carbidic constituents and, by weight, 2-10% Mo寥 [molybdenum tungsten vanadium];
metallurgically creating an internal structure of the steel in a defined manner such that carbidic constituents thereof have at least one of a defined electron and phonon density and a crystal structure thereof having a mean free length of a path for a phonon and electron flow being determined by specifically created lattice defects;
selecting:
a) a surface fraction and thermal conductivity of the carbidic constituents and a particular surface fraction and thermal conductivity of a matrix material containing the carbidic constituents; or
b) a volume fraction and thermal conductivity of the carbidic constituents and thermal conductivity of the matrix material containing the carbidic constituents; and
setting the thermal conductivity of the steel at room temperature to ...

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.