February 5, 2023

Volume XIII, Number 36

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February 03, 2023

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February 02, 2023

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R&H’s Processes for Preparing Emulsion Polymers with Improved Opacity Not Invalid over the Prior Art that Does Not Include a “Swelling Agent” Narrowly Construed by the PTAB

ORGANIK KIMYA AS v. ROHM AND HAAS COMPANY: October 11, 2017. Before Prost, Newman, and Taranto.


  • Where a patent specification uses the word ‘include’ immediately followed by the phrase ‘are those which,’ the element is properly limited to the embodiments “which exhibit the functional characteristics thereafter described.”

Procedural Posture:

The Petitioner, Organik Kimya AS (“Organik”) requested IPRs of two patents owned by Rohm & Haas, directed to processes for preparing certain emulsion polymers having improved opacity. The PTAB (“Board”) issued Final Written Decisions in both IPRs, sustaining patentability of all challenged claims. Petitioner appealed. The Federal Circuit affirmed patentability of all challenged claims.


  • Claim Construction: On appeal, Organik argued that the PTAB adopted an overly narrow interpretation of the term “swelling agent,” and that the word “include” opened the definition of “swelling agent” to include bases that do not act by penetrating the shell, that are not used under the conditions described in the specification, and that have not been shown to achieve swelling. The Federal Circuit It found appropriate the PTAB’s narrow construction of “swelling agent” because the word ‘include’ was immediately followed by the phrase ‘are those which,’ which limited suitable swelling agents to “only those which exhibit[ed] the functional characteristics thereafter described” in the patent.
  • Inherent Anticipation: The Federal Circuit disagreed that the Toda reference disclosed a “swelling agent” as construed by the Board. Organik argued that inherently, “the potassium hydroxide used by Toda must be a swelling agent because it is a base, and the same type of voided polymer particles are produced by the methods disclosed in Toda as in the ’435 Patent.” The Federal Circuit rejected this argument, agreeing that the PTAB’s contrary finding was supported by substantial evidence. The potassium hydroxide base was present in Toda, “but not as a swelling agent and not under conditions that swell the core.” Patentee’s expert verified this by experimentation, and Organik did not present contradictory evidence.
  • Obviousness: Organik argued that the Touda reference showed voided emulsion polymerization and the presence of a base, and thus the claims were obvious over it. The Federal Circuit disagreed, affirming PTAB’s factual findings that the core and the shell are only slightly acidic, and that the shell of the Touda polymer would be too hard for the bases to permeate under the described conditions. These findings were in accordance with law and supported by substantial evidence in the record—namely, the experiments and testimony of R&H’s expert—and Petitioner did not provide “any experimental evidence contradicting” that of the Patentee.
Copyright © 2023, Hunton Andrews Kurth LLP. All Rights Reserved.National Law Review, Volume VII, Number 299

About this Author

Gregory L. Porter, Intellectual Property Attorney, Andrews Kurth, Law Firm

Greg Porter has extensive experience representing and advising companies in all aspects of patent and trade secret law, including acting as lead counsel in successful jury trials and preliminary injunction hearings, as well as advising on patent procurement and designing around competitor's patents. Greg also has counseled Fortune 500 clients on the creation and management of their patent portfolios.

Over the years, Greg has successfully litigated cases in a diverse range of technologies from oil field tools to polymers and computer networking. Greg has drafted and...

Ksenia Takhistova, Andrews Kurth Law Firm, New York, Intellectual Property Litigation Attorney

Ksenia’s practice focuses on IP litigation and client counseling across a wide variety of modern technologies. She has substantial experience in all aspects of litigation, representing both plaintiffs and defendants in patent cases (including ANDA litigations) before the Federal District Courts, at the International Trade Commission, and in post-grant proceedings (IPRs) at the US Patent and Trademark Office. She also handles trademark (false advertising) and trade secret disputes in both Federal and State Courts. Ksenia also represents clients in settlement negotiations...

Michael J. Block, Andrews Kurth, patent litigation lawyer, dispute resolution attorney

Michael is an Associate in the Intellectual Property section of the firm’s New York – Battery Park office. He focuses his practice on patent litigation and dispute resolution, especially in the field of electrical engineering.

Michael previously worked in-house at a company where he was engaged in the innovation, development, and monetization of intellectual property and mobile technologies. Michael also has experience in prosecuting patent applications and has written claims, responded to office actions, and participated in interviews with...