United States Court of Appeals 

for the Federal Circuit ______________________ 

ROVALMA, S.A.,

Appellant

v.

BOHLER-EDELSTAHL GMBH & CO. KG,

Appellee

______________________ 

2016-2233

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2015-

00150.

______________________ 

Decided: May 11, 2017

______________________ 

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

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, 

Böhler-Edelstahl GmbH & Co. KG (Böhler) 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 Böhler’s construction of the claims at 

issue. In its final written decision, however, the Board 

rejected Böhler’s construction and adopted Rovalma’s 

construction instead. Böhler 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 Böhler 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-
ROVALMA, S.A. v. BOHLER-EDELSTAHL GMBH & CO. KG 3

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+W+V

[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 
4 ROVALMA, S.A. v. BOHLER-EDELSTAHL GMBH & CO. KG

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 more than 42 W/mK. 

Id., col. 21, line 59 through col. 22, line 14.

Claims 2 and 3, which depend on claim 1, require setting the thermal conductivities of the steel to more than 

48 and 55 W/mK respectively. ’056 patent, col. 22, lines 

15–20. Claim 4, an independent claim, is similar to claim 

1, but contains some different language in the “creating” 

step, including a reference to a “metallic matrix” surrounding the carbides. Id., col. 22, lines 21–64.

In October 2014, Böhler petitioned for inter partes review of all four claims of the ’056 patent under 35 U.S.C. 

§§ 311–312. In its Petition, Böhler argued that the claims 

should be construed to cover the specific chemical compositions described in the specification, whether or not 

created according to the process steps—“providing,” 

“creating,” “selecting,” and “setting”—recited in the 

claims. See Petition for Inter Partes Review 4–20, BöhlerEdelstahl GmbH & Co. KG v. Rovalma, S.A., No. 

IPR2015-00150 (P.T.A.B. Oct. 24, 2014), Paper No. 1

(Petition). Böhler argued that the claims, so construed, 
ROVALMA, S.A. v. BOHLER-EDELSTAHL GMBH & CO. KG 5

would have been obvious over various prior-art references

that disclosed those compositions, including European 

Patent No. EP 0,787,813 (EP ’813). Petition 20–59. 

Böhler did not address whether the asserted prior-art 

references disclosed the “providing,” “creating,” “selecting,” and “setting” steps of the ’056 patent’s claims. See 

id. Nor did Böhler address whether those steps would 

have been obvious to one of ordinary skill in the art. See 

id.

In April 2015, the Board, acting as the delegate of the 

Patent and Trademark Office’s Director, 37 C.F.R. 

§ 42.4(a), instituted a review of the challenged claims

under 35 U.S.C. § 314. See Institution Decision, BöhlerEdelstahl GmbH & Co. KG v. Rovalma, S.A., No. 

IPR2015-00150, 2015 WL 1871000 (P.T.A.B. Apr. 22, 

2015). In its decision to institute, the Board adopted 

Böhler’s proposed claim construction. Id. at *3–8. Applying that construction, the Board concluded that Böhler

had established a reasonable likelihood of prevailing on 

its assertion that the challenged claims would have been 

obvious over the asserted prior-art references. Id. at *8–

9. 

After the review was instituted, Rovalma, in its Patent Owner’s Response, argued against the claim construction that the Board had relied on in instituting the 

review. Patent Owner Response 19–51, Böhler-Edelstahl, 

No. IPR2015-00150 (P.T.A.B. Aug. 14, 2015), Paper No. 

25. Rovalma argued that the claims should be construed 

to require performance of the processes recited in the 

claims, not simply to cover the compositions described in 

the specification. As background for its proposed claim 

construction—according to Rovalma’s statement at oral 

argument in this court, to counteract an enablementbased objection to its proposed construction—Rovalma 

submitted additional evidence and argument regarding 

thermoprocessing. 
6 ROVALMA, S.A. v. BOHLER-EDELSTAHL GMBH & CO. KG

Rovalma argued that a person of ordinary skill in the 

art at the time of the invention, given the specification,

would have been able to predict the formation of certain 

carbides based on particular heat treatments. Id. at 4. 

Rovalma also argued that a person of ordinary skill would 

have been able to use software tools, such as ThermoCalc, to carry out the needed calculations. Id. at 4–5. In 

addition, Rovalma argued, based on H. Bayati & R. Elliott, Influence of Matrix Structure on Physical Properties 

of an Alloyed Ductile Cast Iron, 15 Materials Sci. & Tech. 

265 (1999), that the thermal conductivity of a steel depends on lattice defects and impurities. Patent Owner 

Response 7. The passage of Bayati and Elliott cited by 

Rovalma states that matrix structure and thermal processing also affect thermal conductivity. See, e.g., Bayati 

& Elliot, supra, at 265 (“Matrix structure is shown to play 

a significant role in determining the thermal conductivity 

of the ductile iron.”); id. (“Heat transport also depends on 

lattice defects, microstructure, impurities, and the processing of the metal or alloy.”).

In its Petitioner’s Reply, Böhler repeated its contention that the claims should be construed to cover chemical 

compositions, not processes. Petitioner’s Reply 5–21, 

Böhler-Edelstahl, No. IPR2015-00150 (P.T.A.B. Nov. 11, 

2015), Paper No. 30. It did not argue, in the alternative, 

that the claims would have been obvious under Rovalma’s 

proposed claim construction. Nor did it address Rovalma’s thermoprocessing submissions, except to argue that 

Rovalma’s extrinsic evidence was irrelevant to the proper 

construction of the claims. See id. at 7–8. 

At the oral argument, the Board extensively questioned Rovalma’s counsel about the effect of its thermoprocessing submissions on the patentability of the claims 

under the claim construction urged by Rovalma. See

Record of Oral Hearing 53–87, 94–95, Böhler-Edelstahl, 

No. IPR2015–00150 (P.T.A.B. Mar. 30, 2016), Paper No. 

41. In particular, the Board asked Rovalma to discuss the 
ROVALMA, S.A. v. BOHLER-EDELSTAHL GMBH & CO. KG 7

notion that it would have been obvious to create steel with 

the claimed thermal conductivities in light of the prior-art 

references advanced by Böhler because: (a) those references disclosed the chemical compositions described in the 

’056 patent specification; and (b) Rovalma’s submissions

showed that a person of ordinary skill in the art would 

have known how to optimize those compositions to 

achieve the desired properties, including thermal conductivity. See, e.g., id. at 67 (“But see, in [Bayati and Elliott] 

I believe the abstract is telling us the matrix structure is 

shown to play a significant role in determining thermal 

conductivity of ductile iron. Why wouldn’t one of ordinary 

skill in the art, given the Böhler reference and [Bayati 

and Elliott], understand that the matrix structure[] is 

important for thermal conductivity and you would want to

optimize it for a given composition?”). 

In April 2016, the Board found the challenged claims 

unpatentable. The Board rejected Böhler’s claim construction, and adopted Rovalma’s. Final Written Decision 

8–17, Böhler-Edelstahl, No. IPR2015-00150 (P.T.A.B. Apr. 

20, 2016). Applying Rovalma’s construction, the Board

then determined that the claims would have been obvious

over “the asserted prior art as read in light of the 

knowledge of the ordinarily skilled artisan.” Final Written Decision 22; see id. at 20–22. The Board relied on 

Rovalma’s own submissions for key findings about what a 

relevant skilled artisan would have taken from the Böhler-asserted prior art. 

Specifically, the Board rejected Rovalma’s argument 

that the asserted prior-art references did not disclose 

setting the thermal conductivity of a steel by selecting a 

surface or volume fraction of carbides or by manipulating 

the steel’s microstructure in a defined manner. See id. 

Instead, the Board found that a person of ordinary skill 

“would have recognized that thermal processing conditions affect internal structure and, thus, thermal properties of steel.” Id. at 21. The Board also found that a 
8 ROVALMA, S.A. v. BOHLER-EDELSTAHL GMBH & CO. KG

person of ordinary skill would have been motivated to 

increase the thermal conductivity of steel and would have 

had a reasonable expectation of success in doing so. Id. at 

22. The Board further found that a person of ordinary 

skill would have “inherently completed the ‘selecting’ 

steps set forth in the challenged claims.” Id. To support 

each of those findings, the Board relied on Rovalma’s 

thermal-processing submissions and Rovalma’s statements at the oral argument. See id. at 20–22.

Rovalma appeals the Board’s decision. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

II

We review the Board’s decisions under the Administrative Procedure Act (APA). Taking “due account . . . of 

the rule of prejudicial error,” we must “hold unlawful and 

set aside agency action, findings, and conclusions found to 

be . . . arbitrary, capricious, an abuse of discretion, or 

otherwise not in accordance with law,” “without observance of procedure required by law,” or “unsupported 

by substantial evidence.” 5 U.S.C. § 706. In applying 

those standards, “we will uphold a decision of less than 

ideal clarity if the agency’s path may reasonably be discerned,” but “we may not supply a reasoned basis for the 

agency’s action that the agency itself has not given.” 

Bowman Transp., Inc. v. Ark.-Best Freight Sys., Inc., 419 

U.S. 281, 285–86 (1974); SEC v. Chenery Corp., 332 U.S. 

194, 196–97 (1947). Thus, the Board must, as to issues 

made material by the governing law, set forth a sufficiently detailed explanation of its determinations both to 

enable meaningful judicial review and to prevent judicial 

intrusion on agency authority. See SEC v. Chenery Corp. 

318 U.S. 80, 88, 94 (1943); Personal Web Technologies, 

LLC v. Apple, Inc., 848 F.3d 987, 991–93 (Fed. Cir. 2017);

In re NuVasive, Inc., 842 F.3d 1376, 1382–83 (Fed. Cir. 

2016). 
ROVALMA, S.A. v. BOHLER-EDELSTAHL GMBH & CO. KG 9

In challenging the Board’s decision in this case, 

Rovalma argues both evidentiary insufficiency and procedural inadequacy. We address those arguments in turn. 

We conclude that a remand is advisable in both respects, 

for related reasons.

A 

Rovalma challenges the Board’s implicit factual findings that a person of ordinary skill (1) would have appreciated that the claimed thermal conductivities could be 

achieved by practicing the claimed process steps, (2) 

would have been motivated to increase the thermal conductivities of the steels disclosed in the prior art to 

achieve the claimed thermal conductivities, and (3) would 

have had a reasonable expectation of success in achieving 

the claimed thermal conductivities. We conclude that the 

Board did not sufficiently explain the basis for its obviousness determinations to permit us to resolve the substantial-evidence issues raised by Rovalma. 

The Supreme Court has recognized the importance of 

clarity with respect to obviousness determinations. For 

example, in KSR International Co. v. Teleflex Inc., 550 

U.S. 398 (2007), the Court explained that determining 

whether a person of ordinary skill would have been motivated to combine known elements to arrive at the patented invention often requires a factfinder to compare the 

“interrelated teachings of multiple patents; the effects of 

demands known to the design community or present in 

the marketplace; and the background knowledge possessed by a person having ordinary skill in the art.” Id. at 

418. “To facilitate review,” the Court added, “this analysis should be made explicit.” Id. We have repeatedly 

insisted on such explanations in reviewing the adequacy 

of the Board’s analysis—both as a matter of obviousness 

law and as a matter of administrative law. We have 

noted that the amount of explanation needed varies from 

case to case, depending on the complexity of the matter 
10 ROVALMA, S.A. v. BOHLER-EDELSTAHL GMBH & CO. KG

and the issues raised in the record. See Personal Web

Technologies, 848 F.3d at 991–94; Ariosa Diagnostics v. 

Verinata Health, Inc., 805 F.3d 1359, 1364–67 (Fed. Cir. 

2015); In re Lee, 277 F.3d 1338, 1342–46 (Fed. Cir. 2002).

In this case, the Board did not adequately explain the 

basis for the findings that Rovalma challenges. The 

Board found that EP ’813 and the other asserted prior-art 

references expressly disclosed steel compositions “including carbidic constituents and, by weight, 2–10% 

Mo+W+V,” as required by the “providing” steps in claims 

1 and 4 of Rovalma’s patent. Final Written Decision 22. 

But the Board did not sufficiently lay out the basis for its 

implicit findings regarding the remaining process limitations. With respect to those limitations, the Board found 

that a person of ordinary skill “would have at least inherently completed the ‘selecting’ steps” and apparently 

determined that the other steps would have been obvious 

in view of Rovalma’s submissions. Id. But it did not 

explain the evidentiary basis for those determinations, 

and Böhler did not provide any explanation regarding the 

process claim elements that the Board could adopt as its 

own.

Nor did the Board adequately explain why a person of 

ordinary skill in the art would have been motivated to 

increase the thermal conductivities of the steels disclosed 

in the prior art. Stating that EP ’813 and other asserted 

prior-art references disclosed “the desirability of steels 

having high thermal conductivity,” the Board found that a 

person of ordinary skill “would have had reason to increase the thermal conductivity of these compositions.” 

Id. But the Board did not cite any evidence, either in the 

asserted prior-art references or elsewhere in the record, 

with sufficient specificity for us to determine whether a 

person of ordinary skill in the art would have been so 

motivated. As Rovalma points out, it does not necessarily

follow from prior-art disclosures of the general desirability of high thermal conductivities that a person of ordi-
ROVALMA, S.A. v. BOHLER-EDELSTAHL GMBH & CO. KG 11

nary skill would have been motivated to increase thermal 

conductivity beyond levels previously achieved. 

Adequate explanation is also lacking for why a person 

of ordinary skill in the art would have reasonably expected success in achieving the claimed thermal conductivities. The Board found that Rovalma’s submissions 

disclosed that a person of ordinary skill would have 

understood “heat transfer through metallic matrices and 

entrained metal carbides” and “the ability to model the 

effects of thermal processing on steel alloy microstructure,” and from that finding the Board inferred that a 

person of ordinary skill “would have had a reasonable 

expectation of success in arriving at the claimed invention.” Id. Again, however, the Board did not cite any 

evidence to support the inference that a person of ordinary skill would have reasonably expected to achieve the 

specific thermal conductivities recited in the claims.

Without more explanation than we have, we are not 

prepared to reach a bottom-line judgment on Rovalma’s 

substantial-evidence challenge. The Board has not provided a sufficiently focused identification of the relevant 

evidence or explanation of its inferences for us to confidently review its decision and avoid usurping its factfinding authority. See Consolidated Edison Co. of N.Y. v. 

NLRB, 305 U.S. 197, 229 (1938) (“Substantial evidence 

. . . means such relevant evidence as a reasonable mind 

might accept as adequate to support a conclusion.”). 

Accordingly, as we have concluded in similar circumstances, these deficiencies call for a vacatur and remand 

for further explanation from the Board. See, e.g., Icon 

Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1044 

(Fed. Cir. 2017); In re Van Os, 844 F.3d 1359, 1360–62 

(Fed. Cir. 2017); Personal Web Technologies, 848 F.3d at 

991–94; Ariosa Diagnostics, 805 F.3d at 1364–67. We 

next address Rovalma’s procedural challenge. 
12 ROVALMA, S.A. v. BOHLER-EDELSTAHL GMBH & CO. KG

B 

Rovalma makes essentially two arguments in favor of 

its contention that the Board committed prejudicial 

procedural error. One argument is that the inter partes 

review statute prohibited the Board, after adopting 

Rovalma’s own claim construction, from relying on 

Rovalma’s own submissions in determining that the

claims, so construed, would have been obvious over the 

Böhler-asserted prior art. The other argument is that 

Rovalma was denied adequate notice of and an adequate 

opportunity to address the possibility that the Board 

would rely on Rovalma’s submissions, as it ultimately did. 

1 

We reject Rovalma’s argument that the Board “exceeded its statutory authority.” Appellant’s Br. 24 (capitalization in heading omitted). To support that argument, 

Rovalma relies entirely on In re Magnum Oil Tools International, Ltd., 829 F.3d 1364 (Fed. Cir. 2016). That 

decision, however, does not preclude the Board from 

relying on a patent owner’s own submissions in determining unpatentability in the way the Board did here, as long 

as the patent owner had adequate notice and an adequate 

opportunity to be heard—procedural requirements that 

we address in the next subsection of this opinion.

The court in Magnum Oil focused principally on the 

question of whether the Board had violated 35 U.S.C. 

§ 316(e) by improperly relying on a burden-shifting 

framework that required the patent owner, not the petitioner, to prove the unpatentability of claims on which 

review was instituted. We held that the Board had engaged repeatedly in such impermissible burden shifting. 

Magnum Oil, 829 F.3d at 1375–79. We then explained 

that the evidence in the record did not permit the findings 

of fact needed to establish unpatentability, noting that on 

the crucial points the petitioner’s evidence consisted of no 
ROVALMA, S.A. v. BOHLER-EDELSTAHL GMBH & CO. KG 13

more than legally insufficient “conclusory statements.” 

Id. at 1380.

In the final paragraph of the opinion, we addressed

the Director’s broad contention that the Board was free to 

make an argument for the petitioner simply because the 

argument “‘could have been included in a properly-drafted 

petition.’” Id. at 1377, 1380 (quoting Intervenor’s Br. 34, 

Magnum Oil, 829 F.3d 1364, ECF No. 41). We rejected 

“the PTO’s position that the Board is free to adopt arguments on behalf of petitioners that could have been, but 

were not, raised by the petitioner during an IPR” and 

explained that “the Board must base its decision on 

arguments that were advanced by a party, and to which 

the opposing party was given a chance to respond.” Id. at 

1381 (citing SAS Inst., Inc. v. ComplementSoft, LLC, 825 

F.3d 1341, 1351 (Fed. Cir. 2016)).

Magnum Oil, we conclude, is best understood as supporting Rovalma’s contention only with respect to the 

requirement of notice and opportunity to be heard, and no 

further. Here, the Board resolved an active dispute over 

claim construction in favor of the patent owner and, using 

the patent owner’s construction, relied on the patent 

owner’s own submissions to determine how a skilled 

artisan would have read the very prior-art references on 

which the petitioner’s obviousness challenge was based.1 

That was not the situation in Magnum Oil. And our 

 

1 Rovalma does not dispute that a skilled artisan’s 

background knowledge is relevant to the reading of the 

prior art on which the obviousness challenge is based and 

that it is permissible, and sometimes even necessary, to 

establish such background knowledge by pointing to other 

prior art. See, e.g., Van Os, 844 F.3d at 1361; K/S Himpp 

v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365–66 (Fed. 

Cir. 2014); Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 

(Fed. Cir. 2013).
14 ROVALMA, S.A. v. BOHLER-EDELSTAHL GMBH & CO. KG

statement that the Board must rely on “arguments that 

were advanced by a party,” 829 F.3d at 1381, does not, by 

its terms, preclude the Board from relying on arguments 

made by a party and doing its job, as adjudicator, of 

drawing its own inferences and conclusions from those 

arguments, even when the result is use of the party’s 

submissions against it—subject, of course, to the provision 

of adequate notice and opportunity to be heard. 

We do not see any reason that Magnum Oil should be 

read more broadly to establish a statutory rule prohibiting the Board from ever relying on a patent owner’s own 

submissions in determining unpatentability, even as 

evidence of the knowledge a relevant skilled artisan 

would bring to reading the prior art asserted by the 

petitioner. Magnum Oil was addressing only the Director’s broad assertion that the Board could raise any

argument that could have been included in a petition. 

Rejecting that broad assertion does not imply precluding 

reliance on a patent owner’s own submissions (part of the 

record created by the parties) essentially as admissions, if 

adequate notice and opportunity to be heard are provided. 

And Rovalma has identified nothing in the statute that 

forbids the Board to follow the principle, which is well 

established in other adjudicatory settings, that a tribunal 

may use a party’s own submissions against it, even if the

opposing party bears the burden of persuasion. See, e.g., 

Advanced Magnetic Closures, Inc. v. Rome Fastener Corp., 

607 F.3d 817, 832 (Fed. Cir. 2010) (“To the extent that the 

district court relied on Mr. Riceman’s testimony to explain 

Mr. Bauer’s motives for listing himself as the ’773 patent 

inventor, . . . we find this error harmless because [the 

patent owner’s] own evidence . . . provided a sufficient 

basis on which to infer that Mr. Bauer intended to deceive 

the PTO.”); Nobelpharma AB v. Implant Innovations, Inc., 

141 F.3d 1059, 1065 (Fed. Cir. 1998) (“[T]he district court 

did not place the burden of proving validity on [the patent 

owner]; [the patent owner’s] own evidence was clear and 
ROVALMA, S.A. v. BOHLER-EDELSTAHL GMBH & CO. KG 15

convincing that the patent is invalid.”); Mroz v. Dravo 

Corp., 429 F.2d 1156, 1163 (3d Cir. 1970) (“It is true that 

the burden of proof is on the defendant to prove contributory negligence. But . . . contributory negligence may . . . 

be established by the plaintiff’s evidence alone.”). 

SAS Institute, on which we relied in Magnum Oil for 

the statement invoked by Rovalma, also supports a narrower reading of Magnum Oil than Rovalma urges. In 

SAS Institute, we affirmed the Board’s construction of 

certain claim language, but remanded for application of 

that construction. 825 F.3d at 1348–53. As we explained, 

remand was necessary because the Board had newly 

adopted that construction in its final written decision—

even though the parties did not dispute the meaning of 

the construed claim language—without giving the petitioner an opportunity to argue that the claims would have 

been unpatentable under that (correct) construction. Id.

at 1350–53. The provision of a remand in SAS Institute

cuts against Rovalma’s position regarding Magnum Oil 

and the statute. If the statute prohibited the Board from 

ever determining that a claim was unpatentable under a 

construction that the petitioner had not addressed in its 

submissions, remand would have been inappropriate in 

SAS Institute. 

For those reasons, we conclude that Rovalma has not 

shown a statutory bar, independent of whether it had 

adequate notice and opportunity to be heard, to the 

Board’s reliance on Rovalma’s submissions in determining 

what a skilled artisan would have found obvious based on 

Böhler’s prior-art references. We must therefore turn to 

Rovalma’s argument that it lacked adequate notice and 

opportunity to be heard. Before we do so, however, we 

emphasize two ways in which our conclusion in this 

subsection is limited.

First, we have addressed Rovalma’s statutory argument only in the context of the circumstances of this case. 
16 ROVALMA, S.A. v. BOHLER-EDELSTAHL GMBH & CO. KG

We have not explored other questions about what authority the statute might permit the Board to exercise to raise 

issues or arguments or to produce evidence sua sponte in 

an inter partes review, if it gave adequate notice and an 

adequate opportunity to be heard, as district courts may 

sometimes do in their cases. See, e.g., Day v. McDonough, 

547 U.S. 198, 205–11 (2006) (discussing a district court’s

authority to raise certain affirmative defenses not raised

by party); Monolithic Power Sys., Inc. v. O2 Micro Int’l 

Ltd., 558 F.3d 1341, 1346–48 (Fed. Cir. 2009) (discussing 

a district court’s authority to call and to question witnesses and to appoint its own expert under Fed. R. Evid. 614 

and 706 and to rely on the resulting evidence).

Second, we have addressed and rejected only Rovalma’s contention about statutory authority. We have not 

decided what regulatory or other non-statutory constraints, either on the Board or on the parties, such as 

those which govern waiver or forfeiture, might apply to 

the Board’s determination of unpatentability under 

Rovalma’s claim construction. We note that, in this case, 

unlike in SAS Institute, the petitioner had clear notice 

that the Board might adopt the claim construction ultimately adopted—that construction was argued in the 

Patent Owner’s Response—yet it did not present a case 

for unpatentability under that construction when it had 

the opportunity, in its Reply. Whether Böhler committed 

a forfeiture, and whether Rovalma has preserved a forfeiture contention, are among the non-statutory matters 

open for the Board to consider in the remand we order. 

2 

Under the APA, the Board must comply with certain 

procedural requirements in conducting an inter partes 

review. Notably, the Board must timely inform a patent 

owner of “the matters of fact and law asserted,” give the 

patent owner an “opportunity” for the “submission and 

consideration of facts” and “arguments,” and permit the 
ROVALMA, S.A. v. BOHLER-EDELSTAHL GMBH & CO. KG 17

patent owner “to submit rebuttal evidence, and to conduct 

such cross-examination as may be required for a full and 

true disclosure of the facts.” 5 U.S.C. §§ 554(b)(3), (c), 

556(d); see, e.g., SAS Inst., 825 F.3d at 1351; Dell Inc. v. 

Acceleron, LLC, 818 F.3d 1293, 1301 (Fed. Cir. 2016); 

Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. 

Cir. 2015). In applying those provisions, we have explained that the Board “‘may not change theories in 

midstream without giving respondents reasonable notice 

of the change’ and ‘the opportunity to present argument 

under the new theory.’” Belden, 805 F.3d at 1080 (quoting 

Rodale Press, Inc. v. FTC, 407 F.2d 1252, 1256–57 (D.C. 

Cir. 1968)). The Board’s procedural obligations are not 

satisfied merely because a particular fact might be found 

somewhere amidst the evidence submitted by the parties, 

without attention being called to it so as to provide adequate notice and an adequate opportunity to be heard. 

NuVasive, 841 F.3d at 971.

In this case, because we cannot sufficiently determine 

how the Board reached the conclusion that the challenged 

claims would have been obvious, we also cannot conclusively determine whether the Board’s actions complied 

with the APA’s procedural requirements. As discussed 

above, the Board’s decision indicates that the Board found 

that a person of ordinary skill would have appreciated 

that the claimed thermal conductivities could be achieved 

by practicing the claimed process steps, but does not 

adequately explain the basis for that finding. Because the 

asserted prior-art references concededly did not disclose 

those steps in as many words, the Board relied on Rovalma’s submissions to determine that skilled artisans would 

have found the process steps obvious.

To the extent that the Board did rely on Rovalma’s 

submissions, and drew reasonably disputable inferences 

from those submissions, Rovalma was entitled to adequate notice of and opportunity to address those inferences. But Böhler never described what inferences were 
18 ROVALMA, S.A. v. BOHLER-EDELSTAHL GMBH & CO. KG

to be made, as it essentially disregarded the process steps

throughout the Board proceeding. And although the 

Board discussed the process steps extensively at the oral 

argument, that was too late in the absence of an additional adequate opportunity to be heard. See Dell, 818 F.3d at 

1301. 

Because we cannot sufficiently determine which inferences the Board drew from Rovalma’s submissions, we 

will not decide whether the Board violated Rovalma’s 

procedural rights. To make that decision, we would need 

to be able to determine what evidence the Board relied on 

to support its implicit factual findings, how the Board 

interpreted that evidence, and what inferences the Board 

drew from it. The Board’s opinion does not sufficiently 

permit such determinations. As with the substantialevidence challenge, a remand is warranted on Rovalma’s 

procedural challenge. See Personal Web Technologies, 848 

F.3d at 991–94; NuVasive, 842 F.3d at 1381–85; Ariosa 

Diagnostics, 805 F.3d at 1364–67.

CONCLUSION

For the foregoing reasons, we vacate the Board’s decision and remand for further proceedings.

No costs.

VACATED AND REMANDED