# United States **Court of Appeals**  **for the Federal Circuit**

______________________ EMERACHEM HOLDINGS, LLC, Appellant

v.

VOLKSWAGEN GROUP OF AMERICA, INC., Appellee

JOSEPH MATAL, PERFOR MING THE FUNCTIONS & DUTIES OF THE UNDE R SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, U.S. P ATENT & TRADEMARK OFFICE, Intervenor

______________________

2016

- 1984

______________________ Appeal from the United States Pa tent and Trademark Office, Patent Trial and Appeal Board in No. IPR2014

- 01558.

______________________

Decided: June 15, 2017

______________________

M ICHAEL J. B RADFORD , Ludeka Neely Group, PC, Knoxville, TN, argued for appellant. Also represented by J ACOBUS C. R ASSER , Amsterdam, The Netherlands.EMERACHEM HOLDINGS , LLC v. VOLKSWAGEN GRP

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S TEVEN F. M EYER , Locke Lord LLP, New York, NY, argued for appellee. Also represented by S ETH J. A TLAS , J OSEPH A NTHONY F ARCO

.

F RANCES L YNCH , Office of the Solicitor, U nited S tates Patent and Trademark Office, Alexandria, VA, argued for intervenor. Also represented by N ATHAN K. K ELLEY , S COTT W EIDENFELLER , M ONICA B ARNES L ATEEF

.

______________________

Before M OORE , C LEVENGER , and C HEN , Circuit Judges.

M OORE , Circuit Judge

. EmeraChe m Holdings, LLC (“EmeraChem”) appeals from a decision of the Patent Trial and Appeal Board (“Board”) that claims 1– 14 and 16

– 20 of U.S. Patent No. 5,599,758 (“the ’758 patent”) would have be en obvious over U.S. Patent No. 5,451,558 (“Campbell ’558”) , Jap an ese Patent Application No. 62

- 106826 (“Sai to”), and U.S. Patent No. 5,362,463 (“Stiles”). For the reasons set forth below, we affirm the Board’s decisions as to claims 1– 2, 4– 14, and 17

– 19 and vacate and remand as to claims 3, 16, and 20.

B ACKGROUND

Th e ’758 patent claims methods for regenerating a devitalized catalyst/absorber that has absorbed and oxidized nitrates and nitrites after extended exposure to pollutants in the combustion gases of eng ines. ’758 patent at Abstract, 1:6

– 9. The catalyst/absorber is revitalized for reuse by passing a regeneration gas over it. Id. at 2:47

– 50. The regeneration gas consists of a reactant gas that reduces and removes the oxidized pollutants from the catalyst/absorber and an inert carrier gas. Id. at 2:55

– 3:3. R egeneration can be carried out in situ , without removing and replacing the catalyst with a fresh

, unr eacted one. Id. at 2:19

– 24, 2:38

– 41.EMERACHEM HOLDINGS , LLC v. VOLKSWAGEN GRP

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The application for the ’758 patent was filed on D ecember 23, 1994
, and the pate nt issued o n February 4, 1997. Eugene D. Guth and Larry E. Campbell are named

co

- inventors. The ’758 patent incorporates Campbell ’558 in its entirety

. The application for Camp bell ’558 was filed on February 4, 1994, and the patent issued on Se ptember 19, 1995. M r. Campbell, Robert Danzige r, Mr. Guth, and Sally Padron are named co

- inventors of Campbell ’558

. Mr. Guth is de ceased. Campbell ’558 discloses a catalyst/absorber used to absorb and oxidize pollutants from exhaust gas. ’758 patent at 1:57

– 2:15. Unlike the ’758 patent’s invention that allows for in situ regeneration of the catalyst/absorber, Campbell ’558 requires removal of the catalyst/absorber from the e xhaust system when it ceases to be effective. Id. at 2:16

– 33. Volkswagen Group of America, Inc. (“Volkswagen”) petitioned for inter partes review (“IPR”) of claims 1– 14 and 16

– 20 of the ’758 patent on four grounds. Grounds 1– 3 alleged anticipation of various claims by U.S. Pate nt No. 5,406,790 (“Hirota”), European Patent App. Publ. No. 560,991 (“Takeshima”), and Saito. Ground 4 alleged claims 1– 14 and 16

– 20 would have been obvious under 35 U.S.C. § 103(a) ove r the combination of Campbell ’558 and either Hirot a or Saito, in view of Stiles.
Volkswagen included in its petition a claim ch art sp ecifically identifying the grounds for each ch allenged claim. It introduced the claim chart by stating, “Claim charts identifying specific portions of Campbell (Ex. 1003) that support, in combination with Hirota (Ex. 1006) or Saito (E x. 1008), a sho wing that claims 1– 14 and 16

– 20 are obvious over the combination of Campbell and either Hirota or Saito, are provided below.” J.A. 118. Relevant to this appeal, the claim chart only cited to Saito for dependent claims 3, 16 , and 20. J.A. 123, 127, 129.EMERACHEM HOLDINGS , LLC v. VOLKSWAGEN GRP

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The Board instituted review on all four grounds

. It s Institution Decision provided an itemized list of cha llenged claims and identified specific references as grounds for rejection as to each. J.A. 175

– 76. Relevant to this appeal, it only identif ied Saito for claims 3, 16, and 20. Id.
The Board rejected claims in its final written decision based only on Volkswagen’s fourth ground. It determined Campbell ’558 is pri or art under 35 U.S.C. § 102(e), rejec ting Mr. Campbell’s inventor declaration (the “Campbell Decla ration”) that stated he and Mr. Guth solely invented the subject matter relied upon by Volk s wagen from Campbell ’558. It noted that Emera Chem did not call Mr. Danziger or Ms. Padron as witnesses and did not offer any contemporaneous documen tary evidence in suppor t of the Campbell Declaration. It agreed with Volkswagen that EmeraChem failed to explain the inventorship asse rtions in the Campbell Declaration and determined that the Campbell Declaration was “2015 uncorroborated testimony by an interested witness about events occurring prior to 1995

— a period of at least twenty years .” J.A. 31 (emphasis in original). It determined “Hirota need not be relied upon when analyzing obviousness vis -à- vis the prior art combination of Campbell, Saito, a nd Stiles,” and concluded that “claims 1– 14 and 16

– 20 of the ’758 p atent are unpatentable under 35 U.S.C. § 103(a). ” J.A. 43, 54. It relied on Stiles to disclose clai m 3 ’s carbo n dioxide gas limitation and claim s 16 and 20 ’s steam limitation. J.A. 44

– 45. EmeraChem appeals . It argues Campbell ’558 is not § 102(e) prior art and that it did not have sufficient notice

an d opportunity to respond to Stiles as grounds for rejec ting dependent claims 3, 16, and 20. The Director of the United States Patent and Trademark Office (“ PTO ”) intervened to defend the Board’s decision

. We have jur isdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).EMERACHEM HOLDINGS , LLC v. VOLKSWAGEN GRP

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D ISCUSSION We review the Board’s legal conclusions de novo and its factual findings for substantial evidence. In re Gar ts ide

, 203 F.3d 1305, 1316 (Fed. Cir. 2000). Whether a reference qualifies as prior art under 35 U.S.C . § 103 is a legal question we review de novo. Riverwood Int’l Corp. v. R.A. Jones & Co.

, 324 F.3d 1346, 1352 (Fed. Cir. 2003). We review the Board’s procedures for compliance with the Administrative Procedure Act (“APA”) de novo , under which we must “hold unlawful and set aside agency action

. . . not in accordance with the law [or]

. . . without observance of procedure required by law.” 5 U.S.C. § 70 6; Dell Inc. v. Acceleron, LLC

, 818 F .3d 1293, 1298 (Fed. Cir. 2016); In re NuVasive, Inc. , 841 F.3d 966, 970 (Fed. Cir. 2016).

A. Cam pbell ’558 I s § 102(e) Prior Art

Section 102(e) provides, “A pers on shall be entitled to a patent unles s— (e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent

. . . .” 35 U.S.C. § 102(e) (emphasis added). 1 T he statute’s reference to “by another” means that an application issued to the same inventive entity cannot qualify as § 102(e) prior art. Riverwood Int’l Corp.

, 324 F.3d at 1355

– 56. Here, the patents were issued to different groups of listed inventors. Campbell ’558 issued to Mr. Campbell, Mr. Danziger, Mr. Guth, and Ms. Padron. The ’758 patent issued to Mr. Guth and Mr. Campbell. However, the relevant question is not

1 Because the ’758 patent has an effective filing date before the enactment of the Leahy

- Smith America Invents Act (“AIA”), Pub. L. No. 112

– 29, 125 Stat. 284 (2011), the pre

- AIA version of 35 U.S.C. § 102(e) applies in this appeal.EMERACHEM HOLDINGS , LLC v. VOLKSWAGEN GRP

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whether the references list different inventors, but “whether the portions of the re ference relied on as prior art, and the subject matter of the claims in question, represent the work of a common inventive entity.” Id.
at 1356. EmeraChem argues the cited portions of Cam pbell ’558 are not “by ano ther” and do not qualify as § 102(e) prior art because the Campbell Declaration unequivocally states that Mr. Campbell and Mr. Guth solely conceived of and invented the subject matter in Campbell ’558 that is cited against the ’758 patent

. It
argues the Camp bell Declaration alone is sufficient to demonstrate a co mmon inventive entity. Relying on this reasoning, it argues the Board erred in holding Cam pbell ’558 is § 102(e) prior art. We do not agree

. T he Campbell Declaration by it self fails to demo nstrate that the portions of Campbell ’558 relied upon as prior art and the subject matter at issue in the ’758 p atent share a common inventive entity. In addition to declaring “Eugene D. Guth and I are the sole inventors of all inventions claimed in U.S. Patent No

. 5,599,75 8,” Mr. Campbell stated, “Eugen [sic] D. Guth and I solely conceived of and invented the following subject matter disclosed in U.S. Patent No. 5,451,558.” J.A. 1105. This declaration amounts to a naked assertion by an inventor that he and a co

- inventor are the true inventors of the passages cited. Nothing in the declaration itself , or in addition to the declaration, provides a ny context, explan ation, or evidence to lend credence to the inventor’s bare assertion.

W e do not hold that corroboration of an inventor’s de claration is required in every case, but we recognize that corroborating an inventor’s testimony is a well

established principle in our case law

. See e.g. , Coleman v. Dines , 754 F.2d 353, 359 (Fed. Cir. 1985) ; Price v. Symsek

, 988 F.2d 1187, 1194 (Fed. Cir. 1993); Sa ndt Tech., Ltd. v.EMERACHEM HOLDINGS , LLC v. VOLKSWAGEN GRP

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Resco Metal & Plastics Corp.

, 264 F.3d 1344, 1350 (Fed. Cir. 2001). For example, w here an inventor tries to prove prior conception

, the “inventor’ s testimony, standing alone , is insufficient to prove conception

– some form of corroboration must be shown.” Price , 988 F.2d at 1194. We have treated uncorroborated testimony from an a lleged inventor asserting priority with skepticism. Id. This concept stems from the con cern that “inventors

. . . would be tempted to remember fact s favorable to their case by the lure of protecting their patent or defea ting another’s patent.” Mahurkar v. C.R. Bard, Inc. , 79 F.3d 1572, 1577 (Fed. Cir. 1996)

. These concerns partic ularly arise when uncorroborated testimony comes from an interested pe rson recalling long

- past events. Woodland Trust v. Flowertree Nursery, Inc. , 148 F.3d 1368, 1369 (Fed. Cir. 1998) ; c f. T.H. Symington Co. v. Nat’l Malleable Castings Co. , 250 U.S. 383, 386 (1919) (“This court has pointed out that oral testimony tending to show prior invention as against existing le tters patent is, in the absence of models, drawings, or kindred evidence, open to grave suspicion; particularly if the testimony be taken after the lapse of years from the time of the alleged inve ntion.” (citation omitted))

. There are similar concerns in this case

. Mr. Campbell did not call Mr. Danziger or Ms. Padron as witnesses or produce any contemporaneous documentary evidence in support of the Campbell Declaration. Relying on the declaration alone entails relying on an assertion by an inventor with an inter est at stake that the portions of a patent issued years earlier

, and relied upon now as prior
art
, were not “by another .” The Board acknowledged this same concern when it stated , “[w]e decline to credit the Campbell [Declaration], principally because there is no contemporaneous documentary evidence confirming events taking place a long time ago reported to us via a witness having an interest in the case .” J.A. 32 (emphasis in original).EMERACHEM HOLDINGS , LLC v. VOLKSWAGEN GRP

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EmeraChem reli es upon our predecessor court’s dec ision in In re DeBaun , 687 F.2d 459 (C.C.P.A. 1982), to argue Mr. Campbell did not need to corroborate his decl aration. In DeBaun

, Appellant Kenneth DeBaun sought reissue of a patent

. Id. at 460. The claims for the “equa lizer honeycomb section 4” were rejected over an earlierfiled patent that issued to Mr. DeBaun and Robert Noll. Id. The CCPA reaffirmed that

, absent a time bar to his application, Mr. DeBaun’s own work could not be used against him as a reference. Id. at 462.
To overcome the rejection, Mr. DeBaun filed an inve ntor declaration to which he attached drawing No. 73

- 315. Id. at 461. He explained that the drawing “ illu strates

. . . an apparatus having open

- ended honeycomb velocity equalizing sections as originally conceived by [him] ” and that the drawing was provided to patent counsel to prepare a patent application for the syst em he

co

- invented with Mr. Noll which resulted in the ’678 patent. Id. He declared that

, “[i]nsofar as the invention of [hi s] pending application Serial No. 952,695 is sugges ted by drawing No. 73

- 315, or by anything con tained in [the ’678 patent] , it was originally conceived by [him] and described to patent counsel prior to June 1, 1973.” Id.
at 461

– 62. The CCPA held that “ [o]n the basis of the record here, which includes appellant’s unequivocal declaration that he conceived anything in the ’678 patent disclosure which suggests the invention claimed in his present application, th[e] question [of whether what was constructive ly reduced to practice was appellant’s own conception] has been satisfactorily ans wered.” Id. at 463.

DeBaun does not s tand for the proposition that a declaration alone is always sufficient to support an inventor’s claim to inventorship. The CCPA recogni zed that “it was incumbent on appellant to provide satisfactory evidence, in light of the total circumstances of the case, that the reference reflected his own work.” Id. at 463. It conclu ded that Mr. DeBaun had successfully done so, noting thatEMERACHEM HOLDINGS , LLC v. VOLKSWAGEN GRP

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“[ o ] n th e basis of the record here ,” Mr. DeBaun made a sufficient showing that what was allegedly constructively reduced to practice was his own conception. Id. (emphasis added). EmeraChem relies on the Board’s ind ication that the record included Mr. DeBaun’s un equivocal declar ation, but EmeraChem fails to recognize that the record also included Mr. DeBaun’s drawing.

The CCPA’s decision in In re Katz , 687 F.2d 450 (C.C.P.A. 1982)

, does not alter our conclusion. I n Katz

, Appellant David Katz challenged the PTO ’s rejection of his patent application in light of a n article published by him and two co

- authors eight months before his effective filing date. Id. at 452

– 53. Mr. Katz filed a declaration t o demonstrate that the article’s description of the subject
matter in his application was a description of his own work, and not that of his co

- authors

. Id. at 452. He declared that while he wa s a co

- author o f the publication at issue, “ he is the sole inventor of the subject matter which is disclosed in said publication .” Id. Moreover, he declared that “[t]he other authors of the public ation . . . were students working under [his] direction and supervision

. . . and while coauthoring the publication, are
not co

- inventors of the subject matter described therein.” Id.
In holding that the publication was not prior art, the CCPA relied on Mr. Katz’s explanation that his co

authors were students under his direction and superv ision: “T his statement is of significance since it provides a clear a lternative conclusion to th e board’s inference that their names were on the article because they were coi nventors.” Id. at 455. Based on this record and the totality of the circumstances, it concluded Mr. Katz made a sufficient showing that the publication disclosed his invention. Id. at 456. In light of DeBaun and Katz

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of Campbell ’ 55 8 are not “by another.” Both DeBaun and Katz required more than a naked assertion by the inve ntor. Mr. DeBaun include d an attached drawing

, and Mr. Katz provided an additional explanation as to the facts in his case

. We do not suggest that an inventor must produce co ntemporaneous documentary evidence in every case to

s upport his or her declaration. A number of factors m ay guide the corroboration assessment, including the time period between the event and trial and the interest of the corroborating witness in the subject matter in suit. Woodland , 148 F.3d at 1371. We have recognized that contemporaneous documentary evidence can serve as “the most reliable proof that the inventor’s testimony has been corroborated.” Sandt , 264 F.3d at 1351. But it is “[a]n evaluation of all pertinent evidence [that] must be made so that a sound determination of the credibility of the inventor’s story may be reached.” Price , 988 F.2d at 1195 (emphasis in original)

. And i t cannot be the case that the high degree of co rroboration emphasized in Woodland Trust and Sandt is required across the board, especially since those cases did not overrule Katz

. In certain cases, we have recognized that even non

- documentary

, circumstantial evidence may sufficiently corroborate. See Knorr v. Pearson , 671 F. 2d 1368, 1373

– 74 (C.C.P.A. 1982) ( concluding that sufficient circumstantial eviden ce of an independent nature corro borate d the junior party’s testimony as to actual reduction to practice in an interference proceed ing ); In re Jolley , 308 F.3d 1317, 1328 (F e d. Cir. 2002) (stating “corroboration may be provided by sufficient independent circu mstantial evidence ” and such evidence included testimony of other witnesses as to an inventor’s reasonable diligence i n an interference proceeding).
We merely hold in this case that the Campbell Decl aration is insufficient to demonstrate that the cited po r-EMERACHEM HOLDINGS , LLC v. VOLKSWAGEN GRP

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tions of Campbell ’558 are not “by another.” The Board did not err in holding Campbell ’558 is § 102(e) prior art. For these reasons, and because EmeraChem does not challenge claims 1– 2, 4

– 14, and 17

– 19 on any other grounds, we affirm the Board’s decision as to these claims. 2

B. APA Notice and Opportunity to Respond

EmeraChem contends the Board violated the APA’s requirements of notic e and an opportunity to respond bec ause it did not receive adequate notice of or an oppo rtunity to respond to the Board’ s reliance on Stile s for determining claims 3, 16, and 20 of the ’758 p atent would have been obvious. We agree.
In a formal adjudication, like an IPR, the APA impo ses p articular procedural requirements on the USPTO. Dell , 818 F.3d at 1301. The agency must timely inform the patent owner of “the matters of fact and law asserted,” give all interested parties the opportunity to submit and consider facts and arguments, and allow a party “to submit rebuttal evidence

. . . as may be required for a full and true disclosure of the facts. ” 5 U.S.C. §§ 554(b)

– (c), 556(d); Dell

, 818 F.3d at 1301. Here , the Board denied EmeraChem its procedural rights guaranteed by the APA by rely ing on Stiles for its disclosure of limitations in dependent claims 3, 16, and 20.

W e reject Volkswagen and PTO Intervenor ’s arg ument s that EmeraChem had sufficient notice because the

2 EmeraChem cites to various provisions from the PTO’s Manual of Patent Examining Procedure (“MPEP”)

, which EmeraChem contends provide a different reading of DeBaun and Katz than our opinion today. See MPEP §§ 715.01(a), 715.01(c)(I), and 2136.05. To the extent the MPEP describes our case law differently, however, that interpretation does not control.EMERACHEM HOLDINGS , LLC v. VOLKSWAGEN GRP

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petition for IPR include d broad, general statements concerning obviousness that mention Stiles . Although Volkswagen’s petition stated broadly that “[c ]laims 1– 14 and 16

– 20 are obvious under 35 U.S.C. § 103(a) over the combination of Campbell [’558] and either Hirota or Saito, in view of Sti les,” J.A. 81, 114, it went on in a detailed claim chart to identi fy

, claim

- by

- claim and element

- by

element, the specific portions of the prior art references it believed support ed obviousness. For cla im 3, Volkswagen cited Saito as disclosing the claim’s carbon dioxide gas limitation. J.A. 123. For claims 16 and 20, it cited to a different portion of Saito as disclosing the claims’ steam limitation. J.A. 127, 129. For these dependent claims, Saito wa s the only reference listed. Ye t for cla im 17, Volkswagen cited to portions of Saito, Hirota, and Stiles as disclosing the claim ’ s nitrogen and hydrogen gas lim itations. J.A. 128.

We l ikewise reject Volkswagen and PTO Intervenor ’s argument that the Institution Decision provided Emer aChem with sufficient notice of the Board’s reliance on Stiles. T he Board declared in i ts Institution Decision that “claims 1– 14 and 16

– 20 of the ’758 patent [are] likely unpatentable under 35 U.S.C. § 103(a) over Campbell, Hirota, Saito, and Stiles.” J.A. 17 7. Stiles is identified as a potentially contributing reference in this broad stat ement regard ing obviousness. B ut the In stitution Decision likewise listed cl aims 2– 20 and identi fied , claim

- by

- claim, specific portions of the prior art references on which it

was instituting review

. For claims 3 and 16, the Board expressly cited Saito. J.A. 175

– 76

. For claim 20, it cited
to page 60 of Volkswagen’ s petition , which set out the claim chart identifyi ng a portion of Saito for claim 20. Id. For these three d ependent claims, the Board never refe re nce d anything other than Saito. Yet for cla im s 8– 10, 18, and 19, it cited Stiles, and for claim 17, it cited to page 59 of V olkswagen’s petition, which set out the claim chart identifying Sait o, Hirota, and Stiles for claim 17. Id.EMERACHEM HOLDINGS , LLC v. VOLKSWAGEN GRP

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Given t he specificity with which the petition’s claim chart and the Institution Decision’s list of claims expres sly identified particular references’ disclosures for some claims and not for others , it cannot be the case that the
genera l statements Volkswagen relies upon provide d sufficient notice that Stiles could be applied to all claims

. W here the petitioner uses certain prior art references to target specific claims with precision

, or the Board does the same in its decision to insti tute
, the patent owner is directed to particular base s for alleged obvious ness. A general state ment that list s all challenged claims and all asserted prior art is not a separate, additional articul ation that each of the claims may be obvious over any comb ination of all listed prior art.

For it to be true that the se general statements provi ded sufficient notice that Stiles may be relied upon for obviousness as to claims 3, 16, and 20, in addition to the specific grounds for rejection listed in the petition’s claim chart or the Institu tion Decision’s list of claims, it would have been necessary to reject every one of the claims listed in the general statement based on the listed comb ination of all the references. That did not occur in this case. For example, the general statements in the petition and the Ins titution Decision include claim 14 within the range of challenged claims and include Hirota within the list of asserted prior art. But no party argues that, in addition to Saito c ited in the petition’s claim chart and the Institu tion Decision for claim 14, Hirota also discloses claim 14’s limitations.
Volkswagen relies upon In re Cuozzo Speed Technol ogies , LLC

, 793 F.3d 1268 (Fed. Cir. 2015), aff’d , 136 S. Ct. 2131 (2016), to arg ue that the Board is not barred from holding claims unpatentable based on a reference the petition did not identify as gr ounds for those claims. I t points out that in Cuozzo

, the IPR petition set out specific grounds of unpatentability for challenged clai ms 10, 14, and 17, and while the petition identified the combinationEMERACHEM HOLDINGS , LLC v. VOLKSWAGEN GRP

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of Evans and Wendt as grounds for claim 17, it did not identify that same combination for claims 10 and 14. Id. Volkswagen notes that the Board in its final written d ecision determined claims 10 and 14 would have been obvious over combinations of prior art that included Evans and Wendt. Id. It relies upon Cuozzo ’s language that:

T he fact that the petition was defective is irrel evant because a proper petition could have been drafted.

. . . There wa s no bar here to finding claims 10 and 14 unpatentable based on the E vans and/or Wendt references. The failure to cite those references in the petition provides no ground for setting aside the final de cision.

Id. at 1274.

But Cuozzo is distinguis hable . There, the Board inst ituted IPR and expressly stated in the institution d ecision that “Petitioner also has shown a reasonable likelihood that it would prevail on demonstra ting that claims 10 and 14 would have been obvious ov er the combined teac hings of Aumayer, Evans, and Wendt.” Garmin Int’l, Inc. v. Patent of Cuozzo Speed Techs. LLC

, No. IPR2012

- 00001 , 2013 WL 5947691 (P.T.A.B. Jan. 9, 2013 ). The Board recognized that the petition did not “specifically articulate a ground of un patentability against claims 10 and 14 based on Aumayer, Evans, and Wendt,” but stated “we exercise discretion to recognize that the assertion was implicitly made by Petitioner’s alleging that claim 17 would have been obvious ov er Aumayer, Evans, and Wendt.” Id. Thus, in Cuozzo

, the i nstitution decision gave the patentee notice of the prior art combination that the final decision relied upon. In this case, neither the petition nor the Institution Decision put the patentee on notice that Stiles would be used to reject claims 3, 16, and 20. Rather than identify a reasonable likelihood that Volkswagen would prevail on demonstrat ing thatEMERACHEM HOLDINGS , LLC v. VOLKSWAGEN GRP

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claims 3, 16, and 20 would have been obvious over Stiles, the Board expressly adopted the specific grounds Volk swagen pr oposed for each of these claims, which only cited Saito.
We also reject Volkswagen and PTO Intervenor ’s a rguments that EmeraChem had sufficient notice because the petition block quote d the portion of Stiles the Board ultimately relied upon in it s final written d ecision. In i ts petition, Volkswagen provided a general summary of what Camp bell ’558, Stiles , Hirota, and Saito disclose

. J.A. 116

– 17. Among this discussion, it noted “Stiles also disclos es that the saturated absorbent can be ‘regenera ted for reuse by passing a gas containing from .05 to 10% hydrogen in nitrogen; both carbon dioxide and water vapor can also be present.’” Id. at 117 ( quoting Stiles
at 5:52

– 55 ). Volkswagen then restated this same passage from Stiles in its claim chart o nly for claim 17. It did not reproduce this passage for any of claims 3, 16, or 20. By directing the patent owner to how it believed this portion of Stiles disclose s limitations of claim 17 and no other claims, Volkswagen did not suggest that the same block quote would be relied upon for limitations of claims 3, 16, and 20. The Board’s block quoting from Stiles in its Instit ution Decision likewise did not sufficiently notify Emer aChem that it would later rely on Stiles for claims 3, 16, and 20. In describ ing what Stiles teaches, the Board stated “[t]he nitrogen oxides can be quickly reduced in situ or be evolved from the adsorbent as a concentrated stream by passing a gas containing N 2 plus 0.5 to 10% hydrogen at a temperature of 300 ° to 350 ° C. ” J.A. 173 (emphasis in original) ( quoting Stiles at 4:13

– 36). It also block quoted the passage from Stiles it ultimate ly relied

upon in its final written decision for disclosing claim 3’s carbon dioxide limitation and claim s 1 6 and 20’s steam limita tion . It stated , “Stiles further teaches: ‘The adso rbent now containing more than 0.2% NO x by weight isEMERACHEM HOLDINGS , LLC v. VOLKSWAGEN GRP

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regenerated for reuse by passing a gas containing from .05 to 10% hydrogen in nitrogen ; both carbon dioxide and water vapor can al so be present.’” J.A. 17 3– 74 (emphasis in origina l) ( quoting Stiles at 5:52

– 55).
Although this block quote discloses elements that may be relevant to claims 3, 16, and 20, the decision placed this quote i n a discussion regarding only claim 1 of the ’758 patent. This discussion of Stiles follow ed shortly after the Board’s statement that “Hirota, Saito, and Stiles likely overcome any differences between Camp bell [’558] and the subject matter of claim 1 of the ’758 patent.” J.A. 168. And immediately following the block quote from Stiles, the Institu tion Decision explained that “[t]he prior art likely establish es that Patent Owner’s claim 1 ” would have been obvious. J.A. 174. It is not until a separate, subsequent section titled “[o]ther ’758 patent claims,” that the decision address ed claims 3, 16, and 20. We conclude that EmeraChem was not put on notice that Stiles would be used as grounds for rejec ting claims 3, 16, and 20.

R elying on Genzyme

, Volkswagen contends that the Board can rely on prior art references that were not cited in the Institution Decision. Genzyme Therapeutic Pro ducts L.P. v. Biomarin Pharm

. Inc. , 825 F.3d 1360 , 1366 (Fed. Cir. 2016) ( “T here is no requirement

. . . for the institution decision to anticipate and set forth every legal

or factual issue that might arise in the course of the trial.” ). We do not agree that Genzyme permits the Board to rely on Stiles t o reject claims 3, 16, and 20. In Ge nzyme , the patent o wner alleged the Board violated the APA’s requirements of notice and an opportunity to respond because the Board cited two references in its final written decis ions (Kikuchi and van der Ploeg ’91) that were not specifically included in the combinations of prior art on which the Board instituted review. Id. at 1366. W e deter mined that “ Genzyme had actual notice of the [Kikuchi and van der Ploeg ’91] references and an oppo rtunity to respond to them

— an opportunity that GenzymeEMERACHEM HOLDINGS , LLC v. VOLKSWAGEN GRP

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took advantage of in arguing that those references could be used only for limited purposes.” Id. at 1 368. Unlike Genzyme , EmeraChem did not have the same notice and opportunity to respond to the Board’s ultimate usage of Stiles against claims 3, 16, and 20, and the prior art was used to establish a claim limitation.
By holding EmeraChem did not receive adequate n otice or opportunity to respo nd with regard to Stiles, we do not hold that the Board is constricted in its final written decision to citing only the portions of a reference cited in its Institution Decision. W e do not require “w ord

- for

- word parity between the institution and final written dec isions.” Genzyme , 825 F.3d at 1368 n.4 . But in the case before us, the question is not whether the Board cited a different passage of Stiles than wha t it specifically cited in the Instituti on D ecision. Cf. id. T he question is whether the Board provided adequate notice and opportunity to respond to Stiles being used to reject claims 3, 16, and 20, given the specificity with which the Board itemized the challenged claims with specific ground s for rejection in the Institution Decision. On this question, we find it did
not. Moreover, we note that following the Institution Dec ision, neither party addressed in briefing or argumen t Stiles’ application to claims 3, 16, and 20. In its Patent Owner ’s Response, EmeraChem addressed Volkswagen’s asserted grounds for obvi ousness. With respect to claim 3, EmeraChem acknowledged that Volkswagen “cites Saito as disclosing a regenerat ing gas containing 1 to 15 vol. % of carbon dioxide gas,” and it repudiated this chal lenge. J.A. 230. With respect to claims 16 and 20, EmeraChem acknowledged that Volkswagen “relies on Saito for disclosure of a regenerating gas comprising steam,” and it repudiated this chal lenge. J.A. 231

– 32. Absent from these responses is any mention of Stiles. In contrast, EmeraChem rebutted Volkswagen’s reliance on Stiles with respect to claim 17, for which the petition’sEMERACHEM HOLDINGS , LLC v. VOLKSWAGEN GRP

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claim chart and the Institution Decision identified Stiles

as a grounds for rejection . J.A. 231. T he petitioner’s reply also lacked argu ment that claims 3, 16, and 20 would have been obvious over disclosures in Stiles. At oral argument, Volkswagen conceded that it did not cite Stiles in its petitioner’s reply for teaching the carbon dioxide and steam limitations rele vant to claims 3, 16, and 20. Oral Arg. at 34:57

– 35:08. The fact that neither party ever mentioned Stiles in the context of discussing claims 3, 16, and 20

, helps make the point that neither party was on notice that Stiles was at issue as to those challenged claims. We note that Volkswagen’s petition did identify Stiles as a motivation to combine, and that the parties debated this issue in the patent owner’s response and the petitioner’s reply. J. A. 118; J.A. 350 (p etitioner’s reply stati ng, “Patent Owner argues that Stiles cannot provide the motivation to combine

. . . . See Response at p.30

. . . . Patent Own er is simply wrong. ”)

. However the parties’ discussion of Stiles is not in the same context as the Board’s using it specifical ly a s grounds for rejecting claims 3, 16, and 20. Cf. Novar tis AG v. Torrent Pharm. Ltd

, 853 F.3d 1316 (Fed. Cir. 2017) (determining there was no “surprise” where the parties debated a reference throughout the proceeding in regards to a motivation to combine and the Board’s final written decision discussed the reference in the same context and only used the reference as additional evidence to reinforce its finding that a person of ordinary skill in the art would have expected compatibility among two pharmaceut ical components ). W hile the nature of the parties ’ IPR briefing after the Institution Decision cannot change the decision itself, it makes clear in this case that the Institution Decision did not put EmeraChem on notice that Stiles would be used as a grounds for reject ing claims 3, 16, and 20.EMERACHEM HOLDINGS , LLC v. VOLKSWAGEN GRP

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C ONCLUSION
For the for egoing reasons, we hold that Campbell ’558 is prior art under 35 U.S.C. § 102(e) and affirm th e Board’s decision as to claims 1– 2, 4

– 14, and 17

– 19. We hold that the Board violated the AP A’ s requirements of notice and an opportunity to respond with regard to Stiles. EmeraChem agues Stiles was not a part of the grounds for rejection of claims 3, 16, and 20 in either the petition or the Institution Decision. Nor was it the su bject of any parties’ briefing before the Board in this IPR. Under these circumstances, EmeraChem argues the Board’s final written decision should be reversed. While Volkswagen and PTO Intervenor dispute whether there was sufficient notice, neither dispute the proper remedy. Therefore, we consider them to have waived any arg ument that any remedy other than reversal is appropriate when a new rationale for unpatentability is adopted by the Board in its final written decision. Because we are unable to discern whether th e Board found Saito does not disclose the dependent limita tions in claims 3, 16, and 20,
we vacate the Board’s decision as to these claims and remand for clarification

. AFFIRMED

- IN

- PART, VACATED

- IN

- PART, AND REMANDED

C OSTS Costs to Appellan t.