United States Court of Appeals 

for the Federal Circuit ______________________ 

EMERACHEM HOLDINGS, LLC,

Appellant

v.

VOLKSWAGEN GROUP OF AMERICA, INC.,

Appellee

JOSEPH MATAL, PERFORMING THE FUNCTIONS 

& DUTIES OF THE UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR, U.S. PATENT & TRADEMARK 

OFFICE,

Intervenor

______________________ 

2016-1984

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2014-

01558.

______________________ 

Decided: June 15, 2017

______________________ 

MICHAEL J. BRADFORD, Ludeka Neely Group, PC, 

Knoxville, TN, argued for appellant. Also represented by 

JACOBUS C. RASSER, Amsterdam, The Netherlands. 
2 EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM. 

STEVEN F. MEYER, Locke Lord LLP, New York, NY, 

argued for appellee. Also represented by SETH J. ATLAS, 

JOSEPH ANTHONY FARCO. 

FRANCES LYNCH, Office of the Solicitor, United States

Patent and Trademark Office, Alexandria, VA, argued for 

intervenor. Also represented by NATHAN K. KELLEY, 

SCOTT WEIDENFELLER, MONICA BARNES LATEEF. 

______________________ 

Before MOORE, CLEVENGER, and CHEN, Circuit Judges.

MOORE, Circuit Judge. 

EmeraChem 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 been obvious 

over U.S. Patent No. 5,451,558 (“Campbell ’558”), Japanese Patent Application No. 62-106826 (“Saito”), 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. 

BACKGROUND

The ’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 engines. ’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. Regeneration can be carried out in situ, without 

removing and replacing the catalyst with a fresh, unreacted one. Id. at 2:19–24, 2:38–41.
 EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM. 3

The application for the ’758 patent was filed on December 23, 1994, and the patent issued on 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 Campbell ’558 was 

filed on February 4, 1994, and the patent issued on September 19, 1995. Mr. Campbell, Robert Danziger, 

Mr. Guth, and Sally Padron are named co-inventors of 

Campbell ’558. Mr. Guth is deceased. 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 exhaust 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. Patent 

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) over the combination of Campbell ’558 

and either Hirota or Saito, in view of Stiles. 

Volkswagen included in its petition a claim chart specifically identifying the grounds for each challenged 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 

(Ex. 1008), a showing 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. 
4 EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM. 

The Board instituted review on all four grounds. Its 

Institution Decision provided an itemized list of challenged claims and identified specific references as 

grounds for rejection as to each. J.A. 175–76. Relevant to 

this appeal, it only identified 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 prior art under 35 U.S.C. § 102(e), rejecting Mr. Campbell’s inventor declaration (the “Campbell 

Declaration”) that stated he and Mr. Guth solely invented 

the subject matter relied upon by Volkswagen from

Campbell ’558. It noted that EmeraChem did not call 

Mr. Danziger or Ms. Padron as witnesses and did not offer 

any contemporaneous documentary evidence in support of 

the Campbell Declaration. It agreed with Volkswagen 

that EmeraChem failed to explain the inventorship assertions 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, and Stiles,” and 

concluded that “claims 1–14 and 16–20 of the ’758 patent 

are unpatentable under 35 U.S.C. § 103(a).” J.A. 43, 54. 

It relied on Stiles to disclose claim 3’s carbon dioxide gas 

limitation and claims 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 

and opportunity to respond to Stiles as grounds for rejecting 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 

jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
 EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM. 5

DISCUSSION

We review the Board’s legal conclusions de novo and 

its factual findings for substantial evidence. In re Gartside, 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. § 706; 

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. Campbell ’558 Is § 102(e) Prior Art

Section 102(e) provides, “A person shall be entitled to a 

patent unless—(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 The 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.
6 EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM. 

whether the references list different inventors, but 

“whether the portions of the reference 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 Campbell ’558 are not “by another” 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 Campbell Declaration alone is sufficient to

demonstrate a common inventive entity. Relying on this 

reasoning, it argues the Board erred in holding Campbell ’558 is § 102(e) prior art. We do not agree. 

The Campbell Declaration by itself fails to demonstrate that the portions of Campbell ’558 relied upon as 

prior art and the subject matter at issue in the ’758 patent 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. 5,599,758,” 

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 any context, explanation, or evidence to lend credence to the inventor’s bare 

assertion. 

We do not hold that corroboration of an inventor’s declaration is required in every case, but we recognize that 

corroborating an inventor’s testimony is a wellestablished 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); Sandt Tech., Ltd. v. 
 EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM. 7

Resco Metal & Plastics Corp., 264 F.3d 1344, 1350 (Fed. 

Cir. 2001). For example, where 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 alleged inventor asserting priority with skepticism. Id. 

This concept stems from the concern that “inventors . . . would be tempted to remember facts favorable to 

their case by the lure of protecting their patent or defeating another’s patent.” Mahurkar v. C.R. Bard, Inc., 79 

F.3d 1572, 1577 (Fed. Cir. 1996). These concerns particularly arise when uncorroborated testimony comes from an 

interested person recalling long-past events. Woodland 

Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1369 

(Fed. Cir. 1998); cf. 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 letters 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 invention.” (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 interest 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). 
8 EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM. 

EmeraChem relies upon our predecessor court’s decision in In re DeBaun, 687 F.2d 459 (C.C.P.A. 1982), to 

argue Mr. Campbell did not need to corroborate his declaration. In DeBaun, Appellant Kenneth DeBaun sought 

reissue of a patent. Id. at 460. The claims for the “equalizer 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 inventor declaration to which he attached drawing No. 73-315. 

Id. at 461. He explained that the drawing “illustrates . . . 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 system he 

co-invented with Mr. Noll which resulted in the ’678 

patent. Id. He declared that, “[i]nsofar as the invention 

of [his] pending application Serial No. 952,695 is suggested by drawing No. 73-315, or by anything contained 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 

constructively reduced to practice was appellant’s own 

conception] has been satisfactorily answered.” Id. at 463.

DeBaun does not stand for the proposition that a declaration alone is always sufficient to support an inventor’s 

claim to inventorship. The CCPA recognized 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 concluded that Mr. DeBaun had successfully done so, noting that 
 EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM. 9

“[o]n the 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 indication that 

the record included Mr. DeBaun’s unequivocal declaration, 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. In Katz, 

Appellant David Katz challenged the PTO’s rejection of 

his patent application in light of an article published by 

him and two co-authors eight months before his effective 

filing date. Id. at 452–53. Mr. Katz filed a declaration to 

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 was a co-author of 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 publication . . . 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 coauthors were students under his direction and supervision: “This statement is of significance since it provides a 

clear alternative conclusion to the board’s inference that 

their names were on the article because they were coinventors.” 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, the Campbell Declaration is insufficient to demonstrate that the cited portions 
10 EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM. 

of Campbell ’558 are not “by another.” Both DeBaun and 

Katz required more than a naked assertion by the inventor. Mr. DeBaun included 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 contemporaneous documentary evidence in every case to 

support his or her declaration. A number of factors may 

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 it cannot be the case that the high degree of corroboration 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 evidence of an independent nature corroborated the junior party’s testimony as to actual reduction 

to practice in an interference proceeding); In re Jolley, 308 

F.3d 1317, 1328 (Fed. Cir. 2002) (stating “corroboration 

may be provided by sufficient independent circumstantial 

evidence” and such evidence included testimony of other 

witnesses as to an inventor’s reasonable diligence in an 

interference proceeding). 

We merely hold in this case that the Campbell Declaration is insufficient to demonstrate that the cited por-
 EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM. 11

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 notice and an opportunity to respond 

because it did not receive adequate notice of or an opportunity to respond to the Board’s reliance on Stiles for 

determining claims 3, 16, and 20 of the ’758 patent would 

have been obvious. We agree. 

In a formal adjudication, like an IPR, the APA imposes particular 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 relying on Stiles for its disclosure of limitations in 

dependent claims 3, 16, and 20. 

We reject Volkswagen and PTO Intervenor’s arguments 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.
12 EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM. 

petition for IPR included 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 Stiles,” J.A. 81, 114, it went on in a detailed 

claim chart to identify, claim-by-claim and element-byelement, the specific portions of the prior art references it 

believed supported obviousness. For claim 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 was the only reference listed. Yet for claim 17, 

Volkswagen cited to portions of Saito, Hirota, and Stiles 

as disclosing the claim’s nitrogen and hydrogen gas limitations. J.A. 128.

We likewise reject Volkswagen and PTO Intervenor’s

argument that the Institution Decision provided EmeraChem with sufficient notice of the Board’s reliance on 

Stiles. The Board declared in its 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. 177. Stiles is identified as 

a potentially contributing reference in this broad statement regarding obviousness. But the Institution Decision 

likewise listed claims 2–20 and identified, 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 identifying a portion of Saito for claim 20. Id. 

For these three dependent claims, the Board never referenced anything other than Saito. Yet for claims 8–10, 18, 

and 19, it cited Stiles, and for claim 17, it cited to page 59 

of Volkswagen’s petition, which set out the claim chart 

identifying Saito, Hirota, and Stiles for claim 17. Id. 
 EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM. 13

Given the specificity with which the petition’s claim 

chart and the Institution Decision’s list of claims expressly identified particular references’ disclosures for some 

claims and not for others, it cannot be the case that the 

general statements Volkswagen relies upon provided 

sufficient notice that Stiles could be applied to all claims. 

Where the petitioner uses certain prior art references to 

target specific claims with precision, or the Board does the 

same in its decision to institute, the patent owner is 

directed to particular bases for alleged obviousness. A 

general statement that lists all challenged claims and all 

asserted prior art is not a separate, additional articulation that each of the claims may be obvious over any

combination of all listed prior art. 

For it to be true that these general statements provided 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 Institution 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 combination of all the references. That did not occur in this 

case. For example, the general statements in the petition 

and the Institution 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 cited in the petition’s claim chart and 

the Institution Decision for claim 14, Hirota also discloses 

claim 14’s limitations. 

Volkswagen relies upon In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268 (Fed. Cir. 2015), aff’d, 136 S. Ct. 

2131 (2016), to argue that the Board is not barred from 

holding claims unpatentable based on a reference the 

petition did not identify as grounds for those claims. It 

points out that in Cuozzo, the IPR petition set out specific 

grounds of unpatentability for challenged claims 10, 14, 

and 17, and while the petition identified the combination 
14 EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM. 

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 

decision 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:

The fact that the petition was defective is irrelevant because a proper petition could have been 

drafted. . . . There was no bar here to finding 

claims 10 and 14 unpatentable based on the Evans and/or Wendt references. The failure to cite 

those references in the petition provides no 

ground for setting aside the final decision.

Id. at 1274.

But Cuozzo is distinguishable. There, the Board instituted IPR and expressly stated in the institution decision 

that “Petitioner also has shown a reasonable likelihood 

that it would prevail on demonstrating that claims 10 

and 14 would have been obvious over the combined teachings 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 unpatentability 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 over Aumayer, Evans, and

Wendt.” Id. Thus, in Cuozzo, the institution 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 demonstrating that 
 EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM. 15

claims 3, 16, and 20 would have been obvious over Stiles, 

the Board expressly adopted the specific grounds 

Volkswagen proposed for each of these claims, which only 

cited Saito. 

We also reject Volkswagen and PTO Intervenor’s arguments that EmeraChem had sufficient notice because 

the petition block quoted the portion of Stiles the Board

ultimately relied upon in its final written decision. In its 

petition, Volkswagen provided a general summary of what 

Campbell ’558, Stiles, Hirota, and Saito disclose. 

J.A. 116–17. Among this discussion, it noted “Stiles also 

discloses that the saturated absorbent can be ‘regenerated 

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 only 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 discloses 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 Institution Decision likewise did not sufficiently notify EmeraChem that it would later rely on Stiles for claims 3, 16, 

and 20. In describing 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 N2 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 ultimately relied

upon in its final written decision for disclosing claim 3’s 

carbon dioxide limitation and claims 16 and 20’s steam 

limitation. It stated, “Stiles further teaches: ‘The adsorbent now containing more than 0.2% NOx by weight is 
16 EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM. 

regenerated for reuse by passing a gas containing from 

.05 to 10% hydrogen in nitrogen; both carbon dioxide and 

water vapor can also be present.’” J.A. 173–74 (emphasis 

in original) (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 in a discussion regarding only claim 1 of the 

’758 patent. This discussion of Stiles followed shortly 

after the Board’s statement that “Hirota, Saito, and Stiles 

likely overcome any differences between Campbell [’558] 

and the subject matter of claim 1 of the ’758 patent.” 

J.A. 168. And immediately following the block quote from 

Stiles, the Institution Decision explained that “[t]he prior 

art likely establishes 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 addressed claims 3, 16, and 20. We conclude

that EmeraChem was not put on notice that Stiles would 

be used as grounds for rejecting claims 3, 16, and 20.

Relying on Genzyme, Volkswagen contends that the 

Board can rely on prior art references that were not cited

in the Institution Decision. Genzyme Therapeutic Products L.P. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366

(Fed. Cir. 2016) (“There 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 to reject claims 3, 16, and 20. In Genzyme, the patent owner 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 decisions (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. 

We determined that “Genzyme had actual notice of the 

[Kikuchi and van der Ploeg ’91] references and an opportunity to respond to them—an opportunity that Genzyme 
 EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM. 17

took advantage of in arguing that those references could 

be used only for limited purposes.” Id. at 1368. 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 notice or opportunity to respond 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. We do not require “word-for-word 

parity between the institution and final written decisions.” 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 what it specifically cited in 

the Institution Decision. Cf. id. The 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 grounds for rejection in 

the Institution Decision. On this question, we find it did 

not.

Moreover, we note that following the Institution Decision, neither party addressed in briefing or argument 

Stiles’ application to claims 3, 16, and 20. In its Patent 

Owner’s Response, EmeraChem addressed Volkswagen’s 

asserted grounds for obviousness. With respect to 

claim 3, EmeraChem acknowledged that Volkswagen 

“cites Saito as disclosing a regenerating gas containing 1 

to 15 vol. % of carbon dioxide gas,” and it repudiated this 

challenge. 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 challenge. 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’s 
18 EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM. 

claim chart and the Institution Decision identified Stiles 

as a grounds for rejection. J.A. 231. The petitioner’s 

reply also lacked argument 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 relevant 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 (petitioner’s reply stating, “Patent 

Owner argues that Stiles cannot provide the motivation to 

combine . . . . See Response at p.30 . . . . Patent Owner is 

simply wrong.”). However the parties’ discussion of Stiles 

is not in the same context as the Board’s using it specifically as grounds for rejecting claims 3, 16, and 20. Cf.

Novartis 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 

pharmaceutical components). While 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 rejecting

claims 3, 16, and 20. 
 EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM. 19

CONCLUSION

For the foregoing reasons, we hold that Campbell ’558 

is prior art under 35 U.S.C. § 102(e) and affirm the 

Board’s decision as to claims 1–2, 4–14, and 17–19. We 

hold that the Board violated the APA’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 subject 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 argument 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 the Board found Saito does not 

disclose the dependent limitations 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

COSTS

Costs to Appellant.