3m Company v. Evergreen Adhesives, Inc., Fka Westech Aerosol Corporation

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
3M COMPANY,
Appellant
v.
EVERGREEN ADHESIVES, INC., FKA WESTECH
AEROSOL CORPORATION,
Appellee
______________________
2020-1738
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
00576.
______________________
Decided: June 25, 2021
______________________
PRATIK A. SHAH , Akin Gump Strauss Hauer & Feld
LLP, Washington, DC, argued for appellant. Also repre-
sented by Z.W. JULIUS CHEN ; M ICHAEL P. KAHN , New York,
NY; RUBEN H. M UNOZ , Philadelphia, PA.
ROBERT G REENSPOON , Flachsbart & Greenspoon, LLC,
Chicago, IL, argued for appellee.
______________________
Case: 20-1738 Document: 33 Page: 1 Filed: 06/25/2021

-- 1 of 8 --

3 M COMPANY v. EVERGREEN ADHESIVES , INC. 2
Before PROST, CLEVENGER, and STOLL, Circuit Judges.
CLEVENGER, Circuit Judge.
I
This case began when Appellant 3M Company (“3M”)
filed a petition for inter partes review under 35 U.S.C.
§ 311, seeking to invalidate claims 1–28 of U.S. Patent No.
7,705,056 (“the ’056 patent”) on the ground of obviousness,
pursuant to 35 U.S.C. § 103. The ’056 patent is titled “Aer-
osol Adhesive and Canister-Based Aerosol Adhesive Sys-
tem.” The Patent Trial and Appeal Board of the U.S. Patent
and Trademark Office (“Board”) agreed with 3M that cer-
tain claims of the ’056 patent are invalid as obvious, but
the Board determined that 3M had failed to demonstrate
that dependent claims 3 and 4 would have been obvious.
The Board initially stated its decision in its Final Written
Decision, which it sustained in its decision rejecting 3M’s
Request for Rehearing. 3M Co. v. Westech Aerosol Corp.,
No. IPR2018-00576, 2019 WL 3729475 (P.T.A.B. Aug. 7,
2019) (Final Written Decision) (“Final Written Decision”);
3M Co. v. Westech Aerosol Corp., No. IPR2018-00576, 2020
WL 578975 (P.T.A.B. Feb. 4, 2020) (Decision Denying Peti-
tioner’s Request for Rehearing) (“Rehearing Decision”).
3M, in its Request for Rehearing, argued that the
Board’s Final Written Decision erred in rejecting 3M’s ob-
viousness challenge to claims 3 and 4. 3M’s argument for
rehearing was supported by citation to a declaration of
3M’s expert, Dr. Prud’homme. In denying 3M’s request, the
Board stated that “Petitioner’s remaining explanation that
a person of ordinary skill in the art would have selected
three pressure levels within the levels taught by the Car-
nahan Publication and Braud . . . was not advanced in the
briefing and is referenced only through citation to the ex-
pert reports.” Rehearing Decision at *3. The Board rejected
3M’s Request for Rehearing as an attempt to introduce ar-
gument by citation to its expert’s declaration in violation of
37 C.F.R. § 42.6(a)(3), the Board’s rule against
Case: 20-1738 Document: 33 Page: 2 Filed: 06/25/2021

-- 2 of 8 --

3 M COMPANY v. EVERGREEN ADHESIVES , INC. 3
incorporation by reference. Id. 3M timely appealed the
Board’s decision to our court. We have jurisdiction pursu-
ant to 28 U.S.C. § 1295(a)(4)(A).
II
The Board’s rules concerning trial practice are set forth
in 37 C.F.R. Chapter 1, Subchapter A, Part 42 (Trial Prac-
tice Before the Patent Trial and Appeal Board). Section
42.6 of the rules concerning Filing of Documents, regarding
incorporation by reference, provides that “[a]rguments
must not be incorporated by reference from one document
into another document.” 37 C.F.R. § 42.6(a)(3). When
promulgating § 42.6(a)(3), the Patent and Trademark Of-
fice explained that the rule “minimizes the chance that an
argument would be overlooked and eliminates abuses that
arise from incorporation and combination,” Rules of Prac-
tice for Trials Before the Patent Trial and Appeal Board
and Judicial Review of Patent Trial and Appeal Board De-
cisions, 77 Fed. Reg. 48,612, 48,617 (Dep’t of Commerce
Aug. 14, 2012), and noted that without the rule, the Board
would be forced to “play archeologist with the record” for
arguments that might have been made outside the parties’
briefing, id. (citing DeSilva v. DiLeonardi, 181 F. 3d 865,
866–67 (7th Cir. 1999)).
Citing § 42.6, the Board refused to consider 3M’s cen-
tral argument in its Request for Rehearing because the
Board determined that this argument was provided only by
way of improper incorporation by reference to testimony of-
fered by 3M’s expert, Dr. Prud’homme. The Board stated
that “Petitioner’s argument on rehearing amounts to a con-
tention that we overlooked Petitioner’s invitation to formu-
late arguments on their behalf, search the record for
pertinent facts, and inject our own reasoning. That is not
our role.” Rehearing Decision at *3.
At oral argument before our court in this appeal, 3M
agreed that to succeed on appeal it must convince us that
the Board erred in excluding the evidence offered by Dr.
Case: 20-1738 Document: 33 Page: 3 Filed: 06/25/2021

-- 3 of 8 --

3 M COMPANY v. EVERGREEN ADHESIVES , INC. 4
Prud’homme through incorporation by reference. Record-
ing of Oral Argument at 22:33–22:48 (June 10, 2021),
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20-
1738_06102021.mp3. We review the Board’s application of
its incorporation-by-reference rule for abuse of discretion.
See e.g. Intelligent Bio-Sys., Inc. v. Illumina Cambridge
Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). Thus, unless 3M
can convince us that the Board abused its discretion in de-
clining to consider Dr. Prud’homme’s testimony, its appeal
will fail. The Board abuses discretion if its decision “(1) is
clearly unreasonable, arbitrary, or fanciful; (2) is based on
an erroneous conclusion of law; (3) rests on clearly errone-
ous fact finding; or (4) involves a record that contains no
evidence on which the Board could rationally base its deci-
sion.” Id. (citation omitted).
As an initial matter, we note that, regarding this dis-
positive issue, 3M’s principal brief on appeal is almost si-
lent, merely stating that “factual assertions with a citation
to three pages of Dr. Prud’homme’s deposition testimony
and 10 (of the 170) paragraphs of his supplemental decla-
ration . . . is a far cry from impermissible incorporation by
reference.” Appellant Br. at 31. 3M’s brief cites a single
case, Expedia, Inc. v. International Business Machines
Corp., No. IPR2018-01136, 2019 WL 2511366 (P.TA.B.
June 17, 2019), in support of 3M’s view that the Board mis-
applied its incorporation-by-reference rule in this case.
The Board’s decision in Expedia is inapposite. In Expe-
dia, the Board held that its rule against incorporation by
reference was not violated by citation to an expert’s decla-
ration in support of the Petition’s clear argument that the
two references qualified as prior art. 3M offers no reason-
ing or analysis from that decision which would compel a
result in 3M’s favor on the record before us. There is no
dispute that a Petition or other filing before the Board may
permissibly “rely on [an expert declaration] to support its
contention with expert testimony.” Id. at *2. At issue here
is the Board’s determination that 3M’s filings never
Case: 20-1738 Document: 33 Page: 4 Filed: 06/25/2021

-- 4 of 8 --

3 M COMPANY v. EVERGREEN ADHESIVES , INC. 5
sufficiently made the relevant “contention” or argument at
all, and instead supported 3M’s position entirely by refer-
ence to Dr. Prud’homme’s declarations and testimony. 3M
has not pointed to any place in the record where Dr.
Prud’homme’s arguments as stated in the Request for Re-
hearing were previously explained in a manner sufficient
to avoid improper incorporation by reference.1
At issue in this appeal is 3M’s obviousness Ground 4,
in which 3M asserted that various claims of the ’056 patent
(including dependent claims 3 and 4, the claims on appeal)
would have been obvious over U.S. Patent Publication No.
2002/0161056 (the “Carnahan Publication”) in view of U.S.
Patent No. 5,931,354 (“Braud”) and the knowledge of a per-
son of skill in the art. See J.A. 165–682 (Petition for Inter
Partes Review). The Carnahan Publication (which is an
abandoned parent application in the ’056 patent’s priority
chain) teaches a single-propellant canister system which
“sprayed out exactly the same” at either 120 psi or 300 psi.3
Braud teaches a canister system comprising a liquefied
1 3M did not cite and seek to distinguish cases in
which we have upheld, on the abuse of discretion standard
of review, the Board’s enforcement of § 42.6(a)(3) by rejec-
tion of expert declarations incorporated by reference into
other documents. See, e.g., Gen. Access Solutions Ltd. v.
Sprint Spectrum L.P., 811 F. App’x 654 (Fed. Cir. 2020);
Bos. Sci. Neuromodulation Corp. v. Nevro Corp., 813 F.
App’x 572 (2020).
2 Citations to “J.A. ___” refer to the Joint Appendix
filed by the parties.
3 Because we resolve this appeal on the basis of the
Board’s incorporation-by-reference determination, we need
not reach the parties’ arguments or the Board’s statements
about whether the Carnahan Publication is properly un-
derstood as disclosing the range between 120 psi and 300
psi.
Case: 20-1738 Document: 33 Page: 5 Filed: 06/25/2021

-- 5 of 8 --

3 M COMPANY v. EVERGREEN ADHESIVES , INC. 6
first propellant and a second propellant which is a com-
pressed inert gas. In particular, the preferred embodiment
of Braud cited by 3M’s expert teaches that the “pressure in
the cylinder” is “a minimum of 220 psi[] and preferably . . .
about 240–250 psi.” J.A. 568. Claims 3 and 4 of the ’056
patent claim, in relevant part, a system wherein “said com-
pressed gas is pressurized in said canister to about 200 psi”
(claim 3) or “in a range of about 160–200 psi” (claim 4). ’056
patent, 9:44–48.
In its Petition for Inter Partes Review, regarding
Ground 4, 3M asserted only that “[i]t was within POSA
knowledge to alter the pressures disclosed in Carnahan
Publication and Braud to about 200 psi [or to 160–200 psi]
as part of routine optimization,” citing paragraph 117 of
Dr. Prud’homme’s declaration in support of this assertion.
J.A. 166. In its Decision on Institution of Inter Partes Re-
view, the Board stated that “questions have been raised re-
garding the evidentiary support for the rationale applied
by Petitioner to adjust certain pressures, concentrations,
and percentages, through ‘routine optimization’ to arrive at
the claimed values,” and stated that “[t]he parties should
address these issues during the trial.” J.A. 1942. Peti-
tioner’s Reply was somewhat more specific, mentioning a
person of skill’s selection of three variables at three levels
to perform the optimization, but 3M’s Reply does not spe-
cifically state that one of these variables is pressure and
does not specifically justify selection of a pressure value be-
low the “minimum of 220 psi” taught by Braud. J.A. 4350–
51. It does not appear that either party raised the issue of
the “minimum of 220 psi” taught by Braud at the oral hear-
ing before the Board. See generally 3M Co. v. Westech Aer-
osol Corp., No. IPR2018-00576 (P.T.A.B. May 1, 2019),
Paper 46 (Record of Oral Hearing).
In its Final Written Decision, the Board concluded that
3M had failed to carry its burden to show that claims 3 and
4 would have been obvious. Final Written Decision at *14.
In contrast with its filings up to that point, 3M’s
Case: 20-1738 Document: 33 Page: 6 Filed: 06/25/2021

-- 6 of 8 --

3 M COMPANY v. EVERGREEN ADHESIVES , INC. 7
subsequent Request for Rehearing devoted most of seven
pages to the issue of the 220 psi “minimum” taught by
Braud and why a person of skill would allegedly depart be-
low this pressure value to optimize the obviousness combi-
nation in Ground 4, citing various statements and
testimony of Dr. Prud’homme in support of its arguments.
J.A. 6038–44. As discussed, the Board concluded in its De-
cision Denying Petitioner’s Request for Rehearing that
3M’s argument in the Request for Rehearing regarding
“why a person of ordinary skill in the art would have had
selected certain pressures in the values claimed [i.e., 160–
200 psi or approximately 200 psi] in the first instance”
while optimizing the combination of the Carnahan Publi-
cation and Braud “was not advanced in the briefing and is
referenced only through citation to the expert reports.” Re-
hearing Decision at *3 (citing 37 C.F.R. § 42.6).
We agree with the Board that the Request for Rehear-
ing contained the first clear articulation of 3M’s argument
regarding why the 220 psi “minimum” taught by Braud did
not pose an obstacle to a finding that claims 3 and 4 were
obvious under 3M’s Ground 4. As discussed above, the ar-
guments about routine optimization in 3M’s Petition and
Petitioner Reply are skeletal at best, and these filings do
not mention the 220 psi “minimum” teaching of Braud at
all. Thus, we are not persuaded that the Board abused its
discretion when it concluded that 3M’s arguments were
present in the briefing prior to the Final Written Decision
only in the form of improper incorporation by reference to
Dr. Prud’homme’s testimony.
III
For the foregoing reasons, we affirm the Board’s deci-
sion rejecting 3M’s obviousness challenge to dependent
claims 3 and 4 of the ’056 patent.
AFFIRMED
Case: 20-1738 Document: 33 Page: 7 Filed: 06/25/2021

-- 7 of 8 --

3 M COMPANY v. EVERGREEN ADHESIVES , INC. 8
COSTS
No costs.
Case: 20-1738 Document: 33 Page: 8 Filed: 06/25/2021

-- 8 of 8 --