Fed. Circ. Revives Patent On De-Icing Roads With Molasses

Date: August 31, 2016

By Law 360 Reporter, Kat Greene 

Law360, Los Angeles (August 31, 2016, 6:26 PM ET) -- The Federal Circuit on Wednesday revived a patent for a molasses byproduct used as a de-icing agent on roads, finding that the Patent Trial and Appeal Board didn't present enough evidence to show that earlier sugar and rock salt-related inventions made the sugar-waste product obvious.

After a patent licensee had sought review of Natural Alternatives LLC's U.S. Patent Number6,080,330 in 2011, the PTAB concluded the invention for a natural type of road de-icing agent made from molasses that's had the sugar separated out of it was obvious in light of three patents that came before it, including a Polish invention that also used desugared sugar beet molasses for a similar purpose, court records show.

But the Federal Circuit rejected that conclusion on Wednesday, finding that the U.S. Patent and Trademark Office, in defending the board's decision, hadn't explained major differences between the two inventions. For one thing, the appeals court said, the Polish invention still had sugar in it, while the Natural Alternatives product doesn't.

“We agree with Natural that the board erred in concluding that the challenged claims of the '330 patent are invalid as obvious,” the panel wrote. “Accordingly, we reverse the judgment of the board.”

The Polish patent's teaching that the molasses contains about 50 percent sugar directly contradicts the '330's teaching of a process that removes most but not all of the sugar from the beets, the panel found.

And looking at the evidence Natural Alternatives put forth, the panel found that PTAB's conclusion against the patent holder was also contradicted by “unrebutted, real-world evidence of nonobviousness,” according to the decision.

For example, the USPTO hadn't addressed in its court papers that the desugared sugar beet molasses was previously considered a waste product but can now be used in a de-icing mixture that's efficient, has a low environmental impact and is cost-effective, the Federal Circuit said.

Chemical distribution company Univar Inc., a licensee of the '330 patent, had filed three third-party requests for reexamination of the patent, and an examiner found two claims in the patent invalid as obvious in November 2011, court records show.

Steven Tiller of Whiteford Taylor & Preston LLP told Law360 on Wednesday the case was an example of the board not supporting its findings, emphasizing that, as an attorney representing clients before the board, it's important to "make sure your interpretation of the prior art is accurate and supportable."

"We're pleased with the decision, and we're looking forward to the patent being reissued," Tiller said.