REG Synthetic Fuels, LLC v. Neste Oil Oyj, No. 15-1773 (Fed. Cir. 2016)
Annotate this CaseREG’s patent is directed to paraffin compositions containing primarily even-carbon-number paraffins and methods of making them. Even-carbon-number paraffins are useful as phase change materials (PCMs), which can be used as insulation in a house; they can absorb heat during the warm portions of the day by undergoing a solid-liquid phase transition and return the heat during the cooler portions of the day by re-freezing. The thermal storage capacity of PCMs is determined by their latent heat of fusion, which is higher for even-carbon-number paraffins. The patent seeks to increase the production of compositions with higher percentages of even-carbon-number paraffins. One method disclosed in the patent is the hydrogenation and deoxygenation of naturally occurring fatty acids and esters, such as bio-oils, to produce primarily even-carbon-number paraffins. On inter partes review, the Patent Trial and Appeal Board excluded several REG exhibits based on hearsay and other grounds and found certain claims invalid as anticipated by other patents. The Federal Circuit affirmed that certain claims were anticipated, but reversed a finding that REG failed to establish conception of the invention prior to another patent’s filing date. The court remanded for further fact finding on diligence and reduction to practice and vacated the exclusion of certain exhibits.
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