  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”), Japa-
nese 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, unre-
acted 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 De-
cember 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 Sep-
tember 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 ex-
haust 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 spe-
cifically 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 chal-
lenged 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), reject-
ing 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 asser-
tions 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 reject-
ing 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 Gart-
side, 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 Camp-
bell ’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 Camp-
bell ’558 is § 102(e) prior art. We do not agree.
    The Campbell Declaration by itself fails to demon-
strate that the portions of Campbell ’558 relied upon as
prior art and the subject matter at issue in the ’758 pa-
tent 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, explana-
tion, or evidence to lend credence to the inventor’s bare
assertion.
    We do not hold that corroboration of an inventor’s dec-
laration 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); 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 al-
leged inventor asserting priority with skepticism. Id.
This concept stems from the concern that “inven-
tors . . . would be tempted to remember facts favorable to
their case by the lure of protecting their patent or defeat-
ing another’s patent.” Mahurkar v. C.R. Bard, Inc., 79
F.3d 1572, 1577 (Fed. Cir. 1996). These concerns particu-
larly 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 inven-
tion.” (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 deci-
sion in In re DeBaun, 687 F.2d 459 (C.C.P.A. 1982), to
argue Mr. Campbell did not need to corroborate his decla-
ration. In DeBaun, Appellant Kenneth DeBaun sought
reissue of a patent. Id. at 460. The claims for the “equal-
izer honeycomb section 4” were rejected over an earlier-
filed 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 inven-
tor declaration to which he attached drawing No. 73-315.
Id. at 461.      He explained that the drawing “illus-
trates . . . 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 suggest-
ed 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 dec-
laration 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 conclud-
ed 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 declara-
tion, 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 publica-
tion . . . 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 supervi-
sion: “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 coin-
ventors.” Id. at 455. Based on this record and the totality
of the circumstances, it concluded Mr. Katz made a suffi-
cient showing that the publication disclosed his invention.
Id. at 456.
    In light of DeBaun and Katz, the Campbell Declara-
tion 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 inven-
tor. 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 con-
temporaneous 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 cor-
roboration 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 corrob-
orated 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 Decla-
ration 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 oppor-
tunity 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 impos-
es 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 argu-
ments 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-by-
element, 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 limi-
tations. J.A. 128.
    We likewise reject Volkswagen and PTO Intervenor’s
argument that the Institution Decision provided Emera-
Chem 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 state-
ment 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 refer-
enced 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 express-
ly 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 articula-
tion 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 provid-
ed 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 combi-
nation 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 Technolo-
gies, 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 irrele-
     vant because a proper petition could have been
     drafted. . . . There was no bar here to finding
     claims 10 and 14 unpatentable based on the Ev-
     ans 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 insti-
tuted 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 teach-
ings 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 ar-
guments 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 Institu-
tion Decision likewise did not sufficiently notify Emera-
Chem 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 adsor-
bent 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 Prod-
ucts 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 Gen-
zyme, 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 oppor-
tunity 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 no-
tice 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 deci-
sions.” 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 Deci-
sion, 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 specifi-
cally 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 sub-
ject 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 argu-
ment 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.
