UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BUTAMAXTM ADVANCED BIOFUELS LLC
`Petitioner
`V.
`GEVO, INC.
`Patent Owner
`
`CASE IPR: Unassigned
`
`DECLARATION OF JOSEPH T. JOSEPH, Ph.D.
`
`BUTAMAX 1030
`
`

`

`Inter Partes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`TABLE OF CONTENTS
`
`I.
`
`OVERVIEW ...................................................................................... 1
`
`II. MY BACKGROUND AND QUALIFICATIONS............................5
`
`III.
`
`IV.
`
`V.
`
`VI.
`
`PERSON OF ORDINARY SKILL IN THE ART ............................7
`
`STATE OF THE ART AS OF DECEMBER 3, 2007.......................8
`
`THE ’160 PATENT.........................................................................15
`
`CLAIM CONSTRUCTION.............................................................17
`
`VII. BASIS OF MY ANALYSIS WITH RESPECT TO
`ANTICIPATION.............................................................................18
`
`VIII. D’AMORE DISCLOSES A METHOD THAT WOULD
`NECESSARILY MEET ALL THE ELEMENTS OF 1-10,
`12,15-18, 20, AND 21 OF THE ’160 PATENT.............................19
`
`A. (cid:9)
`
`D’Amore teaches the process claimed in claim 1 .................20
`
`1.
`
`2.
`
`D’Amore teaches products meeting ASTM
`D4814’s requirements.................................................29
`
`D’Amore teaches products that meets the
`required ASTM D4814 requirement when
`blended........................................................................38
`
`B. (cid:9)
`
`D’Amore teaches the processes, biofuels and biofuel
`precursors recited claims 2-10, 12, 15-18, 20, and 21 ..........40
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Claim
`
`(cid:9) ........................................................................40
`
`Claim (cid:9) ........................................................................42
`
`Claim
`
`(cid:9) ........................................................................43
`
`Claim 5 ........................................................................44
`
`Claim
`
`(cid:9) ........................................................................45
`
`- 11 -
`
`

`

`Inter Par/es Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`6.
`
`7.
`
`8.
`
`9.
`
`Claim 7 ........................................................................46
`
`Claim 8 ........................................................................47
`
`Claim
`
`(cid:9) ........................................................................ 50
`
`Claim 10 ......................................................................51
`
`10. Claim 12 ......................................................................51
`
`11. Claim 15 ...................................................................... 53
`
`12. Claim 16...................................................................... 55
`
`13. Claim 17......................................................................57
`
`14. Claim 18 ......................................................................58
`
`15. Claim 20 ...................................................................... 60
`
`16. Claim 21 ......................................................................61
`
`IX. BASIS OF MY ANALYSIS WITH RESPECT TO
`OBVIOUSNESS..............................................................................62
`
`X.
`
`A POSA READING D’AMORE IN VIEW OF THE ASTM
`D4814, ASTM D910, ASTM D975, OR ASTM D1655
`STANDARDS HAD A REASON AND THE KNOW HOW
`TO ARRIVE AT THE CLAIMED PROCESSES AND
`PRODUCTS.....................................................................................63
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`ASTMD4814 ........................................................................65
`
`ASTMD975 ..........................................................................67
`
`ASTMD1655 ........................................................................70
`
`ASTMD91O ..........................................................................73
`
`Blends meeting the ASTM specifications ............................. 75
`
`A POSA reading D’Amore in view of Wilke, or
`D’Amore in view of ASTM D4814, ASTM D910,
`ASTM D975, or ASTM D1655, and further in view of
`
`111
`
`

`

`Inter Partes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`Wilke, had a reason and the know how to arrive at the
`processof claim 11 ................................................................76
`
`XI. (cid:9)
`
`CONCLUSION................................................................................78
`
`iI’A
`
`

`

`Inter Partes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`I, Joseph T. Joseph, do hereby declare as follows:
`
`I. (cid:9)
`
`Overview
`
`1.
`
`I am over the age of eighteen (18) and otherwise competent to make
`
`this declaration. This declaration is based on my personal knowledge as an expert
`
`in the fields of organic chemistry, fuel chemistry, and transportation fuel
`
`production. I understand that this declaration is being submitted together with a
`
`petition for inter partes review ("IPR") of claims 1-21 of U.S. Patent No.
`
`8,378,160 ("the ’160 patent," BMIX1001).
`
`2.
`
`I have been retained as an expert witness on behalf of B utamaxTM
`
`Advanced Biofuels LLC for this IPR. I am being compensated for my time in
`
`connection with this declaration at my standard consulting rate. I have no personal
`
`or financial interest in the outcome of this proceeding.
`
`3.
`
`I understand that Butamax is a joint venture between DuPont and BP. I
`
`held the position of Senior Technology Advisor for Fuels Technology with BP
`
`from 1998-2009.
`
`4.
`
`I understand that the ’160 patent issued on February 19, 2013, and
`
`resulted from U.S. Application No. 13/441,459 filed on April 6, 2012. I also
`
`understand that the U.S. Patent and Trademark Office ("USPTO") records state
`
`that the ’160 patent is currently assigned to Gevo, Inc.
`
`1
`
`

`

`Inter Partes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`5.
`
`The face page of the ’160 patent lists a series of patent applications. I
`
`understand that the ’160 patent is related to these patent applications. The earliest
`
`filing date of any of those applications is December 3, 2007. It is my understanding
`
`that the earliest possible date to which the ’160 patent may claim priority is that
`
`December 3, 2007 date.
`
`6.
`
`I am providing this declaration to establish that (i) U.S. Patent Appl.
`
`Pub. No. 2008/0132741 ("D’Amore") (BMX1003) discloses each and every
`
`limitation in claims 1-10, 12, 15-18, 20, and 21 of the ’160 patent, arranged as
`
`claimed and (ii) a person of ordinary skill in the art ("POSA") would have had a
`
`reason and the know-how to arrive at claims 1-21 in view of D’Amore and ASTM
`
`International specifications D4814 (gasoline), D975 (diesel fuels), D910 (aviation
`
`gasoline), or D1655 (jet fuel) (BMX1014, BMX1015, BMX1016, and BMX1017
`
`respectively), with a reasonable expectation of success, as follows:
`
`Applied References
`
`D’Amore in view of ASTM D4814 (BMX 1O14)
`
`D’Amore in view of ASTM D975 (BMX 1O15)
`
`D’Amore in view ofASTM D 165 5 (BMX 1O17)
`
`Claims
`1-10, 12, 15-
`18, 20, and 21
`1-10, 13 9 15-
`18, 20, and 21
`1-10 9 14-18,
`20, and 21
`1-10 and 15-21 D’Amore in view of ASTM D910 (BMX 1O16)
`D’Amore in view of U.S. Patent No. 4,359,533 ("Wilke")
`(BMX1006)
`
`11
`
`2
`
`

`

`Inter Panes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`11
`
`D’Amore in view of Wilke and ASTM D4814, D975, D910,
`and D1655
`
`
`
`7. (cid:9)
`
`In preparing this declaration, I have reviewed the ’160 patent and its
`
`file history at the USPTO. I have also considered each of the documents also listed
`
`in the table below, in light of general knowledge in the art as of December 3, 2007.
`
`Butamax
`Exhibit #
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`Gruber et at., U.S. Patent No. 8,378,160 (filed April 6, 2012;
`issued February 19, 2013)
`File History for U.S. Patent No. 8,378,160 (filed April 6, 2012;
`issued February 19, 2013)
`D’Amore et at., U.S. Patent Appi. Pub. No. 2008/0132741 (filed
`
`June (cid:9)_13,_2007;_ published _Jun. _5,_2008)
`
`
`D’Amore et at., U.S. Provisional Appl. No. 60/814,137 (filed
`June 16, 2006)
`Bradin et at., Intl. Pub. No. WO 2007/061903 (filed Nov. 17,
`2006; published May 31, 2007)
`Wilke et at., U.S. Patent No. 4,359,533 (filed Nov. 26, 1980,
`issued Nov. 16, 1982)
`Home, U.S. Patent No. 419,332 (filed Feb. 16,1888; issued Jan.
`14, 1890)
`English et at., U.S. Patent No. 4,349,628 (filed July 15, 1980;
`issued Sept. 14, 1982)
`Maiorella, B.L., et at., "Economic Evaluation of Alternative
`Ethanol Fermentation," Biotechnology and Bioengineering
`XXVI: 1003-1025 (1984)
`Donaldson et at., U.S. Patent Appi. Pub. No. 2007/0092957
`(filed Oct. 25, 2006; published April 26, 2007)
`Universal Oil Products Company, GB Patent No. 576,480 (filed
`October 29, 1943; issued April 5, 1946)
`
`3
`
`(cid:9)
`

`

`Inter Panes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`Butamax
`Exhibit4
`
`Description
`
`1012
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1025
`
`Le Page et al., U.S. Patent No. 4,197,185 (filed August 25,
`1978; issued April 8, 1980)
`ASTM Standard D4814, "Standard Specification for
`Automotive Spark-Ignition Engine Fuel," ASTM International,
`West Conshohocken, PA, September 2007, http://www.astm.org
`ASTM Standard D975, "Standard Specification for Diesel Fuel
`Oils," ASTM International, West Conshohocken, PA, August,
`2007, http://www.astm.org
`ASTM Standard D910, "Standard Specification for Aviation
`Gasolines," ASTM International, West Conshohocken, PA,
`August 2007, http://www.astm.org
`ASTM Standard D1655, "Standard Specification for Aviation
`Turbine Fuels," ASTM International, West Conshohocken, PA,
`July 2007, http://www.astm.org
`ASTM Standard D4953, "Standard Test Method for Vapor
`Pressure of Gasoline and Gasoline-Oxygenate Blends (Dry
`Method)," ASTM International, West Conshohocken, PA, 2006,
`http://www.astm.org
`Chevron-Phillips Material Safety Data Sheet for 2,2,4-
`Trimethylpentane (Isooctane) revision date October 29, 2013
`IHS Chemical, "NExOCTANETM Isooctane Process," PEP
`Review 2003-12, November 2003, available at
`http://www.ihs.com/products/chemical/technology/Pep/reviews/
`nexoctane-isooctane-process. aspx
`R.J. Hengstebeck, Petroleum Processing: Principals and
`Applications, pp. 1-9 (1959)
`V.J Inglezakis & S.G. Poulopoulos, "Adsorption, Ion Exchange
`and Catalysis: Design of Operations and Environmental
`Applications, pp. 92-93 (2006)
`Chevron Global Aviation, Aviation Fuels Technology Review
`(2006)
`Ronald Birkhoff & Matti Nurminen, NExOctaneTM Technology
`for Isooctane Production, in Handbook of Petroleum Refining
`Processes (Robert A. Meyers, 3d Ed. 2004)
`
`

`

`Inter Partes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`Description
`
`James G. Speight, The Chemistry and Technology of Petroleum
`(4thed. 2007)
`G. Knothe & K. Steidley, "Kinematic viscosity of biodiesel fuel
`components and related compounds. Influence of compound
`structure and comparison to petrodiesel fuel components," Fuel
`84: 1059-1065(2005)
`http://www.astm.org/ABOUT/overview.html/, (cid:9)
`November 1, 2013
`Jhung et al., PCT Appi. Pub. No. WO 2007/091862 (filed Feb.
`9, 2007; published Aug. 16, 2007)
`Mossman et al., U.S. Patent No. 6,239,321 (filed Feb. 28, 2000;
`issued May 29, 2001)
`
`accessed
`
`
`
`Butamax
`Exhibit #
`
`1028
`
`1029
`
`1036
`
`1037
`
`1038
`
`8.
`
`In formulating my opinions, I have relied upon my experience in the
`
`relevant art. In formulating my opinions, I have also considered the viewpoint of a
`
`POSA (i.e., a person of ordinary skill in the field of organic chemistry and/or fuel
`
`chemistry, as well as transportation fuel production) as of December 3, 2007.
`
`II. My background and qualifications
`
`9.
`
`My qualifications and credentials are fully set forth in my curriculum
`
`vitae, attached as BMIX 1035. I am an expert in the fields of organic chemistry, fuel
`
`chemistry, and transportation fuel production. I am knowledgeable about the
`
`experimental techniques used in the fields of organic chemistry, fuel chemistry,
`
`and transportation fuel production. I have been an expert in these fields since 1975.
`
`For the past 38 years, I have accumulated significant training and experience in the
`
`5
`
`

`

`Inter Partes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`fields of organic chemistry, fuel chemistry, transportation fuel production, and
`
`other related fields.
`
`10.
`
`I received a Bachelor’s Degree in Chemistry in 1964 from the
`
`University of Kerala, India. I received a Master’s Degree in Chemistry in 1966
`
`from the University of Kerala, India. I received a Ph.D. in Organic Chemistry in
`
`1975 from the University of Louisville, Kentucky.
`
`11.
`
`From 1974 to 1976, I was a post-doctoral fellow at the University of
`
`Maryland, School of Medicine in Baltimore, Maryland. From 1976-1980, I was a
`
`post-doctoral fellow at the University of Louisville, Kentucky. From 1980-1998, I
`
`held the position of Senior Research Scientist with Amoco Oil Company. From
`
`1998-2009, I held the position of Senior Technology Advisor for Fuels Technology
`
`with BP.
`
`12.
`
`Since 2009, I have been a consultant in the areas of transportation
`
`fuels, fuel additives, alternate fuels
`
`(e.g., biofuels), and fuel chemistry, including
`
`the manufacture and blending of such fuels.
`
`13.
`
`I have published more than 20 papers in peer-reviewed international
`
`journals, including in the areas of organic chemistry and fuel chemistry. I have
`
`been an advisor to the Illinois Department of Energy’s Institute for Clean Coal
`
`since 1991. I have also been a member of the Coordinating Research Council since
`
`2005, which is a non-profit organization that directs engineering and
`
`

`

`Inter Panes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`environmental studies on the interaction between automotive/other mobility
`
`equipment and petroleum products. In addition to my educational training,
`
`professional experiences, and research experiences described above, I have been
`
`invited to present seminars at scientific conferences, universities, and research
`
`institutes.
`
`14.
`
`I am a named inventor on 5 issued United States Patents: U.S. Patent
`
`Nos. 5,228,982, 5 52461570, 5,266,189, 5,446,002, and 5,489,375. I have also been
`
`granted patents in Australia, China, and Europe.
`
`15.
`
`Accordingly, I am an expert in the fields of organic chemistry, fuel
`
`chemistry, and transportation fuel production, and have been since 1975. For that
`
`reason, I am qualified to provide an opinion as to what a POSA would have
`
`understood, known or concluded as of December 3, 2007.
`
`III. Person of ordinary skill in the art
`
`16.
`
`I understand that a POSA is a person who is presumed to be aware of
`
`all pertinent art, thinks along conventional wisdom in the art, and is a person of
`
`ordinary creativity. A POSA would have had knowledge of the scientific literature
`
`concerning transportation fuels, fermentation, and alcohol production that was
`
`available by December 2007, including knowledge about experimental techniques
`
`available in the art. A POSA would have a Ph.D. in Chemistry, Chemical
`
`Engineering, or a similar related discipline and would have experience in organic
`
`7
`
`

`

`Inter Partes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`chemistry and/or fuel chemistry, as well as transportation fuel production.
`
`Alternatively, a POSA would have a Bachelor’s degree in Chemistry, Chemical
`
`Engineering, or a similar related discipline and substantial experience in an
`
`industry involving in organic chemistry and/or fuel chemistry, as well as
`
`transportation fuel production.
`
`IV. State of the art as of December 3, 2007
`
`17. (cid:9)
`
`The ’160 patent encompasses processes for making renewable C 8-C24
`
`saturated alkanes that meet the requirements of at least one industry standard for
`
`transportation fuels as described in the American Society for Testing and
`
`Measurement ("ASTM") International specifications D4814 (gasoline), D975
`
`(diesel fuels), D910 (aviation gasoline), or D1655 (jet fuel), or where a blend of at
`
`least 10% of the C 8-C24 saturated alkanes with a mixture of hydrocarbons meet the
`
`requirements of at least one of the ASTM standards. (BMX1001, 62:48-63:2.)
`
`There is nothing new about making fuels or fuel blends that meet relevant ASTM
`
`standards. Indeed, as discussed below, a POSA would have had every incentive to
`
`produce fuels and fuel blends that meet relevant ASTM standards in order to meet
`
`the Environmental Protection Agency ("EPA") and/or Federal Aviation
`
`Administration ("FAA") regulations so that the fuels can be sold and used in the
`
`U. S.
`
`18. (cid:9)
`
`ASTM International is an international organization founded to create
`
`[Si
`
`

`

`Inter Partes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`and promote voluntary safety and performance standards. (BMX1036.) There are
`
`thousands of ASTM standards that are used as guidance worldwide to improve
`
`product quality, enhance safety, and facilitate trade. (BMX1036.) It is my
`
`understanding from working in the fuels industry that by the late 1990s,
`
`government agencies such as the EPA and FAA adopted the ASTM standards
`
`recited in the ’160 patent as part of obtaining EPA or FAA approval to sell or use
`
`various transportation fuels in the U.S.
`
`19.
`
`The ’160 patent also recognizes that the ASTM "defines testing
`
`procedures and specifications for all petroleum products manufactured and sold
`
`commercially." (BMX 1001, 11:15-18.) With the knowledge that the EPA and FAA
`
`relied on ASTM standards to regulate fuels sold and used in the U.S., a POSA
`
`would have had every reason to develop fuels meeting the pertinent ASTM
`
`standard.
`
`20.
`
`Long before the EPA and FAA incorporated the ASTM standards into
`
`their approval process, "[d]ecreasing supplies of fossil fuels made it necessary to
`
`investigate alternative sources of energy." (BMX1006, 1:15-16.) For example, as
`
`far back as 1980, the fuel industry was looking at using energy sources derived
`
`from renewable cellulosic matter in biomass (such as agriculture and wood
`
`products) as a feedstock for producing biofuels. (BMX1006, 1:16-19.) In this
`
`process, the cellulosic matter is converted to a carbohydrate source for
`
`

`

`Inter Panes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`microorganisms to ferment into an alcohol, which is then converted to a biofuel or
`
`liquid fuel. (BMX1006, 1:22-29.)
`
`21.
`
`A particularly useful alcohol to generate from these renewable biomass
`
`sources is isobutanol. (BMX1O1O, ¶[0078].) The benefit of isobutanol as a biofuel
`
`or fuel additive is that, when burned, it results in only water and carbon dioxide,
`
`and produces little to no sulfur or nitrogen products. (BMX1O1O, ¶[0078].) Both
`
`sulfur and nitrogen compounds in finished fuel products produce harmful effects,
`
`such as engine corrosion or gum formation (BMX1028, pp.188, 191-192.) So
`
`making isobutanol from a renewable source has the benefit of not relying on the
`
`ever decreasing supply of fossil fuels and also producing a less problematic fuel.
`
`(BMX1O1O, ¶J[0078]-[0080].)
`
`22.
`
`It is my understanding that by 2007, two major problems that affected
`
`the industrial conversion of biomass to isobutanol were resolved. First, a major
`
`problem encountered with the fermentative production of alcohol is that the
`
`alcohol is self-inhibiting; as the concentration of alcohol increases, it negatively
`
`impacts the microorganism’s ability to produce further alcohol. (See, e.g.,
`
`BMX1006, 1:15-35.) Fermenters operating under subatmospheric pressure took
`
`advantage of the differences in vapor pressure of alcohols (and water) and the rest
`
`of the fermentation broth. (BMX1006, 1:60-68.) Alcohol and water are essentially
`
`boiled away from the broth, reducing the alcohol’s concentration in the broth, and
`
`10
`
`

`

`Inter Partes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`consequently reducing the alcohol’s self-inhibitory effects. (BMX1006, 1:60-68.)
`
`This aqueous water/alcohol vapor can then be removed from the fermentation
`
`broth, allowing the microorganisms to continue converting feedstock to alcohol.
`
`(BMX1006, 1:60-68.) Other methods for removing alcohol from the fermentation
`
`broth include distillation, liquid-liquid extraction, or membrane-based separation.
`
`(BMX1010, ¶[0183].)
`
`23.
`
`The second problem was producing isobutanol from non-
`
`petrochemical sources such as sugars with a high enough yield for use as a fuel or
`
`fuel additive. (BMX1010, ¶’J[0004]-[0005].) Yeast fermentation, for example, can
`
`produce isobutanol, but only as a by-product in low concentrations under certain
`
`circumstances. (BMIX1010, ¶0005].) Fortunately, the development of a
`
`microorganism that produced isobutanol in a high concentration solved this
`
`problem as well. (BMX1010, ¶[0006].) So by 2007, the mechanism and conditions
`
`to effectively produce isobutanol from renewable biomass sources for use as a fuel
`
`or fuel additive were known.
`
`24.
`
`The rest of the process to convert those biomass sources to isobutanol
`
`on an industrial scale uses well-known engineering techniques. For example,
`
`distillation is a common technique used since the late 1800s to extract alcohols
`
`from a fermentation medium. (See, e.g., BMX1008, 1:57-2:12; BMX1007, 45-54,
`
`BMX1003, ¶[0039]; BMX1009, 1005:1, ¶3; BMX1010, ¶[0183].) Distillation
`
`11
`
`

`

`Inter Partes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`involves producing saturated liquid and vapor phases to separate components
`
`based on their relative volatilities. Similarly, additional downstream processes for
`
`further purifying an alcohol, such as isobutanol that is not miscible in water at all
`
`concentrations, were well-known.
`
`(See, e.g., BMX1003, ¶[0037].) These
`
`processing steps include (1) condensing the vapor phase leaving the distillation
`
`vessel to form an alcohol-rich liquid phase and a water-rich liquid phase and (2)
`
`separating the two liquid phases from each other, using for example a decanter or
`
`liquid-liquid separator. (See, e.g., BMX1003, ¶[0057]; BMX1010, ¶[0184].)
`
`25.
`
`And further processing alcohols such as isobutanol into hydrocarbons
`
`useful in fuels was well-known by December 2007. While isobutanol itself can be
`
`useful as a fuel or fuel additive, higher weight hydrocarbons such as isooctane (an
`
`eight-carbon molecule that contains no double bonds) are useful as well.
`
`(BMX 1003, ¶{001l].) For example, because of environmental concerns with other
`
`fuel additives in the late 1990s, the fuel industry considered isooctane an excellent
`
`gasoline blend stock. (BMIX1025, 1.3, 1.4.) Converting isobutanol into isooctane
`
`requires at least three additional well-known steps(cid:151)dehydrating, oligomerizing,
`
`and hydrogenating. Dehydration is a common technique to catalytically convert an
`
`alcohol (e.g., isobutanol) to an olefin (e.g., butene). (See, e.g., BMIX1003,
`
`¶J[0050]-[0057], [0062], and [0114].) Converting those olefins (such as the
`
`monomer butene) into an oligomer (e.g., butene dimers, such as isooctene, etc.) is
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`12
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`Inter Partes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`accomplished by oligomerization, which is a well-known technique of joining
`
`single compounds (monomers) together to form larger compounds (oligomers).
`
`(See, e.g., BMX1012, 1:34-36 and 57-66; BMX1003, ¶J[0053], [0064], and
`
`[0074]-[0075]; see generally BMX1O11.) Hydrogenation then converts the
`
`oligomer produced by the oligomerization step to an alkane.
`
`(See, e.g., BMX 1O12,
`
`1:40-42; BMX1003, ¶[0076] and the references cited therein.) Hydrogenation
`
`involves contacting the oligomerization product
`
`(e.g.,
`
`isooctene) with a
`
`hydrogenation catalyst in the presence of hydrogen to produce an alkane (e.g.,
`
`isooctane). (See, e.g., BMX1012, 1:40-42; BMX1003, ¶[0076] and the references
`
`cited therein.)
`
`26.
`
`The ’160 patent recognizes that these three steps (dehydrating,
`
`oligomerizing, and hydrogenating) were all well-known techniques used in the art.
`
`(See, e.g., BMX 1001, 21:19-24; 22:30-53, 28:31-36 and the references cited in the
`
`patent.)
`
`27.
`
`Hydrocarbons are organic compounds composed only of carbon and
`
`hydrogen atoms and include the following classes: olefins, alkanes (also known as
`
`paraffins), naphthenes, and aromatic compounds. (BMX1023,
`
`85.) The members
`
`of each class share common structural features; whereas, each class differs from
`
`the other in how the carbon atoms are arranged and the ratio of hydrogen atoms to
`
`carbon atoms. (BMX1023, 85.)
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`Inter Panes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`28.
`
`The physical and chemical properties of hydrocarbons, such as boiling
`
`point, freezing point, and density, depend on class and carbon number. (BMX 1023,
`
`87.) For example, the boiling point of hydrocarbons increases with an increase in
`
`carbon number in hydrocarbons of the same class. (BMX1023, 24 and 88.) Among
`
`the different classes of hydrocarbons, the boiling point increases in the order of
`
`isoparaffins, normal paraffins, naphthenes, and aromatics for hydrocarbons with
`
`the same carbon number. (BMX1023, 24 and 88.) Similarly, the freezing point of
`
`hydrocarbons increases with an increase in carbon number in hydrocarbons of the
`
`same class, but the freezing point is also strongly influenced by molecular shape.
`
`(BMX 1023, 25 and 88.) Normal paraffins and unalkylated aromatics have higher
`
`freezing points than other compounds with the same carbon number because they
`
`have a compact geometry that allows them to pack together more easily into a
`
`crystalline structure. (BMX1023, 25 and 88.)
`
`29.
`
`The properties of pure hydrocarbons were known or could have been
`
`predicted as of December 2007, and the properties of hydrocarbon mixtures could
`
`have been generally predicted as well. (See, e.g., BMX1023, 24, 85, and 87,
`
`showing boiling point, density, and freezing point of various hydrocarbons.) In
`
`fact, fuel companies employ proprietary computer programs that can predict the
`
`properties of a hydrocarbon mixture by inputting into the program properties of the
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`Inter Partes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`different types of hydrocarbons found in the mixture. I used programs such as
`
`these prior to December 3, 2007.
`
`30.
`
`One can blend the heavier hydrocarbon compounds, such as isooctane,
`
`to use the blend as an alternative fuel and/or fuel additive compositions, including
`
`gasoline, diesel, and jet fuels. (BMX1005, 1:4-6.) Alternative fuel compositions
`
`include one or more conventional fuels combined with one or more renewable
`
`components. (BMX1005, 3:20-22.) For example, jet fuels and diesel fuels can be a
`
`mixture of a variety of compounds, including hydrocarbons. (BMX 1005, 1:29-2:2,
`
`and 8:33-9:2.) As with any other fuels, these blended fuels are designed to meet the
`
`ASTM standards incorporated into the EPA and FAA approval process.
`
`(BMX 1005, 8:29-9:2, 9:5-8.)
`
`31.
`
`The process for creating these alternative fuel compositions is called
`
`blending, in which a blended product comprising renewable biofuels and
`
`traditional fossil fuels can be prepared with desired properties.
`
`(See, e.g.,
`
`BMX1005, 20:27-32 and 25:29- 26:2; BMIX1003, ¶[0020] and [0076].)
`
`V. (cid:9)
`
`The ’160 patent
`
`32.
`
`I understand that this declaration is being submitted together with a
`
`petition for IPR of claims 1-21 of the ’160 patent.
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`Inter Partes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`33.
`
`I have considered the disclosure of the ’160 patent in light of general
`
`knowledge in the art as of the earliest possible priority date of the ’160 patent,
`
`which I understand to be December 3, 2007.
`
`34.
`
`The ’160 patent specification is directed to renewable compositions
`
`derived from fermentation of biomass and integrated methods of preparing the
`
`compositions. (BMX1001, Abstract.)
`
`35. More specifically, claim 1, from which claims 2-21 generally depend,
`
`specifies treating biomass to form a feedstock, fermenting that feedstock with one
`
`or more species of microorganisms to form isobutanol. (BMX1001, 62:48-52.)
`
`The next step is dehydrating at least a portion of the isobutanol to form one or
`
`more C 4 olefins. (BMX1001, 62:53-55.) Claim 1 further specifies isolating the one
`
`or more C 4 olefins, followed by oligomerizing at least a portion of the one or more
`
`C4 olefins to form a product comprising one or more C 8-C24 unsaturated oligomers.
`
`(BMX 1001, 62:55-60.) The last process step of claim 1 is hydrogenating at least a
`
`portion of the oligornerization product to form a product comprising one or more
`
`C8-C24 saturated alkanes. (BMX1001, 62:61-63:2.) The following figure shows an
`
`embodiment of claim 1 of the ’160 patent:
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`Inter Partes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`Feedstock
`
`(a)
`
`Fermenter with
`
`Microorganisms
`
`Dehydrating
`
`lsobutanoi (cid:9)
`
`Catalyst
`
`(b)
`
`One or more C4
`Olefins
`
`C8-C24 (cid:9)
`saturated
`Oligomers
`
`Hydrogenating
`
`Catalyst
`
`(f)
`
`Oligomeing
`
`Catalyst
`
`C c24
`unsaturated (cid:9)
`Oligomers
`
`I
`
`(e)
`
`VI. Claim construction
`
`36.
`
`I have been informed that claim terms are given their broadest
`
`reasonable interpretation, as understood by a POSA, in view of their specification.
`
`After reading the ’160 patent’s specification, it is my opinion that a POSA reading
`
`the ’160 patent would understand that all the terms of claims 1-21 should be given
`
`their ordinary meaning except the term "ASTM D4814".
`
`37.
`
`Several claims in the ’160 patent (1, 12, 16, and 18, for example), list a
`
`fuel or blend that meets ASTM D4814 specifications. ASTM D4814 is the key
`
`specification for gasoline. (BMX1001, 15:27-33.) Generally this would indicate
`
`that ASTM D4814 defines the gasoline. But the ’160 patent explicitly states that
`
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`

`Inter Partes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`"the distillation curve specification [in ASTM D4814] is not used to describe the
`
`gasoline compositions of the present invention." (BMX1001, 15:62-6:6.) The
`
`distillation curve temperatures, distillation residue percentage, and the drivability
`
`indices listed in Table 1 of ASTM D4814 are derived from the distillation curve.
`
`(BMX1014, Table 1.) As such, a POSA would have understood that according to
`
`the inventors, a product, blend, biofuel, or biofuel precursor recited in the ’160
`
`patent claims does not have to meet the distillation curve temperatures, the
`
`distillation residue percentage, and the drivability indices listed in Table 1 of
`
`ASTM D4814 in order to meet the requirements of ASTM D4814.
`
`38.
`
`Notably, there are numerous versions of ASTM D4814 from various
`
`years, and the ’160 patent does not differentiate between them. For example, the
`
`ASTM’s website, www.astrn.org, shows several ASTM D4814 versions prior to
`
`December 3, 2007, which is the earliest priority date available to the ’160 patent.
`
`The same is true for the other ASTM standards in the ’160 patent(cid:151)D975, D1
`
`655,
`
`and D910. For simplicity, any ASTM standard discussion will refer to the latest
`
`ASTM standard published before December 3, 2007. The differences between the
`
`various ASTM standards are not relevant to the ’160 patent discussion here.
`
`VII. Basis of my analysis with respect to anticipation
`
`39.
`
`It is my understanding that a reference anticipates a claim if it discloses
`
`each and every element recited in the claim, arranged as claimed. Further, it is my
`
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`

`Inter Partes Review of USPN 8,378,160
`Declaration of Joseph T. Joseph, Ph.D. (Exhibit 1030)
`
`understanding that an anticipating reference must set forth the elements in the
`
`claim in a sufficiently detailed manner such that it would enable a POSA to make
`
`and use the claimed invention without the need for undue experimentation. Those
`
`elements can be either explicitly described or inherently described. Inherent
`
`element