UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Akermin, Inc.
`Petitioner
`
`v.
`
`CO2 Solutions Inc.
`Patent Owner
`
`
`Patent No. 8,329,458
`Filing Date: June 4, 2010
`Issue Date: December 11, 2012
`Title: CARBONIC ANHYDRASE BIOREACTOR AND PROCESS FOR CO2
`CONTAINING GAS EFFLUENT TREATMENT
`
`
`
`
`Inter Partes Review No. IPR2015-00880
`
`
`Michael P. Tierney, Jon B. Tornquist, and Elizabeth M. Roesel
`Administrative Patent Judges
`
`
`
`
`
`
`
`
`PETITIONER’S DEMONSTRATIVE EXHIBITS
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Akermin, Inc.
`Petitioner
`
`v.
`
`CO2 Solutions Inc.
`Patent Owner
`
`
`Patent No. 8,329,458
`Filing Date: June 4, 2010
`Issue Date: December 11, 2012
`Title: CARBONIC ANHYDRASE BIOREACTOR AND PROCESS FOR CO2
`CONTAINING GAS EFFLUENT TREATMENT
`
`
`
`
`Inter Partes Review No. IPR2015-00880
`
`
`Michael P. Tierney, Jon B. Tornquist, and Elizabeth M. Roesel
`Administrative Patent Judges
`
`
`
`
`
`
`
`
`PETITIONER’S DEMONSTRATIVE EXHIBITS
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that pursuant to 37 C.F.R. § 42.70(b) and
`
`the Board’s Order for Oral Hearing (Paper 22), the enclosed Petitioner’s
`
`Demonstrative Exhibits for Oral Argument were served on May 31, 2016,via e-
`
`mail on the following individuals:
`
`Sandip H. Patel (Lead Counsel)
`Amanda K. Antons (Back-up Counsel)
`Steven M. Parks (Back-up Counsel)
`Marshall, Gerstein & Borun LLP
`233 South Wacker Drive
`6300 Willis Tower
`Chicago, IL 60606-6357
`spatel@marshallip.com
`aantons@marshallip.com
`sparks@marshallip.com
`
`
`
`
`
`
`
`
`
`
`
`/Marc Vander Tuig/
`
`Lead Counsel for Petitioner
`Marc Vander Tuig
`Reg. No. 57,964
`
`
`
`
`
`2
`
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 8,329,458
`June 9, 2016 Oral Argument
`
`
`1
`
`
`
`Instituted Grounds
`
`Claims
`1–3, 15, 17, 24–27, 40, 41, and 43
`
`
`1–3, 15–17, 24–27, and 40–43
`
`
`1, 4, 25, and 28
`
`
`
`1, 18, and 19
`
`1, 2, 15, 16, 22–26, and 40–43
`
`
`
`Basis
`§ 102
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`
`References
`Bonaventura ’987
`
`Bonaventura ’987 and
`Bonaventura ’416
`Bonaventura ’987 and
`Badjic
`Bonaventura ’987 and
`Kohl
`Dean and Rau
`
`
`
`Institution Decision at 30.
`
`2
`
`
`
`The ‘458 Patent
`
`Petition at 4.
`
`3
`
`
`
`The State of the Art
`
` Tri-phasic (Gas-Liquid-Solid) reactors were commonly
`used in a large variety of industrial applications before the
`‘458 patent.
` The use of the enzyme carbonic anhydrase for treating
`carbon-dioxide containing gas emissions was known
`before the ‘458 patent.
` Immobilization techniques for carbonic anhydrase,
`including entrapment, were also known.
` Common reactor vessel configurations included a reaction
`chamber, a liquid inlet, a gas inlet, a liquid outlet, and a
`gas outlet.
`
`Reply at 10-11.
`
`4
`
`
`
`Claim 1 of the ‘458 Patent
`
`Reply at 11.
`
`5
`
`
`
`Undisputed Proposed Claim Constructions
`
`Claim Term
`
`Akermin’s Proposed Constructions
`
`“porous”
`
`“filter”/“filtration”
`
`“ultrafiltration”
`
`“microfiltration”
`
`“substrates having minute spaces or
`holes through which liquid or air may pass”
`“Filter” – “porous device for removing impurities or solid
`particles from a liquid or gas passed through it”
`“Filtration” – “separation of one or more components from a
`fluid stream based primarily on size differences”
`“the action of filtering a solution through a fine membrane by
`pressure capable of separating particles of 0.005 μm to 0.1 μm
`in diameter”
`“the action of filtering a solution through a fine membrane by
`pressure capable of separating particles of approximately 0.1
`μm to 10 μm in diameter”
`
`Petition at 11-12.
`
`6
`
`
`
`“In Suspension”
`
`Akermin’s Proposed Construction
`“a mixture in which particles are
`heterogeneously dispersed throughout the
`bulk of a fluid”
`
`PO’s Proposed Construction
`“substrates are a mixture of nonsettling
`particles dispersed within a liquid, the
`particles being the dispersed phase, while
`the liquid is the continuous phase”
`
`Petition at 10; POR at 7.
`
`7
`
`
`
`Ambiguity in PO’s Proposed Construction
`
`Ex. 1027 (Dr. Fradette’s Deposition) at 13-14 (52:10-53:15); Reply at 2-3.
`
`8
`
`
`
`PO’s Construction is Unduly Narrow
`
`Ex. 2013 at 365; Reply at 3.
`
`9
`
`
`
`“Entrapped [in the Porous Substrates]”
`
`Akermin’s Proposed Construction
`“physically trapped within the structure of
`the substrate while retaining at least some
`of its activity”
`
`PO’s Proposed Construction
`“the enzyme molecules are free in
`solution, but restricted in movement
`within the interstitial confines of the
`porous substrate lattice network, and
`accessible to reactants (e.g., CO2)”
`
`Petition at 11; POR at 7.
`
`10
`
`
`
`“Entrapped [in the Porous Substrates]”
`
`Ex. 1001 at Claim 1; Reply at 4.
`
`11
`
`
`
`“Entrapped [in the Porous Substrates]”
`
`Ex. 1001 at 4:6-9, 6:23-31; Reply at 4-5.
`
`12
`
`
`
`“Entrapped [in the Porous Substrates]”
`
`Ex. 1001 at 8:62-66; Reply at 5.
`
`13
`
`
`
`“Entrapped [in the Porous Substrates]”
`
`Ex. 2012 at 745, 758; Reply at 5.
`
`14
`
`
`
`“Entrapped [in the Porous Substrates]”
`
`Ex. 1024 at 181; Reply at 6.
`
`15
`
`
`
`“Entrapped [in the Porous Substrates]”
`
`Ex. 1028 at 631; Reply at 6.
`
`16
`
`
`
`“Porous Substrates”
`
`Ex. 1026 at Title, 1:25-48, Figs. 1, 5; Reply at 4.
`
`17
`
`
`
`“Entrapped [in the Porous Substrates]”
`
`Ex. 1009 at 3671; Reply at 7.
`
`18
`
`
`
`“Entrapped [in the Porous Substrates]”
`
`Ex. 1029 at 290, 315; Reply at 8.
`
`19
`
`
`
`Anticipation by U.S. Patent No.
`4,602,987 (“Bonaventura”)
`
`20
`
`
`
`Ground 1: Anticipation by Bonaventura
`
`Ex. 1004 at Fig. 6, 30:15-53; Petition at 19.
`
`21
`
`
`
`Bonaventura Teaches Entrapping the Carbonic
`Anhydrase in Porous Substrates
`
`Ex. 1004 at 27:35-40, 28:22-26; Petition at 20, 22.
`
`22
`
`
`
`Figure 6 of Bonaventura Depicts Particles in Suspension
`
`• The grains (7) shown in Figure 4 are described as a “complex” of an oxygen binding
`compound and oxygen that streams through conduit 11. Ex. 1004 at 21:9-50.
`
`Ex. 1004 at Fig. 6, Fig. 4, Reply at 12.
`
`23
`
`
`
`Figure 6 of Bonaventura Depicts Particles in Suspension
`
`Ex. 1004 at 30:26-30; Reply at 12-13.
`
`24
`
`
`
`“Hemosponge”
`
`Ex. 1005 at 13:27-29, Fig. 9, Fig. 6; Reply at 13.
`
`25
`
`
`
`“Hemosponge”
`
`Ex. 1005 at 6:56-7:10; Reply at 13.
`
`26
`
`
`
`“Hemosponge”
`
`Ex. 1005 at 7:33-45; Reply at 13-14.
`
`27
`
`
`
`“Hemosponge”
`
`Ex. 1005 at 12:30-41; Reply 14.
`
`28
`
`
`
`PO’s Prior Representations to the Patent Office
`
`Ex. 1002 at 72; Institution Decision at 16; Reply at 15.
`
`29
`
`
`
`Dr. Fradette’s Testimony
`
`Ex. 2004 at ¶99; Reply at 16.
`
`30
`
`
`
`Dr. Fradette’s Testimony
`
`Ex. 1027 at 123:12-20; Reply at 17.
`
`31
`
`
`
`Obvious: Bonaventura in View of
`U.S. Patent No. 4,427,416
`
`32
`
`
`
`Bonaventura
`
`Ex. 1004 at Fig. 7, 30:54-31:15; Petition at 29.
`
`33
`
`
`
`Bonaventura Teaches Immobilizing Carbonic Anhydrase Using
`the Porous Substrates Taught in the ‘416 Patent
`
`Ex. 1004 at 27:35-40; Petition at 30.
`
`34
`
`
`
`Bonaventura’s Porous Substrates are Buoyant
`
`Ex. 1005 at 10:55-68; Ex. 1027 at 104:10-20; Reply at 18-19.
`
`35
`
`
`
`Countercurrent Fluidized-Bed Reactors
`
`Ex. 2007 at 333; Reply at 19.
`
`36
`
`
`
`Countercurrent Fluidized-Bed Reactors
`
`Ex. 1001 at Fig. 1; Ex. 1004 at Fig. 7; Reply at 19.
`
`37
`
`
`
`Obvious: Bonaventura in View of
`Badjic
`
`38
`
`
`
`Dependent Claims 4 and 28
`
`39
`
`
`
`Badjic
`
`Ex. 1009 at 3671; Petition at 43; Reply at 20-21.
`
`40
`
`
`
`Badjic
`
`Ex. 1009 at 3671-72; Reply at 21.
`
`41
`
`
`
`Obvious: Bonaventura in View of Kohl
`
`42
`
`
`
`Dependent Claims 18 and 19
`
`43
`
`
`
`Kohl
`
`Ex. 1008 at 333, 378; Petition at 45-46.
`
`44
`
`
`
`Obvious: Dean in View of Rau
`
`45
`
`
`
`Dean
`
`Ex. 1006 at 452, 454; Petition at 14, 48.
`
`46
`
`
`
`Rau
`
`Ex. 1007 at Fig. 3, 15-16; Petition at 49.
`
`47
`
`
`
`Combining Dean and Rau
`
`Ex. 1003 at ¶¶132-33, 135; Petition at 51.
`
`48
`
`
`
`Combining Dean and Rau
`
`Ex. 2006 at 24-22; Reply at 23-24.
`
`49
`
`
`
`Combining Dean and Rau
`
`Ex. 1020 at 188; Reply at 24.
`
`50
`
`
`
`Combining Dean and Rau
`
`Ex. 1001 at 2:37-45; Reply at 24.
`
`51
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