UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`Arkema France
`
`Petitioner
`
`v.
`
`Honeywell International Inc.
`
`Patent Owner
`
`_____________________________
`
`Trial No.: IPR2015-00916
`U.S. Patent No. 8,710,282
`
`_____________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`Arkema France
`
`Petitioner
`
`v.
`
`Honeywell International Inc.
`
`Patent Owner
`
`_____________________________
`
`Trial No.: IPR2015-00916
`U.S. Patent No. 8,710,282
`
`_____________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ...........................................................................................1
`I.
`CLAIM CONSTRUCTION ............................................................................1
`II.
`III. ARGUMENT...................................................................................................1
`A.
`Claims 1-20 are Obvious Under 35 U.S.C. § 103 Over
`the Combination of Smith, Masayuki, and Harrison ............................1
`1.
`A POSITA would be motivated to look beyond
`Smith ...........................................................................................1
`The cited references teach, suggest, or disclose all
`elements of the claims.................................................................6
`A POSITA would have combined Smith with
`Masayuki and Harrison.............................................................10
`Smith is Prior Art to the ’282 Patent Because Patent
`Owner Did Not Exercise Diligence in Constructively
`Reducing to Practice the Claimed Invention.......................................15
`1.
`Legal Principles.........................................................................15
`2.
`Smith .........................................................................................15
`
`B.
`
`2.
`
`3.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`Griffith v. Kanamaru,
`816 F.2d 624 (Fed. Cir. 1987)..............................................................................15
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................10
`Mycogen Plant Sci., Inc. v. Monsanto Co.,
`252 F.3d 1306 (Fed. Cir. 2001)............................................................................18
`Mycogen Plant Sci., Inc. v. Monsanto Co.,
`535 U.S. 1109 (2002) ..........................................................................................18
`Olympus Am. v. Perfect Surgical Techniques, Inc.,
`Case IPR2014-00233 (PTAB June 8, 2015) (Paper 56).................... 15, 20, 22, 23
`
`ii
`
`
`
`I.
`
`INTRODUCTION
`
`The ’282 patent should never have issued. During prosecution, the
`
`Examiner made no prior art rejections and challenged no claim terms at issue in
`
`this proceeding. Even Dr. Lousenberg admitted that when he first saw the ’282
`
`patent, before being hired by Patent Owner, “I didn’t really see what the initial
`
`invention was” and didn’t understand how it could be patentable. (EX1024, 15:22-
`
`16:5, 16:24-17:9.)
`
`II.
`
`CLAIM CONSTRUCTION
`
`Patent Owner does not address validity of the ’282 patent claims under the
`
`constructions set forth in the Petition, thereby conceding invalidity under those
`
`constructions. Moreover, even under Patent Owner’s proposed claim constructions
`
`the claims of the ’282 patent are invalid.
`
`III. ARGUMENT
`
`A.
`
`Claims 1-20 are Obvious Under 35 U.S.C. § 103 Over the
`Combination of Smith, Masayuki, and Harrison
`
`1.
`
`A POSITA would be motivated to look beyond Smith
`
`A POSITA reading Smith would understand that “spent KOH” would be
`
`withdrawn from the dehydrohalogenation reactor. Smith teaches that the base-
`
`mediated dehydrofluorination reaction can be conducted continuously in a
`
`continuously stirred tank reactor (CSTR). (EX1003 at 2.) At “steady state,” the
`
`concentrations of starting materials, reagents, and products in the reactor are
`
`1
`
`
`
`constant, as are concentrations and flow rates of streams entering and exiting the
`
`reactor. (EX1025, 203:14-16, 204:4-205:8, 207:4-208:8.)
`
`Dr. Lousenberg testified that Smith teaches feeding aqueous KOH to the
`
`reactor and that a POSITA would start with an aqueous KOH concentration
`
`“around 25%”. (EX1025, 233:24-235:21.) As KOH reacts with organic reactants,
`
`KF is formed and is present in the aqueous phase. (EX1025, 228:14-24.) Thus, at
`
`steady state, the aqueous reaction mixture in the CSTR contains both KOH and KF
`
`(“spent KOH”) and dissolved organics. (EX1025, 242:4-12, 252:25-254:5.) The
`
`aqueous stream exiting the reactor also contains “spent KOH,” in the same
`
`concentration as the aqueous reaction mixture, because KOH and KF cannot be
`
`separated in the reactor. (EX1024, 28:6-7; EX1025, 245:11-15, 246:5-247:5.)
`
`Accordingly, there is no real dispute that “spent KOH” would be withdrawn from
`
`the Smith reactor.
`
`Further, a POSITA would understand the “spent KOH” being withdrawn to
`
`include an appreciable amount of KOH. The DHF reaction rate and the organic
`
`starting material conversion depend on the steady state concentration of KOH in
`
`the reactor. (EX2002, ¶121; EX1025, 242:16-25, 248:25-249:14.) The reaction
`
`rate is “based on the steady state concentration of reactants times the rate constant”
`
`(id.), thus higher steady state concentrations of KOH lead to higher reaction rates
`
`(EX1025, 247:6-15). Without KOH, no reaction occurs. (EX1025, 242:22-25.)
`
`2
`
`
`
`Therefore, a POSITA would run the Smith reaction with a high steady state
`
`concentration of KOH – thus resulting in a high concentration of KOH exiting the
`
`reactor.
`
`The argument that Smith does not disclose “any significant amount” of
`
`unreacted KOH finds no support in Smith. Dr. Lousenberg pointed to Smith’s
`
`teaching that a phase transfer catalyst could be used for base-mediated
`
`dehydrofluorination, but identified no evidence that a POSITA would interpret this
`
`teaching to suggest using a low steady state concentration of KOH. (EX2002,
`
`¶87.) Notably, Dr. Lousenberg found no support in Smith for his opinion that
`
`“[a]bout more than 90 percent [of the spent KOH in the aqueous stream exiting the
`
`reactor] would be KF.” (EX1025, 247:1-5, 306:17-24, 308:18-25, 309:23-310:4.)
`
`Unable to find support in Smith, or anywhere else in the public record (EX1025,
`
`250:21-24), Dr. Lousenberg identified reactions described in laboratory notebooks
`
`from his employment at DuPont (EX1025, 243:24-244:8, 245:4-6, 250:4-20). Dr.
`
`Lousenberg admitted that these notebooks (if they exist) are not publicly available
`
`and were not disclosed in his report (EX1025, 245:7-9, 250:19-20), and he offered
`
`no evidence that a POSITA would be aware of them.
`
`Dr. Lousenberg also testified that
`
`3
`
`
`
`of Smith,
`
`However, unlike the continuous reaction
`
`.
`
`Masayuki describes a base-mediated dehydrohalogenation process involving
`
`a phase transfer catalyst in which unreacted DHA was recycled. (EX1005, 10:20-
`
`11:16; EX1025, 269:18-20.) Thus, the only publicly-available document of record
`
`that addresses this issue shows that a continuous base-mediated
`
`dehydrohalogenation reaction – like Smith – results in sufficient levels of
`
`unreacted DHA to warrant recycling, even when the reaction is conducted in the
`
`presence of a phase transfer catalyst. Further, in his discussion of Smith,
`
`Masayuki, and Harrison, Dr. Lousenberg never discusses a KOH conversion higher
`
`than 50%, and even uses 50% KOH conversion in his calculations, leaving up to
`
`50% unconverted KOH. (EX2002, ¶¶120, 121, 123.) Accordingly, a POSITA
`
`4
`
`
`
`would understand that the reactions disclosed in Smith lead to sufficient amounts
`
`of unreacted KOH to justify its recovery and recycling.
`
`Alternatively, even if the aqueous reaction mixture of Smith primarily
`
`contained KF, as Dr. Lousenberg contends, a POSITA would still be motivated to
`
`look beyond Smith for teachings related to processing of this aqueous mixture to
`
`achieve an efficient, cost effective, and environmentally responsible continuous
`
`process. (EX1002, ¶102.) At steady state in a continuous process, there is
`
`simultaneous introduction of reactants and withdrawal of products and byproducts.
`
`A POSITA would look to analogous processes, such as Masayuki, for guidance on
`
`processing options for the aqueous stream leaving the dehydrohalogenating
`
`reactor. (Id.) A POSITA would have a reasonable expectation of success in
`
`combining the known processes of Smith and Masayuki because of the similarities
`
`between them. (Id. at ¶77.)
`
`A POSITA would appreciate that Masayuki teaches using a “relatively high
`
`concentration (25-55% by weight) of an alkali metal hydroxide” (EX1005, 6:14-
`
`18), and a POSITA would understand that higher concentrations of alkali metal
`
`hydroxide lead to faster reaction rates and greater conversion to products (EX2002,
`
`¶121). As discussed above, Masayuki also teaches recycling alkali metal
`
`hydroxide – suggesting that a higher concentration of DHA in the aqueous reaction
`
`mixture justifies such recycling. (EX1005, 6:9-10.)
`
`5
`
`
`
`2.
`
`The cited references teach, suggest, or disclose all
`elements of the claims
`
`Patent Owner does not dispute that the combination of Smith, Masayuki, and
`
`Harrison teaches every element of claims 1-20 other than “spent KOH”,
`
`“recovering spent [DHA/KOH]” and “recovering spent DHA” from a reaction
`
`stream that “further comprises dissolved organics” (Claim 11). Using Patent
`
`Owner’s BRI for “spent DHA” and “recovering spent DHA”, the term “recovering
`
`spent DHA” means substantially separating an aqueous solution containing DHA
`
`and by-product salts from any other materials in the reaction stream. (Response at
`
`6, 8-9.)
`
`As discussed above, a POSITA would reasonably understand Smith, or
`
`alternatively, the combination of Smith and Masayuki, to teach base-mediated
`
`dehydrohalogenation reactions that produce spent DHA/KOH. As explained
`
`below, a POSITA would further understand that performing the downstream
`
`processing steps of Masayuki on the aqueous reaction stream exiting the Smith
`
`reactor would result in “recovering spent DHA”.
`
`Masayuki describes an aqueous solution containing DHA and by-product
`
`salts being substantially separated from any other materials in the reaction stream,
`
`collectively, in the decanter 20 and the enricher 21. As explained below, a
`
`POSITA would understand that introducing the aqueous reaction stream of Smith
`
`into the decanter 20 and enricher 21 of Masayuki would substantially separate
`
`6
`
`
`
`organics from the spent DHA. In Masayuki, the aqueous phase containing DHA is
`
`separated into a lipid phase (phase transfer catalyst) and an aqueous phase
`
`(including unreacted DHA and by-product salt) in the decanter 20, and the lipid
`
`phase is returned to the reactor. (EX1005, 10:33-11:1.) As Dr. Lousenberg
`
`confirmed, a POSITA would expect the same thing to happen with the aqueous
`
`reaction stream of Smith in Masayuki (i.e., at least a portion of organics present
`
`(e.g., phase transfer catalyst) would separate out and be returned to the reactor).
`
`(EX1025, 282:20-283:19.) This separation in decanter 20 would be a first instance
`
`of “other materials” being separated from “spent DHA”.
`
`Masayuki also describes increasing the concentration of DHA in the aqueous
`
`stream withdrawn from the reactor in order to return an aqueous stream to the
`
`reactor having a concentration within the range of 15 to 55wt% DHA (50wt% in
`
`Example 1). (EX1005, 6:28-36.) In Masayuki, the concentration of DHA in the
`
`aqueous stream is increased by evaporating out water using the enricher, resulting
`
`in by-product salt precipitating out and being removed. (Id. at 11:1-14.) However,
`
`a POSITA would recognize that evaporating out water to increase the
`
`concentration of KOH (and precipitate KF) in the aqueous stream of Smith would
`
`not be effective because the solubilities of KOH and KF in water are too similar.
`
`(EX1025, 288:13-18.) Still, the enricher of Masayuki would be needed for the
`
`7
`
`
`
`aqueous stream of Smith to remove the additional water generated in the DHF
`
`reactor of Smith. (Id. at 179:25-180:5, 302:16-22, 303:5-11.)
`
`Dr. Lousenberg confirmed the presence of dissolved organics in the aqueous
`
`stream leaving the DHF reactor in the combination of Smith and Masayuki. (Id. at
`
`282:20-283:10.) A POSITA introducing the aqueous reaction stream of Smith into
`
`the enricher loop of Masayuki would expect any remaining organics (such as
`
`dissolved organics) in the aqueous reaction stream to be separated and evaporated
`
`via conduit 7. (Id. at 285:13-23, 292:25-293:17.)1 This evaporation is a second
`
`instance of “other materials” being separated from “spent DHA”. In Masayuki, the
`
`enricher 21 is operated at a temperature between 95°C and 150°C to avoid
`
`polymerization of chloroprene and to evaporate out water. (EX1005, 9:28-10:2.)
`
`However, polymerization of chloroprene is irrelevant when the chemistry of Smith
`
`1 Dr. Lousenberg admitted that it is reasonable to expect that 236ea and 245eb
`
`would be removed from the aqueous solution in the enricher if the enricher were
`
`operated at 100°C. Despite being uncertain about Masayuki’s teaching, Dr.
`
`Lousenberg could provide no reasons or explanation why 236ea or 245eb would
`
`not be removed in the enricher. (EX1025, 287:9-288:5.)
`
`8
`
`
`
`is used with the Masayuki processing steps.2 Thus, a POSITA would use operating
`
`temperatures relevant to the Smith chemistry.
`
`Furthermore, a POSITA would expect dissolved organics to be in the
`
`aqueous stream of Smith when it is introduced to the enricher of Masayuki
`
`(EX1025, 284:11-13) and would find it desirable to separate them out (id. at
`
`292:25-293:5). Additionally, a POSITA would understand that 236ea and 245eb
`
`could be evaporated out of the enricher if the operating temperature was above
`
`their boiling points (6°C and 20°C, respectively, at atmospheric pressure). (Id. at
`
`293:8-17.)
`
`Therefore, the combination of Smith and Masayuki teaches “spent KOH,”
`
`“recovering spent [DHA or KOH]” and “recovering spent DHA” from a reaction
`
`stream that “further comprises dissolved organics” (Claim 11).
`
`2 In its Response, Patent Owner ignores the combination of Smith chemistry with
`
`processing of Masayuki, and wrongly focuses on how chloroprene and 3,4-
`
`dichloro-butene-1 behave in the processing units of Masayuki (e.g., enricher).
`
`(Response at 15-20.)
`
`9
`
`
`
`3.
`
`A POSITA would have combined Smith with
`Masayuki and Harrison
`
`Dr. Lousenberg suggests that the combination of Smith, Masayuki, and
`
`Harrison would be inoperable, but this analysis is incomplete. A POSITA is a
`
`person of ordinary creativity, not an automaton. KSR Int'l Co. v. Teleflex Inc., 550
`
`U.S. 398, 421 (2007). As stated above, a POSITA would recognize that KOH and
`
`KF have similar solubilities in water and thus cannot be separated by precipitation.
`
`(EX1025, 288:13-18.) POSITA also would be aware of the KF conversion method
`
`taught in Harrison, where KF is reacted with Ca(OH)2 to produce KOH. (Id. at
`
`288:19-289:5.) With this knowledge, it would have been obvious to use the
`
`Harrison conversion reaction to convert KF to KOH and concentrate KOH. KSR,
`
`550 U.S. at 415-18.
`
`Dr. Lousenberg’s examples purporting to show that the combination of
`
`Smith, Masayuki, and Harrison would not work are exaggerated and are not
`
`reflective of how a POSITA would solve a design problem. A POSITA would use
`
`the teachings of Smith, Masayuki, and Harrison, along with experience, recognized
`
`design principles, and ordinary creativity, to solve the design problem at hand. As
`
`Dr. Manzer recognized, a POSITA would understand how to operate the enricher
`
`loop of Masayuki in combination with the reaction of Harrison, “to maintain a
`
`desired level of KOH fed to the reactor.” (EX2005, 233:5-8, 233:16-20, 234:4-7.)
`
`10
`
`
`
`Dr. Lousenberg admits that the chemistry of Smith (which corresponds to
`
`the equations marked formulas 1 and 2 of the ’282 patent) produces one mole of
`
`water for each mole of KF produced. (EX1025, 179:25-180:5, 181:3-6, 290:20-
`
`23.) Thus, the aqueous reaction stream withdrawn from the dehydrofluorination
`
`reactor contains additional water produced in the reactor and therefore has a lower
`
`combined concentration of KOH and KF than the aqueous KOH stream that was
`
`introduced to the reactor. Dr. Lousenberg also admitted that the Masayuki enricher
`
`could be used to remove this additional water (id. at 291:19-23) along with 236ea
`
`and 245eb from the aqueous stream (id. at 293:8-17).
`
`In his declaration, Dr. Lousenberg posits an example in which a stream of
`
`50% KOH is introduced to the reactor, and KOH utilization is 50%. (EX2002 at
`
`¶¶122-124.) Using the concentration and KOH utilization in Dr. Lousenberg’s
`
`example as a starting point, a POSITA would understand that 50% of the starting
`
`KOH reacts with 236ea and 245eb, forming KF and additional water, and leading
`
`to an aqueous reaction mixture containing KOH, KF, and additional water.
`
`(EX1025, 178:12-181:6.) The aqueous reaction mixture is withdrawn from the
`
`reactor and introduced to the decanter, where at least a portion of the organic
`
`present therein is separated via phase separation and returned to the reactor. The
`
`aqueous component of the reaction mixture exits the decanter and is introduced to
`
`the enricher 21.
`
`11
`
`
`
`As discussed above, a POSITA would know that KOH and KF cannot be
`
`separated by evaporating out enough water to precipitate KF (id. at 288:13-18)
`
`and, thus, would look to another method to achieve a 50% KOH concentration in
`
`the aqueous phase returning to the reactor in stream 13. Nonetheless, as stated
`
`above, a POSITA would use the enricher to remove additional water produced
`
`12
`
`
`
`during DHF (id. at 291:19-23) so that the aqueous stream leaving the enricher loop
`
`would include 25% KOH and an equimolar amount of KF.
`
`As Dr. Lousenberg acknowledged, a POSITA would have been aware that
`
`the reaction of KF with Ca(OH)2 to form KOH – the same reaction as taught in
`
`Harrison – could be used to convert KF to KOH. (Id. at 288:19-289:5.)
`
`Patent Owner argues that a POSITA would be dissuaded from adding lime
`
`as taught by Harrison in the combined process of Smith and Masayuki because of
`
`the concentrations used in Harrison. (Response at 30-31.) However, Harrison
`
`teaches removal of inorganic fluorides, “[s]ignificant concentrations” of which are
`
`found in industrial waste water. (EX1006, 1:12-15.) Further, in a preferred
`
`embodiment, Harrison describes the Ca(OH)2 reaction with an aqueous solution
`
`containing about 15 to 20wt% KF (id. at 2:65-3:5), which is close to the KF
`
`concentration of 25% used in Dr. Lousenberg’s example.
`
`Patent Owner also suggests that the “mud” that is formed in Harrison is
`
`problematic. (Response at 30-32.) However, Dr. Lousenberg confirmed in his
`
`deposition that a solution of KOH and KF, at a combined concentration of 50% (as
`
`used in Dr. Lousenberg’s example), entering the slurry tank of Masayuki would
`
`not precipitate, provided that the temperature of the slurry tank is at least 50°C.
`
`(EX1025, 294:7-295:1.) Further, each of Harrison Examples 1, 2, and 3 teach an
`
`aqueous solution of KOH that is removed from the mud as supernatant and that
`
`13
`
`
`
`could be returned to the process for reuse. (EX1006, 4:41-46, 4:56-58, and 5:28-
`
`29.) The “mud” is the precipitated CaF2 that is intentionally left behind and
`
`removed as filter cake. In the combined Smith, Masayuki, and Harrison process,
`
`the CaF2 precipitate would be removed by the centrifuge 25 just as precipitated
`
`NaCl is removed in Masayuki. Dr. Lousenberg recognized that a centrifuge can be
`
`used to separate a liquid from a solid in a continuous process. (EX1025, 171:20-
`
`172:5.) Thus, the expected precipitate would not dissuade a POSITA from using
`
`the teachings of Harrison.
`
`A POSITA would know that Harrison’s conversion reaction could be
`
`implemented in the Masayuki slurry tank to convert KF back to KOH. (Id. at
`
`289:6-11.) Using the known stoichiometry of the KF conversion reaction, a
`
`POSITA would understand that the KF would be converted back to 25% KOH,
`
`resulting in an aqueous stream having 50% KOH and CaF2 precipitate. (EX1001,
`
`13:46-56; EX1006, 3:6-10; EX1002, ¶74.) Further, a POSITA would have
`
`included a stirrer in the slurry tank because, as Dr. Lousenberg testified, it is
`
`typical to include a stirrer in a reactor when ingredients are added to the reactor in
`
`order to increase contact with the materials in the reactor and create more favorable
`
`reaction conditions. (EX1025, 172:6-16.) After the slurry tank, the CaF2 would be
`
`removed in the centrifuge just as the NaCl is removed in Masayuki, and the
`
`aqueous stream would be returned to the reactor in stream 13 with a KOH
`
`14
`
`
`
`concentration of 50%, thereby achieving the object of Masayuki of minimizing
`
`loss of alkali metal hydroxide. (EX1002, ¶75; EX1025, 304:17-306:3.)
`
`Thus, the combined process of Smith, Masayuki, and Harrison produces
`
`1234yf and also recovers and recycles an aqueous stream comprising 50% KOH.
`
`B.
`
`Smith is Prior Art to the ’282 Patent Because Patent Owner
`Did Not Exercise Diligence in Constructively Reducing to
`Practice the Claimed Invention
`
`1.
`
`Legal Principles
`
`Patent Owner does not allege actual reduction to practice of the claims at
`
`issue in this proceeding (claims 1-20), but rather relies on constructive reduction to
`
`practice for these claims. During the period in which reasonable diligence must be
`
`shown, there must be a continuous exercise of reasonable diligence. Griffith v.
`
`Kanamaru, 816 F.2d 624, 626 (Fed. Cir. 1987). Even a short period of
`
`unexplained inactivity may be sufficient to defeat a claim of diligence. Olympus
`
`Am. v. Perfect Surgical Techniques, Inc., Case IPR2014-00233, slip op. at 21-22
`
`(PTAB June 8, 2015) (Paper 56) (finding lack of diligence during each of 19-day,
`
`3-day, and 18-day spans of the critical period).
`
`2.
`
`Smith
`
`Smith was filed on May 15, 2009. Thus, Patent Owner must show
`
`continuous and corroborated diligence for the 17-month period from just prior to
`
`15
`
`
`
`May 15, 2009, until October 12, 2010 (the “Smith critical period”), which is
`
`illustrated below.
`
`16
`
`
`
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`
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`
`Hmun_m<mumwn_u<m
`
`:.mm:_._m
`
`1..cm
`
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`
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`
`
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`
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`
`mxHox~oHo
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`
`
`
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`nbohouoaxmm.Hmhoao
`
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`.3323~_aumBmmnzm
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`
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`
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`
`17
`
`
`
`
`
`
`
`Regarding a 98+-day first Smith period, Dr. Bektesevic gave a presentation
`
`on May 13, 2009 regarding her prior caustic dehydrofluorination experiments
`
`(EX2028) and then took no action for the 98 days after the May 15, 2009 filing
`
`date of Smith until August 21, 2009, when she submitted an invention disclosure
`
`(IR H0024680) (EX2029).
`
`Patent Owner attempts to patch this 98-day gap with testimony of Thomas
`
`Morris, but his declaration falls far short of the specificity required under Olympus.
`
`For example Mr. Morris’s declaration covers the time span of April 2009 through
`
`the fourth quarter of 2011 in less than two pages and never describes dates of work
`
`more specifically than by a particular month. (EX2036, ¶¶5-10.) Mr. Morris’s
`
`declaration also discusses Patent Owner’s commercialization of 1234yf without
`
`ever referencing the process of the ’282 patent.3 See Mycogen Plant Sci., Inc. v.
`
`Monsanto Co., 252 F.3d 1306, 1314-15 (Fed. Cir. 2001), vacated on other
`
`grounds, 535 U.S. 1109 (2002). For example, Mr. Morris refers to a whitepaper
`
`regarding 1234yf and a Forward Engineering Request Form regarding 1234yf, but
`
`does not state that either document is related to the process of the ’282 patent.
`
`3 Patent Owner investigated many processes, unrelated to the ’282 patent, to
`
`manufacture 1234yf (e.g., those described in Application No. 13/195,429
`
`(EX1014) and US 2012/0184785 (Ex. 1021)).
`
`18
`
`
`
`(EX2036, ¶¶5, 9; see also EX1023, 13:9-13.) As another example, Mr. Morris
`
`refers to a “high volume production plant in Louisiana [that] will come online in
`
`the near future” (EX2036, ¶11), but the production plant in Louisiana does not use
`
`the process claimed in the ’282 patent.4,5
`
`After Dr. Bektesevic submitted the invention disclosure on August 21, 2009,
`
`151 days passed until the PC finally discussed the invention disclosure on January
`
`11, 2010. At the January PC meeting, H0024680
`
`which were held April 5 and
`
`4 The process used at the Louisiana production plant does not include the
`
`dehydrofluorination of 236ea or 245eb and uses a different organic starting
`
`material (1230xa instead of HFP) and produces different by-products (HCl
`
`instead of CaF2). (EX1034 at 5-14 (showing “Fugitive and Unloading
`
`Operations” calculations for the beginning of the production process, where raw
`
`materials are introduced and the reaction of 1230xa + HF 1233xf + HCl takes
`
`place).)
`
`5 Dr. Lousenberg admitted that the current process used by Patent Owner “[does]
`
`not do liquid phase.” (EX1024, 70:11-22.)
`
`19
`
`
`
`13, 2010 and July 12, 2010. (EX1032; EX1033; EX1037.)6 Activity during the
`
`period was very sparse. For example, on February 10, 2010, Dr. Bektesevic
`
`provided the PC a requested detailed disclosure (EX2041, ¶10 (citing EX2030))
`
`Additionally, Mr. Bradford allegedly reviewed IR H0024680 “with an eye to
`
`filing” after the April 13 meeting; however, his declaration does not describe any
`
`specific actions he performed in reviewing IR H0024680. Rather, he indicates
`
`generally what his “customary” and “normal review” of disclosures would be
`
`without any specific reference to IR H0024680 other than eventually
`
`recommending proceeding with filing a provisional patent application. (EX2041,
`
`¶11.) Such general testimony is not sufficiently specific as to facts and dates and
`
`should be given little to no weight. Olympus, IPR2014-00233, slip op. at 20-22.
`
`6
`
`20
`
`
`
`Each of these periods (98, 151, and 183 days) is in itself sufficient to defeat
`
`Patent Owner’s claim of diligence.
`
`The time period from July 12, 2010 to October 12, 2010 can be divided into
`
`three time spans: 1) a 38-day first time span from July 12, 2010 to the date Patent
`
`Owner instructed outside counsel to prepare the patent application; 2) a 41-day
`
`second time span from the time Patent Owner instructed outside counsel to prepare
`
`the application until outside counsel sent Patent Owner the draft application; and 3)
`
`a 13-day third time span while the inventors allegedly reviewed the draft
`
`application. Patent Owner has failed to show continuous and corroborated
`
`diligence during any of these three periods.
`
`With regard to the first time span, Bruce Bradford testified that a Patent
`
`Committee (PC) meeting was held on July 12, 2010 during which the PC requested
`
`that Mr. Bradford instruct outside counsel to draft a patent application. (EX2041,
`
`¶12.) After this meeting, there was an unexplained period of inactivity of
`
`when nothing happened relative to IR H0024680 (July 12, 2010-
`
`).
`
`minutes were circulated, nothing happened relative to IR H0024680 for
`
`After the meeting
`
`21
`
`
`
`(
`
`-August 19, 2010).7 Then, on August 19, 2010 (38 days after the
`
`July 12, 2010 PC meeting), Mr. Bradford’s paralegal finally instructed outside
`
`counsel to draft a provisional application. In other words, Patent Owner waited 38
`
`days to send
`
`This 38-day period, by itself, is sufficient to defeat Patent Owner’s
`
`diligence claim. Olympus, IPR2014-00233, slip op. at 20-22.
`
`With regard to the 41-day second time span, Joseph Posillico testified that he
`
`received instructions to draft a patent application on August 19, 2010. (See
`
`EX2043, ¶4.) Patent Owner’s only evidence of activity during this 41-day span is
`
`that, between September 22 and 29, attorneys spent 18.3 hours working on the
`
`application. (Id. at ¶9.) This evidence falls far short of demonstrating continuous
`
`activity. Also,
`
`7 Mr. Bradford testified that he and his paralegal were on vacation from July 26,
`
`2010 to August 2, 2010 (EX2041, ¶14), but this does not justify Patent Owner’s
`
`inactivity between July 16, 2010 and August 19, 2010, particularly during the 17-
`
`day period from August 2-19.
`
`22
`
`
`
`This 41-day period
`
`is sufficient to defeat Patent Owner’s diligence claim.
`
`With regard to the 13-day third time span, outside counsel sent a draft patent
`
`application to the inventors on September 29th and requested review and comment
`
`by October 6th. (See EX2041, ¶16;
`
`Dr. Bektesevic replied on October
`
`1st requesting an extension of time to review the application. (See EX2041, ¶17;
`
`Then, on October 12th, Dr. Bektesevic again wrote to outside counsel,
`
`stating that the inventors agreed “it is OK to file invention as is.” (See EX2041,
`
`¶17;
`
`) Patent Owner does not identify any activities undertaken by the
`
`inventors related to reviewing the draft application. Also, Patent Owner has not
`
`identified a single edit or comment made by the inventors. Dr. Tung, the only
`
`inventor declarant, testified that he reviewed the draft application “as I was
`
`available given my other day to day responsibilities,” but he does not identify any
`
`single date on which he worked on the application. (EX2006, ¶59.) Dr. Tung’s
`
`testimony is not sufficiently specific as to facts and dates for the relevant time
`
`period to establish reasonable diligence. See Olympus, IPR2014-00233, slip op. at
`
`21 (holding that inventor testimony that “I do not recall all of my specific daily
`
`activities from 1998, I diligently worked with [my attorney during the relevant
`
`23
`
`
`
`time period] within the reasonable time limits of my busy … schedule” was not
`
`sufficiently specific to establish reasonable diligence.) This 13-day period is also
`
`sufficient to defeat Patent Owner’s diligence claim.
`
`Patent Owner has not met the burden of producing evidence showing
`
`continuous and corroborated diligence during the Smith critical period.
`
`May 6, 2016
`Date
`
`Respectfully submitted,
`
`/ Jon Beaupré/
`Jon H. Beaupré (Reg. No. 54,729)
`Allen R. Baum (Reg. No. 36,086)
`Allyn B. Elliott (Reg. No. 56,745)
`Joshua E. Ney (Reg. No. 66,652)
`Rickard K. DeMille (Reg. No. 58,471)
`524 South Main St., Suite 200
`Ann Arbor, MI 48104
`Attorneys for Petitioner
`
`24
`
`
`
`CERTIFICATE OF WORD COUNT
`
`The undersigned certifies pursuant to 37 C.F.R. § 42.24(d) that the relevant
`
`portions of Petitioner’s Reply contain 4615 words as determined by Microsoft
`
`Word.
`
`/ Jon H. Beaupré/
`Jon H. Beaupré (Reg. No. 54,729)
`Allen R. Baum (Reg. No. 36,086)
`Allyn B. Elliott (Reg. No. 56,745)
`Joshua E. Ney (Reg. No. 66,652)
`Rickard K. DeMille (Reg. No. 58,471)
`524 South Main Street, Suite 200
`Ann Arbor, Michigan 48104
`734.302.6000 734.994.6331 (fax)
`Attorneys for Petitioner
`
`25
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing PETITIONER’S REPLY
`
`TO PATENT OWNER’S RESPONSE has been served in its entirety this 6th day
`
`of May, 2016 by electronic mail on:
`
`Bruce J. Rose
`S. Benjamin Pleune
`Christopher TL Douglas
`101 South Tryon Street,
`Suite 4000
`Charlotte, NC 28280
`
`bruce.rose@alston.com
`ben.pleune@alston.com
`chris.douglas@alston.com
`
`/ Jon H. Beaupré/
`Jon H. Beaupré (Reg. No. 54,729)
`Allen R. Baum (Reg. No. 36,086)
`Allyn B. Elliott (Reg. No. 56,745)
`Joshua E. Ney (Reg. No. 66,652)
`Rickard K. DeMille (Reg. No. 58,471)
`524 South Main Street, Suite 200
`Ann Arbor, Michigan 48104
`734.302.6000 734.994.6331 (fax)
`Attorneys for Petitioner
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