UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`Arkema France
`
`Petitioner
`
`v.
`
`Honeywell International Inc.
`
`Patent Owner
`
`_____________________________
`
`Trial No.: IPR2015-00917
`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.: IPR2015-00917
`U.S. Patent No. 8,710,282
`
`_____________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`TABLE OF CONTENTS
`
`2.
`
`3.
`
`b.
`
`2.
`
`B.
`
`INTRODUCTION ...........................................................................................1
`I.
`CLAIM CONSTRUCTION ............................................................................1
`II.
`III. ARGUMENT...................................................................................................1
`A.
`Claims 21-46 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.................................................................5
`A POSITA would have combined Smith with
`Masayuki and Harrison...............................................................8
`Smith is Prior Art to the ’282 Patent...................................................14
`1.
`Patent Owner failed to show actual reduction to
`practice......................................................................................14
`a.
`Patent Owner failed to perform the claimed
`process ............................................................................14
`Patent Owner did not determine the
`invention worked for its intended purpose.....................15
`Patent Owner did not exercise continuous
`diligence in constructively reducing to practice the
`claimed invention......................................................................18
`a.
`Legal Principles ..............................................................18
`b.
`Smith...............................................................................18
`Patent Owner abandoned, suppressed, or concealed the
`invention claimed in the ’282 patent...................................................25
`
`C.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`DSL Dynamic Sci. Ltd. v. Union Switch & Signal, Inc.,
`928 F.2d 1122 (Fed. Cir. 1991)............................................................................15
`Fujikawa v. Wattanasin,
`93 F.3d 1559, 1567 (Fed. Cir. 1996)....................................................................27
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...........................................................................................8, 9
`Lutzker v. Plet,
`843 F.2d 1364 (Fed. Cir. 1988)............................................................................26
`Mahurkar v. C.R. Bard, Inc.,
`79 F.3d 1572, 1577 (Fed. Cir. 1996)....................................................................25
`Monsanto Co. v. Mycogen Plant Sci., Inc.,
`261 F.3d 1356 (Fed. Cir. 2001)............................................................................16
`Monsanto Co. v. Mycogen Plant Sci., Inc.,
`61 F.Supp. 2d 133 (D. Del. 1999) ........................................................................15
`Mycogen Plant Sci., Inc. v. Monsanto Co.,
`252 F.3d 1306 (Fed. Cir. 2001)............................................................................20
`Mycogen Plant Sci., Inc. v. Monsanto Co.,
`535 U.S. 1109 (2002) ..........................................................................................20
`Olympus Am. v. Perfect Surgical Techniques, Inc.,
`Case IPR2014-00233 (PTAB June 8, 2015) (Paper 56).............. 18, 20, 22, 23, 25
`Peeler v. Miller,
`535 F.2d 647 (CCPA 1976)........................................................................... 26, 27
`Scott v. Finney,
`34 F.3d 1058 (Fed.Cir.1994)................................................................................16
`Tyco Healthcare Grp. LP v. Ethicon Endo-Surgery, Inc.,
`514 F. Supp. 2d 351 (D. Conn. 2007) ..................................................................16
`Young v. Dworkin,
`489 F.2d 1277 (CCPA 1974)................................................................................25
`
`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 21-46 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 continuously conducted 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, 242:4-13, 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 unreacted KOH would be withdrawn from the Smith reactor.
`
`Further, a POSITA would understand that an appreciable amount of KOH
`
`would be removed from the continuous reactor in Smith. The DHF reaction rate
`
`and the organic starting material conversion depend on the steady state
`
`concentration of KOH in the reactor. (EX2002, ¶128; 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.) Therefore, a POSITA would run the Smith reaction with a
`
`2
`
`
`
`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, but identified no evidence that
`
`a POSITA would interpret this teaching to suggest using a low steady state
`
`concentration of KOH. (EX2002, ¶120.) 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,
`
`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 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 base-mediated dehydrohalogenation 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
`
`addressing this issue shows that a continuous base-mediated dehydrohalogenation
`
`reaction – like Smith – results in sufficient levels of unreacted DHA to warrant
`
`recycling, even when a phase transfer catalyst is used. Further, in his discussion of
`
`Smith, Masayuki, and Harrison, Dr. Lousenberg never discusses a KOH
`
`conversion higher than 50%, and even uses this conversion in his calculations,
`
`leaving up to 50% unconverted KOH. (EX2002, ¶¶127, 128, 129.) Accordingly, a
`
`POSITA would understand that the Smith reaction leads to sufficient amounts of
`
`unreacted KOH to justify its recovery and recycle.
`
`4
`
`
`
`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. (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.)
`
`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, ¶128). Masayuki also teaches
`
`recycling alkali metal hydroxide – thus suggesting that a higher concentration of
`
`DHA in the aqueous reaction mixture justifies recycling. (EX1005, 6:9-10.)
`
`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 21-46 other than “spent KOH”,
`
`“recovering spent [DHA/KOH]” and “recovering spent DHA” from a reaction
`
`5
`
`
`
`stream that “further comprises dissolved organics” (Claims 28 and 39). Using
`
`Patent Owner’s BRI, 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 6-10.)
`
`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 processing the aqueous reaction
`
`stream of Smith in the operating units of Masayuki 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 and the evaporator. As explained below, a POSITA
`
`would understand that introducing the aqueous reaction stream of Smith into the
`
`decanter and evaporator of Masayuki would substantially separate 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, 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
`
`6
`
`
`
`Masayuki. (EX1025, 282:20-283:19.) The separation in decanter 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 from the reactor in order to return the stream to the reactor having a
`
`concentration within the range of 15 to 55wt% DHA (50wt% in Example 1).
`
`(EX1005, 6:28-36.) The concentration of DHA 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 the KOH and KF
`
`in water are too similar. (EX1025, 288:13-18.) Still, the enricher of Masayuki
`
`would be needed in the combined process to remove the additional water generated
`
`in the DHF reaction 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 would expect any organics present in the aqueous
`
`reaction stream of Smith to be separated and removed via evaporation from the
`
`enricher and discharged via conduit 7. (Id. at 285:13-23, 292:25-293:17.) This
`
`evaporation is a second instance of “other materials” being separated from “spent
`
`DHA”. In Masayuki, the enricher is operated at a temperature between 95°C and
`
`7
`
`
`
`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 is combined with Masayuki. 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).
`
`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.
`
`8
`
`
`
`(EX1025, 288:13-18.) POSITA also would be aware of the KF conversion method
`
`taught in Harrison. (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 415-418.
`
`Dr. Lousenberg’s examples purporting to show that the combination of
`
`Smith, Masayuki, and Harrison would not work are exaggerated and not reflective
`
`of how a POSITA would solve a design problem. 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.)
`
`Dr. Lousenberg admits that the chemistry of Smith (which corresponds to
`
`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 reactor contains additional water 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
`
`9
`
`
`
`¶¶128-130.) 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 is
`
`separated and returned to the reactor. The aqueous component of the reaction
`
`mixture is introduced to the enricher 21.
`
`10
`
`
`
`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 stream
`
`returning to the reactor. Nonetheless, a POSITA would use the enricher to remove
`
`additional water produced during DHF (id. at 291:19-23) to result in an aqueous
`
`11
`
`
`
`stream leaving the enricher loop having 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 – 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, 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” formed in Harrison is
`
`problematic. (Response at 29-32.) However, Dr. Lousenberg confirmed 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
`
`12
`
`
`
`could be returned to the process for reuse. (EX1006, 4:41-46, 4:56-58, 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, CaF2
`
`precipitate would be removed by the centrifuge just as precipitated NaCl is
`
`removed in Masayuki. Dr. Lousenberg recognizes 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 Masayuki’s slurry tank to convert KF to KOH. (Id. at 289:6-11.)
`
`Using the known stoichiometry of the KF conversion reaction, a POSITA would
`
`understand that KF would be converted 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 when
`
`ingredients are added to a reactor in order to create more favorable reaction
`
`conditions. (EX1025, 172:6-16.) After the slurry tank, CaF2 would be removed in
`
`the centrifuge just as NaCl is removed in Masayuki, and the aqueous stream would
`
`be returned to the reactor with a KOH concentration of 50%. (EX1002, ¶75;
`
`EX1025, 304:17-306:3.)
`
`13
`
`
`
`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
`
`1.
`
`Patent Owner failed to show actual reduction to
`practice
`
`a.
`
`Patent Owner failed to perform the claimed process
`
`Each claim of the ’282 patent requires “recovering” spent DHA/KOH.
`
`Under Patent Owner’s construction of “recovering” and “product reaction
`
`stream/second product stream/reaction stream,” Patent Owner must demonstrate
`
`performance of a process that “substantially separate[ed] spent [DHA/KOH] from
`
`any other materials in a continuous flow of a fluid consisting of at least spent
`
`[DHA/KOH] resulting from a dehydrofluorination reaction.” (Response at 9-11;
`
`EX2002, ¶¶104-106; EX2004 at 101:2-19.) Patent Owner has not shown this step.
`
`Rather, Patent Owner has shown
`
`14
`
`
`
`Thus,
`
`Patent Owner failed to
`
`demonstrate that spent KOH could be substantially separated from any other
`
`materials in a continuous flow of fluid consisting of spent KOH.1 For this
`
`independent reason, Patent Owner fails to show actual reduction to practice.
`
`b.
`
`Patent Owner did not determine the invention worked
`for its intended purpose
`
`“[P]roof of actual reduction to practice requires a showing that ‘the
`
`embodiment relied upon as evidence of priority actually worked for its intended
`
`purpose’ . . . This is so even if the ‘intended purpose’ is not explicitly set forth in
`
`the [claims].” DSL Dynamic Sci. Ltd. v. Union Switch & Signal, Inc., 928 F.2d
`
`1122, 1125 (Fed. Cir. 1991) ; see also Monsanto Co. v. Mycogen Plant Sci., Inc.,
`
`61 F.Supp. 2d 133, 182 (D. Del. 1999) (“To determine an invention’s intended
`
`purpose, the court need not focus solely on the patent’s claims.”), aff’d on other
`
`1 Lousenberg testified that modifying a laboratory batch operation into a laboratory
`
`continuous operation is “not just one series of steps linearly, there’s a lot of
`
`reiterations in a lot of cases” and “[t]here’s a lot of variables involved” (EX1025,
`
`213:10-217:6.)
`
`15
`
`
`
`grounds, 261 F.3d 1356 (Fed. Cir. 2001); Tyco Healthcare Grp. LP v. Ethicon
`
`Endo-Surgery, Inc., 514 F. Supp. 2d 351, 360 (D. Conn. 2007) (using patent
`
`abstracts to identify the intended purpose of the invention despite the claims not
`
`reciting the intended purpose). An inventor must show the experiments
`
`demonstrate that the invention worked as intended in its contemplated use. Scott v.
`
`Finney, 34 F.3d 1058, 1062 (Fed.Cir.1994).
`
`The ’282 patent is directed to a “more efficient process … for removal of
`
`spent reagent and recycle of unused or regenerated reagent and/or unused organics
`
`during a continuous process.” (EX1001, 2:41-43.) The patent further states “the
`
`instant invention relates … to a method [of] increasing the cost efficiency for
`
`dehydrohalogenation production of fluorinated olefin by recovering and recycling
`
`spent [dehydrohalogenation agent/reagent].” (Id. at Abstract, 2:49-52, 6:10-13.)
`
`Throughout the specification, all references to improving efficiency relate to
`
`“recycling [the] spent [and/or regenerated] dehydrohalogenating agent” (id. at
`
`2:65-67, 6:18-21, and 13:56-58) or “recycling the dehydrohalogenating agent and
`
`by-product salts…” (id. at 13:13-15). Thus, to establish actual reduction to
`
`practice, Patent Owner must have conducted tests showing recovery of spent DHA
`
`and recycle of unused or regenerated DHA. Scott, 34 F.3d at 1061.
`
`Patent Owner failed to show that the invention would work for the
`
`“recovery” aspect of the intended purpose for the same reasons discussed above,
`
`16
`
`
`
`namely, that it did not demonstrate that spent KOH could be substantially
`
`separated from any other materials in a continuous flow of fluid consisting of spent
`
`DHA/KOH.
`
`Patent Owner further failed to show that the invention worked for the
`
`“recycling” aspect of the intended purpose because Patent Owner did not
`
`demonstrate that it recycled unused or regenerated DHA. Simply stated, Patent
`
`Owner’s evidence does not include any experiments demonstrating recycle of
`
`DHA. For example, Dr. Lousenberg does not identify a single experiment
`
`demonstrating that any unused or regenerated DHA could be recycled. Similarly,
`
`Dr.Tung’s declaration fails to identify any testing showing recycle of unused or
`
`regenerated DHA. (EX2006.)2
`
`2
`
`17
`
`
`
`For this independent reason, Patent Owner has failed to meet its
`
`burden to show actual reduction to practice of the invention.
`
`2.
`
`Patent Owner did not exercise continuous diligence in
`constructively reducing to practice the claimed
`invention.
`
`a.
`
`Legal Principles
`
`Even a short period of unexplained inactivity during the period in which
`
`diligence must be shown may 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).
`
`b.
`
`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
`
`May 15, 2009, until October 12, 2010 (the “Smith critical period”), which is
`
`illustrated below.
`
`18
`
`
`
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`
`:.mm:_._m
`
`1..cm
`
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`
`
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`
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`
`
`
`
`nbohouoaxmm.Hmhoao
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`
`
`
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`
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`
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`
`19
`
`
`
`
`
`
`
`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 Smith filing date 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 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
`
`and a Forward Engineering Request Form, but does not state that either document
`
`relates to the ’282 patent. (EX2036, ¶¶5, 9; see also EX1023, 13:9-13.) As
`
`3 Patent Owner investigated many processes, unrelated to the ’282 patent, to
`
`manufacture 1234yf (see, e.g., Application No. 13/195,429 (EX1014) and US
`
`2012/0184785 (EX1021)).
`
`20
`
`
`
`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
`
`Louisiana plant does not use the process claimed in the ’282 patent.4,5
`
`After Dr. Bektesevic submitted IR H0024680 on August 21, 2009, 151 days
`
`passed until the PC finally discussed the invention disclosure on January 11, 2010.
`
`At the January meeting, H0024680
`
`on April 5th/13th and July 12, 2010 (EX1032; EX1033; EX1037)6.
`
`Activity during the
`
`period was very sparse. For example, on February 10,
`
`4 The process used at the Louisiana plant does not include dehydrofluorination of
`
`236ea or 245eb, and uses a different organic starting material (1230xa instead of
`
`HFP). (EX1034 at 5-14.)
`
`5 Dr. Lousenberg admitted that the current process used by Patent Owner “[does]
`
`not do liquid phase.” (EX1024, 70:11-19.)
`
`6
`
`21
`
`
`
`2010, Dr. Bektesevic provided the PC a requested detailed disclosure (EX2030),
`
`Additionally, Mr. Bradford allegedly reviewed IR H0024680 “with an eye to
`
`filing” after the April 13 meeting, but he fails to describe any specific actions he
`
`took. 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 filing. (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.
`
`Each of these periods (98, 151, and 183 days) is independently sufficient to
`
`defeat Patent Owner’s claim of diligence.
`
`The 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 a patent application; 2) a 41-day
`
`second time span during which outside counsel prepared the application; and 3) a
`
`13-day third time span while the inventors allegedly reviewed the draft application.
`
`Continuous and corroborated diligence has not been shown during any of these
`
`three periods.
`
`22
`
`
`
`With regard to the first time span, Mr. Bradford testified that during a Patent
`
`Committee (PC) meeting on July 12, 2010 the PC requested that Mr. Bradford
`
`instruct outside counsel to draft a patent application. (EX2041, ¶12.) After this
`
`meeting, nothing happened relative to IR H0024680 for
`
`(July 12-
`
`.
`
`After the meeting
`
`minutes were circulated, nothing happened relative to IR H0024680 for
`
`days
`
`(
`
`-August 19).7 Then, on August 19, 2010 (38 days after the July 12th 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
`
`day period is sufficient to defeat Patent Owner’s diligence claim. Olympus,
`
`IPR2014-00233, slip op. at 20-22.
`
`This 38-
`
`7 Bradford testified that he and his paralegal were on vacation from July 26 to
`
`August 2, but this does not justify Patent Owner’s inactivity between July 16 and
`
`August 19, particularly during the 17-day period from August 2-19.
`
`23
`
`
`
`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. (EX 2043, ¶
`
`4.) Patent Owner’s only evidence 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 continuous.
`
`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 comments by October
`
`6th. (EX2041, ¶16;
`
`) Dr. Bektesevic replied on October 1st, requesting
`
`additional time to review the application. (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.” (
`
`) Patent Owner has
`
`not identified any activities by the inventors to review the draft application or a
`
`single edit or comment thereto. 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.
`
`24
`
`
`
`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 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 shown continuous and corroborated diligence during
`
`the Smith critical period.
`
`C.
`
`Patent Owner abandoned, suppressed, or concealed the
`invention claimed in the ’282 patent
`
`“One who delays fi
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