UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`HYDRITE CHEMICAL CO.,
`Petitioner,
`
`v.
`
`SOLENIS TECHNOLOGIES, L.P.,
`Patent Owner
`
`___________
`
`Case IPR2015-01592
`Patent No. 8,962,059
`___________
`
`
`
`PATENT OWNER’S RESPONSE UNDER 37 C.F.R. § 42.120
`
`Protective Order Material
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`Introduction ...................................................................................................... 1
`
`The 059 Patent ................................................................................................. 2
`
`
`
`
`I.
`
`II.
`
`III. Hydrite has Failed to Establish Unpatentablilty of the Challenged Claims
`by a Preponderance of the Evidence................................................................ 4
`
`A.
`
`The Evidence of Record Refutes Hydrite’s Arguments Based on
`ICI, and Undercuts Each of Hydrite’s Proposed Grounds for
`Rejection ................................................................................................ 5
`
`B. Hydrite’s Declarant has, at Best, Superficial Experience in Corn-
`to-Ethanol Processing and His Allegations Regarding What
`Would Have Been Obviousness to Those Working in the Field
`Should Not be Credited ....................................................................... 14
`
`IV. Hydrite has Failed to Establish Unpatentability of the Challenged Claims
`Based on Winsness (Grounds 1-6) ................................................................ 17
`
`A. Winsness Provides No More Than a Passing Reference to
`Emulsions, and Does Not Disclose Any Technique for Handling
`Them .................................................................................................... 17
`
`B. Winsness’s Disclosure of an Efficient and Effective Oil Recovery
`Method Would Have Dissuaded Those of Ordinary Skill from
`Modifying It in the Manner That Hydrite Proposes ............................ 19
`
`C. Dr. Rockstraw’s Criticism of Winsness Undercuts Hydrite’s
`Reliance Upon That Reference’s Disclosure. ..................................... 22
`
`D. Hydrite’s Selection of Polysorbate 80 From Alther is
`Impermissibly Based on Hindsight and is Inconsistent With
`Alther’s Own Teachings ...................................................................... 22
`
`E.
`
`F.
`
`Hydrite has Failed to Establish the Relevancy of Martin to the
`Challenged Claims .............................................................................. 26
`
`Ground 1 as Applied to Claims 4 and 5 Should be Denied for
`Additional Reasons.............................................................................. 29
`
`V. Hydrite has Failed to Establish Unpatentability of the Challenged Claims
`Based on Bonanno and ICI (Grounds 7-9) .................................................... 32
`
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`A. Hydrite’s Proposed Combination of Bonanno and ICI is
`Inconsistent with Bonanno’s Teachings .............................................. 32
`
`B.
`
`Bonanno Would Not Have Otherwise Led a Person of Ordinary
`Skill to Any Claimed Invention .......................................................... 35
`
`1.
`
`2.
`
`The Bonanno Process Sequence is Significantly Different Than
`the Claimed Process Sequence .................................................. 35
`
`Bonanno Would Not Have Led a Person of Ordinary Skill to
`the Claimed Compounds ........................................................... 36
`
`C.
`
`The Remaining References Do Not Cure the Deficiencies of
`Bonanno and ICI ................................................................................. 38
`
`VI. Objective Evidence Demonstrates the Patentability of the Challenged
`Claims ............................................................................................................ 39
`
`VII. Conclusion ..................................................................................................... 46
`
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`
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`TABLE OF AUTHORITIES
`
`IPR2015-01592
`Patent Owner’s Response
`
` Page(s)
`
`Cases
`Brown & Williamson Tobacco Corp. v. Philip Morris Inc.,
`229 F.3d 1120 (Fed. Cir. 2000) .......................................................................... 44
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule
`Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) .......................................................................... 42
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................ 37
`
`Hybritech Inc. v. Monoclonal Antibodies, Inc.,
`802 F.2d 1367 (Fed. Cir. 1986) .......................................................................... 44
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 24
`
`Leo Pharmaceutical Products, Ltd. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) .................................................................... 13, 40
`
`McGinley v. Franklin Sports, Inc.,
`262 F.3d 1339 (Fed. Cir. 2001) .......................................................................... 28
`
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987) .......................................................................... 37
`
`Plantronics, Inc. v. Aliph, Inc.,
`724 F.3d 1343 (Fed. Cir. 2013) .................................................................... 15, 41
`
`Rolls-Royce, PLC v. United Techs. Corp.,
`603 F.3d 1325 (Fed. Cir. 2010) .................................................................... 13, 40
`
`Statutes
`
`35 U.S.C. § 316(e) ............................................................................................... 6, 21
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`Other Authorities
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`IPR2015-01592
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`77 Fed. Reg. 48,612, 48,620 (Aug. 14, 2012) ......................................................... 16
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`I.
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`Introduction
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`The Board should maintain the patentability of claims 1-16 of U.S. Patent
`
`No. 8,962,059 (“the 059 Patent”) because Petitioner, Hydrite Chemical Co.
`
`(“Hydrite”), has failed to establish obviousness by a preponderance of the
`
`evidence.
`
`A fatal flaw in Hydrite’s showing is that the central premise underlying its
`
`Petition lacks basis and, in fact, has been acknowledged by Hydrite’s own
`
`declarant to lack basis. Specifically, Hydrite contended in its Petition that a
`
`person of ordinary skill would have predictably selected the claimed chemical
`
`compounds based solely on their hydrophilic-lipophilic balance (HLB) from the
`
`hundreds if not thousands of chemical compounds available (Pet. at 12-13; 51-52).
`
`But Hydrite’s declarant, Dr. Rockstraw, admitted during his deposition that
`
`someone who relied solely on HLB to predict which compounds will be effective
`
`for removing oil from a corn-to-ethanol process stream “would be making an
`
`error” (Ex. 2005 at 241:24 – 242:8). Dr. Rockstraw’s admission that HLB is not
`
`an accurate predictor is fatal to Hydrite’s petition because every single
`
`combination presented by Hydrite relies on this erroneous contention. Accordinly,
`
`the patentability of the 059 Patent claims should be confirmed.
`
`Hydrite’s Petition presents a textbook example of a hindsight-driven and
`
`legally improper mapping of the 059 Patent claims onto the prior art. Hydrite’s
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`improper reliance upon hindsight appears to derive from the fact that Dr.
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`Rockstraw has no real-world experience with corn-to-ethanol processing and found
`
`it necessary to engage in an after-the-fact reconstruction of the claimed methods.
`
`Both he and Hydrite appeared to cherry-pick from the cited references only those
`
`disclosures that support their allegations, and have done so to the exclusion of
`
`other disclosures that would have led those of ordinary skill away from the claimed
`
`inventions. An objective reading of the cited references confirms the patentability
`
`of the challenged claims. In addition, the commercial success and accolades that
`
`the claimed inventions have enjoyed provides additional compelling evidence
`
`supporting patentability.
`
`This response is supported by the Declaration of Scott D. Kohl, Ph.D. (Ex.
`
`2003), and the Declaration of Jennifer Bailey (Ex. 2004).
`
`II. The 059 Patent
`The 059 Patent is directed to methods of extracting oil from a byproduct
`
`stream of an ethanol production process that is based on corn or some other bio-
`
`based starting material. As explained in the patent, dry milling methods for
`
`producing ethanol through fermentation create a byproduct stream commonly
`
`referred to as “whole stillage” (Ex. 1001 at col. 4:5-8). The whole stillage
`
`byproduct stream may be separated into a high solids byproduct stream (“distillers
`
`wet grains”) and a liquid stillage byproduct stream (“thin stillage”) that may
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`contain valuable oil (id. at 4:9-17). The thin stillage may then be further
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`concentrated, e.g. via evaporation, to create a “syrup” (id. at 4:38-40). The syrup
`
`is typically re-combined with the distillers wet grains and then dried to produce
`
`animal feed (id. at 4:17-25).
`
`As stated in the 059 Patent, it is common for byproduct streams to include
`
`oil-sequestering components that emulsify and/or stabilize the oil within the liquid
`
`solution (id. at 5:9-13). For example, a syrup byproduct stream may include
`
`soluble starches, proteins, gums, and waxes that interact with the oil (primarily
`
`triglycerides) to prevent its separation from solution (id. at 5:13-16). The overall
`
`oil profile may include a relatively diverse range of triglycerides having a diverse
`
`range of fatty acids bound thereon (id. at 5:21-23). The result is a potentially broad
`
`distribution of lipophilicity for oil from a given source (id. at 5:23-25).
`
`Furthermore, the oil profile varies with the source’s species and breed, and varies
`
`even with environmental and seasonal factors under which the source grew (id. at
`
`5:25-28).
`
`As the 059 Patent explains, the oil-sequestering components interact with the
`
`triglycerides to prevent the triglycerides from interacting with each other in a
`
`manner which would produce a distinct oil phase (id. at 5:28-31). Instead, the oil
`
`tends to remain dispersed in the aqueous phase, stabilized by the starches, proteins,
`
`gums, and waxes (id. at 5:31-33).
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`To address this problem, the 059 Patent discloses the use of an oil
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`
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`concentrator to enhance oil recovery by interfering with the interaction between the
`
`naturally occurring oil-sequestering components and the triglycerides so that the
`
`triglycerides are capable of interacting with each other to form a distinct oil phase
`
`that facilitates recovery of the oil (id. at 5:34-39).
`
`III. Hydrite has Failed to Establish Unpatentablilty of the Challenged
`Claims by a Preponderance of the Evidence
`In an inter partes review, the petitioner bears the burden of proving
`
`unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e). Hydrite
`
`has fallen far short of satisfying this burden. As confirmed by Dr. Scott Kohl, a
`
`veteran of the corn-to-ethanol industry, the methods that are claimed in the 059
`
`Patent would not have been obvious to those of ordinary skill in the art in view of
`
`the prior publications that Hydrite has identified (Ex. 2003 Kohl Dec. at ¶3).
`
`Indeed, the modifications to those publications that Hydrite has proposed are ones
`
`that a person of ordinary skill in the art either would not have had a reason to make
`
`or that would have led such a person to a method that was different than those
`
`claimed (id.).
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`A. The Evidence of Record Refutes Hydrite’s Arguments Based on
`ICI, and Undercuts Each of Hydrite’s Proposed Grounds for
`Rejection
`
`There is no evidence supporting Hydrite’s contention that those of ordinary
`
`skill in the art would have relied upon hydrophilic-lipophilic balance (HLB) – as
`
`allegedly disclosed by the ICI publication – to predict the effectiveness of a
`
`surfactant to extract oil from a corn-to-ethanol process stream. In fact, the
`
`evidence of record is directly to the contrary. First, Table 1 of the 059 Patent
`
`demonstrates that a higher HLB value is not a predictor of effectiveness as Hydrite
`
`suggests. Second, Hydrite’s declarant, Dr. Rockstraw, admitted that using HLB
`
`alone to predict effectiveness would not work. Hydrite’s contention that HLB can
`
`be used to select a particular compound out of the hundreds upon hundreds of
`
`compounds available is not correct and appears to be motivated by a hindsight
`
`effort to select the particular compounds claimed in the 059 Patent.
`
`Because Hydrite’s HLB argument underlies each of the proposed grounds
`
`for rejection, the lack of supporting evidence is fatal and warrants summary
`
`disposition.
`
`Throughout the Petition, Hydrite relies on ICI (Ex. 1008) for the proposition
`
`that one of ordinary skill in the art “would have recognized that polyoxyethylene
`
`sorbitan fatty acid esters sold under the tradename TWEEN would increase the
`
`water/corn oil separation of a material including water and corn oil such as the
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`corn stillage or resulting syrup processed in Winsness” (Pet. at 12, citing Ex. 1005,
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`¶¶ 68-72, 84-87; see also Pet. at 51 for the grounds based on Bonanno). With
`
`respect to specifically how to achieve this water/oil separation, Hydrite relies
`
`exclusively on ICI’s Figure 4. Hydrite’s obviousness theory is based on “looking
`
`at Figure 4 of ICI and comparing the recommended HLB for corn oil (10) and the
`
`HLB of TWEEN 801 (15.0).” (id. at 12-13; 52). According to Hydrite, “it would
`
`be apparent that TWEEN 80 would significantly decrease the emulsion stability of
`
`corn oil and water” (id.).
`
`But a person of ordinary skill who read the ICI publication would not have
`
`selected TWEEN 80. Although Hydrite contends that someone seeking to de-
`
`stabilize a corn oil-in-water emulsion would have been motivated by ICI to use a
`
`surfactant (such as TWEEN 80) having a higher HLB value than the HLB value
`
`that imparts optimal stability for such an emulsion (Pet. at 12; 51), Hydrite’s
`
`contention is refuted by the evidence of record. Indeed, the evidence of record
`
`indicates that a person of ordinary skill (who was not already aware of the claimed
`
`inventions) would have had no reason to focus on such higher HLB values. Even
`
`Hydrite separately states in its Petition that ICI’s Figure 4 teaches those of ordinary
`
`skill that emulsion stability decreases significantly “when the HLB number varies
`
`(up or down) from the recommended HLB number” (Pet. at 12, 51, emphasis
`
`1 TWEEN 80 is said to be a tradename for Polysorbate 80.
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`added). Hydrite tellingly fails to reconcile this admission with its assertion that a
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`person of ordinary skill would have focused only on surfactants that have an HLB
`
`value that is higher than the recommended HLB for a corn oil emulsion (i.e., 10).
`
`Hydrite also fails to address the fact that even if a person of ordinary skill
`
`had decided to investigate surfactants having such higher HLB values, they would
`
`have found that such surfactants provided, at best, mixed results that often are no
`
`better than the results provided by surfactants having HLB values that are lower
`
`than the recommended HLB value. For example, Table 1 of the 059 Patent shows
`
`the results of tests comparing a number of commercially available surfactants to a
`
`benchmark technique (i.e., mechanical separation) in relation to their ability to
`
`concentrate oil from liquid stillage in a dry mill corn-to-ethanol production facility
`
`(Ex. 1001 at 8:44 to 10:31). As can be seen in the table, a number of these
`
`surfactants have HLB values greater than 10, while others have HLB values less
`
`than 10:
`
`Trade Name General Name
`
`Lumisorb ®
`PSML-80†
`Lumisorb ®
`PSMO- 20†
`Lumisorb ®
`SML-K†
`Lumisorb ®
`PSTO -20†
`Span ® 80‡
`Surfonic ®
`N-400
`
`Polyoxyethylene (80)
`sorbitan monolaurate
`Polyoxyethylene (20)
`sorbitan monooleate
`Sorbitan monolaurate
`
`Polyoxyethylene (20)
`sorbitan trioleate
`Sorbitan monooleate
`Polyethoxylate (40) of
`Nonylphenol
`
`Oil
`
`0.5
`
`7
`
`0
`
`5
`
`0
`0
`
`Aq.
`
`39.5
`
`33
`
`40
`
`35
`
`40
`40
`
`%
`Oil
`1
`
`17.5
`
`0
`
`12.5
`
`15
`0
`
`HLB
`
`CAS
`Number
`9005-
`64-5
`9005-64-5 15
`
`19.4
`
`1338-39-2 8.6
`
`9005-70-3 11
`
`1338-43-8 4.6
`9016-45-9 17.8
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`9016-45-9 17.1
`
`9016-45-9 15
`
`9016-45-9 13.1
`
`9016-45-9 10.9
`
`9016-
`45-9
`61791-
`12-6
`N/A
`
`8.9
`
`10.7
`
`UNK
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`0
`
`6
`
`40
`
`34
`
`6.5
`
`33.5
`
`0
`
`0
`
`2
`
`0
`
`4
`3
`4
`
`40
`
`40
`
`38
`
`40
`
`36
`37
`36
`
`0
`
`15
`
`16
`
`0
`
`0
`
`5
`
`0
`
`10
`7.5
`10
`
`
`Surfonic ®
`N-300
`Surfonic ®
`N-150
`Surfonic ®
`N-95
`Surfonic ®
`N-60
`Surfonic ®
`N-40
`Surfonic ®
`CO-25
`Palmolive ®
`
`Polyethoxylate (30) of
`Nonylphenol
`Polyethoxylate (15) of
`Nonylphenol
`Polyethoxylate (9.5) of
`Nonylphenol
`Polyethoxylate (6) of
`Nonylphenol
`Polyethoxylate (4) of
`Nonylphenol
`Polyethoxylate (25) of
`castor oil
`Ammonium C12-15
`Pareth Sulfate and
`Lauramidopropylamine
`Oxide
`N/A
`N/A
`N/A
`None
`N/A
`N/A
`N/A
`None
`N/A
`N/A
`N/A
`None
`†Lumisorb is a registered trademark of Vantage Specialties, Inc.
`‡Span ® is a registered trademark of Croda International PLC.
`4Surfonic ® is a registered trademark of Huntsman Corporation.
`5Palmolive ® is a registered trademark of Colgate-Palmolive.
`
`
`Based on Hydrite’s theory of obviousness, the high-HLB surfactants (i.e.,
`
`those with HLB greater than 10) would have been expected to break the emulsion
`
`and increase oil recovery (Pet. at 13, 52). But the test data show otherwise (Ex.
`
`2003 at ¶56-57). Indeed, a number of the surfactants with the highest HLB values
`
`actually decreased oil recovery compared to the benchmark, including surfactants
`
`with HLB of 19.4 (Lumisorb PSML-80; polyoxyethylene (80) sorbitan
`
`monolaurate), 17.8 (Surfonic N-400; polyethoxylate (40) of nonyphenol), and 17.1
`
`(Surfonic N-300; polyethoxylate (30) of nonylphenol) (Ex. 1001 at Table 1; Ex.
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`2003 at ¶57). Similarly, a number of surfactants with HLB values below 10 (such
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`as Lumisorb SML-K; sorbitan monolaurate) provided oil recovery values that
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`matched those provided by surfactants with HLB values above 10 (such as
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`Surfonic N-400; polyethoxylate (40) of nonylphenol) (id.). Accordingly, Hydrite’s
`
`suggestion that the Board rely on HLB as a proxy for emulsion-breaking ability is
`
`contradicted by the intrinsic evidence of record – evidence that Hydrite tellingly
`
`failed to address in its Petition (Ex. 2003 at ¶¶ 56-58).
`
`Dr. Rockstraw’s testimony during his deposition confirmed that those of
`
`ordinary skill would not have relied upon HLB in the manner that Hydrite has
`
`proposed:
`
`Q This table [Table 1 in the 059 Patent] shows surfactants
`having various HLB values, correct?
`A It does.
`Q Some of them being higher than 10, some of them being
`lower than 10, correct?
`A That is correct.
`Q Do all the ones with HLB greater than 10 improve the yield
`of corn oil?
`A They do not.
`Q Do all the surfactants having an HLB lower than 10 improve
`the yield of corn oil?
`A There is not that trend either.
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`Q In fact, some of the surfactants having HLB greater than 10
`are quite good in terms of improving yield; whereas, others
`have nearly a negligible effect, right?
`A That is true. If we look strictly at the HLB of the molecule,
`there's not a consistent trend that HLB is the only factor in
`determining its effectiveness.
`(Ex. 2005 at 238:9 – 239:4, emphasis added).
`* * *
`Q Well, let me phrase it differently. One cannot predict, based
`solely on HLB, which surfactants will be effective for removing
`oil from a corn-to-ethanol process stream, correct?
`. . . .
`THE WITNESS: One relying solely on HLB would be making
`an error in the process for selecting their surfactant.
`(id. at 241:24 – 242:8, emphasis added).
`
`Moreover, even if a person of ordinary skill for some reason had adopted
`
`Hydrite’s erroneous approach (by relying solely on HLB to break emulsions), they
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`would have had no reasonable expectation to find a suitable surfactant. The
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`number of surfactants having an HLB that is either lower than or higher than 10 is
`
`enormous (Ex. 2003 at ¶ 55). As ICI states, one would have had their choice of
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`“hundreds upon hundreds of emulsifying agents – well over a hundred just from
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`ICI alone” (id.; Ex. 1008 at 3, first column). ICI also refers to McCutcheon’s
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`“Detergents and Emulsifiers,” which lists hundreds of manufacturers and
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`thousands of surfactants, the majority of which have an HLB lower or higher than
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`10 (id.; Ex. 2006 at 243-259). Neither Hydrite’s Petition nor Dr. Rockstraw’s
`
`Declaration explains how to narrow down this enormous pool of surfactants (Ex.
`
`2003 at ¶ 55). Rolls-Royce, PLC v. United Techs. Corp., 603 F.3d 1325, 1339
`
`(Fed. Cir. 2010) (claimed invention was not obvious to try because the prior art
`
`disclosed a “broad selection of choices for further investigation”); Leo
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`Pharmaceutical Products, Ltd. v. Rea, 726 F.3d 1346, 1356 (Fed. Cir. 2013)
`
`(claimed invention not obvious to try because the prior art disclosed a “breadth
`
`of…choices and…numerous combinations”). Neither the Petition nor the
`
`Declaration, for example, explains why a person of ordinary skill would have
`
`focused on surfactants having HLB greater than 10, much less why they would
`
`have selected the claimed compounds:
`
`Q It doesn't say anything about going for a surfactant having
`an HLB as large as possible, does it?
`A It does not in my declaration, no.
`Q Can you find me anywhere in your declaration where you
`talk about looking at surfactant having HLB greater than 10 and
`as large as possible?
`A I don't know that it's in my declaration. I'm seeing that I
`spoke about moving away from the stable HLB value for that
`particular system, but I don't see where I've given justification
`in going from one -- in one direction or the other.
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`(Ex. 2005 at 225:18 – 226:7, emphasis added).
`Indeed, Dr. Rockstraw agreed that Figure 4 of ICI (upon which Hydrite
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`relies for its alleged teaching on how to break an emulsion) would not have
`
`directed someone to use surfactants with higher HLB values:
`
`Q And ICI, Figure 4 and otherwise, doesn't tell you to go
`higher versus going lower, right?
`A Figure 4 does not do it. . . .
`(id. at 231:17-19, emphasis added)
`* * *
`Q And this [Figure 4 of ICI] shows that the HLBs on either
`side of the optimum are equally stable, right?
`A This is not a plot of experimental data. This is a sketch of
`general trends that could be expected.
`Q But what they're saying is that the expectation is that the
`HLB of the surfactant being lower has no more or less effect on
`stability than the HLB being higher, right?
`A That's what -- that can be inferred from this figure.
`(id. at 232:18 – 233:4).
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`Dr. Kohl agrees that Figure 4 shows equal “instability” in emulsions on either side
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`of the peak stability point (Ex. 2003 at ¶ 54).2
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`2
`As Dr. Kohl points out, ICI is directed to forming emulsions, not breaking
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`them (Ex. 2003 at ¶ 52). And even ICI states that HLB is not the determinative
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`Dr. Rockstraw’s concession that Hydrite’s obviousness analysis is incorrect
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`and incomplete is fatal to Hydrite’s case. Specifically, the reason that Hydrite
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`proffers for why someone of ordinary skill would have combined ICI with the
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`other cited publications (i.e., an alleged desire to use high-HLB surfactants) simply
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`did not exist. For at least this reason, the patentability of the challenged claims of
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`the 059 Patent must be maintained. Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343
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`(Fed. Cir. 2013) (reversing a finding of obviousness due to failure to establish a
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`reason for combining references in the proposed manner).3
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`factor in making emulsions (id.; Ex. 1008 at 9, first column). For example, in the
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`instance in which one has determined that the required HLB to optimally stabilize
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`an emulsion is 12, ICI characterizes obtaining all emulsifiers having this HLB
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`value as “a serious mistake” (Ex. 2003 at ¶ 53; Ex. 1008 at 9, first column).
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`3
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`Any new rationale or evidence submitted in reply that attempts to remedy
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`this significant deficiency in the Petition would be improper. “Reply evidence ...
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`must be responsive and not merely new evidence that could have been presented
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`earlier to support the movant’s motion.” Rules of Practice, 77 Fed. Reg. 48,612,
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`48,620 (Aug. 14, 2012).
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`B. Hydrite’s Declarant has, at Best, Superficial Experience in Corn-
`to-Ethanol Processing and His Allegations Regarding What
`Would Have Been Obviousness to Those Working in the Field
`Should Not be Credited
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`The superficial nature of Hydrite’s analysis is consistent with the very
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`limited experience that Dr. Rockstraw has regarding corn-to-ethanol processing.
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`Dr. Rockstraw is a university professor and admitted during his deposition that his
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`only experience with corn-to-ethanol processing prior to the filing date of the 059
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`Patent consisted of writing a problem statement his students could use to perform a
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`“paper” cost analysis of a corn-to-ethanol facility (Ex. 2005 at 43:2-9 and 45:1-6).
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`Dr. Rockstraw confirmed that he has never witnessed corn being processed to
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`ethanol, has never visited a corn-to-ethanol plant, and, in fact, has only seen
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`photographs of corn being processed to ethanol.
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`Q Was this problem something that they [the students]
`addressed only on paper or on their computers, or did they build any
`type of equipment that would actually make ethanol from corn?
`A There was no equipment. It was strictly a paper design.
`Q In gathering information for putting together this problem,
`did you actually see any equipment in which corn was being
`converted to ethanol?
`A Not physically. Only in photographs.
`Q So you never visited a plant where corn to ethanol was
`being processed?
`A I have not.
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`Q So you didn't at that time, and you haven't since, visited a
`corn-to-ethanol facility?
`A That's correct.
`Q In any context, laboratory, semi-works, have you witnessed
`corn to ethanol being processed?
`A I have not.
`(Ex. 2005 at 45:1-20)
`* * *
`Q So your experience with seeing the process stream in a
`corn-to-ethanol process is limited to photographs?
`A That is correct.
`(id. at 47:3-6).
`Moreover, although oil extraction was a consideration of Dr. Rockstraw’s
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`academic project, oil recovery ended up not being something that was worth
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`pursuing.
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`Q Either by you or your students, was there any consideration
`given to using surfactants in a corn-to-ethanol process to extract oil?
`A I don't believe there was, because at the time, the economic
`environment suggested that recovering the oil was not something that
`they should bother doing.
`(id. at 48:22 – 49:4).
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`
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`In fact, Dr. Rockstraw admits he does not have knowledge of what was
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`going on in the industry when the 059 Patent was filed:
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`Q So to your knowledge, there was an unmet need for the
`patented methods prior to March of 2011, correct?
`. . . .
`THE WITNESS: Again, I don't have knowledge of what was
`going on in the industry in that time frame to make that statement.
`(Ex. 2005 at 144:15-22).
`
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`Dr. Rockstraw’s deposition testimony thus belies the statements made in his
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`declaration (and credited by the Board) implying that he had knowledge of the
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`corn-to-ethanol industry (Institution Dec. at 21 citing Ex. 1005 at ¶161).
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`Dr. Rockstraw’s declaration attempts to make it appear that he is qualified to
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`comment on the state of the industry by alleging that the level of ordinary skill was
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`so low that a person of ordinary skill would not have had some actual, real-world
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`experience with corn-to-ethanol processing. Dr. Rockstraw, for example, alleges
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`that a person of ordinary skill would merely have had a chemical engineering
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`degree and experience in the design and application of generic “chemical
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`processes” (Ex. 1005 at ¶ 25). This is simply not credible. As industry veteran Dr.
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`Kohl confirms, the problems that one encounters when converting corn to ethanol
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`are unique, such that a person having ordinary skill in this field would have had
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`such actual experience and familiarity with the chemistry of the constituents that
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`make up a corn-to-ethanol process stream (Ex. 2003 at ¶ 29-34).
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`Given Dr. Rockstraw’s lack of actual experience in the conversion of corn to
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`ethanol and his lack of familiarity with the underlying chemisty (see Ex. 2005 at
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`94:24-95:12; 98:7-16; 99:13-22; 100:8-24; 101:14-19; 103:10-15; 105:24 – 106:3),
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`his testimony regarding what allegedly would have been obvious to those of
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`ordinary skill in the art should be given little or no weight.
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`IV. Hydrite has Failed to Establish Unpatentability of the Challenged
`Claims Based on Winsness (Grounds 1-6)
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`Not only are Hydrite’s grounds of rejection based on Winsness predicated on
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`a flawed HLB analysis (see Section III.A), but Winsness and Hydrite’s secondary
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`references would not render the claimed inventions obvious. Winsness is, at best,
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`tangentially related to the claimed subject matter and, in fact, would have led those
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`of ordinary skill away from the claimed inventions (Ex. 2003 at ¶¶ 35-41).
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`A. Winsness Provides No More Than a Passing Reference to
`Emulsions, and Does Not Disclose Any Technique for Handling
`Them
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`Winsness is the only reference cited by Hydrite that is said to disclose an
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`emulsion in a corn-to-ethanol process stream. Significantly, however, Winsness
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`does not actually address how to deal with emulsions (id. at ¶¶ 36-38). Rather,
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`Winsness refers only to the fact that one could form an emulsion using techniques
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`other than those that the authors advocate, and does not disclose “the handling of
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`emulsions in order to remove oil” (id.; Institution Dec. at 13).
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`Hydrite’s reliance on Winsness’ is based on two sentences in the reference’s
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`background section. These sentences refer to prior techniques (involving spinning
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`thin stillage) that could produce an emulsion (and a need for “further processing”
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`such an emulsion). Tellingly, however, the sentences make no mention of what
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`that “further processing” might involve:
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`One proposed approach involves attempting to separate the oil from the thin
`stillage before the evaporation stage, such as using a centrifuge. However,
`spinning the thin stillage at this stage using a centrifuge creates an emulsion
`phase that typically requires further processing before useable oil can be
`recovered.
`
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`(Ex. 1012 at [00007]). Indeed, Winsness advocates a technique that does not
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`involve spinning thin stillage and, consequently, does not form an emulsion that
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`requires further processing (see id. at [0040]; Ex. 2003 at ¶ 38). Hydrite thus has
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`not identified any disclosure in Winsness relating to a procedure for “the handling
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`of emuls