SUPPLEMENTAL DECLARATION OF DAVID A. ROCKSTRAW, PH.D., P.E.
`UNITED STATES PATENT NO. 8,962,059
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`UNITED STATES PATENT NO. 8,962,059
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
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`Scope Of Opinions ............................................................................... 1
`Documents Relevant To This Supplemental Declaration ................... 1
`A. George R. Alther article, “Put the Breaks on: Removal of fats,
`1998 (“Alther”) (Ex. 1007) ....................................................... 1
`B.
`(“Winsness”) May 15, 2008 (Ex. 1012) .................................... 2
`C.
`(ICI Americas, Inc.) 1980 (“ICI”) (Ex. 1008) ........................... 3
`D.
`Owner’s Response”) .................................................................. 3
`E.
`(“Atlas”) (Ex. 1027) ................................................................. 3
`F.
`Revised and Expanded, 2000 (“Cereal Science”) (Ex. 1028). .. 4
`III.
`Statements And Basis Of Opinions ..................................................... 4
`IV. Conclusion ......................................................................................... 11
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`oil, and greases is necessary to recycle water and meet
`discharge limits.” Chemical Engineering, Vol. 5, No. 3, March
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`U.S. Patent Application Publication No. 2008/0110577
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`The HLB System: a time-saving guide to emulsifier selection
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`Patent Owner’s Response Under 37 C.F.R. § 42.120 (“Patent
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`“Surface Active Agents,” Atlas Powder Company (1950)
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`Handbook of Cereal Science and Technology, Second Edition,
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`I, David A. Rockstraw, declare:
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`I.
`1.
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`Scope Of Opinions
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`This Supplemental Declaration supplements my previous declaration entitled
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`“Declaration Of David A. Rockstraw, Ph.D., P.E., United States Patent No.
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`8,962,059,” Dated July 14, 2015 (Ex. 1005) (“Original Declaration”).
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`2.
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`I have been asked to consider and supplement my opinions as to the
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`invalidity of U.S. Patent No. 8,962,059 (“the ’059 Patent”) in view of the
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`Patent Owner’s Response Under 37 C.F.R. § 42.120 (“Patent Owner’s
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`Response”), the prior art relative to the ’059 Patent, and the degree to which
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`the claimed invention would have been obvious to one skilled in the art, in
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`light of the prior art at the time of the claimed invention.
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`II. Documents Particularly Relevant To This Supplemental Declaration
`A. George R. Alther article, “Put the Breaks on: Removal of fats, oil,
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`and greases is necessary to recycle water and meet discharge limits.”
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`Chemical Engineering, Vol. 5, No. 3, March 1998 (“Alther”) (Ex. 1007)
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`3.
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`Alther appeared in the trade journal “Chemical Engineering” in 1998 and
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`describes the use of various technologies to break emulsions. Alther
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`provides an explanation of how demulsifying agents work, stating,
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`“separation occurs when the agents insert themselves between the surfactant
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`molecules, increasing the intermolecular distance and weakening the binding
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`forces constructed by the emulsifier.”
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`Alther identifies Polysorbate 80 as an emulsion breaker.
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`This article was described in more detail in my Original Declaration.
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`B. U.S. Patent Application Publication No.
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`2008/0110577
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`4.
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`5.
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`(“Winsness”) May 15, 2008 (Ex. 1012)
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`6. Winsness recognizes the need for more efficient and economical manners of
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`recovering oil from byproducts created during the production of ethanol.
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`Figure 2 and paragraphs [0043] and [0044] of Winsness describe an
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`apparatus and method for recovering oil from byproducts created during the
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`dry milling of corn to produce ethanol. The whole stillage leftover after
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`deriving the ethanol can be mechanically separated into distillers wet grains
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`and thin stillage using a centrifugal decanter. The resulting thin stillage is
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`then introduced to an evaporator to create a syrup. The resulting syrup is
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`delivered to a disk stack centrifuge which recovers some usable oil. The
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`leftover syrup from the centrifuge is recombined with the distillers wet
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`grains and dried.
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`7.
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`This publication was described in more detail in my Original Declaration.
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`C.
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`The HLB System: a time-saving guide to emulsifier selection (ICI
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`Americas, Inc.) 1980 (“ICI”) (Ex. 1008)
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`8.
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`This document prepared by ICI Americas, Inc. (manufacturer of the
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`“TWEEN” brand line of surfactants) provides step-by-step training on the
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`selection of an appropriate surfactant to form an emulsion. In doing so, the
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`document also provides direct insight into methods that can be used to break
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`an emulsion.
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`9.
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`This article was described in more detail in my Original Declaration.
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`D.
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`Patent Owner’s Response Under 37 C.F.R. § 42.120 (“Patent
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`Owner’s Response”)
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`10. The Patent Owner’s Response was filed April 22, 2016. In addition to
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`considering the Patent Owner’s Response (and its accompanying exhibits), I
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`considered the deposition testimony of Patent Owner’s experts in Exhibits
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`1023 and 1024.
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`E.
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`“Surface Active Agents,” Atlas Powder Company (1950) (“Atlas”)
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`(Ex. 1027)
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`11. Atlas is a book prepared by Atlas Powder Company (manufacturer of the
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`“TWEEN” brand line of surfactants at the time of publication) and provides
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`training on the selection of an appropriate surfactant to form an emulsion
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`and on the selection of an appropriate surfactant to demulsify an emulsion.
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`F. Handbook of Cereal Science and Technology, Second Edition,
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`Revised and Expanded, 2000 (“Cereal Science”) (Ex. 1028).
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`12. Cereal Science is a book that provides information on the constituents of
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`cereals, such as corn, and information on industrial processes using cereals,
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`such as the milling of corn and ethanol production from corn.
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`III. Statements And Basis Of Opinions
`13.
`I understand that obviousness of a claim requires that the claim be obvious
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`from the perspective of a person of ordinary skill in the relevant art at the
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`time the invention was made. In analyzing obviousness, I understand that
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`the test is whether the teachings of the prior art, taken as a whole, would
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`have made obvious the claimed invention.
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`14. At paragraph 78 of my Original Declaration, I stated that Winsness teaches a
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`method of recovering oil from a byproduct resulting from the production of
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`ethanol from corn. Ex. 1012, ¶ [0039]. And, that at the time of the invention
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`recited in the claims of the ’059 Patent, Winsness had recognized a problem
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`caused by the creation of an emulsion phase in a centrifuge used to recover
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`oil from the byproducts of corn to ethanol production. Winsness recognizes
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`a “need exists for more efficient and economical manners of recovering oil
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`from byproducts created during the dry milling of corn to produce ethanol.”
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`Ex. 1012, ¶ [0009]. One skilled in the art would search for a solution to the
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`emulsion problem articulated by Winsness.
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`15. At paragraphs 79 to 88 of my Original Declaration, I stated that the prior art
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`had known of a solution well before the method of the claims of the ’059
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`Patent. In this regard, I stated that Alther teaches that centrifugal separators
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`use centrifugal force to separate oil from water and that emulsion breakers
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`can be added to a centrifugal separator. Ex. 1007, p. 86, left column, last two
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`paragraphs. I further stated that Alther teaches that Polysorbate 80 can break
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`an emulsion. Ex. 1007, p. 82, middle column, last paragraph. I opined that,
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`at the time of the invention of the ’059 Patent, Alther had disclosed an
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`identified, predictable potential solution (i.e., adding Polysorbate 80 [Tween
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`80] to a centrifuge being used to separate oil from water) to the problem (i.e.,
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`the creation of an emulsion phase in a centrifuge), as recognized by
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`Winsness. One of skill in the art would have had a reason to combine the
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`teachings of Winsness and Alther, as both references teach centrifugal
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`separators and the problems caused by the formation of emulsions while
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`attempting to separate oil. One of skill in the art thus would have logically
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`looked to Alther for the solution (i.e., adding Polysorbate 80 to a centrifuge
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`being used to separate oil from water) to the problem (i.e., the creation of an
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`emulsion phase in a centrifuge) that could be used in the methods of
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`Winsness.
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`16. At paragraphs 84 to 86 of my Original Declaration, I pointed out that ICI
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`describes how “in applying the [Hydrophilic-Lipophilic Balance] HLB
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`system, the HLB of an emulsifier . . . is an excellent indication of what the
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`emulsifier will do.” Ex. 1008, p. 3, col. 2, last paragraph. Table 2A of ICI
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`notes that the required HLB for selecting a surfactant to create the most
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`stable oil-in-water emulsion based on corn oil is 10. Ex. 1008, p. 3, col. 1, 3;
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`p. 6, Table 2A. Additionally, Figure 4 of ICI demonstrates that when you
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`vary the HLB number away (up or down) from the recommended HLB
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`number, the emulsion stability decreases significantly. Ex. 1008, p. 13,
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`Figure 4. I opined that the ICI HLB system teaches that TWEEN 80 will
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`demulsify an emulsion of corn oil and water thereby promoting the
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`water/corn oil separation of corn stillage.
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`17. Atlas (Ex. 1027) describes the use of Tween surfactants and at Table No. VI
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`notes that surfactants with an “HLB opposing that for emulsion being treated”
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`can be used as “DEMULSIFIERS.” See Table No. VI from page 24 of Atlas
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`(Ex. 1027) reproduced below and annotated with an arrow:
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`18. Atlas further confirms the analysis of ICI in my Original Declaration. In that
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`regard, Atlas’ teaching that one seeking to demulsify can use a surfactant
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`with an “HLB opposing that for emulsion being treated” aligns with the
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`statement in my Original Declaration that Figure 4 of ICI demonstrates that
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`when you vary the HLB number away (up or down) from the recommended
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`HLB number, the emulsion stability decreases significantly.
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`19. One problem in Winsness is a corn oil - water emulsion. ICI teaches that the
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`HLB to create the most stable oil-in-water emulsion based on corn oil is 10.
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`Ex. 1008, p. 3, col. 1, ¶ 3; p. 6, Table 2A. When seeking to demulsify an
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`emulsion of corn oil and water, one seeks a surfactant with an “HLB
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`opposing that for emulsion being treated.” Atlas, Ex. 1027, Table No. VI,
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`page 24. Because an HLB value of 10 is centrally between the lipophilic and
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`hydrophilic values on the chart in ICI, Ex. 1008, p. 3, a surfactant with an
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`“HLB opposing that for emulsion being treated” could be below 10
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`(lipophilic) or above 10 (hydrophilic).
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`20.
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`I have reviewed the Patent Owner’s Response. Pages 24-25 of the Patent
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`Owner’s Response state:
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`Alther, for example, does not teach the use of Polysorbate 80 to break
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`all types of emulsions. Rather, as confirmed by Dr. Kohl, Alther’s
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`reference to Polysorbate 80 is made only in relation to counteracting
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`the effects of other emulsifiers by using an emulsifier (such as
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`Polysorbate 80) of the “opposite type” (Ex. 1007 at 83, second column,
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`emphasis added; Ex. 2003 at ¶ 48). Thus, Alther does not broadly
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`teach the use of Polysorbate 80 to break emulsions but, rather, the use
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`of a hydrophilic surfactant (such as Polysorbate 80) to counteract the
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`emulsion-forming properties of a hydrophobic surfactant.
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`21. Pages 25-26 of the Patent Owner’s Response further states:
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`Alther’s teaching relating to the use of emulsifiers of the “opposite
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`type” is significant because it would have led a person of ordinary
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`skill away from using Polysorbate 80 on a corn-to-ethanol emulsion.
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`Dr. Rockstraw, for example, testified that “[o]il-soluble structures like
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`corn gluten, phosphatides, and starches serve as hydrophilic
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`surfactants that attract the water to the oil phase” (Ex. 1005 at ¶¶ 54-
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`55; referring to Alther at page 84, middle column). As noted by Dr.
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`Kohl, because Alther teaches that an emulsifier of the opposite type
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`should be used to break an emulsion, a person of ordinary skill who
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`sought to apply Alther’s teaching would have been led to add a
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`lipophilic surfactant (rather than a hydrophilic surfactant such as
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`Polysorbate 80) to a corn-to-ethanol emulsion (Ex. 2003 at ¶ 48).
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`Thus, contrary to Hydrite’s assertions, Alther would have led a person
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`of ordinary skill away from (rather than toward) the claimed
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`inventions of the 059 Patent (id.).
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`22.
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`I disagree with this mischaracterization of my opinion and the analysis of the
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`teachings of Alther presented in the Patent Owner’s Response. Alther states
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`that “[d]epending on the emulsion, a strongly hydrophilic surfactant, such as
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`polysorbate 80, or a strongly lipophilic surfactant, such as monoglyceryl or
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`diglyceryl oleate, can break the emulsion.” Ex. 1007 at 83, second column.
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`One skilled in the art understands this to be mean consider the “emulsion
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`being treated,” as confirmed by Atlas, Ex. 1027, Table No. VI, page 24.
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`23.
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`In an attempt to show that Alther would have led a person of ordinary skill
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`away from (rather than toward) the claimed inventions of the ’059 Patent,
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`the Patent Owner’s Response points to a phrase in my Original Declaration
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`which stated “[o]il-soluble structures like corn gluten, phosphatides, and
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`starches serve as hydrophilic surfactants that attract the water to the oil
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`phase,” Ex. 1005 at ¶ 55, and then argued that because Alther teaches that an
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`emulsifier of the opposite type should be used to break an emulsion, a
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`person of ordinary skill who sought to apply Alther’s teaching would have
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`been led to add a lipophilic surfactant (rather than a hydrophilic surfactant
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`such as Polysorbate 80) to a corn-to-ethanol emulsion, at Patent Owner’s
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`Response, pages 25-26. This faulty analysis fails to consider the “emulsion
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`being treated” as stated in Atlas, Ex. 1027, Table No. VI, page 24.
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`Furthermore, to the extent that hydrophilic surfactants are present in corn
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`stillage, I note that phosphatides having low HLB values (i.e., the
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`phosphatides are lipophilic) are also naturally present in corn oil (which is
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`present in corn stillage), Cereal Science, Ex. 1028, page 341. Due to the
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`potential for natural surfactants of more than one HLB value in corn stillage,
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`one skilled in art would focus on the HLB of “emulsion being treated” as a
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`whole when selecting a demulsifier. Atlas, Ex. 1027, Table No. VI, page 24.
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`Furthermore, Alther does not discredit the use of polysorbate 80 for breaking
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`an emulsion or describe circumstances under which polysorbate 80 would
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`not break an emulsion. It is my opinion that the teachings of the prior art,
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`taken as a whole, would not have led a person of ordinary skill away from
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`the claimed inventions of the ’059 Patent.
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`24. Nothing in the Patent Owner’s Response, including Exhibits 2003 and 2004,
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`and the evidence and remarks presented under the heading of “Objective
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`Evidence Demonstrates the Patentability of the Challenged Claims,” or the
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`deposition testimony of Patent Owner’s experts in Exhibits 1023 and 1024
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`alter my original opinion that Claims 1–16 of the ’059 Patent would have
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`been obvious to one of ordinary skill at the time of the ’059 Patent.
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`IV. Conclusion
`25. For at least the reasons outlined in my Original Declaration and the reasons
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`outlined above, Claims 1–16 of the ’059 Patent would have been obvious to
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`one of ordinary skill at the time of the ’059 Patent.
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`26. All statements made herein are of my own knowledge and are true to the
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