IN THE 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
`
`U.S. Patent No. 8,962,059
`
`
`
`PETITIONER’S REPLY
`
`TO
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`I.
`
`I.
`
`II.
`
`II.
`
`UPDATED EXHIBIT LIST ....................................................................... IV
`
`UPDATED EXHIBIT LIST ..................................................................... .. IV
`
`THE ’059 PATENT REMAINS UNPATENTABLE ................................. 1
`
`THE ’059 PATENT REMAINS UNPATENTABLE ............................... ..1
`
`III. SOLENIS’ RESPONSE CHANGES NOTHING ....................................... 2
`
`SOLENIS’ RESPONSE CHANGES NOTHING ..................................... ..2
`
`III.
`
`A.
`A.
`
`B.
`
`B.
`
`ICI IS RELEVANT TO OBVIOUSNESS, A REASONABLE EXPECTATION OF
`ICI IS RELEVANT TO OBVIOUSNESS, A REASONABLE EXPECTATION OF
`SUCCESS, AND IS CONSISTENT WITH OTHER EVIDENCE OF RECORD ............. 2
`SUCCESS, AND IS CONSISTENT WITH OTHER EVIDENCE OF RECORD ........... ..2
`
`ROCKSTRAW’S TESTIMONY IS RELEVANT AND KOHL’S POSITION IS
`
`ROCKSTRAW’S TESTIMONY IS RELEVANT AND KOHL’S POSITION IS
`UNSUPPORTABLE .......................................................................................... 8
`
`UNSUPPORTABLE ........................................................................................ ..8
`
`IV. REJECTIONS BASED UPON WINSNESS AND ALTHER
`
`IV. REJECTIONS BASED UPON WINSNESS AND ALTHER
`(GROUNDS 1-6) INVALIDATE CLAIMS 1–16 ..................................... 10
`(GROUNDS 1-6) INVALIDATE CLAIMS 1-16 ................................... ..10
`
`A. WINSNESS NOTED PROBLEMS IN ETHANOL PRODUCTION ........................... 10
`
`WINSNESS NOTED PROBLEMS IN ETHANOL PRODUCTION ......................... .. 10
`
`A.
`
`B. WINSNESS CAN BE IMPROVED .................................................................... 10
`
`WINSNESS CAN BE IMPROVED .................................................................. .. 10
`
`B.
`
`C. WINSNESS IS ASPIRATIONAL ...................................................................... 13
`
`WINSNESS IS ASPIRATIONAL .................................................................... .. 13
`
`C.
`
`D. ALTHER TEACHES USE OF POLYSORBATE 80 TO BREAK AN EMULSION ...... 13
`
`ALTHER TEACHES USE OF POLYSORBATE 80 TO BREAK AN EMULSION .... .. 13
`
`D.
`
`E.
`
`E.
`
`SOLENIS’ CONTENTIONS DO NOT UNDERCUT THE RELEVANCY OF MARTIN
`
`SOLENIS’ CONTENTIONS DO NOT UNDERCUT THE RELEVANCY OF MARTIN
` ................................................................................................................... 16
`
`................................................................................................................. .. 16
`
`F.
`
`F.
`
`CLAIMS 4 AND 5 REMAIN UNPATENTABLE ................................................. 16
`
`CLAIMS 4 AND 5 REMAIN UNPATENTABLE ............................................... .. 16
`
`V. REJECTIONS BASED UPON BONANNO (GROUNDS 7-9)
`V.
`REJECTIONS BASED UPON BONANNO (GROUNDS 7-9)
`INVALIDATE CLAIMS 1–3, 6, 10, AND 11 ............................................ 17
`INVALIDATE CLAIMS 1-3, 6, 10, AND 11 .......................................... ..17
`
`A.
`
`A.
`
`B.
`
`B.
`
`BONANNO AND ICI ARE FUNDAMENTALLY CONSISTENT ............................ 17
`
`BONANNO AND ICI ARE FUNDAMENTALLY CONSISTENT .......................... .. 17
`
`THE CLAIMED “INVENTION” IS OBVIOUS TO ONE OF ORDINARY SKILL ...... 18
`
`THE CLAIMED “INVENTION” IS OBVIOUS TO ONE OF ORDINARY SKILL .... ..18
`
`1. Bonanno Centrifuges the Surfactant Laden Byproduct............................. 19
`I . Bonanno Centrifuges the Surfactant Laden Byproduct........................... .. I9
`
`
`
`ii
`
`

`
`2. One of Ordinary Skill Would Have Recognized the Claimed
`2. One of Ordinary Skill Would Have Recognized the Claimed
`Chemicals .............................................................................................. 19
`Chemicals ............................................................................................ .. 19
`SOLENIS’ ATTACK ON THE REMAINING PRIOR ART IS IRRELEVANT ............ 22
`
`SOLENIS’ ATTACK ON THE REMAINING PRIOR ART IS IRRELEVANT .......... ..22
`
`C.
`
`C.
`
`VI.
`
`SOLENIS’ “SECONDARY CONSIDERATIONS” ARE
`
`VI. SOLENIS’ “SECONDARY CONSIDERATIONS” ARE
`IRRELEVANT AND OUTWEIGHED BY THE STRONG PRIMA
`FACIE CASE OF OBVIOUSNESS ........................................................... 22
`
`IRRELEVANT AND OUTWEIGHED BY THE STRONG PRIMA
`
`FACIE CASE OF OBVIOUSNESS ......................................................... ..22
`
`VII. CONCLUSION ............................................................................................ 25
`
`VII. CONCLUSION .......................................................................................... ..25
`
`
`
`
`
`
`
`iii
`
`iii
`
`

`
`UPDATED EXHIBIT LIST
`
`I.
`The following Updated Exhibit List is provided in accordance with 37 C.F.R. §
`
`42.63(e):
`
`UPDATED EXHIBIT LIST
`
`Number
`
`Brief Description
`
`1001
`
`1002
`
`1003
`
`U.S. Patent No. 8,962,059
`
`(“’059 Patent”)
`
`Prosecution History of U.S. Patent No. 8,962,059
`
`(“’059 Prosecution”)1
`
`Assignment Records of U.S. Patent No. 8,962,059
`
`(“’059 Assignment Records”)
`
`Superior Oil Company, Inc. v. Solenis Technologies
`
`L.P., United States District Court for the District of
`
`1004
`
`Delaware, C.A. No. 15-0183-GMS, Notice of
`
`Dismissal, June 11, 2015
`
`(“Interference Dismissal”)
`
`
`1 As available from PAIR.
`
`
`
`iv
`
`

`
`UPDATED EXHIBIT LIST
`
`Number
`
`Brief Description
`
`1005
`
`1006
`
`Declaration of David A. Rockstraw, Ph.D., P.E.
`
`(“Rockstraw Decl.”)
`
`U.S. Patent No. 4,702,798
`
`(“Bonanno”)
`
`George Alther, “Put the Breaks On,” Chemical
`
`1007
`
`Engineering, Vol. 5, No. 3 (March 1998)
`
`(“Alther”)
`
`“The HLB System a time-saving guide to emulsifier
`
`1008
`
`selection,” ICI Americas Inc. (March 1980)
`
`(“ICI”)
`
`Pasupati Mukerjee and Karol J. Mysels, “Critical
`
`Micelle Concentrations of Aqueous Surfactant
`
`1009
`
`Systems,” Nat. Stand. Ref. Data Ser., Nat. Bur. Stand.
`
`(Feb. 1971)
`
`(“Mukerjee”)
`
`v
`
`
`
`

`
`UPDATED EXHIBIT LIST
`
`Number
`
`Brief Description
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`U.S. Patent No. 5,283,322
`
`(“Martin”)
`
`U.S. Patent No. 5,558,781
`
`(“Buchold”)
`
`U.S. Patent Application Pub. No. 2008/0110577
`
`(“Winsness”)
`
`U.S. Patent No. 7,309,602
`
`(“David”)
`
`U.S. Patent Application Pub. No. 2007/0210007
`
`(“Scheimann”)
`
`Dictionary.com,
`
`http://dictionary.reference.com/browse/aqueous,
`
`definition of “aqueous,” last accessed July 12, 2015
`
`(“Aqueous”)
`
`vi
`
`
`
`

`
`UPDATED EXHIBIT LIST
`
`Number
`
`Brief Description
`
`1016
`
`1017
`
`1018
`
`McCutcheon’s Division, “McCutcheon’s Volume 1:
`
`Emulsifiers & Detergents North American Edition,” p.
`
`211 (1997)
`
`(“McCutcheon’s”)
`
`International Union of Pure and Applied Chemistry,
`
`“Compendium of Chemical Terminology,” Second
`
`Edition, pp. 16, 166 (1997)
`
`(“IUPAC”)
`
`IUPAC-IUB Commission on Biochemical
`
`Nomenclature, “The Nomenclature of Lipids,”
`
`Biochem J., Vol. 171, Issue 1, pp. 21–35 (April 1978)
`
`(“Biochem”)
`
`
`
`vii
`
`

`
`UPDATED EXHIBIT LIST
`
`Number
`
`Brief Description
`
`Vigen K. Babayan, “Specialty Lipids and Their
`
`Biofunctionality,” LIPIDS, Vol. 22, No. 6, pp. 417–20
`
`1019
`
`(1987)
`
`(“Babayan”)
`
`Food and Drugs, 21 C.F.R. § 172.840, “Polysorbate
`
`1020
`
`80” (2015)
`
`(“F&D § 840”)
`
`Food and Drugs, 21 C.F.R. § 573.860, “Polysorbate
`
`1021
`
`80” (2015)
`
`(“F&D § 860”)
`
`Case 2:15-cv-02063, Buckman Laboratories, Inc. v.
`
`Solenis, LLC, et al., Document 62-8, Exhibit D, Filed
`
`1022
`
`November 2, 2015
`
`(“CVEC Slides”)
`
`
`
`viii
`
`

`
`UPDATED EXHIBIT LIST
`
`Number
`
`Brief Description
`
`Deposition Transcript of Scott D. Kohl, Ph.D, taken
`
`1023
`
`June 1, 2016
`
`(“Kohl Dep.”)
`
`Deposition Transcript of Jennifer Bailey, taken June 2,
`
`1024
`
`2016
`
`(“Bailey Dep.”)
`
`1025
`
`1026
`
`1027
`
`
`
`Reply Declaration of David A. Rockstraw, Ph.D., P.E.
`
`(“Rockstraw Reply Decl.”)
`
`Trustees of Columbia University in the City of New
`
`York v. Illumina, Inc., 620 Fed.Appx. 916 (Fed. Cir.
`
`2015)
`
`(“Illumina”)
`
`“Surface Active Agents,” Atlas Powder Company
`
`(1950)
`
`(“Atlas”)
`
`ix
`
`

`
`UPDATED EXHIBIT LIST
`
`Number
`
`Brief Description
`
`J. Ponte et al., “Handbook of Cereal Science and
`
`1028
`
`Technology,” Second Edition, p. 341 (2000)
`
`(“Cereal Science”)
`
`“Distillers Corn Oil and the Low Carbon Fuel
`
`1029
`
`Standard,” The Jacobsen, April 26, 2016
`
`1030
`
`
`
`(“Jacobsen”)
`
`U.S. Patent No. 8,841,469
`
`(“’469 Patent”)
`
`
`
`x
`
`
`
`
`
`

`
`
`
`II. THE ’059 PATENT REMAINS UNPATENTABLE
`
`Nothing in Solenis’ Response alters the proper conclusion reached by the
`
`Board in its Institution Decision. The Petition, and the accompanying exhibits,
`
`fully established the unpatentability of Claims 1–16 by more than a preponderance
`
`of the evidence.
`
`
`
`Solenis devotes most of its Response to irrelevant arguments overlooking
`
`the application of prior art to the actual claim language. The claims of the ’059
`
`Patent attempt to cover “extracting oil” with the use of a commercially available
`
`“oil concentrator.” Ex. 1001, 13:25–31, 14:28–38. Solenis did not claim the
`
`efficacy of extracting oil. Notably, Solenis neither contends that the prior art fails
`
`to contain every element of the independent claims, nor presents arguments for
`
`every dependent claim. This is because its claims encompass what was known,
`
`with each aspect predictably behaving exactly as one of skill would have expected.
`
`See, e.g., Ex. 1005, ¶¶ 10–21, 41–176.
`
`
`
`The Board found that the prior art is replete with guidance and motivation
`
`that would have allowed (and in fact did allow) anyone of ordinary skill in the art
`
`to arrive at the ’059 Patent’s claims. See Ex. 1004 (interference proceeding
`
`between the ’059 Patent and U.S. Patent No. 8,841,469 (“’469 Patent”)); see also
`
`Ex. 1022 (Chippewa Valley Ethanol Company (“CVEC”) slides disclosing corn oil
`
`recovery through the addition of polysorbate 80/TWEEN 80).
`
`1
`
`

`
`
`
`
`
`Solenis begins its Response with an erroneous characterization of the
`
`purported “central premise underlying” the Petition. The Petition does not rely
`
`“solely” on the HLB teaching tool, Rockstraw does not concede that HLB is not an
`
`“accurate predictor,” and the Petition is not guided by hindsight. The portions of
`
`the Petition cited by Solenis actually refer to ICI in connection with “more than a
`
`reasonable expectation of success”—Alther and Bonanno taught the claimed
`
`chemicals. Furthermore, Solenis conveniently overlooks the discussion of the
`
`HLB system in ICI disclosing that the “‘chemical type’ of an emulsifier blend is
`
`just as important as its HLB.” Ex. 1008, p. 9; Ex. 2005, 221:5–223:16.
`
`
`
`Solenis’ references to purported “commercial success and accolades” also
`
`fail. Its assertions lack the requisite evidentiary support and, regardless, still fail to
`
`outweigh the heavy burden of unpatentability established by Hydrite.
`
`III. SOLENIS’ RESPONSE CHANGES NOTHING
`Solenis’ Response begins with an unpersuasive attempt to explain away the
`
`overwhelming relevance of the HLB system, followed by a hollow challenge to the
`
`credibility of Rockstraw. Solenis’ arguments fail.
`
`A.
`
`ICI is Relevant to Obviousness, a Reasonable Expectation of
`Success, and is Consistent with Other Evidence of Record
`
`Solenis contends that one would not have relied upon ICI’s HLB system to
`
`“predict the effectiveness of a surfactant.” Response at 5. This misses the point.
`
`The Petition, in addressing Claims 1 and 13 with the combination of Winsness,
`
`2
`
`

`
`
`
`Alther, and Martin used ICI to show “that there was more than a reasonable
`
`expectation of success.” Petition at 13. Similarly, in addressing Claim 1 under
`
`Bonanno and ICI, the Petition identifies all elements and motivations within
`
`Bonanno. Petition at 47–50. ICI further establishes a more than reasonable
`
`expectation of success. Petition at 51–52.
`
`Solenis’ contention that the HLB system is inapplicable is belied by the ’059
`
`Patent, which confirms HLB’s relevancy. Ex. 1001, 6:9–11 (HLB “was a useful
`
`indicator for its efficacy as an oil concentrator” (emphasis added)), 10:14–18.
`
`Rockstraw testified that ICI’s HLB discussion is “a teaching tool”
`
`confirming common knowledge that “when you move away from that optimal
`
`HLB, you’re destabilizing the emulsion.” Ex. 2005, 232:6–17. ICI discloses when
`
`working with a required HLB of 10, “you’d be wasting time to try emulsifier
`
`blends at HLB 8 or 13, for example, unless you might happen to be looking for a
`
`particular quality other than stability in your emulsion.” Ex. 1008, p. 5, col. 1, ¶2.
`
`Solenis turns to Table 1 of the ’059 Patent in an attempt to undercut the
`
`applicability of ICI, and conflates a motivation to combine with a reasonable
`
`expectation of success. Response at 5–13. Analysis of whether a reasonable
`
`expectation of success exists must be commensurate with the scope of the claims.
`
`See Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 965–66 (Fed. Cir. 2014) (“failure
`
`to consider the appropriate scope of the . . . claimed invention in evaluating the
`
`3
`
`

`
`
`
`reasonable expectation of success and secondary considerations constitutes a legal
`
`error”). Of the chemicals listed in Table 1 of the ’059 Patent, Solenis’ expert,
`
`Kohl, testified that only three are ethoxylated sorbitan esters as claimed. See Ex.
`
`1023, 84:18–88:6. All three identified by Kohl extract oil—recall the claims do
`
`not recite the amount of oil. See Ex. 1001 at Table 1. Therefore, the other entries
`
`in Table 1 are irrelevant to Solenis’ argument, and the three identified entries
`
`actually do extract oil.
`
`Solenis contends that one “would have had no reason to focus on such
`
`higher HLB values” in an attempt to manufacture an issue as to whether the HLB
`
`must be higher versus lower. Response at 6. Yet, no claims limit the effectiveness
`
`of the method of extracting. While higher HLB surfactants may be even more
`
`likely to have enhanced effectiveness, even a marginally effective surfactant with a
`
`lower HLB would invalidate the claims.
`
`Solenis fails to address that ICI discloses the “chemical type” of an
`
`emulsifier is just as important as its HLB. See Ex. 1008, p. 9. In fact, Rockstraw
`
`walked Solenis through one example of how one of ordinary skill would have
`
`easily negotiated the purported “overwhelming” options from the surfactants in
`
`Table 4 of ICI:
`
`THE WITNESS:
`
`***
`
`4
`
`

`
`
`
`
`
`Now, the one thing we haven’t done in the exercise of
`
`mathematically trying to determine how many possibilities you’re
`
`being faced with this is go through the process of eliminating them
`
`based on knowledge of the HLB of the system that we’ve already
`
`talked about and chemical compatibility, which we’ve also talked
`
`about, and reduce this large quantity of surfactants to the smaller
`
`handful that have a potential to work in this system.
`
`BY MR. LUCCI:
`
`Q
`
`Okay. So if you’re looking to address a corn oil emulsion
`
`in thin stillage, what’s the HLB of that system?
`
`A
`
`Q
`
`Table 2A says it’s 10.
`
`So knowing that the HLB of that system is 10, what
`
`would you be looking for in a surfactant?
`
`A
`
`HLB is 10. The continuous phase is water. That tells me
`
`that I want something higher than an HLB of 10 rather than lower,
`
`because the ones that are lower than 10 are your predominantly oil-
`
`phase soluble or lipophilic HLB values. So I’m looking for something
`
`larger than 10, as large as possible larger than 10, which eliminates
`
`quite a few of them right off the bat.
`
`I’m then looking to match the lipophilic character of my
`
`5
`
`

`
`
`
`selected surfactant to the lipophilic nature of my oil phase. And corn
`
`oil is composed primarily of oleates and linoleic acid, and so I’m
`
`looking for an unsaturated hydrophobic phase on my selected
`
`surfactants.
`
`So I immediately eliminate the stearates and things of that
`
`nature that are not unsaturated or do not have C14 to C18
`
`characteristics, and in doing so -- I didn’t quantify that, but I would
`
`bet that I would be down to five or six surfactants that will potentially
`
`work, maybe even less.
`
`I see no reason to create a blend at this point, because I’m not
`
`trying to make an emulsion; I’m trying to destroy one. And my focus
`
`is to solvate those particles that are stabilizing the emulsion and push
`
`them into the oil phase to weaken that shell that stabilizes that
`
`emulsion droplet to permit two droplets, when they come together, to
`
`coalesce into a larger droplet.
`
`Q
`
`In Table 4, which of the surfactants are listed that meet
`
`the criteria you just laid out?
`
`A
`
`Those that most fit it are the TWEEN species with an
`
`oleate characteristic. So 80, 81 – 81’s HLB value is too low. And
`
`between 80 and 85, 80 has the higher HLB value.
`
`6
`
`

`
`
`
`Q
`
`Are there any other ones that will meet the criteria you
`
`just laid out?
`
`A
`
`I don’t see any others. To me, the choice of TWEENS
`
`80 as a first attempt is obvious.
`
`Q
`
`A
`
`Let’s take a break.
`
`Okay.
`
`Ex. 2005, 221:5–223:18.
`
`Bonanno identified relevant surfactants, and Alther identified polysorbate 80
`
`as one of three that “can break the emulsion.” See Ex. 1006, 4:58, 5:8–9; Ex.
`
`1007, p. 83, col. 2, ¶5. It is beyond reason that one of skill would not have, at a
`
`minimum, tried the surfactants called for in Bonanno and Alther.
`
`Solenis contends that Rockstraw conceded “that Hydrite’s obviousness
`
`analysis is incorrect and incomplete.” Response at 13. Rockstraw made no such
`
`concession. Rockstraw consistently articulated his rationale in which the HLB and
`
`chemical type were tools and considerations one of skill would have
`
`comprehended, and never altered his conclusions. See, e.g., Ex. 2005, 197:15–
`
`198:9, 227:4–18, 268:8–270:3. During prosecution of the ’059 Patent Solenis
`
`conceded that “[d]epending on the desired outcome and class of surfactant,
`
`relationships between the efficiency of the surfactant and the HLB could be
`
`deduced.” Ex. 1002 at 96.
`
`7
`
`

`
`
`
`B. Rockstraw’s Testimony is Relevant and Kohl’s Position is
`Unsupportable
`
`Failing on the merits, Solenis attacks Rockstraw’s qualifications. Solenis’
`
`position is baseless. Rule 702 of the F.R.E. neither requires the witness to have
`
`particular experience with the specific subject matter, nor requires the relevant
`
`experience of the witness to have been acquired during the relevant time-frame.
`
`See CBM2013–00002, Paper No. 53, p. 60; see also IPR2014–00199, Paper No.
`
`58, p. 7. Rockstraw holds a Ph.D. in chemical engineering and has over 25 years
`
`of experience in the chemical arts including experience with chemical separation
`
`technologies. See, e.g., Ex. 1005 at 1–2. He is qualified under Rule 702.
`
`If there is any question about the appropriate weight ascribable to an
`
`expert’s testimony, notably Kohl admitted that he did not consider the interference
`
`proceeding between the ’059 Patent and the ’469 Patent. Ex. 1023, 38:2–18. Kohl
`
`further admits to not considering whether the earlier prior art of the ’469 Patent
`
`impacts his opinion of the later ’059 Patent. Ex. 1023, 38:19–42:1. While
`
`Rockstraw did not need to rely upon either, Kohl has opined that both the ’059
`
`Patent and the ’469 Patent are valid, without any consideration of how the near
`
`simultaneous invention impacts what one of ordinary skill would have understood
`
`at the time of invention. Moreover, Kohl would have liked to consider whether
`
`CVEC was actually adding polysorbate 80 to a process stream prior to the ’059
`
`Patent, yet was never provided the CVEC Slides. Ex. 1023, 53:3–55:23.
`
`8
`
`

`
`
`
`
`
`Any argument that one would not have been motivated to arrive at the
`
`“invention” of the ’059 Patent or the ’469 Patent is undercut by the fact that at least
`
`two separate groups of “inventors” arrived at the same “invention,” essentially
`
`simultaneously. “Independently made, simultaneous inventions, made within a
`
`comparatively short space of time, are persuasive evidence that the claimed
`
`apparatus was the product only of ordinary mechanical or engineering skill.”
`
`Trustees of Columbia University in the City of New York v. Illumina, Inc., 620
`
`Fed.Appx. 916, 929 (Fed. Cir. 2015) (Ex. 1026).
`
`
`
`As a “secondary consideration, however—which falls under the fourth
`
`Graham factor—simultaneous invention is relevant when it occurs within a short
`
`space of time from the date of invention, and ‘is strong evidence of what
`
`constitutes the level of ordinary skill in the art.’” Id. at 930. “Unlike the ultimate
`
`determination of obviousness, which requires courts to answer the hypothetical
`
`question of whether an invention ‘would have been obvious,’ [] simultaneous
`
`invention demonstrates what others in the field actually accomplished.” Id.
`
`(emphasis in original).
`
`Also, Solenis concedes that a person of ordinary skill “would have had such
`
`actual experience and familiarity with the chemistry of the constituents that make
`
`up a corn-to-ethanol process stream,” belying its arguments that one would face
`
`any difficulty. Response at 16 (citing Ex. 2003, ¶¶29–34); see also Innovention
`
`9
`
`

`
`
`
`Toys, LLC v. MGA Entertainment, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011)
`
`(higher level of skill favors obviousness).
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`IV. REJECTIONS BASED UPON WINSNESS AND ALTHER
`(GROUNDS 1-6) INVALIDATE CLAIMS 1–16
`
`
`
`Solenis’ attempts to undercut Winsness by isolating the references’
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`teachings and focusing on Solenis’ particular interpretation of the “problem.”
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`
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`Winsness Noted Problems in Ethanol Production
`
`A.
`Solenis seems to contend that Winsness either needs to be an anticipatory
`
`
`
`reference or must state the noted problems in ethanol production more than once to
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`be applicable.2 Response at 17–19. Neither is correct—it is the combination of
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`Winsness’ and Alther’s teachings that is relevant to unpatentability. See Petition at
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`8–46.
`
`B. Winsness Can Be Improved
`Solenis contends that Winsness “discloses an effective technique” and
`
`
`
`therefore no motivation exists. Response at 19–22. This is incorrect. Winsness
`
`recognizes that “efforts to recover usable oil from the byproducts of the dry milling
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`2 Solenis argues that Rockstraw “testified” that “the Winsness technique” in
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`connection with a prior litigation provided no evidence of an emulsion problem.
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`Response at 18–19, FN. 4. This is immaterial to unpatentability of the ’059 Patent
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`and a blatant mischaracterization—Rockstraw did not opine on the lack of an
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`emulsion.
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`10
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`

`
`
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`process used to create ethanol have not been terribly successful in terms of
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`efficiency.” Ex. 1012, ¶7. The Federal Circuit has made clear that enhancing
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`efficiency is an implicit motivation. See Dystar Textilfarben GMBH & Co. v. C.H.
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`Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (“the desire to enhance
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`commercial opportunities by improving a product or process is universal—and
`
`even common-sensical”). In addition, Kohl admitted that there was “a general
`
`desire to increase efficiency.” Ex. 2003, ¶34.
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`
`
`While Hydrite maintains that extracting more, or even all, oil is a valid
`
`motivation, other motivations are relevant. The desire to provide a solution to the
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`emulsion problem noted in Winsness is a motivation. As confirmed by Kohl, the
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`cost-benefit analysis provides another strong motivation. Ex. 1023, 80:17–81:8.
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`In fact, Winsness concludes that the then-current value of corn oil as biodiesel is
`
`“essentially double the value of the commercial feed that would normally include
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`this oil.” Ex. 1012, ¶6. Given the appropriate market or financial motivations, one
`
`would be motivated to extract a corresponding amount of oil, regardless of how
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`much oil Winsness purports to extract.
`
`
`
`Solenis’ contentions that a “Winsness process” that uses a disk-stack
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`centrifuge is good enough are contradicted by Solenis’ own witness. Bailey notes
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`one example of a plant using a disk-stack centrifuge “at great capital expense to
`
`extract corn oil from its process,” but yet “the plant’s anticipated corn oil yield was
`
`11
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`

`
`
`
`not being achieved and its return on investment was not being realized.” Ex. 2004,
`
`¶19. This then purportedly motivated the plant to use a chemical. Ex. 2004, ¶19;
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`see also Ex. 1024, 61:8–20.
`
`
`
`Solenis argues that “not only is it not practical or economical to remove all
`
`of the oil, ethanol plants would not necessarily attempt to do so in order to meet
`
`acceptable limits for fat in the DDGS.” Response at 21. These contentions are
`
`based on the flawed premise that DDGS is the only concern. The ’059 Patent,
`
`however, specifically calls out various “negative effects [that] are correlated to the
`
`high oil content of DDGS; thus removal of oil from the byproduct stream
`
`increases the utility of the resulting DDGS product while also generating
`
`another valuable byproduct stream, the oil.” Ex. 1001, 2:14–24 (emphasis
`
`added).
`
`
`
`Finally, as stated in the ’059 Patent, “[o]il from the byproduct stream of the
`
`bio-based production of ethanol may be a secondary product stream providing
`
`additional value to the overall process, so long as the cost of obtaining the oil is
`
`below the value derived.” Ex. 1001, 1:54–57 (emphasis added) , 1:69–62. Solenis
`
`cites U.S. Patent No. 7,601,858 (Ex. 2024) in arguing against the use of Winsness.
`
`Response at 18, FN. 4. However, during prosecution of the ’059 Patent, Solenis
`
`discussed Ex. 2024 noting that Ex. 2024 “[i]mportantly, [] specifically states that,
`
`despite the commercial significance of recovering the oil, efforts to efficiently and
`
`12
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`

`
`
`
`economically separate oil from the byproduct stream have failed.” Ex. 1002 at 90
`
`(citing Ex. 2024, ¶6).
`
`C. Winsness Is Aspirational
`Solenis provides no support for its contention that Rockstraw must blindly
`
`
`
`believe all aspects of Winsness, including aspirational process goals. Rockstraw
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`noted that Winsness acknowledges some examples are “prophetic.” See, e.g., Ex.
`
`2005, 289:15–22. Kohl agrees with Rockstraw’s interpretation. Ex. 2003, ¶39
`
`(“[a]t the time the 059 Patent was filed, this result, if true, would have been
`
`considered a high recovery”) (emphasis added).
`
`D. Alther Teaches Use of Polysorbate 80 to Break an Emulsion
`Alther states “Polysorbate 80 . . . can break the emulsion.” Ex. 1007, p. 83,
`
`col. 2, ¶5. And, in the context of centrifugal separation, Alther teaches that
`
`“[e]mulsion breakers or other chemicals can be added” to a centrifuge. Ex. 1007,
`
`p. 86, col. 1, ¶¶5–6. No hindsight is required. See, e.g., Petition at 8–47. Alther
`
`further notes, and Kohl confirmed, three specific chemicals that can be tried or
`
`used to break emulsions, namely polysorbate 80, monoglyceryl oleate, or
`
`diglyceryl oleate. Ex. 1007, p. 83, col. 2, ¶5; Ex. 1023, 64:22–66:1. Thus, Alther
`
`funnels one toward three chemical additives, one of which is claimed.
`
`
`
`While mischaracterizing and individually attacking Alther, Solenis quotes
`
`only a portion of Rockstraw’s answer. Response at 23. The complete answer
`
`13
`
`

`
`
`
`refutes Solenis’ position. Rockstraw states:
`
`
`
`But, again, an engineer would not look at all of them for a
`
`solution to a single, specific problem. He would narrow in on the
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`ones that are relevant to the solution of the problem he has at hand.
`
`
`
`I would never consider the inorganic solids and the aluminas
`
`and the ferrics and the things that are used in industrial wastewater
`
`treatment as a potential solution to this particular problem, because I
`
`recognize instantly that they generate sludges that would be
`
`incompatible with my goals in this particular separation.
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`Ex. 2005, 268:8–21; see also Ex. 2005, 249:8–13.
`
`
`
`Solenis relies upon Kohl for the proposition that Alther includes “a generic
`
`description of different options for further investigation.” Response at 24.
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`“Options” do not eliminate Alther’s clear teaching of polysorbate 80. Common
`
`sense would have instructed one using the centrifuge of Winsness to simply add
`
`Alther’s emulsion breaker (i.e., polysorbate 80) to improve that centrifuge, as
`
`opposed to scrapping the expensive centrifuge to pursue a “different option” using
`
`other mechanical equipment. Ex. 1012, ¶7. Adding the emulsion breaker to the
`
`centrifuge, as taught by Alther, is a routine step providing results in “three to five
`
`minutes.” See Ex. 2015, p. 2. Solenis takes the unreasonable position that one
`
`skilled in the art would not, at a minimum, try the explicit polysorbate 80 solution
`
`14
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`

`
`
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`taught by Alther.
`
`
`
`Solenis’ contention that “Alther exemplifies product streams much different
`
`than those found in corn-to-ethanol production” is incorrect. Response at 24, FN.
`
`5. Alther states that in “wastewater, oils are defined as substances that can be
`
`extracted from water by hexane.” Ex. 1007, p. 84, col. 3, ¶2. As confirmed by
`
`Kohl, the corn oil of Winsness can be extracted via “a hexane system.” Ex. 2003,
`
`¶41; see also Ex. 1001, 13:1–4.
`
`
`
`Alther does not teach away from the use of polysorbate 80 to break an oil-
`
`in-water emulsion based on corn oil having an HLB of 10. As explained by
`
`Rockstraw, an oil-in-water emulsion can include lipophilic and hydrophilic
`
`components. Ex. 1025, ¶¶13–23. It is the overall HLB of the system that ICI
`
`teaches impacts the stability or instability of the emulsion. Ex. 1025, ¶¶13–23.
`
`Given that an HLB of 10 is in the middle of the HLB scale, a surfactant of the
`
`“opposite type” can be of an HLB either above or below 10 and result in
`
`instability. Rockstraw provided further testimony about surfactant selection. See,
`
`e.g., Ex. 2005, 221:5–223:18. As further confirmed by Atlas, persons of ordinary
`
`skill were aware of HLB’s use in predicting demulsification for more than half a
`
`century before the ’059 Patent. See, e.g., 1027 at 24; Ex. 1025, ¶¶13–23. Alther
`
`does not discourage investigation into use of the claimed chemical additives to
`
`recover oil from corn to ethanol production.
`
`15
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`

`
`
`
`
`
`Solenis’ Contentions Do Not Undercut the Relevancy of Martin
`
`E.
`Hydrite maintains the applicability of Martin, as found by the Board.
`
`Nonetheless, Solenis continues to attack Martin individually by arguing differences
`
`between dry milling and wet milling. Response at 27–28. Solenis overlooks that
`
`one would clearly be aware of both processes. See, e.g., Ex. 2002. In fact,
`
`Solenis’ ’469 Patent states that its method “can be used in either a wet milling
`
`process or a dry milling process.” Ex. 1030, 2:1–2 (emphasis added). Solenis
`
`makes no attempt to address Martin’s discussion of using surfactants to reduce
`
`fouling of the centrifuge. See, e.g., Petition at 11 (citing Ex. 1010, 4:37–41); see
`
`also Petition at 54.
`
`F. Claims 4 and 5 Remain Unpatentable
`Claims 4 and 5, using surfactants with HLBs of 11 and 10.5, respectively,
`
`
`
`would have been obvious. See, e.g., Petition at 17–22; Ex. 1005, ¶¶93–107.
`
`Solenis again mischaracterizes “solely” relying on HLB and disingenuously
`
`contends that Rockstraw conceded that a surfactant “having an HLB slightly off
`
`the center of the depicted curve would not have been expected to affect stability.”
`
`Response at 30 (emphasis in original). However, the immediately following
`
`portion of Rockstraw’s deposition makes clear that he merely stated there is “a
`
`broader range around the midpoint [of family B] where changes in HLB don’t have
`
`much change on stability.” Ex. 2005, 228:16–19 (emphasis added). The overall
`
`16
`
`

`
`
`
`exchange between Solenis and Rockstraw evidences that ICI’s HLB teaching tool
`
`guides destabilizing an emulsion. See, e.g., 2005, 226:19–236:2, 221:5–223:18
`
`(arriving at TWEEN 85 (Claim 4)).
`
`V. REJECTIONS BASED UPON BONANNO (GROUNDS 7-9)
`INVALIDATE CLAIMS 1–3, 6, 10, AND 11
`A. Bonanno and ICI are Fundamentally Consistent
`Solenis attempts to conjure an inconsistency between Bonanno and ICI,
`
`while mischaracterizing Hydrite’s position. Response at 32–35. Solenis’
`
`arguments are irrelevant in view of the actual language of the claims. The claims
`
`do not define what occurs by addition of the surfactant chemical (e.g., whether an
`
`emulsion if present is broken, or if not present is inhib