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 OBJECTIONS TO EVIDENCE SUBMITTED WITH
`PETITIONER’S REPLY
`
`
`___________
`
`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 OBJECTIONS TO EVIDENCE SUBMITTED WITH
`PETITIONER’S REPLY
`
`
`
`IPR2015-01592
`Objections to Evidence
`Pursuant to 37 C.F.R. §§ 42.64(b)(1), Patent Owner, Solenis Technologies,
`
`L.P. (“Solenis” or “Patent Owner”), objects to evidence and arguments submitted
`
`by Petitioner, Hydrite Chemical Co., (“Hydrite” or “Petitioner”) in connection with
`
`its Petitioner’s Reply to Patent Owner’s Response, filed on July 15, 2016, for the
`
`following reasons:
`
`1. Solenis objects to Petitioner’s Reply because it contains arguments and
`
`evidence (addressing, for example, motivation to combine and objective
`
`indicia of nonobviousness) that should have been addressed in the
`
`petition, and/or that raise new issues for the first time on reply that could
`
`have been raised in the petition. See 37 CFR § 43.23(b) (“[a] reply may
`
`only respond to arguments raised in the corresponding…patent owner
`
`response.”) and Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`48,767 (Aug. 14, 2012) (“While replies can help crystallize issues for
`
`decision, a reply that raises a new issue or belatedly presents evidence
`
`will not be considered and may be returned. The Board will not attempt
`
`to sort proper from improper portions of the reply. Examples of
`
`indications that a new issue has been raised in a reply include new
`
`evidence necessary to make out a prima facie case for the patentability or
`
`unpatentability of an original or proposed substitute claim, and new
`
`
`
`1
`
`
`
`IPR2015-01592
`Objections to Evidence
`evidence that could have been presented in a prior filing.”). Examples
`
`include the following:
`
`a. New evidence/argument concerning simultaneous invention,
`
`including reference to U.S. Patent No. 8,841,469.
`
`b. New argument/rationale concerning the Rockstraw testimony on
`
`pages 4-7.
`
`2. Solenis objects to Hydrite’s Ex. 1022 because it has not been
`
`authenticated as required by Federal Rule of Evidence (“FRE”) 901 and
`
`is not self-authenticating under FRE 902. Additionally, Solenis objects
`
`to Ex. 1022 under FRE 801 because it is hearsay and contains hearsay.
`
`For example, Hydrite relies on Ex. 1022 for the truth of the matter
`
`asserted – that the “slides disclose corn oil recovery through the addition
`
`of polysorbate 80/Tween 80.” Solenis also objects to Ex. 1022 under
`
`FRE 401-403 because this document is irrelevant to the issues in the
`
`proceeding, including being irrelevant to establishing whether there was
`
`any guidance and motivation that would have allowed a person of
`
`ordinary skill to arrive at the ’469 Patent’s claims, and is misleading in
`
`how it is being presented. Further, Hydrite has failed to establish when
`
`Ex. 1022 was first publicly available.
`
`
`
`2
`
`
`
`IPR2015-01592
`Objections to Evidence
`3. Solenis objects to Hydrite’s Ex. 1025 because it contains impermissible
`
`new issues and new evidence and arguments, including in reference to
`
`Exhibits 1027 and 1028, to support its prima facie case for
`
`unpatentability that could have been presented in a prior filing. See 37
`
`CFR § 43.23(b) and Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,767 (Aug. 14, 2012).
`
`4. Solenis objects to Hydrite’s Ex. 1027 because it has not been
`
`authenticated as required by FRE 901 and is not self-authenticating under
`
`FRE 902. Additionally, Solenis objects to Ex. 1027 under FRE 801
`
`because it is hearsay and contains hearsay. For example, Hydrite relies
`
`on Ex. 1027 for the truth of the matter asserted – that “an ‘HLB opposing
`
`that for emulsion being treated’ can be used as ‘DEMULSIFIERS.’”
`
`Solenis also objects to Ex. 1027 under FRE 401-403 because this
`
`document is irrelevant to the issues in the proceeding, including being
`
`irrelevant to establishing whether there was any guidance and motivation
`
`that would have allowed a person of ordinary skill to arrive at the ’469
`
`Patent’s claims, and is misleading in how it is being presented.
`
`Furthermore, Solenis objects to Hydrite’s Ex. 1027 because it raises
`
`impermissible new issues that could have been presented in the petition.
`
`
`
`3
`
`
`
`IPR2015-01592
`Objections to Evidence
`See 37 CFR § 43.23(b) and Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, 48,767 (Aug. 14, 2012).
`
`5. Solenis objects to Hydrite’s Ex. 1028 under FRE 401-403 because it is
`
`irrelevant to the issues in this proceeding. Additionally, Solenis objects
`
`to Ex. 1028 because it has not been authenticated under FRE 901 and is
`
`not self-authenticating under FRE 902. Solenis also objects to Ex. 1028
`
`under FRE 801 because it is hearsay and contains hearsay. For example,
`
`Ex. 1028 is being offered for the truth of the matter asserted – that
`
`phosphatides are naturally present in corn oil.
`
`6. Solenis objects to Hydrite’s Ex. 1029 because it has not been
`
`authenticated under FRE 901 and is not self-authenticating under FRE
`
`902. Additionally, Solenis objects to Ex. 1029 under FRE 801 because it
`
`is hearsay and contains hearsay. For example, Hydrite relies on Ex. 1029
`
`for the truth of the matter asserted – “that biodiesel production and the
`
`low carbon fuel standard increasing demand for corn oil.” Solenis also
`
`objects to Ex. 1029 under FRE 401-403 because the document is
`
`irrelevant to the issues in the proceeding, including being irrelevant to
`
`refuting any objective indicia of nonobviousness, and is misleading in
`
`how it is being offered.
`
`
`
`4
`
`
`
`IPR2015-01592
`Objections to Evidence
`7. Solenis objects to Hydrite’s Ex. 1030 to the extent Hydrite relies upon it
`
`in support of arguments (addressing, for example, motivation to combine
`
`and objective indicia of nonobviousness) that should have been addressed
`
`in the petition, and/or that raise new issues for the first time on reply that
`
`could have been raised in the petition. See 37 CFR § 43.23(b) and Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14,
`
`2012).
`
`Solenis reserves the right to object to the admissibility of any exhibit offered
`
`by Hydrite at the time such exhibit is offered in view of the specific context in
`
`which such exhibit is offered or for any other reason, as set forth in the Code of
`
`Federal Regulations, the Federal Rules of Evidence, or any other applicable
`
`principle of law.
`
`These objections have been filed and served within five (5) business days of
`
`service of the objectionable evidence on July 15, 2016.
`
`
`
`
`
`Dated: July 17, 2016
`
`
`
`Respectfully submitted,
`
`/Joseph Lucci/
`Joseph Lucci
`Reg. No. 33,307
`Baker & Hostetler LLP
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104
`215-568-3100 main
`5
`
`
`
`IPR2015-01592
`Objections to Evidence
`215-568-3439 fax
`jlucci@bakerlaw.com
`
`Attorney for Patent Owner
`
`
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`I, David N. Farsiou, hereby certify that on this 17th day of July, 2016 the
`foregoing PATENT OWNER’S OBJECTIONS TO EVIDENCE SUBMITTED
`WITH PETITIONER’S REPLY was served electronically via e-mail on the
`following:
`
`
`Richard Roche
`Joel A. Austin
`Christopher J. Fahy
`QUARLES & BRADY LLP
`411 East Wisconsin Avenue
`Suite 2350
`Milwaukee, Wisconsin 53202
`richard.roche@quarles.com
`joel.austin@quarles.com
`christopher.fahy@quarles.com
`
`
`
`
`/David N. Farsiou/
`David N. Farsiou
`Reg. No. 44,104
`Baker & Hostetler LLP
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104
`
`Attorney for Patent Owner
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