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