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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`HYDRITE CHEMICAL CO.,
`Petitioner,
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`v.
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`SOLENIS TECHNOLOGIES, L.P.,
`Patent Owner.
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`
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`Case IPR2015-01592
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`U.S. Patent No. 8,962,059
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`PETITIONER’S RESPONSE
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`TO
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`PATENT OWNER’S MOTION FOR OBSERVATIONS ON CROSS EXAMINATION OF
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`PETITIONER’S REPLY WITNESS
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`DAVID A. ROCKSTRAW
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`Petitioner submits the following responses to Patent Owner’s Motion for
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`Observation on Cross Examination of Petitioner’s Reply Witness David A.
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`Rockstraw (Paper No. 25) (“Patent Owner’s Observations”). See IPR2013-00057,
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`Paper No. 29, p. 3; see also Office Patent Trial Practice Guide, 77 Fed. Reg. at
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`48,768. In addition to the explicit, concise responses provided below, Petitioner
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`generally takes exception to Patent Owner’s Observations to the extent it is being
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`used to argue issues related to Patent Owner’s contentions of “new reply evidence”
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`or arguments outside of the Board’s explicit Order on these issues. See Paper No.
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`24.
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`Petitioner notes that the initial reference to Exhibit 2029 on page 1 of Patent
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`Owner’s Observations appears to be a typographical error—the August 2, 2016
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`deposition transcript of David A. Rockstraw was filed by Patent Owner as Exhibit
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`2028.
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`In addition, Patent Owner also appears to reference unrelated pages of its
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`Patent Owner Response (Paper No. 15) in connection with Observations 1–3 and
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`5-8. Specifically, Patent Owner refers to pages 35–36 of Patent Owner’s
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`Response, which discuss Bonanno. Observations 4 and 11 do not suffer from the
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`same uncertainty and cite to “Patent Owner’s Identification of New Evidence and
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`Arguments in Petitioner’s Reply Papers” for purported relevance. While Petitioner
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`could have responded that the respective Observations are not relevant to the cited
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`2
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`Bonanno portions, in an effort to earnestly respond, Petitioner has endeavored to
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`surmise what pages Patent Owner intended to reference. Petitioner respectfully
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`requests that the Board not prejudice Petitioner as a result of the oversights made
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`by Patent Owner in its Patent Owner’s Observations.
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`Response to Patent Owner’s Observation 1:
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`In Exhibit 2028 at 11:24–12:4, Dr. Rockstraw testified that the definition of
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`the word “opposite” would “depend on the situation.” This testimony is relevant to
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`the characterization of Dr. Rockstraw’s testimony on page 1 of Patent Owner’s
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`Observations. The testimony is relevant because Dr. Rockstraw was asked to
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`define the word “opposite” in the abstract.
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`In Exhibit 2028 at 11:24–17:18, Dr. Rockstraw testified in response to
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`Patent Owner’s hypothetical scenario. This testimony is relevant to the
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`characterization of Dr. Rockstraw’s testimony on page 1 of Patent Owner’s
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`Observations. The testimony is relevant because Dr. Rockstraw was bounded by
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`the hypothetical scenario and not addressing Alther (Ex. 1007).
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`In Exhibit 2028 at 40:20–42:13, Dr. Rockstraw testified that in “a system
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`where the HLB is 10, an emulsifier that’s 10.5 is on the opposite side of the
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`stability peak for one that’s 9.5” and that he “would define the opposite there as in
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`a direction away from the stability peak.” This testimony is relevant to the
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`3
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`characterization of Dr. Rockstraw’s testimony on page 1 of Patent Owner’s
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`Observations. The testimony is relevant because it is consistent with Petitioner’s
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`and Dr. Rockstraw’s application of Alther (Ex. 1007) and ICI (Ex. 1008) (e.g., the
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`HLB system) set forth in the Petition (Paper No. 1) at, for example, pages 8–13
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`and Ex. 1005 (Dr. Rockstraw’s declaration) at, for example, ¶¶ 78–88, and
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`responsive to Patent Owner’s Response (Paper No. 15) at, for example, pages 24–
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`26.
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`Response to Patent Owner’s Observation 2:
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`In Exhibit 2028 at 18:23–19:12, Dr. Rockstraw testified that the conjunction
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`“or” is “connecting two options essentially.” This testimony is relevant to the
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`characterization of Dr. Rockstraw’s testimony on pages 1–2 of Patent Owner’s
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`Observations. The testimony is relevant because Dr. Rockstraw was asked to
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`address the conjunction “or” in the abstract.
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`In Exhibit 2028 at 37:17–21 and 40:20–41:24, Dr. Rockstraw testifies that
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`“Alther is also including the emulsifiers themselves in his comparisons,” and that
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`Alther teaches that it “disrupts the HLB.” This testimony is relevant to the
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`characterization of Alther on pages 1–2 of Patent Owner’s Observations. The
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`testimony is relevant because it is consistent with Petitioner’s and Dr. Rockstraw’s
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`application of Alther (Ex. 1007) and ICI (Ex. 1008) (e.g., the HLB system) set
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`4
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`forth in the Petition (Paper No. 1) at, for example, pages 8–13 and Ex. 1005 (Dr.
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`Rockstraw’s declaration) at, for example, ¶¶ 78–88, and responsive to Patent
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`Owner’s Response (Paper No. 15) at, for example, pages 24–26.
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`Response to Patent Owner’s Observation 3:
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`In Exhibit 2028 at 39:18–42:13, Dr. Rockstraw testifies that Alther is
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`“referring to the HLB of the system” and that he “would define the opposite there
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`as in a direction away from the stability peak.” This testimony is relevant to the
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`characterization of Alther on page 2 of Patent Owner’s Observations. The
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`testimony is relevant because it is consistent with Petitioner’s and Dr. Rockstraw’s
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`application of Alther (Ex. 1007) and ICI (Ex. 1008) (e.g., the HLB system) set
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`forth in the Petition (Paper No. 1) at, for example, pages 8–13 and Ex. 1005 (Dr.
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`Rockstraw’s declaration) at, for example, ¶¶ 78–88, and responsive to Patent
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`Owner’s Response (Paper No. 15) at, for example, pages 24–26.
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`Response to Patent Owner’s Observation 4:
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`In Exhibit 2028 at 26:3–12, 31:4–21, 48:22–49:4, 71:16–21, 72:8–13, 74:7–
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`10, 97:9–19, and 99:14–24, Dr. Rockstraw testifies regarding his understanding
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`and application of Atlas. This testimony is relevant to the characterization of Atlas
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`on page 3 of Patent Owner’s Observations. The testimony is relevant because it is
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`5
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`consistent with Petitioner’s and Dr. Rockstraw’s application of Alther (Ex. 1007)
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`and ICI (Ex. 1008) (e.g., the HLB system) set forth in the Petition (Paper No. 1) at,
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`for example, pages 8–13 and Ex. 1005 (Dr. Rockstraw’s declaration) at, for
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`example, ¶¶ 78–88, and responsive to Patent Owner’s Response (Paper No. 15) at,
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`for example, pages 24–26.
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`Response to Patent Owner’s Observations 5, 6, and 8:
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`In Exhibit 2028 at 63:19–64:2, 65:20–69:11, and 71:16–72:13, Dr.
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`Rockstraw testifies regarding his original declaration (Ex. 1005) and his reply
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`declaration (Ex. 1025). This testimony is relevant to Patent Owner’s arguments on
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`pages 24-26 of Patent Owner’s Response (Paper No. 15). The testimony is
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`relevant because it is responsive to Patent Owner’s Response (Paper No. 15) at, for
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`example, pages 24–26 and Petitioner’s responsive remarks addressing a purported
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`teaching away based upon Dr. Rockstraw’s original declaration (Ex. 1005) and
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`Alther (Ex. 1007) as set forth in the Petitioner’s Reply (Paper No. 21) at, for
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`example, page 15.
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`Response to Patent Owner’s Observation 7:
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`In Exhibit 2028 at 97:9–99:24 and 100:16–102:14, Dr. Rockstraw testifies
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`regarding the HLB of corn stillage.
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` This testimony is relevant to the
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`6
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`characterization of Dr. Rockstraw’s testimony on pages 4–5 of Patent Owner’s
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`Observations. The testimony is relevant because it is consistent with Petitioner’s
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`and Dr. Rockstraw’s application of Alther (Ex. 1007) and ICI (Ex. 1008) set forth
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`in the Petition (Paper No. 1) at, for example, pages 8–13 and Ex. 1005 (Dr.
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`Rockstraw’s declaration) at, for example, ¶¶ 78–88, and responsive to Patent
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`Owner’s Response (Paper No. 15) at, for example, pages 24–26.
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`Response to Patent Owner’s Observation 9:
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`In Exhibit 2028 at 45:2–48:13, Dr. Rockstraw testifies regarding Cereal
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`Science (Ex. 1028). This testimony is relevant to the characterization of Dr.
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`Rockstraw’s testimony on pages 5–6 of Patent Owner’s Observations. The
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`testimony is relevant because it is consistent with Petitioner’s and Dr. Rockstraw’s
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`reference to Cereal Science in Petitioner’s Reply (Paper No. 21) at, for example,
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`page 15 and Ex. 1025 (Dr. Rockstraw’s reply declaration) at, for example, ¶ 23,
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`and responsive to Patent Owner’s Response (Paper No. 15) at, for example, pages
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`24–26.
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`Response to Patent Owner’s Observation 10:
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`In Exhibit 2028 at 75:20–85:20, Dr. Rockstraw testifies regarding Patent
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`Owner’s secondary considerations stating that “the evidence” considered “didn’t
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`7
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`change [his] opinion on obviousness.” This testimony is relevant to the
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`characterization of Dr. Rockstraw’s testimony on page 6 of Patent Owner’s
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`Observations. The testimony is relevant because it is consistent with Petitioner’s
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`and Dr. Rockstraw’s position on Patent Owner’s secondary considerations in
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`Petitioner’s Reply (Paper No. 21) at, for example, pages 22–25 and Ex. 1025 (Dr.
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`Rockstraw’s reply declaration) at, for example, ¶ 24, and responsive to Patent
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`Owner’s Response (Paper No. 15) at, for example, pages 39–45.
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`Response to Patent Owner’s Observation 11:
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`In Exhibit 2028 at 88:24–89:10, Dr. Rockstraw testifies regarding CVEC
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`(Ex. 1022) stating that “[c]ounsel asked me not to use it [(i.e., CVEC)] suggesting
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`that the documents I had already accumulated were sufficient.” This testimony is
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`relevant to the characterization of Dr. Rockstraw’s testimony on pages 6–7 of
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`Patent Owner’s Observations. The testimony is relevant because it is consistent
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`with Petitioner’s use of CVEC in Petitioner’s Reply (Paper No. 21) at, for
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`example, pages 1 and 8, and responsive to Patent Owner’s Response (Paper No.
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`15) at, for example, pages 1–2 and 14–17.
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`Date: August 22, 2016
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`Respectfully submitted,
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`/Joel A. Austin/
`Joel A. Austin
`Reg. No. 59,712
`Back-up Counsel for Petitioner
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`By:
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`8
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`HYDRITE CHEMICAL CO.,
`Petitioner,
`
`v.
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`SOLENIS TECHNOLOGIES, L.P.,
`Patent Owner.
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`
`
`Case IPR2015-01592
`Patent 8,962,059
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`CERTIFICATE OF SERVICE
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`Filed via PRPS
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`Dear Board:
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`I hereby certify on this 22nd day of August 2016, that a true and correct
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`copy of the PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
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`OBSERVATIONS ON CROSS EXAMINATION OF PETITIONER’S REPLY
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`WITNESS DAVID A. ROCKSTRAW was electronically mailed in its entirety to:
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`IPR2015-01592@bakerlaw.com
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`jlucci@bakerlaw.com
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`dfarsiou@bakerlaw.com
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`Date: August 22, 2016
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`By:
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`Respectfully submitted,
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`/Michael Piery/
`Michael Piery
`Reg. No. 71,915
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`2