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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 RESPONSE
`
`TO
`
`PATENT OWNER’S MOTION FOR OBSERVATIONS ON CROSS EXAMINATION OF
`
`PETITIONER’S REPLY WITNESS
`
`DAVID A. ROCKSTRAW
`
`
`
`
`
`
`
`
`
`
`
`

`
`
`
`Petitioner submits the following responses to Patent Owner’s Motion for
`
`Observation on Cross Examination of Petitioner’s Reply Witness David A.
`
`Rockstraw (Paper No. 25) (“Patent Owner’s Observations”). See IPR2013-00057,
`
`Paper No. 29, p. 3; see also Office Patent Trial Practice Guide, 77 Fed. Reg. at
`
`48,768. In addition to the explicit, concise responses provided below, Petitioner
`
`generally takes exception to Patent Owner’s Observations to the extent it is being
`
`used to argue issues related to Patent Owner’s contentions of “new reply evidence”
`
`or arguments outside of the Board’s explicit Order on these issues. See Paper No.
`
`24.
`
`
`
`Petitioner notes that the initial reference to Exhibit 2029 on page 1 of Patent
`
`Owner’s Observations appears to be a typographical error—the August 2, 2016
`
`deposition transcript of David A. Rockstraw was filed by Patent Owner as Exhibit
`
`2028.
`
`
`
`In addition, Patent Owner also appears to reference unrelated pages of its
`
`Patent Owner Response (Paper No. 15) in connection with Observations 1–3 and
`
`5-8. Specifically, Patent Owner refers to pages 35–36 of Patent Owner’s
`
`Response, which discuss Bonanno. Observations 4 and 11 do not suffer from the
`
`same uncertainty and cite to “Patent Owner’s Identification of New Evidence and
`
`Arguments in Petitioner’s Reply Papers” for purported relevance. While Petitioner
`
`could have responded that the respective Observations are not relevant to the cited
`
`2
`
`

`
`Bonanno portions, in an effort to earnestly respond, Petitioner has endeavored to
`
`surmise what pages Patent Owner intended to reference. Petitioner respectfully
`
`requests that the Board not prejudice Petitioner as a result of the oversights made
`
`by Patent Owner in its Patent Owner’s Observations.
`
`
`
`Response to Patent Owner’s Observation 1:
`
`
`
`In Exhibit 2028 at 11:24–12:4, Dr. Rockstraw testified that the definition of
`
`the word “opposite” would “depend on the situation.” This testimony is relevant to
`
`the characterization of Dr. Rockstraw’s testimony on page 1 of Patent Owner’s
`
`Observations. The testimony is relevant because Dr. Rockstraw was asked to
`
`define the word “opposite” in the abstract.
`
`
`
`In Exhibit 2028 at 11:24–17:18, Dr. Rockstraw testified in response to
`
`Patent Owner’s hypothetical scenario. This testimony is relevant to the
`
`characterization of Dr. Rockstraw’s testimony on page 1 of Patent Owner’s
`
`Observations. The testimony is relevant because Dr. Rockstraw was bounded by
`
`the hypothetical scenario and not addressing Alther (Ex. 1007).
`
`
`
`In Exhibit 2028 at 40:20–42:13, Dr. Rockstraw testified that in “a system
`
`where the HLB is 10, an emulsifier that’s 10.5 is on the opposite side of the
`
`stability peak for one that’s 9.5” and that he “would define the opposite there as in
`
`a direction away from the stability peak.” This testimony is relevant to the
`
`3
`
`

`
`characterization of Dr. Rockstraw’s testimony on page 1 of Patent Owner’s
`
`Observations. The testimony is relevant because it is consistent with Petitioner’s
`
`and Dr. Rockstraw’s application of Alther (Ex. 1007) and ICI (Ex. 1008) (e.g., the
`
`HLB system) set forth in the Petition (Paper No. 1) at, for example, pages 8–13
`
`and Ex. 1005 (Dr. Rockstraw’s declaration) at, for example, ¶¶ 78–88, and
`
`responsive to Patent Owner’s Response (Paper No. 15) at, for example, pages 24–
`
`26.
`
`
`
`Response to Patent Owner’s Observation 2:
`
`
`
`In Exhibit 2028 at 18:23–19:12, Dr. Rockstraw testified that the conjunction
`
`“or” is “connecting two options essentially.” This testimony is relevant to the
`
`characterization of Dr. Rockstraw’s testimony on pages 1–2 of Patent Owner’s
`
`Observations. The testimony is relevant because Dr. Rockstraw was asked to
`
`address the conjunction “or” in the abstract.
`
`
`
`In Exhibit 2028 at 37:17–21 and 40:20–41:24, Dr. Rockstraw testifies that
`
`“Alther is also including the emulsifiers themselves in his comparisons,” and that
`
`Alther teaches that it “disrupts the HLB.” This testimony is relevant to the
`
`characterization of Alther on pages 1–2 of Patent Owner’s Observations. The
`
`testimony is relevant because it is consistent with Petitioner’s and Dr. Rockstraw’s
`
`application of Alther (Ex. 1007) and ICI (Ex. 1008) (e.g., the HLB system) set
`
`4
`
`

`
`forth in the Petition (Paper No. 1) at, for example, pages 8–13 and Ex. 1005 (Dr.
`
`Rockstraw’s declaration) at, for example, ¶¶ 78–88, and responsive to Patent
`
`Owner’s Response (Paper No. 15) at, for example, pages 24–26.
`
`
`
`Response to Patent Owner’s Observation 3:
`
`
`
`In Exhibit 2028 at 39:18–42:13, Dr. Rockstraw testifies that Alther is
`
`“referring to the HLB of the system” and that he “would define the opposite there
`
`as in a direction away from the stability peak.” This testimony is relevant to the
`
`characterization of Alther on page 2 of Patent Owner’s Observations. The
`
`testimony is relevant because it is consistent with Petitioner’s and Dr. Rockstraw’s
`
`application of Alther (Ex. 1007) and ICI (Ex. 1008) (e.g., the HLB system) set
`
`forth in the Petition (Paper No. 1) at, for example, pages 8–13 and Ex. 1005 (Dr.
`
`Rockstraw’s declaration) at, for example, ¶¶ 78–88, and responsive to Patent
`
`Owner’s Response (Paper No. 15) at, for example, pages 24–26.
`
`
`
`Response to Patent Owner’s Observation 4:
`
`
`
`In Exhibit 2028 at 26:3–12, 31:4–21, 48:22–49:4, 71:16–21, 72:8–13, 74:7–
`
`10, 97:9–19, and 99:14–24, Dr. Rockstraw testifies regarding his understanding
`
`and application of Atlas. This testimony is relevant to the characterization of Atlas
`
`on page 3 of Patent Owner’s Observations. The testimony is relevant because it is
`
`5
`
`

`
`consistent with Petitioner’s and Dr. Rockstraw’s application of Alther (Ex. 1007)
`
`and ICI (Ex. 1008) (e.g., the HLB system) set forth in the Petition (Paper No. 1) at,
`
`for example, pages 8–13 and Ex. 1005 (Dr. Rockstraw’s declaration) at, for
`
`example, ¶¶ 78–88, and responsive to Patent Owner’s Response (Paper No. 15) at,
`
`for example, pages 24–26.
`
`
`
`Response to Patent Owner’s Observations 5, 6, and 8:
`
`
`
`In Exhibit 2028 at 63:19–64:2, 65:20–69:11, and 71:16–72:13, Dr.
`
`Rockstraw testifies regarding his original declaration (Ex. 1005) and his reply
`
`declaration (Ex. 1025). This testimony is relevant to Patent Owner’s arguments on
`
`pages 24-26 of Patent Owner’s Response (Paper No. 15). The testimony is
`
`relevant because it is responsive to Patent Owner’s Response (Paper No. 15) at, for
`
`example, pages 24–26 and Petitioner’s responsive remarks addressing a purported
`
`teaching away based upon Dr. Rockstraw’s original declaration (Ex. 1005) and
`
`Alther (Ex. 1007) as set forth in the Petitioner’s Reply (Paper No. 21) at, for
`
`example, page 15.
`
`
`
`Response to Patent Owner’s Observation 7:
`
`
`
`In Exhibit 2028 at 97:9–99:24 and 100:16–102:14, Dr. Rockstraw testifies
`
`regarding the HLB of corn stillage.
`
` This testimony is relevant to the
`
`6
`
`

`
`characterization of Dr. Rockstraw’s testimony on pages 4–5 of Patent Owner’s
`
`Observations. The testimony is relevant because it is consistent with Petitioner’s
`
`and Dr. Rockstraw’s application of Alther (Ex. 1007) and ICI (Ex. 1008) set forth
`
`in the Petition (Paper No. 1) at, for example, pages 8–13 and Ex. 1005 (Dr.
`
`Rockstraw’s declaration) at, for example, ¶¶ 78–88, and responsive to Patent
`
`Owner’s Response (Paper No. 15) at, for example, pages 24–26.
`
`
`
`Response to Patent Owner’s Observation 9:
`
`
`
`In Exhibit 2028 at 45:2–48:13, Dr. Rockstraw testifies regarding Cereal
`
`Science (Ex. 1028). This testimony is relevant to the characterization of Dr.
`
`Rockstraw’s testimony on pages 5–6 of Patent Owner’s Observations. The
`
`testimony is relevant because it is consistent with Petitioner’s and Dr. Rockstraw’s
`
`reference to Cereal Science in Petitioner’s Reply (Paper No. 21) at, for example,
`
`page 15 and Ex. 1025 (Dr. Rockstraw’s reply declaration) at, for example, ¶ 23,
`
`and responsive to Patent Owner’s Response (Paper No. 15) at, for example, pages
`
`24–26.
`
`
`
`Response to Patent Owner’s Observation 10:
`
`
`
`In Exhibit 2028 at 75:20–85:20, Dr. Rockstraw testifies regarding Patent
`
`Owner’s secondary considerations stating that “the evidence” considered “didn’t
`
`7
`
`

`
`change [his] opinion on obviousness.” This testimony is relevant to the
`
`characterization of Dr. Rockstraw’s testimony on page 6 of Patent Owner’s
`
`Observations. The testimony is relevant because it is consistent with Petitioner’s
`
`and Dr. Rockstraw’s position on Patent Owner’s secondary considerations in
`
`Petitioner’s Reply (Paper No. 21) at, for example, pages 22–25 and Ex. 1025 (Dr.
`
`Rockstraw’s reply declaration) at, for example, ¶ 24, and responsive to Patent
`
`Owner’s Response (Paper No. 15) at, for example, pages 39–45.
`
`
`
`Response to Patent Owner’s Observation 11:
`
`
`
`In Exhibit 2028 at 88:24–89:10, Dr. Rockstraw testifies regarding CVEC
`
`(Ex. 1022) stating that “[c]ounsel asked me not to use it [(i.e., CVEC)] suggesting
`
`that the documents I had already accumulated were sufficient.” This testimony is
`
`relevant to the characterization of Dr. Rockstraw’s testimony on pages 6–7 of
`
`Patent Owner’s Observations. The testimony is relevant because it is consistent
`
`with Petitioner’s use of CVEC in Petitioner’s Reply (Paper No. 21) at, for
`
`example, pages 1 and 8, and responsive to Patent Owner’s Response (Paper No.
`
`15) at, for example, pages 1–2 and 14–17.
`
`
`
`
`
`
`
`
`
`Date: August 22, 2016
`
`
`
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`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/Joel A. Austin/
`Joel A. Austin
`Reg. No. 59,712
`Back-up Counsel for Petitioner
`
`By:
`
`
`
`
`8
`
`

`
`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 8,962,059
`
`
`CERTIFICATE OF SERVICE
`
`
`
`Filed via PRPS
`
`Dear Board:
`
`
`
`I hereby certify on this 22nd day of August 2016, that a true and correct
`
`copy of the PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`
`OBSERVATIONS ON CROSS EXAMINATION OF PETITIONER’S REPLY
`
`WITNESS DAVID A. ROCKSTRAW was electronically mailed in its entirety to:
`
`IPR2015-01592@bakerlaw.com
`
`jlucci@bakerlaw.com
`
`dfarsiou@bakerlaw.com
`
`
`
`
`
`

`
`
`
`
`
`
`
`
`
`
`
`Date: August 22, 2016
`
`
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`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`/Michael Piery/
`Michael Piery
`Reg. No. 71,915
`
`
`
`
`
`2

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