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 PRELIMINARY RESPONSE TO PETITION
`
`
`___________
`
`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 PRELIMINARY RESPONSE TO PETITION
`
`
`
`
`
`I.
`
`TABLE OF CONTENTS
`
`Introduction ........................................................................................................ 1
`
`II. The Board Should Decline to Consider Hydrite’s Grounds and References
` Because They Are Redundant and Cumulative ................................................. 2
`
`A. The Proposed Grounds of Rejection Are Horizontally Redundant .............. 2
`
`B. The Cited Art Is Cumulative of a Prior Office Proceeding .......................... 5
`
`III. Hydrite Has Failed To Establish a Reasonable Likelihood That At Least One
`of the Challenged Claims Is Unpatentable ...................................................... 7
`
`A. Standard for Instituting Inter Partes Review ................................................ 7
`
`B. The 059 Patent ............................................................................................... 7
`
`C. Hydrite Fails to Establish Unpatentability of the Challenged Claims Based
`on Winsness (Grounds 1-6) ........................................................................... 9
`
`1. Hydrite Fails to Identify Any Reason Why a Person of Ordinary Skill
`Would Have Combined Winsness with Alther .......................................... 9
`
`2. Hydrite Fails To Reconcile the Fundamental Incompatibilities Among
`Winsness and Alther ................................................................................ 11
`
`3. Secondary References Martin and ICI Do Not Cure the Deficiencies of
`Winsness and Alther ................................................................................ 17
`
`D. Hydrite Fails to Establish Unpatentability of the Challenged Claims Based
`on Bonanno (Grounds 7-9) ........................................................................ 22
`
`1. Hydrite’s Proposed Combination of Bonanno and ICI is Refuted by the
`References’ Incompatible Teachings ....................................................... 22
`
`i
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`
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`
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`2. The Remaining Secondary References Do Not Cure the Deficiencies of
`Bonanno and ICI ...................................................................................... 24
`
`IV.
`
`Conclusion ................................................................................................... 26
`
`
`
`
`
`ii
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`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Aker Biomarine AS v. Neptune Techs.,
`No. IPR2014-00003 .......................................................................................... 3, 4
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................ 24
`
`In re Hedges,
`783 F.2d 1038 (Fed. Cir. 1986) .......................................................................... 15
`
`LG Elecs., Inc. v. ATI Techs. ULC,
`No. IPR2015-00330 .............................................................................................. 2
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`No. CBM2012-00003 ........................................................................................... 2
`
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987) .......................................................................... 24
`
`In re Wesslau,
`353 F.2d 238 (CCPA 1965) ................................................................................ 15
`
`Statutes
`
`37 C.F.R. § 42.108(c) ................................................................................................. 1
`
`35 U.S.C. § 314(a) ..................................................................................................... 7
`
`35 U.S.C. § 316(e) ..................................................................................................... 7
`
`35 U.S.C. § 325(d) ............................................................................................. 1, 5, 6
`
`iii
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`I.
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`IPR2015-01592
`Patent Owner’s Preliminary Response
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`Introduction
`The Board should deny the Petition for inter partes review of U.S. Patent
`
`No. 8,962,059 (“the 059 Patent”) due to both procedural and substantive defects.
`
`First, Petitioner, Hydrite Chemical Co. (“Hydrite”) advances multiple,
`
`alternative grounds for most of the challenged claims but provides no meaningful
`
`distinction between them. This is contrary to this Board’s precedent and Hydrite’s
`
`obligation to present its best case in a petition for inter partes review.
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`Additionally, many of the references that Hydrite cites, including the teachings of
`
`its two primary references, were of record during prosecution of the 059 Patent and
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`thus are cumulative under 35 U.S.C. § 325(d). Accordingly, the Board should
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`decline to consider most, if not all, of these redundant and cumulative grounds and
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`references.
`
`Second, Hydrite has failed to establish a reasonable likelihood that at least
`
`one of the challenged claims of the 059 Patent is unpatentable. 37 C.F.R. §
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`42.108(c). Rather, Hydrite’s Petition is based on factually incorrect premises and
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`presents a textbook example of picking and choosing from a reference only so
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`much as will support an argument to the exclusion of other parts necessary for a
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`full appreciation of what the reference fairly suggests, including parts that lead
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`away from the claimed inventions.
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`IPR2015-01592
`Patent Owner’s Preliminary Response
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`In view of the foregoing reasons, Hydrite’s Petition should be rejected in its
`
`
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`entirety.
`
`II. The Board Should Decline to Consider Hydrite’s Grounds and
`References Because They Are Redundant and Cumulative
`A. The Proposed Grounds of Rejection Are Horizontally Redundant
`The Board should deny institution based on the redundant grounds that
`
`Hydrite asserts in the Petition. The Board has made clear “that multiple grounds,
`
`which are presented in a redundant manner by a petitioner who makes no
`
`meaningful distinction between them, are contrary to the regulatory and statutory
`
`mandates, and therefore are not all entitled to consideration.” Liberty Mutual Ins.
`
`Co. v. Progressive Casualty Ins. Co., No. CBM2012-00003, Paper No. 7, Order
`
`(Redundant Grounds) at 2 (P.T.A.B. Oct. 25, 2012) (expanded panel). Redundant
`
`grounds exist when “a plurality of prior art references [are] applied not in
`
`combination to complement each other but as distinct and separate alternatives.”
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`Id. at 3. “To avoid a determination that a requested ground of review is redundant
`
`of another requested ground, a petitioner must articulate a meaningful distinction
`
`in terms of relative strengths and weaknesses with respect to application of the
`
`prior art reference disclosures to one or more claim limitations.” LG Elecs., Inc. v.
`
`ATI Techs. ULC, No. IPR2015-00330, Paper 17 at 4 (P.T.A.B. Sept. 2, 2015)
`
`(internal quotations and citations omitted). But “[s]imply proposing different
`
`
`
`2
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`
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`grounds of unpatentability directed to the same subset of claims does not
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`IPR2015-01592
`Patent Owner’s Preliminary Response
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`distinguish meaningfully the applied prior art references.” Aker Biomarine AS v.
`
`Neptune Techs., No. IPR2014-00003, Paper 106 at 6 (P.T.A.B. July 9, 2015).
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`In Clio USA, Inc. v. Procter & Gamble Co., for example, the petitioner
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`argued in its request for rehearing that “its claim charts demonstrate[d] substantive
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`differences in the disclosures of the three ‘primary’ references.” No. IPR2013-
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`00448, Paper No. 16 at 4 (P.T.A.B. Feb. 5, 2014). The Board rejected this
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`argument finding that “[t]he petition contained no meaningful discussion of the
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`relative strengths of either the challenges themselves or of the rationales to
`
`combine the references in the obviousness challenges.” Id. Further, the Board
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`found that “[i]t was for [the petitioner] to explain, with detailed argument, why the
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`just, speedy, and inexpensive resolution of [the] proceeding require[d] trial on
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`multiple grounds per claim.” Id. (emphasis added and internal quotations and
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`citation omitted). Because the petitioner did not provide the requisite explanation,
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`its request for rehearing was denied. Id at 5. Similarly, in Gillette Co. v. Zond,
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`LLC, the patent owner argued in its preliminary response that the Petition suffered
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`from “horizontal redundancy” because it “include[d] grounds…for two different,
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`alternate, sets of combinations of references: i) a set using Mozgrin as the primary
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`reference, and ii) a set using Iwamura as the primary reference.” No. IPR2014-
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`01022, Paper No. 11 at 43 (P.T.A.B. Oct. 2, 2014). The Board agreed, ruling that
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`3
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`it would not institute based on the combination set that used Mozgrin as the
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`IPR2015-01592
`Patent Owner’s Preliminary Response
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`primary reference “for reasons of administrative necessity to ensure timely
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`completion of the instituted proceeding.” Id., Paper 12 at 7 (P.T.A.B. Nov. 20,
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`2014).
`
`Hydrite’s Petition similarly suffers from horizontal redundancy for at least
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`challenged claims 1, 2, 3, 6, 10, and 11 because, as shown in the following chart,
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`Hydrite proposes two grounds of obviousness rejections for these claims.
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`
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`First Obviousness Ground
`
`Second Obviousness Ground
`
`Claim 1 Winsness, Alther, and ICI
`
`Bonanno and ICI
`
`Claim 2 Winsness, Alther, Martin, and ICI Bonanno, ICI, and Martin
`
`Claim 3 Winsness, Alther, Martin, and ICI Bonanno, ICI, and Martin
`
`Bonanno and ICI
`
`Bonanno, ICI, and Martin
`
`Bonanno, ICI, Martin, and David
`
`Claim 6 Winsness, Alther, Martin, ICI, and
`Scheimann
`
`Claim 10 Winsness, Alther, Martin, ICI, and
`Bonanno
`
`Claim 11 Winsness, Alther, Martin, ICI,
`Bonanno, and David
`
`
`
`In the first set of grounds, Hydrite contends that the claims would have been
`
`obvious in view of various combinations that each use Winsness as the primary
`
`reference. See Pet. at §§ V.B, D, F, G. In the second set of grounds, Hydrite
`
`asserts that the claims also would have been obvious in view of various
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`
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`4
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`
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`combinations that each use Bonanno as the primary reference. Id. at §§ V.H, I, J.
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`IPR2015-01592
`Patent Owner’s Preliminary Response
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`Despite asserting multiple grounds for these challenged claims, Hydrite does not
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`even attempt to set forth any discussion of the grounds’ relative strengths or the
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`relative strengths of the rationales used in the two sets of obviousness challenges.
`
`Hydrite, for example, has not explained how the grounds that employ Bonanno as
`
`the primary reference differ from the grounds that employ Winsness as the primary
`
`reference. Accordingly, Hydrite’s proposed grounds based upon Bonanno are
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`redundant in view of the proposed grounds based upon Winsness. For this reason,
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`the Board should deny institution due to redundant grounds.
`
`The Cited Art Is Cumulative of a Prior Office Proceeding
`
`B.
`Not only are Hydrite’s proposed grounds redundant, but the Examiner who
`
`allowed the 059 Patent substantively considered Hydrite’s two primary references,
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`Winsness and Bonanno, before doing so (see Ex. 1001, “references cited”). The
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`Examiner also considered two of Hydrite’s secondary references, ICI and
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`Scheimann, during prosecution of the 059 Patent (id.). Under 35 U.S.C. § 325(d),
`
`the Board need not, and should not, second guess issues of patentability that the
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`Patent Office previously addressed in issuing a patent: “the Director may take into
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`account whether, and reject the petition or request because, the same or
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`substantially the same prior art or arguments previously were presented to the
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`Office.”
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`5
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`IPR2015-01592
`Patent Owner’s Preliminary Response
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`Not only were these references of record, but the fact that the Examiner
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`
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`substantively considered their disclosures is clear from the prosecution of the 059
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`Patent. In particular, the Examiner based an obviousness rejection on Bonanno
`
`and Scheimann (Ex. 1002 at 135-136) and, in fact, characterized Scheimann as the
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`closest prior art of record (id. at 62). The Examiner also based an obviousness
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`rejection (id. at 58-59) on a publication by Winsness (i.e., US 2007/0238891, Ex.
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`2001) that discloses substantially the same subject matter that Hydrite relies on
`
`with respect to the instant Winsness reference (Ex. 1012), including the disclosure
`
`that spinning thin stillage “created an undesirable emulsion phase requiring further
`
`processing” (see Ex. 2001 at [0006]).
`
`Given that the claims were found patentable over the two primary references
`
`being asserted here, in view of secondary references similar to and identical to
`
`those asserted by Hydrite, the Board should deny the Petition based on 35 U.S.C. §
`
`325(d). At the very least, the deficiencies of Hydrite’s grounds of rejection as set
`
`forth below are underscored by the fact that the challenged claims were found
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`patentable during prosecution over much of the same cited art that Hydrite presents
`
`in its Petition, including Hydrite’s two primary references.
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`6
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`IPR2015-01592
`Patent Owner’s Preliminary Response
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`III. Hydrite Has Failed To Establish a Reasonable Likelihood That At Least
`One of the Challenged Claims Is Unpatentable
`A.
`Standard for Instituting Inter Partes Review
`Inter partes review of a granted patent may only be instituted if “the
`
`information presented in the petition . . . and any [preliminary] response . . . shows
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`that there is a reasonable likelihood that the petitioner would prevail with respect to
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`at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). In an inter
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`partes review, the petitioner bears the burden of proving unpatentability by a
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`preponderance of the evidence. 35 U.S.C. § 316(e). As detailed below, Hydrite has
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`not satisfied this burden.
`
`The 059 Patent
`
`B.
`The 059 Patent is directed to methods of extracting oil from a byproduct
`
`stream of a bio-based ethanol production process. As explained in the patent, dry
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`milling methods for producing ethanol through fermentation create a byproduct
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`stream commonly referred to as “whole stillage” (Ex. 1001 at col. 4:5-8). The
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`whole stillage byproduct stream may be separated into a high solids byproduct
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`stream (“distillers wet grains”) and a liquid stillage byproduct stream (“thin
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`stillage”) that may contain valuable oil (id. at 4:9-17). The thin stillage may then
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`be further concentrated, e.g. via evaporation, to create a “syrup” byproduct (id. at
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`4:38-40).
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`IPR2015-01592
`Patent Owner’s Preliminary Response
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`As stated in the 059 Patent, it is common for byproduct streams to include
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`
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`oil-sequestering components that emulsify and/or stabilize the oil within the liquid
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`solution (id. at 5:9-13). For example, a syrup byproduct stream may include
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`soluble starches, proteins, gums, and waxes that interact with the oil (primarily
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`triglycerides) to prevent its separation from solution (id. at 5:13-16). The overall
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`oil profile may include a relatively diverse range of triglycerides having a diverse
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`range of fatty acids bound thereon (id. at 5:21-23). The result is a potentially broad
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`distribution of lipophilicity amongst the population of triglycerides that makes up
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`the oil profile of a given source (id. at 5:23-25). Furthermore, the oil profile varies
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`according to the source species, breed, and even with variable environmental and
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`seasonal factors under which the source grew (id. at 5:25-28).
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`As the 059 Patent explains, the oil-sequestering components interact with the
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`triglycerides to prevent the triglycerides from interacting with each other in a
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`manner which would result in the formation of a distinct oil phase (id. at 5:28-31).
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`Instead, the oil tends to remain dispersed in the aqueous phase stabilized by the
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`starches, proteins, gums, and waxes (id. at 5:31-33). Accordingly, the 059 Patent
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`discloses the use of an oil concentrator to enhance oil recovery by interfering with
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`the interaction between the naturally occurring oil sequestering components and
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`the triglycerides so that the triglycerides are capable of interacting with each other
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`so as to form a distinct oil phase (id. at 5:34-39).
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`8
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`IPR2015-01592
`Patent Owner’s Preliminary Response
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`The 059 Patent includes sixteen claims, with claims 1 and 13 being
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`
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`independent. Independent claim 1 is directed to methods of extracting oil from a
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`byproduct stream of a bio-based ethanol production process by mixing an
`
`ethoxylated sorbitan ester with the byproduct stream prior to centrifugation of the
`
`mixture, and independent claim 13 recites a similar method directed to a particular
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`stage of the process, namely mixing a polyoxyethylene (20) sorbitan ester with a
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`syrup after evaporating water from thin stillage to produce the syrup.
`
`C. Hydrite Fails to Establish Unpatentability of the Challenged
`Claims Based on Winsness (Grounds 1-6)
`1. Hydrite Fails to Identify Any Reason Why a Person of
`Ordinary Skill Would Have Combined Winsness with
`Alther
`
`Hydrite fails to identify any credible reason why a person of ordinary skill
`
`would have combined the respective teachings of Winsness and Alther. Hydrite
`
`identifies a problem that allegedly would have motivated those of ordinary skill to
`
`combine Winsness’s teaching with Alther’s. But Winsness itself solves this
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`alleged problem, such that those of ordinary skill would have had no reason to
`
`make the combination that Hydrite proposes.
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`Winsness is said to disclose a method of recovering oil from a byproduct
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`stream resulting from the production of ethanol from corn (Ex. 1012 at [0039]).
`
`As recognized by Hydrite, Winsness is directed to a mechanical means of
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`9
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`separating thin stillage from whole stillage using a centrifuge (Pet. at 8, claim
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`IPR2015-01592
`Patent Owner’s Preliminary Response
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`chart). The reference does not disclose or suggest any means for oil recovery other
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`than mechanical (centrifugal) means, nor does it indicate that emulsions are a
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`problem within its process. Instead, Winsness touts that its disk stack centrifuge
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`“is able to separate oil in usable form from the concentrate in an efficient and
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`effective manner, despite the relatively high level of solids present” (Ex. 1012 at
`
`[0040]), and results in a syrup “which is substantially free of oil” (id. at [0045]).
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`Notwithstanding this stated ability of the Winsness technique to “separate oil
`
`in usable form from the concentrate in an efficient and effective manner,” Hydrite
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`contends that a desire to achieve this very goal would have motivated those of
`
`ordinary skill to modify the Winsness technique (Pet. at 13). Not only does
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`Hydrite’s contention fail to comport with the common-sense notion that those of
`
`ordinary skill would have had no reason to solve problems that others had already
`
`solved, but the modification that Hydrite proposes is based on a reference (Alther)
`
`that addresses an entirely different problem than the one that Winsness solved.
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`Indeed, Alther is not directed to separating corn oil from corn stillage but to
`
`handling emulsions in wastewater treatment facilities. Thus, Hydrite’s contention
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`that those of ordinary skill would have been motivated to combine the respective
`
`teachings of Winsness and Alther lacks any objective evidence, and is little more
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`10
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`than a hindsight-driven, baseless allegation by a party seeking to attack the 059
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`Patent.
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`2. Hydrite Fails To Reconcile the Fundamental
`Incompatibilities Among Winsness and Alther
`
`Hydrite’s Petition fails to reconcile the fact that Alther addresses a different
`
`problem than the one that Winsness solved. Instead, Hydrite chooses to ignore the
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`full disclosure of Alther, and Hydrite’s hindsight-based allegation that a person of
`
`ordinary skill in the art somehow would have selected Polysorbate 80 from the
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`multiple and varied options that Alther provides is improper and unsupported.
`
`Hydrite, for example, fails to reconcile the fact that Winsness and Alther
`
`each focus on a different type of process stream. Alther, for example, is directed to
`
`wastewater process streams that are said to contain “metal shavings, silt,
`
`surfactants, cleaners, soaps, solvents, metal particles and other residue that will
`
`accumulate in the rag layer [emulsion layer] unless it settles out by gravity” (Ex.
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`1007 at 84, third column). Among the constituents of these emulsions “may be
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`fats, lubricants, cutting fluids, heavy hydrocarbons such as tar, grease, crude oils
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`and diesel oils, and light hydrocarbons, including gasoline, kerosene, and jet fuel”
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`(id.). Accordingly, the wastewater streams of Alther are quite different from the
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`corn to ethanol byproduct streams of Winsness, which include soluble starches,
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`proteins, gums, and waxes that interact with the oil, primarily triglycerides (Ex.
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`
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`11
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`1001 at 5:13-16). In fact, another of Hydrite’s references, Bonanno, discloses that
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`a dispersion of water wet particles in hydrocarbon-type oil (such as found in
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`Alther) is more difficult to obtain than a dispersion of the same particles in a
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`triglyceride-type oil (such as found in Winsness) (Ex. 1006 at 5:26-28). Hydrite,
`
`however, never addresses the differences between the hydrocarbon-based
`
`wastewater streams of Alther and the corn-based byproduct streams of Winsness,
`
`but merely alleges in conclusory fashion that a person of ordinary skill somehow
`
`would have been motivated to combine the references’ respective teachings
`
`because Winsness teaches the use of a centrifuge to separate oil from water and
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`Alther discloses this as one of many available techniques (Pet. at 13). Hydrite’s
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`allegation, however, is overly simplistic and ignores not only the above-noted,
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`fundamental differences between the respective process streams to which each of
`
`Alther and Winsness are directed, but also the very broad, generic nature of
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`Alther’s disclosure.
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`For example, Alther’s disclosure generally relates to “emulsion breaking”
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`which is said to be divided into several processes: gravity separation of free,
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`nonemulsified oil; chemical treatment and separation of emulsified oil; and
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`electrolytic methods (Ex. 1007 at 84, second column). Alther goes on to identify
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`many strategies for “emulsion breaking,” but none of them involve using the
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`chemicals that are recited in the 059 Patent claims:
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`Patent Owner’s Preliminary Response
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` decompose the emulsion, using dissolved air flotion, ozonation or other
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`oxidation process (id. at 84, third column);
`
` chemically react the emulsion, modifying the surfactant’s charge so that it
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`no longer acts as an emulsifier, typically by adding acid, base, or ionizer
`
`(id.);
`
` increase the solubility of the surfactant in either bulk phase, with alcohol or
`
`other polar solvents, such as acetone being used to increase solubility in the
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`water phase (id. at 85, first column);
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` disrupt the oriented structures of the emulsifiers interfacial phase with
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`demulsifiers, such as those listed in Table 2, with the most widely used
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`chemicals for emulsion breaking being ferric and aluminum chloride, none
`
`of which correspond to the claimed ethoxylated sorbitan esters (id. at 85,
`
`first and second columns, Table 2);
`
` introduce small bubbles of air or gas into the water (air flotation), wherein
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`the air bubbles attach themselves to oil droplets and solids and float them up
`
`to the liquid’s surface (id. at 86, second column);
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` raise the temperature of the wastewater to break the emulsion via
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`evaporation (water will evaporate, while oil is left behind) (id. at 86, second
`
`and third column);
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`13
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`IPR2015-01592
`Patent Owner’s Preliminary Response
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` heat the emulsion to at least 160ºF and allow to settle for eight hours (id. at
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`86, third columns).
`
`Alther also lists physical separation methods, including coalescers,
`
`centrifuges, and skimmers (id. at 86, first column). Unlike the later-published
`
`Winsness, however (which Hydrite relies upon for its teaching that prior
`
`approaches for spinning thin stillage with a centrifuge created an emulsion phase),
`
`Alther identifies centrifuges as a means for breaking emulsions. These teachings
`
`are plainly inconsistent, but Hydrite fails to acknowledge or address this
`
`inconsistency.
`
`Hydrite compounds this problem by not only failing to explain how (or why)
`
`a person of ordinary skill seeking to break emulsions would have reconciled this
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`inconsistency but also by failing to explain why such a person, when presented
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`multiple and varied options that Alther provides for breaking emulsions, would
`
`have decided to use Polysorbate 80. Alther, for example, does not refer to this
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`chemical in the section entitled “emulsion breaking” (id. at 84, second column) but
`
`in a section that is directed to the hydrophile vs. lipophile balance (“HLB”) of
`
`emulsifiers (id. at 83, second column) – a topic that the “emulsion breaking”
`
`section does not even address. Hydrite provides no reason, other than the hindsight
`
`provided by the challenged claims, as to why a person of ordinary skill would have
`
`passed over all of the emulsion-breaking options that Alther discloses, including
`14
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`the many recited chemical options, and instead would have specifically selected
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`Polysorbate 80 for use in the bio-based ethanol production process of Winsness.
`
`Hydrite’s approach is improper as a matter of law and should be rejected. In re
`
`Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (“[i]t is impermissible within the
`
`framework of section 103 to pick and choose from any one reference only so much
`
`of it as will support a given position, to the exclusion of other parts necessary to
`
`the full appreciation of what such reference fairly suggests to one of ordinary skill
`
`in the art” (quoting In re Wesslau, 353 F.2d 238, 241 (CCPA 1965)).
`
`Hydrite’s proposed combination of Winsness’s centrifuge and Alther’s
`
`Polysorbate 80 is also improper because it is contrary to Alther’s own disclosure
`
`that surfactants such as Polysorbate 80 are undesirable and should only be used in
`
`specific circumstances that Hydrite has failed to establish in Winsness. Alther, for
`
`example, states that although “[s]urfactants are essential components of
`
`formulations for processing textiles, pulp and paper, and detergents”, they “also
`
`make FOG [fats, oils, and greases] in wastewater extremely difficult to clean up
`
`due to the solubility of oil emulsified by them” (1007 at 84, first column). Alther
`
`later explains that “[m]ore than 99% of the oil in water in industrial streams
`
`contains anionic and nonionic surfactants,” and teaches various ways to remove the
`
`surfactants, e.g. via organoclay and activated carbon (see id. at 86, third column to
`
`88, third column). Consistent with the problematic nature of surfactants, Alther’s
`
`
`
`15
`
`
`
`
`reference to Polysorbate 80 is made only in relation to counteracting the effects of
`
`IPR2015-01592
`Patent Owner’s Preliminary Response
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`emulsifiers by using emulsifiers of the “opposite type” (Ex. 1007 at 83, second
`
`column). In particular, Alther states that, “depending on the emulsion, a strongly
`
`hydrophilic surfactant, such as Polysorbate 80, or a strongly lipophilic surfactant,
`
`such as monoglyceryl or diglyceryl oleate, can break the emulsion” (id. at 83,
`
`second column). Tellingly, however, Hydrite has not established that the emulsion
`
`presented in Winsness is a strongly lipophilic one that, per Alther, would warrant
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`the use of Polysorbate 80.1
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`Thus, it is not surprising that Winsness (which was filed a full seven years
`
`after Alther) states that approaches to recovering usable oil from the byproducts of
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`the dry milling process have not been terribly successful in terms of efficiency.
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`Alther simply does not provide the guidance that Hydrite alleges.
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`Accordingly, there is no support for Hydrite’s contention (Pet. at 13) that a
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`person of ordinary skill considering Winsness would have looked to Alther to
`
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`Indeed, because Winsness’s corn stillage contains triglycerides which, in
`1
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`turn, include hydrophilic components (see Ex. 1006 at 5:33-36), a person of
`
`ordinary skill who (unlike Hydrite) did not already have knowledge of the 059
`
`Patent claims would have understood from Alther that they should not use a
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`hydrophilic surfactant such as Polysorbate 80.
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`
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`16
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`solve the emulsion problem that Winsness itself solves, nor is there any support for
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`IPR2015-01592
`Patent Owner’s Preliminary Response
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`Hydrite’s contention that such a person would (absent hindsight) have taken from
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`Alther that they should use Polysorbate 80 to do so. Hydrite’s strained
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`combination of Winsness and Alther lacks any credible basis and, thus, should be
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`rejected.
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`3.
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`Secondary References Martin and ICI Do Not Cure the
`Deficiencies of Winsness and Alther
`
`Hydrite’s proposed grounds of rejection based on the combination of
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`Winsness and Alther (Grounds 1-6) characterize Martin and ICI as allegedly
`
`providing “additional support that the specific solutions would have worked as
`
`expected” (Pet. at 9), indicating that such references are merely cumulative and not
`
`necessary to the proposed grounds of rejection. In any event, Martin and ICI do
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`not cure the deficiencies of Winsness and Alther.
`
`a. Hydrite Fails to Establish the Relevancy of Martin to
`the Challenged Claims
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`Hydrite’s claim charts rely upon Martin for its teaching of certain “Tween”
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`label surfactants (see Pet. at 9, 13-14, 16, 17, 20, 24, 30, 31, 34, and 42).
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`According to Hydrite, “Martin recognizes the advantage of an appropriately
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`selected surfactant on the ability to separate an aqueous liquid phase from an
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`organic liquid phase in the presence of solids that act to form an emulsion” (Pet. at
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`11). This statement, however, is unsupported. Hydrite fails to identify any
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`17
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`“organic liquid” phase that Martin discloses or any reference in Martin to an
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`IPR2015-01592
`Patent Owner’s Preliminary Response
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`emulsion. Rather, Martin is simply directed to dewatering gluten (see Ex. 1010 at
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`Title; Abstract), and does not contain either type of disclosure.2
`
`b. Hydrite’s Reliance on ICI and the Alleged
`Predictability of Using HLB Values to Form or Break
`Emulsions is Misplaced and Contradicted by the
`Evidence of Record
`
`Hydrite relies upon ICI to support its allegation that a person of ordinary
`
`skill would have selected Polysorbate 80 to break a stable corn oil-in-water
`
`emulsion because it possesses a hydrophile vs. lipophile balance (“HLB”) that is
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`higher than corn oil (15 versus 10) (see Pet. at 12).
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`There are a number of reasons why Hydrite’s reliance upon ICI is misplaced.
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`For example, Hydrite provides no explanation as to why a person of ordinary skill
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`would have selected Polysorbate 80 rather than one of the many emulsion-breaking
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`options that Alther identifies, including options that Alther characterizes as “the
`
`
`2
`Hydrite also fails to address the fact that Martin is directed to a wet-milling
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`process (Ex. 1010 at 1:15-37) whereas the primary Winsness reference is directed
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`to a dry milling process (Ex. 1012 at Abstract). Those of ordinary skill recognized
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`these to be “distinct” processes that generate “unique co-products” (see Ex. 2002 at
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`2-7), yet Hydrite makes no attempt to explain why those of ordinary skill would
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`have applied teachings relating to one process to the other.
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`18
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`most widely used chemicals for emulsion breaking” (Ex. 1007 at 85, first and
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`IPR2015-01592
`Patent Owner’s Preliminary Response
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`second column, Table 2).
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`Hydrite’s reliance upon ICI is also misplaced because the reference does not
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`teach what Hydrite says it does. Contrary to Hydrite’s assertions, ICI does not
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`teach how to break emulsions but, rather, how to form them, i.e., how to
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`“satisfactorily emulsify” ingredients (Ex. 1008 at 3, first column). Indeed,
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`although Hydrite relies upon Figure 4 of ICI for its alleged disclosure r
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