trials@uspto.gov
`571-272-7822
`
`IPR2015-01838, Paper No. 42
`February 24, 2017
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`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`E.I. Du PONT DE NEMOURS AND COMPANY AND
`ARCHER-DANIELS-MIDLAND COMPANY
`Petitioners
`Vs.
`FURANIX TECHNOLOGIES B.V.
`Patent Owner
`- - - - - -
`Case IPR2015-01838
`Patent 8,865,921
`- - - - - -
`Oral Hearing Held: November 16, 2016
`
`
`Before: TONI R. SCHEINER, SHERIDAN K. SNEDDEN,
`and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges
`
`The above-entitled matter came on for hearing on Wednesday,
`November 16, 2016 at the U.S. Patent and Trademark Office, 600 Dulany
`Street, Alexandria, Virginia in Courtroom A, at 10:00 a.m.
`REPORTED BY: KAREN K. BRYNTESON, RMR, CRR,
`
`FAPR
`
`
`571-272-7822
`
`IPR2015-01838, Paper No. 42
`February 24, 2017
`
`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`E.I. Du PONT DE NEMOURS AND COMPANY AND
`ARCHER-DANIELS-MIDLAND COMPANY
`Petitioners
`Vs.
`FURANIX TECHNOLOGIES B.V.
`Patent Owner
`- - - - - -
`Case IPR2015-01838
`Patent 8,865,921
`- - - - - -
`Oral Hearing Held: November 16, 2016
`
`
`Before: TONI R. SCHEINER, SHERIDAN K. SNEDDEN,
`and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges
`
`The above-entitled matter came on for hearing on Wednesday,
`November 16, 2016 at the U.S. Patent and Trademark Office, 600 Dulany
`Street, Alexandria, Virginia in Courtroom A, at 10:00 a.m.
`REPORTED BY: KAREN K. BRYNTESON, RMR, CRR,
`
`FAPR
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`DIPU A. DOSHI, ESQ.
`
`
`MICHAEL MARCUS, ESQ.
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`JONATHAN ENGLAND, ESQ.
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`Blank Rome LLP
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`1825 Eye Street, N.W.
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`Washington, D.C. 20006
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`202-420-2604
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`ON BEHALF OF THE PATENT OWNER:
`
`PAUL RICHTER, ESQ.
`
`MARK A. CHAPMAN, ESQ.
`
`Andrews Kurth Kenyon
`
`One Broadway
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`New York, New York 10004-1007
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`212-908-8308
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`Case IPR2015-01838
`Patent 8,865,921
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`P R O C E E D I N G S
`
`(10:00 a.m.)
`JUDGE SCHEINER: Good morning, everyone. In
`the meantime, we're here this morning in the matter of IPR
`2015- 01838; is that correct? And we will get started in just a
`second. Again, I apologize for the delay. My fault entirely.
`Here we go. Okay.
`This will take a second, but in the meantime, if --
`my understanding is that each party will have 45 minutes and
`Petitioner may reserve some time for rebuttal, and we have no
`motion to amend in this case; is that correct?
`MR. RICHTER: That's correct.
`JUDGE SCHEINER: And in a moment, we will let
`everybody do their introductions. So let me just grab a pen
`and my pad. And sorry for the chaotic start.
`In a moment, we're going to go on the record.
`Okay. Why don't we start introductions, please.
`MR. DOSHI: For Petitioners, Your Honor,
`Dipu Doshi, lead counsel, Michael Marcus, and backup
`counsel, Jonathan England.
`JUDGE SCHEINER: Thank you very much. And
`for Patent Owner, please?
`MR. RICHTER: Yes, good morning, Your Honor.
`My name is Paul Richter. I'm with Andrews Kurth Kenyon,
`and I'm here for the Patent Owner along with -- I am lead
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`Case IPR2015-01838
`Patent 8,865,921
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`counsel, along with backup counsel, my partner Mark
`Chapman. We also have -- we'll a chief scientist from our
`client, Mr. Jeff Kolstad.
`JUDGE SCHEINER: Welcome to the Board.
`MR. RICHTER: Thank you.
`JUDGE SCHEINER: All right, Petitioner has the
`burden of proving their case, so Petitioner will proceed first.
`And I think I'm ready and if you're ready, please begin.
`MR. DOSHI: Sure, Your Honor. Just to get
`started, we do have a presentation that we served to the Board
`earlier this week.
`JUDGE SCHEINER: Yes, the demonstratives.
`MR. DOSHI: We also have printouts from our --
`JUDGE SCHEINER: Excellent.
`MR. DOSHI: May I approach?
`JUDGE SCHEINER: Yes, please. And I see we're
`starting a few minutes after 10:00. I'm not going to use the
`machine, so you will have until -- would you care to reserve
`some time?
`MR. DOSHI: Yes, actually, ten minutes, please.
`JUDGE SCHEINER: Ten minutes. Okay. So
`we're going to go until 10, what is that, about 37 or so, 10:38,
`and you are going to reserve ten. Okay.
`Okay. Ready to listen. And thank you.
`MR. DOSHI: Thank you. Thank you, Your Honor.
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`Case IPR2015-01838
`Patent 8,865,921
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`
`Good morning. May it please the Board, again, my
`name is Dipu Doshi, backup counsel for Petitioners, Dupont
`and ADM. Together with me are Michael Marcus, lead
`counsel, and Jonathan England, backup counsel.
`And as I stated, I would like to reserve ten minutes
`for rebuttal.
`JUDGE SCHEINER: Okay, thank you. Could you
`speak up just a little bit?
`MR. DOSHI: Sure.
`JUDGE SCHEINER: I'm not sure -- or maybe your
`microphone isn't on.
`MR. DOSHI: How about now? Is it --
`JUDGE SCHEINER: No.
`(Discussion off the record.)
`MR. DOSHI: It says it's on, so I will try to speak
`up a little bit.
`JUDGE SCHEINER: Okay. Thank you.
`MR. DOSHI: Sure. I'm moving to slide 2 of our
`presentation here, the Institution decision. The Board granted
`institution of this IPR on claims 1 through 5 and 7 through 9
`of the '921 patent in view of the '732 publication, RU- 177,
`and '318 publication. Petitioner submits that it has met its
`burden by a preponderance of the evidence. The evidence is
`clear and it is compelling.
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`Petitioners submit the claims cover nothing more
`than mere routine optimization of a known oxidation reaction
`of HMF to FDCA with within temperature ranges and pressure
`ranges that were known in prior art.
`In re Aller is of particular note and is particularly
`relevant in this proceeding. There the Court held that where
`the general conditions of a claim are disclosed in the prior art,
`it is not inventive to discover the optimum or workable ranges
`by routine experimentation.
`In re Peterson is also of particular relevance here.
`The normal desire of scientists or artisans to improve upon
`what is generally known provides the motivation to determine
`where in the disclosed set of percentage ranges is the optimum
`combination of ranges.
`Moving to slide 3, is independent claim 1, which
`is one of two independent claims of the '921 patent. And it
`relates to a known oxidation reaction with known starting
`materials, a known gas, a known catalyst system, and a known
`solvent system.
`The temperature ranges and the pressure ranges
`which are going to be discussed in this hearing were added --
`and they are highlighted on the bottom of slide 3 there. They
`were added by amendment to overcome the prior art during the
`original prosecution. And that reads between 140 degrees C
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`Case IPR2015-01838
`Patent 8,865,921
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`and 200 degrees C at an oxygen partial pressure of 1 to 10
`bar.
`
`Claim 7 is the other independent claim, and I'll
`turn to slide 4 here. It's similar to claim 1. It is a known --
`well, relates to known processes. But -- and similar to claim
`1, but it adds the highlighted limitation there on the bottom of
`slide 4, the esterification step.
`This esterification process of FDCA was well
`known as the '921 admits. And I'm on slide 5 here. At the top
`of that slide is highlighted the esterification of FDCA is
`known, so that is admitted prior art.
`And so I'll focus my attention on claim 1 and rest
`on the papers for the other -- for claims 7 through 9, unless
`there are any specific questions relating to those.
`Slide 6 shows that the conversion of biomass
`obtained from HMF to FDCA was well known. This is an
`excerpt from the '732 publication, which was relied upon in
`the Institution decision.
`That shows that HMF to FDCA was well known. It
`was in the background section of the '732 publication.
`The '732 publication was cited during original
`prosecution but was not relied upon by the examiner during
`prosecution in any office action or rejection. The '732
`publication -- and I'm going to jump to slide 9 -- discloses
`that there are four result-affected variables that can be varied
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`Case IPR2015-01838
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`to achieve maximum yield. And those are time, temperature,
`pressure, and catalyst concentration.
`Of those four, only two are claimed by the claims
`challenged here today. And that is temperature and pressure.
`There is no mention of catalyst concentration or time in the
`challenged claims. And so those are the four result-affected
`variables.
`The temperature, the '732 publication -- I'm
`jumping backwards now to slide 7 -- shows and I have
`highlighted here on slide 7, the '732 publication discloses a
`temperature for the preparation of FDCA at temperatures of
`about 50 to 250 and most preferentially about 50 to 160.
`This temperature range -- and I'm going to jump
`all the way to slide 15. This temperature range encompasses
`the claimed range. So what we put here on the board and is in
`our reply brief is a green bar indicating the '732 publication's
`range, along with another green bar that is polka dots that
`shows the preferred range. That encompasses and overlaps
`the claimed range, which is in the pink box there.
`The '318 publication and the RU- 177 publication,
`also relied upon in the institution grounds, also have
`temperature disclosures that either overlap or encompass the
`claimed range as shown in this graph here. The '318
`publication specifically -- and I can jump to slide 13 -- shows
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`-- well, discloses 50 to 200 degrees C as temperature ranges
`for oxidation reactions of HMF to FDCA.
`And in this particular slide, slide 13, there are
`oxidation reactions that take place at 100 degrees, 140
`degrees, and 160 degrees, which is within the preferred range
`of the '318 publication of 100 to 160 degrees.
`Similarly, slide 14 shows the RU-177 temperature
`disclosure, which is 115 to 140 degrees. Now, 140 degrees at
`the very least abuts the claimed range of the '921 patent.
`And, again, I have moved to slide 15 here to show the graphic.
`JUDGE PAULRAJ: Mr. Doshi, is there anything
`in the '722 publication or any of the other references you're
`relying upon that shows a trend or, in other words, what the
`result is if we increase the temperature in a process such as
`this?
`
`MR. DOSHI: If we increase the temperature, one
`of ordinary kill in the art would have known to increase the
`temperature -- increased temperatures would have an effect on
`the yield.
`
`JUDGE PAULRAJ: So the higher the temperature,
`the higher the yield; that's your argument?
`MR. DOSHI: That is our argument, Your Honor.
`JUDGE PAULRAJ: Now, is there anything in the
`art that specifically says something to that effect?
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`MR. DOSHI: Well, Partenheimer certainly says
`that increased temperature would increase yield. And that is
`-- I apologize, Your Honor -- on slide -- well, it's slide 11.
`Sorry. Here's an excerpt from the Partenheimer reference that
`Dr. Martin relies on for his testimony that increased
`temperature would increase yield.
`The yield -- and I'm quoting from Partenheimer
`here. "The yield increases with catalyst concentration" --
`which we'll get to -- "and with temperature." And so that
`certainly shows that one of ordinary skill in the art would
`have known that higher temperatures would result in higher
`yield.
`
`The '732 publication also, we rely on that in our
`petition as showing certain examples when you increase the
`temperature, generally speaking, the temperature -- the yield
`increases with the higher temperatures.
`JUDGE PAULRAJ: Where -- my concern with
`relying on Partenheimer is that that wasn't a specific reference
`we instituted on. We did recognize that Partenheimer has
`overlapping disclosure with the '732 publication. And now
`you're coming back to us and pointing to an additional
`disclosure in Partenheimer that may have been relevant to the
`extent that we wanted to include Partenheimer as a basis for
`institution.
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`MR. DOSHI: Sure, Your Honor. And I thought I
`was trying to be careful to say that Dr. Martin relies on
`Partenheimer for his conclusion as well, that temperature --
`higher temperatures result in higher yield.
`But, more specifically, let's jump to the '318
`publication, which is instituted, which is a reference that is
`being relied on for the institution ground. I'm on slide 13 for
`the record.
`Here you see figure 31, which is on our right,
`shows that increasing the temperature from 100 degrees to 160
`degrees shows a marked increase in the yield of HMF to
`FDCA. And, similarly, in figure 30, which is on the left,
`shows an increase from 140 to 160 degrees, shows increased
`yield as well. So the publication itself does suggest that
`increased temperature would increase yield.
`Other evidence includes -- well, that's one of the
`references that is instituted upon that shows that.
`And, of course, like I said, Dr. Martin relies on
`Partenheimer for his conclusion -- as support for his
`conclusion that one of ordinary skill in the art would have
`known that increasing temperature would have increased
`yield.
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`JUDGE PAULRAJ: That's not necessarily the case
`all the time, as borne out by the data in the '732 publication,
`correct? I mean, there are instances where you have a higher
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`temperature and the other conditions may remain the same and
`you're going to get lower yield?
`MR. DOSHI: Yes, but it's important to look at
`table 4 in its totality. I think that's what Your Honor is
`referring to --
`JUDGE PAULRAJ: Yes.
`MR. DOSHI: -- is table 4 of the '732 publication,
`where the highest yield is 58.8 percent, I believe. And that
`was run at 105 degrees, I believe.
`The other -- the main point that I think Your
`Honor said is if all things remaining equal, right? And the
`time and catalyst concentration in those examples that are
`provided in table 4, they showed that -- there are differences
`between those. It's not an apples-to-apples comparison, so to
`speak. It's an apples to oranges comparison, because the --
`but table 4 has varying concentrations of catalysts and varying
`concentration -- I'm sorry, varying temperatures as well.
`JUDGE PAULRAJ: Sure. But there are instances
`in table 4, and Patent Owner points this out in their response,
`where the conditions, at least the conditions reported in the
`table, appear to be identical, except for the temperature. And
`they have pointed to a comparison of example 20 with 25
`showing a decrease in yield from temperature 100 C to 125 C.
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`MR. DOSHI: Okay. So for those particular -- that
`particular comparison does not include manganese or bromine,
`sorry.
`
`JUDGE PAULRAJ: Okay.
`MR. DOSHI: So those are kind of blanks there,
`which aren't -- they don't -- they don't fall within the '732
`publication's overall teaching of the manganese -- I'm sorry,
`the cobalt manganese and bromine catalyst system.
`JUDGE PAULRAJ: All right. But then what about
`17 and 35? That does seem to include a Co, M, and BR
`catalyst. And then it looks like a comparison of 19 and 24
`also includes all three catalysts required by the claims.
`MR. DOSHI: I'm sorry, Your Honor, 17 and 34?
`JUDGE PAULRAJ: 17 and 35, and this is in
`Patent Owner's response on page 18. It's shown in
`comparison.
`MR. DOSHI: So that's an increase of 5 degrees; is
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`that it?
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`JUDGE PAULRAJ: Yeah, an increase of 5
`degrees, showing a decrease in yield. That's one comparison.
`And then a comparison of examples 19 and 24, which I do
`believe includes all three catalysts required by the claims and
`shows --
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`MR. DOSHI: Yes. So 19 and 24 would be
`a .1 percent decrease.
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`JUDGE PAULRAJ: .1 percent? At least it doesn't
`show a significant increase, if you're going to take standard
`deviation into account, between 100 and 125 degrees
`temperature.
`MR. DOSHI: Well, right. I mean, the examples
`are what they state to be. It's a 44.8 to 44.7 percent decrease.
`Is that what we're looking at here?
`JUDGE PAULRAJ: That's what the table shows.
`My question to you is regardless of whether that shows a
`decrease, you know, it certainly doesn't show an increase in
`yield from changing the temperature from 100 to 125. And
`that seems to run counter to your argument that increasing the
`temperature will tend to increase the yield, all other
`conditions being equal.
`MR. DOSHI: Right. But we relied also on
`examples 38, 39, and 40, I believe, which show that
`increasing the temperature to 150 degrees generally speaking
`will increase the yield.
`JUDGE PAULRAJ: But that deals with a
`two- stage temperature process, right? And I want you to
`address Patent Owner's argument that in that kind of process,
`essentially all the HMF that starts out in the process gets
`converted before you're getting up to the higher temperature
`range of 150.
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`MR. DOSHI: Sure, Your Honor, the -- we address
`that in our reply brief. And there are several things to note
`there, and I think the most important thing is that Dr. Martin
`testifies as -- one of ordinary skill in the art would have
`known that staging does not -- at the time of filing, would not
`have -- would not be responsible for the increased yield,
`right?
`
`So Partenheimer did some -- the Partenheimer
`publication did some additional testing on the staged reactions
`versus non- staged reactions. And the -- and one of ordinary
`skill in the art would have known about the Partenheimer
`studies and would have understood that staging does not affect
`yield because that's the conclusion that Partenheimer reaches.
`So that's an important distinction from Patent
`Owner's argument. The other thing to note is that the RU- 177
`and the '318 publications also conduct their oxidation
`reactions within constant temperatures. There's no staging
`there either. And they receive -- and they achieved high
`yields as well, particularly the '318 publication.
`RU-177, of course, is 5 MF starting material and
`the yields that were achieved by RU-177 fall in line with
`those that were achieved by the '921 patent. So --
`JUDGE PAULRAJ: The yields, RU- 177, I thought
`the yields were much lower, around 37 percent, 36 percent?
`MR. DOSHI: 36 or 37 percent, that's right.
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`JUDGE PAULRAJ: Yes.
`MR. DOSHI: And that's in -- that's consistent
`with what Patent Owner has argued in the '921 patent. I
`believe it's 39 percent and 42 percent.
`So it's -- it's in the ballpark of the 5 MF oxidation
`reaction. And --
`JUDGE PAULRAJ: And you're not talking about
`the 76 percent yield that the Patent Owner would point to in
`the '921 patent; is that correct?
`MR. DOSHI: No, because we have to compare
`apples to apples, again. We're comparing the oxidation of 5
`MF to FDCA as opposed to HMF to FDCA. The 70 percent
`and the 76 percent that Patent Owner argues is only related to
`the HMF starting material, not the 5 MF or AMF starting
`materials, as we can show you, and we can go to -- and we can
`go to Exhibit 1001, tables -- table 3, I believe. Yes, table 3
`shows 5 MF is at 42 percent and 39.9 percent, and RU-177
`achieved something in that range. And I think -- and that's in
`the briefs.
`I believe it's 36 percent or something like that. So
`there is nothing -- and I will -- I will also say that the RU-177
`publication used less catalyst concentration, which obviously
`is a big part of our argument with respect to the
`apples-to-apples comparison and the apples- and-oranges
`comparison. So --
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`JUDGE PAULRAJ: That's fine. I did want you to
`continue with your presentation and talk about the other
`factors that might be modified to increase yield.
`MR. DOSHI: I will just -- one more note is, going
`back to the staging question, you know, the claims are not
`narrowed to exclude any staging. There's nothing in the
`claim. And I'll go back to, you know, the claim on the board,
`which is slide 3.
`It doesn't say anything that would exclude staging.
`And the claim is very, very broad in that sense that it is -- it's
`simply you must contact the -- one of the starting materials at
`a temperature between 140 degrees and 200 degrees at an
`oxygen partial pressure of 1 to 10 bar and in the solvents and
`in the presence of oxygen-containing gas.
`JUDGE PAULRAJ: Does the term "feed"
`comprising one of those starting materials make a difference?
`In other words, I understand your interpretation of claims to
`be that -- you know, say the staging results in, say, 97 percent
`or whatever percentage actually happens of the HMF
`converted to that intermediate product, right? And then
`there's that extra 3 percent or whatever it is. Even at the
`higher temperature, it gets further contacted at the higher
`temperature to eventually become FDCA.
`MR. DOSHI: Correct.
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`JUDGE PAULRAJ: But is that -- the second part
`of that phasing, are you really contacting a feed or is it -- is it
`some other maybe -- in other words, is there some term --
`some term of art or is there some special understanding
`associated with the term "feed"?
`MR. DOSHI: Well, that issue hasn't been briefed,
`but the feed would include that extra 3 percent, for example,
`along with the oxygen-containing gas and the solvent and
`the -- and I guess the catalyst system.
`So there is going to be some of that HMF that's
`going to be contacted and converted to the FDCA product, but
`more to the point, I think there are other intermediates that
`are provided in the staging that, from the -- HMF would
`convert to other intermediates that are part of this feed that
`could then be led to or converted to FDCA.
`So all of that can be considered the feed, so to
`
`speak.
`
`JUDGE PAULRAJ: Yeah, I understand that's your
`position, but I also recognize that's not -- that's a claim
`construction issue.
`MR. DOSHI: It is a claim construction issue,
`that's correct. And our position would be that it's not so
`limited. The feed would include all of the limitations there.
`So turning to the pressure limitation -- I'm on slide
`17; I'm going to jump -- there's a dispute as to whether the
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`Case IPR2015-01838
`Patent 8,865,921
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`'921 patent excerpt that's on the board on slide 17 is admitted
`prior art or is not admitted prior art. Of course, Petitioners
`submit that is talking generally, generally speaking about
`oxidation processes that were known.
`This is relating to commercial oxidation processes.
`And we know that the '921 patent does not disclose any
`commercial oxidation processes. It's simply conducting
`oxidation reactions in 5-milliliter reactions, 8-milliliter
`reactors, and those are not considered commercially oxidation
`reactions or commercial scale oxidation reactions, I should
`say.
`
`The '921 patent continues that the pressure is
`determined by the solvent. And it says, for example, acetic
`acid. Well, we know that the claimed oxidation reactions
`must include or require acetic acid or an acetic acid water
`mixture. So this is more talking about oxidation processes
`more generally because it's only an example of one of the
`solvents that can be used as an oxidation reaction, in the
`oxidation reactions, sorry.
`And it continues that the pressure of a reaction is
`preferably selected such that the solvent is mainly in the
`liquid phase. Of course, that's consistent with some of the
`prior art literature that we rely on for the instituted grounds,
`which I'll get to in the next slide.
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`Case IPR2015-01838
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`In practice, this means the pressure between 5 and
`100 bar can be used with a preference of pressures between 10
`and 80 bar. And that, of course, translates to 1 to 30 bar. On
`the bottom of slide 17, I have highlighted that. It's not only
`that it is converting the total pressure to total -- to the oxygen
`partial pressure, but it says -- and I think this is important --
`the oxygen partial pressure will suitably be between 1 and 30
`bar, or more preferably between 1 and 10 bar.
`So according to the '921 patent, the oxygen partial
`pressure, the suitable range is 1 to 30. And it was only during
`prosecution of the '921 patent that they had to amend and add
`the limitation of between 1 and 10 bar.
`And I will say, again, that the solvent is mainly in
`the liquid phase, is consistent with the '732 publication's
`disclosure, that the corresponding pressure and oxidation
`reactions is such to keep the solvent mostly in a liquid phase.
`JUDGE PAULRAJ: Now, does that mean that a
`skilled artisan reading that disclosure would want to
`necessarily to keep the oxygen partial pressure under 10 bars?
`MR. DOSHI: Yes, Your Honor. So Dr. Martin --
`and I have flipped to slide 18 for the record. Dr. Martin
`testifies about the knowledge of one of ordinary skill in the
`art saying that when the aqueous acetic solvent is in an acetic
`acid water mixture, the suitable gauge pressures in the reactor
`can be in this range, and we have converted it. Because it's in
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`Case IPR2015-01838
`Patent 8,865,921
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`kilograms per centimeter squared, we have converted it to bar.
`It's 9.8 to 30 bar or an oxygen partial pressure of 2 to 6,
`which is within the range of the claimed limitation.
`JUDGE SCHEINER: I just want to point out you
`have about nine minutes left, if you still want to reserve ten
`minutes.
`
`MR. DOSHI: Okay. Thank you very much. The
`'732 publication -- I'm going to jump to slide 20 -- discloses
`an oxygen partial pressure of about 14.5 bar. It's 1,000 psi,
`which converts to 14.5 bar; 1,000 psi converts to 69 bar and
`multiply that by 21 percent to get you to 14.5 bar, which this
`oxidation reaction is conducted within the known oxidation
`reaction pressures. So it's consistent with all of that.
`And slide 21, we have excerpted a portion of
`Dr. Martin's testimony here, that relates to the motivation to
`lower pressure. The '732 publication was bench scale
`oxidation reaction. Here we're going to -- if you move that to
`large scale or commercial scale, Dr. Martin says that there is
`motivation for a person of ordinary skill in the art to lower
`that pressure for the capital cost savings and operating cost
`savings over the conventional processes. And he's relying
`here on the '621 patent.
`In a moment you are going to hear a lot about
`yield and surprising yield, and I think Your Honor, Judge
`Paulraj, Your Honor has raised that. I just want to go to slide
`
`
`
`21
`
`
`
`Case IPR2015-01838
`Patent 8,865,921
`
`3. There's nothing here that relates to -- nothing here in the
`claim that relates to catalyst concentration.
`And to the extent that the Board considers yield,
`which is the linchpin to Patent Owner's arguments that the
`claimed ranges are patentable over the art, it's not a claim
`limitation, as you can see.
`And the data that's provided is not commensurate
`in scope with the breadth of claim 1. As we have indicated, if
`you go to table 3 of the '921 patent, there are certainly yields
`that are as low as 7 percent and 11 percent, 14 percent, so
`those yields don't rise to the level of critical or unexpected.
`The other thing to consider is the Patent Owner's
`comparison of apples and oranges. There are no
`apples-to-apples comparisons. There is no experimental data
`replicating the experiments that were conducted in the '921
`with the same catalyst concentration with -- with temperatures
`that are outside of the claimed range.
`In other words, there's no experimental data of 135
`degrees, keeping all other things equal. The catalyst
`concentration being the primary one. What Patent Owner is
`arguing is the yield of '921 as compared with the '732
`publication, and the '732 publication, as Dr. Martin testified,
`has much lower yield concentrations as compared to the '921
`patent.
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`Case IPR2015-01838
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`And that is on slide 27, which I'm jumping all the
`way forward. And as you can see, the '921 patent uses more
`than three times the amount of catalyst concentration as the
`'732 publication. I will note that the '732 publication's
`examples that Patent Owner is comparing against are on the
`lower side of the disclosed range that the '732 publication
`provides.
`
`So, for example, the highest concentration of
`catalyst concentration that you can -- that table 4 provides has
`a cobalt concentration of 1218, but that's on the low end
`because the '732 publication states that it can be as high as
`5900 parts per million as opposed to 1200 parts per million or
`close to 1200 parts per million.
`So, again, if you increase that catalyst
`concentration from the '732 publication, which it specifically
`discloses, there may be higher yield but Patent Owner fails to
`take that into consideration.
`JUDGE SCHEINER: Excuse me, Mr. Doshi. If
`you're feeling a little rushed, you can take a few extra minutes
`because we did have a lot of questions for you.
`So --
`MR. DOSHI: I'm sorry. Northeasterner speaking
`very fast, I apologize for that.
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`Case IPR2015-01838
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`JUDGE SCHEINER: I wasn't criticizing. I just
`thought you might need a few extra minutes because we did
`interrupt your presentation quite a bit.
`MR. DOSHI: Sure. Thank you, Your Honor.
`One more piece of evidence that catalyst
`concentration does matter is Exhibit 1029, which is Patent
`Owner's patent that was filed on the same day as the '921
`patent, which specifically states that the catalyst
`concentration can have a dramatic effect on the yield.
`So all those things have to be taken into
`consideration when comparing the '921 patent's yield with the
`prior art and, in particular, the '732 publication's prior art. If
`you also look at the '318 publication, you will see that there
`are higher yields here as well. The Patent Owner has said that
`this is a different type of catalyst -- I'm sorry, a different type
`of catalyst system, but there is no evidence to suggest that the
`-- I'm sorry -- the catalyst system, but the increased catalyst
`concentration shows increased levels of yield.
`And, of course, Exhibit 2004, which I don't have a
`slide for, but these are -- actually, I do have a couple of slides
`-- here Patent Owner's own evidence, this is Exhibit 2004 that
`was cited by Patent Owner, shows that increased catalyst
`concentration can achieve higher yields. I will note that
`examples 8 through 11, which are highlighted in slide 28 show
`yields of over 80 percent and that this is outside the scope of
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`the claim because of the oxygen partial pressure that these
`examples
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