UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`E. I. DU PONT DE NEMOURS AND COMPANY and
`
`ARCI-IER—DANIELS—MIDLAND COMPANY,
`
`Petitioners,
`
`V.
`
`FURANIX TECHNOLOGIES B.V.,
`Patent Owner
`
`Case IPR2015—01838
`
`Patent 8,865,921
`
`RE UEST FOR REHEARING PURSUANT TO 37 C.F.R.
`
`42.71 d
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`E. I. DU PONT DE NEMOURS AND COMPANY and
`
`ARCI-IER—DANIELS—MIDLAND COMPANY,
`
`Petitioners,
`
`V.
`
`FURANIX TECHNOLOGIES B.V.,
`Patent Owner
`
`Case IPR2015—01838
`
`Patent 8,865,921
`
`RE UEST FOR REHEARING PURSUANT TO 37 C.F.R.
`
`42.71 d
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`Introduction ........................................................................................................................ .. 1
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`Applicable Legal Standards ............................................................................................... ..2
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`III.
`
`IV.
`
`Statement of Precise Relief Requested .............................................................................. ..3
`
`Statement of Reasons for the Requested Relief................................................................. ..3
`
`Conclusion ......................................................................................................................... ..7
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`
`KSR Int ’l Co. v. Teleflex Inc, 550 U.S. 398 (2007) ....................................................................... ..6
`
`PNY Techs., Inc. v. Phison Elecs. C0rp., IPR2013-00472, Paper 16 (P.T.A.B.
`2014) ....................................................................................................................................... ..2
`
`Star Fruits S.N. C. v. United States, 393 F.3d 1277 (Fed. Cir. 2005) ............................................. ..2
`
`STATUTES
`
`35 U.S.C. § 103(a) ......................................................................................................................... ..3
`
`REGULATIONS
`
`37 C.F.R. § 42.71(c) ....................................................................................................................... ..2
`
`37 C.F.R. § 42.71(d) .................................................................................................................. ..2, 3
`
`37 C.F.R. § 42.71(d)(1) .................................................................................................................. ..2
`
`37 C.F.R. § 42.108(b) .................................................................................................................... ..3
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioners E. I. du Pont de Nemours and Company and Archer-Daniels-
`
`Midland Company (“Petitioners”) respectfully request reconsideration of the
`
`portion of the Board’s March 9, 2016 Decision to Institute Inter Partes Review
`
`(Paper 10) (“Decision”) denying institution on Ground 2. See Paper 10 at 16-17.1
`
`In its Decision, the Board stated that “other than a single cursory citation to
`
`[Example 15] in the Petition (Pet. 42), Petitioners fail to provide any further
`
`explanation as to the relevance of this teaching to their obviousness contention.”
`
`Id. at 10 at 17.
`
`Petitioners respectfully submit that the Board abused its discretion in
`
`denying institution on Ground 2 because it misapprehended and/or overlooked the
`
`totality of Petitioner’s arguments with respect to the teachings of U.S. Patent No.
`
`8,558,018 (the ’018 patent) and how those teachings render claims 6 and 10
`
`-
`obvious.
`
`2
`
`1 Petitioners request reconsideration for Ground 2 only, and do not request
`
`reconsideration of Grounds 1 and 3 on which Inter Partes Review has been
`
`instituted.
`
`2 Claims 6 and 10 depend from claims 1 and 7, respectively, which are subj ect to
`
`Inter Partes Review under Grounds 1 and 3.
`
`
`
`For that reason, Petitioners respectfully request reconsideration of denying
`
`institution of Inter Partes Review on Ground 2.3
`
`II.
`
`APPLICABLE LEGAL STANDARDS
`
`A request for rehearing must “specifically identify all matters the party
`
`believes the Board misapprehended or overlooked, and the place where each
`
`matter was previously addressed.” 37 C.F.R. § 42.7l(d). The standard for
`
`reviewing a request for rehearing is “abuse of discretion.” 37 C.F.R. § 42.7l(c).
`
`An abuse of discretion maybe determined if “a factual finding is not supported by
`
`substantial evidence, or if the decision represents an unreasonable judgment in
`
`weighing relevant factors.” PNY Techs., Inc. v. Phison Elecs. Corp., IPR20l3-
`
`00472, Paper 16 at 2 (P.T.A.B. 2014) (citing Star Fruits S.N. C. v. United States,
`
`393 F.3d 1277, 1281 (Fed. Cir. 2005)).
`
`Inter partes review shall be instituted for a ground of unpatentability where
`
`the Board decides that the petition supporting the ground would demonstrate that
`
`3 This request is authorized under 37 C.F.R. § 42.71(c), and under such
`
`authorization, prior authorization from the Board to file this Request is not
`
`required. See 37 C.F.R. § 42.7l(d). This request is timely as it is being filed within
`
`14 days of the entry of a decision to institute a trial as to at least one ground of
`
`unpatentability asserted in the Petition. See 37 C.F.R. § 42.71(d)(1).
`
`
`
`there is a reasonable likelihood that at least one of the claims challenged in the
`
`petition is unpatentable. 37 C.F.R. § 42.l08(b).
`
`III.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.7l(d), Petitioners hereby request rehearing of
`
`Ground 2 of the Petition, which asserts that claims 6 and 10 of the ’92l patent are
`
`unpatentable under 35 U.S.C. § l03(a) as obvious over International Publication
`
`No. WO 01/072732 A2 (Exh. 1002) (“the ’732 publication”) in View of the ’0l8
`
`patent, and optionally in View of USSR Patent Publication 448 l77Al (Exh. 1007)
`
`(“RU ’177”) and U.S. Patent Publication No. 2008/0103318 (Exh. 1008) (“the ’3 18
`
`publication”).
`
`IV.
`
`STATEMENT OF REASONS FOR THE REQUESTED RELIEF
`
`Petitioners respectfully submit that the Board abused its discretion in
`
`denying institution on Ground 2 because it misapprehended and/or overlooked the
`
`totality of Petitioner’s arguments with respect to the teachings of the ’0l8 patent
`
`and how those teachings render claims 6 and 10 obvious in light of the ’732
`
`publication, and alternatively in view of RU ’ 177 and ’3 18.
`
`Petitioners respectfully submit that the Petition provided more than “a single
`
`cursory citation to [Example 15] in the Petition (Pet. 42), [and did not] fail to
`
`provide any further explanation as to the relevance of [the] teaching to [the]
`
`obviousness contentions.” Paper 10 at 17. Petitioners also respectfully submit that
`
`
`
`the Petition provided more than “[a] conclusory cite to a prior art teaching .
`
`.
`
`. to
`
`demonstrate that the claimed invention would have been obvious based on that
`
`teaching.” Id
`
`On page 42 of the Petition, Petitioners state that the “[p]urification of Hl\/[F
`
`has proved to be a troublesome operation.” Petition at 42 (citing ’0l 8//3 :61-62).
`
`The Petition also states that “[t]he ’018 patent’s ‘invention pertains to processes for
`
`oxidation of. .
`
`. I-IMF .
`
`.
`
`. to form ester-acid derivatives of H1VIF.”’ Id. at 41
`
`(citing ’0l8//1:11-18). The Petition further states that the “‘oxidations are done or
`
`in the presence of dissolved oxygen and a Co(II), Mn(II), Ce(III) salt catalyst or
`
`mixtures thereof with or without bromide and with or without an aliphatic ketone
`
`to selectively form the desired compounds. The products [e.g., the esters of HMF]
`
`can be further oxidized [to] form 2,5 furandicarboxylic acid (FDCA).”’ Id. (citing
`
`’0l 8//l : 18-23). One such example — Example 15 — was cited by the Petition on
`
`page 42.4
`
`Directly after citing Example 15, the Petition states that “[p]reparing FDCA
`
`by using the ester ofHMF and acetic acid instead of or in combination with Hl\/IF
`
`is expressly suggested by the ’018 patent, and therefore obvious.” See id. at 42
`
`(emphasis added) (compare with Example 15 discussing oxidation of ACHMF
`
`4 The Decision acknowledges that Example 15 of the ’0l 8 patent “describes the
`
`oxidation of acetoxymethylfiirural .
`
`.
`
`. to produce FDCA.” See Paper 10 at 17.
`
`
`
`(acetoxymethylfurfurals) in acetic acid yielding 54% FDCA). The Petition further
`
`states that “[o]ne of ordinary skill in the art would have considered the subject
`
`matter of claim 6 obvious in View of the teachings of the ’732 publication, and
`
`alternatively in View of RU ’ 177 and ’3 18, and the suggestion of the ’0l 8 patent to
`
`use the alkyl ester derivative of I-llVlF (acetic acid is an alkyl carboxylic acid) as the
`
`precursor reactant for the production of FDCA instead of Hl\/IF.” Petition at 42.
`
`The Petition thus explains benefits of using esters as precursors to FDCA and then
`
`cites an example that uses acetoxymethylfurfural — the preferred precursor of the
`
`’92l patent — , thereby establishing that one skilled in the art would have been
`
`motivated to produce FDCA from an ester of Hl\/IF. See Petition at 42.
`
`Indeed, in discussing claim 1, Element C, the Petition states that during
`
`original prosecution, the Examiner and the Patent Owner understood that the
`
`oxidation of Hl\/[F esters to FDCA was well known. See Petition at 32-33. For
`
`example, on pages 32-33 of the Petition, excerpts from the prosecution history
`
`show that the Patent Owner represented that “Sanborn [cited] during original
`
`5 Acetoxymethylfurfural has the following formula and is an ester of HMF, as
`
`discussed by Dr. Martin (see Ex. 1009 at 1] 22; see also Paper 10 at 17):
`
`O;\§.O]/«O/4o_
`
`
`
`prosecution] teaches that the oxidation ofHMF esters to FDCA” is conducted
`
`under certain conditions. Similarly, on page 33 of the Petition, another excerpt
`
`shows that the Patent Owner represented that “[t]he examples 7 and 9 in Sanborn
`
`show the oxidation of HlVlF ester to FDCA.” Accordingly, as shown in the
`
`Petition, both the Examiner and the Patent Owner understood that the oxidation of
`
`I-IlVlF esters to form FDCA were well known.
`
`As such, the totality of the Petition provides more than a cursory citation to
`
`an example disclosed by the ’0l8 patent, and provides an articulated reason,
`
`supported by an example, as to why it would have been obvious to one skilled in
`
`the art to use an ester of Hl\/[F as a precursor to FDCA. While the Decision cites In
`
`re Kahn in asserting that the Petition fails to meet its burden in explaining the
`
`relevance of the teaching (Paper 10 at 17), it misapprehends and/or overlooks the
`
`totality of the Petition and the knowledge and understanding of one skilled in the
`
`art in understanding the disclosure of the ’0l8 patent. See KSR Int 7 Co. v. Teleflex
`
`Inc., 550 U.S. 398, 418 (2007) (“As our precedents make clear, however, the
`
`analysis need not seek out precise teachings directed to the specific subj ect matter
`
`of the challenged claim, for a court can take account of the inferences and creative
`
`steps that a person of ordinary skill in the art would employ.”).
`
`
`
`Thus, the Petition, as supported by the Declaration, provides sufficient
`
`explanation regarding the entire ’0 1 8 patent, that it would have been obvious to
`
`one skilled in the art to use an ester of HMF as a precursor in forming FDCA.
`
`V.
`
`CONCLUSION
`
`Because the Board abused its discretion by misapprehending and/or
`
`overlooking certain portions of the Petition and the ’018 patent, this Request for
`
`Rehearing of the ’921 patent should be granted and Ground 2 should be instituted.
`
`Dated: March22, 2016
`
`Respectfulb’S
`
`46
`By;
`Michael S. Marcus
`
`a?
`
`Registration No.: 3 1,727
`Dipu A. Doshi
`Registration No.: 60,3 73
`Jonathan W.S. England
`Registration No.: 71,223
`BLANK ROME LLP
`
`1825 Eye Street, NW
`Washington, DC 20006-5403
`(202) 420-2200
`Counselfor Petitioners
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing RE§ QUEST FOR
`
`
`
` REHEARING PURSUANT TO 37 C.F.R. 42.71 d is being served on counsel
`
`of record by filing this document through the Patent Review Processing System.
`
`Dated: March 22, 2016
`
`Respect 1 ,%
`
`Michael S. Marcus
`
`Registration No.: 31,727
`Dipu A. Doshi
`Registration No.: 60,3 73
`Jonathan W.S. England
`Registration No.: 71,223
`BLANK ROME LLP
`
`1825 Eye Street, NW
`Washington, DC 20006-5403
`(202) 420-2200
`Counselfor Petitioners
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