Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 20
` Entered: May 24, 2016
`
`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
`v.
`
`FURANIX TECHNOLOGIES B.V.,
`Patent Owner.
`____________
`
`Case IPR2015-01838
`Patent 8,865,921 B2
`____________
`
`
`Before TONI R. SCHEINER, SHERIDAN K. SNEDDEN, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`571-272-7822
`
`
` Paper No. 20
` Entered: May 24, 2016
`
`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
`v.
`
`FURANIX TECHNOLOGIES B.V.,
`Patent Owner.
`____________
`
`Case IPR2015-01838
`Patent 8,865,921 B2
`____________
`
`
`Before TONI R. SCHEINER, SHERIDAN K. SNEDDEN, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`IPR2015-01838
`Patent 8,865,921 B2
`
`I.
`
`INTRODUCTION
`
`Petitioners E. I. du Pont de Nemours and Company and Archer-
`
`Daniels-Midland Company (collectively, “Petitioners”) request
`
`reconsideration of our March 9, 2016 Decision on Institution of Inter Partes
`
`Review in this proceeding (“Decision,” Paper 10) with respect to our denial
`
`of institution of Ground 2. Paper 12 (“Req.”). In our Decision, we instituted
`
`inter partes review of claims 1–5 and 7–9 of U.S. Patent No. 8,865,921 B2
`
`(“the’921 patent,” Ex. 1001) on obviousness grounds. We denied
`
`institution, however, of Petitioners’ obviousness challenge of claims 6 and
`
`10 based on the ’732 publication (Ex. 1002), the ’018 patent (Ex. 1004), RU
`
`’177 (Ex. 1003), and the ’318 application (Ex. 1008). Decision, 16–17.
`
`Petitioners request rehearing of our denial of this ground on the basis that we
`
`misapprehended and/or overlooked the totality of Petitioners’ arguments
`
`based on the ’018 patent, and how those teachings render claims 6 and 10
`
`obvious. Req. 1.
`
`The applicable standard for a request for rehearing of an institution
`
`decision is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements are
`
`set forth in 37 C.F.R. § 42.71(d), which provides, in relevant part, that “[t]he
`
`burden of showing a decision should be modified lies with the party
`
`challenging the decision,” and that “[t]he request must specifically identify
`
`all matters the party believes the Board misapprehended or overlooked, and
`
`the place where each matter was previously addressed in a motion, an
`
`opposition, or a reply.”
`
`For the reasons set forth below, Petitioners’ request for rehearing is
`
`denied.
`
`
`
`
`
`2
`
`
`
`IPR2015-01838
`Patent 8,865,921 B2
`
`II. ANALYSIS
`
`In our Decision, we determined that Petitioners failed to demonstrate
`
`a reasonable likelihood that the cited prior art teachings render obvious the
`
`requirement in dependent claims 6 and 10 that the feed used for the
`
`preparation of 2,5-furan dicarboxylic acid (“FDCA”) comprises an ester of
`
`5-hydroxymethylfurfural (“HMF”). We noted that Petitioners relied
`
`primarily upon the teaching of the ’018 patent in which an “ester derivative”
`
`refers to the formation of an ester of FDCA (e.g., 5-(alkoxycarbonyl)
`
`furancarboxylic acid (AcMFA)), not the use of an ester of HMF to form
`
`FDCA as required by claims 6 and 10. Decision, 16–17. Although we
`
`recognized that Example 15 of the ’018 patent separately describes the
`
`oxidation of acetoxymethylfurfuryl, we noted that Petitioners failed to
`
`provide any explanation of the relevance of this teaching other than a single
`
`cursory citation in the Petition. Id. at 17 (citing Petition 42, Ex. 1004, 12:9–
`
`16).
`
`In their request for reconsideration, Petitioners assert that the
`
`Petition’s citation to teachings of the ’018 patent regarding “ester-acid
`
`derivatives of HMF” and “products [that] can be further oxidized to form . . .
`
`FDCA” refer to esters of HMF. Req. 4 (citing Petition 41; Ex. 1004, 1:11–
`
`23). Petitioners further assert that “[d]irectly after citing Example 15, the
`
`Petition states that ‘[p]reparing FDCA by using the ester of HMF and acetic
`
`acid instead of or in combination with HMF is expressly suggested by the
`
`’018 patent, and therefore obvious.” Id. (citing Petition 42). Additionally,
`
`Petitioners contend that “the Petition states that during [the] original
`
`prosecution, the Examiner and the Patent Owner understood that the
`
`
`
`3
`
`
`
`IPR2015-01838
`Patent 8,865,921 B2
`
`oxidation of HMF esters to FDCA were well known.” Id. at 5 (citing
`
`Petition 32–33).
`
`Petitioners have not demonstrated that we misapprehended or
`
`overlooked any of the arguments or evidence presented in the Petition with
`
`respect to claims 6 and 10. We previously considered the cited teachings of
`
`the ’018 patent highlighted in Petitioners’ reconsideration request, but did
`
`not find any support for Petitioners’ contention that “ester-acid derivatives
`
`of HMF” or “products [that] can be further oxidized to form . . . FDCA”
`
`refer to esters of HMF, as opposed to esters of FDCA. Decision, 17. As we
`
`previously noted, an ester of FDCA is not the same as an ester of HMF. Id.
`
`(citing Ex. 1009 ¶¶ 22–23, 32). Moreover, Petitioners’ additional arguments
`
`relying upon statements made during prosecution are unpersuasive insofar as
`
`the Petition did not rely upon or cite to the prosecution history to support its
`
`obviousness arguments for claims 6 and 10. Petition, 40–45. A request for
`
`rehearing is not an opportunity to present new arguments not previously
`
`presented in the Petition.
`
`III. ORDER
`
`In consideration of the foregoing, it is:
`
`ORDERED that Petitioners’ request for rehearing is denied.
`
`
`
`4
`
`
`
`
`
`
`
`IPR2015-01838
`Patent 8,865,921 B2
`
`PETITIONERS:
`
`Michael Marcus
`mmarcus@blankrome.com
`
`Dipu Doshi
`ddoshi@blankrome.com
`
`Jonathan England
`jwengland@blankrome.com
`
`
`PATENT OWNER:
`
`Paul Richter
`prichter@kenyon.com
`
`
`
`
`5
`
`
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