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
`____________________
`
`
`
`PETITIONERS’ RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATIONS ON CROSS-EXAMINATION
`
`
`__________
`
`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
`____________________
`
`
`
`PETITIONERS’ RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATIONS ON CROSS-EXAMINATION
`
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to the Scheduling Order (Paper 11) entered in this proceeding,
`
`Petitioners E. I. du Pont de Nemours and Company and Archer-Daniels-Midland
`
`Company (collectively “Petitioners”) hereby submit this Response to Patent
`
`Owner’s Motion for Observations on Cross-Examination (“Motion” or “Paper 35”).
`
`II.
`
`PATENT OWNER’S OBSERVATIONS CONTAIN IMPROPER
`ARGUMENTS AND SHOULD BE STRICKEN
`
`Petitioners object to Patent Owner’s Motion in its entirety because the
`
`“observations contain arguments and are excessively long, and, thus, improper.”
`
`See Medtronic, Inc. v. Nuvasive, Inc., No. IPR2013-00506, Paper 37, at 3 (P.T.A.B.
`
`Oct. 15, 2014) (“In considering whether a motion for observation, or a response, is
`
`improper, the entire motion or response may be dismissed and not considered if
`
`there is even one excessively long or argumentative observation or response.”).
`
`As stated in Paper 11, “[t]he observation must be a concise statement of the
`
`relevance of precisely identified testimony to a precisely identified argument or
`
`portion of an exhibit.” See Paper 11, at 5. More importantly, “an observation is
`
`not an opportunity to raise new issues, to re-argue issues, or to pursue objections.”
`
`See Medtronic, No. IPR2013-00506, Paper 37, at 3 (emphasis added). Patent
`
`Owner does all three.
`
`Petitioners respectfully submit that at least Patent Owner’s Observations 15,
`
`16, 17, 18, and 20 improperly “raise new issues” not previously presented by
`
`
`
`
`
`1
`
`
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`Patent Owner; Observations 7, 10, 11, 16, 18, and 21 improperly “re-argue issues”
`
`raised in Patent Owner’s Response; and Observations 1, 2, 3, 8, and 9 improperly
`
`“pursue objections” regarding the scope of the Reply Brief and its Exhibits.
`
`Because Patent Owner’s entire Motion for Observations is improper, it should be
`
`stricken, dismissed, or simply ignored by the Board in rendering a Final Written
`
`Decision in this proceeding. In an abundance of caution, Petitioners provide the
`
`following responses.
`
`III. RESPONSES TO OBSERVATIONS
`
`1.
`
`Dr. Martin’s testimony in Exh. 1031 at 10:17-11:20 is relevant to his
`
`second declaration (Exh. 1028) at ¶¶ 5-7 regarding the disagreement in
`
`qualifications and understanding of a person having ordinary skill in the art. See
`
`Exh. 2003 ¶ 44; see also Exh. 2020 at 18:6-14; 78:11-14. This testimony is
`
`relevant to Petitioners’ Reply (Paper 29) at 2, and provides the foundation for
`
`responsive examples regarding the differences between Dr. Martin’s and Dr.
`
`Schammel’s opinions. Patent Owner makes the argument that the testimony shows
`
`that the evidence could have been in the Original Declaration. Of course, whether
`
`the testimony could have been offered in the Original Declaration is irrelevant, so
`
`long as the testimony is offered to refute or rebut new evidence in the Patent
`
`Owner’s Response, which is the case here. See Koch v. Koch Indus., Inc., 203 F.3d
`
`1202, 1224 (10th Cir. 2000) (“Where the evidence rebuts new evidence or theories
`
`
`
`
`
`2
`
`
`
`proffered in the defendant's case-in-chief, that the evidence may have been offered
`
`in the plaintiff's case-in-chief does not preclude its admission in rebuttal.”)
`
`(citation omitted).
`
`2.
`
`Once again, Patent Owner attempts to use the Motion for
`
`Observations to pursue an argument regarding the scope of the Reply and the
`
`Exhibits cited therein by arguing that the testimony shows that the evidence could
`
`have been in the Original Declaration. Of course, whether the testimony could
`
`have been offered in the Original Declaration is irrelevant, so long as the testimony
`
`is offered to refute or rebut new evidence in the Patent Owner’s response, which is
`
`the case here. See Koch supra.
`
`3.
`
`Dr. Martin’s testimony in Exh. 1031 at 14:21-15:16 should not be
`
`considered because it is irrelevant to whether Dr. Schammel’s opinions would or
`
`would not have changed based on a disagreement over the level of a person of
`
`ordinary skill in the art; what is relevant is that there is a disagreement between the
`
`two definitions, and Dr. Martin addressed that difference in his Second Declaration.
`
`See e.g., Exh. 1028 at ¶¶ 5-7 (testifying about differences in experience and
`
`capabilities between definitions of a person of ordinary skill in the art).
`
`4.
`
`In Exh. 1031 at 28:8-13 and 32:2-33:18, Dr. Martin testifies that not
`
`only do the staged reactor data of the ’732 publication and Partenheimer not have
`
`identical conditions, but also that when Partenheimer was published, “he has more
`
`
`
`
`
`3
`
`
`
`data at hand, and so is able to draw a better conclusion or a different conclusion
`
`than he reached before.” This testimony is relevant because it confirms the
`
`testimony in Exh. 1028 at ¶¶ 13-17 that the later drafted document would have
`
`been more authoritative to a person having ordinary skill in the art regarding
`
`conflicting conclusions. This testimony does not contradict prior testimony nor
`
`does it reflect any purported unpredictability of increasing temperature of a known
`
`reaction within known ranges.
`
`5.
`
`Dr. Martin’s testimony in Exh. 1031 at 20:10-23:11 that certain
`
`experiments of the ’732 publication “certainly stand for the proposition that a
`
`greater reaction time does not always result in a greater yield of FDCA with all the
`
`other variables being kept constant,” is irrelevant to the issues in this proceeding
`
`because the challenged claims do not recite any limitation relating to reaction time.
`
`Moreover, Patent Owner’s attempt to re-argue an argument already raised in its
`
`Response should not be considered as Motions for Observations are not to re-argue
`
`issues in an attempt to get the last word. In any event, as explained by Dr. Martin
`
`and Paper 29 at 3-4, yield is a direct function of at least four known result-effective
`
`variables: temperature, pressure, catalyst concentration, and time of reaction. A
`
`person of ordinary skill in the art would have been motivated to increase
`
`temperature and decrease pressure based on the prior art teachings to achieve
`
`higher yields.
`
`
`
`
`
`4
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`
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`6.
`
`In Exh. 1031 at 28:8-13 and 32:2-33:18 Dr. Martin testifies that not
`
`only do the staged reactor data of the ’732 publication and Partenheimer not have
`
`identical conditions, but also that when Partenheimer was published “he ha[d]
`
`more data at hand, and so is able to draw a better conclusion or a different
`
`conclusion than he reached before.” This testimony confirms the testimony in Exh.
`
`1028 at ¶¶ 13-17 that the later-drafted document (i.e., Partenheimer) would have
`
`been more authoritative to a person having ordinary skill in the art regarding
`
`conflicting conclusions.
`
`7.
`
`In Exh. 1031 at 32:2-16 Dr. Martin testifies that “[i]t was run at 75
`
`degrees and then 150 degrees, which is a higher temperature where one would
`
`expect a higher yield.” Also, in Exh. 1031 at 33:13-18 Dr. Martin testifies that
`
`having more data allows Partenheimer to draw better conclusions. This testimony
`
`is relevant to Dr. Martin’s declaration at ¶¶ 13-17 and confirms his testimony that a
`
`person of ordinary skill in the art would understand that in view of Partenheimer,
`
`the later work, a person having ordinary skill in the art would expect higher
`
`temperatures and single temperature reactions to provide better yields. This
`
`testimony is also relevant to Paper 29 at pp. 9-10 and confirms that a person having
`
`ordinary skill in the art would not have considered staging the temperature.
`
`8.
`
`Patent Owner attempts to use the Motion for Observations to pursue
`
`an argument regarding the scope of the Reply and the Exhibits cited therein by
`
`
`
`
`
`5
`
`
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`arguing that the testimony shows that the evidence could have been in the Original
`
`Declaration. Of course, whether the testimony could have been offered in the
`
`Original Declaration is irrelevant, so long as the testimony is offered to refute or
`
`rebut new evidence in the Patent Owner’s response, which is the case here. See
`
`Koch supra. Dr. Martin’s testimony at Exh. 1031 at 36:13-37:10 directly responds
`
`to Dr. Schammel’s testimony at Exh. 2003 at ¶¶ 50-55. This testimony is also
`
`relevant to Paper 29 at pp. 9-10 rebutting Dr. Schammel’s testimony that a person
`
`having ordinary skill in the art would use staged processes.
`
`10. Patent Owner’s attempt to re-argue an argument already raised in its
`
`Response should not be considered as Motions for Observations are not to re-argue
`
`issues in an attempt to get the last word. In any event, as explained by Dr. Martin
`
`and Paper 29 at pp. 3-4, yield is a direct function of at least four known result-
`
`effective variables: temperature, pressure, catalyst concentration, and time of
`
`reaction. A person of ordinary skill in the art would have been motivated to
`
`increase temperature and decrease pressure based on the prior art teachings to
`
`achieve higher yields. In Exh. 1031 at 28:8-13 and 32:2-33:18 Dr. Martin testifies
`
`that not only do the staged reactor data of the ’732 publication and Partenheimer
`
`not have identical conditions, but also that when Partenheimer was published “he
`
`ha[d] more data at hand, and so is able to draw a better conclusion or a different
`
`conclusion than he reached before.” This testimony confirms Dr. Martin’s prior
`
`
`
`
`
`6
`
`
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`testimony in Exh. 1028 at ¶¶ 13-17 and supports Paper 29 at pp. 9-10, that the
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`later-filed document (i.e., Partenheimer) would have been more authoritative to a
`
`person having ordinary skill in the art regarding conflicting conclusions. In
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`addition, the testimony confirms that increasing temperature – and keeping all
`
`other variables the same – will generally increase yield as both the ’732 publication
`
`and Partenheimer confirm; therefore, the testimony confirms the fact that such a
`
`result was predictable.
`
`11.
`
`In Exhibit 1031 at 120:4-122:5 Dr. Martin testifies that, based on Fig.
`
`7 of Partenheimer, Partenheimer teaches that yield increases with catalyst
`
`concentration. This testimony is relevant to ¶ 18 of Exh. 1028 because it confirms
`
`Dr. Martin’s declaration testimony that one of ordinary skill in the art would have
`
`expected yields of FDCA greater than 70% based upon Partenheimer’s disclosure.
`
`12.
`
`In Exh. 1031 at 64:21-65:12 Dr. Martin testifies, with respect to
`
`increasing temperature and catalyst concentration, that “[i]n all other cases, in
`
`Table 3, increasing catalyst concentration increases the FDCA yield,” and also
`
`testifies that he himself “would be motivated to run at a higher temperature, 125
`
`degrees versus 75, for the higher yield that was attainable.” This testimony is
`
`relevant to Dr. Martin’s testimony in ¶ 18 of Exh. 1028 as well as ¶¶ 16-17 that
`
`Partenheimer is more authoritative than the ’732 publication. This testimony is
`
`relevant because it confirms Dr. Martin’s testimony, relying on Partenheimer, that
`
`
`
`
`
`7
`
`
`
`increasing temperature and catalyst results in increased yield.
`
`13.
`
`In Exhibit 1031 at 120:4-122:5 Dr. Martin testifies that, based on Fig.
`
`7 of Partenheimer, the reference teaches that yield increases with catalyst
`
`concentration. This testimony is relevant because it confirms Dr. Martin’s prior
`
`testimony at ¶ 18 of Exh. 1028 that “it would have been obvious to one of ordinary
`
`skill in the art” “that increasing catalyst concentration could increase yield even
`
`greater than 70%.”
`
`14. Dr. Martin’s testimony at Exh. 1031 at 76:19-78:2 is relevant to Exh.
`
`1028 at ¶¶ 27-28 because it confirms his declaration testimony that “[t]he ’318
`
`publication explicitly teaches one skilled in the art that a temperature range ‘from
`
`100°C through about 160°C,’ is a viable temperature for the catalytic conversion of
`
`HMF to FDCA, thus in my opinion, further confirming the disclosed ranged of
`
`50 °C to 250 °C taught by the ’732 publication.” (emphasis added). This testimony
`
`is relevant because it confirms Dr. Martin’s testimony that additional data related
`
`to temperature ranges can confirm the disclosure of the ’732 publication. The
`
`testimony is not contradictory of any prior testimony.
`
`15. Dr. Martin’s testimony in Exh. 1031 at 78:18-79:2 confirms his
`
`testimony in Exh. 1028 at ¶¶ 27-28 because “[t]he ’318 publication explicitly
`
`teaches one skilled in the art that a temperature range ‘from 100°C through about
`
`160°C,’ is a viable temperature for the catalytic conversion of HMF to FDCA, thus
`
`
`
`
`
`8
`
`
`
`in my opinion, further confirming the disclosed ranged of 50 °C to 250 °C taught
`
`by the ’732 publication.” (emphasis added). This testimony is relevant because it
`
`confirms Dr. Martin’s testimony that additional data related to temperature ranges
`
`can confirm the disclosure of the ’732 publication. The testimony is not
`
`contradictory of any prior testimony.
`
`16. Dr. Martin’s testimony in Exh. 1031 at 81:15-82:5 confirms his
`
`testimony in Exh. 1028 at ¶¶ 27-28 that “[t]he ’318 publication explicitly teaches
`
`one skilled in the art that a temperature range ‘from 100°C through about 160°C,’
`
`is a viable temperature for the catalytic conversion of HMF to FDCA, thus in my
`
`opinion, further confirming the disclosed ranged of 50 °C to 250 °C taught by
`
`the ’732 publication.” (emphasis added). In particular, Dr. Martin testifies “why
`
`wouldn’t you be motivated to at least try it? That seems obvious to me.” This
`
`testimony is relevant because it confirms Dr. Martin’s testimony that additional
`
`data related to temperature ranges can confirm the disclosure of the ’732
`
`publication. The testimony is not contradictory of any prior testimony.
`
`17. Dr. Martin’s testimony in Exh. 1031 at 93:11-94:4 is irrelevant to Dr.
`
`Martin’s testimony in ¶¶ 27 and 28 of his declaration because Patent Owner cannot
`
`establish that the cited reference relates to a catalytic conversion to form FDCA.
`
`Moreover, the testimony does not address whether or not an explicitly disclosed
`
`temperature range relating to the same catalytic reaction, HMF to FDCA (’318
`
`
`
`
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`9
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`
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`publication) can confirm the disclosure of another reference (’732 publication) to a
`
`person of ordinary skill in the art.
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`18. Dr. Martin’s testimony at Exh. 1031 at 97:13-98:21 is irrelevant to Dr.
`
`Martin’s testimony in ¶¶ 27 and 28 of his declaration because Patent Owner cannot
`
`establish that the reference relates to a catalytic conversion to form FDCA.
`
`Moreover, the testimony does not address whether or not an explicitly disclosed
`
`temperature range relating to the same catalytic reaction, HMF to FDCA (’318
`
`publication) can confirm the disclosure of another reference (’732 publication) to a
`
`person of ordinary skill in the art.
`
`19. Dr. Martin’s testimony in Exh. 1031 at 106:3-107:22 confirms Dr.
`
`Martin’s testimony at ¶¶ 29-32 that the ’921 patent does not disclose a
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`commercially viable process. This testimony is relevant because it confirms Dr.
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`Martin’s testimony in Exh. 1028 at ¶ 31 that the ’921 patent only describes a
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`process that produces “an insignificant amount of FDCA is produced.” This
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`testimony is also relevant because it confirms Dr. Martin’s testimony in Exh. 1028
`
`at ¶ 32 that “the ’921 patent fails to disclose production at a commercial scale, and
`
`thus fails to teach to one of ordinary skill in the art, a commercially viable process.”
`
`21. Dr. Martin’s testimony in Exh. 1031 at 116:1-117:5 is relevant to his
`
`testimony at Exh. 1028 at ¶ 35 and Exh. 1009 at ¶¶ 75-85, that the ’921 patent uses
`
`three times more catalyst – which is not a claim term – than Partenheimer or
`
`
`
`
`
`10
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`
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`the ’732 publication and thus obtains predictably higher yields. It is also relevant
`
`to Exh. 2004 which reports higher yields than the ’921 patent and uses a greater
`
`quantity of catalyst.
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`
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`Dated: October 25, 2016
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`Respectfully submitted,
`
`By: /Michael S. Marcus/
`
`Michael S. Marcus
`Registration No.: 31,727
`Dipu A. Doshi
`Registration No.: 60,073
`Jonathan W.S. England
`Registration No.: 71,223
`BLANK ROME LLP
`1825 Eye Street NW
`Washington DC 20006
`Tel.: 202-420-4742
`
`Counsel for Petitioners
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`11
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`
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing PETITIONERS’
`
`RESPONSE TO PATENT OWNER’S MOTION FOR OBSERVATIONS ON CROSS-
`
`EXAMINATION is being served on counsel of record by filing this document via
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`electronic mail.
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`Dated: October 25, 2016
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`Respectfully submitted,
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`/Michael S. Marcus/
`
`Michael S. Marcus
`Registration No. 31,727
`BLANK ROME LLP
`1825 Eye Street NW
`Washington DC 20006
`Tel: 202-420-4742
`
`Counsel for Petitioners
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