Paper 50
` Entered: February 26, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`MEXICHEM AMANCO HOLDINGS S.A. de C.V.,
`Petitioner,
`
`v.
`
`HONEYWELL INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`Case IPR2013-00576
`Patent 8,444,874 B2
`_______________
`
`
`Before LINDA M. GAUDETTE, FRANCISCO C. PRATS, and
`JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.
`
`
`
`BONILLA, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`
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`Arkema Exhibit 1152
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`Patent 8,444,874 B2
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`I.
`
`INTRODUCTION
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`Mexichem Amanco Holdings S.A. de C.V. (“Mexichem”) filed a corrected
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`Petition (Paper 7, “Pet.”) to institute an inter partes review of claims 1–15 of U.S.
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`Patent No. 8,444,874 B2 (Ex. 1001, “the ’874 patent”). 35 U.S.C. § 311.
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`Honeywell International, Inc. (“Honeywell”) filed a Preliminary Response (Paper
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`11, “Prel. Resp.”). We determined that the information presented in the Petition
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`demonstrated that there was a reasonable likelihood that Petitioner would prevail in
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`challenging claims 1–15 of the ’874 patent as unpatentable. Paper 13 (“Dec. to
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`Inst.”), 2, 19. Pursuant to 35 U.S.C. § 314, we instituted this proceeding on
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`February 27, 2014, to review whether claims 1–15 are unpatentable on the ground
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`that such claims would have been obvious over Inagaki,1 Konzo,2 and Bivens,3
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`under 35 U.S.C. § 103. Dec. to Inst. 19.
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`After institution of trial, Patent Owner filed a Patent Owner Response.
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`Paper 21 (“PO Resp.”). Petitioner subsequently filed a Reply to the Response.
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`Paper 27 (“Reply”). Patent Owner also filed a Motion to Exclude seeking to
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`exclude certain evidence. Paper 38. Petitioner filed an Opposition to Patent
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`Owner’s Motion to Exclude (Paper 42), and Patent Owner filed a Reply (Paper 44).
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`An oral hearing was held on October 16, 2014. A transcript of the hearing
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`has been entered into the record. Paper 49 (“Tr.”).
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`
`1 Inagaki et al., JP-04-110388 , published April 10, 1992 (“Inagaki”) (Ex. 1002)
`(English translation Ex. 1003, Ex. 1068).
`2 Konzo et al., “Winter Air Conditioning,” (The Industrial Press 1958), pp. 590–
`596 (“Konzo”) (Ex. 1004).
`3 Bivens et al., U.S. Pat. No. 6,783,691 B1, issued Aug. 31, 2004 (“Bivens”)
`(Ex. 1005).
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`We have statutory authority under 35 U.S.C. § 6(c). This Final Written
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`Decision is issued pursuant to 35 U.S.C. § 318(a). Petitioner has shown by a
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`preponderance of the evidence that claims 1 and 3–15, but not claim 2, of the ’874
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`patent are unpatentable. Patent Owner’s Motion to Exclude is dismissed-in-part
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`and denied-in-part.
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`A. The ’874 Patent (Ex. 1001)
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`The ’874 patent relates to methods of transferring heat in a heat transfer
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`system, such as a refrigerator or air conditioning system. Ex. 1001, 1:21–35. In
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`the past, such systems have used compositions comprising chlorofluorocarbons
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`(“CFCs”) or hydrochlorofluorocarbons (“HCFCs”), which have ozone-depleting
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`properties. Id. at 1:62–2:4. The methods of the ’874 patent use alternative
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`compounds that do not deplete the ozone layer, i.e., hydrofluorocarbons (“HFCs”),
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`in combination with lubricants. Id. at 2:8–12, 2:25–42.
`
`In relation to HFCs, the ’874 patent describes fluoroalkene compounds
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`having Formula I (XCFzR3-z, where X is a C2, C3, C4 or C5 unsaturated, substituted
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`or unsubstituted, radical, each R is independently Cl, F, Br, I or H, and z is 1 to 3).
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`Id. at 3:43–53. The ’874 patent describes compounds of Formula I comprising
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`propenes, butenes, pentanes, and hexanes, and states that “[a]mong the propenes,
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`tetrafluoropropenes (HFO-1234) and fluorochlorop[ro]penes . . . are especially
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`preferred in certain embodiments.” Id. at 4:1–11, 22–33.
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`Regarding tetrafluoropropenes (“HFO-1234”), the ’874 patent discusses
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`specific isomers of 1,3,3,3-tetrafluoropropene (“HFO-1234ze”), cis-HFO-1234ze
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`and trans-HFO-1234ze. Id. at 4:22–33, 6:54–59; see also Ex. 1008 ¶¶ 16, 19. In
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`this context, the ’874 patent further states:
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`Although the properties of (cis)HFO-1234ze and (trans)HFO-1234ze
`differ in at least some respects, it is contemplated that each of these
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`compounds is adaptable for use, either alone or together with other
`compounds including its stereo isomer, in connection with each of the
`applications, methods and systems described herein. For example,
`(trans)HFO-1234ze may be preferred for use in certain systems
`because of its relatively low boiling point (-19º C.), while (cis)HFO-
`1234ze, with a boiling point of +9º C., may be preferred in other
`applications. Of course, it is likely that combinations of the cis- and
`trans-isomers will be acceptable and/or preferred in many
`embodiments. Accordingly, it is to be understood that the terms
`“HFO-1234ze” and 1,3,3,3-tetrafluoropropene refer to both stereo
`isomers, and the use of this term is intended to indicate that each of
`the cis- and trans-forms applies and/or is useful for the stated purpose
`unless otherwise indicated.
`
`Ex. 1001, 6:39–59.
`
`In addition, the ’874 patent describes HFC compositions containing other
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`additional components. Such components include “Difluoromethane (HFC-32)”
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`and/or “1,1,1,2-Tetrafluoroethane (HFC-134a),” among others. Id. at 8:4–27.
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`Other components also may include “a lubricant, generally in amounts of from
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`about 30 to about 50 percent by weight of the composition.” Id. at 10:12–20; see
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`also id. at 2:23–42 (stating “it is highly desirabl[e] for refrigeration fluids to be
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`compatible with the lubricant utilized in the compressor unit, used in most
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`refrigeration systems”). The ’874 patent describes “[c]ommonly used refrigeration
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`lubricants such as Polyol Esters (POEs) and Poly Alkylene Glycols (PAGs), PAG
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`oils, silicone oil, mineral oil, alkyl benzenes (ABs) and poly(alpha-olefin) (PAO).”
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`Id. at 10:28–32.
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`Six examples in the ’874 patent assess features of certain
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`tetrafluoropropenes, including HFO-1225ye, trans-HFO-1234ze, cis-HFO-1234ze,
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`and HFO-1234yf. Id. at 23:58-29:67. Example 2 describes the miscibility of
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`HFO-1225ye and HFO-1234ze when combined with different lubricants at
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`temperatures ranging from -50º C to 70º C, using 5, 20, and 50 weight percent of
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`lubricants, such as: (i) mineral oil, (ii) alkyl benzene, (iii) ester oil (Mobil EAL 22
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`cc and Solest 120, i.e., polyol esters), (iv) polyalkylene glycol (“PAG”) oil, or (v)
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`poly(alpha-olefin) oil. Id. at 24:61–25:11. As stated in Example 2, the
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`“polyalkylene glycol and [polyol] ester oil lubricants were judged to be miscible in
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`all tested proportions over the entire temperature range,” except HFO-1225ye
`
`mixtures under certain conditions. Id. at 25:21–30.
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`B. Illustrative Claims
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`Claims 1, 9, and 12 are independent. Claim 1 is reproduced below:
`
`1. A method of transferring heat to or from a body in a vapor
`compression system comprising:
`
`(a) providing in at least a portion of said system a heat transfer
`composition comprising at least about 5% by weight of trans-1,3,3,3-
`tetrafluoropropene and lubricant comprising polyol ester; and
`
`trans-1,3,3,3-
`to or from
`transferred
`to be
`(b) causing heat
`tetrafluoropropene and into or from said body by heat transfer contact
`between said trans-1,3,3,3-tetrafluoropropene and the body.
`
`Id. at 30:1–11 (emphasis added).
`
`Independent claim 9 is reproduced below:
`
`9. A method of cooling a body in a heat transfer system by
`transferring heat from the body to at least a portion of a heat transfer
`fluid contained in the system, the method comprising;
`
`(a) providing in the system a heat transfer fluid comprising at least
`about 5% by weight of trans-1,3,3,3-tetrafluoropropene and from
`about 30 by weight to about 50% by weight of polyol ester lubricant,
`wherein in at least a portion of said system said trans-1,3,3,3-
`tetrafluoropropene is in a gas phase at a first pressure and at a first
`temperature;
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`(b) removing heat from said trans-1,3,3,3-tetrafluoropropene provided
`at said first temperature by condensing at least a portion of said trans-
`1,3,3,3-tetrafluoropropene to produce at least a portion of said heat
`transfer fluid in a liquid phase at about said first pressure;
`
`(c) reducing the pressure of at least a portion of said liquid heat
`transfer fluid from step (b) to produce a heat transfer fluid at a second
`temperature substantially below said first temperature and a second
`pressure substantially below said first pressure;
`
`(d) cooling the body by bringing said body into heat transfer contact
`with said heat transfer fluid at about said second temperature
`produced in step (c); and
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`(e) providing at least a portion of said fluid at said first pressure in
`said step (a) by compressing said heat transfer fluid provided in step
`(d) from about said second pressure to about said first pressure.
`
`Id. at 30:45–31:4 (emphasis added). Independent claim 12 is similar to claim 9,
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`but, inter alia, refers to “a heat transfer fluid comprising at least about 5% by
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`weight of trans-1,3,3,3-tetrafluoropropene and polyol ester lubricant.” Id. at 31:9–
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`32:11.
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`II. ANALYSIS
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`A. Claim Construction
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`Consistent with the statute and legislative history of the America Invents
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`Act, the Board interprets claims using the “broadest reasonable construction in
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`light of the specification of the patent in which [they] appear[].” 37 C.F.R.
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`§ 42.100(b); Office Patent Trial Practice Guide (“Practice Guide”),
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`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). There is a “heavy presumption” that
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`a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
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`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
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`In our Decision to Institute, we construed the term “trans-1,3,3,3-
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`tetrafluoropropene” recited in all challenged independent claims. Dec. to Inst. 7.
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`We concluded that the broadest reasonable interpretation of that term, in view of
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`the Specification of the ’874 patent, encompassed at least “trans-1,1,1,3-
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`tetrafluoropropene,” “trans-1,3,3,3-tetrafluoro-1-propene,” and “trans-HFO-
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`1234ze.” Id.; Ex. 1001, 4:22–33, 6:37–59.
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`Petitioner contends, relying on a Declaration by Dr. Stuart Corr (Ex. 1008),
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`that the trans-form of 1,3,3,3-tetrafluoropropene, which may be denoted “trans-
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`HFO-1234ze” or “HFO-1234ze(E),” also may be “referred to as an HFO
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`(hydrofluoroolefin), HFC (hydrofluorocarbon) or R (refrigerant).” Pet. 11–12
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`(citing Ex. 1008 ¶ 18). Thus, according to Petitioner, trans-1,3,3,3-
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`tetrafluoropropene may be called “HFO-1234ze(E),” “HFC-1234ze(E),” “trans-
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`HFO-1234ze,” or “trans-HFC-1234ze,” among other names. Id. at 12.
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`Patent Owner disagrees that the term “HFC-1234ze” or “trans-HFC-1234ze”
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`describes unsaturated fluorocarbons such as trans-1,3,3,3-tetrafluoropropene. PO
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`Resp. 13. Relying on Declarations by Dr. Ian Shankland (Ex. 2041) and Dr.
`
`Donald Bivens (Ex. 2040), Patent Owner contends that an ordinary artisan would
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`have understood “HFC” and “HFO” to have separate and distinct meanings. Id.
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`(citing (Ex. 2041 ¶ 14) (Ex. 2040 ¶ 16)). Thus, Patent Owner contends, an
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`ordinary artisan would not have referred to trans-1,3,3,3-tetrafluoropropene as
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`“HFC-1234ze” or “trans-HFC-1234ze.” PO Resp. 13. Instead, according to Patent
`
`Owner, an ordinary artisan would have understood the term “HFC” in the prior art,
`
`such as in Bivens, to refer to saturated refrigerants only, not unsaturated
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`fluorocarbons, such as the recited HFO. Id. at 13–14.
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`In support, Patent Owner also cites Petitioner’s “white paper,” and points us
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`to where it states that “most of the potential alternatives to HFC 134a that are
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`actively being looked at as potential industrial refrigerants belong to the class of
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`hydrofluoroolefins (HFOs),” which have “a significant number of different
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`molecules and isomers possible—more so than with the simpler HFCs.” Id.; Ex.
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`2005, 5. Patent Owner also points to where the white paper refers to
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`“Hydrofluoroa[l]kane (HFC) propellants,” which, according to Patent Owner,
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`indicates that “HFC” refers to saturated compounds. PO Resp. 14; Ex. 2005, 3.
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`Patent Owner also cites “Factsheet 19” prepared by a “European Fluorocarbons
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`Technical Committee” (“EFCTC”), dated June 2011, which states that “HFOs
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`contain hydrogen, fluorine and carbon like the HFCs, but they are distinctly
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`different,” i.e., they “are olefins.” PO Resp. 14–15; Ex. 2009. Patent Owner,
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`relying on Dr. Bivens’ Declaration, also refers to a website of EFCTC, “accessed
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`4/15/2014,” that also lists “HFCs” and “HFOs” separately under a heading of
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`“families of fluorinated gases.” PO Resp. 14–15; Ex. 2040 ¶ 19.
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`Our reading of Petitioner’s “white paper” does not persuade us that an
`
`ordinary artisan would not have referred to a HFO as a HFC. Moreover, while we
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`acknowledge statements by EFCTC as noted by Patent Owner, made well after the
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`effective filing date of the ’874 patent, we find disclosures in the ’874 patent itself
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`to be more persuasive on this issue. As Petitioner notes, the ’874 patent expressly
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`defines HFCs as “hydrofluorocarbons” (not limited to “hydrofluoroalkane,” a
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`species of hydrofluorocarbons), and states that HFCs includes HFOs, such as HFO-
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`1243zf. Ex. 1001, 2:12, 2:61–67; Reply 4–5. In addition, as both parties
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`acknowledge, Example 3 in the ’874 patent describes certain HFOs as “HFC-
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`1234ze, HFC-1234zf, HFC-1225ye.” PO Resp. 43 (emphases added); Reply 5.
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`We are not persuaded that the descriptions in the ’874 patent of HFCs as
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`“hydrofluorocarbons,” and the use of “HFC” in nomenclature as encompassing
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`HFO compounds, correspond to “sloppy editing,” as Patent Owner contends. PO
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`Resp. 43. Petitioner points us to evidence indicating that it was common to refer to
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`HFOs as HFCs. Reply 4–5 (citing Ex. 1070/1071 (testimony by Dr. Bivens),
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`109:22–110:16, and numerous patent references).
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`We conclude that a preponderance of the evidence establishes that, in the
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`relevant time frame, an ordinary artisan would have understood “HFC” to refer to a
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`hydrofluorocarbon, i.e., a compound comprising hydrogen, fluoride, and carbon,
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`and that a HFO, such as trans-1,3,3,3-tetrafluoropropene, would have been called a
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`hydrofluorocarbon, and one would have used “HFC” in nomenclature referring to
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`HFOs.
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`B. Obviousness over Inagaki, Konzo, and Bivens
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`Petitioner contends that claims 1–15 of the ’874 patent would have been
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`obvious over Inagaki, in view of Konzo and Bivens. Pet. 3, 7–11, 30–49.
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`1. Inagaki (English translation Ex. 1003/1068) 4, 5
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`Inagaki relates to fluids for heat transfer, such as compositions used in “a
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`refrigerator, heat pump or the like,” and especially those fluids that “have fewer or
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`no destructive effects against the ozone layer.” Ex. 1003, 27–28; Ex. 1068, 2356–
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`57. Inagaki discloses a compound having the formula “C3HmFn,” where “m= an
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`integer of 1 to 5, n= an integer of 1 to 5 and the sum of m and n is equal to 6,” and
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`“containing one double bond in its molecular structure.” Ex. 1003, 28; Ex. 1068,
`
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`4 Exhibit 1003 and other exhibits refer to page numbers in the following format:
`“MXC-000027.” We refer to such pages by their last non-zero numbers, e.g.,
`“27.”
`5 We refer to Exhibits 1003 and Exhibit 1068 in this Decision, although the
`Petition cites only Exhibit 1003. As discussed below, we find Exhibit 1003 to
`provide the same teachings in relevant parts as Exhibit 1068, cited in Petitioner’s
`Reply (Reply 13, n.2) and the translation of Inagaki submitted by Patent Owner
`during prosecution of the ’874 patent (Ex. 1017, 1004, 1117–1124).
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`2357. In this context, Inagaki discloses five specific compounds, Embodiments I–
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`IV (also called Embodiments 1-4) and Embodiment 5, including Embodiment II
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`(Embodiment 2), i.e., “F3C-CH=CHF (1,3,3,3-tetrafluoro-1-propene),” with a
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`boiling point of -16.0º C. Id., see also Ex. 1003, 29–30; Ex. 1068, 2358–59
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`(describing results with Embodiments 1–5).
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`Inagaki also discloses “mixtures of C3HmFn and at least one compound
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`selected from a group consisting of R-22 (CHClF2), R-32 (CH2F2), R-124
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`(CF3CHClF), R-125 (CF3CF2H), R-134a (CF3CFH2), R-142b (CH3CClF2), 143a
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`(CF3CH3) and R-152 (CHF2CH3),” which can enhance freezing capacity and
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`performance. Id. Inagaki discloses that such mixtures “do not have any problem
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`with respect to their general characteristics (e.g., compatibility with
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`lubricants . . .).” Ex. 1003, 29; Ex. 1068, 2358.
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`2. Konzo (Ex. 1004)
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`Konzo discloses a heat pump process used in a refrigerator. Ex. 1004, 590.
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`Konzo discloses: (a) a compressor that “pumps” a gas refrigerant from a low
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`pressure to a high pressure, which increases the gas temperature; (b) a condenser
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`that cools the hot gas, which involves heat transfer, and where the hot gas is
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`condensed to a warm liquid while still at high pressure; (c) an expansion valve for
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`the warm liquid; and (d) an evaporator, or cooling coil, which is maintained at a
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`low temperature by expanding gases inside. Id. at 590–92. Konzo further
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`discloses that “[a]ny food stored in the refrigerator . . . is cooled by the transfer of
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`heat to the evaporator. The gas that passes through the evaporator is warmed by
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`the food and is returned to the compressor.” Id. at 592.
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`3. Bivens (Ex. 1005)
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`Bivens discloses refrigerant compositions. Ex. 1005, 2:28–31. In its
`
`background section, Bivens states generally that “[h]ydrofluorocarbons (HFCs) are
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`gaining acceptance as replacements for CFCs and HCFCs as HFCs contain no
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`chlorine and, therefore, have zero ozone depletion potential.” Id. at 1:33–36.
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`Bivens further states:
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`Mineral oils and alkylbenzenes have been conventionally used as
`lubricants in CFC-based refrigeration systems. However, the lack of
`solubility of these lubricants in HFC-based refrigerants has precluded
`their use and necessitated development and use of alternative
`lubricants for HFC-based refrigeration systems, which utilize
`polyalkylene glycols (PAGs) and polyol esters (POEs). A lubricant
`change from mineral oil or alkyl benzene to POE or PAG lubricants
`(which increases expenses in the refrigeration indusrty[sic]) is
`required when the HFC mixtures are used to replace CFC-based
`refrigerants.
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`Id. at 1:37–47. Thus, Bivens teaches that it previously was well known to use
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`polyalkylene glycols (“PAGs”) or polyol esters (“POEs”), but not mineral oils or
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`alkylbenzenes, as lubricants in “HFC-based refrigerants.” Id.
`
`In the same background section, Bivens further teaches that “[w]hile the
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`PAGs and POEs are suitable lubricants for HFC-based refrigeration systems, they
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`are extremely hygroscopic,” which leads to “absorbed moisture,” which can cause
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`problems such as the formation of “acids which causes corrosion” and “intractable
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`sludges.” Id. at 1:47–54. In addition, Bivens teaches that “PAG and POE
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`lubricants are considerably more expensive than the hydrocarbon lubricants,” i.e.,
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`mineral oils and alkylbenzenes. Id. at 1:56–57.
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`Bivens teaches that a need existed to resolve the “solubility problem” of
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`mineral oils and alkylbenzenes “so that the refrigeration industry may utilize
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`mineral oil and alkylbenzene lubricants with HFC-based refrigerants.” Id. at
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`1:59–62. Bivens further teaches a need for “compositions that are non-ozone
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`depleting, nonflammable, and essentially non-fractionating azeotrope-like
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`compositions.” Id. at 2:17–44. Bivens then discloses “compositions of the present
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`invention” that satisfy “the aforementioned needs confronting the refrigeration
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`industry,” i.e., azeotrope-like compositions” consisting essentially of HFC-32
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`(difluoromethane, CH2F2), HFC-125 (pentafluoroethane, CF3CHF2), HFC-134a
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`(1,1,1,2-tetrafluoroethane, CF3CHF2), and a hydrocarbon selected from a particular
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`group, e.g., n-butane. Id. at 2:27–59, 1:13–18.
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`4. Analysis—claims 1, 3, 4, 6, 7, 12–14
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`Petitioner contends that Inagaki, in view of Konzo, expressly teaches most
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`elements of the challenged claims. For example, Petitioner states “the system
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`depicted in Inagaki is readily recognized by the skilled person as a vapor
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`compression system, as demonstrated by Konzo.” Pet. 30. Petitioner also
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`contends that Inagaki expressly teaches “F3C-CH=CHF (1,3,3,3-tetrafluoro-1-
`
`propene)” as a component of a heat transfer composition, i.e., a compound that
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`“reads directly on the trans-1,3,3,3-tetrafluoro-1-propene” recited in every
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`challenged claim. Pet. 31–32 (citing Ex. 1003, 28 (Embodiment II); Ex. 1068,
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`2357). Petitioner further contends that Inagaki teaches that C3HmFn compounds,
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`such as 1,3,3,3-tetrafluoropropene (Embodiment II), may be mixed with other
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`compounds, such as R-32 (CH2F2) or R-134a (CF3CFH2), and such mixtures do not
`
`have problems with respect to general characteristics, such as compatibility with
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`lubricants. Id. at 32 (citing Ex. 1003, 28–29; Ex. 1068, 2357-58).
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`Petitioner acknowledges that “Inagaki does not expressly recite a lubricant
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`or class of lubricants to use with trans-1,3,3,3-tetrafluoropropene.” Pet. 33–34. In
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`other words, while Inagaki refers to lubricants generally, the reference does not
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`disclose a polyol ester (“POE”) lubricant in particular, as recited in the challenged
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`claims. Petitioner relies on Bivens, however, to establish that it was known that
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`POEs were commonly used lubricants for HFC-based refrigeration systems. Id. at
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`33–34 (citing Ex. 1005, 1:37–65). In this regard, Petitioner contends that HFOs
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`are a subset of HFCs, and, therefore, trans-1,3,3,3-tetrafluoropropene (a HFO) is a
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`HFC (as described in Bivens generally). Id. at 34. According to Petitioner, it was
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`“simply a matter of routine to test the particular POE for compatibility with the
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`trans-R1234ze.” Id.
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`In response, Patent Owner contends that Inagaki gives “no particular
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`direction” to select Embodiment II, and indicates that “capacity” results for
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`Embodiment II are “less attractive” than those for Embodiment I (F3C-CH=CH2).
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`PO Resp. 18 (citing Ex. 2040 ¶ 29). Patent Owner also contends that Inagaki
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`mentions using “machine oil” with a mixture of propenes (such as Embodiment II)
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`and CFCs or HFCs, but provides no teaching of any specific machine oil, such as
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`POEs. Id. at 18–20; see Ex. 1003, 28; Ex. 1068, 2357 (stating that “solubility in
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`cooling machine oil may be improved by mixing cooling media having large
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`evaporative latent heat” with “mixtures of C3HmFn,” such as F3C-CH=CHF and R-
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`32) (emphasis added). In addition, Patent Owner contends that the “only possible
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`direction Inagaki offers is that CFCs or saturated HFCs are included in mixtures of
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`the propenes and machine oil to help with solubility . . . thus implying that
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`propenes and machine oil alone [are] not miscible,” which is “supported by
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`Inagaki’s use of an oil separator in Figure 2.” Id. at 19 (citing Ex. 1003, 28–29,
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`32; Ex. 1068, 2357–58, 2361; Ex. 2040 ¶ 33; Ex. 2042 ¶¶ 6–8).
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`Patent Owner acknowledges that Inagaki teaches that mixtures of C3HmFn
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`(such as Embodiment II) and another compound (such as R-32, R-125, or R-134a)
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`“do not have any problem with respect to their general characteristics (e.g.,
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`compatibility with lubricants, non-erodibility against materials etc.).” Ex. 1003,
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`29; Ex. 1068, 2358 (emphasis added); PO Resp. 20. Patent Owner contends,
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`however, that Inagaki does not explain what it means by “compatibility,” and does
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`not discuss “miscibility.” Id. Patent Owner also contends that the use of the oil
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`separator in Figure 2 of Inagaki indicates that “that any refrigerant/lubricant
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`combinations potentially used were not miscible.” Id. at 20–21 (citing Ex. 2040
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`¶ 34; Ex. 2042 ¶¶ 6–8, 14–15). In addition, Patent Owner contends that an
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`ordinary artisan could not have predicted whether a refrigerant/lubricant
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`combination was miscible. Id. at 21–22 (citing Ex. 2042 ¶¶ 14–16, 20; Ex. 2040
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`¶¶ 30–32).
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`Regarding Bivens, Patent Owner contends that the reference is directed to
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`“azeotrope-like refrigerant compositions consisting essentially of three specific
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`saturated refrigerants (HFCs) and one saturated hydrocarbon.” PO Resp. 22.
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`According to Patent Owner, Bivens focuses on figuring out how to use mineral oil
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`and alkylbenzene lubricants with HFC-based refrigerants. Id. at 22–23. In
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`addition, Patent Owner contends that Bivens’ background section discusses the
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`benefits of using HFCs, but without exemplifying any specific HFC. Id. at 23.
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`Patent Owner then again argues, as discussed above, that one would not have
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`considered HFOs to be a subset of HFCs, and therefore would not have considered
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`Bivens to refer to HFOs where it discusses HFCs. Id. at 23–24, 40–45.
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`Patent Owner also contends that Bivens taught away from using “PAGs and
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`POEs as lubricants because they are ‘extremely hygroscopic’ which can lead to
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`absorbed moisture leading to problems such as formation of acids which cause
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`corrosion of the refrigeration system and formation of intractable sludges.” Id. at
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`25; Ex. 1005, 1:47–53. In addition, Patent Owner contends one needed “extensive
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`teaching and research” to “optimize POE-type refrigerant lubricants,” and that
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`“properties of combined lubricants and refrigerants such as stability, flammability,
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`toxicity, reactivity, and miscibility were unpredictable and needed to be tested.”
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`PO Resp. 26 (citing Ex. 1008 ¶¶ 21–22), 38–39 (citing Ex. 2020, 20:17–24, 21:11–
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`14, 21:19–22:2, 51:24–52:6).
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`Based on the above-mentioned contentions, Patent Owner argues that
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`Inagaki fails to disclose POE lubricant and teaches away from its use with trans-
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`HFO-1234ze, and that Bivens fails to disclose trans HFO-1234ze and teaches away
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`from its use with POE lubricant. PO Resp. 27. Patent Owner further contends that
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`“reactive, toxic and flammable” characteristics of the compounds taught away
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`from their combination, and therefore, one had no reasonable expectation of
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`success in combining trans-HFO-1234ze with POE lubricant. Id. at 27, 32–37.
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`In further support, Patent Owner contends that Inagaki taught using “R-12,
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`R-22 and R-502 as control examples,” and that the lubricant of choice for R-12, R-
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`22 and R-502 was mineral oil or alkyl benzene. Id. at 28 (citing Ex. 2042 ¶¶ 11,
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`14). Inagaki also teaches using R143a (among a group), and Patent Owner
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`contends that “it was well known that R143a was not compatible with POE
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`lubricants.” Id. at 29–30 (citing Ex. 2012, 386; Ex. 2020, 281:22–282:3). Patent
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`Owner also again points to where Bivens teaches that POEs “are extremely
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`hygroscopic,” and discusses how HFOs and POE lubricants were known to be
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`reactive and unpredictable, and HFOs were perceived to be toxic and flammable.
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`Id. at 30 (citing Ex. 1005, 1:61–62), 31–40.
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`In its Response, Patent Owner does not dispute that Inagaki discloses F3C-
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`CH=CHF (1,3,3,3-tetrafluoro-1-propene), i.e., 1,3,3,3-tetrafluoropropene as recited
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`in the challenged claims, in Embodiment II. As discussed in our Decision to
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`Institute, Inagaki does not describe expressly the trans isomer, as recited in the
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`claims. The record before us, however, indicates that an ordinary artisan would
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`have understood that Embodiment II constituted a mixture of two isomers, cis and
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`trans. As also noted in our Decision to Institute, evidence cited by Patent Owner,
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`as well as the ’874 patent itself, indicates that the 1,3,3,3-tetrafluoro-1-propene
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`described in Inagaki includes more trans than cis form, because the boiling point of
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`-16º C (as taught in Inagaki regarding this HFO) is closer to the boiling point of
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`-19º C of the trans form, than +9º C of the cis form. Dec. to Inst. 11; Prel. Resp. 5–
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`6 (citing Ex 1008 ¶ 27); Ex. 1001, 6:48–52; Ex. 1003, 28; Ex. 1068, 2357. Thus,
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`we find that that Inagaki inherently discloses a relevant HFO isomer mixture, i.e.,
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`Embodiment II comprising trans-1,3,3,3-tetrafluoropropene, as recited in the
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`challenged claims.
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`We also find that Inagaki suggests using Embodiment II (called “HFO-
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`1234ze” in the ’874 patent Specification, and “1,3,3,3-tetrafluoropropene” in the
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`challenged claims) with a lubricant, even if the reference also suggests mixing in
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`another non-HFO refrigerant, such as R-32 (CH2F2) or R-134a (CF3CFH2).
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`In addition, we find that Bivens expressly teaches that polyol ester lubricant,
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`as recited in the challenged claims, is among “suitable lubricants for HFC-based
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`refrigeration systems,” even if the reference also teaches that such lubricants have
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`problems because “they are extremely hygroscopic” and are expensive. Ex. 1005,
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`1:47–59. In addition, we find that when Bivens refers to “[h]ydrofluorocarbons
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`(HFCs)” and “HFC” in the context of “HFC-based refrigeration systems,” it refers
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`to hydrofluorocarbons generally. For the reasons discussed above, we conclude
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`that the evidence of record shows sufficiently that an ordinary artisan would have
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`understood at the time of filing of the ’874 patent that the term “HFC,” as used in
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`Bivens, encompassed HFOs, such as those disclosed in Inagaki.
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`We are not persuaded otherwise by Patent Owner’s contentions regarding
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`Inagaki’s use of “machine oil,” or the depiction in Figure 2 of Inagaki of an oil
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`separator, which is not otherwise discussed in Inagaki. PO Resp. 18–22; Ex. 1003,
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`28, 32, Ex. 1068, 2357, 2361. Inagaki expressly teaches that its mixtures “do not
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`have any problem with respect to their general characteristics (e.g., compatibility
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`with lubricants.” Ex. 1003, 28; Ex. 1068, 2357. Such teachings sufficiently
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`suggest that Inagaki’s mixtures combined with lubricants did not have significant
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`issues with miscibility. Moreover, Petitioner points us to evidence indicating that
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`an oil separator was a common component in refrigerant systems, including ones
`
`using refrigerant/lubricants that were miscible. Reply 8–9 (citing Ex. 1035, Ex.
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`1063); see, e.g., Ex. 1035, Fig. 1, 4:3–59 (describing an “oil-flooded twin screw,
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`compression system” and that “[i]n a closed system the refrigerant gas and the oil
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`will, to some extent, be mutually soluble or completely miscible dependent on the
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`temperature and the concentration of the oil”); Ex. 1063, Fig. 1, 2:32–34 (showing
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`“miscibility of several polyol esters with HFC-134a”), 6:8–50 (describing “use of
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`oil separation equipment”).
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`Consistently, Bivens expressly teaches that “POEs are suitable lubricants for
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`HFC-based refrigeration systems.” Ex. 1005, 1:47–48. Bivens suggested using
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`POE lubricant with “HFCs,” which encompasses HFOs, such as those disclosed in
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`Inagaki, as discussed above. We are not persuaded that Bivens’ teachings are
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`limited to the “azeotrope-like refrigerant compositions consisting essentially of
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`three specific saturated refrigerants (HFCs) and one saturated hydrocarbon,” as
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`Patent Owner contends. PO Resp. 22.
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`Nor are we persuaded by Patent Owner’s teaching away arguments in
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`relation to Inagaki or Bivens. For the reasons discussed above, we do not read
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`Inagaki or Bivens as teaching away from the use of POE lubricant with
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`Embodiment II, but rather find the references specifically suggest the combination
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`of such co