IPR2019-00202
`U.S. Patent No. RE38,844
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`BASF CORPORATION
`Petitioner
`
`v.
`
`INGEVITY SOUTH CAROLINA, LLC
`Patent Owner
`_________________________
`
`Case No. IPR2019-00202
`Patent RE38,844
`_________________________
`
`
`
`
`
`
`
`
`
`INGEVITY SOUTH CAROLINA, LLC’S PATENT OWNER’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`IPR2019-00202
`U.S. Patent No. RE38,844
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`C.
`
`Page
`Introduction ...................................................................................................... 1
`Background ...................................................................................................... 5
`A. Overview of the ’844 Patent .................................................................. 5
`B.
`The Alleged Prior Art Asserted by Petitioner ....................................... 7
`1.
`Overview of Park ........................................................................ 7
`2.
`Overview of Meiller .................................................................. 12
`3.
`Overview of Abe ....................................................................... 13
`III. The Petition Should Be Denied Because Petitioner Failed to Show
`How the Asserted Prior Art or Arguments Differ from Those Already
`Considered By the PTO ................................................................................. 14
`A. Overview of Prosecution History ........................................................ 15
`B.
`References Specifically Considered During Prosecution ................... 18
`1.
`Park (U.S. Patent No. 5,914,294) ............................................. 18
`2.
`AAPA (Applicant Admitted Prior Art) ..................................... 19
`3.
`Tennison (WO 92/01585) ......................................................... 20
`References Substantially the Same as References Specifically
`Considered During Prosecution .......................................................... 21
`1.
`References Considered During First Consideration ................. 22
`a)
`U.S. Patent No. 6,279,548 (Reddy) ................................ 23
`b)
`KR 2002012826 (Oh) ..................................................... 24
`References Considered During Request for Continued
`Examination .............................................................................. 25
`a)
`EP 1 113 163 (Uchino) ................................................... 25
`b)
`U.S. Patent No. 5,460,136 (Yamazaki) .......................... 28
`References Considered During Reissue Examination .............. 29
`
`2.
`
`3.
`
`i
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`

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`IPR2019-00202
`U.S. Patent No. RE38,844
`TABLE OF CONTENTS (continued)
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`Page
`
`
`V.
`
`IV. The Petition Should Be Denied Because the Low IAC Adsorbent
`Volume Limitation Cannot Be Found Obvious Under an Inherency
`Theory as a Matter of Law ............................................................................ 30
`The Petition Should Be Denied Because Petitioner Did Not
`Demonstrate a Reasonable Likelihood of Success for the Grounds
`Advanced ....................................................................................................... 34
`A. Ground 1: The Challenged Claims are Not Obvious over the
`Combination of Meiller, Park, and AAPA At Least Because
`Those References Do Not Disclose the Low IAC Adsorbent
`Volume Limitation .............................................................................. 34
`1.
`Park’s Honeycombs Do Not Necessarily Have an IAC
`Less Than 35 g/L ....................................................................... 36
`Petitioner’s Hypothetical Honeycomb Does Not Render
`the Low IAC Adsorbent Volume Limitation Obvious ............. 37
`a)
`Petitioner’s Hypothetical Honeycomb ........................... 38
`b)
`The Asserted Prior Art Does Not Disclose
`Petitioner’s Hypothetical Honeycomb ........................... 40
`(1) The Asserted Prior Art Does Not Disclose
`That Formulation D, or Any Other
`Composition or Structure, Is Intended for
`Use in Conjunction With a Fuel Vapor
`Canister .................................................................. 40
`(2) The Asserted Prior Art Does Not Disclose
`Using BAX 1100 or BAX 1500 in a
`Honeycomb ............................................................ 45
`(3) Park Does Not Disclose That Formulation D
`Can Be Made With Petitioner’s Voidage
`Percentage .............................................................. 47
`Petitioner’s Hypothetical Honeycomb Does Not
`Necessarily Have An IAC Less Than 35 g/L ................. 47
`
`2.
`
`c)
`
`ii
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`

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`IPR2019-00202
`U.S. Patent No. RE38,844
`TABLE OF CONTENTS (continued)
`
`Page
`
`
`(4)
`
`(1) Petitioner’s Reliance on BAX 1500 Is
`Misplaced ............................................................... 49
`(2) Volumetric Dilution Alone Does Not
`Guarantee That Petitioner’s Hypothetical
`Honeycomb Has an IAC Less Than 35 g/L .......... 51
`(3) Compositional Dilution Does Not Guarantee
`That Petitioner’s Hypothetical Honeycomb
`Has an IAC Less Than 35 g/L ............................... 52
`It Is Impossible To Deduce the IAC Of
`Petitioner’s Hypothetical Honeycomb From
`Example 2 of the ’844 Patent ................................ 53
`Ground 2: The Challenged Claims are Not Obvious over the
`Combination of Abe, Park, and AAPA Because the References
`Do Not Disclose the Low IAC Adsorbent Volume Limitation .......... 58
`Ground 3: The Challenged Claims are Not Obvious over the
`Combination of Meiller, Park, and Tennison Because the
`References Do Not Disclose the Low IAC Adsorbent Volume
`Limitation ............................................................................................ 60
`VI. Objective Indicia of Nonobviousness Also Show that the Challenged
`Claims are Not Obvious ................................................................................ 60
`VII. Conclusion ..................................................................................................... 62
`
`
`
`B.
`
`C.
`
`iii
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`

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`IPR2019-00202
`U.S. Patent No. RE38,844
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Conopco, Inc. v. Procter & Gamble Co.,
`IPR2014-00628, Paper 21 (PTAB Oct. 20, 2014) ........................................ 14, 15
`Continental Can Co. USA, Inc. v. Monsanto Co.,
`948 F.2d 1264 (Fed. Cir. 1991) .................................................................... 35, 36
`Honeywell Int’l v. Mexichem Amanco Holding,
`865 F.3d 1348 (Fed. Cir. 2017) ................................................................ 4, 31, 34
`Ingevity Corp. and Ingevity South Carolina, LLC v. BASF Corp.,
`Case No. 18-1391 (D. Del.) ................................................................................ 60
`Par Pharmaceutical, Inc. v. TWi Pharmaceuticals, Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) .......................................................................... 36
`Unified Patents Inc. v. Berman,
`IPR2016-01571, Paper 10 (PTAB Dec. 14, 2016) ............................................. 15
`WL Gore & Associates, Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) .................................................................... 35, 53
`Statutes
`35 U.S.C. § 314(a) ............................................................................................... 5, 14
`35 U.S.C. § 325(d) ............................................................................................... 2, 15
`Regulations
`37 C.F.R. § 42.22(a)(2) ............................................................................................ 50
`37 C.F.R. § 42.104(b)(4) ............................................................................................ 3
`
`
` iv
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`

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`IPR2019-00202
`U.S. Patent No. RE38,844
`
`
`
`Exhibit List
`
`Exhibit Number
`2001
`
`Description
`Declaration of Dr. James A. Ritter
`
`2002
`
`2003
`
`2004
`
`File History of U.S. Patent No. 6,540,815
`
`U.S. Patent No. 6,279,548 to Reddy
`
`U.S. Patent No. 5,460,136 to Yamazaki et al.
`
` v
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`IPR2019-00202
`U.S. Patent No. RE38,844
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`I.
`
`Introduction
`For over fifteen years, the automotive emissions industry has respected U.S.
`
`Patent No. RE38,844 (Ex. 1001, “the ’844 Patent”) and made evaporative
`
`emissions control canisters using absorbents from Ingevity (and its corporate
`
`predecessor MeadWestvaco). Ingevity and its predecessors have sold carbon
`
`adsorbents, including granular and pelletized forms and honeycombs that have
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`been used in canisters to meet EPA emissions requirements for tens-of-millions of
`
`vehicles. It is the industry leader in providing an effective solution for the capture
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`of bleed emissions, allowing vehicle manufacturers to meet regulatory
`
`requirements.
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`In 2018, BASF (“Petitioner”), being well aware of the ’844 Patent and
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`Ingevity’s place in the market, but unwilling to wait for the ’844 Patent to expire in
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`2022, launched a willful infringement campaign to sell a knock-off honeycomb
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`carbon product that looked exactly like Ingevity’s honeycomb to try to take market
`
`share from Ingevity. Petitioner did not seek to have the ’844 Patent invalidated
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`before launching its infringement campaign. Instead, it charged ahead with its
`
`efforts to sell a knock-off honeycomb, hoping that it would not be brought to task.
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`But, as noted by the Petitioner, when the Patent Owner and its corporate parent
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`Ingevity Corporation learned of the honeycomb, they sued Petitioner for patent
`
`infringement and sought a preliminary injunction against its infringement in the
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`IPR2019-00202
`U.S. Patent No. RE38,844
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`United States District Court for the District of Delaware. (Petition at 81.) Notably,
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`in opposing the preliminary injunction motion, Petitioner did not deny
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`infringement. After being caught blatantly infringing the ’844 Patent and
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`threatened with being preliminarily enjoined, only then did Petitioner, on
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`November 5, 2018, submit a Petition to institute inter partes review (“IPR”) of
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`U.S. Patent No. RE38,844 (Ex. 1001, “the ’844 Patent”), challenging Claims 1–8,
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`11, 12, 14–16, 18–21, 24, 25, 27–29, 31–33, 36, 37, 39–41, 43–45, 48, 49, and 51–
`
`53 (the “Challenged Claims”). This Petition is a belated and desperate attempt to
`
`justify Petition’s actions after-the-fact and is fatally flawed in many respects that
`
`justify denial.
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`First, the Board should exercise its discretion to deny the Petition because
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`Petitioner failed to show that the asserted prior art is not substantially the same as
`
`prior art already considered by the Patent and Trademark Office (“PTO”). 35
`
`U.S.C. § 325(d). Put another way, Petitioner is seeking review without showing
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`that it has found any new prior art that shows anything different from what the
`
`Office has already considered multiple times. That likely explains why Petitioner
`
`did not attempt to meets its burden in the Petition—because it cannot.
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`Substantially the same prior art has already been considered by the PTO at least
`
`three times. The ’844 Patent originally issued as U.S. Patent No. 6,540,815 (“the
`
`’815 Patent”), which issued from Application No. 10/100,362 (“the ’362
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`IPR2019-00202
`U.S. Patent No. RE38,844
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`Application”). During prosecution of the ’362 Application, the PTO considered
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`prior art substantially the same as that proposed by Petitioner. After a Notice of
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`Allowance, Applicant (Patent Owner’s corporate predecessor) submitted a Petition
`
`for Withdrawal from Issue and a Request for Continued Examination (“RCE”) to
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`consider additional prior art identified by the European Patent Office during
`
`prosecution of a related application. This additional prior art included references
`
`also substantially similar to the prior art submitted by Petitioner. After
`
`consideration, the PTO granted the ’815 Patent. Then, a reissue application for the
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`’815 Patent was filed, which became the ’844 Patent. During the reissue process,
`
`the PTO again—for the third time—considered substantially similar prior art.
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`Each time, the PTO found the claims patentable over the prior art and issued the
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`then-pending claims. The PTO should not expend additional resources to again
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`consider substantially the same prior art in this Petition for a fourth time when the
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`petitioner made no effort to explain why its art is non-cumulative, and failed to find
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`any truly new art.
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`Second, the Petition should also be denied because it fails to meet its burden
`
`to show where each element of the challenged claims is found in the prior art. 37
`
`C.F.R. § 42.104(b)(4). In particular, Petitioner fails to show where the prior art
`
`discloses a subsequent adsorbent volume having an incremental adsorption
`
`capacity (“IAC”) of less than 35 grams of n-butane per liter of adsorbent between
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`IPR2019-00202
`U.S. Patent No. RE38,844
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`vapor concentrations of 5 volume % and 50 volume % of n-butane (the “Low IAC
`
`Adsorbent Volume”), as found in each independent claim. Tellingly, Petitioner
`
`admits the asserted prior art does not disclose this element. (Petition at 28
`
`(“Neither Meiller nor Park explicitly discloses that the honeycomb has the IAC
`
`recited in the claims.”), 63 (“Abe does not explicitly disclose that its subsequent
`
`adsorbent has the IAC recited in the independent claims.”).) Instead, Petitioner
`
`argues that this missing element is inherent. But it fails to establish inherency for
`
`several reasons. First, the Petition fails as a matter of law because the grounds
`
`advanced in the Petition include only obviousness, and Petitioner fails to show that
`
`the alleged “inherent” feature in its proposed obviousness combination was known
`
`or expected. “[T]hat which may be inherent is not necessarily known and that
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`which is unknown cannot be obvious.” Honeywell Int’l v. Mexichem Amanco
`
`Holding, 865 F.3d 1348, 1354 (Fed. Cir. 2017). Second, the Petition fails to meet
`
`its evidentiary burden to establish that the element would be necessarily present in
`
`the prior art it cites.
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`Even if inherency could fulfill the missing element (it cannot), and even if
`
`the proposed combinations could teach the challenged claims (they do not), the
`
`Petition fails to even address strong objective indicia of non-obviousness that
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`Patent Owner presented to Petitioner during the related, co-pending district court
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`litigation. Despite having reviewed Patent Owner’s evidence and knowing that
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`IPR2019-00202
`U.S. Patent No. RE38,844
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`Patent Owner contends that objective factors demonstrate the non-obviousness of
`
`the challenged claims, Petitioner fails to address any of the evidence establishing
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`unexpected results, fifteen years of commercial success, long-felt need, industry
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`respect, praise from others, and copying by Petitioner itself. Its failure to address
`
`this evidence is yet another reason why the PTAB should decline to institute
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`review.
`
`The Petition does not establish “a reasonable likelihood that the Petitioner
`
`would prevail with respect to at least one of the Challenged Claims in the Petition.”
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`35 U.S.C. § 314(a). While Patent Owner would present additional evidence to
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`challenge the merits of the Petitioner’s allegations and assertions during an
`
`instituted proceeding, the deficiencies identified here demonstrate that Petitioner
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`has not met its burden to demonstrate a reasonable likelihood that it will prevail in
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`showing unpatentability of any of the Challenged Claims.
`
`II. Background
`A. Overview of the ’844 Patent
`Motor vehicles use evaporative emissions control systems to capture vapors
`
`from their fuel tanks to reduce the emission of polluting fuel vapors to the
`
`atmosphere. (Ex. 1001 at 1:26–57.) Canisters filled with activated carbon
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`adsorbents (“fuel vapor canisters”) are the primary component of typical
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`U.S. Patent No. RE38,844
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`evaporative emissions control systems. The ’844 Patent teaches a technology for
`
`enhancing the performance of fuel vapor canisters. (Id. at 1:14–23.)
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`As the ’844 Patent describes, fuel vapor canisters at the time of the Patent
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`used adsorbents with high working capacities. (Id. at 2:12–14.) However, these
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`canisters suffered from a condition called “diurnal breathing loss” (DBL)
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`emissions. (Id. at 2:35–55.) Although various options had been suggested to
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`reduce DBL emissions, each had drawbacks and/or limitations. (Id. at 2:56–3:40.)
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`The ’844 Patent disclosed for the first time that a better solution was to use a
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`subsequent volume of adsorbent in conjunction with the fuel vapor canister that—
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`contrary to industry wisdom—had low working capacity and a flat adsorption
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`isotherm. (Id. at 3:43–50; 4:64–5:5.) This “subsequent volume” of adsorbent is
`
`located downstream from the standard, high capacity adsorbent(s) in the fuel vapor
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`canister (which the Patent calls the “initial volume”) in order to adsorb DBL
`
`emissions. (Id. at 5:5–18.) The subsequent volume of low capacity adsorbents
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`was unexpectedly effective at reducing DBL emissions. (Id. at 5:56–6:14.)
`
`The ’844 Patent uses a metric it calls “incremental adsorption capacity”
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`(IAC) to distinguish between high capacity adsorbents that are best suited to
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`function as the initial volume and low capacity adsorbents suitable for the
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`subsequent volume. (Id. at 3:51–53.) All four of the independent Challenged
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`IPR2019-00202
`U.S. Patent No. RE38,844
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`Claims in the ’844 Patent include similar “incremental adsorption capacity”
`
`language:
`
`Claim
`1
`
`18
`
`31
`
`43
`
`
`
`Initial adsorbent volume
`incremental adsorption capacity at
`25° C. of greater than 35 g n-
`butane/L between vapor
`concentrations of 5 vol % and 50
`vol % n-butane
`incremental adsorption capacity at
`25° C. of greater than 35 g n-
`butane/L between vapor
`concentrations of 5 vol % and 50
`vol % n-butane
`incremental adsorption capacity at
`25° C. of greater than 35 g n-
`butane/L-bed between vapor
`concentrations of 5 vol % and 50
`vol % n-butane
`incremental adsorption capacity at
`25° C. of greater than 35 g n-
`butane/L-bed between vapor
`concentrations of 5 vol % and 50
`vol % n-butane
`
`Subsequent adsorbent volume
`incremental adsorption capacity of
`less than 35 g n-butane/L between
`vapor concentrations of 5 vol %
`and 50 vol % n-butane
`
`incremental adsorption capacity at
`25° C. of less than 35 g n-butane/L
`between vapor concentrations of 5
`vol % and 50 vol % n-butane
`
`incremental adsorption capacity at
`25° C. of less than 35 g n-butane
`between vapor concentrations of 5
`vol % and 50 vol % n-butane
`
`incremental adsorption capacity at
`25° C. of less than 35 g n-butane
`between vapor concentrations of 5
`vol % and 50 vol % n-butane
`
`B.
`
`The Alleged Prior Art Asserted by Petitioner
`1. Overview of Park
`Petitioner relies on U.S. Patent No. 5,914,294 (“Park”) for all Grounds
`
`presented in the Petition. Park discloses methods for manufacturing adsorptive
`
`monoliths comprising activated carbon. (Ex. 1010 at 4:9–13.) As illustrated in
`
`Park’s Figure 1, Park discloses that such adsorptive monoliths can have a
`
`honeycomb shape or structure. (Ex. 1010 at Abstract, 4:9–13.) Park does not
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`IPR2019-00202
`U.S. Patent No. RE38,844
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`disclose or mention any adsorptive properties, including adsorption capacity or
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`IAC, of its honeycombs. Park’s disclosed methodology for manufacturing
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`honeycombs involves multiple variables that will affect the honeycombs’
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`adsorptive properties, including their IAC. (Ex. 2001 at ¶¶23–31.)
`
`
`
`In general, Park discloses extruding a honeycomb monolith using a mixture
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`of activated carbon, a ceramic forming material, a flux material, and water, that is
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`then dried and fired. (Ex. 1010 at 2:22–38, 4:45–55.) As explained further below,
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`monoliths created within the parameters of these disclosures would have a very
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`wide range of adsorptive properties, including IAC.
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`One component of the extrudable mixture is activated carbon. This is the
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`material that adsorbs the adsorbate. (Ex. 2001 at ¶¶25.) The adsorptive properties
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`of activated carbons differ greatly by source. (Id.) Park discloses that the
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`IPR2019-00202
`U.S. Patent No. RE38,844
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`activated carbon “may be made from a variety of precursors including bituminous
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`coal, lignite, peat, synthetic polymers, petroleum pitch, petroleum coke, coal tar
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`pitch, and lignocellulosic materials. Suitable lignocellulosic materials include
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`wood, wood dust, wood flour, sawdust, coconut shell, fruit pits, nut shell, and fruit
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`stones.” (Ex. 1010 at 5:19–25.) This wide range of potential sources for the
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`activated carbon in the honeycomb will result in a wide range of adsorptive
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`properties, including IAC. (Ex. 2001 at ¶25.)
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`The amount of activated carbon in the mixture will also affect the
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`honeycomb’s IAC. (Ex. 2001 at ¶26.) Park provides that “activated carbon is
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`desirably present in the extrudable mixture in an amount from about 20 to about 70
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`parts, by weight, and more desirably, in an amount from about 30 to about 50 parts,
`
`by weight.” (Ex. 1010 at 4:64–67.) This range from 20 to 70 parts by weight
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`represents a 250% increase in carbon content from the low end of the range to the
`
`high end. This variation will have a large effect on the resulting honeycomb’s
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`adsorptive properties, including its IAC. (Ex. 2001 at ¶26.)
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`Park also discloses the cell density, or cells per square inch (cpsi), and the
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`cell wall thickness of its honeycombs. These factors also impact the honeycombs’
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`adsorptive properties, including IAC. (Ex. 2001 at ¶29.) Park discloses a cell
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`density ranging “from 1 to 800 cells per square inch or higher” and cell wall
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`thickness ranging from “about 150 mils to about 5 mils.” (Ex. 1010 at 7:27–30.)
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`IPR2019-00202
`U.S. Patent No. RE38,844
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`With such broad ranges, it is clear that the range of adsorptive properties, including
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`IAC, of resulting honeycombs also will be very broad. (Ex. 2001 at ¶29.)
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`Related to cell density and cell wall thickness, the honeycomb’s open frontal
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`area is another factor that will affect its adsorptive properties. (Ex. 2001 at ¶30.)
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`“The open frontal area of the monolith is the percentage of open area of the
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`monolith taken across a plane substantially perpendicular to the length of the
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`monolith.” (Ex. 1010 at 7:18–20.) Park discloses an open frontal area “greater
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`than 70 percent and up to about 85 percent, and desirably about 73.8 percent.”
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`(Ex. 1010 at 7:15–18.) Increasing the open frontal area of the monolith achieves
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`volumetric dilution of the honeycomb’s activated carbon adsorbent, thus reducing
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`the honeycomb’s IAC. (Ex. 2001 at ¶30.) Open frontal area, cell density, and cell
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`wall thickness are interrelated such that fixing a value for one will affect the values
`
`that are possible for the other two as these three features compete for available
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`space in the relevant cross section of the monolith. (Id.)
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`After extrusion, Park’s honeycomb is dried using a variety of methods
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`including vacuum drying, freeze drying, humidity control drying, dielectric drying,
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`and warm air drying with the monolith wrapped in plastic. (Ex. 1010 at 7:31–
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`8:35.) According to Park, the drying method can affect the size and shape of the
`
`monolith, and thus its volume. (Ex. 1010 at 7:51–53.) This will in turn affect the
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`IPR2019-00202
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`IAC, which is calculated in units of mass adsorbate per volume adsorbent. (See
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`Ex. 1001 at 9:33–42; Ex. 2001 at ¶27.)
`
`After drying, Park’s honeycomb is fired at a high temperature. Park
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`discloses a temperature range for firing the honeycomb monolith “from about 1600
`
`to 1900° F.”1 (Ex. 1010 at 8:37–39.) Park discloses that the firing temperature
`
`will affect the apparent density of the honeycomb. (Id. at 10:45–48, Fig. 4.) As
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`the ’844 Patent teaches, this too will affect IAC since it is calculated in units of
`
`mass adsorbate per volume adsorbent. (See Ex. 1001 at 9:33–42.) Additionally,
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`the firing temperature can affect the adsorptive properties of the activated carbon
`
`in the honeycomb directly by altering its pores. (Ex. 2001 at ¶28.)
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`In sum, Park discloses many parameters—and large variations within those
`
`parameters—for its honeycombs. These parameters affect the adsorptive
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`properties of its honeycombs, including the honeycombs’ IACs. (Ex. 2001 at
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`¶¶23–31.) This is in keeping with Park’s very purpose: that the “carbon-containing
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`ceramic monoliths of this invention can be used in a variety of applications owing
`
`to the wide range of carbon content which the monoliths can contain.” (Ex. 1010
`
`at 8:65–9:1.) But Park neither discloses IAC nor provides any disclosure regarding
`
`
` 1 Contrary to Park’s disclosures, Petitioner’s hypothetical “Meiller-Park
`honeycomb” is fired at a temperature of 2000° F.
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`IPR2019-00202
`U.S. Patent No. RE38,844
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`how to select among these variables to achieve a desired IAC for a desired
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`application. And given Park’s highly variable parameters, it is safe to say that
`
`using Park could lead to many millions of possible outcomes.
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`2. Overview of Meiller
`Petitioner relies on U.S. Patent No. 6,896,852 (“Meiller”) for Grounds 1 and
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`3 in the Petition. Meiller “relates to evaporative emissions control systems in
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`motor vehicles.” (Ex. 1016 at 1:11–12.) It discloses a “hydrocarbon emissions
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`scrubber” that is “coated with or constructed of a sorbent material.” (Id. at 2:48–
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`57.) As depicted in Figure 10, an embodiment of Meiller includes a canister
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`assembly and scrubber assembly as separate compartments for adsorbent material.
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`(See id. at 8:14–29; Figure 10.) It describes its scrubber as having a “matrix or
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`honeycomb-like structure.” (Id. at 4:40–41.)
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`Meiller does not disclose, or even mention, anything related to the
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`adsorptive properties, including the adsorption capacity or IAC, of its scrubber.
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`3. Overview of Abe
`Petitioner relies on Japanese Patent Application Publication No. 10-37812
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`(“Abe”) for Ground 2 in the Petition. As illustrated in Figure 4 reproduced below,
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`Abe discloses a “fuel evaporation preventing device” with first and second
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`adsorbent canisters connected in series and where “the volume [of the second
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`canister] is at least 2% and not more than 20% of the volume of the first canister.”
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`(Ex. 1009 at Abstract.) Abe also discloses that the second canister adsorbent can
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`have a honeycomb shape. (Ex. 1009 at ¶16.) The focus of Abe is on the second,
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`small canister: “the inventors … learned … that the provision of a separate small
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`second canister as a dedicated leak countermeasure is effective in adsorbing
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`[gasoline vapors], and arrived at the present invention based thereon.” (Ex. 1009
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`at ¶8.)
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`Abe discloses that the two canisters must be separate but connected in series.
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`(Ex. 1009 at ¶13.) Additionally, “the provision of an orifice between the two
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`canisters further prevents flow of the gasoline vapors, thus enabling a reduction in
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`the amount of evaporation; however, there is a drawback in that this increases
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`pressure loss.” (Ex. 1009 at ¶15.)
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`Solely to address this issue of pressure loss, Abe recommends using a
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`honeycomb. Abe discloses that an activated carbon honeycomb is preferred for the
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`second canister because its shape reduces pressure loss. (Ex. 1009 at ¶16
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`(“[W]hile there is no particular limitation on the shape of the activated carbon for
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`filling the second canister, a honeycomb activated carbon is preferred since
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`pressure loss tends to increase [when] a second canister is added, so this shape is
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`well suited for this configuration due to its high adsorption speed.”).) Thus, Abe’s
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`use of a honeycomb is unrelated to the adsorptive properties of the honeycomb—
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`and in fact a honeycomb shape is not even required by Abe.
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`III. The Petition Should Be Denied Because Petitioner Failed to Show How
`the Asserted Prior Art or Arguments Differ from Those Already
`Considered By the PTO
`“The Board has discretion to decline to institute an inter partes review.”
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`Conopco, Inc. v. Procter & Gamble Co., IPR2014-00628, Paper 21 at 5 (PTAB
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`Oct. 20, 2014) (citing 35 U.S.C. § 314(a)). “One factor the Board may take into
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`account when exercising that discretion is whether ‘the same or substantially the
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`same prior art or arguments previously were presented to the Office.’” Id. This
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`discretion is referenced in 35 U.S.C. §325(d), which provides: “In determining
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`whether to institute or order a proceeding under … chapter 31 [inter partes review
`
`(IPR)], the Director may take into account whether, and reject the petition or
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`request because, the same or substantially the same prior art or arguments
`
`previously were presented to the Office.”
`
`In Unified Patents Inc. v. Berman, the PTAB exercised its discretion under
`
`§ 325(d) to deny institution because the prior art references cited in the petition
`
`were substantially the same as prior art previously considered during prosecution
`
`of the challenged patent. IPR2016-01571, Paper 10 at 11–12 (PTAB Dec. 14,
`
`2016). In Unified Patents, one of the asserted references had not previously been
`
`considered, but was being used “in substantially the same manner as” prior art that
`
`was considered by the Examiner. Id. at 11. Similarly here, the PTO previously
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`considered the same and substantially the same prior art during prosecution of the
`
`’844 Patent. The Board should deny institution because conducting an inter partes
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`review “would not be an efficient use of Board resources in this matter.” See
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`Unified Patents, IPR2016-01571, Paper 10 at 12.
`
`A. Overview of Prosecution History
`The arguments advanced by Petitioner have already been considered by the
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`PTO at least three times: during the initial prosecution, during a Request for
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`Continued Examination (RCE) after a Notice of Allowance, and then again during
`
`the reissue examination. Each time, the PTO considered the same or substantially
`
`the same art as that currently asserted by Petitioner and concluded that the claims
`
`were allowable and that a patent should issue. An overview of the PTO’s three
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`separate considerations is provided below, followed by examples of specific
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`disclosures in the art considered at each step.
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`The PTO first considered substantially the same prior art during the initial
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`prosecution of the patent application. The ’362 Application, which eventually
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`became the ’815 Patent and then reissued as the challenged ’844 Patent, was filed
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`on March 18, 2002, claiming priority to a prior provisional application. After
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`searching for and evaluating prior art references, the Examiner issued a Notice of
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`Allowance explaining that “[t]he closest prior art discloses evaporative emissions
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`systems comprising different sorbents for reducing diurnal breathing but fails to
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`suggest using sorbents having the butane working capacities specified.” (Ex. 1006
`
`at 80.)
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`The second consideration came shortly thereafter. After Applicant paid the
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`Issue Fee, but before the patent issued, Applicant submitted a Petition for
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`Withdrawal from Issue and a Request for Continued Examination so the PTO
`
`could consider additional art brought to light by the European Patent Office during
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`examination of a counterpart foreign application. (Id. at 80, 85.) As explained
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`below, this additional art included multiple references that are substantially the
`
`same as the asserted art presented by Petitioner. The PTO considered this
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`additional art and again concluded the patent should issue for the same reasons as
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`the Examiner had previously noted. (Id. at 124.)
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`The PTO then undertook a third consideration of substantially the same prior
`
`art during prosecution of the reissue application, which led to the ’844 Patent. The
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`Patent Owner disclosed the previously considered prior art and the Examiner again
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`conducted a search and reviewed relevant prior art references including those
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`substantially the same as the art ident