Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
` Paper No. 46
`
` Entered: May 3, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CELANESE INTERNATIONAL CORPORATION,
`Petitioner,
`
`v.
`
`DAICEL CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00163
`Patent 8,940,932 B2
`____________
`
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`TINA E. HULSE, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 001
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
` Paper No. 46
`
` Entered: May 3, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CELANESE INTERNATIONAL CORPORATION,
`Petitioner,
`
`v.
`
`DAICEL CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00163
`Patent 8,940,932 B2
`____________
`
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`TINA E. HULSE, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 001
`
`
`
`IPR2017-00163
`Patent 8,940,932 B2
`
`
`INTRODUCTION
`Celanese International Corporation (“Petitioner”) filed a Petition for
`an inter partes review of claims 1–14 of U.S. Patent No. 8,940,932 B2 (“the
`’932 patent,” Ex. 1001). Paper 1 (“Pet.”). Daicel Corporation (“Patent
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). On May
`8, 2017, the Board instituted a review of the patentability of the challenged
`claims. Paper 9 (“Dec.”).
`Thereafter, Patent Owner filed a Response (Paper 18 (“PO Resp.”)),
`and Petitioner filed a Reply (Paper 26). The parties also briefed whether
`certain exhibits should be excluded from the record. Papers 34, 35, 37–40.
`In addition, Patent Owner filed observations on the cross-examination of
`Petitioner’s reply declarant (Paper 33), and Petitioner filed a response
`thereto (Paper 36). An oral hearing for this proceeding was held on January
`23, 2018. See Paper 45 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6 and issues this final
`written decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`the reasons provided below, we conclude Petitioner has established by a
`preponderance of the evidence that claims 1 and 3–14 of the ’932 patent are
`unpatentable. Petitioner, however, has failed to meet its burden of proof
`regarding the unpatentability of claim 2.
`Related Proceedings
`The parties represent that there are no related matters that would
`affect or be affected by this proceeding. Pet. 1; Paper 14, 1.
`
`2
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 002
`
`
`
`IPR2017-00163
`Patent 8,940,932 B2
`
`
`The ’932 Patent
`The ’932 patent “relates to a process for stably producing acetic acid
`by carbonylation of methanol in the presence of a metal catalyst (such as a
`rhodium catalyst) and methyl iodide.” Ex. 1001, 1:5–8.
`Before the ’932 patent, “[v]arious industrial production processes of
`acetic acid ha[d] been known.” Id. at 1:12–13. One of them, according to
`the ’932 patent, is “highly efficient” because of the “addition of a catalyst
`stabilizer (such as an iodide salt) and the reaction under a low water content
`condition.” Id. at 1:17–22. The ’932 patent states that the reaction mixture
`contains impurities, such as acetaldehyde, which deteriorates the quality of
`acetic acid. Id. at 1:25–34. The ’932 patent acknowledges that prior-art
`methods exist to reduce the concentration of acetaldehyde in the reaction
`system. Id. at 1:57–2:41. For example, according to the ’932 patent,
`Japanese Patent Application Laid-Open Publication No. 8-67650
`(JP-8-67650A, Patent Document 2) discloses a process for
`producing high-purity acetic acid, comprising allowing methanol
`to continuously react with carbon monoxide in the presence of a
`rhodium catalyst, an iodide salt, and methyl iodide, wherein the
`reaction is carried out by removing acetaldehyde from a process
`liquid being circulated into a reactor to maintain the acetaldehyde
`concentration in the reaction mixture at 400 ppm or lower. . . .
`In addition, this patent document discloses, relating to a process
`for producing acetic acid while removing acetaldehyde, that the
`process comprises separating the reaction mixture into a volatile
`phase containing acetic acid, methyl acetate and methyl iodide
`and a low-volatile phase containing the rhodium catalyst,
`distilling the volatile phase to obtain a product mixture
`containing acetic acid and an overhead containing methyl acetate
`and methyl iodide, and recirculating the resulting overhead into
`the reactor, wherein the overhead or a carbonyl impurity
`3
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 003
`
`
`
`IPR2017-00163
`Patent 8,940,932 B2
`
`
`(particularly acetaldehyde) condensate thereof is allowed to
`contact with water to separate an organic phase containing
`methyl acetate and methyl iodide and an aqueous phase
`containing the carbonyl impurity, and the organic phase is
`recirculated into the reactor.
`Id. at 2:6–35. This document, however, the ’932 patent states, “does not
`disclose that the flow rate of the overhead is controlled in recirculating the
`overhead into the reactor.” Id. at 2:42–44.
`The invention of the ’932 patent allegedly provides a process for
`stably producing acetic acid while (1) efficiently removing acetaldehyde,
`and/or (2) recycling methyl iodide as a catalyst with a high efficiency. Id. at
`2:57–62.
`
`Illustrative Claim
`Among the challenged claims, claim 1 is independent. It is
`reproduced below:
`1.
`A process for producing acetic acid, which comprises:
`a reaction step for continuously allowing methanol to react with
`carbon monoxide in the presence of a catalyst system
`comprising a metal catalyst, a halide salt, and methyl iodide
`in a carbonylation reactor,
`a flash evaporation step for continuously feeding a flasher with a
`reaction mixture from the reactor and separating a lower
`boiling point component (2A) containing product acetic acid
`and methyl iodide and a higher boiling point component (2B)
`containing the metal catalyst and the halide salt,
`an acetic acid collection step for continuously feeding a
`distillation column with the lower boiling point component
`(2A), and separating a lower boiling point component (3A)
`containing methyl iodide and by-product acetaldehyde and a
`stream (3B) containing acetic acid to collect acetic acid,
`4
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 004
`
`
`
`IPR2017-00163
`Patent 8,940,932 B2
`
`
`Claims
`1, 4, 8, 12, 14
`
`a condensation step for condensing and temporarily holding the
`lower boiling point component (3A) in a decanter and
`discharging the lower boiling point component (3A) from the
`decanter, and
`a separation and recycling step for separating the lower boiling
`point component (3A) discharged from the decanter into
`acetaldehyde and a liquid residue and recycling the liquid
`residue to a step from the reaction step to the acetaldehyde-
`separation step,
`wherein in the condensation step, the amount of the lower boiling
`point component (3A) to be held is adjusted or controlled
`based on a fluctuating flow rate of the lower boiling point
`component (3A) to be fed to the decanter, and the amount of
`the lower boiling point component (3A) to be fed to the
`separation and recycling step is adjusted or controlled.
`Reviewed Grounds of Unpatentability
`We instituted inter partes review of the following grounds of
`unpatentability:
`Ground
`1
`
`Basis
`§ 103
`
`References
`Zinobile,1 Hallinan,2 and Ochiai3,4
`
`
`1 Zinobile, et al., U.S. Patent Application Publication No. 2006/0247466 A1,
`issued November 2, 2006 (Ex. 1010).
`2 Hallinan, et al., U.S. Patent No. 6,552,221 B1, issued April 22, 2003
`(Ex. 1011).
`3 Shinya Ochiai, U.S. Patent No. 5,352,415, issued October 4, 1994
`(Ex. 1009).
`4 Petitioner does not explicitly include Ochiai in the asserted obviousness
`grounds. See Pet. 19, 32, 37, 44, 47. In the Decision to institute, we,
`however, declined to, as Patent Owner would have us, deny the Petition
`based on this fact. Dec. 10–11. Instead, we added Ochiai to all reviewed
`grounds. Id. at 11.
`
`5
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 005
`
`
`
`IPR2017-00163
`Patent 8,940,932 B2
`
`
`Ground
`2
`
`Claims
`2–4
`
`References
`Zinobile, Hallinan, Balchen,5 and
`Ochiai
`Zinobile, Hallinan, Aubigne,6 and
`Ochiai
`Zinobile, Hallinan, Balchen,
`Baasel,7 and Ochiai
`Zinobile, Hallinan, Balchen,
`Baasel, Kister,8 and Ochiai
`In support of their respective arguments, Petitioner relies on the
`Declarations of James B. Riggs, Ph.D. (Ex. 1002) and Ronnie Michael
`Hanes, Ph.D. (Ex. 1041), and Patent Owner relies on the Declaration of
`Vijay S. Bhise, Eng. Sc.D. (Ex. 2006).9
`ANALYSIS
`Principles of Law
`To prevail in this inter partes review of the challenged claims,
`Petitioner must prove unpatentability by a preponderance of the evidence.
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`
`Basis
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`3
`
`4
`
`5
`
`5–7
`
`4, 13
`
`3, 9–11
`
`
`5 Balchen et al., Process Control, Structures and Applications (1988)
`(Ex. 1019).
`6 Aubigne et al., U.S. Patent No. 5,416,237, issued May 16, 1995 (Ex. 1012).
`7 William D. Baasel, Preliminary Chemical Engineering Plant Design (2d
`Ed. 1990) (Ex. 1021).
`8 Henry Z. Kister, Distillation Operation (1990) (Ex. 1025).
`9 Patent Owner has moved to exclude the Declarations of Dr. Riggs and Dr.
`Hanes (Paper 34), whereas Petitioner has moved to exclude the Declaration
`of Dr. Bhise (Paper 35). As explained below, we deny the motions to
`exclude filed by both parties. Instead, we consider each challenged
`testimony and accord it proper weight.
`6
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 006
`
`
`
`IPR2017-00163
`Patent 8,940,932 B2
`
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). The strength of each
`of the Graham factors must be weighed in every case and must be weighted
`en route to the final obviousness determination. See, e.g., Stratoflex, Inc. v.
`Aeroquip Corp., 713 F.2d 1530, 1538–39 (Fed. Cir. 1983) (instructing that
`evidence of secondary considerations, when present, must always be
`considered in determining obviousness).
`“[A] patent composed of several elements is not proved obvious
`merely by demonstrating that each of its elements was, independently,
`known in the prior art.” KSR, 550 U.S. at 418. “[I]t can be important to
`identify a reason that would have prompted a person of ordinary skill in the
`relevant field to combine elements in the way the claimed new invention
`does.” Id. Moreover, a person of ordinary skill in the art must have had a
`reasonable expectation of success of doing so. PAR Pharm., Inc. v. TWi
`Pharms., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014).
`We analyze the instituted grounds of unpatentability in accordance
`with these principles.
`
`7
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 007
`
`
`
`IPR2017-00163
`Patent 8,940,932 B2
`
`
`Claim Construction
`In an inter partes review, the Board interprets a claim term in an
`unexpired patent according to its broadest reasonable construction in light of
`the specification of the patent in which it appears. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
`that standard, and absent any special definitions, we assign claim terms their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art at the time of the invention, in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Any special definitions for claim terms must be set forth with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`In the Decision to Institute, we agreed with Petitioner and construed
`the term “buffering function” to mean “ability to temporarily retain.” Dec.
`6–7. We also stated that there was no need to construe any other term
`expressly. Id. at 7. During trial, Patent Owner does not dispute these
`determinations. PO Resp. 3. Having considered the complete record
`developed at trial, we see no reason to change our interpretation of the
`claims.
`
`The Level of Ordinary Skill in the Art
`The determination of the level of ordinary skill in the art is an integral
`part of the Graham analysis. Custom Accessories, Inc. v. Jeffrey–Allan
`Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). The person of ordinary
`skill in the art is a hypothetical person who is presumed to know the relevant
`prior art. Id.
`
`8
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 008
`
`
`
`IPR2017-00163
`Patent 8,940,932 B2
`
`
`The parties propose facially different definitions of a person of
`ordinary skill in the art. Even though the parties challenge each other’s
`argument on this point, for purposes of this Decision, we do not discern
`material differences between the definitions.
`According to Petitioner,
`A person of ordinary skill in the art of acetic acid production as
`of October 6, 2010 is a person with a background in chemical
`engineering and chemical processes who has a range of
`knowledge roughly equivalent to the knowledge and/or training
`of a person holding the degree of Bachelor of Science in
`Chemistry, Chemical Engineering, or equivalent, and at least
`three years of experience with chemical processes. (Ex. 1002,
`¶¶ 16-20). A POSITA [person of ordinary skill in the art] would
`also have a working knowledge of carbonylation processes. (Id).
`Pet. 16. Patent Owner contends that
`the POSA [person of ordinary skill in the art] for acetic acid
`production in October 2010 would have either a bachelor’s
`degree or a master’s degree in chemistry or chemical engineering
`and (i) 2-4 years of industry experience in acetic acid production
`or (ii) 2-4 years of industry experience in the production of
`materials similar to acetic acid, such as acetic anhydride.
`PO Resp. 10 (citing Ex. 2006 ¶ 35).
`Petitioner asserts that by defining a POSITA as having production
`experience for acetic acid or acetic anhydride, “Patent Owner proposed two
`contradictory POSITA[]s.” Reply 8. According to Petitioner, the formation
`of acetic anhydride is an anhydrous (water-free) process, which does not
`involve either the “condensation step” or the “separation and recycling step”
`of claim 1. Id. Thus, Petitioner argues that “Patent Owner’s POSITA
`
`9
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 009
`
`
`
`IPR2017-00163
`Patent 8,940,932 B2
`
`definition is off-base and inappropriate for this proceeding.” Id. We
`disagree.
`As an initial matter, challenged claim 1 includes multiple steps other
`than the “condensation step” and the “separation and recycling step.” Thus,
`we decline to discount Patent Owner’s proposed definition of the ordinary
`skill level merely because it includes experience with an anhydrous process.
`More importantly, it is undisputed that acetic anhydride, like acetic acid, is
`produced through carbonylation processes. See, e.g., Ex. 1005, 3:26–50;
`Ex. 1027, 116–17. In our view, an ordinary artisan having production
`experience for acetic anhydride falls squarely within Petitioner’s definition:
`one with a working knowledge of carbonylation processes.
`Patent Owner argues that an ordinary artisan according to Petitioner’s
`definition “requires only ‘at least three years of experience with chemical
`processes’ generally.” PO Resp. 4. We disagree with this characterization.
`Indeed, Petitioner proposes that an ordinary artisan, in addition to having the
`general background in chemical engineering and chemical processes, “would
`also have a working knowledge of carbonylation processes.” Pet. 16 (citing
`Ex. 1002 ¶¶ 16–20). According to Dr. Riggs, “working knowledge” means
`“plant experience,” including “experience in an actual acetic acid production
`plant.” Ex. 2005, 27:6–12.
`We also decline, as Patent Owner would have us, to limit the relevant
`art narrowly to acetic acid production only. To define the proper scope of
`prior art, we determine (1) whether the art is from the same field of
`endeavor, regardless of the problem addressed, and (2) if the reference is not
`within the field of the inventor’s endeavor, whether the reference still is
`10
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 010
`
`
`
`IPR2017-00163
`Patent 8,940,932 B2
`
`reasonably pertinent to the particular problem with which the inventor is
`involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
`Here, the challenged ’932 patent is directed to producing acetic acid
`through a carbonylation process. See Ex. 1001, 1:5–8. A general
`carbonylation process, although broader than, is nevertheless reasonably
`pertinent to, a process for acetic acid production, because “it is one which,
`because of the matter with which it deals, logically would have commended
`itself to an inventor’s attention in considering his problem.” In re Clay, 966
`F.2d 656, 659 (Fed. Cir. 1992). Indeed, as Patent Owner emphasizes, an
`ordinary artisan must understand all the steps in the “continuous or
`integrated process” of acetic acid production. PO Resp. 7. Challenged
`claim 1 recites a reaction step that requires a metal catalyst as well as steps
`to separate and remove impurities. Evidence of the record shows that these
`steps are not unique to acetic acid production, but rather, are common to
`carbonylation processes.
`For example, as Patent Owner points out, Zinobile, Ochiai, and
`Aubigne all relate to the production of acetic acid. PO Resp. 9 (citing
`Exs. 1009, 1010, 1012). Yet, each of these references discusses prior art
`relating to general carbonylation process. Indeed, both Zinobile and Ochiai
`refer to U.S. Patent No. 3,769,329 (“the ’329 patent”) for teaching the
`carbonylation catalysts. Ex. 1009, 1:13–22; Ex. 1010 ¶ 4. The ’329 patent
`relates to a process for producing carboxylic acids and esters, including, but
`not limited to, acetic acid. Ex. 3001, Abstract, 3:15–30, claims. Similarly,
`Aubigne refers to “UK patent GB 1,233,121[, which] describes a process for
`the production of an organic acid or its corresponding ester by carbonylation
`11
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 011
`
`
`
`IPR2017-00163
`Patent 8,940,932 B2
`
`using a rhodium catalyst.” Ex. 1012, 1:13–15. It also discusses UK patent
`GB 1,350,726 and UK patent GB 1,343,855, each of which teaches the
`purification of carboxylic acids, and not acetic acid specifically. Id. at 1:16–
`48. In other words, the prior art shows that an ordinary artisan, in addressing
`acetic acid production, would have considered references related to general
`carbonylation processes.
`In sum, for purposes of this Decision, we do not find material
`differences between the parties’ proposed skill level. We further note that
`the prior art itself demonstrates the level of skill in the art. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific
`findings regarding ordinary skill level are not required where the prior art
`itself reflects an appropriate level).
`Obviousness over Zinobile, Hallinan, and Ochiai
`Petitioner argues that claims 1, 4, 8, 12, and 14 would have been
`obvious over the combination of Zinobile, Hallinan, and Ochiai. Pet. 19–31.
`After reviewing the entire record, we determine that Petitioner has
`established by a preponderance of the evidence that claims 1, 4, 8, 12, and
`14 are unpatentable over the combination of Zinobile, Hallinan, and Ochiai.
`We focus our analysis on claim 1.
`Zinobile
`Zinobile teaches its invention of “an improved process for the
`reduction and/or removal of permanganate reducing compounds” is
`particularly useful in the low water rhodium-catalyzed carbonylation of
`methanol to produce acetic acid. Ex. 1010 ¶¶ 2, 26. Permanganate reducing
`
`12
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 012
`
`
`
`IPR2017-00163
`Patent 8,940,932 B2
`
`compounds include acetaldehyde. Id. ¶ 8. Figure 1 illustrates various
`embodiments of the invention of Zinobile.
`
`
`Figure 1 of Zinobile shows a “typical reaction and acetic acid
`recovery system that is used for the iodide-promoted rhodium catalyzed
`carbonylation of methanol to acetic acid,” which “includes a liquid phase
`carbonylation reactor, flasher, and a methyl iodide acetic acid light ends
`column (‘light ends column’) 14.”10 Ex. 1010 ¶ 34. According to Zinobile,
`In the process, carbonylation product obtained in the reactor is
`provided to the flasher where a volatile (“vapor”) overhead
`stream comprising acetic acid and a less volatile catalyst phase
`(catalyst-containing solution) are obtained.
` The volatile
`overhead stream comprising acetic acid is provided by stream 26
`to the light ends column 14 where distillation yields a purified
`acetic acid product that is removed via sidestream 17 and an
`
`10 It is undisputed that the “splitter column” described in the Specification
`(or the “distillation column” recited in claim 1) of the ’932 patent and
`Ochiai, is the same as the “light ends column” in Zinobile and Hallinan.
`13
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 013
`
`
`
`IPR2017-00163
`Patent 8,940,932 B2
`
`
`overhead distillate stream 28 (hereafter “low-boiling overhead
`vapor stream”). Acetic acid removed via sidestream 17 can be
`subjected to further purification, such as to a drying column for
`selective separation of acetic acid from water.
`Id. Low-boiling overhead vapor stream 28 is condensed and directed to an
`overhead receiver decanter 16. Id. ¶ 38. Once in decanter 16, low-boiling
`overhead vapor stream 28 separates into a light phase and a heavy phase. Id.
`The condensed light liquid phase 30 is directed to distillation column 18 for
`further processing and to remove acetaldehyde and other impurities (id.
`¶ 46), whereas the condensed heavy liquid phase can be recirculated, either
`directly or indirectly, to the reactor (id. ¶ 45). A portion of stream 30 also
`can be directed back to the light ends column 14 as reflux stream 34. Id.
`¶ 51.
`Petitioner provides a claim chart, matching each step of claim 1 with
`the teachings of Zinobile. Pet. 19–22 (citing e.g., Ex. 1010 ¶¶ 4, 31, 32, 34,
`37, 38, 44, 46, 47, 52, Fig. 1). Patent Owner does not dispute these
`representations. After reviewing the record, we adopt this claim chart as our
`own findings, and we are persuaded that Zinobile teaches a reaction step, a
`flash evaporation step, an acetic acid collection step, a condensation step,
`and a separation and recycling step, as recited in challenged claim 1.
`In addition to the steps, claim 1 also recites “wherein in the
`condensation step, the amount of the lower boiling point component (3A) to
`be held is adjusted or controlled based on a fluctuating flow rate of the lower
`boiling point component (3A) to be fed to the decanter, and the amount of
`the lower boiling point component (3A) to be fed to the separation and
`recycling step is adjusted or controlled.”
`14
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 014
`
`
`
`IPR2017-00163
`Patent 8,940,932 B2
`
`
`Petitioner acknowledges Zinobile “does not explicitly disclose that the
`lower boiling point component (3A) has a fluctuating flow rate.” Pet. 22.
`Citing the Declaration of Dr. Riggs, however, Petitioner argues that
`fluctuating flow rates in continuous carbonylation processes were well
`known to an ordinary artisan. Id. (citing Ex. 1002 ¶¶ 64–66). According to
`Petitioner, Ochiai “definitively states that fluctuations in flow rates begin
`with the carbonylation reactor product, and carry through the separation
`process, including in the low boiling overhead stream 28 of Zinobile.” Id. at
`22 –23 (citing Ex. 1002 ¶¶ 64–66), id. at 25 (citing Ex. 1009, 2:25–37,
`Figs. 1, 7A–C).
`Petitioner also acknowledges Zinobile does not expressly disclose that
`“the amount of the lower boiling point component (3A) to be held is
`adjusted or controlled based on a fluctuating flow rate of the lower boiling
`point component (3A) to be fed to the decanter,” as recited in the wherein
`clause of claim 1. Pet. 23. According to Petitioner, however, Hallinan
`teaches this limitation. Id. at 24. Petitioner argues that Hallinan teaches
`“level controlling the decanter of the light ends (splitter) column in response
`to fluctuating flow rates.”11 Pet. 24 (citing Ex. 1011, 5:41–60), see also id.
`(“Hallinan specifically describes adjusting the level, and in turn the flow of
`the light and heavy phases of the splitter column decanter.”) (citing
`
`
`11 Level control is “control of the level of liquid in a tank.” Ex. 1019, 7.
`Petitioner does not explicitly rely on Balchen (Ex. 1019) in this obviousness
`ground of challenge. But, because, as Patent Owner states, “Balchen is a
`decades-old textbook” (PO Resp. 51), we find an ordinary artisan would
`have been aware of the basic teachings therein.
`15
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 015
`
`
`
`IPR2017-00163
`Patent 8,940,932 B2
`
`Ex. 1011, 5:43–67, 8:1–20, 8:40–42), id. at 25–26 (citing Ex. 1011, 5:42–55,
`6:41–47).
`Petitioner further matches teachings of both Zinobile and Hallinan
`with the limitation “the amount of the lower boiling point component (3A)
`to be fed to the separation and recycling step is adjusted or controlled,” as
`recited in the wherein clause of claim 1. Pet. 26–27 (citing Ex. 1010 ¶¶ 44,
`45; Ex. 1011, 5:57–61).
`In addition, Petitioner asserts that an ordinary artisan would have had
`a reason to combine the teachings of Zinobile and Hallinan. Pet. 27–28.
`According to Petitioner, an ordinary artisan “beginning with Zinobile and
`aware of the economically disadvantageous flow fluctuations explained by
`Ochiai, would look to Hallinan because Hallinan discloses process control
`during acetic acid production that reduces flow fluctuations by use of level
`control.” Id. at 27. Petitioner also argues because the level control taught in
`Hallinan is a “generally accepted method of overall plant control,” the
`combination of Zinobile and Hallinan “would operate according to known
`methods to yield predictable results” and provide a reasonable expectation of
`success. Id. at 28 (citing Ex. 1011, 5:42–44).
`Patent Owner contends Petitioner has not met its burden of showing
`the obviousness of claim 1 over the combination of Zinobile, Hallinan, and
`Ochiai. PO Resp. 14–43. According to Patent Owner, neither Hallinan nor
`Ochiai teaches the limitation recited in the wherein clause of claim 1. Id. at
`28–35. Patent Owner also asserts there is no reason to combine the
`teachings of Zinobile, Hallinan, and Ochiai (id. at 15–27, 36–41), and there
`is no reasonable expectation of success when doing so (id. at 42–43). After
`16
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 016
`
`
`
`IPR2017-00163
`Patent 8,940,932 B2
`
`reviewing the entire record, we find Petitioner’s argument more persuasive.
`We address each argument presented by Patent Owner in turn.12
`Ochiai
`Patent Owner argues “Ochiai does not teach that the flow rate of the
`lower boiling point component (3A) necessarily fluctuates in the
`carbonylation process” because “Ochiai specifically solves the problem of
`fluctuation and therefore, teaches the POSA that not all flows in an acetic
`acid production process fluctuate.” Id. at 33 (citing Ex. 1009, 2:47–65,
`3:56–61, 6:57–59; Ex. 2006 ¶¶ 89–90). We are not persuaded.
`Ochiai teaches an improved level control system “to control the liquid
`levels in a reactor-flasher combination used particularly for the
`carbonylation of methanol to acetic acid.” Ex. 1009, Abstract. According to
`Ochiai,
`low water carbonylation process
`the
`Implementation of
`necessitated changes in the means to control the liquid levels in
`the reactor and flasher that were used under high water
`carbonylation conditions. Unfortunately, such changes have led
`to a wider variability in these liquid levels as well as reactor
`product flow rate and flasher recycle flow rate per a given
`methanol feed rate to the reactor.
`Id. at 2:24–31.
`
`
`12 Patent Owner faults Petitioner for not being “able to locate and cite a
`singular reference that disclosed all of the allegedly very common claim
`elements.” PO Resp. 2. Petitioner challenges the claims based on
`obviousness, and not anticipation. Thus, there is no requirement that a
`single reference must disclose all claim limitations.
`17
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 017
`
`
`
`IPR2017-00163
`Patent 8,940,932 B2
`
`
`We agree with Patent Owner that Ochiai focuses on the reactor and
`flasher, and specifically discusses the reactor product flow rate to the flasher,
`the reactor and flasher liquid levels, and the catalyst recycle flow rates. See
`PO Resp. 34–35 (citing Ex. 2006 ¶¶ 86–88, 118, 120–122; Ex. 1009, 2:58–
`65, 3:50–55, 4:3–9). We, however, disagree with Patent Owner that “Ochiai
`Invention Eliminates Flow Fluctuations.” See id. at 33; see also id. at 35
`(arguing “Ochiai solves those needs through a process where [certain type
`of] controllers for the reactor and flasher are used”) (citing Ex. 1009, 3:56–
`4:14).
`As support, Patent Owner refers us to a single sentence, where Ochiai
`states its control system “eliminates” the oscillations caused by the integral
`control. Tr. 28:22–26 (citing Ex. 1009, 11:26). But, the rest of Ochiai,
`including the passage Patent Owner relies on, generally acknowledges its
`system “reduces”—not “eliminates”—the oscillations in process variables,
`including the liquid levels and flow rates of the intermediate streams. See,
`e.g., Ex. 1009, 3:56–4:14 (repeatedly stating “reduce the variability,”
`“oscillations in process variables are reduced,” and “reduces the
`oscillations”); see also id. Fig. 7, 13:2–3 (explaining that Fig. 7 shows “the
`catalyst recycle flow and reactor product flow were relatively constant”)
`(emphasis added). In fact, Dr. Bhise, the declarant for Patent Owner,
`admitted that, even with the controls of Ochiai, there still are fluctuations
`within the system. Ex. 1050, 346:4–15, 350:3–12. As such, we agree with
`Petitioner that “even when the reactor and flasher flows are controlled with
`level controls, fluctuations are still present.” See Reply 11.
`
`18
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 018
`
`
`
`IPR2017-00163
`Patent 8,940,932 B2
`
`
`Because, as Patent Owner emphasizes, acetic acid production is a
`continuous or integrated process (PO Resp. 7 (citing Ex. 2006 ¶¶ 35, 37–
`39)), and because, in Zinobile, the light ends column is downstream of the
`flasher (Ex. 1010 ¶ 34), we agree with Dr. Riggs and Petitioner that
`fluctuation in the output of the flasher would affect the flow of the low
`boiling overhead stream 28 exiting the light ends column and cause it to
`fluctuate. See Pet. 22–23 (arguing that an ordinary artisan would have
`known “from general chemical engineering principles (as explained for
`example, in Ochiai) that the low boiling overhead stream 28 of Zinobile
`would have a fluctuating flow rate during operation”) (citing Ex. 1002
`¶¶ 64–66); see also Ex. 1019, 7 (describing “fluctuations in flows in cascade
`systems where the output of one unit is the input to the next”).
`Hallinan
`Patent Owner argues Hallinan teaches away from controlling the
`amount in the decanter. Id. at 28–32 (citing Ex. 1011, 1:64–2: 14, 4:33–50,
`5:40–7:5, 7:9–23, 7:26–30, 7:52–8:1, 8:4–7; Ex. 2006 ¶¶ 80, 81, 82, 84,
`123–127, 130). Instead, according to Patent Owner, Hallinan teaches
`control based on concentration only. Id. at 30. We are not persuaded by this
`argument, either.
`To be sure, the invention of Hallinan teaches “a method of real time
`process control of component concentrations in a reaction system for the
`production of acetic acid from the carbonylation of methanol” by analyzing
`“the concentration of one or more components” in various samples using an
`infrared analyzer, and the “concentration measurements are used to make
`adjustments in the process.” Ex. 1011, 1:66–2:11. Hallinan, however, also
`19
`
`
`
`
`Apotex (IPR2019-00400) Ex. 1046 p. 019
`
`
`
`IPR2017-00163
`Patent 8,940,932 B2
`
`teaches the “generally accepted . . . concept of inventory control, also known
`as level control.” Id. at 5:4
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
