UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TIDE INTERNATIONAL (USA), INC.,
`Petitioner,
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`v.
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`UPL NA INC.,
`Patent Owner
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`Case IPR2020-01113
`Patent 7,473,685
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`PETITIONER’S REPLY TO UPL’S RESPONSE
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`

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`Proceeding No.: IPR2020-01113
`Attorney Docket: 49321-0001IP1
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`
`
`TABLE OF CONTENTS
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`I. 
`INTRODUCTION ............................................................................................... 1 
`II.  ARGUMENT ....................................................................................................... 2 
`A.  The Legal Framework for “Consisting Of” Claims ................................ 2 
`B.  The “Technical Background” Reveals That POSITAs Had Overcome
`the Difficulties In Preparing High Concentration Acephate Granules . 5 
`C.  A POSITA Would Have Looked to Misselbrook For Guidance On
`Preparing High Concentration Acephate Granules ............................... 8 
`D.  Ground 1: The Challenged Claims Are Rendered Obvious By
`Misselbrook and CN ’588 in view of JP ’902 ..................................... 10 
`1.  The Proposed Combination Teaches a Formulation That Does Not
`Include a Binding Agent, Consistent With Claims 1, 2-4 ............. 10 
`2.  The Proposed Combination Teaches a Formulation That Contains
`0.01-1% Stabilizer, As Required By All Challenged Claims ........ 16 
`3.  The Proposed Combination Teaches a Formulation Containing 0.1-
`3% Binding Agent As Required By Claims 7 and 8-12 ................ 19 
`4.  The Proposed Combination Teaches a Formulation Containing A
`Disintegrating Agent ...................................................................... 22 
`E.  Grounds 2 and 3: The Challenged Claims Are Rendered Obvious By
`Misselbrook and Mayer in view of CN ’588, and By Misselbrook and
`JP’902 in view of Mayer ..................................................................... 24 
`1.  The Proposed Combinations Teach a Formulation That Does Not
`Include a Binding Agent, Consistent With Claims 1, 2-4 ............. 24 
`2.  The Proposed Combinations Teach a Formulation That Contains
`0.01-1% Stabilizer, As Required By All Challenged Claims ........ 24 
`3.  The Proposed Combinations Teach a Formulation Containing 0.1-
`3% Binding Agent As Required By Claims 7 and 8-12 ................ 25 
`4.  The Proposed Combination Teaches a Formulation Containing a
`Disintegrating Agent ...................................................................... 26 
`III.  CONCLUSION .................................................................................................. 27 
`i
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`

`

`Proceeding No.: IPR2020-01113
`Attorney Docket: 49321-0001IP1
`
`
`
`EXHIBIT LIST
`
`U.S. Patent No. 7,473,685 (“the ’685 patent”)
`Prosecution History of the ’685 patent
`Declaration of William Geigle
`Curriculum Vitae of William Geigle
`U.S. Patent No. 6,387,388 (“Misselbrook”)
`Chinese Patent Publication No. 1127588A
`Certified Translation of Chinese Patent Publication No. 1127588A
`(“CN ’588”)
`Japanese Patent Publication No. 9-315902A
`Certified Translation of Japanese Patent Publication No. 9-315902A
`(“JP ’902”)
`U.S. Patent No. 6,030,924 (“Mayer”)
`“Basic Information about Pesticide Ingredients,” U.S. Environmental
`Protection Agency, at https://www.epa.gov/ingredients-used-
`pesticide-products/basic-information-about-pesticide-ingredients, last
`accessed 6/4/20
`“Reregistration Eligibility Decision for Acephate,” U.S.
`Environmental Protection Agency, Prevention, Pesticides, and Toxic
`Substances, September 2001
`Search Results for Chemical Name: Acephate that are “Active” at
`EPA’s Pesticide Product and Label System, at:
`https://iaspub.epa.gov/apex/pesticides/f?p=PPLS:1, lasted accessed
`6/3/20
`Search Results for Chemical Name: Acephate that are “Inactive” at
`EPA’s Pesticide Product and Label System, at:
`
`ii
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`1001
`1002
`1003
`1004
`1005
`1006
`1007
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`1008
`1009
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`1010
`1011
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`1012
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`1013
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`1014
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`

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`1015
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`1016
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`1017
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`1018
`1019
`1020
`1021
`1022
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`1023
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`1024
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`1025
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`1026
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`Proceeding No.: IPR2020-01113
`Attorney Docket: 49321-0001IP1
`https://iaspub.epa.gov/apex/pesticides/f?p=PPLS:1, lasted accessed
`6/3/20
`Order: re Claim Construction UPL NA Inc. v. Tide International
`(USA), Inc. et al., No. 8:19-cv-1201-RSWL-KS (C.D. Cal.), Doc. 83
`(4/10/20)
`CIPAC webpage describing “History,” at
`https://www.cipac.org/index.php/about-us/history, last accessed
`6/6/20
`Excerpts of Particle Size Characterization, Ajit Jillavenkatesa et al.,
`National Institute of Standards and Technology, Technology
`Administration, U.S. Department of Commerce, Special Publication
`960-1 (Jan. 2001), at
`https://tsapps.nist.gov/publication/get_pdf.cfm?pub_id=850451, last
`accessed 6/4/20
`U.S. Patent No. 6,875,381 (“the ’381 patent”)
`Excerpt from the Prosecution History of the ’381 patent
`U.S. Patent Publication No. 2002/0114821A1 (“Lescota”)
`U.S. Patent No. 4,892,866 (“Itzel”)
`CIPAC webpage entitled “MT 47 – Persistent Foaming,” at
`https://www.cipac.org/index.php/f18/370-mt-47-persistent-foaming,
`last accessed 6/6/20
`CIPAC webpage entitled “Errata,” at
`https://www.cipac.org/index.php?option=com_content&view=ca
`tegory&id=97&Itemid=562, last accessed 6/6/20
`Excerpts from Chemistry and Technology of Agrochemical
`Formulations, D.A. Knowles, Ed. (1998)
`“Sulfonation and Sulfation Processes,” Norman C. Foster, Chemithon
`(1997)
`CIPAC webpage entitled “Content of CIPAC Handbook F,” at
`https://www.cipac.org/index.php/methods-
`publications/handbooks/handbook-f, last accessed 6/10/20
`iii
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`1027
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`1028
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`1029
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`Proceeding No.: IPR2020-01113
`Attorney Docket: 49321-0001IP1
`Joint Status Report, UPL NA Inc. v. Tide International (USA), Inc. et
`al., No. 8;19-cv-1201-RSWL-KS (C.D. Cal.), Doc. 84 (4/20/20)
`May 2020 email correspondence from UPL NA Inc. v. Tide
`International (USA), Inc. et al., No. 8;19-cv-1201-RSWL-KS (C.D.
`Cal.)
`“China Judicial Assistance Information,” U.S. Department of State,
`Bureau of Consular Affairs, at
`https://travel.state.gov/content/travel/en/legal/Judicial-Assistance-
`Country-Information/China.html, last accessed 6/16/20
`“Hong Kong Judicial Assistance Information,” U.S. Department of
`State, Bureau of Consular Affairs, at
`https://travel.state.gov/content/travel/en/legal/Judicial-Assistance-
`Country-Information/HongKong.html, last accessed 6/16/20
`“Ministry of Foreign Affairs of the People’s Republic of China
`National Immigration Administration Announcement on Temporary
`Suspension of Entry by Foreign Nationals Holding Valid Chinese
`Visas or Residence Permits,” Mar. 26, 2020, at
`https://www.fmprc.gov.cn/mfa_eng/wjbxw/t1761867.shtml via
`Wayback Machine, last accessed 6/16/20
`“Proclamation on Suspension of Entry as Immigrants and
`Nonimmigrants of Persons who Pose a Risk of Transmitting 2019
`Novel Coronavirus,” White House, at
`https://www.whitehouse.gov/presidential-actions/proclamation-
`suspension-entry-immigrants-nonimmigrants-persons-pose-risk-
`transmitting-2019-novel-coronavirus/, last accessed 6/16/20
`“Chapter 599C, Compulsory Quarantine of Certain Persons Arriving
`at Hong Kong Regulation,” Hong Kong e-Legislation, Feb. 8, 2020, at
`https://www.elegislation.gov.hk/hk/cap599C, last accessed 6/16/20
`Order: re Defendant’s Motion to Stay Litigation Pending Inter Partes
`Review, Spin Master Ltd. v. Mattel, Inc., CV 18-3435-RSWL-GJS
`(C.D. Cal.) (11/21/18)
`Tide Stipulation to UPL Regarding IPR Proceedings
`
`iv
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`

`

`Proceeding No.: IPR2020-01113
`Attorney Docket: 49321-0001IP1
`Joint Status Report filed in UPL NA Inc. v. Tide International (USA),
`Inc., et al.
`Exhibit 1037 2020-08-17 Email correspondence with Court
`Declaration of Bailey K. Benedict in Support of Motion for Pro Hac
`Vice Admission
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`June 17, 2021 Deposition Transcript of Dr. David Rockstraw
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`1036
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`1037
`1038
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`1039
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`v
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`

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`Proceeding No.: IPR2020-01113
`Attorney Docket: 49321-0001IP1
`
`I.
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`INTRODUCTION
`Tide International USA, Inc. (“Petitioner”) submits this Reply to UPL’s
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`Response (“POR”) to the Petition for Inter Partes Review (“Petition”) of U.S.
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`Patent No. 7,473,685 filed by UPL NA, Inc (“UPL”).
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`UPL’s arguments fail when the correct legal framework is applied to the
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`prior art. They are inconsistent with, and largely ignore, the applicable legal
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`standards for considering “consisting of” claims, as well as the doctrine of teaching
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`away. Furthermore UPL mischaracterizes the teachings of the cited art by focusing
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`only on the preferred embodiments and overlooking the larger disclosure, and
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`ignores the abilities of a person of ordinary skill in the art.
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`UPL attempts to artificially raise the bar for finding obviousness by arguing,
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`contrary to law, that the prior art references must provide an explicit motivation to
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`omit every ingredient but those claimed in the ’685 patent. However, this is not the
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`correct standard to apply to an evaluation of “consisting of” claims. Where a prior
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`art reference presents an element as “optional,” that reference renders obvious later
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`combinations that both include and exclude the optional element. Upsher-Smith
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`Labs., Inc. v. Pamlab, L.L.C., 412 F.3d 1319, 1322 (Fed. Cir. 2005). Even where a
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`prior art reference does not present an element as optional, that reference may
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`render obvious a “consisting of” claim where a POSITA would have understood
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`1
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`

`

`Proceeding No.: IPR2020-01113
`Attorney Docket: 49321-0001IP1
`that the function of that particular element was not required. Ex parte Wu, 10
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`USPQ2d 2031 (Bd. Pat. App. & Intern. 1989).
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`In addition to misrepresenting the law, UPL misrepresents the prior art
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`references by focusing only on their preferred embodiments, rather than examining
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`the full disclosure. In doing so, UPL impermissibly narrows the teachings of the
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`cited references. For example, UPL criticizes Misselbrook, the primary reference,
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`for “teaching away” from a composition that does not contain a binding agent. This
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`argument is flawed for two reasons: first, Misselbrook does teach compositions
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`that do not contain binding agents. It discloses compositions containing any water
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`soluble fillers. The specific examples of fillers in Misselbrook are substances that
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`may also function as binding agents. But Misselbrook does not limit its disclosure
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`only to binding agents—instead, it discloses the well-known genus of fillers,
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`generally. It is UPL, not Misselbrook, attempting the limitation. Second, nothing in
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`Misselbrook rises to the level of teaching away, as it does not disparage, criticize,
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`or advocate abandonment of formulations without binding agents.1
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`II. ARGUMENT
`A. The Legal Framework for “Consisting Of” Claims
`In its Institution Decision, the Board “encourage[d] the parties to address
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`this issue concerning the ‘consisting of’ limitation, including whether and how a
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`1 Meiresonne v. Google, Inc, 849 F.3d 1379, 1382 (Fed. Cir. 2017).
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`2
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`

`

`Proceeding No.: IPR2020-01113
`Attorney Docket: 49321-0001IP1
`POSITA would have understood the cited references to reasonably suggest
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`granules consisting of only the specific set of claimed ingredients.”2 A closed
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`“consisting of” claim can be invalidated by prior art that discloses the claimed
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`elements along with other elements where the function of the additional element is
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`not required.3
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`In ex parte Wu, the claims at issue covered a method for inhibiting corrosion
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`on metal surfaces using a composition consisting of epoxy resin, petroleum
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`sulfonate, and hydrocarbon diluent. The claims were rejected over a primary
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`reference that disclosed an anticorrosion composition of epoxy resin, hydrocarbon
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`diluent, and polybasic acid salts wherein said salts were taught to be beneficial
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`when employed in a freshwater environment in view of secondary references that
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`clearly suggested the addition of petroleum sulfonate to corrosion inhibiting
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`2 Tide International (USA), Inc. v. UPL NA Inc., IPR2020-01113, Institution
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`Decision, Paper 12, p. 39, January 22, 2021 (“Institution Decision”).
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`3 Upsher-Smith Labs., Inc. v. Pamlab, L.L.C., 412 F.3d 1319, 1322 (Fed. Cir.
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`2005) (holding reference that “optionally includes” an element teaches products
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`that include and exclude that element); Ex parte Wu, 10 USPQ2d 2031 (Bd. Pat.
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`App. & Intern. 1989); MPEP 21.44.II.A (“Omission of an Element and Its
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`Function Is Obvious If The Function of the Element Is Not Desired”).
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`3
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`

`

`Proceeding No.: IPR2020-01113
`Attorney Docket: 49321-0001IP1
`compositions.4 The Board affirmed the rejection, holding that it would have been
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`obvious to omit the polybasic acid salts of the primary reference where the
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`function attributed to such salt is not desired or required, such as in compositions
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`for providing corrosion resistance in environments that do not encounter fresh
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`water. Id.5
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`The analysis is in line with determining whether a species is patentable over
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`a genus disclosed in the prior art (although the Board correctly identified the broad
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`alleged invention in the ’685 patent as a “sub-genus” rather than a species6). “A
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`species contained in a previously patented genus may be patentable if the species
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`manifests unexpected properties or produces unexpected results.”7
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`4 Id.
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`5 See also In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965) (Omission of
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`additional framework and axle which served to increase the cargo carrying
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`capacity of prior art mobile fluid carrying unit would have been obvious if this
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`feature was not desired).
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`6 Institution Decision, p. 38
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`7 Abbvie Inc. v. Mathilda and Terence Kennedy Institute of Rheumatology Trust,
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`764 F.3d 1366, 1380 (Fed. Cir. 2014) (citing Pfizer, Inc. v. Apotex, Inc., 480 F.3d
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`1348, 1363 (Fed. Cir. 2007) (“patent was invalid because Pfizer ‘failed to prove
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`that the results [associated with the species patent at issue] [we]re unexpected.’”).
`
`4
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`

`

`B.
`
`Proceeding No.: IPR2020-01113
`Attorney Docket: 49321-0001IP1
`The “Technical Background” Reveals That POSITAs Had
`Overcome the Difficulties In Preparing High Concentration
`Acephate Granules
`UPL begins with a lengthy explanation of the difficulties in preparing
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`granules containing 85-98% acephate. But the crucial takeaway from the technical
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`background is actually that the difficulties were known, well documented, and
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`successfully overcome before December 2001.8 As Tide’s expert, William Geigle
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`explains, POSITAs could address these challenges to formulate high concentration
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`acephate products, and were motivated to do so.9 UPL declined to depose Mr.
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`Geigle, and thus his testimony is unchallenged and unrebutted.
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`UPL admits that high concentration acephate granules existed in the art prior
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`to the ’685 patent.10 UPL admits that the EPA registrations in Exhibits 1013 and
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`1014 contain at least “one identifiable granular formulation containing 85-98%
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`acephate,”11 and that JP ’902 discloses granules containing 85-98% acephate.12 But
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`UPL draws an artificial bright line between pellets and granules to limit the
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`number of examples, and lumps all the other high concentration acephate
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`8 Ex 1003, ¶ 125.
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`9 Ex. 1003, ¶¶ 22-24, 27-29, 124-125.
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`10 POR at 10-11.
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`11 POR at 11; Ex. 2007 at 102.
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`12 POR at 8-9.
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`5
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`

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`Proceeding No.: IPR2020-01113
`Attorney Docket: 49321-0001IP1
`agglomerate references into the “pellet” bucket.13 The language in Cummings that
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`UPL cites to as support for this distinction in reality does no such thing.14
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`Cummings was not distinguishing between pellets and granules, generally, but was
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`distinguishing between “the pellets of the present invention” and “the granules
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`disclosed in these ICI patents.”15 In fact, contrary to UPL’s arguments,16 pellets
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`and granules are similar:
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` While pellets can be larger than granules, a POSITA would
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`understand that there is a large gray area where the sizes overlap.17
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` They are designed to overcome the same drawbacks of dusts and
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`liquid spray formulations. In fact, in describing the drawbacks,
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`13 POR at 6; see also POR at note 3.
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`14 Ex. 2005, 5.
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`15 Id.
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`16 POR at 11, note 3.
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`17 See, e.g., Ex. 2006, 6:27-32 (disclosing cylindrical granules as small as 3 mm in
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`length and 1.5 mm in diameter, and spherical granules as small as 1.5 mm in
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`diameter, which overlap with the claimed sizes in the ’685 patent);
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`6
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`Proceeding No.: IPR2020-01113
`Attorney Docket: 49321-0001IP1
`portions of the ’685 patent specification appear to be copied directly
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`from Cummings.18
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` They are made using the same manufacturing processes.19
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`After removing the artificial distinction between “pellets” and “granules,” it
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`becomes clear that at least two other high concentration acephate agglomerates
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`were registered prior to December, 2001.20 There were also multiple examples of
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`18 For example, compare Ex. 1001, 1:51-54 with Ex. 2005, p. 3 (“Certain
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`phosphoroamidothioates and phosphoroamidodithioates, collectively referred to as
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`phosphoroamidothioates, are known to have excellent insecticidal activity against a
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`variety of insects and in a variety of environments.”); Ex. 1001, 1:39-44 and Ex.
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`2005, p. 4 (“Dusts are undesirable because of airborne contamination and handling
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`difficulties… liquid spray formulations… involve solvents and packaging
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`expenses, [and] container disposal requirements that detract from their commercial
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`desirability.”).
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`19 See, e.g., Ex. 1001, 1:45-46, Fig. 1 (describing making granules with fluidized
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`bed spray dryers, or with “granulation” followed by “sizing” ); Ex. 2005, 19, 33
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`(describing making pellets with a “vibratory fluid bed” dryer, or a BR-200
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`Granulator, and then using screens for sizing)
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`20 Orthene 97 Pellets, Reg. No. 5381-897820; and Orthene PCO Formula II/Pellets,
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`Reg. No. 5481-897320.
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`7
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`

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`Proceeding No.: IPR2020-01113
`Attorney Docket: 49321-0001IP1
`high concentration acephate soluble powders registered.21 These powders are
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`relevant because a person of ordinary skill in the art attempting to formulate a high
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`concentration acephate granule would use a high concentration acephate powder
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`formula as a starting point from which to optimize.22.
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`The ’685 patent itself, along with Chan and Cummings, lists many of the key
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`reasons why a POSITA would be motivated to formulate a high concentration
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`acephate granule.23 UPL does not, and has never, alleged that its invention claims
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`an unexpected result. Instead, the invention claims the expected result of
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`approaching an active ingredient with known difficulties, and applying ordinary
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`skill in the art to optimize a formulation that overcomes those difficulties, as others
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`had done before.
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`C. A POSITA Would Have Looked to Misselbrook For Guidance On
`Preparing High Concentration Acephate Granules
`Misselbrook explicitly discloses acephate as a potential active ingredient for
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`its high concentration granules.24 A species (here, acephate) is not patentable over
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`a prior-patented genus where the genus explicitly disclosed the species in a list of
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`21 Ex. 2007, pp. 102, 108, 117, 118, 133, 145.
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`22 Ex. 1003, ¶¶ 27-28.
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`23 Ex. 1001, 1:37-50, 1:51-60, 2:13-20; Ex. 2005, 4; Ex. 2006, 1:54-2:2.
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`24 Ex. 1005, 3:34-39, 3:58-60, 5:28-56.
`
`8
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`

`

`Proceeding No.: IPR2020-01113
`Attorney Docket: 49321-0001IP1
`possibilities, and a “person of ordinary skill in the art would have favorably
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`considered [the species] because of its known benefits.”25 Acephate was a well-
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`known active ingredient by 2001 that is water soluble, versatile, and effective.26 It
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`is a “particularly important commercial insecticide within these classes of
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`compounds…which can be systemically taken up by a plant so that insects which
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`feed and/or live on the plant are killed, in addition to those insects which directly
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`ingest or are contacted by the insecticide.”27 Cummings explains that “in recent
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`years, attention has turned to a pellet form of application for acephate,” because of
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`the “practical advantages of eliminating dust problems and reducing offensive
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`odors.”28
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`UPL’s argument that Misselbrook’s process would have been “unsuitable for
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`acephate” is unpersuasive, as is its argument that Misselbrook failed to suggest
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`ways to overcome the known difficulties of high concentration acephate granules.29
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`A POSITA would have looked to Misselbrook to teach exactly what Misselbrook
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`25 Pfizer, 480 F.3d at1363.
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`26 Ex. 1003, ¶ 22, ¶ 74; Ex. 1012 at 24.
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`27 Ex. 2006, 1:19-24; Ex. 2005, p. 3 (same); Ex. 1001, 1:51-60 (acknowledging that
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`acephate is “one of the most important commercial insecticides”).
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`28 Ex. 2005, p. 2.
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`29 POR at 24.
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`9
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`Proceeding No.: IPR2020-01113
`Attorney Docket: 49321-0001IP1
`says it teaches: high concentration pesticide granules, including acephate.30 A
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`POSITA would use his own knowledge regarding formulation of pesticides to
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`overcome any difficulties, in combination with the teachings of CN ’588, JP ’902,
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`and Mayer.31
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`D. Ground 1: The Challenged Claims Are Rendered Obvious By
`Misselbrook and CN ’588 in view of JP ’902
`1. The Proposed Combination Teaches a Formulation That
`Does Not Include a Binding Agent, Consistent With Claims
`1, 2-4
`i. Misselbrook discloses a formulation with no binding
`agent
`Misselbrook teaches using an active ingredient, filler, wetting surfactant,
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`dispersing surfactant, and defoaming agent, and optionally including other
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`ingredients such as a stabilizer.32 Contrary to UPL’s arguments, Misselbrook’s
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`formulations do not require a binding agent.33 Rather, Misselbrook’s formulations
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`teach using a “water soluble filler” which “includes any water soluble or water
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`dispersible agent which may be employed to dilute the pesticide.”34
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`30 Ex. 1003, ¶¶ 59-60, 71-74.
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`31 Ex. 1003, ¶¶ 80-82, 123-126, 164-166.
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`32 Id. at 3:34-39, 3:45-51, 3:58-4:18, 6:53-57.
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`33 POR at 15.
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`34 Ex. 1005, 6:1-313.
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`10
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`

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`Proceeding No.: IPR2020-01113
`Attorney Docket: 49321-0001IP1
`The specific examples of water soluble fillers listed in Misselbrook are also
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`commonly used as binding agents, but Misselbrook’s teachings are not limited to
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`the examples of specific fillers.35 A filler is a common, well-understood concept to
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`a POSITA, and specific examples of non-binding-agent-fillers are not needed in
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`order to disclose the concept of a filler. A POSITA would know fillers normalize
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`the concentration of the active ingredient in a formulation, would reasonably
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`expect success in doing so, and would not view this as unexpected or producing
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`unexpected results.36
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`Both CN ’58837 and JP ’902 disclose using fillers which are not also binding
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`agents. CN ’588 teaches “solid carriers,” which includes “inorganic salts.”38 JP
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`35 In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012); see also MPEP 2123 (“A
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`reference may be relied upon for all that it would have reasonably suggested to one
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`having ordinary skill in the art, including nonpreferred embodiments.”).
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`36 Ex. 1003, ¶ 95.
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`37 UPL attempts to distinguish CN ’588 repeatedly by stating that it only discloses
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`“powders,” and not “granules.” This is not true. CN ’588 explicitly claims acephate
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`“granule[s], water soluble granule[s], and water dispersible granule[s]” (See Ex.
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`1007, Claims 11, 12, 13). Once again, UPL is improperly limiting the prior art to
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`its preferred embodiment.
`
`38 Ex. 1007, p. 2.
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`’902 teaches using “anhydrous silica” as a filler.39 There is no evidence that these
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`fillers would also serve as binding agents. A POSITA would be motivated to look
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`to these examples, among others known in the art, as examples of the broad
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`category of fillers disclosed by Misselbrook.
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`That said, even if the disclosure in Misselbrook was limited to the specific
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`listed examples of fillers, it would render claim 1 of the ’685 patent obvious. Even
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`where an ingredient is used for a different purpose in the prior art than in the patent
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`at issue, the disclosure of that ingredient in the prior art can still render the patent
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`obvious.40
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`ii. Misselbrook does not “teach away” from a
`formulation with no binding agent
`Under no circumstances does Misselbrook “teach away” from a composition
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`without a binder, as UPL suggests.41 “A reference that ‘merely expresses a general
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`preference for an alternative invention but does not criticize, discredit, or otherwise
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`39 Ex. 1009, [0005], [0011]; Ex. 1024, p. 8 & Table 3.2; Ex. 1003, ¶ 95.
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`40 In re Lintner, 173 USPQ at 562 (“The fact that appellant uses sugar for a
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`different purpose does not alter the conclusion that its use in a prior art
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`composition would be prima facie obvious from the purpose disclosed in the
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`references.”).
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`41 POR at 15.
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`Proceeding No.: IPR2020-01113
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`discourage investigation into the claimed invention does not teach away.”42 In
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`order to teach away, a prior art reference must go so far as to advocate
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`abandonment of the feature. Misselbrook does not criticize compositions without a
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`binding agent, nor does it advocate against using fillers that are not also binders. In
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`fact, the only evidence from Misselbrook UPL relies on in support of its argument
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`of teaching away is that Misselbrook’s “[p]referred,” “[m]ore preferred,” “[e]ven
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`more preferred,” and “[e]specially preferred” formulations each contain binding
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`agents.43 However, the mere existence of preferred embodiments does not teach
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`away from the non-preferred embodiments.44
`
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`42 Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (prior art
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`references did not teach away from use of descriptive text in combination with a
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`rollover window, even where the references criticized the use of descriptive text,
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`because they “never implied that text and graphics are mutually exclusive or
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`advocates abandoning text descriptions wholesale”).
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`43 POR at 17.
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`44 In re Mouttet, 686 F.3d at 1333.
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`Proceeding No.: IPR2020-01113
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`iii. The cited references need not provide rationale for
`removing a binding agent
`Furthermore, it would be obvious to a POSITA to omit the binding agents
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`disclosed in Misselbrook if the function of a binding agent was not required.45
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`There is no requirement that the cited references provide a specific motivation to
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`omit the binding agent.46 This is consistent with testimony from UPL’s expert, Dr.
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`Rockstraw:
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`Q: If a granule has acceptable dry properties without including
`a binder, would you agree that means no binder is needed?
`A: I agree.47
`This logic is not just limited to a binding agent; under ex parte Wu, it is
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`obvious to omit any ingredient from the prior art if the function of that ingredient
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`was not desired or required in the “consisting of” claim.48 Dr. Rockstraw agreed
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`that “it would not make sense” to put an ingredient into a formulation where the
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`45 Ex parte Wu, 10 USPQ2d 2031 (Bd. Pat. App. & Intern. 1989).
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`46 See id.
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`47 Ex. 1039, p. 57.
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`48 10 USPQ2d 2031; see also MPEP 21.44.II.A.
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`Proceeding No.: IPR2020-01113
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`function of that ingredient is not needed.49 A POSITA would also be motivated to
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`omit unnecessary ingredients because doing so would decrease costs.50
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`Therefore, contrary to UPL’s repeated (unsupported) arguments that the
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`cited references must specifically teach excluding agents (even optional ones)
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`beyond those specifically enumerated in the claims of the ’685 patent, no such
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`negative teaching is required.51 A prior art reference which “optionally includes”
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`an element teaches products that both include and exclude that element.52
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`49 Ex. 1039, p. 55:3-57:5.
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`50 Ex. 1003 ¶ 25 (discussing reducing cost by reducing the presence of other
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`ingredients); Ex. 1039, p. 39 (“Q: Would you agree that one motivation of a person
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`of ordinary skill in the art would be to reduce the costs of formulation for a
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`pesticide granule? A: For a good engineer, cost is always in the forefront of their
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`mind. So yes, I would agree with that statement.”).
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`51 See, e.g., POR at 8, 27, 37, 46, 53, 59, 66.
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`52 Upsher-Smith Labs., Inc. v. Pamlab, L.L.C., 412 F.3d 1319, 1322 (Fed. Cir.
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`2005).
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`Proceeding No.: IPR2020-01113
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`2. The Proposed Combination Teaches a Formulation That
`Contains 0.01-1% Stabilizer, As Required By All
`Challenged Claims
`Misselbrook discloses formulations that contain stabilizers.53 CN ’588
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`teaches using a stabilizer at “generally 0.01 to 10 parts by weight,” and “preferably
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`0.05 to 1 part by weight.”54 This disclosure squarely overlaps with the claimed
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`range of stabilizers in the ’685 patent of 0.01-1%. JP ’902 teaches using stabilizers
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`at “about 10% by weight or less,” and specifically discloses using “0.3 part
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`phosphoric acid” to prepare acephate granules.55 This disclosure entirely overlaps
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`the claimed range, including one embodiment falling squarely within the claimed
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`range.
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`From this simple recitation of the disclosures in the prior art, it is clear that
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`UPL’s arguments that the cited combination does not teach a stabilizer must fail. A
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`POSITA would undertake routine tests and experimentation to optimize the
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`workable range of the “stabilizer,” such as accelerated aging tests. UPL argues that
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`that the tests a POSITA would perform are not routine, and that (despite the
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`verbatim disclosures of overlapping ranges of stabilizer) the cited prior art does not
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`teach a stabilizer in the claimed range because there is no confirmation that the
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`53 Ex. 1005, 6:53-57.
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`54 Ex. 1007, p. 5.
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`55 Ex. 1009, [0020].
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`Proceeding No.: IPR2020-01113
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`resulting formulations were actually successful at stabilizing acephate.56 UPL is
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`manufacturing obstacles in an attempt to escape the clear disclosures of the cited
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`art.
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`i. A POSITA Would Perform Routine Tests To
`Optimize the Stabilizer
`UPL’s arguments that the optimization of the stabilizer would require
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`anything other than routine tests such as accelerated aging should be ignored. UPL
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`attempts to play up the difficulty of optimizing the amount of stabilizer by pointing
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`out that pesticide formulation is an “unpredictable art.”57 However, “case law is
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`clear that obviousness cannot be avoided simply by a showing of some degree of
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`unpredictability in the art so long as there was a reasonable probability of
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`success.”58 Here, there was a reasonable probability of success in view of the
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`amounts of stabilizer disclosed in JP ’902 and CN ’588. 59 UPL does not allege that
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`the claimed 0.01-1% w/w stabilizer produces unexpected results. Dr. Rockstraw
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`himself testified that he would expect for a given formulation that “there would be
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`some optimum amount [of stabilizer] at which adding more does not improve the
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`56 POR at 20-22.
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`57 POR at 3; Ex. 2007, ¶¶ 28-29.
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`58 Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007).
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`59 Ex. 1003, ¶ 94.
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`Proceeding No.: IPR2020-01113
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`stability characteristics of your final product.”60 He characterized this as “throwing
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`money away by putting more of that excipient into your system.”61
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`A POSITA would understand this, and would seek to lower costs by using
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`the lowest possible effective amount of stabilizer.62 A POSITA would seek to
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`optimize the amount of stabilizer by performing accelerated aging tests, which are
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`routine and known in the art. UPL’s expert admitted that the ’685 Patent itself
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`describes an accelerated aging test, and that a person of ordinary skill in the art in
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`2001 would have known what an accelerated aging test was.63 He testified that
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`accelerated aging tests could be used to measure chemical a