UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`ARKEMA INC. & ARKEMA FRANCE
`Petitioners
`
`v.
`
`HONEYWELL INTERNATIONAL, INC.
`Patent Owner
`______________________
`
`IPR2016-00643
`PGR2016-00011
`PGR2016-00012
`Patent No. 9,157,017
`______________________
`
`
`DECLARATION OF J. STEVEN BROWN, PH.D. IN SUPPORT OF
`ARKEMA’S PETITIONS FOR INTER PARTES AND POST-GRANT
`REVIEW OF U.S. PATENT NO. 9,157,017
`
`1
`
`
`
`
`
`Arkema Exhibit 1002
`
`1 of 252
`
`

`
`
`
`Contents
`
`GLOSSARY ............................................................................................................... 7
`
`I.
`
`INTRODUCTION ........................................................................................... 8
`
`II. QUALIFICATIONS ........................................................................................ 8
`
`A.
`
`B.
`
`C.
`
`Education ............................................................................................... 8
`
`Professional Experience ........................................................................ 8
`
`Professional Organizations and Societies ...........................................11
`
`D. Honors and Awards .............................................................................12
`
`E.
`
`Publications .........................................................................................12
`
`III. MATERIALS CONSIDERED ......................................................................12
`
`IV. TECHNOLOGY BACKGROUND AND PRE-2002 ACTIVITIES ............12
`
`A. Vapor Compression Refrigeration Systems ........................................13
`
`B.
`
`Refrigerants .........................................................................................16
`
`1.
`
`2.
`
`3.
`
`Refrigerant Nomenclature .........................................................16
`
`Refrigerant Environmental Parameters .....................................18
`
`Refrigerant Performance Parameters ........................................20
`
`C.
`
`Evolution and Regulation of AAC Refrigerants .................................24
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Adoption of R-12 as the Industry Standard AAC
`Refrigerant. ...............................................................................24
`
`The Montreal Protocol ..............................................................26
`
`Transition from R-12 to R-134a for AAC ................................28
`
`The Kyoto Protocol and Low-GWP Refrigerants ....................32
`
`R-1234yf was a Known Refrigerant .........................................37
`
`
`
`2
`
`2 of 252
`
`

`
`D. AAC Refrigeration Lubricants ............................................................39
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Polyalkylene Glycol Lubricants ................................................40
`
`Refrigerant-Lubricant Compatibility Testing ...........................45
`
`PAGs Were the Industry Standard AAC Lubricants in
`2002 ...........................................................................................48
`
`It Was Well-Known Before 2002 That HFCs Require
`Synthetic Lubricants, Such as PAGs or POEs, to Ensure
`Adequate Refrigerant-Lubricant Miscibility ............................49
`
`R-1234yf is an HFC ..................................................................51
`
`R-1234yf is a Polar HFC like R-134a .......................................53
`
`V.
`
`INDUSTRY TRENDS AND THE PUBLIC DEVELOPMENT OF
`HFO-1234yf AFTER 2002 ............................................................................55
`
`VI. DEFINITION OF A PERSON OF ORDINARY SKILL IN THE ART ......62
`
`VII. CLAIM CONSTRUCTION ..........................................................................63
`
`A.
`
`B.
`
`C.
`
`“an automobile vapor compression air conditioning system
`usable with refrigerant 1,1,1,2-tetrafluoroethane (HFC-134a)” .........63
`
`“low toxicity refrigerant suitable for use in automobile air
`conditioning” and “no substantial acute toxicity as measured by
`inhalation exposure to mice and rats” .................................................64
`
`“a capacity relative to HFC-134a of about 1 and a Coefficient
`of Performance (COP) relative to HFC-134a of about 1” ..................65
`
`D.
`
`“stable” ................................................................................................65
`
`VIII. U.S. PATENT NO. 9,157,017 .......................................................................65
`
`A.
`
`The Non-Specific and General Disclosure In The Specification ........66
`
`B. During Prosecution, Honeywell Represented That Its Claims
`Belonged To the “Distinct Technical Field” Of Automobile Air
`Conditioning ........................................................................................77
`
`
`
`3
`
`3 of 252
`
`

`
`C.
`
`D.
`
`The ’017 Patent Claims .......................................................................78
`
`The Parent Applications Of the ’017 Patent .......................................80
`
`1.
`
`2.
`
`The Provisional Applications ....................................................80
`
`The Non-Provisional Applications ...........................................82
`
`IX. THE EUROPEAN OPPOSITION OF EP 1 716 216 ................................90
`
`X.
`
`SUMMARY OF OPINIONS .........................................................................94
`
`XI. NONE OF THE PRIOR APPLICATIONS DISCLOSES THE
`ALLEGED INVENTIONS OF THE ’017 PATENT CLAIMS ....................97
`
`XII. THE SUBJECT MATTER OF THE ’017 PATENT CLAIMS WAS
`KNOWN BEFORE 2002 .............................................................................104
`
`A.
`
`Inagaki, Magid, Uemura, and Tapscott Make Claims 1-20
`Obvious..............................................................................................104
`
`1.
`
`2.
`
`3.
`
`Claim 12: Heat Transfer Composition ....................................106
`
`Independent Claims 1, 6, and 19 and Dependent Claim 7 .....125
`
`The Dependent Claims ............................................................126
`
`XIII. CALCULATION OF COP AND CAPACITY AT 150 °F
`CONDENSER TEMPERATURE ...............................................................135
`
`A. Missing information in the ’017 patent. ............................................136
`
`B.
`
`C.
`
`D.
`
`Calculation of COP and Capacity at Tcond=150 °F. ...........................137
`The data in Example 1 of the ’017 patent appears to have been
`calculated ...........................................................................................144
`
`Subsequent Testing has Confirmed That AAC Systems
`Optimized for R-1234yf Achieve a COP and Capacity of “about
`1” Relative to R-134a, Including at a Condenser Temperature of
`150 °F. ...............................................................................................145
`
`XIV. HONEYWELL’S ATTEMPTS DURING PROSECUTION TO
`DISTINGUISH INAGAKI FAIL ................................................................147
`
`
`
`4
`
`4 of 252
`
`

`
`A.
`
`B.
`
`C.
`
`Inagaki teaches R-1234yf as one of only two refrigerants with a
`capacity equal to or better than R-12 ................................................147
`
`Inagaki discloses R-1234yf for use in air conditioning
`applications ........................................................................................151
`
`The presence of an oil separator in Figure 2 of Inagaki does not
`suggest that Inagaki used a mineral oil lubricant with R-1234yf .....153
`
`XV. HONEYWELL’S ALLEGED UNEXPECTED RESULTS WERE
`NOT UNEXPECTED ..................................................................................154
`
`A.
`
`R-1234yf’s Miscibility with PAGs was Expected ............................154
`
`1.
`
`2.
`
`Dr. Thomas’ Miscibility Testing.............................................154
`
`The Pate Report .......................................................................156
`
`Fluoroalkenes were not Generally Considered too Unstable and
`Reactive for AAC ..............................................................................160
`
`The Known Hygroscopicity of PAGs does not Teach Away ...........161
`
`R-1234yf’s Low Flammability was Expected ..................................161
`
`B.
`
`C.
`
`D.
`
`XVI. THE SUBJECT MATTER OF THE ’017 PATENT CLAIMS WAS
`KNOWN AND IN USE BEFORE MARCH 26, 2014 ...............................163
`
`A.
`
`The Subject Matter of the Claims of the ’017 Patent Was in
`Public Use Before March 26, 2014 ...................................................163
`
`B. WO ’625 Generally, and Example 6 in Particular, Discloses
`Each and Every Element of Claims 1-12 and 14-20 of the ’017
`Patent .................................................................................................170
`
`1.
`
`2.
`
`3.
`
`4.
`
`Claim 12 – Heat Transfer Composition ..................................172
`
`Independent Claims 1, 6, and 19 .............................................177
`
`The Dependent Claims: Claim 3-5, 7-11, 14-18, and 20 ........183
`
`Conclusion ..............................................................................188
`
`
`
`5
`
`5 of 252
`
`

`
`C. Minor & Spatz and the ’882 Patent Claims Make the Alleged
`Inventions of the ’017 Patent Obvious ..............................................188
`
`1.
`
`2.
`
`AAC Heat Transfer Compositions Comprising HFO-
`1234yf and PAG......................................................................190
`
`Heat Transfer Composition Properties ...................................191
`
`3. Minor & Spatz and the’882 Patent Claims Disclose
`Methods Identical to Those of the ’017 Patent Claims...........195
`
`4. Minor & Spatz and the ’882 Patent Claims Make The
`Compositions of the ’017 Patent Obvious ..............................201
`
`5.
`
`6.
`
`7.
`
`A Person of Ordinary Skill in the Art Would Have Been
`Motivated to Optimize Minor & Spatz and the Claims of
`the ’882 Patent Claims to Arrive at the Claims of the
`’017 Patent ..............................................................................202
`
`There Is No Evidence of Secondary Considerations of
`Non-Obviousness ....................................................................205
`
`Honeywell Relied on Identical Evidence in an Attempt to
`Show the Non-Obviousness of Both the ’882 and ’017
`Patents .....................................................................................206
`
`8.
`
`Conclusion ..............................................................................209
`
`The Specification Does Not Enable the Claims of the ’017
`Patent .................................................................................................209
`
`Claim 13 is Not Enabled ...................................................................212
`
`The Claims Are Indefinite .................................................................213
`
`D.
`
`E.
`
`F.
`
`XVII. CONCLUSION ............................................................................................216
`
`6
`
`
`
`
`
`6 of 252
`
`

`
`AAC
`
`ADS
`
`CFC
`
`COP
`
`GWP
`
`HCFC
`
`HFC
`
`HFO
`
`GLOSSARY
`
`Automobile air conditioning
`
`Application data sheet
`
`Chlorofluorocarbon
`
`Coefficient of performance
`
`Global Warming Potential
`
`Hydrochlorofluorocarbon
`
`Hydrofluorocarbon
`
`Hydrofluoroolefin
`
`HFO-1234yf
`
`2,3,3,3-tetrafluoropropene, R-1234yf, or HFC-1234yf
`
`IHX
`
`PAG
`
`POE
`
`POSA
`
`R
`
`R-1243zf
`
`SAE
`
`Internal Heat Exchanger
`
`Polyalkylene glycol
`
`Polyol ester
`
`Person of ordinary skill in the art
`
`Refrigerant
`
`1,1,1-trifluoropropene, HFO-1243zf, or HFC-1243zf
`
`Society of Automotive Engineers
`
`USPTO or Office
`
`U.S. Patent and Trademark Office
`
`
`
`7
`
`
`
`
`
`7 of 252
`
`

`
`U.S. Patent No. 9,157,017
`
`I.
`
`INTRODUCTION
`
`1.
`
`
`I, J. Steven Brown, Ph.D., P.E., have been retained by Finnegan,
`
`Henderson, Farabow, Garrett, & Dunner, LLP (“Finnegan”) on behalf of Arkema
`
`Inc. and Arkema France (collectively “Arkema”) as an expert in the field of
`
`refrigerants. My qualifications in this area, as well as other areas, are established
`
`by my curriculum vitae, which is attached as Appendix A. I am being
`
`compensated for my time in this matter at a rate of $250/hour, however my
`
`compensation does not depend in any way on the outcome of this case.
`
`II. QUALIFICATIONS
`A. Education
`I received a Bachelor of Mechanical Engineering from the Georgia
`2.
`
`
`Institute of Technology in 1987 and a Ph.D. in Mechanical Engineering from the
`
`Massachusetts Institute of Technology in 1991 under the direction of Professor Ain
`
`Sonin. My dissertation was titled, “Vapor Condensation On Turbulent Liquid.”
`
`My undergraduate and graduate coursework emphasized—though was not limited
`
`to—fundamental courses in fluid mechanics, heat transfer, and thermodynamics.
`
`B.
`3.
`
`
`Professional Experience
`
`I am currently Associate Dean of Engineering and an Associate
`
`Professor of Mechanical Engineering at The Catholic University of America
`
`(“CUA”) in Washington, DC, where I teach both undergraduate and graduate
`
`courses in mechanical engineering—emphasizing courses in thermodynamics, heat
`
`
`
`8
`
`8 of 252
`
`

`
`U.S. Patent No. 9,157,017
`
`transfer, fluid mechanics, and energy, but also including courses in design—and
`
`conduct research in working fluids, in particular refrigerants, thermophysical
`
`property modeling, thermodynamic property measurements, equation of state
`
`modeling, in-tube boiling and condensation heat transfer studies, vapor
`
`compression refrigeration cycle modeling, alternative refrigerant cycle analysis and
`
`modeling, and organic realtime (“ORC”) cycle modeling, including working fluids
`
`for these applications.
`
`4.
`
`
`I obtained my current rank of Associate Professor in September 2002,
`
`having joined CUA at the rank of Assistant Professor in January 1998. I was
`
`granted tenure in September 2003.
`
`5.
`
`
`I served as the Acting Chairperson of the Department of Mechanical
`
`Engineering at CUA from June 2001 until August 2002 and as Chairperson from
`
`September 2002 through August 2008. I have served as a Guest Researcher at the
`
`National Institute of Standards and Technology (“NIST”) beginning in 1999,
`
`continuing through the mid-2000s on a formal basis and on a more informal basis
`
`through the present day.
`
`6.
`
`
`I served as an American Society of Engineering Education Faculty
`
`Fellow at the NASA Goddard Space Flight Center during the summers of 2005 and
`
`2006, focusing my research on electrohydrodynamic pumps for space cooling
`
`applications using various working fluids, including R-134a.
`
`
`
`9
`
`9 of 252
`
`

`
`U.S. Patent No. 9,157,017
`
`7.
`
`
`I spent a sabbatical year at the University of Padova, Italy during the
`
`2008-2009 academic year. There, I carried out collaborative research in working
`
`fluids, particularly making experimental measurements comparing R-134a and R-
`
`1234yf in an automotive air conditioning system, thermophysical property
`
`modeling of eight fluorinated propene isomers and equation of state modeling for
`
`the same isomers, including R-1234yf, vapor compression refrigeration cycle
`
`modeling, particularly comparing R-134a and R-1234yf in an automotive air
`
`conditioning system, vapor compression refrigeration cycle modeling for four
`
`refrigeration applications for the same eight fluorinated propene isomers, and in-
`
`tube condensation heat transfer studies.
`
`8.
`
`
`Prior to joining CUA, I spent approximately 5.5 years as a Product
`
`Design Engineer with Climate Control Operations of Ford Motor Company (this
`
`activity is now a part of Visteon Corporation), primarily in the Advanced
`
`Engineering Department, where I was involved in several projects related to both
`
`heating and air conditioning systems in automotive applications.
`
`9.
`
`
`I have received funding for my work at CUA, and I have also engaged
`
`in private consulting activities related to heat transfer fluids. For example, I
`
`consulted to provide Functional Enhancements to CYCLE_D Version 4.0
`
`Simulation Program from December 2009 – September 2010. I was also the
`
`Principal Investigator on a study for DuPont from 2001-2004 directed to
`
`
`
`10
`
`10 of 252
`
`

`
`U.S. Patent No. 9,157,017
`
`Methodology for Proper Evaluation of Refrigerants in Refrigeration and Air
`
`Conditioning Applications. In addition, I subcontracted with Kansas State
`
`University on an award from Ford Motor Company, March 2000 - March 2002 to
`
`study the Enhancement of the Visteon Vehicle Thermal Comfort Model. I also
`
`provided to the National Institute of Standards and Technology, “A Fair
`
`Evaluation of CO2 and R-134a as Refrigerants in Automotive Air Conditioning
`
`Applications” from January 1999 - March 2000.
`
`10.
`
`
`In summary, I have considerable experience with working fluids,
`
`particularly, refrigerants, including chlorofluorocarbons,
`
`hydrochlorofluorocarbons, hydrofluorocarbons, hydrofluoroolefins, and “natural
`
`refrigerants.” I have particular experience with refrigerants in the context of
`
`mobile air conditioning applications.
`
`C.
`11.
`
`
`Professional Organizations and Societies
`
`I am a member of and have served on various committees for
`
`American Society of Engineering Education (ASEE), American Society of
`
`Mechanical Engineering (ASME), American Society of Heating, Refrigerating,
`
`and Air Conditioning Engineers (ASHRAE), and International Institute of
`
`Refrigeration (IIR).
`
`
`
`11
`
`11 of 252
`
`

`
`U.S. Patent No. 9,157,017
`
`D. Honors and Awards
`I was an elected fellow of ASHRAE in July 2013, and I received the
`12.
`
`
`ASHRAE Distinguished Service Award in January 2015. In the summer of 2001, I
`
`was named DuPont Young Professor. In addition, I have received numerous
`
`awards for teaching and mentoring my students.
`
`E.
`13.
`
`
`Publications
`
`I have published almost 100 papers in peer reviewed journals and
`
`conference proceedings. I have also developed software to determine ideal vapor
`
`compression systems. Additional details regarding my scholarly work are included
`
`in my curriculum vitae as Appendix A.
`
`III. MATERIALS CONSIDERED
`In forming my opinions, I have had available the materials cited in
`14.
`
`
`this report, the materials cited in Arkema’s petition, as well as those listed in the
`
`attached Appendix B and the publications listed on my curriculum vitae, which is
`
`attached as Appendix A. In addition to these materials, I may consider additional
`
`documents and information in forming any supplemental opinions. To the extent I
`
`am provided with additional documents or information, including any expert
`
`declarations in this proceeding, I may offer further opinions.
`
`IV. TECHNOLOGY BACKGROUND AND PRE-2002 ACTIVITIES
` The claims of the ’017 patent are directed to heat transfer 15.
`
`
`compositions for use in automobile air conditioning (“AAC”) “consisting
`
`
`
`12
`
`12 of 252
`
`

`
`U.S. Patent No. 9,157,017
`
`essentially of: (i) at least about 50% by weight of a low toxicity refrigerant suitable
`
`for use in automobile air conditioning systems, said refrigerant consisting
`
`essentially of 2,3,3,3-tetrafluoropropene (HFO-1234yf); and (ii) lubricant
`
`consisting essentially of polyalkylene glycol(s).” (E.g., Ex. 1001 at 18:37-43.)
`
`A. Vapor Compression Refrigeration Systems
` The vapor compression refrigeration cycle is the most widely used 16.
`
`
`method for pumping heat in order to air condition buildings, houses and cars.
`
`
`
` A vapor-compression refrigeration system consists of four main 17.
`
`components: a compressor, a high-temperature heat exchanger (a condenser), an
`
`expansion device, and a low-temperature heat exchanger (an evaporator). Figure 2
`
`of Inagaki (Ex. 1012) depicts a typical vapor compression refrigeration cycle,
`
`including these four components:
`
`
`
`13
`
`13 of 252
`
`

`
`U.S. Patent No. 9,157,017
`
`
`
`
`
` The vapor-compression refrigeration system uses a working fluid, 18.
`
`called a “refrigerant,” as the medium which absorbs thermal energy from a region
`
`of lower temperature and subsequently rejects the thermal energy to a region of
`
`higher temperature.
`
`
`
` Generally, the circulating refrigerant enters the compressor as a 19.
`
`saturated or superheated vapor, and exits as a superheated vapor of higher
`
`temperature and pressure.
`
`
`
` The refrigerant in a superheated vapor state then enters the condenser 20.
`
`where it condenses and rejects its heat to an external working fluid, for example,
`
`
`
`14
`
`14 of 252
`
`

`
`U.S. Patent No. 9,157,017
`
`cooling water or cooling air, at a lower temperature than the refrigerant. The
`
`refrigerant exits the condenser either in a subcooled state, or, if there is insufficient
`
`condensing capacity, as a two-phase mixture of liquid and vapor.
`
`
`
` The high pressure refrigerant—most often a subcooled liquid—then 21.
`
`enters the expansion device where its pressure drops and the refrigerant flashes to a
`
`two-phase mixture of liquid and vapor of lower temperature and pressure.
`
`
`
` The low temperature, low pressure refrigerant next enters the 22.
`
`evaporator where it boils, absorbing heat from an external working fluid, for
`
`example, water or air, at a higher temperature than the refrigerant. The cooled
`
`water or air can then be used to cool a space of interest, e.g., a room, a building, a
`
`refrigerated box, or an automobile interior. The refrigerant exits the evaporator
`
`most often in a superheated state.
`
`
`
` Finally, the refrigerant exits the evaporator and returns to the 23.
`
`compressor, thus completing the refrigeration cycle.
`
`24.
`
`
`In addition to the four basic components described above, components
`
`such as refrigerant tubes or lines, fittings, switches, desiccant driers, accumulators
`
`or receivers, oil separators, instrumentation, internal heat exchangers, and the like
`
`are often included.
`
`
`
`15
`
`15 of 252
`
`

`
`U.S. Patent No. 9,157,017
`
`B. Refrigerants
` A good refrigerant has good thermophysical properties, is stable and 25.
`
`
`inert, is safe, has minimal environmental impact, is compatible with common
`
`materials and lubricants, and is low cost.
`
`
`
` The desired thermophysical properties include a boiling point 26.
`
`appropriate for the application, a high latent heat of vaporization, a moderate
`
`density in liquid form, a relatively high density in gaseous form, a high critical
`
`temperature, a low-to-moderate liquid molar heat capacity, low liquid viscosity,
`
`and high liquid thermal conductivity. Since boiling point and gas density are
`
`affected by pressure, some refrigerants are more suitable for some applications
`
`than are others.
`
`
`
` Early development of refrigerants was driven primarily by 27.
`
`performance and safety concerns. More recently, research and development efforts
`
`have focused on finding more environmentally friendly refrigerants without
`
`compromising performance or safety.
`
`Refrigerant Nomenclature
`
`1.
`
`
` ASHRAE Standard 34-2013 (Ex. 1110) provides a naming convention 28.
`
`for refrigerants. (Ex. 1110 at 5-13, § 4.) Starting with the most right-hand number
`
`and working left, the values relate to the following: (ones position) number of
`
`fluorine atoms; (tens position) number of hydrogen atoms plus 1; (100s position)
`
`
`
`16
`
`16 of 252
`
`

`
`U.S. Patent No. 9,157,017
`
`one less than the number of carbon atoms, omitted when zero; (1000s position)
`
`number of unsaturated carbon-carbon bonds, again omitted when zero. (Id. at 5-6,
`
`§§ 4.1.1-4.4.4.) For isomers in the ethane series having the same chemical
`
`compositions, the most symmetrical isomer is identified by numbers alone. (Id. at
`
`6, § 4.1.8.) As the isomers become more and more asymmetrical, successive
`
`lowercase letters (i.e., a, b, or c) are appended. (Id.) In the case of isomers of the
`
`propene series, the first appended lowercase letter indicate the substitutuent on the
`
`middle carbon and the second lowercase letter specifies the substituent on the
`
`terminal methylene (i.e., unsaturated) carbon. (Ex. 1110 at 6, § 4.1.10.)
`
`
`
` Accordingly, for example, the name “R-12” conveys to a person of 29.
`
`ordinary skill that the molecule has 2 fluorine atoms, zero hydrogen atoms, and 1
`
`carbon, and a person of ordinary skill would further understand that the remaining
`
`two atoms are chlorines. (Ex. 1110 at 6, §§ 4.1.1-4.1.4, 4.1.6.) Thus, based solely
`
`on the name “R-12,” a person of ordinary skill would know that this molecule is
`
`dichlorodifluoromethane, one of the most widely used chlorofluorocarbon (“CFC”)
`
`refrigerants. Similarly, following this naming convention, a person of ordinary
`
`skill would understand that R-1234yf has 4 fluorine atoms, 2 hydrogen atoms, 3
`
`carbon atoms, and one double bond:
`
`
`
`17
`
`17 of 252
`
`

`
`R—1234yf
`
`U_S_ Patent No. 9,157,017
`
`LP
`
`Number of Fs
`
`Number of Hs + 1
`
`Number of Cs - 1
`
`Number of double bonds
`
`(Id. at 6, §§ 4.1.1-4-1.4.) Further, the “y” in R-1234yf indicates that there is a
`
`fluorine substituted on the central carbon atom and the “f" indicates that there are
`
`two hydrogens bonded to the terminal, unsaturated carbon. (Id. at 6, § 4.1.10.)
`
`Thus, a person of ordinary skill would understand that the name “R-1234yf’ refers
`
`specifically to 2,3,3,3—tetrafluoropropene.
`
`30.
`
`Because the structure of the refrigerant can be determined from the
`
`numerical designation alone, ASHRAE Standard 34 encourages using simply the
`
`prefix
`
`which stands for “Refrigerant,” in technical publications. (Ex. 1110 at
`
`14, § 5.1.1-) However, other prefixes indicating the absence or presence of
`
`chlorine, hydrogen, and any unsaturated bonds, such as “CFC,”
`
`“HCFC,”
`
`or
`
`may also be used. (Id. at 14, § 5.2.2.)
`
`2.
`
`Refrigerant Environmental Parameters
`
`31.
`
`Two key measures of a refrigerant’s environmental impact are its
`
`ozone depletion potential (“ODP”) and its global warming potential (“GWP”).
`
`18 of 252
`
`18
`
`

`
`U.S. Patent No. 9,157,017
`
`
`
` ODP measures the relative potential of a compound to deplete the 32.
`
`earth’s stratospheric ozone layer. WMO 2002 (Ex. 1104) defines ODP as “an
`
`integrative quantity, distinct for each halocarbon source species, that represents the
`
`extent of ozone depletion in the stratosphere expected from the halocarbon on a
`
`mass-for-mass basis relative to CFC-11.” (Ex. 1104 at 1.28.)
`
`33.
`
`
`It was well-known prior to 2002 that a compound’s ODP is
`
`determined by its molecular structure, atmospheric lifetime, molecular weight, and
`
`the number of chlorine, bromine, and iodine atoms in the molecule. (See, e.g., Exs.
`
`1112 at 11-12; 1017 at 3:65-4:8.)
`
`
`
` GWP is one measure of a compound’s impact on global climate 34.
`
`change. The Intergovernmental Panel on Climate Change (“IPCC”) explains that
`
`GWP is “based on the time-integrated global mean RF of a pulse emission of 1 kg
`
`of some compound (i) relative to that of 1 kg of the reference gas CO2.” (Ex. 1105
`
`at 210; see also Ex. 1112 at 8-9.) IPCC further teaches that “The RF represents the
`
`stratospherically adjusted radiative flux change evaluated at the tropopause, as
`
`defined in the [Third Assessment Report].” (Ex. 1105 at 131.)
`
`35.
`
`
`It was well-known prior to October 2002 that a compound’s GWP
`
`depends on several factors, including its atmospheric lifetime, the time horizon
`
`over which GWP is measured, the compound’s radiative forcing, and the
`
`compound’s molecular weight. (See, e.g., Ex. 1112 at 8-9, 11-12, Figure 6.) In
`
`
`
`19
`
`19 of 252
`
`

`
`U.S. Patent No. 9,157,017
`
`particular, it was well-known that compounds with very short atmospheric
`
`lifetimes have low GWPs. (Exs. 1015 at 209-210; 1112 at 12.) Unless specified
`
`otherwise, when I use the term “GWP” herein, I am referring to the GWP
`
`measured over a 100-year time horizon.
`
`Refrigerant Performance Parameters
`
`3.
`
`
` Two of the most important parameters used to describe the 36.
`
`performance of a vapor compression refrigeration system are the Coefficient of
`
`Performance (“COP”) and the volumetric cooling or heating capacity (“capacity”).
`
`
`
` COP is a measure of cycle efficiency, that is, how well energy is used 37.
`
`by a vapor compression refrigeration system.
`
`
`
` According to the ’017 patent, COP “is a universally accepted measure 38.
`
`of refrigerant performance, especially useful in representing the relative
`
`thermodynamic efficiency of a refrigerant in a specific heating or cooling cycle
`
`involving evaporation or condensation of the refrigerant. In refrigeration
`
`engineering, this term expresses the ratio of useful refrigeration to the energy
`
`applied by the compressor in compressing the vapor.” (Ex. 1001 at 13:64-14:4.)
`
`
`
` The capacity indicates the relative size of a system required to achieve 39.
`
`a given cooling or heating effect.
`
`
`
` According to the ’017 patent, the “capacity of a refrigerant represents 40.
`
`the amount of cooling or heating it provides and provides some measure of the
`
`
`
`20
`
`20 of 252
`
`

`
`U.S. Patent No. 9,157,017
`
`capability of a compressor to pump quantities of heat for a given volumetric flow
`
`rate of refrigerant. In other words, given a specific compressor, a refrigerant with a
`
`higher capacity will deliver more cooling or heating power.” (Ex. 1001 at 14:4-9.)
`
`
`
` The COP and capacity achieved by a refrigeration system, such as 41.
`
`AAC, depend on a number of factors, including the overall system architecture, the
`
`designs of the various system components, the operating conditions, and the
`
`refrigerant.
`
`
`
` When modelling the performance of a refrigeration system, such as 42.
`
`AAC, using an ideal1 vapor compression refrigeration cycle, COP and capacity
`
`depend on the evaporator temperature, the condenser temperature, the
`
`thermodynamic properties of the refrigerant, the degree of subcooling and
`
`superheating, if any, the specified isentropic efficiency of the compressor, if any,
`
`and the effectiveness of an internal heat exchanger (“IHX”), if any.
`
`
`
` For a specified system at a fixed set of operating conditions, the COP 43.
`
`and capacity are properties of the refrigerant, and therefore COP and capacity are
`
`often used to compare the performance of refrigerants. Often, when comparing
`
`1 The two provisional applications originally filed by Honeywell to which the ’017
`
`patent claims priority use the term “theoretical” instead of “ideal.” (See Exs. 1035
`
`at 6:17-20; 1036 at 10:1-5; infra ¶¶ 173-74, 192-93, 350-52.) A person of ordinary
`
`skill in the art would understand that these terms are interchangeable.
`
`
`
`21
`
`21 of 252
`
`

`
`U.S. Patent No. 9,157,017
`
`refrigerants, COP and capacity values are reported as a ratio relative to the COP
`
`and capacity of a widely used refrigerant with well-known performance
`
`characteristics. For example, Inagaki reports the COP and capacity of refrigerants
`
`as a ratio relative to R-22. (See, e.g., Ex. 1012 at 7:28-35.) Other conventions
`
`include reporting the percent increase or decrease of a test refrigerant relative to a
`
`standard, such as “6% greater” or “4% less” which correspond to ratios of 1.06 and
`
`0.94, respectively, which are “about 1” as per the ’017 patent. (See, e.g., Ex. 1113
`
`at 2.)
`
`
`
` When seeking to replace an existing refrigerant with a more 44.
`
`environmentally friendly alternative, it was common knowledge prior to October
`
`2002 to seek a substitute refrigerant that could achieve a COP and capacity similar
`
`to or better than the COP and capacity achieved by the existing refrigerant.
`
`
`
` For example, in an AAC system, an alternative refrigerant that 45.
`
`achieves a COP of “about 1” relative to the existing refrigerant would not incur
`
`any significant penalty in terms of energy efficiency (i.e., fuel consumption) to
`
`provide equivalent air conditioning. This is important, because AAC systems
`
`contribute to global warming both through release of refrigerants and through
`
`consumption of energy, including fossil fuels. (See Ex. 1112 at 8-9.) Thus, a low-
`
`GWP replacement refrigerant could have a greater overall global warming impact
`
`if it was less energy efficient (i.e., had a lower COP and therefore used more fossil
`
`
`
`22
`
`22 of 252
`
`

`
`U.S. Patent No. 9,157,017
`
`fuels to provide equivalent air conditioning) than the existing high-GWP
`
`refrigerant it was intended to replace. (See Ex. 1112 at 8-9.)
`
`
`
` Similarly, a replacement refrigerant with a capacity of “about 1” 46.
`
`relative to an existing refrigerant could use a similarly sized, and possibly even the
`
`identical, compressor to the existing refrigerant. A refrigerant with a significantly
`
`lower capacity would require a larger compressor, which could be problematic in
`
`AAC applications with relatively strict size and weight specifications for the
`
`compressor (e.g., limited room under the hood).
`
`
`
` For these r