trials@uspto.gov
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`571-272-7822
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`IPR2015-01586, Paper No. 34
`IPR2015-01592, Paper No. 35
`October 19, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HYDRITE CHEMICAL CO.,
`Petitioner,
`
`v.
`
`SOLENIS TECHNOLOGIES, L.P.,
`Patent Owner.
`____________
`
`Case IPR2015-01586, Patent 8,841,469 B2
`Case IPR2015-01592, Patent 8,962,059 B1
`____________
`
`Held: September 13, 2016
`____________
`
`
`
`BEFORE: ERICA A. FRANKLIN, DONNA M. PRAISS, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday,
`September 13, 2016, commencing at 9:00 a.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`571-272-7822
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`IPR2015-01586, Paper No. 34
`IPR2015-01592, Paper No. 35
`October 19, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HYDRITE CHEMICAL CO.,
`Petitioner,
`
`v.
`
`SOLENIS TECHNOLOGIES, L.P.,
`Patent Owner.
`____________
`
`Case IPR2015-01586, Patent 8,841,469 B2
`Case IPR2015-01592, Patent 8,962,059 B1
`____________
`
`Held: September 13, 2016
`____________
`
`
`
`BEFORE: ERICA A. FRANKLIN, DONNA M. PRAISS, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday,
`September 13, 2016, commencing at 9:00 a.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`Case IPR2015-01586, Patent 8,841,469 B2
`Case IPR2015-01592, Patent 8,962,059 B1
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`CHRISTOPHER J. FAHY, ESQUIRE
`RICHARD T. ROCHE, ESQUIRE
`JOEL AUSTIN, ESQUIRE
`Quarles & Brady, LLP
`300 North LaSalle Street
`Suite 4000
`Chicago, Illinois 60654-3422
`
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`CHARLIE C. LYU, ESQUIRE
`Baker Hostetler
`2929 Arch Street
`Cira Centre, 12th Floor
`Philadelphia, Pennsylvania 19104-2891
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`Case IPR2015-01586, Patent 8,841,469 B2
`Case IPR2015-01592, Patent 8,962,059 B1
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`P R O C E E D I N G S
`- - - - -
`JUDGE CHAGNON: Good morning, everyone. This
`is the final hearing for two proceedings between petitioner,
`Hydrite Chemical Company, and patent owner, Solenis
`Technologies, L.P. The proceeding numbers are IPR2015-01586
`for U.S. patent number 8,841,469 and IPR2015-01592 for U.S.
`patent number 8,962,059.
`I am Judge Chagnon and I have Judge Franklin here
`with me in Alexandria, and Judge Praiss is joining us remotely
`today on the screen behind us. Counsel, could you please
`introduce yourselves and let us know who will be presenting
`today, starting with petitioner.
`MR. FAHY: Good morning, Your Honors. For
`petitioner Christopher Fahy with Quarles & Brady. I will be
`presenting. I'm here with lead counsel, Richard Roche, backup
`counsel Joel Austin, and the general counsel of Hydrite, David
`Beine.
`
`MR. LUCCI: Judge, my name is Joe Lucci of Baker
`Hostetler. I'll be representing the petitioner [sic]. With me today
`are my colleagues, David Farsiou and Charlie Lyu.
`JUDGE CHAGNON: Thank you so much. So today
`please take into consideration when you are giving your
`presentations that Judge Praiss is appearing remotely. So please
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`make sure to identify the demonstrative exhibits that you will be
`referencing clearly and specifically, for example, with the slide
`number. It will help ensure clarity of the record as well as ensure
`that Judge Praiss is able to follow along with the demonstratives.
`As you know, pursuant to our order of August 10th,
`each party has one hour of time today total for presenting. You
`can allocate your time between the two cases as you see fit. We
`will be entering the same transcript into the record for both cases.
`Petitioner has the burden to prove unpatentability of the
`original claims. So petitioner will present first today followed by
`patent owner, and petitioner may reserve some time for rebuttal if
`desired.
`I also want to remind the parties today that we have
`some confidential information that was filed under seal in these
`cases. The hearing is public, as you know, so keep that in mind
`during your presentations. If there's any confidential information
`that will be discussed, please just let us know ahead of time. But
`I think that in these cases we should be able to discuss the
`confidential information without actually revealing it. You can
`just refer us to those cites in the record and we can look it up here
`on our screens. And if we need to discuss it, we can address that
`when we get to that point.
`All right. So Mr. Fahy, would you like to reserve any
`time for rebuttal today?
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`MR. FAHY: Yes, Your Honor. I actually don't expect
`my opening presentation to take more than 15 or 20 minutes.
`JUDGE CHAGNON: Okay. How about I set the time
`for 30 for you just so we have something on the clock?
`MR. FAHY: You have heard people say that before.
`JUDGE CHAGNON: So you can get started whenever
`you are ready.
`MR. FAHY: Again, my name is Christopher Fahy. I'm
`arguing on behalf of Hydrite Chemical Company, the petitioner
`in both the IPR proceedings here today. And I'll begin, Your
`Honors, by noting that petitioner did not request oral argument
`for either of these proceedings. In fact, we don't believe it's
`necessary. We believe that the papers adequately describe and
`address both parties' positions. But in view of the patent owner's
`request for oral argument, we are more than happy to take some
`of our allotted time to go over a few of the issues that remain
`before the parties and of course, answer any questions that Your
`Honors have for us. But that is why I don't anticipate taking up a
`whole lot of time rehashing what is already in the papers here this
`morning.
`Referring to slide 2, I'm sure Your Honors are familiar
`with the institution decisions in these proceedings. There are two
`patents at issue. One is the subject of each separate IPR
`proceeding. But the patents are extraordinarily similar. In fact,
`they are so similar that there was an interference proceeding
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`between them in District of Delaware. All the claims of both
`patents relate to methods for recovering oil in a corn-to-ethanol
`process.
`You can see on slide 2 that we have broken up our
`arguments as we did in the petitions under two distinct lines of
`reasonings. And to be consistent with our petitions and the rest of
`papers in this proceeding, I'm going to refer to those as we did in
`the papers as the Bonanno line of reasoning, the Bonanno
`grounds and the Winsness grounds. It's important to note that
`these are two distinct lines of reasoning. One of skill in the art
`addressing the Bonanno grounds would recognize that separating
`water from oil in Bonanno to recover oil in that process. One of
`skill in the art looking at the Winsness grounds is looking at the
`problem of breaking an emulsion in a centrifuge in an oil
`recovery process.
`What we are going to see here today, I think, in both
`presentations is that the simplicity of the patent claims at issue is
`at odds with the supposed technical requirements and complexity
`that Your Honors saw in patent owner's papers and will likely see
`in their petition today. Patent owner has pointed to complex
`supposed functionality requirements for the prior art in the
`systems at issue. They have pointed to supposed complex
`requirements for the efficacy of oil recovery. But frankly, we
`don't believe that any of these complexities have any place in
`these proceedings because they are just not found in the claims at
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`issue. The claims in fact, are very broad and they read on the
`prior art and they claim nothing more than a known off-the-shelf
`chemical used in a known process.
`Here on slide 3 we have a high-level roadmap, kind of
`the reasons why the Board should find the claims of the patents at
`issue unpatentable. First, nothing in patent owner's response
`changes the reasoning provided by the Board and the decisions to
`institute. The patent owner is not contending that the prior art
`fails to contain every element of the claims. In fact, patent owner
`does not even present a claim-by-claim analysis for each
`dependent claim. They lump groups of them together.
`Secondly, many of patent owner's arguments miss the
`point entirely. And we'll see this, for example, and we talk about
`the ICI reference. And I have a feeling from seeing the slides that
`patent owner is going to spend quite a bit of time on the ICI
`reference today. But not only is patent owner wrong about what
`ICI teaches, but ICI was not relied upon in the manner patent
`owner is asserting.
`And finally, patent owner's attempt to salvage the broad
`claims through purported evidence of secondary consideration
`fails as well.
`A good illustration of the breadth of the claims we are
`dealing with here today is found on slide 4 which shows claim 1
`of the '469 patent. Claim 1 is the only independent claim in the
`'469 patent. And this claim, as you can see, includes one method
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`step: Add at least one chemical additive to a corn-to-ethanol
`process stream.
`Now, you are going to see some fairly technical
`chemical verbiage in the claims today. But make no mistake
`about it, there's no dispute that the chemicals we are talking about
`in these claims are in the prior art. The functionalized polyol of
`claim 1 and the variations claimed in the dependent claims are
`commercially available, preexisting, off-the-shelf chemicals.
`There's also no dispute that the claimed chemicals are in the prior
`art at the particular specifications of moles, weights and
`temperatures that you see in some of the dependent claims.
`Notably, there's no functionality requirement in the
`claims themselves. We think this is noteworthy because the '469
`patent claims do not even link the addition of the chemical
`additive to the recovery of oil whatsoever. Certainly the claim
`provides no details on how exactly the chemical must work or
`how much oil must be recovered, for example.
`Turning to the distinct lines of reasoning on slide 5, we
`have the Bonanno grounds as it relates to the '469 patent. These
`are grounds 1 through 5. The Bonanno reference includes
`everything that you need to invalidate the claims or at least the
`independent claim 1 of the '469 patent. It teaches everything.
`Bonanno teaches a process that's shown in Figure 3 of
`the Bonanno reference. But more explicitly, Bonanno details
`what that process is in column 2, specifically column 2, lines 5 to
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`Case IPR2015-01592, Patent 8,962,059 B1
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`45. And that Bonanno process includes explicitly as step 7 of the
`process recovering any natural oil. That's at lines 29 and 30 of
`column 2 of Bonanno.
`Bonanno goes on in that same column to teach the use
`of a surfactant in that process and further even details a number
`of advantages of the process that includes recovering oil in the
`use of a surfactant. Later in column 5, Bonanno goes on to teach
`that the surfactant in the Bonanno process can be the claimed
`polyoxyethylene sorbitan fatty acid esters sold under the trade
`name TWEEN by ICI. And that's column 5 of Bonanno, lines 8
`to 10. And then Bonanno provides a few examples of the
`process. And one of the examples can be found in example 2.
`That's column 16, lines 50 to 56 of Bonanno. In that example,
`you see the processing of corn stillage.
`So that and the knowledge, those disclosures and the
`knowledge of one of skill is all you need to arrive at the claimed
`invention with a reasonable expectation of success. And an
`important point is that reasonable expectation of success is in
`Bonanno itself. The law on this issue is well settled. A
`reasonable expectation of success analysis must take into account
`the full scope of the claimed invention. It is legal error to fail to
`do so. And that is the Allergan v. Apotex case that is cited in our
`reply briefs at pages 3 and 4.
`Claim 1 states recovering oil. So the question is, would
`one of skill in the art have a reasonable expectation of recovering
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`oil that's explicitly named in the Bonanno process using the
`claimed surfactant that's explicitly defined as a possible surfactant
`in the Bonanno process in the corn stillage example 2 of
`Bonanno. And the answer is yes.
`Again, Bonanno also enumerates five advantages of the
`process within the patent itself at column 2. That's at lines 34 to
`45. And separately Dr. Rockstraw, petitioner's expert witness
`who provided a declaration at Exhibit 1005 to the petition,
`testified that there were overall market demands and incentives
`driving increased efficiencies in oil recovery prior to the date of
`the patent.
`And of course, the ICI reference further confirms that
`one of skill in the art would have a reasonable expectation of
`success in applying the teachings of Bonanno. ICI is talking
`about the HLB system. The HLB system is actually even
`referenced in Bonanno itself, column 4, lines 58 to 59, and was
`known as early as the 1950s for determining which surfactants to
`use in systems such as these.
`Slide 6 has the Winsness grounds, grounds 6 through 10
`for the '469 patent. Winsness identifies the problem of an
`emulsion in a centrifuge. It also identifies specific motivations to
`improve the process in paragraph 7 of Exhibit 1012, namely the
`efficiency of recovering oil.
`Alther provides a solution to the problem. Break the
`emulsion. In fact, Alther also discloses specifically adding a
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`surfactant to a centrifuge to break the emulsion. It goes further
`and explicitly selects the surfactant. It names three surfactants
`that are good for breaking an emulsion, including the claimed
`polysorbate 80.
`The reasonable expectation of success, again, is in the
`combination of Winsness and Alther themselves. Specifically,
`Alther already selects the surfactant and teaches the advantage
`which it is the function of emulsion breaking. ICI provides
`additional support to show that there's more than a reasonable
`expectation of success in arriving at the claimed invention.
`Again, Dr. Rockstraw testified regarding the Winsness grounds as
`well that there were increased market demands for usable oil
`prior to the date of the patent.
`JUDGE FRANKLIN: Counsel, can I ask you a
`question. This is actually coming from patent owner's response in
`1592, the first page, where they characterize petitioner's argument
`as requiring a person of skill in the art to select the claim
`compounds based solely on their HLB. Is that an accurate
`characterization of your position?
`MR. FAHY: No, it is not. It's clear in our petition,
`that's what I was referring to on my second slide, I believe, that
`they are mischaracterizing our position. We are not saying that
`one of skill in the art selects the surfactant solely on the HLB. In
`fact, we are saying that the surfactant is selected within Bonanno,
`between or within Alther, polysorbate 80 for some of dependent
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`claims within Martin. So ICI is not required to select the
`surfactant. What ICI brings to the table is the description of that
`HLB system, and then one of skill would have more than a
`reasonable expectation of success in the selection of that
`surfactant.
`JUDGE FRANKLIN: So in looking at Bonanno, does
`one of skill in the art require any other skill or knowledge with
`respect to selecting a surfactant that would work?
`MR. FAHY: It doesn't when you look at it's
`commensurate with the scope of the claim at issue. The claim
`does not provide, again, any functionality, any baseline to make
`that judgment. So Bonanno's disclosure of TWEEN as one of the
`surfactants -- Bonanno lays it out just very logically in nice steps.
`Here is the process early in the patent in Step 2, recovering oil
`Step 7, use a surfactant in that same column 2. It goes on to list a
`number of possible surfactants that you could use in this process
`including the TWEENs. Then it goes on to give examples of how
`those might be used, one of them corn stillage.
`JUDGE FRANKLIN: So then on that same page where
`patent owner is, again, characterizing Dr. Rockstraw's testimony
`as admitting that the HLB is not an accurate predictor, is it your
`position that that testimony is not relevant?
`MR. FAHY: Partly. It's not entirely accurate. If you
`look at the remainder of Dr. Rockstraw's testimony surrounding, I
`think, the line that they cherry-picked out of there, he gives a
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`clear description of exactly how one of skill in the art -- and we
`put this in our reply as a block quote of his testimony, how one of
`skill in the art would use the HLB system practically in reality.
`He is acknowledging that, of course, I'm not just going to look at
`one particular thing. So it's irrelevant in the sense that your
`previous question, we are not relying on only the HLB to select a
`surfactant. We don't need it at all, in fact. It's to show more than
`a reasonable expectation of a success.
`But it's also a bit of mischaracterization in that
`Dr. Rockstraw testified in his declarations and in his deposition
`very clearly and exactly how one of skill in the art -- and very
`credibly, in my opinion -- would use the HLB system. And he's
`coming to the table, as he says, not only with that, but with his
`knowledge of one of skill in the art. And he goes step by step
`how he would get to a very small pool of surfactants.
`JUDGE FRANKLIN: Thank you.
`MR. FAHY: So turning back to slide 6, again, the
`reasonable expectation of success is there in Alther. It discloses
`the surfactant and teaches the advantage of breaking the emulsion
`with that surfactant.
`Slide 7 is really just an outline of Hydrite's reply to
`patent owner's response at a high level that I will address as
`needed in my rebuttal time. And if there are no other questions
`on the '469, I'll turn to the '059 patent.
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`Slide 8 shows claim 1, one of two independent claims in
`the '059 patent. And again, you have a very broad claim. Mixing
`a known surfactant with the byproduct stream, centrifuging and
`separating oil. Solenis does not claim that they invented the
`ethanol production process. They are not saying they invented
`ethoxylated sorbitan esters. They are not saying they invented
`centrifugation in an ethanol process or even the idea of separating
`oil from an ethanol byproduct stream. Again, you see no
`functional requirements. In fact, the function of mixing an
`ethoxylated sorbitan ester is not linked to the recovery of oil here
`either. And the step of separating the oil does not claim how
`much oil is separated or even that the oil separation is somehow
`enhanced or increased. It just doesn't say in the claim how it
`works.
`
`Now, there's one other independent claim in the '059
`patent, and that's claim 13. Claim 13 is really just claim 1 with a
`couple -- so claim 1 mixing a known surfactant, centrifuging and
`separating the oil. Claim 13 is very similar. Just adds a couple
`more process parameters that we have also shown in our petitions
`are in the prior art.
`So again, we've got independent claims that are nothing
`more than extracting oil with commercially available oil
`concentrator. And there's no dispute that similarly the chemical
`verbiage used in the '059 patent is in the prior art references.
`These are known off-the-shelf chemicals.
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`Slide 9 shows the Winsness grounds, grounds 1 through
`6 as they relate to the '059 patent. And these are the same
`references that I was just talking about. It's the same logic. We
`are just picking up some of the different elements that are specific
`to the '059 patent such as referred in slide 9, the pH and the
`temperature, things like that. Again, Winsness identifies the
`problem of emulsion and centrifuge and a motivation to increase
`efficiency. Alther teaches the solution to the problem. ICI
`provides additional support for the reasonable expectation of
`success using the HLB system that one could de-emulsify the
`emulsion.
`Slide 10 shows the Bonanno grounds again, grounds 7
`through 9 for the '059 patent. Again, everything is in Bonanno
`itself. The reasonable expectation of success is found within
`Bonanno, and Bonanno even discloses the specific advantages of
`a process, with ICI playing the role of an additional basis for
`finding a reasonable expectation of success in applying the
`teachings of Bonanno.
`Slide 11 shows our high-level outline of our rebuttal
`that again I'll refer to in my reserved time if needed.
`And slide 12 is really an outline of petitioner's reply
`briefs responding to the purported secondary consideration
`evidence that patent owner raised in its response. This is -- I have
`seen nothing new in the slides that I think we are going to see
`from patent owner. So everything is in the reply brief where we
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`Case IPR2015-01592, Patent 8,962,059 B1
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`have cited pages 22 to 25 of both replies. I'm more than happy to
`answer any questions on it, but I don't really see a reason to just
`regurgitate what we wrote in the papers.
`So if there are no other questions, that's all I have for
`our affirmative presentation.
`JUDGE CHAGNON: Can we go back quickly to the
`'469 patent. Can you address patent owner's arguments that they
`set forth in their papers about dependent claim 16 and the
`argument that the disclosure in Bonanno that the petitioner relies
`on is, I guess, sort of the opposite of what the claim says, if I can
`characterize their argument there.
`MR. FAHY: Sure. Again, this is kind of another one of
`these like ICI, a bit of a strawman argument and one of these
`areas where your patent owner’s trying to create technical
`complexities that clearly don't exist in the claim and aren't
`necessary for one of skill in the art using the teachings of
`Bonanno to get to the claim.
`It doesn't -- although we disagree certainly with how
`patent owner thinks Bonanno works, and you've got
`Dr. Rockstraw for Hydrite saying it works one way, the
`underlying molecular interactions, and you've got Dr. Kohl
`saying it works another way. What we can all agree on, because
`it's explicitly stated in Bonanno, is that Bonanno is separating oil
`from water at the end of the day. How it gets there, we believe
`Dr. Rockstraw is right. I'm sure patent owner believes Dr. Kohl
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`Case IPR2015-01586, Patent 8,841,469 B2
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`is right. But it doesn't matter for finding the claims unpatentable.
`Bonanno very clearly states it's increasing dehydration. At the
`end of the day, regardless of how it actually does it, it is taking
`water out. It is separating water from oil.
`Again, Bonanno selects the surfactant by teaching the
`advantages of its use. The dehydration process of Bonanno
`includes recovering any natural oil. The surfactants are listed
`there. Those are the claimed surfactants. So the argument that
`you are referring to by patent owner is really nothing more than
`trying to create a dispute where none exists.
`JUDGE CHAGNON: Thank you.
`MR. FAHY: Thank you, Your Honors.
`MR. LUCCI: Good morning. The reason we are all
`here this morning is that the technology embodied in Solenis'
`Dimension products has been very successful. If that technology
`hadn't been successful, Hydrite would not have invested the time
`and money required to challenge the patents. And it's the success
`of that technology, as demonstrated by Hydrite's investment in
`these proceedings, that objectively rebuts the very subjective
`allegations that the patent claimed somehow would have been
`obvious to a person of ordinary skill in the art.
`These IPRs beg a simple yet unanswered question.
`Why? More specifically, why would a person of ordinary skill in
`the art who significantly would not have had knowledge of the
`claimed invention already, why would they have selected the
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`Case IPR2015-01586, Patent 8,841,469 B2
`Case IPR2015-01592, Patent 8,962,059 B1
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`references upon which Hydrite has relied and why would they
`have modified those references’ teachings in the manner that has
`been proposed? The answer is that no one of ordinary skill who
`did not already have knowledge of the claimed inventions would
`have done that. In fact, it's only with the improper use of
`hindsight that the claimed inventions provide Hydrite the ability
`to piece together an argument based on these selected teachings
`of the references.
`If you listen to Hydrite, what we are here doing today is
`nothing more than an arts and crafts exercise. We have the
`claims and we cut the claims into sort of a jigsaw puzzle into their
`individual elements. And we go out in the prior art and we go
`find those elements no matter where they appear, no matter the
`context in which they appear, and we run back and we wedge
`them into the claim.
`JUDGE FRANKLIN: Is that what we are doing at least
`with respect to independent claim 1 of the '469 patent? My
`understanding is petitioner's argument was that we can look at
`Bonanno and because the claim is so broad or as they phrased it,
`overly broad, we can rely on that reference alone.
`MR. LUCCI: I understand that argument. There's two
`points I have on that, Your Honor. One is that even within the
`bounds of Bonanno there are many selections that need to be
`made, many modifications that need to be made. As we
`mentioned in our briefing, when you consider all the surfactants
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`Case IPR2015-01586, Patent 8,841,469 B2
`Case IPR2015-01592, Patent 8,962,059 B1
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`and blends of surfactants -- because Bonanno teaches blends,
`there's thousands upon thousands of choices that one would
`make.
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`JUDGE FRANKLIN: But what modifications would be
`required?
`MR. LUCCI: You would have to select one that --
`JUDGE FRANKLIN: Is that a modification?
`MR. LUCCI: Yes, it is a modification, Your Honor,
`because the teaching of Bonanno isn't directed to breaking an
`emulsion. That's the central theme. You see in petitioner's initial
`papers in the petitions this theme of one would want to break the
`emulsion and you would use ICI to do it. You see significantly in
`the reply brief how they back away from that. And it's no small
`measure because we pointed out the errors in that logic. In fact,
`the errors were largely adopted by Dr. Rockstraw during his
`deposition.
`And on the point you just made about Bonanno's
`teachings, it's interesting that Dr. Rockstraw said in his testimony
`that he himself would not rely upon Bonanno alone to make the
`selections that would be necessary to get to the claimed
`inventions. He said he would have to rely upon another teaching
`tool, his words, teaching tool such as ICI.
`JUDGE FRANKLIN: Are you referring to dependent
`claims or are you referring to the independent claims?
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`Case IPR2015-01586, Patent 8,841,469 B2
`Case IPR2015-01592, Patent 8,962,059 B1
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`MR. LUCCI: I'm referring to the independent claims
`and the dependent claims. The teaching of Bonanno is so broad
`that you would have to make selections to get to the claimed
`invention.
`JUDGE FRANKLIN: Would that be beyond the skill in
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`the art?
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`MR. LUCCI: I think -- I don't know that it would
`necessarily be beyond the skill in the art, Your Honor. It
`certainly is -- there are so many choices there that it's not
`something that would have been obvious to a person of ordinary
`skill in the art.
`In particular with Bonanno, I was going to talk about
`Bonanno later, but I'll discuss it a little bit here. Step back and
`look at -- well, let me say the broader concept, if I may. What we
`need to do -- and this is a difficult exercise because we've all been
`affected by the claim language. What we need to do is we need
`to step back in time and put ourselves in the shoes of a person of
`ordinary skill who is working in this field who didn't have that
`benefit. So we have to say to ourselves, if you didn't already
`know about the claim, what would you have done? Would you
`have picked up Bonanno? Would you have picked up Winsness?
`Would you have picked up ICI? And if you did pick them up --
`and it's our position, patent owner's position that you wouldn't
`have picked them up. But if you did pick them up, what would
`you have taken away from them in their entire teaching in
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`context? Because the context here is very, very important. It's
`easy to take a look at the elements in these references and wedge
`them into the claim. I think that's the case even for Bonanno and
`even for claim 1.
`So again, the context is very important. So let's talk a
`little bit about the context of Bonanno. Look at Bonanno's title.
`Bonanno's title is talking about -- I apologize I have been taken a
`little bit off track here. If you take a look at Bonanno, it's talking
`about, I believe, an apparatus for recovering -- it's an apparatus
`for recovering dry solids from aqueous solids mixtures. So if
`someone was working with corn stillage and they wanted to
`recover more oil, would they have picked up a document whose
`title is Apparatus For Recovering Dry Solids From Aqueous Solid
`Mixtures? No. That's the testimony of Dr. Kohl.
`Dr. Kohl, by the way, who has been working in this
`field for a very long time, nearly his entire career, we mention in
`our briefing how Dr. Rockstraw, for all the chemical engineering
`education that he has, does not have experience in this field. So
`it's interesting Dr. Rockstraw says -- counsel mentioned that there
`would have been a demand for oil. I think if you look at the
`testimony, Dr. Rockstraw is pretty clear, he really doesn't know
`what was going on in the industry.
`But Bonanno, again, you pick up a reference and it talks
`about recovering aqueous solids. So if you were seeking to
`recover oil, would you look at that? And look at the way it does
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`Case IPR2015-01586, Patent 8,841,469 B2
`Case IPR2015-01592, Patent 8,962,059 B1
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`that. What it does is it adds oil. So what they want to do is they
`have this aqueous mixture of solids that's wetted, and they
`eventually want to recover that. And the way
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