Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 51
`Entered: January 12, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`REACTIVE SURFACES LTD., LLP,
`Petitioner,
`v.
`TOYOTA MOTOR CORPORATION,
`Patent Owner.
`
`Case IPR2016-01462
`Patent 8,324,295 B2
`
`
`
`
`
`
`
`
`
`Before CHRISTOPHER M. KAISER, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`KAISER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 51
`Entered: January 12, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`REACTIVE SURFACES LTD., LLP,
`Petitioner,
`v.
`TOYOTA MOTOR CORPORATION,
`Patent Owner.
`
`Case IPR2016-01462
`Patent 8,324,295 B2
`
`
`
`
`
`
`
`
`
`Before CHRISTOPHER M. KAISER, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`KAISER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`IPR2016-01462
`Patent 8,324,295 B2
`
`INTRODUCTION
`
`A. Background
`Reactive Surfaces Ltd., LLP (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting an inter partes review of claims 1–27 of U.S. Patent No.
`8,324,295 B2 (Ex. 1001, “the ’295 patent”). Toyota Motor Corporation
`(“Patent Owner”) filed a Preliminary Response (Paper 10, “Prelim. Resp.”).
`On February 9, 2017, we instituted trial to review the patentability of claims
`1–9, 13–20, and 22–27. Paper 14 (“Inst. Dec.”); see Paper 16 (correcting
`identification of claims on which review was instituted).
`Subsequently, Patent Owner filed a Response (Paper 27 (“PO
`Resp.”)), Petitioner filed a Reply (Paper 35), and Patent Owner filed a Sur-
`Reply (Paper 40). Patent Owner filed Observations on Cross-Examination
`(Paper 42), to which Petitioner filed a Response (Paper 47). In addition,
`Patent Owner filed a motion to exclude certain evidence Petitioner
`submitted. Paper 41. Petitioner filed an opposition to the motion to exclude.
`Paper 46. Patent Owner filed a reply to the opposition. Paper 48.
`We have jurisdiction under 35 U.S.C. § 6, and we issue this Final
`Written Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. We
`conclude that Petitioner has established by a preponderance of the evidence
`that claims 1–6, 9, 23–25, and 27 of the ’295 patent are unpatentable. We
`also conclude that Petitioner has not established by a preponderance of the
`evidence that claims 7, 8, 13–20, 22, or 26 are unpatentable. In addition, we
`dismiss as moot Patent Owner’s Motion to Exclude.
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`B. Related Matters
`The parties have not identified any judicial or administrative matters
`that involve the ’295 patent or that are otherwise related to this case.1 Pet. 1;
`Paper 4, 1.
`
`C. The Instituted Grounds of Unpatentability
`We instituted review of claims 1–9, 13–20, and 22–27 of the ’295
`patent based on the following grounds:
`Statutory
`Basis
`Ground
`§ 103
`§ 103
`
`Challenged Claim(s)
`
`1, 2, 4, 6, 9, 23, 25, and 27
`3, 5, 7, 8, 13–17, 19, 20, 22,
`24, and 26
`18
`
`McDaniel ’8532
`McDaniel ’853 and
`Fritzsche3
`McDaniel ’853, Fritzsche,
`and McDaniel ’8114
`
`§ 103
`
`D. The ’295 Patent
`The ’295 patent is directed to “[p]rotein-polymer compositions and
`processes for their production.” Ex. 1001, at [57]. Specifically, these
`compositions “have improved resistance to ultraviolet light induced
`weathering and associated loss of enzyme activity.” Id. Coatings containing
`
`
`1 Patent Owner notes that the ’295 patent was the subject of Reactive
`Surfaces Ltd. LLP v. Toyota Motor Engineering & Manufacturing North
`America, Inc. et al., Case No. 1-13-CV-1098-LY (W.D. Tex.), and Reactive
`Surfaces Ltd. LLP v. Toyota Motor Corporation, Case No. 1:14-CV-1009-
`LY (W.D. Tex.), both of which have been dismissed. Pet. v; Paper 4, 1.
`2 McDaniel, US 2004/0109853 A1, published June 10, 2004 (Ex. 1007,
`“McDaniel ’853”).
`3 Fritzsche et al., WO 2008/000646 A1, published Jan. 3, 2008 (Ex. 1010,
`“Fritzsche”).
`4 McDaniel et al., US 2009/0238811 A1, published Sept. 24, 2009
`(Ex. 1005, “McDaniel ’811”).
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`Patent 8,324,295 B2
`enzymes may be used to decompose “biological stain material such as insect
`stains or bird droppings” that otherwise might “deeply diffuse into the
`subsurface of [the] coatings.” Id. at 1:16–58. Such coatings, “however, are
`subject to polymer degradation by weathering that the prior art attributes to
`photolysis, photooxidation, or other scission producing chemical reactions in
`the structure of the polymeric material itself.” Id. at 1:59–63. Accordingly,
`the ’295 patent provides compositions that have “improved enzyme stability
`to ultraviolet induced weathering” by including “a polymer resin, a cross-
`linker, a bioactive enzyme and at least two ultraviolet light stabilizers,”
`where “[a]t least one light stabilizer is a sterically hindered amine, and at
`least one light stabilizer is a UV absorber.” Id. at 2:14–19. In all claims of
`the ’295 patent, the “UV absorber is present at a concentration in excess of
`5% by weight.” Id. at 2:19–20; see id. at 23:35–26:7.
`
`E. Illustrative Claims
`We instituted trial on claims 1–9, 13–20, and 22–27. Inst. Dec. 29.
`Claims 1, 5, 13, 23, and 24 are independent. Ex. 1001, 23:35–26:7. Claims
`1, 13, and 23 are illustrative; they recite:
`
`1. A curable protein-polymer composition comprising:
`a polymer resin;
`a cross-linker;
`a bioactive enzyme; and
`at least two ultraviolet light stabilizers whereby at least
`one light stabilizer is a sterically hindered amine, and at
`least one light stabilizer is a UV absorber, said UV
`absorber present at a concentration in excess of 5% by
`weight.
`Id. at 23:35–42.
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`13. A process for preparing a UV stabilized protein-polymer
`composite material, comprising:
`providing an admixture of a polymer resin, a surfactant, a
`non-aqueous organic solvent, a sterically hindered amine,
`and a UV absorber, said UV absorber present at sufficient
`amounts to yield a final composition that is at least 5% by
`weight of said UV absorber;
`mixing an aqueous solution containing isolated bioactive
`enzymes with the admixture, wherein said aqueous
`solution is substantially free of surfactant, to produce an
`emulsion;
`and mixing the emulsion with a crosslinker to produce a
`curable UV stabilized protein-polymer composition.
`Id. at 24:16–28.
`
`23. A process of stabilizing enzyme activity in a protein-
`polymer curable composition against weathering from
`ultraviolet light comprising:
`adding to a protein-polymer composition wherein said
`protein is an enzyme, at least two ultraviolet light
`stabilizers whereby at least one light stabilizer is a
`sterically hindered amine, and at least one light stabilizer
`is a UV absorber, said UV absorber present at a
`concentration in excess of 5% by weight.
`Id. at 24:56–64.
`
`ANALYSIS
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144 (2016) (upholding
`the use of the broadest reasonable interpretation standard). Claim terms
`generally are given their ordinary and customary meaning, as would be
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`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). The parties propose constructions for four terms: “urethane bond,”
`“final composition,” “in excess of 5% by weight,” and “emulsion.” Pet. 12–
`14; PO Resp. 13–16; Reply 6–7; Paper 40, 1–3.
`
`1. “Urethane Bond”
`In our Institution Decision, we construed “urethane bond” as “a
`chemical bond formed between hydroxyl (−OH) and isocyanate (−NCO)
`crosslinking moieties to form the ‘urethane’ (−NH−COO−) chemical
`structure.” Inst. Dec. 6–7. Patent Owner argues that we should continue to
`use that interpretation. PO Resp. 13. Although Petitioner argues in the
`Petition that “urethane bond” should be interpreted as “the chemical bond
`inherently formed between hydroxyl (OH) and isocyanate (NCO)
`crosslinking moieties to form the ‘urethane’ (-NH-COO-) chemical
`structure,” Pet. 12–13, we noted in the Institution Decision that Petitioner
`did not provide sufficient reason to adopt a construction characterizing the
`“urethane bond” as “inherently formed.” Inst. Dec. 6–7. Petitioner does not
`address this issue in the Reply. Reply 6–7. Accordingly, we maintain the
`construction we adopted in the Institution Decision, and we interpret
`“urethane bond” as “a chemical bond formed between hydroxyl (−OH) and
`isocyanate (−NCO) crosslinking moieties to form the ‘urethane’
`(−NH−COO−) chemical structure.”
`
`2. “Final Composition”
`In our Institution Decision, we construed “final composition” as “the
`ingredient composition of the protein-polymer composition after the
`evaporation of volatile components such as non-aqueous organic solvent and
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`Patent 8,324,295 B2
`water.” Inst. Dec. 7. Patent Owner argues that we should continue to use
`that interpretation. PO Resp. 13. Although Petitioner argues in the Petition
`that “final composition” should be interpreted as “the ingredient composition
`of the protein-polymer composition after the evaporation of volatile
`components such as non-aqueous organic solvent and water, without regard
`to any possible crosslinking of any of the components,” Pet. 13–14, we
`noted in the Institution Decision that Petitioner did not provide sufficient
`explanation of how the hypothetical crosslinking of the composition
`components might affect the final weight of the composition. Inst. Dec. 7.
`Petitioner does not address this issue in the Reply. Reply 6–7. Accordingly,
`we maintain the construction we adopted in the Institution Decision, and we
`interpret “final composition” as “the ingredient composition of the protein-
`polymer composition after the evaporation of volatile components such as
`non-aqueous organic solvent and water.”
`
`3. “In Excess of 5% by Weight”
`Patent Owner argues that “in excess of 5% by weight” should be
`interpreted as “in excess of 5% by final dry weight of the composition.” PO
`Resp. 14–16. Petitioner does not dispute this proposed construction. Reply
`6–7. Moreover, Patent Owner’s proposed construction is consistent with the
`construction of “final composition” as “the ingredient composition of the
`protein-polymer composition after the evaporation of volatile components
`such as non-aqueous organic solvent and water.” Accordingly, we adopt
`Patent Owner’s proposed construction and interpret “in excess of 5% by
`weight” as “in excess of 5% by final dry weight of the composition.”
`
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`4. “Emulsion”
`The term “emulsion” appears in independent claim 13, in the
`limitation reciting the step of “mixing an aqueous solution containing
`isolated bioactive enzymes with the admixture [of polymer resin, surfactant,
`non-aqueous organic solvent, sterically hindered amine, and UV absorber],
`wherein said aqueous solution is substantially free of surfactant, to produce
`an emulsion.” Ex. 1001, 24:16–28. Petitioner argues that the term
`“emulsion” should be construed as “the composition permanently or
`temporarily formed in response to mixing the admixture with the aqueous
`solution.” Reply 6–7. Patent Owner argues that Petitioner’s proposed
`construction “would effectively read the term ‘emulsion’ out of the claim.”
`Paper 40, 1. We agree. Claim 13 requires mixing an aqueous solution with
`an admixture containing a non-aqueous organic solvent “to produce an
`emulsion.” Construing “emulsion” as Petitioner proposes, to include any
`composition obtained by mixing those two components, would render
`superfluous the additional requirement of claim 13 to produce an emulsion.
`“A claim construction that gives meaning to all the terms of the claim is
`preferred over one that does not do so.” Merck & Co., Inc. v. Teva Pharm.
`USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005).
`Petitioner argues that the ’295 patent defines “emulsion” to have a
`meaning other than its ordinary meaning. Tr. 39:14–22 (acknowledging that
`the Board must “give the term its ordinary meaning” unless the patent
`“redefines it”). Specifically, Petitioner directs us to the use of the term
`“solution” in the ’295 patent to describe the composition resulting from
`mixing a non-aqueous solution with an aqueous enzyme solution. Id. at
`37:8–38:5 (discussing Ex. 1001, 19:45–50). According to Petitioner,
`
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`IPR2016-01462
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`because “solution” typically applies only to a one-phase system, and because
`the system described by the word “solution” in the ’295 patent is a two-
`phase system, we must interpret the disclosure of the ’295 patent as
`redefining “solution” to cover a broader range of systems than its ordinary
`meaning would indicate. Id. at 38:6–16. Further, Petitioner argues that this
`redefinition also operates as a redefinition of “emulsion” to cover a broader
`range of systems than its ordinary meaning would indicate. Id. at 39:23–
`40:11. We are not persuaded by this argument.
`An inventor may define specific terms used to describe an invention,
`but must do so “with reasonable clarity, deliberateness, and precision” and
`must “‘set out his uncommon definition in some manner within the patent
`disclosure’ so as to give one of ordinary skill in the art notice of the change”
`in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting
`Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387–88 (Fed. Cir.
`1992)). Here, if there is a definition of any term in the disclosure of the ’295
`patent, it is of the term “solution,” not the term “emulsion,” because
`“solution” is the only term used inconsistently with its ordinary meaning.
`Ex. 1001, 19:45–50.
`Moreover, even assuming that the use of “solution” in the ’295 patent
`could be seen as an attempt to define “emulsion,” that use does not amount
`to a “reasonabl[y] cl[ear], deliberate[], and precis[e]” definition. Paulsen,
`30 F.3d at 1480. First, Petitioner does not explain why we should interpret
`the use of “solution” to describe a two-phase system rather than the typical
`one-phase system, as an attempted definition, rather than as a simple drafting
`error in the patent disclosure. Second, even if it were clear that the language
`in question amounted to an attempt to define “solution,” Petitioner does not
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`explain what the boundaries of the new definition would be. Could
`“solution” be applied to all two-phase systems, only to all liquid-liquid two-
`phase systems, only to liquid-liquid two-phase systems in which one phase
`is aqueous and the other is non-aqueous, or to some other system? Third,
`even if we could discern a clear definition of “solution” from the disclosure
`of the ’295 patent, Petitioner does not explain how the scope of that
`definition would inform the scope of “emulsion,” the term of interest here.
`Accordingly, we are not persuaded that the ’295 patent redefines “emulsion”
`in the way that Petitioner argues it does.
`Patent Owner argues that “‘emulsion’ should be construed as ‘a stable
`two-phased system in which said aqueous solution is dispersed in the
`admixture in the form of droplets.’” Paper 40, 1 (emphasis removed). There
`is evidence in the record to support this interpretation. First, “[i]t is well
`known . . . that emulsions are a class of disperse[d] systems that include two
`immiscible liquid phases” in which droplets of “the disperse[d] phase” “are
`dispersed in . . . the continuous phase.” Ex. 2029 ¶ 116. Second, not all
`mixtures of immiscible liquid phases necessarily are emulsions, because
`there are some factors that influence whether an emulsion will or will not
`form. Id. ¶ 119 (Patent Owner’s declarant, Jonathan Dordick, Ph.D.,
`identifying several factors influencing emulsion formation); Ex. 1024 ¶ 33
`(Petitioner’s declarant, Dr. Douglas M. Lamb, agreeing that the “criteria . . .
`to obtain a stable emulsion are well known in the art”). Third, both parties’
`experts agree that the “emulsion” recited in claim 13 of the ’295 patent
`comprises an aqueous dispersed phase and an organic continuous phase.
`Ex. 2029 ¶ 108 (Dr. Dordick’s testimony that “this process includes the
`formation of an emulsion that contains bioactive proteins in an aqueous
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`IPR2016-01462
`Patent 8,324,295 B2
`solution dispersed in a continuous phase containing solvent-borne polymer
`resins”); Ex. 1024 ¶ 26 (Dr. Lamb’s testimony that “the ‘emulsion’ of the
`’295 Patent is a ‘water in oil’ emulsion”). Accordingly, we interpret
`“emulsion” as “a two-phase system in which droplets of a liquid aqueous
`phase are dispersed in a continuous liquid phase that is immiscible with the
`aqueous phase.”
`
`B. Asserted Obviousness over McDaniel ’853
`We instituted trial to determine whether the subject matter of claims 1,
`2, 4, 6, 9, 23, 25, and 27 would have been obvious to a person of ordinary
`skill in the art given the teachings of McDaniel ’853. Inst. Dec. 8–13, 29;
`see Pet. 21, 45–63.
`
`1. McDaniel ’853
`McDaniel ’853 “relates to proteins as . . . components of coatings.”
`Ex. 1007 ¶ 3. The reference teaches a coating made of “an acrylic resin and
`an epoxide, a polyurethane comprising an isocyanate moiety, an amino resin,
`or a combination thereof.” Id. ¶ 63. It also teaches crosslinking “an acrylic
`resin comprising . . . a hydroxyl moiety . . . with a[] urethane resin.” Id.
`¶ 512. The coating that McDaniel ’853 teaches “comprises a bioactive
`molecule such as an enzyme composition that retains activity after being
`admixed with paint” and “still retains activity after the paint is applied to a
`surface, [rendering] the surface bioactive.” Id. ¶ 23. In addition,
`McDaniel ’853 discloses adding to its coating “0.001% to 20.0% by weight”
`of an additive, which can be “a light stabilizer.” Id. ¶ 82. The light
`stabilizer may be “a UV absorber, a radical scavenger, or a combination
`thereof.” Id. ¶¶ 82, 766. The radical scavenger may be “a sterically
`hindered amine.” Id. ¶ 767.
`
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`2. Analysis
`Petitioner argues that McDaniel ’853 teaches or suggests all
`limitations of claims 1, 2, 4, 6, 9, 23, 25, and 27. Pet. 45–63. Patent Owner
`argues that McDaniel ’853 does not teach or suggest the limitation “said UV
`absorber present at a concentration in excess of 5% by weight,” a limitation
`of every independent claim. PO Resp. 19–47.
`
`a. Claim 1
`Petitioner argues, and Patent Owner does not dispute, that
`McDaniel ’853 teaches or suggests the following limitations of claim 1: a
`“curable protein-polymer composition comprising a polymer resin; a cross-
`linker; a bioactive enzyme; and at least two ultraviolet light stabilizers
`whereby at least one light stabilizer is a sterically hindered amine, and at
`least one light stabilizer is a UV absorber.” Pet. 46–47; PO Resp. 19–47.
`We agree with Petitioner. McDaniel ’853 teaches a composition comprising
`a polymer resin, Ex. 1007 ¶¶ 63, 512, a cross-linker, id. ¶ 512, a bioactive
`enzyme, id. ¶ 23, a sterically hindered amine light stabilizer, id. ¶¶ 82, 766,
`767, and a UV light absorber, id. ¶¶ 82, 766.
`The parties disagree, however, about whether McDaniel ’853 teaches
`or suggests the UV absorber being “present at a concentration in excess of
`5% by weight.” Pet. 47; PO Resp. 19–47. Petitioner’s case rests on
`paragraph 82 of McDaniel ’853. Pet. 47. Paragraph 82 states that “the
`coating comprises an additive.” Ex. 1007 ¶ 82. It also states that, “[i]n
`some aspects, the additive comprises 0.001% to 20.0% by weight, including
`all intermediate ranges and combinations thereof, of the coating.” Id.
`Finally, it states that, “[i]n particular aspects, the additive comprises a light
`stabilizer” and that, “[i]n specific facets, the light stabilizer comprises a UV
`
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`absorber.” Id. Petitioner argues that this discloses a coating with 0.001% to
`20.0% by weight of a UV absorber. Pet. 47.
`Patent Owner argues that this disclosure does not reasonably suggest a
`range of compositions that include 0.001% to 20.0% by weight of a UV
`absorber. PO Resp. 20–29. Instead, Patent Owner argues that paragraph 82
`“at most suggests that a broad 0.001–20.0% range might be suitable for
`some additives in the additive laundry list,” without specifying the additives
`to which this range applies. Id. at 21. We do not agree. Paragraph 82
`teaches that “an additive” may “comprise[] 0.001% to 20.0% by weight . . .
`of the coating” and that “the additive [may] comprise[] a light stabilizer”
`that may “comprise[] a UV absorber.” Ex. 1007 ¶ 82. Although paragraph
`82 discloses several possible “additives,” it contains no language limiting its
`concentration disclosure to any subset of those additives. Id. Accordingly,
`we agree with Petitioner that paragraph 82 reasonably would have suggested
`to a person of ordinary skill in the art that a coating could contain 0.001% to
`20.0% by weight of a UV absorber. This range overlaps the claimed range
`of “present at a concentration in excess of 5% by weight.”
`Patent Owner also argues that, even if McDaniel ’853 discloses a
`range of UV absorber concentrations that overlaps the claimed range, this
`overlap is insufficient to teach the claimed range without additional evidence
`that a person of ordinary skill in the art would have optimized the UV
`absorber concentration. PO Resp. 20, 29–30 (citing In re Applied Materials,
`Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012)); Tr. 27:16–23. We do not agree
`with Patent Owner’s reading of Applied Materials. Applied Materials itself
`states that the mere existence of overlap between a prior-art range and the
`claimed range “provides sufficient motivation to optimize the ranges.”
`
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`Applied Materials, 692 F.3d at 1295 (citing In re Peterson, 315 F.3d 1325,
`1330 (Fed. Cir. 2003)). Thus, there is no need for additional evidence of a
`motivation to optimize the variable in question, as long as there is overlap
`between the prior-art range and the claimed range. Instead, “[a] prima facie
`case of obviousness typically exists when the ranges of a claimed
`composition overlap the ranges disclosed in the prior art.” Peterson, 315
`F.3d at 1329. Although evidence that the claimed range “is critical” may
`constitute strong evidence of nonobviousness, Patent Owner does not direct
`us to any evidence of criticality, such as evidence of unexpected results, in
`the present case. In re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997).
`Accordingly, given the overlap between the prior-art range of 0.001% to
`20.0% and the claimed range of “present at a concentration in excess of 5%
`by weight,” we are not persuaded that Applied Materials requires any
`additional evidence, such as evidence that the UV absorber concentration
`was known to be a result-effective variable that the person of ordinary skill
`in the art would have been motivated to optimize, in order to prove the
`obviousness of the claimed range. Further, even if Patent Owner’s argument
`were a correct statement of the applicable law, such that evidence of a
`reason to optimize a prior-art range were needed to prove the obviousness of
`an overlapping range, the record evidence demonstrates that the
`concentration of UV absorber was a known result-effective variable.
`Ex. 1015, 2 (“The amount of [UV absorber] required for optimum
`performance should be determined in trials covering a concentration
`range.”).
`Next, Patent Owner argues that the person of ordinary skill in the art
`would not have understood paragraph 82 of McDaniel ’853 as disclosing the
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`use of up to 20.0% by weight of each additive listed, because some additives
`would exhibit detrimental effects at levels below 20 percent. PO Resp. 22–
`27 (citing Ex. 2029 ¶¶ 51–56). The evidence Patent Owner cites in support
`of this argument establishes that some of the categories of additives listed in
`paragraph 82 do exhibit detrimental effects at relatively low concentrations.
`These categories include “preservatives, wetting agents, dispersants,
`catalysts, anti-skinning agents, and dehydrators.” Id. at 23 (citing Ex. 2029
`¶ 54). They also include “defoamers, corrosion inhibitors, and electrical
`additives.” Id. (citing Ex. 2029 ¶ 54). But none of the evidence cited relates
`to detrimental effects that UV absorbers exhibit at concentrations below 20
`percent. Ex. 2029 ¶¶ 51–56. Patent Owner’s declarant, Dr. Dordick,
`testifies that “many of” the categories of additives listed in paragraph 82 of
`McDaniel ’853 either “are not compatible with biological molecules” or
`have compatibility that “is limited to very low additive concentrations.” Id.
`¶ 51. He also testifies that among these categories of additives are “light
`stabilizers.” Id. (emphasis removed). But, although he testifies that the
`inclusion of “light stabilizers” in these categories is “discussed in detail
`below,” id., Dr. Dordick provides no further explanation of the limited
`compatibility of light stabilizers, such as UV absorbers. Instead, Dr.
`Dordick’s testimony regarding limited compatibility with enzymes focuses
`on preservatives, wetting agents, dispersants, defoamers, catalysts, anti-
`skinning agents, corrosion inhibitors, dehydrators, and electrical additives.
`Id. ¶ 54. Accordingly, Dr. Dordick’s opinion that UV absorbers have
`limited compatibility with biological molecules is conclusory and
`unsupported. “Expert testimony that does not disclose the underlying facts
`or data on which the opinion is based is entitled to little or no weight.”
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`37 C.F.R. § 42.65(a). Thus, Patent Owner does not direct us to evidence
`sufficient to conclude that the compatibility of UV absorbers and biological
`coating components is so limited that a person of ordinary skill in the art
`would have interpreted the “0.001% to 20.0%” of paragraph 82 as not
`applying to the “UV absorber” of paragraph 82.
`Finally, Patent Owner argues that, even if a person of ordinary skill in
`the art would have interpreted paragraph 82 as disclosing a range of UV
`absorber concentrations that overlaps the claimed range, and even if this
`overlap were sufficient to teach or suggest the claimed range, Petitioner has
`not demonstrated that a person of ordinary skill in the art would have had a
`reasonable expectation of success in increasing the level of UV absorber
`above five percent by weight. PO Resp. 39–42. We do not find this
`argument persuasive. The record evidence demonstrates that a person of
`ordinary skill in the art would have undertaken experiments to determine the
`concentration of UV absorber needed to provide optimum performance.
`Ex. 1015, 2 (“The amount of [UV absorber] required for optimum
`performance should be determined in trials covering a concentration
`range.”); Ex. 1022, 132:24–133:10 (a “coatings formulation expert” “would
`experiment within a range” “to determine the appropriate concentration”).
`Further, the evidence shows it was known in the prior art that UV absorbers
`could be used in amounts greater than 5% by weight, although such use was
`“not preferred.” Ex. 2016, 5:41–50. “[A]ll disclosures of the prior art,
`including unpreferred embodiments, must be considered” in an obviousness
`anlaysis. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
`1989) (internal quotation marks and citation omitted). Accordingly, we are
`persuaded that there is sufficient evidence to show that a person of ordinary
`
`16
`
`
`
`IPR2016-01462
`Patent 8,324,295 B2
`skill in the art would have interpreted the disclosure of paragraph 82 of
`McDaniel ’853 as teaching or suggesting the use of 0.001% to 20.0% by
`weight of UV absorber and that there was a reasonable expectation of
`succeeding in manufacturing a coating with a UV absorber concentration
`falling within the portion of that range exceeding five percent by weight.
`For these reasons, we determine that Petitioner has shown by a
`preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C.
`§ 103 as obvious over McDaniel ’853.
`
`b. Claim 2
`Claim 2 of the ’295 patent depends from claim 1 and adds a limitation
`requiring that the polymer resin be “a hydroxyl-functionalized acrylate
`resin.” Ex. 1001, 23:43-44. Petitioner argues that McDaniel ’853 teaches
`this limitation, and Patent Owner does not dispute this. Pet. 54; PO Resp.
`19–60. McDaniel teaches that the resin may be “an acrylic resin [that]
`comprises a hydroxyl moiety such as a hydroxymethyl acrylate (‘HEA’), a
`hydroxymethyl methacrylate (‘HEMA’), or a combination thereof.”
`Ex. 1007 ¶ 510. Petitioner has shown by a preponderance of the evidence
`that claim 2 is unpatentable under 35 U.S.C. § 103 as obvious over
`McDaniel ’853.
`
`c. Claim 4
`Claim 4 depends from claim 1 and requires that “said polymer resin
`and said cross-linker are covalently associated by a urethane bond.”
`Ex. 1001, 23:47–49. As discussed above, a “urethane bond” is “a chemical
`bond formed between hydroxyl (−OH) and isocyanate (−NCO) crosslinking
`moieties to form the ‘urethane’ (−NH−COO−) chemical structure.”
`Petitioner argues that McDaniel ’853 teaches or suggests this limitation, and
`
`17
`
`
`
`IPR2016-01462
`Patent 8,324,295 B2
`Patent Owner does not dispute this. Pet. 55–56; PO Resp. 19–60. McDaniel
`’853 teaches a “urethane binder” that is “prepared from compounds that
`comprise an isocyanate moiety.” Ex. 1007 ¶ 448. It also teaches that such
`an “isocyanate moiety is highly reactive (e.g., crosslinkable) with a moiety
`comprising a chemically reactive hydrogen,” such as “a hydroxyl moiety.”
`Id. Petitioner’s declarant, Dr. Lamb, testifies that the reaction of hydroxyl
`and isocyanate moieties creates a urethane bond. Ex. 1011 ¶ 99. Thus, we
`agree that the disclosure in McDaniel ’853 of isocyanate-containing cross-
`linkers and hydroxyl-containing polymer resins, together with the disclosure
`that these moieties are “highly reactive” and “crosslinkable,” teaches or
`suggests the formation of urethane bonds between the resins and cross-
`linkers. Accordingly, Petitioner has shown by a preponderance of the
`evidence that claim 4 is unpatentable under 35 U.S.C. § 103 as obvious over
`McDaniel ’853.
`
`d. Claim 6
`Claim 6 depends from claim 1 and adds a limitation requiring the
`“sterically hindered amine [to be] present at 1% by weight.” Ex. 1001,
`23:61–62. Petitioner argues, and Patent Owner does not dispute, that
`McDaniel ’853 teaches or suggests this limitation. Pet. 56; PO Resp. 19–60.
`As discussed above, McDaniel ’853 teaches that an additive may be present
`in a coating in an amount between 0.001% and 20.0% by weight. Ex. 1007
`¶ 82; see supra Analysis § B.2.a. It also teaches that this additive may be “a
`radical scavenger,” id., which may be “a sterically hindered amine,” id.
`¶ 767. The range of 0.001% to 20.0% encompasses the claimed value of
`1%. Accordingly, Petitioner has shown by a preponderance of the evidence
`
`18
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`IPR2016-01462
`Patent 8,324,295 B2
`that claim 6 is unpatentable under 35 U.S.C. § 103 as obvious over
`McDaniel ’853.
`
`e. Claim 9
`Claim 9 depends from claim 1 and adds a limitation narrowing the
`range of UV absorber content from “in excess of 5% by weight” to “8% by
`weight or greater.” Ex. 1001, 24:1–2. Petitioner argues that McDaniel ’853
`teaches or suggests this limitation. Pet. 59. Patent Owner argues, as
`discussed above, that McDaniel ’853 does not teach or suggest even the “in
`excess of 5% by weight” limitation of claim 1, much less the narrower “8%
`by weight or greater” limitation of claim 9. PO Resp. 19–47. As discussed
`above with respect to claim 1, McDaniel ’853 teaches a range of UV
`absorber concentrations between 0.001% and 20.0% by weight, which
`overlaps the “8% by weight or greater” range of claim 9. See supra Analysis
`§ B.2.a. Accordingly, for the reasons discussed above with respect to claim
`1, we determine that Petitioner has shown by a preponderance of the
`evidence that claim 9 is unpatentable under 35 U.S.C. § 103 as obvious over
`McDaniel ’853.
`
`f. Claim 23
`Claim 23 is an independent claim that recites the process steps of
`“adding to a protein-polymer composition wherein said protein is an
`enzyme, at least two ultraviolet light stabilizers whereby at least one light
`stabilizer is a sterically hindered amine, and at least one light stabilizer is a
`UV absorber, said UV absorber present at a concentrat
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