Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: January 22, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNITED LABORATORIES INTERNATIONAL, LLC,
`Petitioner,
`v.
`REFINED TECHNOLOGIES, INC.,
`Patent Owner.
`
`IPR2019-01544
`Patent 9,017,488 B2
`
`
`
`
`
`
`
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`ROESEL, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`571-272-7822
`
`Paper 9
`Entered: January 22, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNITED LABORATORIES INTERNATIONAL, LLC,
`Petitioner,
`v.
`REFINED TECHNOLOGIES, INC.,
`Patent Owner.
`
`IPR2019-01544
`Patent 9,017,488 B2
`
`
`
`
`
`
`
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`ROESEL, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`IPR2019-01544
`Patent 9,017,488 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`United Laboratories International, LLC (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) seeking inter partes review of claims 1–20 (the “challenged
`claims”) of U.S. Patent No. 9,017,488 B2 (“the ’488 Patent”). Refined
`Technologies, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314 (2012); 37 C.F.R. § 42.4(a) (2019). An inter
`partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a) (2012). Applying
`this standard, and upon consideration of the information presented in the
`Petition and the Preliminary Response, we determine Petitioner has not
`established a reasonable likelihood that it would prevail with respect to at
`least one of the claims challenged in the Petition. Therefore, institution of
`an inter partes review is denied.
`
`B. Real Parties in Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner identifies United
`Laboratories International, LLC as the real party in interest. Paper 8, 2
`(Updated Mandatory Notices). Patent Owner identifies Refined
`Technologies, Inc. as the real party in interest. Paper 6, 1 (Updated
`Mandatory Notices).
`
`C. Related Matters
`Pursuant to 37 C.F.R. § 42.8(b)(2), the parties identify the following
`civil action involving the ’488 Patent: Refined Technologies, Inc. v. United
`
`2
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`IPR2019-01544
`Patent 9,017,488 B2
`Laboratories International, LLC, No. 4:19-cv-4676 (S.D. Tex.). Prelim.
`Resp. 1; Paper 8, 2. The parties also identify IPR2019-01540 in which
`Petitioner challenges U.S. Patent No. 8,480,812 B2 (“the ’812 Patent”).
`Paper 6, 1; Paper 8, 2. The ’488 Patent claims the benefit as a continuation-
`in-part of the application that issued as the ’812 Patent. Ex. 1001, code (63).
`
`D. The ’488 Patent
`The ’488 Patent pertains to the operation and maintenance of chemical
`plants and refineries. Ex. 1001, 1:8–9. The ’488 Patent discloses a process
`for cleaning the internal surfaces of catalytic reactors, media-packed vessels,
`and other processing equipment by removing hydrocarbon contaminants and
`noxious gases from such surfaces. Id. at codes (54), (57), 1:9–13; see also
`id. at 3:25–26, 7:2–9, Fig. 1 (describing and illustrating equipment of a
`“typical process system” that may be cleaned by the disclosed process). The
`process is carried out in the vapor phase without using steam. Id. at
`code (57). A non-aqueous cleaning agent containing one or more solvents is
`injected into contaminated equipment, along with a carrier gas, in the form
`of a cleaning vapor. Id. at code (57), 3:30–34. According to the ’488
`Patent, “[t]he carrier gas volatilizes the solvent and delivers it throughout the
`internal spaces and surface areas of the equipment to be cleaned, allowing
`the solvent to quickly dissolve organic residues from the vessel and carry
`away noxious gases.” Id. at 3:34–38.
`The ’488 Patent discloses that the cleaning agent may be an organic
`solvent, such as terpenes. Id. at code (57), 5:43–55. The carrier gas may be
`nitrogen, hydrogen, or a dry gas having the chemical formula CnH2n+2, where
`n is an integer greater than 0 but less than 6, for example, ethane or methane.
`Id. at 4:7–16. According to the ’488 Patent, the disclosed process may be
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`Patent 9,017,488 B2
`used to remove organic contaminants, such as “crude oil and its derivatives
`produced through the refining process, or hydrocarbons,” and noxious gases,
`such as “hydrogen sulfide, benzene, carbon monoxide, and light end
`hydrocarbons.” Id. at 4:17–25.
`
`E. Illustrative Claims
`The ’488 Patent includes 20 claims, all of which are challenged in the
`Petition. Claim 1 is the sole independent claim and is reproduced below,
`with bracketed designations added to correspond with Petitioner’s
`identification of claim elements:
`1. [preamble] A method for removing a contaminant from
`a process system, comprising the steps of:
`[1.1] (i) providing a water-free carrier gas source;
`[1.2] (ii) providing a non-aqueous solvent source;
`[1.3] (iii) volatilizing non-aqueous solvent from the non-
`aqueous solvent source in water-free carrier gas from the carrier
`gas source and delivering the carrier gas containing the
`volatilized non-aqueous solvent to the process system and
`[1.4] (iv) removing said contaminant out of said system,
`wherein a substantial amount of said contaminant is dissolved in
`said solvent in a vapor or liquid state as it is being removed from
`said system.
`Ex. 1001, 9:38–50; see also Pet. 21–26 (identifying claim elements).
`
`F. Asserted Grounds and Evidence
`Petitioner challenges claims 1–20 based on the following grounds of
`unpatentability:
`35 U.S.C. §
`Claims Challenged
`103(a)
`1–6, 9–13
`
`1 Ex. 1003 (Foutsitzis et al., US 5,035,792, issued July 30, 1991).
`2 Ex. 1004 (Allen, US 4,008,764, issued Feb. 22, 1977).
`
`References
`Foutsitzis,1 Allen2
`
`4
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`Patent 9,017,488 B2
`References
`35 U.S.C. §
`Claims Challenged
`Foutsitzis, Allen, Jansen3
`103(a)
`7, 8, 14–20
`Petitioner relies on a Declaration of Benjamin A. Wilhite, Ph.D. Ex. 1002.
`
`II. ANALYSIS
`
`A. Legal Standards
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such
`that the subject matter, as a whole, would have been obvious at the time
`the invention was made to a person having ordinary skill in the art to
`which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved based on
`underlying factual determinations including: (1) the scope and content of the
`prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
`(Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes
`review petitions to identify “with particularity . . . the evidence that
`supports the grounds for the challenge to each claim”)); see also
`37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to
`identify how the challenged claim is to be construed and where each
`
`
`3 Ex. 1005 (Jansen et al., US 6,936,112 B2, issued Aug. 30, 2005).
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`Patent 9,017,488 B2
`element of the claim is found in the prior art patents or printed
`publications relied upon). Petitioner cannot satisfy its burden of proving
`obviousness by employing “mere conclusory statements.” In re Magnum
`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`
`B. Level of Ordinary Skill in the Art
`Relying on Dr. Wilhite’s testimony, Petitioner contends that the
`relevant field of the ’488 Patent is “stripping (or removing) hydrocarbons
`from porous media using a vapor flow comprised of volatized solvent(s)
`and/or carrier gas.” Pet. 13 (quoting Ex. 1002 ¶ 22). Petitioner contends
`that a person of ordinary skill in the art (“POSA”) would have had at least a
`bachelor of science degree in chemical, mechanical, or petroleum
`engineering and at least three to five years of experience in one or more of
`these industries via consulting, research, or industrial employment. Id.
`(citing Ex. 1002 ¶ 23).
`Patent Owner criticizes Petitioner’s characterizations of the relevant
`field and the level of ordinary skill in the art as overly broad. Prelim.
`Resp. 16–19. Patent Owner contends that the relevant field is “the
`decontamination of refinery or chemical plant equipment and materials, like
`reactor catalysts.” Id. at 17. Patent Owner further contends that “[t]he ’488
`Patent teaches chemical processes for decontaminating refinery or chemical
`plant equipment, which is clearly in the field of chemical engineering (not
`mechanical or petroleum engineering).” Id. at 19.
`We agree with Patent Owner that Petitioner’s characterization of the
`relevant field is overly broad. The ’488 Patent defines the relevant field as
`“the operation and maintenance of chemical plants and refineries.”
`Ex. 1001, 1:8–9. We do not agree, however, that a POSA is required to have
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`a degree in chemical engineering, as opposed to mechanical or petroleum
`engineering. In our view, a person may attain the requisite knowledge and
`experience by working or otherwise being engaged in the relevant field,
`even if his undergraduate degree is in mechanical or petroleum engineering,
`rather than chemical engineering.
`Accordingly, we find that a POSA would have had at least a bachelor
`of science degree in chemical, mechanical, or petroleum engineering and at
`least three to five years of experience in the operation or maintenance of
`chemical plants or refineries. In our view, however, the level of ordinary
`skill in the art is not outcome determinative, and Petitioner does not meet the
`threshold for institution of inter partes review even if we accepted
`Petitioner’s definition of a POSA.
`
`C. Claim Construction
`In an inter partes review, we apply the same claim construction
`standard as would be used by a district court to construe a claim in a civil
`action involving the validity or infringement of a patent. 37 C.F.R.
`§ 42.100(b) (2019). Under that standard, claim terms are given their
`ordinary and customary meaning, as would have been understood by a
`person of ordinary skill in the art at the time of the invention, in light of the
`language of the claims, the specification, and the prosecution history of
`record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir.
`2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362,
`1365–66 (Fed. Cir. 2012).
`Petitioner proposes constructions for a number of claim terms.
`Pet. 14–19. Patent Owner contends that none of Petitioner’s terms need to
`be construed. Prelim. Resp. 9. We agree with Patent Owner and determine
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`Patent 9,017,488 B2
`that no claim term requires express construction for purposes of this
`Decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms
`‘that are in controversy, and only to the extent necessary to resolve the
`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`D. Overview of the Asserted References
`We summarize the relevant disclosures of Foutsitzis and Allen below.
`For purposes of this Decision, it is not necessary to provide an overview of
`Jansen.
`
`1. Foutsitzis (Ex. 1003)
`Foutsitzis discloses a method of purging sulfur contaminants from a
`catalytic hydrocarbon conversion system using a hydrocarbon solvent.
`Ex. 1003, code (57), 2:62–3:10, 3:19–25. According to Foutsitzis, the
`conversion system is an integrated processing unit that includes equipment,
`catalyst, sorbents, and chemicals used in the processing of hydrocarbon
`feedstock. Id. at 3:26–29. Foutsitzis discloses that “[t]he equipment
`includes reactors, reactor internals for distributing feed and containing
`catalyst, other vessels, heaters, heat exchangers, conduits, valves, pumps,
`compressors[,] and associated components.” Id. at 3:29–34.
`Foutsitzis describes the contaminant-purging method as follows:
`[T]he contaminants are purged from the conversion
`system by introducing a hydrocarbon solvent into the system at
`contaminant-purging conditions. . . . The conversion system
`may be loaded with solvent more than once, withdrawing a load
`of solvent containing purged contaminants and
`loading
`contaminant-free solvent in order to purge the contaminants from
`the system more completely. The solvent preferably is circulated
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`Patent 9,017,488 B2
`through the system such as by pumping, in order to obtain more
`effective contact with contaminated equipment surfaces. In an
`alternative embodiment, inert gases are circulated along with the
`solvent to improve contact between solvent and equipment. The
`gases are inert to reaction with the solvent or contaminant,
`nitrogen and hydrogen being preferred gases and nitrogen being
`especially preferred.
`Ex. 1003, 4:47–68.
`According to Foutsitzis, the solvent used for contaminant purging
`“comprises, and preferably consists essentially of, hydrocarbons.” Ex. 1003,
`5:6–7. Foutsitzis discloses that a “solvent comprising principally aromatic
`hydrocarbons” is effective in the decontamination process and an “aromatic
`concentrate” comprising “toluene, C8 aromatics and/or C9+ aromatics” is
`particularly effective. Id. at 5:11–18. According to Foutsitzis, “[s]olvent
`withdrawn from the system which contains purged contaminants may be
`processed in conventional refining equipment, such as by distillation, to
`separate the contaminants.” Id. at 5:18–22.
`
`2. Allen (Ex. 1004)
`Allen discloses a method for recovering viscous petroleum from
`subterranean formations such as tar sand deposits by injecting into the
`formation a gaseous mixture of a carrier gas and a solvent. Ex. 1004,
`code (57), 1:9–12. According to Allen, “[t]he gaseous mixture is formed by
`contacting a normally liquid solvent with a carrier gas such as nitrogen and
`introducing the carrier gas having solvent vaporized therein into the
`formation.” Id. at code (57). Allen discloses that “[r]ecovery of petroleum
`and solvent may be from the same well as is used for injection or from a
`remotely located well.” Id.; see also id. at 3:25–28, 4:6–9, drawing
`
`9
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`Patent 9,017,488 B2
`(illustrating viscous petroleum-containing formation 1 penetrated by
`injection well 2 and production well 3).
`Allen describes the petroleum-recovery process as follows:
`[V]iscous petroleum including bitumen may be recovered
`from viscous petroleum-containing formations including tar sand
`deposits by injecting into the formation a gaseous mixture of a
`carrier gas and a hydrocarbon solvent which is liquid at reservoir
`conditions. Suitable materials for the solvent include paraffinic
`hydrocarbons having from five to ten carbon atoms such as
`pentane, hexane, etc., as well as naphtha, natural gasoline, carbon
`disulfide, and mixtures thereof. Suitable carrier gases include
`nitrogen, carbon dioxide, methane, ethane, propane, butane,
`hydrogen, anhydrous ammonia, hydrogen sulfide, ethylene or
`propylene. For example, nitrogen may be passed through a
`vaporizer to vaporize pentane, and then the gaseous mixture
`injected into a subsurface tar sand deposit.
`Ex. 1004, 2:61–3:7.
`
`E. Petitioner’s First Ground: Foutsitzis and Allen
`Regarding claim 1 of the ’488 Patent, Petitioner contends that the
`preamble and elements 1.1, 1.2, and 1.4 are disclosed by Foutsitzis and
`element 1.3 is disclosed by a combination of Foutsitzis and Allen. Pet. 23–
`27. Petitioner contends that “a POSA would have been motivated to
`combine the teachings of Foutsitzis and Allen to obtain an obvious and
`predictable combination of complimentary [sic] features.” Id. at 26.
`Patent Owner argues, among other things, that several claim elements
`are not found in the asserted prior art, that Allen is not analogous art, and
`that Petitioner’s rationale for combining Foutsitzis and Allen is conclusory
`and based on hindsight reasoning. Prelim. Resp. 9–26.
`After considering the Petition and the Preliminary Response, we agree
`with Patent Owner that Petitioner’s evidence and arguments do not meet the
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`IPR2019-01544
`Patent 9,017,488 B2
`threshold for institution of inter partes review. As support for the
`combination of Foutsitzis and Allen, Petitioner presents the following
`argument:
`
`Foutsitzis and Allen are similarly directed to the removal
`of substances using a solvent with a carrier gas in the petroleum
`industry. . . . In fact, both disclose hydrocarbon solvents and
`similar carrier gases.
`
`. . .
` In considering reasonable
`modifications to a method of using solvents with a carrier gas to
`clean process equipment as in Foutsitzis, a POSA would
`logically have looked to similar methods for removing
`substances using solvents with carrier gases for guidance in
`applying known prior art approaches. . . . For example, a POSA
`would logically have looked at the carrier gases being used with
`hydrocarbon solvents in other methods. . . . Therefore, a POSA
`would have been motivated to combine the teachings of
`Foutsitzis and Allen to obtain an obvious and predictable
`combination of complimentary [sic] features.
`Pet. 25–26 (citing Ex. 1002 ¶¶ 49, 51; Ex. 1003, code (57), 1:11–16, 3:10–
`12, 4:47–68; Ex. 1004, code (57), 2:66–3:1).
`We determine that Petitioner’s obviousness rationale is deficient in at
`least three respects.
`First, a reference may be used in an obviousness determination “only
`when analogous to the claimed invention.” In re Bigio, 381 F.3d 1320, 1325
`(Fed. Cir. 2004). A reference is analogous prior art when (1) it is from the
`same field of endeavor, regardless of the problem addressed, or (2) if it is
`not from the same field of the inventor’s endeavor, it is reasonably pertinent
`to the particular problem with which the inventor is involved. Id.
`Petitioner does not demonstrate sufficiently that Allen is analogous art
`to the claimed invention. In particular, Petitioner does not adequately
`account for the differences between Allen’s petroleum recovery method and
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`Patent 9,017,488 B2
`the decontamination methods of Foutsitzis and the ’488 Patent. We are
`persuaded by the following argument presented by Patent Owner:
`The method in Allen is applied in a well, an open environment at
`ambient formation temperature and pressure. The method in
`Foutsitzis is applied in a refinery, a closed system with variable
`and controlled elevated pressures and temperatures. Allen and
`Foutsitzis have completely different goals. Allen is directed to
`retrieving petroleum from the ground, whereas Foutsitzis is
`directed to removing contaminants from equipment. Petitioner
`has failed to show how these two process environments are the
`same or even remotely related.
` Indeed, to say these
`environments are similar fields is quite a stretch and arguably a
`fiction.
`Prelim. Resp. 21. Patent Owner’s argument is consistent with Allen, which
`discloses a method for recovering viscous petroleum from subterranean
`formations such as tar sand deposits. Ex. 1004, code (57), 1:9–12, 2:60–65.
`Allen’s method involves injecting a gaseous mixture through an injection
`well into a subsurface tar sand deposit and pumping a petroleum-solvent
`mixture from a production well. Id. at drawing, 3:8–14, 4:6–11, 4:47–50,
`6:27–41. Patent Owner’s argument is also consistent with Foutsitzis, which
`discloses a method of purging sulfur contaminants from hydrocarbon
`processing equipment. Ex. 1003, code (57), 2:62–3:10, 3:19–35. Petitioner
`does not present a persuasive argument for why a POSA would have
`considered a method for recovering petroleum from subterranean formations
`when looking for ways to improve a method for removing contaminants
`from hydrocarbon processing equipment.
`Petitioner argues that “Foutsitzis and Allen are similarly directed to
`the removal of substances using a solvent with a carrier gas in the petroleum
`industry” and that the references disclose “similar methods for removing
`substances using solvents with carrier gases.” Pet. 25. We disagree.
`
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`Petitioner relies on an overly broad characterization of the field of endeavor
`for the ’488 Patent. Pet. 21. As discussed above, the relevant field is “the
`operation and maintenance of chemical plants and refineries.” Ex. 1001,
`1:8–9. Petitioner fails to establish that techniques useful for recovering
`petroleum from an underground formation would have been relevant to a
`method of removing contaminants from chemical processing equipment.
`Although Petitioner argues that “Allen is at least reasonably pertinent to the
`problem addressed in the ’488 Patent” (Pet. 20 n.3), that argument and the
`corresponding declaration testimony are merely conclusory and unsupported
`by factual evidence. Petitioner demonstrates that Allen discloses selected
`claim limitations, but does not show sufficiently that a POSA would have
`consulted Allen when investigating methods for cleaning the internal
`surfaces of chemically contaminated reactors, absorbent chambers,
`compressors, pipes, connectors, and other equipment. Cf. Ex. 1001, 1:10–
`13.
`
`Second, even if Petitioner had established that Allen is within the
`same field of endeavor of the ’488 Patent or reasonably pertinent to the
`problem addressed by the patent, that would not be sufficient to meet
`Petitioner’s burden. Analogous art is merely a threshold inquiry as to
`whether a reference can be considered in an obviousness analysis.
`Demonstrating that a reference is analogous art is not sufficient to establish
`that a POSA would have had reason to combine its teachings with other
`prior art in the manner set forth in the claim. Personal Web Techs., LLC v.
`Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017) (it is not enough to show that
`“a skilled artisan, once presented with the two references, would have
`understood that they could be combined”); Securus Techs., Inc. v. Glob.
`Tel*Link Corp., 701 F. App’x 971, 977 (Fed. Cir. July 14, 2017) (“a broad
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`characterization of [prior art references] as both falling within the same
`alleged field . . . without more, is not enough for [Petitioner] to meet its
`burden of presenting a sufficient rationale to support an obviousness
`conclusion”).
`Petitioner fails to provide a persuasive reason why a POSA would
`have modified Foutsitzis’s decontamination process by volatizing the
`solvent in carrier gas and delivering the carrier gas containing the volatized
`solvent to the process system, as recited in claim element 1.3.
`Foutsitzis discloses that “inert gases are circulated along with the
`solvent to improve contact between solvent and equipment”
`(Ex. 1003, 4:63–65), but does not disclose that the solvent is volatized
`before it is delivered to the system. In Example II, Foutsitzis discloses that
`“toluene at a temperature of 65° C.” and nitrogen gas are circulated through
`a process unit. Id. at 9:31–43. Petitioner does not address Foutsitzis
`Example II and does not assert that toluene is volatized before delivery in
`that example.4 Petitioner fails to acknowledge that volatizing the solvent
`would be a modification of Foutsitzis’s decontamination method. Petitioner
`relies on Allen’s disclosure of vaporizing a solvent by contacting it with
`carrier gas (Pet. 24–25), but fails to provide a reason or motivation for
`modifying Foutsitzis’s method by incorporating this feature from Allen.
`KSR, 550 U.S. at 418 (“[I]t can be important to identify a reason that would
`
`
`4 We agree with Patent Owner that the solvent in Foutsitzis Example II—
`toluene at 65° C.—is a liquid. Prelim. Resp. 10. Toluene has a boiling point
`of 110.6° C. Ex. 3001. Our finding that Example II uses a liquid solvent is
`consistent with Foutsitzis’s disclosure that the solvent (toluene) was
`circulated by “the charge pump,” while nitrogen was recirculated with “the
`recycle compressors.” Ex. 1003, 9:31–34, 9:39–41.
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`have prompted a person of ordinary skill in the relevant field to combine the
`elements in the way the claimed new invention does.”).
`Foutsitzis teaches that the role of the carrier gas is “to improve contact
`between solvent and equipment.” Ex. 1003, 4:63–65. In contrast, Allen
`discloses many reasons for using a carrier gas to vaporize the normally
`liquid solvent, including: to enable the use of higher molecular weight
`liquid solvents, to avoid creating a viscous bank of the solvent-petroleum
`mixture that becomes immobile, to maintain a high pressure that increases
`oil production rate and recovery, and to reduce the total inventory of solvent
`in the formation, which reduces cost. Ex. 1004, 3:41–64. In addition, Allen
`teaches that “[t]he carrier gas serves the essential additional purpose of
`maintaining transmissibility by maintaining the formation flow channels
`open.” Id. at 4:33–36.
`Petitioner does not assert that any benefit or improvement would be
`obtained by modifying Foutsitzis’s cleaning process by volatizing the
`solvent using a carrier gas, as taught by Allen. For example, Petitioner does
`not assert that Allen’s reasons for using a carrier gas to vaporize a normally
`liquid solvent (Ex. 1004, 3:41–64, 4:33–36) would be relevant or beneficial
`in a contaminant removal process like Foutsitzis’s. In short, Petitioner does
`not explain sufficiently why a POSA would have modified Foutsitzis’s
`contaminant removal process by volatizing the solvent using carrier gas, as
`disclosed by Allen.
`Third, Petitioner does not explain sufficiently why a POSA would
`have modified Foutsitzis’s contaminant removal method by using the carrier
`gases disclosed by Allen. For claim element 1.3, Petitioner relies on Allen’s
`disclosure of suitable carrier gases. Pet. 24–25 (quoting Ex. 1004, 2:60–
`3:7); see also id. at 30–32 (addressing dependent claims 4 and 5 and quoting
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`Patent 9,017,488 B2
`Allen’s disclosure of suitable carrier gases). Petitioner contends that “a
`POSA would logically have looked at the carrier gases being used with
`hydrocarbon solvents in other methods.” Pet. 26. Petitioner does not,
`however, explain sufficiently why a POSA would have selected Allen’s
`carrier gases for use in an equipment cleaning method such as Foutsitzis’s.
`Petitioner does not address whether the carrier gases disclosed by
`Allen would improve contact between solvent and equipment—the role of a
`carrier gas as taught by Foutsitzis. Ex. 1003, 4:63–65. Nor does Petitioner
`address whether Allen’s carrier gases would be inert to reaction with the
`solvent and contaminant, as required by Foutsitzis. Id. at 4:65–68.
`Petitioner does not assert that any benefit or improvement would be obtained
`by using Allen’s carrier gases in addition to or in place of the preferred
`carrier gases—hydrogen or nitrogen—disclosed by Foutsitzis. Id. In short,
`Petition does not explain sufficiently why a POSA would have modified
`Foutsitzis’s contaminant removal process by using the carrier gases
`disclosed by Allen.
`Petitioner asserts that Foutsitzis and Allen “both disclose hydrocarbon
`solvents and similar carrier gases.” Pet. 25. Petitioner’s assertion is an
`oversimplification of the references and does not provide a sufficient reason
`to modify Foutsitzis in the manner claimed. Foutsitzis teaches that “[i]n an
`especially preferred embodiment, the hydrocarbon solvent comprises
`principally aromatic hydrocarbons.” Ex. 1003, 3:10–12. Foutsitzis does not
`disclose any hydrocarbon solvents, other than aromatic hydrocarbons. See
`id. at 5:6–18 (disclosing solvents). Allen, in contrast, teaches that
`“[a]romatic hydrocarbons such as benzene have not been found to be
`satisfactory” for use as solvents. Ex. 1004, 5:42–43. It is true that Foutsitzis
`and Allen both disclose hydrogen and nitrogen as carrier gases. Ex. 1003,
`
`16
`
`
`
`IPR2019-01544
`Patent 9,017,488 B2
`4:65–68; Ex. 1004, 5:51–52, 5:61–62. That similarity, however, is not a
`persuasive reason to modify Foutsitzis’s cleaning method to incorporate
`materials or process steps used in Allen’s petroleum recovery method.
`Dr. Wilhite’s testimony regarding reasons to combine Foutsitzis and
`Allen is substantively the same as the Petition and suffers from the same
`deficiencies. Compare Pet. 25–26, with Ex. 1002 ¶¶ 49, 51. Dr. Wilhite
`additionally provides a list of references that Patent Owner disclosed to the
`USPTO during prosecution (Ex. 1002 ¶ 50), but does not explain how this
`list supports his opinions regarding Foutsitzis and Allen, and Petitioner does
`not specifically rely upon nor explain Dr. Wilhite’s testimony. To the extent
`Dr. Wilhite relies on Patent Owner’s disclosure of the listed references as an
`admission that they are material to patentability, such reliance is prohibited
`under the rules. Compare id. ¶¶ 22, 50, with 37 C.F.R. § 1.97 (“The filing of
`an information disclosure statement shall not be construed to be an
`admission that the information cited in the statement is, or is considered to
`be, material to patentability . . . .”). Dr. Wilhite’s testimony does not show
`that a POSA would have had reason to combine the prior art teachings in the
`manner set forth in the challenged claims.
`The deficiencies in Petitioner’s arguments and evidence for
`independent claim 1 are not remedied by Petitioner’s arguments and
`evidence for dependent claims 2–6 and 9–13. See Pet. 27–37.
`For all of the foregoing reasons, we determine that Petitioner has not
`established a reasonable likelihood that it would prevail on its challenge to
`claims 1–6 and 9–13 based on Foutsitzis and Allen.
`
`17
`
`
`
`IPR2019-01544
`Patent 9,017,488 B2
`F. Petitioner’s Second Ground: Foutsitzis, Allen, and Jansen
`Petitioner contends that the limitations of claims 7, 8, and 14–17 are
`disclosed by Jansen and that the weight ratios of claims 18–20 would have
`been a matter of routine experimentation. Pet. 37–47. Petitioner contends
`that “a POSA would have been motivated to combine the teachings of
`Foutsitzis, Allen, and Jansen to obtain an obvious and predictable
`combination of complimentary [sic] features.” Id. at 39.
`Patent Owner contends that Petitioner’s combination of Foutsitzis,
`Allen, and Jansen suffers from the same flaws as Petitioner’s combination of
`Foutsitzis and Allen. Prelim. Resp. 26.
`We agree with Patent Owner. The deficiencies in Petitioner’s
`arguments and evidence for independent claim 1, as discussed above, are not
`remedied by Petitioner’s arguments and evidence for dependent claims 7, 8,
`14–20. See Pet. 37–47.
`Petitioner’s second ground does not meet the threshold for institution
`of inter partes review for additional reasons. For claims 7 and 8, Petitioner
`relies on Jansen’s disclosure of the types of contaminants that are removed
`by a cleaning process. Pet. 38–41. The contaminants disclosed by Jansen
`differ from the inorganic contaminants removed by Foutsitzis’s method.
`Compare Ex. 1003, 3:5 (“In a preferred embodiment, the contaminant is
`sulfur.”) and 3:64–66 (“The contaminants comprise elements other than
`carbon or hydrogen, especially sulfur, nitrogen, oxygen or metals . . . .”)
`with Ex. 1005, 10:33–67 (discussing removal of “light end hydrocarbons
`(benzene, H2S, LEL, etc.)” and “petroleum residues and processing fluids”).
`Petitioner does not explain why a POSA would have used Foutsitzis’s
`process, as modified by Allen’s solvent volatizing step, to remove Jansen’s
`contaminants. Nor does Petitioner demonstrate that a POSA would have had
`
`18
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`
`
`IPR2019-01544
`Patent 9,017,488 B2
`a reasonable expectation of success in doing so. Intelligent Bio-Sys., Inc. v.
`Illumina Cambridge Ltd., 821 F.3d 1359, 1367–1368 (Fed. Cir. 2016) (It is
`Petitioner’s “burden to demonstrate both that a skilled artisan would have
`been motivated to combine the teachings of the prior art references to
`achieve the claimed invention, and that the skilled artisan would have had a
`reasonable expectation of success i
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