`
`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 No. 9,017,488 B2
`
`
`
`
`PETITIONER’S MOTION FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`iii
`
`1
`
`7
`
`13
`
`15
`
`17
`
`18
`
`TABLE OF CONTENTS
`
`
`
`
`
`
`
`
`
`
`
`ALLEN IS ANALOGOUS PRIOR ART TO THE ‘488 PATENT
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`I.
`
`II. A PERSON OF ORDINARY SKILL IN THE ART WOULD
`HAVE BEEN MOTIVATED TO COMBINE FOUTSITZIS AND ALLEN
`
`
`III. A PERSON OF ORDINARY SKILL IN THE ART WOULD HAVE
`BEEN MOTIVATED TO COMBINE FOUTSITZIS, ALLEN, AND JANSEN
`
`
`IV. CONCLUSION
`
`CERTIFICATE OF SERVICE
`
`CERTIFICATE OF COMPLIANCE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ii
`
`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`Airbus S.A.S. v. Firepass Corp.,
`941 F.3d 1374 (Fed. Cir. 2019)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 1, 2, 5, 6, 7
`
`
`
`
`
`
`
`
`
`
`
`
`
`1, 2
`
`1
`
`1, 2
`
` 7, 8, 10, 11, 12
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`1
`
`13, 15
`
`
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016)
`
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004)
`
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016)
`
`
`KSR International Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)
`
`
`
`
`Randall Manufacturing v. Rea,
`733 F.3d 1355 (Fed. Cir. 2013)
`
`
`Renda Marine, Inc. v. U.S.,
`509 F.3d 1372 (Fed. Cir. 2007)
`
`
`
`
`Statutes
`
`35 U.S.C. § 103
`
`Regulations
`
`37 C.F.R. § 42.24
`
`37 C.F.R. § 42.24(a)(1)
`
`37 C.F.R. § 42.6(e)
`
`37 C.F.R. § 42.71(c)
`
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`iii
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`18
`
`18
`
`17
`
`1
`
`1
`
`
`
`Pursuant to 37 C.F.R. § 42.71(d), Petitioner United Laboratories International,
`
`LLC hereby requests rehearing of the Board’s Decision (Paper 9) entered January
`
`22, 2020. The Board reviews a request for rehearing for abuse of discretion. 37
`
`C.F.R. § 42.71(c). An abuse of discretion “occurs when a court misunderstands or
`
`misapplies the relevant law or makes clearly erroneous findings of fact.” Renda
`
`Marine, Inc. v. U.S., 509 F.3d 1372, 1379 (Fed. Cir. 2007). As set forth below, that
`
`standard is met.
`
`I.
`
`ALLEN IS ANALOGOUS PRIOR ART TO THE ‘488 PATENT.
`
`“A reference qualifies as prior art for an obviousness determination only when
`
`it is analogous to the claimed invention.” Airbus S.A.S. v. Firepass Corp., 941 F.3d
`
`1374, 1379 (Fed. Cir. 2019) (citation omitted) (emphasis added). Whether a
`
`reference qualifies as analogous prior art is a question of fact. Id. (citing In re Bigio,
`
`381 F.3d 1320, 1324 (Fed. Cir. 2004)). A reference is analogous prior art (1) if it is
`
`from the same field of endeavor regardless of the problem addressed, or (2) if it is
`
`not within the field of the inventor’s endeavor, it is reasonably pertinent to the
`
`particular problem with which the inventor is involved. Id. (citing In re Bigio, 381
`
`F.3d at 1325).1 Thus, the field of endeavor is evaluated first.
`
`
`1 The Board referred to Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356 (Fed. Cir.
`
`2016) and In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016),
`
`
`
`
`
`- 1 -
`
`
`
`“To determine the applicable field of endeavor, the factfinder must consider
`
`‘explanations of the invention’s subject matter in the patent application, including
`
`the embodiments, function, and structure of the claimed invention.’” Airbus, 941
`
`F.3d at 1380. “While the disclosure of the references is the primary focus, [the
`
`Federal Circuit] has also instructed that the factfinder must consider each reference’s
`
`disclosure in view of the ‘reality of the circumstances,’ and ‘weigh those
`
`circumstances from the vantage point of the common sense likely to be exerted by
`
`one of ordinary skill in the art in assessing the scope of the endeavor.’” Id. (citations
`
`omitted). Respectfully, Petitioner asserts that the Board misapprehended this law.
`
`The Board held that the field of endeavor is “the operation and maintenance
`
`of chemical plants and refineries.” Decision at 6. However, the Board only cited one
`
`sentence from the Background section to support this holding: “This disclosure
`
`pertains to the operation and maintenance of chemical plants and refineries.” Id.
`
`(citing Ex. 1001 at 1:8-9). The Board disregarded the testimony of Dr. Wilhite,
`
`
`Decision at 5-6, but their holdings do not apply here. Harmonic addresses the level
`
`of detailed required to show that a reference teaches a limitation, 815 F.3d at 1363-
`
`64, which is not at issue here, and Magnum deals with a petitioner who merely
`
`argued that the same analysis for one reference applied to another reference, without
`
`further explanation, 829 F.3d at 1380, which is also not at issue here.
`
`
`
`- 2 -
`
`
`
`Petitioner’s declarant, as well as the Abstract of the ‘488 patent, which he relied
`
`upon for his opinion 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. at 13 (citing Ex. 1002 at ¶ 22). The
`
`Board also overlooked the title and independent claim 1 of the ‘488 patent, which
`
`were both discussed by Petitioner. Id. at 9-13. For example, the title of the ‘488
`
`patent is “Process for Removing Hydrocarbons and Noxious Gasses from Reactors
`
`and Media-Packed Equipment.” Id. at 9. (citing Ex. 1001).
`
`Therefore, Petitioner respectfully asserts that the Board abused its discretion
`
`with its holding as to the relevant field of endeavor and asks the Board to reconsider
`
`its holding in light of the evidence submitted by Petitioner.
`
`Petitioner also respectfully asserts that the Board abused its discretion with
`
`some of its factual findings related to Allen. The Board incorrectly found that a
`
`wellbore is an open environment that does not have variable and controlled elevated
`
`pressures and temperatures. Decision at 12 (citing Prel. Resp. at 21). The Board
`
`overlooked the portions of Allen’s specification discussing the wellbore as a
`
`carefully controlled environment, Ex. 1004 at 4:6-26, describing high pressures in
`
`the wellbore, id. at 3:52-55, and describing increasing and reducing pressure in the
`
`wellbore. Id. at 5:18-26.
`
`
`
`- 3 -
`
`
`
`The Board also incorrectly found that Allen and the ‘488 patent have different
`
`goals and remove different materials. Decision at 12 (citing Prel. Resp. at 21). The
`
`Board overlooked the fact that the ‘488 patent is entitled “Process for Removing
`
`Hydrocarbons and Noxious Gasses from Reactors and Media-Packed Equipment.”
`
`Ex. 1001 at Cover (cited by Pet. at 9). Further, the ‘488 patent discusses removal of
`
`organic contaminants, which may include crude oil and its derivatives or
`
`hydrocarbons. Id. at 4:17-21 (cited by Pet. at 15). Also, as explained by Petitioner,
`
`Allen is “directed to a method of recovering viscous petroleum using a carrier gas
`
`vaporized solvent flooding method.” Pet. at 20 (citing Ex. 1004 at 1:9-14). Petitioner
`
`then explained that “[b]ecause Allen is directed to the removal of hydrocarbons from
`
`porous media in the form of petroleum-containing formations using a vapor flow
`
`comprised of carrier gas and vaporized solvent, this reference relates to the field of
`
`patentee’s endeavor and logically would have commended itself to an inventor’s
`
`attention in considering the problems elucidated in the ‘488 patent.” Id. (citing Ex.
`
`1002 at ¶ 39). Additionally, the Board overlooked the fact that Allen is not limited
`
`to just the downhole environment: “[t]his invention…more particularly is concerned
`
`with an improved carrier gas vaporized solvent flooding method…” Ex. 1004 at 1:9-
`
`14 (cited by Pet. at 20).
`
`Respectfully, these incorrect findings by the Board do not follow from the
`
`law, Allen, or the ‘488 patent. Instead, they were suggested in the Preliminary
`
`
`
`- 4 -
`
`
`
`Response and incorrectly accepted by the Board. Thus, Petitioner respectfully asserts
`
`that it was an abuse of discretion for the Board to find that Allen is not in the same
`
`field of endeavor as the ‘488 patent and asks the Board to reconsider its finding.
`
`The second test for determining if a reference is analogous prior art is to
`
`determine, if the reference is not within the applicable field of endeavor, if it is
`
`reasonably pertinent to the particular problem with which the inventor is involved.
`
`Airbus, 941 F.3d at 1379. “In order to determine whether a reference is ‘reasonably
`
`pertinent,’ then, a reasonable factfinder should consider record evidence cited by the
`
`parties to demonstrate the knowledge and perspective of a person of ordinary skill
`
`in the art at the time of the invention.” Id. at 1383.
`
`The Board held that Petitioner’s argument and declaration testimony were
`
`“merely conclusory and unsupported by factual evidence.” Decision at 13. Petitioner
`
`respectfully asserts that the Board overlooked or misapprehended Petitioner’s
`
`arguments and evidence regarding Allen as reasonably pertinent prior art.
`
`Petitioner submitted evidence that Allen would have logically “commended
`
`itself to an inventor’s attention in considering the problems elucidated in the ‘488
`
`patent.” Pet. at 20 (citing Ex. 1002 at ¶ 39). Petitioner also argued that even if Allen
`
`is not found to be within the same field of endeavor as the ‘488 patent, it is at least
`
`reasonably pertinent to the problem addressed in the ‘488 patent. Id. at n. 3 (citing
`
`Ex. 1002 at 26, n. 6). Further, in his testimony Dr. Wilhite noted that Patent Owner
`
`
`
`- 5 -
`
`
`
`disclosed several references during prosecution that are generally directed at
`
`downhole uses such as “efforts to remove hydrocarbons from porous media in the
`
`application-specific context of removing paraffin deposits from wells.” Ex. 1002 at
`
`¶ 22; see also Ex. 1002 at ¶ 50.
`
`In Airbus, the Federal Circuit discussed Randall Manufacturing v. Rea, 733
`
`F.3d 1355 (Fed. Cir. 2013), which it stated was instructive. Airbus, 941 F.3d at 1383.
`
`In Randall, the challenger pointed to a host of other references that the examiner
`
`considered over the course of examination—including some that had been the basis
`
`for rejecting other claims—as background evidence. Id. The Board in Randall
`
`improperly refused to consider these other references. Id. In Airbus, the Board tried
`
`to distinguish Randall by asserting that it concerned motivation to combine, but the
`
`Federal Circuit held that Randall is also applicable to the scope of analogous art
`
`because both are “factual inquiries underpinning an obviousness determination that
`
`take into account the knowledge and perspective of an ordinarily skilled artisan.” Id.
`
`The Federal Circuit then held as follows:
`
`We therefore hold that the principles of Randall should apply here
`with equal effect: an analysis of whether an asserted reference is
`analogous art should take into account any relevant evidence in
`the record cited by the parties to demonstrate the knowledge and
`perspective of one of ordinary skill in the art.
`
`
`
`
`- 6 -
`
`
`
`Id. at 1383-84 (emphasis added). Thus, the nine downhole references disclosed by
`
`Patent Owner during prosecution and identified by Dr. Wilhite should have been
`
`considered by the Board. These downhole references must have been at least
`
`reasonably pertinent to the problem addressed in the ‘488 patent to be disclosed, and
`
`they should be considered in determining whether Allen is reasonably pertinent.
`
`
`
`Respectfully, the Board’s findings related to the “reasonably pertinent” issue
`
`do not follow Petitioner’s arguments and evidence. Instead, they were suggested in
`
`the Preliminary Response and incorrectly accepted by the Board. Thus, Petitioner
`
`respectfully asserts that the Board abused its discretion by finding that Petitioner did
`
`not submit evidence to support its reasonably pertinent argument. Petitioner asks the
`
`Board to reconsider this evidence and its findings.
`
`II. A PERSON OF ORDINARY SKILL IN THE ART WOULD HAVE BEEN MOTIVATED
`TO COMBINE FOUTSITZIS AND ALLEN.2
`
`
`
`In KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), the
`
`Supreme Court rejected the rigid approach of the Federal Circuit in its application
`
`of the teaching, suggestion, or motivation test. The Court explained that “[t]he
`
`combination of familiar elements according to known methods is likely to be
`
`
`2 Petitioner reserves the right to address the Board’s findings regarding a person of
`
`ordinary skill in the art, which the Board found were not outcome determinative, in
`
`the event institution is granted on rehearing.
`
`
`
`- 7 -
`
`
`
`obvious when it does no more than yield predictable results.” Id. at 416. Further,
`
`“[t]he Court derived from the precedents the conclusion that when a patent ‘simply
`
`arranges old elements with each performing the same function it had been known to
`
`perform’ and yields no more than one would expect from such an arrangement, the
`
`combination is obvious.” Id. at 417 (citation omitted). The Supreme Court also
`
`explained that in more complicated situations it may be necessary to determine
`
`whether there was a reason to combine the known elements in the fashion claimed
`
`by the patent at issue, id. at 418, but that is not the case here.
`
`The Board held that Petitioner failed to provide a persuasive reason why a
`
`POSA would have modified Foutsitzis by volatizing the solvent before delivery as
`
`disclosed in Allen. Decision at 14. Petitioner respectfully asserts that the Board
`
`abused its discretion with this holding and overlooked the evidence and arguments
`
`Petitioner submitted.
`
`For example, Dr. Wilhite testified that he reviewed the ‘488 patent, its file
`
`history, Foutsitzis, and Allen as well as other materials. Ex. 1002 at ¶¶ 8 and 9.
`
`Petitioner also provided a general summary of Foutsitzis and Allen, which relied in
`
`part on Dr. Wilhite’s testimony. Pet. at 19-20 (citing Ex. 1002 at ¶¶ 38 and 39).
`
`Further, Dr. Wilhite testified that the only limitation that Allen was being relied upon
`
`in relation to claim 1 of the ‘488 patent was for the volatizing of the non-aqueous
`
`solvent before delivering the carrier gas containing the volatized non-aqueous
`
`
`
`- 8 -
`
`
`
`solvent in element 1.3. Id. at 21-27 (citing Ex. 1002 at ¶¶ 42-55).3 Petitioner relies
`
`on Foutsitzis for the disclosure of all of the other limitations of claim 1. Id.
`
`That being said, Dr. Wilhite also explained that there are many similarities
`
`between Foutsitzis and Allen. Dr. Wilhite testified that both are “directed to the
`
`removal of substances using a solvent with a carrier gas in the petroleum industry.”
`
`Ex. 1002 at ¶ 49 (cited by Pet. at 25). Also, “both disclose hydrocarbon solvents and
`
`similar carrier gases.” Id. Dr. Wilhite then testified that 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.” Id. Further, Dr. Wilhite explained that nine of the
`
`references disclosed by Patent Owner were related to downhole methods, Ex. 1002
`
`at ¶ 50, which shows that the emphasis on downhole use in Allen is not a significant
`
`
`3 The Board focused part of its discussion on the fact that Foutsitzis does not disclose
`
`volatizing the solvent before delivery and discussed Example II in Foutsitzis.
`
`Decision at 14. The Board overlooked, however, the fact that this is the reason Allen
`
`was relied upon by Petitioner—to disclose volatizing the solvent before delivery.
`
`Otherwise, Petitioner would have asserted that Foutsitzis anticipated claim 1. Thus,
`
`there was no need for Petitioner to discuss Example II in Foutsitzis.
`
`
`
`- 9 -
`
`
`
`difference from the process equipment context in Foutsitzis. Thus, the only relevant
`
`difference between Foutsitzis and Allen is the timing of volatizing the solvent.
`
`Dr. Wilhite also pointed out that the only purpose of the alternative
`
`embodiment in Foutsitzis, which uses inert gases circulated along with the solvent,
`
`is to improve contact. Ex. 1002 at ¶ 48 (quoting Ex. 1003 at 4:47-68 and cited by
`
`Pet. at 25). As already established, the only relevant difference between Foutsitzis
`
`and Allen is that Allen volatizes the solvent before delivery rather than after delivery,
`
`which improves contact further.4 Thus, as Dr. Wilhite testified, “a POSA would have
`
`been motivated to combine the teachings of Foutsitzis and Allen to obtain an obvious
`
`and predictable combination of complimentary features.” Ex. 1002 at ¶ 51.
`
`Thus, Petitioner respectfully asserts that it met the requirements of KSR to
`
`show a motivation to combine and that the Board misapprehended these
`
`requirements. Further, Petitioner respectfully asserts that the Board’s findings
`
`overlooked the evidence and arguments made by Petitioner on this issue. Therefore,
`
`Petitioner asks the Board to reconsider its holdings and findings on the issue of
`
`motivation to combine.
`
`
`4 In its Decision, the Board reviewed many of the benefits disclosed in Allen
`
`regarding the volatizing of the solvent before delivery, Decision at 15, but it
`
`overlooked Allen’s discussion of improving contact. Ex. 1004 at 4:39-46.
`
`
`
`- 10 -
`
`
`
`With regard to claim element 1.3 and dependent claims 4 and 5, the Board
`
`also held that Petitioner did not explain sufficiently why a POSA would have
`
`modified Foutsitzis by using the carrier gases disclosed by Allen. Decision at 15-16.
`
`However, with regard to claim element 1.3, the Board overlooked the fact that
`
`Petitioner relied on Foutsitzis for this disclosure as shown in the discussion of
`
`element 1.1. Pet. at 22-23. The discussion of Allen’s carrier gases in element 1.3 was
`
`simply to show the similarities between Foutsitzis and Allen as discussed above.
`
`Therefore, Petitioner respectfully asserts that the Board abused its discretion with
`
`this finding and asks the Board to reconsider.
`
`As to dependent claim 4, the Board overlooked the fact that Petitioner relied
`
`on both Foutsitzis and Allen for their disclosures of carrier gases. Pet. at 30-31. For
`
`example, both references disclose the inert gases hydrogen and nitrogen. Id. Thus,
`
`dependent claim 4 is taught by Foutsitzis alone or in combination with Allen.
`
`With regard to the purchase fuel gas claimed in dependent claim 4 and the dry
`
`gas claimed in dependent claim 5, Petitioner has already shown that the only relevant
`
`difference between Foutsitzis and Allen as to claim 1 is the timing of volatizing the
`
`solvent. As to dependent claims 4 and 5, the only relevant difference is the
`
`substitution of one carrier gas for another. Under KSR, “when a patent ‘simply
`
`arranges old elements with each performing the same function it had been known to
`
`perform’ and yields no more than one would expect from such an arrangement, the
`
`
`
`- 11 -
`
`
`
`combination is obvious.” 550 U.S. at 417. Petitioner respectfully asserts that the
`
`Board misapprehended this law by requiring Petitioner to conduct an exhaustive
`
`analysis of every embodiment and example for any possible conflict—even where
`
`no such conflict was identified.
`
`For example, the Board incorrectly suggests that Foutsitzis is limited to an
`
`aromatic hydrocarbon solvent. Decision at 16-17. However, Foutsitzis discloses
`
`hydrocarbon solvents generally, and it is not limited to aromatic hydrocarbon
`
`solvents, which are merely preferred. Ex. 1003 at 5:6-8. Further, dependent claims
`
`4 and 5 do not address solvents. Even if the solvents disclosed in Allen are evaluated,
`
`it discusses the use of a broad range of hydrocarbon solvents. Ex. 1004 at 2:60-3:1
`
`(cited by Pet. at 30); see also Ex. 1004 at 5:28-46. Respectfully, Petitioner asserts
`
`that the Board abused its discretion by finding a conflict between Foutsitzis and
`
`Allen based on one example of a solvent in Foutsitzis and a comment in Allen about
`
`whether that particular solvent was satisfactory in the embodiment being discussed
`
`in Allen.
`
`Following KSR, there was no reason to require an exhaustive analysis of the
`
`efficacy of particular carrier gases disclosed in Allen compared to the efficacy of the
`
`carrier gases disclosed in Foutsitzis—or how each of the carrier gases in Allen would
`
`react with any of the solvents or contaminants disclosed in Foutsitzis. KSR, 550 U.S.
`
`at 417. Thus, Petitioner respectfully asserts that the Board abused its discretion by
`
`
`
`- 12 -
`
`
`
`misapprehending the relevant law with regard to its findings on dependent claims 4
`
`and 5, and Petitioner asks the Board to reconsider its findings.
`
`Therefore, Petitioner respectfully asks the Board for a rehearing of its Ground
`
`1 argument that claims 1-6 and 9-13 are obvious under 35 U.S.C. § 103 over
`
`Foutsitzis and Allen.
`
`III. A PERSON OF ORDINARY SKILL IN THE ART WOULD HAVE BEEN MOTIVATED
`TO COMBINE FOUTSITZIS, ALLEN, AND JANSEN.
`
`
`
`The Board also specifically addressed Petitioner’s invalidity contentions as to
`
`dependent claims 7 and 8.5 Decision at 18-19. The Board found that the
`
`contaminants disclosed in Jansen are different from the inorganic contaminants
`
`disclosed in Foutsitzis. Id. at 18. Based on this finding, the Board then found that
`
`Petitioner did not explain why a POSA would have used the method disclosed in
`
`Foutsitzis to remove the contaminants disclosed in Jansen. Id. The Board also found
`
`that Petitioner did not demonstrate a reasonable expectation of success in doing so.
`
`
`5 With regard to Petitioner’s second ground, the Board focused its discussion only
`
`on dependent claims 7 and 8. Decision at 18-19. The Board did not specifically
`
`address dependent claims 14-20, but generally stated that the combination for those
`
`claims suffers from the same problems as claim 1. Id. at 18. Thus, Petitioner relies
`
`on its arguments related to claim 1.
`
`
`
`- 13 -
`
`
`
`Id. at 18-19. Respectfully, Petitioner asserts that the basis for the Board’s holding—
`
`the difference in contaminants—was an abuse of discretion.
`
`The Board overlooked the fact that Foutsitzis discusses the contaminant sulfur
`
`as well as decomposed sulfur compounds such as metal sulfides that result from a
`
`reaction of hydrogen sulfide with internal surfaces. Ex. 1003 at 4:5-13. It also
`
`discusses the removal of hydrogen sulfide. Id. at 5:50-54. During prosecution of the
`
`‘812 patent, the examiner stated that the equipment in Foutsitzis inherently has
`
`hydrogen sulfide in the system and these contaminants are inherently removed with
`
`the Foutsitzis process. Ex. 1010 at 46. Jansen also specifically discloses the removal
`
`of hydrogen sulfide. Pet. at 38-40. Thus, the Board’s finding that the contaminants
`
`in Foutsitzis and Jansen differ was an abuse of discretion.
`
`Further, the Board overlooked the testimony of Dr. Wilhite regarding
`
`combining Foutsitzis, Allen, and Jansen, in which he reviewed the disclosures in
`
`Jansen related to removing organic contaminants. Ex. 1002 at ¶ 69 (cited by Pet. at
`
`38-39). He also explained that all three references were directed to the removal of
`
`substances using a solvent and a carrier gas. Id. at ¶ 70 (cited by Pet. at 39). Further,
`
`all three references disclose the use of hydrocarbon solvents, and all three disclose
`
`vaporizing the solvents, although Jansen discloses the use of steam for that purpose.
`
`Id. Dr. Wilhite concluded as follows:
`
`
`
`- 14 -
`
`
`
`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 as well as similar
`methods dealing with various contaminants. Therefore, a POSA
`would have been motivated to combine the teachings of Foutsitzis,
`Allen, and Jansen to obtain an obvious and predictable combination
`of complimentary features.
`
`Id.
`
`Therefore, Petitioner respectfully asks the Board for a rehearing of its Ground
`
`2 argument that dependent claims 7-8 and 14-20 are rendered obvious under 35
`
`U.S.C. § 103 by Foutsitzis in view of Allen, and further in view of Jansen.
`
`IV. CONCLUSION
`
`In light of the foregoing, Petitioner requests rehearing and institution based
`
`on Grounds 1 and 2.
`
`
`
`
`
`
`
`
`- 15 -
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`/Eric M. Adams/
`Eric M. Adams (Reg. No. 56,290)
`eadams@tumeyllp.com
`TUMEY LLP
`5177 Richmond Avenue, Suite 1188
`Houston, Texas 77056
`(713) 622-7005
`(713) 622-0220 fax
`
`LEAD COUNSEL FOR PETITIONER
`
`
`John J. Love (Reg. No. 64,820)
`jlove@tumeyllp.com
`TUMEY LLP
`5177 Richmond Avenue, Suite 1188
`Houston, Texas 77056
`(713) 622-7005
`(713) 622-0220 fax
`
`BACK-UP COUNSEL FOR PETITIONER
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`- 16 -
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 20th day of
`
`February, 2020, a copy of Petitioner’s Motion for Rehearing was served via
`
`electronic mail on Patent Owner at its designated service address:
`
`Electronic Service
`
`Russell T. Wong
`rwong@blankrome.com
`Domingo M. LLagostera
`dllagostera@blankrome.com
`BLANK ROME, LLP
`717 Texas Avenue, Suite 1400
`Houston, Texas 77002
`(713) 228-6601
`(713) 228-6605 fax
`
`Cabrach J. Connor
`cab@connorkudlaclee.com
`Kevin S. Kudlac
`kevin@connorkudlaclee.com
`CONNOR KUDLAC LEE PLLC
`609 Castle Ridge Road, Suite 450
`Austin, Texas 78746
`(512) 646-2060
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Eric M. Adams/
`Eric M. Adams, Lead Counsel
`Reg. No. 56,290
`
`
`
`
`
`- 17 -
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF COMPLIANCE
`WITH PAGE LIMITATION
`
`The undersigned hereby certifies that this Motion for Rehearing complies with
`
`
`
`
`the page limitation of 37 C.F.R. § 42.24. This Motion contains 15 pages, excluding
`
`the parts of this Motion exempted by 37 C.F.R. § 42.24(a)(1).
`
`
`
`Dated: February 20, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Eric M. Adams/
`Eric M. Adams
`
`
`
`
`
`
`
`
`
`- 18 -
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
