Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Entered: June 12, 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 Petitioner’s Request for Rehearing
`of Decision Denying Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 11
`Entered: June 12, 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 Petitioner’s Request for Rehearing
`of Decision Denying Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`IPR2019-01544
`Patent 9,017,488 B2
`
`INTRODUCTION
`I.
`United Laboratories International, LLC (“Petitioner”) timely filed a
`request for rehearing (Paper 10, “Request” or “Req. Reh’g”) of our decision
`denying institution of inter partes review (Paper 9, “Decision” or “Dec.”) of
`claims 1–20 (the “challenged claims”) of U.S. Patent No. 9,017,488 B2
`(Ex. 1001, “the ’488 Patent”). The Request seeks rehearing of our
`determination that the Petition (Paper 2, “Pet.”) fails to establish a
`reasonable likelihood that Petitioner would prevail on its contentions that
`claims 1–6 and 9–13 are unpatentable as obvious in view of Foutsitzis1 and
`Allen2 and that claims 7, 8, and 14–20 are unpatentable as obvious in view
`of Foutsitzis, Allen, and Jansen.3 For the reasons given below, we deny the
`Request.
`
`II. LEGAL STANDARDS
`“The burden of showing a decision should be modified lies with the
`party challenging the decision,” and the challenging party “must specifically
`identify all matters the party believes the Board misapprehended or
`overlooked, and the place where each matter was previously addressed” in a
`paper of record. 37 C.F.R. § 42.71(d) (2019). Because Petitioner seeks
`rehearing of our Decision denying the Petition, it must show an abuse of
`discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on
`petition, a panel will review the decision for an abuse of discretion.”). An
`abuse of discretion occurs when a “decision was based on an erroneous
`conclusion of law or clearly erroneous factual findings, or . . . a clear error of
`
`
`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).
`3 Ex. 1005 (Jansen et al., US 6,936,112 B2, issued Aug. 30, 2005).
`
`2
`
`
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`IPR2019-01544
`Patent 9,017,488 B2
`judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d
`1565, 1567 (Fed. Cir. 1988).
`
`III. ANALYSIS
`A. Whether Allen is Analogous Art
`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 (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. Petitioner argues that we
`erred in applying both prongs of the Bigio test. Req. Reh’g 1–7.
`As to the first prong of the Bigio test, Petitioner argues that we
`misapprehended the applicable law and made incorrect factual findings
`when determining that Petitioner failed to establish that Allen is in the same
`field of endeavor as the ’488 Patent. Req. Reh’g 2–5 (citing Airbus S.A.S. v.
`Firepass Corp., 941 F.3d 1374, 1379 (Fed. Cir. 2019)); Dec. 12–13.
`Petitioner directs us to the legal standards provided in Airbus,
`including the requirement to “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.” Req. Reh’g 2
`(quoting Airbus, 941 F.3d at 1380; internal quotes omitted). Petitioner does
`not, however, direct us to where in the Petition or the Wilhite Declaration
`(Ex. 1002) Petitioner submitted evidence under this standard, or applied this
`standard, to argue that Allen is within the same field of endeavor as the ’488
`Patent.
`
`3
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`IPR2019-01544
`Patent 9,017,488 B2
`The Petition simply argued:
`The field relevant to the invention 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. 15 (quoting Ex. 1002 ¶ 22).
`[Allen] is directed to a method of recovering viscous petroleum
`using a carrier gas vaporized solvent flooding method. . . .
`Because 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.
`Pet. 20 (citing Ex. 1002 ¶ 39; Ex. 1004 at 1:9–14).
`The arguments in the Petition are fully addressed by the Decision,
`which rejected Petitioner’s characterizations of Allen and the ’488 Patent.
`Dec. 6–7, 11–13. The Request does not challenge our finding that “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.” Id. at 9 (citing Ex. 1004,
`code (57), 1:9–12).
`The Request argues that we overlooked Petitioner’s evidence when
`finding that the relevant field for the ’488 Patent is “the operation and
`maintenance of chemical plants and refineries.” Req. Reh’g 2–3; Dec. 6
`(quoting Ex. 1001, 1:8–9). Petitioner directs us to paragraph 22 of
`Dr. Wilhite’s testimony and the abstract, title, and independent claim 1 of
`the ’488 Patent. Req. Reh’g 2–3. We did not overlook this evidence.
`Dr. Wilhite’s testimony is quoted in the Decision. Dec. 6 (quoting Ex. 1002
`¶ 22). The abstract, title, and preamble of claim 1 are accurately reflected in
`
`4
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`
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`IPR2019-01544
`Patent 9,017,488 B2
`our finding that “[t]he ’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 3 (citing Ex. 1001, codes (54), (57), 1:9–
`13; 3:25–26, 7:2–9, Fig. 1).
`Petitioner shows no abuse of discretion in our finding that “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.” Dec. 13. Nor does
`Petitioner show an abuse of discretion in our finding that “Petitioner . . .
`does not show sufficiently that a POSA [person of ordinary skill in the art]
`would have consulted Allen when investigating methods for cleaning the
`internal surfaces of chemically contaminated reactors, absorbent chambers,
`compressors, pipes, connectors, and other equipment.” Id.
`Petitioner does not explain, either in the Petition or in the Request,
`why Allen would be considered within the scope of endeavor of the ’488
`Patent, when viewed from “the reality of the circumstances” and “the
`vantage point of the common sense likely to be exerted by one of ordinary
`skill in the art.” Airbus, 941 F.3d at 1380. Accordingly, we find no abuse of
`discretion in our finding that “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.” Dec. 12.
`As to the second prong of the Bigio test, Petitioner argues that we
`overlooked or misapprehended Petitioner’s arguments and evidence
`
`5
`
`
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`IPR2019-01544
`Patent 9,017,488 B2
`regarding Allen as reasonably pertinent prior art. Req. Reh’g 5–7. We
`disagree.
`The Petition states:
`[Allen] is directed to a method of recovering viscous petroleum
`using a carrier gas vaporized solvent flooding method. . . .
`Because 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.
`Pet. 20 (citing Ex. 1002 ¶ 39; Ex. 1004 at 1:9–14). In a footnote, the
`Petition asserts: “Even assuming for argument’s sake that Allen is not
`within the same field of endeavor as the ’488 patent, Allen is at least
`reasonably pertinent to the problem addressed in the ’488 patent.” Id. at 20
`n.3 (citing Ex. 1002, 26 (¶ 39) n.6).
`The arguments in the Petition are fully addressed by the Decision,
`which finds that Petitioner’s argument under Bigio prong two and the
`corresponding declaration testimony are “merely conclusory and
`unsupported by factual evidence.” Dec. 13. The Request shows no abuse of
`discretion in that finding. Petitioner directs us to Dr. Wilhite’s testimony
`concerning Patent Owner’s disclosure of references during prosecution.
`Req. Reh’g 5–6 (citing Ex. 1002 ¶¶ 22, 50). The Decision addresses that
`testimony as follows:
`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
`
`6
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`IPR2019-01544
`Patent 9,017,488 B2
`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. . . .”).
`Dec. 17. Petitioner identifies no factual or legal error in the above
`determination. In the Request, Petitioner argues:
`[T]he 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.
`Req. Reh’g 7.
`Petitioner’s argument does not persuade us to grant rehearing. As
`stated in the Decision, the argument is contrary to the rule that an applicant’s
`disclosure of references in an information disclosure statement is not an
`admission that the references are material to patentability. Dec. 17 (quoting
`37 C.F.R. § 1.97). Moreover, the “nine downhole references” (Req.
`Reh’g 7) were not mentioned or discussed in the Petition. Dr. Wilhite
`identified the general subject matter of the references and provided a list of
`the patent numbers, inventor(s), titles, and excerpts from the abstracts.
`Ex. 1002 ¶¶ 22, 50. But Dr. Wilhite did not rely upon the nine downhole
`references as support for his opinion that Allen is “at least reasonably
`pertinent to the problem addressed in the ’488 patent” (id. ¶ 39 n.6), and he
`provided no explanation or analysis of how they support his opinion.
`Although Petitioner argues that the Board was required to consider the “nine
`
`7
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`IPR2019-01544
`Patent 9,017,488 B2
`downhole references” under the legal standards of Airbus and Randall4
`(Req. Reh’g 6–7), the rules do not require us to consider evidence that is not
`cited or explained in the Petition. See 37 C.F.R. § 42.22(a)(2) (a petition
`must include “a detailed explanation of the significance of the evidence”).
`For all of the foregoing reasons, we are not persuaded to grant
`rehearing based on Petitioner’s argument that Allen is analogous prior art to
`the ’488 Patent.
`
`B. Motivation to Combine Foutsitzis and Allen
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`between the subject matter sought to be patented 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 obviousness inquiry typically requires an analysis of “whether
`there was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977,
`988 (Fed. Cir. 2016) (requiring “articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness”)). Petitioner
`does not satisfy its burden of proving obviousness by employing “mere
`conclusory statements,” but “must instead articulate specific reasoning,
`based on evidence of record, to support the legal conclusion of
`obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380
`(Fed. Cir. 2016).
`Petitioner argues the Board abused its discretion with its holdings that
`Petitioner failed to provide a persuasive reason why a POSA would have
`
`
`4 Randall Manufacturing v. Rea, 733 F.3d 1355 (Fed. Cir. 2013).
`
`8
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`IPR2019-01544
`Patent 9,017,488 B2
`modified Foutsitzis by vaporizing the solvent before delivery as disclosed in
`Allen (Req. Reh’g 8; Dec. 14) and that Petitioner did not explain sufficiently
`why a POSA would have modified Foutsitzis by using the carrier gases
`disclosed in Allen (Req. Reh’g 11; Dec. 15–16). According to Petitioner,
`the Board overlooked the evidence and arguments submitted by Petitioner.
`Req. Reh’g 8–13.
`Petitioner’s arguments do not persuade us to grant rehearing.
`Petitioner does not show that we overlooked or misapprehended any
`argument or evidence sufficient to show a persuasive reason why a POSA
`would have modified Foutsitzis’s contaminant removal method by
`delivering the solvent as a vapor and by using selected ones of the carrier
`gases disclosed by Allen. Merely pointing out the differences between the
`two references (or the absence of differences) is not enough to show a reason
`to modify one reference’s method in view of the teachings of another
`reference. Metalcraft of Mayville, Inc. v. Toro Co., 848 F. 3d 1358, 1367
`(Fed. Cir. 2017) (To show obviousness, “[o]ne needs to provide an
`explanation or reasoning for concluding that one of skill in the art would
`have combined these particular references to produce the claimed
`invention.”).
`Petitioner attempts to bolster its case with arguments that were not
`presented in the Petition. For example, Petitioner argues that Dr. Wilhite’s
`testimony about the nine downhole references “shows that the emphasis on
`downhole use in Allen is not a significant difference from the process
`equipment context in Foutsitzis.” Req. Reh’g 9–10. Petitioner asserts that
`the Board overlooked Allen’s discussion of improving contact as one of the
`benefits of vaporizing the solvent before delivery (id. at 10 n.4 (citing
`Ex. 1004, 4:39–46)), but does not identify where in the Petition this
`
`9
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`IPR2019-01544
`Patent 9,017,488 B2
`disclosure in Allen was cited or discussed. Petitioner asserts that it relied on
`Foutsitzis, instead of Allen, for the disclosure of carrier gases in claim
`element 1.3 (id. at 11), but the cited portion of the Petition addresses claim
`element 1.1, not claim element 1.3. Pet. 22–23. We could not have
`misapprehended or overlooked arguments or evidence that were not
`presented in the Petition.
`Petitioner argues that, under KSR, “there was no reason to require an
`exhaustive analysis” of the efficacy of Petitioner’s proposed combination or
`how it would work. Req. Reh’g 12 (citing KSR, 550 U.S. at 417).
`Petitioner’s argument is based on an incorrect legal standard. While an
`obviousness analysis does not need to be “exhaustive,” it must include
`“some articulated reasoning with some rational underpinning for combining
`[prior art] elements in the manner claimed” and not merely a hindsight
`reconstruction of the claimed invention. KSR, 550 U.S. at 418 (quoting In re
`Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); TriVascular, Inc. v. Samuels,
`488 F.3d 1056, 1066 (Fed. Cir. 2016) (“Although the KSR test is flexible,
`the Board ‘must still be careful not to allow hindsight reconstruction of
`references . . . without any explanation as to how or why the references
`would be combined to produce the claimed invention,’” quoting Kinetic
`Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir.
`2012)).
`
`C. Motivation to Combine Foutsitzis, Allen, and Jansen
`The Decision provides additional reasons for the determination that
`Petitioner’s second ground does not meet the threshold for institution of
`inter partes review. Dec. 18–19. As stated in the Decision, the Petition
`does not explain why a POSA would have used Foutsitzis’s process, as
`
`10
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`IPR2019-01544
`Patent 9,017,488 B2
`modified with Allen’s carrier gas, to remove Jansen’s contaminants and does
`not demonstrate that a POSA would have had a reasonable expectation of
`success in doing so. Id.
`In the Request, Petitioner argues that “the Board’s finding that the
`contaminants in Foutsitzis and Jansen differ was an abuse of discretion”
`because both references discuss the removal of hydrogen sulfide. Req.
`Reh’g 14 (citing Pet. 45–48; Ex. 1003, 4:5–13, 5:50–54; Ex. 1010, 46). In
`addition, Petitioner argues that that we overlooked Dr. Wilhite’s testimony
`that all three references—Foutsitzis, Allen, and Jansen—were directed to the
`removal of substances using a vaporized hydrocarbon solvent and a carrier
`gas. Id. at 13–15.
`Petitioner’s arguments do not persuade us to grant rehearing. The
`Request relies on new arguments and evidence not presented in the Petition.
`For example, the Petition did not rely on Foutsitzis’s teaching regarding the
`removal of hydrogen sulfide. Compare Req. Reh’g 14 (citing Ex. 1003,
`4:5–13, 5:50–54), with Pet. 38–41 (arguing obviousness of claims 7 and 8
`without mentioning or citing these teachings of Foutsitzis). Nor did the
`Petition rely on the Examiner’s findings regarding the inherent disclosure of
`Foutsitzis. Compare Req. Reh’g 14 (citing Ex. 1010, 46), with Pet. 38–41
`(arguing obviousness of claims 7 and 8 without mentioning the prosecution
`history). We could not have misapprehended or overlooked these arguments
`or evidence because they were not presented in the Petition.
`Moreover, Petitioner does not explain how the prior art disclosures
`regarding the removal of hydrogen sulfide suggest the subject matter of
`claims 7 and 8, both of which require removal of an organic contaminant.
`Ex. 1001, 9:47 (“removing said contaminant out of said system”); id. at
`10:3–4 (“wherein said organic contaminant comprises . . .”). Merely
`
`11
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`IPR2019-01544
`Patent 9,017,488 B2
`pointing out similarities among Foutsitzis, Allen, and Jansen is not enough
`to show a reason a POSITA would have used a method disclosed in one
`reference, as modified by the disclosure of another reference, to remove
`contaminants discussed in a third reference. Nor is pointing out similarities
`among the references sufficient to show a reasonable expectation of success
`in achieving the claimed subject matter. Intelligent Bio-Systems, Inc. v.
`Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016) (To prevail,
`a patent challenger must show “a motivation to combine accompanied by a
`reasonable expectation of achieving what is claimed in the patent-at-issue.”).
`
`IV. CONCLUSION
`After considering Petitioner’s arguments for rehearing, we determine
`that Petitioner has not carried its burden of showing that we misapprehended
`or overlooked any matter or that the Decision denying institution of inter
`partes review was an abuse of discretion.
`
`V. ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner’s request for rehearing is denied.
`
`12
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`
`
`IPR2019-01544
`Patent 9,017,488 B2
`FOR PETITIONER:
`
`Eric M. Adams
`John J. Love
`TUMEY LLP
`eadams@tumeyllp.com
`jlove@tumeyllp.com
`
`
`
`FOR PATENT OWNER:
`
`Russell T. Wong
`Domingo M. LLagostera
`BLANK ROME LLP
`rwong@blankrome.com
`dllagostera@blankrome.com
`
`Cabrach J. Connor
`Kevin S. Kudlac
`CONNOR KUDLAC LEE PLLC
`cab@connorkudlaclee.com
`kevin@connorkudlaclee.com
`
`13
`
`
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