`By: Mark D. Sweet
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`Mark J. Feldstein
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`Erin M. Sommers
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`Charles W. Mitchell
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`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, L.L.P.
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`E-mail: mark.sweet@finnegan.com; mark.feldstein@finnegan.com
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` erin.sommers@finnegan.com; charles.mitchell@finnegan.com
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`Filed: April 17, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`ARKEMA INC. AND ARKEMA FRANCE
`Petitioner
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`v.
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`HONEYWELL INTERNATIONAL INC.
`Patent Owner
`______________________
`
`PGR2016-00011
`Patent No. 9,157,017
`______________________
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(c)
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`TABLE OF CONTENTS
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`U.S. Patent No. 9,157,017
`PGR2016-00011
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`Page
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`I.
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`II.
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`Introduction ...................................................................................................... 1
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`Argument ......................................................................................................... 2
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`A.
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`B.
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`Exhibit 1163 Is Not Hearsay ................................................................. 2
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`Honeywell’s Motion Includes Improper Substantive
`Arguments ............................................................................................. 5
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`III. Conclusion ....................................................................................................... 8
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`i
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`U.S. Patent No. 9,157,017
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`TABLE OF AUTHORITIES
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`Cases
`FLIR Sys., Inc. v. Leak Surveys, Inc.,
`IPR2014-00411, Paper 113 at 5 (PTAB Sept. 3, 2015) ........................................ 5
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` Page(s)
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`Rules
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`Fed. R. Evid. 801(c) ................................................................................................... 2
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`Regulations
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`37 C.F.R. § 42.20(c) ................................................................................................... 2
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`37 C.F.R. § 42.62(a) ................................................................................................... 2
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`Other Authority
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48765 (Aug. 14,
`2012) ..................................................................................................................... 6
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`ii
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`U.S. Patent No. 9,157,017
`PGR2016-00011
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`Petitioner Arkema Inc. and Arkema France opposes the Motion to Exclude
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`(Paper 38) filed by Patent Owner Honeywell International Inc. on April 3, 2017.
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`I.
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`Introduction
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`Honeywell moves to exclude Exhibit 1163, a declaration submitted by Dr.
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`Takashi Shibanuma in an inter partes reexamination of a related Honeywell patent,
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`as alleged inadmissible hearsay. Exhibit 1163 is not hearsay, however, because
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`Arkema does not offer it to prove the truth of the matter asserted therein (i.e.,
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`Daikin’s subjective reasons for neither requesting examination of Inagaki (Ex.
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`1012) nor commercializing the refrigerants (including R-1234yf) disclosed therein
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`in 1992). Instead, Arkema offers Exhibit 1163 for the limited, non-hearsay
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`purpose of cross-examining and impeaching Dr. Bivens regarding his baseless
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`assertion that Daikin—the assignee of Inagaki—allegedly perceived some
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`technical deficiencies with the refrigerants Inagaki specifically describes. Thus,
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`for this reason alone, Honeywell’s motion to exclude should be denied.
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`Furthermore, Honeywell’s motion is improper, and should be rejected,
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`because it includes substantive arguments unrelated to the admissibility of Exhibit
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`1163.
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`Accordingly, Arkema respectfully requests that the Board deny Honeywell’s
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`motion to exclude Exhibit 1163.
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`1
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`U.S. Patent No. 9,157,017
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`II. Argument
`Pursuant to 37 C.F.R. § 42.62(a), the Federal Rules of Evidence apply in
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`Post-Grant Review proceedings. Honeywell has the burden to show it is entitled to
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`the requested relief. 37 C.F.R. § 42.20(c). Honeywell has not and cannot meet its
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`burden to exclude Exhibit 1163.
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`A. Exhibit 1163 Is Not Hearsay
`Honeywell argues that “Arkema offers Exhibit 1163 for the truth of the
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`matter it asserts,” which, according to Honeywell, is the proposition that “‘[t]here
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`was no commercial incentive [to commercialize alternative, unsaturated
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`refrigerants] when Inagaki published in 1992, as the costly R-12 to R-134a
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`transition was already underway.’” Paper 38 at 4 (quoting Paper 31 at 7)
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`(Honeywell’s alterations). But Arkema does not rely on Exhibit 1163 for this
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`proposition or the truth of any statement therein. As a result, Exhibit 1163 is not
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`hearsay. FRE 801(c) (Hearsay is “a statement that: (1) the declarant does not make
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`while testifying at the current trial or hearing; and (2) a party offers in evidence to
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`prove the truth of the matter asserted in the statement.”) (emphasis added).
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`Instead, although obviousness rests on what Inagaki objectively disclosed to
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`a person of ordinary skill in the art as opposed to a company’s undisclosed beliefs
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`or intentions as Dr. Bivens seems to imply, Arkema cites other evidence to
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`establish the absence of an economic incentive to develop low-GWP refrigerants
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`2
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`when Inagaki was filed in 1990. See Paper 31 at 7-8 (citing Exs. 1002 ¶¶ 71-83,
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`391; 1015 at 1; 1114 at 723; 1115 at 138; 1182 at 9-10). Honeywell itself admits
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`that Arkema did not “directly cite or rely on” Exhibit 1163 (Paper 38 at 7), which
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`should be the end of its motion to exclude.
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`Exhibit 1163 is used for the non-hearsay purpose of impeaching Dr. Bivens’
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`baseless suggestion that Daikin allegedly perceived some technical deficiencies
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`with the Inagaki refrigerants (Ex. 1012). Specifically, in his declaration in this
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`proceeding (Ex. 2126), Dr. Bivens asserts that “[t]he only logical conclusion from
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`this is that Inagaki, like all others skilled in the art at that time, presumed that all of
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`the compounds covered by its formula would share the same toxicity and other
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`concerns.” Ex. 2126 ¶ 91 (emphasis added). Dr. Bivens’ position in this
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`proceeding simply echoes his similar opinion from an earlier reexamination of a
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`related patent (Ex. 1162 ¶ 8), to which Dr. Shibanuma—the head of Daikin’s new-
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`refrigerant development group during the relevant timeframe—responded that
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`Daikin’s decision not to request examination of Inagaki was a business decision
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`based on the fact that the industry had already selected R-134a as the replacement
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`for R-12.1 See Ex. 1163 ¶¶ 1, 15.
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`1 While Honeywell asserts that Exhibit 1163 was “prepared for an entirely separate
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`inter partes reexamination concerning a different patent,” Paper 38 at 4,
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`3
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`Exhibit 1163 is relevant for the non-hearsay purpose of cross-examining and
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`impeaching Dr. Bivens on his baseless assertion that Daikin allegedly perceived
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`some technical deficiencies with the Inagaki refrigerants. Dr. Bivens’ failure to
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`consider Dr. Shibanuma’s declaration (Ex. 1177 at 29:6-30:18; see also Paper 38 at
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`5 (“Dr. Bivens had never even seen it”)) together with his admission that he, in
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`fact, did not know why Daikin did not pursue Inagaki (Ex. 1177 at 31:13-32:21),
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`impeaches his assertion that the only reasonable inference is that Daikin viewed
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`the R-1234yf refrigerant they specifically disclosed as technically unviable. This
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`impeachment of Dr. Bivens stands irrespective of the truth of the Shibanuma
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`declaration (i.e., irrespective of whether Dr. Shibanuma’s statements accurately
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`reflect Daikin’s subjective decision-making process in 1992).
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`This impeachment of Dr. Bivens also demonstrates the baselessness of
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`Honeywell’s attempts here (and presumably at the oral hearing) to spin Dr. Bivens’
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`pure supposition that “presumed” toxicity was the “only logical conclusion” (Ex.
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`2126, ¶91) as an implied factual “understanding of why Daikin abandoned
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`Honeywell itself submitted two declarations of its own interested employee-
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`witnesses from that very same “entirely separate” proceeding before Arkema
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`introduced Exhibit 1163 for the limited purpose of cross-examining Dr. Bivens.
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`Exs. 2101 (Winick Declaration); 2103 (Thomas Declaration); see Paper 36.
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`4
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`Inagaki.” Paper 38 at 2 (emphasis added). That is, as the testimony addressing Ex.
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`1163 shows, Dr. Bivens had no understanding as to why Daiken did not pursue the
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`Inagaki application. Ex. 1177 at 31:13-32:21 (“You asked me if I have no factual
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`information on their business decision. I have no factual information . . . . I come
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`to my own conclusion . . . .”).
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`Finally, unlike a jury, the Board is quite capable of distinguishing between
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`Arkema’s proper, non-hearsay use of Exhibit 1163 (to cross-examine and impeach
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`Dr. Bivens) and any improper hearsay use of this exhibit. See FLIR Sys., Inc. v.
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`Leak Surveys, Inc., IPR2014-00411, Paper 113 at 5 (PTAB Sept. 3, 2015) (quoting
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`35 U.S.C. § 6(a)). Thus, because Exhibit 1163 is not hearsay, and because the
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`Board is capable of affording this exhibit the appropriate weight, Arkema
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`respectfully requests that the Board deny Honeywell’s motion to exclude.
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`B. Honeywell’s Motion Includes Improper Substantive Arguments
`Honeywell’s motion is also improper because it includes arguments directed
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`to the weight of Exhibit 1163 rather than its admissibility. See Paper 38 at 1, 7-8.
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`The Board has consistently emphasized that it is capable of assigning evidence the
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`appropriate weight, and that motions to exclude should be limited to addressing
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`admissibility. See, e.g., FLIR, IPR2014-00411, Paper 113 at 5 (“Arguments
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`relating to the weight a party wants us to assign evidence should appear only in the
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`merits documents . . . we are capable of assigning the weight to be given evidence,
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`5
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`including assigning ‘no weight.’”); see also Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48765, 48767 (Aug. 14, 2012) (“A motion to exclude must explain why
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`the evidence is not admissible (e.g., relevance or hearsay) but may not be used to
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`challenge the sufficiency of the evidence to prove a particular fact.”) (emphasis
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`added).
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`In addition to being improperly presented in a motion to exclude,
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`Honeywell’s arguments are meritless. Indeed, rather than being “patently absurd,”
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`Paper 38 at 1, Daikin’s decision not to request examination of Inagaki in 1992—
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`regardless of Daikin’s actual subjective motivation—was prescient. Inagaki was
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`filed on August 31, 1990. Ex. 1012 at 2. But EU regulations mandating the use of
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`low-GWP refrigerants in AAC, which were enacted in 2006, only entered into
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`force beginning on January 1, 2011 for new models—more than 20 years after
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`Inagaki was filed in Japan—and on January 1, 2017 for all new vehicles. Exs.
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`1002 ¶ 82; 1103 at 6110. And GM did not introduce the first vehicle using R-
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`1234yf into the U.S. market until 2012. Exs. 1002 ¶ 399; 1092; 1093; 1094. Thus,
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`implementation of Daikin’s disclosure of R-1234yf in 1990 preceded the industry’s
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`need for a low-GWP refrigerant.
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`Honeywell’s extensive arguments about purported commercial financial
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`incentives (Paper 38 at 7-8) are also belied by early disclosure of Inagaki relative
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`to the much later regulatory-driven market implementation of low-GWP
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`6
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`refrigerants in AAC. This timing also highlights Honeywell’s improper and
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`repeated attempts to claim R-1234yf as a refrigerant over a decade after Inagaki
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`was filed and after it was already commercially implemented in response to
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`regulatory requirements.2 See Paper 12 at 15 (asserting that the ’017 patent is
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`entitled to the priority date of Honeywell’s U.S. Patent No. 7,279,451 (Ex. 1021);
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`Paper 24 at 24 (same); Exs. 1179 (Decision on Appeal in the inter partes
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`reexamination of Honeywell’s U.S. Patent No. 8,033,120 (Ex. 1024); 1180
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`(Decision on Appeal regarding Honeywell’s U.S. Patent No. 7,534,366 (Ex. 1023);
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`1181 (Decision on Appeal regarding Honeywell’s U.S. Patent No. 8,065,882 (Ex.
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`1009)).
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`Furthermore, although patenting Inagaki likely would have conferred little
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`economic benefit on Daikin, preparing and filing Inagaki served an important
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`purpose. By disclosing its efforts to the public in the form of a published patent
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`application, Daikin created prior art that should preclude its competitors—
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`including Honeywell—from later claiming its work with R-1234yf as their own.
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`Cf. Paper 38 at 8 (“Daikin would have been in the position—as Honeywell
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`ultimately was—to reap commercial success for the sale of HFO-1234yf into the
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`2 Arkema maintains its position that the ’017 patent is not entitled to any filing date
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`earlier than March 26, 2014.
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`7
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`market.”) (emphasis added).
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`III. Conclusion
`For the foregoing reasons, Arkema respectfully requests that the Board deny
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`Honeywell’s motion to exclude Exhibit 1163.
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`Respectfully submitted,
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`Date: April 17, 2017
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`By: /Mark J. Feldstein/
`Mark D. Sweet, Reg. No. 41,469
`Mark J. Feldstein, Reg. No. 46,693
`Erin M. Sommers, Reg. No. 60,974
`Charles W. Mitchell, Reg. No. 73,228
`FINNEGAN, HENDERSON, FARABOW,
`
`GARRETT & DUNNER, L.L.P.
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`
`Counsel for Petitioner
`Arkema Inc. and Arkema France
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`8
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`U.S. Patent No. 9,157,017
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing Petitioner’s
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`Opposition to Patent Owner’s Motion to Exclude Pursuant to 37 C.F.R.
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`§ 42.64(c) was served electronically via email on April 17, 2017, in its entirety, on
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`the following:
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`Gregg F. LoCascio, P.C.
`Noah Frank
`KIRKLAND & ELLIS LLP
`615 Fifteenth Street, NW
`Suite 1200
`Washington, DC 20005
`Telephone: (202) 879-5290
`Fax: (202) 879-5200
`glocascio@kirkland.com
`noah.frank@kirkland.com
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`Eugene Goryunov
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Fax: (312) 862-2200
`egoryunov@kirkland.com
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`Patent Owner has consented to electronic service by email to
`HON_PTAB_Service@kirkland.com.
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`
`
`/Erin M. Sommers/
`Erin M. Sommers, Reg. No. 60,974
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