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Filed on behalf of: Arkema Inc. and Arkema France
`By: Mark D. Sweet
`
`Mark J. Feldstein
`
`Erin M. Sommers
`
`Charles W. Mitchell
`
`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
`
` erin.sommers@finnegan.com; charles.mitchell@finnegan.com
`
`
`
`
`
`
`
`
`
`
`Filed: April 17, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`ARKEMA INC. AND ARKEMA FRANCE
`Petitioner
`
`v.
`
`HONEYWELL INTERNATIONAL INC.
`Patent Owner
`______________________
`
`PGR2016-00011
`Patent No. 9,157,017
`______________________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`U.S. Patent No. 9,157,017
`PGR2016-00011
`
`Page
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Argument ......................................................................................................... 2
`
`A.
`
`B.
`
`Exhibit 1163 Is Not Hearsay ................................................................. 2
`
`Honeywell’s Motion Includes Improper Substantive
`Arguments ............................................................................................. 5
`
`III. Conclusion ....................................................................................................... 8
`
`
`
`i
`
`
`
`
`
`

`

`U.S. Patent No. 9,157,017
`PGR2016-00011
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`FLIR Sys., Inc. v. Leak Surveys, Inc.,
`IPR2014-00411, Paper 113 at 5 (PTAB Sept. 3, 2015) ........................................ 5
`
` Page(s)
`
`Rules
`
`Fed. R. Evid. 801(c) ................................................................................................... 2
`
`Regulations
`
`37 C.F.R. § 42.20(c) ................................................................................................... 2
`
`37 C.F.R. § 42.62(a) ................................................................................................... 2
`
`Other Authority
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48765 (Aug. 14,
`2012) ..................................................................................................................... 6
`
`
`
`ii
`
`
`
`

`

`U.S. Patent No. 9,157,017
`PGR2016-00011
`
`Petitioner Arkema Inc. and Arkema France opposes the Motion to Exclude
`
`(Paper 38) filed by Patent Owner Honeywell International Inc. on April 3, 2017.
`
`I.
`
`Introduction
`
`Honeywell moves to exclude Exhibit 1163, a declaration submitted by Dr.
`
`Takashi Shibanuma in an inter partes reexamination of a related Honeywell patent,
`
`as alleged inadmissible hearsay. Exhibit 1163 is not hearsay, however, because
`
`Arkema does not offer it to prove the truth of the matter asserted therein (i.e.,
`
`Daikin’s subjective reasons for neither requesting examination of Inagaki (Ex.
`
`1012) nor commercializing the refrigerants (including R-1234yf) disclosed therein
`
`in 1992). Instead, Arkema offers Exhibit 1163 for the limited, non-hearsay
`
`purpose of cross-examining and impeaching Dr. Bivens regarding his baseless
`
`assertion that Daikin—the assignee of Inagaki—allegedly perceived some
`
`technical deficiencies with the refrigerants Inagaki specifically describes. Thus,
`
`for this reason alone, Honeywell’s motion to exclude should be denied.
`
`Furthermore, Honeywell’s motion is improper, and should be rejected,
`
`because it includes substantive arguments unrelated to the admissibility of Exhibit
`
`1163.
`
`Accordingly, Arkema respectfully requests that the Board deny Honeywell’s
`
`motion to exclude Exhibit 1163.
`
`
`
`1
`
`

`

`U.S. Patent No. 9,157,017
`PGR2016-00011
`
`II. Argument
`Pursuant to 37 C.F.R. § 42.62(a), the Federal Rules of Evidence apply in
`
`Post-Grant Review proceedings. Honeywell has the burden to show it is entitled to
`
`the requested relief. 37 C.F.R. § 42.20(c). Honeywell has not and cannot meet its
`
`burden to exclude Exhibit 1163.
`
`A. Exhibit 1163 Is Not Hearsay
`Honeywell argues that “Arkema offers Exhibit 1163 for the truth of the
`
`matter it asserts,” which, according to Honeywell, is the proposition that “‘[t]here
`
`was no commercial incentive [to commercialize alternative, unsaturated
`
`refrigerants] when Inagaki published in 1992, as the costly R-12 to R-134a
`
`transition was already underway.’” Paper 38 at 4 (quoting Paper 31 at 7)
`
`(Honeywell’s alterations). But Arkema does not rely on Exhibit 1163 for this
`
`proposition or the truth of any statement therein. As a result, Exhibit 1163 is not
`
`hearsay. FRE 801(c) (Hearsay is “a statement that: (1) the declarant does not make
`
`while testifying at the current trial or hearing; and (2) a party offers in evidence to
`
`prove the truth of the matter asserted in the statement.”) (emphasis added).
`
`Instead, although obviousness rests on what Inagaki objectively disclosed to
`
`a person of ordinary skill in the art as opposed to a company’s undisclosed beliefs
`
`or intentions as Dr. Bivens seems to imply, Arkema cites other evidence to
`
`establish the absence of an economic incentive to develop low-GWP refrigerants
`
`
`
`2
`
`

`

`U.S. Patent No. 9,157,017
`PGR2016-00011
`
`when Inagaki was filed in 1990. See Paper 31 at 7-8 (citing Exs. 1002 ¶¶ 71-83,
`
`391; 1015 at 1; 1114 at 723; 1115 at 138; 1182 at 9-10). Honeywell itself admits
`
`that Arkema did not “directly cite or rely on” Exhibit 1163 (Paper 38 at 7), which
`
`should be the end of its motion to exclude.
`
`Exhibit 1163 is used for the non-hearsay purpose of impeaching Dr. Bivens’
`
`baseless suggestion that Daikin allegedly perceived some technical deficiencies
`
`with the Inagaki refrigerants (Ex. 1012). Specifically, in his declaration in this
`
`proceeding (Ex. 2126), Dr. Bivens asserts that “[t]he only logical conclusion from
`
`this is that Inagaki, like all others skilled in the art at that time, presumed that all of
`
`the compounds covered by its formula would share the same toxicity and other
`
`concerns.” Ex. 2126 ¶ 91 (emphasis added). Dr. Bivens’ position in this
`
`proceeding simply echoes his similar opinion from an earlier reexamination of a
`
`related patent (Ex. 1162 ¶ 8), to which Dr. Shibanuma—the head of Daikin’s new-
`
`refrigerant development group during the relevant timeframe—responded that
`
`Daikin’s decision not to request examination of Inagaki was a business decision
`
`based on the fact that the industry had already selected R-134a as the replacement
`
`for R-12.1 See Ex. 1163 ¶¶ 1, 15.
`
`1 While Honeywell asserts that Exhibit 1163 was “prepared for an entirely separate
`
`inter partes reexamination concerning a different patent,” Paper 38 at 4,
`
`
`
`
`
`3
`
`

`

`U.S. Patent No. 9,157,017
`PGR2016-00011
`
`Exhibit 1163 is relevant for the non-hearsay purpose of cross-examining and
`
`impeaching Dr. Bivens on his baseless assertion that Daikin allegedly perceived
`
`some technical deficiencies with the Inagaki refrigerants. Dr. Bivens’ failure to
`
`consider Dr. Shibanuma’s declaration (Ex. 1177 at 29:6-30:18; see also Paper 38 at
`
`5 (“Dr. Bivens had never even seen it”)) together with his admission that he, in
`
`fact, did not know why Daikin did not pursue Inagaki (Ex. 1177 at 31:13-32:21),
`
`impeaches his assertion that the only reasonable inference is that Daikin viewed
`
`the R-1234yf refrigerant they specifically disclosed as technically unviable. This
`
`impeachment of Dr. Bivens stands irrespective of the truth of the Shibanuma
`
`declaration (i.e., irrespective of whether Dr. Shibanuma’s statements accurately
`
`reflect Daikin’s subjective decision-making process in 1992).
`
`This impeachment of Dr. Bivens also demonstrates the baselessness of
`
`Honeywell’s attempts here (and presumably at the oral hearing) to spin Dr. Bivens’
`
`pure supposition that “presumed” toxicity was the “only logical conclusion” (Ex.
`
`2126, ¶91) as an implied factual “understanding of why Daikin abandoned
`
`
`Honeywell itself submitted two declarations of its own interested employee-
`
`witnesses from that very same “entirely separate” proceeding before Arkema
`
`introduced Exhibit 1163 for the limited purpose of cross-examining Dr. Bivens.
`
`Exs. 2101 (Winick Declaration); 2103 (Thomas Declaration); see Paper 36.
`
`
`
`4
`
`

`

`U.S. Patent No. 9,157,017
`PGR2016-00011
`
`Inagaki.” Paper 38 at 2 (emphasis added). That is, as the testimony addressing Ex.
`
`1163 shows, Dr. Bivens had no understanding as to why Daiken did not pursue the
`
`Inagaki application. Ex. 1177 at 31:13-32:21 (“You asked me if I have no factual
`
`information on their business decision. I have no factual information . . . . I come
`
`to my own conclusion . . . .”).
`
`Finally, unlike a jury, the Board is quite capable of distinguishing between
`
`Arkema’s proper, non-hearsay use of Exhibit 1163 (to cross-examine and impeach
`
`Dr. Bivens) and any improper hearsay use of this exhibit. See FLIR Sys., Inc. v.
`
`Leak Surveys, Inc., IPR2014-00411, Paper 113 at 5 (PTAB Sept. 3, 2015) (quoting
`
`35 U.S.C. § 6(a)). Thus, because Exhibit 1163 is not hearsay, and because the
`
`Board is capable of affording this exhibit the appropriate weight, Arkema
`
`respectfully requests that the Board deny Honeywell’s motion to exclude.
`
`B. Honeywell’s Motion Includes Improper Substantive Arguments
`Honeywell’s motion is also improper because it includes arguments directed
`
`to the weight of Exhibit 1163 rather than its admissibility. See Paper 38 at 1, 7-8.
`
`The Board has consistently emphasized that it is capable of assigning evidence the
`
`appropriate weight, and that motions to exclude should be limited to addressing
`
`admissibility. See, e.g., FLIR, IPR2014-00411, Paper 113 at 5 (“Arguments
`
`relating to the weight a party wants us to assign evidence should appear only in the
`
`merits documents . . . we are capable of assigning the weight to be given evidence,
`
`
`
`5
`
`

`

`U.S. Patent No. 9,157,017
`PGR2016-00011
`
`including assigning ‘no weight.’”); see also Office Patent Trial Practice Guide, 77
`
`Fed. Reg. 48765, 48767 (Aug. 14, 2012) (“A motion to exclude must explain why
`
`the evidence is not admissible (e.g., relevance or hearsay) but may not be used to
`
`challenge the sufficiency of the evidence to prove a particular fact.”) (emphasis
`
`added).
`
`In addition to being improperly presented in a motion to exclude,
`
`Honeywell’s arguments are meritless. Indeed, rather than being “patently absurd,”
`
`Paper 38 at 1, Daikin’s decision not to request examination of Inagaki in 1992—
`
`regardless of Daikin’s actual subjective motivation—was prescient. Inagaki was
`
`filed on August 31, 1990. Ex. 1012 at 2. But EU regulations mandating the use of
`
`low-GWP refrigerants in AAC, which were enacted in 2006, only entered into
`
`force beginning on January 1, 2011 for new models—more than 20 years after
`
`Inagaki was filed in Japan—and on January 1, 2017 for all new vehicles. Exs.
`
`1002 ¶ 82; 1103 at 6110. And GM did not introduce the first vehicle using R-
`
`1234yf into the U.S. market until 2012. Exs. 1002 ¶ 399; 1092; 1093; 1094. Thus,
`
`implementation of Daikin’s disclosure of R-1234yf in 1990 preceded the industry’s
`
`need for a low-GWP refrigerant.
`
`Honeywell’s extensive arguments about purported commercial financial
`
`incentives (Paper 38 at 7-8) are also belied by early disclosure of Inagaki relative
`
`to the much later regulatory-driven market implementation of low-GWP
`
`
`
`6
`
`

`

`U.S. Patent No. 9,157,017
`PGR2016-00011
`
`refrigerants in AAC. This timing also highlights Honeywell’s improper and
`
`repeated attempts to claim R-1234yf as a refrigerant over a decade after Inagaki
`
`was filed and after it was already commercially implemented in response to
`
`regulatory requirements.2 See Paper 12 at 15 (asserting that the ’017 patent is
`
`entitled to the priority date of Honeywell’s U.S. Patent No. 7,279,451 (Ex. 1021);
`
`Paper 24 at 24 (same); Exs. 1179 (Decision on Appeal in the inter partes
`
`reexamination of Honeywell’s U.S. Patent No. 8,033,120 (Ex. 1024); 1180
`
`(Decision on Appeal regarding Honeywell’s U.S. Patent No. 7,534,366 (Ex. 1023);
`
`1181 (Decision on Appeal regarding Honeywell’s U.S. Patent No. 8,065,882 (Ex.
`
`1009)).
`
`Furthermore, although patenting Inagaki likely would have conferred little
`
`economic benefit on Daikin, preparing and filing Inagaki served an important
`
`purpose. By disclosing its efforts to the public in the form of a published patent
`
`application, Daikin created prior art that should preclude its competitors—
`
`including Honeywell—from later claiming its work with R-1234yf as their own.
`
`Cf. Paper 38 at 8 (“Daikin would have been in the position—as Honeywell
`
`ultimately was—to reap commercial success for the sale of HFO-1234yf into the
`
`
`2 Arkema maintains its position that the ’017 patent is not entitled to any filing date
`
`earlier than March 26, 2014.
`
`
`
`7
`
`

`

`U.S. Patent No. 9,157,017
`PGR2016-00011
`
`market.”) (emphasis added).
`
`III. Conclusion
`For the foregoing reasons, Arkema respectfully requests that the Board deny
`
`Honeywell’s motion to exclude Exhibit 1163.
`
`Respectfully submitted,
`
`Date: April 17, 2017
`
`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
`
`
`
`
`8
`
`

`

`
`
`
`
`U.S. Patent No. 9,157,017
`PGR2016-00011
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing Petitioner’s
`
`Opposition to Patent Owner’s Motion to Exclude Pursuant to 37 C.F.R.
`
`§ 42.64(c) was served electronically via email on April 17, 2017, in its entirety, on
`
`the following:
`
`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
`
`Eugene Goryunov
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Fax: (312) 862-2200
`egoryunov@kirkland.com
`
`
`Patent Owner has consented to electronic service by email to
`HON_PTAB_Service@kirkland.com.
`
`
`
`/Erin M. Sommers/
`Erin M. Sommers, Reg. No. 60,974
`
`
`
`
`
`
`
`
`
`

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