Trials@uspto.gov
`571-272-7822
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`
`
`
`
`Paper 30
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` Entered: May 15, 2015
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BUTAMAX ADVANCED BIOFUELS LLC,
`Petitioner,
`
`v.
`
`GEVO, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00144
`Patent 8,487,149 B2
`
`
`
`Before SHERIDAN K. SNEDDEN, CHRISTOPHER L. CRUMBLEY, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`

`

`IPR2014-00144
`Patent 8,487,149 B2
`
`
`I. INTRODUCTION
`
`Butamax Advanced Biofuels LLC (“Petitioner”) filed a Petition to institute
`
`an inter partes review of claims 1–19 of U.S. Patent No. 8,487,149 B2 (“the ’149
`
`patent”) pursuant to 35 U.S.C. § 311–319. Paper 1 (“Pet.”). Gevo, Inc. (“Patent
`
`Owner”) did not file a preliminary response to the Petition. On May 22, 2014, we
`
`instituted an inter partes review of claims 1–14 and 16–19 on certain grounds of
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`unpatentability alleged in the Petition. Paper 9 (“Dec. to Inst.”). After institution
`
`of trial, the Patent Owner filed a Patent Owner Response (Paper 17, “PO Resp.”),
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`to which Petitioner filed a Reply (Paper 18, “Reply”). An oral argument was held
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`on January 14, 2015.1
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`We have jurisdiction under 35 U.S.C. § 6(c). In this Final Written Decision,
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`issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, we determine
`
`Petitioner has shown by a preponderance of the evidence that claims 1–14 and 16–
`
`19 of the ’149 patent are unpatentable.
`
`A. Related Proceedings
`
`Petitioner informs us of no related litigations. Pet. 2. Concurrent with the
`
`present inter partes review, Petitioner also requested review of, and the Board
`
`instituted trial on, the following claims in patents in the same family as the ’149
`
`patent: claims 1–23 of U.S. Patent No. 8,193,402, Case IPR2014-00142 (PTAB
`
`May 22, 2014) (Paper 13); claims 1–21 of U.S. Patent No. 8,378,160, Case
`
`IPR2014-00143 (PTAB May 22, 2014) (Paper 9); and claims 1–21 of US Patent
`
`No. 8,546,627, Case IPR2014-00250 (PTAB May 22, 2014) (Paper 8). Because of
`
`overlapping issues between the four proceedings, we consolidated the oral hearings
`
`for IPR2014-00250, IPR2014-00142, IPR2014-00143, and IPR2014-00144. See
`
`
`1 A transcript (“Tr.”) of the oral hearing is included in the record. Paper 29.
`
` 2
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`

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`IPR2014-00144
`Patent 8,487,149 B2
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`Paper 21. Additionally, Petitioner requested review of, and the Board instituted
`
`trial on claims 1–15 of unrelated U.S. Patent No. 8,373,012 in IPR2014-00402.
`
`See Paper 11.
`
`B. The ’149 Patent (Ex. 1001)
`
`Transportation fuels are defined as mixtures of typically aliphatic and
`
`(optionally) aromatic hydrocarbons that meet a collection of physical properties
`
`and requirements, as defined in standards such as ASTM D4814 (gasoline), ASTM
`
`D975 (diesel fuel), ASTM D910 (aviation gasoline), and ASTM D1655 (jet fuel).
`
`Ex. 1001, 12:24–17:34. Gasoline, for example, is defined not by its composition,
`
`but by its ability to function in a spark ignition engine according to properties
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`defined by ASTM D4814. Id. at 11:45–52. Such properties include vapor
`
`pressure, energy density, octane number, water solubility, thermal oxidation
`
`stability, gum content, and drivability. Id. at 15:36–54. The properties of gasoline
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`can be adjusted by modifying the amounts and types of organic molecules that
`
`make up the gasoline. Id. For example, the octane number of a gasoline mixture
`
`can be raised by adding high octane components. Id.
`
`The ’149 patent, titled “Renewable Compositions,” describes methods for
`
`making renewable hydrocarbons. Id. at 3:66–4:61. The methods involve
`
`preparing a feedstock from a biomass to serve as a carbon source. Id. at 5:49–6:16.
`
`The feedstock is fermented with microorganism(s) to form C2–C6 alcohols. Id. at
`
`3:65–67. The alcohols are dehydrated to form C2–C6 olefins (alkenes). Id. at 4:5–
`
`7. The olefins are reacted with an oligomerization catalyst to form more highly
`
`alkylated aromatic hydrocarbons, for example, C6–C24 unsaturated oligomers. Id.
`
`at 4:9–11 and 10:1–16. The dehydration step and oligomerization step may be
`
`carried out separately or combined into a single process. Id. at 23:59–63. The
`
`olefins then are reduced to heat-stable saturated hydrocarbons in a hydrogenation
`
` 3
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`IPR2014-00144
`Patent 8,487,149 B2
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`reaction. Id. at 23:64–24:3. The ’149 patent discloses that the compositions
`
`produced according to the methods of the patent meet the fuel-defining ASTM
`
`specifications. Id. at 18:35–47.
`
`C. Illustrative Claim
`
`Claim 1 is the only independent claim of the ’149 patent, and is reproduced
`
`below:
`
`1. A process for preparing renewable hydrocarbons comprising:
`
`(a) culturing a microorganism capable of producing one or
`more C2–C6 alcohols in a fermentor, thereby forming a
`fermentation broth comprising microorganisms and one or more
`C2–C6 alcohols;
`
`(b) removing a portion of the fermentation broth from the
`fermentor;
`
`(c) distilling the portion, thereby forming an alcohol-depleted
`liquid phase and an alcohol-enriched vapor phase comprising water
`and one or more C2–C6 alcohols;
`
`(d) condensing the alcohol-enriched vapor phase formed in
`step (c), thereby forming an alcohol-rich liquid phase and a
`water-rich liquid phase; and
`
`(e) separating the alcohol-rich phase liquid from the water-rich
`liquid phase using a liquid-liquid separator;
`
`(f) dehydrating at least a portion of the one or more C2–C6
`alcohols in the alcohol-rich phase of step (e), thereby forming a
`product comprising one or more C2–C6 olefins;
`
`(g) isolating the one or more C2–C6 olefins;
`
`(h) oligomerizing at least a portion of the one or more C2–C6
`olefins isolated in step (g), thereby forming a product comprising
`one or more C6–C24 unsaturated oligomers; and
`
`(i) hydrogenating at least a portion of the product of step (h) in
`the presence of hydrogen, thereby forming a product comprising
`one or more C6–C24 saturated alkanes;
`
` 4
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`IPR2014-00144
`Patent 8,487,149 B2
`
`
`whereby the product of step (i) itself meets the requirements of
`at least one of ASTM D4814, ASTM D975, ASTM D910, or
`ASTM D1655, or a blend of at least 10% of the product of step (f)
`with a mixture of hydrocarbons meets the requirements of at least
`one of ASTM D4814, ASTM D975, ASTM D910 or ASTM
`D1655; and
`
`wherein said steps (b) – (e) are conducted simultaneously with
`step (a).
`
`Id. at 59:24–60.
`
`D. Prior Art References Alleged to Support Unpatentability Challenges
`
`The following prior art references were asserted in the instituted grounds:
`
`
`ASTM
`D975
`
`ASTM
`D910
`
`Patent/Printed Publication
`Reference
`D’Amore US Patent Pub. No. 2008/0132741 A1
`ASTM
`American Society for Testing and
`Measurement, Standard D4814, “Standard
`D4814
`Specification for Automotive Spark-Ignition
`Engine Fuel,” ASTM International, West
`Conshohocken, PA, http://www.astm.org.
`American Society for Testing and
`Measurement, Standard D975, “Standard
`Specification for Diesel Fuel Oils,” ASTM
`International, West Conshohocken,
`PA,http://www.astm.org.
`American Society for Testing and
`Measurement, Standard D910, “Standard
`Specification for Aviation Gasolines,”
`ASTM International, West Conshohocken,
`PA, http://www.astm.org.
`American Society for Testing and
`Measurement, Standard D1655-07,
`“Standard Specification for Aviation
`Turbine Fuels,” ASTM International, West
`Conshohocken, PA, http://www.astm.org
`
`ASTM
`D1655
`
`Date
`June 5, 2008
`Sept. 2007
`
`Exhibit
`1003
`1014
`
`Aug. 2007
`
`1015
`
`Aug. 2007
`
`1016
`
`July 2007
`
`1017
`
`
`
`Petitioner further relies on the Declaration of Dr. Joseph T. Joseph (Ex.
`
`1030) and the Second Declaration of Dr. Joseph T. Joseph (Ex. 1040).
`
` 5
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`IPR2014-00144
`Patent 8,487,149 B2
`
`
`E. Grounds of Unpatentability Instituted for Trial
`
`The following table summarizes the challenges to patentability that were
`
`instituted for inter partes review:
`
`Challenged Claim(s)
`
`Basis
`
`Reference[s]
`
`1–9, 13–14, and 16–19
`
`§ 102(e) D’Amore
`
`1–9, 13–14, and 16–19
`
`§ 103(a) D’Amore and ASTM D4814
`
`10
`
`11
`
`12
`
`
`
`§ 103(a) D’Amore and ASTM D975
`
`§ 103(a) D’Amore and ASTM D1655
`
`§ 103(a) D’Amore and ASTM D910
`
`II. ANALYSIS
`
`A. Claim Interpretation
`
`We interpret claims using the “broadest reasonable construction in light of
`
`the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b);
`
`see also In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1279–83 (Fed. Cir. 2015)
`
`(“Congress implicitly adopted the broadest reasonable interpretation standard in
`
`enacting the AIA,” and “the standard was properly adopted by PTO regulation.”).
`
`Under that standard, and absent any special definitions, we give claim terms their
`
`ordinary and customary meaning, as would be understood by one of ordinary skill
`
`in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007).
`
`We interpret the following claim terms of the challenged claims as part of
`
`our analysis.
`
` 6
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`IPR2014-00144
`Patent 8,487,149 B2
`
`
`1. “whereby the product of step (f) itself meets the requirements of at
`least one of ASTM D4814. . . .”
`
`Challenged claims 1, 9, and 17 require products produced by the claimed
`
`method to meet requirements of certain standards developed by ASTM
`
`International, such as ASTM D4814, which is the standard specification for
`
`gasoline. Ex. 1014. Petitioner contends that the Patentee of the ’149 patent acted
`
`as his own lexicographer by expressly disavowing ASTM D4814’s distillation
`
`curve from being a requirement for gasoline produced by the claimed process. Pet.
`
`17–18. Petitioner directs our attention to the following portion of the ’149 patent:
`
`The distillation range of gasoline is a property that captures many
`different key aspects of how the gasoline composition behaves in a
`combustion engine to produce usable energy. For example, volatile
`compounds are necessary for proper ignition of the fuel in the
`combustion chamber of the engine. Additionally, less volatile but
`energy dense compounds are required to increase overall fuel
`performance, especially mileage. The distillation curve of a gasoline
`mixture is measured using ASTM method D86, and the specification
`is calibrated by how the typical hydrocarbon mixtures that comprise
`gasoline behave in an engine. When a substantial amount of the
`hydrocarbon component in a gasoline mixture is replaced with a
`different type of organic compound, i.e. an alcohol such as n-butanol
`or isobutanol, the distillation curve will differ from what is specified
`in ASTM D4814, even though the blend has similar, if not identical,
`engine performance compared to unblended gasoline. For this reason,
`the distillation curve specification is not used to describe the gasoline
`compositions of the present invention.
`
`Ex. 1001, 15:64–16:15 (emphasis added).
`
`
`
`Patent Owner does not address claim construction or Petitioner’s contention
`
`regarding the ’149 patent disavowing ASTM D4814’s distillation curve from being
`
`a requirement for gasoline produced by the claimed process. See, e.g., PO Resp.
`
` 7
`
`
`
`8–11.
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`

`

`IPR2014-00144
`Patent 8,487,149 B2
`
`
`We agree with Petitioner that the above disclosure in the ’149 patent
`
`amounts to an express disavowal of ASTM D4814’s distillation curve as a
`
`requirement for products produced according to the method of challenged claims 1,
`
`9, and 17.
`
`2. “the product of step (f)”
`
`The second-to-last clause in claim 1 of the ’149 patent states: “a blend of at
`
`least 10% of the product of step (f).” Petitioner contends that the recitation of “the
`
`product of step (f)” in claim 1 is a scrivener’s error and that the claims are
`
`interpreted properly to read “the product of step (i),” rather than “the product of
`
`step (f).” Pet. 12–16 (citing Ex. 1030 ¶¶ 39–44). Petitioner argues that claim 1’s
`
`recitation of a blend makes logical sense only if read to require a blend of the
`
`product of step (i), the culmination of the whole process, because the product of
`
`step (f) comprises one or more C2–C6 olefins, not one or more C6–C24 saturated
`
`alkanes. Id. at 13. Petitioner further directs us to claims 9–12, which purportedly
`
`reference correctly “the product of step (i)” in claim 1. Id. Petitioner contends that
`
`the scrivener’s error was inserted during prosecution. Id. at 14.
`
`
`
`Patent Owner does not address claim construction or Petitioner’s contention
`
`regarding claim 1’s recitation of “the product of step (f).” See, e.g., PO Resp. 8–
`
`11.
`
`Regardless of Patent Owner’s silence regarding claim construction, we
`
`decline to adopt Petitioner’s proposed claim construction to refer to the product of
`
`step (i). Claims are construed as written, and where claims are susceptible to only
`
`one reasonable interpretation we must construe the claims based on the patentee’s
`
`version of the claim, even if “that interpretation results in a nonsensical
`
`construction of the claim as a whole.” Process Control Corp. v. HydReclaim
`
`Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999); see also Chef America, Inc. v. Lamb-
`
` 8
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`

`IPR2014-00144
`Patent 8,487,149 B2
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`Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004) (“[I]n accord with our settled
`
`practice we construe the claim as written, not as the patentees wish they had
`
`written it.”). Here, claim 1, as written, unambiguously refers to the product of step
`
`(f) and is not subject to different interpretations. We, therefore, construe claim 1 as
`
`written.
`
`B. Principles of Law
`
`To prevail in its challenges to the patentability of the claims, a petitioner
`
`must establish facts supporting its challenges by a preponderance of the evidence.
`
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35 U.S.C.
`
`§ 102 if a prior art reference discloses every limitation of the claimed invention,
`
`either explicitly or inherently. Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047
`
`(Fed. Cir.1995); see MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365
`
`(Fed. Cir. 1999) (holding that “[t]o anticipate, a single reference must teach every
`
`limitation of the claimed invention,” and any limitation not taught explicitly must
`
`be taught inherently and would be so understood by a person experienced in the
`
`field); In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (the
`
`dispositive question is “whether one skilled in the art would reasonably understand
`
`or infer” that a reference teaches or discloses all of the elements of the claimed
`
`invention).
`
`The principle of inherency, in the law of anticipation, requires that any
`
`information missing from the reference would nonetheless be known to be present
`
`in the subject matter of the reference, when viewed by persons experienced in the
`
`field of the invention. We note, however, that “anticipation by inherent disclosure
`
`is appropriate only when the reference discloses prior art that must necessarily
`
`include the unstated limitation, [or the reference] cannot inherently anticipate the
`
`claims.” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed.
`
` 9
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`IPR2014-00144
`Patent 8,487,149 B2
`
`Cir. 2002) (internal citation omitted); see Hitzeman v. Rutter, 243 F.3d 1345, 1355
`
`(Fed. Cir. 2001) (“consistent with the law of inherent anticipation, an inherent
`
`property must necessarily be present in the invention described by the count, and it
`
`must be so recognized by persons of ordinary skill in the art”) (citations omitted);
`
`In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (that a feature in the prior art
`
`reference “could” operate as claimed does not establish inherency). Thus, when a
`
`claim limitation is not set forth explicitly in a reference, evidence “must make clear
`
`that the missing descriptive matter is necessarily present in the thing described in
`
`the reference, and that it would be so recognized by persons of ordinary skill.”
`
`Continental Can Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991) (citations omitted).
`
`It is not sufficient if a material element or limitation is “merely probably or
`
`possibly present” in the prior art. Trintec Indus., Inc. v. Top–U.S.A. Corp., 295
`
`F.3d 1292, 1295 (Fed. Cir. 2002) (citations omitted); see W.L. Gore & Assocs., Inc.
`
`v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983) (anticipation “cannot be
`
`predicated on mere conjecture respecting the characteristics of products that might
`
`result from the practice of processes disclosed in references”) (citation omitted); In
`
`re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (to anticipate, the asserted inherent
`
`function must be present in the prior art).
`
`A claim is unpatentable under 35 U.S.C. § 103(a) 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 question of obviousness is
`
`resolved on the basis of 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 skill in the art; and (4) objective evidence of
`
`
`
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`10
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`IPR2014-00144
`Patent 8,487,149 B2
`
`nonobviousness, i.e., secondary considerations. See Graham v. John Deere Co.,
`
`383 U.S. 1, 17–18 (1966).
`
`We analyze the instituted grounds of unpatentability in accordance with the
`
`above-stated principles.
`
`C. Level of Ordinary Skill in the Art
`
`In determining whether an invention would have been obvious at the time it
`
`was made, 35 U.S.C. § 103 requires us to determine the level of ordinary skill in
`
`the pertinent art at the time of the invention. Graham v. John Deere, 383 U.S. at
`
`17. “The importance of resolving the level of ordinary skill in the art lies in the
`
`necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
`
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
`
`Petitioner contends that a person of ordinary skill in the art at the time of the
`
`’149 patent would have a Ph.D. in Chemistry, Chemical Engineering, or a similar
`
`related discipline and would have experience in organic chemistry and/or fuel
`
`chemistry, as well as transportation fuel production. Pet. 4; Ex. 1030 ¶ 16.
`
`Petitioner argues that, in the alternative, a person of ordinary skill in the art would
`
`have a Bachelor’s degree in Chemistry, Chemical Engineering, or a similar related
`
`discipline and substantial experience in an industry involving organic chemistry
`
`and/or fuel chemistry, as well as transportation fuel production. Pet. 4; Ex. 1030
`
`¶ 16. Patent Owner states that one of ordinary skill in the art at the time of the
`
`’149 patent would have a Ph.D. in Chemistry, Chemical Engineering, or a similar
`
`related discipline and would have experience in fuel chemistry. Tr. 42:21–43:12.
`
`Based on our review of the ’149 patent and the types of problems and solutions
`
`described in the ’149 patent and cited prior art, we conclude a person of ordinary
`
`skill in the art at the time of the ’149 patent would have a Ph.D. degree in
`
`Chemistry, Chemical Engineering, or a similar related discipline and some
`
`
`
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`IPR2014-00144
`Patent 8,487,149 B2
`
`experience in an industry involving organic chemistry and/or fuel chemistry.
`
`Based on the stated qualifications of Joseph T. Joseph, Ph.D. (Ex. 1030 ¶¶ 9–14)
`
`and his Curriculum Vitae (Ex. 1035), Petitioner’s declarant meets the requirements
`
`of this definition. We further note that the applied prior art reflects the appropriate
`
`level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261
`
`F.3d 1350, 1355 (Fed. Cir. 2001).
`
`D. Anticipation of Claims 1–9, 13–14, and 16–19 by D’Amore
`
`Petitioner contends D’Amore anticipates, under 35 U.S.C. § 102(e), claims
`
`1–9, 13–14, and 16–19 of the ’149 patent. Pet. 19–42. For the following reasons,
`
`we determine Petitioner has not shown by a preponderance of the evidence that
`
`claims 1–9, 13–14, and 16–19 are unpatentable under 35 U.S.C. § 102(e).
`
`1. Overview of D’Amore
`
`D’Amore describes an invention useful for the production of intermediate
`
`compounds used in transportation fuels such as gasoline. Ex. 1003 ¶ 20.
`
`Specifically, D’Amore discloses producing isobutanol (a C2–C6 alcohol) by
`
`culturing microorganisms in the presence of carbohydrates. Id. ¶¶ 23, 56.
`
`D’Amore specifically teaches converting isobutanol into butene (a C2–C6 olefin) in
`
`the presence of a catalyst (id. ¶ 56, Fig. 1) and converting dimerized butene into
`
`isooctene (id. ¶¶ 64, 76). Recovered isooctene can be reacted with a hydrogenation
`
`catalyst to produce isooctane. Id. ¶¶ 57, 64, 76. D’Amore discloses that isooctane
`
`produced by the disclosed processes is useful as an additive to transportation fuels,
`
`such as gasoline. Id. at Abstract and ¶¶ 20, 64, 76.
`
`2. Analysis
`
`a. D’Amore Qualifies as 102(e) Prior Art
`
`D’Amore was filed on June 13, 2007, published on June 5, 2008, and claims
`
`priority to U.S. Provisional Application No. 60/814,137 (“the ’137 application”),
`
`
`
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`12
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`IPR2014-00144
`Patent 8,487,149 B2
`
`filed on June 16, 2006. See Ex. 1004. The disclosure in the ’137 application (Ex.
`
`1004) is the same disclosure found in D’Amore (Ex. 1003). Ex. 1030 ¶ 46. Thus,
`
`we conclude that D’Amore qualifies as prior art to the claims of the ’149 patent
`
`under 35 U.S.C. § 102(e) as of the ’137 application’s filing date of June 16, 2006.
`
`b. Independent Claim 1
`
`Petitioner contends D’Amore, as summarized in the overview above,
`
`discloses each limitation of claim 1 of the ’149 patent (Pet. 19–42), except that
`
`D’Amore does not disclose explicitly that its products (e.g., isooctane) meet the
`
`requirements of at least one of ASTM D4814, ASTM D975, ASTM D910, or
`
`ASTM D1655, as recited in claim 1 (id. at 29–30). Petitioner contends, however,
`
`that the isooctane of D’Amore necessarily meets the requirements of, for example,
`
`ASTM D4814 without blending. Id.; see Tr. 9:1–10:3. According to Petitioner,
`
`the product of D’Amore’s process could contain up to 30% contamination with
`
`isobutene and the mixture would still meet the standards in ASTM D4814. Tr.
`
`9:1–18; Ex. 1040 ¶¶ 17–18.
`
`Petitioner relies on two Declarations from Dr. Joseph to support its position.
`
`See Exs. 1030, 1040. Dr. Joseph testifies that isooctane, a product of D’Amore’s
`
`disclosed processes, meets the following criteria set forth in ASTM D4814: (i) the
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`maximum vapor pressure of ASTM D4814 Table 1 (Ex. 1030 ¶¶ 59–60); (ii) the
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`lead content maximum, copper strip corrosion maximum, silver strip corrosion
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`maximum, solvent-washed gum content maximum, sulfur % mass maximum,
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`oxidation stability minimum, and water tolerance of ASTM D4814 (id. ¶¶ 61–65);
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`(iii) the vapor/liquid maximum ratio of ASTM D4814 Table 3 (id. ¶¶ 66–69); (iv)
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`the “Workmanship” requirements of ASTM D4814 (id. ¶ 70); and (v) the
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`antiknock requirements of ASTM D4814 (id. ¶ 71). Dr. Joseph also testifies that
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`D’Amore’s process necessarily would result in the production of isooctane free of
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`lower molecular weight hydrocarbons, such as isobutene, and the recovered
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`isooctane would meet the requirements of ASTM D4814 on its own. Ex. 1040
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`¶¶ 11–12. Dr. Joseph opines that a person of skill in the art would not be
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`concerned overly by the presence of “contaminating” isobutene and that the
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`isooctane produced by D’Amore’s process still necessarily would meet the
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`requirements of ASTM D4814 on its own or when blended, even if contaminating
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`amounts isobutene were present. Id. ¶ 14.
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`Patent Owner disagrees with Petitioner’s characterization of D’Amore and
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`argues that D’Amore does not disclose, directly or inherently, a process for
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`producing (1) “renewable hydrocarbons” which meet the requirements of at least
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`one of ASTM D975, ASTM D910, or ASTM D1655, or (2) a blend of at least 10%
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`of the product renewable hydrocarbons produced by the claimed process which
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`meet the requirements of at least one of ASTM D975, ASTM D910, or ASTM
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`D1655. PO Resp. 4–5. Patent Owner argues that the isooctane produced by
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`D’Amore may not be of sufficient purity to meet the standards recited in claim 1.
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`Id. at 6. According to Patent Owner,
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`the process of D’Amore may just as readily produce isooctene having
`sufficiently high, e.g., isobutene or other low molecular weight alkene
`content, whereby after hydrogenation the isooctane produced contains
`enough lower molecular weight hydrocarbons such that it fails to
`meet, e.g., (i) the maximum vapor pressure standard of ASTM D4814
`Table 1. For example, a fuel meeting the requirements of ASTM
`D4814 (distillation class AA) can have a maximum vapor pressure of
`54 kPa. Isobutane has a vapor pressure of 760 mm Hg (101.325 kPa)
`at –11.7ºC. Thus, even the presence of a small amount of, e.g.,
`isobutane in the isooctane allegedly provided by the process of
`D’Amore could result in a product that itself fails to meet the
`requirements of, e.g., ASTM D4814. . . .
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`Id. at 6 (citing Ex. 1003, 74–76; Ex. 1004, Table 1). Patent Owner concludes that
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`D’Amore’s failure necessarily and inevitably to produce a product that meets claim
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`1 prohibits a finding that D’Amore inherently anticipates claim 1. Id. at 6–7.
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`We are unpersuaded by Petitioner’s arguments. First, we do not find that
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`D’Amore discloses a method of blending C2–C6 olefins with hydrocarbons that
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`necessarily would meet the “whereby” clause of claim 1. Pet. 30; Ex. 1030 ¶¶ 56–
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`72. According to Petitioner, a blend of 10% of the isooctane made by D’Amore’
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`process mixed with hydrocarbons that already meet ASTM D4814 requirements,
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`also would meet the requirements of ASTM D4814. Petitioner’s argument
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`regarding the recited blend of hydrocarbons is premised on the blend being created
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`using the product of step (i) and not step (f). Pet. 30; Ex. 1030 ¶ 72. The
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`“whereby clause” of claim 1, however, requires that a blend of the product of step
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`(f) with a mixture of hydrocarbons meets the specifications set forth in ASTM
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`D4814. As discussed above, we do not interpret the unambiguous language of
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`claim 1 to refer to the product of step (i), rather, we read the claim as written to
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`require the blending of the product of step (f) blended with a mixture of
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`hydrocarbons. See supra, Section II.A.2. Petitioner proffers insufficient evidence
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`that 10% of the C2–C6 olefins produced by D’Amore mixed with hydrocarbons
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`would meet the standards specified in claim 1. Therefore, we do not find that
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`D’Amore discloses a method of blending C2–C6 olefins with hydrocarbons that
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`necessarily would meet the “whereby” clause of claim 1.
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`Second, we are unpersuaded by Petitioner’s argument that isooctane
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`produced by the process disclosed in D’Amore necessarily and inherently meets
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`the specifications in ASTM D4814 as required in the “whereby” clause of claim 1.
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`Pet. 29; see Ex. 1001, 59:52–57. Although we credit the testimony of Dr. Joseph
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`regarding the characteristics of pure isooctane and the impact of certain impurities
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`on whether isooctane would meet the criteria set forth in ASTM D4814, we find
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`insufficient support for Dr. Joseph’s statement that “D’Amore’s process would
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`necessarily result in the production of isooctane free of lower molecular weight
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`hydrocarbons, such as isobutane.” See Ex. 1040 ¶ 11. Dr. Joseph’s testimony
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`appears to be directed to the characteristics of pure isooctane (Tr. 7:16–20),
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`however, D’Amore does not disclose the purity level of the isooctane produced by
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`its process. See Ex. 1003 ¶ 76. Despite the information provided by Dr. Joseph,
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`we have insufficient information to determine how much isooctene is converted in
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`D’Amore to isooctane. Id.; Ex. 1030 ¶¶ 50–53; Ex. 1040 ¶¶ 10–11. Furthermore,
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`we have insufficient evidence to determine (1) what low molecular weight
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`hydrocarbons may result from D’Amore’s process or (2) the level of other low
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`molecular weight hydrocarbons that may be present. The missing crucial link in
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`Petitioner’s analysis is the difference between pure isooctane as opined by Dr.
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`Joseph and the products possibly produced in D’Amore. Thus, we conclude that
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`Petitioner has not carried its burden to show that D’Amore’s product is pure
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`isooctane, that the only possible contaminant is isobutene, that the isobutene is less
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`than 30%, or that D’Amore’s product has the exact properties as discussed by Dr.
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`Joseph.
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`Accordingly, we find that Petitioner has not shown by a preponderance of
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`the evidence that claim 1 is anticipated under 35 U.S.C. § 102(e) by D’Amore.
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`c. Dependent Claims
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`Claims 2–9, 13–14, and 16–19 depend from claim 1, and Petitioner contends
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`that D’Amore discloses embodiments that teach aspects of each dependent claim.
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`Pet. 30–40; Ex. 1030 ¶¶ 48–92. Patent Owner does not provide separate
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`contentions regarding additional limitations recited in the dependent claims. After
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`careful consideration of the language recited in claims 2–9, 13–14, and 16–19, we
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`are unpersuaded that D’Amore anticipates these dependent claims for the same
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`reasons discussed with respect to claim 1.
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`Accordingly, we find that Petitioner has not shown by a preponderance of
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`the evidence that claims 2–9, 13–14, and 16–19 are anticipated under 35 U.S.C.
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`§ 102(e) by D’Amore.
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`E. Obviousness of Claims 1–9, 13–14, and 16–19 over the Combination of
`D’Amore and ASTM D4814
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`Petitioner argues that the combination of D’Amore, as summarized in the
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`overview in Section II.D.1 above, and ASTM D4814 renders each of claims 1–9,
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`13–14, and 16–19 obvious. Pet. 41–48. For reasons that follow, we determine
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`Petitioner has shown by a preponderance of the evidence that claims 1–9, 13–14,
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`and 16–19 are unpatentable under 35 U.S.C. § 103(a).
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`1. Overview of ASTM D4814
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`ASTM D4814 describes standard specifications for automotive spark-
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`ignition engine fuel (i.e., automotive fuel or gasoline). Ex. 1014 ¶ 1.3. Such
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`specifications include the materials and manufacture of automotive fuel, how the
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`automotive fuel is tested, and the required performance characteristics of such fuel.
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`Id.
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`2. Analysis
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`a. Independent Claim 1
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`Petitioner contends D’Amore, as summarized in the overview above,
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`discloses each limitation of claim 1 of the ’149 patent (Pet. 19–29), except that
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`D’Amore does not disclose explicitly that its products (e.g., isooctane) meet the
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`requirements of at least one of ASTM D4814, ASTM D975, ASTM D910, or
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`ASTM D1655, as recited in claim 1 (id. at 29, 42). Petitioner further contends that
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`a person of ordinary skill in the art would have had reason to reach the invention
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`recited in claim 1 based on the combined teachings of D’Amore and ASTM D4814
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`(Ex. 1014), which discloses the standards for automotive fuel (i.e., gasoline) within
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`the fuel industry. Pet. 42–48. According to Petitioner, although D’Amore does not
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`disclose explicitly renewable isooctane meeting the standards set forth in ASTM
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`D4184, a person of ordinary skill in the art would have had reason to review and
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`meet the ASTM specifications when preparing automotive fuel, because the ASTM
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`standards are used by governmental agencies to regulate the transportation fuel
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`industry. Pet. 42 (citing Ex. 1030 ¶¶17–19, 101–105). Petitioner reasons that a
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`person of ordinary skill in the art would have had reason to modify the products of
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`D’Amore to meet the ASTM D4814 specification in order to have a commercially
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`useful fuel. Pet. 43; Ex. 1030 ¶¶ 100–102.
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`Petitioner asserts that producing a renewable isooctane using D’Amore’s
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`process that meets the specifications of ASTM D4184 would have been obvious to
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`a person of ordinary skill in the art and would have required no more than routine
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`optimization. Id. at