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`IPR2016-00577, Paper No. 29
`March 06, 2017
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`trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ADAMA MAKHTESHIM LTD.,
`Petitioner,
`
`v.
`
`FINCHIMICA S.P.A.,
`Patent Owner.
`____________
`
`Case IPR2016-00577
`Patent 8,304,559 B2
`____________
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`Held: February 14, 2017
`____________
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`
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`BEFORE: RICHARD E. SCHAFER, SALLY GARDNER
`LANE, and DEBORAH KATZ, Administrative Patent Judges.
`
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday,
`February 14, 2017, commencing at 10:02 a.m., at the U.S.
`Patent and Trademark Office, 600 Dulany Street, Alexandria,
`Virginia.
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`Case IPR2016-00577
`Patent 8,304,559 B2
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`
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`
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`GARY J. GERSHIK, ESQUIRE
`ERIC EISENBERG, ESQUIRE
`Cooper & Dunham LLP
`30 Rockefeller Plaza, 20th Floor
` New York, New York 10112
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`
`E. ANTHONY FIGG, ESQUIRE
`SETH E. COCKRUM, Ph.D.
`Rothwell Figg
`607 14th Street, N.W.
`Suite 800
`Washington, D.C. 20005
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`ON BEHALF OF PATENT OWNER:
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`Case IPR2016-00577
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`P R O C E E D I N G S
`- - - - -
`JUDGE LANE: Okay. Good morning again. Can I
`find out who we have here for Petitioner?
`MR. GERSHIK: Your Honor, Gary Gershik for
`Petitioner.
`JUDGE LANE: And who do you have with you?
`MR. GERSHIK: Eric Eisenberg, an associate. We're
`both from the firm of Cooper & Dunham.
`JUDGE LANE: Okay. Thank you. And for Patent
`Owner?
`MR. FIGG: Good morning, Your Honor. Tony Figg
`for the Patent Owner. With me is Seth Cockrum. We're both for
`Finchimica.
`JUDGE LANE: Okay. Good morning.
`So I believe in the order we said that each side would
`have 20 minutes -- I'm sorry, 30 minutes and each side may
`reserve time for rebuttal. So we'll start with Petitioner and do you
`have any demonstratives?
`MR. GERSHIK: Yes, we do. Can we hand you some?
`They're also going to be on the screen.
`JUDGE LANE: Okay. And I know that you filed
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`MR. GERSHIK: And we filed them as well, but we can
`hand you hard copies.
`JUDGE LANE: Great. Thank you.
`Would you like to reserve some time for rebuttal?
`MR. GERSHIK: Yes, Your Honor. I'd like to reserve
`10 minutes, if I could, and speak for 20 minutes. I'll try to go
`through this quickly.
`JUDGE LANE: All right. So 20 minutes. Okay.
`MR. GERSHIK: Good morning. We're here on behalf
`of the Petitioner. The patent in question is the Finchimica '559
`patent and I'll reply to -- is Claim 1 of the '559 patent together
`with a simplified version of that claim.
`Essentially the claim is to a method for the preparation
`of fipronil through oxidation of the sulfide precursor of fipronil.
`Fipronil is the sulfoxide, the oxidized version of that sulfide
`precursor in the presence of DCA, dichloroacetic acid, and an
`oxidizing agent, which is opened-ended as been construed by the
`Decision Instituting Trial.
`And there is a negative limitation in the Claim 1
`wherein the oxidation is conducted in the absence of
`trichloroacetic acid or TCA and/or -- and we'll be talking about
`that term at some point -- and/or TCPA, trichloroperacetic acid,
`which is the peroxide form, the oxidized form, if you will, of
`TCA.
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`On to slide 3, slide 3 a claim element chart aligning the
`claim elements with the references that we cited. Our primary
`reference -- and I emphasize it's important here, the order of
`references is important. Our primary reference is the European
`patent, what we refer to as EP '117. That is our primary
`reference.
`In particular, although we cite the entire disclosure, in
`particular we focused on Example 1. And if we align the
`elements of Example 1 of the EP '117, we see that it is a method
`that prepares fipronil. It does so through the oxidation of the
`sulfide precursor of fipronil. It does so in the presence of a
`compound called dichloromethane or DCM.
`The oxidizing agent in that example is mCPBA,
`meta-chloroperbenzoic acid, and it is conducted in the absence of
`TCA and in the absence of TCPA. There's no mention of those
`two elements. And so if you align these elements of Example 1
`with the claim elements of Claim 1 -- and, by the way, Claim 1 is
`the only claim at issue that Patent Owner has not argued for the
`dependent claims in their Response.
`If you align it, you'll see the only distinction between
`Example 1 of the '117 and the Claim 1 is that Example 1 uses
`DCM, whereas Claim 1 of the '559 requires DCA.
`We've then cited another reference, the '440, WO '440
`reference also known as the Gharda reference, and we've cited it
`as a secondary reference to show the interchangeability of DCM
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`and DCA and you'll see that there are two examples in that '440
`reference. Those two examples also make fipronil. They also
`make it from the sulfide precursor of fipronil.
`One example does so in the presence of dichloromethyl.
`That's Example 2, which is the same dichloromethyl that's in
`Example 1 of the '117, and Example 1 of the '440 does so in the
`presence of DCA.
`Now, there's also an oxidizing agent there, hydrogen
`peroxide, H2O2, and there is also TCA in those two examples.
`The TCA is in mixture with the DCA. Neither examples mention
`TCPA, although the rest of the '440 does talk about TCPA.
`JUDGE LANE: Or when the TCA is combined with
`the oxidizing agent, hydrogen peroxide, then you get TCPA,
`right?
`
`MR. GERSHIK: That is a theory. That is a theory
`that's never been established not on this record.
`JUDGE LANE: But Gharda says that.
`MR. GERSHIK: Gharda says that that is a preferred
`embodiment. It says that it could happen in a preferred
`embodiment.
`So if you look at these two references, all we need to do
`is change or interchange the DCM of Example 1 with DCA and
`we would end up with an example, which is within the scope of
`Claim 1, and the '440 shows you that the DCA and DCM are
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`interchangeable by example. By empirical evidence it shows that
`the two components are interchangeable.
`I know there's a debate about what they're called,
`whether they're solvents or whether they're melting point
`depressants, and we'll get to that. But if you do that combination,
`you wind up with an example that's within the scope of the claim.
`Why would you change the DCM of the '117 with the
`DCA of Example 1 of the '440, and that's on slide 4. There are
`multiple rationales that we've put on record in our Petition. One
`rationale is to provide just an alternative synthesis of fipronil.
`The claim, Claim 1, is open-ended. It is not limited by any yield
`or any sort of particular benefits of the reaction. All it requires is
`that some fipronil be produced and simply providing an
`alternative synthesis is enough motivation. Certainly chemists
`look for alternatives for various reasons, including patent
`blockage for alternative synthesis, and there is that motivation to
`look for all sorts of an alternative synthesis of fipronil and the
`combination of the '117 and the '440.
`JUDGE LANE: Let me just ask you, so you say -- how
`would you know that that would work as an alternative synthesis?
`How do you know replacing the DCM with the DCA would give
`you -- so you're saying any yield.
`MR. GERSHIK: Well, the claim is open to any yield
`and we can tell from Example 1 of the '440 there's a substantial
`amount of DCA present there, far more than -- several times more
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`than the amount of precursor. Even though it's present there with
`the TCA, it's still present there and it does not interfere in the
`production of fipronil. In fact, the yield is slightly higher by 1.4
`percent.
`JUDGE LANE: And does Dr. Gribble, does he provide
`testimony to say --
`MR. GERSHIK: Correct. Dr. Gribble does talk about
`that and why he would expect that if the Example 1 of the '117
`proceeded to make fipronil in the presence of DCM that he would
`expect it to do so in the presence of DCA as well. DCM is
`somewhat inert basically. It's an inert solvent. The oxidant in
`that reaction is mCPBA and it proceeds to make fipronil and
`there's no theory that says DCM participates in the reaction in any
`way.
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`DCA being an acid, you know, there's literature
`suggesting that acids would speed up these type of oxidation
`reactions. DCA being an acid would actually be expected to be
`better than DCM. But regardless, that's not what we are --
`JUDGE LANE: And you're saying at the least it
`wouldn't hurt anything.
`MR. GERSHIK: It would not hurt anything. It would
`not hurt -- it could not be any worse than DCM. It would be at
`least as good as DCM. Now, that certainly is the expert
`testimony we have. I don't think there is much disagreement, any
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`substantive disagreement that fipronil would form if you replaced
`DCM with DCA.
`And that really goes to point two to obtain an improved
`synthesis of fipronil. So if you looked at Example 1 and 2 of the
`'440, you would see that there are substantially identical
`examples, except that one uses DCM with TCA and the other
`one, Example 1, uses DCA in combination with TCA to make
`fipronil. That's the only change. That's the only substantive
`change between those examples and you see that that example
`works and you see that that example produces slightly more yield,
`1.4. For whatever it's worth, that is still more and that would
`peak people's interests to explore why was that happening.
`There's also a discussion in that example itself that the
`product fipronil appears to precipitate. It is also mentioned in
`Example 1 that the product fipronil appears to precipitate after it's
`being formed. There's no such discussion of fipronil precipitating
`in Example 2 of the '440.
`Now, that could also peak somebody's interest to say,
`well, the only DCA could be causing it to precipitate.
`Precipitation generally is sort of preferred in many instances
`because it makes the separation of the product from the reaction
`easier.
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`JUDGE LANE: Is that argument in Dr. Gribble's
`testimony?
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`MR. GERSHIK: That argument is not in Dr. Gribble's
`original declaration. That argument is in response to Patent
`Owner's argument that DCA provided an unexpected advantage
`that appeared in Patent Owner's Response. We've said, well, that
`argument is actually not unexpected. That argument actually
`comes right across from Example 1 of the '440. We elaborated on
`that in our Reply, but that is not in Dr. Gribble's original
`declaration, the precipitation point only.
`JUDGE LANE: Okay.
`MR. GERSHIK: And, of course, you would also look
`to avoid the disadvantages associated with DCM. As a solvent,
`DCM has problems. It can be toxic and so you would look to
`avoid using DCM if you could. And the fact that in the '440 it
`shows you that you could replace DCM with DCA and the
`fipronil is formed and forms slightly to a higher yield, that's
`another motivation to try to explore DCA and replace the DCM
`with the DCA, any combination of the above rationales that we've
`presented for making the change.
`JUDGE LANE: I notice you don't in this list at least
`talk about the use as a melting point depressant. Is that an
`argument you're not making?
`MR. GERSHIK: No, no. We could -- that's actually
`right up front, Your Honor, right up front. Maybe I didn't read
`that line. It's sort of as an alternative solvent or so-called melting
`point depressant. You know, if we go to the question of what is a
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`melting point depressant, maybe that -- we'll get to that. Maybe
`we'll skip over slide 5 for now, although it is an important slide to
`show that the two are interchangeable, and talk about really slide
`7 real quick about you raise this issue of melting point
`depression.
`So melting point depression is a concept. You know,
`our expert had a problem with understanding what it means. You
`cannot change the melting point of a compound. A compound
`has the property, has a melting point and you cannot change its
`melting point. It's a fixed property. No one would argue that it
`can be changed.
`The only thing you can you do is if you mix
`components together, the resulting mixture will have a different
`melting point than each of the starting components. Okay?
`So it has to be -- so this wording of melting point
`depressant in the '440 has to be sort of interpreted and Patent
`Owner has offered expert testimony interpreting it, but Patent
`Owner only offered one place where that term appears in the '440.
`There's been no other citation to any other piece of literature
`which uses that term and so we need to understand what is that
`term talking about.
`If a POSA were to read through the '440, a POSA would
`also see that the '440 uses the word solvent and solvent mixture
`interchangeably to some degree and particularly so in the
`example. So DCM is in the '440, in the body of the '440, is called
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`a melting point depressant. But if you look at Example 2 of the
`'440, there's a line around page 11, page 11 around lines 15 to 16,
`which says the solvent dichloromethane. So the '440 itself is
`calling DCM clearly the solvent.
`JUDGE LANE: So would a solvent like DCM or DCA,
`because they're liquid at room temperature, just naturally act as --
`MR. GERSHIK: That's another --
`JUDGE LANE: -- if you put it in with something that's
`solid at room temperature would always act as a melting point
`depressant.
`MR. GERSHIK: As a solvent melting point depressant.
`That's exactly the point. We've elicited that exact testimony from
`Patent Owner's expert that every liquid, every liquid is a solvent
`and it will dissolve things. The only question is what will it
`dissolve, but every liquid will dissolve something and that's just
`an old fact. And both DCM and DCA are known liquids and
`they've both been used as solvents in literature.
`And, in fact, the '440 itself has this sort of nomenclature
`issue of calling DCM the solvent. It's not as clear about DCA in
`terms of calling it a solvent. It simply calls the mixture of TCA
`and DCA, the mixture it calls that the solvent mixture in the first
`sentence of Example 1.
`So, again, a person of skill reading through these
`examples, first of all, would start asking the question, what is a
`melting point depressant? There is no such thing per se. And
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`then would read through these examples and see that these
`components are being referred to as solvents.
`But regardless of what it's called, it's clearly liquifying
`material for the purpose of conducting an oxidation reaction.
`Both DCM and DCA are doing that. They're liquifying
`components and they're liquifying components that form fipronil
`and fipronil is formed in their presence.
`And we've cited a number of other evidence that
`suggests that this melting point depressant name or term and the
`argumentation around it is really a distinction without a
`difference. In fact, it's hard to separate what is a liquid melting
`point depressant and what is a solvent. We've not elicited any
`testimony to make a distinction about what is a liquid melting
`point. How is a liquid melting point depressant different from a
`solvent or liquid that's just a solvent and Patent Owner's experts
`acknowledge that, you know, there's certainly overlap between
`the terms.
`Okay. So that's the point of slide --
`JUDGE LANE: You say the prior art has shown that
`each could be used to create -- each of I guess DCM and DCA
`could be used to create a liquid environment for components,
`including the mCPBA. Where is that in the prior art that the --
`the combination of DCA and mCPBA?
`MR. GERSHIK: There is no prior art of DCA and
`mCPBA. There is only --
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`JUDGE LANE: Okay. So DCM and --
`MR. GERSHIK: -- DCM and mCPBA.
`JUDGE LANE: But you don't have a reference.
`Neither of the references show --
`MR. GERSHIK: So if you look at the possibilities, we
`have an example of TCA being liquified by DCM and TCA being
`liquified by DCA. That's in the '440. We have an example in the
`'117 of mCPBA being liquefied by DCM. So the question would
`be, is there any doubt in anybody's mind that mCPBA would also
`be liquified by DCA in the context of those empirical examples
`that exist in the literature as well as other literature that talk about
`DCA being a solvent for various other things.
`Okay. So if I were just to go back to a previous slide
`that I skipped over, slide 5, DCA and DCM are interchangeable.
`That comes across directly from the '440 and that is what we're
`citing it for. We're citing it for the concept that the two are
`interchangeable.
`Examples 1 and 2 in the '440 provide empirical
`evidence that the two are interchangeable and they work to make
`fipronil. There's no downside to using one or the other. There's
`an advantage, maybe two advantages of using DCA to make
`fipronil.
`In fact, DCA is identified as preferred in the '440 itself.
`We have a cite. We've argued that in the Petition. It's identified
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`as maybe even a preferred melting point depressant, of course,
`which term needs to be interpreted and understood by a POSA.
`The next slide, slide 6, this may be something you asked
`before. DCA was known as suitable for making fipronil. Again,
`the '440 shows it was suitable for making fipronil, empirical
`evidence examples. DCA was a known solvent for analogous
`oxidation reactions. We cited a couple in our Petition and Dr.
`Gribble's declaration. Analogous oxidation reactions, not the
`same fipronil oxidation.
`DCA is homologous with TFA. Dichloroacetic acid is
`an acetic acid. It's a halogenated derivative of acetic acid. TFA
`is trifluoroacetic acid, another halogenated derivative of acetic
`acid. We -- Dr. Gribble has a whole discussion in his declaration
`of how these two are analogous acetic acids. They're actually
`also analogous to TCA.
`This is a point that we've made in our Petition. TFA is
`listed as another solvent suitable for preparing fipronil in the '117,
`not in the examples, but there's a discussion that TFA is an
`alternative for DCM.
`So the '117 itself suggests that DCM could be
`interchanged with TFA to make fipronil. And to the extent that
`there's any issue of, well, is DCM analogous to DCA, well, TFA
`certainly is analogous to DCA and TFA is actually much more
`acetic. So the issues Patent Owner has raised about would this
`acid somehow interfere in the reaction, well, we know that's not
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`true empirically from the examples, but also the suggestion that
`TFA could be used is more so evidence to say that the '117 did
`not believe that an acetic acid would interfere in any way with the
`reaction.
`JUDGE LANE: So there's not an example with TFA
`and the mCPBA.
`MR. GERSHIK: There is no such example in the '117.
`That's only in the list of possible solvents that the '117 provided.
`We've just been through slide 7.
`Let's go to slide 8. There's been some argumentation
`from Patent Owner about whether there was motivation to use
`DCA without TCA. Now, keeping in mind this -- and I want to
`emphasize this. The way we've structured this ground and the
`way the grounds have been accepted is that the primary reference
`is the '117 patent and all of its teachings, in particular Example 1,
`and we've cited the '440 for teaching that DCM and DCA are
`interchangeable and it's empirically shown in the '117.
`And we've also cited other sort of reasons in Dr.
`Gribble's declaration for why one might want to use an acid as
`opposed to DCM, which is not an acid, for conducting this
`reaction. And so there was reason to use DCA without DCM.
`Keeping also in mind that taking DCA with TCA introduces a
`whole other variable into the substitution.
`A POSA -- scientists don't practice like that. Scientists
`seek to do a first change first, seeing how that works and then
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`proceeding to make a more complex change. And so there was
`motivation to use DCA by itself, take that from the '440 and
`replace the DCM of the '117 with the DCA.
`TCA was also known to have disadvantages. In fact,
`the '440 identifies it as something that might be useful, but also
`acknowledges that it's a solid and it's complicated to work with
`and needs to mix it with DCA to actually make a -- what it calls a
`medium in which the oxidation could occur.
`JUDGE LANE: But your argument to be clear that
`you've made is not that -- not using Gharda as the primary
`reference and saying it's obvious to exclude TCA and said it's --
`MR. GERSHIK: That's exactly right.
`JUDGE LANE: -- making the substitution of DCA.
`MR. GERSHIK: That's exactly right, and that gets
`confused in Patent Owner's Response somewhat that we structure
`this as a primary reference, secondary reference, primary being
`the '117, one substitution needed to reach the claim, substitution
`of DCM with DCA.
`JUDGE LANE: You're almost out of time, but maybe
`you could just take a minute and address your slide 9.
`MR. GERSHIK: Sure.
`JUDGE LANE: And let me ask you, it has to do with
`disavowal of mCPBA, there are other oxidizing agents taught in
`the EP reference, right?
`MR. GERSHIK: Hydrogen peroxide, yes.
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`JUDGE LANE: And that would fall within the
`scope of --
`MR. GERSHIK: That would fall within the scope of
`the claim keeping in mind --
`JUDGE LANE: That there's no example I guess.
`MR. GERSHIK: There's no example. The example in
`the '117 is with mCPBA and so this disavowal -- you know,
`disavowal under the case law requires clear and unmistakable
`disavowal. Here we have -- and it has to happen in the record in
`the prosecution or in the patent itself.
`Here what we have is a pretty confused record.
`Oxidizing agent was argued by Patent Owner to be broad to
`include any oxidizing agent. That was accepted by the Board as a
`construction after it was advocated by Patent Owner.
`Moreover, there's another source of confusion being
`introduced here. MCPBA, TCA and TFA are all discussed in the
`background of the '559 as having disadvantages, different
`disadvantages, but disadvantages nonetheless.
`Patent Owner was certainly capable to try to exclude
`TCA from the claims but did not write in a similar language for
`TFA or mCPBA. That introduces a lot of confusion. What did
`Patent Owner really mean? Why did Patent Owner solely choose
`to write in the language into the claim about TCA? That's
`certainly not an unmistakable disavowal of something under the
`case law.
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`Also, just one more point about mCPBA, mCPBA per
`se is not criticized in the '559 patent. What's criticized is the
`entire process of the '117, which uses mCPBA. There's no per se
`criticism of mCPBA. His only criticism over the method of
`process that is in the '117, if you read those few lines of the '559,
`which criticized the '117.
`JUDGE LANE: And I think you've used your 20
`minutes plus, so --
`MR. GERSHIK: Very well. Thank you, Your Honors.
`JUDGE LANE: But we'll save a little time for you.
`MR. GERSHIK: Thank you.
`JUDGE LANE: Thank you.
`MR. FIGG: Good morning, Your Honor. I have a lot
`to cover, but I'll try to reserve five minutes for rebuttal and I
`would point out you have hard copies of the slides. This does get
`to sound like alphabet soup after a while. Our very last slide is a
`list of abbreviations. Both sides have used these same
`abbreviations and it may or may not be helpful to you.
`I think where I would like start is actually referring to
`something that Mr. Gershik did not talk about. That's Professor
`Gribble's declaration and I'd like to refer to the discussion around
`paragraphs 42 through 50 there. Because what Dr. Gribble did at
`that point in his declaration is he summarized a number of
`references that describe processes for making fipronil and those
`references were EP '117, the Chinese application CN '158, WO
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`'760, WO '853 and the Gharda WO '440. And at paragraph 52,
`Dr. Gribble says these references represent the knowledge of a
`POSA as of the critical date.
`So what do these references have in common? They do,
`indeed, all describe processes for making fipronil through
`oxidation of the sulfide precursor, but something else they have in
`common is not a single one of them describe using DCA as that
`as required by the claims of the Pastorio patent. In fact, only one
`of these references even mentions DCA and that's the Gharda
`'440. Others are completely silent about DCA.
`And if we can look at slide 9, what does Gharda say
`about DCA? Gharda tells us DCA is a poor medium for
`oxidation and its only function is to depress the melting point of
`his chosen solvent TCA.
`Now, together these references that Dr. Gribble refers to
`describe a wide range of reagents, TFA, TCA, mCPBA,
`vanadates, tungstates, performic acid, peracetic acid, persulfates.
`A very wide range of things were investigated to carry out this
`oxidation reaction. Some of these are expensive and corrosive.
`Some are poor performers, like mCPBA. The Chinese
`application CN '158 actually uses fuming sulfuric acid together
`with an organic solvent and a phase transfer solvent.
`Clearly there was a very substantial effort in the field to
`develop improved ways of making this compound and companies
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`like Rhone-Poulenc, Aventis Crop Sciences, Gharda and others
`were involved in these efforts.
`So what is obvious to Petitioner and their expert
`Professor Gribble in 2016 and 2017 with the wonderful benefit of
`hindsight was not obvious to real-world researchers who were
`actually trying to develop ways of making fipronil.
`Now, Petitioner has argued that a motivation of using
`DCA was that it was a halogenated acetic acid structurally similar
`to TFA and TCA, but these prior art researchers knew that these
`compounds were structurally related, but it didn't occur to them to
`turn to DCA. Petitioner makes kind of a peculiar argument that
`the actual disadvantages of TFA and TCA and mCPBA would
`have been an another motivation to use DCA.
`Well, certainly Gharda and the inventors on the '760
`patent knew about these disadvantages. It didn't motivate them to
`use DCA. Instead, they worked to accommodate these
`disadvantages. With the TFA process, they put corrosion
`inhibitors in, like boric acid. With the TCA process, they had to
`use a melting point depressant. With mCPBA they had to use
`very long reaction times.
`Dr. Gribble also argues that the fact that DCA is a liquid
`at room temperature would have motivated somebody to switch
`to DCA. Well, Gharda certainly knew that DCA was a liquid, but
`he chose to use a solid solvent for his reaction and then
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`Case IPR2016-00577
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`complicate the system by incorporating a melting point
`depressant.
`JUDGE LANE: What about starting at the point at the
`EP '117 reference and looking at that first and then saying, okay,
`you have this DCM as a solvent, what other solvents could we
`use alternatively? Oh, DCA has been shown to be used as a
`solvent over hear in Gharda. Why not just use DCA?
`MR. FIGG: DCA is not used as a solvent in Gharda
`and Gharda --
`JUDGE LANE: It says a solvent mixture.
`MR. FIGG: Well, saltwater would be a solvent mixture,
`but the salt in the saltwater is not a solvent. But, look, we don't
`dispute that DCM is a common solvent. It's probably the most
`common solvent used in organic chemistry.
`JUDGE LANE: How about DCA?
`MR. FIGG: I'm sorry?
`JUDGE LANE: Did you say DCM or --
`MR. FIGG: DCM.
`JUDGE LANE: And DCA, is that a commonly used
`solvent?
`MR. FIGG: No. Let's go to slide 3. So what the
`Petitioner's argument really is, is that if you start with EP '117, it
`would be obvious to replace EP '117's reaction solvent with part
`of Gharda's solvent mixture, but you would leave out what
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`Case IPR2016-00577
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`Gharda teaches as the essential necessary component of that
`solvent mixture, which is TCA.
`Now, DCM and DCA are very different compounds.
`DCM is inert, aprotic water immiscible, volatile. It's one of the
`most common organic solvents used and it's listed in all the
`compendia of common organic reaction solvents.
`Now, in his deposition, Dr. Curran, our expert, testified,
`Exhibit 1039 at pages 71 and 72, that DCM is actually known as
`the most common solvent for use with mCPBA. DCA, on the
`other hand, is a reactive carboxylic acid. It's protic. It's water
`miscible, non-volitable. It is very rarely used as a solvent. The
`Petitioners have been able to find a couple of rather obscure
`references, but no one identifies DCA as a common reaction
`solvent. And, most importantly, it is not the reaction solvent.
`If we could go to slide 4.
`JUDGE KATZ: Does it -- the claim, though, doesn't
`care, doesn't seem to specify what DCA does. It's just present.
`MR. FIGG: The claim requires that -- well, that's really
`an argument that has been made, but DCA is required to be
`present in the claim and the question is, what was the motivation
`for taking -- putting DCA in the place of DCM in the Gharda -- in
`the EP '117 system?
`And the fact is there was no motivation. I'm going to
`get to that in a moment, but the fact is the DCM solvent in EP
`'117 was an ideal solvent for that system. It dissolved everything,
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`it was inert, it was volatile, so it could be easily removed by
`distillation and recovered an
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