Boxlnterferences@uspto.gov
`Tel: 571-272-4683
`
`Paper 259
`Entered: March 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ANAILEVIN
`and MICHAEL GRABARNICK,
`Junior Party,
`(Application 13/926,389)
`v.
`ANDREA P ASTORIO and PAOLO BETTI
`Senior Party,
`(Patent 8,304,559)
`
`Patent Interference No. 105,995
`(Technology Center 1600)
`
`Before RICHARD E. SCHAFER, SALLY GARDNER LANE, and DEBORAH
`KATZ, Administrative Patent Judges.
`
`LANE, Administrative Patent Judge.
`
`Decision on Priority and other Motions- Bd. R. 12l(a)
`
`FINCHIMICA EXHIBIT 2002
`ADAMA MAKHTESHIM v. FINCHIMICA
`CASE IPR2016-00577
`
`
`Tel: 571-272-4683
`
`Paper 259
`Entered: March 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ANAILEVIN
`and MICHAEL GRABARNICK,
`Junior Party,
`(Application 13/926,389)
`v.
`ANDREA P ASTORIO and PAOLO BETTI
`Senior Party,
`(Patent 8,304,559)
`
`Patent Interference No. 105,995
`(Technology Center 1600)
`
`Before RICHARD E. SCHAFER, SALLY GARDNER LANE, and DEBORAH
`KATZ, Administrative Patent Judges.
`
`LANE, Administrative Patent Judge.
`
`Decision on Priority and other Motions- Bd. R. 12l(a)
`
`FINCHIMICA EXHIBIT 2002
`ADAMA MAKHTESHIM v. FINCHIMICA
`CASE IPR2016-00577
`
`
`
`I.
`
`Introduction
`
`Earlier in the proceeding a decision on the non-priority motions was entered.
`(Decision on Non-Priority Motions, Paper 144). In that decision, we granted
`Pastorio Motion 2 to substitute Count 2 for Count 1 and accorded Pastorio
`additional priority benefit as to Count 2 such that Pastorio is now senior party in
`the interference. (Decision on Non-Priority Motions at 27 and Redeclaration 2,
`Paper 145).
`We now have before us a motion by each party seeking judgment on the
`basis of priority as to Count 2. In addition, Levin was authorized to file (Order
`Authorizing Motion, Paper 155), and did file, a motion seeking judgment that the
`Pastorio involved claims are unpatentable over a prior art reference.
`Thus, the following motions are before us for decision.1
`Levin
`1. Levin Motion 3 for judgment on the basis of priority. (Levin Priority Motion,
`Paper 174). Pastorio filed an opposition to this motion (Pastorio Opposition 3,
`Paper 229). Levin filed a reply. (Levin Reply 3, Paper 248).
`2. Levin Motion 4 for judgment that the Pastorio involved claims are unpatentable
`over certain prior art. (Levin Motion 4, Paper 175). 2 Pastorio filed an
`opposition to this motion (Pastorio Opposition 4, Paper 227). Levin filed a
`reply. (Levin Reply 4, Paper 251). Pastorio was authorized to file (Order of 19
`
`
`The parties’ requests for oral argument were considered but the Board has determined
`1
`that no oral argument is necessary. (Levin Request, Paper 254 and Pastorio Request, Paper 255).
`Levin filed a notice informing the Board that it has filed a petition for inter partes review
`2
`of the involved Pastorio patent. (Levin Updated Notice of Related Proceedings, Paper 257,
`referring to IPR2016-00577).
`
`
`2
`
`
`
`
`
`November 2015, Paper 252) and did file, a surreply. (Pastorio Surreply 4,
`Paper 253).
`
`Pastorio
`1. Pastorio Motion 4 for judgment on the basis of priority. (Pastorio Priority
`Motion, Paper 177). Levin filed an opposition to this motion (Levin Opposition
`4, Paper 230). Pastorio filed a reply. (Pastorio Reply 4, Paper 249).
`
`
`
`We deny the Levin Priority Motion and Levin Motion 4.
`We dismiss as moot the Pastorio Priority Motion.
`
`Findings of Fact
`II.
`The record supports the following findings of fact, as well as any other
`findings of fact set forth in this Decision, by a preponderance of the evidence.
`The parties
`The interference was declared on 6 February 2014 between now senior party
`1.
`Pastorio and now junior party Levin. (Declaration, Paper 1).
`The involved Pastorio patent is 8,304,559, issued on 6 November 2012 from
`2.
`application 13/498,245, filed 26 March 2012. (Ex 2001).
`Pastorio identifies its real party in interest as Finchimica S.p.A. (Pastorio
`3.
`Notice of Real Party in Interest, Paper 8).
`The involved Levin application is 13/926,389, filed 25 June 2013.
`4.
`5.
`Levin identifies its real party in interest as Makhteshim Chemical Works
`Ltd. (Levin Notice of Real Party in Interest, Paper 6).
`
`
`
`3
`
`
`
`6.
`
`The Count and claims
`Count 2, the sole count of the interference, is as follows:
`Claim 1 of Pastorio (8,304,559)
`or
`Claim 2 of Levin (13/926,389).
`(Redeclaration 2, Paper 145, at 3).
`The Count, Count 2, generally is directed to a method of making the
`7.
`insecticidal compound fipronil by oxidation of the following compound in the
`presence of dichloroacetic acid [DCA] and an oxidizing agent such as hydrogen
`peroxide:
`
`
`
`
`
`where the oxidation is conducted in the absence of trichloroacetic acid [TCA]
`and/or trichloroperacetic acid [TCPA] and may be conducted in the presence of a
`strong acid such as sulfuric acid.
`
`
`
`4
`
`
`
`Claim 1 of Pastorio is as follows:
`
`8.
`
`
`A method for the preparation of the compound having the following
`general formula (I):
`
`
`
`
`
`wherein R1 and R2 are independently hydrogen or halogen; through
`oxidation of a compound having the general formula (II) in the
`presence of dichloroacetic acid and of an oxidising agent:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`wherein R1 and R2 are defined as above, where the oxidising agent is
`selected from the group comprising benzoyl peroxides, sodium
`peroxides, t-butyl peroxides and/or hydrogen peroxide, and wherein
`the oxidation is conducted in the absence of trichloroacetic and/or
`trichloroperacetic acid.
`
`
`(Pastorio Clean Copy of Claims, Paper 11).
`5
`
`
`
`
`
`9.
`
`Levin Claim 1 is as follows:
`1. A method for the preparation of the compound having the following
`general formula (I):
`
`
`wherein R1 and R2 are chlorine; through oxidation of a compound
`having the general formula (II) in the presence of dichloroacetic acid,
`of an oxidizing agent, and of a strong acid:
`
`
`
`
`
`
`
`wherein R1 and R2 are defined as above, where the oxidizing agent is
`hydrogen peroxide, and where the strong acid is sulfuric acid.
`
`(Levin Clean Copy of Claims, Paper 4).
`
`10. Pastorio claims 1-123 are designated as corresponding to Count 2.
`(Redeclaration 2, Paper 145, at 3).
`
`
`3 Pastorio statutorily disclaimed claims 13-15 of its involved patent such that now only its
`claims 1-12 are involved in the interference. (Pastorio Disclaimer, Paper 26).
`6
`
`
`
`
`
`11. Levin claims 1-10 are designated as corresponding to Count 2.
`(Redeclaration 2, Paper 145, at 3).
`Priority Benefit
`
`
`12. Pastorio is accorded priority benefit of the following for Count 2:
`PCT/IB2011/052304, filed 26 May 2011
`Italian Patent Application No. BS2010A0118, filed on 7 July 2010
`(Declaration, Paper 1, at 5 and Redeclaration 2, Paper 145, at 3).
`13. Levin is accorded priority benefit of the following for Count 2:
`US13/809,327, filed 14 March 2013
`PCT/IL/2011/000546, filed 10 July 2011
`US 61/363,366, filed 12 July 2010.
`(Redeclaration, Paper 15, at 2).
`
`Testimony
`Inventors Dr. Michael Grabarnick and Dr. Anat Levin provided testimony to
`14.
`support the Levin priority motion. (Grabarnick Declaration, Ex 1039 and Levin
`Declaration, Ex 1045).
`15. Mr. Michael Mogilnitsky, said to be a colleague of Dr. Grabarnick and Dr.
`Levin, also provided testimony to support the Levin priority motion. (Mogilnitsky
`Declaration, Ex 1041).
`
`
`
`7
`
`
`
`16. Because Levin did not make Dr. Grabarnick, Dr. Levin or Mr. Mogilnitsky
`available for cross-examination, their testimony was excluded. (Decision of 1
`October 2015, Paper 219, at 5, citing, at 3, ¶ 157.34).
`17. Levin did not request reconsideration of the Decision of 1 October 2015.
`18. Dr. Gordon Gribble also provided testimony on behalf of Levin at, e.g., Fifth
`Gribble Declaration, Ex 1042 and Sixth Gribble Declaration, Ex 1044).
`19. Based on his education and professional experience (see First Gribble
`Declaration, Ex 1001 at 2-4, and curriculum vitae, Ex 1002) we determine
`Dr. Gribble is qualified to testify about issues relevant to the interference.
`Levin Priority Motion
`In its Priority Motion, Levin argues that it reduced to practice an invention
`20.
`of the Count prior to Pastorio’s earliest accorded benefit date of 7 July 2010.
`(Levin Priority Motion at 1:11-15).
`In particular, Levin argues that the Levin inventors reduced to practice an
`21.
`invention of the Count on three separate occasions, two occasions occurring on 23
`May 2010 and another on 15 June 2010. (Levin Priority Motion at 1:11-15 and
`11:1-14:10).
`In support of its Priority Motion Levin relies upon, inter alia, the testimony
`22.
`of Dr. Grabarnick, Dr. Levin, Mr. Mogilnitsky, and Dr. Gribble to show that the
`
`
`¶ 157.3 Cross examination
`4
`The party relying on an affiant must make the affiant available for cross
`examination; otherwise, the affidavit may be excluded. The parties must confer to
`reach agreement on reasonable times, dates and location for cross examination of
`witnesses.
`
`8
`
`
`
`
`
`
`
`inventors made fipronil using a method of the Count prior to Pastorio’s earliest
`accorded benefit date. (Levin Priority Motion at 11:1-14:10).
`Levin Motion 4 (for judgment based on unpatentability)
`In its Motion 4, Levin moves for judgment on the basis that the Pastorio
`23.
`involved claims are unpatentable over WO 2007/122440 A1, published 01
`November 2007. (Gharda, Ex 2009). (Levin Motion 4, Paper 175).
`In its Motion 4 Levin relies upon, inter alia, the declaration testimony of Dr.
`24.
`Gribble. (Sixth Gribble Declaration, Ex 1044).
`25. Relevant to the patentability issue is the proviso in the Pastorio claims that
`“the oxidation is conducted in the absence of trichloroacetic (TCA) and/or
`trichloroperacetic acid (TCPA).”
`26. Gharda on the other hand calls for a reaction medium comprising TCA and
`an oxidizing agent (e.g., hydrogen peroxide) or the “pre-made” reaction product(s)
`of the oxidizing agent and trichloroacetic acid, i.e., TCPA. (Gharda, Ex 2009, at
`e.g., 4:1-5 and 8:21-9:2).
`In particular, Gharda states that in a preferred embodiment TCPA is formed
`27.
`“in situ” by contacting hydrogen peroxide with TCA but that TCPA can be pre-
`made and used in the medium instead but “with no particular advantage”. (Gharda
`at 8:21-9:2).
`28. Gharda discloses DCA to be a poor medium for oxidation. (Gharda at 9:17-
`21).
`29. Gharda discloses TCA to be an effective alternative medium for the
`production of fipronil when used with a melting point depressant. (Gharda at 1:23-
`2:9).
`
`
`
`9
`
`
`
`30. According to Gharda, DCA is included in the reaction medium “only to
`sufficiently depress the melting point of [TCA] to facilitate ease of processing.”
`(Gharda at 9:17-21).
`III. Discussion
`To be sufficient a motion must provide a showing, supported with
`appropriate evidence, such that, if unrebutted, would justify the relief sought. Bd.
`R. 208(b). Where the evidence includes technical data, the party relying upon the
`data must provide evidence explaining the data sufficient to allow the Board to
`evaluate the data. Bd. R. 158(b)
`
`A. Levin Priority Motion
`Priority of invention goes to the first party to reduce to practice an invention
`of the Count unless the other party can show that it was the first to conceive the
`invention and that it exercised reasonable diligence in later reducing to practice
`that invention. Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998). Here
`Levin argues that it reduced to practice an invention of the Count prior to
`Pastorio’s earliest constructive reduction to practice date of 7 July 2010. (Levin
`Priority Motion at 14:8-10). Since Levin does not assert or provide a showing of
`diligence, it cannot prevail on the basis of having had an earlier conception
`coupled with the reasonable exercise of diligence.
`In order to establish an actual reduction to practice, the inventor must prove
`that the inventor: (1) constructed an embodiment or performed a process that met
`all the limitations of the interference count, and (2) determined that the invention
`would work for its intended purpose. Cooper v. Goldfarb, 154 F.3d at 1327.
`Levin alleges that it first reduced to practice an invention of the Count on
`
`
`
`10
`
`
`
`23 May 2010. (Levin Priority Motion at 10:11-11:3). In particular, Levin argues
`that “Dr. Levin prepared fipronil by oxidizing 5-amino-3-cyano-1-(2,6-dichloro-4-
`trifluoromethylphenyl)-4-trifluoromethylthiopyrazole (Compound 420)” and that
`“Dr. Levin carried out the reaction by pre-mixing dichloroacetic acid (DCA)
`[which is said to have had been previously obtained from a supplier] and hydrogen
`peroxide (H2O2), followed by Compound 420” with “no trichloroacetic acid or
`trichloroperacetic acid used”. (Levin Priority Motion at 11:1-8). Further, Levin
`contends that Dr. Levin knew that fipronil had been obtained by testing a reaction
`sample. (Levin Priority Motion at 11:9-11). According to Levin, Dr. Grabarnick
`“was aware that Dr. Levin was carrying out the reaction under the specified
`conditions and was aware of the result.” (Levin Priority Motion 11:17-19).
`Accordingly, argues Levin, a reduction to practice of an invention of the Count
`occurred.
`In support of its argument of a reduction to practice, Levin directs us to the
`testimony of Dr. Levin and Dr. Grabarnick. As this testimony was excluded
`though (See Order of 1 October 2015, Paper 219), we do not consider it in deciding
`whether Levin has met its burden of proof.
`Levin also directs us to “page 119 of Notebook 424” as well as the
`testimony of Dr. Gribble. (Levin Priority Motion at 11:7 referring to Ex 1030,
`page 119 of notebook 424 and Fifth Declaration of Gribble, Ex 1042, at ¶¶13-14).
`The Exhibit that is “Page 119 of Notebook 424” appears to be a notebook
`page related to a “project” identified as “fipronil”. The notebook page is dated
`“23/5/10” but is not signed or witnessed. Also within the same Exhibit is a
`translation of this notebook page from Hebrew to English, and a “translator
`certification” of accuracy of the translation.
`
`
`
`11
`
`
`
`According to Dr. Gribble, “Page 119 of Notebook 424 (Ex 1030) describes a
`reaction in which dichloroacetic acid was first combined with hydrogen peroxide,
`and that mixture was combined with ….the sulfide precursor 5-amino-3-cyano-1-
`(2,6-dichloro-4-trifluoromethylphenyl)-4-trifluoromethylthiopyrazole, known as
`‘420 for its molecular weight.” Dr. Gribble testified that the page “shows that two
`reaction samples were found to contain substantial fipronil (‘F’) and some starting
`material.” Dr. Gribble further testified that the process described “falls within the
`scope of Pastorio claim 1.” (Fifth Declaration of Gribble, Ex 1042, at ¶¶13-14).
`Accepting the testimony of Dr. Gribble that the reaction set forth at page 119
`of notebook 424 describes a reaction falling within the scope of Pastorio claim 1
`and thus the Count, we nonetheless have not been directed to admissible testimony
`or other evidence sufficient to identify who devised the reaction described or how
`any testing of the reaction and its product occurred. Accordingly, Levin has not
`shown, as to this first 23 May 2010 alleged reduction to practice, that the Levin
`inventors constructed an embodiment or performed a process that met all the
`limitations of the Count and determined that it would work for its intended
`purpose. Cooper v. Goldfarb, 154 F.3d at 1327.
`Levin alleges that a second reduction to practice occurred on the same date
`as the first, i.e., 23 May 2010. The evidence Levin directs us to regarding this
`alleged second reduction to practice is similar to the evidence it presented as to the
`first alleged reduction to practice and is deficient for at least the same reasons
`stated above. In particular, Levin directs us to a “Page 120 of Notebook 424.” (Ex
`1031). (Levin Priority Motion at 12:2-13:2). That notebook page is not signed or
`witnessed. Moreover, while Dr. Gribble testifies to what he believes the notebook
`page to convey (Fifth Declaration of Gribble, Ex 1042, at ¶¶15-16), we have not
`
`
`
`12
`
`
`
`been directed to admissible evidence to show who authored the notebook page or if
`and how the reaction described on the page was undertaken or tested.
`Levin alleges that another reduction to practice occurred on 15 June 2010.
`(Levin Priority Motion at 12:6-14:6). The admissible evidence Levin directs us to
`in support of this reduction to practice is deficient for at least the same reasons as
`for the 23 May 2010 alleged reductions to practice. While the notebook page in
`support of this 15 June 2010 alleged reduction to practice, “Page 152 of Notebook
`424” (Ex 1034) does have a signature unlike the other notebook pages discussed
`above, the signature is illegible and we have not been directed to admissible
`evidence of whose signature it is. Moreover, the unverified English translation
`provided does not give insight as it does not include the signature. Further Dr.
`Gribble’s testimony regarding this notebook page (Fifth Declaration of Gribble, Ex
`1042, at ¶¶19-20) does not address who recorded the contents of the notebook
`page.
`Levin has not shown that it reduced to practice an invention of the Count on
`any of the three occasions discussed above. In its Priority Motion, Levin does not
`allege that there was any other reduction to practice.
`We note that in an Appendix to its Priority Motion (i.e., Appendix 2
`(Statement of Material Facts), Levin cites to Exhibits not discussed or cited within
`the argument portion of the Levin Priority Motion, including an additional
`notebook page, i.e., “Page 138 of Notebook 424” (See, e.g., Statement of Material
`Fact (SMF) 26 discussing Ex 1032), as well as an analytical report for “Sample
`424-138-2” (Ex 1033) and certain e-mails (Exs 1035 and 1036) said to contain an
`invention disclosure. We do not consider these Exhibits because Levin did not
`provide within its Motion sufficient explanation of why they are evidence showing
`
`
`
`13
`
`
`
`a reduction to practice. Even were we to consider these Exhibits, they suffer from
`at least the same deficiencies as the evidence relied upon by Levin in its arguments
`for the 23 May 2010 and 15 June 2010 alleged reductions to practice, including a
`lack of evidence, such as testimony, to explain and corroborate the content of these
`Exhibits.
`We deny the Levin Priority Motion.
`
`
`
`B. Pastorio Priority Motion
`
`In the Pastorio Priority Motion, Pastorio argues that it “conceived an
`invention within the Count and reduced it to practice well before Levin’s alleged
`date of invention”. (Pastorio Priority Motion at 4:18-20).
`
`Since we deny the Levin Priority Motion we need not and do not decide if
`Pastorio has shown an actual reduction to practice prior to Pastorio’s accorded
`benefit date. Accordingly, we dismiss as moot the Pastorio Priority Motion.
`
`
`C. Levin Motion 4 (for judgment based on unpatentability)
`In an Order entered during the priority phase of the interference Levin was
`authorized to file a motion that the Pastorio claims are unpatentable as anticipated
`by, or having been obvious in view of, a single prior art reference, i.e., the Gharda
`reference (Ex 2009). Levin’s request to rely upon other prior art references, and in
`particular US 6,013,761 to Zierer et al., US 3,928,372 to Bochis et al., CN
`101250158 and AU 2010100462 A4, was not granted. (Order Authorizing Motion,
`Paper 155). Levin did not request reconsideration of this Order. Where Levin’s
`arguments in its Motion 4 rely upon prior art references other than Gharda,
`including those listed above, to show the Pastorio claims to be unpatentable, we
`
`
`
`14
`
`
`
`have not considered those arguments.
`The Pastorio claims are directed to a method of making fipronil through an
`oxidation reaction that is conducted in the presence of dichloroacetic acid (DCA)
`and an oxidizing agent, such as hydrogen peroxide, and with the proviso that the
`oxidation “is conducted in the absence of trichloroacetic [TCA] and/or
`trichloroperacetic acid [TCPA]”. (Pastorio Clean Copy of Claims, Paper 11).
`In its Motion 4, Levin argues that the involved Pastorio claims are
`unpatentable because they are anticipated by at least Example 1 of Gharda. (Levin
`Motion 4 at 7:19-8:11).
`Example 1 of Gharda shows a reaction for the preparation of fipronil using a
`solvent mixture containing TCA, hydrogen peroxide and DCA. (Gharda, Ex 2009,
`at 10 (Example 1)). Elsewhere Gharda indicates that either TCA combined with
`hydrogen peroxide (which is said to form TCPA “in situ”) or “pre-formed” TCPA
`is part of the reaction medium. (Gharda, Ex 2009, at 8:21-9:2). Even so Levin
`argues that the absence of TCA and TCPA is provided for in Gharda as Gharda
`discloses that DCA is a “poor medium for oxidation and the purpose of its addition
`is only to sufficiently depress the melting points of [TCA] to facilitate ease of
`processing.” (Levin Motion 4 at 7:19-8:10, citing Gharda, Ex 2009, at 9).
`According to Levin this portion of Gharda amounts to a disclosure that DCA can
`be used alone as the oxidizing agent for the production of fipronil without the need
`for TCA and/or TCPA. (Levin Motion 4 at 8:10-11).
`
`Pastorio argues that example 1 of Gharda does not anticipate or render
`obvious the claimed invention because Gharda, in example 1 or elsewhere, does
`not disclose the use of DCA in the absence of TCA “as required by the Pastorio
`claims.” (Pastorio Opposition 4 at 6:9-7:14). Because of the “and/or” used in the
`
`
`
`15
`
`
`
`proviso the Pastorio involved claims allow for, but do not require, the exclusion of
`both TCA and TCPA. Put another way, due to the “and/or” in the proviso the
`oxidation may be in the absence of both TCA and TCPA or in the absence of either
`TCA or TCPA. Thus we do not agree with Pastorio that its claims require a
`reaction medium that necessarily excludes both TCA and TCPA.
`
`Nonetheless we are not persuaded that Gharda anticipates the Pastorio
`claims since Gharda, when using a medium containing an oxidizing agent such as
`hydrogen peroxide as is required by the Pastorio claims, discloses that both TCA
`and TCPA (formed “in situ”) are present in the disclosed reaction medium. In
`particular, Gharda indicates that the reaction medium contains either an oxidizing
`agent, e.g., hydrogen peroxide, and TCA, or “pre-made” TCPA.
`
`While we agree with Levin that the involved Pastorio claims contain no
`limitation with regard to superiority or inferiority of the oxidation reaction” (Levin
`Motion 4 at 8:13-15), we do not agree that Gharda can be said to anticipate the
`Pastorio involved claims since anticipation requires that a reference disclose every
`limitation of the claimed invention, either expressly or inherently. In re Schreiber,
`128 F.3d 1473, 1477, (Fed. Cir. 1997). Levin has not directed us to a teaching in
`Gharda of a reaction otherwise meeting the limitations of the involved Pastorio
`claims where either TCA “and/or” TCPA are not present in the reaction medium.
`We do not agree with Levin that Gharda’s disclosure of DCA as a poor medium for
`oxidation is a disclosure that DCA is a replacement for TCPA in the reaction
`medium.
`
`Levin also argues that Gharda would have rendered obvious the involved
`Pastorio claims. Levin argues that because of certain known disadvantages to the
`use of TCA, one skilled in the art would have been motivated to try the oxidation
`
`
`
`16
`
`
`
`reaction in the absence of TCA and/or TCPA. Levin argues that, even though
`DCA was known to be a poor medium for oxidation one skilled in the art would
`have known to compensate by adding a strong acid such as sulfuric acid or,
`alternatively, another agent that would achieve the goal of the claimed oxidation
`reaction. (Levin Motion 4 at 10:12-22).
`
`We do not agree that Gharda’s characterization of DCA as a poor medium
`for oxidation would have provided sufficient reason for one skilled in the art to
`eliminate TCPA, disclosed by Gharda as being an effective medium for the
`oxidation reaction to produce fipronil. (Gharda, Ex 2009, at 2:3-9). We are not
`persuaded that one skilled in the art would have sufficient reason to eliminate what
`is said to be an effective medium to rely upon what is said to be a poor one. Further
`Gharda states that the “purpose of [DCA’s] addition is only to sufficiently depress
`the melting point of trichloro acetic acid to facilitate ease of processing”. (Gharda,
`Ex. 2009 at 9:17-21, Sixth Gribble Declaration, Ex 1044, at ¶75). Thus, even if
`one skilled in the art would have had reason to substitute or eliminate TCA from
`the reaction medium, the addition of DCA would no longer be needed and the
`Pastorio claims would not be met.
`
`Levin, citing to the involved Pastorio patent (Ex. 2001) argues that one
`skilled in the art would be motivated to substitute trifluoroaceticacid [TFA] or 3-
`chlorobenzine for the required TCPA given disclosure of the past use of these
`compounds in producing fipronil. (Levin Motion 4 at 11:1-7). As noted above, we
`are not convinced that such a substitution would result in the Pastorio claimed
`method since that method requires DCA in the reaction medium. Further we are
`not persuaded that one skilled in the art would have had reason to make such a
`substitution given the disclosed disadvantages of TFA and 3-chlorobenzine. Levin
`
`
`
`17
`
`
`
`acknowledges, and Gharda discloses, TFA as being corrosive and expensive.
`(Levin Motion 4 at 12:18-21 and Gharda at 1:15-17). The Pastorio involved patent
`specification, relied upon by Levin to teach substitution of TCPA with
`chlorobenzine, states that this compound has “evident disadvantages both in terms
`of yield and cost”. (Pastorio involved patent, Ex 2001, at 1:61-65).
`
`Accordingly, Levin has not shown that one skilled in the art would have had
`sufficient reason to eliminate or substitute the TCA and TCPA, or that, if one has
`sufficient reason, a composition otherwise meeting the Pastorio claims would
`result. We have considered the testimony of Dr. Gribble relied upon in Levin
`Motion 4 where that testimony discusses Gharda. We do not find this testimony
`convincing to show that one skilled in the art following Gharda would have found
`DCA to be an acceptable oxidizing medium such that elimination of TCPA
`“and/or” TCA is disclosed or would have been obvious. Further Dr. Gribble does
`not explain to our satisfaction why one skilled in the art would have included DCA
`if TCA were eliminated from the oxidizing medium in view of Gharda’s disclosure
`that its only function is to depress the melting point of TCA to facilitate ease of
`processing. We have not considered Dr. Gribble’s testimony to the extent it is
`discusses prior art references that are beyond the scope of the motion Levin was
`authorized to file in the Order Authorizing Motion. (Paper 155).
`
`As Levin has not shown the Pastorio involved claims to be unpatentable
`over Gharda, Levin Motion 4 is denied.
`
`
`
`
`
`18
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`
`
`IV. Order
`Upon consideration of the record, it is
`ORDERED that Levin Motion 3 for judgment on the basis of priority is
`DENIED;
`
`FURTHER ORDERED that Pastorio Motion 4 for judgment on the basis of
`priority is DISMISSED as moot; and
`FURTHER ORDERED that Levin Motion 4 for judgment on the basis of
`unpatentability of the Pastorio involved claims is DENIED; and
`FURTHER ORDERED that judgment against Levin is entered in a separate
`paper.
`
`19
`
`
`
`
`
`
`
`
`
`
`
`
`cc: (via electronic)
`Attorney for Levin:
`
`Gary J. Gershik
`Norman H. Zivin
`COOPER & DUNHAM, LLP
`ggershik@cooperdunham.com
`nzivin@cooperdunham.com
`
`Attorney for Pastorio:
`
`E. Anthony Figg
`R. Danny Huntington
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`efigg@rfem.com
`dhuntington@rfem.com
`
`
`20
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