Filed on behalf of: Senior Party P ASTORIO
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`PaperNo. __
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`Date filed: November 24,2015
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`By:
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`E. Anthony Figg, Esq. -Lead Counsel
`R. Danny Huntington, Esq. -Backup Counsel
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
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`607 141h St., N.W., Suite 800
`Washington, DC 20005
`efigg@rfem.com
`dhuntington@rfem.com
`Main Telephone: (202) 783-6040
`Main Facsimile: (202) 783-6031
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`PATENT TRIAL AND APPEAL BOARD
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`ANATLEVIN
`and MICHAEL GRABARNICK,
`Junior Party,
`(Application 13/926,3 89)
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`v.
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`ANDREA PASTORIO
`and PAOLO BETTI
`Senior Party,
`(Patent 8,304,559).
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`Patent Interference No. 105,995 (SGL)
`(Technology Center 1600)
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`PASTORIO SURREPLY 4
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`FINCHIMICA EXHIBIT 2011
`ADAMA MAKHTESHIM v. FINCHIMICA
`CASE IPR2016-00577
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`Levin’s Reply 4 improperly introduces new theories of unpatentability, and distorts the
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`evidence. Yet, despite such tactics, Levin has still failed to meet its burden.
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`I.
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`Improper New Theories. In its opening brief, Levin violated the Board’s order (Paper
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`No. 155) by arguing obviousness over the alleged combined teachings of Gharda and Exhs.
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`1024, 1019 and 1014. (Levin Mot. 4 at 9, 11; Levin MF 20, 29, 31, 40; Exh. 1044 at ¶¶ 41-50,
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`52, 62-66). Pastorio pointed out that Levin’s reliance on those references was improper and
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`misplaced. Pastorio Opp. 4 at 13-14. During cross-examination of Pastorio’s expert, Levin
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`attempted to introduce yet another new reference, Exh. 1046. See Exh. 1052 at 97. Levin cites it
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`for its purported teaching that DCPA was capable of oxidizing difficult-to-oxidize sulfides.
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`Levin Reply 4 at 7. Such reliance is improper. Levin had to meet its burden and cite the evidence
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`on which it relies in its opening motion. Levin’s reliance on Exh. 1046 violates the Board’s
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`order, is too late and is scientifically unfounded. See Exh. 1052 at 121-23.
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`At page 8, lines 11 – 18, Levin argues that it was obvious to combine 3-chlorobenzoic
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`acid with DCA to produce fipronil. But Levin fails to point out where the combination of DCA
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`and 3-cholorobenzoic acid is disclosed in the prior art, much less in the single prior art reference
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`on which Levin was permitted to rely, i.e., Gharda ʼ440. See Paper No. 155. Further, Levin
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`ignores Pastorio’s express disavowal of 3-chlorobenzoic acid. Exhs. 2001, 1:23-65; 2085, ¶22.
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`II. Mischaracterizations of Testimony. At page 8, lines 6 – 10, Levin alleges that Dr.
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`Curran, testified that WO ʼ760 cannot be understood to mean that no fipronil is formed when
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`peracetic acid, or TCPA, is used as an oxidation agent. Dr. Curran repeatedly testified that there
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`was no evidence that peracetic acid is capable of oxidizing the fipronil precursor to fipronil.
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`(Exh. 1052, 104:9-17, 108:8-14, 111:10-20, 116:11-20). Dr. Curran further testified that there
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`was no evidence in WO ʼ760 that TCPA could be used for the oxidation of the precursor (Exh.
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`1052, 117:5-12), and that such use required conditions that were not known until the later
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`publication of Gharda ʼ440 in 2007. (Exh. 1052, 107:21-108:18, 116:21-118:7). Thus, far from
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`“admitting” that WO ʼ760 can be understood to disclose that peracetic acid, or TCPA, can be
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`used to form fipronil, Dr. Curran testified to the contrary.
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`At page 2, lines 10 – 12, page 7, lines 15-18, page 8, lines 16 – 18, MF 141, and MF 151,
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`Levin alleges Dr. Curran testified that DCA was a known oxidation medium, and that DCPA was
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`known to oxidize sulfides. Levin also cites Dr. Curran at page 7, lines 18 – 20 and MF 143, in
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`support of its theory that it was allegedly known that DCPA, and weaker peracids, were capable
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`of oxidizing electron-deficient sulfides, such as the fipronil precursor. Dr. Curran actually
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`testified that after reading Dr. Gribble’s declaration that DCA was a common reagent, he was
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`surprised at the absence of references disclosing its use. (Exh. 1052, 18-20). He also testified that
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`he has seen no evidence that DCPA, much less a weaker peracid, is capable of oxidizing
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`electron-deficient sulfides. (Exh. 1052, 100:22-101:15, 104:9-17). Dr. Curran also testified that
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`the molecule in improper Exh. 1046 is not analogous to the fipronil precursor (Exh. 1052, 99:13-
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`100:21, 121:12-123:3; Exh. 2085, ¶¶61-62), and that prior to Pastorio’s disclosure it could not
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`have been predicted that DCPA was capable of oxidizing the fipronil precursor (Exh. 1052,
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`27:11-30:9). Accordingly, there is no basis to conclude it would have been obvious to use DCPA
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`to oxidize the fipronil precursor.
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`At page 3, lines 13 – 14 and MF 144, Levin alleges Dr. Curran testified that “poor”
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`would not be used to report no result. Dr. Curran actually said it would not be uncommon to refer
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`to a reaction that did not work as a “poor” reaction, and a reaction with no yield would have a
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`“poor” yield. (Exh. 1052, 77:11 – 78:15). Levin’s attempt to lend credibility to its strained
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`interpretation of the Gharda reference should be given no weight.
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`Date: November 24, 2015
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`Respectfully submitted,
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`By:
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`/s/ E. Anthony Figg
`E. Anthony Figg, Reg. No. 27,195
`R. Danny Huntington, Reg. No. 27,903
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th St., N.W., Suite 800
`Washington, DC 20005
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`Counsel for Senior Party Pastorio
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`CERTIFICATE OF SERVICE
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`Pursuant to S.O. ¶ 105.3, I hereby certify that prior to 5:00 pm Eastern Time, on this 24th
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`day of November, 2015, the foregoing PASTORIO SURREPLY 4 was served on counsel of
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`record for Junior Party Levin by being filed through the Interference Web Portal. In addition,
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`prior to 6:00 pm Eastern Time, on this 24th day of November, 2015, counsel of record for Junior
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`Party Levin was served via electronic mail.
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`/s/ Erik van Leeuwen
`Erik van Leeuwen
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.
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`4