Trials@uspto.gov
`571-272-7822
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`Paper No. 30
` Filed: May 11, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`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
`
`
`
`Before RICHARD E. SCHAFER, SALLY GARDNER LANE, and
`DEBORAH KATZ, Administrative Patent Judges.
`
`LANE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`IPR2016-00577
`Patent 8,304,559 B2
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`I.
`
`INTRODUCTION
`
`Background
`A.
`Adama Makhteshim Ltd. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`to institute an inter partes review of all claims, i.e., claims 1–12,1 of U.S.
`Patent No. 8,304,559 B2 (“’559 patent,” Ex. 1001) of Finchimica S.p.A.
`(“Patent Owner”). We instituted review concluding that Petitioner established
`a reasonable likelihood that it would prevail in an asserted ground of
`unpatentability of claims 1–12 of the ’559 Patent. (Paper 7, “Decision
`Instituting Review”). 35 U.S.C. § 314(a). In particular we instituted review
`on the asserted ground, ground 1 of the Petition, that the claimed subject
`matter would have been obvious under U.S.C. § 103(a) over EP 0295117 B in
`view of WO 2007/122440 A1 and further in view of CN 101250158 A for
`claims 11 and 12 only. (Decision Instituting Review, 17).
`Patent Owner filed a Patent Owner Response (Paper 19, “PO Resp.”)
`and Petitioner filed a Reply to Patent Owner’s Response (Paper 22, “Reply”).
`An oral hearing was held before the Board on February 14, 2017. (Paper 29,
`“Hearing Transcript”).
`
`
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. Having considered the record before us, we conclude
`that Petitioner has shown by a preponderance of the evidence that claims 1–12
`of the ’559 patent are unpatentable. See 35 U.S.C. § 316(e).
`
`B. Related Matters
`The parties are involved in litigation2 where the Patent Owner has
`alleged that the Petitioner infringed and will continue to infringe the ’559
`
`
`1
`Patent Owner statutorily disclaimed claims 13–15 of the ’559 patent so
`now the patent contains only claims 1–12. (Interference 105,995, Paper 26,
`Ex. 1025).
`The litigation is said to be styled Finchimica S.P.A. v. Adama
`2
`Makhteshim Ltd et al (1:14-cv-01516). (Pet., 2).
`2
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`patent. (Pet., 2–3).
`Interference 105,995, involving the ’559 patent and Petitioner’s U.S.
`patent application no. 13/926,389, was declared on February 6, 2014.
`(Interference 105,995, Paper 1, Ex. 1022, Declaration). In the interference, the
`Board entered judgment against junior party who is the Petitioner here. (Pet., 3
`(indicating that Petitioner was a party in the interference) and Interference
`105,995,3 Paper 260, Judgment and Paper 259, Ex. 2002, Decision on Priority
`and Other Motions).4
`An application for the reissue of the ’559 patent is pending before the
`USPTO. The examination of this application remains suspended. (Reissue
`application 14/534,001, filed November 5, 2014, Paper entered March 23,
`2016).
`
`
`C. Evidence Relied Upon
`Ground 1, upon which we instituted review, relies upon the following
`
`references:
`
`
`European Patent 0295117 B (“EP ’117”) (Ex. 1002).
`
`PCT International Publication WO 2007/122440 A1 (“Gharda”) (Ex. 1004).
`
`Chinese Patent Application Publication 101250158 A (“CN ’158”) (Ex.
`1003).
`
`
`
`
`3
`The interference is styled ANAT LEVIN and MICHAEL
`GRABARNICK, Junior Party, (Application 13/926,389) [Petitioner] v.
`ANDREA PASTORIO and PAOLO BETTI Senior Party, (Patent 8,304,559)
`[Patent Owner].
`4
`Petitioner requested rehearing of the Judgment and underlying Decision
`on Priority and Other Motions but the Judgment and Decision were not
`modified. (Interference 105,995, Paper 262, Request and Paper 271, Decision
`on Rehearing).
`
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`Petitioner also relies on the declaration testimony of Dr. Gordon
`Gribble. (“Gribble Decl.,” Ex. 1010). Based on his education and professional
`experience (see Gribble Decl. ¶¶ 1–3, and curriculum vitae, Ex. 1011), we find
`that Dr. Gribble is qualified to testify about issues raised in this trial. Dr.
`Gribble was deposed by Patent Owner and a transcript of the deposition has
`been filed. (“Gribble Deposition,” Ex. 2021).
`Patent Owner relies on the declaration of testimony of Dr. Dennis P.
`Curran. (“Curran Decl.,” Ex. 2026). Based on his education and professional
`experience (see Curran Decl. ¶¶ 2–4, and curriculum vitae, Ex. 2020), we find
`that Dr. Curran is qualified to testify about issues raised in this trial. Dr.
`Curran was deposed by Petitioner and a transcript of the deposition has been
`filed. (“Curran Deposition,” Ex. 1039).
`
`D.
`
`The ’559 Patent Claims
`
`The ’559 claims are directed to a method of making the compounds of
`formula I, which includes a method of making the insecticidal compound
`fipronil.
`
`Claim 1 of the ‘559 patent is the only independent claim. It reads:
`
`1. A method for the preparation of the compound having the
`following general formula (I):
`
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`
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`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.
`
`(’559 patent, Ex. 1001, 9:2–46).
`
`5
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`When interpreting patent claims involved in an inter partes review of
`
`patentability we use the broadest reasonable construction in light of the
`specification of the patent in which the claims appear. See 37 C.F.R. §
`42.100(b); Cuozzo Speed Techs. v. Lee, 136 S. Ct. 2131 (2016). This is a
`different standard than is applied in evaluating the validity of an issued patent
`where, unlike in this proceeding, the patent owner may not move to amend the
`claims. See Cuozzo at 2145–46; 37 C.F.R. § 42.121(a).
`
`In the Decision Instituting Review we noted that all of the challenged
`claims are directed to a method of making compound I, through the oxidation
`of compound II, in the presence of dichloroacetic acid (DCA) and an oxidizing
`agent which is selected from the group comprising benzoyl peroxides, sodium
`peroxides, t-butyl peroxides and/or hydrogen peroxide. We concluded that the
`claims do not require that DCA perform any particular function in the claimed
`reaction and that, for example, the claims do not require that DCA react with
`the claimed oxidizing agent.5 We concluded that, because “comprising” is an
`open phrase, it opens the “group” of the claim to oxidizing agents other than
`those listed, including those additional ones and combinations set forth in the
`’559 specification at, e.g., column 8, lines 59–61.6 Further we concluded that
`because the ’559 claims provide that the oxidation is conducted in the absence
`of trichloroacetic (TCA) “and/or” trichloroperacetic acid (TCPA), the ’559
`claims allow for, but do not require, the exclusion of both TCA and TCPA
`such that the oxidation may be in the absence of both TCA and TCPA or in the
`
`
`5 We also noted that this construction is consistent with the construction
`given the ’559 claims in Interference 105,995. (Interference 105,995, Paper
`259, Ex. 2002, Decision on Priority and Other Motions, 16 and Paper 271,
`Decision on Rehearing, 3–4).
`6 We also noted that this construction is consistent with the construction
`given the ’559 claims in Interference 105,995. (Interference 105,995, Paper
`144, Ex. 1028, Decision on Motions, 16).
`6
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`absence of either TCA or TCPA.7 We concluded that no other components are
`excluded from the claimed method. (Decision Instituting Review, 6).
`
`In deciding to institute review we did not make any final determination
`of the construction of any claim term. (Decision Instituting Review, 17). We
`have considered the additional arguments and supporting evidence now before
`us in making our final determination, discussed below.
`
`
`II. DISCUSSION
`
`35 U.S.C. 103 Analysis
`A.
`The legal question of obviousness is resolved on the basis of certain
`
`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
`nonobviousness, i.e., secondary considerations. See Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966).
`
`The person of ordinary skill in the art is a person who is presumed to
`know the relevant prior art. In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995).
`The parties assert that
`[o]ne of ordinary skill in the art relevant to the ‘559 patent would
`have a bachelor’s or master’s degree in chemistry or a related
`discipline and have several years of experience in synthetic
`organic chemistry [or] a Ph.D. degree in organic chemistry and 1-
`2 years of experience in synthetic organic chemistry.
`(Gribble Declaration, Ex. 1010, ¶ 14; Curran Declaration, Ex. 2026, ¶¶13–14).
`We agree that a person of ordinary skill may have the education and
`experiences asserted by the parties.
`We instituted review on the ground that claims 1–12 of the ’559 Patent
`
`
`7 We noted that this construction is consistent with the construction given
`the ’559 claims in Interference 105,995. (Interference 105,995, Paper 259,
`Ex. 2002, Decision on Priority and Other Motions, 15–16).
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`are unpatentable under 35 U.S.C. § 103(a) as obvious over EP ’117 in view of
`Gharda, and further in view of CN ’158 for claims 11 and 12 only. In doing
`so we did not make any final determination of the patentability of these claims.
`(Decision Instituting Review 17). Here we have considered the totality of the
`record before us, including any evidence of secondary considerations pointed
`out to us, recognizing that the Petitioner has the burden of proving that the
`challenged claims are unpatentable to Patent Owner. Nike, Inc. v. Addidas,
`AG, 812 F.3d 1326, 1338 (Fed. Cir. 2016) (Evidence of secondary
`considerations when present must be considered in making a determination of
`obviousness.); In re Piasecki, 745 F.2d 1468, 1472–73 (Fed. Cir. 1984) (All
`evidence, including rebuttal evidence, must be considered anew in
`determining whether claims would have been obvious); 35 USC § 316(e)
`(providing that the Petitioner has the burden of proving unpatentability by a
`preponderance of the evidence).
`In instituting review, we stated that:
`Petitioner argues that EP ’117 teaches all the features of
`claim 1 except for the use of DCA as a solvent. In particular
`Petitioner points to portions of EP ’117, including example 1 (p.
`15) showing the formation of fipronil through the oxidation of
`compound II (“the sulfide precursor”) using m-
`chloroperobenzoic acid (mCPBA) as an oxidant in the solvent
`dichloromethane (DCM) [footnote omitted] where no TCA or
`TCPA is present. Petitioner notes that instead of DCA as called
`for by the ’559 claims, EP ’117 teaches using the solvent
`dichloromethane (DCM). (Pet. at 20–21).
`Petitioner argues that one skilled in the art would have
`been motivated to replace DCM with DCA given Gharda’s
`disclosure of both DCM and DCA as preferred solvents for
`oxidizing the same sulfide precursor as is used in EP ’117.
`According to Petitioner another reason to replace DCM with
`DCA in the EP ’117 method is Gharda’s teaching that both DCM
`and DCA act as melting point depressants for the TCA which is
`said to be solid under the room temperature condition of
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`oxidation[footnote omitted]. (Pet. at 24–25, citing to Gharda at 7
`and Gribble Decl. at ¶ 98). Petitioner notes that the oxidant
`mCPBA, used in EP ’117, also is solid at room temperature.
`(Pet. at 23, citing Thermo Fischer Scientific technical data sheet
`for mCPBA (Ex. 1020)).
`In deciding whether it would have been obvious to replace
`DCM with DCA in the EP ’117 method we consider whether a
`person of ordinary skill would have had reason to select DCA as
`a predictable variation of the taught solvent, DCM. KSR v.
`Teleflex Inc., 550 U.S. 398, [417] (2007). On the record before
`us, Petitioner has provided such a reason.
`
`(Decision Instituting Review, 14–15).
`
`
`In short, Petitioner’s position is that EP ’117 shows all the limitations
`of challenged claim 1 except for the use of DCA in the reaction. Instead,
`Petitioner argues, EP ’117 teaches the claimed method but uses DCM as a
`solvent instead of DCA. Gharda shows that both DCM8 and DCA are
`preferred solvents for oxidizing the same sulfide precursor as is used in the
`EP ’117 method such that it would have been obvious to replace the DCM of
`EP ’117 with DCA. (Pet., 24–25). Petitioner asserts further that one skilled
`in the art would have had reason to make the replacement and would have
`expected to produce fipronil if DCA were used in place of DCM in the
`method of EP ’117. (Reply, 24, citing Pet., 20–25; Gribble Decl., Ex. 1010,
`¶¶ 89–102, 129–130, 143–148; EP ’117, Ex. 1002, ¶ 0099; Gharda, Ex.
`1004, 10:10–25).
`We find that EP ’117 teaches, at example 1, a method for the
`formation of fipronil through the oxidation of compound II (the sulfide
`precursor) using mCPBA as an oxidant and DCM as a solvent with no TCA
`
`
`8
`Gharda refers to methylene chloride which, as we’ve previously noted,
`we understand to be another name for DCM. (Decision Instituting Review,
`14).
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`or TCPA being present. (EP ’117, Ex. 1002, ¶¶ 0099, and 0066). We find
`that the EP ’117 method differs from the method of the ’559 claims because
`the EP ’117 method fails to teach the presence of DCA. We find that Gharda
`teaches that both DCM and DCA are solvents, that also may act as “melting
`point depressants”, suitable for use in methods of oxidizing the same sulfide
`precursor as is used in EP ’117. (Gharda, Ex. 1004, 7, 10 (example 1) and
`11 (example 2)).
`We conclude that one skilled in the art, knowing DCA to be a
`recognized alternative to DCM, would have had sufficient reason to replace
`DCM with DCA in the reaction of EP ’117 and that, in view of all the
`argument and evidence before us, claims 1–12 of the ’559 patent have been
`shown to be unpatentable under 35 U.S.C. § 103(a).
`Patent Owner Response
`Patent Owner acknowledges that EP ’117 discloses a method of
`producing fipronil by oxidation of the sulfide precursor using the oxidant m-
`CPBA and the solvent DCM (PO Resp., 12). Patent Owner acknowledges
`that Gharda teaches a solvent mixture of TCA and an additional solvent
`which may be DCA or DCM and that the additional solvent also acts as a
`“melting point depressant.” (PO Resp., 9–10, citing the ’559 patent, Ex.
`1001, 2:30–63). Patent Owner disagrees that it would have been obvious to
`substitute DCA for DCM in the method of EP ’117. Patent Owner makes
`three main arguments against obviousness. Patent Owner argues that there is
`no motivation to combine the EP ’117 and Gharda references, even if
`combined the ’559 claimed invention would not result, and the ’559 claims
`fulfilled a long felt need.
`We address each of Patent Owner’s arguments below.
`1. No motivation to combine
`Patent Owner argues that there is no motivation to replace the reaction
`
`solvent DCM used in example 1 of EP ’117 with DCA because Gharda teaches
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`that the reaction solvent is TCA. Patent Owner argues that DCA is used only
`in minor amounts sufficient to depress the melting point of TCA. (PO Resp.,
`30). In contrast, argues Patent Owner, DCM is used in large excess in EP ’117
`and does not require a melting point depressant because DCM is liquid at the
`reaction temperature. (PO Resp., 31–32 (citing Curran Decl., Ex. 2026, ¶ 54).
`
`The ’559 claims do not require a particular amount of DCA, only that
`the reaction be conducted “in the presence of [DCA].” Thus even a minor
`amount meets the claim requirement. Further, as Patent Owner’s argument
`recognizes, EP ’117 teaches using an excess of the solvent in the reaction.
`(PO Resp., 31–32 (citing Curran Decl., Ex 2026, ¶ 54). We are convinced that
`one skilled in the art replacing DCM with another known solvent (here, DCA)
`would have had reason to follow the teaching of EP ’117 to use an excess of
`solvent when using the replacement solvent. (Gribble Decl., Ex. 1010, ¶ 97).
`
`Further, we are persuaded that one skilled in the art would have
`understood that in Gharda DCA is acting as both a solvent and what is referred
`to in Gharda as a melting point depressant. (Gribble Decl., Ex. 1010, ¶ 95).9
`To the extent Dr. Gribble and Dr. Curran have presented conflicting testimony
`on this point, we credit the testimony of Dr. Gribble. Dr. Gribble’s testimony
`is consistent with Gharda which identifies DCA as being a component of a
`“solvent mixture.” (Gharda, Ex. 1004, 10 (example 1)). While Gharda teaches
`that TCA also is a component of the “solvent mixture,” we are convinced that
`one skilled in the art would have understood from Gharda that DCA is acting
`as a solvent as well. In this regard Dr. Gribble points to prior art in support of
`his testimony that one skilled in the art would have knowledge that DCA is
`
`
`9 Our understanding is that the melting point of a compound itself is fixed
`and cannot be changed by a solvent. However, when the compound is mixed
`with a solvent having a lower melting point then the resulting mixture would
`have a lower melting point than the compound itself. (See, e.g., Curran
`Deposition, Ex. 1039, 58:4–17).
`
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`11
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`suitable in a reaction for oxidizing sulfides. (Gribble Decl., Ex. 1010, ¶ 87
`(citing e.g., Zierer10, Ex. 1006, 2:56–62)). We also are persuaded by Dr.
`Gribble’s testimony that one skilled in the art would have expected DCA to be
`a successful solvent because of this knowledge and further because DCA is
`structurally related to solvents specifically taught to be suitable in EP ’117.
`(Gribble Decl., Ex. 1010, ¶¶ 87–90). We recognize that, as argued by Patent
`Owner (PO Resp., 44–46, citing, inter alia, Curran Decl., Ex. 2026, ¶¶ 75–77,
`81), DCM and DCA are different substances having different properties and it
`would be expected that one may work better than the other in a given reaction.
`However, we are persuaded that, in view of (i) Gharda’s teaching that both are
`useful solvents in the oxidation reaction of the sulfide precursor and (ii) the
`testimony of Dr. Gribble discussed above, one skilled in the art would have
`had sufficient reason to use DCA as a substitute for DCM in the EP ’117
`reaction.
`
`Regarding m-CPBA, the oxidant used in example 1 of EP ’117, Patent
`
`Owner acknowledges that it is a solid reactant but argues that it would not
`have required a melting point depressant since it is shown to be dissolved in
`the DCM reactive solvent. (PO Resp., 32 (citing Curran Decl., Ex. 2026, ¶
`54)). This argument does not address the scenario that is the basis for
`Petitioner’s challenge, i.e., where DCM has been replaced by DCA. At any
`rate we agree with Petitioner that whether or not DCA is acting as a melting
`point depressant for m-CPBA, a skilled artisan would have had reason to
`replace some or all of the DCM with DCA given the prior art teaching that
`both are suitable solvents in the production of fipronil through the oxidation
`of the sulfide precursor.
`Patent Owner argues that one skilled in the art would not have expected
`
`to be able to reduce the melting point of m-CPBA by incorporating DCA
`
`
`10
`Zierer, US Patent 6,013,761, issued 11 January 2000. (Ex. 1006).
`12
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`because its melting point is about 40°C higher than that of TCA. (PO Resp.,
`32, citing Curran Decl., Ex. 2026, 54). Patent Owner argues that one would
`not even know if DCA would have been soluble in m-CPBA at the levels
`required to depress melting point without conducting experiments. (PO Resp.,
`32). We are persuaded though that one skilled in the art would have had
`reason to substitute DCA for DCM to act as a reaction solvent whether or not it
`acts to any particular degree as a melting point depressant.
`
`Patent Owner points to Gharda’s statement that “the preferred melting
`point depressant [DCA] is a poor medium for oxidation and the purpose of its
`addition is only to sufficiently depress the melting point of [TCA] to facilitate
`ease of processing” to support its argument that Gharda teaches DCA only as a
`melting point depressant, not as a solvent. (PO Resp., 17–18 (citing Gharda,
`Ex. 1004, 9:10–25)). Patent Owner does not explain how this statement of
`Gharda discourages the use of DCA as a solvent or as part of a solvent
`mixture, particularly since Gharda specifically indicates that DCA is part of the
`“solvent mixture.” (Gharda, Ex. 1004, 10 (example 1)). While Gharda does
`describe DCA as a “poor medium for oxidation,” we are not persuaded that
`this negates the teaching in Gharda that DCA is used as a cosolvent in a
`reaction mixture for the sulfide precursor. Instead we understand the phrase in
`Gharda to be referring to the oxidizing ability of DCA and not its suitability as
`a solvent. This understanding is consistent with Dr. Curran’s testimony that,
`like TCA,11 DCA itself is not an oxidizing agent. (Curran Deposition, Ex.
`1039, 95:3–17).
`
`Patent Owner argues that the Board already determined during the
`related interference that there was no motivation to substitute an oxidizing
`medium that worked well for one that is said to work poorly. (PO Resp., 39).
`
`
`11 Our understanding is that it is TCPA, not TCA, that acts as the
`oxidizing agent in the reaction. (Curran Decl., Ex. 2026, ¶ 54).
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`As we explained above though we do not understand an oxidizing medium to
`be the same as a solvent. Moreover, the issue presented in the interference (in
`Levin Motion 4) and the evidence considered there were not the same as in this
`proceeding. For instance the EP ’117 reference was not considered in
`combination with Gharda during the interference. (Decision on Motions, Ex.
`2002, Interference No. 105,995, Paper No. 259, 14-15). Our statement from
`the Interference Decision, pointed to by Patent Owner12, related to whether it
`would have been obvious to remove TCA from the reaction of Gharda. Here
`we consider whether it would have been obvious to substitute DCA for DCM
`in the EP ’117 reaction given the teachings of Gharda.
`
`
`
`2. The ’559 claimed invention would not result
`Patent Owner argues that even if one combined the teachings of EP ’117
`
`and Gharda, the claimed invention would not result. Patent Owner argues that
`such a combination would require m-CPBA as an oxidizing agent as taught by
`EP ’117 and a solvent combination of TCA and DCA as taught by Gharda.
`(PO Resp., 47).
`
`First Patent Owner urges that, even though the claims do not expressly
`exclude any oxidizing agent, we should construe the claims to exclude certain
`ones, including and pertinent to the patentability issue before us, m-CPBA.
`Patent Owner argues that m-CPBA was “clearly and unambiguously
`disclaimed” from the scope of the claim because it was deemed
`“unsatisfactory” by the ’559 specification. (PO Resp., 47). In support of its
`
`
`12
`In that decision, we stated, “[w]e are not persuaded that one skilled in
`the art would have sufficient reason to eliminate what is said to be an effective
`medium[TCPA] to rely upon what is said to be a poor one [DCA].” (Decision
`on Motions, Ex. 2002, Interference No. 105,995, Paper No. 259, 17); see also
`id. at 16 (“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.”).
`
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`argument Patent Owner points to the statement in the ’559 patent that the
`method of EP ’117 has “evident disadvantages both in terms of yield and of
`cost” including “impossibility of re-using the oxidi[z]ing agent.” (PO Resp.,
`25 (citing to Gribble Deposition, Ex. 2021, 70:12–72:3)). Patent Owner argues
`that the ’559 patent therefore “clearly and unambiguously disavows the use of
`m-CPBA.” (PO Resp., 25).
`
`We do not agree that the ’559 claims exclude m-CPBA as an oxidizing
`agent. The portion of its patent specification that Patent Owner directs us to in
`support of disavowal asserts that there are “evident disadvantages” to the EP
`’117 method including “the impossibility of re-using the oxidi[z]ing agent”
`which is said to be a 3-chlorbenzoic derivative. (’559 patent, Ex. 1001, 1:60-
`65) This general criticism of the EP ’117 method does not persuade us that
`any particular component used in the EP ’117 method is disavowed. In fact
`the ’559 specification indicates that “the peroxides illustrated earlier may be
`replaced or used in conjunction with a peracid and/or a persulphate.” (’559
`patent, Ex. 1001, 8:59–64). As Petitioner points out, and we agree, m-CPBA
`is a peracid. (Reply 3 (citing Gribble Decl., Ex. 1010 ¶ 31; Curran Deposition,
`Ex. 1039, 22:21–23:4)). We also note that one skilled in the art would not
`have understood that m-CPBA was disavowed by virtue of its being
`characterized as non-reusable because, as acknowledged by Dr. Curran, at least
`one other non-reusable oxidant, i.e., hydrogen peroxide, lies within the express
`language of the ’559 claims. (See Reply 4–5 (citing Curran Deposition, Ex.
`1039, 31:7–34:4)).
`
`The claims do not expressly exclude m-CPBA. Instead Patent Owner
`chose to use the open term “comprising” and thus the claim encompasses m-
`CPBA. AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1245 (Fed. Cir.
`2001) (citations omitted) (“We have consistently held that the word
`‘comprising’ is an open transition phrase.”). Patent Owner could have used
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`claim language that closes the group of oxidizing agents but chose not to do
`so. Nor did Patent Owner choose to include a negative limitation to exclude
`m-CPBA as it did in requiring that the reaction be conducted in the absence of
`trichloroacetic and/or trichloroperacetic acid.
`
`The case law cited by Patent Owner on this point does not support a
`determination that the general criticism found in the ’559 specification
`amounts to the disavowal of claim scope that is asserted here. For example in
`Honeywell Int’l, Inc. v. ITT Indus., 452 F.3d 1312, 1320 (Fed. Cir. 2006),
`cited by Patent Owner (PO Resp., 26), the court found disavowal of carbon
`fibers based on repeated statements in the specification where “the patentee
`informed its readers specifically why carbon fibers would not be suitable as
`‘electrically conductive fibers’ in the claimed invention.” Patent Owner does
`not direct us to a statement in its specification directly stating that, or
`explaining why, m-CPBA would not be suitable in the claimed method. We
`are not persuaded that the general criticism of the method of EP ’117
`constitutes disavowal of m-CPBA.
`In further support of its position that combining EP ’117 and Gharda
`
`would not result in the claimed invention, Patent Owner argues that Gharda
`teaches that the reaction solvent is TCA and that DCA acts only as a melting
`point depressant and not as a solvent. Patent Owner reasons that replacing the
`DCM solvent of EP ’117 with the solvent of Gharda would lead to a reaction
`solvent that must contain TCA (which Patent Owner argues would result in
`formation of at least some TCPA). Such a combination, Patent Owner argues,
`would not result in the subject matter of the challenged claims because the
`claims expressly exclude TCA and/or TCPA. (PO Resp., 48–49).
`
`We are persuaded though that one skilled in the art starting with the
`teaching of EP ’117, and in particular example 1, would have been motivated
`to achieve the claimed invention because Gharda teaches that DCA and DCM
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`are, interchangeably, reaction solvents for the oxidation of the sulfide
`precursor. (Gharda, Ex. 1004, 2:3–9; examples 1 and 2). Substitution of DCM
`with DCA in example 1 of EP ’117 reaction results in the claimed invention
`because the reaction does not use TCA and/or TCPA. (EP ’117, Ex. 1002, 15
`(example 1)). We are persuaded that one skilled in the art reading Gharda
`would have recognized DCA as an alternative solvent to DCM and would have
`had reason to substitute DCM with DCA in a similar reaction, i.e., the reaction
`described in EP ’117. One skilled in the art would not have thought TCA or
`TCPA was required for such a reaction since EP ’117 does not include either.
`(EP ’117, Ex. 1002, 15 (example 1)).
`
`
`3. Long felt need
`We consider Patent Owner’s argument and evidence directed to long felt
`
`need in combination with the other evidence before us in evaluating
`obviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)
`(“Such secondary considerations as . . . long felt but unsolved needs, . . . etc.,
`might be utilized to give light to the circumstances surrounding the origin of
`the subject matter sought to be patented. As indicia of obviousness or
`nonobviousness, these inquiries may have relevancy.”). Long-felt need is
`established through objective evidence showing that there was a persistent art-
`recognized and unsolved need that was met by the claimed invention. In re
`Gershon, 372 F.2d 535, 539 (CCPA 1967); Newell Companies v. Kenney Mfg.
`Co., 864 F.2d 757, 768 (Fed. Cir. 1988); In re Cavanagh, 436 F.2d 491, 496
`(CCPA 1971).
`
`Patent Owner argues that “[t]here was []a long-felt need for a more
`convenient process capable of producing good yields economically” and “a
`desire to develop a method for producing fipronil using cheaper, safer and less
`corrosive agents.” (PO Resp., 50 (citing Gribble Deposition, Ex. 2021, 64:16–
`65:7). In support of its argument Patent Owner states that “the inventors of
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`[Gharda], EP ’117 and WO ’760 were all presumably at least of ‘ordinary
`skill’ as that term has been defined by Petitioner . . . [y]et, none of them
`described a process for making fipronil using DCA as the solvent.” (PO Resp.,
`50).
`For reasons stated above we disagree that the art did not teach DCA as a
`
`solvent in a reaction for making fipronil. Gharda teaches DCA as a solvent in
`such a reaction, albeit in combination with TCA. (Gharda, Ex. 1004, 10
`(example 1)). Further Dr. Gribble testified, providing supporting evidence,
`that DCA was known in the art to be suitable for use in the oxidization of
`sulfides. (Gribble Decl., Ex. 1010, ¶ 87 (citing e.g., Zierer13, Ex. 1006, 2:56–
`62); see also Curran Deposition, Ex. 1039, 49:14–50:6)). We credit Dr.
`Gribble’s testimony regarding this known suitability of DCA.
`
`The parties seem to agree that those making fipronil would have
`preferred to use a better process, e.g., a less expensive and safer process.
`(See, e.g., Gribble Deposition, Ex. 2021, 64:16–65:7; Curran Deposition, Ex.
`1039, 9:18–10:8). However, we have not been directed to objective evidence
`sufficient to show that the prior art recognized a specific persistent need or an
`explanation of how the claimed invention met this need. We have not been
`directed to objective evidence showing that those skilled in