Trials@uspto.gov
`571-272-7822
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` Paper 20
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` Entered: September 16, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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` ADAMA MAKHTESHIM LTD.,
`Petitioner
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`v.
`
`FINCHIMICA S.P.A.,
`Patent Owner.
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`
`
`
`Case IPR2016-00577
`Patent 8,304,559 B2
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`
`
`
`
`Before RICHARD E. SCHAFER, SALLY GARDNER LANE, and DEBORAH
`KATZ, Administrative Patent Judges.
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`LANE, Administrative Patent Judge.
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`ORDER – CONDUCT OF THE PROCEEDING - 37 CFR 42.5(a)
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`

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`Case IPR2016-00577
`Patent 8,304,559 B2
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`On 13 September 2016 Petitioner contacted the Board via email
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`
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`communication “to request that the Board revisit Petitioner’s Request for Partial
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`Rehearing ([Petitioner rehearing request] Paper No. 10), in which Petitioner
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`requested that the Board also institute the IPR on Ground 3 of the Petition.” The
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`email addressed substantively the Petitioner’s position that the Board should revisit
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`the Petitioner rehearing request. Thereafter, on 14 September 2016, Patent Owner
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`responded via email communication and addressed substantively its position that
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`the Board should not revisit the Petitioner rehearing request. Each party indicated
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`that it was available for a conference call if needed. (See attached email
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`communication).
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`A decision on the Petitioner rehearing request was entered on 22 July 2016
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`(Decision on Petitioner rehearing request, Paper 17). In that decision, we declined
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`to modify our decision instituting inter partes review (Decision instituting review,
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`Paper 7) but indicated that “we may do so later if our final conclusions regarding
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`claim construction make it necessary and appropriate to do so”. (Decision on
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`Petitioner rehearing request, Paper 17, at 4). Petitioner was not invited or
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`otherwise authorized to file a paper requesting that we revisit our Decision on
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`Petitioner rehearing request. To the extent Petitioner is requesting authorization to
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`file such a paper that request is DENIED.
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`
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`The 13 September 2016 email communication from Petitioner amounts to an
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`unauthorized supplemental or additional rehearing request. The 14 September
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`2016 email communication from Patent Owner amount to an unauthorized
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`response thereto. Such unauthorized papers will not be considered by the Board.
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`2
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`

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`Case IPR2016-00577
`Patent 8,304,559 B2
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`It is
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`Order
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`
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`ORDERED that the emails discussed herein are made of record as an
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`attachment to this Order but the substantive arguments made in these emails have
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`not been, and will not be, considered by the Board, and
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`FURTHER ORDERED that Petitioner is not authorized to file a paper
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`requesting that the Board revisit its Decision on Petitioner rehearing request.
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`3
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`

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`Case IPR2016-00577
`Patent 8,304,559 B2
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`PETITIONER:
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`Gary Gershik
`ggershik@cooperdunham.com
`
`Norman Zivin
`nzivin@cooperdunham.com
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`
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`PATENT OWNER:
`
`Edward Figg
`efigg@rfem.com
`
`Robert Huntington
`dhuntington@rothwellfigg.com
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`4
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`

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`From:
`To:
`Subject:
`Date:
`
`Interference Trial Section
`Lane, Sally; Interference Trial Section; Wilburn, Althea
`RE: attachment for order in IPR2016-00577
`Friday, September 16, 2016 11:12:19 AM
`
`Attachment to order.
`
`Thanks
`Eric
`
`From: Lane, Sally
`Sent: Friday, September 16, 2016 10:58 AM
`To: Interference Trial Section <InterferenceTrialSection@USPTO.GOV>
`Subject: attachment for order in IPR2016-00577
`
`
`
`From: Erik van Leeuwen [mailto:evanlee@rothwellfigg.com]
`Sent: Wednesday, September 14, 2016 10:40 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: E. Anthony Figg <efigg@rothwellfigg.com>; Danny Huntington <dhuntington@rothwellfigg.com>;
`Sharon Crane <scrane@rothwellfigg.com>; Derek F. Dahlgren <ddahlgren@rothwellfigg.com>; Seth
`E. Cockrum <scockrum@rothwellfigg.com>; 'ggershik@cooperdunham.com'
`<ggershik@cooperdunham.com>; 'nzivin@cooperdunham.com' <nzivin@cooperdunham.com>
`Subject: RE: IPR2016-00577: Adama Makhteshim Ltd. (Petitioner) v. Finchimica S.P.A. (Patent
`Owner)
`
`Your Honor:
`
`The undersigned counsel for Patent Owner, Finchimica S.P.A., writes in response to
`Petitioner’s second request for reconsideration. Patent Owner wishes to clarify various
`inaccuracies made by Petitioner regarding the arguments Patent Owner made in its recently
`filed response. (Paper No. 19).
`
`Petitioner has taken portions of Patent Owner’s response out of context to assert that Patent
`Owner is arguing against the Board’s construction of “in the presence of [DCA]” and is
`seeking to import limitations regarding the functionality of DCA from the specification to the
`claims. But Patent Owner has done no such thing. Indeed, Patent Owner acknowledged the
`Board’s construction that “the claims do not require that DCA perform any particular
`function,” and did not challenge it as evidenced by its statement, “it is true that the 559 patent
`claims are not limited to a particular theory of operation…” (Paper No. 19, p. 22, ll. 13-16).
` Accordingly, Patent Owner has not contested the Board’s construction, and there is no need
`for the Board to revisit again its institution decision denying Ground 3.
`
`Ground 3 was predicated on the Board’s acceptance of the “construction of the term ‘in the
`presence of [DCA]’ that was advanced by Patent Owner in Interference No. 105,995.” (Paper
`No. 2, p. 43). Patent Owner’s proposed construction in the interference “would require DCA
`in combination with an oxidizing agent such as hydgrogen peroxide to react to form the
`oxidizing agent [DCPA] which in turn acts as an oxidant for the conversion of the compound
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`

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`of formula II to fipronil.” (Paper No. 7, p. 16). However, the Board did not accept that
`construction, and so it did not institute Ground 3. (Paper No. 7, p. 16-17). Because Patent
`Owner has not contested the Board’s construction, nothing has changed. Petitioner has
`offered no explanation why the denial of Ground 3 should be revisited when Patent Owner has
`not argued that the claims are limited to a particular theory as to the function of the DCA. It
`should not.
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`Apparently recognizing the weakness of its argument, Petitioner mischaracterizes Patent
`Owner’s assertion that the claims should not be construed to permit DCA to be present in only
`a trivial amount, as “strikingly similar” to Patent Owner’s argument in the interference that the
`559 claims require DCA to perform a function, i.e., to react with hydrogen peroxide to form
`DCPA. But that is not the case. Here, Patent Owner simply explains that because the use of
`DCA is the central feature of the process claimed in the 559 patent, it should not be relegated
`to a trivial component. Thus, contrary to Petitioner’s characterization, Patent Owner has not
`“attempted to import limitations” into the claim, but rather is attempting to prevent important
`features of the invention from being effectively read out of the claims. As explained in its
`Response, Patent Owner’s view is consistent with principles of claim construction and the
`relevant case law, whereas Petitioner’s view that the claims only require “some amount” of
`DCA to be present is not. (Paper No. 19, p. 22-24; Paper No. 2, p. 14). The specification
`makes abundantly clear that the use of DCA in place of expensive, corrosive and difficult-to-
`use compounds is the innovative feature of the claimed process. Petitioner’s argument that the
`claims should be eviscerated by interpreting them to allow a molecule or small percentage of
`DCA is contrary to well-established precedent and, importantly, is not compelled by the
`Board’s prior decision.
`
`Patent Owner’s view that the 559 claims require more than a trivial amount of DCA to be
`present does not conflict with the Board’s claim construction. Indeed, the Board did not even
`address Petitioner’s contention that only a “small amount” of DCA need be present. (Paper
`No. 2, p. 14). Patent Owner addressed Petitioner’s contention only to make the record clear
`that Patent Owner disagrees with Petitioner’s apparent relegation of DCA to a trivial
`component in the claimed process. Regardless, given that the Board did not originally address
`that aspect of Petitioner’s proposed construction in its institution decision, the Board clearly
`did not consider the amount of DCA required by the claims to be a determining factor in the
`denial of institution on Ground 3. This is yet another reason to not reconsider its decision
`denying institution of Ground 3.
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`Petitioner’s renewed request for reconsideration would further delay resolution of this matter.
` Petitioner couches its request as necessary to ensure Petitioner is not prejudiced, but it is
`Patent Owner who would be prejudiced by institution of Ground 3. Institution of Ground 3
`would require further briefing from both parties to address that Ground and would delay final
`resolution of the IPR. During that additional delay, the infringement action that Patent Owner
`has brought against Petitioner will continue to be stayed resulting in further prejudice to Patent
`Owner.
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`Petitioner has already managed to delay its day of reckoning in the district court by waiting to
`file its original IPR six months after the Board first denied Petitioner’s request in the
`interference to use the references it now relies on. Petitioner should not be permitted to
`further delay the proceedings by attributing an argument to Patent Owner that Patent Owner
`has not made. For these reasons, the Board should refuse to entertain Petitioner’s invitation to
`revisit its decision denying institution of Ground 3.
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`

`
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`Counsel for Patent Owner is available for a telephone conference if the Board requires one to
`resolve this issue.
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`Respectfully submitted,
`
`Tony Figg
`Lead Counsel for Patent Owner Finchimica S.P.A.
`____
`
`From: Gary J. Gershik [mailto:GGERSHIK@COOPERDUNHAM.COM]
`Sent: Tuesday, September 13, 2016 4:35 PM
`To: 'trials@uspto.gov'
`Cc: E. Anthony Figg; Danny Huntington; Seth E. Cockrum; Sharon Crane; Derek F. Dahlgren; Norman
`Zivin
`Subject: IPR2016-00577; ADAMA MAKHTESHIM LTD. (Petitioner) v. FINCHIMICA S.P.A. (Patent Owner)
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`To the Patent Trial and Appeal Board,
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` I
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` write on behalf of Petitioner, Adama Makhteshim Ltd., to request that the Board
`revisit Petitioner’s Request for Partial Rehearing (Paper No. 10), in which Petitioner
`requested that the Board also institute the IPR on Ground 3 of the Petition.
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`Petitioner’s Request for Partial Rehearing was submitted subject to Patent Owner
`continuing to argue against the Board’s claim construction of “in the presence of
`[DCA]” set forth in the May 24, 2016 institution decision (Paper No. 7). Petitioner’s
`Request explained that Ground 3 is directed towards a construction of “in the
`presence of [DCA]” advocated by Patent Owner in Interference No. 105,995, but not
`accepted by the Board for purposes of the institution decision.
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`In its July 22, 2016 Decision on Petitioner’s Request, the Board stated that “We have
`considered the Petitioner Request as further discussed below but do not modify the
`Decision at this time. Upon review of other briefing yet to be filed, including any
`Patent Owner Response, we may revisit the Petitioner Request if it becomes
`necessary and appropriate to do so.” (Paper No. 11 at 2).
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`Now, in the August 31, 2016 Patent Owner Response (Paper No. 19) and
`accompanying expert declaration (Exhibit 2026), Patent Owner argues against the
`Board’s non-final construction of “in the presence of [DCA],” using arguments
`substantially similar to those in Interference No. 105,995. It is therefore necessary
`and appropriate to revisit Petitioner’s Request and to institute on Ground 3 of the
`Petition.
`
`During Interference No. 105,995, Patent Owner argued that DCA must be more than
`“merely a spectator molecule” or a “trivial and meaningless process component.”
`Patent Owner argued that DCA was a “centerpiece of Pastorio’s invention” and that it
`must, inter alia, act as a “reaction medium.” (Interference No. 105,995, Pastorio
`Opposition 4, Paper No. 227, pp. 4-5). Patent Owner in this IPR rehashes strikingly
`similar arguments in its Response, stating that DCA must be more than a “mere
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`

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`bystander present only in trivial amounts” or a “trivial bystander component.” It argues
`that DCA is “the centerpiece of the ‘559 patent’s invention” and must be used as a
`“reaction medium.” See e.g. Paper No. 19, p. 2, ll. 8-9, pp. 21-24, and p. 49, l. 8 to p.
`50, l. 2; Curran Declaration, Ex. 2026, ¶ 26.
`
`In both proceedings, Patent Owner has attempted to import limitations regarding the
`functionality of DCA from the specification into the claims. See e.g. Paper 19, p. 10, l.
`18 to p. 11, l. 9 and p. 23, l. 6 to p. 24, l. 8; Curran Declaration, Ex. 2026, ¶ 26;
`Pastorio Opposition 4, Paper No. 227, p. 4, l. 5 to p. 5, l. 8; IPR2016-00577, Ex. 1001,
`‘559 Patent, 4:26-42 and 5:18-33.
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`By making these claim construction arguments concerning “in the presence of [DCA]”
`in its Response, Patent Owner is attempting to preserve such arguments.
` Accordingly, it is important that an IPR be instituted on Ground 3 so that, if the claim
`construction changes, Petitioner will not be prejudiced.
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`Counsel for Petitioner is available for a telephone conference.
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`Respectfully submitted,
`
`Gary J. Gershik
`Lead Counsel for Petitioner Adama Makhteshim Ltd.
`
`Cooper & Dunham LLP
`30 Rockefeller Plaza, 20th Floor
`New York, New York 10112
`T: 212-278-0552 F: 212-391-0525
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