Case218-1358
`
`Document: 48
`
`Pagez1
`
`Filed:03/27/2019
`
`NOTE: This disposition is nonprecedential.
`
`flaniteh gamma Qtuurt of gppealz
`
`fur the jfeheral QEI'mu't
`
`COLAS SOLUTIONS, INC.,
`Appellant
`
`V.
`
`BLACKLIDGE EMULSIONS, INC.,
`Appellee
`
`2018- 1358, 2018— 1359
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2016-
`01031, IPR2016-01032.
`
`Decided: March 27, 2019
`
`ALLEN MARCEL SOKAL, Potomac, MD, argued for appel-
`lant. Also represented by KEVIN W. KIRSCH, DAVID ANGELO
`MANCINO, Baker & Hostetler LLP, Cincinnati, OH.
`
`JOHN FRANCIS TRIGGS, Patterson Intellectual Property
`Law, PC, Nashville, TN, argued for appellee. Also repre-
`sented by RYAN D. LEVY.
`
`

`

`Case:18-1358
`
`Document: 48
`
`Page:2
`
`Filedz03/27/2019
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`2
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`COLAS SOLUTIONS, INC. v. BLACKLIDGE EMULSIONS, INC.
`
`Before PRos'r, Chief Judge, O’MALLEY and HUGHES,
`Circuit Judges.
`
`PROST, Chief Judge.
`
`Colas Solutions, Inc. (“Colas”) appeals from the final
`written decisions of the Patent Trial and Appeal Board
`(“Board”) in two inter partes reviews. The Board deter-
`mined that certain claims of US. Patent Nos. 7,503,724
`(“the ’724 patent”) and 7,918,624 (“the ’624 patent”) are not
`unpatentable in view of the prior art of record. After find-
`ing Colas failed to prove its primary obviousness theory
`based on inherency, the Board concluded that its alterna-
`tive obviousness theory was untimely. We affirm.
`
`BACKGROUND
`
`I
`
`Inc. (“Blacklidge”) is the as-
`Blacklidge Emulsions,
`signee of the ’724 and ’624 patents. The patents are di-
`rected to a method of applying a specific asphalt emulsion
`coating, known as a “tack coat,” to a road surface. See ’724
`patent col. 1 11. 13—16; ’624 patent col. 1 11. 15—18.
`
`The claimed invention involves a method of bonding
`layers of asphalt using a tack coat that exhibits certain
`properties. Namely, the tack coat has a relatively hard sur-
`face that resists adhering to vehicle tires yet still functions
`as an adhesive for subsequent layers of pavement. ’724 pa-
`tent col. 4 11. 53—57; ’624 patent col. 4 11. 56—60. To attain
`these properties, the claims require that the tack coat has
`a specific range of “softening points”—i.e., the “tempera-
`ture at which an asphalt composition becomes soft and
`flowable.”
`’724 patent col. 2 11. 59—60; ’624 patent col. 2
`11. 61—62.
`
`For example, claim 1 requires that the asphalt compo-
`sition provides a coating with “a softening point greater
`than about 140° F. (60° 0.)” once cured. ’724 patent col. 14
`
`

`

`Case: 18-1358
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`Document: 48
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`Page: 3
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`Filed: 03/27/2019
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`COLAS SOLUTIONS, INC. V. BLACKLIDGE EMULSIONS, INC.
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`3
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`11. 16—17; ’624 patent col. 14 11. 3—4. The remaining claims
`require similar ranges.
`
`II
`
`In 2016, Colas filed Petitions for inter partes review,
`challenging the validity of the ’724 and ’624 patents as ob-
`vious over the prior art.1 The Board instituted review of
`the challenged claims.2
`'
`
`In its Petitions, Colas relied on the Bardesi reference
`as teaching an asphalt that meets the “softening point” e1-
`ement of each claim.3 Bardesi does not expressly disclose
`softening points for any of its asphalts. Instead, it discloses
`“pen” values. A pen value, or penetration value, “measures
`the distance in dmm (tenths of a millimeter) that a stand-
`ard needle, under a standard loading, will penetrate a sam-
`ple in a given time under known temperature conditions.”
`’724 patent col. 211. 50—53. Based on these pen values, Co-
`las advanced the theory that Bardesi inherently disclosed
`the softening point limitation.
`
`In support of its inherency theory, Colas offered the
`opinion of its expert, Dr. King. Dr. King opined that “as-
`phalt having a hardness of 20-pen or below, such as the
`ones specifically taught by Bardesi, will necessarily have a
`softening point greater than about 140° F (60° C).” J .A. 201
`(citing King Decl. 1] 40).
`
`The relevant briefing and other submissions in
`1
`both actions were substantially identical. For simplicity,
`we cite only to the materials from the ’724 patent action.
`2
`The challenged claims include claims 1—12, 15—20,
`23—28, and 31—33 of the ’724 patent and claims 1—12, 14—
`23, and 25 of the ’624 patent.
`3
`Bardesi, O.E. & D.A. Paez, A Novel Generation of
`Tack Coat Emulsions to Avoid Adhesion to Tyres, Third
`World Congress on Emulsions (“Bardesi”).
`
`

`

`Case218-1358
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`Document: 48
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`Page:4
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`Filed:03/27/2019
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`4
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`COLAS SOLUTIONS, INC. V. BLACKLIDGE EMULSIONS, INC.
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`To reach his conclusion, Dr. King relied on a formula
`called the Pfeiffer equation4 to calculate a range of poten-
`tial softening points for the Bardesi asphalts. J .A. 201 (cit-
`ing King Decl. 11 40). The equation proposes a relationship
`between an asphalt’s (i) pen value, (ii) softening point, and
`(iii) penetration index (“PI”).5 Id.
`
`In response, Blacklidge argued that Dr. King’s calcula-
`tions were flawed. Blacklidge’s expert, Dr. Little, applied
`the Pfeiffer equation and arrived at different potential sof-
`tening points. See J .A. 368 (citing Little Decl. 1M} 89—93).
`According to Dr. Little’s results, the Bardesi asphalts may
`have softening points less than 60° C depending on their PI
`value. Id.
`
`In its Reply, Colas conceded that “Dr. King made [a]
`mathematical mistake with his Pfeiffer calculations.”
`
`J .A. 448. Furthermore, Colas conceded that Dr. Little’s
`calculations were accurate. See id.
`
`- Despite Dr. King’s error, Colas argued that “the cor-
`rected Pfeiffer relationship still shows that most 10/20 pen
`asphalts, and certainly the better quality 10/20 pen as-
`phalts, will have the claimed softening point values above
`60° C.” J .A. 449 (emphasis in original).
`In turn, Colas
`raised the argument that “a prima facie case of obviousness
`still exists when the ranges of a claimed composition over-
`lap the ranges disclosed in prior art.” J .A. 450 (citing In re
`Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)).
`
`The Pfeiffer equation is as follows: PI = (1952 — 500
`4
`log pen — 20 SP) / (50 log pen — SP — 120). J.A. 14.
`5 According to Dr. King, PI is a measure of an as-
`phalt’s temperature susceptibility.
`J .A. 14 (citing King
`Decl. 1[ 40).
`
`

`

`Casez18-1358
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`Document: 48
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`Page:5
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`COLAS SOLUTIONS, INC. v. BLACKLIDGE EMULSIONS, INC.
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`5
`
`III
`
`On November 2, 2017, the Board issued its final writ-
`ten decisions in both proceedings. The Board concluded
`Colas had not shown by a preponderance of the evidence
`that any of the challenged claims in either patent would
`have been obvious in view of the prior art.
`
`The Board first addressed inherency. The Board em-
`phasized that a party must “meet a high standard in order
`to rely on inherency to establish the existence of a claim
`limitation in the prior art in an obviousness analysis—the
`limitation at issue necessarily must be present, or the nat-
`ural result of the combination of elements explicitly dis-
`‘closed by the prior art.”6 Colas Sols. Inc. U. Blacklidge
`Emulsions, Inc., No. IPR2016-01031, 2017 WL 5067597, at
`*9 (PTAB Nov. 2, 2017) (quoting PAR Pharm., Inc. U. TWI
`Pharms., Inc., 773 F.3d 1186, 1195—96 (Fed. Cir. 2014)).
`The Board concluded Colas’s inherency theory failed be-
`cause the undisputed results from the Pfeiffer equation
`showed that “not all 10-pen and 20-pen asphalts have a sof-
`tening point greater than 60° C.” Id.
`
`The Board then addressed Colas’s alternative theory
`based on overlapping ranges. The Board noted that the
`only “obviousness challenge in the Petition was predicated
`on the inherency of the softening point limitation in the as-
`phalt of the emulsion disclosed in Bardesi. The Petition
`argued, consistently and exclusively, that a softening point
`within the claimed range was necessarily and inherently
`present in Bardesi’s 10/20 pen asphalt.” Id. at *8. “At the
`hearing, Petitioner suggested that it was abandoning the
`inherency theory for the softening point limitation .
`.
`.
`.”
`
`The final written decision in the ’624 patent action
`6
`was substantially identical. See Colas Sols., Inc. 0. Black-
`lidge Emulsions,
`Inc., No.
`IPR2016-01032, 2017 WL
`5067598, at *9 (P.T.A.B. Nov. 2, 2017).
`
`

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`Case: 18-1358
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`Document: 48
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`Page: 6
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`Filed: 03/27/2019
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`6
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`COLAS SOLUTIONS, INC. V. BLACKLIDGE EMULSIONS, INC.
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`Id. at *1 1. The Board concluded that “[t]he problem for Pe-
`titioner, however, is that inherency was the only theory
`presented in the Petition for why the cited combination
`teaches or renders obvious the softening point limitation.”
`Id. Accordingly, the Board deemed the new overlapping
`ranges theory waived.
`Id. Finally, the Board concluded
`that the new theory was also unsupported by the evidence.
`Id.
`
`As a result, the Board ruled that Colas failed to carry
`its burden to demonstrate that claim 1 of either patent was
`obvious in View of the cited references. Because Colas re-
`
`lied on the same evidence and argument to satisfy the “sof-
`tening point” limitation for all other challenged claims, the
`Board determined that none of the other claims were un-
`
`patentable in view of the prior art.
`
`Colas appealed. We have jurisdiction under 28 U.S.C.
`§ 295(a)(4)(A).
`
`DISCUSSION
`
`Colas does not challenge the Board’s rejection of its in-
`herency theory. Rather, it argues that the Board erred by
`declining to consider its alternative obviousness theory re-
`garding overlapping ranges. We agree with the Board that
`this alternative theory was waived.
`
`I
`
`As a threshold matter, Colas implies that the Board’s
`decision regarding waiver should be reviewed de novo.
`However, “[d]ecisions related to compliance with the
`Board’s procedures are reviewed for an abuse of discre-
`tion.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359, 1367 (Fed. Cir. 2016). Therefore, “the
`Board’s determinations that [a party] exceeded the scope of
`a proper reply in violation of 37 C.F.R. § 42.23(b) .
`.
`. are
`reviewed for an abuse of discretion.” Id.
`
`

`

`Casez18—1358
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`Document: 48
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`Page:7
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`Filed: 03/27/2019
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`COLAS SOLUTIONS, INC. V. BLACKLIDGE EMULSIONS, INC.
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`7
`
`II
`
`Turning to the issue of waiver, the Board did not abuse
`its discretion by finding Colas’s overlapping ranges theory
`waived. It is of “the utmost importance that petitioners in
`the IPR proceedings adhere to the requirement that the in-
`itial petition identify ‘with particularity’ the ‘evidence that
`supports the grounds for the challenge to each claim.”
`Id. at 1369 (quoting 35 U.S.C. § 312(a)(3)). “A reply may
`only respond to arguments raised in the corresponding op-
`position or patent owner response.” Id. (quoting 37 CPR.
`§ 42.23(b)).
`
`A detailed review of the Petition in both proceedings
`confirms that inherency was Colas’s only theory for this
`disputed claim element. Colas addressed the disputed “sof-
`tening point” limitation in three parts. First, it stated its
`theory that Bardesi “necessarily” taught the limitation.
`J .A. 201. Second, it described the details of the equation
`supporting that inherency theory. See J .A. 202—03 (dis-
`cussing Dr. King’s calculations). Assuming a certain range
`of PI values, Dr. King calculated a potential range of sof-
`tening points for the asphalts in Bardesi. According to Dr.
`King’s calculations, all potential softening point values fell
`within the claimed range. Third, the Petition concluded by
`explaining that “Dr. King was able to opine that ‘asphalts
`of 10—20 dmm penetration from the Bardesi tack coat emul-
`sion would necessarily have softening points meeting the
`claim 1 requirement of ‘greater than about 60° C.’” J .A. 203
`(quoting King Decl. 11 43).
`
`But Colas’s inherency theory was short-lived. Dr.
`King’s mathematical mistake was highlighted in Black-
`lidge’s Response. J.A. 368—74. As a result, Colas’s Reply
`pressed a different theory that the claims are obvious be-
`cause softening points taught in the prior art mostly over-
`lap with the claimed range. J .A. 450.
`
`

`

`Casez18-1358
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`Document: 48
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`COLAS SOLUTIONS, INC. V. BLACKLIDGE EMULSIONS, INC.
`
`The untimeliness of Colas’s alternative theory is self-
`evident. Colas fails to point to a single line of its original
`Petition articulating this theory. Furthermore, though Co-
`las claims to have always advanced this theory, Colas
`never marshalled evidence to support it.
`Instead, it at-
`tempted to recycle existing evidence intended for its inher-
`ency theory. The challenge for Colas all along was that
`Bardesi does not disclose any actual “softening point” val-
`ues for its asphalts. To overcome this gap, Colas’s ad-
`vanced an inherency-based obviousness theory to show
`that every potential value for these specimens necessarily
`falls within the claimed range. However, it could not make
`that showing. Pivoting, Colas tried to argue that “most”
`potential values still fall within the claimed range. But the
`fact that some or most potential values may occur in a
`range does not confirm the actual softening point value for
`the specimen occurs within the range.
`It may, or it may
`not. On this record, the actual softening point is simply
`unknown.
`
`As such, Colas’s reliance on In re Peterson is misplaced.
`In re Peterson stands for the proposition that “[a] prima fa-
`cie case of obviousness typically exists when the ranges of
`a claimed composition overlap the ranges disclosed in the
`prior art.” 315 F.3d 1325, 1329 (Fed. Cir. 2003) (emphasis
`added). Here, no ranges are disclosed.7
`
`Colas’s reliance on case law regarding anticipation
`7
`unravels for the same reason. Colas primarily relies on
`Ineos USA LLC 0. Berry Plastics Corp., arguing that if the
`prior art discloses a broader, overlapping range then the
`patent owner must establish that the specific claimed
`range was “critical” to the operability of the invention. Ap-
`pellant’s Br. 46 (quoting 783 F.3d 865, 869—70 (Fed. Cir.
`2015)). But the prior art here does not actually disclose a
`range of softening points.
`
`

`

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`Document: 48
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`COLAS SOLUTIONS, INC. V. BLACKLIDGE EMULSIONS, INC.
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`9
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`In sum, inherency was an all or nothing theory. Colas’s
`Petition and its evidence were tailored to prove inherency.
`That theory failed. Colas’s belated attempt to stretch that
`evidence to fit its alternative “overlapping ranges” theory
`only underscores that this theory was an afterthought
`raised for the first time in its Reply. Thus, the Board cor-
`rectly concluded the theory was waived.8
`
`III
`
`Colas’s efforts to rewrite the record to avoid this out-
`
`come are unavailing. First, Colas argues that even if it did
`not specifically raise an “overlapping ranges” obviousness
`theory in its Petition, Blacklidge opened the door to such a
`theory in its Response. Not so. Even a cursory review of
`the record shows
`that Blacklidge’s Response simply
`pointed out the flaws in the underlying evidence support-
`ing Colas’s inherency theory.
`‘
`
`Second, Colas argues that Blacklidge recognized Colas
`was pursuing a broad obviousness theory unrelated to in-
`herency. Appellant’s Br. 35—37. To prove this assertion,
`Colas points to portions of Blacklidge’s Response, which at
`times addressed issues aside from inherency.
`
`It is true that Blacklidge found other potential defects
`in Colas’s invalidity case. For instance, Blacklidge pointed
`out that while the claims at issue recite softening points for
`the “cured” tack coat, Bardesi lacks any “teaching or sug-
`gestion” of such properties. See J .A. 350; see also J .A. 356-
`
`8 On appeal, Colas refers to its “alternative” invalid-
`ity positions using different labels and formulations (e.g.,
`“prima facie obviousness,” “overlapping” ranges). See Ap-
`pellant’s Br. 2, 32, 42. It also mentions an “inherent antic-
`ipation” theory. See id. 46—48. However, since obviousness
`based on inherency was the only invalidity theory Colas ad-
`vanced in the Petition, all other theories were waived re-
`gardless of how they are styled.
`
`

`

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`Document: 48
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`Filed: 03/27/2019
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`COLAS SOLUTIONS, INC. V. BLACKLIDGE EMULSIONS, INC.
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`57 (arguing Bardesi only concerns the properties of the
`“base asphalt” before it is ever cured). In Colas’s view, such
`arguments about what the prior art “teaches” to a person
`of ordinary skill are part of a more typical § 103 analysis
`unrelated to
`analyzing inherency—which
`examines
`whether the limitation is “necessarily” present in the prior
`art, PAR Pharm., 773 F.3d at 1195—96. In turn, Colas in-
`vites us to infer that the Board and Blacklidge were keenly
`aware of Colas’s broader theory that the claimed ranges of
`softening points would have been obvious to one of skill in
`the art.
`
`This argument misconstrues the record. Colas over-
`looks clear statements in the Response that confirm that
`Blacklidge’s understanding had always been that Colas’s
`theory was limited to inherency. Blacklidge expressly
`stated that “Colas does not argue that a PHOSITA would
`have found it obvious to seek out asphalts with the partic-
`ular softening points.” J .A. 364 (emphasis added). Black-
`lidge maintained that Colas’s lone theory was that the
`Bardesi asphalt “inherently possesses a softening point
`that meets the claim limitations.” Id. Moreover, because
`Colas’s lone inherency-based theory was fundamentally
`flawed, Blacklidge insisted that Colas should “not be per-
`mitted to introduce an entirely new obviousness rationale
`to fix the errors made in its Petition.” J .A. 364—65. While
`
`Blacklidge did point out other flaws in the prior art refer-
`ence not directly related to inherency, Blacklidge’s effort to
`cabin Colas to its original theory is unquestionable. Under
`such circumstances, Blacklidge’s statements do little to eV-
`idence that Colas properly preserved an alternative theory
`in its Petition.
`Indeed, had Colas adequately articulated
`such a theory, it would not need to rely on Blacklidge’s
`statements. Colas should be able to point to its location in
`the Petition. It cannot do so.
`
`Finally, Colas also cites to several cases regarding
`waiver. But its reliance on our decisions in Intellectual
`
`Ventures I,
`
`Intellectual Ventures II, and Genzyme is
`
`

`

`Casez18-1358
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`Document: 48
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`Page:11
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`Filed: 03/27/2019
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`COLAS SOLUTIONS, INC. V. BLACKLIDGE EMULSIONS, INC.
`
`11
`
`misplaced. None of these cases involved a new theory
`raised for the first time in a Reply in contravention of 37
`C.F.R. § 42.23(b). See Ericsson’Inc. 1). Intellectual Ventures
`I LLC, 901 F.3d 1374, 1381 (Fed. Cir. 2018) (finding no
`waiver where party “merely expand[ed] on a previously ar-
`gued rationale” rather than an entirely new rationale); In-
`tellectual Ventures II LLC v. Ericsson Inc., 685 F. App’x
`913, 922 (Fed. Cir. 2017) (finding no waiver where party
`“continued to argue, just as it had in its petition, that claim
`1 would have been obvious over the combination of Li,
`Yamaura, Zhaung, and Beta”); Genzyme Therapeutic Prod.
`Ltd. P’ship u. Biomarin Pharm. Inc., 825 F.3d 1360, 1366
`(Fed. Cir. 2016) (finding Board’s final written decision com-
`plied with Administrative Procedures Act because the pa-
`tent owner had notice of “new evidence” supporting an
`existing obviousness theory).
`
`By contrast, here Colas introduced a completely “new
`theory of invalidity” in its Reply.
`Intelligent Bio-systems,
`821 F.3d at 1369. Like the petitioner in Intelligent Bio-
`systerns who “relied on an entirely new rationale” for a mo-
`tivation to combine, id. at 1370, Colas jettisoned its inher-
`ency theory and introduced a brand-new theory of
`“overlapping ranges” to explain why one of ordinary skill
`would find the disputed element taught by Bardesi.
`
`Under such circumstances, the Board does not abuse
`its discretion in declining to consider such untimely theo-
`ries. See id. at 1369—70 (refusing to consider a new theory
`in light of 37 CPR. § 42.23(b)); see also Wasica Finance
`GmbH v. Continental Automotive Sys., Inc., 853 F.3d 1272,
`1286 (Fed. Cir. 2017) (“Rather than explaining how its orig-
`inal petition was correct, Continental’s subsequent argu-
`ments amount to an entirely new theory of prima facie
`obviousness absent from the petition. Shifting arguments
`in this fashion is foreclosed by statute, our precedent, and
`Board guidelines”).
`
`

`

`Case218-1358
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`Document: 48
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`Page:12
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`Filed: 03/27/2019
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`12
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`COLAS SOLUTIONS, INC. V. BLACKLIDGE EMULSIONS, INC.
`
`CONCLUSION
`
`We have considered Colas’s other arguments and find
`them unpersuasive. For the foregoing reasons, we affirm
`the Board’s final written decisions finding the challenged
`claims not obvious in View of the prior art.
`
`AFFIRMED
`
`

`

`Casez18-1358
`
`Document: 49
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`Page:1
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`Filed203/27/2019
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`@Hniteh §>tate§ QEnurt‘ of appeals:
`for the flattered QEtrtutt
`
`COLAS SOLUTIONS, INC.,
`
`Appellant
`
`V.
`
`BLACKLIDGE EMULSIONS, INC.,
`
`Appellee
`
`2018-1358, 2018-1359
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2016-
`01031, IPR2016-01032.
`
`JUDGMENT
`
`THIS CAUSE having been considered, it is
`
`.
`
`' ORDERED AND ADJUDGEDZ
`
`AFFIRMED
`
`ENTERED BY ORDER OF THE COURT
`
`

`

`Casez18-1358
`
`Document: 49
`
`Page:2
`
`Filed: 03/27/2019
`
`
`March 27 2019
`
`'
`
`/s/ Peter R. Marksteiner
`
`Peter R. Marksteiner
`
`Clerk of Court
`
`

`

`Case: 18—1358
`
`Document: 50
`
`Page: 1
`
`Filed: 05/03/2019
`
`Uflniteh étates QEnurt of Qppeals
`
`for the jfeberal QEirtuit
`
`COLAS SOLUTIONS, INC.,
`
`Appellant
`
`V.
`
`BLACKLIDGE EMULSIONS, INC.,
`
`Appellee
`
`2018—1358, 2018-1359
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2016-
`01031, IPR2016-01032
`
`MANDATE
`
`In accordance with the judgment of this Court, entered
`March 27, 2019, and pursuant to Rule 41 of the Federal
`Rules of Appellate Procedure,
`the formal mandate is
`hereby issued.
`
`May 3, 2019
`
`FOR THE COURT
`
`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`
`Clerk of Court
`
`