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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 38
`Entered: November 2, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COLAS SOLUTIONS INC.,
`Petitioner,
`
`v.
`
`BLACKLIDGE EMULSIONS, INC.,
`Patent Owner.
`
`Case IPR2016-01031
`Patent 7,503,724 B2
`
`Before MITCHELL G. WEATHERLY, JAMES A. TARTAL, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`Colas Solutions Inc. (“Colas” or “Petitioner”) filed a petition (Paper 1,
`“Pet.”) to institute an inter partes review of claims 1–12, 15–20, 23–28, and
`31–33 (the “challenged claims”) of U.S. Patent No. 7,503,724 B2 (Ex. 1001,
`“the ’724 patent”). 35 U.S.C. § 311. Blacklidge Emulsions, Inc.
`(“Blacklidge” or “Patent Owner”) timely filed a Preliminary Response.
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`Patent 7,503,724 B2
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`Paper 6 (“Prelim. Resp.”). We instituted an inter partes review of claims 1–
`12, 15–20, 23–28, and 31–33 on the alleged ground of unpatentability under
`35 U.S.C. § 103 for obviousness based on the combination of AEMA1 and
`Bardesi2 in view of Christensen3, Durand4, and/or The Asphalt Handbook5.
`Paper 7, 20 (“Decision on Institution” or “Dec.”).
`After institution of trial, Patent Owner filed a Patent Owner Response.
`(Paper 12, “PO Resp.”), and Petitioner filed a Reply (Paper 20, “Reply”). In
`addition, Patent Owner filed a Motion for Observation on Cross
`Examination (Pape 28), to which Petitioner filed a Response (Paper 30).
`Both parties also filed motions to exclude evidence, and the briefing on
`those motions included oppositions and replies. See Papers 24, 27, 31, 32,
`34, and 35. A combined oral hearing in this proceeding and Case IPR2016-
`01032 was held on August 8, 2017, and a transcript of the hearing is
`included in the record. Paper 37 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has not shown by a
`
`
`1 Asphalt Emulsion: A Basic Asphalt Emulsion Manual, Manual Series No.
`19 (3d ed.) (Ex. 1002, “AEMA”).
`2 Bardesi, O.-E. & D.A. Paez, A Novel Generation of Tack Coat Emulsions
`to Avoid Adhesion to Tyres, Third World Congress on Emulsions (Ex. 1003,
`“Bardesi”).
`3 Canadian Patent No. 1 152 795, issued Aug. 30, 1983 (Ex. 1005,
`“Christensen”).
`4 U.S. Patent No. 5,769,567, issued June 23, 1998 (Ex. 1004, “Durand”).
`5 The Asphalt Handbook, Manual Series No. 4 (1989 ed.) (Ex. 1008, “The
`Asphalt Handbook”).
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`preponderance of the evidence that any of claims 1–12, 15–20, 23–28, and
`31–33 of the ’724 patent are unpatentable.
`B. RELATED PROCEEDINGS
`The parties identified as a related proceeding the co-pending district
`court proceeding of Blacklidge Emulsions, Inc. v. Russell Standard
`Corporation, Case Number cv 1:12-643, N.D. Ohio. Pet. 1. Colas also
`identifies as related proceedings the district court proceedings of Colas
`Solutions, Inc. v. Blacklidge Emulsions, Inc., Case Number 1:16-cv-00548,
`S.D. Ohio, and Blacklidge Emulsions, Inc. v. Phillips Oil Co. of Central
`Ohio, Inc., Case Number 2:12-cv-00406, S.D. Ohio, and IPR2016-01032
`filed by Colas and relating to U.S. Patent 7,918,624 B2. In addition, inter
`partes reviews challenging all claims of the ’724 and ’624 patents were
`instituted in IPR2017-01241 and IPR2017-01242, respectively, and remain
`pending before the Board. Asphalt Prods. Unlimited, Inc. v. Blacklidge
`Emulsions, Inc., No. IPR2017-01241 (P.T.A.B. October 24, 2017), Paper 23,
`25; Asphalt Prods. Unlimited, Inc. v. Blacklidge Emulsions, Inc., No.
`IPR2017-01242 (P.T.A.B. October 24, 2017), Paper 23, 26.
`C. THE ’724 PATENT
`The ’724 patent relates generally to a method of providing an
`adhesive tack coat between pavement layers. Ex. 1001, 1:13–16. The
`method includes applying an asphalt emulsion as the tack coat that, when
`cured, exhibits a relatively hard surface that resists adhering to the tires of
`construction vehicles but still functions as an adhesive layer. Id. at 4:53–67.
`Claims 1, 15, 23, and 31 are the independent claims among the
`challenged claims, with claims 1, 15, and 31 reciting methods for using a
`tack coat, id. at 14:6–35 (claim 1), 15:24–63 (claim 15), 17:10–18:20 (claim
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`31), and claim 23 reciting a pavement structure that incorporates the tack
`layer, id. at 16:28–40. Claim 1, which is illustrative, recites:
`1. A method for bonding a layer of asphalt pavement material
`comprising asphalt material to a substrate pavement layer
`comprising paving material, the paving material selected from
`the group consisting of asphalt material, soil, clay, sand, shell,
`cement, limestone, fly ash and mixtures thereof, the method
`comprising:
`providing an emulsified composition which includes at least a
`first phase of an asphalt composition, a second phase of water,
`emulsifier and a stabilizer, the asphalt composition selected
`to provide a coating having a penetration value less than
`about 20 dmm and a softening point greater than about 140°
`F. (60° C.) when applied to the substrate pavement layer and
`cured;
`applying the emulsified composition which includes the first
`phase of asphalt composition, and the second phase of water,
`emulsifier and stabilizer to an exposed surface of the substrate
`pavement layer at a rate sufficient to provide an exposed
`coating on the exposed substrate surface, the emulsified
`composition having an amount of the asphalt composition
`effective to bond the layer of asphalt pavement material to the
`substrate pavement layer;
`heating the asphalt pavement material to provide a heated
`pavement material to a temperature sufficient to soften the
`coating an amount effective to form a bonding surface on the
`exposed coating; and
`applying the heated asphalt pavement material to the exposed
`coating to form a pavement layer and to soften the exposed
`coating forming a bond between the pavement layer and the
`substrate pavement layer.
`Id. at 14:6–35 (emphasis added). The emphasized portion of claim 1
`identifies characteristics of a cured asphalt emulsion, which is substantively
`recited in all claims, and on which the dispute between the parties primarily
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`focuses. The ’724 patent describes the particular asphalt emulsion used to
`make a “low-tracking” tack coat that reduces or avoids the problems
`associated with the tack coat adhering to the wheels of construction vehicles.
`Id. at 4:53–5:14. Such vehicle tracking “reduces the effectiveness of the
`tack coat by displacing a portion of the intended volume from the area
`awaiting a new pavement layer.” Id. at 2:14–16. Additionally,
`“[i]nsufficient adhesion between a new layer of pavement and an existing
`base course . . . can cause pavement separation and cracking during
`construction [and] subsequent failures and premature deterioration of the
`pavement structure.” Id. at 2:17–22.
`The Specification describes two broad approaches for obtaining a
`“coating having a penetration value less than about 20 dmm and a softening
`point greater than about 140° F. (60° C.) when applied to the substrate
`pavement layer and cured.” The first method involves preparing an
`emulsion with a “hard pen” asphalt component having a pen value of “from
`about 5 dmm to 15 dmm pen, with a softening point between about 150° F.
`(66° C.) and about 160° F. (71° C.).” Id. at 7:60–62. The Specification
`describes asphalt emulsions incorporating asphalt compositions defined by
`“Performance Grade” values ranging from PG-91 (about 5 pen) to PG-82
`(about 40 pen). Id. at 9:59–67. Beginning with these hard pen asphalts in
`the emulsion, the Specification describes resulting “tack coat properties”
`including pen values of 1–40 dmm and a minimum softening point of 140°F
`(60°C). Id. at 10:37–41. The Specification also describes two examples of
`“the emulsion of the invention using a 13 dmm pen asphalt,” but does not
`reveal the pen value or the softening point of the resulting cured tack coat.
`Id. at 12:38–13:65.
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`The second method is to use a softer asphalt in the emulsion “in the
`range of mid or soft pen asphalt” and add “polymeric, waxes, or other
`equivalent additives” to achieve the properties of the “final cured tack coat.”
`Id. at 8:49–57. The Specification states: “[e]xamples of such polymeric
`additives are EVA, SBS, SB, SBR, SBR latex, polychloroprene, isoprene,
`polybutadiene, acrylic and acrylic copolymers, and other equivalent
`additives that produce the hard pen characteristics of the final cured tack
`coat.” Id. at 8:57–61. The Specification does not describe examples of
`emulsions using mid or soft pen asphalt along with any one of the specific
`additives listed that are used to obtain the properties of the final tack coat.
`II. THE PARTIES’ POST-INSTITUTION ARGUMENTS
`In our Institution Decision, we concluded that the argument and
`evidence adduced by Petitioner demonstrated a reasonable likelihood that all
`challenged claims were unpatentable. Dec. 21. We must now determine
`whether Petitioner has established by a preponderance of the evidence that
`the challenged claims are unpatentable over the cited prior art. 35 U.S.C.
`§ 316(e). In this connection, we previously instructed Patent Owner that
`“any arguments for patentability not raised in the [Patent Owner Response]
`will be deemed waived.” Paper 8, 3; see also In re Nuvasive, Inc., 842 F.3d
`1376, 1381 (Fed. Cir. 2016) (holding that patent owner’s failure to proffer
`argument at trial as instructed in scheduling order constitutes waiver).
`Additionally, the Board’s Trial Practice Guide states that the Patent Owner
`Response “should identify all the involved claims that are believed to be
`patentable and state the basis for that belief.” Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
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`III. CLAIM INTERPRETATION
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`the broadest reasonable interpretation standard). Under that standard, claim
`terms are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Only those terms in controversy need to be construed, and only to
`the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`In our Decision on Institution, we determined that resolution of the
`disputed issues at that stage of the proceeding did not require an express
`interpretation of any claim term. See Dec. 6–7. Neither the Petition nor any
`brief filed after institution includes any proposed interpretation for any claim
`term. See Pet.; PO Resp.; Reply. Accordingly, we maintain our
`determination that no express construction of any claim term is necessary to
`resolve the dispute that the parties present in this proceeding.
`IV. ALLEGED OBVIOUSNESS OF THE CLAIMS
`A. LEGAL STANDARDS
`The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S.
`398 (2007), reaffirmed the framework for determining obviousness as set
`forth in Graham v. John Deere Co., 383 U.S. 1 (1966). The KSR Court
`summarized the four factual inquiries set forth in Graham that we apply in
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`determining whether a claim is reasonably likely to be unpatentable as
`obvious under 35 U.S.C. § 103(a) as follows:
`1. determining the scope and content of the prior art,
`2. ascertaining the differences between the prior art and the claims at
`issue,
`3. resolving the level of ordinary skill in the pertinent art, and
`4. considering objective evidence indicating obviousness or
`nonobviousness.
`KSR, 550 U.S. at 406. With these standards in mind, we address Colas’s
`challenge below.
`B. LEVEL OF ORDINARY SKILL IN THE ART
`In determining the level of skill in the art, we consider the type of
`problems encountered in the art, the prior art solutions to those problems, the
`rapidity with which innovations are made, the sophistication of the
`technology, and the educational level of active workers in the field. Custom
`Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.
`1986); Orthopedic Equipment Co., Inc. v. U.S., 702 F.2d 1005, 1011 (Fed.
`Cir. 1983).
`Petitioner argues, with supporting testimony from its technical expert,
`Dr. Gayle King, that a person having ordinary skill in the technology
`described and claimed in the ’724 patent would have “a bachelor’s degree or
`the equivalent in the fields of chemistry, civil engineering, chemical
`engineering, material science, or an equivalent, as well as having 5 years of
`field experience or 5 years of additional academic research in the field of
`asphalt paving and/or asphalt emulsion technology.” Pet. 13; Ex. 1010 ¶ 19.
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`Patent Owner responds that Petitioner’s proposed level of ordinary
`skill in the art is “extraordinarily high.” PO Resp. 1–2; see also id. at 14
`(arguing that Dr. King “limits his definition of a PHOSITA to be someone
`with more than ordinary skill”). Despite this criticism, the definitions of
`ordinary skill in the art proposed by Patent Owner’s technical experts,
`Mr. William O’Leary and Dr. Dallas Little, call for a similarly high level of
`skill and experience. Mr. O’Leary testifies that a person of ordinary skill in
`the art has:
`a bachelor of science degree or the equivalent in civil or chemical
`engineering, as well as having approximately 5 years of practical
`experience comprising some combination of asphalt binder
`testing and/or characterization, asphalt mixture testing and/or
`characterization, pavement design, and field experience such as
`quality control monitoring of the construction of pavement
`materials. Alternatively, a person having ordinary skill in the art
`may have 10 years of practical experience comprising some
`combination of asphalt binder testing and/or characterization,
`asphalt mixture testing and/or characterization, pavement design,
`and field experience instead of a four year college degree.
`Ex. 2027 ¶ 48. Dr. Little’s definition is very similar. Ex. 2026 ¶ 27. At the
`hearing, Patent Owner confirmed that Mr. O’Leary’s statement represents
`Patent Owner’s definition of the level of ordinary skill in the art. See
`Tr. 48:10–22.
`The Parties’ definitions differ in that under Patent Owner’s proposal,
`additional work experience can substitute for a science or engineering
`degree. Patent Owner supports that position by pointing to the backgrounds
`of Mr. O’Leary and the inventor, Mr. Blacklidge, neither of whom has a
`bachelor’s degree in engineering or science. PO Resp. 15–16; Ex. 1034,
`12:15–13:3; Ex. 2027, App’x A; see also Ex. 2026 ¶¶ 22–23 (discussing the
`educational background of active workers in the field). Patent Owner also
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`cites Dr. King’s deposition testimony agreeing that Mr. O’Leary was an
`example of someone who had attained the level of ordinary skill in the art
`through sufficient work experience without academic credentials beyond
`high school. Ex. 2025, 376:4–377:14. This evidence supports Patent
`Owner’s position that relevant work experience can substitute for a
`bachelor’s degree in science or engineering in this case.
`Accordingly, we find that a person of ordinary skill in the art at the
`time of the invention of the ’724 patent would have had a bachelor’s degree
`in chemistry, civil engineering, chemical engineering, material science, or a
`related field of science or engineering, plus five years of experience in the
`field of asphalt paving and/or asphalt emulsion technology. Alternatively, an
`ordinarily skilled artisan would have had ten years of experience in the field
`of asphalt paving and/or asphalt emulsion technology.
`C. SUMMARY OF THE CITED PRIOR ART
`1. AEMA
`AEMA is a technical manual jointly published by the Asphalt Institute
`and the Asphalt Emulsion Manufacturers Association. Ex. 1002, iii. The
`purpose of AEMA is “to impart a basic understanding of asphalt emulsions
`to those who work with the product” and “to be useful in choosing the
`emulsion that best fits a project’s specific conditions.” Id.
`2. Bardesi
`Bardesi is entitled “A Novel Generation of Tack Coat Emulsions to
`Avoid Adhesion to Tyres.” Ex. 1003, 1. According to Bardesi, a limitation
`of traditional tack coats is that the residue of the emulsions commonly sticks
`to truck tires (or “tyres”), which diminishes the effectiveness of the tack
`coats. Id. Bardesi seeks to solve this problem, and discloses that “[t]he best
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`results have been obtained with hard residue emulsions, manufactured with
`special emulsifiers.” Id.
`Bardesi describes testing of six different emulsions, which were
`“manufactured using 10/20, 60/70 and 150/200 pen bitumen, both
`conventional and obtained in special refining conditions.” Id. After
`summarizing how specimens performed in tests of bonding between
`bituminous courses, Bardesi concludes that the results “advise against the
`use of conventional 10/20 pen bitumen and make recommendable for this
`type of emulsions the use of 10/20 pen bitumen obtained in special refining
`conditions.” Id. at 3. Bardesi also describes tire adhesion testing of the
`specimens, the results of which “show that for the production of this type of
`emulsions the bitumen used must be 10/20 pen bitumen and they must be
`obtained in special refining conditions. If not, there is a very high risk of
`adhesion to the tyres of the machinery during the works.” Id.
`3. Christensen, Durand, and The Asphalt Handbook
`Petitioner relies on Christensen, Durand, and The Asphalt Handbook
`as “supplemental” references. Pet. 14. Christensen describes disadvantages
`of conventional tack coating processes that leave a sticky film and require a
`waiting period for drying. Ex. 1005, 1:18–21. Christensen seeks to provide
`a process for tack coating that eliminates those disadvantages, provides
`adhesive effect immediately, and improves adhesion. Id. at 1:22–26. In
`Christensen’s process, “asphalt compound is laid out immediately after the
`existing asphalt concrete layer has been cleaned and tack coated, and . . . the
`tack coat is dried and broken by the applied fresh and hot asphalt
`compound.” Id. at 2:1–5.
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`Durand aims to address problems such as unfavorably long “breaking
`duration” and tracking in known methods of tack coating. Ex. 1004, 2:6–11.
`Durand describes applying a surface-active agent on the support, which
`“leads to significant improvement of the adherence of the bonding layer on
`the support.” Id. at 3:28–30. Durand describes a tack coat that does not
`exhibit “tracking” and is made using asphalts having a variety of pen ratings,
`including one asphalt with a pen rating as low as 25. Id. at 3:52–67.
`The Asphalt Handbook is a reference manual published by the Asphalt
`Institute. Ex. 1008, vii. It contains over 600 pages and purports to be “the
`definitive informational source on asphalt technology.” Id.
`D. DIFFERENCES BETWEEN THE CITED PRIOR ART AND THE CLAIMED
`SUBJECT MATTER
`1. Claim 1
`a) Summary of Arguments in the Petition
`Petitioner argues that “AEMA expressly or inherently discloses
`everything in claim 1 except particular characteristics of the tack coat
`emulsion.” Pet. 19. Specifically, Petitioner relies on AEMA as disclosing
`every limitation of claim 1 except for the requirement that “the asphalt
`composition in the emulsion [is] effective for providing a coating having a
`penetration value less than about 20 dmm, and a softening point greater than
`about 140 ° F. (60 ° C.) when applied to the substrate layer and cured.” See
`id. at 24–28. Petitioner relies on Bardesi as teaching an asphalt-containing
`emulsion that meets these characteristics. Id. at 20. Asphalt Handbook and
`Christensen play a backup role in Petitioner’s challenge, as Petitioner
`contends that they describe “conventional and well-known aspects of
`asphalting technology . . . that may not be expressly discussed in Bardesi or
`AEMA, such as heating the asphalt paving material prior to overlay onto the
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`tack-coated substrate.” Id. Patent Owner does not challenge Petitioner’s
`assertions regarding how AEMA discloses the subject matter of claim 1
`other than the limitations on the penetration value and softening point of the
`cured tack coat. See id. at 20–22; PO Resp. passim; Tr. 50:16–23. Thus, the
`dispute focuses on the limitations reciting the penetration value and
`softening point of the cured tack coat.
`Petitioner relies upon Bardesi, as explicated in the testimony of
`Dr. King, as disclosing the use of an asphalt composition in the emulsified
`tack coat that has the claimed pen value of “less than about 20 dmm” and
`softening point of “greater than about 140 °F.” Pet. 22–24 (citing Ex. 1003,
`1; Ex. 1010 ¶¶ 40, 42, 43, 46). Regarding pen value, Petitioner asserts that
`“Bardesi teaches emulsions ‘manufactured using 10/20 . . . pen bitumen,’
`corresponding to a penetration of between 10 to 20 dmm.” Id. at 22 (quoting
`Ex. 1003, 1). Dr. King testifies that “Bardesi specifically taught the
`formulation of tack coat emulsions that meet” the claimed pen value of less
`than about 20 dmm because Bardesi’s emulsions are manufactured using
`bitumen having a pen value from 10 to 20 dmm. Ex. 1010 ¶ 39.
`Regarding softening point, Petitioner relies on Dr. King’s testimony
`that “it is my opinion that asphalt having a hardness of 20-pen or below,
`such as the ones specifically taught in Bardesi, will necessarily have a
`softening point greater than about 140°F (60°C).” Ex. 1010 ¶ 40 (cited at
`Pet. 22). To reach this opinion, Dr. King “consulted Pfeiffer on the
`relationship between asphalt penetration and softening point.” Id. (citing
`Ex. 1006). Pfeiffer is an article from 1936 that presents an equation relating
`pen values to softening point. See Ex. 1006. Dr. King testifies that “this
`equation became an industry standard soon after publication and remains in
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`use today.” Ex. 1010 ¶ 40. In his declaration, Dr. King applies the
`following “more common rearranged form of Pfeiffer’s equation,” which
`relates penetration value, softening point, and “PI” or penetration index:
`
`PI = (1952 – 500 log pen – 20 SP) / (50 log pen – SP – 120)
`
`Id. Dr. King explains that PI is a measure of the quality or temperature
`susceptibility of an asphalt. Id. According to Dr. King,
`[p]aving grade asphalts—regardless of whether they originated
`during Pfeiffer’s era, at the time of the [’]724 patent, or today—
`have a PI within the range of -1 to +1. . . . One of ordinary skill
`in
`the art would understand a reference
`to otherwise
`uncharacterized asphalt material, such as used in Bardesi, were
`N-type, with an index between -1 and +1.
`Id. ¶ 41.
`Using the equation reproduced above, Dr. King plotted softening point
`versus PI for asphalts having a penetration value of 10 dmm and 20 dmm:
`
`Dr. King’s graph above plots the softening points for asphalts
`having pen values of 10 and 20 dmm as pen index varies from -3
`to +3.
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`Id. ¶ 42.
`From this plot, Dr. King notes that
`[d]epending on the PI of the asphalt composition, even within the
`extreme range of -3 to +3, any 10-pen paving-grade asphalt
`would be expected to have an R&B Softening Point in the range
`[from] 69 to 94 degrees C. That is, across the entire quality range
`for paving-grade bitumen, a 10-pen asphalt has a softening point
`higher than the claimed minimum[] of 60°C. . . .
`Id. Further, “even the 20-pen bitumen would have a softening point above
`66°C so long as the PI remains within or above Pfeiffer’s normal bitumen
`range of -1 to +1, the expected range for paving asphalt.” Id. Because “a
`straight-run conventional 10-pen asphalt would always have an R&B
`Softening Point above the minimum 60°C specified by the [’]724 patent,” it
`is Dr. King’s “opinion that asphalts of 10-20 dmm penetration from the
`Bardesi tack coat emulsion would necessarily have softening points meeting
`the claim 1 requirement of ‘greater than about 60°C.’” Id. ¶ 43. Based on
`this analysis from Dr. King, Petitioner contends that “an asphalt having a
`penetration value less than about 20 dmm necessarily and inherently has a
`softening point greater than about 140°F (60°C).” Pet. 41, 49.
`b) Summary of Patent Owner’s Rebuttal Arguments
`Patent Owner’s rebuttal takes issue with several aspects of Petitioner’s
`challenge. Patent Owner argues that Petitioner does not address the
`rheological properties of a tack coat after curing, which can differ
`significantly from the properties of a base asphalt before emulsification. See
`PO Resp. 17–24. Patent Owner also attacks Petitioner’s assertion that
`Bardesi discloses a cured coating having a softening point in the claimed
`range. Id. at 25–47. Further, Patent Owner contests the adequacy of
`Petitioner’s stated reason to combine the references. Id. at 50–55. Our
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`analysis in Part IV.D.1.d) below focuses on the softening point limitation,
`which is dispositive. Accordingly, our summary in this section will likewise
`focus on Patent Owner’s arguments regarding softening point.
`Patent Owner argues that Dr. King incorrectly applied the Pfeiffer
`equation, and that when the equation is correctly applied, the results show a
`softening point outside of the claimed range for asphalts with 10 dmm and
`20 dmm penetration values. PO Resp. 29–37. Patent Owner’s expert,
`Dr. Little, applied the same version of the Pfeiffer equation as Dr. King and
`arrived at different softening points for 10-pen and 20-pen bitumen. See
`Ex. 2026 ¶¶ 90–93. The graphs reproduced below show the softening points
`Dr. Little obtained for 20-pen and 10-pen asphalts as compared to the
`softening points Dr. King calculated for those same asphalts:
`
`This graph compares softening points calculated by Dr. Little
`(solid line) to those calculated by Dr. King (dashed line) for 20-
`pen asphalts.
`
`
`
`16
`
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`IPR2016-01031
`Patent 7,503,724 B2
`
`
`
`This graph compares softening points calculated by Dr. Little
`(solid line) to those calculated by Dr. King (dashed line) for 10-
`pen asphalts.
`PO Resp. 30, 32.
`In the graphs above, the shaded areas beneath the solid line signify
`asphalts with softening points less than 60ºC. Id. Thus, according to
`Dr. Little’s calculations using the Pfeiffer equation, 20-pen asphalts having a
`PI of -0.883 or less have a softening point less than 60ºC. Id. at 29;
`Ex. 2026 ¶ 93. According to Patent Owner, these revised calculations show
`that “Bardesi 10/20 asphalts simply do not necessarily have the claimed
`softening points.” PO Resp. 34. Patent Owner also highlights the
`deposition testimony of Dr. King in which he was asked about the revised
`softening point calculations and stated: “That doesn’t change the final
`conclusion because it was so far above before that even with this, it’s still
`above. It’s with less absolute certainty but with extremely high probability.”
`Ex. 2025, 368:20–23. In Patent Owner’s view, this testimony shows that
`Dr. King “expressly acknowledged that a softening point greater than 60ºC
`
`17
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`IPR2016-01031
`Patent 7,503,724 B2
`
`is merely a probability.” PO Resp. 36. Patent Owner argues that Dr. King’s
`“recognition that some of Bardesi’s asphalts may have softening points
`below 60ºC defeats any inherency argument.” Id. (citing Continental Can
`Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)).
`Patent Owner also challenges Dr. King’s assumption that Bardesi’s
`10/20-pen asphalt would be a “paving grade” asphalt having a PI value
`between -1 and +1. PO Resp. 27–29. Patent Owner cites evidence that
`paving grade asphalts are typically used as binder materials in a paving layer
`and have pen values above 40 dmm. Id. at 27; Ex. 2026 ¶¶ 38–39; Ex. 1008,
`159. Because Bardesi’s 10/20-pen asphalt is used in an emulsion for a tack
`coat rather than as a binder, Patent Owner contends, based on the testimony
`of Dr. Little, that an ordinarily skilled artisan would not have assumed it to
`have the attributes of a typical paving grade asphalt. PO Resp. 27; Ex. 2026
`¶ 42. In addition, Patent Owner attacks the reliability of the Pfeiffer
`equation, quoting an academic journal article describing it as “unrealistic
`and seriously misleading” and arguing that it has been superseded by other
`methods. PO Resp. 34–35 (quoting Ex. 2005, 275); see also Ex. 2026
`¶¶ 83–85 (testimony of Dr. Little opining that “a PHOSITA would not have
`understood Pfeiffer to be an ‘industry standard’ as Dr. King asserts” and
`discussing academic literature describing shortcomings of the Pfeiffer
`equation).
`According to Patent Owner, Bardesi simply does not provide enough
`information about its 10/20 pen bitumen “obtained in special refining
`conditions” (Ex. 1003, 3) to permit a reliable assessment of its softening
`point. PO Resp. 41–44. On this issue, Patent Owner highlights Dr. King’s
`response, when asked during his deposition whether his declaration
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`IPR2016-01031
`Patent 7,503,724 B2
`
`addressed Bardesi’s teaching that the 10/20 pen bitumen used must be
`obtained in special refining conditions: “No, because I’m not sure I agree
`with Bardesi on that point. . . . [A]lthough he had to do so because of his
`crude sources, I think there were other options I would have used.”
`Ex. 2025, 140:8–20 (cited at PO Resp. 43).
`c) Summary of Petitioner’s Reply Arguments
`In Reply, Petitioner argues that the ’724 patent’s “only alleged point
`of novelty is claiming softening points above 60ºC” but that Petitioner’s
`evidence “shows that this claimed softening point above 60ºC is inherent
`and ‘typical’ for many 10/20 pen asphalts disclosed in Bardesi.” Reply 1.
`Petitioner minimizes the significance of the softening point limitation by
`arguing that “nowhere in the ‘724 patent Specification or intrinsic record is
`there any discussion whatsoever of the importance of the claimed softening
`point and the desired result.” Id. at 5. Petitioner points out that the
`Background of the ’724 patent states that “typically, hard pen . . . asphalt
`compositions have pen values of about 40 dmm or less, with softening
`points greater than about 140º F. (60º C.),” and that Patent Owner’s experts
`agree with that statement. Id. at 5–6 (citing Ex. 1001, 2:64–67; Ex. 1032,
`146:16–147:10; Ex. 1031, 60:23–61:6).
`Petitioner defends its reliance on the Pfeiffer equation, noting
`Dr. King’s testimony that it is “the best tool we have available even today to
`characterize between” penetration value and softening point. Reply 16
`(quoting Ex. 2025, 215:17–22). Petitioner points out that Dr. Little has used
`the Pfeiffer equation in his own research to calculate PI values for asphalts.
`Id. (citing Ex. 1031, 116:17–117:2).
`
`19
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`IPR2016-01031
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`Petitioner concedes that “Dr. King made [a] mathematical mistake
`with his Pfeiffer calculations” and that Dr. Little’s calculations accurately
`apply Pfeiffer for 10-pen and 20-pen asphalts with PI values between -3 and
`+3. Reply 17. Petitioner further agrees that the corrected data from
`Dr. Little:
`shows that not all of the 10/20 pen asphalts having a Penetration
`Index between -3 and +3 will have softening points above 60º C.
`But the corrected Pfeiffer relationship still shows that most 10/20
`pen asphalts, and certainly the better quality 10/20 pen asphalts,
`will have the claimed softening point values above 60º C.
`Id. at 18. Petitioner argues that “a
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