`
`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
`
`SUBMISSION OF NOTICE OF APPEAL
`
`ViaPTAB E2E
`Patent Trial and Appeal Board
`
`Via Hand Delivery
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel, 10B20
`Madison Building East
`600 Dulany Street
`Alexandria, VA 22313
`ViaCM/ECF
`United States Court of Appeals for the Federal Circuit
`
`1 of 2
`
`
`
`Pursuant to 35 U.S.C. §§ 141and142 and 37 C.F.R. §§ 90.2(a) and
`
`90.3(a)(l), Petitioner/Appellant, Colas Solutions, Inc., hereby notifies the Board of
`
`its Notice of Appeal to the United States Court of Appeals for the Federal Circuit
`
`for review of the Final Written Decision (IPR 2016-01031) of the Patent Trial and
`
`Appeal Board entered on November 2, 2017. Copies of the Final Written Decision
`
`and the Notice of Appeal are attached.
`
`This appeal is being timely filed, i.e. within sixty-three days of the Final
`
`Written Decision. See 37 C.F.R. § 90.3(a)(l). Simultaneously with this
`
`submission, the Notice of Appeal is being filed with the Director of the United
`
`States Patent and Trademark Office and the Notice of Appeal and docketing fee of
`
`$500.00 are being electronically filed with the Clerk of Court for the United States
`
`Court of Appeals for the Federal Circuit.
`
`Date: December 28, 2017
`
`Respectfully submitted,
`
`/s/ Allen M. Sokal
`By:
`Allen M. Sokal
`Registration No. 26,695
`BAKER & HOSTETLER LLP
`1050 Connecticut Avenue, NW
`Washington Square, Suite 1100
`Washington, DC 20036
`
`Counsel for Petitioner/ Appellant
`Colas Solutions, Inc.
`
`2 of 2
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 38
`Entered: November 2, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COLAS SOLUTIONS INC.,
`Petitioner,
`
`v.
`
`BLACK.LIDGE 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 USC§ 318(a) and 37 C.FR. § 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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`IPR2016-01031
`Patent 7,503,724 B2
`
`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 AEMA 1 and
`
`Bardesi2 in view of Christensen3, Durand4, and/or The Asphalt Handbook 5.
`
`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 3 5. 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, 0.-E. & D.A. Paez, A Novel Generation of Tack Coat Emulsions
`to Avoid Adhesion to Tyres, Third World Congress on Emulsions (Ex. 1003,
`"Bardes i ").
`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").
`
`2
`
`
`
`IPR2016-01031
`Patent 7,503,724 B2
`
`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
`
`3
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`
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`IPR2016-0103 l
`Patent 7,503,724 B2
`
`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
`compnsmg:
`
`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° CJ 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
`
`4
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`
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`IPR2016-01031
`Patent 7,503,724 B2
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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 l 40°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.
`
`5
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`
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`IPR2016-01031
`Patent 7,503,724 B2
`
`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).
`
`6
`
`
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`IPR2016-01031
`Patent 7,503,724 B2
`
`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.lOO(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.LEGALSTANDARDS
`
`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
`
`7
`
`
`
`IPR2016-01031
`Patent 7,503,724 B2
`
`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. US., 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. 1010ii19.
`
`8
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`
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`IPR2016-0103 l
`Patent 7,503,724 B2
`
`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 PHO SITA 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 if 48. Dr. Little's definition is very similar. Ex. 2026 if 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'xA; see also Ex. 2026 ifif 22-23 (discussing the
`educational background of active workers in the field). Patent Owner also
`
`9
`
`
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`IPR2016-01031
`Patent 7,503,724 B2
`
`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
`
`10
`
`
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`IPR2016-01031
`Patent 7,503,724 B2
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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, 60170 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.
`
`11
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`IPR2016-0103 l
`Patent 7,503,724 B2
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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
`
`12
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`IPR2016-01031
`Patent 7,503,724 B2
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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 if if 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 if 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 if 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
`
`13
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`IPR2016-01031
`Patent 7,503,724 B2
`use today." Ex. 1010 if 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) I (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(cid:173)
`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.if41.
`
`Using the equation reproduced above, Dr. King plotted. softening point
`
`versus PI for asphalts having a penetration value of 10 dmm and 20 dmm:
`
`100 r
`
`~ 95
`
`..
`
`- 10 pen
`
`-2
`
`-1
`
`1
`0
`Pl - Pen Index
`
`2
`
`3
`
`1
`
`90
`
`I
`
`+"' c .0 s5
`c.
`b.O 80
`c
`'2
`GJ 75
`~
`0
`Ill 70
`al
`~ 65
`
`60
`
`-3
`
`l
`
`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.
`
`14
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`IPR2016-01031
`Patent 7,503,724 B2
`
`Id. if 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. if 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--4 7. Further, Patent Owner contests the adequacy of
`
`Petitioner's stated reason to combine the references. Id. at 50-55. Our
`
`15
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`IPR2016-01031
`Patent 7,503,724 B2
`
`analysis in Part IV.D. l .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 if if 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:
`
`90
`,...-._ 85
`~ 80
`'-'
`~ 75
`~0 10
`~
`Ol) 65
`.5
`E 60
`.....
`0 55
`r./) 50
`
`---
`
`_ - -
`
`- - - - - -
`
`- - - - -
`
`45
`
`-3
`
`-2
`
`-1
`
`0
`PI Value
`
`2
`
`3
`
`- - Little 20 dmm
`
`- - - King's erroneous 20 dmm
`
`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
`
`0
`'-"
`
`-u
`...... c: .....
`
`100
`95
`90
`85
`80
`0
`i::i.;
`75
`bf) c: 70
`......
`c: Q)
`65
`¢:::
`0
`60
`en
`55
`50
`
`--- --...
`
`---
`
`---
`
`---
`
`-3
`
`-2
`
`-1
`
`0
`PI Value
`
`1
`
`2
`
`3
`
`- - Little 10 dmm
`
`- - - King's erroneous 10 dmm
`
`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 60°C. 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 60°C. 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 60°C
`
`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 60°C 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 iii! 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
`if 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
`iii! 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 Bardes