Trials@uspto.gov
`571-272-7822
`
`Paper No. 33
`
` Entered: January 5, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOLENIS LLC,
`Petitioner,
`
`v.
`
`ECOLAB USA INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01281
`Patent 8,465,623 B2
`____________
`
`
`
`Before KRISTINA M. KALAN, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`571-272-7822
`
`Paper No. 33
`
` Entered: January 5, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOLENIS LLC,
`Petitioner,
`
`v.
`
`ECOLAB USA INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01281
`Patent 8,465,623 B2
`____________
`
`
`
`Before KRISTINA M. KALAN, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2016-01281
`Patent 8,465,623 B2
`
`
`
`
`I. INTRODUCTION
`
`Solenis LLC (“Petitioner”) filed a Petition seeking inter partes review
`
`of claims 1–8, 12, 13, and 16–19 of U.S. Patent No. 8,465,623 B2 (Ex. 1001,
`
`“the ’623 patent”). Paper 2 (“Pet.”). Ecolab USA Inc. (“Patent Owner”)
`
`filed a Patent Owner Preliminary Response to the Petition. Paper 30
`
`(“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C. § 314(a),
`
`which requires demonstration of a reasonable likelihood that Petitioner
`
`would prevail with respect to at least one challenged claim, we institute an
`
`inter partes review of claims 1–8, 12, 13, and 16–19 as discussed below.
`
`Our findings of fact and conclusions of law are based on the record
`
`developed thus far. This is not a final decision as to the patentability of any
`
`challenged claim. Any final decision will be based on the full record
`
`developed during trial.
`
`
`
`II. BACKGROUND
`
`A. Related Proceedings
`
`The ’623 patent is being asserted in Nalco Company v. Solenis LLC,
`
`Case No. 1:15-cv-08913 (N.D. Ill.). Pet. 1. Petitioner also identifies the
`
`petition for inter partes review of related U.S. Patent No. 8,088,250 B2,
`
`(IPR2016-01282). Id.
`
`B. The ’623 Patent
`
`The ’623 patent, titled “Method of Improving Dewatering Efficiency,
`
`Increasing Sheet Wet Web Strength, Increasing Sheet Wet Strength, and
`
`Enhancing Filler Retention in Papermaking,” issued on June 18, 2013. Ex.
`
`1001, [54], [45]. The ’623 patent explains that the papermaking process
`
`
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`2
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`Patent 8,465,623 B2
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`involves dispersing fiber (typically cellulose based fibers) in water to form a
`
`slurry, which then goes through a drainage and dewatering process to form a
`
`wet web. Id. at 1:28–31. This portion of the papermaking process is
`
`referred to as the “wet end.” Id. According to the ’623 patent, typically
`
`“chemicals are added in the wet end to assist in the dewatering of the slurry,
`
`increasing retention and improving wet or dry sheet strength.” Id. at 1:25–
`
`28. These “wet end chemicals” include dewatering aids, wet web strength
`
`aids, and wet strength aids. Id. at 1:61–63. The wet web is ultimately dried
`
`to form a dry sheet of paper mat. Id. at 1:33–34.
`
`The ’623 patent explains that fillers are “mineral particles that are
`
`added to paper mat during the papermaking process to enhance the resulting
`
`paper’s opacity and light reflecting properties.” Id. at 1:38–40. The ’623
`
`patent provides several examples of fillers, including kaolin clay, talc,
`
`titanium dioxide, and calcium carbonate, which comes in two forms, ground
`
`calcium carbonate (GCC) and precipitated calcium carbonate (PCC). Id. at
`
`1:44–51. The ’623 patent further explains that
`
`[a]dding filler to the paper mat also reduces the effectiveness of
`the wet strength aid or wet web strength additive or drainage
`aid. Those additives have a tendency to coat the filler particles.
`The more filler particles present, the more additive coats the
`filler particles, and therefore there is less wet strength aid or wet
`web strength additive or drainage available to bind the cellulose
`fibers together.
`
`Id. at 4:34–40.
`
`According to the ’623 patent, “[t]his invention is to provide novel
`
`filler pretreatment, so that it reduce[s] the adsorption of wet end chemicals
`
`onto [the] filler surface, [and] therefore, increase[s] the efficiency of wet end
`
`chemicals such as dewatering aids, wet web strength aids and wet strength
`
`
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`3
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`Patent 8,465,623 B2
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`aids.” Id. at 1:63–67. In at least one embodiment of the ’623 patent, the
`
`filler particles are pretreated with a “composition of matter” that “at least
`
`partially prevent[s] the adherence of wet strength aid, or wet web strength
`
`additive or drainage aid to the filler particles,” Id. at 4:46–50. The ’623
`
`patent provides examples of compositions of matter that can be used for
`
`pretreatment. Id. at 5:57–6:61.
`
`The ’623 patent discloses the use of sheet wet web strength
`
`measurements to evaluate the effect of filler pretreatment. Id. at 7:31–33. It
`
`also states that pretreatment that decreases interactions between wet strength
`
`aid, drainage aid, or wet web strength additive and filler particles results in a
`
`“huge increase in paper strength, sheet dewatering and machine runnability.”
`
`Id. at 5:3–11.
`
`C. Challenged Claims
`
`Petitioner challenges claims 1–8, 12, 13, and 16–19 of the ’623 patent.
`
`Independent claim 1 is illustrative, and is reproduced below:
`
`1. A method of papermaking comprising filler, the method
`comprising the steps of: providing a blend of filler particles,
`at least one drainage additive or wet web strength additive or
`wet strength aid, and cellulose fiber stock,
`
`treating the filler particles with a composition of matter
`in the absence of cellulose fiber stock,
`
`combining the filler particles with the cellulose fiber
`stock,
`
`treating the combination with at least one wet strength
`aid or wet web strength additive or drainage additive,
`and
`
`forming a paper mat from the combination,
`
`wherein at least 10% of the filler particles are precipitated
`calcium carbonate and at least 10% of the filler particles are
`ground calcium carbonate, the cellulose fiber stock
`
`
`
`4
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`IPR2016-01281
`Patent 8,465,623 B2
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`
`comprises a plurality of cellulose fibers and water, and the
`composition of matter enhances the performance of the wet
`strength aid or wet web strength additive or drainage
`additive in the paper mat.
`
`
`
`Petitioner relies on the following references:
`
`D. References
`
`Chung, U.S. Patent No. 5,126,014, issued June 30, 1992 (“Chung,”
`Ex. 1007).
`
`Brown, U.S. Patent No. 5,653,795, issued Aug. 5, 1997 (“Brown,”
`Ex. 1014).
`
`Kimura et al., WO 2006/100996 A1, published Sept. 28, 2006
`(“Kimura,” Ex. 1012).
`
`M. Laufmann et al., GCC vs. PCC as the Primary Filler for Coated
`and Uncoated Woodfree Paper, 1998 Coatings/Papermakers
`Conference (TAPPI Press 1998) (“Laufmann,” Ex. 1016).
`
`
`
`E. The Asserted Grounds
`
`Petitioner asserts the following grounds of unpatentability:
`
`Reference(s)
`
`Chung, Brown, and Laufmann
`
`Chung and Brown
`
`Brown, Kimura, and Laufmann
`
`Brown and Kimura
`
`Kimura and Laufmann
`
`Kimura
`
`
`
`
`
`5
`
`Statutory
`Basis
`
`§ 103
`
`Claims
`Challenged
`1–8, 12, 13,
`16, and 17
`
`§ 103
`
`18 and 19
`
`§ 103
`
`1–8, 12, 13,
`16, and 17
`
`§ 103
`
`18 and 19
`
`§ 103
`
`§ 102,
`§103
`
`1–8, 12, 13,
`16, and 17
`
`18 and 19
`
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`IPR2016-01281
`Patent 8,465,623 B2
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`
`Petitioner also relies on the declaration of David A Dyer, PhD.
`
`Ex. 1002.
`
`
`
`III. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`
`2012); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`
`(upholding the use of the broadest reasonable interpretation standard).
`
`Petitioner offers a proposed construction for “composition of matter.”
`
`Pet. 13–14. Patent Owner offers proposed constructions for “composition of
`
`matter” and “treatment” or “pretreatment.” Prelim. Resp. 6–8.
`
`Upon review of the parties’ arguments and supporting information, we
`
`determine that no express claim construction is necessary for purposes of
`
`this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`
`controversy, and only to the extent necessary to resolve the controversy.”).
`
`B. References
`
`i. Chung
`
`Chung relates to a chemical treatment program that improves
`
`retention and drainage properties during production of paper. Ex. 1007, 1:5–
`
`7. Chung teaches forming an aqueous cellulosic suspension comprising
`
`fibers, a precipitated calcium carbonate filler, and a cationic starch
`
`strengthening agent, passing the suspension through one or more shear
`
`
`
`6
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`Patent 8,465,623 B2
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`stages, draining the suspension to form a sheet, and drying the sheet. Id. at
`
`2:60–65. According to Chung, “[t]he retention and drainage properties of
`
`the suspension are substantially improved” through the addition of a cationic
`
`coagulant prior to any shear stage, and the addition of an anionic flocculant
`
`after the addition of the coagulant but before any of the shear stages. Id. at
`
`2:65–3:6. Chung further teaches that “[i]t is standard practice to improve the
`
`process performance, or the product quality, by including various retention
`
`and drainage additives at various positions along the papermaking process.”
`
`Id. at 4:49–52.
`
`ii. Brown
`
`Brown discloses a method for forming fillers for cellulosic products,
`
`such as paper. Ex. 1014, 1:5–7. Brown teaches that fillers often are used to
`
`improve the printing characteristics, brightness, opacity and bulk of
`
`cellulosic products, but “the web strength of paper products generally
`
`declines as filler is substituted for fiber.” Id. at 1:22–31. Brown aims to
`
`address the “shortcomings of known fillers” (id. at 2:51–52) by adding a low
`
`molecular weight aggregating agent to a slurry of filler particles (id. at 3:53–
`
`58, 4:61–5:10). Brown lists several suitable aggregating agents for use in its
`
`invention. See, e.g., id. at 4:12–31.
`
`According to Brown,
`
`[t]he net charge present on the aggregated particles is lower
`than that of the feed material. The mineral aggregates produced
`upon addition of the selective aggregating agent have a suitable
`size and surface charge to be retained well in a fiber web by a
`combination of filtration retention and adsorption retention.
`Moreover, the mineral aggregates provide added bulk and
`opacity to the finished sheet of paper.
`
`
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`7
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`Patent 8,465,623 B2
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`Id. at 5:24–31. Brown teaches that the improvements to bulk and opacity are
`
`accomplished with “minimal impact on fiber-to-fiber bonding, or sheet
`
`strength.” Id. at 5:41–48.
`
`iii. Laufmann
`
`
`
`Laufmann reports data from a study conducted to understand the
`
`impact of using PCC vs. GCC as filler in paper. Ex. 1016, 7, Abstract.1 In
`
`one example, Laufmann compared the properties of paper sheets having
`
`100% GCC filler, 100% PCC filler, and a blend containing 50% GCC and
`
`50% PCC. Id. at 19, Table 2/4. Laufmann teaches that there are different
`
`advantages to using GCC alone, PCC alone, and a blend of PCC and GCC.
`
`Id.
`
`iv. Kimura
`
`
`
`Kimura is directed to “a filled paper and a method of manufacturing
`
`the same, which is capable of improving the paper strength efficiently with
`
`small amounts of chemical agent by incorporating the filler coated with a
`
`composite acrylamide copolymer.” Ex. 1012 ¶ 1. Kimura’s filler coating, a
`
`composite acrylamide copolymer referred to as a “composite PAM,”
`
`comprises an anionic polysaccharide and a cationic and/or amphoteric
`
`acrylamide copolymer. Id. ¶ 13. Kimura discloses adding coated filler to
`
`pulp slurry during the papermaking process (id. ¶¶ 20, 22), and explains that
`
`in cases where internal agents such as cationic starch and PAM
`type dry strength agent are added to the pulp slurry containing
`filler treated with the composite PAM, synergistic effect can be
`happened without inhibiting the respective effects of the filler
`and the agents, so that a large paper strength improving effect
`
`
`1 For this reference, we refer to the page numbers Petitioner added to the
`bottom right of the exhibit.
`
`
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`8
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`Patent 8,465,623 B2
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`can be obtained by smaller amounts of the agents. That is to
`say, the coated filler, which is obtained by treating filler such as
`calcium carbonate with the composite PAM formed of the
`combined specific two components having different charge
`characteristics, has an appropriate aggregation effect and an
`excellent affinity with the pulp slurry, or alternatively a good
`compatibility with agents (paper strength enhancement agent
`and so on) to be incorporated into the pulp slurry. This also
`enables paper with high content of filler to exhibit a large paper
`enhancement effect by small amounts of the agents.
`
`Id. ¶ 21.
`
`C. Challenges Based on Kimura
`
`Petitioner argues that the subject matter of claims 1–8, 12, 13, 16, and
`
`17 would have been obvious in view of the combined teachings of Kimura
`
`and Laufmann, and that claims 18 and 19 are unpatentable as anticipated by
`
`or obvious over Kimura. Pet. 53–68.
`
`i. Claims 1–8, 12, 13, 16, and 17
`
`a.
`
`Petitioner’s Arguments
`
`Independent claim 1 recites “[a] method of papermaking comprising
`
`filler, the method comprising the steps of: providing a blend of filler
`
`particles, at least one drainage additive or wet web strength additive or wet
`
`strength aid, and cellulose fiber stock.” Petitioner contends that Kimura
`
`discloses a method for manufacturing “filled paper,” which includes adding
`
`a coated filler and a paper strength agent to a pulp slurry. Pet. 53–55 (citing
`
`Ex. 1012 ¶¶ 1, 14, 19, 21, 44).
`
`Claim 1 next requires “treating the filler particles with a composition
`
`of matter in the absence of cellulose fiber stock.” Petitioner argues that
`
`Kimura’s disclosure of treating filler with a composite polyacrylamide and
`
`“adding the coated filler to the pulp slurry” satisfies this limitation. Id. at
`
`
`
`9
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`IPR2016-01281
`Patent 8,465,623 B2
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`55–56 (citing and quoting Ex. 1012 ¶ 19). Petitioner asserts that the ’623
`
`patent includes cationically charged polymers of acrylamide as suitable
`
`compositions of matter, and, therefore, Kimura’s cationic polyacrylamide
`
`coating is a “composition of matter.” Id. at 13–14, 59 (citing Ex. 1012 ¶¶
`
`19, 20; Ex. 1001, 6:20–23).
`
`Claim 1 then requires “combining the filler particles with the cellulose
`
`fiber stock,” followed by “treating the combination with at least one wet
`
`strength aid or wet web strength additive or drainage additive.” Petitioner
`
`argues that Kimura practices these steps, in the same order, in view of its
`
`disclosure of adding pretreated coated filler to the pulp slurry, and that “[t]he
`
`paper strength of the filled paper can be further improved by adding, to the
`
`pulp slurry, the paper strength agent such as cationic starch.” Id. at 54–57
`
`(citing Ex. 1012 ¶¶ 19, 21, 44); see also Ex. 1012 ¶ 21 (discussing “cases
`
`where internal agents such as cationic starch and PAM type dry strength
`
`agent are added to the pulp slurry containing filler treated with the
`
`composite PAM”). Petitioner further argues that Kimura discloses making a
`
`sheet from its pulp slurry, and therefore “form[s] a paper mat from the
`
`combination” as required by claim 1. Pet. 57.
`
`Claim 1 requires that “at least 10% of the filler particles are
`
`precipitated calcium carbonate and at least 10% of the filler particles are
`
`ground calcium carbonate.” Petitioner argues that Laufmann teaches a
`
`mixture of 50% GCC and 50% PCC fillers, and discloses benefits of using
`
`Laufmann’s filler blends instead of papers made with either pure PCC or
`
`GCC alone. Id. at 55 (citing improvements in drainage, wet web strength,
`
`and dry strength over paper made with pure PCC, and mitigating the
`
`negative impact pure GCC has on paper bulk and opacity). Petitioner
`
`
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`10
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`Patent 8,465,623 B2
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`contends that a person of ordinary skill in the art would have been motivated
`
`to use Laufmann’s filler in Kimura, and would have had a reasonable
`
`expectation of success in so doing because “both provide compatible
`
`methods to increase filler content in paper while maintaining paper strength,
`
`allowing the same quality paper to be made at a lower cost.” Id. at 55, 57–
`
`58.
`
`As to the requirement in claim 1 that “the cellulose fiber stock
`
`comprises a plurality of cellulose fibers and water,” Petitioner directs us to
`
`several of Kimura’s examples, which use a fiber stock having a consistency
`
`of 2% fiber and 98% water. Id. at 58 (citing Ex. 1002 ¶¶ 16, 19; Ex. 1012
`
`¶¶ 74, 75).
`
`Claim 1 additionally requires that “the composition of matter
`
`enhances the performance of the wet strength aid or wet web strength
`
`additive or drainage additive in the paper mat.” Petitioner contends that
`
`[a]ccording to the ’623 patent, its compositions of matter
`prevent adhesion to filler particles because the composition of
`matter neutralizes the charge of the filler, thereby inhibiting
`adsorption of the wet end additives. (EX1001, Col. 4:34-45).
`Therefore, the ’623 patent teaches that the natural result of
`pretreating filler with a compound carrying a cationic charge is
`enhancing performance of the wet end additive in the paper mat
`by making more wet end additive available to bind the fibers.
`(EX1002, ¶101; EX1001, Col. 4:34-45).
`
`Id. at 58–59. Petitioner argues that because Kimura’s coating is one of the
`
`compositions of matter identified in the ’623 patent and Kimura uses
`
`pretreatment for the same reason as the ’623 patent (i.e., to provide
`
`improved paper strength), Kimura’s pretreatment necessarily enhances the
`
`performance of wet end additives. Id. at 59.
`
`
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`11
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` Petitioner contends that the subject matter of dependent claims 2–8,
`
`12, 13, 16, and 17 would have been obvious to a person of ordinary skill in
`
`the art, and directs us to portions of Kimura and Laufmann that disclose or
`
`suggest the additional limitations recited therein. Id. at 59–64.
`
`b.
`
`Patent Owner’s Arguments
`
`Patent Owner argues that Kimura does not teach treating filler with a
`
`composition of matter. Prelim. Resp. 53–55, 57. Specifically, Patent Owner
`
`asserts that Kimura’s coating is “fundamentally different” than the
`
`composition of matter in the ’623 patent because it is “intended to create an
`
`‘appropriate aggregation effect’ and a ‘high affinity to the pulp slurry.’” Id.
`
`at 53. Patent Owner also argues that Kimura does not teach or disclose that
`
`its composite PAM has any effect on the performance of wet end chemicals.
`
`Id. at 53, 57. Patent Owner further argues that Kimura teaches that coated
`
`filler may be added to the papermaking process at three points: (i) after the
`
`strength additive is added; (ii) partially before the strength additive is added;
`
`and (iii) at the same time as the strength additive. Id. at 54. According to
`
`Patent Owner, “Kimura teaches that the order of addition of the treated filler
`
`vis-à-vis the strength additive does not exert a significant influence on paper
`
`strength,” and that, if Kimura teaches anything regarding order of addition, it
`
`is that adding treated filler together with strength additive provides the best
`
`results. Id.
`
`Patent Owner does not present any separate arguments directed at the
`
`dependent claims.
`
`c.
`
`Analysis
`
`Based on the information and arguments presented, we determine that
`
`the current record establishes a reasonable likelihood that Petitioner would
`
`
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`12
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`prevail on its assertion that the subject matter of claims 1–8, 12, 13, 16, and
`
`17 would have been obvious over the combined teachings of Kimura and
`
`Laufmann.
`
`Petitioner’s explanation of how and where the prior art references
`
`teach or suggest each claim limitation is reasonable. See, e.g., Pet. 53–64.
`
`Even though Patent Owner did not address the dependent claims in its
`
`Preliminary Response, we nevertheless have evaluated Petitioner’s
`
`information and arguments presented in challenging these claims.
`
`Petitioner’s information and accompanying explanation also supports, on
`
`this record, the assertion that a person of ordinary skill in the art would have
`
`had reason to combine Kimura and Laufmann,2 and would have done so
`
`with a reasonable expectation of success. Id. at 55 (discussing
`
`improvements in drainage and strength resulting from Laufmann’s
`
`PCC/GCC blend), 57–58 (discussing compatibility between Kimura and
`
`Laufmann’s “methods to increase filler content in paper while maintaining
`
`paper strength, allowing the same quality paper to be made at a lower cost”);
`
`Ex. 1012 ¶ 21; Ex. 1016, 18–19.
`
`With regard to Patent Owner’s argument that Kimura’s composite
`
`PAM is not a composition of matter, we note that Patent Owner does not
`
`expressly dispute that Kimura’s cationic polyacrylamide is one of the
`
`compositions of matter identified in the ’623 patent. Furthermore, although
`
`Kimura does teach that its coating “has an appropriate aggregation effect and
`
`an excellent affinity with the pulp slurry,” it also teaches that the coating
`
`
`2 Patent Owner states that Laufmann’s disclosure of using a combination of
`GCC and PCC “is nothing new and indeed was discussed in the background
`of the ’623 patent.” Prelim. Resp. 54.
`
`
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`13
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`may have “a good compatibility with agents (paper strength enhancement
`
`agent and so on) to be incorporated into the pulp slurry.” Ex. 1012 ¶ 21.
`
`Additionally, Kimura teaches that adding strength agents to a pulp slurry
`
`containing filler treated with Kimura’s composite PAM can provide a
`
`“synergistic effect . . . without inhibiting the respective effects of the filler
`
`and the agents.” Id. In view of Kimura’s teaching that the composite PAM
`
`will not inhibit the effects of the paper strength enhancement agent, we
`
`disagree with Patent Owner’s contention that “[t]here is no teaching or
`
`suggestion in Kimura that the composite PAM has any effect on the
`
`performance of the wet end chemicals.” Prelim. Resp. 53; see also id. at 2
`
`(arguing that, according to the ’623 patent, pretreatment increases the
`
`efficiency of wet end chemicals by, inter alia, “reducing the interference of
`
`the filler in the interaction between the wet end chemicals and the fiber”).
`
`We next turn to the question of whether Kimura’s composite PAM
`
`enhances the performance of wet end chemicals. According to Patent
`
`Owner,
`
`[t]he specification [of the ’623 patent] provides several
`examples of materials that act as “compositions of matter”
`when applied in the manner described in the patent. ([Ex.
`1001,] at e.g., col. 2, ll. 48-50; col. 3, ll. 1-21; col. 5, l. 57-col.
`6, l. 44.) The ’623 patent teaches that the enhanced
`performance of the claimed wet end chemicals can be evaluated
`by measuring an increase in tensile strength. (Id. at Figure 1
`and col. 5, ll. 12-20.).
`
`Prelim. Resp. 7. As noted above, Patent Owner does not dispute that
`
`Kimura’s composite PAM is a cationic polyacrylamide coating, which the
`
`’623 patent includes among its “compositions of matter.” Ex. 1001, 6:20–
`
`23. Further, the evidence on this record suggests that Kimura’s composite
`
`PAM can be applied in a papermaking process in the same manner and order
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`14
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`as described in the patent, and results in a paper mat having improved
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`strength. Ex. 1012 ¶¶ 1, 21, 22. Thus, under Patent Owner’s own
`
`characterization of the ’623 patent, Kimura’s composite PAM would
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`constitute a composition of matter that enhances the performance of wet end
`
`chemicals. The fact that Kimura teaches that the order of addition can vary,
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`or that changing the order of addition will not exert a significant influence
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`on paper strength, does not undermine Kimura’s disclosure that
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`incorporating filler coated with a composite PAM into a pulp slurry can
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`improve paper strength.
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`For all of the foregoing reasons, we are persuaded that Petitioner has
`
`demonstrated a reasonable likelihood that the subject matter of claims 1–8,
`
`12, 13, 16, and 17 would have been obvious in view of the combined
`
`teachings of Kimura and Laufmann.
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`ii. Claims 18 and 19
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`Petitioner argues that claims 18 and 19 are unpatentable as anticipated
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`by or obvious over Kimura. Pet. 64–68.
`
`a. Claim 18
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`Independent claim 18 is substantially similar to claim 1. Claim 18,
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`however, requires a dry strength aid instead of a wet strength aid, wet web
`
`strength additive, or drainage additive, and also requires “at least 10% of the
`
`filler particles are in a dispersed slurry calcium carbonate form” instead of at
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`least 10% of the filler particles being PCC and GCC. Compare Ex. 1001,
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`8:64–9:12, with id. at 10:25–40.
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`For the common limitations between claims 1 and 18, Petitioner
`
`argues that its analysis regarding Kimura’s disclosure of the elements of
`
`claim 1 applies equally to claim 18. Pet. 64. Petitioner further argues that
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`15
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`Kimura teaches the use of cationic starch as an additive, which is a dry
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`strength and drainage aid. Id. at 57 (citing Ex. 1012 ¶ 44), 64–65.
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`As to the requirement that “at least 10% of the filler particles are in a
`
`dispersed slurry calcium carbonate form,” Petitioner argues that Kimura
`
`teaches using ground calcium carbonate as a filler for paper. Id. at 65 (citing
`
`Ex. 1012 ¶¶ 8, 17). Petitioner further contends that “manufacturers usually
`
`ship GCC in dispersed form because the dispersant allows manufacturers to
`
`ship and store higher concentrations of GCC without its settling into a
`
`mass.” Id. (citing Ex. 1002 ¶¶ 22–24; Ex. 1020, 1:26–30). Petitioner thus
`
`argues that Kimura’s disclosure of GCC “necessarily teaches” dispersed
`
`GCC, or that it would have been obvious to a person of ordinary skill in the
`
`art to use dispersed GCC. Id.
`
`Patent Owner argues that Kimura does not anticipate, or render
`
`obvious claim 18, applying to claim 18 the same arguments made with
`
`regard to claim 1. Prelim. Resp. 58.
`
`For the same reasons discussed above with regard to claim 1,
`
`Petitioner’s explanation of how each claim limitation is taught or suggested
`
`by Kimura is reasonable, even in view of Patent Owner’s arguments. See,
`
`e.g., Pet. 53–64. Furthermore, Petitioner has directed us to evidence
`
`demonstrating that Kimura teaches the use of GCC, and that it would have
`
`been obvious to a person of ordinary skill in the art to use dispersed GCC
`
`based on common storage and shipping practices. Id. at 65; Ex. 1002 ¶¶ 22–
`
`24; Ex. 1020, 1:26–30. Patent Owner does not dispute this evidence.
`
`Therefore, based on the information and arguments presented, we
`
`determine that the current record establishes a reasonable likelihood that
`
`
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`16
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`Petitioner would prevail on its assertion that the subject matter of claim 18
`
`would have been obvious in view of Kimura.
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`We, however, are not persuaded that Petitioner has demonstrated a
`
`reasonable likelihood that the subject matter of claim 18 is anticipated by
`
`Kimura. Petitioner does not contend that Kimura expressly teaches the use
`
`of dispersed GCC, but rather that “[t]he use of dispersed slurry calcium
`
`carbonate is inherent . . . in Kimura’s disclosure,” and “Kimura’s disclosure
`
`of GCC necessarily teaches a POSA dispersed GCC.” Pet. 65. “Inherency .
`
`. . may not be established by probabilities or possibilities. The mere fact that
`
`a certain thing may result from a given set of circumstances is not
`
`sufficient.” Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264,
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`1269 (Fed. Cir. 1991). “To establish inherency, the extrinsic evidence ‘must
`
`make clear that the missing descriptive matter is necessarily present in the
`
`thing described in the reference.’” In re Robertson, 169 F.3d 743, 745 (Fed.
`
`Cir. 1999). Petitioner’s acknowledgment that manufacturers “usually” ship
`
`GCC in dispersed form undermines its inherency argument, in that GCC in
`
`dispersed form is not necessarily present in Kimura, but is one among other
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`storage and shipping practices.
`
`b. Claim 19
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`Independent claim 19 recites “[a] method of increasing the
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`interactions between a drainage additive or wet web strength additive or wet
`
`strength aid and cellulose fibers mixed with filler particles.” The method
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`comprises the steps of (1) pre-treating filler particles with a composition of
`
`matter in the absence of cellulose fiber stock, (2) combining the pre-treated
`
`filler particles with cellulose fibers, and (3) treating the combination with at
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`least one drainage additive or wet web strength additive or wet strength aid.
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`
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`17
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`These steps are identical to those recited in claim 1, and Petitioner argues
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`that its analysis of these elements with regard to claim 1 applies equally to
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`claim 19. Pet. 65.
`
`Claim 19 further requires “the filler particles are selected from the list
`
`consisting of precipitated calcium carbonate, ground calcium carbonate, and
`
`any combination thereof.” Petitioner argues that it was known in the prior
`
`art that papermakers used both GCC and PCC. Id. at 68 (citing Ex. 1001,
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`1:49–57). Patent Owner also notes that Kimura teaches “it is preferable to
`
`use calcium carbonate as the filler.” Id. at 68 (quoting Ex. 1012 ¶ 17).
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`Consistent with the language contained in the preamble, claim 19
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`additionally requires that “the composition of matter inhibits the drainage
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`additive or the wet web strength additive or wet strength aid from adhering
`
`to the filler particles.” Petitioner argues that Kimura discloses a method of
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`manufacturing a filled paper “capable of improving the paper strength
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`efficiently with small amounts of chemical agent.” Id. at 66 (quoting Ex.
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`1012 ¶ 1). Petitioner further argues that Kimura inherently discloses
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`increasing interactions between wet end additives and fibers because Kimura
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`pretreats calcium carbonate fillers with cationic polyacrylamide, which is a
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`composition of matter disclosed in the ’623 patent, and uses its pretreatment
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`for the same reason as disclosed in the ’623 patent. Id. at 67.
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`Additionally, Petitioner asserts that a person of ordinary skill in the art
`
`would have reasonably expected Kimura’s composite PAM to increase the
`
`interactions between wet end additive and cellulose fibers and inhibit the
`
`adhesion of wet end additives to the filler. Id. at 67–68. According to
`
`Petitioner, it would have been obvious to a person of ordinary skill in the art
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`that adding Kimura’s “positively-charged material to negatively-charged
`
`
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`18
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`filler would reduce the filler’s negative charge, inhibiting the adhesion of
`
`positive wet end additives to the filler,” leaving more of the wet end
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`additives available to bind the cellulose fibers together. Id. (citing In re
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`Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)).
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`Patent Owner asserts that its arguments made with regard to claim 1
`
`apply to claim 19, namely, that Kimura does not teach the claimed order or
`
`suggest that the composition of matter has any effect on the performance of
`
`a later-added wet end chemical. Prelim. Resp. 58–60.
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`For the same reasons discussed above with regard to claim 1,
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`Petitioner’s explanation of how and where Kimura teaches or suggests each
`
`claim limitation is reasonable, even in view of Patent Owner’s arguments.
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`See, e.g., Pet. 64–68. Therefore, based on the information and arguments
`
`presented, we determine that the current record establishes a reasonable
`
`likelihood that Petitioner would prevail on its assertion that claim 19 is
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`anticipated by, or that the subject matter of claim 19 would have been
`
`obvious in view of Kimura.
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`D. Challenges Based on Brown
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`Petitioner argues that the subject matter of claims 1–8, 12, 13, 16, and
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`17 would have been obvious in view of the combined teachings of Brown,
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`Kimura, and Laufmann, and that claims 18 and 19 are unpatentable as
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`obvious over the combined teachings of Brown and Kimura. Pet. 38–53.
`
`i. Claims 1–8, 12, 13, 16, and 17
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`a. Petitioner’s Arguments
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`Petitioner contends that Brown disclo
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