UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`
`SOLENIS LLC
`
`Petitioner,
`
`v.
`
`ECOLAB USA INC.
`
`Patent Owner.
`
`____________
`
`Case IPR2016-01281
`Patent 8,465,623
`____________
`
`DECLARATION OF ROBERT H. PELTON
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`Solenis v. Ecolab USA, IPR2016-01281, Exhibit 2018
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`Table of Contents
`Qualifications ................................................................................................ 1
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`Background and Materials Considered ........................................................ 3
`
`I.
`
`II.
`
`III. Applicable Legal Principles .......................................................................... 5
`
`
`
`
`
`A.
`
`B.
`
`Claim Construction ............................................................................ 5
`
`Invalidity ............................................................................................ 6
`
`IV. Person of Ordinary Skill in the Art ............................................................... 8
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`V.
`
`The State of the Art Before the ’623 Patent ................................................. 8
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`VI. The ’623 Patent ........................................................................................... 11
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`VII. Summary of the Applied References .......................................................... 13
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`
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`
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`A.
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`B.
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`Chung ............................................................................................... 13
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`Brown ............................................................................................... 15
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`C. Kimura .............................................................................................. 16
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`D.
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`Laufmann .......................................................................................... 17
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`VIII. Opinions ...................................................................................................... 18
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`A. Grounds 6 and 7: Claims 1-8, 12-13, and 16-19 are
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`patentable over Chung in view of Brown – with or without
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`Laufmann. ......................................................................................... 18
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`B. Grounds 4 and 5: Claims 1-8, 12-13, and 16-19 are
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`patentable over Brown in view of Kimura – with or without
`
`Laufmann .......................................................................................... 22
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`C. Grounds 1 and 2: Claims 1-8, 12-13, and 16-19 are
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`patentable over Kimura – with or without Laufmann. ..................... 24
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`D. Ground 3: Claim 19 is not anticipated by Kimura. ......................... 26
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`Solenis v. Ecolab USA, IPR2016-01281, Exhibit 2018
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`I, Robert H. Pelton, do declare and state as follows:
`
`I.
`
`Qualifications
`
`1.
`
`I received a Bachelor of Science in 1970 in chemistry and a Master of
`
`Science in 1971 also in chemistry, both from the University of Guelph in Canada.
`
`I also earned a Ph.D. in colloid chemistry in 1976 from Bristol University in
`
`England.
`
`2.
`
`I have been an active researcher since 1974, almost continuously in
`
`papermaking. I have published over three hundred peer-reviewed papers. One
`
`hundred fifty-six of my three hundred five peer-reviewed journal articles are
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`directed to the field of papermaking.
`
`3.
`
`From 1977 to 1984, I worked as a researcher at the Pulp and Paper
`
`Research Institute of Canada (PAPRICAN) where I started their wet-end chemistry
`
`program. From 1984 to 1987, I worked as a researcher for Union Carbide in
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`Tarrytown, N.Y., on research that was not related to papermaking. I returned to
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`Canada, and papermaking research, in 1987 and joined the Chemical Engineering
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`department of McMaster University where I built the McMaster Centre for Pulp
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`and Paper Research.
`
`4.
`
`I was first hired at PAPRICAN as an industrial post-doctoral fellow
`
`and then as a permanent scientist. My main technological achievement was the
`
`identification and development of polyethyleneoxide (PEO), the only nonionic
`
`
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`1
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`retention aid for papermaking. My PEO research resulted in 17 peer-reviewed
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`scientific papers, one US patent, several paper machine trials in Ontario,
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`Newfoundland, Quebec, and Beloit, Wisconsin, and commercialization of PEO as
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`a retention aid by many Canadian newsprint mills.
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`5. My pulp and paper research at McMaster can be divided into the
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`following topics: dispersed air in the wet-end, newsprint fines retention, polymer-
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`enhanced brownstock washing, improving strength of filled paper, new approaches
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`to wet strength, and bioactive paper.
`
`6. My team’s work on improving the strength of filled papers occurred
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`mainly from 2000 to 2005 in a project funded by Mintek Canada (a subsidiary of
`
`Specialty Minerals) with matching funds from the Canadian governments. We
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`won two awards for this research – the Jasper Mardon Memorial Prize for the best
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`papermaking paper, 2002, and the Derek Page award for the best paper in the
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`Journal of Pulp Paper Science, 2005.
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`7. My research group has also researched many polymer approaches to
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`improving wet strength and wet-web strength in the last ten years. In 2013, I
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`received the TAPPI Van den Akker Medal for our work describing strength
`
`enhancing microgels. Currently, my paper technology projects include novel
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`strength enhancing polymers, polymer approaches to increased wet resiliency, and
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`paper-based biosensors.
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`2
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`8.
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`I have been chairman of the Scientific Operating Committee for the
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`Mechanical Woodpulps NCE for the last half of a twelve-year program. This
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`committee had scientific oversight for a large project in universities across Canada.
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`From 2005-2016, I created, developed, and ran the Sentinel Bioactive Paper
`
`Network in Canada. This network was recognized by the New York Times in their
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`“Year in Ideas” New York Times Magazine, Saturday, December 8, 2007.
`
`9.
`
`I have also received two major awards recognizing the scientific
`
`contributions I have made over the course of my career. I was named a TAPPI
`
`fellow by the Technical Association of the American Pulp and Paper Industry for
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`my contributions in pulp and paper, and I was elected a Fellow of the Royal
`
`Society of Canada for my contributions in polymer chemistry.
`
`10.
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`I have supervised 37 Ph.D and 37 master’s student theses.
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`11. A complete copy of my publications, speaking engagements, and
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`professional organizations is attached to this declaration as Exhibit 2019.
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`II. Background and Materials Considered
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`12. A list of the materials that I have considered in connection with this
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`report is attached as Exhibit 2020.
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`13.
`
`I understand that Solenis has instituted an inter partes review
`
`challenging Ecolab’s U.S. Pat. No. 8,465,623 (the “’623 patent”) in light of four
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`3
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`references which I understand to qualify as prior art to this patent: Chung, Brown,
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`Kimura, and Laufmann.
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`14.
`
`I have read the ’623 patent, the Chung, Brown, Kimura, and
`
`Laufmann references, as well as the deposition transcript and Declaration of David
`
`A. Dyer, Ph.D., and the references cited in that Declaration.
`
`15.
`
`In rendering the opinions contained within this Declaration, I have
`
`also relied upon my general knowledge, experience, and/or training as it relates to
`
`wet-end chemistry used in papermaking processes, including my experience in use
`
`of filler in papermaking.
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`16. The ’623 patent is directed to a “Method of Improving Dewatering
`
`Efficiency, Increasing Sheet Wet Web Strength, Increasing Sheet Wet Strength and
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`Enhancing Filler Retention in Papermaking.” (EX1001.) I understand that the
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`’623 patent was filed on October 13, 2011, and claims priority back to a patent
`
`application that was filed on November 26, 2008. (Id.) I understand that
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`November 26, 2008, is the date of invention for the ’623 patent for purposes of the
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`obviousness analysis. However, my analysis would be no different if the priority
`
`date were determined to be the filing date of the ’623 patent. None of the cited
`
`references are dated after November 26, 2008.
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`17. The ’623 patent contains 19 claims. I understand the claims to
`
`provide the scope of the inventions claimed in the patent. I have been instructed
`
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`that claims 1, 18, and 19 are known as independent claims, and so the inventions
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`described therein stand on their own.
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`18. As I read the claims of the ’623 patent, there are three features of the
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`claims that stand out to me: (1) the order of combination of components in the
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`methods claimed in the independent claims; (2) the relationship between the
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`composition of matter and the papermaking additive as claimed in claims 16 and
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`19, and (3) the claimed filler blend required in claim 1.
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`III. Applicable Legal Principles
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`19.
`
`I am not an attorney. For purposes of this report, I have been
`
`informed about basic aspects of the law that are relevant to my analysis and
`
`opinion.
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`A. Claim Construction
`
`20.
`
`I have been informed and understand that, before an invalidity
`
`determination can be made, the patent claims must be interpreted. I understand
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`that the proper interpretation of a claim term in this proceeding is the broadest
`
`reasonable interpretation that a person of ordinary skill in the art in the technical
`
`field to which the patent relates would have given to the term in the context of the
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`patent at issue.
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`21.
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`In my opinion, based upon my review of the ’623 patent a person of
`
`ordinary skill in the art would not ascribe any special meaning to the terms of the
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`challenged claims beyond their customary meaning.
`
`B.
`
`22.
`
`Invalidity
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`I have been informed and understand that in an inter partes review
`
`proceeding, a petitioner has the burden of proving the claims are unpatentable by a
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`preponderance of the evidence.
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`23.
`
`I have been informed by counsel that a patent claim is obvious if the
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`subject matter as a whole would have been obvious to one of ordinary skill in the
`
`art at the time the invention was made. The obviousness analysis involves several
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`factual inquiries: (i) the scope and content of the prior art; (ii) the differences
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`between the prior art and the claimed invention; (iii) the level of ordinary skill in
`
`the art at the time of the invention; and (iv) the existence of objective indicia of
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`non-obviousness (“objective indicia”), such as commercial success, recognition
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`and solving of a problem, licensing, industry praise, and failure of others.
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`24.
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`I have been informed that, for a claim to have been obvious, a person
`
`of skill in the art would have had to be motivated or have a reason to combine the
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`teachings of the prior art references to achieve the claimed invention, and that such
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`a person must have had a reasonable expectation of success in doing so. I have
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`been informed that if the prior art teaches away from the claimed invention, then
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`that is evidence of non-obviousness.
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`25.
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`I also understand that it is improper to use hindsight in the
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`obviousness analysis. That is, the claimed invention cannot be used as a guide for
`
`a person to pick and choose claim elements from the prior art to construct the
`
`claimed invention. Instead, the prior art and understanding of the problem must be
`
`analyzed as of the date of the invention.
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`26.
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`I further understand that a patent claim is invalid as anticipated if
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`every element of the patent claim is present, either expressly or inherently, in a
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`single prior art reference. It is my understanding that the absence of one claim
`
`feature from a prior art reference means that the reference would not anticipate the
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`claim.
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`27.
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`I understand that an element is inherently disclosed in a reference if it
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`is necessarily present. Inherency cannot be established by probabilities or
`
`possibilities. The fact that a certain thing may result from a given set of
`
`circumstances is not sufficient. To establish inherency, the extrinsic evidence must
`
`make clear that the missing descriptive matter is necessarily present in the thing
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`described in the reference.
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`IV. Person of Ordinary Skill in the Art
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`28.
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`I understand that a patent is interpreted from the vantage point of a
`
`person of ordinary skill in the art (POSA) at the time of the invention. I understand
`
`that a POSA is a hypothetical person with ordinary knowledge, experience, and
`
`creativity working in the technology of the patent at issue. I understand that the
`
`factors relevant to determining the level of ordinary skill in the art include the
`
`types of problems encountered in the art, prior art solutions to those problems, the
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`rapidity with which innovations are made, sophistication of the technology, and the
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`level of education and experience of workers in the field, including the inventors.
`
`29.
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`I understand that the level of ordinary skill in the art is determined by
`
`considering several factors including the type of problems encountered in the art,
`
`prior art solutions to those problems, the rapidity with which innovations are made,
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`the sophistication of the technology, and the educational level of active workers in
`
`the field. In applying these factors to the invention disclosed in the ’623 patent, it
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`is my opinion that a person of ordinary skill in the art would have a bachelor’s
`
`degree in chemistry, and at least five years of experience in the application of that
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`educational background to the papermaking field.
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`V.
`
`The State of the Art before the ’623 Patent
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`30. Strength aids are typically a polymer added in order to enhance paper
`
`strength. At the time of the filing of the ’623 parent application, research was
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`being conducted into improved strength aids in an effort to further increase paper
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`strength.
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`31. Many dry strength aids are cationic. Cationic strength aids adsorb
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`onto anionic pulp fibers and anionic filler surfaces. The specific surface area (area
`
`per mass) of many calcium carbonate fillers is ten times greater, or more, than the
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`specific surface area of cellulose fibers. Therefore fillers can consume most of the
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`added strength aid. A person skilled in the art understood that adding filler
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`negatively affected paper strength and thus required the use of additional strength
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`agent.
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`32. From 2000-2005, my research team studied paper strength in filled
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`papers to determine the effect of filler on paper strength. Based on laboratory
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`experiments, we concluded that when using polymers to increase paper strength, it
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`was better to apply strength-enhancing polymer to the fiber-fiber bonds, compared
`
`to strengthening fiber-filler bonds. This research was published in 2005. At the
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`time that the parent application of the ’623 patent was filed in 2008, it was
`
`understood that this was a superior strategy for strengthening fiber-fiber bonds, not
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`fiber-filler bonds.
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`33. Based on our work, the more intuitive way to strengthen fiber-fiber
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`bonds preferentially was to add the strength polymers to the fibers first, before
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`adding the filler. The filler-first strategy taught by the ’623 patent was counter-
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`intuitive.
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`34. Most polymeric strength aids and retention additives were either
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`positively or negatively charged to promote binding to oppositely charged fibers
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`and fillers in the papermaking furnish.
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`35. At the time of the ’623 patent’s priority date, the state of the art
`
`encouraged the selection of chemistry, materials, and methods designed to cause
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`the different constituents in system (e.g., fibers, fillers, and polymers) to adhere to
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`each other, not repel.
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`36. One example of this was the use of filler agglomeration. Filler
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`treatments known as of the ’623 patent’s priority date were designed to create filler
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`agglomeration, producing larger filler + polymer agglomerates which were more
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`easily retained in the paper sheet and less detrimental to paper strength.
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`37. Papermaking and papermaking chemistry is inherently complex and
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`involves hundreds of variables. The influence of any change made to the paper
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`making system (e.g., the types of fibers, the types of fillers, the types and
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`concentrations of dry strength, wet strength, sizing, and retention chemicals) must
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`be studied experimentally with a paper machine trial (and maybe several paper
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`machine trials) in order to understand the effects of that change on other aspects of
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`the process and product.
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`38. Papermakers rely on electrostatic attraction between oppositely
`
`charged entities to attach chemicals to surfaces. However, this can be a sensitive
`
`function of the pH, ionic strength, and the presence of soluble polymeric materials,
`
`among other things. The net effects can be difficult to predict.
`
`VI. The ’623 Patent
`
`39. Claims 1, 18, and 19 of the ’623 patent are independent claims. These
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`claims require common elements: (1) pretreatment of filler with a composition of
`
`matter in the absence of cellulose fiber stock; (2) combining the pretreated filler
`
`and the cellulose fiber stock; (3) treating the combination of the pretreated filler
`
`and fiber with a strength and/or drainage additive; to (4) achieve a specific
`
`objective. (EX1001.) Each of these claims therefore requires first filler
`
`pretreatment, followed by the addition of the pretreated filler to the fiber, and then
`
`addition of the papermaking additive. The filler must be pretreated and introduced
`
`to the fiber before the strength or drainage aid in order to enhance the performance
`
`of the later-added strength or drainage aid, whether through charge repulsion or
`
`otherwise.
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`40. Each independent claim specifies an interaction between the
`
`composition of matter used to pretreat the filler and the strength or drainage aid.
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`For example, claim 1 states that the composition of matter “enhances the
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`performance of the wet strength aid or wet web strength additive or drainage
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`additive in the paper mat.” (EX1001 at col. 9:11-13.) Claim 18 states that the
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`“composition of matter enhances the performance of the dry strength aid in the
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`paper mat.” (EX1001 at col. 10:39-40.) And, claim 19 states that “the composition
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`of matter inhibits the drainage additive or the wet web strength additive or wet
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`strength aid from adhering to the filler particles.” (EX1001 at col. 10:53-55.)
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`41. Claim 1 also requires a blend of filler particles with at least 10%
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`precipitated calcium carbonate and at least 10% ground calcium carbonate.
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`(EX1001 at col. 9:7-9.) Claim 16 further specifies that the composition of matter
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`for filler pretreatment and the strength or drainage aid carry the same charge. (Id.
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`at col. 10:16-18.) All claims, except claim 18, require a drainage aid or a strength
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`aid that is a wet strength or wet web strength aid.
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`42. The data in the ’623 patent showed that the highest strength
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`corresponded to the addition of pretreated filler to the fiber followed by the
`
`strength polymer. This strength was more than an additive effect on paper strength
`
`improvement and unexpected. (EX1001 at Figure 2.)
`
`43. Figure 1 of the ’623 patent reflects wet strength results obtained from
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`testing of the claimed method. These results demonstrate that the claimed method
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`employing a pretreated filler, and a later-added strength aid, allowed for higher wet
`
`strength at higher filler content, as compared to the same method without filler
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`pretreatment. Specifically, without filler pretreatment, but with strength aid, a wet
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`tensile index of at least about 2.7 N.m/g could only be maintained up to 14% filler
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`content. With filler pretreatment and the same amount of strength aid, wet tensile
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`index values above 2.7 N.m/g could be achieved for filler contents of up to at least
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`19%.
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`44. Figure 2 of the ’623 patent reflects wet web strength results (measured
`
`via break up time) obtained from testing of the claimed method. These results
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`demonstrate that the claimed method employing a pretreated filler, and a later-
`
`added strength aid, allowed for higher wet web strength at higher filler content, as
`
`compared to the same method without filler pretreatment. Again, without filler
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`pretreatment, and just strength aid, the results show that break up time falls below
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`12 minutes at about 14% filler content. With filler pretreatment and the same
`
`amount of strength aid, break up time remains as high as 15 minutes at about 16%
`
`filler content.
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`VII. Summary of the Applied References
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`
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`A. Chung
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`45. Chung teaches the sequential addition of cationic coagulant, anionic
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`flocculant and microparticles to improve drainage and filler retention.
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`46. According to the process in Chung, untreated PCC filler, cellulose
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`fiber, and a cationic starch dry strength agent are combined. After that, a cationic
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`coagulant is added to the fiber/filler/starch thick stock feeding the white water
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`loop. (EX1007 at col. 4:43-45, 59-68.) This is followed by adding an anionic
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`flocculant in the thin stock. (EX1007 at col. 4:24-33.) Finally, microparticles are
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`added after at least one high shear operation. (EX1007 at col. 6:19-23.) This was a
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`classic microparticle retention program designed to deposit filler particles onto the
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`fibers.
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`47. The filler in Chung is untreated. (EX1007 at col. 4:43-48.) Because
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`Chung does not treat the filler, Chung also does not teach or disclose a filler
`
`treatment that is designed either to enhance the performance of a later-added
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`strength or drainage aid, or to repel or reduce adhesion of a later-added strength or
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`drainage aid through a charge-charge interaction or otherwise.
`
`48.
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`Instead, Chung is directed to ensuring that the components of the
`
`process bind together, not to reducing the adhesion among them. (EX1007 at col.
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`2:24-26 (“It has been discovered that precipitated calcium carbonate-cationic
`
`starch systems are useful as efficient binders . . . .”).)
`
`49. Chung’s teachings are consistent with the understanding of the state of
`
`the art at the time of the ’623 priority date.
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`50. Chung also does not teach the use of a filler blend containing at least
`
`10% of PCC and 10% of GCC.
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`B.
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`Brown
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`51. The filler dispersion of Brown is made using a two-step process of
`
`adding a dispersing agent and an aggregating agent. (EX1014 at col 2:49-3:29;
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`col. 3:53-57.)
`
`52. When Brown uses the filler dispersions in a papermaking process, it
`
`adds the filler to a mixture that already includes the fiber and strength additive.
`
`(EX1014 at col. 17:4-6; col. 20:10-16.)
`
`53. Brown does not teach treating a filler with a composition of matter to
`
`enhance the performance of a later-added strength aid. And Brown does not teach
`
`treating a filler with a composition of matter that is designed to repel or reduce
`
`adherence of a later-added strength aid through a charge-charge interaction or
`
`otherwise.
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`54. Brown contains one example of a filler dispersion with a cationic
`
`charge: Example 21. (EX1014 at col. 20:11-15.)
`
`55.
`
`In Example 21, a cationic filler dispersion called SF1 is used together
`
`with a cationic strength aid. SF1 has an overall charge of +42.1 µeg/g. (EX1014
`
`at col. 13:40-43.)
`
`56. Brown concludes that SF1 resulted in significantly slower drainage
`
`and inferior retention when compared to the “inventive” filler dispersions with an
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`overall anionic charge. (EX1014 at col. 19:8-12; col. 20:18-21; col. 29-34.)
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`57. Brown also does not teach the use of a filler blend containing at least
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`10% of PCC and 10% of GCC.
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`C. Kimura
`
`58. Kimura discloses filler particles treated with a polyelectrolyte
`
`complex having an anionic polysaccharide and a cationic or amphoteric
`
`polyacrylamide copolymer. Kimura calls this polyelectrolyte complex either a
`
`polyion complex or “composite PAM.” (EX1012-0038.)
`
`59. According to Kimura, both the anionic and cationic components are
`
`required as part of a pretreatment in order to get the benefits of the invention.
`
`(EX1012-0038, -0067.) These benefits include an appropriate aggregation effect
`
`and a high affinity for the pulp slurry. (EX1012-0039, -0040.)
`
`60. Kimura discloses two methods of manufacturing: a batch method and
`
`a fractional method. (EX1012 at 0047.) In the batch method, the treated filler is
`
`added to the cellulose fiber after the strength additive and sizing agent have been
`
`added to the fiber. (EX1012 at 0047.) In the fractional method, a small portion of
`
`the treated filler (about 30%) is added to the cellulose fiber, followed by the
`
`strength additive, followed by the majority of the treated filler (about 70%).
`
`(EX1012 at 1012-0047, -0062.)
`
`61. Kimura does not disclose use of a filler blend containing at least 10%
`
`of PCC and 10% of GCC.
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`62. Kimura does not teach adding a strength or drainage aid only after the
`
`treated filler has been combined with the cellulose fiber.
`
`63. Kimura also does not teach anything about selecting a composition of
`
`matter for filler pretreatment that is designed to repel or reduce adherence of a
`
`later-added strength or drainage aid through a charge-charge interaction or
`
`otherwise.
`
`64. The polyion complex of Kimura is designed to bind all components in
`
`the process together. This is consistent with the understanding of the state of the art
`
`at the time of the ’623 priority date.
`
`D.
`
`Laufmann
`
`65. Laufmann does not teach filler pretreatment.
`
`66. Laufmann discloses multiple pilot studies conducted using various
`
`filler blends. (EX1016.)
`
`67. Laufmann does not provide any teaching concerning order of addition
`
`of materials. (EX1016.)
`
`68. Laufmann does not teach pretreating a filler with a composition of
`
`matter to enhance the performance of a later-added strength aid, or to repel or
`
`reduce adhesion of a later-added strength aid through a charge-charge interaction
`
`or otherwise.
`
`69. Laufmann teaches that 100% GCC is the best filler for paper strength,
`
`
`
`17
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`not a blend of fillers. Further, Laufmann teaches that blends of oppositely charged
`
`fillers can cause undesirable interactions with other wet end chemicals in the paper
`
`system. (EX1016-0016.)
`
`VIII. Opinions
`
`A. Grounds 6 and 7: Claims 1-8, 12-13, and 16-19 are patentable
`over Chung in view of Brown – with or without Laufmann.
`70. Chung, Brown, and Laufmann individually are missing the order of
`
`addition specified by each of the’623 patent’s challenged claims.
`
`71. There is no disclosure in Chung, Brown, or Laufmann of combining a
`
`pretreated filler with cellulose fiber stock before adding a strength or drainage aid,
`
`where the filler pretreatment composition enhances the performance of the later-
`
`added strength or drainage aid through charge-charge repulsion or otherwise
`
`inhibiting adherence between the filler and the strength or drainage aid.
`
`72. Chung does not teach filler pretreatment. Chung uses untreated filler,
`
`combines it with fiber and a strength additive, and then adds sequentially a cationic
`
`coagulant, an anionic flocculant, and a microparticle to that combination.
`
`(EX1007 at 4:53-5:2.) The purpose of Chung is to improve drainage and retention.
`
`(EX1007 at 2:46-51.) Chung does not discuss improving paper strength.
`
`73. A person skilled in the art would not have been motivated to modify
`
`the order of material addition in Chung. The order disclosed in Chung matters;
`
`Chung never teaches filler pretreatment; and Chung discloses adding the cationic
`
`
`
`18
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`Solenis v. Ecolab USA, IPR2016-01281, Exhibit 2018
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`

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`coagulant and anionic flocculant at particular points in the process, after other
`
`components have already been combined. (EX1007 at col. 2:60-3:9; col. 4:53-5:2;
`
`col. 5:34-49; col. 9:13-20; col. 12:1-6.)
`
`74. Brown is directed to a method for producing bulking and opacifying
`
`fillers for cellulosic products. (EX1014 at col. 5:29-31.) In the handsheet studies
`
`of Brown, the strength and drainage additives in Brown were already part of the
`
`fiber slurry when the filler was added. (EX1014 at col. 16:67-17:6; col. 20:10-16.)
`
`75. Brown sought to create a filler that would provide improved retention,
`
`drainage, bulk, and opacity. (EX1014 at col. 5:20-48.)
`
`76. A person skilled in the art would not have been motivated to simply
`
`replace the filler of Chung with the filler dispersion of Brown. Substituting the
`
`filler dispersion of Brown into the process of Chung would create an undesirable
`
`level of complexity. The process in Chung uses at least three wet end chemicals: a
`
`cationic coagulant, an anionic flocculant, and a microparticle. The process in
`
`Brown adds an anionic dispersant and a cationic aggregation agent to the filler.
`
`This would result in at least five separate wet end chemicals. Combining Brown
`
`and Chung in this manner would require extensive work to determine the proper
`
`amount of each chemical.
`
`77. Laufmann does not provide any teachings about filler pretreatment,
`
`mix order, or the effect of mix order on paper additive performance. Instead,
`
`
`
`19
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`Solenis v. Ecolab USA, IPR2016-01281, Exhibit 2018
`
`

`

`Laufmann teaches that various filler blends have different properties with positive
`
`and negative qualities that would need to be evaluated. Laufmann is another
`
`example of the complexity in the papermaking process and the need to study the
`
`effects of selecting different variables on the overall process and on paper quality.
`
`78. Brown teaches a filler with an overall anionic charge is best. One of
`
`skill in the art would not substitute the overall anionic filler of Brown into the
`
`process of Chung, which employs a cationic dry strength aid, to arrive at the
`
`invention of the ’623 patent. The ’623 patent teaches use of a filler pretreatment
`
`and a strength or drainage aid having the same charge or otherwise designed to
`
`repel each other. Substituting the anionic filler of Brown into the process of Chung
`
`would be likely to create the opposite result—wherein the filler would be attracted
`
`to, and not repel, the strength aid. Regardless, the strength aid of Chung is a dry
`
`strength aid—cationic starch, not the wet strength, wet web strength, or drainage
`
`aid called for in all but claim 18 of the ’623 patent.
`
`79. Brown does not teach the claimed interaction between the filler and
`
`strength aid of claim 19 of the ’623 patent, nor does Brown teach that it is desirable
`
`to select a filler and strength aid with the same charge.
`
`80. Brown’s filler dispersion requires both cationically and anionically
`
`charged chemicals to create a filler with an overall negative charge.
`
`81. Brown discourages the selection of a cationic composition of matter to
`
`
`
`20
`
`Solenis v. Ecolab USA, IPR2016-01281, Exhibit 2018
`
`

`

`pretreat filler because it attributes slow drainage to a cationic charge on the filler
`
`dispersion. The fillers that Brown describes as “inventive” have a net anionic
`
`charge that would be attracted to a cationic strength aid, and therefore would result
`
`in the strength aid binding the filler to the fiber. (EX1014 at Tables I and II
`
`(showing a filler with an anionic surface charge) and col. 17:2, col. 20:11-12
`
`(showing use with a cationic potato starch strength agent).) The best results in
`
`Brown are achieved using oppositely charged filler and strength agent—namely, an
`
`anionic filler dispersion and a cationic strength agent.
`
`82.
`
`In light of the teachings of Brown concerning the impact on drainage,
`
`a person skilled in the art would not be motivated to modify Chung by using a
`
`cationic c