UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MEXICHEM AMANCO HOLDINGS S.A. DE C.V.
`Petitioner,
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`v.
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`HONEYWELL INTERNATIONAL, INC.
`Patent Owner
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`
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`Case IPR2015-01309
`Patent 8,623,808
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`
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`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE UNDER 37 C.F.R. § 42.64(c)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`
`MEXICHEM AMANCO HOLDINGS S.A. DE C.V.
`Petitioner,
`
`v.
`
`HONEYWELL INTERNATIONAL, INC.
`Patent Owner
`
`
`
`Case IPR2015-01309
`Patent 8,623,808
`
`
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE UNDER 37 C.F.R. § 42.64(c)
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`
`
`
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`
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`Patent Owner’s Motion to Exclude Exhibits 1039 and 1040 should be
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`granted. The Opposition to Patent Owner’s Motion (the “Opposition”) submitted
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`by Petitioner Mexichem Amanco Holdings S.A. de C.V. (“Petitioner” or
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`“Mexichem”) fails to show the relevance or probative value of Exhibits 1039 and
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`1040, or that Exhibit 1040 was properly authenticated and is not hearsay.
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`I.
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`Exhibit 1039 (Podchernjaev – Russian Patent RU 2 0 73 058 Cl)
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`First, Exhibit 1039 is irrelevant and inadmissible under FRE 401-402
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`because it does not rebut the fact that the industry’s perception of unsaturated
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`compounds as being too reactive, toxic, and flammable did not change until after
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`Honeywell’s invention of the claimed fluoropropene-carbon dioxide (CO2)
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`mixtures. Indeed, Mexichem admits that Exhibit 1039 contains no discussion
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`about reactivity, toxicity, or flammability (Opposition, p. 2.).
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`Mexichem attempts to sidestep this deficiency of Exhibit 1039 by citing to
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`MPEP § 2112(I), which states that the discovery of a new property of an old
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`composition does not render the old composition patentable. Opposition, pp. 2-3.
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`Mexichem’s reliance on MPEP § 2112(I), which applies to anticipating prior art,
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`fails to support the relevance of Exhibit 1039. See In re Spormann, 363 F.2d 444,
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`448 (C.C.P.A. 1966) (“That which may be inherent is not necessarily known.
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`Obviousness cannot be predicated on what is unknown.”); MPEP § 2141.02(V)
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`(“Obviousness cannot be predicated on what is not known at the time an invention
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`SMRH:479263582.1
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`1
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`is made, even if the inherency of a certain feature is later established.”) Even
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`assuming, arguendo, that certain characteristics are inherent in the composition of
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`Exhibit 1039—something Mexichem has not shown— Exhibit 1039’s silence as to
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`these characteristics does not negate the conventional wisdom that unsaturated
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`compounds were too reactive, toxic, and flammable.
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`Mexichem’s newly-minted contention that Exhibit 1039 “is relevant as it
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`rebuts Honeywell’s main premise that it ‘discovered’ the claimed
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`tetrafluoropropene compounds, the compounds found in Inagaki,” (Opposition, p.
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`2) is a red herring as it mischaracterizes Honeywell’s argument. As set forth in
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`page 2 of Patent Owner’s Response, “Honeywell discovered that the claimed
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`fluoropropene-carbon dioxide (CO2) mixtures worked well.” (emphasis added).
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`Second, in considering FRE 403, Mexichem is unable to show that Exhibit
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`1039, which is from around the same time period as Inagaki, adds anything more
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`to the record than Inagaki (Exhibit 1002). See Opposition, p. 2 (stating that Exhibit
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`1039 mentions the same compounds found in Inagaki). Mexichem admits that,
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`like Inagaki, Exhibit 1039 never mentions anything about reactivity, toxicity, or
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`flammability. Opposition, p. 2.
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`Therefore, Exhibit 1039 is irrelevant under FRE 401 and thus inadmissible
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`under FRE 402, or is a waste of time or cumulative under FRE 403.
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`SMRH:479263582.1
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`2
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`II. Exhibit 1040 (SNAP Petition)
`First, Mexichem has not properly authenticated Exhibit 1040 under FRE
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`901. Mexichem contends that “the SNAP Petition falls within the purview of FRE
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`901(b)(4).” Opposition, p. 4. But Mexichem has not established a digital chain of
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`custody showing that the alleged NRDC letter is in fact posted on the NRDC
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`website by the NRDC. Other than providing a URL, Mexichem does not establish
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`the date and time the document was loaded from the NRDC website, the date and
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`time the document was posted on the NRDC website, or even that the submitted
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`letter is an accurate record of the document posted at the URL.
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`Mexichem, citing to a prior inter partes reexamination proceeding, also
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`notes “that the Patent Owner has previously seen Exhibit 1040 and never objected
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`to its authenticity.” Opposition, p. 5. But Mexichem neglects to note that the
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`Federal Rules of Evidence and discovery do not apply to reexamination
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`proceedings. See Merck & Cie v. Gnosis S.P.A., 820 F.3d 432, 435 (Fed. Cir.
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`2016) (“Once IPR is instituted, unlike in inter partes reexaminations, the Board
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`applies the Federal Rules of Evidence . . .”) As such, Patent Owner did not have
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`the opportunity to object to the authenticity of Exhibit 1040 in the earlier
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`proceeding.
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`Second, Mexichem fails to show that Exhibit 1040 is anything but
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`inadmissible hearsay under FRE 801-802. Mexichem argues that “the SNAP
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`SMRH:479263582.1
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`3
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`Petition is allowable under at least FRE 807” – the residual hearsay exception.
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`Opposition, p. 5. Exhibit 1040 does not satisfy the requirements of FRE 807,
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`including the requirement that a statement must be “more probative on the point
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`for which it is offered than any other evidence which the proponent can procure
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`through reasonable efforts.” Mexichem contends: “[t]he manufacturing expense
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`evidence provided in the SNAP Petition is offered to show what a PHOSITA at the
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`time of filing the ‘808 patent would know and take into consideration when
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`determining which refrigerant to use. This goes to the heart of the argument
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`that Honeywell did not fully consider the state of the art and surrounding
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`influences when providing its non-obviousness analysis.” Opposition, p. 5
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`(emphasis added). However, Mexichem neglects to consider that Exhibit 1040 is
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`dated April 27, 2012—eight years—after the priority date of the ’808 Patent.
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`Mexichem fails to show how a document that speculates about production costs of
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`two compounds, eight years after the ’808 Patent priority date, is more probative
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`than any other evidence about the state of the art, let alone that it “goes to the heart
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`of the argument that Honeywell did not fully consider the state of the art.”
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`Additionally, Exhibit 1040, which was first raised more than a year since the
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`petition for review was filed and several months since the Board instituted review,
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`was not provided with “reasonable notice” to provide Patent Owner “a fair
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`opportunity to meet it.” FRE 807(b).
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`SMRH:479263582.1
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`4
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`Third, Mexichem has not shown that Exhibit 1040 is relevant and admissible
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`under FRE 401/402, or that it would not confuse the issues and be a waste of time
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`under FRE 403. Petitioner again contends that “[t]he SNAP Petition was
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`submitted to directly refute Honeywell’s argument that it found ‘unexpected’
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`characteristics of the claimed compositions compared to the prior art.” Opposition,
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`p. 3. However, Mexichem’s Opposition again offers no supporting argument as to
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`how the cost of manufacturing R-134a or HFO-1234yf would have any relevance
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`as to whether the claimed compositions exhibit unexpected characteristics.
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`Additionally, Mexichem contends that Exhibit 1040 was submitted “to note
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`that the characteristics and costs of the new compounds are generally not better
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`than the known compounds, e.g. R-134a.” Opposition, p. 3. Specifically,
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`Mexichem argues that “[b]ut for the legislation/regulation lowering the allowable
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`GWP, there is zero economic reason to adopt HFC-1234yf over HFC-134a,
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`because HFC-134a is cheaper, more reliable, and less flammable than HFC-
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`1234yf. Movement to using HFC-1234yf in the industry is driven by regulation . .
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`.” Opposition, p. 6. Mexichem mischaracterizes Exhibit 1040. Nowhere is there
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`any discussion of HFC-134a being more reliable and less flammable than HFC-
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`1234f, let alone that movement to using HFC-1234yf was driven by regulation.
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`For the foregoing reasons, Patent Owner’s motion exclude should be
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`granted.
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`SMRH:479263582.1
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`5
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`Dated: September 19, 2016
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`Respectfully submitted,
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`By: /s/ Laura M. Burson
`Laura M. Burson
`Registration No. 40,929
`SHEPPARD, MULLIN, RICHTER &
`HAMPTON LLP
`333 South Hope Street, 43rd Floor
`Los Angeles, California 90071
`Tel: (213) 620-1780
`Fax: (213) 620-1398
`Email: lburson@sheppardmullin.com
`
`
`Lead Counsel for Patent Owner
`HONEYWELL INTERNATIONAL INC.
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`SMRH:479263582.1
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that the
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`foregoing PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
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`PATENT OWNER’S MOTION TO EXCLUDE UNDER 37 C.F.R. § 42.64(c),
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`was served on September 19, 2016, upon counsel of record for the Petitioner by
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`emailing a copy to IPR@rkmiplaw.com.
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`/Laura M. Burson/
`Laura M. Burson
`Registration No. 40,929
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`Lead Counsel for Patent Owner
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`SMRH:479263582.1
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`7
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