Trials@uspto.gov
`571-272-7822
`
`Paper 16
`Entered: March 31, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KAZ USA, INC.
`Petitioner,
`
`v.
`
`BRITA LP,
`Patent Owner.
`____________
`
`Case IPR2016-01893
`Patent 8,167,141 B2
`____________
`
`
`
`Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
`JO-ANNE M. KOKOSKI, and JEFFREY W. ABRAHAM, Administrative
`Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`Paper 16
`Entered: March 31, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KAZ USA, INC.
`Petitioner,
`
`v.
`
`BRITA LP,
`Patent Owner.
`____________
`
`Case IPR2016-01893
`Patent 8,167,141 B2
`____________
`
`
`
`Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
`JO-ANNE M. KOKOSKI, and JEFFREY W. ABRAHAM, Administrative
`Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2016-01893
`Patent 8,167,141 B2
`
`
`I. INTRODUCTION
`
`Kaz USA, Inc. (“Petitioner”) filed a Petition (“Pet.”) to institute an
`
`inter partes review of claims 1–24 of U.S. Patent No. 8,167,141 B2
`
`(“the ’141 patent,” Ex. 1001). Paper 1. Brita LP (“Patent Owner”) filed a
`
`Preliminary Response (“Prelim. Resp.”). Paper 14. We have jurisdiction
`
`under 35 U.S.C. § 314.
`
`Upon consideration of the Petition and Preliminary Response, we
`
`determine that Petitioner has not established a reasonable likelihood of
`
`prevailing with respect to the unpatentability of claims 1–24 of the ’141
`
`patent. Accordingly, we deny the Petition and do not institute an inter
`
`partes review.
`
`A.
`
`Related Proceedings
`
`Petitioner indicates that there are no related proceedings. Pet. 4.
`
`B.
`
`The ’141 Patent
`
`The ’141 patent, titled “Gravity Flow Filter,” is directed to gravity
`
`flow filtration systems with “carbon block and granular filters having rapid
`
`flow rates and excellent filtration performance.” Ex. 1001, 1:15–18. The
`
`described filters “meet a specific performance range of operation defined by
`
`filter volume, defined usage lifetime, average time of filtration, and/or lead
`
`reduction ability.” Id. at 25:5–9. The ’141 patent describes a factor that
`
`defines the performance range while accounting for all of these attributes,
`
`which it calls the Filter Rate and Performance (“FRAP”) Factor. Id. at
`
`25:14–17. The FRAP Factor is defined by the following formula:
`
`𝐹𝑅𝐴𝑃 =
`
`[𝑉 ∗ 𝑓 ∗ 𝑐e]
`[𝐿 ∗ 2]
`
`
`
`2
`
`Id. at 25:20–24.
`
`
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`IPR2016-01893
`Patent 8,167,141 B2
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`
`According to the ’141 patent, in preferred embodiments the filter
`
`media volume V “is less than about 300 cm3, and more preferably less than
`
`about 150 cm3” and the average filtration unit time f “is less than about 12
`
`minutes per liter, and more preferably less than about 6 minutes per liter.”
`
`Id. at 25:38–40, 43–45. The effluent lead concentration ce “is the amount of
`
`total lead (soluble and colloidal) remaining in the water after filtration for
`
`the last liter of water filtered in the defined filter lifetime” when the source
`
`water “is pH 8.5 water containing 150±15 ppb of total lead and with
`
`30±10% being colloidal lead greater than 0.1 µm in diameter.” Id. at 25:46–
`
`51. The filter usage lifetime L is “the total number of gallons that can be
`
`effectively filtered according to claims presented by the manufacturer or
`
`seller of the filter” in product packaging or advertising. Id. at 26:6–13.
`
`Filters having a FRAP Factor ranging from 0–350, and preferably less than
`
`about 200, are preferred. Id. at 25:17–19.
`
`The ’141 patent describes filters that “contain activated carbon that is
`
`bonded with a binder to form an integrated, porous, composite, carbon
`
`block,” and “at least one additional active material, such as ceramic or
`
`zeolite particles.” Id. at 13:22–27. “Preferred actives include lead
`
`scavengers, e.g., lead sorbents, or arsenic removal additives.” Id. at 15:39–
`
`40. The ’141 patent states that, “[f]or most portable gravity fed systems, a
`
`smaller size of the filter block is preferred,” such that it fits “within a
`
`container having a volume of less than about 24.4 in3 (400 cm3), and, more
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`preferably less than about 20 in3.” Id. at 17:23–28.
`
`3
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`
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`IPR2016-01893
`Patent 8,167,141 B2
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`C.
`
`Illustrative Claim
`
`Petitioner challenges claims 1–24 of the ’141 patent. Claim 1 is
`
`illustrative, and reads as follows:
`
`1.
`
`A gravity-fed water filter comprising:
`
`filter media including at least activated carbon and a lead
`scavenger;
`
`wherein the filter achieves a Filter Rate and Performance (FRAP)
`factor of about 350 or less according to the following
`formula:
`
`
`
`
`
`where:
`
`𝐹𝑅𝐴𝑃 =
`
`[𝑉 ∗ 𝑓 ∗ 𝑐e]
`[𝐿 ∗ 2]
`
`
`
`V = volume of the filter media (cm3),
`
`f = average filtration unit time over lifetime L (min/liter),
`
`ce = effluent lead concentration at end of lifetime L when source
`water having a pH of 8.5 contains 90–120 ppb (µg/liter)
`colloidal lead greater than 0.1 µm in diameter, and
`
`L = filter usage lifetime claimed by a manufacturer or seller of
`the filter (gallons).
`
`Ex. 1001, 34:6–26.
`
`D.
`
`The Prior Art
`
`Petitioner relies on the following prior art references:
`
`Reference
`
`Description
`
`Date
`
`Exhibit No.
`
`Cutler ’483 US 6,200,483 B1
`
`Mar. 13, 2001 1002
`
`Cutler ’875 US 6,405,875 B1
`
`June 18, 2002 1003
`
`Hughes
`
`US 6,524,477 B1
`
`Feb. 25, 2003
`
`1008
`
`Rinker
`
`US Pat. App. Pub. No.
`2006/0000763 A1
`Knipmeyer US Pat. App. Pub. No.
`2008/0110820 A1
`
`Jan. 5, 2006
`
`1004
`
`May 15, 2008 1009
`
`4
`
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`IPR2016-01893
`Patent 8,167,141 B2
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`
`Reference
`
`Description
`
`Date
`
`Exhibit No.
`
`Woodruff
`
`EP App. Pub. No. 0345381
`A2
`
`Dec. 13, 1989 1005
`
`
`
`E.
`
`The Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 1–24 on the following
`
`grounds:
`
`Reference(s)
`
`Basis
`
`Challenged Claim(s)
`
`Knipmeyer
`
`Cutler ’483
`
`Cutler ’483
`
`Cutler ’483, Cutler ’875,
`Rinker, and Admitted Prior
`Art
`Rinker
`
`§ 102(a)
`
`1–12, 16–19, 22–24
`
`§ 102(b)
`
`1–8, 11–19, 22, 23
`
`§ 103(a)
`
`1–8, 11–19, 22, 23
`
`§ 103(a)
`
`9, 10, 20, 21, 23, 24
`
`§ 102(b)
`
`1–12, 16–19, 22, 23
`
`Rinker and Woodruff
`
`§ 103(a)
`
`1–19, 22, 23
`
`Rinker and Cutler ’875
`
`§ 103(a)
`
`20, 21
`
`Rinker and Hughes
`
`§ 103(a)
`
`24
`
`
`
`A.
`
`Claim Interpretation
`
`II. ANALYSIS
`
`We interpret claims of an unexpired patent using the “broadest
`
`reasonable construction in light of the specification of the patent in which
`
`[the claims] appear[].” 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs.,
`
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Only those terms in
`
`controversy need to be construed, and only to the extent necessary to resolve
`
`the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`
`795, 803 (Fed. Cir. 1999).
`
`5
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`IPR2016-01893
`Patent 8,167,141 B2
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`
`Petitioner proposes constructions for the terms “Filter Rate and
`
`Performance (FRAP) factor” and “block.” Pet. 20–22. Patent Owner argues
`
`that “Petitioner’s proposed claim construction” of FRAP factor “should be
`
`rejected,” and does not address Petitioner’s proposed construction of
`
`“block.” Prelim. Resp. 5–7. For purposes of this Decision, based on the
`
`record before us, we determine that none of the claim terms requires an
`
`explicit construction.
`
`B.
`
`Priority of the Challenged Claims
`
`Petitioner contends that the subject matter of claims 1–12, 16–19, and
`
`22–24 is unpatentable under 35 U.S.C. § 102(a) as anticipated by
`
`Knipmeyer, and that the subject matter of claims 1–12, 16–19, 22, and 23 is
`
`unpatentable under 35 U.S.C. § 102(b) as anticipated by Rinker. Pet. 23–36,
`
`57–63. Petitioner also contends that the subject matter of claims 1–24 would
`
`have been obvious under 35 U.S.C. § 103(a) over the combined teachings of
`
`Rinker and Woodruff, Cutler ’875, or Hughes. Id. at 63–71.
`
`Knipmeyer is the publication of U.S. Patent Application Serial No.
`
`11/927,372 (“the ’372 Application,” Ex. 1016), filed on October 29, 2007, to
`
`which the ’141 patent claims priority as a continuation-in-part (U.S. Patent
`
`Application Serial No. 12/207,284 (“the ’284 Application,” Ex. 1014), filed
`
`on September 9, 2008).1 Id. at 11–12; Ex. 1001 at [63]; Ex. 1009 at [21],
`
`[22]. Rinker is the publication of U.S. Patent Application Serial No.
`
`10/881,517 (“the ’517 Application,” Ex.1020), filed on June 30, 2004, to
`
`which Knipmeyer claims priority as a continuation-in-part. Pet. 12;
`
`
`1 The ’284 Application is also a continuation-in-part of U.S. Patent
`Application Serial No. 11/858,765 (Ex. 1010), filed on September 20, 2007.
`Pet. 11–12; Ex. 1001 at [63].
`
`6
`
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`IPR2016-01893
`Patent 8,167,141 B2
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`Ex. 1001 at [63]; Ex. 1004 at [21], [22]; Ex. 1009 at [63]. The following
`
`diagram, provided in the Petition, illustrates the priority chain of the ’141
`
`patent:
`
`Pet. 13. Accordingly, Petitioner’s challenges based on Knipmeyer and
`
`Rinker are contingent on the ’141 patent not being entitled to claim priority
`
`to the ’372 Application and the ’517 Application. Id. at 11–20, 23–36, 57–
`
`
`
`71.
`
`Petitioner’s contentions are based solely on the FRAP factor
`
`limitation of the challenged claims. Specifically, Petitioner argues that
`
`“none of the earlier filed applications provide written description support
`
`that reasonably conveys to a” person having ordinary skill in the art that the
`
`inventors “of the ’141 patent had, at the time the earlier applications were
`
`filed, possession of at least the FRAP factor or its very specific formulaic
`
`7
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`IPR2016-01893
`Patent 8,167,141 B2
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`relationship between the variables contained therein.” Pet. 19 (citing
`
`Ex. 1012 ¶¶ 57–59).
`
`“It is elementary patent law that a patent application is entitled to the
`
`benefit of the filing date of an earlier filed application only if the disclosure
`
`of the earlier application provides support for the claims of the later
`
`application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile
`
`USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (citations omitted); see also
`
`Research Corps. Techs. v. Microsoft Corp., 627 F.3d 859, 871–72 (Fed. Cir.
`
`2010) (holding the later-filed application, with claims that were not limited
`
`to a “blue noise mask,” was not entitled to the priority filing date of the
`
`parent application, which was “limited to a blue noise mask”); ICU Med.,
`
`Inc. v. Alaris Med. Sys., 558 F.3d 1368, 1377–78 (Fed. Cir. 2009) (holding
`
`that “spikeless” claims “added years later during prosecution” were not
`
`supported by the specification which “describe[d] only medical valves with
`
`spikes”); Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158–60 (Fed. Cir. 1998)
`
`(holding the generic shaped cup claims of the later-filed child application
`
`were not entitled to the filing date of the parent application that “disclosed
`
`only a trapezoidal cup and nothing more”). “To satisfy the written
`
`description requirement the disclosure of the prior application must convey
`
`with reasonable clarity to those skilled in the art that, as of the filing date
`
`sought, [the inventor] was in possession of the invention.” PowerOasis, 522
`
`F.3d at 1306 (citations omitted). The sufficiency of written description
`
`support is based on “an objective inquiry into the four corners of the
`
`specification from the perspective of a person of ordinary skill in the art.”
`
`Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
`
`8
`
`(en banc).
`
`
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`IPR2016-01893
`Patent 8,167,141 B2
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`A patent specification may inherently contain a disclosure sufficient
`
`to meet the written description requirement if “the missing descriptive
`
`matter must necessarily be present in the parent application’s specification
`
`such that one skilled in the art would recognize such a disclosure.” Tronzo,
`
`156 F.3d at 1159. When matter added in a continuation-in-part application
`
`“is deemed inherent in whatever the original, parent application discloses,” it
`
`is “entitled to the filing date of the original, parent application.” Litton Sys.,
`
`Inc. v. Whirlpool Corp., 728 F.2d 1423, 1438 (Fed. Cir. 1984). Thus, “the
`
`later explicit description of an inherent property does not deprive the product
`
`of the benefit of the filing date of the earlier application.” Therma-Tru
`
`Corp. v. Peachtree Doors, Inc., 44 F.3d 988, 993 (Fed. Cir. 1995) (citing
`
`Kennecott Corp. v. Kyocera Int’l, Inc., 835 F.2d 1419, 1423 (Fed. Cir.
`
`1987)).
`
`Petitioner has the burden to persuade us that Knipmeyer and Rinker
`
`are invalidating prior art. We make our decisions on institution based on
`
`whether the information presented in the Petition and the Patent Owner’s
`
`Preliminary Response “shows that there is a reasonable likelihood that the
`
`petitioner would prevail with respect to at least 1 of the claims challenged in
`
`the petition.” 35 U.S.C. § 314(a). “In an inter partes review, the burden of
`
`persuasion is on the petitioner to prove ‘unpatentability by a preponderance
`
`of the evidence,’ . . . and that burden never shifts to the patentee.” Dynamic
`
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`
`2015) (quoting 35 U.S.C. § 316(e)). The burden of production can shift to
`
`the patent owner, however. See id. at 1379. This shift happens where it is
`
`“warranted because the patentee affirmatively seeks to establish a
`
`proposition not relied on by the patent challenger and not a necessary
`
`9
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`IPR2016-01893
`Patent 8,167,141 B2
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`predicate for the unpatentability claim asserted—effectively an affirmative
`
`defense.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed.
`
`Cir. 2016). Here, Petitioner asserts that Knipmeyer discloses each limitation
`
`of claims 1–12, 16–19, and 22–24, and Rinker discloses each limitation of
`
`claims 1–24 (either alone or in combination with Woodruff, Cutler ’875, or
`
`Hughes), and the ’372 Application and the ’517 Application do not provide
`
`written description support for those same claims, as evidenced by the
`
`disclosures of Knipmeyer and Rinker. Thus, Petitioner has the burden of
`
`persuasion, based on all of the evidence, on both of these assertions. See
`
`Dynamic Drinkware, 800 F.3d at 1378.
`
`Petitioner contends that the “FRAP factor is merely a performance
`
`factor that accounts for various properties and/or characteristics of a tested
`
`water filter.” Pet. 19 (citing Ex. 1001, 25:5–9, 14–34, Figures 21–23).
`
`Petitioner contends that neither Knipmeyer nor Rinker discloses the FRAP
`
`factor, which, according to Petitioner, first appeared in the ’284 Application.
`
`Id. at 14–15. Petitioner notes that the ’141 patent issued from the ’284
`
`Application without any Office Actions on the merits, and that the Examiner
`
`stated that claim 1 was allowed “because the prior art of record does not
`
`show or suggest a gravity-fed water filter achieving a Filter Rate and
`
`Performance (FRAP) factor of about 350 or less according to the formula:
`
`FRAP = [v*f*ce]/[L*2], in combination with the remaining limitations in the
`
`claim.” Id. at 16–17 (quoting Ex. 1014, 713–14).
`
`Patent Owner argues that “[i]f Knipmeyer and Rinker contain an
`
`inherent disclosure of gravity-fed water filters with the properties
`
`characterized by the claimed FRAP factor as Petitioner contends, then
`
`controlling precedent mandates that the ’141 patent is entitled to claim
`
`10
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`IPR2016-01893
`Patent 8,167,141 B2
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`priority at least to the earliest filing date of Knipmeyer and Rinker.” Prelim.
`
`Resp. 2–3 (citing Kennecott, 835 F.2d at 1423). In particular, Patent Owner
`
`points to Petitioner’s argument that “Knipmeyer anticipates certain claims of
`
`the ’141 patent because Knipmeyer ‘discloses all of the structural or
`
`compositional limitations recited within’” claims 1–12, 16–19, and 22–24
`
`and “discloses at least one filter that achieves the claimed FRAP factor,” and
`
`that Rinker also discloses “all the structural and compositional limitations”
`
`of claims 1–12, 16–19, 22, and 23, as well as “at least one filter that achieves
`
`the claimed FRAP factor.” Id. at 9–10 (quoting Pet. 23–24, 59–60).
`
`1.
`
`Knipmeyer
`
`Claim 1 of the ’141 patent requires that the gravity-fed water filter
`
`comprises filter media that includes at least activated carbon and a lead
`
`scavenger, and achieves a FRAP factor of about 350 or less according to the
`
`defined mathematical formula. Ex. 1001, 34:6–26. As Petitioner notes,
`
`Knipmeyer (and, thus, the ’372 Application) discloses gravity-fed water
`
`filters that include activated carbon and a lead scavenger. Pet. 24 (citing
`
`Ex. 1009 ¶¶ 167, 179). Petitioner further points to Knipmeyer’s Table XIII,
`
`which discloses filter volume V, average filtration unit time f, effluent lead
`
`concentration ce, and filter usage lifetime L, and notes that V, f, ce, and L
`
`have the same definitions in Knipmeyer and the ’141 patent. Id. at 25–27
`
`(citing Ex. 1009 ¶¶ 135, 182–185, Table XIII). Petitioner states that “the
`
`FRAP factor is an inherent property of a filter,” and that “each variable of
`
`the FRAP factor is either explicitly disclosed by Knipmeyer or can be
`
`calculated from the physical dimensions and performance values
`
`corresponding to the water filters disclosed by Knipmeyer.” Id. at 28.
`
`Petitioner also provides the Declaration of Michael D. Mitchell (“the
`
`11
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`IPR2016-01893
`Patent 8,167,141 B2
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`Mitchell Declaration,” Ex. 1012), in which Mr. Mitchell testifies that filter
`
`formulation FA1-1 disclosed in Knipmeyer’s Table XIII has a FRAP factor
`
`of 30.1, which is within the FRAP factor limitation of claim 1 of the ’141
`
`patent. Ex. 1012 ¶¶ 85–87.
`
`We also note that Knipmeyer teaches that: (1) the filter volume V is
`
`preferably less than 300 cm3, and more preferably less than 160 cm3 (Ex.
`
`1009 ¶ 133); (2) the average filtration time f in preferred embodiments is
`
`less than about 12 minutes per liter, and more preferably less than about 6
`
`minutes per liter (id. ¶ 134); and (3) the disclosed embodiments “are unique
`
`in their ability to reduce the total lead concentration in a final liter of effluent
`
`water to less than about 10 µg/liter after approximately 151 liters (40
`
`gallons) of filtration of the lead challenge source water” (id. ¶ 167). These
`
`values are the same as those set forth for the preferred embodiments
`
`described in the ’141 patent that have a FRAP factor of about 350 or less as
`
`required by claim 1. See Ex. 1001, 25:37–39 (“In preferred embodiments,
`
`the volume of the filter media (V) is less than about 300 cm3, and more
`
`preferably less than about 150 cm3.”), 42–45 (“In preferred embodiments,
`
`the average filtration unit time (f) is less than about 12 minutes per liter, and
`
`more preferably less than about 6 minutes per liter.”), 27:3–6 (“Preferably, a
`
`lead concentration in a final liter of effluent water filtered by the filter is less
`
`than about 10 µg/liter after approximately 151 liters (40 gallons) of source
`
`water filtration.”). Furthermore, Knipmeyer and the ’141 patent set forth
`
`identical definitions of “filter performance” for the purposes of the
`
`inventions described therein. Compare Ex. 1009 ¶¶ 57–62 with Ex. 1001,
`
`10:58–11:13.
`
`12
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`IPR2016-01893
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`Upon review of Knipmeyer’s disclosure, we are not persuaded that the
`
`FRAP factor limitation recited in the challenged claims lacks written
`
`description support in the ’372 Application. The product in the ’372
`
`Application (as evidenced by Knipmeyer) is the same as the product in the
`
`’141 patent claims, and has the same structure and properties. The
`
`description of the FRAP factor in the ’141 patent is a disclosure of an
`
`inherent property of the product disclosed in the ’372 Application, and, thus,
`
`the inclusion of the FRAP factor in the ’141 patent claims does not deprive
`
`that product of the benefit of the ’372 Application’s October 27, 2007 filing
`
`date. See Kennecott Corp., 835 F.2d at 1423.
`
`2.
`
`Rinker
`
`Patent Owner points to Petitioner’s argument that Rinker anticipates
`
`the challenged claims as evidence that Rinker (and, thus, the ’517
`
`Application) sufficiently discloses the FRAP factor such that the ’141 patent
`
`is entitled to claim priority to the filing date of the ’517 Application. Prelim.
`
`Resp. 9–10. According to Patent Owner, “if the Board credits Petitioner’s
`
`argument that” Rinker discloses “filters that achieve the FRAP factor, then
`
`the ’141 patent claims can rightfully claim priority benefit to” Rinker’s filing
`
`date. Id. at 10.
`
`We are not persuaded that Rinker inherently discloses the FRAP
`
`factor claimed in the ’141 patent. Relying on Mr. Mitchell’s testimony,
`
`Petitioner contends that Example 5 in Rinker discloses an effluent lead
`
`concentration ce of 1.5 µg/L. Pet. 59 (citing Ex. 1012 ¶¶ 279–284).
`
`Mr. Mitchell testifies that Rinker discloses “‘[t]he filters were then tested in
`
`a carafe system in accordance with the NSF standards 42 and 53” for lead at
`
`pH 8.5, and that “[s]ource water with such a pH level (8.5) would contain
`
`13
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`IPR2016-01893
`Patent 8,167,141 B2
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`both soluble and colloidal lead.” Ex. 1012 ¶¶ 280–281 (quoting Ex. 1004
`
`¶ 111). Neither Petitioner nor Mr. Mitchell, however, sufficiently
`
`demonstrates that the source water having a pH of 8.5 “contains 90–120 ppb
`
`(µg/liter) soluble lead and 30–60 ppb (µg/liter) colloidal lead greater than
`
`0.1 µm in diameter” as is required by claim 1. That the source water “would
`
`contain both soluble and colloidal lead” is not enough to meet the burden of
`
`showing that it invariably contains 90–120 ppb (µg/liter) soluble lead and
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`30–60 ppb (µg/liter) colloidal lead greater than 0.1 µm in diameter, as is
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`required to establish inherent anticipation of the effluent lead concentration,
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`and thus the FRAP factor, limitation of claim 1. See In re Montgomery, 677
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`F.3d 1375, 1379–80 (Fed. Cir. 2012) (“A reference may anticipate
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`inherently if a claim limitation that is not expressly disclosed ‘is necessarily
`
`present, or inherent, in the single anticipating reference.’” (quoting Verizon
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`Servs. Corp. v. Fibernet Va., Inc., 602 F.3d 1325, 1336 (Fed. Cir. 2010))).
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`Upon review of the Rinker disclosure, we are persuaded that the
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`FRAP factor limitation recited in the challenged claims lacks written
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`description support in the ’517 Application. Rinker does not expressly or
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`inherently disclose an effluent lead concentration ce in accordance with the
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`limitation recited in claim 1 of the ’141 patent, and, therefore, the product in
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`the ’517 Application (as evidenced by Rinker) does not have the same
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`properties as the filters claimed in the ’141 patent. Because we are not
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`persuaded that the FRAP factor in the ’141 patent claims is an inherent
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`property of the product described in the ’517 Application, Petitioner has
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`established a reasonable likelihood that it would prevail in showing that the
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`challenged claims in the ’141 patent are not entitled to the benefit of the
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`’517 Application’s filing date.
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`IPR2016-01893
`Patent 8,167,141 B2
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`C.
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`Anticipation by Knipmeyer
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`Based on the arguments and evidence in the Petition and the
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`Preliminary Response, and the evidence of record, we are not persuaded that
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`Knipmeyer is prior art to the ’141 patent. Therefore, we determine that
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`Petitioner has not demonstrated a reasonable likelihood that the subject
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`matter of claims 1–12, 16–19, and 22–24 is unpatentable as anticipated by
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`Knipmeyer.
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`D.
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`Anticipation by Cutler ’483
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`Petitioner contends that the subject matter of claims 1–8, 11–19, 22,
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`and 23 is unpatentable under 35 U.S.C. § 102(b) as anticipated by Cutler
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`’483. Pet. 36–44. Petitioner provides claim charts and relies on the Mitchell
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`Declaration in support of its contentions. Id.
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`1.
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`Overview of Cutler ’483
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`Cutler ’483 is directed to “monolithic structures for removing
`
`contaminants from liquid streams using inorganic purifying agents.”
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`Ex. 1002, 1:8–10. Cutler ’483 describes structured materials that “are in the
`
`form of a cellular monolith having an inlet end and an outlet end, the cells
`
`running the length of the monolith from inlet end to outlet,” wherein the
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`“cells have porous walls through which a liquid stream can pass.” Id. at
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`2:32–36. The structured materials “are suitable for purification of water
`
`containing ionexchangeable [sic] materials,” including lead. Id. at 2:39–42.
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`Cutler ’483 teaches that the invention can be practiced by contacting a
`
`multicellular substrate with the active material by washcoating a slurry of
`
`active materials onto the substrate, or by “directly form[ing] the active
`
`material into monolithic articles, e.g.[,] by extrusion, pressing, molding, or
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`other forming processes.” Id. at 3:25–33. “Carbon substrates, made by
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`15
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`IPR2016-01893
`Patent 8,167,141 B2
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`methods known in the art of shaping carbon powders or carbon precursors to
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`eventually be carbonized and activated to form activated carbon” can be
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`used as substrates for coating applications. Id. at 4:21–24. Cutler ’483
`
`identifies Y-zeolite, gamma alumina, and titanium silicate as purifying
`
`agents “that are especially suited for lead removal.” Id. at 3:23–24.
`
`Cutler ’483 states that washcoating gamma alumina or amorphous
`
`titanium silicates onto a carbon-impregnated cordierite honeycomb is “very
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`effective for lead removal.” Id. at 6:7–13. Cutler ’483 also describes
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`examples of carbon-impregnated honeycomb washcoated with gamma
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`alumina that, when evaluated by flowing lead-spiked water of about 150
`
`ppm at pH of 6.5 and 8.5 at a rate of 150 ml/min, demonstrated that the lead
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`removal efficiency “was 97% in the beginning and remained at 97% after
`
`135 liters of water passed through.” Id. at 9:47–61.
`
`2.
`
`Analysis
`
`Petitioner contends that “Cutler ’483 discloses all of the structural or
`
`compositional limitations” recited in claim 1. Pet. 37. For example,
`
`Petitioner contends that Cutler ’483 discloses volume (V), average filtration
`
`unit time (f), effluent lead concentration (ce), and filter usage lifetime (L)
`
`values “within the ’141 Patent’s disclosed ranges for those variables.” Id. at
`
`38 (citing Ex. 1012 ¶¶ 143–151, 158). Petitioner contends that “using these
`
`variables (V), (f), (ce), and (L), the FRAP factor for the Cutler ’483 filter is
`
`10.83” and, therefore, Cutler ’483 “set[s] forth the identical or substantially
`
`identical filter structure as recited” in claim 1. Id. (citing Ex. 1012 ¶ 159).
`
`Patent Owner argues that Petitioner does not establish that the Cutler
`
`’483 filter necessarily meets the “effluent lead concentration at end of
`
`lifetime L when source water having a pH of 6.5 contains 90–120 ppb
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`(µg/liter) soluble lead and 30–60 ppb (µg/liter) colloidal lead greater than
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`0.1 µm in diameter” limitation of claim 1. Prelim. Resp. 22–25.
`
`Specifically, Patent Owner argues that Petitioner “relies solely on
`
`unsupported declarant testimony that ‘the source water used to test the filters
`
`of Cutler ’483 . . . would likely contain the same or substantially the same
`
`parameters of (ce) as recited in the FRAP factor.’” Id. at 24 (quoting
`
`Ex. 1012 ¶ 147).
`
`We agree with Patent Owner. Inherent anticipation applies when the
`
`missing element is necessarily present in the recited reference. See
`
`Montgomery, 677 F.3d at 1379–80. We are not persuaded that Petitioner has
`
`established that Cutler ’483 teaches the “effluent lead concentration at end of
`
`lifetime L” limitation recited in claim 1. Mr. Mitchell concedes that “Cutler
`
`’483 does not explicitly disclose the exact source water parameters that
`
`define (ce) (e.g., percentage of colloidal lead and diameter of such colloidal
`
`lead) of the FRAP factor,” and opines that “the source water used to test the
`
`filters of Cutler ’483 in accordance with NSF 53 would likely contain the
`
`same or substantially the same parameters of (ce) as recited in the FRAP
`
`factor.” Ex. 1012 ¶ 147 (emphasis added). According to Mr. Mitchell, a
`
`person having ordinary skill in the art would recognize that lead-spiked
`
`“source water at a pH of 8.5, as tested in EXAMPLE 7a in Cutler ’483,
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`would necessarily contain both soluble lead and at least some percentage of
`
`colloidal lead.” Id. ¶ 149. Neither Mr. Mitchell nor Petitioner sufficiently
`
`demonstrates, however, that the amount of soluble lead and colloidal lead in
`
`the lead-spiked source water in Cutler ’483’s Example 7a is invariably and
`
`necessarily within the claimed parameters (90–120 ppb (µg/liter) soluble
`
`lead and 30–60 ppb (µg/liter) colloidal lead greater than 0.1 µm in
`
`17
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`IPR2016-01893
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`diameter). See Ex. 1012 ¶¶ 147–150; Pet. 38. That it is likely that the
`
`source water used in Cutler ’483 meets the effluent lead concentration
`
`limitation (and, thus the FRAP factor limitation) of claim 1 is not enough to
`
`meet the burden of showing that it invariably does, as is required to establish
`
`inherent anticipation.
`
`For these reasons, we conclude that Petitioner has not demonstrated a
`
`reasonable likelihood that claim 1, and claims 2–8, 11–19, 22, and 23 that
`
`depend, directly or indirectly, therefrom, are anticipated by Cutler ’483.
`
`E.
`
`Obviousness over Cutler ’483
`
`Petitioner contends that, “[i]nsofar as Cutler ’483 does not explicitly
`
`teach any limitations of claims 1–8, 11–19, or 22–23, such limitations would
`
`be obvious to a [person having ordinary skill in the art] in view of Cutler
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`’483.” Pet. 44. Specifically, Petitioner argues that a person having ordinary
`
`skill in the art
`
`would have been motivated to test the Cutler ’483 filter for lead
`removal using a source water having a pH of 8.5 contain[ing] 90–
`120 ppb (µg/liter) soluble lead and 30–60 ppb (µg/liter) colloidal
`lead greater than 0.1 µm in diameter as defined by the new
`NSF/ANSI standard 53 to determine the filter’s lead removal rate
`(ce) under the standard as recited in the claims.
`
`Id. at 44–45 (citing Ex. 1012 ¶¶ 209–213). Petitioner further argues that a
`
`person having ordinary skill in the art “would have been motivated to adjust
`
`the amounts of activated carbon and lead scavenger in Cutler ’483’s filter as
`
`well as the filter’s other properties such as (V), (f), and (L) to achieve a (ce)
`
`that meets the NSF/ANSI standard 53 (2007), and, thus, a FRAP factor as
`
`claimed.” Id. at 45 (citing Ex. 1012 ¶ 211). Patent Owner responds that
`
`Petitioner “do[es] not offer an articulated reason why a [person having
`
`ordinary skill in the art] would have had a reasonable expectation of success
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`IPR2016-01893
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`in modifying Cutler ’483 to arrive at the claimed invention.” Prelim. Resp.
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`27.
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`We are not persuaded by Petitioner’s arguments. Although Petitioner
`
`contends that a person having ordinary skill in the art would have been
`
`motivated to test the filter disclosed in Cutler ’483 using source water that
`
`meets the claimed parameters, it does not provide sufficient explanation as
`
`to why the skilled artisan would have wanted to determine the Cutler ’483
`
`filter’s lead removal rate using those parameters. Moreover, neither
`
`Petitioner nor Mr. Mitchell provides any evidence or explanation to support
`
`the contention that a person having ordinary skill in the art would have been
`
`motivated to adjust the amounts of activated carbon and lead scavenger in
`
`the Cutler ’483 filter (and the filter’s volume V, average filtration time f, and
`
`filter usage lifetime L) to achieve the claimed effluent lead concentration ce,
`
`and, thus, the claimed FRAP factor. See Pet. 44–45; Ex. 1012 ¶¶ 211–212
`
`(repeating Petitioner’s argument without supporting explanation or
`
`evidence).
`
`A showing of obviousness must be supported by an articulated
`
`reasoning with rational underpinning to support a motivation to modify the
`
`prior art teachings. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
`
`(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections based
`
`on obviousness grounds cannot be sustained by mere conclusory statements;
`
`instead, there must be some articulated reasoning with rational underpinning
`
`to support the legal conclusion of obviousness.”)). Petitioner asserts that a
`
`person having ordinary skill in the art would have been motivated to modify
`
`Cutler ’483 to achieve the claimed FRAP factor. Pet. 44–45. Petitioner,
`
`however, does not provide sufficient explanation as to why a person having
`
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`IPR2016-01893
`Patent 8,167,141 B2
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`ordinary skill in the art would have wanted to provide a filter with the
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`claimed FRAP factor. In an obviousness determination, we must av
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