throbber
Trials@uspto.gov
`571-272-7822
`
`Paper No. 11
`Entered: March 31, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BAKER HUGHES INCORPORATED,
`Petitioner,
`
`v.
`
`LIQUIDPOWER SPECIALTY PRODUCTS INC.
`(f/k/a/ LUBRIZOL SPECIALTY PRODUCTS, INC.),1
`Patent Owner.
`____________
`
`Case IPR2016-01903
`Patent 8,426,498 B2
`____________
`
`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`1 Patent Owner represents that its name has changed from Lubrizol Specialty
`Products, Inc. to LiquidPower Specialty Products Inc., and that LiquidPower
`Specialty Products Inc. is the owner of U.S. Patent No. 8,426,498 B2 by
`assignment, holding all rights, title, and interest to that patent. Paper 9, 2.
`Accordingly, we modify the original case caption to reflect that change.
`
`

`

`IPR2016-01903
`Patent 8,426,498 B2
`
`
`I.
`
`INTRODUCTION
`
`
`
`Baker Hughes Incorporated (“Petitioner”) requests an inter partes
`
`review of claims 1–5 of U.S. Patent No. 8,426,498 B2 (“the ’498 patent,”
`
`Ex. 1002). Paper 2 (“Pet.”). LiquidPower Specialty Products Inc. (f/k/a/
`
`Lubrizol Specialty Products, Inc.) (“Patent Owner”) filed a Preliminary
`
`Response. Paper 10 (“Prelim. Resp.”). We have jurisdiction under 35
`
`U.S.C. § 314, which provides that an inter partes review may not be
`
`instituted “unless . . . there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.” Applying that standard, and upon consideration of the information
`
`presented in the Petition and the Preliminary Response, we institute an inter
`
`partes review of claims 1–5.
`
`A. Related Proceedings
`
`Petitioner identifies the following pending litigation involving the
`
`’498 patent: Lubrizol Specialty Products, Inc. v. Baker Hughes Inc.,
`
`No. 4:15-cv-02915 (S.D. Tex.). Pet. 2. Petitioner also identifies U.S. Patent
`
`Application No. 13/209,119, filed on August 12, 2011, as pending (Notice of
`
`Allowance issued, Sept. 20, 2016), and represents that the ’119 application
`
`claims benefit to, and is a continuation in part of, U.S. Patent Application
`
`No. 11/615,539 (now U.S. Patent No. 8,022,118, “the ’118 patent”) to which
`
`the ’498 patent claims priority. Id. at 3.
`
`Concurrently with the Petition in this proceeding, Petitioner filed
`
`petitions requesting an inter partes review of three patents related to the
`
`’498 patent: the ’118 patent (IPR2016-01896); U.S. Patent No. 8,450,249
`
`B2 (Case IPR2016-01901); and U.S. Patent No. 8,450,250 B2 (Case
`
`IPR2016-01905). See Pet. 2; Paper 9, 3. Petitioner also filed an earlier
`
`
`
`2
`
`

`

`IPR2016-01903
`Patent 8,426,498 B2
`
`Petition requesting an inter partes review of the ’118 patent. Baker Hughes
`
`Inc. v. Lubrizol Specialty Prods., Inc., Case IPR2016-00734 (“734 IPR”),
`
`Paper 2. We instituted a review in the 734 IPR on October 4, 2016. 734
`
`IPR, Paper 9.
`
`B. The ’498 Patent
`
`The ’498 patent, titled “Drag reduction of asphaltenic crude oils,”
`
`issued on April 23, 2013. The ’498 patent relates to a “method of
`
`introducing a drag reducing polymer into a pipeline such that the friction
`
`loss associated with the turbulent flow though [sic] the pipeline is reduced
`
`by suppressing the growth of turbulent eddies,” in which the “drag reducing
`
`polymer is introduced into a liquid hydrocarbon having an asphaltene
`
`content of at least 3 weight percent and/or an API gravity of less than about
`
`26° to thereby produce a treated liquid hydrocarbon.” Ex. 1002, Abstract.
`
`According to the specification, “[w]hen fluids are transported by a
`
`pipeline, there is typically a drop in fluid pressure due to the friction
`
`between the wall of the pipeline and the fluid.” Id. at 1:20–22. The pressure
`
`drop increases with increasing flow rate, resulting in energy losses and
`
`inefficiencies that increase equipment and operation costs. Id. at 1:24–31.
`
`The problems associated with pressure drop are most acute when fluids are
`
`transported over long distances. Id. at 1:29–31.
`
`Before the ’498 patent, it was known to use drag reducing polymers in
`
`the fluid flowing through a pipeline to alleviate the problems resulting from
`
`pressure drop. Id. at 1:33–35. A drag reducing polymer “is a composition
`
`capable of substantially reducing friction loss associated with the turbulent
`
`flow of a fluid through a pipeline” and such a composition works by
`
`“suppress[ing] the growth of turbulent eddies, which results in higher flow
`
`
`
`3
`
`

`

`IPR2016-01903
`Patent 8,426,498 B2
`
`rate at a constant pumping pressure.” Id. at 1:37–42. Drag reduction
`
`generally “depends in part upon the molecular weight of the polymer
`
`additive and its ability to dissolve in the hydrocarbon under turbulent flow.”
`
`Id. at 1:44–46.
`
`According to the specification, because conventional drag reducing
`
`polymers do not perform well in crude oils having a low API gravity2 and/or
`
`a high asphaltene content (i.e., heavy crude oils), there exists a need for
`
`improved drag reducing polymers capable of reducing the pressure drop
`
`associated with the turbulent flow of heavy crude oils through pipelines. Id.
`
`at 1:49–54. The subject matter of the disclosed invention, therefore, “relates
`
`generally to high molecular weight drag reducers for use in crude oils.” Id.
`
`at 1:15–16. More specifically, the ’498 patent discloses a method for
`
`reducing the pressure drop associated with flowing a liquid hydrocarbon
`
`through a conduit, such as a pipeline. Id. at 2:48–50. The method comprises
`
`introducing a drag reducing polymer into a liquid hydrocarbon having an
`
`asphaltene content of at least 3 weight percent and/or an API gravity of less
`
`than about 26° (i.e., heavy crude oil) to produce a treated liquid hydrocarbon
`
`wherein the viscosity is not less than the viscosity of the liquid hydrocarbon
`
`prior to treatment with the drag reducing polymer. Id. at 19:2–12. The ’498
`
`patent provides several examples of suitable heavy crude oils and blended
`
`heavy crude oils. Id. at 4:25–34, Table 1.
`
`The specification further explains that, “[i]n order for the drag
`
`reducing polymer to function as a drag reducer, the polymer should dissolve
`
`
`2 The specification defines API gravity as “the specific gravity scale
`developed by the American Petroleum Institute for measuring the relative
`density of various petroleum liquids.” Id. at 3:50–54.
`
`
`
`4
`
`

`

`IPR2016-01903
`Patent 8,426,498 B2
`
`or be substantially solvated in the liquid hydrocarbon.” Id. at 11:18–20.
`
`The liquid hydrocarbon and the drag reducing polymer, therefore, have
`
`solubility parameters that can be determined according to known methods.
`
`Id. at 4:9–22 (setting forth known methods for determining the solubility
`
`parameter of the liquid hydrocarbon), 11:26–67 (setting forth known
`
`methods for determining the solubility parameter of the drag reducing
`
`polymer).
`
`C. Illustrative Claim
`
`
`
`Claims 1, 3, and 5 are independent claims of the ’498 patent. Claim 1
`
`is illustrative of the challenged claims and recites:
`
`1.
`
`A method comprising:
`
`introducing a drag reducing polymer, into a pipeline, such that
`the friction loss associated with the turbulent flow through the
`pipeline is reduced by suppressing the growth of turbulent
`eddies, into a liquid hydrocarbon having an asphaltene content
`of at least 3 weight percent and/or an API gravity of less than
`about 26° to thereby produce a treated liquid hydrocarbon
`wherein the viscosity of the treated liquid hydrocarbon is not
`less than the viscosity of the liquid hydrocarbon prior to
`treatment with the drag reducing polymer; and
`
`wherein a plurality of the repeating units comprise a
`heteroatom.
`
`Ex. 1002, 19:2–14.
`
`
`
`D. Proposed Grounds of Unpatentability
`
`Petitioner asserts that the challenged claims of the ’498 patent are
`
`unpatentable based upon the following grounds:
`
`
`
`5
`
`

`

`IPR2016-01903
`Patent 8,426,498 B2
`
`
`Reference(s)
`
`Statutory Basis Claims Challenged
`
`Holtmyer Publication,3 Holtmyer
`Patent,4 and Carnahan5
`Inaoka6 and Carnahan
`
`§ 103(a)
`
`§ 103(a)
`
`1–5
`
`1–5
`
`Holtmyer Publication
`
`§ 102(b)
`
`1, 2, 4, 5
`
`The Petition is supported by the Declaration of Thomas H. Epps, III,
`
`
`
`Ph.D. (Ex. 1041).
`
`II. ANALYSIS
`
`We address below whether the Petition meets the threshold showing
`
`for institution of an inter partes review under 35 U.S.C. § 314(a). We
`
`consider each ground of unpatentability in view of the understanding of a
`
`person of ordinary skill in the art. Petitioner’s declarant, Dr. Epps, testifies
`
`that a person of ordinary skill in the art would have had familiarity with
`
`basic principles related to polymers and polymer synthesis, including
`
`chemical composition of monomers and polymers, common types of
`
`polymerization processes, types of polymerization catalysts, and solubility
`
`properties of polymers. Ex. 1041 ¶ 18. The ordinarily skilled artisan,
`
`according to Dr. Epps, also would have been aware of and consulted
`
`
`3 Marlin D. Holtmyer & Jiten Chatterji, Study of Oil Soluble Polymers as
`Drag Reducers, 20 POLYMER ENGINEERING & SCI. 473, 473–77 (1980)
`(“Holtmyer Publication”) (Ex. 1005).
`4 U.S. Patent No. 3,758,406, issued September 11, 1973 (“Holtmyer Patent”)
`(Ex. 1006).
`5 Norman F. Carnahan, Precipitation of Asphaltenes in Heavy Oil & Tar
`Sands, in 40B DEVELOPMENTS IN PETROLEUM SCI., ASPHALTENES AND
`ASPHALTS, 2 319–33 (Teh Fu Yen & George V. Chilingarian eds., 2000)
`(“Carnahan”) (Ex. 1008).
`6 European Pat. App. No. EP 0,882,739 A2, published December 9, 1998
`(“Inaoka”) (Ex. 1007).
`
`
`
`6
`
`

`

`IPR2016-01903
`Patent 8,426,498 B2
`
`technical publications directed to the physical and chemical properties of
`
`drag reducing polymers and the study of polymer flow properties in solution,
`
`and utilized the techniques in those publications to determine properties such
`
`as the solubility parameters of polymers. Id. ¶¶ 19–20 (citing Ex. 1014–
`
`1016). Moreover, such a person typically would have had a Bachelor of
`
`Science degree in chemical engineering, polymer science and engineering,
`
`or a closely related field and at least two years of work experience or further
`
`academic experience with drag reducing polymers or polymer flow
`
`properties in solution for any fluid. Id. ¶ 22.
`
`Patent Owner does not provide a definition or testimony regarding the
`
`level of ordinary skill in the art. At this stage of the proceeding, we find that
`
`the prior art itself is sufficient to demonstrate the level of ordinary skill in
`
`the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d
`
`1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level
`
`of ordinary skill in art).
`
`A. Claim Construction
`
`
`
`The Board interprets claims in an unexpired patent using the “broadest
`
`reasonable construction in light of the specification of the patent.” 37 C.F.R.
`
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`
`(2016). Under that standard, claim terms are given their ordinary and
`
`customary meaning in view of the specification, as would be understood by
`
`one of ordinary skill in the art at the time of the invention. In re Translogic
`
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions
`
`for claim terms must be set forth with reasonable clarity, deliberateness, and
`
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Only those
`
`terms which are in controversy need be construed, and only to the extent
`
`
`
`7
`
`

`

`IPR2016-01903
`Patent 8,426,498 B2
`
`necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`Petitioner submits that we need not construe any claim term for
`
`purposes of this decision. Pet. 14. Patent Owner proposes that we construe
`
`the term “asphaltene” and the phrase “asphaltene content of at least 3 weight
`
`percent and/or an API gravity of less than about 26°.” Prelim. Resp. 29–33.
`
`“and/or”
`
`Patent Owner argues that the phrase “a liquid hydrocarbon having an
`
`asphaltene content of at least 3 weight percent and/or an API gravity of less
`
`than about 26°” should be construed as “a liquid hydrocarbon having an
`
`asphaltene content of at least 3 weight percent and an API gravity of less
`
`than about 26°.” Id. at 33. Patent Owner reasons that “the prosecution
`
`history requires that the claimed liquid hydrocarbon have both an
`
`‘asphaltene content of at least 3 weight percent’ and ‘an API gravity of less
`
`than about 26°.’” Id. at 30. Patent Owner further argues that “Petitioner
`
`concedes that [Patent Owner’s] proposed construction is correct in both
`
`Grounds 1 and 2.” Id. at 32.
`
`Our review of the record does not lead us to the conclusion urged by
`
`Patent Owner. First, the specification of the ’498 patent, in its “Definitions”
`
`section, provides:
`
`As used herein, the term “and/or,” when used in a list of two or
`more items, means that any one of the listed items can be
`employed by itself or any combination of two or more of the
`listed items can be employed. For example, if a composition is
`described as containing components A, B, and/or C, the
`composition can contain A alone; B alone; C alone; A and B in
`combination; A and C in combination; B and C in combination;
`or A, B, and C in combination.
`
`
`
`
`
`8
`
`

`

`IPR2016-01903
`Patent 8,426,498 B2
`
`Ex. 1002, 18:49–56.
`
`Further, in view of the presence of the term “and/or” in independent
`
`claims 1 and 5, but its absence from claim 3 (which uses the term “and”
`
`instead), it is logical that both the examiner and Petitioner would refer to the
`
`presence of both limitations to cover all possible situations that the claims
`
`encompass. In our view, this does not alter the explicit “and/or” definition
`
`provided by Patent Owner in the specification. “[A] patentee may choose to
`
`be his own lexicographer and use terms in a manner other than their ordinary
`
`meaning, as long as the special definition of the term is clearly stated in the
`
`patent specification or file history.” Vitronics Corp. v. Conceptronic, Inc.,
`
`90 F.3d 1576, 1582 (Fed. Cir. 1996). Here, the special definition is clearly
`
`stated in the specification, and the file history does not refute this definition.
`
`Thus, we do not adopt Patent Owner’s proposed construction.
`
`On the present record, we determine that the phrase “a liquid
`
`hydrocarbon having an asphaltene content of at least 3 weight percent and/or
`
`an API gravity of less than about 26°” means that the liquid hydrocarbon can
`
`contain an asphaltene content of at least 3 weight percent; can have an API
`
`gravity of less than about 26°; or can contain an asphaltene content of at
`
`least 3 weight percent and have an API gravity of less than about 26° in
`
`combination.
`
`We determine that no other claim term requires express construction
`
`for purposes of this decision.
`
`B. Overview of the Asserted References
`
`1. Holtmyer Publication
`
`The Holtmyer Publication, titled “Study of Oil Soluble Polymers as
`
`Drag Reducers,” was published in 1980. Ex. 1005, 473. The Holtmyer
`
`
`
`9
`
`

`

`IPR2016-01903
`Patent 8,426,498 B2
`
`Publication is directed to an investigation “undertaken to find the most
`
`effective material which would reduce the friction coefficient in turbulent
`
`flow when added in small quantities to oil pipelines.” Id. at Abstract. A
`
`decrease in friction loss “would allow lower energy consumption or
`
`alternatively an increased flow rate under the original pumping conditions,”
`
`making a decrease in friction loss “desirable” and “economically profitable
`
`to industrial organizations engaged in movement of large volumes of liquid
`
`at high flow rates for considerable distance as in hydraulic fracturing of oil
`
`and gas wells.” Id. at 473. Among the polymers for drag reduction
`
`synthesized and described by the Holtmyer Publication is poly(isodecyl
`
`methacrylate) (“iDMA”), which was tested for drag reduction in kerosene,
`
`QC-1156, Cardium, and Ellenberger. Id. at 476, Table 9.
`
`2. Holtmyer Patent
`
`The Holtmyer Patent, titled “Methods and compositions for reducing
`
`frictional pressure loss in the flow of hydrocarbon liquids,” issued in 1973.
`
`Ex. 1006. The Holtmyer Patent relates to “methods and compositions for
`
`reducing the frictional pressure loss encountered in the turbulent flow of
`
`hydrocarbon liquids through a conduit.” Id. at 1:15–18. Regarding
`
`frictional pressure loss encountered in the turbulent flow of hydrocarbon
`
`liquids, the Holtmyer Patent provides that “considerable energy generally in
`
`the form of pumping horsepower must be expended” in order to compensate
`
`and, thus, “reduction of the frictional pressure loss in the flow of such
`
`hydrocarbon liquids brings about an advantageous reduction in horsepower
`
`requirements, or alternatively, an increased flow rate of the hydrocarbon
`
`liquids under the same pumping conditions.” Id. at 1:56–65. The Holtmyer
`
`Patent provides examples of “suitable monomers which may be utilized to
`
`
`
`10
`
`

`

`IPR2016-01903
`Patent 8,426,498 B2
`
`form the polymer additives of the present invention.” Id. at 3:3–20. When
`
`using the polymer additive “with a well-treating fluid containing sand or
`
`other solid agent suspended therein,” the Holtmyer Patent states that “it is
`
`preferable to use a somewhat larger amount of the polymer additive.” Id.
`
`at 4:63–67.
`
`3. Inaoka
`
`Inaoka, titled “High molecular weight polymer and producing method
`
`the same and drag reducer,” relates to a method of producing a high
`
`molecular weight polymer in which “dissolved oxygen existing in a solvent
`
`in a radical polymerization reaction is removed, and to a high molecular
`
`weight polymer obtained by the same, and to a drag reducer.” Ex. 1007,
`
`2:5–7. Inaoka describes, generally, the problems with transporting “an
`
`organic liquid such as crude oil” through a pipeline, caused by “the fact that
`
`transporting pressure on the liquid is lost by the friction generated between
`
`the liquid and the conduit.” Id. at 3:9–11. To suppress such pressure loss,
`
`Inaoka states that “a drag reducer has been used conventionally,” and the
`
`drag reducer includes a high molecular weight polymer. Id. at 3:14–15.
`
`Regarding production of such polymers, Inaoka states that “a method
`
`disclosed in USP No. 3,758,406 [the Holtmyer Patent] is known.” Id.
`
`at 3:27. Regarding specific polymer additives, Inaoka states that “2-
`
`ethylhexylacrylate (2EHA (carbon number of 8)) and 2-
`
`ethylhexylmethacrylate (2EHMA (carbon number of 8) are particularly
`
`preferable.” Id. at 4:48–50.
`
`4. Carnahan
`
`Carnahan, titled “Precipitation of Asphaltenes in Heavy Oil and Tar
`
`Sands,” is a chapter of a textbook titled “Asphaltenes and Asphalts, 2.”
`
`
`
`11
`
`

`

`IPR2016-01903
`Patent 8,426,498 B2
`
`Ex. 1008. Carnahan discloses solubility parameters of asphaltene and of
`
`heavy crude oils, particularly, that the expected value of the solubility of
`
`such heavy petroleum fluids is about 8–10 hildebrands. Id. at 325. More
`
`specifically, Carnahan discloses that the solubility parameter of certain
`
`asphaltenes is about 20.5 MPa1/2. Id. at 324.
`
`C.
`
`Exercise of Discretion
`
`Institution of inter partes review is discretionary. See 35 U.S.C.
`
`§ 314(a); 37 C.F.R. § 42.108. Our discretion on whether to institute is
`
`guided in part by 35 U.S.C. § 325(d), which states that “the Director may
`
`take into account whether, and reject the petition or request because, the
`
`same or substantially the same prior art or arguments previously were
`
`presented to the Office.” Patent Owner requests that the Board exercise its
`
`discretion and deny the Petition for several reasons. Prelim. Resp. 14–26.
`
`First, Patent Owner argues that the Petition is “primarily based upon
`
`prior art and arguments that were presented to the examiner during the
`
`prosecution of the 498 Patent and its parent application.” Id. at 14–21.
`
`More particularly, Patent Owner argues that substance of the Holtmyer
`
`Publication and Inaoka have “already been considered by the PTO during
`
`prosecution of both the 498 Patent and its parent application, which issued as
`
`the 118 Patent.” Id. at 15.
`
`The permissive language of § 325(d) does not prohibit instituting an
`
`inter partes review based on prior art or arguments previously presented to
`
`the Office. Although the Examiner relied upon Inaoka during prosecution,
`
`Petitioner’s arguments here are not necessarily those Patent Owner was
`
`faced with during prosecution. Moreover, Petitioner in this proceeding also
`
`relies on the Holtmyer Publication, which, notwithstanding Patent Owner’s
`
`
`
`12
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`

`IPR2016-01903
`Patent 8,426,498 B2
`
`allegation that the Holtmyer Publication “is merely cumulative of the
`
`Holtmyer Patent,” is a different reference not relied upon during
`
`prosecution. Id. at 16. We also acknowledge that Patent Owner listed the
`
`Holtmyer Patent in an Information Disclosure Statement that was submitted
`
`during the prosecution of the ’498 patent. Ex. 2005. It does not appear,
`
`however, that the Examiner or Patent Owner discussed the Holtmyer Patent
`
`substantively during that prosecution. Thus, Petitioner is relying on prior art
`
`(the Holtmyer Patent, the Holtmyer Publication (collectively, “Holtmyer
`
`references”), and Carnahan) and combinations of prior art (the Holtmyer
`
`references and Carnahan, Inaoka and Carnahan) that were not asserted to
`
`reject the claims during prosecution. Petitioner further relies on Dr. Epps’s
`
`declaration, which Patent Owner does not allege is duplicative of evidence
`
`previously presented to the Office. Although there is some burden on Patent
`
`Owner and the Office in hearing arguments based in part on the same or
`
`substantially the same prior art previously presented to the Office, we are
`
`persuaded, on this record and for the reasons that follow, that Petitioner’s
`
`arguments have merit.
`
`Second, Patent Owner argues that “this Petition was strategically
`
`filed” after Petitioner received Patent Owner’s Preliminary Response and the
`
`Board’s Institution Decision on a petition for inter partes review of the ’118
`
`patent (the parent application of the ’498 patent) in the 734 IPR. Prelim.
`
`Resp. 14, 21–26. Patent Owner notes that the Patent Owner Preliminary
`
`Response in the 734 IPR was filed on July 6, 2016, and the Board’s
`
`Institution Decision in the 734 IPR issued on October 4, 2016. Id. at 1. The
`
`present Petition was filed on October 6, 2016.
`
`
`
`13
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`

`

`IPR2016-01903
`Patent 8,426,498 B2
`
`
`We do not view this proceeding as a “second bite at the apple” over
`
`the 734 IPR, or the Petition filed in this proceeding as a serial petition. The
`
`734 IPR concerns a different patent (the ’118 patent) than the patent
`
`challenged in the present proceeding and, thus, there is no overlap in the
`
`claims in the petition filed in IPR2016-00734 and the petition filed in this
`
`proceeding. In view of the particular circumstances of this case, we
`
`determine that Petitioner had a legitimate reason to file its petition in the
`
`present case, in that Petitioner had not yet challenged the patentability of the
`
`’498 patent, which is being asserted in co-pending litigation, before the
`
`Board, and that Petitioner has gained no unfair advantage by doing so.
`
`Therefore, considering the totality of the circumstances, we do not
`
`exercise our authority to decline to institute an inter partes review of the
`
`’498 patent.
`
`D. Ground 1 – Asserted Obviousness Based on the Holtmyer Publication,
`the Holtmyer Patent, and Carnahan
`
`Petitioner asserts that a person of ordinary skill in the art would have
`
`been led from the above-referenced disclosures of the Holtmyer Publication,
`
`the Holtmyer Patent, and Carnahan, to a method comprising all of the
`
`elements recited in claims 1–5. Pet. 20–33, 45–50.
`
`Petitioner argues that the “Holtmyer Publication discloses most of the
`
`limitations of claim 1.” Id. at 21. In the section of the Petition summarizing
`
`the Holtmyer Publication, Petitioner characterizes the Holtmyer Publication
`
`as describing an investigation “to find the most effective material which
`
`would reduce the friction coefficient in turbulent flow when added in small
`
`quantities to oil pipelines” and as describing “the problem of frictional
`
`pressure losses associated with the turbulent flow of a fluid through a
`
`conduit.” Id. at 14–15 (citing Ex. 1005, 473, Abstract). Petitioner further
`
`
`
`14
`
`

`

`IPR2016-01903
`Patent 8,426,498 B2
`
`notes that the Holtmyer Publication describes the drag reduction properties
`
`of “a series of homo- and copolymers of alkyl styrenes, acrylates, and
`
`methacrylates in hydrocarbon solvents.” Id. at 15 (citing Ex. 1005, 474,
`
`Table 1). Specifically, Petitioner focuses on the Holtmyer Publication’s
`
`preparation and testing of iDMA, which test results are presented in Table 9
`
`of the Holtmyer Publication. Id. (citing Ex. 1005, Table 9). The test results
`
`demonstrate iDMA’s drag reduction in kerosene, in two types of crude oil
`
`(Cardium and Ellenberger), and in QC-1156 (an aromatic hydrocarbon with
`
`an API gravity of 22.5°). Id. at 16 (citing Ex. 1005, Table 9).
`
`Petitioner relies on Dr. Epps’s testimony that “a person of ordinary
`
`skill in the art would have known that a plurality of the repeating units of the
`
`iDMA polymer comprise oxygen heteroatoms.” Id. at 21–22 (citing
`
`Ex. 1041 ¶ 57). Petitioner further relies on Dr. Epps’s testimony that “a
`
`person of ordinary skill in the art would have understood that introduction of
`
`the iDMA polymer into [] liquid hydrocarbons” would reduce “friction loss
`
`associated with the turbulent flow through the pipeline . . . by suppressing
`
`the growth of turbulent eddies” as recited in claim 1. Id. at 22 (citing
`
`Ex. 1041 ¶ 71). Regarding the claim 1 requirement that “the viscosity of the
`
`treated liquid hydrocarbon is not less than the viscosity of the liquid
`
`hydrocarbon prior to treatment with the drag reducing polymer,” Petitioner
`
`relies on Dr. Epps’s testimony that adding the iDMA drag reducing polymer
`
`of the Holtmyer Publication to a liquid hydrocarbon would achieve this
`
`effect. Id. at 23 (citing Ex. 1041 ¶¶ 76–77).
`
`Petitioner posits that the “only limitation of claim 1 that the Holtmyer
`
`Publication does not disclose explicitly is the introduction of the iDMA drag
`
`reducing polymer into a liquid hydrocarbon having an asphaltene content of
`
`
`
`15
`
`

`

`IPR2016-01903
`Patent 8,426,498 B2
`
`at least 3 weight percent,”7 (id. at 24) but argues that (i) crude oils having the
`
`claimed properties were well known, as acknowledged in the ’498 patent
`
`itself and other contemporaneous publications (id. at 24 (citing Ex. 1002,
`
`Table 1; Ex. 1017, 12; Ex. 1018, 557–58)); (ii) one of ordinary skill would
`
`have been motivated by the known economic benefits associated with drag
`
`reduction to introduce the iDMA polymer into a crude oil having the
`
`claimed properties (id. at 25–26 (citing Ex. 1005, 473; Ex. 1041 ¶¶ 90–92));
`
`and (iii) one of ordinary skill would have had a reasonable expectation that
`
`the iDMA polymer would be effective at reducing drag in a crude oil having
`
`the claimed properties (id. at 26–33 (citing Ex. 1041 ¶¶ 94–99, 100–11)).
`
`Regarding asphaltene, Petitioner argues the Holtmyer Patent addresses the
`
`effect of asphaltene content on the ability of the iDMA polymer to achieve
`
`drag reduction, relying Dr. Epps’s testimony that “the optimum quantity of
`
`polymer to be introduced to a hydrocarbon liquid may vary depending on the
`
`type of liquid hydrocarbon involved” and that “when a solid agent is
`
`suspended in the liquid hydrocarbon, it is preferable to use a somewhat
`
`larger amount of the polymer additive.” Id. at 27–28 (citing Ex. 1040 ¶ 97
`
`(citing Ex. 1006, 4:51–59, 4:63–75)). Regarding solubility, Petitioner
`
`argues that solubility parameters “were (and are) commonly consulted in
`
`order to predict solubility of one compound in another.” Id. at 29 (citing
`
`Ex. 1041 ¶ 100). Petitioner relies on Carnahan (Ex. 1006, 325) and Dr.
`
`Epps’s calculations of the solubility parameters of heavy, asphaltenic crude
`
`
`7 In light of our claim construction of the term “and/or,” it only is necessary
`for Petitioner to establish this particular limitation for claim 3. Nevertheless,
`even though it is not required by claims 1, 2, 4, and 5, we address the
`argument because it applies to at least one challenged claim.
`
`
`
`16
`
`

`

`IPR2016-01903
`Patent 8,426,498 B2
`
`oils (“within the range between about 16.4 MPa1/2 and 20.5 MPa1/2,” Ex.
`
`1041 ¶ 107) and the iDMA polymer (“about 17.84 MPa1/2,” Ex. 1041
`
`¶¶ 101–03) to argue that because the solubility parameter of the iDMA
`
`polymer falls squarely within the range disclosed by Carnahan, a person of
`
`ordinary skill in the art “would have had a reasonable expectation that the
`
`iDMA drag reducing polymer would be effective at achieving drag reduction
`
`in a liquid hydrocarbon having an API gravity less than about 26° and an
`
`asphaltene content of at least 3 weight percent undergoing turbulent flow
`
`through a pipeline.” Pet. 32.
`
`E. Ground 2 – Asserted Obviousness Based on Inaoka and Carnahan
`
`Petitioner asserts that a person of ordinary skill in the art would have
`
`been led from the above-referenced disclosures of Inaoka and Carnahan to a
`
`method comprising all of the elements recited in claims 1–5. Pet. 33–43,
`
`45–50.
`
`Petitioner argues that “Inaoka discloses most of the limitations of
`
`claim 1.” Id. at 34. In the section of the Petition summarizing Inaoka,
`
`Petitioner characterizes Inaoka as describing a high molecular weight
`
`polymer having a straight-chain structure and being soluble in an organic
`
`solvent, and “suitably adopted as a drag reducer.” Id. at 17 (quoting
`
`Ex. 1007, Abstract). Petitioner further characterizes Inaoka as describing the
`
`problem of frictional pressure losses associated with the turbulent flow of
`
`fluid through a conduit, and the conventional use of drag reducers to address
`
`the problem of pressure loss. Id. at 17–18 (quoting Ex. 1007, 3:9–13, 14–
`
`21). Petitioner notes that Inaoka refers to drag reducing polymers that may
`
`be produced by “a method disclosed in USP No. 3,758,406 [the Holtmyer
`
`Patent].” Id. at 18 (quoting Ex. 1007, 3:27). Inaoka’s drag reducing
`
`
`
`17
`
`

`

`IPR2016-01903
`Patent 8,426,498 B2
`
`polymer “can be suitably adopted in transporting of an organic liquid such as
`
`crude oil through a conduit, such as a pipeline.” Id. at 19 (quoting Ex. 1007,
`
`17:1–5). Inaoka’s two “particularly preferable” drag reducing polymers are
`
`2-ethylhexylacrylate (“2EHA”) and 2-ethylhexylmethacrylate (“2EHMA”);
`
`the latter, according to Dr. Epps, is the same as Polymer A of the ’498
`
`patent. Id. at 20 (citing Ex. 1007, 4:48–50; Ex. 1041 ¶ 155).
`
`Petitioner relies on Dr. Epps’s testimony that “a person of ordinary
`
`skill in the art would have known that a plurality of the repeating units of the
`
`2EHMA polymer comprise oxygen heteroatoms.” Id. at 34 (citing Ex. 1041
`
`¶ 156). Petitioner further relies on Dr. Epps’s testimony that “a person of
`
`ordinary skill in the art would have understood that introducing the 2EHMA
`
`polymer into crude oil flowing through a pipeline would reduce drag by
`
`suppressing the growth of turbulent eddies” as recited in claim 1. Id. at 35
`
`(citing Ex. 1041 ¶ 167). Regarding the claim 1 requirement that “the
`
`viscosity of the treated liquid hydrocarbon is not less than the viscosity of
`
`the liquid hydrocarbon prior to treatment with the drag reducing polymer,”
`
`Petitioner relies on Dr. Epps’s testimony that adding the 2EHMA drag
`
`reducing polymer of Inaoka to a liquid hydrocarbon would achieve this
`
`effect. Id. at 35–36 (citing Ex. 1041 ¶¶ 169–171).
`
`Petitioner argues that although “Inaoka does not disclose introducing
`
`the 2EHMA drag reducing polymer into a crude oil having an asphaltene
`
`content of at least 3 weight percent and an API gravity of less than 26°, it
`
`would have been obvious to a person of ordinary skill in the art to do so.”
`
`Id. a

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