Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 9
`Entered: April 27, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GUANGDONG ALISON HI-TECH CO., LTD.,
`Petitioner,
`
`v.
`
`ASPEN AEROGELS, INC.,
`Patent Owner.
`
`Case IPR2017-00201
`Patent 7,399,439 B2
`
`
`
`
`
`
`
`
`
`Before JON B. TORNQUIST, CHRISTOPHER M. KAISER, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 9
`Entered: April 27, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GUANGDONG ALISON HI-TECH CO., LTD.,
`Petitioner,
`
`v.
`
`ASPEN AEROGELS, INC.,
`Patent Owner.
`
`Case IPR2017-00201
`Patent 7,399,439 B2
`
`
`
`
`
`
`
`
`
`Before JON B. TORNQUIST, CHRISTOPHER M. KAISER, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2017-00201
`Patent 7,399,439 B2
`
`INTRODUCTION
`
`A. Background
`Guangdong Alison Hi-Tech Co., Ltd. (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) requesting inter partes review of claims 1–4, 6–9, 15, 16,
`and 18–21 of U.S. Patent No. 7,399,439 B2 (Ex. 1001, “the ’439 patent”).
`Aspen Aerogels, Inc. (“Patent Owner”) filed a Preliminary Response (Paper
`8, “Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The standard for
`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), 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.”
`After considering the Petition and the evidence currently of record, we
`determine that Petitioner has not demonstrated that there is a reasonable
`likelihood that it would prevail with respect to at least one of the claims
`challenged in the Petition. Accordingly, we do not institute inter partes
`review.
`
`B. Related Matters
`The parties note that the ’439 patent is at issue in Certain Composite
`Aerogel Insulation Materials and Methods for Manufacturing the Same,
`USITC Inv. No. 337-TA-1003 (June 2, 2016). Pet. 1–2; Paper 5, 2.
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`Patent 7,399,439 B2
`C. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–4, 6–9, 15, 16, and 18–21 of the
`’439 patent are unpatentable based on the following grounds (Pet. 16–74):1
`Statutory
`Basis
`Challenged Claim(s)
`Ground
`§ 103
`§ 103
`
`Nakanishi2 and Ramamurthi3 1–4, 6–9, 15, 16, and 18
`Nakanishi and any of
`19–21
`Ramamurthi, Roberts,4 or
`Andersen5
`Ramamurthi and Nakanishi
`Sonoda6 and Yada7
`Ramamurthi and Yada
`
`1–4, 6–9, 15, 16, and 18─21
`1–4, 6–9, 15, 16, 18, and 21
`1–4, 6–9, 15, 16, and 18–21
`
`§ 103
`§ 103
`§ 103
`
`D. The ’439 Patent
`The ’439 patent, titled “Methods to Produce Gel Sheets,” issued on
`July 15, 2008. Ex. 1001, at [45], [54]. The ’439 patent relates to
`“preparation of solvent filled gel sheets in a continuous fashion.” Id. at
`
`
`1 Petitioner also relies on a declaration from George W. Scherer, Ph.D.
`Ex. 1003.
`2 Nakanishi, U.S. Patent No. 4,950,148, issued Aug. 21, 1990 (Ex. 1005,
`“Nakanishi”).
`3 Ramamurthi et al., U.S. Patent No. 5,306,555, issued Apr. 26, 1994
`(Ex. 1006, “Ramamurthi”).
`4 Roberts, U.S. Patent No. 3,042,573, issued July 3, 1962 (Ex. 1009,
`“Roberts”).
`5 Andersen et al., U.S. Patent No. 5,665,442, issued Sept. 9, 1997 (Ex. 1008,
`“Andersen”).
`6 Sonoda et al., Japanese Patent Application Publication No. H08-34678A,
`published Feb. 6, 1996 (Ex. 1010) (translation provided as Ex. 1011,
`“Sonoda”).
`7 Yada et al., U.S. Patent No. 5,004,761, issued Apr. 2, 1991 (Ex. 1023,
`“Yada”).
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`Patent 7,399,439 B2
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`1:14–15. The ’439 patent explains that “[c]onventional methods for gel
`sheet and/or fiber-reinforced composite gel sheet production formed via sol-
`gel chemistry” invariably involved “batch casting,” or “catalyzing one entire
`volume of sol to induce gelation simultaneously throughout that volume.”
`Id. at 1:66–2:4.
`In contrast to the prior-art batch casting method, the ’439 patent
`discloses a method of continuously dispensing a catalyzed sol solution onto
`a moving element to form a gel sheet. Id. at 2:31–38, 3:36–39, 4:45–51,
`6:32–39. The ’439 patent notes that fibrous materials may be added to the
`sol prior to the point of polymer gelation to reinforce the matrix materials.
`Id. at 5:1–6. The ’439 patent further notes that the disclosed process permits
`“control of the growth and aggregation of the matrix species throughout the
`transition from the ‘sol’ state to the ‘gel’ state.” Id. at 8:9–11.
`
`E. Illustrative Claim
`Claims 1–4, 6–9, 15, 16, and 18–21 of the ’439 patent are challenged.
`Claims 1, 3, 7, 15, 19, and 21 are independent, and claim 1 is illustrative; it
`recites:
`
`1. A process for continuously casting solvent filled gel sheet
`material, comprising:
`continuously combining a sol and a gel inducing agent
`to form a catalyzed sol;
`providing at least a fibrous material; and
`forming a gel sheet by dispensing the catalyzed sol onto
`a moving element consisting essentially of one moving
`conveyor belt, as a single molding surface for said sol,
`at a predetermined rate effective to allow gelation to
`occur to the catalyzed sol on the moving element,
`
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`Patent 7,399,439 B2
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`wherein the fibrous material is combined with the
`catalyzed sol prior to gelation.
`Ex. 1001, 13:24–35.
`
`ANALYSIS
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144 (2016) (upholding
`the use of the broadest reasonable interpretation standard). Claim terms
`generally are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`Petitioner proposes construing three claim terms: “gel sheet,”
`“catalyzed sol,” and “fibrous material.” Pet. 10–11. Patent Owner proposes
`construing four terms: “process for continuously casting solvent filled gel
`sheet material,” “gel sheet,” “catalyzed sol,” and “rolling the formed gel
`sheet.” Prelim. Resp. 10–17. For the purpose of this decision, we determine
`that only the term “catalyzed sol” requires express construction. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(“only those terms need be construed that are in controversy, and only to the
`extent necessary to resolve the controversy”).
`The phrase “catalyzed sol” appears in all of the challenged
`independent claims of the ’439 patent. Ex. 1001, 13:24–16:12. Petitioner
`argues that this phrase should be interpreted as “any sol-gel precursor
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`materials in the form of a colloidal solution or suspension that are catalyzed
`to induce gelation.” Pet. 10–11. Petitioner bases this proposed construction
`on the description of “numerous ways to catalyze a sol” in the specification
`of the ’439 patent. Id. at 11 (citing Ex. 1001, 2:4–11).
`Patent Owner argues that this phrase should be interpreted as “a low-
`viscosity mixture of sol and gel-inducing agent before it has formed into a
`gel.” Prelim. Resp. 15–16. In support of its proposed construction, Patent
`Owner cites to various portions of the ’439 patent specification that
`distinguish between a catalyzed sol dispensed on a conveyor and the
`resulting gel sheet that forms on the conveyor. Id. (citing Ex. 1001, 2:30–
`38, 4:41, 9:28–39.
`As Patent Owner points out, the ’439 patent distinguishes between a
`catalyzed sol and the resulting gel. See Ex. 1001, 2:31–34 (“[T]he invention
`describes methods for continuously combining a low viscosity solution of a
`sol and an agent (heat catalyst or chemical catalyst) that induces gel
`formation and forming a gel sheet on a moving element.”), 6:4–5 (“Gels are
`a class of materials formed by entraining a mobile interstitial solvent phase
`within the pores of a solid structure.”), 8:9–11 (noting that the growth and
`aggregation of the matrix species may be controlled throughout “the
`transition from the ‘sol’ to the ‘gel’ state”). Indeed, we are directed to no
`discussion in the ’439 patent referring to a gel as a catalyzed sol, or
`otherwise equating those two terms. Thus, we find persuasive Patent
`Owner’s argument that the term “catalyzed sol,” as used in the ’439 patent,
`means a mixture of a sol and a gel-inducing agent, before that mixture has
`formed into a gel.
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`We are not persuaded, however, that the ordinary meaning of
`“catalyzed sol,” or the descriptions of the various sols in the ’439 patent,
`clearly require that a catalyzed sol must be “low-viscosity,” as asserted by
`Patent Owner. Ex. 1001, 8:29–33 (noting that “other sol preparation and gel
`induction methods” may be used with the processing methods of the
`invention); see Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362,
`1365 (Fed. Cir. 2012) (noting that “[i]t is not enough for a patentee to simply
`disclose a single embodiment or use a word in the same manner in all
`embodiments, the patentee must ‘clearly express an intent’ to redefine the
`term”); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Accordingly,
`we decline to adopt that portion of Patent Owner’s construction.
`Petitioner’s proposed construction defines a sol as “any sol-gel
`precursor materials in the form of a colloidal solution or suspension.” This
`portion of the construction is supported by the testimony of Petitioner’s
`declarant, Dr. Scherer. Ex. 1003 ¶ 54. There is evidence of record, in the
`form of a textbook co-authored by Dr. Scherer, that “[a] sol is a colloidal
`suspension of solid particles in a liquid.” Ex. 2008, 5. To the extent that
`Petitioner’s construction extends to colloidal solutions rather than only to
`colloidal suspensions, it is contradicted by Dr. Scherer’s textbook.
`Accordingly, we adopt only that portion of Petitioner’s proposed
`construction that interprets “sol” as a colloidal suspension.
`In view of the foregoing, we construe the term “catalyzed sol” to
`mean “a mixture of a sol-gel precursor material in the form of a colloidal
`suspension and a gel-inducing agent, before that mixture has formed into a
`gel.”
`
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`Patent 7,399,439 B2
`B. Asserted Obviousness over Nakanishi and Ramamurthi
`Petitioner argues that the subject matter of claims 1–4, 6–9, 15, 16,
`and 18 would have been obvious to a person of ordinary skill in the art given
`the teachings of Nakanishi and Ramamurthi. Pet. 16–30.
`
`1. Nakanishi
`Nakanishi discloses “an apparatus capable of automatically processing
`silicone gel material with high viscosity without manual operation.”
`Ex. 1005, 1:37–41. Figure 1 of Nakanishi, reproduced below, depicts one
`embodiment of the disclosed apparatus:
`
`
`Figure 1 is a partly cutaway view of the apparatus of Nakanishi
`
`As shown in Figure 1, silicone gel material 10 is provided from hopper 21 to
`nozzle 30 by screw conveyor 22. Id. at 2:59–68. This material is then
`extruded from nozzle 30 onto movable receiving means 41 as thin sheet-
`formed strip 11. Id. at 2:65–2:68, 3:15–19. Moveable receiving means 41 is
`then delivered by belt conveyor 42 to heating section 50, where it is heated
`in multi-staged heating furnace 51. Id. at 3:20–22, 3:40–51.
`
`Nakanishi does not describe expressly the materials used to
`manufacture silicone gel material 10 in the first embodiment. In the
`description of a second embodiment of the disclosed apparatus, however, a
`
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`method for forming the silicone gel material is described. Id. at 4:41–43,
`4:64–68. In this method, liquids A and B—which have been mixed with
`fine hollow particles—are delivered to a feeder and kneaded “into a gelled
`solidifiable state of material.” Id. at 4:64–66. This gelled material is then
`debubbled and delivered to a hopper for further processing. Id. at 4:66–68,
`5:24–25.
`
`2. Ramamurthi
`Ramamurthi discloses a batch method for preparing aerogel matrix
`composites (AMCs). Ex. 1006, 1:10–15, 2:3–8. This method generally
`comprises: “preparing an aerogel precursor; mixing fibers with the aerogel
`precursor; aging the aerogel precursor containing the fibers to obtain a gelled
`composition; completely submerging the gelled composition in a liquid
`suitable for supercritical drying,” and then drying the gelled composition.
`Id. at 2:15–21.
`Ramamurthi explains that, in contrast to monolithic aerogels known in
`the art which are “extremely fragile and have low elasticities,” the disclosed
`fiber reinforced AMCs can have a range of flexibilities and possess
`“enhanced strength, decreased sensitivity to moisture,” and good thermal
`insulation values. Id. at 2:3–8, 3:57–59, Fig. 1 (comparing the properties of
`fiber reinforced AMCs with “conventional aerogels”).
`
`3. Analysis
`Petitioner argues that all limitations of claims 1–4, 6–9, 15, 16, and 18
`are taught or suggested by the combination of Nakanishi and Ramamurthi.
`Pet. 16–30. Patent Owner argues, inter alia, that the prior art does not teach
`or suggest the “dispensing [a] catalyzed sol” limitation that is recited in all
`independent claims of the ’439 patent. Prelim. Resp. 18–22.
`
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`Petitioner relies on Nakanishi to teach or suggest the dispensing of a
`catalyzed sol. Pet. 20–21. Specifically, Petitioner directs us to two
`disclosures in Nakanishi: first, a disclosure of two tanks, one “for supplying
`the first of two liquids for preparing a two-liquid kneaded type of silicone
`gel material,” and the other “for supplying the second of the two liquids,”
`Ex. 1005, 8:15–19, and, second, a disclosure of the discharge of “[s]ilicone
`gel material” onto a “movable receiving means,” id. at 3:15–25.
`Nakanishi consistently describes the material dispensed onto its
`movable receiving means as a “gel material.” See id. at 1:37–41 (noting that
`the disclosed apparatus processes “silicone gel material with high
`viscosity”), 2:65–68 (noting that silicone gel material 10 is “extruded” from
`nozzle 30 by the pressure provided by screw conveyor 22). Petitioner does
`not explain persuasively why one of ordinary skill in the art would have
`considered the material in Nakanishi to be a “catalyzed sol” at the time it
`was dispensed, as opposed to already having become a gel by that point.
`Petitioner cites to the testimony of Dr. Scherer to support the conclusion that
`the mixed liquids in Nakanishi constitute a catalyzed sol, but Dr. Scherer’s
`testimony equally supports the conclusion that, by the time the “gel
`material” is dispensed in Nakanishi, it has become a gel. Pet. 17–19;
`Ex. 1003 ¶¶ 104–106 (“when Parts A and B are mixed, they constitute a
`catalyzed sol that reacts to form a gel”). In addition, the product literature
`for Toray Silicone CY52, on which Dr. Scherer relies to support the
`conclusion that Nakanishi discloses a catalyzed sol, actually describes the
`product as a “gel,” not as a catalyzed sol. Ex. 1013, 1–2. Accordingly, on
`this record, we are not persuaded that Petitioner has shown sufficiently that
`the combination of Nakanishi and Ramamurthi teaches or suggests
`
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`“dispensing [a] catalyzed sol,” as required by all the challenged claims of the
`’439 patent. Therefore, Petitioner does not establish a reasonable likelihood
`that the subject matter of claims 1–4, 6–9, 15, 16, and 18 would have been
`obvious over Nakanishi and Ramamurthi.
`
`C. Asserted Obviousness over Nakanishi and Ramamurthi, Roberts,
`or Andersen
`Petitioner argues that claims 19–21 would have been obvious to a
`person of ordinary skill in the art given the teachings of Nakanishi and any
`of Ramamurthi, Roberts, or Andersen. Pet. 30–36.
`
`1. Roberts
`Roberts discloses “a process and apparatus for manufacturing
`impregnated woven or non-woven fibrous sheet materials.” Ex. 1009, 1:11–
`13. In that process, a foam “impregnant” is applied on “one surface of a
`fibrous sheet material” and suction is then applied “to the opposite surface of
`the fibrous sheet material to suck the impregnant into said fibrous sheet
`material.” Id. at 1:19–25. The impregnated web of material is then passed
`through a drying machine and “wound on a roll.” Id. at 6:61–63.
`
`2. Andersen
`Andersen “relates to compositions, methods for manufacturing sheets,
`and articles of manufacture having a highly inorganically filled organic
`polymer matrix” that “can vary greatly in thickness, stiffness, flexibility,
`toughness, and strength and can be used in a dry or moist state to form a
`variety of objects, including printed sheets, containers, and other packaging
`materials.” Ex. 1008, 1:40–47. Andersen teaches that a preferred method
`for manufacturing the sheets includes the steps of:
`(1) preparing a moldable mixture by mixing together water,
`inorganic aggregates, a water-dispersable [sic] organic binder,
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`
`and fibers; (2) placing the moldable mixture into an extruder,
`such as an auger or piston extruder; (3) extruding the mixture
`through an appropriate die to preferably form a flat sheet of a
`desired thickness, or a pipe that can be unfolded into a sheet;
`(4) reducing the thickness of the sheet by passing it between at
`least one pair of rollers; and (5) drying the sheet to create a
`substantially hardened matrix comprising aggregate particles
`and fibers held together by an organic polymer binder.
`Id. at 12:16–26. Andersen explains that “fibers are a preferred additive
`which increases the tensile strength, flexibility, ductility, and bendability of
`the highly inorganically filled sheets.” Id. at 14:6–8; see also id. at 30:16–
`26 (fibers may be added to the mixture to increase flexural and tensile
`strength). The manufactured sheets can be stored by “rolling the sheet onto
`a spool.” Id. at 7:3–5, 13:46.
`
`3. Analysis
`Petitioner argues that all limitations of claims 19–21 are taught or
`suggested by the combination of Nakanishi and any of Ramamurthi,
`Roberts, or Andersen. Pet. 30–36. Petitioner relies on Nakanishi to teach or
`suggest “dispensing [a] catalyzed sol,” a limitation of each of these claims.
`Pet. 31, 34–36. As discussed above, we are not persuaded that Petitioner has
`shown sufficiently that Nakanishi teaches or suggests “dispensing [a]
`catalyzed sol,” as required by all the challenged claims of the ’439 patent.
`Therefore, Petitioner does not establish a reasonable likelihood that the
`subject matter of claims 19–21 would have been obvious over Nakanishi and
`any of Ramamurthi, Roberts, or Andersen.
`
`D. Asserted Obviousness over Ramamurthi and Nakanishi
`Petitioner argues that claims 1–4, 6–9, 15, 16, and 18–21 would have
`been obvious to a person of ordinary skill in the art given the teachings of
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`Ramamurthi and Nakanishi. Pet. 36–37. Here, Petitioner argues that
`Ramamurthi teaches or suggests “dispensing [a] catalyzed sol” and
`Nakanishi teaches dispensing a sol onto a moving element. Id. at 36–37.
`We are not persuaded that Petitioner has shown sufficiently that Ramamurthi
`and Nakanishi teach or suggest these limitations. To support its argument,
`Petitioner directs us to the following language from Ramamurthi: “preparing
`an aerogel precursor; mixing fibers with the aerogel precursor; aging the
`aerogel precursor containing the fibers to obtain a gelled composition;
`completely submerging the gelled composition in a liquid suitable for
`supercritical drying.” Id. (citing Ex. 1006, 2:15–21). Petitioner does not
`explain how this language would be interpreted by a person of ordinary skill
`in the art as disclosing dispensing of anything. Ramamurthi discloses
`preparing an aerogel precursor, mixing it with fibers, and aging it, but
`neither Ramamurthi nor Petitioner explains why these steps could not be
`performed in a single container. Petitioner directs us to no disclosure in
`Ramamurthi that requires transferring the aerogel precursor from the
`container in which it is prepared to another container before the other steps
`are carried out. In addition, as noted above, Petitioner has not demonstrated
`that Nakanishi teaches dispensing a sol (as opposed to a gel) onto a moving
`element. Id. at 37. Accordingly, we are not persuaded that Petitioner has
`shown sufficiently that Ramamurthi and Nakanishi teach or suggest
`“dispensing [a] catalyzed sol onto a moving element,” as required by all the
`challenged claims of the ’439 patent. Therefore, Petitioner does not
`establish a reasonable likelihood that the subject matter of claims 1–4, 6–9,
`15, 16, and 18–21 would have been obvious over Ramamurthi and
`Nakanishi.
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`E. Asserted Obviousness over Ramamurthi and Yada
`Petitioner argues that claims 1–4, 6–9, 15, 16, and 18–21 would have
`been obvious to a person of ordinary skill in the art given the teachings of
`Ramamurthi and Yada. Pet. 48–59.
`
`1. Yada
`Yada “relates to a process for the continuous preparation of an acrylic
`polymer, and more particularly to an improved process for continuously
`preparing an acrylic polymer by photopolymerization of a monomer on a
`moving support.” Ex. 1023, 1:6–10. Yada describes “continuously feeding
`an aqueous monomer solution in the form of a thin layer onto a moving
`support” and “continuously taking the produced sheet-like polymer gel off
`the support.” Id. at 1:11–20, 5:35–37. The “moving support” can be a “belt
`used in an industrial production” and is preferably “an endless belt.” Id. at
`2:49–50, 6:63–64. Yada describes producing gel sheets using this process,
`with polymerization of the monomer solution beginning “200 mm from the
`inlet end” and transformation of the monomer solution to “a nonflowable
`pudding-like gel . . . 400 mm from the inlet end.” Id. at 10:8–14.
`
`2. Analysis
`Petitioner argues that all limitations of claims 1–4, 6–9, 15, 16, and
`18–21 are taught or suggested by the combination of Ramamurthi and Yada.
`Pet. 48–59. In doing so, Petitioner relies on the disclosure of Ramamurthi to
`teach or suggest “dispensing material formed from a sol and a gel-inducing
`agent.” Id. at 49. As discussed above, we are not persuaded that Petitioner
`has shown sufficiently that Ramamurthi teaches or suggests “dispensing” a
`catalyzed sol, as required by all the challenged claims of the ’439 patent.
`Therefore, Petitioner does not establish a reasonable likelihood that the
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`subject matter of claims 1–4, 6–9, 15, 16, and 18–21 would have been
`obvious over Ramamurthi and Yada.
`
`F. Asserted Obviousness over Sonoda and Yada
`Petitioner argues that claims 1–4, 6–9, 15, 16, 18, and 21 would have
`been obvious to a person of ordinary skill in the art given the teachings of
`Sonoda and Yada. Pet. 37–48.
`
`Sonoda
`1.
`Sonoda discloses the production of aerogels. Ex. 1011 ¶¶ 3, 10.
`Figures 1(a)–(c) of Sonoda are reproduced below:
`
`
`
`Figures 1(a)-(c) are perspective views of
`different aerogel embodiments in Sonoda
`In Figure 1(a), cloth 11 and aerogel 2 (formed from a sol-form reaction
`solution) are alternately layered to form a laminate structure. Id. ¶ 27. To
`form the embodiment depicted in Figure 1(b), a sol-form reaction solution is
`poured over “glass wool-like block-form fiber aggregate 12” and gelled. Id.
`¶ 29. To form the embodiment depicted in Figure 1(c), a sol-form reaction
`solution is mixed with fibers 13 and gelled to form an aerogel panel “in
`which fibers 13 are used as the fiber body.” Id. ¶ 30. In each of these
`embodiments, gelling of the sol-form reaction mixture is followed by
`supercritical drying. Id. ¶¶ 27, 29, 30.
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`2. Analysis
`Petitioner argues that the combination of Sonoda and Yada teaches or
`suggests all the limitations of claims 1–4, 6–9, 15, 16, 18, and 21. Pet. 37–
`48. To prevail on its obviousness challenge, Petitioner also must
`demonstrate sufficiently that there was “some rational underpinning” for a
`person of ordinary skill in the art to have combined the teachings of Sonoda
`and Yada in the manner required in the challenged claims. KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 418 (2007). However, “the analysis need not
`seek out precise teachings directed to the specific subject matter of the
`challenged claim, for a court can take account of the inferences and creative
`steps that a person of ordinary skill in the art would employ.” Id. Petitioner
`argues that a person of ordinary skill in the art “would have recognized the
`benefits of scaling up Sonoda’s [batch] process for mass production by using
`the features of Yada.” Pet. 37–38 (citing Ex. 1003 ¶¶ 311–12). Petitioner
`also argues that a person of ordinary skill in the art would have recognized
`that using Yada’s continuous process to scale up Sonoda’s process to
`industrial scale “would allow for faster, more-efficient production of
`Sonoda’s aerogel.” Id. at 40 (citing Ex. 1003 ¶ 320). In addition, Petitioner
`argues that including Yada’s moving conveyor belt and continuous feeding
`process was a trivial design choice. Id. at 42–43 (citing Ex. 1003 ¶ 331).
`Establishing obviousness through a combination of prior-art
`references requires showing that a person of ordinary skill in the art would
`have had a reasonable expectation of succeeding in achieving the benefits of
`the claimed invention when combining the teachings of the prior art.
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`1367 (Fed. Cir. 2016); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
`
`16
`
`
`
`IPR2017-00201
`Patent 7,399,439 B2
`
`1986). Here, the question is whether Petitioner has demonstrated
`sufficiently that a person of ordinary skill in the art would have had a
`reasonable expectation of succeeding in achieving the claimed “continuous[]
`casting [of] solvent filled gel sheet material” by combining the teachings of
`Sonoda with those of Yada.
`Although Petitioner argues that “a [person of ordinary skill in the art]
`would have known how to integrate Sonoda’s fiber body to preserve the
`strengthening benefits detailed in Sonoda” and that “one obvious option for
`doing so would have been to continuously supply Sonoda’s fiber body onto
`Yada’s conveyor belt,” Petitioner does not explain how a person of ordinary
`skill in the art would have accomplished integrating and continuously
`supplying Sonoda’s fiber body, or why that person would have expected to
`succeed in accomplishing that feat. Pet. 44─45 (citing Ex. 1003 ¶¶ 337–38).
`Sonoda’s “fiber body” can be provided in any of three forms: “as
`multilayered bodies formed from nonwoven cloth, as aggregates formed
`from block-form fiber, or simply in the form of dispersed fibers.” Ex. 1011
`¶ 25. Petitioner does not explain, for any of these forms, how its suggested
`“continuously supply[ing] Sonoda’s fiber body onto Yada’s conveyor belt”
`would have been accomplished in a way that achieves the claimed
`combining of the fiber body with the catalyzed sol prior to gelation. For
`example, Petitioner does not explain how Sonoda’s multiple layers of non-
`woven cloth would remain separate, with layers of gel forming between
`them on Yada’s moving conveyor; how Sonoda’s “glass wool-like block-
`form fiber aggregate,” Ex. 1011 ¶ 29, would be provided continuously onto
`the moving conveyor; or how Sonoda’s dispersed fibers would be distributed
`throughout the catalyzed sol moving along Yada’s conveyor. Nor is the
`
`17
`
`
`
`IPR2017-00201
`Patent 7,399,439 B2
`
`testimony of Dr. Scherer on this point helpful. Dr. Scherer only repeats the
`language used in the Petition, adding no supporting evidence. Ex. 1003
`¶¶ 337–38. “Expert testimony that does not disclose the underlying facts or
`data on which the opinion is based is entitled to little or no weight.”
`37 C.F.R. § 42.65(a).
`We are left with Petitioner’s attorney argument that a person of
`ordinary skill in the art would have known how to combine the teachings of
`Sonoda and Yada in a way that accomplished the result claimed in the ’439
`patent because doing so was a matter of trivial design choice. Such bare
`argument is not sufficient to carry Petitioner’s burden. Accordingly, we
`conclude that Petitioner has not established a reasonable likelihood that the
`subject matter of claims 1–4, 6–9, 15, 16, 18, and 21 would have been
`obvious over Sonoda and Yada.
`
`CONCLUSION
`Upon consideration of the Petition, the Preliminary Response, and the
`evidence before us, we determine that Petitioner has not demonstrated a
`reasonable likelihood that it would prevail in showing that any claim of the
`’439 patent is unpatentable on the grounds argued in the Petition.
`Accordingly, we do not institute inter partes review of any claim.
`
`
`
`ORDER
`
`It is hereby
`ORDERED that the Petition is denied, and no inter partes review is
`instituted.
`
`
`18
`
`
`
`19
`
`IPR2017-00201
`Patent 7,399,439 B2
`
`
`PETITIONER:
`
`Joseph A. Mahoney
`Bryan Nese
`MAYER BROWN LLP
`jmahoney@mayerbrown.com
`bnese@mayerbrown.com
`
`
`
`
`
`PATENT OWNER:
`
`John C. Phillips
`Kevin Su
`FISH & RICHARDSON P.C.
`phillips@fr.com
`su@fr.com
`
`
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