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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 37
`Entered: November 9, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`REACTIVE SURFACES LTD., LLP,
`Petitioner,
`
`v.
`
`TOYOTA MOTOR CORPORATION,
`Patent Owner.
`
`
`Case IPR2017-00572
`Patent 8,252,571 B2
`
`
`
`
`Before CHRISTOPHER M. KAISER, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`
`INTRODUCTION
`
`A. Background
`Reactive Surfaces Ltd., LLP (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting an inter partes review of claims 1–23 of U.S. Patent No.
`8,252,571 B2 (Ex. 1001, “the ’571 patent”). Toyota Motor Corporation
`(“Patent Owner”) filed a Preliminary Response. Paper 34 (“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, Preliminary Response, and the
`evidence currently of record, we determine that Petitioner has 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 institute
`an inter partes review.
`
`B. Related Matters
`The parties have not identified any judicial or administrative matters
`that involve the ’571 patent or that are otherwise related to this case.1 Pet. 1;
`Paper 4, 1.
`
`
`1 The parties note that the ’571 patent was the subject of Reactive Surfaces
`Ltd. LLP v. Toyota Motor Engineering & Manufacturing North America,
`Inc., Case No. 1-13-CV-1098-LY (W.D. Tex.), and Reactive Surfaces Ltd.
`LLP v. Toyota Motor Corporation, Case No. 1:14-CV-1009-LY (W.D.
`Tex.), both of which have been dismissed without prejudice. Pet. 1–2; Paper
`4, 1.
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`C. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–23 of the ’571 patent are
`unpatentable based on the following grounds (Pet. 21, 24–64):2
`Statutory
`Basis
`Challenged Claim(s)
`Ground
`§ 103
`§ 103
`§ 103
`§ 103
`
`Dordick3
`Dordick and Adams4
`Dordick and Bonaventura5
`Dordick, Adams, and
`Bonaventura
`McDaniel6
`McDaniel and Huynh-Ba7
`
`§ 103
`§ 103
`
`1, 4–6, 14–19, and 21
`2, 3, 8–11, and 13
`7, 20, 22, and 23
`12
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`22 and 23
`1–21
`
`D. The ’571 Patent
`The ’571 patent is directed to “[p]rocesses for preparation of a
`protein-polymer composite material.” Ex. 1001, at [57]. These processes
`“include providing an admixture of a polymer resin, a surfactant and a non-
`aqueous organic solvent,” then mixing that admixture with “[a]n aqueous
`solution containing bioactive proteins and substantially free of surfactant” to
`produce an emulsion, which “is mixed with a crosslinker to produce a
`curable composition.” Id. The ’571 patent describes its processes as
`
`
`2 Petitioner also relies on declarations from Dr. David Rozzell and
`Dr. Douglas Lamb. Ex. 1008; Ex. 1009.
`3 Dordick et al., U.S. Patent No. 6,291,582 B1, issued Sept. 18, 2001
`(Ex. 1003, “Dordick”).
`4 Adams et al., US 2007/0282070 A1, published Dec. 6, 2007 (Ex. 1004,
`“Adams”).
`5 Bonaventura et al., U.S. Patent No. 5,998,200, issued Dec. 7, 1999
`(Ex. 1007, “Bonaventura”).
`6 McDaniel, US 2004/0109853 A1, published June 10, 2004 (Ex. 1005,
`“McDaniel”).
`7 Huynh-Ba, U.S. Patent No. 6,472,493 B1, issued Oct. 29, 2002 (Ex. 1006,
`“Huynh-Ba”).
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`“characterized by dispersion of bioactive proteins in solvent-borne resin
`prior to curing and in the composite materials, in contrast to forming large
`aggregates of the bioactive proteins which diminish the functionality of the
`bioactive proteins and protein-polymer composite materials.” Id. at 3:16–
`22.
`
`E. Illustrative Claims
`All the claims of the ’571 patent are challenged. Claims 1 and 22 are
`independent and illustrative; they recite:
`
`1. A process for preparation of a protein-polymer composite
`material, comprising:
`providing an admixture of a polymer resin, a surfactant and a
`non-aqueous organic solvent;
`mixing an aqueous solution containing bioactive proteins with
`the admixture, wherein the aqueous solution is substantially
`free of surfactant, to produce an emulsion
`mixing the emulsion with a crosslinker to produce a curable
`composition; and
`curing the curable composition, thereby producing the protein-
`polymer composite material.
`Id. at 11:53–63.
`
`22. A protein-polymer composite material, comprising:
`bioactive proteins dispersed in a two component solvent-borne
`polymer resin, the average particle size of bioactive protein
`particles in the protein-polymer composite material is in the
`range of 1 nm to 10 μm (average diameter), inclusive, with the
`proviso that the bioactive proteins are not ion-paired.
`Id. at 13:9–14:3.
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`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, 2144–45 (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 and Patent Owner both propose construing “bioactive
`proteins are not ion-paired,” a phrase that appears in claims 22 and 23.
`Pet. 12; Prelim. Resp. 15–19. Specifically, Petitioner argues that we should
`interpret this phrase as “particles of the bioactive proteins that are not
`ionically bound with an added surfactant within an aqueous solution, which
`is then combined with a polymer and organic solvent component of the two
`component solvent-borne polymer resin,” and Patent Owner argues that we
`should interpret the phrase as “bioactive proteins are not ionically bound to
`surfactant molecules in the protein-polymer composite material.” Pet. 12;
`Prelim. Resp. 16. Thus, the parties agree that bioactive proteins that are not
`ion-paired are bioactive proteins that are not ionically bound to a surfactant,
`but the parties disagree as to the medium in which the lack of ionic bonding
`takes place. Under Petitioner’s construction, a lack of protein-surfactant
`bonding in an aqueous phase during construction of a protein-polymer
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`composite material is sufficient, but Patent Owner’s construction requires
`that there be no protein-surfactant bonding in the finished product.
`On the present record, we are persuaded that Patent Owner’s
`construction is correct. “In claim construction, [we] give[] primacy to the
`language of the claims.” Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973,
`977 (Fed. Cir. 2014). Here, the phrase “bioactive proteins are not ion-
`paired” appears only in claims 22 and 23. Ex. 1001, 13:9–14:11; see Pet. 12
`(requesting construction of this phrase “in [c]laims 22 and 23”). Each of
`those claims recites a “protein-polymer composite material.” Ex. 1001,
`13:9–14:11. Further, each of those claims recites a limitation requiring that
`the “bioactive proteins” in question be “dispersed in” a particular “polymer
`resin.” Id. Neither claim recites any “aqueous solution,” nor does either
`claim recite any limitations on the method of making the recited “protein-
`polymer composite material.” Accordingly, the language of the claims does
`not support Petitioner’s proposed construction, under which the lack of
`protein-surfactant bonding must occur during a particular step of the
`manufacturing process. Instead, the language of the claims supports Patent
`Owner’s proposed construction, under which protein-surfactant bonding
`must be absent in the final product.
`Moreover, Petitioner does not explain why the construction that is
`inconsistent with the language of the claims is the broadest reasonable
`interpretation of the phrase “bioactive proteins are not ion-paired.”
`Petitioner’s entire argument for its proposed construction is as follows: “In
`view of the specification of the ’571 [p]atent and the prosecution history of
`the ’320 Application, Petitioner submits that the proposed BRI construction
`for this term is [Petitioner’s proposed construction].” Pet. 12 (citing Ex.
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`1008 ¶¶ 44–49). This is not a developed argument. To the extent that
`Petitioner makes its argument in a more fully developed manner in the Lamb
`Declaration, it violates our rule regarding incorporation by reference.
`37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference
`from one document into another document.”). Because Petitioner’s
`proposed construction is inconsistent with the language of the challenged
`claims, and because Petitioner does not support its proposed construction
`with any developed argument, we are not persuaded that we should adopt
`that construction at this stage of the proceeding. Accordingly, on the present
`record, we adopt Patent Owner’s proposed construction and interpret
`“bioactive proteins are not ion-paired” as “bioactive proteins are not
`ionically bound to surfactant molecules in the protein-polymer composite
`material.”
`In addition to the phrase “bioactive proteins are not ion-paired,”
`Petitioner proposes construing “the polymerizable composition” and “the
`composite material.” Pet. 12–13. For the purposes of this decision, we
`determine that neither of these terms requires express construction. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (noting that “only those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy”).
`
`B. Grounds Based on Dordick
`Petitioner argues that the subject matter of claims 1, 4–6, 14–19, and
`21 would have been obvious to a person of ordinary skill in the art given the
`teachings of Dordick. Pet. 21, 24–49. In addition, Petitioner argues that the
`subject matter of claims 2, 3, 8–11, and 13 would have been obvious to a
`person of ordinary skill in the art given the teachings of Dordick and Adams;
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`that the subject matter of claims 7, 20, 22, and 23 would have been obvious
`to a person of ordinary skill in the art given the teachings of Dordick and
`Bonaventura; and that the subject matter of claim 12 would have been
`obvious to a person of ordinary skill in the art given the teachings of
`Dordick, Adams, and Bonaventura. Id.
`
`1. Dordick
`Dordick relates to “[a] method of preparing a polymer-protein
`composite based upon placing a protein in solution in an organic phase via
`the ion-pairing of the protein with a surfactant.” Ex. 1003, at [57]. The
`method of Dordick includes “contacting and mixing a protein-containing
`aqueous solution with a surfactant in an organic solution to yield an organic
`phase containing a[] protein-surfactant ion pair.” Id. at 3:40–45. Dordick
`then discloses “separating out the organic phase that contains the ion pair
`from the aqueous phase that no longer contains the ion pair.” Id. at 3:45–47.
`Next, Dordick discloses “removing the organic solution from th[is] organic
`phase” and “dissolving the ion-pair in a second organic solution.” Id. at
`3:47–49. Dordick teaches that the “second organic solution” contains either
`a “polymer or a monomer that can be polymerized to yield the polymer.” Id.
`at 3:22–25.
`
`2. Adams
`Adams “relates to coating compositions” that “are particularly useful
`for refinishing automobiles and trucks.” Ex. 1004, at [57]. Adams teaches
`compositions that include “a crosslinkable film-forming resin” and “a
`crosslinking portion.” Id. ¶¶ 10–12. The “crosslinkable film-forming resin”
`may be a hydroxyl-functional acrylic copolymer, which may be a component
`of an admixture that also includes a surfactant. Id. ¶ 125, Table 5.
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`3. Bonaventura
`Bonaventura is directed to “a method for preventing fouling of an
`aquatic apparatus by an aquatic organism which comprises affixing
`biologically active chemicals to a surface intended for use in contact with an
`aquatic environment containing said organism wherein said chemicals
`possess anti-fouling properties in a bound state.” Ex. 1007, 2:46–51. It
`teaches that “the attachment and/or growth and development of organisms
`on a submerged surface may be hindered by use of non-toxic coatings
`containing combinations of immobilized bioactive species, these being
`enzymes, enzyme inhibitors, repellants, chelating agents, surfactants or non-
`metallic toxicants.” Id. at 2:51–56. Bonaventura discloses that enzymes
`used as the “immobilized bioactive species” have a diameter of
`approximately 4 nanometers. Id. at 5:33–46.
`
`4. Analysis
`a. Claims 1–21
`Each of claims 1–21 recites a limitation requiring mixing an aqueous
`bioactive protein solution with “an admixture” that includes “a polymer
`resin” or, more specifically in the case of claim 8 and its dependent claims,
`“a hydroxyl-functionalized acrylate resin.” Ex. 1001, 11:53–13:8.
`Petitioner argues that Dordick teaches or suggests this limitation. Pet. 25,
`34–35. Specifically, Petitioner argues that “Dordick . . . teaches that the
`organic solution can comprise polymerizable monomer(s)” and “that
`methodologies thereof can employ only already-formed polymers in place of
`monomers.” Id. at 25 (citing Ex. 1003, 6:29–36, 6:62–65, 7:51–53, 7:60–65,
`10:54–56, 11:31–33, 19:38–46, 19:51–54). Patent Owner argues that the
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`organic admixture with which Dordick teaches mixing the aqueous protein
`solution does not contain the recited “polymer resin.” Prelim. Resp. 20–30.
`On the present record, we are not persuaded that Petitioner has shown
`sufficiently that Dordick teaches mixing its aqueous protein solution with an
`admixture that contains a polymer resin. The method of Dordick includes
`“contacting and mixing a protein-containing aqueous solution with a
`surfactant in an organic solution to yield an organic phase containing a[]
`protein-surfactant ion pair.” Ex. 1003, 3:40–45. Dordick then discloses
`“separating out the organic phase that contains the ion pair from the aqueous
`phase that no longer contains the ion pair.” Id. at 3:45–47. Next, Dordick
`discloses “removing the organic solution from th[is] organic phase” and
`“dissolving the ion-pair in a second organic solution.” Id. at 3:47–49. Thus,
`Dordick discloses mixing its aqueous protein solution with a first organic
`solution, and Dordick discloses the use of a second organic solution. But
`only the first organic solution is disclosed as being mixed with the aqueous
`protein solution, and only the second organic solution is described as
`containing either a “polymer or a monomer that can be polymerized to yield
`the polymer.” Id. at 3:22–25.
`Although Dordick discloses optionally using a polymerizable
`monomer as the first organic solvent in order to avoid having to remove the
`first organic solvent and dissolve the protein-surfactant ion pairs in a
`separate organic monomer, Dordick does not disclose using a polymer as a
`part of the first organic solution. Id. at 6:29–36 (the first “organic phase can
`actually consist of, consist essentially of, or comprise the polymerizable
`monomer”); 7:51–53 (“The polymerizable monomer is selected from any
`desired polymerizable monomer.”), 10:3–12 (disclosing preparation of first
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`organic solution), 10:54–56 (stating that polymerizable monomer may be
`“used as a solvent” in preparing first organic phase, rendering later addition
`of polymerizable monomer second organic phase unnecessary). We are not
`persuaded that Dordick’s separate teachings of (1) using a polymer instead
`of a monomer in the second solution and (2) using a monomer in the first
`solution instead of in the second solution could or would have been
`combined by a person of ordinary skill in the art. The step of polymerization
`does not occur in Dordick until after the dissolution of the protein-surfactant
`ion pairs into the second organic solution, and Dordick discusses the
`optional use of polymers rather than monomers only as a means of obviating
`this polymerization step. Id. at 11:30–32 (“in methodologies that employ
`only already-formed polymers, the polymerization can be omitted because
`the necessary polymer has already formed”). In other words, at no point
`does Dordick disclose the combination of an aqueous protein solution and a
`polymer in an organic phase.
`Petitioner does not explain sufficiently why a person of ordinary skill
`in the art would have interpreted the combination of (1) Dordick’s teaching
`that a polymerizable monomer may be used as the first organic solution and
`(2) Dordick’s teaching that the polymerizable monomer of the second
`organic solution may be replaced with a polymer as a teaching that the first
`organic solution could contain a polymer. Pet. 25. It is not necessarily the
`case that a suggestion in a prior-art reference that one thing optionally can be
`done and another suggestion in the same reference that another thing
`optionally can be done amount, together, to a suggestion that the
`combination of both things can be done. Proof that the combination of
`optional steps would be understood by the person of ordinary skill in the art
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`to be workable requires some explanation, which Petitioner does not provide
`here. Id. To the extent that Petitioner makes this argument in the Lamb
`Declaration rather than in the Petition, Petitioner’s failure to include the
`explanation in its Petition violates our rule against incorporation by
`reference. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by
`reference from one document into another document.”). Accordingly, we
`conclude that Petitioner has not shown sufficiently that the prior art teaches
`or suggests the limitation of claims 1–21 requiring the mixture of an aqueous
`bioactive protein solution with an organic solution containing polymer resin.
`
`b. Claims 22 and 23
`Claims 22 and 23 each recite a material comprising “bioactive
`proteins . . . [that] are not ion-paired.” Ex. 1001, 13:9–14:11. Petitioner
`relies on Dordick to teach or suggest the “not ion-paired” limitation. Pet.
`41–42. Specifically, Petitioner argues that “Dordick teaches an aqueous
`solution that includes only an aqueous buffer solution and enzyme mixed
`therewith and that does not include any added surfactant that would ionically
`pair with the enzyme.” Id. at 41. Under Petitioner’s proposed construction
`of “bioactive proteins are not ion-paired,” the lack of any surfactant in the
`aqueous solution with which the proteins could bond means that Dordick’s
`proteins are not ion-paired in the aqueous solution, which is sufficient to
`satisfy the “not ion-paired” limitation of claims 22 and 23. Id.
`As discussed above, however, we do not adopt Petitioner’s
`construction of “bioactive proteins are not ion-paired,” because Petitioner
`does not explain why claims 22 and 23, which recite a finished composition,
`should be interpreted as imposing a limitation on the process of making that
`composition, rather than on the composition itself. Instead, we construe
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`“bioactive proteins are not ion-paired” as “bioactive proteins are not
`ionically bound to surfactant molecules in the protein-polymer composite
`material.” Petitioner does not explain why Dordick teaches or suggests that
`its bioactive proteins are not ionically bound to surfactant molecules in its
`finished protein-polymer composite. Pet. 41–42. In fact, the present record
`strongly suggests that they are so bound. Ex. 1003, 3:40–53 (method
`includes producing “a[] protein-surfactant ion pair,” then “contacting the
`dissolved ion-pair . . . with a polymer . . . to form a polymer-protein
`complex”); 4:66–5:1 (“It has been discovered that proteins, such as
`enzymes, can be dissolved in organic solvents via the ion-pairing of the
`protein with a surfactant.”). Accordingly, we conclude that Petitioner has
`not shown sufficiently that the prior art teaches or suggests the limitation of
`claims 22 and 23 that requires that the bioactive proteins of the protein-
`polymer composite material not be ion-paired.
`
`C. Grounds Based on McDaniel
`Petitioner argues that claims 22 and 23 would have been obvious to a
`person of ordinary skill in the art given the teachings of McDaniel. Pet. 21,
`49–64. Petitioner also argues that claims 1–21 would have been obvious to
`a person of ordinary skill in the art given the teachings of McDaniel and
`Huynh-Ba. Id.
`
`1. McDaniel
`McDaniel relates to “novel coatings and paints comprising a
`biomolecule composition.” Ex. 1005, at [57]. The reference teaches a
`coating made of “an acrylic resin and an epoxide, a polyurethane comprising
`an isocyanate moiety, an amino resin, or a combination thereof.” Id. ¶ 63. It
`also teaches crosslinking “an acrylic resin comprising . . . a hydroxyl
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`moiety . . . with a[] urethane resin.” Id. ¶ 512. The coating McDaniel
`teaches “comprises a bioactive molecule such as an enzyme composition
`that retains activity after being admixed with paint” and “still retains activity
`after the paint is applied to a surface, [rendering] the surface bioactive.” Id.
`¶ 23. McDaniel teaches “dispersion” of the biomolecules in the coating “by
`application of physical force (e.g., impact, shear) to the composition,”
`including by “grinding and/or milling.” Id. ¶ 781.
`
`2. Huynh-Ba
`Huynh-Ba is directed to “[a] fast hardening clear coating composition
`for repairing a clearcoat/colorcoat finish of a vehicle.” Ex. 1006, at [57].
`The coating composition of Huynh-Ba “compris[es] a film forming binder
`and an organic liquid carrier, where the binder contains a hydroxyl
`component comprising a hydroxyl-containing acrylic polymer and a
`hydroxyl-terminated polyester oligomer, and an organic polyisocyanate
`crosslinking component, at least [a] portion of which comprises a trimer of
`isophorone diisocyanate.” Id. Huynh-Ba further discloses that its “binder
`contains two components, a hydroxyl and an organic polyisocyanate
`crosslinking component, which are capable of reacting with each other to
`form urethane linkages.” Id. at 3:1–4.
`
`3. Analysis
`a. Claims 1–21
`Petitioner argues that, in light of the teachings of McDaniel, it was
`“well-known to a [person of ordinary skill in the art]” to prepare a protein-
`polymer composite material by mixing “an admixture of a polymer resin, a
`surfactant and a non-aqueous organic solvent” with “an aqueous solution
`containing bioactive proteins” before adding “a crosslinker,” as required by
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`claims 1–21.8 Pet. 53 (citing Ex. 1008 ¶ 211); Ex. 1001, 11:53–13:8. Patent
`Owner argues that Petitioner does not show sufficiently that a person of
`ordinary skill in the art would have found these order-of-mixing limitations
`obvious. Prelim. Resp. 45. On the present record, we agree with Patent
`Owner.
`Petitioner’s entire argument with respect to the component mixing
`order that is recited in claims 1–21 is as follows:
`With respect to a specific order in which the contents of the
`containers are mixed together, it would be well-known to a
`[person of ordinary skill in the art] at the time of the invention
`of the ’571 [p]atent to mix the polymer resin containing
`component of the three-pack coating (i.e., the first container)
`with the container comprising the microorganism based
`particulate material and water (i.e., the third container) for
`allowing an emulsion to be produced. See Lamb Declaration
`[Ex. 1008], ¶211.
`Pet. 53. A conclusory statement that a disputed limitation was “well-known
`to a [person of ordinary skill in the art]” is not sufficient to identify “[h]ow
`the construed claim is unpatentable” or to “specify where each element of
`the claim is found in the prior art patents or printed publications relied
`upon.” 37 C.F.R. § 42.104(b)(4). Accordingly, we are not persuaded that
`Petitioner has shown sufficiently that the combination of McDaniel and
`
`
`8 Claims 8–12 more specifically require mixing “an admixture of a
`hydroxyl-functionalized acrylate resin, a surfactant and a solvent, the solvent
`having a log P in the range of –0.5-2, inclusive” with “an aqueous solution
`containing a bioactive protein” before adding “a polyisocyanate crosslinker.”
`Ex. 1001, 12:14–38. Petitioner’s argument for the obviousness of the order-
`of-mixing limitations is the same as for the remainder of claims 1–21. Pet.
`53.
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`Huynh-Ba teaches or suggests the order-of-mixing limitations of claims 1–
`21.
`
`b. Claims 22 and 23
`Petitioner argues that McDaniel teaches or suggests all the limitations
`of claims 22 and 23. Pet. 58–61 (citing Ex. 1005 ¶¶ 3, 23, 27, 32, 33, 47, 78,
`83, 89–91, 100, 101, 116, 289, 299, 301, 359, 779, 788, Claims 251–55,
`307; Ex. 1008 ¶¶ 186–95). At this stage of the proceeding, Patent Owner
`argues only that McDaniel does not teach or suggest the limitation of claims
`22 and 23 that requires that the small bioactive protein particles be
`“dispersed in a . . . polymer resin.” Prelim. Resp. 57–62.
`Petitioner argues that several portions of McDaniel teach or suggest
`the “dispersed in” limitation. Pet. 59 (citing Ex. 1005 ¶¶ 3, 23, 27, 32, 33,
`47, 83, 89, 289, 299, 301). Petitioner does not explain in the Petition how
`these portions of McDaniel teach or suggest this limitation, and we note that
`none of these paragraphs discusses how to disperse small particles
`throughout the polymer resin. Instead, at best, the cited portions of
`McDaniel discuss including or admixing proteins in the polymer resin.
`Ex. 1005 ¶¶ 3, 23, 27, 32, 33, 83, 89, 289, 299. Some of these portions of
`McDaniel do not even discuss proteins at all, much less how the proteins are
`dispersed throughout the resin. Id. ¶¶ 47, 301.
`Patent Owner, however, directs our attention to paragraph 781 of
`McDaniel, which does discuss methods of dispersing the bioactive material
`(e.g., proteins) through the polymer resin. Prelim. Resp. 58 (quoting
`Ex. 1005 ¶ 781). Paragraph 781 discloses that “dispersion of the particulate
`material is promoted by application of physical force (e.g., impact, shear) to
`the composition.” Ex. 1005 ¶ 781. Further, “[t]echniques such as grinding
`
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`
`and/or milling are typically used to apply physical force for dispersion of
`particulate matter,” and “it is contemplated that such application of physical
`force may be used in the dispersal of the microorganism based particulate
`material of [McDaniel].” Id. On the present record, this disclosure teaches
`or suggests dispersing bioactive material through the polymer resin using
`physical force.
`Patent Owner argues that McDaniel’s disclosure that applying “such
`force may damage the structural integrity of the cell wall and/or cell
`membrane” and “may alter a physical property, a chemical property, an
`optical property, or a combination thereof, of a microorganism based
`particulate material,” id., fails to provide an ordinary artisan with a
`reasonable expectation of success in using the disclosed dispersion
`techniques to disperse bioactive proteins. Prelim. Resp. 57–62. McDaniel
`does teach that the disclosed dispersion methods can damage and alter the
`properties of the bioactive material being dispersed. Further, Dr. Dordick
`testifies that this damage, “even [when it occurs only] at Angstrom levels,
`can result in dramatic losses in catalytic activity of an enzyme.” Ex. 2010
`¶ 197. Patent Owner argues that the combination of the McDaniel
`disclosure and Dr. Dordick’s testimony establishes that the dispersion
`techniques McDaniel teaches are unlikely to be able to disperse bioactive
`materials without deactivating those materials. Prelim. Resp. 58–59.
`On the present record, we are not persuaded that this is the case.
`McDaniel states only that the physical-force dispersion of bioactive material
`“may damage” the material and “may alter” the physical, chemical, or
`optical properties of the material. Ex. 1005 ¶ 781. This does not support a
`finding that the material will be deactivated. Similarly, Dr. Dordick testifies
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`IPR2017-00572
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`
`only that the damage inflicted on the bioactive material by the physical force
`of McDaniel “can result in dramatic losses in catalytic activity.” Ex. 2010
`¶ 197. Such testimony stops short of stating that the bioactive material can
`be deactivated, much less that it is likely to be, or will be, deactivated.
`Although there remains some question as to whether the dispersion
`techniques McDaniel teaches can disperse the “bioactive proteins” of claims
`22 and 23 without deactivating those proteins, we are persuaded that, on the
`present record, there is a reasonable likelihood that those techniques can do
`so.
`
`With respect to the other limitations of claims 22 and 23, we are
`persuaded that Petitioner has shown sufficiently for purposes of the present
`decision that McDaniel teaches or suggests those limitations. See Pet. 58–61
`(citing Ex. 1005 ¶¶ 3, 23, 27, 32, 33, 47, 78, 83, 89–91, 100, 101, 116, 289,
`299, 301, 359, 779, 788, Claims 251–55, 307; Ex. 1008 ¶¶ 186–95).
`
`CONCLUSION
`Upon consideration of the Petition, the Preliminary Response, and the
`evidence before us, we determine that Petitioner has demonstrated a
`reasonable likelihood that it would prevail in showing that claims 22 and 23
`are unpatentable under 35 U.S.C. § 103 as obvious over McDaniel.
`Accordingly, we institute an inter partes review of these claims on this
`ground. We determine that Petitioner has not demonstrated a reasonable
`likelihood that it would prevail in showing that (1) claims 1, 4–6, 14–19, and
`21 are unpatentable under 35 U.S.C. § 103 as obvious over Dordick;
`(2) claims 2, 3, 8–11, and 13 are unpatentable under 35 U.S.C. § 103 as
`obvious over the combination of Dordick and Adams; (3) claims 7, 20, 22,
`and 23 are unpatentable under 35 U.S.C. § 103 as obvious over the
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`combination of Dordick and Bonaventura; (4) claim 12 is unpatentable
`under 35 U.S.C. § 103 as obvious over the combination of Dordick, Adams,
`and Bonaventura; or (5) claims 1–21 are unpatentable under 35 U.S.C. § 103
`as obvious over the combination of McDaniel and Huynh-Ba. Accordingly,
`we do not institute an inter partes review of these claims on these grounds.
`The Board has not made a final determination on the patentability of any
`challenged claim.
`
`
`ORDER
`
`It is hereby
`ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review
`is hereby instituted to determine whether claims 22 and 23 are unpatentable
`under 35 U.S.C. § 103 as obvious over McDaniel;
`FURTHER ORDERED that no ground other than that specifically
`identified above is authorized for this inter partes review; and
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial
`commencing on the entry date of this decision.
`
`
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`
`PETITIONER:
`David O. Simmons
`IVC PATENT AGENCY
`dsimmons@ivcpatentagency.com
`
`Jonathan D. Hurt
`MCDANIEL & ASSOCIATES, PC
`jhurt@technologylitigators.com
`
`Mark A.J. Fassold
`Jorge Mares
`Watts Guerra LLP
`mfassold@wattsguerra.com
`jmares@wattsguerra.com
`
`
`
`PATENT OWNER:
`Joshua A. Lorentz
`Richard Schabowsky
`John D. Luken
`Oleg Kh
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