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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`
`ASPHALT PRODUCTS UNLIMITED, INC.,
`Petitioner,
`
`v.
`
`BLACKLIDGE EMULSIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01241 (Patent 7,503,724 B2)
`Case IPR2017-01242 (Patent 7,918,624 B2)
`____________
`
`Record of Oral Hearing
`Held: August 8, 2018
`___________
`
`
`
`Before MITCHELL G. WEATHERLY, JAMES A. TARTAL, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`Case IPR2017-01241 (Patent 7,503,724 B2)
`Case IPR2017-01242 (Patent 7,918,624 B2)
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`MICHAEL K. LEACHMAN, ESQUIRE
`Jones Walker LLP
`8555 United Plaza Boulevard, Suite 500
`Baton Rouge, Louisiana 70809
`225-248-2420
`mleachman@joneswalker.com
`
`ROBERT L. WADDELL, ESQUIRE
`Jones Walker LLP
`600 Jefferson Street, Suite 1600
`Lafayette, Louisiana 70501
`337-593-7600
`rwaddell@joneswalker.com
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JOHN F. TRIGGS, ESQUIRE
`SETH R. OGDEN, ESQUIRE
`RYAN D. LEVY, ESQUIRE
`WILLIAM E. SEKYI, ESQUIRE
`MARK KILGORE, ESQUIRE
`Patterson Intellectual Property Law, P.C
`1600 Division Street, Suite 500
`Nashville, Tennessee 37203
`615-242-2400
`jft@iplawgroup.com
`sro@iplawgroup.com
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday, August 8, 2018,
`commencing at 1 pm ET, at the U.S. Patent and Trademark Office, 600 Dulany Street,
`Alexandria, Virginia.
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`Case IPR2017-01242 (Patent 7,918,624 B2)
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`P R O C E E D I N G S
`- - - - -
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`
`
`1:03 p.m.
`JUDGE WEATHERLY: My name is Mitch Weatherly. I'm
`one of the judges on the panel. I'm joined by Judge Tartal and Judge
`Goodson in our San Jose office.
`This is a hearing for two proceedings, IPR2017-01241 and
`IPR2017-01242, relating to U.S. Patent Nos. 7,503,724 and
`7,918,624, respectively.
`Petitioner is Asphalt Products Unlimited, Incorporated, and
`the Patent Owner is Blacklidge Emulsions, Inc.
`During your presentations, please be sure to mention the slide
`number that you're on. It will assist Judge Goodson in following
`along with the presentation. It will also make the record clearer for
`the panel later on when we're considering that record in the course of
`rendering a final written decision.
`Pursuant to our Hearing Order, each party has 60 minutes to
`present its argument. Because of the similarity presented in the two
`cases, we're going to conduct the hearings simultaneously or serially,
`however you would like to say it, for both cases.
`Patent Owner filed a Motion to Amend in both proceedings.
`So, we would ask Petitioner to open the hearing by presenting its case
`regarding the patentability of any claim at issue in the proceedings,
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`including the original claims and any claims proposed by Patent
`Owner's Motion to Amend.
`Patent Owner, you'll have an opportunity to respond to
`Petitioner's argument and, also, to argue in support of your Motion to
`Amend.
`Petitioner, you can reserve time to respond to arguments
`presented by the Patent Owner during their presentation.
`Before we start, I'd like to have everyone introduce
`themselves, including anyone you may have brought with you. And
`we'll start with Petitioner.
`MR. LEACHMAN: Michael Leachman, and I'm here with
`my colleague Robert Waddell. We're here on behalf of Petitioner
`Asphalt Products Unlimited.
`JUDGE WEATHERLY: Mr. Leachman, who's going to be
`making the presentations?
`MR. LEACHMAN: I will, Your Honor.
`JUDGE WEATHERLY: All right. Thank you very much.
`And Patent Owner?
`MR. TRIGGS: Good afternoon. Yes, good afternoon, Your
`
`Honor.
`
`John Triggs. I represent the Petitioner. I'll be making the
`argument. And my colleagues that are with me today -- the Patent
`Owner. Excuse me, Your Honor. The Patent Owner. And I'll be
`representing the Patent Owner here today. And my colleagues are
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`Seth Ogden, William Sekyi, Ryan Levy, and Mark Kilgore, all of
`Patterson Intellectual Property Law.
`JUDGE WEATHERLY: Excellent. Thank you.
`MR. TRIGGS: Thank you, Your Honor.
`JUDGE WEATHERLY: Petitioner, how much time would
`you like to reserve for rebuttal?
`MR. LEACHMAN: Your Honor, 15 minutes for rebuttal.
`JUDGE WEATHERLY: Okay. Great.
`So, anytime you're ready, you can come to the podium and
`begin. I'll start the time when you start.
`MR. LEACHMAN: Would you like me to pass out the
`demonstratives before?
`JUDGE WEATHERLY: Sure.
`JUDGE TARTAL: Thank you.
`JUDGE WEATHERLY: Anytime you're ready.
`MR. LEACHMAN: Both the 724 and 624 patents are
`directed to using a low-tracking or no-tracking tack coat in highway
`construction. The 724 patent in the summary section, second
`sentence, specifies that the goal is to produce a tack coating with a pen
`value and a softening point in the range of hard pen asphalt
`compositions. That's in column 4, at lines 60 to 62.
`In the application, and as well as in the 724 patent, it was
`represented that the invention was the use of hard pen asphalt
`compositions to produce these tack coats that reflect the properties of
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`hard pen asphalts. So, again, the summary section said the goal is to
`produce a tack coat on the roadway that has the properties of a hard
`pen asphalt.
`And here we have in the patent itself asserting that, prior to
`2005, when this application was filed, hard pen asphalt compositions
`had not been used in this way. We see, again, during the prosecution
`history of the application, the Patent Owner once again representing
`that the Applicant discovered that you can use these hard pen asphalts
`in the emulsion to end up with the end-result goal of a tack coat on the
`roadway that reflects the properties of the hard asphalt.
`JUDGE WEATHERLY: I was about to remind you.
`MR. LEACHMAN: That was Slide No. 4, for Judge
`Goodson. I apologize.
`So, Judge Goodson, we're now on Slide No. 5.
`And this is where the invention is today.
`JUDGE WEATHERLY: Yes. I'll just let you know that I
`think the panel is fairly familiar with the technology at issue, although
`certainly not to the level of the experts in this case. So, while I know
`that we've given each side an hour, it's a very deep record. I expect
`you may get a few questions. So, I don't know how much time you
`need to spend on background of the market and --
`MR. LEACHMAN: I agree and I understand. I have a lot of
`slides to go through and a lot of issues to cover.
`JUDGE WEATHERLY: Right, right.
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`MR. LEACHMAN: But there is one poignant point on this
`slide in particular, Slide No. 5, that I think is important to discuss, and
`it is somewhat background, but I think this is background that colors
`the entire case --
`JUDGE WEATHERLY: Sure.
`MR. LEACHMAN: -- the entire record that has been
`presented to you, which is quite voluminous, I know.
`And it comes in the last sentence on Slide No. 5, where now
`the invention has shifted to where the Patent Owner is arguing that the
`724 patent recognized for the first time the importance of softening
`point and penetration value of the tack coat after curing, rather than
`the penetration value of the base asphalt and creating the trackless
`tack coat.
`So, we have this transition. We also have the patent
`recognizing the goal is to have a tack coat on the roadway that reflects
`the pen and softening point values of the base asphalt. This assertion
`right here acts like these two things are separating. The problem is
`that skilled artisans already knew that, if you start with a hard asphalt
`or any particular asphalt in an emulsion, you will generally get the
`properties of that asphalt in the residue after it is cured. That's
`something that's set forth in the Shell Bitumen Handbook. It's set
`forth in BAEM, and it is demonstrated in the Gordillo reference.
`To understand why skilled artisans already knew and were
`focused on having an actual tack coat that had a very high softening
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`point, you have to understand what the softening point is telling you
`to begin with. The softening point is a measure of an asphalt's
`consistency. It's a measurement of asphalt's consistency at high
`temperatures. Meanwhile, the pen value is the measurement of an
`asphalt's consistency at ambient temperatures, 25 degrees Celsius
`which is 77 degrees Fahrenheit. So, these are two different
`measurements of the same thing, consistency of asphalt.
`Why we're worried about softening point when it comes to
`tack coats is because tack coats are typically applied on asphalt, and
`oftentimes during the summer. And so, in Texas or Arizona, that
`asphalt that you're applying the tack coat onto, it's going to be very
`hot. It could be 140 degrees Fahrenheit or higher. So, that means
`when you use a soft asphalt to make an emulsion, your laid-down tack
`coat is also going to have a lower softening point due to the nature of
`being a soft asphalt. So, at 140 degrees Fahrenheit, that tack coat
`will be tacky and sticky. It will be quasi-liquid. In comparison, a
`hard asphalt, which is going to have a high softening point by nature,
`will tend to not be sticky because it has not reached it softening point,
`once applied to the ground.
`This is demonstrated here, which is a table, and this is Slide 7,
`Table 4.1, where you see various different grades of asphalt, ranging
`from 20/30 to two 250/330 grades. And these grades are based upon
`pen value. But you notice there's an associated softening point
`associated with each of these grades. And so, for a 20/30 grade
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`asphalt, its penetration will range from 20 to 30 to meet this grade,
`and its softening point will range from 55 to 63 degrees. In
`comparison, looking at the other end of the spectrum, the softest
`asphalt grade shown in this table has a softening point of 30 to 38
`degrees Celsius. What that means is, on a hot day in Texas, this soft
`asphalt, when using emulsion and sprayed as a tack coat, is going to
`remain soft because the softening point of that asphalt is going to be
`reached once applied on the roadway at ambient temperatures.
`The correlation between pen values and softening points of a
`given asphalt is something that's recognized both in the Shell Bitumen
`Handbook as well as the 724 patent itself. We also see that examples
`in the patent itself are actually practicing its invention to produce a
`tack coat that has the properties of a hard asphalt composition. It's
`done one of two ways. No. 1, you use a hard asphalt. That's the
`only disclosure the 724 patent gives you for how to practice this
`invention, use a hard asphalt.
`The example in column 13, which is Slide 6 --
`JUDGE WEATHERLY: No, I don't think that's correct. I
`mean, there is a disclosure in the patent that talks about using a mid-
`pen, so-called mid-pen, even what might be characterized as a soft
`pen asphalt, along with additives.
`MR. LEACHMAN: That's the second way.
`JUDGE WEATHERLY: Okay.
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`MR. LEACHMAN: So, the first way is to use -- I think
`there's only --
`JUDGE WEATHERLY: I thought you said it was the only
`way. I may have misheard you.
`MR. LEACHMAN: If I did, it was a mistake. What I meant
`to say, there's two ways that the patent teaches you that you can end
`up with this tack coat that has properties of hard asphalt. No. 1, you
`use a hard asphalt to start with. No. 2, you use a medium or soft
`asphalt and add penetrating altering additives. These would be waxes
`or rubber-like polymers, which will, then, once in the emulsion,
`harden the base asphalt, so that the residue will have properties of a
`hard asphalt once it's cured on the roadway.
`JUDGE WEATHERLY: By "residue," you mean a cured --
`MR. LEACHMAN: Correct.
`JUDGE WEATHERLY: -- coat? Okay.
`MR. LEACHMAN: So, sometimes you'll see, perhaps in
`some of the expert declarations and depositions, you've been seeing
`this word "residue" be used. That's a term that the experts and the
`skilled artisans use to refer to the emulsion after it’s broken and cured.
`And the idea is that the residue is left after the water is evaporated.
`And so, when I use the word "residue," it's coterminous with saying
`the cured tack coat.
`JUDGE WEATHERLY: Okay.
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`MR. LEACHMAN: So, we have here the invention being
`disclosed and the two ways to get the goal of having a hard asphalt as
`your tack coat on the roadway, being use a hard asphalt to begin with
`or use a medium to soft asphalt and use penetrating altering additives
`that will make the residue reflect properties of hard asphalt.
`JUDGE WEATHERLY: You're saying a word before
`"altering" that I'm --
`MR. LEACHMAN: Penetration.
`JUDGE WEATHERLY: Penetration?
`MR. LEACHMAN: Altering, altering additives.
`JUDGE WEATHERLY: By "penetration altering," do you
`mean altering the pen hardness?
`MR. LEACHMAN: Correct.
`JUDGE WEATHERLY: Okay.
`MR. LEACHMAN: And so, that, in effect, will also raise the
`softening point.
`JUDGE WEATHERLY: No, I understand.
`MR. LEACHMAN: And so, that's the terminology that's
`used in the patents themselves, which is why I'm using it. Dr. James,
`in his expert reports and depositions, he would call these "modifiers".
`It could be pen modifiers, if you will.
`JUDGE WEATHERLY: Okay.
`MR. LEACHMAN: So, what we have here, just to recap, we
`have the patent that discloses two ways to get to the goal of having a
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`tack coat that reflects properties of hard asphalt. Yet, we have -- in
`Europe, it's been presented -- we have evidence that's been presented
`into the record in this proceeding showing that in Europe these exact
`same processes had been being utilized for several years prior to the
`724 and 624 patents being filed.
`Here, on Slide 10, we have the Recasens reference, which is
`disclosing the use of hard asphalts to create trackless tack coat
`emulsions. Duenas, on Slide 11, is disclosing the same thing. Potti,
`on Slide 12, is disclosing the use of hard asphalts to create trackless
`tack coats. And lastly, we have Pasquier, on Slide 13, that, again, is
`disclosing using a hard asphalt to create a trackless tack coat
`emulsion.
`So, going back to this slide on Slide 5, with the Patent Owner
`asserting that it's the 724 patent that for the first time recognized the
`importance of the softening point in penetration value of the tack coat
`after curing, that, then, begs the question, well, why were all of these
`people using hard asphalts in these trackless tack coat emulsions in
`Europe? And the reason is because everyone knew, skilled artisans
`knew, that if you used hard asphalts in your emulsion, you would
`achieve this result. You would achieve the result --
`JUDGE GOODSON: Mr. Leachman, can I jump in with a
`question about these European publications?
`MR. LEACHMAN: Yes.
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`JUDGE GOODSON: In connection with its secondary
`considerations, the Patent Owner has argued that, when it began to
`commercialize the technology of the 624 and 724 patents, it faced
`skepticism in the industry that hard pen tack coats could work, and
`that hard pen trackless tack coats had not been widely adopted in the
`U.S. market.
`Several questions on that topic, and I'll just give them all to
`you now, and you can discuss them in whatever order you think is
`appropriate. First of all, I didn't see any argument in the Petitioner's
`reply regarding secondary considerations. So, if I missed something,
`let me know. I think the only part of the record where Petitioner
`presented argument on secondary considerations was in the final
`pages of the petition.
`And secondly, do you agree that hard pen trackless tack coats
`had not been adopted in the U.S. market at the time of the inventions
`here? And if not, why not? Given these European publications, why
`hadn't these techniques made the jump into the U.S. market?
`MR. LEACHMAN: Thank you, Judge Goodson.
`To answer your question, I do not have any evidence of a prior
`use in the United States prior to 2005, but, again, that wasn't, given
`that we are constrained to documentary evidence, that wasn't a focus
`of any private search.
`Regarding why this technology in Europe had not been
`transitioned over to the United States prior to 2005, I think that is
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`probably more of just an industry -- just the slowness of the industry
`in the United States getting comfortable with making these emulsions.
`And so, my understanding of how the asphalt industry works in the
`United States is it's done by a state-by-state basis where you have
`specs. So, you have a job that's going to be bid out for perhaps
`millions of dollars, and these state specs are what determines what
`products can and cannot be used. So, a product has to not only be
`known to be usable, it has to be demonstrated to be usable. And
`Blacklidge Emulsions was the first company in the United States that
`went through the effort of demonstrating the usability of trackless tack
`coats in the U.S. But that doesn't take away from the fact that the
`concept wasn't already known in Europe.
`We believe that we addressed in our petition itself the
`secondary considerations sufficiently. And so, that's why we didn't
`address it in our reply. We believe that the fact that this technology
`has already been disclosed in Europe, the fact that there was
`commercial success, or doubt in the United States from individual
`state agencies on its usability, doesn't overcome the fact that we have
`a litany of references showing that this technology in Europe had
`already been used.
`JUDGE GOODSON: Okay. Thank you.
`And another point that the Patent Owner made on this same
`topic is that Dr. James invited Mr. Blacklidge to speak at a conference
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`in Paris regarding the technology that's the subject of these patents.
`Do you agree with that?
`MR. LEACHMAN: I believe it certainly did happen. I have
`no reason not to believe it did happen.
`JUDGE GOODSON: Okay. And is there any evidence in
`the record to tell us why Dr. James invited Mr. Blacklidge to speak
`about technology that had already been known in the literature in
`Europe --
`MR. LEACHMAN: I don't believe --
`JUDGE GOODSON: -- at a conference in Europe?
`MR. LEACHMAN: Pardon me. I didn't mean to interrupt.
`There's nothing in the record that I'm aware of that addresses
`that point. I believe that at that time Akzo Nobel was selling
`products to Blacklidge Emulsions. And so, this was a way to support
`a customer and help that customer get more widespread use of their
`products. So, I think it was a pure business decision, but that's
`Michael Leachman speaking. There's nothing in the record that I can
`point you to.
`JUDGE GOODSON: Okay. Thank you.
`MR. LEACHMAN: So, I'd like to jump into the case for
`inherency here. So, we're going to be looking at Slide 15 at this
`point. There's three main areas in dispute with respect to Petitioner's
`inherency case against Claim 1 of the 724 patent. That's the
`existence of a stabilizer, whether or not Pasquier inherently discloses
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`a coating having penetration and softening point parameters typical of
`hard asphalts. And thirdly, whether or not Pasquier expressly or
`implicitly discloses heating the asphalt pavement overlay that is put
`over the tack coat during pavement construction.
`Firstly, I want to start with a summary on Slide 16 of what
`both the 724 patent and Pasquier both teach as far as how to make an
`emulsion that can be used as a trackless tack. Here we see both teach
`using a hard asphalt, Pasquier, 10 dmm to 20 dmm; the Blacklidge
`patents, less than 40 dmm, and then, in Claim 2, less than 15 dmm.
`And then, they both teach using water, an emulsifier, and the
`Blacklidge patents use the word "stabilizer" as an additive that can be
`used in the emulsion, while Pasquier discloses a water-soluble
`polymer that can be used as a stabilizing additive. So, what we have
`here side by side are the prior art and the patent at issue, both having
`nearly identical disclosures on how to actually produce a tack coat.
`Regarding the issue of whether or not Pasquier discloses a
`stabilizer, in Slide 17, you will see an excerpt from Pasquier at page 3
`where it explicitly identifies using water-soluble polymers as an
`additive and as hard pen emulsion. It, then, goes on to specify that
`these water-soluble polymers can be a variety of different specific
`types of water-soluble polymers when practicing its invention.
`On Slide 18, you'll see Pasquier explicitly notes one of the
`benefits of using either polyethylene glycol or another group B
`additive. And again, looking back at Slide 17, the group B additive is
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`Case IPR2017-01241 (Patent 7,503,724 B2)
`Case IPR2017-01242 (Patent 7,918,624 B2)
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`a water-soluble polymer. Slide 18 goes on to show that Pasquier
`expressly states that the emulsion is much more stable than pure hard
`bitumen emulsion, one where there is less sediment and more
`chemical stability. Further, you'll see, on Slide 18, Pasquier says that
`polyethylene glycol can be added to either the water phase or the
`asphalt phase during manufacturing.
`Slide 19, Dr. James identifies several other water-soluble
`polymers that could have been used and that can be used in practicing
`Pasquier's teachings. These range from polyethylene glycol, like
`PEG, to PVA, polyvinyl alcohol, to polyacrylates. You also see
`sodium carboxymethylcellulose, CMC, which is a polycarboxylate
`polymer, a specific reference that's identified in the 724 patent itself as
`a stabilizer. Dr. James testified in his deposition that water-soluble
`polymers were known to be thickeners and stabilizers in emulsions.
`Then, we have, on Slide 21, the Antoine reference, Exhibit
`1051, which always shows polyethylene glycol and polyvinyl alcohol
`being suitable stabilizers and hard pen emulsions.
`And Slide 22, we have McConnaughay, again, recognizing
`polyethylene glycol as being a stabilizer. And then, we even have
`Mr. O'Leary himself, early on in his first deposition held in March of
`this year, when asked point-blank, does Pasquier disclose a stabilizer,
`yes or no, his answer was yes.
`It was only later that we started seeing that answer be walked
`back, and we've explored why it's been walked back. And it's come
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`Case IPR2017-01241 (Patent 7,503,724 B2)
`Case IPR2017-01242 (Patent 7,918,624 B2)
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`down to an issue of claim construction. The parties are disagreeing
`on how the term "stabilizer" should be construed. Petitioner has
`utilized a construction that Dr. James set forth in his initial report,
`which is identical to the construction of the term that Blacklidge
`Emulsions themselves had advanced in a previous litigation. So,
`Blacklidge Emulsions, previous to experts and Dr. James, all agree
`that the term "stabilizer," as set forth on Slide 24, should be a material
`that assists in maintaining a dispersion of one phase into another or
`that prevents undesirable alterations to the emulsion.
`During cross-examination, as well as reading Patent Owner's
`various documents, we've come to realize that their definition of
`stabilizer is much more narrow. They construe the term "stabilizer,"
`in effect, to read in storage stability parameters that have been added
`in their Proposed Motion to Amend. And more so, they've construed
`the term "stabilizer" such that it's variable; that you can have a
`composition that in one emulsion would be a stabilizer, because it
`stabilizes that emulsion according to state specs, but if only a fourth or
`a small percentage of that composition was used in a different
`emulsion, and it didn't meet state specs, in that situation their expert
`says that would not be a stabilizer. So, it would be a variable term
`that would only apply to a particular composition if you showed that
`the end-result emulsion it was used in, it created a state-spec
`commercially-viable emulsion.
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`Case IPR2017-01242 (Patent 7,918,624 B2)
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`What's more, their construction of the term "stabilizer"
`specifically goes against the intrinsic evidence. Slide 26 shows an
`excerpt from the 724 patent, column 8, where the patent itself
`describes stabilizers as including polycarboxylate polymers,
`preservatives, et cetera. Yet, in a cross-examination, Mr. O'Leary
`said he would not consider preservatives to constitute a stabilizer.
`Slide 27, I'm not going to spend much time on this, but this is
`excerpts from Blacklidge's opening claim construction brief in the
`previous litigation. This is a brief that opposing counsel signed. It
`sets forth constructions that opposing counsel advanced in a different
`proceeding, that these constructions are the same ones that have been
`adopted by Petitioner in this case. So, in conclusion, Petitioners
`believe that Pasquier clearly, explicitly discloses the use of a stabilizer
`in an emulsion.
`Moving on to the second issue, the second issue is whether or
`not Pasquier inherently discloses a residual tack coat that would meet
`the claimed properties for pen and softening point of that tack coat.
`Here I --
`JUDGE GOODSON: Can I jump in here --
`MR. LEACHMAN: Of course.
`JUDGE GOODSON: -- with a question on the level of
`ordinary skill in the art? The definition that the Petitioner
`proposed -- this is on page 7 of the petition -- requires an academic
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`degree. Do you agree that that would exclude the inventor of these
`patents?
`MR. LEACHMAN: Yes.
`JUDGE GOODSON: And are you aware of any cases
`adopting or upholding a definition of the level of ordinary skill in the
`art that would exclude the inventor of the patent at issue?
`MR. LEACHMAN: Not at this time. I understand that's one
`factor that's considered in a list of factors. But I think, as the record
`in this case shows, understanding of chemistry is important. I mean,
`this entire last discussion about stabilizer came down to a question of
`chemistry and whether or not a particular composition actually
`stabilizes. Mr. O'Leary, the Patent Owner's expert, couldn't answer
`questions in his deposition about whether or not a particular
`composition is a stabilizer or not because he only knew it by brand
`name. And to me, that shows that you really can't give an opinion in
`this case without having some baseline science background where you
`can recognize whether or not something is a polycarboxylate polymer
`or not.
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`And that was something that Dr. James also addressed in his
`third supplemental declaration submitted in this case, that a lot of
`these issues that have become at the forefront of this case have been
`very science-based. They've been hard science questions. And Mr.
`O'Leary, as I would assume, also, the inventor himself, would have a
`hard time giving a reliable opinion on these topics.
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`Case IPR2017-01242 (Patent 7,918,624 B2)
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`JUDGE GOODSON: Okay. Thank you.
`MR. LEACHMAN: So, regarding whether or not Pasquier
`inherently teaches the residual tack coat properties, you'll see on Slide
`28 that Dr. James unequivocally states that a skilled artisan would
`have understood that Pasquier discloses an emulsion which would
`necessarily and inevitably produce a residual tack coat having the
`claimed penetration and softening point values.
`One of the things that I think was confusing with Petitioner's
`petition was the fact that Petitioner was coming at inherency with
`respect to Pasquier from two different angles, two different paths that
`you can get to the same end result. On Slide 30, you'll see where I've
`tried to outline these two different paths. And they're described, one,
`as an in general approach and, then, one as a Pasquier expressed
`teachings approach.
`I, first, want to start with the in general approach. This
`requires several steps of logic that I've broken out on Slide 31, and
`these are excerpts from Dr. James' report. So, this is paragraph 148
`on Slide 31. The first step is acknowledgment that Pasquier's asphalt
`emulsion formulation would inevitably use a base asphalt having a
`softening point greater than about 60 across the entire normal PI range
`for paving grade asphalts.
`And I've left off an important part, certain embodiments of
`Pasquier's asphalt emulsion. I understand from a previous IPR
`proceeding involving these same patents, the case, there was a lot of
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`discussion revolving around whether or not every single 10/20 grade
`asphalt that's commercially available, would it produce a residual tack
`coat that met the claimed properties? I don't think that's the proper
`analysis. I think the proper analysis is whether or not a single
`embodiment of a 10/20 grade asphalt would inevitably and inherently
`produce the residual tack coat properties claimed in Claim 1.
`And this is something that was addressed -- I think there's a
`Federal Circuit case that's instructive on this. It's called Atlas Powder
`Company v. IRECO, which is a 1999 Federal Circuit decision,
`190 F.3rd 1342. And if you'd bear with me, I'd like to give just a
`very short overview of this case.
`This case involved an explosive composition that used a water
`and oil emulsion combined with fuel oil to create an explosive. The
`prior art, the patent claimed a composition that used between 20 and
`40 percent of this water and oil emulsion to achieve the benefit of
`having sufficient aeration in the end composition, such that it would
`explode better.
`The prior art taught the same type of composition, except for
`the prior art taught using between 20 percent and 67 percent of the
`water and oil emulsion in the overall composition. So
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