Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 64
`Entered: October 23, 2018
`
`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
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, JAMES A. TARTAL, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`Asphalt Products Unlimited, Inc. (“Petitioner”) filed a petition
`(Paper 1, “Pet.”) to institute an inter partes review of claims 1–33 (the
`“challenged claims”) of U.S. Patent No. 7,503,724 B2 (Ex. 1001, “the
`’724 patent”) on the following grounds:
`
`
`Tel: 571-272-7822
`
`Paper 64
`Entered: October 23, 2018
`
`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
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, JAMES A. TARTAL, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`Asphalt Products Unlimited, Inc. (“Petitioner”) filed a petition
`(Paper 1, “Pet.”) to institute an inter partes review of claims 1–33 (the
`“challenged claims”) of U.S. Patent No. 7,503,724 B2 (Ex. 1001, “the
`’724 patent”) on the following grounds:
`
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`IPR2017-01241
`Patent 7,503,724 B2
`
`Reference(s)
`European Pat. App. EP 0 859 030 A1 (Ex. 1003,
`“Pasquier”)
`
`Claim(s)
`Basis
`§ 102(b) 1–5, 12, 23,
`24, 28
`
`Pasquier and The Shell Bitumen Handbook.
`Telford, 2003 (Ex. 1008, “SBH”)
`
`§ 103
`
`1–5, 9, 12–
`14, 23, 24,
`26–30
`
`Pasquier, SBH, and US DOT Specification FP96-
`2001 (Ex. 1010, “US DOT”)
`
`§ 103
`
`6
`
`Pasquier, SBH, and U.S. Patent No. 5,769,567
`(Ex. 1011, “Durand”)
`
`§ 103
`
`7, 8, 10, 25
`
`Pasquier, SBH, US DOT, and Juan José Potti,
`José Luis Peña, & Francisco Guzmán,
`“Emulsiones termoadherentes para riegos de
`adherencia.” Carreteras: Revista técnica de la
`Asociación Española de la Carretera 128 (2003):
`17–26. (Ex. 1006, “Potti”)
`
`§ 103
`
`11, 15–18,
`21, 22, 31–
`33
`
`Pasquier, SBH, US DOT, Potti, and Durand
`
`§ 103
`
`19, 20
`
`Pet. 26–72. Petitioner further asserts that three additional prior art
`references described by Petitioner as “optional” to its obviousness
`challenges reflect the background knowledge of an ordinarily skilled artisan
`at the time of the alleged invention:
`1. Corte, Jean-Francois, “Development and uses of hard-grade
`asphalt and of high-modulus asphalt mixes in France.”
`Transportation Research Circular 503 (2001): 12-31.
`(Ex. 1007, “Corte”), Pet. 16, 32, 34, 49;
`2. A Basic Asphalt Emulsion Manual, Manual Series No. 19,
`Third Edition (Ex. 1009, “BAEM”), Pet. 16–17, 35, 36, 50,
`52, 57; and
`3. Jaime Gordillo et al., “Comparison of Different Test Methods
`for the Obtention and Characterisation of Residual Binders of
`
`2
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`IPR2017-01241
`Patent 7,503,724 B2
`Pure and Modified Bitumen Emulsions.” Second World
`Congress on Emulsion, 23–26 Sept. 1997. (Ex. 1012,
`“Gordillo”), Pet. 17–19, 36, 50.
`Blacklidge Emulsions, Inc. (“Patent Owner”) timely filed a
`Preliminary Response. Paper 11 (“Prelim. Resp.”).
`We initially instituted an inter partes review on a subset of the
`asserted grounds. See Paper 23 (“Dec.”). Specifically, we determined based
`on the preliminary record that Petitioner had demonstrated a reasonable
`likelihood of prevailing in its obviousness challenges, but that Petitioner had
`not demonstrated a reasonable likelihood of prevailing in its anticipation
`challenge. Id. at 11–25. Based on those determinations, and in accordance
`with the Board’s practice at that time, we instituted an inter partes review
`only as to the obviousness challenges. Id. at 25. Subsequently, pursuant to
`the holding in SAS Inst., Inc. v. Iancu, 138 S.Ct. 1348, 1355–57 (2018), we
`modified our institution decision to institute review of all grounds presented
`in the Petition. Paper 46, 2. We also authorized supplemental briefing to
`permit the parties to address the added ground. Paper 49.
`The briefing in this proceeding includes the Petition, an Amended
`Patent Owner Response (Paper 32, “PO Resp.”), a Patent Owner
`Supplemental Response (Paper 52, “PO Supp. Resp.”), a Petitioner Reply
`(Paper 44, “Reply”), and a Petitioner Supplemental Reply (Paper 55, “Supp.
`Reply”). We held an oral hearing, a transcript of which is included in the
`record. Paper 63 (“Tr.”).
`Patent Owner filed a Contingent Motion to Amend, and the parties
`submitted additional briefing in connection with that motion. We address
`Patent Owner’s Motion to Amend in Section III. Aside from the Motion to
`Amend, no motions remain pending. During the proceeding, Patent Owner
`
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`IPR2017-01241
`Patent 7,503,724 B2
`filed a Motion to Disqualify Dr. Alan James as Petitioner’s Expert Witness
`and to Strike His Declaration, and we denied that motion. See Paper 16;
`Paper 22.
`The evidentiary record in this proceeding is extensive. In addition to
`the numerous cited prior art references and documents evidencing the state
`of the art during the relevant time frame, the parties have provided the
`testimony of several witnesses. The table below summarizes the witnesses,
`their roles in this proceeding, and the exhibits in which their testimony is
`presented:
`
`Exhibit(s)
`Ex. 1002 (declaration of
`Apr. 3, 2017);
`Ex. 1039 (declaration of
`July 15, 2017);
`Ex. 1040 (declaration of
`Aug. 30, 2017);
`Ex. 1093 (declaration of
`Apr. 17, 2018);
`Ex. 2079 (transcript of
`deposition of Dec. 19,
`2017).
`
`Ex. 1013 (declaration of
`Mar. 15, 2017).
`
`Witness
`Alan James, Ph.D.
`
`Role
`Petitioner’s
`technical expert
`
`Laci-Tiarks-Martin
`
`Director of
`Operations at PRI
`Asphalt
`Technologies, Inc.,
`which was retained
`by Petitioner to
`conduct testing
`
`4
`
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`Patent 7,503,724 B2
`
`Role
`Witness
`R. Steele Yeargain, III Vice President of
`Petitioner
`
`William F. O’Leary
`
`Patent Owner’s
`technical expert
`
`Roy B. Blacklidge
`
`Inventor of
`’724 patent and
`President of Patent
`Owner
`
`Exhibit(s)
`Ex. 1041 (declaration of
`Aug. 16, 2017);
`Ex. 1094 (declaration of
`Apr. 16, 2018).
`
`Ex. 2010 (declaration of
`Aug. 18, 2017);
`Ex. 2078 (declaration of
`Jan. 24, 2018);
`Ex. 2092 (declaration of
`Feb. 9, 2017 from IPR2016-
`01031);
`Ex. 2093 (declaration of
`June 15, 2018);
`Ex. 1092 (transcript of
`deposition of Mar. 8–9,
`2018);
`Ex. 1095 (transcript of
`deposition of June 27,
`2018).
`
`Ex. 2081 (declaration of
`Sept. 28, 2008 from file
`history of U.S. Patent No.
`7,503,724);
`Ex. 1096 (transcript of
`deposition of Apr. 19, 2017
`from IPR2016-01031).1
`
`
`1 The parties stipulated that Mr. Blacklidge’s testimony from IPR2016-
`01031 would be admissible in this proceeding. See Paper 42, 1.
`
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`
`Witness
`R. Grover Allen,
`Ph.D.
`
`Role
`Technical Director
`of Patent Owner
`
`Michael Jenkins
`
`Jarrod Gray
`
`Director of
`Technical
`Marketing of
`Patent Owner
`
`Chief Financial
`Officer of Patent
`Owner
`
`Douglas C. Fergusson Executive Vice
`President and
`General Manager
`of Patent Owner
`
`Exhibit(s)
`Ex. 2005 (declaration of
`July 5, 2017);
`Ex. 2077 (declaration of
`Jan. 24, 2018);
`Ex. 2094 (declaration of
`June 15, 2018).
`
`Ex. 2006 (declaration of
`July 5, 2017).
`
`Ex. 2020 (declaration of
`Aug. 18, 2017).
`
`Ex. 2090 (declaration of
`Feb. 8, 2017).
`
`We have jurisdiction under 35 U.S.C. § 6. Petitioner bears the burden
`of proving unpatentability of the challenged claims, and the burden of
`persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner
`must prove unpatentability by a preponderance of the evidence. See
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). This Final Written Decision is
`issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
`reasons that follow, we determine that Petitioner has shown by a
`preponderance of the evidence that claims 1–33 of the ’724 patent are
`unpatentable. See 35 U.S.C. § 316(e).
`
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`B. RELATED PROCEEDINGS
`The parties identify the following four district court proceedings as
`related:
`• Blacklidge Emulsions, Inc. v. Russell Standard Corporation, Case
`Number 1:12-cv-00643, N.D. Ohio;
`• Colas Solutions, Inc. v. Blacklidge Emulsions, Inc., Case Number
`1:16-cv-00548, S.D. Ohio;
`• Blacklidge Emulsions, Inc. v. Phillips Oil Co. of Central Ohio, Inc.,
`Case Number 2:12-cv-00406, S.D. Ohio; and
`• Blacklidge Emulsions, Inc. v. Akzo Nobel Surface Chemistry LLC,
`Case Number 1:17-cv-173, S.D. Miss.
`Pet. 3–4; Paper 4, 2; Paper 8, 2.
`The parties also identify the following inter partes review proceedings
`as related:
`• Colas Solutions, Inc. v. Blacklidge Emulsions, Inc., Case IPR2016-
`01032, relating to U.S. Patent 7.918,624 (the “’624 patent”), which
`issued from a continuation application claiming priority to the
`’724 patent;
`• Colas Solutions, Inc. v. Blacklidge Emulsions, Inc., Case IPR2016-
`01031, relating to the ’724 patent;
`• Asphalt Products Unlimited, Inc. v. Blacklidge Emulsions, Inc.. Case
`IPR2017-01242, relating to the ’624 patent.
`Pet. 3–4; Paper 8, 2.
`In Case IPR2016-01031, which involved a different petitioner and
`different prior art references, we issued a Final Decision determining that no
`claim of the ’724 patent had been shown to be unpatentable. See Colas
`
`7
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`IPR2017-01241
`Patent 7,503,724 B2
`Solutions, Inc. v. Blacklidge Emulsions, Inc., Case IPR2016-01031, slip op.
`at 32 (PTAB Nov. 2, 2017) (Paper 38). An appeal of that decision is
`pending in the U.S. Court of Appeals for the Federal Circuit as Colas
`Solutions, Inc. v. Blacklidge Emulsions, Inc., Case No. 18-1358.
`C. THE ’724 PATENT
`The ’724 patent relates generally to a method of providing an
`adhesive tack coat between pavement layers. Ex. 1001, 1:13–16. The
`method includes applying an asphalt emulsion as the tack coat that, when
`cured, exhibits a relatively hard surface that resists adhering to the tires of
`construction vehicles but still functions as an adhesive layer. Id. at 4:53–67.
`Claims 1, 15, 23, and 31 are the independent claims among the challenged
`claims, with claims 1, 15, and 31 reciting methods for using a tack coat, id.
`at 14:6–35 (claim 1), 15:24–63 (claim 15), 17:10–18:20 (claim 31), and
`claim 23 reciting a pavement structure that incorporates the tack layer, id.
`at 16:28–40. Claim 1, which is illustrative, recites:
`1. A method for bonding a layer of asphalt pavement material
`comprising asphalt material to a substrate pavement layer
`comprising paving material, the paving material selected from
`the group consisting of asphalt material, soil, clay, sand, shell,
`cement, limestone, fly ash and mixtures thereof, the method
`comprising:
`[a] providing an emulsified composition which includes at least
`a first phase of an asphalt composition, a second phase of
`water, emulsifier and a stabilizer, the asphalt composition
`selected to provide a coating having a penetration value less
`than about 20 dmm and a softening point greater than about
`140° F. (60° C.) when applied to the substrate pavement layer
`and cured;
`[b] applying the emulsified composition which includes the first
`phase of asphalt composition, and the second phase of water,
`emulsifier and stabilizer to an exposed surface of the substrate
`
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`IPR2017-01241
`Patent 7,503,724 B2
`pavement layer at a rate sufficient to provide an exposed
`coating on the exposed substrate surface, the emulsified
`composition having an amount of the asphalt composition
`effective to bond the layer of asphalt pavement material to the
`substrate pavement layer;
`[c] heating the asphalt pavement material to provide a heated
`pavement material to a temperature sufficient to soften the
`coating an amount effective to form a bonding surface on the
`exposed coating; and
`[d] applying the heated asphalt pavement material to the exposed
`coating to form a pavement layer and to soften the exposed
`coating forming a bond between the pavement layer and the
`substrate pavement layer.
`Id. at 14:6–35 (emphasis added). The emphasized portion of claim 1, which
`is substantively recited in all claims, identifies characteristics of a cured
`asphalt emulsion and represents one of the central points in dispute between
`the parties.
`The ’724 patent describes the particular asphalt emulsion used to
`make a “low-tracking” tack coat that reduces or avoids the problems
`associated with the tack coat adhering to the wheels of construction vehicles.
`Id. at 4:53–5:14. Such vehicle tracking “reduces the effectiveness of the
`tack coat by displacing a portion of the intended volume from the area
`awaiting a new pavement layer.” Id. at 2:14–16. Additionally,
`“[i]nsufficient adhesion between a new layer of pavement and an existing
`base course . . . can cause pavement separation and cracking during
`construction [and] subsequent failures and premature deterioration of the
`pavement structure.” Id. at 2:17–22.
`The Specification describes two approaches for obtaining a “coating
`having a penetration value less than about 20 dmm and a softening point
`greater than about 140° F. (60° C.) when applied to the substrate pavement
`
`9
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`IPR2017-01241
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`layer and cured.” The first method involves preparing an emulsion with a
`“hard pen” asphalt component having a pen value of “from about 5 dmm to
`15 dmm pen, with a softening point between about 150° F. (66° C.) and
`about 160° F. (71° C.).” Id. at 7:60–62. The Specification describes asphalt
`emulsions incorporating asphalt compositions defined by the “Performance
`Grade” values of from PG-91 (about 5 pen) to PG-82 (about 40 pen). Id.
`at 9:59–67. Beginning with these hard pen asphalts in the emulsion, the
`Specification describes resulting “tack coat properties” including pen values
`of 1–40 dmm and a minimum softening point of 140° F. (60° C.). Id.
`at 10:37–41. The Specification also describes two examples of “the
`emulsion of the invention using a 13 dmm pen asphalt,” but does not reveal
`the pen value or the softening point of the resulting cured tack coat. Id.
`at 12:38–13:65.
`The second method is to use a softer asphalt in the emulsion “in the
`range of mid or soft pen asphalt” and add “polymeric, waxes, or other
`equivalent additives” to achieve the properties of the “final cured tack coat.”
`Id. at 8:49–57. The Specification states: “[e]xamples of such polymeric
`additives are EVA, SBS, SB, SBR, SBR latex, polychloroprene, isoprene,
`polybutadiene, acrylic and acrylic copolymers, and other equivalent
`additives that produce the hard pen characteristics of the final cured tack
`coat.” Id. at 8:57–61. The Specification does not describe examples of
`emulsions using mid or soft pen asphalt along with any one of the specific
`additives listed that are used to obtain the properties of the final tack coat.
`
`10
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`
`II. ANALYSIS
`A. CLAIM INTERPRETATION
`“A claim in an unexpired patent that will not expire before a final
`written decision is issued shall be given its broadest reasonable construction
`in light of the specification of the patent in which it appears.” 37 C.F.R.
`§ 42.100(b) (2016); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2144–46 (2016) (affirming that USPTO has statutory authority to
`construe claims according to Rule 42.100(b)). When applying that standard,
`we interpret the claim language as it would be understood by one of ordinary
`skill in the art in light of the specification. In re Suitco Surface, Inc., 603
`F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we give claim terms their ordinary
`and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the
`meaning that the term would have to a person of ordinary skill in the art in
`question.’” (citation omitted)). Only terms that are in controversy need to be
`construed, and then only to the extent necessary to resolve the controversy.
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`In our Decision on Institution, we considered Petitioner’s proposal
`that the phrase “a penetration value less than about 20 dmm” means “a
`penetration value less than 27 dmm.” See Pet. 11. We determined that the
`intrinsic and extrinsic evidence of record did not support Petitioner’s
`proposal, and applied the term’s ordinary and customary meaning. See
`Dec. 7–10. Similarly, we declined to adopt Petitioner’s proposal that the
`phrase “a softening point greater than about 140° F. (60° C.)” should be
`construed as “a softening point greater than 57°C,” and we instead applied
`
`11
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`IPR2017-01241
`Patent 7,503,724 B2
`the ordinary and customary meaning of that phrase. See Pet. 11; Dec. 10–
`11. The parties’ post-institution briefing does not further address the
`construction of these phrases. See PO Resp. 23–24; Reply 2–3. We
`maintain the construction of these phrases set forth in our Decision on
`Institution for the reasons we stated there.
`We determine that no other terms require express construction to
`resolve the disputed issues in this proceeding.
`B. LEVEL OF ORDINARY SKILL IN THE ART
`In determining the level of skill in the art, we consider the educational
`level of the inventor, the type of problems encountered in the art, the prior
`art solutions to those problems, the rapidity with which innovations are
`made, the sophistication of the technology, and the educational level of
`active workers in the field. Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501
`F.3d 1254, 1256 (Fed. Cir. 2007) (citing Envtl. Designs, Ltd. v. Union Oil
`Co., 713 F2d 693, 696 (Fed. Cir. 1983)).
`Petitioner contends, with citation to the testimony of Dr. James, that a
`person of ordinary skill in the art would have “a bachelor’s degree or the
`equivalent in the fields of chemistry, chemical engineering, materials
`science, or an equivalent, as well as having five (5) years of additional
`academic or commercial research in the field of asphalt binders and/or
`asphalt emulsion technology.” Pet. 10 (citing Ex. 1002 ¶¶ 9–12).
`Patent Owner’s expert, Mr. O’Leary, disagrees with Petitioner’s and
`Dr. James’s definition and describes a person of ordinary skill in the art as
`someone with a bachelor of science degree or the equivalent in
`civil or chemical engineering, as well as having approximately 5
`years of practical experience comprising some combination of
`asphalt binder testing and/or characterization, asphalt mixture
`testing and/or characterization, pavement design, and field
`
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`experience such as quality control monitoring of the construction
`of pavement materials. Alternatively, a person having ordinary
`skill in the art may have 10 years of practical experience
`comprising some combination of asphalt binder testing and/or
`characterization, asphalt mixture testing and/or characterization,
`pavement design, and field experience instead of a four year
`college degree.
`Ex. 2078 ¶ 60; see also Ex. 2093 ¶¶ 38–40 (providing additional testimony
`regarding the level of ordinary skill in the art).
`The primary difference in these proposals is that Petitioner’s and
`Dr. James’s proposal requires an academic degree, while Mr. O’Leary’s
`definition allows additional work experience to substitute for an academic
`degree. In this regard, Petitioner acknowledges that its definition would
`exclude the sole named inventor of the ’724 patent from qualifying as a
`person of ordinary skill in the art because Mr. Blacklidge does not have an
`academic degree. Tr. 19:19–20:3. The Federal Circuit has found clear error
`when a court’s determination of the level of skill in the art conflicted with
`the background of the inventors. Daiichi Sankyo, 501 F.3d at 1256–57.
`Petitioner is unable to point us to any cases in which a court or tribunal has
`adopted or upheld a definition of the level of ordinary skill in the art that
`would exclude the inventor of the patent at issue. Tr. 20:4–7.
`Petitioner’s definition would also exclude Mr. O’Leary, even though
`Dr. James considers Mr. O’Leary as “someone who has attained a certain
`level of skill in the field of asphalt emulsions in general.” Ex. 1093 ¶ 12.
`Petitioner argues that an understanding of chemistry is important, and that
`Mr. O’Leary’s inadequate chemistry background detracts from the reliability
`of his opinions. Tr. 20:8–24; see also Ex. 1093 ¶¶ 12–16 (Dr. James
`pointing to alleged errors or gaps in Mr. O’Leary’s chemistry knowledge
`
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`stating that “Mr. O’Leary’s lack of formal education in chemistry impedes
`his ability to provide a reliable opinion on topics involving formulation
`chemistry”). Petitioner’s and Dr. James’s criticisms go to the weight to be
`given Mr. O’Leary’s opinions, but do not persuade us that the level of
`educational attainment for a person of ordinary skill in the art should be set
`above what was obtained by known practitioners in this field such as
`Mr. O’Leary and Mr. Blacklidge.
`We adopt Mr. O’Leary’s statement of the level of ordinary skill in the
`art (Ex. 2078 ¶ 60), which is consistent with the level of ordinary skill in the
`art we specified in our Final Decision in an earlier proceeding involving the
`’724 patent. See Colas Solutions, Inc. v. Blacklidge Emulsions, Inc., Case
`IPR2016-01031, slip op. at 8–10 (PTAB Nov. 2, 2017) (Paper 38).
`C. CLAIMS 1–5, 12, 23, 24, AND 28:
`ANTICIPATION BY PASQUIER
`Petitioner argues that Pasquier anticipates claims 1–5, 12, 23, 24,
`and 28. Pet. 27–46; Supp. Reply 3–9. Patent Owner disputes those
`contentions. See PO Supp. Resp. 4–14.
`1. Legal Standard
`“A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
`art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`631 (Fed. Cir. 1987). Whether a reference discloses the claimed subject
`matter is assessed from the perspective of an ordinarily skilled artisan. See
`Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed.
`Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether
`one skilled in the art would reasonably understand or infer from the [prior art
`
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`reference’s] teaching’ that every claim element was disclosed in that single
`reference.”).
`2. Overview of Pasquier
`Pasquier relates to asphalt emulsions used to make a tack coat to
`which tires of road construction equipment do not stick. Ex. 1003, Abstract.
`Pasquier describes that the “purpose of the tack coats is to stick to each other
`the different layers that make up the road.” Id. at 2:20.2 Pasquier describes
`the goals of its tack coats as follows: “The purpose of the invention is to
`provide a tack coat that sticks the layers perfectly to each other without
`sticking to the wheels of the construction equipment so as to avoid
`bituminous products from being carried onto surrounding roads without
`making the implementation techniques more complicated.” Id. at 2:47–50.
`Pasquier acknowledges that conventionally using hard or very hard
`asphalt (10 to 30 dmm) in an emulsion may achieve a tack coat that is not
`sticky, but remains “very fragile . . . little cohesive because a bitumen with
`this hardness is not very film-forming, and has little adhesion to the
`support.” Id. at 3:5–9. Pasquier addresses this problem by adding
`substances from one of two groups, for example, “group a)” including
`parafins, waxes of petroleum, among others, or “group b)” including
`polyethylene glycol among others. Id. at 3:30–39.
`
`
`2 When citing to Pasquier, we refer to the page numbers of the original
`document, which are also shown in the English translation of Pasquier in
`Exhibit 1003. However, when we refer to line numbers, we refer to those
`shown in Exhibit 1003 rather than the line numbers of the original French-
`language version of Pasquier.
`
`15
`
`
`
`IPR2017-01241
`Patent 7,503,724 B2
`Pasquier’s tack coat is made from various exemplary emulsions, most
`of which are based on 10/20 hard-pen bitumen. Id. at 4–5, Tables 1–3, 5.
`For example, Table 1 from Pasquier is reproduced below.
`
`
`
`Pasquier’s Table 1 reflects an exemplary emulsion for making a
`tack coat that avoids tracking by construction vehicles.
`Id. at 4. Pasquier uses polyethylene glycol—a water-soluble polymer—as a
`viscosity modifier and stabilizing additive that can be added to either the
`asphalt phase or the water phase, with Pasquier specifically noting that the
`addition of polyethylene glycol results in an emulsion that “is much more
`stable than a pure hard bitumen emulsion.” Id. at 5:26–29, 5:34–35.
`Pasquier further notes that its hard-pen emulsion provides a tack coat having
`strengthened consistency at temperatures below 70°C such that the “residual
`layer [is] not affected by temperature up to 70°C.” Id. at 3:11–25.
`3. Analysis
`Each of independent claims 1 and 23 is challenged as anticipated by
`Pasquier. Each of those claims requires an asphalt composition that
`provides a coating or bonding layer having “a penetration value less than
`about 20 dmm and a softening point greater than about 140° F. (60° C.)”
`when cured. Ex. 1001, 14:15–18 (claim 1), id. at 16:38–40 (claim 23).
`Petitioner admits that “Pasquier does not expressly disclose” the
`penetration value and softening point of the “coating” of claim 1. Pet. 30.
`
`16
`
`
`
`IPR2017-01241
`Patent 7,503,724 B2
`Petitioner relies on inherency for these limitations. Id. at 28. Specifically,
`Petitioner argues that Pasquier inherently teaches those characteristics
`because an ordinarily skilled artisan “would have known that Pasquier’s
`asphalt emulsion would necessarily and inevitably produce a residual tack
`coat having a final residual pen value of less than 20 dmm and a R&B
`softening point greater than about 140° F. (60° C.).” Id. at 30. Regarding
`the “bonding layer” of claim 23, Petitioner refers back to its arguments for
`claim 1. Id. at 45.
`Patent Owner counters that Pasquier does not anticipate claims 1 and
`23 or their respective dependent claims 2–5, 12, 24, and 28 because
`Petitioner has not established that Pasquier inherently describes the
`characteristics of the cured “coating” or “bonding layer.” PO Supp.
`Resp. 4–12. We agree with Patent Owner.
`“[A]nticipation by inherent disclosure is appropriate only when the
`[single prior art] reference discloses prior art that must necessarily include
`the unstated limitation.” Transclean Corp. v. Bridgewood Servs., Inc., 290
`F.3d 1364, 1373 (Fed. Cir. 2002) (citation omitted). “Inherency . . . may not
`be established by probabilities or possibilities. The mere fact that a certain
`thing may result from a given set of circumstances is not sufficient.” Cont’l
`Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)
`(internal quotation marks and citations omitted). Rather, the “inherent result
`must inevitably result from the disclosed steps.” In re Montgomery, 677
`F.3d 1375, 1380 (Fed. Cir. 2012).
`Petitioner’s evidence tends to show that Pasquier’s asphalt emulsion,
`when cured, would likely exhibit a penetration value and softening point
`within the claimed range, but does not establish that it would inevitably have
`
`17
`
`
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`IPR2017-01241
`Patent 7,503,724 B2
`those characteristics. In support of its inherency arguments, Petitioner
`points to disclosures in the ’724 patent, SBH, and Corte indicating that hard
`pen asphalts would be expected to have softening points greater than 140° F.
`Pet. 30–32 (citing Ex. 1001, 2:64–67; Ex. 1008, 44; Ex. 1007, 16). Yet the
`relied-upon statement in the ’724 patent by its own terms describes what is
`“typical” for hard asphalt compositions, not what pen values and softening
`points are necessarily present after curing. Ex. 1001, 2:64–67. The table in
`SBH on which Petitioner relies is titled: “Specifications for paving grade
`bitumens with penetrations from 20 to 330 dmm.” Ex. 1008, 44. The table
`does not list specifications for 10/20 pen bitumen, but for 20/30 bitumen, the
`closest grade listed, SBH indicates a softening point of 55–63°C. Id.
`Although Petitioner argues that the table shows the well-understood inverse
`correlation between softening point and penetration value, Pet. 31, the values
`listed in the table do not strongly support Petitioner’s contention that a 10/20
`pen bitumen, as taught in Pasquier, would inevitably yield a cured tack coat
`having a softening point greater than about 60° C. Indeed, as Patent Owner
`notes, another table in SBH indicates that at least some asphalts with
`penetration values between 10 and 20 dmm have softening points below
`60° C. PO Supp. Resp. 6 (reproducing SBH’s Figure 2.3 with annotations).
`Corte’s table is titled “Typical Hard Asphalt Characteristics (Before
`Aging).” Ex. 1007, 16. That table indicates that a 10/20 grade asphalt
`having a penetration index of +0.5 would typically have a softening point of
`62–72°C. Id. Corte’s table does support that a typical 10/20 grade asphalt
`would have a softening point within the claimed range, but this is yet further
`evidence of what is typical or likely, not what is necessarily present. For
`example, an asphalt having a lower penetration index than the +0.5 reported
`
`18
`
`
`
`IPR2017-01241
`Patent 7,503,724 B2
`in Corte may have a softening point outside the claimed range. See
`generally Ex. 1002 ¶¶ 19–20 (testimony of Dr. James explaining the
`relationship between penetration value, softening point, and penetration
`index). Pasquier does not specify a particular penetration index for the
`asphalt, instead stating, as Patent Owner points out, that “all road or
`industrial bitumen types can be used.” PO Supp. Resp. 5 (quoting Ex. 1003,
`8:20–22).
`Petitioner also relies on its “testing of select Pasquier formulations”
`resulting in a sample having a penetration value of 10 dmm and a softening
`point of 72°C. Pet. 32–33 (citing Ex. 1013). According to Petitioner, this
`testing establishes “that Pasquier’s 10/20 pen asphalt material would
`necessarily have a softening point greater than about 140°F (60°C).” Id.
`at 33. This testing does not convince us that Pasquier’s formulations would
`necessarily result in a cured tack coat having the claimed rheological
`properties because, as Patent Owner points out, the formulations that were
`tested departed from using the Pasquier’s exemplary emulsifiers in some
`respects. See PO Supp. Resp. 10–11. For example, the tested formulations
`used Redicote E-9 as the emulsifier rather than the Emulsamine L60
`disclosed in Pasquier. See Ex. 1002 ¶¶ 119–120; Ex. 1003, 3:67–68. In
`addition, the tested recipes used more hydrochloric acid than disclosed in
`Pasquier. Ex. 1002 ¶ 120. Dr. James explained why these adjustments were
`necessary and why he believes an ordinarily skilled artisan would have made
`them. See id. ¶¶ 119–120. Nevertheless, these departures from the
`formulations set forth in Pasquier undermine Petitioner’s reliance on the
`tests to show inherent characteristics of Pasquier’s cured tack coat.
`
`19
`
`
`
`IPR2017-01241
`Patent 7,503,724 B2
`Petitioner’s remaining arguments are premised on certain assumed
`properties and conditions that are typical or normal rather than necessarily
`present. For example, Petitioner argues that “when taking the normal PI
`range for paving-grade asphalts into account, 10/20 asphalts would
`inevitably have softening points greater than ‘about 60°C.’” Pet. 33
`(emphasis added). Elsewhere, Petitioner asserts that an ordinarily skilled
`artisan “would have known that Pasquier’s residual tack coat would
`generally reflect the characteristics of the base asphalt.” Pet. 35 (emphasis
`added). Dr. James similarly qualifies his conclusion of inherency by
`testifying that:
`a skilled artisan would have expected Pasquier’s tack coat
`residue—when low quantities of the PEG 600 additive were
`utilized in the emulsion recipe (e.g., 1% PEG 600 b/w of
`asphalt)—to generally reflect the characteristics of the base
`asphalt and thus exhibit a penetration value less than about
`20 dmm and a softening point greater than about 60°C.
`Ex. 1002 ¶ 150 (emphasis added). The qualifying conditions that an
`ordinarily skilled artisan would have placed on Pasquier’s asphalt emulsion
`to ensure that it “generally” met the claimed penetration values falls short of
`the showing of necessity or inevitability that is required to establish
`anticipation by inherency.
`In reply, Petitioner points to Pasquier’s teaching that the “residual
`layer [is] not affected by temperature up to 70ºC.” Supp. Reply 1 (quoting
`Ex. 1003, 3:14). According to Petitioner, “Pasquier’s teaching would
`motivate skilled a
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