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`Paper No. 18
`Filed on Feb. 9, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`AFTON CHEMICAL CORPORATION
`Petitioner
`v.
`INFINEUM INTERNATIONAL LIMITED
`Patent Owner
`
`
`
`
`IPR2017-01321
`Patent 8,076,274
`
`
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`NOTICE OF PETITIONER’S OBJECTIONS TO
`PATENT OWNER’S RESPONSE EVIDENCE
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner, Afton Chemical
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`Case No. IPR2017-01321
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`Corporation, hereby submits its objections to evidence served by Patent Owner,
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`Infineum International Limited, Inc. with its Patent Owner Response and Motion to
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`Amend. These objections are being filed on Feb. 9, 2018, and are timely, having
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`been filed within five business days of the service of Patent Owner’s Response
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`Evidence.
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`Petitioner generally objects to the Exhibits to the extent they are not relevant
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`(FRE 401, 402, 403), are outside the scope of the institution, lack foundation, for
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`hearsay, are untimely, or are incomplete. Petitioner objects to the following
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`Exhibits in their entirety.
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`Exhibit 2017 was published in 2017; Exhibit 2018 was published in 2010,
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`Exhibit 2019 was published in 2007; Exhibit 2020 was published in 2016; Exhibit
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`2020 was published in 2011; and Exhibit 2024 was published in 2010 and updated
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`in 2017; therefore, these Exhibits confuse the issues with information that was
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`published after the ‘274 patent’s priority date. Exhibits 2017 and 2018 are Material
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`Safety Data Sheets (MSDS) for Irganox L57, published in 2017 and 2010,
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`respectively, which are merely more recent publication of the MSDS for the same
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`product, Irganox L57, as Petitioner’s Exhibit 1026. Exhibits 2019 and 2020 are
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`Material Safety Data Sheets (MSDS) for Irganox 5057, published in 2007 and
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`2016, respectively, and are erroneously identified in the Exhibit Table as MSDS
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`-1-
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`for Irganox L57. Exhibit 2031 (EP 1 167 497 A2 to Nakazato) has already been
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`Case No. IPR2017-01321
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`entered into the record as Exhibit 1019, and thus is duplicative.
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`Objections
`Exhibit
`Exhibit 2017 FRE 402: The exhibit includes information that is not relevant to
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`any ground upon which trial was instituted.
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`FRE 403: The exhibit’s probative value to any ground upon which
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`trial was instituted is substantially outweighed by the danger of
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`unfair prejudice, confusing the issues, undue delay, wasting time,
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`or needlessly presenting cumulative evidence.
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`Lack of Foundation: Patent Owner has not provided sufficient
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`explanation of what the exhibit is or what it allegedly shows.
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`Exhibit 2018 FRE 402: The exhibit includes information that is not relevant to
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`any ground upon which trial was instituted.
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`FRE 403: The exhibit’s probative value to any ground upon which
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`trial was instituted is substantially outweighed by the danger of
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`unfair prejudice, confusing the issues, undue delay, wasting time,
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`or needlessly presenting cumulative evidence.
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`Lack of Foundation: Patent Owner has not provided sufficient
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`explanation of what the exhibit is or what it allegedly shows.
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`Exhibit 2019 FRE 402: The exhibit includes information that is not relevant to
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`-2-
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`Exhibit
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`Case No. IPR2017-01321
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`Objections
`any ground upon which trial was instituted.
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`FRE 403: The exhibit’s probative value to any ground upon which
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`trial was instituted is substantially outweighed by the danger of
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`unfair prejudice, confusing the issues, undue delay, wasting time,
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`or needlessly presenting cumulative evidence.
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`Lack of Foundation: Patent Owner has not provided sufficient
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`explanation of what the exhibit is or what it allegedly shows.
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`FRE 901: The exhibit has not been authenticated.
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`Exhibit 2020 FRE 402: The exhibit includes information that is not relevant to
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`any ground upon which trial was instituted.
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`FRE 403: The exhibit’s probative value to any ground upon which
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`trial was instituted is substantially outweighed by the danger of
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`unfair prejudice, confusing the issues, undue delay, wasting time,
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`or needlessly presenting cumulative evidence.
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`Lack of Foundation: Patent Owner has not provided sufficient
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`explanation of what the exhibit is or what it allegedly shows.
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`FRE 901: The exhibit has not been authenticated.
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`Exhibit 2022 FRE 402: The exhibit includes information that is not relevant to
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`any ground upon which trial was instituted.
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`-3-
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`Exhibit
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`Case No. IPR2017-01321
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`Objections
`FRE 403: The exhibit’s probative value to any ground upon which
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`trial was instituted is substantially outweighed by the danger of
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`unfair prejudice, confusing the issues, undue delay, wasting time,
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`or needlessly presenting cumulative evidence.
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`Lack of Foundation: Patent Owner has not provided sufficient
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`explanation of what the exhibit is or what it allegedly shows.
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`Exhibit 2024 FRE 402: The exhibit includes information that is not relevant to
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`any ground upon which trial was instituted.
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`FRE 403: The exhibit’s probative value to any ground upon which
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`trial was instituted is substantially outweighed by the danger of
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`unfair prejudice, confusing the issues, undue delay, wasting time,
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`or needlessly presenting cumulative evidence.
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`Lack of Foundation: Patent Owner has not provided sufficient
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`explanation of what the exhibit is or what it allegedly shows.
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`FRE 901: The exhibit has not been authenticated.
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`Exhibit 2031 FRE 403: The exhibit is a duplicate of Exhibit 1019 and no further
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`statements are given for presenting cumulative evidence.
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`-4-
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`Ex. 2025 – Declaration of Jack Emert. Petitioner further objects to Exhibit
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`Case No. IPR2017-01321
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`2025 in its entirety to the extent it provides assertions without citation, and without
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`laying foundation. Afton reserves its right to further challenge Dr. Emert’s
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`testimony based on deposition of this individual. Afton reserves the right to move
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`to exclude Exhibit 2025 in whole or in part. Petitioner objects to the following
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`paragraphs of Ex. 2025:
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`Paragraph Objections
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`¶¶ 9, 47, 98,
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`FRE 702. The statements and opinions set forth in these
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`101, 156,
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`paragraphs, including those regarding what was purportedly
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`165
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`“known”, “widely used,” “typical,” or “standard” are not based
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`on sufficient facts or data.
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`¶¶ 33, 35,
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`FRE 702. The statements and opinions set forth in these
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`37-39, 46
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`paragraphs are based on an incorrect interpretation of
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`Component G in Colclough and are not based on sufficient facts
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`or data, and are not the result of the application of reliable
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`scientific principles and methods.
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`¶¶ 48, 51-57 FRE 402. These paragraphs cite to a document (Ex. 2014) that is
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`irrelevant for purposes of establishing the state of the art and the
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`and are thus irrelevant for purposes of establishing the state of the
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`art and the beliefs of those of ordinary skill as of the ’274 patent’s
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`-5-
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`effective filing date.
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`Case No. IPR2017-01321
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`FRE 702. The statements and opinions set forth in these
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`paragraphs are not based on sufficient facts or data, and are not
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`the result of the application of reliable scientific principles and
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`methods.
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`FRE 802. These paragraphs improperly cite the out of court
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`statements of Ex. 2014 to establish the truth of the matter
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`asserted.
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`¶¶ 48, 51,
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`FRE 402. These paragraphs cite to documents (Ex. 2017, 2018,
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`53, 56, 57
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`2019, and/or 2020) that are irrelevant for purposes of establishing
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`the state of the art and are thus irrelevant for purposes of
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`establishing the state of the art and the beliefs of those of ordinary
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`skill as of the ’274 Patent’s effective filing date.
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`FRE 802. These paragraphs improperly cite the out of court
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`statements of Ex. 2017, 2018, 2019, and/or 2020 to establish the
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`truth of the matter asserted.
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`¶¶ 58-60
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`FRE 702. The statements and opinions regarding Colclough set
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`forth in these paragraphs are not based on sufficient facts or
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`data, and are not the result of the application of reliable scientific
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`principles and methods.
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`-6-
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`¶¶ 64-68
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`Case No. IPR2017-01321
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`FRE 702. The statements and opinions regarding Nicholson set
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`forth in these paragraphs are not based on sufficient facts or
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`data, and are not the result of the application of reliable scientific
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`principles and methods.
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`¶¶ 69-73
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`FRE 702. The statements and opinions regarding the ACEA
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`2004 specification set forth in these paragraphs are not based on
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`sufficient facts or data, and are not the result of the application of
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`reliable scientific principles and methods.
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`¶¶ 74-78
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`FRE 702. The statements and opinions set forth in these
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`paragraphs are not based on sufficient facts or data, and are not
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`the result of the application of reliable scientific principles and
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`methods.
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`¶¶ 86 & 87 FRE 702. The statements and opinions set forth in these
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`paragraphs, including those regarding what was purportedly
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`“likely” are not based on sufficient facts or data, and are not the
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`result of the application of reliable scientific principles and
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`methods.
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`¶¶ 90 & 91 FRE 702. The statements and opinions set forth in these
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`paragraphs are not based on sufficient facts or data, and are not
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`the result of the application of reliable scientific principles and
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`-7-
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`methods.
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`Case No. IPR2017-01321
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`¶¶ 95-99
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`FRE 702. The statements and opinions set forth in these
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`paragraphs, including those regarding what was purportedly
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`“critical” are not based on sufficient facts or data, and are not the
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`result of the application of reliable scientific principles and
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`methods.
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`FRE 802. These paragraphs improperly cite the out of court
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`statements of Exs. 2016 and 2034 to establish the truth of the
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`matter asserted.
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`¶ 100
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`FRE 702. The statements and opinions set forth in this
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`paragraph, including the statements “any other determinable
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`amount of nitrogen” and “small amount of nitrogen” are not
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`based on sufficient facts or data, and are not the result of the
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`application of reliable scientific principles and methods.
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`¶¶ 102-107 FRE 702. The statements and opinions set forth in these
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`paragraphs are not based on sufficient facts or data, and are not
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`the result of the application of reliable scientific principles and
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`methods.
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`FRE 802. These paragraphs improperly cite the out of court
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`statements of US Pat. No. 4,908,145 (Ex. 2007) to establish the
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`-8-
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`truth of the matter asserted.
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`Case No. IPR2017-01321
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`¶¶ 110-116 FRE 702. The statements and opinions set forth in these
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`paragraphs, including those regarding what was purportedly
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`“definitive nitrogen content” are not based on sufficient facts or
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`data, and are not the result of the application of reliable scientific
`
`principles and methods.
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`FRE 402/403. The table within paragraph 114 is irrelevant
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`because it is labelled “Fetterman Example IV” and is not
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`relevant to any ground upon which trial was instituted.
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`¶¶ 132, 135,
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`FRE 702. The statements and opinions regarding Colclough set
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`139, 140
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`forth in these paragraphs, including those regarding what was
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`“off-limits” are not based on sufficient facts or data, and are not
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`the result of the application of reliable scientific principles and
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`methods.
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`¶¶ 141-152,
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`FRE 702. The statements and opinions regarding Nicholson set
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`154-159
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`forth in these paragraphs are not based on sufficient facts or
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`data, and are not the result of the application of reliable scientific
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`principles and methods.
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`¶ 161
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`FRE 402/403. This paragraph is irrelevant because the statement
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`– “I agree that Fetterman neither anticipates nor renders obvious
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`-9-
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`Case No. IPR2017-01321
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`proposed amended claims 14-25” – improperly implies that the
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`Board considered the amended claims upon institution.
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`¶¶ 161-163 FRE 402/403. These paragraphs are irrelevant, confusing and
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`misleading because the statements refer to “Fetterman” without
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`citing an Exhibit number and Dr. Emert considered two different
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`Fetterman references (Ex. 1010 and Ex. 2032) in paragraph 159.
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`¶¶ 162 &
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`FRE 702. The statements and opinions set forth in these
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`163
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`paragraphs are not based on sufficient facts or data, and are not
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`the result of the application of reliable scientific principles and
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`methods.
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`¶¶ 162 &
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`FRE 402/403. These paragraphs are irrelevant because the
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`167
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`statement – “between 0.05 and 0.15 mass% magnesium” –
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`misstates the claim range of magnesium in amended claim 14.
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`¶ 163
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`FRE 402/403. This paragraph is irrelevant, confusing and
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`misleading because the statement – “[t]he ’274 patent claim’s
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`require the opposite – a sulfur-free aminic or phenolic
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`antioxidant” – misstates the claim language in ’274 Patent and is
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`not relevant to amended claims 14-25.
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`¶¶ 165 &
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`FRE 402/403. These paragraphs are irrelevant, confusing and
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`-10-
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`166
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`Case No. IPR2017-01321
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`misleading because both “Arrowsmith ‘958” and “Arrowsmith
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`‘985” are referred to in the paragraph without citing an Exhibit
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`number.
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`¶ 168
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`FRE 402/403. This paragraph is irrelevant because the statement
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`– “all the components required by the ’274 patent” – misstates
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`the claim of ’274 Patent with the disclosure and is not relevant to
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`amended claims 14-25.
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`¶¶ 169, 171-
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`FRE 702. The statements and opinions set forth in these
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`180, 182-187
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`paragraphs are not based on sufficient facts or data, and are not
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`the result of the application of reliable scientific principles and
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`methods.
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`Petitioner maintains all of its objections to Exhibits 2001-2016 filed on
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`August 8, 2017 to the evidence filed with Patent Owner’s Preliminary Response.
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`Petitioner reserves the right to move to exclude the above referenced
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`Exhibits in whole or in part.
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`-11-
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`In view of these objections, Petitioner also objects to any other testimony or
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`Case No. IPR2017-01321
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`arguments that cite or rely on any of the above mentioned exhibits.
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`Respectfully,
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`By: /s/ Matias Ferrario
`Matias Ferrario
`Registration No. 51,082
`Lead Counsel for Petitioner
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`
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`Dated: February 9, 2018
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`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`Telephone: 336 607 7475
`Facsimile: 336 734 2651
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`-12-
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`Case No. IPR2017-01321
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`CERTIFICATE OF SERVICE
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`
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`The undersigned certifies that on February 9, 2018, a complete copy of this
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`NOTICE OF PETITIONER’S OBJECTIONS TO PATENT OWNER’S
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`RESPONSE EVIDENCE, was served via email on Counsel for Patent Owners at
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`the email addresses listed below:
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`Elizabeth A. Gardner, Orrick, Herrington & Sutcliffe LLP
`51 West 52nd Street
`New York, NY 10019
`egardner@orrick.com
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`K. Patrick Herman, Orrick, Herrington & Sutcliffe LLP
`pherman@orrick.com
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`Don Daybell, Orrick, Herrington & Sutcliffe LLP
`ddaybell@orrick.com
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`E1APTABDocket@orrick.com; P52PTABDocket@orrick.com; and
`D2DPTABDocket@orrick.com
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`Respectfully,
`By: /s/ Matias Ferrario
`Matias Ferrario
`Registration No. 51,082
`Lead Counsel for Petitioner
`
`
`
`
`
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`Telephone: 336 607 7475
`Facsimile: 336 734 2651
`
`-13-
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