UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`AFTON CHEMICAL CORPORATION
`
`Petitioner
`v.
`INFINEUM INTERNATIONAL LIMITED
`
`Patent Owner
`
`Case IPR2017-01321
`U.S. Patent No. 8,076,274
`__________________________________________________________________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE
`__________________________________________________________________
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`AFTON CHEMICAL CORPORATION
`
`Petitioner
`v.
`INFINEUM INTERNATIONAL LIMITED
`
`Patent Owner
`
`Case IPR2017-01321
`U.S. Patent No. 8,076,274
`__________________________________________________________________
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE
`__________________________________________________________________
`
`
`
`Patent Owner Infineum International Ltd. (“Infineum” or “Patent Owner”)
`
`respectfully submits the following opposition to the motion to exclude filed by
`
`Petitioner Afton Chemical Corp. (“Afton” or “Petitioner”). (See Paper 36.) None
`
`of the exhibits discussed in Afton’s motion to amend can be excluded.
`
`Afton first discusses Exhibits 2014, 2017, 2018, 2019, 2020, and 2024.
`
`These exhibits all relate to the composition of Irganox L 57, a component used by
`
`certain of the Colclough reference’s examples. Afton—not Infineum—bears the
`
`burden of showing that Colclough expressly or inherently discloses everything that
`
`the ’274 patent’s claims require. According to Afton, these exhibits are irrelevant
`
`because they are dated after the 2006 filing date of the ’274 patent. But, post-filing
`
`documents can be used to establish the state of the art as of the date of a patent’s
`
`filing. This is exactly why Patent Owner does here: it cites Exhibits 2014, 2017,
`
`2018, 2019, 2020, and 2024 to show what one of ordinary skill in the art would
`
`understand the composition of Irganox L 57 to be at the time the ’274 patent was
`
`filed.
`
`Afton next moves to exclude unspecified portions of Exhibit 2025, an expert
`
`declaration submitted by Infineum’s expert Dr. Emert. According to Afton, this
`
`exhibit is “unreliable” because it references the same Irganox L 57 documents that
`
`Afton now wants to exclude, and makes a purported calculation error. But, the
`
`Irganox L 57 documents are all admissible. Thus, there is no reason why Dr.
`
`-1-
`
`
`
`Emert cannot cite to and rely on these exhibits. Further, with respect to Dr.
`
`Emert’s calculations, Afton has not introduced any expert testimony explaining
`
`why Dr. Emert’s erred. Instead, it relies solely on attorney argument. And, that
`
`attorney argument misapprehends what Dr. Emert is saying. When reviewed in its
`
`entirety, there is nothing unreliable about Dr. Emert’s testimony.
`
`Afton also asks the Board to exclude Exhibits 2037, a declaration signed by
`
`an Infineum patent counsel, and 2038, a cover email and attached draft of the
`
`application that led to the ’274 patent. According to Afton, these exhibits are
`
`inadmissible because they are redacted and incomplete. But, Infineum produced
`
`the entirety of the declaration and draft application without redaction. And, while
`
`limited attorney/client privileged information was removed from the body of the
`
`cover email, this redacted information is irrelevant to this proceeding. Infineum
`
`only relies on Exhibit 2038 to show that the invention of the ’274 patent was
`
`conceived and reduced to practice prior to the filing of one of the patents identified
`
`in Afton’s motion to amend opposition. The visible portions of Ex. 2038, including
`
`the date, time, and recipient list on the cover, and the complete application that
`
`spans the remainder of the exhibit, show that it was.
`
`I.
`
`Exhibits 2014, 2017, 2018, and 2024
`
`Again, Afton first moves to exclude Exhibits 2014, 2017, 2018, and 2024.
`
`(See Paper 36 at 3-4.) These exhibits are material safety data sheets (“MSDS”) for
`
`-2-
`
`
`
`Irganox L 57, an antioxidant employed by certain of the examples set forth in the
`
`Colclough reference. According to Afton, all of these exhibits are “irrelevant”
`
`because they are dated after the effective filing date of Infineum’s ’274 patent.
`
`(See id.) Afton is wrong.
`
`Afton’s petition argues that Colclough anticipates claims 1-11 of the ’274
`
`patent. (See Paper 1, Petition at 26-34.) Afton, not Infineum, bears the burden to
`
`show that Colclough either expressly or inherently discloses every limitation
`
`required by the claims. In an effort to show that Colclough includes the
`
`“antioxidant component … selected from one or more ash-free aminic and/or
`
`sulfur-free phenolic compounds in an amount of at least 0.6 mass % up to 3.0 mass
`
`%” required by the ’274 patent, Afton points to Colclough’s use of “an alkylated
`
`diphenylamine antioxidant, commercially available as Irganox L-57 from Ciba-
`
`Geigy.” (Id. at 27 (citing Ex. 1007, Colclough at 7:5).) Infineum cited Exhibits
`
`2014, 2017, 2018, and 2024 to show that, as of the ’274 patent’s filing date, one of
`
`ordinary skill in the art would have understood that Irganox L 57 is not necessarily
`
`composed of 100% aminic antioxidant, but instead may include as little as 60%
`
`antioxidant. (See, e.g., Paper 16, Response at 22-24.) Thus, these documents are
`
`highly pertinent to—and serve to rebut—Afton’s allegations regarding Colclough.
`
`Afton is correct that Exhibits 2014, 2017, 2018, and 2024 bear dates that are
`
`later than the ’274 patent’s 2006 filing date. This alone, however, does not render
`
`-3-
`
`
`
`them irrelevant. Indeed, the Federal Circuit has repeatedly explained that “later”
`
`published documents can be used “as evidence of the state of the art existing” as of
`
`the filing date of a patent-at-issue. Plant Genetic Sys., N.V. v. DeKalb Genetics
`
`Corp., 315 F.3d 1335, 1344 (Fed. Cir. 2003); see also Bd. Of Trust. Leland
`
`Stanford Jr. Univ. V. Chinese Univ. of Hong Kong, 860 F.3d 1367, 1378 (Fed. Cir.
`
`2017) (explaining that the patent office should consider “post-filing date
`
`publications” that “contain art-related facts” relating to the meaning of a term used
`
`in a patent specification); Amgen Inc. v. Sanofi, 872 F.3d 1367, 1375-76 (Fed. Cir.
`
`2017) (explaining that while “post-priority-date evidence” cannot be introduced to
`
`“illuminate the post-priority-date state of the art,” it can be used to show the state
`
`of the art at and prior to the time of filing); Gould v. Quigg, 822 F.2d 1074, 1078
`
`(Fed. Cir. 1987) (holding that a technical article, published after the filing date, can
`
`be considered as “evidence of the level of ordinary skill in the art at the time of the
`
`application and as evidence that the disclosed device would have been operative”);
`
`Thomas & Betts Corp. v. Litton Sys. Inc., 720 F.2d 1572, 1581 (Fed. Cir. 1983)
`
`(explaining that later documents “though not technically prior art,” may properly
`
`be used “as indicators of the level of ordinary skill in the art to which the invention
`
`pertained.”); In re Hogan, 559 F.2d 595, 605 (CCPA 1977) (noting that “later
`
`publications” can be used “as evidence of the state of the art existing on the filing
`
`date of an application”).
`
`-4-
`
`
`
`Infineum does not cite to Exhibits 2014, 2017, 2018, and 2024 because they
`
`are “prior art” to the ’274 patent. Instead, it references these exhibits solely to
`
`show what one of ordinary skill in the art would have understood the reference to
`
`“Irganox L 57” in Colclough to mean when the ’274 patent was filed. As
`
`established by the Plant Genetics, Leland Stanford Jr., Amgen, Gould, Thomas &
`
`Betts, and In re Hogan, post-filing date publications can be introduced and used for
`
`this purpose.
`
`Infineum also does not rely on Exhibits 2014, 2017, 2018, and 2024 in
`
`isolation. These exhibits are discussed extensively by Infineum’s expert, Dr.
`
`Emert. (See Ex. 2025, Emert Dec. at ¶¶ 40-57.) And, Dr. Emert expressly stated
`
`that the exhibits, while dated after 2006, provide insight into the purity of Irganox
`
`L 57 as it would have existed as of the ’274 patent’s filing date. (See id. at ¶¶ 40,
`
`48, 55.) According to Dr. Emert, the purity of commercially available lubricant
`
`components increases—and does not decrease—over time. (See id. at ¶¶ 54-57.)
`
`Thus, Dr. Emert testified that the fact that version of Irganox L 57 with a 60-100%
`
`purity existed in 2009—as shown by Exhibits 2014, 2017, 2017, and 2024—
`
`establishes that the version of Irganox available before this date also had a purity
`
`no better than 60-100%. (Id. at ¶¶ 55-57.) Further, Dr. Emert stated that it would
`
`be unreasonable to assume—as Afton itself does—that only a 100% pure version
`
`-5-
`
`
`
`existed in 1988 and 2006, when the evidence plainly shows that 60-100% versions
`
`were available three years later. (See id. at ¶ 55.)
`
`Afton’s own witnesses also provided testimony further confirming that
`
`Exhibits 2014, 2017, 2018, and 2024 are relevant to the state of the art as of the
`
`’274 patent’s filing date. For instance, Mr. Styer, a former Afton employee, was
`
`questioned regarding all these exhibits. (See Ex. 2026, Styer Depo. at 76:1-78:18.)
`
`And, he testified that while the documents bear 2009 and later dates, the version of
`
`Irganox L 57 available for purchase at earlier times—including both in 1988 and
`
`2007— would “[p]robably not” be available with a higher purity that that set forth
`
`in Exhibits 2014, 2017, 2018, and 2024. (Id. at 77:22-78:3.)
`
`In sum, Exhibits 2014, 2017, 2018, and 2024 can be used to establish the
`
`state of the art as of the ’274 patent’s filing date. And, the usefulness of these
`
`exhibits for this purpose is confirmed by the testimony of both Patent Owner’s and
`
`Petitioner’s declarants. Thus, the exhibits are plainly relevant to whether
`
`Colclough necessarily discloses the “antioxidant component” required by claims 1-
`
`11 and cannot properly be excluded.
`
`II. Exhibits 2019 and 2020
`
`Afton also moves to exclude Exhibits 2019 and 2020. (See Paper 36 at 3-4.)
`
`These exhibits are MSDS for a product referred to as “Irganox 5057.” Irganox
`
`5057, like Irganox L 57, is identified as “Benzenamine, N-phenyl-, reaction
`
`-6-
`
`
`
`products with 2,4,4-trimethylpentene.” (Compare Exs. 2019, 2020 with Exs. 2014,
`
`2017, 2018, and 2024.)
`
`According to Afton, these exhibits are inadmissible both because they are
`
`dated after 2006, and because they refer to “Irganox 5057” instead of “Irganox L
`
`57.” (Paper 36 at 3-4.) But, as described above, it was entirely proper for
`
`Infineum to rely on post-2006 documents to show the state of the art as of the ’274
`
`patent’s filing date. And, while Exhibits 2019 and 2020 do reference “Irganox
`
`5057,” they nonetheless relate to the same component formed using the same
`
`materials and same reaction as Irganox L 57. Thus, as Dr. Emert explains, these
`
`exhibits also have a bearing on what one of ordinary skill in the art would
`
`understand the composition of Irganox L 57 to be at the time the ’274 patent was
`
`filed. (See Ex. 2025, Emert Dec. at ¶ 57.) In view of this, neither exhibit can be
`
`excluded.
`
`III. Exhibit 2025
`
`Afton next moves to exclude the Declaration of Dr. Emert (Ex. 2025) as
`
`“unreliable.” (Paper 36 at 5-7.) But, Afton fails to specifically identify which
`
`portions of Dr. Emert’s declaration purportedly run afoul of the Rules of Evidence
`
`and should be excluded. Instead, it just generically references the entirety of
`
`Exhibit 2025. This alone merits denial of its motion. Regardless, even if Afton
`
`-7-
`
`
`
`had identified the specific portions of Dr. Emert’s testimony it found objectionable,
`
`the entirety of Exhibit 2025 is reliable and admissible.
`
`A.
`
`Dr. Emert’s Testimony Regarding Irganox L-57
`
`Afton first takes issue with Dr. Emert’s citation to Exhibits 2014, 2017,
`
`2018, 2019, and 2020. (See Paper 36 at 6.) But, as explained above, these Irganox
`
`L 57 and 5057 MSDS are relevant and admissible. Further, Dr. Emert explains in
`
`detail why these exhibits—despite being dated after 2006—provide insight into the
`
`state of the art as of the ’274 patent’s filing date. (See Ex. 2025, Emert Dec. at ¶¶
`
`40-57.) Thus, there is nothing unreliable about Dr. Emert’s testimony. Instead,
`
`this testimony is supported by the record and is highly relevant to whether
`
`Colclough discloses use of an amount of “antioxidant composition” falling within
`
`the range required by the ’274 patent’s claims.
`
`B.
`
`Dr. Emert’s Calculations Regarding Nicholson’s Dispersants
`
`Afton also complains about Dr. Emert’s testimony regarding Nicholson’s
`
`examples. (Paper 36 at 6-7.) But, Afton misunderstands both Dr. Emert’s
`
`declaration and the testimony he provided at his deposition. There is nothing
`
`unreliable about what Dr. Emert says.
`
`Again, Afton does not clearly identify exactly which paragraphs of Dr.
`
`Emert’s declaration it considers “unreliable.” Its motion does, however, cite to
`
`paragraph 112. (Paper 36 at 6.) This paragraph relates to the nitrogen content of
`
`-8-
`
`
`
`the dispersants used by the Nicholson reference’s example IV. (See Ex. 2025,
`
`Emert Dec. at ¶ 112.) And, this paragraph is part of Dr. Emert’s overall testimony
`
`and opinions explaining: (1) how Nicholson fails to identify the actual nitrogen
`
`content of the dispersants used by example IV and (2) why Nicholson does not
`
`provide adequate information that would allow one of ordinary skill in the art to
`
`conclude that the dispersants should have a nitrogen content within the ranges
`
`required by claims 6 and 7. (See id. at ¶¶ 88-116.)
`
`As an initial matter, Afton has not introduced any expert testimony or other
`
`evidence of its own challenging Dr. Emert’s opinions. Instead, it relies entirely on
`
`attorney argument. This does not—and cannot—establish that Dr. Emert’s now
`
`uncontroverted opinions regarding the nitrogen content of example IV are
`
`“unreliable.”
`
`In any event, Dr. Emert’s opinions regarding example IV are both accurate
`
`and reliable. Afton does not dispute that Nicholson fails to provide the nitrogen
`
`content of the dispersants used in this example. (See Ex. 2026, Styer Depo. at
`
`81:20-82:6; see also Ex. 2027, Lam Depo. at 113:9-115:12.) And, Afton did not
`
`even attempt to estimate the amount of nitrogen content of those dispersants.
`
`Instead, it simply synthesized its own versions of the dispersants (using
`
`unspecified materials and an unspecified method) and then measured (using some
`
`-9-
`
`
`
`unknown method) the nitrogen content of the dispersants it synthesized. (See, e.g.,
`
`Ex. 1006, Styer Dec. at ¶¶ 55-56.)
`
`In response to Afton’s analysis of example IV, Dr. Emert explained the
`
`deficiencies with Nicholson’s disclosure, and then provided an estimate of the
`
`maximum amount of nitrogen that one of ordinary skill in the art would consider to
`
`be present in the example given the limited amount of information provided. As
`
`Dr. Emert explains, example IV uses dispersant B-4, which is based on dispersant
`
`B-1. (See Ex. 2025, Emert Dec. at ¶ 108.) The nitrogen in both of these
`
`dispersants comes from the TEPA used during synthesis. (See id. at ¶ 110.) In
`
`connection with example B-1, Nicholson provides the relative molar ratio of boric
`
`acid to TEPA used when making the dispersant, and the boron and nitrogen
`
`content of the final dispersant. (See id. at ¶ 112.) Then, in Example B-4,
`
`Nicholson specifies that example B-1 was followed, except that the relative molar
`
`ratio of boric acid to TEPA was reduced. (See id.) It also provides the boron
`
`content—but not the nitrogen content—of the final dispersant. (See id.) Using this
`
`information, Dr. Emert explained that given the change in the relative molar ratio
`
`of boric acid to TEPA between examples B-1 and B-4, one would expect the
`
`amount of boron in example B-4 to be lower than what is reported by Nicholson.
`
`(See id.) Thus, Dr. Emert explained that to actually achieve example B-4’s
`
`reported boron content while using that example’s specified boric acid to TEPA
`
`-10-
`
`
`
`molar ratio, it would be necessary to change the total molar amount of TEPA used.
`
`(See id.) This would in turn reduce the amount of nitrogen in the example to an
`
`amount no greater than that reported by Dr. Emert. (See id.)
`
`Dr. Emert’s deposition testimony is entirely consistent with this analysis.
`
`During his deposition, Dr. Emert explained that because Nicholson provides only
`
`boric acid to TEPA molar ratios—and not the absolute molar amounts of boric
`
`acid and TEPA—the change in this ratio between examples B-1 and B-4 would
`
`result in a reduction in Example B-4’s nitrogen content. (See, e.g., Ex. 1046,
`
`Emert Depo. at 48:3-21, 49:21-50:8.) This is the case because the reported molar
`
`ratios—because they are ratios—depend on both the molar amount of boric acid
`
`and the molar amount of TEPA present. Dr. Emert did not state, however, as
`
`Afton appears to argue in its motion to exclude, that merely adding more or less
`
`boric acid without changing the absolute amount of TEPA impacts nitrogen
`
`content. (See id.)
`
`Afton also attempts to interject additional confusion into Dr. Emert’s
`
`testimony by referencing other examples in Nicholson, including Example B-2.
`
`(See Paper 36 at 7.) But, Afton does not rely on Example B-2 to establish that
`
`Nicholson satisfies the nitrogen content limitations of claims 6 and 7 of the ’274
`
`patent. Further, the dispersant of Example B-2 is different from that of both
`
`Examples B-1 and B-4. In particular, in this example, Nicholson specifically
`
`-11-
`
`
`
`explains that the dispersant was “diluted to 1.70 % nitrogen.” (Ex. 1009,
`
`Nicholson at 7:6-10.) No such dilution step to achieve a particular nitrogen
`
`content was performed in either example B-1 or B-4. (See id. at 6:52-7:4, 7:17-
`
`20.) Thus, there was no reason for Dr. Emert to consider example B-2 in his
`
`analysis.
`
`In view of the above, Dr. Emert’s testimony regarding the nitrogen content
`
`of Nicholson’s example IV is uncontroverted, highly relevant, and reliable. It—
`
`like the rest of the evidence discussed in Afton’s motion—cannot be excluded.
`
`IV. Exhibits 2037 and 2038
`
`Finally, Afton moves to exclude Exhibits 2037 and Exhibit 2038. Exhibit
`
`2037 is a declaration signed by Jacob Levine, Infineum’s Chief U.S. Patent
`
`Attorney. (See Ex. 2037.) Exhibit 2038 is a June 2006 email directed to Mr.
`
`Levine and others at Infineum to which a draft of the application that eventually
`
`led to the ’274 patent was attached. (See Ex. 2038.) Infineum relies on both these
`
`exhibits to show that the ’274 patent was conceived and reduced to practice prior
`
`to the filing of the Diggs patent identified in Afton’s motion to amend opposition.
`
`(See Paper 29, Motion to Amend Reply at 4-5.)
`
`Afton only objects to Exhibits 2037 and 2038 as “incomplete” because they
`
`are “redacted.” (See Paper 36 at 8-9.) Afton does not argue that either exhibit is
`
`irrelevant, inauthentic, or otherwise inadmissible.
`
`-12-
`
`
`
`None of Exhibit 2037 has been redacted. Thus, that exhibit is complete and
`
`cannot be excluded on the basis set forth in Afton’s motion. Further, Exhibit 2038
`
`is a two-part document. Pages 2-15 of Exhibit 2038 is a draft of the patent
`
`application that eventually led to the ’274 patent when filed. This draft patent
`
`application was submitted by Patent Owner in complete and un-redacted form.
`
`(See Ex. 2038 at 2-15.) Thus, it also cannot be excluded as incomplete. Page 1 is
`
`Exhibit 2038 is a cover email to which the draft patent application was attached.
`
`(See id. at 1.) Patent Owner relies only on this cover email to (1) date the draft
`
`patent application and (2) show that it was disclosed to others at Infineum besides
`
`the inventors. (See Paper 29, Motion to Amend Reply at 4-5.) Petitioner does not
`
`contest that the cover email establishes these two points. Further, the cover email’s
`
`the date and time stamp and the recipient list is not redacted and is plainly visible.
`
`(See Ex. 2038 at 1.) The only redacted portion of the exhibit is the body of the
`
`email. (See id.) But, Patent Owner is not relying on the body of the email and
`
`makes no reference to it in any of its papers.
`
`The only case that Afton cites in support of its motion to exclude Exhibits
`
`2037 and 2038 is Seagate Tech. (US) Holdings, Inc. v. Enova Tech. Corp.,
`
`IPR2014-00683 (PTAB, Sept. 2, 2015). This case, however, is inapposite. There,
`
`the patent owner attempted to rely on a series of settlement and licensing
`
`agreements in an effort to show that objective indicia existed that weighed in favor
`
`-13-
`
`
`
`of non-obviousness. Id. at 55. But, the agreements were “almost entirely
`
`redacted” such that “Patent Owner’s assertions regarding these agreements” could
`
`not be “verified.” Id. Here, the only portion of Exhibit 2038 that was redacted was
`
`the brief body of the cover email found on page 1. But, as explained above, the
`
`body of this email—which was not drafted by the inventors identified on the face
`
`of the ’274 patent—is not cited and is simply not relevant to any of the issues in
`
`this proceeding. Instead, the only relevant issue is whether the ’274 patent
`
`inventors conceived and reduced the patent’s subject matter to practice before
`
`Diggs was filed. Exhibit 2038—which is dated before Diggs and includes a
`
`complete copy of a draft of the ’274 patent’s application—plainly establishes that
`
`they did. Thus, neither Exhibit 2037 nor Exhibit 2038 can be excluded as
`
`“incomplete.”
`
`Date: July 20, 2018
`
`Respectfully submitted,
`
`/ Elizabeth Gardner /
`Elizabeth Gardner (Reg. No. 36,519)
`Orrick, Herrington, & Sutcliffe LLP
`51 West 52nd Street
`New York, NY 10019
`Tel: 212-506-5000
`Fax. 212-506-5151
`Email: egardner@orrick.com
`
`Counsel for Patent Owner
`
`-14-
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby confirms that the foregoing PATENT OWNER’S
`
`OPPOSITION TO PETITIONER’S MOTION TO EXCLUDE was caused to be
`
`served on July 20, 2018 via e-mail upon the following counsel of record for
`
`Petitioner:
`
`Matias Ferrario
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`mferrario@kilpatricktownsend.com
`
`Keith Fredlake
`Kilpatrick Townsend & Stockton LLP
`607 14th Street, NW Suite 900
`Washington, DC 20005-2018
`kfredlake@kilpatricktownsend.com
`
`8076274IPR@kilpatricktownsend.com
`
`/ Elizabeth Gardner /
`Elizabeth Gardner (Reg. No. 36,519)
`Orrick, Herrington, & Sutcliffe LLP
`51 West 52nd Street
`New York, NY 10019
`Tel: 212-506-5000
`Fax. 212-506-5151
`Email: egardner@orrick.com
`
`-15-
`
`
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