Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: October 6, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`NEW NGC, INC. dba NATIONAL GYPSUM COMPANY,
`Petitioner,
`
`v.
`
`UNITED STATES GYPSUM COMPANY,
`Patent Owner.
`
`
`
`Case IPR2017-01350
`Patent 6,342,284 B1
`
`
`Before RAE LYNN P. GUEST, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 8
`Entered: October 6, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`NEW NGC, INC. dba NATIONAL GYPSUM COMPANY,
`Petitioner,
`
`v.
`
`UNITED STATES GYPSUM COMPANY,
`Patent Owner.
`
`
`
`Case IPR2017-01350
`Patent 6,342,284 B1
`
`
`Before RAE LYNN P. GUEST, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-01350
`Patent 6,342,284 B2
`
`I. INTRODUCTION
`New NGC, Incorporated dba National Gypsum Company
`(“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting inter partes review
`of claims 1–7, 10–15, 18, 22, 26, 29, 32–34, and 40 of U.S. Patent No.
`6,342,284 B1 (Ex. 1003, “the ’284 patent”). United States Gypsum
`Company (“Patent Owner”) filed a Preliminary Response to the Petition
`(Paper 7, “Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting
`an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that
`an inter partes review may not be instituted “unless the Director
`determines . . . there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`After considering the Petition and Preliminary Response, we
`determine that Petitioner has not demonstrated a reasonable likelihood of
`prevailing with respect to the challenged claims. Accordingly, we do not
`institute inter partes review.
`
`A. Related Proceedings
`The parties inform us that the ’284 patent is currently at issue in
`United States Gypsum Co. v. New NGC, Inc., Case No. 1:17-cv-00130 (D.
`Del. Feb. 6, 2017). Pet. 1; Paper 4, 1. In addition, the parties indicate that
`related patents are at issue in IPR2017–01011 (US 7,964,034), IPR2017-
`01086 (US 6,632,550), IPR2017–01088 (US 7,425,236), IPR2017–1351
`(US 7,758,980), IPR2017–01352 (US 8,142,914), and IPR2017–01353 (US
`8,500,904). Pet. 1; Paper 4, 1.
`
`2
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`IPR2017-01350
`Patent 6,342,284 B2
`B. The ’284 Patent
`The ’284 patent discloses a method and composition for preparing set
`gypsum-containing products having increased resistance to permanent
`deformation (e.g., sag resistance). Ex. 1003, 1:17–20.
`The ’284 patent explains that most gypsum-containing products are
`prepared by forming a mixture of calcined gypsum (calcium sulfate
`hemihydrate and/or calcium sulfate anhydrite) and water, casting the mixture
`into a desired shape, and allowing the mixture to harden to form set gypsum.
`Id. at 1:62–1:67. During this process, the calcined gypsum is rehydrated
`with water, forming an interlocking matrix of set gypsum crystals (calcium
`sulfate dihydrate) and imparting strength to the gypsum structure of the
`gypsum-containing product. Id. at 1:65–2:8. Although the matrix of
`gypsum crystals increases the strength of the gypsum-containing product,
`the ’284 patent posits that existing gypsum-containing products could still
`benefit if the strength of their component set gypsum crystal structures were
`increased. Id. at 2:9–12.
`To increase the strength, dimensional stability, and resistance to
`permanent deformation of set gypsum-containing products, the ’284 patent
`discloses mixing calcium sulfate material, water, and an appropriate amount
`of one or more enhancing materials. Id. at 1:17–20. In a preferred
`embodiment, the enhancing material is in the form of trimetaphosphate ions
`derived from sodium trimetaphosphate (STMP). Id. at 4:25–34. According
`to the ’284 patent, it was found that the set gypsum-containing products
`incorporating this compound were “unexpectedly found to have increased
`strength, resistance to permanent deformation (e.g., sag resistance), and
`dimensional stability, compared with set gypsum formed from a mixture
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`3
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`IPR2017-01350
`Patent 6,342,284 B2
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`containing no trimetaphosphate ion.” Id. at 4:35–41. It was also
`“unexpectedly found that trimetaphosphate ion . . . does not retard the rate of
`the formation of set gypsum from calcined gypsum,” and, in fact, actually
`accelerates the rate of rehydration. Id. at 4:42–48. According to the ’284
`patent, this is “especially surprising” because most “phosphoric or phosphate
`materials retard the rate of formation of set gypsum and decrease the
`strength of the gypsum formed.” Id. at 4:48–54.
`
`C. Illustrative Claim
`Claim 1 is illustrative of the challenged claims and is reproduced
`below:
`1. A composition comprising a mixture of: a calcium sulfate material,
`water, a pregelatinized starch and one or more enhancing materials
`selected from the group consisting of:
`condensed phosphoric acids, each of which comprises 2 or more
`phosphoric acid units; and salts or ions of condensed phosphates, each
`of which comprises 2 or more phosphate units,
`wherein when said composition is cast in the form of ½ inch gypsum
`board, said board has a sag resistance, as determined according to
`ASTM C473-95, of less than about 0.1 inch per two foot length of
`said board.
`Ex. 1003, 31:50–59 (line breaks added for readability).
`D. The Asserted Grounds of Unpatentability
`Petitioner contends claims 1–7, 10–15, 18, 22, 26, 29, 32–34, and 40
`of the ’284 patent are unpatentable based on the following grounds (Pet. 2–
`3):1
`
`
`1 Petitioner also relies on a declaration from Mr. Gerry Harlos (Ex. 1001).
`
`4
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`Patent 6,342,284 B2
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`References
`Graux,2 ASTM C473-95,3
`Hjelmeland,4 Sucech,5 Baig,6 and
`Summerfield7
`
`Satterthwaite,8 ASTM C473-95,
`Hjelmeland, Sucech, Baig, and
`Summerfield
`
`Basis Claims Challenged
`§ 103
`1–7, 10–15, 18, 22, 26, 29,
`32–34, and 40
`
`§ 103
`
`1–7, 10–15, 18, 22, 26, 29,
`32–34, and 40
`
`Petitioner contends that Sucech is prior art to the ’284 patent under 35
`
`U.S.C. § 102(a), Graux and Hjelmeland are prior art under at least § 102(e),
`and Satterthwaite, ASTM C473-95, Baig, and Summerfield are prior art
`under § 102(b). Pet. 13–20. Patent Owner contests the prior art status of
`Hjelmeland; however, in view of our determination that institution is not
`warranted on other grounds, we need not reach this issue.9 Prelim. Resp.
`16–17.
`
`
`2 U.S. Patent No. 5,932,001, issued Aug. 3, 1999 (Ex. 1006).
`3 Standard Test Methods for Physical Testing of Gypsum Board Products
`and Gypsum Lath, AMERICAN SOCIETY FOR TESTING AND MATERIALS, 1995
`(EX. 1009).
`4 U.S. Patent No. 5,980,628, issued Nov. 9, 1999 (Ex. 1008).
`5 U.S. Patent No. 5,643,510, issued July 1, 1997 (Ex. 1036).
`6 U.S. Patent No. 5,320,677, issued June 14, 1994 (Ex. 1024).
`7 U.S. Patent No. 2,985,219, issued May 23, 1961 (Ex. 1017).
`8 U.S. Patent No. 3,234,037, issued Feb. 8, 1966 (Ex. 1007).
`9 On September 25, 2017, Petitioner requested authorization to file a reply
`addressing the prior art status of Hjelmeland. We took that request under
`advisement. In view of our denial of the Petition on other grounds, we deem
`Petitioner’s request moot.
`
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`Patent 6,342,284 B2
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`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, “[a] claim in an unexpired patent 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); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
`broadest reasonable interpretation standard). Claims of a patent that will
`expire within 18 months from the Notice of Filing Date, however, are
`construed using “a district court-type claim construction approach,”
`provided a motion under 37 C.F.R. § 42.20 is filed within 30 days from the
`filing of the petition. 37 C.F.R. § 42.100(b). Patent Owner timely filed such
`a motion, and Petitioner does not dispute that the ’284 patent expired shortly
`after the Petition was filed. Paper 6, 1–2; Pet. 8–9 (asserting that the ’284
`patent “will expire no later than August 21, 2017”). Thus, to the extent
`necessary, we will construe the claims of the ’284 patent using “a district
`court-type claim construction approach.” 37 C.F.R. § § 42.100(b); Phillips
`v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
`Petitioner provides proposed constructions for the terms “enhancing
`material(s)” and “host particle(s).” Pet. 9–11. Patent Owner provides
`proposed constructions for these terms, as well as the term “set gypsum.”
`Prelim. Resp. 19–26. Upon review of Petitioner’s and Patent Owner’s
`arguments and supporting evidence, we determine that no claim terms
`require express construction for purposes of this decision. See Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly
`those terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”).
`
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`Patent 6,342,284 B2
`B. Alleged Obviousness over Graux, ASTM C473-95, Hjelmeland,
`Sucech, Baig, and Summerfield
`Petitioner contends the subject matter of claims 1–7, 10–15, 18, 22,
`26, 29, 32–34, and 40 the ’284 patent would have been obvious over the
`combination of Graux, ASTM C473-95, Hjelmeland, Sucech, Baig, and
`Summerfield. Pet. 21–42.
`
`1. Graux
`Graux discloses a plaster coating or adhesive that contains a cationic
`amylaceous compound.10 Ex. 1006, 1:4–5, Abstract. Graux explains that
`the plaster in this composition may contain any form of calcium sulphate,11
`including the hemihydrate, calcined/rehydrated, and anhydrous forms, and
`the cationic amylaceous compound has a fixed nitrogen content of at least
`0.15% and a solubility in water of at least 50%. Id. at 1:35–39, 4:32–36,
`Abstract. The cationic amylaceous compound may also be crosslinked as
`described in European patent EP 603 727. Id. at 5:39–53.
`Graux notes that, “[a]part from the plaster and the cationic
`amylaceous compound,” the composition may also contain at least one
`additive, including an accelerator, “for example, gypsum, potassium
`sulphate, [and] lime,” as well as one or more retarders, fillers, water
`retaining agents, water-repelling agents, and lightweight additives. Id. at
`7:28–59.
`
`
`10 Graux defines amylaceous compounds as including “all starches of natural
`or hybrid origin, including those derived from genetic mutations or
`manipulations.” Ex. 1006, 4:49–52.
`11 Graux, as well as Hjelmeland, uses the term “sulphate,” whereas the ’284
`patent uses the term “sulfate.” We understand these two terms to be
`synonymous.
`
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`IPR2017-01350
`Patent 6,342,284 B2
`
`In Example 1 of Graux, a plaster composed of 75 wt. % calcium
`sulphate hemihydrate and 25 wt. % anhydrous calcium sulphate “of the
`‘dead-burned’ type,” is provided. Id. at 9:11–15. To this plaster is added
`0.04 wt. % cationic amylaceous compound and 0.05 wt % retarder, which
`slows the setting of the plaster “to allow a better estimate of the
`effectiveness of the amylaceous compound.” Id. at 9:15–24. In one test
`plaster of Example 1, the cationic amylaceous compound is in the form of a
`cationic potato starch that has previously been crosslinked with STMP. Id.
`at 10:7–31.
`
`2. ASTM C473-95
`ASTM C473-95 provides standard test methods for gypsum board
`products. Ex. 1009, 1. These test methods include, inter alia, tests for
`humidified deflection (sag resistance), hardness, and nail pull resistance. Id.
`at 2–7.
`
`3. Hjelmeland
`Hjelmeland discloses a curable gypsum-based composition that is
`designed for use in the production of cured gypsum products. Ex. 1008,
`3:52–57.
`Hjelmeland explains that there was a need in the art for curable
`gypsum-based compositions having a long pot life but short setting time. Id.
`at 1:33–37. To achieve this goal, Hjelmeland provides a “two-component
`composition.” Id. at 3:57–59. The first component is a calcined gypsum
`suspension containing a set retarding agent in the form of an organic acid
`containing at least two acid groups and/or inorganic anions selected from the
`group consisting of polyphosphate and polyborate. Id. at 3:52–4:3, 4:46–48.
`The second component contains a set accelerating substance comprising
`
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`IPR2017-01350
`Patent 6,342,284 B2
`
`water soluble salts of multivalent metal ions and, optionally, organic or
`inorganic salts of ammonium and/or elements from the first group of the
`periodic table of elements. Id. at 4:4–10.
`According to Hjelmeland, the set retarding agents of the first
`component impart a long pot life (on the order of 1 hour) to the product. Id.
`at 4:46–48. Then, when the product is to be applied to a particular surface,
`the second component is added to the first to cause its multivalent metal ions
`to form complexes with or precipitate the set retarding substances of the first
`component, thereby neutralizing the retarding agent. Id. at 4:24–28. Once
`the two components are mixed, the gypsum composition has a gelation time
`of 2–15 minutes. Id. at 4:50–53.
`
`4. Sucech
`Sucech discloses a process for forming gypsum boards that utilizes
`two different foaming agents. Ex. 1036, 1:9–12. Sucech notes that it was
`previously known that foaming agents could be used to reduce the weight of
`a gypsum board without reducing its strength. Id. at 1:30–32. Such
`processes, however, used foaming agents that allow little control over the
`size distribution of voids within the foam. Id. at 1:52–60. In contrast to
`these known processes, Sucech utilizes a combination of two foaming
`agents, which Sucech contends allows an artisan to control “the size and
`distribution of foam voids in the [gypsum] board.” Id. at 1:10–12.
`
`5. Baig
`Baig discloses a composite gypsum/cellulose fiber material useful for
`making building and plaster products. Ex. 1024, 1:9–12. The composite of
`Baig is formed by mixing uncalcined gypsum in water with host particles to
`form a dilute slurry, which is then heated under pressure to calcine the
`
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`IPR2017-01350
`Patent 6,342,284 B2
`
`gypsum. Id. at 3:58–62. The calcined gypsum “eventually nucleates and
`forms crystals,” which form “in and about” voids within the host particles.
`Id. at 3:62–68. “The resulting composite is a host particle physically
`interlocked with calcium sulfate crystals.” Id. at 4:1–2.
`
`6. Summerfield
`Summerfield discloses a process and apparatus for producing
`plasterboard. Ex. 1017, 1:4–5. Summerfield notes that in prior art processes
`for forming gypsum board, a gypsum-containing slurry is allowed to flow
`onto a paper backing, is leveled by a roller, and is then topped off with
`another sheet of paper. Id. at 1:20–26, 4:13–19. The gypsum comprising
`the core is then allowed to set, the resulting board is cut to a desired length,
`and the cut board is passed through a drying kiln to remove excess water.
`Id. at 1:26–30, 6:40–44.
`
`7. Analysis
`The independent claims of the ’284 patent require, inter alia, the use a
`condensed phosphoric acid or salt of a condensed phosphate (claims 1, 2, 4,
`and 40), a phosphoric acid or a condensed phosphate (claim 34), or “at least
`one trimetaphosphate compound” (claims 5 and 10). Ex. 1003, 31:50–56,
`31:60–66, 32:58–62, 34:3–10, 34:56–67. Petitioner contends that Graux’s
`mixture of calcined gypsum, water, and a starch crosslinked with STMP,
`teaches or suggests the condensed phosphate and trimetaphosphate
`limitations of the challenged independent claims. Pet. 21 (“Graux discloses
`all of the ingredients identified in the claimed composition.”), 26 (“Graux
`not only discloses STMP, but i[t] also discloses STMP as an enhancing
`material.”), 30 (asserting with respect to the composition of claim 2, “See
`Ground 1, Claim 1b (discussing the calcium sulfate material, water, and one
`
`10
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`IPR2017-01350
`Patent 6,342,284 B2
`
`or more enhancing materials)”), 32–33, 35, 40, and 41 (asserting with
`respect to claims 4, 5, 10, 34, and 40, “See Ground 1, Claim 1b”).
`Patent Owner responds that the challenged claims would not have
`been obvious over the recited references because, among other things,
`Petitioner has not demonstrated sufficiently that Graux teaches or suggests
`adding STMP to a mixture that contains calcined gypsum. Prelim. Resp.
`38–39. We agree with Patent Owner.
`Petitioner directs our attention to no embodiment or teaching in Graux
`in which STMP (claims 5 and 10) or a condensed phosphate or phosphoric
`acid (claims 1, 2, 4, 34, and 40) is added directly to a mixture containing
`gypsum. Instead, Petitioner relies upon the addition of a potato starch that
`was previously crosslinked with STMP as disclosing these claim limitations.
`Pet. 21, 26, 30, 32–33, 35, 40, 41. On this record, we are not persuaded that
`this disclosure is sufficient to show that the claimed enhancing materials are
`added to the gypsum mixture in Graux.
`As noted above, the cross-linked starch of Graux is created by mixing
`STMP and a potato starch. The following figure, reproduced below and
`provided by Mr. Harlos, depicts this reaction:
`
`11
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`IPR2017-01350
`Patent 6,342,284 B2
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`
`As shown in the figure above, the reaction between the potato starch and
`STMP results in the formation of di-starch orthophosphate and tetrasodium
`pyrophosphate. 12 Ex. 1001 ¶ 50. This is consistent with testimony from
`Patent Owner’s declarant, Dr. Bruce, indicating that the STMP of Graux is
`“consumed” during the crosslinking reaction. Ex. 2001 ¶¶ 111–112.
`
`Because the reaction of STMP and potato starch in Graux occurs
`before the starch is added to the gypsum and water mixture, and because the
`reaction converts the starch and STMP into di-starch orthophosphate and
`tetrasodium pyrophosphate, i.e., STMP is consumed during Graux’s reaction
`process, we are not persuaded that Graux expressly teaches or suggests a
`mixture containing one or more of the enhancing materials recited in
`independent claims 1, 2, 4, 5, 10, 34, and 40.
`Although STMP is consumed during the crosslinking process,
`Petitioner demonstrates that tetrasodium pyrophosphate—which the ’284
`
`
`12 Mr. Harlos testifies that the “crosslinks between starch molecules” in
`Graux are “permanent” and “require a large amount of energy to break.” Ex.
`1001 ¶ 49.
`
`12
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`patent indicates falls within the scope of the genus of condensed phosphoric
`acids recited in claims 1, 2, 4, 34, and 40 (see Ex. 1003, 27:23–38 and
`claims 1, 2, 34, and 40)—is produced during the crosslinking reaction of
`Graux. See Ex. 1001 ¶ 50. In addition, Dr. Bruce implicitly acknowledges
`that unreacted STMP could remain in the cross-linked starch after the
`crosslinking process is completed. Ex. 2001 ¶ 111. We are presented with
`insufficient evidence, however, that these compounds would be present
`when the starch is ultimately added to the gypsum and water mixture.
`First, Petitioner does not even attempt to demonstrate that residual
`STMP or tetrasodium pyrophosphate are present in the cross-linked starch
`when it is added to the gypsum and water mixture of Graux. Second, as
`noted by Patent Owner, Graux relies upon European patent EP 603 727 (Ex.
`2002) for a description of how various crosslinked starches were
`manufactured in the art, including starches crosslinked with STMP. Ex.
`2001 ¶ 111 (citing Ex. 1006, 5:46–53); Ex. 2002, 3:9–13. In Examples I and
`II of EP 603 727, a crosslinking agent is applied to a starch, the cross-linking
`reaction is completed, and the cross-linked samples are then “filtered,
`washed with water (two parts water per part of starch) and dried.” Ex. 2002,
`5:46–47, 6:54–55; see also id. at 7:46–50 (explaining that the samples “were
`worked up as described above”). Dr. Bruce testifies that this washing
`process would remove any excess STMP from the cross-linked starch of
`Graux, and neither Petitioner nor Mr. Harlos present evidence to suggest
`otherwise. Ex. 2001 ¶¶ 111–112. Thus, on this record, we are not
`persuaded that Graux discloses, expressly or inherently, combining a
`calcium sulfate material, water, and one or more of the enhancing materials
`recited in independent claims 1, 2, 4, 5, 10, 34, and 40.
`
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`The challenged independent claims also require a gypsum
`composition, or a resulting gypsum board product, that, when cast in the
`form of a ½ inch gypsum board, has “a sag resistance, as determined
`according to ASTM C473-95, of less than about 0.1 inch per two foot length
`of said board.” Ex. 1003, 31:56–59, 31:66–32:2, 32:59–61, 34:8–10, 35:4–
`36:3. Petitioner contends that one of ordinary skill in the art, armed with the
`testing protocols of ASTM C473-95, would have been able “to apply the
`predictable solutions described in Graux to yield a product that provided the
`beneficial and claimed characteristics measured by the well-known ASTM
`test.” Pet. 21–22 (citing Ex. 1006, 1:24–30, 7:32–33, 9:29–30, 10:29–30;
`Ex. 1001 ¶¶ 96, 98), 30 (discussing claim 2), 33–35 (discussing claims 4, 5,
`and 10), 40 (discussing claim 34), 42 (discussing claim 40). Petitioner
`further asserts that, “[m]erely measuring an inherent property of an already-
`known composition does not make the composition patentable,” and
`contends that multiple prior art set-gypsum containing products were
`reported to have a sag resistance value of less than 0.1 inch. Id. at 28–29
`(citing Ex. 1003, 14:46–54, 16:7–21, Figs. 2, 3; Ex. 1001 ¶ 116).
`Patent Owner argues that the recited combination of references does
`not teach or suggest the recited limitations because Graux is not concerned
`with sag resistance, and the ASTM C473-95 standards, which apply to
`finished gypsum board products, are not applicable to Graux’s plaster
`products. Prelim. Resp. 39–40 (citing Ex. 2001 ¶¶ 144–145, 149–150).
`Patent Owner further argues that the prior art products identified in the ’284
`patent “were not formulated using the claimed enhancing material,” and
`required substantially greater board thickness to achieve sufficient sag
`resistance. Id. at 43–44.
`
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`After reviewing the parties’ positions, we are not persuaded that
`Petitioner has demonstrated sufficiently that the prior art references teach or
`suggest including an enhancing material in the mixture of Graux in an
`amount such that, when the mixture is cast in the form of a ½ inch gypsum
`board, the board has a sag resistance of less than about 0.1 inch per two feet
`in length, as determined according to ASTM C473-95. Petitioner has not
`directed us to any sag resistance values for gypsum boards made using the
`ingredients disclosed in Graux and measured according to ASTM C473-
`95,13 or evidence sufficient to establish that the claimed sag resistance value
`is an inherent property of a gypsum-containing product formed from the
`mixture disclosed in Graux. See Trintec Indus., Inc. v. Top–U.S.A. Corp.,
`295 F.3d 1292, 1295 (Fed. Cir. 2002) (“Inherent anticipation requires that
`the missing descriptive material is ‘necessarily present,’ not merely probably
`or possibly present, in the prior art.”) (quoting In re Robertson, 169 F.3d
`743, 745 (Fed. Cir. 1999)). With regard to Petitioner’s argument that the
`’284 patent discloses prior art gypsum boards having a sag resistance of less
`than 0.1 inch, we note that Petitioner has not directed us to any evidence
`demonstrating that these products contain the enhancing materials recited in
`independent claims 1, 2, 4, 5, 10, 34, or 40.
`Further, we agree with Patent Owner that the mere fact that a person
`of ordinary skill in the art would have been aware of the test methods set
`forth in ASTM C473-95 does not establish that boards tested according to
`
`
`13 Even if we were to agree with Petitioner that Graux discloses a mixture of
`calcined gypsum, water, and a claimed enhancing material––which, for the
`reasons discussed above, we do not––Petitioner’s argument still suffers from
`this deficiency.
`
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`those test methods would have a particular sag resistance value, or that a
`person of ordinary skill in the art would have been able to produce a board
`having a particular sag resistance value. Under the heading “Significance
`and Use” in the section discussing Humidified Deflection (i.e., sag
`resistance), ASTM C473-95 states only that “[t]his test method covers a
`procedure for evaluating the deflection of gypsum board.” Ex. 1009, 8
`(Section 49.1) (emphasis added). We are not persuaded that such a
`disclosure would have taught or suggested combining the components of
`Graux to achieve a gypsum board having a sag resistance of less than about
`0.1 inch per two foot length of said board.
`Based on the foregoing, Petitioner has not demonstrated that Graux
`discloses every limitation of independent claims 1, 2, 4, 5, 10, 34, or 40, or
`that one of ordinary skill in the art would have sought to modify Graux in
`view of ASTM C473-95, or any of the other recited prior art references, to
`arrive at the subject matter of the challenged claims. And, as each of the
`challenged dependent claims depends, directly or indirectly, from one of
`independent claims 1, 5, and 10, we are also not persuaded that these claims
`would have been obvious over Graux, ASTM C473-95, Hjelmeland, Sucech,
`Baig, and Summerland.
`
`C. Alleged Obviousness of Claims 1–7, 10–15, 18, 22, 26, 29, 32–34,
`and 40 over Satterthwaite, ASTM C473-95, Hjelmeland, Sucech,
`Baig, and Summerfield
`Petitioner contends that the subject matter of claims 1–7, 10–15, 18,
`22, 26, 29, 32–34, and 40 would have been obvious over Satterthwaite,
`ASTM C473-95, Hjelmeland, Sucech, Baig, and Summerfield. Pet. 42–66.
`
`16
`
`
`
`IPR2017-01350
`Patent 6,342,284 B2
`1. Satterthwaite
`Satterthwaite discloses “the production of a starch binder comprising
`a thick-boiling starch and a polyhydric alcohol fatty acid ester.” Ex. 1007,
`1:10–12. Satterthwaite explains that the disclosed starch binder, when
`gelatinized, “has a greater viscosity and a greater viscosity stability than
`other starches, and is therefore particularly suitable for use in the
`manufacture of acoustical ceiling tile and other tile products made from a
`mixture of water, gypsum, mineral wool and other ingredients.” Id. at 1:13–
`18.
`
`The disclosed “super-thick” boiling starch is manufactured by treating
`corn starch in aqueous slurry with, among other things, sodium
`trimetaphosphate, which crosslinks the starch molecules. Id. at 1:66–2:13.
`The resulting product is then “filtered and washed and dried by conventional
`means.” Id. at 1:53–55, 2:29–31.
`In a preferred embodiment of Satterthwaite, polyhydric alcohol fatty
`acid ester is sprayed into the disclosed super-thick boiling starch in dry form.
`Id. at 3:32–36. The resulting composition is then added to a tile mix
`consisting of water, gypsum, boric acid, and paraffin wax, and heated to
`200º F. Id. at 3:36–38. The resulting mixture is then diluted with water,
`cooled, and blended with mineral wool to form gypsum sheets. Id. at 3:38–
`41.
`
`2. Analysis
`Petitioner contends that “Satterthwaite discloses a set gypsum-
`containing product with all the ingredients identified in the claimed
`composition,” and that STMP was added in Satterthwaite to, among other
`things, increase sag resistance. Pet. 42–43; see id. at 48, 52–53, 58, 62–63,
`
`17
`
`
`
`IPR2017-01350
`Patent 6,342,284 B2
`
`64. Mr. Harlos, testifying in support of Petitioner, asserts that one of
`ordinary skill in the art, being knowledgeable about ASTM C473-95 and
`similar testing methods, “would have been motivated to utilize the known
`enhancing materials disclosed in Sattherwaite” to achieve a product that
`“provided the required sag resistance described in the claim.” Ex. 1001
`¶¶ 220–221.
`Patent Owner asserts the combination of Satterthwaite, ASTM C473-
`95, Hjelmeland, Sucech, Baig, and Summerfield would not have rendered
`the subject matter of the challenged claims obvious, because it is
`“demonstrably false” that Satterthwaite discloses a set gypsum-containing
`product “with all the ingredients identified in the claimed composition.”
`Prelim. Resp. 50 (citing Pet. 42).
`Petitioner directs our attention to no disclosure in Satterthwaite that
`STMP, or any of the other compound falling within the scope of the
`challenged claims, is ever added directly to the disclosed mixture of water,
`gypsum, and mineral wool. At best, the evidence relied upon by Petitioner
`establishes that “a starch treated with STMP” is subsequently added to a
`mixture of water, gypsum, mineral wool, and other ingredients. Pet. 48–49
`(“Satterthwaite discloses treating starch with STMP.”). Petitioner does not
`explain why the addition of a starch treated with STMP is equivalent to the
`addition of STMP to the mixture of Satterthwaite. Nor does Petitioner
`attempt to establish that the STMP added to crosslink the potato starch
`molecules in Satterthwaite would necessarily be present after the cross-
`linked starch is filtered, washed, and dried. See Ex. 1007, 1:53–55, 2:29–31.
`Petitioner also does not explain adequately why one of ordinary skill
`in the art, having already utilized STMP to crosslink the starch, would have
`
`18
`
`
`
`IPR2017-01350
`Patent 6,342,284 B2
`
`then sought to add STMP to Satterthwaite’s mixture. KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several
`elements is not proved obvious merely by demonstrating that each of its
`elements was, independently, known in the prior art.”). Thus, Petitioner has
`failed to sufficiently identify a reason why a person of ordinary skill in the
`art would have combined the disclosed elements in the art in the same
`fashion as recited in the claims of the ’284 patent. Id. (“[I]t can be important
`to identify a reason that would have prompted a person of ordinary skill in
`the relevant field to combine the elements in the way the claimed new
`invention does.”).
`Each independent claim of the ’284 patent also requires a gypsum
`board, or a material used to form a gypsum board, that, when formed as a ½
`inch thick board, “has a sag resistance, as determined according to ASTM
`C473-95, of less than about 0.1 inch per two foot length of said board.” Ex.
`1003, 31:57–59, 31:67–32:2, 32:61–62, 34:8–9, 35:5–36:3. Similar to its
`arguments with respect to Graux, Petitioner contends that one of ordinary
`skill in the art would have found it obvious to use ASTM C473-95 to test the
`sag resistance of the Satterthwaite’s tile products, and “[m]erely measuring
`an inherent property of an already-known composition does not make the
`composition patentable.” Pet. 51–52. Likewise, Petitioner again notes that
`the ’284 patent identifies prior art set-gypsum containing products having a
`sag resistance value of less than 0.1 inch per two foot length. Id. at 52
`(citing Ex. 1003, 14:64–16:38, Figs. 2, 3).
`Patent Owner asserts that Satterthwaite is not concerned with sag
`resistance of gypsum boards and “Petitioner offers no evidence showing that
`the ASTM test for gypsum board would work at all on Satterthwaite’s
`
`19
`
`
`
`IPR2017-01350
`Patent 6,342,284 B2
`
`mineral wool ceiling tiles, let alone that any predictable result would be
`obtained.” Prelim. Resp. 56. Patent Owner further contends that the prior
`art products identified in the ’284 patent are examples of prior art products
`with problems the ’284 patent addressed and solved. Id.
`After reviewing the parties’ positions, we are not persuaded that
`Petitioner has demonstrated sufficiently that the prior art references teach or
`suggest including an enhancing material in an amount such that when the
`mixture is cast in the form of a ½ inch gypsum board, the board has a sag
`resistance of less than about 0.1 inch per two feet in length, as determined
`according to ASTM C473-95. Petitioner has not directed us to any sag
`resistance values of gypsum boards made using the ingredients disclosed in
`Satterthwaite and measured according to ASTM C473-95.14 Nor has
`Petitioner directed us to evidence sufficient to establish that the claimed sag
`resistance value is an inherent property of gypsum-containing products that
`include the materials of Satterthwaite. See Trintec Indus., 295 F.3d at 1295.
`With respect to Petitioner’s ar
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