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 IPR2017-01351
`Patent 7,758,980 B2
`
`
`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 IPR2017-01351
`Patent 7,758,980 B2
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-01351
`Patent 7,758,980 B2
`
`I. INTRODUCTION
`New NGC, Incorporated dba National Gypsum Company
`(“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting inter partes review
`of claims 1, 2, and 4–7 of U.S. Patent No. 7,758,980 B2 (Ex. 1035, “the ’980
`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 ’980 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), IPR2017–1350
`(US 6,342,284), IPR2017–01352 (US 8,142,914), and IPR2017–01353 (US
`8,500,904). Pet. 1; Paper 4, 1.
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`Patent 7,758,980 B2
`B. The ’980 Patent
`The ’980 patent discloses a method and composition for preparing set
`gypsum-containing products having increased resistance to permanent
`deformation (e.g., sag resistance). Ex. 1035, 1:20–35.
`The ’980 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 2:4–12. 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-containing product.
`Id. at 2:13–17. Although the matrix of gypsum crystals increases the
`strength of the gypsum-containing product, the ’980 patent posits that
`existing gypsum-containing products could still benefit if the strength of
`their component set gypsum crystal structures were increased. Id. at 2:18–
`21.
`
`To increase the strength, dimensional stability, and resistance to
`permanent deformation of set gypsum-containing products, the ’980 patent
`discloses mixing calcium sulfate material, water, and an appropriate amount
`of one or more enhancing materials. Id. at 1:26–29. In a preferred
`embodiment, the enhancing material is in the form of trimetaphosphate ions
`derived from sodium trimetaphosphate (STMP). Id. at 4:10–26. According
`to the ’980 patent, 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 containing no
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`trimetaphosphate ion.” Id. at 4:32–38. 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 4:40–46. According to the ’980 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 4:46–51.
`
`C. Illustrative Claim
`Claim 1 is illustrative of the challenged claims and is reproduced
`below:
`1. A gypsum board comprising set gypsum formed from at least
`calcined gypsum, water and sodium trimetaphosphate, wherein the
`amount of the sodium trimetaphosphate compound is from about
`0.004 to about 2.0% by weight of the calcined gypsum.
`Ex. 1035, 31:24–28.
`
`D. The Asserted Grounds of Unpatentability
`Petitioner contends claims 1, 2, and 4–7 of the ’980 patent are
`unpatentable based on the following grounds (Pet. 2):1
`
`
`1 Petitioner also relies on a declaration from Mr. Gerry Harlos (Ex. 1001).
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`4
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`Patent 7,758,980 B2
`
`References
`Graux,2 ASTM C473-95,3
`Hjelmeland,4 Sucech,5 and
`Summerfield6
`
`Basis Claims Challenged
`§ 103 1, 2, and 4–7
`
`Satterthwaite,7 ASTM C473-95,
`Hjelmeland, Sucech, and
`Summerfield
`
`§ 103 1, 2, and 4–7
`
`Petitioner contends that Graux and Sucech are prior art to the ’980
`
`patent under 35 U.S.C. § 102(a), Satterthwaite, Summerfield, and ASTM
`C473-95 are prior art under § 102(b), and Hjelmeland is prior art under
`§ 102(e). Pet. 11–18. 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.8 Prelim. Resp.
`15–16.
`
`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
`
`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, 1–11
`(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. 2,985,219, issued May 23, 1961 (Ex. 1017).
`7 U.S. Patent No. 3,234,037, issued Feb. 8, 1966 (Ex. 1007).
`8 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 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 ’980 patent expired shortly
`after the Petition was filed. Paper 6, 2; Pet. 9. Thus, to the extent necessary,
`we will construe the claims of the ’980 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).
`The parties dispute the meaning of the term “set gypsum.” Pet. 9–10;
`Prelim. Resp. 20–21. Upon review of Petitioner’s and Patent Owner’s
`arguments and supporting evidence, we determine that construction of this
`term is not necessary 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.”).
`
`B. Alleged Obviousness over Graux, ASTM C473-95, Hjelmeland,
`Sucech, and Summerfield
`Petitioner contends the subject matter of claims 1, 2, and 4–7 of the
`’980 patent would have been obvious over the combination of Graux, ASTM
`C473–95, Hjelmeland, Sucech, and Summerfield. Pet. 18–38.
`
`6
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`Patent 7,758,980 B2
`1. Graux
`Graux discloses a plaster coating or adhesive that contains a cationic
`amylaceous compound.9 Ex. 1006, 1:4–5, Abstract. Graux explains that the
`plaster in this composition may contain any form of calcium sulphate,10
`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.
`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 9:16–24. In one test
`
`
`9 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.
`10 Graux, as well as Hjelmeland, uses the term “sulphate,” whereas the ’980
`patent uses the term “sulfate.” We understand these two terms to be
`synonymous.
`
`7
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`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, Abstract.
`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
`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.
`4:46–48. Then, when the product is to be applied to a particular surface, the
`
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`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 methods, 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. 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.
`
`9
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`Patent 7,758,980 B2
`6. Analysis
`Independent claim 1 requires a set gypsum “formed from at least
`calcined gypsum, water, and sodium trimetaphosphate.” Ex. 1035, 31:24–
`28. Petitioner contends Graux’s plaster composition, which allegedly
`contains “calcined gypsum, water, starch, and STMP,” discloses each of
`these limitations. Pet. 19 (citing Ex. 1006, 1:24–30, 7:32–33, 9:29–30,
`10:29–30; Ex. 1001 ¶ 81). Petitioner further contends that a person of
`ordinary skill in the art would have known that STMP is added to the
`composition of Graux to, “among other things, increase sag resistance”
`which, along with improved strength and dimensional stability, is a
`“common concern[] in the gypsum product industry.” Id. (citing Ex. 1001
`¶¶ 81–82). With respect to the amount of STMP added to the composition,
`Petitioner contends that, because STMP and the set retarding substance of
`Hjelmeland are both condensed phosphates, one of ordinary skill in the art
`would have looked to Hjelmeland to determine how much STMP to add to
`the composition of Graux. Id. at 20–21.
`Patent Owner contends the challenged claims would not have been
`obvious over the recited references because, among other things, Petitioner
`has not demonstrated that Graux teaches or suggests a set gypsum that is
`“formed from” STMP. Prelim. Resp. 34. We agree with Patent Owner.
`As noted above, Petitioner relies on the addition of a cross-linked
`starch in Graux as satisfying the requirement that the set gypsum be formed
`from sodium trimetaphosphate. Pet. 19 (“Graux discloses all of the
`ingredients identified in the claimed composition.”), 26 (asserting Graux
`discloses a “cationic potato starch . . . , crosslinked with sodium
`trimetaphosphate”). The following figure, reproduced below and provided
`
`10
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`IPR2017-01351
`Patent 7,758,980 B2
`
`by Mr. Harlos, depicts the reaction between the starch and sodium
`trimetaphosphate in Graux:
`
`
`As shown in the figure above, the STMP is consumed during the
`crosslinking reaction, resulting in the formation of di-starch orthophosphate
`and tetrasodium pyrophosphate. 11 Ex. 1001 ¶¶ 48–49. Patent Owner’s
`declarant, Dr. Bruce, offers similar testimony, stating that “STMP reacts
`with the ROH starch groups to produce a di-starch orthophosphate and
`tetrasodium pyrophosphate.” Ex. 2001 ¶ 100.
`
`
`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 set
`gypsum that is “formed from”12 calcined gypsum, water, and sodium
`trimetaphosphate, as required by claim 1.
`
`11 Mr. Harlos testifies that the “crosslinks between starch molecules” in
`Graux are “permanent” and “require a large amount of energy to break.” Ex.
`1001 ¶ 48.
`12 Petitioner does not provide a proposed construction for the term “formed
`from.” Nor does Petitioner explain sufficiently why one of ordinary skill in
`
`11
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`Although STMP is consumed during the crosslinking process, Dr.
`Bruce implicitly acknowledges that unreacted STMP could remain in the
`cross-linked starch after the crosslinking process is completed. Ex. 2001
`¶ 101. We are presented with insufficient evidence, however, that STMP
`would be present when the starch is ultimately added to the gypsum and
`water mixture of Graux. First, Petitioner does not even attempt to
`demonstrate that residual STMP is present in the cross-linked starch when it
`is added to the mixture of gypsum and water. 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 ¶ 100 (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 presents any persuasive evidence to suggest
`otherwise. Ex. 2001 ¶ 100. Thus, on this record, we are not persuaded that
`Graux discloses, expressly or inherently, a set gypsum “formed from”
`STMP.
`
`
`the art would have considered a set gypsum product that is never in contact
`with STMP, but is formed using a starch that was previously crosslinked
`using STMP (which is consumed in the reaction), to be “formed from”
`STMP.
`
`12
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`Furthermore, we are not persuaded by Petitioner’s argument that one
`of ordinary skill in the art would have looked to Hjelmeland to determine the
`amount of STMP to use in Graux. Pet. 21 (asserting that an ordinary artisan
`would have found it obvious to use the amount of condensed phosphate
`specified by Hjelmeland in the plaster composition of Graux). Although, as
`noted by Petitioner, Graux and Hjelmeland both disclose the use of a
`condensed phosphate, the references use this material in different ways. In
`particular, Graux uses the condensed phosphate (STMP) to crosslink a
`potato starch, whereas Hjelmeland discloses adding the condensed
`phosphate to a gypsum suspension to act as a retarding agent. Ex. 1006,
`5:39–50; Ex. 1008, 3:60–4:16. Petitioner does not explain why the
`concentration of STMP used to retard the setting of a gypsum suspension is
`in any way related to the amount of STMP required to effectively crosslink a
`starch. Nor does Petitioner explain adequately why one of ordinary skill in
`the art, having already utilized STMP to crosslink its starch, would have
`then sought to add STMP to Graux’s mixture in view of Hjelmeland’s genus
`disclosure. 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 same fashion as recited in the claims of the ’980 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.”).
`
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`Based on the foregoing, Petitioner has not demonstrated that Graux,
`ASTM C473-95, Hjelmeland, Sucech, and Summerfield teach or suggest
`every limitation of independent claim 1. As dependent claims 2 and 4–7
`depend directly from claim 1, we are likewise not persuaded that the
`combination of Graux, ASTM C473-95, Hjelmeland, Sucech, and
`Summerfield teaches or suggests the subject matter of these claims.
`
`C. Alleged Obviousness of Claims 1, 2, and 4–7 over Satterthwaite,
`ASTM C473-95, Hjelmeland, Sucech, and Summerfield
`Petitioner contends that the subject matter of claims 1, 2, and 4–7
`would have been obvious over Satterthwaite, ASTM C473-95, Hjelmeland,
`Sucech, and Summerfield. Pet. 38–60.
`
`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.
`
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`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 the set gypsum-containing product of
`Satterthwaite, which is formed using a starch treated with STMP in
`combination with a mixture of water, gypsum, mineral wool, and other
`ingredients, includes “all the ingredients identified in the claimed
`composition.” Pet. 38. Petitioner further contends that, because both
`Satterthwaite and Hjelmeland disclose the use of a condensed phosphate,
`one of ordinary skill in the art would have found it “obvious to use the
`amount of condensed phosphate specified in Hjelmeland in the plaster
`compositions of Satterthwaite.” Id. at 41.
`Patent Owner asserts the combination of Satterthwaite, ASTM C473-
`95, Hjelmeland, Sucech, and Summerfield would not have rendered the
`subject matter of the challenged claims obvious because, contrary to
`Petitioner’s assertions, “Satterthwaite does not disclose or suggest adding
`STMP to a set gypsum composition.” Prelim. Resp. 44–45.
`Petitioner directs our attention to no disclosure in Satterthwaite that
`STMP 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
`
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`water, gypsum, mineral wool, and other ingredients. Pet. 13, 47 (citing Ex.
`1007, 2:9–13; Ex. 1001 ¶ 141). Petitioner does not explain why the addition
`of “a starch treated with STMP” is equivalent to forming a set gypsum
`product from STMP, as recited in claim 1. Nor does Petitioner even 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. Thus, we are
`not persuaded that Satterthwaite teaches or suggests a set gypsum-containing
`product that is “formed from” STMP.
`With respect to Petitioner’s argument that one of ordinary skill in the
`art would look to Hjelmeland to determine the amount of STMP to use in
`Satterthwaite, as noted above, Petitioner has not established sufficiently that
`Satterthwaite discloses adding STMP directly to the disclosed mixture of
`water, gypsum, and mineral wool. Nor has Petitioner explained sufficiently
`why the amount of condensed phosphate used as a retarding agent in
`Hjelmeland is in any way indicative of the amount of STMP required to
`crosslink a potato starch. Thus, we do not find Petitioner’s argument with
`respect to the combination of Satterthwaite and Hjelmeland persuasive.
`We also note that, as part of Petitioner’s arguments with respect to the
`reason to combine Satterthwaite and Hjelmeland, Petitioner asserts that the
`“set retarding substance” of Hjelmeland “is STMP.” Pet. 27 (citing Ex.
`1001 ¶ 94). Neither Petitioner nor Mr. Harlos directs our attention, however,
`to an express disclosure in Hjelmeland of using STMP. Id. Instead,
`Petitioner directs our attention to Hjelmeland’s disclosure of using a genus
`of set retarding agents comprising: “(i) an organic acid containing at least
`two acid groups selected from the group consisting of . . . phosphate or
`
`16
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`
`
`IPR2017-01351
`Patent 7,758,980 B2
`
`phosphonate . . . and/or (ii) inorganic anions selected from the group
`consisting of polyphosphate . . . .” Pet. 15–16 (quoting Ex. 1008, 3:60–4:2),
`41 (citing Ex. 1008, 4:13–15). The disclosure of a genus, however, is not
`necessarily a disclosure of each species within that genus. See Abbvie v.
`Mathilda & Terence Kennedy Institute, 764 F.3d 1366, 1379 (Fed. Cir.
`2014); In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994) (“The fact that a
`claimed compound may be encompassed by a disclosed generic formula
`does not by itself render that compound obvious.”). Thus, on this record, we
`are not persuaded that the set retarding substance of Hjelmeland is STMP.
`In light of the foregoing, we are not persuaded that the combination of
`Satterthwaite, ASTM C473-95, Hjelmeland, Sucech, and Summerfield, as
`formulated by Petitioner, teaches or suggests every element of independent
`claim 1. Nor has Petitioner explained sufficiently why one of ordinary skill
`in the art would have made the proposed combination of references. Thus,
`Petitioner has not demonstrated a reasonable likelihood that the subject
`matter of claim 1 would have been obvious over the recited references. And,
`as each of the challenged dependent claims depends from claim 1, for the
`reasons stated above, Petitioner has likewise not demonstrated that the
`subject matter of these claims would have been obvious over Satterthwaite,
`ASTM C473-95, Hjelmeland, Sucech, and Summerfield.
`III. CONCLUSION
`Upon consideration of the Petition and the Preliminary Response, as
`well as the testimony of Mr. Harlos and Dr. Bruce, we conclude that
`Petitioner has not demonstrated a reasonable likelihood that claims 1, 2, and
`4–7 are unpatentable over the recited prior art references. Accordingly, we
`
`17
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`
`
`IPR2017-01351
`Patent 7,758,980 B2
`
`do not institute inter partes review with respect to any of the asserted
`grounds.
`
`IV. ORDER
`
`It is hereby
`ORDERED that inter partes review is not instituted.
`
`
`
`
`
`18
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`
`
`IPR2017-01351
`Patent 7,758,980 B2
`
`PETITIONER:
`
`Ross R. Barton
`S. Benjamin Pleune
`Lauren E. Burrow
`Tasneem D. Delphry
`Stephen R. Lareau
`Adam Doane
`ALSTON & BIRD
`ross.barton@alston.com
`ben.pleune@alston.com
`lauren.burrow@alston.com
`stephen.lareau@alston.com
`tasneem.delphry@alston.com
`adam.doane@alston.com
`
`
`PATENT OWNER:
`
`Timothy P. Maloney
`Karl R. Fink
`FITCH, EVEN, TABIN & FLANNERY
`tpmalo@fitcheven.com
`krfink@fitcheven.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`19
`
`
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