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`FILED VIA EFS-WEB
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`PATENT
`Docket No. 3309-2-4
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Earl Sevy
`Applicant:
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`13/854,545
`Serial No.:
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`April 1, 2013
`Filed:
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`9,415,130
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`Patent No.:
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`August 16, 2016
`Issued:
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`INDUSTRIAL, GERMICIDAL, DIFFUSER
`For:
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`APPARATUS AND METHOD
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`Inter Partes Reexamination: Case IPR2017-02197
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`)Art Unit: 1799
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`PETITION TO DIRECTOR
`FOR REVIEW OF INTER PARTES REEXAMINATION
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`Mail Stop Petition
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA, 22313-1450
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`Attention: Office of Petitions
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`Dear Commissioner:
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`Pursuant to the recent U.S. Supreme Court decision in U.S. v. Arthrex, Inc. et al., 594
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`U.S. ___ (2021) (No. 19-1434, decided June 21, 2021), and MPEP 2681 IV, Patent Owner
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`petitions the Director for review of Board decisions in Inter Partes Reexamination proceeding
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`Puzhen Life, USA, LLC v. ESIP Series 2, LLC, Case IPR2017-02197.
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`Petition to Director
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`Page 1 of 18
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`BACKGROUND
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`IPR Petitioner, Puzhen Life USA, LLC (“Puzhen”), filed the Petition in IPR2017-02197
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`(“IPR”), asserting four separate grounds for invalidity of claims 1, 3 and 17 of U.S. Patent No.
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`9,415,130 (“`130 Patent”). Patent Owner, ESIP Series 2, LLC (“ESIP”) filed a Patent Owner’s
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`Preliminary Response (IPR Paper 5). The Board instituted the IPR despite failing to find that all
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`real parties-in-interest were identified in the Petition (IPR Paper 10). ESIP filed a Patent
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`Owner’s Response (IPR Paper 15). Puzhen filed a Petitioner’s Reply (IRP Paper 17). The Board
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`held an oral hearing and issued a Final Written Decision (IPR Paper 24; Exhibit A) holding that
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`the Petition had identified all real parties in interest and that two of the four asserted grounds for
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`invalidity demonstrated that claims 1, 3 and 17 were obvious.
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`ESIP appealed the Board’s Final Written Decision to the Federal Circuit. See, ESIP
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`Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020). The Federal Circuit
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`affirmed the Board’s obviousness determination and, citing Thryv, Inc. v. Click-to-Call Techs.,
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`LP, 140 S.Ct. 1367 (2020), ruled that the Board’s decision with respect to whether the Petition
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`complied with 35 U.S.C. §312(a)(2) was “an institution-related … [decision] and is barred from
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`appellate review.” See, ESIP Series 2, 958 F.3d at 1386.
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`On August 28, 2020, ESIP filed a Petition for a Writ of Certiorari in the U.S. Supreme
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`Court with respect to the Federal Circuit’s ruling that the Board’s decision under 35 U.S.C.
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`§312(a)(2) was not reviewable. See, ESIP Series 2, LLC v. Puzhen Life USA, LLC, No. 20-228.
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`On October 13, 2020, the Supreme Court denied ESIP’s Petition for cert.
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`As of the filing of this Petition, the Director has not issued a certificate of cancellation
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`under 35 U.S.C. §318(b) in the subject IPR.
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`Petition to Director
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`Page 2 of 18
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`REVIEW STATEMENT
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`“We hold that the unreviewable authority wielded by APJs during inter partes review is
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`incompatible with their appointment by the Secretary to an inferior office.” U.S. v. Arthrex, Inc.
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`et al., 594 U.S. ___ (2021) (slip op., pp. 18-19). “In all the ways that matter to the parties who
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`appear before the PTAB, the buck stops with the APJs, not with the Secretary or Director.” Id.,
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`at p. 12. “In sum, we hold that 35 U.S.C. §6(c) is unenforceable as applied to the Director
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`insofar as it prevents the Director from reviewing the decisions of the PTAB on his own.” Id., at
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`p. 22. “The Constitution therefore forbids the enforcement of statutory restrictions on the
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`Director that insulate the decisions of APJs from his discretion and supervision.” Id., at 23.
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`According to the Supreme Court in Arthrex, any decision made by APJs that can bind the
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`Executive Branch must be reviewable by the Director. The Director does have discretion with
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`respect to such a review. However, for institution-related decisions that are not reviewable by a
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`court, such as those ruled upon in Thryv, Inc. v. Click-to-Call Techs., LP, 140 S.Ct. 1367 (2020)
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`and ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020), the Director
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`should be more liberal in granting review of Board decisions because such decisions are not
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`reviewable by any other means.
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`As shown, ESIP has made multiple attempts to obtain meaningful review of the Board’s
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`decision to institute the subject IPR, but no such review has been obtained. That lack of review
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`is a violation of the due process rights afforded ESIP by the Constitution. That lack of review
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`also makes the Board’s decisions effectively final, and therefore unconstitutional under Arthrex.
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`“The Director accordingly may review final PTAB decisions and, upon review, may issue
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`decisions himself on behalf of the Board.” See, Arthrex, slip op., p. 21. ESIP herein petitions
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`the Director for a meaningful review of the Board’s decision to institute the subject IPR.
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`Petition to Director
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`Page 3 of 18
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`MPEP 2681 IV states that “the Board’s decisions are properly reviewable on petition
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`only for procedural matters and only to the extent of determining whether they involve a
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`convincing showing of error, abuse of discretion, or policy issue appropriate for higher level
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`determination.” (emphasis in original). Such is precisely the case here. The Board’s decision to
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`institute the IPR involves clear errors and an abuse of discretion.
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`Moreover, ESIP has not waived its ability to pursue Arthrex-related issues because both
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`the Federal Circuit’s Arthrex decision and the Supreme Court’s Arthrex decision were made after
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`the Board’s Final Written Decision. See, New Vision Gaming & Development, Inc. v. SG
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`Gaming, Inc., Nos. 2020-1399, 2020-1400 (Fed. Cir., May 13, 2021) (precedential decision).
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`The Constitution requires and the MPEP supports the conclusion that the Director review
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`the Board’s decision to institute the subject IPR.
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`As explained in Arthrex, the Constitution also requires that the Director exercise
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`discretion regarding substantive, binding decisions related to patentability made by the Board.
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`Such discretion should be liberally granted when clear error by the Board is shown.
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`SUMMARY OF THE ARGUMENT
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`The Board violated 35 U.S.C. § 312(a)(2) when the Board instituted the subject IPR
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`without making the required finding that Puzhen’s Petition identified all real parties in interest.
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`Puzhen’s Petition failed to identify a real party in interest, doTERRA International, LLC, a co-
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`defendant with Puzhen in the underlying infringement action and the only party against whom
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`the `130 Patent was asserted at the time the Petition was filed.
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`Puzhen’s Petition relied entirely upon prior art that is merely cumulative of prior art
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`already considered by the USPTO during prosecution of the `130 Patent. The Board improperly
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`instituted the subject IPR and that institution decision should be reversed.
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`Petition to Director
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`Page 4 of 18
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`The Board misapprehended the prior art that was the basis for the Board’s obviousness
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`decision. The evidence relied upon by the Board does not support, and in fact contradicts, the
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`Board’s factual finding. The Board improperly found obviousness of claims 1, 3 and 17 of the
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``130 Patent.
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`ARGUMENT
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`The Board made multiple, significant, legal and factual errors in its decision to institute
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`the subject IPR, and in its obviousness decision. The Director should reverse.
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`A.
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`THE BOARD SHOULD NOT HAVE INSTITUTED THE PETITION BECAUSE THE PETITION
`DID NOT IDENTIFY ALL REAL PARTIES IN INTEREST
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`35 U.S.C. §312(a) states in relevant part: “A petition filed under section 311 may be
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`considered only if-…(2) the petition identifies all real parties in interest.” (emphasis added).
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`The language of the statute is plain and unambiguous. A petition for inter partes review
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`must identify all real parties in interest before it can even be considered. A determination by the
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`Board that all real parties in interest have been identified is a threshold matter that barred
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`institution of the subject IPR.
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`Puzhen’s Petition did not comply with the statutory requirements under 35 U.S.C.
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`§312(a)(2). Puzhen’s Petition did not identify all real parties in interest. ESIP provided such
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`evidence and so argued. The Board refused to address the issue before institution. Therefore, it
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`was improper for the Board to “consider” the Petition and institute the subject IPR.
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`1.
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`The Board Failed to Address this Threshold Issue
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`The Board has accurately described the determination of whether all real parties in
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`interest have been properly identified as a “threshold issue” that must be determined prior to
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`institution of an IPR. See, Zerto, Inc. v. EMC Corp., IPR2014-01329, Paper No. 33 at 6 (PTAB
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`March 3, 2015) (citing ZOLL Lifecor Corp. v. Philips Elects. N. Am. Corp., Case IPR2013-
`Page 5 of 18
`Petition to Director
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`00606, slip op. at 7-8 (PTAB Mar. 20, 2014) (Paper 13), (failure to identify all real parties-in-
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`interest renders petition incomplete and trial cannot be instituted); see also, Unified Patents, Inc.
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`v. Clouding IP, LLC, IPR2013-00586, Paper No. 9 at 4 (PTAB March 21, 2014) ("A petition for
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`inter partes review may be considered only if, among other requirements, the petition identifies
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`all real parties-in-interest.").
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`Here, the Board instituted the subject IPR, committing legal error by dismissing the
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`statutory requirement, merely saying that they “look forward to further development of this [real
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`parties in interest] issue during trial.” See, Exhibit B, p. 5. That threshold inquiry cannot be put
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`off to trial. The Board violated 35 U.S.C. §312(a)(2) when it instituted the IPR without making
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`the required decision that all real parties in interest were properly identified in the Petition.
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`2.
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`The Board Failed to Apply the Correct Legal Standard for
`Determining a Real Party in Interest
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`In Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018)
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`(“AIT”), the Federal Circuit articulated the standard and process for identifying a “real party in
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`interest” in the context of an IPR. The Board panel in the subject IPR quoted portions of the AIT
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`decision and promptly failed to apply those principles to identify the real parties in interest.
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`With reference to AIT, the Board stated:
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`Determining whether a non-party is a “real party in interest” demands a flexible
`approach that takes into account both equitable and practical considerations, with
`an eye toward determining whether the non-party is a clear beneficiary that has a
`preexisting, established relationship with the petitioner…
`when it comes to evaluating the relationship between a party bringing a suit and a
`non-party, the common law seeks to ascertain who, from a “practical and
`equitable” standpoint, will benefit from the redress that the chosen tribunal might
`provide.
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`Exhibit A, p. 6 (citations omitted).
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`Petition to Director
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`Page 6 of 18
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`In AIT, the Federal Circuit recognized that “Congress understood that there could be
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`multiple real parties in interest, as evidenced by § 312(a)’s requirement that an IPR petition must
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`‘identif[y] all real parties in interest.” Applications in Internet Time, 897 F.3d at 1347 (citation
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`omitted, emphasis in original). The Federal Circuit further recognized that “Congress intended
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`for [the term ‘real party in interest’] to have an expansive formulation.” Id., at 1350.
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`Moreover, the Board itself recognized six (6) categories from Taylor v. Sturgell that may
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`create an exception to the common law rule that normally forbids non-party preclusion in
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`litigation. See, Zerto, Inc. v. EMC Corp., Case No. IPR2014-01329, Paper No. 33 at 7 (PTAB
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`March 3, 2015) (citing Taylor v. Sturgell, 553 U.S. 880, 893-95, 128 S.Ct. 2161 (2008)).
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`3.
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`doTERRA was a Real Party in Interest
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`ESIP argued in both its Patent Owner’s Preliminary Response and its Patent Owner’s
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`Response that doTERRA International, LLC (“doTERRA”) is a real party in interest that should
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`have been identified in the Petition. See, Exhibit C.
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`ESIP provided undisputed evidence supporting its position that doTERRA is a real party
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`in interest, including:
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`• doTERRA and Puzhen are co-defendants in the underlying litigation (see, Exhibit
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`D);
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`• Puzhen provided to doTERRA the accused product in the underlying litigation
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`(see, Exhibit E);
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`• doTERRA agreed to be bound by the rulings in the IPR and the same estoppel
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`that would apply to Puzhen (see, Exhibit F); and
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`• doTERRA was the only party against which the `130 Patent was actually being
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`asserted when the Petition was filed (see, Exhibit G).
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`Petition to Director
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`Page 7 of 18
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`The evidence shows doTERRA was a clear beneficiary of the subject IPR and had a
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`preexisting relationship with Puzhen. In fact, doTERRA benefited most from the IPR as the only
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`party against which the `130 Patent was actually asserted. A holding of invalidity would quell
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`that claim, thus benefitting doTERRA more directly than Puzhen. Also, Puzhen and doTERRA
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`have preexisting relationships as co-defendants and supplier-customer.
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`The Board committed legal error in concluding that “none of these factors suggests that
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`doTERRA is a ‘clear beneficiary’ with a sufficient ‘preexisting, established relationship with the
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`petitioner.’” See, Exhibit A, p. 12.
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`As to the benefit prong of analysis, the Board stated that “the benefits of this proceeding
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`to doTERRA are not sufficiently great” to conclude that doTERRA is a real party in interest.
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`See, Exhibit A, p. 14. When the Board made this statement, the possible benefits to doTERRA
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`included dismissal of ESIP’s claim of infringement of the `130 Patent in the underlying litigation
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`and avoiding all liabilities from that. There was no legally possible greater benefit to doTERRA.
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`Eventually, ESIP stipulated to dismissal of its claim of infringement of the `130 Patent
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`against doTERRA in the underlying litigation because the Board’s decision made pursuit of such
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`a claim legally untenable, and the district court dismissed ESIP’s claim of infringement of the
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``130 Patent against doTERRA. See, Exhibit H.
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`The Board improperly concludes that “there is no evidence that doTERRA has achieved
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`any clear benefit from [Puzhen] filing the Petition that doTERRA would not have achieved by
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`filing and litigating the Petition itself.” See, Exhibit A, p. 13. First, that is not the standard. The
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`focus of the real party in interest inquiry is on the patentability of the claims challenged in the
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`IPR and who will benefit from having those claims canceled or invalidated. See, Applications in
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`Petition to Director
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`Page 8 of 18
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`Internet Time, 897 F.3d at 1348. Second, doTERRA receives the clear benefit of having been
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`shielded from the time and expense of the subject IPR by Puzhen, who filed the Petition.
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`With respect to the relationship between doTERRA and Puzhen, the Board cites
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`WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308 (Fed. Cir. 2018) as support that a
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`standard customer-manufacturer relationship is not sufficiently close to show that the non-party
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`was a real party in interest. See, Exhibit A, p. 12. WesternGeco is factually distinct. The non-
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`party (PGS) was not a co-defendant in the underlying litigation. See, WesternGeco, 889 F.3d at
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`1320-21.
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`The Board also cites another Board decision, Panties Plus, Inc. v. Bragel Int’l, Inc., Case
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`IPR2017-00044, slip op. at 7 (PTAB Apr. 12, 2017) (Paper 6), as support that being co-
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`defendants in an infringement suit is not a sufficient relationship to render a non-party a real
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`party in interest. See, Exhibit A, p. 13. However, that Board decision was made before the
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`Federal Circuit’s holding in AIT and should receive no precedential weight.
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`ESIP argued that the category from Taylor most relevant here is whether a party agrees to
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`be bound by the determination of issues in an action between others. See, Exhibit C. The Board
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`responded that “the rule established in Taylor is not that anyone who agrees to be bound by the
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`determination of issues in an action between others is an RPI.” See, Exhibit A, p. 11. The Board
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`missed the point. The categories in Taylor are instructive as to characteristics for identifying a
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`real party in interest who should therefore be estopped. See, Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48759 (Aug. 14, 2012). Because doTERRA agreed that it should be bound by the
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`result of the IPR, that admission further evidences that doTERRA is a real party in interest.
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`The Board reasoned that the terms of doTERRA’s agreement to be bound by the estoppel
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`of the IPR “do not apply to the present proceeding, because no estoppel has yet attached to
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`Petition to Director
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`Page 9 of 18
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`[Puzhen] (and none will until the entry of this Decision).” See, Exhibit A, p. 12. No principle of
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`law was cited for why the terms of doTERRA’s agreement do not apply to the determination of
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`whether doTERRA is a real party in interest, let alone why its real party in interest status should
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`be suspended until after entry of the Final Written Decision. The Board’s reasoning is improper.
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`The Board misconstrued, misapplied, and ignored the evidence that doTERRA is a real
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`party in interest. Moreover, the Board improperly dismissed each individual piece of evidence as
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`insufficient standing alone, without considering the evidence as a whole. As a whole, the
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`evidence establishes under the AIT analysis that doTERRA is a real party in interest to this IPR.
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`The Board notes that ESIP “did not seek any additional discovery into the question of
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`what role, if any, doTERRA may have played in preparing or filing the Petition.” See, Exhibit
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`A, p. 13, fn. 10. This is not the standard. It is evidence that the Board is still improperly
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`requiring “control” over the filing of a petition before a non-party is considered a real party in
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`interest. It is also evidence that the Board improperly shifted the statutory burden of proof from
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`Puzhen to ESIP. See, Zerto, Inc. v. EMC Corp., Case IPR2014-01295, slip op. at 6-7 (PTAB
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`Mar. 3, 2015) (Paper 34) (finding that the overall burden remains with the petitioner to establish
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`that it has complied with the statutory requirement to identify all real parties in interest); see
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`also, Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018).
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`At the Oral Hearing, ESIP notified the Board that Puzhen’s reply document did not
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`dispute that doTERRA is a real party in interest, constituting an admission that doTERRA is a
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`real party in interest. See, Exhibit I, p. 34, lines 6-12. Under 37 CFR § 42.23(a), when a reply
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`document does not dispute a material fact, that fact may be considered admitted. Accordingly,
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`Puzhen admitted that doTERRA is a real party in interest.
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`Petition to Director
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`Page 10 of 18
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`The Board erred by not addressing this evidence. See, Applications in Internet Time, 897
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`F.3d at 1352 (citing Butte City v. Hogen, 613 F.3d 190, 194 (D.C. Cir. 2010) (explaining that an
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`agency’s refusal to consider evidence bearing on the issue before it is, by definition, arbitrary
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`and capricious within the meaning of 5 U.S.C. § 706)). The Board’s decision that doTERRA
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`was not a real party in interest was arbitrary and capricious.
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`The Director should reverse the Board’s decision and find that doTERRA was a real
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`party in interest that should have been, but was not, identified in the Petition, because application
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`of the appropriate legal standard and the available evidence can support no other conclusion.
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`B.
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`THE PETITION FAILED TO SHOW A LIKELIHOOD OF SUCCESS
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`In its Patent Owner’s Preliminary Response, ESIP showed that the prior art relied upon in
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`the Petition was merely cumulative of prior art already considered during prosecution of the
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`patent application that became the `130 Patent. See, Exhibit J.
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`In its Request for Rehearing, ESIP presented additional evidence that became available
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`only after the Patent Owner’s Preliminary Response had been filed. See, Exhibit K. This new,
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`additional evidence included a Notice of Allowance subsequently entered in a related patent
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`application wherein claims closely related to the claims at issue in the `130 Patent were allowed
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`over all the same prior art cited in Puzhen’s Petition. See, Exhibit L.
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`In its Denial of Rehearing, the Board applied an erroneous standard, stating “[n]ew
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`evidence, by definition, could not have been addressed previously. Accordingly, the new
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`evidence is beyond the scope of the request for rehearing, and we have not considered it.” See,
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`Exhibit M, p. 2, fn. 2.
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`The Trial Practice Guide states that “[e]vidence not already of record at the time of the
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`decision will not be admitted absent a showing of good cause.” See, Office Patent Trial Practice
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`Petition to Director
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`Page 11 of 18
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`Guide, 77 Fed. Reg. 48768 (August 14, 2012) (emphasis added). ESIP’s Request for Rehearing
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`did include new evidence and good cause why it could not have been previously presented. See,
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`Exhibit K. ESIP demonstrated that the evidence from the “now allowed” patent application was
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`“closely related” to the subject claims, which is good cause why it was not presented in Patent
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`Owner’s Preliminary Response. Id. The Board improperly refused to consider the additional
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`evidence.
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`The Board misstated its own standard of review for Requests for Rehearing and then
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`failed to consider evidence properly before the Board. The Board’s refusal to consider the
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`additional evidence was an abuse of discretion, failing to comply with the Board’s own rules.
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`The Board’s Institution Decision and its Denial of Rehearing violate its own previous
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`decisions and guidelines. The Director should reverse the Board’s decision to institute based on:
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`(1) the failure to identify all real parties in interest in the Petition; and (2) the failure to show a
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`likelihood of succeeding on the grounds asserted in the Petition.
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`C.
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`THE BOARD’S DECISION ON PATENTABILITY IS ABSURD ON ITS FACE
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`A close reading of the Board’s Final Written Decision shows that the Board’s reasoning
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`is unsupported and self-contradictory.
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`Claims 1, 3 and 17 of the `130 Patent were found to be obvious in view of the prior art
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`combination of Sevy and Cronenberg. See, Exhibit A, p. 40. The Board found that “Sevy
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`teaches separating droplets from the mixed droplet-air flow by passing the flow through an
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`orifice in a wall.” See, Exhibit A, pp. 25-26.
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`As support for this finding, the Board relied upon Sevy’s disclosure that “the separator
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`plate 98 passes the flow of air from the atomizer 16 through apertures 99 therein. Droplets that
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`… have too large a size and mass will not be able to quickly turn to follow the flow of air.” Id.
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`Petition to Director
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`Page 12 of 18
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`However, that disclosure from Sevy does not support the Board’s factual assertion. That
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`very disclosure from Sevy teaches that separation occurs when the larger droplets strike the walls
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`100 of the lower chamber around the atomizer or its top (the separator plate 98) when the size
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`and mass of those droplets make them too heavy to remain entrained in the flow of air. See,
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`Exhibit N; col. 8, line 55 – col. 9, line 2.
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`That separation of large droplets out of the air flow happens before the flow passes
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`through Sevy’s aperture. The droplets cannot be separated within the aperture 99. Sevy’s
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`aperture 99 defines a region of empty space, a hole. That empty space does not cause changes in
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`the direction of a flow of air. It cannot discriminate with regard to the sizes of droplets passing
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`through it. Sevy’s aperture does not and cannot function as a separator.
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`The Board relied on the testimony of Puzhen Life USA’s expert, including that the
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`separator plate (98) in Sevy “segregate[s]” atomizer droplets. See, ESIP Series 2, 958 F.3d at
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`1383. Puzhen Life USA’s expert did not testify that Sevy’s orifice provided separation, but
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`rather that Sevy’s separator plate did so. Id. Sevy’s separator plate and aperture are separately
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`named and distinctly numbered components. The Board’s unsupported finding is contradicted
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`by Puzhen Life USA’s expert and the teachings in the Sevy prior art reference cited by the
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`Board.
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`The evidence cited in the Board’s decision does not support the Board’s factual findings,
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`and instead contradicts those findings.
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`The Board also found that a skilled artisan would have been motivated to replace the
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`aperture in Sevy with the arcuate passageway of Cronenberg and “that a skilled artisan would
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`have been motivated to substitute one method [of separation] for the other.” See, Exhibit A, pp.
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`26-27. In sum, the Board found that substituting Cronenberg’s arcuate passageway in place of
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`Sevy’s aperture was obvious because both components achieved the same result, separation of
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`droplets.
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`Sevy does not teach that passing the flow of air through its aperture accomplishes
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`separation of droplets. Accordingly, Sevy’s aperture and Cronenberg’s helical passageway – the
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`components the Board equates as substitutes - do not achieve the same result. The Board’s
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`statement regarding a motivation to combine Sevy and Cronenberg is based on a
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`misapprehension of the teachings of Sevy.
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`The subject claims of the `130 Patent were also found to be obvious in view of the prior
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`art combination of Sevy and Giroux. See, Exhibit A, p. 40. The Board found that Giroux
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`discloses a “vortex” that separates larger droplets from the air flow. Id., at p. 45.
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`As support for this finding, the Board again relied on Puzhen Life USA’s expert
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`testimony and Giroux’s teaching that the swirl of droplets in Giroux’s “vortex” sends the larger
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`droplets to the outside rings [of the vortex] and . . . keeps the smaller [] droplets in the air stream
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`for a longer period of time.” Id., at pp. 43-45. This evidence does not support the Board’s
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`statement that the larger droplets are separated from the air flow. It states that the larger droplets
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`are sent to the outside rings of the vortex, not outside the air flow.
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`Giroux also teaches that “[a]s the particles are passed through the particle dispersion
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`chamber 85, they are swirled into a vortex and emerge from the chamber 85 while still in the
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`vortex into the nasal cavity and the paranasal sinuses.” See, Exhibit O; col. 12, lines 33-37.
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`Giroux teaches that the larger and smaller droplets stay in the vortex, albeit separate portions of
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`the vortex, and are delivered to Giroux’s user. Thus, the larger droplets are not separated from
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`the air flow, contrary to the Board’s finding.
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`The Board’s motivation to combine Sevy and Giroux was that a PHOSITA would have
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`been motivated to substitute Giroux’s channel defined by a helical baffle for the straight orifice
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`in Sevy’s plate because both Sevy and Giroux teach methods for removing large droplets from
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`[the] mixture of air and liquid droplets. See, Exhibit A, p. 45.
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`Again, Sevy does not teach that passing the flow of air through its aperture accomplishes
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`separation of droplets. And Giroux does not teach separating large droplets from the air flow.
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`Sevy’s aperture and Giroux’s helical baffle – the components the Board equates as substitutes -
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`do not achieve the same result. The Board’s statement regarding a motivation to combine Sevy
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`and Giroux is based on misapprehensions of the teachings of Sevy and Giroux.
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`The Board also failed to consider substantial, independent evidence related to non-
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`obviousness. ESIP presented a Notice of Allowance from a closely related patent application,
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`U.S. Patent Application Serial No. 15/297,542 (“`542 Application”), arguing that it provided the
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`most objective evidence of non-obviousness. See, Exhibits P and L. The `542 Application was a
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`child application of the subject `130 Patent. Id. The ‘542 patent examiner specifically
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`considered the very prior art cited and relied upon in the Petition. Id. Claims in the `542
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`Application were not just “related” but substantively directed to the same points of novelty as the
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`subject claims in the `130 Patent, and were allowed over that same prior art. Id. The patent
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`examiner in the `542 Application provided objective, highly relevant, evidence and reasoning
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`why teachings of Sevy and Cronenberg could not render those claims obvious. Id.
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`The Board improperly dismissed this evidence, ignoring the nexus between the claims in
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`the child application and the claims of the `130 Patent. See, Exhibit A, pp. 38-40. Instead, the
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`Board based its dismissal of this evidence on the alleged scope of the respective claims and an
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`overly restrictive view of “secondary considerations.” Id. The Board ignored the significance of
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`this evidence, the nexus between the claims and consideration of the same prior art.
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`The Board’s factual conclusion with respect to the teachings of Sevy was incorrect.
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`Thus, the motivation to combine Sevy with any other prior art was inaccurate and legally
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`improper because it was based on a factual misconception with respect to the teachings of Sevy.
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`The obviousness analysis performed by the Board and affirmed by the Federal Circuit
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`was fatally flawed. Claims 1, 3 and 17 of the `130 Patent should be considered valid.
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`CONCLUSION
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`If the Director concludes that any of the issues in this Petition should be reheard, the
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`existing record can be used, but a new panel should conduct such a rehearing because the panel
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`from the subject IPR has proven to be incapable of properly applying the law and the facts.
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`However, the record is clear and no such rehearing is required.
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`ESIP petitions the Director to find that Puzhen’s Petition failed to comply with 35 U.S.C.
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`§ 312(a)(2) to identify all real parties in interest. ESIP petitions the Director to find that
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`Puzhen’s Petition did not show a likelihood of success with respect to finding the subject claims
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`obvious. Accordingly, the Director should reverse the decision from the Board to institute
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`Puzhen’s Petition.
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`ESIP also petitions the Director to find that the Board misapprehended the asserted prior
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`art and that that misapprehension makes the Board’s obviousness decisions improper.
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`Accordingly, the Director should reverse the obviousness decisions from the Board.
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`DATED this 29th day of June, 2021.
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`Respectfully submitted,
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`/s/ Gordon K. Hill
`______________________________
`Gordon K. Hill
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`Reg. No. 48,664
`Attorney for Applicant
`Customer No. 11653
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`Petition to Director
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`PROOF OF SERVICE OF THE PETITION TO DIRECTOR
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`FOR REVIEW OF INTER PARTES REEXAMINATION
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`The undersigned certifies that a copy of this Petition to Director for Review of Inter
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`Partes Reexamination was filed in Case IPR2017-02197 using the PTAB E2E system and
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`certifies service pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b) on the Petitioner by Express
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`Mail of a copy of this Petition to Director for Review of Inter Partes Reexamination and
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`supporting materials at the correspondence addresses of record for the Petitioner:
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`Mark A. Miller
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`Elliot J. Hales
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`Dorsey & Whitney LLP
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`111 South Main Street, 21st Floor
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`Salt Lake City, Utah 84111
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`Dated: June 29, 2021
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`/s/ Gordon K. Hill
`_____________________
`Gordon K. Hill
`(Reg. No. 48,664)
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`Petition to Director
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`Page 18 of 18
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