Trials@uspto.gov
`571-272-7822
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` Paper: 10
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`Entered: October 3, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JOHNS MANVILLE CORPORATION and JOHNS MANVILLE, INC.,
`Petitioner,
`
`v.
`
`KNAUF INSULATION, INC. and KNAUF INSULATION SPRL,
`Patent Owner.
`____________
`
`Case IPR2018-00805
`Patent 9,469,747 B2
`____________
`
`
`
`Before JAMES T. MOORE, KRISTINA M. KALAN, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
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`
`571-272-7822
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` Paper: 10
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`Entered: October 3, 2018
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JOHNS MANVILLE CORPORATION and JOHNS MANVILLE, INC.,
`Petitioner,
`
`v.
`
`KNAUF INSULATION, INC. and KNAUF INSULATION SPRL,
`Patent Owner.
`____________
`
`Case IPR2018-00805
`Patent 9,469,747 B2
`____________
`
`
`
`Before JAMES T. MOORE, KRISTINA M. KALAN, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
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`IPR2018-00805
`Patent 9,469,747 B2
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`
`Johns Manville Corporation and Johns Manville, Inc. (“Petitioner”)
`filed a Petition (Paper 2, “Pet.”) seeking inter partes review of claims 1, 4, 7,
`9, 16, 21, 25, 33, 38–40, 44, and 47–49 (the “challenged claims”) of
`U.S. Patent No. 9,469,747 B2 (Ex. 1001, “the ’747 patent”). Knauf
`Insulation, Inc. and Knauf Insulation SPRL (“Patent Owner”) filed a
`Preliminary Response. Paper 8 (“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). An inter partes review may
`not be instituted “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” 35 U.S.C. § 314(a). Applying this standard to the information
`presented in the Petition, the Preliminary Response, and the supporting
`evidence, we determine Petitioner has not established a reasonable
`likelihood that it would prevail with respect to at least one of the claims
`challenged in the Petition. Therefore, institution of an inter partes review is
`denied.
`
`I. BACKGROUND
`
`A. Related Matters
`The parties identify the following civil action as involving
`the ’747 patent: Knauf Insulation, LLC. v. Johns Manville Corp., No. 1:15-
`cv-00111-WTL-MJD (S.D. Ind., filed Jan. 27, 2015). Pet. 56; Paper 7, 1.
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`B. Petitioner’s Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 17,
`30, 35, 50):
`Reference(s)
`Swift1
`Swift
`Swift and Gogek2
`
`Basis Claims Challenged
`§ 102
`1, 4, 7, 9, 16, 21, 25, 33, and 38–40
`§ 103
`1, 4, 7, 9, 16, 21, 25, 33, and 38–40
`§ 103
`1, 4, 7, 9, 16, 21, 25, 33, 38-40, 44,
`and 47–49
`1, 4, 7, 9, 16, 21, 25, 33, and 38–40
`
`§ 103
`
`Swift and Worthington3
`
`Petitioner supports its challenges with a Declaration of Dr. Frederick
`J. Hirsekorn. Ex. 1006.
`C. The ’747 Patent (Ex. 1001)
`The ’747 patent, titled “Mineral Wool Insulation” relates to a method
`of manufacturing a mineral fiber thermal insulation product in a series of
`steps. Ex. 1001, at [54], [57]. More particularly, the ’747 patent discloses
`the manufacture of mineral wool insulation products using binders which
`comprise Maillard reactants. Id. at 1:20–22. The ’747 patent provides that
`one “particular binder disclosed is based on a triammonium citratedextrose
`system derived from mixing dextrose monohydrate, anhydrous citric acid,
`water and aqueous ammonia.” Id. at 1:22–25. The ’747 patent’s binder
`system “is formaldehyde free” and “may have at least equivalent and indeed
`
`
`1 U.S. Patent App. Pub. No. 2007/0027283 A1, published February 1, 2007
`(Ex. 1003, “Swift”).
`2 U.S. Patent No. 2,965,504, issued December 20, 1960 (Ex. 1004,
`“Gogek”).
`3 U.S. Patent No. 3,513,001, issued May 19, 1970 (Ex. 1005,
`“Worthington”).
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`improved properties compared to, for example, products made using the tri-
`ammonium citrate-dextrose system” of the prior art.4 Id. at 1:26–27, 1:63–
`67. According to the ’747 patent, it is “thus surprising that an acid precursor
`derivable from an inorganic salt should provide a suitable acid precursor in
`an otherwise apparently similar binder system.” Id. at 2:8–11.
`The ’747 patent provides numerous examples of methods of preparing
`a binder system. Id., passim. The claims of the ’747 patent are directed to a
`method of manufacturing a glass fiber thermal insulation product having a
`particular content of glass fibers and a particular density. Id. at 13:11–16:48.
`D. Illustrative Claim
`The ’747 patent includes 51 claims; claims 1 and 44 are the only
`independent claims. Claim 1 is illustrative of the challenged claims and is
`reproduced below:
`1. A method of manufacturing a glass fibre thermal insulation product
`which comprises less than 99% by weight and more than 80% by weight
`glass fibres and has a density greater than 5 kg/m3and less than 80 kg/m3, the
`method comprising sequentially:
`forming glass fibres from a molten mineral mixture;
`spraying a substantially formaldehyde-free binder solution onto the
`glass fibres;
`collecting the glass fibres to which the binder solution has been
`applied to form a batt of glass fibres; and
`curing the batt comprising the glass fibres and the binder by passing
`the batt through a curing oven so as to provide a batt of glass fibres
`held together by a cured, thermoset, substantially formaldehyde-
`free, nitrogenous polymer-containing binder,
`wherein the binder solution consists essentially of (i) a carbohydrate
`reactant comprising a reducing sugar or a carbohydrate reactant
`
`4 The prior art referenced in the ’747 patent is WO 2007/014236 (Ex. 1013),
`which the parties generally agree is substantively identical to Swift
`(Ex. 1003). Ex. 1001, 1:20; Pet. 16 n.6; Prelim. Resp. 17 n.5.
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`that yields a reducing sugar in situ under thermal curing conditions
`and (ii) an acid precursor, in aqueous solution,
`wherein the acid precursor provides (i) ionic species selected from the
`group consisting of sulphates, phosphates, nitrates and
`combinations thereof and ii) an amine or amine reactant.
`Ex. 1001, 13:11–35.
`
`II. DISCUSSION
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable interpretation in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed
`Tech., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016) (upholding application
`of the broadest reasonable interpretation standard in an inter partes review).
`Under that standard, we generally give claim terms their ordinary and
`customary meaning as would be understood by a person of ordinary skill in
`the art in the context of the entire patent disclosure. In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Petitioner proposes express constructions for two claim terms—
`“consists essentially of” and “amine or amine reactant.” Pet. 11–17. After
`considering the parties’ arguments and the evidence before us, we determine
`it is not necessary to construe any claim term expressly to determine whether
`to institute trial. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are
`in controversy, and only to the extent necessary to resolve the controversy”).
`B. Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art
`(“POSITA”) “would have had a Ph.D. in Chemistry and 3–5 years of
`industry experience in binder development for insulating or analogous
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`products, or be someone with a Bachelor’s degree in Chemistry or Chemical
`Engineering and 10 or more years of experience in binder development for
`the manufacture of insulating or analogous products.” Pet. 7–8 (citing
`Ex. 1006 ¶ 39). Patent Owner does not appear to dispute Petitioner’s
`contention regarding the level of skill in the art.
`We determine that “analogous products,” as set forth in Petitioner’s
`definition of a POSITA, is unclear and overly broad. Petitioner does not
`explain what it means by “analogous products,” and the phrase “insulating
`or analogous products,” is broader than the field of art to which the claimed
`method pertains. Dr. Hirsekorn explains that the claimed method of the ’747
`patent “involves manufacturing a fiberglass insulation product having a
`specified concentration of glass fibres and a specified density by forming
`glass fibres from a molten mineral mixture.” Ex. 1006 ¶ 41. That testimony
`is consistent with the preamble of claim 1 of the ’747 patent, which recites:
`“[a] method of manufacturing a glass fibre thermal insulation product.”
`Ex. 1001, 13:11–12.
`Accordingly, on this record and consistent with the expert testimony
`and the language of the ’747 patent, we determine that a POSITA would
`have had a Ph.D. in Chemistry and three to five years of industry experience
`in binder development for the manufacture of fiberglass insulation products,
`or a Bachelor’s degree in Chemistry or Chemical Engineering and ten or
`more years of experience in binder development for the manufacture of
`fiberglass insulation products. Ex. 1006 ¶ 39.
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`C. Overview of Prior Art References
`1. Swift (Ex. 1003)
`Swift, titled “Binders and Materials Made Therewith,” discloses
`binders to produce or promote cohesion in non- or loosely-assembled matter.
`Ex. 1003, at [54], [57]. Swift discloses the manufacture of products such as
`fiberglass, by spraying the matter with a thermally-curable, aqueous binder.
`Id. ¶ 17. Swift provides an overall review of its binders, including
`discussion of the Maillard reaction and how it plays a role in the formation
`of its binders. Id. ¶¶ 6–16. More particularly, Swift teaches an “aqueous
`binder composition” including “(i) an ammonium salt of one or more
`polycarboxylic acid reactants and (ii) one or more carbohydrate reactants
`having a reducing sugar.” Id. ¶ 63. Swift provides a number of examples of
`a carbohydrate reactant (id. ¶¶ 57–58) and examples of an ammonium salt of
`one or more polycarboxylic reactants (id. ¶¶ 34–38). Swift also teaches that
`“various additives can be incorporated into the binder composition,” such as
`silicon-containing coupling agents, or one or more corrosion inhibitors. Id.
`¶¶ 69–72. The “one or more corrosion inhibitors” may include, inter alia,
`monoammonium phosphate (“MAP”). Id. ¶ 72. Swift provides fourteen
`examples illustrating the preparation of binder compositions and the
`preparation and testing of products containing binders, including fiberglass
`insulation products. Id. ¶¶ 75–122.
`2. Gogek (Ex. 1004)
`Gogek relates to moisture resistant refractory blocks having high
`hardness for use in insulating furnaces. Ex. 1004, 1:14–16. Gogek
`discloses:
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`I have discovered that greatly improved insulating blocks which
`are highly moisture resistant can be prepared from refractory
`materials and a binder consisting essentially of a sugar and a
`chemical adjunct, and I have also discovered that such blocks
`possess hardness and resistance to breakage and chipping not
`found in any commercially available refractory block.
`Id. at 1:30–36. Gogek discloses that the preferred chemical adjunct is
`ammonium sulfate. Id. at 1:73.
`Gogek discloses the following example formulation:
`
`
`Ex. 1004, 2:10–18. Gogek discloses that, to make an insulating block, “the
`above-named components were slurried in 600 to 1000 parts of water,” and
`the “slurry was passed between two moving perforated belts to squeeze out
`the excess water and compact the undissolved ingredients.” Id. at 2:19–23.
`The compressed mass was cut into blocks, which were then baked in kilns.
`Id. at 2:23–26. According to Gogek, blocks made according to this method
`were resistant to water and exhibited high surface hardness, as compared
`with blocks made by prior art methods. Id. at 2:30–41.
`3. Worthington (Ex. 1005)
`Worthington discloses thermosetting compositions for use as binders
`in the making of shell molds or cores and for other purposes for which
`thermosetting compositions are used, for example, for the production of
`plastic articles in conjunction with a suitable filler. Ex. 1005, 1:29–35.
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`Worthington’s objective is to provide a substitute for phenolic resins and
`other binders conventionally used in the shell mold process. Id. at 1:41–52.
`According to Worthington, the thermosetting composition comprises:
`a major proportion by weight of a carbohydrate (preferably the
`carbohydrate is mixed with a minor proportion of either a mineral
`acid or a salt liberating such an acid on heating, such as, for
`example, the ammonium salt of sulphuric or hydrochloric acid),
`a minor proportion of a carboxylic acid, preferably a
`polycarboxylic acid, preferably containing additional groups
`such as hydroxyl or amino groups or an aromatic carboxylic acid
`with active α carbon atoms, or a mixture of two or more such
`acids and a still smaller proportion of one or more cross-linking
`agents and of one or more amines.
`Ex. 1005, 1:53–65.
`Worthington discloses that the ingredients react to form a
`thermosetting resin-like product that can be used to replace phenol
`formaldehyde synthetic resins or other materials commonly used in the
`production of molded products or of shell molds or cores. Ex. 1005, 3:55–
`58. Worthington identifies advantages of the disclosed binders over phenol-
`formaldehyde resins and other materials previously used in the art. Id.
`at 7:12–24.
`D. Petitioner’s Asserted Grounds
`1. Petitioner’s Ground 1: Asserted Anticipation by Swift
`Petitioner contends that Swift teaches every limitation of the method
`of manufacturing a glass fibre thermal insulation product of claim 1.
`Pet. 17–30. Particularly, Petitioner contends that the acid precursor
`limitation of claim 1 is taught by a corrosion inhibitor identified by Swift,
`namely, monoammonium phosphate. Id. at 22–23 (citing Ex. 1003 ¶¶ 72,
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`73). Petitioner further relies on Swift to teach the additional limitations of
`dependent claims 4, 7, 9, 16, 21, 25, 33, and 38–40. Id. at 25–29.
`Patent Owner argues that Swift does not anticipate any of the
`challenged claims. Prelim. Resp. 14–21. First, Patent Owner argues that the
`claims exclude Swift’s binder system. Id. at 14–18. More particularly,
`Patent Owner argues that the binder solution required by independent claims
`1 and 445 includes an acid precursor that “provides (i) ionic species selected
`from the group consisting of sulfates, phosphates, nitrates and combinations
`thereof and (ii) an amine or amine reactant.” Id. at 14. By contrast, Patent
`Owner argues, Swift’s aqueous binder composition includes, inter alia, an
`ammonium salt of one or more polycarboxylic acid reactants, which are
`capable of cross-linking. Id. at 15.
`Second, Patent Owner argues that Swift does not teach using its
`“corrosion inhibitor” to manufacture an insulation product with the claimed
`density. Id. at 18–21. More particularly, Patent Owner argues that
`Petitioner is cherry-picking from different parts of the Swift reference that
`alternately disclose the correct density, but no corrosion inhibitor, or a
`corrosion inhibitor, but without the correct density. Id. at 19–20.
`After considering the Petition, the Preliminary Response, and the
`record as a whole, we determine Petitioner has not shown a reasonable
`likelihood of prevailing on its contention that the challenged claims are
`unpatentable as anticipated by Swift.
`
`
`5 We note that claim 44 is not challenged in Petitioner’s Ground 1
`(anticipation by Swift), but is nevertheless included in Patent Owner’s
`arguments opposing that ground.
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`Petitioner argues that the general disclosure (as opposed to the
`Examples) of Swift discloses most of the limitations of claim 1 of the ’747
`patent. Pet. 17–25. For example, for the acid precursor limitation, Petitioner
`relies on Swift’s general disclosure that the binder may include a corrosion
`inhibitor, such as MAP. Id. at 22–23 (citing Ex. 1003 ¶¶ 72, 73). For the
`density limitation of the preamble, however, Petitioner cites to one of
`Swift’s Examples to argue that Swift discloses the preamble limitation that
`the product “has a density greater than 5 kg/m3and less than 80 kg/m.3” Id.
`at 19 (citing Ex. 1003 ¶ 113 (Example 11, Batch B)).
`As a preliminary matter, “[w]hether to treat a preamble term as a
`claim limitation is ‘determined on the facts of each case in light of the claim
`as a whole and the invention described in the patent.’” Am. Med. Sys., Inc.
`v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (internal quotation
`marks omitted). “In general, a preamble limits the invention if it recites
`essential structure or steps, or if it is ‘necessary to give life, meaning, and
`vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
`289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-
`Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). If the preamble recites
`a specific characteristic for a component of an invention recited in the body
`of the claim, then the preamble must be given patentable weight. See, e.g.,
`Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615,
`620 (Fed. Cir. 1995) (noting that a claim drafter may choose to use both the
`preamble and the body of the claim to define the subject matter of the
`claimed invention). Because the preamble recites essential structure,
`namely, numerical ranges for the specific composition by weight of the
`thermal insulation product, and numerical ranges for the particular density of
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`the thermal insulation product, and also because the parties both appear to
`treat the preamble as limiting, we treat the numerical ranges in the preamble
`as limiting as well.
`To teach the preamble limitation of “a density greater than 5 kg/m3
`and less than 80 kg/m3,” Petitioner relies on Swift’s statement that its
`fiberglass insulation mat has a density of “about 0.4 pound per cubic foot,”
`which equates to about 6.4 kg/m3. Pet. 19 (citing Ex. 1003 ¶ 113; Ex. 1006
`¶ 64). The cited paragraph of Swift concerns Example 11, Batch B.
`Ex. 1003 ¶ 113. Although the Petition does not expressly refer to Swift
`Example 11, Batch B as teaching the density limitation of claim 1, it is
`apparent that Petitioner relies on Example 11, Batch B because the cited
`paragraph (113) is found within this Example, because the described
`Example provides the particular density Petitioner seeks to identify Swift as
`disclosing, and because Petitioner does not point to any other disclosures of
`Swift for this density. For example, although Swift discloses density values
`for several other Examples and Batches, Petitioner does not rely on such
`values. See, e.g., Ex. 1003 ¶¶ 103, 105, 109, 111, 115, 117, 119, 153.
`Again, Petitioner does not expressly state that the citation to paragraph 113
`of Swift refers to a particular Example of Swift, Petitioner specifically
`quotes language from Swift as disclosing that the density is “about 0.4
`pound per cubic foot,” and identifies paragraph 113 of Swift. Pet. 19–20.
`This language relates to Example 11, Batch B. Ex. 1003 ¶ 113.
`As noted by Patent Owner, however, Example 11’s Batch B “does not
`include a ‘corrosion inhibitor’ or anything else that [Petitioner] alleges to
`read on the acid precursor of the challenged claims.” Prelim. Resp. 19.
`Rather, as Patent Owner notes, Batch B contains dextrose monohydrate,
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`citric acid, water, ammonia, and silane. Id.; Ex. 1003 ¶¶ 112–113. Swift
`discloses that the fiberglass insulation product of Example 11, Batch B
`includes dedusting oil (mineral oil), which Swift discloses as another
`possible corrosion inhibitor. Ex. 1003 ¶¶ 72, 113. However, Petitioner does
`not contend that dedusting oil is an acid precursor, and it does not appear
`that dedusting oil is a component of the binder solution in this particular
`example. Id. ¶ 112.
`Petitioner’s anticipation argument with respect to Swift, which
`requires the presence of a corrosion inhibitor, requires combining
`disclosures from separate embodiments, or applying the teachings of the
`general disclosures to an embodiment that specifically fails to include those
`disclosures. More particularly, for the acid precursor limitation of claim 1,
`Petitioner relies on MAP, which Swift discloses as one of several possible
`corrosion inhibitors that may be included in the binder. Pet. 22–23 (citing
`Ex. 1003 ¶¶ 72, 73). For the density limitation of the preamble, however,
`Petitioner relies on Example 11, Batch B. Pet. 19 (citing Ex. 1003 ¶ 113).
`Notably, Example 11’s Batch B does not include MAP. This is not a
`persuasive way to argue anticipation. “[I]t is not enough that the prior art
`reference . . . includes multiple, distinct teachings that the artisan might
`somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v.
`VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[U]nless a reference
`discloses within the four corners of the document not only all of the
`limitations claimed but also all of the limitations arranged or combined in
`the same way as recited in the claim, it cannot be said to prove prior
`invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C.
`§ 102.” Id. Petitioner presents no argument that a person of ordinary skill in
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`the art would have understood the density of Example 11, Batch B as
`applying more broadly than that particular example. For instance, Petitioner
`does not rely on density values Swift discloses for Examples or Batches
`other than Example 11, Batch B.
`Additionally, Petitioner asserts that MAP provides an “acid precursor,
`in aqueous solution” as recited in claim element 1[e], and more particularly
`an acid precursor that provides “an amine or amine reactant,” as recited in
`claim element 1[f]. Pet. 22–24. Petitioner’s only evidence on its point
`regarding the “amine or amine reactant” limitation is Patent Owner’s
`infringement contentions (Ex. 1009, 37), and the Hirsekorn Declaration
`(Ex. 1003 ¶ 81), which relies on the same evidence presented in the Petition,
`with no further analysis. Petitioner’s infringement contentions, however,
`rely on a different compound—diammonium phosphate (“DAP”)—and a
`different binder composition—the accused product—to conclude that MAP
`will provide an amine or amine reactant. Ex. 1009, 37. Petitioner provides
`no analysis showing that MAP provides “an amine or amine reactant” in the
`context of Swift’s binder composition.
`We are unpersuaded by Petitioner’s presentation of the evidence
`based on Swift, and determine that Petitioner has not established a
`reasonable likelihood of prevailing in showing the anticipation of claim 1 by
`Swift. Claims 4, 7, 9, 16, 21, 25, 33, and 38–40 all depend from claim 1 and
`therefore present the same concerns discussed above. Accordingly, on the
`present record, we find that Petitioner has not demonstrated a reasonable
`likelihood that Swift anticipates claims 1, 4, 7, 9, 16, 21, 25, 33, and 38–40.
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`2. Petitioner’s Ground 2: Asserted Obviousness over Swift
`Petitioner contends that, to the extent Swift does not explicitly or
`inherently disclose the limitations of claims 1, 4, 7, 9, 16, 21, 25, 33,
`and 38–40, a skilled artisan would have known that certain limitations would
`have been obvious based solely on the disclosure of Swift. Pet. 30–35
`(citing Ex. 1006 ¶¶ 117–125). Petitioner contends that an ordinarily skilled
`artisan “would have known that a variety of ammonium salts of acid would
`have been suitable as the Maillard reactant in the binder solution taught by
`Swift” and that it would have been obvious to “use MAP as both a corrosion
`inhibitor and a nitrogen-containing binder reactant.” Id. at 30–32. Petitioner
`further contends that it would have been obvious to a skilled artisan to
`manufacture “a glass fibre thermal insulation product which comprises less
`than 99% by weight and more than 80% by weight glass fibres” as in
`claim 1, because it would have been obvious “to omit the ‘about’ margins at
`the endpoints of the range and use a weight percentage within the range
`recited in Claim 1.” Id. at 32–33. Petitioner also presents arguments that
`Swift renders claims 4 and 9 obvious. Id. at 33–35.
`Patent Owner argues that Petitioner does not adequately explain its
`theory of obviousness for this ground. Prelim. Resp. 21–23. Patent Owner
`further argues that Petitioner failed to provide a rationale for modifying
`Swift’s binder system. Id. at 23–24. Finally, Patent Owner argues that Swift
`does not suggest using its “corrosion inhibitor” to manufacture an insulation
`product with the claimed density. Id. at 24–25.
`After considering the Petition, the Preliminary Response, and the
`record as a whole, we determine Petitioner has not shown a reasonable
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`likelihood of prevailing on its contention that the challenged claims are
`unpatentable as obvious in view of Swift.
`We agree with Patent Owner that Petitioner has “failed to (1) identify
`any ‘precise difference’ between the individual prior art references and the
`claims, as required by Graham, and [failed to] (2) set out ‘some articulated
`reasoning with rational underpinning to support the legal conclusion of
`obviousness,’ as required by KSR.” Prelim. Resp. 23. Although Petitioner
`states that Swift may “not explicitly or inherently disclose MAP acting as an
`acid precursor” (Pet. 31), it is unclear how Petitioner’s obviousness ground
`proposes to modify the disclosure of Swift to meet this limitation of claim 1.
`MAP is already part of Petitioner’s proposed binder system under an
`anticipation ground, where Petitioner asserts that it acts as an acid precursor
`and provides both an ionic species and an amine or amine reactant. Id.
`at 22–24. Petitioner does not identify or explain what modifications a
`person of ordinary skill in the art would have made to the binder system of
`Swift in order to prepare a composition in which MAP acts as an acid
`precursor that provides an ionic species and an amine or amine reactant.
`Along those same lines, we also agree that Petitioner’s reasoning fails
`to explain why one of ordinary skill in the art would have been motivated to
`use MAP both as a corrosion inhibitor and as a nitrogen-containing binder
`reactant, particularly when Swift’s binder composition already contains a
`nitrogen-containing binder reactant, namely, an ammonium salt of a
`polycarboxylic acid. Ex. 1003 ¶¶ 11, 17, 56, 62, 63. Merely stating that it
`could have been done by one of ordinary skill in the art fails to meet
`Petitioner’s burden. Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056,
`1068–69 (Fed. Cir. 2018).
`
`16
`
`
`
`IPR2018-00805
`Patent 9,469,747 B2
`
`
`Finally, we agree that, to the extent Petitioner “proposes any
`modification to Swift (which is not clear, as discussed above),” Petitioner
`“does not provide any evidence that the density required by the claims
`would be present after that modification.” Prelim. Resp. 24. None of the
`Examples in which specific densities are set forth appear to use MAP as a
`corrosion inhibitor. See generally Ex. 1003 ¶¶ 75–122. Although Petitioner
`relies on Swift’s Example 11, Batch B as disclosing the density limitation of
`the preamble (Pet. 19), that Example does not disclose MAP as a corrosion
`inhibitor. Ex. 1003 ¶ 113. Petitioner does not appear to propose any
`modification of Example 11, Batch B to include MAP. Nor does Petitioner
`explain, either in the context of anticipation or obviousness, how any such
`modification of Example 11, Batch B would affect the density of the
`fiberglass insulation product. Pet. 32–33.
`Accordingly, we determine that Petitioner’s arguments and evidence,
`whether considered individually or as a whole, are not sufficient to establish
`a reasonable likelihood that challenged claims 1, 4, 7, 9, 16, 21, 25, 33, and
`38–40 are unpatentable as obvious in view of Swift.
`3. Petitioner’s Ground 3: Swift and Gogek
`Petitioner contends that Swift and/or Gogek teach the limitations of
`claims 1, 4, 7, 9, 16, 21, 25, 33, 38–40, 44 and 47–49. Pet. 35–50. More
`particularly, Petitioner argues that Swift alone anticipates claims 1, 4, 7, 9,
`16, 21, 25, 33, and 38–40, but to the extent that it is argued or determined
`that Swift does not disclose the binder solution of the ’747 patent, or, within
`that binder, the claimed acid precursor, these are disclosed by Gogek. Id.
`at 40–43. Petitioner relies on Swift and/or Gogek to teach the limitations of
`claims 44 and 47–49. Id. at 43–50. Petitioner contends that a skilled artisan
`
`17
`
`
`
`IPR2018-00805
`Patent 9,469,747 B2
`
`would have had several reasons to combine the teachings of Swift and
`Gogek. Id. at 36–40 (“Overarching Reasons to Combine Gogek and Swift”).
`Patent Owner argues that Petitioner’s arguments are insufficient to
`render the challenged claims obvious, in that being in the same field of
`endeavor does not establish obviousness; that Petitioner fails to support that
`the elements of Swift and Gogek could have been used predictably; that
`Petitioner’s modifications fundamentally change the operation of prior art
`elements; that there was no reason to modify Swift’s amount of corrosion
`inhibitor based on Gogek’s amount of ammonium sulfate; that Petitioner
`does not identify differences between the binders in Gogek and Swift; that
`Swift and Gogek do not teach or suggest the claimed density in conjunction
`with the claimed binder solution; and that Petitioner fails to support that
`Gogek and Swift would have been obvious to combine. Prelim. Resp. 25–
`38. In view of Patent Owner’s arguments, we consider the sufficiency of
`Petitioner’s asserted reasons to combine the teachings of Swift and Gogek.
`First, Petitioner argues that both Swift and Gogek “are directed to the
`manufacture of insulating materials by contacting loose matter with a binder
`that contains a reducing sugar and a source of nitrogen—precisely the same
`field of endeavor as the ’747 Patent.” Pet. 36–37. Petitioner’s argument is
`deficient in several respects. Analogous art is merely a threshold inquiry as
`to whether a reference can be considered in an obviousness analysis.
`Demonstrating that a reference is analogous art or relevant to the field of
`endeavor of the challenged patent is not sufficient to establish that one of
`ordinary skill in the art would have had reason to combine its teachings with
`other prior art in the manner set forth in the claim. See Securus Techs., Inc.
`v. Global Tel*Link Corp., 701 F. App’x 971, 977 (Fed. Cir. July 14, 2017)
`
`18
`
`
`
`IPR2018-00805
`Patent 9,469,747 B2
`
`(“a broad characterization of [prior art references] as both falling within the
`same alleged field . . . without more, is not enough for [Petitioner] to meet
`its burden of presenting a sufficient rationale to support an obviousness
`conclusion”). Mere compatibility of the references is likewise not sufficient.
`Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017)
`(it is not enough to show that “a skilled artisan, once presented with the two
`references, would have understood that they could be combined”).
`Second, Petitioner argues that, “as described in more detail below,”
`the challenged claims “represent nothing more than the predictable use of
`prior art elements from Swift and/or Gogek according to their established
`functions.” Pet. 37. Petitioner further argues that
`a person of ordinary skill in the art implementing the
`invention of Swift would have understood Gogek to disclose
`a proven example of (i) the complete Swift binder solution;
`or, alternatively, (ii) just the nitrogen-containing acid
`precursor reactant of the Swift binder solution. And thus one
`of ordinary skill in the art would have found it obvious to use
`(a) the aqueous binder solution of Gogek as the binder
`solution in Swift; or, (b) the ammonium sulfates and sulfuric
`acids and salts disclosed in Goge
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