`Knauf Insulation, Inc., and Knauf Insulation SPRL
`By: Joshua P. Larsen (Lead Counsel)
`joshua.larsen@btlaw.com
`James R. Sweeney II (Back-up Counsel)
`james.sweeney@btlaw.com
`Daniel J. Lueders (Back-up Counsel)
`dlueders@uspatent.com
`
`Paper No. 6
`Date: July 18, 2018
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`
` JOHNS MANVILLE CORPORATION AND JOHNS MANVILLE, INC.,
`Petitioners,
`
`v.
`
`KNAUF INSULATION, INC., AND KNAUF INSULATION SPRL
`Patent Owners.
`
`_________________
`
`IPR2018-00879
`Patent 9,926,464
`_________________
`
`
`PATENT OWNERS’ PRELIMINARY RESPONSE
`
`
`
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`IPR2018-00879 (Patent 9,926,464)
`Patent Owners’ Preliminary Response
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`
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`TABLE OF CONTENTS
`
`
`
`
`
`Page
`
`Table of Authorities ................................................................................................. iii
`
`Exhibit List ................................................................................................................. v
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`III.
`
`THE OFFICE HAS ALREADY CONSIDERED, AND REJECTED,
`THE PRIOR ART AND ARGUMENTS ADVANCED IN JM’S
`PETITION ....................................................................................................... 4
`
`JM HAS NOT SHOWN A REASONABLE LIKELIHOOD THAT
`IT WOULD PREVAIL IN PROVING THE OBVIOUSNESS OF
`ANY CHALLENGED CLAIM .....................................................................12
`
`A.
`
`B.
`
`C.
`
`JM Does Not Point To Any Example Of Maillard-Based
`Binders For Fiberglass Insulation In The Prior Art ............................12
`
`JM Misrepresents And Improperly Relies Upon Prior Federal
`Circuit And Board Decisions ..............................................................16
`
`JM Does Not Identify The Differences Between The Prior Art
`And The Claims At Issue ....................................................................21
`
`1.
`
`2.
`
`JM’s Reliance On Tutin Is Unclear ..........................................22
`
`JM’s Reliance On Worthington And Gogek Is Unclear ...........24
`
`D.
`
`JM Does Not Provide A Valid Rationale To Combine Strauss,
`Tutin, And Worthington ......................................................................26
`
`1.
`
`2.
`
`Compatibility Does Not Mean Obvious To Combine ..............26
`
`Using Thermoset Material Is Too Broad To Explain
`Obviousness ..............................................................................28
`
`i
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`IPR2018-00879 (Patent 9,926,464)
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`3.
`
`4.
`
`A Need For Formaldehyde-Free Binders Is Not A Reason
`To Modify Strauss Or Tutin ......................................................29
`
`The Additional Reasons Cited With Regard To Gogek
`Are Also Deficient ....................................................................30
`
`E.
`
`JM Does Not Identify Each And Every Claim Element In The
`Prior Art ...............................................................................................31
`
`F.
`
`Conclusion As To Lack Of Reasonable Likelihood ...........................33
`
`IV. CONCLUSION ..............................................................................................34
`
`Certificate of Word Count ....................................................................................... 35
`
`Certificate of Service ............................................................................................... 36
`
`
`
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`ii
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`TABLE OF AUTHORITIES
`
`Cases
`
`Page(s)
`
`Aqua Prod., Inc. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) ............................................................... 19, 33
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ..................................................................................... 5
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ....................................................................................... 9, 22
`
`In re Am. Acad. of Sci. Tech Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ............................................................... 16, 33
`
`In re Rijckaert,
`9 F.3d 1531 (Fed. Cir. 1993) ......................................................................... 17
`
`In re Spormann,
`363 F.2d 444 (CCPA 1966) ........................................................................... 17
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)................................................................................... 9, 22
`
`Polaris Indus., Inc. v. Arctic Cat, Inc.,
`882 F.3d 1056 (Fed. Cir. 2018) ..................................................................... 27
`
`SAS Institute, Inc. v. ComplementSoft, LLC,
`825 F.3d 1341 (Fed. Cir. 2016) ....................................................................... 5
`
`SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018). ............................................................................ 4, 5, 6
`
`Unified Patents, Inc., v. Berman,
`IPR2016-01571, Paper 10 (December 14, 2016) (informative) .............. 10, 11
`
`
`
`iii
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`Statutes
`
`35 U.S.C. § 316 .................................................................................................. 19, 33
`
`35 U.S.C. § 325 .................................................................................................... 5, 12
`
`
`
`Rules
`
`37 C.F.R. § 42.65 ............................................................................................... 16, 33
`
`
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`iv
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`EXHIBIT LIST
`
`Ex. No. Brief Description
`
`1001
`
`U.S. Patent No. 9,926,464
`
`1002
`
`Prosecution History of U.S. Patent No. 9,926,464
`
`1003
`
`U.S. Patent No. 5,318,990 to Strauss
`
`1004
`
`U.S. Patent Application No. 2004/0038017 by Tutin et al.
`
`1005
`
`U.S. Patent No. 3,513,001 to Worthington
`
`1006
`
`U.S. Patent No. 2,965,504 to Gogek
`
`1007
`
`Hodge JE. Chemistry of browning reactions in model systems. J
`Agric Food Chem. 1953;1(15):928–943
`
`1008
`
`Declaration of Dr. Frederick Hirsekorn
`
`1009
`
`Curriculum Vitae of Dr. Frederick Hirsekorn
`
`1010
`
`U.S. Patent No. 8,114,210 to Hampson
`
`1011
`
`1012
`
`1013
`
`1014
`
`Excerpts of Patent Owner’s Infringement Contentions in Related
`Litigation
`
`Inter Partes Reexamination Decision in Reexamination Control
`95/000,672 and PTAB Appeal 2017-004826 (PTAB, Sept. 8, 2017)
`(regarding Patent No. 7,888,445)
`
`Ex Parte Reexamination Decision in Reexamination Control
`90/013,029 and PTAB Appeal 2016-006341 (PTAB Sept. 29, 2016)
`(regarding Patent No. 7,888,445)
`
`In Re: Knauf Insulation, Fed. Cir. Nos. 2017-1317, -1323, -1324
`(Fed. Cir. March 9, 2018)
`
`v
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`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`2001
`
`2002
`
`2003
`
`2004
`
`Ex Parte Reexamination Decision in Reexamination Control
`90/013,156 and PTAB Appeal 2016-006369 (PTAB Sept. 30, 2016)
`(regarding Patent No. 7,854,980)
`
`Inter Partes Reexamination Decision in Reexamination Control
`95/000,674 (PTAB July 30, 2015) (regarding Patent No. 7,854,980)
`
`Knauf Insulation, Inc. v. Rockwool Int’l A/S, 680 Fed.Appx. 956
`(Feb. 27, 2017)
`
`Ex Parte Reexamination Decision in Reexamination Control
`90/013,030 and PTAB Appeal No. 2016- 006368 (Ex. 1018) (Sept.
`29, 2016) (regarding Patent No. 7,772,347)
`
`Inter Partes Reexamination Decision, in Reexamination Control No.
`95/000,675 (Sept. 8, 2017) (regarding Patent No. 7,772,347)
`
`Final Written Decision in IPR2015-01402 (PTAB Oct. 19, 2016)
`(regarding Patent No. 8,114,210)
`
`Knauf Insulation v. Johns Manville Corp., Fed. Cir. No. 2017-1433
`(Fed. Cir. Jan. 16, 2018)
`
`Declaration of Kiarash Alavi in Support of Defendants’ Motion for
`Limitations on Electronic Discovery, Dkt. No. 49-1 in Knauf
`Insulation LLC v. Johns Manville Corp., Civil Action No. 1:15-cv-
`00111-WTL-MJD (S.D. Ind.)
`
`Excerpt from Official Reporter’s Transcript of Hearing on Motion
`for Protective Order, September 10, 2015, Dkt. No. 68 in Knauf
`Insulation LLC v. Johns Manville Corp., Civil Action No. 1:15-cv-
`00111-WTL-MJD (S.D. Ind.)
`
`Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01453,
`Paper 49 (Jan. 11, 2017)
`
`Johns Manville Corp. v. Knauf Insulation, Inc., IPR2016-00130,
`Paper 35 (May 8, 2017)
`
`vi
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`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01527,
`Paper 17 (Dec. 17, 2015)
`
`Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01569,
`Paper 14 (Dec. 17, 2015)
`
`Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01598,
`Paper 16 (Dec. 17, 2015)
`
`Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01633,
`Paper 10 (Jan. 4, 2016)
`
`Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01673,
`Paper 7 (Jan. 4, 2016)
`
`Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01683,
`Paper 9 (Jan. 4, 2016)
`
`Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01402,
`Paper 18 (Oct. 21, 2015)
`
`2012
`
`Deposition of Dr. Frederick Hirsekorn in IPR2015-01402
`
`2013
`
`Merriam-Webster’s Collegiate Dictionary, 11th ed., p. 1297 (2009)
`
`2014
`
`Johns Manville Corp. v. Knauf Insulation SPRL, Fed. Cir. No. 2017-
`1807, -2285, -2303 (Fed. Cir. July 13, 2018)
`
`
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`vii
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`IPR2018-00879 (Patent 9,926,464)
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`Pursuant to 37 C.F.R. § 42.107(a), Patent Owners Knauf Insulation, Inc., and
`
`Knauf Insulation SPRL (collectively, “Knauf Insulation”) submit the following
`
`preliminary response to the Petition for Inter Partes Review of U.S. Patent No.
`
`9,926,464 (IPR2018-00879, Paper 1, hereafter “Petition”) filed by Johns Manville
`
`Corporation and Johns Manville, Inc. (collectively, “JM”).
`
`I.
`
`INTRODUCTION
`
`Knauf Insulation, Inc., and JM are two of the four major companies
`
`competing in the large U.S. mineral fiber insulation business. For many decades,
`
`that business used binder chemistries containing formaldehyde. By the late 1990s,
`
`the use of formaldehyde began to be questioned for its potential adverse health
`
`effects. The industry began to seek binder chemistries that were free of
`
`formaldehyde.
`
`Like its competitors, JM engaged in extensive research efforts around that
`
`time to discover a manufacturing method for its glass mineral wool insulation
`
`products that used a binder that was free of formaldehyde. JM settled on an
`
`acrylic-based binder and introduced it to the market in the early 2000s as a
`
`“formaldehyde free” glass mineral wool insulation. In the meantime, Knauf
`
`Insulation’s scientists continued their work on formaldehyde-free glass mineral
`
`wool insulation and discovered the manufacturing methods that are the subject of a
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`1
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`number of Knauf Insulation’s patents. Among other critical claim limitations,
`
`those Knauf Insulation patents share the hallmark that they involve the use of
`
`reducing sugars as part of the binder chemistry and result in manufacturing
`
`methods that are both formaldehyde-free and ecologically sustainable.
`
`Knauf Insulation introduced its ECOSE® insulation products based upon
`
`these manufacturing methods to great success in the industry. After seeing Knauf
`
`Insulation’s product, JM stated it was a “breakthrough” and engaged with Knauf
`
`Insulation in negotiations to license Knauf Insulation’s ECOSE® technology at
`
`issue here. Thereafter, JM retreated from its acrylic formulas and switched over to
`
`Knauf Insulation’s technology without obtaining a license. JM’s chief binder
`
`chemist admitted under oath that “JM did not begin exploring the possibility of
`
`implementing a reducing-sugar-based binder in lieu of its acrylic binder until after
`
`January 1, 2007,” after seeing Knauf Insulation’s patents. (Ex. 2001 at ¶ 4; Ex.
`
`2002 at 93:12-15 (“Q. And, in fact, the reason you started considering reducing
`
`sugars having Maillard reaction to melanoidins was only after seeing Knauf’s
`
`patents, correct? A. That is correct, after -- yes, that is correct.”).)
`
`On January 27, 2015, Knauf Insulation sued JM in the U.S. District Court
`
`for the Southern District of Indiana for infringing U.S. Patent Nos. 8,114,210;
`
`8,940,089; and D631,670 and, subsequently, U.S. Patent Nos. 9,039,827;
`
`2
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`9,040,652; 9,464,207; 9,469,747; 9,828,287; and 9,926,464. U.S. Patent No.
`
`9,926,464 (“the
`
`'464 Patent”), which claims some of Knauf Insulation’s
`
`revolutionary formaldehyde-free manufacturing methods, is at issue here. As it
`
`became clear to JM that the story of its prior failures and its copying of Knauf
`
`Insulation’s technology would not play well in court, JM adopted the strategy of
`
`trying to move the litigation to the Patent Office through inter partes reviews
`
`(“IPRs”). The present Petition is the thirteenth of thirteen petitions for IPR that
`
`JM has filed to date against the patents-in-suit.
`
`JM’s IPR campaign against Knauf Insulation’s issued patents has been an
`
`almost complete failure. Of the nine JM IPR petitions decided to date by the
`
`Patent Trial and Appeal Board (“Board”):
`
` Two resulted in Final Written Decisions confirming patentability (Ex.
`
`2003 (IPR2015-01453); Ex. 2004 (IPR2016-00130)), which the
`
`Federal Circuit affirmed (Ex. 2014);
`
` Six were denied institution entirely (Ex. 2005 (IPR2015-01527); Ex.
`
`2006 (IPR2015-01569); Ex. 2007 (IPR2015-01598); Ex. 2008
`
`(IPR2015-01633); Ex. 2009 (IPR2015-01673); Ex. 2010 (IPR2015-
`
`01683)); and
`
`3
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` One was instituted as to seven challenged claims, but denied
`
`institution as to the remaining ten challenged claims (Ex. 2011
`
`(IPR2015-01402); see also Ex. 1020)).1
`
`Now JM has brought a second round of IPRs against several of Knauf
`
`Insulation’s more recently issued patents. JM’s new IPR petitions merely repeat
`
`prior art and arguments that were considered and dismissed by both the examiners
`
`during prosecution and this Board in the prior IPRs. As JM has failed to present
`
`any new prior art or any meaningfully different arguments, the Board should
`
`exercise its discretion under 35 U.S.C. § 325(d) to deny institution. Furthermore,
`
`JM’s new round of IPR petitions suffers from many of the same deficiencies as
`
`their prior petitions, and the new IPR petitions should likewise be dismissed for
`
`failure to demonstrate a reasonable likelihood of prevailing as to any claim.
`
`II. THE OFFICE HAS ALREADY CONSIDERED, AND REJECTED,
`THE PRIOR ART AND ARGUMENTS ADVANCED IN JM’S
`PETITION
`
`Congress did not intend IPRs as a vehicle for petitioners to repeatedly rehash
`
`the same prior art and arguments already overcome by the patent owner. This
`
`intention is clear in the statute, which provides that, “[i]n determining whether to
`
`
`1 The IPR2015-01402 proceeding, including all appeals, concluded prior to the
`
`Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).
`
`4
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`institute or order [an IPR] proceeding . . . , the Director may take into account
`
`whether, and reject the petition or request because, the same or substantially the
`
`same prior art or arguments previously were presented to the Office.” 35 U.S.C.
`
`§ 325(d). This discretion is further codified in § 314(a), which speaks to the
`
`circumstances in which the Director “may” or “may not” institute an IPR (not
`
`“must” or “shall” institute). Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`
`2140 (2016) (acknowledging § 314(a) imposes “no mandate to institute review”).
`
`In fashioning the IPR framework, Congress recognized the importance of including
`
`these “procedural safeguards to prevent a challenger from using the process to
`
`harass patent owners.” SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341,
`
`1357 (Fed. Cir. 2016) (Newman, J., concurring in part, dissenting in part) (quoting
`
`from the Congressional Record).2
`
`The Board’s ultimate discretion regarding institution remains intact after the
`
`Supreme Court’s recent decision in SAS Institute Inc. v. Iancu, which accepted
`
`“that § 314(a) doesn’t require [the Director] to institute an inter partes review even
`
`after he finds the ‘reasonable likelihood’ threshold met with respect to one claim.”
`
`138 S. Ct. at 1356 (emphasis original). As Justice Ginsburg observed: under the
`
`2 Judge Newman’s construction of the IPR statute—the minority view at the
`
`Federal Circuit—was ultimately adopted by the Supreme Court majority in SAS
`
`Institute Inc. v. Iancu.
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`5
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`majority’s holding, the Board remains free to “simply deny a petition containing
`
`challenges having no ‘reasonable likelihood’ of success.” Id. at 1360 (Ginsburg,
`
`J., dissenting). Likewise, § 314(a), § 325(d), and the Supreme Court’s decision in
`
`SAS Institute explicitly permit the Board to deny any petition that contains one or
`
`more challenges based upon the same or substantially the same prior art or
`
`arguments presented in previous Office proceedings—even if the Board finds that
`
`the petition contains a meritorious challenge.
`
`JM’s Petition fails to raise a single piece of prior art that has not already
`
`been considered by the Office and found insufficient to reject the claims of the '464
`
`Patent. Furthermore, the Petition advances substantially the same arguments that
`
`JM put forward in its original series of IPR Petitions against related Knauf
`
`Insulation patents. The Board found these arguments lacking with regard to claims
`
`similar to those issued in the '464 Patent, and the examiner refused to adopt any of
`
`JM’s deficient arguments during prosecution of the '464 Patent. Knauf Insulation
`
`should not be forced to litigate these same prior art references and arguments yet
`
`again in yet another IPR.
`
`The present Petition advances two grounds based upon a total of four prior
`
`art references. JM’s Ground #1 asserts obviousness over U.S. Patent No.
`
`5,318,990 to Strauss (Ex. 1003, “Strauss”) in view of U.S. Patent Application No.
`
`6
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`2004/0038017 by Tutin et al. (Ex. 1004, “Tutin”) and further in view of U.S.
`
`Patent No. 3,513,001 to Worthington et al. (Ex. 1005, “Worthington”). JM’s
`
`Ground #2 asserts obviousness over Strauss in view of Tutin and further in view of
`
`U.S. Patent No. 2,965,504 to Gogek et al. (Ex. 1006, “Gogek”). During the
`
`prosecution of the '464 Patent, Knauf Insulation identified each of the Strauss,
`
`Tutin, Worthington, and Gogek references to the examiner in information
`
`disclosures statements. (Ex. 1002 (Part 1) at 190-191, 195, 213.) The examiner
`
`considered the disclosures of each of these references, as indicated by his dated
`
`signatures at the bottom of the information disclosure statement pages listing
`
`Strauss, Tutin, Worthington, and Gogek. (Id.)
`
`Knauf Insulation also submitted, and the examiner considered, copies of
`
`JM’s first round of IPR petitions and supporting evidence during prosecution of the
`
`'464 Patent. (See Ex. 1002 (Part 1) at 185-188.) In these IPR Petitions, JM and its
`
`expert, Dr. Hirsekorn, argued that the Gogek reference anticipated or rendered
`
`obvious the claims of several Knauf Insulation patents with similarities to the
`
`claims of the '464 Patent. (See, e.g., Ex. 2006 at 6-8; Ex. 2009 at 6-8; Ex. 2011 at
`
`3-4.) Additionally, Knauf Insulation provided the examiner with numerous filings
`
`from several reexaminations of related Knauf Insulation patents that extensively
`
`discussed the teachings of the Worthington reference, which were considered by
`
`7
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`the examiner. (Ex. 1002 (Part 1) at 186-187 (citing materials from reexaminations
`
`of U.S. Patent Nos. 7,772,347; 7,888,445; and 7,854,980).) After reviewing
`
`Strauss, Tutin, Worthington, and Gogek, as well as JM’s arguments that the
`
`invention should be unpatentable, the examiner found the claims allowable. (Ex.
`
`1002 (Part 1) at 11.)
`
`JM’s present Petition does not point to any evidence suggesting that the
`
`examiner misunderstood or overlooked any teachings of the Strauss, Tutin,
`
`Worthington, and Gogek references when he declined to reject the claims of the
`
`'464 Patent based upon that prior art. The examiner found the '464 Patent’s claims
`
`patentable over JM’s asserted prior art, and JM has provided no valid reason for
`
`the Board to revisit that decision or to reach a different result in this IPR.
`
`Furthermore, the Board has already considered—and rejected—arguments
`
`substantially the same as those advanced by JM in its present Petition. In
`
`particular, during JM’s first round of IPRs, the Board found no “reasonable
`
`likelihood” that any of Knauf Insulation’s claims in three related patents could be
`
`found obvious based upon JM’s proposed combination of Gogek with U.S. Patent
`
`8
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`IPR2018-00879 (Patent 9,926,464)
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`Publication No. 2007/0027283 to Swift (“Swift”).3 (See, e.g., Ex. 2006 at 14-18;
`
`Ex. 2009 at 14-17; Ex. 2011 at 12-14.)
`
`The Board’s institution decision in IPR2015-01402 is illustrative of those
`
`prior Board decisions. In that case, JM asserted that the subject matter of claims
`
`3–5, 7, 9, and 11–17 of U.S. Patent No. 8,114,210 (“the '210 Patent”) would have
`
`been obvious based upon the combined teachings of Swift and Gogek. The Board
`
`refused to institute this ground for two reasons: (1) JM’s failure to identify any
`
`“precise difference” between the individual prior art references and the claims, as
`
`required by Graham v. John Deere Co., 383 U.S. 1, 17 (1966), and (2) JM’s failure
`
`to set out “some articulated reasoning with rational underpinning to support the
`
`legal conclusion of obviousness,” as required by KSR Int’l Co. v. Teleflex Inc., 550
`
`U.S. 398, 418 (2007).4 (Ex. 2011 at 12-14.) Ultimately, the Board was not “able
`
`to discern a reason why one skilled in the art would have combined information
`
`described by Gogek and Swift, or if combined, why the combined teachings of
`
`
`3 This Swift application is not prior art to the '464 Patent by virtue of the '464
`
`Patent’s claim of priority to that application (among others). In fact, the '464
`
`Patent is a continuation of the Swift application cited in JM’s prior IPRs and has a
`
`nearly identical written description.
`
`4 As discussed further below, JM’s present Petition suffers from these same
`
`defects.
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`9
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`Gogek and Swift would have rendered obvious the subject matter of the claims
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`challenged.” (Id. at 14.)
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`In Ground #2 of the present Petition, JM advances essentially the same
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`arguments as in its prior, failed IPRs but substitutes Strauss and Tutin for Swift
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`(which JM must do because the Swift publication is not prior art to the '464
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`Patent). But relying on Strauss and Tutin as teaching the steps of making a thermal
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`or acoustical fiberglass insulation product, rather than relying on Swift for those
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`teachings, does not materially change or advance JM’s arguments. According to
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`JM, Strauss, Tutin, and Swift are all cumulative to one another, as they all
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`(allegedly) teach the same “‘conventional’ manufacturing steps.” (Paper 1 at 13,
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`15, 17 (arguing that the '464 Patent, which is a continuation of Swift, contains
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`nearly verbatim passages from Strauss).) The Board has held that adding a new
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`prior art reference to previously presented arguments does not escape § 325(d)
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`where that new reference is merely cumulative to the previously considered prior
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`art. Unified Patents, Inc., v. Berman, IPR2016-01571, Paper 10 at 9-12 (December
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`14, 2016) (informative).
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`In the prior IPRs, JM lacked a proper analysis as to why a person of ordinary
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`skill in the art purportedly would have combined the teachings of Gogek with a
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`“conventional” fiberglass manufacturing process and why those combined
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`teachings allegedly would have rendered obvious the subject matter of the claims
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`challenged. (See, e.g., Ex. 2011 at 12-14.) This Petition suffers from the same
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`fundamental flaw. JM’s attempt to substitute the teachings of Strauss and Tutin for
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`the teachings of the Swift publication (which teachings JM asserts to be the same)
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`does not address this issue or change the thrust of JM’s arguments from those
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`rejected during the earlier IPRs.
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`Similarly, with respect to Ground #1, JM merely replaces the Gogek
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`reference with the cumulative Worthington reference. JM’s Petition cites
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`Worthington as allegedly teaching or suggesting the exact same limitations of
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`claim 1 for which it cites Gogek: namely, limitations [1c], [1d], [1k], and [1l].
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`(Compare Paper 1 at 27-28, 31-33 with id. at 52-53, 54-56.) As noted above,
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`simply exchanging a previously used prior art reference for a new, but cumulative,
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`prior art reference does not materially change the argument for purposes of
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`§ 325(d). Unified Patents, IPR2016-01571, Paper 10 at 9-12. Nor does JM
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`present any unique argument as to why one skilled in the art would have combined
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`the teachings of Worthington with those of Strauss and Tutin beyond the
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`arguments presented with respect to Gogek. (Compare Paper 1 at 22-24 with id. at
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`49-50 (arguing for obviousness, as to each ground, based upon references
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`disclosing formaldehyde-free, thermoset binders).)
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`In summary, JM’s Petition relies solely on prior art that was already
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`considered by the examiner of the '464 Patent and arguments that are substantially
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`the same as arguments previously dismissed by the examiner and the Board. Re-
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`litigating these issues would be a waste of the Board’s resources and the parties’
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`time and money. As such, the Board should reject JM’s Petition because “the
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`same or substantially the same prior art or arguments previously were presented to
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`the Office.” 35 U.S.C. § 325(d). The multi-patent infringement jury trial between
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`Knauf Insulation and JM will proceed, with or without this IPR, and no meaningful
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`net efficiencies would be gained by institution.
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`III. JM HAS NOT SHOWN A REASONABLE LIKELIHOOD THAT
`IT WOULD PREVAIL IN PROVING THE OBVIOUSNESS OF
`ANY CHALLENGED CLAIM
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`A.
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`JM Does Not Point To Any Example Of Maillard-Based
`Binders For Fiberglass Insulation In The Prior Art
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`Throughout the Petition, JM repeatedly alleges that Maillard-based polymers
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`were “commonly known” to be suitable for binding fiberglass insulation. (See,
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`e.g., Paper 1 at 23-24.) Nevertheless, JM fails to provide a modicum of evidence
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`to support this allegation, other than its declarant’s similarly unsupported opinion
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`prepared in connection with this proceeding. In making its arguments, JM
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`frequently misrepresents the content of the prior art:
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`“[T]he use of such Maillard reactants as binder reactants was
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`well-known in the art, and described in detail in, e.g., the Worthington and
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`Gogek references.” (Paper 1 at 15.) Neither Worthington nor Gogek
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`mentions Maillard chemistry or its resulting products (melanoidins).
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`“It was commonly known in the art that Maillard reactions
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`produce water-insoluble polymers that would be suitable for binding
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`applications such as fiberglass insulation.” (Paper 1 at 23-24 (citing Ex.
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`1008 at ¶ 96); id. at 49-50 (citing Ex. 1008 at ¶ 200).) Neither JM nor Dr.
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`Hirsekorn point to any prior art teaching or even suggesting this alleged
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`“common knowledge.”
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`“Gogek teaches a thermoset binder as well through the
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`disclosure of Maillard reactants in a binder solution.” (Paper 1 at 49 (citing
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`Ex. 1006 at 2:25-27).) Gogek never mentions Maillard chemistry and
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`teaches incineration of the alleged “Maillard reactants”—not curing of those
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`reactants into a thermoset binder. (Ex. 2012 at 16:23 to 17:12.)
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`“These Maillard reaction products – nitrogen-containing
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`polymers called melanoidins – are what bind the glass fibers together, and
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`thus curing the binder generates an effective amount of Maillard reaction
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`products to attach the glass fibers of the mat together. (Paper 1 at 55 (citing
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`Ex. 1008 at ¶ 217); id. at 32 (citing Ex. 1008 at ¶ 113).) Neither
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`Worthington nor Gogek ever mentions any Maillard reaction, and JM has
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`provided no evidence that a Maillard reaction is necessarily present in
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`Worthington or Gogek. Moreover, neither Worthington nor Gogek ever
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`mentions glass fibers, and JM presents no evidence that the allegedly
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`inherent melanoidins of Worthington or Gogek would attach or bind the
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`glass fibers of Strauss and/or Tutin.
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` “The Maillard reactants in the binder disclosed in Gogek are a
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`sugar (carbohydrate reactant) and a chemical adjunct (amine).” (Paper 1 at
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`62 (citing Ex. 1008 at ¶ 260).) Gogek provides no teaching or suggestion
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`that its sugar and adjunct function as Maillard reactants, and JM has not
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`produced evidence to show this is necessarily the case.
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`JM’s characterizations of the prior art are plainly incorrect. None of the
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`Strauss, Tutin, Worthington, and Gogek references even hint at Maillard chemistry
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`or its resulting products (melanoidins). In fact, the Petition contradicts its own
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`argument that formaldehyde-free, Maillard-based binders were commonly known
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`by also arguing that, at the time of invention, there was “a continuing need for
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`identifying new formaldehyde-free, curable aqueous compositions suitable for use
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`as a binder for fiberglass.” (Paper 1 at 24 (citing Ex. 1004 at ¶ [0015]).) If
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`formaldehyde-free, Maillard-based binders for fiberglass were “commonly
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`known,” as JM posits, one would expect the prior art references to mention that
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`fact given their “continuing need” for formaldehyde-free fiberglass binders.
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`Moreover, the Hodge reference cited by JM suggests that Maillard chemistry
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`was poorly understood at the time of the invention. While JM argues, based on
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`Hodge, that “Maillard reactions, including the individual steps, products, and
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`byproducts of Maillard reactions, have been known in the art for over half a
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`century” (Paper 1 at 20 (emphasis added)), Hodge actually indicates the opposite.
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`Hodge describes the investigation into Maillard chemistry as being “in the first
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`stages” at the time of its publication. (Ex. 1007 at 13.) According to Hodge,
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`“[c]ontrol of browning to do man’s will is the ultimate goal of browning research,
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`but progress toward this goal [of controlling Maillard chemistry] can only be made
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`as the reaction mechanisms are better understood.” (Id. at 14.) None of the prior
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`art cited by JM suggests that the reaction mechanisms of Maillard chemistry were
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`well understood by the time of the invention, or that anyone had thought to attempt
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`to utilize Maillard chemistry to create a binder, let alone a fiberglass binder. JM
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`centers its argument on impermissible hindsight.
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`JM cannot solve these deficiencies of the prior art through the declaration of
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`its paid expert, Dr. Hirsekorn (Ex. 1008; “the Hirsekorn Declaration”). As with the
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`Petition, the Hirsekorn Declaration fails to identify any evidence that Maillard-
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`based binders were known for binding fiberglass. Dr. Hirsekorn’s conclusory
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`assertions that Maillard chemistry was well-known are entitled to little or no
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