Case IPR2022-00832
`Patent 9,145,532 B2
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EXTRACTIONTEK SALES LLC,
`Petitioner,
`
`v.
`
`GENE POOL TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`Case IPR2022-00832
`Patent 9,145,532 B2
`_______________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`Patent 9,145,532 B2
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EXTRACTIONTEK SALES LLC,
`Petitioner,
`
`v.
`
`GENE POOL TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`Case IPR2022-00832
`Patent 9,145,532 B2
`_______________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
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`IPR2022-00832
`Patent 9,145,532
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
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`I.
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`II. PHOSITA ......................................................................................................... 1
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`A. Dr. Miller does not qualify as a PHOSITA under PO’s Proposed Definition
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`3
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`B. Dr. Miller does not qualify as a PHOSITA under Petitioner’s Proposed
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`Definition .............................................................................................................. 5
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`III.
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`Claim Construction ....................................................................................... 6
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`A. Construction of “Predetermined Period of Time” ........................................ 7
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`B. Construction of “exposing the source material to the solvent for a
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`predetermined period of time to create an extract mixture having the solute in
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`solution with the [] solvent” and “communicating the extract mixture to [an/a
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`first] extract container” ......................................................................................... 9
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`IV.
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`Legal Standards Have Been Met ................................................................ 12
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`V. The Declaration Opinions of Petitioner’s Expert, Mr. Chess, Are Reliable and
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`Should Be Given Weight ........................................................................................ 13
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`VI.
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`All Claims Remain Unpatentable Over Petitioner’s Proposed Combination
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`Of Either Britt or Buese With Hebert. .................................................................... 14
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`IPR2022-00832
`Patent 9,145,532
`A. Both Hebert and Britt and Buese Disclose “Exposing … For A
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`Predetermined Period of Time” .......................................................................... 14
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`B. Petitioner Has Established Why and How a PHOSITA Would Combine
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`Either Britt or Buese with Hebert ....................................................................... 16
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`VII. Claims 1-13 and 17-18 Are Further Unpatentable Over Buese in View of
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`Hebert, Britt, Main, and Jones ................................................................................ 18
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`A. Petitioner Does Not Conflate Distinct Embodiments of Buese .................. 18
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`B. Buese Discloses a First and Second Extract Container .............................. 19
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`VIII. Claims 9-13 Are Further Unpatentable Over Buese In View Of Hebert,
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`Main, and Jones ...................................................................................................... 22
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`A. The Combined References Disclose A “Detachable Canister Interface” ... 22
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`B. The Combined References Disclose a “Detachable Canister Interface”
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`Configured to “Receive the Canister to Support the Canister” .......................... 23
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`IX.
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`Claims 15-16 are Further Unpatentable Over Britt in View Of Hebert,
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`Main, and Liebert ................................................................................................... 24
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`CERTIFICATE OF COMPLIANCE ...................................................................... 27
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`CERTIFICATE OF SERVICE ............................................................................... 28
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`IPR2022-00832
`Patent 9,145,532
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`LIST OF EXHIBITS
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`Exhibit 1001: U.S. Patent No. 9,145,532
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`Exhibit 1002: Declaration of Fritz Chess
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`Exhibit 1003: Prosecution History of the ‘532 Patent
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`Exhibit 1004: U.S. Patent Publication No. US 2006/0041154 to Britt
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`Exhibit 1005: U.S. Patent No. 9,242,189 to Buese et al.
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`Exhibit 1006: U.S. Patent No. 2,457,251 to Main et al.
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`Exhibit 1007: U.S. Patent No. 3,267,689 to Liebert
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`Exhibit 1008: U.S. Patent No. 5,074,332 to Jones
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`Exhibit 1009: U.S. Patent No. 5,516,923 to Hebert et al.
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`Exhibit 1010: U.S. Patent No. 6,821,413 to Alkhalidl
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`Exhibit 1011: U.S. Patent No. 6,551,642 to Trout
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`Exhibit 1012: U.S. Patent No. 5,281,732 to Franke
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`Exhibit 1013: U.S. Patent Publication No. US 2003/0196282 to Fyvie et al.
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`Exhibit 1014: Gene Pool Technologies, Inc. v. ANM, Inc., Case No. 1:21-cv-
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`01154-CL (D. Oregon), Complaint
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`IPR2022-00832
`Patent 9,145,532
`Exhibit 1015: Gene Pool Technologies, Inc. v. ANM, Inc., Case No. 1:21-cv-
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`01154-CL (D. Oregon), Order to Transfer
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`Exhibit 1016: Gene Pool Technologies, Inc. v. Coastal Harvest, LLC, Case No.
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`5:21-cv-01328-JWH-SHK (C.D. California), Complaint
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`Exhibit 1017: Gene Pool Technologies, Inc. v. Coastal Harvest, LLC, Case No.
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`5:21-cv-01328-JWH-SHK (C.D. California), Order Granting Stipulated Motion to
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`Consolidate Cases
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`Exhibit 1018: Boiling Point – Britannica
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`Exhibit 1019: Declaration of William Kellen in Support of Petitioner’s Motion
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`for Pro Hac Vice Admission of William Kellen
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`Exhibit 1020: Fritz Chess Testimony History
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`Exhibit 1021: Portions of Deposition Transcript of Dr. Gregory Miller
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`IPR2022-00832
`Patent 9,145,532
`I.
`Introduction
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`The Patent Owner Response (POR) contorts the challenged patent and
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`obfuscates the prior art.
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`II.
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`PHOSITA
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`The application for the ‘532 Patent was filed November 4, 2013. (See
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`Exhibit 1001). The Patent Owner Preliminary Response (POPR) did not dispute
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`the PHOSITA definition provided by the Petition. Because the “proposed level of
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`ordinary skill in the art is undisputed and consistent with the cited prior art,” the
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`Board adopted Petitioner’s proposed definition in their Institution Decision.
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`(POPR, Pages 8–9; ID, Page 13). Patent Owner (PO) now proposes a broadening
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`of the definition to include the bolded terms: “a bachelor’s degree in chemistry,
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`biology, mechanical engineering, chemical engineering, petroleum engineering, or
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`an equivalent field of physical science, life science, or engineering . . . .” (POR,
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`Pages 4–5; EX2008, ¶39–43). PO’s justification for expanding the definition of a
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`PHOSITA is that one inventor of the ‘532 Patent has a degree in Agricultural
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`Science and Sustainable Agriculture, a life sciences degree, and the other appear to
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`have chemistry degrees, and the unsupported statement that “proper support [is
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`found] in the education backgrounds of relevant practitioners, including the named
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`inventors of the patents and prior art.” (POR, Pages 4–5; EX2008, ¶42).
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`IPR2022-00832
`Patent 9,145,532
`Petitioner exposes its overly narrow interpretation of case law by relying on
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`the following: “[t]he ‘educational level of the inventor’ is relevant in determining
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`the level of skill in the art.” (POR, Footnote Page 4 citing Environmental Designs,
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`Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983)). But,
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`Environmental Designs reads much more broadly providing a list of factors that
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`may be considered in determining ordinary level of skill in the art, instructing that
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`“[n]ot all such factors may be present in every case, and one or more of these or
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`other factors may predominate in a particular case” which is relevant here.
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`(Environmental Designs at 696–7).
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`The experiences and innovations of one individual do not translate to the
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`wholesale inclusion of unrelated fields having little or no overlap with the art in
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`question. While Wasserman is a co-inventor on the ’532 patent, this is not cause
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`for the wholesale inclusion of others having similar background to the ranks of
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`“PHOSITA”.
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`Dr. Miller agreed that “someone with a strong chemistry degree or strong
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`science degree could be a PHOSITA without any experience in closed looped (sic)
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`extraction systems.” (Exhibit 1021, 39:21–40:1). But, possessing knowledge of
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`chemistry and science does not guarantee one has the skill level required to
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`implement or combine that knowledge.
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`2
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`Patent 9,145,532
`PO’s proposed definition motive is clear, if PO’s proposed modification to
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`the PHOSITA definition is denied, Dr. Miller fails to qualify as a PHOSITA based
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`on his education under section (1) of the definition. Dr. Miller’s CV claims he has
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`obtained a Ph.D. in geochemistry. (EX2008, Page 35). However, his doctoral level
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`degree is actually a “Ph.D. in earth and environmental sciences with dissertation in
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`geochemistry.” (Exhibit 1021, 44:8–15).
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`A. Dr. Miller does not qualify as a PHOSITA under PO’s Proposed
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`Definition
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`Dr. Miller lacks the requisite level of skill to testify from the perspective of a
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`PHOSITA under PO’s proposed definition. As set forth in Kyocera, “[t]o offer
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`expert testimony from the perspective of a skilled artisan in a patent case—like for
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`claim construction, validity, or infringement—a witness must at least have
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`ordinary skill in the art. Without that skill, the witness’ opinions are neither
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`relevant nor reliable.” (Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22
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`F.4th 1369, 1376-77 (Fed. Cir. 2022)). Here, as in Kyocera, while Dr. Miller has
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`advanced degrees in life sciences, he lacks the specific academic or industry
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`experience working with, designing, or studying methods of extracting solute from
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`a source material or similar devices.
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`Dr. Miller testified that between 1988–2015 he performed no organic butane
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`extraction, organic propane extraction, or CO2 organic material extraction.
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`(Exhibit 1021, 58:7–18). The sole organic closed-loop extraction performed by Dr.
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`Miller between 1988–2015 was a “Soxhlet-style extraction of organic material
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`using solvents, such as chloroform and methylene chloride.” (Id., 59:4–10). As
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`described by Dr. Miller, a “Soxhlet-style extraction uses heated solvent vapor
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`passing through something to be extracted, where that vapor is condensed, solvent
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`[is] returned back to the extraction and the oils removed – collected in a separate
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`vessel.” (Id., 59:11–16). The Soxhlet apparatus was devised in 1879 and is a
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`simple extraction apparatus and common teaching tool used in high school
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`chemistry classes. The operation of a Soxhlet apparatus is rudimentary and
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`provides insufficient basis in establishing one’s standing as a PHOSITA. Thus, Dr.
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`Miller would be unable to determine the level of skill in the art a PHOSITA would
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`possess and how they would view the prior art provided.
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`Dr. Miller’s testimony is insufficient to establish the state of the art in 2013,
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`but it tracks with PO’s use of impermissible hindsight to support its arguments. Per
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`MPEP 2145 X.A. — “[a]ny judgement on obviousness is in a sense necessarily a
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`reconstruction based on hindsight reasoning, but so long as it takes into account
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`only knowledge which was within the level of ordinary skill in the art at the time
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`the claimed invention was made and does not include knowledge gleaned only
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`from applicant’s disclosure, such a reconstruction is proper.” (In re McLaughlin
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`443 F.2d 1392, 1395 (CCPA 1971)). Dr. Miller’s testimony is simply a backwards
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`Patent 9,145,532
`projection of his own experiences which did not begin until two years following
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`the filing of the ‘532 Patent. To be clear, Dr. Miller cannot testify to the knowledge
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`of one skilled in the art at the time of the ‘532 Patent because as of 2013, Dr.
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`Miller had never performed organic extractions.
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`Should the Board adopt PO’s proposed definition of a PHOSITA, Petitioner
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`asserts Dr. Miller’s opinions should be given little or no weight. The processes
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`described during Dr. Miller’s cross-examination are not analogous to the extent to
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`those of the systems or methods described in the ‘532 Patent or the prior art.
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`Therefore, under PO’s proposed definition, Dr. Miller lacks specific extraction and
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`laboratory testing experience to achieve the requisite level of skill to testify from
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`the perspective of a PHOSITA.
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`B. Dr. Miller does not qualify as a PHOSITA under Petitioner’s
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`Proposed Definition
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`Under Petitioner’s proposed definition, Dr. Miller lacks the requisite level of
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`skill to testify from the perspective of a PHOSITA. As described above, Dr. Miller
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`does not qualify as a PHOSITA under section (1) of the definition. Further, Dr.
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`Miller does not qualify under section (2), which requires having at least four years
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`of industry experience working with, designing, or studying methods of extracting
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`solute from a source material or similar devices. Dr. Miller claims by 1992 he
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`qualified as a PHOSITA based on his experience ordering extractions of lab
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`samples. (EX2008, ¶10; Exhibit 1021, 72:9–74:14). Again, possessing knowledge
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`of general chemistry and science principals does not equate to the skill level
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`required to implement or combine the different technologies. There is no doubt that
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`Dr. Miller is highly educated and an expert in life sciences, but his experience and
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`expertise in closed loop extraction systems began only after 2015.
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`Therefore, if the Boards adopts Petitioner’s proposed definition of a
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`PHOSITA, Dr. Miller’s opinions should be given little or no weight because his
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`expertise does not align with the requisite level of skill to testify from the
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`perspective of a PHOSITA.
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`III. Claim Construction
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`None of the Petition, POPR, or Institution Decision identified any claim
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`terms which required construction. Now, to distinguish the ‘532 Patent claims from
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`the prior art, PO attempts to propose that “exposing” for a “predetermined period
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`of time” involves: (1) exposing source material with a volume of solvent for a
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`“predetermined period of time” in a sealed canister, and (2) that “exposing the
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`source material to the solvent for a predetermined period of time to create an
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`extract mixture having the solute in solution with the [] solvent” and (3)
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`“communicating the extract mixture to [an/a first] extract container” be construed
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`contrary to embodiments of the ‘532 Patent. The Board should reject PO’s
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`IPR2022-00832
`Patent 9,145,532
`proposed construction and its attempt to improperly import limitations that are
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`absent the disclosure of the ‘532 Patent.
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`A claim construction order has been issued in the co-pending litigation. That
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`order states, with regard to the ‘532 Patent:
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`• “Support” – construction of “bear all or part of the weight of.”
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`(EX3001, Page 3).
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`• “Detachable canister interface” – not governed by § 112(f); plain and
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`ordinary meaning. (Id.).
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`• “Predetermined period of time” – agreed upon by the Parties having
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`construction of “period of time determined in advance.” (Id., Page
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`11).
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`• “Coolant” – plain and ordinary meaning. (Id., Page 3).
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`A.
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`Construction of “Predetermined Period of Time”
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`PO proposes construction of “exposing” for a “predetermined period of
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`time” to involve exposing source material with a volume of solvent for a
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`predetermined period of time in a sealed canister. (POR, Page 6). This is a bald
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`attempt to improperly import limitations that are absent the disclosure of the ‘532
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`Patent, seemingly by magically invoking them.
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`Shy of time-traveling to 2013 and acting as their own lexicographer
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`explicitly defining the forementioned terms before filing the ‘532 Patent,
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`IPR2022-00832
`Patent 9,145,532
`“exposing” and “predetermined period of time” should continue to be given their
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`plain and ordinary meaning regardless of PO’s insistence. As PO points out, in its
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`Institution Decision, the Board preliminarily found that “there is no indication that
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`the claimed ‘predetermined period of time’ would require stopping the flow in a
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`continuous extraction method.” (Id., Page 6 citing ID at 33). Nowhere in the
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`specification, claims, prosecution history of the ‘532 Patent, nor in this record, is
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`there an indication that a minimum amount of time is necessary to meet the claim
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`limitation of “a predetermined period of time.” Further, PO and the other party in
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`the co-pending litigation agreed that “predetermined period of time” should be
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`construed as a “period of time determined in advance”, which could include a time
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`that is in perpetuity or instantaneous.
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`If one were to entertain PO’s proposed claim construction, the only
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`recitations of “sealing” any sort of container present in the disclosure of the ‘532
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`Patent is found in 16:21–29 and refers to the sealing of a solvent collection
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`container — not a sealed canister. Importantly, as described in the ‘532 disclosure,
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`the solvent collection containers contain only recaptured solvent, not a mixture of
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`solvent and solute. (EX1001, 2:3–11).
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`IPR2022-00832
`Patent 9,145,532
`B.
`Construction of “exposing the source material to the solvent for a
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`predetermined period of time to create an extract mixture having the
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`solute in solution with the [] solvent” and “communicating the extract
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`mixture to [an/a first] extract container”
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`PO proposes construction of “exposing the source material to the solvent for
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`a predetermined period of time to create an extract mixture having the solute in
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`solution with the [] solvent” and “communicating the extract mixture to [an/a first]
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`extract container” be “construed as distinct, sequential, and non-continuous steps”,
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`advancing a claim construction that would improperly import extraneous
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`limitations into the claims. (Id., Page 6).
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`1. The claimed invention should not be limited to preferred
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`embodiments or specific examples in the specification
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`The Federal Circuit “‘has repeatedly cautioned against limiting the claimed
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`invention to preferred embodiments or specific examples in the specification.’”
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`(33Across, Inc., v. LeftsnRights, Inc., IPR2018-01480, Paper 54 (P.T.A.B. Feb. 7,
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`2020), Page 13, citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346-47
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`(Fed. Cir. 2015). ‘[I]t is the claims, not the written description, which define the
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`scope of the patent right.’ Williamson at 1346).
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`In spite of the arguments presented by PO and Dr. Miller, the claim language
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`does not require control over when the extract mixture is communicated to the
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`Patent 9,145,532
`extract containers, nor does it require an “active rather than passive step.” (POR,
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`Pages 9–10; EX2008, ¶¶ 37–38; EX1001, 5:17–20, 5:32–39). PO’s proposed
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`construction and interpretation is inconsistent with the specification, which uses
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`the broad permissive term “may” when describing a “user may use the output
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`valves to direct the extract mixture contained in an associated canister to extract
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`container.” (Exhibit 1001, 5:37–39, emphasis added).
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`Further, the specification provides the canisters can be “in fluid
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`communication with solvent source container 120 and extract container 170 when
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`attached” and that “[b]y placing the canister in fluid communication with an
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`extract container, the canister is able to communicate created extract mixture to the
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`extraction container.” (Id., 12:26–39).
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`Dr. Miller misconstrues the construction by listing one example of fluid
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`communication beginning:“[w]hen an output valve is opened, the associated
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`canister is placed in fluid communication with extract mixture line.” (EX2008, ¶37
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`citing EX1001 5:32–34).
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`2. The method steps in each independent claim are not “distinct,
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`sequential, and non-continuous steps”
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`PO argues the method steps in each independent claim are “distinct,
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`sequential, and non-continuous steps.” (POR, Page 6). However, “[a] method claim
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`can also be construed to require that steps be performed in order where the claim
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`implicitly requires order, for example, if the language of a claimed step refers to
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`the completed results of the prior step.” (Kaneka Corp. v. Xiamen Kingdomway
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`Group Co., 790 F.3d 1298, 1306-07 (Fed. Cir. 2015)). While the independent
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`claims of the ‘532 Patent may implicitly include distinct, sequential, and non-
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`continuous steps, the independent claims fall short of explicitly requiring such
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`limitations or excluding continuous operation. The PTAB has found that “‘it is not
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`required that any one step be carried out separately or independently of any other
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`step,’ and it is not necessary that ‘the [prior] step has to be complete before the
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`[later] step begins.’” (33Across at 18, citing Kaneka at 1306–07). “When the
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`claims do not exclude a continuous process, the later step may be initiated as soon
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`as at least some product from the previous step forms, while previous steps are still
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`ongoing.” (Id. at 18–19, citing Kaneka at 1306–07). Like Kaneka, the claims in the
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`‘532 Patent do not exclude a continuous process or a process in which steps are
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`occurring simultaneously. Even the ‘532 Patent specification suggests that steps
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`may be simultaneous stating that “[i]n some examples, solvent may automatically
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`be collected and reintroduced … and reintroduction may occur simultaneously
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`with other steps of the disclosed methods.” (Exhibit 1001, 13:16–20).
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`Further, Dr. Miller stated “[e]xtraction is going to start instantaneous on
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`contact between a solvent and a solid. If the solvent is capable of dissolving
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`components of the solid into it as a solid, that reaction begins on contact.” (Exhibit
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`11
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`1021, 67:23–68:7). Although Dr. Miller imports language that a desirable product
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`must be created before the next “step” occurs, Dr. Miller does concede that a
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`solution is instantaneously created during the “exposing the source material to the
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`solvent” step. (Id., 119:24–121:15). Therefore, the next step could occur
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`instantaneously, as described in Kaneka, after some of the “product from the
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`previous step forms” when “exposing the source material to the solvent to create an
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`extract mixture having the solute in solution with the solvent” of the ‘532 Patent.
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`If one were to again entertain PO’s proposed claim construction, Dr. Miller
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`has conceded that a solution is created instantaneously as the source material is
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`exposed to a solvent. (Id., 120:20–23). Thus, per the testimony of PO’s expert, the
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`range of time necessary to create a solution which could be included in the range
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`encompassed by “a predetermined period of time” is any length of time from an
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`instant to perpetuity. Thus, even a continuous system touches and overlaps the
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`claimed range with sufficient specificity to support an obviousness rejection in
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`accordance with MPEP 2131.03.
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`IV. Legal Standards Have Been Met
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`Motivations to combine have been provided in the Petition. “The courts have
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`made clear that the teaching, suggestion, or motivation test is flexible and an
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`explicit suggestion to combine the prior art is not necessary.” (MPEP 2143 G).
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`“The motivation to combine may be implicit and may be found in the knowledge
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`of one of ordinary skill in the art, or, in some cases, from the nature of the problem
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`to be solved.” (Id. citing DyStar Textilfarben GmbH & Co. Deutschland KG v.
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`C.H. Patrick Co., 464 F.3d 1356, 1366 (Fed. Cir. 2006)).
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`V. The Declaration Opinions of Petitioner’s Expert, Mr. Chess, Are
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`Reliable and Should Be Given Weight
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`PO cross-examined Mr. Chess by presenting figures rather than discussing
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`the references as a whole. Opposing Counsel’s approach to questioning Mr. Chess
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`erroneously presented patent figures as being uniform, aligned with industry
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`standards and industry convention, and including the same full disclosures
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`captured within the written specification.
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`Counsel for PO must understand the disclosure of a patent is not distilled
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`into a few representative figures of certain embodiments. While figures are
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`required to provide representations of “every feature of the invention specified in
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`the claims” and should include “conventional features disclosed in the description
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`and claims” (MPEP 608.02(d)), there is no requirement or expectation that
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`drawings of a patent or patent application must include every permutation of
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`embodiments captured by a disclosure. Presentation of figures as embodying the
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`entirety of a patent’s disclosure provides only a myopic view of the entirety of the
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`disclosure, teachings, and permutations available for prior art within any given
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`reference.
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`When presenting a PHOSITA with a number of figures from multiple
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`references, each with a separate drawing convention and without further context
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`beyond the drawings, it is understandable that confusion arises. This was clearly
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`Opposing Counsel’s strategy. The deliberate injection of confusion into the
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`questioning of Mr. Chess produced understandably confusing testimony, which on
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`its face, appears to support PO’s arguments. PO highlights certain comments made
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`by Mr. Chess in Deposition which identify inefficiencies in the provided prior art
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`references. Importantly, in accordance with MPEP 2143 I.G., these inefficiencies
`
`provide a PHOSITA motivation to combine the presented prior art references more
`
`efficiently. However, PO ignores this expertise and testimony, which provides a
`
`clear and concise explanation which highlights not only the similarities of the prior
`
`art, but also the differences and why a PHOSITA would combine the provided
`
`prior art.
`
`VI. All Claims Remain Unpatentable Over Petitioner’s Proposed
`
`Combination Of Either Britt or Buese With Hebert.
`
`A.
`
`Both Hebert and Britt and Buese Disclose “Exposing … For A
`
`Predetermined Period of Time”
`
`As previously discussed in Section III.B, PO continues to advance a claim
`
`construction that is contrary to embodiments of the ‘532 Patent and improperly
`
`imports extraneous limitations into the claims by, inter alia, stating the terms
`
`14
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`IPR2022-00832
`Patent 9,145,532
`should be “construed as distinct, sequential, and non-continuous steps”. (POR,
`
`Pages 20–21). The ‘532 Patent does not exclude a continuous process or a process
`
`in which steps are occurring simultaneously. The claim language does not import
`
`particular limitations on the method of “exposing the source material to the solvent
`
`for a predetermined period of time to create an extract mixture” or
`
`“communicating the extract mixture.” (POR, Pages 20–21; Exhibit 1001, Claims 1,
`
`9, 14). Despite assertions to the contrary by PO, the claim language of the ‘532
`
`Patent lacks limitations which could be interpreted as explicitly requiring non-
`
`continuous steps or excluding continuous operation between identified processes.
`
`PO improperly argues that although Hebert teaches “during liquid filling of
`
`reactor 2 in order to cause the liquid solvent to dissolve the rice oil from the rice
`
`bran in reactor 2 at a predetermined rate and time,” Hebert does not disclose
`
`“limiting the time of exposure for a ‘predetermined period of time.’” (POR, Page
`
`21 citing Exhibit 1009, 4:40–45). Once again, PO erroneously imports improper
`
`limitations and narrowly construes the prior art. Hebert clearly discloses exposing
`
`the source material to solvent for a predetermined period of time at 4:40–45,
`
`further supported by the claims which recite “allowing the liquid solvent to contact
`
`the rice bran for a time sufficient to dissolve a substantial portion of the rice bran
`
`oil.” The construction of Hebert is consistent with co-pending litigation claim
`
`15
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`IPR2022-00832
`Patent 9,145,532
`construction of “predetermined period of time” meaning a “period of time
`
`determined in advance.”
`
`Further, Hebert is provided in Claims 1, 9, and 14 to cure the deficiency of
`
`the exact claim element within Britt and Buese, which disclose exposing the source
`
`material to a solvent. Hebert provides a rationale for a PHOSITA to expose the
`
`source material to the solvent for a predetermined period of time. (Pet., Pages 14,
`
`25–26, 42).
`
`Finally, PO argues neither reference “teaches nor recognizes the advantages
`
`of performing these steps separately to control the time of exposure in forming an
`
`extract mixture.” (POR, Page 23 citing EX2008 at ¶48). Again, as discussed in
`
`Section III.B, the ‘532 Patent does not exclude a continuous process or a process in
`
`which steps are occurring simultaneously. Further, the Federal Circuit has held that
`
`“a challenger need not prove that there was a known problem with the prior art in
`
`order to demonstrate that there was a motivation to combine prior art references.”
`
`(Arctic Cat Inc. v. Polaris Indus., Inc., 795 F. App’x 827, 833 (Fed. Cir. 2019).
`
`B.
`
`Petitioner Has Established Why and How a PHOSITA Would
`
`Combine Either Britt or Buese with Hebert
`
`Ample evidence and argument exists in the Petition to assuage PO’s
`
`concerns of “how” and “why” the prior art references would be combined. The
`
`prior art references exist in the same area of technology, wherein the combination
`
`16
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`IPR2022-00832
`Patent 9,145,532
`of the references would result in a more efficient product and process, capable of
`
`running continuously, and allows for ongoing maintenance and replacement of
`
`components and elements without requiring down-time.
`
`A motivation exists to combine Britt, Buese, and Hebert to inform possible
`
`improvements or alternative approaches to perform the same functions within the
`
`same general structure. (Pet., Page 20). A PHOSITA would have seen advantages
`
`to applying the techniques of the secondary references to improve the oil extraction
`
`systems of the primary references, which KSR teaches is a sufficient reason to
`
`combine teachings from more than one prior art reference. (See KSR Int’l Co. v.
`
`Telefex Inc., 550 U.S. 398, 417 (2007) (“[A] court must ask whether the
`
`improvement is more than the predictable use of prior art elements according to
`
`their established functions.”).
`
`As evidenced by candid statements of Mr. Chess such as, “I think they’re all
`
`knuckleheads and didn’t know what they were doing, to be frank,” the prior art
`
`references relied upon by Petitioner are iterative steps in the evolution of oil
`
`extraction, but serve as prior art nonetheless. (EX2009, 185:4–6). Thus, even if PO
`
`is correct that some of the prior art references would be inoperative, they still serve
`
`as prior art for all they teach for the purposes of determining obviousness. (MPEP
`
`2121.01 II).
`
`17
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`IPR2022-00832
`Patent 9,145,532
`During cross-examination by PO, the prior art was readily identified by Mr.
`
`Chess, a PHOSITA. Mr. Chess indicated the prior art references surrounded
`
`systems with similar components, processes, and operative purposes, and could
`
`benefit from combination to create a more desirable product through more
`
`thoughtful assembly and piping to create more efficiency. (EX2009, 113:6–115:8).
`
`Finally, PO continues to reiterate arguments which improperly import
`
`limitations regarding continuous versus batch operation. These limitations do not
`
`exist in the claims or the ‘532 Patent specification, as discussed in Section III.B;
`
`the ‘532 Patent does not exclude a continuous process or a process in which steps
`
`are occurring simultaneously. More egregiously, PO improperly assumes that
`
`Petitioner’s combination of Britt and Buese include PO’s improperly imported
`
`claim limitations as bases for arguments to assert against a finding of obviousness.
`
`To be clear, Petitioner asserts the combination of Britt and Buese result in the
`
`invention in the ‘532 patent as claimed. (Pet., Pages 20–21).
`
`VII. Claims 1-13 and 17-18 Are Further Unpatentable Over Buese in View of
`
`Hebert, Britt, Main, and Jones
`
`A.
`
`Petitioner Does Not Conflate Distinct Embodiments of Buese
`
`PO has identified references of Buese to regard separate embodiments as
`
`illustrated by Figures 1 and 2. (POR, Pages 27–28). While these figures surround
`
`multiple embodiments of the teachings of Buese, the teachings remain relevant and
`
`18
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`IPR2022-00832
`Patent 9,145,532
`combinable. Figure 1 surrounds an extraction system particularly suited for
`
`extraction solvents that are liquids at standard temperature and pressure (STP).
`
`(Exhibit 1005, 1:48–51). Figure 2 surrounds an extraction system particularly
`
`suited for extraction of solvents that are gasses at STP. (Id., 1:52–56). Importantly,
`
`each extraction system embodiment operates with th
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