Trials@uspto.gov
`571-272-7822
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`Paper No. 42
`Date: June 16, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOLVAY USA INC.,
`Petitioner,
`
`v.
`
`WORLDSOURCE ENTERPRISES, LLC, ECO AGRO RESOURCES LLC,
`and ECO WORLD GROUP LLC,
`Patent Owners.
`____________
`
`PGR2019-00046
`Patent 10,221,108 B2
`____________
`
`Record of Oral Hearing
`Held: May 14, 2020
`____________
`
`
`
`
`Before KRISTINA M. KALAN, JEFFREY W. ABRAHAM, and
`SHELDON M. McGEE, Administrative Patent Judges.
`
`
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`571-272-7822
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`Paper No. 42
`Date: June 16, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOLVAY USA INC.,
`Petitioner,
`
`v.
`
`WORLDSOURCE ENTERPRISES, LLC, ECO AGRO RESOURCES LLC,
`and ECO WORLD GROUP LLC,
`Patent Owners.
`____________
`
`PGR2019-00046
`Patent 10,221,108 B2
`____________
`
`Record of Oral Hearing
`Held: May 14, 2020
`____________
`
`
`
`
`Before KRISTINA M. KALAN, JEFFREY W. ABRAHAM, and
`SHELDON M. McGEE, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`PGR2019-00046
`Patent 10,221,108 B2
`
`
`APPEARANCES (ON LINE):
`
`ON BEHALF OF THE PETITIONER:
`
`
`MICHAEL FRANZINGER, ESQ.
`CHING-LEE FUKUDA, ESQ.
`JASON GREENHUT, ESQ.
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, DC 20005
`(202) 736-8000
`
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`T. BENJAMIN SCHROEDER, ESQ.
`Ben Schroeder Law, PLLC
`301 North Main Street
`Suite 2405
`Winston-Salem, NC 27101
`
`DAVID WILKERSON, ESQ.
`The Van Winkle Law Firm
`11 N Market Street
`Asheville, NC 28801
`
`
`
`
`The above-entitled matter came on for hearing on Thursday, May 14,
`
`2020, commencing at 1:00 p.m., via online video teleconference.
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`PGR2019-00046
`Patent 10,221,108 B2
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`P R O C E E D I N G S
`- - - - -
`JUDGE MCGEE: Good afternoon. This is the oral argument for
`PGR2019-00046 challenging U.S. Patent 10,221,108. I'm Judge McGee and
`I also have Judges Kalan and Abraham appearing with me in this
`proceeding. The parties will each have 60 minutes total to argue their cases.
`Petitioner will begin and may reserve some rebuttal time, but no more than
`half of the --
`(Audio cut.)
`THE REPORTER: I can't hear you.
`JUDGE MCGEE: Owner will respond to Petitioner's arguments. I'm
`sorry?
`THE REPORTER: You're --
`JUDGE MCGEE: You're speaking?
`THE REPORTER: This is Julie Souza, the court reporter. You're
`breaking up a little bit.
`JUDGE MCGEE: Okay. Let me converse with our technology team.
`Hold on, please.
`THE REPORTER: Sure.
`JUDGE MCGEE: Okay. Can everyone hear me now?
`THE REPORTER: I can hear you fine so far.
`UNIDENTIFIED SPEAKER: We can hear you.
`JUDGE MCGEE: Okay. Great. So I apologize for that. So I believe
`I cut out around the -- at the point where I tell each party that you have 60
`minutes each. So I'll start there. Each party will have 60 minutes total time
`to argue their cases. Petitioner will begin and will reserve -- may reserve
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`Patent 10,221,108 B2
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`some rebuttal time but no more than half of their total time. Then Patent
`Owner will have a time to respond to Petitioner's arguments. And Patent
`Owner's counsel may also reserve surrebuttal time up to half of their total
`argument time. So our goal today is to make sure that the parties have an
`opportunity to be heard. So if we experience any more technical difficulties
`like we just did, please let us know any way you can. And we'll make
`appropriate accommodations for those connection issues.
`I do have a note here for Patent Owner's counsel before we begin.
`Petitioner has objected to a number of the demonstratives that were filed as
`containing improper new arguments not previously presented in the briefs.
`And as you may know, our rules confine oral arguments to issues raised in a
`brief. So for now, we're going to reserve judgment on those objections. But
`please be prepared, Patent Owner's counsel, to affirmatively -- affirmatively
`point to specific pages of the briefs for these objected-to slides. Lastly, for
`both parties, I would like you to know that we're not going to entertain
`speaking objections during the other side's argument. If you have a speaking
`objection that you'd like to make or an objection of any kind, please make it
`during your allotted argument time.
`I'm going to maintain a clock for the total argument time, and I will
`inform the parties when they have about five minutes remaining. So I'd like
`to get started here with appearances for both sides. Who do we have for
`Petitioner today?
`MR. FRANZINGER: Good afternoon, Your Honor. This is Mike
`Franzinger from Sidley Austin on behalf of Petitioner Solvay U.S.A.,
`Incorporated. With me on the call is lead counsel Ching-Lee Fukuda and
`back-up counsel Jason Greenhut. Mr. Greenhut and I will be doing the
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`argument.
`JUDGE MCGEE: Great. Thank you, Petitioner. For Patent Owner?
`MR. SCHROEDER: Yes. This is Ben Schroeder. And I represent
`Patent Owner. I'm here with David Wilkerson who will actually be
`presenting the motion that is -- at the beginning, the hearing request,
`actually.
`JUDGE MCGEE: Okay. Thank you, Mr. Schroeder. Petitioner,
`you're going to begin. Would you like to reserve some rebuttal time today?
`MR. FRANZINGER: Yes, Your Honor. We'd like to reserve 20
`minutes for rebuttal.
`JUDGE MCGEE: Okay. Great. Thank you. So I'm going to start my
`clock here. You may begin your arguments when you're ready. So that
`would be -- I will give you a 5-minute warning after 35 minutes. Does that
`sound right?
`MR. FRANZINGER: That sounds fine. Thank you.
`JUDGE MCGEE: Okay. Thank you, counsel. You may begin when
`ready.
`MR. FRANZINGER: Okay. Thank you, Your Honors. The Board
`(indiscernible) all the key issues in this case in its Institution decision, and
`the operative facts haven't changed since then. Those facts are as follows.
`All the hard work to discover and implement the active ingredients, NBPT
`as a urease inhibitor, had already been done well before the filing of this
`patent. And that's not disputed. The only alleged advance of the '108 Patent
`over the Kolc and Iannotta references that are involved in Grounds 1 and 2 is
`swapping in a different solvent, dimethyl sulfoxide, or DMSO. But DMSO
`is the preeminent dipolar aprotic organic solvent from the toxicity
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`application. DMSO was known in agriculture, specifically, and even called
`out as lower toxicity substitute for NB -- or NMP, which was used in the
`(indiscernible). DMSO was known to dissolve NBPT under the common
`chemistry principle that it dissolves (indiscernible). If you're a person of
`ordinary skill in the art trying to solve the problem that your solvent for
`NBPT is too toxic and you want to replace it with something that still works
`but is less toxic, DMSO is where you would go.
`If you look at Slide 2 in our presentation, this is just a quick list of the
`topics I plan to cover today subject to the Board's questioning and interest
`and time. This includes the background of Claim 1 which captures all the
`key issues that are in dispute. None of the limitations that are added by the
`other claims are included here. We do a recap of the existing prior art and
`each of the grounds on which trial has been instituted. And then my
`colleague Jason Greenhut will present argument on secondary considerations
`of non-obviousness.
`In the course of covering these topics, we will address what we
`understand to be the main issues that are still in dispute. Broadly, those are
`how finely to subdivide the prior art. Patent Owner argues we're splitting it
`into really small silos and arguing that a person of ordinary skills would not
`have combined anything from one silo to another. But, in fact, the prior art
`references that are at issue here are all really close to each other. They're not
`just in the agrochemical field. They're all dealing with the same fertilizer.
`They're all dealing with the same urease inhibitor for the fertilizer. The
`overlap between is very extensive and even remains true if one adopts Patent
`Owner's very narrow and incorrect reading of the CN '400 reference which
`Patent Owner's expert doesn't even fully agree with.
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`Another issue in dispute is whether any references teach away from
`substituting DMSO, and we submit they do not. One reference disclosed in
`the large genus of alternative solvent combinations does not matter because
`it's (indiscernible). Another reference stating in passing (indiscernible) for
`volatile solvents also does not matter, especially when it expressly discloses
`solvents with nearly the same boiling point as DMSO. And finally, the issue
`of whether any unexpected results might've overcome the prima facie case
`of obviousness the Petitioner has set forth. They do not because those
`results are not unexpected. The record does not contain any
`contemporaneous evidence of what was expected about existing products
`with regard to the properties that Patent Owner presents. The
`contemporaneous evidence instead shows that DMSO was expected to be an
`effective solvent and able to substitute for NMP.
`Turning to Slide 4 to recap the background here, urea is an important
`chemical for delivering nitrogen, which is a critical nutrient for plants. Slide
`5 shows the disclosure that bacteria in soil break down urea by using the
`enzyme urease. This breakdown is actually a good thing. The urea needs to
`be broken down into ammonium ion and nitrates for plants to pick up the
`nitrogen. But as you can see on Slide 6, while the breakdown of urea is a
`necessary step, it happens too fast for the nitrogen to be used by the plant.
`So you want to slow it down so that you don't have to waste nitrogen. And
`so that, as shown on Slide 7, is where urease inhibitors come from. Kolc,
`one of the references that's at issue in (indiscernible), disclosed the use of n-
`n-butyl thiosphosphoric triamide, or NBPT, as the urease inhibitor back in
`1984. And for NBPT to be effective, you need to get it near the urea, as
`noted on Slide 8. Typically, you do that by having it in the solvent so
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`(indiscernible). This is all the admitted non-controversial background of the
`'108 Patent.
`So skipping up to Slide 12, the '108 Patent's background admits that
`the prior art organic solvents in general are better than inorganic solvents
`because NBPT hydrolyzes in water. So water's (indiscernible). It describes
`the series of references in prior art that use various solvents for NBPT in
`Grounds 2 and 3 of the patent. It includes examples such as NMP, which is
`just another dipolar aprotic organic solvent. And Slide 14, this brings us to
`the solvent that's recited in the '108 patent claim, DMSO. This solvent has
`been known for quite some time.
`Now, the '108 patent tested as a replacement for NMP, and so it was
`known since at least the '60s not just in organic synthesis for
`pharmaceuticals but even for agricultural uses. So already by 1969, a plant
`scientist named Bernard Smael (phonetic) had published an article on using
`DMSO as an agricultural solvent. You can see that at the top of Slide 14.
`Bottom of Slide 14, you see quotes from the 1985 article that is actually in
`Patent Owner's exhibit that -- in Patent Owner's exhibits that also
`corroborates the use of DMSO in agriculture.
`And the knowledge that DMSO works as a solvent comes from basic
`chemistry. As you see in Slide 15, everyone in chemistry learns that like
`dissolves like. So dipolar solvents generally dissolve dipolar solutes. And
`that's illustrated at the top. And at the bottom, you can see that when it
`comes to dipolar aprotic solvents, DMSO is (indiscernible). Slide 16 shows
`evidence that DMSO was well known to dissolve NBPT. Patent Owner's
`claim that this point is not established cannot be squared with the evidence.
`Beyond the basic point of like dissolves like, our petition cited numerous
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`references stating explicitly that DMSO dissolves NBPT. We've got two of
`the references that are in the instituted grounds shown on Slide 16 plus three
`more, the Engel, Santa Cruz Biotech and Huttenloch sources that we cited.
`And in light of these disclosures, a person of ordinary skill wasn't going to
`be surprised in 2012 that DMSO dissolves NBPT.
`Now, Patent Owner's counter argument that there's evidence that it is
`hard to make NBPT go into a solution with DMSO, it's only really just based
`on one declaration by one of their experts Mr. Rayborn (indiscernible) on
`behalf of the Patent Owners during (indiscernible). And this declaration
`does not show that Solvay had difficulties dissolving NBPT in DMSO. It
`shows that Mr. Rayborn allegedly had difficulty when he tried to make a
`composition that he believes is disclosed in one of Solvay's patent
`applications. So in the same declaration, he actually says he can't figure out
`the parameters used for dissolving, paragraphs 12 through 15 of the
`declaration. So presumably, that's the problem right there, not that Solvay
`was having problems making it dissolve. In any basis -- in any event, there's
`no basis for saying Solvay was struggling with the technology of making an
`NBPT-DMSO solution.
`On Slide 17, going back to what the patent acknowledges as the prior
`art. NMP, it was an established solvent for NBPT. But the patent points out
`that a concern had developed among regulatory agencies about the toxicity
`level of NMP.
`Slide 18 is an important one. It shows that DMSO was already
`recognized by 2009 as a substitute for (indiscernible) solvents in agricultural
`formulations including NMP, specifically. Patent Owner's expert, during his
`deposition when he was shown this document, agreed that it suggests DMSO
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`would be a good candidate for solving the problem of toxicity of NMP. And
`that's modification. That accounts for the difference between prior art and
`Claim 1.
`So next, I'll turn to the individual grounds that show the obviousness
`of that modification. Slide 20 is just a summary of priority dates. Iannotta
`reference, the benefit of its provisional filing date as we set forth in our
`papers. Nobody's challenged for qualification of Iannotta or CN '400 as
`prior art. In Slide 21, basic non-controversial point, Iannotta is about using
`NBPT as a urease inhibitive.
`And as shown on Slide 22, the first claim limitation in the body of
`Claim 1, urea is clearly disclosed and isn't disputed. Slide 23 just shows
`their expert agreeing with that fact. Slide 24 shows a liquid solution
`comprised of the urease inhibitor. That's also not disputed. Iannotta
`discloses the urease inhibitor (indiscernible) solution. It prominently
`discloses NBPT in the summary of the invention as a candidate urease
`inhibitor. Slide 25 shows -- these points are, again, not disputed by Patent
`Owner's expert.
`Under Slide 26, I want to discuss the composition percentage ranges.
`So the solute in Iannotta, the n-butyl thiophosphoric triamide such as NBPT
`can be 15 to 35 percent of the solution which is in the claimed range of the
`'108 Patent. It's really the heart of the range. Iannotta disclosed a solvent
`percentage here overlapping the patent's 65 to 95 percent range. Our
`petition at pages 33 through 34 cites the disclosures of the solvent
`percentages which get well over 55 percent, up to 75 percent. And that
`overlap is good enough for (indiscernible). And Patent Owner hasn't raised
`any evidence that the claimed range is particularly special to rebut that. But
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`even though we don't need to show that the whole range is covered -- in fact,
`it is actually covered by Iannotta because the solvent in Iannotta can be used
`in combination. We just disclosed that. They can get up to the rest of the
`range of 75 percent (indiscernible). And Slide 27, again, Patent Owner's
`expert agreed that these limitations are found in the Iannotta. So that means
`it's with the one modification that is needed to go from Iannotta to Claim 1,
`the identity of the aprotic solvent is dimethyl sulfoxide.
`Here, I want to pause for a minute to address something that Patent
`Owner emphasized repeatedly in his papers which is that Iannotta, if you
`multiply it out, discloses some extreme high number of solvent
`combinations. Two things about that. The disclosure's many alternatives
`does not amount to a teaching away. It's simply alternative. It's not
`discouragement to use a certain chemical. And second, although Patent
`Owner cites genus-species law on this issue, the disclosure of the large
`genus in Iannotta doesn't matter because the species is not coming from
`Iannotta. The species DMSO is coming from the different reference, the CN
`'400 reference. So --
`JUDGE KALAN: Counsel, can you hear me? I have a --
`MR. FRANZINGER: I can.
`JUDGE KALAN: -- question. Going back to Slide 22 where we're
`looking at Claim 1 and the composition comprising urea and then a liquid
`solution. Does it give Patent Owner's argument any more traction if the
`fertilizer -- if the urea is in liquid form as opposed to solid form or are all
`your arguments the same regardless of the form that the urea is in?
`MR. FRANZINGER: Our arguments are the same whether the urea is
`in liquid or solid form. The patent claim here is generic to either form of
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`urea. It's just that urea is with a liquid solution that's comprised of the urease
`inhibitor solvent. So the urea does not have to be in either solid or a liquid.
`JUDGE KALAN: Now, if it's in liquid form and it's immiscible with
`the liquid solution, is that still a composition? Are you saying that a
`composition is going to be a composition regardless of the form that the urea
`or the liquid solution -- that the urea takes?
`MR. FRANZINGER: Yes. It would still be a composition as long as
`it's together. So if the urea is solid and it gets coated with the liquid
`solution, if the urea is broken up into tiny pieces and is expended in the
`liquid solution, or even if the urea, I suppose, is even dissolved in the
`solution, I think that any of those would constitute the composition.
`JUDGE KALAN: All right. Thank you.
`MR. FRANZINGER: So turning to Slide 29, why would a person of
`ordinary skill modify Iannotta to use DMSO as a solvent? In this, we cite
`the CN '400 reference, and we've cited this particular reference among the
`many that we identified describing DMSO because it has so many features
`in common with the primary references. Not just another chemical patent,
`not just another agrochemical patent even, it's another patent specifically
`about pairing urease inhibitors with urea. And if we jump up to Slide 36, we
`can see this, Iannotta's discussion of urea-based urease inhibitor fertilizer
`compositions and CN '400 describing the coated urea fertilizer,
`(indiscernible), and urease inhibitor. And it goes on to mention on Slide 37
`NBPT specifically as the urease inhibitor, is mentioned in both references.
`
`So turning to Slide 34, you can see it basically illustrated just how
`analogous the CN '400 reference and the Iannotta reference are. We only
`need to rely on CN '400. So what's missing from Iannotta, mainly DMSO.
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`But the extensive overlap between our references, including several claim
`limitations, shows how analogous they are.
`Let's go to Slide 31 now. And here you can see some of the
`disclosures of DMSO in the CN '400 reference. Now, let me stop again here
`and address one of the disputes that's come up. Patent Owner wants to call
`CN '400 and Iannotta separate fields of art because CN '400 is supposedly a
`suspension only and not a solution. As the court found in its Institution
`Decision, this is an instance of Patent Owner really attacking just one
`reference without addressing the combination truly at issue. And those
`quotes are on Slide 39 from the Institution Decision. CN '400 provides
`disclosure of DMSO as the relevant desirable organic solvent to use in a
`urease inhibitor application. So whether (indiscernible) instead of solution
`of CN '400 is immaterial and certainly, our description of it as analogous art
`wasn't contingent on DMSO dissolving NBPT.
`But even if that difference did matter, the CN '400 disclosure
`absolutely does not support Patent Owner's reading that NBPT stayed in
`suspension and doesn't dissolve at all. If you dissolve the urease inhibitor
`and a binder into suspension, you're still dissolving the urease inhibitor.
`That's the language of the reference. There was a suspension there because
`other things are suspended in it, such as perhaps the binder, but it does say
`dissolving the NBPT into it.
`Patent Owner's surreply also repeatedly asserts that CN '400 does not
`ever disclose dissolved NBPT at all. And this is plainly incorrect even if
`you take Patent Owner's reading of Claim 1. So for example, in paragraph
`32 of CN '400, it says, quote, "A mixed solution consisting of the urease
`inhibitor NBPT and/or the nitrification inhibitor TCP, the co-palmer of
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`acrylic resin and ethyl cellulose in the organic solvent is evenly coated onto
`the surface of urea granules to form a smooth and uniform coating layer."
`So then you have a mixed solution of NBPT and the organic solvent, which
`is (indiscernible) DMSO, and nothing about a suspension at all. Moreover,
`Patent Owner's expert Dr. Theyson admitted that in the scenario, described
`generally in CN '400 using DMSO as the solvent, NBPT would go into
`solution, and you can see that on Slide 33 of our demonstratives.
`So I'm going to turn to Ground 2 now, the Kolc reference based
`ground. And Slide 41 will introduce that reference and show that Kolc was
`around for a long time going way back to 1984. So like Iannotta, Kolc
`discloses having the NBPT in a liquid carrier such as an organic solvent.
`Slide 42. Discloses urea in Slide 43. Patent Owner has argued that Kolc
`doesn't disclose urea and dissolved NBPT together, but it actually does
`disclose that. So Patent Owner was focused on only one of the trio of
`embodiments that are disclosed together in Kolc. And those -- Patent Owner
`was focused on the one where the NBPT carrying solution, if it would be
`dispersed, and maybe the solvent evaporates before the urea is distributed if
`you don't have the combination of all the elements. Well, what that passage
`in Kolc says, and this is described thoroughly in our reply, is that you can do
`it in any order. You can put the dissolved NBPT on first and put the urea on
`it, you can put the urea on first and put the dissolved NBPT on it, or you can
`put them on both at the same time. And so in either of the second scenario
`or the third scenario, you will definitely have the dissolved NBPT in the
`solvent together with the urea all at once.
`Patent Owner also argued that the Kolc reference required a highly
`volatile solvent, but that's also incorrect. It was simply a very briefly stated
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`preference in Kolc, clearly not a requirement based on the rest of Kolc. As
`discussed on pages 11 and 12 of our reply brief, Kolc discloses solvents that
`are quite close to DMSO and their boiling points really just a few degrees
`lower. So if those were good enough for Kolc, then DMSO is clearly
`combatable with it the same way.
`Turning to Slide 46, Kolc discloses composition ranges that overlap
`with those of Claim 1 in a similar situation with Iannotta. And as Slide 47
`illustrates, Kolc has everything except the identity of the solvent in the
`fertilizer composition. And really, Kolc even has a pointer in that direction
`as it uses DMSO explicitly for a nuclear magnetic resonance test. As you
`pointed out at our briefing, that at least adds to the motivation (indiscernible)
`Kolc disclosure with DMSO.
`And then, again, Slide 48 is just a repeat of DMSO disclosures and
`CN '400. And then Slide 49, just as with Iannotta and CN '400, Kolc and
`CN '400 have extensive overlap including through multiple claim
`limitations. Kolc and CN '400 are in very closely aligned fields of endeavor.
`They both described urea inhibited fertilizer compositions as you can see
`from the quotes on Slide 51. Slide 52, they both use NBPT as the urease.
`And Slide 53, they both address urease inhibitors in solvent systems.
`Really, Patent Owner's argument, these references are not analogous.
`(Indiscernible) really extreme position as to how analogous two references
`must be. And these are a lot closer than -- you don't typically find all these
`combinations.
`Briefly, let me address Ground 3 which is the combination of all three
`references. So starting on Slide 55, this ground is that -- its only purpose is
`to address Claims 2 and 10 using Kolc as the primary reference. So those
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`claims addressed specific co-solvents. Iannotta discloses those co-solvents
`within the groups identified in the claims. So that's why Ground 1 addresses
`every kind of patent. Kolc doesn't pick out particular solvents in those
`groups. So (indiscernible) Kolc/CN ‘400 combination. So the motivations
`are similar to what we already saw. They have (indiscernible) urea fertilizer
`with the urease inhibitor, specifically NBPT. And they are using solvents
`for carrying and delivering the NBPT. And Slide 56 and 57, all three
`references cover those topics.
`So the bottom line, Your Honors, is that nothing has really changed
`here. The references together disclose all of the limitations. In many
`instances, both references or all three references in combination
`(indiscernible) limitations. And once you've identified the problem, namely
`that NMP is toxic and you need a more benign dipolar solvent, you know
`exactly where to go, and that's DMSO. And I'm going to turn it over now
`unless the group, unless the panel has any questions on the topics I've
`covered so far, to Mr. Greenhut (indiscernible).
`THE REPORTER: I beg your pardon. I didn't --
`JUDGE MCGEE: I have no questions at this point. Judge Kalan,
`Judge Abraham, do you have any questions? Okay. I'll just mention at this
`point you have 7 minutes before your 5-minute warning, so 12 minutes total.
`MR. FRANZINGER: Okay. Thank you.
`JUDGE MCGEE: Thank you.
`MR. GREENHUT: Thank you, Your Honors. My name's Jason
`Greenhut. And on behalf of Petitioner Solvay today, I'm going to be
`discussing secondary considerations. So I'll point out at the outset that the
`Patent Owner has the burden of production to introduce evidence that any
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`secondary indicia of non-obviousness have been satisfied. In its response,
`the Patent Owner discusses numerous issues that it claims might be evidence
`of secondary considerations, but at the outset, I'd like to point out for the
`reasons that follow that Patent Owner has failed this burden of production in
`every case.
`I'm going to turn to Slide 59. You'll likely hear from Patent Owner
`that the claimed invention provided unexpected results. But the only
`question you should ask yourself at that point is did DMSO give results that
`are unexpected? And the answer is no. DMSO does only what it was
`supposed to do. It dissolved NBPT. As Mr. Franzinger described in great
`detail, it was very well known in the art by the time of the alleged invention
`that DMSO would readily dissolve NBPT.
`In the Patent Owner's papers, they presented the results of a few
`experiments that they claim show that mixing DMSO with NBPT in a
`solution has unexpected properties. And the three properties they allege are
`unexpected are high freezing point depression, group viscosity, and that
`unexpectedly high amounts in NBPT will dissolve in DMSO. But I'd like to
`point out that across all the trial papers, the Patent Owner presented no
`contemporaneous evidence that we show any of these results are unexpected.
`There are no patent applications or articles cited by the Patent Owner that
`would suggest that any of these things are unexpected or that the freezing
`point of DMSO would not be lowered by adding NBPT. And the Patent
`Owner has also not presented any evidence that these alleged unexpected
`results reflected any expectations at the time of the alleged invention. And
`what I mean by that is all of these experimental results come from the year
`2019. They were prepared for this proceeding. They are not probative of
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`what somebody in the year 2012 would have known or expected. And the
`Patent Owner doesn't even allege that they are probative of what a person of
`skill in the art would have expected at that time.
`The only evidence Patent Owner actually presents that these things
`would have been unexpected is the testimony of its expert Dr. Thomas
`Theyson who stated that he personally found the certain properties of the
`mixture to be unexpected. But critically, Dr. Theyson did not state that a
`person of skill in the art at the time of the alleged invention in 2012 would
`have found the results unexpected. And since he admitted that he does not
`possess the qualifications for a person of ordinary skill in the art, his
`opinions today in the year 2019 cannot be probative of what a person of skill
`in the art would have expected in the year 2012.
`And I'd just like to point out as an aside, there's nothing unexpected at
`all about these properties. It isn't surprising that a solvent's freeze point will
`decrease when you add a solute to it. That's just a fundamental property of
`solutions. Freezing point depression is how many (indiscernible) work. It's
`why putting salt on snow in cold climates will cause the snow to melt by
`lowering its freezing point.
`I'd also like to point out that up to three topics that the Patent Owner
`alleges are unexpected, none of them have any nexus for the claims. For
`example, none of the claims discusses temperature at all. The only time that
`the '108 Patent even discusses using the composition in cold climates, it just
`says to heat up the mixture once it's delivered to the customer. And that's in
`the '108 Patent in column 9 at line 34 to 42. The claim certainly never
`discussed viscosity.
`And finally, the claims do provide a range at which NBPT should be
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`dissolved in the solution, and the range they provide is between 5 percent to
`45 percent by weight, but I'd like to point out the Patent Owner admits that
`the vast majority of this range overlaps with examples that are in the prior
`art. And to the extent it might include levels that were not known in the
`prior art, prior art ranges overlap the claim. And without having an
`exclusive range, the range is you cannot have any nexus to the claims for the
`purpose of secondary considerations.
`I'd like to move on to Slide 60 and briefly touch on long-felt need and
`failure of others. The Patent Owner claims that long-felt needs would be
`evidence of a combination o
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