Disclaimer: The law firm of Drinker Biddle & Reath LLP, provider of this blog, served as counsel for Patent Owner in this proceeding.

Takeaway: Patent Owner was able to avoid institution by providing supported claim construction positions including arguing that the preamble was limiting, each of which was adopted by the Board, as well as pointing out the deficiencies in the evidence provided by Petitioner.

In its Decision, the Board denied institution of the Petition determining that Petitioner had “not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims” 1-15 of the ’807 patent. Accordingly, the inter partes review that Petitioner had requested was not instituted.

The ’807 patent “relates to a method of chemically cleaning textile, leather, or fur goods in which the article to be cleaned is brought into contact with a cleaning agent comprising at least one solvent.” “The solvents sued in the method of the ’807 patent are said to possess ecologically and toxicologically more favorable properties than perchloroethylene or other solvents commonly used in the chemical cleaning of textile, leather or fur goods, yet provide substantially equivalent or better cleaning properties.” An exemplary claimed solvent is butylal.

The grounds asserted by Petitioner included: anticipation of claims 1, 2, 4, 5, and 10-15 under 35 U.S.C. § 102 in view of the ’773 Publication; obviousness of claims 1, 2, 4, 5, 8, and 10-15 under 35 U.S.C. § 103(a) in view of the ’773 Publication; anticipation of claims 1, 2, 4, 5, 10, and 12-14 under 35 U.S.C. § 102 in view of Lambiotte; obviousness of claims 1, 2, 4-6, and 8-14 under 35 U.S.C. § 103(a) in view of Lambiotte and knowledge of one of ordinary skill in the art; obviousness of claims 1, 2, 4-6, and 8-14 under 35 U.S.C. § 103(a) in view of Lambiotte and Lang; anticipation of claims 1, 3, 5, 7, 9-11, 14, and 15 under 35 U.S.C. § 102 in view of Schulte; obviousness of claims 1, 3, 5-11, 14, and 15 under 35 U.S.C. § 103(a) in view of Schulte and knowledge of one of ordinary skill in the art; and obviousness of claims 1, 3, 5-11, 14, and 15 under 35 U.S.C. § 103(a) in view of Schulte and Stewart.

The Board began with claim construction, noting that the claims of an unexpired patent are interpreted using the broadest reasonable construction in light of the specification of the patent. Two terms were in dispute. First, whether the preamble, “method of dry cleaning,” was limiting. Second, the scope and meaning of the term “solvent.”

Petitioner argued that the claims were not limited to dry cleaning, because dry cleaning was only in the preamble. Patent Owner contended that the preamble is limiting, because “it is clear [from the Specification that the invention] is directed to a new use (i.e., as a solvent in dry cleaning) for compounds described therein.” In support, Patent Owner argued that the Specification did not describe any other uses, and that the preamble provided context and definition for the claim terms “cleaned” and “cleaning agent.” Patent Owner further provided definitions of “dry cleaning” provided by the U.S. EPA and the Ireland EPA as representative of the definition in Europe, where the inventors reside. Petitioner’s expert provided similar definitions of “dry cleaning.” Therefore, based on the record before it, the Board determined that the preamble is limiting, and that “dry cleaning” is interpreted as “using one or more solvents, with little or no water, to clean textiles, leather, or fur goods in a dry cleaning machine.”

Petitioner did not provide an explicit interpretation of the term “solvent,” but contended that the claim terms had their ordinary and customary meaning. Patent Owner contended that “‘one of ordinary skill in the art of dry cleaning understands the term ‘solvent’ to refer to the active cleaning ingredient in the cleaning agent and/or cleaning method,’ and that Petitioner’s patentability challenges are based on an overly broad interpretation of the term ‘solvent’ as encompassing stabilizers for active cleaning ingredients.” Specifically, Patent Owner contended that one of ordinary skill in the art would not interpret the term “solvent” as encompassing an ingredient that acts as a stabilizer in a cleaning agent because a stabilizer is a substance used to inhibit a chemical reaction, and not a compound having the ability to dissolve raw materials or contaminants, which is an understood definition of the term “solvent.” Based on its use in the Specification and claims, the Board agreed with Patent Owner that the broadest reasonable interpretation of the claim term “solvent” is an active cleaning ingredient in the cleaning agent used in the recited method of dry cleaning.

The Board then turned to the prior art challenges. The first grounds based on the ’773 publication was based on the ’773 publication disclosing compounds of the general formula (I) used as stabilizers for chlorinated solvents that can be used to dry-clean textiles. Patent Owner argued that the ’773 publication’s addition of minor amounts of compounds of the general formula (I) for the purpose of stabilizing the chlorinated solvents is not a description of using the acetals themselves as solvents, i.e., the active cleaning ingredient, in a dry cleaning method. Petitioner failed to explain why or provide evidence establishing that acetals of general formula (I) add in amounts of less than 5% to stabilize chlorinated dry cleaning solvents, would themselves function as active cleaning ingredients, as the term “solvent” required in claim 1. Accordingly, the Board determined that Petitioner had failed to meet its burden to establish a reasonable likelihood it would prevail in showing at least one claim was anticipated or obvious.

The grounds based on Lambiotte were based on an internet publication describing compounds of the general formula (I) having physical and chemical characteristics good for cleaning. The Board agreed with Patent Owner that Petitioner failed to provide adequate evidence or explanation for why Lambiotte’s general description of using acetals for general cleaning would be used in a method of dry cleaning, as claimed. Because the preamble was found to be limiting, and thus the method is limited to dry cleaning, Petition failed to meet its burden to establish a reasonable likelihood of success.

The grounds based on Schulte were based on substrate cleaning systems, such as drying cleaning systems, in which 15 general chemical structures were identified as possible solvents, and each general chemical structure encompasses numerous compounds. The Board agreed with Patent Owner that Petitioner relied solely on impermissible hindsight to derive a compound that meets the scope of the solvent recited in claim 1. Petitioner also raised an obviousness ground based on Schulte, but the Board agreed with Patent Owner that Petitioner’s obviousness challenge was based solely on the unsupported testimony of its expert. Specifically, the expert’s testimony failed to prove any explanation as to how the prior art would have provided direction to one of ordinary skill in the art to select a compound of general formula (I) from the numerous possible choices in Schulte.

R.R. Street & Co., Inc. v. Chemische Fabrik Kreussler & Co., Inc., IPR2015-00289

Paper 9: Decision Denying Institution of Inter Partes Review

Dated: May 26, 2015

Patent: 8,801,807 B2 Before: Linda M. Gaudette, Brian P. Murphy, and Zhenyu Yang

Written by: Gaudette