Takeaway: Corroborating evidence for proof of conception should include more than the inventor’s testimony and it should show that the inventor had an appreciation of each of the claimed features on the alleged conception date.

In its Final Written Decision, the Board held that all challenged claims, claims 1-5 and 8 of the ’804 patent are unpatentable. According to the Board, Dindi anticipates claims 1-3, 5, and 8 and Craig anticipates claims 1, 3, 4, and 8. The Board did not find that Kubíčka anticipates claims 1-3 and 8, because Petitioner failed to establish by a preponderance of the evidence that Kubíčka is prior art. The Board denied the Patent Owner’s Motion to Amend, because the proposed substitute claims improperly enlarge the scope of the claims in violation of 35 U.S.C. § 316(d)(3).

The ’804 patent is directed to “paraffin compositions containing mainly even carbon number paraffins, and methods of making such compositions.” In its Decision on Institution, the Board construed the preamble of claim 1 as not limiting the scope of the claim. It construed “hydrogenation/hydrogenolysis” to mean “hydrogenation and hydrogenolysis.” Neither party challenged these constructions, which were given by the Board in its Decision to Institute.

Both parties agreed that claim 1 was a product-by-process claim. Patent Owner asserted that the resulting product results in novel function and structural features in the claimed phase change materials (PCMs). Relying on testimony of Dr. Lamb, Patent Owner argued that PCMs have both high and low melting point constituents leading to specific functional qualities that are beneficial in PCMs. Dr. Lamb testified that distilled products will have an altered phase-change behavior. The Board found a lack of support in the specification for Dr. Lamb’s statements and Patent Owner failed to provide any evidence of comparative testing to show differences in behavior of distilled and undistilled products. Thus, the Board concluded that the process of claim 1 cannot be used to distinguish the product over prior art products.

Patent Owner averred that the product of claim 1 is a “direct product” of the hydrogenation/hydrogenolysis process. The Board stated that claim 1 does not require that the composition be formed by hydrogenation/hydrogenolysis. Further, the specification does not limit the claims to direct products of hydrogenation/hydrogenolysis; rather, it contemplates distillation of the product after hydrogenation/hydrogenolysis.

In conducting its analysis, the Board also determined whether Kubíčka and Dindi are prior art. It is undisputed that Cragi and Gusmão qualify as prior art under 35 U.S.C. § 102. Petitioner asserts that Kubíčka was publicly available on April 30, 2007 based on the testimony of Ms. Queler, who detailed her research into the public availability of the paper, which included correspondence with staff members of the University of Ostrava. Petitioner also proffered a translation of a webpage from the Internet Archive’s Wayback Machine in support of the alleged publication date. In its Decision on Patent Owner’s Motion, the Board excluded exhibits relied upon by Ms. Queler, because they are inadmissible hearsay or lack sufficient authentication. With the exclusion of these exhibits, Petitioner failed to establish the date of public availability of Kubíčka.

Patent Owner asserted Dindi is not prior art to the ’804 patent, because the inventor of the ’804 patent, Mr. Abhari, allegedly invented the subject matter of the claims prior to the filing date of Dindi. Patent Owner relied on the testimony of Mr. Abhari and supporting documents, such as gas chromatography data. Prior conception requires a showing of “independent” corroboration, which is evidence other than the inventor’s testimony. However, many of the exhibits relied upon by Patent Owner to corroborate Mr. Abhari’s testimony are inadmissible as hearsay or lack proper authentication, and thus were excluded. Additionally, the Board found that some of the exhibits filed with its reply to response to motion to amend was improper reply evidence for presenting new evidence,a nd were thus excluded.

The Board found no evidence to corroborate Mr. Abhari’s testimony that he conceived the invention prior to Dindi’s filing date. Although test results prior to Dindi’s filing date may establish that Mr. Abhari manufactured a product having the claimed composition of having over 75 wt% even carbon number paraffins, the test results themselves do not indicate that any special significance was attached to the results. Accordingly, only Mr. Abhari’s testimony provided evidence of conception of the invention. Accordingly, the Board found no evidence of disclosure of the invention by Mr. Abhari to anyone, as is required for proof of conception. Dindi, therefore, was found to be prior art.

Petitioner asserted that Dindi anticipated claims 1-3, 5, and 8. Patent Owner only argued that the subject claims antedate Dindi. It did not argue the merits of the challenged claims over Dindi. By addressing only the antedation of Dindi, Patent Owner conveyed to the Board and Petitioner that antedation was the only basis for its belief that the challenged claims are patentable. Given Patent Owner’s waiver of argument on the merits, the Board decided that the preponderance of the evidence supports a finding that Dindi teaches the challenged claims.

Petitioner asserted that Craig anticipated claims 1, 3, 4, and 8. Patent Owner argued that the product in Craig has been distilled to obtain isolated fractions of the product of a hydrogenation/hydrogenolysis process. The Board rejected this argument because it is based on the earlier-rejected “direct product” claim construction.

Patent Owner argued that Craig does not distinguish paraffins from other hydrocarbons in Table 9. The Board noted that Craig’s specification refers to C15-C18 paraffins and Patent Owner’s expert agreed that Table 9 reports area percentage of paraffins. Patent Owner argued that the peak area percentages of Table 9 must be adjusted to compensate for the 10% unreported product. The Board disagreed, finding that Table 9 already accounts for the 10% of product.

Patent Owner argued that the challenged claim requires weight percentages, not area percentages as shown in Table 9. Petitioner proffered expert testimony from Dr. Klein stating (1) it is common practice to approximate weight percentage of various components using peak areas on a gas chromatograph trace, and (2) peak area percentages can be converted to weight percentages. The Board found a lack of support for Dr. Klein’s testimony regarding the common practice of approximating weight percentages and Dr. Klein could not articulate the accuracy of an approximation between gas chromatograph mass spectrometry and weight percentages. Regarding Petitioner’s second argument, Dr. Klein relied on other references to provide response factors to convert area percentages to weight percentages. The Board agreed and concluded that the Table 9 discloses products with even carbon number paraffins in the weight percentage range recited in challenged claim 1. The Board also found that claims 3, 4, and 8 were anticipated by Craig. However, the Board did not find that a preponderance of the evidence showed Table 9 of Craig discloses compounds that are within the scope of claim 2.

Patent Owner filed a Motion to Amend Claims. Petitioner argued that the amended claims impermissibly broadened the scope of the claims. Patent Owner unsuccessfully argued that the term “comprising” appearing in the preamble of claim 12 should be read as closed ended as they have intended. The Board disagreed, interpreting the claims using the conventional open-ended meaning of “comprising.” In its Final Decision, the Board agreed with Petitioner that claim 12 encompassed products that claim 1 did not, thereby impermissibly enlarging the scope of the claims. The Board denied Patent Owner’s Motion to Amend.

Neste Oil OYJ v. REG Synthetic Fuels, LLC, IPR2013-00578

Paper 54: Final Written Decision

Dated: March 12, 2015

Patent 8,231,804

Before: Rama G. Elluru, Sheridan K. Snedden, and Christopher L. Crumbley

Written by: Crumbley