Magēmā Technology LLC

Patent Trials and Appeals Board

Jan 21, 2022

IPR2021-01175 (P.T.A.B. Jan. 21, 2022)

Trials@uspto.gov Paper 13 571-272-7822 Entered: January 21, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD PHILLIPS 66, Petitioner, v. MAGĒMĀ TECHNOLOGY LLC, Patent Owner. IPR2021-01175 Patent 10,533,141 B2 Before PATRICK R. SCANLON, CHRISTOPHER M. KAISER, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314, 37 C.F.R. § 42.4 IPR2021-01175 Patent 10,533,141 B2 2 INTRODUCTION A. Background Phillips 66 (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1-4 of U.S. Patent No. 10,533,141 B2 (Ex. 1001, “the ’141 patent”). Magēmā Technology LLC (“Patent Owner”) filed a Preliminary Response. Paper 12 (“Prelim. Resp.”). We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground. B. Related Matters The parties identify Magēmā Tech. LLC v. Phillips 66, No. 4:20-cv- 02444 (S.D. Tex.), as a matter related to the present proceeding. Pet. 1; Paper 5, 2. The parties also note that there are several inter partes review proceedings that challenge related patents: IPR2021-01168, IPR2021-01173, and IPR2021-01175. Pet. 1; Paper 5, 2. IPR2021-01175 Patent 10,533,141 B2 3 C. The Asserted Grounds of Unpatentability Petitioner contends that claims 1-4 of the ’141 patent are unpatentable based on the following grounds (Pet. 5):1 Ground Claim(s) Challenged 35 U.S.C. § References 1 1, 2 103 Weiss ’974 2, Weiss ’5153, ISO 8217:20174 2 3, 4 103 Weiss ’974, Weiss ’515, ISO 8217:2017, Weiss ’4445 3 1, 2 103 ISO 8217:2017, Annex VI 6, Weiss ’974, Weiss ’515 4 1, 2 103 ISO 8217:2017, Annex VI, Weiss ’974, Weiss ’515, AAPA7 5 3, 4 103 ISO 8217:2017, Annex VI, Weiss ’974, Weiss ’515, Weiss ’444 6 3, 4 103 ISO 8217:2017, Annex VI, Weiss ’974, Weiss ’515, Weiss ’444, AAPA 1 Petitioner also relies on a declaration from Edward L. Sughrue II, Ph.D. Ex. 1082. 2 US 2018/0134974 Al, published May 17, 2018 (Ex. 1002). 3 US 2014/0299515 Al, published Oct. 9, 2014 (Ex. 1094). 4 International Standard 8217, “Petroleum products - Fuels (class F) - Specifications of marine fuels,” Reference ISO 8217:2017(E), International Standards Organization, Sixth Edition, 2017 (Ex. 1003). 5 US 2014/0332444 Al, published Nov. 13, 2014 (Ex. 1079). 6 Amendments to the Annex of the Protocol of 1997 to Amend the International Convention for the Prevention of Pollution from Ships, 1973, as Modified by the Protocol of 1978 Relating Thereto (Revised MARPOL Annex VI), Oct. 10, 2008, Resolution MEPC.176(58) (Ex. 1004). 7 Applicant-Admitted Prior Art. IPR2021-01175 Patent 10,533,141 B2 4 D. The ’141 Patent The ’141 patent is titled “Process and Device for Treating High Sulfur Heavy Marine Fuel Oil for Use as Feedstock in a Subsequent Refinery Unit” and issued on January 14, 2020. Ex. 1001, codes (45), (54). According to the patent, “[t]here are two basic marine fuel types: distillate based marine fuel, also known as Marine Gas Oil (MGO) or Marine Diesel Oil (MDO); and residual based marine fuel, also known as heavy marine fuel oil (HMFO).” Id. at 1:8-11. HMFO has been “used by large ocean-going ships as fuel for large two stroke diesel engines for over 50 years” but “is generally characterized as . . . high in sulfur.” Id. at 1:51-2:10. Because of this sulfur content, “[e]missions from HMFO burning in ships contribute significantly to both global marine air pollution and local marine air pollution levels.” Id. at 2:11-18. International conventions to reduce pollution were enacted, with “all marine fuel oils used in the North American [Emission Control Area]” being required to contain no more than 0.10 percent sulfur by weight after January 1, 2015. Id. at 2:19-52. This requirement caused refiners to charge “a premium price . . . to supply a low sulfur HMFO.” Id. at 2:52-65. The ’141 patent discusses the shortcomings of some possible solutions to this problem. Replacing HMFO with MGO or MDO is impossible because it would “result[] in an annual shortfall in marine fuel of over 200 million metric tons” due to a lack of excess refining capacity. Id. at 3:14- 29. Accordingly, “[t]here remains a long standing and unmet need for processes and devices that transform high sulfur HMFO for use as a feedstock to other subsequent refinery processes.” Id. at 4:1-6. The ’141 patent describes the following process for treating HMFO: IPR2021-01175 Patent 10,533,141 B2 5 a multi-stage process for treating high sulfur Heavy Marine Fuel Oil for use as feedstock in a subsequent refinery unit, the process involving: mixing a quantity of the Feedstock Heavy Marine Fuel Oil with a quantity of Activating Gas mixture to give a Feedstock Mixture; contacting the Feedstock Mixture with one or more catalysts under reactive conditions to form a Process Mixture from the Feedstock Mixture; receiving the Process Mixture and separating the Product Heavy Marine Fuel Oil liquid components of the Process Mixture from the gaseous components and byproduct hydrocarbon components of the Process Mixture and, discharging the Product Heavy Marine Fuel Oil. Id. at 4:16-29. E. Illustrative Claims Among challenged claims 1-4, claim 1 is independent. Claim 1 is exemplary of the claimed subject matter of the ’141 patent. We reproduce claim 1 below while adding bracketed identifiers to claim elements. 1. [a] A process for treating high sulfur Heavy Marine Fuel Oil for use as feedstock in a subsequent refinery unit, the process comprising: [b] mixing a quantity of Feedstock Heavy Marine Fuel Oil with a quantity of Activating Gas mixture to give a Feedstock Mixture; [c] contacting the Feedstock Mixture with one or more catalysts under reactive conditions to form a Process Mixture from said Feedstock Mixture; [d] receiving said Process Mixture and separating hydrocarbon liquid components of the Process Mixture from any bulk gaseous components of the Process Mixture; [e] subsequently separating any residual gaseous components and any by-product hydrocarbon components from the hydrocarbon liquid components to give a Product Heavy Marine Fuel Oil; [f] and, discharging the Product Heavy Marine Fuel Oil, [g] wherein the Feedstock Heavy Marine Fuel Oil complies with ISO 8217 (2017) IPR2021-01175 Patent 10,533,141 B2 6 [h] and has a sulfur content (ISO 14596 or ISO 8754) between the range of 5.0 mass % to 1.0 mass %, [i] and wherein said Feedstock Heavy Marine Fuel Oil has; a maximum of kinematic viscosity at 50° C. (ISO 3104) between the range from 180 mm2/s to 700 mm2/s; [j] a maximum of density at 15° C. (ISO 3675) between the range of 991.0 kg/m3 to 1010.0 kg/m3; [k] a CCAI in the range of 780 to 870; a flash point (ISO 2719) no lower than 60° C.; [l] a flash point (ISO 2719) no lower than 60° C.; [m] a total sediment-aged (ISO 10307-2) of less than 0.10 mass %; [n] a carbon residue-micro method (ISO 10370) less than 20.00 mass % [o] and wherein the Product Heavy Marine Fuel Oil has a sulfur content (ISO 14596 or ISO 8754) between the range of 0.50 mass % to 0.05 mass % [p] and wherein said Product Heavy Marine Fuel Oil has: a maximum of kinematic viscosity at 50° C. (ISO 3104) between the range from 180 mm2/s to 700 mm/s [q] a maximum of density at 15° C. (ISO 3675) between the range of 991.0 kg/m3 to 1010.0 kg/m3; [r] a CCAI in the range of 780 to 870; [s] a flash point (ISO 2719) no lower than 60° C.; [t] a total sediment-aged (ISO 10307-2) of less than 0.10 mass %; [u] a carbon residue-micro method (ISO 10370) less than 20.00 mass %. Ex. 1001, 25:25-26:2; see also Pet. xiii-xiv (reproducing claim with similar bracketed notations). ANALYSIS A. Claim Construction Petitioner does not argue that any term appearing in the challenged claims requires express construction. Pet. 20-23. Petitioner indicates that the claim term “merchantable,” which appears in the Specification’s IPR2021-01175 Patent 10,533,141 B2 7 definition of Feedstock Heavy Marine Fuel Oil, “merely dictates ISO- 8217:2017 compliance.” Id. at 21 (citing Ex. 1082 ¶ 46). Patent Owner “contends that no claim construction is necessary apart from that agreed to by the parties in the Litigation and that contained in the district court’s claim construction order.” Prelim. Resp. 35 (citing Ex. 1107). Patent Owner further contends the parties have “agreed that ‘compliant with ISO 8217:2017’ means the material ‘meets the bulk physical properties of any of a RMA, RMB, RMD, RME, RMG, or RMK residual marine fuel as set forth in Table 2 of the ISO 8217:2017 standard.’” Id. (citing Ex. 1016 at 1-2). We determine we need not explicitly construe “merchantable” at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). B. Grounds One and Two: Asserted Obviousness Based on Weiss ’974, Weiss ’515, and ISO 8217:2017 Petitioner argues that claims 1 and 2 of the ’141 patent would have been obvious over the combination of Weiss ’974, Weiss ’515, and ISO 8217:2017. Pet. 24-52. Petitioner also argues that claims 3 and 4 would have been obvious over the combination of Weiss ’974, Weiss ’515, ISO 8217:2017, and Weiss ’444. Id. at 52-58. We provide an overview of each of these references before we address the parties’ contentions. 1. Weiss ’974 Weiss ’974 is titled “Method for Converting Feedstocks Comprising a Hydrocracking Step, a Precipitation Step and a Sediment Separation Step, in IPR2021-01175 Patent 10,533,141 B2 8 Order to Produce Fuel Oils.” Ex. 1002, code (54). The patent “relates to a process for the conversion of heavy oil feeds of the atmospheric residue and/or vacuum residue type for the production of heavy fractions for use as fuel oil bases, in particular bunker fuel bases, with a low sediment content.” Id. ¶ 1. The patent describes that “quality requirements for marine fuels are described in ISO standard 8217,” which places restrictions on sulphur content by weight, but “a vessel could use a sulphur-containing fuel oil as long as the vessel is equipped with a system for treating fumes allowing the oxides of sulphur emissions to be reduced.” Id. ¶ 2. However, according to the patent, “[a]nother very restrictive recommendation is the sediment content after aging in accordance with ISO 10307-2 (also known as IP390).” Id. ¶ 3. Weiss ’974 describes a known, prior-art process “employing an ebullated bed hydrocracking step and a step with a reactor termed an upflow reactor associated with a reactor termed a stripper. The sediment content of the final effluent is reduced compared with the effluent from the ebullated bed step.” Id. ¶ 8. However, “[a]lthough ebullated bed technology is known to be suitable for heavy feeds charged with impurities, the nature of the ebullated bed means that it produces catalyst fines and sediments which have to be removed in order to provide a product quality such as bunker fuel.” Id. ¶ 10. To improve on this, Weiss ’974 introduces a “process integrating a precipitation step and physical separation of the sediments downstream of a hydrocracking step.” Id. ¶ 12. Weiss ’974 further describes that a process of this type can be used to obtain heavy fractions having a low sediment content after aging, said heavy fractions advantageously being able to be used completely or in part as a fuel oil or as a fuel oil base, in particular as bunker fuel or bunker IPR2021-01175 Patent 10,533,141 B2 9 fuel base complying with specifications, namely a sediment content after aging (measured in accordance with the method ISO 10307-2) of 0.1% by weight or less. Id. The patent describes a process with the following sequence of steps: a) a step of hydrocracking the feed in the presence of hydrogen; b) a step of separating the effluent obtained from step a); c) a step of precipitating sediments, in which the heavy fraction obtained from the separation step b) is brought into contact with a distillate cut at least 20% by weight of which has a boiling point of 100° C. or more for a period ofless than 500 minutes, at a temperature in the range 25° C. to 350° C., and at a pressure of less than 20 MPa; d) a step of physical separation of the sediments from the heavy fraction obtained from step c ); e) a step of recovering a heavy fraction having a sediment content, measured using the ISO 10307-2 method, of 0.1 % by weight or less. Id. at code (57) (formatting added for readability). ). Weiss ’974 also discloses an optional hydrotreatment (step f) to reduce the sulphur content of the heavy fraction obtained from step d) or e). Id. ¶¶ 90-93. 2. Weiss ’515 Weiss ’515 is titled “Process for Conversion of Petroleum Feed Comprising an Ebullated Bed Hydroconversion Step in a Fixed Bed Hydrotreatment Step for the Production of Low Sulphur Content Fuel.” Ex. 1094, code (54). The patent describes “a conversion method for heavy petroleum feeds for the production of fuel bases of the type vacuum distillate, atmospheric residue and vacuum residue, in particular bunker fuel bases with low sulphur content.” Id. ¶ 1. Weiss ’515 describes the following sequence of steps in its method: a step of ebullated bed hydroconversion of the feed in the presence of a supported catalyst, a separation step allowing a residual fraction to be obtained, IPR2021-01175 Patent 10,533,141 B2 10 a step of fixed bed hydrotreatment of the residual fraction using an upstream system of permutable reactors. Id. at code (57). 3. ISO 8217:2017 ISO 8217 is a standard for “Petroleum products - Fuels (class F) - Specifications of marine fuels” from the International Organization for Standardization (“ISO”). Ex. 1003, Title. This version was published in 2017. Id. at ii. The document describes “the requirements for fuels for use in marine diesel engines and boilers, prior to conventional onboard treatment (settling, centrifuging, filtration) before use.” Id. at 1. The “document specifies seven categories of distillate fuels” and “six categories of residual fuels.” Id. ISO 8217 provides Table 1, which lists the characteristcs of certain distillate marine fuels. Id. at 14-15. It also provides Table 2, which lists the characteristics of several grades of residual marine fuels. Id. at 16- 17. 4. Weiss ’444 Weiss ’444 is titled “Process for Hydroconverting Oil Feeds in Fixed Beds for the Production of Low Sulphur Fuels.” Ex. 1079, code (54). Weiss ’444 “relates to a process for the conversion of heavy oil feeds for the production of fuel bases of the vacuum distillate, atmospheric residue and vacuum residue type, in particular bunker fuel bases with a low sulphur content.” Id. ¶ 1. The patent describes that its process “can be used to produce fuel bases, in particular bunker fuel bases, complying with the recommendations of the MARPOL convention,” specifically “version 2010 of ISO standard 8217 (Annex VI to the MARPOL convention),” which sets levels for sulphur, sediments, and viscosity. Id. ¶¶ 3-4. Weiss ’444 describes the following sequence of steps in its method: IPR2021-01175 Patent 10,533,141 B2 11 a step for fixed bed hydrodemetallization of the feed using an upstream system of fixed bed swing reactors; a step for fixed bed hydrocracking of the hydrodemetallized effluent in the presence of a hydrocracking catalyst; a step for separation in order to obtain a heavy fraction; a step for hydrodesulphurization of the heavy fraction in which hydrogen is reinjected. Id. at code (57). 5. Analysis The only challenged independent claim (claim one), and, thus, each challenged claim of the ’141 patent recites limitations requiring the presence of a “Heavy Marine Fuel Oil.” Ex. 1001, 25:27-28 (“mixing a quantity of Feedstock Heavy Marine Fuel Oil with a quantity of Activiating Gas Mixture”), 25:34-38 (after separations, “discharging the Product Heavy Marine Fuel Oil”). Petitioner relies on Weiss ’974 to teach or suggest the use of HMFO in these limitations. Pet. 27-31 (citing Ex. 1002 ¶¶ 2, 12, 20, 87-89, 113- 114, 116, 118, 120-124, 127-128), 38 (citing Ex. 1002 ¶¶ 94, 108)8, 41-43 (citing Ex. 1002 ¶¶ 2, 12, 20, 87-94, 108, 128), 47 (citing Ex. 1002 ¶¶ 2-3, 6, 10-13, 20, 65, 87, 89, 92, 95, 100), 49 (citing Ex. 1002 ¶¶ 16, 91-92, 107-108. Specifically, Petitioner argues that Weiss ’974’s “exemplary process . . . yielded an ISO 8217 RMG 380 fuel oil.” Id. at 27 (citing Ex. 1002 ¶¶ 127-128). Petitioner also argues that Weiss ’974 teaches “a bunker fuel of a ‘desired . . . fuel oil grade’ that meets marine fuels’ ‘quality requirements,’ rendering the HSFO . . . compatible with[] HMFO.” Id. at 29-30. In addition, Petitioner argues that the pre-hydrotreatment HSFO of 8 Petitioner defines “LSFO” as being a “low-sulfur heavy marine fuel oil.” Pet. 1. IPR2021-01175 Patent 10,533,141 B2 12 Weiss ’974 is a “Feedstock HMFO” because it would have been ISO- 8217:2017-compliant and merchantable. Id. at 47. Finally, Petitioner alleges that the post-hydrotreatment LSFO of Weiss ’974 is the “Product Heavy Marine Fuel Oil” of the challenged claims, but Petitioner provides little explanation why this is so. Id. at 49 (citing Weiss ’974 ¶ 91-92, 108). The ’141 patent defines a Heavy Marine Fuel Oil (“HMFO”) in part as “a petroleum product fuel compliant with the ISO 8217 (2017) standards for residual marine fuels except for the concentration levels of the Environmental Contaminates.” Ex. 1001, 4:66-5:2 (defining “Heavy Marine Fuel Oil”) (emphasis added); see also id. at 5:6-14 (defining “Feedstock HMFO”), 5:15-19 (defining “Product HMFO”). Petitioner argues that the definition of “Feedstock Heavy Marine Fuel Oil “merely dictates ISO- 8217:2017-compliance.” Pet. 21. Not so. HMFO, as the ’141 patent defines it, must meet the standard for a residual marine fuel. This is important because marine fuel oil can be either residual-based or distillate-based. Ex. 1082 ¶ 29; see also Ex. 1003, 14-18 (ISO 8217 providing separate tables of properties for “[d]istillate marine fuels” and “[r]esidual marine fuels”). Thus, to demonstrate that Weiss ’974 teaches or suggests both the feedstock HMFO and the product HMFO of the challenged claims, as Petitioner argues it does, Petitioner must show that Weiss ’974 teaches or suggests four facts: (1) the pre-hydrotreatment HSFO is a residual petroleum product, (2) the pre-hydrotreatment HSFO is ISO-8217-compliant, (3) the post-hydrotreatment LSFO is a residual petroleum product, and (4) the post- hydrotreatment LSFO is ISO-8217-compliant. Petitioner does not show all four of these facts sufficiently to demonstrate a reasonable likelihood of prevailing in showing that the challenged claims are obvious over the combination of Weiss ’974, Weiss ’515, and ISO 8217:2017. IPR2021-01175 Patent 10,533,141 B2 13 With respect to the pre-hydrotreatment HSFO of Weiss ’974, many of Petitioner’s arguments show only that the fuel oil is a bunker fuel that complies with ISO 8217. See, e.g., Pet. 27, 47. These arguments alone are insufficient because ISO-8217-compliant bunker fuels can be either distillate-based or residual-based. Ex. 1003, 14-17; Ex. 1082 ¶ 29; Ex. 2007 ¶ 25. Thus, showing that a fuel is a bunker fuel or that a fuel complies with ISO 8217 does not show that the fuel is residual-based. One argument, in our view, may show sufficiently (for institution purposes) that Weiss ’974 teaches or suggests that its pre-hydrotreatment HSFO is residual-based: Petitioner argues that Weiss ’974’s “exemplary process . . . yielded an ISO 8217 RMG 380 fuel oil.” Pet. 27 (citing Ex. 1002 ¶¶ 127-128). On the present record, we agree. Weiss ’974 includes a working example of its invention in which a non-hydrotreated bunker fuel is produced that “constitute[s] a high quality bunker fuel which could be sold with grade RMG or IFO 380.” Ex. 1002 ¶ 128; see Ex. 1002 ¶¶ 113- 127 (explaining production of the bunker fuel in question without using Weiss ’974’s hydrotreating steps). Dr. Sughrue testifies that “grade RMG or IFO 380” in Weiss ’974 is “a reference to ISO 8217’s RMG 380 residual marine fuel grade.” Ex. 1082 ¶ 59. And ISO 8217 defines RMG 380 as a grade of residual marine fuel. Ex. 1003, 16-17. Thus, Petitioner has shown sufficiently that Weiss ’974 teaches or suggests that its pre-hydrotreatment HSFO is a residual petroleum product. The same cannot be said for Petitioner’s allegations with respect to the post-hydrotreatment LSFO of Weiss ’974. Petitioner relies on the post- hydrotreatment LSFO of Weiss ’974 to teach or suggest the product HMFO of the challenged claims, but Petitioner does not explain why the LSFO is an HMFO. Pet. 49 (citing Ex. 1002 ¶¶ 91-92, 108). In the cited paragraphs, IPR2021-01175 Patent 10,533,141 B2 14 Weiss ’974 describes separating the hydrotreatment effluent “by atmospheric distillation into a gaseous fraction, at least one atmospheric distillate fraction . . . and an atmospheric residue fraction,” with the atmospheric residue being separated “by vacuum distillation into a vacuum distillate fraction containing vacuum diesel and a vacuum residue.” Ex. 1002 ¶ 107. “The vacuum residue fraction and/or the vacuum distillate fraction and/or the atmospheric residue fraction may in part constitute at least fuel oil bases,” which “may be mixed with one or more cutter stocks” to “obtain a fuel oil.” Id. ¶¶ 108, 110. Neither Weiss ’974 nor Petitioner explains why this mixing step to obtain a fuel oil (rather than merely a fuel oil base) retains the residual nature of the petroleum product without converting it into a distillate or intermediate petroleum product. Moreover, to the extent that Petitioner relies on the fuel oil base of paragraph 108-rather than the fuel oil of paragraph 110-to teach or suggest the product HMFO of claim limitations 1(g) and 1(h), Petitioner does not adequately explain why that fuel oil base would have complied with ISO 8217. Thus, Petitioner has not shown sufficiently that the combination of Weiss ’974, Weiss ’515, and ISO 8217:2017 (with the addition of Weiss ’444 for claims 4 and 5) teaches or suggests the HMFOs recited in the challenged claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on the obviousness of the challenged claims over these combinations of references. IPR2021-01175 Patent 10,533,141 B2 15 C. Grounds Three, Four, Five, and Six: Asserted Obviousness Based on ISO 8217:2017, Annex VI, Weiss ’974, Weiss ’515, and Applicant-Admitted Prior Art For ground three, Petitioner argues that claims 1 and 2 of the ’141 patent would have been obvious over the combination of ISO 8217:2017, Annex VI, Weiss ’974, Weiss ’515. For ground four, Petitioner adds Applicant Admitted Prior Art (AAPA) to the combination. For grounds five and six, Petitioner adds Weiss ’444 to address dependent claims. We provide an overview of ISO 8217:2017, Weiss ’974, Weiss ’515, and Weiss ’444 above. Below, we provide an overview of Annex VI and the asserted AAPA before we address the parties’ contentions. 1. Annex VI Annex VI, or more precisely “Revised MARPOL Annex VI,” is titled “Amendments to the Annex of the Protocol of 1997 to Amend the International Convention for the Prevention of Pollution from Ships, 1973, as Modified by the Protocol of 1978 Relating Thereto.” Ex. 1004, 1. Annex VI sets forth “Regulations for the Prevention of Air Pollution from Ships.” Id. at 3. 2. AAPA The ’141 patent contains three working examples. Ex. 1001, 20:46- 25:2. Example 2 describes the use of “a commercially available and merchantable ISO 8217 (2017) compliant HMFO, except for a high sulfur content (2.9 wt %)” as a “Feedstock HMFO.” Id. at 23:4-7. The ’141 patent describes the “observed bulk properties” of this feedstock HMFO as “consistent with ISO (8217) for a merchantable residual fuel oil.” Id. at 24:16-21. Similarly, Example 3 of the ’141 patent describes the use as a feedstock HMFO of “a commercially available and merchantable ISO 8217 IPR2021-01175 Patent 10,533,141 B2 16 (2017) RMK-500 compliant HMFO, except that it ha[d] high environmental contaminates (i.e. sulfur (3.3 wt %)).” Id. at 24:33-38. Petitioner argues that the descriptions of the commercially available products used in Examples 2 and 3 constitute admissions that those products were prior art to the ’709 patent. Pet. 60-61. 3. Analysis Our analysis with respect to these grounds is similar to the analysis we provide for grounds one and two above. In particular, claim 1 (and, thus, all challenged claims), requires “separating any residual gaseous components and any by-product hydrocarbon components from the hydrocarbon liquid components to give a Product Heavy Marine Fuel Oil.” Ex. 1001, 25:34-37. Petitioner refers back to its analysis for grounds one and two and relies on Weiss ’974 to reach this recitation. Pet. 58-67. As explained above, Petitioner does not persuasively explain why Weiss ’974 teaches or suggests obtaining a fuel oil that is “residual” while also complying with ISO 8217. Thus, Petitioner has not shown sufficiently that the combination of ISO 8217:2017, Annex VI, Weiss ’974, and Weiss ’515 (ground three) or the combination of ISO 8217:2017, Annex VI, Weiss ’974, Weiss ’515, and Applicant-Admitted Prior Art (ground five) (with the addition of Weiss ’444 for grounds four and six) teaches or suggests the HMFOs recited in the challenged claims. Petitioner has, therefore, not demonstrated a reasonable likelihood of prevailing on the obviousness of the challenged claims over these combinations of references. D. Discretionary Denial Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020) (precedential). Prelim. IPR2021-01175 Patent 10,533,141 B2 17 Resp. 9-29.9 Petitioner disagrees. Pet. 6-12. Because we deny institution based on the merits of Petitioner’s unpatentability arguments, we need not decide whether to exercise discretion to deny institution. CONCLUSION Upon consideration of the Petition, the Preliminary Response, and the evidence presented, we determine that Petitioner has not shown a reasonable likelihood that it will prevail in showing that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of any challenged claim based on any ground asserted in the Petition. ORDER It is hereby ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied, and no inter partes review is instituted. 9 The Patent Owner response, perhaps due to a word processing problem, appends “13066068” to the page numbers and thus labels these pages to 913066068 through 2913066068. IPR2021-01175 Patent 10,533,141 B2 18 FOR PETITIONER: Mark Garrett Jeremy Albright Michael Pohl NORTON ROSE FULBRIGHT US LLP Mark.garrett@nortonrosefulbright.com Jeremy.albright@nortonrosefulbright.com Michael.pohl@nortonrosefulbright.com FOR PATENT OWNER: Jonathan Pierce Derek Forinash PORTER HEDGES LLP jpierce@porterhedges.com dforinash@porterhedges.com