Refined Technologies, Inc.

Patent Trials and Appeals Board

Jun 12, 2020

IPR2019-01540 (P.T.A.B. Jun. 12, 2020)

Trials@uspto.gov Paper 11
571-272-7822 Entered: June 12, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNITED LABORATORIES INTERNATIONAL, LLC,
Petitioner,
v.
REFINED TECHNOLOGIES, INC.,
Patent Owner.

IPR2019-01540
Patent 8,480,812 B2

Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
ROESEL, Administrative Patent Judge.
DECISION
Denying Petitioner’s Request for Rehearing
of Decision Denying Institution of Inter Partes Review
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
United Laboratories International, LLC (“Petitioner”) timely filed a
request for rehearing (Paper 10, “Request” or “Req. Reh’g”) of our decision
denying institution of inter partes review (Paper 9, “Decision” or “Dec.”) of
claims 1–20 (the “challenged claims”) of U.S. Patent No. 8,480,812 B2
(Ex. 1001, “the ’812 Patent”). The Request seeks rehearing of our
determination that the Petition (Paper 2, “Pet.”) fails to establish a
reasonable likelihood that Petitioner would prevail on its contentions that
claims 1–5, 9–13, 20 are unpatentable as obvious in view of Foutsitzis1 and
Allen2 and that claims 6–8 and 14–19 are unpatentable as obvious in view of
Foutsitzis, Allen, and Jansen.3 For the reasons given below, we deny the
Request.
II. LEGAL STANDARDS
“The burden of showing a decision should be modified lies with the
party challenging the decision,” and the challenging party “must specifically
identify all matters the party believes the Board misapprehended or
overlooked, and the place where each matter was previously addressed” in a
paper of record. 37 C.F.R. § 42.71(d) (2019). Because Petitioner seeks
rehearing of our Decision denying the Petition, it must show an abuse of
discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on
petition, a panel will review the decision for an abuse of discretion.”). An
abuse of discretion occurs when a “decision was based on an erroneous
conclusion of law or clearly erroneous factual findings, or . . . a clear error of

1 Ex. 1003 (Foutsitzis et al., US 5,035,792, issued July 30, 1991).
2 Ex. 1004 (Allen, US 4,008,764, issued Feb. 22, 1977).
3 Ex. 1005 (Jansen et al., US 6,936,112 B2, issued Aug. 30, 2005).
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3
judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d
1565, 1567 (Fed. Cir. 1988).
III. ANALYSIS
A. Whether Allen is Analogous Art
A reference may be used in an obviousness determination “only when
analogous to the claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed.
Cir. 2004). A reference is analogous prior art (1) if it is from the same field
of endeavor regardless of the problem addressed, or (2) if it is not within the
field of the inventor’s endeavor, it is reasonably pertinent to the particular
problem with which the inventor is involved. Id. Petitioner argues that we
erred in applying both prongs of the Bigio test. Req. Reh’g 1–7.
As to the first prong of the Bigio test, Petitioner argues that we
misapprehended the applicable law and made incorrect factual findings
when determining that Petitioner failed to establish that Allen is in the same
field of endeavor as the ’812 Patent. Req. Reh’g 2–5 (citing Airbus S.A.S. v.
Firepass Corp., 941 F.3d 1374, 1379 (Fed. Cir. 2019)); Dec. 12–13.
Petitioner directs us to the legal standards provided in Airbus,
including the requirement to “consider each reference’s disclosure in view of
the reality of the circumstances, and weigh those circumstances from the
vantage point of the common sense likely to be exerted by one of ordinary
skill in the art in assessing the scope of the endeavor.” Req. Reh’g 2
(quoting Airbus, 941 F.3d at 1380; internal quotes omitted). Petitioner does
not, however, direct us to where in the Petition or the Wilhite Declaration
(Ex. 1002) Petitioner submitted evidence under this standard, or applied this
standard, to argue that Allen is within the same field of endeavor as the ’812
Patent.
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The Petition simply argued:
The field relevant to the invention of the ‘812 patent is “stripping
(or removing) hydrocarbons from porous media using a vapor
flow comprised of volatized solvent(s) and/or carrier gas.”
Pet. 15 (quoting Ex. 1002 ¶ 24).
[Allen] is directed to a method of recovering viscous petroleum
using a carrier gas vaporized solvent flooding method. . . .
Because Allen is directed to the removal of hydrocarbons from
porous media in the form of petroleum-containing formations
using a vapor flow comprised of carrier gas and vaporized
solvent, this reference relates to the field of patentee’s endeavor
and logically would have commended itself to an inventor’s
attention in considering the problems elucidated in the ‘812
patent.
Pet. 21 (citing Ex. 1002 ¶ 39; Ex. 1004 at 1:9–14).
The arguments in the Petition are fully addressed by the Decision,
which rejected Petitioner’s characterizations of Allen and the ’812 Patent.
Dec. 6–7, 12–13. The Request does not challenge our finding that “Allen
discloses a method for recovering viscous petroleum from subterranean
formations such as tar sand deposits by injecting into the formation a
gaseous mixture of a carrier gas and a solvent.” Id. at 9 (citing Ex. 1004,
code (57), 1:9–12).
The Request argues that we overlooked Petitioner’s evidence when
finding that the relevant field for the ’812 Patent is “the operation and
maintenance of chemical plants and refineries.” Req. Reh’g 2–3; Dec. 7
(quoting Ex. 1001, 1:8–9). Petitioner directs us to paragraph 24 of
Dr. Wilhite’s testimony and the abstract, title, and independent claims 1 and
20 of the ’812 Patent. Req. Reh’g 2–3. We did not overlook this evidence.
Dr. Wilhite’s testimony is quoted in the Decision. Dec. 6 (quoting Ex. 1002
¶ 24). The abstract, title, and preambles of claims 1 and 20 are accurately
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reflected in our finding that “[t]he ’812 Patent discloses a process for
cleaning the internal surfaces of catalytic reactors, media-packed vessels,
and other processing equipment by removing hydrocarbon contaminants and
noxious gases from such surfaces.” Id. at 3 (citing Ex. 1001, codes (54),
(57), 1:9–13; 3:25–26, 7:2–9, Fig. 1).
Petitioner shows no abuse of discretion in our finding that “Petitioner
fails to establish that techniques useful for recovering petroleum from an
underground formation would have been relevant to a method of removing
contaminants from chemical processing equipment.” Dec. 13. Nor does
Petitioner show an abuse of discretion in our finding that “Petitioner . . .
does not show sufficiently that a POSA [person of ordinary skill in the art]
would have consulted Allen when investigating methods for cleaning the
internal surfaces of chemically contaminated reactors, absorbent chambers,
compressors, pipes, connectors, and other equipment.” Id.
Petitioner does not explain, either in the Petition or in the Request,
why Allen would be considered within the scope of endeavor of the ’812
Patent, when viewed from “the reality of the circumstances” and “the
vantage point of the common sense likely to be exerted by one of ordinary
skill in the art.” Airbus, 941 F.3d at 1380. Accordingly, we find no abuse of
discretion in our finding that “Petitioner does not present a persuasive
argument for why a POSA would have considered a method for recovering
petroleum from subterranean formations when looking for ways to improve
a method for removing contaminants from hydrocarbon processing
equipment.” Dec. 12–13.
As to the second prong of the Bigio test, Petitioner argues that we
overlooked or misapprehended Petitioner’s arguments and evidence
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regarding Allen as reasonably pertinent prior art. Req. Reh’g 5–7. We
disagree.
The Petition states:
[Allen] is directed to a method of recovering viscous petroleum
using a carrier gas vaporized solvent flooding method. . . .
Because Allen is directed to the removal of hydrocarbons from
porous media in the form of petroleum-containing formations
using a vapor flow comprised of carrier gas and vaporized
solvent, this reference relates to the field of patentee’s endeavor
and logically would have commended itself to an inventor’s
attention in considering the problems elucidated in the ‘812
patent.
Pet. 21 (citing Ex. 1002 ¶ 39; Ex. 1004 at 1:9–14). In a footnote, the
Petition asserts: “Even assuming for argument’s sake that Allen is not
within the same field of endeavor as the ’812 patent, Allen is at least
reasonably pertinent to the problem addressed in the ’812 patent.” Id. at 21
n.3 (citing Ex. 1002, 27 (¶ 39) n.8).
The arguments in the Petition are fully addressed by the Decision,
which finds that Petitioner’s argument under Bigio prong two and the
corresponding declaration testimony are “merely conclusory and
unsupported by factual evidence.” Dec. 13. The Request shows no abuse of
discretion in that finding. Petitioner directs us to Dr. Wilhite’s testimony
concerning Patent Owner’s disclosure of references during prosecution.
Req. Reh’g 5–6 (citing Ex. 1002 ¶¶ 24, 55). The Decision addresses that
testimony as follows:
Dr. Wilhite additionally provides a list of references that Patent
Owner disclosed to the USPTO during prosecution (Ex. 1002
¶ 55), but does not explain how this list supports his opinions
regarding Foutsitzis and Allen, and Petitioner does not
specifically rely upon nor explain Dr. Wilhite’s testimony. To
the extent Dr. Wilhite relies on Patent Owner’s disclosure of the
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listed references as an admission that they are material to
patentability, such reliance is prohibited under the rules.
Compare id. ¶¶ 24, 55, with 37 C.F.R. § 1.97 (“The filing of an
information disclosure statement shall not be construed to be an
admission that the information cited in the statement is, or is
considered to be, material to patentability. . . .”).
Dec. 17–18. Petitioner identifies no factual or legal error in the above
determination. In the Request, Petitioner argues:
[T]he nine downhole references disclosed by Patent Owner
during prosecution and identified by Dr. Wilhite should have
been considered by the Board. These downhole references must
have been at least reasonably pertinent to the problem addressed
in the ’812 patent to be disclosed, and they should be considered
in determining whether Allen is reasonably pertinent.
Req. Reh’g 6–7.
Petitioner’s argument does not persuade us to grant rehearing. As
stated in the Decision, the argument is contrary to the rule that an applicant’s
disclosure of references in an information disclosure statement is not an
admission that the references are material to patentability. Dec. 17–18
(quoting 37 C.F.R. § 1.97). Moreover, the “nine downhole references”
(Req. Reh’g 6) were not mentioned or discussed in the Petition. Dr. Wilhite
identified the general subject matter of the references and provided a list of
the patent numbers, inventor(s), titles, and excerpts from the abstracts.
Ex. 1002 ¶¶ 24, 55. But Dr. Wilhite did not rely upon the nine downhole
references as support for his opinion that Allen is “at least reasonably
pertinent to the problem addressed in the ’812 patent” (id. ¶ 39 n.8), and he
provided no explanation or analysis of how they support his opinion.
Although Petitioner argues that the Board was required to consider the “nine
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downhole references” under the legal standards of Airbus and Randall4
(Req. Reh’g 6–7), the rules do not require us to consider evidence that is not
cited or explained in the Petition. See 37 C.F.R. § 42.22(a)(2) (a petition
must include “a detailed explanation of the significance of the evidence”).
For all of the foregoing reasons, we are not persuaded to grant
rehearing based on Petitioner’s argument that Allen is analogous prior art to
the ’812 Patent.
B. Motivation to Combine Foutsitzis and Allen
A claim is unpatentable under 35 U.S.C. § 103 if “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The obviousness inquiry typically requires an analysis of “whether
there was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2016) (requiring “articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”)). Petitioner
does not satisfy its burden of proving obviousness by employing “mere
conclusory statements,” but “must instead articulate specific reasoning,
based on evidence of record, to support the legal conclusion of
obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380
(Fed. Cir. 2016).
Petitioner argues the Board abused its discretion with its holdings that
Petitioner did not explain sufficiently why a POSA would have modified

4 Randall Manufacturing v. Rea, 733 F.3d 1355 (Fed. Cir. 2013).
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Foutsitzis by using the carrier gases disclosed in Allen (Req. Reh’g 8; Dec.
14) and that Petitioner failed to provide a persuasive reason why a POSA
would have modified Foutsitzis by vaporizing the solvent before delivery as
disclosed in Allen (Req. Reh’g 11; Dec. 16). According to Petitioner, the
Board overlooked the evidence and arguments submitted by Petitioner. Req.
Reh’g 8–13.
Petitioner’s arguments do not persuade us to grant rehearing.
Petitioner does not show that we overlooked or misapprehended any
argument or evidence sufficient to show a persuasive reason why a POSA
would have modified Foutsitzis’s contaminant removal method by using
selected ones of the carrier gases disclosed by Allen and by delivering the
solvent as a vapor. Merely pointing out the differences between the two
references (or the absence of differences) is not enough to show a reason to
modify one reference’s method in view of the teachings of another
reference. Metalcraft of Mayville, Inc. v. Toro Co., 848 F. 3d 1358, 1367
(Fed. Cir. 2017) (To show obviousness, “[o]ne needs to provide an
explanation or reasoning for concluding that one of skill in the art would
have combined these particular references to produce the claimed
invention.”).
Petitioner attempts to bolster its case with arguments that were not
presented in the Petition. For example, Petitioner argues that Dr. Wilhite’s
testimony about the nine downhole references “shows that the emphasis on
downhole use in Allen is not a significant difference from the process
equipment context in Foutsitzis.” Req. Reh’g 9, 13. Petitioner asserts that
the Board overlooked Allen’s discussion of improving contact as one of the
benefits of vaporizing the solvent before delivery (Id. at 10 n.3 (citing Ex.
1004, 4:39–46)), but does not identify where in the Petition this disclosure in
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Allen was cited or discussed. We could not have misapprehended or
overlooked arguments or evidence that were not presented in the Petition.
Petitioner argues that, under KSR, “there was no reason to require an
exhaustive analysis” of the efficacy of Petitioner’s proposed combination or
how it would work. Req. Reh’g 11 (citing KSR, 550 U.S. at 417).
Petitioner’s argument is based on an incorrect legal standard. While an
obviousness analysis does not need to be “exhaustive,” it must include
“some articulated reasoning with some rational underpinning for combining
[prior art] elements in the manner claimed” and not merely a hindsight
reconstruction of the claimed invention. KSR, 550 U.S. at 418 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); TriVascular, Inc. v. Samuels,
812 F.3d 1056, 1066 (Fed. Cir. 2016) (“Although the KSR test is flexible,
the Board ‘must still be careful not to allow hindsight reconstruction of
references . . . without any explanation as to how or why the references
would be combined to produce the claimed invention,’” quoting Kinetic
Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir.
2012)).
C. Motivation to Combine Foutsitzis, Allen, and Jansen
The Decision provides additional reasons for the determination that
Petitioner’s second ground does not meet the threshold for institution of
inter partes review. Dec. 18–19. As stated in the Decision, the Petition
does not explain why a POSA would have used Foutsitzis’s process, as
modified with Allen’s carrier gas, to remove Jansen’s contaminants and does
not demonstrate that a POSA would have had a reasonable expectation of
success in doing so. Id. at 19.
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In the Request, Petitioner argues that “the Board’s finding that the
contaminants in Foutsitzis and Jansen differ was an abuse of discretion”
because both references discuss the removal of hydrogen sulfide. Req.
Reh’g 14 (citing Pet. 45–48; Ex. 1003, 4:5–13, 5:50–54; Ex. 1010, 46). In
addition, Petitioner argues that that we overlooked Dr. Wilhite’s testimony
that all three references—Foutsitzis, Allen, and Jansen—were directed to the
removal of substances using a vaporized hydrocarbon solvent and a carrier
gas. Id. at 14–15.
Petitioner’s arguments do not persuade us to grant rehearing. The
Request relies on new arguments and evidence not presented in the Petition.
For example, the Petition did not rely on Foutsitzis’s teaching regarding the
removal of hydrogen sulfide. Compare Req. Reh’g 14 (citing Ex. 1003,
4:5–13, 5:50–54), with Pet. 45–49 (arguing obviousness of claims 6–8
without mentioning or citing these teachings of Foutsitzis). Nor did the
Petition rely on the Examiner’s findings regarding the inherent disclosure of
Foutsitzis. Compare Req. Reh’g 14 (citing Ex. 1010, 46), with Pet. 45–49
(arguing obviousness of claims 6–8 without mentioning the prosecution
history). We could not have misapprehended or overlooked these arguments
or evidence because they were not presented in the Petition.
Moreover, Petitioner does not explain how the prior art disclosures
regarding the removal of hydrogen sulfide suggest the subject matter of
claims 6 to 8, all of which require removal of an organic contaminant.
Ex. 1001, 9:45 (“removing said contaminant out of said system”); id. at
10:3–4 (“wherein the contaminant is an organic contaminant”). Merely
pointing out similarities among Foutsitzis, Allen, and Jansen is not enough
to show a reason a POSITA would have used a method disclosed in one
reference, as modified by the disclosure of another reference, to remove
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contaminants discussed in a third reference. Nor is pointing out similarities
among the references sufficient to show a reasonable expectation of success
in achieving the claimed subject matter. Intelligent Bio-Systems, Inc. v.
Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016) (To prevail,
a patent challenger must show “a motivation to combine accompanied by a
reasonable expectation of achieving what is claimed in the patent-at-issue.”).
IV. CONCLUSION
After considering Petitioner’s arguments for rehearing, we determine
that Petitioner has not carried its burden of showing that we misapprehended
or overlooked any matter or that the Decision denying institution of inter
partes review was an abuse of discretion.
V. ORDER
Accordingly, it is:
ORDERED that Petitioner’s request for rehearing is denied.
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FOR PETITIONER:
Eric M. Adams
John J. Love
TUMEY LLP
eadams@tumeyllp.com
jlove@tumeyllp.com

FOR PATENT OWNER:
Russell T. Wong
Domingo M. LLagostera
BLANK ROME LLP
rwong@blankrome.com
dllagostera@blankrome.com

Cabrach J. Connor
Kevin S. Kudlac
CONNOR KUDLAC LEE PLLC
cab@connorkudlaclee.com
kevin@connorkudlaclee.com