TerraLithium LLC.

Patent Trials and Appeals Board

Aug 26, 2021

IPR2019-01602 (P.T.A.B. Aug. 26, 2021)

Trials@uspto.gov Paper 37
571.272.7822 Entered: August 26, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ENERGYSOURCE MINERALS, LLC,
Petitioner,

v.

TERRALITHIUM LLC,
Patent Owner.
____________

IPR2019-01602
Patent 9,650,555 B2
____________

Before HUBERT C. LORIN, GRACE KARAFFA OBERMANN, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
37 C.F.R. § 42.71

I. INTRODUCTION
EnergySource Minerals, LLC (“Petitioner”) filed a Petition requesting
inter partes review of claims 1–18 of U.S. Patent No. 9,650,555 B2 (Ex.
1001, “the ’555 patent”). Paper 1 (“Pet.”). TerraLithium LLC (“Patent
Owner”) did not file a Preliminary Response to the Petition.
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On March 17, 2020, we instituted an inter partes review, pursuant to
35 U.S.C. § 314(a). Specifically, we instituted an inter partes review of
claims 1–18 on all six asserted grounds of unpatentability. Paper 9 (“DI”).
After institution, Patent Owner filed a Patent Owner Response
(Paper 15, “PO Resp.”); Petitioner filed a Reply (Paper 20, “Pet. Reply”);
and Patent Owner filed a Sur-reply (Paper 24, “PO Sur-reply”).
On December 15, 2020, the parties presented arguments at oral
hearing, the transcript of which is of record. Paper 31 (“Tr.”).
Upon consideration of the record, the Board concluded that Petitioner
had not proven by a preponderance of the evidence that any challenged
claim of the ’555 patent was unpatentable under any of the asserted grounds
of unpatentability; that is, Petitioner had not proven by a preponderance of
the evidence that
 claims 1–18 are anticipated by Christopher1 (Ground I);
 claims 1–18 would have been obvious over the combination of
Christopher and Brown2 (Ground II);
 claims 1–18 are anticipated by Maimoni3 (Ground III);
 claims 1–18 would have been obvious over the combination of
Maimoni and Brown (Ground IV);

1 D. H. Christopher, The Recovery and Separation of Mineral Values from
Geothermal Brines, Bureau of Mines OFR 81-75 (Jun. 12, 1975)
(“Christopher”) (Ex. 1006).
2 U.S. Patent No. 5,358,700 to Brown (“Brown”) (Ex. 1005).
3 Arturo Maimoni, “A Cementation Process for Minerals Recovery from
Salton Sea Geothermal Brines,” Lawrence Livermore Laboratory (Jan. 26,
1982) (“Maimoni”) (Ex. 1004).
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 claims 1–18 are anticipated by Okada4 (Ground V); and,
 claims 1–18 would have been obvious over the combination of
Okada and Brown (Ground VI).
Accordingly, on March 15, 2021, the Board issued a Final Written Decision
determining that Petitioner had not demonstrated by a preponderance of the
evidence that claims 1–18 are unpatentable. Paper 32 (“Dec.”; “Decision”).
On April 14, 2021, Petitioner filed a “Request for Rehearing” of the
Decision. Paper 33 (“Req.”; “Request”).
On May 3, 2021, Patent Owner requested authorization to file a reply
to the Request. Ex. 3001. We granted Patent Owner’s request and granted
Petitioner authorization to file a sur–reply. Order of May 7, 2021, Paper 34.
These were filed on May 21 and June 7, 2021, respectively. Paper 35
(“Req. Reply”) and Paper 36 (“Req. Sur–Reply”).
A request for rehearing must identify specifically all matters that the
requesting party believes the Board misapprehended or overlooked. 37
C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will
review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).
The Request challenges our decision because:
A. “[t]he Board violated Petitioner’s right to notice because the FWD
construction of ‘treated’ is predicated on an argument PO first raised
in the Sur-Reply” (Req. 2);
B. “[t]he Board failed to address Petitioner’s Christopher anticipation
arguments based on claimed concentration ranges including ‘0’ and
‘less than’” (id. at 5);

4 JP 3691027 to Okada (“Okada”) (Ex. 1008; Ex. 1008 is a certified English
language translation of Okada (Ex. 1007) submitted by Petitioner).
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C. “[t]he Board misapprehended or overlooked Petitioner’s arguments
and evidence that demonstrate how Christopher’s Table 3 or Figure
20 disclose iron concentrations within the claimed ranges” (id. at 6);
D. “[t]he Board misapprehended or overlooked Petitioner’s argument
and evidence that demonstrate that Christopher’s process would
necessarily reduce the concentration of silica in the brine” (id. at 9);
and,
E. “[t]he Board failed to address Petitioner’s Maimoni anticipation
arguments based on claimed concentration ranges including ‘0’ and
‘less than’” (id. at 11).
II. ANALYSIS
A. “The Board violated Petitioner’s right to notice because the FWD
construction of ‘treated’ is predicated on an argument PO first raised in the
Sur-Reply” (Req. 2)
Petitioner argues that the Board predicated its construction of
“treated” on an argument first raised in the PO Sur-Reply. Req. 2–5. We
disagree.
The Board did not predicate its construction of “treated” on an
argument first raised in the PO Sur-Reply.
It was Petitioner, in the Petition, who first “propose[d] that the terms
‘treated’ and ‘geothermal brine’ should be defined as indicated” in the ‘555
patent. Pet. 9. According to the ‘555 patent:
The term “treated” in reference to a brine (e.g., “treated brine” or
“treated geothermal brine”) refers to brines that have been processed
such that the concentration of at least one metal or elemental component
has been reduced in the brine.
Ex. 1001, 7:18-24; Dec. 8. Although the Board (DI 7; Dec. 8) found it
unnecessary to adopt Petitioner’s construction given that the ‘555 patent
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expressly defined of the term “treated,” as used in the Decision, that
definition was first pointed out in the Petition, not in the PO Sur–Reply.
Thus, in arguing that Christopher describes a “treated” geothermal
brine (Pet. 22; Dec. 7), Petitioner had to show that “the brine of Table 1
must ‘have been processed such that the concentration of at least one metal
or elemental component has been reduced in the brine.’ Ex. 1001, 7:18–21.”
Dec. 9 (emphasis added). As noted in our Decision:
In that regard, Petitioner contends that Christopher’s “aging
process resulted in a reduction in ‘at least one elemental component’
(i.e., silica).” Pet. Reply 6 (emphasis added). However, this is not
buttressed with any evidence.
Petitioner has not presented any evidence showing Christopher’s
“aging” process reduces “the concentration of at least one … elemental
component” to support its contention that Christopher’s brine of Table
1 is a “treated” brine as claimed.
Accordingly, on this record, Petitioner has not shown that the
“treated” brine of the claims reads on Christopher’s “aged” brine by a
preponderance of the evidence.
Id. (emphasis added in our Decision).
According to Petitioner, “the Board seems to have [ ] relied on PO’s
late argument by finding that Christopher’s aging process did not result ‘in a
reduction in ‘at least one elemental component’ (i.e., silica).’ (FWD, 9)
(emphasis in original).” Req. 3.
That was not the case. It was Petitioner who argued that
“Christopher’s ‘aging process resulted in a reduction in ‘at least one
elemental component’ (i.e., silica).” Pet. Reply 6 (emphasis added); Dec. 9.
We did not need to rely on any allegedly new argument by Patent Owner to
assess whether a preponderance of the evidence supported Petitioner’s
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argument that the “treated” brine of the claims reads on Christopher’s
“aged” brine. Since Petitioner had “not presented any evidence showing
Christopher’s ‘aging’ process reduces ‘the concentration of at least one …
elemental component’ to support its contention that Christopher’s brine of
Table 1 is a ‘treated’ brine as claimed” (id.), we determined that Petitioner
had not satisfied its burden to show that Christopher describes a “treated”
geothermal brine.
Regarding Petitioner’s assertion that “[d]uring these proceedings,
Petitioner has submitted that when Christopher reduces silica, it necessarily
also reduces the elemental components of silicon (Si) and oxygen (O2)”
(Req. Sur–Reply 1), this is not a position that Petitioner had previously
taken. Rather, Petitioner’s position was only that “Christopher states the
silica concentration is reduced.” Pet. 23; cf. Pet. Reply 8–9. A rehearing
request is not an opportunity to raise new arguments. We could not have
overlooked or misapprehended an argument not raised prior to our decision.
Petitioner also asserts that “the Board erred by acknowledging that
Christopher discloses a reduction in the compound silica (SiO2), but
somehow fails to disclose a reduction in isolated silicon (Si) or any other
isolated ‘elemental component’” (id. at 2). However, the Board did not
acknowledge that Christopher discloses a reduction in the compound silica
(SiO2). Rather, the Board was not persuaded that Petitioner had shown that
Christopher describes a brine having a concentration of silica in the claimed
range.
As we explained, Petitioner relied on Table 3 and Figure 20 as
describing a brine having a concentration of silica in the claimed range but
“acknowledge[d] that ‘Table 3 or Figure 20 of Christopher do not recite a
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concentration for silica.’ Pet. 25; Ex. 1006, 42.” Dec. 11. Nonetheless,
Petitioner argued that Figure 20 shows Christopher’s process reducing the
iron concentration and the silica concentration would necessarily reduce
along with it. Id. at 13. In support, Petitioner “relie[d] on (a) the statement
at 19:1–6 of the ’555 patent (Ex. 1001) and (b) ¶¶ 150–157 of Dr. Gallup’s
declaration (Ex. 1003) “to show that Christopher’s process necessarily
reduces silica concentration as iron concentration reduces. Pet. 25.” Id.
Regarding (a), we determined it “d[id] not sufficiently support Petitioner’s
position that Christopher’s process would necessarily reduce the
concentration of silica in the brine.” Id. at 14. Regarding (b), we
determined it “prove[d] there is a difference between what Christopher
describes and what is claimed.” Id. In this way, in contrast to Petitioner’s
suggestion (Req. 2), the Board addressed whether Christopher describes a
brine having a concentration of silica in the claimed range as Petitioner had
argued. We find no error in these determinations that would warrant
reconsideration of our Decision.
B. “The Board failed to address Petitioner’s Christopher anticipation
arguments based on claimed concentration ranges including ‘0’ and ‘less
than’” (Req. 5)
Petitioner argues that Board failed to address certain arguments raised
by Petitioner on pages 11–12, 19–21 and 26 of the Petition and pages 3–4 of
the Reply with respect to its contention that the claims are anticipated by
Christopher. Req. 5–6.
The Board did not fail to address an argument raised by Petitioner
with respect to its contention that the claims are anticipated by Christopher
(Dec. 7–20).
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Pages 11–12 and 19–21 of the Petition and pages 3–4 of the Reply do
not raise arguments in support of its contention that the claims are
anticipated by Christopher. They argue that the claimed constituent
components should be construed as optional. Page 26 of the Petition
discusses Brown, not Christopher.
Specifically, pages 11–12 of the Petition pertain to the concentration
ranges for constituent components which, according to the claims, include
“0” as a lower limit. Based on Petitioner’s interpretation of, inter alia,
Titanium Metals Corat of America v. Banner, 778 F.2d 775 (Fed. Cir. 1985),
Petitioner proposed that “a range of a component that includes zero as a
lower limit must be construed to consider that component as optional.” Pet.
11.
Pages 19–21, in a section entitled “Introductory Arguments,” argue,
inter alia, that once the claimed constituent components are construed as
optional, claim 1 “simply requires a ‘treated geothermal brine composition,
the composition comprising a treated geothermal brine…comprising
recoverable amounts of one or more metals selected from the group
consisting of lithium, manganese, rubidium, cesium and zinc or mixtures
thereof.’” Id. at 19.
But the Board did fully address these arguments. See DI 13–16
(section entitled “Petitioner’s Introductory Arguments (Pet. 19–21)” where,
for the reasons discussed, “we decline[d] to disregard the components in the
claims in evaluating the sufficiency of Petitioner’s arguments as to the
patentability of the claimed compositions over the cited prior art.”)
Petitioner’s Reply (Pet. Reply 4) requested we reconsider our view of the
matter but it was unnecessary to do so because Petitioner did not argue that
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Christopher anticipated the claimed composition on the ground that the
claimed components are optional components in the claimed brine. Rather,
Petitioner argued that Christopher did describe a brine with the components
in the concentrations claimed. See, e.g., Pet. 23 (“Christopher states the
silica concentration is reduced from about 750 ppm in the wellhead brine to
about 40 ppm in the post-flash, treated geothermal brine. [Citing Ex. 1006,
at 8.]”).
Pages 3–4 of the Reply reargues construing the components in the
claims as optional but does not otherwise raise an argument that Christopher
anticipates the claimed composition based on construing the claimed
constituent components as optional.
Accordingly, the Board did not fail to address certain arguments
raised by Petitioner on pages 11–12, 19–21 and 26 of the Petition and pages
3–4 of the Reply with respect to its contention that the claims are anticipated
by Christopher.
C. “The Board misapprehended or overlooked Petitioner’s arguments
and evidence that demonstrate how Christopher’s Table 3 or Figure 20
disclose iron concentrations within the claimed ranges” (Req. 6)
Claim 1 calls for “a concentration of iron ranging from 0 to
300mg/kg.” Petitioner had argued that Table 3 and Figure 20 of Christopher
describes a brine having a concentration of iron in the claimed range. Dec.
17–18.
Table 3 (Req. 6–8)
Petitioner had argued that Table 3 shows a brine “having an iron
concentration of 0.0053 g/L (4.5 mg/kg)” which falls within the claimed
range. Pet. 28 (citing Ex. 1006, 12); Dec. 17. We stated that “[t]o ascertain
whether Table 3 describes iron having a concentration in the range claimed,
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the 0.0053 g/L value must be converted to mg/kg and that entails knowing
the density of the geothermal brine associated with Table 3.” Dec. 17. In
that regard, “[t]he density value that Petitioner uses, i.e., 1.18kg/L, is
unsupported by evidence.” Id.
Petitioner now argues that “the Board misapprehended or overlooked
the arguments and evidence that demonstrate Petitioner’s 1.18 kg/L density
was supported by sufficient evidence.” Req. 6–7.
According to Petitioner, the 1.18 kg/L density
is supported by Dr. Gallup’s extensive experience in the geothermal
industry and his personal analysis of Salton Sea geothermal brines from
over 15 different wells. (Petition, fn. 3; Reply, 3; Ex. 2025, 337:5-9).
He testified that the Sinclair No. 4 brine of Christopher would have had
an equivalent density, namely “very close to 1.18 based on the averages
across the field” or 1.18 ± 0.02. (Id., 337:5-13).
Req. 6.
Petitioner cites footnote 3 in the Petition but it merely states
“mg/kg=(g/L*1000)/1.18kg/L due to the density of Salton Sea geothermal
brines.” There is no evidence cited to support it.
Petitioner cites “Reply, 3; Ex. 2025, 337:5-9” and “337:5-13” (Req. 6)
but the Reply does not cite to those lines in Dr. Gallup’s Declaration. See
Pet. Reply 3 (“Ex. 2025, 336:3-5-337:2”). We were unable to locate these
lines of testimony in the Reply.
The Board could not have misapprehended or overlooked evidence
demonstrating Petitioner’s 1.18 kg/L density that was not before it.
Petitioner further argues that even if the density of the brine of
Table 3 was that of pure water (1.0 kg/L) the iron concentration in the brine
would be at most 5.3 mg/kg. Req. 7. According to Petitioner,
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“[m]athematically, any density greater than 1 drops the mg/kg
concentrations even further.” Id. Thus, according to Petitioner, “[t]he only
way the 0.0053 g/L of iron recited in Table 3 could have a concentration
greater than 5.3 mg/kg [the upper end of the claimed range] would be if the
highly saline Salton Sea geothermal brine had a density less than pure
water.” Id.
Petitioner does not identify where this argument was previously raised
(37 C.F.R. § 42.71(d)) nor have we been able to locate it. This argument
was not before us. Accordingly, we could not have misapprehended or
overlooked it.
Figure 20 (Req. 8–9)
Petitioner had argued that “[s]imilarly, in the example described in
Figure 20, the concentration of iron in the treated brine stream (3) is 1 ppm
or less. [Ex. 1006], at 42.” Pet. 28; Dec. 18. We determined based on the
evidence that “one of ordinary skill in the art reading that iron is at a
concentration of ‘1.0 ppm’ for stream 3 in Figure 20 may understand it to
refer to ppm by volume.” Dec. 18.
Accordingly, whether the “1.0 ppm” recited in Figure 20 refers
to weight is uncertain. Although it is possible that one of ordinary skill
in the art would understand it to mean ppm by weight, a case of
inherency cannot resort to relying on possibilities and probabilities. In
re Olerich, 666 F.2d 578, 581 (CCPA 1981).
Id.
Petitioner now argues that “the ppm concentrations recited in Figure
20 must refer to ppm by weight.” Req. 8 (emphasis added). In support,
Petitioner directs our attention to the discussion on page 5 [sic, 4] of the
Reply. Id. Page 4 includes a section entitled “D. ‘ppm’ and ‘parts per
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million’” which states that “[i]t is undisputed that the general convention for
ppm is weight based. (EX 1011, 110:8-111:4; Ex. 2025, 120:13-121:3).”
Pet. Reply 4.
The argument “the ppm concentrations recited in Figure 20 must refer
to ppm by weight” (Req. 8) was not before us, therefore, we could not have
overlooked it. Nevertheless, even if we take account of this new argument,
the discussion on page 4 of the Reply does not support Petitioner’s position
that one ordinary skill in the art reading Christopher would have no other
choice but to understand “1.0” “PPM” (Ex. 1006, 42) to mean parts–per–
weight. This is so because Petitioner concedes that “ppm can generally be
reported as either by weight or by volume.” Req. 8. This is consistent with
Dr. Gallup’s testimony. See Dec. 18:
According to Patent Owner, “Dr. Gallup explained [that] ppm may be
reported as ppm by weight or ppm by volume. (Ex. 2025, 119:16-25;
Ex. 2002, ¶64).” Id. [PO Resp. 20]
Because we are directed to no evidence contradicting it, we credit
Dr. Gallup’s testimony that ppm can be reported by weight or by
volume. Given this, one of ordinary skill in the art reading that iron is
at a concentration of “1.0 ppm” for stream 3 in Figure 20 may
understand it to refer to ppm by volume.
Notwithstanding the discussion on page 4 of the Reply that the
“general convention” for ppm is that it is weight based, the evidence before
us showed, as Petitioner concedes, that ppm can “generally be reported”
(Req. 8) by weight or volume. Thus, as we determined, it is possible that
one of ordinary skill in the art may understand “ppm” in Figure 20 to “refer
to ppm by volume” (Dec. 18).
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Accordingly, the Board did not misapprehend Petitioner’s argument
regarding Figure 20.
D. “The Board misapprehended or overlooked Petitioner’s argument
and evidence that demonstrate that Christopher’s process would necessarily
reduce the concentration of silica in the brine” (Req. 9)
According to Petitioner, “[a]t page 15 in the FWD, the Board
misapprehended or overlooked ¶¶ 110-114 of Dr. Gallup’s uncontested
Declaration (EX 1003), … .” Req. 9. We again disagree.
Petitioner does not identify where this evidence was previously raised
nor have we been able to locate it. Because Petitioner did not previously cite
this evidence to support its arguments, we could not have misapprehended or
overlooked it.
Petitioner also argues that the Board misapprehended or overlooked
certain information on page 9 of the Reply. Req. 10 (“Reply, 9, citing
Ex. 2025, 242:4-8” and “Reply, 9, citing Ex. 2025, 242:12-22”). Petitioner
also cites “Geothermics, 18, 97-103 (1989) (Ex. 2019)” (id.) as well certain
statements in Dr. Gallup’s Declaration (id., citing Ex. 1003, ¶¶ 163-175).
Petitioner does not identify where this evidence was previously raised
nor have we been able to locate it. For example, page 9 of the Reply does
not cite 242:4-8 and 242:12-22 of Ex. 2025. Because Petitioner did not
previously cite this evidence to support its arguments, we could not have
misapprehended or overlooked it.
E. “The Board failed to address Petitioner’s Maimoni anticipation
arguments based on claimed concentration ranges including ‘0’ and ‘less
than’” (Req. 11)
Petitioner argues that “to the extent Steam No. 18 and No. 21 of
Maimoni are interpreted as ‘disparate disclosures of the brine compositions’,
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the Board failed to specifically analyze either Stream No. 18 or No. 21
pursuant to Petitioner’s anticipation argument under the Titanium Metals and
Ineos cases.” Req. 11. Petitioner cites pages 11-12, 19-21, and 41-43 as
having “explained that both Stream Nos. 18 and 21 of Maimoni disclose …
the claimed 0 mg/kg concentrations under Titanium Metals and Ineos.” Id.
Petitioner “submits that the Board appears to have misapprehended or
overlooked the applicability of Titanium Metals and Ineos, and as a result,
abused its discretion in the FWD by failing to address those arguments.” Id.
at 11–12.
As we noted earlier with respect to this argument as applied to
Christopher, pages 11-12 and 19-21 pertain to the concentration ranges for
constituent components which, according to the claims, include “0” as a
lower limit. We specifically addressed pages 19–21 in the Institution
Decision. See DI 13–16 (section entitled “Petitioner’s Introductory
Arguments (Pet. 19–21).” These pages are not part of Petitioner’s Maimoni
anticipation arguments.
Pages 41–43 of the Petition do not present an argument that Stream
Nos. 18 and 21 of Maimoni disclose the claimed treated brine based on an
argument that iron, silica and arsenic components are optional. Rather, these
pages repeat, without amplification, Petitioner’s earlier–argued construction
of the claimed ranges; that is, “the concentration of silica is set forth as an
optional component in the treated brine composition of Claims 1 and 15”
(Pet. 41); “the concentration of arsenic is set forth as an optional component
in the treated brine composition of Claims 1 and 15” (id. at 42); and, “the
concentration of iron is set forth as an optional component in the treated
brine composition of Claims 1 and 15” (id. at 43). We fully addressed this
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proposed construction in the Institution Decision. See DI 13–16. It was
unnecessary to then further address whether Maimoni anticipated the
claimed composition based on silica, arsenic, and iron being optional
because it was not argued.
In sum, these arguments are raised for the first time by Petitioner in its
request for rehearing. We could not have misapprehended or overlooked an
argument that was not before us.
No other arguments having been raised, Petitioner’s rehearing request
of evidence and arguments Petitioner argues we have misapprehended and
overlooked is denied for the foregoing reasons.
IV. CONCLUSION
Petitioner’s Request for Rehearing is denied.

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PETITIONER:

Shawn M. Dellegar
David M. Sullivan
Terry L. Watt
CROWE & DUNLEVY, P.C.
shawn.dellegar@crowedunlevy.com
david.sullivan@crowedunlevy.com
terry.watt@crowedunlevy.com

PATENT OWNER:

Justin L. Krieger
Nicoletta M. Kennedy
Troy Petersen
Jennifer L. Blackburn
KILPATRICK TOWNSEND & STOCKTON LLP
jkrieger@kilpatricktownsend.com
nkennedy@kilpatricktownsend.com
tpetersen@kilpatricktownsend.com
jblackburn@kilpatricktownsend.com