Sci. Design Co. v. Saint-Gobain Ceramics & Plastics, Inc.

• Docket Number: IPR2022-00433,Patent 7,825,062 B2
• Decision Date: 03 August 2023
• Parties: SCIENTIFIC DESIGN COMPANY, INC., Petitioner, v. SAINT-GOBAIN CERAMICS &PLASTICS, INC, Patent Owner.
• Court: Patent Trial and Appeal Board

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SCIENTIFIC DESIGN COMPANY, INC., Petitioner,
v.
SAINT-GOBAIN CERAMICS &PLASTICS, INC, Patent Owner.

No. IPR2022-00433

Patent 7,825,062 B2

United States Patent and Trademark Office, Patent Trial and Appeal Board

August 3, 2023

JUDGMENT Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C. § 318

FOR PETITIONER: Benjamin Hsing Justin Oliver VENABLE LLP

FOR PATENT OWNER: W Todd Baker Gregg LoCascio Michael Pearson KIRKLAND & ELLIS LLP

Before KRISTINA M. KALAN, JEFFREY W. ABRAHAM, and ELIZABETH M. ROESEL, Administrative Patent Judges.

JUDGMENT

JEFFREY W. ABRAHAM, Administrative Patent Judge.

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I. INTRODUCTION

Scientific Design Company, Inc. ("Petitioner") filed a Petition (Paper 2, "Pet.") requesting inter partes review of claims 1-29 of U.S. Patent No. 7,825,062 B2 (Ex. 1001, "the '062 patent"). Saint-Gobain Ceramics &Plastics, Inc. ("Patent Owner") filed a Preliminary Response (Paper 6).

On August 8, 2022, we instituted inter partes review of all of the challenged claims based on all of the grounds identified in the Petition. Paper 7. After institution, Patent Owner filed a Response to the Petition (Paper 12, "PO Resp."), Petitioner filed a Reply to Patent Owner's Response (Paper 15, "Reply"), and Patent Owner filed a Sur-reply (Paper 16, "Sur-reply").

On May 10, 2023, the parties presented arguments at an oral hearing for this proceeding. We have entered a transcript of the hearing into the record. Paper 24 ("Tr.").

We have jurisdiction under 35 U.S.C. § 6. We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a). Based on the record before us, we conclude that Petitioner has shown by a preponderance of the evidence that claims 1-29 of the '062 patent are unpatentable.

II. BACKGROUND

A. Related Proceedings

Petitioner identifies IPR2021-01537, involving U.S. Patent No. 8,084,390 B2 ("the '390 patent"), IPR2022-00158, involving U.S. Patent No. 8,357,813 B2 ("the '813 patent"), and IPR2022-00159, involving U.S. Patent No. 8,357,825 B2 ("the '825 patent"). Pet. ix. Petitioner states that the '062 patent and the '390 patent have the same

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inventive entity and same filing date, and "[m]any of the limitations recited in the claims of the '390 patent are identical to those recited in the '062 patent." Pet. ix. Petitioner also states that the '813 and '825 patents are in the same family as the '390 patent. Pet. ix. Additionally, Petitioner states that "European Patent EP1901842-the European counterpart to the '062 patent-was revoked by the European Patent Office . . . over, inter alia, a combination of prior art references, which includes Liu and Lockemeyer." Pet. x (citing Ex. 1017).

Patent Owner states that it is not aware of any related matters. Paper 4, 1.

B. Real Parties-In-Interest

Petitioner identifies itself as the real party-in-interest. Pet. ix. Patent Owner identifies itself as a real party-in-interest. Paper 4, 1.

C. The '062 Patent

The '062 patent is titled "Catalyst Carrier and a Process for Preparing the Catalyst Carrier," and issued on November 2, 2010. Ex. 1001, codes (45), (54). The '062 patent is directed to a carrier for olefin epoxidation catalysts, particularly:

[a] carrier, which comprises non-platelet alumina and/or a bond material, has a surface area of at least 1.3 m2/g, a total pore volume and a pore size distribution such that at least 80% of the total pore volume is contained in pores with diameters in the range of from 0.1 to 10 μm and at least 80% of the pore volume contained in the pores with diameters in the range of from 0.1 to 10 μm is contained in pores with diameters in the range of from 0.3 to 10 μm, and a process for the preparation of a carrier

Ex. 1001, code (57), 1:10-11.

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The '062 patent explains that "catalyst performance may be assessed on the basis of selectivity, activity and stability of operation," wherein selectivity refers to the fraction of the converted olefin yielding the desired olefin oxide. Ex. 1001, 2:31-34. According to the '062 patent, "the longer the selectivity can be maintained at a high level and the epoxidation can be performed at an acceptably low temperature, the longer the catalyst charge can be kept in the reactor and the more product is obtained." Ex. 1001, 2:43-47.

The catalysts of the '062 patent purportedly "show excellent activity and selectivity, and they are believed to provide significant improvements in stability under conditions of commercial operation." Ex. 1001, 3:26-29. The '062 patent states that these advantages are obtained "by maximizing for carriers having a surface area of at least 1.3 m2/g and non-platelet alumina and/or a bond material the number of pores having a diameter in the range of 0.3 to 10 μm, in particular by minimizing the pore volume in pores having diameters less than 0.3 μm." Ex. 1001, 3:18-23.

By way of background, the '062 patent states that "[c]arriers for olefin epoxidation catalysts can be made by different processes that result in carriers having distinct morphologies." Ex. 1001, 1:36-38. A "first process" known in the art produces a carrier with a platelet morphology, and uses a fluorine recrystallizing agent to convert alumina to alphaalumina having at least one substantially flat surface. Ex. 1001, 1:38-46. This process produces fluoride mineralized alpha-alumina ("FMA") carriers. Ex. 1001, 1:43-46; PO Resp. 4. A "second process" produces a "conventional" carrier (i.e., a carrier comprising non-platelet alumina), and does not use a fluorine recrystallizing agent. Ex. 1001, 1:67-2:3. The '062

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patent states that the "second process typically uses small amounts of one or more bond materials to facilitate bonding of the alumina particles to one another," and that "[t]he morphology of the carrier made by the second process impacts physical characteristics of the carrier, such as surface area, pore size distribution and particle size." Ex. 1001, 2:9-17. According to the '062 patent, the bond material may comprise an alkali metal silicate or an alkaline earth metal silicate and may further comprise a hydrated alumina, a titanium component, and/or a zirconium component. Ex. 1001, 6:2-11, 7:8-67.

D. Illustrative Claim

Claim 1 is representative of the challenged claims, and is reproduced below:

1. A carrier comprising alumina and a bond material, said carrier comprising a surface area of at least 1.3 m2/g, a median pore diameter of more than 0.8 μm. and a total pore volume and a pore size distribution wherein at least 80% of the total pore volume is contained in pores with diameters in the range of from 0.1 to 10 μm. and at least 80% of the pore volume contained in the pores with diameters in the range of from 0.1 to 10 μm is contained in pores with diameters in the range of from 0.3 to 10 uni.

Ex. 1001, 18:22-30. Claim 29 is the only other independent claim challenged. Claim 29 does not require a bond material, and is directed to a carrier having the properties recited in claim 1 that is "produced by a process comprising the steps of forming a mixture comprising alumina; shaping the mixture into formed bodies; and firing the bodies at a temperature of from 1250 to 1550° C." Ex. 1001, 20:25-35.

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E. Unpatentability Challenges

Petitioner presents the following challenges in the Petition:

Ground	Reference(s)	Basis[1]	Claim(s) Challenged
1	Liu[2]	§ 102/§ 103	1-5, 8, 10, 16, 17, 23-27
2	Liu	§ 103	28
3	Liu, Lockemeyer[3]	§ 103	6-10, 16-18
4	Liu, Lockemeyer-II[4]	§ 103	29
5	Lockemeyer, Liu	§ 103	1-10, 16-18, 23-29
6	Lockemeyer, Liu, Lockemeyer-II, Kowaleski[5]	§ 103	11-15, 19-22

Petitioner relies on declarations from Gary L. Haller, Ph.D. Ex. 1014; Ex. 1038. Patent Owner deposed Dr. Haller and filed a transcript of the deposition as Exhibit 2008 in this proceeding.

Patent Owner relies on the declaration of William M. Carty, Ph.D. Ex. 2006. Petitioner deposed Dr. Carty, and filed the transcript of the deposition as Exhibit 1037 in this proceeding.

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III. ANALYSIS

"In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable." Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes review petitions to identify "with particularity . . . the evidence that supports the grounds for the challenge to each claim")). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).

A claim is unpatentable under 35 U.S.C. § 103(a) 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 question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness.^[6] Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).

To show obviousness, it is not enough to merely show that the prior art includes separate references covering each separate limitation in a

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challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). "This is so because inventions in most, if not all, instances rely upon...