Mexichem Amanco Holding S.A. de C.V.v.Honeywell International, Inc.

Patent Trial and Appeal Board

Feb 26, 2015

11850028 (P.T.A.B. Feb. 26, 2015)

Trials@uspto.gov Paper 50
Tel: 571-272-7822 Entered: February 26, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
MEXICHEM AMANCO HOLDINGS S.A. de C.V.,
Petitioner,

v.

HONEYWELL INTERNATIONAL, INC.,
Patent Owner.
____________

Case IPR2013-00576
Patent 8,444,874 B2
_______________

Before LINDA M. GAUDETTE, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Mexichem Amanco Holdings S.A. de C.V. (“Mexichem”) filed a corrected
Petition (Paper 7, “Pet.”) to institute an inter partes review of claims 1–15 of U.S.
Patent No. 8,444,874 B2 (Ex. 1001, “the ’874 patent”). 35 U.S.C. § 311.
Honeywell International, Inc. (“Honeywell”) filed a Preliminary Response (Paper
11, “Prel. Resp.”). We determined that the information presented in the Petition
demonstrated that there was a reasonable likelihood that Petitioner would prevail in
challenging claims 1–15 of the ’874 patent as unpatentable. Paper 13 (“Dec. to
Inst.”), 2, 19. Pursuant to 35 U.S.C. § 314, we instituted this proceeding on
February 27, 2014, to review whether claims 1–15 are unpatentable on the ground
that such claims would have been obvious over Inagaki,
1
Konzo,
2
and Bivens,
3

under 35 U.S.C. § 103. Dec. to Inst. 19.
After institution of trial, Patent Owner filed a Patent Owner Response.
Paper 21 (“PO Resp.”). Petitioner subsequently filed a Reply to the Response.
Paper 27 (“Reply”). Patent Owner also filed a Motion to Exclude seeking to
exclude certain evidence. Paper 38. Petitioner filed an Opposition to Patent
Owner’s Motion to Exclude (Paper 42), and Patent Owner filed a Reply (Paper 44).
An oral hearing was held on October 16, 2014. A transcript of the hearing
has been entered into the record. Paper 49 (“Tr.”).

1
Inagaki et al., JP-04-110388 , published April 10, 1992 (“Inagaki”) (Ex. 1002)
(English translation Ex. 1003, Ex. 1068).
2
Konzo et al., “Winter Air Conditioning,” (The Industrial Press 1958), pp. 590–
596 (“Konzo”) (Ex. 1004).
3
Bivens et al., U.S. Pat. No. 6,783,691 B1, issued Aug. 31, 2004 (“Bivens”)
(Ex. 1005).
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We have statutory authority under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a). Petitioner has shown by a
preponderance of the evidence that claims 1 and 3–15, but not claim 2, of the ’874
patent are unpatentable. Patent Owner’s Motion to Exclude is dismissed-in-part
and denied-in-part.
A. The ’874 Patent (Ex. 1001)
The ’874 patent relates to methods of transferring heat in a heat transfer
system, such as a refrigerator or air conditioning system. Ex. 1001, 1:21–35. In
the past, such systems have used compositions comprising chlorofluorocarbons
(“CFCs”) or hydrochlorofluorocarbons (“HCFCs”), which have ozone-depleting
properties. Id. at 1:62–2:4. The methods of the ’874 patent use alternative
compounds that do not deplete the ozone layer, i.e., hydrofluorocarbons (“HFCs”),
in combination with lubricants. Id. at 2:8–12, 2:25–42.
In relation to HFCs, the ’874 patent describes fluoroalkene compounds
having Formula I (XCFzR3-z, where X is a C2, C3, C4 or C5 unsaturated, substituted
or unsubstituted, radical, each R is independently Cl, F, Br, I or H, and z is 1 to 3).
Id. at 3:43–53. The ’874 patent describes compounds of Formula I comprising
propenes, butenes, pentanes, and hexanes, and states that “[a]mong the propenes,
tetrafluoropropenes (HFO-1234) and fluorochlorop[ro]penes . . . are especially
preferred in certain embodiments.” Id. at 4:1–11, 22–33.
Regarding tetrafluoropropenes (“HFO-1234”), the ’874 patent discusses
specific isomers of 1,3,3,3-tetrafluoropropene (“HFO-1234ze”), cis-HFO-1234ze
and trans-HFO-1234ze. Id. at 4:22–33, 6:54–59; see also Ex. 1008 ¶¶ 16, 19. In
this context, the ’874 patent further states:
Although the properties of (cis)HFO-1234ze and (trans)HFO-1234ze
differ in at least some respects, it is contemplated that each of these
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compounds is adaptable for use, either alone or together with other
compounds including its stereo isomer, in connection with each of the
applications, methods and systems described herein. For example,
(trans)HFO-1234ze may be preferred for use in certain systems
because of its relatively low boiling point (-19º C.), while (cis)HFO-
1234ze, with a boiling point of +9º C., may be preferred in other
applications. Of course, it is likely that combinations of the cis- and
trans-isomers will be acceptable and/or preferred in many
embodiments. Accordingly, it is to be understood that the terms
“HFO-1234ze” and 1,3,3,3-tetrafluoropropene refer to both stereo
isomers, and the use of this term is intended to indicate that each of
the cis- and trans-forms applies and/or is useful for the stated purpose
unless otherwise indicated.
Ex. 1001, 6:39–59.
In addition, the ’874 patent describes HFC compositions containing other
additional components. Such components include “Difluoromethane (HFC-32)”
and/or “1,1,1,2-Tetrafluoroethane (HFC-134a),” among others. Id. at 8:4–27.
Other components also may include “a lubricant, generally in amounts of from
about 30 to about 50 percent by weight of the composition.” Id. at 10:12–20; see
also id. at 2:23–42 (stating “it is highly desirabl[e] for refrigeration fluids to be
compatible with the lubricant utilized in the compressor unit, used in most
refrigeration systems”). The ’874 patent describes “[c]ommonly used refrigeration
lubricants such as Polyol Esters (POEs) and Poly Alkylene Glycols (PAGs), PAG
oils, silicone oil, mineral oil, alkyl benzenes (ABs) and poly(alpha-olefin) (PAO).”
Id. at 10:28–32.
Six examples in the ’874 patent assess features of certain
tetrafluoropropenes, including HFO-1225ye, trans-HFO-1234ze, cis-HFO-1234ze,
and HFO-1234yf. Id. at 23:58-29:67. Example 2 describes the miscibility of
HFO-1225ye and HFO-1234ze when combined with different lubricants at
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temperatures ranging from -50º C to 70º C, using 5, 20, and 50 weight percent of
lubricants, such as: (i) mineral oil, (ii) alkyl benzene, (iii) ester oil (Mobil EAL 22
cc and Solest 120, i.e., polyol esters), (iv) polyalkylene glycol (“PAG”) oil, or (v)
poly(alpha-olefin) oil. Id. at 24:61–25:11. As stated in Example 2, the
“polyalkylene glycol and [polyol] ester oil lubricants were judged to be miscible in
all tested proportions over the entire temperature range,” except HFO-1225ye
mixtures under certain conditions. Id. at 25:21–30.
B. Illustrative Claims
Claims 1, 9, and 12 are independent. Claim 1 is reproduced below:
1. A method of transferring heat to or from a body in a vapor
compression system comprising:
(a) providing in at least a portion of said system a heat transfer
composition comprising at least about 5% by weight of trans-1,3,3,3-
tetrafluoropropene and lubricant comprising polyol ester; and
(b) causing heat to be transferred to or from trans-1,3,3,3-
tetrafluoropropene and into or from said body by heat transfer contact
between said trans-1,3,3,3-tetrafluoropropene and the body.
Id. at 30:1–11 (emphasis added).
Independent claim 9 is reproduced below:
9. A method of cooling a body in a heat transfer system by
transferring heat from the body to at least a portion of a heat transfer
fluid contained in the system, the method comprising;
(a) providing in the system a heat transfer fluid comprising at least
about 5% by weight of trans-1,3,3,3-tetrafluoropropene and from
about 30 by weight to about 50% by weight of polyol ester lubricant,
wherein in at least a portion of said system said trans-1,3,3,3-
tetrafluoropropene is in a gas phase at a first pressure and at a first
temperature;
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(b) removing heat from said trans-1,3,3,3-tetrafluoropropene provided
at said first temperature by condensing at least a portion of said trans-
1,3,3,3-tetrafluoropropene to produce at least a portion of said heat
transfer fluid in a liquid phase at about said first pressure;
(c) reducing the pressure of at least a portion of said liquid heat
transfer fluid from step (b) to produce a heat transfer fluid at a second
temperature substantially below said first temperature and a second
pressure substantially below said first pressure;
(d) cooling the body by bringing said body into heat transfer contact
with said heat transfer fluid at about said second temperature
produced in step (c); and
(e) providing at least a portion of said fluid at said first pressure in
said step (a) by compressing said heat transfer fluid provided in step
(d) from about said second pressure to about said first pressure.
Id. at 30:45–31:4 (emphasis added). Independent claim 12 is similar to claim 9,
but, inter alia, refers to “a heat transfer fluid comprising at least about 5% by
weight of trans-1,3,3,3-tetrafluoropropene and polyol ester lubricant.” Id. at 31:9–
32:11.
II. ANALYSIS
A. Claim Construction
Consistent with the statute and legislative history of the America Invents
Act, the Board interprets claims using the “broadest reasonable construction in
light of the specification of the patent in which [they] appear[].” 37 C.F.R.
§ 42.100(b); Office Patent Trial Practice Guide (“Practice Guide”),
77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). There is a “heavy presumption” that
a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
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In our Decision to Institute, we construed the term “trans-1,3,3,3-
tetrafluoropropene” recited in all challenged independent claims. Dec. to Inst. 7.
We concluded that the broadest reasonable interpretation of that term, in view of
the Specification of the ’874 patent, encompassed at least “trans-1,1,1,3-
tetrafluoropropene,” “trans-1,3,3,3-tetrafluoro-1-propene,” and “trans-HFO-
1234ze.” Id.; Ex. 1001, 4:22–33, 6:37–59.
Petitioner contends, relying on a Declaration by Dr. Stuart Corr (Ex. 1008),
that the trans-form of 1,3,3,3-tetrafluoropropene, which may be denoted “trans-
HFO-1234ze” or “HFO-1234ze(E),” also may be “referred to as an HFO
(hydrofluoroolefin), HFC (hydrofluorocarbon) or R (refrigerant).” Pet. 11–12
(citing Ex. 1008 ¶ 18). Thus, according to Petitioner, trans-1,3,3,3-
tetrafluoropropene may be called “HFO-1234ze(E),” “HFC-1234ze(E),” “trans-
HFO-1234ze,” or “trans-HFC-1234ze,” among other names. Id. at 12.
Patent Owner disagrees that the term “HFC-1234ze” or “trans-HFC-1234ze”
describes unsaturated fluorocarbons such as trans-1,3,3,3-tetrafluoropropene. PO
Resp. 13. Relying on Declarations by Dr. Ian Shankland (Ex. 2041) and Dr.
Donald Bivens (Ex. 2040), Patent Owner contends that an ordinary artisan would
have understood “HFC” and “HFO” to have separate and distinct meanings. Id.
(citing (Ex. 2041 ¶ 14) (Ex. 2040 ¶ 16)). Thus, Patent Owner contends, an
ordinary artisan would not have referred to trans-1,3,3,3-tetrafluoropropene as
“HFC-1234ze” or “trans-HFC-1234ze.” PO Resp. 13. Instead, according to Patent
Owner, an ordinary artisan would have understood the term “HFC” in the prior art,
such as in Bivens, to refer to saturated refrigerants only, not unsaturated
fluorocarbons, such as the recited HFO. Id. at 13–14.
In support, Patent Owner also cites Petitioner’s “white paper,” and points us
to where it states that “most of the potential alternatives to HFC 134a that are
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actively being looked at as potential industrial refrigerants belong to the class of
hydrofluoroolefins (HFOs),” which have “a significant number of different
molecules and isomers possible—more so than with the simpler HFCs.” Id.; Ex.
2005, 5. Patent Owner also points to where the white paper refers to
“Hydrofluoroa[l]kane (HFC) propellants,” which, according to Patent Owner,
indicates that “HFC” refers to saturated compounds. PO Resp. 14; Ex. 2005, 3.
Patent Owner also cites “Factsheet 19” prepared by a “European Fluorocarbons
Technical Committee” (“EFCTC”), dated June 2011, which states that “HFOs
contain hydrogen, fluorine and carbon like the HFCs, but they are distinctly
different,” i.e., they “are olefins.” PO Resp. 14–15; Ex. 2009. Patent Owner,
relying on Dr. Bivens’ Declaration, also refers to a website of EFCTC, “accessed
4/15/2014,” that also lists “HFCs” and “HFOs” separately under a heading of
“families of fluorinated gases.” PO Resp. 14–15; Ex. 2040 ¶ 19.
Our reading of Petitioner’s “white paper” does not persuade us that an
ordinary artisan would not have referred to a HFO as a HFC. Moreover, while we
acknowledge statements by EFCTC as noted by Patent Owner, made well after the
effective filing date of the ’874 patent, we find disclosures in the ’874 patent itself
to be more persuasive on this issue. As Petitioner notes, the ’874 patent expressly
defines HFCs as “hydrofluorocarbons” (not limited to “hydrofluoroalkane,” a
species of hydrofluorocarbons), and states that HFCs includes HFOs, such as HFO-
1243zf. Ex. 1001, 2:12, 2:61–67; Reply 4–5. In addition, as both parties
acknowledge, Example 3 in the ’874 patent describes certain HFOs as “HFC-
1234ze, HFC-1234zf, HFC-1225ye.” PO Resp. 43 (emphases added); Reply 5.
We are not persuaded that the descriptions in the ’874 patent of HFCs as
“hydrofluorocarbons,” and the use of “HFC” in nomenclature as encompassing
HFO compounds, correspond to “sloppy editing,” as Patent Owner contends. PO
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Resp. 43. Petitioner points us to evidence indicating that it was common to refer to
HFOs as HFCs. Reply 4–5 (citing Ex. 1070/1071 (testimony by Dr. Bivens),
109:22–110:16, and numerous patent references).
We conclude that a preponderance of the evidence establishes that, in the
relevant time frame, an ordinary artisan would have understood “HFC” to refer to a
hydrofluorocarbon, i.e., a compound comprising hydrogen, fluoride, and carbon,
and that a HFO, such as trans-1,3,3,3-tetrafluoropropene, would have been called a
hydrofluorocarbon, and one would have used “HFC” in nomenclature referring to
HFOs.
B. Obviousness over Inagaki, Konzo, and Bivens
Petitioner contends that claims 1–15 of the ’874 patent would have been
obvious over Inagaki, in view of Konzo and Bivens. Pet. 3, 7–11, 30–49.
1. Inagaki (English translation Ex. 1003/1068) 4, 5
Inagaki relates to fluids for heat transfer, such as compositions used in “a
refrigerator, heat pump or the like,” and especially those fluids that “have fewer or
no destructive effects against the ozone layer.” Ex. 1003, 27–28; Ex. 1068, 2356–
57. Inagaki discloses a compound having the formula “C3HmFn,” where “m= an
integer of 1 to 5, n= an integer of 1 to 5 and the sum of m and n is equal to 6,” and
“containing one double bond in its molecular structure.” Ex. 1003, 28; Ex. 1068,

4
Exhibit 1003 and other exhibits refer to page numbers in the following format:
“MXC-000027.” We refer to such pages by their last non-zero numbers, e.g.,
“27.”
5
We refer to Exhibits 1003 and Exhibit 1068 in this Decision, although the
Petition cites only Exhibit 1003. As discussed below, we find Exhibit 1003 to
provide the same teachings in relevant parts as Exhibit 1068, cited in Petitioner’s
Reply (Reply 13, n.2) and the translation of Inagaki submitted by Patent Owner
during prosecution of the ’874 patent (Ex. 1017, 1004, 1117–1124).
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2357. In this context, Inagaki discloses five specific compounds, Embodiments I–
IV (also called Embodiments 1-4) and Embodiment 5, including Embodiment II
(Embodiment 2), i.e., “F3C-CH=CHF (1,3,3,3-tetrafluoro-1-propene),” with a
boiling point of -16.0º C. Id., see also Ex. 1003, 29–30; Ex. 1068, 2358–59
(describing results with Embodiments 1–5).
Inagaki also discloses “mixtures of C3HmFn and at least one compound
selected from a group consisting of R-22 (CHClF2), R-32 (CH2F2), R-124
(CF3CHClF), R-125 (CF3CF2H), R-134a (CF3CFH2), R-142b (CH3CClF2), 143a
(CF3CH3) and R-152 (CHF2CH3),” which can enhance freezing capacity and
performance. Id. Inagaki discloses that such mixtures “do not have any problem
with respect to their general characteristics (e.g., compatibility with
lubricants . . .).” Ex. 1003, 29; Ex. 1068, 2358.
2. Konzo (Ex. 1004)
Konzo discloses a heat pump process used in a refrigerator. Ex. 1004, 590.
Konzo discloses: (a) a compressor that “pumps” a gas refrigerant from a low
pressure to a high pressure, which increases the gas temperature; (b) a condenser
that cools the hot gas, which involves heat transfer, and where the hot gas is
condensed to a warm liquid while still at high pressure; (c) an expansion valve for
the warm liquid; and (d) an evaporator, or cooling coil, which is maintained at a
low temperature by expanding gases inside. Id. at 590–92. Konzo further
discloses that “[a]ny food stored in the refrigerator . . . is cooled by the transfer of
heat to the evaporator. The gas that passes through the evaporator is warmed by
the food and is returned to the compressor.” Id. at 592.
3. Bivens (Ex. 1005)
Bivens discloses refrigerant compositions. Ex. 1005, 2:28–31. In its
background section, Bivens states generally that “[h]ydrofluorocarbons (HFCs) are
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gaining acceptance as replacements for CFCs and HCFCs as HFCs contain no
chlorine and, therefore, have zero ozone depletion potential.” Id. at 1:33–36.
Bivens further states:
Mineral oils and alkylbenzenes have been conventionally used as
lubricants in CFC-based refrigeration systems. However, the lack of
solubility of these lubricants in HFC-based refrigerants has precluded
their use and necessitated development and use of alternative
lubricants for HFC-based refrigeration systems, which utilize
polyalkylene glycols (PAGs) and polyol esters (POEs). A lubricant
change from mineral oil or alkyl benzene to POE or PAG lubricants
(which increases expenses in the refrigeration indusrty[sic]) is
required when the HFC mixtures are used to replace CFC-based
refrigerants.
Id. at 1:37–47. Thus, Bivens teaches that it previously was well known to use
polyalkylene glycols (“PAGs”) or polyol esters (“POEs”), but not mineral oils or
alkylbenzenes, as lubricants in “HFC-based refrigerants.” Id.
In the same background section, Bivens further teaches that “[w]hile the
PAGs and POEs are suitable lubricants for HFC-based refrigeration systems, they
are extremely hygroscopic,” which leads to “absorbed moisture,” which can cause
problems such as the formation of “acids which causes corrosion” and “intractable
sludges.” Id. at 1:47–54. In addition, Bivens teaches that “PAG and POE
lubricants are considerably more expensive than the hydrocarbon lubricants,” i.e.,
mineral oils and alkylbenzenes. Id. at 1:56–57.
Bivens teaches that a need existed to resolve the “solubility problem” of
mineral oils and alkylbenzenes “so that the refrigeration industry may utilize
mineral oil and alkylbenzene lubricants with HFC-based refrigerants.” Id. at
1:59–62. Bivens further teaches a need for “compositions that are non-ozone
depleting, nonflammable, and essentially non-fractionating azeotrope-like
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compositions.” Id. at 2:17–44. Bivens then discloses “compositions of the present
invention” that satisfy “the aforementioned needs confronting the refrigeration
industry,” i.e., azeotrope-like compositions” consisting essentially of HFC-32
(difluoromethane, CH2F2), HFC-125 (pentafluoroethane, CF3CHF2), HFC-134a
(1,1,1,2-tetrafluoroethane, CF3CHF2), and a hydrocarbon selected from a particular
group, e.g., n-butane. Id. at 2:27–59, 1:13–18.
4. Analysis—claims 1, 3, 4, 6, 7, 12–14
Petitioner contends that Inagaki, in view of Konzo, expressly teaches most
elements of the challenged claims. For example, Petitioner states “the system
depicted in Inagaki is readily recognized by the skilled person as a vapor
compression system, as demonstrated by Konzo.” Pet. 30. Petitioner also
contends that Inagaki expressly teaches “F3C-CH=CHF (1,3,3,3-tetrafluoro-1-
propene)” as a component of a heat transfer composition, i.e., a compound that
“reads directly on the trans-1,3,3,3-tetrafluoro-1-propene” recited in every
challenged claim. Pet. 31–32 (citing Ex. 1003, 28 (Embodiment II); Ex. 1068,
2357). Petitioner further contends that Inagaki teaches that C3HmFn compounds,
such as 1,3,3,3-tetrafluoropropene (Embodiment II), may be mixed with other
compounds, such as R-32 (CH2F2) or R-134a (CF3CFH2), and such mixtures do not
have problems with respect to general characteristics, such as compatibility with
lubricants. Id. at 32 (citing Ex. 1003, 28–29; Ex. 1068, 2357-58).
Petitioner acknowledges that “Inagaki does not expressly recite a lubricant
or class of lubricants to use with trans-1,3,3,3-tetrafluoropropene.” Pet. 33–34. In
other words, while Inagaki refers to lubricants generally, the reference does not
disclose a polyol ester (“POE”) lubricant in particular, as recited in the challenged
claims. Petitioner relies on Bivens, however, to establish that it was known that
POEs were commonly used lubricants for HFC-based refrigeration systems. Id. at
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33–34 (citing Ex. 1005, 1:37–65). In this regard, Petitioner contends that HFOs
are a subset of HFCs, and, therefore, trans-1,3,3,3-tetrafluoropropene (a HFO) is a
HFC (as described in Bivens generally). Id. at 34. According to Petitioner, it was
“simply a matter of routine to test the particular POE for compatibility with the
trans-R1234ze.” Id.
In response, Patent Owner contends that Inagaki gives “no particular
direction” to select Embodiment II, and indicates that “capacity” results for
Embodiment II are “less attractive” than those for Embodiment I (F3C-CH=CH2).
PO Resp. 18 (citing Ex. 2040 ¶ 29). Patent Owner also contends that Inagaki
mentions using “machine oil” with a mixture of propenes (such as Embodiment II)
and CFCs or HFCs, but provides no teaching of any specific machine oil, such as
POEs. Id. at 18–20; see Ex. 1003, 28; Ex. 1068, 2357 (stating that “solubility in
cooling machine oil may be improved by mixing cooling media having large
evaporative latent heat” with “mixtures of C3HmFn,” such as F3C-CH=CHF and R-
32) (emphasis added). In addition, Patent Owner contends that the “only possible
direction Inagaki offers is that CFCs or saturated HFCs are included in mixtures of
the propenes and machine oil to help with solubility . . . thus implying that
propenes and machine oil alone [are] not miscible,” which is “supported by
Inagaki’s use of an oil separator in Figure 2.” Id. at 19 (citing Ex. 1003, 28–29,
32; Ex. 1068, 2357–58, 2361; Ex. 2040 ¶ 33; Ex. 2042 ¶¶ 6–8).
Patent Owner acknowledges that Inagaki teaches that mixtures of C3HmFn
(such as Embodiment II) and another compound (such as R-32, R-125, or R-134a)
“do not have any problem with respect to their general characteristics (e.g.,
compatibility with lubricants, non-erodibility against materials etc.).” Ex. 1003,
29; Ex. 1068, 2358 (emphasis added); PO Resp. 20. Patent Owner contends,
however, that Inagaki does not explain what it means by “compatibility,” and does
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not discuss “miscibility.” Id. Patent Owner also contends that the use of the oil
separator in Figure 2 of Inagaki indicates that “that any refrigerant/lubricant
combinations potentially used were not miscible.” Id. at 20–21 (citing Ex. 2040
¶ 34; Ex. 2042 ¶¶ 6–8, 14–15). In addition, Patent Owner contends that an
ordinary artisan could not have predicted whether a refrigerant/lubricant
combination was miscible. Id. at 21–22 (citing Ex. 2042 ¶¶ 14–16, 20; Ex. 2040
¶¶ 30–32).
Regarding Bivens, Patent Owner contends that the reference is directed to
“azeotrope-like refrigerant compositions consisting essentially of three specific
saturated refrigerants (HFCs) and one saturated hydrocarbon.” PO Resp. 22.
According to Patent Owner, Bivens focuses on figuring out how to use mineral oil
and alkylbenzene lubricants with HFC-based refrigerants. Id. at 22–23. In
addition, Patent Owner contends that Bivens’ background section discusses the
benefits of using HFCs, but without exemplifying any specific HFC. Id. at 23.
Patent Owner then again argues, as discussed above, that one would not have
considered HFOs to be a subset of HFCs, and therefore would not have considered
Bivens to refer to HFOs where it discusses HFCs. Id. at 23–24, 40–45.
Patent Owner also contends that Bivens taught away from using “PAGs and
POEs as lubricants because they are ‘extremely hygroscopic’ which can lead to
absorbed moisture leading to problems such as formation of acids which cause
corrosion of the refrigeration system and formation of intractable sludges.” Id. at
25; Ex. 1005, 1:47–53. In addition, Patent Owner contends one needed “extensive
teaching and research” to “optimize POE-type refrigerant lubricants,” and that
“properties of combined lubricants and refrigerants such as stability, flammability,
toxicity, reactivity, and miscibility were unpredictable and needed to be tested.”
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PO Resp. 26 (citing Ex. 1008 ¶¶ 21–22), 38–39 (citing Ex. 2020, 20:17–24, 21:11–
14, 21:19–22:2, 51:24–52:6).
Based on the above-mentioned contentions, Patent Owner argues that
Inagaki fails to disclose POE lubricant and teaches away from its use with trans-
HFO-1234ze, and that Bivens fails to disclose trans HFO-1234ze and teaches away
from its use with POE lubricant. PO Resp. 27. Patent Owner further contends that
“reactive, toxic and flammable” characteristics of the compounds taught away
from their combination, and therefore, one had no reasonable expectation of
success in combining trans-HFO-1234ze with POE lubricant. Id. at 27, 32–37.
In further support, Patent Owner contends that Inagaki taught using “R-12,
R-22 and R-502 as control examples,” and that the lubricant of choice for R-12, R-
22 and R-502 was mineral oil or alkyl benzene. Id. at 28 (citing Ex. 2042 ¶¶ 11,
14). Inagaki also teaches using R143a (among a group), and Patent Owner
contends that “it was well known that R143a was not compatible with POE
lubricants.” Id. at 29–30 (citing Ex. 2012, 386; Ex. 2020, 281:22–282:3). Patent
Owner also again points to where Bivens teaches that POEs “are extremely
hygroscopic,” and discusses how HFOs and POE lubricants were known to be
reactive and unpredictable, and HFOs were perceived to be toxic and flammable.
Id. at 30 (citing Ex. 1005, 1:61–62), 31–40.
In its Response, Patent Owner does not dispute that Inagaki discloses F3C-
CH=CHF (1,3,3,3-tetrafluoro-1-propene), i.e., 1,3,3,3-tetrafluoropropene as recited
in the challenged claims, in Embodiment II. As discussed in our Decision to
Institute, Inagaki does not describe expressly the trans isomer, as recited in the
claims. The record before us, however, indicates that an ordinary artisan would
have understood that Embodiment II constituted a mixture of two isomers, cis and
trans. As also noted in our Decision to Institute, evidence cited by Patent Owner,
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as well as the ’874 patent itself, indicates that the 1,3,3,3-tetrafluoro-1-propene
described in Inagaki includes more trans than cis form, because the boiling point of
-16º C (as taught in Inagaki regarding this HFO) is closer to the boiling point of
-19º C of the trans form, than +9º C of the cis form. Dec. to Inst. 11; Prel. Resp. 5–
6 (citing Ex 1008 ¶ 27); Ex. 1001, 6:48–52; Ex. 1003, 28; Ex. 1068, 2357. Thus,
we find that that Inagaki inherently discloses a relevant HFO isomer mixture, i.e.,
Embodiment II comprising trans-1,3,3,3-tetrafluoropropene, as recited in the
challenged claims.
We also find that Inagaki suggests using Embodiment II (called “HFO-
1234ze” in the ’874 patent Specification, and “1,3,3,3-tetrafluoropropene” in the
challenged claims) with a lubricant, even if the reference also suggests mixing in
another non-HFO refrigerant, such as R-32 (CH2F2) or R-134a (CF3CFH2).
In addition, we find that Bivens expressly teaches that polyol ester lubricant,
as recited in the challenged claims, is among “suitable lubricants for HFC-based
refrigeration systems,” even if the reference also teaches that such lubricants have
problems because “they are extremely hygroscopic” and are expensive. Ex. 1005,
1:47–59. In addition, we find that when Bivens refers to “[h]ydrofluorocarbons
(HFCs)” and “HFC” in the context of “HFC-based refrigeration systems,” it refers
to hydrofluorocarbons generally. For the reasons discussed above, we conclude
that the evidence of record shows sufficiently that an ordinary artisan would have
understood at the time of filing of the ’874 patent that the term “HFC,” as used in
Bivens, encompassed HFOs, such as those disclosed in Inagaki.
We are not persuaded otherwise by Patent Owner’s contentions regarding
Inagaki’s use of “machine oil,” or the depiction in Figure 2 of Inagaki of an oil
separator, which is not otherwise discussed in Inagaki. PO Resp. 18–22; Ex. 1003,
28, 32, Ex. 1068, 2357, 2361. Inagaki expressly teaches that its mixtures “do not
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have any problem with respect to their general characteristics (e.g., compatibility
with lubricants.” Ex. 1003, 28; Ex. 1068, 2357. Such teachings sufficiently
suggest that Inagaki’s mixtures combined with lubricants did not have significant
issues with miscibility. Moreover, Petitioner points us to evidence indicating that
an oil separator was a common component in refrigerant systems, including ones
using refrigerant/lubricants that were miscible. Reply 8–9 (citing Ex. 1035, Ex.
1063); see, e.g., Ex. 1035, Fig. 1, 4:3–59 (describing an “oil-flooded twin screw,
compression system” and that “[i]n a closed system the refrigerant gas and the oil
will, to some extent, be mutually soluble or completely miscible dependent on the
temperature and the concentration of the oil”); Ex. 1063, Fig. 1, 2:32–34 (showing
“miscibility of several polyol esters with HFC-134a”), 6:8–50 (describing “use of
oil separation equipment”).
Consistently, Bivens expressly teaches that “POEs are suitable lubricants for
HFC-based refrigeration systems.” Ex. 1005, 1:47–48. Bivens suggested using
POE lubricant with “HFCs,” which encompasses HFOs, such as those disclosed in
Inagaki, as discussed above. We are not persuaded that Bivens’ teachings are
limited to the “azeotrope-like refrigerant compositions consisting essentially of
three specific saturated refrigerants (HFCs) and one saturated hydrocarbon,” as
Patent Owner contends. PO Resp. 22.
Nor are we persuaded by Patent Owner’s teaching away arguments in
relation to Inagaki or Bivens. For the reasons discussed above, we do not read
Inagaki or Bivens as teaching away from the use of POE lubricant with
Embodiment II, but rather find the references specifically suggest the combination
of such compounds. Even assuming that HFOs and/or POE lubricant were known
to be reactive, toxic and flammable, as Patent Owner contends (PO Resp. 27, 32–
37), Inagaki expressly teaches using Embodiment II (an HFO) with a lubricant, and
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Bivens expressly teaches using POE lubricant with HFC-based refrigeration
systems, suggesting the use of POE lubricant with HFO-based refrigeration
systems.
Thus, any “difficulties” or “problems” associated with such compounds
would not have deterred an ordinary artisan from using the compounds, as
evidenced by Inagaki and Bivens. Cf. PO Resp. 22, 25, 26, 27, 30–37 (describing
alleged “difficulties” and “problems” associated with “stability, flammability,
toxicity, reactivity, and miscibility”). Based on the combined teachings in Inagaki
and Bivens, we find that an ordinary artisan would have had reason to predict that
Inagaki’s mixture comprising Embodiment II, combined with a POE lubricant as
taught in Bivens, would have worked as intended, i.e., to transfer “heat to or from a
body in a vapor compression system” as recited in the challenged claims.
We also are not persuaded by Patent Owner’s contention that Inagaki only
suggested the use of mineral oil or alkyl benzene based on the rationale that the
reference discussed, among other compounds, “R-12, R-22 and R-502 as control
examples,” and lists R143a. PO Resp. 28–30. Inagaki discusses additional
compounds, such as HFCs R-32, R-125, and R-134a, in combination with
Embodiment II and a lubricant. Ex. 1003, 28–29. Evidence of record does not
suggest that an ordinary artisan would have used mineral oil or alkyl benzene only,
and not POE, as a lubricant. For example, Bivens teaches that “PAGs and POEs
are suitable lubricants for HFC-based refrigeration systems” and that mineral oils
and alkylbenzenes did not work as well in such systems because of lack of
solubility. Ex. 1005, 1:37–62.
In relation to the “at least about 5% by weight” component of the challenged
independent claims, Petitioner acknowledges that “neither Inagaki nor Bivens
teaches any specific ratio of trans-1,3,3,3-tetrafluoropropene to polyol ester
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lubricant,” i.e., specific percent by weight of different components. Pet. 35.
Petitioner contends, however, that specific recited percentages of such components
correspond to optimum or workable ranges discovered by routine experimentation.
Id. at 34–49. According to Petitioner, the recited percentage ranges or ratios do not
support patentability, absent evidence indicating that the ranges or ratios are
critical. Id. at 35 (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)). Petitioner
contends that “no evidence of criticality of concentration” exists, for example, in
the ’874 patent. Id. at 36.
As discussed in our Decision to Institute, In re Aller and other case law sets
out the general rule that discovery of an optimum value of a variable in a known
process is normally obvious. In re Aller, 220 F.2d at 456; In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997) (stating that “it is not inventive to discover the
optimum or workable ranges by routine experimentation” (quoting In re Aller, 220
F.2d at 456)); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007)
(stating that “discovery of an optimum value of a variable in a known process is
usually obvious” (citing In re Aller, 220 F.2d at 456)).
This general rule is not limited to prior art that discloses “amounts that
bracket the ranges recited in the claims,” as asserted by Patent Owner. Prel. Resp.
20. Rather, exceptions to the general rule exist where: (1) the variable to be
optimized was not recognized as a “result-effective” variable; or (2) results of
optimizing the variable, even if known to be result-effective, produced a new and
unexpected result. In re Antonie, 559 F.2d 618, 620 (CCPA 1977); In re Boesch,
617 F.2d 272, 276 (CCPA1980) (stating that “discovery of an optimum value of a
result effective variable in a known process is ordinarily within the skill of the
art”); In re Luck, 476 F.2d 650, 652-53 (CCPA 1973) (concluding that use of
routine testing to identify optimum amounts of silane to be employed in a lamp
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coating, without establishing a critical upper limit or demonstrating any
unexpected result, lies within the ambit of the ordinary skill in the art).
Here, as discussed above, we agree with Petitioner that Inagaki and Bivens
indicate that an ordinary artisan would have known that the recited HFO and POE
lubricant would be useful components in a refrigerant composition. Pet. 30-34; see
also Ex. 1003, 28–29; Ex. 1068 2357–58 (describing Embodiment (II) for use in
“[m]ethods to solve the problem” of destructive effects on the ozone in
refrigerants, and with lubricants); Ex. 1005, 1:47–49 (describing the use of POE
lubricants with HFC-based refrigerants). Thus, the absence or presence of the
recited HFO and POE lubricant in at least some amounts was known to be a result-
effective variable in relation to the function of a refrigerant. Consequently, we
consider whether the recited weight percentages of HFO and/or POE lubricant
would have been “critical,” i.e., provided a new and unexpected result that differed
“in kind and not merely in degree from the results of the prior art.” Pet. 34–35; In
re Aller, 220 F.2d at 456.
Petitioner contends that the ’874 patent indicates no criticality of the recited
weight percentages. Pet. 35. We agree. For example, the ’874 patent provides
evidence that the amount of HFO-1234 is not critical to the function of the heat
transfer composition/fluid in the recited methods of transferring heat. See, e.g., Ex.
1001, 6:54–59 (stating that “each of the cis- and trans-forms . . . is useful for the
stated purpose unless otherwise indicated”), 7:58–63 (stating that “compositions
containing more than trace amounts and less than 100% of the compound are
within broad the scope of the present invention”), 10:12–19 (indicating that
additional components enhance or provide certain functionality); 10:54–60, 18:48–
20:17. Example 1 indicates that each of the cis and trans forms provides positive
coefficients of performance compared to HFC-134a. Id. at 23:64–24:59. In
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addition, Example 2 indicates that PAG or polyol ester oil lubricant is miscible
with either HFO-1225ye or HFO-1234ze at all lubricant percentages tested (i.e., 5,
20 and 50 percentage weight) over a range of temperatures. Id. at 24:60–25:31.
In addition, as discussed in our Decision to Institute, Patent Owner
submitted a Declaration by Dr. Raymond Thomas during prosecution of the ’874
patent. Dec. to Inst. 17–18; Prel. Resp. 3. Dr. Thomas “compare[d] the miscibility
of three different lubricants with 2,3,3,3-tetrafluoropropene (HFO-1234yf) and
with trans-1,3,3,3,tetrafluoropropene (trans-HFO-1234ze).” Dec. to Inst. 17–18
(quoting Prel. Resp. 3); Ex.1017, 1004, 1007 ¶¶ 7–10.
As stated in his Declaration, Dr. Thomas tested the miscibility of three
different lubricants (mineral oil, a PAG, and a POE) with 1234yf (HFO-1234yf) or
t-1234ze (trans-HFO-1234ze) (the recited HFO) at three different ratios (50:50,
80:20, or 95:5 “HFO:Lubricant Wt. Ratio”), at three different temperatures (0º C,
10º C, or 20º C). Ex 1017, 1009–1010. Data presented in Table 1 of that
Declaration indicates that the tested samples were miscible at every tested
parameter, except when using mineral oil as the lubricant. In other words, PAG or
POE was miscible at every tested parameter (regardless of tested HFO, weight
percentage, or temperature), while mineral oil was not miscible at any tested
parameter. That PAG or POE was miscible with the tested HFOs, but mineral oil
was not, is consistent with teachings in Bivens, as discussed above. Thus,
evidence of record in this case indicates that Dr. Thomas’s findings regarding
suitable lubricants were not unexpected in view of Bivens teaching regarding the
suitability of PAG or POE, but not mineral oil, as a lubricant in HFC-based
refrigerants. Ex. 1005, 1:37–50. Moreover, the Thomas Declaration supports
Petitioner’s contention that the specific percentage weights recited in the
challenged claims are not “critical.” Pet. 35–37.
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Claims 1 and 12 recite “a heat transfer composition comprising at least about
5% by weight of trans-1,3,3,3-tetrafluoropropene and lubricant comprising polyol
ester.” Claims 3 and 4, which depend from claim 1, recite that the composition
comprises from about 5% by weight to about 99% by weight, or about 5% by
weight to about 95% by weight, of the trans-1,3,3,3-tetrafluoropropene,
respectively. Claims 12 and 13, which depend from claim 12, recite that the
composition comprises at least about 50% by weight, or at least about 70% by
weight, of trans-1,3,3,3-tetrafluoropropene, respectively. For the reasons discussed
above, we conclude that the discovery of an optimum value of a “result-effective”
variable in a known process, e.g., percentage amounts of trans-1,3,3,3-
tetrafluoropropene, would have been obvious in view of the lack of sufficient
evidence indicating that the specific percentages recited in claims 1, 3, 4, 6, 7, 12–
14 were critical or produced some kind of new and unexpected result.
Regarding claims 6 and 7, we find that Inagaki teaches mixing the recited
HFO with other refrigerants (“at least one co-heat transfer agent”), such as HFC-32
and HFC-134a, along with a lubricant, as Petitioner contends. Pet. 39-40;
Ex. 1003, 28–29; Ex. 1068, 2357–58.
Based on the record before us, we conclude that Petitioner has established
by a preponderance of the evidence that claims 1, 3, 4, 6, 7, 12–14 of the ’874
patent would have been obvious over Inagaki, in view of Konzo and Bivens.
5. Analysis—claims 5 and 9–11
For the same reasons discussed above, Petitioner contends that claims 5 and
9–11 would have been obvious over Inagaki, in view of Konzo and Bivens. Pet.
38–45. Patent Owner responds that dependent claim 5 and independent claim 9
require that the “methods employ a heat transfer composition (claim 5) or a heat
transfer fluid (claim 9) having from about 30 to about 50 percent by weight of POE
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lubricant.” PO Resp. 46–47. Patent Owner contends that none of Inagaki, Konzo,
or Bivens suggests any particular amount of any lubricant when used with a
refrigerant. Id. at 47. Thus, according to Patent Owner, those references could not
have suggested to an ordinary artisan “any indication that about 30 to about 50
percent by weight of a POE lubricant would have been a suitable range when
combined with any HFO lubricant, specifically trans-HFO1234ze.” Id. Patent
Owner also quotes deposition testimony of Petitioner’s witness, Dr. Corr, as stating
that he “wouldn’t think it was obvious to add 50 percent of oil to a refrigerant
composition and have it—have it working well of 30 to 50 percent.” Id. at 47–48
(quoting Ex. 2020, 269:14–22). Petitioner disputes that interpretation of Dr. Corr’s
testimony. Reply 11–12 (citing 2020, 270).
Once again, we point out that the discovery of an optimum value of a
“result-effective” variable in a known process, i.e., percentage amounts of POE
lubricant here, would have been obvious in the absence of evidence indicating that
the specific percentages recited in claims 5 and 9 produced a new and unexpected
result. Patent Owner’s contentions, as well as the record before us, fail to indicate
sufficiently that the percentages recited in claims 5 and 9 were critical or produced
some kind of new and unexpected result. Thus, we conclude that Petitioner has
established by a preponderance of the evidence that claims 5 and 9 of the ’874
patent would have been obvious over Inagaki, in view of Konzo and Bivens.
We are also persuaded that Petitioner has established by a preponderance of
the evidence that claim 10 (reciting “evaporating at least a portion of said heat
transfer fluid”) and claim 11 (reciting a “chiller system using the method of claim
9”), which each depend from claim 9 of the ’874 patent, would have been obvious
over Inagaki, in view of Konzo and Bivens, for the reasons stated in the Petition,
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and evidence cited therein. Pet. 28, 44–45; see also PO Resp. 46–48 (addressing
limitations recited in claims 5 and 9 only).
We note that Patent Owner contends that “Inagaki does not teach or suggest
a chiller.” Id. at 56–57. We find that “Inagaki teaches an example of a vapor
compression system in which the evaporator temperature is set between 14° F and
50° F and the condenser is set at 122° F,” which corresponds to a chiller, as
Petitioner contends. Pet. 44–45 (citing Ex. 1003, 28–29, disclosing temperatures
of an evaporator (-10º C and 10º C) and condenser (50º C) in corresponding
“degrees C”); see also id. at 28 (noting that Specification defines “chiller” at Ex.
1001, 28:43–48).
6. Analysis—claims 8 and 15
Claims 8 and 15, which depend from independent claims 1 and 9,
respectively, recite that the lubricant “has a degree of miscibility” with the trans-
1,3,3,3-tetrafluoropropene “so that when up to five weight percent of lubricant is
added to said trans-1,3,3,3-tetrafluoropropene the mixture has one liquid phase at
at least one temperature between -50 and +70º C.”
For the same reasons discussed above, Petitioner contends that claims 8 and
15 would have been obvious over Inagaki, in view of Konzo and Bivens. Pet. 41–
49. Petitioner further contends that “Konzo teaches that in a vapor compression
system, the heat transfer fluid has at least one liquid phase after the heat transfer
fluid is passed through the condenser.” Id. at 41, 28 (citing Ex. 1004, 591). In
addition, Petitioner contends that Inagaki provides testing data for Embodiment II
in a heat pump with the condenser set at 50° C, and therefore, “Inagaki teaches a
system in which there is at least one liquid phase between -50 and +70° C.” Id. at
41, 48–49 (citing Ex. 1003, 29; Ex. 1068, 2358).
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Patent Owner responds that Petitioner’s witness, Dr. Corr, “admits that the
Inagaki and Bivens references do not teach a system where the mixture would have
one liquid phase at at least one temperature between -50 and +70° C.,” and that Dr.
Corr did not express “an opinion regarding one liquid phase at at least one
temperature between negative 50 and positive 70.” PO Resp. 49–50 (citing Ex.
2020, 260:13–20, 261:18–23). Patent Owner also contends that the portions of
Inagaki cited by Petitioner do not support the contention that trans-HFO-1234ze is
“miscible with lubricants” because Inagaki only discusses “solubility in cooling
machine oil,” and does not discuss miscibility. Id. at 50. According to Patent
Owner, citing additional testimony by Dr. Corr, “Inagaki’s reference to solubility
would have had nothing to do with miscibility which is defined as a state between
two liquids.” Id. at 50–51 (citing 2020, 141:23–142:13). Patent Owner also
contends that “compatibility and miscibility are not inter-changeable terms.” Id. at
52 (citing Ex. 2040 ¶¶ 35, 36).
In addition, Patent Owner contends that Inagaki teaches, in relation to its
disclosed mixtures, that “the solubility in cooling machine oil may be improved by
[addition of a third compound],” i.e., “by mixing cooling media having large
evaporative latent heat.” Id. at 51; Ex. 1003, 28. According to Patent Owner, the
“fact that the solubility needs to be ‘improved’ through addition of a third
compound teaches [an ordinary artisan] that the solubility of trans HFO-1234ze
and machine oil . . . by themselves is unacceptable.” Id. at 51–52.
Patent Owner also again notes that Inagaki, in Figure 2, teaches use of an oil
separator, and contends that “[s]uch an oil separator is required in a system where
the refrigerant and the lubricant are immiscible.” Id. at 52–53 (citing Ex. 2020,
208:6–9; Ex. 2040 ¶ 34). Thus, according to Patent Owner, by including an oil
separator, Inagaki suggests that its system “involves a refrigerant and lubricant that
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are substantially immiscible.” Id. at 53. Patent Owner also contends that an
ordinary artisan could not have predicted whether a particular refrigerant and a
lubricant were miscible.” Id. at 53–54 (citing 2041 ¶¶ 17–20; Ex. 2042 ¶¶ 14–16,
20; Ex. 2020, 192:9–16).
We are persuaded by Petitioner’s position and cited evidence indicating that
Inagaki provides testing data for Embodiment II in a heat pump with a condenser
set at 50°C, and, therefore, “Inagaki teaches a system in which there is at least one
liquid phase between -50 and +70° C.” Pet. 41, 48–49 (citing Ex. 1003, 29; Ex.
1068, 2358). Patent Owner’s arguments relating to miscibility versus solubility or
compatibility, contentions that Inagaki discloses an oil separator, and the lack of
predictability of miscibility, do not persuade us otherwise.
We find that the teaching in Inagaki of a heat pump with a condenser (which
converts refrigerant gas to liquid) at a temperature of 50°C suggests (even though it
does not state expressly in such language) a “degree of miscibility” where the
disclosed mixtures have “one liquid phase at at least one temperature between -50
and +70º C,” as recited in claims 8 and 15. Moreover, for the same reasons
discussed above, Patent Owner’s contentions, as well as the record before us, fail
to indicate sufficiently that the percentages of lubricant recited in claims 8 and 15
produced some kind of new and unexpected result in this regard.
We conclude that Petitioner has established by a preponderance of the
evidence that claims 8 and 15 of the ’874 patent would have been obvious over
Inagaki, in view of Konzo and Bivens.
7. Analysis—claim 2
Claim 2 recites that the heat transfer composition of claim 1 “comprises at
least about 90% by weight of trans-1,3,3,3-tetrafluoropropene.” Petitioner
contends that claim 2 would have been obvious over Inagaki, in view of Konzo and
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Bivens for the same reasons discussed above, i.e., it was “not inventive to
discovery [sic] the optimum or workable ranges by routine experimentation.” Pet.
37.
Patent Owner argues that nothing in any of the cited references “suggests, let
alone discloses, a heat transfer composition containing at least about 90% by
weight trans-1,3,3,3-tetrafluoropropene.” PO Resp. 55. Patent Owner also cites
testimony by Dr. Corr stating that one reading Inagaki would view the reference as
disclosing “80 percent trans 1234ze and 20 percent cis 1234ze . . . plus or minus 1
or 2 degrees,” but not “all the way from 80 percent up to 90 percent,” based on the
boiling point of -16 ºC, as disclosed for Embodiment II in Inagaki. Id. at 54–55;
Ex. 1003, 28; Ex. 1068, 2357. Petitioner does not dispute Dr. Corr’s statement in
this regard. Pet. 37; Reply 13–14.
Claim 2 differs from other challenged claims reciting percentages of the
HFO and/or POE lubricant in that it recites a heat transfer composition comprising
“at least about 90% by weight” of the trans-isomer of 1,3,3,3-tetrafluoropropene in
particular. By contrast, other claims recite a composition comprising a certain
“% by weight” of that HFO and lubricant in combination. Dependent claims 3 and
4 recite broad ranges for the trans-isomer form of the HFO, i.e., about 5% by
weight to about 99% or 95% by weight, respectively, which encompass
Embodiment II having approximately 80% trans-isomer and 20% cis-isomer.
We find that neither Inagaki alone, nor Inagaki in combination with Konzo
and/or Bivens, teaches or suggests isolating or purifying a trans-isomer in
particular from Embodiment II, and therefore does not teach or suggest obtaining
“at least about 90% by weight” of the specific trans-isomer of Embodiment II in
Inagaki. Purifying a trans-isomer would not have been “routine optimization” of
amounts of known result effective variables (i.e., percentages of Embodiment II
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and POE lubricant to use), but would have required an additional purification step
of an isomer—a step that Petitioner has not established sufficiently is taught or
suggested in the cited references.
We conclude that Petitioner has not established by a preponderance of the
evidence that claim 2 of the ’874 patent would have been obvious over Inagaki, in
view of Konzo and Bivens.
C. Conclusion
In view of the above, we conclude that Petitioner has demonstrated by a
preponderance of the evidence that claims 1 and 3–15, but not claim 2, of the ’874
patent would have been obvious over Inagaki, in view of Konzo and Bivens.
III. MOTIONS TO EXCLUDE
A. Patent Owner’s Motion to Exclude Evidence
Patent Owner moves to exclude Petitioner’s Exhibit 1069 (a second
Declaration by Mr. Robert Low) and related testimony, Exhibits 1003 and 1068
(English translations of Inagaki Ex. 1002), Exhibit 1008 (Declaration by Dr. Stuart
Corr) and related testimony, as well as Exhibits 1030–1069 and 1077. Paper 38.
1. Exhibit 1069
Because we do not rely on Exhibit 1069 in reaching the Final Written
Decision, we dismiss Patent Owner’s Motion to Exclude in relation to that exhibit
as moot.
2. Exhibits 1003 and 1068
In relation to Exhibits 1003 and 1068, Patent Owner argues that those
English translations of Inagaki Exhibit 1002 are “unauthenticated translations and
not trustworthy.” Paper 38, 5–7. In its Reply, Petitioner acknowledges in a
footnote that a discrepancy between Petitioner’s translation and Patent Owner’s
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translation of Inagaki Ex. 1002 “was recently realized,” and that Petitioner’s
translator “reviewed the translation and has attested that there was an inadvertent
omission in the Mexichem translation and has further verified that the rest of the
Mexichem translation is consistent with what was submitted,” citing Ex. 1068.
Reply 13 n.2. We note that Exhibit 1003 includes a translation “Certification” by
the translator, Donald Hanley, CEO of Nelles Translations (Ex. 1003, 34), as does
Exhibit 1068 (Ex. 1068, 2355).
In its Motion to Exclude, Patent Owner contends that “Petitioner left
uncorrected the majority of the discrepancies between Petitioner’s translation and
Patent Owner’s translation,” and “corrected only one discrepancy.” Paper 38, 5–6.
Patent Owner contends that Exhibits 1003 and 1068 are not properly authenticated
by the translator’s Certifications under Federal Rule of Evidence (“FRE”) 901. Id.
at 6–7.
In its contentions regarding authentication under FRE 901, Patent Owner
indirectly refers to requirements under § 42.63(b), which states that when a party
relies on a document in a language other than English, a translation of the
document into English and an affidavit attesting to the accuracy of the translation
must be filed with the document. 37 C.F.R. § 42.63(b). Rule 42.63(b) requires an
“affidavit,” defined as an “affidavit or declaration under § 1.68 of this chapter.”
37 C.F.R. § 42.2. “Certificates” of translation are not affidavits because, for
example, they are not made under oath and do not warn that willful false
statements and the like are punishable by fine or imprisonment, or both. 37 C.F.R.
§ 1.68. Thus, as Patent Owner suggests, the translator’s Certificates in Exhibits
1003 and 1068 do not satisfy those requirements. Paper 38, 6–7. Nonetheless,
under our rules, we may waive or suspend the requirements of § 42.63(b). 37
C.F.R. § 42.5(b).
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Here, the record reflects that Patent Owner prepared its own English
translation of Inagaki, and provided a copy of that translation to Petitioner. Yet,
Patent Owner does not cite to an exhibit providing that translation in its Motion to
Exclude, nor identify with specificity any “discrepancies” in Exhibit 1003 or 1068,
nor exactly how such “discrepancies” might be relevant in an obviousness analysis
based on Inagaki. We note, however, that in its Preliminary Response, Patent
Owner refers to an English translation of Inagaki, as translated by the same
translator, Donald Hanley, which Patent Owner submitted during prosecution of
the ’874 patent. Prel. Resp. 3; Ex 1017, 1028–1032 (Information Disclosure
Statement), 1117–1124 (English translation of Inagaki); Paper 42, 7–8. Our
review of Patent Owner’s translation of Inagaki indicates that it provides the same
teachings or suggestions in relevant parts as Exhibits 1003 and 1068, discussed in
this Final Written Decision. We also note that Petitioner provides a Declaration of
Mr. Hanley, which discusses a clause omitted in Ex. 1003, and declares “under
perjury that the foregoing is true and correct.” Ex. 1078; Paper 42, 7.
Based on the record before us, we waive the requirements under § 42.5(b) of
an “affidavit” under § 1.68 in relation to Petitioner’s English translations of
Inagaki in Exhibits 1003 and 1068. In addition, as the moving party, Patent Owner
does not persuade us that those translations, in relevant parts, fail to disclose what
Petitioner says they do, as required by FRE 901(a), or are not sufficiently
authenticated by “[t]estimony of a witness with knowledge . . . that a matter is
what it is claimed to be,” as required under FRE 901(b).
With regard to Patent Owner’s hearsay argument (Paper 38, 7), Exhibits
1003 and 1068 are offered as evidence of what Inagaki describes to an ordinary
artisan, not for proving the truth of the matters addressed in the document.
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Accordingly, Exhibits 1003 and 1068 are not hearsay requiring the remedy of
exclusion.
Thus, we deny Patent Owner’s Motion to Exclude in relation to Exhibits
1003 and 1068.
3. Exhibit 1008
Patent Owner contends that the Declaration of Stuart Corr (Ex. 1008) and his
related deposition testimony “must be excluded because Dr. Corr used an
improperly high level of ordinary skill in the art when rendering his opinions.”
Paper 38, 8–10. Even assuming Dr. Corr testified from the perspective of an
“improperly high level of ordinary skill” (id.), Patent Owner’s objections in this
regard go to the weight that Exhibit 1008 should be afforded, rather than to its
admissibility. A motion to exclude is not the proper vehicle to challenge the
sufficiency of evidence. It is within our discretion to assign the appropriate weight
to be accorded evidence. Thus, we deny Patent Owner’s Motion to Exclude in
relation to Exhibit 1008 and Dr. Corr’s related deposition testimony.
4. Exhibits 1030–1069 and 1077
Patent Owner contends that Exhibits 1030–1069 and 1077 should be
excluded because they inappropriately raise new issues or belatedly present
evidence in Petitioner’s Reply. Paper 38, 10–13.
A motion to exclude is not an appropriate vehicle for challenging a reply or
a reply’s supporting evidence as exceeding the scope of a proper reply. Liberty
Mutual Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00002, slip op.
at 62 (PTAB Jan. 23, 2014) (Paper 66); Norman Int’l, Inc. v. Andrew Toti
Testamentary Trust, Case IPR2014-00283, slip op. at 2 (PTAB Jan. 22, 2015)
(Paper 33). The purpose of a motion to exclude is to challenge admissibility of
evidence. Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767.
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Patent Owner’s objections go to the weight that Exhibits 1030–1069 and
1077 should be afforded, rather than to their admissibility. It is within our
discretion to assign the appropriate weight to be accorded such evidence. Thus, we
deny Patent Owner’s Motion to Exclude in relation to Exhibits 1030–1069 and
1077.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1 and 3–15 of the ’874 patent have been shown to be
unpatentable;
FURTHER ORDERED that claim 2 of the ’874 patent has not been shown
to be unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed-in-part and denied-in-part; and
FURTHER ORDERED that because this is a Final Written Decision, parties
to the proceeding seeking judicial review of the decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Patrick J. Fleis
Joseph A. Kromholz
Ryan Kromholz & Manion, S.C.
IPR@rkmiplaw.com

For PATENT OWNER:

Joseph M. Skerpon
Joseph J. Berghammer
Banner & Witcoff, Ltd.
jskerpon@bannerwitcoff.com
jberghammerr@bannerwitcoff.com