TerraLithium LLC

Patent Trials and Appeals Board

Mar 15, 2021

IPR2019-01603 (P.T.A.B. Mar. 15, 2021)

Trials@uspto.gov Paper 31
571.272.7822 Date: March 15, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ENERGYSOURCE MINERALS, LLC,
Petitioner,

v.

TERRALITHIUM LLC,
Patent Owner.
____________

IPR2019-01603
Patent 9,644,126 B2
____________

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

LORIN, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
This is a Final Written Decision in an inter partes review challenging
the patentability of claims 1–20 of U.S. Patent No. 9,644,126 B2 (Ex. 1001,
“the ’126 patent”). We have jurisdiction under 35 U.S.C. § 6.
Petitioner has the burden of proving unpatentability of a claim by a
preponderance of the evidence. 35 U.S.C. § 316(e). Having reviewed the
arguments of the parties and the supporting evidence, we find that Petitioner
has not demonstrated by a preponderance of the evidence that claims 1–20
are unpatentable.
A. Background
EnergySource Minerals, LLC (“Petitioner”) filed a Petition requesting
inter partes review of claims 1–20 of the ’126 patent. Paper 1 (“Pet.”).
TerraLithium LLC (“Patent Owner”) did not file a Preliminary Response to
the Petition.
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 1–20 on all asserted grounds of unpatentability. Paper 9 (“DI”).
After institution, Patent Owner filed a Patent Owner Response
(Paper 14, “PO Resp.”); Petitioner filed a Reply (Paper 19, “Pet. Reply”);
and Patent Owner filed a Sur-reply (Paper 23, “PO Sur-reply”).
On December 15, 2020, the parties presented arguments at oral
hearing, the transcript of which is of record. Paper 30 (“Tr.”).
B. Related Proceedings
Petitioner indicates that it concurrently filed with the Petition in this
case two other petitions for inter partes review of related U.S. Patent
No. 9,650,555 and U.S. Patent No. 9,051,827. Pet. 1. These petitions
correspond to IPR2019-01602 and IPR2019-01601, respectively.
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According to Patent Owner:
On September 11, 2019, Petitioner filed inter partes reviews of
related U.S. Patent No. 9,051,827 (IPR2019-01601) and U.S.
Patent No. 9,650,555 (IPR2019-01602). On October 1, 2019,
Petitioner filed inter partes reviews of related U.S. Patent No.
8,454,816 (IPR2019-01604), U.S. Patent No. 9,057,117
(IPR2019-01605), U.S. Patent No. 8,518,232 (IPR2019-01606),
and U.S. Patent No. 9,238,851 (IPR2019-01607).
Paper 4, 1.
Trial has been instituted in IPR2019-01602. Institution was denied in
IPR2019-01601; IPR2019–01604; IPR2019–01605; IPR2019–01606; and
IPR2019–01607.
C. The ’126 patent (Ex. 1001)
1. Disclosure
The ’126 Patent “relates to treated brine compositions with reduced
concentrations of silica, iron, and zinc” and “generally relates to treated
brine compositions with reduced concentrations of silica, iron, and/or zinc
that can also be used for recovery of other metals, including lithium,
manganese, rubidium, cesium, and potassium.” Ex. 1001, code (54), 1:45–
46, 1:50–54.
The ’126 Patent describes treated geothermal brine compositions that
contain “a treated geothermal brine having a concentration of silica ranging
from 0 to 80 mg/kg and a concentration of iron ranging from 0 to 300
mg/kg.” Id. at 3:54–57. The ’126 Patent discloses other embodiments in
which “the treated geothermal brine composition has a concentration of zinc
ranging from 0 to 300 mg/kg,” “the treated geothermal brine composition
has a concentration of zinc less than about 100 mg/kg,” and “the treated
geothermal brine composition has a concentration of zinc less than about 10
mg/kg, the concentration of silica less than about 10 mg/kg, and the
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concentration of iron less than about 10 mg/kg.” Id. at 3:66–4:1, 4:4–6,
4:41–45. The ’126 Patent also describes the use of treated geothermal
brines, such as for the extraction of minerals (e.g., lithium, manganese,
potassium, rubidium, cesium, phosphates, zinc, lead, and other minerals and
metals). Id. at 4:59–66, 16:46–50.
2. Claims
The ’126 patent has 20 claims, all of which Petitioner challenges.
Pet. 1.
Claims 1, 17, and 20 are the independent claims. Claims 2–16 depend
from claim 1 and claims 18 and 19 depend from claim 17. All but claims
15, 16, 18, and 19 are directed to a “treated geothermal brine composition.”
Claims 15 and 16, and 18 and 19 are directed to a “method of using” the
composition of claims 1 and 17, respectively.
Independent claims 1, 17, and 20, reproduced below, are illustrative.
1. A treated geothermal brine composition, the composition
comprising a treated geothermal brine having a concentration of
zinc ranging from 0 to 300 mg/kg, a concentration of silica
ranging from 0 to 80 mg/kg, and a concentration of iron ranging
from 0 to 300 mg/kg, and comprising recoverable amounts of one
or more metals selected from the group consisting of lithium,
manganese, lead, rubidium, and cesium or mixtures thereof.
17. A treated geothermal brine composition, the composition
comprising a treated geothermal brine having a concentration of
zinc ranging from 0 to 100 mg/kg, a concentration of silica
ranging from 0 to 30 mg/kg, and a concentration of iron ranging
from 0 to 100 mg/kg, and said geothermal brine is a Salton Sea
brine, and comprising recoverable amounts of one or more
metals selected from the group consisting of lithium, manganese,
lead, rubidium and cesium or mixtures thereof.
20. A treated geothermal brine composition, the composition
comprising a treated geothermal brine having a concentration of
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zinc less than 10 mg/kg, a concentration of silica less than 10
mg/kg, and a concentration of iron less than 10 mg/kg, and said
geothermal brine is a Salton Sea brines, and comprising
recoverable amounts of one or more metals selected from the
group consisting of lithium, manganese, lead, rubidium and
cesium or mixtures thereof.
Ex. 1001, 58:10–18, 60:4–12, 60:20–27. As can be seen, claims 15 and 17
include the limitation “and said geothermal brine is a Salton Sea brine” that
claim 1 does not have. The independent claims recite different ranges for
the concentrations of zinc, silica, and iron in the brine.
D. Asserted References
Petitioner relies on the following references:
Name Reference Ex. No.
Brown U.S. Patent No. 5,358,700, issued Oct. 25, 1994 1005
Burrows U.S. Patent Publication 2003/0026749 A1, published Feb. 6, 2003 1007
Christopher
D. H. Christopher, The Recovery and
Separation of Mineral Values from Geothermal
Brines, Bureau of Mines OFR 81-75 (Jun. 12,
1975)
1006
Maimoni
Arturo Maimoni, “A Cementation Process for
Minerals Recovery from Salton Sea
Geothermal Brines,” Lawrence Livermore
Laboratory (Jan. 26, 1982)
1004
Wilkins U.S. Patent No. 4,016,075, issued Apr. 5, 1977 1008

E. Grounds Asserted
Petitioner contends that claims 1–20 of the ’126 patent are
unpatentable under the following grounds:
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Claim(s)
Challenged 35 U.S.C. Reference(s)/Basis
1–20 § 102 Christopher
1–20 § 102 and/or § 103 Christopher
1–18 § 103 Christopher, Brown, Burrows, Wilkins
1–20 § 102 Maimoni
1–20 § 102 and/or § 103 Maimoni
1–20 § 103 Maimoni, Brown, Burrows, Wilkins, Christopher
Pet. 3–4.
Petitioner also relies on the Declaration of Darrell L. Gallup, Ph.D.
(Ex. 1003; “Gallup Declaration”) as support for its patentability challenges.
Patent Owner relies on the Declaration of Stephen Harrison (Ex. 2002,
“Harrison Declaration”) as support for its contentions in opposing the
patentability challenges.
II. ANALYSIS
A. Level of Ordinary Skill in the Art
There is general agreement as to the level of ordinary skill in the art.
See Pet. 4 (citing Ex. 1003, ¶ 22) and PO Resp. 3 (citing Ex. 2002, ¶¶ 1–18).
Consistent therewith, we determine that one of ordinary skill in the art at the
time of the invention would have had at least an undergraduate scientific or
engineering degree in a relevant field (such as chemistry, chemical
engineering or metallurgy) and at least five years’ experience in the
hydrometallurgical industry.
B. Claim Construction
For petitions filed on or after November 13, 2018, “[claims] of a
patent . . . shall be construed using the same claim construction standard that
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would be used to construe the [claims] in a civil action under 35 U.S.C.
§ 282(b), including construing the [claims] in accordance with the ordinary
and customary meaning of such claims as understood by one of ordinary
skill in the art and the prosecution history pertaining to the patent.”
37 C.F.R. § 42.100 (2019); see also Phillips v. AWH Corp., 415 F.3d 1303,
1312–14 (Fed. Cir. 2005) (en banc).
Petitioner proposes constructions for the claim terms “treated,”
“geothermal brine,” and “treated geothermal brine” (Pet. 9–10); “Salton Sea
brine” (id. at 10); and “concentration ranges including ‘0’ and ‘less than’”
(id. at 11–12). Patent Owner responds to Petitioner’s proposed constructions
and propose a construction for “parts per million” and “ppm”. PO Resp. 4–
7. To the extent the meaning of any term requires discussion, we will
provide it below in our analysis of the patentability challenges.
C. Anticipation – Christopher
Petitioner challenges claims 1–20 as anticipated under 35 U.S.C.
§ 102(b) by Christopher. Pet. 22–37.
1. Independent Claims 1, 17, and 20
a. “A treated geothermal brine composition . . . comprising a
treated geothermal brine” (Claims 1, 17, and 20)
Petitioner argues that Christopher describes a “treated” geothermal
brine because, inter alia, the silica concentration is reduced. Pet. 27–28
(citing inter alia Ex. 1006, 8–9). Table 1 of Christopher is reproduced
below.
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Table 1 of Christopher showing analytical data for a typical composition of
Sinclair No. 4 brine.
Ex. 1006, 8. Petitioner also relies on the statement located below, associated
with Table 1, which reads: “[i]t will be noted that the silica content of the
Sinclair No. 4 brine samples used averaged only 40 ppm, as contrasted to the
normal value of 750 ppm obtained from fresh wellhead brine.” Pet. 27–28;
Ex. 1006, 8.
Neither party disputes that Table 1 of Christopher describes an “aged”
geothermal brine. PO Resp. 13–15 (citing Ex. 2002, ¶ 51, Ex. 2025, 217:2–
6, Ex. 1006, 8–9). Pet. Reply 5 (“Christopher’s ‘aged’ brine”).
The question is whether Christopher’s “aged” brine is a “treated”
brine as the claims call for. This requires us to construe the term “treated.”
In that regard, Petitioner proposes that the term “treated” be construed
as defined in the ’126 patent. Pet. 9 (citing Ex. 1001, 8:8–14).
“[I]f the patentee has chosen to be his or her own lexicographer by
clearly setting forth an explicit definition for a claim term,” then that
definition of the term controls. Johnson Worldwide Associates, Inc. v. Zebco
Corp., 175 F.3d 985, 990 (Fed. Cir. 1999).
Here the ’126 patent provides an explicit definition for “treated”:
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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, 8:8–14. We agree with Petitioner that this definition of “treated”
controls.
Patent Owner proposes a more narrow meaning for “treated,” arguing
that the ’126 patent describes a “treated” brine as having been flashed and
then processed to remove iron. PO Resp. 4–6 (citing Ex. 2002, ¶ 35–39,
Ex. 1001, 32:41–51).
The passage Patent Owner relies upon is an example treatment. PO
Resp. 5–6 (discussing “Example 4”) (citing Ex. 1001, 32:41–54 (sic, 45:43–
52, discussing “Example 4”). While the technique for producing “treated”
geothermal brine per the example is consistent with the explicit definition
for “treated,” it does not compel defining “treated” more narrowly. The
definition for “treated” is already clear to one of ordinary skill in the art.
Relying on said example would unnecessarily import a further limitation
beyond what is required by the explicit definition set forth in the patent.
This is improper. Cf. E.I. du Pont de Nemours & Co. v. Phillips Petroleum
Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988) (“a limitation read into a claim
from the specification wholly apart from any need to interpret what the
patentee meant by particular words or phrases in the claim” is improper.)
We now turn to the question of whether the “treated” brine of the
claims reads on Christopher’s “aged” brine within the meaning of the term
“treated” as explicitly defined in the ’126 patent.
To meet the claims, the brine of Table 1 must “have been processed
such that the concentration of at least one metal or elemental component has
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been reduced in the brine.” Ex. 1001, 8:8–14. Since Christopher’s “aging”
process reduces the silica concentration in the brine, and it is undisputed that
silica is not a metal, Christopher’s “aging” process must reduce the
concentration of at least one “elemental component” for the brine to meet
the claims. PO Sur–reply 4; Ex. 1006, 8–9.
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 5–6 (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.
b. “said geothermal brine is a Salton Sea brine” (Claims 17
and 20)
We accept Petitioner’s contention, which is not opposed by Patent
Owner and is supported adequately by objective evidence, that Christopher
discloses brines obtained from wells in Imperial Valley, California, which
are “Salton Sea” brines in accordance with the definition expressly provided
for in the ’126 patent. Pet. 28 (citing Ex. 1003, ¶ 160–162), Ex. 1001, 8:5–
7. See generally PO Resp. 6 and 10–24.
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c. “having a concentration of zinc ranging from 0 to 300
mg/kg” (Claim 1); “having a concentration of zinc ranging
from 0 to 100 mg/kg” (Claim 17); “having a concentration of
zinc less than 10 mg/kg” (Claim 20).
Petitioner argues that “Christopher discloses treated geothermal brines
having zinc concentrations of 0.004 g/L (3.4 mg/kg) in Table 3 and 5.0 ppm
in Figure 20 [stream 3]. . . .,” which according to Petitioner are within the
claimed ranges. Pet. 28, Ex. 1006, 12, 42. Table 3 and Fig. 20 are
reproduced below.

Table 3 of Christopher shows analytical data for feed and product brines and
washed/dried solid product.
Ex. 1006, 12 (reproduced and annotated at Pet. 21).
Figure 20 of Christopher consists of a flowchart showing a process by
which “Sinclair #4 Brine” feed passes through three precipitation units.
After each unit, the flowchart states “Liquor” and a number is assigned to
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each, from 2 to 4; the feed is assigned the number 1. At the bottom left of
Figure 20 is this table:

Table in Figure 20 of Christopher showing analytical data for the feed and
liquor brines.
Ex. 1006, 42 (reproduced and annotated at Pet. 23). It is this table in
particular that Petitioner is referring to.
With respect to the concentration of zinc shown in Table 3,
Petitioner contends that the reported 0.004 g/L equates to 3.4 mg/kg based
on an alleged density of Salton Sea geothermal brines. Id., fn. 3
(“mg/kg=(g/L*1000)/1.18kg/L due to the density of Salton Sea geothermal
brines.”) (see also fn. 1).
Patent Owner argues that “a POSITA would need the density of the
brine in order to make the conversion.” PO Resp. 16–17, citing Ex. 2002,
¶56; Ex. 2025, 335:24-336:2. Patent Owner takes issue with the density
value in the footnote the Petitioner uses as the basis for converting 0.0004
g/L to 3.4 mg/kg. According to Patent Owner, said density “is unsupported
by any reference or even by the testimony of Petitioner’s expert. (Ex. 2002,
¶57).” PO Resp. 17, referring to Pet. 28, fn. 3. According to Patent Owner,
“[i]n his deposition, Dr. Gallup admitted that he did not know the density of
a Sinclair No. 4 brine and based a value ‘close to 1.18’ on an assumption.”
Id. (citing Ex. 2025, 337:5–9).
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We agree with Patent Owner. To ascertain whether Table 3 describes
zinc having a concentration in the range claimed, the 0.0004 g/L value must
be converted to mg/kg and that entails knowing the density of the
geothermal brine associated with Table 3. In that regard, “Christopher does
not provide any density values that would allow a POSITA to make this
calculation.” Id. The density value that Petitioner uses, i.e., 1.18kg/L, is
unsupported by evidence.
Accordingly, the density of the geothermal brine associated with
Table 3 is uncertain. Although it is possible that one of ordinary skill in the
art might apply a density of 1.18kg/L, a case of inherency cannot resort to
relying on possibilities and probabilities. In re Olerich, 666 F.2d 578, 581
(CCPA 1981).
For the foregoing reason, Table 3 insufficiently supports Petitioner’s
contention that Christopher describes a brine having a concentration of zinc
in the claimed range.
With respect to the concentration of zinc shown in Fig. 20, Patent
Owner argues that it is unclear whether Christopher’s disclosure of “5 ppm”
for zinc refers to ppm by volume or ppm by weight as the claims call for.
PO Resp. 18–19. 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).” Id. at 18.
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
“5.0 ppm” for stream 3 in Figure 20 may understand it to refer to ppm by
volume.
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Accordingly, whether the “5.0 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.
For the foregoing reason, Figure 20 insufficiently supports
Petitioner’s contention that Christopher describes a brine having a
concentration of iron in the claimed range.
We note that Patent Owner also appears to argue that Petitioner
improperly combines Table 1 and Table 3. PO Resp. 17–18. However,
Petitioner’s analysis does not rely on Table 1. Pet. 28.
Petitioner has not shown that Christopher describes a brine having
zinc in a concentration in the claimed range by a preponderance of the
evidence.
d. “a concentration of silica ranging from 0 to 80 mg/kg”
(Claim 1); “a concentration of silica ranging from 0 to 30”
(Claim 17); “a concentration of silica less than 10 mg/kg”
(Claim 20)
Petitioner argues that Christopher describes a brine having a
concentration of silica in the claimed range. Pet. 23–24, 27–30. Petitioner
relies on Table 1, Table 3 and Figure 20 (all reproduced above). Pet. 23–24;
Ex. 1006, 8, 12, 42.
With respect to Table 1, Petitioner contends that it shows silica at 40
ppm and that that is within the range claimed. Pet. 23, 27–28; Ex. 1006, 8.
Patent Owner argues that Table 1 reports the 40 ppm for “Si” but it is
unclear that “Si” refers to “silica.” PO Resp. 13–15.
Petitioner argues that “Si” refers to silica because Christopher “reports
silica (SiO2), not once but twice” in the text immediately following Table 1.
Pet. Reply 6; Ex. 1006, 8.
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Patent Owner has the stronger argument.
It is true that “silica” is recited in the statement below Table 1. Pet.
23; PO Resp. 15. Ex. 1006, 8 (“silica content of the Sinclair No. 4 brine
samples used averaged only 40 ppm ….”). But, as Patent Owner points out,
“Dr. Gallup conceded [that] it is possible that Table 1 provides a silicon
analysis and Christopher simply forgot to apply the conversion factor in his
text below the table. (Ex. 2025, 183:1-19).” PO Resp. 15 (citing E. 2002, ¶
53.
Petitioner responds by arguing, inter alia, that “Dr. Harrison was
unable to challenge the reported 750 ppm silica value” in the statement
below Table 1. Pet. Reply 6, citing Ex. 1011, 150:9–14. But that does not
help narrow down what “Si” in Table 1 is referring to. Petitioner does not
provide, for example, evidence that one of ordinary skill in the art reading
Table 1 would have understood “Si” to mean silica.
Since Petitioner has not presented adequate evidence as to the
understanding of one of ordinary skill in the art reading “Si” in Table 1,
Table 1 insufficiently supports Petitioner’s contention that Christopher
describes a brine having a concentration of silica in the claimed range.
With respect to Table 3 and Figure 20, Petitioner acknowledges that
Table 3 and Figure 20 of Christopher have “no reported silica
concentration.” Pet. 23–24; Ex. 1006, 42. Accordingly, Petitioner does not
establish that the combined disclosures of Table 3 and Figure 20 indicate
that Christopher expressly describes a brine having a concentration of silica
in the claimed range.
Even though Table 3 and Figure 20 do not mention silica, Petitioner
argues that Figure 20 shows Christopher’s process reducing the iron
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concentration from 1810 ppm to 1.0 ppm or less and the silica concentration
would necessarily reduce along with it. Pet. 28–30 (citing Ex. 1006, 42).
Petitioner relies on (a) statements and Examples 2, 7-9 from the ’126
patent (Ex. 1001, 20:35–21:59, 42:31–50:51) and (b) ¶¶ 168–175 of Dr.
Gallup’s declaration (Ex. 1003) to show that Christopher’s process
necessarily reduces silica concentration as iron concentration reduces. Pet.
29–30.
Regarding (a), we agree with Patent Owner that, even if silica and iron
co–precipitate there is no way to know whether the silica resulting therefrom
would be at a concentration within the claimed range. PO Resp. 21 (“the
process disclosed in the ’126 patent . . . cannot support inherent anticipation
of silica in the treated geothermal brine because the starting level of silica in
Christopher is unknown. (Ex. 2002, ¶62-63). With greater starting silica
content, a POSITA would expect greater silica content in the treated brine,
which may or may not be within the claimed silica range.”) As Patent
Owner points out, “the concentration, pH, and reaction conditions will each
contribute to the exact stoichiometry of silica and iron precipitation.” Id.
“[T]he silica content could actually increase as compared to the
starting material.” Id.
Accordingly, the statements and Examples from the ’126 patent that
Petitioner relies upon do not sufficiently support Petitioner’s position that
Christopher’s process would necessarily reduce the concentration of silica in
the brine to a level that is within the claimed range.
Regarding (b), Petitioner argues, inter alia, that by using Christopher’s
process, “iron precipitates quantitatively with silica, and a POSITA could
tune the parameters of the process without undue experimentation to yield a
treated geothermal brine free of silica, zinc and iron.” Pet. 30. (citing Ex.
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1003 ¶¶ 170–171). But the necessity to “tune” parameters in Christopher’s
process to yield a brine free of silica undermines Petitioner’s argument that
Christopher describes a process that necessarily yields silica at a
concentration within the claimed range. Dr. Gallup supports the possibility
rather than the inevitability that Christopher’s process yields a brine free of
silica when he stated that “[i]n my opinion, a POSITA could easily tune the
parameters of the process [of Christopher] to yield a treated geothermal
brine free of silica, zinc and iron.” Ex. 1003, ¶ 171. PO Resp. 22. We
understand from Dr. Gallup that a person of ordinary skill in the art “could
[have] readily ‘tuned’” Christopher’s process to achieve a result as claimed,
as Petitioner argues. Pet. Reply 7 (citing Ex. 1006, 8; Ex. 2025, 269:25–
270:5). But that proves there is a difference between what Christopher
describes and what is claimed, albeit the difference may be slight without the
need for extensive tuning. Pet. Reply 9. “[D]ifferences between the prior
art reference and a claimed invention, however slight, invoke the question of
obviousness, not anticipation.” Net MoneyIN, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1371 (Fed. Cir. 2008).
Petitioner’s other arguments are similarly undermined. For example,
Petitioner argues that according to Dr. Gallup there is a 1:1 correlation
between silica and iron based on his experience. Pet. Reply 7–8. Yet the
“exact molar correlation between silica and iron will vary based on
temperature, pH, and agitation.” Id.
Accordingly, ¶¶ 150–157 of Dr. Gallup’s declaration also does not
sufficiently support Petitioner’s position that Christopher’s process would
necessarily reduce the concentration of silica in the brine.
Since Petitioner has not presented sufficient evidence showing
Christopher’s process necessarily reduces the concentration of silica to
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within the claimed range as it reduces the iron concentration from 1810 ppm
to 1.0 ppm or less and since that is the basis for arguing that Table 3 and
Figure 20 describe silica at a concentration within the claimed range, Table 3
and Figure 20 insufficiently support Petitioner’s contention that Christopher
describes a brine having a concentration of silica in the claimed range.
Finally, to the extent Petitioner looks to Table 1 to remedy Table 3
and Figure 20, it is unavailing. Pet. 23–24. As Patent Owner explains, “the
iron content of the Feed Brine in Table 3 (746 ppm) is much lower than the
brine in Table 1 (1200 ppm). [Ex. 2002, ¶ 58]. Other components in the
Feed Brine are present in much greater concentrations than those indicated
in Table1. (Id.). They do not match up.” PO Resp. 18. Ex. 1006, 8, 42.
Patent Owner demonstrates this via a chart, reproduced in its Response,
showing the brine of Table 1 and feed stream 1 of Figure 20 are different
compositions. PO Resp.19–20, citing Ex. 1006, 8, 42; Ex. 2002, ¶ 61 (in fn.
5).
Petitioner concedes as much. Pet. Reply 7 (“It is true that the brine
concentrations ‘do not match up’ (POR, 18), nor would a POSITA expect
the constituent concentrations of an averaged brine to ‘match’ the
constituent concentrations of an actual geothermal brine sample. (EX 1011,
161:23–162:10).”).
Accordingly, we agree that “it is undisputable that the composition in
Table 1 is a different composition from the Feed Brine in Table 3, and these
streams are not combinable.” PO Resp. 18 (citing Ex. 2002, ¶ 58). One of
ordinary skill in the art would have to resort to picking and choosing from
disparate disclosures of brine compositions and even then it is not clear that
one of ordinary skill in the art would necessarily reach a composition as
claimed.
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For the foregoing reasons, Petitioner has not shown that Christopher
describes a brine having silica in a concentration in the claimed range by a
preponderance of the evidence.
e. “a concentration of iron ranging from 0 to 300mg/kg”
(Claims 1); “a concentration of iron ranging from 0 to
100mg/kg” (Claim 17); “a concentration of iron less than 10
mg/kg” (Claim 20)
Petitioner argues that “Christopher discloses treated geothermal brines
having . . . iron concentrations of 0.0053 g/L (4.5 mg/kg) in Table 3 and/or
1.0 ppm in Figure 20”, which according to Petitioner are within the claimed
ranges. Pet. 28; Ex. 1006, 12, 42.
Patent Owner’s arguments are the same as those raised in opposition
to Petitioner’s argument that Table 3 and Figure 20 (stream 3) describe
treated geothermal brines having zinc concentrations within the claimed
ranges. PO Resp. 16–19.
For the reasons we have discussed in agreeing with Patent Owner with
respect to the zinc limitation, we also agree with respect to the iron
limitation. It is possible that one of ordinary skill in the art might apply a
density of 1.18kg/L and, thereby, it is possible that the level of iron in the
brine of Table 3 is 4.5 mg/kg as Petitioner argues. It is also possible that the
“1.0 ppm” recited in Figure 20 refers to weight instead of volume. But a
case of inherency cannot resort to relying on mere possibilities and
probabilities. And so Petitioner has not shown that Christopher describes a
brine necessarily having iron in the claimed concentration range by a
preponderance of the evidence.
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f. “and comprising recoverable amounts of one or more metals
selected from the group consisting of lithium, manganese, lead,
rubidium and cesium or mixtures thereof.” (Claims 1, 17, and
20)
We accept Petitioner’s contention, which is not opposed by Patent
Owner and is supported adequately by objective evidence, that Christopher
discloses brines with recoverable amounts of lithium. Pet. 26–27. See
generally PO Resp. 10–23.
g. Conclusion
Because Petitioner has not shown that the “treated” brine of the claims
reads on Christopher’s “aged” brine and not shown that Christopher
describes a brine having zinc, silica, and iron in concentrations in the
claimed ranges by a preponderance of the evidence, Petitioner has not shown
that Christopher describes, expressly or inherently, the compositions of
claims 1, 17, and 20.
2. Dependent Claims 2–16, 18, and 19
Having found that Petitioner does not prove by a preponderance of the
evidence that independent claim 1, 17, and 20 are unpatentable based on
anticipation by Christopher, we find that Petitioner has also failed to prove
that any of the dependent claims are unpatentable on that same ground.
D. Anticipation/Obviousness – Christopher
This ground is lumped in with the anticipation ground. Pet. 27–30
(claim 1), 34–37 (claims 2–13, 17, and 20), and 39–40 (claims 16 and 19).
We have already addressed the challenge to the patentability of the claims as
being anticipated by Christopher, both expressly and inherently. As for the
challenge based on obviousness, other than asserting it would have been
obvious over Christopher, we are given little to go on. The insufficiency of
the reasoning prevents us from doing a meaningful review. Consequently,
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Petitioner does not prove by a preponderance of the evidence that
independent claim 1, 17, and 20 are unpatentable based on obviousness over
Christopher.
E. Obviousness – Christopher, Brown, Burrows, Wilkins
Petitioner challenges claims 1– 20 as obvious under 35 U.S.C. §
103(a) over the combination of Christopher, Brown, Burrows, and/or
Wilkins. Pet. 24, 31–43.
1. Independent Claims 1, 17, and 20
Petitioner does not explain how the combination of Christopher and
Brown, Burrows, and/or Wilkins overcomes the deficiencies in Christopher
identified earlier in addressing the anticipation ground; namely, that
Christopher describes an “aged” brine rather than a “treated” brine and does
not show a brine having zinc, silica, and iron in concentrations in the
claimed ranges. See generally Pet. 24, 31–43
For that reason, Petitioner has not shown that the combination of
Christopher and Brown, Burrows, and/or Wilkins renders obvious the
composition of claims 1, 17, and 20 by a preponderance of the evidence.
That being said, the only aspects of claims 1, 17, and 20 that
Petitioner discusses in the context of this obviousness ground are the silica
limitations (claim 1, see Pet. 31–34; claims 17 and 20, see Pet. 38).
Petitioner argues that a person of ordinary skill would have been motivated
to combine Christopher with each of Brown, Burrows, and Wilkins, to
“remove substantially all of silica”, “to further reduce the concentration of
silica . . . to about 1 ppm,” and “to further reduce the concentration of silica .
. . to about 10 ppm,” respectively. Pet. 31–32, 32, 33.
Petitioner’s case is deficient insofar as it fails to explain the
differences between Christopher and the claims that necessitate reliance
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upon Brown, Burrows, and Wilkins. Additionally, Petitioner provides no
reasoning or explanation as to why one of ordinary skill in the art would
have looked to Burrows and Wilkins to modify Christopher with an
expectation of success. PO Resp. 38 and 40.
Patent Owner provides additional reasons that Petitioner’s case for
obviousness is deficient.
As for Burrows, Patent Owner argues that the brines of Christopher
and Burrows are “completely different”. PO Resp. 39. Patent Owner
explains that Burrows’ discloses a “raw brine with 8-12 ppm Si (17.25 to 25
ppm silica), compared to 750 ppm silica/silicon in Christopher. (Ex. 1007,
¶[0030], [0034] [see table, below “Raw Brine”]; Ex. 1006, ¶8).” Id. As the
Patent Owner notes, “Burrows is dealing with a different brine having a
much lower starting silica concentration.” Id. Petitioner does not explain
why one would have had an expectation of success in reaching a brine with
silica in the claimed range given Christopher’s starting brine has a much
higher concentration of silica than the Burrow’s process starts with. Pet.
Reply 15–16. We agree with Patent Owner that “a POSITA would have no
expectation of success because of the tremendously different silica levels
between the two streams. (Ex. 2002, ¶99).” PO Resp. 39.
As for Wilkins, Patent Owner argues that it involves a process
different than the one Christopher employs. Patent Owner explains that
Wilkins involves adding ammonium hydroxide to a geothermal brine, while
Christopher precipitates hydroxides from a brine using lime. PO Resp. 39–
40 (citing Ex. 1008, Abstract, 1006, 10, 42). “Christopher does not use
ammonium hydroxide, and Wilkins does not use lime. (Ex. 2002, ¶100).” Id
at 40. Patent Owner further explains that Wilkins “adds iron hydroxide to
reduce the ‘stickiness’ of [a] sludge [formed by adding the ammonium
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hydroxide to the brine], resulting in an increased iron content.” Id. (citing
Ex. 1008, 5:49-55). As Patent Owner points out, “Wilkins describes the iron
content as 1400 mg/L. (Id., 4:37-42)” which is “well above the claimed
range. (Ex. 2002 ¶101–102).” Id. at 40, 41. Petitioner does not explain why
one of ordinary skill in the art would have been led to substitute Wilkins’
ammonium hydroxide for Christopher’s lime and thereby reach a brine with
silica in the claimed range. Pet. Reply 15–16. And even if there was a
reason for doing so, Petitioner does not then explain why one would have
had an expectation of success in reaching a brine with iron in the claimed
range when Wilkins describes the result of its process as obtaining an iron
content well above the claimed range. Id. We agree with Patent Owner that
“a POSITA would have no motivation to make such a combination and no
expectation of success in doing so.” PO Resp. 40
Petitioner has not shown that the combination of Christopher and
Burrows and/or Wilkins renders obvious the composition of claims 1, 17,
and 20 by a preponderance of the evidence for these additional reasons.
Petitioner has not shown that the combination of Christopher and
Brown renders obvious the composition of claims 1, 17, and 20 by a
preponderance of the evidence for the earlier stated reason.
2. Dependent Claims 2–16, 18, and 19
Having found that Petitioner does not prove by a preponderance of the
evidence that independent claims 1, 17, and 20 are unpatentable based on
this obviousness ground, we find that Petitioner has also failed to prove that
any of the dependent claims are unpatentable on that same ground.
F. Anticipation – Maimoni
Petitioner challenges claims 1–20 as anticipated under 35 U.S.C.
§ 102(b) by Maimoni. Pet. 38–51.
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1. Independent Claims 1, 17, and 20
a. “A treated geothermal brine composition . . . comprising a
treated geothermal brine” (Claims 1, 17, and 20)
We accept Petitioner’s contention, which is not opposed by Patent
Owner and is supported adequately by objective evidence, that Maimoni
discloses brine with reduced concentration of metals resulting from
processing flashed geothermal brine from the Magmamax No. 1 well and
that that is a “treated geothermal brine” as claimed. Pet. 43 (citing Ex. 1004,
Title, 11–17). See generally PO Resp. 37–48.
b. “said geothermal brine is a Salton Sea brine” (Claims 7 and
20)
We accept Petitioner’s contention, which is not opposed by Patent
Owner and is supported adequately by objective evidence, that Maimoni
discloses brines obtained from wells at the Salton Sea and that they are a
Salton Sea brine as required by claim 15. Pet. 43 (citing inter alia Ex. 1004,
7-8).
c. “having a concentration of zinc ranging from 0 to 300
mg/kg” (Claim 1); “having a concentration of zinc ranging
from 0 to 100 mg/kg” (Claim 17); “having a concentration of
zinc less than 10 mg/kg” (Claim 20)
Petitioner contends that Table 5 discloses a zinc concentration of 17
ppm in Stream No. 18. Pet. 41 (citing Ex. 1004, 17 (Table 5)). We accept
Petitioner’s contention, which is not opposed by Patent Owner and is
supported adequately by objective evidence, that Maimoni discloses a brine
having zinc in a concentration within the claimed range.
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d. “a concentration of silica ranging from 0 to 80 mg/kg”
(Claim 1); “a concentration of silica ranging from 0 to 30
mg/kg” (Claim 17); “a concentration of silica less than 10
mg/kg” (Claim 20)
Petitioner argues that Table 5 and Figure 5 of Maimoni show silica
“drop[ping] to about ‘22 ppm’ on Stream No. 11 leaving the iron thickener
unit” which is within the claimed range. Pet. 43, Ex. 1004, 15-17: Table 5
and Figure 5, reproduced below.

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Table 5 of Maimoni shows a process flow sheet for various streams for
Magmamax No. 1 brine..
Ex. 1004, 16–17 (reproduced at Pet. 45).

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Fig. 5 of Maimoni shows a processing flow chart for Flashed Magmamax
No. 1 brine.
Ex. 1004, 15 (reproduced at Pet. 44).
But the zinc concentration in Stream No. 11 is above the range
specified in the claim. Pet. 43, Ex. 1004, 17 (Table 5). PO Resp. 41. Thus
there is no single description in Maimoni of a brine having all the claimed
components with concentrations as claimed. We agree with Patent Owner
that Maimoni does not teach a stream with each of the claimed
concentrations of silica, zinc, and iron. PO Resp. 41.
To compensate for the high zinc concentration in Stream No. 11,
Petitioner directs our attention to Stream No. 18. Pet. 46 (reproducing an
annotated version of Table 5 showing Stream Nos. 11 and 18 and how the
concentration values for SiO2, Fe, Zn, and Mn correspond). But the
difficulty with relying on Stream No. 18 is that, as Patent Owner suggests,
there is no value reported for the concentration of silica. PO Resp. 41, Ex.
1004, 17 (Table 5, Stream No. 18). Petitioner asserts that “Maimoni
nonetheless discloses a treated geothermal brine having specific silica (22
ppm), zinc (17 ppm) and iron (13 ppm) concentrations that fall within the
claimed ranges.” Pet. 46. But that is a characterization of Maimoni’s brine
that can only come from picking and choosing from the disparate disclosures
of the compositions for Stream Nos. 11 and 18.
We note that Petitioner states that Maimoni “inherently discloses a
silica concentration of less than or equal to 22 ppm in Stream 18.” Pet. 42
(citing Ex. 1004, 14–15). This statement is not buttressed with any further
analysis. While pages 14–15 of Maimoni indicate that removing silica from
brine early in the process is advantageous (see also Pet. 43), it does so only
generally and silica concentrations are nowhere mentioned.
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Petitioner argues that silica coprecipitates with iron and it is perhaps
this argument that Petitioner is relying upon to make a case for inherency
based on Stream No. 18. But there is insufficient evidence to support it.
Pet. 47.
According to Petitioner, “a POSITA would appreciate that the 22 ppm
of silica in Stream 11 of Maimoni coprecipitates with the 26 ppm of iron
based on the disclosed processing conditions, thereby further reducing the
concentration of silica to well below the reported 22 ppm [in Stream No.
18].” Pet. 47 (citing Ex. 1003 ¶205). Petitioner explains that Maimoni
maintains the pH of the brine with, for example, caustic soda so that “the
iron precipitates quantitatively to yield a brine with low iron and silica
concentrations (e.g., iron concentrations of 13 ppm in Streams 18, 21 and
24).” Id. (citing Ex. 1003 ¶¶ 202-206).
As we understand it, Petitioner is arguing that Maimoni’s process
necessarily yields a concentration for silica in Stream No. 18 that is below
that reported for Stream No. 11, i.e., 22 ppm. But it is based on properly
maintaining the pH of the brine. As Patent Owner explains, Dr. Gallup
confirms that “quantitative precipitation” of silica and iron is affected by
several parameters. PO Resp. 42, relying on its arguments opposing the
anticipation ground over Christopher relative the silica limitation, discussed
above in section II.F.1.d.1 “At least two of these parameters, pH and reactor
stirring rate, are not reported in Table 5.” Id. Accordingly, we do not know
from Maimoni what the impact of adjusting the pH will be on the silica

1 We stated there, in part, that “Petitioner argues that according to Dr. Gallup
there is a 1:1 correlation between silica and iron based on his experience.
Pet. Reply 7–8. Yet the ‘exact molar correlation between silica and iron will
vary based on temperature, pH, and agitation.’ Id.”
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concentration of the brine of Stream No. 18. We agree with Patent Owner
that “[t]here simply is insufficient evidence to conclude that Stream 18 must
have the same or a lower amount of silica than stream 11. (Ex. 2002, ¶103-
104).” Id.
Accordingly, there is insufficient evidence to support Petitioner’s
position that Christopher’s process would necessarily reduce the
concentration of silica in the brine of Stream No. 18 so that it has silica in a
concentration within the claimed ranges.
Thus, Petitioner has not shown that Maimoni describes a brine having
silica in a concentration in the claimed ranges for claims 1, 17, and 20 based
on Stream No. 18 (Ex. 1004, 17 (Table 5)) by a preponderance of the
evidence.
On the other hand, we are less persuaded by Patent Owner’s other
argument that the “22 ppm” value for Stream No. 11 shown in Table 5
cannot be relied upon. According to Patent Owner, because:
• the streams shown in Table 5 refer to “nominal flows and
compositions.” PO Resp. 42 (citing Ex. 1004, 14);
• Maimoni states: “silica-separation step was not very effective,
and silica was found to contaminate the products.” (Ex. 1004,
14).” Id.;
• the data recorded in Table 5 “appear to be calculated relative to
the starting material concentrations rather than indicative of
actual stream concentrations.” Id. at 43 (citing Ex. 1004, 14);
and,
• “it is noteworthy that not a single component in Table 5
changes in concentration as the process progresses, despite
components being fed to various process equipment.” Id. at
43–44.
To buttress that last reason Patent Owner provides annotated versions of
Figure 5 singling out the Manganese Reactor (id. at 44) and Table 5 focusing
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on the data for streams 11, 15, and 18 (id. at 45). Finally, Patent Owner lists
what Patent Owner believes are “numerous other very clear errors with the
data in Fig. 5.” Id. at 46–47.
Given all this, Patent Owner concludes that a person of ordinary skill
in the art would not have reasonably understood or inferred that the “22
ppm” value shown in Table 5 “accurately reflects” a brine. Id. at 46 (citing
Ex. 2002, ¶104-105).
We disagree. Maimoni expressly describes a silica concentration of
“22 ppm” in Table 5. A person of ordinary skill in the art reading Table 5
would understand it to accurately report “22 ppm” for silica for brine based
on a “pilot plant test.” Ex. 1004, 16. While the value may be “nominal” in
the sense that it does not reflect the result that might be obtained if an actual
pilot plant was used, the data is nevertheless actual data from a “pilot plant
test[].” Id., Pet. Reply 18–19. The reasons Patent Owner gives speculate on
the data that would be obtained were an actual pilot plant used to conduct
the Hazen process. They do not, however, persuade us that Maimoni does
not describe, as a matter of fact, the actual result of a pilot plant test. As
such, the “22 ppm” value shown in Table 5 (for Stream No. 11) can be relied
upon to establish anticipation.
Accordingly, Petitioner has shown that Maimoni describes a brine
having silica in a concentration in the claimed range for claims 1 and 17
based on Stream No. 11 (Ex. 1004, 16 (Table 5)) by a preponderance of the
evidence. However, the zinc concentration in Stream No. 11 (333 ppm) is
above the range specified for zinc in claims 1 and 17.
Petitioner has not shown that Maimoni describes a brine having silica
in a concentration in the claimed range for claim 20 (“a concentration of
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silica less than 10 mg/kg”) based on Stream No. 11 (Ex. 1004, 16 (Table 5))
by a preponderance of the evidence.
e. “a concentration of iron ranging from 0 to 300mg/kg”
(Claims 1); “a concentration of iron ranging from 0 to
100mg/kg” (Claim 17); “a concentration of iron less than 10
mg/kg” (Claim 20)
We accept Petitioner’s contention, which is not opposed by Patent
Owner and is supported adequately by objective evidence, that Maimoni
discloses a brine having iron at a concentration within the claimed range.
Pet. 42 (citing Ex. 1004, 17, Table 5 (Stream No. 18)).
f. “and comprising recoverable amounts of one or more metals
selected from the group consisting of lithium, manganese, lead,
rubidium and cesium or mixtures thereof.” (Claims 1, 17, and
20)
We accept Petitioner’s contention, which is not opposed by Patent
Owner and is supported adequately by objective evidence, that Maimoni
discloses a brine with metals such as lithium in “recoverable amounts.” Pet.
42 (citing Ex. 1004, 17, Table 5 (Stream No. 18: 182 ppm for lithium)).
g. Conclusion
Because Petitioner has not shown that Maimoni describes a brine with
each of the claimed concentrations of silica, zinc, and iron by a
preponderance of the evidence, Petitioner has not shown that Maimoni
describes, expressly or inherently, the composition of claims 1, 17, and 20.
2. Dependent Claims 2–16, 18, and 19
Having found that Petitioner does not prove by a preponderance of the
evidence that independent claims 1, 17, and 20 are unpatentable based on
anticipation by Maimoni, we find that Petitioner has also failed to prove that
any of the dependent claims are unpatentable on that same ground.
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G. Anticipation/Obviousness – Maimoni
This ground is lumped in with the anticipation ground. Pet. 43–47
(claim 1) and 51–52 (claims 2–13, 17, and 20). We have already addressed
the challenge to the patentability of the claims as being anticipated by
Maimoni, both expressly and inherently. As for the challenge based on
obviousness, other than asserting the claims are “unpatentable over Maimoni
(Ground No. 5)”, we are given little to go on. Pet. 40. The insufficiency of
the reasoning prevents us from doing a meaningful review. Id.
Consequently, Petitioner does not prove by a preponderance of the evidence
that independent claim 1, 17, and 20 are unpatentable based on obviousness
over Maimoni.
H. Obviousness – Maimoni, Brown, Burrows, Wilkins, Christopher
Petitioner challenges claims 1–20 as rendered obvious under 35
U.S.C. § 103(a) over Maimoni, Brown, Burrows, Wilkins, and/or
Christopher. Pet. 47–51 (claim 1), 53–55 (claims 2–13, 17, 20), 55–56
(claims 14, 17, 20), and 58 (claims 16, 19).
1. Independent Claims 1, 17, and 20
Petitioner’s basic argument is that Brown, Burrows, Wilkins and/or
Christopher would have led one of ordinary skill in the art to reduce the
concentration of zinc, silica, and iron in the brine of Maimoni to within the
claimed ranges in order to achieve “improved injectability, reduced scaling,
and improved mineral extraction”. Pet. 50.
Brown is applied because it “discloses a treated Salton Sea brine
containing residual amounts of silica of less than 10 ppm, and more
preferably, between about 1 to about 10 ppm silica. EX 1005, 3:60-66.” Pet.
48.
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We have already explained why we accept that Maimoni describes a
Salton Sea brine and a brine with silica within the ranges of claim 1 and 17
(with respect to Stream No. 11 of Table 5). Ex. 1004, 8, 16. Accordingly,
Maimoni already achieves the improvement that Petitioner argues one of
ordinary skill would have been led to by reducing the silica concentration to
the levels Brown discloses. Pet. 49 (“improve the injectivity of a treated
geothermal brine composition”). Petitioner, however, does not explain how
the combination of Maimoni and Brown overcomes the deficiency in
Maimoni identified earlier in addressing the anticipation ground; namely,
that Maimoni does not show a brine having all the components – zinc, silica,
and iron – in concentrations within the claimed ranges.
Burrows and Wilkins are also applied for its disclosure of silica in a
concentration within the claimed ranges. Pet. 48 (for Burrows: citing Ex.
1002, at 86; Ex 1007, Abstract, Figures 1-2, [0002], [0021], [0032], [0034],
[0055]-[0068]; for Wilkins: citing Ex. 1008, Title and Figure 2). Since we
have established that Maimoni describes a brine with silica within the
claimed ranges, Maimoni already achieves the improvements that Petitioner
argues one of ordinary skill would have obtained by reducing the silica
concentration to the levels Burrows and Wilkins discloses. Pet. 50
(“improved injectability, reduced scaling, and improved mineral
extraction”). Moreover, Petitioner does not explain how the combination of
Maimoni and Burrows and/or Wilkins overcomes the deficiency in Maimoni
identified earlier in addressing the anticipation ground; namely, that
Maimoni does not show a brine having all the components – zinc, silica, and
iron – in concentrations within the claimed ranges.
As an additional argument for why Petitioner’s case for obviousness
over Maimoni and Burrows is deficient, Patent Owner argues that the brines
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of Maimoni and Burrows are “different”. PO Resp. 61. Further, on that
point, Patent Owner argues that Maimoni and Wilkins “involve two
processes with completely different steps that cannot be combined.” Id. We
addressed these arguments earlier with respect to the obviousness challenge
involving Christopher, Brown, Burrows, and/or Wilkins and incorporate our
discussion herein. See supra.
For the reasons discussed, Patent Owner’s additional arguments for
why Petitioner’s case for obviousness over Maimoni and Burrows and/or
Wilkins is deficient are persuasive.
As for Christopher, Petitioner does not explain how the combination
of Maimoni and Christopher overcomes not only the deficiency in Maimoni
identified earlier in addressing the anticipation ground; namely, that
Maimoni does not show a brine having all the components – zinc, silica, and
iron – in concentrations within the claimed ranges, but also Christopher,
namely, that Christopher describes an “aged” brine rather than a “treated”
brine and does not show a brine having zinc, silica, and iron in
concentrations in the claimed ranges. We agree with Patent Owner that, for
the same reasons that Christopher does not describe the claimed
compositions, “Christopher fails to remedy the deficiencies of Maimoni.”
PO Resp. 59.
Petitioner has not shown that the combination of Maimoni and
Burrows, Wilkins, and/or Christopher renders obvious the composition of
claims 1, 17, and 20 by a preponderance of the evidence for these additional
reasons.
Petitioner has not shown that the combination of Maimoni and Brown
renders obvious the composition of claims 1, 17, and 20 by a preponderance
of the evidence for the earlier stated reason.
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2. Dependent Claims 2–16, 18, and 19
Having found that Petitioner does not prove by a preponderance of the
evidence that independent claim 1 or 15 are unpatentable based on this
obviousness ground, we find that Petitioner has also failed to prove that any
of the dependent claims are unpatentable on that same ground.
III. CONCLUSION
For the foregoing reasons, Petitioner has not proven by a
preponderance of the evidence that any challenged claim of the ’126 patent
are unpatentable, as summarized in the following table:
Claims 35
U.S.C. §
Reference(s)/ Basis Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–20 102 Christopher 1–20
1–20 102/103 Christopher 1–20
1–20 102 Christopher, Brown,
Burrows, Wilkins
1–20
1–20 102 Maimoni 1–20
1–20 102 Maimoni 1–20
1–20 103 Maimoni, Brown,
Burrows, Wilkins,
Christopher
1–20
Overall
Outcome
1–20

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner has not shown by a preponderance of the
evidence that claims 1–20 are unpatentable; and
FURTHER ORDERED that because this is a Final Written Decision,
parties to this 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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PETITIONER:

Shawn Dellegar
David Sullivan
Terry Watt
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
jkrieger@kilpatricktownsend.com
nkennedy@kilpatricktownsend.com
tpetersen@kilpatricktownsend.com
jblackburn@kilpatricktownsend.com