TerraLithium LLC.

Patent Trials and Appeals Board

Mar 15, 2021

IPR2019-01602 (P.T.A.B. Mar. 15, 2021)

Trials@uspto.gov Paper 32
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.
____________

IPR2019-01602
Patent 9,650,555 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 1–18 of U.S. Patent No. 9,650,555 B2 (Ex. 1001,
“the ’555 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 1–18
are unpatentable.
A. Background
EnergySource Minerals, LLC (“Petitioner”) filed a Petition requesting
inter partes review of claims 1–18 of the ’555 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 1–18 on all asserted grounds of unpatentability. Paper 9 (“DI”).
After institution, Patent Owner filed a Patent Owner Response
(Paper 15, “PO Resp.”); Petitioner filed a Reply (Paper 20, “Pet. Reply”);
and Patent Owner filed a Sur-reply (Paper 24, “PO Sur-reply”).
On December 15, 2020, the parties presented arguments at oral
hearing, the transcript of which is of record. Paper 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. 9,644,126 and U.S. Patent No. 9,051,827. Pet. 1. These petitions
correspond to IPR2019-01603 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. 9,644,126 (IPR2019-01603). 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 IPR2019-01603. Institution was denied in
IPR2019-01601; IPR2019–01604; IPR2019–01605; IPR2019–01606; and
IPR2019–01607.
C. The ’555 patent (Ex. 1001)
1. Disclosure
The ’555 patent “relates to treated brine compositions with reduced
concentrations of silica and iron.” Ex. 1001, code (54), 1:23–24. The ’555
patent states that certain embodiments “also relate to geothermal brine
compositions from which silica and/or iron have been selectively removed”
and “[f]urther embodiments relate to brine compositions with reduced
concentrations of silica and iron that may also be used for recovery of these
metals, including lithium, zinc, manganese, and potassium.” Id. at 1:30–36.
The ’555 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 3:27–32. The ’555 patent discloses another embodiment in
which “the treated geothermal brine compositions described herein have a
composition of arsenic ranging from 0 to 7 mg/kg.” Id. at 4:28–30. The
’555 patent also describes the use of treated geothermal brines, such as for
extraction of minerals (e.g., lithium, manganese, potassium, rubidium,
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cesium, phosphates, zinc, and lead). Id. at 4:43–50.
2. Claims
The ’555 patent has 18 claims, all of which Petitioner challenges.
Pet. 1.
Claims 1 and 15 are the independent claims. Claims 2–14 depend
from claim 1 and claims 16–18 depend from claim 15. All but claims 10
and 11 are directed to a “treated geothermal brine composition.” Claims 10
and 11 are directed to a “method of using” the composition of claim 1.
Independent claims 1 and 15, reproduced below, are illustrative.
1. A treated geothermal brine composition, the composition
comprising a treated geothermal brine having a concentration of
silica ranging from 0 to 80 mg/kg, a concentration of arsenic
ranging from 0 to 7 mg/kg, and a concentration of iron ranging
from 0 to 300mg/kg, and comprising recoverable amounts of one
or more metals selected from the group consisting of lithium,
manganese, rubidium, cesium and zinc or mixtures thereof.
15. A treated geothermal brine composition, the composition
comprising a treated geothermal brine having a concentration of
silica ranging from 0 to 80 mg/kg, a concentration of arsenic
ranging from 0 to 7 kg, and a concentration of iron ranging from
0 to 300 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,
rubidium, cesium and zinc or mixtures thereof.
Ex. 1001, 42:26–33, 44:9–17. As can be seen, claim 15 includes the
limitation “and said geothermal brine is a Salton Sea brine” but is otherwise
the same as claim 1.
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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
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
Okada Hidehiko Okada, JP 3691027, published Nov. 11, 2003 1008
1

E. Grounds Asserted
Petitioner contends that claims 1–18 of the ’555 patent are
unpatentable under the following grounds:
Claim(s)
Challenged 35 U.S.C. Reference(s)/Basis
1–18 § 102 Christopher
1–18 § 103 Christopher, Brown
1–18 § 102 Maimoni
1–18 § 103 Maimoni, Brown
1–18 § 102 Okada
1–18 § 103 Okada, Brown
Pet. 3–4.

1 Ex. 1008 is a certified English language translation of Okada (Ex. 1007)
submitted by Petitioner.
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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, ¶ 21) and PO Resp. 3 (citing Ex. 2002, ¶¶ 17–
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
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); “concentration ranges including ‘0’ and ‘less than’” (id. at
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11–12); “a concentration of arsenic ranging from 0 to 7 kg” (id. at 12); and,
“a recoverable amount” (id. at 13). Patent Owner responds to Petitioner’s
proposed constructions and does not propose constructions for other claim
terms. PO Resp. 9–13. 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 1–18 as anticipated under 35 U.S.C.
§ 102(b) by Christopher. Pet. 22–37.
1. Independent Claims 1 and 15
a. “A treated geothermal brine composition” (Claims 1 and
15); “the composition comprising a treated geothermal brine”
(Claim 1)
Petitioner argues that Christopher describes a “treated” geothermal
brine because, inter alia, the silica concentration is reduced. Pet. 23 (citing
Ex. 1006, 8). Table 1 of Christopher is reproduced below.

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
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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. 23;
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 6 (“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 ’555 patent. Pet. 9 (citing Ex. 1001, 7:18–21).
“[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 ’555 patent provides an explicit definition for “treated”:
The term “treated” in reference to a brine (e.g., “treated brine” or
“treated geothermal brine”) refers to brines that have been
processed such that the concentration of at least one metal or
elemental component has been reduced in the brine.
Ex. 1001, 7:18–24. We agree with Petitioner that this definition of “treated”
controls.
Patent Owner proposes a more narrow meaning for “treated,” arguing
that the ’555 patent describes a “treated” brine as having been flashed and
then processed to remove iron. PO Resp. 5–6 (citing Ex. 2002, ¶ 31–36,
Ex. 1001, 32:41–51).
The passage Patent Owner relies upon is an example treatment. PO
Resp. 4–5 (citing Ex. 1001, 32:41–43 (discussing “Example 6”)). While the
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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 ’555 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
been reduced in the brine.” Ex. 1001, 7:18–21.
In that regard, Petitioner contends that Christopher’s “aging process
resulted in a reduction in ‘at least one elemental component’ (i.e., silica).”
Pet. Reply 6 (emphasis added). However, this is not buttressed with any
evidence.
Petitioner has not presented any evidence showing Christopher’s
“aging” process reduces “the concentration of at least one … elemental
component” to support its contention that Christopher’s brine of Table 1 is a
“treated” brine as claimed.
Accordingly, on this record, Petitioner has not shown that the
“treated” brine of the claims reads on Christopher’s “aged” brine by a
preponderance of the evidence.
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b. “said geothermal brine is a Salton Sea brine” (Claim 15)
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 ’555 patent. Pet. 28 (citing Ex. 1003, ¶ 158), Ex. 1001, 7:15–17.
See generally PO Resp. 5–6 and 12–25.
c. “having a concentration of silica ranging from 0 to 80
mg/kg” (Claims 1 and 15)
Petitioner argues that Christopher describes a brine having a
concentration of silica in the claimed range. Pet. 23–27. Petitioner relies on
Table 1 (reproduced above), Table 3 and Figure 20 (reproduced below). Id.;
Ex. 1006, 8, 12, 42.
With respect to Table 1, Petitioner contends that it shows silica at 40
ppm and that this concentration is within the range claimed. Pet. 23;
Ex. 1006, 8. According to Petitioner, “1 ppm is the same as 1 mg/kg. EX
1003, ¶49.” Pet. 12.
Patent Owner argues that Table 1 reports the 40 ppm for “Si” but it is
unclear that “Si” refers to “silica.” PO Resp. 15–17.
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 7; Ex. 1006, 8.
Patent Owner has the stronger argument.
It is true that “silica” is recited in the statement below Table 1.
Pet. 23; PO Resp. 17; 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
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analysis and Christopher simply forgot to apply the conversion factor in his
text below the table. (Ex. 2025, 183:1-19; Ex. 2002, ¶56).” PO Resp. 17.
“Additionally, Dr. Harrison testified that ‘[s]cientists typically determine
silica content by analyzing for elemental silicon,’ which is consistent with
reading Christopher’s Table 1 as reporting the amount of silicon, not silica.”
Ex. 2002 ¶ 55; PO Resp. 16.
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 7 (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 of that one of ordinary skill in the art reading
Table 1 would have understood “Si” to mean silica.
Since Petitioner has not presented any 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 or Figure 20 of Christopher do not recite a concentration for silica.”
Pet. 25; Ex. 1006, 42. Accordingly, Petitioner does not establish that the
combined disclosures of Table 3 and Figure 20 indicate that Christopher
describes a brine having a concentration of silica in the claimed range.
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Table 3 of Christopher is reproduced below:

Table 3 of Christopher shows analytical data for feed and product brines and
washed/dried solid product.
Ex. 1006, 12 (reproduced at Pet. 24).
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
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.
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Ex. 1006, 42 (reproduced at Pet. 24). It is this table in particular that
Petitioner is referring to.
Even though Table 3 and Figure 20 do not mention silica, Petitioner
argues that Figure 20 shows Christopher’s process reducing the iron
concentration from 1810 ppm to 1.0 ppm or less, and the silica concentration
would necessarily reduce along with it, i.e., “, falling from 40 ppm to a
concentration at or near 0 ppm”. Pet. 25 (citing Ex. 1006, 42).
Petitioner relies on (a) the statement at 19:1–6 of the ’555 patent
(Ex. 1001) and (b) ¶¶ 150–157 of Dr. Gallup’s declaration (Ex. 1003) to
show that Christopher’s process necessarily reduces silica concentration as
iron concentration reduces. Pet. 25.
Regarding (a), the ’555 patent states that arsenic (III) and (V)
oxyanions, for which iron (III) hydroxide may have a significant affinity, if
present in the brine, may be co-deposited with the silica on the iron (III)
hydroxide. Ex. 1001, 19:1–6 (emphasis added). We agree with Patent
Owner that “[t]he statement from the ’555 patent, upon which Petitioner
relies as support for its position, uses the terms ‘may have’ and ‘may be’ and
does not provide a definitive teaching to support Petitioner’s allegation of
inherency. (Ex. 2002, ¶67).” PO Resp. 23.
Petitioner submits that “the Board should accept as true the
admissions in the ’555 patent that at least iron, silica, and arsenic are known
to a POSITA [person of ordinary skill in the art] to co-precipitate under the
prescribed conditions.” Pet. Reply 8. But the ’555 patent does not state that
at least iron, silica, and arsenic co-precipitate under the prescribed
conditions, only that they may co–precipitate.
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Accordingly, 19:1–6 of the ’555 patent does not sufficiently support
Petitioner’s position that Christopher’s process would necessarily reduce the
concentration of silica in the brine.
Regarding (b), Dr. Gallup testifies that “[b]ecause the concentration of
iron decreases in Christopher from 1810 ppm to 1.0 ppm or less (EX 1006,
at 42 [i.e., Fig. 20]), it follows that the concentration of silica would also fall
from 40 ppm at the post-flash feed (Id., at 8) to a concentration at or near 0
ppm in the Discharge Liquor (3) or the Product Brine (4).” Ex. 1003, ¶ 150.
Pet. 25.
But Dr. Gallup qualifies 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 and iron.” Ex. 1003, ¶ 157. PO Resp. 24.
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 9. 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 9. Yet the
“exact molar correlation between silica and iron will vary based on
temperature, pH, and agitation.” Id. Further undermining Petitioner’s
position, Dr. Gallup testified that he agrees that the relative level of silica as
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a result of it reacting with iron “is just based on probabilities and
possibilities.” Ex. 2025, 240:11–18; PO Resp. 24.
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
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. 27 (citing Ex. 1003, ¶ 162). As Patent
Owner demonstrates via a chart, reproduced in its Response, the brine of
Table 1 and feed stream 1 of Figure 20 are different compositions.
PO Resp. 21, citing Ex. 1006, 8, 42; Ex. 2002, ¶ 65. Petitioner concedes as
much. Pet. Reply 8–9 (“It is true that the brine concentrations ‘do not match
up’ (POR, 19), 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).”). 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.
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.
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d. “a concentration of arsenic ranging from 0 to 7 mg/kg”
(Claims 1 and 15)
Similar to the silica limitation, Petitioner argues that Christopher
describes a brine having a concentration of arsenic in the claimed range,
relying on Table 1, Table 3 and Figure 20. Pet. 27; Ex. 1006, 8, 12, 42.
With respect to Table 1, it is undisputed that it records an arsenic
concentration of “3. ppm” which falls within the claimed range of “from 0 to
7 mg/kg” (Ex. 1001, 42:29). Pet. 23, 27; Ex. 1006, 8.
With respect to Table 3 and Figure 20, it is evident that neither recites
a concentration for arsenic. Ex. 1006, 42. As with the silica limitation,
Petitioner argues that Christopher’s process necessarily reduces arsenic to a
concentration within the claimed range iron concentration as the iron
concentration is reduced. Pet. 27. Since Petitioner has not presented
sufficient evidence showing Christopher’s process necessarily reduces the
concentration of arsenic to 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 arsenic 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 arsenic in the claimed range.
To the extent Petitioner looks to Table 1 to remedy Table 3 and Figure
20 for their lacking to mention arsenic, it is unavailing for the reasons
discussed earlier in finding such a remedy unavailing to meet the claimed
silica concentration.
Petitioner has not shown that Christopher describes a brine having
arsenic in a concentration in the claimed range by a preponderance of the
evidence.
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e. “a concentration of iron ranging from 0 to 300mg/kg”
(Claims 1 and 15)
Petitioner argues that Table 3 shows a brine “having an iron
concentration of 0.0053 g/L (4.5 mg/kg)” which falls within the claimed
range. Pet. 28 (citing Ex. 1006, 12). According to Petitioner, 0.0053 g/L
equates to 4.5 mg/kg. Id., fn. 3 (“mg/kg=(g/L*1000)/1.18kg/L due to the
density of Salton Sea geothermal brines.”).
Patent Owner argues that “a POSITA would need the density of the
brine in order to make the conversion.” PO Resp. 18, citing Ex. 2002, ¶ 60;
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 0.0053 g/L to 4.5
mg/kg. According to Patent Owner, said density “is unsupported by any
reference, and Petitioner did not even cite to its own expert for the statement.
(Ex. 2002, ¶61).” PO Resp. 18 (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, 337:4–12).
We agree with Patent Owner. To ascertain whether Table 3 describes
iron having a concentration in the range claimed, the 0.0053 g/L value must
be converted to mg/kg and that entails knowing the density of the
geothermal brine associated with Table 3. In that regard, “Christopher does
not provide any density values that would allow a POSITA to make this
calculation.” Id. (citing Ex. 2002, ¶ 61). 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
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art might apply a density of 1.18kg/L, a case of inherency cannot resort to
relying on possibilities and probabilities.
For the foregoing reason, Table 3 insufficiently supports Petitioner’s
contention that Christopher describes a brine having a concentration of iron
in the claimed range.
Petitioner also contends that “[s]imilarly, in the example described in
Figure 20, the concentration of iron in the treated brine stream (3) is 1 ppm
or less. [Ex. 1006], at 42.” Pet. 28.
However, as Patent Owner argues, it is unclear whether Christopher’s
disclosure of “1 ppm” for iron refers to ppm by volume or ppm by weight as
the claims call for. PO Resp. 20. According to Patent Owner, “Dr. Gallup
explained [that] ppm may be reported as ppm by weight or ppm by volume.
(Ex. 2025, 119:16-25; Ex. 2002, ¶64).” Id.
Because we are directed to no evidence contradicting it, we credit Dr.
Gallup’s testimony that ppm can be reported by weight or by volume. Given
this, one of ordinary skill in the art reading that iron is at a concentration of
“1.0 ppm” for stream 3 in Figure 20 may understand it to refer to ppm by
volume.
Accordingly, whether the “1.0 ppm” recited in Figure 20 refers to
weight is uncertain. Although it is possible that one of ordinary skill in the
art would understand it to mean ppm by weight, a case of inherency cannot
resort to relying on possibilities and probabilities. In re Olerich, 666 F.2d
578, 581 (CCPA 1981).
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.
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We note that Patent Owner also argues that Petitioner improperly
combines Table 1 and Table 3. PO Resp. 18. However, Petitioner’s analysis
does not rely on Table 1. Pet. 28.
Petitioner has not shown that Christopher describes a brine having
iron in a concentration in the claimed range by a preponderance of the
evidence.
f. “recoverable amounts of one or more metals selected from
the group consisting of lithium, manganese, rubidium, cesium
and zinc or mixtures thereof.” (Claims 1 and 15)
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. 29. See generally
PO Resp. 12–25.
g. Conclusion
Because Petitioner has not shown that the “treated” brine of the claims
reads on Christopher’s “aged” brine and has not shown that Christopher
describes a brine having silica, arsenic, and lead in concentrations in the
claimed ranges by a preponderance of the evidence, Petitioner has not shown
that Christopher describes, expressly or inherently, the composition of
claims 1 and 15.
2. Dependent Claims 2–14 and 16–18
Having found that Petitioner does not prove by a preponderance of the
evidence that independent claim 1 or 15 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.
Patent Owner raises an additional reason why claim 11 is not proven
unpatentable. Claim 11 is directed to a method of using a treated geothermal
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brine composition comprising “steps of injecting the composition of claim 1
into a geothermal reservoir.” Ex. 1001, 43:26–27.
According to Patent Owner, Petitioner “admit[s] that Christopher does
not disclose this step. (Pet., 33; Ex. 2002, ¶73).” PO Resp. 26. We agree
because Petitioner contends that “although Christopher does not explicitly
describe the process for reinjecting treated geothermal brines into a
geothermal reservoir, this step is admitted as prior art by the ’555 patent.”
Pet. 33. By relying on material outside the four corners of Christopher to
show the claimed subject matter, Petitioner effectively concedes that
Christopher alone does not describe it.
Petitioner responds by arguing that “the specification demonstrates
that reinjection into the geothermal reservoir would have been commonly
known to a POSITA.” Pet. Reply 10, citing Ex. 1001, 2:67–3:2. Petitioner
also states that “[b]oth Dr. Gallup and Dr. Harrison testified that it was
known to reinject geothermal brines into a geothermal reservoir via an
injection well.” Id., citing Ex. 1011, 22:1124:10, 65:10–66:20, 77:18–20,
80:11–81:5, 87:24–88:11; Ex. 2025, 224:5–12. But the question here is one
of anticipation. The question is not whether the claimed reinjection would
have been obvious over Christopher given the common knowledge that
treated geothermal brines may be reinjected into a geothermal reservoir.
Accordingly, for this additional reason, Petitioner has not shown that
Christopher describes, expressly or inherently, the claimed method of using
the composition of claim 11 by a preponderance of the evidence.
D. Obviousness – Christopher and Brown
Petitioner challenges claims 1–18 as obvious under 35 U.S.C.
§ 103(a) over the combination of Christopher and Brown. Pet. 22–37.
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1. Independent Claims 1 and 15
Petitioner asserts that Claims 1 and 15 are “rendered obvious over
Christopher (EX 1006) in view of Brown (EX 1005).” Pet. 22.
Petitioner does not explain how the combination of Christopher and
Brown 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
silica, arsenic, and lead in concentrations in the claimed ranges.
For that reason, Petitioner has not shown that the combination of
Christopher and Brown renders obvious the composition of claims 1 and 15
by a preponderance of the evidence.
That being said, the only aspects of claims 1 and 15 that Petitioner
discusses in the context of this obviousness ground are the limitations “said
geothermal brine is a Salton Sea brine” (claim 15; see Pet. 29) and “a
concentration of silica ranging from 0 to 80 mg/kg” (claims 1 and 15; see
Pet. 25–27). We have already found that Christopher describes a Salton Sea
brine.
Regarding the silica concentration, Petitioner argues that, “[e]ven if
Christopher is somehow interpreted to disclose a concentration range of
silica that is higher than 80 mg/kg, it would have been obvious to a POSITA
in view of the Brown to reduce the silica concentration range to a level
below 80 mg/kg to avoid silica scaling concerns.” Pet. 25.
We are not placed in a position to do a meaningful review of this
argument because Petitioner does not identify the disclosure in Christopher
that may “somehow [be] interpreted to disclose a concentration range of
silica that is higher than 80 mg/kg” and thus has not established the starting
point of its obviousness argument. Pet. 25.
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Petitioner has not shown that the combination of Christopher and
Brown renders obvious the composition of claims 1 and 15 by a
preponderance of the evidence for the earlier stated reason.
2. Dependent Claims 2–14 and 16–18
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.
E. Anticipation – Maimoni
Petitioner challenges claims 1–18 as anticipated under 35 U.S.C.
§ 102(b) by Maimoni. Pet. 38–51.
1. Independent Claims 1 and 15
a. “A treated geothermal brine composition” (Claims 1 and
15); “the composition comprising a treated geothermal brine”
(Claim 1)
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. 38; Ex. 1004, 15,
Figure 5. See generally PO Resp. 37–48.
b. “said geothermal brine is a Salton Sea brine” (Claim 15)
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 Ex. 1004, 7–8).
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c. “having a concentration of silica ranging from 0 to 80
mg/kg” (Claims 1 and 15)
The parties dispute whether the silica concentration disclosed in
Maimoni can be relied upon to show that Maimoni’s brine includes silica at
a concentration within the claimed range.
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. 39; Ex. 1004, 15–17, Table 5
and Figure 5. Table 5 of Maimoni is 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. 40). Figure 5 of Maimoni is reproduced
below.
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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. 39).
Patent Owner argues that the “22 ppm” value shown in Table 5 (for
Stream No. 11) cannot be relied upon because:
• the streams shown in Table 5 refer to “nominal flows and
compositions.” PO Resp. 40–41 (citing Ex. 1004, 14);
• “Dr. Gallup agreed that Table 5 is not indicative of actual data.”
Id. at 41 (citing Ex. 2025, 160:13–15);
• “Maimoni reports that . . . the ‘silica-separation step was not
very effective, and silica was found to contaminate the
products.’” Id. (quoting Ex. 1004, 14).
• 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 41–42 (citing Ex. 2002,
¶¶ 101-102); and,
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• “[I]t 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 42.
To buttress that last reason Patent Owner provides annotated versions of
Figure 5 singling out the Manganese Reactor (id. at 43) and Table 5 focusing
on the data for streams 11, 15, and 18 (id. at 44). Finally, Patent Owner lists
what Patent Owner believes are “numerous other very clear errors with the
data in Fig. 5.” Id. at 45–46.
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, 14, 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, sufficiently establish
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.
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Accordingly, consistent with Petitioner’s contention and the
undisputed fact that 1 ppm = 1 mg/kg2, Maimoni describes a brine with
silica at “a concentration of silica ranging from 0 to 80 mg/kg” as specified
in claims 1 and 15.
d. “a concentration of arsenic ranging from 0 to 7 mg/kg”
(Claims 1 and 15)
Petitioner contends that Table 2 of Maimoni shows a brine having
concentrations of arsenic of 0.2 ppm and 7 ppm which fall within the
claimed range. Pet. 42 (citing Ex. 1004, 10 (Table 2)). Table 2 is
reproduced below.

2 Pet. 12; PO Resp. 7.
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Table 2 of Maimoni shows analytical data for Magmamax No. 1 and Sinclair
No. 4 brines.
Ex. 1004, 10.
Petitioner’s reliance on Table 2 is problematic, because as Patent
Owner points out, it discloses concentrations of silica and iron that fall
outside the claimed ranges. PO Resp. 37.
Accordingly, Table 2 alone is insufficient to show that Maimoni
anticipates the claimed composition, notwithstanding that it shows
concentrations of arsenic within the claimed range.
Table 5 and Figure 5 are also insufficient to show that Maimoni
anticipates the claimed composition because they do not mention arsenic.
PO Resp. 40 (citing Ex. 1006, 16-17).
Thus there is no single description in Maimoni of a brine having all
the claimed components with concentrations as claimed. To reconcile this
for arsenic, Petitioner combines Table 2 with Table 5 and Figure 5. See Pet.
43 (“[t]he concentration of arsenic in Stream 18 of Figure 5 of Maimoni
would be less than the initial arsenic concentration of 0.2 ppm set forth in
Table 2 of Maimoni.”).
Patent Owner argues that Table 2 and Table 5 cannot be combined.
PO Resp. 37–39. We agree.
Patent Owner provides a chart showing a partial comparison of the
brine of Table 2 and Stream No. 1 of Table 5. PO Resp. 39, citing Ex.
2002, ¶ 99; Ex. 1004, 10, 16. It is clear from the chart that the composition
shown in Table 2 is very different from the composition reported in Stream
No. 1 of Table 5. PO Resp. 39 (citing Ex. 2002, ¶ 99). Petitioner concedes
as much. Pet. Reply 17; PO Sur–reply 16.
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We observe that the section in the Petition discussing the arsenic
limitation does not combine Table 2 with any particular stream in Table 5.
Pet. 42. Other sections mention Stream No. 11 of Table 5. E.g., id. at 39.
Be that as it may, the composition of Stream No. 11 is likewise very
different from that shown in Table 2. Ex. 1004, 10, 16.
One of ordinary skill in the art would have had to resort to picking and
choosing from the disparate disclosures of the brine compositions of Table 2
and Table 5 and, even then, it is not clear on this record that one of ordinary
skill in the art would necessarily reach a composition as claimed.
Petitioner further contends that one of ordinary skill in the art would
have recognized from Table 5 and Figure 5 that “arsenic will be ‘co-
deposited’ with ‘silica on the iron (III) hydroxide’ as an inherent behavior of
certain geothermal brine compositions.” Pet. 42, relying on Ex. 1001, 19:1–
6.
However, be that as it may, we have no way of knowing what the
arsenic concentration would be, before or after co–depositing. There is no
mention of arsenic in Table 5 or Figure 5. PO Resp. 40; Ex. 1004, 15–17.
As Patent Owner points out, “arsenic concentration may actually increase in
the process due to evaporation or by being fed into the process with certain
reagents.” Id. (citing Ex. 2002, ¶ 100).
Petitioner argues that “Dr. Harrison testified that Magmamax No. 1
brines include arsenic, which arsenic co-deposits and precipitates with iron
and silica, along with barium, zinc, and lead, under appropriate air oxidation
and pH modification conditions. (EX 1011, 114:6-118:7, 183:17-24, 298:5-
22).” Pet. Reply 18. But that does not address the arsenic concentration.
Even if arsenic co-deposits and precipitates with iron and silica, it must fall
within the claimed range for Maimoni to anticipate the claimed composition.
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In that regard, there is insufficient evidence that, after precipitation, the
arsenic in the brine will necessarily have a concentration in the claimed
range.
For the foregoing reasons, Petitioner has not shown that Maimoni
describes a brine having arsenic 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 and 15)
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. 43 (citing inter alia Ex. 1004, 15, Table 5 (Stream No. 18)).
f. “recoverable amounts of one or more metals selected from
the group consisting of lithium, manganese, rubidium, cesium
and zinc or mixtures thereof.” (Claims 1 and 15)
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 and manganese in “recoverable
amounts.” Pet. 44 (citing Ex. 1004, 19).
g. Conclusion
Because Petitioner has not shown that Maimoni describes a brine
having arsenic in a concentration in the claimed range by a preponderance of
the evidence, Petitioner has not shown that Maimoni describes, expressly or
inherently, the composition of claims 1 and 15.
2. Dependent Claims 2–14 and 16–18
Having found that Petitioner does not prove by a preponderance of the
evidence that independent claim 1 or 15 are unpatentable based on
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anticipation by Maimoni, we find that Petitioner has also failed to prove that
any of the dependent claims are unpatentable on that same ground.
Patent Owner raises an additional reason why claims 12, 16, and 18
are not anticipated.
Patent Owner argues that Maimoni does not teach barium in a
concentration within the ranges claimed in claims 12, 16 and 18. PO Resp.
46–48. Ex. 1001, 44:3 (“from 0 to 200 mg/kg” (claim 12); 44:19 (“from 0 to
200 mg/kg” (claim 16), 44:25–26 (less than about 200 mg/kg” (claim 18)).
Petitioner contends that “Maimoni discloses a barium concentration in
brine samples produced by the Magmamax No. 1 well of between 54 ppm
and 290 ppm (EX 1004, at 9, Table 1).” Pet. 48.
In that regard, Table 1 does show concentrations for barium (e.g.,
“54” ppm) that would appear to support Petitioner’s contention.
However, Patent Owner points to this passage in Maimoni, which
precedes Table 1:
The chemical composition of the brines is so complex that
systematic analytical errors can easily obtain. Thus the barium
concentrations given in Table 1 were shown to be in error
because of the precipitation of barium sulfate before sample
analysis. A special sample was obtained and handled to minimize
barium sulfate precipitation, and a barium content of 290 ppm
was measured vs the 80-125 ppm reported in Table 1.
Ex. 1004, 7–9 (emphasis added). PO Resp. 48. This passage states that the
barium content recorded in Table 1 should be “290 ppm,” not what is
actually recorded.
Petitioner does not dispute this.
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Since “290 ppm” is outside the claimed range, we are not persuaded
that Table 1 of Maimoni describes with sufficient clarity the claimed
composition as Petitioner contends.
Petitioner argues that “a plain reading of that paragraph makes clear
that the barium concentrations reported in Table 1 are actual barium
concentrations, but that barium sulfate had already precipitated from the
Magmamax No. 1 brine.” Pet. Reply 21. We are unpersuaded by this
argument.
Given that Maimoni recognizes an error in the data of Table 1 (id. at
7–9; PO Resp. 48; Ex. 1004, 9), one of ordinary skill in the art reading Table
1 would have questioned whether the data is in fact a correct record of
barium’s actual concentration in the brine. We agree with Patent Owner that
“Petitioner’s unsupported statements regarding a ‘plain reading’ of Maimoni
… do not rebut this. (Reply, 20-21).” PO Sur–reply 20.
Also, to the extent Petitioner (Pet. 48) argues that the combination of
Table 1 and Table 5 would yield a brine having barium at a concentration
within the claimed range, we agree with Patent Owner that “there is no tie
between the stream reported in Table 1 and those in Table 5.” PO Resp. 47.
As Patent Owner explains, “the brine composition in the first column of
Table 1 is significantly different from the composition of feed stream 1 of
Table 5.” Id. (citing Ex. 1004, 9, 17; Ex. 2002, ¶ 108). One of ordinary skill
in the art would not have looked to the composition of Table 1 as a natural
candidate for “feed stream 1” in Table 5.

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Accordingly, for this additional reason, Petitioner has not shown that
Maimoni describes, expressly or inherently, the claimed compositions of
claims 12, 16, and 18 by a preponderance of the evidence.
F. Obviousness – Maimoni and Brown
Petitioner challenges claims 1–18 as rendered obvious under 35
U.S.C. § 103(a) over Maimoni and Brown. Pet. 38–51.
1. Independent Claims 1 and 15
Petitioner argues that claims 1 and 15 are “rendered obvious over
Maimoni (EX 1004) in view of Brown (EX 1005).” Pet. 38.
Petitioner does not explain how the combination of Maimoni and
Brown overcomes the deficiencies in Maimoni identified earlier in
addressing the anticipation ground; namely, that Maimoni does not describe
a brine having arsenic in a concentration in the claimed range. For that
reason, Petitioner has not shown that the combination of Maimoni and
Brown renders obvious the composition of claims 1 and 15 by a
preponderance of the evidence.
That being said, the only aspect of claims 1 and 15 that Petitioner
directs our attention to is the limitation “a concentration of silica ranging
from 0 to 80 mg/kg” (Claims 1 and 15). Pet. 41–42.
Petitioner argues that, “[e]ven if Maimoni is somehow interpreted to
disclose a concentration range of silica that is higher than 80 mg/kg, it
would have been obvious to a POSITA in view of the Brown to tune the
process of Maimoni to reduce the silica concentration range to a level below
80 mg/kg to avoid silica scaling concerns . . . .” Pet. 41.
We are not placed in a position to do a meaningful review of this
argument because Petitioner does not identify the disclosure in Maimoni that
may “somehow [be] interpreted to disclose a concentration range of silica
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that is higher than 80 mg/kg.” and thus has not established the starting point
of its obviousness argument. Pet. 41.
Petitioner has not shown that the combination of Maimoni and Brown
renders obvious the composition of claims 1 and 15 by a preponderance of
the evidence.
2. Dependent Claims 2–14 and 16–18
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.
G. Anticipation – Okada
Petitioner challenges claims 1–18 as anticipated under 35 U.S.C.
§ 102(b) by Okada. Pet. 51–64.
1. Independent Claims 1 and 15
a. “A treated geothermal brine composition” (Claims 1 and
15); “the composition comprising a treated geothermal brine”
(Claim 1)
The parties agree that Okada discloses a “geothermal water.” Pet. 52;
PO Resp. 57. The question is whether Okada’s “geothermal water” is a
“geothermal brine” as the claims require.
Petitioner argues that “[t]he geothermal water referenced in Okada is a
geothermal brine because it includes dissolved salts.” Pet. 52 (citing Ex.
1003 ¶ 181).
Patent Owner argues that Okada does not mention salt. PO Resp. 59
(“the compositions provided in FIG. 2 do not include sodium content”); PO
Sur–reply 24 (“As shown in Okada FIG. 2, the “geothermal water” is not
fully characterized and only reports six elements. (EX1008, 9).”). Patent
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Owner reproduces Figure 2 of Okada highlighting the data reported for
“geothermal water,” as follows:
Patent Owner’s annotated version of Figure 2 of Okada showing
experimental results and highlighting results for “Geothermal water”.
PO Resp. 57; Ex. 1008, 9. According to Patent Owner, Okada’s
“geothermal water” “would at most be characterized as ‘brackish water.’”
Id. at 57–58. Patent Owner points out that the difference between a brine
and brackish water is that the latter “has a lower salinity than a brine. (Ex.
2002, ¶130).” Id. at 58.
Petitioner counters that “Dr. Gallup [further] testified that Okada’s
‘geothermal brine [sic, water]’ is equivalent to a ‘geothermal brine’ as
defined by the ’555 patent. (Ex. 2025, 252:10-254:18).” Pet. Reply 25.
We are not persuaded by Petitioner’s arguments. One of ordinary
skill in the art reading Okada would not know whether the disclosed
“geothermal water” is a brine or brackish water since sodium is not
mentioned. For the claimed “geothermal brine” to read on Okada’s
“geothermal water,” the “geothermal water” must, at a minimum, be a
“saline solution.” This is so because the ’555 patent defines a geothermal
brine as “a saline solution that has circulated through the crustal rocks in
areas of high heat flow and has become enriched in substances leached from
those rocks.” Ex. 1001, 7:8–11. Given no information about salt in Okada’s
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“geothermal water,” it is difficult to ascertain whether Okada’s “geothermal
water” is a saline solution at all, let alone a “geothermal brine” as the
Specification defines it.
Dr. Gallup initially testified that “Okada is a ‘geothermal brine’
because it includes dissolved salts.” Ex. 1003, ¶ 181. Pet 52. But, even if
true, we still do not know the level of salt in Okada’s “geothermal water.”
Without that information, it impossible to know whether the brine is, by
definition, a “saline solution” and “enriched in substances leached from
those rocks.” The possibility remains that Okada’s “geothermal water” is
brackish water rather a “geothermal brine.” Dr. Gallup agrees. As Patent
Owner notes:
In responding to his own attorney’s question on redirect
examination, Dr. Gallup conceded that he could not tell if FIG. 2
of Okada was a geothermal brine or a brackish geothermal brine
because of the limited amount of data:
A. I can’t tell [what type of water it is] based on the limited
amount of data that is there. I would need to know the
sodium concentration to be able to tell whether I would
classify it as a geothermal water or a geothermal
brackish solution or a brine.
PO Resp. 58–59 (quoting Ex. 2025, 339:6–10).
For the foregoing reasons, Petitioner has not shown that Okada
describes a “geothermal brine” by a preponderance of the evidence.
b. “said geothermal brine is a Salton Sea brine” (Claim 15)
Petitioner concedes that “Okada does not specifically reference
‘Salton Sea’ brines.” Pet. 55.
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c. “having a concentration of silica ranging from 0 to 80
mg/kg” (Claims 1 and 15)
Petitioner contends that Okada discloses silica at a concentration
within the claimed range. Pet. 52 (citing Ex. 1008, Figure 2 and ¶¶ 23–24).
Okada agrees with Petitioner’s contention. Paragraph 24 of Okada
recites “14.5 ppm” for silica and this falls within the claimed range. Ex.
1008, ¶ 24.
Accordingly, Petitioner’s position that Okada describes “a
concentration of silica ranging from 0 to 80 mg/kg” as specified in claims 1
and 15 is supported by a preponderance of the evidence.
d. “a concentration of arsenic ranging from 0 to 7 mg/kg”
(Claims 1 and 15)
We accept Petitioner’s contention, which is not opposed by Patent
Owner and is supported adequately by objective evidence, that Okada
discloses arsenic in a concentration of 0.48 ppm, which falls within the
claimed range. Pet. 54; Ex. 1008, 24.
e. “a concentration of iron ranging from 0 to 300mg/kg”
(Claims 1 and 15)
We accept Petitioner’s contention, which is not opposed by Patent
Owner and is supported adequately by objective evidence, that Okada
discloses iron in a concentration within the claimed range. Pet. 54 (citing
Ex. 1008, Figure 2).
f. “recoverable amounts of one or more metals selected from
the group consisting of lithium, manganese, rubidium, cesium
and zinc or mixtures thereof.” (Claims 1 and 15)
Petitioner argues that Okada discloses reducing the lithium
concentration of geothermal water from 1.42 mg/L to 0.97 mg/L and that the
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latter value is a “recoverable amount” as the claims require. Pet. 56 (citing
Ex. 1008, Figure 2).
The language of the claim is clear. The claim calls for a “recoverable
amount” and no specific amount is recited. No express definition for
“recoverable amount” is provided in the Specification that would alter that
understanding. We need not address whether “recoverable amount” should
be construed as “economically viable” because even if we gave it that
construction the record insufficiently supports construing an “economically
viable” amount as requiring a minimum amount.
Since Okada recovered 0.97 mg/L of lithium, Petitioner has shown
that Okada describes “recoverable amounts” of lithium as specified in claims
1 and 15 by a preponderance of the evidence.
g. Conclusion
Because Petitioner has not shown that Okada describes a “geothermal
brine” by a preponderance of the evidence, Petitioner has not shown that
Okada describes, expressly or inherently, the composition of claims 1 and
15.
2. Dependent Claims 2–14 and 16–18
Having found that Petitioner does not prove by a preponderance of the
evidence that independent claims 1 or 15 are unpatentable based on
anticipation by Okada, we find that Petitioner has also failed to prove that
any of the dependent claims are unpatentable on that same ground.
H. Obviousness – Okada and Brown
Petitioner challenges claims 1–18 as being rendered obvious under
35 U.S.C. § 103(a) over Okada and Brown. Pet. 51–64.
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1. Independent Claims 1 and 15
Petitioner argues that claims 1 and 15 are “rendered obvious over
Okada (EX 1006 [sic, 1008]) in view of Brown (EX 1005), Maimoni (EX
1004, or Christopher (EX 1006).” Pet. 51. (Maimoni and Christopher are
not discussed. PO Resp. 62; see generally Pet. 51–64.)
Petitioner does not explain how the combination of Okada and Brown
overcomes the deficiency in Okada identified earlier in addressing the
anticipation ground; namely, that Okada describes a “geothermal water”
rather than a “geothermal brine.” For that reason, Petitioner has not shown
that the combination of Okada and Brown renders obvious the composition
of claims 1 and 15 by a preponderance of the evidence.
That being said, the only aspects of claims 1 and 15 that Petitioner
discusses in the context of this obviousness ground are the limitations “a
concentration of silica ranging from 0 to 80 mg/kg” (claims 1 and 15; Pet.
53); “said geothermal brine is a Salton Sea brine” (claim 15; Pet. 55); and
the “recoverable amount” limitation (claims 1 and 15, Pet 56).
Regarding the silica limitation, Petitioner argues that, “[e]ven if
Okada is somehow interpreted to disclose a concentration range of silica that
is higher than 80 mg/kg, it would have been obvious to a POSITA in view of
the Brown to reduce the silica concentration range to a level below 80 mg/kg
to avoid silica scaling concerns . . . .” Pet. 53. Since we have determined
that Okada discloses 14.5 ppm, which falls within the claimed range, this
argument is moot.
Regarding the “Salton Sea” limitation of claim 15, Petitioner argues
that it would have been obvious to a person of ordinary skill in the art to
combine Okada with Brown to address a problem of silica fouling identified
in Okada. Pet. 55. That Brown may address a problem of silica fouling that
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Okada may experience does not adequately explain why one would employ
a “Salton Sea brine” for the treated geothermal brine composition as the
claim requires. For that reason, Petitioner has not shown that a composition
comprising a Salton Sea brine would have been obvious over the
combination of Okada and Brown by a preponderance of the evidence.
Regarding the “recoverable amount” limitation, we previously
determined that Petitioner sufficiently shows that Okada describes
“recoverable amounts” of, for example, lithium as specified in claims 1 and
15. Accordingly, it is unnecessary to address whether the combination of
Okada and Brown would render that obvious.
Patent Owner argues that Petitioner’s case for obviousness is
deficient for another reason: that “Okada and Brown are directed to two
completely different compositions. Okada discloses a geothermal water
with low salt content (Ex. 1008, FIG. 2) whereas Brown is directed to
extracting zinc from brines. (Ex. 1005, Title; Ex. 2002, ¶142).” PO Resp.
63. Furthermore, “Okada does not report zinc content. (Ex. 1008, FIG. 2).”
Id. We accept Patent Owner’s contention, which is not opposed by
Petitioner and is supported adequately by objective evidence, that Okada is
directed to a “geothermal water” and Brown involves a brine and these are
different compositions. We have already established that the two are not the
same.
For the foregoing reasons, including for the additional reason Patent
Owner argues, Petitioner has not shown that the combination of Okada and
Brown renders claims 1 and 15 obvious under § 103(a) by a preponderance
of the evidence.
IPR2019-01602
Patent 9,650,555 B2

41
2. Dependent Claims 2–14 and 16–18
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 ’555 patent
is unpatentable, as summarized in the following table:

Claims 35
U.S.C. §
Reference(s)/ Basis Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–18 102 Christopher 1–18
1–18 103 Christopher, Brown 1–18
1–18 102 Maimoni 1–18
1–18 103 Maimoni, Brown 1–18
1–18 102 Okada 1–18
1–18 103 Okada, Brown,
Maimoni,
Christopher
1–18
Overall
Outcome
1–18

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner has not shown by a preponderance of the
evidence that claims 1–18 are unpatentable; and
IPR2019-01602
Patent 9,650,555 B2

42
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.

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