World Source Enterprises, LLC

Patent Trials and Appeals Board

Mar 1, 2021

IPR2020-00768 (P.T.A.B. Mar. 1, 2021)

Trials@uspto.gov Paper 30
571-272-7822 Date: March 1, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SOLVAY USA INC.,
Petitioner,
v.
WORLDSOURCE ENTERPRISES, LLC, ECO AGRO RESOURCES LLC,
and ECO WORLD GROUP LLC
Patent Owner.
____________

IPR2020-00768
Patent 10,301,231 B2
____________

Before KRISTINA M. KALAN, JEFFREY W. ABRAHAM, and
SHELDON M. MCGEE, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.

DECISION
Denying Patent Owner’s Request for Rehearing
37 C.F.R. § 42.71(d)

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Patent 10,301,231 B2
2
I. INTRODUCTION
Solvay USA, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
requesting inter partes review of claims 1–17 of U.S. Patent No. 10,301,231
B2 (Ex. 1001, “the ’231 patent”). WorldSource Enterprises, LLC (“Patent
Owner”) filed a Preliminary Response to the Petition (Paper 91, “Prelim.
Resp.”). After receiving authorization from the Board (Paper 8), Petitioner
filed a Reply to Patent Owner’s Preliminary Response (Paper 10, “Reply”),
and Patent Owner filed a Sur-reply (Paper 11, “Sur-reply”).
On September 25, 2020, we issued a Decision instituting an inter
partes review. Paper 12 (“Decision” or “Dec.”).
Petitioner filed a Request for Rehearing and requested Precedential
Opinion Panel (“POP”) review of our Decision. Paper 15 (“Rehearing
Request” or “Req. Reh’g”). On December 9, 2020, the Board denied Patent
Owner’s request for POP review. Paper 22. For the reasons that follow,
Patent Owner’s Rehearing Request is denied.
II. STANDARD OF REVIEW
The party challenging a decision in a request for rehearing bears the
burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).
A request for rehearing “must specifically identify all matters the party
believes the Board misapprehended or overlooked, and the place where each
matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a

1 Patent Owner originally filed a Preliminary Response (Paper 7) that
violated the word count limit in our rules. After conferring with Petitioner
and the Board, Patent Owner filed a truncated version of Paper 7 that deletes
the text that exceeded the word count limit at the end of the document to
comply with 37 C.F.R. § 42.24(b)(1). Paper 9. For purposes of this
Decision, any references or citations to the Preliminary Response refer to the
truncated document filed as Paper 9.
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Patent 10,301,231 B2
3
decision on a petition, the decision will be reviewed for an abuse of
discretion. 37 C.F.R. § 42.71(c).
III. BACKGROUND
In the Petition, Petitioner argued claims 1–17 are unpatentable as
obvious over the combined teachings of Iannotta2 and CN400,3 and the
combined teachings of Kolc4 and CN400. Pet. 4. Patent Owner argued that
we should exercise our discretion under 35 U.S.C. § 325 and deny
institution. Prelim. Resp. 22–37. Applying the two-part test set forth in
Advanced Bionics LLC v. MED-EL Elektromedizinische Geräte GmbH,
IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (“Advanced
Bionics”), we determined that (1) the references relied upon were either
made of record by the Examiner or provided to the Office on an IDS in the
prosecution history of the challenged patent, and (2) Petitioner had shown
sufficiently that the Examiner erred in the evaluation of the asserted prior art
in a manner material to the patentability of the challenged claims. Dec. 5–9.
With regard to Examiner error, we determined that
The record does not reflect any substantive consideration of
CN400 during prosecution of the ’231 patent, including any
consideration of CN400 in combination with Iannotta or Kolc, as
presented in the Petition. As discussed in detail below, Petitioner
has identified how CN400 discloses a fertilizer composition
including a urease inhibitor and DMSO, which is, as Patent
Owner acknowledges, the reason the Examiner “dropped the
rejection over Iannotta . . . for all of the rejected claims” during
prosecution of the ’231 patent. Prelim. Resp. 26; see also Reply
at 10 (“The Petition cites CN400 for its teaching of what the
Examiner saw as missing from Iannotta, namely, the use of

2 US 2013/0145806 A1, published June 13, 2013 (Ex. 1007).
3 CN 101200400 B, Jan. 4, 2012 (Ex. 1018 (native language document); Ex.
1006 (certified translation of Ex. 1018)).
4 US 4,530,714, issued July 23, 1985 (Ex. 1009).
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DMSO.”). As a result, to the extent Patent Owner is correct that
the Examiner was “intimately familiar” with CN400, we
determine that the Examiner erred by overlooking the disclosure
of a limitation of the claims of the ’231 patent in CN400.
Dec. 9. Accordingly, we declined to exercise our discretion under 35 U.S.C.
§ 325 not to institute inter partes review. Dec. 9. We also determined that
Petitioner established a reasonable likelihood of prevailing in its obviousness
challenges based on Iannotta and CN400 and Kolc and CN400. Dec. 16–29.
IV. DISCUSSION
Patent Owner contends that we improperly applied 35 U.S.C. § 325(d)
in our Decision and that we “adopted Petitioner’s erroneous claim as it
relates to the date of” Iannotta because “Petitioner did not evaluate the
situation to determine if Iannotta ’806 is proper prior art.” Req. Reh’g 2, 9–
10.
1. Whether the Board Improperly Applied 35 U.S.C. § 325(d)
Patent Owner contends that the second part of the Advanced Bionics
test requires that (1) the burden is on Petitioner to point out sufficiently how
the Examiner erred, and (2) the error must be a material error. Req. Reh’g 3.
According to Patent Owner, neither of these requirements have been met.
Req. Reh’g 3–8.
With regard to whether Petitioner met its burden of showing how the
Examiner erred, Patent Owner argues that “[t]here is not one instance” of the
word “err” or some variation thereof in the Petition or the Reply addressing
the section 325(d) issue. Req. Reh’g 4. Additionally, Patent Owner states
that it “can find no instance in either the Petition or in the Reply where
Petitioner alleges the Examiner erred in his evaluation of the prior art.” Req.
Reh’g 5.
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We are not persuaded by Patent Owner’s argument. First, Patent
Owner does not direct us to any matters that we misapprehended or
overlooked, and where those matters were addressed in the Preliminary
Response or Sur-reply. Second, Patent Owner does not direct us to any
authority indicating that the word “err” or some variation of it must appear
in Petitioner’s papers. Finally, Patent Owner acknowledges that “[a]n
example of a material error may include misapprehending or overlooking
specific teachings of the relevant prior art where those teachings impact
patentability of the challenged claims.” Req. Reh’g 5 (emphasis omitted)
(quoting Advanced Bionics, 8). Consistent with this, we determined that
Petitioner demonstrated the Examiner erred based on Petitioner’s
presentation of evidence that CN400 discloses a limitation in the claims of
the ’231 patent that the Examiner overlooked.
With regard to whether the Examiner committed a material error,
Patent Owner first argues that we failed to give any weight to the fact that
the same Examiner examined the application leading to the ’231 patent and
the parent application to which the ’231 patent claims priority, and the fact
that the Examiner considered Iannotta, Kolc, and CN400 together during
prosecution of the parent application. Req. Reh’g 5–6. Patent Owner
further states that during prosecution of the parent application, the Examiner
“chose not to use the three references together, even though those three
references were present in front of him at the same time” and he “knew that
CN400 disclosed DMSO.” Req. Reh’g 6.
Patent Owner next argues that the Examiner considered CN400 during
prosecution of the ’231 patent, and that “[t]here is nothing on the record that
shows the Examiner had forgotten CN400 disclosed DMSO, so to assert that
he overlooked or misapprehended the teaching of CN400 is to ascribe
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thoughts to the Examiner that are simply not present on the record.” Req.
Reh’g 7. According to Patent Owner, the Examiner did not misapprehend or
overlook the teachings of CN400, but “it is more probable that the Examiner
believed CN400 could not be properly combined” with Kolc and Iannotta.
Req. Reh’g 6–8. Patent Owner further contends that “[w]hen reasonable
minds disagree regarding purported treatment of the art, the default position
is to deny institution.” Req. Reh’g 8 (citing Advanced Bionics, 9).
We are not persuaded by Patent Owner’s arguments. First, Patent
Owner does not clearly identify what matters we misapprehended or
overlooked, and where those matters were previously addressed. Instead, it
simply repeats arguments and information we have already considered and
which we used to form the basis for our determination in the Institution
Decision. To the extent Patent Owner believes we did not assign the
appropriate weight to events that occurred during prosecution of the parent
application of the ’231 patent, we note that Patent Owner’s own arguments
derived from that information are based on speculation about what is a
“more probable” explanation for the Examiner’s conduct. Rather than rely
on speculation about the Examiner’s conduct during prosecution of the
parent application, we based our determination on facts derived from the
prosecution history of the ’231 patent itself. In that regard, we maintain that
“[t]he record does not reflect any substantive consideration of CN400
during prosecution of the ’231 patent, including any consideration of CN400
in combination with Iannotta or Kolc, as presented in the Petition.” Dec. 9
(emphasis added). Nothing in Patent Owner’s recitation of undisputed facts
persuasively contradicts this determination. Req. Reh’g 8.
Nor do we consider this to be a situation where “reasonable minds can
disagree regarding the purported treatment of the art or arguments.”
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Advanced Bionics, 9. On this record, there is no “purported treatment” of
CN400 by the Examiner during prosecution of the ’231 patent, and we
decline Patent Owner’s invitation to speculate about what the Examiner
knew and was thinking during the prosecution of the ’231 patent. Notably,
Patent Owner’s criticism of our determination that the Examiner
misapprehended or overlooked the teaching of CN400 as “ascrib[ing]
thoughts to the Examiner that are simply not present on the record” is
inconsistent with its suggestion that we decide whether to institute inter
partes review based on what Patent Owner considers to be a “more
probable” explanation for the Examiner’s action. Req. Reh’g 6–7.
Furthermore, Patent Owner has not directed us to any authority
suggesting that we should speculate about a probable explanation for an
Examiner’s conduct. Rather, Advanced Bionics instructs us that “if the
record of the Office’s previous consideration of the art is not well developed
or silent, then a petitioner may show the Office erred by overlooking
something persuasive.” Advanced Bionics, 10. In view of the Examiner’s
silence regarding CN400 during prosecution of the ’231 patent itself, we are
not persuaded that we abused our discretion in determining that the
Examiner erred by overlooking the disclosure of a limitation of the claims of
the ’231 patent in CN400.
Nevertheless, even if we were to give weight to Patent Owner’s
argument that “it is more probable that the Examiner believed CN400 could
not be properly combined” with Kolc and Iannotta, the outcome here would
not change. As set forth in our Institution Decision, we disagree with Patent
Owner’s assertions that CN400 is non-analogous art that would not be
combinable with Kolc and Iannotta. Dec. 19, 24–25. Thus, to the extent
Patent Owner contends the Examiner believed CN400 could not be
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combined with Kolc and Iannotta for the same reasons Patent Owner
presented in its Preliminary Response, we would consider such hypothetical
reasoning by the Examiner to involve a misapprehension of the specific
teachings of the relevant prior art, which would constitute material error.
See Advanced Bionics, 8.
For all of the foregoing reasons, we are not persuaded that we
misapplied 35 U.S.C. § 325(d).
2. Whether Iannotta is Prior Art
Patent Owner contends Petitioner did not properly evaluate whether
Iannotta is prior art. Reh’g Req. 10. In presenting its arguments, however,
Patent Owner acknowledges “[t]his issue was not argued in the Patent
Owner’s Preliminary Response,” and is based on new information Patent
Owner became aware of since the filing date of its Sur-reply. Req. Reh’g 9.
A request for rehearing is not an opportunity to present new
arguments or evidence. See 37 C.F.R. § 42.71(d). Moreover, Patent Owner
has not directed us to any matters that we overlooked or misapprehended,
and the place where those matters were previously addressed. 37 C.F.R.
§ 42.71(d).
In view of the foregoing, we are not persuaded that we committed any
legal errors regarding the prior art status of Iannotta.
V. CONCLUSION
For all of the foregoing reasons, Patent Owner has not demonstrated
that we abused our discretion in instituting an inter partes review of claims
1–17 of the ’231 patent.
VI. ORDER
For the reasons given, it is:
ORDERED that Patent Owner’s Request for Rehearing is denied.
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Patent 10,301,231 B2
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PETITIONER:

Michael Franzinger
Ching-Lee Fukuda
Jason Greenhut
SIDLEY AUSTIN
mfranzinger@sidley.com
clfukuda@sidley.com
jgreenhut@sidley.com

PATENT OWNER:

Thomas Schroeder
BEN SCHROEDER LAW, PLLC
ben@leak-schroeder.com

David Wilkerson
THE VAN WINKLE LAW FIRM
dwilkerson@vwlawfirm.com