TerraLithium LLC

Patent Trials and Appeals Board

Nov 6, 2020

IPR2019-01601 (P.T.A.B. Nov. 6, 2020)

Trials@uspto.gov Paper No.: 20
571.272.7822 Filed: November 6, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ENERGYSOURCE MINERALS, LLC,
Petitioner,

v.

TERRALITHIUM LLC,
Patent Owner.
____________

IPR2019-01601
Patent 9,051,827 B1
____________

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

LORIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
37 C.F.R. § 42.71

I. INTRODUCTION
EnergySource Minerals, LLC (“Petitioner”) filed a Petition requesting
inter partes review of claims 9–16 of U.S. Patent No. 9,051,827 B2 (Ex.
1001, “the ’827 patent”). Paper 1 (“Pet.”). TerraLithium LLC (“Patent
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Owner”) filed a Preliminary Response to the Petition. Paper 8 (“Prelim.
Resp.”).
Upon consideration of the Petition and Preliminary Response, the
Board concluded, under 35 U.S.C. § 314(a), that Petitioner had not
demonstrated a reasonable likelihood that it would prevail in showing the
unpatentability of at least one of claims 9–16 of the ’827 patent; that is,
Petitioner had not demonstrated a reasonable likelihood that it would prevail
in showing that
• claims 9‒16 are anticipated by or would have been obvious over
Jost1 (Ground I);
• claims 9–16 are anticipated by or would have been obvious over
Maimoni2 (Ground II);
• claims 9‒16 would have been unpatentable over the combination
of Jost and Maimoni (Ground III);
• claims 9–16 are anticipated by or would have been obvious over
Wilkins3 (Ground IV); and,
• claims 9–16 would have been obvious over the combination of
Wilkins and Maimoni (Ground V).
and thus on March 17, 2020, the Board denied institution of an inter partes
review with respect to claims 9–16. Paper 9 (“Dec.”; “Decision”).

1 U.S. Patent No. 4,405,463 to Jost et al. (“Jost”) (Ex. 1005).
2 Arturo Maimoni, “A Cementation Process for Minerals Recovery from
Salton Sea Geothermal Brines,” Lawrence Livermore Laboratory (Jan. 26,
1982) (“Maimoni”) (Ex. 1004).
3 U.S. Patent No. 4,016,075 to Wilkins (“Wilkins”) (Ex. 1006).
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On April 16, 2020, Petitioner filed a “Request for Rehearing” of the
Decision. Paper 10 (“Req.”; “Request”).
On April 28, 2020, Patent Owner requested authorization to file a
reply to the Request. Ex. 3001. We granted Patent Owner’s request and
granted Petitioner authorization to file a sur–reply. Order of May 1, 2020,
Paper 11. These were filed on May 11 and 26, 2020, respectively. Paper 12
(“Reply”) and Paper 13 (“Sur–Reply”).
A request for rehearing must identify specifically all matters that the
requesting party believes the Board misapprehended or overlooked. 37
C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will
review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).
The Request challenges our decision as to Grounds II (Req. 3) and I
and III (Req. 11).
II. ANALYSIS (GROUND II)
As to Ground II, the Request focuses only on the question of
anticipation and then only with regard to claim 9. See Req. 3.
In our Decision, we concluded that “Petitioner insufficiently
establishes that Maimoni anticipates, expressly or inherently, the claim 9
step of ‘maintaining the pH of the geothermal brine solution at an adjusted
pH of between 4.5 and 6.5.’” Dec. 26. We gave two reasons:
(1) Petitioner’s apparent inherency argument made in the Petition,
supported by the Gallup Declaration, was inadequate (Dec. 21–25);
and,
(2) “the evidence provided by Patent Owner in support of its opposing
argument; that is, the Hazen report (Ex. 2005)” “further undermined”
Petitioner’s apparent inherency argument (Dec. 25).
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The Request challenges reason (1), as follows:
In its Decision, the Board also held that “the Gallup Declaration
insufficiently supports Petitioner’s argument that the Hazen process set
forth in Maimoni inherently maintains the pH to an adjusted level of
between 4.5 and 6.5 via the steps sparging and the addition of calcium
hydroxide as disclosed in Maimoni.” (Decision, 24-25). Respectfully
disagreeing with the Board’s holding, Petitioner contends that Dr.
Gallup’s proffered expert testimony is properly grounded, well-
reasoned, not speculative and is based on Dr. Gallup’s vast experience
in this specific field. Tassin v. Sears Roebuck, 946 F. Supp. 1241, 1248
(M.D. La. 1996) (design engineer’s testimony can be admissible when
the expert’s opinions “are based on facts, a reasonable investigation,
and traditional technical/mechanical expertise, and he provides a
reasonable link between the information and procedures he uses and the
conclusions he reaches”); see also Kumho Tire Co. v. Carmichael, 119
S.Ct. 1167, 1178 (1999) (stating that “no one denies that an expert
might draw a conclusion from a set of observations based on extensive
and specialized experience.”). Petitioner points out that Dr. Gallup’s
qualifications were not challenged by Patent Owner, and Dr. Gallup’s
opinions were not rebutted by an expert acting on behalf of Patent
Owner. Under the circumstances, it was error for the Board to discount
Dr. Gallup’s expert testimony.
Req. at 10–11.
We do not dispute Dr. Gallup’s qualifications or the fact that his
opinions have not been rebutted by an expert acting on behalf of Patent
Owner.
The difficulty is that, as we stated in the Decision, Petitioner
contended that “an adjusted pH of between 4.5 and 6.5 occurs as a result of
Maimoni’s sparging and addition of calcium hydroxide” (Dec. 23, emphasis
added) but this “apparent inherency argument” (Dec. 23) was inadequately
supported.

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The Petition stated, in full:
Maimoni discloses that the feed brine from the Magmamax No.
1 well has an initial pH of between 5.2 and 6.1 (Table 1) or 5.6 (Table
2). EX 1004, at 9-10. The Hazen process includes the steps of sparging
the brine in the iron reactor with air (Stream 6) and adding calcium
hydroxide to the iron reactor (Stream 5). Id., at 16-17. Sparging the
brine with air generally reduces the pH of the brine in the iron reactor.
EX 1003, ¶162. The reduction of the pH is offset by the introduction
of calcium hydroxide (Stream 5) to the iron reactor. Id. Dr. Gallup
explains that the Hazen process discussed by Maimoni describes a step
of maintaining and controlling the pH of the geothermal brine at an
adjusted pH of between 4.5 and 6.5, as required by Claim 9. Given the
pH of the feed brine, these pH values occur as a result of the air
oxidation and introduction of calcium hydroxide. Id.
Pet. 43–44 (emphasis added).
We turned to ¶ 162 of the Gallup Declaration (Ex. 1003), looking for
an explanation as to how “the Hazen process discussed by Maimoni
describes a step of maintaining and controlling the pH of the geothermal
brine at an adjusted pH of between 4.5 and 6.5, as required by Claim 9” (Pet.
44). But “[t]here is no explanation” (Dec. 24). We reproduced ¶ 162 of the
Gallup Declaration in the Decision (see Dec. 23–24), which states in full that
The step in the Hazen process of sparging the brine with air (Stream 6)
in the iron reactor will reduce the pH. The reduction of the pH is offset
by the introduction of calcium hydroxide (Stream 5) to the iron reactor.
In my opinion, the Hazen process discussed by Maimoni describes a
step of maintaining and controlling the pH of the geothermal brine at
an adjusted pH of between 4.5 and 6.5. Given the pH of the feed brine,
these pH values occur as a result of the air oxidation and introduction
of calcium hydroxide.
We did not and still do not see Dr. Gallup providing any meaningful
explanation as to why the steps of sparging and the addition of calcium
hydroxide per the Hazen process set forth in Maimoni necessarily maintains
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the pH to an adjusted level of between 4.5 and 6.5. All that Dr. Gallup
testifies to is that the “[g]iven the pH of the feed brine [i.e., between 5.2 and
6.1 (Table 1) or 5.6 (Table 2). EX 1004, at 9-10], pH values [as claimed]
occur as a result of the air oxidation and introduction of calcium hydroxide.”
Id. As we stated in the Decision, we do not see how this statement is
anything but a “conclusory assertion[ ] backed up by no objective evidence,
such as experimental results establishing the adjusted pH of Maimoni’s
geothermal brine.” Dec. 24.
Accordingly, we are unpersuaded as to error in our conclusion that
“Petitioner insufficiently establishes that Maimoni anticipates, expressly or
inherently, the claim 9 step of ‘maintaining the pH of the geothermal brine
solution at an adjusted pH of between 4.5 and 6.5.’” (Dec. 26) based on
reason (1); that is, Petitioner’s apparent inherency argument made in the
Petition, as well as the Gallup Declaration upon which the argument relied,
were inadequate (Dec. 21–25).
The Request also challenges reason (2), inter alia, as follows:
In denying Ground 2 based on Maimoni, the Board adopted
Patent Owner’s unsupported contention and concluded, based on the
disclosure of the Hazen report EX 2005, that Maimoni did not disclose
“maintaining the pH of the geothermal brine solution at an adjusted pH
of between 4.5 and 6.5” as required by Claim 9.
Req. 3.
The Hazen report (Ex. 2005) was cited by Patent Owner in its
Preliminary Response and relied upon in support of its opposing argument.
We indicated that said Hazen report “further undermined” Petitioner’s
inherency argument. Dec. 25. It has now come to our attention that Patent
Owner cited said Hazen report in error.
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During a teleconference conducted on June 17, 2020, Patent Owner
requested leave to file supplemental evidence (Ex. 2006 (“Tr.”)) in order to
correct the record. Specifically, Patent Owner sought authorization to
submit Berthold4 (Ex. 2007) as supplemental evidence and thereby, in effect,
to correct the Preliminary Response’s reliance on the Hazen report.
According to Patent Owner,
In footnote 4 of patent owner's preliminary response, we
indicated that the Hazen report was cited in Maimoni as reference 25,
footnote 25. We have now unfortunately learned that that statement in
footnote 4 is likely or was likely incorrect, and so we wanted to make
sure that we clarified this to the Board.
We recently discovered another 1978 document, which I'll refer
to as [Berthold], so as not to confuse it with the Hazen Report, Exhibit
2005.
Id., 6:19–7:3.
Given that our Decision relied in part on the Hazen report, and that
Petitioner did not oppose the submission, we granted Patent Owner
authorization to file a brief explaining the relevance of Berthold. Id., 8:5–
15. We also authorized Petitioner to file a responsive brief. Id., 18:16–18.
On June 24, 2020, Patent Owner filed its “Motion to Submit
Supplemental Evidence.” Paper 15 (“Mot.”; “Motion”). With said Motion,
Patent Owner filed Berthold. Per said Motion, Patent Owner explains that
“PO now believes that Berthold, rather than the Hazen Report, is more likely
the document cited in Maimoni footnote 25.” Mot. 2.

4 “MAGMAMAX NO. 1 GEOTHERMAL MINERALS RECOVERY
PILOT PLANT Engineering Design,” Prepared by: C. E. Berthold, Senior
Process Engineer, Hazen Research, Inc., June 16, 1978, pp. 1–76.
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On June 30, 2020, Petitioner filed a “Response” to the Motion. Paper
17 (“Resp.”; “Response”). According to said Response, “Petitioner agrees
with Patent Owner that the Berthold reference (EX 2007) should be entered
as supplemental evidence.” Resp. 1. According to Petitioner, “[t]here is
simply no support for the position that Maimoni references the Hazen
Report, or that the Hazen Report is at all relevant to an interpretation of
Maimoni.” Id., 1. Also,
[t]he discovery of the Berthold reference resolves in Petitioner’s favor
any question regarding the relevance of the Hazen Report. As Patent
Owner concedes, it is the Berthold reference – not the Hazen Report –
that is referenced in footnote 25 of Maimoni.
Id., 2.
An Order granting said Motion accompanies this decision.
Thus, the parties agree that the Hazen report cited by Patent Owner in
its Preliminary Response in support of its opposing argument was cited in
error.
Given this, we agree with Petitioner that “[t]here is simply no support
for the position that Maimoni references the Hazen Report, or that the Hazen
Report is at all relevant to an interpretation of Maimoni.” Resp. at 1.
The record now shows that, contrary to our indication in the Decision,
Petitioner’s inherency argument cannot be “further undermined” by “the
evidence provided by Patent Owner in support of its opposing argument; that
is, the Hazen report (Ex. 2005)” (Dec. 25), because Maimoni does not
reference said Hazen report. This means that our reliance on said Hazen
report to interpret Maimoni was an incorrect basis to conclude that
“Petitioner insufficiently establishes that Maimoni anticipates, expressly or
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inherently, the claim 9 step of ‘maintaining the pH of the geothermal brine
solution at an adjusted pH of between 4.5 and 6.5.’” (Dec. 26).
As for Berthold itself, the Board could not have misapprehended or
overlooked Berthold in reaching our decision as it was not before us.
Accordingly, we do not reach the merits of the Board’s decision in light of
what Berthold may disclose.
Accordingly, it is unnecessary to address the merits of the Request’s
challenge as to reason (2), wherein Petitioner argues:
In denying Ground 2 based on Maimoni, the Board adopted
Patent Owner’s unsupported contention and concluded, based on the
disclosure of the Hazen report EX 2005, that Maimoni did not disclose
“maintaining the pH of the geothermal brine solution at an adjusted pH
of between 4.5 and 6.5” as required by Claim 9.
Req. 3.
Be that as it may, our position that the Petition “insufficiently
establishe[d] that Maimoni anticipates, expressly or inherently, the claim 9
step of ‘maintaining the pH of the geothermal brine solution at an adjusted
pH of between 4.5 and 6.5’” (Dec. 26) still remains and is fully supported by
the record. It is unaffected by the error in citing the Hazen report or the
introduction of Berthold into the record. As we have explained, neither the
Petition nor the Gallup Declaration provides adequate reasoning in support
of Petitioner’s apparent inherency argument.
For the foregoing reasons, we find no error in our determination that
“[b]ased on the information presented, Petitioner has not demonstrated a
reasonable likelihood that it would prevail in showing that independent
claim 9 is anticipated by Maimoni” (Dec. 26).
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III. ANALYIS (GROUNDS I AND III)
The Request focuses only on claim 9. See Req. 11.
Petitioner’s argument is directed to the claim 9 limitation “oxidizing
the iron (II) salt to iron (III) hydroxide.” As the Petition indicates, iron (III)
hydroxide is the same as ferric hydroxide (Fe(OH)3 or FeH3O3). See Pet. 23.
According to the Request,
The Board failed to appreciate that Jost’s method is identical to that
taught in the ‘827 patent and would inherently produce the same
product as that taught by ‘827 patent, i.e., Fe(OH)3.
Req. 11. Petitioner argues that “Jost teaches exactly the same oxidation step
taught by the ‘827 patent, which the disclosure of the ‘827 patent
unambiguously claims to produce Fe(OH)3.” Req. 12. According to the
Request,
Jost and the ‘827 patent teaches the same air oxidation of the same
California Imperial Valley hot geothermal brines, under the same
specified pH range, which are the only conditions required by Claim 9
of the ‘827 patent for the oxidation of iron (II) salt to iron (III)
hydroxide. (EX 1001, Claim 9).
Req. 14. “It must be emphasized that Claim 9 adds no differing processing
conditions or steps such that the indigenous ferrous ions would react and
oxidize differently than Jost.” Id.
Thus, if it is said that the claimed method of the ‘827 patent produces
Fe(OH)3 during the oxidation step, it must be accepted that Jost’s
method did the same. As such, Jost must inherently anticipate at least
this step of Claim 9 of the ‘827 patent.
Id.
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In a nutshell, Petitioner looks to the challenged ‘827 patent to interpret
Jost’s oxidation step as, like claim 9, “unambiguously [ ] produc[ing]
Fe(OH)3.” Req. 12.
But the challenge is over Jost alone. In that regard, Jost expresses
doubts about Fe(OH)3 being produced and therefore, according to Jost, iron
(III) hydroxide as claimed is not unambiguously produced. As we stated in
the Decision,
Jost discloses that if “ferric ions and water produced by [oxidizing
ferrous ions to ferric ions] combine to produce hydrated ferric
oxyhydroxide” (Ex. 1005 at 6:58–59), then “intermediate formation of”
(id. at 59–60) iron (III) hydroxide is possible, yet doubtful (given that
“the actual existence of [iron (III) hydroxide] appears widely
questioned” (id. at 61–62)).
Dec. 18.
Petitioner seems to be suggesting that we ignore the doubt expressed
in Jost of “the actual existence of [iron (III) hydroxide],” a doubt that
appears to be “widely” accepted. But, as a matter of law, an ambiguous
reference cannot anticipate a claim. As we stated in the Decision:
[u]nder these circumstances, where Jost raises the possibility of
forming iron (III) hydroxide, while raising a doubt that iron (III)
hydroxide even exists – we find that Jost does not describe, expressly
or inherently, oxidizing to iron (III) hydroxide as claimed. At best, Jost
is ambiguous about oxidizing to iron (III) hydroxide. But ambiguous
references do not, as a matter of law, anticipate a claim See Wasica
Finance GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed.
Cir. 2017) (emphasis added) (“Anticipation requires that a single
reference ‘describe the claimed invention with sufficient precision and
detail to establish that the subject matter existed in the prior art.’ Verve,
LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002)
(emphasis added). For this reason, it has long been understood that
ambiguous references do not, as a matter of law, anticipate a claim. See,
e.g., W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554
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(Fed. Cir. 1983) (refusing to find claims anticipated when the prior art
references were ‘unacceptably vague’); see also In re Hughes, 52
CCPA 1355, 345 F.2d 184, 188 (1965); In re Turlay, 49 CCPA 1288,
304 F.2d 893, 899 (1962) (‘It is well established that an anticipation
rejection cannot be predicated on an ambiguous reference.’)”).
Because Jost discloses only the possibility of iron (III) hydroxide
and no other evidence has been provided to show that Jost nevertheless
necessarily oxidizes to iron (III) hydroxide as claimed, based on the
information, Petitioner has not shown sufficiently that the Jost
reference anticipates, expressly or inherently, the claim step of
“oxidizing the iron (II) salt to iron (III) hydroxide.” “Inherency . . .
may not be established by probabilities or possibilities. The mere fact
that a certain thing may result from a given set of circumstances is not
sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).
Dec. 14–15. The Request does not address this point.
Accordingly, notwithstanding that, when read in light of the
challenged ‘827 patent, Jost’s oxidation step may produce iron (III)
hydroxide, Jost expressly describes that, although iron (III) hydroxide is
possible, it is doubtful (given that “the actual existence of [iron (III)
hydroxide] appears widely questioned” (Ex. 1005, 6:57–65)). See Dec. 13.
In this situation, Petitioner does not show sufficiently that Jost anticipates
the claimed subject matter.
No other arguments having been raised, Petitioner’s request for
reversal of the Board’s denial of institution of an inter partes review based
on Ground I, i.e., claims 9–16 are anticipated by or would have been obvious
over Jost, and Ground III, i.e., claims 9‒16 would have been unpatentable
over the combination of Jost and Maimoni, is denied.
IV. CONCLUSION
Petitioner’s Request for Rehearing is denied.
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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