Takeaway: A claim construction that is arguably at odds with the intrinsic evidence is not likely to be adopted by the Board and may be fatal to arguments relying upon such a construction.

In its Decision, the Board denied institution of inter partes review, holding that Petitioner had not established a reasonable likelihood that it would prevail with respect to any challenged claim in the ‘132 patent.  The ‘132 patent generally relates to “methods for preparing a composition for use in stabilizing chlorinated water to sunlight decomposition.”  In particular, the ‘132 patent addressed the inefficiencies and high cost associated with prior art methods of commercially producing such stabilizing compositions.

With respect to claim construction, the Board only provided an express construction under the broadest reasonable interpretation for the term “wetcake,” which is recited in each independent claim. In construing the term, the Board referred to the claims and the specification of the ‘132 patent.  The Board also consulted the prior art that was cited during prosecution of the ‘132 patent, noting that such prior art “constitutes intrinsic evidence.”  Finally, the Board also cited to Petitioner’s declaration.

After reviewing the above sources, the Board agreed with Patent Owner’s argument that a person of ordinary skill in the art “would have understood that a wetcake is a wet solid, which physically differs from a dry solid.” Further, the Board explained that “[o]ne of ordinary skill in the art would have understood that a wetcake and a powder may have the same moisture content, yet differ physically in that the particles of a wetcake are capable of adhering together to form a cake, while the particles of a powder do not adhere to each other, but are free flowing.

The Board disagreed with the constructions proposed by Petitioner’s declarant as being “at odds with the intrinsic evidence.” In particular, Petitioner’s declarant had interpreted the term as requiring a specific makeup.  For instance, Petitioner’s declarant had interpreted “wetcake of monoalkali metal cyanurate” as “a composition containing water and 40-90% monoalkali metal cyanurate by weight.”  The Board agreed with Patent Owner that Petitioner’s proposed construction would improperly encompass free flowing powders.

Thus, the Board construed wetcake as “a solid material comprising particles having some adherence to one another such that they are not free flowing.”

Turning to the asserted grounds of unpatentability, the Board first noted that each independent claim recited the term “wetcake,” and therefore required “forming a solid material comprising particles of monoalkali metal cyanurate having some adherence to one another such that they are not free flowing.” The Board held that Petitioner’s arguments applying the prior art to the claims were based on its construction of the term wetcake, which the Board did not adopt.  Based on its interpretation of the term, the Board found that Petitioner had not shown that the prior art disclosed the formation of a wetcake in any step of the process.  Accordingly, the Board denied institution.

Lenroc Company v. Enviro Tech Chemical Services, Inc., IPR2014-00382
Paper 12: Decision Denying Institution of Inter Partes Review
Dated: July 24, 2014
Patent: 7,728,132 B2
Before: Linda M. Gaudette, Grace Karaffa Obermann, and Kristina M. Kalan Written by: Gaudette