PTAB

IPR2018-01558

Chemours Co FC LLC v. Daikin Industries Ltd

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Composition Comprising HFC and HFO
  • Brief Description: The ’123 patent discloses refrigerant compositions comprising a mixture of hydrofluorocarbons (HFCs) and hydrofluoroolefins (HFOs). The invention is directed to improving the lubrication performance of such mixtures by including a third component selected from a group of known hydrochlorocarbons (HCCs), hydrochlorofluorocarbons (HCFCs), and chlorofluorocarbons (CFCs).

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 2, and 5

  • Legal Basis: Claims 1, 2, and 5 are anticipated under 35 U.S.C. §102 by the ’909 publication.
  • Prior Art Relied Upon: ’909 publication (Application # 2007/0258909).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the ’909 publication, which discloses a method for analyzing organic impurities in HFC-134a, explicitly describes calibration mixtures that contain every element of claim 1. The ’909 publication’s tables show a composition of "spiked" HFC-134a that includes all required HFCs of Limitation 1 (HFC-32, HFC-125, HFC-134a, and HFC-134), the HFO of Limitation 2 (HFO-1234yf), and multiple members of the third component group of Limitation 3 (HCC-40, HCFC-22, HCFC-124, CFC-115, and HCFC-1122). For dependent claims 2 and 5, Petitioner asserted that the relative concentrations of components in the disclosed mixtures, where impurities are measured in parts per million (ppm), inherently meet the claimed limitations of the HFC/HFO components being at least 95 mass % and HCC-40 being 1 mass % or less.

Ground 2: Obviousness of Claims 1-5

  • Legal Basis: Claims 1-5 are obvious under 35 U.S.C. §103 over the ’134 publication in view of the ’317 publication and the AHRI Standard.
  • Prior Art Relied Upon: ’134 publication (WO 2015/077134), ’317 publication (Application # 2015/0322317), and the AHRI Standard (2014).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the ’134 publication teaches refrigerant blends containing the HFCs (HFC-32, HFC-125, HFC-134a, HFC-134) and HFOs (HFO-1234yf, HFO-1234ze) recited in Limitations 1 and 2 of claim 1. The ’317 publication, which details a manufacturing process for HFO-1234yf, discloses that this process inherently creates byproducts that fall within Limitation 3, including HCC-40, CFC-115, and HCFC-124. The ’317 publication states these compounds are difficult to separate from HFO-1234yf due to close boiling points.
    • Motivation to Combine: A POSITA would combine these references to create the refrigerant blends of the ’134 publication. In doing so, a POSITA would use HFO-1234yf produced by a process like that in the ’317 publication. This HFO-1234yf would naturally contain the claimed Limitation 3 compounds as impurities. Petitioner argued a POSITA would not have been motivated to further purify the HFO-1234yf because the process was known to be complex and expensive, and because prior art (including papers by Patent Owner’s own employees) taught that the presence of chlorine-containing compounds (like CFCs and HCFCs) improved lubricity, which was the stated goal of the ’123 patent. The AHRI Standard further confirmed that such levels of impurities were acceptable in commercial refrigerants.
    • Expectation of Success: A POSITA would have had a high expectation of success in combining a known HFO-1234yf component (with its known impurities) into a known refrigerant blend, as this constituted the use of standard, commercially relevant components to achieve a predictable composition.

Ground 3: Obviousness of Claims 1-5

  • Legal Basis: Claims 1-5 are obvious over the ’069 publication in view of the ’595 patent, the ’317 publication, and the AHRI Standard.
  • Prior Art Relied Upon: ’069 publication (WO 2013/192069), ’595 patent (Patent 7,695,595), and the ’317 publication (Application # 2015/0322317).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative obviousness pathway. The ’069 publication discloses refrigerant compositions meeting Limitations 1 and 2. Petitioner argued a POSITA would formulate these compositions using commercially available or "industrial grade" components. The ’595 patent, assigned to the Patent Owner, analyzes industrial-grade HFC-134a and discloses that it contains numerous byproducts that satisfy Limitation 3, including HCC-40, HCFC-22, HCFC-124, and CFC-115. Separately, the ’317 publication provides another source for Limitation 3 compounds as byproducts from HFO-1234yf manufacturing.
    • Motivation to Combine: A POSITA would combine the teachings because it would have been obvious to use standard, industrial-grade HFC-134a (as characterized in the ’595 patent) and industrial-grade HFO-1234yf (as characterized in the ’317 publication) as starting materials to create the refrigerant blends disclosed in the ’069 publication. This combination would predictably result in a final composition containing the byproducts recited in Limitation 3. The ’595 patent’s focus on purification for pharmaceutical, not refrigeration, applications would signal to a POSITA that the industrial grade was suitable for refrigeration.
    • Expectation of Success: There would be a high expectation of success, as this approach merely involves combining known industrial-grade components according to established refrigerant blending principles, resulting in a composition with a predictable impurity profile.

4. Key Claim Construction Positions

  • "as the HFC" and "as the HFO": Petitioner argued that while claim 1 uses the transitional phrase "comprising" in the preamble, it also uses the phrases "as the HFC" and "as the HFO" in Limitations 1 and 2. Petitioner contended that under the broadest reasonable interpretation, these phrases should be construed to mean "at least" the listed components, allowing for the presence of other HFCs and HFOs as byproducts. This interpretation is critical to Petitioner’s arguments that the impurity profiles disclosed in the prior art meet the claim limitations.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-5 of the ’123 patent as unpatentable.