PaSCAl Technologies v. Cambridge Enterprises Ltd

1. Case Identification

• Case #: IPR2024-01235
• Patent #: 11,230,656
• Filed: August 26, 2024
• Petitioner(s): Pascal Technologies
• Patent Owner(s): Cambridge Enterprise Limited, Universitat De Barcelona, and Universitat Politècnica De Catalunya
• Challenged Claims: 1-3, 6-11, and 14-16

2. Patent Overview

• Title: Method for Barocaloric Cooling/Heating Using Organic Materials
• Brief Description: The ’656 patent discloses methods for cooling or heating using organic materials that exhibit barocaloric effects (BCEs). The core method involves a thermodynamic cycle of applying and releasing hydrostatic pressure to an organic material to induce reversible temperature changes.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 6-10, and 14-16 are obvious over Xie.

• Prior Art Relied Upon: Xie (a 2016 article titled "Demonstration of liquid crystal for barocaloric cooling application").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Xie teaches using an organic material, dihexadecylphosphatidylethanolamine (DHPE), for barocaloric cooling applications. The figures in Xie were asserted to explicitly show the four-step method recited in independent claims 1 and 9: (i) applying hydrostatic pressure, which causes a temperature increase; (ii) permitting heat flow as the material cools back to its initial temperature; (iii) releasing the pressure, which causes a temperature decrease; and (iv) permitting heat flow as the material warms back to its initial temperature. Petitioner further argued that Xie's disclosure of DHPE as an organic "liquid crystal" meets the limitations of dependent claims 2 and 10.
  • Motivation to Combine (for §103 grounds): This ground is based on a single reference.
  • Expectation of Success (for §103 grounds): This ground is based on a single reference.

Ground 2: Claims 1-3, 6-7, 9-11, and 14-15 are obvious over Mañosa in combination with Patel.

• Prior Art Relied Upon: Mañosa (a 2013 article, "Advanced Materials for Solid-State Refrigeration") and Patel (a 2016 article, “Elastocaloric and barocaloric effects in polyvinylidene di-fluoride-based polymers”).
• Core Argument for this Ground:
  • Prior Art Mapping: Mañosa was cited for disclosing a general solid-state refrigeration cycle that uses materials with caloric effects, mapping to the four method steps of the independent claims. However, Mañosa’s exemplary material was an inorganic compound with the drawback of operating below room temperature. Patel was cited for disclosing a specific organic polymer, PVDF-TrFE-CTFE, which exhibits strong barocaloric effects and a substantial temperature drop near room temperature (300K). Patel also discloses that this material has high entropy changes, meeting a limitation of dependent claim 7.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Patel's superior, room-temperature organic material with Mañosa's established refrigeration cycle to solve the known problem of Mañosa's material operating at low temperatures. Petitioner asserted this is a simple substitution of a known material for another to obtain predictable results, especially since the ’656 patent admits organic materials are known alternatives to inorganic materials for barocaloric cooling.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because Patel's organic material was shown to have superior properties (strong BCE at room temperature) directly relevant to the cooling application described in Mañosa.

Ground 3: Claims 1-3, 6-7, 9-11, and 14-15 are obvious over Mañosa in combination with Tamarit.

• Prior Art Relied Upon: Mañosa (the 2013 article) and Tamarit (a 2006 article, “Thermodynamic Study of Some Neopentane Derivated by Thermobarometric Analysis”).

• Core Argument for this Ground:

  • Prior Art Mapping: Mañosa again provides the foundational refrigeration cycle. Tamarit discloses organic plastic crystals (NPA and TRIS) that exhibit exceptionally large entropy and volume changes at their phase transitions, which are known indicators of strong barocaloric effects. These values were shown to meet the specific entropy and volume change limitations of dependent claim 7.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to substitute Tamarit's high-performance organic plastic crystals for the inorganic material in Mañosa's cycle. The ’656 patent specification explicitly states a desire for materials with large isothermal entropy changes, a characteristic Tamarit's materials possess. Further, Petitioner pointed to another reference, Català (a 2016 thesis), as evidence that this exact combination was not only obvious but had actually been made prior to the patent's priority date.
  • Expectation of Success (for §103 grounds): The known correlation between high entropy/volume changes and strong barocaloric effects would give a POSITA a high expectation of success in improving the performance of Mañosa's cycle by using Tamarit's superior organic plastic crystals.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Tamarit with Xie (Ground 4) and Mañosa with Patel and Tamarit (Ground 5), but relied on similar substitution and design modification theories.

4. Key Claim Construction Positions

• Petitioner argued that the term "organic material" should be interpreted broadly according to its plain meaning and the patent's own definition: a material containing "one or more carbon atoms." This construction is critical because some prior art, like Patel, discloses organic polymers. Petitioner contended that language in the specification suggesting polymers are not organic materials for the invention does not rise to the level of a clear and unambiguous disavowal of claim scope. Adopting a narrow construction would, Petitioner argued, improperly import limitations from the specification and violate the doctrine of claim differentiation between the independent and dependent claims.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv factors would be inappropriate because there is no co-pending litigation involving the ’656 patent.
• Petitioner also argued against denial under 35 U.S.C. §325(d), contending that the core prior art references were not substantively examined during prosecution. Although some references were cited in an Information Disclosure Statement or mentioned in the specification, Petitioner asserted that the examiner erred by overlooking their specific teachings and that there is no evidence the examiner considered the particular invalidity arguments presented in the petition.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 6-11, and 14-16 of the ’656 patent as unpatentable.