Trials@uspto.gov
`571-272-7822
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` Paper 67
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` Entered: February 27, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`v.
`EMERACHEM HOLDINGS, LLC,
`Patent Owner.
`__________
`
`Case IPR2014-01558
`Patent 5,599,758
`
`
`
`Before JAMES T. MOORE, SHERIDAN K. SNEDDEN, and
`KRISTINA M. KALAN, Administrative Patent Judges.1
`
`MOORE, Administrative Patent Judge.
`
`
`
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`DECISION ON REMAND
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`
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`1 Judge Frederick McKelvey, who participated in the original decision,
`passed away and is unavailable to participate in this decision on remand, and
`is replaced by Judge Kalan.
`
`
`571-272-7822
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`
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`
`
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` Paper 67
`
`
` Entered: February 27, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`v.
`EMERACHEM HOLDINGS, LLC,
`Patent Owner.
`__________
`
`Case IPR2014-01558
`Patent 5,599,758
`
`
`
`Before JAMES T. MOORE, SHERIDAN K. SNEDDEN, and
`KRISTINA M. KALAN, Administrative Patent Judges.1
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION ON REMAND
`
`
`
`
`
`
`
`
`1 Judge Frederick McKelvey, who participated in the original decision,
`passed away and is unavailable to participate in this decision on remand, and
`is replaced by Judge Kalan.
`
`
`
`IPR2014-01558
`Patent 5,599,758
`
`
`
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`I. Background
`A final written decision in this matter was rendered January 22, 2016.
`
`Paper 59. Patent Owner filed a timely notice of appeal. Paper 64.
`The United States Court of Appeals for the Federal Circuit affirmed
`the decision of the Board in part,2 vacated in part,3 and remanded the
`proceeding to the Board for clarification. EmeraChem Holdings, LLC v.
`Volkswagen Grp. of Am., 859 F. 3d 1341, 1343 (Fed. Cir. 2017).
`A conference call was conducted October 3, 2017, during which the
`panel and the parties discussed different approaches for addressing the
`remand order from the Federal Circuit. Ex. 1059.4
`Petitioner’s counsel asserts that, because the Federal Circuit affirmed
`our decision that claim 17 was unpatentable as obvious over the combination
`of Campbell, Saito, and Stiles (id. at 4:23–11), that combination is proper.
`As a result, Petitioner urges that the Patent Owner should receive precisely
`what is asked for on appeal—a chance to address that combination vis-à-vis
`claims 3, 16, and 20. Id. at 5:16–22. Petitioner points to the Director’s
`briefing to the Federal Circuit on rehearing, in which the Office urged an
`alteration to conform the opinion to the judgment. Id. at 6:23–7:12 (citing
`Ex. 1058, 7). More specifically, the Director’s briefing urged:
`Here, because the problem with the Board’s reliance on Stiles
`was procedural, the appropriate action was for the Panel to
`remedy that problem with a procedural solution: remand the case,
`
`2 As to the finding that claims 1–2, 4–14, and 17–19 were unpatentable.
`3 As to the finding that claims 3, 16, and 20 were unpatentable.
`4 We observe that the transcript of the call incorrectly references our
`reviewing court in the case caption. . Ex. 1059, 1.
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`IPR2014-01558
`Patent 5,599,758
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`without restrictions, and direct the Board to afford EmeraChem
`adequate process. That would allow the Board to conduct the
`remand in such a way that could provide EmeraChem with an
`adequate opportunity to respond to the unpatentability theories
`based on Stiles. But to effectively instruct the Board to ignore
`prior art of record in the IPR and to uphold claims 3, 16, and 20
`against what the Board regards as a significant patentability
`objection already in the record of the proceeding—Stiles—on
`remand goes too far; doing so gives EmeraChem a windfall by
`resolving the “Stiles issue” in its favor without considering the
`merits of that issue.
`
`
`Ex. 1058, 7. We note that having been presented with this argument, the
`Federal Circuit declined to revise its decision.
`
`Counsel for Patent Owner expressed the viewpoint that the Federal
`Circuit reversed our decision based on Stiles. Ex. 1059, 11:7–12:17. Patent
`Owner also observes that we were given specific instructions what to do on
`remand. Id. at 12:18–25. Patent Owner expressed the viewpoint that we can
`consider the sections of the briefing that is already present and then issue
`clarification. Id. at 14:14–18.
`
`We have considered various ways to proceed in this case, including
`vacating the institution decision, conducting a new trial on claims 3, 16, and
`20, or simply allowing supplemental briefing and/or limited additional
`evidence. Each approach has some advantages and disadvantages, but the
`one thing each has in common is that it strays from the direct instructions of
`our reviewing court. Accordingly, while we understand that proceeding on
`the existing record and briefing may not address all of the potential issues,
`we believe it hews most truly to the instructions of our reviewing Court—
`which Court declined to alter its opinion upon request of the Office.
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`IPR2014-01558
`Patent 5,599,758
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`Moreover, we have considered our reviewing Court’s directives
`against the Petitioner’s assertion of the primary public interest in this
`proceeding. Ex. 1059, 28:17–23. We find the Court’s instructions to be
`controlling. Accordingly, we shall consider the record as it stands, and do so
`below.
`
`II. Discussion
`A. The Remand for Claims 3, 16, and 20
`Our reviewing court has determined that the prior board panel violated
`
`the notice and opportunity to respond requirement of the Administrative
`Procedures Act, 5 U.S.C. § 554, 556, and 706. EmeraChem, 859 F. 3d at
`1352. Specifically, the panel determined that the challenged claims were
`rendered obvious by the combination of Campbell (Ex. 1003A), Saito (Ex.
`1008B), and Stiles (Ex. 1009A). Paper 59, 43–45. The panel relied on
`Stiles for its disclosure of limitations in dependent claims 3, 16, and 20 in
`the final written decision. Id.
`On remand, the Federal Circuit presented a specific question to be
`answered by the Board: whether Saito discloses the dependent limitations in
`claims 3, 16, and 20. Id. We find that, based upon the evidence of record,
`Saito does not, alone, describe those limitations.
`B. The Prior Decision
`Familiarity with the prior decision is presumed. For ease of reference
`
`and context, Claim 1 recites:
`
`1. A method of regenerating a devitalized absorber having
`nitrogen oxides absorbed therein or thereon, said method comprising
`the steps of:
`providing a stream of regenerating gas comprising a reducing
`gas, said reducing gas having an effective amount for removing said
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`IPR2014-01558
`Patent 5,599,758
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`nitrogen oxides from said devitalized absorber, and an inert carrier
`gas; and
`passing said stream of regenerating gas comprising an
`inert carrier gas and a component selected from the group consisting
`of hydrogen, carbon monoxide and mixtures thereof over said
`devitalized absorber comprising an alumina support with a platinum
`coating thereon and having nitrogen oxides absorbed therein or
`thereon for an effective time, at an effective temperature and at an
`effective space velocity to remove said nitrogen oxides from said
`devitalized absorber to form a regenerated absorber.
`
`Ex. 1001, 9:28–44.
`
`Claim 3 recites:
`
`3. The method of claim 1 wherein said regeneration gas further
`
`comprises up to 10% carbon dioxide.
`
`Id. at 9:47–48.
`
`Claims 16 and 20 depend from claims 13 and 14. Those claims recite:
`
`13. A method of regenerating a devitalized catalyst/absorber
`
`and having nitrogen oxides absorbed therein or thereon, comprising
`the steps of:
`
`providing a stream of inert carrier gas containing an
`effectuating amount of a reducing agent selected from carbon
`monoxide, hydrogen gas and mixtures thereof said stream further
`characterized as containing at least carbon monoxide or carbon
`dioxide for removing said nitrogen oxides from said catalyst/absorber
`and restoring a carbonate form for said alkali or alkaline earth;
`
`passing said gaseous stream over said exhausted
`catalyst/absorber comprising an oxidation catalyst specie selected
`from platinum, palladium, rhodium, cobalt, nickel, iron, copper,
`molybdenum or combinations thereof disposed on a high surface area
`support, said catalytic component being intimately and entirely coated
`with an absorber material selected from a hydroxide, carbonate,
`bicarbonate or mixture thereof of an alkali or alkaline earth or
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`IPR2014-01558
`Patent 5,599,758
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`mixtures thereof and having nitrogen oxides absorbed therein or
`thereon for an effective time, at a temperature in the range of 250° to
`750° F. and at a GHSV in the range of 10 to 100,000 hr-1 to remove
`said nitrogen oxides from said devitalized catalyst/absorber to form a
`regenerated catalyst/absorber.
`
`
`
`14. The method of claim 13 wherein said inert carrier gas
`comprises nitrogen, steam or mixtures thereof.
`
`Id. at 10:13–40.
`
`16. The method of claim 14 wherein said inert carrier gas
`comprises steam.
`Id. at 10:44–45
`
`20. The method of claim 14 wherein said inert carrier gas
`comprises steam.
`
`Id. at 10:53–54.
`
`As regards claim 3, the prior panel stated:
`
`Claim 3 calls for a regenerating gas comprising up to 10%
`carbon dioxide. According to Patent Owner, Saito describes the
`presence of carbon dioxide in the exhaust gas, but not the
`regeneration gas. Paper 29, page 33; Saito, Ex. 1008B, page 4:17.
`Overlooked, and not addressed by Patent Owner, is a description
`of the use of carbon dioxide in a reducing gas described by Stiles.
`Ex. 1009A, col. 5:52–55 (“[t]he absorbent . . . is regenerated for
`reuse by passing a gas containing . . . hydrogen in nitrogen; both
`carbon dioxide and water vapor can also be present”).
`
`Paper 59, 44.
`
`
`As regards claims 16 and 20, the prior panel stated:
`
`Claims 16 and 20 require steam to be present in the carrier
`gas. Paper 29, pages 34–35. While agreeing that Saito describes
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`IPR2014-01558
`Patent 5,599,758
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`the use of steam in the exhaust gas, Patent Owner maintains that
`Saito does not describe the presence of steam in the regeneration
`gas. Id. Overlooked by Patent Owner is a teaching in Stiles that
`the regeneration gas can contain “water vapor.” Ex. 1009A, col.
`5:55. What is clear from the record is that the regeneration gas
`can contain hydrogen, nitrogen, carbon dioxide, and water vapor
`per Stiles and hydrogen, ammonia, carbon monoxide, and
`hydrocarbons per Saito. Selection of a particular gas has not
`been shown to be beyond the skill in this art. In fact, we note
`that selection of a particular gas appears to be a function of the
`reduction process undertaken. Ex. 1009A, col. 1:58–63
`(discussing use of ammonia in an SCR process).
`
`Id. at 45.
`
`
`C. The Findings on Remand
`The question presented on remand is whether Saito, Ex. 1008B
`(corrected) describes the presence of up to 10% carbon dioxide in the
`regenerating gas, as in claim 3, or the presence of steam in the regenerating
`gas, as in claims 16 and 20.
`Returning to the Petition, Petitioner contended that Saito described “1
`to 15 vol. % of carbon dioxide gas” in the exhaust gas. Pet. 41 (citing Ex.
`1008, 4). Petitioner also contended that Saito described that the exhaust gas
`contains “1 to 15 vol. % of water vapor,” and temperature is “150 to 800° C,
`and in particular 200 to 700° C.” Id. at 44 (citing Ex. 1008, 4).
`Patent Owner, on the other hand, observed that Saito uses two catalyst
`beds and regenerates each catalyst bed independently of each other. PO
`Resp. 21, 24. By the use of valving, Patent Owner argued, the reducing
`agent is introduced into the catalyst bed through which exhaust gas is not
`flowing. Id. (citing Ex. 1008B, 3, right column).
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`IPR2014-01558
`Patent 5,599,758
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`We observe that Saito Figure 1 illustrates the valves (reference
`numerals 3 and 4) and separate fluid paths:
`
`
`Figure 1 is a schematic diagram of an engine and catalytic exhaust
`
`
`The valves in Saito are said to introduce the regeneration gas into the
`
`catalyst bed through which the exhaust is not flowing. Ex. 1008B, 3, right
`hand column, first paragraph. Dr. Crocker so testifies. Ex. 2006, ¶ 24.
`Dr. Farrauto did so as well during his cross-examination. Ex. 2003, 175:4–
`10.
`
`
`During the conference call counsel for Petitioner urged that Saito:
`discloses two embodiments. One where there’s a low oxygen
`content and one where there’s a high oxygen content. When
`there is a high oxygen content, they shut off one of the beds and
`only put hydrogen through. But it says when the content is low
`or it’s zero or substantially low, then you can use the exhaust as
`the carrier gas.
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`IPR2014-01558
`Patent 5,599,758
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`Ex. 1059, 25:25–26:9.
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`We do not find Saito to say that the exhaust can be the carrier gas. In
`particular, Saito itself states that the method includes stopping the flow of
`the exhaust gas. Ex. 1008B, 3, left hand column, l. 4. Hydrogen is
`introduced to the catalyst bed “through which the exhaust is not flowing.”
`Id., right hand column, ll. 4–8.
`
`As a consequence, and as instructed by our reviewing court, we
`clarify our findings of the decision rendered January 22, 2016. We
`expressly find that the evidence of record as presented by the petition does
`not establish that Saito describes the dependent limitations of claims 3, 16,
`and 20.
`Given the stated limited purpose of the remand and our reviewing
`court’s viewpoint in the last paragraph of the decision, we appear to be
`somewhat constrained from providing, and therefore decline to provide,
`further proceedings in this matter as discussed above.
`We therefore conclude that the Petitioner did not carry its burden of
`proof as regards claims 3, 16, and 20 in the instant proceeding.
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`IPR2014-01558
`Patent 5,599,758
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`
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`For PETITIONER
`Steven F. Meyer
`ptopatentcommunication@lockelord.com
`
`Seth J. Atlas
`satlas@lockelord.com
`
`John Sweeney
`jsweeney@lockelord.com
`
`For PATENT OWNER:
`Michael J. Bradford
`mbradford@luedeka.com
`
`Jacobus C. Rasser
`koosrasser@gmail.com
`
`
`
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`10
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