`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`UMICORE AG & CO. KG,
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`Petitioner
`
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`Patent No. 7,601,662
`Issue Date: October 13, 2009
`Title: COPPER CHA ZEOLITE CATALYSTS
`_________________________________________________________________
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`DECLARATION OF JOHANNES A. LERCHER, PH.D.
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`Case No. IPR2015-01121
`__________________________________________________________________
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`Umicore AG & Co. KG
`Exhibit 1008
`Page 1 of 106
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`I.
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`II.
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`Table of Contents
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`BACKGROUND AND QUALIFICATIONS ..................................................... 1
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`ASSIGNMENT AND MATERIALS REVIEWED ........................................... 3
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`III. OVERVIEW OF THE ’662 PATENT .................................................................. 5
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`IV. CLAIMS OF THE ’662 PATENT .......................................................................... 7
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`V.
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`CLAIM CONSTRUCTION .................................................................................. 13
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`A.
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`B.
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`C.
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`D.
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`“Catalyst” ....................................................................................................... 13
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`“[Z]eolite having the CHA crystal structure” ........................................... 14
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`“[T]he catalyst effective to promote the reaction of ammonia with
`nitrogen oxides to form nitrogen and H2O selectively” .......................... 15
`“[I]on-exchanged copper” and “non-exchanged copper” ...................... 17
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`VI.
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`INVALIDITY ANALYSIS .................................................................................... 17
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`Person of Ordinary Skill in the Art ............................................................ 18
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`Scope and Content of the Prior Art ........................................................... 19
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`Zones and Maeshima Render Claims 1-11 and 30 Obvious ................... 20
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`Zones, Maeshima, and Patchett ’843 Render Claims 12-24 and 32-
`50 Obvious .................................................................................................... 45
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`Purported “Secondary Considerations” .................................................... 76
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`There Is Nothing Unexpected or Critical About the Claimed
`Range .............................................................................................................. 78
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`I, Johannes A. Lercher, Ph.D, declare as follows:
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`I.
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`BACKGROUND AND QUALIFICATIONS
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`1.
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`I am currently a Professor in the Department of Chemistry at the
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`Technische Universität München, located in Munich, Germany.
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`2.
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`I studied chemistry at the Vienna University of Technology from 1972-
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`1978, and engaged in graduate work in chemistry at the same university from 1978-
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`1980. I received a doctorate degree in chemistry from the Vienna University of
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`Technology in 1981. My thesis was entitled “Acid Sites on Al2O3/MgO and
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`Al2O3/SiO2 Mixed Metal Oxides.” In 1985, I obtained the habilitation (venia
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`docendi) in physical chemistry.
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`3.
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` Starting during my academic studies and continuing until 1993, I was a
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`lecturer and an Associate Professor in Chemistry at the Vienna University of
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`Technology.
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`4.
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`From 1993 to 1998, I was a full Professor for Catalytic Materials and
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`Processes at the Department of Chemical Technology of the University Twente, the
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`Netherlands
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`5.
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`I have been a Professor at the Technische Universität München since
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`1998.
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`6.
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`My research lies in the areas of fundamental and applied aspects of oxide
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`and molecular sieve based sorption and catalysis, the design of complex
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`multifunctional catalysts, in situ characterization of catalytic processes and developing
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`new routes to activate, convert and functionalize hydrocarbons in petroleum and
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`petrochemical processes.
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`7.
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`Over the course of my career, I have taught classes entitled “Industrial
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`Catalytic Reactions and Reaction Mechanisms,” “Heterogeneous Catalysis I: Theory
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`and Model Reactions,” “Heterogeneous Catalysis II: Application in Industrial
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`Processes and Environmental Protection,” “Physical Chemistry,” “Thermodynamics
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`of Phases,” “Kinetics and Catalysis,” “Industrial Catalysis,” “Environmental
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`Catalysis,” “Reaction Technology and Catalysis,” “Industrial Processes I – Energy,”
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`“Industrial Processes II – Chemical Synthesis,” and “Chemically Functional
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`Materials.”
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`8.
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`In addition to my professorial positions, I have also had other university
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`titles and have been part of several professional organizations.
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`9.
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`In particular, I was the Chairman of the Department of Chemistry at the
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`Technische Universität München from 2000 to 2003, was the President of the
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`International Zeolite Association from 2001 to 2004, and am currently President of
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`the Federation of European Catalysis Societies.
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`10. My research activity has been published in over 480 scientific papers in
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`international journals. A listing of my publications is included in my curriculum vitae.
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`11.
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`I am currently the Editor-in-Chief of the Journal of Catalysis, and am a
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`member of the board of several other catalysis journals. Further, I am on the editorial
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`board of the book series, Catalysis Book Series: Theory and Applications (Royal
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`Society of Chemistry).
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`12.
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`A copy of my curriculum vitae, which provides further details regarding
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`my academic background, professional experience, publications, teaching experience,
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`awards I have received, and organization memberships, is attached as Exhibit A.
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`II.
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`ASSIGNMENT AND MATERIALS REVIEWED
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`13.
`
`I submit this declaration in support of Umicore AG & Co. KG’s
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`(“Umicore’s”) Petition for Inter Partes Review of U.S. Patent No. 7,601,662 (“the
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`’662 patent”), Case No. IPR2015-01121.
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`14.
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`15.
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`I am not an employee of Umicore or any affiliate or subsidiary thereof.
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`I am being compensated for my time at a rate of 400 euros per hour.
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`My compensation is in no way dependent upon the substance of the opinions I offer
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`below, or upon the outcome of Umicore’s petition for inter partes review (or the
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`outcome of such an inter partes review, if a trial is initiated).
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`16.
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`I have been asked to provide certain opinions relating to the patentability
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`of the claims of the ’662 patent. Specifically, I have been asked to provide my
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`opinion regarding (i) the level of ordinary skill in the art to which the ’662 patent
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`pertains and (ii) the patentability of claims 1-24, 30, and 32-50.
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`17.
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`The opinions expressed in this declaration are not exhaustive of my
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`opinions on the patentability of claims 1-24, 30, and 32-50. Therefore, the fact that I
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`do not address a particular point should not be understood to indicate any agreement
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`on my part that any claim otherwise complies with the patentability requirements.
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`18.
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`In forming my opinions, I have reviewed (i) the ’662 patent and its
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`prosecution history; and (ii) prior art to the ’662 patent, including:
`
`(cid:120)
`
`(cid:120)
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`(cid:120)
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`(cid:120)
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`U.S. Patent No. 6,709,644 to Zones et al. (“Zones”);
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`U.S. Patent No. 4,046,888 to Maeshima et al.(“Maeshima”);
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`U.S. Patent App. 2006/0039843 to Patchett et al. (“Patchett
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`’843”); and
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`U.S. Patent App. 2005/0031514 to Patchett et al. (“Patchett
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`’514”).
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`19.
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`I have also reviewed all of the following additional materials in
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`connection with the preparation of this declaration:
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`(cid:120)
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`(cid:120)
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`(cid:120)
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`(cid:120)
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`(cid:120)
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`(cid:120)
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`U.S. Patent No. 8,404,203 to Bull et al. (and its prosecution
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`history);
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`U.S. Patent No. 4,544,538 to Zones;
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`U.S. Patent No. 4,503,023 to Breck, deceased et al.;
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`Dedecek et al., “Siting of the Cu+ Ions in Dehydrated Ion
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`Exchanged Synthetic and Natural Chabasites: a Cu+
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`Photoluminescence Study” Microporous and Mesoporous
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`Materials, Vol. 32, pp. 63-74 (1999);
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`U.S. Patent No. 4,961,917 to Byrne;
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`U.S. Patent No. 5,516,497 to Speronello et al.;
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`(cid:120)
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`(cid:120)
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`(cid:120)
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`Ishihara et al., “Copper Ion-Exchanged SAPO-34 as a
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`Thermostable Catalyst for Selective Reduction of NO with C3H6,”
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`169 Journal of Catalysis 93-102 (1997);
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`U.S. Patent No. 4,297,328 to Ritscher et al.;
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`Chung, S.Y. et al., “Effect of Si/Al Ratio of Mordenite and ZSM-
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`5 Type Zeolite Catalysts on Hydrothermal Stability for NO
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`Reduction by Hydrocarbons,” Studies in Surface Science and
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`Catalysis, vol. 130, pp. 1511-1516 (2000); and
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`(cid:120)
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`Declaration of Dr. Frank-Walter Schütze.
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`III. OVERVIEW OF THE ’662 PATENT
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`20.
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`The ’662 patent names Ivor Bull, Wen-Mei Xue, Patrick Burk, R. Samuel
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`Boorse, William M. Jaglowski, Gerald S. Koermer, Ahmad Moini, Joseph A. Patchett,
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`Joseph C. Dettling, and Matthew T. Caudle as inventors.
`
`21.
`
` The ’662 patent states that it was filed on February 27, 2008, and issued
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`October 13, 2009. The ’662 patent states that it “claims the benefit of priority … to
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`U.S. Patent Application No. 60/891,835, filed on Feb. 27, 2007.” (’662 patent, 1:6-8.)
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`For purposes of this declaration, I have been asked to assume that the ’662 patent has
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`an effective filing date of February 27, 2007.
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`22.
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`The ’662 patent generally relates to “zeolites that have the CHA crystal
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`structure.” (’662 patent, 1:13-15.)
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`23.
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`According to the ’662 patent, the catalysts are “copper CHA zeolite
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`catalysts” and can be “use[d] in exhaust treatment systems.” (’662 patent, 1:16-18.)
`
`24.
`
`Before further discussing the materials and processes of the patent, the
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`’662 patent provides an overview of what it believes to be the “Background Art.”
`
`(’662 patent, 1:20-51.)
`
`25.
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`As part of this overview, the ’662 patent explains that “[z]eolites are
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`aluminosilicate crystalline materials having rather uniform pore size which, depending
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`upon the type of zeolite and the type and amount of cations included in the zeolite
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`lattice, typically range from about 3 to 10 Angstroms in diameter.” (’662 patent, 1:22-
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`26.)
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`26.
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`The patent also states that “[b]oth synthetic and natural zeolites and
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`their use in promoting certain reactions, including the selective reduction of nitrogen
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`oxides with ammonia in the presence of oxygen, are well known in the art.” (’662
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`patent, 1:26-29.)
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`27.
`
`In this same “Background Art” section, the ’662 patent also states that
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`“[m]etal-promoted zeolite catalysts including, among others, iron-promoted and
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`copper-promoted zeolite catalysts, for the selective catalytic reduction of nitrogen
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`oxides with ammonia are known.” (’662 patent, 1:30-33.)
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`28.
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`The ’662 patent then goes on to state that “[o]ne embodiment of the
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`present invention pertains to copper CHA catalysts and their application in exhaust
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`gas systems such as those designed to reduce nitrogen oxides.” (’662 patent, 1:62-64.)
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`29.
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`The patent indicates that it “relates to a catalyst comprising a zeolite
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`having the CHA crystal structure and a mole ratio of silica to alumina” (which I will
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`refer to as the “SAR”) “greater than about 15” and an “atomic ratio of copper to
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`aluminum” (which I will refer to as the “Cu/Al ratio”) “exceeding about 0.25.” (’662
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`patent, 2:9-12.)
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`30.
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`The patent indicates that its “catalyst” can be part of systems treating gas
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`streams “emanating from gasoline or diesel engines.” (’662 patent, 1:58-61.)
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`31.
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`The specification explains that its catalyst can be coated on known types
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`of substrates, including “wall flow” or “flow through” “honeycomb” substrates. (’662
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`patent, 2:38-41.)
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`32. Other components of an exhaust gas treatment system are also
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`discussed, including an “oxidation catalyst,” a “soot filter,” and a device to add a
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`reductant like “ammonia” to an exhaust stream. (’662 patent, 5:63-6:3; 21:64-23:7.)
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`33.
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`All of these components were well-known and routinely used as part of
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`exhaust gas treatment systems at the time the ’662 patent was filed.
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`34.
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`I have also reviewed the prosecution history of the ’662 patent, along
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`with the documents submitted in connection with the reexamination of the ’662
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`patent.
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`IV. CLAIMS OF THE ’662 PATENT
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`35.
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`The ’662 patent includes 46 claims. Claim 1 is the only independent
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`claim. The remainder of the claims are dependent. Claims 25-29 and 31 were
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`cancelled during reexamination and are no longer part of the patent.
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`36.
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`Claims 1-24, 30, and 32-50 are reproduced below for reference:
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`A catalyst comprising: an aluminosilicate zeolite having the
`1.
`CHA crystal structure and a mole ratio of silica to alumina from about
`15 to about 150 and an atomic ratio of copper to aluminum from 0.25 to
`about 1, the catalyst effective to promote the reaction of ammonia with
`nitrogen oxides to form nitrogen and H2O selectively.
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`The catalyst of claim 1, wherein the mole ratio of silica to
`2.
`alumina is from about 15 to about 100.
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`The catalyst of claim 2, wherein the mole ratio of silica to
`3.
`alumina is from about 25 to about 40.
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`4. The catalyst of claim 2, wherein the mole ratio of silica to
`alumina is about 30.
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`The catalyst of claim 2, wherein the atomic ratio of copper
`5.
`to aluminum is from about 0.30 to about 0.50.
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`The catalyst of claim 2, wherein the atomic ratio of copper
`6.
`to aluminum is about 0.40.
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`The catalyst of claim 2, wherein the mole ratio of silica to
`7.
`alumina is from about 25 to about 40 and the atomic ratio of copper to
`aluminum is from about 0.30 to about 0.50.
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`The catalyst of claim 2, wherein the mole ratio of silica to
`8.
`alumina is about 30 and the atomic ratio of copper to alumina is about
`0.40.
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`The catalyst of claim 2, wherein the catalyst contains ion-
`9.
`exchanged copper and non-exchanged copper.
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`10. The catalyst of claim 9, wherein the NOx conversion
`performance of the catalyst at about 200°C. after aging is at least 90% of
`the NOx conversion performance of the catalyst at about 200oC. prior to
`aging.
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`11. The catalyst of claim 9, wherein the catalyst contains at
`least about 2.00 weight percent copper oxide.
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`12. The catalyst of claim 2, wherein the catalyst is deposited on
`a honeycomb substrate.
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`13. The catalyst of claim 12, wherein the honeycomb substrate
`comprises a wall flow filter substrate.
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`14. The catalyst of claim 12, wherein the honeycomb substrate
`comprises a flow through substrate.
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`15. The catalyst of claim 14, wherein at least a portion of the
`flow through substrate is coated with CuCHA adapted to reduce oxides
`of nitrogen contained in a gas stream flowing through the substrate.
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`16. The catalyst of claim 15, wherein at least a portion of the
`flow through substrate is coated with Pt and CuCHA adapted to oxidize
`ammonia in the exhaust gas stream.
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`17. The catalyst of claim 14, wherein at least a portion of the
`flow through substrate is coated with Pt and CuCHA adapted to oxidize
`ammonia in the exhaust gas stream.
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`18. The catalyst of claim 13, wherein at least a portion of the
`wall flow substrate is coated with CuCHA adapted to reduce oxides of
`nitrogen contained in a gas stream flowing through the substrate.
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`19. The catalyst of claim 18, wherein at least a portion of the
`wall flow substrate is coated with Pt and CuCHA adapted to oxidize
`ammonia in the exhaust gas stream.
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`20. The catalyst of claim 13, wherein at least a portion of the
`wall flow substrate is coated with Pt and CuCHA adapted to oxidize
`ammonia in the exhaust gas stream.
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`21. An exhaust gas treatment system comprising the catalyst of
`claim 15 disposed downstream from a diesel engine and an injector that
`adds a reductant to an exhaust gas stream from the engine.
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`22. An exhaust gas treatment system comprising the catalyst of
`claim 17 disposed downstream from a diesel engine and an injector to
`add a reductant to an exhaust gas stream from the engine.
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`23. An exhaust gas treatment system comprising the catalyst of
`claim 18 disposed downstream from a diesel engine and an injector to
`add a reductant to an exhaust gas stream from the engine.
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`24. An exhaust gas treatment system comprising the catalyst of
`claim 20 disposed downstream from a diesel engine and an injector to
`add a reductant to an exhaust gas stream from the engine.
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`30. An exhaust gas treatment system comprising an exhaust gas
`stream containing NOx, and a catalyst in accordance with claim 2
`effective for selective catalytic reduction of at least one component of
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`NOx in the exhaust gas stream.
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`32. The catalyst of claim 12, wherein the substrate comprises a
`high efficiency open cell foam filter.
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`33. An exhaust gas treatment system comprising the catalyst of
`claim 2 and further comprising a catalyzed soot filter.
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`34. The exhaust gas treatment system of claim 33, wherein said
`catalyzed soot filter is upstream of said catalyst.
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`35. The exhaust gas treatment system of claim 33, wherein said
`catalyzed soot filter is downstream of said catalyst.
`
`36. The exhaust gas treatment system of claim 33, further
`comprising a diesel oxidation catalyst.
`
`37. The exhaust gas treatment system of claim 36, wherein said
`diesel oxidation catalyst is upstream of said catalyst comprising a zeolite
`having the CHA crystal structure.
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`38. The exhaust gas treatment system of claim 36, wherein said
`diesel oxidation catalyst and catalyzed soot filter are upstream from said
`catalyst comprising a zeolite having the CHA crystal structure.
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`39. The catalyst of claim 3, wherein the catalyst is deposited on a
`honeycomb wall flow filter substrate to provide a catalyst article.
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`40. The catalyst of claim 3, wherein the catalyst is deposited on a
`honeycomb flow through substrate to provide a catalyst article.
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`41. The catalyst article of claim 40, wherein at least a portion of the
`flow through substrate is coated-with CuCHA adapted to reduce oxides of
`nitrogen contained in a gas stream flowing through the substrate.
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`42. The catalyst article of claim 41, wherein at least a portion of the
`flow through substrate is coated with Pt and CuCHA adapted to oxidize
`ammonia in the exhaust gas stream.
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`43. The catalyst article of claim 40, wherein at least a portion of the
`flow through substrate is coated with Pt and CuCHA. adapted to oxidize
`ammonia in the exhaust gas stream.
`
`44. The catalyst article of claim 39, wherein at least a portion of the
`wall flow substrate is coated with CuCHA adapted to reduce oxides of nitrogen
`contained in a gas stream flowing through the substrate.
`
`45. The catalyst article of claim 44, wherein at least a portion of the
`wall flow substrate is coated with Pt and CuCHA adapted to oxidize ammonia
`in the exhaust gas stream.
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`46. The catalyst article of claim 39, wherein at least a portion of the
`wall flow substrate is coated with Pt and CuCHA adapted to oxidize ammonia
`in the exhaust gas stream.
`
`47. An exhaust gas treatment system comprising the catalyst of
`claim 41 disposed downstream from a diesel engine and an injector to add a
`reductant to an exhaust gas stream from the engine.
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`48. An exhaust gas treatment system comprising the catalyst of
`claim 43 disposed downstream from a diesel engine and an injector to add a
`reductant to an exhaust gas stream from the engine.
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`49. An exhaust gas treatment system comprising the catalyst of
`claim 44 disposed downstream from a diesel engine and an injector to add a
`reductant to an exhaust gas stream from the engine.
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`50. An exhaust gas treatment system comprising the catalyst of
`claim 46 disposed downstream from a diesel engine and an injector to add a
`reductant to an exhaust gas stream from the engine.
`
`V.
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`CLAIM CONSTRUCTION
`
`37.
`
`I understand that during an IPR proceeding, claim terms are afforded
`
`their broadest reasonable construction.
`
`38.
`
`As a result, in rendering the opinions set forth in this declaration, I have
`
`considered what a person of ordinary skill in the art would consider to be the broadest
`
`reasonable construction of the ’662 patent’s claim terms.
`
`39.
`
`I also understand that claim terms are to be given their plain meaning
`
`unless it is inconsistent with the specification.
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`40. While I understand that it is Umicore’s view that certain claims of the
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`’662 patent are indefinite, I have not endeavored to address this issue in this
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`declaration. Further, while I discuss the meaning of certain claim terms below, in
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`doing so I do not mean to imply that it is my opinion that these terms (or any other
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`term of the ’662 patent’s claims) satisfy the requirements of 35 U.S.C. § 112.
`
`A.
`
`41.
`
`42.
`
`“Catalyst”
`
`All of the ’662 patent’s claims require a “catalyst.”
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`The term “catalyst” is generally understood to refer to a material that
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`facilitates or increases the rate of a chemical reaction without itself undergoing any
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`permanent change.
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`43.
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`I have reviewed the ’662 patent’s claims and was not able to clearly
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`identify what materials make up the claimed “catalyst.”
`
`44.
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`The specification, however, does provide that “a catalyst article
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`comprises a honeycomb substrate having a zeolite having the CHA crystal structure
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`deposited on the substrate.” (’662 patent, 2:56-58.) The patent goes on to explain
`
`that the zeolite has “an atomic ratio of copper to aluminum exceeding about 0.25 and
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`containing an amount of free copper exceeding ion-exchanged copper.” (’662 patent,
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`2:59-62.) Further, “[t]he catalyst may further comprise a binder.” (’662 patent, 2:67-
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`3:1.)
`
`45.
`
`In my opinion, this description in the specification along with the
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`generally understood meaning of the term indicates that the “catalyst” of the claims
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`can extend to a zeolite alone, or to the zeolite along with other materials such as the
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`substrate, free copper, and a binder. I have been asked to apply this understanding of
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`the claim term “catalyst” in assessing the prior art set forth in this petition.
`
`B.
`
`46.
`
` “[Z]eolite having the CHA crystal structure”
`
`All of the claims of the ’662 patent require a “zeolite having the CHA
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`crystal structure.”
`
`47.
`
`The specification explains that the “CHA crystal structure” is “defined
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`by the International Zeolite Association.” (’662 patent, 1:55-56.)
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`48.
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`“CHA” is the crystal framework type code assigned by the International
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`Zeolite Association (or “IZA”) to zeolite commonly known as “chabazite.”
`
`49.
`
`The IZA provides various different pertinent pieces of data for the CHA
`
`crystal framework. A copy of a summary data sheet made available by the IZA is
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`attached to this declaration as B.
`
`50.
`
`Among other things, the IZA data sheet specifies the general chemical
`
`formula of a chabazite crystal material: |Ca6 (H2O)40|[Al12Si24O72]-CHA. It also
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`provides structural data for the crystal itself. For instance, the CHA structure is
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`composed of “d6r” and “cha” composite building units, has a “framework” that is an
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`“AABBCC sequence of 6-rings,” and has channels that are approximately 3.8
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`Angstroms by 3.8 Angstroms in size. The IZA also provides a three-dimensional
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`drawing of the crystal structure.
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`51.
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`Thus, it is my understanding that a “zeolite with the CHA crystal
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`structure” as claimed by the ’662 patent refers to chabazite materials with the crystal
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`structure set forth in the IZA’s data sheet for the CHA framework.
`
`C.
`
`52.
`
`“[T]he catalyst effective to promote the reaction of ammonia with
`nitrogen oxides to form nitrogen and H2O selectively”
`Independent claim 1 of the ’662 patent requires that the “catalyst” be
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`“effective to promote the reaction of ammonia with nitrogen oxides to form nitrogen
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`and H2O selectively.”
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`53.
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`Based on my review of the prosecution and reexamination history of the
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`’662 patent, it appears that the Patent Owner may attempt to argue that this limitation
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`requires a catalyst with very specific performance characteristics.
`
`54.
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`For instance, during reexamination, the Patent Owner has indicated that
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`the catalysts of the ’662 patent have “excellent” catalytic activity at low temperatures,
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`including below 250°C, and maintain this activity even after exposure to extreme
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`hydrothermal conditions. (See ’662 reexam, 10/12/12 Respondent Brief, at 7-8.)
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`55.
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`I have reviewed the ’662 patent’s claims, and do not see any limitations
`
`that require the type of performance referenced by the Patent Owner.
`
`56.
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`Further, in my opinion the ’662 patent’s specification and prosecution
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`history do not define any claim term to require the level of performance referenced by
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`the Patent Owner, or state that the patent does not cover materials that do not
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`perform this way.
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`57.
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`In fact, based on my review of the specification, the ’662 patent provides
`
`examples of catalytic materials that employ a zeolite with the CHA crystal structure
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`and the claimed SAR and Cu/Al ratio, yet do not exhibit “excellent activity.” For
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`instance, the ’662 patent explains that the catalytic material of Example 1 includes a
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`zeolite with the CHA crystal structure that has a SAR of 30 and a Cu/Al ratio of 0.3.
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`(’662 patent, 10:46-59; Table 1.) While this material possesses the CHA crystal
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`structure, SAR, and Cu/Al ratio required by claim 1, the specification states that it
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`“did not show enhanced resistance to thermal aging.” (’662 patent, 11:22-25.)
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`D.
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`58.
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`“[I]on-exchanged copper” and “non-exchanged copper”
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`All of the ’662 patent’s claims require a catalyst that includes “copper.”
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`Claim 9 requires both “ion-exchanged copper” and “non-exchanged copper.”
`
`59.
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`In my opinion, the term “ion-exchanged copper,” as used in claim 9, has
`
`its ordinary meaning. “Ion-exchanged copper” is ordinarily understood to refer to
`
`copper ions that bind by ion exchange to exchange sites on the zeolite structure itself.
`
`60.
`
`In my opinion, the term “non-exchanged copper” in claim 9 also has its
`
`ordinary meaning. This is consistent with the ’662 patent’s specification. In
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`particular, the specification states that “non-exchanged copper” includes “free” or
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`“soluble” copper that is not “associated with the exchange sites in the structure of the
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`zeolite.” (’662 patent, 5:40-46.) The specification also states that “[u]pon calcination,
`
`the copper salt decomposes to CuO….” (’662 patent, 5:44-46.)
`
`61. With respect to the other terms in the ’662 patent’s claims, I have
`
`applied the plain and ordinary meaning of those claim terms, when comparing the
`
`claims to the prior art.
`
`VI.
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`INVALIDITY ANALYSIS
`
`62.
`
`In my opinion, claims 1-24, 30, and 32-50 of the ’662 patent are all
`
`unpatentable and invalid as obvious over the prior art.
`
`63.
`
`I understand that a patent claim is unpatentable and invalid if the subject
`
`matter of the claim as a whole would have been obvious to a person of ordinary skill
`
`in the art of the claimed subject matter as of the time of the invention at issue. I
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`understand that the following factors must be evaluated to determine whether the
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`claimed subject matter is obvious: (1) the scope and content of the prior art; (2) the
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`difference or differences, if any, between each claim of the patent and the prior art;
`
`and (3) the level of ordinary skill in the art at the time the patent was filed. Unlike
`
`anticipation, which allows consideration of only one item of prior art, I understand
`
`that obviousness may be shown by considering more than one item of prior art.
`
`Moreover, I have been informed and I understand that so-called objective indicia of
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`non-obviousness, also known as “secondary considerations,” like the following are
`
`also to be considered when assessing obviousness: (1) commercial success; (2) long-
`
`felt but unresolved needs; (3) copying of the invention by others in the field; (4) initial
`
`expressions of disbelief by experts in the field; (5) failure of others to solve the
`
`problem that the inventor solved; and (6) unexpected results. I also understand that
`
`evidence of objective indicia of non-obviousness must be commensurate in scope
`
`with the claimed subject matter.
`
`A.
`
`64.
`
`Person of Ordinary Skill in the Art
`
`I understand that a patent must be written such that it can be
`
`understood by a “person of ordinary skill” in the field of the patent.
`
`65.
`
`I understand that this hypothetical person of ordinary skill in the art is
`
`considered to have the normal skills and knowledge of a person in a certain technical
`
`field, as of the time of the invention at issue. I understand that factors that may be
`
`considered in determining the level of ordinary skill in the art include: (1) the
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`education level of the inventor; (2) the types of problems encountered in the art; (3)
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`the prior art solutions to those problems; (4) rapidity with which innovations are
`
`made; (5) the sophistication of the technology; and (6) the education level of active
`
`workers in the field. I also understand that “the person of ordinary skill” is a
`
`hypothetical person, who is presumed to be aware of the universe of available prior
`
`art.
`
`66.
`
`In my opinion, in February 2007, a person with ordinary skill in the art
`
`with respect to the technology disclosed by the ’662 patent would have at least a
`
`Master’s degree in chemistry or a related discipline, and have knowledge of the
`
`structure and chemistry of molecular sieves like zeolites, including factors that impact
`
`their stability and activity.
`
`67.
`
`Based on my experience and education, I consider myself (both now and
`
`as of February 2007) to be a person of at least ordinary skill in the art with respect to
`
`the field of technology implicated by the ’662 patent
`
`B.
`
`68.
`
`Scope and Content of the Prior Art
`
`The scope and content of the prior art as of February 2007 would have
`
`broadly extended to references relating to catalytic materials that can be used to
`
`reduce nitrogen oxides. This includes references relating to the structure and
`
`properties of zeolite catalysts, the metal loading of zeolite catalysts, and the use of
`
`catalytic materials in various different processes.
`
`69.
`
`In my opinion, one of ordinary skill in the art as of February 2007 would
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`have considered Zones, Maeshima, Patchett ’843, and Patchett ’514 to be within the
`
`same technical field as the subject matter set forth in the ’662 patent. Further, all of
`
`these references would be considered highly relevant prior art to the claims of the
`
`’662 patent.
`
`C.
`
`70.
`
`Zones and Maeshima Render Claims 1-11 and 30 Obvious
`
`In my opinion claims 1-11 and 30 of the ’662 patent are obvious over
`
`Zones and Maeshima.
`
`71.
`
`Zones indicates on its face that it issued March 23, 2004. Because this is
`
`more than one year before February 27, 2007, I understand that Zones is prior art to
`
`the ’662 patent pursuant to 35 U.S.C. § 102(b).
`
`72. Maeshima indicates on its face that it issued September 6, 1977. Because
`
`this is more than one year before February 27, 2007, I understand that Maeshima is
`
`prior art to the ’662 patent pursuant to 35 U.S.C. § 102(b).
`
`73. While Zones served as a basis of rejection both during prosecution and
`
`reexamination of the ’662 patent, Maeshima is not listed on the face of the ’662 patent
`
`as a “Reference[] Cited.” Maeshima also does not appear to have been cited during
`
`reexamination. As a result, I understand that the combination of Zones and
`
`Maeshima was not considered by the examiner.
`
`74.
`
`Zones relates to “aluminosilicate” zeolites, including