Case: 17-1425
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`Document: 78-1
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`Pagezl
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`Filed: 07/17/2018
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`(1 of 20)
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`NOTE: This disposition is nonprecedential.
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`(Hutton étates QEnurt of gppealz
`
`for the jfeheral Qtirtuit
`
`BASF CORPORATION,
`Appellant
`
`V.
`
`ANDREI IANCU, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`
`AND DIRECTOR OF THE UNITED STATES
`
`‘ PATENT AND TRADEMARK OFFICE,
`‘Intervenor
`
`2017-1425, 2017-1426, 2017-1427, 2017-1428
`
`Appeals from the United States Patent and Trade-
`mark Office, Patent Trial and Appeal Board in Nos.
`IPR2015-01121,
`IPR2015-01123,
`IPR2015-0112’1,
`IPR2015-01125.
`
`Decided: July 17, 2018
`
`ANISH R. DESAI, Weil, Gotshal & Manges LLP, New
`York, NY, argued for appellant. Also represented by
`BRIANE. FERGUSON, MEGAN WANTLAND, Washington, DC.
`
`MEREDITH HOPE SCHOENFELD, Office of the Solicitor,
`United States Patent and Trademark Office, Alexandria,
`
`

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`Case: 17-1425
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`Documentz78-1
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`Page:2
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`2
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`BASF CORPORATION V. IANCU
`
`VA, argued for intervenor. Also represented by NATHAN
`K. KELLEY, KAKOLI CAPRIHAN, THOMAS W. KRAUSE,
`FARHEENA YASMEEN RASHZEED.
`
`Before REYNA, LINN, and CHEN, Circuit Judges.
`
`CHEN, Circuit Judge.
`
`SUMIWARY ’
`
`Appellant BASF Corporation appeals from four Pa-
`tent Trial and Appeal Board final written decisions ren-
`dering unpatentable claims of
`its US. Patent Nos.
`7,601,662 and 8,404,203 (the Patents). The Patents claim
`a special compound that can break down nitrogen oxide
`emissions in high temperature combustion processes.1
`IPR2015-01121 and IPR2015-01125 involved the ’662
`
`Patent; IPR2015-01123 and IPR2015-01124 involved the
`’203 Patent.
`
`While this appeal was pending, the Supreme Court
`held in SAS Institute, Inc. v. Iancu that the Board is
`statutorily prohibited from instituting an inter partes
`review on a subset of the petitioned claims.
`138 S. Ct.
`1348, 1352—54 (2018). As with the inter partes review
`(IPR) in SAS, the two final written decisions on the ’662
`Patth resulted from partial institution decisions. BASF
`argues that this court lacks jurisdiction over these deci-
`sions because the appealed decisions are not final, and for
`that reason, asks this court to vacate the allegedly non-
`final Board decisions; the Patent and Trademark Office
`(the Director) disagrees. We recently held in PGS Geo-
`physical AS 0. Iancu that this court has jurisdiction under
`
`The two patents share the same specification and,
`1
`for purposes of analysis in this appeal, claim the same
`subject matter.
`
`

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`BASF CORPORATION V. IANCU
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`3
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`891 F.3d 1354, 1359—63
`circumstances such as here.
`(Fed. Cir. 2018). We thus reject BASF’s jurisdictional
`
`argument.
`
`As to the merits, we conclude that substantial evi-
`dence
`supports
`the factual
`findings underlying the
`Board’s determination that all of the claims at issue are
`
`unpatentable as obvious over prior art US. Patent No.
`6,709,644 (Zones) in View of US. Patent No. 4,046,888
`(Maeshima). Thus, we affirm.
`
`BACKGROUND
`
`A. The Technology
`
`The Patents claim a zeolite catalyst, a compound de-
`signed to break down nitrogen oxide (NO) emissions in
`automobile diesel engine exhaust. The breakdown pro-
`cess is called “selective catalytic reduction” or SCR.
`
`The claimed zeolite is arranged into a special tetrahe-
`dral framework of alumina and silica molecules, called
`the CHA framework, depicted below.
`cm
`
`
`
`Appx3186; Appellant’s Br. at 9. Metals can be introduced
`into the zeolite by replacing some of the aluminum with
`metal cations, such as copper (Cu2+). The claimed zeolite
`is such a copper-based catalyst.
`'The amount of added
`copper is called the ion exchange ratio and can be quanti-
`fied as the ratio of added copper to the aluminum in the
`zeolite (Cu/Al ratio).
`
`The patented invention has several characteristics,
`the combination of which BASF claims allowed for greater
`
`

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`BASF CORPORATION V. IANCU
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`hydrothermal and thermal stability of the catalyst, mak-
`ing it commercially viable to catalyze reduction of NO
`emissions in combustion processes:
`0 A CHA framework;
`0 A high silicon to aluminum molar ratio (15 to 150);
`o A high copper to aluminum atomic ratio (0.25 to 1);
`and
`
`0 An ability to selectively catalyze NO into nitrogen
`and water in the presence of ammonia (NH3), a
`process referred to herein'as ammonia SCR.
`The last limitation (ammonia SCR) is the most relevant to
`BASF’s appeal.
`
`The following are the representative claims from the
`Patents identified by BASF.
`
`1. A catalyst comprising: an aluminosilicate zeo-
`lite having the 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 about 0.25 to about 1, the catalyst effective
`to promote reaction of ammonia with nitrogen ox-
`ides to form nitrogen and H20 selectively.
`
`’662 Patent, Inter Partes Reexamination Certificate (Cl),
`col. 1 l. 56—col. 2 l. 3.
`
`14. {A process for the reduction of Oxides of nitro-
`gen contained in a gas stream in the presence of
`oxygen wherein said process comprises contacting
`the gas stream with a catalyst comprising a zeo-
`lite having the CHA crystal structure and a mole
`ratio of silica to alumina from about 15 to about
`
`100 and an atomic ratio of copper to aluminum
`from about 0.25 to about 0.50],2 wherein the pro-
`
`2 Dependent claim 14 depends from claim 1. The
`limitations of claim 1 are shown in the brackets.
`
`

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`‘BASF CORPORATION v. 1Ai~ICU '
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`-
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`~
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`"
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`7'
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`5
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`cess further comprises adding a reductant to the
`
`gas stream.
`
`15. The process of claim 14, wherein the reductant
`comprises ammonia or an ammonia precursor.
`
`’203 Patent col. 23 11. 51—54.
`
`B. Relevant Board Proceedings
`
`\
`
`In IPR2015-01121 and IPR2015-01123, Petitioner
`Umicore AG & Co. KG (which is no longer a party to this
`proceeding due to settlement) petitioned for, and the
`Board instituted, inter partes reviews of claims 1—8, 12—
`24, 30, and 32—50 of the ’662 Patent and claims 1—31 of
`the ’203 Patent under 38 U.S.C. § 103 for Obviousness
`over the combination of Zones and Maeshima.3
`
`Zones undisputedly discloses all elements of the pa-
`tented invention, other
`than the specific copper-to-
`aluminum ratio required by the claims and whether the
`zeolite effectively catalyzes reduction via ammonia SCR.
`Zones discusses methods for making and using a particu-
`lar synthetic zeolite with the CHA structure (SSZ-62).
`This CHA zeolite has a silica-to-alumina ratio ranging
`fi'om 20—50, as encompassed by the Patents’ claims.
`Zones, col. 1 11. 32—35, col. 2 11. 30—38. Zones’ zeolite may
`
`3 A third prior art reference, US. Patent Applica-
`tion Publication No. US 2006/0039843 A1 (Patchett), was
`used to address limitations relating to the emissions
`treatment system found in some of the instituted claims.
`BASF does not appeal any of the Board’s findings regard-
`ing this reference. So, in this decision, we combine analy-
`sis Of the claims rendered Obvious by Maeshima, Zones,
`and Patchett with the analysis of the claims rendered
`obvious by Maeshima and Zones alone.
`
`

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`“contain a metal or metal ions (such as .
`col. 1 ll. 61—65.
`
`.
`
`. copper).” Id. at
`
`Maeshima discloses the claimed copper-to-aluminum
`ratio. Maeshima teaches zeolite catalysts that can be
`used to reduce the concentration of nitrogen oxides in
`exhaust gas, listing a CHA zeolite as one of nine such
`catalysts. Maeshima, col. 1 11. 8—10, col. 3 11. 33—43, col. 4
`11. 3—35. Maeshima specifies that copper is an “especially
`preferred” metal to add to its zeolites and that standard
`copper loading rates should be employed, resulting in a
`copper-to-aluminum ratio falling within the range of the
`challenged claims. Id. at col. 4 11. 51—54, col. 6 ll. 10—17.
`
`The point of contention in this appeal is the prior art’s
`disclosure of the last claimed limitation: ammonia SCR.
`
`Zones discloses using a copper-based CHA zeolite for
`the “reduction of oxides of nitrogen contained in a gas
`stream in the presence of oxygen.” Zones, col. 1 ll. 55—56,
`col. 8 ll. 16—17. Zones Inventor Dr. Stacey Zones stated
`that this phrase “refers to and teaches a number of differ-
`ent reactions, including .
`.
`. the selective catalytic reduc-
`tion of NO in the presence of an ammonia reducing agent
`and oxygen.” Appx3033. Umicore expert Dr. Lercher
`testified to the same. Appx3389 (36:16—37:25). BASF
`agreed in its Patent Owner’s Preliminary Response that
`“reduction of oxides of nitrogen” in Zones “encompaooco a
`number of reactions,” including ammonia SCR, and again
`agreed in oral argument before the Board that the ammo-
`nia SCR reaction is “encompassed within that phrase.”
`Appx54l, n.5; Appx202 (4616-23).
`
`Maeshima explains that zeolite catalysts can be used
`with either hydrocarbons or ammonia as the reducing
`agent. Maeshima, col. 1 11. 15—21, col. 2 11. 4—8. Maeshi-
`ma teaches that ammonia SCR is preferred because less
`of the reducing agent can be used and “nitrogen oxides
`can be removed at a high ratio.” Id. at col. 1 11. 21—24.
`
`

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`In its final written decisions in these two IPRs involv-
`
`the Board
`ing the Zones and Maeshima combination,
`found that the “Patent Owner acknowledges that the
`limitations in the claims were well-known in the art.”
`
`Final Written Decision, IPR2015-01121, at 9.4 The Board
`further found that “[a]lthough Zones does not explicitly
`list specific reactions for the reduction of oxides of nitro-
`gen, such as the use of CHA zeolites for ammonia SCR,
`the evidence of record suggests that a person of ordinary
`skill in the art would have understood the reference to the
`
`to include
`[in Zones]
`‘reduction of oxides of nitrogen’
`ammonia SCR of NOx.” Id. at 14. The Board also found
`
`that Maeshima discloses “‘a selective reduction method in
`
`which ammonia is used as the reducing [a]gent”’ and
`teaches “metal-exchanged zeolites that are active for the
`NH3 SCR of NOx.’”
`Id. at 14—15: The Board thus con-
`cluded that a skilled artisan would have been motivated
`
`to combine the two references to arrive at the claimed
`
`invention, based on evidence from “the priorart refer-
`ences themselves [and] the knowledge of one of ordinary
`skill in the art” and that the “combined teachings of Zones
`and Maeshima disclose using a high SAR CHA zeolite for
`ammonia SCR.” Id. at 16 (citations omitted). According-
`ly, the Board found all instituted claims unpatentable as
`obvious over Zones and Maeshima.
`
`the Board
`In IPR2015-01124 and IPR2015-01125,
`rendered obvious the same claims of both Patents based
`
`on a combination of Maeshima and US. Patent No.
`4,503,023 (Breck), with US. Patent'Application Publica-
`
`For simplicity, this opinion cites only to the Board
`4
`institution decision, final written decision, and the par-
`ties’ briefing in IPR2015-01121 on the ’662 Patent. The
`same issues and analysis apply to IPR2015-01 123 on the
`’203 Patent.
`
`

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`tion No. US 2006/0039843 A1 (Patchett) for certain de-
`pendent claims. BASF also appeals those decisions here,
`but we do not reach those issues because we agree with
`the Board that the claims are unpatentable over Zones
`and Maeshima.
`
`DISCUSSION
`
`A. Jurisdiction
`
`This court has jurisdiction under 35 U.S.C. §§ 141,
`319, and 28 U.S.C. § 1295(a)(4)(A). In SAS Institute, Inc.
`v. Iancu, the Supreme Court held that it was statutorily
`erroneous for the Board to limit the scope of inter partes
`review proceedings by instituting an IPR for only some,
`but not all, petitioned-for claims. 138 S. Ct. at 1352—54.
`The SAS decision has implications in this case.
`
`Of the four inter partes review final written decisions
`on appeal in this case, the two involving the ’662 Patent
`are the result of partial institutions: IPR2015-01121 and
`IPR2015-01125. On April 27, 2018, this court issued a
`letter to BASF and the Director asking the parties to be
`prepared to address the impact of SAS on the disposition
`of this appeal during oral argument. On May 3, 2018,
`this court heard oral argument in this case. Both BASF
`and the Director stated that this case should not be
`
`affected by SAS. Oral Arg. 1:20=50, 7:55—8:01. Neither
`party requested any relief based on SAS. Id. at 7 : 10—7z20,
`7:55—8:01. On May 4, 2018, this court issued a second
`letter directing BASF and the Director to file simultane-
`ous supplemental briefs fully explaining the legal basis
`for their positions. The order asked the parties to discuss
`“(i) whether this court has jurisdiction over these appeals
`under 28 U.S.C. § 1295(a)(4)(A); and (ii) whether the
`Board’s final written decisions should be deemed ultra
`
`,
`
`vires in light of SAS and, if so, what the consequence of
`such a conclusion would be for what this court may do in
`these appeals, considering that no party has requested
`
`

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`9
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`relief based on SAS.” Order, Nos. 2017-1425, 2017-1426,
`2017-1427, 2017-1428 (Fed. Cir. May 4, 2018).
`
`In the supplemental briefing, the Director maintained
`that this Court had jurisdiction and further argued that
`BASF and Umicore had waived any right to SAS relief
`because neither party raised it before the Board or in
`initial briefing before this court. BASF in its briefing,
`however, reversed its position from oral argument.
`
`BASF now asks this court to vacate and remand the
`two ’662 Patent
`IPR appeals on jurisdictional SAS
`grounds.5 Specifically, BASF argues that “the Board’s
`decisions with respect
`to at least the 662 patent are
`improper, i.e., ultra vires, as they‘are not final decisions
`as required by § 318(a)” and as such, “appellate review by
`this Court of those decisions pursuant to § 319 is no
`longer available.” Appellant’s Supp. Br. at 8. Therefore,
`BASF asks this Court to “dismiss the [’662 IPR appeals]
`as moot” and “direct the Board to vacate those decisions
`on remand” on the sole ground that “reviewable, final
`written decisions by the Board do not exist” in the two
`’662 IPR proceedings. Appellant’s Supp. Br. at 9, 11.
`Importantly, BASF does n_ot seek the Board’s evaluation
`of the non-instituted claims.
`
`We find BASF’s request substantively different from
`parties’ requests 1n cases where this court has vacated a
`Board decision and remanded on an SAS issue.
`In those
`cases, at least one of the parties sought further work from
`the Board on non-instituted claims/grounds. See, e.g.,
`Adidas AG v. Nike, Inc., 2018 WL3213007 (Fed. Cir. July
`
`Petitioner Umicore is no longer a party to the
`5
`case, so vacating and remanding would result in a pro-
`ceeding before the Board with no petitioner. Oral Arg.
`6250—7 :07.
`
`

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`2, 2018) (remanding where Adidas asked for “the Board to
`issue final written decisions addressing ground 2”); Ulthe-
`ra, Inc. v. DermaFocus LLC, No. 2018-1542, slip op. at 3
`(Fed. Cir. May 25, 2018) (remanding where Ulthera asked
`for “the Board to issue a final written decision with re-
`spect to the patentability of claims 5 and 10 of the ’559
`patent”). Here, BASF does not address the non-instituted
`claims in the arguments section of its brief, nor explain
`why it (as the Patent Owner) is harmed by a final Board
`decision based on a partial institution, nor provide any
`reasoning for vacating and remandinge,r on all claims
`versus rem’anding for consideration on just
`the non-
`instituted claims. In short, BASF provides no substantive
`reason to warrant remand.6 It argues only jurisdictional
`deficiency.
`
`For this important reason, BASF’s request is con-
`trolled by PGS Geophysical AS 0. Iancu, where this court
`
`Examples fiom other cases of such substantive
`6
`reasons include:
`(1) potential interaction between the
`analysis of the instituted and non-instituted claims, thus
`meriting having the Board address all of them together in
`a single decision, and (2) inefficiency in doing a piecemeal
`form of review, in which this court WOuld review a first
`batch of claims from a first Board decision, and then
`review a second batch from a later Board decision, espe-
`cially when no merits briefing had occurred and there
`were implications of estoppel in parallel district proceed-
`ings. See, e.g., Polaris Indus. Inc. 0. Arctic Cat, Inc., 742
`Fed. Appx. 948, 949—50 (Fed. Cir. 2018) (where this court
`granted a patent owner’s remand request for the first
`substantive reason); Baker Hughes Oilfield v. Smith Int’l,
`Inc., Nos., 2018-1754, -1755, slip op. at 4—5 (Fed. Cir. May
`30, 2018) (where this court granted a petitioner’s remand
`request for the second substantive reason).
`
`

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`1 1
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`rejected the jurisdictional challenge and proceeded to
`review the merits of the Board’s decision. This case—like
`PGS Geophysical—is a straight challenge to this court’s
`authority to hear the appeal.
`In PGS Geophysical, we
`specifically held that “the combination of
`the non-
`institution decisions and the final written decisions on the
`instituted claims and grounds ‘terminated the IPR pro-
`ceeding[s]”’ such that
`those decisions were final and
`reviewable for purposes of this court’s jurisdiction. 891
`F.3d at 1361 (citing Arthrex, Inc. v. Smith & Nephew, Inc.,
`880 F.3d 1345, 1348 (Fed. Cir. 2018)). The same reason-
`
`ing applies here.
`
`This court further held in PGS Geophysical that a
`partial institution error is not one we are required to “act
`on in the absence of an appropriate request for relief on
`that basis.” Id. at 1362 (emphasis added). Such a request
`should include a substantive claim of harmful error,
`which is absent here.
`Id. (“Moreover, the Supreme Court
`in SAS characterized the error at issue here as an error
`under 5 U.S.C. § 706, but errors under that provision are
`generally subject to a traditional harmless-error analysis,
`with challengers of the agency action having the burden
`of showing prejudice”) (citing Shinseki v. Sanders, 556
`US. 396, 406, 409 (2009) and Suntec Indus. Co. v. United
`States, 857 F.3d 1363, 1368 (Fed. Cir. 2017)). BASF has
`not. argued prejudice at all; it does not request to have the
`Board address the non-instituted claims. Thus, we see no
`reason to vacate and remand on the ’662 Patent IPR
`
`appeals.
`
`Instead, we apply the reasoning laid out in PGS Geo-
`physical,
`reject BASF’s position that
`this court
`lacks
`jurisdiction over the ’662 Patent IPR appeals, decline to
`vacate and remand on SAS grounds, and continue to the
`merits of the appeal in all four IPRs.
`‘
`
`B. Obviousness
`
`As explained above, the Board found all instituted
`
`

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`claims of the Patents unpatentable as obvious over the
`combination of Zones and Maeshima.
`
`Obviousness is a question of law based on underlying
`facts. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
`1373 (Fed. Cir. 2016). We review the Board’s legal deter-
`mination of obviousness de novo and its underlying factu-
`al findings for substantial evidence.
`Id.
`Substantial
`evidence is “‘such relevant evidence as a reasonable mind
`might accept as adequate to support a conclusion.”
`Arendi S.AR.L. U. Apple Inc., 832 F.3d 1355, 1360—61
`(Fed. Cir. 2016) (citation omitted).
`
`BASF challenges the Board’s Zones/Maeshima deci-
`sions on two grounds:
`(1) the Board erroneously “fill[ed]
`in” the ammonia SCR element of the invention on bases
`
`the
`from what Umicore petitioned, and (2)
`different
`Board’s finding that a skilled artisan would have under-
`stood the Zones “reference to the ‘reduction of oxides of
`nitrogen’ to include ammonia SCR of NOX” is not support-
`ed by substantial evidence.7 We reject both challenges.
`
`1. BASF Had Suflicient Notice of the Board’s Basis for
`
`Disclosure of the Ammonia SCR Limitation
`
`As to the first ground, BASF argues that the “sole”
`theory of obviousness (for this prior art combination)
`
`The Director argues that BASF waived any argu-
`7
`ment as to the ammonia limitation. We do not agree.
`BASF made the argument regarding the ammonia limita-
`tion in its Patent Owner Response, under its lack of
`motivation to combine Zones and Maeshima argument.
`Appx826; see also Appx850—51. BASF also raised the
`issue at oral argument
`in front of the Board.
`See
`Appx201—O3v (45:5—47214). And the Board even credited
`BASF with this argument in its Decision. Final Written
`Decision, IPR2015-01121, at 12.
`
`

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`13
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`advanced in Umicore’s petitions was premised on Zones
`explicitly teaching the use of ammonia SCR. Appellant’s
`Br. at 33; Oral Arg. 17:33—56. While the Board found that
`“Zones does not explicitly list specific reactions for the
`reduction of oxides of nitrogen,” it also 'found that “a
`person of ordinary skill in the art wOuld have understood
`the [Zones] reference to the ‘reduction of oxides of nitro-
`gen’ to include ammonia ,SCR of NOx.” Final Written
`Decision, IPR2015-01121, at 14 (citations omitted). BASF
`argues'that the Board’s finding that one of skill in the art
`would generally understand the phrase “reductinn of
`oxides of nitrogen” to include ammonia SCR is a different
`and new argument, compared to Umicore’s argument that
`Zones specifically disclosed ammonia SCR. We find that
`this argument lacks merit.
`
`Umicore’s petition was not based solely on Zones
`teaching the use of ammonia SCR. BASF even admitted
`as much. Oral Arg. 18:28—57. For example, in its Peti-
`tion, Umicore also relies on Maeshima to supply the
`ammonia limitation, stating that “Maeshima relates .
`.
`.
`‘contacting the .
`.
`. gaseous mixture with a catalyst in the
`presence of ammonia to reduce the nitrogen oxides selec-
`tively.” Appx292 (quoting Maeshima, col. 2 11. 4—8).
`Umicore further articulated in its petition that the com-
`bination of Zones and Maeshima would supply the ammo-
`nia SCR limitation because “[a]s taught by Zones, the
`Zones catalyst is useful for reducing oxides of nitrogen”
`and Maeshima “expressly provides that its catalysts can
`be used in an SCR process to selectively reduce nitrogen
`oxides in a gas [ammonia] stream containing oxygen.”
`Appx294. Umicore’s petition relies on Zones, Maeshima
`
`

`

`Case: 17-1425
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`Document: 78-1
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`Page: 14
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`Filed: 07/17/2018
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`BASF CORPORATION v. IANCU
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`and the combination of the two for disclosure of the am-
`monia SCR limitation.8
`
`the Board relied on
`In its Institution Decision,
`Maeshima for “disclos[ing] [a CHA zeolite] as a suitable
`catalyst for the selective catalytic reduction of nitrogen
`oxides in the presence of ammonia.” Appx742. But the
`Board articulated an additional basis, one that it ended
`up relying on in the final written decision as well:
`that
`the reference in Zones to the “reduction of oxides of nitro-
`gen” would be understood by a person of Ordinary skill in
`the art to encompass/include ammonia SCR. Appx741. In
`support of this understanding, the Board cited to “the ’662
`patent, Zones, Maeshima, and other prior art references”
`which suggest that copper-based CHA zeolite catalysts
`“were known to be used for SCR of nitrogen oxides in the
`presence of ammonia.” Id. Under these circumstances,
`we are satisfied that BASF was given proper notice and
`opportunity to be heard in the proceedings below as to
`possible grounds for why the prior art taught the ammo-
`nia SCR limitation. See Genzyme Therapeutic Prods. Ltd.
`P’ship. v. Biomarin Pharm. Inc.,'825 F.3d 1360, 1366
`(Fed. Cir. 2016); Securus Techs., Inc. v. Glob. Tel*Link
`Corp., 685 F. App’x 979, 985 (Fed. Cir. 2017).
`
`Moreover, not only did BASF have a full Opportunity
`to address these grounds in the Patent Owner Response,
`
`BASF argues that relying on Maeshima requires
`8
`an Obviousness
`theory where petitioner starts with
`Maeshima and modifies it with the teaching in Zones.
`Appellant’s Reply Br. 8, 18; Oral Arg. 19:02—19:40, 33:51— ’
`34:04. We disagree because the ammonia SCR limitation
`does not seem to be unique to low or high SAR zeolites.
`Rather, the evidence in the record indicates that ammonia
`SCR is a generally well-known reaction for the reduction
`Of oxides in nitrogen to one of skill in the art. See infra.
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`Case: 17-1425
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`Document: 78-1
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`Page: 15
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`Filed: 07/17/2018
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`it also had the opportunity to address the issue at oral
`argument before the Board, where both Umicore and the
`Board reiterated their grounds for the ammonia SCR
`limitation. Umicore brought up its petitioned Maeshima-
`based argument, Appx256z6—7, and BASF admitted as
`much. Appx19823—11. Umicore also clearly stated that
`while there was “no NH3 written in” Zones, “the reduction
`of oxides of nitrogen” language in Zones would have been
`understood by a one of skill in the art to include reduction
`in the presence of ammonia. Appx254—56. The Board
`specifically questioned BASF on this basis. Appx197:11—'
`24.
`In answering, BASF did not argue lack of notice or
`opportunity to respond;
`instead, BASF reiterated the
`point it made in its Preliminary Response that Zones does
`not disclose ammonia SCR specifically, but that ammonia
`SCR would be encompassed by ‘the phrase. Appx202
`(46:6—23); Appx541, n.5.
`
`Given the bases articulated in Umicore’s petition, the
`Board’s
`Institution Decision, and questions fiom the
`Board as well as statements made by both parties at oral
`argument in front of the Board, we find that BASF was
`sufficiently on notice of the grounds on which the Board’s
`final decision relied as to the ammonia SCR limitation.
`
`There is no due process error here.
`
`2. Substantial Evidence Supports the Board’s Finding
`that a Skilled Artisan Would Understand Zones to Dis-
`close Ammonia SCR
`
`BASF’s next argument is that the Board erred in find-
`ing that “the evidence of record suggests that a person of
`ordinary skill in the art would have understood the [Zones
`reference] to the ‘reduction of oxides of nitrogen’ to in-
`clude ammonia SCR of NOx.” Final Written Decision,
`
`IPR2015-01121, at 14.
`
`the Board cited to three
`In support of its finding,
`sources of evidence: (1) the Declaration of Zones inventor
`Dr. Stacey Zones submitted during reexamination of the
`
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`Case217-1425
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`Document: 78-1
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`Page: 16
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`BASF CORPORATION V. IANCU
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`’662 patent, where she states that the phrase “reduction
`of oxides of nitrogen contained in a gas stream in the
`presence of oxygen” in the Zones patent specification
`“refers to and teaches a number of different reactions,
`including .
`.
`. the selective catalytic reduction of NO in the
`presence of an ammonia reducing agent and oxygen,”
`Appx3033; (2) the cross examination testimony of Umi-
`core’s expert, Dr. Lercher, where he gives examples of NO
`reduction
`reactions,
`including
`ammonia
`reduction,
`Appx3389 (36:16—37:25); and (3) BASF’s acknowledge-
`ment at the Board oral hearing, where BASF states that
`different reactions, including ammonia SCR, are “encom-
`passed within th[e] phrase [reduction of oxides of nitro-
`gen].” Appx202 (46:6—23).
`
`There are also multiple other sources of evidence that
`indicate ammonia SCR was well known to one of skill in
`the art. Maeshima cites, and even promotes, ammonia
`SCR. Maeshima, col. 1 11. 21—24, col. 211. 4—8. Thé ’662
`and ’203 patent specifications state that “[b]oth synthetic
`and natural zeolites and their use in promoting certain
`reactions,
`including the selective reduction ,of nitrogen
`oxides with ammonia in the presence of oxygen, are well
`known in the art.” ’662 Patent col. 1 11. 26—29; ’203 Patent
`col.
`1 ll. 30—34. And BASF itself acknowledged that
`“reduction of oxides of nitrogen” in Zones encompasses
`ammonia SCR. Appx5541, n.5 (Patent Owner Prelimi-
`nary Response); Oral Arg. 24:10—16.
`
`BASF argues that there is a meaningful difference be-
`tween the phrase “reduction of oxides in nitrogen” that
`encompasses ammonia SCR versus a specific disclosure of
`ammonia SCR. We do not agree. Multiple experts, both
`parties, other prior art, and the Patents’ specifications
`themselves are evidence that one of skill in the art would
`have understood the phrase as disclosing a limited num-
`ber of reaction types, including ammonia SCR. We find
`that substantial evidence supports the Board’s finding
`that one of skill in the art would have understood. the
`
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`Document: 73-1
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`phrase “reduction of oxides in nitrogen” in Zones to in-
`clude and disclose ammonia SCR as claimed by the Pa-
`tents.
`'
`
`In conclusion, we reject both grounds of appeal raised
`by BASF against the Board’s finding of obviousness under
`the Zones/Maeshima combination. Because the combina—
`tion renders Obvious all instituted and appealed claims,
`we do not address BASF’s other grounds of appeal and
`affirm.
`
`AFFIRMED _
`
`

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`Case: 17-1425
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`Document: 78-2
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`Page: 1
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`Filed: 07/17/2018
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`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`NOTICE OF ENTRY OF
`
`‘
`
`JUDGMENT ACCOMPANIED BY OPINION
`
`OPINION FILED AND JUDGMENT ENTERED: 07/17/2018 _
`
`The attached opinion announcing the judgment of the court in your case was filed and judgment was entered on
`the date indicated above. The mandate will be issued in due course.
`
`Information is also provided about petitions for rehearing and suggestions for rehearing en banc. The questions
`and answers are those frequently asked and answered by the Clerk's Office.
`
`Costs are taxed against the appellant under Rule 39. The party entitled to costs is provided ‘a bill of costs form
`and an instruction sheet with this notice.
`
`The parties are encouraged to stipulate to the costs. A bill of costs will be presumed correct in the absence of a
`timely filed objection.
`
`Costs are payable to the party awarded costs. If costs are awarded to the government, they should be paid to
`the Treasurer of the United States. Where costs are awarded against the government, payment should be made to
`the person(s) designated under the governing statutes, the court's orders, and the parties' written settlement
`agreements In cases between private parties, payment should be made to counsel for the party awarded costs or, if
`the partyIs not represented by counsel, to the party pro se Payment of costs should not be sent to the court. Costs
`should be paid promptly.
`
`If the court also imposed monetary sanctions, they are payable to the opposing party unless the court's opinion
`provides otherwise. Sanctions should be paid in the same way as costs.
`
`Regarding exhibits and visual aids: Your attention is directed Fed. R. App. P. 34(9) which states that the clerk
`may destroy or dispose of the exhibits if counsel does not reclaim them within a reasonable time after the clerk gives
`notice to remove them. (The clerk deems a reasonable time to be 15 days from the date the final mandate is issued.)
`
`FOR THE COURT
`
`ls/ Peter R. Marksteiner
`
`Peter R. Marksteiner
`Clerk of Court'
`
`17—1425, 17-1426, 17-1427, 17-1428 - BASF Corporation v. lancu
`United States Patent and Trademark Office, Case Nos. lPR2015-O1121, lPR2015-O1123,,lPR2015-01124, lPR2015-
`01125
`.
`
`