UNITED STATES PATENT AND TRADEMARK OFFICE
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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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`v.
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`BASF CORPORATION
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`Patent Owner.
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`IPR2015-01121
`U.S. Patent 7,601,662
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`PATENT OWNER’S MOTION FOR LATE SUBMISSION OF
`SUPPLEMENTAL INFORMATION
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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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`v.
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`BASF CORPORATION
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`Patent Owner.
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`IPR2015-01121
`U.S. Patent 7,601,662
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`PATENT OWNER’S MOTION FOR LATE SUBMISSION OF
`SUPPLEMENTAL INFORMATION
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`IPR2015-01121
`U.S. Patent No. 7,601,662
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`INTRODUCTION
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`Petitioner (“Umicore”) has argued that the copper chabazite (“CuCHA”)
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`I.
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`catalyst claimed in the 662 Patent is obvious based on the combination of prior art
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`describing the synthesis of a high SAR synthetic chabazite zeolite and the use of
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`low SAR copper-exchanged zeolites for the selective catalytic reduction (SCR) of
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`NOx. Umicore further argues that the combination of these decades-old prior art
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`elements produced predictable results, and more generally, that the ranges of
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`atomic ratio of copper to aluminum (“Cu/Al ratio”) and silica-to-alumina ratio
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`(“SAR”) claimed in the 662 Patent are “insignificant” and “performance of zeolites
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`falling both within the range and outside the range are what would be fully
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`expected by one of ordinary skill in the art.” IPR2015-01121, Petition at 17-18.
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`As explained in BASF’s Patent Owner Response, the combination of a CHA
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`zeolite with the claimed Cu/Al ratio and SAR produced unexpected results in
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`comparison to known prior art zeolite catalysts and solved a longstanding problem
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`that was well documented in the prior art. BASF presents this motion to submit
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`additional information showing that, not only does Umicore’s claim of obviousness
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`run directly contrary to an array of objective publications regarding the use of
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`zeolite catalysts for the SCR of NOx, but it also runs contrary to Umicore’s own
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`prior statements. Specifically, statements by Umicore in U.S. Patent Application
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`Publication No. 2016/0038875 (“the 875 Publication”) (Exhibit-2036) directly
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`1
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`contradict Umicore’s contention that the claimed Cu/Al ratio and SAR in the 662
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`IPR2015-01121
`U.S. Patent No. 7,601,662
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`Patent are insignificant and produce expected results. Therefore, and as explained
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`more fully herein, BASF contends that consideration of the 875 Publication in
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`these proceedings would be in the interests of justice.
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`BASF also contends that it could not have reasonably obtained the
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`information earlier. BASF first learned of the 875 Publication when it was
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`published in English on February 11, 2016 (the day before BASF’s Patent Owner
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`Response was due in the IPR). After examining the history of the 875 Publication
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`and comparing it to the positions taken by Umicore in this IPR, BASF, on April
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`21, 2016, notified Umicore of the inconsistency and its intention to submit the 875
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`Publication to the Board. Umicore argues that BASF could have found the
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`German language publication earlier by conducting searches, but offers no
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`explanation for why BASF knew or should have known to search for inconsistent
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`statements in Umicore’s own later-filed CuCHA patent applications. Moreover,
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`Umicore’s position is at odds with the IPR rules, which require that “a party must
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`serve relevant information that is inconsistent with a position advanced by the
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`party.” 37 C.F.R. § 42.51(b)(1)(iii). The existence of the earlier German
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`publication and the 875 Publication fall squarely within the scope of this rule, and
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`thus it was Umicore that was obligated to bring this information to light at the very
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`outset of this proceeding.
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`2
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`BASF respectfully requests that the Board grant its motion for submission of
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`IPR2015-01121
`U.S. Patent No. 7,601,662
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`supplemental information.
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`II. APPLICABLE RULES
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`A request for late submission of supplemental information is governed by 37
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`C.F.R. § 42.123(b) which states as follows: “A party seeking to submit
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`supplemental information more than one month after the date the trial is instituted,
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`must request authorization to file a motion to submit the information. The motion
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`to submit supplemental information must show why the supplemental information
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`reasonably could not have been obtained earlier, and that consideration of the
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`supplemental information would be in the interests-of-justice.”
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`III. ARGUMENT
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`A. Consideration of the 875 Publication is in the Interests-of-Justice
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`Considering information that contradicts a parties’ stated position is in the
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`interests-of-justice because it promotes the search for the truth. See Edmund
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`Optics, Case No. IPR2014-00599, Paper 44 at 4 (“With respect to the issue of
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`whether submission of the supplemental information is in the interests of justice,
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`we are mindful that a trial is, first and foremost, a search for the truth.”) (citing Nix
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`v. Whiteside, 475 U.S. 157, 166 (1986)). As explained below, the 875 Publication
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`plainly contradicts Umicore’s position in the Petition that the Cu/Al ratio and SAR
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`are insignificant and produce expected results.
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`3
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`The 662 Patent claims priority to a provisional application filed on February
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`IPR2015-01121
`U.S. Patent No. 7,601,662
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`27, 2007, and claims a CuCHA catalyst for the SCR of NOx having a Cu/Al ratio
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`between 0.25 and 1.0, and a SAR between 15 and 150. Exhibit-1001 at Claim 1.
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`The 662 Patent also includes dependent claims narrowing those ranges. See, e.g.,
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`Exhibit-1001 at Claim 7 (requiring a Cu/Al ratio between 0.30 and 0.50 and SAR
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`between 25 and 40). In the Petition, Umicore asserts that the claimed CuCHA
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`catalyst is obvious in view of Zones (U.S. 6,709,644), which discloses a process
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`for synthesizing a CHA zeolite having a SAR greater than 10, and Maeshima (U.S.
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`4,046,888), which discloses the use of metal-exchanged zeolites having a low SAR
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`(2-6) for the SCR of NOx. Umicore has conceded that the claimed Cu/Al ratio and
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`SAR ranges are not highlighted in the prior art, but nonetheless contends that
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`Cu/Al ratio and SAR are insignificant and produce entirely predictable results both
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`inside and outside the claimed ranges:
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`While the particular limits of those claimed SAR and Cu/Al ranges
`are not highlighted in the prior art, those claimed ranges and the limits
`lend no patentable significance, but rather are either insignificant or
`the obvious and natural result of routine design and optimization. As
`shown in the attached declarations of Dr. Frank-Walter Schütze (Ex.
`1015) and Dr. Johannes Lercher (Ex. 1008), there is no criticality to
`the claimed SAR and Cu/Al ranges, and the performance of zeolites
`falling both within the range and outside the range are what would be
`fully expected by one of ordinary skill in the art from the teachings of
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`4
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`Zones and Maeshima.
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`IPR2015-01121
`U.S. Patent No. 7,601,662
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`IPR2015-01121, Petition at 17-18. Umicore, however, paints an entirely different
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`picture regarding predictability and significance of Cu/Al ratio and SAR ranges in
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`its own patent application, the 875 Publication, directed to a CuCHA catalyst.
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`The 875 Publication stems from a PCT application that was filed in Europe
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`on April 1, 2014. The U.S. national stage application was filed on September 25,
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`2015, and includes an oath signed on September 11, 2015 by the named inventor,
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`Dr. Schütze. Exhibit-2036, Exhibit-2037. The 875 Publication is entitled
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`“CuCHA Material for SCR Catalysts” and describes a CuCHA catalyst having a
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`Cu/Al ratio (0.25 to 0.35) falling within the range claimed by the 662 Patent, and a
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`SAR (10 to 15) bordering the range claimed in the 662 Patent. Exhibit-2036 at
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`[0016-0017]. The 875 Publication goes on to state that by specifying such a
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`CuCHA zeolite “one arrives advantageously but no less surprisingly at the
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`solution to the task posed above. The present material shows excellent stabilities
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`and activities (FIG. 1) in this combination of features, even after hydrothermal
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`aging at 850 °C.” Id. at [0015]-[0018]; see also [0035] (“Such CuCHA catalysts
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`have a superior nitrogen oxide reduction ability with low nitrous oxide production
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`(high selectivity), whereby in particular the low-temperature activity with respect
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`to the reduction of nitrogen oxide is excellent. This was not to be expected in
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`view of the prior art.”). It is further explained that “[t]he present invention shows
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`5
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`that it is vital for the formation of the corresponding advantageous CuCHA
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`IPR2015-01121
`U.S. Patent No. 7,601,662
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`zeolite material that the ratio of silica to alumina on the one hand and its ratio
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`of the copper existing in and/or on the zeolite, is crucial for the activity and
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`hydrothermal stability as well as the good low-temperature activity of the
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`material…” Id. at [0020].
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`The inconsistency between the positions Umicore has taken in this
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`proceeding versus its own patent application is apparent and demonstrates a lack of
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`credibility. Prior to filing the IPR, in an attempt to secure a patent on a CuCHA
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`catalyst, Umicore took the position that a particular Cu/Al ratio and SAR range
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`produced an unexpected result and that the balance between those two parameters
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`was “vital” and “crucial” to the alleged invention. In contrast, in its Petition,
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`Umicore contests the earlier 662 Patent by arguing that Cu/Al ratio and SAR
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`ranges are “insignificant,” “lend no patentable significance,” and “the performance
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`of zeolites falling both within the [claimed] range and outside the [claimed] range
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`are what would be fully expected by one of ordinary skill in the art.” IPR2015-
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`01121, Petition at 17-18.
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`Umicore may argue that its statements are not inconsistent because the 875
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`Publication includes a disclosure regarding the crystal size of the CHA zeolite that
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`is not present in the 662 Patent. This is a red herring. First, Umicore’s statement
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`in the 875 Publication regarding the “vital” and “crucial” relationship between the
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`6
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`Cu/Al ratio and SAR range is silent regarding crystal size. Exhibit-2036 at [0020].
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`IPR2015-01121
`U.S. Patent No. 7,601,662
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`Second, in any event, the crystal size of an exemplary CHA zeolite embodiment
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`disclosed in the 662 patent falls comfortably within the crystal size range proposed
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`in the 875 Publication (0.75 to 2 microns). Exhibit-2036 at [0018]. Although the
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`662 Patent does not specifically mention crystal size, it notes that the CuCHA
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`zeolite can be synthesized using processes well-known in the art, and explicitly
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`refers to SSZ-13 as a viable synthetic CHA zeolite. Exhibit-1001 at 4:31-38. The
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`synthesis of SSZ-13 is described in a 1985 Patent. Exhibit-2035; see also Exhibit-
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`2018 at ¶¶ 76-77. Zones, which is cited by both the 662 Patent and the 875
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`Publication, notes that the crystal size of SSZ-13 is 1.2 microns. Exhibit-1004 at
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`7:19-20. Accordingly, the discussion of crystal size in the 875 Publication does
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`not in any way detract from the inconsistent position taken by Umicore regarding
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`the significance and predictability of the claimed and unclaimed ranges of Cu/Al
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`ratio and SAR.
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`B.
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`BASF Could Not Reasonably Have Obtained the 875 Publication
`Earlier
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`The 875 Publication is not prior art to the 662 Patent, nor was the application
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`that led to the 875 Publication or the related German application referenced in any
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`of the papers, declarations or exhibits submitted by Umicore or BASF. Unlike
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`Umicore, who has been aware of the 875 Publication since the outset of this
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`proceeding, BASF discovered the 875 Publication when it published in English on
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`7
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`February 11, 2016. BASF’s Patent Owner Response was due on February 12,
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`IPR2015-01121
`U.S. Patent No. 7,601,662
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`2016. Umicore’s argument that BASF could have discovered the German version
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`of the publication earlier by conducting searches misses the mark because it
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`incorrectly presumes that BASF knew or should have known that Umicore was
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`taking inconsistent positions in a foreign CuCHA patent application filed many
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`years after BASF’s 662 Patent. Moreover, shifting the burden to BASF to
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`exhaustively search for inconsistent positions by Umicore would be contrary to 37
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`C.F.R. § 42.51(b)(1)(iii), which required Umicore to serve relevant information
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`inconsistent with the positions it was advancing in the IPR. Umicore did no such
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`thing despite the fact that at least one employee, Dr. Schütze, was substantively
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`involved in both the 875 Publication and the IPR.
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`With regard to prejudice, on the conference call with the Board, Umicore
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`appeared to argue that introduction of the 875 Publication would be problematic
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`because the oral hearing is scheduled for the end of July. Umicore has been aware
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`of the contents of the 875 Publication for years. The oral hearing is still more than
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`two months away. There is sufficient time for this information to be considered by
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`the Board. Finally, Umicore also argued that it was prejudiced by not being able to
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`depose BASF’s witnesses regarding the 875 Publication. Umicore, however, failed
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`to note that it canceled the noticed depositions of three BASF declarants (Dr.
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`Ahmad Moini, Dr. Stanley Roth, and Pramod Ravindran) after BASF notified
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`8
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`Umicore about the 875 Publication. There is simply no prejudice to Umicore.
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`IPR2015-01121
`U.S. Patent No. 7,601,662
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`Respectfully submitted,
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`/Anish R. Desai /
`Brian E. Ferguson (Reg. No. 36,801)
`Anish R. Desai (Reg. No. 73,760)
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`T: 202-682-7000
`E: anish.desai@weil.com
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`9
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`Dated: May 13, 2016
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on May 13, 2016, the foregoing
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`PATENT OWNER’S MOTION FOR LATE SUBMISSION OF
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`SUPPLEMENTAL INFORMATION was served via electronic mail, upon the
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`following:
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`Elizabeth Gardner
`Richard L. DeLucia
`K. Patrick Herman
`A. Anthony Pfeffer
`Orrick, Herrington & Sutcliffe LLP
`51 West 52nd Street
`New York, NY 10019-6142
`egardner@orrick.com
`rdelucia@orrick.com
`pherman@orrick.com
`apfeffer@orrick.com
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`/Timothy J. Andersen/ i
`Timothy J. Andersen
`Case Manager
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`T: 202-682-7075
`timothy.andersen@weil.com
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