Patent Owner’s Preliminary Response (IPR2015-01121)
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`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.
`BASF CORPORATION
`Patent Owner.
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`IPR2015-01121
`U.S. Patent 7,601,662
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`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,601,662
`PURSUANT TO 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
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`Patent Owner’s Preliminary Response (IPR2015-01121)
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`Table of Contents
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`I. 
`II. 
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`D. 
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`INTRODUCTION ........................................................................................... 1 
`THE 662 PATENT .......................................................................................... 4 
`A. 
`Background ........................................................................................... 4 
`B. 
`Summary of the Invention ..................................................................... 5 
`C. 
`Inter Partes Reexamination ................................................................... 8 
`1. 
`Zones in view of Ishihara ............................................................ 9 
`2. 
`Zones in view of U.S. 2004/0171476 (“Nam”) ........................ 11 
`Claim Construction ............................................................................. 12 
`1. 
`“[C]atalyst” (claim 1) ................................................................ 12 
`2. 
`“[Z]eolite having the CHA crystal structure” (claim 1) ........... 13 
`3. 
`“[I]on-exchanged copper” and “non-exchanged copper”
`(claim 9) .................................................................................... 13 
`“[T]he catalyst effective to promote the reaction of
`ammonia with nitrogen oxides to form nitrogen and H2O
`selectively” (claim 1) ................................................................ 13 
`III.  THE REQUEST FOR INTER PARTES REVIEW SHOULD BE
`DENIED......................................................................................................... 16 
`The Petition Fails to Present Evidence That a Cu-Zeolite
`A. 
`Having the CHA Structure is a Lead Compound for the
`Selective Catalytic Reduction of NOx ................................................. 18 
`B.  Maeshima Does Not Provide a Reason to Modify the Cu/Al
`Ratio of a CuCHA ............................................................................... 24 
`C.  Unexpected Results ............................................................................. 29 
`There is Substantial Evidence That the Claimed
`1. 
`Invention Produced Unexpected Results .................................. 29 
`The Schutze Declaration Submitted By Petitioner Is
`Legally Irrelevant ...................................................................... 31 
`D.  Other Secondary Considerations of Nonobviousness ......................... 35 
`1. 
`Skepticism ................................................................................. 36 
`2. 
`Long-Felt Need ......................................................................... 38 
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`4. 
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`2. 
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`Patent Owner’s Preliminary Response (IPR2015-01121)
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`E. 
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`Praise ......................................................................................... 39 
`3. 
`The Evidence of Secondary Considerations is Commensurate
`With the Scope of the Claims .............................................................. 41 
`Failure of Proof as to Claims 9 and 10 ................................................ 42 
`F. 
`IV.  CONCLUSION .............................................................................................. 44 
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`Exhibit 2001
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`Exhibit 2002
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`Exhibit 2003
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`Exhibit 2004
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`Exhibit 2005
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`Exhibit 2006
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`Exhibit 2007
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`Exhibit 2008
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`Exhibit 2009
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`Exhibit 2010
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`Exhibit 2011
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`Exhibit 2012
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`Patent Owner’s Preliminary Response (IPR2015-01121)
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`Table of Exhibits
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`Declaration of Stanley Roth in the Inter Partes
`Reexamination of U.S. Patent No. 7,601,662
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`Cavataio, G., et. al., “Enhanced Durability of a Cu/Zeolite
`Based SCR Catalyst.” SAE Int. J. Fuels. Lubr., Vol. 1, Issue
`1 (2008).
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`Declaration of Ahmad Moini in the Inter Partes
`Reexamination of U.S. Patent No. 7,601,662
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`Second Declaration of Pramod Ravindran in the Inter Partes
`Reexamination of U.S. Patent No. 7,601,662
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`Third Party Comments After Patent Owner’s Response After
`ACP in the Inter Partes Reexamination of U.S. Patent No.
`7,601,662
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`USPTO Right of Appeal Notice for Reexamination of U.S.
`Patent No. 7,601,662
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`Request for Inter Partes Reexamination in the proceedings of
`U.S. Patent No. 7,601,662
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`Order Granting/Denying Request for Inter Partes
`Reexamination of U.S. Patent No. 7,601,662
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`Declaration of Stacey I. Zones in the Inter Partes
`Reexamination of U.S. Patent No. 7,601,662
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`Declaration of Gary L. Haller in the Inter Partes
`Reexamination of U.S. Patent No. 7,601,662
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`Second Declaration of Ahmad Moini in the Inter Partes
`Reexamination of U.S. Patent No. 7,601,662
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`Centi, G., et. al., “Nature of Active Species in Copper-Based
`Catalysts and their Chemistry of Transformation of Nitrogen
`Oxides,” Applied Catalysis A: General, Vol. 132, Issue 2
`(1995)
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`Exhibit 2013
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`Exhibit 2014
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`Exhibit 2015
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`Patent Owner’s Preliminary Response (IPR2015-01121)
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`Second Declaration of Stanley Roth in the Inter Partes
`Reexamination of U.S. Patent No. 7,601,662
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`Kwak, J., et. al., “Excellent Activity and Selectivity of Cu-
`SSZ-13 in the Selective Catalytic Reduction of NOx with
`NH3,” Journal of Catalysis (2010)
`Dedecek, J., et. al., “Effect of Framework Charge Density on
`Catalytic Activity of Copper Loaded Molecular Sieves on
`Chabazite Structure in Nitrogen (II) Oxide Decomposition,”
`Collect. Czech. Chem. Commun., Vol. 65 (2000)
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`Patent Owner’s Preliminary Response (IPR2015-01121)
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`Environmental Designs, Ltd. v. Union Oil Co.,
`713 F. 2d 693 (Fed. Cir. 1983), cert. denied, 464 U.S. 1043 (1984) .................. 37
`
`In re Grose,
`592 F.2d 1161 (Fed. Cir. 1979) .............................................................. 14, 15, 16
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`In re Huai-Hung Kao,
`639 F.3d 1057 (Fed. Cir. 2011) .......................................................................... 41
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`InTouch Techs., Inc. v. VGO Commc'ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .......................................................................... 28
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`In re Mills,
`281 F.2d 218 (C.C.P.A. 1960) ...................................................................... 15, 17
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`Otsuka Pharm. Co. v. Sandoz, Inc.,
`678 F.3d 1280 (Fed. Cir. 2012) .......................................................... 2, 20, 23, 24
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`In re Papesch,
`315 F.2d 381 (CCPA 1963) .......................................................................... 13, 14
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`Pfizer Inc. v. Teva Pharms. USA, Inc.,
`555 Fed. Appx. 961 (Fed. Cir. 2014) .................................................................. 17
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`Sanofi-Synthelabo v. Apotex, Inc.,
`550 F.3d 1075 (Fed. Cir. 2008) .......................................................................... 14
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`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) .......................................................................... 36
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`In re Sullivan,
`498 F.3d 1345 (Fed. Cir. 2007) .................................................................... 29, 31
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`Other Authorities
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`M.P.E.P. § 716.02(e) ................................................................................................ 33
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`I.
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`INTRODUCTION
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`Patent Owner’s Preliminary Response (IPR2015-01121)
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`The claims of U.S. 7,601,662 (“the 662 Patent”) pertain to a catalyst
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`comprising an aluminosilicate zeolite having the CHA structure, a silica to alumina
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`ratio (“SAR”) of 15 to 150, and a copper to aluminum atomic ratio between 0.25
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`and 1, where the catalyst is effective to promote the reaction of ammonia with
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`nitrogen oxides (“NOx”) to form nitrogen and H2O selectively (i.e., selective
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`catalytic reduction (SCR) of NOx in the presence of NH3).
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`The development of a copper-loaded zeolite (“Cu-zeolite”) for reduction of
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`NOx was initially met with skepticism, while the resulting invention was met with
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`praise and called “remarkable” in comparison to earlier Cu-zeolite SCR
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`formulations. As is evident from the reexamination history of the 662 Patent, the
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`claimed catalyst produced unexpected results and solved a longstanding need for a
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`material that exhibited low temperature NOx conversion and improved
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`hydrothermal stability.
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`The Petition for inter partes review filed on April 30, 2015, hinges on the
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`argument that the claimed copper CHA zeolite (“CuCHA”) is obvious based on the
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`combination of U.S. Patent No. 6,709,644 (“Zones”) and U.S. Patent No.
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`4,046,888 (“Maeshima”). However, Petitioner’s analysis fails to apply the
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`applicable law, is riddled with analyses grounded in impermissible hindsight, and
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`repeats arguments previously rejected in a prior reexamination of the 662 Patent.
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`Patent Owner’s Preliminary Response (IPR2015-01121)
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`Zones, the lead reference asserted by Petitioner, was the subject of extensive
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`analysis and discussion during an inter partes reexamination (“the 662
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`Reexamination”) that concluded on June 7, 2013. Petitioner simply revisits
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`arguments regarding Zones that were previously rejected by the Examiner in the
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`662 Reexamination. In that reexamination, it was correctly held that Zones does
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`not disclose (1) a specific example of a Cu-zeolite; (2) any specific reactions for
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`the reduction of oxides of nitrogen; or (3) an amount of copper to be used in a
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`zeolite having the CHA structure. Moreover, Zones does not disclose any data
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`regarding the use of a zeolite for the selective reduction of oxides of nitrogen, nor
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`does it disclose any pertinent properties of a CuCHA relevant to the reduction of
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`oxides of nitrogen (e.g., low temperature NOx conversion, hydrothermal stability,
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`etc.). Accordingly, there is no basis (other than hindsight) on which to assert that a
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`person of ordinary skill in the art would have selected a CuCHA as a lead
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`compound based on Zones. See IPR2015-00419, Paper 14, at 9 (“Here, absent
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`any reported activity data, compound 96 could not have served as ‘a natural choice
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`for further development efforts’”); see also Otsuka Pharm. Co. v. Sandoz, Inc., 687
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`F.3d 1280, 1292 (Fed. Cir. 2012) (“In determining whether a chemist would have
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`selected a prior art compound as a lead, the analysis is guided by evidence of the
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`compound’s pertinent properties. Such properties may include positive attributes
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`such as activity and potency…”). (Internal citations omitted).
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`Patent Owner’s Preliminary Response (IPR2015-01121)
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`Maeshima, the secondary reference, does not supply adequate motivation to
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`incorporate a specific Cu/Al ratio in a zeolite having the CHA structure, nor does
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`the Petitioner present any evidence (other than unsupported expert conclusions)
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`that a person of ordinary skill in the art would have had a reasonable expectation of
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`success in combining Zones and Maeshima. Maeshima does not provide any
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`specific teachings regarding a copper zeolite having the CHA structure. There is
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`only one mention of a zeolite having the CHA structure in the entire reference (col.
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`4, line 11), and no examples or data are presented regarding a copper zeolite
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`having the CHA structure. Instead, Maeshima provides teachings regarding
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`faujasite, which does not have the CHA crystal structure. Petitioner provides no
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`evidence or explanation for why a person of ordinary skill in the art would apply
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`the teachings regarding faujasite to a zeolite having the CHA crystal structure, and
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`have a reasonable expectation of success. Moreover, Petitioner asserts that a
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`person of ordinary skill in the art would understand the benefits of the 60 to 100%
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`ion exchange ratio stated in Maeshima, and would have applied that ratio to the
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`Zones reference. But in doing so, Petitioner never addresses (and never quotes) the
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`portion of Maeshima that instructs one of ordinary skill in the art that there is no
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`particular benefit to the ion exchange ratio: “The ion exchange ratio is not
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`particularly critical, but it is generally preferred that the ion exchange ratio be
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`about 60 to 100%.” Exhibit 1002 at 4:48-50 (emphasis added). Accordingly, the
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`Patent Owner’s Preliminary Response (IPR2015-01121)
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`only reason that Petitioner appears to have for applying the ion exchange ratio is to
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`arrive at the claimed invention (i.e., hindsight).
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`For these reasons, and others articulated in detail below, the Patent Owner
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`respectfully requests that the Board deny institution of the grounds presented in the
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`Petition.
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`II. THE 662 PATENT
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`The 662 Patent was filed on February 27, 2008 and claims priority to a
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`provisional application filed on February 27, 2007.
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`A. Background
`The claimed invention in the 662 Patent pertains to a select zeolite useful for
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`the selective catalytic reduction (SCR) of oxides of nitrogen in exhaust gas
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`streams, such as diesel engine exhaust. Prior to the claimed invention, a large-
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`number of metal promoted zeolites suffered from one or both of the following
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`defects: (1) poor conversion of oxides of nitrogen at low temperatures, for
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`example 350 C and lower; and (2) poor hydrothermal stability marked by a
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`significant decline in catalytic activity in the conversion of oxides of nitrogen by
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`SCR. Because of these defects, it was believed by researchers in the field that
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`copper-exchanged zeolites were not commercially viable for use in commercial
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`exhaust gas treatment including, for example, diesel engines. For example, in
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`2005, when Engelhard Corporation1 was attempting to secure Department of
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`Energy (DOE) funding for a proposal to study Cu-zeolites, they were told that
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`“some reviewers, and [the] DOE grant manager simply think Cu-exchanged
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`zeolites are far to [sic, too] unstable to water to be commercially feasible, so they
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`do not want to fund work in the area.” Exhibit 2001 at ¶¶ 4-8. It was also known
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`that Fe-zeolite formulations exhibited superior hydrothermal stability over Cu-
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`zeolite formulations. Exhibit 2002 at .001. However, Fe-zeolite formulations were
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`not very active for NOx conversion at low temperatures. Id. Accordingly, at the
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`time of the invention claimed in the 662 Patent, there was a compelling, unsolved
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`need to provide a material that would provide conversion of oxides of nitrogen at
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`low temperatures and retention of SCR catalytic activity after hydrothermal aging
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`at temperatures in excess of 650 C. See Exhibit 2002 at .002 (“Improvements in
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`the thermal durability of Cu/zeolite based SCR formulations has been highly
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`desirable and pursued by many research institutes and catalyst suppliers.”).
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`Summary of the Invention
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`B.
`The inventors of the 662 Patent sought to solve the problems with the prior
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`art. They were tasked with providing a material that exhibited excellent NOx
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`conversion over a wide temperature range and hydrothermal stability. Exhibit
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`1 Engelhard was acquired by BASF in 2006.
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`2003 at ¶ 3. Following initial studies that examined over 900 zeolite materials,
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`including over twelve different structure types, different silica to alumina ratios,
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`different metal ions, and different metal ion/aluminum ratios, zeolites having the
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`CHA structure, a silica to alumina ratio greater than 15 and copper to aluminum
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`ratios exceeding 0.25 emerged as the lead material. Exhibit 2003 at ¶ 4. The
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`inventors believed the properties of the claimed Cu-zeolite were highly
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`unexpected, a fact confirmed in the 2008 research paper published by the Ford
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`Motor Company (“Ford Paper”) examining a Cu-zeolite formulation provided by
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`the applicants for the 662 Patent.2 See Exhibit 2002. The Ford Paper “discusses
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`the performance and hydrothermal durability of an enhanced Cu/zeolite based SCR
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`formulation” and makes note of the “remarkable progress that has been made in the
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`past year with the durability of the 2007 Cu/zeolite based SCR formulation.”
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`Exhibit 2002 at .002, .005. The Ford Paper further notes that the “2007 Cu/zeolite
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`SCR catalyst demonstrated outstanding stability” and “[t]he enhanced durability of
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`2 The Cu-zeolite formulation tested by the Ford Motor Company was provided by
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`the applicant for the 662 Patent under a secrecy agreement and had a silica to
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`alumina ratio (SAR) and a copper to aluminum ratio within the ranges claimed in
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`the 662 Patent. Exhibit 2004 at ¶¶ 4-8.
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`Patent Owner’s Preliminary Response (IPR2015-01121)
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`the 2007 SCR formulations has been mainly attributed to advances in the zeolite
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`type and composition.” Exhibit 2002 at .005-006.
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`Claim 1 of the 662 Patent embodies the SCR catalyst that was praised in the
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`Ford Paper. Specifically, claim 1 of the 662 Patent requires a catalyst comprising
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`an aluminosilicate zeolite having the CHA crystal structure, a mole ratio of silica
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`to alumina between 15 and 150, and a copper to aluminum atomic ratio from 0.25
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`to 1, the catalyst being effective to promote the reaction of ammonia with nitrogen
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`oxides to form nitrogen and H2O selectively (i.e., SCR of NOx in presence of
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`ammonia).
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`The disclosure in the 662 Patent confirms the excellent properties (i.e., low
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`temperature SCR activity and hydrothermal stability) of the claimed catalyst. Table
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`1 of the 662 Patent (reproduced below) shows data regarding examples of the
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`claimed CuCHA (e.g., Examples 2, 3, 4) along with comparative examples of Cu-
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`Y and Cu-beta.
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`Patent Owner’s Preliminary Response (IPR2015-01121)
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`Examples 2, 3 and 4 of the claimed CuCHA had a silica to alumina ratio of 30, and
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`Cu/Al ratio of 0.33, 0.38, and 0.44, respectively. Exhibit 1001 at Table 1, 11:39-
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`41. Examples 10 and 11 represent comparative examples of Cu-Y having a silica
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`to alumina ratio of 5 and Cu/Al ratio of 0.23, and Cu-Beta having a silica to
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`alumina ratio of 35 and Cu/Al ratio of 0.36. Id. at Table 1, 13:47-48, 14:12-14.
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`Both the fresh and aged Cu-Y examples perform poorly at a low temperature (210˚
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`C). The fresh Cu-Beta example exhibits excellent conversion at 210˚ C (92%), but
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`lacks hydrothermal stability (23% conversion when aged). In contrast, examples 2,
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`3, and 4 exhibit good conversion when fresh at low temperatures (62%, 74%, 76%)
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`and also when aged (59%, 70%, 60%).
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`Inter Partes Reexamination
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`C.
`The 662 Patent issued on October 13, 2009. On November 16, 2010, an
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`inter partes reexamination (“662 Reexamination”) was ordered by the Patent
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`Office pursuant to a request by a third party (“Third Party Requester”). The inter
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`partes reexamination certificate issued on June 7, 2013. Claims 1, 2, 9, and 32
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`were determined to be patentable as amended; claims 3-8, 10-24, 30, and 33-38
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`were determined to be patentable as being dependent on the amended claims; new
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`claims 39-50 were determined to be patentable; and claims 25-29 and 31 were
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`cancelled. Amended claim 1 is reproduced below:
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`1. A catalyst comprising:
`[a] an aluminosilicate zeolite having the CHA crystal structure and a
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`mole ratio of silica to alumina [greater than] from about 15 to about
`150 and an atomic ratio of copper to aluminum [exceeding] from
`about 0.25 to about 1, the catalyst effective to promote the reaction of
`ammonia with nitrogen oxides to promote the reaction of ammonia
`with nitrogen oxides to form nitrogen and H2O selectively.
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`The 662 Reexamination included extensive analysis and findings by the Examiner
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`regarding the same Zones reference that is being asserted as prior art in the present
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`Petition. These findings are summarized below.
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`1.
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`Zones in view of Ishihara
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`In the 662 Reexamination, the Third Party Requester proposed a rejection of
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`the amended claims based on Zones in view of Ishihara. The Third Party
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`Requester argued that (1) Zones discloses a zeolite having CHA structure (SSZ-62)
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`that “may contain metal ions such as copper to catalyze the reduction of oxides”;
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`and (2) “a person of ordinary skill in the art would have sought to optimize the
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`amount of copper in SSZ-62” and would have done so utilizing the disclosure in
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`Ishihara. Exhibit 2005 at .019.
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`In a Right of Appeal Notice dated June 14, 2012, the Examiner did not adopt
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`the proposed rejections. The Examiner found that Zones does not teach using a
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`catalyst for ammonia SCR of NOx and that other prior art showed that there would
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`not be a reasonable expectation of success when utilizing a copper zeolite having
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`the CHA structure to catalyze reduction of oxides of nitrogen. Moreover, the
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`Examiner found that the combination of Zones and Ishihara was not appropriate
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`because of the difference in zeolites disclosed in the two references. Relevant
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`excerpts of the Examiner’s findings are copied below:
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`While Zones teaches at col. 1, lines 61-65 that its CHA zeolite, such
`as SSZ-62, may contain a metal ion, such as copper, “capable of
`catalyzing the reduction of oxides of nitrogen,” no amount is ever
`exemplified for such catalysis, and Zones does not teach using its
`catalyst for ammonia SCR of NOx.
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`Unlike Zones which states at col. 1, lines 61-65 that its CHA zeolite
`may contain a metal ion, such as copper, “capable of catalyzing the
`reduction of oxides of nitrogen,” Dedecek 2 presents experimental
`results of such catalysis and found that its aluminosilicate Cu-
`chabazite was inactive for the decomposition of NO (see p. 346 and
`Table II at p. 348).
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`While the proposed rejection cites Ishihara for copper concentration,
`as noted above, Ishihara’s catalyst is SAPO, not an aluminosilicate
`such as the SSZ-62 material in Zones…the differences between SAPO
`materials and aluminosilicate materials include differences in acidity
`and the presence of Bronsted acid sites, factors Ishihara considers
`important to hydrocarbon selective catalytic reduction reaction.
`Ishihara is silent with respect to NH3 selective catalytic reduction.
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`Exhibit 2006 at .026-027, .049.
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`Patent Owner’s Preliminary Response (IPR2015-01121)
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`2.
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`Zones in view of U.S. 2004/0171476 (“Nam”)
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`The Third Party Requester also proposed a rejection of the original claims
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`based on Zones in view of Nam. The Third Party Requester argued that Zones
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`“discloses [that] the zeolite [having the CHA structure] may contain metal ions
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`such as copper for catalyzing the reduction of oxides of nitrogen,” and that Nam
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`“discloses the use of a copper ion-exchanged ZSM-5 zeolite as a thermostable
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`catalyst for the selective reduction of NO with ammonia” and “the preferred
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`copper to aluminum atomic ratio is about 2.5 wt.% to about 3.5 w.t% copper.”
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`Exhibit 2007 at .043.
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`In the Order Granting/Denying Request for Inter Partes Reexamination
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`dated November 16, 2010, the Examiner concluded that the proposed rejection of
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`Zones in view of Nam did not raise a substantial new question of patentability of
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`original claims 1-38 of the 662 Patent. Exhibit 2007 at .010. As set forth below in
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`an excerpt from the Examiner’s decision, it was concluded that there would no
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`predictability associated with combining the teachings of Zones and Nam:
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`Both Nam and the ‘261 patent claim the benefit of U.S. provisional
`application 60/474,492. In fact, the specifications and figures of Nam
`and the ‘261 patent are essentially identical.
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`[T]he only zeolite material taught and exemplified containing copper
`in both Nam and the ‘261 patent is ZSM-5, which is addressed in the
`reasons for allowance of the ‘662 patent. [citation omitted]. Since
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`Patent Owner’s Preliminary Response (IPR2015-01121)
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`the examiner concluded that CHA based catalysts are very different
`from MFI catalysts (e.g., ZSM-5) and there is no predictability
`associated with their use in SCR materials, then the combination of
`Zones and Nam provides no new light with respect to the reason the
`examiner allowed claims 1-38 of the ‘662 patent.
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`Exhibit 2008 at .009-010.
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`D. Claim Construction
`1.
`“[C]atalyst” (claim 1)
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`Petitioner contends that the term “catalyst” is indefinite because it is unclear
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`whether the recited silica to alumina mole ratio and copper to aluminum atomic
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`ratio are those of the zeolite or of the entire catalyst. Petitioner, however, proceeds
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`to state that the “broadest reasonable interpretation of the ‘catalyst’ would embrace
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`both a zeolite alone and the zeolite in combination with a binder well and substrate
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`on which the zeolite and binder are deposited.” Petition at 5. It is unclear whether
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`Petitioner is proposing a construction for the term catalyst or whether Petitioner
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`contends that the term is indefinite.
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`Nevertheless, Patent Owner disagrees that the term catalyst is indefinite and
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`with Petitioner’s proposed construction. The claim language is clear and requires a
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`catalyst comprising an aluminosilicate zeolite having the CHA crystal structure, a
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`mole ratio of the silica to alumina from about 15 to about 150, and a copper to
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`aluminum ratio from about 0.25 to about 1. Exhibit 1001 at claim 1.
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`2.
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`“[Z]eolite having the CHA crystal structure” (claim 1)
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`Petitioner correctly states that the 662 Patent defines the CHA crystal
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`structure as “defined by the International Zeolite Association.” Exhibit 1001 at
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`1:56-57. Therefore, this claim term does not require construction because the
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`patent expressly defines the claim term. Id. Furthermore, it is not contested by
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`Patent Owner that the International Zeolite Association considers “chabazite” to be
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`a zeolite having a CHA crystal structure.
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`3.
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`“[I]on-exchanged copper” and “non-exchanged copper”
`(claim 9)
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`Patent Owner does not dispute the Petitioner’s characterization of how the
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`term “ion-exchange copper” and “non-exchanged copper” are used in the 662
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`Patent.
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`4.
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`“[T]he catalyst effective to promote the reaction of ammonia
`with nitrogen oxides to form nitrogen and H2O selectively”
`(claim 1)
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`Petitioner states that this phrase “should be interpreted to require only what
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`it states.” Petition at 6. Patent Owner agrees, and therefore, the phrase does not
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`require construction.
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`Petitioner further states that Patent Owner may argue that this limitation
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`requires “excellent activity at certain temperatures,” or “have improved resistance
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`to hydrothermal aging” and that Patent Owner erroneously argued in the 662
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`Reexamination that In re Papesch requires limiting the claims of the 662 Patent.
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`Petition at 7. Petitioner, however, misunderstands the arguments that were
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`presented in the 662 Reexamination and misstates the significance of In re Grose.
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`First, Patent Owner never argued in the 662 Reexamination that the
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`independent claims of the 662 Patent require excellent activity at certain
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`temperatures or improved hydrothermal aging. However, the claimed compound
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`exhibits these properties and importantly, these properties were unexpected.
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`Accordingly, these properties are pertinent to the evaluation of obviousness of the
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`claimed compound. In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the
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`standpoint of patent law, a compound and all of its properties are inseparable; they
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`are one and the same thing.”); see also Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d
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`1075, 1086 (Fed. Cir. 2008) (“For chemical compounds, the structure of the
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`compound and its properties are inseparable considerations in the obviousness
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`determination.”).
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`Second, Petitioner appears to suggest that the holding in In re Grose means
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`that consideration of a compound’s properties is not applicable to zeolites. Petition
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`at 9. This is plainly incorrect, and a misstatement of the holding of In re Grose.
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`In re Grose was an appeal before the United States Court of Customs and
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`Patent Appeals in which an applicant appealed the rejection of his patent
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`application. The Examiner had concluded that applicant’s zeolite and the prior art
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`zeolite R were the same chemically and that there was insufficient evidence that
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`the zeolites had a different crystal structure. In re Grose, 592 F.2d 1161, 1164
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`(Fed. Cir. 1979). The Board reached a different conclusion regarding the crystal
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`structure, and therefore, reversed the rejection under 102. Id. However, the Board
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`maintained the 103 rejection of the claims under a chemical theory that the claimed
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`zeolites are the same chemically and “no unexpected advantages were evident…
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`[and] the different diffraction pattern, had not been shown to be useful in any
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`manner.” Id. at 1164-65.
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`The Federal Circuit affirmed the rejection, but disagreed with the Board’s
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`reasoning. Specifically, the Federal Circuit concluded that “[t]he present record
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`does not support the conclusion that appellants’ zeolite and [prior art] zeolite R are
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`zeolites having different crystal structures” and sustained the rejection of the
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`claims. Id. at 1167-68. The Federal Circuit held that “no reason exists for
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`applying the law relating to structural obviousness of those compounds which are
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`homologs or isomers of each other to this case.” Id. at 1167-68 (emphasis added).
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`In other words, the Federal Circuit concluded that because the zeolites were the
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`same chemically, and did not have a different chemical structure, there was no
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`need in that case to require that the applicant show that the claimed compound
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`possessed non-obvious or unexpected beneficial properties not actually possessed
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`by a prior art homologue. See In re Mills, 281 F.2d 218, 222 (C.C.P.A. 1960)
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`(“The burden is on the applicant to rebut that presumption by showing that the
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`claimed compound possesses unobvious or unexpected beneficial properties not
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`actually possessed by the prior art homologue.”). It certainly cannot be said that In
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`re Grose stands for the proposition that a zeolite’s properties are irrelevant to an
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`obviousness inquiry.
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`III. THE REQUEST FOR INTER PARTES REVIEW SHOULD BE
`DENIED
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`Petitioner presents two grounds. The first ground asserts that claims 1-11
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`and 30 are obvious based on Zones in view of Maeshima. The second ground
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`asserts that dependent claims 12-24 and 32-50 are obvious based on Zones and
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`Maeshima in view of Patchett. As explained below, Petitioner has not
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`demonstrated a reasonable likelihood of success as to either ground.3
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`The Board generally “follow[s] a two-part inquiry to determine whether a
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`claimed chemical compound would have been obvious in light of particular prior
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`art compounds.” IPR2015-00419, Paper 14, at 7 (citing Otsuka Pharm. Co. v.
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`Sandoz, Inc., 678 F.3d 1280, 1291-93 (Fed. Cir. 2012)). The first step is to
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`3 Patent Owner has elected to only address the combination of Zones and
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`Maeshima which underlies both grounds asserted by Petitioner. Patent Owner’s
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`election should not be taken as an admission of any facts or conclusions or waiver
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`of any argument regarding the combination of Zones and Maeshima in view of
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`Patchett.
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`“determine ‘whether a chemist of ordinary skill would have selected the asserted
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`prior art compounds as lead compounds, or starting points, for further development
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`efforts.’” Id. The second step is to “analyze whether there was a reason to modify
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`a lead compound to make the claimed compound with a reasonable expectation of
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`success.” Id. at 8. Petitioner has entirely failed to apply this test. Instead,
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`Petitioner uses the claims of the 662 Patent as the reason for identif