trials@uspto.gov
`
`
`
`571-272-7822
`
`IPR2015-01121, Paper No. 52
` IPR2015-01125, Paper No. 52
`IPR2015-01123, Paper No. 50
` IPR2015-01124, Paper No. 53
`August 19, 2016
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`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`UMICORE AG & CO. KG
`Petitioner
`vs.
`BASF CORPORATION
`Patent Owner
`- - - - - -
`Case IPR2015-01121, IPR2015-01125
`Patent 7,601,662 B2
`Case IPR2015-01123, IPR2015-01124
`Patent 8,404,203 B2
`- - - - - -
`Oral Hearing Held: July 28, 2016
`
`
`Before: CHRISTOPHER L. CRUMBLEY, JO-ANNE M.
`KOKOSKI, JEFFREY W. ABRAHAM, Administrative Patent Judges
`
`The above-entitled matter came on for hearing on Thursday,
`July 28, 2016 at the U.S. Patent and Trademark Office, 600 Dulany Street,
`Alexandria, Virginia in Courtroom A, at 1:00 p.m.
`
`REPORTED BY: KAREN BRYNTESON, RMR, CRR,
`
`FAPR
`
`
`
`
`
`571-272-7822
`
`IPR2015-01121, Paper No. 52
` IPR2015-01125, Paper No. 52
`IPR2015-01123, Paper No. 50
` IPR2015-01124, Paper No. 53
`August 19, 2016
`
`
`
`
`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`UMICORE AG & CO. KG
`Petitioner
`vs.
`BASF CORPORATION
`Patent Owner
`- - - - - -
`Case IPR2015-01121, IPR2015-01125
`Patent 7,601,662 B2
`Case IPR2015-01123, IPR2015-01124
`Patent 8,404,203 B2
`- - - - - -
`Oral Hearing Held: July 28, 2016
`
`
`Before: CHRISTOPHER L. CRUMBLEY, JO-ANNE M.
`KOKOSKI, JEFFREY W. ABRAHAM, Administrative Patent Judges
`
`The above-entitled matter came on for hearing on Thursday,
`July 28, 2016 at the U.S. Patent and Trademark Office, 600 Dulany Street,
`Alexandria, Virginia in Courtroom A, at 1:00 p.m.
`
`REPORTED BY: KAREN BRYNTESON, RMR, CRR,
`
`FAPR
`
`
`
`APPEARANCES:
`
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`
`
`ON BEHALF OF THE PETITIONER:
`
`
`
`
`
`
`
`
`ELIZABETH GARDNER, ESQ.
`K. PATRICK HERMAN, ESQ.
`Orrick, Herrington & Sutcliffe LLP
`51 West 52nd Street
`New York, NY 10010-6142
`212-506-3593
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`
`
`
`
`
`
`
`ANISH DESAI, ESQ.
`BRIAN E. FERGUSON, ESQ.
`Weil, Gotshal & Manges LLP
`1300 Eye Street, N.W.
`Suite 900
`
`Washington, D.C. 20005-3314
`202-682-7516
`
`
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`Case IPR2015-01121, IPR2015-01125 and Case IPR2015-01123,
`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`
`P R O C E E D I N G S
`
`(1:00 p.m.)
`JUDGE CRUMBLEY: Have a seat everyone. Give
`us a second to get powered up here.
`All right. We will go ahead and get started, and
`we will assume my screen will start cooperating at some point
`here.
`
`So, good afternoon, everyone. Today we have the
`oral hearing in four inter partes review trials, Case Numbers
`IPR 2015- 01121, 1123, 01124, and 01125 between Umicore
`AG as Petitioner and BASF Corporation as Patent Owner.
`I am Judge Crumbley. To my right is Judge
`Kokoski, and to my left is Judge Abraham. I would start by
`getting the parties' appearances, starting with Petitioner.
`MS. GARDNER: Elizabeth Gardner of Orrick,
`Herrington & Sutcliffe representing Petitioner.
`MR. HERMAN: Patrick Herman, also of Orrick,
`representing Petitioner.
`JUDGE CRUMBLEY: Good afternoon. And who
`do we have from the Patent Owner?
`MR. DESAI: Anish Desai from Weil Gotshal.
`MR. FERGUSON: And Brian Ferguson, also from
`Weil Gotshal.
`MR. DESAI: And, Your Honors, I have with me
`in- house counsel for BASF Tanuja Garde and Anna-Lisa Gallo.
`
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`Case IPR2015-01121, IPR2015-01125 and Case IPR2015-01123,
`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`And the inventor, one of the inventors of the '662 patent,
`Ahmad Moini.
`MS. GARDNER: And just we also have in- house
`Dr. Stefen Repko from Umicore.
`JUDGE CRUMBLEY: Hi, welcome to the Board.
`So we set forth the procedure for today in our trial
`order, but just to make sure everyone is on the same page,
`each side is going to have 90 minutes of total time to present
`its argument in all four cases today.
`You can allocate your time between cases as you
`wish. We are not going to break up the transcript between the
`four cases. So we are going to enter the same transcript in the
`record of all of the cases.
`Petitioner has the burden of proving
`unpatentability and will go first. You are going to present
`your case-in- chief in all four cases before sitting, and then
`letting the Patent Owner speak. You can reserve rebuttal time
`at the beginning of your argument, if you wish. Just let me
`know, so I can set the clock, and then followed by Patent
`Owner's presentation of its case-in- chief, then followed by the
`rebuttal of the Petitioner.
`Since three hours is a long time for our reporter to
`go, I think we are going to try and take a break somewhere in
`the middle. We will find an appropriate time to do that, and
`we can stretch our legs.
`
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`Case IPR2015-01121, IPR2015-01125 and Case IPR2015-01123,
`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`
`So I note that both parties submitted demonstrative
`exhibits. I want to make a couple quick points on those.
`First, we received objections from Petitioner to a
`couple of Patent Owner's demonstratives; is that correct?
`MS. GARDNER: Yes.
`JUDGE CRUMBLEY: As I understand it, those are
`based on the fact that they rely on expert testimony to which
`you have filed a motion to exclude?
`MS. GARDNER: Correct, Your Honor.
`JUDGE CRUMBLEY: So we're not going to
`sustain that objection at this time because we haven't ruled on
`the motion to exclude. I think it is within our ability to not
`rely on those slides, if we decide to grant the motion to
`exclude.
`
`And then, second, I see that the Patent Owner has
`submitted a confidential version, as well as a public version of
`its demonstrative slides?
`MR. DESAI: That's correct.
`JUDGE CRUMBLEY: All right. So there is no
`motion to seal with those?
`MR. DESAI: That's correct. I think we intend to
`use the version in public here today.
`JUDGE CRUMBLEY: Okay. And that's what I
`was going to point out to you. It is an open hearing,
`obviously.
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`Case IPR2015-01121, IPR2015-01125 and Case IPR2015-01123,
`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`
`MR. DESAI: Right.
`JUDGE CRUMBLEY: So I assume what you are
`going to put up on the screen is a non- confidential version and
`just have us refer to the confidential to the extent that we need
`to?
`
`MR. DESAI: That's right.
`JUDGE CRUMBLEY: All right. And I think you
`can discuss the confidential information without actually
`revealing it, you know, point us to it, and then we will have it
`up here and can look at it.
`And then after the hearing I think we will have to
`decide what we're going to do with the confidential slides. It
`may make sense to expunge them, since they are not evidence
`anyway, they are just here for your -- the purposes of your
`argument.
`MR. DESAI: I think that's right, Your Honor.
`And, actually, I may not even put those slides up at the end of
`the day.
`
`JUDGE CRUMBLEY: I think it was just one slide
`that had the information on it?
`MR. DESAI: It is just one slide. And I probably
`won't even put that slide up.
`JUDGE CRUMBLEY: All right. Fair enough.
`All right. Petitioner's counsel, you may begin
`when you are ready.
`
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`Case IPR2015-01121, IPR2015-01125 and Case IPR2015-01123,
`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`
`How much time would you like to reserve?
`MS. GARDNER: I would like to reserve 45
`minutes, please.
`JUDGE CRUMBLEY: Okay.
`MS. GARDNER: Good afternoon. Elizabeth
`Gardner for Umicore.
`We have four IPRs pending on two patents, the
`'662 patent and the '203 patent. Thank you.
`We have set forth various grounds, combination on
`the '662 patent of Zones and Maeshima, and Maeshima and
`Breck, and then a second Breck. I am going to focus most of
`my comments on the first ground on the '662 patent, Zones and
`Maeshima, as well as the similar combinations, Zones and
`Maeshima for the '203 patent.
`Just going through the patent claims themselves,
`the broadest claim in the '662 patent is directed to a catalyst.
`It comprises an aluminosilicate zeolite having a CHA crystal
`structure that is one element. There is a range set forth of
`silica to alumina of 15 to 150 and an atomic ratio of copper to
`aluminum from 0.25 to 1.
`The only functional property-related limitation
`expressly recited in this claim and in the claims of this patent
`is that the catalyst needs to be effective to promote the
`reaction of ammonia with nitrogen oxides to form nitrogen and
`H2O selectively.
`
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`Case IPR2015-01121, IPR2015-01125 and Case IPR2015-01123,
`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`
`And just as a matter of reference, that last
`limitation was added during reexamination to narrow the
`claims. That limitation does not similarly appear in the '203
`patent, which is directed to the method of reducing oxides of
`nitrogen. As you will see, there is no ammonia limitation in
`this claim. This patent was not involved in the reexamination.
`But it similarly is directed to basically using that
`identical catalyst for reducing nitrogen oxides in an exhaust
`stream with a range of silica to alumina and a range of copper
`to aluminum set forth.
`So before we get into the prior art, I just wanted to
`step back here because there is really not much set forth in
`BASF's briefs to rebut the prima facie case of the claim
`elements being found in the prior art.
`Instead, BASF highlights certain alleged properties
`that it says are contained or exhibited by its catalysts. BASF
`argues, although this last limitation of claim 1 was added and
`that only means what it says, and the Board has construed this
`limitation -- I'm sorry, my pointer doesn't work to point to the
`language -- but the Board has construed the claim such that
`that last limitation after the comma means what it says,
`nothing further.
`BASF, nevertheless, argues that the Board must
`consider the properties, and not that property, the property
`that is expressly recited and possibly inherent, but the
`
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`Case IPR2015-01121, IPR2015-01125 and Case IPR2015-01123,
`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`property of improved hydrothermal resistance, improved
`resistance to aging, improved low temperature activity.
`And it is not even clear, because when you look at
`BASF's papers, they don't say exactly what property we're
`even talking about, at what temperature, at what time, whether
`they are talking about it from the perspective of motivation to
`combine, unexpected results, or whether it is something that
`this claim must actually have shown to exist in the prior art.
`So let me first go to the legal construct that we're
`operating in here. BASF cites In re Papesch. They did this
`during the reexamination. They did it again in their
`preliminary papers, and in also the briefing that we're looking
`at here, arguing that these properties, these unspecified, vague
`properties of improved resistance to hydrothermal aging,
`improved low temperature activity are inherent in this claim
`because it is inherent in the structure.
`They cite In re Papesch. In re Papesch is a
`long- standing case that basically says a compound, like an
`organic chemical compound, is inseparable from its properties.
`That is not this claim. This is a composition claim. There is
`nothing inherent.
`And as you look at the data and you look at the
`examples, the resistance to hydrothermal aging, the improved
`properties in activity, are all over the place, depending upon
`
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`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`what silica-to- alumina ratio you have, what
`copper-to- aluminum amount you have.
`So those -- that line of cases where BASF is trying
`to shoehorn these properties in the claim as a claim
`requirement do not apply. Instead, the cases that apply to this
`claim, this claim is a composition of matter, very similar to
`long lines of cases out of the CCPA and the Federal Circuit
`directed to things like alloy compositions with ranges of
`alloying elements.
`We have shown in our prima facie case in all four
`petitions that this composition of matter is shown in the prior
`art where the prior art and the claim compositions have ranges
`that overlap.
`And in those circumstances, the law is very clear
`that where claimed ranges overlap, the prima facie case is
`made out of obviousness. It is BASF's burden to prove
`secondary considerations, such as unexpected results, or no
`motivation to combine.
`So just to be clear --
`JUDGE CRUMBLEY: Counsel, how do you square
`that analysis you just gave us with the Federal Circuit's
`decision in Magnum Oil that was issued this week that said
`that the burden does not shift to the Patent Owner on the
`Graham factors in an IPR?
`
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`Case IPR2015-01121, IPR2015-01125 and Case IPR2015-01123,
`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`
`MS. GARDNER: I don't think I have seen that
`case this week. Maybe we can take a look at it and we can
`discuss it in response. But I don't think that that case or
`anything like it was submitted.
`In terms of whose burden it is, it is my
`understanding that it is BASF's burden to come forward. It is
`still BASF's burden to come forward with the evidence and
`evidence that is commensurate in scope with the claims on
`secondary considerations, whether this case may say once that
`evidence is in front of us and before us, it may be the ultimate
`burden of the challenger, as it is the burden of the challenger
`to prove invalidity by clear and convincing evidence, but what
`we have here -- and we will get to this later in the presentation
`-- we don't have that evidence of these properties that has been
`brought forward.
`BASF argues that all of this research was done,
`you know, 900 screening examples. Where are those
`examples? Where is that data?
`We have a Ford paper with some sample that Ford,
`a customer of BASF in an advertising article, says performs
`better than something else. One sample of one chabazite with
`one copper-to- aluminum ratio and one range of SAR, one SAR
`value, one.
`We have Moini's declaration that says -- and Moini
`is one of the inventors. He -- he didn't run tests. He hasn't
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`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`produced his data. He has some samples that a colleague gave
`him. We don't know how they are prepared.
`They are not commensurate in scope with the
`claims. And we -- so we don't have that evidence of
`unexpected results that has been brought forward by BASF for
`us to even assess. It is just not here.
`Moving on to the prior art, and I do want to talk --
`I do want to get back to secondary considerations later,
`because I think this case, we were expecting this case to be
`about BASF's evidence of secondary considerations, but BASF
`in its responsive papers highlights the improved hydrothermal
`stability problems also in the context of what is going on in
`the prior art. So I would like to talk about -- I would like to
`talk about that a little bit.
`Before we get to that, I would like to summarize
`the prior art that we have highlighted in our papers and that
`came out during our cross- examination of BASF's witnesses.
`So just from the get- go, synthetic and natural
`zeolites and their use in reactions to reduce NOx in the
`presence of ammonia is already known in the art. BASF
`admits that in the patent.
`And Dr. Tsapatsis, BASF's expert, says and agrees
`that chabazite was known. Here we have some more testimony
`from Dr. Tsapatsis that as of 2007, the priority date is
`February 2007, one of ordinary skill in the art would have
`
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`Case IPR2015-01121, IPR2015-01125 and Case IPR2015-01123,
`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`been aware of more than just natural chabazite. They would
`have been aware of higher SAR value chabazites, such as those
`disclosed in the range of 30 to 50. And that's a known
`material.
`
`It was known to exchange metal ions into the
`zeolite framework to make a zeolite active for NOx. So we
`know high SAR chabazites. We know zeolites are active for
`reducing NOx. We know putting metals into the framework
`improve their activity, that activity being the NOx reduction
`activity.
`
`And Dr. Tsapatsis also admits that the range of --
`the range of copper to aluminum that you would seek to
`achieve would be known.
`I think it is very helpful that one of the papers that
`BASF has brought to the Board's attention, which is an article
`by Park, also highlights -- this is Exhibit 2024, an article by
`Park in the relevant time period, 2006, directed to a different
`zeolite.
`
`It is not chabazite, but it is another zeolite that is
`incorporating copper to improve catalytic activity, teaching
`the incorporation of copper for the purposes of improving
`activity up to 4 percent, which is basically over the ion
`exchange maximum of copper.
`So these were all known, well-known concepts as
`of the date of BASF's invention. This is simple mathematics.
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`Case IPR2015-01121, IPR2015-01125 and Case IPR2015-01123,
`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`Dr. Tsapatsis also recognizes that it is very well-known to
`somebody of skill in the art that 100 percent ion exchange
`ratio would correlate with a 0.5 copper-to- aluminum ratio of
`the claims. This is all due to the stoichiometry of the claims.
`So the next piece is that it is also known that
`increasing the SAR value or the silica-to- alumina ratio
`improves stability. So what we have is we have in the BASF
`patent claim a chabazite zeolite, chabazite being known,
`zeolites being known as catalysts, with a SAR, S-A-R, value
`that is higher than prior, maybe some prior zeolites, but it was
`known that this is being done to give improved hydrothermal
`stability. This is known as at least as of the Breck reference
`that we cite in our papers.
`It was known to add copper and exchange copper
`into the framework up to its ion exchange maximum. This is
`known not just from the Maeshima article. It is also
`confirmed by the Park article, Dr. Lercher's testimony that one
`of ordinary skill in the art would know to add copper up to its
`ion exchange maximum to give stability.
`So this is the state of the art that we need to look
`at when we look at would it have been obvious for somebody
`to modify the Zones patent in 2007. So what is the Zones
`patent? It is our primary reference.
`It is an important reference for this case, even
`though there are a lot of references that we could have pulled
`
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`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`out on chabazite. You know, this is -- this is one closer in
`time to the time period that we're talking about.
`And it is a zeolite that has a SAR value, it says,
`greater than 10 -- oops, sorry, didn't mean to do that.
`It can be used for reducing oxides of nitrogen
`contained in exhaust gas stream. And that it can contain metal
`ions, such as cobalt, copper, or mixtures thereof.
`And here it is stressing that in an improved -- a
`preferred embodiment, the gas stream is an exhaust gas stream
`for an internal combustion engine.
`So what you have here going through Zones, what
`type of SAR values are we talking about? Typically 20 to 50,
`preferred 25 to 40. That's teaching a zeolite squarely within
`BASF's patent claims.
`Zones recognizes the art, like Dr. Lercher
`summarized, that metals may be introduced into the zeolite
`and speaks to doing this by standard ion exchange techniques.
`BASF did not invent a method for incorporating
`copper into a chabazite lattice. Their claims are not any sort
`of improvement for introducing copper into the lattice.
`In fact, the '662 patent itself refers to standard ion
`exchange techniques being used. This was already recognized
`by Zones, similarly pointed out by Park in a different zeolite,
`well-known phenomenon.
`
`
`
`15
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`
`
`Case IPR2015-01121, IPR2015-01125 and Case IPR2015-01123,
`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`
`What we don't have expressly present in Zones is
`saying: Oh, by the way, when I say add copper or one of these
`other metals, I mean add it in the way everybody knows to add
`it, up to its ion exchange maximum, because that's what's
`going to give me the best activity. It doesn't say that.
`But that is the understanding of one of ordinary
`skill in the art. We had Dr. Lercher's testimony about this.
`Dr. Tsapatsis can't dispute it. And we have cited the
`Maeshima reference, because Maeshima really says it directly.
`It is not just for chabazites. It is for all zeolites,
`that this is the amount of metal loading that you would try to
`get into the zeolite to improve its catalytic NOx reduction
`activity.
`
`Maeshima also adds that we're not just talking
`about any sort of reduction, we're talking about reduction in
`the presence of ammonia. And Maeshima also points out that
`it is going to be an SCR catalyst. It is going to have the
`activity to reduce oxides of nitrogen. And this is used
`generally in zeolites. By the way, it includes chabazites here.
`So we don't have any of the -- we don't have any of
`the issues by looking at -- we could look at many references to
`say one of ordinary skill in the art would know how much
`copper to add to Zones when Zones says you can add copper.
`And during the reexamination I think Johnson
`Matthey pointed to references with respect to other zeolites,
`
`
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`Case IPR2015-01121, IPR2015-01125 and Case IPR2015-01123,
`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`and there was some criticism that, oh, that's a different crystal
`structure, so that makes the whole thing more complicated, but
`here this is a teaching that you do this with chabazite too.
`There is nothing different about chabazites.
`JUDGE ABRAHAM: I have a question for you. I
`apologize, but it is about the Zones reference.
`MS. GARDNER: Yes.
`JUDGE ABRAHAM: Does it talk about the
`reduction of NOx with, in the presence of ammonia
`specifically?
`MS. GARDNER: Well, what Zones talks about,
`and we will go to the passage that you are referring to, it is at
`the bottom of column 1, when it says reduction of oxides of
`nitrogen contained in the gas stream in the presence of
`oxygen, and it also at the bottom talks about the gas stream of
`an internal combustion engine, at this period of time -- and
`this can be seen when you look at all of the references that
`BASF has cited -- what you are talking about here is either
`some hydrocarbon reduction or ammonia-type reduction.
`And as you will see in BASF's slides, they point
`out that in a Zones declaration presented during
`reexamination, Stacey Zones highlighted that when I said
`reduction of oxides of nitrogen, what I mean is it could be any
`of this list of things.
`
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`Case IPR2015-01121, IPR2015-01125 and Case IPR2015-01123,
`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`
`And it is a very small list. And one of them is
`ammonia reduction.
`So it is not expressly stated there, but it is
`understood insofar as there is like only a small group of
`reductants that we're talking about that could be used. And
`we're talking about an internal combustion engine, which
`implies a hydrocarbon or nitrogen reductant.
`And, moreover, and we don't really make this point
`in our papers, but I feel that I have to point it out, this last
`limitation of claim 1, the catalyst effective to promote the
`reaction of ammonia with nitrogen oxides to form nitrogen and
`the H2O selectively, is a probably -- and BASF would argue it
`is -- an inherent feature of these catalysts.
`And by putting that inherent feature expressly in
`the claim, does not even give it more patentable weight than if
`it weren't there. So what I mean by that, there are a couple of
`cases that highlight this.
`JUDGE CRUMBLEY: Just to understand, what I
`think you are saying is everything prior to the catalyst
`effective to limitation, every catalyst that falls within those
`numerical requirements would in your view have the property
`of being effective to promote the reaction of ammonia with
`nitrogen oxides?
`MS. GARDNER: That's -- that's correct.
`
`
`
`18
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`
`Case IPR2015-01121, IPR2015-01125 and Case IPR2015-01123,
`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`
`JUDGE CRUMBLEY: Do we have evidence in the
`record that the entire scope of everything preceding it has that
`property?
`
`MS. GARDNER: No. And that is why we're not
`necessarily -- we haven't really made this argument. We have
`pointed to the fact that Zones definitely teaches ammonia
`reduction by virtue of the fact that there is only, you know, a
`couple of different reductants that one could use.
`So one reading Zones, particularly reading Zones
`in the field of diesel engine exhaust would understand
`ammonia being one of these reductants. It is throughout all of
`the literature that BASF has cited to.
`But I definitely want to draw the Board's attention
`to a case that is not only on point on this issue but on point on
`so many issues, which is the Alcon Research v. Apotex case.
`And this is a case in which the claim was directed
`towards a -- towards using a compound that I am not going to
`try to pronounce, so we will call it compound X, for doing
`something to mask cells in humans.
`And the prior art taught an overlapping
`composition to -- used in guinea pigs for an antihistamine.
`The claim was not even as simple as this to the catalyst itself.
`It was to a method of affecting these masked cells by using
`compound X with overlapping claim ranges to the prior art
`claim for use as an antihistamine.
`
`
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`Case IPR2015-01121, IPR2015-01125 and Case IPR2015-01123,
`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`
`And the patentee argued: Well, there would be a
`teaching away. There is no safety that shows that you can use
`it in humans. There is no showing that it would be useful for
`use to control these masked cells; you know, therefore, not
`obvious. And the District Court agreed. The Federal Circuit
`reversed.
`
`So even though it was a method for doing
`something to masked cells, the Federal Circuit held that
`overlapping composition with the prior art composition is
`sufficient to show obviousness, absent unexpected results and
`that sort of thing, because that antihistamine compound from
`the prior art would inherently have that effect on masked cells.
`So here, BASF argues that although these features
`are inherent, not just the one that is recited here, but, you
`know, the hydrothermal stability and the load temperature
`activity and that sort of thing, but to the extent they are
`inherent, they are also inherent for purposes of the prior art.
`JUDGE ABRAHAM: Do you happen to have a cite
`for that case?
`MS. GARDNER: Yes. It is 687 F.3d 1362. And,
`again, we are not really relying on saying this is not a
`meaningful limitation. We didn't brief this last limitation as
`not, you know, not having meaning. We argued this limitation
`is clearly taught by the cited references that we rely on.
`
`
`
`20
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`
`
`Case IPR2015-01121, IPR2015-01125 and Case IPR2015-01123,
`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`
`And we have cited the Alcon Research case for a
`different purpose because there is so much in this case that is
`so similar to the facts at bar, we actually cited this case for a
`different proposition, which is it is not necessary for the
`challenger to show that obviousness -- that the combination
`for obviousness needs to have the same motivation as the
`motivation of the patentee.
`So in that case, the argument was that there was no
`motivation to use this overlapping composition to have the
`effect on masked cells. In fact, there is all sorts of teaching
`away. And the Federal Circuit said it doesn't matter what the
`patentee's motivation would be, the motivation is sufficient as
`long as there is a motivation in the prior art.
`And Mr. Herman is pointing me to make clear what
`this last limitation means when we argued it means only what
`it says, BASF agreed, no construction was necessary. The
`Board said no construction is necessary.
`All it is saying is that it has to be effective to -- to
`promote the reaction of ammonia with nitrogen to form
`nitrogen and H 2O selectively, which means it has to have that
`reaction. It doesn't have to say how much. It doesn't -- it
`doesn't say at what temperature.
`Anyway, so I -- I raise this point because there is
`-- there is some serious issue as to whether there should be
`much focus on that last limitation at all.
`
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`Case IPR2015-01121, IPR2015-01125 and Case IPR2015-01123,
`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`
`And, importantly, I raise it because that limitation
`was added during reexamination. It doesn't appear at all in the
`'203 patent, at least in the broadest claim, there is no
`requirement for the presence of ammonia.
`So, in other words, if the Board were to say that
`that is not a meaningful limitation, it is inherently met as soon
`as you put it in the nitrogen stream.
`JUDGE CRUMBLEY: Let me ask you a slightly
`different question with that limitation. How is it at all
`relevant to an obviousness analysis in the sense that does a
`person of ordinary skill of the art at the time of the invention
`need to recognize that effectiveness? Because if it is inherent,
`then it is going to satisfy that, whether it was recognized in
`the art at the time or not.
`MS. GARDNER: That's correct. And that's a good
`question. That's exactly the question that the Alcon case
`answered, because the prior art actually -- the prior art
`suggested that it wouldn't be effective.
`So there is this like teaching away, and it was
`expressly recited in the claim. You are doing this treatment
`effective to bring about this result.
`And the Federal Circuit said it didn't matter
`because it would inherently happen once you applied that
`application to the eye.
`
`
`
`22
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`
`Case IPR2015-01121, IPR2015-01125 and Case IPR2015-01123,
`IPR2015-01124
`Patent 7,601,662 B2, and Patent 8,404,203 B2
`
`
`JUDGE CRUMBLEY: Right. But then isn't the
`secondary question that even if you don't have to show that it
`was recognized in the art as having that property, you do have
`to show that it has that property?
`MS. GARDNER: You do have to show that it has
`that property. That is correct.
`JUDGE CRUMBLEY: And what evidence do we
`have in the record to show that inherently when you satisfy the
`other limitations of this claim, you satisfy the catalyst
`effective limitation?
`MS. GARDNER: I, I -- this is why we did not
`present the argument in this way, because we don't have --
`unfortunately we don't have all this data that BASF says they
`generated.
`So we can't show that every single thing that falls
`within the scope of the claim is an effective ammonia
`reductant. And we also can't say everything that falls within
`the scope of the claim is resistant to hydrothermal aging and
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