UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`UMICORE AG & CO. KG,
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`Petitioner
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`Patent No. 8,404,203
`Issue Date: March 16, 2013
`Title: PROCESS FOR REDUCING NITROGEN OXIDES USING COPPER
`CHA ZEOLITE CATALYSTS
`_________________________________________________________________
`
`DECLARATION OF JOHANNES A. LERCHER, PH.D.
`
`
`Case No. IPR2015-001123
`__________________________________________________________________
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`Umicore AG & Co. KG
`Exhibit 1008
`Page 1 of 97
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`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`UMICORE AG & CO. KG,
`
`Petitioner
`
`
`Patent No. 8,404,203
`Issue Date: March 16, 2013
`Title: PROCESS FOR REDUCING NITROGEN OXIDES USING COPPER
`CHA ZEOLITE CATALYSTS
`_________________________________________________________________
`
`DECLARATION OF JOHANNES A. LERCHER, PH.D.
`
`
`Case No. IPR2015-001123
`__________________________________________________________________
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`Umicore AG & Co. KG
`Exhibit 1008
`Page 1 of 97
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`I.
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`II.
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`Table of Contents
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`BACKGROUND AND QUALIFICATIONS ..................................................... 1
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`ASSIGNMENT AND MATERIALS REVIEWED ........................................... 3
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`III. OVERVIEW OF THE ’203 PATENT .................................................................. 5
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`IV. CLAIMS OF THE ’203 PATENT .......................................................................... 7
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`V.
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`CLAIM CONSTRUCTION .................................................................................. 12
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`A.
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`B.
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`C.
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`“Catalyst” ....................................................................................................... 12
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`“[Z]eolite having the CHA crystal structure” ........................................... 13
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`“A process for the reduction of oxides of nitrogen contained in a
`gas stream in the presence of oxygen” ...................................................... 14
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`VI.
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`INVALIDITY ANALYSIS .................................................................................... 17
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`Person of Ordinary Skill in the Art ............................................................ 18
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`Scope and Content of the Prior Art ........................................................... 19
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`Zones and Maeshima Render Claims 1, 14, 15, 17-22, 26, and 27
`Obvious. ........................................................................................................ 19
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`Zones, Maeshima, and Patchett ’843 Render Claims 2-13, 16, 23-
`25, and 28-31 Obvious ................................................................................. 41
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`Purported “Secondary Considerations” .................................................... 67
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`There Is Nothing Unexpected or Critical About the Claimed
`Ranges ............................................................................................................ 70
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`I.
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`I, Johannes A. Lercher, Ph.D, declare as follows:
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`BACKGROUND AND QUALIFICATIONS
`1.
`I am currently a Professor in the Department of Chemistry at the
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`Technische Universität München, located in Munich, Germany.
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`2.
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`I studied chemistry at the Vienna University of Technology from 1972-
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`1978, and engaged in graduate work in chemistry at the same university from 1978-
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`1980. I received a doctorate degree in chemistry from the Vienna University of
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`Technology in 1981. My thesis was entitled “Acid Sites on Al2O3/MgO and
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`Al2O3/SiO2 Mixed Metal Oxides.” In 1985, I obtained the habilitation (venia
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`docendi) in physical chemistry.
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`3.
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` Starting during my academic studies and continuing until 1993, I was a
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`lecturer and an Associate Professor in Chemistry at the Vienna University of
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`Technology.
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`4.
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`From 1993 to 1998, I was a full Professor for Catalytic Materials and
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`Processes at the Department of Chemical Technology of the University Twente, the
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`Netherlands
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`5.
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`I have been a Professor at the Technische Universität München since
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`1998.
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`6. My research lies in the areas of fundamental and applied aspects of oxide
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`and molecular sieves based sorption and catalysis, the design of complex
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`multifunctional catalysts, in situ characterization of catalytic processes and developing
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`new routes to activate, convert and functionalize hydrocarbons in petroleum and
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`petrochemical processes.
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`7.
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`Over the course of my career, I have taught classes entitled “Industrial
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`Catalytic Reactions and Reaction Mechanisms,” “Heterogeneous Catalysis I: Theory
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`and Model Reactions,” “Heterogeneous Catalysis II: Application in Industrial
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`Processes and Environmental Protection,” “Physical Chemistry,” “Thermodynamics
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`of Phases,” “Kinetics and Catalysis,” “Industrial Catalysis,” “Environmental
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`Catalysis,” “Reaction Technology and Catalysis,” “Industrial Processes I – Energy,”
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`“Industrial Processes II – Chemical Synthesis,” and “Chemically Functional
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`Materials.”
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`8.
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`In addition to my professorial positions, I have also had other university
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`titles and have been part of several professional organizations.
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`9.
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`In particular, I was the Chairman of the Department of Chemistry at the
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`Technische Universität München from 2000 to 2003, was the President of the
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`International Zeolite Association from 2001 to 2004, and am currently President of
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`the Federation of European Catalysis Societies.
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`10. My research activity has been published in over 480 scientific papers in
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`international journals. A listing of my publications is included in my curriculum vitae.
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`11.
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`I am currently the Editor-in-Chief of the Journal of Catalysis, and am a
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`member of the board of several other catalysis journals. Further, I am on the editorial
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`board of the book series, Catalysis Book Series: Theory and Applications (Royal
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`Society of Chemistry).
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`12. A copy of my curriculum vitae, which provides further details regarding
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`my academic background, professional experience, publications, teaching experience,
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`awards I have received, and organization memberships, is attached as Exhibit A.
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`II. ASSIGNMENT AND MATERIALS REVIEWED
`13.
`I submit this declaration in support of Umicore AG & Co. KG’s
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`(“Umicore’s”) Petition for Inter Partes Review of U.S. Patent No. U.S. 8,404,203
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`(“the ’203 patent”), Case IPR2015-01123.
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`14.
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`15.
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`I am not an employee of Umicore or any affiliate or subsidiary thereof.
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`I am being compensated for my time at a rate of 400 euros per hour.
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`My compensation is in no way dependent upon the substance of the opinions I offer
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`below, or upon the outcome of Umicore’s petition for inter partes review (or the
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`outcome of such an inter partes review, if a trial is initiated).
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`16.
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`I have been asked to provide certain opinions relating to the patentability
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`of the claims of the ’203 patent. Specifically, I have been asked to provide my
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`opinion regarding (i) the level of ordinary skill in the art to which the ’203 patent
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`pertains and (ii) the patentability of claims 1-31.
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`17. The opinions expressed in this declaration are not exhaustive of my
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`opinions on the patentability of claims 1-31. Therefore, the fact that I do not address
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`a particular point should not be understood to indicate any agreement on my part that
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`any claim otherwise complies with the patentability requirements.
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`18.
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`In forming my opinions, I have reviewed (i) the ’203 patent and its
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`prosecution history; and (ii) prior art to the ’203 patent, including:
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`•
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`•
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`•
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`•
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`U.S. Patent No. 6,709,644 to Zones et al. (“Zones”);
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`U.S. Patent No. 4,046,888 to Maeshima et al.(“Maeshima”);
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`U.S. Patent App. 2006/0039843 to Patchett et al. (“Patchett
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`’843”); and
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`U.S. Patent App. 2005/0031514 to Patchett et al. (“Patchett
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`’514”).
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`19.
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`I have also reviewed all of the following additional materials in
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`connection with the preparation of this declaration:
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`•
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`•
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`•
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`•
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`•
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`•
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`U.S. Patent No. 7,601,662 to Bull et al. (and its prosecution
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`history);
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`U.S. Patent No. 4,544,538 to Zones;
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`U.S. Patent No. 4,503,023 to Breck, deceased et al.;
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`Dedecek et al., “Siting of the Cu+ Ions in Dehydrated Ion
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`Exchanged Synthetic and Natural Chabasites: a Cu+
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`Photoluminescence Study” Microporous and Mesoporous
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`Materials, Vol. 32, pp. 63-74 (1999);
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`U.S. Patent No. 4,961,917 to Byrne;
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`U.S. Patent No. 5,516,497 to Speronello et al.;
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`•
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`Ishihara et al., “Copper Ion-Exchanged SAPO-34 as a
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`Thermostable Catalyst for Selective Reduction of NO with C3H6,”
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`•
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`•
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`169 Journal of Catalysis 93-102 (1997);
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`U.S. Patent No. 4,297,328 to Ritscher et al.;
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`Chung, S.Y. et al., “Effect of Si/Al Ratio of Mordenite and ZSM-
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`5 Type Zeolite Catalysts on Hydrothermal Stability for NO
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`Reduction by Hydrocarbons,” Studies in Surface Science and
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`Catalysis, vol. 130, pp. 1511-1516 (2000); and
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`•
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`Declaration of Dr. Frank-Walter Schütze.
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`III. OVERVIEW OF THE ’203 PATENT
`20. The ’203 patent names Ivor Bull, Wen-Mei Xue, Patrick Burk, R. Samuel
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`Boorse, William M. Jaglowski, Gerald S. Koermer, Ahmad Moini, Joseph A. Patchett,
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`Joseph C. Dettling, and Matthew T. Caudle as inventors.
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`21.
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` The ’203 patent states that it was filed on June 8, 2009, and issued
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`March 26, 2013. The ’203 patent also identifies itself as a division of U.S. App. No.
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`12/038,423, which was filed February 27, 2008 and issued as U.S. Patent No.
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`7,601,662. The ’203 patent also states that it “claims the benefit of priority … to U.S.
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`Provisional Application No. 60/891,835, filed on Feb. 27, 2007.” (’203 patent, 1:10-
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`14.) For purposes of this declaration, I have been asked to assume that the ’203
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`patent has an effective filing date of February 27, 2007.
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`22. The ’203 patent generally relates to “zeolites that have the CHA crystal
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`structure.” (’203 patent, 1:17-19.)
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`23. According to the ’203 patent, the catalysts are “copper CHA zeolite
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`catalysts” and can be “use[d] in exhaust treatment systems.” (’203 patent, 1:19-22.)
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`24. Before further discussing the materials and processes of the patent, the
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`’203 patent provides an overview of what it believes to be the “Background Art.”
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`(’203 patent, 1:25-55.)
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`25. As part of this overview, the ’203 patent explains that “[z]eolites are
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`aluminosilicate crystalline materials having rather uniform pore size which, depending
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`upon the type of zeolite and the type and amount of cations included in the zeolite
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`lattice, typically range from about 3 to 10 Angstroms in diameter.” (’203 patent, 1:26-
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`30.)
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`26. The patent also states that “[b]oth synthetic and natural zeolites and
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`their use in promoting certain reactions, including the selective reduction of nitrogen
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`oxides with ammonia in the presence of oxygen, are well known in the art.” (’203
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`patent, 1:30-33.)
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`27.
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`In this same “Background Art” section, the ’203 patent also states that
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`“[m]etal-promoted zeolite catalysts including, among others, iron-promoted and
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`copper-promoted zeolite catalysts, for the selective catalytic reduction of nitrogen
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`oxides with ammonia are known.” (’203 patent, 1:34-37.)
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`28. The ’203 patent then goes on to state that “[o]ne embodiment of the
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`present invention pertains to copper CHA catalysts and their application in exhaust
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`gas systems such as those designed to reduce nitrogen oxides.” (’203 patent, 1:66-2:1.)
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`29. The patent indicates that it “relates to a catalyst comprising a zeolite
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`having the CHA crystal structure and a mole ratio of silica to alumina” (which I will
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`refer to as the “SAR”) “greater than about 15” and “an atomic ratio of copper to
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`aluminum” (which I will refer to as the “Cu/Al ratio”) “exceeding about 0.25.” (’203
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`patent, 2:13-16.)
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`30. The patent indicates that its “catalyst” can be part of systems treating gas
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`streams “emanating from gasoline or diesel engines.” (’203 patent, 1:62-65.)
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`31. The specification explains that its catalyst can be coated on known types
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`of substrates, including “wall flow” or “flow through” “honeycomb” substrates. (’203
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`patent, 2:41-45.)
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`32. Other components of an exhaust gas treatment system are also
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`discussed, including an “oxidation catalyst,” a “soot filter,” and a device to add a
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`reductant like “ammonia” to an exhaust stream. (’203 patent, 5:65-6:5; 21:58-22:67.)
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`33. All of these components were well-known and routinely used as part of
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`exhaust gas treatment systems at the time the ’203 patent was filed.
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`34.
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`I have also reviewed the prosecution history of the ’203 patent.
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`IV. CLAIMS OF THE ’203 PATENT
`35. The ’203 patent includes 31 claims. Claims 1 and 26 are independent
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`claims. The remainder of the claims are dependent.
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`36. Claims 1-31 are reproduced below for reference:
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`1. A process for the reduction of oxides of nitrogen contained in a
`gas stream in the presence of oxygen wherein said process comprises
`contacting the gas stream with a catalyst comprising a zeolite having the
`CHA crystal structure and a mole ratio of silica to alumina from about
`15 to about 100 and an atomic ratio of copper to aluminum from about
`0.25 to about 0.50.
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`2. The process of claim 1, wherein the gas stream is an exhaust
`gas stream from an internal combustion engine and the catalyst is
`disposed on a honeycomb flow through substrate.
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`3. The process of claim 2, wherein the exhaust gas stream further
`comprises ammonia and at least a portion of the flow through substrate
`is coated with CuCHA.
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`4. The process of claim 2, wherein at least a portion of the flow
`through substrate is coated with Pt and CuCHA to oxidize ammonia in
`the exhaust gas stream.
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`5. The process of claim 1, wherein the gas stream is an exhaust
`gas stream from an internal combustion engine and the catalyst is
`disposed on a honeycomb wall flow substrate.
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`6. The process of claim 5, wherein the exhaust gas stream further
`comprises ammonia and at least a portion of the wall flow substrate is
`coated with CuCHA.
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`7. The process of claim 5, wherein at least a portion of the wall
`flow substrate is coated with Pt and CuCHA to oxidize ammonia in the
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`exhaust gas stream.
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`8. The process of claim 1, wherein the gas stream is an exhaust
`gas stream from an internal combustion engine and the process further
`comprises contacting the exhaust gas stream with a catalyzed soot filter.
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`9. The process of claim 8, wherein said catalyzed soot filter is
`upstream of said catalyst.
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`10. The process of claim 8, wherein said catalyzed soot filter is
`downstream of said catalyst.
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`11. The process of claim 8, further comprising contacting the
`exhaust gas stream with a diesel oxidation catalyst.
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`12. The process of claim 11, wherein said diesel oxidation catalyst
`is upstream of said catalyst comprising a zeolite having the CHA crystal
`structure.
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`13. The process of claim 12, wherein said diesel oxidation catalyst
`and catalyzed soot filter are upstream from said catalyst comprising a
`zeolite having the CHA crystal structure.
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`14. The process of claim 1, wherein the process further comprises
`adding a reductant to the gas stream.
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`15. The process of claim 14, wherein the reductant comprises
`ammonia or an ammonia precursor.
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`16. The process of claim 14, wherein the reductant comprises
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`urea.
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`17. The process of claim 15, where the mole ratio of silica to
`alumina is from about 25 to about 40.
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`18. The process of claim 15, wherein the mole ratio of silica to
`alumina is about 30.
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`19. The process of claim 15, wherein the atomic ratio of copper to
`aluminum is from about 0.30 to about 0.50.
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`20. The process of claim 15, wherein the atomic ratio of copper to
`aluminum is about 0.40.
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`21. The process of claim 15, wherein the mole ratio of silica to
`alumina is from about 25 to about 40 and the atomic ratio of copper to
`aluminum is from about 0.30 to about 0.50.
`
`22. The process of claim 15, wherein the mole ratio of silica to
`alumina is about 30 and the atomic ratio of copper to aluminum is about
`0.40.
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`23. The process of claim 15, wherein the catalyst is disposed on a
`honeycomb flow-through substrate.
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`24. The process of claim 15, wherein the catalyst is disposed on a
`honeycomb wall flow filter substrate.
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`25. The process of claim 15, wherein the gas stream is an exhaust
`gas stream from an internal combustion engine and the process further
`comprises contacting the exhaust gas stream with a catalyzed soot filter
`and an oxidation catalyst, wherein the oxidation catalyst is upstream of
`the catalyst comprising a zeolite with the CHA crystal structure and the
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`catalyzed soot filter are upstream from the catalyst comprising a zeolite
`with the CHA crystal structure.
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`26. A process for the reduction of oxides of nitrogen contained in
`a gas stream in the presence of oxygen wherein said process comprises
`adding a reductant to the gas stream and contacting the gas stream
`containing the reductant with a catalyst comprising a zeolite having the
`CHA crystal structure and a mole ratio of silica to alumina from about
`15 to about 150 and an atomic ratio of copper to aluminum from about
`0.25 to about 1.
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`27. The process of claim 26, wherein the reductant comprises
`ammonia or an ammonia precursor.
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`28. The process of claim 26, wherein the reductant comprises
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`urea.
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`29. The process of claim 26, wherein the catalyst is disposed on a
`honeycomb flow-through substrate.
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`30. The process of claim 26, wherein the catalyst is disposed on a
`honeycomb wall flow filter substrate.
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`31. The process of claim 27, wherein the gas stream is an exhaust
`gas stream from an internal combustion engine and the process further
`comprises contacting the exhaust gas stream with a catalyzed soot filter
`and an oxidation catalyst, wherein the oxidation catalyst and the
`catalyzed soot filter are upstream from the catalyst comprising a zeolite
`with the CHA crystal structure.
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`V.
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`CLAIM CONSTRUCTION
`37.
`I understand that during an IPR proceeding, claim terms are afforded
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`their broadest reasonable construction.
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`38. As a result, in rendering the opinions set forth in this declaration, I have
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`considered what a person of ordinary skill in the art would consider to be the broadest
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`reasonable construction of the ’203 patent’s claim terms.
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`39.
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`I also understand that claim terms are to be given their plain meaning
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`unless it is inconsistent with the specification.
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`40. While I understand that it is Umicore’s view that certain claims of the
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`’203 patent are indefinite, I have not endeavored to address this issue in this
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`declaration. Further, while I discuss the meaning of certain claim terms below, in
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`doing so I do not mean to imply that it is my opinion that these terms (or any other
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`term of the ’203 patent’s claims) satisfy the requirements of 35 U.S.C. § 112.
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`A.
`“Catalyst”
`41. All of the ’203 patent’s claims require a “catalyst.”
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`42. The term “catalyst” is generally understood to refer to a material that
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`facilitates or increases the rate of a chemical reaction without itself undergoing any
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`permanent change.
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`43.
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`I have reviewed the ’203 patent’s claims and was not able to clearly
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`identify what materials make up the claimed “catalyst.”
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`44. The specification, however, does provide that “a catalyst article
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`comprises a honeycomb substrate having a zeolite having the CHA crystal structure
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`deposited on the substrate.” (’203 patent, 2:59-61.) The patent goes on to explain
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`that the zeolite has “an atomic ratio of copper to aluminum exceeding about 0.25 and
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`containing an amount of free copper exceeding ion-exchanged copper.” (’203 patent,
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`2:63-65.) Further, “[t]he catalyst may further comprise a binder.” (’203 patent, 3:3-4.)
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`45.
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`In my opinion, this description in the specification along with the
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`generally understood meaning of the term indicates that the “catalyst” of the claims
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`can extend to a zeolite alone, or to the zeolite along with other materials such as the
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`substrate, free copper, and a binder. I have been asked to apply this understanding of
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`the claim term “catalyst” in assessing the prior art set forth in this petition.
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`B.
` “[Z]eolite having the CHA crystal structure”
`46. All of the claims of the ’203 patent require a “zeolite having the CHA
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`crystal structure.”
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`47. The specification explains that the “CHA crystal structure” is “defined
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`by the International Zeolite Association.” (’203 patent, 1:60-61.)
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`48.
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`“CHA” is the crystal framework type code assigned by the International
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`Zeolite Association (or “IZA”) to zeolite commonly known as “chabazite.”
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`49. The IZA provides various pertinent pieces of data for the CHA crystal
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`framework. A copy of a summary data sheet made available by the IZA is attached to
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`this declaration as Exhibit B.
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`50. Among other things, the IZA data sheet specifies the general chemical
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`formula of a chabazite crystal material: |Ca6 (H2O)40|[Al12Si24O72]-CHA. It also
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`provides structural data for the crystal itself. For instance, the CHA structure is
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`composed of “d6r” and “cha” composite building units, has a “framework” that is an
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`“AABBCC sequence of 6-rings,” and has channels that are approximately 3.8
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`Angstroms by 3.8 Angstroms in size. The IZA also provides a three-dimensional
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`drawing of the crystal structure.
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`51. Thus, it is my understanding that a “zeolite with the CHA crystal
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`structure” as claimed by the ’203 patent refers to chabazite materials with the crystal
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`structure set forth in the IZA’s data sheet for the CHA framework.
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`C.
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`“A process for the reduction of oxides of nitrogen contained in a
`gas stream in the presence of oxygen”
`52. The preamble of independent claims 1 and 26 of the ’203 patent states
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`that the claims are directed to a “process for the reduction of oxides of nitrogen
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`contained in a gas stream in the presence of oxygen.”
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`53.
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`I have been asked to assume that this preamble language limits the
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`claims of the ’203 patent and has its plain and ordinary meaning.
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`54. Based on my review of the prosecution history of the ’203 patent, it
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`appears that the Patent Owner may attempt to argue that the “process for the
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`reduction of oxides of nitrogen contained in a gas stream in the presence of oxygen”
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`limitation (or some other claim language) limits the ’203 patent’s claims to just
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`processes that exhibit certain, very specific performance characteristics.
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`55.
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`For instance, the Patent Owner has indicated that the catalysts of the
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`’203 patent have the ability to “maintain NOx conversion across a broad temperature
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`range after exposure to hydrothermal conditions.” (’203 file history, 1/24/2011
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`Amend., at p. 22.)
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`56. The Patent Owner also indicated that the ’203 patent’s catalysts exhibit
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`“high NOx conversion in the low temperature range” of 200oC to 350oC. (’203 file
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`history, 1/24/2011 Amend., 24-25.)
`
`57.
`
`In a later submission, the Patent Owner also stated that the “claimed
`
`process” purportedly requires “excellent activity at temperatures below 350oC that is
`
`maintained after hydrothermal aging,” and not just “some activity in the reduction of
`
`oxides of nitrogen.” (’203 file history, 5/1/12 Amend., at p. 13.)
`
`58.
`
`I have reviewed the ’203 patent’s claims, and do not see any limitations
`
`that require the type of performance referenced by the Patent Owner during
`
`prosecution.
`
`59.
`
`Further, in my opinion the ’203 patent’s specification does not define
`
`any claim term to require the level of performance referenced by the Patent Owner,
`
`or state that the patent does not cover materials that do not perform this way.
`
`60.
`
`In fact, based on my review of the specification, the ’203 patent provides
`
`examples of catalytic materials that employ a zeolite with the CHA crystal structure
`
`and the claimed SAR and Cu/Al ratio, yet do not exhibit “excellent activity.” For
`
`instance, the ’203 patent explains that the catalytic material of Example 1 includes a
`-15-
`
`Umicore AG & Co. KG
`Exhibit 1008
`Page 17 of 97
`
`
`
`
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`zeolite with the CHA crystal structure that has a SAR of 30 and a Cu/Al ratio of 0.3.
`
`(’203 patent, 10:45-50; Table 1.) While this material possesses the crystal structure
`
`and proportions of copper, alumina, and silica required by claims 1 and 26, the
`
`specification states that it “did not show enhanced resistance to thermal aging.” (’203
`
`patent, 11:21-26.)
`
`61.
`
`In my opinion, the prosecution history of the ’203 patent, when viewed
`
`as a whole, also does not require that the claims be limited to require the type of
`
`performance referenced by the Patent Owner.
`
`62.
`
`For instance, I have reviewed the original claims that were submitted,
`
`when the ’203 patent was filed. Some of these claims explicitly required that the
`
`catalyst “prevent thermal degradation” and “maintain NOx conversion … after
`
`hydrothermal aging.” (’203 patent file history, at 11/19/09 Prelim. Amend., pp. 4-5.)
`
`Other claims required that the “NOx conversion of the catalyst at about 200 oC after
`
`hydrothermal aging” be “at least 90% of the NOx conversion of the catalyst at about
`
`200 oC prior to hydrothermal aging,” or that the catalyst be able to reduce “at least
`
`about 90%” of nitrogen oxides “over the temperature range of about 250 oC to 450
`
`oC.” (’203 patent file history, at 11/19/09 Prelim. Amend., p. 5)
`
`63. None of these limitations are now part of the ’203 patent’s claims.
`
`Instead, the claims including these limitations were rejected during examination as not
`
`being properly described or enabled. (See ’203 patent file history, 2/26/10 Office
`
`Action, at pp. 3-4; 2/1/12 Office Action, at pp. 5-6; 7/18/12 Office Action, at pp. 2-
`-16-
`
`Umicore AG & Co. KG
`Exhibit 1008
`Page 18 of 97
`
`
`
`
`
`4.)
`
`64. With respect to the other terms in the ’203 patent’s claims, I have
`
`applied the plain and ordinary meaning of those claim terms, when comparing the
`
`claims to the prior art.
`
`VI.
`
`INVALIDITY ANALYSIS
`65.
`In my opinion, claims 1-31 of the ’203 patent are all unpatentable and
`
`invalid as obvious over the prior art.
`
`66.
`
`I understand that a patent claim is unpatentable and invalid if the subject
`
`matter of the claim as a whole would have been obvious to a person of ordinary skill
`
`in the art of the claimed subject matter as of the time of the invention at issue. I
`
`understand that the following factors must be evaluated to determine whether the
`
`claimed subject matter is obvious: (1) the scope and content of the prior art; (2) the
`
`difference or differences, if any, between each claim of the patent and the prior art;
`
`and (3) the level of ordinary skill in the art at the time the patent was filed. Unlike
`
`anticipation, which allows consideration of only one item of prior art, I understand
`
`that obviousness may be shown by considering more than one item of prior art.
`
`Moreover, I have been informed and I understand that so-called objective indicia of
`
`non-obviousness, also known as “secondary considerations,” like the following are
`
`also to be considered when assessing obviousness: (1) commercial success; (2) long-
`
`felt but unresolved needs; (3) copying of the invention by others in the field; (4) initial
`
`expressions of disbelief by experts in the field; (5) failure of others to solve the
`-17-
`
`Umicore AG & Co. KG
`Exhibit 1008
`Page 19 of 97
`
`
`
`
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`problem that the inventor solved; and (6) unexpected results. I also understand that
`
`evidence of objective indicia of non-obviousness must be commensurate in scope
`
`with the claimed subject matter.
`
`A.
`67.
`
`Person of Ordinary Skill in the Art
`I understand that a patent must be written such that it can be
`
`understood by a “person of ordinary skill” in the field of the patent.
`
`68.
`
`I understand that this hypothetical person of ordinary skill in the art is
`
`considered to have the normal skills and knowledge of a person in a certain technical
`
`field, as of the time of the invention at issue. I understand that factors that may be
`
`considered in determining the level of ordinary skill in the art include: (1) the
`
`education level of the inventor; (2) the types of problems encountered in the art; (3)
`
`the prior art solutions to those problems; (4) rapidity with which innovations are
`
`made; (5) the sophistication of the technology; and (6) the education level of active
`
`workers in the field. I also understand that “the person of ordinary skill” is a
`
`hypothetical person, who is presumed to be aware of the universe of available prior
`
`art.
`
`69.
`
`In my opinion, in February 2007, a person with ordinary skill in the art
`
`with respect to the technology disclosed by the ’203 patent would have at least a
`
`Master’s degree in chemistry or a related discipline, and have knowledge of the
`
`structure and chemistry of molecular sieves like zeolites, including factors that impact
`
`their stability and activity.
`
`-18-
`
`Umicore AG & Co. KG
`Exhibit 1008
`Page 20 of 97
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`70. Based on my experience and education, I consider myself (both now and
`
`as of February 2007) to be a person of at least ordinary skill in the art with respect to
`
`the field of technology implicated by the ’203 patent
`
`B.
`Scope and Content of the Prior Art
`71. The scope and content of the prior art as of February 2007 would have
`
`broadly extended to references relating to catalytic materials that can be used to
`
`reduce nitrogen oxides. This includes references relating to the structure and
`
`properties of zeolite catalysts, the metal loading of zeolite catalysts, and the use of
`
`catalytic materials in various different processes.
`
`72.
`
`In my opinion, one of ordinary skill in the art as of February 2007 would
`
`have considered Zones, Maeshima, Patchett ’843, and Patchett ’514 to be within the
`
`same technical field as the subject matter set forth in the ’203 patent. Further, all of
`
`these references would be considered highly relevant prior art to the claims of the
`
`’203 patent.
`
`C.
`
`73.
`
`Zones and Maeshima Render Claims 1, 14, 15, 17-22, 26, and 27
`Obvious.
`In my opinion claims 1, 14, 15, 17-22, 26, and 27 of the ’203 patent are
`
`obvious over Zones and Maeshima.
`
`74. Zones indicates on its face that it issued March 23, 2004. Because this is
`
`more than one year before February 27, 2007, I understand that Zones is prior art to
`
`the ’203 patent pursuant to 35 U.S.C. § 102(b).
`
`-19-
`
`Umicore AG & Co. KG
`Exhibit 1008
`Page 21 of 97
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`
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`75. Maeshima indicates on its face that it issued September 6, 1977. Because
`
`this is more than one year before February 27, 2007, I understand that Maeshima is
`
`prior art to the ’203 patent pursuant to 35 U.S.C. § 102(b).
`
`76. While Zones served as a basis of rejection during prosecution of the ’203
`
`patent, Maeshima is not listed on the face of the ’203 patent as “References Cited.”
`
`As a result, I understand that the combination of Zones and Maeshima was not
`
`considered by the examiner during prosecution of the ’203 patent.
`
`77. Zones relates to “aluminosilicate” zeolites, including a zeolite known as
`
`“SSZ-62,” and an “improved process for the reduction of oxides of nitrogen
`
`contained in a gas stream in the presence of oxygen” using these zeolites. (Zones,
`
`1:7-15; 1:54-67.)
`
`78. According to Zones, its process “may be conducted in the presence of a
`
`stoichiometric excess of oxygen” and can be applied to the “exhaust stream of an
`
`internal combustion engine.” (Zones, 1:64-67.)
`
`79. The zeolite utilized in Zones’ process should have “the CHA crystal
`
`structure” and “a mole ratio greater than about 10 of silicon oxide to aluminum
`
`oxide.” (Zones, 1:31-34.) More specifically the “SiO2/Al2O3” ratio is “[t]ypical[ly]”
`
`20-50 and “preferred” to be 25-40. (Zones, Table 1.) A specific example of “SSZ-
`
`62” is provided where the “silica/alumina mole ratio of the SSZ-62 product is 22.”
`
`(Zones, 6:30-31.)
`
`80. Zones also states that “[t]he zeolite may contain a metal or metal ions
`-20-
`
`Umicore AG & Co. KG
`Exhibit 1008
`Page 22 of 97
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`
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`(such as cobalt, copper or mixtures thereof) capable of catalyzing the reduction of the
`
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