UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`UMICORE AG & CO. KG
`
`Petitioner
`
`v.
`
`BASF CORPORATION
`
`Patent Owner
`
`Case IPR2015-01124
`U.S. Patent 8,404,203
`__________________________________________________________________
`
`PETITIONER’S OPPOSITION TO BASF’S MOTION FOR LATE
`SUBMISSION OF SUPPLEMENTAL INFORMATION
`__________________________________________________________________
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`UMICORE AG & CO. KG
`
`Petitioner
`
`v.
`
`BASF CORPORATION
`
`Patent Owner
`
`Case IPR2015-01124
`U.S. Patent 8,404,203
`__________________________________________________________________
`
`PETITIONER’S OPPOSITION TO BASF’S MOTION FOR LATE
`SUBMISSION OF SUPPLEMENTAL INFORMATION
`__________________________________________________________________
`
`
`
`Umicore respectfully opposes BASF’s motion for the late entry of
`
`supplemental evidence. Despite the fact that the parties have filed their briefs and
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`completed cross-examination of each other’s witnesses, BASF now belatedly seeks
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`to interject into these IPRs additional evidence, U.S. 2016/0038875 (“the ’875
`
`publication”) (Ex. 2036). This evidence was admittedly known to BASF for over
`
`two months, and was known or should have been known to BASF for two years.
`
`BASF has not made either of the showings required by § 42.123(b). Most
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`importantly, it has not even attempted to explain why the ’875 publication could
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`not have been reasonably introduced earlier in the proceeding. BASF admits that it
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`delayed for more than two months after it purports to have learned of the ’875
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`publication. BASF provides no explanation or excuse for this delay. Moreover, an
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`international version of the ’875 publication was available long before BASF’s
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`briefs were due and could have been cited in any of the BASF’s IPR filings. Not
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`only is BASF’s motion untimely, but the “interests of justice” do not require
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`admission of the ’875 publication. Contrary to BASF’s attorney arguments, the
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`disclosure of the publication is consistent with Umicore’s positions in this IPR.
`
`I.
`
`BASF Inexplicably Delayed for More than Two Months
`
`BASF claims that it “first learned of the 875 Publication when it was
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`published in English on February 11, 2016.” (BASF Motion at 2.) BASF did not,
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`-1-
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`
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`however, immediately raise any purported relevance of the publication to this IPR.
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`Instead, it delayed more than two months until April 21, 2016. (See id.)
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`This two month delay occurred during a very critical period. During this
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`time, BASF filed its response brief. Umicore assessed BASF’s opposition briefing
`
`and exhibits, deposed BASF’s technical expert witness (who offered opinions on
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`unexpected results), and was heavily engaged in finalizing its own IPR replies. By
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`waiting to raise the ’875 publication, BASF deprived Umicore of the ability to
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`cross examine BASF’s expert on the publication.1 It also circumvented the
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`Board’s briefing rules, which provide BASF with only a single response brief.
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`§ 42.123(b) requires BASF to show why it “reasonably could not have
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`obtained” the supplemental evidence earlier. BASF makes no attempt to explain
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`its delay. This alone justifies denial of BASF’s motion. See, e.g., Illumina v.
`
`Columbia Univ., IPR2012-0006, Paper 87 at 4-5 (Oct. 30, 2013) (finding a motion
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`to submit supplemental information untimely because it was not filed “when [the
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`1 BASF notes that Umicore cancelled three depositions after being informed of the
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`’875 publication issue. (BASF Motion at 8.) These were depositions of BASF
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`fact witnesses. Umicore did depose BASF’s only technical expert witness on April
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`13, 2016. BASF waited over a week after that long-scheduled deposition before
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`raising the ’875 publication.
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`-2-
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`
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`movant] first became aware that the [information] allegedly presented a contrary
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`… position”); see also Arctic Cat, Inc. v. Polaris Indus., Inc., IPR2014-01427,
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`Paper 40 at 2-3 (Aug. 20, 2015).
`
`II. The ’875 Publication’s Disclosure Has Been Available Since 2014
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` Next, while the ’875 publication itself published in 2016, it is simply the
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`U.S. national stage of an earlier international application. (See generally Ex. 2036
`
`at cover.) That international application published October 9, 2014 as WO
`
`2014/161860 and has been publicly available for almost two years. (See Ex.
`
`1121.) BASF could have (but failed to) cite the disclosure in its August 2015
`
`preliminary response, during the depositions of Umicore’s witnesses in January
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`2016, or even in its February 2016 response.
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`BASF argues that Umicore is attempting to “shift[] the burden to BASF to
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`exhaustively search for inconsistent positions” by noting the earlier availability of
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`the ’875 publication’s disclosure. (BASF Motion at 7.) But, §42.123(b) requires
`
`BASF to show both that it would be in the interests of justice to admit its late
`
`evidence and that it could not have reasonably located the evidence earlier. BASF
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`has made no attempt to explain what efforts it took to locate pertinent evidence.
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`Furthermore, an “exhaustive” search was not even required to locate WO
`
`2014/16186. As noted during the teleconference with the Board, this publication is
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`one of only a handful that uses the term “chabazite,” identifies Umicore as the
`
`-3-
`
`
`
`assignee, and names Mr. Schuetze (a Umicore witness deposed by BASF) as the
`
`inventor. Further, since BASF and Umicore directly compete in the automotive
`
`catalyst field, it would be highly unusual if BASF were not monitoring for patents
`
`and published applications assigned to Umicore, including international patents, as
`
`they become available. Such international patents are of interest to BASF as it
`
`routinely files international versions of its own patents. Indeed, BASF does not
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`even state in its motion that it was not already in possession of WO 2014/161860
`
`prior to the filing of its response brief in February 2016. Absent some showing of
`
`the reasonableness of its actions, BASF’s motion must be denied. See Standard
`
`Innovation v. Lelo, Inc., IPR2014-00148, Paper 39 at 3 (Feb. 20, 2015) (denying
`
`motion to submit supplemental information because the movant did “not explain[]
`
`adequately why it did not obtain or offer to submit [the] information earlier”).
`
`III. The ’875 Publication Does Not “Contradict” Umicore’s Positions
`
`BASF is also wrong that the ’875 publication “directly contradicts
`
`Umicore’s contention that the claimed Cu/Al ratio and SAR in the 203 Patent are
`
`insignificant and produce expected results.” (BASF Motion at 1-2.) The ’875
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`publication is not inconsistent with Umicore’s arguments and admission of the
`
`publication is not required to further the “interests of justice.”
`
`The ’203 patent claims priority to an application filed in February 2007.
`
`(See generally Ex. 1101.) Thus, the relevant issue in this IPR is whether the
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`-4-
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`
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`patent’s claims would have been obvious and expected to one of ordinary skill in
`
`the art as of 2007. The ’875 publication was not filed until 2013 and therefore
`
`provides no insight into the views of those skilled in the art more than six years
`
`earlier on the broad subject matter claimed in the ’203 patent.
`
`The ’875 publication also catalogs and discusses some of the prior art cited
`
`in Umicore’s petition, including Zones, Byrne, and exemplary references relating
`
`to copper-ion exchange. (See Ex. 2036 at ¶¶ [0004]-[0014].) The ’875 publication
`
`addresses this art before it goes on to discuss its own improvement to CuCHA
`
`catalysts. The ’875 publication’s statements regarding performance of prior art
`
`catalysts are consistent with and do not contradict Umicore’s IPR arguments. Just
`
`as Umicore argues in its petition, the ’875 publication indicates that prior to its
`
`2013 filing, one of skill in the art would have expected a catalyst with a SAR
`
`above 15 to be more hydrothermally stable (and thus retain more NOx reducing
`
`ability after aging) than the lower SAR catalysts claimed by the ’875 publication.
`
`Next, the ’875 publication discloses and claims catalysts that are outside the
`
`scope of the ’203 patent’s claimed range. BASF’s patent is directed to catalysts
`
`with SARs of 15-150. The ’875 publication, however, relates only to catalysts
`
`with SARs of 10-15. (See Ex. 2036 at ¶¶ [0015]-[0018], [0037].) As a result, the
`
`statements in the ’875 publication highlighted by BASF are directed to the
`
`performance of unclaimed catalysts, and do not provide insight into whether the
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`-5-
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`
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`catalysts claimed by the ’203 patent perform in a way that would be expected in
`
`view of the prior art. Further, by showing that catalysts just outside the ’203
`
`patent’s claimed range can perform acceptably, the ’875 publication actually
`
`supports Umicore’s argument that the ’203 patent’s range is arbitrary and does not
`
`result in catalysts that perform unexpectedly better.
`
`The catalysts of the ’875 publication also include claimed structural features
`
`not referenced in the ’203 patent. The claims of the ’875 publication all require
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`“an average crystal size between 0.75 and 2 µm.” (Id. at ¶ [0037].) While BASF
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`seeks to minimize the importance of this required limitation, the ’875 publication
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`nonetheless explains that crystal size is “[a] parameter that further affects the
`
`stability of the material.” (Id. at ¶ [0019].) Even more explicitly, the publication
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`states that these “dimension[s]” of the catalyst contribute to its “extremely good
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`hydrothermal stability.” (Id. at ¶ [0024].) This distinguishes the ’875 publication
`
`from the ’203 patent. The claims of the ’875 publication extend to catalysts with
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`SARs and Cu/Al ratios within narrow ranges and require a specific physical
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`feature—crystal size—that is explicitly noted to contribute to improved catalytic
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`performance. The claims of the ’203 patent, however, extend to broad swaths of
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`SARs and Cu/Al ratios and do not require the one feature—the presence of “free
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`copper”—that is repeatedly explained to provide the patents’ materials with
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`-6-
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`
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`enhanced performance properties. (See, e.g., Ex. 1001, ’203 patent at 2:31-35;
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`2:65-3:3; 5:33-39; 5:40-54; 6:21-25.)
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`While the ’875 publication’s figures do show a material with a SAR of 13
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`performing somewhat better than a material with a SAR of 22 (see Ex. 2036 at Fig.
`
`2), this only serves to confirm the importance of crystal size. As Umicore’s expert
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`explained, catalysts with lower SARs are able to incorporate larger amounts of
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`copper. (See Ex. 1108 at ¶ 408; Fig. 8.) This in turn allows them to reduce more
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`NOx when fresh. (See id.) But, lower SAR zeolites are also more susceptible to
`
`the effects of hydrothermal aging than higher SAR zeolites. The ’875 publication
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`explains multiple times that crystal size contributes to catalyst stability. (See Ex.
`
`2036 at ¶¶ [0024], [0019].) Thus, rather than claiming that Cu/Al ratios and SARs
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`alone improve performance, the ’875 publication teaches that it is a larger crystal
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`size that renders the claimed lower SAR catalysts less susceptible to the effects of
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`aging and allows the performance benefits provided by increased copper levels to
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`be maintained. The ’203 patent nowhere recognizes the importance of crystal size.
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`Instead, it simply claims higher SAR CuCHA zeolites already known in 2007 to
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`improve stability over lower SAR zeolites.
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`Testing in the ’875 publication is also consistent with Umicore’s position
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`that adjusting Cu/Al ratio around the bounds of the ’203 patent’s claimed range
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`results in predictable behavior. The following graph shows the NOx conversion
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`-7-
`
`
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`performance of the ’875 publication’s materials as a function of Cu/Al ratio:
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`(See Ex. 2036 at Fig. 1.) As the Cu/Al ratio increases, the NOx conversion
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`performance steadily increases. There is no unexpected increase in performance as
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`the ratio moves across 0.25 (the lower bound of the ’203 patent’s claimed range).
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`This is the very same behavior discussed in the declarations submitted by Umicore.
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`(See Ex. 1108 at ¶¶ 371-394; Ex. 1115 at ¶¶ 18-25.)
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`Finally, BASF has not moved for leave to submit late expert testimony
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`regarding the publication, instead delaying until after the cross-examination period,
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`and relying on attorney argument alone regarding the relevance of the publication.
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`As explained above, there are several meaningful differences between the ’875
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`publication and the ’203 patent. The absence of explanatory expert testimony
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`(which could have been submitted if BASF had raised the ’875 publication in a
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`more timely fashion) even further reduces the relevance of the publication and also
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`weighs against BASF’s motion.
`
`-8-
`
`
`
`Date: 5/24/2016
`
`/ Elizabeth Gardner /
`Elizabeth Gardner (Reg. No. 36,519)
`Orrick, Herrington, & Sutcliffe LLP
`51 West 52nd Street
`New York, NY 10019
`Tel: 212-506-5000
`Fax. 212-506-5151
`Email: egardner@orrick.com
`
`-9-
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby confirms that the foregoing PETITIONER’S
`
`OPPOSITION TO BASF’S MOTION FOR LATE SUBMISSION OF
`
`SUPPLEMENTAL INFORMATION was served on May 24, 2016 via e-mail upon
`
`the following counsel of record for Patent Owner:
`
`Brian E. Ferguson (brian.ferguson@weil.com)
`Anish R. Desai (anish.desai@weil.com)
`Weil, Gotshal & Manges LLP
`1300 Eye Street, NW Suite 900
`Washington, DC 20005
`
`/ Elizabeth Gardner /
`Elizabeth Gardner (Reg. No. 36,519)
`Orrick, Herrington, & Sutcliffe LLP
`51 West 52nd Street
`New York, NY 10019
`Tel: 212-506-5000
`Fax: 212-506-5151
`Email: egardner@orrick.com
`
`-10-
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