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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UMICORE AG & CO. KG,
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`Petitioner,
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`v.
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`BASF CORPORATION
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`Patent Owner.
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`IPR2015-01124
`U.S. Patent 8,404,203
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`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE
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`Patent Owner respectfully submits this opposition to Petitioner’s motion to
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`exclude. As explained below, Petitioner’s objections on hearsay and relevance
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`grounds are entirely unfounded, and should be rejected. Furthermore, Petitioner’s
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`argument that the obviousness analysis in this case should be conducted without
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`recognition of the properties of the claimed CuCHA zeolite catalyst is entirely
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`inconsistent with Federal Circuit precedent. Petitioner’s motion to exclude should
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`be denied in its entirety.
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`I. MOTION TO EXCLUDE PARAGRAPHS OF TSAPATSIS
`DECLARATION
`A. Tsapatsis Declaration, ¶ 28
`Petitioner moves to exclude ¶ 28 of the Tsapatsis Declaration (Ex. 2018),
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`which cites ¶ 4 of the Declaration of Dr. Ahmad Moini (Ex. 2003) from the inter
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`partes reexamination history of the 662 Patent. Petitioner incorrectly contends that
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`¶ 4 of the Moini declaration is irrelevant and that the un-cross examined testimony
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`of Dr. Moini is unreliable.
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`First, Dr. Tsapatsis cites the Moini declaration to rebut the unsupported
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`assertions by Petitioner’s expert, Dr. Lercher, that the technology at issue in this
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`case is predictable, and that it was simply a matter of routine optimization to arrive
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`at the claimed invention. The undisputed fact that the inventors of the 662 Patent
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`performed broad experimentation before arriving at the claimed invention is
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`clearly relevant to whether the technology at issue is complex and unpredictable.
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`FRE 401. Furthermore, Dr. Tsapatsis’ opinion is not based solely on ¶ 4 of the
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`Moini declaration. Instead, Dr. Tsapatsis cites substantial evidence to support his
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`opinion that the relevant technology is complex and unpredictable. See Ex. 2018 at
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`¶¶ 28, 56-75, 151-167, 172.
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`Petitioner is also wrong that there is no evidence in the record indicating that
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`the screening of 900 zeolite materials and 12 different structure types was directed
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`to problems solved by the 662 Patent. Dr. Moini’s declaration explicitly states that
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`the screening was done “to provide a material for selective catalytic reduction that
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`would have two main properties: (1) excellent NOx conversion over a wide
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`temperature range…and (2) hydrothermal stability…” Ex. 2003 at ¶ 3.
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`Second, Petitioner’s argument that the “uncross-examined declaration” is not
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`the type of information on which an expert would ordinarily rely is wholly without
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`merit. There is no rule that an expert can only rely on testimony that has been
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`subject to cross-examination. See FRE 703. And even if there were such a
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`requirement, the only reason Dr. Moini was not cross-examined was because
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`Petitioner voluntarily decided not to proceed with the deposition that had been
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`scheduled for April 27, 2016.
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`Tsapatsis Declaration, ¶ 174
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`B.
`Petitioner moves to exclude ¶ 174 of the Tsapatsis Declaration, which cites
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`to the Second Declaration of Dr. Moini (Ex. 2011). This Second Moini declaration
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`is also part of the 662 reexamination history and includes testimony regarding
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`testing of zeolite catalysts. Petitioner argues that the testing should be disregarded
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`because the natural chabazite samples tested by Dr. Moini were not from the same
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`source as the natural chabazite samples discussed in the Dedecek prior art
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`reference. Petitioner, however, offers no evidentiary rule for excluding either ¶
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`174 of the Tsapatsis declaration or the Second Moini declaration. Dr. Moini
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`explicitly noted in his declaration that the natural chabazite discussed in Dedecek
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`was from North Korea, and therefore, not available to him. Ex. 2011 at ¶ 5. He
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`instead utilized a comparable natural chabazite from Bowie, Arizona. Id.
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`Petitioner’s expert, Dr. Lercher, and Patent Owner’s expert, Dr. Tsapatsis,
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`each reviewed the Second Moini declaration and neither offered any opinion that
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`the testing was insufficient, improper, or otherwise unreliable. Ex. 2018 at ¶ 174;
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`Ex. 2027 at 84:22-25. In fact, Dr. Lercher’s 111-page declaration is entirely silent
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`about the testing performed by Dr. Moini. Ex. 1108. Petitioner offers no reasoned
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`explanation for why the use of the sample from Bowie, Arizona renders the testing
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`unreliable.
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`Petitioner also argues that ¶ 25 of the Second Moini declaration includes
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`hearsay, and on this basis, requests that ¶ 174 of the Tsapatsis declaration be
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`excluded (even though it does not cite ¶ 25 of the Second Moini declaration). In ¶
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`25, Dr. Moini explains where certain samples came from, how the samples were
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`prepared, the parameters of the samples, and the results of the testing. Ex. 2011 at
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`¶ 25. This is not hearsay, and Petitioner certainly has no argument that Dr. Moini
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`was not competent to testify about these facts based on his personal knowledge.
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`FRE 602. Moreover, even assuming ¶ 25 of the Second Moini declaration includes
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`hearsay, that is not a sufficient basis on which to exclude ¶ 174 of the Tsapatsis
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`Declaration. FRE 703.
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`C. Tsapatsis Declaration, ¶ 48
`Petitioner moves to exclude ¶ 48 of the Tsapatsis declaration because it cites
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`to the Second Ravindran declaration (Ex. 2004), which is part of the 662 inter
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`partes reexamination history. The Second Ravindran declaration includes Mr.
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`Ravindran’s testimony that BASF sent a sample to Ford, Ford tested the sample,
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`and published the results in a paper (Ex. 2002). As is clear from the declaration,
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`these facts were known to Mr. Ravindran, and Petitioner, having elected not to
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`cross-examine Mr. Ravindran, has no argument that Mr. Ravindran did not have
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`personal knowledge of these facts.
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`Petitioner also contests the Second Ravindran declaration on the grounds
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`that an email from Ford Motor Company referenced in ¶ 8 of declaration was not
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`attached to the declaration. The omission of this email from the Second Ravindran
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`declaration does not warrant exclusion of ¶ 48 of the Tsaptasis declaration. First,
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`Petitioner has not moved to exclude ¶ 8 of the Ravindran declaration from the
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`record. Second, even if ¶ 8 of the Ravindran declaration were not admissible
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`evidence, it would still be permissible for Dr. Tsapatsis to rely on this paragraph of
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`the Ravindran declaration for purposes of determining the nature of the material
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`that was tested in the Ford paper. The Ravindran testimony is clearly probative of
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`whether the material tested by Ford, and described as “remarkable” in the Ford
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`Paper, falls within the scope of the 203 claims, and Petitioner has not identified
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`any prejudicial effect to admitting the testimony. FRE 703 (“…if the facts or data
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`would otherwise be inadmissible, the proponent of the opinion may disclose them
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`to the jury only if their probative value in helping the jury evaluate the opinion
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`substantially outweighs their prejudicial effect.”).
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`D. Tsapatsis Declaration, ¶ 79
`Petitioner moves to exclude ¶ 79 of the Tsapatsis declaration because it cites
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`to the Zones declaration (Ex. 2009), which is part of the 662 inter partes
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`reexamination history. Dr. Tsapatsis cites to ¶ 8 of the Zones declaration as
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`supporting his opinion that the phrase “catalyzing the reduction of the oxides of
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`nitrogen” encompasses a number of different reactions. Even assuming the Zones
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`declaration is inadmissible does not mean that ¶ 8 of the Tsapatsis declaration
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`should be excluded. FRE 703. Furthermore, it is undisputed that the phrase
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`“catalyzing the reduction of the oxides of nitrogen” encompasses a number of
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`different reactions. Petitioner’s expert, Dr. Lercher, agreed at his deposition that
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`the phrase encompasses a number of different reactions exactly as stated in ¶ 8 of
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`the Zones Declaration. Ex. 2027 at 37:19-38:22.
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`Tsapatsis Declaration, ¶ 170
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`E.
`Petitioner moves to exclude ¶ 170 of the Tsapatsis declaration because it
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`cites to the Roth declaration (Ex. 2001), which is part of the 662 inter partes
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`reexamination history. Dr. Tsapatsis’ declaration notes that Dr. Roth submitted a
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`declaration in which he discusses skepticism expressed by the Department of
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`Energy. Experts are permitted to base their opinions on the testimony of others,
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`and there is no requirement that the testimony relied on be admissible. FRE 703.
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`Furthermore, Petitioner has not moved to exclude the Roth declaration, which is
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`separately cited at pages 38-39 of Patent Owner’s Response (Paper No. 26).
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`II. MOTION TO EXCLUDE OPINIONS REGARDING PROPERTIES
`OF THE CLAIMED MATERIAL
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`Petitioner moves to exclude paragraphs ¶¶ 54-55, 62-71, and 168-177 of the
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`Tsapatsis declaration on the basis that they focus on “irrelevant and unclaimed
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`catalyst features.” Petitioner is essentially requesting that the Board consider the
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`issue of obviousness of the claimed CuCHA zeolite catalyst without reference to
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`the properties exhibited by the claimed CuCHA catalyst. As explained below, as
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`well as in Patent Owner’s Response to the Petition (Paper No. 26), at pp. 12-13,
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`Petitioner’s argument is contrary to the law.
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`First, Petitioner states that the “none of the ‘203 patent claims at issue in this
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`IPR require either ‘low temperature SCR activity’ or ‘improved hydrothermal
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`durability.’” This argument misses the mark. The claims are directed to an
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`aluminosilicate CuCHA catalyst having a SAR within various ranges (15-100, 25-
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`40, or 30) and a Cu/Al ratio within various ranges (0.25-0.50, 0.30-0.50, 0.40), and
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`used for the selective catalytic reduction of NOx in the presence of NH3 (“NH3-
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`SCR of NOx”). As explained by Dr. Tsapatsis, a zeolite catalyst having these
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`parameters has been shown to exhibit certain NOx conversion percentages. Ex.
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`2018, ¶¶ 48-49 (discussing NOx conversion percentages disclosed in third party
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`research papers), ¶¶ 54-55 (discussing NOx conversion percentages disclosed in the
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`662 Patent), ¶¶ 147-150 (discussing NOx conversion percentages shown by Dr.
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`Schutze). These properties must be considered in the evaluation of obviousness of
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`the claimed CuCHA zeolite catalyst. Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d
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`1280, 1292 (Fed. Cir. 2012) (internal citations omitted) (“In determining whether a
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`chemist would have selected a prior art compound as a lead, the analysis is guided
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`by evidence of the compound's pertinent properties. Such properties may include
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`positive attributes such as activity and potency, adverse effects such as toxicity,
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`and other relevant characteristics in evidence. Absent a reason or motivation based
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`on such prior art evidence, mere structural similarity between a prior art compound
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`and the claimed compound does not inform the lead compound selection.”);
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`Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1086 (Fed. Cir. 2008) (“For
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`chemical compounds, the structure of the compound and its properties are
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`inseparable considerations in the obviousness determination.”); In re Papesch, 315
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`F.2d 381, 391 (CCPA 1963) (“From the standpoint of patent law, a compound and
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`all of its properties are inseparable; they are one and the same thing.”); see also
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`United States v. Adams, 383 U.S. 39, 48-49 (1966).
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`Second, Petitioner also points out in its motion that not all CuCHA catalysts
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`that fall within the claimed ranges perform equally. Specifically, Petitioner makes
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`much of the fact that Example 1 in the 203 Patent, while falling within the scope of
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`claim 1, does not perform as well as Examples 2 and 3 in the 203 Patent.
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`However, the issue at hand is not how the claimed invention compares to itself, but
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`how the claimed invention compares to the prior art. As explained by Dr.
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`Tsapatsis, and not contested by Petitioner’s expert, Example 1 of the 203 Patent
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`exhibits significantly better aged NOx conversion performance in comparison to
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`the prior art Cu-Beta sample. Ex. 2018 at ¶¶ 54-55. Moreover, there is clear
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`evidence that the claimed CuCHA catalyst produces unexpected results in
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`comparison to the prior art. Patent Owner’s Response, Paper No. 26, at pp. 40-43.
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`Finally, Petitioner cites Tyco Healthcare Grp. v. Mut. Pharm. Co., 642 F.3d
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`1370 (Fed. Cir. 2011) for the proposition that the NOx conversion performance of
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`the claimed CuCHA catalyst is irrelevant to the question of obviousness. The
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`claim at issue in Tyco Healthcare was directed to a capsule including temazepam,
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`but did not specify an intended use for the capsule. The only distinction between
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`the claimed capsule and the main prior art Restoril® capsules was a lower amount
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`of temazepam, which was disclosed in other prior art. In the present case, the
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`claims of the 203 Patent specify an intended use—NH3-SCR of NOx. Moreover, in
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`the present case and unlike the Tyco Healthcare case (i) there is no evidence in the
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`prior art of general efficacy of a CHA zeolite for the NH3-SCR of NOx; (ii) there is
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`prior art that teaches away from the use of a CHA zeolite for such a reaction; and
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`(iii) there is evidence of unexpected results. Tyco Healthcare, 642 F.3d at 1373
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`(“[The] presumption [of obviousness] is rebuttable either by a showing that the
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`prior art taught away from the invention or by a showing of new and unexpected
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`results relative to the prior art.”). First, as explained by Dr. Tsapatsis, none of the
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`prior art references in the grounds presented by Petitioner discuss the NOx
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`conversion performance of a CHA zeolite used for the NH3-SCR of NOx. Ex. 2018
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`at ¶¶ 72-74, 80, 85, 90, 97. Second, as also explained by Dr. Tsapatsis, the only
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`prior art reference that discusses the performance of a CHA zeolite for the NH3-
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`SCR of NOx explicitly teaches away from using a CHA zeolite. Ex. 2018 at ¶¶ 75,
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`173. Finally, there is firm evidence of unexpected results. The well-known
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`problem of hydrothermal stability of zeolite catalysts was documented in the prior
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`art beginning as early as 1995 and as late as 2008. Ex. 2018 at ¶ 66-70. It is
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`undisputed that the claimed CuCHA catalyst solved this problem, and that the NOx
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`conversion performance exhibited by the CuCHA catalyst would not have been
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`expected in view of the closest prior art. Ex. 2018 at ¶¶ 48, 49, 63, 172-174.
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`III. MOTION TO EXCLUDE ANALYSIS OF DR. SCHUTZE’S DATA
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`Petitioner moves to exclude ¶¶ 147-150 of the Tsapatsis declaration. These
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`paragraphs directly rebut the erroneous conclusions that were drawn by
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`Petitioner’s expert, Dr. Lercher, using the data in the Schutze declaration (Ex.
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`1115). Specifically, Dr. Lercher concluded, based solely on the Schutze data, that
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`the claimed SAR and Cu/Al ratios lacked criticality. Dr. Tsapatsis reviewed the
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`same data, and presented a clear analysis showing the exact opposite. Petitioner,
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`now realizing the clear error in their own expert’s analysis, asks the Board to
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`exclude the reasoned analysis of Dr. Tsapatsis as unreliable because it “is based on
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`isolated testing points.” Petitioner’s motion to exclude has no merit.
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`First, with respect to the Cu/Al ratio, Dr. Tsapatsis graphed the Schutze data
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`for both the SAR 30 fresh and aged samples, to show how the lower Cu/Al
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`boundary of 0.25 has criticality. Ex. 2018 at ¶¶ 147-150. The criticality of the
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`boundary is clear from the figures themselves and the supporting explanation by
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`Dr. Tsapatsis. Id. In addition, the graphs also refute the argument by Dr. Lercher
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`that adjusting Cu/Al ratio produces a linear, predictable increase in NOx conversion
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`performance.
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`The same is true for the SAR lower boundary of 15. The graph and
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`supporting explanation by Dr. Tsapatsis plainly show that the SAR 15 boundary
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`has criticality. Ex. 2018 at ¶¶ 147-
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`150. And likewise, the analysis by
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`Dr. Tsapatsis also shows that
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`increasing SAR does not produce a
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`linear, predictable improvement in
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`NOx conversion performance after
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`hydrothermal aging as Dr. Lercher
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`wrongly concluded.
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`IV. MOTION TO EXCLUDE PARAGRAPH ¶ 11 OF MOINI
`DECLARATION (EX. 2019)
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`Petitioner moves to exclude ¶ 11 of the Moini Declaration (Ex. 2019). In
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`this paragraph, Dr. Moini discusses the commercial CuCHA catalyst sold by Patent
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`Owner. Dr. Moini explains that the CuCHA catalyst is sold on a substrate (either a
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`flow-through substrate or a wall flow filter), that the catalyst is specifically made
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`for use in the NH3-SCR of NOx in the exhaust treatment system of a diesel engine,
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`and that customers purchase the CuCHA catalyst because of properties of the
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`CuCHA material coated on the substrate. Petitioner argues that Dr. Moini lacks
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`personal knowledge, the statement regarding customers is hearsay, and the
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`testimony is irrelevant. Petitioner is incorrect on all counts.
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`First, Dr. Moini’s declaration specifically states that he is a Senior Expert
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`and Research Fellow at BASF, a named inventor of the 203 Patent, and that he is
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`familiar with the product specification for the CuCHA zeolite catalyst that is
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`commercially sold by BASF. He further notes in his declaration that the final
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`CuCHA catalyst product that is sold to customers is made according to the product
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`specification. Thus, there is clear foundation that Dr. Moini has personal
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`knowledge regarding the specification and manufacture of the commercial CuCHA
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`zeolite catalyst. There is also foundation establishing that Dr. Moini is qualified to
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`offer testimony as to why BASF customers purchase the CuCHA zeolite catalyst.
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`In addition to being a Senior Expert and Research Fellow at BASF and a named
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`inventor of the 203 Patent, Dr. Moini has been involved in catalyst research for
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`more than twenty years, and is a named inventor on 30 U.S. patents, some of which
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`pertain to zeolites for use as automotive catalysts. Ex. 2011 at ¶¶ 1-2.
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` Second, Dr. Moini is not relaying any statements by BASF customers, and
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`therefore, his statement regarding why customers purchase the BASF product is
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`not hearsay. As explained above, Dr. Moini is clearly qualified to offer testimony
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`as to why customers would purchase the CuCHA catalyst given his extensive
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`knowledge and experience with zeolite catalysts.
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`Finally, Dr. Moini’s testimony has relevance to the issue of whether there is
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`a nexus between the commercial success of the product and the claimed CuCHA
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`catalyst. Dr. Moini’s testimony and Dr. Tsapatsis’ testimony demonstrate that the
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`product sold by BASF falls within the scope of the claims of the 203 Patent. Ex.
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`2018 at ¶¶ 175-177. Furthermore, Dr. Moini’s testimony shows that the
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`commercial success of the product is due to the properties of the CuCHA material
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`(and not, for example, due to the nature of the substrate).
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`V. MOTION TO EXCLUDE PARAGRAPH ¶ 7 OF SCHMIDT
`DECLARATION (EX. 2034)
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`Petitioner moves to exclude ¶ 7 of the Schmidt declaration (Ex. 2034) on the
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`grounds of relevance and hearsay. The testimony by Ms. Schmidt about the level
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`of BASF sales was based on her personal knowledge of data that is maintained in
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`various databases at BASF. This testimony is not hearsay. Furthermore, if
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`Petitioner’s objection to the evidence is based on its belief that it was denied the
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`ability to inspect the databases underlying Ms. Schmidt’s testimony, the objection
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`has been waived. Patent Owner received Ms. Schmidt’s declaration on February
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`12, 2016, and did not seek discovery of the underlying databases, nor would
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`inspection of such databases fall within the scope of “routine discovery” under 37
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`C.F.R. § 42.51(b). Any belated desire to inspect the databases is not a basis on
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`which to exclude Ms. Schmidt’s testimony.
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`Petitioner also contends that the testimony should be excluded on the
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`grounds of relevance because Ms. Schmidt was instructed not to testify regarding
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`the market share split between BASF and its licensee, Johnson Matthey. As is
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`clear from the deposition transcript, Ms. Schmidt could not testify to that split
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`without violating confidentiality provisions of the license agreement between
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`BASF and Johnson Matthey. Ex. 1120 at 22:1-24:16. Thus, Petitioner’s objection
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`based on relevance is improper. Ms. Schmidt’s testimony about the total market
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`share for CuCHA catalysts is clearly relevant to the issue of commercial success.
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`FRE 401. In addition, Petitioner is incorrect that Patent Owner has not provided
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`any information from which to determine whether Johnson Matthey makes a
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`CuCHA catalyst that falls within the scope of the 662 claims. Patent Owner has
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`produced evidence that Johnson Matthey is a licensee of the 662 Patent and
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`provided the combined CuCHA total market share owned by Patent Owner and its
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`licensee, Johnson Matthey.
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`For the reasons stated above, respectfully requests that Petitioner’s motion to
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`exclude should be denied in its entirety.
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`Respectfully submitted,
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` /
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` Anish R. Desai /
`Brian E. Ferguson (Reg No. 36,801)
`Anish R. Desai (Reg. No. 73,760)
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`T: 202-682-7000
`brian.ferguson@weil.com
`anish.desai@weil.com
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`16
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`Dated: July 5, 2016
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on July 5, 2016 the foregoing
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
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`EXCLUDE was served via electronic mail, upon the following:
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`Elizabeth Gardner
`Richard L. DeLucia
`K. Patrick Herman
`A. Anthony Pfeffer
`Orrick, Herrington & Sutcliffe LLP
`51 West 52nd Street
`New York, NY 10019-6142
`egardner@orrick.com
`rdelucia@orrick.com
`pherman@orrick.com
` apfeffer@orrick.com
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`/ Timothy J. Andersen / c
`Timothy J. Andersen
`Case Manager
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`T: 202-682-7075
`timothy.andersen@weil.com