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 REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE
`__________________________________________________________________
`
`
`__________________
`
`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 REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE
`__________________________________________________________________
`
`
`
`Petitioner Umicore respectfully submits this reply in support of its motion to
`
`exclude. (Paper No. 44.) BASF’s response fails to meaningfully address
`
`Umicore’s evidentiary objections. Instead, BASF reiterates the same irrelevant
`
`substantive arguments, highlighting why that evidence should be excluded.
`
`I.
`
`Dr. Tsapatsis Unreasonably Relies on Inadmissible Materials
`A. Paragraph 28: According to BASF, Dr. Moini’s discussion of zeolite
`
`“screening” work is relevant because it was meant to identify materials providing
`
`“excellent NOx conversion over a wide temperature range” and “hydrothermal
`
`stability.” (BASF Opp., Paper 48 at 3.) But, none of the claims of the ’203 patent
`
`require these properties. And, as the examples of the patent make clear, the
`
`properties are not inherent in the claimed catalysts. The fact that BASF engaged in
`
`screening to identify catalysts with unclaimed features is irrelevant and provides no
`
`insight into the predictability of the ’203 patent’s broadly claimed subject matter.
`
`Additionally, BASF has not addressed any of the cases holding that the
`
`amount and nature of the work conducted by inventors is irrelevant to patentability.
`
`(See generally Umicore Motion to Exclude, Paper 44 at 3.) It has also presented
`
`no evidence showing that the screening actually constitutes a large amount of
`
`work. And, while Umicore elected not to depose Dr. Moini, this does not change
`
`the fact that the 2011 Moini declaration was hearsay submitted by an interested
`
`party at the time Dr. Tsapatsis relied on it. This is not the type of evidence a
`
`-1-
`
`
`
`technical expert would reasonably rely on without further inquiry or confirmation.
`
`B. Paragraph 174: BASF misses the point of Umicore’s objections.
`
`The fact that the Dr. Moini obtained the “two examples from Dedecek” from a
`
`source different from that mentioned in Dedecek is not what renders his testimony
`
`irrelevant. The testimony is irrelevant because the tested catalysts had different
`
`starting SARs than those of Dedecek. (See e,g., Ex. 2011 at ¶ 5 (Dedecek’s natural
`
`CHA zeolite included 63.89% SiO2 and 17.48% Al2O3—a SAR of 6.2—while Dr.
`
`Moini tested natural materials with 64.74% SiO2 and 21.54% Al2O3 before
`
`loading—a SAR of 5.1. Dedecek’s synthetic CHA zeolite had a SAR of 5.4, while
`
`Dr. Moini tested a synthetic zeolite with 58.47% SiO2 and 22.16% Al2O3—a SAR
`
`of 4.5). Further, the testing in paragraph 25 of the Moini declaration is not based
`
`on “personal knowledge” because it reports only on testing conducted by an
`
`unnamed “colleague,” not Dr. Moini. (See id. at ¶ 25.) This is hearsay and BASF
`
`has made no attempt to establish that any Rule 803 exceptions apply, or that Dr.
`
`Tsapatsis’s reliance on this paragraph was reasonable.
`
`C.
`
`Paragraph 48: Umicore objected to Dr. Tsapatsis’s reliance on the
`
`Ravindrian declaration because it improperly includes information relayed to Mr.
`
`Ravindrian from unidentified individuals at Ford. This is hearsay. And, BASF has
`
`not established that any of the hearsay exceptions apply. An expert can rely on
`
`otherwise inadmissible materials only “[i]f experts in the particular field would
`
`-2-
`
`
`
`reasonably rely on those kinds of facts or data in forming an opinion.” Fed. R.
`
`Evid. 703. Dr. Tsapatsis made no attempt to ascertain the reliability of Mr.
`
`Ravindrian’s statements, and BASF cannot show that technical experts in the field
`
`would rely such statements made by an interested party’s employee (Dr.
`
`Ravindran’s) about statements made by further unnamed individuals (allegedly at
`
`Ford). Thus, it was not reasonable for Dr. Tsapatsis to rely on the evidence.
`
`D.
`
`Paragraph 79: BASF does not substantively address Umicore’s
`
`objection. As explained, after-the-fact testimony by the author of a prior art
`
`reference is irrelevant and can never change what that reference itself discloses to
`
`one of ordinary skill in the art. (See Umicore Motion, Paper 44 at 6.) Thus, it was
`
`improper for Dr. Tsapatsis to rely on the irrelevant Zones declaration.
`
`E.
`
`Paragraph 170: BASF does not contest that the Roth declaration
`
`includes inadmissible hearsay. (See BASF Opp., Paper 48 at 7.) Regardless,
`
`BASF argues that it was reasonable for Dr. Tsapatsis to rely on the declaration. As
`
`discussed above, an expert’s ability to rely on inadmissible materials is not
`
`unfettered. And, BASF provides no explanation as to why it was reasonable for
`
`Dr. Tsapatsis to rely on hearsay that Mr. Roth contradicts in the same declaration.
`
`F.
`
`Paragraphs 54-55, 62-71, 168-177: In response to Umicore’s
`
`objection, BASF simply reiterates the same erroneous arguments it has made
`
`repeatedly in this IPR. According to BASF, Umicore’s objections are “essentially
`
`-3-
`
`
`
`requesting that the Board consider the issue of obviousness of the claimed CuCHA
`
`zeolite catalyst without reference to the properties exhibited by the claimed
`
`CuCHA catalyst.” (BASF Opp., Paper 48 at 7.) A proper obviousness analysis
`
`must focus on what is actually claimed. Here, none of the ’203 patent claims
`
`require either “excellent NOx conversion over a wide temperature range” or
`
`“hydrothermal stability.” Moreover, the examples in the specification make clear
`
`that an SCR catalyst with a SAR and Cu/Al ratio falling within the claimed ranges
`
`does not necessarily provide improved “hydrothermal stability” or other
`
`performance benefits. (See Umicore Motion to Exclude, Paper 44 at 8-9.) Thus,
`
`these properties are not inherent in the claimed subject matter. Accordingly, the
`
`properties do not need to be disclosed by the prior art for the ’203 patent claims to
`
`be obvious, and paragraphs 54-55, 62-71, and 168-177 are all irrelevant.
`
`G.
`
`Paragraphs 147-150: BASF adopts the same erroneous approach
`
`utilized by Dr. Tsapatsis. Rather than considering all of Dr. Schuetze’s data,
`
`BASF picks and chooses only the data supporting its arguments, including data
`
`collected at a subset of the tested temperatures, and only some of the tested SAR
`
`values. This was not reasonable and runs afoul of Rule 702.
`
`II.
`
`Dr. Moini is Not Qualified To Testify on Customers’ Decision Making
`
`There is no evidence of record that Dr. Moini is qualified to offer the
`
`testimony provided in paragraph 11. While Dr. Moini’s technical credentials and
`
`-4-
`
`
`
`work experience may make him qualified to offer testimony about the properties
`
`and performance of BASF’s catalysts, none of this qualifies Dr. Moini to offer
`
`testimony about the commercial reasons driving customers’ purchase decisions.
`
`III. Sales Data from Ms. Schmidt is Hearsay and Not Tied to Patent Claims
`
`BASF does not contest that paragraph 7 of the Schmidt declaration includes
`
`hearsay. Instead, it argues that Umicore somehow waived its objection by not
`
`requesting production of the underlying data. BASF is wrong. Umicore properly
`
`objected to the testimony. (See Umicore Objections, Paper 28 at 13-14.) BASF
`
`itself elected not to respond or provide any supplemental evidence in response to
`
`this objection. It was BASF’s burden to establish admissibility of its evidence.
`
`BASF has also failed to meaningfully address Umicore’s relevancy
`
`objection. According to BASF, the fact that Johnson Matthey is a “licensee” of the
`
`’662 patent somehow proves that the Johnson Matthey catalyst products fall within
`
`the scope of the ’203 patent’s claims. This is not the case. The license by itself
`
`provides no proof that any Johnson Matthey product falls within the scope of the
`
`patent’s claims. BASF has provided no other information regarding Johnson
`
`Matthey’s products to establish that they are covered by the claims. BASF made
`
`the unilateral decision to commingle sales of Johnson Matthey’s and BASF’s
`
`catalysts, and to refuse to provide the sales figures for BASF’s catalysts alone.
`
`The commingled sales figures are meaningless as lacking any nexus to the claims.
`
`-5-
`
`
`
`Date: 7/11/2016
`
`/ 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
`
`-6-
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby confirms that the foregoing PETITIONER’S
`
`REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE was served on July 11,
`
`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
`
`-7-
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