Patent Owner’s Preliminary Response (IPR2015-01124)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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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.
`BASF CORPORATION
`Patent Owner.
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`IPR2015-01124
`U.S. Patent 8,404,203
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`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,404,203
`PURSUANT TO 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
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`Patent Owner’s Preliminary Response (IPR2015-01124)
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`Table of Contents
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`I. 
`II. 
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`D. 
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`INTRODUCTION ........................................................................................... 1 
`THE 203 PATENT .......................................................................................... 4 
`A. 
`Background ........................................................................................... 4 
`B. 
`Summary of the Invention ..................................................................... 6 
`C. 
`Inter Partes Reexamination of the 662 Patent ....................................... 8 
`1. 
`Dedecek in view of Chung ........................................................ 10 
`Claim Construction ............................................................................. 11 
`“A process for the reduction of oxides of nitrogen
`1. 
`contained in a gas stream in the presence of oxygen” .............. 11 
`“[C]atalyst” (claim 1) ................................................................ 12 
`2. 
`“[Z]eolite having the CHA crystal structure” (claim 1) ........... 13 
`3. 
`III.  GROUNDS 1 AND 2 SHOULD NOT BE INSTITUTED ........................... 13 
`A.  Maeshima and Breck Do Not Disclose That a Cu-Zeolite
`Having the CHA Structure is a Lead Compound for the
`Reduction of NOx ............................................................................... 15 
`B.  Maeshima Does Not Disclose a Cu/Al Ratio of a CuCHA ................ 21 
`Breck Does Not Provide Adequate Motivation to Increase The
`C. 
`Silica to Alumina Ratio of a CuCHA .................................................. 23 
`D.  Unexpected Results ............................................................................. 25 
`There is Substantial Evidence That the Claimed
`1. 
`Invention Produced Unexpected Results .................................. 25 
`The Schutze Declaration Submitted By Petitioner Is
`Legally Irrelevant ...................................................................... 28 
`Other Secondary Considerations of Nonobviousness ......................... 32 
`1. 
`Skepticism ................................................................................. 33 
`2. 
`Long-Felt Need ......................................................................... 34 
`3. 
`Praise ......................................................................................... 36 
`The Evidence of Secondary Considerations is Commensurate
`With the Scope of the Claims .............................................................. 37 
`Failure of Proof as to Claims 17, 18, 21, and 22 ................................. 39 
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`2. 
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`E. 
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`F. 
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`G. 
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`Patent Owner’s Preliminary Response (IPR2015-01124)
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`IV.  GROUNDS 3 AND 4 SHOULD NOT BE INSTITUTED ........................... 40 
`A.  Dedecek Has Previously Been Rejected as a Lead Reference ............ 41 
`B. 
`Breck is Cumulative of Chung ............................................................ 43 
`C. 
`Secondary Considerations of Nonobviousness ................................... 45 
`D. 
`Failure of Proof as to Claims 17, 18, 21, and 22 ................................. 46 
`CONCLUSION .............................................................................................. 46 
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`V. 
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`Exhibit 2001
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`Exhibit 2002
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`Exhibit 2003
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`Exhibit 2004
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`Exhibit 2005
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`Exhibit 2006
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`Exhibit 2007
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`Exhibit 2008
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`Exhibit 2009
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`Exhibit 2010
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`Exhibit 2011
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`Exhibit 2012
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`Patent Owner’s Preliminary Response (IPR2015-01124)
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`Table of Exhibits
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`Declaration of Stanley Roth in the Inter Partes
`Reexamination of U.S. Patent No. 7,601,662
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`Cavataio, G., et. al., “Enhanced Durability of a Cu/Zeolite
`Based SCR Catalyst.” SAE Int. J. Fuels. Lubr., Vol. 1, Issue
`1 (2008).
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`Declaration of Ahmad Moini in the Inter Partes
`Reexamination of U.S. Patent No. 7,601,662
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`Second Declaration of Pramod Ravindran in the Inter Partes
`Reexamination of U.S. Patent No. 7,601,662
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`Third Party Comments After Patent Owner’s Response After
`ACP in the Inter Partes Reexamination of U.S. Patent No.
`7,601,662
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`USPTO Right of Appeal Notice for Reexamination of U.S.
`Patent No. 7,601,662
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`Request for Inter Partes Reexamination in the proceedings of
`U.S. Patent No. 7,601,662
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`Order Granting/Denying Request for Inter Partes
`Reexamination of U.S. Patent No. 7,601,662
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`Declaration of Stacey I. Zones in the Inter Partes
`Reexamination of U.S. Patent No. 7,601,662
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`Declaration of Gary L. Haller in the Inter Partes
`Reexamination of U.S. Patent No. 7,601,662
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`Second Declaration of Ahmad Moini in the Inter Partes
`Reexamination of U.S. Patent No. 7,601,662
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`Centi, G., et. al., “Nature of Active Species in Copper-Based
`Catalysts and their Chemistry of Transformation of Nitrogen
`Oxides,” Applied Catalysis A: General, Vol. 132, Issue 2
`(1995)
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`Exhibit 2013
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`Exhibit 2014
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`Exhibit 2015
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`Patent Owner’s Preliminary Response (IPR2015-01124)
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`Second Declaration of Stanley Roth in the Inter Partes
`Reexamination of Ivor Bull et al., U.S. Patent No. 7,601,662
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`Kwak, J., et. al., “Excellent Activity and Selectivity of Cu-
`SSZ-13 in the Selective Catalytic Reduction of NOx with
`NH3,” Journal of Catalysis (2010)
`Dedecek, J., et. al., “Effect of Framework Charge Density on
`Catalytic Activity of Copper Loaded Molecular Sieves on
`Chabazite Structure in Nitrogen (II) Oxide Decomposition,”
`Collect. Czech. Chem. Commun., Vol. 65 (2000)
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`Patent Owner’s Preliminary Response (IPR2015-01124)
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`In re Antonie,
`559 F.2d 618 (C.C.P.A. 1977) ............................................................................ 12
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`Elkay Mfg. Co. v. Ebco Mfg. Co.,
`192 F.3d 973 (Fed. Cir. 1999) .............................................................................. 9
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`Environmental Designs, Ltd. v. Union Oil Co.,
`713 F. 2d 693 (Fed. Cir. 1983), cert. denied, 464 U.S. 1043 (1984) .................. 34
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`In re Huai-Hung Kao,
`639 F.3d 1057 (Fed. Cir. 2011) .................................................................... 37, 38
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`Jonsson v. The Stanley Works,
`903 F.2d 812, 14 U.S.P.Q.2D (BNA) 1863 (Fed. Cir. 1990) ............................. 10
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`Otsuka Pharm. Co. v. Sandoz, Inc.,
`678 F.3d 1280 (Fed. Cir. 2012) .................................................................... 20, 42
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`In re Papesch,
`315 F.2d 381 (CCPA 1963) ................................................................................ 12
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`Pfizer Inc. v. Teva Pharms. USA, Inc.,
`555 Fed. Appx. 961 (Fed. Cir. 2014) .................................................................. 15
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`Sanofi-Synthelabo v. Apotex, Inc.,
`550 F.3d 1075 (Fed. Cir. 2008) .......................................................................... 12
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`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) .......................................................................... 32
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`In re Sullivan,
`498 F.3d 1345 (Fed. Cir. 2007) .................................................................... 25, 28
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`Statutes
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`35 USC 103 .............................................................................................................. 12
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`Other Authorities
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`Patent Owner’s Preliminary Response (IPR2015-01124)
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`M.P.E.P. § 716.02(e) ................................................................................................ 30
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`I.
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`INTRODUCTION
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`Patent Owner’s Preliminary Response (IPR2015-01124)
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`The claims of U.S. 8,404,203 (“203 Patent”) pertain to a process for the
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`reduction of oxides of nitrogen (“NOx”) in a gas stream in the presence of oxygen.
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`The process, according to independent claim 1, includes a catalyst comprising a
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`zeolite having the CHA structure, a silica to alumina mole ratio (“SAR”) of 15 to
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`100, and a copper to aluminum atomic ratio between 0.25 and 0.50 that reduces
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`oxides of nitrogen in a gas stream in the presence of oxygen. The process
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`according to claims 14-31 is further limited to the reduction of oxides of NOx in
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`the presence of a reductant, such as ammonia.
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`The development of a copper-loaded zeolite (“Cu-zeolite”) for reduction of
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`NOx was initially met with skepticism, while the resulting invention was met with
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`praise and called “remarkable” in comparison to earlier Cu-zeolite SCR
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`formulations. As is evident from the reexamination history of the 662 Patent, the
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`claimed catalyst produced unexpected results and solved a longstanding need for a
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`material that exhibited low temperature NOx conversion and improved
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`hydrothermal stability.
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`The Petition for inter partes review filed on April 30, 2015, hinges on the
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`argument that the claimed copper CHA zeolite (“CuCHA”) and its process of use
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`is obvious based on the combination of U.S. Patent No. 4,046,888 (“Maeshima”)
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`or Dedecek, et. al. “Siting of Cu+ ions in dehydrated ion exchanged synthetic and
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`natural chabsites: a Cu+ photoluminescence study” (“Dedecek”) in view of U.S.
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`Patent No. 4,503,023 (“Breck”). However, Petitioner’s analysis fails to apply the
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`applicable law, is riddled with analyses grounded in impermissible hindsight, and
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`repeats arguments previously rejected in a prior reexamination of the 662 Patent, of
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`which the 203 Patent is a divisional.
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`First, the combination of Maeshima and Breck fails both prongs of the lead
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`compound analysis. Neither Maeshima nor Breck disclose that a Cu-zeolite having
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`the CHA structure (“CuCHA”) would be a natural choice for further development
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`efforts with regard to the reduction of NOx, or that it would have been obvious to
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`one of ordinary skill in the art to increase the SAR of a CuCHA above 15.
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`Maeshima provides a list of nine zeolites, one of which is chabazite, but otherwise
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`includes no other discussion, data or examples regarding a zeolite having the CHA
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`structure. Instead, the discussion in Maeshima is focused on faujasite, which does
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`not have the CHA structure. Moreover, Maeshima discloses that the preferred
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`SAR is between 2 and 6. Breck generally relates to a process for increasing the
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`SAR of a variety of zeolites, but contains no discussion, data or examples
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`regarding the reduction of NOx or a Cu-zeolite having the CHA structure. While
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`Breck provides nineteen examples of zeolites with an increased SAR, only one of
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`the examples has the CHA structure. And in that example, the SAR of the CHA
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`zeolite (LZ-218) is 11.13, which is below the claimed range in the 203 Patent.
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`Patent Owner’s Preliminary Response (IPR2015-01124)
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`Second, the combination of Dedecek and Breck simply repeats an argument
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`that was considered and rejected during the reexamination of the 662 Patent. In
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`that reexamination it was argued that it would have been obvious to increase the
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`SAR of the CuCHA zeolites disclosed in Dedecek. The Examiner did not adopt
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`the proposed rejection in view of substantial evidence that the zeolites disclosed in
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`Dedecek were inactive for NOx decomposition, and therefore, would not have been
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`considered a suitable option for further development by a person of ordinary skill
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`in the art:
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`Dedecek teaches that zeolites containing Cu ions attract attention
`owing to their high catalytic activity in NO and N2O decomposition
`and selective catalytic reduction of NO with ammonia (see p. 63).
`However, Dedecek never tests the catalytic activity of the natural and
`synthetic Cu-CHA taught therein. In fact, Dedecek 2 prepared the
`same synthetic Cu-CHA material as in Dedecek (compare the
`Experimental section at p. 64 of Dedecek with the Experimental
`section at p. 344 of Dedecek 2), and Dedecek 2 found that the catalyst
`was inactive for NO decomposition (see p. 344 and 346 of Dedecek
`2).
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`Exhibit 2006 at .031. Additionally, the Petitioner’s reliance on Breck (as opposed
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`to the Chung reference considered in combination with Dedecek in the
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`reexamination), does not alter this conclusion. Breck does not provide any
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`example of a CHA zeolite with a SAR greater than 15, nor does it include any
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`Patent Owner’s Preliminary Response (IPR2015-01124)
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`discussion, examples or data regarding the use of a CHA zeolite for the reduction
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`of NOx. Accordingly, Breck does not provide adequate motivation to increase the
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`SAR of the inactive CuCHA zeolites disclosed in Dedecek.
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`For these reasons, and others articulated in detail below, the Patent Owner
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`respectfully requests that the Board deny institution of the grounds presented in the
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`Petition.
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`II. THE 203 PATENT
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`The 203 Patent was filed on June 8, 2009, and is a divisional of application
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`No. 12/038,423, which was filed on February 27, 2009 and issued as the 662
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`Patent. The 662 Patent and the 203 Patent both claim priority to provisional
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`application No. 60/891,835 filed on February 27, 2007.
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`A. Background
`The claimed invention in the 203 Patent pertains to a process for the
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`reduction of NOx contained in a gas stream that makes use of a select zeolite. This
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`select zeolite is described as being useful to reduce NOx in exhaust gas streams.
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`Prior to the claimed invention, a large-number of metal promoted zeolites suffered
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`from one or both of the following defects: (1) poor conversion of oxides of
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`nitrogen at low temperatures, for example 350 C and lower; and (2) poor
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`hydrothermal stability marked by a significant decline in catalytic activity.
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`Because of these defects, it was believed by researchers in the field that copper-
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`exchanged zeolites were not commercially viable for use in commercial exhaust
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`gas treatment including, for example, diesel engines. For example, in 2005, when
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`researchers at Engelhard Corporation1 were attempting to secure Department of
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`Energy (DOE) funding for a proposal to study Cu-zeolites, they were told that
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`“‘some reviewers and [the] DOE grant manager simply think Cu-exchanged
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`zeolites are far to [sic, too] unstable to water to be commercially feasible, so they
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`do not want to fund work in the area.’” Exhibit 2001 at ¶¶ 4-8. It was also known
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`that Fe/zeolite formulations exhibited superior hydrothermal stability over
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`Cu/zeolite formulations. See Exhibit 2002 at .001. However, Fe/zeolite
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`formulations were not very active for NOx conversion at low temperatures. Id.
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`Accordingly, at the time of the invention claimed in the 203 Patent, there was a
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`compelling, unsolved need to provide a material that would provide reduction of
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`NOx at low temperatures and retain catalytic activity after hydrothermal aging at
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`temperatures in excess of 650 C. See Exhibit 2002 at .002 (“Improvements in the
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`thermal durability of Cu/zeolite based SCR formulations has been highly desirable
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`and pursued by many research institutes and catalyst suppliers.”).
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`1 Engelhard was acquired by BASF in 2006.
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`Patent Owner’s Preliminary Response (IPR2015-01124)
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`Summary of the Invention
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`B.
`The inventors of the 203 Patent sought to solve the problems with the prior
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`art. They were tasked with providing a material that exhibited excellent NOx
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`conversion over a wide temperature range and hydrothermal stability. Exhibit
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`2003 at ¶ 3. Following initial studies that examined over 900 zeolite materials,
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`including over twelve different structure types, different silica to alumina ratios,
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`different metal ions, and different metal ion/aluminum ratios, zeolites having the
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`CHA structure, a silica to alumina ratio greater than 15 and copper to aluminum
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`ratios exceeding 0.25 emerged as the lead material. Id. at ¶ 4. The inventors
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`believed the properties of the claimed Cu-zeolite were highly unexpected, a fact
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`confirmed in a 2008 research paper published by the Ford Motor Company (“Ford
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`Paper”) examining a Cu-zeolite formulation provided by the applicants for the 662
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`Patent.2 See Exhibit No. 2002. The Ford Paper “discusses the performance and
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`hydrothermal durability of an enhanced Cu/zeolite based SCR formulation” and
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`makes note of the “remarkable progress that has been made in the past year with
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`2 The Cu-zeolite formulation tested by the Ford Motor Company was provided by
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`the applicant for the 662 Patent under a secrecy agreement and had a silica to
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`alumina ratio (SAR) and a copper to aluminum ratio within the ranges claimed in
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`the 203 Patent. Exhibit 2004 at ¶¶ 4-8.
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`Patent Owner’s Preliminary Response (IPR2015-01124)
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`the durability of the 2007 Cu/zeolite based SCR formulation.” Exhibit 2002 at
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`.002, .005. The paper further notes that the “2007 Cu/zeolite SCR catalyst
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`demonstrated outstanding stability” and “[t]he enhanced durability of the 2007
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`SCR formulations has been mainly attributed to advances in the zeolite type and
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`composition.” Id. at .005-006.
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`Accordingly, claim 1 of the 203 Patent recites a process for the reduction of
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`oxides of nitrogen contained in a gas stream in the presence of oxygen wherein
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`said process comprises contacting the gas stream with a catalyst comprising a
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`zeolite having the CHA crystal structure and a SAR from about 15 to about 100
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`and an atomic ratio of copper to aluminum from about 0.25 to about 0.50. Exhibit
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`1001 at claim 1. Independent claim 26 and dependent claim 14 further require
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`adding a reductant to the gas stream. Dependent claims 15, 17-25, 27 and 31
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`require that the reductant is ammonia, while dependent claims 16 and 28 require
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`that the reductant is urea. Id. at claims 14-31.
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`The disclosure in the 203 Patent confirms the excellent properties (i.e., low
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`temperature catalytic activity and hydrothermal stability) of the claimed process
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`making use of the specified zeolite catalyst. Table 1 of the 203 Patent (reproduced
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`below) shows data regarding examples of the claimed CuCHA (e.g., Examples 2,
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`3, 4) along with comparative examples of Cu-Y and Cu-beta.
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`Patent Owner’s Preliminary Response (IPR2015-01124)
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`Examples 2, 3 and 4 of the claimed CuCHA had a SAR of 30, and Cu/Al ratio of
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`0.33, 0.38, and 0.44, respectively. Exhibit 1101 at Table 1. Examples 10 and 11
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`represent comparative examples of Cu-Y having a silica to alumina ratio of 5 and
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`Cu/Al ratio of 0.23, and Cu/Beta having a silica to alumina ratio of 35 and Cu/Al
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`ratio of 0.36. Id. Both the fresh and aged Cu-Y examples perform poorly at a low
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`temperature (210˚ C). The fresh Cu-Beta example exhibits excellent conversion at
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`210˚ C (92%), but lacks hydrothermal stability (23% conversion when aged). In
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`contrast, examples 2, 3, and 4 exhibit good conversion when fresh at low
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`temperatures (62%, 74%, 76%) and also when aged (59%, 70%, 60%).
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`Inter Partes Reexamination of the 662 Patent
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`C.
`The 662 Patent issued on October 13, 2009. On November 16, 2010, an
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`inter partes reexamination (“662 Reexamination”) was ordered by the Patent
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`Office pursuant to a request by a third party (“Third Party Requester”). The inter
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`partes reexamination certificate issued on June 7, 2013. Claims 1, 2, 9, and 32
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`Patent Owner’s Preliminary Response (IPR2015-01124)
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`were determined to be patentable as amended; claims 3-8, 10-24, 30, and 33-38
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`were determined to be patentable as being dependent on the amended claims; new
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`claims 39-50 were determined to be patentable; and claims 25-29 and 31 were
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`cancelled. Amended claim 1 is reproduced below:
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`1. A catalyst comprising:
`[a] an aluminosilicate zeolite having the CHA crystal structure and a
`mole ratio of silica to alumina [greater than] from about 15 to about
`150 and an atomic ratio of copper to aluminum [exceeding] from
`about 0.25 to about 1, the catalyst effective to promote the reaction of
`ammonia with nitrogen oxides to promote the reaction of ammonia
`with nitrogen oxides to form nitrogen and H2O selectively.
`The claims of the 203 Patent include overlapping limitations. Independent claim 1
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`and 26 of the 203 Patent requires a zeolite having the CHA structure, a SAR from
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`about 15 to about 100, and a Cu/Al ratio from about 0.25 to about 0.50.
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`Independent claim 26 requires a SAR from about 15 to about 150, and a Cu/Al
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`ratio from about 0.25 to about 1. Dependent claims 15-25, 27, and 31 further
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`require a reductant comprising ammonia. Accordingly, the statements and findings
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`of the prior reexamination of the 662 Patent are applicable to the 203 Patent in
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`light of the overlapping claim limitations. See, e.g., Elkay Mfg. Co. v. Ebco Mfg.
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`Co., 192 F.3d 973, 980 (Fed. Cir. 1999) (“When multiple patents derive from the
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`same initial application, the prosecution history regarding a claim limitation in any
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`patent that has issued applies with equal force to subsequently issued patents that
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`Patent Owner’s Preliminary Response (IPR2015-01124)
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`contain the same claim limitation.”); see also Jonsson v. The Stanley Works, 903
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`F.2d 812, 817-818, 14 U.S.P.Q.2D (BNA) 1863, 1868-69 (Fed. Cir. 1990).
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`The 662 Reexamination included extensive analysis and findings by the
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`Examiner regarding the same Dedecek reference that is being asserted as prior art
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`in the present Petition. These findings are summarized below.
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`1.
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`Dedecek in view of Chung
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`In the 662 Reexamination, the Third Party Requester proposed a rejection of
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`the amended claims based on Dedecek in view of Chung, et. al., “Effect of Si/Al
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`ratio of Mordenite and ZSM-5 type Zeolite Catalysts on Hydrothermal Stability for
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`NO Reduction by Hydrocarbons” (“Chung”). The Third Party Requester argued
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`that (1) Dedecek teaches CHA zeolites having the claimed Cu/Al ratio and a silica
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`to alumina ratio of 5.4 or 6.2 that are suitable for SCR of NO with ammonia or
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`hydrocarbon; and (2) Chung teaches that a higher silica to alumina ratio improves
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`hydrothermal stability. Exhibit 2005 at .028-029.
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`In a Right of Appeal Notice dated June 14, 2012, the Examiner did not adopt
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`the proposed rejections. The Examiner explained that “Dedecek teaches that
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`zeolites containing Cu ions attract attention owing to their high catalytic activity in
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`NO and N2O decomposition and selective catalytic reduction of NO with ammonia
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`(p. 63),” but noted that “Dedecek never tests the catalytic activity of the natural
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`and synthetic Cu-CHA taught therein.” Exhibit 2006 at .031. Importantly, the
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`Examiner explained that another reference by the same authors, “Dedecek 2,”
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`disclosed “the same synthetic Cu-CHA material as in Dedecek (compare the
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`Experimental section at p. 64 of Dedecek with the Experimental section at p. 344
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`of Dedecek 2), and Dedecek 2 found that the catalyst was inactive for NO
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`composition (see p. 344 and 346 of Dedecek 2).” Id. Further, the Examiner stated
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`that “[w]hile Chung has been cited for the proposition that a higher silica to
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`alumina mole ratio leads to stronger hydrothermal stability, Chung never examined
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`CHA catalysts, but rather dealt with ZSM-5 and mordenite (MOR) zeolites.” Id. at
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`.032. In view of these findings, the examiner found unpersuasive the argument
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`that there was motivation for one skilled in the art to increase the SAR of the
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`zeolite of Dedecek based on the teachings of Chung. Id. at .052.
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`D. Claim Construction
`1.
`“A process for the reduction of oxides of nitrogen contained in
`a gas stream in the presence of oxygen”
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`Petitioner states that this phrase “is readily understood and can simply be
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`afforded its plain and ordinary meaning.” Petition at 5. Patent Owner agrees, and
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`therefore, the phrase does not require construction. Petitioner further states that it
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`“anticipates” that Patent Owner will argue that the claims are limited to “very
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`specific performance characteristics.” Id. at 5. Patent Owner does not contend that
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`the claims are limited to certain performance characteristics or that performance
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`characteristics should be read into the claims.
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`Patent Owner’s Preliminary Response (IPR2015-01124)
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`However, the claimed process using the claimed zeolite exhibits certain
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`properties and importantly, these properties were unexpected. Accordingly, these
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`properties are pertinent to the evaluation of obviousness of the claimed invention.
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`In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of patent
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`law, a compound and all of its properties are inseparable; they are one and the
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`same thing”); see also Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1086
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`(Fed. Cir. 2008) (“For chemical compounds, the structure of the compound and its
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`properties are inseparable considerations in the obviousness determination.”); In re
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`Antonie, 559 F.2d 618, 619 (C.C.P.A. 1977) (“In delineating the invention as a
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`whole, we look not only to the subject matter which is literally recited in the claim
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`in question (the ratio value) but also to those properties of the subject matter which
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`are inherent in the subject matter and are disclosed in the specification. . . . [j]ust as
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`we look to a chemical and its properties when we examine the obviousness of a
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`composition of matter claim, it is this invention as a whole, and not some part of it,
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`which must be obvious under 35 USC 103.).
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`2.
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`“[C]atalyst” (claim 1)
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`Petitioner contends that the term “catalyst” is indefinite because it is unclear
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`whether the recited silica to alumina mole ratio and copper to aluminum atomic
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`ratio are those of the zeolite or of the entire catalyst. Petitioner, however, proceeds
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`to state that the “broadest reasonable interpretation of the ‘catalyst’ would embrace
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`both a zeolite alone and the zeolite in combination with a binder well and substrate
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`on which the zeolite and binder are deposited.” Petition at 5. It is unclear whether
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`Petitioner is proposing a construction for the term catalyst or whether Petitioner
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`contends that the term is indefinite.
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`Nevertheless, Patent Owner disagrees that the term catalyst is indefinite and
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`with Petitioner’s proposed construction. The claim language is clear and requires,
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`for example in claim 1, “a catalyst comprising a zeolite having the CHA crystal
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`structure and a mole ratio of silica to alumina from about 15 to about 100 and an
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`atomic ratio of copper to aluminum from about 0.25 to about 0.50”. Exhibit 1101
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`at claim 1.
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`3.
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`“[Z]eolite having the CHA crystal structure” (claim 1)
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`Petitioner correctly states that the 662 Patent defines the CHA crystal
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`structure as “defined by the International Zeolite Association.” Petition at 8.
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`Therefore, this claim term does not require construction because the patent
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`expressly defines the claim term. Id. Furthermore, it is not contested by Patent
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`Owner that the International Zeolite Association considers “chabazite” to be a
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`zeolite having a CHA crystal structure.
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`III. GROUNDS 1 AND 2 SHOULD NOT BE INSTITUTED
`Petitioner presents two grounds based on Maeshima in view of Breck.
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`Ground 1 asserts that claims 1, 14, 15, 17-22, 26, and 27 are obvious based on
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`Maeshima in view of Breck, while Ground 2 asserts that claims 2-13, 16, 23-25,
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`and 28-31 are obvious based on Maeshima and Breck further in view of Patchett.
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`Petitioner has not demonstrated a reasonable likelihood of success as to these
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`grounds.3
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`The Board generally “follow[s] a two-part inquiry to determine whether a
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`new chemical compound would have been obvious in light of particular prior art
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`compounds.” IPR2015-00419, Paper 14, at 7 (citing Otsuka Pharm. Co. v. Sandoz,
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`Inc., 678 F.3d 1280, 1291-93 (Fed. Cir. 2012)). The first step is to “determine
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`‘whether a chemist of ordinary skill would have selected the asserted prior art
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`compounds as lead compounds, or starting points, for further development
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`efforts.’” Id. The second step is to “analyze whether there was a reason to modify
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`a lead compound to make the claimed compound with a reasonable expectation of
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`success.” Id. at 8. Petitioner has entirely failed to apply this test. Instead,
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`Petitioner uses the claims of the 203 Patent as the reason for identifying and
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`combining compounds in the prior art, rather than any disclosure of promising
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`3 Patent Owner has elected to only address the combination of Maeshima and
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`Breck. Patent Owner’s election should not be taken as an admission of any facts or
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`conclusions or waiver of any argument regarding the combination of Maeshima
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`and Breck in view of Patchett.
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`useful properties of the compounds in the prior art. Pfizer Inc. v. Teva Pharms.
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`USA, Inc., 555 Fed. Appx. 961, 970 (Fed. Cir. 2014) (“A patent challenger,
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`however, must demonstrate the selection of a lead compound based on its
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`‘promising useful properties,’ not a hindsight-driven search for structurally similar
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`compounds.”).
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`The failure of Petitioner to present a prima facie case of obviousness is
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`further shown by the significant objective evidence of nonobviousness that was
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`made of record in the reexamination of the 662 Patent, of which the 203 Patent is a
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`divisional application. This includes compelling evidence of unexpected results,
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`long-felt need, skepticism, and praise. As set forth in detail below, Petitioner’s
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`attempt to show that the properties (i.e., NOx conversion at low temperatures and
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`hydrothermal stability) of the claimed catalyst are not unexpected is legally flawed,
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`and Petitioner makes no attempt to rebut the remaining objective indicia of non-
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`obviousness.
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`A. Maeshima and Breck Do Not Disclose That a Cu-Zeolite
`Having the CHA Structure is a Lead Compound for the
`Reduction of NOx
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`The claims of the 203 Patent claim a process for the reduction of oxides of
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`nitrogen contained in a gas stream in the presence of oxygen wherein said process
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`comprises contacting the gas stream with a zeolite having the CHA crystal
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`structure and a SAR from about 15 to about 100 and an atomic ratio of copper to
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`aluminum from about 0.25 to about 0.50.4 Petitioner concedes that Maeshima does
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`not disclose a zeolite having the claimed SAR, but argues that one of ordinary skill
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`in the art would have applied the teachings of Breck to Maeshima to arrive at a
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`zeolite with a SAR in the claimed range. Petition at 14-16. Petitioner, however,
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`foregoes an analysis as to why a person of ordinary skill in the art reading
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`Maeshima and Breck would have selected a Cu-zeolite having the CHA structure
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`as a lead compound with regard to the reduction of oxides of nitrogen contained in
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`a gas stream. IPR2015-00419, Paper 14, at 9 (quoting Takeda Chem. Indus., Ltd.
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`v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1357 (Fed. Cir. 2007)) (“A lead
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`compound is ‘a compound in the prior art that would be most promising to modify
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`in order to improve upon its . . . activity and obtain a compound with better
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`activity.’”). Instead, Petitioner simply presumes that a person of ordinary skill in
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`the art would have chosen a Cu-zeolite having the CHA structure and then
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`proceeded to adjust the silica to alumina ratio. This is a flawed approach. As
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`explained below, Maeshima and Breck do not teach or suggest to a person of
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`4 Independent claim 1 requires a SAR from 15 to 100 and Cu/Al ratio from 0.25 to
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`0.5, while independent claim 26 requires a SAR from 15 to 150 and Cu/Al ratio
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`from 0.25 to 1.
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`ordinary skill in the art that a copper zeolite having the CHA crystal structure
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`warrants further investigation, as required by the lead compound analysis.
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`Maeshima provid