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
`Patent Number: 8,404,203
`
`
`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`UMICORE AG & CO. KG,
`Petitioner
`
`v.
`
`BASF Corporation,
`Patent Owner
`
`
`
`
`
`
`
`
`
`Case IPR2015-01124
`Patent Number: 8,404,203
`
`
`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner, BASF Corporation, hereby respectfully requests rehearing of
`
`the November 2, 2015 Decision (“Decision”) instituting an inter partes review as to
`
`claims 1-31 of the U.S. Patent No. 8,404,203 (“203 Patent”). The Board instituted
`
`as to dependent claims 17, 18, 21, and 22 of the 203 Patent, which require, inter
`
`alia, a CuCHA zeolite having a silica to alumina ratio (“SAR”) between 25 and 40
`
`(claims 17, 21) or about 30 (claims 18, 22). In rendering its Decision as to these
`
`dependent claims, the Board appears to have overlooked Patent Owner’s argument
`
`that the prior art at issue—Maeshima, Breck, and Dedecek—does not disclose a
`
`CuCHA zeolite with a SAR above 20. See IPR2015-01124 Patent Owner’s
`
`Preliminary Response at 39-40, 46.
`
`Dependent claims 17, 18, 21, and 22 of the 203 Patent contain identical
`
`dependent limitations as claims 3, 4, 7, and 8 of related U.S. Patent No. 7,601,662
`
`(“662 Patent”). The 662 Patent is the subject of another IPR filed by Petitioner,
`
`IPR2015-01125. The Board instituted inter partes review of the 662 Patent as to
`
`claims 1, 2, 5, 6, 12-24, 30, and 32-38, but declined to institute on dependent claims
`
`3, 4, 7, and 8. IPR2015-01125 Decision Institution, Paper No. 9, at 17, 23. In
`
`rendering the Decision on the 662 Patent, the Board agreed with Patent Owner that
`
`Petitioner had not demonstrated a reasonable likelihood that the subject matter of
`
`claims 3, 4, 7 and 8 of the 662 Patent would have been obvious over the
`
`
`
`
`
`
`IPR2015-01124
`U.S. Patent No. 8,404,203
`combinations of Maeshima and Breck, and Dedecek and Breck. Id.
`
`Given that dependent claims 17, 18, 21 and 22 contain identical limitations as
`
`claims 3, 4, 7, and 8 of the 662 Patent and Petitioner has asserted the same prior art
`
`against both sets of claims (Maeshima, Breck, and Dedecek), it appears that the
`
`Board overlooked this issue with respect to the 203 Patent. Accordingly, Patent
`
`Owner requests that the Board reconsider its decision to institute as to claims 17,
`
`18, 21, and 22 of the 203 Patent.
`
`II. APPLICABLE RULES
`
`37 C.F.R. § 42.71(d) states as follows:
`
`A party dissatisfied with a decision may file a request for
`rehearing, without prior authorization from the Board. The burden of
`showing a decision should be modified lies with the party challenging
`the decision. The request must specifically identify all matters the
`party believes the Board misapprehended or overlooked, and the place
`where each matter was previously addressed in a motion, an
`opposition, or a reply. A request for rehearing does not toll times for
`taking action. Any request must be filed:
`(1) Within 14 days of the entry of a non-final decision or a
`decision to institute a trial as to at least one ground of unpatentability
`asserted in the petition; or
`(2) Within 30 days of the entry of a final decision or a decision
`not to institute a trial.
`
`
`
`
`
`- 3 -
`
`
`
`
`IPR2015-01124
`U.S. Patent No. 8,404,203
`In accordance with 37 C.F.R. § 42.71(d)(1), this request is being filed within
`
`14 days of entry of a decision to institute trial as to at least one ground of
`
`unpatentability asserted in the petition.
`
`III. REQUESTED RELIEF
`
`Patent Owner respectfully requests a rehearing of the Board’s Decision to
`
`institute inter partes review on claims 17, 18, 21, and 22 of the 203 Patent. In light
`
`of the information below, Patent Owner requests that the Board decline to institute
`
`inter partes review of claims 17, 18, 21, and 22.
`
`IV. RATIONALE FOR REHEARING
`
`Patent Owner specifically identifies all matters that it believes the Board
`
`overlooked in rendering its Decision.
`
`In IPR2015-01124, Petitioner challenged claims 17, 18, 21, and 22 of the 203
`
`Patent based on Maeshima in view of Breck, and Dedecek in view of Breck. See
`
`IPR2015-01124 Petition at 17-20. Petitioner made an identical challenge to claims
`
`3, 4, 7, and 8 of the 662 Patent based on Maeshima in view of Breck, and Dedecek
`
`in view of Breck. See IPR2015-01125 Petition at 18-21. As shown in the table
`
`below, claims 17, 18, 21, and 22 of the 203 Patent and claims 3, 4, 7, and 8 of the
`
`662 Patent claim the same dependent limitations:
`
`203 Patent
`17. The process of claim 15, where the
`mole ratio of silica to alumina is from
`
`662 Patent
`3. The catalyst of claim 2, wherein the
`mole ratio of silica to alumina is from
`
`
`
`- 4 -
`
`
`
`
`IPR2015-01124
`U.S. Patent No. 8,404,203
`about 25 to about 40.
`18. The process of claim 15, wherein the
`mole ratio of silica to alumina is about
`30.
`21. The process of claim 15, wherein the
`mole ratio of silica to alumina is from
`about 25 to about 40 and the atomic ratio
`of copper to aluminum is from about
`0.30 to about 0.50.
`22. The process of claim 15, wherein the
`mole ratio of silica to alumina is about
`30 and the atomic ratio of copper to
`aluminum is about 0.40.
`
`In response to both IPR2015-01124 and IPR2015-01125, Patent Owner noted
`
`about 25 to about 40.
`4. The catalyst of claim 2, wherein the
`mole ratio of silica to alumina is about
`30.
`7. The catalyst of claim 2, wherein the
`mole ratio of silica to alumina is from
`about 25 to about 40 and the atomic ratio
`of copper to aluminum is from about
`0.30 to about 0.50.
`8. The catalyst of claim 2, wherein the
`mole ratio of silica to alumina is about
`30 and the atomic ratio of copper to
`alumina is about 0.40.
`
`that Petitioner had failed to establish that the prior art at issue—Maeshima,
`
`Dedecek, and Breck—disclosed a SAR greater than 20. See IPR2015-01124 Patent
`
`Owner’s Preliminary Response at 39-40; IPR2015-01125 Patent Owner’s
`
`Preliminary Response at 40.
`
`The Board concurred with Patent Owner in rendering its decision as to
`
`IPR2015-01125:
`
`As to claims 3, 4, 7, and 8, we agree with Patent Owner that Petitioner
`has not offered adequate evidence demonstrating that Maeshima and/or
`Breck disclose or otherwise suggest a zeolite having an SAR value
`above 20. It is uncontested that Breck does not expressly disclose an
`
`
`
`- 5 -
`
`
`
`
`IPR2015-01124
`U.S. Patent No. 8,404,203
`SAR value above 20, and Petitioner’s arguments and conclusory
`statements by Dr. Lercher do not demonstrate sufficiently that the
`higher SAR values required in these claims would have been obvious
`to a person of ordinary skill in the art. See, e.g., Pet. 13; Ex. 1108 ¶¶
`116, 118, 119. Accordingly, we are not persuaded that Petitioner has
`demonstrated a reasonable likelihood that the subject matter of claims
`3, 4, 7, and 8 would have been obvious over the combination of
`Maeshima and Breck.
`
`***
`As to claims 3, 4 and 7-11, however, we agree with Patent Owner that
`Petitioner has not demonstrated a reasonable likelihood that the subject
`matter of claims 3, 4, and 7-11 would have been obvious over the
`combination of Dedecek and Breck. See supra Section III.C.1.
`
`IPR2015-01125 Decision Institution, Paper No. 9, at 17-18, 23.
`
`
`
`In contrast, the Board’s Decision in IPR2015-01124 instituted on claims 17,
`
`18, 21, and 22 of the 203 Patent, which contain identical limitations to claims 3, 4,
`
`7, and 8 of the 662 Patent, based on the same prior art—Maeshima, Dedecek and
`
`Breck. The Board’s Decision in IPR2015-01124 does contain an express discussion
`
`of the limitations of claims 17, 18, 21 and 22.
`
`
`
`In light of the express findings in the Board’s Decision in IPR2015-01125,
`
`Patent Owner believes that the Board has inadvertently instituted review on claims
`
`17, 18, 21, and 22 of the 203 Patent and respectfully requests rehearing of the
`
`Board’s Decision to institute inter partes review of claims 17, 18, 21, and 22 of the
`
`
`
`- 6 -
`
`
`
`
`IPR2015-01124
`U.S. Patent No. 8,404,203
`203 Patent in IPR2015-01124.
`
`V. REQUESTED RELIEF
`
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`decline to institute inter partes review of claims 17, 18, 21, and 22.
`
` Respectfully submitted,
`
`/ Anish R. Desai/
`Brian E. Ferguson (Reg. 36,801)
`Anish R. Desai (Reg. No. 73,760)
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`Phone: 202-682-7000
`
`
`
`- 7 -
`
`Date: November 16, 2015
`
`
`
`
`
`
`
`
`
`
`
`IPR2015-01124
`U.S. Patent No. 8,404,203
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that on November 16, 2015, the foregoing
`
`PATENT OWNER’S REQUEST FOR REHEARING PURSUANT TO 37
`
`C.F.R. § 42.71(d) was served via electronic mail, upon the following:
`
`Elizabeth Gardner
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1004
`T: 212-425-7200
`egardner@kenyon.com
`
`Richard L. DeLucia
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1004
`T: 212-425-7200
`rdelucia@kenyon.com
`
`
`/Timothy J. Andersen/ a
`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
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
