`571-272-7822
`
`Paper No. 14
`Entered: December 07, 2015
`
`
`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 8,404,203 B2
`____________
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`DECISION
`Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`IPR2015-01124
`Patent 8,404,203 B2
`
`
`On November 16, 2015, BASF Corporation (“Patent Owner”) filed a
`Request for Rehearing (Paper 11, “Req. Reh’g”) of our Decision instituting
`inter partes review of claims 1–31 of U.S. Patent No. 8,404,203 B2 (“the
`’203 patent” ) (Paper 8). Patent Owner’s basis for requesting rehearing is its
`contention that the Board overlooked arguments demonstrating Petitioner
`failed to establish that the cited prior art discloses all of the elements of
`claims 17, 18, 21, and 22. Req. Reh’g 1–2, 4–5.
`Specifically, Patent Owner contends that we “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.” Req.
`Reh’g 1 (citing Prelim. Resp. 39–40, 46). Patent Owner contends that the
`limitations in claims 17, 18, 21, and 22 of the ’203 patent are identical to
`those in claims 3, 4, 7, and 8 of related U.S. Patent No. 7,601,662 (“the ’662
`patent”), which is the subject of IPR2015-01125 (the “1125 IPR”), also filed
`by Petitioner. Id. at 1, 4–5. Patent Owner further contends that Petitioner
`made identical allegations in this proceeding with respect to the obviousness
`of claims 17, 18, 21, and 22 as it did in the 1125 IPR with respect to the
`obviousness of claims 3, 4, 7, and 8 of the ’662 patent. Id. at 4. Patent
`Owner notes that in the 1125 IPR, the Board agreed with Patent Owner that
`Petitioner did not establish adequately that Maeshima, Breck, and/or
`Dedecek disclose or suggest the SAR values recited in claims 3, 4, 7, and 8,
`and declined to institute inter partes review as to those claims. Id. at 5–6
`(citing 1125 IPR Paper 9, 17–18, 23). Petitioner did not request rehearing of
`the Board’s decision denying institution with respect to claims 3, 4, 7, and 8
`in the 1125 IPR.
`
`2
`
`
`
`
`
`IPR2015-01124
`Patent 8,404,203 B2
`
`
`We agree that we overlooked Patent Owner’s arguments that
`Petitioner failed to demonstrate sufficiently that Maeshima, Breck, and
`Dedecek disclose or suggest the SAR values recited in claims 17, 18, 21, and
`22. Upon further consideration, we agree with Patent Owner that Petitioner
`has not offered adequate evidence demonstrating that the higher SAR values
`required by claims 17, 18, 21, and 22 would have been obvious to a person
`having ordinary skill in the art over the combination of Maeshima and
`Breck, or over the combination of Dedecek and Breck. See, e.g., Pet. 13–14,
`43; Ex. 1108 ¶¶ 122–129.
`Patent Owner’s Request for Rehearing is granted.
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Request for Rehearing is granted;
`
`and
`
`FURTHER ORDERED that the Order instituting trial is modified so
`that the trial is limited to the following grounds:
`Whether claims 1, 14, 15, 19, 20, 26, and 27 are unpatentable under
`35 U.S.C. § 103(a) as obvious over the combination of Maeshima and
`Breck;
`Whether claims 2–13, 16, 23–25, and 28–31 are unpatentable under
`35 U.S.C. § 103(a) as obvious over the combination of Maeshima, Breck,
`and Patchett;
`Whether claims 1, 14, 15, 19, 20, 26, and 27 are unpatentable under
`35 U.S.C. § 103(a) as obvious over the combination of Dedecek and Breck;
`and
`
`3
`
`
`
`
`
`IPR2015-01124
`Patent 8,404,203 B2
`
`
`Whether claims 2–13, 16, 23–25, and 28–31 are unpatentable under
`35 U.S.C. § 103(a) as obvious over the combination of Dedecek, Breck, and
`Patchett.
`
`PETITIONER:
`
`Elizabeth Gardner
`Richard L. DeLucia
`KENYON & KENYON LLP
`egardner@kenyon.com
`rdelucia@kenyon.com
`
`
`
`PATENT OWNER:
`
`Brian E. Ferguson
`Anish R. Desai
`WEIL, GOTSCHAL & MANGES LLP
`brian.ferguson@weil.com
`anish.desai@weil.com
`
`
`
`
`4
`
`
`
`
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