`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`UMICORE AG & CO. KG
`
`Petitioner
`
`v.
`
`BASF CORPORATION
`
`Patent Owner
`
`Case IPR2015-01125
`U.S. Patent 7,601,662
`__________________________________________________________________
`
`PETITIONER’S MOTION TO EXCLUDE
`__________________________________________________________________
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`
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`Pursuant to 37 C.F.R. § 42.64, Petitioner Umicore AG & CO. KG
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`(“Umicore”) hereby respectfully moves to exclude the following evidence offered
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`by Patent Owner BASF Corp. (“BASF”): (1) Paragraphs 28, 48, 54-55, 62-71, 79,
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`147-150, and 168-177 of the Declaration of Dr. Michael Tsapatsis (Ex. 2018); (2)
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`Paragraph 11 of the February 12, 2016 Declaration of Dr. Ahmad Moini (Ex.
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`2019); and (3) Paragraph 7 of the Declaration of Olivia Schmidt (Ex. 2034).
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`Umicore filed and served a paper setting forth the grounds for its objections to
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`these paragraphs on February 19, 2016. (See Paper 27.) BASF did not serve any
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`supplemental evidence or otherwise respond to the objections.
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`Much like BASF’s response, the Tsapatsis, Moini, and Schmidt declarations
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`focus on unclaimed features, ignore key facts, and fail to include necessary
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`foundational evidence. Further, each of the witnesses avoid expressing certain
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`opinions themselves and instead improperly rely on uncross-examined statements
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`of others in violation of the hearsay rules. For the reasons set forth below,
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`exclusion of the above identified paragraphs is appropriate under Federal Rules of
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`Evidence 402, 602, 702, 703, or 802.
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`I.
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`Paragraphs 28, 48, 54-55, 62-71, 79, 147-150, and 168-177 of the
`Tsapatsis Declaration (Ex. 2018)
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`BASF has submitted an expert declaration of Dr. Tsapatsis (Ex. 2018) in
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`response to Umicore’s showing of prima facie obviousness of the ’662 patent.
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`Federal Rule of Evidence 702 requires an expert’s opinions to be “based on
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`sufficient facts or data.” While Rule 703 provides that an expert may rely on
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`otherwise inadmissible materials, he may do so only “[i]f experts in the particular
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`field would reasonably rely on those kinds of facts or data in forming an opinion.”
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`Paragraphs 28, 48, 54-55, 62-71, 79, 147-150, and 168-177 of the Tsapatsis
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`declaration violate these Rules and should be excluded.
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`A. Dr. Tsapatsis’ Reliance on Irrelevant and Untrustworthy Hearsay
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`The Tsapatsis declaration cites to declarations submitted during
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`reexamination of the ’662 patent. This includes two declarations signed by Dr.
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`Ahmad Moini (Exs. 2003 and 2011), a declaration signed by Pramod Ravindran
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`(Ex. 2004), a declaration signed by Stacey Zones (Ex. 2009), and a declaration
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`signed by Stanley Roth (Ex. 2001). These declarations are not the type of
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`evidence that can be reasonably relied on to support expert opinions. Paragraphs
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`28, 48, 79, 170, and 174 of the Tsapatsis declaration should all be excluded under
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`Rules 702 and 703.
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`1.
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`Opinions Based on the Moini Declarations
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`In paragraph 28, Dr. Tsapatsis cites to a passage in a February 9, 2011 Moini
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`declaration stating that the inventors of the ’662 patent purportedly “screen[ed]
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`over 900 zeolite materials including over twelve different structure types.” (Ex.
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`2003, Moini declaration at ¶ 4; see also Ex. 2018, Tsapatsis declaration at ¶ 28.)
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`According to Dr. Tsapatsis, this shows that the ’662 patent’s subject matter did not
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`entail “routine optimization that was predictable based on prior art teachings.”
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`(Id.)
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`First, Dr. Tsapatsis opinion relating to the Moini declaration is irrelevant
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`under Rule 402. Whether or not the inventors of the ’662 patent themselves
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`engaged in a large amount of work when developing BASF’s commercial catalyst
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`product has no bearing on obviousness. See generally KSR Int’l Co. v. Teleflex
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`Inc., 550 US 398, 406-407 (2007); see also Life Techs., Inc. v. Clontech Labs.,
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`Inc., 224 F.3d 1320, 1325 (Fed. Cir. 2000) (“[T]he path that leads an inventor to
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`the invention is expressly made irrelevant to patentability by statute.”). Instead,
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`the relevant question is whether one of ordinary skill in the art would have
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`considered the broadly claimed subject matter of the ’662 patent to be a predictable
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`variation of known prior art catalysts. Further, there is no evidence in the record
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`indicating that the testing of “900 zeolite materials” and “twelve different structure
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`types” was directed to any problem solved by the claims of the ’662 patent, as
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`opposed to work directed generally to zeolite development. There is also no
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`evidence in the record that any work leading to the claimed invention constituted a
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`large amount of work (as opposed to just a routine volume of laboratory screening
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`conducted by catalyst companies like BASF). Second, such a statement in an
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`uncross-examined declaration submitted by an advocate during patent prosecution
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`is not the type of material experts in the field would rely on in forming opinions on
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`obviousness. Moreover, Dr. Tsapatsis never discussed this issue with Dr. Moini.
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`Paragraph 28 of the Tsapatsis declaration should be excluded under Rules 402 and
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`702.
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`In paragraph 174, Dr. Tsapatsis also cites another declaration signed by Dr.
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`Moini and dated December 18, 2011 (Ex. 2011) to support arguments regarding
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`unexpected results. (See, e.g., Ex. 2018, Tsapatsis Declaration at ¶ 174.) This
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`declaration discussed the purported experimental testing of “two examples from
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`Dedecek.” (Ex. 2011, Moini Declaration at ¶¶ 4-12.) But, Dr. Moini was “not able
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`to obtain natural chabazite samples” identical to those discussed in Dedecek, and
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`instead employed substitute materials with different percentages of silica and
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`alumina (and thus a different SAR). (See id. at ¶ 5.) In other words, Dr. Moini did
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`not test Dedecek’s examples. He tested something different.
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`Later in this same December 2011 declaration, Dr. Moini attempts to
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`compare the prior art samples he tested with “additional Examples representative
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`of the ‘662 invention.” (Id. at ¶ 25.) But, rather than discussing examples he
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`himself prepared and tested, Dr. Moini discusses only “data from a colleague.”
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`(Id.) Dr. Moini provides no indication of who this “colleague” might be, whether
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`this “colleague” was qualified to synthesize catalysts or perform the described
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`tests, and how the data he reports was collected and maintained. Thus, all of Dr.
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`Moini’s discussion of the “additional Examples representative of the ‘662
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`invention” is inadmissible hearsay.
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`Since Dr. Moini did not actually test the prior art and provides only hearsay
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`accounts of the testing of the ’662 patent’s materials, it was improper for Dr.
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`Tsapatsis to rely on this testimony in concluding that “the hydrothermal stability of
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`the claimed CuCHA catalyst is unexpected.” Paragraph 174 should be excluded
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`under Rules 702 and 703.
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`2.
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`Opinions Based on the Ravindran Declaration
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`In paragraph 48, Dr. Tsapatsis cites the Ravindran declaration to argue that a
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`2008 paper authored by employees of Ford is actually discussing a BASF catalyst
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`product. (See Ex. 2018, Tsapatsis Declaration at ¶ 48.) According to BASF, the
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`paper shows that BASF’s catalyst has “remarkable high temperature hydrothermal
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`stability.” (Id.) The Ford paper does not mention BASF. Instead, it merely
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`references “Cu/zeolites” without providing any indication of their source or
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`composition. (See Ex. 2002 at 001-003.)
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`The Ravindran declaration discusses the preparation and labeling of various
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`BASF catalyst samples alleged to be provided to Ford under “a secrecy
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`agreement.” (Ex. 2004, Ravindran Declaration at ¶¶ 4-7.) There is no discussion
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`of what Ford did with the samples once it received them. The declaration states
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`that Mr. Ravindran received an “e-mail” from Ford that “confirmed that the sample
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`referred to in the Ford SAE publication” was a BASF sample. (Id. at ¶ 8.) But,
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`Mr. Ravindran does not attach the referenced email to his declaration, or identify
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`the sender. Thus, Dr. Tsapatsis is using the out of court statements of an unnamed
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`Ford witness in an attempt to prove the truth of the matter asserted: that the Ford
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`paper discusses BASF’s CuCHA catalyst product. This is hearsay. And, BASF
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`has made no attempt to show that any of the hearsay exceptions apply.
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`Compounding this issue, Dr. Tsapatsis has not had a discussion with Mr.
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`Ravindran or anyone at Ford. (See Ex. 1119, Tsapatsis Depo. at 34:8-21.) Thus,
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`he had no way to properly assess the reliability of the hearsay. Paragraph 48 of Dr.
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`Tsapatsis’ declaration should be excluded under Rules 702 and 703.
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`3.
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`Opinions Based on the Zones Declaration
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`In paragraph 79, Dr. Tsapatsis cites a reexamination declaration signed by
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`Stacey Zones in support of an argument that one of Umicore’s prior art
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`references—US 6,709,644 to Zones—directs one of ordinary skill in the art to use
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`the reference’s materials for other catalytic reactions besides ammonia SCR. (Ex.
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`2018, Tsapatsis Declaration at ¶ 79.) This is entirely irrelevant. Dr. Zones’ own
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`after-the-fact characterization of what he meant by certain statements in his prior
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`art patent cannot serve to change the express disclosure of that patent to one of
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`ordinary skill in the art. See, e.g., See, e.g., Innogenetics, N.V. v. Abbott Labs., 512
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`F.3d 1363, 1375 (Fed. Cir. 2008) (affirming exclusion of technical testimony by
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`-6-
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`
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`prior art inventor). The Zones declaration is also inadmissible hearsay. Dr. Zones
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`is not associated with BASF and was not made available for deposition. Thus,
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`paragraph 79 of the Tsapatsis declaration should be excluded under Rules 702 and
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`703.
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`4.
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`Opinions Based on the Roth Declaration
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`In paragraph 170, Dr. Tsapatsis cites a declaration signed by Dr. Stanley
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`Roth (Ex. 2001) and argues that it shows that there was “skepticism” regarding the
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`“commercial viability of Cu-zeolites.” (Ex. 2018, Tsapatsis Declaration at ¶ 170.)
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`The Roth declaration, however, is replete with inadmissible hearsay. Dr. Roth’s
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`declaration references a 2005 email chain between a university professor and a
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`DOE researcher that purportedly represents “the view of … those skilled in the art
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`that Cu-Zeolites could not be used as catalysts for the SCR of NOx because of the
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`inability to maintain NOx conversion upon exposure to hydrothermal conditions.”
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`(Ex. 2001 at 003.) But, neither the university professor nor the DOE researcher are
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`identified. And, neither of these individuals has submitted a declaration in this
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`IPR. Further, Dr. Roth himself contradicts the views expressed by both the
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`professor and researcher when he notes that “[i]n the zeolite literature there are
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`probably many examples of structures with hydrothermal durability to the 700-800
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`oC range. The big issue appears to be your DOE reviewers that have experience
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`limited to the Cu-ZSM5 HC-SCR example, where catalytic performance quickly
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`died after modest hydrothermal aging.” (Id. at 007.) In view of this, it was
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`inappropriate for Dr. Tsapatsis to rely on such inadmissible and internally
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`contradicted statements in the Roth declaration to support his own conclusions
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`regarding alleged “skepticism.” Paragraph 170 should be excluded under Rules
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`702 and 703.
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`B. Reliance on Irrelevant Unclaimed Features
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`The Tsapatsis declaration focuses repeatedly on irrelevant and unclaimed
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`catalyst features. For instance, in paragraphs 54-55 Dr. Tsapatsis argues that the
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`claims of the ’662 patent should be construed to require “the properties that are
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`described in the specification.” (Ex. 2018, Tsapatsis Dec. at ¶¶ 54-55.) Dr.
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`Tsapatsis goes on to argue in paragraphs 62-71 that the materials of the ’662 patent
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`are different from the prior art identified by Umicore because they “solve[]” a
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`problem with prior art materials by providing “low temperature SCR activity
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`and/or improved hydrothermal durability.” (Id. at ¶¶ 62-71.) And, in paragraphs
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`168-177, Dr. Tsapatsis argues that the “hydrothermal stability” of the ’662 patent’s
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`materials overcame skepticism, produced unexpected results, and gave rise to
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`commercial success. (Id. at ¶¶ 168-177.)
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`As explained in Umicore’s reply brief, none of the ’662 patent claims at
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`issue in this IPR require either “low temperature SCR activity” or “improved
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`hydrothermal durability.” (See Umicore’s Reply, Paper 37 at 3-10.) The ’662
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`patent’s specification also includes examples that have the CHA crystal structure,
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`along with SARs and Cu/Al ratios within the claimed ranges—and thus fall within
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`the scope of the ’662 patent’s broadest claims—but admittedly do “not show
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`enhanced resistance to thermal aging.” (Ex. 1101, ’662 patent at 11:20-25.)
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`Moreover, the ’662 patent repeatedly states that it is the presence of “free
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`copper”—also not required by the claims—that purportedly results in improved
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`hydrothermal stability. (See id. at 2:27-32; 2:61-66; 5:31-37; 5:49-52; see also
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`11:34-36; 11:53-55; 12:2-5.)
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`An unclaimed feature or property “is immaterial to obviousness of [a]
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`composition … in light of the prior art showing general efficacy for the same use.”
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`Tyco Healthcare Grp. v. Mut. Pharm. Co., 642 F.3d 1370, 1374 (Fed. Cir. 2011).
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`Here, Umicore’s prior art discloses catalysts with the CHA crystal structure and
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`Cu/Al ratios and SARs overlapping the claimed ranges. This same prior art also
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`explains that these catalysts can be used as SCR catalysts to reduce nitrogen oxides
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`in diesel engine exhaust. (See generally Umicore Petition, Paper 1.) This is all the
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`’662 patent’s claims require. Thus, Dr. Tsapatsis’ repeated references to
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`unclaimed performance features in paragraphs 54-55, 62-71, and 168-177—
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`including improved hydrothermal stability and low temperature SCR activity—are
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`irrelevant to the obviousness question and should be excluded under Rule 402.
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`-9-
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`C. Utilization of Unreliable Principles to Assess Dr. Schuetze’s Data
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`Paragraphs 147-150 of the Tsapatsis declaration discuss certain of the
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`experimental testing performed by Dr. Schuetze in support of Umicore’s IPR
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`petition. (See Ex. 2018, Tsapatsis declaration at ¶¶ 147-150.) According to Dr.
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`Tsapatsis, Dr. Schuetze’s data shows that “there is an improvement in performance
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`between” a Cu/Al ratio of “0.15 and 0.245.” (Id. at ¶ 148.) Dr. Tsapatsis then
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`concludes that this means that “the 0.25 Cu/Al ratio has significance.” (Id.) But,
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`Dr. Tsapatsis does not consider the data collected by Dr. Schuetze in its entirety.
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`The totality of the data actually shows that while performance does increase
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`between a Cu/Al ratio of 0.15 and 0.245, it does so in a steady fashion with no
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`unexpected or large jump in performance when the lower bound of the ’662
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`patent’s claimed Cu/Al ratio range is crossed. (See Ex. 1108, Lercher declaration
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`at ¶¶ 395-410.) Dr. Tsapatsis’ testimony, which is based on isolated testing points,
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`is not “the product of reliable principles and methods” and thus should be excluded
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`under Rule 702. Further, the mere fact that there is an “increase” in performance
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`does not mean that the claimed ranges are “critical.” See In re Soni, 54 F.3d 746,
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`751 (Fed. Cir. 1995); see also Golderma Lab., LP v. Tolmar, Inc., 737 F.3d 731,
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`739 (Fed. Cir. 2013). Dr. Tsapatsis’ failure to address whether the claimed ranges
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`of Cu/Al ratios and SARs produce results that are different in some meaningful
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`way than those achieved by the prior art (as opposed to just being marginally
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`better) render his opinions irrelevant under Rule 402.
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`II.
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`Paragraph 11 of the Moini Declaration
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`Paragraph 11 of the Moini declaration (Ex. 2019) is inadmissible and must
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`be excluded under Rules 402, 602, 702, and 802. BASF cites to the Moini
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`declaration in an effort to show that “excellent activity over a wide temperature
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`range and excellent hydrothermal stability” give rise to the purported commercial
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`success of BASF’s CuCHA catalyst products. (See BASF Response Brief, Paper
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`25 at 45-46.) However, Dr. Moini’s declaration discusses the “product
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`specification for the commercially available CuCHA catalyst sold by BASF,” and
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`not the actual performance of the products as sold. (Ex. 2019 at ¶¶ 4-10.) Dr.
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`Moini also states—without any explanation or supporting context—that
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`“customers who purchase the CuCHA catalyst product do so because of the
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`excellent properties of CuCHA material coated on the substrate.” (Id. at ¶ 11.) Dr.
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`Moini’s unsupported, speculative testimony regarding why customers purchase
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`BASF’s products is inadmissible and should be excluded.
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`Dr. Moini is “employed by BASF as a scientist.” (Id. at ¶ 1; see also Ex.
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`2003 at ¶¶ 1-2; Ex. 2011 at ¶¶ 1-2.) While this technical background could make
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`Dr. Moini knowledgeable about the composition of BASF’s catalysts and its
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`research efforts, there is no indication in the record that he has any involvement
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`-11-
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`with the marketing of BASF’s products. Likewise, BASF has presented no
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`evidence or other testimony showing that Dr. Moini interacts (directly or
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`indirectly) with BASF’s customers. Rule 602 provides that a fact witness’s
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`testimony must be based on his own personal knowledge. Rule 702 provides that
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`an expert must have technical, scientific or specialized knowledge that will help
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`the trier of fact to understand the evidence. An expert’s opinions must also be
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`based on sufficient facts or data. Here, BASF has presented no evidence showing
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`that Dr. Moini is sufficiently knowledgeable or qualified to offer either fact or
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`opinion testimony regarding why BASF’s customers purchase its products. Absent
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`this necessary foundational evidence, Dr. Moini’s unsupported statements in
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`paragraph 11 must be excluded.
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` Next, while there is no indication that this is the case, even if paragraph 11
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`of Dr. Moini’s declaration is simply meant to relay statements made by BASF’s
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`customers to Dr. Moini, it would still be inadmissible. No BASF customers who
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`have made comments similar to that in paragraph 11 of the Moini declaration have
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`been identified. And, no documents have been produced by BASF reflecting
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`customer comments. Thus, Dr. Moini and BASF would be improperly attempting
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`to rely on the alleged out of court statements of BASF’s customers to prove why
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`those customers are buying BASF’s products. This is hearsay. Exclusion under
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`Rule 802 is appropriate.
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`Last, Dr. Moini’s testimony is irrelevant under Rule 402. As noted above,
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`BASF points to this testimony in an effort to show that its CuCHA product is
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`commercially successful because of its “excellent activity over a wide temperature
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`range and excellent hydrothermal stability.” But, none of the ’662 patent’s claims
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`require catalysts with these properties. Instead, the claims embrace any catalyst
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`with a SAR and Cu/Al ratio falling within the claimed ranges that is “effective to
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`promote the reaction of ammonia with nitrogen oxides to form nitrogen and H2O
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`selectively.” Dr. Moini’s testimony relates to unclaimed features and lacks the
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`nexus with the claimed subject matter that is required to render it relevant to the
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`obviousness analysis.
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`III. Paragraph 7 of the Schmidt Declaration
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`Paragraph 7 of the Schmidt declaration (Ex. 2034) is inadmissible and
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`should be excluded under Rules 402 and 802. BASF cites to this particular
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`paragraph in an effort to show the share of the SCR catalyst market satisfied by its
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`own CuCHA catalyst product. (See BASF Response Brief, Paper 25 at 46-47.)
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`In this paragraph, Ms. Schmidt references “internal data” of BASF relating
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`to the “sales of CuCHA catalysts” and “estimates regarding the sales by BASF
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`licensees.” (Ex. 2034 at ¶ 7.) BASF is relying on the data to establish the truth of
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`the matter asserted: BASF’s level of sales. This is hearsay.
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`BASF has also not established that any of the hearsay exceptions apply.
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`While Ms. Schmidt states that the “numbers” in her declaration are “maintain[ed]
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`in the ordinary course of business” (see Ex. 2034 at ¶ 8), no other information is
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`provided. None of this data was attached to Ms. Schmidt’s declaration or
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`otherwise made available by BASF. And, there is no explanation regarding how
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`the “internal data” of BASF’s sales and “estimates” of BASF’s licensees’ sales are
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`generated. Ms. Schmidt also does not explain who collects this data, or when it is
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`recorded by BASF. When Umicore attempted to obtain further details regarding
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`the data during deposition, BASF blocked questioning. (See, e.g., Ex. 1120, April
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`29, 2016 Schmidt Depo. at 22:1-6.) This information was required to properly
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`assess whether any of the exceptions Rule 803 apply. Absent this, paragraph 7 of
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`Ms. Schmidt’s declaration must be excluded.
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`Paragraph 7 of Ms. Schmidt’s declaration is also irrelevant. The market
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`share data in this paragraph includes the sales of both “BASF CuCHA catalysts”
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`and the catalysts of “BASF licensees.” (Ex. 2034 at ¶ 7; see also Ex. 1120,
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`4/29/16 Depo. of Olivia Schmidt at 14:17-15:6, 16:14-20; 21:20-25.) But, BASF
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`has not provided any information at all about its licensees’ products, let alone
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`information sufficient to determine if those products fall within the scope of the
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`’662 patent’s claims. BASF has also refused to identify what portion of the market
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`share data reported by Ms. Schmidt is accounted for by BASF’s CuCHA catalyst
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`(the only product that BASF compares to the claims). (See id. at 22:1-24:16.)
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`These evidentiary deficiencies render the market share number reported by Ms.
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`Schmidt meaningless. As a result, paragraph 7 is irrelevant by BASF’s own
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`making and should be excluded.
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`Date: 6/20/2016
`
`/ 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
`
`-15-
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`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby confirms that the foregoing PETITIONER’S
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`MOTION TO EXCLUDE was served on June 20, 2016 via e-mail upon the
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`following counsel of record for Patent Owner:
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`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
`
`-16-