Patent Owner’s Preliminary Response (IPR2015-01125)
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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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`IPR2015-01125
`U.S. Patent 7,601,662
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`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,601,662
`PURSUANT TO 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
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`Patent Owner’s Preliminary Response (IPR2015-01125)
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`Table of Contents
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`I. 
`II. 
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`INTRODUCTION ........................................................................................... 1 
`THE 662 PATENT .......................................................................................... 4 
`A. 
`Background ........................................................................................... 4 
`B. 
`Summary of the Invention ..................................................................... 5 
`C. 
`Inter Partes Reexamination ................................................................... 8 
`1. 
`Dedecek in view of Chung .......................................................... 9 
`Claim Construction ............................................................................. 10 
`1. 
`“[C]atalyst” (claim 1) ................................................................ 10 
`2. 
`“[Z]eolite having the CHA crystal structure” (claim 1) ........... 11 
`3. 
`“[I]on-exchanged copper” and “non-exchanged copper”
`(claim 9) .................................................................................... 11 
`“[T]he catalyst effective to promote the reaction of
`ammonia with nitrogen oxides to form nitrogen and H2O
`selectively” (claim 1) ................................................................ 12 
`III.  GROUNDS 1 AND 2 SHOULD NOT BE INSTITUTED ........................... 14 
`A.  Maeshima and Breck Do Not Disclose That a Cu-Zeolite
`Having the CHA Structure is a Lead Compound for the
`Reduction of NOx ................................................................................ 16 
`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 ............................................................................. 26 
`There is Substantial Evidence That the Claimed
`1. 
`Invention Produced Unexpected Results .................................. 26 
`The Schutze Declaration Submitted By Petitioner Is
`Legally Irrelevant ...................................................................... 28 
`Other Secondary Considerations of Nonobviousness ......................... 33 
`1. 
`Skepticism ................................................................................. 33 
`2. 
`Long-Felt Need ......................................................................... 35 
`3. 
`Praise ......................................................................................... 37 
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`D. 
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`4. 
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`2. 
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`E. 
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`i.
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`Patent Owner’s Preliminary Response (IPR2015-01125)
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`F. 
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`The Evidence of Secondary Considerations is Commensurate
`With the Scope of the Claims .............................................................. 38 
`Failure of Proof as to Claims 3, 4, 7, and 8 ......................................... 40 
`G. 
`Failure of Proof as to Claims 9 and 10 ................................................ 40 
`H. 
`IV.  GROUNDS 3 AND 4 SHOULD NOT BE INSTITUTED ........................... 42 
`A.  Dedecek Has Previously Been Rejected as a Lead Reference ............ 43 
`B. 
`Breck is Cumulative of Chung ............................................................ 44 
`C. 
`Secondary Considerations of Nonobviousness ................................... 47 
`D. 
`Failure of Proof as to Claims 3, 4, 7, and 8 ......................................... 47 
`E. 
`Failure of Proof as to Claims 9 and 10 ................................................ 48 
`CONCLUSION .............................................................................................. 49 
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`V. 
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`Patent Owner’s Preliminary Response (IPR2015-01125)
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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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`iii
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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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`Exhibit 2013
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`Exhibit 2014
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`Exhibit 2015
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`Patent Owner’s Preliminary Response (IPR2015-01125)
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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 (IPR2015-01125)
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`Environmental Designs, Ltd. v. Union Oil Co.,
`713 F. 2d 693 (Fed. Cir. 1983), cert. denied, 464 U.S. 1043 (1984) .................. 35
`
`In re Grose,
`592 F.2d 1161 (Fed. Cir. 1979) .............................................................. 12, 13, 14
`
`In re Huai-Hung Kao,
`639 F.3d 1057 (Fed. Cir. 2011) .......................................................................... 38
`
`In re Mills,
`281 F.2d 218 (C.C.P.A. 1960) ............................................................................ 14
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`Otsuka Pharm. Co. v. Sandoz, Inc.,
`678 F.3d 1280 (Fed. Cir. 2012) ........................................................ 20, 21, 23, 44
`
`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
`
`Sanofi-Synthelabo v. Apotex, Inc.,
`550 F.3d 1075 (Fed. Cir. 2008) .......................................................................... 12
`
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) .......................................................................... 33
`
`In re Sullivan,
`498 F.3d 1345 (Fed. Cir. 2007) .................................................................... 26, 28
`
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`I.
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`INTRODUCTION
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`Patent Owner’s Preliminary Response (IPR2015-01125)
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`The claims of U.S. 7,601,662 (“the 662 Patent”) pertain to a catalyst
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`comprising an aluminosilicate zeolite having the CHA structure, a silica to alumina
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`ratio (“SAR”) of 15 to 150, and a copper to aluminum atomic ratio between 0.25
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`and 1, where the catalyst is effective to promote the reaction of ammonia with
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`nitrogen oxides (“NOx”) to form nitrogen and H2O selectively (i.e., selective
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`catalytic reduction (“SCR”) of NOx in the presence of NH3).
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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”) is obvious based on the
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`combination of U.S. Patent No. 4,046,888 (“Maeshima”) or Dedecek, et. al. “Siting
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`of Cu+ ions in dehydrated ion exchanged synthetic and natural chabsites: a Cu+
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`photoluminescence study” (“Dedecek”) in view of U.S. Patent No. 4,503,023
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`(“Breck”). However, Petitioner’s analysis fails to apply the applicable law, is
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`Patent Owner’s Preliminary Response (IPR2015-01125)
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`riddled with analyses grounded in impermissible hindsight, and repeats arguments
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`previously rejected in a prior reexamination of the 662 Patent.
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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 would be a natural choice for development with regard to the
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`SCR of NOx, or that it would have been obvious to one of ordinary skill in the art
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`to increase the SAR of a CuCHA above 15. Maeshima provides a list of nine
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`zeolites, one of which is chabazite, but otherwise includes no other discussion, data
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`or examples regarding a zeolite having the CHA structure. Instead, the discussion
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`in Maeshima is focused on faujasite, which does not have the CHA structure.
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`Moreover, Maeshima discloses that the preferred SAR is between 2 and 6. Breck
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`generally relates to a process for increasing the SAR of a variety of zeolites, but
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`contains no discussion, data or examples regarding the SCR of NOx or a Cu-zeolite
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`having the CHA structure. While Breck provides nineteen examples of zeolites
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`with an increased SAR, only one of the examples has the CHA structure. And in
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`that example, the SAR of the CHA zeolite (LZ-218) is 11.13, which is below the
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`claimed range in the 662 Patent.
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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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`Patent Owner’s Preliminary Response (IPR2015-01125)
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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, and therefore, would not have been considered a suitable
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`option for further development by a person of ordinary skill 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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`discussion, examples or data regarding the use of a CHA zeolite for the SCR of
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`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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`Patent Owner’s Preliminary Response (IPR2015-01125)
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`For these reasons, and others articulated in detail below, 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 662 PATENT
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`The 662 Patent was filed on February 27, 2008 and claims priority to a
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`provisional application filed on February 27, 2007.
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`A. Background
`The claimed invention in the 662 Patent pertains to a select zeolite useful for
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`the selective catalytic reduction (SCR) of oxides of nitrogen in exhaust gas
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`streams, such as diesel engine exhaust. Prior to the claimed invention, a large-
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`number of metal promoted zeolites suffered from one or both of the following
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`defects: (1) poor conversion of oxides of nitrogen at low temperatures, for
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`example 350 C and lower; and (2) poor hydrothermal stability marked by a
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`significant decline in catalytic activity in the conversion of oxides of nitrogen by
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`SCR. Because of these defects, it was believed by researchers in the field that
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`copper-exchanged zeolites were not commercially viable for use in commercial
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`exhaust gas treatment including, for example, diesel engines. For example, in
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`2005, when Engelhard Corporation1 was 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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`1 Engelhard was acquired by BASF in 2006.
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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 Cu-
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`zeolite formulations. Exhibit 2002 at .001. However, Fe-zeolite formulations were
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`not very active for NOx conversion at low temperatures. Id. Accordingly, at the
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`time of the invention claimed in the 662 Patent in 2007, there was a compelling,
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`unsolved need to provide a material that would provide conversion of oxides of
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`nitrogen at low temperatures and retention of SCR catalytic activity after
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`hydrothermal aging at temperatures in excess of 650 C. See Exhibit 2002 at .002
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`(“Improvements in the thermal durability of Cu/zeolite based SCR formulations
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`has been highly desirable and pursued by many research institutes and catalyst
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`suppliers.”).
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`Summary of the Invention
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`B.
`The inventors of the 662 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. Exhibit 2003 at ¶ 4. The
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`inventors believed the properties of the claimed Cu-zeolite were highly
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`unexpected, a fact confirmed in the 2008 research paper published by the Ford
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`Motor Company (“Ford Paper”) examining a Cu-zeolite formulation provided by
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`the applicants for the 662 Patent.2 See Exhibit 2002. The Ford Paper “discusses
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`the performance and hydrothermal durability of an enhanced Cu/zeolite based SCR
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`formulation” and makes note of the “remarkable progress that has been made in the
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`past year with the durability of the 2007 Cu/zeolite based SCR formulation.”
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`Exhibit 2002 at .002, .005. The Paper further notes that the “2007 Cu/zeolite SCR
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`catalyst demonstrated outstanding stability” and “[t]he enhanced durability of the
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`2007 SCR formulations has been mainly attributed to advances in the zeolite type
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`and composition.” Exhibit 2002 at .005-006.
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`Claim 1 of the 662 Patent embodies the catalyst that was praised in the Ford
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`Paper. Specifically, claim 1 of the 662 Patent requires a catalyst comprising an
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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 662 Patent. Exhibit 2004 at ¶¶ 4-8.
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`aluminosilicate zeolite having the CHA crystal structure, a mole ratio of silica to
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`alumina between 15 and 150, and a copper to aluminum atomic ratio from 0.25 to
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`1, the catalyst being effective to promote the reaction of ammonia with nitrogen
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`oxides to form nitrogen and H2O selectively (i.e., SCR of NOx in presence of
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`ammonia).
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`The disclosure in the 662 Patent confirms the excellent properties (i.e., low
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`temperature SCR activity and hydrothermal stability) of the claimed catalyst. Table
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`1 of the 662 Patent (reproduced below) shows data regarding examples of the
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`claimed CuCHA (e.g., Examples 2, 3, 4) along with comparative examples of Cu-
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`Y and Cu-beta.
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`Examples 2, 3 and 4 of the claimed CuCHA had a silica to alumina ratio of 30, and
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`Cu/Al ratio of 0.33, 0.38, and 0.44, respectively. Exhibit 1101 at Table 1, 11:39-
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`41. Examples 10 and 11 represent comparative examples of Cu-Y having a silica
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`to alumina ratio of 5 and Cu/Al ratio of 0.23, and Cu-Beta having a silica to
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`alumina ratio of 35 and Cu/Al ratio of 0.36. Id. at Table 1, 13:47-48, 14:12-14.
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`Both the fresh and aged Cu-Y examples perform poorly at a low temperature (210˚
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`C). The fresh Cu-Beta example exhibits excellent conversion at 210˚ C (92%), but
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`lacks hydrothermal stability (23% conversion when aged). In contrast, examples 2,
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`3, and 4 exhibit good conversion when fresh at low temperatures (62%, 74%, 76%)
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`and also when aged (59%, 70%, 60%).
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`Inter Partes Reexamination
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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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`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
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`Patent Owner’s Preliminary Response (IPR2015-01125)
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`ammonia with nitrogen oxides to promote the reaction of ammonia
`with nitrogen oxides to form nitrogen and H2O selectively.
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`The 662 Reexamination included extensive analysis and findings by the Examiner
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`regarding the same Dedecek reference that is being asserted as prior art in the
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`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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`Patent Owner’s Preliminary Response (IPR2015-01125)
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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.”
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`Exhibit 2006 at .032. In view of these findings, the Examiner found unpersuasive
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`the argument that there was motivation for one skilled in the art to increase the
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`SAR of the zeolite of Dedecek based on the teachings of Chung. Exhibit 2006
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`at .052.
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`D. Claim Construction
`1.
` “[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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`Patent Owner’s Preliminary Response (IPR2015-01125)
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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 a
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`catalyst comprising an aluminosilicate zeolite having the CHA crystal structure, a
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`mole ratio of the silica to alumina from about 15 to about 150, and a copper to
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`aluminum ratio from about 0.25 to about 1. Exhibit 1101 at claim 1.
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`2.
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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.” Exhibit 1101 at
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`1:56-57. Therefore, this claim term does not require construction because the
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`patent expressly defines the claim term. Id. Furthermore, it is not contested by
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`Patent Owner that the International Zeolite Association considers “chabazite” to be
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`a zeolite having a CHA crystal structure.
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`3.
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`“[I]on-exchanged copper” and “non-exchanged copper”
`(claim 9)
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`Patent Owner does not dispute the Petitioner’s characterization of how the
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`term “ion-exchange copper” and “non-exchanged copper” are used in the 662
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`Patent Owner’s Preliminary Response (IPR2015-01125)
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`4.
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`“[T]he catalyst effective to promote the reaction of ammonia
`with nitrogen oxides to form nitrogen and H2O selectively”
`(claim 1)
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`Petitioner states that this phrase “should be interpreted to require only what
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`it states.” Petition at 6. Patent Owner agrees, and therefore, the phrase does not
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`require construction.
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`Petitioner further states that Patent Owner may argue that this limitation
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`requires “excellent activity at certain temperatures,” or “have improved resistance
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`to hydrothermal aging” and that Patent Owner erroneously argued in the 662
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`Reexamination that In re Papesch requires limiting the claims of the 662 Patent.
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`Petition at 7. Petitioner, however, misunderstands the arguments that were
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`presented in the 662 Reexamination and misstates the significance of In re Grose.
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`First, Patent Owner never argued in the 662 Reexamination that the
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`independent claims of the 662 Patent require excellent activity at certain
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`temperatures or improved hydrothermal aging. However, the claimed compound
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`exhibits these properties and importantly, these properties were unexpected.
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`Accordingly, these properties are pertinent to the evaluation of obviousness of the
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`claimed compound. In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the
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`standpoint of patent law, a compound and all of its properties are inseparable; they
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`are one and the same thing.”); see also Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d
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`1075, 1086 (Fed. Cir. 2008) (“For chemical compounds, the structure of the
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`compound and its properties are inseparable considerations in the obviousness
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`determination.”).
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`Second, Petitioner appears to suggest that the holding in In re Grose means
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`that consideration of a compounds properties is not applicable to zeolites. Petition
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`at 9. This is plainly incorrect, and a misstatement of the holding of In re Grose.
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`In re Grose was an appeal before the United States Court of Customs and
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`Patent Appeals in which an applicant appealed the rejection of his patent
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`application. The Examiner had concluded that applicant’s zeolite and the prior art
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`zeolite R were the same chemically and that there was insufficient evidence that
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`the zeolites had a different crystal structure. In re Grose, 592 F.2d 1161, 1164
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`(Fed. Cir. 1979). The Board reached a different conclusion regarding the crystal
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`structure, and therefore, reversed the rejection under 102. Id. However, the Board
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`maintained the 103 rejection of the claims under a chemical theory that the claimed
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`zeolites are the same chemically and “no unexpected advantages were evident…
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`[and] the different diffraction pattern, had not been shown to be useful in any
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`manner.” Id. at 1164-65.
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`The Federal Circuit affirmed the rejection, but disagreed with the Board’s
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`reasoning. Specifically, the Federal Circuit concluded that “[t]he present record
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`does not support the conclusion that appellants’ zeolite and [prior art] zeolite R are
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`zeolites having different crystal structures” and sustained the rejection of the
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`claims. Id. at 1167-68. The Federal Circuit held that “no reason exists for
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`applying the law relating to structural obviousness of those compounds which are
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`homologs or isomers of each other to this case.” Id. at 1167-68 (emphasis added).
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`In other words, the Federal Circuit concluded that because the zeolites were the
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`same chemically, and did not have a different chemical structure, there was no
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`need in that case to require that the applicant show that the claimed compound
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`possessed non-obvious or unexpected beneficial properties not actually possessed
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`by a prior art homologue. See In re Mills, 281 F.2d 218, 222 (C.C.P.A. 1960)
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`(“The burden is on the applicant to rebut that presumption by showing that the
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`claimed compound possesses unobvious or unexpected beneficial properties not
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`actually possessed by the prior art homologue.”). It certainly cannot be said that In
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`re Grose stands for the proposition that a zeolite’s properties are irrelevant to an
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`obviousness inquiry.
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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 1-11 and 30 are obvious based on Maeshima in view
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`of Breck, while Ground 2 asserts that claims 12-24 and 32-50 are obvious based on
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`Maeshima and Breck further in view of Patchett. Petitioner has not demonstrated a
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`reasonable likelihood of success as to these 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 662 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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`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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`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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`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 buttressed by the significant objective evidence of nonobviousness that was
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`made of record in the 662 Reexamination. This includes compelling evidence of
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`unexpected results, long-felt need, skepticism, and praise. As set forth in detail
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`below, Petitioner’s attempt to show that the properties (i.e., NOx conversion at low
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`temperatures and hydrothermal stability) of the claimed catalyst are not unexpected
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`is legally flawed, and Petitioner makes no attempt to rebut the remaining objective
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`indicia of non-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
`The claims of the 662 Patent require an aluminosilicate zeolite having the
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`CHA structure with silica to alumina ratio between 15 and 150 and a copper to
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`alumina ratio between 0.25 and 1. Petitioner concedes that Maeshima does not
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`disclose a zeolite having the claimed silica to alumina ratio (SAR), but argues that
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`one of ordinary skill in the art would have applied the teachings of Breck to
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`Maeshima to arrive at a zeolite with a SAR in the claimed range. Petition at 12-13.
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`Petitioner, however, foregoes an analysis as to why a person of ordinary skill in the
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`art reading Maeshima and Breck would have selected a Cu-zeolite having the CHA
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`structure as a lead compound with regard to the SCR of NOx in presence of NH3.
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`IPR2015-00419, Paper 14 at 9 (quoting Takeda Chem. Indus., Ltd. v. Alphapharm
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`Pty., Ltd., 492 F.3d 1350, 1357 (Fed. Cir. 2007)) (“A lead compound is ‘a
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`compound in the prior art that would be most promising to modify in order to
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`improve upon its . . . activity and obtain a compound with better activity.’”).
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`Instead, Petitioner simply presumes that a person of ordinary skill in the art would
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`have chosen a Cu-zeolite having the CHA structure and then pr