UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`
`
`JOHNSON MATTHEY INC., and JOHNSON MATTHEY PLC,
`Petitioners
`
`v.
`
`BASF CORPORATION,
`Patent Owner
`
`________________________
`
`Case IPR No. 2015-01265
`U.S. Patent No. 8,899,023
`
`Case IPR No. 2015-01266
`U.S. Patent No. 9,039,982
`
`Case IPR. No. 2015-01267
`U.S. Patent No. 9,032,709
`________________________
`
`DECLARATION OF MARK CROCKER IN SUPPORT OF
`PATENT OWNER’S RESPONSE TO PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NOS. 8,899,023; 9,039,982; AND 9,032,709
`
`
`
`BASF-2045.001
`
`

`
`Patent Owner’s Response to Petition for Inter Partes Review
` Crocker Decl.
`
`TABLE OF CONTENTS
`
`
`
`Page
`
`INTRODUCTION ........................................................................................... 1 
`
`BACKGROUND AND QUALIFICATIONS ................................................. 3 
`
`
`
`I. 
`
`II. 
`
`III.  UNDERSTANDING OF THE GOVERNING LAW ..................................... 4 
`
`IV.  THE STATE OF THE ART AND THE SKILLED ARTISAN ..................... 7 
`
`A. 
`
`The State Of The Art In 2003 And The Context For The
`Invention Of The BASF Patents ........................................................... 8 
`
`B. 
`
`Person of Ordinary Skill in the Art ..................................................... 21 
`
`V. 
`
`SUMMARY OF OPINIONS ......................................................................... 24 
`
`VI.  OVERVIEW OF THE BASF PATENTS ..................................................... 25 
`
`VII.  CLAIM CONSTRUCTIONS ........................................................................ 27 
`
`VIII.  THE BASF PATENTS ARE PATENTABLE OVER HÜTHWOHL
`IN VIEW OF HASHIMOTO, SPERONELLO, AND TERAOKA .............. 28 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`In 2003 The Skilled Artisan Would Not Have Been Motivated
`To Washcoat A DPF With An Iron or Copper Zeolite SCR
`Catalyst And Would Not Have Had A Reasonable Expectation
`Of Success ........................................................................................... 28 
`
`Hüthwohl Does Not Provide A Reasonable Expectation Of
`Success ................................................................................................ 38 
`
`Hashimoto Does Not Establish A Reasonable Expectation Of
`Success ................................................................................................ 46 
`
`Teraoka Does Not Establish A Reasonable Expectation Of
`Success ................................................................................................ 50 
`
`Secondary Considerations Confirm That The BASF Patents Are
`Nonobvious ......................................................................................... 51 
`
`IX.  AVAILABILITY FOR CROSS EXAMINATION ....................................... 60 
`
`-i-
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`BASF-2045.002
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`

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`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
`
`X. 
`
`JURAT ........................................................................................................... 60 
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`
`
`-ii-
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`BASF-2045.003
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`

`
`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
`
`
`I, Mark Crocker, hereby declare as follows:
`
`I.
`
`INTRODUCTION
`
`1. My name is Mark Crocker. I have been retained as an independent
`
`expert witness on behalf of Patent Owner BASF Corporation for the above-
`
`captioned Petitions for Inter Partes Review (“Petition(s)”) of U.S. Patent Nos.
`
`8,899,023 (“the ’023 patent”) (IPR2015-01265); 9,039,982 (“the ’982 patent”)
`
`(IPR2015-01266); and 9,032,709 (“the ’709 patent”) (IPR2015-01267).
`
`2.
`
`I am being compensated at my usual and customary rate of $250 per
`
`hour for the time I spend in connection with these matters. My compensation is
`
`not based on the resolution of these matters.
`
`3.
`
`I understand that the aforementioned proceedings involve the ’023,
`
`’982, and ’709 patents. I have been asked to provide my opinions regarding
`
`whether claims 1-27 of the ’023 patent, claims 1-27 of the ’982 patent, and claims
`
`1-7, 10-15, and 18-24 of the ’709 patent would have been obvious to a person of
`
`ordinary skill in the art at the time of the invention of each of these patents, which I
`
`am taking to be August 5, 2003 for purposes of these proceedings.
`
`4.
`
`Specifically, I have been asked to analyze the following invalidity
`
`grounds:
`
` Ground 1: Whether claims 1-27 of the ’023 and ’982 patents and claims
`1-7, 10-15, and 18-24 of the ’709 patent are patentable over Georg
`Hüthwohl et al., The SCRT® system –a combination particle filter with
`1
`
`
`
`BASF-2045.004
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`

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`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
`
`SCR catalyst –enables both particle and NOx emission to be reduced
`simultaneously
`in commercial vehicle diesel engines, Dresden
`Motorkolloquium, May 20-21, 1999 (“Hüthwohl”), presented May 21,
`1999 (Ex. 1006; certified translation at Ex. 1005), in view of S.
`Hashimoto et al., SiC and Cordierite Diesel Particulate Filters Designed
`for Low Pressure Drop and Catalyzed, Uncatalyzed Systems, Diesel
`Exhaust Emission Control 2002: Diesel Particulate Filters (SP-1673)
`(“Hashimoto”), published in SAE Technical Paper Series (2002) (Ex.
`1007), Speronello et al., U.S. Patent No. 5,516,497 (“Speronello”),
`issued May 14, 1996 (Ex. 1008), and Yasutake Teraoka et al.,
`Simultaneous Catalytic Removal of Nitrogen Oxides and Soot by
`Copper-Loaded MFI Zeolites, Chemistry Letters 2001 (Ex. 1009)
`(“Teraoka”).
`
`5.
`
`I have reviewed the ’023, ’982, and ’709 patents and the documents
`
`listed in Appendix B, attached hereto.
`
`6.
`
`This Declaration is based on my personal experience and review of
`
`the literature known to me as of the date of this Declaration, and I reserve the right
`
`to modify or supplement this Declaration in response to additional evidence,
`
`rulings, declarations, and testimony that may come to light.
`
`7.
`
`I am over 18 years of age. I have personal knowledge of the facts
`
`stated in this Declaration and could testify competently to them if asked to do so.
`
`
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`2
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`BASF-2045.005
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`

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`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
`
`II. BACKGROUND AND QUALIFICATIONS
`
`8.
`
`My background and qualifications are set forth fully in my curriculum
`
`vitae, which I submit herewith as Appendix C, attached hereto.
`
`9.
`
`I earned my B.Sc. and Ph.D. in chemistry from the University of
`
`Bristol in the United Kingdom in 1982 and 1985, respectively. Subsequently, I
`
`conducted postdoctoral studies at the University of Wisconsin.
`
`10. After completing my postdoctoral studies, I worked at Shell Research
`
`& Technology Centre, where my work focused on, among other things, the
`
`development of a new ammonia-based SCR system, including the development of a
`
`new SCR catalyst. Beginning in 2000, I was employed by Degussa/OMG, where
`
`my work focused on development of aftertreatment systems for diesel vehicles.
`
`11.
`
`Beginning in 2003, I was employed as a Senior Scientist at the
`
`University of Kentucky’s Center for Applied Research. There, my research
`
`continued to focus on the development of catalysts for NO oxidation, LNT, and
`
`SCR applications. As of 2006, I was appointed Adjunct Associate Professor in the
`
`Department of Chemistry at the University of Kentucky, and as of 2007 I have been
`
`Associate Director at the University of Kentucky’s Center for Applied Energy
`
`Research. In 2015 I was appointed Full Professor in the Department of Chemistry
`
`at the University of Kentucky.
`
`
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`3
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`BASF-2045.006
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`

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`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
`
`III. UNDERSTANDING OF THE GOVERNING LAW
`
`12.
`
`I have not been asked to offer an opinion on the law. However, as an
`
`expert assisting in determining validity, I understand that I am obliged to follow
`
`existing law. I have therefore been asked to apply the following legal principles to
`
`my analysis.
`
`13. A claim is invalid for obviousness if differences between the subject
`
`matter sought to be patented and the prior art are such that the subject matter as a
`
`whole would have been obvious at the time the invention was made to a person
`
`having ordinary skill in the art to which said subject matter pertains.
`
`14.
`
`In determining whether a claimed invention is obvious, one should
`
`consider the scope and content of the prior art, the level of ordinary skill in the
`
`relevant art, the differences between the claimed invention and the prior art, and
`
`whether the claimed invention would have been obvious to one of ordinary skill in
`
`the art in light of those differences.
`
`15.
`
`I understand that certain objective factors, sometimes known as
`
`“secondary considerations” must, if present, be taken into account in determining
`
`whether a claimed invention would have been obvious. These factors, which
`
`include the invention’s commercial success, satisfying a long felt but unsolved
`
`need, the failure of others, praise by others, and teaching away by others, may
`
`often be the most probative and cogent evidence of non-obviousness. I understand
`
`
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`4
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`BASF-2045.007
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`

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`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
`
`that one purpose of these secondary considerations is to guard as a check against
`
`hindsight bias, and avoid having a fact finder develop a hunch that the claimed
`
`invention was obvious, and then construct a selective version of the facts that
`
`confirms that hunch. Such evidence may often establish that an invention
`
`appearing to have been obvious in light of the prior art was not obvious.
`
`16. The person of ordinary skill in the art is a hypothetical person who is
`
`presumed to be aware of all of the pertinent art. The person of ordinary skill is not
`
`an automaton, and may be able to fit together the teachings of multiple prior art
`
`references employing ordinary creativity and the common sense that familiar items
`
`may have obvious uses beyond their primary purposes.
`
` In establishing
`
`obviousness, one must avoid the temptation to read into the prior art the teachings
`
`of the invention at issue and guard against slipping into the use of hindsight. The
`
`prior art itself, and not the applicant’s achievement, must establish the obviousness
`
`of the combination. That is, a claim cannot serve as a motivation to combine prior
`
`art references.
`
`17.
`
`I understand that even if all aspects of the claimed invention were
`
`individually known in the art, obviousness still is not established without some
`
`objective reason to combine the teachings of the references as arranged in the
`
`claim under consideration. On this point, I understand that mere statements to the
`
`effect that a combination was obvious are not sufficient in the absence of
`
`
`
`5
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`BASF-2045.008
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`

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`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
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`articulated reasoning with rational underpinning to support the conclusion of
`
`obviousness. Likewise, a mere combination of references disclosing individual
`
`elements itself does not satisfy the burden of proving invalidity by a preponderance
`
`of the evidence.
`
`18.
`
`If a proposed modification to a reference would render the prior art
`
`invention being modified unsatisfactory for its intended purpose, or if the prior art
`
`teaches away from the proposed modification, there is no suggestion or motivation
`
`to make the proposed modification. Likewise, if a proposed modification or
`
`combination of prior art references would change the principle of operation of the
`
`prior art invention being modified, then the teachings of the references may not be
`
`sufficient to render the claims obvious.
`
`19.
`
`I understand that obviousness does not require absolute predictability,
`
`however, at least some degree of predictability is required. Evidence showing
`
`there was no reasonable expectation of success may support a conclusion of
`
`nonobviousness. I understand that whether an art is predictable or whether the
`
`proposed modification or combination of the prior art has a reasonable expectation
`
`of success is determined at the time the invention was made.
`
`20.
`
`I understand an invention that is obvious to try is not necessarily
`
`considered obvious. For example, an invention may not be obvious when the prior
`
`art gives only general guidance as to the particular form of the claimed invention or
`
`
`
`6
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`BASF-2045.009
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`

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`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
`
`how to achieve it, or if one of skill in the art could simply try each of numerous
`
`possible choices until one arrived at a successful result. Likewise, a claimed
`
`invention may not be obvious even if it was obvious to explore a new technology or
`
`general approach that seemed to be promising for experimentation, but the range of
`
`options available to a person of ordinary skill would not have been finite, small, or
`
`easily traversed. And, even then, where the prior art does not give an indication as
`
`to which options or parameters were critical, or does not give direction as to which
`
`of many possible choices may have been successful, then a claimed invention may
`
`still be non-obvious. In other words, an invention may not be obvious when the
`
`prior art does not provide a reason to select the route that produced the claimed
`
`invention.
`
`IV. THE STATE OF THE ART AND THE SKILLED ARTISAN
`
`21. Below, I describe the state of the art of diesel exhaust treatment
`
`systems as of the time of the invention of the ’023, ’982, and ’709 patents
`
`(collectively, “the BASF patents”), including specific competencies of the skilled
`
`artisan.
`
`22.
`
`I understand that under the law there are several context-focused
`
`factors that may be considered in determining the level of ordinary skill in the art,
`
`including: (1) the type of problems encountered in the art; (2) prior art solutions to
`
`those problems; (3)
`
`the rapidity with which
`
`innovations are made; (4)
`
`
`
`7
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`BASF-2045.010
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`

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`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
`
`sophistication of the technology; and (5) the educational level of active workers in
`
`the field. Based on this list of factors, my understanding is that I should make a
`
`holistic assessment of the skilled artisan based on the state of the art. In my view,
`
`this provides useful context for judging whether the BASF patents would have
`
`been obvious to the skilled artisan, and helps reveal that the BASF patents would
`
`have been viewed as highly innovative. Throughout my declaration, I have
`
`analyzed the prior art through the lens of the skilled artisan at the relevant time
`
`frame.
`
`A. The State Of The Art In 2003 And The Context For The Invention
`Of The BASF Patents1
`
`23. As the BASF patents explain, “[d]iesel engine exhaust is a
`
`heterogeneous mixture which contains not only gaseous emissions such as carbon
`
`monoxide (‘CO’), unburned hydrocarbons (‘HC’) and nitrogen oxides (‘NOx’), but
`
`also condensed phase materials (liquids and solids) which constitute the so-called
`
`1 I understand that the ’023, ’982, and ’709 patents (collectively, “the BASF
`
`patents”) derive from U.S. Application No. 10/634,659, filed on August 5, 2003,
`
`now U.S. Patent No. 7,229,597. The BASF patents also share a specification.
`
`Unless stated otherwise, for ease of reference, my analysis will cite to the ’982
`
`patent (Ex. 1001) and filings in IPR2015-01266, but is equally applicable to the
`
`’023 and ’709 patents.
`
`
`
`8
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`BASF-2045.011
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`

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`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
`
`particulates or particulate matter.” Ex. 1001 at 1:25-30. The negative health and
`
`environmental impacts of these pollutants led governments around the world to
`
`enact new emissions standards, limiting the permissible amounts of each
`
`component in diesel-powered vehicle exhaust emissions. See, e.g., Ex. 2035.003
`
`[Gieshoff, et al., 2001] (discussing growing health concerns and mandated
`
`legislation of diesel exhaust emissions); see also Ex. 1011 [Heck] at 188
`
`(discussing worldwide diesel emission standards). In particular, the new standards
`
`imposed significant reductions in HC, NOx, and particulate matter emissions that
`
`became increasingly strict at regular intervals over a period of years. Ex. 1011
`
`[Heck] at 188. For example, Table 8.1 from the Heck reference shows the key
`
`changes in emission regulations in the U.S. for heavy-duty trucks (given in grams
`
`per brake horse-power per hour (g/bhp·h)) starting in 1994 through 2010. Id. at
`
`188. Substantial reductions in particulate matter and NOx emissions were required
`
`from 2003 to 2010. Id.
`
`
`
`Ex. 1011 at 188, Table 8.1 (given in units of g/(bhp·h)).
`
`24. However, at the time of the BASF patents, “[t]he control of particulate
`
`emissions and NOx represent[ed] significant challenges to the diesel engine
`
`
`
`9
`
`BASF-2045.012
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`

`
`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
`
`manufacturer because they are coupled inversely.” Id. at 191. That is, an engine
`
`operating at cooler temperatures produces less NOx but more particulate, while an
`
`engine operating at higher temperatures provides more complete combustion,
`
`generating less particulate but more NOx. Id. “This is referred to as the ‘NOx-
`
`particulate tradeoff;’ when one is high the other is low.” Id. Thus, in terms of
`
`achieving the required emissions reductions, the industry was faced with two
`
`options. The first option was to engineer the exhaust system to produce less soot
`
`particulate, and then address NOx reduction through an available aftertreatment
`
`method. Alternatively, a second option was to engineer the exhaust system to
`
`produce less NOx, and deal with the soot particulate through an available
`
`aftertreatment method. See, e.g. Ex. 2027.007 [Blakeman, et al., (JMI) 2003-01-
`
`3753]. At the time of the BASF patents, the industry considered these options to
`
`be mutually exclusive.
`
`25. Below, I briefly describe each of these options at the time of the
`
`BASF patents. It is my opinion that one of ordinary skill in the art at the relevant
`
`time would have had a working understanding of these techniques and would have
`
`applied this understanding to the problem addressed in the BASF patents.
`
`1.
`
`Soot Particulate After Treatment Techniques
`
`26. Starting in the 1980’s, the primary technique for reducing particulate
`
`matter (soot) emissions was the use of a diesel particulate filter (“DPF”) to
`
`
`
`10
`
`BASF-2045.013
`
`

`
`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
`
`physically filter or trap soot particulates. See Ex. 1011 [Heck] at 200. In
`
`operation, as diesel exhaust gas is passed through a porous ceramic monolith,
`
`particulate matter that is larger than the monolith pores becomes trapped and
`
`collects on the filter walls forming an ever-increasing soot layer. Id. at 218. DPFs
`
`can quickly accumulate considerable volumes of soot, causing an increase in the
`
`exhaust gas pressure or “back pressure” necessary to discharge exhaust gas into the
`
`atmosphere. Id. To limit back pressure to an acceptable limit, it is necessary to
`
`periodically remove the soot accumulation through a process known as filter
`
`regeneration in which the soot particles are combusted. Id. at 229. Temperatures
`
`of at least 500º C are necessary to burn off the excess particulate matter; however,
`
`in the absence of a catalyst, the engine exhaust alone rarely reaches the
`
`temperatures required for such combustion. Id.; see also Ex. 2035.003 [Gieshoff,
`
`et al., 2001] (describing the “major obstacle” in particulate filtration as being “the
`
`regeneration of the particulate filter”).
`
`27.
`
`To address this issue, a diesel oxidation catalyst (“DOC”) was added
`
`upstream of the DPF to oxidize NO present in the exhaust to NO2, which was well-
`
`known to oxidize the dry carbon soot particulate trapped on the DPF. Ex. 1011
`
`[Heck] at 201. First published in 1989, this approach was commercialized by
`
`Petitioner Johnson Matthey under the tradename CRT®. Id. The CRT system uses
`
`a Pt or Pd catalyst on a flowthrough monolith upstream of the DPF to oxidize the
`
`
`
`11
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`BASF-2045.014
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`

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`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
`
`NO leaving the engine combustion chamber to NO2. The NO2 is then used to
`
`oxidize the soot trapped on the DPF. Id. In fact, it was understood by the industry
`
`that NO2 was a substantially better oxidizing agent for soot than O2. See, e.g., Ex.
`
`2015.004 [DieselNet] (“Oxidation by nitrogen dioxide—NO2, which can be
`
`generated by catalytic oxidation of NO, is more effective in oxidizing carbon than
`
`oxygen….”). And, by at least 2002, the CRT system had “been commercialized in
`
`Europe, the United States, and Japan” and was widely considered to be the “most
`
`successful approach to date” for oxidizing soot. Ex. 1011 [Heck] at 201-02.
`
`28.
`
`Thus, by the time of the BASF patents, the synergistic nature of an
`
`oxidation catalyst and the DPF, i.e., the ability of the DPF to trap particulate matter
`
`that is then combusted by NO2 provided as a result of the upstream oxidation of NO
`
`over a catalyst, was well known to the industry. See, e.g., Ex. 2015.004 [DieselNet]
`
`(“Furthermore, nitrogen oxides may be also enhancing the regeneration due to
`
`synergistic effects with DPF catalysts.”). Moreover, at the time it was also known
`
`to the industry that certain precious metals, including Pt and Pd (as used in the CRT
`
`system), were the preferred DOCs. See, e.g., Ex. 2037.022 [Heck] (“It was known
`
`that the precious metals, Pt and Pd, were excellent oxidation catalysts . . . [and]
`
`considerably more active than the base metals.”). For example, a 2000 article
`
`describes the preference for precious metals (i.e., noble metals or platinum group
`
`metals) as being “the result of three factors: (a) only the precious metals had the
`
`
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`12
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`BASF-2045.015
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`

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`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
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`required activity needed for the removal of the pollutants . . . (b) the precious metals
`
`were the only catalytic materials with the requisite resistance to poisoning by
`
`residual amounts of sulfur oxides in the exhaust; (c) the precious metals were less
`
`prone (but not entirely immune) to deactivation by high-temperature interaction
`
`with the insulator oxides . . . .” Ex. 2018.003 [Shelef & McCabe, 2000]; see also
`
`Ex. 2038.041 [JMI Platinum, 2009] (stating in a JMI publication that “[p]latinum
`
`has historically been favoured for use in diesel aftertreatment because the exhaust
`
`stream of a diesel engine is a highly oxidising environment and, under these
`
`conditions . . . platinum remains in its [catalytically-active] metallic form”).
`
`29. Following the success of the CRT system, the diesel exhaust industry
`
`began integrating DOCs and DPFs by directly coating the filters with oxidation
`
`catalysts. See Ex. 1011 [Heck] at 203. Before discussing the specific
`
`characteristics of DOC-coated filters, the techniques for coating filters with
`
`catalysts should be noted. At the time of the BASF patents, those of ordinary skill
`
`in the art understood that “[c]atalysts can be applied on wall-flow diesel filter
`
`substrates using one of two methods: impregnation with water-based solutions of
`
`catalyst precursors, or washcoating with suspensions (slurries) of insoluble oxides
`
`or salts.” Ex. 2015.007 [DieselNet].
`
`30.
`
`These methods are described in the DieselNet Technology Guide:
`
`The first method—using water solutions of catalyst precursors, noble
`and/or base metals, followed by drying and calcining—is indeed a
`13
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`
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`BASF-2045.016
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`

`
`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
`
`very convenient way of applying a catalyst onto the ceramic monolith.
`A common method of coating is to apply a predetermined quantity of
`solution—based on a water absorption test of the substrate—by
`pouring it over the inlet face of the filter. The solution soaks
`throughout the substrate resulting in a uniform distribution of the
`catalyst throughout the porous filter walls. Hence, the filter has no
`preferred direction of flow for exhaust gases and can be reversed in
`the exhaust system (of course, one could use less solution than needed
`to soak through the part to apply more catalyst near one end of the
`filter, resulting in a non-symmetrical coating). The final catalyst,
`usually metal or metal oxide, is formed from the precursor at elevated
`temperatures (typically 500-600°C) during the calcining process.
`
`Id. at .007.
`
`[The second method—w]ashcoating of wall-flow monoliths is usually
`performed by pouring a volume of slurry over the face of the
`substrate. To achieve uniform washcoat distribution and to minimize
`pore blocking, compressed air from an air knife or vacuum suction
`can be applied to the substrate.
`
`Id. at .008 (providing that washcoating “allow[s] for more flexibility in designing
`
`the catalyst system—for instance, it is possible to apply different catalysts in the
`
`inlet and outlet channels of the monolith”).
`
`31. One of skill in the art at the time of the BASF patents also understood
`
`that, despite the flexibility allowed by the washcoating method, there were a
`
`number of challenges depending on the type of monolith or substrate to be coated.
`
`See, e.g., id. (“Application of coating technologies from slurries (colloidal
`
`suspensions) to filter monoliths is somewhat more challenging than washcoating
`
`flow-through catalyst substrates.”). It was known that when using a slurry, “the
`
`particle size distribution of the suspended material, as well as other process
`
`
`
`14
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`BASF-2045.017
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`

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`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
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`parameters, must be carefully controlled. Improperly applied washcoats can
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`substantially increase the filter pressure drop due to clogging and/or narrowing of
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`the pores in the substrate walls.” Id.
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`32.
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`Returning to the characteristics of DOC-coated filters: at the time of
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`the BASF patents, it was known that, while similar to the CRT system, DOC-coated
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`filters were more efficient at using NO2. In particular, when NO2 oxidizes
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`particulate matter, NO2 is converted to NO:
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`2NO2 + C → CO2 + 2NO
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`NO2 + C → CO + NO
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`Ex. 1011 [Heck] at 201. When the DOC is loaded onto the DPF, the NO can be
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`oxidized back to NO2 and immediately re-used to oxidize the soot accumulating on
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`the filter. See, e.g., Ex. 2035.006 [Gieshoff, et al., 2001] (indicating that where Pt-
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`containing catalysts are present NO2 formation occurs); Ex. 2016.009 [Gorsmann,
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`et al., (JMI) 2005] (“Over the catalytic coating of the filter NO can be re-oxidised
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`to NO2 by present oxygen, and is therefore available for further soot oxidation.”).
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`To those of skill in the art, the ability to effectively recycle NO2 was critical to
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`providing a more efficient and effective manner of reducing particulate matter
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`emissions.
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`33. Nevertheless, in applications where it cannot be guaranteed that the
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`exhaust gas conditions will operate to passively regenerate the filter—i.e., when
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`15
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`BASF-2045.018
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`

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`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
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`operating temperatures do not reach the temperature required to combust soot
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`and/or NO2 does not oxidize all of the soot (despite its superior ability, as
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`compared to O2), the problem of backpressure soon returns. In such situations, a
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`process known as “active filter regeneration” is necessary to remove the excess
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`particulate build-up. The majority of active filter regeneration techniques involve
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`raising the inlet temperature of the filter to at least 600º C to burn off the
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`accumulated soot, although local temperatures in the filter can be significantly
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`higher. See, e.g., Ex. 2035.005 [Gieshoff, et al., 2001] (observing “filter
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`regeneration temperatures up to 1000ºC” during engine test experiments).
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`34. Additionally, those in the art understood that a process known as
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`“uncontrolled filter regeneration” can occur when there is a particularly large
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`amount of soot on the filter. In such instances, temperatures can get extremely
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`high when there is a large amount of soot on the filter that has ignited and that
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`must be burned off. This is sometimes referred to in the art as a “runaway.” See,
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`e.g., Ex. 1011 [Heck] at 201. Whether the soot filter becomes so heavily coated
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`such that a runaway occurs depends on a variety of factors, including how the
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`vehicle is driven. As such, those in the art understood that in developing a diesel
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`exhaust treatment system, one would need to protect against extremely high
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`temperatures, even if one was optimizing for a system that aimed to take advantage
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`of passive filer regeneration at lower temperatures.
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`16
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`BASF-2045.019
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`

`
`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
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`35.
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`To withstand the extreme operating conditions often experienced in
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`diesel engine exhaust systems, those of skill in the art at the time of the BASF
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`patents were well-aware that DPFs needed to be both mechanically and thermally
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`durable. See Ex. 1011 [Heck] at 236-40. Because, “the temperature increase
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`experienced by the filter during a regeneration is inversely proportional to heat
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`capacity of the filter per unit volume for a given exhaust gas flowrate and mass of
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`soot burned per unit volume,” the industry-wide belief was that filters should have a
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`high mass to remain durable during high-temperature regenerations. Id. at 242; see
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`also Ex. 2039.009 [Miyairi, et al., 2001-09-0912] (“Based on these results, it
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`becomes effective to increase the thermal conductivity to a minimum of 0.01
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`kJ/(msK)(=10 W/(mK)) in order to lower the maximum temperature during the
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`forced regeneration of the DPF and to select a material with a greater heat capacity.
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`With a given cell construction, increasing its wall thickness is considered equivalent
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`to increasing its material thermal conductivity and heat capacity, which is estimated
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`to be effective in reducing the maximum regeneration temperature.”). Conversely,
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`it was well understood that an increase in filter porosity would result in a filter that
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`was less likely to survive the high temperatures of regeneration for at least two
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`reasons: (1) increased porosity results in decreased material to absorb heat; and (2)
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`increased porosity results in additional pores that disrupt the thermal conductivity of
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`the filter.
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`17
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`BASF-2045.020
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`

`
`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
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`36. Although issues relating to soot accumulation and its effect on back
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`pressure were known to those in the field at the time of the BASF patents, other
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`characteristics of a filter under soot-loaded conditions were still under
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`investigation. For example, as shown in a 2002 study, which focused on
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`examining the back pressure of a soot-loaded filter as a function of increasing pore
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`size, “[c]ounter to intuition, [the researchers] showed that increasing pore diameter
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`does not necessarily translate to decreased filter back pressure as the pores quickly
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`fill up with soot.” Ex. 2028.007 [Johnson, et al., 2002-01-285]. It is my opinion,
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`therefore, that at the time of the BASF patents, a person of ordinary skill in the art
`
`would have understood the specific behavior of a filter under soot-loaded
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`conditions was unpredictable and depended on numerous variables.
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`2.
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`NOx After Treatment Techniques
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`37. At the time of the BASF patents, the primary technique for controlling
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`NOx emissions was exhaust gas recirculation (“EGR”). Ex. 1011 [Heck] at 191.
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`EGR involves recirculating a portion of the engine exhaust back to the combustion
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`chamber where “[t]he presence of the H2O and CO2 reduces the average
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`combustion temperature, limiting NOx production.” Id. Although EGR reduces
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`NOx, as explained above with regard to the NOx-particulate tradeoff, the cooler
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`engine temperatures resulting from EGR “leads to greater particulate and
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`especially dry soot formation and lower fuel economy.” Id.
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`18
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`BASF-2045.021
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`

`
`Patent Owner’s Response to Petition for Inter Partes Review
`Crocker Decl.
`
`38. At the time of the BASF patents, a skilled artisan would have also
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`been familiar with the use of NOx traps—often referred to as NOx adsorption
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`catal