UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`JOHNSON MATTHEY INC.
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`Petitioner
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`v.
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`BASF CORPORATION
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`Patent Owner
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`Patent 9,039,982
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`DECLARATION OF DAVID L. TENNENT, PH.D.
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`1
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`JM 1003
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`JOHNSON MATTHEY INC.
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`Petitioner
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`v.
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`BASF CORPORATION
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`Patent Owner
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`Patent 9,039,982
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`DECLARATION OF DAVID L. TENNENT, PH.D.
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`1
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`JM 1003
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`INTER PARTES REVIEW OF U.S. PATENT NO. 9,039,982
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`I, David L. Tennent, declare as follows:
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`1.
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`2.
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`I attach my resume as Exhibit 1 to this declaration.
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`Experience and Qualifications
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`I graduated in 1974 with a B.S. in Chemistry from Allegheny College.
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`I then earned a Ph.D. in Inorganic Chemistry from Purdue University in 1979.
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`From 1979 to 1980, I was a Postdoctoral Associate at the C.F. Kettering Research
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`Laboratory.
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`3.
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`From 1980 to 2009, I worked for Corning Incorporated, eventually
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`becoming the Director of Carbon Technologies Development. In that role, I
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`directed the development efforts for a novel substrate for the removal of mercury
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`from the exhaust streams of coal fired power plants.
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`4.
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`At Corning, from 2000 to 2008, I was a Senior Project Manager and,
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`in that role, I served as the Research & Development Leader for the development
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`and commercialization of Corning’s DuraTrap® AT product. DuraTrap® AT is an
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`aluminum titanate based diesel particulate filter that has excellent pressure drop,
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`high heat capacity, and superb thermal shock resistance. This is a wall-flow filter
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`having honeycomb design. The original target was the automotive (light duty)
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`market, particularly for the diesel engine segment.
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`5.
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`In that role, I led the development of a heavy duty version of
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`DuraTrap® AT as well as the initial development of DuraTrap® AT LP. This later
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`INTER PARTES REVIEW OF U.S. PATENT NO. 9,039,982
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`product is a lower porosity product which had thinner walls than the original
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`product.
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`6.
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`From 2006 to 2008, I assumed the additional leadership
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`responsibilities for a team that investigated the interactions of different catalyst
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`systems with Corning’s diesel particulate filters and substrates. The team studied
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`how to design improved filters that still had characteristics that are important when
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`placing a catalyst inside a wall flow filter, including the filter’s porosity, mean pore
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`size, pore size distribution as well as the catalyst’s impact on the thermal shock
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`resistance of the catalyzed product.
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`7.
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`I was awarded the Individual Outstanding Contributor Award by
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`Corning Incorporated for my work in leading the development of the DuraTrap®
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`AT products.
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`8.
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`Corning received the Corporate Technical Achievement Award, given
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`by the American Ceramic Society to recognize Corning’s work in developing the
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`DuraTrap® AT product.
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`9.
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`I am an inventor of at least 18 U.S. Patents, many of them directed to
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`materials for wall flow filters or other substrates for diesel exhaust systems. I have
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`also authored or presented at least 20 papers or presentations.
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`10.
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`In writing this Declaration, I have considered the following: my own
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`knowledge and experience, including my work experience in the fields of filter
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`INTER PARTES REVIEW OF U.S. PATENT NO. 9,039,982
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`design and development, my experience in working with others involved in those
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`fields, and the state of the art as of the priority date of the ’982 patent. I have
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`reviewed U.S. Patent No. 9,039,982, assigned to BASF Corporation and its file
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`history. I have also reviewed at least the following patents and printed
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`publications:
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` S. Hashimoto, Y. Miyairi, T. Hamanaka, R. Matsubara, T. Harada and S.
`Miwa, SiC and Cordierite Diesel Particulate Filters Designed for Low
`Pressure Drop and Catalyzed, Uncatalyzed Systems, SAE Technical
`Paper 2002-01-0322.
` U.S. Patent No. 5,516,497 (“Speronello”), assigned to BASF
`Corporation.
` The certified translation of Georg Hüthwohl, Bernd Maurer and Gennadi
`Zikoridse, The SCRT® System – A Combination Particle Filter with SCR
`Catalyst – Enables Both Particle and NOx Emission To Be Reduced
`Simultaneously in Commercial Vehicle Diesel Engines, Proceedings of
`the Dresden Motor Conference, held in May 1999.
` Yasutake Teraoka, Kazunori Kanada, Hiroshi Furukawa, Isamu
`Moriguchi, and Shuichi Kagawa, Simultaneous Catalytic Removal of
`Nitrogen Oxides and Soot by Copper-Loaded MFI Zeolites, 30 Chemistry
`Letters 604 (2001).
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` Chapters 8 & 9 from Ronald M. Heck and Robert J. Farrauto with Suresh
`T. Gulati, Catalytic Air Pollution Control (2002).
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`11. Although for the sake of brevity this Declaration refers to selected
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`portions of the cited references, it should be understood that one of ordinary skill in
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`the art would view the references cited herein in their entirety, and in combination
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`with other references cited herein or cited within the references themselves. The
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`INTER PARTES REVIEW OF U.S. PATENT NO. 9,039,982
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`references used in this Declaration, therefore, should be viewed as being
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`incorporated herein in their entirety.
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`12.
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`I am not, and never was, an employee of Johnson Matthey Plc or any
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`Johnson Matthey company. I have been engaged in the present matter to provide
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`my independent analysis of the issues raised in the petition for inter partes review
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`of the ’982 patent. I received no compensation for this declaration beyond my
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`normal hourly compensation based on my time actually spent studying the matter,
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`and I will not receive any added compensation based on the outcome of this inter
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`partes review of the ’982 patent.
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`13. Based upon my experience in this area, a person of ordinary skill in
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`the art (“POSITA”) of the ’982 patent at the time of the invention is a person who
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`has obtained at least a BS or MS in a chemistry, chemical engineering, material
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`science, or a related field and least three years of experience or training in
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`researching, studying, designing, or manufacturing diesel exhaust treatment
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`systems.”
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`14. Based on my experiences, I have a good understanding of the
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`capabilities of a POSITA. Indeed, I have taught, participated in organizations, and
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`worked closely with many such persons over the course of my career.
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`INTER PARTES REVIEW OF U.S. PATENT NO. 9,039,982
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`Interpretations of the ’982 Patent Claims at Issue
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`15.
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`I understand that, for purposes of my analysis in this inter partes
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`review proceeding, the terms appearing in the patent claims should be interpreted
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`according to their “broadest reasonable construction in light of the specification of
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`the patent in which it appears.” 37 C.F.R. § 42.100(b). In that regard, I understand
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`that the best indicator of claim meaning is its usage in the context of the patent
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`specification as understood by a POSITA. I further understand that the words of
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`the claims should be given their plain meaning unless that meaning is inconsistent
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`with the patent specification or the patent’s history of examination before the
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`Patent Office. I also understand that the words of the claims should be interpreted
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`as they would have been interpreted by a POSITA at the time of the invention was
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`made (not today); because I do not know at what date the invention as claimed was
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`made, I have used the earliest listed filing date of the ‘982 patent as the point in
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`time for claim interpretation purposes. That date was August 5, 2003. I have been
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`asked to provide my interpretation of the following terms and phrases of the ’982
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`patent set forth below.
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`LEGAL PRINCIPLES
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`Obviousness
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`16.
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`I have been informed that a patent claim is invalid as “obvious” under
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`35 U.S.C. § 103 in light of one or more prior art references if it would have been
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`obvious to a POSITA, taking into account (1) the scope and content of the prior art,
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`(2) the differences between the prior art and the claims, (3) the level of ordinary
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`skill in the art, and (4) any so called “secondary considerations” of non-
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`obviousness, which include: (i) “long felt need” for the claimed invention, (ii)
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`commercial success attributable to the claimed invention, (iii) unexpected results
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`of the claimed invention, and (iv) “copying” of the claimed invention by others.
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`For purposes of my analysis above and because I know of no indication from the
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`patent owner or others to the contrary, I have applied a date of August 5, 2003, as
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`the date of invention in my obviousness analyses, although in many cases the same
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`analysis would hold true even at an earlier time than August 5, 2003.
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`17.
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`I have been informed that a claim can be obvious in light of a single
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`prior art reference or multiple prior art references. To be obvious in light of a
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`single prior art reference or multiple prior art references, there must be a reason to
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`modify the single prior art reference, or combine two or more references, in order
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`to achieve the claimed invention. This reason may come from a teaching,
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`suggestion, or motivation to combine, or may come from the reference or
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`references themselves, the knowledge or “common sense” of one skilled in the art,
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`or from the nature of the problem to be solved, and may be explicit or implicit
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`from the prior art as a whole. I have been informed that the combination of
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`familiar elements according to known methods is likely to be obvious when it does
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`no more than yield predictable results. I also understand it is improper to rely on
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`hindsight in making the obviousness determination. KSR Int’l Co. v. Teleflex Inc.,
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`550 U.S. 398, 421 (2007).
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`18. A diesel engine produces carbon-based soot during normal operating
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`Background
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`conditions. Diesel Particulate Filters (DPFs) are incorporated into the exhaust
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`stream of both heavy duty and light duty vehicles to trap this soot. The most
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`common design for a DPF is a ceramic wall flow filter consisting of a plurality of
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`parallel cells formed in the direction of flow which are plugged in a checkboard
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`pattern on the exhaust gas inlet end. See Ronald M. Heck and Robert J. Farrauto
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`with Suresh T. Gulati, Catalytic Air Pollution Control 217 (2002).
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`19. The cells which are plugged on the inlet end are open on the exhaust
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`gas outlet. Conversely, the cells which are open on the exhaust gas inlet end are
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`INTER PARTES REVIEW OF U.S. PATENT NO. 9,039,982
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`plugged on the exhaust gas outlet end. Therefore, the gas flow is forced through
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`the cell wall of the DPF, depositing the soot on the cell wall of the inlet side while
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`the exhaust gas passes through the porous wall and exits the outlet side. See id.
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`20. During this soot collection, the soot builds a layer upon the cell wall,
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`which results in an increase in pressure drop as the effective depth of the soot layer
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`increases. As soot continues to accumulate on the filter, the backpressure will
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`increase to an unacceptable level for normal operation. Before this occurs, the soot
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`must be removed from the filter. This is typically accomplished by oxidizing or
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`“burning” the soot, thereby “regenerating” the filter. Although the soot will
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`spontaneously combust at very high temperatures, it was well known to include a
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`soot oxidation catalyst on the filter in order to reduce the regeneration temperature
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`of the filter. Known soot oxidation catalysts include a metal on a small particle
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`support, such as platinum on alumina. See Heck at 201. It was also well known
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`that NO2 in the exhaust stream could be used as an oxidant for soot oxidation. Id.
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`It was also well known that a diesel oxidation catalyst (DOC), e.g., platinum
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`supported on small particle alumina, could be positioned upstream of a DPF to
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`increase the level of NO2 in the exhaust stream for the purpose of providing an
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`oxidant for soot oxidation. Id.
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`21.
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`It was well known that the level of other undesirable components,
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`such NOx, in a diesel exhaust gas could be reduced via heterogeneous catalysis.
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`Many catalyst were known for these purposes, but they all require a substrate, such
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`as wall-flow filter or a flow-through honeycomb monolith, as a support. For
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`example, it was known that NOx could be catalytically treated using an selective
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`catalytic reduction (SCR) catalyst and/or a NOx adsorption catalyst (NAC) (also
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`commonly referred to as a “NOx storage catalyst”) and that each of these types of
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`catalyst are loaded on a substrate to be effective at reducing NOx. Known SCR
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`catalysts included a metal loaded on a small particle support, such as copper loaded
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`on a zeolite particle. Known NOx adsorbers include a metal on a small particle
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`support, such as platinum on a barium oxide/alumina particle. These types of
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`catalysts are applied to the walls of a substrate as a washcoat, either as an on-wall
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`surface coating or as an in-wall coating. The rheology and the pH of these
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`washcoats can be adjusted so that the same coating technique could be used to
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`apply any of them washcoat to a wall-flow filter.
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`22.
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`In terms of filter design, there is little to no distinction between
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`loading different catalyst composition washcoats (e.g., a metal-zeolite SCR
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`catalyst washcoat or a NOx adsorber catalyst washcoat) in the walls of a wall-flow
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`filter. In each case, it simply requires preparing a catalyst washcoat suitable for
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`application to the filter, and selecting a filter having adequate pore size and
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`porosity so that the washcoat can enter the pores of the filter wall. Because the
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`catalyst washcoat is typically in the form of a slurry, techniques such as pressure or
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`vacuum may be applied to increase the rate at which the washcoat permeates the
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`filter walls. It was well known, and is common sense, that if the filter does not
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`have sufficient porosity or pore size, the washcoat will not enter the filter walls or,
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`if it does enter the porous wall, the pores will become clogged thus rendering the
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`filter ineffective.
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`23. One of skill in the art would have recognized that washcoats applied
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`to a flow through, honeycomb substrate could have been applied to a wall-flow
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`filter, given that the filter possessed adequate porosity, pore size, or other
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`characteristics. Furthermore, a specific catalyst composition known to work when
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`applied to a flow-through substrate would be expected to work in a similar manner
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`when applied to a wall-flow filter.
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`By 2002, The Auto Industry Believed That Meeting Impending Emission
`Standards Required Developing A Higher Porosity Filter That Could
`Accommodate A Catalyst Washcoat of 100 g/L to 125 g/L.
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`24.
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`In 2001 and 2002, the automotive industry needed new solutions for
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`how to simultaneously reduce the emissions of NOx and particulate matter from
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`diesel exhaust. Both NOx and particulate matter were the target of newly proposed
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`emissions standards that were scheduled to become active in 2005. For example,
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`the European Union’s Environment Council in 1998 agreed on new limits that
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`“reduce[d] the emission limits for nitrogen oxides (NOx) and particles in 2 stages,”
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`with the first stage set to become active in 2005 and the second to become active in
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`2008. Georg Hüthwohl, Bernd Maurer and Gennadi Zikoridse, The SCRT® System
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`– A Combination Particle Filter with SCR Catalyst – Enables Both Particle and
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`NOx Emission To Be Reduced Simultaneously in Commercial Vehicle Diesel
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`Engines, Proceedings of the Dresden Motor Conference, held in May 1999. These
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`new emissions standards, known as Euro IV and Euro V, sought aggressive
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`reductions in the amount of each pollutant released into the atmosphere.
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`25. The European Union diesel market was an important market for auto
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`and truck manufacturers. The auto and truck manufacturers wanted to supply their
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`vehicles into that important market, and to do so they had to meet the newly
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`proposed emission standards for NOx and particulate matter.
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`26.
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` By 2002, the auto and truck manufacturers believed that meeting the
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`Euro IV and Euro V emission standards, while still maintaining the compactness of
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`a system designed for mobile applications, required putting a very high SCR
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`washcoat loading into the walls of the filter. That is, to achieve the increase in
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`NOx abatement, catalyst would have to be incorporated into the system without
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`increasing the overall size of the exhaust gas treatment system. Auto and truck
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`manufacturers responded to the proposed Euro IV and Euro V emission standards
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`by requesting that Diesel Particulate Filter (“DPF”) suppliers develop filters with a
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`higher porosity that could accommodate a very high catalyst washcoat. Based on
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`the requests that Corning received, the auto and truck manufacturers were, as of at
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`least 2002, trying to develop a filter that could accommodate a catalyst washcoat
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`loading of between 100 g/L to 125 g/L. Accordingly, as of 2002, there was a move
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`towards developing higher porosity filters, so that they could be combined with a
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`high catalyst loading.
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`27. Low porosity filters cannot accommodate a washcoat loading of
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`between 100 g/L to 125 g/L. In a lower porosity filter, such a high washcoat
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`loading would lead to unacceptably high backpressure, causing significant
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`problems, including a reduction in engine power and increased fuel consumption,
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`both unacceptable to vehicle manufacturers.
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`28. My comments pertaining to a filter’s porosity and pore size are in
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`reference to an uncoated filter’s porosity and pore size. This is distinct from the
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`porosity and pore size of a coated filter. That is, a catalyst washcoat applied to the
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`interior pores of a filter wall will decrease the actual pore size and porosity
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`available for gas permeation. As more catalyst coating is incorporated into the
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`porous wall, the pores start to become filled with the catalyst material, thus
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`decreasing their effective diameter. A filter’s overall efficiency (i.e., the filter’s
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`ability to capture particles of a certain size), requires a certain range of pore size
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`and porosity. If the pore size and porosity are too large, the filter will not
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`adequately trap the particulate matter. On the other hand, if the pore size and
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`porosity are too small, the filter will produce unacceptably high backpressure.
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`However, when a high porosity/large pore size filter is coated with a high amount
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`of catalyst washcoat, the effective porosity and pore size can remain within the
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`desirable ranges for treating soot in diesel exhaust gas because the catalyst material
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`fills in the pores that would otherwise be too large for soot filtration.
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`29. By 2002, the industry was actively working on developing a higher
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`porosity filter in order to accommodate heavier catalyst washcoat loadings. To
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`meet the impending Euro IV and Euro V emission standards, there was an
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`immediate market need for a wall flow filter that could be loaded with 100 g/L to
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`125 g/L or a catalyst washcoat without causing unacceptably high backpressure.
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`30.
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`In 2001 and 2002, the filter manufacturer industry began an intensive
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`effort to develop a filter capable of being loaded with a catalyst washcoat while
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`still achieving acceptable backpressure. During this time frame the filter industry
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`was advancing filter technology on the basis that a porosity of 50% or higher was
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`required to have a washcoat loaded in the wall of the filter to prevent trapped soot
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`from causing unacceptably high backpressure.
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`Hashimoto Teaches That Its High Porosity Filter Can Be Loaded With 100g/L
`of A Catalyst Washcoat and Still Achieve Acceptable Backpressure
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`31. Hashimoto teaches a filter that can be successfully loaded with 100g/L
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`(i.e., 1.64 g/in3) of a catalyst washcoat into a wall flow filter. Hashimoto teaches a
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`“successful material development for low pressure-drop Cordierite and SiC [diesel
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`particulate filters].” Hashimoto at p. 1. Specifically, the article states that “NGK
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`Insulators, LTD has newly developed low pressure drop type Corderierite [diesel
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`particulate filters]” and that “[m]aterial development has been completed which
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`increases the porosity from the current mass production level.” Id. at p. 10.
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`32.
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`In particular, Hashimoto discloses a “newly developed” filter, DHC-
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`611, with a 59% porosity and a 25 µm mean pore size. Id. In my opinion, this is
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`the same filter used in every example of the ’982 patent, which describes a
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`“[c]ordierite ceramic wall flow filter substrates (product name C611, NGK
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`insulators, Ltd.) having … an average pore size of 25 microns and 60% wall
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`porosity.” ’982 patent, Example 1. Further, both the DHC-611 filter taught in
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`Hashimoto and the C611 filter described in the ’982 patent have a wall thickness of
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`12 thousandths of an inch. See Hashimoto at Table 3 (DHC-611 filter has a wall
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`thickness of “12 mil,” where “mil” is a unit of length that denotes a thousandth of
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`an inch); ’982 patent, Example 1 (C611 filter has a wall thickness of 0.012 inches).
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`33. Hashimoto teaches that “the porosity and mean pore size” of the
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`filters “are critical” in solving the backpressure problem associated with a
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`catalyzed filter. Id. at p. 13. If a higher porosity filter is used, such as the DHC-
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`611 filter described in all the examples of the ’982 patent, Hashimoto teaches that
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`the filter “can be coated with a significantly higher wash coat loading without
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`adversely [a]ffecting pressure-drop” and describes its high porosity filter as “prime
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`candidates” for future catalyzed filter systems. Id. Crucially, Hashimoto teaches
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`that its catalyst “catalyst “wash coat … is applied inside the pores,” Hashimoto at
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`12, just as the ’982 patent claims that its catalyst washcoat must “permeate” the
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`walls of the filter. See, e.g., ’982 patent, claim 1.
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`34. Hashimoto teaches that its newly developed high porosity filters
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`exhibit “superior pressure-drop and filtration efficiency” characteristics.
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`Hashimoto at p. 11. Hashimoto notes that not only had a pressure-drop equation
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`been developed for the catalyzed high porosity filters, but that the equation was
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`verified experimentally. “Preliminary pressure-drop measurements on the
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`catalyzed DPF’s were conducted,” which included two filters coded DHC-611 and
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`DHC-558, with “100g/L of a wash coating” in each, id. at p. 12. Measurements of
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`the pressure drop as a function of the amount of soot loading were taken and
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`recorded, see id. at Figure 21. The results, Hashimoto teaches, “indicate[] that
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`high porosity [diesel particulate filter] material has an advantage for a catalyzed
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`[diesel particulate filter] system.” Id. at p. 13.
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`35. Hashimoto describes its high porosity filters as “prime candidates” for
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`future catalyzed filter systems. Id. The results reported by Hashimoto were
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`promising enough to warrant continuing to study other characteristics of the filters.
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`See id. (“The pressure drop and filtration performance of the catalyzed DPF’s …
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`be carefully investigated in the next phase of the development because the catalyst
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`will change the pore size characteristics.”); id. (“The influence of porosity on the
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`pressure-drop and filtration efficiency performance of catalyzed DPF will be
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`conducted in the next development phase.”).
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`36. Even without further testing, the Hashimoto would have been the
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`leading choice to accommodate 100 g/L of any catalyst washcoat. Any issues that
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`the filter could have had with respect to thermal stability or durability could have
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`been resolved through the routine optimization of other filter characteristics—such
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`as pore size distribution or wall thickness—that are not claimed by the ’982 patent.
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`37. These other considerations would not have prevented one of ordinary
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`skill in the art from pursuing the high porosity filter taught by Hashimoto. For
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`example, even if the Hashimoto filters would have displayed some level of
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`instability at the high temperatures needed to regenerate the filter, a person of
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`ordinary skill would have been able to make routine, well-known adjustments to
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`the filter to increase its stability. One way to do so would have been to increase
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`the cell wall thickness, while maintaining the filter’s mean pore size and porosity.
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`This would increase the thermal mass of the filter, while maintaining the “key
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`material characteristics” needed to solve the backpressure problem—the porosity
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`and pore size. Hashimoto at p. 6. Similarly, the pore size distribution could have
`
`been varied to eliminate very large pores, which were known to lessen the
`
`durability of the filter. That is, a tighter pore size distribution would have reduced
`
`the number of pores that were much greater in size than 10-25 µm. Reducing the
`
`number of such very large pores would increase the durability of the filter. Neither
`
`of these characteristics, however, is claimed by the ’982 patent. The ’982 patent,
`
`instead, claims only those filter characteristics that Hashimoto taught were crucial
`
`for achieving acceptable backpressure.
`
`38. Furthermore, I would have expected the catalyzed Hashimoto filter to
`
`display even better filtration efficiency than that demonstrated in Figure 18 by the
`
`equivalent uncatalyzed filter. Adding a catalyst washcoat to an uncatalyzed filter
`
`18
`
`
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,039,982
`
`generally improves the filtration efficiency of the filter. The Hashimoto article
`
`mentions a “next development phase” that would include studying the “influence
`
`of porosity on the pressure-drop and filtration efficiency performance” of the
`
`catalyzed filter. As discussed above, the catalyzed Hashimoto filter—loaded with
`
`100 g/L of a washcoat—displayed an advantageous pressure-drop profile. With
`
`respect to filtration efficiency, the uncatalyzed Hashimoto filter had exhibited
`
`“superior … filtration efficiency.” Hashimoto at p. 11. Specifically, Figure 18
`
`shows that the DHC-558 and DHC-611 filters display a filtration efficiency
`
`superior to that of an even higher porosity filter. After being loaded with 100 g/L
`
`of a catalyst washcoat, I would expect that the DHC-558 and DHC-611 filters
`
`would exhibit an even better filtration efficiency than that reported in Figure 18.
`
`Loading a catalyst washcoat into the filter would—as Hashimoto teaches—“further
`
`increase[] flow restriction,” id. at p. 1, which would cause increased filtration as
`
`well. Thus, while a “next development phase” may have been useful to determine
`
`the precise filtration efficiency of the catalyzed filter, a person of ordinary skill
`
`would have reasonably predicted that the catalyzed filter described in Hashimoto
`
`would have adequate filtration efficiency.
`
`39. As can be seen from the Acknowledgements section of Hashimoto,
`
`BASF's predecessor, Engelhard Corporation, was actually responsible for coating
`
`19
`
`
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,039,982
`
`the DHC-611 and DHC-558 filters with 100g/L of a catalyst washcoat. Hashimoto
`
`at p. 13.
`
`Hashimoto Taught a Filter Structure That Would Have Been a “Prime
`Candidate” to Accommodate 100 g/L of Any Catalyst Washcoat Composition.
`
`40. The Hashimoto filter would have been a “prime candidate” for any
`
`filter substrate requiring a 100 g/L washcoat loading. Hashimoto neither specifies
`
`nor limits the types of catalyst washcoat (e.g., SCR, NAC, etc.) that can be applied
`
`to its high-porosity filter. As discussed above, different wall-flow filter design
`
`criteria are not required when selecting between a metal zeolite SCR washcoat, an
`
`NAC washcoat, or a soot oxidation catalyst washcoat. And it is my opinion that
`
`the DHC-611 filter could be used equally for metal zeolite SCR washcoats, NAC
`
`washcoats, or even other washcoats such as soot oxidation catalyst, without any
`
`modifications to the filter substrate. Thus, a person of ordinary skill could
`
`reasonable conclude from the teachings of Hashimoto that the DHC-611 or similar
`
`high-porosity filter could be used in conjunction with an SCR catalyst washcoat.
`
`More particularly, a person of ordinary skill reading Hashimoto would have readily
`
`recognized that a wall-flow filter having a porosity of 59% and a pore size of 25
`
`microns would be a prime candidate to be loaded with 100 g/L of a metal zeolite
`
`SCR catalyst washcoat.
`
`41. One claim of the ’982 patent, which depends from claim 1, requires
`
`that the catalyst be coated on both the inlet and outlet side of the walls. This was a
`
`20
`
`
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,039,982
`
`common and well-known method used to prepare filters with a catalyst washcoat.
`
`The dependent claim reads:
`
`The catalyst article of claim 1, wherein the longitudinally
`extending walls have an inlet side and an opposing outlet side
`and SCR catalyst is coated on both the inlet and outlet sides of
`the walls.
`
`42.
`
`I understand this claim to be requiring a catalyzed filter prepared by a
`
`specific method—coating both the inlet and outlet channels of the filter with a
`
`catalyst washcoat. The ’982 patent describes exactly such a method. ’982 patent,
`
`Example 1. This dependent claim, in my opinion, does not require that the coated
`
`catalyst remain only “on … the sides of the walls,” as that term is used in the
`
`dependent claim. Rather, the dependent claim actually requires that the catalyst—
`
`originally coated “on” the wall—eventually permeate the walls of the filter. This
`
`becomes clear after reviewing claim 1, the independent claim form which it
`
`depends. Claim 1 requires that the catalyst washcoat “permeat[e] the walls [of the
`
`filter] at a loading up to 2.4 g/in3.” Thus, reading this dependent claim in view of
`
`claim 1 makes clear that the dependent claim referring to the method of loading the
`
`filter with a catalyst, in a way that allows for the catalyst to eventually permeate
`
`the walls. The dependent claim does not, however, require that the claimed
`
`catalyst remain only on the walls of the filter.
`
`21
`
`
`
`INTER PARTES REVIEW OF US PATENT No. 9,039,982
`
`43. As of August 2003, the method of preparing a catalyzed filter recited
`
`by this dependent claim was a well-known and common way to load a catalyst into
`
`a filter.
`
`44.
`
`Even if the dependent claim is construed as requiring that the catalyst
`
`remain as a coating on both the inlet and outlet sides of the wall, such a
`
`configuration was well known in the art. For example, US. Patent No. 6,753,294
`
`teaches a “wall-flow filter for an exhaust system of a combustion engine,” wherein
`
`the “walls carry [a] coating” of a catalytic material, including an SCR catalyst.
`
`’294 patent, col. 2, lines 1—7; id. at col. 6, lines 9-41; see also id. at Figure l (a
`
`coating of an SCR catalyst, marked as 20, on both sides of the filter wall).
`
`45.
`
`I currently hold the opinions set expressed in this declaration. But my
`
`analysis may continue, and I may acquire additional information and/or attain
`
`supplemental insights that may result in added observations.
`
`46.
`
`I declare that all statements made in this declaration are of my own
`
`knowledge and are true and that all statements made on information and belief are
`
`believed to be true; that these statements were made with the knowledge that
`
`willful false statements and the like so made are punishable by fine or
`
`imprisonment, or both under Section 1001 of Title 18 of the United States Code.
`
`Dated: , lfllffij 25”: ZO/S’
`
`K
`
` \X
`
`
`
`L‘.
`
`David L. Tennent
`
`22
`
`
`
`
`
`EXHIBIT 1
`
`David L. Tennent, Ph.D.
`4748 Clawson Drive
`Campbell, NY 14821
`dtennent@stny.rr.com
`607‐527‐4111
`
`Employment History
`Corning Incorporated, Corning, New York (1980‐2009)
`Director, Carbon Technologies Development
`Overall technical program responsibility for developing mercury traps in power plant exhaust gases.
`Sr. Project Manager – AT Development/Manager, Catalyst Interactions Group
`1. R&D Leader for the development and transfer of DuraTrap®
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