UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`JOHNSON MATTHEY INC. and JOHNSON MATTHEY PLC,
`Petitioners
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`v.
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`BASF CORPORATION,
`Patent Owner
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`Case IPR2015-01266
`Patent 9,039,982 B2
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`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE TO
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`PETITION FOR INTER PARTES REVIEW
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`JOHNSON MATTHEY INC. and JOHNSON MATTHEY PLC,
`Petitioners
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`v.
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`BASF CORPORATION,
`Patent Owner
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`Case IPR2015-01266
`Patent 9,039,982 B2
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`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE TO
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`PETITION FOR INTER PARTES REVIEW
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`Case IPR2015-01266
`Attorney Docket No: 38411-0005IP1
`TABLE OF CONTENTS
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`I.
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`Introduction. ......................................................................................................... 1
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`II. A Person of Ordinary Skill Would Have Been Motivated To Use Hüthwohl’s
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`System And Would Have Reasonably Expected It To Reduce NOx and PM
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`Emissions. ............................................................................................................ 4
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`III. The Speronello Catalysts Were “One Of The Best, Most Stable, SCR
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`Catalysts.” .......................................................................................................... 11
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`IV. The Hashimoto Wall-Flow Filters Solved The Back-Pressure Problem And
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`Were “Prime Candidates For the Catalyzed System.” ...................................... 16
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`V. The Claimed Combination Performed As Expected. ........................................ 19
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`a. The BASF Patents Did Not Fulfill a Long-Felt Need ............................. 19
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`b. Industry Praise and Skepticism of Others Are Not Tied to Novel
`Advance That The BASF Patents Made Over the Prior Art ................... 20
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`VI. Claim 15 Recites A Product-By-Process Limitation, Which Cannot Confer
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`Patentability. ...................................................................................................... 21
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`VII. Dr. Tennent Disclosed The Basis Of His Opinions. ...................................... 22
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`VIII. Conclusion. .................................................................................................. 24
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`Attorney Docket No: 38411-0005IP1
`TABLE OF AUTHORITIES
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`Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286, (Fed. Cir. 2013) ............................. 2, 8
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`In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) ................................................... 21
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`Geo M. Martin Co. v. Alliance Machine Sys. Intern. LLC, 618 F.3d 1294, 1304–05
`(Fed. Cir. 2010) .............................................................................................. 20
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`Kroy IP Holdings, LLC v. Safeway, Inc., 107 F. Supp. 3d 656, 676-77 (E.D. Tex.
`2015) .............................................................................................................. 20
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`KSR Int’l v. Teleflex Inc., 550 U.S. 398, 417 (2007) ............................................... 19
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`Merck & Cie v. Gnosis S.P.A., 808 F.3d 829, 834-35 (Fed. Cir. 2015) .................. 15
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`Purdue Pharma L.P. v. Epic Pharma, LLC, 811 F.3d 1345, 1354 (Fed. Cir. 2016)21
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`Senju Pharm. Co. v. Lupin Ltd., 780 F.3d 1337, 1347 Fed. Cir. 2015) ..................... 7
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`Smith & Nephew, Inc. v. Rea, 721 F.3d 1371, 1381-82 (Fed. Cir. 2013) ............ 7, 17
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`South Alabama Medical Science Foundation v. Gnosis S.P.A., 808 F.3d 823, 827
`(Fed. Cir. 2015) .............................................................................................. 20
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`ii
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`JM 1001
`JM 1002
`JM 1003
`JM 1004
`JM 1005
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`JM 1006
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`JM 1007
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`JM 1008
`JM 1009
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`Case IPR2015-01266
`Attorney Docket No: 38411-0005IP1
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`EXHIBITS
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`U.S. Patent No. 8,899,023
`Prosecution History of the ’023 patent
`Declaration of Dr. Tennent
`Declaration of Dr. Harold
`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
`Original German-Language Publication 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
`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
`Yasutake Teraoka, Kazunori Kanada, Hiroshi Furukawa,
`Isamu Moriguchi, and Shuichi Kagawa, Simultaneous
`Catalytic Removal of Nitrogen Oxides and Soot by Copper-
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`iii
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`JM 1010
`JM 1011
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`JM 1012
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`JM 1013
`JM 1014
`JM 1015
`JM 1016
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`JM 1017
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`JM 1018
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`JM 1019
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`JM 1020-1028
`JM 1029
`JM 1030
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`JM 1031
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`JM 1032
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`Loaded MFI Zeolites, 30 Chemistry Letters 604 (2001)
`Japanese Patent Appl. No. 2002-210300
`Chapters 8 & 9 from Ronald M. Heck and Robert J. Farrauto
`with Suresh T. Gulati, Catalytic Air Pollution Control (2002)
`Printout of United States Environmental Protection Agency,
`Nitrogen Dioxides: Health (2014), available at
`http://www.epa.gov/oaqps001/nitrogenoxides/health.htmlf
`Declaration of Dr. Bernd Maurer
`Abstract of Hashimoto indexed in STN
`U.S. Patent No. 6,248,684
`Certified Translation of Confirmation from the Technical
`Information Library at the University Library of Hannover
`Confirmation from the Technical Information Library at the
`University Library of Hannover
`Declaration of Joseph C. Dettling at 13, Reexamination No.
`95/001,744 (July 3, 2012)
`Declaration of Douglas E. McCann in support of Motion for
`Pro Hac Vice Admission
`Reserved
`Transcript of Deposition of Mark Crocker, May 6, 2016.
`J. Gieshoff, et al., Advanced Urea SCR Catalysts for
`Automotive Applications, SAE Technical Paper 2001-01-
`0514
`Timothy V. Johnson, Diesel Emission Control in Review,
`SAE Technical Paper 2001-01-0184
`U.S. Patent Publ. 2002/0044897
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`JM 1033
`JM 1034
`JM 1035
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`JM 1036
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`EP 0 508 020
`WO 2002/41991
`Harth et al., Smart Catalyst Technologies for Future
`Automotive Emission Control, Internationales Wiener
`Motorensymposium 2012
`Dieterle et al., Two in One: SCR on Filter, MINOX
`Conference 2010
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`I.
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`Introduction.
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`The BASF Patents1 claim a known arrangement of two established elements:
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`an SCR catalyst to reduce NOx emissions and a wall-flow filter to reduce
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`particulate matter (PM) emissions. BASF does not argue that the combination
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`yielded any unexpected results, acknowledging that both elements do no more than
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`perform their usual functions.
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`Numerous prior art references taught combining an SCR catalyst with a
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`wall-flow filter to meet proposed emission standards, which required the
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`substantial reduction both of NOx and PM emissions. See, e.g., BASF 2034.008
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`(“By combining [a wall-flow filter] with SCR technology it is possible to reach the
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`NOx, PM, HC and CO emissions standards.”); JM 1031 at 15 (stating that “[t]he
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`ultimate diesel emission solutions will include both advanced NOx and PM
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`control,” and describing “three studies [that] have emerged on combining filters
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`and SCR”). Hüthwohl built and tested a system that placed an SCR catalyst inside
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`the wall-flow filter, explaining that it saved space and still achieved the reductions
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`1 BASF Patents refers to the patents in IPR2015-01265-01267, which are
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`U.S. Patent Nos. 8,899,023, 9,039,982, and 9,032,709, respectively. All three
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`patents share a specification. For convenience, Johnson Matthey’s Reply in all
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`three proceedings will cite to the specification of the ’982 patent.
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`in NOx and PM emissions needed to comply with proposed standards. JM 1005 at
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`3, 8-9.
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`BASF identifies no patentable difference between its claims and the prior
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`art. BASF did not improve the arrangement of Hüthwohl’s system, JM 1005.
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`BASF did not improve the Speronello catalysts, JM 1008, which the prior art
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`describes as “one of the best, most stable, SCR catalysts.” JM 1032, ¶ 14, 93.
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`BASF did not improve the Hashimoto wall-flow filters, JM 1007, which were
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`“prime candidates for the catalyzed system.” JM 1007 at 13. Indeed, the BASF
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`Patents frequently copy those references verbatim. See, e.g., Petition, § VII.E.
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`The combination of Hüthwohl, Speronello, and Hashimoto that the BASF patents
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`cover did not lead to any unexpected results. In short, BASF merely did what the
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`prior art said to do: use an SCR catalyst and wall-flow filter to reduce both NOx
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`and PM emissions and combine them into a single unit as Hüthwohl did to save
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`space.
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`Trying to salvage its claims, BASF only points to irrelevant differences
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`between the prior art and a commercially viable product, not the claims. But that is
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`not the proper analysis. See Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286, (Fed.
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`Cir. 2013) (“There is no requirement that one of ordinary skill have a reasonable
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`expectation of success in developing [a commercial product] …. [but] need only
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`have a reasonable expectation of success of developing the claimed invention.”).
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`Time and again, BASF argues that the claims are nonobvious because a
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`person of ordinary skill would not have had a reasonable expectation of success in
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`practicing certain unclaimed characteristics. The claims do not require any
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`particular level of NOx or PM reduction. Cf. BASF Response, § IV.A.2. The
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`claims do not require that the soot combustion temperature be lowered by any
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`particular amount. Cf. id. at § IV.A.1. The claims do not require that the SCR
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`catalyst perform up to 1000°C or even 700°C. Cf. id. at § IV.A.3. The claims do
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`not require that the SCR catalyst be resistant to poisoning by ash and unburned
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`hydrocarbons. Cf. id. at § IV.A.4. The claims do not require a particular mode of
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`filter regeneration or performance of the filter during filter regeneration. Cf. id. at
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`§ IV.B. The claims do not require that the wall-flow filter exhibit a particular
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`thermo-mechanical durability. Cf. id. at § IV.E. Yet, to make its arguments,
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`BASF assumes that the claims require each of these limitations.
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`BASF’s expert, Dr. Crocker, admitted that his analysis was not based on
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`what the claims of actually require, but focused instead on what would have been
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`required for a commercially viable product:
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`Q.
`In conducting your obviousness analysis and looking at the
`prior art and assessing whether there was a reasonable expectation
`of success, what I'm asking is, success of what?
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`A. Success of combining the prior art into a workable technology.
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`Q. A commercially workable technology?
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`A. Yes …. It would have to be commercially -- it would have to
`be commercially viable to be worthwhile.
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`Crocker Transcript, JM 1029, 46:14-22 & 46:24-47-1.
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`The claims do not recite these characteristics for the simple reason that the
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`BASF Patents do not disclose or support any of them. It took BASF almost a
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`decade from the priority date of the BASF Patents to achieve a system that
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`displayed even some of them. A 2012 BASF publication describes how an SCR-
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`catalyzed wall-flow filter “can be developed that meets very stringent emission
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`regulations,” while reporting on “[s]ignificant new results” concerning the
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`“durability of this new component.” JM 1035, at 6 (emphasis added). Likewise, a
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`2010 BASF publication reports on “newly developed SCR catalysts [that] show
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`high hydrothermal stability” and, therefore, “open a new path” of combining
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`“different functions (e.g. removal of particulates and NOx) in only one unit.” JM
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`1036, at 1.
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`II.
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`A Person of Ordinary Skill Would Have Been Motivated To Use
`Hüthwohl’s System And Would Have Reasonably Expected It To
`Reduce NOx and PM Emissions.
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`Hüthwohl teaches that attaining “excellent emission values” could “only be
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`achieved by combining a particle filter with an SCR catalyst.” Hüthwohl, JM
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`1005, at 3. Hüthwohl’s system loads an SCR catalyst into a wall-flow filter. Id.
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`Hüthwohl teaches its SCR-catalyzed filter serves two functions simultaneously—
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`removal of NOx and PM—and therefore reduces the overall size of the system. Id.
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`Hüthwohl then tests the system, showing that it can meet the EURO-III and
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`EURO-IV emission standards. Id. at 8-9. Hüthwohl, in fact, was confident enough
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`in the SCR-catalyzed wall-flow filter to put it into everyday service in buses. Id. at
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`9.
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`Nevertheless, BASF argues that there would have been no motivation to
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`load an SCR catalyst into a wall-flow filter. See BASF Response, § IV.A (“The
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`Skilled Artisan Would Not Have Been Motivated To Washcoat A Soot Filter With
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`An SCR Catalyst….”). Besides ignoring Hüthwohl, BASF’s argument contradicts
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`the shared specification of the BASF Patents, which acknowledges that exactly
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`such a motivation did exist. See ’982 patent, col. 2, lines 54-64. According to the
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`BASF Patents, there was a motivation “to coat the soot filter with a catalyst
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`composition effective for the conversion of NOx to innocuous components,”
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`because in that approach “the catalyzed soot filter assumes two catalyst functions:
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`removal of the particulate component of the exhaust stream and conversion of the
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`NOx component.” Id. That is the same motivation that had already led Hüthwohl
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`to put an SCR catalyst into a wall-flow filter. JM 1005, at 3.
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`Hüthwohl was not alone in teaching that future emission standards would
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`require combining an SCR catalyst with a wall-flow filter. The prior art taught that
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`engine modification techniques like exhaust gas recirculation (EGR) could not
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`meet the aggressive new emission standards. See JM 1031, at 15 (“The ultimate
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`diesel emission solutions will include both advanced NOx and PM control.”); see
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`also BASF 2028.014 (“Ultimately, both light-duty and heavy duty emission
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`control systems will have to incorporate both NOx and PM emission control
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`features.”). Engine modification techniques like EGR did not solve the “NOx-
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`particulate tradeoff,” see Crocker Decl., BASF 2013, ¶¶ 37, 44, i.e., the known
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`challenge that the engine could be modified to give low NOx and high PM, or vice
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`versa, but could not be modified to give low NOx and low PM. The prior art
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`taught that combining an SCR catalyst and a wall-flow filter overcame the “NOx-
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`particulate tradeoff.” See BASF 2034.003 (“[C]ombin[ing] advanced SCR NOx
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`control catalyst technology with the PM control of a [wall-flow filter] … deliver[s]
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`high conversions of HC, CO, NOx and PM.”). Besides aggressively reducing NOx
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`and PM emissions, the combination had the additional benefit of “allow[ing] the
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`engine to be calibrated for optimum performance/fuel economy etc.” Id.
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`Hüthwohl thus confirms what was known (and what the BASF Patents
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`acknowledge): that both elements would be needed and that it would be desirable
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`to combine them into a single unit. ’982 patent, col. 2, lines 54-64. There was
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`nothing inventive in selecting a wall-flow filter, the “most common and well-
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`known device,” to reduce PM emissions. BASF-2027.004; see also Crocker Decl.,
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`BASF-2013, ¶ 26. Nor was there anything inventive in selecting an SCR catalyst,
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`which was “one of the best candidates for meeting the aggressive NOx reduction
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`goals” required for future emission standards. JM 1032, ¶ 15; see also BASF-
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`2028.008 (“SCR is emerging as the leading NOx reduction technology in Europe
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`to hit Euro IV (2005) and Euro V (2008) HDD standards.”).
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`Faced with this evidence, BASF makes the legally irrelevant argument that a
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`person of ordinary skill would not have had a reasonable expectation of success in
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`achieving certain characteristics that are not claimed and, indeed, that the BASF
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`Patents could not claim anyway. For example, BASF devotes an entire section of
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`its Response to how a skilled artisan would have believed that ash and unburnt
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`hydrocarbons would poison the SCR catalyst. See BASF Response, § IV.A.4. Yet
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`none of the claims require any level of resistance to poisoning by ash and unburnt
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`hydrocarbons. Nor could the claims impose such a requirement, because nowhere
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`does the specification disclose any contribution that the BASF Patents made to
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`develop SCR catalysts with improved resistance to poisoning. It is not relevant to
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`the obviousness determination. See Senju Pharm. Co. v. Lupin Ltd., 780 F.3d
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`1337, 1347 Fed. Cir. 2015) (“Many of appellants’ arguments on the lack of reasons
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`to combine the teachings of these three patents rely on the fact that they do not
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`disclose anything about corneal permeability …. [but] this is not a limitation …
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`and, therefore, is not relevant to the obviousness determination.”); see also Smith
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`& Nephew, Inc. v. Rea, 721 F.3d 1371, 1381-82 (Fed. Cir. 2013) (“an unclaimed
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`and undisclosed feature … cannot be the basis for finding [a] patent to be non-
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`obvious over the prior art”).
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`Similarly, BASF’s arguments presume that the claims require a particular
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`amount of reduction in NOx and PM emissions, or that they require that the soot
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`oxidation temperature be lowered by a particular amount, or that they require that
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`the wall-flow filter display a particular thermo-mechanical durability. See BASF
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`Response, §§ IV.A.1-4, IV.B, & IV.E. The claims require none of those features.
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`What they do require is that the wall-flow filter have a particular pore size and
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`porosity, that the SCR catalyst be an iron- or copper-zeolite and have a particular
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`catalyst loading, that the SCR-catalyzed filter reduce NOx and PM emissions by
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`any amount; and that the SCR catalyst also catalyze the oxidation of soot to any
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`degree. E.g. ’982 patent, claim 1; see also ’023 patent, claim 1. The BASF
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`Patents mostly copy the language of those actual claim limitations directly from
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`the prior art. See, e.g., Petition, § VII.E. None of BASF’s arguments identify
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`patentable differences between the prior art and the claims. See Allergan, 726 F.3d
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`at 1291 (“There is no requirement that one of ordinary skill have a reasonable
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`expectation of success in developing [a commercial product] …. [but] need only
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`have a reasonable expectation of success of developing the claimed invention.”).
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`A person of ordinary skill would have had a reasonable expectation of
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`success in achieving what the claims actually do require. First, BASF does not
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`dispute that Hüthwohl’s SCR-catalyzed filter reduces PM emissions. See JM 1005,
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`at 8-9. Second, BASF does not dispute that zeolites were known to catalyze the
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`oxidation of soot. See Teraoka, JM 1009, at 1. BASF does argue that zeolites
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`would have been a “poor” catalyst for soot oxidation compared to platinum. See
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`BASF Response, § IV.A.2 (arguing that even if “it was known” zeolites could
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`catalyze soot oxidation, it would have been “weak relative to the preferred Pt-
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`based catalysts”). The claims, however, do not require that the SCR catalyst
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`catalyze soot oxidation to the same degree that platinum does. The specification of
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`the BASF Patents discloses only that a zeolite catalyzes soot oxidation to a greater
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`extent than a non-zeolite, vanadium catalyst (under certain conditions). See ’982
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`Patent, Example 3 & Figure 5. Nothing in the BASF Patents supports a claim
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`requiring that the SCR catalyst be comparable to platinum for soot oxidation.
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`Third, with respect to NOx, Hüthwohl unambiguously teaches that the SCR
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`catalyst inside the wall-flow filter reduces NOx emissions. Specifically, Hüthwohl
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`teaches that, because “the volume of the soot filter will be already utilized for the
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`SCR reaction,” “only a proportionately smaller SCR catalyst has to be connected in
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`series.” JM 1005, at 3. That is, the SCR-catalyzed filter successfully reduces NOx
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`emissions and, therefore, less SCR catalyst is needed downstream. Importantly,
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`the BASF Patents specifically contemplate using a downstream SCR catalyst like
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`Hüthwohl teaches:
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`Depending on the desired level of NOx removal, additional SCR
`catalyst can be disposed downstream of the soot filter. For example,
`the additional SCR catalyst may be disposed on a monolithic,
`honeycomb flow through substrate … downstream of the soot filter.
`Even in these embodiments, the use of the coated SCR soot filter
`still achieves a reduction in the total volume of catalyst required to
`meet NOx reduction goals.
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`’982 Patent, col. 7, lines 23-30.
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` BASF’s argument is premised on reading Hüthwohl as teaching that no
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`NOx reduction whatsoever occurs in the SCR-coated filter. Dr. Harold called this
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`scenario “[n]ot likely.” Exhibit 2025, 196:11-197:6. Even BASF’s expert, Dr.
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`Crocker, does not testify that a skilled artisan would have viewed Hüthwohl as
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`teaching that no NOx reduction occurs at all. See Crocker Decl., ¶ 79-80. Instead,
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`Dr. Crocker states that “Hüthwohl provides no information regarding how much
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`NOx reduction, if any, is actually taking place on the coated DPF compared to the
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`downstream SCR catalyst.” Id. at ¶ 79. That does no more than accurately
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`describe the data that Hüthwohl discloses. See Hüthwohl, JM 1005, 8 (Table 4).
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`But Dr. Crocker never concludes from that data that a skilled artisan would have
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`thought that absolutely no NOx reduction occurs. Moreover, he cites no evidence
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`to support the conclusion that the “SCR-active material” that Hüthwohl loads into
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`the wall-flow filter would show zero SCR activity. JM 1005, 3. BASF’s
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`argument, therefore, was not even adopted by its expert.
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`Accordingly, a person of ordinary skill would have been motivated to load
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`an SCR catalyst into a wall-flow filter and would have reasonably expected it to
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`reduce NOx and PM emissions and to also catalyze the oxidation of soot.
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`III.
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`The Speronello Catalysts Were “One Of The Best, Most Stable, SCR
`Catalysts.”
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`The Speronello catalysts would have been preferred catalysts for use in
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`Hüthwohl’s system. A person of ordinary skill would have considered the
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`following characteristics when selecting an SCR catalyst for Hüthwohl’s system:
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`resistance to sulfur degradation, high activity over a wide range of temperatures,
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`and thermal stability. See Harold Decl., JM 1004, ¶ 38. BASF does not dispute
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`that these were known to be important considerations as of 2003. Moreover,
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`BASF does not dispute that the Speronello catalysts were recognized to be resistant
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`to sulfur degradation and to be highly active over a wide range of temperatures.
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`See Harold Decl., JM 1004, ¶ 41-48.
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`With respect to thermal stability (the only issue BASF does raise, see BASF
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`Response, § IV.A.3), BASF argues that the Speronello zeolites would not have
`
`displayed sufficient thermal stability. However, the prior art taught that zeolites
`
`displayed the best thermal stability among known SCR catalysts. See Heck
`
`Treatise, JM 1011, 205-06 (“For … temperatures of 200-300 °C V2O5 [i.e.,
`
`vanadium] catalysts … are preferred, while above this temperature range a metal-
`
`exchanged zeolite catalyst is required.”). Notably, BASF never identifies SCR
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`Case IPR2015-01266
`Attorney Docket No: 38411-0005IP1
`catalysts for use in Hüthwohl’s system that were known in 2003 to have better
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`thermal stability than zeolites. Prior art from Engelhard Corporation (whom BASF
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`purchased and who is also the original assignee of the BASF Patents) describes
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`how an embodiment of Speronello was considered the most thermally stable type
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`SCR catalyst:
`
`[O]ne of the best, most stable, SCR catalysts, which is of the zeolite
`type (e.g. The assignee, Engelhard Corporation’s ZNX catalyst, a
`Fe-Beta Zeolite), also has
`the highest optimum operating
`temperature.
`
`JM 1032, ¶ 14. JM 1032 specifically references Speronello, saying that it teaches
`
`the “preferred composition of the SCR catalyst” and that “the ZNX SCR catalyst
`
`composition disclosed above falls within” its teachings. Id. at ¶ 93. BASF’s
`
`predecessor-in-interest, therefore, described Speronello as teaching one of the best,
`
`most stable SCR catalysts with the highest optimum operating temperature.
`
`All BASF argues is that the Speronello catalysts would not have been
`
`considered stable enough for use “during active filter regeneration temperatures
`
`[where] can exceed 700ºC, and may even reach 1000ºC.” BASF Response,
`
`§ IV.A.3. BASF ignores, however, that most of its claims, including all of the
`
`independent claims, have no temperature limitations whatsoever.
`
`Those few dependent claims that do have a temperature limitation require, at
`
`most, “a thermal resistance to degradation at temperatures greater than 650° C.”
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`12
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`Case IPR2015-01266
`Attorney Docket No: 38411-0005IP1
`See ’023 patent at claims 14, 20, and 23; ’982 patent at claims 5, 19, and 23; ’709
`
`patent at claim 12. BASF singles out a single zeolite catalyst, ZSM-5, to argue that
`
`“there was widespread concern as to the thermal stability of zeolite catalysts
`
`generally.” See, e.g., BASF Response, § IV.A.3; see also Heck Treatise, JM 1011,
`
`at 205; BASF-2041; BASF-2042.
`
`The prior art contradicts BASF’s generalization, because other zeolites were
`
`known to have even better thermal stability than ZSM-5 and to display activity up
`
`to 750°C. See JM 1033, page 2, lines 42-44. EP 0508020 (JM 1033) tested three
`
`SCR catalysts to 750°C: a vanadium (non-zeolite) catalyst, a ZSM-5 zeolite
`
`catalyst, and a Y zeolite catalyst. JM 1033 at Figure 2. Based on those
`
`experiments, EP ’020 states “a Cu (II) exchanged Y zeolite [achieves] much higher
`
`activity at a temperature between 300 and 750°C, compared to the widely used
`
`vanadium-titania catalyst.” JM 1033 at page 2, lines 42-44; see also id. at 4, lines
`
`23-24 (activity of “Cu (II) exchanged Y zeolite” “remained in a practical range up
`
`to 750°C”). Importantly, the Y zeolite also displayed better activity than ZSM-5.
`
`See id. at Figure 2. BASF misleadingly selects a zeolite known to display
`
`relatively poor thermal stability compared to other zeolites, despite none of its
`
`claims being limited to ZSM-5.
`
`BASF’s own expert, Dr. Crocker, published an article demonstrating that
`
`zeolite catalysts, including ZSM-5, resisted thermal degradation at 650°C. See JM
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`13
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`Case IPR2015-01266
`Attorney Docket No: 38411-0005IP1
`1030. Figure 3 of Dr. Crocker’s article compares the activity of fresh ZSM-5 to
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`ZSM-5 aged at 650°C for 48 hours, showing that the aged catalyst actually
`
`performs better at 500°C than the fresh catalyst. Id. Dr. Crocker admitted that
`
`ZSM-5 demonstrated a thermal resistance to degradation at 650°C. Crocker
`
`Transcript, JM 1029, 143:22-144:7 (“one could conceivably characterize it as
`
`showing some resistance to degradation”). Moreover, Dr. Crocker acknowledged
`
`that “catalyst B” in his article was also a zeolite catalyst. JM 1029, 124:10-15.
`
`Figure 5 of Dr. Crocker’s article demonstrates that after “catalyst B” was aged at
`
`650°C for 48 hours, “no loss in activity was observed.” JM 1030 at 3. Figure 8
`
`shows that exposing “catalyst B” to the “severe aging conditions” of 48 hours at
`
`800°C caused “only slightly lower” performance. Id. at 4. Thus, zeolites would
`
`have been expected to fulfill the temperature limitations found in the BASF
`
`Patents.
`
`Speronello itself teaches that its zeolite catalysts displayed excellent activity
`
`and stability at high temperatures, without setting a definite and certain upper limit.
`
`See Speronello, JM 1009, col. 16, lines 28-32 (“The results above show that iron
`
`promoted Beta is a highly active and selective bifunctional catalyst that is
`
`particularly well suited for the SCR process and excess or residual ammonia
`
`oxidation at temperature above about 400° C.”). Speronello tests the activity of its
`
`catalysts up to 600°C, showing that their activity increases with temperature up to
`
`14
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`Case IPR2015-01266
`Attorney Docket No: 38411-0005IP1
`about 400°C, then plateaus for the rest of the tested temperature range. See id. at
`
`Figure 2.
`
`Because Speronello does not run tests at higher temperatures, BASF argues
`
`that the catalysts would have been viewed as stable “only up to” (BASF’s
`
`language) 600°C. BASF Response, § IV.A.3. Nothing in Speronello, however,
`
`indicates that 600°C is a critical temperature above which there would be an
`
`immediate and significant drop-off in activity. See Speronello, JM 1009, Figure 2.
`
`BASF seizes on Dr. Harold’s deposition testimony that, “if you just look at
`
`Speronello in an isolated way,” it has no data above 600°C. See BASF Response,
`
`§ IV.A.3 (quoting BASF 2025 at 224:22-225:7). That, however, is not the correct
`
`approach. See Merck & Cie v. Gnosis S.P.A., 808 F.3d 829, 834-35 (Fed. Cir.
`
`2015) (rejecting arguments based on “isolated prior art disclosures,” “[b]ecause the
`
`prior art must be considered as a whole”). Here, the prior art considered as a
`
`whole demonstrates that zeolites like Speronello were stable up to 650°C. See JM
`
`1033, Figure 2; JM 1030, Figures 3, 5, & 8; Speronello, JM 1009, col. 16, lines 28-
`
`32.
`
`The claims of the BASF Patents do not have higher temperature limitations,
`
`because the BASF Patents would not support it. See BASF 2033.005 (2008
`
`publication, questioning whether “the current Cu/Zeolite SCR catalyst formulation
`
`[would] withstand the periodic filter regenerations”). The BASF Patents merely
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`Case IPR2015-01266
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`select the Speronello catalysts without modifying them. It was not until 2010 that
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`BASF touted “newly developed SCR catalysts [that] show[ed] high hydrothermal
`
`stability” and described how these new catalysts “open a new path” of combining
`
`“different functions (e.g. removal of particulates and NOx) in only one unit.” JM
`
`1036, 1.
`
`BASF’s decision to claim, oftentimes verbatim, what were known to be the
`
`“best, most stable, SCR catalysts,” see JM 1032, ¶ 14—without modifying or
`
`improving those catalysts—does not make these claims patentable.
`
`IV.
`
`The Hashimoto Wall-Flow Filters Solved The Back-Pressure Problem
`And Were “Prime Candidates For the Catalyzed System.”
`
`In 2002, a year before the priority date of the BASF Patents, Hashimoto
`
`demonstrated that its new, high-porosity filters solved the back-pressure problem
`
`for a catalyst loading of 100 g/L (1.64 g/in3), which is the same catalyst loading
`
`taught by Speronello and claimed by the BASF patents. Hashimoto teaches that its
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`wall-flow filters were “prime candidates for the catalyzed system.” Hashimoto,
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`JM 1007, 13.
`
`The specification of the BASF Patents describes the back-pressure problem
`
`as the main obstacle to an SCR-catalyzed filter. ’982 Patent, col. 2, line 65 to col.
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`3, line 10. The specification describes how the relatively high catalyst loadings
`
`needed for an SCR-catalyzed filter “can lead to unacceptably high back pressure
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`Case IPR2015-01266
`Attorney Docket No: 38411-0005IP1
`within the exhaust system” and how an SCR-catalyzed filter that displayed
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`acceptable back-pressure was “desirable.” Id.
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`Hashimoto demonstrated that its high-porosity filters displayed acceptable
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`back-pressure. Hashimoto, JM 1007, 12-13. Hashimoto’s DHC-611 filter is the
`
`same wall-flow filter—and the only wall-flow filter—described in the specification
`
`of the BASF Patents. See Tennent Decl., JM 1003, ¶ 32. Hashimoto teaches that
`
`“the porosity and mean pore size … are critical for the catalyzed” wall-flow filter
`
`to achieve acceptable back-pressure. See Hashimoto, JM 1007, 13. The BASF
`
`Patents simply adopt the porosity and mean pore size of the Hashimoto filters.
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