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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
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION
`TO EXCLUDE UNDER 37 C.F.R. § 42.64(c)
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`Case IPR2015-01266
`Attorney Docket: 38411-0005IP1
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`TABLE OF CONTENTS
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`I.
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`Precise Relief Requested ................................................................................. 2
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`II.
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`Paragraphs 26-30 of Dr. Tennent’s Declaration Recount His Personal
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`Knowledge of the Industry. ............................................................................. 2
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`III. The Cited prior art corroborateS dr. tennent’s recollection that there was a
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`Demand for a High Porosity Filter That Could Accommodate a High
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`Loading of an SCR Catalyst. ........................................................................... 5
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`IV. Dr. Tennent’s Inability to disclose the Identity of Specific Customers Does
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`Not Prejudice the Patent Owner. ..................................................................... 9
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`V.
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`Conclusion ..................................................................................................... 11
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`i
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`I. PRECISE RELIEF REQUESTED
`Pursuant to 37 CFR § 42.64(c), Johnson Matthey Inc. and Johnson Matthey
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`Case IPR2015-01266
`Attorney Docket: 38411-0005IP1
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`PLC oppose BASF Corporation’s (“Patent Owner’s”) motion to exclude and
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`request that it be denied.
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`II. PARAGRAPHS 26-30 OF DR. TENNENT’S DECLARATION
`RECOUNT HIS PERSONAL KNOWLEDGE OF THE INDUSTRY.
`For almost 30 years, Dr. Tennent designed and commercialized wall flow
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`filters for Corning, one of the preeminent manufacturers of substrates in the
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`industry. Tennent Decl., JM 1003, ¶ 2-10. From his own personal knowledge, he
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`recounted how by 2002 Corning had received requests from auto and truck
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`manufactures “to develop a filter that could accommodate a catalyst washcoat
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`loading of between 100 g/L to 125 g/L,” which reflected a “move towards
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`developing higher porosity filters, so that they could be combined with high
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`catalyst loading.” Id. at ¶ 26. Specifically, Dr. Tennent personally observed a
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`demand for a high porosity filter that could accommodate “a very high SCR
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`washcoat loading” and still achieve acceptable backpressure. Id. at ¶ 26, 29.
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`Dr. Tennent disclosed the underlying facts of his testimony: his own
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`personal experience working in the relevant industry at the relevant time, where he
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`received requests from auto and truck manufacturers for exactly that type of filter.
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`Id. at ¶ 26. Patent Owner mischaracterizes his testimony as “generalized
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`statements about an industry without underlying evidence.” Patent Owner’s
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`2
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`Motion to Exclude, 3. But in reality, the challenged testimony describes how Dr.
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`Case IPR2015-01266
`Attorney Docket: 38411-0005IP1
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`Tennent personally observed a demand for a specific type of wall flow filter that
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`could accommodate a high SCR washcoat loading. No matter whether that
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`testimony is characterized as fact testimony or expert testimony, it is based on Dr.
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`Tennent’s own personal knowledge and, therefore, admissible. See Fed. R. Evid.
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`602 (fact witness may testify to a matter if the witness has “personal knowledge of
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`the matter”); see also Fed. R. Evid. 703 (expert witness “may base an opinion on
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`facts or data in the case that the expert has … personally observed”).
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`Patent Owner cites two opinions, one from district court and one from the
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`PTAB, but neither supports excluding Dr. Tennent’s testimony. In one, Rambus
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`Inc. v. Hynix Semiconductor Inc., the court excluded testimony where the expert
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`offered conclusory testimony about long-felt need where he had “limited
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`experience” in the relevant DRAM industry and his “involvement with the DRAM
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`industry appears minimal and he has had no experience in marketing DRAMs and
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`minimal [experience], at best, in designing them.” 254 F.R.D. 597, 608 (N.D. Cal.
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`2008). The court recognized, however, that if the expert had “extensive experience
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`in design or marketing in the DRAM industry,” then he would have been
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`competent to offer an opinion about long-felt need. Id. Here, Dr. Tennent
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`established his extensive experience developing wall flow filters, including serving
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`as Research & Development Leader for the development and commercialization of
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`3
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`multiple new wall flow filters. Tennent Decl., JM 1004, ¶ 2-10. Thus, unlike the
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`expert in Rambus who had “at best” “minimal” relevant experience, Dr. Tennent
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`has almost 30 years of experience designing and commercializing wall flow filters
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`and had personally observed requests for a high porosity wall flow filter that could
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`accommodate a high SCR washcoat loading.
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`In the second opinion, Nestlé Purina Petcare Co. v. Oil-Dri Corp. of Am.,
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`IPR2015-00737, two experts offered testimony about the content of specific
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`compositions in the prior art, not on general trends in the relevant industry. Paper
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`No. 37 at 17-18 (PTAB Jun. 20, 2016). Though the testimony “pertain[ed] to a
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`physical composition that could be tested to determine its content, or about which
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`specific information could be obtained,” neither expert did either. Id. Here, by
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`contrast, Dr. Tennent provided specific underlying facts to his opinions, testifying
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`that, “[b]ased on the requests that Corning received,” “auto and truck
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`manufacturers were … trying to develop a filter that could accommodate a catalyst
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`washcoat loading of between 100 g/L to 125 g/L.” Tennent Decl., JM 1004, ¶¶ 2-
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`10.
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`In paragraphs 26-30 of his declaration, Dr. Tennent recounts specific
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`information from his own personal experience. Accordingly, that testimony is
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`admissible. See Fed. R. Evid. 602; see also Fed. R. Evid. 703.
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`4
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`Case IPR2015-01266
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`III. THE CITED PRIOR ART CORROBORATES DR. TENNENT’S
`RECOLLECTION THAT THERE WAS A DEMAND FOR A HIGH
`POROSITY FILTER THAT COULD ACCOMMODATE A HIGH
`LOADING OF AN SCR CATALYST.
`Patent Owner argues that Dr. Tennent failed “to give a single piece of
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`evidence to substantiate his views” and his contention that the “skilled artisan
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`would have been motivated to combine a certain wall-flow filter with an SCR
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`catalyst coating.” Patent Owner’s Motion to Exclude, 3. As discussed above, Dr.
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`Tennent testified that his views came, in part, from his own personal knowledge
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`and described receiving requests for those types of wall-flow filters. In addition to
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`his own personal knowledge, however, Dr. Tennent also cited numerous prior art
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`publications to support his testimony, which Patent Owner and its expert Dr.
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`Crocker have consistently ignored.
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`Hüthwohl (JM 1005) expressly describes how there was a motivation to put
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`an SCR catalyst into a wall flow filter. Hüthwohl states that attaining the
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`“excellent emission values” needed to meet future regulations could “only
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`achieved by combining a particle filter with an SCR catalyst.” Id. at 3. Hüthwohl
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`then notes the challenges of incorporating them as separate substrates into the
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`limited space available, ultimately choosing to load the SCR catalyst into the wall-
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`flow filter to save space, i.e., it adopts an arrangement where “the volume of the
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`soot filter will be already utilized for the SCR reaction.” Id. Moreover, Hüthwohl
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`actually built and tested its SCR-catalyzed wall-flow filter, feeling confident
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`5
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`enough in the results to put the catalyzed filter in everyday service in buses. Id. at
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`Case IPR2015-01266
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`9.
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`Patent Owner ignores that Hüthwohl built and tested an SCR-catalyzed wall-
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`flow filter, and even put one into everyday service. See Patent Owner Response,
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`§ IV.A (section heading; “The Skilled Artisan Would Not Have Been Motivated
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`To Washcoat A Soot Filter With An SCR Catalyst ….”). Its expert, Dr. Crocker,
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`also ignored Hüthwohl. See JM 1029, 159:23 (saying “all” prior art systems put
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`the wall-flow filter first, followed by the SCR catalyst, instead of loading the SCR
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`catalyst into the wall-flow filter like Hüthwohl). Yet even Dr. Crocker later
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`admitted that it would be wrong to ignore Hüthwohl, but could provide no legally
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`relevant reason for having done so. See id. at 160:1-23:
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`Q And I think you said if you look at the literature around that
`time and also later, and you look at the system configurations that
`were being proposed, they all used that general configuration, DPF
`first, followed by a downstream SCR catalyst; right?
`A
`Correct.
`Q And you know from the record of this case, that’s wrong?
`A
` Well, I can only think of one case where that was not proposed,
`and that would have been Huthwohl in 1999, although that
`configuration was not adopted by the rest of the industry.
`Q But you said when you look at the system configurations that
`were being proposed at that time, they all used that general
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`configuration, DPF first, followed by a downstream SCR catalyst, and
`that's wrong?
`A
`I was referring to the time period of around 2003 and later.
`Q Okay.
`A
`Sorry if that wasn't clear.
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`Dr. Tennent also cited the Speronello catalysts (JM 1007) which would have
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`been the preferred SCR catalysts for use in Hüthwohl’s system. See Harold Decl.
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`(JM 1004), ¶ 37-44. In fact, one of Patent Owner’s own patent applications, which
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`is prior art here, describes an embodiment of the Speronello catalysts as “one of the
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`best, most stable, SCR catalysts.” U.S. Patent Publ. No. 2002/0044897 (JM 1032),
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`¶ 14, 93.
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`Accommodating the “best, most stable” SCR catalysts into a wall-flow filter
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`meant accommodating a washcoat loading of at least 100 g/L. The Speronello
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`catalysts required a washcoat loading of at least 1.6 g/in3 (or a fraction under 100
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`g/L after converting units). See, e.g., Speronello (JM 1007), col. 8, lines 57-60; see
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`also Harold Decl. (JM 1004), ¶ 45 (describing how Speronello discloses between
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`washcoat loadings of between 1.6 g/in3 and 2.0 g/in3). As the BASF Patents1
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`1 “BASF Patents” refers to the patents in IPR2015-01265, -01266, and -
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`01267, which are U.S. Patent Nos. 8,899,023, 9,039,982, and 9,032,709,
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`respectively. All three patents share a specification. For convenience, Johnson
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`acknowledge, and as Dr. Tennent described in his declaration, wall-flow filters
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`Case IPR2015-01266
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`with high catalyst loadings can lead to unacceptably high backpressure. ’982
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`patent, col. 2, line 65 to col. 3, line 10; see also Tennent Decl. (JM 1003), ¶ 27-28.
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`Dr. Tennent also relies on Hashimoto (JM 1007), which taught that its high
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`porosity filter solved the backpressure problem for catalyst loadings of 100 g/L.
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`Id. at ¶ 31; see also Hashimoto (JM 1007), 12-13. As Dr. Tennent testified, “the
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`Hashimoto [filter] would have been the leading choice to accommodate 100 g/L of
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`any catalyst washcoat.” Tennent Decl., ¶ 36. Hashimoto teaches that its high
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`porosity filters were “prime candidates” for future catalyzed filter systems.
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`Hashimoto (JM 1007), 13. The BASF Patents do nothing more than copy that
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`teaching; the Hashimoto filter is the same filter (and only filter) mentioned in the
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`shared specification of the BASF Patents. See Tennent Decl. (JM 1007), ¶ 32.
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`Accordingly, as Dr. Tennent described in his declaration, the prior art
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`confirms that a person of ordinary skill would have been motivated to use a high
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`porosity filter, like the Hashimoto filter, that could accommodate at least 100 g/L
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`of a catalyst washcoat.
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`Matthey’s Opposition to Patent Owner’s Motion to Exclude in all three
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`proceedings will cite to the specification of the ’982 patent.
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`8
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`Case IPR2015-01266
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`IV. DR. TENNENT’S INABILITY TO DISCLOSE THE IDENTITY OF
`SPECIFIC CUSTOMERS DOES NOT PREJUDICE THE PATENT
`OWNER.
`Because of pre-existing confidentiality obligations, Dr. Tennent could not
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`disclose one, and only one, type of detail: the names of the specific companies he
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`worked with during his time at Corning. He never withheld any other information,
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`e.g., the type of filter requested, its porosity or pore size, when it was requested,
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`when it was delivered, how many were requested and delivered, or what level of
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`backpressure the filters displayed. Thus, Patent Owner exaggerates when it says
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`that Dr. Tennent “withheld all details and evidence that might relate to his
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`opinions,” Patent Owner’s Motion to Exclude, 3. In reality, he withheld only the
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`names of the specific companies.
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`Patent Owner has not articulated how the precise identities of Corning’s
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`customers would be relevant to the obviousness of the claims of the BASF Patents.
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`Dr. Tennent did provide the relevant details (e.g., the characteristics of the filters)
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`and was willing to discuss them on cross-examination. See Tennent Decl. (JM
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`1003), ¶ 26 (Corning received requests from customers for filters that could
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`accommodate a catalyst washcoat loading of between 100 g/L to 125 g/L); id. at 30
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`(the filter industry believed that a porosity of 50% or higher was required). Those
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`relevant details do not depend, in any way, on the precise identity of Corning’s
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`customers.
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`9
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`Patent Owner’s own expert, Dr. Crocker, invoked similar confidentiality
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`Case IPR2015-01266
`Attorney Docket: 38411-0005IP1
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`agreements during his deposition. When deposed about the opinions in his report,
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`Dr. Crocker actually went one step further than Dr. Tennent—not only did he
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`withhold the name of the company, he also withheld details about what type of
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`washcoat that unnamed company requested:
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`Q
`For either the heavy-duty or light-duty application in
`connection with the ICT joint venture, can you tell me what washcoat
`or washcoats were being applied to the diesel particulate filter?
`A
`So you're asking me specifically what washcoat compositions
`were being used?
`Q M-hm.
`A
`I'm not sure I can really, in all conscience, disclose that
`information, bearing in mind that I did sign a confidentiality
`agreement in relation to this.
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`JM 1029, 38:8-19. Dr. Crocker thus withheld even more information than
`Dr. Tennent had.
`Patent Owner had a full and fair opportunity to cross-examine Dr. Tennent
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`about the basis of his opinions and points to a single, irrelevant piece of
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`information—the names of Corning’s customers—to manufacture grounds for
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`excluding Dr. Tennent’s testimony.
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`10
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`V. CONCLUSION
`For the reasons discussed above, the Board should deny Patent Owner’s
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`Case IPR2015-01266
`Attorney Docket: 38411-0005IP1
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`motion to exclude paragraphs 26-30 of Dr. Tennent’s declaration.
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`Respectfully submitted,
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` /Gwilym J. O. Attwell, Reg. No. 45,449/
` Dorothy P. Whelan, Reg. No. 33,814
` Gwilym J. O. Attwell, Reg. No. 45,449
` Attorneys for Petitioners,
` Johnson Matthey Inc. and
` Johnson Matthey PLC
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`11
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`Date: August 8, 2016
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
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`Case IPR2015-01266
`Attorney Docket: 38411-0005IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on August 8,
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`2016, a complete and entire copy of this Petitioners’ Opposition to Patent Owner’s
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`Motion to Exclude provided via e-mail, to the Patent Owner by serving the e-mail
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`correspondence addresses of record as follows:
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`Brian E. Ferguson
`Anish R. Desai
`Weil, Gotshal & Manges LLP
`1300 Eye Street, NW
`Suite 900
`Washington, DC 20005
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`Email: brian.ferguson@weil.com
`Email: anish.desai@weil.com
`Email: BASF.IPR.2015.1266@weil.com
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(202) 626-6420
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`12