Johnson Matthey Inc. &
`Johnson Matthey PLC
`v.
`BASF Corporation
`
`IPR2015-01265, 01266, & 01267
`August 23, 2016 Oral Hearing
`Petitioner's Presentation
`
`1
`
`JM 1037
`Johnson Mathey v. BASF
`IPR2015-01265; IPR2015-01266; IPR2015-01267
`1
`
`
`Johnson Matthey PLC
`v.
`BASF Corporation
`
`IPR2015-01265, 01266, & 01267
`August 23, 2016 Oral Hearing
`Petitioner's Presentation
`
`1
`
`JM 1037
`Johnson Mathey v. BASF
`IPR2015-01265; IPR2015-01266; IPR2015-01267
`1
`
`
`
`‘982 Patent, Claim 1
`
`Source: ’982 patent, col. 2, lines 40-53.
`Paper 1 at 12-13
`
`2
`
`
`
`The ʼ709 and ʼ023 Patents
`
`’709 Patent
`
`’023 Patent
`
`Source: ’709 and ’023 patents, claim 1.
`Paper 1, § VII. E, in each respective proceeding
`
`3
`
`
`
`The claims are obvious over Hüthwohl (JM 1005), Speronello (JM
`1008), Hashimoto (JM 1007), and Teraoka (JM 1009).
`
`• Hüthwohl taught combining an SCR catalyst with a wall-flow filter, and
`that loading the SCR catalyst into the wall-flow filter saved space while
`still reducing NOx and PM emissions.
`• The Speronello catalysts were “one of the best, most stable SCR
`catalysts” and well-suited for use in wall-flow filters.
`• The Hashimoto filters were able to accommodate a catalyst loading of
`100 g/L (1. 64 g/in3 ), the same loading as Speronello, and still display
`acceptable back-pressure.
`
`Paper 1 at 41-44
`
`4
`
`
`
`Hüthwohl Built, Tested, and Recommended a System that
`Loaded an SCR Catalyst into a Wall-Flow Filter.
`
`Hüthwohl Even Recommending Putting the SCR-
`Catalyzed Wall-Flow Filter into Everyday Service in
`Buses.
`
`Paper 23 at 4-5
`
`5
`
`
`
`Hüthwohl Teaches Loading an SCR Catalyst into the
`Filter to Save Space
`
`Source: JM 1005 at 3
`Paper 1 at 22-24
`
`6
`
`
`
`Hüthwohl Discloses the Entire Emission Treatment
`System
`
`Source: JM 1005 at 4, Fig. 1
`Paper 1 at 22-24
`
`7
`
`
`
`Hüthwohl’s System Worked
`
`Source: JM 1005 at 8-9
`Paper 23 at 4-5
`
`8
`
`
`
`Hüthwohl Recommended Putting System Into Everyday
`Service in Buses
`
`Source: JM 1005 at 9
`Paper 23 at 4-5
`
`9
`
`
`
`BASF Patents Describe What Hüthwohl Disclosed Four
`Years Earlier
`
`Source: ‘982 patent, col. 2, lines 54-64
`Paper 1 at 25
`
`10
`
`
`
`Zeolite Catalysts Like Those Disclosed in Speronello
`Were Preferred SCR Catalysts.
`
`Paper 1 at 23-24
`
`11
`
`
`
`The Characteristics of the Claimed SCR Catalysts
`
`Source: ’982 patent, claim 1
`Paper 1 at 37-44
`
`12
`
`
`
`Speronello Teaches Iron and Copper Zeolite Catalysts
`
`Source: JM 1008 at Abstract
`Paper 1 at 20-23
`
`13
`
`
`
`Speronello Teaches Washcoat Loadings Required For
`Zeolite SCR Catalysts
`
`Source: JM 1004 at ¶ 45
`Paper 1 at 39
`
`14
`
`
`
`Speronello Catalysts Were “Well Suited” for Temps
`Above 400°C
`
`Source: Speronello, JM 1008, Fig. 2 & col. 16, lines 28-32
`Paper 23 at 14-15
`
`15
`
`
`
`Zeolites Were Required at Temperatures > 300°C
`
`Source: Heck Treatise, JM 1010, 205-06
`Paper 23 at 11-12
`
`16
`
`
`
`The Speronello Zeolites Were the “Best” SCR Catalysts
`
`Source: JM 1032 at ¶ 14
`Paper 23 at 12
`
`17
`
`
`
`Copper Zeolites Were Known To Simultaneously
`Reduce NOx and Oxidize Soot.
`
`Source: JM 1009 at Abstract
`Paper 1 at 34-37
`
`18
`
`
`
`Claims Recite Known Ability of Zeolites to Oxidize Soot
`
`Source: ’982 patent, claim 1
`Paper 1 at 34-37
`
`19
`
`
`
`Hashimoto’s High Porosity Filters, Which Solved the
`Backpressure Problem, Were “Prime Candidates” for Use
`with the Speronello Catalysts.
`
`Paper 1 at 24-25
`
`20
`
`
`
`The Characteristics of the Claimed Wall-Flow Filter
`
`Source: ’982 patent, col. 2, lines 40-53.
`Paper 1 at 37-44
`
`21
`
`
`
`Characteristics of Hashimoto Wall-Flow Filter
`
`Source: JM 1007 at 10
`Paper 1 at 30-37
`
`22
`
`
`
`“Prime Candidates for the Catalyzed System”
`
`Source: JM 1007 at 13
`Paper 1 at 30-37
`
`23
`
`
`
`Tests Wall-Flow Filter with a 100 g/L (1.64 g/in3)
`Washcoat
`
`Source: JM 1007 at 12; see also Tennent Decl., JM 1003, ¶ 31
`Paper 1 at 30-37
`
`24
`
`
`
`The Hashimoto Filter Accommodated Speronello’s
`Required Washcoat Loadings
`
`Source: JM 1004 at ¶ 45
`Paper 1 at 39
`
`25
`
`
`
`The Hashimoto Filter Was Successful
`
`Source: JM 1007 at 13
`Paper 1 at 32
`
`26
`
`
`
`BASF merely did what the prior art said to do.
`
`BASF does not argue that the combination yielded any
`unexpected results.
`
`Paper 23 at 1-2
`
`27
`
`
`
`No Unexpected Results
`
`“[W]hen a patent ‘simply arranges old elements with each
`performing the same function it had been known to
`perform’ and yields no more than one would expect from
`such an arrangement, the combination is obvious.”
`
`“[A] court must ask whether the improvement is more than
`the predictable use of prior art elements according to their
`established functions.”
`
`KSR Int’l v. Teleflex Inc., 550 U.S. 398, 417 (2007)
`
`Paper 23 at 19
`
`28
`
`
`
`The BASF Patents Use the Speronello Catalysts
`
`Source: ‘982 patent, col. 8, lines 1-12.
`Paper 1 at 29-30
`
`29
`
`
`
`The BASF Patents Use the Hashimoto Filter
`
`See also JM 1018, 13: declaration from BASF
`employee, submitted in related reexamination,
`saying that BASF Patents “used the same
`substrates” as Hashimoto.
`
`Source: ‘982 patent, col. 12, lines 11-19.
`Paper 1 at 33-34
`
`30
`
`
`
`Patent Owner’s Arguments
`
`Patent Owner Argues That There Would Have Been No Motivation to
`Load an SCR Catalyst into a Wall-Flow Filter.
`• This ignores that Hüthwohl built, tested, and
`recommended an SCR-catalyzed wall-flow filter. Hüthwohl
`even recommended putting the SCR-catalyzed filter into
`everyday bus service.
`
`Patent Owner Argues That There Would Not Have Been a Reasonable
`Expectation of Success.
`• This relies on unclaimed and undisclosed characteristics.
`
`Paper 20 at 20-32; Paper 23 at 1-3
`
`31
`
`
`
`Patent Owner’s Arguments Ignore Hüthwohl
`
`Compare BASF’s argument:
`
`With Hüthwohl’s teaching:
`
`Paper 23 at 4-5, 9-10
`
`32
`
`
`
`Hüthwohl Teaches That NOx Reduction Occurs in the
`Wall-Flow Filter
`
`Source: JM 1005 at 3
`Paper 1 at 22-24
`
`33
`
`
`
`Hüthwohl Teaches That PM Reduction Occurs in the
`Wall-Flow Filter
`
`Source: JM 1005 at 8-9
`Paper 1 at 22-24
`
`34
`
`
`
`Teraoka Teaches That SCR Zeolite Catalysts
`Additionally Catalyze the Oxidation of Soot
`
`Source: JM 1009 at Abstract
`Paper 1 at 34-37
`
`35
`
`
`
`Patent Owner’s Argument Relies on Fundamentally
`Flawed Assumptions About the Claimed Catalyst
`
`• The claims do not require the same level of NOx reduction as a
`standalone SCR catalyst. (Cf. BASF Response, § IV.A.2.)
`• The claims do not require that the zeolite catalyze soot
`oxidation as well as Pt. (Cf. BASF Response, § IV.A.1-2.)
`• The claims do not require that the zeolite be resistant to
`poisoning by ash and unburned hydrocarbons. (Cf. BASF
`Response, § IV.A.4.)
`
`Yet Patent Owner’s arguments assume that the claims
`require all of the above.
`
`Paper 23 at 2-3
`
`36
`
`
`
`Patent Owner’s Argument Relies on Fundamentally
`Flawed Assumptions About the Claimed Filter
`
`• The claims do not require that the wall-flow filter exhibit a
`particular thermo-mechanical durability. (Cf. BASF Response,
`§ IV.E.)
`• The claims do not require a particular mode of filter
`regeneration. (Cf. BASF Response, § IV.B.)
`• The claims do not specify necessary performance levels of the
`filter during filter regeneration. (Cf. BASF Response, § IV.B.)
`
`The BASF Patents does not claim or even disclose in the
`specification any of this type of information.
`
`Paper 23 at 2-3
`
`37
`
`
`
`There Would Have Been a Reasonable Expectation of
`Success
`“There is no requirement that one of ordinary skill have a
`reasonable expectation of success in developing [a
`commercially viable product] …. [but] need only have a
`reasonable expectation of success of developing the claimed
`invention.”
`Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286 (Fed. Cir. 2013).
`
`“[A]n unclaimed and undisclosed feature … cannot be the
`basis for finding [a] patent to be non-obvious over the prior art.”
`Smith & Nephew, Inc. v. Rea, 721 F.3d 1371 (Fed. Cir. 2013).
`
`Paper 23 at 1-3
`
`38
`
`
`
`Dr. Crocker’s Testimony Premised on a Commercially
`Viable Product
`
`Source: JM 1029, 46:14 to 47:1.
`Paper 23 at 1-3
`
`39
`
`
`
`Some Claims Require Resistance to Thermal
`Degradation at >650°C
`
`Source: ‘982 patent, claim 5
`Paper 1 at 45
`
`40
`
`
`
`Zeolites Resisted Thermal Degradation at 800°C
`
`Source: JM 1030, Fig. 8 & page 6; see also JM 1029, 124:10-15.
`Paper 23 at 13-14
`
`41
`
`
`
`ZSM-5 Resisted Thermal Degradation at 650°C
`
`Source: JM 1030, Fig. 3
`Paper 23 at 13-14
`
`42
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