Trials@uspto.gov
`571-272-7822
`
`Paper No. 8
`
` Entered: December 4, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JOHNSON MATTHEY INC., and JOHNSON MATTHEY PLC,
`Petitioners,
`
`v.
`
`BASF CORPORATION,
`Patent Owner.
`
`____________
`
`Case IPR2015-01266
`Patent 9,039,982 B2
`____________
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`Paper No. 8
`
` Entered: December 4, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JOHNSON MATTHEY INC., and JOHNSON MATTHEY PLC,
`Petitioners,
`
`v.
`
`BASF CORPORATION,
`Patent Owner.
`
`____________
`
`Case IPR2015-01266
`Patent 9,039,982 B2
`____________
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2015-01266
`Patent 9,039,982 B2
`
`
`I. INTRODUCTION
`Johnson Matthey Inc., and Johnson Matthey Plc (collectively
`“Petitioner”) filed a Petition seeking inter partes review of claims 1–27 of
`U.S. Patent No. 9,039,982 B2 (Ex. 1001, “the ’982 patent”). Paper 1
`(“Pet.”). BASF Corporation (“Patent Owner”) filed a Patent Owner
`Preliminary Response to the Petition. Paper 7 (“Prelim. Resp.”). Applying
`the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of
`a reasonable likelihood that Petitioner would prevail with respect to at least
`one challenged claim, we institute an inter partes review of claims 1–27 as
`discussed below.
`Our findings of fact and conclusions of law are based on the record
`developed thus far, prior to the Patent Owner’s Response. This is not a final
`decision as to the patentability of any challenged claim. Any final decision
`will be based on the full record developed during trial.
`
`
`II. BACKGROUND
`A. Related Proceedings
`Petitioner indicates that the ’982 patent issued from Application No.
`14/497,454, which was a continuation of Application No. 13/274,635 (now
`issued as U.S. Patent No. 8,899,023), which itself was a continuation of
`Application No. 11/676,798 (now issued as U.S. Patent No. 9,032,709),
`itself a divisional of Application No. 10/634,659 (now issued as U.S. Patent
`No. 7,229,597). Pet. 2. Petitioner filed IPR petitions challenging the claims
`of U.S. Patent No. 8,899,023 (IPR2015-01265) and U.S. Patent No.
`9,032,709 (IPR2015-01267). Id.; Paper 6. Petitioner also identifies pending
`inter partes reexamination proceedings pertaining to U.S. Patent
`
`
`
`2
`
`
`
`IPR2015-01266
`Patent 9,039,982 B2
`
`No. 7,229,597 (Reexam No. 95/001,745) and another patent in the same
`family, U.S. Patent No. 7,902,107 (Reexam No. 95/001,744). Pet. 2.
`B. The ’982 Patent
`The ’982 patent, titled “Catalyzed SCR Filter and Emission Treatment
`System,” issued on May 26, 2015. The ’982 patent discloses “a catalyst
`article for simultaneously remediating the nitrogen oxides (NOx), particulate
`matter, and gaseous hydrocarbons present in diesel engine exhaust streams.”
`Ex. 1001, Abstract.
`The ’982 patent teaches that several filter structures effective in
`physically removing particulate matter from diesel exhaust were known in
`the art. Id. at 2:13–29. According to the Specification, these filters are
`capable of removing over 90% of the particulate matter from diesel exhaust.
`Id. One example of a filter suitable for use in the claimed invention is a wall
`flow filter, and is illustrated in Figures 2 and 3 of the ’982 patent,
`reproduced below.
`
`
`
`3
`
`
`
`IPR2015-01266
`Patent 9,039,982 B2
`
`
`
`
`
`
`
`
`Figure 2 shows a “perspective view” of wall flow filter substrate 30,
`and Figure 3 shows a cross sectional view of the substrate shown in Figure
`2, as annotated by Patent Owner with a red line to depict a representative
`passageway for exhaust gas through the substrate. Id. at 5:64–67, 9:10–20;
`see Prelim. Resp. 8. As shown in these figures, substrate 30 has inlet end
`54, outlet end 56, and a plurality of fine, substantially-parallel gas flow
`passages extending along the longitudinal axis of the substrate. Ex. 1001,
`Figs. 2, 3, 8:62–65. Alternate passages are plugged at the inlet end with
`plugs 58, and at the outlet end with plugs 60. Id. at 9:13–16. This forms a
`checkerboard pattern (as depicted in figure 2) at inlet end 54 and outlet end
`56. Id. In this configuration, a gas stream cannot enter and exit the substrate
`
`
`
`4
`
`
`
`IPR2015-01266
`Patent 9,039,982 B2
`
`through the same passage. Id. at 9:16–20. Instead, a gas stream entering
`through an unplugged channel inlet (e.g., 64) is stopped by outlet plug 60 in
`that passage, and must diffuse through a porous channel wall (e.g., 53) in
`order to exit out of channel outlet 66. Id. As the gas passes through the
`porous channel wall, particulate matter in the gas is trapped therein.
`According to the ’982 patent, “[t]ypical wall flow filters in commercial use”
`are formed with wall porosities from about 35% to 50%, and have a “very
`broad” pore size distribution, with a mean pore size typically smaller than 17
`microns. Id. at 9:51–56.
`The ’982 patent teaches that as particulate matter accumulates on the
`filter, the back pressure from the filter on the engine increases. Id. at 2:21–
`24. Therefore, these particles must be continuously or periodically burned
`out of the filter to maintain an acceptable back pressure. Id. at 2:24–26.
`This is referred to as filter regeneration. Id. at 2:38–39. Typically, a
`temperature in excess of 500o C is required to burn the carbon soot particles,
`which is above the temperature normally present in diesel exhaust. Id. at
`2:26–29. Therefore, provisions, such as a catalyst, are generally introduced
`to lower the soot burning temperature to those present under normal diesel
`engine operating conditions. Id. at 2:30–39.
`The ’982 patent also describes Selective Catalytic Reduction (“SCR”),
`a process wherein NOx is reduced, by a reductant such as ammonia, to
`nitrogen in the presence of a catalyst typically composed of base metals, as a
`“proven NOx abatement technology applied to stationary sources,” and
`discloses that SCR is under development for mobile applications. Id. at
`1:19–20, 2:40–50.
`
`
`
`5
`
`
`
`IPR2015-01266
`Patent 9,039,982 B2
`
`
`The ’982 patent explains that a sufficient loading of SCR catalyst
`composition is required to achieve NOx reduction goals on a coated soot
`filter, but cautions that higher catalyst coatings can lead to unacceptable
`back pressure within the exhaust system. Id. at 3:4–6. The Specification
`also teaches that a durable SCR catalyst, e.g., one that maintains catalytic
`activity after exposure to high temperatures and has a wider operating
`temperature range, is desirable. Id. at 3:13–25.
`According to the ’982 patent “[i]ntegration of NOx reduction and
`particulate removal functions into a single catalyst article is accomplished
`using a wall flow substrate coated with an SCR catalyst composition.” Id. at
`6:30–32. The claimed invention requires wall flow substrates to be coated
`with practical levels of SCR catalyst to achieve desired NOx reduction levels
`and effectively remove particulate matter without causing excessive
`backpressure, while also lowering the combustion temperature of the soot
`fraction trapped on the filter. Id. at 6:33–48, 7:36–38. To achieve this,
`the ’982 patent teaches depositing SCR catalysts at a concentration of at
`least 1.3 g/in3, preferably between 1.6 and 2.4 g/in3 (id. at 8:54–61), and
`using a wall flow substrate having a preferred pore size of at least 5 microns
`and porosity of at least 50% (id. at 9:37–40).
`
`
`C. Illustrative Claim
`Petitioner challenges claims 1–27 of the ’982 patent. Independent
`
`claim 1 is illustrative, and is reproduced below:
`1. A catalyst article consisting essentially of a wall flow
`monolith and a catalytic material, wherein the wall flow
`monolith has a plurality of longitudinally extending passages
`formed by longitudinally extending walls bounding and
`
`
`
`6
`
`
`
`IPR2015-01266
`Patent 9,039,982 B2
`
`
`defining said passages, wherein the passages comprise inlet
`passages having an open inlet end and a closed outlet end,
`and outlet passages having a closed inlet end and an open
`outlet end, the wall flow monolith has a porosity of from
`50% to 60% and an average pore size of from 10 to 25
`microns, and the wall flow monolith contains the catalytic
`material;
`wherein the catalytic material comprises an SCR
`catalyst composition including a slurry-loaded
`washcoat of a zeolite and base metal selected from
`copper, the washcoat permeating the walls at a
`loading up to 2.4 g/in3, the wall flow monolith
`having integrated, NOx and particulate removal
`efficiency in which presence of the catalytic
`material in the wall flow monolith catalyzes the
`oxidation of soot.
`Ex. 1001, 15:47–64. Independent claims 16 and 22 are substantially similar
`to claim 1, with claim 16 additionally reciting that “the washcoat
`permeating the walls at a loading up to 1.3 g/in3” (id. at 16:46–64), and
`independent claim 22 requiring only that the catalyst article contains a
`washcoat, without reciting a particular loading amount (id. at 17:13–18:5).
`The dependent claims of the ’982 patent recite further requirements of the
`wall flow filter or the SCR catalyst composition.
`
`
`D. References
`Petitioner relies on the following references:
`Georg Hüthwohl et al., 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, Dresdner
`Motorkolloquium, May 20–21, 1999 at 129 (“Hüthwohl,” Ex. 1006; certified
`translation provided at Ex. 1005).
`S. Hashimoto et al., SiC and Cordierite Diesel Particulate Filters Designed
`for Low Pressure Drop and Catalyzed, Uncatalyzed Systems, Diesel Exhaust
`
`
`
`7
`
`
`
`IPR2015-01266
`Patent 9,039,982 B2
`
`Emission Control 2002: Diesel Particulate Filters (SP-1673), reprinted in
`SAE Technical Paper Series 2002-01-0322 (“Hashimoto,” Ex. 1007).
`Speronello et al., US 5,516,497, issued May 14, 1996 (“Speronello,” Ex.
`1008).
`Yasutake Teraoka et al., Simultaneous Catalytic Removal of Nitrogen Oxides
`and Soot by Copper-Loaded MFI Zeolites, CHEMISTRY LETTERS 2001 at 604
`(“Teraoka,” Ex. 1009).
`
`
`E. The Asserted Grounds
`Petitioner asserts the following grounds of unpatentability:
`
`Statutory Basis Claims Challenged
`§ 103
`1–27
`
`References
`Hüthwohl, Speronello,
`Hashimoto, and Teraoka
`
`Petitioner also relies on declarations from Dr. David L. Tennent,
`Ph.D. (“Tennent Declaration,” Ex. 1003) and Dr. Michael P. Harold, Ph.D.
`(“Harold Declaration,” Ex. 1004).
`III. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
`re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1276–79 (Fed. Cir. 2015).
`We determine that no express claim construction is required for purposes of
`this Decision.
`
`
`
`8
`
`
`
`IPR2015-01266
`Patent 9,039,982 B2
`
`
`B. References
`1. Hüthwohl
`Hüthwohl explains that in 1998, the EU Environment Council agreed
`
`on new limits for nitrogen oxides and particle emissions for heavy
`commercial vehicles, such as city buses. Ex. 1005, 2.1 These new emission
`standards were scheduled to take effect in 2005 and 2008. Id. at 3.
`Hüthwohl describes a system introduced in 1995, referred to as the CRT®
`system, which includes a highly active oxidation catalyst and a series-
`connected particle filter. Id. According to Hüthwohl, the CRT® system was
`capable of achieving low emissions from an engine running on a certain type
`of fuel, but for diesel engines, excellent emission values “can only [be]
`achieved by combining a particle filter with an SCR catalyst. The
`combination of SCR catalyst and particle filter is known as the SCRT®
`system.” Id. at 4.
`In the SCRT® system, the soot filter of the CRT system is
`
`impregnated with SCR-active material. Id. This combination aids in
`reducing the required physical volume of the system, and allows the system
`to be installed in a city bus. Id. Based on data from tests conducted on the
`SCRT® system, Hüthwohl determines that the SCRT® system “reduces the
`emission of carbon monoxide, particles, hydrocarbons and nitrogen oxides.”
`Id. at 9. Hüthwohl ultimately concludes that “[b]y further optimization of
`the system, a significant improvement of the NOx conversion can be
`expected, so that in [the] future it will be possible to comply with” the 2005
`and 2008 European emission standards. Id. at 14.
`
`
`1 Citations to page numbers for this exhibit refer to those appearing at the
`bottom, in the center of each page of the exhibit.
`
`
`
`9
`
`
`
`IPR2015-01266
`Patent 9,039,982 B2
`
`
`
`2. Speronello
`Speronello discloses, inter alia, a “catalyst composition effective for
`reducing nitrogen oxides with ammonia in a gaseous stream.” Ex. 1008,
`3:44–47. Included in this composition are zeolites that may contain iron
`and/or copper. Id. at 3:49–58. Speronello states that the zeolite catalysts
`described therein demonstrate sufficient thermal and hydrothermal stability,
`providing “an acceptably long life and efficiency of the catalysts” even after
`exposure to gaseous streams at temperatures up to about 600o C. Id. at 6:17–
`25. Speronello also describes zeolite catalysts that demonstrate resistance to
`sulfur poisoning and NOx reduction/conversion efficiencies around 90%.
`Id. at 6:34–7:3.
`Speronello teaches that “[a]ny suitable physical form of the catalyst
`may be utilized, such as a monolithic honeycomb-type body containing a
`plurality of fine, parallel gas flow passages extending therethrough, the walls
`of which are coated with the zeolite catalytic material.” Id. at 7:10–15.
`Speronello further states that:
`[t]he physical configuration of the catalyst used in a given case
`will depend on a number of factors such as the space available
`for the catalytic reactor . . . and the permitted or desired amount
`of pressure drop across the catalyst bed. When catalysts are
`used to treat engine exhausts . . . it is usually desired to
`minimize pressure drop in order to enhance the efficiency of the
`engine. In such cases, the preferred physical configuration of
`the catalyst is one which provides parallel flow passageways for
`the gas, such as those found in the above-described honey-
`comb-type catalysts.
`Id. at 7:30–41.
`In the Examples, Speronello describes coating a honeycomb ceramic
`support with a washcoat of synthetic zeolite by immersing the support in a
`
`
`
`10
`
`
`
`IPR2015-01266
`Patent 9,039,982 B2
`
`zeolite-containing slurry, resulting in loading amounts ranging from 1.5 g/in3
`to 2.0 g/in3. Id. at 8:18–12:48.
`
`3. Hashimoto
`Hashimoto relates to diesel particulate filters, noting that “[t]ighter
`PM emission regulations will be introduced in Europe, United States and
`Japan on passenger cars and trucks over the next 7 years. DPF (diesel
`particulate filter) has been the primary technology considered in meeting
`these tight PM emission limits.” Ex. 1007, 1.2 Hashimoto discloses that the
`addition of a DPF exhaust system increases back engine pressure, and the
`limited amount of space available for DPFs in automobiles makes it difficult
`to provide a sufficient filtration area. Id. Thus, according to Hashimoto,
`“optimizing pressure-drop and trapping efficiency simultaneously is a
`notable challenge for DPF systems.” Id. Hashimoto states that “[a]
`catalyzed DPF system has been proposed as a future PM emission control
`technology.” Id.
`Hashimoto studies the factors that influence pressure drop and
`filtration efficiency of a DPF, and seeks to develop a design and select
`materials for use in DPFs that will minimize pressure drop while
`maintaining its ability to trap particulate matter. See generally id.
`Based on tests conducted on uncatalyzed DPFs, Hashimoto states that
`“it was concluded that a material with high porosity and with high pore sizes
`is desirable to have low pressure drop performance.” Id. at 7. Specifically,
`Hashimoto concludes that the optimum pore size is between 10µm and
`
`
`2 Consistent with the practice of the Petitioner regarding this reference, page
`numbers for this exhibit refer to those appearing at the top, in the center of
`each page.
`
`
`
`11
`
`
`
`IPR2015-01266
`Patent 9,039,982 B2
`
`70µm. Id. Hashimoto discloses DPF filters having porosity values from
`53% to 65%, and mean pore sizes ranging from 15µm to 35µm. Id. at 10,
`Table 3 (reporting values for DHC-558 and DHC-611).
`
`With regard to catalyzed DPF systems, Hashimoto teaches that
`applying the catalyst washcoat inside the pores reduces the porosity of the
`DPF material and changes the post-coated pore size distribution. Id. at 12.
`Hashimoto measured the pressure-drop across two coated DPFs, DHC-558
`and DHC-611, with a washcoat loading of 100 g/L on each filter.
`Hashimoto compared the performance of the coated filters with the
`performance of the uncoated filters, and noted that the coated filters showed
`an increased pressure drop of 170% and 100%, respectively, over uncoated
`filters. Id. at 13. Because the filter with higher porosity (DHC-611) showed
`a smaller increase in pressure-drop, Hashimoto states that these test results
`“indicate[] that high porosity DPF material has an advantage for a catalyzed
`DPF system,” that “porosity and mean pore size of the DPF materials are
`critical for the catalyzed DPF system,” and that “high porosity material can
`be coated with significantly higher wash coat loading without adversely
`effecting pressure-drop.” Id. Ultimately, Hashimoto states that “SiC and
`Cordierite DPF designed for low pressure-drop are prime candidates for the
`catalyzed system.” Id.
`
`4. Teraoka
`Teraoka teaches that “Cu-loaded MFI zeolites showed the catalytic
`activity for the oxidation of soot and reduction of NOx simultaneously in the
`soot-NOx-O2 reaction system.” Ex. 1009, 604. Similar to the other
`references discussed herein, Teraoka begins by explaining that nitrogen
`oxides and soot particulates emitted from diesel exhaust contribute greatly to
`
`
`
`12
`
`
`
`IPR2015-01266
`Patent 9,039,982 B2
`
`environmental pollution, and notes the tightening regulation of diesel
`emissions with regard to NOx and particulate matters. Id. Teraoka
`describes studies regarding the simultaneous NOx–soot removal reaction,
`and reports on the “catalytic property of Cu-loaded MFI for the simultaneous
`NOx–soot removal reaction.” Id.
`Teraoka states that the catalytic activity for the simultaneous NOx–
`soot removal was evaluated by packing a mixture of catalyst and activated
`carbon in a reactor, heating the reactor while flowing NO-O2-He gas through
`it, and analyzing the outlet gas. Id. According to Teraoka, the soot that was
`pre-mixed with the catalyst was oxidized by either NOx or O2 to produce
`CO2, and the NOx was reduced by the soot into N2 and N2O. Id. Based on
`this study, Teraoka states that “Cu introduced in MFI zeolites effectively
`works as a catalyst for the simultaneous NOx–soot removal reaction.” Id.
`Teraoka concludes that a Cu MFI zeolite “is a promising NOx–soot
`removal catalyst showing medium soot ignition activity and high selectivity
`to N2 formation.” Id. at 605.
`C. Analysis of Grounds of Unpatentability
`1. Petitioner’s Arguments
`Petitioner argues that the subject matter of claims 1–27 would have
`been obvious over Hüthwohl3 in view of Hashimoto and Speronello, and
`further in view of Teraoka.
`Specifically, Petitioner argues that Hüthwohl discloses the
`combination of a particle filter with an SCR catalyst to attain improved
`
`
`3 Petitioner contends that Hüthwohl was not relied upon during prosecution
`of the application leading to the ’982 patent or the related reexaminations.
`Pet. 17.
`
`
`
`13
`
`
`
`IPR2015-01266
`Patent 9,039,982 B2
`
`emission values, but acknowledges that the reference is silent with regard to
`the details of the SCR catalyst and the filter. See Pet. 19, 23–24, 37, 41
`(claim chart). As to the details of the filter, Petitioner asserts that Hashimoto
`discloses a wall flow monolith having a plurality of longitudinally extending
`passages where some passages are blocked at the upstream end and
`unblocked at the downstream end, and other passages are unblocked at the
`upstream end and blocked at the downstream end. Id. at 41. Petitioner
`further asserts that Hashimoto discloses filters with porosity and mean pore
`size values (e.g., DHC-611 filter with 59% porosity and 25 µm pore size)
`that fall within the ranges required in the challenged claims. Id. at 42 (citing
`Ex. 1007, 13).
`With regard to the details of the SCR catalyst, Petitioner asserts that
`Speronello discloses a catalyst formed by dipping a substrate into an iron
`and/or copper-promoted zeolite slurry. Id. (citing Ex. 1008, 7:23–25).
`Petitioner further asserts that Speronello discloses the slurry permeating the
`walls at loadings ranging from 1.5 to 2.0 g/in3, which falls within the
`claimed ranges. Id. at 43 (citing Ex. 1008, 8:57–60, 9:26–29, 9:60–64,
`10:26–30, 10:64–67, 11:39–42, 12:45–48).
`Petitioner also asserts that Teraoka’s disclosure of Cu-loaded MFI
`zeolites having “catalytic activity for the oxidation of soot and reduction of
`NOx simultaneously” corresponds to the requirement that the claimed wall
`flow monolith has “integrated, NOx and particulate removal efficiency in
`which the presence of the catalytic material in the wall flow monolith
`catalyzes the oxidation of soot.” Id. at 44 (citing Ex. 1009, Abstract);
`Ex. 1001, 15:61–64.
`
`
`
`14
`
`
`
`IPR2015-01266
`Patent 9,039,982 B2
`
`
`According to Petitioner, “[t]he claims of the ’982 patent thus do no
`more than simply take the Hashimoto filter and load it with the Speronello
`catalysts, and then place the resulting structure in Hüthwohl’s design.” Pet.
`34. Petitioner contends that a person of ordinary skill would have been
`motivated to “combine Speronello’s SCR catalysts (which possess
`characteristics particularly well suited for use on a wall flow filter) with
`Hashimoto’s wall flow filter (which in 2002 taught how to accommodate a
`thick catalyst washcoat without getting clogged and causing high back
`pressure) for use in Huthwohl’s [sic] system.” Id. at 26. Petitioner contends
`that Speronello’s catalysts were “the logical choice for use in diesel
`particulate filters as taught by Huthwohl [sic]” because “(1) they were
`known to be stable at high temperatures, (2) they were known to be resistant
`to degradation by sulfur, and (3) they were known to efficiently catalyze the
`reduction of NOx over a wide range of temperatures.” Id. at 20, 26.
`Petitioner’s declarant, Dr. Harold, states that “these three catalyst
`characteristics were crucial when developing a diesel exhaust treatment
`system.” Ex. 1004 ¶ 38. In addition, Petitioner notes that the ’982 patent
`“itself incorporates Speronello by reference ‘in [its] entirety’ and says that it
`‘describe[s]’ ‘[s]uitable SCR catalyst compositions.’ See ’982 patent, col. 8,
`lines 1-4 (Speronello is U.S. Patent No. 5,516,497).” Pet. 29.
`Petitioner likewise asserts that Hashimoto discloses high porosity
`filters that were “‘prime candidates’” for use as catalyzed diesel particulate
`filters, and that a person of ordinary skill in the art would have understood
`that “Hashimoto teaches a filter structure that can be loaded with 100 g/L of
`some catalyst and still yield acceptable backpressure.” Id. at 32–33 (citing
`Ex. 1003 ¶¶ 35–38, 40). Specifically, Petitioner argues:
`
`
`
`15
`
`
`
`IPR2015-01266
`Patent 9,039,982 B2
`
`
`Hashimoto’s advance is the amount of catalyst, rather than the
`type of catalyst, loaded into the filter while still achieving
`acceptable backpressure. . . . When trying to accommodate a
`thick catalyst washcoat, therefore, a person skilled in the art
`would have looked to Hashimoto’s teachings that a high-
`porosity filter would maintain acceptable backpressure, despite
`being loaded with 100 g/L of catalyst.
`
`Id..
`
`Furthermore, Petitioner contends that it was known in the art that
`copper oxidizes NO to NO2, and that NO2 was known to oxidize dry carbon
`soot. Id. at 34. According to Petitioner, “[i]t was thus hardly surprising
`when, in 2001, Teraoka expressly taught that a copper zeolite composition
`catalyzes the oxidation of soot.” Id. at 35. In view of this, Petitioner asserts
`that a person of ordinary skill “would have reasonably expected that a
`copper zeolite loaded into a wall flow filter would serve two needed
`functions simultaneously: the reduction of NOx emissions and the reduction
`of particulate matter emissions.” Id. at 35–36 (citing Ex. 1004 ¶¶60–61).
`
`
`2. Patent Owner’s Arguments
`Patent Owner argues that Petitioner improperly relies upon a hindsight
`reconstruction of the claimed subject matter based on the disclosure in
`the ’982 patent and has done nothing more than show individual elements
`were known in the art, which is not sufficient to support a finding of
`obviousness. Prelim. Resp. 5.
`Addressing the references individually, Patent Owner contends that
`Hüthwohl “omits nearly every essential detail of the claimed invention,”
`including the type and amount of SCR catalyst and the structural details of
`the particle filter. Id. at 16. Patent Owner further contends that Hüthwohl
`
`
`
`16
`
`
`
`IPR2015-01266
`Patent 9,039,982 B2
`
`describes a filter that is “impregnated” with a catalyst, which is different
`from the slurry-loaded washcoat technique recited in the ’982 patent. Id. at
`16, 34. According to Patent Owner, “[t]he skilled artisan would have
`recognized that each method has its own constraints and results in marked
`structural differences.” Id. at 34. Patent Owner also contends that a person
`of ordinary skill in the art would likely have had to “re-engineer Hüthwohl
`to operate according to different principles” to achieve the claimed
`invention. Id. at 27.
`Patent Owner asserts that Hashimoto focuses on pressure imbalance in
`diesel filters, and “[t]o the extent Hashimoto says anything about catalysts, it
`teaches away from the claimed SCR catalyst by suggesting NOx adsorption
`catalysts.” Id. at 5. According to Patent Owner, Hashimoto only refers to
`types of catalysts that do not operate in the same manner as an SCR catalyst,
`and may interfere with the SCR reaction. Id. at 37–39 (referring to soot
`oxidation catalysts and NOx adsorption catalysts). Patent Owner also argues
`that Hashimoto’s catalyzed DPFs demonstrated an increase in backpressure.
`Id. at 36. According to Patent Owner, the ultimate conclusion in Hashimoto
`regarding catalyzed DPFs is that further studies are required. Id. at 17–18
`(citing Ex. 1007 at 13).
`
`With regard to Speronello, Patent Owner argues that although
`Speronello discloses applying metal promoted SCR zeolite catalysts to a
`substrate, Speronello only discloses coating a honeycomb type flow-through
`substrate, which is not a filter that traps particulate matter. Id. at 5, 18.
`Patent Owner argues that a person of ordinary skill in the art would not load
`a flow through substrate in the same way as a wall flow substrate. Id. at 41
`(citing Ex. 2012, 184 ¶ 26). Patent Owner further contends that Speronello
`
`
`
`17
`
`
`
`IPR2015-01266
`Patent 9,039,982 B2
`
`does not address or consider the problems of increasing back pressure in
`wall flow filters coated with an SCR catalyst. Id. at 40.
`Patent Owner also argues that the Patent Office has already
`considered Petitioner’s arguments regarding the combination of Hashimoto
`and Speronello in detail, and has rejected them repeatedly. Id. at 4. Thus,
`Patent Owner requests that we exercise our discretion and deny the Petition
`under 35 U.S.C. § 325(d). Id. at 14, 20.
`Regarding Teraoka, Patent Owner asserts that Teraoka provides no
`information regarding the application of catalysts to automotive filters, and,
`therefore, “there would have been no basis for the skilled artisan to pluck an
`isolated teaching from Teraoka regarding catalysts and then combine that
`teaching with Hüthwohl, Hashimoto, and Speronello.” Id. at 45, 47.
`
`Patent Owner also asserts that “the Petition fails to establish the
`requisite reason to combine the cited references because it ignores the
`conventional wisdom of the time and the integral properties of the ’982
`Patent’s claimed catalyst article.” Id. at 25. According to Patent Owner,
`[p]rior to the ’982 patent, the conventional wisdom was that
`“larger pore size, higher porosity wall flow filters should be
`avoided” even though more porous filters would create fewer
`problems with regard to back pressure. But, a highly porous
`structure, those in the art believed, impaired soot filtering
`capability and increased the likelihood of cracking by lowering
`the thermal mass.
`Id. at 28 (quoting Ex. 2012, 227 ¶¶ 11–13) (internal citations omitted).
`Additionally, Patent Owner contends that “Petitioner does not
`articulate any reason why one of ordinary skill in the art would have
`abandoned the teaching of Hüthwohl regarding the impregnation of the
`SCR-active material on the filter and instead pursued a washcoating
`
`
`
`18
`
`
`
`IPR2015-01266
`Patent 9,039,982 B2
`
`technique.” Id. at 34. Nor does Petitioner address, according to Patent
`Owner, how substituting Speronello’s SCR catalyst would affect the
`function and operation of Hashimoto’s filters. Id. at 43. Additionally,
`Patent Owner asserts that “[g]iven Hashimoto’s invitation for continued
`experimentation,” a person of ordinary skill in the art would not have been
`motivated to coat Hashimoto’s wall flow filter with Speronello’s catalyst
`because “there was no teaching that the catalysts described by Speronello
`could successfully be applied to the filters described by Hashimoto, much
`less work for the intended purpose.” Id. at 42.
`Patent Owner also contends that the claimed invention of the ’982
`patent was the subject of skepticism, addressed a long-felt, unresolved need,
`demonstrated unexpected results, and received praise. Id. at 47–56.
`3. Analysis
`Upon review, we determine that the record before us establishes a
`reasonable likelihood that Petitioner would prevail on its assertion that the
`subject matter of claims 1–27 would have been obvious in view of
`Hüthwohl, Hashimoto, Speronello, and Teraoka. Petitioner’s explanation of
`how each claim limitation is taught or suggested by the combination of prior
`art references is reasonable. See, e.g., Pet. 37–48. Additionally, Petitioner’s
`explanation that (1) there was motivation within the automotive industry to
`load an SCR catalyst onto a filter used in diesel exhaust systems, as
`discussed in Hüthwohl, (2) copper zeolite SCR catalysts with beneficial
`properties were known in the art (Speronello), (3) wall flow filters were
`identified as “prime candidates” for use in catalyzed filter systems
`(Hashimoto), and (4) it was reported, prior to the filing date of the ’982
`patent, that copper zeolites could simultaneously reduce NOx emissions and
`
`
`
`19
`
`
`
`IPR2015-01266
`Patent 9,039,982 B2
`
`catalyze the oxidization of soot, supports, on this record, Petitioner’s
`assertion that a person of ordinary skill in the art would have had reason to
`combine the teachings of the prior art references to arrive at the claimed
`subject matter, and would have done so with a reasonable expectation of
`success. Patent Owner’s arguments to the contrary are not persuasive on this
`record.
`For example, we are not persuaded by Patent Owner’s argument that
`“the Petition fails to establish the requisite reason to combine the cited
`references because it ignores the conventional wisdom of the time and the
`integral properties of the ’982 Patent’s claimed catalyst article.” Prelim.
`Resp. 25. Nor are we persuaded by Patent Owner’s arguments regarding
`“invitations for continued experimentation” in the references. Id. at 29, 39,
`42. These statements and arguments appear to be undermined by
`Hashimoto’s disclosure of wall-flow filters having pore sizes and porosity
`values corresponding to the ranges recited in the claims, and its statement
`that these filters are “prime candidates” for catalyzed systems. Ex. 1007, 10,
`13. Hashimoto also states that “high porosity material can be coated with
`significantly higher wash coat loading without adversely effecting pressure-
`drop.” Id. at 13. And although Patent Owner contends that Spero
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
