UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`UMICORE AG & CO. KG,
`
`Petitioner
`
`Patent No. 9,039,982
`Issue Date: May 26, 2015
`Title: CATALYZED SCR FILTER AND EMISSION TREATMENT SYSTEM
`_________________________________________________________________
`
`DECLARATION OF MAGDI KHAIR
`
`Case No. IPR2016-00613
`__________________________________________________________________
`
`-1-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#4#sj#9=
`
`

`
`Table of Contents
`
`I.
`II.
`III.
`IV.
`
`V.
`
`D.
`
`BACKGROUND AND QUALIFICATIONS................................................5
`ASSIGNMENT AND MATERIALS REVIEWED.......................................9
`SUMMARY OF THE ’982 PATENT..........................................................11
`THE CLAIMS OF THE ’982 PATENT.......................................................14
`A.
`Overview ............................................................................................14
`B.
`Claim Construction: ...........................................................................16
`THE ’982 PATENT’S PROSECUTION HISTORY ...................................18
`A.
`Original Prosecution...........................................................................18
`Previous Inter Partes Review ............................................................18
`B.
`VI. UNPATENTABILITY ANALYSIS ............................................................19
`A.
`Person of Ordinary Skill in the Art ....................................................21
`B.
`Scope, Content, and Disclosures of the Prior Art ..............................22
`1.
`Muraki......................................................................................23
`2.
`Taoka........................................................................................25
`3.
`Joy ............................................................................................27
`4.
`Speronello ................................................................................28
`C. Muraki and Taoka Render Claims 22, 23, and 27 Obvious...............29
`1.
`The limitations of claim 22 are all disclosed by the prior
`art..............................................................................................30
`The limitations of claims 23 are all disclosed by the prior
`art..............................................................................................33
`The limitations of claim 27 are all disclosed by the prior
`art..............................................................................................34
`It would have been obvious to combine the teachings of
`Muraki and Taoka....................................................................35
`Claims 24, 25, and 26 obvious over Muraki and Taoka in
`further view of Sperenollo..................................................................37
`
`2.
`
`3.
`
`4.
`
`-2-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#5#sj#9=
`
`

`
`1.
`
`2.
`
`3.
`
`4.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Muraki, Taoka, and Speronello disclose and render
`obvious all the limitations of claim 24.....................................37
`Muraki, Taoka, and Speronello disclose and render
`obvious all the limitations of claim 25.....................................38
`Muraki, Taoka, and Speronello disclose and render
`obvious all the limitations of claim 26.....................................39
`It would have been obvious to combine the teachings of
`Muraki, Taoka, and Speronello................................................40
`E. Muraki, Taoka, and Joy Render Claims 1-5 and 14-17, 19
`Obvious...............................................................................................43
`1.
`Muraki, Taoka, and Joy disclose and render obvious all
`the limitations of claims 1, 2, 3, 16, and 17.............................44
`Muraki, Taoka, and Joy disclose and render obvious all
`the limitations of claim 4, 5, and 19 ........................................49
`Muraki, Taoka, and Joy disclose and render obvious all
`the limitations of claim 14 .......................................................51
`Muraki, Taoka, and Joy disclose and render obvious all
`the limitations of claim 15 .......................................................52
`It would have been obvious to combine the teachings of
`Muraki, Taoka, and Joy ...........................................................53
`F. Muraki, Taoka, Joy, and Speronello Render Claims 6, 7, 8-13,
`18, 20, and 21 Obvious.......................................................................55
`1.
`Muraki, Taoka, Joy, and Speronello disclose and render
`obvious all the limitations of claims 6 and 20 .........................55
`Muraki, Taoka, Joy, and Speronello disclose and render
`obvious all the limitations of claims 7 and 21 .........................55
`Muraki, Taoka, Joy, and Speronello disclose and render
`obvious all the limitations of claims 8, 9, 10, and 11 ..............56
`Muraki, Taoka, and Joy disclose and render obvious all
`the limitations of claims 12, 13, and 18...................................58
`It would have been obvious to combine the teachings of
`Muraki, Taoka, Joy, and Speronello........................................59
`
`2.
`
`3.
`
`4.
`
`5.
`
`-3-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#6#sj#9=
`
`

`
`VII. PURPORTED SECONDARY CONSIDERATIONS..................................62
`
`-4-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#7#sj#9=
`
`

`
`I, Magdi Khair, declare as follows:
`
`I.
`
`BACKGROUND AND QUALIFICATIONS
`
`1.
`
`I currently work as a technical consultant providing engineering and
`
`educational services in connection with diesel automotive technology. I have been
`
`engaged in this work since 2011.
`
`2.
`
`I obtained a Bachelor of Science in Automotive Engineering in 1967
`
`from Ain Shams University in Cairo, Egypt. The emphasis of my undergraduate
`
`studies was internal combustion engine design and technology.
`
`3.
`
`After obtaining my undergraduate degree, I obtained a Masters in
`
`Thermodynamics in 1970 from the University of Birmingham, Birmingham, UK.
`
`4.
`
`I also obtained a MBA in 1982 from Michigan State University, in
`
`Troy, Michigan. My thesis focused on the marketing of novel diesel injection
`
`systems.
`
`5.
`
`Further, I obtained a Ph.D in Engineering Management in 2007 from
`
`Warren National University in Cheyenne, WI.
`
`6.
`
`I was most recently employed as a researcher at the Southwest
`
`Research Institute (SwRI), San Antonio, TX. I started at SwRI in June 1991 and
`
`continued until September 2011.
`
`7.
`
`At SwRI, I engaged in engine testing and exhaust emission
`
`measurement and control. I also studied the catalytic after treatment of diesel
`
`-5-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#8#sj#9=
`
`

`
`exhaust including diesel oxidation catalysts, diesel particulate filters, selective
`
`catalytic reduction, lean NOx traps, and complete after treatment systems and
`
`conducted extensive research in fuel-borne catalysis and its impact on diesel
`
`particulate filter regeneration.
`
`8.
`
`Further, and also while at SwRI, I led a consortium of 14 companies
`
`in the study of the potential poisoning effects of lube oil formulations on diesel
`
`oxidation catalysts (DOC). I also led a consortium of 4 companies in the study of
`
`the regulated and unregulated emissions from a 2010-like lean NOx trap controlled
`
`system, managed several major emissions control projects involving trade agencies
`
`such as the Manufacturers of Emissions Control Association (MECA), and
`
`government agencies such as EPA and DOE, managed a consortium of 9
`
`companies to develop a diesel after treatment accelerated aging methodology
`
`mimicking field-aging. Additionally, I managed a highly visible, pre-Olympic
`
`pilot demonstration of retrofit technologies in Beijing, China co-sponsored by the
`
`US EPA and SwRI. This project was followed by a similar retrofit demonstration
`
`in Pune, India from 2009 to 2011. I also acted as a technical advisor to the VP of
`
`Engine, Emissions, and Vehicle Research Division, participated in the Advanced
`
`Committee on Research, and participated in the Patent Committee meetings and
`
`acted as a technical ambassador for Southwest Research Institute to further its
`
`interest around the world. This involved lecturing on technical matters involving
`
`-6-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#9#sj#9=
`
`

`
`engine and after treatment related technologies.
`
`9.
`
`From 1990 to 1991, I was employed by Allied Signal Automotive
`
`Catalyst Company, in Tulsa, Oklahoma. While working at Allied Signal, I assisted
`
`chemical engineers in understanding diesel exhaust emissions species and
`
`constituents to help them design a diesel oxidation catalyst, represented Allied
`
`Signal both in Europe and within the USA, and acted as liaison between Allied
`
`Signal and its test program at SwRI.
`
`10.
`
`From 1984 to 1990, I was employed by Ford Tractor Operations/Ford
`
`New Holland in Birmingham, Michigan. At Ford Tractor, I developed 6.6 and 7.8
`
`L midrange diesel engines to meet 1991 emissions standards. As part of this work,
`
`I engaged in extensive engine testing and development of its sub-systems (fuel
`
`injection, intake manifold, etc.), optimized the engines’ intake port design, and
`
`developed the engines’ electronic injection controls by working alongside the
`
`supplier. I also managed the self-audit program and coordinated activities between
`
`the plant in Brazil and the test lab in Dearborn, MI.
`
`11.
`
`From 1978 to 1983, I was employed by the Bendix Diesel Engine
`
`Controls Corporation, in Troy, Michigan. While at Bendix, I progressed from a
`
`manager to the Director of Engineering Programs. In this role I was responsible
`
`for developing novel diesel injection systems for diesel OEMs. I also led a team of
`
`engineers and technical staff in developing advanced electronically controlled
`
`-7-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#;#sj#9=
`
`

`
`injection systems and marketed them to several engine manufacturers in Europe
`
`and the USA. And, I established several cooperative development programs with
`
`engine manufacturers to develop injection systems for their specific needs.
`
`12.
`
`From 1972 to 1978, I was employed by the Chrysler Corporation, in
`
`Highland Park, Michigan. There I participated in the development of a gas turbine
`
`engine for passenger car applications, converted a slant six 225 CID gasoline to a
`
`diesel engine and developed a novel, piezo-electric controlled fuel injection system
`
`providing multiple injections for each combustion cycle. I also supervised the
`
`Combustion Kinetics lab where I performed flow visualization through intake and
`
`exhaust valves and eventually developed and optimized intake and exhaust ports
`
`for the Chrysler converted Diesel engine.
`
`13.
`
`I have also authored numerous papers relating to diesel particulate
`
`filters (including catalyst coated filters), systems for reducing nitrogen oxides in
`
`diesel engine exhausts, and other aspects of exhaust gas treatment systems. A full
`
`list of my publications is attached.
`
`14.
`
`I have co-authored a textbook titled “Diesel Emissions and Their
`
`Control.” The book is published by SAE International.
`
`15.
`
`In addition to these publications, I am a named inventor on several US
`
`and foreign patents in these same fields.
`
`16. Additional details regarding my background and experience are set
`
`-8-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#<#sj#9=
`
`

`
`forth on my CV, a copy of which accompanies this declaration.
`
`II.
`
`ASSIGNMENT AND MATERIALS REVIEWED
`
`17.
`
`I submit this declaration in support of Umicore AG & Co. KG’s
`
`(“Umicore’s”) Petition for Inter Partes Review of U.S. Patent No. 9,039,982 (“the
`
`’982 patent”), Case IPR2016-00613.
`
`18.
`
`I am not an employee of Umicore or any affiliate or subsidiary
`
`thereof.
`
`19.
`
`I am being compensated for my time at a rate of $250 per hour, with
`
`an additional $500 per day spent traveling. My compensation is in no way
`
`dependent upon the substance of the opinions I offer below, or upon the outcome
`
`of Umicore’s petition for inter partes review (or the outcome of such an inter
`
`partes review, if a trial is initiated).
`
`20.
`
`I have been asked to provide certain opinions relating to the
`
`patentability of the claims of the ’982 patent. Specifically, I have been asked to
`
`provide my opinion regarding (i) the level of ordinary skill in the art to which the
`
`’982 patent pertains and (ii) the patentability of claims 1-27.
`
`21.
`
`The opinions expressed in this declaration are not exhaustive of my
`
`opinions on the patentability of claims 1-27. Therefore, the fact that I do not
`
`address a particular point should not be understood to indicate any agreement on
`
`my part that any claim otherwise complies with the patentability requirements.
`
`-9-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#=#sj#9=
`
`

`
`22.
`
`In forming my opinions, I have reviewed (i) the ’982 patent and its
`
`prosecution history; (ii) the petition, exhibits, preliminary response, and Patent
`
`Trial and Appeal Board’s institution decision in IPR2015-01266, and (iii) prior art
`
`to the ’982 patent, including:
`
`"
`
`"
`
`"
`
`"
`
`"
`
`"
`
`"
`
`JP H1-151706 to Muraki et al. (published 6/14/1989, § 102(b)
`
`prior art) (“Muraki”). Muraki published in Japanese. I
`
`reviewed a certified translation.
`
`Koebel et al., “Recent Advances in the Development of Urea-
`
`SCR for Automotive Applications,” SAE Paper No. 2001-01-
`
`3625 (9/2001) (“Koebel”)
`
`JP 2002-159859 to Taoka et al. (“Taoka”). Taoka published in
`
`Japanese. I reviewed a certified translation.
`
`US 4,849,399 to Joy (“Joy”)
`
`U.S. Patent No.5,516,497 to Speronello et al. (“Speronello”)
`
`US 2002/0039550 to Schafer-Sindlinger et al. (“Schafer-
`
`Sindlinger”)
`
`U.S. 4,961,917 to Byrne (“Byrne”)
`
`23.
`
`I have also reviewed all of the following additional materials in
`
`connection with the preparation of this declaration:
`
`"
`
`U.S. Patent No. 8,899,023 and its prosecution history;
`
`-10-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#43#sj#9=
`
`

`
`"
`
`"
`
`"
`
`U.S. Patent No. 9,032,709 and its prosecution history;
`
`The petition, exhibits, preliminary response, and institution
`
`decision from IPR2015-01265; and
`
`The petition, exhibits preliminary response, and institution
`
`decision from IPR2015-01267.
`
`III.
`
`SUMMARY OF THE ’982 PATENT
`
`24.
`
`The ’982 patent issued May 26, 2015 and is entitled “Catalyzed SCR
`
`Filter and Emission Treatment System.”
`
`25.
`
`The ’982 patent was filed on September 26, 2014 as U.S. Application
`
`14/497,454 (“The ’454 application”).
`
`26. A chain of other applications is referenced on the face of the ’982
`
`patent. The earliest of these is U.S. Application 10/634,659, which was filed
`
`August 5, 2003. For purposes of this declaration, it is assumed that the ’982 patent
`
`is entitled to this August 2003 filing date.
`
`27.
`
`The ’982 patent explains that the “present invention relates to an
`
`emission treatment system having an oxidation catalyst upstream of a soot filter
`
`coated with a material effective in the Selective Catalytic Reduction (SCR) of NOx
`
`by a reductant, e.g., ammonia.” Col. 1, ll. 18-21. According to the patent, “the
`
`system provides an effective method of simultaneously remediating the nitrogen
`
`oxides (NOx), particulate matter, and gaseous hydrocarbons present in diesel
`
`-11-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#44#sj#9=
`
`

`
`engine exhaust streams.” Col. 1, ll. 22-25.
`
`28.
`
`The ’982 patent lists various concepts that are known in the prior art.
`
`"
`
`Oxidation catalysts: “Oxidation catalysts that contain platinum
`
`group metals, base metals and combinations thereof are known
`
`to facilitate the treatment of diesel engine exhaust by promoting
`
`the conversion of both HC and CO gaseous pollutants and some
`
`proportion of the particulate matter through oxidation of these
`
`pollutants to carbon dioxide and water. Such catalysts have
`
`generally been contained in units called diesel oxidation
`
`catalysts (DOC’s), which are placed in the exhaust of diesel
`
`engines to treat the exhaust before it vents to the atmosphere.”
`
`These known diesel oxidation catalysts also “promote the
`
`oxidation of nitric oxide (NO) to NO2.” Col. 1, ll. 38-51.
`
`"
`
`Particulate filters: “One key aftertreatment technology in use
`
`for high particulate matter reduction is the diesel particulate
`
`filter.” The patent goes on to explain that “ceramic wall flow
`
`filters … receive the most attention” in the prior art and “are
`
`capable of removing over 90% of the particulate material from
`
`diesel exhaust.” Col. 2, ll. 13-21. The patent states that
`
`“[t]ypical wall flow filters in commercial use are typically
`
`-12-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#45#sj#9=
`
`

`
`formed with lower wall porosities, e.g., from about 35% to
`
`50%....” Col. 9, ll. 51-53.
`
`"
`
`SCR: And, “[a] proven NOx abatement technology applied to
`
`stationary sources with lean exhaust conditions is Selective
`
`Catalytic Reduction (SCR). In this process, NOx is reduced
`
`with ammonia (NH3) to nitrogen (N2) over a catalyst typically
`
`composed of base metals. The technology is capable of NOx
`
`reduction greater than 90%, and thus it represents one of the
`
`best approaches for achieving aggressive NOx reduction goals.”
`
`Col. 2, ll. 41-49.
`
`29.
`
`Fig. 1A provides an overview of the ’982 patent’s “emission treatment
`
`system.”
`
`30. According to the ’982 patent, “exhaust containing gaseous pollutants
`
`(including unburned hydrocarbons, carbon monoxide and NOx) and particulate
`
`matter is conveyed from the engine 15 to an oxidation catalyst 11.” Col. 6, ll. 61-
`
`-13-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#46#sj#9=
`
`

`
`64.
`
`31.
`
`“In the oxidation catalyst 11, … a substantial proportion of the NO of
`
`the NOx component is oxidized to NO2 in the oxidation catalyst.” Col. 6, l. 64 –
`
`col. 7, l. 5.
`
`32. Next, “ammonia … is injected as a spray via a nozzle (not shown) into
`
`the exhaust stream. Aqueous urea shown on one line 18 can serve as the ammonia
`
`precursor which can be mixed with air on another line 19 in a mixing station 16.
`
`Valve 14 can be used to meter precise amounts of aqueous urea which are
`
`converted in the exhaust stream to ammonia.” Col. 7, ll. 7-12.
`
`33.
`
`Then, “the exhaust stream with the added ammonia is conveyed to the
`
`soot filter 12 which is coated with an SCR catalyst composition.” Col. 7, ll. 12-15.
`
`IV. THE CLAIMS OF THE ’982 PATENT
`
`A.
`
`34.
`
`35.
`
`Overview
`
`The patent includes 27 claims.
`
`There are three independent claims: 1, 16, and 22. These claims are
`
`reproduced below for reference (I have added additional space not present in the
`
`original claims between certain limitations for purposes of clarity and emphasis):
`
`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 defining said passages, wherein the
`
`-14-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#47#sj#9=
`
`

`
`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.
`
`16. 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 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 a copper component, the
`washcoat permeating the walls at a loading up to 1.3 g/in3,
`
`the wall flow monolith having integrated, NOx and
`particulate removal efficiency in which presence of the
`
`-15-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#48#sj#9=
`
`

`
`catalytic material in the wall flow monolith catalyzes the
`oxidation of soot.
`
`22. 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 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 55%
`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,
`
`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.
`
`36.
`
`The dependent claims of the ’982 patent include further limitations
`
`regarding the system’s performance, the type of zeolite used, the amount of
`
`catalyst loading, and the porosity and average pore size of the catalyst article.
`
`B.
`
`37.
`
`Claim Construction
`
`I understand that a claim term subject to inter partes review (IPR) is
`
`given its “broadest reasonable construction in light of the specification.”
`
`-16-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#49#sj#9=
`
`

`
`38.
`
`I further understand that this means that terms are to be given their
`
`plain meaning unless it is inconsistent with the specification.
`
`39.
`
`I note that certain terms in the ’982 patent’s claims are defined in the
`
`specification.
`
`40.
`
`For instance, claims 1, 16, and 22 all require a “washcoat permeating
`
`the walls” of the claimed monolith. ’982 patent states that “the term ‘permeate’
`
`when used to describe the dispersion of the catalyst slurry on the substrate, means
`
`that the catalyst composition is dispersed throughout the wall of the substrate.”
`
`Col. 10, ll. 13-17.
`
`41.
`
`In my opinion, this definition is at least consistent with the broadest
`
`reasonable interpretation of the claim terms. As a result, I have applied the
`
`definition in arriving at my opinions.
`
`42. Claims 1, 16, and 22 also require a “wall flow monolith [that] has a
`
`porosity of from 50% [or 55%] to 60% and an average pore size of from 10 to 25
`
`microns” and “contains the catalytic material.”
`
`43.
`
`In my opinion, it is not clear whether these “porosity” and “pore size”
`
`limitations are referring to a coated or uncoated “wall flow monolith.” I note that
`
`the ’982 patent itself alternatively refers to both coated and uncoated monoliths as
`
`having certain porosities and pore sizes. Compare col. 5, ll. 28-33 with col. 5, ll.
`
`52-55.
`
`-17-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#4;#sj#9=
`
`

`
`44. Because the two possible interpretations of the porosity and pore size
`
`limitations overlap in scope, with neither being necessarily broader than the other,
`
`for purposes of this declaration I have assumed that the “wall flow monolith [that]
`
`has a porosity of from 50% [or 55%] to 60% and an average pore size of from 10
`
`to 25 microns” limitations embraces both coated and uncoated monoliths that
`
`possess these characteristics.
`
`45. Based on my review of the claims, specification, and prosecution
`
`history of the ’982 patent, it is my opinion that there is no indication in the ’982
`
`patent that any other claim terms should be afforded something other than their
`
`plain and ordinary meaning.
`
`V.
`
`THE ’982 PATENT’S PROSECUTION HISTORY
`
`A.
`
`Original Prosecution
`
`46. As noted above, I have reviewed the original prosecution history of
`
`the ’982 patent.
`
`47. While the claims of the ’982 patent were rejected for double patenting
`
`during prosecution in view of other BASF patent filings, the Examiner did not
`
`reject the claims as anticipated or obvious over any other prior art references.
`
`None of the prior art references cited in this declaration served as a basis for
`
`rejection during prosecution.
`
`B.
`
`Previous Inter Partes Review
`
`48. On May 26, 2015, in Case No. IPR2015-01266, Johnson Matthey Inc.
`
`-18-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#4<#sj#9=
`
`

`
`filed a petition requesting inter partes review of the ’982 patent’s claims.
`
`49.
`
`This petition argued that the claims are all unpatentable as obvious
`
`over:
`
`"
`
`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, Proceedings of the Dresden Motor Conference
`
`(May 1999);
`
`"
`
`In view of : Hashimoto et al., SiC and Cordierite Diesel
`
`Particulate Filters Designed for Low Pressure Drop and
`
`Catalyzed, Uncatalyzed Systems, SAE Technical Paper 2002-
`
`01-0322 and U.S. Patent No. 5,516,497 to Speronello;
`
`"
`
`In further view of: Teraoka et al., Simultaneous Catalytic
`
`Removal of Nitrogen Oxides and Soot by Copper-Loaded MFI
`
`Zeolites, 30 Chemistry Letters 604 (2001)
`
`50.
`
`In response to this petition, the Patent Trial and Appeal Board
`
`instituted inter partes review of claims 1-27 of the ’982 patent on December 4,
`
`2015.
`
`VI. UNPATENTABILITY ANALYSIS
`
`51.
`
`In my opinion, claims 1-27 of the ’982 patent are all unpatentable and
`
`-19-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#4=#sj#9=
`
`

`
`invalid as obvious over the prior art.
`
`52.
`
`I understand that a patent claim is unpatentable and invalid if the
`
`subject matter of the claim as a whole would have been obvious to a person of
`
`ordinary skill in the art of the claimed subject matter as of the time of the invention
`
`at issue. I understand that when assessing the obviousness of claimed subject
`
`matter, the following factors are evaluated: (1) the scope and content of the prior
`
`art; (2) the difference or differences between each claim of the patent and the prior
`
`art; and (3) the level of ordinary skill in the art at the time the patent was filed. I
`
`have been informed that these are sometimes referred to as the “Graham factors.”
`
`Different from anticipation, which I understand allows for consideration of only
`
`one item of prior art, I understand that claimed subject matter may be obvious in
`
`view of more than one item of prior art. I understand, however, that it is not
`
`enough to show simply that all the limitations of the claimed subject matter are
`
`spread throughout the prior art. Instead, for claimed subject matter to be obvious
`
`over multiple references, there must be some reason or motivation for one of
`
`ordinary skill in the art to combine the prior art references to arrive at the claimed
`
`subject matter. I also understand that one of ordinary skill in the art must have had
`
`a reasonable expectation of success when combining references for claimed subject
`
`matter to be obvious. Moreover, I have been informed and I understand that
`
`factors referred to as “objective indicia of non-obviousness” or “secondary
`
`-20-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#53#sj#9=
`
`

`
`considerations” are also to be considered when assessing obviousness. I
`
`understand that these factors can include: (1) commercial success; (2) long-felt but
`
`unresolved needs; (3) copying of the invention by others in the field; (4) initial
`
`expressions of disbelief by experts in the field; (5) failure of others to solve the
`
`problem the claimed subject matter solved; and (6) unexpected results. I also
`
`understand that evidence of objective indicia of non-obviousness must be
`
`commensurate in scope with the claimed subject matter.
`
`A.
`
`53.
`
`Person of Ordinary Skill in the Art
`
`I understand that a patent must be written such that it can be
`
`understood by a “person of ordinary skill” in the field of the patent.
`
`54.
`
`I understand that this hypothetical person of ordinary skill in the art is
`
`considered to have the normal skills and knowledge of a person in a certain
`
`technical field, as of the time of the invention at issue. I understand that factors
`
`that may be considered in determining the level of ordinary skill in the art include:
`
`(1) the education level of the inventor; (2) the types of problems encountered in the
`
`art; (3) the prior art solutions to those problems; (4) rapidity with which
`
`innovations are made; (5) the sophistication of the technology; and (6) the
`
`education level of active workers in the field. I also understand that “the person of
`
`ordinary skill” is a hypothetical person, who is presumed to be aware of the
`
`universe of available prior art.
`
`-21-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#54#sj#9=
`
`

`
`55.
`
`In my opinion, one of ordinary skill in the art to which the ’982 patent
`
`is directed would hold at least a Bachelor’s degree in chemistry, chemical
`
`engineering, mechanical engineering, or a related technical discipline, and have a
`
`few years of work experience with diesel exhaust treatment systems, such that they
`
`have knowledge of the various aspects of these systems, including the types of
`
`catalytic materials and filters used.
`
`56.
`
`In my opinion, additional years of work experience with diesel
`
`exhaust treatment systems can substitute for a more advanced educational degree.
`
`For instance, an individual with five or more years of work experience in the above
`
`described fields with an associate’s degree in a technical field would also, in my
`
`opinion, be one of ordinary skill in the art.
`
`57. Based on my experience and education, I consider myself (both now
`
`and as of August 2003) to be a person of at least ordinary skill in the art with
`
`respect to the field of technology implicated by the ’982 patent.
`
`B.
`
`58.
`
`Scope, Content, and Disclosures of the Prior Art
`
`The scope and content of the prior art as of August 2003 would have
`
`broadly extended to references relating to the various components of diesel exhaust
`
`gas treatment systems, including oxidation catalysts, particulate filters, and
`
`catalytic materials that can be used to reduce nitrogen oxides.
`
`59.
`
`In my opinion, one of ordinary skill in the art as of August 2003
`
`-22-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#55#sj#9=
`
`

`
`would have considered Muraki, Taoka, Joy, and Speronello to be within the same
`
`technical field as the subject matter set forth in the ’982 patent. Further, all of
`
`these references (along with the other references I considered as listed above)
`
`would be considered highly relevant prior art to the claims of the ’982 patent.
`
`60. A summary of each of these reference’s disclosures follows.
`
`1. Muraki
`
`61. Muraki indicates on its face that it published June 14, 1989. Since
`
`this is more than a year before the ’982 patent’s August 2003 effective filing date, I
`
`understand that Muraki is prior art to the ’982 patent pursuant to 35 U.S.C. §
`
`102(b).
`
`62. Muraki is not identified on the face of the ’982 patent as one of the
`
`references considered during prosecution. Further, Muraki was not cited in any of
`
`the papers submitted in connection with IPR2015-01266.
`
`63. Muraki explains that diesel engine exhaust gas includes, among other
`
`things, “combustible fine particles such as carbon” and “nitrogen oxides (NOx).”
`
`Page 3, ll. 9-11, 37-38.
`
`64. According to Muraki, while “conventional technology demonstrates
`
`an effect in terms of removing combustible fine particles and nitrogen oxides on
`
`their own, it is not possible to remove both combustible fine particles and nitrogen
`
`oxides at the same time.” Page 4, ll. 5-9. This conventional technology creates a
`
`-23-
`
`I|lmfmx#433=
`MTV5349033946
`YQMGSVI#EK#)#GS1#OK
`Teki#56#sj#9=
`
`

`
`problem, according to Muraki, because it “require[s] two devices, namely a filter
`
`and a catalytic converter” and is inconsistent with the desire to use “compact and
`
`lightweight components” in a vehicle. Page 4, ll. 18-22.
`
`65. Muraki goes on to explain that its “invention has been devised in view
`
`of these problems, and the aim thereof lies in providing a catalyst which can