UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________________________
`
`UMICORE AT & CO. KG,
`
`
`
`Petitioner,
`
`v.
`
`BASF CORPORATION,
`
`Patent Owner
`
`______________________________________________________________
`
`Case IPR2016-00613
`
`Patent 9,039,982
`______________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,039,982
`PURSUANT TO 37 CFR § 42.120
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`Page
`
`TABLE OF AUTHORITIES ................................................................................... iii 
`
`PATENT OWNER’S TABLE OF EXHIBITS .......................................................... v 
`
`I. 
`
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`
`TECHNICAL BACKGROUND ..................................................................... 5 
`
`A. 
`
`The State Of The Art Of Diesel Exhaust Aftertreatment ...................... 5 
`
`1. 
`
`2. 
`
`The State of The Art Of Particulate Matter
`Aftertreatment ............................................................................. 7 
`
`The State of The Art Of NOx Aftertreatment ........................... 11 
`
`B. 
`
`C. 
`
`The ’982 Patent ................................................................................... 14 
`
`Overview Of The Cited References .................................................... 16 
`
`1.  Muraki ....................................................................................... 16 
`
`2. 
`
`3. 
`
`4. 
`
`Taoka ......................................................................................... 17 
`
`Joy ............................................................................................. 18 
`
`Speronello ................................................................................. 18 
`
`III.  OVERVIEW OF THE PETITIONS .............................................................. 19 
`
`IV. 
`
`IPR SHOULD NOT BE INSTITUTED ........................................................ 21 
`
`A. 
`
`Petitioner Has Not Demonstrated A Prima Facie Case Of
`Obviousness Based On The Combination Of Muraki And
`Taoka (Ground 1) ................................................................................ 21 
`
`1. 
`
`There Was No Motivation To Modify Muraki To
`Achieve The Invention Of The ’982 Patent .............................. 22 
`
`i
`
`
`
`
`
`

`
`2. 
`
`3. 
`
`4. 
`
`The Skilled Artisan Would Not Have Had A Reasonable
`Expectation Of Successfully Modifying Muraki To
`Achieve The Invention Of The ’982 Patent .............................. 24 
`
`Petitioner Fails To Show That The Claimed Filter
`Parameters Would Have Been Obvious .................................... 31 
`
`The Skilled Artisan Would Not Have Had A Reasonable
`Expectation Of Being Able To Achieve The Invention of
`Claim 23 .................................................................................... 37 
`
`Petitioner Has Not Demonstrated A Prima Facie Case of
`Obviousness Based On The Combination Of Muraki, Taoka,
`and Speronello (Ground 2) .................................................................. 39 
`
`Petitioner Has Not Demonstrated A Prima Facie Case of
`Obviousness Based On The Combination Of Muraki, Taoka,
`and Joy (Ground 3) .............................................................................. 46 
`
`Petitioner Has Not Demonstrated A Prima Facie Case of
`Obviousness Based On The Combination Of Muraki, Taoka,
`Joy, And Speronello (Ground 4) ......................................................... 50 
`
`Objective Evidence Confirms That The Invention of The ’982
`Patent Is Nonobvious........................................................................... 50 
`
`1. 
`
`2. 
`
`3. 
`
`Invention
`Long Felt Need For The Claimed
`Demonstrates Nonobviousness ................................................. 51 
`
`Failure Of Others ...................................................................... 52 
`
`Teaching Away By Others ........................................................ 54 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`V. 
`
`CONCLUSION .............................................................................................. 55 
`
`
`
`ii
`
`
`
`

`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases 
`
`Cadence Pharm. Inc. v. Exela PharmSci Inc.,
` 780 F.3d 1364 (Fed. Cir. 2015) ......................................................................... 43
`
`Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc.,
`725 F.3d 1341 (Fed. Cir. 2013) .......................................................................... 34
`
`In re Kahn,
`44 F.3d 977 (Fed. Cir. 2006) ....................................................................... 36, 50
`
`In re Kubin,
`561 F.3d 1351 (Fed. Cir. 2009) .......................................................................... 38
`
`In re Ratti,
`270 F.2d 810 (C.C.P.A. 1959) ............................................................................ 44
`
`Leo Pharms., Ltd. v. Rea.,
`726 F. 3d 1346 (Fed. Cir. 2013) ......................................................................... 23
`
`Rambus Inc. v. Rea,
`731 F.3d 1248 (Fed. Cir. 2013) .......................................................................... 50
`
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) .......................................................................... 50
`
`Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1361 (Fed. Cir. 2011) ............ 37
`
`Statutes 
`
`37 C.F.R. § 42.65(a) ................................................................................................. 34
`
`M.P.E.P. § 2143 ....................................................................................................... 45
`
`iii
`
`
`
`

`
`
`
`
`
`iv
`
`iv
`
`

`
`Exhibit 2001
`
`Exhibit 2002
`
`Exhibit 2003
`
`Exhibit 2004
`
`Exhibit 2005
`
`Exhibit 2006
`
`Exhibit 2007
`
`Exhibit 2008
`
`Exhibit 2009
`
`Exhibit 2010
`
`Exhibit 2011
`
`Exhibit 2012
`
`Exhibit 2013
`
`Exhibit 2014
`
`PATENT OWNER’S TABLE OF EXHIBITS
`J. Gieshoff, et al., Regeneration of Catalytic Diesel Particulate
`Filters, Diesel Exhaust Emission Control: Diesel Particulate
`Filters, 2001.
`Magdi K. Khair, Simultaneous Control of NOx and PM from
`Diesel Engines, Southwest Research Institute, 96EN008.
`Claus Görsmann, et al., Catalytic Coatings for Active and
`Passive Diesel Particulate Filter Regeneration, Chemical
`Monthly, 2004.
`Brad Adelman, Literature Survey to Assess the State-of-the-Art
`of Selective Catalytic Reduction of Vehicle NOx Emissions,
`Ricardo Inc., June 21, 2002.
`T.J. Truex, et al., Catalysts for Nitrogen Oxides Control under
`Lean Burn Conditions, Platinum Metals Rev., Vol. 36, 1992.
`Magdi K. Khair, Technical Advantages of Urea SCR for Light-
`Duty and Heavy-Duty Diesel Vehicle Applications, Diesel
`Exhaust Emission Control, 2004.
`John F. Thomas, Hydrocarbon Selective Catalytic Reduction
`Using a Silver-Alumina Catalyst with Light Alcohols and Other
`Reductants, SAE International, 2005.
`V.I Parvulescu, et al., Catalytic removal of NO, Catalysis Today,
`1998.
`Philip G. Blakeman, et al. Developments in Diesel Emission
`Aftertreatment Technology, Society of Automotive Engineers,
`2003.
`Guy R. Chandler, et al., An Integrated SCR and Continuously
`Regenerating Trap System to Meet Future Nox and PM
`Legislation, Diesel Exhaust Aftertreatment, 2000.
`M. Shelef & R.W. McCabe, Twenty-five years after introduction
`of automotive catalysts: what next?, Catalysis Today, 2000.
`Andrew P. Walker, et al., The Development and Performance of
`the Compact SCR-Trap Systems: A 4-Way Diesel Emission
`Control Systems, Diesel Exhaust Emissions Control, 2003.
`K.V.R. Babu, et al., The Effect of Nox/Soot Ratio on the
`Regeneration Behaviour of Catalysed Diesel Particulate Filters
`for Heavy Duty Applications, Society of Automotive Engineers,
`2005.
`Todd Ballinger et al., Evaluation of SCR Catalyst Technology
`
`v
`
`

`
`Exhibit 2015
`
`Exhibit 2016
`
`Exhibit 2017
`Exhibit 2018
`
`Exhibit 2019
`
`on Diesel Particulate Filters, SAE International Journal of Fuels
`and Lubricants, Vol. 2, Issue 1, 2009.
`Kenneth G. Rappé, Integrated Selective Catalytic Reductions—
`Diesel Particulate Filter Aftertreatment: Insights into Pressure
`Drop, NOx Conversion, and Passive Soot Oxidation Behavior,
`I&EC Research, 2014.
`Isabelle Melscoet-Chauvel, et al., High Porosity Cordierite Filter
`Development for Nox/PM Reduction, Developments in
`Advanced Ceramics and Composites, 2005.
`Expert Declaration of Ahmad Moini
`Jong H. Lee, et al., Evaluation of Cu-Based SCR/DPF
`Technology for Diesel Exhaust Emission Control, SAE
`International, 2008.
`Magdi K. Khair, et al., Diesel Deadlines, Technology Today,
`1999.
`
`vi
`
`

`
`I.
`
`INTRODUCTION
`U.S. Patent No. 9,039,9821 is directed to a novel catalyst article for treating
`
`diesel engine exhaust that uses a high porosity soot filter2 coated with a metal
`
`promoted zeolite catalyst. The catalysts of the invention maintain their stability
`
`under extreme thermal conditions and are capable not just of lowering the
`
`temperature needed for soot combustion, but also reducing nitrogen oxides
`
`(“NOx”) via a reaction with ammonia, which is introduced prior to the soot filter.
`
`Although the diesel exhaust environment is highly oxidizing, the NOx reduction
`
`reaction proceeds efficiently without negatively impacting the operation of the soot
`
`filter or creating unwanted side reactions. The invention of the ’982 patent
`
`
`1 Petitioner has filed IPR petitions challenging the claims of U.S. Patent Nos.
`
`8,899,023, (“the ’023 patent”) 9,032,709 (“the ’709 patent”), and 9,039,982 (“the
`
`’982 patent”), all of which share the same specification. See IPR Nos. 2016-
`
`00610, 00612, 00613.
`
`2 The term “soot filter” is often used interchangeably in the art with the terms
`
`particulate filter, particle filter, wall flow monolith, wall flow filter, PM device,
`
`diesel particulate filter, and/or DPF. Herein, Patent Owner has endeavored to
`
`consistently use the term “soot filter,” although the alternative terminology
`
`sometimes appears in the context of discussing specific references.
`
`1
`
`

`
`provided for the first time a compact means for simultaneously limiting both
`
`particulate matter (“PM”) and NOx emissions from diesel exhaust.
`
`The importance of the ’982 patent is revealed by events in the years leading
`
`up to the ’982 patent. In 1998, the EU Environmental Council passed strict new
`
`standards limiting both NOx and PM emissions from diesel engines. The new
`
`standards were set to take effect starting in 2005, and the automotive industry
`
`immediately recognized that new technical developments would be required.
`
`Johnson Matthey, Inc. (“JMI”), for instance, stated in an IPR petition on the ’982
`
`patent, that there were no “pre-existing answers for complying” with the new
`
`standards and that this presented a “huge challenge” for the industry. See
`
`IPR2015-01266, Paper No. 1 at 22-23.3 Despite the pressure of the impending
`
`government standards and the combined efforts of a motivated industry, a solution
`
`did not promptly emerge. Rather, it was not until five years later that researchers
`
`at BASF provided a technique that allowed auto and truck industries to meet the
`
`new European emission standards, along with other similarly strict emissions
`
`3 This is not the first request for IPR of the ’982, ’709, and ’023 patents. In May
`
`2015, JMI, an entity unrelated to the Petitioner here, first requested IPR for all
`
`three patents. These IPRs are currently pending before the Board. See IPR Nos.
`
`2015-01266, -01266, -01267.
`
`2
`
`

`
`standards being implemented around the world. This solution is described and
`
`claimed in the ’982 patent.
`
`The lynchpin of Petitioner’s attempt to invalidate the ’982 patent is the
`
`Muraki reference, a Japanese patent publication that was filed in 1989 by Toyota, a
`
`major automobile manufacturer who would have been highly motivated to
`
`accomplish what the inventors of the BASF team did, but ultimately did not.
`
`Petitioner needs to combine Muraki with multiple additional references (Taoka,
`
`Joy, and Speronello) to achieve the claims of the ’982 patent. Ostensibly,
`
`Petitioner believes Muraki comes close to the ’982 patent because it discloses
`
`coating a wall-flow filter with some type of copper-loaded zeolite catalyst (the
`
`exact nature of which is left unspecified).
`
`Muraki is not close to the ’982 patent. It does not even provide a workable
`
`diesel exhaust system. Muraki states that “NOx is mainly removed by reacting
`
`NOx and hydrocarbons in the exhaust gas and decomposing these into components
`
`such as N2, CO2 and H2O.” Ex. 1003 at 9:1-3. This represents a prior art concept
`
`that was explored throughout the 1990s with no success, as explained in one
`
`standard textbook in the field:
`
`One great goal during the 1990s was to find a catalyst capable of
`reducing NOx with injection of diesel fuel into the exhaust as a
`reducing agent (Rice et al. 1996) and (Konno et al. 1992). This
`approach was not successful. The major problem was the poor
`3
`
`

`
`selectively since the HC-O2 reaction is favored over the HC + NOx
`reaction.
`Ex. 1013 [Heck] at 21.4
`
`
`
`Muraki is merely an early example of an approach that ultimately failed after
`
`more than a decade of research. Petitioner’s contention—17 years after the fact—
`
`that this would have actually rendered the ’982 patent obvious smacks of hindsight.
`
`In fact, those in the art would have viewed the approach of the ’982 patent to be
`
`overly complex, inconsistent with the conditions necessary for effective operation
`
`of a soot filter, and deleterious to the catalysts needed to control NOx emissions.
`
`In other words, a person of ordinary skill in the art would have expected the ’982
`
`patent invention not to work. Thus, the inventors’ decision to nevertheless pursue
`
`this approach was highly contrary to conventional thinking.
`
`
`
`Petitioner’s attempt to reconstruct the claims of the ’982 patent from four
`
`different references is based not on the reality of what the skilled artisan would
`
`have believed at the time of filing, but on selectively culling bits and pieces from
`
`different prior art references to the exclusion of the teaching of the art as a whole.
`
`This is proven by 17 years-worth of industry history and literature subsequent to
`
`Muraki. The Petition should be rejected.
`
`
`4 Emphasis supplied unless otherwise stated.
`
`4
`
`

`
`II. TECHNICAL BACKGROUND
`A. The State Of The Art Of Diesel Exhaust Aftertreatment
`Understanding the claimed invention of the ’982 patent requires an
`
`
`
`understanding of the purpose, components, and general design of automobile
`
`exhaust systems. Evaluating the ’982 patent within the proper technological
`
`context reveals that it was advanced for its time and represented thinking contrary
`
`to the conventional wisdom in the field.
`
`
`
`“Diesel engine exhaust is a heterogeneous mixture which contains not only
`
`gaseous emissions such as carbon monoxide (‘CO’), unburned hydrocarbons
`
`(‘HC’) and nitrogen oxides (‘NOx’), but also condensed phase materials (liquids
`
`and solids) which constitute the so-called particulates or particulate matter.” Ex.
`
`1001 at 1:26-31. Diesel engines are considered to be “lean-burn” engines,
`
`meaning that they operate in an environment with an excess of oxygen that is
`
`highly oxidizing. See Ex. 1013 [Heck] at 3 (“Diesels operate very lean of
`
`stoichiometric, with air: fuel ratios greater than about 22.”). The lean environment
`
`of diesel exhaust had long been known to present complications for reducing NOx
`
`emissions. Id. at 21 (“The catalytic reduction of NOx from lean-burn diesel
`
`engines has proved to be an even greater challenge relative to the stoichiometric
`
`operated gasoline engine. The modern [three-way] catalyst cannot reduce NOx in
`
`the presence of excess O2.”) (citation omitted).
`
`5
`
`

`
`
`
`Beginning in the late 1990s, the negative health and environmental impacts
`
`of diesel pollutants led governments around the world to enact new emissions
`
`standards, limiting the permissible amounts of pollutants in diesel-powered vehicle
`
`exhaust emissions. See, e.g., Ex. 2001.003 [Gieshoff] (discussing the growing
`
`health concerns and mandated legislation of diesel exhaust emissions); see also Ex.
`
`1013 [Heck] at 5 (discussing worldwide diesel emission standards). In particular,
`
`the new standards imposed significant reductions in HC, NOx, and particulate
`
`matter emissions that became increasingly strict at regular intervals over a period
`
`of years. See Ex. 1013 at 5-6. Accordingly, complying with these new emissions
`
`standards required the simultaneous efficient removal of all of these components
`
`from vehicle diesel exhaust.
`
`
`
`However, prior to the ’982 patent, the diesel engine manufacturing industry
`
`had no comprehensive approach to achieve the simultaneous reduction of the diesel
`
`exhaust components to meet the forthcoming standards. Proposed solutions were
`
`driven by conventional wisdom, which, at the time, emphasized the tradeoff
`
`between reducing NOx emissions and reducing particulate matter emissions. See,
`
`e.g., id. at 8 (“The control of particulate emissions and NOx represent significant
`
`challenges to the diesel engine manufacturer because they are coupled inversely.”).
`
`Specifically, an engine operating at cooler temperatures produces less NOx but
`
`more particulate, while an engine operating at higher temperatures provides more
`
`6
`
`

`
`complete combustion, generating less particulate but more NOx. Id. “This is
`
`referred to as the NOx-particulate tradeoff; when one is high the other is low.” Id.
`
`Petitioner’s expert has described the NOx-particulate matter trade-off as “the
`
`Achilles heel of heavy-duty diesel engines.” Ex. 2002.001 [Khair 96EN008].
`
`
`
`Thus, as of 2003, the industry believed a two-pronged approach would be
`
`necessary. That is, one could engineer the exhaust system to produce less soot
`
`particulate, and then address NOx reduction through a known aftertreatment
`
`method, or, alternatively, engineer the exhaust system to produce less NOx, and
`
`then deal with reducing the soot particulate through a known aftertreatment.
`
`Below, the state of the art at the time of the ’982 patent is described.
`
`The State of The Art Of Particulate Matter Aftertreatment
`
`1.
`In 2003, the primary technique for removing particulate matter from diesel
`
`engine exhaust was the use of filters to physically trap the soot particulate. One
`
`such filter structure that had been known since the early 1980s was the wall flow
`
`monolith. As explained in the ’982 patent, this filter is based on the use of parallel
`
`passageways in which “each passage is blocked at one end of the substrate body,
`
`with alternate passages blocked at opposite end-faces.” Ex. 1001 at 8:65-67; see
`
`also id. at Fig. 2:
`
`7
`
`

`
`
`
`In operation, the exhaust gas passes through tiny pores in the monolith walls
`
`that separate the passageways through the filter. Figure 3, annotated below,
`
`depicts the cross section of a wall flow monolith, with a representative passage
`
`way for the exhaust gas shown by a dotted red line:
`
`
`
`Id. at Fig. 3 (annotated). Although the exhaust gas can diffuse through the porous
`
`walls and ultimately pass through the filter, particulate matter that is larger than the
`
`monolith pores becomes trapped and collects on the filter walls forming an ever-
`
`increasing soot layer. See Ex. 1013 [Heck] at 35. Filters can quickly accumulate
`
`considerable volumes of soot, causing an increase in “back pressure” behind the
`
`filter, which can negatively impact engine performance and even cause the engine
`
`to fail.
`
`8
`
`

`
`
`
`Thus, soot trapped on the filter must eventually be oxidized to CO2 and H2O,
`
`which can then exit the filter. Ex. 1013 at 46; see also, e.g., Ex. 1001 at 2:21-26;
`
`13:4-10. While soot oxidation can be accomplished using O2 as the oxidant, NO2
`
`was known at the time of the ’982 patent to be a far more potent soot oxidizing
`
`agent. In fact, as of 2003, a diesel oxidation catalyst (“DOC”) was routinely
`
`placed upstream of the filter so that NO could be oxidized to NO2, which would
`
`then travel into the soot filter and continuously act as an oxidant of soot while the
`
`engine runs. Ex. 1013 at 18. This approach of including a DOC upstream of the
`
`soot filter was first published in 1989 and was commercialized by Johnson
`
`Matthey under the tradename CRT®.
`
`
`
`Subsequent to the CRT®, it became more widespread for the oxidation
`
`catalyst to be directly integrated into the soot filter by coating the filter with the
`
`oxidation catalyst. The coated filter operated on a principle similar to the CRT®,
`
`but allowed for more efficient use of NO2. In particular, after a molecule of NO2 is
`
`converted to NO through the oxidation of a hydrocarbon molecule, it can be
`
`reconverted to NO2 by the oxidation catalyst and reused for the oxidation of
`
`additional soot while it is still passing through the filter. See Ex. 2003.009
`
`[Gorsman] (“Over the catalytic coating of the filter NO can be re-oxidised to NO2
`
`by present oxygen, and is therefore available for further soot oxidation.”). Thus, as
`
`of 2003, the skilled artisan understood that there was a synergy between the use of
`
`9
`
`

`
`an oxidation catalyst and a soot filter. The use of NO2 in this manner to
`
`continuously oxidize soot during normal engine operation is referred to as “passive
`
`filter regeneration.”
`
`
`
`While effective passive filter regeneration using NO2 was seen as critical to
`
`the smooth operation of a soot filter, it did not completely oxidize trapped soot.
`
`Even with passive filter regeneration, a soot filter will eventually become clogged,
`
`leading to a build-up of backpressure and a concomitant harmful impact on engine
`
`performance. Removal of this soot build-up requires an additional process known
`
`as “active filter regeneration.” During this process, the filter is heated to very high
`
`temperatures, often exceeding 800º C, in the presence of oxygen to combust the
`
`remaining soot on the filter. Ex. 1001 at 3:17-19. Unfortunately, as the ’982
`
`patent explains, the high temperatures experienced during active regeneration were
`
`known to lead to thermal deactivation of the catalyst. See id. at 3:17-21 (“For
`
`example, combustion of the soot fraction of the particulate matter often leads to
`
`temperatures above 700°C. Such temperatures render many commonly used SCR
`
`catalyst compositions such as mixed oxides of vanadium and titanium less
`
`catalytically effective.”). As of 2003, the conventional wisdom was that in order to
`
`withstand the high temperatures associated with active filter regeneration, filters
`
`needed to have a high mass to prevent the filter from cracking or melting. Ex.
`
`1013 [Heck] at 59.
`
`10
`
`

`
`The State of The Art Of NOx Aftertreatment
`
`2.
`At the time of the ’982 patent, the industry had begun considering catalytic
`
`treatment of NOx. For years, efforts were focused on identifying a catalyst that
`
`could effectively catalyze the reaction of hydrocarbons that are already present in
`
`the fuel with NOx to produce H2O and N2. This process was referred to in the art
`
`as “HC-SCR” or “SCR-HC,” to denote the use of hydrocarbons for the selective
`
`catalytic reduction (“SCR”) of NOx. These efforts were not successful. See, e.g.,
`
`Ex. 1013 at 21.
`
`As a result, in 2003 the industry was considering the use of NH3 as an agent
`
`for the reduction of NOx to H2O and N2. Id. at 22 (“Given the lack of success with
`
`hydrocarbon lean NOx, engine manufacturers are considering the use of selective
`
`catalytic reduction (SCR) with NH3 as the reductant for NOx for heavy-duty
`
`trucks….”). This process is referred to in the ’982 patent and in the art as simply
`
`“SCR.” Ex. 1001 at 2:41-46. In this process, a stream of ammonia is introduced
`
`into the exhaust, which reacts with the NOx to produce N2 and H2O. Id. at 2:44-
`
`53. The SCR reaction is termed a reduction reaction, because the nitrogen atom in
`
`the NOx molecule is chemically reduced to nitrogen (N2). Id. This reaction is in
`
`contrast to the oxidation reactions that are used to oxidize the carbon atoms in CO
`
`and hydrocarbons to CO2. Id. at 1:47-51.
`
`11
`
`

`
`Although the SCR reaction was known at the time of the ’982 patent, it was
`
`largely used for NOx removal in stationary installations such as power plants due to
`
`the significant challenges associated with the production and storage of the
`
`ammonia reductant. See, e.g., Ex. 2004.024 [Adelman]; see also, e.g., Ex.
`
`2002.004 [Khair 96EN008] (describing “the impracticality of an on-board
`
`ammonia tank and the potential of reductant leakage were found to be
`
`detrimental”); Ex. 2005.005 [Truex 1992] (“For transportation applications this
`
`process is not practical because of the problems associated with the storage of
`
`ammonia, and controlling ammonia injection under transient conditions.”).
`
`Specifically, conventional wisdom at the time of the ’982 patent taught:
`
`In order to apply SCR-NH3 to mobile sources, NH3 must be stored on
`the vehicle or produced onboard. Owing to the health and safety
`issues of storing NH3, it will need to be produced onboard. Since NH3
`is not a significant engine emission, the source for producing NH3 will
`need to be stored in the vehicle.
`
`Ex. 2004.009 [Adelman].
`
`
`
`As an alternative to storing ammonia on-board the vehicle, it was proposed
`
`to store a safer ammonia pre-cursor, such as urea. Even using the less expensive
`
`and safer urea as the source for NH3, however, presented significant drawbacks,
`
`including the lack of infrastructure to distribute urea and issues associated with
`
`replenishing the onboard urea tank. Ex. 2004.025 [Adelman] (explaining that there
`
`12
`
`

`
`is no mechanism in place on the vehicle to prevent the driver from circumventing
`
`urea refills); see also id. at .009 (citing additional concerns for urea-based SCR in
`
`on-road vehicles as the various byproducts formed during urea decomposition and
`
`the complexity of the urea injection equipment).
`
`In fact, even after the filing of the ’982 patent, conventional wisdom still
`
`counseled against using urea-based SCR for vehicle applications. For instance, in
`
`a 2004 publication, Petitioner’s expert explained the “case against using Urea SCR
`
`for vehicle applications is twofold: (1) an infrastructure is required to deliver the
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`reductant onboard the vehicle and (2) customer compliance is required to maintain
`
`adequate reductant for continuous, high NOx conversion. These issues make Urea
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`SCR difficult to implement, but not impossible.” Ex. 2006.004 [Khair, 2004-01-
`
`1294]; see also Ex. 2007.001 [Thomas, 2005-01-1082] (describing “numerous
`
`concerns with applying urea-based SCR…includ[ing] 1) need for a separate
`
`onboard tank, 2) infrastructure to supply urea, 3) residue buildup from unwanted
`
`urea and urea decomposition products…4) corrosiveness of urea, and 5) cold
`
`weather freezing.”).
`
`Due to the drawbacks associated with urea-based SCR, the industry believed
`
`that “it would be attractive to develop a HC-SCR system that could effectively
`
`utilize diesel (compression ignition) fuel, reformed diesel fuel, a fuel-borne
`
`additive or a reformed fuel additive as the reducing agent.” Ex. 2007.001-002
`
`13
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`

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`[Thomas, 2005-01-1082]. Thus, as of 2003, the industry continued to invest in and
`
`pursue HC-SCR systems. Id. at .002; see also 2004.025 [Adelman] (“These two
`
`issues are significant obstacles preventing widespread use of urea-based SCR-NH3
`
`and demonstrate the benefits that SCR-HC possess….”).
`
`The ’982 Patent
`
`B.
`The ’982 patent describes and claims a novel catalytic article for an
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`automobile exhaust emissions treatment system. The inventors conceived of and
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`developed the invention after stringent new emissions standards for diesel engines
`
`were adopted throughout the world. The invention of the ’982 patent provides a
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`system for efficiently removing both soot and NOx from vehicle exhaust across a
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`range of engine operating temperatures in the same device. At the same time, the
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`system offers excellent durability and the ability to maintain catalytic activity for
`
`long periods of use, without causing a harmful increase in engine backpressure.
`
`Ex. 1001 at 6:17-29.
`
`Proceeding contrary to the conventional wisdom of using a soot filter with a
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`downstream SCR system, the inventors coated the filter with SCR catalysts, which
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`were previously thought to be unsuitable for the high temperatures of filter
`
`regeneration. The inventors started with a high porosity wall flow monolith filter.
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`The claims specifically recite a “porosity of from 50% to 60%” (claims 1 and 16)
`
`or a “porosity of from 50% to 55%” (claim 22) and “an average pore size of from
`
`14
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`

`
`10 to 25 microns.” Ex. 1001 at 15:54-55,16:53-54, 17:21-22. Using a slurry-
`
`loaded washcoat, the filter was then coated with up to 2.4 g/in3 of a catalyst
`
`consisting specifically of a zeolite loaded with either iron or copper. See id. at
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`9:66-10:17, 15:57-60.
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`Unexpectedly, the resulting catalytic article provided not just efficient soot
`
`removal, but also efficient NOx removal. See, e.g., id. at Table 1. Even more
`
`unexpected, the system catalyzed the combustion of soot at normal engine
`
`operating temperatures around 350 ºC. See id. at 7:36-38 (“The temperature at
`
`which the soot fraction of the particulate matter combusts is lowered by the
`
`presence of the catalyst composition disposed on the soot filter.”); see also id. at
`
`14:10-15:35. This allowed for some “passive regeneration” of the filter at
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`temperatures accessible under normal engine duty cycles, reducing the need for
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`high-temperature regeneration processes that could melt or damage the filter.
`
`Furthermore, although conventional wisdom advised that a higher catalyst
`
`loading on the soot filter would “lead to unacceptably high back pressure within
`
`the exhaust system,” (id. at 3:4-6), the inventors of the ’982 patent unexpectedly
`
`succeeded in applying higher catalyst loadings to the filter in such a way that it
`
`permeated the filter pores without exacerbating backpressure issues. See, e.g., id.
`
`at 13:11-24, Fig. 6.
`
`15
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`

`
`C. Overview Of The Cited References
`The Petition alleges four grounds of obviousness, which rely on various
`
`
`
`combinations of the following four references:
`
` Ex. 1003, Japanese Patent Application Publication H1-151706 to Muraki et
`al., published June 14, 1989 (hereinafter, “Muraki”).
` Ex. 1006, Japanese Patent Application Publication 2002-159859 to Taoka et
`al., published June 4, 2002 (hereinafter, “Taoka”).
` Ex. 1008, U.S. Patent No. 4,849,399 to Joy, issued July 18, 1989
`(hereinafter, “Joy”).
` Ex. 1011, U.S. Patent No. 5,516,497 to Speronello et al., filed April 1, 1991
`(hereinafter, “Speronello”).
`1. Muraki
`
`Muraki is the 1989 publication of Japanese Patent Application Publication
`
`No. H1-151706, which Petitioner characterizes as the “primary prior art reference”
`
`in its Petition. Petition at 2. Muraki discloses “a catalyst for simultaneously
`
`removing nitrogen oxides and combustible fine particles such as carbon contained
`
`in exhaust gas...and...a filter employing said catalyst.” Ex. 1003 at 3:1-6.
`
`However, unlike the ’982 patent, which uses an ammonia-based SCR reaction to
`
`effectively remove NOx from diesel exhaust, Muraki uses hydrocarbons in the
`
`exhaust stream to reduce NOx.
`
`Other than disclosing that its catalyst component is a copper-zeolite catalyst
`
`that is wash-coat loaded onto a filter, Muraki is largely silent on the characteristics
`
`16
`
`

`
`of its catalyst. Muraki acknowledges that accumulation of particulate matter on a
`
`filter causes clogging, which can lead to pressure loss, and Muraki indicates that its
`
`filter walls have through-holes, which “are preferably 5μm to 50 μm.” Id. at 3:12-
`
`14, 7:30. However, Muraki does not disclose filter porosity or the effect its
`
`catalyst loading may have on the issue of backpressure. Id. at 7:30.
`
`Taoka
`
`2.
`Taoka is a 2002 publication of Japanese Patent Application Publication No.
`
`2002-159859 that discloses a traditional catalyst carrying filter configured such
`
`that the filt