IPR2019-00960
`U.S. Patent No. RE38,844
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
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`MAHLE FILTER SYSTEMS OF NORTH AMERICA, INC.
`Petitioner
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`v.
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`INGEVITY SOUTH CAROLINA, LLC
`Patent Owner
`_________________________
`
`Case No. IPR2019-00960
`Patent RE38,844
`_________________________
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`INGEVITY SOUTH CAROLINA, LLC’S PATENT OWNER’S
`PRELIMINARY RESPONSE
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`
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`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`U.S. Patent No. RE38,844
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`MAHLE FILTER SYSTEMS OF NORTH AMERICA, INC.
`Petitioner
`
`v.
`
`INGEVITY SOUTH CAROLINA, LLC
`Patent Owner
`_________________________
`
`Case No. IPR2019-00960
`Patent RE38,844
`_________________________
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`INGEVITY SOUTH CAROLINA, LLC’S PATENT OWNER’S
`PRELIMINARY RESPONSE
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`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2019-00960
`U.S. Patent No. RE38,844
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`TABLE OF CONTENTS
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`I.
`II.
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`Page
`Introduction ...................................................................................................... 1
`Background ...................................................................................................... 7
`A. Overview of the ’844 Patent .................................................................. 7
`B.
`The Alleged Prior Art Asserted by Petitioner ....................................... 9
`1.
`Overview of Park ........................................................................ 9
`2.
`Overview of Meiller ..................................................................14
`3.
`Overview of Abe .......................................................................15
`III. The Petition Should Be Denied Because Petitioner Failed to Show How
`the Asserted Prior Art or Arguments Differ from Those Already
`Considered By the PTO .................................................................................16
`A. Overview of Prosecution History ........................................................17
`B.
`References Specifically Considered During Prosecution ...................20
`1.
`Park (U.S. Patent No. 5,914,294) .............................................20
`2.
`AAPA (Applicant Admitted Prior Art) .....................................21
`3.
`Tennison (WO 92/01585) .........................................................22
`References Substantially the Same as References Specifically
`Considered During Prosecution ..........................................................23
`1.
`References Considered During First Consideration .................24
`a)
`U.S. Patent No. 6,279,548 (Reddy) ................................25
`b)
`KR 2002012826 (Oh) .....................................................26
`References Considered During Request for Continued
`Examination ..............................................................................27
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`C.
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`2.
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`i
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`IPR2019-00960
`U.S. Patent No. RE38,844
`TABLE OF CONTENTS (continued)
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`V.
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`2.
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`Page
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`EP 1 113 163 (Uchino) ...................................................27
`a)
`U.S. Patent No. 5,460,136 (Yamazaki) ..........................30
`b)
`References Considered During Reissue Examination ..............31
`3.
`IV. The Petition Should Be Denied Because the Low IAC Adsorbent
`Volume Limitation Cannot Be Found Obvious Under an Inherency
`Theory as a Matter of Law ............................................................................32
`The Petition Should Be Denied Because Petitioner Did Not Demonstrate
`a Reasonable Likelihood of Success for the Grounds Advanced ..................36
`A. Ground 1: The Challenged Claims are Not Obvious over the
`Combination of Meiller, Park, and AAPA At Least Because
`Those References Do Not Disclose the Low IAC Adsorbent
`Volume Limitation ..............................................................................36
`1.
`Park’s Honeycombs Do Not Necessarily Have an IAC Less
`Than 35 g/L ...............................................................................38
`Petitioner’s Hypothetical Honeycomb Does Not Render the
`Low IAC Adsorbent Volume Limitation Obvious ...................39
`a)
`Petitioner’s Hypothetical Honeycomb ...........................40
`b)
`The Asserted Prior Art Does Not Disclose
`Petitioner’s Hypothetical Honeycomb ...........................42
`(1)
`The Asserted Prior Art Does Not Disclose
`That Formulation D, or Any Other
`Composition or Structure, Is Intended for Use
`in Conjunction With a Fuel Vapor Canister .........42
`The Asserted Prior Art Does Not Disclose
`Using BAX 1100 or BAX 1500 in a
`Honeycomb ..........................................................47
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`(2)
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`ii
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`IPR2019-00960
`U.S. Patent No. RE38,844
`TABLE OF CONTENTS (continued)
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`(3)
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`c)
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`Page
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`Park Does Not Disclose That Formulation D
`Can Be Made With Petitioner’s Voidage
`Percentage ............................................................49
`Petitioner’s Hypothetical Honeycomb Does Not
`Necessarily Have An IAC Less Than 35 g/L .................49
`(1)
`Petitioner’s Reliance on BAX 1500 Is
`Misplaced .............................................................51
`(2) Volumetric Dilution Alone Does Not
`Guarantee That Petitioner’s Hypothetical
`Honeycomb Has an IAC Less Than 35 g/L .........53
`(3) Compositional Dilution Does Not Guarantee
`That Petitioner’s Hypothetical Honeycomb
`Has an IAC Less Than 35 g/L ..............................54
`It Is Impossible To Deduce the IAC Of
`Petitioner’s Hypothetical Honeycomb From
`Example 2 of the ’844 Patent ...............................55
`Ground 2: The Challenged Claims are Not Obvious over the
`Combination of Abe, Park, and AAPA Because the References
`Do Not Disclose the Low IAC Adsorbent Volume Limitation ..........60
`Ground 3: The Challenged Claims are Not Obvious over the
`Combination of Meiller, Park, and Tennison Because the
`References Do Not Disclose the Low IAC Adsorbent Volume
`Limitation ............................................................................................62
`VI. Objective Indicia of Nonobviousness Also Show that the Challenged
`Claims are Not Obvious ................................................................................62
`VII. Conclusion .....................................................................................................64
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`(4)
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`B.
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`C.
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`iii
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`IPR2019-00960
`U.S. Patent No. RE38,844
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`BASF Corp. v. Ingevity South Carolina, LLC,
`IPR2019-00202, Paper 10 (May 13, 2019) ................................................... 1, 3, 8
`Conopco, Inc. v. Procter & Gamble Co.,
`IPR2014-00628, Paper 21 (PTAB Oct. 20, 2014) ........................................ 16, 17
`Continental Can Co. USA, Inc. v. Monsanto Co.,
`948 F.2d 1264 (Fed. Cir. 1991) .................................................................... 37, 38
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) ................................................. 2
`Honeywell Int’l v. Mexichem Amanco Holding,
`865 F.3d 1348 (Fed. Cir. 2017) ................................................................ 6, 33, 36
`Par Pharmaceutical, Inc. v. TWi Pharmaceuticals, Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) .......................................................................... 38
`Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC,
`IPR2018-01756, Paper No. 7 (PTAB Mar. 11, 2019) .......................................... 2
`Unified Patents Inc. v. Berman,
`IPR2016-01571, Paper 10 (PTAB Dec. 14, 2016) ............................................. 17
`WL Gore & Associates, Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) .............................................................. 37, 55-56
`Statutes
`35 U.S.C. § 314(a) ........................................................................................... 1, 7, 16
`35 U.S.C. § 325(d) ........................................................................................... 1, 4, 17
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`IPR2019-00960
`U.S. Patent No. RE38,844
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`Regulations
`37 C.F.R. § 42.6(a)(3) ................................................................................................ 3
`37 C.F.R. § 42.22(a)(2) ............................................................................................ 52
`37 C.F.R. § 42.104(b)(4) ............................................................................................ 5
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`IPR2019-00960
`U.S. Patent No. RE38,844
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`Exhibit List
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`Exhibit Number
`2001
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`Description
`Declaration of Dr. James A. Ritter
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`2002
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`2003
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`2004
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`File History of U.S. Patent No. 6,540,815
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`U.S. Patent No. 6,279,548 to Reddy
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`U.S. Patent No. 5,460,136 to Yamazaki et al.
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`IPR2019-00960
`U.S. Patent No. RE38,844
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`I.
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`Introduction
`The Board should deny institution because the Petition in this proceeding is
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`a “copycat” of an IPR petition for which the Board has already denied institution.
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`As Petitioner MAHLE Filter Systems North America, Inc. (“MAHLE” or
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`“Petitioner”) admits, MAHLE’s IPR petition (Paper No. 1; the “Petition”) is
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`“intentionally identical” to the IPR petition filed by BASF Corporation (“BASF”)
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`in Case No. IPR2019-00202 (the “BASF IPR”): according to MAHLE, in its
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`Petition, the “same claims are challenged . . . based on the same prior art, same
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`claim charts, and same claim constructions.” Paper No. 3 at 1, 4–5. MAHLE adds
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`that the “same expert declarant is used, and the expert’s declarations in the two
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`cases are substantively identical.” Id. at 5. The Board denied institution in the
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`BASF IPR based on the merits of BASF’s IPR petition, reasoning that the record in
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`the BASF IPR did not “demonstrate a reasonable likelihood that BASF will prevail
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`with respect to any claim challenged in the Petition.” BASF Corp. v. Ingevity
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`South Carolina, LLC, IPR2019-00202, Paper 10 at *23 (May 13, 2019) (the “BASF
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`Institution Denial”).
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`The Board’s previous rejection of the exact same grounds is reason enough
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`for the Board to exercise its discretion under Section 314(a) to deny institution.
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`Indeed, Section 325(d) speaks directly to this circumstance, permitting the Board
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`to “take into account whether, and reject the petition or request because, the same
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`U.S. Patent No. RE38,844
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`or substantially the same prior art or arguments previously were presented to the
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`Office.” The Board has in the past exercised its discretion to deny institution in
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`similar circumstances and should do so again here. See Samsung Elecs. Am., Inc.
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`v. Uniloc 2017 LLC, IPR2018-01756, Paper No. 7 at *29-30 (PTAB Mar. 11,
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`2019) (denying institution because “General Plastic sets forth several factors we
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`consider when exercising our discretion to institute trial, including whether the
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`same prior art or arguments were previously presented to the Office, and the finite
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`resources of the Board” and “most of the prior art and arguments advanced by
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`Petitioner are the same as or substantially the same as the prior art and arguments
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`advanced in the Apple, Apple II, and HTC IPRs.”) (citing General Plastic
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`Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, slip op.
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`at 18-19 (PTAB Sept. 6, 2017) (Precedential)).
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`To the extent that the Board reaches the merits of the Petition, institution
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`should be denied for at least the same reasons that Patent Owner Ingevity South
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`Carolina, LLC (“Patent Owner”) set forth in its Patent Owner Preliminary
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`Response in the BASF IPR and with which the Board agreed in the BASF
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`Institution Denial. See BASF Corp. v. Ingevity South Carolina, LLC, IPR2019-
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`00202, Paper 6 (February 14, 2019) (the “BASF IPR POPR”). For example, the
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`Board found persuasive “several” of Patent’s Owner’s arguments regarding the
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`Meiller-Park grounds’ failure to teach or render obvious the claimed requirement
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`U.S. Patent No. RE38,844
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`of a subsequent adsorbent volume having an incremental adsorption capacity
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`below 35 g/L. BASF Institution Denial at 16. As such, despite the preliminary
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`stage of the proceeding, the Board found that the “evidence provided with the
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`Petition is wholly lacking in several key respects” (id. at 20) and that BASF’s
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`inherency theory was insufficient because “BASF has not shown that an IAC
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`below 35 g/L would have been anything other than one possible result from
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`combining Meiller and Park to create a staged system for reducing DBL
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`emissions” (id. at 21). And the Board found that the remaining Abe-Park-AAPA
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`grounds were “insufficient for the same reasons discussed” with respect to the
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`Meiller-Park grounds, specifically, that “BASF again relies on a theory of
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`inherency that is unsupported by the evidence presented with the Petition.” Id. at
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`22. The Board’s thorough analysis in the BASF Institution Denial applies with at
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`least equal force to MAHLE’s copycat petition. Accordingly, institution should be
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`denied with respect to MAHLE’s copycat petition.
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`Out of an abundance of caution with respect to the prohibition of
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`incorporating arguments by reference, see 37 C.F.R. § 42.6(a)(3), Patent Owner
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`has set forth below arguments substantively identical to the arguments that it made
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`in its BASF IPR POPR. As the Board has already declared, these arguments show
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`that the Petition fails to establish a reasonable likelihood that Petitioner will prevail
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`with respect to any challenged claim.
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`*
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`*
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`*
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`Institution should be denied for at least two reasons. First, the Board should
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`exercise its discretion to deny the Petition because Petitioner failed to show that the
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`asserted prior art is not substantially the same as prior art already considered by the
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`Patent and Trademark Office (“PTO”). 35 U.S.C. § 325(d). Put another way,
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`Petitioner is seeking review without showing that it has found any new prior art
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`that shows anything different from what the Office has already considered multiple
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`times. That likely explains why Petitioner did not attempt to meets its burden in
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`the Petition—because it cannot. Substantially the same prior art has already been
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`considered by the PTO at least three times. The challenged patent, U.S. Patent No.
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`RE38,844 (“the ’844 Patent”) originally issued as U.S. Patent No. 6,540,815 (“the
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`’815 Patent”), which issued from Application No. 10/100,362 (“the ’362
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`Application”). During prosecution of the ’362 Application, the PTO considered
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`prior art substantially the same as that proposed by Petitioner. After a Notice of
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`Allowance, Applicant (Patent Owner’s corporate predecessor) submitted a Petition
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`for Withdrawal from Issue and a Request for Continued Examination (“RCE”) to
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`consider additional prior art identified by the European Patent Office during
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`prosecution of a related application. This additional prior art included references
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`also substantially similar to the prior art submitted by Petitioner. After
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`consideration, the PTO granted the ’815 Patent. Then, a reissue application for the
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`U.S. Patent No. RE38,844
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`’815 Patent was filed, which became the ’844 Patent. During the reissue process,
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`the PTO again—for the third time—considered substantially similar prior art.
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`Each time, the PTO found the claims patentable over the prior art and issued the
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`then-pending claims. The PTO should not expend additional resources to again
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`consider substantially the same prior art in this Petition for a fourth time when the
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`petitioner made no effort to explain why its art is non-cumulative, and failed to find
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`any truly new art.
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`Second, the Petition should also be denied because it fails to meet its burden
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`to show where each element of the challenged claims is found in the prior art. 37
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`C.F.R. § 42.104(b)(4). In particular, Petitioner fails to show where the prior art
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`discloses a subsequent adsorbent volume having an incremental adsorption
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`capacity (“IAC”) of less than 35 grams of n-butane per liter of adsorbent between
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`vapor concentrations of 5 volume % and 50 volume % of n-butane (the “Low IAC
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`Adsorbent Volume”), as found in each independent claim. Tellingly, Petitioner
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`admits the asserted prior art does not disclose this element. (Petition at 28
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`(“Neither Meiller nor Park explicitly discloses that the honeycomb has the IAC
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`recited in the claims.”), 63 (“Abe does not explicitly disclose that its subsequent
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`adsorbent has the IAC recited in the independent claims.”).) Instead, Petitioner
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`argues that this missing element is inherent. But it fails to establish inherency for
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`several reasons. First, the Petition fails as a matter of law because the grounds
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`U.S. Patent No. RE38,844
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`advanced in the Petition include only obviousness, and Petitioner fails to show that
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`the alleged “inherent” feature in its proposed obviousness combination was known
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`or expected. “[T]hat which may be inherent is not necessarily known and that
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`which is unknown cannot be obvious.” Honeywell Int’l v. Mexichem Amanco
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`Holding, 865 F.3d 1348, 1354 (Fed. Cir. 2017). Second, the Petition fails to meet
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`its evidentiary burden to establish that the element would be necessarily present in
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`the prior art it cites.
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`Even if inherency could fulfill the missing element (it cannot), and even if
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`the proposed combinations could teach the challenged claims (they do not), the
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`Petition fails to even address strong objective indicia of non-obviousness that
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`Patent Owner presented to Petitioner during the related, co-pending ITC
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`proceeding. Despite having reviewed Patent Owner’s evidence and knowing that
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`Patent Owner contends that objective factors demonstrate the non-obviousness of
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`the challenged claims, Petitioner fails to address any of the evidence establishing
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`unexpected results, fifteen years of commercial success, long-felt need, industry
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`respect, praise from others, and copying by Petitioner itself. Its failure to address
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`this evidence is yet another reason why the PTAB should decline to institute
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`review.
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`The Petition does not establish “a reasonable likelihood that the Petitioner
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`would prevail with respect to at least one of the Challenged Claims in the Petition.”
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`IPR2019-00960
`U.S. Patent No. RE38,844
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`35 U.S.C. § 314(a). While Patent Owner would present additional evidence to
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`challenge the merits of the Petitioner’s allegations and assertions during an
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`instituted proceeding, the deficiencies identified here demonstrate that Petitioner
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`has not met its burden to demonstrate a reasonable likelihood that it will prevail in
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`showing unpatentability of any of the Challenged Claims.
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`II. Background
`A. Overview of the ’844 Patent
`Motor vehicles use evaporative emissions control systems to capture vapors
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`from their fuel tanks to reduce the emission of polluting fuel vapors to the
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`atmosphere. (Ex. 1001 at 1:26–57.) Canisters filled with activated carbon
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`adsorbents (“fuel vapor canisters”) are the primary component of typical
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`evaporative emissions control systems. The ’844 Patent teaches a technology for
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`enhancing the performance of fuel vapor canisters. (Id. at 1:14–23.)
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`As the ’844 Patent describes, fuel vapor canisters at the time of the Patent
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`used adsorbents with high working capacities. (Id. at 2:12–14.) However, these
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`canisters suffered from a condition called “diurnal breathing loss” (DBL)
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`emissions. (Id. at 2:35–55.) Although various options had been suggested to
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`reduce DBL emissions, each had drawbacks and/or limitations. (Id. at 2:56–3:40.)
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`The ’844 Patent disclosed for the first time that a better solution was to use a
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`subsequent volume of adsorbent in conjunction with the fuel vapor canister that—
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`U.S. Patent No. RE38,844
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`contrary to industry wisdom—had low working capacity and a flat adsorption
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`isotherm. (Id. at 3:43–50; 4:64–5:5.) This “subsequent volume” of adsorbent is
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`located downstream from the standard, high capacity adsorbent(s) in the fuel vapor
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`canister (which the Patent calls the “initial volume”) in order to adsorb DBL
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`emissions. (Id. at 5:5–18.) The subsequent volume of low capacity adsorbents
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`was unexpectedly effective at reducing DBL emissions. (Id. at 5:56–6:14.)1
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`The ’844 Patent uses a metric it calls “incremental adsorption capacity”
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`(IAC) to distinguish between high capacity adsorbents that are best suited to
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`function as the initial volume and low capacity adsorbents suitable for the
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`subsequent volume. (Id. at 3:51–53.) All four of the independent Challenged
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`Claims in the ’844 Patent include similar “incremental adsorption capacity”
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`language:
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` 1 In the interests of good faith and candor, Patent Owner notifies the PTAB that:
`(i) the Patent Owner included this same paragraph in the BASF IPR POPR; and
`(ii) in a parallel district court litigation between Patent Owner and BASF, BASF
`contested the accuracy of some of the statements in this paragraph based on
`non-patent, non-publication information that BASF alleges to be prior
`art. Patent Owner disputes BASF’s assertions. Further, the BASF Institution
`Denial does not indicate that the Board relied on the challenged statements in
`this paragraph in denying BASF’s IPR Petition. See, e.g., BASF Institution
`Denial at 16-23.
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`IPR2019-00960
`U.S. Patent No. RE38,844
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`Initial adsorbent volume
`incremental adsorption capacity at
`25° C. of greater than 35 g n-
`butane/L between vapor
`concentrations of 5 vol % and 50
`vol % n-butane
`incremental adsorption capacity at
`25° C. of greater than 35 g n-
`butane/L between vapor
`concentrations of 5 vol % and 50
`vol % n-butane
`incremental adsorption capacity at
`25° C. of greater than 35 g n-
`butane/L-bed between vapor
`concentrations of 5 vol % and 50
`vol % n-butane
`incremental adsorption capacity at
`25° C. of greater than 35 g n-
`butane/L-bed between vapor
`concentrations of 5 vol % and 50
`vol % n-butane
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`Subsequent adsorbent volume
`incremental adsorption capacity of
`less than 35 g n-butane/L between
`vapor concentrations of 5 vol %
`and 50 vol % n-butane
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`incremental adsorption capacity at
`25° C. of less than 35 g n-butane/L
`between vapor concentrations of 5
`vol % and 50 vol % n-butane
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`incremental adsorption capacity at
`25° C. of less than 35 g n-butane
`between vapor concentrations of 5
`vol % and 50 vol % n-butane
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`incremental adsorption capacity at
`25° C. of less than 35 g n-butane
`between vapor concentrations of 5
`vol % and 50 vol % n-butane
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`Claim
`1
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`18
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`31
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`43
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`B.
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`The Alleged Prior Art Asserted by Petitioner
`1. Overview of Park
`Petitioner relies on U.S. Patent No. 5,914,294 (“Park”) for all Grounds
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`presented in the Petition. Park discloses methods for manufacturing adsorptive
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`monoliths comprising activated carbon. (Ex. 1010 at 4:9–13.) As illustrated in
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`Park’s Figure 1, Park discloses that such adsorptive monoliths can have a
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`honeycomb shape or structure. (Ex. 1010 at Abstract, 4:9–13.) Park does not
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`disclose or mention any adsorptive properties, including adsorption capacity or
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`IAC, of its honeycombs. Park’s disclosed methodology for manufacturing
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`honeycombs involves multiple variables that will affect the honeycombs’
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`adsorptive properties, including their IAC. (Ex. 2001 at ¶¶23–31.)
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`In general, Park discloses extruding a honeycomb monolith using a mixture
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`of activated carbon, a ceramic forming material, a flux material, and water, that is
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`then dried and fired. (Ex. 1010 at 2:22–38, 4:45–55.) As explained further below,
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`monoliths created within the parameters of these disclosures would have a very
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`wide range of adsorptive properties, including IAC.
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`One component of the extrudable mixture is activated carbon. This is the
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`material that adsorbs the adsorbate. (Ex. 2001 at ¶¶25.) The adsorptive properties
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`of activated carbons differ greatly by source. (Id.) Park discloses that the
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`activated carbon “may be made from a variety of precursors including bituminous
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`coal, lignite, peat, synthetic polymers, petroleum pitch, petroleum coke, coal tar
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`pitch, and lignocellulosic materials. Suitable lignocellulosic materials include
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`wood, wood dust, wood flour, sawdust, coconut shell, fruit pits, nut shell, and fruit
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`stones.” (Ex. 1010 at 5:19–25.) This wide range of potential sources for the
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`activated carbon in the honeycomb will result in a wide range of adsorptive
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`properties, including IAC. (Ex. 2001 at ¶25.)
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`The amount of activated carbon in the mixture will also affect the
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`honeycomb’s IAC. (Ex. 2001 at ¶26.) Park provides that “activated carbon is
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`desirably present in the extrudable mixture in an amount from about 20 to about 70
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`parts, by weight, and more desirably, in an amount from about 30 to about 50 parts,
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`by weight.” (Ex. 1010 at 4:64–67.) This range from 20 to 70 parts by weight
`
`represents a 250% increase in carbon content from the low end of the range to the
`
`high end. This variation will have a large effect on the resulting honeycomb’s
`
`adsorptive properties, including its IAC. (Ex. 2001 at ¶26.)
`
`Park also discloses the cell density, or cells per square inch (cpsi), and the
`
`cell wall thickness of its honeycombs. These factors also impact the honeycombs’
`
`adsorptive properties, including IAC. (Ex. 2001 at ¶29.) Park discloses a cell
`
`density ranging “from 1 to 800 cells per square inch or higher” and cell wall
`
`thickness ranging from “about 150 mils to about 5 mils.” (Ex. 1010 at 7:27–30.)
`
`With such broad ranges, it is clear that the range of adsorptive properties, including
`
`IAC, of resulting honeycombs also will be very broad. (Ex. 2001 at ¶29.)
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`Related to cell density and cell wall thickness, the honeycomb’s open frontal
`
`area is another factor that will affect its adsorptive properties. (Ex. 2001 at ¶30.)
`
`“The open frontal area of the monolith is the percentage of open area of the
`
`monolith taken across a plane substantially perpendicular to the length of the
`
`monolith.” (Ex. 1010 at 7:18–20.) Park discloses an open frontal area “greater
`
`than 70 percent and up to about 85 percent, and desirably about 73.8 percent.”
`
`(Ex. 1010 at 7:15–18.) Increasing the open frontal area of the monolith achieves
`
`volumetric dilution of the honeycomb’s activated carbon adsorbent, thus reducing
`
`the honeycomb’s IAC. (Ex. 2001 at ¶30.) Open frontal area, cell density, and cell
`
`wall thickness are interrelated such that fixing a value for one will affect the values
`
`that are possible for the other two as these three features compete for available
`
`space in the relevant cross section of the monolith. (Id.)
`
`After extrusion, Park’s honeycomb is dried using a variety of methods
`
`including vacuum drying, freeze drying, humidity control drying, dielectric drying,
`
`and warm air drying with the monolith wrapped in plastic. (Ex. 1010 at 7:31–
`
`8:35.) According to Park, the drying method can affect the size and shape of the
`
`monolith, and thus its volume. (Ex. 1010 at 7:51–53.) This will in turn affect the
`
`IAC, which is calculated in units of mass adsorbate per volume adsorbent. (See
`
`Ex. 1001 at 9:33–42; Ex. 2001 at ¶27.)
`
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`After drying, Park’s honeycomb is fired at a high temperature. Park
`
`discloses a temperature range for firing the honeycomb monolith “from about 1600
`
`to 1900° F.”2 (Ex. 1010 at 8:37–39.) Park discloses that the firing temperature
`
`will affect the apparent density of the honeycomb. (Id. at 10:45–48, Fig. 4.) As
`
`the ’844 Patent teaches, this too will affect IAC since it is calculated in units of
`
`mass adsorbate per volume adsorbent. (See Ex. 1001 at 9:33–42.) Additionally,
`
`the firing temperature can affect the adsorptive properties of the activated carbon
`
`in the honeycomb directly by altering its pores. (Ex. 2001 at ¶28.)
`
`In sum, Park discloses many parameters—and large variations within those
`
`parameters—for its honeycombs. These parameters affect the adsorptive
`
`properties of its honeycombs, including the honeycombs’ IACs. (Ex. 2001 at
`
`¶¶23–31.) This is in keeping with Park’s very purpose: that the “carbon-containing
`
`ceramic monoliths of this invention can be used in a variety of applications owing
`
`to the wide range of carbon content which the monoliths can contain.” (Ex. 1010
`
`at 8:65–9:1.) But Park neither discloses IAC nor provides any disclosure regarding
`
`how to select among these variables to achieve a desired IAC for a desired
`
`
` 2 Contrary to Park’s disclosures, Petitioner’s hypothetical “Meiller-Park
`honeycomb” is fired at a temperature of 2000° F.
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`application. And given Park’s highly variable parameters, it is safe to say that
`
`using Park could lead to many millions of possible outcomes.
`
`2. Overview of Meiller
`Petitioner relies on U.S. Patent No. 6,896,852 (“Meiller”) for Grounds 1 and
`
`3 in the Petition. Meiller “relates to evaporative emissions control systems in
`
`motor vehicles.” (Ex. 1016 at 1:11–12.) It discloses a “hydrocarbon emissions
`
`scrubber” that is “coated with or constructed of a sorbent material.” (Id. at 2:48–
`
`57.) As depicted in Figure 10, an embodiment of Meiller includes a canister
`
`assembly and scrubber assembly as separate compartments for adsorbent material.
`
`(See id. at 8:14–29; Figure 10.) It describes its scrubber as having a “matrix or
`
`honeycomb-like structure.” (Id. at 4:40–41.)
`
`Meiller does not disclose, or even mention, anything related to the
`
`adsorptive properties, including the adsorption capacity or IAC, of its scrubber.
`
`
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`U.S. Patent No. RE38,844
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`3. Overview of Abe
`Petitioner relies on Japanese Patent Application Publication No. 10-37812
`
`(“Abe”) for Ground 2 in the Petition. As illustrated in Figure 4 reproduced below,
`
`Abe discloses a “fuel evaporation preventing device” with first and second
`
`adsorbent canisters connected in series and where “the volume [of the second
`
`canister] is at least 2% and not more than 20% of the volume of the first canister.”
`
`(Ex. 1009 at Abstract.) Abe also discloses that the second canister adsorbent can
`
`have a honeycomb shape. (Ex. 1009 at ¶16.) The focus of Abe is on the second,
`
`small canister: “the inventors … learned … that the provision of a separate small
`
`second canister as a dedicated leak countermeasure is effective in adsorbing
`
`[gasoline vapors], and arrived at the present invention based thereon.” (Ex. 1009
`
`at ¶8.)
`
`
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`U.S. Patent No. RE38,844
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`Abe discloses that the two canisters must be separate but connected in series.
`
`(Ex. 1009 at ¶13.) Additionally, “the provision of an orifice between the two
`
`canisters further prevents flow of the gasoline vapors, thus enabling a reduction in
`
`the amount of evaporation; however, there is a drawback in that this increases
`
`pressure loss.” (Ex. 1009 at ¶15.)
`
`Solely to address this issue of pressure loss, Abe recommends using a
`
`honeycomb. Abe discloses that an activated carbon honeycomb is preferred for the
`
`second canister because its shape reduces pressure loss. (Ex. 1009 at ¶16
`
`(“[W]hile there is no particular limitation on the shape of the activated carbon for
`
`filling the second canister, a honeycomb activated carbon is preferred since
`
`pressure loss tends to increase [when] a second canister is added, so this shape is
`
`well suited for this configuration due to its high adsorption speed.”).) Thus, Abe’s
`
`use of a honeycomb is unrelated to the adsorptive properties of the honeycomb—
`
`and in fact a honeycomb shape is not even required by Abe.
`
`III. The Petition Should Be Denied Because Petitioner Failed to Show How
`the Asserted Prior Art or Arguments Differ from Those Already
`Considered By the PTO
`“The Board has discretion to decline to institute an inter partes review.”
`
`Conopco, Inc. v. Procter & Gamble Co., IPR2014-00628, Paper 21 at 5 (PTAB
`
`Oct. 20, 2014) (citing 35 U.S.C. § 314(a)). “One factor the Board may take into
`
`account when exercising that discretion is whether ‘the same or substantially the
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`same prior art or arguments previously were presented to the Office.’” Id. This
`
`discretion is referenced in 35 U.S.C. §325(d), which provides: “In determining
`
`whether to institute or order a proceeding under … chapter 31 [inte
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