Volkswagen Group of America, Inc.v.EmeraChem Holdings, LLCDownload PDFPatent Trial and Appeal BoardJan 22, 201612610067 (P.T.A.B. Jan. 22, 2016) Copy Citation Trials@uspto.gov Paper 40 571-272-7822 Entered: 22 January 2016 UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ VOLKSWAGEN GROUP OF AMERICA, INC., Petitioner, v. EMERACHEM HOLDINGS, LLC, Patent Owner. __________ Case IPR2014-01557 Patent 7,951,346 B2 __________ Before FRED E. McKELVEY, JAMES T. MOORE, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. McKELVEY, Administrative Patent Judge. DECISION Final Written Decision 35 U.S.C. § 318(a) I. Introduction Pending before the Board is entry of a Final Written Decision. 35 U.S.C. § 318(a). A Petition was filed on 30 September 2014. Paper 3. An inter partes review trial was ordered on 16 March 2015. Paper 13. IPR2014-01557 Patent 7,951,346 B2 2 Patent Owner timely filed an Opposition to the Petition on 19 June 2015. Paper 21. Petitioner timely filed a Reply on 18 September 2015. Paper 24. Patent Owner has also filed a Motion to Exclude (Paper 29). Petitioner has opposed. Paper 33. II. Background A. The Parties Petitioner is Volkswagen Group of America, Inc. Paper 3, page 1. Patent Owner is EmeraChem Holdings, LLC. Paper 6, page 2. B. Involved Patent The involved patent is unexpired U.S. Patent 7,951,346 B2 (“the ʼ346 patent”) issued 31 May 2011, based on an application filed under 37 C.F.R. § 1.47(a) on 30 October 2009. Ex. 1001. The records of the PTO reveal that named inventor Gregory J. Wagner declined to join in filing the application. Ex. 1002A, pages 66–67 and 86–88. C. Litigation The ʼ346 patent is involved in litigation, viz., EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc., Volkswagen AG, and Volkswagen Group of America Chattanooga Operations, LLC, No. 14-cv-132-PLR-HBG (E.D. Tenn. filed Mar. 31, 2014). Paper 3, page 1; Paper 10, pages 1–2. An amended complaint was served on defendant Volkswagen Group of America Chattanooga Operations, LLC, on 6 November 2014. Paper 10, page 2. IPR2014-01557 Patent 7,951,346 B2 3 An amended complaint was served on defendant Volkswagen Group of America, Inc., on 6 November 2014. Paper 10, page 1. An amended complaint was served on defendant Volkswagen AG on 8 January 2015. Id. D. Evidence Relied Upon The following evidence, listed by exhibit number, is relied upon to the extent that an IPR was instituted: Name Exhibit No. Description Date Pfeifer et al. “Pfeifer” 1004A U.S. Patent Application Publication No. 2006/0270548 A1 30 Nov. 2006 Otake et al. “Otake” 1007A U.S. Patent No. 7,062,906 B2 20 June 2006 MECA1 1008A Final Report, Demonstration of Advanced Emission Control Technologies Enabling Diesel-Powered Heavy-Duty Engines to Achieve Low Emission Levels, Manufacturer of Emission Controls Ass’n June 1999 Baird et al. “Baird” 1009A U.S. Patent Application Publication No. 2008/0163610 A1 10 July 2008 filed 5 Jan. 2007 The ʼ346 patent issued on 31 May 2011, based on an application filed on 30 October 2009. Ex. 1001, page 1. 1 MECA means “Manufacturers of Emission Controls Association.” Ex. 1008A, page 1. IPR2014-01557 Patent 7,951,346 B2 4 The ʼ346 patent claims priority based on U.S. Provisional Application No. 61/110,482, filed 31 October 2008. Pfeifer, Otake, and MECA are prior art under 35 U.S.C. § 102(b). Baird is prior art under 35 U.S.C. § 102(b) as to claims not entitled to benefit of the provisional application; it is prior art under 35 U.S.C. § 102(a) as to claims entitled to benefit. Patent Owner has not attempted to antedate Baird. E. Grounds Claims 1–65 appear in the ʼ346 patent. Ex. 1001, col. 22:20–col. 26:7. An inter partes review trial was instituted as to the grounds and claims shown in Table 1 (I means instituted; NI means not instituted). Table 1 Claim Muller PCT or Muller US § 102 Ground 1 Otake and MECA § 103(a) Ground 2 Otake and Pfeifer § 103(a) Ground 3 Baird and MECA § 103(a) Ground 4 Baird and Pfeifer § 103(a) Ground 5 1 NI I I I I 5 I I I I 6 I I 9 NI I I I I 10 I I 12 I I 16 I I 39 I I I I 41 NI I I I I IPR2014-01557 Patent 7,951,346 B2 5 45 I I I I 46 I I 49 NI I I I I See Paper 13, pages 5–6. Apart from claims mentioned in Table 1, Petitioner did not challenge the remaining claims of the ’346 patent. F. Oral Argument Oral argument was held on 23 November 2015. Prior to oral argument, and based on the Petition, Opposition, and Reply, the Board invited the parties to address specific issues at oral argument. Paper 36, pages 3–8. A transcript of oral argument has been placed in the record. Paper 39. Some of the oral argument presented by both parties was not consistent with oral argument procedure applicable before the Board. In particular, arguments were made that were not based on arguments in the Petition, Opposition, or Reply. In addition, explanations were proffered that are not supported by evidence in the record or arguments previously made in the Petition, Opposition, or Reply. See, e.g., Transcript of Oral Argument, Paper 39, page 11:23 through page 12:3. Oral argument is governed in part by 37 C.F.R. § 42.70(a) (first sentence): (a) A party may request oral argument on an issue raised in a paper at a time set by the Board. (italics added) The Trial Practice Guidelines advise as follows: IPR2014-01557 Patent 7,951,346 B2 6 A party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted. No new evidence or arguments may be presented at the oral argument. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (col. 2) (Aug. 14, 2012). (Italics added). The rationale in support of the Rule and Guideline is fundamental fairness to an opponent. 37 C.F.R. § 42.1(b) (Part 42 “shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.”) It is not just to an opponent for a party to raise an argument not based on the Petition, Opposition, or Reply, or to discuss evidence not in the record. Why? There is no meaningful opportunity for the opponent to rebut the argument or address the evidence. Likewise, the Board is at a disadvantage because judges do not prepare for oral argument based on arguments and evidence not present in the record. To the extent that arguments and discussions took place at oral argument in this case contrary to the principles set out above, those arguments and discussions have not been considered in rendering a decision on the merits. G. Challenge Grounds Petitioner challenges patentability on the following on Grounds 2–5. We declined to institute an inter partes review trial on Ground 1. IPR2014-01557 Patent 7,951,346 B2 7 Statutory Basis Prior Art Relied On Claims Ground 2 § 103(a) Otake and MECA 1, 5, 9, 39, 41, 45, and 49 Ground 3 § 103(a) Otake and Pfeifer 1, 5, 6, 9, 10, 12, 16, 39, 41, 45, 46, 48, and 49 Ground 4 § 103(a) Baird and MECA 1, 5, 9, 39, 41, 45, and 49 Ground 5 § 103(a) Baird and Pfeifer 1, 5, 6, 9, 10, 12, 16, 39, 41, 45, 46, and 49 H. The ʼ346 Patent The invention is generally understood from claims 1 and 41 of the ʼ346 patent. 1. Claim 1 Claim 1 of the ʼ346 patent, which reads [some indentation and matter in brackets added]: A method for reducing particulate matter in a gaseous stream, the method comprising: [1] contacting the gaseous stream with a catalytic emissions trap comprising a catalyst, [2] wherein particulate matter in the gaseous stream is reduced by 30% or more; and [3] reporting that particulate matter has been reduced. Ex. 1001A, 22:20–25. IPR2014-01557 Patent 7,951,346 B2 8 2. Claim 41 A system for reducing particulate matter in a gaseous stream, the system comprising: [1] a source of a gaseous stream comprising particulate matter; [2] a catalytic emissions trap comprising a catalyst, wherein the catalytic emissions trap is configured such that the gaseous stream contacts the catalyst as the gaseous stream flows through the catalytic emissions trap, [3] wherein particulate matter in the gaseous stream is reduced by 30% or more; [4] and a particulate matter indicator for outputting a result to a user, wherein the result is the amount that particulate matter in the gaseous stream has been reduced. Ex. 1001A, col. 23:52–63. According to the ʼ346 patent: [Described] . . . are systems for reducing emissions of particulate matter from a gaseous stream. Embodiments of the . . . system include at least one emissions trap [e.g., a filter,] that includes a catalyst, i.e., a catalytic emissions trap. The catalytic emissions trap is configured such that the gaseous stream contacts the catalyst as the gaseous stream flows through the trap. In some cases, the catalytic emissions trap reduces particulate matter in the gaseous stream by 30% or more, such as by 50% or more, including by 70% or more, 80% or more, 90% or more, 95% or more, or 98% or more. The catalytic emissions trap may reduce particulate matter precursors in the gaseous stream by 30% or more, such as by 50% or more, including by 70% IPR2014-01557 Patent 7,951,346 B2 9 or more, 80% or more, 90% or more, 95% or more, or 98% or more. Ex. 1001A, 8:46–59 (italics added). Further according to the ʼ346 patent: The emissions trap may be configured to reduce the amount of particulate matter, such as but not limited to hydrocarbons, in a combustion gas stream. Ex. 1001A, 16:42–44. Fig. 2 of the ʼ346 patent is reproduced below. Fig. 2 of the ʼ346 patent depicts a system for reducing emissions of particulate matter from a gaseous stream. The ʼ346 patent explains Fig. 2 as follows. IPR2014-01557 Patent 7,951,346 B2 10 An embodiment of the subject system for reducing particulate matter in a gaseous emissions stream is shown in FIG. 2. As shown in FIG. 2, the system includes two parallel rows of emissions traps positioned in conduits 201 and 202, respectively. The emissions traps may be contacted with an gaseous emissions stream 203. Conduits 201 and 202 may each include four emissions traps in series. In some embodiments, the three downstream emissions traps 204 in conduit 201 include a first catalyst and the upstream emissions trap 205 in conduit 201 includes a second catalyst. The compositions of the first catalyst and the second catalyst may be different. Similarly, the three downstream emissions traps 214 in conduit 202 may include a first catalyst and the upstream emissions trap 215 in conduit 202 may include a second catalyst. The system also includes inlet isolation dampers 206 and outlet isolation dampers 207. The inlet isolation damper and the outlet isolation damper of conduit 202 are both in an open position, which allows gaseous emissions stream 203 to contact emissions traps 215 and 214. The inlet isolation damper and the outlet isolation damper of conduit 201 are both in a closed position, which isolates emissions traps 204 and 205 from the flow of the gaseous emissions stream and allows emissions traps 204 and 205 to be contacted with a regeneration gaseous stream (see FIG. 3 [not reproduced]). Also shown in FIG. 2 is regeneration gas inlet 208 and regeneration gas outlet 209. The regeneration gaseous stream flows through regeneration gas inlet 208 into plenum 210, which includes flow distribution baffles 211. Plenum 210 and flow distribution baffles 211 facilitate even distribution of the regeneration gaseous stream across the emissions traps. The regeneration gaseous stream flows into conduit 201 from plenum 210, contacts emissions traps 204 and 205, and flows out of conduit 201 through regeneration gas outlet 209. Each conduit has its IPR2014-01557 Patent 7,951,346 B2 11 own inlet isolation damper, outlet isolation damper, and system for distributing the regeneration gaseous stream, which allows emissions traps 204 and 205 to be regenerated independently from emissions traps 214 and 215. Ex. 1001A, 14:22–58. III. Analysis—Ground 2 (Otake and MECA) A. Petition According to Petitioner, claims 1, 5, 9, 39, 41, 45, and 49 are unpatentable under 35 U.S.C. § 103(a) over Otake (Ex. 1007A) and MECA (Ex. 1008A). Paper 3, pages 12 and 25–35. Portions of Petitioner’s claim chart said to support an obviousness holding based on Otake and MECA are set out below. Claim 1 Otake and MECA A method for reducing particulate matter in a gaseous stream, the method comprising: Otake: A diesel engine exhaust gas purification system including diesel particulate filter 13 [Fig. 1, reproduced below,] for reducing particulate matter. Ex. 1007[A] at col. 1, ln. 6–9 & col. 2, ln. 28–39. MECA: A diesel particulate filter (DPF-A) for reducing particulate matter in the gaseous exhaust from a DDC Series 60 diesel engine. Ex. 1008[A] at pp. 8 and 14–16. contacting the gaseous stream with a catalytic emissions trap comprising a catalyst, wherein particulate matter in the Otake: A “filter 13 (specifically a diesel particulate filter)” is arranged in the diesel engine’s exhaust gas passage 3. Ex. 1007[A] at col. 2, IPR2014-01557 Patent 7,951,346 B2 12 Claim 1 Otake and MECA gaseous stream is reduced by 30% or more; and ln. 37-39. “The filter 13 collects particulate matter” from the exhaust gas that contacts it. Ex. 1007[A] at col. 2, ln. 39 & Fig. 1. MECA: The exhaust stream from the DDC Series 60 diesel engine contacted the diesel particulate filter DPF-A which reduced particulate matter (“PM”) by 70% and reduced hydrocarbons (“HC”) by 94%. Ex. 1008[A] at pp. 5 and 14–16. reporting that particulate matter has been reduced. Otake: The controller 22 [Fig. 1, reproduced below] reports that particulate matter has been reduced by computing [using a flow chart system shown in Fig. 2, reproduced below,] the summed particulate matter (“PM”) deposition amount PM1, comparing PM1 to a reference amount PMn [Fig. 2, S2], and sending signals to initiate regeneration of the diesel particulate filter when PM deposition amount PM1 is greater than or equal to the reference amount PMn. See Ex. 1007[A] at col. 3, ln. 15– col. 4, ln. 66, & Fig. 2. IPR2014-01557 Patent 7,951,346 B2 13 Otake Figure 1 is reproduced below. Depicted is a schematic diagram of an engine system with an exhaust gas purification device of the Otake invention With reference to Otake Figure 1, a filter, “specifically a diesel particulate filter,” is shown as element 13 collecting particulate matter (PM) in a gas passing through gas exhaust passage 3, an arrow → showing the direction of gas flow. Ex. 1007A, col. 2:31, 36, and 39. See also Ex. 1007A, col. 1:5–9. IPR2014-01557 Patent 7,951,346 B2 14 Otake Figure 2 is reproduced below. Otake Figure 2 depicts a flow chart showing a filter regeneration control performed by the Otake invention Otake Figure 2 is discussed in more detail later in this opinion. IPR2014-01557 Patent 7,951,346 B2 15 According to Petitioner, Otake differs from the subject matter of claim 1 in that Otake does not describe (1) the composition of the diesel particulate matter or (2) the reduction rate achieved by filter 13. Paper 3, page 29, last paragraph, first and second line. We would add that it is not apparent that Otake describes a filter with a catalyst, i.e., a “catalytic emissions trap” required by claim 1. Transcript of Oral Argument, Paper 39, page 18:1–2. Claim 1 of the ʼ346 patent does not call for specific particulate matter. Therefore it is not apparent why the composition of the diesel particulate matter is a difference. To overcome differences, Petitioner turns to MECA. Ex. 1008A. MECA reports in part the following: 2.2 Diesel Particulate Filter Control Performance [T]he baseline emissions for . . . [a] Series 60 engine [tested] were: PM [particulate matter] at 0.073 g/bhp-hr, HC [hydrocarbon] at 0.116 g/bhp-hr and CO [carbon monoxide] at 1.111 g/bhp-hr. . . . [D]ifferent filter technologies were evaluated as a part of the test program: [1] a diesel particulate filter with a catayst coated directly on the filter element (DPF-A) [90 mm Pallflex filters (renumbered page 8, last three lines)] . . . . The first technology was tested on Number 2 diesel fuel (368 ppm) with and without EGR [exhaust gas recirculation] engaged . . . . The results of the testing without EGR engaged are shown in Figure 6. IPR2014-01557 Patent 7,951,346 B2 16 MECA Fig. 6 Depicted are graphs of diesel particulate filter performance. “FTP” means Federal Test Procedure. The original version of Ex. 1008A is color-coded. The DPF-A results are shown dark bars located second-from-the-left in each group of four bars. DPF-A is described as “a diesel particulate filter with a catalyst coated directly on the filter element (DPF-A).” Ex. 1008A, renumbered page 14, last two lines. The baseline is shown as the far-left graph gray bar in each group of four bars. Our own observation of the bars shown in Figure 6 is that particulate matter (PM) is described as having been reduced from approximately 0.072 ppm to approximately 0.22 ppm or approximately 70% [(0.72 - 0.21/0.72) = 0.70 = 70%]. IPR2014-01557 Patent 7,951,346 B2 17 Petitioner’s witness, Dr. Robert J. Farrauto, testified on direct: 19. Otake (Ex. 1007) discloses a technique for regenerating a diesel particulate filter 13 which traps particulate matter in a diesel engine’s exhaust stream. Otake does not disclose the composition of the diesel particulate matter filter 13 or the reduction rates achieved by that filter. 20. MECA presents the results an evaluation of three different diesel particulate filters used on a 1998 Detroit Diesel Corporation (“DDC”) Series 60 diesel engine. Ex. 1008[A] at p. 8. The first of three filters was “a diesel particulate filter with a catalyst coated directly on the filter element”, which was designated “DPF-A”. This filter, DPF-A, reduced particulate matter (“PM”) by 70% [compare with our calculation as set out above] and reduced hydrocarbons (“HC”) by 94%, using Number 2 diesel fuel without the exhaust gas recirculation (“EGR”) engaged. Ex. 1008[A] at pp. 5 and 14-16. 21. In my opinion, a person of ordinary skill in the art would have been motivated by the known 70% reduction in particulate matter emissions achieved by MECA’s DPF- A diesel particulate filter, to substitute MECA’s PDF-A diesel particulate filter for Otake’s diesel particulate filter 13 in order to achieve the predictable result of reducing particulate matter emissions in the Otake diesel engine emission system. Ex. 1017, ¶¶ 19–21 relying on Ex. 1008A, pages 7–8 (renumbered pages 14–15). B. Opposition According to Patent Owner, “both Otake and MECA fail to disclose or suggest . . . a method or system for reducing particulate IPR2014-01557 Patent 7,951,346 B2 18 matter, as this term has been defined in the ‘346 patent, in a gaseous stream by 30% or more.” Paper 21, pages 1–2. Patent Owner “generally agrees with the [claim] construction proposed by Petitioner . . . which is a recitation of the definition given in the ‘346 patent . . . .” Paper 21, page 3. According to Patent Owner, that definition is: Particulate matter is small particles of solid or liquid suspended in a gas and can occur in primary or secondary forms. Primary particulate matter is particles released directly into the atmosphere, such as hydrocarbons, smoke, dust, and the like. Secondary particulate matter, or particulate matter precursors, is emissions (such as NOx, sulfur, ammonia, and the like) that react with other pollutants to form particulate matter. Ex. 1001A, col. 1:15–23. Patent Owner mentions that the ʼ346 patent also refers to EPA methods 201A (Ex. 2010) and 202 (Ex. 2012). Paper 21, page 3; Ex. 1001A, col. 20:22–24. Based on the reference to the two EPA standards, Patent Owner apparently seeks to narrow the meaning of “particulate matter” to “Total Fine Particulate Matter” as set out in Tables 2–4 (col. 20:16–col. 21:10) of Example 2. Because Patent Owner narrowly defines “particulate matter,” Patent Owner believes that it can successfully argue that MECA does not describe a reduction in particulate matter of at least 30%. Paper 21, pages 5–6. IPR2014-01557 Patent 7,951,346 B2 19 Patent Owner states that “[t]he claim requirement of 30% or more is met is the total particulate matter . . . is reduced by 30% or more.” Paper 21, page 5. Relied upon is cross-examination of Dr. Farrauto: Q [by counsel for Patent Owner] My question really was in the context of claim 1, where you talk about reduction of particulate matter by 30 percent, you’d need to look at the different forms of particulate matter that the patent is referring to; is that correct? A Well, you don’t have to look at the different forms, but the total particulate matter has to be reduced. So it could all be potentially just hydrocarbon reduction, or solid reduction; it doesn’t necessarily have to be the ash or the dust or anything else, just the 30 percent applies to what came in, what came out, 30 percent reduction – Q All right. A -- without specifying which components were reduced. Ex. 2009, page 10:5-22 (italics added). We credit Dr. Farrauto’s testimony that the “30 percent applies to what came in, what came out, 30 percent reduction.” Patent Owner also argues that missing from the MECA description of a Pallflex filter is a temperature. Paper 21, page 8. According to counsel for Patent Owner, “[i]f the temperature is high, no condensable organics and no condensable inorganics are retained by the filter, so that the filter only retains suspended PM, which includes some condensable organics and some condensable IPR2014-01557 Patent 7,951,346 B2 20 inorganics that are typically adsorbed to soot particles.” Paper 21, pages 8–9. On cross-examination by counsel for Patent Owner, Dr. Farrauto said the following: Q [by counsel for Patent Owner] . . . [T]he very last sentence at that page [Ex. 1008A, renumbered page 8] says, “Total PM was determined by collective particulate matter on a set of 90 million-meter [sic—“mm”] Pallflex filters that were weighed before and after the test cycle.” A Um-hum. Q Are you familiar with these Pallflex filters? A Yes, I am. Q And how do they work? What do they collect? A They collect all of the condensable material at 52 degrees. That’s the way in which diesel particulate matter is measured, at that controlled temperature. Q 52 degrees that – A I believe it’s 52. Maybe it’s 53, but it’s around 52. So anything that’s condensable at 52 degrees. Q And you mean 52 Centigrade? A Centigrade, yes. Q And at 52 degrees Centigrade, which particles would be condensable? IPR2014-01557 Patent 7,951,346 B2 21 A Certainly the solid particulates, what we would tend to call the soot, the liquid portion of the particulates, which can be a collection of unreacted diesel fuel, as well as reacted or uncombusted lubricating oil, as well as sulfuric acid, which condenses at that temperature. Q What about SO2? A Well, the SO2 would not itself be condensable, but most of it would be probably a mixture of SO2 and SO3, probably more on the SO3 side, because if you have a filter, particulate filter, and you have it catalyzed, it would likely oxidize the SO2 to SO3. So the dominant sulfur species I would predict exiting the trap would be SO3, which then reacts with steam and produces sulfuric acid, which condenses at that temperature. Ex. 2009, page 29:4–page 30:20. Patent Owner argues, presumably based on Dr. Farrauto’s cross-examination, that: Because the filter temperature of the Pallflex filter in the MECA report is not known, it is impossible to determine the amount of particulate matter that was removed by the DPF-A filter [with a catalyst coated directly on the filter] of this report. Figure 6 at the bottom of page 15 indicates a PM reduction of about 80%. If the filter temperature was kept at 120 ºC (EPA Method 5), this number represents the suspended PM. As can be seen in Tables 2-4 of the ‘346 patent, suspended PM may represent only a very minor portion of the particulate matter, as this term is defined in the ‘346 patent. Ex. 1001A col. 20-21. Petitioner’s Exhibit 1015A confirms that also in diesel exhaust the suspended PM is a small fraction of the IPR2014-01557 Patent 7,951,346 B2 22 overall particulate emission. At page 43 the document presents a table of diesel emission standards. So-called “bin 10” is a standard that can be achieved without exhaust after treatment. “We do not believe [aftertreatment] devices will be necessary to meet the top bin for our interim standards.” Ex. 1015A, page 42, right hand column. Paper 21, page 11, first and second paragraphs. Ex. 1015A is a Federal Register version of a Final EPA Rule. 65 Fed. Reg. 6698 (Feb. 10, 2000). We have not been directed to any portion of the Final Rule that purports to address any discussion in MECA. C. Reply For several reasons, Petitioner maintains in reply (Paper 24, pages 4–9) that Patent Owner’s construction of “particulate matter” is too narrow: Reason (1): claim differentiation—based on unchallenged dependent claims 4 and 44 vis-à-vis challenged claims 1 and 41, where claims 4 and 44 call for particulate matter comprising “particulate matter and particulate matter precursors;” Reason (2): the EPA regulation relied upon by Patent Owner relate to testing of stationary sources, such as power plants, whereas diesel-powered vehicles are said to be governed by 40 C.F.R. § 86.110-04; and IPR2014-01557 Patent 7,951,346 B2 23 Reason (3): Patent Owner’s arguments are not consistent with the Specification of the ʼ346 patent. With respect to Reason (1), Petitioner’s argument based on claim differentiation presents somewhat of a challenge in this particular case. Independent claim 1 mentions “particulate matter.” Ex. 1001, col. 22:23. Dependent claim 4 mentions a Markush group of “particulate matter and particulate matter precursors.” Id. at col. 22:33–35. Claim 4 appears to broaden, not narrow, claim 1. Because we agree with Petitioner’s Reason (2) and Reason (3), we do not find it necessary to further discuss Reason (1). With respect to Reason (2), we agree with Petitioner that the EPA standards set out in the Specification of the ʼ346 patent relate to stationary diesel engines, whereas MECA concerns non-stationary diesel engines. Therefore, we decline to give much, if any, weight to the EPA standards. With respect to Reason (3), it is apparent from the ʼ346 patent that claim 1 covers a method of operating both stationary and non- stationary diesel apparatus. See, e.g., (1) Ex. 1001, col. 9:16–21, and (2) Ex. 1001, col. 18:48–61. We also note that Example 1 describes “particulate matter” reductions whereas Example 2, relied upon by Patent Owner, describes reductions in “Total Fine Particulate Matter.” IPR2014-01557 Patent 7,951,346 B2 24 D. Additional Discussion 1. Claim 1 Claim 1 is not as narrow as Patent Owner would have us believe. It covers reducing “particulate matter” (i.e., “small particles of solid or liquid suspended in a gas”). These are precisely the “particulate matters” described by MECA. See Ex. 1008A, Figure 6, renumbered page 15—discussed in more detail above. Patent Owner claims that one skilled in the art would not have known the nature of the MECA filter, and based on a lack of knowledge, would not have been enabled to substitute the MECA filter for that described by Otake. Patent Owner does not give one skilled in the art much, if any, credit. One skilled in the art is not an automaton. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). Dr. Farrauto noted that MECA describes testing using a 90 mm Pallflex filter. Ex. 2009, page 29:4–page 30:20. His uncontradicted cross-examination supports a finding that one skilled in the art (1) knows the nature of the Pallflex filter and (2) would have been able to use the Pallflex filter in the diesel engine Otake environment. Opposing Dr. Farrauto’s testimony, all we have is an argument by counsel for Patent Owner. Paper 21, pages 8–9. As MECA shows, use of a DPF-A filter with a catalyst coated directly on the filter IPR2014-01557 Patent 7,951,346 B2 25 reduced particulate matter to very low levels. Ex. 1008A, renumbered page 15, Figure 6. Patent Owner is using a known filter for its intended purpose to obtain an expected result—reduction in particular matter. We have not overlooked Patent Owner’s argument relating to the operating temperature of the Pallflex filter. According to Patent Owner, the absence of an operating temperature in MECA is significant. We cannot agree for at least two reasons: (1) Dr. Farrauto explained on cross-examination why a 52 ºC temperature was a known appropriate testing temperature, and perhaps more significantly, (2) the claims do not call for any particular operating temperature. We are not sure that temperature is relevant, but to the extent that it is, we credit Dr. Farrauto’s testimony over the unsupported argument of counsel for Patent Owner. 2. Claim 41 With respect to claim 41, Patent Owner maintains that nothing in Otake describes “a particulate matter indicator for outputting a result to a user, wherein the result is the amount that particulate matter in the gaseous stream has been reduced.” Ex. 1001, col. 23:61–63; Paper 21, page 17. The ʼ346 patent contains at least the following discussion concerning reporting results: In certain embodiments, the system further includes a particulate matter indicator for outputting a result to a user, IPR2014-01557 Patent 7,951,346 B2 26 where the result is the amount that particulate matter in the gaseous stream has been reduced. Ex. 1001, col. 2:54–58 (italics added). In addition, the methods [also] include reporting that particulate matter in the gaseous stream has been reduced. In certain instances, the reporting includes providing an indication, such as an audio and/or visual signal, to a user that particulate matter in the gaseous stream has been reduced. The reporting may include displaying that particulate matter in the gaseous stream has been reduced. In some cases, the amount of particulate matter in the gaseous stream is displayed. Where desired, the amount of the reduction of particulate matter in the gaseous stream may be displayed. Ex. 1001, col. 4:26–35 (italics added). In certain embodiments, the subject systems also include a particulate matter indicator. Where desired, the particulate matter indicators reports to a user the amount of particulate matter in the gaseous stream. In some cases, particulate matter indicators report to a user that particulate matter has been reduced. The particulate matter indicators may output a result to a user. The result may include the amount that particulate matter in the gaseous stream has been reduced. Ex. 1001, col. 8:60–67 (italics added). In our view, the “[i]n some cases, particulate matter indicators report to a user that particulate matter has been reduced” is the claim 1 embodiment “reporting that particulate matter has been reduced.” “The result may include the amount that particulate matter IPR2014-01557 Patent 7,951,346 B2 27 in the gaseous stream has been reduced” embodiment is the claim 41 “the result is the amount that particulate matter . . . has been reduced.” The claim 41 embodiment requires something more than a report that particulate matter has been reduced; it requires reporting an amount of reduction. The “amount” limitation was the subject of considerable discussion at oral argument. Complicating the discussion is the fact that the ʼ346 patent does not describe any particular indicator for receiving a report of the amount of particulate matter reduction. According to counsel for Petitioner, “[t]he prior art discloses methods of indirectly measuring the amount of particulate matter retained by a filter.” Transcript of Oral Argument, Paper 49, page 13:11–13. Further according to counsel for Petitioner, “[a]nother method is by measuring the pressure drop across the filter.” Id. at page 13:18–19. The method is said to be described by Pfeifer. Id. at page 13:20–22; Ex. 1008A, ¶ 0048 (discussing a preset level to start a regeneration). Counsel for Patent Owner stated “that the term ‘amount’ is not limited to a numerical amount. It could be . . . a semi-quantitative measure like whether a specific threshold of removal has been reached or a specific percentage of removal has been accomplished and things like that.” Transcript of Oral Argument, Paper 49, page 27:21 through page 28:2. IPR2014-01557 Patent 7,951,346 B2 28 In our view, “amount” means the indicator must report a numerical amount or a relative amount (as reported in a typical gas gauge in a typical automobile; not reporting a numerical amount of gallons left in a gas tank, but reporting a relative amount between empty, 1/4, 1/2, 3/4 and full). A portion of Otake Figure 2 is reproduced below. Portion of Otake Fig. 2 Depicted is a portion of a flow chart showing a measurement of PM1 and PMn to determine whether PM1 is equal to or greater than PMn With reference to the reproduced portion of Otake Figure 2, Otake describes a process whereby PM1 (particulate matter deposited on a filter—Ex. 1007A, col. 3:15) is compared to PMn (a particulate matter reference amount—Ex. 1007A, col. 3:49–50). Otake goes on to state: In a step S2, it is determined whether or not the PM [particulate matter] deposition amount PM1 is more than a first reference amount PMn. When the PM deposition amount PM1 is less than the first reference amount PMn (PM1 < PMn), it is not necessary to carry out filter regeneration, so the routine returns to the step S1. When IPR2014-01557 Patent 7,951,346 B2 29 the PM deposition amount PM1 is more than the first reference amount PMn (when PM1 ≥ PMn), the routine proceeds to a step S3. Ex. 1007A, col. 3:48–55. When regeneration is necessary because PM1 ≥ PMn, Otake “reports” that particulate matter has been reduced following regeneration reduced particulate matter to the point where PM1 < PMn. MECA confirms that particulate matter reductions have been reported. Ex. 1008A, renumbered page 15, Fig. 6. MECA reports that particulate matter has been reduced, as called for by claim 1. However, Petitioner has not established by a preponderance of the evidence that Otake and MECA describe a particulate matter indicator reporting the amount of particulate matter reduction as called for by claim 41. We have not overlooked Patent Owner’s attempt, said to be consistent with a dictionary meaning, to have “reporting” in claim 1 to mean the same as reporting “an amount.” Paper 21, page 7. The Specification trumps any dictionary meaning in this case, because it makes clear that reporting can be general reporting as well as use of an indicator to report an amount. Claim construction of the term “amount” is an issue of law. In this case, it does not matter whether a broadest reasonable construction of a Phillips construction is applied. On appeal, it is possible that the Federal Circuit could disagree with our construction IPR2014-01557 Patent 7,951,346 B2 30 and adopt that of the parties. The parties, of course, have reason for wanting a construction broader than ours. Petitioner seeks a broad construction so that the prior art would meet claim 41. Patent Owner also likes a broader construction because more systems would infringe. In the event “amount” is construed on appeal to include a single amount (i.e., a threshold value only), then we would hold that claim 41 is unpatentable over the combination of Otake and MECA essentially for the reasons given in connection with our holding with respect to claim 1. 3. Conclusion We hold that Petitioner has established by a preponderance of the evidence that the subject matter of claim 1 would have been obvious to a person having ordinary skill in the art. Patent Owner has not argued the separate patentability of dependent claims 5, 9, and 39. Accordingly, those claims fall with claim 1. We hold that Petitioner has not established by a preponderance of the evidence that the subject matter of claim 41 would have been obvious. IV. Analysis—Ground 3 (Otake and Pfeifer) A. Petition—Claim 1 According to Petitioner, claims 1, 5, 6, 9, 10, 12, 16, 39, 41, 45, 46, and 49 are unpatentable under 35 U.S.C. § 103(a) over Otake (Ex. 1007A) and Pfeifer (Ex. 1004A). Paper 3, pages 13 and 35–42. IPR2014-01557 Patent 7,951,346 B2 31 Portions of Petitioner’s claim chart said to support an obviousness holding based on Otake and Pfeifer are set out below. Claim 1 Otake and Pfeifer A method for reducing particulate matter in a gaseous stream, the method comprising: Otake: A diesel engine exhaust gas purification system including diesel particulate filter 13 that reduces particulate matter. Ex. 1007 at col. 1, ln. 6-9 & col. 2, ln. 28-39. Pfeifer: A catalytic particle filter for reducing carbon soot particles in the gaseous exhaust from a diesel engine. Ex. 1004[A] at Abstract and Paragraphs [0001-03]. contacting the gaseous stream with a catalytic emissions trap comprising a catalyst, wherein particulate matter in the gaseous stream is reduced by 30% or more; and Otake: A “filter 13 (specifically a diesel particulate filter)” is arranged in the diesel engine’s exhaust gas passage 3. Ex. 1007[A] at col. 2, ln. 37-39. “The filter 13 collects particulate matter” from the exhaust gas that contacts it. Ex. 1007[A] at col. 2, ln. 39 & Fig. 1. Pfeifer: “During the filtration phase the soot particles are filtered out of the exhaust gas stream and deposited on the filter.” Ex. 1004[A] at Paragraph [0047]. The “filter body is understood to be a body with fine open pores that can mechanically filter from diesel IPR2014-01557 Patent 7,951,346 B2 32 Claim 1 Otake and Pfeifer engine exhaust gas, preferably more than 80%, more preferably more than 90%, soot particles with sizes in the range between 0.01 and 10 μm.” Ex. 1004[A] at Paragraph [0034]. reporting that particulate matter has been reduced. Otake: The controller 22 reports that particulate matter has been reduced by computing the summed particulate matter (“PM”) deposition amount PM1, comparing PM1 to a reference amount PMn, and outputting signals to initiate regeneration of the diesel particulate filter when PM deposition amount PM1 is greater than or equal to the reference amount PMn. See Ex. 1007[A] at col. 3, ln. 15 - col. 4, ln. 66, & Fig. 2. Petitioner does not rely on Pfeifer for the “reporting” limitation of claim 1. Otake, including Otake Figures 1 and 2, are discussed earlier in this opinion. Otake differs from the subject matter of claim 1 in that Otake does not describe “the composition of the diesel particulate matter filter 13 or the reduction rates achieved by that filter.” Paper 3, page 36. IPR2014-01557 Patent 7,951,346 B2 33 As in the case of Ground 2, claim 1 of the ʼ346 patent does not call for specific particulate matter. Hence, the composition of the diesel particulate matter would not appear to be a difference. To overcome the reduction rate difference, Petitioner turns to Pfeifer (Ex. 1004A). Pfeifer describes: one embodiment . . . [providing] a particle filter for removing soot from diesel engine exhaust gas. The particle filter is comprised of: (a) filter body; and (b) a catalytic coating located on said filter body, wherein said catalytic coating comprises compounds of barium, compounds of magnesium and at least one element selected from the platinum group. Ex. 1004A, ¶ 25:1–7. Pfeifer also describes “a particle filter to remove soot from the exhaust gas of a diesel engine.” Ex. 1004A, Abstract and ¶ 0024:1–2. Pfeifer teaches that “[d]uring the filtration phase the soot particles are filtered out of the exhaust gas stream and deposited on the filter.” Ex. 1004A, ¶ 0047:5–7. Pfeifer further teaches that: a filter body is understood to be a body with fine open pores that can mechanically filter from diesel engine exhaust gas, preferably more than 80%, more preferably more than 90%, soot particles with sizes in the range between 0.01 and 10 μm. Ex. 1004A, ¶ 0034:1–5. IPR2014-01557 Patent 7,951,346 B2 34 Petitioner reasons that it would have been obvious to a person having ordinary skill in the art to use the Pfeifer filter in the Otake environment to achieve soot reduction by more than 30%. Paper 3, page 37. B. Opposition According to Patent Owner, Pfeifer does not describe “a catalytic emission trap necessarily capable of removing 30% or more of particulate matter from a gaseous stream.” Paper 21, page 15. Relying on cross-examination testimony of Dr. Farrauto (Ex. 2009, pages 39:23–40:21), Patent Owner alleges that soot does not contain any inorganic particulate matter and only a portion of the organic condensable fraction. Paper 21, page 15. To make a point that soot may represent as little as 1% of “Total Fine Particulate Matter,” Patent Owner calls our attention to Tables 2–4 of the ʼ346 patent. Paper 21, pages 15 and 23; Ex. 1001, col. 20.2 Because according to counsel soot is said to contain as little as 1% soot, Patent Owner reasons that removal of 90% of soot would not amount to a 30% removal of particulate matter. Id. C. Reply Petitioner observes that Pfeifer describes “a particle filter for removing soot from diesel engine exhaust gas.” Paper 24, page 20; 2 Tables 2–4 are admitted only for what is described in those tables, not for the truth of the data set out therein. 37 C.F.R. § 42.61(c). IPR2014-01557 Patent 7,951,346 B2 35 Ex. 1004A, ¶ 0024 (“removal of soot from diesel engine exhaust gas”). Petitioner’s answer to Patent Owner’s reliance on Tables 2–4 of the involved ʼ346 patent is that the data upon which the tables are based relates to removal of soot from “a 5.5 MW dual fuel gas turbine operated on natural gas.” Paper 24, page 21; Ex. 1001, col. 20:18. A person having ordinary skill in the art would have known that natural gas burns cleaner than diesel fuel, a fact confirmed by Dr. Farrauto: “[n]atural gas burns substantially ‘cleaner’ than diesel fuel, and produces virtually no particulate matter when burned.” Ex. 1019, ¶ 10. According to Dr. Farrauto, “[t]ypically, in diesel engine exhaust, dry carbon or soot comprises 43% of the particulate matter emissions.” Ex. 1019, ¶ 11. Relied upon in support of his testimony is a textbook: Ex. 1019 (Exh. A at pages 186–87 [Heck and Farrauto, Catalytic Air Pollution Control, page 187, Fig. 8.1 (2d ed. 2002)]). Figure 8.1 of the textbook is reproduced below. The pie chart shows dry carbon or soot comprising 43% of the particulate emissions breakdown. Based on Dr. Farrauto’s testimony, IPR2014-01557 Patent 7,951,346 B2 36 Petitioner reasons that “[a]pplying Patent Owner’s methodology to a diesel engine exhaust stream yields a greater than 30% reduction (i.e., 43% x 90% = 38.7%) in total particulate matter from diesel IPR2014-01557 Patent 7,951,346 B2 37 engine exhaust gas by the Pfeiffer [sic—Pfeifer] filter.” Paper 24, page 21. D. Patent Owner’s Observations After Petitioner served Dr. Farrauto’s reply Declaration (Ex. 1019), Patent Owner cross-examined. Ex. 2014. In Patent Owner’s observations, attention is directed to the following Farrauto cross-examination. Q Then the next statement is number eleven on the same page, “Typically, in diesel engine exhaust, dry carbon or soot comprises 43 percent of the particulate matter emissions.” Now, you stated earlier that at the time the sulfur content of diesel fuel was higher than it is today. So would you assume that the dry carbon component is different now than it was back then? A It varies depending on the OEM. Depends on what the overall strategy is for reducing the soot levels that are collected on the filter, because the soot and the liquids are treated differently in the overall diesel exhaust, so some manufacturers may operate the engine such that you get more dry carbon, and others may operate it so that you get more liquids, depending on what their strategy is for the pollution abatement. Q I understand. Do you have -- would you be able to give a range of percentages that the dry carbon could be? A I can speculate that -- roughly I would say the lower range is probably about 20 percent. I would say the dry carbon here may be a little bit high, 43 percent, but certainly in the range of, I’d say 20 to 45 percent, somewhere in that for the dry carbon. IPR2014-01557 Patent 7,951,346 B2 38 Q All right. A There’s something called a NOx particulate trade off that is also shown in my book, and it shows you how you can operate the engine differently, and thus get more particulate or more NOx, so it’s what they call the NOx particulate trade off, and that generally relates to the amount of dry carbon or soot that’s produced. Q So that that offers a design parameter for the engine manufacturer? A Exactly, that’s correct. Q Does the performance of the engine suffer if you choose one or the other? A Yes, it does. Q In which way? A Well, for example, if you operate the engine at a relatively low temperature, you will get more carbon formation and you will probably not have as complete a combustion of the diesel fuel as if – as compared to operating at high temperature. But if you operate at high temperature, you would get more combustion of the fuel, which gives you slightly better fuel economy, but you would make more nitrogen oxides. Q Okay, that’s clear. Paper 34, pages 2–4; Ex. 2014, page 16:12 – page 18:22. IPR2014-01557 Patent 7,951,346 B2 39 According to Patent Owner, the cross-examination undermines the reliability and credibility of Dr. Farrauto’s “typically comprises 43% amount” testimony. E. Petitioner’s Response to Observations In response to Patent Owner’s observations, Petitioner calls attention to Dr. Farrauto’s reliance on the Heck/Farrauto textbook (Ex. A of Ex. 1019). As noted by Petitioner, the textbook is prior art to the ʼ346 patent, the textbook having been published in 2002. The pie chart shown in Figure 8.1 (reproduced above) describes the dry carbon and soot as being 43%. We do not find it necessary to resolve any possible difference between Dr. Farrauto’s cross-examination vis-à-vis the textbook—Dr. Farrauto being one author of the textbook. The underlying theory of the cross-examination is manifest from part of a question by counsel for Patent Owner: Now, you [Dr. Farrauto] stated earlier that at the time the sulfur content of diesel fuel was higher than it is today. So would you assume that the dry carbon component is different now than it was back then? Ex. 2014, page 16:17–21 (emphasis added). The sulfur content of diesel fuel “today” has not been shown to be relevant to any issue before us. The question is what was known prior to the filing date of the application maturing into the involved ʼ346 patent. IPR2014-01557 Patent 7,951,346 B2 40 Dr. Farrauto’s answering Patent Owner’s hypothetical question concerning today’s diesel fuels in no way undermines Dr. Farrauto’s reliance on a 2002 prior art textbook. F. Conclusion Patent Owner does not argue the separate patentability of claims 5, 6, 9, 10, 12, 16, or 39 apart from claim 1. Those claims fall with claim 1. Petitioner has established by a preponderance of the evidence that the subject matter of claims 1, 5, 6, 9, 10, 12, 16, and 39 of the ʼ346 patent is unpatentable under 35 U.S.C. § 103(a) over Otake and Pfeifer. G. Comment on Claim 41 Petitioner relies on Otake for a disclosure of an indicator reporting an amount that particulate matter has been reduced. Paper 3, pages 41–42. We agree with Patent Owner that the Petition does not rely on Pfeifer for a disclosure of an “amount.” Transcript of Oral Argument, Paper 49, page 33:17–20. Given our interpretation of “particulate matter indicator for outputting a result to a user, wherein the result is the amount that particulate matter . . . has been reduced,” we are unable to find in Otake any description of the claimed indicator. Accordingly, we find that Petitioner has failed to establish by a preponderance of the evidence that the combination of Otake and Pfeifer render obvious the subject matter of claims 41, 45, 46, or 49. If our interpretation of the “amount” limitation is wrong, and the interpretation of the parties is correct, then we would find that the “amount” IPR2014-01557 Patent 7,951,346 B2 41 limitation is described by Otake and would hold claims 41, 45, 46, and 49 unpatentable under 35 U.S.C. § 103. V. Analysis—Ground 4 (Baird and MECA) A. Petition According to Petitioner, claims 1, 5, 9, 39, 41, 45, and 49 are unpatentable under 35 U.S.C. § 103(a) over Baird (Ex. 1009A) and MECA (Ex. 1008A). Petition, pages 13 and 43–51. Portions of Petitioner’s claim chart said to support an obviousness holding based on Baird and MECA are set out below. Claim 1 Baird and MECA A method for reducing particulate matter in a gaseous stream, the method comprising: Baird: A diesel engine exhaust gas purification system including a particulate filter 20 that reduces particulate matter. Ex. 1009[A] at Paragraphs [0005-06 & 0023]. MECA: A diesel particulate filter (DPF-A) for reducing particulate matter in the gaseous exhaust from a DDC Series 60 diesel engine. Ex. 1008[A] at pp. 8 and 14-16. contacting the gaseous stream with a catalytic emissions trap comprising a catalyst, wherein particulate matter in the gaseous stream is reduced by 30% or more; and Baird: A particulate filter 20 is disposed in the exhaust manifold. See Ex. 1009[A] at Paragraph [0023] & Fig. 1. The particulate filter 20 traps particulate matter from the diesel exhaust gas that contacts it. See Ex. 1009[A] at Paragraphs [0005-06]. IPR2014-01557 Patent 7,951,346 B2 42 Claim 1 Baird and MECA MECA: The exhaust stream from the DDC Series 60 diesel engine contacted the diesel particulate filter DPF-A which reduced particulate matter (“PM”) by 70% and reduced hydrocarbons (“HC”) by 94%. Ex. 1008 at pp. 5 and 14-16. reporting that particulate matter has been reduced. Baird: “[T]he signal to initiate a regeneration cycle for a filter may be generated by a sensor that monitors particulate load on the filters and engine operating history to determine when regeneration of the diesel particulate filter is required.” Ex. 1009[A] at Paragraph [0013]. The engine control module (ECM) 14, upon detecting a need for regeneration of the particulate filter 20, sends a signal illuminating the warning light 26. Ex. 1009[A] at Paragraph [0023] & Fig. 1. The illumination of the warning light 26 informs the user that the particulate filter 20 has reduced the particulate matter in the gas stream by an amount sufficient to require the regeneration of the particulate filter 20. See Ex. 1009[A] at Paragraph [0023]. Baird describes a method for regenerating filters. Ex. 1009A, ¶ 0001. IPR2014-01557 Patent 7,951,346 B2 43 Baird Figure 1 is reproduced below. Baird Fig. 1 Depicted is a schematic representation of an engine having an exhaust system component regeneration system A warning light 26 is described as being activated upon detecting a need for regeneration of particulate filter 20. Ex. 1009A, ¶ 0023. Illumination of the warning light prompts an operator to activate switch 28 to activate a regeneration cycle. Id. A signal to initiate regeneration may be generated by a sensor that monitors particulate load on the filters and the operating history of the engine. Id. at ¶ 0013. See also ¶ 0023 discussing exhaust manifold sensor 16 and tail pipe sensor 18. MECA is discussed above and any discussion need not be repeated here. According to Petitioner, Baird differs from the subject matter of claim 1 in that Baird does not describe “the composition of the diesel IPR2014-01557 Patent 7,951,346 B2 44 particulate filter or the reduction rates achieved by that filter.” Paper 3, page 46. To overcome the differences, Petitioner turns to MECA. Id. Petitioner reasons that it would have been obvious to a person having ordinary skill in the art to substitute the MECA filter for Baird filter 20 to achieve reduction in particulate matter at levels described by Baird. Paper 3, page 47. B. Opposition According to Patent Owner, Baird does not monitor or report any amount of particulate matter removed from the exhaust stream by the filter. Paper 21, pages 18 (“Baird does not . . . report the amount of particulate matter removed from a gaseous stream”) and 21 (“the sensors in the Baird system serve to determine whether regeneration is necessary and whether the conditions are right for regeneration. In the case of the NOx adsorber, the system does not determine how much NOx has been trapped or converted to N2, but how much SOx has been trapped by the NOx adsorber.”) However, Petitioner urges unpatentability based on a combination of Baird and MECA. Attacking individual references relied upon in combination to establish obviousness generally is not going to be successful. In re Keller, 642 F.2d 413, 426 (CCPA 1981). Patent Owner repeats an argument similar to that made in connection with Otake/MECA—maintaining that one skilled in the art would not have known how to use the MECA Pallflex catalytic filter. Paper 21, page 24. IPR2014-01557 Patent 7,951,346 B2 45 C. Reply Petitioner’s response to Patent Owner’s argument that Baird does not report a result is as follows: “A warning light 26 is activated upon detecting a need for regeneration of a particulate filter 20, catalyzed soot filter 22, or NOx adsorber catalyst 24.” Id. at ¶ [0023]. The illumination of the warning light 26 informs the driver that the particulate filter 20 has reduced the particulate matter in the exhaust gas stream by the predetermined amount sufficient to require the regeneration of the particulate filter 20. Id. Paper 24, page 24. D. Discussion We agree with Petitioner that a person having ordinary skill in the art would have found it obvious to use the MECA catalytic filter in the Baird environment. Such a use amounts to using a known catalytic filter for its intended purpose to achieve an expected result—reduction of particular matter. Accordingly, we hold that the subject matter of claim 1 would have been obvious. Patent Owner maintains that MECA fails to describe “which fractions of the particulate matter are being removed by MECA’s DPF-A filter.” Paper 21, page 24. However, MECA’s Figure 6 describes removal of considerable particular matter: from 0.11 g/bhp-hr to 0.01 g/bhp-hr. Ex. 1008A, renumbered page 15. IPR2014-01557 Patent 7,951,346 B2 46 Patent Owner further maintains that one skilled in the art “is not informed what . . . [MECA’s] filter is. Paper 21, page 24. Presumably, Patent Owner’s position is based on Dr. Farrauto’s testimony that the nature of the Pallflex filter may be proprietary. Ex. 2009, page 29:10 through page 39:15, in particular page 39:14– 15. First, we note that MECA’s description of its catalytic filter (Ex. 1008A, renumbered pages 8, last two lines, and page 14, last two lines) is not all that much different from Patent Owner’s description of the filter element shown in Figure 2 (Ex. 1001A, col. 14:22–40). Hence, Patent Owner is in a poor position to contest an alleged inadequate disclosure of the MECA filter. Cf. Metcalf v. Hampel, 523 F.2d 1360, 1362 (CCPA 1976) (where disclosure of moving party is essentially the same as opponent, moving party is in poor position to argue that opponent's specification is not enabling). Second, the Pallflex DPF-A filter is a commercial product. All that one skilled in the art needs to know about the commercial product is that it is a catalytic filter and that it will remove large amounts of particulate matter. We are not aware of any requirement that one skilled in the art would need to have known the details of the filter. What matters is that the Pallflex filter was known and one skilled in the art would have been able to use the filter for its intended purpose of removing particular matter. IPR2014-01557 Patent 7,951,346 B2 47 As between the arguments of counsel for Patent Owner vis-à- vis the testimony of Dr. Farrauto on the nature of the Pallflex filter, we credit that of Dr. Farrauto. Petitioner has established by a preponderance of the evidence that claims 1, 5, 9, and 39 are unpatentable under 35 U.S.C. § 103 over Baird and MECA. However, we are unable to find that the combination of Baird and MECA describes an indicator reporting an amount of particulate matter reduction. Accordingly, Petitioner has failed to establish by a preponderance of the evidence that the subject matter of claim 41 (and the challenged claims dependent from claim 41) would have been obvious. If our interpretation of the “amount” limitation of claim 41 is found to be erroneous, and the claim interpretation of the parties is adopted, then we would find that Petitioner has established by a preponderance of the evidence that claim 41 (and the challenged claims dependent thereon) is unpatentable under 35 U.S.C. § 103. E. Conclusion Apart from claim 1, Patent Owner has not argued the separate patentability of claims dependent on claim 1. On the record before us, Petitioner has established by a preponderance of the evidence that the subject matter of claim 1 (and claims dependent thereon) would have been obvious. IPR2014-01557 Patent 7,951,346 B2 48 On the record before us, Petitioner has not established by a preponderance of the evidence that the subject matter of claim 41 (and claims dependent thereon) would have been obvious. VI. Analysis—Ground 5 (Baird and Pfeifer) A. Petition According to Petitioner, claims 1, 5, 6, 9, 10, 12,16, 39, 41, 45, 46, and 49 are unpatentable under 35 U.S.C. § 103(a) over Baird (Ex. 1009A) and Pfeifer (Ex. 1004A). Petitioner, pages 13 and 51–58. Portions of Petitioner’s claim chart said to support an obviousness holding based on Baird and Pfeifer are set out below. Claim 1 Baird and Pfeifer A method for reducing particulate matter in a gaseous stream, the method comprising: Baird: A diesel engine exhaust gas purification system including a particulate filter 20 that reduces particulate matter. Ex. 1009[A] at Paragraphs [0005-06 & 0023]. Pfeifer: A catalytic particle filter for reducing carbon soot particles in the gaseous exhaust from a diesel engine. Ex. 1004 at Abstract and Paragraphs [0001-03]. contacting the gaseous stream with a catalytic emissions trap comprising a catalyst, wherein particulate matter in the gaseous stream is reduced by 30% or more; and Baird: A particulate filter 20 is disposed in the exhaust manifold. See Ex. 1009[A] at Paragraph [0023] & Fig. 1. The particulate filter 20 traps particulate matter from the diesel exhaust gas that contacts it. See Ex. 1009[A] at Paragraphs [0005-06]. IPR2014-01557 Patent 7,951,346 B2 49 Claim 1 Baird and Pfeifer Pfeifer: “During the filtration phase the soot particles are filtered out of the exhaust gas stream and deposited on the filter.” Ex. 1004 at Paragraph [0047]. The “filter body is understood to be a body with fine open pores that can mechanically filter from diesel engine exhaust gas, preferably more than 80%, more preferably more than 90%, soot particles with sizes in the range between 0.01 and 10 μm.” Ex. 1004 at Paragraph [0034]. reporting that particulate matter has been reduced. Baird: “[T]he signal to initiate a regeneration cycle for a filter may be generated by a sensor that monitors particulate load on the filters and engine operating history to determine when regeneration of the diesel particulate filter is required.” Ex. 1009 at Paragraph [0013]. The engine control module (ECM) 14, upon detecting a need for regeneration of the particulate filter 20, sends a signal illuminating the warning light 26. Ex. 1009 at Paragraph [0023] & Fig. 1. The illumination of the warning light 26 informs the user that the particulate filter 20 has reduced the particulate matter in the gas stream by an amount sufficient to require the IPR2014-01557 Patent 7,951,346 B2 50 Claim 1 Baird and Pfeifer regeneration of the particulate filter 20. See Ex. 1009[A] at Paragraph [0023]. Baird and Pfeifer are discussed earlier in this opinion. According to Petitioner, Baird differs from the subject matter of claim 1 of the ’346 patent in that it does not describe “the composition of the diesel particulate matter filter or the reduction rates achieved by that filter.” Paper 3, page 51. Petitioner reasons that it would have been obvious to use the Pfeifer filter as a filter in the Baird environment to achieve the claimed reduction rates. Paper 3, pages 52–53. B. Opposition In opposition, Patent Owner repeats its argument that Pfeifer focuses on removal of soot. Soot is said to be a minor fraction of the overall particulate load. Paper 21, page 25. According to Patent Owner, Baird does not report an amount of particulate matter reduction. Id. C. Reply Petitioner replies maintaining, with respect to Baird, that: the illumination of the warning light 26 informs the driver that the particulate filter 20 has reduced the particulate matter in the exhaust stream by the predetermined amount sufficient to require regeneration of the particulate filter 20. IPR2014-01557 Patent 7,951,346 B2 51 Paper 24, page 25. D. Discussion The combination of Baird and Pfeifer describes all the limitations of claim 1. While Baird may not describe the amount of reduction of particulate matter (e.g., at least 30%), Pfeifer describes the use of a filter achieving those results. Ex. 1004A, ¶ 0034. Use of the Pfeifer filter in the Baird process would have been obvious if the objective is to obtain a particulate matter reduction of at least 30%. Such a use amounts to using a known element for its intended purpose to achieve an entirely expected result. Patent Owner’s argument is based on Pfeifer being focused on removal of soot. Paper 21, page 25. Patent Owner further argues that removal of 90% of the soot does not establish removal of 30% of the overall particulate load. Id. Unanswered to our satisfaction by Patent Owner is Petitioner’s reliance on Dr. Farrauto’s analysis based on the Heck/Farrauto textbook and Baird’s description of removal of diesel fuel particulate matter. Paper 24, pages 20–21 and 25. E. Conclusion Based on the evidence before us, we hold that Petitioner has established by a preponderance of the evidence that challenged claims 1, 5, 6, 9, 10, 12, 16, and 39 are unpatentable under 35 U.S.C. § 103. IPR2014-01557 Patent 7,951,346 B2 52 Based on our interpretation of the “indicator” to show an “amount” limitation of claim 41, we are not satisfied that Petitioner has established by a preponderance of the evidence that challenged claims 41, 45, 46, and 49 are unpatentable under § 103. If the interpretation of the parties of the “indicator” limitation is correct, then we would hold that Petitioner has established by a preponderance of the evidence that challenged claims 41, 45, 46, and 49 would be unpatentable under § 103. VII. Order Upon consideration of the Petition, Opposition, and Reply, and for the reasons given, it is ORDERED that as to Ground 2 (Otake and MECA), Petitioner has established by a preponderance of the evidence that challenged claims 1, 5, 9, and 39 are unpatentable under 35 U.S.C. § 103; FURTHER ORDERED that as to Ground 2 (Otake and MECA), Petitioner has not established that challenged claims 41, 45, and 49 are unpatentable under 35 U.S.C. § 103; FURTHER ORDERED that as to Ground 3 (Otake and Pfeifer), Petitioner has established that challenged claims 1, 5, 6, 9, 10, 12, 16, and 39 are unpatentable under 35 U.S.C. § 103; FURTHER ORDERED that as to Ground 3 (Otake and Pfeifer), Petitioner has not established that challenged claims 41, 45, 46, and 49 are unpatentable under 35 U.S.C. § 103; IPR2014-01557 Patent 7,951,346 B2 53 FURTHER ORDERED that as to Ground 4 (Baird and MECA), Petitioner has established that challenged claims 1, 5, 9, and 39 are unpatentable under 35 U.S.C. § 103; FURTHER ORDERED that as to Ground 4 (Baird and MECA), Petitioner has not established that challenged claims 41, 45, and 49 are unpatentable under 35 U.S.C. § 103; FURTHER ORDERED that as to Ground 5 (Baird and Pfeifer), Petitioner has established that challenged claims 1, 5, 6, 9, 10, 12, 16, and 39 are unpatentable under 35 U.S.C. § 103; FURTHER ORDERED that as to Ground 5 (Baird and Pfeifer), Petitioner has not established that challenged claims 41, 45, 46, and 49 are unpatentable under 35 U.S.C. § 103; FURTHER ORDERED that claims 1, 5, 6, 9, 10, 12, 16, and 39 of the ʼ346 patent are unpatentable. FURTHER ORDERED that is has not been shown that challenged claims 41, 45, 46, and 49 of the ʼ346 patent are unpatentable. FURTHER ORDERED that because this is a final written decision, parties to the proceeding seeking judicial review of the decision must comply with the notice and service requirements of 37 C.F.R. § 90.2. IPR2014-01557 Patent 7,951,346 B2 54 For PETITIONER: Steven F. Meyer ptopatentcommunication@lockelord.com Seth J. Atlas satlas@lockelord.com John Sweeney jsweeney@lockelord.com For PATENT OWNER: Michael J. Bradford mbradford@luedeka.com Jacobus C. Rasser koosrasser@gmail.com Copy with citationCopy as parenthetical citation