Volkswagen Group of America, Inc.v.EmeraChem Holdings, LLC

Patent Trial and Appeal Board

Oct 22, 2015

09113258 (P.T.A.B. Oct. 22, 2015)

Trials@uspto.gov Paper 20
571-272-7822 Entered: 22 October 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 IPR2014-01554
Patent 6,037,307

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)

IPR2014-01554
Patent 6,037,307

I. Introduction
A Decision to Institute an inter partes review trial was entered on
16 March 2015. Paper 13.
Patent Owner’s Opposition on the merits was due on or 19 June 2015.
Revised Scheduling Order, Paper 16, page 8.
In due course, the Board received an email from counsel for Patent
Owner dated 16 June 2015 (1:41 p.m.) (Paper 18), the relevant portion of
which reads:
I am lead counsel for Patent Owner in the above
identified IPR proceedings [one of which is IPR2014-
01554]. The Patent Owner Responses in each proceeding
are due this Friday, June 19. This email is to advise the
Board of the following issues concerning the 2014‐01554
and 2014‐01557 proceedings. I am generally available
this week if the Board has any questions or wishes to
discuss the matter further:
1. IPR2014‐01554: Patent Owner will not be filing
a Patent Owner Response.

The Board subsequently received an email from counsel for
Petitioner, the relevant portion of which reads:
I am back-up counsel for Petitioner Volkswagen in
IPR2014-01554. Petitioner Volkswagen seeks the
Board’s permission to file a Petitioner’s Request for
Judgment in this IPR proceeding, pursuant to 37 CFR
42.73(b).

Patent Owner EmeraChem indicated in an email to the
Board on June 16, 2015 (see Paper 18) that “Patent
Owner will not be filing a Patent Owner Response”. No
Patent Owner’s Response was filed, although Patent

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Owner’s responses were filed in . . . four other
simultaneously pending IPR proceedings between the
parties. While the Practice Guide indicates that “[w]here
the patent owner elects not to file a response, the patent
owner will arrange for a conference call with the Board
to discuss whether or not the patent owner will file a
request for adverse judgment” (77 Fed. Reg. at 48766
(Aug. 14, 2012)), no such conference call was arranged,
and on June 18, 2015 . . . [the Board] indicated in an
email that the Board determined that “a conference call is
not needed at this time.”

Therefore, Petitioner Volkswagen requests permission to
file a short Petitioner’s Request for Judgment, in which
the grounds for entry of judgment will be more fully
explained. Petitioner proposes filing this paper by this
Friday, September 18, 2015, which would have been the
due date for Petitioner’s Reply if a Patent Owner’s
Response had been filed in this proceeding.

Thank you for your assistance in this matter.

In response, the Board forwarded an email dated 16 September
2015 (5:02 p.m.), the relevant portion of which reads:
“[A] motion for judgment is not authorized. The matter is
before the panel on the basis of the petition and nothing more is
needed to decide the case. A decision can be expected at the
same time decisions are entered in the four companion cases.”

The Petition is now pending before the Board for entry of a final
written decision. 35 U.S.C. § 318(a).
Notwithstanding the PTO email of 16 September 2015, at this time we
now elect to enter a final written decision.

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Patent 6,037,307

II. Background
A. The parties
Petitioner is Volkswagen Group of America, Inc. Paper 1, page 1.
Patent Owner is EmeraChem Holdings, LLC. Paper 6, page 2.
B. Involved Patent
The involved patent is U.S. Patent 6,037,307 (“the ʼ307 patent”)
issued 14 March 2000, based on an application filed 10 July 1998. Ex. 1001.
C. Litigation
The ʼ307 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 1, page 1;
Paper 6, page 2 and Paper 10, page 1.
An amended complaint was served on defendant Volkswagen Group
of America Chattanooga Operations, LLC, on 6 November 2014. Paper 10,
page l.
An amended complaint was served on defendant Volkswagen Group
of America, Inc., on 6 November 2014. Id.
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 in
support of the Petition:

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Patent 6,037,307

Name Exhibit
No.
Description Date
Joy et al.
“Joy”
1004 U.S. Patent No. 4,760,044 26 July 1988
Tauster et al.
“Tauster”
1005 U.S. Patent No. 4,939,113 3 July 1990

Rieck et al.
“Rieck”

1006
Development of Non-Nickel
Additives for Reducing
Hydrogen Sulfide Emissions
from Three-Way Catalysts,
SAE TECHNICAL PAPER
SERIES 892095,
ISBN 0148-7191

©1989

E. Grounds
Claims 1–15 appear in the ʼ307 patent.
The following grounds of unpatentability are urged in the Petition.
Statutory
Basis
Prior Art
Relied On
Claims
Ground 1 § 102(b) Joy 1–8 and 11
Ground 2 § 102(b) Tauster 1–8 and 11
Ground 3 § 102(b) Rieck 1–7 and 11

Claims 9, 10, and 12–15 are not challenged.
II. Analysis
A. Claimed Invention
Claim 1 of the ʼ307 patent reads [indentation and matter within
brackets added]:

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Patent 6,037,307

A regenerable catalyst/sorber for removing gaseous
sulfur compounds from gaseous streams comprising

[1] a noble metal catalyst component,
[2] a metal oxide sorber component selected from Ti, Zr,
Hf, Ce, Al, Si or mixtures thereof and

[3] up to 0.3 g/in3 of a modifier component consisting of
an oxide of Ag, Cu, Bi, Sb, Sn, As, In, Pb, Au or mixtures
thereof.

According to the written description portion of the ʼ307 patent, a
catalyst for Example 10 was prepared with the following elements:
(1) Ceramic honeycomb carrier;
(2) Sorber component of 2.2 g/in3;
(3) Platinum (Pt) loading from 0.25 to 1.1 wt % of the sorber
component; and
(4) Metal modifier prepared with the metal nitrate precursor
(0.00 to 0.30 g/in3).
Ex. 1001, col. 7:14–22.
Example 10
Example 10 . . . [is said to illustrate] the effect of Pt
loading on the SO2 breakthrough during 60 ppm SO2
sorption cycles with a TiO2/Pt/Cu catalyst/sorber (2.18
g/in3 TiO2/Pt: 0.3 g/in3 Cu(NO3)2) at 500º F. FIG. 10
[reproduced below] . . . [is said to show] that the
efficiency of the TiO2/Pt/Cu is directly related to the Pt
loading, such that the higher the loading the higher the
sulfur capture capacity.

Ex. 1001, col. 8:44–50.

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Fig. 10 depicts a graph describing the effect of Platinum (Pt) loading
reported as wt % of sorber/carrier on the sulfur dioxide (SO2)
breakthrough during 60 ppm SO2 run cycles at 500 ºF

B. The Preliminary Response
While maintaining for various procedural reasons that an inter partes
review trial should not be instituted, the Preliminary Response did not
address the merits of whether the relied upon prior art references anticipate
the challenged claims of the ʼ307 patent.
Hence, we have before us an essentially unopposed petition.
C. Anticipation
To establish anticipation, a party must show by a preponderance of the
evidence that a prior art reference expressly or inherently describes each
claim limitation arranged as in the claim said to be anticipated. Finisar

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Patent 6,037,307

Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334–35 (Fed. Cir. 2008); Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008 ).
Whether a reference anticipates a claim is a question of fact. In re
Baxter Travenol Lab., 952 F.2d 388, 390 (Fed. Cir. 1991).
D.
Petitioner offered the direct declaration testimony of Dr. Robert J.
Farrauto. Ex. 1007A. 37 C.F.R. § 42.63(a). Patent Owner has not offered
any cross-examination testimony of Dr. Farrauto.
On the record before us, we find that Dr. Farrauto is qualified to
testify on the subject matter involved and to offer scientific opinions
concerning that subject matter. Ex. 1007A ¶ 1–6.
His testimony is consistent with the disclosures of the three references
upon which his scientific opinions are based.
E. Ground 1—Joy
Petitioner has shown by a preponderance of the evidence that the
invention defined by Joy claim 15 (Ex. 1004, col. 16:53–55), when
interpreted in light of the written description portion of the Joy patent,
anticipates claim 1 of the ʼ307 patent.
Joy claim 15 depends from Joy claim 11 which depends from Joy
claim 3 which depends from Joy independent claim 1.
Joy claim 1 calls for a “catalytic composite” which the written
description portion of the specification describes as being useful for
treatment of an exhaust gas comprising inter alia sulfur oxides. Ex. 1004,
col. 3:38–42; col. 9:24–58.

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Joy claim 15 calls for copper to be “present in a concentration of
about 0.7 to about 15 g per liter of carrier volume” (Ex. 1004, col. 16:53–55),
which Dr. Robert J. Farrauto testified “converts to 0.011 to about 0.246
grams per in3” (Ex. 1007A ¶ 23).
Accordingly, Petitioner has established that Joy claim 15 describes
limitation [3] of claim 1 of the ʼ307 patent.
Joy claim 1 calls for one main catalytic material which can be
platinum—a noble metal catalytic material. Ex. 1004, col. 16:1.
Accordingly, Petitioner has established that Joy claim 1 describes
element [1] of claim 1 of the ʼ307 patent.
Joy claim 1 also calls for a secondary support comprising zirconia
(zirconium oxide) or titania (titanium dioxide). Ex. 1004, col. 15:61–62.
Accordingly, Petitioner has established that Joy claim 1 describes
element [2] of claim 1 of the ʼ307 patent.
Based on the same disclosure of Joy, Petitioner has established that
each of claims 2–8 and 11 of the ʼ307 is anticipated by Joy.
F. Ground 2—Tauster
Tauster claim 1 calls for a catalyst system including:
three way catalyst means . . . comprising a first section of
[a] refractory monolithic substrate, a particulate gamma
alumina support dispersed on said first section of
refractory monolithic substrate and catalyst metals
chosen from the group consisting of palladium, the
combination of platinum plus rhodium, and mixtures of
platinum, palladium and rhodium, said catalyst metals
being dispersed on said particulate gamma alumina
support; and means for suppressing release of hydrogen

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sulfide comprising a second section of monolithic
refractory substrate having CuO dispersed thereupon in
an amount of at least about 0.005 g/in3 of monolith . . . .

Ex. 1005, col. 15:60–col. 16:15.
Tauster’s 0.005 % g/in3 is within Patent Owner’s claimed range of up
to 0.3 g/in3.
Accordingly, Petitioner has established that Tauster claim 1 describes
limitation [3] of claim 1 of the ʼ307 patent as reproduced above.
Tauster claim 1 also calls for catalyst means including (1) palladium,
(2) mixtures of platinum and rhodium and (3) mixtures of platinum,
palladium, and rhodium—all noble metals. Ex. 1005, col. 15:66–68.
Accordingly, Petitioner has established that Tauster claim 1 describes
limitation [1] of claim 1 of the ʼ307 patent.
Tauster describes making TWC Catalyst Preparation II (TWC means
“three–way catalyst”). Ex. 1005, col. 5:40–col. 6:7.
According to Tauster, “[u]nstabilized alumina is impregnated
with monoethanolamine platinum hexahydroxide and ceria . . . .” Ex. 1005,
col. 5:41–42, 46, and 48.
Dr. Farrauto testified that a person having ordinary skill in the art
would understand, based on the process described by Tauster, that platinum
and ceria (cerium oxide) would be deposited on the monolith. Ex. 1007A,
¶¶ 26 (last three lines) and 27.
Example IV (Ex. 1005, col. 9:45–51) describes an additional step of
adding CuO.

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Table IX (id. at col. 14) describes data pertaining to the preparation of
two sets of CuO–promoted TWC–II (id. at 10:32–33).
Table XI (id. at col. 15) describes data purporting to demonstrate that
catalysts with CuO reduced transition of H2S (hydrogen sulfide) more than
90% (id. at 10:41–47).
Accordingly, Petitioner has established that Tauster describes
limitation [2] of claim 1 of the ʼ307 patent as reproduced above.
Based on the same disclosure of Tauster, Petitioner has established
that each of claims 2–8 and 11 of the ʼ307 is anticipated by Tauster.
G. Ground 3—Rieck
An extended discussion concerning the applicability of Rieck1 is not
necessary.
The discussion beginning with the second sentence on page 37 of
the Petition through page 39, as well as the testimony of Dr. Farrauto
(Ex. 1007A, ¶¶ 29–33), demonstrates that Petitioner has established by a
preponderance of the evidence claims 1–7 and 11 of the ʼ307 patent are
anticipated by Rieck.
We add the following. The catalyst is described as containing CeO2
(cerium oxide) as shown in footnote (b) of Table 1 (page 4). It also is
described as having platinum and CuFe2O4, thus meeting each of the
limitations [1], [2], and [3] of claim 1 of the ʼ307 patent as reproduced above.
Based on the disclosure of Rieck discussed in the Petition, and by
1 Rieck has two sets of page numbers, one at the top and one at the bottom.
We, like Petitioner, refer to the page numbers at the bottom.

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Dr. Farrauto, Petitioner has established by a preponderance of the evidence
that each of claims 2–8 and 11 of the ʼ307 is anticipated by Rieck.
III. ORDER
ORDERED that claims 1–8 and 11 of the ’307 patent are determined
to be 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.

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Patent 6,037,307

For PETITIONER:
Steven F. Meyer
ptopatentcommunication@lockelord.com

Seth J. Atlas
satlas@lockelod.com

John F. Sweeney
jsweeney@lockelord.com

For PATENT OWNER:
Michael J. Bradford
mbradford@luedeka.com

Jacobus C. Rasser
koosrasser@gmail.com

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