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

Patent Trial and Appeal Board

Jan 22, 2016

08192003 (P.T.A.B. Jan. 22, 2016)

Trials@uspto.gov Paper 50
571-272-7822 Entered: January 22, 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 IPR2014-01555
Patent 5,451,558

Before FRED E. McKELVEY, JAMES T. MOORE, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION
Final Written Decision
37 C.F.R. § 318(a)

I. Introduction
Pending before the Board is entry of a Final Written Decision.
A Petition was filed on 30 September 2014. Paper 1.
An inter partes review trial was ordered on 16 March 2015. Paper 21,
rehearing granted-in-part, Paper 26 (15 April 2015).

IPR2014-01555
Patent 5,451,558

2

Patent Owner timely filed an Opposition to the Petition. Paper 29.
Petitioner timely filed a Reply. Paper 32.
Patent Owner has also filed a first Motion to Exclude (Paper 34) and
a second Motion to Exclude (Paper 37). Petitioner has opposed (Paper 43).
II. Background
A. The Parties
Petitioner is Volkswagen Group of America, Inc. Paper 2, page 1.
Patent Owner is EmeraChem Holdings, LLC. Paper 6, page 2.
B. Involved Patent
The involved patent is expired U.S. Patent 5,451,558 (“the ʼ558
patent”) issued 19 September 1995, based on an application filed 4 February
1994. Ex. 1001.
A description of the ʼ558 patent is set out below.
Because the ʼ558 patent has expired, we have not interpreted the
claims using the broadest reasonable interpretation. 37 C.F.R. § 42.100(b);
In re Rambus, 694 F.3d 42, 46 (Fed. Cir. 2012) (Board’s claim construction
of expired patent similar to district court’s) (citing Ex parte Papst-Motoren,
1 USPQ2d 1655, 1655–56 (BPAI 1986)).
C. Litigation
The ʼ588 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 2, page 1;
Paper 6, page 1.

IPR2014-01555
Patent 5,451,558

3

An amended complaint was served on defendant Volkswagen Group
of America Chattanooga Operations, LLC, on 6 November 2014. Paper 12,
page 2.
An amended complaint was served on defendant Volkswagen Group
of America, Inc., on 6 November 2014. Paper 12, page 1.
An amended complaint was served on defendant Volkswagen AG on
8 January 2015. Id.
D. Evidence Relied Upon
The following prior art, listed in numerical order by exhibit number, is
relied upon in support of the Petition:
Name Exhibit
No.
Description Date

Takeshima et al.
“Takeshima”

1004B
International Patent
Application PCT/JP92/01279,
published as
WO 93/07363 A1

15 Apr. 1993
Hoekstra 1005A U.S. Patent No. 3,849,343 19 Nov. 1974
Kinoshita et al.
“Kinoshita”
1006A U.S. Patent No. 4,369,132 18 Jan. 1983
Inui et al.
“Inui”
1007B Japanese Patent Application
Publication No. H4-367724
21 Dec. 1992
Stiles et al.
“Stiles”

1008A

U.S. Patent No. 5,362,463
8 Nov. 1994
filed
26 Aug. 1992

IPR2014-01555
Patent 5,451,558

4

E. Grounds
Claims 1–45 appear in the ʼ588 patent.
An inter partes review trial was instituted on the following claims and
prior art (I means instituted based on § 102 unless otherwise noted; NI
means not instituted).
Claim Takeshima
Ground 1
Hoekstra
Ground 2
Kinoshita
Ground 3
Inui
Ground 4
Stiles
Ground 5
1 I I I I I
2 I I
7 I I I I I
8 I I I I I
9 I–§ 103 I I
10 I–§ 103 I I
11 I–§ 103
12 I
14 I I I I I
15 I I I
16 I
17 I I I
19 I I I
21 I I–§ 103
22 I I–§ 103
23 I–§ 103 I–§ 103
24 I I
31 I I I
32 I I
33 I I I
34 I I I
35 I I I
36 NI I I
37 I I

IPR2014-01555
Patent 5,451,558

5

Claim Takeshima
Ground 1
Hoekstra
Ground 2
Kinoshita
Ground 3
Inui
Ground 4
Stiles
Ground 5
38 I I
39 I I I
40 I I I
41 I
42 I I NI
44 I

See Decision on Rehearing (Paper 26, pages 3–4). Claims of the ’558 patent
not challenged have not been listed.
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 46, pages 3–4.
A transcript of oral argument has been placed in the record. Paper 49.
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 49, page 18:6 through page 19:12.
Oral argument is governed in part by 37 C.F.R. § 42.70(a) (first
sentence) (italics added):

IPR2014-01555
Patent 5,451,558

6

(a) A party may request oral argument on an issue raised
in a paper at a time set by the Board.

The Trial Practice Guidelines advise as follows:

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. The ʼ558 patent
Figures 1A, 1B, and 1C of the ʼ558 patent are reproduced below.

IPR2014-01555
Patent 5,451,558

7

Fig. 1A depicts a schematic drawing of
a catalyst absorber sphere.

Fig. 1B depicts a magnified schematic
representation of a portion of a catalyst absorber sphere.

Fig. 1C depicts a schematic drawing of the surface
of a monolith catalyst absorber.

IPR2014-01555
Patent 5,451,558

8

The ʼ558 patent explains:
As shown in FIG. 1, the catalyst absorber of the
present invention can take on different configurations.
FIG. 1a shows a spherical catalyst absorber made up of
an alumina sphere 10 with a platinum coating 12 and a
carbonate coating 14 thereon. As shown in FIG. 1b, the
surface of the sphere is very irregular so that there is an
extremely large surface area per gram of material as
described herein. As shown in FIG. 1c, the catalyst
absorber can be in the form of a monolith surface
including a ceramic or stainless steel support 20, an
alumina layer 22, a platinum layer 24 and a carbonate
layer 26.

Ex. 1001A, 4:65–5:8.
With reference to Figures 1A through 1C, independent composition
claim 1 of the ’558 patent reads (indentation, drawing element numbers, and
matter in brackets added):
A material for removing gaseous pollutants from
combustion exhaust comprising
[1] an oxidation catalyst specie selected from platinum
[12, 24], palladium, rhodium, cobalt, nickel, iron, copper,
molybdenum or combinations thereof
[2] disposed on a high surface area support [10, 20],
[3] said catalytic component[1] being intimately and
entirely coated with an absorber selected from a hydroxide,

1 There is no antecedent for “said catalytic compound” in claim 1; we
construe “said catalytic component” to refer to “an oxidation catalyst.”

IPR2014-01555
Patent 5,451,558

9

carbonate [14, 26], bicarbonate or mixtures thereof of an alkali
or alkaline earth or mixtures thereof.
Ex. 1001, col. 12:30–38.
Figure 2 of the ʼ558 patent is reproduced below.

Fig. 2 depicts a flowchart illustrating a
process of making the catalyst.

With reference to Figures 1 and 2, the ʼ558 patent explains:
The method of making the catalyst absorber is
shown in FIG. 2. The catalyst/absorber of the present
invention is made by starting with high surface area
alumina spheres [10] having a surface area of 50 to 350
square meters per gram . . . . The spheres are
approximately 1/8 inch in diameter. . . . The alumina
spheres are washed with distilled water to remove small
particles bound loosely to the surface. The spheres are
then dried for about 16 hours at 300º F. to ensure that all
of the cavities and interstices in the spheres are fully
dried, and that the surface is free of water. The spheres

IPR2014-01555
Patent 5,451,558

10

are then stored in an air-tight container until ready for
further processing.

A solution of Pt 2-ethylhexanoate [platinum
2-ethylhexanoate] which contained 25% Pt [platinum]
was added to toluene to get a concentration of Pt such
that the weight of solution equal to the toluene uptake
would contain sufficient Pt to give a loading of 0.23
weight percent per weight of alumina. The platinum
coated spheres [Figs. 1A and 1B, elements 10 and 12]
were then dried for 1 hour at 900º F. in air. The spheres
are then cooled to approximately room temperature and
stored in an air-tight container again. The platinum
coated spheres [Figs. 1A and 1B, elements 10 and 12] are
then coated with an alkali or alkaline earth carbonate or
bicarbonate coating [Figs. 1A and 1B, element 14], the
alkali or alkaline earth carbonate or bicarbonate being
selected from lithium, sodium, potassium or calcium
carbonate or bicarbonate solution, preferably, a sodium
carbonate solution at a concentration of 14 percent by
weight in distilled water. The water was heated to
dissolve all of the sodium carbonate. The carbonate
coated spheres were then dried at 300º F. for two hours.
The final catalyst absorber had a coating of platinum in
the amount of 0.23 weight percent added to the alumina,
and 10.0 weight percent Na2CO3 [sodium carbonate]
added to the alumina.

Ex. 1001A, 5:9–47 (italics added).

Independent method claim 33 of the ʼ558 patent reads (indentation
and matter in brackets added):
A process of preparing a material for removing gaseous
pollutants comprising

IPR2014-01555
Patent 5,451,558

11

[1] depositing an oxidation catalyst specie [Fig. 1A, 12]
selected from platinum, palladium, rhodium, cobalt, nickel, iron,
copper, molybdenum or combination[s] thereof from a solution
onto a high surface area support [Fig. 1A, 10],
[2] drying said support and
[3] depositing from a solution over said oxidation
catalyst specie[s] an absorber [Fig. 1A, 14] selected from a
hydroxide, carbonate or bicarbonate and mixtures thereof of an
alkali or alkaline [earth] or mixtures thereof and
[4] drying the support thereby coating said oxidation
catalyst specie[s] with said absorber.
Ex. 1001, col. 14:3–13.
III. Analysis—Takeshima (Ground 1)
A. Challenge
According to Petitioner, claims 1, 7, 8, 14, and 32 of the ʼ558 patent
are anticipated by Takeshima (Ex. 1004B). Paper 2, pages 12 and 17–25;
Paper 32, pages 10–14.
Patent Owner disagrees. Paper 29, pages 11–13.
B. 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
Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334–35 (Fed. Cir. 2008),

IPR2014-01555
Patent 5,451,558

12

as further amplified by 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).
C. Claim 1
Claim 1 reads (matter in brackets added; principal limitation in
dispute in italics):
A material for removing gaseous pollutants from
combustion exhaust comprising
[1] an oxidation catalyst specie selected from platinum,
palladium, rhodium, cobalt, nickel, iron, copper, molybdenum
or combinations thereof
[2] disposed on a high surface area support,
[3] said [catalytic] component being intimately and
entirely coated with an absorber selected from a hydroxide,
carbonate, bicarbonate or mixtures thereof of an alkali or
alkaline earth or mixtures thereof.
Ex. 1001, col. 12:29–37.
D. Petition
The following appears in Petitioner’s claim chart (italics added):

IPR2014-01555
Patent 5,451,558

13

Limitation in claim 1 Takeshima
said catalytic component being
intimately and entirely coated with
an absorber selected from a
hydroxide, carbonate, bicarbonate or
mixture thereof of an alkali or
alkaline earth or mixtures thereof.
Platinum and barium oxide are
carried on the alumina carrier.
Ex. 1004[B] at Paragraphs
[0014-15]. Figs. 5(A)-5(B) depict
the barium oxide being disposed over
the platinum.

Paper 2, page 24 (italics added).
Takeshima Figures 5(A) and 5(B), and a portion of Figure 1, are
reproduced below.

Fig. 1 depicts a gasoline engine

IPR2014-01555
Patent 5,451,558

14

Figs. 5(A) and 5(B) depict a schematic view
of the Takeshima catalyst

Paragraphs 0014–0016, and 0018 of Takeshima read in part:
[0014] The NOx absorbent 18 contained in the casing 19
uses, for example, alumina as a carrier.

[0015] [I]t can be considered that . . . absorption and
releasing operation is conducted by the mechanism as
shown in Fig. 5. This mechanism will be explained by
using as an example a case where platinum Pt and
barium Ba [in the form of barium oxide] are carried on
the carrier . . . .

[0016] Namely, when the inflow of exhaust gas becomes
considerably lean, the concentration of oxygen in the
inflow of exhaust gas is greatly increased. As shown in
Fig. 5(A), the oxygen O2 is deposited on the surface of
the platinum Pt in the form of O2. On the other hand, the
NO in the inflow of exhaust gas reacts with the O2 on the
surface of the platinum Pt and becomes NO2 (2NO + O2
→ 2NO2). Subsequently, a part of the produced NO2 is
oxidized on the platinum Pt and absorbed into the

IPR2014-01555
Patent 5,451,558

15

absorbent. While bonding with the barium oxide BaO, it
is diffused in the absorbent in the form of nitric acid ions
NO3 as shown in Fig. 5(A). In this way, NOx is
absorbed into the NOx absorbent 18.

[0018] On the other hand, at this time, when the air-fuel
ratio of the air-fuel mixture fed into the combustion
chamber 3 is made rich and the air-fuel ratio of the
inflow of exhaust gas becomes rich . . . a large amount
of unburnt HC [hydrocarbons] and CO [carbon
monoxide] is discharged from the engine, and these
unburnt HC and CO react with the oxygen on the
platinum Pt and are oxidized. Also, when the air-fuel
ratio of the inflow of exhaust gas becomes rich, the
oxygen concentration in the inflow of exhaust gas is
extremely lowered, and therefore the NO2 is released
from the absorbent. This NO2 reacts with the unburnt HC
and CO as shown in Fig. 5(B) and is reduced. In this
way, when the NO2 no longer exists on the surface of the
platinum Pt, the NO2 is successively released from the
absorbent. Accordingly, when the air-fuel ratio of the
inflow of exhaust gas is made rich, the NOx is released
from the NOx absorbent 18 in a short time.

Petitioner’s witness, Dr. Farrauto, testified:
35. The oxidation of CO in the “rich” exhaust stream on the
platinum catalyst, as described in Paragraph [0018] of
Takeshima (Ex. 1004[B]), produces more carbon dioxide in
addition to the carbon dioxide produced by the combustion
of the fuel.

36. During the “rich” operations described in Takeshima,
barium oxide in the disclosed Pt–BaO–alumina catalyst
would convert to barium carbonate in the presence of the
carbon dioxide in the exhaust stream.

IPR2014-01555
Patent 5,451,558

16

Ex. 1003A ¶¶ 35–36.
E. Opposition
Patent Owner argues that despite Petitioner’s claim chart stating that
“Figs. 5(A)–5(B) depict the barium oxide being disposed over the platinum,”
Petitioner has failed to show “that a barium carbonate absorber is over . . .
[a] platinum group metal.” Paper 29, pages 11–12 (underlining in original).
Patent Owner further argues that Takeshima does not describe a
method for making its catalyst/absorber. Id., page 13.
Patent Owner still further argues that Takeshima does not describe a
“high surface area support.” Id., page 13:8–9.
F. Reply
Petitioner’s Reply suggests that Patent Owner’s sole argument is that
“Takeshima does not . . . disclose an oxidation catalyst specie[s] intimately
and entirely coated with an absorber.” Paper 32, page 10.
During prosecution in response to a rejection (Ex. 2002, renumbered
pages 70–72) of at least original claim 1 (Ex. 2002, renumbered page 31)
based on a Wan patent, Patent Owner added “intimately and entirely coated”
in newly presented claim 57 (Ex. 2002, renumbered page 83:2–3).
Further according to Petitioner, the amendment was designed to make
clear that any “alkaline earth compound [e.g., barium oxide] is not alloyed
within the alumina [support] as a [thermal] stabilizer, but [rather is] disposed
on top so that it can function as an absorber.” Paper 32, pages 3–4 and
11–12.

IPR2014-01555
Patent 5,451,558

17

G. Discussion
An issue before us is the meaning of “intimately and entirely coated.”
The language “intimately and entirely coated” does not appear in the
written description portion of the specification. As noted above, the
language was added during prosecution in an attempt to avoid a Wan patent.
The language “intimately and entirely coated” is consistent with
Figures 1A, 1B, and 1C of the ’558 patent. Thus, we disagree with
Petitioner that “the ʼ558 patent does not expressly state [i.e., disclose]
that . . . platinum, . . . must be coated with an oxide layer.” Paper 32,
page 8; see also Ex. 1001, col. 5:34–35.
The Petition states that “intimately and entirely coated” is to be
“construed to require that the absorber material must be disposed over, or on
top of, the catalytic component relative to the high surface area support.”
Paper 2, page 15:14–16.
Patent Owner seems to agree. See Paper 29, page 8:5–8. Patent
Owner goes on to say that “experts for both parties have interpreted the term
‘entirely coated’ as meaning the amount of the absorber must be sufficient
to form a monolayer on the surface area presented by the high surface area
support . . . which itself is at least partially coated with the oxidation catalyst
specie.” Id. at page 8:8–12. Lastly, Patent Owner “agrees that the
combustion exhaust must nevertheless have access to the catalyst either
directly, or by diffusion through the overlaying absorber. Id. at page 8:12–14.
(italics added).

IPR2014-01555
Patent 5,451,558

18

The Reply relies on cross-examination testimony of Patent Owner’s
witness, Dr. Mark Crocker:
Q [by counsel for Petitioner]. Okay. Do you know if NO
[nitrous oxide] can diffuse through [a] sodium carbonate
[layer]?

A [Dr. Crocker]. I have never examined that, but I would
imagine that there is some degree of mobility of NOx
through sodium carbonate by means of iron [ion?]
transport, also possibly by means of molecular diffusion.

Q. Okay. So is there a thickness of sodium carbonate
through which no NO could diffuse through?

A. That's a difficult question to answer. What I can say
is that the thicker the coating, the slower the diffusion
will likely be.

Q. And hence, less effective the catalyst absorber will
be?

A. Yes, if the coating is too thick.

Q. Do you have any sense of how thick the sodium
carbonate would be that would render the catalyst
absorber ineffective to catalyze the NO to NO2?

A. Not having examined this myself, I can't give an
answer. What I can -- or I cannot give a precise answer.
What I can say is that, if I were designing a catalyst, I
would try and restrict the thickness of the coating to not
more than a couple of monolayers.

Q. Okay. And is that recommendation stated anywhere
in the ’558 patent?

IPR2014-01555
Patent 5,451,558

19

A. No.
Ex.1056, page 45: 6 – page 46: 5; Paper 32, page 5.

According to Petitioner, given Dr. Crocker’s cross-examination
testimony, Patent Owner’s claim construction language “must fail” citing
Talbert Fuel Sys. Patents Co.2 Paper 32, page 5.
Petitioner has “revised” Dr. Crocker’s testimony to suit its case.
Dr. Crocker did not testify that the claimed invention would be inoperable.
He testified that that the effectiveness of the catalyst could be a function of
the thickness of the absorber layer.
Operativeness (35 U.S.C. § 101) and enablement (35 U.S.C. § 112)
per se of a challenged patent are not patentability issues that can be raised in
an IPR. To the extent that Petitioner seeks to raise the issue here for the sole
purpose of establishing that Patent Owner’s claim construction “must fail,”
and therefore claim 1 is anticipated by Takeshima, Petitioner has failed to
prove its case. A patent is presumed to enable one skilled in the art to make
and use the claimed invention.

2 Talbert Fuel Sys. Patents Co. v. Unocal Corp., 275 F.3d 1371, 1376 (Fed.
Cir. 2002) (Talbert I), certiorari granted, vacated, and remanded, 537 U.S.
602 (2003), judgment aff’d, Talbert Fuel Sys. Patents Co. v. Unocal Corp.,
347 F.3d 1355 (Fed. Cir. 2003) (Talbert II). Talbert I was cited for the
propositions that (1) “a [claim] construction that renders the claimed
invention inoperable should be viewed with extreme skepticism” and
(2) “Talbert did not demonstrate inoperability. . . .” We believe the
propositions survived Supreme Court and Talbert II review on remand.
However, for reasons given in this opinion, those propositions do not apply
in the case before us.

IPR2014-01555
Patent 5,451,558

20

Dr. Crocker did not testify that one skilled in the art could not use the
ʼ558 invention; rather, he explained how effectiveness may be a function of
absorber layer thickness.
A comparison of Figures 1A, 1B, and 1C of the ʼ558 patent vis-à-vis
Figures 5(A) and 5(B) of Takeshima reveals that (1) the “material” of the
ʼ558 patent has a layer 14, 26 covering the entire catalyst layer 12, 24,
whereas (2) the Takeshima “material” has a corresponding element barium
oxide layer (the NO3 – NO3 portion) that does not cover the entire catalyst
(circular P1 portion) even if the barium oxide layer is intimately connected to
the P1 catalyst. This detail is made clear by Dr. Crocker’s cross-examination
testimony (Ex. 1056, page 61:10–page 63:17) creating a partially highlighted
Exhibit 1053, reproduced below:

Determining the meaning of “intimately and entirely coated” has been
somewhat difficult, since the language does not appear in the written

IPR2014-01555
Patent 5,451,558

21

description portion of the specification. Use of “intimately and entirely
coated” in claim 1 without a mention of ‘intimately and entirely coated” in
the written description portion of the specification of the ʼ588 patent raises a
concern expressed by Federal Circuit Judge Richard Linn:
In case after case before my court, the central debate
revolves around the meaning of claim terms that, for
example, were added during prosecution and do not
appear anywhere in the written description. For those
cases, the meaning of the claim limitation has to be
inferred from other words, leaving the issue open to
unnecessary dispute and leading frequently to protracted
and costly litigation.

Linn, Perspectives on Becoming a Successful Examiner, 91 J. Pat. & Tm.
Office Soc’y 418, 421 (6 June 2009).
On the one hand, a claim construction requiring that the absorber
layer entirely cover the catalyst layer is entirely consistent with Figs. 1a–1c
of the ’558 patent and associated discussion in the specification. Ex. 1001,
col. 3:38–40 (Fig. 1b showing a magnified view that is depicted as a
completely covered catalyst layer) and col. 4:67–5:1 (describing an alumina
sphere 10 with a platinum coating 12 and a carbonate coating 14 thereon).
There is no hint in the specification as to the thickness of carbonate coating
14.
On the other hand, both experts seem to believe that “intimately and
entirely coated” is broader than Figs. 1a–1c. Both believe that the language
includes a material where the catalyst has direct contact with the exhaust gas,
as opposed to being limited by a monolayer absorbent where the catalyst

IPR2014-01555
Patent 5,451,558

22

functions via diffusion. The direct contact option appears to us to be a post-
litigation afterthought when compared to the specification, as filed. It is true
that Dr. Crocker and Dr. Farrauto suggest that if the layer is too thick, the
ʼ588 material may not be efficient. No degree of efficiency appears in the
claim.
The matter was discussed at oral argument:
JUDGE McKELVEY: Let me ask you this: Why isn’t
this claim [i.e., claim 1] limited to figure 1A of your patent?
DR. RASSER [counsel for Patent Owner]: Your Honor,
I was not present at the time when the prosecution took place.
In my view –
JUDGE McKELVEY: It says entirely and intimately
coated [actually intimately and entirely coated]. Figure 1 shows
that.
DR. RASSER: Right.
JUDGE McKELVEY: And tell me where else
something is describe[d in the Specification] that would make it
mean something different.
DR. RASSER: There isn’t.[3]

3 Dr. Rasser thereafter attempted to explain why the “intimately and
entirely coated” limitation should be given a different construction.
However, he candidly conceded that his explanation was not supported by
any testimony. Transcript of Oral Argument, Paper 49, page17:16 through
page 19:12. In response to a question of “Where is there testimony on that
point,” the answer was “There isn’t.” Page 19:10–12.

IPR2014-01555
Patent 5,451,558

23

We hold that “intimately and entirely coated” mean exactly what it
says. In other words, it means the embodiment shown in Figs. 1a through 1c
of the ʼ558 patent drawings and associated discussion in the written
description portion of the specification.
We appreciate why both parties would prefer a broader construction,
i.e., “intimately and entirely coated” means (1) coated with a monolayer
where catalytic action would occur through diffusion (our construction) as
well as (2) direct contact with the combustion gas without diffusion.
Petitioner would favor a broader construction because Takeshima anticipates
a direct contact embodiment. Patent Owner would favor a broader
construction because more “material” might infringe claim 1.
Takeshima Figs. 5(A) and 5(B) describe an embodiment where the
exhaust gas directly contacts the catalyst. A direct contact embodiment does
not fall within the scope of claim 1 of the ʼ558 patent.
Accordingly, Takeshima does not describe the “intimately and
entirely coated” limitation of claim 1.
Therefore, Takeshima does not anticipate claim 1 of the ʼ558 patent.
Claim construction is an issue of law. In the event of an appeal, it is
possible the Federal Circuit could disagree with our construction. Because
of that possibility, and to mitigate a possibility of a need for a remand, we
will address the applicability of Takeshima under the broader interpretation
seemingly urged by the parties.
Takeshima Figs. 5(A) and 5(B) do not show the monolayer
embodiment; instead they show an embodiment where the exhaust gas

IPR2014-01555
Patent 5,451,558

24

directly contacts the Pt (platinum) catalyst. If it would turn out that
“intimately and entirely coated” covers that embodiment, then Takeshima
would anticipate claim 1 of the ʼ558 patent.
Patent Owner further argues that there is no anticipation because
Takeshima Figs. 5(A) and 5(B) are said not to describe a “high surface area
support.” Paper 29, page 13:8–9.
Patent Owner’s argument limited to Figs. 5(A) and 5(B) is somewhat
curious. Manifestly, Takeshima describes the use of “alumina as a carrier.”
Ex. 1004B, ¶ 0014:1–2. Dr. Farrauto testified that the “alumina carrier
disclosed by Takeshima is a high surface area support because it has
sufficient irregular internal surface structure to allow the deposition of an
amount of platinum that is necessary to allow the catalyzed 2NO + O2 →
2NO2 reaction to occur.” Ex. 1003, ¶ 29. Patent Owner’s Opposition does
not address Dr. Farrauto’s relevant testimony. We find Dr. Farrauto’s
testimony credible.
We find, based on Dr. Farrauto’s testimony, that one skilled in the art
would understand that Takeshima describes a high surface area support.
As noted earlier, Patent Owner also maintains that Takeshima fails to
describe a method for making its material. In effect, Patent Owner
maintains that Takeshima does not contain an enabling disclosure.
Takeshima is presumed to be enabling. In re Antor Media Corp., 689 F.3d
1282 (Fed. Cir. 2012) (see Part I: a non-patent prior art publication is
presumed to be enabling). Patent Owner has not directed our attention to
evidence relating to any alleged lack of enablement.

IPR2014-01555
Patent 5,451,558

25

Patent Owner has not argued the separate patentability of dependent
claims 7, 8, 14, and 32. Accordingly, those claims fall with claim 1. See
Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48532 (col. 1,
Comment 60) (Aug. 14, 2012) (“a patent owner may waive any argument
that a claim is separately patentable”) and Paper 22, page 5 (“Patent Owner
is cautioned that any argument in support of patentability not raised in the
Response will be deemed waived.”).
I. Summary
(1) Based on our interpretation of “intimately and entirely coated,”
we find that challenged claims 1, 7, 8, 14, and 32 are not anticipated by
Takeshima.
(2) Should our interpretation be set aside on appeal in favor of the
parties’ proposed construction, then we would find, for the reasons given
above, that Takeshima anticipates challenged claims 1, 7, 8, 14, and 32.
J. Decision
We find that Petitioner has failed to establish by a preponderance of
the evidence that Takeshima anticipates claim 1.
Since independent claim 1 has not been shown to be anticipated, it
follows that dependent claims 7, 8, 14 and 32 likewise have not been shown
to be anticipated.

IPR2014-01555
Patent 5,451,558

26

IV. Analysis—Hoekstra (Ground 2)
A. Challenge
According to Petitioner, claims 1, 7–12, 14, 21–23, 32–36 and 38–42
of the ʼ558 patent are anticipated by Hoekstra (Ex. 1005A) and claims 9–11
and 23 are unpatentable under 35 U.S.C. § 103(a) over Hoekstra. Petition
(Paper 2), pages 12 and 25–36; Reply (Paper 32), pages 14–18.
Patent Owner disagrees. Opposition (Paper 29), pages 14–19.
We did not institute with respect to claim 36 based on Hoekstra.
Paper 26, page 4.
Therefore claim 36 is not before us as to Ground 2.
B. Anticipation
To establish anticipation based on inherency, the evidence must
establish that the missing descriptive matter is necessarily present in the
thing described in the reference. Continental Can Co. v. Monsanto Co.,
948 F.2d 1264, 1268 (Fed. Cir. 1991).
Inherency cannot be established by the mere fact that a certain thing
may result from a given set of circumstances. In re Robertson, 169 F.3d 743,
745 (Fed. Cir. 1999). See also Hansgirg v. Kemmer, 102 F.2d 212, 214
(CCPA 1939) (inherency may not be established by probabilities or
possibilities; the mere fact that a certain thing may result from a given set of
circumstances is not sufficient); Rapoport v. Dement, 254 F.3d 1053, 1063
(Fed. Cir. 2001) (inherency, a question of fact, cannot be established by a
preponderance of the evidence based on evidence that a certain thing may
result from a given set of circumstances).

IPR2014-01555
Patent 5,451,558

27

Whether a reference inherently describes claimed subject matter is a
question of fact. In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982); In re
Schreiber, 128 F.3d 1473 (Fed. Cir. 1997).
C. Claim 1
Claim 1 is again reproduced for the convenience of the reader.
Claim 1 reads (matter in brackets added; principal limitation in
dispute in italics):
A material for removing gaseous pollutants from
combustion exhaust comprising
[1] an oxidation catalyst specie selected from platinum,
palladium, rhodium, cobalt, nickel, iron, copper, molybdenum
or combinations thereof
[2] disposed on a high surface area support,
[3] said catalytic] component being intimately and
entirely coated with an absorber selected from a hydroxide,
carbonate, bicarbonate or mixtures thereof of an alkali or
alkaline earth or mixtures thereof.
Ex. 1001, col. 12:29–37.
D. Petition
The following appears in Petitioner’s claim chart in part (italics
added):
Limitation in claim 1 Hoekstra
said catalytic component being
intimately and entirely coated with
an absorber selected from a
The platinum-impregnated carrier is
coated with a selected alkaline earth
metal compound. Ex. 1005[A] at

IPR2014-01555
Patent 5,451,558

28

hydroxide, carbonate, bicarbonate or
mixture thereof of an alkali or
alkaline earth or mixtures thereof.
col. 3, ln. 51-55.
The alkaline earth metal solution
is applied to the platinum group
metal impregnated carrier material,
and then dried and calcined.
Ex. 1005[A] at col. 4, ln. 24-45. At
the completion of the drying step, but
before the calcining step, the relevant
disclosed catalytic composite would
comprise a platinum group metal
disposed on a high surface area
alumina support, with an outer
coating of either barium hydroxide,
calcium hydroxide or strontium
hydroxide covering the platinum
group metal. Ex. 1003[A], Farrauto
¶¶ 41-43.
After the completion of the
calcination of the catalytic composite
formed using either barium oxide,
barium nitrate or barium acetate, the
resulting barium oxide outer coating
is converted to barium carbonate in
the presence of carbon dioxide. See
Ex. 1012[A]; Ex. 1009[A] at pp. 3-4;
Ex. 1003[A], Farrauto ¶ 44-47.

Paper 2, pages 30–31(italics added).
Portions of Example 1 of Hoekstra are mentioned in the Petition.
Paper 2, page 27.
Example 1 reads:
200 grams of ⅛ inch gamma-alumina spheres
having an average bulk density of 0.30 grams per cubic
centimeter were immersed in 600 milliliters of an

IPR2014-01555
Patent 5,451,558

29

aqueous solution of chloroplatinic acid and palladium
chloride contained in a steam-jacketed rotary dryer. The
impregnating solution contained the equivalent of 2.018
grams of platinum and .075 grams of palladium, and
further contained .150 grams of citric acid monohydrate.
The spheres were tumbled in the solution, and the
solution evaporated to dryness in contact therewith. The
impregnated spheres were then immersed in a hot
(150 ºF.) stirred 600 milliliter aqueous solution of 40
grams of barium oxide and 0.42 grams of [reducing
agent] hydrazine hydrate. After about 1 minute, the
solution was decanted and the spheres dried for 2 hours
at 250 ºF. in a forced draft oven. The dried spheres were
subsequently calcined in a flow of air for 2 hours at 1000
ºF. to yield a catalytic composite containing .009 wt.
percent platinum, .036 wt. percent palladium, and about
9 wt. percent barium. This example demonstrates that the
inclusion of a reducing agent, e.g., hydrazine hydrate,
obviates leaching of the platinum group metal component
from the carrier material during the second impregnation
step.

Ex. 1005, col. 4:60–col. 5:7 (italics added).

E. Opposition
Patent Owner maintains that Hoekstra does not describe, explicitly or
inherently, the “intimately and entirely coated” limitation of claim 1.
Paper 29, page 14.
Patent Owner further maintains that Petitioner is incorrect when it
asserts that “the [Hoekstra hydrazine hydrate] reducing agent prevents the
leaching of the platinum group metal from the carried into the alkaline earth

IPR2014-01555
Patent 5,451,558

30

metal solution therefore resulting in a coating of the alkaline earth metal . . .
over platinum.” Id. at 15; see also Paper 2, page 26, last paragraph.
Patent Owner’s position is based in part on Hoekstra’s reported use of
2.018g of platinum which is said to yield a material containing 1.009 wt %
platinum prior to exposure to the alkaline earth metal compound, i.e., a
barium compound. Paper 29, page 15, last paragraph.
Patent Owner goes on to note that after exposure of reducing agent
(i.e., hydrazine hydrate) and alkaline earth metal compound, the reported
platinum loading is only 0.009 wt%. Paper 29, page 15, last line.
As a result, says Patent Owner, nearly all of the platinum was leached
into the solution of alkaline earth metal. Id.
Patent Owner’s position is based on the direct testimony of
Dr. Crocker:
I disagree . . . that the alkaline earth metal compound will
be coated over the platinum group metal component
(paragraph 40 [of Dr. Farrauto’s direct testimony—Ex
2003A]). Example 1 in Hoekstra reports the use of an
alumina support (200 g) and a platinum solution
(containing 2.018 g Pt) which would yield a material
containing 1.009 wt% Pt (prior to exposure to the
alkaline earth metal compound). After the subsequent
exposure to the mixture of reducing agent and alkaline
earth metal compound (in aqueous solution), the reported
Pt loading is only 0.009 wt%. Allowing for the increase
in the weight of the catalyst due to the deposition of the
alkaline earth compound, it can be calculated that the
theoretical loading of Pt should have been close to 0.8
wt%. This indicates that nearly all of the Pt initially on
the support was leached into the solution of the alkaline
earth metal compound. In relative terms, over 98% of the

IPR2014-01555
Patent 5,451,558

31

Pt was lost from the carrier. In all probability this
occurred because the Pt supported on alumina was
exposed simultaneously to the reducing agent and the
alkaline earth metal compound, and therefore the Pt was
not in a reduced state (i.e., the reduction of the Pt was a
slow reaction and should therefore have been conducted
before the Pt was exposed to the alkaline earth metal
compound). With regard to the small amount of Pt
remaining on the support, it is impossible to say whether
this was Pt that was originally on the support and that
was not leached, or was Pt that was leached into solution
but was then re-deposited on the catalyst. Consequently,
there is no way to determine whether the Pt in the final
catalyst could be under, intimately mixed into, or on top
of the layer of alkaline earth compound, or some
combination thereof.

Ex. 2002 ¶ 23 (italics added).
Patent Owner cross-examined Dr. Farrauto. With respect to the
limitation in issue, Dr. Farrauto testified:
Q [counsel for Patent Owner] Well, I'd like to focus on
the platinum, because your conclusion was that you have
a platinum-containing catalyst where the platinum is
coated--

A [by Dr. Farrauto] Yes.

Q -- with an alkaline earth metal, and my submission to
you is that -- or the premise there was that the platinum
was immobilized?

A Right. But that doesn't preclude the possibility that the
platinum is still covered even though there's only a small
amount of it.

IPR2014-01555
Patent 5,451,558

32

There's two issues to this; one is does the platinum leach
[into the alkali layer], and the second is, is the alkali
covering it. You only have a small amount of platinum
and a reasonable amount of palladium, so it is still
possible that the alkali has covered the platinum and
palladium, even though it's only remained in a small
amount.

Q Is it also possible that the platinum went in solution
and deposited back with the barium together, as if from
the mixed solution?

A If you believe in this calculation, then obviously that
weight percent platinum would include that which is in
the barium, that which is covered by the barium, et cetera,
et cetera. So you can't tell just from -- from that alone as
to where the platinum is.

Q We can’t tell?

A Well, as I said, it's possible that the platinum, such a
small amount, might have been covered completely by
the alkali. You can't conclude either way.

Ex. 2003, page 142:16–144:4 (italics added).
Based on Dr. Farrauto’s above-quoted cross-examination, it is Patent
Owner’s position that Petitioner has failed to establish that that the “alkali
covered the platinum” and therefore Hoekstra does not “necessarily disclose
all claim limitations,” including the “intimately and entirely coated”
limitation. Paper 29, page 18.

IPR2014-01555
Patent 5,451,558

33

F. Reply
Based on the cross-examination of Dr. Crocker, Petitioner says that
Dr. Crocker agrees that the “2.018” number in Hoekstra Example 1 is a
typographical error which should instead be “0.018.” Paper 32, page 15.
At the time of cross-examination of Dr. Crocker, as well as when the
Reply was filed, “the originally filed Hoekstra application . . . [was] not
available from the U.S. Patent Office.”4 Id. The significance of the
unavailability presumably is that the “2.018” number could not be verified
vis-à-vis the original file of the Hoekstra application. However, foreign
counterparts report the number as “0.018.” For example, counterpart
Canadian Patent 1,028,681 reports the number as “0.018.” Ex. 1055,
page 8:25–26 (“The impregnating solution contained the equivalent of 0.018
g Pt [platinum] . . .”).
Both Dr. Farrauto and Dr. Crocker now agree that the proper number
is “0.018”.5 See (1) Farrauto Second Declaration, Ex. 1015 ¶ 20 (“because
all of the foreign counterparts . . . state a 0.018 g starting weight to platinum,
I [now] believe that the “2.018 g” number . . . is a typographical error that
should read -- 0.018 g --.”) and (2) Crocker cross-examination, Ex. 1056,
page 69:8–70:3:

4 The Board was able to locate the file wrapper of the Hoekstra patent.
The relevant portion of the file wrapper was forwarded to the parties on
16 October 2015 (Paper 38—errata Paper 40) as Ex. 3002.

5 The Hoekstra file wrapper confirms the typographical error. Ex. 3002,
page 9:1 (A208:1) and last page (Rule 312 amendment).

IPR2014-01555
Patent 5,451,558

34

Q [by counsel for Petitioner]. Have you ever been told
that there are foreign counterparts to the Hoekstra patent?

A [by Dr. Crocker]. No.

Q. Would it change your opinion stated in Paragraph 23
of your declaration [Ex 2002, ¶ 23 quoted above] if the
stated 2.018 grams of platinum is a typographical error
that should have read 0.018 grams of platinum?

A. Yes, it would.

Q. Okay. And if I provided to you a counterpart of
Hoekstra that shows that it was in fact a typographical
error, would you request of your attorneys to submit a
corrected declaration that addresses that in Paragraph 23?

A. Yes, I would.

Q. Okay. I'd like to show you the Canadian version
[Ex. 1055] of the Hoekstra patent and direct your
attention to Page 8, Lines, 23 on, the last paragraph on
Page 8 that bridges Pages 8 and 9.

(DOCUMENT HANDED TO WITNESS FOR
REVIEW)

BY MR. MEYER [counsel for Petitioner]:

Q. Does this change your opinion rendered in Paragraph
23 of your declaration?

A. Yes, it does.

IPR2014-01555
Patent 5,451,558

35

Dr. Crocker re-calculated assuming “0.018” was a correct number and
determined that if 0.018 g were the starting weight of platinum (Ex. 1054),
there would have been no leaching of platinum (Ex. 1056, page 69:9–70):
Q [counsel for Petitioner]. Okay. I'd like to give you a
piece of paper [Ex.1054 before calculation] and a
calculator, if necessary, and can you do that calculation?

A [Dr. Crocker]. Sure. So I will calculate the theoretical
loading?

Q. Um-hmm.

A. Okay. (Witness complies). That is the calculation.
That is assuming that barium is present as barium oxide.

(DOCUMENT [Ex. 1054 after calculations] HANDED
TO ATTORNEY [for Petitioner])

BY MR. MEYER [attorney for Petitioner]:

Q. Okay. And the reason that you say [in your direct
testimony, Ex. 2002, ¶ 23] that it leaches out is because
this number 0.84% does not match the .009 weight
percent number on Column 5, Line 2 of Hoekstra?

A. That is correct.

Q. Okay. I was wondering if you could just initial and
date that calculation?

A. Okay. (Witness complies). Okay. Going to do . . . [the
date] it in the American [dating system as opposed to the
European dating system].

Q. Okay. Now I’d like to ask you to do another

IPR2014-01555
Patent 5,451,558

36

calculation.

A. Okay.

Q. This time assuming a platinum loading of 0.018 grams.

A. (Witness complies.) 0.018. That is the amount of
platinum that is being added.

Q. That is in there, instead of 2.018 use 0.018.

A. Sure. Okay. And I obtain the answer 0.0075 weight
percent.

Q. Okay. And that number is in line with the .009 weight
percent stated at Column 5, Line 2 of Hoekstra, correct?

A. Correct.

Q. Okay. Can you sign and date that one as well?

A. (Witness complies.)

Q. Okay.

MR. MEYER: And I’d like to have that [the paper
showing calculations] marked as the . . . exhibit, 1054.

(WHEREUPON, PETITIONER'S EXHIBIT NUMBER
1054, IS MARKED FOR IDENTIFICATION)

G. Discussion
The issue is: Does Hoekstra describe, explicitly or inherently, the
“intimately and entirely coated” limitation of claim 1?

IPR2014-01555
Patent 5,451,558

37

Based in large measure on Dr. Farrauto’s direct declaration testimony,
Petitioner maintained that Hoekstra describes the “intimately and entirely
coated” limitation.
Patent Owner made considerable inroads into Dr. Farrauto’s direct
testimony during cross-examination. Based on the cross-examination
testimony quoted above, we understand Dr. Farrauto to have testified that it
was possible that platinum leached into the alkali layer, albeit it was possible
it did not. Since inherency cannot be based on possibilities, based on cross-
examination of Dr. Farrauto, one might conclude that Petitioner failed to
make out its case.
Patent Owner might have walked away from presenting an opposition
case on the merits, arguing that Petitioner failed to make out a prima facie
case. But, that is not what happened. Patent Owner elected to present its
own case on non-inherency, relying on its witness Dr. Crocker. Dr. Crocker,
contrary to Dr. Farrauto, was of the opinion that no platinum leached into
(i.e., migrated to) the alkali layer. During cross-examination, Dr. Crocker
agreed that the “2.018” number (Ex. 1005, col. 5:66) in Hoekstra Example 1
was a typographical error which should have been “0.018.” Based on a
re-analysis in view of the typographical error, Dr. Crocker continued to
conclude that platinum did not leach into the alkali layer—in essence
agreeing with that Petitioner that no leaching occurs.
In reply, Patent Owner offered a Second Declaration of Dr. Farrauto
in which he agreed that the “2.018” number was a typographical error which
should have been “0.018.”

IPR2014-01555
Patent 5,451,558

38

During his original cross-examination (Ex. 2003), it is not apparent
that Dr. Farrauto was aware of the typographical error.
Not to be overlooked in the back-and-forth occurring from (1) initial
arguments in the Petition, (2) subsequent counter arguments in the
Opposition, and (3) further responsive arguments in the Reply, is the
following: Hoekstra explicitly states in describing the result of process steps
described in Example 1 that “[t]his example demonstrates that the inclusion
of a reducing agent, e.g., hydrazine hydrate, obviates leaching of the
platinum group metal component from the carrier material during the
second impregnation step [i.e., adding a barium oxide layer].” Ex. 1005,
col. 5:4–8 (italics added).
Both parties presented evidence, and argument based on that evidence,
with respect to the “intimately and entirely coated” argument. We believe it
appropriate to consider all the admissible evidence, and arguments pro and
con based on that evidence, in resolving anticipation vis-à-vis Hoekstra.
Given (1) the explicit Example 1 description of no leaching,
(2) Dr. Crocker’s agreement that there is no leaching, (3) taking into account
Dr. Farrauto’s ultimate agreement with Dr. Crocker with respect to leaching
and notwithstanding Dr. Farrauto’s cross-examination, which was based on
an erroneous “2.018” number, and (4) weighing all the evidence, we find
that the evidence establishes by a preponderance of the evidence that
Hoekstra describes the “intimately and entirely coated” limitation of claim 1.
We find that Hoekstra anticipates claim 1.

IPR2014-01555
Patent 5,451,558

39

We note that claim 33 does not contain an “intimately and entirely
coated” limitation like claim 1. Rather, claim 33 calls for “coating said
oxidation catalyst specie with said absorber.” Ex. 1001, col. 14:12–13.
Patent Owner agrees that the limitation of claim 33 is broader
than the limitation of claim 1. Transcript of Oral Argument, Paper 49,
page 28:13–17.
Assuming that Hoekstra does not describe the “intimately and entirely
coated” limitation of claim 1, Hoekstra manifestly describes the claim 33
coating step. Ex. 1005A, Example 1 and col. 5:18–21 (claim 1, limitation
(b)).
We find that Hoekstra anticipates claim 33 even if Hoekstra does not
anticipate claim 1.
Apart from claims 9–11 and 23, Patent Owner has not argued the
separate patentability of the remaining claims.
H. Claims 9–11 and 23
1. Introduction
An inter partes review trial as to claims 9–11 and 23 was instituted
based on likely unpatentability under § 103(a). Paper 21, pages 18–20.
Each of these claims recites a range, but in our institution decisions
(Paper 21:18–19) we could not find that the range was anticipated by
Hoekstra.
Based on applicable precedent, and because likelihood of obviousness
was apparent from the record, we instituted based on § 103(a). Paper 21,
paragraph bridging pages 18–19 and page 20, third and fourth paragraphs.

IPR2014-01555
Patent 5,451,558

40

In the Opposition, “Patent Owner respectfully objects to the Board’s
substitution and amendment to the grounds asserted in the Petition.”
Paper 29, page 19.
Patent Owner does not state why it “objects.” Accordingly, we have
no basis for evaluating the objection and find no need to further elaborate on
the objection.
By indicating a likelihood of unpatentability in the Decision
instituting an inter partes review trial, Patent Owner had (1) notice as well
as (2) a full and fair opportunity to address obviousness in its Opposition.
2. Claims 9–11
Patent Owner does not address why the subject matter of claims 9–11
would not have been obvious.
The claims set out ranges that overlap with those described by
Hoekstra.
The evidence relied upon in the Petition, when considered in light of
applicable binding precedent set out in the Institution Decision, supports by
a preponderance of the evidence a prima facie case of obviousness—the
ranges of the claims overlap the ranges described in the prior art. Paper 21,
paragraph bridging pages 18–19.
Because Patent Owner has not addressed obviousness, and because
the overlapping range precedent, we hold that the subject matter of claims
9–11 would have been prima facie obvious within the meaning of § 103(a).
Patent Owner has presented no evidence to overcome the prima facie case.
Claims 9–11 are unpatentable under § 103(a) over Hoekstra.

IPR2014-01555
Patent 5,451,558

41

3. Claim 23
Patent Owner argues the separate patentability of claim 23. Paper 29,
paragraph bridging pages 18–19.
Claim 23 depends from claim 22, which in turn depends from
claim 21, which in turn depends from claim 1 (reproduced above).
Claim 23 limits the absorber concentration “to about 10 percent
by weight of the material [i.e., the “material” of claim 1].”
Patent Owner relies on direct declaration testimony by Dr. Crocker:
Claims 21-23 of the ‘558 patent provide ranges for
the amount of absorber, i.e., the hydroxide, carbonate, etc.
of an alkali or alkaline earth. Hoekstra expresses the
amount of Ba present as the metal. It asserts a range of
about 8 to about 10 wt. percent Ba. Petitioner’s position
is that, due to the calcination in air, the Ba of the
Hoekstra composition is present in the form of the
carbonate. The atomic weight of Ba is 137; the molecular
weight of BaCO3 is 197. The range cited by Hoekstra of
8-10 wt% Ba corresponds to 11.5–14.3 wt% BaCO3. The
percentage of claim 23 (about 10%) is well outside the
Hoekstra range.

Ex. 2002 ¶ 29.
With respect to ranges, Hoekstra states:
The optimum alkaline earth metal content is a function of
the density of the selected carrier material. It will be
appreciated that carrier materials of higher density suffer
less shrinkage at higher temperatures than do those of
lower density, and the optimum alkaline earth metal
content will therefore increase in the range of from about
1 to about 20 wt. percent with decreasing density.
Preferably the refractory carrier material is alumina

IPR2014-01555
Patent 5,451,558

42

characterized by an average bulk density of from about
0.3 to about 0.5 grams per cubic centimeter, and the
alkaline earth content, preferably barium, is in the range
of from about 8 to about 10 wt. percent.

Ex. 1005, col. 4:11–32 (italics added).
Actually, Hoekstra describes a general range of 1–20 wt%, with a
preferred range being 8–10%. No reason is set out in Hoekstra for the
preference. Dr. Crocker’s calculated range of 11.5–14.3 wt% falls within
the broad range described by Hoekstra. The Opposition presents no credible
reason why one skilled in the art would not have expected Hoekstra’s
compositions to be operative within the broad 1–20 wt% range. Hence, we
are unable to find anything unobvious about a range of “about 10 weight
percent.”
Claim 23 is unpatentable under § 103(a) over Hoekstra.
V. Analysis—Kinoshita (Ground 3)
A. Challenge
According to Petitioner, claims 1, 2, 7–10, 14, 15, 17, 19, 24, 31,
33–40, 42, and 44 of the ʼ558 patent are anticipated by Kinoshita
(Ex. 1006A). Petition (Paper 2), pages 12 and 36–44; Reply (Paper 32),
pages 18–20.
Patent Owner disagrees. Opposition (Paper 29), pages 19–25.
B. Anticipation
The applicable anticipation principles are set out above in connection
with the discussion of Takeshima and Hoekstra and need not be repeated
here.

IPR2014-01555
Patent 5,451,558

43

C. Claim 1
Claim 1 is again reproduced for the convenience of the reader.
Claim 1 reads (matter in brackets added; principal limitation in
dispute in italics):
A material for removing gaseous pollutants from
combustion exhaust comprising
[1] an oxidation catalyst specie selected from platinum,
palladium, rhodium, cobalt, nickel, iron, copper, molybdenum
or combinations thereof
[2] disposed on a high surface area support,
[3] said catalytic] component being intimately and
entirely coated with an absorber selected from a hydroxide,
carbonate, bicarbonate or mixtures thereof of an alkali or
alkaline earth or mixtures thereof.
Ex. 1001, col. 12:29–37.
D. Decision to Institute
In instituting an inter partes review trial, we discussed Kinoshita
Examples 1 and 6, as well as Table 5. Paper 21, page 22.
Insofar as we can tell, the Opposition and Reply do not address
Kinoshita Example 6 or Table 5.
Rather, the parties seem satisfied to resolve any anticipation dispute
on the basis of Kinoshita Example 3.

IPR2014-01555
Patent 5,451,558

44

Given that the parties have not discussed Kinoshita Example 6 or
Table 5, we determine patentability on the basis of Kinoshita Example 3—
not Kinoshita Example 6 and Table 5.
E. Petition
The following appears in Petitioner’s claim chart (limitations in
dispute in italics):
Limitation in claim 1 Kinoshita
an oxidation catalyst specie
selected from platinum,
palladium, rhodium, cobalt,
nickel, iron, copper,
molybdenum or combinations
thereof
Kinoshita discloses that the catalyst
specie can be platinum, palladium
and/or rhodium. See Ex. 1006[A] at
col. 2, ln. 56-65; see also col. 2,
ln. 29-39. In the catalyst of Example
3, just platinum is used. Ex. 1006[A]
at col. 5, ln. 3-8.
said catalytic component being
intimately and entirely coated with
an absorber selected from a
hydroxide, carbonate, bicarbonate or
mixture thereof of an alkali or
alkaline earth or mixtures thereof.
In the catalyst of Example 3, the
previously dried and calcined
platinum carrying carrier was
covered with a potassium carbonate
outer coating. Ex. 1006 at col. 5,
ln. 3-16; Ex. 1003[A], Farrauto
¶¶ 50-52.
Paper 2, pages 39–40 (italics added).
According to Kinoshita:
The catalyst according to the . . . [Kinoshita] invention
can be produced by an appropriate process in the prior art
in which a catalytic element is carried by a carrier. A
process of impregnating and/or depositing the carrier
with a liquid in which compounds containing the
catalytic elements such ·as an alkali metal and Pt
[platinum], Pd [palladium] and Rh [ruthenium] are
dissolved and/or suspended and then drying it at 300° –

IPR2014-01555
Patent 5,451,558

45

800° C., preferably firing at 400° – 600° C. is found
recommendable with respect to the durability and
performance of the catalyst thus obtained.

Ex. 1006A, col. 2:56–65.

Kinoshita Example 3 reads:

EXAMPLE 3
1 l [liter] of Honeycomb carrier coated with active
alumina (main component: cordierite; bulk density 0.6
g/cc; cell number 300 cells/in2; cylinder 130 dia. x 76
mm long) was immersed for 30 minutes in 2 l [liters] of
an aqueous solution of chloroplatinic acid equivalent to
1.25 g of Pt [platinum], thereby causing Pt to be carried.
After drying at 110° C., the product was fired for 1 hour
at 500° C. in the atmosphere. Then, the honeycomb thus
carrying Pt was immersed for 1 minute in 2 l [liters] of an
aqueous solution of potassium carbonate containing
1 mol of K [potassium], thereby causing K to be carried.
The product was dried at 110° C. [drying step] and fired
for 1 hour at 500° C. in the atmosphere, thereby yielding
a catalyst with Pt and K carried in the honeycomb. The
carried volumes of catalytic elements and the results of
catalyst evaluation are summarized in Table 4 [not
reproduced]. For durability test and catalyst evaluation, a
monolith catalyst [30 mm dia. x 28 mm long, (20 cc)]
was cut to a specimen.

Ex. 1006A, col. 5:1–21.

According to Dr. Farrauto:

At the completion of the drying step at 110° C, but
before being fired at 500° C, Kinoshita's Example 3
product would comprise Pt [platinum] disposed on a

IPR2014-01555
Patent 5,451,558

46

high surface area alumina support, with a coating of
potassium carbonate completely covering the Pt.

If this coating of potassium carbonate was
subjected to the exhaust conditions described in the '558
patent at column 2, lines 38-55, the potassium carbonate
would absorb NO2 disposed within that exhaust in the
same manner that the counterpart potassium carbonate
absorbent disclosed in the '558 patent would.

Ex. 1006A ¶¶ 51–52 (italics added).
F. Opposition
With regard to claim 1, Patent Owner argues that Kinoshita does not
describe the “intimately and entirely coated” limitation of claim 1. Pape 29,
page 20.
With regard to claim 33, Patent Owner further argues that Kinoshita
does not describe “an oxidation catalyst specie.” Id.
Relying on direct declaration testimony of Dr. Crocker, Patent Owner
maintains that one cannot determine “how much alumina is present in the
catalyst and hence impossible to know the corresponding loading of
potassium on the platinum-impregnated alumina (in wt%).” Paper 29,
page 21.
Dr. Crocker testified:
I disagree with the assertion that “Kinoshita’s
Example 3 product would comprise Pt disposed on a high
surface area alumina support, with a coating of potassium
carbonate completely covering the Pt.” ([P]etition at
page 38; Farrauto, Ex. 1003A, . . . [¶¶] 50–51).
Example 3 refers to Table 4 in Kinoshita, which reports
the potassium loading as being 0.14 mol per 1 kg catalyst.

IPR2014-01555
Patent 5,451,558

47

However, the alumina loading on the honeycomb
substrate in Example 3 is not disclosed, hence it is
impossible to know how much alumina is present in the
catalyst and hence impossible to know the corresponding
loading of potassium on the platinum-impregnated
alumina (in wt%). Therefore, one cannot say whether this
amount of potassium (0.14 mol/kg) is sufficient to fully
coat the platinum-impregnated alumina. However, a
representative calculation can be performed. If one
assumes a typical cordierite honeycomb density of
435 g/L, and an alumina loading of 180 g/L (being fairly
typical for the washcoat loading of an automotive
catalyst), then 1 kg of catalyst would contain 293 g of
alumina (and 707 g of honeycomb). Hence 0.14 mol
potassium would be supported on 293 g alumina,
equivalent to 1.87 wt%. This is not sufficient to fully coat
the platinum-impregnated alumina.
Ex. 2002 ¶ 32 (italics added).
Patent Owner cross-examined Dr. Farrauto, calling our
attention to the following:
Q [by counsel for Patent Owner] So I could do two
calculations, one for potassium carbonate and one for
potassium hydroxide, and then -- well –

A [by Dr. Farrauto] But that doesn’t guarantee that it’s
going to cover, because adsorption could be preferred --
in other words, you could get multi-layer adsorption of
the potassium hydroxide or the potassium carbonate on
the alumina, so it doesn't necessarily mean that it is
going to cover the platinum, and that was basically what
we said yesterday, and that is you're making an
assumption just on the cross-sectional area of the
material whether it would cover it, but there are cases
where you could get clumps, if you may, of the nitrate or

IPR2014-01555
Patent 5,451,558

48

the carbonate, and therefore there could possibly be some
separate platinum material that is not covered. But you
can't a priori -- it's an ideal calculation, let's put it that
way.

Q But the reverse would be true, that if I find that there is
not enough to cover even if it were perfectly distributed,
then at least I would have that answer?

A You can’t even make that conclusion, because perhaps
that material will adsorb on -- selectively onto the
platinum. In other words, materials are selective, and
they adsorb on different surfaces. For example, water
adsorbs on glass in a different way than it adsorbs, for
example, on alumina, and it could be the same situation,
it’s just that we don't know for sure unless you
understand exactly the selectivity of adsorption on
platinum versus, for example, on the alumina. The
calculation that we made yesterday was a physical
calculation based on the cross-sectional area and the
surface area of the material. It doesn’t take into account
the chemistry of what can happen in the interactions of
these materials with different species.

Ex. 2003, pages 124:6–125:21 (italics added).
G. Reply
Based on cross-examination of Dr. Crocker, Petitioner maintains that
“there are a sufficient number of potassium atoms to completely cover the
Pt [platinum] atoms.” Paper 32, page 19.
The following portions of Dr. Crocker’s cross-examination have been
called to our attention, to which we add the first question and answer:
Q [by counsel for Petitioner]. At a platinum loading of
0.23 weight percent of alumina, would there be enough

IPR2014-01555
Patent 5,451,558

49

platinum to entirely cover all of the platinum support
with a layer of platinum?

A [Dr. Crocker]. No, there would not.

Q. Okay. On a microscopic level, what would the surface
of the alumina look like when it is so loaded at 0.23
weight percent of alumina?

A. So essential --

Q. Wait, wait. I’m sorry. 0.23 weight percent of
platinum.

A. Platinum. So one will have an alumina surface onto
which had been deposited nano particles of platinum.
These nano particles will contain or will correspond to
essentially a cluster of platinum atoms and they will be
randomly distributed on the catalyst surface.

Q. Okay. And there would be spaces between?

A. There would be spaces between them, yes.
* * *
Q. Okay. Okay. Now let’s do the same exercise for
Example 3 which is on Page 6 of Kinoshita from, looks
like, Lines 2 through 21 [col. 5:2–21]. Now, there is 1.25
[col. 5:7] grams of platinum, correct?

A. Yes.

Q. And that 1.25 grams of platinum is 0.064 molls
[moles] of platinum, correct? And feel free to use the
calculator.

A. 0.0064.

IPR2014-01555
Patent 5,451,558

50

Q. Okay. And if we compare the -- and there is 1 moll
[mole] of potassium in the form of potassium carbonate,
correct?

A. That is correct.

Q. And if we compare the 1 moll [mole] of potassium to
the 0.064 molls [moles] of platinum, there are 156
potassium atoms to each platinum atom, correct?

A. So what did we say it was? One moll [mole] platinum
divided by 0.0064 equals -- okay. That’s interesting. It’s
giving me zero for some reason. But I’m willing to -- to
believe your assertion, so –

Ex. 1056, page 35:25–page 36:16 and page 72:19–73:11 (italics
added).
H. Discussion
1. Claim 1
Example 3 of Kinoshita does not explicitly describe a catalyst
component, i.e., platinum, “intimately and entirely coated” with an absorber.
Accordingly, Petitioner must establish that the process described in
Kinoshita Example 3 necessarily results in a catalyst layer “intimately and
entirely coated” with an absorber layer.
Dr. Farrauto says it does.
Dr. Crocker says it does not.
On the one hand, Dr. Farrauto testified that the potassium carbonate
completely covered the platinum catalyst. Ex. 1003A ¶ 51.

IPR2014-01555
Patent 5,451,558

51

On the other hand, on cross-examination, Dr. Farrauto testified that
there is no “guarantee that it’s going to cover” and “there could possibly
be some separate platinum material that is not covered.” Ex. 2003,
page 124:9–10 and 21–23.
Dr. Crocker testified on direct that because Example 3 does not
contain sufficient detail, “one cannot say whether . . . [the] amount of
potassium . . . is sufficient to fully coat the platinum impregnated alumina.”
Ex. 2002 ¶ 32.
According to Petitioner, Dr. Crocker conceded on cross-examination
that the platinum catalyst layer was entirely coated with the absorber.
Paper 32, page 9.
Petitioner has not directed our attention to where Dr. Crocker made
any compelling concession. It is true that at the end of the line of
questioning quoted above, Dr. Crocker said “I’m willing to . . . believe
your assertion.” Ex. 1056, page 73:10–11. However in context, cross-
examination does not make clear whether “believe your assertion” means
(1) agree that the absorber entirely coats the catalyst or (2) agree with
counsel’s number of 0.064. We have found no follow-up question along the
lines: “Then you agree that Kinoshita Example 3 necessarily describes an
absorber entirely coating a catalyst layer”?
While the matter of assigning the weight to be given to the testimony
of the two witnesses in this case is a close call, based on the direct and cross-
examination testimony with respect to Kinoshita and its Example 3, and to
the extent that there is a conflict between Dr. Crocker’s testimony and that

IPR2014-01555
Patent 5,451,558

52

of Dr. Farrauto, we credit the testimony of Dr. Crocker over that of
Dr. Farrauto.
However, even if one were to find the testimony of Dr. Crocker and
Dr. Farrauto evenly balanced, then a preponderance of the evidence on
inherency does not emerge. Under those circumstances, the party with the
burden of proof cannot be said to have proved its case. See Yamaha Int’l
Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1580 n.11 (Fed. Cir. 1988)
(where a party is under a burden to establish a fact by a preponderance of the
evidence and where the evidence is so evenly balanced that no
preponderance emerges, the party having the burden of persuasion
necessarily loses).
We are also concerned that Example 3 does not describe enough detail
to indicate clearly whether there is enough potassium to cover the platinum-
impregnated alumina. Ex. 2002 ¶ 32.
According to Petitioner, Patent Owner “seeks to rewrite claims 1 and
39 [sic—33] to require that the entirety of the alumina support be coated by
the absorber [potassium carbonate].” Paper 32, page 18 (italics added). But,
that is not what Dr. Crocker said. Rather, Dr. Crocker testified that there
was not enough potassium to fully coat the “platinum-impregnated alumina.”
Ex. 2002 ¶ 32, last sentence (italics added).
We find that Petitioner has not established that Kinoshita describes the
“intimately and entirely coated” limitation of claim 1.
We further find that the subject matter of claim 1 is not inherently
described by Kinoshita.

IPR2014-01555
Patent 5,451,558

53

Because we find that the “intimately and entirely coated” limitation is
not described by Kinoshita, we need not reach Patent Owner’s alternative
argument that Kinoshita fails to describe an oxidation catalyst.
2. Claim 33
As noted in connection with our discussion of claim 33 associated
with Hoekstra, “coating said oxidation catalyst specie with said absorber” is
broader than “intimately and entirely coated.”
With respect to claim 33, we credit the testimony of Dr. Crocker and
Dr. Farrauto, both of whom testified that the platinum catalyst was coated
with absorber.
Accordingly, claim 33 (and the claims 34–40, 42, and 44 dependent
on claim 33) are anticipated by Kinoshita even though claim 1 is not
anticipated by Kinoshita.
VI. Analysis—Inui (Ground 4)
A. Challenge
According to Petitioner, claims 1, 2, 7–10, 14, 15, 17, 19, 24, 31,
33–37, 39, 40, and 42 of the ʼ558 patent are anticipated by Inui (Ex. 1007B).
Petition (Paper 2), pages 12 and 44–53; Reply (Paper 32), pages 20–22.
Patent Owner disagrees. Opposition (Paper 29), pages 25–27.
We did not institute with respect to claim 42 based on Inui. Paper 26,
page 4.
Therefore claim 42 is not before us as to Ground 4.

IPR2014-01555
Patent 5,451,558

54

B. Anticipation
The applicable anticipation principles are set out above in connection
with the discussion of Takeshima and Hoekstra and need not be repeated
here.
C. Claim 1
Claim 1 is reproduced again for the convenience of the reader.
Claim 1 reads (matter in brackets added; principal limitation in
dispute in italics):
A material for removing gaseous pollutants from
combustion exhaust comprising
[1] an oxidation catalyst specie selected from platinum,
palladium, rhodium, cobalt, nickel, iron, copper, molybdenum
or combinations thereof
[2] disposed on a high surface area support,
[3] said catalytic] component being intimately and
entirely coated with an absorber selected from a hydroxide,
carbonate, bicarbonate or mixtures thereof of an alkali or
alkaline earth or mixtures thereof.
Ex. 1001, col. 12:29–37.
D. Petition
The following appears in Petitioner’s claim chart (limitations in
dispute in italics):
Limitation in claim 1 Inui
an oxidation catalyst specie
selected from platinum,
“An aqueous solution of
dinitrodiammine platinum

IPR2014-01555
Patent 5,451,558

55

palladium, rhodium, cobalt,
nickel, iron, copper,
molybdenum or combinations
thereof
comprising 5 g of platinum was
added to 100 g of activated alumina
having a BET surface area of 100
m2/g [sic] and mixed therewith, and
the mixture was then dried for 2
hours at 120° C and fired for 2 hours
at 500° C.” Ex. 1007[B] at p. 9,
Paragraph [0022] (emphasis added).
said catalytic component being
intimately and entirely coated with
an absorber selected from a
hydroxide, carbonate, bicarbonate or
mixture thereof of an alkali or
alkaline earth or mixtures thereof.
In the catalyst of Exemplary
Embodiment 4, the previously dried
and calcined platinum-carrying
honeycomb support was covered
with a potassium carbonate outer
coating. Ex. 1007[B] at p. 10,
Paragraph [0026] & p. 9, Paragraph
[0023]; Ex. 1003[A], Farrauto
¶¶ 57–59.

Paper 2, page 48 (italics added).
Inui Exemplary Embodiments 1 and 4 read:
[0022] (Exemplary Embodiment 1) An aqueous solution
of dinitrodiammine platinum comprising 5 g of platinum
was added to 100 g of activated alumina having a BET
surface area of 100 m/g2 and mixed therewith, and the
mixture was then dried for 2 hours at 120°C [drying step]
and fired for 2 hours at 500°C. The resulting powder was
wetground by means of a ball mill in order to obtain an
aqueous slurry in which was immersed a commercially
available cordierite honeycomb support (produced by
Nippon Glass Co., Ltd.; transverse cross section having
400 gas flow cells per square inch; diameter 33 mm ø;
length 76 mm; volume 65 ml), after which the excess
slurry was blown away by means of compressed air. The
material was then dried for 2 hours at 120°C and fired for

IPR2014-01555
Patent 5,451,558

56

2 hours at 500°C in order to obtain a honeycomb support
covered with platinum-supporting alumina powder.

[0023] In addition, the resulting honeycomb support was
immersed in a 4.3 mol/l (litre) aqueous solution of
sodium nitrate, after which the excess solution was
blown away by means of compressed air, and the
resulting material was dried for 2 hours at 120°C and 35
fired at 500°C in order to obtain completed catalyst (A).
In this catalyst, 5 wt% of platinum and 10 wt% of sodium
were supported with respect to the activated alumina.

[0026] (Exemplary Embodiment 4) Completed catalyst
(D) was obtained in the same way as in Exemplary
Embodiment 1, except that a 2.5 mol/l aqueous solution
of potassium carbonate was used instead of the 4.3 mol/l
aqueous solution of sodium nitrate in Exemplary
Embodiment 1. In this catalyst, 5 wt% of platinum and
10 wt% of potassium were supported with respect to the
activated alumina.

Ex. 1007B ¶¶ 0022, 0023, and 0026 (italics added). See also
Dr. Farrauto’s direct declaration testimony (Ex. 1003A ¶¶ 57–59).
E. Opposition
Patent Owner argues that Inui does not anticipate because:
(1) Inui does not describe an oxidation catalyst;
(2) Inui’s potassium carbonate is not an “absorber”;
rather it is an adsorber; and
(3) Inui teaches the use of a hydrocarbon.
Paper 29, pages 25–26.

IPR2014-01555
Patent 5,451,558

57

1. Oxidation Catalyst
According to Patent Owner, the Inui catalyst acts as a “Selective
Reduction Catalyst (SCR).” Paper 29, page 25.
Cited to support its position is direct declaration testimony of
Dr. Crocker:
The platinum catalyst of Inui is not an oxidation catalyst
as this term is used in the ‘558 patent. The catalyst in Inui
is a hydrocarbon-SCR [Selective Reduction Catalyst]
catalyst, which reduces NOx present in the hydrocarbon-
containing gas stream to N2 instead of oxidizing it to
NO2. In the hydrocarbon-containing gas stream of Inui
the Pt is not covered with a layer of PtO (although some
PtO may be present), as would be the case if the Pt specie
were an oxidation catalyst.
Ex. 2002 ¶ 35.
According to Patent Owner, whether the catalyst is an “oxidation”
catalyst or a “reduction” catalyst “actually makes a difference for the
composition of the catalyst itself.” Paper 29, page 26:1–3.
2. Absorber v. Adsorber
According to Patent Owner, the alkali metal carbonate of Inui is not
an absorber; it’s an adsorber.
Support is said to be cross-examination of Dr. Farrauto:
Q [by counsel for Patent Owner] Frankly, I interpreted it
the same way. And I was wondering what the role is of
the sodium component in this catalyst. Do you have a
point of view on that?

A [Dr. Farrauto] It’s probably to retain NO2. In other
words, the platinum still has to oxidize the NO to NO2,
the NO2 is adsorbed in the sodium, and then at some

IPR2014-01555
Patent 5,451,558

58

critical point that NO2 is desorbed, and that’s not
addressed in 19 [believed to be a reference to ¶ 0019 of
Inui]. And then once it is in the gas phase, then the
addition of the hydrocarbon will reduce the NOx to
nitrogen.

Ex. 2003, page 89:4–16 (italics added).
3. Hydrocarbon
According to Patent Owner, Petitioner has failed to prove its case
because Inui teaches the addition of a hydrocarbon:
A method for removing exhaust gas in an oxidizing
atmosphere state through a catalyst obtained by covering
a monolithic structure with a catalyst active ingredient
comprising sodium and/or potassium, and platinum and a
refractory inorganic oxide, in the presence of a
hydrocarbon.

Paper 29, page 26; Ex. 1007B, page 2:20–25 (underlining in original).
Petitioner’s theory is said to require one to deviate from the
specific teaching of Inui in order to arrive at an absorber according to
the claims of the ʼ558 patent. Patent Owner maintains that “to do so
is based on hindsight.” Paper 29, page 26.
F. Reply
From its point of view, Petitioner summarizes the situation as follows:
At the completion of the drying step at 120° C, but
before being fired at 500° C, Inui’s Exemplary
Embodiment 4 product would comprise Pt [platinum]
disposed on a high surface area alumina support, with a
coating of potassium carbonate completely covering the
Pt. Patent Owner does not dispute this. Moreover, the

IPR2014-01555
Patent 5,451,558

59

outer coating that Dr. Farrauto testified would adsorb
NOx, as opposed to absorb, was a sodium compound, not
potassium carbonate.

Paper 32, page 20 (italics added; citations omitted).
G. Discussion
Patent Owner does not base its case on a failure of Inui to describe the
“intimately and entirely coated” limitation.
Rather, Patent Owner asserts that the Inui catalyst does not comprise
an oxidizing catalyst and that the Inui potassium carbonate is an adsorber—
not an absorber.
But, what Patent Owner cannot avoid is that the Inui combination
comprises the same elements as those set out in claim 1, all arranged in the
same order.
With reference to (1) the Specification of the ʼ558 patent (Ex. 1001)
and (2) Inui (Ex. 1007B), we find that Inui describes each of the claimed
elements arranged in the same order as follows (matter in brackets added):
A material for removing gaseous pollutants from
combustion exhaust [Inui, page 2:5: “a method for
removing nitrogen oxides in exhaust gas discharged from
an internal combustion engine”; ʼ558 patent, col. 1:9–14:
“process for reducing . . . pollutants . . . namely nitrogen
oxides (NOx)] catalyst for removing nitrogen oxides]
comprising

[1] an oxidation catalyst specie selected from
platinum [Inui, page 9:27: platinum supported alumina
powder; ʼ558 patent, col. 5:34: platinum; col. 14:16–17:
platinum], palladium, rhodium, cobalt, nickel, iron,
copper, molybdenum or combinations thereof

IPR2014-01555
Patent 5,451,558

60

[2] disposed on a high surface area support [Inui,
activated alumina having a BET surface areas of
100 m2/g; ʼ558 patent, col. 5:11–12: high surface area
alumina spheres having a surface areas of 50 to 330
square meters per gram],

[3] said catalytic component being intimately and
entirely coated with an absorber selected from a
hydroxide, carbonate [Inui, page 10:21: potassium
carbonate; ʼ558 patent, col. 13:7–8: potassium
carbonate], bicarbonate or mixtures thereof of an alkali or
alkaline earth or mixtures thereof.

Given that Petitioner has established that Inui describes a composition
comprising three ingredients arranged in the same manner as that claimed,
Petitioner has made out a prima facie case of anticipation. In re Spada, 911
F.2d 705, 707 (Fed. Cir. 1990) (“The prima facie case is a procedural tool
which, as used in patent examination (as by courts in general), means not
only that the evidence of the prior art would reasonably allow the conclusion
the examiner seeks, but also that the prior art compels such a conclusion if
the applicant produces no evidence or argument to rebut it.”).
Patent Owner can allege that the Inui platinum is a reducing catalyst
whereas its platinum is an oxidation catalyst. Patent Owner can further
allege that the Inui potassium carbonate is an adsorber whereas its potassium
carbonate is an absorber. Patent Owner can still further allege that
hydrocarbons must be present when using the Inui composition. But, as
Petitioner mentions, none of these allegations alters the fact that both the
claimed combination and the combination described by Inui comprise the

IPR2014-01555
Patent 5,451,558

61

same ingredients arranged in the same way. In our view nothing more is
needed to establish by a preponderance of the evidence a prima facie case of
anticipation.
Patent Owner has not come forward with convincing evidence that the
Inui compositions would behave differently from the claimed compositions.
We find that the evidence establishes by a preponderance of the
evidence that Inui describes all limitations of claim 1.
We find that Inui anticipates claim 1.
Patent Owner has not argued the separate patentability of the
remaining claims involved in Ground 4.
VII. Analysis—Stiles (Ground 5)
A. Challenge
According to Petitioner, claims 1, 7, 8 14–17, 19, 21–23 and 31 of
the ʼ558 patent are anticipated by Stiles (Ex. 1008A) Petition (Paper 2),
pages 12 and 53–59; Reply (Paper 32), pages 20–22.
Patent Owner disagrees. Opposition (Paper 29), pages 27–30.
We instituted an inter partes review trial as to claims 1, 7, 8, 14–19,
and 31 based on anticipation under § 102(e) and as to claims 21–23 based on
obviousness under § 103(a). Paper 26, page 3.
Stiles is prior art under 35 U.S.C. §102(e). Patent Owner has made no
effort to antedate Stiles.

IPR2014-01555
Patent 5,451,558

62

B. Anticipation
The applicable anticipation principles are set out above in connection
with the discussion of Takeshima and Hoekstra and need not be repeated
here.
C. Claim 1
Claim 1 is reproduced again for the convenience of the reader.
Claim 1 reads (matter in brackets added; principal limitation in
dispute in italics):
A material for removing gaseous pollutants from
combustion exhaust comprising
[1] an oxidation catalyst specie selected from platinum,
palladium, rhodium, cobalt, nickel, iron, copper, molybdenum
or combinations thereof
[2] disposed on a high surface area support,
[3] said [catalytic] component being intimately and
entirely coated with an absorber selected from a hydroxide,
carbonate, bicarbonate or mixtures thereof of an alkali or
alkaline earth or mixtures thereof.
Ex. 1001, col. 12:29–37.
D. Petition
We now turn to the arguments made in the Petition, Opposition, and
Reply.
The following appears in Petitioner’s claim chart (limitations in
dispute in italics):

IPR2014-01555
Patent 5,451,558

63

Limitation in claim 1 Stiles
an oxidation catalyst specie selected
from platinum, palladium, rhodium,
cobalt, nickel, iron, copper,
molybdenum or combinations
thereof
Stiles discloses a preferred
embodiment where the absorbent
catalyst comprises manganese oxide
(MnO) and aluminum oxide (Al2O3).
Ex. 1008[A] at col. 5, ln. 28-35 &
col. 6, ln. 7-13. In an alternative
embodiment, “adequately effective
materials can also be made by
substituting for the manganese oxide
such oxides as iron, nickel, cobalt,
zinc, copper and molybdenum and
tungsten, combinations of these
oxides plus manganese oxides also
are very effective….” Ex. 1008[A] at
col. 6, ln. 14-20 (emphasis added);
see also Id. at p. 8 (Table 1 at
Example Nos. 15 & 16 (NiOAl2O3)).
said catalytic component being
intimately and entirely coated with
an absorber selected from a
hydroxide, carbonate, bicarbonate or
mixture thereof of an alkali or
alkaline earth or mixtures thereof.
The catalytic component is covered
with an outer coating of potassium
carbonate. Ex. 1008[A] at col. 5,
ln. 40-44; see also Id. at p. 8, Table 1
(“K2CO3”). “Although potassium
carbonate is preferred, the alkali
carbonate can be that of sodium,
rubidium [sic] or cesium.”
Ex. 1008[A] at col. 6, ln. 26-27;
col. 13, ln. 3-16 (claim 8).
Potassium, sodium, rubidium and
cesium are all alkali metals.
Ex. 1003[A], Farrauto ¶64.
Paper 2, pages 55–56 (italics added).
A principal difference between Ground 5 and Grounds 1–4 is the
catalyst. Stiles does not describe use of platinum; rather Stiles describes use

IPR2014-01555
Patent 5,451,558

64

of other catalysts in the catalyst Markush group set out in claim 1 of the ʼ558
patent, i.e., iron, nickel, cobalt, copper, and molybdenum.
Petitioner’s position, based in part on its claim chart, and discussion in
the Petition, is that Stiles describes a catalyst described as follows:
Certain of the catalyst-adsorbent materials are
resistant to sulfur dioxide, but the catalyst is most
efficient in the absence of sulfur dioxide in the gas from
which the nitrogen oxides are to be removed. The most
effective agent for the adsorption is manganese and
aluminum oxide co-precipitated to produce a 50/50
mixture of finely divided mixed manganese and
aluminum oxides powder. This powder is milled in a ball
mill to produce a paste comprising water, the aluminum
oxide-manganese oxide powder and some colloidal
cerium oxide to act as strengthening agent for the dried
milled paste. After the paste has been dried, the granules
are derived by crushing and screening the dried paste.
The granules are further treated by adding a solution of
potassium carbonate which, on drying, leaves the
potassium carbonate completely covering the interior and
exterior of the granules.

Ex. 1008A, col. 5:28–44 (italics added).
Claim 1 does not include manganese in its catalyst Markush group.
However, Stiles teaches that:
Although manganese oxides appear to be relatively
unique as being the most effective, adequately effective
materials can also be made by substituting for the
manganese oxide such oxides as iron, nickel, cobalt, zinc,
copper and molybdenum and tungsten, combinations of
these oxides plus manganese oxides also are very
effective and also have some tolerance to SOx in the gas

IPR2014-01555
Patent 5,451,558

65

stream from which the nitrogen oxides are being
removed.

Ex. 1008A, col. 6:14–22 (italicized metals are included within the
catalyst Markush group of claim 1 of the ʼ558 patent).
Stiles also teaches that:
The ingredients can also be impregnated onto and into a
support such as alumina, silica, silica alumina, activated
carbon, silicon carbide, and others well known to the art.
The form of the supports can be granules, cylinders, rings,
honey combs, rods, spheres and others also known to the
art.

Ex. 1008A, col. 11:63–col. 12:1.
E. Opposition
According to Patent Owner, “Stiles does not disclose an oxidation
catalyst specie disposed on a high surface area support.” Paper 29, page 27
(italics added).
Patent Owner attacks Petitioner’s reliance on Stiles’ disclosure of the
nature of the support (col. 11:63–col. 12:22) as misplaced because Example
18 (misidentified in the Opposition as “Exhibit 18”) is said to relate to
reduction catalyst and not the oxidation catalyst. Paper 29, page 28.
Relevant to Patent Owner’s position, is direct declaration testimony of
Dr. Crocker:
According to Stiles (Example 18, last line), the
adsorbent can have the same forms as the support
material used in the preparation of the reduction catalyst,
i.e., granules, cylinders, rings, honeycombs, etc.
However, there is no statement indicating that the

IPR2014-01555
Patent 5,451,558

66

adsorbent catalyst can be prepared by impregnating the
transition material component (i.e., as soluble salts) onto
a support. Consequently, I disagree with the statement
that “The adsorbent catalyst is disposed on a high surface
area alumina support” (petition at p. 56).

Ex. 2002 ¶ 39.
F. Reply
According to Petitioner, “Patent Owner’s . . . [Opposition] is limited
to arguing that in Stiles the catalyst specie is not disposed on a high surface
area support.” Paper 32, page 23 (italics added).
In response, Petitioner points to cross-examination testimony of
Dr. Crocker:
Q [by counsel for Petitioner]. Okay. I’d like to direct
your attention to Paragraph 37 of your declaration [Ex.
2002]. Okay. Paragraph 37 of your declaration states that,
“Stiles discloses the oxidizing catalyst is intimately
mixed with alumina,” correct?

A [Dr. Crocker]. Correct.

Q. What is your understanding of why this is done?

A. I presume that the inventors were trying to prepare a
manganese-alumina mixed oxide in order to obtain a high
manganese oxide dispersion.

Q. What is the function performed by the alumina in this
intimate mixing of an oxidizing catalyst and alumina?

A. Providing that a mixed oxide is actually obtained,
then the function of the alumina is to provide a lattice in
which the manganese irons can reside.

IPR2014-01555
Patent 5,451,558

67

Q. So it’s like a support?

A. Not entirely the same.

Q. Same in some ways?

A. In some ways it’s the same.

Q. Okay. Why not just impregnate the oxidizing catalyst
with the solution of potassium carbonate?

A. I'm sorry. Can you repeat the question?

Q. Yeah. Why include alumina at all? Why not just
impregnate the oxidizing catalyst with the solution of
potassium carbonate?

A. Because manganese oxide on its own would not have
a very high surface area and because it would be prone to
sintering during high-temperature operation.

Q. Okay. So the alumina prevents sintering?

A. Correct.

Q. So it's like a support in that way?

A. In that sense it is like a support providing that a
mixed oxide is indeed obtained.

Ex. 1056, page 76:17–77:13.
With respect to the “onto and into” discussion in col. 11: 63–64 of
Stiles, Dr. Farrauto testified on cross-examination:

IPR2014-01555
Patent 5,451,558

68

Q [by counsel for Patent Owner] Then they [i.e., Stiles]
say, “The ingredients can also be impregnated onto and
into a support such as alumina, silica, silica alumina,
activated carbon, silicon carbide and others well known
to the art [Stiles, col. 11:63–66].”

So what it [Stiles] is saying here is that you can
make the reduction catalyst, instead of making it as a
stand-alone powder [Stiles, col. 5:31–40 and col. 6:7–9],
you can also put it on a support [Stiles, col. 11:63–66]?

A [Dr. Farrauto] Exactly.

Ex. 2003, page 67:10–19.
G. Discussion
On the issue of whether Stiles describes depositing a catalyst on a
support, we credit the testimony of Dr. Farrauto over that of Dr. Crocker.
As Dr. Farrauto explains, that there are what might be referred to as
two embodiments described by Stiles. A first embodiment is a description
of a catalyst in the form of a powder. A second embodiment is a description
of a catalyst in the form of a powder impregnated “onto” a support. It is the
second description that counts.
Dr. Crocker notes an adsorber being a co-precipitated metal
oxide/aluminum oxide material. Ex. 2002 ¶ 37. As Dr. Crocker further
notes, “the oxidizing catalyst [] is not located on the alumina but is instead
intimately mixed with it.” Id. Any intimate mixed catalyst/alumina
component would be the powder to which Dr. Farrauto refers in his cross-
examination testimony quoted above and would relate to what we refer to

IPR2014-01555
Patent 5,451,558

69

as a first embodiment. The powder is then placed on a support—the second
embodiment to which we refer.
In the Reply, Petitioner refers to claim 8 of Stiles. Paper 32, page 23.
Claim 1 of the ʼ558 patent, with limitations from claim 8 of Stiles
inserted therein, demonstrates the anticipatory nature of Stiles:
A material for removing gaseous pollutants from
combustion exhaust [Stiles, col. 13:1–2] comprising
[1] an oxidation catalyst specie selected from . . . cobalt,
nickel, iron, copper, molybdenum [col. 13:5 and 8–9] or
combinations thereof
[2] disposed on a high surface area support [col. 13:4–5],
[3] said catalytic component being intimately [col. 13:4;
see also col. 5:40–44] and entirely coated with an absorber
selected from a hydroxide, carbonate [col. 13:13–15 (potassium
carbonate)], bicarbonate or mixtures thereof of an alkali or
alkaline earth or mixtures thereof.
For the reasons given, we find that Petitioner has established by a
preponderance of the evidence that Stiles describes the limitations of claim 1
of the ʼ558 patent.
We therefore find that Stiles anticipates claim 1 of the ʼ558 patent.
Apart from claims 21–23, Patent Owner does not argue the separate
patentability apart from claim 1 of the remaining claims involved in
Ground 5. Accordingly, those claims fall with claim 1.

IPR2014-01555
Patent 5,451,558

70

H. Claims 21–23
We instituted an inter partes review trial of claims 21–23 based on a
likelihood of those claims being unpatentable under § 103. Paper 21,
pages 32–33.
In our institution Decision, we said:
Claims 21–23 claim ranges of (1) 0.5–20, (2) 5–15,
and (3) about 10. Ex. 1008A, 13:16–24.

According to Stiles, the amount of alkali can vary
from 5 to 50% of the total weight of the adsorbent.
Ex. 1008A, 13:16; see id. at 6:30–31, 8:10–15.

The Stiles range does not anticipate the ranges of
claims 21–23. See Atofina, 441 F.3d at 999–1000.

The claimed ranges overlap with the ranges
described by Stiles. On that basis, there is a reasonably
likelihood that claims 21-23 are unpatentable under
35 U.S.C. § 103(a).

Paper 21, pages 32–33.
In its Opposition, “Patent Owner respectfully objects to the Board’s
substitution and amendment to the grounds asserted in the Petition.”
Paper 29, page 30.
Patent Owner does not state why it “objects.” Accordingly, we have
no basis for evaluating the objection and find no need to further elaborate on
the objection.

IPR2014-01555
Patent 5,451,558

71

By indicating a likelihood of unpatentability in the Institution
Decision, Patent Owner had (1) notice as well as (2) a full and fair
opportunity to address obviousness in its Opposition.
On the merits, Patent Owner acknowledges that the claimed ranges
overlap those described by Stiles but says the ranges of Stiles are
meaningless:
Furthermore, with regard to dependent claims 21–
23, Stiles at col. 6, lines 30-31, states that “the quantity of
alkali can vary from 5 to 50% of the total weight of the
adsorbent.” This range is so broad as to be meaningless.
An even broader range (10–90%) is disclosed at col. 8,
lines 14-15 of the reference. The only meaningful
guidance provided by Stiles as to the amount of alkali
carbonate is that “the 50% content has proved to be
optimum.” This does not, however, provide the skilled
person with any guidance as to the amount of alkali metal
carbonate to use in the material of the ʼ558 patent, which
comprises a high surface area support material. The
ranges of claims 21, 22 and 23 of the ʼ558 patent are
based on the total weight of the material of claim 1,
including the high surface area support. The adsorbent of
Stiles does not include a high surface area support
material. The alkali carbonate amount of 50%, stated by
Stiles to be optimum, cannot be correlated to the ranges
of claims 21-23 of the ʼ558 patent.

Paper 29, pages 29–30.
The discussion quoted above is an argument of counsel and does not
refer to any underlying evidence in the record. We are not sure what counsel
means by “cannot be correlated.” Patent Owner does not deny that the
ranges described by Stiles, however broad, overlap the ranges of claims

IPR2014-01555
Patent 5,451,558

72

21–23 of the ʼ558 patent. Rather, Patent Owner maintains that “[t]he
adsorbent of Stiles does not include a high surface area support material”—a
position with which we disagree for the reasons given above.
We agree with Petitioner’s argument set out in its Reply:
The ranges recited in claims 21-23 for the weight of
absorbent overlap with the ranges disclosed by Stiles. See
[the Institution] Decision (Paper 21) at pp. 32-33.
Therefore, [the subject matter of] claims 21-23 . . .
[would have been] prima facie obvious. MPEP §2144.05.
[See also the cases cited on pages 18–19 of the Decision
to institute.] Patent Owner has not rebutted this prima
facie obviousness by establishing unexpected results in
the ranges claimed or that Stiles teaches away from the
claimed ranges. See In re Geisler, 116 F.3d 1465, 1469
(Fed. Cir. 1997).

Paper 32, page 25.
Claims 21–23 are unpatentable under § 103(a) over Stiles.
VIII. Motions to Exclude
A. Introduction
Patent Owner has filed two motions to exclude. Paper 34 and
Paper 37.
A motion to exclude can be based on (1) inadmissibility under the
Federal Rules of Evidence (37 C.F.R. § 42.62) or (2) evidence presented
contrary to the applicable rules (37 C.F.R. § 42.62 (a) and 37 C.F.R.
§ 42.61(a) (“[e]vidence that is not taken, sought, or filed in accordance
with . . . [Subpart 42] is not admissible.”).

IPR2014-01555
Patent 5,451,558

73

B. First Motion
1. Exhibits 1015 and 1055
Exhibit 1015 is the Second Farrauto Declaration.
Exhibit 1055 is Canadian Patent 1,028,681.
The exhibits are objected to basically because they were filed with
Petitioner’s Reply. Paper 34, page 2.
The fact that evidence is filed with a reply does not mean the evidence
is per se inadmissible.
The exhibits relate to the issue of whether there is a typographical
error in Example 1 of Hoekstra, i.e., is “2.018” a typographical error which
should be “0.018.”
In presenting the Petition, Petitioner’s witness Dr. Farrauto explained
why he felt Hoekstra’s Example 1 anticipates claim 1 of the ʼ558 patent.
Dr. Crocker, Patent Owner’s witness, disagreed with Dr. Farrauto’s
explanation.
On cross-examination, Dr. Crocker was asked if the basis for his
disagreement might be different if the “2.018” number should have been
“0.018.” The underlying basis for the “2.018”number vis-à-vis the “0.018”
number is a description of “0.018” in numerous foreign counterparts of the
ʼ558 patent, including Canadian Patent 1028681—the only foreign patent
document which we have considered. No objection to admissibility of the
Canadian Patent was made during the Crocker cross-examination. 37 C.F.R.
§ 42.64(a).

IPR2014-01555
Patent 5,451,558

74

As explained above, Dr. Crocker agreed. Based on a “0.018” number,
Dr. Crocker came to the view that there would have been no leaching of
platinum into the alkali layer.
The Second Farrauto Declaration was submitted with the Reply and
establishes that both Dr. Farrauto and Dr. Crocker both agree on the “0.018”
number, based inter alia on the Canadian Patent.
Petitioner’s cross-examination was relevant to direct
declaration testimony by Dr. Crocker. Thus, the “first time in the Reply”
(Paper 34, page 2) argument came about as a direct result of Dr. Crocker’s
cross-examination. The objected to portion of the Second Farrauto
Declaration is also responsive to, and essentially consistent with,
Dr. Crocker’s cross-examination. Whether evidence is excluded is
discretionary with the Board. How discretion is exercised is determined on
the precise facts in each case. This can be seen, for example, in our decision
in Corning, Inc. v. DSM IP Assets B.V., IPR2013-00047 (PTAB May 1,
2014) (Paper 84), where some reply evidence was excluded while other
reply evidence was not excluded.
Patent Owner would contend, no doubt, that the excluded evidence in
Corning is similar to the evidence sought to be excluded here.
However, a review of the precise facts will show otherwise.
Here, the factual question is whether limitations in claim 1 are
inherently anticipated by Hoekstra.
Unlike Corning, the inherency theory matured during cross-
examination of Patent Owner’s witness, Dr. Crocker.

IPR2014-01555
Patent 5,451,558

75

Ultimately, in our view, Dr. Crocker agreed that no platinum migrated
to the alkali metal layer—based on an analysis with a correct “0.018”
number.
The Reply evidence, consistent with Dr. Crocker’s testimony, agreed
that a correct number is “0.018” and on that basis, Petitioner’s witness
agreed with Dr. Crocker.
Further, unlike Corning, a whole new theory of anticipation did not
arise in the first instance with the Reply; rather, it was essentially developed
during cross-examination of Patent Owner’s witness.
Still further, unlike Corning where Patent Owner had no chance to
counter the evidence based on a first instance new theory in a reply, here the
inherency issue based on the “0.018” number came up during cross-
examination. Patent Owner had an opportunity to address the “0.018”
number on redirect and indeed did so. Ex. 1056, pages 106:23–107:11.
Alternatively, as noted by Petitioner at oral argument, Patent Owner
could have addressed the matter in observations. Transcript of Oral
Argument, Paper 49, page 32:18 through page 33:5.
Lastly, Patent Owner could have contacted the Board to urge leave
to file a sur-reply. See Nintendo of America, Inc. v. ILife Technologies,
IPR2015-00106 (PTAB Dec. 7, 2015) (Paper 25) and Masterimage 3D, Inc. v.
Realding, Inc., IPR2015-00035 (PTAB Nov. 29, 2015) (Paper 58).
The objection is overruled.
Petitioner’s Reply therefore does not raise an impermissible new
argument.

IPR2014-01555
Patent 5,451,558

76

2. Exhibit 1015 ¶ 10
Patent Owner objects to the admissibility of paragraph 10 of Exhibit
1015 (Second Farrauto Declaration). Paper 34, page 3.
According to Patent Owner, the exhibit improperly presents new
evidence relevant to how one skilled in the art would understand Figure 5(A)
of Takeshima.
Patent Owner has prevailed on whether Takeshima anticipates claim 1
of the ʼ558 patent notwithstanding Petitioner’s view on what one skilled in
the art would have understood about Takeshima Figure 5(A).
The objection addresses the weight to be assigned testimony as
opposed to admissibility.
The objection is overruled.
3. Portion of the Reply
Patent Owner objects to what it characterizes as new argument on
page 16:7–17:17 (sic—16) of Petitioner’s Reply. Paper 34, pages 3–4.
A motion to exclude should address only admissibility of evidence—
not whether a Reply makes a “new” argument.
The objection is dismissed as improperly made in a motion to exclude.
4. Exhibit 1016
Patent Owner objects to the admissibility of Exhibit 1016. Paper 34,
pages 4–5.
Exhibit 1016 is a dictionary definition.
In making our decision, we have not relied upon Exhibit 1016.
Accordingly, the objection is dismissed as moot.

IPR2014-01555
Patent 5,451,558

77

C. Second Motion
Filing of the Second Motion was authorized in an order entered
9 October 2015. Paper 36.
In the order, Patent Owner was told the following:
The motion shall not include argument as to the
merits of patentability and shall not serve in any way as
supplementing arguments made in Patent Owner’s
opposition on the merits.

The motion shall be limited to (1) identifying the
exhibit sought to be excluded and (2) a very brief
discussion as to why it is being improperly relied upon
by Petitioner in its Reply:

“The exhibit sought to be excluded is Ex. ____.
The exhibit should be excluded because [explain
why].”
Paper 36, page 6.
A purpose in requiring a particular format was to make it easy for
Petitioner to respond to the Second Motion and for the Board to analyze and
decide the motion. See 37 C.F.R. § 42.1(b) (inexpensive resolution of
proceeding).
A review of the motion will immediately confirm that Patent Owner
did not follow the format ordered and manifestly is an attempt to supplement
arguments made in Patent Owner’s Opposition.
The Second Motion is denied without a consideration on the merits
based on a failure to adhere to requirements set out in the order. 37 C.F.R.
§ 42.12(a)(1).

IPR2014-01555
Patent 5,451,558

78

IX. Large Documents
The parties have filed several large documents, i.e., documents
containing many pages.
Examples are (1) the prosecution history (Ex. 1002—164 pages),
(2) the Crocker cross-examination (Ex. 1056—140 pages), and (3) the
Farrauto cross-examination (Ex. 2003—220 pages).
With respect to these large documents, we have considered only the
pages called to our attention by the parties in the Petition, Opposition, Reply
or other paper or mentioned in our opinion.
All other pages were not considered and are excluded from evidence.
X. Judgment
Upon consideration of the Petition, Opposition, and Reply, and for the
reasons given, it is
ORDERED that based on Ground 1 (Takeshima), Petitioner has not
established by a preponderance of the evidence that any challenged claim is
unpatentable;
FURTHER ORDERED that based on Ground 2 (Hoekstra), Petitioner
has established by a preponderance of the evidence that claims 1, 7, 8, 12, 14,
21, 22, 32–35, and 38–42 of the ʼ558 patent are unpatentable under 35 U.S.C.
§ 102(b) and claims 9–11 and 23 of the ʼ558 patent are unpatentable under
35 U.S.C. § 103(a);
FURTHER ORDERED that based on Ground 3 (Kinoshita),
Petitioner has not established by a preponderance of the evidence that claims
1–32 of the ’558 patent are anticipated by Kinoshita.

IPR2014-01555
Patent 5,451,558

79

FURTHER ORDERED that based on Ground 3 (Kinoshita),
Petitioner has established by a preponderance of the evidence that claims
33–40, 42, and 44 of the ’558 patent are anticipated by Kinoshita.
FURTHER ORDERED that based on Ground 4 (Inui), the evidence
establishes by a preponderance of the evidence that claims 1, 2, 7–10, 14,
15, 17, 19, 24, 31, 33–37, 39, and 40 of the ʼ558 patent are unpatentable
under 35 U.S.C. § 102(b).
FURTHER ORDERED that based on Ground 5 (Stiles), the evidence
establishes that claims 1, 7, 8, 14–17, 19, and 31 of the ʼ558 patent are
unpatentable under 35 U.S.C. § 102(b) and that claims 21–23 of the ʼ558
patent are unpatentable under 35 U.S.C. § 103(a).
FURTHER ORDERED that claims 1, 2, 7–12, 14–17, 19, 21–24,
31–42 of the ʼ558 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.

IPR2014-01555
Patent 5,451,558

80

For PETITIONER:

Steven F. Meyer
ptopatentcommunication@lockelord.com

Seth J. Atlas
satlas@lockelord.com

John F. Sweeney
jsweeney@lockelord.com

For PATENT OWNER:

Michael J. Bradford
mbradford@luedeka.com

Jacobus C. Rasser
koosrasser@gmail.com