Wan et al.v.Andersen et al.

Patent Trial and Appeal Board

Jun 30, 2016

12750001 (P.T.A.B. Jun. 30, 2016)

BoxInterferences@uspto.gov Filed: June 30, 2016
Tel: 571-272- 7822

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

PAUL JOSEPH ANDERSEN, HAI-YIUN CHEN,
JOSEPH MICHAEL FEDEYKO, and ERICH WEIGERT
Junior Party
Patents 7,998,443 B2 and 8,101,147 B2

v.

CHUNG-ZUNG WAN, XIOALAI ZHENG
SUSANNE STEIBELS, CLAUDIA WENDT,
TORSTEN NEUBAUER, and R. SAMUEL BOORSE
Senior Party
Application 12/750,001
____________________

Patent Interference 106,002
Technology Center 1700
____________________

JUDGMENT
37 C.F.R. § 41.127

Before SALLY GARDNER LANE, DEBORAH KATZ, and
HUNG H. BUI, Administrative Patent Judges.

KATZ, Administrative Patent Judge.

Interference 106,002

2

Further to the Decision on Motions (Paper 247) and the Decision on Priority
(Paper 1134),
It is ORDERED that claims 1–11, 15–18, and 20–32 and 46 Wan’s involved
application 12/750,001 are FINALLY REFUSED1 as being unpatentable under
either 35 U.S.C. § 135(b) or 35 U.S.C. § 102(g).2
It is further ORDERED that a party seeking judicial review timely serve
notice on the Director of the United States Patent and Trademark Office. 37 C.F.R.
§§ 90.1 and 104.2. See also 37 C.F.R. 41.8(b). Attention is directed to Biogen
Idec MA, Inc., v. Japanese Foundation for Cancer Research, 785 F.3d 648, 654–57
(Fed. Cir. 2015) (cert. denied 2016 WL 1078942, Mar 21, 2016) (determining that
pre-AIA § 146 review was eliminated for interference proceedings declared after
September 15, 2012).
It is further ORDERED that a copy of this judgment be entered into the
administrative records of Wan application 12/750,001 and Andersen patents
7,998,443 and 8,101,147.

NOTICE: "Any agreement or understanding between parties to an
interference, including any collateral agreements referred to therein, made in
connection with or in contemplation of the termination of the interference, shall be
in writing and a true copy thereof filed in the Patent and Trademark Office before

1 Claims 12–14, 19, and 33–37 of Wan’s involved application 12/750,001 were not
involved in the interference after redeclaration. (See Paper 255.) Accordingly,
these claims are not finally refused.
2 Patent interferences continue under the relevant statutes in effect on 15 March
2013, Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011).
Interference 106,002

3

the termination of the interference as between the said parties to the agreement or
understanding." 35 U.S.C. 135(c); see also Bd.R. 205 (settlement agreements).

cc (via e-mail):

Counsel for Andersen:

Todd R. Walters
Christopher L. North
Buchanan Ingersoll & Rooney PC
Todd.walters@bipc.com
Christopher.north@bipc.com

Counsel for Wan:

Ryan W. Cagle
Ian A. Calvert
Womble Carlyle Sandridge & Rice, LLP
rcagle@wcsr.com
icalvert@wcsr.com

Melanie L. Brown
BASF Corporation
Melanie.brown@basf.com
Basf-ip@basf.com
BoxInterferences@uspto.gov Filed: June 30, 2016
Tel: 571-272- 7822

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

PAUL JOSEPH ANDERSEN, HAI-YIUN CHEN,
JOSEPH MICHAEL FEDEYKO, and ERICH WEIGERT
Junior Party
Patents 7,998,443 B2 and 8,101,147 B2

v.

CHUNG-ZUNG WAN, XIOALAI ZHENG
SUSANNE STEIBELS, CLAUDIA WENDT,
TORSTEN NEUBAUER, and R. SAMUEL BOORSE
Senior Party
Application 12/750,001
____________________

Patent Interference 106,002
Technology Center 1700
____________________

DECISION ON PRIORITY
37 C.F.R. § 41.125(a)

Before SALLY GARDNER LANE, DEBORAH KATZ, and
HUNG H. BUI, Administrative Patent Judges.

KATZ, Administrative Patent Judge.

Interference 106,002

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I. Introduction 1
A. 2
Following the Decision on Motions in this interference (Paper 247), Junior 3
Party Andersen (real party-in-interest Johnson Matthey Public Limited Company, 4
see Paper 8) and Senior Party Wan (real party-in-interest BASF Corporation, see 5
Paper 15) have presented priority motions for our consideration.1 Their briefs are 6
as follows: 7
Priority Motion Opposition Reply
Junior Party Andersen Motion 3
(Paper 974)
Wan Opposition 3
(Paper 1061)
Andersen Reply 3
(Paper 1069)
Senior Party Wan Motion 7
(Paper 1059)
Andersen Opposition
7 (Paper 1064)
Wan Reply 7
(Paper 1067)
8
Wan’s Motion to Exclude (Paper 1071) and Andersen’s Opposition 9
(Paper 1073) are also before us. We address Wan’s arguments regarding the 10
admissibility of the evidence challenged when we discuss the evidence below. 11
B. 12
Prior to this priority phase, related Interference 105,9912 was terminated and 13
the current interference3 was redeclared with both of the Andersen patents involved 14

1 Both parties requested oral argument on the issues of this interference.
(Papers 1070 and 1072.) Upon review of the briefs filed, it was determined that
oral argument was not necessary to reach a decision on these issues.
2 Interference 105,991 was declared between Wan patent 8,101,147 and Andersen
patent application 12/075,001.
3 The current interference was originally declared between Wan patent 7,998,443
and Andersen patent application 12/075,001.
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in Interference 105,991 and the current interference. (See Redeclaration, Paper 1
255.) Accordingly, Junior Party Andersen is involved based on its patents 2
7,998,443 (“the ’443 patent”) and 8,101,147 (“the ’147 patent”). Senior Party Wan 3
is involved based on its patent application 12/075,001 (“the ’001 application”), 4
which was also involved in Interference 105,991. 5
In the prior phase of the interferences, we decided several motions. Among 6
other decisions, we granted Andersen Motion 2 (Paper 44), determining that some 7
of Wan’s originally involved claims are unpatentable under 35 U.S.C. § 135(b).4 8
(Decision on Motions, Paper 247, at 22:21-26 (holding Wan ’001 application 9
claims 1-11, 15-18, and 20-32 unpatentable).) In granting that motion we also 10
determined that Wan’s remaining originally involved claims should not be 11
involved in the interference. (Decision on Motions, Paper 247, at 7:19-25 (holding 12
Wan ’001 application claims 12–14, 19, and 33–37 do not correspond to either 13
count).) 14
These decisions implicated all of Wan’s originally involved claims. Thus, 15
final judgment might have been entered against Wan, but we also granted Wan 16
Responsive Motion 2, requesting that proposed claim 46 be added to the ’001 17
application and the interference. (Decision on Motions, Paper 247, at 28:23-29:3.) 18
The priority determination in this phase continues based on interference between 19
Wan claim 46, drawn to a system, and Andersen’s corresponding system claims, 20

4 Patent interferences continue under the relevant statutes in effect on 15 March
2013, Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011).

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specifically Andersen ’147 patent claims 5-13 and ’443 patent claims 11-12 and 1
15-20. (See Redeclaration, Paper 255.) 2
Andersen and Wan also have method claims that were involved in the 3
interferences when originally declared. These claims correspond to Count 6. 4
Because Wan’s currently involved method claims were determined to be 5
unpatentable,5 the priority contest in this phase is between Andersen’s and Wan’s 6
system claims, which correspond to Count 5, only. 7
C. 8
Both parties’ claimed systems reportedly remove nitrogen oxide pollutants 9
from the exhaust gas of engines. The pollutants, NO and NO2, collectively called 10
“NOx,” are removed by changing, or “reducing,” them to harmless nitrogen gas 11
(N2) and water. These systems have two parts. In the first part, NOx from a lean 12
(non-reducing) exhaust gas is stored in an NOx adsorber catalyst (“NAC”) (see 13
’443 patent, Exh. 2003, at 3:22–28). When the NAC adsorber is exposed to a rich 14
(reducing) exhaust gas, NOx is released and reduced by catalysis to become NH3, 15
which is stored by a selective catalytic reduction (“SCR”) catalyst. In the second 16
part, the stored NH3 is used by the SCR catalyst to selectively reduce the NOx 17
remaining after adsorption to the NAC, during lean (non-reducing) operations. (Id. 18
at ¶ 3:31–42; ’001 appl., Exh. 1024, ¶ 33.) Thus, the two components of the NAC-19
SCR system are arranged to allow cycling between these lean/rich conditions to 20
more efficiently remove NOx from an exhaust gas. 21

5 Wan’s involved method claims have not yet been finally refused, but will be upon
entry of judgment.
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SCR catalysts has several different characteristics. They can comprise 1
copper; they can comprise small-pore molecular sieve; they can have CHA 2
structure; they can contain silica and aluminum, which is expressed as a silica to 3
alumina ratio (“SAR”). CuSAPO-34 is a catalyst used by the parties. It is a small-4
pore molecular sieve having CHA crystal structure with copper, and having a SAR 5
that is less than 2. (Declaration of Michael P. Harold, Ph.D.,6 Exh. 2018, at ¶¶ 41 6
and 216.) A different catalyst, SSZ-13, is a small-pore molecular sieve having 7
CHA crystal structure with copper, and having a SAR that is greater than 2. 8
(Declaration of David H. Olson,7 Exh. 1041, at ¶ 38.) 9
Count 5, on which priority will be determined, recites: 10
A system for treating exhaust gas comprising a NOx adsorber catalyst 11
disposed upstream of an SCR catalyst, 12
wherein said SCR catalyst comprises copper and small-pore molecular 13
sieve having CHA structure and having a silica-to-alumina ratio of from 2 to 14
300. 15
16
(Redeclaration, Paper 255, at 4:14-18.) The system of Count 5 comprises two 17
parts: (1) an NOx adsorber (NAC) catalyst that generates NH3 and (2) an SCR 18
catalyst. The SCR catalyst is limited to a catalyst comprising copper and small-19
pore molecular sieve with a CHA crystal structure and having a SAR of from 2 to 20
300. (Second Redeclaration, Paper 255, at 4:13-18.) 21

6 We determined that Dr. Harold is qualified to testify as an expert on the subject
matter of the interference. (See Decision on Motions, Paper 247, at 5:3-19.)
7 We determined that Dr. Olson is qualified to testify as an expert on the subject
matter of the interference. (See Decision on Motions, Paper 247, at 6:13-27.)

Interference 106,002

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In the prior phase of the interference, Andersen moved to broaden the count 1
to eliminate any limitation on the SAR. (Andersen Motion 4, Paper 45.) We 2
denied this motion because Andersen failed to persuade us that a system with an 3
SCR catalyst having any SAR would be patentable over prior art that was applied 4
to Wan’s claims directed to such a generic system. (Decision on Motions, 5
Paper 247, at 37:9-41:5.) 6
Thus, the priority contest involves a system for treating exhaust gas 7
comprising a NOx adsorber catalyst disposed upstream of an SCR catalyst, 8
wherein the SCR catalyst comprises copper and small-pore molecular sieve having 9
CHA structure and having a silica-to-alumina ratio of from 2 to 300. 10
D. 11
We determine priority based on the first party to reduce an embodiment of 12
the count to practice “unless the other party can show that it was the first to 13
conceive of the invention and that it exercised reasonable diligence in later 14
reducing that invention to practice.” Cooper v. Goldfarb, 154 F.3d 1321, 1327 15
(Fed. Cir. 1998). We look to “not only the respective dates of conception and 16
reduction to practice of the invention, but also the reasonable diligence of one who 17
was first to conceive and last to reduce to practice, from a time prior to conception 18
by the other.” 35 U.S.C. § 102(g). 19
E. 20
Andersen asserts a date of conception, 11 June 2007 (Andersen Motion 3, 21
Paper 974, at 6:9-19:10), which is earlier than Wan’s earliest asserted date of 22
conception, 22 August 2007 (Wan Motion 7, Paper 1059, at 9:4-11:15). Thus, we 23
look to determine if Andersen provides sufficient corroborated evidence that its 24
Interference 106,002

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inventors conceived of an embodiment of Count 5 and also diligently reduced it to 1
practice, Andersen will prevail, even if Wan reduced to practice earlier.8 See 2
Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996) (“However, the 3
person ‘who first conceives, and, in a mental sense, first invents ... may date his 4
patentable invention back to the time of its conception, if he connects the 5
conception with its reduction to practice by reasonable diligence on his part, so that 6
they are substantially one continuous act.’”). 7
We determine that Andersen has provided sufficient evidence of an earlier 8
conception and of diligence towards a reduction to practice. Accordingly, we enter 9
judgment against Wan for all of its involved claims. 10
11
II. Conception 12
Conception is the formation “in the mind of the inventor of a definite and 13
permanent idea of the complete and operative invention, as it is thereafter to be 14
applied in practice.” Coleman v. Dines, 754 F.2d 353, 359 (Fed.Cir.1985). A 15
complete conception includes every feature or limitation of the claimed invention. 16
Davis v. Reddy, 620 F.2d 885, 889 (CCPA 1980). To prove conception, a party 17
must provide corroborating evidence to show that the inventor disclosed to others 18
his complete thought expressed in such clear terms that one of skill in the art could 19

8 The earliest reduction to practice asserted by Andersen is in June 2008. (See
Andersen Motion 3, Paper 974, at 19:17-31:7.) The earliest reduction to practice
asserted by Wan is in October 2007. (See Wan Motion 7, Paper 1059, at 11:16-
40:4.)
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8

make the invention. See Coleman, 754 F.2d at 359. “The conception analysis 1
necessarily turns on the inventor's ability to describe his invention with 2
particularity. Until he can do so, he cannot prove possession of the complete 3
mental picture of the invention.” Burroughs Wellcome Co. v. Barr Labs., Inc., 40 4
F.3d 1223, 1228 (Fed. Cir. 1994). “But an inventor need not know that his 5
invention will work for conception to be complete . . . . He need only show that he 6
had the idea; the discovery that an invention actually works is part of its reduction 7
to practice.” Id. (citation omitted). 8
A. 9
The following findings of fact (“FFs”), as well as others elsewhere in this 10
opinion, are supported by a preponderance of the evidence. 11
1. Julian Cox testifies that he has worked for Johnson Matthey since 12
October 1992, as a Technology Manager from November 2004 through June 2008, 13
reporting to inventor Paul Andersen. (Cox Decl., Exh. 2888, at ¶¶ 3-4.) 14
2. Mr. Cox testifies that from November 2004 through June 2008 he kept 15
abreast of developments at Johnson Matthey and had near daily discussions of such 16
developments with inventor Hai-Ying Chen, who was a Product Development 17
Manager. (Cox Decl., Exh. 2888, at ¶¶ 4 and 34.) 18
3. Mr. Cox testifies that Johnson Matthey has a documentation and 19
evaluation system that includes at least three types of documents: (1) an 20
“Applications Development Program Plan,” which is given an identification 21
number (“ADP#”) and provides the plan and evaluation procedure for each 22
program, (2) the “Whole Block Set Description Sheet” (“WBS Description 23
Sheet”), which includes a series of instructions for the technicians to carry out 24
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parts of the evaluation and references the ADP#, and (3) a “Data Summary,” which 1
includes a summary of the results obtained from performing an evaluation 2
specified in the WBS Description Sheet and also references the ADP#. (Cox 3
Decl., Exh. 2888, at ¶¶ 6-16.) 4
4. Mr. Cox testifies that ADPPs, WBS Description Sheets, and Data 5
Summaries are distributed to technicians, supervisors, and others in the group 6
through an email distribution list. (Cox Decl., Exh. 2888, at ¶¶ 6-16.) 7
5. Mr. Cox testifies that ADPPs and WBS Description Sheets are also 8
typically archived in a computer directory without revision and their dates are 9
given in the document themselves and/or recorded in metadata of the original 10
electronic files by the systems on which the records are created. (Cox Decl., 11
Exh. 2888, at ¶¶ 6-16; see Declaration of Joellen Burghardt, Exh. 2889, ¶¶ 2-6.) 12
6. Exhibit 2120 is a copy of Application Development Program Plan 13
ADP#: NCC.220.05 dated 15 November 2004, which is entitled “NH3-SCR 14
catalyst screening after high temperature rich (redox) aging,” and provides a 15
technical rationale, wherein: 16
In some applications, Urea-SCR will be placed behind NOx 17
Adsorber Catalyst as a potential technology to reduce NOx from light 18
duty diesel emissions. In this configuration, ammonia generated from 19
the upstream NAC during rich period will be stored by the 20
downstream SCR cat. and during the consequent lean period this 21
stored ammonia will selectively react with NOx to N2. 22
For this application, catalysts with good low temperature 23
activity which could survive the high temperature rich aging (during 24
NAC desulfation) is required. This plan will screen different NH3-25
SCR catalysts from previous plans. 26
27
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(Exh. 2120 at 1.) 1
7. Mr. Cox testifies that Exhibit 2120 describes methods designed by 2
inventors Andersen and Chen, as well as other Johnson-Matthey personnel who 3
were supervised by inventor Chen, to evaluate SCR catalysts for use in a combined 4
NAC-SCR system. (Cox Decl., Exh. 2888, at ¶ 48.) 5
8. Exhibit 2317 is a copy of a WBS Description Sheet 22005A dated 6
2 December 2004, referencing ADP #: NCC.220.05, and providing an objective 7
“[t]o investigate the activities of a series of NH3-SCR formulations for mobile 8
application after high temperature rich (redox) aging.” (Exh. 2137 at 1.) 9
9. Mr. Cox testifies that Exhibit 2137 describes a plan, carried out under 10
the direction of Johnson Matthey personnel supervised by inventor Chen, to screen 11
eight different samples of SCR catalysts to determine if they could function well in 12
an NAC-SCR application. (Cox Decl., Exh. 2888, at ¶ 49.) 13
10. Exhibit 2469 is a copy of a Data Summary dated 11 February 2005, 14
referencing ADP220.05.r0, entitled “NH3-SCR catalyst screening after high 15
temperature rich (redox) aging,” and concluding: “After redox aging at 700C/16hr, 16
most of the formulation tested on this plan loss a lot of it’s initial activity.” (Exh. 17
2469 at 1.) 18
11. Dr. Cox testifies that Exhibit 2469 demonstrates that “while some 19
existing SCR catalysts performed better than others under the conditions faced in 20
an NAC-SCR exhaust system, the conventional SCR catalysts being employed 21
were not ideal for use in NAC-SCR systems.” (Cox. Decl., Exh. 2888, at ¶ 52.) 22
12. Dr. Cox testifies that he understood from Exhibit 2469 and 23
discussions with inventor Chen that further improvements in the SCR catalysts 24
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were needed to produce SCR catalysts with thermal stability and excellent low-1
high temperature catalytic activity, even after redox aging. (Cox. Decl., Exh. 2888, 2
at ¶ 52.) 3
13. Exhibit 2796 is a copy of a Record of Invention dated 4
15 February 2007 and entitled: “Cu zeolite catalysts with improved thermal 5
stability and lower selectivity for N2O formation” and naming contributors to the 6
invention as including inventors Andersen, Chen, and Fedeyko. (Exh. 2796 at 1.) 7
14. Mr. Cox testifies that Exh. 2796 “reports that SCR catalysts 8
containing copper and small-pore molecular sieves having various structural 9
frameworks, including CHA structure, would be useful in lean-burn exhaust 10
systems.” (Cox Decl., Exh. 2796, at ¶ 57.) 11
15. Lean-burn exhaust systems are distinct from NAC-SCR systems. 12
16. Exhibit 2796 includes Table 1, which is a list of small-pore zeolites 13
suitable for use in lean burn exhaust systems, including SAPO-34, Chabasite, and 14
SSZ-13, which have CHA structure. (Exh. 2796 at 3; Cox. Decl., Exh. 2888, at 15
¶ 57.) 16
17. Cu-SAPO-34 is a small-pore molecular sieve catalyst comprising 17
copper and having CHA structure, but having a SAR of below 2. (Cox Decl., 18
Exh.2888, at ¶ 41.) 19
18. SSZ-13 is a small-pore molecular sieve catalyst comprising copper 20
and having CHA structure that has a silica to alumina ratio of 2 or greater. (Cox 21
Decl., Exh. 2888, at ¶ 42; see also Olson Decl., Exh. 1041, ¶ 38.) 22
19. The Andersen witnesses refer to the SCR catalysts provided in 23
Table 1 as “New Formulation Catalysts.” (See, e.g., Cox Decl., Exh. 2888, at ¶ 39: 24
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“Chen planned those lean-burn, SCR catalyst studies in conjunction with Joseph 1
Fedeyko and Paul Andersen, as well as some colleagues in the UK, including 2
Jillian Bailie (now Jillian Collier) and Raj Rajaram. We referred to the new SCR 3
catalyst materials that were developed as ‘New Formulations’ or Advanced 4
Zeolytic Materials (AZM). These New Formulations included copper-containing, 5
small-pore molecular sieve materials having the CHA crystal structure as well as 6
other structures, and having SAR values both below 2 and between 2 and 300.”); 7
see also id. at ¶ 58 (referring to the list of materials in Table 1 of Exhibit 2796 as 8
“New Formulation SCR catalysts.”) 9
20. Inventor Chen testifies that the project to develop new types of SCR 10
catalysts for lean-burn exhaust systems was “directed to developing SCR catalysts, 11
but did not envision using those catalysts in NAC-SCR systems. However, after 12
the collaboration produced a series of New Formulation catalysts, Paul Andersen, 13
Joseph Fedeyko, and I conceived of the invention of Count 5 using the New 14
Formulations.” (Chen Decl., Exh. 2883, at ¶ 54.) 15
21. Exhibit 2804 is a copy of notebook pages entitled “6/6/2007 16
SCR/NAC Global Meeting,” which also includes an entry on 11 June 2007, 17
entitled “Tosoh.” (Exh. 2804 at 1 and 5.) 18
22. Exhibit 2804 includes the notation: 19
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1
2
(Exh. 2804 at 5.) 3
23. Inventor Fedeyko testifies that Exhibit 2804 is a copy of his notes 4
from a meeting on 6 June 2007 and an entry dated 11 June 2007, which 5
reflects that our colleagues were continuing to develop and optimize 6
procedures for producing AZM2 (Nu-3) and AZM3 (Sigma-1) SCR 7
catalysts. Exhibit 2804, p. 1. The entry dated June 11, 2007 records 8
the results of a meeting I had with our supplier Tosoh. Exhibit 2804, 9
p. 5. During the meeting, the availability of “high silica CHA,” i.e., a 10
CHA-structured zeolite with a high silica content, and thus a higher 11
SAR (i.e., in the range between 2 to 300) was discussed. Tosoh 12
explained that high silica chabazite was not available for purchase at 13
that time. 14
15
Taken together, this shows that, following our discovery that the New 16
Formulation catalysts were effective catalysts in lean-burn exhaust 17
systems, we began efforts to secure samples of other New 18
Formulation catalysts, including chabazite, which is a small-pore 19
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molecular sieve with the CHA framework and a SAR of 2-300, for 1
use as an SCR catalyst material. 2
3
(Fedeyko Decl., Exh. 2884, at ¶¶ 57-58.) 4
24. Inventors Chen and Fedeyko each testify that they 5
had long been interested in developing improved NAC-SCR exhaust 6
systems, and, more particularly, in catalysts that could improve 7
exhaust system performance under the significantly different 8
conditions experienced in such systems. Despite the fact that the New 9
Formulation catalysts had never been evaluated under the conditions 10
of an NAC-SCR system we conceived the idea that the New 11
Formulation catalysts that we had developed could also be useful 12
under the alternating lean-rich conditions of NAC-SCR systems. The 13
system we conceived was a system for treating exhaust gas 14
comprising a NOx adsorber catalyst (NAC) disposed upstream of an 15
SCR catalyst, wherein the SCR catalyst is a New Formulation catalyst 16
comprising copper supported on a small-pore molecular sieve, 17
including molecular sieves with the CHA framework, and including 18
molecular sieves having a SAR between about 2 to 300, as recited in 19
Count 5. The New Formulation catalysts that we conceived using in 20
an NAC-SCR exhaust system included the catalysts specifically 21
identified in the February 15, 2007, Record of Invention, including 22
SAPO-34, chabazite, and SSZ-13, all of which have the CHA 23
structure and the latter two of which have a SAR within the range of 2 24
to 300, as recited in Count 5. 25
26
(Chen Decl., Exh. 2883, at ¶ 65; Fedeyko Decl., Exh. 2884, at ¶ 55.) 27
25. Mr. Cox testifies that he attended the meeting recorded in Fedeyko’s 28
notebook on 6 June 2007 entitled “SCR/NAC Global Meeting” and reproduced in 29
Exhibit 2804 and that the exhibit accurately reflects his recollection of some of 30
what was discussed at the meeting. (Cox Decl., Exh. 2888, at ¶ 68.) 31
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26. Mr. Cox testifies that 1
[t]he meeting [recorded in Exhibit 2804] reflects that our colleagues 2
were continuing to develop and optimize procedures for producing 3
AZM2 (Nu-3) and AZM3 (Sigma-1) SCR catalysts. Exhibit 2804, p. 4
1. The entry dated June 11, 2007 records the . . . meeting between 5
Fedeyko and our supplier Tosoh. Exhibit 2804, p. 4-5. According to 6
the notes, during the meeting, “high silica CHA,” i.e., a CHA-7
structured zeolite with a high silica content, and thus a higher SAR 8
was discussed. Exhibit 2804, p. 5. Taken together, this shows that, 9
following their discovery that the New Formulation catalysts were 10
effective catalysts in lean-burn exhaust systems, Chen began efforts to 11
secure samples of other New Formulation catalysts, including 12
chabazite, which is a small-pore molecular sieve with the CHA 13
framework and a SAR of 2-300, for use as an SCR catalyst material. 14
15
(Cox Decl., Exh. 2888, at ¶ 68.) 16
27. Exhibit 2198 is a copy of a WBS Description Sheet, 17
WBS # 02908Hr0, dated 11 June 2007, and entitled “AZM1 SCR Catalysts for 18
[redacted] Screening.” (Exh. 2198 at 1.) 19
28. Mr. Cox testifies that the conditions on page 2 of Exhibit 2198 20
provide for gas compositions and cycle time conditions that subject Cu-SAPO-34 21
(AZM1), a New Formulation Catalyst, to gas flows that mimic the conditions of an 22
NAC-SCR system. (Cox Decl., Exh. 2888, at ¶¶ 72-74.) 23
29. Mr. Cox testifies that Exhibit 2198 “sets forth instructions for an 24
evaluation of Cu-SAPO-34 (AZM1), a New Formulation, small-pore molecular 25
sieve containing copper and having the CHA framework structure, under lean/rich 26
cycling conditions in order to simulate the conditions of an SCR catalyst in an 27
NAC-SCR system . . . .” (Cox Decl., Exh. 2888, at ¶¶ 72-73.) 28
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30. Mr. Cox testifies that 1
Though the SAPO-34 material described in WBS 02908Hr0 2
[Exh. 2198] may not have the requisite SAR, I understood from my 3
discussions with Chen, at that time, that Chen, Fedeyko, and Andersen 4
had conceived of a plan to utilize other New Formulation catalysts 5
possessing such a SAR in these NAC-SCR exhaust systems. Evidence 6
of this can be found in the inclusion of chabazite and SSZ-13, both of 7
which are small-pore molecular sieve materials with the CHA 8
framework structure and an SAR in the range of 2-300, in the list of 9
New Formulation catalysts shown in the February 15, 2007, Record of 10
Invention, and in efforts to procure such materials (e.g., chabazite) 11
prior to the time that WBS 02908Hr0 was prepared. See Exhibit 2796, 12
page 3 (listing chabazite and SSZ-13 among New Formulation SCR 13
catalysts); Exhibit 2815 (discussing attempts to procure chabazite); 14
Exhibit 2804, p. 5 (discussing availability of high silica CHA with 15
supplier Tosoh on June 11, 2007). At the time WBS 02908Hr0 was 16
prepared, I appreciated that Chen, Fedeyko, and Andersen were 17
planning to evaluate high-SAR New Formulation catalysts, such as 18
chabazite and SSZ-13, in NAC-SCR exhaust systems. I also 19
appreciated that, at the time WBS 02908Hr0 was prepared, Chen, 20
Fedeyko, and Andersen were making efforts to obtain high-SAR New 21
Formulation small-pore CHA structured zeolites, such as chabazite 22
and SSZ-13. 23
24
(Cox Decl., Exh. 2888, at ¶¶ 77.) 25
31. Exhibit 2815 is a copy of e-mail correspondence of inventor Chen 26
dated 15 and 16 February 2007, which states: 27
28
29
Interference 106,002

17

1
32. Inventor Chen testifies that Exhibit 2815 indicates his request in 2
February 2007 for New Formulation catalysts, including chabazite. (Chen Decl., 3
Exh. 2883, at ¶ 68.) 4
33. Inventor Chen testifies that the supplier did not provide an 5
aluminosilicate zeolite with CHA structure until early 2008. (Chen Decl., 6
Exh. 2883, at ¶ 68.) 7
B. 8
Andersen argues that the named inventors conceived of a system within the 9
scope of Count 5 by 11 June 2007. (See Andersen Motion 3, Paper 974, at 6:12-10
14:6.) 11
Interference 106,002

18

Andersen presents evidence to show that before 2007, the inventors were 1
testing an NAC-SCR system to remove NOx from engine exhaust. (FFs 6-7; 2
Exh. 2120, Cox Decl., Exh. 2888, at ¶ 48.) The evidence also shows that the 3
inventors developed methods to test different SCR catalysts in such a system. 4
(FFs 8-12; Exhs. 2137 and 2496, Cox Decl., Exh. 2888, at ¶¶ 49 and 52.) On 5
11 June 2007, the inventors had determined a list of “New Formulation” catalysts, 6
initially for use with a different system (the lean-burn system). (FFs 13-14 and 19; 7
Exh. 2796, Cox Decl., Exh. 2888, at ¶ 39.) These New Formulation catalysts 8
include SCR catalysts comprising copper and small-pre molecular sieve with a 9
SAR of from 2 to 300, such as SSZ-13 as well as catalysts not within the scope of 10
Count 5. (FFs 16-18; Exh. 2796.) Also on 11 June 2007, the inventors had a 11
meeting to discuss NAC-SCR systems that utilize SCR catalysts with CHA 12
structure and having high silica content. (FFs 21-22; Exh. 2804.) On the same 13
date, the inventors prepared a WBS Description Sheet with instructions for 14
evaluating the New Formulation SCR catalyst Cu-SAPO-34 (AZM1) under 15
lean/rich cycling conditions in an NAC-SCR system. (FFs 27-29; Exh. 2198, Cox 16
Decl., Exh. 2888, at ¶¶ 72-74.) Cu-SAPO-34 (AZM1) is a small-pore molecular 17
sieve catalyst with CHA structure, but its SAR is less than 2, and thus does not fall 18
within the scope of Count 5. (FF 17; Cox Decl., Exh.2888, at ¶ 41.) Andersen 19
presents evidence that as early as February 2007 inventor Chen was trying to 20
obtain samples of the catalyst chabazite catalyst, which has a SAR of from 2 to 21
300. (FFs 31-33; Exhibit 2815, Chen Decl., Exh. 2883, at ¶ 68.) 22
Thus, Andersen presents evidence that by 11 June 2007, the inventors had 23
conceived of an NAC-SCR catalyst system, had developed a way to evaluate 24
Interference 106,002

19

different SCR catalysts in this system, were aware of New Formulation SCR 1
catalysts, including ones that meet the limitations of Count 5, and had begun to test 2
systems with New Formulation SCR catalysts that were similar to those within the 3
scope of Count 5. 4
Inventors Chen and Fedeyko testify that they conceived of a system for 5
treating exhaust gas comprising a NOx adsorber catalyst (NAC) disposed upstream 6
of an SCR catalyst, wherein the SCR catalyst is a New Formulation catalyst 7
comprising copper supported on a small-pore molecular sieve, including molecular 8
sieves with the CHA framework, and including molecular sieves having a SAR 9
between about 2 to 300. (FFs 23-24; Chen Decl., Exh. 2883, at ¶ 65Fedeyko Decl., 10
Exh. 2884, at ¶¶ 55 and 57-58.) Mr. Cox testifies that he understood from 11
discussions with Chen, at that time, that Chen, Fedeyko, and Andersen had 12
conceived of a plan to utilize other New Formulation catalysts possessing a SAR as 13
recited in Count 5 in these NAC-SCR exhaust systems. (FFs 25-26 and 30; Cox 14
Decl., Exh. 2888, at ¶¶ 68 and 77.) Thus, Anderson relies upon Mr. Cox’s 15
communications with the inventors to corroborate the inventor’s testimony about 16
what they were thinking at the time they decided to use New Formulation catalysts, 17
including chabazite and SSZ-13, which have an SAR of from 2 to 300 by 11 June 18
2007. 19
B. 20
Wan argues that Andersen has not established a conception of an 21
embodiment of Count 5 because the evidence Andersen provides from 2004 to 22
11 June 2007 relates to two separate projects. (Wan Opp. 3, paper 1061, at 8:12-23
9:16.) According to Wan, Andersen has presents only evidence of catalysts for use 24
Interference 106,002

20

in lean-burn SCR systems or evidence of catalysts for use in an NAC-SCR system 1
that are outside the scope of Count 5. Wan notes that Andersen admits the lean-2
burn SCR system and an NAC-SCR system are significantly different. (Id., at 3
10:3-10:10.) 4
Wan’s argument is unpersuasive because it does not consider the testimonial 5
evidence that the inventors conceived a system for treating exhaust gas comprising 6
New Formulation catalysts in an NAC-SCR system – specifically the testimony of 7
inventors Chen and Fedeyko, as corroborated by the testimony of Mr. Cox. 8
According to Wan, Mr. Cox’s testimony does not corroborate the inventors’ 9
testimony because it is not probative of what the inventors conceived. (Wan Opp. 10
3, Paper 1061, at 12:17-13:13:2.) We disagree because Mr. Cox testifies to the 11
communications he had with the inventors about their ideas at the time. This is 12
different from the facts presented in Bosies v. Benedict, 27 F.3d 539, 542 (Fed. Cir. 13
1994), cited by Wan, wherein the corroborating witness testified only to what the 14
witness understood about a notebook, not what the witness knew about the 15
inventor’s intended meaning. In contrast, Mr. Cox testifies to discussions he had at 16
the time with Chen, and therefore about what he understood Chen, Fedeyko, and 17
Andersen to have conceived. (FF 25-26 and 30; Cox Decl., Exh. 2888, at ¶¶ 68 18
and 77.) See In re Jolley, 308 F.3d 1317, 1325 (Fed. Cir. 2002) (comparing to the 19
facts of Bosies, wherein “in the present case, there is no dispute that Ward's e-mail 20
discloses a group of esters including esters of the count, and there is ample 21
testimony from the inventors concerning their particular interest in pentaerythritol 22
esters. Davis's testimony is offered to corroborate the inventors' own testimony that 23
Dow was in the business of producing polyol/ester lubricants comprising Mobil 24
Interference 106,002

21

P51, a pentaerythritol ester within the scope of the count. It is the inventors' 1
participation in Dow's ongoing program employing pentaerythritol esters as 2
lubricants, not Davis's personal reaction to Ward's e-mail, that corroborates the 3
inventors' testimony regarding their preference for pentaerythritol esters.”) 4
Wan does not direct us to evidence, such as the testimony of any of 5
Andersen’s witnesses, to indicate their testimony is unreliable.9 In the absence of 6
evidence to the contrary, we find Mr. Cox’s testimony to indicate what the 7
inventors communicated to him. Accordingly, we determine that Mr. Cox’s 8
testimony corroborates the inventors’ testimony of their conception. 9
Wan argues further that there is not a single document that supports the 10
testimony of conception of a system with all of the elements of Count 5. (Wan 11
Opp. 3, Paper 1061, at 13:7-14:7.) We are not persuaded that conception must be 12
shown with a single document. There is no formula to indicate whether an 13
inventor’s testimony is sufficiently corroborated. Instead, inventor’s testimony is 14
evaluated under a “rule of reason” analysis, wherein the tribunal evaluates all of 15
the available evidence. Kridl v. McCormick, 105 F.3d 1446, 1450 (Fed. Cir. 1997) 16
(quoting Berry v. Webb, 412 F.2d 261, 266 (C.C.P.A. 1969)). As explained above, 17
we consider the testimony and other evidence presented by Andersen to reasonably 18
demonstrate conception by 11 June 2007. 19

9 Wan relies on the testimony of its own witness, Dr. Patchett (Exh. 1368),
throughout its opposition. Wan indicates that Dr. Patchett reviewed Andersen’s
Motion and exhibits (Wan Opp. 3, Paper 1061, at 2:3-7), but does not direct us to
evidence that he has any personal knowledge of the facts that Andresen relies on
for its arguments.

Interference 106,002

22

Wan also argues that Andersen fails to provide any contemporaneous 1
evidence showing that there was recognition and appreciation of the usefulness of 2
specific molecular sieves with CHA framework and SAR of from 2-300. (Wan 3
Opp. 3, paper 1061, at 16:11-18.) To the contrary, Mr. Cox testifies that he 4
understood from his discussions, at the time, with inventor Chen that Chen and the 5
other named inventors had conceived of an embodiment within Count 5. (FFs 25-6
26 and 30; Cox Decl., Exh. 2888, at ¶¶ 68 and 77.) 7
Wan argues further that Andersen’s evidence does not demonstrate any 8
effort to obtain high silica CHA catalyst on 11 June 2007 because inventor 9
Fedeyko’s notebook entry on that date merely includes one line stating “High silica 10
CHA SSZ-33 expensive template.” (Wan Opp. 3, Paper 1061, at 18:9-15, citing 11
Exh. 2804.) We are not persuaded that because Exhibit 2804 does not mention 12
SSZ-13, but a different high silica CHA catalyst, it is not probative of conception 13
of an invention within the scope of the Count given the other evidence pointed out 14
to us by Andersen. Wan does not argue or direct us to evidence that SSZ-33 does 15
not have an SAR of from 2 to 300. In the absence of such evidence, because SSZ-16
33 is referred to as “high silica” we are persuaded that it is within the scope of 17
Count 5. 18
Wan argues that Andersen’s evidence describes an alternative “narrative,” 19
not a conception of an NAC-SCR system within the scope of Count 5. (Wan 20
Opp. 3, Paper 1061, at 18:16-20:4.) According to Wan, Andersen’s evidence 21
shows conception of an NAC-SCR system using the catalyst SAPO-34 only and 22
that reference to other small pore zeolites in Table 1 of Exhibit 2796 (the “New 23
Formulation” catalysts) is irrelevant because Andersen presented no evidence of 24
Interference 106,002

23

contemporaneous efforts to evaluate other such catalysts. (Id.) As explained 1
above, in view of the totality of the evidence presented by Andersen, we are 2
persuaded that the Andersen inventors had a definite and permanent idea of an 3
NAC-SCR system with a catalyst within the scope of Count 5, even though their 4
initial experiments may have been with catalysts outside the scope. 5
C. 6
In addition to the arguments Wan puts forth in its opposition to Andersen’s 7
motion for priority, Wan argues that some of the evidence on which Andersen 8
relies for a date of conception should be excluded. (See Wan Motion to Exclude, 9
Paper 1071.) Specifically, Wan argues that Exhibit 2198 and 2211 should be 10
excluded because they describe plans to evaluation a catalyst outside the scope of 11
Count 5 (Cu.SAPO-34) and so are irrelevant. (Id at 1:10-2:4.) 12
We are not persuaded by Wan’s argument because to the extent we rely on 13
Exhibit 2198, we are not persuaded that evidence with catalysts outside the scope 14
of Count 5 cannot be evidence, in part, of conception. As explained above, given 15
the totality of the evidence, even though the Andersen inventors initially used 16
catalysts outside the scope, we are persuaded that they had a conceived of an NAC-17
SCR system with a catalyst within the scope of Count 5. 18
We do not rely on Exhibit 2211 to arrive at our decision. Thus, even if 19
Exhibit 2211 were excluded, our decision would be the same. 20
Wan argues that Exhibit 2796 should be excluded because the invention 21
disclosure is unrelated to systems with a NOx adsorber catalyst disposed upstream 22
of an SCR catalyst. (Wan Motion to Exclude, Paper 1071, at 2:6-13.) This 23
argument is not persuasive because, as discussed above, we are not persuaded that 24
Interference 106,002

24

conception must be shown in a single document. Exhibit 2796 is relevant for 1
showing that the inventors were considering catalysts with the scope of Count 5, 2
while other exhibits demonstrate that they were contemplating systems with a NOx 3
adsorber catalyst disposed upstream of an SCR catalyst. 4
Finally, Wan argues that Exhibit 2804 should be excluded because the 5
notebook pages only state that SSZ-33 is an “expensive template” but do not show 6
that the inventors were contemplating the use of SSZ-33 in a system of Count 5. 7
(Wan Motion to Exclude, Paper 1071, at 2:15-22.) Because Exhibit 2804 is cited 8
by Mr. Cox, as well as the inventors, as evidence of the discussions that took place 9
among the inventors regarding the use of New Formulation catalysts in an NAC-10
SCR system, we are not persuaded by Wan’s arguments. (See FFs 25-27; Cox 11
Decl., Exh. 2888, at ¶ 68, Chen Decl., Exh. 2883, at ¶ 65; Fedeyko Decl., 12
Exh. 2884, at ¶¶ 55, 57, and 58.) 13
D. 14
In light of the evidence presented by Andersen, we are persuaded that the 15
Andersen inventors conceived of a system within the scope of Count 5 by 16
11 June 2007. Accordingly, we need not consider whether Andersen has presented 17
sufficient evidence of any later conception. (See Andersen Motion 3, Paper 974, at 18
14:7-19:2.) 19
20
III. Reduction to Practice 21
To establish an actual reduction to practice, it is necessary to show that the 22
claimant had possession of the subject matter of the count and that it was shown or 23
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known to work for its intended purpose. Streck, Inc. v. Research & Diagnostic 1
Sys., Inc., 659 F.3d 1186, 1193 (Fed. Cir. 2011). 2
A. 3
34. Exhibit 2436, dated 17 March 200810, is a copy of a WBS Description 4
Sheet number 40908Ar0 (referencing ADP # NCC.409.08), which was sponsored11 5
by inventor Weigert and supervised by inventor Chen and which includes the 6
objective: “To directly compare the activity of Cu- and Fe- supported on small, 7
medium, and large pore size zeolites after lean/rich aging.” (Exh. 2436 at 1.) 8
35. “Lean/rich aging” refers to the cycling fuel conditions under which 9
catalysts in an NAC-SCR system operate. (Cox Decl., Exh. 2888, at ¶ 30.) 10
36. Inventor Chen testifies that Exhibit 2440 provides instructions for 11
technicians to analyze the performance of SSZ-13 SCR catalyst when placed 12
downstream of an NAC catalyst. (Chen Decl., Exh. 2883, at ¶ 94.) 13
37. Inventor Chen testifies that Exhibit 2436 provides for AZM4.Cu 14
(SSZ-13) at “position 4” and an NAC element in “position 10.” (Chen Decl., 15
Exh. 2883, at ¶¶ 93-94.) 16
38. Joseph Butte testifies that he was a Senior Technical Specialist at 17
Johnson Matthey during the time of June 2007 to June 2008 and conducted, 18
reported, and recorded test runs for catalysts that had been prepared according to 19

10 The actual date that appears on Exhibit 2436 is “3/17/07,” but inventor Weigert
testifies that this date is a typographical error, as indicated by the archival
information maintained by Ms. Burghardt. (Weigert Decl., Exh. 2886, ¶ 46.)
11 Mr. Cox testifies that the “sponsor” or an ADPP or WBS Description Sheet is
the one who designed the plan. (Cox Decl., Exh. 2888, at ¶ 6.)
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26

Johnson Matthey research programs, under the direction of the sponsor of an 1
Applications Development Program Plan. (Declaration of Joseph Butte (“Butte 2
Decl.”), Exh. 2898, ¶ 3.) 3
39. Mr. Butte testifies that Exhibit 2496, at page 36, which is dated 4
9 June 2008, bears his signature and demonstrates that he ran a test on the NAC 5
Test Rig to investigate sample positions 10 and 4 of WBS 40908r0 (Exhibit 2436), 6
which relates to ADP#: NCC.409.08 (See Exhs. 2164 and 2165). (Butte Decl., 7
Exh. 2898, ¶ 377.) 8
40. Mr. Butte testifies that Exhibit 2497, at pages 1-4, which is dated 9
25 June 2008, bears his signature and demonstrates that he ran a test to investigate 10
sample Positions 10 – 4 and 4 of WBS 40908Ar4 (Exhibit 2440). (Butte Decl., 11
Exh. 2898, ¶ 389.) 12
41. Exhibit 2874 is a copy of a presentation dated 23 June 2008, bearing 13
the name of inventor Weigert, and entitled “DF438 preparation methods,” “DF438 14
Sulfation/de-sulfation Testing,” and “Lean/rich aging of metal exchanged 15
zeolites.” (Exh. 2874 at 1.) 16
42. Exhibit 2874 includes slide 15, which compares the aged activity and 17
lean/rich deactivation of AZM1, AZM2, AZM3, and AZM4. (Exh. 2874 at 15.) 18
43. Mr. Cox testifies that he attended the meeting on 23 June 2008 in 19
which the slides in Exhibit 2874 were presented. (Cox Decl., Exh. 2888, at ¶ 115.) 20
44. Mr. Cox testifies that Exhibit 2874 21
accurately describes at least a portion of the continued efforts at 22
evaluating this system, along with other systems comprising an NAC 23
disposed upstream of our New Formulation catalysts. Slide 13 of the 24
presentation described the lean/rich aging studies of NH3-SCR 25
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27

Catalysts conducted according to WBS 40908A. Exhibit 2874, at 13. 1
The slide illustrated the lean/rich aging procedure with a fresh core of 2
DT55 (an NAC) placed in front (i.e., upstream) of an SCR catalyst 3
performed according to the instructions of WBS 40908Ar0 4
(Exhibit 2436). Slide 15 compared the results of SCR activity testing 5
of Cu SAPO-34 (AZM1 with copper) versus Cu-SSZ-13 (AZM4 with 6
copper), with Cu-SSZ-13 showing comparable, but superior, activity. 7
8
(Cox Decl., Exh. 2888, at ¶ 115.) 9
B. 10
Andersen presents evidence that by 17 June 2008, an embodiment within the 11
scope of Count 5 had been reduced to practice. (Andersen Motion 3, Paper 974, at 12
19:11-28:3.) Specifically, Mr. Butte testifies that on 10 June 2008 he carried out 13
the analysis provided for in Exhibit 2436, wherein an SCR catalyst of AZM4 14
(SSZ-13) was placed upstream of an NAC element and evaluated after lean/rich 15
aging. (FF 39; Butte Decl., Exh. 2898, ¶ 377; see also FFs 34-37; Exh. 2436, Chen 16
Decl., Exh. 2883, at ¶¶ 93-94.) Furthermore, Mr. Cox testifies that on 23 June 17
2008, inventor Weigert presented results of testing SCR catalyst AZM4 (SSZ-13) 18
upstream of an NAC element in a lean/rich atmosphere. (FFs 42-44; Exhibit 2874, 19
Cox Decl., Exh. 2888, at ¶ 115.) According to Mr. Cox, this presentation shows 20
that Cu-SSZ-13 (AZM4 with copper) demonstrated comparable, but superior, 21
activity compared to SAPO-34 (AZM1 with copper). (Id.) 22
C. 23
Wan argues that Andersen does not show an actual reduction to practice 24
because Andersen fails to connect lot numbers of SSZ-13 to any of the reported 25
experiments with an NAC element upstream of an SCR catalyst. (Wan Opp. 3, 26
Interference 106,002

28

Paper 1061, at 29:11-30:11.) According to Wan, the nature of the material 1
indicated to be “AZM4” as referenced in Wan’s exhibits, including Exhibit 2436, 2
is unclear. (Id., at 30:12-31:4.) Wan notes that each of the SCR materials listed in 3
Exhibit 2436 provide detailed cross references, except the material labeled 4
AZM4.Cu at position 4. (Id., at 30:12-31:4.) According to Wan, Andersen fails to 5
show reduction to practice because it fails to show that materials referred to in 6
other exhibits, which have lot numbers alleged to be SSZ-13, have the required 7
CHA structure and SAR. (Id., at 29:16-30:1 and 31:1-4.) Wan argues further that 8
some of Andersen’s exhibits use different designations for what Andersen asserts 9
is SSZ-13. For example, Exhibit 2436 indicates AZM4, while Exhibit 2766 10
indicates AZM4a1 when referring to results of WBS Number 40908A. (Id., at 11
21:5-14, citing Exhibit 2766 at 20 (described as a printout of a computerized 12
logging system for evaluation of materials in ADP# NCC.409.08 (see Chen Decl., 13
Exh. 2883, at ¶ 118)).) 14
We are not persuaded by Wan’s arguments because it does not outweigh the 15
evidence Andersen presents to show that SSZ-13 was used in an NAC-SCR system 16
by 17 June 2008. First, Andersen provides multiple pieces of evidence to show 17
that the Johnson Matthey code for SSZ-13 was AZM4. For example, the copy of 18
internal correspondence in Exhibit 2878 (authenticated by Mr. Cox, see Cox Decl., 19
Exh. 2888, at ¶ 175) states on page 2: “The SSZ-13 material was designated as 20
AZM4.” In addition, Mr. Cox testifies that the Johnson Matthey code for SSZ-13 21
was AZM4. (See, e.g., Cox Decl., Exh. 2888, at ¶¶ 42, 43, 91, 106, etc.) Inventor 22
Chen also used both designations in his notes. (See Exhibit 2873: “CuAZM4 23
(SSZ-13)”.) Thus, we are persuaded that AZM4 means SSZ-13. 24
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29

Second, we are persuaded that the samples run by Mr. Butte in the tests 1
performed on 17 June 2008 were SSZ-13. Mr. Butte testifies that he ran the 2
samples indicated in the WBS Description Sheets and ADPPs referencing the 3
number 40908A. (FF 39; Butte Decl., Exh. 2898, ¶ 377, Exh. 2436.) Because this 4
WBS Description Sheet (Exh. 2436) refers to AZM4, Johnson Matthey’s code for 5
SSZ-13, we are persuaded that SSZ-13 was tested in the NAC-SCR system 6
indicated in those documents. 7
Our opinion is not changed because the documents fail to provide a specific 8
lot number for the SSZ-13 sample. Count 5 is limited to structural characteristics 9
of the SCR catalyst, not any specific lot number. Therefore, a reference to an 10
NAC-SCR system using SSZ-13 without a lot number may still provide evidence 11
of a reduction to practice within the scope of Count 5. 12
Wan argues further that the documents presented by Andersen use different 13
codes names, such as “AZM4” (Exh. 2436), “AZM4a1” (Exh. 2766), and 14
“AZM4a1-3202,” (Exh. 2496), creating confusion about whether they are referring 15
to the same material and whether that material is SSZ-13. (Wan Opp. 3, 16
Paper 1061, at 31:5-32:9.) Because we credit Mr. Butte’s testimony that he ran 17
tests on the samples provided in Exhibit 2436, which refers to the designation 18
provided for SSZ-13 in Andersen’s documents, AZM4, Wan’s argument is not 19
persuasive. It is clear from Mr. Butte’s testimony that a test of an NAC-SCR 20
system within the scope of Count 5 was conducted by 17 June 2008. 21
Wan also argues that Andersen fails to provide proof of the CHA structure 22
or the SAR of materials referenced in its documents, (Wan Opp. 3, Paper 1061, at 23
29:16-30:1 and 31:1-4.) In light of the testimony of Wan’s own witnesses, we are 24
Interference 106,002

30

persuaded that SSZ-13 is an SCR catalyst with CHA structure and an SAR of from 1
2 to 300. (See, e.g. Declaration of Stanley A. Roth, Ph.D., Exh. 1194, at ¶ 18 2
(explaining that the catalyst CuSSZ-13 has copper, CHA crystal structure, and a 3
SAR in range of 2 to 300.); see also Olson Decl., Exh. 1041, ¶¶ 38 and 40.) Wan 4
does not direct us to evidence to show that the references to SSZ-13 in Andersen’s 5
documents indicate a different catalyst that is outside the scope of Count 5. 6
D. 7
Because Andersen provides persuasive evidence that SSZ-13, a catalyst 8
within the scope of Count 5, was tested by 17 June 2008 we are persuaded that an 9
embodiment of Count 5 was reduced to practice by this date. Wan does not direct 10
us to evidence, such as the cross examination of any witness, to indicate that 11
Mr. Butte’s testimony is unreliable or that Andersen’s evidence indicates 12
otherwise. 13
14
IV. Diligence 15
A. 16
To prevail on priority the first to conceive of an invention must provide 17
evidence of diligent work towards a reduction to practice throughout the entire 18
period from just before the other party’s conception. Monsanto Co. v. Mycogen 19
Plant Sci., Inc., 261 F.3d 1356, 1369 (Fed. Cir. 2001). Evaluation of such 20
evidence is a case specific inquiry. See id. (citing Jones v. Evans, 46 F.2d 46 F.2d 21
197, 203 (CCPA 1931) (“Each case where diligence is involved, rests and must be 22
decided upon its own facts, and all the surrounding circumstances must be viewed 23
and considered in determining whether there was sufficient diligence.”)). 24
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B. 1
Andersen provides exhibits to support its argument that the inventors 2
undertook several Application Development Program Plans (“ADPPs”) as part of 3
their work towards a reduction to practice of an embodiment of Count 5. 4
(Andersen Motion 3, Paper 974, at 32:24-47:2.) Each of the exhibits is 5
authenticated by Mr. Cox, who testifies that he reviewed the documents soon after 6
they were made. Mr. Cox also testifies to the sponsor of each project and its 7
purpose as it relates to the development of New Formulation catalysts and 8
ultimately to the plan of the overall NAC-SCR project. 9
Andersen directs us to Exhibit 2080, which is an ADPP dated in April 2007 10
and sponsored by inventor Fedeyko. Exhibit 2080 provides for preparation of Cu-11
SAPO-34 samples for evaluation. (See Cox Decl., Exh. 2888, at ¶ 70.) 12
Exhibits 2086, 2091, 2093, and 2095 also provide for evaluation of a Cu-SAPO-34 13
sample. (See Cox Decl., Exh. 2888, ¶¶ 137, 132, 200, and 204.) Yet other ADPPs 14
dated in May and June 2007, and sponsored by inventor Fedeyko, provide for 15
testing and evaluating of New Formulation catalysts, such as Cu-Nu-3 (AZM2) 16
and Sigma-1 (AZM3). (See Exhs. 2085 and 2092; see Cox Decl., Exh. 2888, at 17
¶¶ 127 and 195.) 18
ADPPs cited by Andersen, dated in July and August 2007, and sponsored by 19
inventor Fedeyko, or Johnson Matthey personnel who ultimately reported to 20
inventor Andersen, provide for testing of Cu-SAPO-34 after spray drying and in an 21
actual engine. (See Exhibit 2096, 2075; see Cox Decl., Exh. 2888, at ¶¶ 209, 213-22
14.) 23
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32

Yet other ADPPs, dated September 2007 to November 2007, provide plans 1
for development of the steps to prepare Cu-SAPO-34, including eliminating an 2
activation step (Exhibit 2107), determining the effect of variables such as pH, 3
washcoat aging, viscosity modifiers, spraying techniques (Exhibits 2110 and 2117, 4
2121), and investigating alternate binders (Exhibits 2114 and 2127). (See Cox 5
Decl., Exh. 2888, at ¶¶ 231, 235, 249, 255, 261, and 273.) Further ADPPs 6
provided for investigations of conditions (hydrothermal vs. nitrogen only) to 7
understand the effects of catalyst aging on activity. (See Exh. 2124; see Cox Decl., 8
Exh. 2888, at ¶ 267.) 9
ADPPs dated in November and December 2007 and sponsored by inventor 10
Weigert provide plans for determining baseline performance of exhaust treatment 11
systems by investigating a Mercedes E320 Bluetech system and a tri-metallic 12
NAC-SCR system. (See Exhs. 2125 and 2132; see also Cox Decl., Exh. 2888, at 13
¶¶ 270 and 281.) 14
ADPPs dated in January and February 2007, indicate that the inventors 15
continued to investigate different ways of preparing the catalyst Cu-SAPO-34 16
(AZM1) to eliminate the need for activation (Exh. 2141), to study copper loading 17
(Exh. 2149) and the effects of temperature and alternative binders (Exhs. 2151 and 18
2154, respectively). (See Cox Decl., Exh. 2888, at ¶¶ 288-89, 304, 308-09, and 19
314-15.) 20
Throughout this time, the inventors also sponsored ADPPs to evaluate new 21
lots of catalyst Cu-SAPO-34 (AZM1) that were received. (See Exhs. 2101, 2103, 22
2112; see Cox Decl., Exh. 2888, at ¶¶ 219, 225, 241.) 23
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33

Andersen presents further evidence of the inventors’ work with SSZ-13, 1
beginning in January 2008. (Andersen Motion 3, Paper 974, at 19:18-20:18.) For 2
example, Exhibit 2872 is a copy of an e-mail dated 10 January 2018, apparently 3
sent by inventor Chen to Russell Chang requesting that kilogram quantities of 4
SSZ-13 be supplied. (See Chen Decl., Exh. 2883, at ¶ 101.) Exhibit 2909 is a 5
letter dated 31 January that indicates 200 g of a substance of lot number 2489-141-6
1 having a SAR of 29.0 was shipped and Raj Rajaram12 testifies that he performed 7
preliminary evaluations of the SSZ-13 received on 31 January 2008. (See 8
Exh. 2909; Chen Decl., Exh. 2883, at ¶ 101, and Declaration of Raj Rajaram 9
(“Rajaram Decl.”), Exh. 2929, ¶ 13.) 10
In February 2008 Rodney Foo communicated with inventors Andersen, 11
Chen, and Fedeyko, as well as Dr. Rajaram, in an e-mail that reported that 12
“[o]verall the Cu/SSZ-13 is a better catalyst in comparison to the AZM1” and 13
including an attachment entitled “CuSSZ-13 19th Feb08.ppt.” (Exh. 2911.) 14
Exhibit 2912 is a copy of a presentation entitled Performance of 3Cu/SSz-13 15
catalysts, dated 19 February 2008, which Dr. Rajaram testifies is the attachment to 16
the e-mail of the same date and that reports Cu/SSZ-13 to be a better catalyst in 17
comparison to AZM1. (Rajaram Decl., Exh. 2929, ¶ 13.) Andersen’s evidence 18
also includes Exhibit 2913, a copy of an e-mail dated 19 February 2008 from 19
inventor Chen to Mr. Cox that states: “the next step is to coat a few cores and find 20
ways to obtain production material.” Mr. Cox testifies he understood this 21

12 Dr. Rajaram testifies that he was a Scientific Consultant at Johnson Matthey
from 2006-2008 and collaborated with inventors Andersen, Chen, and Fedeyko.
(Rajaram Decl., Exh. 2929, at ¶¶ 3 and 5.)
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communication to mean that the next step was to use SSZ-13 as an SCR catalyst. 1
(Cox Decl., Exh. 2888, at ¶ 166.) 2
Exhibits dated from January to May 2008 indicate that the inventors 3
continued to receive samples of SSZ-13. Exhibit 2870 is a copy of a document 4
that Mr. Cox testifies lists six samples of SSZ-13 supplied from 31 January 2008 to 5
23 May 2008 (Cox Decl., Exh. 2888, at ¶ 99), including lot numbers, quantity of 6
material shipped, shipping dates, “XRD” (structure by X-ray diffraction, see Cox 7
Decl., Exh. 2888, at ¶ 99) and SAR. 8
To demonstrate the inventors’ efforts to use SSZ-13 in an NAC-SCR 9
system, Andersen presents a copy of a notebook page dated 10 March 2008, which 10
includes the notation “NAC/SCR” and “objectives” of “1 small pore [illegible] 11
more durable under lean/rich conditions” and “2 small pore zeolite table 12
NH3storage capacity” and which also provides a list including Cu.AZM1, 13
Cu.AZM2 (Nu-3), Cu.AZM3 (Sigma-1), CuZSM-34, and Cu.AZM4 (SSZ-13). 14
(Exhibit 2873.) Inventor Chen testifies that these notes reflect a meeting on 10 15
March 2008 to discuss running comparative evaluations of small-pore SCR 16
catalysts and medium- and large-pore SCR catalysts, including Cu.AZM4 (SSZ-17
13), under the lean and rich cycling conditions of an NAC-SCR system and in the 18
presence of an upstream NAC. (Chen Decl., Exh. 2883, at ¶ 104, citing Exh. 19
2873.) Similarly, Exhibit 2928 is a copy of undated notebook pages with the 20
notation “NAC/SCR meeting.” Inventor Weigert testifies that Exhibit 2928 is his 21
notes of a meeting with inventor Chen to discuss running experiments to confirm 22
that small-pore SCR catalysts are more durable under lean/rich conditions than 23
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medium- and large-pore catalysts, wherein the test catalysts were to include 1
Cu.AZM4 (Cu-SSZ-13). (Weigert Decl., Exh. 2886, at ¶¶ 39-40.) 2
Andersen’s evidence of diligence continues with the specific activities of the 3
ADPP that resulted in the reduction to practice of an embodiment of Count 5. 4
(Andersen Motion 3, Paper 974, at 36:22-37:18.) Specifically, Exhibit 2166 is a 5
copy of ADP # NCC.422.08r0, dated 18 March 2008, which Mr. Cox testifies is a 6
plan for evaluation of AZM4.Cu (SSZ-13) samples in NH3 SCR testing. (Cox 7
Decl., Exh. 2888, at ¶ 169.) Exhibits 2444-2450 are copies of the specific 8
instructions in WBS Description Sheets referencing ADP # NCC.422.08 and dated 9
during the time period from March 18, 2008 to April 10, 2008. Mr. Cox testifies 10
that these WBS Description Sheets provide instructions for the evaluation of SCR 11
activity of AZM4.Cu samples. (Cox Decl., Exh 2888, at ¶¶ 170-171.) 12
Exhibit 2164 is a copy of ADP #: NCC.409.08r0, sponsored by inventor 13
Weigert, and dated 17 March 2008, which Mr. Cox testifies provides for plans to 14
directly compare the activity of different catalysts, including AZM4.Cu (SSZ-13), 15
in an NAC-SCR exhaust system. (Cox Decl., Exh. 2888, at ¶ ¶ 88-89.) The 16
activities related to this ADPP and documented in WBS Description Sheets that 17
cross-reference this ADP# lead to the reduction to practice of an embodiment of 18
Count 5 on 17 June 2008, as discussed above. 19
C. 20
The ADPP documents discussed above provide for the overall plan of 21
investigations regarding NAC-SCR systems and New Formulation catalysts. 22
These projects were conducted between 1 June 2007 and 17 June 2008. Andersen 23
provides other documents, specifically the WBS Description Sheets that reference 24
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36

these ADPPs showing work was done each day of the diligence period on these 1
overall projects. (See Andersen Motion 3, Paper 974, at 47:13-18 and App’x B; 2
citing Chen Decl., Exh. 2883, at ¶¶ 141-1238.) This collection of ADPPs and 3
WBS Description Sheets account for almost every day between the inventors’ 4
conception on 11 June 2007 and reduction to practice on 17 June 2008. Wan does 5
not direct us to significant periods of time when the evidence presented by 6
Andersen fails to show activity. Nor does Wan argue that any of these activities 7
did not actually take place on the days indicated on each exhibit. 8
There are several non-holiday weekdays when no activity towards the NAC-9
SCR project is documented, but there are also several weekend days with 10
documented activity. (See, e.g., Andersen Motion 3, Paper 974, at App’x B, 11
compare Friday, 13 July 2007 and Monday, 16 July 2007 with Saturday, 12
11 September 2007 and Sunday 30 September 2007.) On balance, because there 13
was documented activity on more weekend days than lack of documented activity 14
on weekdays, the days without documented activity do not detract from 15
Andersen’s argument that the inventors diligently reduced their conception to 16
practice. (See Andersen Motion 3, Paper 974, at 47:19-48:1.) 17
D. 18
Wan argues that any evidence or testimony related to SAPO-34 presented by 19
Andersen is not within the scope of Count 5. (Wan Opp. 3, Paper 1061, at 1:12-20
2:2.) While we agree that evidence directed only to a catalyst with a SAR outside 21
the range recited in Count 5 is insufficient by itself to establish conception or 22
reduction to practice, we consider it reasonable that work on other New 23
Formulation catalysts, for use in NAC-SAR systems, such as Cu-SAPO-34, 24
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contributes towards diligent work to reduce an embodiment of the count to 1
practice. 2
In Bey v. Kollonitsch, 806 F.2d 1024 (Fed. Cir. 1986), the court determined 3
that attorney work to prepare patent applications on closely related subject matter, 4
in that case applications for different but structurally and functionally related 5
enzyme inhibitors, contributed to reasonable diligence of reducing to practice one 6
of those species. The court noted that “[f]requently, an inventor or group of 7
inventors may file more than one patent application involving closely related 8
subject matter. In this type of situation, the ‘exact lines of demarcation between the 9
cases [may not be] clear in all respects at the start.’” Id. at 1028 (quoting Rines v. 10
Morgan, 250 F.3d 365, 369 (CCPA 1957). 11
Although the issue in Bey concerns the attorney diligence, the Bey court 12
referred to Ginos v. Nedelec, 220 U.S.P.Q. 831 (Bd. Pat. Int. 1983), for an example 13
of a similar reasoning regarding the work of inventors. In Ginos the Board 14
determined that continuous work on compounds considered by the inventor to be 15
part of the same invention and eventually included in his patent application, 16
contributed to reasonably diligent work towards a reduction to practice. The Board 17
reasoned: 18
We believe that under some circumstances an inventor should also be 19
able to rely on work on closely related inventions as support for 20
diligence toward the reduction to practice of an invention in issue. 21
Those circumstances are present in this case where the period in 22
question is less than 2 months, during which Ginos was working on a 23
generic invention including compounds which were structurally 24
25
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closely related to PPhD-HCl, were expected to exhibit the same utility 1
and were included in his patent application. 2
3
(Id. at 836.) 4
Like the facts of these cases, the Andersen inventors directed projects 5
towards the generic invention of an NAC-SCR system by investigating several 6
different New Formulation catalysts. Although some of this work was done with 7
catalysts that fall outside of Count 5 (Cu-SAPO-34, Sigma- 1, and Nu-3), these 8
catalysts were included in Andersen’s patent application along with catalysts 9
within the scope of Count 5 as examples of suitable small pore molecular sieves. 10
(See Andersen ’443 patent, Exh. 2003, at cols. 13 and 15, Table 1.) We recognize 11
that the period of diligence in this case is significantly longer than the two months 12
in Ginos, but because Andersen has shown evidence of specific, related activity 13
each day, we see no reason why a period of longer than two months should by 14
itself indicate the inventors were not diligent. Accordingly, we do not discount 15
Andersen’s evidence directed to catalysts such as Cu-SAPO-34 when considering 16
whether the Andersen inventors were reasonably diligent. 17
We are also not persuaded by Wan’s argument13 that the Andersen inventors 18
waited too long before ordering chabazite material for testing in an NAC-SCR 19
system. (See Wan Opp. 3, Paper 1061, at 27:16-29:10, citing Exh. 2815.) Wan 20
directs us to the testimony of Johnson Matthey personnel Jillian Collier to show 21
that another worker, John Casci, had “secured” a sample of chabazite in 22

13 Wan included this argument under the heading “Andersen Has Not Established
Reduction to Practice,” but it is directed more to diligence than reduction to
practice.
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February 2007. (See Wan Opp. 3, Paper 1061, 27:16-28:17.) Wan argues that in 1
support of this argument the Andersen inventors did not actually order SSZ-13 2
until much later because it was too expensive. Wan cites to a notation in inventor 3
Fedeyko’s notebook that high silica CHA catalyst was an “expensive template” 4
(Exh. 2804 at 5) and an e-mail from Jillian Collier to other personnel in 5
February 2007 stating “it would be useful to identify other small pore zeolites that 6
are more readily available and perhaps less expensive.” (Wan Opp. 3, Paper 1061, 7
at 28:18-10.) 8
We are not persuaded by Wan’s argument because Dr. Collier testifies to her 9
understanding of Exhibit 2815, not to her personnel knowledge that the chabazite 10
material was actually available.14 Thus, her testimony does not persuade us that 11
catalyst with the scope of Count 5 was actually or could have been obtained any 12
earlier than the Andersen inventors obtained it. 13
Furthermore, to counter Wan’s argument, Andersen cites to the testimony of 14
inventors Chen and Fedeyko, as well as other Johnson Matthey personnel involved 15
in the NAC-SCR project, to show that the catalyst could not have been obtained 16
earlier. (See Andersen Reply, Paper 1069, 14:7-15.) Inventor Chen testifies that 17
material was unavailable until early 2008. (See Chen Decl., Exh. 2883, at ¶ 68.) 18
Inventor Fedeyko testifies that high silica chabazite was not available in June 2007. 19

14 Wan also directs us to the testimony of its own witness, Dr. Patchett. Because
we have no reason to believe that Dr. Patchett has personnel knowledge of any of
the facts regarding the work done, we do not credit his testimony on this issue. We
note, as Andersen points out (Andersen Reply 3, Paper 1069, at 14:14-15) that
Dr. Patchett testified that SSZ-13 was not publicly available in 2007. (See
Deposition of Joseph Patchett, Exh. 1068, at 26:11-13.)
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(Fedeyko Decl., Exh. 2884, at ¶ 57.) Further, Raj Rajaram, who testifies that he 1
collaborated with the Andersen inventors on the project of developing SCR 2
catalyst for lean-burn engines, states: “Hai-Ying Chen and others at Johnson 3
Matthey had sought to obtain samples of SSZ-13 with a SAR between 2 to 300 for 4
such evaluations since at least the time that the Record of Invention dated 5
February 15, 2007 was being prepared.” (See Rajaram decl., Exh. 2929, ¶¶ 5, 6, 6
and 12) Wan does not direct us to evidence, such as the cross-examination of these 7
witnesses, to show that their testimony is not based on personal experience or is 8
otherwise unreliable. Accordingly, we are not persuaded that the Andersen 9
inventors delayed in obtaining samples of a catalyst within the scope of Count 5. 10
Wan argues further that the Andersen inventors were not diligent because 11
they unreasonably delayed constructing a system with AZM4 (SSZ-13) material. 12
(Wan Opp. 3, Paper 1061, at 34:1-36:17.) Specifically, Wan points to 13
Exhibit 2437, which is a revision of a WBS Description Sheet referencing 14
ADP#: NCC.409.08, the Application Development Program Plan that Andersen 15
relies on for a reduction to practice of an embodiment of Count 5. This revision 16
inserted a sample of AZM1 (Cu-SAPO-34) before the sample of AZM4 (SSZ-13) 17
originally planned, thus appearing to give priority to the catalyst outside the scope 18
of Count 5 over a catalyst within the scope of the count. Wan notes that the 19
revised WBS Description Sheet (Exhibit 2437) includes the notation: “Please 20
age/test Pos. 11 [referring to the sample of AZM1] as soon as it becomes 21
available, ahead of any samples from Pos. 1-9 [including the sample of AZM4] 22
that have not yet been tested.” (Emphasis in original.) According to Wan, this 23
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41

revision caused the AZM4 sample to be tested more than one month after it 1
originally had been scheduled. (Wan Opp. 3, Paper 1061, at 34:7-11.) 2
To support its argument, Wan cites further to Exhibit 2766 at pages 6, 19, 3
and 20 to show that the AZM4 samples submitted on 20 March 2008 were not 4
hydrothermally aged until 2 June 2008. (Wan Opp. 3, Paper 1061, at 35:7-11.) 5
Wan notes that Exhibit 2766 shows that the inserted AZM1 sample was 6
hydrothermally aged on the same day it was submitted: 5 May 2008. According to 7
Wan, Exhibits 2437 and 2766 show that the Andersen inventors proceeded with 8
testing AZM1, AZM2, and AZM3 samples in order, but that before AZM4 was 9
tested, another sample of AZM1 was inserted, causing delay of final testing of 10
AZM4, the catalyst within the scope of Count 5, until 10 June 2008. 11
We are not persuaded by Wan’s argument. While the evidence shows that a 12
sample of AZM1 was inserted into the testing sequence before the AZM4 sample, 13
we are not persuaded that this change caused a delay for as long as Wan argues. 14
We are not persuaded that the time from submission of the AZM4 sample and its 15
hydrothermal aging necessarily indicates a delay. As Wan notes, the samples 16
submitted before the inserted AZM1 sample also had a lag between submission 17
and aging. For example, Wan explains that AZM3 was submitted on 18
20 March 2008 and not aged until 30 April 2008. (Wan Opp. 3, paper 1061, at 19
35:16-18.) Thus, there was some “delay” for the aging of the AZM3 sample that 20
was not due to the insertion of a new sample. Rather the timing between 21
submission and aging seems to have been due to normal processing. Accordingly, 22
we are not persuaded that the entire time between submission and aging of the 23
AZM4 sample is due to a “delay” and not normal processing. 24
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Instead, as Wan notes, Exhibit 2766 shows that the inserted AZM1 sample 1
was submitted and aged on the same day. Thus, it is not clear that any delay in 2
testing the AZM4 sample was for more than one day. (See Andersen Reply 3, 3
Paper 1069, at 15:9-12.) Furthermore, because, as explained above, we consider 4
testing of AZM1 (Cu-SAPO-34) to contribute to the diligent reduction to practice 5
of Count 5, we are not persuaded that the revision to the ADPP to test an NAC-6
SCR system within the scope of Count 5 to demonstrate a lack of diligence. 7
Accordingly, we are persuaded that the Andersen inventor’s diligent work 8
towards reducing to practice an embodiment of Count 5 included trying to obtain a 9
sample of catalyst within the scope of Count 5. 10
V. Conclusion 11
We conclude that Andersen presents sufficient evidence of the earliest 12
conception with diligence to a reduction to practice. Accordingly, we GRANT 13
Andersen Motion 3 (Paper 974). 14
We need not consider the evidence for priority presented by Wan. 15
Accordingly we DISMISS Wan Motion 7 (Paper 1059) as being moot. 16
As discussed in analysis above, we DENY Wan Motion to Exclude (Paper 17
1071). 18
Judgment will be entered against Wan separately. 19

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cc (via e-mail): 1
2
Counsel for Andersen: 3
4
Todd R. Walters 5
Christopher L. North 6
Buchanan Ingersoll & Rooney PC 7
Todd.walters@bipc.com 8
Christopher.north@bipc.com 9
10
Counsel for Wan: 11
12
Ryan W. Cagle 13
Ian A. Calvert 14
Womble Carlyle Sandridge & Rice, LLP 15
rcagle@wcsr.com 16
icalvert@wcsr.com 17
18
Melanie L. Brown 19
BASF Corporation 20
Melanie.brown@basf.com 21
Basf-ip@basf.com 22
23
24