PTAB

IPR2014-01555

Volkswagen Group Of America Inc v. EmeraChem Holdings LLC

Key Events

Petition

petition

Title: Process for the Reaction and Absorption of Gaseous Air Pollutants, Apparatus Therefor and Method of Making the Same
Brief Description: The ’558 patent discloses a catalyst absorber material and method for removing gaseous pollutants, such as nitrogen oxides (NOx), from combustion exhaust. The material comprises an oxidation catalyst specie (e.g., platinum) disposed on a high surface area support (e.g., alumina), where this catalytic component is then "intimately and entirely coated with" an absorber material, such as an alkali or alkaline earth carbonate, bicarbonate, or hydroxide.

Prior Art Relied Upon: Takeshima (WO 93/007363 A1).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Takeshima discloses all elements of the challenged claims through inherency. Takeshima described a catalyst absorber for NOx comprising an alumina support (carrier), a platinum catalyst, and a barium oxide absorber disposed thereon. Petitioner contended that barium oxide, when used in an internal combustion engine's exhaust stream as disclosed, inherently and necessarily converts to barium carbonate due to the presence of carbon dioxide. Since barium carbonate is a claimed absorber compound, Takeshima was alleged to inherently disclose every limitation of the challenged claims, including the requirement for a carbonate absorber coating the catalyst.

Prior Art Relied Upon: Hoekstra (Patent 3,849,343).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Hoekstra, which details a multi-step process for making a catalytic composite, anticipates the claims by disclosing the claimed product at different stages. First, an intermediate product in Hoekstra's process—after coating a platinum-impregnated alumina support with a solution of barium hydroxide but before a final calcining step—was argued to meet the limitations of claims requiring a hydroxide absorber. Second, the final calcined product, formed using barium oxide and calcined in air (which contains CO2), would inherently result in a barium carbonate coating over the platinum catalyst, thus anticipating claims requiring a carbonate absorber.

Prior Art Relied Upon: Kinoshita (Patent 4,369,132).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Kinoshita explicitly discloses the claimed structure and method. Kinoshita describes a sequential process where a platinum-impregnated alumina carrier is first prepared and calcined, and is then subsequently coated with an aqueous solution of potassium carbonate and dried. Petitioner asserted this directly teaches a material with a platinum catalyst on a high surface area support that is coated with an alkali metal carbonate, meeting all limitations of independent claims 1 and 33 and their respective dependent claims.
Additional Grounds: Petitioner asserted further anticipation challenges against various claims based on Inui (Japanese Application Publication No. H4-367724) and Stiles (Patent 5,362,463). These grounds relied on similar arguments, contending that Inui and Stiles also disclose catalyst structures with an oxidation catalyst on a support that is subsequently coated with a claimed absorber like potassium carbonate.

The petition proposed constructions for key terms, arguing that since the patent had expired, the Phillips standard (ordinary and customary meaning) should apply.
"high surface area": Petitioner argued this term should be construed to mean a support with a sufficient irregular internal surface structure (i.e., pores) to allow for the deposition of the necessary amount of catalytic material for the intended reaction. This construction was supported by the patent's specification, which describes the support's surface as "very irregular," and by dependent claim 9, which recites a specific surface area range of 50-350 square meters per gram.
"being intimately and entirely coated with": Petitioner contended this phrase requires the absorber material to be disposed over or on top of the catalytic component, relative to the support. This construction was based directly on the prosecution history, where the applicant added this limitation and argued to the Examiner that it distinguished the invention from prior art (the Wan patent) in which an alkaline earth component was located below the catalyst layer.

Inherent Anticipation: A central contention across the Takeshima and Hoekstra grounds was that prior art references disclosing the use of barium oxide as an absorber inherently disclose the claimed invention. Petitioner argued that, as a matter of scientific principle, barium oxide necessarily converts to barium carbonate (a claimed absorber) when exposed to carbon dioxide in engine exhaust, regardless of whether the prior art authors explicitly recognized or stated this conversion.
Anticipation by Intermediate Product: For the Hoekstra and Kinoshita grounds, Petitioner argued that an un-isolated intermediate product formed during a multi-step manufacturing process could anticipate a product claim. The argument was that the structure described in the claims existed at a discrete point in the prior art process (e.g., after coating and drying but before a final firing/calcining step), thereby satisfying all claim limitations at that stage.

Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, 7-10, 12, 14, 15, 17, 19, 21-24, 31-42, and 44 of Patent 5,451,558 as unpatentable under 35 U.S.C. §102.