Basf Corporation v. Iancu ( 2018 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
BASF CORPORATION,
Appellant
v.
ANDREI IANCU, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2017-1425, 2017-1426, 2017-1427, 2017-1428
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-01121, IPR2015-01123, IPR2015-01124,
IPR2015-01125.
______________________
Decided: July 17, 2018
______________________
ANISH R. DESAI, Weil, Gotshal & Manges LLP, New
York, NY, argued for appellant. Also represented by
BRIAN E. FERGUSON, MEGAN WANTLAND, Washington, DC.
MEREDITH HOPE SCHOENFELD, Office of the Solicitor,
United States Patent and Trademark Office, Alexandria,
2 BASF CORPORATION v. IANCU
VA, argued for intervenor. Also represented by NATHAN
K. KELLEY, KAKOLI CAPRIHAN, THOMAS W. KRAUSE,
FARHEENA YASMEEN RASHEED.
______________________
Before REYNA, LINN, and CHEN, Circuit Judges.
CHEN, Circuit Judge.
SUMMARY
Appellant BASF Corporation appeals from four Pa-
tent Trial and Appeal Board final written decisions ren-
dering unpatentable claims of its U.S. Patent Nos.
7,601,662 and 8,404,203 (the Patents). The Patents claim
a special compound that can break down nitrogen oxide
emissions in high temperature combustion processes. 1
IPR2015-01121 and IPR2015-01125 involved the ’662
Patent; IPR2015-01123 and IPR2015-01124 involved the
’203 Patent.
While this appeal was pending, the Supreme Court
held in SAS Institute, Inc. v. Iancu that the Board is
statutorily prohibited from instituting an inter partes
review on a subset of the petitioned claims. 138 S. Ct.
1348, 1352–54 (2018). As with the inter partes review
(IPR) in SAS, the two final written decisions on the ’662
Patent resulted from partial institution decisions. BASF
argues that this court lacks jurisdiction over these deci-
sions because the appealed decisions are not final, and for
that reason, asks this court to vacate the allegedly non-
final Board decisions; the Patent and Trademark Office
(the Director) disagrees. We recently held in PGS Geo-
physical AS v. Iancu that this court has jurisdiction under
1 The two patents share the same specification and,
for purposes of analysis in this appeal, claim the same
subject matter.
BASF CORPORATION v. IANCU 3
circumstances such as here. 891 F.3d 1354, 1359–63
(Fed. Cir. 2018). We thus reject BASF’s jurisdictional
argument.
As to the merits, we conclude that substantial evi-
dence supports the factual findings underlying the
Board’s determination that all of the claims at issue are
unpatentable as obvious over prior art U.S. Patent No.
6,709,644 (Zones) in view of U.S. Patent No. 4,046,888
(Maeshima). Thus, we affirm.
BACKGROUND
A. The Technology
The Patents claim a zeolite catalyst, a compound de-
signed to break down nitrogen oxide (NO) emissions in
automobile diesel engine exhaust. The breakdown pro-
cess is called “selective catalytic reduction” or SCR.
The claimed zeolite is arranged into a special tetrahe-
dral framework of alumina and silica molecules, called
the CHA framework, depicted below.
Appx3186; Appellant’s Br. at 9. Metals can be introduced
into the zeolite by replacing some of the aluminum with
metal cations, such as copper (Cu2+). The claimed zeolite
is such a copper-based catalyst. The amount of added
copper is called the ion exchange ratio and can be quanti-
fied as the ratio of added copper to the aluminum in the
zeolite (Cu/Al ratio).
The patented invention has several characteristics,
the combination of which BASF claims allowed for greater
4 BASF CORPORATION v. IANCU
hydrothermal and thermal stability of the catalyst, mak-
ing it commercially viable to catalyze reduction of NO
emissions in combustion processes:
• A CHA framework;
• A high silicon to aluminum molar ratio (15 to 150);
• A high copper to aluminum atomic ratio (0.25 to 1);
and
• An ability to selectively catalyze NO into nitrogen
and water in the presence of ammonia (NH3), a
process referred to herein as ammonia SCR.
The last limitation (ammonia SCR) is the most relevant to
BASF’s appeal.
The following are the representative claims from the
Patents identified by BASF.
1. A catalyst comprising: an aluminosilicate zeo-
lite having the CHA crystal structure and a mole
ratio of silica to alumina from about 15 to about
150 and an atomic ratio of copper to aluminum
from about 0.25 to about 1, the catalyst effective
to promote reaction of ammonia with nitrogen ox-
ides to form nitrogen and H2O selectively.
’662 Patent, Inter Partes Reexamination Certificate (C1),
col. 1 l. 56–col. 2 l. 3.
14. [A process for the reduction of oxides of nitro-
gen contained in a gas stream in the presence of
oxygen wherein said process comprises contacting
the gas stream with a catalyst comprising a zeo-
lite having the CHA crystal structure and a mole
ratio of silica to alumina from about 15 to about
100 and an atomic ratio of copper to aluminum
from about 0.25 to about 0.50], 2 wherein the pro-
2 Dependent claim 14 depends from claim 1. The
limitations of claim 1 are shown in the brackets.
BASF CORPORATION v. IANCU 5
cess further comprises adding a reductant to the
gas stream.
15. The process of claim 14, wherein the reductant
comprises ammonia or an ammonia precursor.
’203 Patent col. 23 ll. 51–54.
B. Relevant Board Proceedings
In IPR2015-01121 and IPR2015-01123, Petitioner
Umicore AG & Co. KG (which is no longer a party to this
proceeding due to settlement) petitioned for, and the
Board instituted, inter partes reviews of claims 1–8, 12–
24, 30, and 32–50 of the ’662 Patent and claims 1–31 of
the ’203 Patent under 38 U.S.C. § 103 for obviousness
over the combination of Zones and Maeshima. 3
Zones undisputedly discloses all elements of the pa-
tented invention, other than the specific copper-to-
aluminum ratio required by the claims and whether the
zeolite effectively catalyzes reduction via ammonia SCR.
Zones discusses methods for making and using a particu-
lar synthetic zeolite with the CHA structure (SSZ-62).
This CHA zeolite has a silica-to-alumina ratio ranging
from 20–50, as encompassed by the Patents’ claims.
Zones, col. 1 ll. 32–35, col. 2 ll. 30–38. Zones’ zeolite may
3 A third prior art reference, U.S. Patent Applica-
tion Publication No. US 2006/0039843 A1 (Patchett), was
used to address limitations relating to the emissions
treatment system found in some of the instituted claims.
BASF does not appeal any of the Board’s findings regard-
ing this reference. So, in this decision, we combine analy-
sis of the claims rendered obvious by Maeshima, Zones,
and Patchett with the analysis of the claims rendered
obvious by Maeshima and Zones alone.
6 BASF CORPORATION v. IANCU
“contain a metal or metal ions (such as . . . copper).” Id. at
col. 1 ll. 61–65.
Maeshima discloses the claimed copper-to-aluminum
ratio. Maeshima teaches zeolite catalysts that can be
used to reduce the concentration of nitrogen oxides in
exhaust gas, listing a CHA zeolite as one of nine such
catalysts. Maeshima, col. 1 ll. 8–10, col. 3 ll. 33–43, col. 4
ll. 3–35. Maeshima specifies that copper is an “especially
preferred” metal to add to its zeolites and that standard
copper loading rates should be employed, resulting in a
copper-to-aluminum ratio falling within the range of the
challenged claims. Id. at col. 4 ll. 51–54, col. 6 ll. 10–17.
The point of contention in this appeal is the prior art’s
disclosure of the last claimed limitation: ammonia SCR.
Zones discloses using a copper-based CHA zeolite for
the “reduction of oxides of nitrogen contained in a gas
stream in the presence of oxygen.” Zones, col. 1 ll. 55–56,
col. 8 ll. 16–17. Zones Inventor Dr. Stacey Zones stated
that this phrase “refers to and teaches a number of differ-
ent reactions, including . . . the selective catalytic reduc-
tion of NO in the presence of an ammonia reducing agent
and oxygen.” Appx3033. Umicore expert Dr. Lercher
testified to the same. Appx3389 (36:16–37:25). BASF
agreed in its Patent Owner’s Preliminary Response that
“reduction of oxides of nitrogen” in Zones “encompasses a
number of reactions,” including ammonia SCR, and again
agreed in oral argument before the Board that the ammo-
nia SCR reaction is “encompassed within that phrase.”
Appx541, n.5; Appx202 (46:6–23).
Maeshima explains that zeolite catalysts can be used
with either hydrocarbons or ammonia as the reducing
agent. Maeshima, col. 1 ll. 15–21, col. 2 ll. 4–8. Maeshi-
ma teaches that ammonia SCR is preferred because less
of the reducing agent can be used and “nitrogen oxides
can be removed at a high ratio.” Id. at col. 1 ll. 21–24.
BASF CORPORATION v. IANCU 7
In its final written decisions in these two IPRs involv-
ing the Zones and Maeshima combination, the Board
found that the “Patent Owner acknowledges that the
limitations in the claims were well-known in the art.”
Final Written Decision, IPR2015-01121, at 9. 4 The Board
further found that “[a]lthough Zones does not explicitly
list specific reactions for the reduction of oxides of nitro-
gen, such as the use of CHA zeolites for ammonia SCR,
the evidence of record suggests that a person of ordinary
skill in the art would have understood the reference to the
‘reduction of oxides of nitrogen’ [in Zones] to include
ammonia SCR of NOx.” Id. at 14. The Board also found
that Maeshima discloses “‘a selective reduction method in
which ammonia is used as the reducing [a]gent’” and
teaches “metal-exchanged zeolites that are active for the
NH3 SCR of NOx.’” Id. at 14–15. The Board thus con-
cluded that a skilled artisan would have been motivated
to combine the two references to arrive at the claimed
invention, based on evidence from “the prior art refer-
ences themselves [and] the knowledge of one of ordinary
skill in the art” and that the “combined teachings of Zones
and Maeshima disclose using a high SAR CHA zeolite for
ammonia SCR.” Id. at 16 (citations omitted). According-
ly, the Board found all instituted claims unpatentable as
obvious over Zones and Maeshima.
In IPR2015-01124 and IPR2015-01125, the Board
rendered obvious the same claims of both Patents based
on a combination of Maeshima and U.S. Patent No.
4,503,023 (Breck), with U.S. Patent Application Publica-
4 For simplicity, this opinion cites only to the Board
institution decision, final written decision, and the par-
ties’ briefing in IPR2015-01121 on the ’662 Patent. The
same issues and analysis apply to IPR2015-01123 on the
’203 Patent.
8 BASF CORPORATION v. IANCU
tion No. US 2006/0039843 A1 (Patchett) for certain de-
pendent claims. BASF also appeals those decisions here,
but we do not reach those issues because we agree with
the Board that the claims are unpatentable over Zones
and Maeshima.
DISCUSSION
A. Jurisdiction
This court has jurisdiction under 35 U.S.C. §§ 141,
319, and 28 U.S.C. § 1295(a)(4)(A). In SAS Institute, Inc.
v. Iancu, the Supreme Court held that it was statutorily
erroneous for the Board to limit the scope of inter partes
review proceedings by instituting an IPR for only some,
but not all, petitioned-for claims. 138 S. Ct. at 1352–54.
The SAS decision has implications in this case.
Of the four inter partes review final written decisions
on appeal in this case, the two involving the ’662 Patent
are the result of partial institutions: IPR2015-01121 and
IPR2015-01125. On April 27, 2018, this court issued a
letter to BASF and the Director asking the parties to be
prepared to address the impact of SAS on the disposition
of this appeal during oral argument. On May 3, 2018,
this court heard oral argument in this case. Both BASF
and the Director stated that this case should not be
affected by SAS. Oral Arg. 1:20–50, 7:55–8:01. Neither
party requested any relief based on SAS. Id. at 7:10–7:20,
7:55–8:01. On May 4, 2018, this court issued a second
letter directing BASF and the Director to file simultane-
ous supplemental briefs fully explaining the legal basis
for their positions. The order asked the parties to discuss
“(i) whether this court has jurisdiction over these appeals
under 28 U.S.C. § 1295(a)(4)(A); and (ii) whether the
Board’s final written decisions should be deemed ultra
vires in light of SAS and, if so, what the consequence of
such a conclusion would be for what this court may do in
these appeals, considering that no party has requested
BASF CORPORATION v. IANCU 9
relief based on SAS.” Order, Nos. 2017-1425, 2017-1426,
2017-1427, 2017-1428 (Fed. Cir. May 4, 2018).
In the supplemental briefing, the Director maintained
that this Court had jurisdiction and further argued that
BASF and Umicore had waived any right to SAS relief
because neither party raised it before the Board or in
initial briefing before this court. BASF in its briefing,
however, reversed its position from oral argument.
BASF now asks this court to vacate and remand the
two ’662 Patent IPR appeals on jurisdictional SAS
grounds. 5 Specifically, BASF argues that “the Board’s
decisions with respect to at least the 662 patent are
improper, i.e., ultra vires, as they are not final decisions
as required by § 318(a)” and as such, “appellate review by
this Court of those decisions pursuant to § 319 is no
longer available.” Appellant’s Supp. Br. at 8. Therefore,
BASF asks this Court to “dismiss the [’662 IPR appeals]
as moot” and “direct the Board to vacate those decisions
on remand” on the sole ground that “reviewable, final
written decisions by the Board do not exist” in the two
’662 IPR proceedings. Appellant’s Supp. Br. at 9, 11.
Importantly, BASF does not seek the Board’s evaluation
of the non-instituted claims.
We find BASF’s request substantively different from
parties’ requests in cases where this court has vacated a
Board decision and remanded on an SAS issue. In those
cases, at least one of the parties sought further work from
the Board on non-instituted claims/grounds. See, e.g.,
Adidas AG v. Nike, Inc., 2018 WL3213007 (Fed. Cir. July
5 Petitioner Umicore is no longer a party to the
case, so vacating and remanding would result in a pro-
ceeding before the Board with no petitioner. Oral Arg.
6:50–7:07.
10 BASF CORPORATION v. IANCU
2, 2018) (remanding where Adidas asked for “the Board to
issue final written decisions addressing ground 2”); Ulthe-
ra, Inc. v. DermaFocus LLC, No. 2018-1542, slip op. at 3
(Fed. Cir. May 25, 2018) (remanding where Ulthera asked
for “the Board to issue a final written decision with re-
spect to the patentability of claims 5 and 10 of the ’559
patent”). Here, BASF does not address the non-instituted
claims in the arguments section of its brief, nor explain
why it (as the Patent Owner) is harmed by a final Board
decision based on a partial institution, nor provide any
reasoning for vacating and remanding on all claims
versus remanding for consideration on just the non-
instituted claims. In short, BASF provides no substantive
reason to warrant remand. 6 It argues only jurisdictional
deficiency.
For this important reason, BASF’s request is con-
trolled by PGS Geophysical AS v. Iancu, where this court
6 Examples from other cases of such substantive
reasons include: (1) potential interaction between the
analysis of the instituted and non-instituted claims, thus
meriting having the Board address all of them together in
a single decision, and (2) inefficiency in doing a piecemeal
form of review, in which this court would review a first
batch of claims from a first Board decision, and then
review a second batch from a later Board decision, espe-
cially when no merits briefing had occurred and there
were implications of estoppel in parallel district proceed-
ings. See, e.g., Polaris Indus. Inc. v. Arctic Cat, Inc., 742
Fed. Appx. 948, 949–50 (Fed. Cir. 2018) (where this court
granted a patent owner’s remand request for the first
substantive reason); Baker Hughes Oilfield v. Smith Int’l,
Inc., Nos., 2018-1754, -1755, slip op. at 4–5 (Fed. Cir. May
30, 2018) (where this court granted a petitioner’s remand
request for the second substantive reason).
BASF CORPORATION v. IANCU 11
rejected the jurisdictional challenge and proceeded to
review the merits of the Board’s decision. This case—like
PGS Geophysical—is a straight challenge to this court’s
authority to hear the appeal. In PGS Geophysical, we
specifically held that “the combination of the non-
institution decisions and the final written decisions on the
instituted claims and grounds ‘terminated the IPR pro-
ceeding[s]’” such that those decisions were final and
reviewable for purposes of this court’s jurisdiction. 891
F.3d at 1361 (citing Arthrex, Inc. v. Smith & Nephew, Inc.,
880 F.3d 1345, 1348 (Fed. Cir. 2018)). The same reason-
ing applies here.
This court further held in PGS Geophysical that a
partial institution error is not one we are required to “act
on in the absence of an appropriate request for relief on
that basis.” Id. at 1362 (emphasis added). Such a request
should include a substantive claim of harmful error,
which is absent here. Id. (“Moreover, the Supreme Court
in SAS characterized the error at issue here as an error
under 5 U.S.C. § 706, but errors under that provision are
generally subject to a traditional harmless-error analysis,
with challengers of the agency action having the burden
of showing prejudice”) (citing Shinseki v. Sanders, 556
U.S. 396, 406, 409 (2009) and Suntec Indus. Co. v. United
States, 857 F.3d 1363, 1368 (Fed. Cir. 2017)). BASF has
not argued prejudice at all; it does not request to have the
Board address the non-instituted claims. Thus, we see no
reason to vacate and remand on the ’662 Patent IPR
appeals.
Instead, we apply the reasoning laid out in PGS Geo-
physical, reject BASF’s position that this court lacks
jurisdiction over the ’662 Patent IPR appeals, decline to
vacate and remand on SAS grounds, and continue to the
merits of the appeal in all four IPRs.
B. Obviousness
As explained above, the Board found all instituted
12 BASF CORPORATION v. IANCU
claims of the Patents unpatentable as obvious over the
combination of Zones and Maeshima.
Obviousness is a question of law based on underlying
facts. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
1373 (Fed. Cir. 2016). We review the Board’s legal deter-
mination of obviousness de novo and its underlying factu-
al findings for substantial evidence. Id. Substantial
evidence is “‘such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.’”
Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1360–61
(Fed. Cir. 2016) (citation omitted).
BASF challenges the Board’s Zones/Maeshima deci-
sions on two grounds: (1) the Board erroneously “fill[ed]
in” the ammonia SCR element of the invention on bases
different from what Umicore petitioned, and (2) the
Board’s finding that a skilled artisan would have under-
stood the Zones “reference to the ‘reduction of oxides of
nitrogen’ to include ammonia SCR of NOx” is not support-
ed by substantial evidence. 7 We reject both challenges.
1. BASF Had Sufficient Notice of the Board’s Basis for
Disclosure of the Ammonia SCR Limitation
As to the first ground, BASF argues that the “sole”
theory of obviousness (for this prior art combination)
7 The Director argues that BASF waived any argu-
ment as to the ammonia limitation. We do not agree.
BASF made the argument regarding the ammonia limita-
tion in its Patent Owner Response, under its lack of
motivation to combine Zones and Maeshima argument.
Appx826; see also Appx850–51. BASF also raised the
issue at oral argument in front of the Board. See
Appx201–03 (45:5–47:14). And the Board even credited
BASF with this argument in its Decision. Final Written
Decision, IPR2015-01121, at 12.
BASF CORPORATION v. IANCU 13
advanced in Umicore’s petitions was premised on Zones
explicitly teaching the use of ammonia SCR. Appellant’s
Br. at 33; Oral Arg. 17:33–56. While the Board found that
“Zones does not explicitly list specific reactions for the
reduction of oxides of nitrogen,” it also found that “a
person of ordinary skill in the art would have understood
the [Zones] reference to the ‘reduction of oxides of nitro-
gen’ to include ammonia SCR of NOx.” Final Written
Decision, IPR2015-01121, at 14 (citations omitted). BASF
argues that the Board’s finding that one of skill in the art
would generally understand the phrase “reduction of
oxides of nitrogen” to include ammonia SCR is a different
and new argument, compared to Umicore’s argument that
Zones specifically disclosed ammonia SCR. We find that
this argument lacks merit.
Umicore’s petition was not based solely on Zones
teaching the use of ammonia SCR. BASF even admitted
as much. Oral Arg. 18:28–57. For example, in its Peti-
tion, Umicore also relies on Maeshima to supply the
ammonia limitation, stating that “Maeshima relates . . .
‘contacting the . . . gaseous mixture with a catalyst in the
presence of ammonia to reduce the nitrogen oxides selec-
tively.’” Appx292 (quoting Maeshima, col. 2 ll. 4–8).
Umicore further articulated in its petition that the com-
bination of Zones and Maeshima would supply the ammo-
nia SCR limitation because “[a]s taught by Zones, the
Zones catalyst is useful for reducing oxides of nitrogen”
and Maeshima “expressly provides that its catalysts can
be used in an SCR process to selectively reduce nitrogen
oxides in a gas [ammonia] stream containing oxygen.”
Appx294. Umicore’s petition relies on Zones, Maeshima
14 BASF CORPORATION v. IANCU
and the combination of the two for disclosure of the am-
monia SCR limitation. 8
In its Institution Decision, the Board relied on
Maeshima for “disclos[ing] [a CHA zeolite] as a suitable
catalyst for the selective catalytic reduction of nitrogen
oxides in the presence of ammonia.” Appx742. But the
Board articulated an additional basis, one that it ended
up relying on in the final written decision as well: that
the reference in Zones to the “reduction of oxides of nitro-
gen” would be understood by a person of ordinary skill in
the art to encompass/include ammonia SCR. Appx741. In
support of this understanding, the Board cited to “the ’662
patent, Zones, Maeshima, and other prior art references”
which suggest that copper-based CHA zeolite catalysts
“were known to be used for SCR of nitrogen oxides in the
presence of ammonia.” Id. Under these circumstances,
we are satisfied that BASF was given proper notice and
opportunity to be heard in the proceedings below as to
possible grounds for why the prior art taught the ammo-
nia SCR limitation. See Genzyme Therapeutic Prods. Ltd.
P’ship. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366
(Fed. Cir. 2016); Securus Techs., Inc. v. Glob. Tel*Link
Corp., 685 F. App’x 979, 985 (Fed. Cir. 2017).
Moreover, not only did BASF have a full opportunity
to address these grounds in the Patent Owner Response,
8 BASF argues that relying on Maeshima requires
an obviousness theory where petitioner starts with
Maeshima and modifies it with the teaching in Zones.
Appellant’s Reply Br. 8, 18; Oral Arg. 19:02–19:40, 33:51–
34:04. We disagree because the ammonia SCR limitation
does not seem to be unique to low or high SAR zeolites.
Rather, the evidence in the record indicates that ammonia
SCR is a generally well-known reaction for the reduction
of oxides in nitrogen to one of skill in the art. See infra.
BASF CORPORATION v. IANCU 15
it also had the opportunity to address the issue at oral
argument before the Board, where both Umicore and the
Board reiterated their grounds for the ammonia SCR
limitation. Umicore brought up its petitioned Maeshima-
based argument, Appx256:6–7, and BASF admitted as
much. Appx198:3–11. Umicore also clearly stated that
while there was “no NH3 written in” Zones, “the reduction
of oxides of nitrogen” language in Zones would have been
understood by a one of skill in the art to include reduction
in the presence of ammonia. Appx254–56. The Board
specifically questioned BASF on this basis. Appx197:11–
24. In answering, BASF did not argue lack of notice or
opportunity to respond; instead, BASF reiterated the
point it made in its Preliminary Response that Zones does
not disclose ammonia SCR specifically, but that ammonia
SCR would be encompassed by the phrase. Appx202
(46:6–23); Appx541, n.5.
Given the bases articulated in Umicore’s petition, the
Board’s Institution Decision, and questions from the
Board as well as statements made by both parties at oral
argument in front of the Board, we find that BASF was
sufficiently on notice of the grounds on which the Board’s
final decision relied as to the ammonia SCR limitation.
There is no due process error here.
2. Substantial Evidence Supports the Board’s Finding
that a Skilled Artisan Would Understand Zones to Dis-
close Ammonia SCR
BASF’s next argument is that the Board erred in find-
ing that “the evidence of record suggests that a person of
ordinary skill in the art would have understood the [Zones
reference] to the ‘reduction of oxides of nitrogen’ to in-
clude ammonia SCR of NOx.” Final Written Decision,
IPR2015-01121, at 14.
In support of its finding, the Board cited to three
sources of evidence: (1) the Declaration of Zones inventor
Dr. Stacey Zones submitted during reexamination of the
16 BASF CORPORATION v. IANCU
’662 patent, where she states that the phrase “reduction
of oxides of nitrogen contained in a gas stream in the
presence of oxygen” in the Zones patent specification
“refers to and teaches a number of different reactions,
including . . . the selective catalytic reduction of NO in the
presence of an ammonia reducing agent and oxygen,”
Appx3033; (2) the cross examination testimony of Umi-
core’s expert, Dr. Lercher, where he gives examples of NO
reduction reactions, including ammonia reduction,
Appx3389 (36:16–37:25); and (3) BASF’s acknowledge-
ment at the Board oral hearing, where BASF states that
different reactions, including ammonia SCR, are “encom-
passed within th[e] phrase [reduction of oxides of nitro-
gen].” Appx202 (46:6–23).
There are also multiple other sources of evidence that
indicate ammonia SCR was well known to one of skill in
the art. Maeshima cites, and even promotes, ammonia
SCR. Maeshima, col. 1 ll. 21–24, col. 2 ll. 4–8. The ’662
and ’203 patent specifications state that “[b]oth synthetic
and natural zeolites and their use in promoting certain
reactions, including the selective reduction of nitrogen
oxides with ammonia in the presence of oxygen, are well
known in the art.” ’662 Patent col. 1 ll. 26–29; ’203 Patent
col. 1 ll. 30–34. And BASF itself acknowledged that
“reduction of oxides of nitrogen” in Zones encompasses
ammonia SCR. Appx5541, n.5 (Patent Owner Prelimi-
nary Response); Oral Arg. 24:10–16.
BASF argues that there is a meaningful difference be-
tween the phrase “reduction of oxides in nitrogen” that
encompasses ammonia SCR versus a specific disclosure of
ammonia SCR. We do not agree. Multiple experts, both
parties, other prior art, and the Patents’ specifications
themselves are evidence that one of skill in the art would
have understood the phrase as disclosing a limited num-
ber of reaction types, including ammonia SCR. We find
that substantial evidence supports the Board’s finding
that one of skill in the art would have understood the
BASF CORPORATION v. IANCU 17
phrase “reduction of oxides in nitrogen” in Zones to in-
clude and disclose ammonia SCR as claimed by the Pa-
tents.
In conclusion, we reject both grounds of appeal raised
by BASF against the Board’s finding of obviousness under
the Zones/Maeshima combination. Because the combina-
tion renders obvious all instituted and appealed claims,
we do not address BASF’s other grounds of appeal and
affirm.
AFFIRMED