Trials@uspto.gov
`571-272-7822
`
`
` Paper 13
`
`Entered: October 17, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`BASF CORPORATION,
`Petitioner,
`
`v.
`
`INGEVITY SOUTH CAROLINA, LLC,
`Patent Owner.
`
`____________
`
`Case IPR2019-00202
`Patent RE38,844 E
`____________
`
`
`
`
`Before DONNA M. PRAISS, CHRISTOPHER L. CRUMBLEY, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing of Institution Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
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`I. INTRODUCTION
`Petitioner BASF Corporation filed a Request for Rehearing (Paper 11,
`“Req. Reh’g”) of our May 13, 2019 Decision Denying Institution of Inter
`Partes Review (Paper 10, “Dec.”). In its Petition, BASF challenged claims
`1–8, 11, 12, 14–16, 18–21, 24, 25, 27–29, 31–33, 36, 37, 39–41, 43–45, 48,
`49, and 51–53 of U.S. Patent No. RE38,844 E (Ex. 1001, “the ’844 patent”)
`on three grounds of unpatentability alleging obviousness over combinations
`of prior art including the Park1 reference. Paper 2 (“Pet.”). Our Decision
`reviewed BASF’s contentions regarding the references, found that BASF
`had presented insufficient evidence that the combinations of prior art would
`necessarily result in a method or system that met all limitations of the
`challenged claims, and as a result determined that BASF had not established
`a reasonable likelihood that at least 1 challenged claim was unpatentable.
`Dec. 16–22.
`Because institution of an inter partes review trial is discretionary,
`when rehearing a decision on a petition to institute trial the Board “will
`review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “An
`abuse of discretion occurs where the decision is based on an erroneous
`interpretation of the law, on factual findings that are not supported by
`substantial evidence, or represents an unreasonable judgment in weighing
`relevant factors.” Lacavera v. Dudas, 441 F.3d 1380, 1383 (Fed. Cir. 2006)
`(quoting Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir.
`2005)). The party requesting rehearing has the burden of showing the
`decision should be modified, and “[t]he request must specifically identify all
`
`
`1 U.S. Patent No. 5,914,294 to Park et al., issued June 22, 1999 (Ex. 1010).
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`matters the party believes the Board misapprehended or overlooked, and the
`place where each matter was previously addressed in a motion, an
`opposition, or a reply.” 37 C.F.R. § 42.71(d).
`
`II. DISCUSSION
`Each challenged claim of the ’844 patent requires the presence of a
`“subsequent adsorbent volume having an incremental adsorption capacity of
`less than 35 g n-butane/L between vapor concentrations of 5 vol % and
`50 vol % n-butane.” Ex. 1001, 10:36–14:64. In its Petition, BASF argued
`that, if a person of ordinary skill in the art were to create a system by
`combining the filter of Park with the systems described in the various
`primary references, the resulting system would have a subsequent adsorbent
`volume that inherently meets this incremental adsorption capacity (IAC)
`limitation. See, e.g., Pet. 22–26 (Meiller/Park combination). The details of
`BASF’s arguments for unpatentability were summarized in our Decision;
`here, we focus on three primary factual contentions that are central to the
`Request for Rehearing.
`First, BASF argued that, when deciding which filter to use in the
`subsequent adsorbent volume, the skilled artisan would have selected Park’s
`Formulation D because of its high axial crushing strength, which Park
`reports is desirable in automotive air intake applications. Id. at 33. Second,
`BASF contended that the resulting subsequent adsorbent volume would be a
`honeycomb carbon having the 73.8% voidages disclosed in Park as
`“desirabl[e].” Id. at 36. Finally, according to BASF, a filter formed from
`Park’s Formulation D, and having 73.8% voidages, “would have an IAC of
`less than 35 g/L even if it was created exclusively with the activated carbon
`of the highest possible IAC known at the time of the ’844 patent.” Ex. 1003
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`¶ 111. As we stated in the Decision, this reference to “the activated carbon
`of the highest possible IAC known at the time of the ’844 patent” is a
`reference to BAX 1500 carbon, the highest-IAC carbon disclosed in the ’844
`patent.
`In our Decision, we reviewed BASF’s arguments and submitted
`evidence, and concluded that the record lacked sufficient support for these
`three links in BASF’s logical chain. First, we found that BASF had not
`provided evidence “why a person of skill in the art would have been led by
`Park’s strength requirement for an air intake system to select Formulation
`D” for the evaporative emissions systems that are the focus of the ’844
`patent. Dec. 17–18. Second, we found no reason to conclude that, even if a
`person of ordinary skill in the art would have selected Park’s Formulation D
`to use in an evaporative emissions system, the resulting honeycomb would
`have the 73.8% voidages that Park considers desirable. Id. at 18–19.
`Finally, we found unsupported Mr. Lyons’ testimony that BAX 1500 carbon
`was the highest-capacity carbon known in the art at the time of the
`invention. Id. at 19–20. Each of these independent findings was sufficient
`to lead us to conclude that BASF had not shown that a system resulting from
`the use of Park’s honeycomb filter in an evaporative emissions system
`would necessarily have an IAC below 35 g/L, as required by the claims. Id.
`at 20–21. As such, we found that BASF had not established a reasonable
`likelihood that any claim of the ’844 patent was unpatentable.
`BASF challenges each of these three findings in its Request for
`Rehearing, arguing that they were an abuse of discretion because each was
`“based on matters that the Board misapprehended, overlooked, or on
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`erroneous factual findings not supported by substantial evidence.” Req.
`Reh’g 1. We take each in turn below.
`Regarding the question of whether a person of ordinary skill in the art
`would have selected Park’s Formulation D when creating a filter for use as a
`subsequent adsorption volume, BASF contends that we misapprehended its
`evidence supporting such a selection. Id. at 9–12. BASF notes its argument
`was that a person of ordinary skill in the art would have selected
`Formulation D “because it is the only formulation that meets Park’s explicit
`requirements for the air intake application: a carbon content of 25–35% by
`weight and an axial crushing strength from 1200–1600 psi.” Id. at 10 (citing
`Pet. 33–34). But BASF’s argument misses the point of our conclusion in the
`Decision, which was that the record contained no evidence that the
`requirements of an air intake application, as discussed by Park, were the
`same as the requirements of the evaporative emissions application that is the
`focus of the ’844 patent and the primary prior art references in each
`combination. In other words, while a person of ordinary skill in the art
`might have been led to Formulation D if trying to create a filter for an air
`intake system, the record contains no persuasive evidence that the same is
`true of the artisan creating an evaporative emissions system. Indeed, as we
`noted in the Decision, the only evidence on this point is to the contrary, and
`comes from Ingevity’s expert witness Dr. Ritter. As we noted, “Dr. Ritter
`testifies that evaporative emission systems and air intake systems are
`designed for use with different vapor concentrations and, more importantly,
`different flow rates.” Dec. 17 (citing Ex. 2001 ¶¶ 43–44).
`According to BASF, our reliance in the Decision on Dr. Ritter’s
`testimony was in error, because when deciding whether to institute an inter
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`partes review trial we are required to view disputed issues of material fact in
`the light most favorable to the Petitioner. Req. Reh’g 12 (citing 37 C.F.R.
`§ 42.108(c)). But this Rule only applies to disputed issues of material fact,
`and does not simply require us to accept every bare assertion made in a
`Petition. Here, BASF identifies no evidence it presented that would put into
`dispute Dr. Ritter’s testimony about the different requirements for air intake
`systems and evaporative emissions systems. BASF only cites to a statement
`in its Petition that Park’s disclosure of removing volatile organic compounds
`from air intake systems “is similar to . . . adsorbing fuel vapors from bleed
`emissions during a ‘diurnal cycle’ where the engine is turned off.” Id. at
`11 (citing Pet. 29). 2 Attorney argument presented in a petition, however, is
`no substitute for evidence. While not cited in the Request for Rehearing, the
`closest Mr. Lyons comes to testifying on this point is his statement that
`Park’s air intake system “is an application similar to Meiller’s and Abe’s
`honeycombs, which adsorbs fuel vapors leaking from a conventional
`canister due to bleed emissions given the high concentration gradient that
`would exist between liquid fuel in the engine intake system and the ambient
`air outside the intake system.” Ex. 1003 ¶ 77. Mr. Lyons did not specify
`what relevance this similarity has to the requirements for air intake or
`
`
`2 BASF’s Request also cites to the testimony of Dr. Ritter on this issue.
`Req. Reh’g 11 (citing Ex. 2001 ¶ 44). As Dr. Ritter’s testimony was
`presented subsequent to BASF’s Petition, BASF could not have relied on
`this evidence or presented argument based on it. The Board cannot have
`overlooked or misapprehended an argument that was not made.
`Nevertheless, we have reviewed Dr. Ritter’s testimony, which pertains to the
`differences in vapor flow rates encountered by air intake filters and fuel
`vapor canisters, and determine that it supports the existence of differences
`between the two, as opposed to similarities as BASF contends.
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`evaporative emissions systems, and cannot suffice to put into dispute Dr.
`Ritter’s testimony or support the conclusion that a person of ordinary skill in
`the art would necessarily have selected, from among the various
`formulations of Park, only the formulations specified for use in air intake
`systems. We are not convinced that we overlooked or misapprehended any
`argument by BASF, or abused our discretion in not instituting trial on this
`basis.
`
`As stated above, each of the three issues BASF disputes in its Request
`was sufficient to support our determination of no reasonable likelihood in
`our Decision. As such, our conclusion on BASF’s first point is reason to
`deny the entirety of its Request for Rehearing. Nevertheless, we also briefly
`address the other two points raised in the Request.
`With regard to the 73.8% voidages desired in the honeycomb of Park,
`we concluded in our Decision that even if a person of skill in the art utilized
`Park’s Formulation D, there was insufficient evidence given to support that
`this degree of voidages was achievable with that formulation. Dec. 18–19.
`We stated that Park “does not give us any reason to conclude that voidages
`percentage is a property of the honeycomb that may be tuned to whatever
`value is desired.” Id. In its Request for Rehearing, BASF contends that we
`“overlooked BASF’s substantial evidence that the percentage of voids in a
`honeycomb is adjustable and thus tunable simply by varying the physical
`structure of the honeycomb cells produced by the extrusion process.” Req.
`Reh’g 2 (citing Pet. 37). BASF cites Dr. Ritter’s testimony that the voidage
`percentage can be “fixed,” which will then affect the values that other
`properties such as cell density and cell wall thickness can take. Id. at 4
`(citing Ex. 2001 ¶ 30). BASF concludes that the parties agree that voidage
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`percentage can thus be “fixed” by adjusting the values of these other
`properties. Id.
`Again, BASF’s argument slightly misses the point of our discussion in
`the Decision. Our conclusion was not that voidage percentage is not a
`tunable property of a filter, but rather that there was insufficient evidence
`that a filter could be created from Park’s Formulation D that has 73.8%
`voidages, while still retaining the fundamental properties that allegedly
`would lead a person of ordinary skill in the art to select Formulation D in the
`first place. In other words, as BASF recognizes, voidage percentage is
`“tunable” only by adjusting other properties of the honeycomb such as cell
`density or cell wall thickness. Id. at 4. We find insufficient support in the
`record to conclude that adjusting the cell density or wall thickness in such a
`manner is compatible with maintaining the axial crushing strength or carbon
`content specified for Formulation D. And it is these properties that BASF
`cites as the basis for selecting Formulation D from among the many
`exemplary formulations provided in Park. See Pet. 33 (person of ordinary
`skill in the art “would have been motivated to use Park to create a
`honeycomb monolith for Meiller’s scrubber using a mixture containing 25–
`35% carbon content by weight and having an axial crushing strength of
`1200–1600 psi.”).
`Finally, BASF argues that our Decision overlooked its “primary
`inherency argument,” which is a comparison between the filter described in
`the ’844 patent and the one that would result from using Park’s disclosures.
`Req. Reh’g 13. BASF observes that Park uses conventional carbons, and
`particularly discloses using publicly available carbon from Westvaco
`Corporation. Id. BASF contends that we overlooked its argument that using
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`either BAX 1100 or BAX 1500—two high-capacity carbons disclosed in the
`’844 patent and available from Westvaco Corporation—would result in an
`inherent IAC under 35 g/L when used in Park’s Formulation D with
`voidages of 73.8%. Id.
`We did not overlook this argument; we concluded that it is
`insufficient to support a reasonable likelihood of inherency on this record.
`To justify a conclusion of inherency in an obviousness inquiry, “the
`limitation at issue necessarily must be present, or the natural result of the
`combination of elements explicitly disclosed by the prior art.” Par Pharm.,
`Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014). In other
`words, even were we to accept BASF’s contentions that a person of ordinary
`skill would have formed a filter using Park’s Formulation D and having
`73.8% voidages, we would also have to conclude that the artisan would have
`had reason to select a carbon that necessarily would result in an IAC below
`35 g/L. And, as we stated in our Decision, the reason for selecting a
`particular carbon cannot be based on the very IAC property that is allegedly
`inherent. Dec. 14 (“properties that are inherent—and, therefore, possibly
`unknown—cannot be used as the basis for this motivation unless they were
`expected.”) (citing Honeywell Int’l v. Mexichem Amanco Holding, 865 F.3d
`1348 (Fed. Cir. 2017)). BASF’s Petition discussed two available carbons,
`BAX 1100 and BAX 1500, because they were referenced in the specification
`of the ’844 patent. Pet. 23. But there is insufficient evidence in the record
`why these were the two carbons that a person of ordinary skill in the art
`would have found it obvious to select from among the carbons that were
`available at the time of the invention, and the record is silent as to whether
`other carbons, if selected, would have necessarily resulted in the same IAC
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`or lower. As we observed in our Decision, all that BASF presented on this
`point was the unsupported testimony of its expert that BAX 1500 had “the
`highest possible IAC known at the time of the ’844 patent.” Dec. 19–20
`(citing Ex. 1003 ¶ 111).
`Again, BASF cites our rules, contending that we erred by not viewing
`a disputed issue of material fact in the light most favorable to it. Req. Reh’g
`14. In particular, BASF notes our statement in the Decision acknowledging
`that “BAX 1500 certainly has the highest IAC of any carbon disclosed in the
`’844 patent,” and argues that this alone is “evidence in the record that
`BAX-1500 was the highest-capacity carbon available at the time.” Id.
`(citing Dec. 20). But the disclosure of two particular carbons in the record
`says nothing about the existence—or lack thereof—of other carbons. In
`other words, as we stated in the Decision, “on this record we cannot
`extrapolate beyond [the] disclosure to all activated carbons known at the
`time of the invention.” Dec. 20. The issue is not one of viewing a disputed
`issue of fact in the light most favorable in BASF; rather, it is an issue of
`BASF asking us to conclude from the disclosure of two carbons in the ’844
`patent that these are the carbons that a person of ordinary skill in the art,
`upon reading Park, would have selected. The record is insufficient to reach
`such a conclusion, and we did not err in deciding so.
`
`IV. CONCLUSION
`We have considered the three issues raised in BASF’s Request for
`Rehearing, and have not concluded that we abused our discretion in deciding
`not to institute an inter partes review trial based on BASF’s Petition and
`supporting evidence. Contrary to BASF’s contentions, we did not
`misapprehend or overlook any argument or evidence presented in the
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`Petition, nor have we erred in the application of any law or rule. For these
`reasons, we deny rehearing of the Decision Denying Institution.
`
`V. ORDER
`Accordingly, it is ORDERED that BASF’s Request for Rehearing is
`denied.
`
`
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`For PETITIONER:
`
`Lori A. Gordon
`Steven W. Peters
`James P. Brogan
`KING & SPALDING LLP
`lgordon@kslaw.com
`speters@kslaw.com
`jbrogan@kslaw.com
`
`
`
`For PATENT OWNER:
`
`Brian M. Buroker
`Spencer Ririe
`GIBSON, DUNN & CRUTCHER LLP
`bburoker@gibsondunn.com
`sririe@gibsondunn.com
`
`
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