`571-272-7822
`
`
` Paper No. 10
`
`Entered: October 17, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`MAHLE FILTER SYSTEMS NORTH AMERICA, INC.,
`Petitioner,
`
`v.
`
`INGEVITY SOUTH CAROLINA, LLC,
`Patent Owner.
`
`____________
`
`Case IPR2019-00960
`Patent RE38,844 E
`____________
`
`
`
`
`Before DONNA M. PRAISS, CHRISTOPHER L. CRUMBLEY, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`and Denying Motion for Joinder
`35 U.S.C. §§ 314(a), 315(c)
`
`
`
`
`
`
`IPR2019-00960
`Patent RE38,844 E
`
`
`Mahle Filter Systems North America, Inc. filed a Petition requesting
`an inter partes review of 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”). Paper 1. Mahle also filed a
`Motion for Joinder seeking to join this proceeding with an inter partes
`review filed by BASF Corporation challenging the ’844 patent, case number
`IPR2019-00202 (“the 202 IPR”). Paper 3. Ingevity South Carolina, LLC,
`identified as a real party in interest to the ’844 patent (Paper 5, 1)1, filed a
`Preliminary Response to the Petition. Paper 8. Ingevity also filed an
`Opposition to the Motion for Joinder. Paper 7.
`According to Mahle, the Petition in this case is “intentionally
`identical” to the Petition filed by BASF in the 202 IPR, and both seek to
`challenge the same claims of the ’844 patent on the same grounds. Paper 3,
`1. Both Petitions are supported by the same evidence, including the
`testimony of the same expert. Id. Mahle presents no reason why our
`decision whether to institute trial in the 202 IPR should not be controlling in
`this proceeding.
`On May 13, 2019, we determined that the Petition in the 202 IPR had
`not demonstrated a reasonable likelihood that at least 1 claim of the ’844
`patent is unpatentable, and thus denied institution of an inter partes review
`trial. See IPR2019-00202, Paper 10. BASF requested rehearing of that
`Decision (IPR 2019-00202, Paper 11), and in a Decision entered today we
`deny rehearing. IPR2019-00202, Paper 13. For the same reasons stated in
`
`
`1 Ingevity’s Mandatory Notices also list Ingevity Corporation as a real party
`in interest, but only Ingevity South Carolina, LLC is named as a party in this
`proceeding. Paper 5, 1.
`
`2
`
`
`
`IPR2019-00960
`Patent RE38,844 E
`
`our Decision Denying Institution and Decision Denying Rehearing, we
`conclude that the record in this proceeding, which is identical to that found
`in the 202 IPR, is insufficient to establish a reasonable likelihood that at
`least 1 claim of the ’844 patent is unpatentable. Pursuant to 35 U.S.C.
`§ 314(a), an inter partes review may not be instituted unless the information
`presented in the Petition and Preliminary Response shows “there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” Thus, we decline to institute an
`inter partes review.
`Under 35 U.S.C. § 315(c), if an inter partes review has been
`instituted, the Director may join as a party to that inter partes review any
`person who files a petition that the Director2 “determines warrants the
`institution of an inter partes review.” At least two preconditions of this
`provision have not been met: first, we did not institute an inter partes
`review in the 202 IPR, and second, we do not determine that the Petition in
`this proceeding warrants institution. The Motion for Joinder is, therefore,
`denied.
`
`ORDER
`
`For the reasons given, it is:
`ORDERED that the Petition is denied as to all challenged claims, and
`no trial is instituted; and
`FURTHER ORDERED that the Motion for Joinder is denied.
`
`
`
`2 The responsibility for determining whether to institute an inter partes
`review has been delegated to the Board. See 37 C.F.R. § 42.4(a) (“The
`Board institutes the trial on behalf of the Director.”).
`3
`
`
`
`IPR2019-00960
`Patent RE38,844 E
`
`For PETITIONER:
`
`Randall Peck
`WARNER NORCROSS + JUDD LLP
`rpeck@wnj.com
`
`Jeanne Gills
`FOLEY & LARDNER LLP
`jmgills@foley.com
`
`For PATENT OWNER:
`
`Brian Buroker
`Spencer Ririe
`GIBSON DUNN & CRUTCHER LLP
`bburoker@gibsondunn.com
`sririe@gibsondunn.com
`
`
`
`4
`
`