PGR2020-00037
`U.S. Patent No. 10,323,553
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`BASF CORPORATION
`Petitioner
`
`v.
`
`INGEVITY SOUTH CAROLINA, LLC
`Patent Owner
`_________________________
`
`Case No. PGR2020-00037
`Patent 10,323,553
`_________________________
`
`
`
`
`
`
`
`
`
`JOINT MOTION TO SEAL THE BOARD’S FINAL WRITTEN DECISION
`ON REMAND OF JANUARY 26, 2024 AND TO INSTEAD PUBLISH
`REDACTED VERSION (EXHIBIT 2086)
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`U.S. Patent No. 10,323,553
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`BASF CORPORATION
`Petitioner
`
`v.
`
`INGEVITY SOUTH CAROLINA, LLC
`Patent Owner
`_________________________
`
`Case No. PGR2020-00037
`Patent 10,323,553
`_________________________
`
`
`
`
`
`
`
`
`
`JOINT MOTION TO SEAL THE BOARD’S FINAL WRITTEN DECISION
`ON REMAND OF JANUARY 26, 2024 AND TO INSTEAD PUBLISH
`REDACTED VERSION (EXHIBIT 2086)
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`Exhibit Number
`2001
`2002
`
`2003
`
`2004
`
`2005
`2006
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`2014
`
`PGR2020-00037
`U.S. Patent No. 10,323,553
`
`Exhibit List
`
`Description
`
`Reserved
`J.W. McBain & A.M. Bakr, “A New Sorption Balance,”
`Journal of the American Chemical Society, Vol. 48
`(1926)
`J.U. Keller & E. Robens, “A Note On Sorption
`Measuring Instruments,” Journal of Thermal Analysis
`and Calorimetry, Vol. 71 (2003)
`ASAP 2020 – Accelerated Surface Area and
`Porosimetry System (Micromeritics)
`ASAP2020 Technique Overview (Micromeritics)
`Reserved
`A. Anson, et al., “Hydrogen adsorption on a single-
`walled carbon nanotube material: a comparative study
`of three different adsorption techniques,”
`Nanotechnology, Vol. 15 (2004) 1503-1508
`P. Webb & C. Orr, Analytical Methods in Fine Particle
`Technology (1997)
`BASF Corp. v. Ingevity South Carolina, LLC, IPR2019-
`00202, Paper 10 (May 13, 2019) (Decision Denying
`Institution of Inter Partes Review)
`BASF Corp. v. Ingevity South Carolina, LLC, IPR2019-
`00202, Paper 13 (Oct. 17, 2019) (Decision Denying
`Request of Rehearing of Institution Decision)
`Email from counsel for BASF on July 15, 2020 to the
`Board.
`Order Regarding Confidentiality Designations, Ingevity
`Corp. v. BASF Corp., C.A. No. 1:18-cv-01391-RGA,
`D.I. 221 (Jan. 21, 2020).
`[Proposed] Stipulated Protective Order
`Markup Comparison Showing Differences Between the
`[Proposed] Stipulated Protective Order and the Default
`Protective Order
`
`
`
`
`
`Petition for Inter Partes Review of US Patent No. 6,003,135
`
`
`Exhibit Number
`2015
`
`2016
`
`2017
`2018
`2019
`2020
`2021
`2022
`
`2023
`2024
`
`2025
`
`2026
`
`2027
`2028
`
`2029
`
`2030
`2031
`2032
`2033
`2034
`2035
`2036
`2037
`
`
`
`Description
`Mercer Instruments – IGA Gravimetric Analysers for
`Sorption Analysis
`Micromeritics Poster: Volumetric Gas Adsorption
`Apparatus for the Measurement of Physical Adsorption
`and Desorption Isotherms
`U.S. Patent No. 7,186,291 to Thomas Wolf
`U.S. Patent No. 8,864,877 to Nishita et al.
`U.S. Patent No. 9,322,368 to Arase et al.
`U.S. Patent Appl. Pub. No. 2020/0018265 to Chen et al.
`Annotations to Ex. B of Zielinski Declaration
`Declaration of Dr. David A. Rockstraw, Ph.D., P.E.
`(Under Seal – Protective Order Material)
`CV of Dr. David A. Rockstraw, Ph.D., P.E.
`Transcript of Deposition of Dr. Laif R. Alden on
`December 17, 2020 in PGR2020-00037 (Under Seal –
`Protective Order Material)
`Transcript of Deposition of Mr. James M. Lyons on
`January 7, 2021 in PGR2020-00037
`Transcript of Deposition of Dr. John M. Zielinkski on
`January 8, 2021 in PGR2020-00037
`Declaration of Roger Williams
`A Brief History of US Fuel Efficiency Standards, Union
`of Concerned Scientists (Dec. 6, 2017),
`https://www.ucsusa.org/resources/brief-history-us-fuel-
`efficiency (exhibit printed Jan. 12, 2021)
`Envtl. Prot. Agency, The 2020 EPA Automotive Trends
`Report, at 36-37 (2020), available at
`https://www.epa.gov/sites/production/files/2021-
`01/documents/420r21003.pdf (exhibit printed Jan. 11,
`2021)
`U.S. Patent No. 6,681,789
`U.S. Patent No. 7,448,367
`U.S. Patent No. 8,447,494
`U.S. Patent No. 8,630,786
`U.S. Patent No. 8,074,627
`U.S. Patent No. 8,397,552
`U.S. Patent No. 8,215,291
`U.S. Patent No. 9,376,991
`ii
`
`
`
`
`
`Petition for Inter Partes Review of US Patent No. 6,003,135
`
`
`Exhibit Number
`2038
`2039
`2040
`2041
`2042
`2043
`2044
`2045
`2046
`2047
`2048
`2049
`2050
`2051
`2052
`2053
`2054
`2055
`2056
`
`2057
`
`2058
`
`2059
`
`2060
`
`2061
`2062
`2063
`2064
`2065
`2066
`2067
`
`Description
`U.S. Patent No. 9,322,342
`U.S. Patent No. 9,217,397
`U.S. Patent No. 9,857,266
`U.S. Patent Appl. Pub. No. 2014/0123961
`U.S. Patent No. 9,228,541
`U.S. Publication No. 2014/0318514
`U.S. Patent No. 9,279,397
`U.S. Publication No. 2009/0007890
`U.S. Publication No. 2009/0288645
`U.S. Patent No. 9,546,620
`U.S. Publication 2009/0084363
`U.S. Patent No. 8,495,988
`U.S. Patent No. 9,518,539
`U.S. Patent No. 10,337,462
`U.S. Patent No. 9,657,691
`Int’l Publication No. WO2011/020627
`U.S. Publication No. 2013/0037007
`U.S. Publication No. 2016/0053725
`Redacted and Excerpted Transcript of Lyons Deposition
`on 10/30/2018 in D. Del. 18-1391
`BASF letter to EPO Opposition Division concerning EP
`2,906,811 dated Jan. 13, 2020
`EPO Opposition Division Interlocutory Decision
`concerning EP 2,906,811 dated Apr. 15, 2020
`Redacted and Excerpted Transcript of Guo Deposition
`on 1/9/2020 in D. Del. 18-1391
`Redacted and Excerpted Transcript of Lyons Deposition
`on 5/28/2020 in D. Del. 18-1391
`U.S. Patent No. 7,114,492
`U.S. Publication No. 2011/0168025
`U.S. Patent No. 7,600,506
`U.S. Patent No. 9,228,541
`U.S. Patent No. 9,279,397
`U.S. Patent No. 9,546,620
`S. Kiefer & E. Robens, “Some Intriguing Items in the
`History of Volumetric and Gravimetric Adsorption
`Measurements,” Journal of Thermal Analysis and
`Calorimetry, Vol. 94 (2008)
`iii
`
`
`
`
`
`
`
`Petition for Inter Partes Review of US Patent No. 6,003,135
`
`
`Exhibit Number
`2068
`
`2069
`
` 2070
`
`2071
`
`2072
`2073
`2074
`2075
`
`2076
`2077
`
`2078
`2079
`
`2080
`
`2081
`
`2082
`
`2083
`
`2084
`
`Description
`I. Langmuir, “The Adsorption of Gases on Plane
`Surfaces of Glass, Mica, and Platinum” (1918)
`J. Zielinski, et al., “High pressure sorption isotherms via
`differential pressure measurements,” Adsorption, Vol.
`13 (2007) 1-7
`D. Del. 18-1391 [302] BASF REDACTED Opening
`MSJ Daubert Brief
`Redacted and Excerpted Reply Expert Report of James
`M. Lyons Regarding the Invalidity and Unenforceability
`of U.S. Patent No. RE38,844 dated April 17, 2020 in D.
`Del. 18-1391
`Reserved
`Reserved
`Reserved
`Redacted and Excerpted Rebuttal Expert Report of
`James M. Lyons Regarding U.S. Patent No. RE38,844
`dated Mar. 20, 2020 in D. Del. 18-1391
`BASF Opposition to EP 2,906,811 dated Nov. 6, 2018
`Certified Translation of Chinese Oral Hearing Record
`Case No. 4w108843 dated Sept. 20, 2019
`Mysteries of the Air/Fuel Ratio (AFR) Explained
`NIST Facility for Adsorbent Characterization and
`Testing (FACT)
`Data Supporting Declaration of Roger Williams (Under
`Seal – Protective Order Material)
`Redacted and Excerpted Expert Report of James M.
`Lyons Regarding the Invalidity and Unenforceability of
`U.S. Patent No. RE38,844 dated Feb. 14, 2020 in D.
`Del. 18-1391
`Redacted and Excerpted Expert Report of Dr. David A.
`Rockstraw Regarding Validity of U.S. Patent No.
`RE38,844
`Transcript of Deposition of Mr. James M. Lyons on
`May 19, 2021 in PGR2020-00037
`Corrected Patent Owner’s Demonstratives Exhibits
`
`
`
`iv
`
`
`
`
`
`Petition for Inter Partes Review of US Patent No. 6,003,135
`
`
`Exhibit Number
`2085
`
`2086
`
`Description
`Redacted Version of Exhibit 1041 under seal, Guo,
`Comparison on Butane Capacity Testing with McBain
`and Micromeritics ASAP 2020, Ingevity Technical
`Memorandum (2014)
`Proposed Redacted Final Written Decision on Remand
`from January 26, 2024
`
`
`
`v
`
`
`
`
`
`
`
`PGR2020-00037
`U.S. Patent No. 10,323,553
`
`I.
`
`Statement of Precise Relief Requested Under §42.22(a)(1)
`The parties jointly move to seal the Final Written Decision On Remand issued
`
`on January 26, 2024. A proposed Redacted Version of the Final Written Decision
`
`on Remand is submitted as Exhibit 2086. The parties jointly agree that the Redacted
`
`Version (Exhibit 2086) does not contain any Confidential Information of either party
`
`and therefore, move to publish that to the public.
`
`II.
`
`Statement of Reasons for Relief Requested Under §42.22(a)(2)
`A.
`Procedural Background
`Petitioner filed the above-captioned PGR on March 3, 2020. At that time,
`
`Petitioner and Patent Owner were involved in district court patent litigation related
`
`to a different patent owned by Petitioner. As part of that litigation, Petitioner became
`
`aware of an internal Ingevity document authored by an employee of Ingevity
`
`(referred to as the Guo Memo) and produced during that litigation with the Bates
`
`Number starting with NGVT0264661. BASF requested leave to introduce the Guo
`
`Memo as evidence in support of its Petition in this PGR. Ingevity agreed to produce
`
`the Guo Memo for use by BASF in this PGR on the condition that a Protective Order
`
`would be entered and that the Protective Order agreed to seal the Guo Memo.
`
`Petitioner agreed and therefore, the entered Protective Order in this Proceeding
`
`states: The parties agree that Patent Owner may designate the document that
`
`corresponds to NGVT0264661 as PROTECTIVE ORDER MATERIAL in this PGR
`
`
`
`1
`
`
`
`PGR2020-00037
`U.S. Patent No. 10,323,553
`
`and that Petitioner will not challenge that document’s designation as PROTECTIVE
`
`ORDER MATERIAL in this PGR. Ex. 2013 at 1 (granted by a Paper No. 12 on July
`
`29, 2020).
`
`On July 21, 2020, Ingevity filed an Unopposed Motion to Seal and Motion for
`
`Entry of a Protective Order, which included a request to seal the Guo Memo (Paper
`
`8). On July 22, 2020, an Order granting Ingevity’s motion to seal the Guo Memo
`
`was entered (Paper 10) in which the Board found:
`
`we determine that Patent Owner has demonstrated good
`cause for filing the Guo Memo under seal, and we
`therefore authorize the Guo Memo to be filed under seal
`following entry of a protective order.
`
`
`
`Paper No. 10 also ordered changes to the proposed Protective Order and therefore,
`
`ordered that the parties move for entry of a revised Protective order. On July 28,
`
`2020, a revised motion for Protective Order was filed and attached Exhibit 2013 as
`
`the proposed Protective Order to be entered and on July 29, 2020 that Protective
`
`Order was entered by Paper No. 12.
`
`Subsequently, the Guo Memo was filed by Patent Owner as Exhibit 1041 on
`
`July 31, 2020 as Protective Order Material under the Protective Order (and thus filed
`
`under seal). Later, a redacted version of the Guo Memo was filed as Exhibit 2085
`
`on October 7, 2021.
`
`A Final Written Decision was entered on September 9, 2021 (Paper 75).
`2
`
`
`
`
`
`PGR2020-00037
`U.S. Patent No. 10,323,553
`
`B.
`
`Sealing of the Final Written Decision on Remand and Publication
`of Proposed Redacted Version (Exhibit 2086)
`As laid out above, the Board has already found good cause to seal the Guo
`
`Memo. The Final Written Decision on Remand discussed the Guo Memo. Rather
`
`than redacting the entirety of the discussion about the Guo Memo, Ingevity has
`
`redacted limited portions of the Final Written Decision on Remand that allows the
`
`public to understand the basis for the Board’s decision without revealing the
`
`confidential internal testing results from the Guo Memo. Ingevity believes that the
`
`proposed redactions therefore strike the appropriate balance between allowing the
`
`public to understand the decision while still protecting Ingevity confidential
`
`information that the parties all agreed from the outset could only be used in this
`
`proceeding under the terms of an appropriate Protective Order that sealed the Guo
`
`Memo.
`
`Ingevity’s request is reasonable. The Guo Memo contains confidential and
`
`proprietary development and technical information which would not normally be
`
`revealed to third parties (Paper 10 at 2) and, if were publicly disclosed, would impose
`
`competitive injury and economic harm to Ingevity. The Guo Memo contains
`
`confidential information and technical know-how that would impose competitive
`
`injury and economic harm to Ingevity if it were publicly disclosed. The Guo Memo
`
`was produced to BASF with Bates Number NGVT0264661 in the co-pending
`
`
`
`3
`
`
`
`PGR2020-00037
`U.S. Patent No. 10,323,553
`
`litigation between the parties, styled Ingevity Corp. v. BASF Corp., C.A. No. 1:18-
`
`cv-01391-RGA (D. Del.) (the “Delaware Action”) and was designated
`
`“Confidential” under the Amended Protective Order in the Delaware Action. The
`
`District Court in the Delaware Action considered the confidentiality of the Guo
`
`Memo and reasoned that the Guo Memo is “clearly ‘Confidential’ as it is confidential
`
`and proprietary development and/or technical information which (as indicated on the
`
`face of the document) is something that would not normally be revealed to third
`
`parties.” Id., D.I. 221 at 1.
`
`The proposed redacted Final Written Decision on Remand (Exhibit 2086) is
`
`consistent with the redacted version of the Guo Memo published as Exhibit 2085.
`
`III. Conclusion
`
`For the foregoing reasons, Ingevity respectfully moves to seal the Final
`
`Written Decision on Remand from January 26, 2024 and publish instead the
`
`proposed Redacted Final Written Decision on Remand uploaded as Exhibit 2086.
`
`
`
`
`
`
`
`4
`
`
`
`Date: February 2, 2024
`
`Respectfully submitted,
`
`PGR2020-00037
`U.S. Patent No. 10,323,553
`
`By: /Brian M. Buroker/
`Brian M. Buroker (Reg. No. 39,125)
`GIBSON, DUNN & CRUTCHER LLP
`1050 Connecticut Avenue, N.W.
`Washington, DC 20036-5306
`Telephone: (202) 955-8500
`Facsimile: (202) 467-0539
`bburoker@gibsondunn.com
`
`Spencer W. Ririe (Reg. No. 66,740)
`MANGUM RIRIE LLP
`999 Corporate Dr. #260
`Ladera Ranch, CA 92694
`Telephone: (949) 302-0383
`spencer@mangumririe.com
`
`Counsel for Patent Owner
`
`/Brian Eutermoser/
`Brian Eutermoser
`beutermoser@kslaw.com
`King & Spalding LLP
`1401 Lawrence Street
`Denver, CO 80202
`(720) 535-2300
`
`Joseph D. Eng, Jr.
`jeng@kslaw.com
`King & Spalding LLP
`1185 Avenue of the Americas
`New York, N.Y., 10036
`(212) 556-2100
`
`Counsel for Petitioner
`
`5
`
`
`
`
`
`
`
`PGR2020-00037
`U.S. Patent No. 10,323,553
`
`Certificate of Service
`A copy of the forgoing JOINT MOTION TO SEAL THE BOARD’S
`FINAL WRITTEN DECISION ON REMAND OF JANUARY 26, 2024 AND
`TO INSTEAD PUBLISH REDACTED VERSION (EXHIBIT 2086) was
`served via electronic mail on the following counsel of record for Petitioner:
`Brian M. Eutermoser
`Joseph D. Eng, Jr.
`beutermoser@kslaw.com
`jeng@kslaw.com
`King & Spalding LLP
`King & Spalding LLP
`1401 Lawrence Street
`1185 Avenue of the Americas
`Denver, CO 80202
`New York, N.Y., 10036
`(720) 535-2300
`(212) 556-2100
`
`
`
`
`
`
`
`Date: February 2, 2024
`
`
`
`By: /Brian M. Buroker/
`
`Brian M. Buroker (Reg. No. 39,125)
`GIBSON, DUNN & CRUTCHER LLP
`1050 Connecticut Avenue, N.W.
`Washington, DC 20036-5306
`Telephone: (202) 955-8500
`Facsimile: (202) 467-0539
`bburoker@gibsondunn.com
`
`Counsel for Patent Owner
`
`
`
`
`
`
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