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`571-272-7822
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`Paper
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`Entered: January 26, 2024
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BASF CORPORATION,
`Petitioner,
`
`v.
`
`INGEVITY SOUTH CAROLINA, LLC,
`Patent Owner.
`____________
`
`PGR2020-00037
`Patent 10,323,553 B2
`____________
`
`Before JON B. TORNQUIST, CHRISTOPHER M. KAISER, and
`JULIA HEANEY, Administrative Patent Judges.
`
`HEANEY, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision on Remand
`Determining No Challenged Claim Unpatentable
`37 C.F.R. § 328(a)
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`Paper
`88
`Entered: January 26, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`BASF CORPORATION,
`Petitioner,
`
`v.
`
`INGEVITY SOUTH CAROLINA, LLC,
`Patent Owner.
`____________
`
`PGR2020-00037
`Patent 10,323,553 B2
`____________
`
`Before JON B. TORNQUIST, CHRISTOPHER M. KAISER, and
`JULIA HEANEY, Administrative Patent Judges.
`
`HEANEY, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision on Remand
`Determining No Challenged Claim Unpatentable
`37 C.F.R. § 328(a)
`
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`Introduction
`I.
`This decision addresses the opinion of the U.S. Court of Appeals for
`the Federal Circuit in BASF Corp. v. Ingevity South Carolina, LLC, No.
`2022-1129 (Fed. Cir. June 22, 2023) (Paper 82) (“Federal Circuit
`Decision”), affirming the Board’s determination of obviousness of the
`claims 1–10, 14–28, 32–38, 51, 52, 55–57, 59, 64–72, and 76–82 (“the
`challenged claims”) of U.S. Patent 10,323,553 B2 (Ex. 1001, “the ’553
`patent”), but vacating and remanding the Board’s determination of
`indefiniteness of those claims. Paper 82. Having analyzed the record
`relating to the indefiniteness challenge anew in light of the directive in the
`Federal Circuit Decision, we issue this Final Written Decision on Remand
`pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73, and for the reasons
`discussed below we conclude that Petitioner has not shown by a
`preponderance of the evidence that the challenged claims of the ’553 patent
`are indefinite.
`A. Procedural History
`Petitioner filed a petition to institute a post-grant review of the
`challenged claims of the ’553 patent. Paper 3 (“Pet.”). Patent Owner filed a
`Preliminary Response. Paper 7. Pursuant to 35 U.S.C. § 324, the Board
`instituted trial on September 10, 2020, after determining Petitioner had
`shown it was more likely than not to prevail with respect to its challenge to
`claims 1 and 21 of the ’553 patent based on obviousness. Paper 19, 37.
`During the course of trial, Patent Owner filed a Patent Owner
`Response (Paper 44, “PO Resp.”); Petitioner filed a Reply to the Patent
`Owner Response (Paper 52, “Pet. Reply”); and Patent Owner filed a Sur-
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`reply (Paper 61, “PO Sur-reply”). The parties also filed motions to exclude
`evidence (Papers 56 and 57). An oral hearing was held on June 11, 2021,
`and a transcript of the hearing is included in the record. Paper 71 (“Tr.”).
`On September 9, 2021, we issued a Final Written Decision (Paper 75),
`determining, as discussed above, that Petitioner had not shown by a
`preponderance of the evidence that the challenged claims are unpatentable as
`obvious or indefinite. Petitioner appealed our Final Written Decision to the
`Federal Circuit. See Paper 78. The Federal Circuit remanded on the issue of
`indefiniteness and entered the mandate on July 31, 2023. Paper 82, 14;
`Paper 81 (mandate).
`On August 23, 2023, this panel held a conference call with counsel for
`Petitioner and Patent Owner to discuss the procedure and schedule on
`remand, in accordance with the Board’s Standard Operating Procedure 9.
`During the call, Petitioner requested authorization to file a ten-page brief in
`light of the Federal Circuit Decision. Patent Owner disputed that any further
`briefing was necessary or appropriate and opposed Petitioner’s request. We
`determined that the additional briefing proposed by Petitioner would not be
`helpful in resolving the issue remanded by the Federal Circuit. See Paper
`83.
`B. The Issue on Remand
`In the Final Written Decision, we determined Petitioner had not
`shown that a person of ordinary skill in the art would have understood
`measurement of the adsorption capacity of n-butane is subject to significant
`deviation, depending on whether a gravimetric or volumetric measurement
`technique is used. Paper 75, 16–18. Finding that this determination was
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`dispositive as to Petitioner’s indefiniteness challenge, we thus stated “we
`need not address Petitioner’s allegations as to the measurement differences
`reported by Intertek in Exhibit 1020.” Id. at 18. In vacating and remanding
`our determination on the indefiniteness challenge, the Federal Circuit
`referred to the preceding statement and wrote
`The Board’s statement suggests that, because it found
`Ingevity’s evidence on indefiniteness convincing, the Board did
`not consider BASF’s evidence on the issue . . . . [T]he Board
`did not explain whether it found Ingevity’s evidence more
`credible; nor did it explain whether it found BASF’s testing
`unreliable and therefore did not give that evidence any weight
`. . . . While we may well have affirmed the Board had it
`articulated any of these purported reasons for its conclusion, we
`cannot meaningfully review the Board’s opinion to determine
`whether its underlying factual finding is supported by
`substantial evidence because we cannot discern the basis for the
`Board’s finding—other than its very clear statement that it need
`not consider BASF’s evidence. Such a statement, without
`further elaboration, runs afoul of the APA’s requirement to
`consider all the evidence and thus the Board’s analysis is
`improper.
`We therefore vacate the Board’s decision regarding
`BASF’s indefiniteness challenge and remand for the Board to
`consider all the proffered evidence of record and make the
`relevant factual findings and legal conclusion regarding
`indefiniteness.
`Federal Circuit Decision 10–11. The Federal Circuit otherwise did not
`remark upon our findings and conclusions regarding indefiniteness.
`We have considered all of the evidence regarding indefiniteness in
`light of the Federal Circuit’s directive and, as explained below, we conclude
`that the challenged claims are not unpatentable based on the indefiniteness
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`challenge set forth in the Petition. Except to the extent that they are further
`explained below or contradicted by any statement herein, we maintain the
`analysis, findings, and conclusions reached in our earlier Final Written
`Decision, which we incorporate by reference.
`
`II. Background
`A. Related Proceedings
`The parties identify PGR2020-00035 as a related proceeding
`involving the ’553 patent. Pet. 101; Paper 5, 2. In that case, we denied
`institution of trial. PGR2020-00035, Paper 11. The parties state they are not
`aware of any other judicial or administrative proceeding involving the ’553
`patent. Pet. 101; Paper 5, 2.
`B. The ’553 Patent
`The ’553 patent describes canister systems that employ activated
`carbon to adsorb fuel vapor emitted from motor vehicle fuel systems and
`reduce hydrocarbon air pollution. Ex. 1001, code (54), 1:29–33. The
`adsorbed fuel vapor can be “periodically removed from the activated carbon
`by purging the canister systems with ambient air [while the engine is turned
`on] to desorb the fuel vapor from the activated carbon,” after which the
`“regenerated carbon is then ready to adsorb additional fuel vapor.” Id. at
`1:33–38; 53–58. According to the ’553 patent, however, “[t]he purge air
`does not desorb the entire fuel vapor adsorbed on the adsorbent volume,
`resulting in a residue hydrocarbon (‘heel’) that may be emitted to the
`atmosphere.” Id. at 1:58–61.
`The ’553 patent states “[a]n increase in environmental concerns has
`continued to drive strict regulations of the hydrocarbon emissions from
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`motor vehicles even when the vehicles are not operating.” Id. at 1:39–41.
`“When a vehicle is parked in a warm environment during the daytime
`heating (i.e., diurnal heating), the temperature in the fuel tank increases
`resulting in an increased vapor pressure in the fuel tank.” Id. at 1:42–45.
`The ’553 patent explains that the “heel in local equilibrium with the gas
`phase also permits fuel vapors from the fuel tank to migrate through the
`canister system as emissions,” and “[s]uch emissions typically occur when a
`vehicle has been parked and subjected to diurnal temperature changes over a
`period of several days, commonly called ‘diurnal breathing losses’
`[“DBL”].” Id. at 1:61–67. The ’553 patent further states that the “California
`Low Emission Vehicle Regulation (LEV-III) requires canister DBL
`emissions not to exceed 20 mg.” Id. at 2:6–8.
`The ’553 patent explains that DBL emissions may be “more severe for
`a hybrid vehicle that includes both an internal combustion engine and an
`electric motor,” because, in such vehicles, “the internal combustion engine is
`turned off nearly half of the time during vehicle operation.” Id. at 2:46–51.
`“Since the adsorbed fuel vapor on the adsorbents is purged only when the
`internal combustion engine is on, the adsorbents in the canister of a hybrid
`vehicle is purged with fresh air less than half of the time compared to
`conventional vehicles.” Id. at 2:51–55. Yet, “[a] hybrid vehicle generates
`nearly the same amount of evaporative fuel vapor as the conventional
`vehicles.” Id. at 55–57. The ’553 patent explains “[t]he lower purge
`frequency of the hybrid vehicle can be insufficient to clean the residue
`hydrocarbon heel from the adsorbents in the canister, resulting in high
`diurnal breathing loss (DBL) emissions.” Id. at 57–60. Therefore,
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`according to the ’553 patent, “it is desirable to have an evaporative emission
`control system with low diurnal breathing loss (DBL) emissions even when
`a low level of purge air is used, or when the adsorbents in the canister are
`purged less frequently such as in the case of hybrid vehicles, or both.” Id. at
`2:61–65.
`The ’553 patent describes several example embodiments of
`evaporative emission control canister systems to address the above
`problems. Id. at 4:10–20. Figures 1–3 of the ’553 patent, reproduced below,
`depict a first group of canister system embodiments.
`
`
`Figures 1–3 are evaporative emission control canister systems having
`“an initial adsorbent volume and subsequent adsorbent volume(s) . . . located
`within a single canister.” Id. at 4:10–14. An “adsorbent volume” refers to
`“an adsorbent material or adsorbent containing material along vapor flow
`path, and may consist of a bed of particulate material, a monolith,
`honeycomb, sheet or other material.” Id. at 6:32–36. Figure 1 illustrates
`“[c]anister system 100 includ[ing] a support screen 102, a dividing wall 103,
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`a fuel vapor inlet 104 from a fuel tank, a vent port 105 opening to an
`atmosphere, a purge outlet 106 to an engine, an initial adsorbent volume
`201, and a subsequent adsorbent volume 202.” Id. at 4:24–28. The ’553
`patent explains the operation of canister system 100 as follows:
`When an engine is off, the fuel vapor from a fuel tank enters the
`canister system 100 through the fuel vapor inlet 104. The fuel
`vapor diffuses into the initial adsorbent volume 201, and then the
`subsequent adsorbent volume 202 before being released to the
`atmosphere through the vent port 105 of the canister system.
`Once the engine is turned on, ambient air is drawn into the
`canister system 100 through the vent port 105. The purge air
`flows through the subsequent adsorbent volume 202 and then the
`initial adsorbent volume 201, and desorbs the fuel vapor
`adsorbed on the adsorbent volumes 202, 201 before entering an
`internal combustion engine through the purge outlet 106.
`Id. at 4:29–40.
`The embodiment of Figure 2 includes additional subsequent adsorbent
`volumes 203 and 204, and the embodiment of Figure 3 adds empty volume
`205 between subsequent adsorbent volumes 203 and 204. Id. at 4:41–57.
`
`Figures 4–6 of the ’553 patent, reproduced below, depict a second
`group of canister system embodiments.
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`Figures 4–6 are evaporative emission control canister systems that include
`more than one canister, “wherein an initial adsorbent volume and at least one
`subsequent adsorbent volume are located in separate canisters that are
`connected to permit sequential contact by fuel vapor.” Id. at 4:14–20.
`Figure 4 depicts main canister 101 having similar elements as shown in
`Figure 2, along with supplemental canister 300 including conduit 107
`connected to main canister 101, subsequent adsorbent volume 301, and vent
`port 105. Id. at 4:61–5:3. Main canister 101 and supplemental canister 300
`operate similarly to the embodiments of Figures 1–3: when the engine is off,
`fuel vapor enters main canister 101 through inlet 104, diffuses through the
`adsorbent volumes 201–204, and then enters adsorbent volume 301 before
`releasing to the atmosphere at vent port 105. Id. at 5:4–14. Once the engine
`is turned on, ambient air is drawn into the canister system through vent port
`105, the purge air flows through the adsorbent volumes in supplemental
`canister 300 and main canister 101 to desorb the fuel vapor adsorbed on the
`adsorbent volumes, before entering the internal combustion engine through
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`purge outlet 106. Id. at 5:14–23. The embodiment of Figure 5 includes
`additional subsequent adsorbent volume 302, and the embodiment of Figure
`6 adds empty volume 304 between subsequent adsorbent volumes 302 and
`303. Id. at 5:24–38.
`The ’553 patent further discloses “the evaporative emission control
`system may include a heat unit for heating the purge air, at least one
`subsequent adsorbent volume, or both,” in order to enhance the purge
`efficiency. Id. at 12:29–34. “The heat input units may include, but are not
`limited to, internal resistive elements, external resistive elements, or heat
`input units associated with the adsorbent.” Id. at 13:29–31.
`The ’553 patent describes adsorbent volumes in terms of three
`adsorptive characteristics: “incremental adsorption capacity,” “butane
`working capacity (BWC),” and “g-total BWC.” Id. at 6:10–22. These
`properties are described as “nominal,” which includes adsorbent component
`volumes but excludes conduits, gaps, or other non-adsorbent volumes, and
`“effective,” which includes all volumes of the system both adsorbent and
`non-adsorbent. Id. at 6:37–42; 10:26–34. Nominal incremental adsorption
`capacity of an adsorbent component is a function of the difference between
`the gram mass of adsorbed butane at 50 vol. % butane concentration and 5
`vol. % butane concentration, multiplied by the “nominal volume apparent
`density” (defined as the mass of adsorbent material divided by the nominal
`volume of adsorbent material). Id. at 6:56–64; 9:6–25. Nominal volume
`BWC is determined by placing the adsorbent component in a test system that
`loads the adsorbent material with butane and then purges it with air, and
`measuring the difference in mass of the adsorbent component before and
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`after the purge. Id. at 9:26–10:24. The g-total BWC is defined as the total
`gram amount of butane purged during the test. Id. at 10:24–25. The
`“effective” property of each characteristic (i.e., effective incremental
`adsorption capacity, effective butane working capacity (BWC), and effective
`g-total BWC) is a function of each respective nominal property that takes
`into account the total effective volume of the system. Id. at 10:25–62.
`The ’553 patent provides an exemplary embodiment of an evaporative
`emission control canister system with specified adsorbent material
`properties, comprising:
`an initial adsorbent volume having an effective incremental
`adsorption capacity at 25° C. of greater than 35 grams n-butane/L
`between vapor concentration of 5 vol % and 50 vol % n-butane;
`and at least one subsequent adsorbent volume having an effective
`incremental adsorption capacity at 25° C. of less than 35 grams
`n-butane/L between vapor concentration of 5 vol% and 50 vol%
`n-butane, an effective butane working capacity (BWC) of less
`than 3 g/dL, and a g-total BWC of between 2 grams and 6
`grams. . . .
`The evaporative emission control canister system has a two-day
`diurnal breathing loss (DBL) emissions of no more than 20 mg
`at no more than about 210 liters of purge applied after the 40 g/hr
`butane loading step.
`Id. at 3:56–67; 4:5–9.
`The ’553 patent provides further examples of evaporative emission
`control canister systems, and lists specific characteristics for each example.
`Id. at 13:60–20:12; see also col. 19–col. 24, Tables 1–5.
`C. Illustrative Claim
`1. An evaporative emission control canister system, including
`one or more canisters and comprising:
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`[A]1 a fuel-side adsorbent volume having an effective
`incremental adsorption capacity at 25° C. of greater than 35
`grams n-butane/L between vapor concentration of 5 vol % and
`50 vol % n-butane; and
`[B] at least one subsequent adsorbent volume having an
`effective incremental adsorption capacity at 25° C. of less than
`35 grams n-butane/L between vapor concentration of 5 vol %
`and 50 vol % n-butane,
`[C] an effective butane working capacity (BWC) of less than 3
`g/dL, and
`[D] a g-total BWC of ≤6 grams,
`[E] wherein the fuel-side adsorbent volume having an effective
`incremental adsorption capacity at 25° C. of greater than 35
`grams n-butane/L between vapor concentration of 5 vol % and
`50 vol % n-butane, and the at least one subsequent adsorbent
`volume are located within a single canister, or in separate
`canisters that are connected to permit sequential contact by fuel
`vapor, and
`[F1] wherein the canister system has a two-day diurnal
`breathing loss (DBL) of no more than 20 mg at no more than
`100 BV of purge applied after a 40 g/hr butane loading step.
`Id. at 23:18–40.
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`III. Analysis
`A. Level of Ordinary Skill in the Art
`Factors pertinent to a determination of the level of ordinary skill in the
`art include “(1) educational level of the inventor; (2) type of problems
`encountered in the art; (3) prior art solutions to those problems; (4) rapidity
`with which innovations are made; (5) sophistication of the technology; and
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`1 We label each of the relevant claim limitations with the lettering the
`parties apply in the Petition and Patent Owner Response.
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`(6) educational level of workers active in the field.” Envtl. Designs, Ltd. v.
`Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic
`Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed.
`Cir. 1983)). Not all such factors may be present in every case, and one or
`more of these or other factors may predominate in a particular case. Id.
`Petitioner argues a person of ordinary skill in the art at the time of the
`invention “would possess at least a B.S. in chemistry or chemical or
`mechanical engineering and would have at least one year of experience
`working on control of automotive evaporative emissions,” and “would also
`understand the chemistry and physics associated with the phenomena of fuel
`vapor adsorption, desorption, and diffusion.” Pet. 28 (citing Ex. 1003 ¶ 17).
`Patent Owner does not dispute the level of ordinary skill in the art. We
`adopt Petitioner’s definition of the level of ordinary skill in the art because it
`is consistent with the ’553 patent and the asserted prior art.
`
`
`B. Indefiniteness of the Challenged Claims
`1. The Parties’ Contentions
`Petitioner argues that claims 1–10, 14–28, 32–38, 51, 52, 55–57, 59,
`64–72, and 76–82 are indefinite under 35 U.S.C. § 112(b). Pet. 41–56.
`Petitioner contends the term “effective incremental adsorption
`capacity (IAC)” in the challenged claims is indefinite, because the ’553
`patent discloses two different methods for calculating effective IAC,
`McBain (using gravimetric instruments) and ASAP 2020 (using volumetric
`instruments), which Petitioner contends result in substantially different
`values for IAC, and a person of ordinary skill in the art would not have
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`known which method to select. Pet. 43–44 (citing Dow Chem. Co. v. Nova
`Chems. Corp., 803 F.3d 620 (Fed. Cir. 2015); Teva Pharms. USA, Inc. v.
`Sandoz, Inc., 789 F.3d 1335, 1344–45 (Fed. Cir. 2015)). Petitioner presents
`argument and evidence concerning testing by a third party, Intertek, of three
`different adsorbent materials under both methods, and asserts that the
`methods produce a potential 12–14 % difference in effective IAC. Pet. 47–
`48, 52 (citing Ex. 1003 ¶¶ 112–117, 128; Ex. 1020; Ex. 1035 ¶¶ 4–13).
`Patent Owner contends adsorption capacity is a physical parameter
`that is fixed for an adsorbent-adsorbate system, provided that the adsorbate
`identity, concentration, and temperature are fixed, i.e., specifying these three
`outcome-determinative variables in turn fixes the adsorption capacity for a
`given adsorbent. PO Resp. 72 (citing Ex. 2022 ¶¶ 59–67; Ex. 2056, 40:10–
`12; Ex. 2071 ¶ 54). Patent Owner thus contends effective IAC as recited in
`the ’553 patent claims is a fundamental property independent of
`measurement technique, which is confirmed by the fact that equivalent
`adsorption capacities can be measured using different measurement
`techniques. Id. at 73. Patent Owner and its declarant, Dr. Rockstraw, rely
`on several peer-reviewed publications as evidence that gravimetric and
`volumetric instruments measure equivalent adsorption capacities if the
`instruments are accurate and proper laboratory protocols are observed. Id. at
`73–74 (citing Ex. 2007; Ex. 1021; Ex. 2069; Ex. 2022 ¶¶ 95–103, 109–116).
`Patent Owner also contends Petitioner fails to show that the McBain and
`ASAP 2020 methods, as analyzed by Intertek, provide fundamentally
`different measurements of adsorption capacity (id. at 75–81) and asserts that
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`the differences in the measurements in the Guo Memo (Ex. 1041) are
`attributable to instrument inaccuracies and experimental error. Id. at 81–85.
`In its Reply, Petitioner argues “[a]ll of the evidence shows significant
`differences between adsorption capacity results measured using different
`instruments.” Pet. Reply 27. Petitioner contends the Guo Memo’s
`conclusion confirms that the methods yield significantly different
`measurements (id. at 24–25) and that Intertek’s results also confirm
`substantial differences in the McBain and ASAP 2020 results. Id. at 25–26.
`Petitioner also argues the peer-reviewed papers relied upon by Patent Owner
`do not address adsorption capacity determinations regarding n-butane, and
`also confirm that different measurement methods produce different results.
`Id. at 26–27.
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`2. Discussion
`Findings in Original Final Written Decision
`In our original Final Written Decision, we determined Petitioner did
`not show by a preponderance of the evidence that the gravimetric and
`volumetric methods provide fundamentally different measurements of
`adsorption capacity. Paper 75, 16–18. We reiterate those findings here.
`Patent Owner and Dr. Rockstraw present peer-reviewed scientific
`literature demonstrating that gravimetric and volumetric measurement
`techniques were known to measure equivalent adsorption capacities and
`were viewed as compatible with each other. See Ex. 2022 ¶¶ 95–107
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`(addressing Anson2 (Ex. 2007), Belmabkhout3 (Ex. 1021), Zielinski4 (Ex.
`2069)). For example, Belmabkhout reported similar results between
`measurements by gravimetric and volumetric instruments, except at very
`high pressures. Ex. 1021, 856–57. Zielinski reported “excellent agreement”
`between volumetric and gravimetric adsorption capacity measurements
`(Ex. 2069, 5–6); Dr. Zielinski (who oversaw the testing reported by Intertek
`in Ex. 1020) also testified that he would expect capacity measurements for
`either a gravimetric or volumetric technique to yield the same results, or be
`“superimposable” under ideal conditions, because they represent “the same
`experimental measured quantities.” Ex. 2026, 52:11–53:7, 54:13–22, 69:12–
`70:3, 139:8–19.
`Petitioner’s argument that these papers are not relevant because they
`do not address measurements of the adsorption capacity of n-butane (see Pet.
`Reply 26) is not persuasive, because Petitioner does not direct us to
`sufficient evidence showing a reason why measurements of n-butane’s
`adsorption capacity would have been subject to different measurement
`inconsistencies. Further, Petitioner’s argument about a 3% deviation in
`results between the measurement techniques reported in Anson and
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`2 Anson, A., et al., “Hydrogen adsorption on a single-walled carbon
`nanotube material: a comparative study of three different adsorption
`techniques,” Nanotechnology 15 (2004), 1503.
`3 Belmabkhout, Y., et al., “High-pressure adsorption measurements. A
`comparative study of the volumetric and gravimetric methods,”
`Measurement Science and Technology 15 (2004) 848.
`4 Zielinski, J. et al., “High pressure sorption isotherms via differential
`pressure measurements,” Adsorption 13 (2007), 1–7.
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`Belmabkhout is not persuasive because the papers’ conclusions suggest a
`person of ordinary skill in the art would not have seen such a deviation as
`significant (e.g., Ex. 1021, 849: “we have not observed important
`discrepancies” between gravimetric and volumetric measurements).
`Dr. Rockstraw also testifies as to numerous additional texts and
`standards that confirm persons of ordinary skill in the art understood that
`gravimetric and volumetric measurement techniques would provide
`consistent results when proper experimental protocols are followed and the
`instruments’ accuracy and precision are taken into consideration. See
`Ex. 2022 ¶¶ 88–91, 119–127. This evidence is essentially unrebutted by
`Petitioner. We find that the evidence submitted by Patent Owner as to the
`gravimetric and volumetric measurement techniques demonstrates that they
`were well established in the art as comparable methods of measuring
`adsorption capacity, and accordingly, not a basis for determining claim
`indefiniteness. See Presidio Components, Inc. v. Am. Technical Ceramics
`Corp., 875 F.3d 1369, 1377 (Fed. Cir. 2017) (explaining that where the test
`methodology was sufficiently well established in the art, “disputes between
`the parties as to the proper application of the test methodology in the
`circumstances of an individual case . . . are disputes about whether there is
`infringement, not disputes about whether the patent claims are indefinite).
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`Additional Findings on Remand5
`Petitioner commissioned Intertek to test three different adsorbent
`samples using both the McBain and ASAP 2020 methods. Pet. 47; see
`Ex. 1035 (describing Petitioner’s instructions to Intertek to follow the ’553
`patent’s protocol for adsorption capacity measurements); Ex. 1020 (“the
`Intertek Report”).6 Petitioner asserts that the results of the Intertek Report
`show that effective IAC varies significantly depending on whether it is
`measured by the McBain or ASAP 2020 method (Pet. 51), and argues that
`“[w]ith multiple ways of measuring effective IAC yielding different results,
`the claims are invalid as a matter of law.” Id. at 54.
`The Intertek Report does not support Petitioner’s assertion that the
`McBain and ASAP 2020 methods result in incompatible measurements of
`adsorption capacity. Dr. Zielinski testified that Intertek, at Petitioner’s
`direction, did not determine if the samples it tested were completely cleaned
`before measuring their adsorption capacity. Ex. 2026, 141:17–144:25,
`147:18–148:5). The Intertek Report also states that the samples which were
`gravimetrically measured were more degassed than the volumetric samples
`and “a more robust sample preparation protocol is recommended to make a
`better comparison of experimental data from these two techniques.”
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`5 Several of the exhibits discussed in this section were the subject of
`motions to seal, which we granted in an Order dated July 22, 2021 (Paper
`73).
`6 The experimental setup described in the Intertek Report uses a Rubotherm
`gravimetric balance (rather than McBain as described in the ’553 patent),
`and refers to volumetric measurement on the ASAP unit as “manometric.”
`Ex. 1020, 2.
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`Ex. 1020, 3. Dr. Rockstraw explains that improper sample preparation, such
`as incomplete or uneven cleaning of samples, can cause divergent adsorption
`capacity measurements. Ex. 2022 ¶¶ 143–148. Dr. Rockstraw further
`explains that the small mass of the sample aliquots that Intertek extracted for
`measurement may have exacerbated variability in the samples (id. ¶¶ 149–
`152) and opines that the gravimetric and volumetric measurements in the
`Intertek Report are not significantly different, when Intertek’s
`representations as to the accuracy and precision of its gravimetric and
`volumetric instruments are taken into account. Id. ¶¶ 128, 153–157.
`We find Dr. Rockstraw’s reasoning as to unreliability of the Intertek
`Report’s adsorption capacity measurements persuasive. Together with
`Dr. Zielinski’s deposition testimony, Dr. Rockstraw’s testimony leads us to
`conclude that the Intertek Report does not support Petitioner’s assertion that
`gravimetric and volumetric instruments provide incompatible measurements
`of adsorption capacity.
`We also note that Petitioner does not present evidence rebutting Drs.
`Zielinski’s and Rockstraw’s testimony about the Intertek Report, discussed
`above. See Pet. Reply 24–27; Ex. 1042 ¶¶ 78–93. Rather, Petitioner offers
`evidence of a second round of testing that it commissioned from Intertek.
`Pet. Reply 25–26 (citing Exs. 1048, 1049; Ex. 1042 ¶¶ 88–91). 7 Petitioner’s
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`7 Exhibits 1048 and 1049 were subject to a motion to exclude filed by
`Patent Owner. Paper 56. Even if we were to exclude these exhibits, our
`determination that Petitioner has not shown by a preponderance of the
`evidence that the challenged claims of the ’553 patent are indefinite would
`be the same. Because the presence of these exhibits does not affect our
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`declarant, Mr. Lyons, explains that in the second round of testing, one set of
`samples was prepared using the same activation process as described in the
`Intertek Report (Ex. 1020), and a second set of samples was prepared using
`the activation process recommended by Intertek. Ex. 1042 ¶ 89. Mr. Lyons
`opines that the results of the second round of testing confirm substantial
`differences between the gravimetric and volumetric results under either
`sample activation method. Id. ¶ 90.
`Petitioner’s argument concerning Intertek’s second round of testing
`does not persuade us to reconsider Intertek’s conclusion in the original
`Intertek Report. Dr. Zielinski testified that the results of Intertek’s second
`round of testing did not change his view as to the conclusion in the original
`Intertek Report concerning different sample preparation methods. Ex. 2026,
`196:24–197:11. Further, we agree with Patent Owner that Intertek’s
`measurements in Exhibits 1048 and 1049 are not significantly different
`when Intertek’s representations as to the accuracy and precision of its
`gravimetric and volumetric instruments are taken into account. See PO Sur-
`reply 26; Ex. 2022 ¶¶ 153–154 (applying similar analysis to Ex. 1020).
`We find that the Guo Memo also does not support Petitioner’s
`assertion that the McBain and ASAP 2020 methods result in incompatible
`measurements of adsorption capacity. In the memo (Ex. 1041), Dr. Guo, an
`Ingevity employee, states that the purpose of conducting the comparative
`tests on McBain and ASAP 2020 apparatus was to develop a reliable
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`determination, we maintain our ruling from the Final Written Decision
`dismissing Patent Owner’s motion to exclude
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