IP Law Daily, PATENT—Fed. Cir.: PGR challenge to Ingevity vehicle vapor emissions patent revived, (Jun 22, 2023)

By George Basharis, J.D.

On remand, the PTAB must reconsider petitioner BAFS’s evidence of indefiniteness.

BASF Corporation achieved a partial victory in a post-grant review dispute with competitor Ingevity South Carolina over Ingevity’s patent for a canister system utilized in controlling automotive gasoline vapor emissions. BASF sought to invalidate several claims of Ingevity’s patent on the ground that the scrubber technology claimed by the patent was either indefinite or obvious over prior art. The Patent Trial and Appeal Board rejected BASF’s claims and ruled in favor of Ingevity. Although the U.S. Court of Appeals for the Federal Circuit upheld the Board’s determination that the prior art did not invalidate Ingevity’s patent, it overturned the Board’s decision on BASF’s challenge regarding the indefiniteness of the patent, finding the Board had failed to consider all the relevant evidence before reaching its conclusion (BASF Corp. v. Ingevity South Carolina, LLC, June 22, 2023, Stoll, K.).

Ingevity owns U.S. Patent No. 10,323,553 (the ’553 patent), which pertains to a canister system designed to reduce evaporative emissions in hybrid vehicles. Typically, gasoline-powered motor vehicles have vented fuel tanks that allow for the expansion and contraction of fuel vapors. Consequently, these fuel vapors escape into the atmosphere through the vent, contributing to air pollution. Canister systems composed of adsorbent materials are employed to mitigate fuel vapor emissions. Any unabsorbed vapors are drawn back into the vehicle's engine and combusted. However, due to the relatively infrequent operation of engines in hybrid vehicles compared to traditional gasoline-powered vehicles, not all vapors are burned. The ’553 patent addresses the problem by utilizing a canister system with an initial adsorbent volume and at least one subsequent adsorbent volume that possesses a lower adsorptive capacity than the initial adsorption volume. The ’553 patent describes two methods to measure the effectiveness of the adsorbent cannisters.

BASF, a company involved in the design and manufacture of carbon honeycomb canister systems that directly competes with Ingevity in the evaporative emissions market, filed a petition for post-grant review of several claims of the ’553 patent. BASF argued that the claim in the ’553 patent regarding “an effective incremental adsorption capacity” lacked definiteness and would have been obvious in light of existing inventions.

BASF contended the ’553 patent was indefinite because it failed to describe with reasonable certainty how effectiveness was measured, as the two different methods outlined in the patent for measuring the effectiveness of the design produced varying results. To support its claim, BASF presented expert testimony and third-party testing. Ingevity, on the other hand, presented contradictory evidence, such as peer-reviewed articles and expert testimony, to demonstrate that the two measurement methods were recognized as equivalent in measuring adsorption capacities and were considered compatible with each other. The Board found Ingevity’s evidence convincing and rejected BASF’s claim of indefiniteness.

BASF also argued that the ’553 patent was invalid on the grounds of obviousness over prior art. According to BASF, a skilled artisan would have been motivated to combine two prior inventions to address the same problem that the ’553 patent aimed to solve. However, the Board concluded that combining the prior art would have resulted in an alternative solution rather than the one claimed by the ’553 patent.

Standing. The Federal Circuit initially addressed Ingevity’s argument challenging BASF’s standing to appeal the Board’s decision, asserting that BASF had not provided evidence of a likely act of infringement. Nevertheless, BASF had previously faced a lawsuit for infringing a related patent, and there was evidence indicating BASF’s development of a competing product for use in U.S. vehicles. The court determined that BASF’s plans created a significant risk of future infringement, thus establishing BASF’s Article III standing to appeal the Board’s decision.

Indefiniteness. Regarding the merits of the appeal, BASF contended that the Board had not considered its evidence of indefiniteness, thereby lacking substantial evidence to support its decision. Ingevity argued that the Board had made a credibility determination. However, the Board did not clarify whether it found Ingevity’s evidence more credible, nor did it explain whether it considered BASF’s testing unreliable and thus disregarded that evidence. As a result, the court overturned the Board’s decision concerning BASF’s indefiniteness challenge and remanded the case, instructing the Board to consider all the submitted evidence on record and make the relevant factual findings and legal conclusions regarding indefiniteness.

Obviousness. Nevertheless, the court determined that the Board’s finding that a skilled artisan would not have been motivated to combine the prior art was supported by substantial evidence. The prior art described the use of higher capacity cannisters to achieve lower emissions. Consequently, a skilled artisan would have been motivated to employ higher capacity cannisters in subsequent adsorbent volumes, rather than using cannisters with incremental adsorption capacities as taught by the ’553 patent.

The case is No. 22-1129.

Attorneys: Paul Alessio Mezzina (King & Spalding LLP) for BASF Corp. Brian Buroker (Gibson, Dunn & Crutcher LLP) for Ingevity South Carolina, LLC.

Companies: BASF Corp.; Ingevity South Carolina, LLC

Cases: Patent FedCirNews USPTO