`571-272-7822
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`
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`Paper 7
`Entered: April 2, 2019
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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.
`
`____________
`
`Case IPR2019-00202
`Patent RE 38,884
`____________
`
`
`
`Before DONNA M. PRAISS, CHRISTOPHER L. CRUMBLEY, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
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`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
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`Petitioner BASF Corporation contacted the Board seeking
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`authorization to file a reply to Patent Owner Ingevity South Carolina, LLC’s
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`Preliminary Response, and requested a conference call with the panel. On
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`April 1, 2019, Judges Praiss, Crumbley, and Tornquist held a conference call
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`
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`IPR2019-00202
`Patent RE 38,884
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`with counsel for both parties. A court reporter was present during the call,
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`and BASF agreed to file the transcript in the record once it is available.
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`The details of the parties’ positions will be reflected in the reporter’s
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`transcript and need not be repeated herein. In summary, BASF sought
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`authorization to file a five-page brief responding to Ingevity’s arguments on
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`the use of inherency in an obviousness ground of unpatentability, because
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`the Preliminary Response allegedly misstates the law and mischaracterizes
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`BASF’s arguments in its Petition. At the end of the call, the panel took the
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`matter under advisement.
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`Upon reflection, we deny authorization for BASF to file the requested
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`briefing. As counsel for BASF recognized during the call, the Board is
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`familiar with the law of obviousness. To the extent that the Preliminary
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`Response has misstated the law or BASF’s positions, there is no reason
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`those misstatements will not be apparent upon the Board’s review of the
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`papers filed to date. Our initial review of the Petition and Preliminary
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`Response does not reveal any issues on which we currently believe further
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`briefing would be necessary or beneficial.
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`Counsel for BASF directed our attention to a recent Board decision in
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`Neptune Generics, LLC, v. Aventis Generics S.A., Case IPR2019-00136
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`(Paper 11) (PTAB Mar. 1, 2019), in which the panel permitted additional
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`briefing pre-institution to address alleged misstatements of the law of
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`obviousness in the preliminary response. We have reviewed the Board’s
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`order in Neptune Generics and find the current case distinguishable. First,
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`we note that in Neptune Generics, the preliminary response addressed Board
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`decisions that post-dated the filing of the petition, and therefore the
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`petitioner there had not had the opportunity to address these cases. Id. at 3.
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`2
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`IPR2019-00202
`Patent RE 38,884
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`The same is not true here, where the alleged misstatements of law center on
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`the interpretation of two Federal Circuit decisions—Par Pharmaceutical,
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`Inc. v. TWi Pharmaceuticals, Inc., 773 F.3d 1186 (Fed. Cir. 2014) and
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`Honeywell International v. Mexichem Amanco Holding, 865 F.3d 1348 (Fed.
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`Cir. 2017)—that issued well before the filing of the Petition.
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`In addition, the requested briefing in Neptune Generics was primarily
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`requested to address arguments other than obviousness; specifically, newly-
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`raised arguments based on denial of institution under 35 U.S.C. §§ 314(a)
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`and 325(d). Id. Therefore, although the Board noted that it “is familiar with
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`the law of obviousness, and capable of determining whether the law’s
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`requirements have been misstated,” the panel stated that, in the authorized
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`brief, the petitioner “may (though need not)” address the obviousness issue.
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`Id. Here, by contrast, BASF seeks a brief for the sole purpose of addressing
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`obviousness. As discussed above, we see no reason to authorize additional
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`briefing for this purpose alone.
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`
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`For these reasons, we deny BASF’s request for authorization to file a
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`reply to the Preliminary Response. The Board’s decision regarding
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`institution of trial will issue in due course.
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`
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`In light of the foregoing, it is:
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`ORDERED that BASF is not authorized to file a reply to the
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`Preliminary Response.
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`3
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`IPR2019-00202
`Patent RE 38,884
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`FOR PETITIONER:
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`Lori Gordon
`lgordon@kslaw.com
`
`Steven Peters
`speters@kslaw.com
`
`James Brogan
`jbrogan@kslaw.com
`
`FOR PATENT OWNER:
`
`Brian Buroker
`bburoker@gibsondunn.com
`
`Spencer Ririe
`sririe@gibsondunn.com
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`4
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