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