BASF Corp v. Ingevity South Carolina LLC

1. Case Identification

• Case #: PGR2020-00035
• Patent #: 10,323,553
• Filed: March 2, 2020
• Petitioner(s): BASF Corporation
• Patent Owner(s): Ingevity South Carolina, LLC
• Challenged Claims: 1-10, 14-28, 32-38, 51-52, 55-57, 59, 64-72, 76-82

2. Patent Overview

• Title: Evaporative Emission Control Canister System
• Brief Description: The ’553 patent discloses an evaporative emission control canister system for vehicles designed to meet stringent Low Emission Vehicle III (LEV-III) standards for fuel vapor emissions under low-purge conditions. The technology relies on a series of adsorbent volumes with specific adsorptive properties to capture fuel vapors and limit bleed emissions.

3. Grounds for Unpatentability

Ground 1: Lack of Enablement Outside the Disclosed "Window of Adsorptive Properties" - Claims 1-2, 4-10, 14-28, 32-38, 51, 55-57, and 65 are unpatentable for lack of enablement under 35 U.S.C. §112(a).

• Prior Art Relied Upon: Not applicable (Enablement Ground).
• Core Argument for this Ground:
  • Unsupported Claim Scope: Petitioner argued that the ’553 patent specification explicitly teaches that achieving the required LEV-III performance depends on a vent-side adsorbent volume having properties within a narrow “window of adsorptive properties.” This window is defined as having a g-total Butane Working Capacity (BWC) between 2g and 6g, and an effective BWC of less than 3 g/dL. The challenged claims were alleged to be impermissibly broad because they encompass systems with properties falling outside this necessary window.
  • Specification Teaches Away: The petition contended that the patent’s own experimental data teaches away from the full scope of the claims. Specifically, Example 13, which had a g-total BWC of 1.6g (outside the 2g lower limit of the window), failed to meet the required 20mg emissions limit. This failure, presented in the patent itself, demonstrates that the lower end of the claimed range is inoperable.
  • Undue Experimentation: Petitioner asserted that because all successful examples fall within the narrow “window” and the patent’s own data shows failure outside of it, a person of ordinary skill in the art (POSITA) would not be able to practice the full scope of the claims without undue experimentation. The specification provides no guidance for making a compliant system with properties outside the disclosed successful range.

Ground 2: Lack of Enablement for Omitting Essential System Components - Claims 1-10, 14-28, 32-38, 51-52, 55-57, 59, and 65 are unpatentable for lack of enablement under 35 U.S.C. §112(a).

• Prior Art Relied Upon: Not applicable (Enablement Ground).

• Core Argument for this Ground:

  • Omission of Necessary Structure: The petition argued that every successful, LEV-III-compliant example disclosed in the ’553 patent consists of a four-volume adsorbent system: one high-capacity fuel-side volume followed by three low-capacity subsequent adsorbent volumes. Petitioner contended this four-volume structure is an essential feature of the invention.
  • Inoperable Claimed Configurations: The challenged claims were argued to be non-enabled because they are broad enough to encompass two- and three-volume systems. The patent’s data for such systems (e.g., Examples 1, 2, 5, and 12) show they fail to meet the required emissions performance by a significant margin (e.g., emissions of 215mg and 175mg, far exceeding the 20mg limit).
  • Undue Experimentation: By omitting the necessary second and third subsequent adsorbent volumes, the claims cover configurations that the specification demonstrates are inoperable. Petitioner asserted that a POSITA would not be able to make a compliant two- or three-volume system without undue experimentation, as the specification provides no successful examples or guidance for doing so and teaches that additional adsorbent volumes are critical to lengthening the vapor flow path and reducing emissions.

• Additional Grounds: Petitioner asserted additional grounds arguing that the challenged claims lack written description (Grounds 3 and 5) and that claims lacking a performance limitation are not enabled (Ground 4). These arguments were based on the same core contentions: that the specification only describes successful four-volume systems with adsorbent properties inside a narrow "window," and therefore the inventors did not possess or enable the broader claimed subject matter at the time of filing.

4. Key Technical Contentions (Beyond Claim Construction)

• The "Window of Adsorptive Properties": Petitioner contended that the patent's own disclosure establishes a specific "window of adsorptive properties" (g-total BWC of 2-6g and effective BWC < 3g/dL) as a technically essential requirement for any adsorbent system to achieve the claimed low-purge LEV-III performance. The petition argued that any claim scope extending beyond this empirically derived window is technically unsupported and inoperable based on the patent's own data.
• Four-Volume System Necessity: Petitioner argued that, as a technical matter, all working examples in the specification rely on a four-adsorbent-volume configuration. The core of this contention is that this structure is essential to providing a sufficiently long and complex vapor flow path to control bleed emissions to the required low levels, and that claimed two- or three-volume systems are technically incapable of achieving the stated performance results.

5. Relief Requested

• Petitioner requests institution of Post Grant Review and cancellation of claims 1-10, 14-28, 32-38, 51-52, 55-57, 59, 64-72, and 76-82 as unpatentable under 35 U.S.C. §112(a).