United States District Court, D. Delaware
INGEVITY CORPORATION and INGEVITY SOUTH CAROLINA, LLC, Plaintiffs,
BASF CORPORATION, Defendant.
E. Keller, John W. Shaw, Nathan R. Hoeschen, SHAW KELLER LLP,
Wilmington, DE; Jeffrey T. Thomas, GIBSON, DUNN &
CRUTCHER LLP, Irvine, CA; Frederick S. Chung, GIBSON, DUNN
& CRUTCHER LLP, Palo Alto, CA; Brian M. Buroker, GIBSON,
DUNN & CRUTCHER LLP, Washington, DC. Attorneys for
D. Smith II, Anthony D. Raucci, MORRIS, NICHOLS, ARSHT &
TUNNELL LLP, Wilmington, DE; James P. Brogan, Thomas J.
Friel, Jr., KING & SPALDING LLP, Palo Alto, CA; Brian
Eutermoser, Kevin Lake, Angela Tarasi, KING & SPALDING
LLP, Denver, CO. Attorneys for Defendant.
ANDREWS, U.S. DISTRICT JUDGE.
before the Court are Plaintiffs' motion for a preliminary
injunction (D.I. 13) and Defendant's related motions for
leave to file a sur-reply (D.I. 50) and leave to file a
supplemental brief (D.I. 92). I have reviewed the
parties' briefing and related filings (D.I. 14, 21, 36,
50, 52, 91, 92). For the following reasons, Plaintiffs'
motion is DENIED. Therefore, Defendant's
motions to file additional briefing are DISMISSED AS
September 6, 2018, Plaintiffs brought this action against
Defendant alleging infringement of U.S. Patent No. RE38, 844
("the '844 patent"). (D.I. 1). The '844
patent is a reissue of U.S. Patent No. 6, 540, 815.
(Id. ¶ 14).
'844 patent relates to "a method for reducing
emissions from evaporative control systems,"
specifically, by using "vapor-adsorbing materials in
hydrocarbon fuel consuming engines." '844 patent at
1:14-23. Evaporation of gasoline from motor vehicles is a
major source of hydrocarbon air pollution. Id. at
1:27-28. The claimed invention is aimed at targeting a subset
of evaporative emissions known as "diurnal breathing
loss" emissions. Id. at 3:43-45. Such emissions
typically occur when a vehicle is parked and subject to
ambient temperature changes. '844 patent at 2:44-47.
emissions are commonly controlled by canister systems that
use activated carbon to adsorb and hold the vapor that
evaporates. Id. at 1:32-42. The adsorbed vapor is
periodically removed from the carbon, which then allows the
regenerated carbon to adsorb additional vapor. Id.
Not all vapor is removed in the regeneration step, however,
and the residual vapor may be emitted through diurnal
breathing losses. Id. at 2:37-47. The claimed
invention aims to address that issue "by the use of
multiple layers, or stages, of adsorbents." Id.
the claimed invention is the use of multiple adsorbents
having different adsorption characteristics. See Id.
at 3:46-53. Each claim of the '844 patent requires the
use of materials with certain "incremental adsorption
capacity." For example, claim 1 provides:
A method for reducing fuel vapor emissions in automotive
evaporative emissions control systems comprising the steps of
contacting the fuel vapor with an initial adsorbent volume
having incremental adsorption capacity at 25° C.
of greater than 35 g n-butane/L between vapor concentrations
of 5 vol % and 50 vol % n-butane and at least one subsequent
adsorbent volume having an incremental adsorption
capacity of less than 35 g n-butane/L between vapor
concentrations of 5 vol % and 50 vol % n-butane.
Id. at 10:36-44 (emphasis added). The '844
patent does not define "incremental adsorption
plaintiff seeking a preliminary injunction must establish 
that he is likely to succeed on the merits,  that he is
likely to suffer irreparable harm in the absence of
preliminary relief,  that the balance of equities tips in
his favor, and  that an injunction is in the public
interest." Winter v. Nat. Res. Def. Council,
Inc., 555 U.S. 7, 20 (2008). "A preliminary
injunction is an extraordinary remedy never awarded as of
right." Id. at 24.
establish a likelihood of success on the merits in a patent
infringement suit, the patentee "must show that it will
likely prove infringement, and that it will likely withstand
challenges, if any, to the validity of the patent."
Tinnus Enterprises, LLC v. Telebrands Corp., 846
F.3d 1190, 1202 (Fed. Cir. 2017) (quoting Titan Tire
Corp. v. Case New Holland, Inc.,566 F.3d 1372, 1376
(Fed. Cir. 2009)). "An accused infringer 'can defeat
a showing of likelihood of success on the merits by
demonstrating a substantial question of ...