Prior Invention As A Litigation Defense: All Claim Elements Must Be Appreciated

• Published date: 14 February 2022
• Subject Matter: Intellectual Property, International Law, Patent, International Trade & Investment
• Law Firm: Manatt, Phelps & Phillips LLP
• Author: Mr Irah H. Donner

In Ingevity Corporation v. International Trade Commission,¹ the Federal Circuit held that a prior invention will not anticipate under 35 U.S.C. ' 102(g) unless the prior inventors appreciated the invention. Specifically, an inventor must concurrently appreciate that the embodiment worked and that it satisfied all claim elements.

Ingevity Corp. owned U.S. Patent No. RE38,844 ("the '844 patent"). Ingevity filed a complaint before the International Trade Commission ("the Commission") asserting a claim under 19 U.S.C. ' 1337 ("section 337") from importing products that infringed the '844 patent, and in an amended complaint, named MAHLE Filter Systems North America Inc. and others (collectively, "Intervenors") as Respondents. The Commission concluded that the Intervenors did not violate section 337 since the claims of the '844 patent were invalid under 35 U.S.C. ' 102(g)(2) and/or 35 U.S.C. ' 103(a) based on a prior invention by engineers at non-party Delphi Technologies Inc.

The '844 patent related to a method for reducing emissions stemming from gasoline evaporation from vehicle fuel systems, sometimes called "bleed emissions." The '844 patent disclosed controlling bleed emissions using two adsorbents. The '844 patent explained the first, a fuel-side adsorbent, was a standard high-working capacity carbon. The second, a vent-side adsorbent, showed a flat or flattened adsorbent isotherm on a volumetric basis and desirable adsorptive features over broad vapor concentrations.

Claim 1 of the '844 patent is representative. It recites:

1. 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.

Delphi developed its own fuel canister system to reduce evaporative emissions ("Delphi Prior Invention"). The parties agreed that the Delphi Prior Invention was reduced to practice before the '844 patent's priority date. The Delphi Prior Invention encompassed a carbon canister and an auxiliary canister holding carbon honeycombs. Delphi engineers'Thomas Meiller, Susan LaBine and Charles Covert'concluded that the Delphi Prior Invention enhanced bleed emissions, and obtained their own patent.

The Administrative Law Judge (ALJ) determined that the claims of the '844 patent were anticipated by the Delphi Prior Invention and/or obvious in view of the Delphi...