Friday, August 06, 2021

Ingevity loses appeal at CAFC

The topic of the patent in question [U.S. Patent No. RE38,844 (“the ’844 patent”); INGEVITY CORPORATION ] is gasoline emissions:

The ’844 patent is directed to a method for reducing emissions resulting from gasoline evaporation from automobile fuel systems. ’844 patent col. 1 ll. 27–34; col. 3 ll. 43–64. These emissions, which sometimes are referred to as “bleed emissions,” typically occur when a vehicle has been parked and subjected to diurnal temperature changes over a period of several days. Id. col 2 ll. 45–46; col. 4 ll. 42–44. These temperature changes cause pressure fluctuations in the vehicle’s fuel tank, which in turn cause gases to flow in and out of the fuel tank vent. Initial Determination, 2020 WL 1026313, at *6. One way to control bleed emissions is via “adsorption” and the storage of hydrocarbon vapors in a canister, followed by “desorption,” facilitated by passing fresh air through the canister to purge the adsorbed hydrocarbons back into the fuel system, where they are burned in the internal combustion process

Prior to the appeal to the CAFC, the ITC had determined on April 7, 2020 that Intervenors did not violate section 337 because the asserted claims of the ’844 patent were invalid under 35 U.S.C. § 102(g)(2) and/or 35 U.S.C. § 103(a)

Of relevant law

“Priority of invention and its constituent issues of conception and reduction to practice are questions of law predicated on subsidiary factual findings.” Singh v. Brake, 317 F.3d 1334, 1350 (Fed. Cir. 2003). Patent invalidity is an affirmative defense to an action for infringement before the Commission. Mayborn, 965 F.3d at 1355 (citations omitted). “All factual propositions and inferences underlying an invalidity defense must be proven by clear and convincing evidence.” Id. (citing Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95 (2011)).

In order to establish an actual reduction to practice, the prior inventor must have (1) constructed an embodiment or performed a process that met all the limitations of the claim(s) at issue and (2) determined that the invention would work for its intended purpose. Mycogen Plant Sci. v. Monsanto Co., 243 F.3d 1316, 1332–33 (Fed. Cir 2001).7 Consistent with this second requirement and the requirement of conception that inventors must form in their minds a “definite and permanent idea of the complete and operative invention,” Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986), an alleged prior invention will not anticipate under 35 U.S.C. § 102(g) unless the alleged prior inventors “appreciated” the invention. See Dow Chem. Co. v. Astro-Valcour, Inc., 267 F.3d 1334, 1341 (Fed. Cir. 2001). Specifically, “the inventor must contemporaneously appreciate that the embodiment worked and that it met all the limitations of the [claims].” Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998). However, it is not required that “[a prior inventor] establish that he recognized the invention in the same terms as those recited in the [claims]. The invention is not the language of the [claims] but the subject matter thereby defined.” Dow Chem., 267 F.3d at 1341 (quoting Silvestri v. Grant, 496 F.2d 593, 597 (C.C.P.A. 1974)).

The patentee argued a lack of appreciation of all limitations of the claims at issue:

Ingevity argues that Intervenors did not meet their burden of establishing, by clear and convincing evidence, that the Delphi Inventors appreciated that the Delphi Prior Invention included all the limitations of claim 1 of the ’844 patent for purposes of establishing a prior reduction to practice, and thus an anticipating prior invention under § 102(g)(2).

The CAFC observed:

As noted, based upon this evidence, the ALJ found it to be a “reasonable inference” that the honeycombs contained in the Delphi Prior Invention also would have had a BWC of 3.7 g/dL, Initial Determination, 2020 WL 1026313, at *89, which the ALJ found to correlate to the IAC of below 35g/L required in the second adsorbent step limitation of claim 1. Id. at *96. We believe that the two letters and the physical auxiliary canister constitute substantial evidence that the Delphi Inventors appreciated that the honeycombs of the Delphi Prior Invention had the pertinent adsorptive capacity, regardless of whether they were defined in terms of BWC or IAC. See Dow Chem., 267 F.3d at 1341. That is, the inventors had before them, and knowingly utilized in a method that they knew worked to reduce fuel vapor emissions, an adsorbent that they had been informed met in substance the second adsorbent step of claim 1. See Mycogen, 243 F.3d at 1337 (“Although the amount of evidence regarding appreciation of each specific claim limitation is not extensive, we find that it is legally satisfactory, particularly in light of the extensive evidence establishing that Monsanto performed a process that met all of the limitations of the claims, and that the resulting product was successfully tested and appreciated to work for its intended purpose.”); see also Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1064 (Fed. Cir. 2005) (“The priority determination requires evidence that the inventor actually first made the invention, and that he understood his creation to have the features that[] comprise the inventive subject matter at bar.”).


Post a Comment

<< Home