Prior Invention as a Litigation Defense: All Claim Elements Must Be Appreciated

Intellectual Property Law

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 25º 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 Prior Invention combined with additional prior art references. The parties did not dispute that the Delphi Prior Invention satisfied the first adsorbent step element of claim 1. With respect to the second adsorbent step limitation of claim 1, the Delphi Inventors were provided with honeycombs that the ALJ determined fulfilled the second adsorbent step element of claim 1. The ALJ also ruled that the Delphi Inventors recognized that they had created a canister system that enhanced bleed emissions with respect to standard carbon canisters and did not abandon, suppress or conceal it.

Ingevity petitioned for review of the ALJ’s ruling that the Delphi Prior Invention, alone or in combination, invalidated the ’844 claims. The Commission decided not to review the ALJ’s invalidity ruling, and held there was no violation of section 337 because the claims were invalid over the Delphi Prior Invention, alone or in combination with the other prior art references.

On appeal, the Federal Circuit affirmed the holding of invalidity. 35 U.S.C. §102(g)(2)2 provides the following:

A person shall be entitled to a patent unless—
...
(g) ... (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.3.

The court explained that “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.”4 According to this second requirement, “an alleged prior invention will not anticipate under 35 U.S.C. §102(g) unless the alleged prior inventors ‘appreciated’ the invention,” the court said.5 “[T]he inventor must contemporaneously appreciate that the embodiment worked and that it met all the limitations of the [claims].”6.

Ingevity did not contend that the Delphi Prior Invention did not fulfill the elements of claim 1 of the ’844 patent. Ingevity also did not argue that Delphi did not abandon, suppress or conceal its invention. In addition, it was acknowledged that Delphi’s reduction to practice of the Delphi Prior Invention was before Ingevity’s earliest priority date. Rather, Ingevity asserted that the Intervenors did not show that the Delphi Inventors recognized that the Delphi Prior Invention incorporated all the elements of claim 1 of the ’844 patent to prove a prior reduction to practice to be eligible as an anticipating prior invention under §102(g)(2).

The court explained that Ingevity’s main argument was that the ALJ mistakenly concluded that the Delphi Inventors appreciated that the Delphi Prior Invention carried out the second adsorbent step. The court clarified:

According to Ingevity, without having contemporaneously recognized and appreciated that step, the Delphi Inventors merely accidentally duplicated the invention defined by the claims of the ’844 patent. Specifically, Ingevity argues that nowhere in his Initial Determination did the ALJ “find (or even suggest)” that the Delphi Inventors appreciated that the honeycombs in the auxiliary canister of the Delphi Prior Invention had an IAC below 35 g/L.7.

The Federal Circuit agreed with Ingevity’s view of the law, but not their conclusion:

We agree with Ingevity that Intervenors were required to prove by clear and convincing evidence that the Delphi Inventors appreciated that the auxiliary canister of the Delphi Prior Invention included an adsorbent that had an IAC of less than 35 g/L, or its correlative for purposes of this appeal: a BWC of less than 8 g/dL. . . . We conclude, however, that substantial evidence supports the finding that Intervenors carried that burden.8

The court noted that the ALJ found it to be a reasonable inference that the honeycombs incorporated in the Delphi Prior Invention also would have included a BWC of 3.7 g/dL, which was considered to be comparable to the IAC of below 35g/L required in the second adsorbent step element of claim 1.  According to the Federal Circuit:

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 1.9

The court therefore agreed with the ALJ that the Delphi Inventors appreciated that the honeycombs of the Delphi Prior Invention’s auxiliary canister possessed the claimed adsorptive capacity.

Accordingly, the Federal Circuit affirmed the Commission’s final determination that the Intervenors did not violate section 337 because the claims of the ’844 patent were invalid under 35 U.S.C. §102(g)(2) and/or 35 U.S.C. §103(a) in view of the Delphi Prior Invention...

Lessons

For all those litigators and patent prosecutors hoping to file away 35 U.S.C. §102(g), unfortunately it will still be around for quite some time since only pre-AIA patent applications filed after March 16, 2013, are not subject to §102(g). Thus, the last stage of patent applications filed under §102(g) will be expiring around 2033, not taking into account any patent term adjustments and/or litigations that assert pre-AIA patents possibly as late as 2039+/-, which would take into account the six-year statute of limitations.

In addition, a limited use of a §102(g)-like inquiry will continue to apply for post-AIA patent applications. For example, determining reduction to practice still remains an issue under, for example, new §102(a)(1), which excludes a patent where “the claimed invention was . . . in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.”10 The test for the on-sale bar includes determining whether the invention was reduced to practice, which in turn may include determinations of whether the inventors appreciated that the embodiment of the invention worked and that it met all claim elements.11

In summary, cases like Ingevity Corporation v. International Trade Commission should not be ignored. If patent owners/companies want to create a defensive prior art position for a prior use or sale, reduction to practice remains relevant, and an inventor must concurrently appreciate that the embodiment worked and that it satisfied all claim elements.


Irah Donner is a partner in Manatt’s intellectual property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.


1 Ingevity Corp. v. Int’l Trade Comm’n, No. 20-1800, --- F. App’x ----, 2021 USPQ2d 836, 2021 WL 3440786 (Fed. Cir. Aug. 6, 2021) (unpublished).

2 Id., slip op. at 3, n.2 (“This appeal is governed by 35 U.S.C. §§102(g)(2) and 103(a) as they existed prior to changes made by the America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011).”).

3 Id., slip op. at 9 (quoting 35 U.S.C. § 102(g)).

4 Id., slip op. at 9.

5 Id., slip op. at 10 (citing Dow Chem. Co. v. Astro-Valcour, Inc., 267 F.3d 1334, 1341, 60 USPQ2d 1519, 1523 (Fed. Cir. 2001)).

6 Id., slip op. at 10 (quoting Cooper v. Goldfarb, 154 F.3d 1321, 1327, 47 USPQ2d 1896, 1901 (Fed. Cir. 1998)).

7 Id., slip op. at 11 (emphasis in original).

8 Id., slip op. at 12 (citation omitted).

9 Id., slip op. at 13-14 (citing Mycogen Plant Sci., Inc. v. Monsanto Co., 243 F.3d 1316, 1337, 58 USPQ2d 1030, 1047 (Fed. Cir 2001) (“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.”); Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1064, 77 USPQ2d 1161, 1169 (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.”)).

10 35 U.S.C. §102(a)(1). Under the Leahy-Smith America Invents Act, Pub. L. No. 112-29, §3, 125 Stat. 316 (Sept. 16, 2011), 35 U.S.C. §102(g) has been removed. The amendments to 35 U.S.C. §102 apply to any patent application or patent that contains or contained at any time: (1) a claim with an effective filing date that is on or after March 16, 2013, or (2) a specific reference under 35 U.S.C. §§ 120, 121, or 365(c) to any patent or application having such a claim.

11 See Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67-68, 48 USPQ2d 1641, 1646-47 (1998) (emphasis added):

We conclude, therefore, that the on-sale bar applies when two conditions are satisfied before the critical date.
First, the product must be the subject of a commercial offer for sale. An inventor can both understand and control the timing of the first commercial marketing of his invention. . . .
Second, the invention must be ready for patenting. That condition may be satisfied in at least two ways: by proof of reduction to practice before the critical date; or by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.

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