Ingevity Corp v. MAHLE Filter Systems North America Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Ingevity Corp. (Delaware)
  • Defendant: MAHLE Filter Systems North America, Inc. (Delaware)
  • Plaintiff’s Counsel: Mandell Menkes, LLC; Gibson, Dunn & Crutcher LLP
• Case Identification: 1:18-cv-04920, N.D. Ill., 07/19/2018
• Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Illinois because Defendant maintains a regular and established place of business in Rockford, Illinois, has committed acts of infringement in the district, and a substantial part of the events giving rise to the claims occurred there.
• Core Dispute: Plaintiff alleges that Defendant’s fuel vapor canisters, which incorporate a specific type of activated carbon, infringe a patent related to multi-stage systems for reducing automotive evaporative emissions.
• Technical Context: The technology concerns activated carbon canisters used in vehicle fuel systems to capture and recycle gasoline vapors, a critical component for meeting modern environmental emissions standards.
• Key Procedural History: The complaint alleges Defendant has had actual notice of the patent-in-suit since at least March 2015, when the parties entered into a memorandum of understanding concerning the patent. The patent-in-suit is a reissue of U.S. Patent No. 6,540,815.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

• Patent Identification: U.S. Reissue Patent No. RE38,844, Method for Reducing Emissions From Evaporative Emissions Control Systems, issued October 25, 2005.
• The Invention Explained:
  • Problem Addressed: Conventional automotive emissions canisters, while effective at capturing fuel vapors during refueling, struggled to prevent low-level vapor leakage, known as "diurnal breathing losses" (DBL). This leakage occurs when a parked vehicle experiences temperature changes, and is caused by the residual hydrocarbon "heel" left on the adsorbent material even after it has been purged ('844 Patent, col. 2:42-48).
  • The Patented Solution: The invention proposes a multi-stage adsorbent system to combat DBL. It uses a standard, high-capacity carbon adsorbent in an "initial" (fuel source-side) region to handle the bulk of vapor capture, combined with a "subsequent" (vent-side) adsorbent volume that has different properties ('844 Patent, col. 3:45-55). This subsequent adsorbent is specifically designed to have a "flat or flattened adsorption isotherm," meaning it releases vapors more completely at low concentrations, thereby reducing the residual heel that causes DBL ('844 Patent, col. 3:34-44).
  • Technical Importance: This layered approach allowed vehicle manufacturers to meet increasingly stringent DBL emission targets, such as the California Air Resources Board's "PZEV" and "LEV-II" standards, without compromising the canister's overall working capacity or significantly increasing complexity ('844 Patent, col. 2:48-60).
• Key Claims at a Glance:
  • The complaint asserts independent claims 1, 18, 31, and 43 (Compl. ¶16).
  • Independent Claim 1, a method claim, includes the following essential elements:
    • A method for reducing fuel vapor emissions in automotive evaporative emissions control systems.
    • Contacting fuel vapor with an initial adsorbent volume having an incremental adsorption capacity greater than 35 g n-butane/L between specified vapor concentrations.
    • Contacting the vapor with at least one subsequent adsorbent volume having an incremental adsorption capacity less than 35 g n-butane/L between the same specified vapor concentrations.
  • The complaint does not explicitly reserve the right to assert dependent claims, but this is standard practice.

III. The Accused Instrumentality

• Product Identification: The accused products are unlicensed fuel vapor canisters manufactured, marketed, and sold by MAHLE (Compl. ¶11). These canisters allegedly incorporate a MAHLE-sourced activated carbon product known as "Macro-Porous Activated Carbon ('MPAC-1')" (Compl. ¶11).
• Functionality and Market Context: The complaint alleges these are "multi-stage fuel vapor canisters" that use MPAC-1 in combination with "at least one other activated carbon adsorbent" (Compl. ¶16). These canisters are allegedly incorporated into automobile platforms from multiple major manufacturers, including the 2017 Chrysler Pacifica, 2018 Nissan Versa, 2018 Nissan Altima, 2018 Nissan Rogue, and 2018 Honda Accord (Compl. ¶13). A diagram shows an assembled fuel vapor canister, a close-up of the granulated "MPAC at PI" material, and a "Pleated Paper Filter" (Compl. ¶12).

IV. Analysis of Infringement Allegations

’844 Patent Infringement Allegations

• Identified Points of Contention:
  • Technical Question: The central factual dispute will likely be whether MAHLE's MPAC-1 product in fact has an "incremental adsorption capacity... of less than 35 g n-butane/L" under the precise conditions recited in the claims. The complaint asserts this as a fact but does not provide supporting test data (Compl. ¶16).
  • Scope Question: Claim 1 is a method claim requiring a "contacting" step. The complaint alleges direct infringement by MAHLE (e.g., through testing) and indirect infringement through the actions of its customers. A key question for the court will be what actions by MAHLE constitute direct infringement of the method, and whether the elements of inducement and contributory infringement are sufficiently pleaded and can be proven.

V. Key Claim Terms for Construction

• The Term: "incremental adsorption capacity ... of less than 35 g n-butane/L between vapor concentrations of 5 vol % and 50 vol % n-butane"
• Context and Importance: This quantitative limitation is the defining characteristic of the required "subsequent adsorbent volume" and is central to the patent's proposed solution for reducing DBL emissions. The infringement case hinges on whether the accused MPAC-1 product falls below this specific numerical threshold. Practitioners may focus on this term because its definition—whether purely numerical or influenced by the specification's examples and purpose—will determine the scope of infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The plain language of the claim sets a clear numerical boundary ("less than 35 g.../L"). A party could argue that any material meeting this objective test, regardless of its composition or method of manufacture, falls within the claim scope.
  • Evidence for a Narrower Interpretation: The specification describes achieving this property through "volumetric dilution" with fillers or by shaping the adsorbent to create high voidage ('844 Patent, col. 5:23-28; col. 7:6-25). A party might argue that the term should be construed in light of these disclosed mechanisms. Furthermore, the patent's examples for low-capacity materials show values of 16, 18, and 24 g/L, which could be used to argue that the term implies a performance level significantly below the 35 g/L ceiling ('844 Patent, Table, col. 8).

VI. Other Allegations

• Indirect Infringement: The complaint alleges that MAHLE induces infringement by selling the accused canisters to its customers (automakers), who directly infringe when they incorporate the canisters into vehicles and use them for their intended purpose (Compl. ¶17). Contributory infringement is alleged on the basis that the MPAC-1 canisters are a material part of the invention, are known by MAHLE to be specially made for use in an infringing system, and have no substantial non-infringing use (Compl. ¶18).
• Willful Infringement: The complaint alleges that MAHLE's infringement is willful based on pre-suit knowledge of the ’844 Patent. This allegation is supported by the claim that MAHLE entered into a "memorandum of understanding with Ingevity concerning the '844 patent" in or around March 2015, more than three years before the complaint was filed (Compl. ¶¶17, 19).

VII. Analyst’s Conclusion: Key Questions for the Case

• A central evidentiary question will be one of technical proof: can Ingevity demonstrate through testing that MAHLE’s MPAC-1 product, as sold and used in the accused canisters, definitively exhibits an "incremental adsorption capacity" of less than 35 g/L under the specific conditions defined in the claims?
• The case may also turn on a question of infringement liability: given that the primary infringement of the asserted method claims occurs during the operation of a vehicle, what is the extent of MAHLE's liability? This will depend on the strength of the evidence supporting direct infringement through MAHLE's own testing versus the evidence for indirect infringement (inducement and contribution) based on its sales to automakers.
• A third core issue will be one of intent: do the facts surrounding the alleged March 2015 memorandum of understanding support a finding that MAHLE had pre-suit knowledge of the patent and acted with the specific intent required for induced infringement, and that any subsequent infringement was willful?