Ingevity Corp v. MAHLE Filter Systems North America Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Ingevity Corp. and Ingevity South Carolina, LLC (Delaware)
  • Defendant: MAHLE Filter Systems North America, Inc. (Delaware)
  • Plaintiff’s Counsel: Mandell Menkes, LLC; Gibson, Dunn & Crutcher LLP
• Case Identification: 1:18-cv-06158, N.D. Ill., 09/07/2018
• Venue Allegations: Venue is alleged based on Defendant maintaining a regular and established place of business in Rockford, Illinois, and having committed alleged acts of infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant’s fuel vapor canisters, which incorporate a specific activated carbon product, infringe a patent related to multi-stage systems for reducing automotive evaporative emissions.
• Technical Context: The technology concerns activated carbon systems in automotive fuel vapor canisters designed to capture volatile organic compound (VOC) emissions to meet increasingly stringent environmental regulations.
• Key Procedural History: The asserted patent, RE38,844, is a reissue of U.S. Patent No. 6,540,815. The complaint alleges that the defendant had actual notice of the patent-in-suit as of at least March 2015, based on a memorandum of understanding between the parties, which may be relevant to the allegations of willful infringement.

Case Timeline

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

U.S. Reissue Patent No. RE38,844, "Method for Reducing Emissions From Evaporative Emissions Control Systems" (Issued Oct. 25, 2005)

The Invention Explained

• Problem Addressed: The patent addresses the problem of "diurnal breathing losses" in automotive evaporative emissions systems, where residual hydrocarbon vapor, or "heel," left on an activated carbon adsorbent after a purge cycle is slowly released as a parked vehicle experiences daily temperature changes (Compl. ¶12; ’844 Patent, col. 2:42-49). Prior art systems that excelled at capturing high-concentration vapors during refueling were less effective at preventing these low-level, persistent emissions without undesirable complexity or performance trade-offs (’844 Patent, col. 2:56-65; col. 3:1-21).
• The Patented Solution: The invention proposes a method using multiple, or staged, adsorbents. A first, "fuel source-side" adsorbent has a high working capacity for capturing large amounts of fuel vapor. This is followed by a second, "vent-side" adsorbent that has a "flat or flattened adsorption isotherm" (’844 Patent, Abstract). This second adsorbent is specifically designed to have a lower capacity for high-concentration vapors but is highly efficient at adsorbing the low-concentration vapors responsible for diurnal breathing losses, thereby acting as a guard bed to prevent their escape to the atmosphere (’844 Patent, col. 4:31-44).
• Technical Importance: This multi-stage approach was designed to enable vehicles to meet stricter emission regulations, such as California's PZEV and LEV-II standards, by specifically targeting the "residual 'heel'" problem without significantly increasing flow restriction or requiring complex heating elements (’844 Patent, col. 2:42-55).

Key Claims at a Glance

• The complaint asserts independent claims 1, 18, 31, and 43 (Compl. ¶18).
• Independent Claim 1 (Method) requires steps including:
  • contacting fuel vapor with an initial adsorbent volume having an incremental adsorption capacity greater than 35 g n-butane/L between specified concentrations.
  • contacting the vapor with at least one subsequent adsorbent volume having an incremental adsorption capacity of less than 35 g n-butane/L between the same concentrations.
• Independent Claim 31 (System) requires, among other things:
  • a canister with an initial volume of adsorbent material having an incremental adsorption capacity greater than 35 g n-butane/L.
  • a subsequent volume of adsorbent material in the flow path having an incremental adsorption capacity of less than 35 g n-butane/L.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "unlicensed multi-stage fuel vapor canisters" manufactured and sold by MAHLE (Compl. ¶18). These canisters allegedly incorporate an activated carbon product identified as "Macro-Porous Activated Carbon ('MPAC-1')" alongside at least one other activated carbon adsorbent (Compl. ¶13, 18). The complaint identifies vehicles incorporating these canisters, including the 2017 Chrysler Pacifica, 2018 Nissan Versa, 2018 Nissan Altima, 2018 Nissan Rogue, and 2018 Honda Accord (Compl. ¶15).

Functionality and Market Context

The complaint alleges these products are multi-stage fuel vapor canisters designed for use in automotive evaporative emissions control systems (Compl. ¶18, 20). The complaint provides a diagram of a representative canister from a 2017 Chrysler Pacifica, which shows an assembly with an inset identifying "MPAC at PI," suggesting the location of the accused carbon material within the canister (Compl. ¶14, p. 5).

IV. Analysis of Infringement Allegations

’844 Patent Infringement Allegations

Identified Points of Contention

• Technical Question: The central factual dispute may concern the tested properties of the materials in the accused canisters. A key question is whether evidence will show that the MAHLE canisters contain two distinct adsorbent volumes and, specifically, whether the material identified as MPAC-1 demonstrates an "incremental adsorption capacity... of less than 35 g n-butane/L" under the conditions specified in the claim. The complaint alleges this based on "information and belief" and "MAHLE tests" (Compl. ¶18).
• Scope Questions: The litigation may raise questions regarding the configuration of the accused canisters. For instance, does the alleged use of MPAC-1 and "at least one other activated carbon adsorbent" constitute the sequential flow path of a "subsequent" volume as required by the claims? The precise identity and properties of the "other activated carbon adsorbent" are not detailed in the complaint and may be a point of discovery and dispute.

V. Key Claim Terms for Construction

• The Term: "incremental adsorption capacity"
• Context and Importance: This quantitative term is the lynchpin of the asserted independent claims, as it defines the boundary between the required initial (high-capacity) adsorbent and subsequent (low-capacity) adsorbent. The entire infringement analysis hinges on whether the accused materials fall above and below the claim's "35 g n-butane/L" threshold. Practitioners may focus on this term because its definition will dictate the scope of admissible evidence regarding the performance of the accused products.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party may argue that the claim itself provides a complete definition, specifying the temperature (25° C.) and the n-butane vapor concentration range (5 vol % to 50 vol %) (’844 Patent, col. 10:37-43). This reading would suggest that any material meeting the numerical threshold under these conditions satisfies the limitation.
  • Evidence for a Narrower Interpretation: A party could argue that the term should be construed in light of the patent's disclosure, which repeatedly characterizes the subsequent adsorbent by its "flat or flattened adsorption isotherm" (’844 Patent, Abstract; col. 4:48-49). This interpretation might require not just meeting a numerical value, but also exhibiting the characteristic performance curve shape shown in the patent’s figures and achieved through the test methodologies described in the specification, such as the "Westvaco DBL test" (’844 Patent, Fig. 3; col. 8:50-52).

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement (Compl. ¶17).

• Inducement: The inducement claim is based on allegations that MAHLE's customers (automakers) directly infringe by using the accused multi-stage canisters in their vehicles. Knowledge and intent are alleged to stem from MAHLE having "actual notice of the '844 Patent since at least March 2015" via a "memorandum of understanding" with Ingevity (Compl. ¶19).
• Contributory Infringement: The complaint alleges the canisters incorporating MPAC-1 are a material part of the invention, are known to be specially made or adapted for an infringing use, and have no substantial non-infringing use (Compl. ¶20).

Willful Infringement

Willfulness is alleged based on MAHLE’s purported pre-suit knowledge of the ’844 Patent, dating back to at least March 2015, and its continued alleged infringement thereafter (Compl. ¶21).

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

• A central issue will be one of evidentiary proof: Can the plaintiff produce testing data that definitively demonstrates the accused MAHLE canisters contain two separate adsorbent materials that, under the conditions specified by the patent, fall on opposite sides of the 35 g/L "incremental adsorption capacity" threshold recited in the claims?
• A key legal battle will likely be one of claim construction: Will the term "incremental adsorption capacity" be defined purely by the numerical value in the claim language, or will its scope be narrowed to require the "flat isotherm" performance characteristic that is described in the specification as the basis for the invention's success?
• Should infringement be established, a critical question for damages will be culpability: Does the alleged March 2015 "memorandum of understanding" constitute the type of clear, pre-suit notice of infringement that could support a finding of willful misconduct?