Certain Multi-Stage Fuel Vapor Canister Systems and Activated Carbon Components Thereof, Inv. 337-TA-1140

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In the Matter of

CERTAIN MULTI-STAGE FUEL VAPOR
CANISTER SYSTEMS AND ACTIVATED
CARBON COMPONENTS THEREOF

Investigation No. 337-TA-1140

Publication 5260 February 2022

U.S. International Trade Commission

Washington, DC 20436

U.S. International Trade Commission
COMMISSIONERS
David S. Johanson, Chairman
Rhonda K. Schmidtlein, Commissioner
Jason E. Kearns, Commissioner
Randolph J. Stayin, Commissioner
Amy A. Karpel, Commissioner
Address all communications to
Secretary to the Commission
United States International Trade Commission
Washington, DC 20436

U.S. International Trade Commission
Publication 5260 	February 2022
Washington, DC 20436
www.usitc.gov
In the Matter of
CERTAIN MULTI-STAGE FUEL VAPOR
CANISTER SYSTEMS AND ACTIVATED
CARBON COMPONENTS THEREOF
Investigation No. 337-TA-1140

UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN MULTI-STAGE FUEL
VAPOR CANISTER SYSTEMS AND
ACTIVATED CARBON COMPONENTS
THEREOF
Investigation No. 337-TA-1140
NOTICE OF COMMISSION DETERMINATION TO REVIEW IN PART, TAKE NO
POSITION ON THE ISSUES UNDER REVIEW, AND AFFIRM IN PART A FINAL
INITIAL DETERMINATION FINDING NO VIOLATION OF SECTION 337;
TERMINATION OF INVESTIGATION
AGENCY: 	U.S. International Trade Commission.
ACTION: 	Notice.
SUMMARY: Notice is hereby given that the U.S. International Trade Commission
(“Commission”) has determined to review in part the final initial determination (“ID”) issued by
the presiding administrative law judge (“ALJ”) on January 28, 2020, finding no violation of
section 337 of the Tariff Act of 1930, as amended (“section 337”), in connection with the
asserted patent. The Commission has determined to take no position on the issues under review.
The Commission has also determined to affirm the ID’s findings that the asserted patent claims
are invalid. This investigation is terminated with a finding of no violation of section 337.
FOR FURTHER INFORMATION CONTACT: Ron Traud, Office of the General Counsel,
U.S. International Trade Commission, 500 E Street SW., Washington, DC 20436, telephone 202-
205-3427. Copies of non-confidential documents filed in connection with this investigation may
be viewed on the Commission’s electronic docket (EDIS) at https://edis.usitc.gov. For help
accessing EDIS, please email EDIS3Help@usitc.gov. General information concerning the
Commission may also be obtained by accessing its Internet server at
https://www.usitc.gov. Hearing-impaired persons are advised that information on this matter can
be obtained by contacting the Commission’s TDD terminal, telephone 202-205-1810.
SUPPLEMENTARY INFORMATION: The Commission instituted this investigation on
December 14, 2018, based on a complaint filed by Ingevity Corp. and Ingevity South Carolina,
LLC, both of North Charleston, South Carolina (together, “Ingevity”). 83 FR 64356. The
complaint, as supplemented, alleged violations of section 337 in the importation into the United
States, the sale for importation, and the sale within the United States after importation of certain
multi-stage fuel vapor canister systems and activated carbon components thereof by reason of
infringement of certain claims of U.S. Patent No. RE38,844 (“the ’844 patent”). Id. The
Commission’s notice of investigation named as respondents MAHLE Filter Systems North

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America, Inc. of Murfreesboro, Tennessee; MAHLE Filter Systems Japan Corp. of Saitama,
Japan; MAHLE Sistemas de Filtracion de Mexico de C.V. of Monterrey, Mexico; MAHLE Filter
Systems Canada, ULC of Tilbury, Canada (altogether, “MAHLE”); Kuraray Co., Ltd. of Tokyo,
Japan (“Kuraray”); Kuraray America, Inc. of Houston, Texas; and Nagamine Manufacture Co.,
Ltd. of Manno, Japan (“Nagamine”). Id. The Commission subsequently amended the complaint
and notice of investigation to add Calgon Carbon Corporation (“Calgon”) as a respondent and to
remove Kuraray America, Inc. as a respondent. 84 FR 11555 (Mar. 27, 2019). The remaining
respondents are collectively referred to herein as “Respondents.” The Office of Unfair Import
Investigations is not participating in this investigation. 83 FR 64356.
On January 28, 2020, the ALJ issued the final ID, which finds that Respondents did not
violate section 337. More particularly, the final ID found, inter alia: (1) Ingevity, its customers,
and operators of the domestic industry articles have been shown to practice the asserted claims of
the ’844 patent; (2) t he domestic industry requirement is satisfied with respect to the ’844 patent;
(3) Respondent MAHLE directly and/or indirectly infringes the asserted claims of the ’844 patent ;
(4) Respondents Kuraray and Nagamine indirectly infringe the asserted claims; (5) the asserted
claims of the ’844 patent have been shown to be invalid under 35 U.S.C. 102 and/or 35 U.S.C. 103
over the Delphi prior invention, or the combination of the Delphi prior invention with other
references ; (6) the asserted claims of the ’844 patent have been shown to be invalid under 35 U.S.C.
102 and/or 35 U.S.C. 103 over Meiller and/or Park and other references ; (7) independent claim 18
of the ’844 patent , and those depending therefrom, have been shown to be invalid under 35 U.S.C.
112 for indefiniteness, but independent claims 1, 31, and 43, and those depending therefrom, have
not been shown to be invalid under 35 U.S.C. 112 for indefiniteness; and (8) patent exhaustion does
not bar Ingevity’s sought relief.
On February 10, 2020, the private parties filed petitions for review of the final ID, and on
February 18, 2020, the private parties filed responses.
Having examined the record in this investigation, including the final ID, the petitions for
review, and the responses thereto, the Commission has determined to review the final ID in part.
In particular, the Commission has determined to review the following issues:
(1) 	Whether the asserted claims are invalid under 35 U.S.C. 103 over
Meiller and/or Park and other references.
(2) 	Whether the asserted claims are invalid under 35 U.S.C. 112 for
indefiniteness related to the claim terms identified by the parties as the
Volume Terms, including the final ID’s discussion of the scope of the
Volume Terms.
(3) 	Whether the accused products infringe the asserted claims of the
’844 patent, and whether Respondents indirectly infringe the asserted
claims of the ’844 patent.
(4) 	Whether Ingevity’s sale of its HCA carbons to MAHLE that are
later incorporated into a subset of Accused Canisters that also contain
BAX carbons exhausts Ingevity’s patent rights as to those Accused
Canisters.

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(5) 	Whether Ingevity satisfied the domestic industry requirement of
section 337.
(6) 	Whether Ingevity demonstrated satisfaction of the importation
requirement of section 337, as set forth in the final ID beginning on page
34 through the carryover paragraph on page 35.
(7) 	Whether Ingevity illegally tied the sales of its products to allowing
its customers to practice the ’844 patent.
The Commission has determined to not review the remainder of the final ID.
The Commission has determined to take no position on the issues under review.
Accordingly, this investigation is terminated with a finding of no violation of section 337 based
on the unreviewed findings of the final ID that the asserted claims have been shown to be invalid
under 35 U.S.C. 102 and/or 35 U.S.C. 103 over the Delphi prior invention, or the combination of the
Delphi prior invention with other references. This investigation is hereby terminated.
The authority for the Commission’s determination is contained in section 337 of the
Tariff Act of 1930, as amended (19 U.S.C. 1337), and in Part 210 of the Commission’s Rules of
Practice and Procedure (19 CFR part 210).
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: 	April 7, 2020

CERTAIN MULTI-STAGE FUEL VAPOR CANISTER
SYSTEMS AND ACTIVATED CARBON COMPONENTS
THEREOF
Inv. No. 337-TA-1140
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached NOTICE has been served upon
the following parties as indicated, on 4/7/2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Ingevity Corp. and Ingevity South
Carolina, LLC:
Jeff Thomas, Esq.
GIBSON, DUNNN & CRUTCHER LLP
1050 Connecticut Avenue, N.W.
Washington, DC 20036-5306
Email: jtthomas@gibsondunn.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability to Download
On Behalf of Respondents MAHLE Filter Systems North
America, Inc., MAHLE Filter Systems Japan Corp., MAHLE
Sistemas de Filtracion de Mexico S.A. de C.V., and MAHLE
Filter Systems Canada, ULC:
David A. Hickerson, Esq.
FOLEY & LARDNER LLP
Washington Harbour 3000 K Street, N.W.
Washington, D.C. 20007
Email: DHickerson@foley.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability to Download
On Behalf of Respondents Nagamine Manufacturing Co.,
Ltd., Kuraray Co., Ltd., and Calgon Carbon Corporation:
Goutam Patnaik, Esq.
PEPPER HAMILTON LLP
2000 K Street, NW
Suite 600
Washington, D.C. 20006
Email: patnaikg@pepperlaw.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification
of Availability to Download

UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN MULTI-STAGE FUEL VAPOR
CANISTER SYSTEMS AND ACTIVATED
CARBON COMPONENTS THEREOF
Inv. No. 337-TA-1140
INITIAL DETERMINATION ON VIOLATION OF SECTION 337 AND
RECOMMENDED DETERMINATION ON REMEDY AND BOND
Administrative Law Judge Cameron Elliot
(January 28, 2020)
Pursuant to the Notice of Investigation and Rule 210.42(a) of the Rules of Practice and
Procedure of the United States International Trade Commission, this is my Initial Determination
in the matter of Certain Multi-Stage Fuel Vapor Canister Systems and Activated Carbon
Components Thereof, Investigation No. 337-TA-1140.

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TABLE OF CONTENTS 	Page
I. 	INTRODUCTION............................................................................................................. 1
A. 	Procedural Background ............................................................................................1
B. 	The Parties ...............................................................................................................3
C. 	The Asserted Patent and Claims ..............................................................................6
D. 	Products at Issue ......................................................................................................8
1. 	Domestic Industry Products .........................................................................8
2. 	Accused Products .........................................................................................9
II. 	STANDARDS OF LAW ................................................................................................. 10
A. 	Standing .................................................................................................................10
B. 	Inventorship ...........................................................................................................10
C. 	Claim Construction ................................................................................................11
D. 	Infringement ...........................................................................................................15
E. 	Domestic Industry ..................................................................................................18
1. 	Technical Prong .........................................................................................18
2. 	Economic Prong .........................................................................................19
F. 	Invalidity ................................................................................................................21
1. 	35 U.S.C. § 102 ..........................................................................................21
2. 	35 U.S.C. § 103 ..........................................................................................22
3. 	35 U.S.C. § 112 ..........................................................................................24
G. 	Patent Misuse .........................................................................................................26
H. 	Patent Exhaustion...................................................................................................28
I. 	Inventorship ...........................................................................................................28
III. 	JURISDICTION AND IMPORTATION ..................................................................... 29
IV. 	U.S. PATENT NO. RE38,844 ......................................................................................... 35
A. 	Level of Ordinary Skill in the Art ..........................................................................35
B. 	Claims-at-Issue ......................................................................................................38
C. 	Claim Construction ................................................................................................43
1. 	“Hollow Cylinder” .....................................................................................44
2. 	Claim Preambles ........................................................................................46
3. 	35 U.S.C. § 112, ¶ 2 (Indefiniteness) .........................................................47
a. 	Volume Terms ...............................................................................48

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b. 	IAC Calculations ............................................................................58
D. 	Infringement ...........................................................................................................64
1. 	Direct Infringement ....................................................................................66
a. 	Undisputed Claims .........................................................................67
b. 	Disputed Claims .............................................................................67
2. 	Indirect Infringement .................................................................................99
a. 	MAHLE .........................................................................................99
b. 	Kuraray ........................................................................................105
c. 	Nagamine .....................................................................................107
E. 	Domestic Industry – Technical Prong..................................................................108
1. 	Articles “Protected” by the 844 Patent ....................................................109
2. 	Claim Analysis .........................................................................................118
a. 	Preliminary Issues ........................................................................122
b. 	Undisputed Claims .......................................................................123
c. 	Disputed Claims ...........................................................................126
F. 	Validity and Enforceability ..................................................................................134
1. 	Delphi Prior Invention .............................................................................136
2. 	Williams ...................................................................................................154
3. 	Meiller ......................................................................................................155
4. 	Secondary Considerations ........................................................................164
5. 	35 U.S.C. § 112, ¶ 1 (Enablement) ..........................................................167
6. 	35 U.S.C. § 112, ¶ 1 (Written Description) .............................................170
7. 	Improper Inventorship .............................................................................171
8. 	Patent Misuse ...........................................................................................173
a. 	Tying Arrangements ....................................................................174
b. 	Supply Agreements ......................................................................177
9. 	Patent Exhaustion.....................................................................................179
V. 	DOMESTIC INDUSTRY - ECONOMIC PRONG ................................................... 182
A. 	Qualifying Expenditures ......................................................................................183
1. 	Subsection (A), Plant and Equipment ......................................................183

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a. 	Ingevity Investments ....................................................................183
b. 	Licensee Investments ...................................................................197
2. 	Subsection (B), Labor and Capital ...........................................................206
a. 	Ingevity Investments ....................................................................206
b. 	Licensee Investments ...................................................................213
3. 	Subsection (C), Research and Development ............................................217
B. 	“Significant” or “Substantial” ..............................................................................220
VI. 	CONCLUSIONS OF LAW .......................................................................................... 225
VII. 	RECOMMENDED DETERMINATION ON REMEDY AND BOND ................... 226
A. 	Limited Exclusion Order......................................................................................227
B. 	Cease and Desist Order ........................................................................................230
C. 	Bond .....................................................................................................................233
VIII. 	INITIAL DETERMINATION AND ORDER ........................................................... 235

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TABLE OF ABBREVIATIONS
CDX 	Complainants’ Demonstrative Exhibit
CIB 	Complainants’ Revised Initial Post-Hearing Brief
CPB 	Complainants’ Pre-Hearing Brief
CPX 	Complainants’ Physical Exhibit
CRB 	Complainants’ Reply Post-Hearing Brief
CX 	Complainants’ Exhibit
Dep. Tr. 	Deposition Transcript
Hr’g Tr. 	Hearing Transcript
JX 	Joint Exhibit
RDX 	Respondents’ Demonstrative Exhibit
RIB 	Respondents’ Initial Post-Hearing Brief
RPB 	Respondents’ Pre-Hearing Brief
RPX 	Respondents’ Physical Exhibit
RRB 	Respondents’ Reply Post-Hearing Brief
RX 	Respondents’ Exhibit

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I. 	INTRODUCTION
A. 	Procedural Background
Complainants Ingevity Corp. and Ingevity South Carolina, LLC (altogether “Ingevity” or
“Complainants”) filed the complaint underlying this Investigation on November 8, 2018. 	The
complaint alleged respondents MAHLE Filter Systems North America, Inc., MAHLE Filter
Systems Japan Corp., MAHLE Sistemas de Filtración de México S.A. de C.V., MAHLE Filter
Systems Canada, ULC (altogether “MAHLE”), Kuraray Co., Ltd., Kuraray America, Inc., and
Nagamine Manufacturing Co., Ltd. (“Nagamine”) import certain products that infringe one or
more claims of U.S. Patent No. RE38,844 (“the 844 patent” or “the Asserted Patent”).
By publication of a notice in the Federal Register on December 14, 2018, the U.S.
International Trade Commission ordered that:
Pursuant to subsection (b) of section 337 of the Tariff Act of 1930, as
amended, an investigation be instituted to determine whether there is a
violation of subsection (a)(1)(B) of section 337 in the importation into the
United States, the sale for importation, or the sale within the United States
after importation of products identified in paragraph (2) by reason of
infringement of one or more of claims 1-5, 8, 11, 13, 15, 18, 19, 21, 24, 28,
31, 33, 36, 38, 40, 43, 45, 48, 50, and 52 of the ’844 patent; and whether an
industry in the United States exists as required by subsection (a)(2) of
section 337[.]
83 Fed. Reg. 64,356 (Dec. 14, 2018). 	On February 26, 2019, the presiding administrative law
judge set a target date of May 28, 2020 for completion of this investigation via initial
determination. 	Order No. 4. 	Upon motion from Ingevity, and also on February 26, 2019, the
administrative law judge amended the notice of investigation to add additional respondent Calgon
Carbon Corporation (“Calgon” or “CCC”) and remove Kuraray America, Inc also via initial

2
determination. Order No. 5. On March 20, 2019 and March 22, 2019, the Commission determined
not to review either Order No. 4 or Order No. 5, respectively. EDIS Doc. IDs 670666, 670922.1
On March 6, 2019, the presiding administrative law judge set a Markman hearing date of
June 4, 2019 and the evidentiary hearing for November 4-8, 2019. Order No. 6. On March 18,
2019, upon submission from the parties, the presiding administrative law judge moved the
evidentiary hearing to November 18-22, 2019. 	Order No. 7. 	On April 2, 2019, the presiding
administrative law judge reassigned the investigation to me. EDIS Doc. ID 671952.
On June 4, 2019, I held a technology tutorial and Markman hearing, and on June 21, 2019,
issued Order No. 15, construing certain terms of the Asserted Patent.
On September 19, 2019, Ingevity moved for partial summary determination on a number
of issues (Motion Dkt. No. 1140-022) which I granted-in-part via initial determination on October
10, 2019 (Order No. 29)—an initial determination the Commission determined not to review
(EDIS Doc. ID 692903).
On November 18-22, 2019, I held an evidentiary hearing. 	On November 18-19,
specifically, I alerted the parties’ of a discrepancy between the listing of asserted claims in the
notice of investigation and the content of the parties’ pre-hearing briefs. Hr’g Tr. at 139:14-141:3,
350:4-21. 	In that discussion, Ingevity explained it withdrew claims 15, 28, 40, and 52 from its
allegations of infringement and I determined to treat this explanation as an oral motion to terminate
the investigation with respect to those claims. See id. Respondents indicated they did not oppose
the withdrawal. See id. I granted the motion (see id.), thereby terminating this investigation with
respect to those claims, and that determination is part of this final initial determination.
1 	For the purposes of this initial determination, Kuraray Co., Ltd. and Calgon will be referred
together as “Kuraray” (see RIB at xi); and MAHLE, Kuraray, and Nagamine will be referred to
altogether as “Respondents.”

Following the evidentiary hearing, and pursuant to the procedural schedule, the parties
submitted initial and reply post-hearing briefs on December 6, 2019 and December 16, 2019
respectively. As of the date of this initial determination, no motions remain pending.

B. The Parties

Complainant Ingevity Corp. is a United States corporation organized and existing under
the laws of Delaware and having its principal place of business in North Charleston, SC. EDIS
Doc. ID 671535 at 3-4. Ingevity Corp. manufactures and sells activated carbon products (CX-
0911C at Q/A 17) and wholly owns subsidiaries Ingevity South Carolina LLC, Ingevity Virginia
Corp., and Ingevity Georgia LLC (CIB at 107). Ingevity Corp. handles the customers and sales of
these products for these subsidiaries, which themselves operate the manufacturing plants in
Covington, VA, Wickliffe, KY, and Waynesboro, GA. CIB at 51 (citing CX-0911C at Q/A 30-
41); RIB at 101. In this way, and according to Ingevity, Ingevity Corp. “controls the use of the
[844 patent] by overseeing its use by customers and granting licenses or authorizing others to
practice the Patent” even though the 844 patent is technically owned by Ingevity South Carolina
LLC. See CIB at 50-52 (citing, inter alia, CX-0911C at Q/A 138-45, 18-120).

Complainant Ingevity South Carolina LLC also exists under the laws of Delaware and has
its principal place of business in North Charleston, SC. EDIS Doc. ID 671535 at 3-4. As
mentioned, Ingevity South Carolina LLC 1s the owner of the 844 patent (CX-0911C at Q/A 12;
RIB at 102) and a wholly owned subsidiary of Ingevity Corp. as Ingevity Corp. is its sole member.
Id. at Q/A 13. One of Ingevity’s officers, Mr. Ed Woodcock, testified that because of Ingevity

Corp.’s status as the sole member of Ingevity South Carolina LLC:

Id. Mr. Woodock further notes “all of Ingevity Corporation’s officers Po

Po Id. at Q/A 14. At the evidentiary hearing, Mr. Woodock
clarified that Ingevity South Carolina LLC “does contain employees, operations assets” only that
these employees and assets work in the Pe which “is completely
spac $s
Po Hr’g Tr. at 25:2-16. In this way, and relevant to this investigation,
ee
Gc X-0911c at QA 16.

Respondent MAHLE Filter Systems North America, Inc. (““MAHLE America”) is a
company organized and existing under the laws of Delaware and has its principal place of business
in Troy, MI with an additional business location in Murfreesboro, TN. EDIS Doc. ID 666047 at
5-6. MAHLE America “designs, develops, manufactures, tests, offers for sale and sells certain
multi-stage fuel vapor canister systems in the United States.” Jd. at 6. MAHLE America
manufactures fuel vapor canisters contaiming carbon adsorbents in the Murfreesboro, TN location.
RX-0370C at Q/A 132. Ingevity supplies the carbon adsorbents used in many of these canisters
(RX-0369C at Q/A 28-30) as do respondents Kuraray and Nagamine (discussed below) (id. at Q/A
31-34).

Respondent MAHLE Filter Systems Japan Corp. (“MAHLE Japan”) is a company
organized and existing under the laws of Japan, with a principal place of business in Tokyo, Japan.
EDIS Doc. ID 666047 at 6-7. MAHLE Japan “designs, develops, manufactures, tests, offers for

sale, and sells certain multi-stage fuel vapor canister systems.” Jd. at 7.

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Respondent MAHLE Sistemas de Filtración de Mexico S.A. de C.V. (“MAHLE Mexico”)
is a company organized and existing under the laws of Mexico, with a principal place of business
in Monterrey, Mexico. EDIS Doc. ID 666047 at 7. MAHLE Mexico “manufactures, offers for
sale, and sells certain multi-stage fuel vapor canister systems.” Id.
Respondent MAHLE Filter Systems Canada ULC (“MAHLE Canada”) is a company
organized and existing under the laws of Canada, with a principal place of business in Tilbury,
Canada. EDIS Doc. ID 666047 at 8. MAHLE Canada “manufactures, offers for sale, and sells
certain multi-stage fuel vapor canister systems.” Id.
Respondent Kuraray Co., Ltd. (“Kuraray Japan”) is a corporation organized and existing
under the laws of Japan with a principal place of business in Tokyo, Japan. EDIS Doc. ID 669652
at 6. Kuraray Japan is a manufacturer of MPAC-1 (“MPAC-1” or “MPAC”), the carbon adsorbent
at the center of this investigation. RX-0370C at Q/A 127-128; RX-0378C at Q/A 45-46. Kuraray
Japan also buys MPAC from Nagamine, discussed below. RX-0378C at Q/A 39.
Respondent Calgon Carbon Corporation is a company organized and existing under the
laws of Delaware, with a principal place of business in Moon Township, PA. 	EDIS Doc. ID
669652 at 6; EDIS Doc. ID 669648 at 6. Calgon is a wholly owned subsidiary of Kuraray. JX-
0226C at 18:7-12. Calgon supplies MPAC-1 to MAHLE. RX-0370C at Q/A 130.
Respondent Nagamine Manufacturing Co., Ltd. is a company organized and existing under
the laws of Japan, with a principal place of business in Kagawa-pref., Japan. EDIS Doc. ID 665433
at 6. Nagamine manufactures MPAC and sells it exclusively to Kuraray. RX-0378C at Q/A 39-
48.

Cc. The Asserted Patent and Claims
The Asserted Patent relates to apparatuses and methods for providing multiple layers, or
stages, of adsorbents in automotive evaporative emissions canisters. The following claims are at

issue in this investigation:

Infringement Claims Domestic Industry Claims
1-5, 8, 11, 13, 18, 19, 21, 24, 31, 33, | 1-5, 8, 11-14, 16, 18, 19, 21, 24-27,
36, 38, 43, 45, 48, and 50 29, 31, 33, 36, 37, 38, 39, 41, 43, 45,

48, 49, 50, 51, and 53

See CIB at 6, 34-43.

The 844 patent is entitled, “Method for Reducing Emissions from Evaporative Emissions
Control Systems.” JX-0001 (also cited herein as “844 patent”). The application leading to the 844
patent was filed on October 21, 2003, and claims priority to a provisional application, 60/335,897,
filed on November 21, 2001. Jd. As indicated in its patent number, the 844 patent is a re-issue of
U.S. Patent No. 6,540,815, and re-issued on October 25, 2005. Jd.

By way of background, gasoline evaporation from motor vehicle fuel systems “is a major
potential source of hydrocarbon air pollution.” 844 patent at 1:28. Such emissions may occur
when “‘a vehicle has been parked and subjected to diurnal temperature changes over a period of
several days.” Jd. at 2:45-46. 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. Vapor
emissions arising from this process are known as diurnal breathing loss emissions. See id. at 2:49.

Diurnal breathing loss emissions can be reduced by “canister systems” placed in the vent
conduit “that employ activated carbon to adsorb and hold the vapor.” 844 patent at 1:33-34.
Adsorption is the process by which, in this case, gasoline vapor molecules weakly attach

themselves to the adsorbent material in the canister. The adsorbent material is not limited to

7
activated carbon, but may consist of various organic and inorganic materials. 	See id. at 9:5-63.
Vapor molecules are released, or desorbed, from the adsorbent material when fresh air flows from
the atmosphere into the canister via the fuel tank vent. 	Although desorption occurs on a daily
cycle in the case of diurnal breathing losses, it may also occur when the vehicle engine is operating.
This is because the canister system contains a “vacuum purge connection” which pulls air through
the canister and into the engine air intake, and in the process causes vapor molecules to diffuse
into the purge air. See id. at 1:62-63.
The 844 patent discloses the use of multiple layers, or stages, of adsorbents, with successive
stages possessing distinct adsorption characteristics. 844 patent at Abstract. In particular:
On the fuel source-side of the canister, standard high working capacity
carbons are preferred. On the vent-side, the preferred adsorbent volume
exhibits a flat or flattened adsorbent isotherm on a volumetric basis in
addition to certain characteristically desirable adsorptive properties across
broad vapor concentrations, specifically relatively low incremental capacity
at high concentration vapors compared with the fuel source-side adsorbent
volume.
Id. at 3:46-53. 	Two approaches to achieving such “a flat or flattened adsorbent isotherm on a
volumetric basis” are taught. Id. at 3:43-64. One approach comprises “employ[ing] an adsorbent
with the desired isotherm properties” near the vent, that is, using a vent-side adsorbent material
having a “relatively low incremental capacity at high concentration vapors compared with the fuel
source-side adsorbent volume.” Id. at 3:46-53, 3:57-58.
Several key claim terms generally pertain to the other approach: “a filler and/or bed
voidages as a volumetric diluent.” 844 patent at 3:55-56. The 844 patent refers to this approach
as “volumetric dilution.” Id. at 7:7. Volumetric dilution may be accomplished by adding a non-
adsorbing filler to the adsorbent material, forming the adsorbent into a “high voidage shape,” or
using inert spacer particles, foams, fibers, and screens external to the adsorbent material, among
other techniques. Id. at 10:6-24.

It stands undisputed that complainant Ingevity South Carolina LLC is the owner of the 844
patent. RIB at 102 (citing 844 patent; CX-0295C at § 54; CX-0911C at Q/A 12; RX-0382C at
Q/A 60).

D. Products at Issue

1. Domestic Industry Products

In its explanation of domestic industry, Ingevity has created two classes of products to
which it assigns the moniker “domestic industry” or “DT”: (1) “DI Products” which are the carbons
Ingevity produces and sells, both high and low IAC-types (CIB at xiv, 48-49); and (2) “DI
Canisters” which are canisters that contain one or more “DI Products” within their compartments
and which are produced and sold by non-Ingevity entities (id. at xiv, 35-36). The constituents of

these two classes are summarized below:

Ingevity’s “DI Products”

BAX 1100, BAX 1100LD, BAX 1500, BAX 1700, BAX LBE, HCA, HCA LBE

Ingevity’s “DI Canisters”
Futaba 17300TLC A022M1; 17300TLA A022M1; 42035AL01C
Leehan 31400-F3500; 31400-S2500; 31400-D5500; 31400-D5600; 31400-

$9000; 31400-H9500; 31400-H9600; 31400-M7600; 3QF201797A

Stant ACO-8355; AAO-8355; ACO-8214; POR-AAO-8214; ACO-7452:;
AAO-6974; AAO-7412; AAO-8378; ASO-4937-1; ASO-4505-1;

0212025061; AAO-8156

Kayser 42698919; 42702737; 84493688; 84359221; 84316430; 84407925;
84413230; 84410850; 52029 779AB; 52029 779AD; 52029 780AD;

68350 418AA

9
MAHLE
CIB at xiv, 35-36 (citing CX-0909C at Q/A 2072-2077). Within this initial determination, and to
keep a consistency with Ingevity’s presentation of the issues, I will use the same identifiers for
each class of products as Ingevity has; i.e., “DI Products” to refer to Ingevity’s carbons, and “DI
Canisters” to refer to canisters.
2. 	Accused Products
The accused products in this case are canisters manufactured and sold by respondent
MAHLE (see CIB at 11-12) and containing, inter alia, an MPAC adsorbent manufactured and sold
by respondents Kuraray and Nagamine (see id. at 31-34). 	The MAHLE part numbers for the
accused 	products 	are 	as 	follows: 	72143779, 72144286, 	72143181, 	72143330, 	72142062,
72142611, 	72144043, 	72143724, 	72144116, 	72143254, 	72143506, 	72143638, 	72144272,
72143778, 72143303, 72144283, 72144313, 72143123, and F6235-011. 	Id. at 11-12; RIB at x
(citing CX-0909C at Q/A 78). All of the foregoing are referred to in this initial determination as
the “Accused Products.”
Further, Ingevity, through its initial post-hearing brief and expert’s witness statement,
identifies a first subset of the Accused Products as manufactured by MAHLE within the United
States. See generally CIB at xiii; CX-0909C at Q/A 1953. Ingevity identifies a second subset as
manufactured by MAHLE outside the United States. See generally CIB at xiii; CX-0909C at Q/A
1955. Although Ingevity has not been entirely consistent in delineating between the members of
the two groups (CIB at xiii (listing 72143303, 72144283, 72144286, 72144313, and F6235-
011/F62350911 as domestic, imported, and not within the larger “Accused Domestic Canisters”
group), CX-0909C at Q/A 1953 (listing licensed product 72142079)), I divine the following

classification from the record and will refer to the two groups in this initial determination as the

“Domestic Accused Products” and “Foreign Accused Products”:

“Domestic Accused Products”

72143779; 72143181; 72143330; 72142062; 72142611; 72144043; 72143724; 72144116;

72143254; 72143506; 72143638; 72144272; 72143423

“Foreign Accused Products”

72144286; 72143778; 72143303; 72144283; 72144313; F6235-011

See generally CIB at xii, 11-12 (Table A); CX-0909C at Q/A 78 (Table 3), 1953, 1955; RIB at x
(citing CX-0909C at Q/A 78 (Table 3)); RX-0370C at Q/A 86.
II. STANDARDS OF LAW

A. Standing

Commission Rule 210.12 states in relevant part “[flor every intellectual property based
complaint (regardless of the type of intellectual property involved), [the complaint must] include
a showing that at least one complainant is the owner or exclusive licensee of the subject intellectual
property.” 19 C.F.R. § 210.12(a)(7). In determining whether this rule is met, the Commission
looks to the standing requirement used by courts in patent infringement cases. Certain Audio
Processing Hardware, Software, and Products Containing the Same, Inv. No. 337-TA-1026,
Comm ’n Op. at 9 (April 18, 2018) (public version) (citations omitted).

B. Inventorship

Inventorship of a patent is presumed to be correct. Hess v. Advanced Cardiovascular Sys.,
Inc., 106 F.3d 976, 980 (Fed. Cir. 1997). The Patent Act provides a basis for invalidating a patent,

however, if it is shown that the particular inventive entity “did not himself invent the subject matter

10

11
sought to be patented.” 35 U.S.C. § 102(f) (pre-AIA). 	Accordingly, if nonjoinder of an actual
inventor is proven, a patent is rendered invalid. 	Hess, 106 F.3d at 1349 (citations omitted).
Overcoming the presumption to show nonjoinder requires proof by clear and convincing evidence.
Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1358 (Fed. Cir. 2004). 	“[A] long line of
decisions . . . holds that a person is a joint inventor only if he contributes to the conception of the
claimed invention.” Id. at 1359 (citing C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352 (Fed.
Cir. 1998)). Joint inventorship, however, also requires the alleged joint inventor to demonstrate
“that his labors were conjoined with the efforts of the named inventors.” Id.
C. 	Claim Construction
“The construction of claims is simply a way of elaborating the normally terse claim
language in order to understand and explain, but not to change, the scope of the claims.” Embrex,
Inc. v. Serv. Eng'g Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000). Although most of the disputed
claim terms were construed in an earlier order, some of the issues presented below are only
resolvable with additional claim construction. (See Order No. 15.)
Claim construction focuses on the intrinsic evidence, which consists of the claims
themselves, the specification, and the prosecution history. See Phillips v. AWH Corp., 415 F.3d
1303, 1314 (Fed. Cir. 2005) (en banc); see also Markman v. Westview Instr., Inc., 52 F.3d 967,
979 (Fed. Cir. 1995) (en banc). As the Federal Circuit in Phillips explained, courts must analyze
each of these components to determine the “ordinary and customary meaning of a claim term” as
understood by a person of ordinary skill in art at the time of the invention. 	415 F.3d at 1313.
“Such intrinsic evidence is the most significant source of the legally operative meaning of disputed
claim language.” 	Bell Atl. Network Servs., Inc. v. Covad Commc'ns Grp., Inc., 262 F.3d 1258,
1267 (Fed. Cir. 2001).

12
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
which the patentee is entitled the right to exclude.”’ 	Phillips, 415 F.3d at 1312 (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir.
2004)). 	“Quite apart from the written description and the prosecution history, the claims
themselves provide substantial guidance as to the meaning of particular claims terms.” Id. at 1314;
see Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (“In
construing claims, the analytical focus must begin and remain centered on the language of the
claims themselves, for it is that language that the patentee chose to use to ‘particularly point [ ] out
and distinctly claim [ ] the subject matter which the patentee regards as his invention.”). 	The
context in which a term is used in an asserted claim can be “highly instructive.” Phillips, 415 F.3d
at 1314. Additionally, other claims in the same patent, asserted or unasserted, may also provide
guidance as to the meaning of a claim term. Id. “Courts do not rewrite claims; instead, we give
effect to the terms chosen by the patentee.” K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed.
Cir. 1999).
“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually
it is dispositive; it is the single best guide to the meaning of a disputed term.’” Phillips, 415 F.3d
at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
“[T]he specification may reveal a special definition given to a claim term by the patentee that
differs from the meaning it would otherwise possess. In such cases, the inventor’s lexicography
governs.” Id. at 1316. “In other cases, the specification may reveal an intentional disclaimer, or
disavowal, of claim scope by the inventor.” Id. As a general rule, however, the particular examples
or embodiments discussed in the specification are not to be read into the claims as limitations. Id.
at 1323. In the end, “[t]he construction that stays true to the claim language and most naturally

13
aligns with the patent’s description of the invention will be ... the correct construction.” Id. at 1316
(quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).
In addition to the claims and the specification, the prosecution history should be examined,
if in evidence. Id. at 1317; see Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir.
2004). 	The prosecution history can “often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and whether the inventor limited the
invention in the course of prosecution, making the claim scope narrower than it would otherwise
be.” Phillips, 415 F.3d at 1317; see Chimie v. PPG Indus. Inc., 402 F.3d 1371, 1384 (Fed. Cir.
2005) (“The purpose of consulting the prosecution history in construing a claim is to exclude any
interpretation that was disclaimed during prosecution.”).
When the intrinsic evidence does not establish the meaning of a claim, then extrinsic
evidence (i.e., all evidence external to the patent and the prosecution history, including
dictionaries, inventor testimony, expert testimony, and learned treatises) may be considered.
Phillips, 415 F.3d at 1317. Extrinsic evidence is generally viewed as less reliable than the patent
itself and its prosecution history in determining how to define claim terms. Id. “The court may
receive extrinsic evidence to educate itself about the invention and the relevant technology, but the
court may not use extrinsic evidence to arrive at a claim construction that is clearly at odds with
the construction mandated by the intrinsic evidence.” Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d
973, 977 (Fed. Cir. 1999).
The construction of a claim term is generally guided by its ordinary meaning. However,
courts may deviate from the ordinary meaning when: (1) “the intrinsic evidence shows that the
patentee distinguished that term from prior art on the basis of a particular embodiment, expressly
disclaimed subject matter, or described a particular embodiment as important to the invention;” or

14
(2) “the patentee acted as his own lexicographer and clearly set forth a definition of the disputed
claim term in either the specification or prosecution history.” Edwards Lifesciences LLC v. Cook
Inc., 582 F.3d 1322, 1329 (Fed. Cir. 2009); see GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d
1304, 1309 (Fed. Cir. 2014) (“the specification and prosecution history only compel departure
from the plain meaning in two instances: lexicography and disavowal.”); Omega Eng’g, Inc, v.
Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (“[W]here the patentee has unequivocally
disavowed a certain meaning to obtain his patent, the doctrine of prosecution disclaimer attaches
and narrows the ordinary meaning of the claim congruent with the scope of the surrender.”); Rheox,
Inc. v. Entact, Inc., 276 F.3d 1319, 1325 (Fed. Cir. 2002) (“The prosecution history limits the
interpretation of claim terms so as to exclude any interpretation that was disclaimed during
prosecution.”). Nevertheless, there is a “heavy presumption that a claim term carries its ordinary
and customary meaning.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir.
2002) (citations omitted). 	The standard for deviating from the plain and ordinary meaning is
“exacting” and requires “a clear and unmistakable disclaimer.” Thorner v. Sony Computer Entm’t
Am. LLC, 669 F.3d 1362, 1366-67 (Fed. Cir. 2012); see Epistar Corp. v. Int’l Trade Comm’n, 566
F.3d 1321, 1334 (Fed. Cir. 2009) (requiring “expressions of manifest exclusion or restriction,
representing a clear disavowal of claim scope” to deviate from the ordinary meaning) (citation
omitted).
The introductory language to a claim, known as its preamble, may or may not be treated as
a limitation of the claim. It does so when it “recites essential structure or steps, or is ‘necessary to
give life, meaning, and vitality to the claim.’” Acceleration Bay, LLC v. Activision Blizzard Inc.,
908 F.3d 765, 770 (Fed. Cir. 2018) (citing Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289
F.3d 801, 808 (Fed. Cir. 2002)). It does not become a limitation when, for example, it “merely

15
describe[s] intended uses for what is otherwise a structurally complete invention [and] do not
impart any structure into or serve as antecedents for the claims at issue.” Id. at 771.
One technique patent drafters employ is to use a claim’s preamble to recite those elements
of the invention that were known or in the prior art, and then discuss the allegedly inventive
elements in the body of the claim, in order to better distinguish those inventive aspects. This is
known as a Jepson claim. See Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022,
1029 (Fed. Cir. 2002). Use of the Jepson claim “evidences the intention ‘to use the preamble to
define, in part, the structural elements of [the] claimed invention.’” Id. (citing Rowe v. Dror, 112
F.3d 473, 479 (Fed. Cir. 1997)). “Thus, the preamble is a limitation in a Jepson-type claim.” Id.;
see Howmedica Osteonics Corp. v. Wright Medical Tech., Inc., 540 F.3d 1337, 1344-45 (Fed. Cir.
2008) (holding the Jepson format preamble “is a separate limitation from the geometric
requirements appearing the body of the claim”).
D. 	Infringement
“An infringement analysis entails two steps. The first step is determining the meaning and
scope of the patent claims asserted to be infringed. The second step is comparing the properly
construed claims to the device accused of infringing.” Markman, 52 F.3d at 976.
A patentee may prove infringement either literally or under the doctrine of equivalents.
Infringement of either sort must be proven by a preponderance of the evidence. 	SmithKline
Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988). A preponderance of
the evidence standard “requires proving that infringement was more likely than not to have
occurred.” Warner-Lambert Co. v. Teva Pharm. USA, Inc., 418 F.3d 1326, 1341 n.15 (Fed. Cir.
2005).

16
Literal infringement, a form of direct infringement, is a question of fact. Finisar Corp. v.
DirecTV Group, Inc., 523 F.3d 1323, 1332 (Fed. Cir. 2008). “To establish literal infringement,
every limitation set forth in a claim must be found in an accused product, exactly.” 	Microsoft
Corp. v. GeoTag, Inc., 817 F.3d 1305, 1313 (Fed. Cir. 2016) (quoting Southwall Techs., Inc. v.
Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995). If any claim limitation is absent, there is
no literal infringement of that claim as a matter of law. Bayer AG v. Elan Pharm. Research Corp.,
212 F.3d 1241, 1247 (Fed. Cir. 2000).
Doctrine of equivalents is also a form of direct infringement. One rubric for evaluating if
a claimed feature is not literally, but nonetheless equivalent to, a claimed feature is known as the
function-way-result test. Under this test, the accused feature is equivalent to the claim limitation
when “it performs substantially the same function in substantially the same way to obtain the same
result.” 	Duncan Parking Techs., Inc. v. IPS Grp., Inc., 914 F.3d 1347, 1362 (Fed. Cir. 2019)
(quoting Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950)). Another
test is known as in the insubstantial differences test, where “[a]n element in the accused device is
equivalent to a claim limitation if the only differences between the two are insubstantial.” Voda
v. Gordia Corp., 536 F.3d 1311, 1139 (Fed. Cir. 2008). The Supreme Court has further instructed,
“the proper time for evaluating equivalency . . . is at the time of infringement, not at the time the
patent was issued.” 	Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 37
(1997).
In addition to direct infringement, Section 271 of the Patent Act also defines two categories
of indirect infringement, active inducement of infringement and contributory infringement. 	35
U.S.C. § 271. 	For indirect infringement violations under Section 337, the direct infringement
element may occur after importation, so long as all the other elements of indirect infringement are

17
met at the time of importation. See Certain Vision-Based Driver Assistance System Cameras and
Components Thereof, Inv. No. 337-TA-907, Comm’n Op. at 19 (Dec. 1, 2015) (citing Suprema,
Inc. v. Int’l Trade Comm’n, 796 F.3d 1338, 1348 (Fed. Cir. 2015)). It is well settled that “[a]bsent
direct infringement of the patent claims, there can be neither contributory infringement ... nor
inducement of infringement.” 	Met–Coil Sys. Corp. v. Korners Unltd., Inc., 803 F.2d 684, 687
(Fed.Cir.1986) (citations omitted).
As to the first category, Section 271(b) of the Patent Act prohibits inducement: “[w]hoever
actively induces infringement of a patent shall be liable as an infringer.” 35 U.S.C. § 271(b). See
DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1305 (Fed. Cir. 2006) (en banc) (“To establish
liability under section 271(b), a patent holder must prove that once the defendants knew of the
patent, they actively and knowingly aided and abetted another’s direct infringement.”) (citations
omitted). 	“The mere knowledge of possible infringement by others does not amount to
inducement; specific intent and action to induce infringement must be proven.” 	Id. (citations
omitted). 	A defendant’s belief regarding patent validity is not a defense to a claim of induced
infringement. 	Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920 (2015). 	Similarly, a
defendant’s willful blindness on the question of infringement will satisfy the knowledge
requirement. Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 765, 768-771 (2011).
As to the second category, Section 271(c) of the Patent Act prohibits contributory
infringement. See 35 U.S.C. § 271(c). “Under 35 U.S.C. § 271(c), a party who sells a component
with knowledge that the component is especially designed for use in a patented invention, and is
not a staple article of commerce suitable for substantial noninfringing use, is liable as a
contributory infringer.” Wordtech Sys., Inc. v. Integrated Networks Solutions, Inc., 609 F.3d 1308,
1316 (Fed. Cir. 2010). Contributory infringement is premised upon a finding that: (1) the entity

18
sells, offers to sell, or imports into the United States a component of a product; (2) the component
has no substantial non-infringing use; (3) the component constitutes a material part of the claimed
invention; (4) the entity was aware of the patent and knew that the product may be covered by a
claim of the patent; and (5) the use of the component in the product directly infringes the claim.
See Certain Gaming & Entm’t Consoles, Related Software, & Components Thereof, Inv. No. 337-
TA-752, Final Initial Remand Determination at 8 (Mar. 22, 2013). As with inducement, willful
blindness on the question of infringement will satisfy the knowledge requirement. Global-Tech,
563 U.S. at 765, 768-771.
E. 	Domestic Industry
In an investigation based on a claim of patent infringement, Section 337 requires that an
industry in the United States, relating to the articles protected by the patent, exist or be in the
process of being established. 19 U.S.C. § 1337(a)(2). Under Commission precedent, the domestic
industry requirement has been divided into (i) a “technical prong” ” (which requires articles
covered by the asserted patent) and (ii) an “economic prong” (which requires certain levels of
activity with respect to the protected articles or patent itself). See Certain Video Game Systems
and Controllers, Inv. No. 337-TA-743, Comm’n Op. at 6-7 (April 14, 2011) (“Video Game
Systems”).
1. 	Technical Prong
The technical prong of the domestic industry requirement is satisfied when the complainant
in a patent-based section 337 investigation establishes that it is practicing or exploiting the patents
at issue. See 19 U.S.C. §§ 1337 (a)(2), (3); Certain Microsphere Adhesives, Process for Making
Same and Prods. Containing Same, Including Self-Stick Repositionable Notes, Inv. No. 337-TA-
366, Comm’n Op. at 8 (U.S.I.T.C. Jan. 16, 1996). “In order to satisfy the technical prong of the
domestic industry requirement, it is sufficient to show that the domestic industry practices any

19
claim of that patent, not necessarily an asserted claim of that patent.” 	Certain Ammonium
Octamolybdate Isomers, Inv. No. 337-TA-477, Comm’n Op. at 55 (U.S.I.T.C. Aug. 28, 2003).
Historically, the Commission permits the complainant’s products, and those of its licensees, to be
considered for technical prong purposes. See Certain Magnetic Tape Cartridges and Components
Thereof, Inv. No. 337-TA-1058, Comm’n Op. at 28-29 (April 9, 2019) (public version).
The test for claim coverage for the purposes of the technical prong of the domestic industry
requirement is the same as that for infringement. 	See Certain Doxorubicin and Preparations
Containing Same, Inv. No. 337-TA-300, Initial Determination at 109 (U.S.I.T.C. May 21, 1990),
aff’d, Views of the Commission at 22 (U.S.I.T.C. Oct. 31, 1990); Alloc, Inc. v. Int’l Trade Comm’n,
342 F.3d 1361, 1375 (Fed. Cir. 2003). “First, the claims of the patent are construed. Second, the
complainant’s article or process is examined to determine whether it falls within the scope of the
claims.” Certain Doxorubicin and Preparations Containing Same, Inv. No. 337-TA-300, Initial
Determination at 109. As with infringement, the technical prong of the domestic industry can be
satisfied either literally or under the doctrine of equivalents. Certain Dynamic Sequential Gradient
Devices and Component Parts Thereof, Inv. No. 337-TA-335, ID at 44, Pub. No. 2575 (U.S.I.T.C.
May 15, 1992). In short, the patentee must establish by a preponderance of the evidence that the
domestic product practices one or more claims of the patent.
2. 	Economic Prong
The “economic prong” of the domestic industry requirement is satisfied when there exists
in the United States, in connection with products practicing at least one claim of the patent at issue:
(A) significant investment in plant and equipment; (B) significant employment of labor or capital;
or (C) substantial investment in its exploitation, including engineering, research and development,
and licensing. 19 U.S.C. § 1337(a)(3). Establishment of the “economic prong” is not dependent
on any “minimum monetary expenditure” and there is no need for complainant “to define the

20
industry itself in absolute mathematical terms.” 	Certain Stringed Musical Instruments and
Components Thereof, Inv. No. 337-TA-586, Comm’n Op. at 25-26 (May 16, 2008) (“Stringed
Instruments”). 	However, a complainant must substantiate the significance of its activities with
respect to the articles protected by the patent. 	Certain Printing and Imaging Devices and
Components Thereof, Inv. No. 337-TA-690, Comm’n Op. at 30 (Feb. 17, 2011) (“Imaging
Devices”). Further, a complainant can show that its activities are significant by showing how those
activities are important to the articles protected by the patent in the context of the company’s
operations, the marketplace, or the industry in question. Id. at 27-28. That significance, however,
must be shown in a quantitative context. Lelo Inc. v. Int’l Trade Comm’n, 786 F.3d 879, 886 (Fed.
Cir. 2015). The Federal Circuit noted that when the ITC first addressed this requirement, it found
the word “‘significant’ denoted ‘an assessment of the relative importance of the domestic
activities.’” Id. at 883-4 (internal citation omitted) (emphasis added). In general, “[t]he purpose
of the domestic industry requirement is to prevent the ITC from becoming a forum for resolving
disputes brought by foreign complainants whose only connection with the United States is
ownership of a U.S. patent.” Certain Battery-Powered Ride-On Toy Vehicles, Inv. No. 337-TA-
314, USITC Pub. No. 2420, Initial Determination at 21 (Aug. 1991).
The Commission “has long recognized that the ‘its’ in the phrase ‘investment in its
exploitation’ in subparagraph (C) refers to the asserted patent or other intellectual-property right
being asserted. That conclusion is supported by the clear text of the statute.” Certain Integrated
Circuit Chips and Products Containing the Same, Inv. No. 337-TA-859, Comm’n Op. at 36 (Aug.
11, 2014) (“Integrated Circuit Chips”). This connection between the investment and the patent is
known as the “nexus” requirement. Id. at 38. “To the extent that the patented technology arises
from endeavors in the United States, such a nexus would ordinarily exist.” 	Id. at 39.

21
“‘Exploitation’ is a generally broad term that encompasses activities such as efforts to improve,
develop, or otherwise take advantage of the asserted patent.” Id. Similarly, investments in plant
and equipment, labor, and capital that may fairly be considered investments in research and
development are eligible for consideration under subsections (A) and (B), in addition to subsection
(C). 	See Certain Solid State Storage Drives, Stacked Electronics Components, and Products
Containing Same, Inv. No. 337-TA-1097, Comm’n Op. at 14 (June 29, 2018) (“Solid State Storage
Drives”).
F. 	Invalidity
1. 	35 U.S.C. § 102
Pursuant to 35 U.S.C. § 102, a patent claim is invalid as anticipated if:
(a) the invention was known or used by others in this country, or patented
or described in a printed publication in this or a foreign country, before the
invention thereof by the applicant;
(b) the invention was patented or described in a printed publication in this
or a foreign country or in public use or on sale in this country, more than
one year prior to the date of the application for patent in the United States;
(e) the invention was described in (1) an application for patent, published
under section 122(b), by another filed in the United States before the
invention by the applicant for patent or (2) a patent granted on an application
for patent by another filed in the United States before the invention by the
applicant for patent;”
(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.
35 U.S.C. § 102 (pre-AIA). 	“A patent is invalid for anticipation if a single prior art reference
discloses each and every limitation of the claimed invention. Moreover, a prior art reference may
anticipate without disclosing a feature of the claimed invention if that missing characteristic is
necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva

22
Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citations omitted); see Santarus, Inc. v. Par
Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir. 2012).
2. 	35 U.S.C. § 103
Section 103 of the Patent Act states:
A patent may not be obtained though the invention is not identically
disclosed or described as set forth in section 102 of this title, if the
differences between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in the art
to which said subject matter pertains. Patentability shall not be negated by
the manner in which the invention was made.
35 U.S.C. § 103(a) (pre-AIA). “Obviousness is a question of law based on underlying questions
of fact.” Scanner Techs. Corp. v. ICOS Vision Sys. Corp. N.V., 528 F.3d 1365, 1379 (Fed. Cir.
2008). The underlying factual determinations include: “(1) the scope and content of the prior art,
(2) the level of ordinary skill in the art, (3) the differences between the claimed invention and the
prior art, and (4) objective indicia of non-obviousness.” Id. (citing Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 17-18 (1966)). These factual determinations are often referred to as the
“Graham factors.”
The critical inquiry in determining the differences between the claimed invention and the
prior art is whether there is a reason to combine the prior art references. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418-21 (2007). In KSR, the Supreme Court rejected the Federal Circuit’s rigid
application of the teaching-suggestion-motivation test. 	While the Court stated that “it can be
important to identify a reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does,” it described a more
flexible analysis:
Often, it will be necessary for a court to look to interrelated teachings of
multiple patents; the effects of demands known to the design community or
present in the marketplace; and the background knowledge possessed by a

23
person having ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue . . . . As our precedents make clear, however,
the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.
Id. at 418. Since KSR, the Federal Circuit has announced that, where a patent challenger contends
that a patent is invalid for obviousness based on a combination of prior art references, “the burden
falls on the patent challenger to show by clear and convincing evidence that a person of ordinary
skill in the art would have had reason to attempt to make the composition or device . . . and would
have had a reasonable expectation of success in doing so.” 	PharmaStem Therapeutics, Inc. v.
ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007); see KSR, 550 U.S. at 399 (“The proper
question was whether a pedal designer of ordinary skill in the art, facing the wide range of needs
created by developments in the field, would have seen an obvious benefit to upgrading Asano with
a sensor.”).
In addition to demonstrating that a reason exists to combine prior art references, the
challenger must demonstrate that the combination of prior art references discloses all of the
limitations of the claims. Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1373-4 (Fed.
Cir. 2010) (abrogated on other grounds by Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct.
2120 (2014)) (upholding finding of non-obviousness based on the fact that there was substantial
evidence that the asserted combination of references failed to disclose a claim limitation); Velander
v. Garner, 348 F.3d 1359, 1363 (Fed. Cir. 2003) (explaining that a requirement for a finding of
obviousness is that “all the elements of an invention are found in a combination of prior art
references”).
“A reference qualifies as prior art for a determination under § 103 when it is analogous to
the claimed invention.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed.

24
Cir. 2011) (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)). “Two separate tests define the
scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor,
whether the reference still is reasonably pertinent to the particular problem with which the inventor
is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re Deminski, 796 F.2d
436, 442 (Fed. Cir. 1986)). One way of evaluating whether a reference is reasonably pertinent is
to consider if, “logically [it] would have commended itself to an inventor's attention in considering
his problem.” 	K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (citing
Innovention, 637 F.3d at 1321)). The requirement for prior art to be analogous is “meant to defend
against hindsight.” In re Khan, 441 F.3d 977, 986-987 (Fed. Cir. 2006).
An 	obviousness 	determination 	should 	also 	include 	a 	consideration 	of 	“secondary
considerations” such as “commercial success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding the origin of the subject matter
sought to be patented.” Graham, 338 U.S. at 17-18. “For [such] objective evidence to be accorded
substantial weight, its proponent must establish a nexus between the evidence and the merits of
the claimed invention.” In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995); see Merck & Cie
v. Gnosis S.P.A., 808 F.3d 829, 837 (Fed. Cir. 2015). “Where the offered secondary consideration
actually results from something other than what is both claimed and novel in the claim, there is no
nexus to the merits of the claimed invention.” In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed.
Cir. 2011).
3. 	35 U.S.C. § 112
Pursuant to 35 U.S.C. § 112, a patent claim is invalid for lack of written description if the
patent’s specification fails to “reasonably convey[] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly &

25
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he test requires an objective inquiry into
the four corners of the specification from the perspective of a person of ordinary skilled in the art,”
id., and “the level of detail required to satisfy the written description requirement varies depending
on the nature and scope of the claims and on the complexity and predictability of the relevant
technology,” id. (citing Capon v. Eshar, 418 F.3d 1349, 1357-58 (Fed. Cir. 2005)).
Additionally, under 35 U.S.C. § 112, a patent claim is invalid for indefiniteness if “its
claims, read in light of the specification delineating the patent, and the prosecution history, fail to
inform, with reasonable certainty, those skilled in the art about the scope of the invention.”
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). Indefiniteness can result
from a single claim covering both an apparatus and a method of use of that apparatus, as “a
manufacturer or seller of the claimed apparatus would not know from the claim whether it might
also be liable for contributory infringement because a buyer or user of the apparatus later performs
the claimed method using the apparatus.” IPXL Holdings v. Amazon.com, 430 F.3d 1377, 1384
(Fed. Cir. 2005); see UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 826 (Fed. Cir. 2016)
(holding these types of claims may make it “unclear whether infringement . . . occurs when one
creates an infringing system, or whether infringement occurs when the user actually uses the
system in an infringing manner”) (citation omitted). 	“[A]pparatus claims are not necessarily
indefinite for using functional language,” however, as in, for example, means-plus-function
formatted claims. MasterMine Software, Inc. v. Microsoft Corp., 874 F.3d 1307, 1313 (Fed. Cir.
2017) (citing Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1375
(Fed. Cir. 2008)). 	Another example may be when the claim merely recites “that the system
‘possesses the recited structure which is capable of performing the recited functions.’” Id. at 1315-
16 (quoting Microprocessor Enhancement, 520 F.3d at 1375). Overall, “the written description is

26
key to determining whether a term of degree is indefinite.” Guangdong Alison Hi-Tech Co. v. Int’l
Trade Comm’n, 936 F.3d 1353, 1361 (Fed. Cir. 2019) (citing Sonix Tech. Co. v. Publ’ns Int’l, Ltd.,
844 F.3d 1370, 1378 (Fed. Cir. 2017)) (emphasis in original).
Further, under 35 U.S.C. § 112, a patent specification must contain a description “of the
manner and process of making and using” the invention. 35 U.S.C. § 112. This is referred to as
the enablement requirement, and a patent claim is sufficiently enabled only when the specification
teaches “those skilled in the art how to make and use the full scope of the claimed invention without
undue experimentation.” Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365 (Fed. Cir.
1997). To determine whether the specification leaves a person of ordinary skill to perform undue
experimentation, the Federal Circuit has identified the following factors to consider: (1) the
quantity of experimentation necessary; (2) the amount of direction or guidance presented; (3) the
presence or absence of working examples; (4) the nature of the invention; (5) the state of the prior
art; (6) the relative skill of those in the art; (7) the predictability or unpredictability of the art; and
(8) the breadth of the claims. 	In re Wands, 585 F.2d 731, 737 (Fed. Cir. 1988). 	“[I]t is not
necessary that a court review all the Wands factors to find a disclosure enabling. 	They are
illustrative, not mandatory.” Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1213 (Fed.
Cir. 1991).
G. 	Patent Misuse
A “basic rule of patent misuse [is] that the patentee may exploit his patent but may not ‘use
it to acquire a monopoly not embraced in the patent.’” Princo Corp. v. Int’l Trade Comm’n, 616
F.3d 1318, 1327 (Fed. Cir. 2010) (quoting Transparent-Wrap Mach. Corp. v. Stokes & Smith Co.,
329 U.S. 637, 643 (1947)). “[E]xpress conditions accompanying the sale or license of a patented
product, such as field of use limitations, are generally upheld” yet “[w]hen those contractual

27
conditions violate public policy, however, as in the case of price-fixing conditions and tying
restraints, the underlying patents become unenforceable, and the patentee loses its right to sue for
infringement or breach of contract.” Princo, 616 F.3d at 1328. Congress has specified, however,
certain acts which do not constitute patent misuse within 35 U.S.C. § 271(d):
(d) 	No patent owner otherwise entitled to relief for infringement or
contributory infringement of a patent shall be denied relief or deemed guilty
of misuse or illegal extension of the patent right by reason of his having
done one or more of the following: (1) derived revenue from acts which if
performed by another without his consent would constitute contributory
infringement of the patent; (2) licensed or authorized another to perform
acts which if performed without his consent would constitute contributory
infringement of the patent; (3) sought to enforce his patent rights against
infringement or contributory infringement; (4) refused to license or use any
rights to the patent; or (5) conditioned the license of any rights to the patent
or the sale of the patented product on the acquisition of a license to rights in
another patent or purchase of a separate product, unless, in view of the
circumstances, the patent owner has market power in the relevant market
for the patent or patented product on which the license or sale is
conditioned.
35 U.S.C. § 271(d). With respect to subsections (1)–(3), the Supreme Court has explained these
reflect a “grant[] to patent holders a statutory right to control nonstaple goods that are capable only
of infringing use in a patented invention, and that are essential to that invention’s advance over
prior art.” Dawson Chem. Co. v. Rohm & Haas Co., 448 U.S. 176, 213 (1980) (“Rohm & Haas”).
With respect to subsection (5), the Supreme Court has explained “[i]n all cases involving
a tying arrangement, the plaintiff must prove that the defendant has market power in the tying
product” and “a patent does not necessarily confer market power upon the patentee.” 	Ill. Tool
Works Inc. v. Indep. Ink, Inc., 547 U.S. 28, 46 (2006). That “market power” is, generally, “when
the seller has some special ability—usually called ‘market power’—to force a purchaser to do
something that he would not do in a competitive market.” 	Jefferson Par. Hosp. Dist. No. 2 v.
Hyde, 466 U.S. 2, 13–14 (1984), abrogated by, Ill. Tool Works Inc. v. Indep. Ink, Inc., 547 U.S.
28 (2006). 	For example, “[w]hen the seller's share of the market is high . . . or when the seller

28
offers a unique product that competitors are not able to offer, . . . the Court has held that the
likelihood that market power exists and is being used to restrain competition in a separate market
is sufficient to make per se condemnation appropriate.” Jefferson Par., 466 U.S. at 17 (citations
omitted).
H. 	Patent Exhaustion
“The longstanding doctrine of patent exhaustion provides that the initial authorized sale of
a patented item terminates all patent rights to that item.” Quanta Computer, Inc. v. LG Elecs., Inc.,
553 U.S. 617, 625 (2008). 	Thus, “[w]hen a patent holder authorizes the sale of a product that
embodies a patent’s inventive elements, he forfeits the right to exact royalties at subsequent points
along the product’s distribution chain.” High Point SARL v. T-Mobile USA, Inc., 640 F. App’x
917, 929 (Fed. Cir. 2016).
I. 	Inventorship
“A patent is invalid if more or less than the true inventors are named.” 	Trovan, Ltd. v.
Sokymat SA, Irori, 299 F.3d 1292, 1301 (Fed. Cir. 2002). The standard for showing this form of
invalidity, like others, is clear and convincing evidence. Hess v. Adv. Cardiovascular Sys., Inc.,
106 F.3d 976, 980 (Fed. Cir. 1997); Pannu v. Iolab Corp., 155 F.3d 1344, 1350 (Fed. Cir. 1998).
That evidence must overcome the presumption that the inventors are correct. See Canon Computer
Sys., Inc. v. Nu-Kote Int’l, Inc., 134 F.3d 1085, 1088 (Fed. Cir. 1998). “[A] person will not be a
co-inventor if he or she does no more than explain to the real inventors concepts that are well
known in the current state of the art.” 	Caterpillar Inc. v. Sturman Indus., Inc., 387 F.3d 1358,
1377 (Fed. Cir. 2004) (citing Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir.
1997)). Yet, the Federal circuit has held:
All that is required of a joint inventor is that he or she (1) contribute in some
significant manner to the conception or reduction to practice of the

29
invention, (2) make a contribution to the claimed invention that is not
insignificant in quality, when that contribution is measured against the
dimension of the full invention, and (3) do more than merely explain to the
real inventors well-known concepts and/or the current state of the art. See
Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473, 43 U.S.P.Q.2d 1935,
1941 (Fed. Cir. 1997); see also Ethicon, Inc. v. United States Surgical Corp.,
135 F.3d 1456, 1460, 45 U.S.P.Q.2d 1545, 1548 (Fed. Cir. 1998).
Pannu, 155 F.3d at 1351. 	“[A] co-inventor need not make a contribution to every claim of a
patent . . . . A contribution to one claim is enough.” Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d
1456, 1460 (Fed. Cir. 1998).
III. 	JURISDICTION AND IMPORTATION
In its initial post-hearing brief, in a section entitled “In Rem Jurisdiction,” Ingevity states:
Respondents did not challenge personal jurisdiction or due process in their
pre-trial brief and only challenged In Rem Jurisdiction as to Nagamine. The
record here establishes that Nagamine sells MPAC for importation. 	JX-
0242C (Nagamine) at 74:1-21; Tr. (Hitomi) at 813:7-12; CX-0909C
(Rockstraw) at Q/A 2017.
CIB at 3. Although there is no mention of MAHLE or Kuraray here, Ingevity elsewhere provides
descriptions of importation by all three Respondents:
• 	Respondent MAHLE –
o 	sells a group of canisters Ingevity refers to as the “Domestically Manufactured
Canisters” “to auto OEMs in the United States. . . . In doing so, MAHLE NA sells
an article that infringes after importation.” 	CIB at 30 (citing CX-0909C at Q/A
1953-1954, 2024-2027).
o 	imports a group of canisters Ingevity refers to as the “Accused Imported Canisters”
“for testing, replacement parts, and prototypes of other products.” CIB at 122-123
(citing JX-0230C at 42:8-16, 42:18-43:1, 43:3-44:22, 44:24-45:4, 45:6-46:1, 46:3-
6; 46:10, 67:21-68:13; CX-0909C at Q/A 1947, 1955-58; CX-1151C at *60).

30
o 	sells the “Accused Imported Canisters” “for importation by others.” 	CIB at 123
(citing JX-0230C at 40:22-41:25, 42:5-6; CX-0909C at Q/A 2027).
• 	Respondent Kuraray –
o 	imports MPAC. See CIB at 31 (citing JX-0244C at 52:18-20), 33 (citing CX-0909C
at Q/A 2005; JX-0244C at 55:20-25; JZ-0230C at 67:7-12), 122 (citing CX-0296C;
CX-0297C; RX-[]0379C at Q/A 21-30).
o 	sells MPAC for importation. CIB at 122 (citing CX-0296C; CX-0297C; JX-0035C;
CX-0034C; JX-0242C at 74:19-21; RX-[]0379C at Q/A 21-30).
• 	Respondent Nagamine –
o 	“in providing MPAC to Kuraray . . . sells an article that infringes for importation.”
CIB at 34 (citing CX-0909C at Q/A 2021-2022, 2027); see CIB at 122 (citing CX-
0296C; CX-0297C; JX-0035C; CX-0034C; JX-0242C at 74:19-21; RX-[]0379C at
Q/A 21-30).
In their initial-post hearing brief, Respondents also dedicate a section to importation and
in rem jurisdiction; like Ingevity, they do not discuss the importation-related activities of
respondents MAHLE and Kuraray. RIB at 4-5. In this section, Respondents exclusively address
Nagamine and contest whether the importation requirement is satisfied. See id. Respondents argue
Nagamine “conducts all of its activities in Japan” and “manufactures MPAC in Japan and sells and
delivers MPAC exclusively to Kuraray Japan in Japan.” Id. at 4 (citing CX-0626C; RX-0378C at
Q/A 44; RX-0379C at Q/A 30; RX-0382 at Q/A 80; JX-0134C; JX-0242C at 74:19-21). Again,
however, the briefs contain additional statements and admissions related to this issue for
respondents MAHLE and Kuraray:
• 	Respondent MAHLE –

31
o 	does “not sell for importation, import, or sell after importation, any Accused
Product.” RIB at 119 (citing RX-0370C at Q/A 128-130-132, 135).
o 	“does not typically import Accused Canisters manufactured outside the U.S.” RIB
at 120 (citing RX-0370C at Q/A 145-148).
• 	Respondent Kuraray –
o 	“is the only Respondent that imports MPAC or holds U.S. inventory.” RIB at 121
(citing RX-0382C at Q/A 274; RX-0733C; RX-0734C).
It goes without saying that the above excerpts are not a clear presentation of the issue.
Nevertheless, Ingevity has shown satisfaction of the importation requirement for all of the Accused
Products such that the Commission has jurisdiction. See Sealed Air Corp. v. Int’l Trade Comm’n,
645 F.2d 976, 985 (C.C.P.A. 1981).
Specifically, CX-0296C and CX-0297C cited above are stipulations entered into between
Ingevity and Kuraray regarding importation, although not identified by Ingevity in its initial brief
as such. CX-0296C makes it clear that Kuraray manufactures MPAC in Japan, sold for importation
“at least one unit” of MPAC into the United States, and also imported “at least one unit” of MPAC
into the United States through the activities of Calgon. 	CX-0296C at ¶¶ 3-5. 	Further, the
stipulation acknowledges Calgon “delivers MPAC from its United States inventories of MPAC
solely to Mahle to support the Kuraray Respondents’ sales of MPAC to Mahle.” Id. at ¶ 12.
Respondents’ witness on this issue, Mr. Jackson, testified that MAHLE receives all the
MPAC it purchases from Kuraray in the United States 	RX-0370C at
Q/A 134. This MPAC is then distributed in different ways. A portion of the MPAC is used in the
construction of the Domestic Accused Products. 	RX-0370C at Q/A 128-133; see CX-0909C at
Q/A 1953. MAHLE then sells these canisters to original equipment manufacturers (OEMs), which

32
are the various automobile manufacturers which install the fuel vapor canisters in their
automobiles. JX-0230C at 33:33:8-24, 35:13-36:1; CX-0909C at Q/A 1954.
The remaining MPAC is shipped to MAHLE’s other manufacturing facilities outside the
United States; specifically, Canada, Mexico, and Japan. See RX-0370C at Q/A 134, 146, 148; JX-
0230C at 60:26-61:24; but see JX-0230C at 61:25-62:9 (witness believing that MPAC
). 	These facilities construct the
Foreign Accused Products. 	CX-0909C at Q/A 1955; RX-0370C at Q/A 148. 	The completed
canisters are then sold to OEMs who pick them up from each respective facility. RX-0370C at
Q/A 148; JX-0230C at 35:13-36:20. 	Mr. Jackson testified that it is the OEMs who import the
vehicles containing the Foreign Accused Product into the United States. JX-0230C at 40:20-42:12,
46:23-47:11; RX-0370C at Q/A 148. It is not seriously disputed that MAHLE knows the identity
of the vehicles into which each of its canisters goes (see, e.g., RX-0370C at Q/A 86) and that these
vehicles are known to be headed to the U.S. market (see, e.g., CX-0909C at Q/A 2079; CX-0636C;
JX-0230C at 39:22-41:6, 46:23-47:11, 288:3-289:15; RIB at 124 (discussing remedial orders
affecting the U.S. market).
Further, there is evidence that MAHLE itself, at times, imports Foreign Accused Products
into the United States for testing purposes because none of MAHLE’s manufacturing facilities
outside the United States have their own canister testing facilities. See JX-0230C at 42:13-46:10;
see also JX-0230C at 71:3-7, 72:7-10. Respondents do not dispute, but add that it is not “typical”
(RIB at 120; RX-0370C at Q147 (“there have been some instances where a small number of fuel
vapor canisters containing MPAC-1 were shipped into the United States for testing purposes.”))—
a contention they have held since filing their responses to the complaint (see EDIS Doc. ID 666047
at 7 (“MAHLE Mexico is not typically the party that imports any fuel vapor canisters”), 8

33
(“MAHLE Canada is not typically the party that imports any fuel vapor canisters”)). Given the
MAHLE witness’s description of those extraterritorial facilities as lacking their own testing
equipment (see JX-0230C at 42:13-47:11, 67:21-68:13), it is more likely than not that the Foreign
Accused Products have been imported by MAHLE itself into the United States—with one
exception. 	The exception is the F6235-011 canister manufactured by MAHLE in Japan, which
Mr. Jackson testified never enters the U.S because its purchaser,
JX-0230C at 68:3-9.
I find the importation requirement under 19 U.S.C. § 1337(a)(1)(B) satisfied, and find the
Commission has in rem jurisdiction over the Accused Products, which are fuel vapor canisters
incorporating MPAC. Ingevity’s claims of infringement, both direct and indirect, involve the use
of MAHLE’s Accused Products within the United States. The above evidence shows the Foreign
Accused Products have been imported by themselves (for testing) or as part of OEM assembled
vehicles. 	The evidence shows that MPAC, a significant component of the Domestic Accused
Products, is also imported into the United States. Thus, given Ingevity’s direct and indirect claims
of infringement in this investigation, the Commission has in rem jurisdiction. Cisco Sys., Inc. v.
Int’l Trade Comm’n, 873 F.3d 1354, 1359, 1362-63 (Fed. Cir. 2017).
Apart from in rem jurisdiction, there is a dispute between the parties as to whether the
importation requirement has been satisfied as to MAHLE and Nagamine. 	Respondents present
this dispute for Nagamine in a discussion of importation, arguing Nagamine “manufactures MPAC
in Japan and sells and delivers MPAC exclusively to Kuraray Japan in Japan.” 	RIB at 4-5.
Respondents discuss MAHLE in the context of remedy, arguing that no exclusion order should
apply to MAHLE because it “does not sell for importation, import, or sell after importation, any
Accused Product.” Id. at 119-120.

34
Section 337 makes it unlawful to import into the United States, sell for importation, or sell
after importation articles that infringe, directly or indirectly, a valid U.S. patent. 	19 U.S.C. §
1337(a)(1)(B). “Whether the Commission has jurisdiction over certain activities is a question of
law, and the Commission has broadly interpreted its jurisdiction under section 337. . . . 	The
Commission has held in the section 337 context that it has jurisdiction to act if there is some nexus
between a respondent’s activities and the importation of the products accused of infringement.”
Certain Cigarettes and Packaging Thereof, Inv. No. 337-TA-643, Comm’n Op. at 7 (Oct. 1, 2009)
(“Cigarettes”).
As noted above, per the parties’ stipulation, Kuraray imports MPAC into the United States
(CX-0296 at ¶ 7), with MPAC being central to Ingevity’s claims of indirect infringement. Thus,
the importation requirement is satisfied with respect to Kuraray and, should all other required
elements be found, Kuraray would violate section 337.
As for respondent MAHLE, it sells the Domestic Accused Products after the MPAC
contained within has been imported. This is a sale after importation. MAHLE also imports all but
one of the Foreign Accused Products into the United States, and sells for importation all of the
Foreign Accused Products to OEMs. Given Ingevity’s claims of direct and indirect infringement,
MAHLE would therefore violate section 337, should all other required elements be found.
As for respondent Nagamine, there is no evidence that it imports MPAC into the United
States. Ingevity instead claims that “Nagamine sells its MPAC exclusively to Kuraray, which it
knows to resell to MAHLE.” CIB at 34 (citing JX-0242C at 74:1-21; Hr’g Tr. at 813:7-12; CX-
0909C at Q/A 2017). Ingevity contends this is a sale for importation under the statute. Id. at 3.
Nagamine sells the MPAC it produces to Kuraray, and Kuraray imports that MPAC (as
well as the MPAC produced by Kuraray) into the United States. JX-0242C at 74:9-21; RX-0378C

35
at Q/A 39, 44, 45. Whether this alone constitutes sale “for” importation, as opposed to mere sale
followed by importation, is not entirely clear. The Commission’s standard for evaluating sale for
importation is both flexible and liberal. 	Cigarettes, Comm’n Op. at 8-9 (finding sale for
importation by “broker” of gray market goods “even though it never owns or possesses” the
goods). 	Assuming that sale for importation requires, at minimum, knowledge that the United
States is the destination of the product sold, that requirement has been met. The evidence shows
that 	(RX-0378C at Q/A
25) and 	(id. at
Q/A 28-29; JX-0242C at 22:21-24:5).
(JX-0242C at 38:21-39:13) and that the
(id. at 37:19-38:1). 	Thus, given Ingevity’s claims of direct and indirect infringement,
Nagamine would violate section 337, should all other elements be found.
IV. 	U.S. PATENT NO. RE38,844
A. 	Level of Ordinary Skill in the Art
In Order No. 15, I determined that a person having ordinary skill in the art of the 844 patent
at the time of invention “would have a bachelor’s degree in chemistry, chemical engineering, or
mechanical engineering, and at least one year of experience working with automotive emissions
such that they are familiar with the phenomena of vapor adsorption and desorption and their
measurement.” 	Order No. 15 at 7. 	In its initial post-hearing brief, Ingevity challenges this
description as improperly including reference to mechanical engineering:
The ALJ preliminarily found that a POSITA might need experience with
automotive 	emissions 	and 	might 	have 	a 	mechanical 	engineering
background. Order No. 15 at 7. But the ’844 Patent is not concerned with
mechanical apparatuses or processes, and thus a POSITA should not be

36
defined to include mechanical engineering. 	Tr. (Rockstraw) at 690:5-13
(mechanical engineering not appropriate). The Patent describes discoveries
related to the use of adsorbents (in commercial practice, activated carbons)
to capture fuel vapors—concepts directed to the chemical engineering arts.
Experience using adsorbents generally would be sufficient without specific
applications, such as in automotive emissions. Tr. (Rockstraw) at 184:24-
185:4, 260:262:2.
CIB at 4.
I disagree. The 844 patent does not relate to the discovery of any particular adsorbent or
its chemical properties. Rather it relates to the arrangement of two adsorbents, otherwise known,
in a particular order within a fuel vapor system of an automobile. Ingevity itself states, “[h]ere,
the novel aspect of the Patent is the combination of high-IAC and low-IAC adsorbent volumes in
a particular configuration in a fuel vapor canister to reduce bleed emissions.” CIB at 72.
The 844 patent is consistent with Ingevity’s “particular configuration in a fuel vapor
canister” description:
Disclosed is a method for sharply reducing diurnal breathing loss emissions
from automotive evaporative emissions control systems by providing
multiple layers, or stages, of adsorbents. On the fuel source-side of an
emissions control system canister, high working capacity carbons are
preferred in a first canister (adsorb) region. In subsequent canister region(s)
on the vent-side, the preferred adsorbent should exhibit a flat or flattened
adsorption isotherm on a volumetric basis and relatively lower capacity for
high concentration vapors as compared with the fuel source-side adsorbent.
844 patent at Abstract;
The disclosed invention relates to the use of multiple beds (or layers, stages,
or chambers) of adsorbent materials, which, in combination, significantly
reduce DBL emissions while maintaining the high working capacity and
low flow restriction properties of the canister system.
id. at 4:9-13. The figures of the 844 patent also demonstrate an emphasis on the use of adsorbents
within a structure (e.g., a canister) such that the flow of fuel vapor is directed into and through the
adsorbents in a particular sequence. See id. at Figs. 1-3. The claims, where the actual invention
is defined, are not directed to the mere use of an adsorbent with particular properties, but rather

37
the arrangement of volumes of those adsorbents with respect to the flow of fuel vapor. See, e.g.,
cls. at 2-7. Indeed, independent claims 31 and 43, at issue here, include lengthy recitations (which
are limiting, as discussed below) of the mechanical components of automotive fuel vapor systems,
such as:
a fuel tank for storing a volatile fuel, an engine having an air induction
system and adapted to consume the fuel, a canister containing an initial
volume of fuel vapor adsorbent material for temporarily adsorbing and
storing fuel vapor from the tank, a conduit for conducting fuel vapor from
the tank to a canister vapor inlet, a fuel vapor purge conduit from a canister
purge outlet to the induction system of the engine, and a vent/air opening
for venting the canister and for admission of air to the canister during
operation of the engine induction system . . . .
Id. at cl. 31; see id. at cl. 43. Further still, an important aspect of the 844 patent is the technique
known as volumetric dilution, which is a manner of affecting the adsorption properties of a volume
of activated carbon. The patent states:
Two approaches are described for attaining the preferred properties for the
vent-side adsorbent volume. One approach is to use a filler and/or bed
voidages as a volumetric diluent for flattening an isotherm. A second
approach is to employ an adsorbent with the desired isotherm properties and
to process it into an appropriate shape or form without necessarily requiring
any special provision for dilution. Both such approaches provide a
substantially lower emissions canister system without a significant loss in
working capacity or an increase in flow restriction compared with prior art
adsorbents used for automotive emissions control.
Id. at 3:53-64. Neither of these “approaches” is connected to the chemical properties of the carbon.
The first has to do with filling a compartment with non-adsorbing materials to, effectively, waste
otherwise usable space; and the second with the shape of the activated carbon pellets. 	The last
statement emphasizes the value in minimizing any restriction on flow of the fuel vapor (i.e., fluid
flow) through the adsorbents. The shape of a solid structure and fluid flow around and through
such shapes are undeniably mechanical engineering concepts. The latter would be known as fluid
mechanics.

38
Ingevity’s basis for challenging the relevance of mechanical engineering concepts to the
person of ordinary skill seems to be based on Dr. Rockstraw’s testimony that the concept of
“incremental adsorption capacity” is not taught in the mechanical engineering curriculum he
knows of (CIB at 4 (citing Hr’g Tr. at 690:5-[15])) and a lack of his own experience in automotive
systems (CIB at 4 (citing Hr’g Tr. at 184:24-185:4, 260:3-262:2)). I do not find these grounds to
be persuasive in light of the actual content of the 844 patent or even the automotive industry to
which the patent pertains. Thus, there is no reason to diverge from the definition of a person of
ordinary skill in the art as set forth in Order No. 15, and I apply it throughout this initial
determination.
B. 	Claims-at-Issue
Claims 1-5, 8, 11-14, 16, 18, 19, 21, 24-27, 29, 31, 33, 36, 38, 39, 41, 43, 45, 48-51, and
53 of the 844 patent are at issue in this investigation, either through allegations of infringement or
of the domestic industry technical prong, with claims 31-54 added by the reissue (844 patent at
1:5-8, 12:40-14:64):
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.
2. The method of claim 1 comprising a single subsequent adsorbent volume.
3. The method of claim 1 comprising multiple subsequent adsorbent
volumes.
4. The method of claim 2 wherein the initial adsorbent volume and the
subsequent adsorbent volume are located within a single automotive
evaporative emission control canister.

39
5. The method of claim 3 wherein the-initial adsorbent volume and the
subsequent adsorbent volumes are located within a single automotive
evaporative emission control canister.
. . . .
8. The method of claim 1 wherein the initial adsorbent volume and the
subsequent adsorbent volume are activated carbon derived from materials
selected from the group consisting of wood, peat, coal, coconut, lignite,
petroleum pitch, petroleum coke, coal tar pitch, fruit pits, nut shells,
sawdust, wood flour, synthetic polymer, and natural polymer having been
activated by a process selected from the group consisting of chemical,
thermal, and combined chemical/thermal activation methods.
. . . .
11. The method of claim 1 wherein the subsequent adsorbent volume
exhibits adsorption capacities achieved by volumetric dilution.
12. The method of claim 11 wherein the volumetric dilution is accomplished
by the addition of a non-adsorbing filler as a co-ingredient by an addition
process selected from the group consisting of addition with the activated
carbon raw material prior to activation, addition with the adsorbent before
forming into a shaped particle or monolith, and a combination thereof.
13. The method of claim 11 wherein the volumetric dilution is accomplished
by forming the adsorbent into high voidage shapes selected from the group
consisting of stars, hollow cylinders, asterisks, spirals, cylinders, and
configured ribbons.
14. The method of claim 11 wherein the volumetric dilution is accomplished
by forming the adsorbent into a honeycomb or monolith shape.
. . . .
16. The method of claim 12 wherein the non-adsorbing filler is a solid after
processing.
. . . .
18. In a method of reducing fuel vapor emissions in an automotive
evaporative emissions control system comprising removing at least one
volatile organic compound from a volatile organic compound-containing
fuel vapor by routing the fuel vapor through a vapor adsorbent, the
improvement comprising sequentially routing the fuel vapor through an
initial adsorbent material-containing volume wherein the initial adsorbent
material is characterized by an incremental adsorption capacity at 25° C. of
greater than 35 g n-butane/L between vapor concentrations of 5 vol % and

40
50 vol % n-butane before routing the fluid stream through at least one
subsequent adsorbent-containing volume prior to venting to the atmosphere
wherein the subsequent adsorbent-containing volume is characterized by an
incremental adsorption capacity at 25° C. of less than 35 g n-butane/L
between vapor concentrations of 5 vol % and 50 vol % n-butane.
19. The method of claim 18 wherein the initial adsorbent volume and the
subsequent adsorbent volume are located in a single automotive evaporative
emissions canister.
. . . .
21. The method of claim 18 wherein the initial adsorbent volume and the
subsequent adsorbent volume are activated carbon derived from materials
selected from the group consisting of wood, peat, coal, coconut, lignite,
petroleum pitch, petroleum coke, coal tar pitch, fruit pits, nut shells,
sawdust, wood flour, synthetic polymer, and natural polymer and activated
by chemical and/or thermal activation methods.
. . . .
24. The method of claim 18 wherein the subsequent adsorbent volume
exhibits adsorption capacities achieved by volumetric dilution.
25. The method of claim 24 wherein the volumetric dilution is accomplished
by the addition of a non-adsorbing filler as a co-ingredient by an addition
process selected from the group consisting of addition with the activated
carbon raw material prior to activation, addition with the adsorbent before
forming into a shaped particle or monolith, and a combination thereof.
26. The method of claim 24 wherein the volumetric dilution is accomplished
by forming the adsorbent into high voidage shapes selected from the group
consisting of stars, hollow cylinders, asterisks, spirals, cylinders, and
configured ribbons.
27. The method of claim 24 wherein the volumetric dilution is accomplished
by forming the adsorbent into a honeycomb or monolith shape.
. . . .
29. The method of claim 25 wherein the non-adsorbing filler is a solid after
processing.
. . . .
31. In an evaporative emissions control system for a vehicle comprising, in
combination, a fuel tank for storing a volatile fuel, an engine having an air
induction system and adapted to consume the fuel, a canister containing an

41
initial volume of fuel vapor adsorbent material for temporarily adsorbing
and storing fuel vapor from the tank, a conduit for conducting fuel vapor
from the tank to a canister vapor inlet, a fuel vapor purge conduit from a
canister purge outlet to the induction system of the engine, and a vent/air
opening for venting the canister and for admission of air to the canister
during operation of the engine induction system, wherein the canister is
defined by a fuel vapor flow path via the canister vapor inlet through the
initial volume of vapor adsorbent within a first region of the canister toward
the vent/air opening, and an air flow path through a subsequent volume of
adsorbent within a second region of the canister at the vent/air opening and
the first region at the purge outlet, such that fuel vapor formed in the tank
flows through the vapor inlet into the initial volume of adsorbent where it
is adsorbed and, during operation of the engine induction system, ambient
air flows in a path to and through the vent/air opening and along the air flow
path in the canister through the initial volume and the purge outlet to the
induction system of the engine, the flow of air removing a portion of the
adsorbed fuel vapor but leaving a residue of fuel in the initial volume,
the improvement wherein at least one subsequent volume of vapor
adsorbent material comprises a volume of 1 % to 100 % of the first volume
and is located either inside of the canister within the second region thereof
or outside of the canister, and wherein the initial volume of vapor adsorbent
material is characterized by an incremental adsorption capacity at 25° C. of
greater than 35 g n-butane/L-bed between vapor concentrations of 5 vol %
and 50 vol % n-butane before routing the air flow through at least one
subsequent volume of vapor adsorbent material wherein the subsequent
volume of vapor adsorbent material is characterized by an incremental
adsorption capacity at 25° C. of less than 35 g n-butane between vapor
concentrations of 5 vol % and 50 vol % n-butane.
. . . .
33. The system of claim 31 wherein the initial volume of vapor adsorbent
material and the subsequent volume of vapor adsorbent material are
activated carbon derived from materials selected from the group consisting
of wood, peat, coal, coconut, lignite, petroleum pitch, petroleum coke, coal
tar pitch, fruit pits, nut shells, sawdust, wood flour, synthetic polymer, and
natural polymer having been activated by a process selected from the group
consisting of chemical, thermal, and combined chemical/thermal activation
methods.
. . . .
36. The system of claim 31 wherein the subsequent volume of vapor
adsorbent material exhibits adsorption capacities achieved by volumetric
dilution.

42
. . . .
38. The system of claim 36 wherein the volumetric dilution is accomplished
by forming the adsorbent material into high voidage shapes selected from
the group consisting of stars, hollow cylinders, asterisks, spirals, cylinders,
and configured ribbons.
39. The system of claim 36 wherein the volumetric dilution is accomplished
by forming the adsorbent into a honeycomb or monolith shape.
. . . .
41. The system of claim 37 wherein the non-adsorbing filler is a solid after
processing.
. . . .
43. A canister operative for use in automotive systems for emission control
defined by a canister vapor inlet to permit a fuel vapor flow path through an
initial volume of vapor adsorbent within a first region of the canister toward
a canister vent/air opening to permit a continued air flow path through a
subsequent volume of adsorbent within a second region of the canister at
the vent/air opening and the first region at a canister purge outlet, such that
fuel vapor formed in a tank for storing volatile fuel flows through the
canister vapor inlet into the initial volume of adsorbent where it is adsorbed
and, during operation of an engine induction system, ambient air is caused
to flow in a path to and through the vent/air opening and along the air flow
path in the canister through the initial volume and the purge outlet to the
induction system of the engine, wherein the flow of air removing a portion
of the adsorbed fuel vapor but leaving a residue of fuel in the initial volume,
and wherein at least one subsequent volume of vapor adsorbent material
comprises a volume of 1% to 100 % of the initial volume and is located
either inside of the canister within the second region thereof or outside of
the canister, and wherein the initial volume of vapor adsorbent material is
characterized by an incremental adsorption capacity at 25° C. of greater than
35 g n-butane/L-bed between vapor concentrations of 5 vol % and 50 vol %
n-butane before routing the air flow through at least one subsequent volume
of vapor adsorbent material wherein the subsequent volume of vapor
adsorbent material is characterized by an incremental adsorption capacity at
25° C. of less than 35 g n-butane between vapor concentrations of 5 vol %
and 50 vol % n-butane.
. . . .
45. The canister of claim 43 wherein the initial volume of vapor adsorbent
material and the subsequent volume of vapor adsorbent material are
activated carbon derived from materials selected from the group consisting
of wood, peat, coal, coconut, lignite, petroleum pitch, petroleum coke, coal

tar pitch, fruit pits, nut shells, sawdust, wood flour, synthetic polymer, and
natural polymer having been activated by a process selected from the group
consisting of chemical, thermal, and combined chemical/thermal activation
methods.

48. The canister of claim 43 wherein the subsequent volume of vapor
adsorbent material exhibits adsorption capacities achieved by volumetric
dilution.

49. The canister of claim 48 wherein the volumetric dilution is
accomplished by the addition of a non-adsorbing filler as a co-ingredient by
an addition process selected from the group consisting of addition with the
activated carbon raw material prior to activation, addition with the
adsorbent before forming into a shaped particle or monolith, and a
combination thereof.

50. The canister of claim 48 wherein the volumetric dilution is
accomplished by forming the adsorbent material into high voidage shapes
selected from the group consisting of stars, hollow cylinders, asterisks,
spirals, cylinders, and configured ribbons.

51. The canister of claim 49 wherein the volumetric dilution is
accomplished by an adsorbent formed into a honeycomb or monolith shape.

53. The canister of claim 49 wherein the non-adsorbing filler is a solid after
processing.

54. The canister of claim 49 wherein the non-adsorbing filler is volatized or
combusted to form voidages larger than 50 A width within the shaped
particle or monolith.

See CIB at 6, 34-43.
Cc. Claim Construction

As part of the Markman process, the following terms of the 844 patent were construed,

either as-agreed between the parties or determined by Order No. 15:

Claim Term Construction

“high voidage shapes” “the Markush group consisting of stars, hollow
cylinders, asterisks, spirals, cylinders, and
configured ribbons”

43

44
“adsorption capacity” 	“the mass of a particular gas adsorbed at a
particular vapor concentration and temperature,
at equilibrium, by a particular adsorbent volume”
“incremental adsorption capacity” 	“the difference in adsorption capacity of the
adsorbent volume between the conditions recited
in the claims and expressed in the recited units”
“initial adsorbent volume” / “initial volume
of adsorbent material” / “initial volume of
vapor adsorbent material” / “initial volume
of fuel vapor adsorbent material”
“a volume containing an adsorbent that comes
before, with respect to the flow of vapors from the
fuel tank, the subsequent adsorbent volume”
“subsequent 	volume 	of 	adsorbent” 	/
“subsequent 	volume 	of 	adsorbent” 	/
“subsequent 	volume 	of 	vapor 	adsorbent
material” 	/ 	“second 	volume 	of 	vapor
adsorbent material”
“a volume containing an adsorbent that comes
after, with respect to the flow of vapors from the
fuel tank, the initial adsorbent volume”
“cylinder” 	“a substantially cylindrical shape”
“trapped air spaces” 	“internal 	air 	spaces 	operative 	as 	volumetric
diluents”
See Order No. 15 at 14, 25, 29, 33, 34. Notably, I declined for reasons expressed in Order No. 15
to construe “adsorbent volume,” or related terms “vapor adsorbent volume,” “volume of vapor
adsorbent material,” and “volume of fuel vapor adsorbent material.” Id. at 25, 29, 30. I similarly
declined to construe “hollow cylinder.” Id. at 32. These are now discussed below.
1. 	“Hollow Cylinder”
The parties identify the claim term “hollow cylinder” as needing construction and being
relevant to, for example, the issues of infringement, technical prong domestic industry, and prior
art-based invalidity. 	CIB at 5-6; see generally RIB at 27-28. 	Ingevity contends a “hollow
cylinder” “should mean a cylinder with one or more voids in it” as “an example of ‘special thin-
walled cross-sectional shapes’ that are extruded.” CIB at 5 (citing 844 patent at 4:20-25, 7:18-22,

45
10:11-16). Respondents initially do not offer their own construction yet argue “hollow cylinder”
is nonetheless not met by MPAC. See RIB at 27 (alleging Dr. Rockstraw does not analyze what
“hollow” means), 28 (alleging Ingevity witnesses, fact and expert, “admit that MPAC is not hollow
under the plain and ordinary meaning of the term. . . . The inquiry should end there . . . .” and
arguing a mass-to-empty space comparison shows MPAC is not hollow). 	In their reply brief,
Respondents are more explicit, arguing “hollow” means “empty.” RRB at 6-7 (citing Hr’g Tr. at
247:24-248:2; JX-0252C at 281:15-17).
The 844 patent does not include any figures or written description of a “hollow cylinder.”
See generally 844 patent. It seems natural, then, that the term should be given a broad, plain and
ordinary meaning consistent with the 844 patent claims’ recitation of “cylinder” and “hollow
cylinder” in a single limitation (implying “cylinder” alone is non-hollow). See, e.g., 844 patent at
cl. 13. Ingevity’s proposed construction, “a cylinder with one or more voids,” generally fits these
criteria. However, to be operative the voids must provide for fluid passage from one end of the
cylinder to the other. 	Respondents’ expert, Mr. Lyons, testified that a cylinder with an open
internal cavity but also an “X” or “criss-cross” solid carbon shape running down its center would
not be hollow because that cylinder would not have an “empty space.” See RX-0381C at Q/A 398-
403; RRB at 7. But an “X” internal shape does not preclude the existence of an “empty space,” as
empty spaces are created in between each arm of the “X.”
Combining these two observations, a cylinder with one or more voids or empty spaces, and
that allows for fluid passage from one end of the cylinder to the other, is a cylinder possessing a
generally understood (i.e., plain and ordinary) characteristic of a “hollow” structure. In fact, to the
extent Respondents take up their expert’s construction of “hollow” as an “empty space,” that
actually comports with Ingevity’s construction of “voids,” as a void is by definition an empty

46
space. 	If there is reason to further narrow or restrict the nature of the voids within the cylinder
(e.g., the void must result in a cylinder wall of constant thickness), the parties have not presented
it to me. I therefore construe “hollow cylinder” as a “cylinder with one or more voids or empty
spaces that allow for fluid passage from one end of the cylinder to the other” and apply this
construction for the purposes of this initial determination.
2. 	Claim Preambles
Related to claim construction, the parties recognize the possibility that the preambles of
claims 1, 18, 31, and 43 may be limiting. See CIB at 21 (“to the extent any preamble is limiting,
each are met . . . .”), 23, 38, 39; RIB at 37 (“Ingevity did not prove that the DI Products practice
claims 31, 43, or any of their dependent claims, if the preambles are limiting”). 	Neither party,
however, actually contends that the preambles are or are not limiting. See generally CIB; RIB;
CRB; RRB; RX-0381C at Q/A 423, 435.
Nevertheless, the preambles of claims 1, 18, 31 and 43 are limiting. 	In claim 1, the
preamble recites “reducing fuel vapor emissions” and the body of the claim refers to that same fuel
vapor with antecedent basis language, “the steps of contacting the fuel vapor.” 844 patent at cl. 1
(emphasis added). Further, the claim body’s recitation of “initial” and “subsequent” has very little
meaning when divorced from the preamble’s recitation of “fuel vapor emissions in automotive
evaporative emissions control systems.” Id. I therefore find the preamble of claim 1 gives life and
meaning to the remainder of the claim, so as to be limiting.
The preamble of Claim 18 is also limiting as it recites the same “reducing fuel vapor
emission in an automotive evaporative emissions control system,” with the body of the claim then
referring to “the fuel vapor” routed through “initial” and “subsequent” adsorbents. 844 patent at
cl. 18. Further, the preamble of claim 18 is followed by “the improvement comprising,” which is
Jepson formatting and another mark of a limiting preamble. 	844 patent at cl. 18; Epcon Gas, 279

47
F.3d at 1029. 	Claim 31 is similar, including Jepson language “the improvement wherein,” and
otherwise reciting an extreme amount of structural language in the preamble that can only be
viewed as intended to give meaning and life to the remaining body of the claim, especially as
necessary context for “initial” and “subsequent” adsorbents later recited. Id. at cl. 31.
Lastly, the vast majority of claim 43 is limiting. Unlike claims 1, 18, and 31, a preamble
in claim 43 is not easily identifiable, and there is also no Jepson formatting language separating
the invention from conventional elements. See 844 patent at cl. 43. If there is a preamble, it would
likely be “[a] canister operative for use in automotive systems for emission control defined by . . .
.” Id. This language is enough, however, to differentiate claim 43 from claims 1, 18, and 31 such
that it is clear claim 43 is directed to a canister apparatus, as opposed to a method of using a canister
(claims 1, and 18), or a larger emissions control system within an automobile that includes a
canister as a constituent (claim 31). With this direction in mind, there are only three phrases within
the claim that are not limiting. 	These phrases are “formed in a tank for storing volatile fuel,”
“during operation of an engine induction system,” and “to the induction system of the engine.”
These phrases describe structures which are obviously not part of a canister apparatus, but the
environment in which the canister is expected to operate. 	As such, they do not lend essential
meaning to the inventive features of the canister and are therefore not limiting. Acceleration Bay,
908 F.3d at 770. All other language, however, is limiting.
3. 	35 U.S.C. § 112, ¶ 2 (Indefiniteness)
It is further appropriate at this time to discuss Respondents’ two claims of indefiniteness.
As I previously noted, the prehearing briefing on indefiniteness was not sufficiently fleshed out,
so resolution of the issue—which Respondents first presented before the evidentiary hearing—was
deferred. 	See Order No. 15 at 23-25. 	The parties have now briefed the issue much more
thoroughly; the parties’ positions are summarized below.

48
a. 	Volume Terms
First, Respondents identify a collection of claim terms referred to as the “Volume Terms”
(RIB at xi, 38) as indefinite and note these appear in the ordered constructions for “adsorption
capacity” and “incremental adsorption capacity” (“IAC”) (id. at 39). This is important, according
to Respondents, because IAC “is a function of volume, namely grams of n-butane per liter. . . .
Thus, a change in the magnitude of the adsorbent volume necessarily changes the IAC of that
adsorbent volume.” RIB at 39 (citing RX-0380C at Q/A 170). Respondents argue that the effect
of volumetric dilution on IAC eliminates reasonable certainty as to the scope of the Volume Terms
because “it is not apparent whether or how to include those diluents or where any such adsorbent
starts or ends.” Id. at 40 (citing RX-0380C at Q/A 168-169). Respondents cite to various portions
of the specification to show a lack of guidance on these questions (see id. at 40-42) and to Order
No. 15’s discussion of “trapped air spaces” and “air gaps” as an example of ambiguity affects the
scope of the Volume Terms (see id. at 41-44 (“All of these different ways of treating the air gap
in the calculations will lead to different IAC results, which, in some instances, will lead to different
conclusions regarding infringement or non-infringement.”), 44-45 (citing Advanced Aerospace
Techs., Inc. v. United States, 124 Fed. Cl. 282 (Fed. Cl. 2015)). Respondents also view Ingevity
and its witnesses as changing their explanations, or contradicting each other, on what would be the
proper bounds for adsorbent volumes. See id. at 45-49 (citations omitted).
In response to this ground of indefiniteness, Ingevity argues Respondents’ discussion of
diluents is of no import because “the adsorbent volume is limited to adsorbent bed plus any diluents
added to the bed, [such that] the bounds of the adsorbent volu[m]e are readily ascertainable so
there is no ambiguity regarding what is and is not part of the volume.” CIB at 53. Ingevity further
contends that even if the Volume Terms of the independent claims are considered indefinite, that

49
problem is fixed by “claims 12-14 and their analogs (claims 25-27, 37-39, and 49-51) . . . because
those claims’ additional limitations clarify the boundaries of the ‘adsorbent volume.’” Id.
Overall, however, Ingevity argues “‘adsorbent volume’ had a recognized meaning to a
POSITA,” with that meaning being “packed beds.” See CIB at 54 (citing Hr’g Tr. at 704:12-18;
CX-1143C at Q/A 87-90; 844 patent at 4:9-13, 4:31-32, 5:11-18, 6:6-14). 	Ingevity cites one
publication in particular, CX-0959 (“Towler”), as showing a packed bed of adsorbent sandwiched
between two layers of inert ceramic balls, yet referring to just that bed as the “adsorbent volume:”
The volume of each adsorbent bed can be estimated from the mass of
adsorbent and the adsorbent bulk density. Fixed beds of adsorbent are
usually 	used, 	to 	give 	a sharp 	adsorption 	concentration 	profile. 	The
adsorption vessel can then be sized as a cylindrical pressure vessel that
contains the adsorbent volume, using the pressure vessel design methods
given in Chapter 14. The head space is usually left empty and up to 20% of
the volume between the tangent lines of the vessel is packed with inert
material to ensure that a uniform flow profile is established at the entry and

50
exit of the bed and to prevent “fingering” of contaminant through the bed
(Figure 16.5).
Id. at 55 (citing CX-0959 at *10-11 (emphasis by Ingevity)); see CRB at 22 (discussing CX-0962).
Ingevity continues:
Even Respondents’ expert Mr. Lyons agrees that POSITA traditionally
distinguish between adsorbent volumes and adjacent features such as an air
gaps and foams. RX-0380C (Lyons) at Q/A 156, 179.
But while POSITA exclude external design elements from the adsorbent
bed or volume, they include interstitial spaces between adsorbent particles
constituting the adsorbent bed. This is because all adsorbent beds pack in a
way that results in such interstitial spaces and since interstitial spaces are
necessary to permit the fluid stream to pass through the bed—and thus
necessary to the functioning of the bed. CX-1143C (Rockstraw) at Q/A 100-
103. Respondents’ position on whether POSITA include interstitial spaces
in adsorbent volumes has been a moving target. Respondents’ expert Mr.
Lyons initially testified that POSITA consider adsorbent volumes as “only
the volume of the adsorbent material or substance itself.” RX-0380C
(Lyons) at Q/A 156. But now, Mr. Lyons testifies that the adsorbent volume
does indeed include interstitial air spaces. Tr. (Lyons) at 494:19-24, 496:4-
10.
CIB at 56. Perhaps more clearly, Ingevity states:
In any event, before the Patent, and as seen in the foregoing art, POSITA
already recognized the boundaries of adsorbent volumes in packed bed unit
operations such as fuel vapor canisters—namely, that adsorbent volumes
include the adsorbent particles constituting a packed bed and interstitial
spaces in the packed bed but exclude adjacent design features such as air
gaps, inert fillers, and support screens. CX-1143C (Rockstraw) at Q/A 106-
08. POSITA recognized that an adsorbent volume is a collection of
adsorbent particles and interstitial spaces where there is continuous contact
between the constituent particles from one end of the bed to the other.
Id.; see CRB at 21 (“Ingevity has shown that adsorbent volumes begin where the adsorbent begins
and end where the adsorbent ends.”) (citing CX-1143C at Q/A 92-108). Ingevity then argues the
844 patent only expands the meaning of “adsorbent volume” to include diluents inserted within
the adsorbent bed—and does not adopt a meaning which “expand[s] the geometric boundaries of
the adsorbent volume . . . .” CIB at 57 (citing CX-1143C at Q/A 109-111); see id. at 57-62 (citing,

51
inter alia, 844 patent at 7:6-25). 	Ingevity argues this is the case even for that portion of the
specification which refers to “plac[ing] multiple thin layers of non-adsorbing particles or porous
mats (e.g., foam), or simply trapped air space between layers of adsorbent” as a dilution technique.
See id. at 58-59; 844 patent at 7:22-25; see also CRB at 24 (“Even if ‘layers’ and ‘beds’ are
synonymous . . . considering foams or air spaces completely external to the adsorbent bed to
constitute diluents contradicts the understanding in the art and the Summary of the Invention.”).
Stepping back, Ingevity reasons that for any structure (or lack of structure, i.e., air space)
to affect IAC (i.e., effect dilution) it must be in the adsorbent bed, and provides the following
illustrations showing this technique as compared to a layer which would be external to the bed and
thus not affecting IAC:
“foams or air spaces in adsorbent beds”
air space or foam not in adsorbent bed

52
CIB at 59 (citing CX-1143C at Q/A 130, 141-144); see id. at 59 (“In contrast, the foam or airspace
[below] prevent[s] continuous contact between the adsorbent particles and thus separate two
adsorbent beds from each other.”), 63 (“the adsorbent volumes in the Patent do not include features
external to the adsorbent beds” (emphasis in original)), 64 (“Because the trapped air spacer
particles, trapped air spaces, fibers, and screens must be internal to the adsorbent bed in order to
accomplish dilution, and the boundaries of the adsorbent bed are knowable, there is no
indefiniteness introduced here with regards to the adsorbent volume.”). 	Thus, according to
Ingevity and its expert, the 844 patent’s reference to “[a]lternative methods for diluting the vent-
side region are . . . to place multiple thin layers of non-adsorbing particles or porous mats (e.g.,
foam), or simply trapped air space between layers of adsorbent” (844 patent at 7:22-25), means
the following top figure and not the bottom:
“multiple thin layers of non-adsorbing particles or porous mats (e.g., foam), or simply trapped
air space between layers of adsorbent”
NOT “multiple thin layers of non-adsorbing particles or porous mats (e.g., foam), or simply
trapped air space between layers of adsorbent”

53
CRB at 24 (citing CX-1143C at Q/A 168-169). Ingevity concludes: “[t]hat the Patent does not
include within the ambit of its adsorbent volumes design features outside its packed beds is
apparent from its failure to identify any such features in the embodiment of Figure 2 as part of any
adsorbent volume.” CIB at 60 (citing CX-1143C at Q/A 145-149).
In their reply brief, Respondents argue there is no merit to Ingevity’s position that
adsorbent volumes do not include features external to an adsorbent bed, citing the 844 patent’s
discussions of dilution through layers of non-adsorbing materials or air “between layers of
adsorbent” and interchangeable references to “beds” and “layers.” 	RRB at 16-17 (citing, inter
alia, 844 patent at 7:22-25, 4:9-13; Hr’g Tr. at 633:6-634:12), 24-25 (contending foam or airspace
within an adsorbent bed is not a “layer” as used in the patent). Respondents also refer to a separate
Ingevity patent concerning similar subject matter, RX-0255C, as evidence that air gaps and foams
which completely separate adsorbent beds are nonetheless understood to affect IAC values. See
id. at 19-21; see also id. at 24-25. Respondents further dispute the idea that claims 12-14, and their
analogs, avoid indefiniteness by more clearly identifying the boundaries of the adsorbent volume.
Id. at 21-23.
Respondents have not shown indefiniteness by clear and convincing evidence for all
asserted claims. The core of Respondents’ first claim of indefiniteness is perceived ambiguity on
“where the volumes begin and end” (RIB at 1, 38) and correspondingly “whether and to what

54
extent the volumes are diluted by elements external to the adsorbent bed/layer” (id.) as
prerequisites to evaluating IAC. 	At the outset, collectively grouping “Volume Terms” is
overbroad. 	As shown in Respondents’ preface, the members of the Volume Terms are actually
quite diverse:
Any claim term in the ’844 patent purporting to require or describe a volume
of adsorbent, including “adsorbent volume,” “adsorbent material containing
volume,” “adsorbent-containing volume,” “volume of fuel vapor adsorbent
material,” “volume of vapor adsorbent,” “volume of adsorbent,” “volume
of vapor adsorbent material,” “first volume,” “subsequent volume,” and
“volume,” individually or collectively.
RIB at xi; see CIB at 52-53. 	I previously noted that this diversity, particularly the distinction
between “material” and “volume,” may be relevant to evaluating indefiniteness. See Order No. 15
at 24-25.
The evidence cited by Ingevity, to the effect that a skilled artisan would have understood
the term “adsorbent” (and, by extension, “material”) as describing a contiguous body, is credible.
In light of such evidence, Respondents have not met their burden of showing a fatal ambiguity
exists in the terms “volume of fuel vapor adsorbent material,” “volume of vapor adsorbent,”
“volume of adsorbent,” and “volume of vapor adsorbent material” appearing in claims 31, 43, and
those dependent thereon. 	A plain and ordinary reading of each term would be the contiguous
three-dimensional space (i.e., “volume”) occupied by the adsorbing material (i.e., “fuel vapor
adsorbent material” / “vapor adsorbent” / “adsorbent” / “vapor adsorbent material”).
As to the 844 patent’s discussion of IAC dilution via “multiple thin layers of non-adsorbing
particles or porous mats (e.g., foam), or simply trapped air space between layers of adsorbent”
highlighted by Respondents (RIB at 40 (citing 844 patent at 7:22-25)), certainly this statement
suggests complete layers of non-adsorbing materials or non-adsorbing air space could be
considered part of an “adsorbent volume” as diluents. Yet the patent’s reference to “thin” indicates

55
the size of the diluent is not significant compared to the volume of adsorbent, so as to exclude
large air spaces or thick foam layers that clearly break up separate volumes of adsorbent. And the
patent’s reference to “between” suggests that these non-adsorbing structures are those located
within an otherwise measurably distinct adsorbent volume.
As to Respondents’ highlight of claim 15 and its recitation of diluents “external to the
adsorbent” (RIB at 50-51), this phrase does not necessarily mean “external to the adsorbent
volume.” 	It may simply mean external to the pellets or pieces of adsorbent within the volume.
The 844 patent specification reads, in mirrored language, “[t]he method claimed herein includes
an embodiment wherein the volumetric dilution is accomplished by the use of inert spacer
particles, foams, fibers, and screens external to the vent-side adsorbent particles and monoliths.”
844 patent at 10:20-24 (emphasis added). Further, if there is ambiguity in this claim language that
affects definiteness, the flaw would only apply to claim 15 (and its analogs 28, 40, and 52), and,
as explained below, would not be determined in this investigation because these claims are not
asserted for infringement or domestic industry purposes.
The Volume Terms “first volume,” “subsequent volume,” and “volume” appear in the
claims only in reference to one of “volume of fuel vapor adsorbent material,” “volume of vapor
adsorbent,” “volume of adsorbent,” and “volume of vapor adsorbent material.” See 844 patent at
cls. 31, 33-36, 43, 45-48. There is therefore no indefiniteness problem with these terms either.
“Adsorbent volume” as it appears in claim 1 and claims dependent thereon, is also fairly
read to have the same meaning of a contiguous three-dimensional space occupied by the adsorbing
material. Apart from the claims, this term appears in the specification, and its usage would inform
one of skill in the art that its boundaries are those of the adsorbent body’s boundaries. See 844
patent at 3:46-53 (“On the fuel source-side of the canister, standard high working capacity carbons

56
are preferred. On the vent-side, the preferred adsorbent volume exhibits a flat or flattened
adsorbent isotherm on a volumetric basis in addition to certain characteristically desirable
adsorptive properties across broad vapor concentrations, specifically relatively low incremental
capacity at high concentration vapors compared with the fuel source-side adsorbent volume.”),
4:39-42 (“Thus, when such a material is employed as an adsorbent volume on the vent-side region
of a canister, purge is able to reduce the vapor concentration in the area of the purge inlet to a very
low level.”), 5:22-28 (“It is notable that the emission of vapor from the main, high-capacity fuel
source-side volume of adsorbent into the auxiliary lower capacity vent-side volume is significantly
affected by the presence of that vent-side volume. During purge, a vent-side adsorbent volume
having a flat adsorption isotherm will give up a relatively small hydrocarbon load into the purge
gas.”).
Such boundaries are not clear in all claims, however. The plain and ordinary meanings of
“adsorbent material containing volume” and “adsorbent-containing volume” are simply volumes
that contain an adsorbent—as opposed to the volume the adsorbent takes up. Thus, the boundaries
of the volumes are unrestricted and could conceivably include air plenums, head spaces, or other
air handling passageways which delineate bodies of adsorbent. 	They could also include, for
example, the “inert ceramic balls” as shown in the Towler reference discussed above, as that text
mentions both a smaller “adsorbent volume” (space taken up by adsorbent) and a larger flow
volume (space taken up by adsorbent and inert ceramic balls). CX-0959 at *11 (“The head space
is usually left empty and up to 20% of the volume between the tangent lines of the vessel is packed
with inert material to ensure that a uniform flow profile is established . . . .”). Given that IAC is
defined in terms of adsorption capacity per unit of volume (see 844 patent at 5:46-55, 7:43-55, cl.
1), uncertainty over the boundaries of the volume (and, by extension, what materials, adsorbing or

57
non-adsorbing that are caught up in it) directly causes uncertainty over IAC. As IAC values within
certain ranges are the crux of the 844 patent invention, this uncertainty is unreasonable for those
seeking to determine if their method reads upon the claim. Nautilus, 134 S. Ct. at 2129. The 844
patent offers no guidance on where to draw these lines. 	See generally Order No. 15 at 19-22.
Therefore “adsorbent material containing volume” and “adsorbent-containing volume,” are
indefinite limitations. Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1374 (Fed. Cir. 2014)
(“[A] skilled artisan is still left to wonder what other forms of display are unobtrusive and non-
distracting. . . . The specification offers no indication, thus leaving the skilled artisan to consult
the “unpredictable vagaries of any one person's opinion.’ . . . Such ambiguity falls within ‘the
innovation-discouraging ‘zone of uncertainty’ against which the Supreme Court has warned.’”)
To be precise, these terms only appear in independent claim 18, and the indefiniteness only
affects that portion of the claim referring to IAC of a “subsequent adsorbent-containing volume.”
The “initial” IAC value in this claim is not tied to volume at all and refers, uniquely among all
claims, to an IAC of “initial adsorbent material.” See 844 patent at cl. 18 (“routing the fuel vapor
through an initial adsorbent material-containing volume wherein the initial adsorbent material is
characterized by an 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”); Order No. 15 at 24-25. In this
way, uncertainty over the boundaries of the initial “volume” may be diminished as it is IAC of the
“material” which is evaluated—to the extent that evaluation is even possible. 	Regardless, the
claim is still rendered indefinite through its recitation of an IAC value for an ambiguous
“subsequent adsorbent-containing volume.” While Ingevity does not discuss these two terms apart
from all Volume Terms collectively, its overall argument on “adsorbent volume” as meaning the
volume of an adsorbent bed (see, e.g., CIB at 65 (“In the art, adsorbent volumes are equated with

58
adsorbent beds . . . .”)) clearly applies directly to the Volume Terms of claims 1, 31, and 43. But
under the principle of claim differentiation, it has little bearing on the plain and ordinary meanings
of “adsorbent material containing volume” and “adsorbent-containing volume.”
Claims dependent on claim 18 may also be invalid, either merely by virtue of that
dependency, or for some additional reason. 	Although no party addresses the issue, the claims
depending from claim 18 all possess an antecedent basis problem: while claim 18 uses the term
“subsequent adsorbent-containing volume,” those of its dependent claims at issue—specifically,
claims 19, 21, and 24—use the term “subsequent adsorbent volume.” 	844 patent at cls. 19-24.
Because of the lack of antecedent basis, it is not clear whether the “subsequent adsorbent volume”
of the dependent claims refers to the entire “subsequent adsorbent-containing volume,” or just to
the adsorbent contained within the volume recited in claim 18, or to something else. If “subsequent
adsorbent volume” refers to the entire volume, then it is fatally ambiguous, as explained; if it refers
just to the adsorbent, then each dependent claim necessarily includes the fatal limitation of claim
18; and if it refers to something else, the intrinsic evidence sheds no light on what it might be.
Accordingly, I find claim 18 and those depending therefrom (i.e., claims 19, 21, 24-27,
and 29) are invalid under 35 U.S.C. § 112 for indefiniteness.
b. 	IAC Calculations
Respondents’ second ground of indefiniteness concerns a perceived ambiguity in the
manner in which IAC is calculated. 	RIB at 51-56. 	Respondents take the position that “[i]f a
claimed feature is one that is measured, and different testing methods provide different results,
then the patent specification and prosecution history must identify which testing method to use or
else the claim is indefinite.” Id. at 51 (citing Dow Chem. Co. v. Nova Chems. Corp. (Can.), 803
F.3d 620, 633-35 (Fed. Cir. 2015); Honeywell Int’l, Inc. v. Int’l Trade Comm’n, 341 F.3d 1332,
1339-41 (Fed. Cir. 2003)); see id. at 51-52 (citing Teva Pharms. USA, Inc. v. Sandoz, Inc., 789

59
F.3d 1335, 1341-45 (Fed. Cir. 2015)). 	Respondents refer to an internal Ingevity report which
utilized three different methods and came up with results “differ[ing] up to 4.5 g/L” (id. at 52-53
(citing, inter alia, RX-0395C)) and to a different report submitted to the EPO which also show
“difference[s] of up to 4 g/L” (id. at 53 (citing RX-1098C), 56 (citing RX-0340C)). Respondents
view these differences as significant in light of Dr. Rockstraw’s reliance on IAC deviations as
small as 0.035 g/L to find infringement. Id. at 53 (citing CX-0909C at Q/A 145). Respondents
add that different techniques used within those methods add to the ambiguity, such as: use of
adsorption or desorption data, data point interpolation, sample preparation, apparent density
calculation, and use of significant figures. See id. at 53-55 (citations omitted).
Additionally, in their reply brief, Respondents respond to two studies appearing in
Ingevity’s discussion of the issue, CX-0285 and CX-0286, and argue they too “report[] very
different values of adsorption capacity for the same materials.” RRB at 27. Respondents reason
this is the case because “unlike something more finite that can be measured using a ruler or a more
complex electronic tool (such as the length of a pencil), adsorption capacity of an adsorbent is [a]
more abstract measurement . . . .” Id. (citing RX-0380C at Q/A 210-231).
Here, Respondents have not met their burden to show the concept of adsorption capacity
is subject to such measurement variability so as to be indefinite. In Nautilus, and referenced in
Dow, the Supreme Court explained, “[i]t cannot be sufficient that a court can ascribe some meaning
to the patent’s claim; the definiteness inquiry trains on the understanding of a skilled artisan at the
time of the patent application, not that of a court viewing matters post hoc.” Nautilus, 134 S.Ct.
at 2130 (emphasis added); see Dow, 803 F.3d at 630, 634 (“The question is whether the existence
of multiple methods leading to different results without guidance in the patent or the prosecution
history as to which method should be used renders the claims indefinite.”). “At the time of the

60
patent application” bears emphasis because the two documents Respondents primarily hold up as
evidencing “numerous different testing methods that provide significantly different results for the
same samples” (RIB at 52-53) are Ingevity documents from 2014 (RX-0395C at *1) and 2015
(RX-1098C at *1). The 844 patent, on the other hand, was filed in the 2001 to 2003 timeframe
(844 patent) and neither RX-0395C nor RX-1098C represents or describes the adsorption capacity
measurement methods discussed as known in the relevant time frame by those of ordinary skill
(or, for example, by those in industry or the like).
Respondents demonstrate an awareness of this timing requirement. 	In a discussion of
apparent density measurement options, they state, “[a] PHOSITA reading the ’844 patent would
use the ASTM standard, so Ingevity’s claim that the patent was incorrect and an undisclosed
method (for which there is no evidence it existed at the time of filing of the patent) should be used
renders the IAC terms indefinite.” RIB at 55 (emphasis added). Respondents’ expert, Mr. Lyons,
similarly remarks “[a]t the time of the alleged inventions, and even today, there was and is no
industry standard method for measuring adsorption capacity or incremental adsorption capacity.”
RX-0380C at Q/A 204; see RX-0380C at Q/A 210. Yet Mr. Lyons cites no evidence to show what
those supposedly known but non-standard methods would have been and what their results would
have produced. 	See generally RX-0380C at Q/A 203-231. 	Instead, his testimony consists of
speculation. See id. at Q/A 215 (“Given the ’844 patent’s apparent failure to disclose a process
for computing the apparent density of non-granular materials (according to Ingevity), different
PHOSITAs would compute different apparent densities, and thus different IAC values, for the
same material.”), 231 (“there are many different methods for calculating adsorption capacity . . .
do not provide any guidance to a PHOSITA as to which method to select.”). Indeed, he practically
admits he has no relevant information here. Id. at Q/A 205 (“[I]n addition to the lack of clarity in

61
the intrinsic record, there is also nothing in the extrinsic record or knowledge of the PHOSITA
that would shed further light on these questions regarding the volume terms.”). To the extent Mr.
Lyons, or Respondents, seek to rely on Dr. Rockstraw’s testimony to fill this gap and show what
would have been known (see, e.g., RX-0380C at Q/A 212 (“[A] number of general methods for
measuring n-butane isotherms of adsorbent materials were well known, as documented by
Ingevity’s expert, Dr. Rockstraw.”), that testimony has not been clearly identified or explained.
If there is an exception to this timeframe issue, it would be the first sentence of RX-0395C
which reads “prior to 2014, all incremental butane working capacity data for patent application or
potential infringement questions had been generated with the McBain apparatus and test method.”
RX-0395C at *1; see RX-0395C at *3. Yet this singular statement is not sufficient, because it is
limited to what was known by Ingevity itself, and is still divorced in time from the early 2000s.
The document is not referenced at all by Mr. Lyons in support of his indefiniteness opinion. See
RX-0380C at Q/A 207-231. RX-0395C and RX-1098C therefore shed little light on what choices
a person of ordinary skill at the time of the 844 patent application would have both known and
been able to select between. 	Dow, 803 F.3d at 634 (“The question is whether the existence of
multiple methods leading to different results without guidance in the patent or the prosecution
history as to which method should be used renders the claims indefinite.”).
Even assuming that these two documents, in addition to CX-0285 and CX-0286, reflect
what a person of ordinary skill would have known at the relevant time, the present circumstances
do not resemble those that contributed to the indefiniteness holdings in Dow and Teva. In Dow,
the court very clearly explained the steps of each method of measuring strain hardening slope and
why they produce different results. 	See Dow, 803 F.3d at 633. 	Here, Respondents report the
different results Ingevity obtained by these methods, but there is no discussion of why the

62
differences arise or why they would have arisen when performed by a person of ordinary skill.
RIB at 51-56. 	Such a discussion would be helpful to clearly and convincingly demonstrate the
quandary a person of ordinary skill would have been in to determine if their device or method
infringes, but it is not given.
In Teva, the term “molecular weight” was held indefinite because, inter alia, the term had
no meaning to one of skill in the art—instead more precise terms such as “peak average molecular
weight,” “number average molecular weight,” and “weight average molecular weight” were
known. Teva, 789 F.3d at 1338. Further, each of these was held to be “calculated in a different
manner” and “in a typical polymer sample, M p , Mn , and M w have different values.” 	Id.
“Adsorption capacity,” and correspondingly, “incremental adsorption capacity,” are different.
This is not a term with no known meaning. It is the mass of butane adsorbed by a given volume
under certain conditions. 844 patent at Fig. 3. Further, regardless of the experimental setup, the
overall goal of the measurement techniques is the same—to measure the mass gained by a sample
as it is exposed to butane vapor—as described both by Ingevity in its representations to the EPO
and by Respondents’ expert. 	Ingevity stated, “[r]egarding the measurement of the adsorption
isotherms itself it is true that there exist different methods. However, all these methods have in
common that they measure the weight gain of an adsorbent when equilibrated under a partial
equilibrium pressure of vapor.” RX-1098C at *10. Mr. Lyons concurs:
Application of these methods to materials such as activated carbon usually
requires that a sample be finely divided, specially prepared to remove water
and any other adsorbed species, and weighed. The sample is then placed
into a temperature controlled apparatus, the design of which varies
depending on the specific methodology used. The concentration of n-butane
gas in the apparatus is then increased beginning from low levels and the
mass of n-butane adsorbed is measured.
RX-0380C at Q/A 212 (emphasis added).

63
In contrast, the present record matches the principle set out in Ethicon Endo-Surgery, Inc.
v. Covidien, Inc., 796 F.3d 1312 (Fed. Cir. 2015). In a very similar context of measuring clamping
pressure on tissue, the Federal Circuit held:
[T]he definiteness requirement of 35 U.S.C. § 112 mandates only that one
skilled in the art must be able to understand which pressures are relevant to
the claims and how those pressures can be measured, so to discern the scope
of the claimed average pressure range with reasonable certainty. See
Nautilus, 134 S.Ct. at 2124. If such an understanding of how to measure the
claimed average pressures was within the scope of knowledge possessed by
one of ordinary skill in the art, there is no requirement for the specification
to identify a particular measurement technique.
Ethicon, 796 F.3d at 1319. Here, it is clear a person of skill in the art reading the 844 patent would
understand the value relevant to the claims—mass of butane adsorbed by a volume—and the
record shows that that person would likely know the general means of obtaining that value,
involving varying degrees of accuracy. See RX-0380C at Q/A 212 (describing overall process that
was supposedly known). The record does not support Respondents’ view that adsorption capacity
is “abstract.” RRB at 27.
Those further “options” within the different adsorption capacity “tests” outlined by
Respondents (see RIB at 53-56) do not alter this conclusion. Respondents refer to RX-0395C to
show the differences between the use of desorption and adsorption data (id. at 53-54); but as
Ingevity notes, the document clearly states desorption data is superior. 	RX-0395C at *8.
Respondents discuss different means of data interpolation (id. at 54), but this is a choice occurring
after experimental data is gathered (see RRB at 30 (“The analysis of the data, however, will differ
depending on how the dots in the plot are connected.”)). It establishes no ambiguity in measuring
or knowing what is meant by “adsorption capacity.” Respondents’ concern over significant figures
(RIB at 55) is similarly unpersuasive.

Respondents’ consideration of sample preparation is also not persuasive; the only example
given is destructive preparation, observed to have been done by Ingevity in some circumstances,
but otherwise not alleged to have been employed by persons of ordinary skill at the relevant time.
Id. at 54; RX-0380C at Q/A 214. Indeed, it seems very likely persons of ordinary skill would
know the importance of not destroying a sample before adsorption capacity testing.

Respondents’ discussion of apparent density (RIB at 54-55) is rooted in an alternative to
an ASTM test mentioned in the 844 patent—an alternative Ingevity’s expert, Dr. Rockstraw,
employed in ¢his investigation and not alleged to have been used at the relevant time by the relevant
persons. Further, the record is clear that ASTM D2854 is simply not appropriate for some types
of adsorbents, like Ingevity’s monolithic honeycomb structures or others with packing constraints.
See JX-0222 at *1 (“Select a 100, 250, or 500 mL graduated cylinder appropriate for the particle
size of the activated carbon to be tested. The inside diameter of the cylinder shall be at least 10
time the mean particle diameter (MPD) as determined by Test Method D 2862.”). Finally, Iagree
with Ingevity that the testimony of Drs. Hitomi, LaBine, and Yamasaki on this point (RIB at 55-
56) is self-serving and thus cannot be accorded much weight.

Therefore, Respondents have not shown the claims of the 844 patent are indefinite over the
use of the term “adsorption capacity.”

D. Infringement

According to Ingevity’s post-hearing briefing, the use, manufacture, or sale of the

following Accused Products are alleged to infringe the asserted claims of the 844 patent:

Claims Accused Products Alleged to Infringe

1, 18, 31, 43 (independent) All

4, 5, 19 (dependent) All

65
2 (dependent)
3 (dependent)
8, 21, 33, 45 (dependent) 	All
11, 24, 36, 48 (dependent) 	All
13, 38, 50 (dependent) 	All
See CIB at 6, 21-25.
Significantly, Ingevity does not explicitly allege that any Respondent itself directly
infringes an asserted claim of the 844 patent. Compare CIB at 6-29 with CX-0909C at Q/A 1944.
Rather, Ingevity asserts that “MAHLE’s Accused Canisters, or their intended use, directly
infringes at least claims 1-5, 8, 11, 13, 18-19, 21, 24, 31, 33, 36, 38, 43, 45, 48, and 50 of the ’844
Patent. 	MAHLE, Kuraray, and Nagamine indirectly infringe the ’844 Patent by contributory
and/or induced infringement.” Id. at 6. Nevertheless, certain statements in Ingevity’s discussion
of indirect infringement could be viewed as alleging respondent MAHLE NA directly infringes
the “Canister Claims,” which are claim 43 and those depending therefrom. 	See CIB at 31
(discussing Kuraray “actively inducing MAHLE NA to directly infringe . . . . at least the Canister
Claims”), 32 (“MAHLE NA’s direct infringement . . . . intends for MAHLE NA to directly
infringe”), 33 (“used by MAHLE NA to directly infringe”), 34 (“MAHLE NA’s direct
infringement”). 	As discussed above, claim 43 is a canister apparatus claim, such that the

manufacture, use, or sale of canisters which meet the recited language would constitute direct

infringement. Thus, I interpret Ingevity’s briefing to allege that of the Respondents, only MAHLE

is a direct infringer and only for claim 43 and those claims depending therefrom.

1. Direct Infringement

Ingevity has shown by a preponderance of the evidence direct infringement through the

manufacture, use, or sale of the following Accused Products:

Claims

Accused Products Determined to Infringe

1, 18, 31, 43 (independent)

All, except:

2 (dependent)

3 (dependent)

4, 19 (dependent)

All that infringe the preceding independent and dependent

claims

5 (dependent)

All that infringe the preceding independent and dependent

claims, except:

66

67
8, 21, 33, 45 (dependent) 	All that infringe the preceding independent and dependent
claims
11, 24, 36, 48 (dependent) 	All that infringe the preceding independent and dependent
claims
13, 38, 50 (dependent) 	All that infringe the preceding independent and dependent
claims, except:
a. 	Undisputed Claims
Respondents do not contest Ingevity’s claims of direct infringement under the following
claims, apart from their dependency on others for which direct infringement is disputed: 2, 3, 4, 5,
8, 11, 19, 21, 24, 33, 36, 45, and 48. See RIB at 5, 26, 27; RRB at 7-13. In view of the testimony
of Dr. Rockstraw that all the relevant Accused Products include the limitations recited in these claims,
and there being no clear disagreement from Respondents as to that fact, I find that those identified
Accused Products meet the limitations of the dependent claims as alleged, subject to certain exceptions
discussed below and as reflected in the table above. See CX-0909C at Q/A 240-1939; CIB at 23-26.
b. 	Disputed Claims
Respondents do contest Ingevity’s claims of direct infringement under the following
claims: 1, 13, 18, 31, 38, 43, and 50. 	See RIB at 5, 26, 27, 29; RRB at 7-13. 	Of these claims,
claims 1, 18, 31, and 43 are independent, and claims 13, 38, and 50 are dependent. For the reasons
discussed below, Ingevity has shown direct infringement of the following claims as reflected in
the table above: 1, 13, 18, 31, 38, 43, and 50.

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i. 	Claim 1
For reference, claim 1 of the 844 patent requires:
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.
844 patent at cl. 1.
Several disputes exist between the parties concerning whether Ingevity and its expert, Dr.
Rockstraw, have sufficiently shown the Accused Products meet the limitations of the claim—
specifically, the incremental adsorption capacities required for both the “initial adsorbent volume”
and the “subsequent adsorbent volume.”
First, the “subsequent adsorbent volume” limitation. To show this limitation is met, Dr.
Rockstraw explains he directed a third party testing lab, Particle Testing Authority (“PTA”), also
known 	as 	Micromeritics 	Instruments 	(“Micromeritics”), 	“to 	perform 	static 	volumetric
measurements of the adsorption capacity” on samples of the adsorbents which are contained within
each Accused Canister. CX-0909C at Q/A 72. The returned data consisted of adsorption isotherms
for two samples of each adsorbent (id. at Q/A 87), which are a collection of data points reflecting
the amount of adsorbate (i.e., butane) adsorbed by the adsorbent at the temperature specified in the
claim (i.e., 25℃) and at varying pressures (id. at Q/A 88-90, 137-138). Dr. Rockstraw then applied
commonly understood conversion factors onto this data to arrive at the mass of butane adsorbed
per mass of adsorbent (i.e., g/g) for each data point. Id. at Q/A 91.
The returned data, however, did not include points corresponding exactly to the 5% and
50% n-butane levels specified in the claim. CX-0909C at Q/A 91. Thus, to determine the mass
of butane adsorbed per mass of adsorbent at 5% and 50%, Dr. Rockstraw used two-point

69
interpolation wherein a straight line is drawn between the two nearest PTA data points on either
side of the 5% and 50% levels, respectively. Id. at 91, 141. The given butane percentage (5%,
50%) is then input to the equation of this line to return the mass of butane adsorbed. Id. at Q/A
91-94, 142. As this adsorption capacity is expressed in units of mass of butane adsorbed per mass
of adsorbent (i.e., g/g), a conversion is needed to arrive at the units specified in the claim (g/L).
To do this, Dr. Rockstraw multiplied each mass-per-mass value by an apparent density value. CX-
0909C at Q/A 95.
It is at this point Dr. Rockstraw’s procedure becomes tailored to what has been identified
in the Accused Products as the “subsequent adsorbent volume”—specifically, Respondents’
MPAC. CX-0909C at Q/A 100. Dr. Rockstraw explains that due to the size and shape of MPAC
relative to the chamber in which it is contained within the Accused Products, the otherwise
standard apparent density measurement technique known as ASTM D2854 is not appropriate. See
id. at Q/A 105-113. Yet, as he testified, “[a]pparent density is a fairly basic principle, it is the mass
per unit of apparent volume. Thus, if one can accurately determine mass and apparent volume,
one can calculate apparent density.” Id. at Q/A 114. 	To determine apparent density outside of
ASTM D2854, Dr. Rockstraw “measured the mass for each volume of MPAC in both samples of
each canister that MAHLE has produced in this matter” using an “Ohaus Stout scale, model
2200GX0.01G, which measures mass with accuracy to one hundredth of a gram.” Id. at Q/A 115-
116; see id. at Q/A 130-131. This is the first portion of the apparent density calculation (i.e., mass
of adsorbent).
For the second portion (i.e., apparent volume), Dr. Rockstraw employed a second outside
testing company, North Star Imaging (“NSI”), “to determine the boundaries of the volumes
containing MPAC” within each Accused Product and then calculate that volume. CX-0909C at

70
Q/117-118. 	According to Dr. Rockstraw, NSI used “Computed Tomography (CT) X-Ray
Inspection” to produce three-dimensional images showing those boundaries and employed
additional software to compute the volume of that bounded space. Id. at Q/A 122-129. Below are
two such images generated by NSI for Accused Products MAHLE Part Nos. 72144286 and
72143724, where the chamber containing MPAC can be seen on the far right:

71
CIB at 50 (citing CX-0906), 51 (citing CX-0908). Dr. Rockstraw then divided the measured mass
of each volume of MPAC by its measured volume to arrive at apparent density, and presented
these calculated values in a table. CX-0909C at Q/A 131 (Table 6).
Dr. Rockstraw did not immediately apply the apparent density measurements for each
Accused Product MPAC volume to his gathered mass-per-mass adsorption capacity values,
however. Instead, he “used the [5%-50%] differences for all 29 samples to calculate an average g
(butane) / g (MPAC) increment in adsorption capacity mean difference, its standard deviation, and
99% confidence intervals.” 	CX-0909C at Q/A 143. 	This computation resulted in a single
incremental adsorption capacity (g/g) value of 0.99668. Id. at Q/A 144. It was this value to which
he then applied the apparent density measurements for each Accused Canister MPAC volume to

airive at an incremental adsorption capacity value in the units expressed in the claim. Jd. at Q/A
145 (Table 7).
Below 1s Dr. Rockstraw’s Table 7, showing these values of incremental adsorption capacity

for each “subsequent adsorbent volume” in each canister MAHLE supplied to Ingevity in this

investigation:
Table 7 — The LAC of Each Volume of MPAC
Canister ist MPAC Volume 2nd MPAC Volume
Identification OEM Model IAC Density IAC IAC Density IAC
by MAHLE | (g/gAG) (g/cm*) (g/L) _| (g/gAC©) | (g/cm’) (g/L)

0.99668 0.35374 | 35.256 | 0.99668 | 0.33957 33.844

0.99668 0.34369 | 34.255 | 0.99668 | .33299 33.188

we

0.99668 0.33141 | 33.03

0.99668 0.31447 | 31.343
0.99668 0.34960 | 34.844 | 0.99668 | 0.33013 32.903
0.99668 0.36041 | 35.922 | 0.99668 | 0.32863 32.754
0.99668 0.36168 | 36.048 | 0.99668 | 0.36185 36.064
0.99668 0.35043 | 34.927 | 0.99668 | 0.36210 36.089
0.99668 0.33122 | 33.012
0.99668 0.33801 | 33.689
0.99668 0.33506 | 33.395
0.99668 0.32727 | 32.619
0.99668 0.32618 | 32.510

0.99668 0.34492 | 34.377

0.99668 | 0.34759 | 34.643
0.99668 0.35068 | 34.951

72

0.99668 0.33093 | 32.984
0.99668 0.32882 | 32.772
0.99668 0.34440 | 34.325
0.99668 0.34774 | 34.659
0.99668 0.31283 | 31.179 | 0.99668 | 0.34685 34.570

0.99668 0.31510 | 31.405 | 0.99668 | 0.32881 32.772

0.99668 0.32564 | 32.456 | 0.99668 | 0.35576 35.458

0.99668 0.31986 | 31.880 | 0.99668 | 0.35945 35.826

0.99668 0.31119 | 31.015 | 0.99668 | 0.33235 33.124
0.99668 0.30944 | 30.841 | 0.99668 | 0.3303 32.930
0.99668 0.32349 | 32.242 | 0.99668 | 0.33675 33.563
0.99668 0.32336 | 32.229 | 0.99668 | 0.34262 34.148
0.99668 0.32521 | 32413 | 0.99668 | 0.32459 32.351
0.99668 0.32279 | 32.171 | 0.99668 | 0.33410 33.299

0.99668 | 0.32121 | 32.014 | 0.99668 | 0.32926 32.817

0.99668 0.31663 | 31.558 | 0.99668 | 0.33634 33.522

0.99668 0.35737 | 35.618

0.99668 0.35081 | 34.965

0.99668 0.34716 | 34.601

0.99668 | 0.35351 | 35.234

0.99668 0.32515 | 32.407
0.99668 0.31882 | 31

0.99668 0.32641 | 32.533
0.99668 0.32825 | 32.716

CX-0909C at Q/A 145 (Table 7). As shown, at least one sample of each Accused Product contains
a volume of MPAC with an incremental adsorption capacity under 35 g/L. Thus, Ingevity claims
it has shown satisfaction of the “subsequent adsorbent volume” IAC limitation for each and every
Accused Product. See CIB at 19-20.

Dr. Rockstraw’s process is illustrated as follows:

74
Respondents criticize nearly every step in this process as improper, leading to an overall
claim that Dr. Rockstraw’s conclusions are unreliable. Their criticisms are unpersuasive, however;
I consider each below.
Regarding Dr. Rockstraw’s use of volume data from NSI, Respondents argue “Dr.
Rockstraw first arbitrarily identified the carbon beds/layers in each Accused Canister without
regard for the concept of volumetric dilution via ‘non-adsorbing particles or porous mats (e.g.,
foam) or simply trapped air space between layers of adsorbent.’” RIB at 7 (citing 844 patent at
7:18-25; CX-0909C at Table 3; Hr’g Tr. at 631:23-633:13, 216:6-218:8). But Dr. Rockstraw’s use
of 3-D scanning to measure the volume of the space which MPAC takes up within the canister
takes into account trapped air spaces between the MPAC pieces when that space is filled with
MPAC. Further, there is no evidence that any non-adsorbing particles are added to the MPAC,
and the X-ray imagery of the canisters shows there are no, to quote the 844 patent, “thin layers”
(844 patent at 7: 22-25) of porous mats or foam used either. And if such diluents are present in
any 	Accused 	Products, 	and 	Dr. 	Rockstraw 	improperly 	excluded 	them 	in 	his 	volume
determinations, neither Respondents nor Mr. Lyons have indicated which canisters those would
be. See RIB at 7-8; RRB at 8-9; RX-0381C at Q/A 89-129, 366.

75
Respondents also argue “a PHOSITA in 2001 would not know whether, or how, to generate
and use a CT image to measure canister volumes,” the technique is not used in industry, and is
otherwise not disclosed in the 844 patent. RIB at 7-8 (“his volume measurement technique was
beyond the skill and knowledge of the PHOSTIA, and the results are unreliable.”). Setting aside
what a PHOSITA would have done or would have been capable of in 2001, these facts have no
bearing on the reliability of Dr. Rockstraw’s testing. Indeed, I would hope any testifying expert
would use the most accurate or reliable techniques available to them, within reason, to determine
physical characteristics critical to a claim of patent infringement.
Respondents 	argue 	that 	Dr. 	Rockstraw’s 	“MPAC 	region 	volumes 	are 	also 	not
representative of the Accused Products, particularly since he did not statistically analyze the
measured volume differences between identical regions in samples of canisters.” RIB at 8 (citing
RX-0381C at Q/A 222; CX-0909C at Table 6). This reasoning appears in many of Respondents’
criticisms of Dr. Rockstraw’s process, and it is not persuasive. Not only do Respondents fail to
provide any evidence that such a statistical analysis would have made a difference (see RX-0381C
at Q/A 222), but a provided sample’s inability to represent a population of products is a fault of
the sample’s provider—in this case, MAHLE (see CIB at 17 (citing CX-0909C at Q/A 117-129)).
With respect to Dr. Rockstraw’s mass data used to arrive at apparent density, Respondents
argue his weighed values differ from MAHLE’s specifications to such a degree as to show
unreliability. 	Specifically, Respondents observe “[i]n nearly half the regions, the difference
between his MPAC mass measurements and MAHLE’s specifications exceeds MAHLE’s variance
tolerance.” 	RIB at 8 (citing RX-0381C at Q/A 131-134). 	Respondents reason that either Dr.
Rockstraw’s mass measurement “is flawed” or “MAHLE’s manufacturing variance is much larger
than its specified variance tolerances,” and the latter is “unlikely,” so that it must be the mass

76
measurements which are unreliable. See id. (citing RX-0381C at Q/A 137-138; Hr’g Tr. at 855:25-
856:12). 	Not so; direct weighing with a high precision scale is much more likely to be reliable
evidence of a substance’s mass than a manufacturing tolerance. See CX-0909C at Q/A 115.
Respondents also attack Dr. Rockstraw’s failure “to statistically characterize or account for
the distribution of MPAC mass in the various canister regions, and in fact, did not even attempt to
establish a typical value for the MPAC mass in each region.” RIB at 8-9 (citing RX-0381C at Q/A
139, 222). Again, Respondents leave it entirely unsaid how this would have made a difference,
and to the extent this is an argument that MAHLE’s produced samples do not reflect the
“population” of all respective models (see CX-0381C at Q/A 139 (“Dr. Rockstraw cannot
reasonably contend that the MPAC mass measurements are representative of the full population
of each MAHLE canister type . . . .”)), that fault lies with MAHLE as the provider of the sample.
Next, Respondents argue the combined use of CT-scanning for volume and scale-measured
mass to arrive at apparent density is unreliable because it is not the same as the ASTM D2854
apparent density test referenced in the 844 patent and used in industry. See RIB at 9-12 (citing,
inter alia, JX-0222). Respondents contend Dr. Rockstraw’s reliance on “wall effects” as requiring
deviation from ASTM D2854 is not supported in the evidence. See id. at 10-12. To be sure, “wall
effects” have not been conclusively shown for all MPAC volumes within the Accused Products,
but this has little relevance. ASTM D2854 is a method ultimately used for determining the volume
a given mass takes up when stacked in a bed, as opposed to the volume of that mass by itself. See
JX-0222 at *1. The document describes the experimental setup:
4.1 This test method provides a method for determining the packed density
of a bed of granular activated carbon. Determination of the packed density
is essential when designing vessels to hold the material and for ordering
purposes when procuring materials to fill existing vessels.

77
Id. at *1-2. 	The test involves using the vibratory feeder to place granular adsorbent into the
graduated cylinder to any preferred level (but to more than 50% cylinder capacity, and within
certain mL/s speed range), and then weighing that amount in a “balance pan.” Id. at *2.
Dr. Rockstraw’s use of CT scanned volumes and scale-measured masses accomplishes the
same tasks (i.e., determination of the bed mass contained within a three-dimensional volume) and
Respondents do not argue that ASTM D2854 is more accurate. Indeed, it is not clear why ASTM
D2854 would be more accurate than mass and volume measurements performed on the actual
adsorbent and canister at issue—as Dr. Rockstraw has done with highly accurate equipment. CX-
0909C at Q/A 115, 126.
Respondents repeat their criticism of Dr. Rockstraw’s failure to “statistically characterize”
mass and volume differences between “identical regions of identical canister samples.” RIB at 12
(citing [RX-0381C] at Q/A 140-142, 226). This “population” argument (RX-0381C at Q/A 142)
is not persuasive for the same reasons discussed with respect to MPAC distribution. Further, even
if Mr. Lyons’s regression-based apparent density approach is followed (RX-0381C at Q/A 242),
the result is an apparent density of 0.344 g/cm 3 , which when multiplied with Dr. Rockstraw’s mean
adsorption capacity of 0.99668 g/g, yields an infringing IAC value of 34.2 g/L.

78
With respect to the adsorption capacity data returned from PTA, Respondents contend Dr.
Rockstraw improperly relied on only desorption data, as opposed to adsorption data or a
combination of both. See RIB at 13-14. Respondents claim this choice “not coincidentally, yielded
lower IAC values (i.e., more likely below the 35 g/L threshold) than the adsorption data.” Id. at
13 (citing Hr’g Tr. at 238:7-18; RX-0381C at Q/A 254-255). Respondents argue the 844 patent
“suggests 	using 	adsorption 	data—the 	measurement 	is 	called 	incremental 	adsorption 	(not
desorption) capacity, and the title of Figure 3 is ‘n-Butane Adsorption Isotherm at 25℃.” Id. at
13-14 (citing 844 patent at Fig. 3; RX-0381C at Q/A 201). Respondents add “both Mr. Lyons and
Ingevity’s expert in parallel litigation testified that adsorption and desorption data should be the
same and yield equivalent IAC results, and any difference suggest flaws in the underlying isotherm
measurements.” Id. at 14 (citing RX-0381C at Q/A 200, 202).
In response, Ingevity states:
Respondents 	acknowledge 	“[a]n 	isotherm 	is 	a 	series 	of 	adsorption
capacities at different material concentrations and constant temperature.”
ROB at 13; RX-0381C (Lyons) at Q/A 190. This applies to both the
adsorption branch and the desorption branch of the isotherm. Id.; CX-
0909C (Rockstraw) at Q/A 48-49, 92, 96. The only difference being that the
adsorption branch takes measurements while concentration is increasing,
while the desorption branch takes measurements while concentration is
decreasing. 	Id. 	In 	both, 	adsorption 	capacity 	is 	measured. 	Id. 	Thus,
Respondents’ assertion that the adsorption branch should be used because
IAC 	stands 	for 	incremental 	adsorption 	capacity 	is 	contrived 	and
fundamentally 	flawed. 	Both 	measure 	the 	same 	physical 	property—
adsorption capacity. But the desorption branch better approximates real-
world conditions because it includes the “heel” an adsorbent acquires during
the adsorption branch. JX-0001 at 2:42–44. POSITA knows that designing
a real-world system necessitates data that most accurately reflects real-
world situations. CX-0909C (Rockstraw) at Q/A 92; RX-0395C.0008.
CRB at 8. Ingevity adds that the ASTM D5228 standard referenced in the 844 patent also instructs
technicians to evaluate butane working capacity (a related metric to adsorption capacity) “after a

79
specified purge” because “[t]he difference between the mass adsorbed at saturation and the mass
remaining after the purge (the heel) is the BWC.” Id. at 9 (citing JX-0009 at ¶ 1.1, 4.1).
Ingevity’s position is the more persuasive. 	The MPAC samples delivered to PTA for
testing were essentially “clean” samples taken from the Accused Canister samples provided by
MAHLE—as in not yet exposed to butane fuel vapor. Thus, the adsorption data PTA provided to
Dr. Rockstraw would not represent real-world conditions while the desorption data, recorded
subsequently as the canister is purged, would come closer to such conditions. Ingevity’s reference
to ASTM D5228, cited in the 844 patent specification and thus qualifying as intrinsic evidence,
supports this understanding. The document states its test method, where adsorption is evaluated
following purge (JX-0009 at ¶ 4.1, 12.1-12.2) is for “new granular activated carbon” (id. at ¶ 1.1
(emphasis added)). 	Additionally, the Williams prior art reference, RX-0067, relied on by
Respondents’ in one invalidity theory, also repeatedly discusses the need to “precondition” the
canister (i.e., “loading to either breakthrough [(earlier defined)] or 1.5 times breakthrough with
50% n-butane”) before diurnal bleed emissions testing. 	See, e.g., RX-0067 at *3, 4 (discussing
“pre-conditioning for the compressed diurnal test consisted of six gasoline vapor load / purge
cycles . . . .”), 5, 7.
Respondents’ evidence to the contrary is superficial, amounting mostly to a “suggest[ion]”
to use adsorption data based on the use of the word “adsorption” in “adsorption capacity.” RIB at
13. 	And Mr. Lyons offers no technical basis for his adsorption data preference (see id. at Q/A
200- RX-0381C at Q/A 200-204) while also agreeing desorption data can be appropriate (RX-
0381C at Q/A 200). Further, Respondents’ use of deposition testimony taken in outside litigation
from a Dr. Ritter (RIB at 14; RX-0381C at Q/A 202-203) contradicts at least the intent of Order
No. 35. Thus, the references to that transcript have been disregarded.

80
Respondents’ 	further 	argument 	that 	PTA’s 	non-identical 	adsorption 	capacity
measurements, in combination with a lack of “riffle splitting” preparation and the limitation of one
tested sample per Accused Canister, as indicating Dr. Rockstraw’s overall results “are not
representative of all Accused Products” (RIB at 14 (citing RX-0381C at Q/A 194-197, 204-209,
223-224)) is moot. 	As will be clear below, my determinations on infringement for this
investigation are on a product-by-product basis and not on all Accused Products collectively.
With 	respect 	to 	Dr. 	Rockstraw’s 	use 	of 	two-point 	interpolation, 	and 	given 	the
circumstances, it is more appropriate and reliable than any of Respondents’ proposed alternatives.
Respondents argue “both the intrinsic record and analyses by other PHOSITAs suggest a
preference for alternative methods.” 	RIB at 17. 	Respondents contend the use of four-point
interpolation, Freundlich Fit regression, and Dubinin-Radushkevich (“D-R”) Fit regression would
be more appropriate and show how ultimate IAC values would be affected in combination with
the remainder of Dr. Rockstraw’s procedure. See id. at 18-21. Respondents further describe how
the same fit techniques can be used with alternate apparent density values (calculated by Mr. Lyons
or Kuraray) to result in higher than 35 g/L IAC values for every single MPAC region in all sample
canisters. Id. at 23-24 (citing RX-0381C at Q/A 174-179, 235-244, 299-298).
The nature of the data set provided by PTA does not support use of Respondents’ regression
techniques, or the use of four-point interpolation over two-point. The parties effectively agree that
the reason interpolation or regression is required in the first place is because PTA did not measure
adsorption capacity directly at the 5% and 50% levels recited in the claim. See RIB at 17; CIB at
20-21. Yet, as shown in Dr. Rockstraw’s and Mr. Lyons’s data set exhibits (RX-1292C; CX-0451
through CX-0507), PTA did test at one data point remarkably close to the 5%, or 38 Torr, level,
as shown below:

Desorbing Isotherm Exhibit 20

0.3
y = 0.2669x°2798

R? = 0.9977 ,
wee

®
e*

ot 0.2

=) :

oo
a
a
@ 0-15
_ eo
r oe 0.1
0.05
0
0.01 0.1 1
@ = Isotherm Data @ Fit Points @ Interpolation Points ++++++sss Power (Isotherm Data)

RX-1292C at Tab (Exhibit 20); see CX-0451 at Cell B92.

Given this proxumity, the low “noise” in the data, and the high degree of local linearity of
the entire data set, it is more reasonable to use two-point interpolation over any of Freundlich Fit
regression, D-R Fit regression, of four-point interpolation, because the nature of two-point
interpolation guarantees a calculated capacity value closest to what was actually measured. “When
there is more than one method of measurement and the patent does not explicitly discuss the
methods, persons experienced in the field are reasonably deemed to select the method that better
measures the parameters relevant to the invention.” Osram GmbH v. Int'l Trade Comm'n, 505
F.3d 1351, 1357-58 (Fed. Cir. 2007) (citing Howmedica Osteonics Corp. v. Tranquil Prospects,
Ltd., 401 F.3d 1367, 1372 (Fed. Cir. 2005)). The other techniques lose this benefit through the

influence of more distant data points; four-point interpolation uses the next two furthest data points

81

82
while the regression techniques use the entire data set. 	The regression techniques in particular
may be the most appropriate for determining adsorption capacity with fewer data points, data with
more noise, or for modeling systems in advance of testing (see RX-0355 at *1 (“reliable prediction
of adsorption parameters and quantitative comparison of adsorbent behavior for different
adsorbent systems), *3 (D-R Fit “usually applied to distinguish the physical and chemical
adsorption of metal ions”)), but the data points from PTA are not few and possess a strikingly low
noise level (see RX-1292C).
Respondents’ expert, Mr. Lyons, also makes reference to Figure 3 of the 844 patent as
supposedly showing, and thus promoting, a regression analysis (RX-0381C at Q/A 248-249), but
this mischaracterizes the graph. The isotherm lines shown are not all continuous as regressions
are; some contain sharp pointed turns indicative of interpolation. 844 patent at Fig. 3. Mr. Lyons
also refers to RX-0395C, an Ingevity testing document, to show the use of four-point interpolation
in determining adsorption capacities at pressures between sampled data points. RX-0381C at Q/A
252. Yet this document does not explain why four-point interpolation is used over other methods
(as compared to its discussions of McBain vs. ASAP2020 testing, or the use of adsorption vs.
desorption data). It also shows four-point interpolation applied to a data set in which the target
pressure levels (38 and 380 Torr, corresponding to 5% and 50% butane levels) are not close to the
sampled pressure levels as the PTA testing had done for the 5%, or 38 Torr, level. Compare RX-
0395C at *6-7, 14 with CX-0451 at Cell B92 (36.6 Torr); see, e.g., CX-0463 at Cell B92 (37 Torr).
The best case for using four-point interpolation over two-point is perhaps at the higher 50%
concentration level, where the PTA data points are not as close to the target pressure of 380 Torr.
See, e.g., CX-0451 at Cell B82, B83. 	Yet Ingevity contends “[t]he 2-point and 4-point linear
interpolations are nearly identical” here (CRB at 14 (citing RX-1292C)) and this evidence bears

this out. I reviewed four data sets at random (CX-0451, CX-0459, CX-0471, and CX-0491) to
explore this contention. In each I adapted Cell B99 to show g/g at desorption 5% and 50% levels
under two-point interpolation”, and compared the values to Respondents’ four-point interpolation
values as contained in RX-1292C. In all four examples, there existed a noticeable difference at

the 5% level but not at the 50% level, as in the table below:

Two-Point Interpolation Four-Point Interpolation
5% (38 Torr) | 50% (380 Torr) | 5% (38 Torr) 50% (380 Torr)
“Ex. 20” 0.1177 0.2181 0.1131 0.2180
(RX-1292C);
Sample 72143181A
(CX-0451C)

“Ex. 24” 0.1169 0.2153 0.1123 0.2152
(RX-1292C);
Sample 72143506A
(CX-0459C)

“Ex. 30” 0.1170 0.2153 0.1125 0.2151
(RX-1292C);
Sample 72143181B
(CX-0471C)

“Ex. 40” 0.1134 0.2111 0.1090 0.2110
(RX-1292C);
Sample 72142611
(CX-0491C)

Therefore, for purposes of this investigation, two-point interpolation is demonstrably the
best method to use on the PTA MPAC data to determine adsorption capacity at the 5% butane
level, and no worse than any other method to determine adsorption capacity at the 50% level.
Accordingly, with the reliability of all other steps in Dr. Rockstraw’s process established above, I

accept the IAC values as listed in his Table 7.

2 To do this the cell’s equation was modified to call directly upon the desorption result of

Dr. Rockstraw’s two point interpolation at each concentration level, instead of the difference of
those levels as the equation is set up to do—i.e., I substituted “A99” in the equation with “C98”
(50% level) and then also “C99” (5% level). See, e.g., CX-0451.

83

84
Even with these IAC values in hand, Respondents further argue they should be rounded to
the nearest integer value (i.e., without decimal) before comparison to the claims. RIB at 15-17.
Respondents contend the 844 patent’s disclosure of IAC values without decimals, in the claims
and specification, supports this step, as does the Federal Circuit’s holding in San Huan New
Materials High Tech., Inc. v. Int’l Trade Comm’n, 161 F.3d 1347 (Fed. Cir. 1998). See id. (citing
Hr’g Tr. at 232:19-234:10, 853:5-855:3). When this rounding is done, Respondents contend five
Accused Products would not infringe. 	Id. at 17 (referring to MAHLE Part Nos. 712433[3]0,
72144043, 72144116, 72144283, 72144313).
But Respondents’ cited expert testimony pertains to how commonly understood rules of
significant figures would apply to calculations using the values reported in the 844 patent, as
opposed to calculations affected by the technical limitations of the scientific equipment used in
product testing. 	See, e.g., Hr’g Tr. at 234:5-10 (“I would expect that the underlying data has
significantly more than two significant digits. But for one of skill in the art that is studying the
patent, all they have available is the isotherms in figure format, and you can only read two
significant digits form that figure.”) (emphasis added). Respondents have not pointed to any step
in Dr. Rockstraw’s mathematical operations, or any of the instruments used therein, that would
require limiting significant figures to whole numbers. This sets the present circumstances apart
from those, for example, in San Huan. That case does not stand for a general policy of “round[ing]
[] measured values to whole numbers to assess infringement” “when claims specify numerical
integers without decimals” as Respondents argue. RIB at 16. The discussion Respondents draw
upon (RIB at 16-17) clearly references instrument and accuracy limitations as considerations
leading to its holding:
With respect to the E77C and H8 magnets, San Huan states that YBM
conducted a complete chemical analysis only for magnet E77C# 2, having

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TRE content of 36.31%; and magnet H8# 9, having TRE content of 36.45%.
The claim states a range of 30 to 36 weight percent TRE. San Huan argues
that "`rounding' cannot be used to expand the scope of the claims." The
Commission and YBM respond that the claims do not require accuracy to
even one decimal place, and that the Commission consistently rounded
weight percentages for TRE and iron to the nearest integer. YBM states that
the undisputed instrument error for neodymium detection was .4 weight
percent.
It was not shown to be error, legal or scientific, for the Commission to
recognize these limits of accuracy, and to round the measured weight
percentages 	to 	the nearest 	integer. 	There is 	substantial 	evidence of
infringement by the E77C and H8 magnets on the violation days at issue.
San Huan, 161 F.3d at 1361; see Certain Neodymium-Iron-Boron Magnets, Magnet Alloys, and
Articles Containing Same, 	Inv. No. 337-TA-372, EDIS Doc. No. 	43653, Recommended
Determination at 70 n. 49 (Jan. 21, 1997) (public version) (discussing technical margins of error
and impact of “consisting essentially of” claim language) (“Neodymium”); Neodymium, Inv. No.
337-TA-372, EDIS Doc. No. 43730, Comm’n Op. at 7, 23 (May 7, 1997) (public version)
(explicitly noting instrument error in comparisons to claimed ranges). 	As noted above,
Respondents have not shown any such accuracy limitations in Dr. Rockstraw’s experimental setup
or calculations.
One additional step is justified, however, before comparing Dr. Rockstraw’s MPAC results
to the claims. Respondents raise the valid point that the preponderance of the evidence standard
requires Ingevity to show “that it is more likely than not (i.e., greater than 50% likelihood) that an
Accused Product infringes.” 	See, e.g., RIB at 15 (citing Warner-Lambert Co. v. Teva Pharm.,
USA, Inc., 418 F.3d 1326, 1341 n.15 (Fed. Cir. 2005)). Taking Dr. Rockstraw’s data at face value,
Respondents observe that only 1 of 2 samples for three Accused Products have been shown to have
a “subsequent adsorbent volume” with IAC less than 35 g/L. Id. (citing CX-0909C at Q/A 145
(Table 7)). 	Thus, they contend, for those Accused Products (MAHLE Part Nos. 721433[3]0,

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72144283, 72144313) there is an exact 50% likelihood of infringement which is insufficient under
the preponderance of the evidence standard. Id.
In response, Ingevity contends “Respondents misapprehend (or at least misapply) the
meaning of ‘preponderance of the evidence’ throughout their infringement analysis.” CRB at 10.
Ingevity states:
Respondents’ primary citation provides “infringement must be proven by a
preponderance 	of 	the 	evidence, 	which 	simply 	requires 	proving 	that
infringement was more likely than not to have occurred.” Warner-Lambert
Co. v. Teva Pharm. USA, Inc., 418 F.3d 1326, 1341 n.15 (Fed. Cir. 2005)
(citation omitted; emphasis added); ROB at 16. Respondents’ argument
accepts that infringement occurs (in 50% of the specified canisters). Thus,
the preponderance standard, when correctly applied, is met. ROB at 15. As
is the case for all Accused Canisters, the evidence clearly shows, far beyond
the preponderance standard, that infringement has occurred. IOB at §
III.B.1. Respondents misapply this standard throughout their infringement
analysis. ROB at 15, 17–21.
Id.
The best approach to resolving this dispute is analogous to Dr. Rockstraw’s analysis. His
expert infringement analysis, evaluated above, pertained to product samples produced to Ingevity
by MAHLE as part of discovery in this investigation; i.e., these samples are not the actual products
which have been imported, but they are treated as representing the “population” of products going
by the same model identifier which have been. The resulting data, particularly the data for those
three Accused Products which have only one of two samples meeting the “subsequent adsorbent
volume” claim limitation, produces IAC values so close to the 35 g/L threshold that subtle
experimental tolerances could shift the result one way or the other. 	Much in the same way Dr.
Rockstraw created an average IAC value for all MPAC volumes (CX-0909C at Q/A 143-144), to
no apparent objection from Respondents, it is appropriate to average the IAC values across samples
of the same Accused Product to determine whether or not the “population” of that product

infringes. Using averages of Dr. Rockstraw’s data, two of the nineteen Accused Products do not

infringe, as shown in the table below:

1st Volume IAC 2nd Volume IAC
MAHLE Sample Sample 2] Avg vol| Sample 1 | Sample 2 | Avg vol | Population
Part No. 1 of 2 of 2 1 of 2 of 2 2 Infringe?
72143779 | 35.256 | 34.255 34.756 | 33.844 33.188 33.516 |X
72144286 | 33.031 31.343 32.187 0 X
72143181 | 34.844 | 36.922 35.883 | 32.903 32.754 32.829 |X
72143330 | 36.048 34.927 35.488 | 36.064 36.089 36.077. | NO
72142062 | 33.395 32.619 33.007 0 x
72142611 | 32.51 34.377 33.444 0 x
72144043 | 34.643 34.951 34.797 0 x
72143724 | 32.984 | 32.772 32.878 0 X
72144116 | 34.325 34.659 34.492 0 x
72143254 | 31.179 | 31.405 31.292 | 34.57 32.772 33.671 | xX
72143506 | 32.456 | 31.88 32.168 | 35.458 35.826 35.642 |X
72143638 | 31.015 30.841 30.928 | 33.124 32.93 33.027 |X
72144272 | 32.242 32.229 32.236 | 33.563 34.148 33.856 |X
72143778 | 32.413 32.171 32.292 | 32.351 33.299 32.825 | X
72143303 | 32.014 __| 31.558 31.786 | 32.817 33.522 33.170 |X
72144283 | 35.618 34.965 35.292 0 NO
72144313 | 34.601 35.234 34.918 0 x
72143423 | 32.407 31.776 32.092 0 x
F6235-011 | 32.533 32.716 32.625 0 x

Accordingly, all Accused Products except MAHLE Part Nos. 7214330 and 72144283
include the “subsequent adsorbent volume” limitation of claim 1. Respondents would also have
me consider the “MPAC Material Specifications” which “require a BWC of 8.0-8.6 g/dL,” as
“circumstantial evidence that MPAC has an IAC of 35 g/L or more.” RIB at 24 (citing, infer alia,
JX-0029C; JX-0033C; JX-0034C; RX-0378C at Q/A 56-80; RX-0381C at Q/A 345). Respondents
relatedly argue that five instances of their own in-house testing of MPAC over the years also
produced “results [that] were 35 g/L or more (i.e., non-infringing).” See RIB at 25-26 (citations

omitted). Setting aside the proper weight to give BWC (butane working capacity) values in

87

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determining IAC (discussed further below with respect to invalidity), and the reasonableness of
Respondents’ prior efforts to employ high-IAC values for MPAC (discussed further below with
respect to indirect infringement), the material specifications and prior testing not observed by
either expert is not worthy of more weight than the expert-driven experimental results taken from
samples provided for the very purpose of this investigation.
Next, the “initial adsorbent volume” limitation of claim 1. Ingevity contends “each accused
canister contains at least two adsorbent volumes consisting of Ingevity’s BAX 1500, 1100, or
1100LD products.” 	CIB at 12 (citing CX-0909C at Q/A 78, 84-86). 	Ingevity explains each of
these volumes “comes before, with respect to the flow of vapors from the fuel tank, a subsequent
adsorbent volume”—a point Respondents do not contest—and further contends that “each has a
requisite IAC greater than 35 g/L.” Id. at 13 (citing CX-0909C at Q/A 84-98).
Ingevity first notes that IAC for BAX 1100 and 1500 are reported in the 844 patent “as
being greater than 35 g/L.” CIB at 13 (citing 844 patent at 8:5-58). Ingevity also claims MAHLE
has “admitted” BAX 1100 and 1500 has these values through MAHLE’s dependence on the 844
patent’s disclosures in a petition for inter partes review before the PTAB. See id. (citing RX-0131
at *19, 30, 69; CX-0909C at Q/A 86). But Respondents argue correctly that MAHLE’s use of the
844 patent in that forum was as a prior art disclosure of adsorbents with the requisite IAC. RIB at
36. Indeed, this must be the case because petitions for inter partes review can only be based on
prior art publications—and not prior art products. 	35 U.S.C. § 31(b) (“A petitioner in an inter
partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground
that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents
or printed publications.”).

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Nevertheless, Ingevity explains it “confirmed the IAC values for adsorbent volumes
containing BAX 1500, 1100, and 1100LD by preparing adsorption isotherms and computing IAC.”
Id. (citing CX-0909C at Q/A 86-98). 	This process did not exactly match the process used for
MPAC as outlined above, however. 	While samples of BAX 1500, 1100, and 1100LD were
provided to the same PTA testing company (CIB at 13), the samples did not come from the
Accused Products as MPAC had, but rather directly from Ingevity’s witness Dr. Miller (CX-0913C
at Q/A 296-306). Like the MPAC procedure, PTA did perform isotherm measurements at 25℃
on each sample and provided the results to Dr. Rockstraw. Id. at 14 (citing CX-0909C at Q/A 87-
88; CX-0331; CX-0333; CX-0335; CX-0337; CX-0339; CX-0341). Dr. Rockstraw then applied
the same two-point interpolation technique and other necessary conversions, as done for MPAC.
See id. at 14-16 (citing, inter alia, CX-0909C at Q/A 88-94). 	As two samples of each of BAX
1500, 1100, and 1100LD were provided to PTA, Dr. Rockstraw averaged the IACs of each sample
pair to arrive at one value for each version of BAX. CX-0909C at Q/A 94.
A different procedure was used for apparent density, however. 	Instead of the X-ray
imaging and CT scanning discussed above, Dr. Rockstraw relied on apparent density ranges
“reported by Ingevity” in its product specifications for BAX 1500, 1100, and 1100LD and
supposedly generated by ASTM D2854. 	CX-0909C at Q/A 95 (citing CX-0701C; JX-0135C;
CDX-0001.8C (exhibit not listed)). Due to these ranges, Dr. Rockstraw created IAC values (using
PTA data) for each of the minimum and maximum apparent density values and “then averaged
those IACs.” Id. at Q/A 97. Ingevity concludes:
The IAC values computed by Dr. Rockstraw are: BAX 1500 (80.33 g/L),
BAX 1100 (51.40 g/L), and BAX 1100LD (44.74 g/L), each of which
satisfies the initial adsorbent volume limitations as Dr. Rockstraw proved
at trial. CX-0909C (Rockstraw) at Q/A 97–98.
CIB at 15.

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Dr. Rockstraw’s process is illustrated as follows:
On this issue, Respondents state “Dr. Rockstraw’s opinion that BAX’s IAC is greater than
35 g/L does not carry Ingevity’s burden, especially in the face of Mr. Lyons’ contrary analysis.”
RIB at 27. For more detail, Respondents refer to their discussion of domestic industry technical
prong, because the same adsorbents are relied on for the same limitation (see id.), but describe
their position briefly as:
Dr. Rockstraw: (1) took no “in-canister” measurements of any BAX mass,
volume, or apparent density (HT 230:5-14), and (2) did not account for the
potential that BAX’s IAC can be volumetrically diluted below 35 g/L (HT
107:20-108:6, 240:14-242:15), despite identifying layers of air, foam, and
support screens (i.e., volumetric diluents; see JX-0001, 7:18-25, 10:20-24,
cls. 15, 28, 40, 52) between and adjacent to the BAX regions he identified
in the Accused Canisters. (See, e.g., HT 204:4-214:3; RDX-1000.)
RIB at 27 n.11. None of Respondents’ points are persuasive.
First, Respondents criticize Dr. Rockstraw for not using “in-canister mass or volume
measurements” to calculate apparent densities—a failure Respondents describe as “both legally
and factually wrong” (RIB at 30-31) because it “fail[s] to account for the fact that the IAC of any
BAX product can be volumetrically diluted below 35 g/L, which [Dr. Rockstraw] and Mr.
Williams confirmed” (id. at 31 (citing Hr’g Tr. at 107:20-108:6, 240:14-242:15; JX-0250C at

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587:17-588:1; JX-0252C at 301:17-302:3; RX-0381C at Q/A 515-518). Respondents claim there
is an insufficient showing that ASTM D2854 is appropriate for BAX given Dr. Rockstraw’s
concerns over “wall effects.” See id. at 31-32. Respondents claim Dr. Rockstraw dismisses “wall
effects” for BAX without support (id. at 31 (citing CX-0909C at Q/A 95, 2038-2039)) while also
“admitt[ing] that BAX regions exhibit wall effects and contain volumetrically dilutive interstitial
spaces” (id. at 32 (citing Hr’g Tr. at 231:1-16)).
Dr. Rockstraw’s use of “specified” apparent density for BAX 1500, 1100, or 1100LD in
arriving at IAC values is appropriate under the circumstances. 	Contrary to Respondents’
suggestion (RIB at 31), it is easily seen in each of the images of the Accused Products that there
is at least one BAX-containing chamber whose diameter exceeds ten times the MPD of the BAX
pellet, so that wall effects do not affect the apparent density. CX-0358-359; CX-0363-364; CX-
0368-369; CX-0373-374; CX-0378-379; CX-0383-384; CX-0388-389; CX-0393-394; CX-0398-
399; CX-0403-404; CX-0408-409; CX-0413-414; CX-0418-419; CX-0423-424; CX-0428-429;
CX-0433-434; CX-0438-439; CX-0443-444; CX-0448-449. 	It is also easily seen how very
differently BAX rests within its chambers as compared to MPAC due to their dramatically
different sizes, as in one example below:

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CX-0363. Based on these images, it is more likely than not that BAX is settled into its chambers
within the Accused Products in the same way it would settle in the graduated cylinder called for
by ASTM D2584. JX-0222 at *2. And Respondents do not argue that ASTM D2584 cannot apply
to BAX apparent density measurements.
As to Respondents’ claim that Dr. Rockstraw did not account for volumetric dilution, the
apparent density value already accounts for the interstitial air space which results from the granular
adsorbent settling into a constrained bed. These spaces are visible in the imagery of the Accused
Products, as shown above. 	Respondents’ claims that “Dr. Rockstraw identified but ignored
numerous other volumetric diluents between and adjacent to the BAX regions he identified in the
Accused and DI Canisters” (RIB at 32 (citing, inter alia, RDX-1000)) and “it is likely that these
volumetric diluents do in fact lower the IAC of the BAX regions below 35 g/L” (RIB at 35) are
flawed, because they treat volumetric diluents “between and adjacent to” BAX regions as part of
those BAX regions. 	This is essentially a re-framing of their indefiniteness argument, rejected
above. As construed, “adsorbent volume” in claim 1 refers to the volume of space the adsorbent
takes up. Respondents have not pointed to any such diluents within the volume of space taken up
by BAX, so the IAC is not “likely” to be lower than 35 g/L.
With respect to Respondents’ claim that “Dr. Rockstraw does not adequately explain” why
two samples of BAX 1500, 1100, and 1100LD are sufficient to represent all such adsorbents used
in the world, this is not persuasive given the absence of any contradicting evidence. 	See RX-
0381C at Q/A 519-520, 532-534. Respondents’ additional complaint that the IAC values reported
in the 844 patent cannot be trusted to reflect the IAC of the product today (RIB at 35-36) is also
of little import. Dr. Rockstraw does not rely solely on these values; he also relies on the testing
data obtained from PTA. CX-0909C at Q/A 94.

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Notably, Respondents’ invalidity theory under § 102(g)(2) for the Delphi Epsilon Canister
essentially relies on the truth of BAX 1100 having a BWC of 11 and BAX 1500 as having a BWC
of 15, as each were sold at the time, with the assumption that such BWC values must mean an IAC
of over 35 g/L. See RIB at 66 (citing JX-0239 at 189:11-190:17, 258:2-6, 15-18). The same is
true for their invalidity theory involving the Park reference. RX-0380C at Q/A 573 (citing RX-
0147 (comparing product name to BWC)). The correspondence between adsorbent model name
and BWC value is unsurprising, given the 844 patent’s note of BWC as “ha[ving] been established
in the art as a good predictor of the canister working capacity” and commercially available
products being classified by that metric. 844 patent at 2:1-25. This further supports finding the
35 g/L or more IAC limitation to be met in the Accused Products.
Accordingly, I find all Accused Products include the “initial adsorbent volume” limitation
of claim 1. As there is no dispute as to the remaining portion of claim 1—"contacting [with] the
fuel vapor”—the use of all Accused Products except MAHLE Part Nos. 7214330 and 72144283
infringes claim 1.
ii. 	Claim 13
Claim 13 of the 844 patent requires:
13. The method of claim 11 wherein the volumetric dilution is accomplished
by forming the adsorbent into high voidage shapes selected from the group
consisting of stars, hollow cylinders, asterisks, spirals, cylinders, and
configured ribbons.
844 patent at cl. 13.
Ingevity claims “[a] simple visual inspection makes clear MPAC has a substantially
cylindrical shape and the individual pieces have multiple voids that pass through it, making it
hollow.” CIB at 25-26 (citing CX-0909C at Q/A 210-202; JX-0054C at *2; RPX-0027). Ingevity

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adds that Respondents’ witness, Dr. Yamasaki, “admits that MPAC has a hollow shape.” Id. at 26
(citing Hr’g Tr. at 421:18-23).
In response, Respondents argue “Ingevity has no proof” that MPAC is “substantially
cylindrical” or “hollow.” RIB at 28. Respondents contend Dr. Rockstraw “admit[s]” that MPAC
is not hollow under the plain and ordinary meaning of the term. 	Id. (citing Hr’g Tr. at 247:24-
248:8). More specifically, Respondents contend an empty cylinder that has an internal dividing
wall is not hollow. RRB at 7.
There can be no genuine dispute that MPAC is a cylinder, or even a hollow cylinder. 	I
observe from RPX-0027, a physical vial of MPAC in evidence, that it precisely matches the below
illustration and photograph provided in Dr. Rockstraw’s testimony:
CX-0909C at Q/A 201; JX-0054C; RPX-0027. Each MPAC piece has a regular outside curved
surface with a circular cross-section, bounded by two planar faces. 	This makes it at least
“substantially cylindrical.” Further, as determined above, the construction for “hollow cylinder”

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is a “cylinder with one or more voids or empty spaces that allow for fluid passage from one end of
the cylinder to the other.” MPAC’s empty spaces plainly allow air passage from end-to-end.
Accordingly, I find the use of those Accused Products leading to infringement of claim 1,
and intervening dependent claims, also infringes claim 13.
iii. 	Claim 18
Claim 18 of the 844 patent requires:
18. In a method of reducing fuel vapor emissions in an automotive
evaporative emissions control system comprising removing at least one
volatile organic compound from a volatile organic compound-containing
fuel vapor by routing the fuel vapor through a vapor adsorbent, the
improvement comprising sequentially routing the fuel vapor through an
initial adsorbent material-containing volume wherein the initial adsorbent
material is characterized by an 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 before routing the fluid stream through at least one
subsequent adsorbent-containing volume prior to venting to the atmosphere
wherein the subsequent adsorbent-containing volume is characterized by an
incremental adsorption capacity at 25° C. of less than 35 g n-butane/L
between vapor concentrations of 5 vol % and 50 vol % n-butane.
844 patent at cl. 18.
The parties largely treat claim 18 the same as claim 1. Ingevity acknowledges claim 18
includes additional language reciting, generally, a step of removing a volatile organic compound
from fuel vapor (CIB at 21-22), but claims this is nonetheless met as “the Accused Canisters have
multiple volumes of activated carbon that adsorb hydrocarbons, a volatile organic compound, from
fuel and air vapor mixtures emitted from fuel tanks of vehicles in which the canisters are installed”
(id. (citing CX-0909C at Q/A 97-99)). Respondents do not dispute this. See generally RIB; RRB.
Although I have determined above that claim 18’s use of “subsequent adsorbent material-
containing volume” renders this claim indefinite, if that term is found not indefinite and construed
to mean “subsequent adsorbent volume” (as in claim 1) or “subsequent adsorbent material” (by
analogy to the “initial adsorbent material” term earlier in claim 18), then Ingevity has shown the

96
limitations of claim 18 are met. Accordingly, I find the use of those Accused Products leading to
infringement of claim 1 also infringes claim 18.
iv. 	Claim 31
Claim 31 of the 844 patent requires:
31. In an evaporative emissions control system for a vehicle comprising, in
combination, a fuel tank for storing a volatile fuel, an engine having an air
induction system and adapted to consume the fuel, a canister containing an
initial volume of fuel vapor adsorbent material for temporarily adsorbing
and storing fuel vapor from the tank, a conduit for conducting fuel vapor
from the tank to a canister vapor inlet, a fuel vapor purge conduit from a
canister purge outlet to the induction system of the engine, and a vent/air
opening for venting the canister and for admission of air to the canister
during operation of the engine induction system, wherein the canister is
defined by a fuel vapor flow path via the canister vapor inlet through the
initial volume of vapor adsorbent within a first region of the canister toward
the vent/air opening, and an air flow path through a subsequent volume of
adsorbent within a second region of the canister at the vent/air opening and
the first region at the purge outlet, such that fuel vapor formed in the tank
flows through the vapor inlet into the initial volume of adsorbent where it
is adsorbed and, during operation of the engine induction system, ambient
air flows in a path to and through the vent/air opening and along the air flow
path in the canister through the initial volume and the purge outlet to the
induction system of the engine, the flow of air removing a portion of the
adsorbed fuel vapor but leaving a residue of fuel in the initial volume,
the improvement wherein at least one subsequent volume of vapor
adsorbent material comprises a volume of 1 % to 100 % of the first volume
and is located either inside of the canister within the second region thereof
or outside of the canister, and wherein the initial volume of vapor adsorbent
material is characterized by an incremental adsorption capacity at 25° C. of
greater than 35 g n-butane/L-bed between vapor concentrations of 5 vol %
and 50 vol % n-butane before routing the air flow through at least one
subsequent volume of vapor adsorbent material wherein the subsequent
volume of vapor adsorbent material is characterized by an incremental
adsorption capacity at 25° C. of less than 35 g n-butane between vapor
concentrations of 5 vol % and 50 vol % n-butane.
844 patent at cl. 31.
The parties largely treat claim 31 the same as claim 1. Ingevity acknowledges claim 31
includes additional language reciting, generally, that the subsequent adsorbent volume comprises

97
between 1 and 100% of the first (i.e., initial) volume and is located in one of two positions relative
to the canister (CIB at 22), but claims this is nonetheless met because in “each accused canister,
all volumes of adsorbent material are located inside the same canister” (id. (citing CX-0909C at
Q/A 177-178; CX-0510C; RX-0381C at Q/A 419-423, 431-435)). 	Respondents do not dispute
this. See generally RIB; RRB.
Ingevity also acknowledges claim 31, distinct from claim 1, “include[s] various claim
elements related to parts of an automobile as well as the flow of fuel vapor and purge air through
the canister” (CIB at 22-23), but claims this is nonetheless met, primarily citing expert testimony
(id. at 23 n.9 (citations omitted)). Respondents do not dispute this. See generally RIB; RRB.
As determined above, these additional preamble limitations are limiting, yet it is more
likely than not that the placement of the Accused Products within the intended and identified
models of automobile meets all of these additional limitations. Accordingly, infringement of claim
31 has been shown for those evaporative emissions control systems which include the Accused
Products whose use would infringe claim 1.
v. 	Claim 38
Claim 38 of the 844 patent requires:
38. The system of claim 36 wherein the volumetric dilution is accomplished
by forming the adsorbent material into high voidage shapes selected from
the group consisting of stars, hollow cylinders, asterisks, spirals, cylinders,
and configured ribbons.
844 patent at cl. 38.
The parties treat claim 38 the same as claim 13. Accordingly, infringement of claim 38
has been shown for those evaporative emissions control systems which infringe claim 31, and all
intervening dependent claims.

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vi. 	Claim 43
Claim 43 of the 844 patent requires:
43. A canister operative for use in automotive systems for emission control
defined by a canister vapor inlet to permit a fuel vapor flow path through an
initial volume of vapor adsorbent within a first region of the canister toward
a canister vent/air opening to permit a continued air flow path through a
subsequent volume of adsorbent within a second region of the canister at
the vent/air opening and the first region at a canister purge outlet, such that
fuel vapor formed in a tank for storing volatile fuel flows through the
canister vapor inlet into the initial volume of adsorbent where it is adsorbed
and, during operation of an engine induction system, ambient air is caused
to flow in a path to and through the vent/air opening and along the air flow
path in the canister through the initial volume and the purge outlet to the
induction system of the engine, wherein the flow of air removing a portion
of the adsorbed fuel vapor but leaving a residue of fuel in the initial volume,
and wherein at least one subsequent volume of vapor adsorbent material
comprises a volume of 1% to 100 % of the initial volume and is located
either inside of the canister within the second region thereof or outside of
the canister, and wherein the initial volume of vapor adsorbent material is
characterized by an incremental adsorption capacity at 25° C. of greater than
35 g n-butane/L-bed between vapor concentrations of 5 vol % and 50 vol %
n-butane before routing the air flow through at least one subsequent volume
of vapor adsorbent material wherein the subsequent volume of vapor
adsorbent material is characterized by an incremental adsorption capacity at
25° C. of less than 35 g n-butane between vapor concentrations of 5 vol %
and 50 vol % n-butane.
844 patent at cl. 43.
The parties largely treat claim 43 the same as claim 1. Ingevity acknowledges claim 43
includes additional language reciting, generally, that the subsequent adsorbent volume comprises
between 1 and 100% of the first (i.e., initial) volume and is located in one of two positions relative
to the canister (CIB at 22), but claims this is nonetheless met because in “each accused canister,
all volumes of adsorbent material are located inside the same canister” (id. (citing CX-0909C at
Q/A 177-178; CX-0510C; RX-0381C at Q/A 419-423, 431-435)). 	Respondents do not dispute
this. See generally RIB; RRB.

99
Ingevity also acknowledges claim 43, distinct from claim 1, “include[s] various claim
elements related to parts of an automobile as well as the flow of fuel vapor and purge air through
the canister” (CIB at 22-23), but claims this is nonetheless met, primarily citing expert testimony
(id. at 23 n.9 (citations omitted)). Respondents do not dispute this. See generally RIB; RRB.
As determined above, these additional preamble limitations are limiting, yet it is more
likely than not that the placement of the Accused Products within the intended and identified
models of automobile meets all of these additional limitations. Accordingly, infringement of claim
43 has been shown for those evaporative emissions control systems which include the Accused
Products whose use would infringe claim 1.
vii. 	Claim 50
Claim 50 of the 844 patent requires:
50. 	The 	canister 	of 	claim 	48 	wherein 	the 	volumetric 	dilution 	is
accomplished by forming the adsorbent material into high voidage shapes
selected from the group consisting of stars, hollow cylinders, asterisks,
spirals, cylinders, and configured ribbons.
844 patent at cl. 43.
The parties treat claim 50 the same as claim 13. Accordingly, infringement of claim 50
has been shown for those evaporative emissions control systems which infringe claim 43, and all
intervening dependent claims.
2. 	Indirect Infringement
Ingevity has shown indirect infringement of the asserted claims by each of MAHLE,
Kuraray, and Nagamine by a preponderance of the evidence.
a. 	MAHLE
Ingevity contends respondent MAHLE both induces and contributes to infringement of the
844 patent. CIB at 29-31.

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Ingevity contends MAHLE induces infringement through the provision of the Accused
Products to automobile OEMs, “and in doing so, actively encourages them to test the Accused
Canisters . . . . thereby meeting the Method Claims.” Id. at 29 (citing, inter alia, CX-0909C at
Q/A 1994-1995). 	Ingevity also contends MAHLE sends the Accused Products to non-parties
Sterling and Vexa for “DBL and SHED tests,” with the implication that these non-parties also
infringe method claims 1 and 18 through that testing. See id. (citing, inter alia, CX-0909C at Q/A
1952, 1999-2001; JX-0230C at 269:4-271:13, 396:6-398:9, 399:2-403:1). Ingevity further argues
MAHLE had notice of the 844 patent through pre-suit correspondence from Ingevity, but also
much earlier, in the “‘around late 2005’” timeframe. See id. at 29-30 (citing, inter alia, Hr’g Tr.
at 376:11-13, 421:3-6; RX-0373C at Q/A 29-31; CX-0638C at *46; CX-0909C at Q/A 1993-1994,
1998)). Ingevity alleges this knowledge was present when MAHLE was developing MPAC as a
replacement for Ingevity’s honeycomb product. See id. at 30 (citing CX-0638C at *46; CX-0909C
at Q/A 1993-1994).
As determined above, the use of the Accused Products (with the exception of MAHLE Part
Nos. 7214330 	and 72144283 	within an automobile fuel system
which causes fuel vapor to enter the canister from a fuel tank directly infringes, at least, method
claims 1 and 18 and system claim 31, and the canisters themselves infringe apparatus claim 43.
Respondents do not dispute their provision of the Accused Products to OEMs or their prior
knowledge of the 844 patent. 	See RIB at 24-25 (discussing development of MPAC with
consideration of the 844 patent); RRB at 13-14. Respondents claim, however, that “Ingevity has
no evidence of MAHLE’s purported intent to infringe” apart from Dr. Rockstraw’s opinion on
such matters. Id. at 13-14.
But Respondents’ response to Ingevity’s Interrogatory No. 16 states:

CX-0637C at *46. This response notes MPAC Pe

MAHLE’s witness, Dr. Yamasaki, similarly

IE X-0373C at Q/A 38-39. As discussed in more

detail further below with respect to technical prong domestic industry, it is effectively undisputed
that Ingevity’s honeycomb, the product mentioned in Respondents’ interrogatory response and
implied in Dr. Yamasaki’s testimony, has no substantial non-infringing uses outside of the 844
patent. CX-0911C at Q/A 101-102; CX-1144C at Q/A 97-99; RIB at 87 (citing CPB at 367), 104-
105; see RRB at 58. Thus, there is at least some evidence of MAHLE’s intent to replicate
Ingevity’s technique of practicing the patent, contrary to Respondents’ contention.

Setting that overbroad contention aside, the more measured response from Respondents is

that

| | and was found to have such high values after various rounds of in-house testing between
2013 and 2018. See RIB at 24-26; RRB at 13-14. Respondents contend this evidences a good
faith belief of non-infringement, which precludes both induced and contributory infringement.
RIB at 25; RRB at 14. Although not discussed in their briefing, Respondents’ expert, Mr. Lyons,
discusses a variety of other evidence in support of the same contention. See RX-0381 at Q/A 442-

462 (citing RX-0936C; RX-0754C; RX-0337C; RX-0751C).

101

102
Little of this evidence supports a good faith belief in non-infringement on the part of
MAHLE. First, the evidence discussed solely in the testimony of Mr. Lyons is of little probative
value. RX-936C, cited by Mr. Lyons (RX-0381C at Q/A 450-451), is not in evidence although it
appears JX-0243C may be the same. Regardless, the cited excerpts are either redacted as not in
evidence or irrelevant to this issue. RX-0754C, also cited by Mr. Lyons (RX-0381C at Q/A 452-
453), is also not in evidence although it may have become JX-0241C. Regardless, the cited excerpt
is irrelevant. 	RX-0337C
—is standard for such contracts,
regardless of the underlying factual circumstances. See RX-0381C at Q/A 452-453. Finally, RX-
0751C is not in evidence although it may be JX-0230C. The cited excerpts (see RX-0381C at Q/A
457) do evidence a belief that MPAC is a “high-capacity carbon” such that “[w]hen used in
combination with BAX, which is also high capacity, is outside the Ingevity patent claims,” but this
is based on MAHLE’s 2013 testing (JX-0230C at 97:9-15; see JX-0230C at 204:3-206:10, 243:24-
244:7), the adequacy of which Ingevity challenges.
Thus, the issue fairly turns on whether MAHLE’s in-house testing between 2013 and 2018
establishes a good-faith basis to believe their provision of MPAC in the Accused Products would
not lead to infringement of the 844 patent. While the parties spend the majority of their discussions
on the adequacy of the methods behind each round of tests (see, e.g., CIB at 26-30; CRB at 16-17;
RIB at 25-26; RRB at 11-12, 14) and whether or not certain BWC values accurately reflect IAC
(see, e.g., CRB at 15-16; RIB at 24-25; RRB at 11), Respondents’ overall contention is that their
in-house development determined that an IAC of 35 g/L corresponds to a BWC of 8.0 g/dL, and
so
(RIB at 25 (citing RX-0373C at Q/A 44-55; Hr’g Tr. at 398:17-399:18; JX-0029C)). In this way,

103
Respondents cannot dispute that they
RX-0373C at Q/A 49-55.
This does not resemble a good faith belief or effort to not infringe, as any slight variance
from the
would result in infringement. 	To borrow the general engineering concept,
MPAC’s factor of safety to avoid infringement is effectively
This risk should have been apparent to
Respondents, especially given their acknowledgement that a BWC of 8.0 only “correlates” to an
IAC of 35. RX-0373C at Q/A 55. Respondents state:
Ingevity argues that “[c]ontrary to Respondents’ assertions, IAC is not the
same as BWC.” (CPOB at 7.) Respondents have not argued they are the
same, only that they are closely correlated and an IAC of 35 g/L is closely
correlated with a BWC of 8.0 g/dL, based on an “excellent” correlation first
discovered and characterized by the alleged inventor of the ’844 patent, Dr.
Hiltzik. (See CPOB at 24.)
RRB at 11.
Further, the same MPAC specification states that the apparent density of MPAC should be
JX-0029C at *2. To the extent Respondents seek to rely on the individual IAC
results from Dr. Yamasaki’s rounds of in-house testing as the source of the non-infringement
belief—separate and apart from their perceived BWC-IAC correlation—it is important that Dr.
Yamasaki only used an apparent density value of 	for those experiments. RX-0373C at
Q/A 70, 74, 78, 79; CX-0909C at Q/A 157.
A more earnest investigation as to
whether MPAC infringes would have also considered the
and it appears it would have made a difference. For those more recent 2018 tests, Dr. Yamasaki’s
butane isotherms showed incremental g/gAC adsorption values of 0.1092 g/gAC (0.1892 –

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0.0800), 0.09983 g/gAC (.19520 – 0.09537), and 0.0964 g/gAC (0.2126 – 0.1162). RX-0373C at
Q/A 70, 78, 79. These values multiplied by the
gives IAC values of 	respectively—i.e., infringement in
at least two out of three runs.
Therefore, I do not find the evidence supports a good-faith belief that MPAC is such a
“high-capacity” carbon (JX-0230C at 97:9-15, 204:3-206:10, 243:24-244:7) or that Respondents
“carefully avoided releasing a potentially infringing product” (RRB at 14); and this determination
is based solely on Respondents’ own internal records and testimony. 	See RIB at 26 (“Dr.
Rockstraw’s 	evidence 	was 	created 	long 	after 	MPAC’s 	design 	and 	development 	was
complete . . . .”). With no other elements of inducement contested by Respondents (RRB at 14),
Ingevity has shown MAHLE has induced infringement of the 844 patent through the sale of its
Accused Products.
As for contributory infringement, Ingevity contends MAHLE NA sells the Domestic
Accused Products to “auto OEMs in the United States” and “[v]ehicles including the Accused
Canisters meet [claims 31 and 43], and operating vehicles that incorporate the Accused Canisters
meets [claims 1 and 18].” 	CIB at 30-31 (citing CX-0909C at Q/A 1953-1974, 2024-2027).
Ingevity further contends the Domestic Accused Products have no non-infringing uses and
“MAHLE NA must know about downstream infringement by end users and the automobile
OEMs.” Id. at 31 (citing CX-0909C at Q/A 1973-1976).
Apart from their asserted belief in the high-capacity nature of MPAC, dismissed above,
Respondents 	argue 	MPAC 	has 	substantial 	non-infringing 	uses 	due 	to 	Dr. 	Rockstraw’s
“admi[ssion] that certain units of MAHLE canisters do not infringe because the MPAC volumes
he identified have an IAC greater than or equal to 35 g/L.” See RRB at 13 (citing CIB at 15; CX-

105
0909C at Q/A 145 (Table 7)). Such MPAC volumes are few, however, and greatly outnumbered
by MPAC volumes which do have an IAC of less than 35 g/L. See CX-0909C at Q/A 145 (Table
7). 	Thus, I do not find, and Respondents do not attempt to explain, why those few volumes
represent “substantial” non-infringing applications.
Thus, Ingevity has shown that MAHLE has contributed to the infringement of the 844
patent by others with the Domestic Accused Products.
b. 	Kuraray
Ingevity contends respondent Kuraray both induces and contributes to infringement of the
844 patent. CIB at 31-33.
With respect to inducement, Ingevity contends Kuraray, like MAHLE, has known of the
844 patent for years, at least by 2009 when “Kuraray was considering the impact of the ’844 Patent
on its business plans.” 	CIB at 32 (citing JX-0236C at 124:22-125:7, 125:13-17, 125:20; CX-
0084C at *2; CX-0611C at *36). 	Ingevity contends this includes subsidiary and co-respondent
Calgon Carbon Corporation. 	Id. at 33 (citing JX-0226C at 27:18-25; CX-0909C at Q/A 1978).
Ingevity specifically argues that “by providing MPAC to MAHLE NA via CCC, Kuraray actively
induces MAHLE NA to sell the Domestically Manufactured Canisters, thereby infringing at least
the Canister Claims.” CIB at 31 (citing CX-0909C at Q/A 2005; JX-0244C at 55:20-25; JX-0230C
at 67:7-12). 	Ingevity adds “Kuraray’s importation and sale of MPAC further constitutes an
importation and sale after importation of an article that infringes” (id. at 32 (citing CX-0909C at
Q/A 2023-2027)) and
Kuraray is encouraging MAHLE NA to manufacture, offer to sell, and sell infringing fuel vapor
canisters” (id.). Ingevity further argues “Kuraray has hosted multiple automobile OEMs for tours
of Kuraray’s MPAC production site in Japan to aid MAHLE’s marketing of MPAC canisters.” Id.
(citing JX-0244C at 49:19-50:17, 51:7-14; CX-0030C at *1-4).

106
In response, Respondents argue only that Kuraray held the same belief in non-infringement
as respondent MAHLE. See RRB at 14 (citations omitted); RX-0381C at Q/A 472. As noted, that
belief is not supported by the record. Respondents’ expert opines that Kuraray “does not have all
information related to how or where MAHLE uses the activated carbon” and “there is no sharing
of information between CCC and MAHLE regarding the design of MPAC canisters, the
performance of MPAC canisters, or certification of MPAC canisters.” 	RX-0381C at Q/A 474.
Even accepting this opinion, the evidence shows that Kuraray assists in marketing MAHLE’s
canisters and developing business strategy (CX-0030C; JX-0244C at 49:19-52:16), Kuraray and
MAHLE collaborated during the development of MPAC (JX-0244C at 31:1-23 (“MPAC product
is – designed to be used only by MAHLE, and how MAHLE use is not our concern”); JX-0242C
at 55:2-57:13; JX-0230C at 66:13-67:1; JX-0242C at 36:16-38:1), and Kuraray’s MPAC is sold
only to MAHLE (JX-0244C at 31:18-23).
Accordingly, I find it is more likely than not that Kuraray induces MAHLE NA to directly
infringe the 844 patent. To the extent Ingevity’s reference to Kuraray’s automobile OEM tours
(CIB at 32) is intended to be a second inducement theory—e.g., that Kuraray induces automobile
OEMs to directly infringe—that theory is not clearly explained in the briefing, and is therefore
rejected.
With respect to contributory infringement, the evidence shows a collaborative history
between the Kuraray and MAHLE in the development and marketing of MPAC in full view of the
844 patent, as discussed above. There is no evidence that MPAC has a use outside of the Accused
Products, and as determined above, those volumes of MPAC which were found not to have IAC
below 35 g/L do not constitute a “substantial” non-infringing use, so it is more likely than not

107
Kuraray contributes to MAHLE NA’s direct infringement through the provision of MPAC. See
CIB at 33.
c. 	Nagamine
Ingevity contends respondent Nagamine induces infringement of the 844 patent. CIB at
33-34. As with MAHLE and Kuraray, Ingevity claims Nagamine has known of the 844 patent for
some time, far before the filing of the present complaint. Id. at 34 (citing CX-0909C at Q/A 2020;
JX-0242C at 36:16-37:2, 38:21-24, 40:4-10); see CX-0909C at Q/A 2014 (citing CX-0184C at
39:9-13). Ingevity argues Nagamine’s development of MPAC with Kuraray and MAHLE, sale of
MPAC to Kuraray “which it knows to resell to MAHLE,” and hosting of factory tours for OEMs,
means “Nagamine actively induces MAHLE NA’s infringement by providing MPAC to MAHLE
NA through Kuraray and its efforts to aid MAHLE’s sales to OEMs.” Id. (citations omitted).
In response, Respondents argue only that Nagamine held the same belief in non-
infringement as respondent MAHLE. See RRB at 14 (citations omitted); RX-0381C at Q/A 493.
As noted, that belief is not supported. Additionally, the evidence cited by Ingevity in its briefing,
and summarized above with regard to Nagamine’s sale of MPAC for importation, demonstrates
that Nagamine was aware of the 844 patent, and collaborated with Kuraray and MAHLE to develop
MPAC in an effort to avoid its infringement. E.g., JX-0242C at 37:19-39:13.
Accordingly, given the collaborative history between the Respondents in the development
of MPAC in view of the 844 patent, it is more likely than not that Nagamine induces MAHLE NA
to directly infringe. To the extent Ingevity’s reference to Nagamine’s automobile OEM tours (CIB
at 34) is intended to be a second inducement theory—e.g., that Nagamine induces automobile
OEMs to directly infringe—that theory is not clearly explained in the briefing, and is therefore
rejected.

E. Domestic Industry — Technical Prong
According to Ingevity’s post-hearing briefing, the construction or use of the following

products is alleged to practice claims of the 844 patent:

Ingevity’s “DI Canisters”
Futaba 17300TLC A022M1; 17300TLA A022M1; 42035AL01C
Leehan 31400-F3500; 31400-S2500; 31400-D5500; 31400-D5600; 31400-

$9000; 31400-H9500; 31400-H9600; 31400-M7600; 3QF201797A

Stant ACO-8355; AAO-8355; ACO-8214; POR-AAO-8214; ACO-7452;
AAO-6974; AAO-7412; AAO-8378; ASO-4937-1;

ASO-4505-1; 0212025061; AAO-8156

Kayser 42698919; 42702737; 84493688; 84359221; 84316430; 84407925;
84413230; 84410850; 52029 779AB; 52029 779AD; 52029 780AD;
68350 418AA

MAHLE eee—CSCSC‘é<
a

CIB at xiv; see CIB at 35. It appears Ingevity contends the following claims of the 844 patent are

practiced by these canisters:

Claims DI Canisters Alleged to Practice

1, 18, 31, 43 (independent) All

4, 5, 19 (dependent) All

2 (dependent) Futaba: 42035AL01C

Leehan: 31400-D5600; 31400-S9000, 31400-M7600

108

109
Stant: ACO-8355; AAO-8355; ACO-8214; POR-AA-8214;
ACO-7452; AAO-6974; AAO-7412; AAO-8378; ASO-4937-1;
ASO4505-1; 0212025061; AAO-8156
Kayser: 	42702737; 	84493688; 	84359221; 	84316430;
84407925; 84413230; 84410850; 52029779AB; 52029779AD;
52029780AD; 68350418AA
MAHLE:
3 (dependent) 	Futaba: 17300TLC A022M1, 17300TLA A022M1
Leehan: 31400-F3500; 31400-S2500; 31400-D5500; 31400-
H9500; 31400-H9600
Kayser: 42698919
8, 21, 33, 45 (dependent) 	All
11, 24, 36, 48 (dependent) 	All
12, 25, 37, 49 (dependent) 	All
13, 26, 38, 50 (dependent) 	MAHLE: 72142079
14, 27, 39, 51 (dependent) 	All, except:
Leehan: 31400-D5600, 31400-S9000, 31400-M7600
16, 29, 41, 53 (dependent) 	All
See CIB at 34-43.
1. 	Articles “Protected” by the 844 Patent
19 U.S.C. § 1337(a)(3) explains that “an industry in the United States shall be considered
to exist if there is in the United States, with respect to the articles protected by the patent . . . (A)

110
significant investment in plant and equipment; (B) significant employment of labor or capital; or
substantial investment in its exploitation, including engineering, research and development, or
licensing.” 19 U.S.C. § 1337(a)(3). Particularly relevant to this investigation is the phrase “with
respect to articles protected by the patent,” because the activated carbon adsorbents which Ingevity
manufactures and sells do not themselves meet the limitations of the claims of the 844 patent.
Rather, as discussed above in the context of infringement, the independent claims identified for
domestic industry are only met when, inter alia: a method is performed wherein the adsorbents
are placed in series with respect to one another and contacted with a flowing fuel vapor (see 844
patent at cls. 1, 18); the adsorbents are contained within a canister in a similar arrangement (see
id. at cl. 43); or the adsorbents are contained within a canister, again, in the same arrangement and
where the canister is further connected to an automobile’s fuel system (see id. at cl. 31). Ingevity
describes 	this 	as 	“[t]he 	independent 	claims 	include 	method 	(1, 	18), 	system 	(31), 	and
canister/product (43) claims that are directly [practiced] by each [] canister, the use of such canister
when connected to a fuel vapor source, or when included as part of a vehicle.” CIB at 12; see CIB
at 22-23, 38-39.
Thus, Ingevity’s activated carbon adsorbents do not practice the 844 patent—a conclusion
that is undisputed. RIB at 3; see RIB at 29, 106 (citing RX-1297C at 120). In other words, those
adsorbents, which Ingevity nonetheless characterizes as the “DI Products” (CIB at xiv), are not
“articles protected by the patent” under the statute. Rather, the “articles” are fuel vapor canisters
containing those adsorbents which: when used, practice the steps of method claims 1 and 18; when
made or sold, meet apparatus claim 43; and when placed within an automobile’s fuel system, meet
system claim 31. Indeed, Ingevity characterizes these canisters as the “DI Canisters.” CIB at xiv,
35.

111
Accordingly, Ingevity seeks to satisfy the technical prong of domestic industry in two
ways. First, Ingevity claims “Fuel Vapor Canisters Manufactured by Ingevity’s Implied Licensees
Satisfy The Technical Prong of the Domestic Industry Requirement.” See CIB at 34-48. As noted
in its title, this theory depends on the existence of an implied license between Ingevity and those
third-parties whose canisters it relies on to meet the limitations of the claims. 	See id. at 45-47
(discussing why the third-parties are so licensed). For various reasons, Respondents dispute that
such licenses exist. See RIB at 103-106.
Second, Ingevity claims its “DI Products Satisfy the Technical Prong of the Domestic
Industry Requirement.” Id. at 48-52. This theory depends on either of two legal premises—that
the technical prong may be satisfied “based on investments in components of products that practice
a patent” (CIB at 48) or “[w]hen the technical prong is satisfied by complainant’s sale of
component parts configured by customers to practice an asserted patent, ALJs have not required
that the customers have a license” (id. at 52). To support these two concepts, Ingevity cites to a
trio of final IDs which were not reviewed by the Commission: Certain Optoelectronic Devices,
Components Thereof, and Products Containing Same, Inv. No. 337-TA-669, 2010 WL 1249683,
at *60-61 (“Optoelectronic Devices”); Certain Integrated Repeaters, Switches, Transceivers, and
Products Containing Same, Inv. No. 337-TA-435, 2001 WL 1769747, at *94-95 (“Integrated
Repeaters”); and Certain Foam Masking Tape, Inv. No. 337-TA-528, 2005 WL 1597282, at *9
(“Foam Tape”). Id. at 48, 52. These three final IDs all stand for the proposition that the technical
prong is satisfied “if it [is] established that [the patent owner] or its customers configure the
allegedly covered products in a manner that practices the claims within the United States.”
Optoelectronic Devices, 2010 WL 1249683, at *58.

112
Ingevity’s technical prong assertions are addressed below. As a threshold issue, however,
Respondents challenge the starting point for Ingevity’s claims of implied license—whether
Ingevity Corp. has any rights to the 844 patent to grant given ownership of the patent by Ingevity
South Carolina, LLC.
Respondents present the relevant test as “[i]mplied licenses arise based on ‘language used
by the owner of the patent or any conduct on [its] part’ from which another ‘may properly infer
that the owner consents to his use of the patent in making or using [the impliedly licensed product],
or selling it, upon which the other acts.’” RIB at 103 (citing McCoy v. Mitsuboshi Cutlery, 67 F.3d
917, 920 (Fed. Cir. 1995); De Forest Radio Tel. Co. v. United States, 273 U.S. 236, 241 (1927)).
Respondents thus argue, “Mr. Woodcock testified at deposition, as the corporate representative,
that he is not aware of any indication from Ingevity SC to Ingevity Corp. that implies a license”
(id. (citing JX-0252C at 273:20-25)), and any activities now discussed by Ingevity “do not evince
an implied exclusive license (id.). 	Respondents hold up CryoLife, Inc. v. C.R. Bard, Inc., 2015
U.S. Dist. LEXIS 28911 (D. Del., Mar. 10, 2015), as an example of no implied license being found
between parties situated similarly to Ingevity Corp. and Ingevity South Carolina LLC. See id. at
103-104.
In 	fact, 	Mr. 	Woodcock, 	Ingevity 	Corporation’s 	executive 	vice 	president, 	testified
unequivocally that Ingevity Corporation 	JX-0252C
at 272:12-18. Admittedly, he also testified
JX-0252C at 20-25. But this question and answer have
little probative value, both because it is not clear what was meant by “indication,” or what Mr.
Woodcock understood the word to mean, and because Ingevity South Carolina, LLC, is a wholly

113
owned subsidiary of Ingevity Corp., and the corporation is the LLC’s sole member. CX-0911C at
Q/A 13. And the other evidence, in combination with the corporate relationship, clearly proves
the existence of an
(CX-0911C at Q/A 17, 19-
20, 29, 141-143; JX-0150C (
); Ingevity Corp. 	(CX-0911C at Q/A 18); and
(JX-0252C at 273:13-18). As to CryoLife, the facts
surrounding the patent-subsidiary relationship in that case were far less developed than what
Ingevity has demonstrated. 	See CryoLife, 2015 WL 1069397, at *3 n.3 (discussing change in
building signage and website content as insufficient to show standing of the parent corporation).
Accordingly, Ingevity has shown that Ingevity Corp. is
with a right to sub-license.
Turning back to whether the DI Canisters from Ingevity’s customers are impliedly licensed,
Ingevity correctly argues:
There are two requirements for an implied license based on “the sale of
nonpatented equipment used to practice the patented invention”: (1) “the
equipment involved must have no noninfringing uses,” and (2) “the
circumstances of the sale must ‘plainly indicate that the grant of a license
should 	be 	inferred.’” 	Carborundum 	Co. 	v. 	Molten 	Metal 	Equip.
Innovations, Inc., 72 F.3d 872, 878 (Fed. Cir. 1995).
CIB at 45. 	Under this rule, Ingevity claims its “customers that purchase and use automotive
honeycomb products in canisters as the only subsequent adsorbent volume satisfy the requirement
for an implied license.” 	Id. at 46. 	Ingevity states that its automotive honeycombs “have no
noninfringing uses.” 	Id. (citing CX-0911C at Q/A 101-102; CX-1144C at Q/A 97-99).
Importantly, Respondents do not dispute this see RIB at 87 (citing CPB at 367), 104-105; see RRB

114
at 58), nor is there evidence to the contrary in the record. Therefore, the first element of an implied
license is met for those DI Canisters which incorporate an Ingevity honeycomb (i.e., HCA or HCA-
LBE).
Ingevity does not explicitly mention BAX-LBE as another, non-honeycomb adsorbent
product through which the purchase by customers grants an implied license. 	See CIB at 45-47.
But Ingevity argues that it, too, has no non-infringing uses. 	Id. at 45 (“When Ingevity sells its
BAX-LBE, HCA, and HCA LBE products to its customers, those products are only used in
canisters that practice the ’844 Patent—there is no other reasonable or intended use for these low-
IAC carbon adsorbents.”); CX-0911C at Q/A 17. As with the HCA and HCA-LBE honeycombs,
there appears to be no dispute from Respondents on this point, nor is there record evidence
contradicting it. See generally RIB; RRB. Thus, Ingevity has met its burden to show BAX-LBE,
HCA, and HCA-LBE have no non-infringing uses; and the first element of an implied license is
met for all three products.
The second element is more vigorously disputed. Ingevity
but at some point
in order to obtain an implied license.” CIB at 46 (citing CX-0911C at Q/A
140-143; CX-1144C at Q/A 173-176). Ingevity contends its customers, Futaba (or FIC), Leehan,
Stant, and Kayser, do so purchase their subsequent absorbent volumes and “therefore have an
implied license.” Id. As for MAHLE, Ingevity cites to corporate deposition testimony to show
that MAHLE understood this was the arrangement. Id. (citing JX-0230C at 297:18-298:13). And
Ingevity has
(id. at 47) and only

115
(id. (citing CX-1144C at Q/A 160-161, 164-165, 168-
169)).
To be sure, Ingevity has 	Futaba, Leehan, Stant, or Kayser, and Mr.
Woodcock, 	RIB
at 104-105 (citing Hr’g Tr. at 59:6-63:17). And corporate deposition testimony shows that each
of Futaba, Leehan, Stant, and Kayser
See id. at 105 (citing JX-0225C at
76:21-77:1, 122:23-16:7; JX-0233C at 80:22-87:1; JX-0227C at 65:7-24, 71:5-77:12; JX-0229C
at 116, 120; RX-0750C at 120-121).
These facts are beside the point, however. 	The Federal Circuit has instructed that when
nonpatented equipment is sold to an alleged implied licensee, only the circumstances at the time
of the sale are relevant to the license inquiry, and not, for example, those after the sale. Met-Coil
Sys. Corp. v. Korners Unlimited, Inc., 803 F.2d 684, 687 (Fed. Cir. 1986); see Elkay Mfg. Co. v.
Ebco Mfg. Co., 99 F.3d 1160 (Fed. Cir. 1996). 	When no non-infringing uses exist for the sold
item, “unless the circumstances of the sale indicate that a grant of a license should not be
inferred . . . the patentee will be barred from asserting its patent rights against a downstream
purchaser of the article,” that is, a license is implied. 	Jacobs v. Nintendo of America, Inc., 370
F.3d 1097, 1100 (Fed. Cir. 2004); see Carborundum, 72 F.3d at 878-879 (“the circumstance of
such a sale plainly indicate that a license should be implied under the apparatus patent. . . . once
Metaullics sold the pump without restriction, the parties to the sale were presumed to have intended
that the purchaser was free to repair it with parts obtained from any source.”); Anton/Bauer, Inc.
v. PAG, Ltd., 329 F.3d 1343, 1351-52 (Fed. Cir. 2003) (relying on “no evidence that Anton/Bauer

116
places express restrictions on the use of the female plates it sells or that it requires that
manufactures to whom it sells female plates expressly restrict the grant of a license upon sale of
the finished camera that incorporates the plate” to hold that an implied license existed); Met-Coil,
803 F.2d at 687 (“A patent owner’s unrestricted sales of a machine useful only in performing the
claimed process and producing the claimed product ‘plainly indicate that the grant of a license
should be inferred.’ . . . Absent any circumstances tending to show the contrary, we see now error
in the district court’s holding that Met-Coil’s customers enjoyed an implied license under the
patent.”).
Here, the facts are similar to those in Anton/Bauer, Met-Coil, and Carborundum, in which
an implied license was found. There is no evidence to indicate that Ingevity’s sale of honeycombs
(by themselves or in combination with additional adsorbents) to any of Futaba, Leehan, Stant, or
Kayser, and especially to MAHLE (who was aware of Ingevity’s position on implied license),
Respondents’
cited evidence primarily concerns whether customers understood they practiced the 844 patent or
had discussed the patent with Ingevity. 	This is not relevant, however, to the two-factor test
promulgated by the Federal Circuit for implied licenses through the sale of unpatented items.
Thus, given the undisputed claim that the sold HCA, HCA-LBE, and BAX-LBE have no
uses other than to practice the claims of the 844 patent, and the absence of any evidence in
connection with those sales restricting the use of HCA, HCA-LBE, and BAX-LBE in any way, I
find each of Futaba, Leehan, Stant, Kayser, and MAHLE received implied licenses through their
respective purchases. 3 Since all of the DI Canisters include at least one of HCA, HCA-LBE, and
3 	The precise terms or scope of the implied license are discussed further below in connection
with patent exhaustion.

117
BAX-LBE (CX-0909C at Q/A 2030, 2051, 2076-2079, 2110), their practice of a low-IAC
adsorbent in series with a high-IAC adsorbents is “authorized” and thus “protected” by the 844
patent in satisfaction of 19 U.S.C. § 1337(a)(2) and (3).
The authorized canisters also include a select subset of MAHLE models referenced in the
testimony of Dr. Rockstraw. 	Dr. Rockstraw testifies, based on an interrogatory response from
MAHLE, that five current canisters and ten “service” canisters utilize Ingevity honeycomb without
any MPAC (CX-0909C at Q/A 2077), and thus practice the 844 patent (id. at Q/A 2078).
Ingevity’s brief does not identify all fifteen of these canisters as DI canisters, however; it instead
refers to 	CIB
at 35; see CIB at 35 n.18 (citing CX-0909C at Q/A 2072-2077).4 Although it is not perfectly clear,
this statement seemingly refers to the five current canister models listed in CX-0909C at Q/A 2077,
plus that additional canister (Model 72142079 for the
(see RIB at 92 (citing JX-0136C)).
Accordingly, all the DI canisters are “protected” articles eligible for technical prong
domestic industry purposes, subject to determinations on whether they meet every limitation of at
least one valid claim of the 844 patent. 	Ingevity’s other theories, however, focused only on its
own DI Products (i.e., the carbon adsorbents themselves) (see CIB at 48-52), and on acts which
would constitute inducement and/or contributory infringement even if those customers were not
licensed (see id. at 44-45), are rejected. Absence of a license means there is no article “protected”
by the patent as required by the statute. 	And each of the three investigations Ingevity cites for
support of its “significant component” theory made clear the technical prong determination was
4 	I treat Ingevity’s reference to 	as a typo, given the model is shown as
and was discussed in this way at the deposition of John Jackson without correction. CX-
0909C at Q/A 2077; JX-0230C.

ultimately based on the customers’ end device. See Optoelectronic Devices, 337-TA-669, Initial
Determination at 101-102 (discussing /ntegrated Repeaters and Foam Tape); see also Certain
Windshield Wipers and Components Thereof, Inv. No. 337-TA-928/937, Initial Determination at
25 (Nov. 13, 2015) (citing Optoelectronic Devices and determining purchasers of complainant’s
components create larger assemblies as required by the patent for technical prong).

2. Claim Analysis

For the reasons discussed below, I find Ingevity has shown by a preponderance of the

evidence that the DI Canisters practice the following claims”:

Claims DI Canisters Determined to Practice

1, 18, 31 G@ndependent) All, except:
Kayser: 42698919; 42702737; 84493688; 84359221;
84316430; 84413230

Leehan: 31400-D5600; 31400-M7600

43 (independent) All, except:

Kayser: 42698919; 42702737

2 (dependent) Futaba: 42035AL01C;

Leehan: 34400-D3606; 31400-S9000, 34+460-M7600-

Stant: ACO-8355; AAO-$355; ACO82H4, PORA4 82H:
ACO7452: AAO-6974° AAO T419° AAO 8378; ASO-4037 4:

ASO4505+; 9242025061; AAO 8156

> In this table, a strikethrough indicates a canister alleged to practice, but determined not to

practice.

118

119
Kayser: 	42702737; 	84493688; 	84359221; 	84316430;
84407925; 84413230; 84410850; 52029779AB; 52029779AD;
52029780AD; 68350418AA
MAHLE:
3 (dependent) 	Futaba: 17300TLC A022M1, 17300TLA A022M1
Leehan: 31400-F3500; 31400-S2500; 31400-D5500; 31400-
H9500; 31400 H9600
Kayser: 42698919
4 (dependent) 	All that practice the preceding independent and dependent
claims, except:
Kayser: (all)
Leehan: 	31400-D5600; 	31400-M7600; 	31400-H9600;
3QF201797A
Futaba: 17300TLC A022M1
Stant: AAO-8355; ACO-8214; POR-AAO-8214; ACO-7452;
ACO-6974; AAO-7412; AAO-8378; ASO-4937-1; ASO-4505-
1; 0212025067; AAO-8156
5, 19 (dependent) 	All that practice the preceding independent and dependent
claims, except:
Kayser: (all)
Leehan: 31400-H9600; 3QF201797A
Futaba: 17300TLC A022M1

120
Stant: AAO-8355; ACO-8214; POR-AAO-8214; ACO-7452;
ACO-6974; AAO-7412; AAO-8378; ASO-4937-1; ASO-4505-
1; 0212025067; AAO-8156
8, 21, 33, 45 (dependent) 	All that practice the preceding independent and dependent
claims, except:
Kayser: 42698919; 42702737
Futaba: 17300TLC A022M1
Leehan: 31400-H9600; 3QF201797A
Stant: AAO-8355; ACO-8214; POR-AAO-8214; ACO-7452;
ACO-6974; AAO-7412; AAO-8378; ASO-4937-1; ASO-4505-
1; 0212025067; AAO-8156
11, 24, 36, 48 (dependent) 	All that practice the preceding independent and dependent
claims, except:
Kayser: 42698919; 42702737
Futaba: 17300TLC A022M1
Leehan: 31400-H9600; 3QF201797A
Stant: AAO-8355; ACO-8214; POR-AAO-8214; ACO-7452;
ACO-6974; AAO-7412; AAO-8378; ASO-4937-1; ASO-4505-
1; 0212025067; AAO-8156
12, 25, 37, 49 (dependent) 	All that practice the preceding independent and dependent
claims, except:
Kayser: 42698919; 42702737
Futaba: 17300TLC A022M1

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Leehan: 31400-H9600; 3QF201797A
Stant: AAO-8355; ACO-8214; POR-AAO-8214; ACO-7452;
ACO-6974; AAO-7412; AAO-8378; ASO-4937-1; ASO-4505-
1; 0212025067; AAO-8156
13, 26, 38, 50 (dependent) 	MAHLE: 72142079
14, 27, 39, 51 (dependent) 	All that practice the preceding independent and dependent
claims, except:
Leehan: 31400-D5600, 31400-S9000, 31400-M7600; 31400-
H9600; 3QF201797A
Kayser: 42698919; 42702737
Futaba: 17300TLC A022M1
Stant: AAO-8355; ACO-8214; POR-AAO-8214; ACO-7452;
ACO-6974; AAO-7412; AAO-8378; ASO-4937-1; ASO-4505-
1; 0212025067; AAO-8156
16, 29, 41, 53 (dependent) 	All that practice the preceding independent and dependent
claims, except:
Kayser: 42698919; 42702737
Futaba: 17300TLC A022M1
Leehan: 31400-H9600; 3QF201797A
Stant: AAO-8355; ACO-8214; POR-AAO-8214; ACO-7452;
ACO-6974; AAO-7412; AAO-8378; ASO-4937-1; ASO-4505-
1; 0212025067; AAO-8156

122
a. 	Preliminary Issues
In addition to a dispute over the technical characteristics of the DI Canisters as compared
to the limitations of the 844 patent claims, Respondents raise several other “failures of proof.”
RIB at 36-37. Respondents argue several DI Canisters are marked to show intended use outside
of the United States and Ingevity otherwise has not proven technical prong for the asserted method
claims. 	Id. (citing RX-0381C at Q/A 522-531). 	This is discussed below in reference to those
method claims—claims 1 and 18. 	Respondents also argue Ingevity has not proven practice of
system claims 31 or 43, should the preambles of those claims be limiting. Id. at 37 (citing RX-
0381C at Q/A 574-599). This too is discussed below in reference to those claims.
Respondents allege Dr. Rockstraw’s table summarizing which DI Canisters practice which
claims of the 844 patent does not match his claim by claim analysis. RIB at 37 (citing CX-0909C
at Q/A 2055 (Table 9); CX-0909C at Q/A 2131-3205). Respondents identify seven such instances
(id.), with an additional argument that each instance reflects a more basic failure to map these
canisters to the claims (see id.). In response, Ingevity states:
Dr. Rockstraw did not chart several Futaba, Leehan, and Stant canisters
(ROB at 37) but explained that his charting of exemplary canisters
represented how the uncharted ones practiced the claims based on the
manufacturers’ disclosures of the canisters’ adsorbents and his inspection
of the exemplary canisters.
CRB at 21 (citing CX-0909C at Q/A 2056, 2071, 2078, 2123-2128). 	Ingevity acknowledges,
however, that two of the identified Leehan models, 31400-D5600 and 31400-M7600, indeed do
not practice claims 2 or 4. CRB at 21 n.18. I thus find these products do not practice claims 2 and
4 as reflected in the summary table above.
For reasons explained below, the table Respondents complain of, Table 9 in Q/A 2055, is
inaccurate to the point of unreliability, and is disregarded in favor of the actual questions and
answers presented in Dr. Rockstraw’s witness statement. Any complaint from Respondents over

123
its inaccuracy is therefore moot. 	Regarding Dr. Rockstraw’s alleged failure to map certain DI
Canisters to any of the claims of the 844 patent in those questions and answers, he explains two
canisters provided him bear both Leehan 31400-S9000 and 31400-S2500 model numbers, and the
31400-S2500 was sufficiently mapped. CX-0909C at Q/A 2056. Respondents apparently do not
dispute the dual-identity nature of S2500 and S9000 canisters, and I accept it.6 For the remaining
canisters, Dr. Rockstraw explained:
In addition to the inspected and charted domestic industry canisters, Futaba,
Leehan, and Stant identified a number of domestic industry canisters
identified in CDX- 0001.32 (Table 8), but which I have not personally
inspected. Nevertheless, it is my opinion that each of the foregoing canisters
practices the ’844 Patent. In particular, as I discussed, each of these canisters
has one or more high IAC adsorbent volumes (i.e., BAX 1500, 1100, or
1100LD) and one or more low IAC adsorbent volumes (i.e., BAX LBE,
HCA, or HCA LBE). This configuration satisfies the IAC limitations of the
independent claims of the ’844 Patent. The other limitations are satisfied for
the same reasons as set forth above and in the exemplary claims charts for
the domestic industry canisters.
CX-0909C at Q/A 2071; see CX-0909C at Q/A 2078. The merits of this analysis are addressed
below.
b. 	Undisputed Claims
Respondents do not contest Ingevity’s claims of direct practice of the following claims,
apart from their dependency on other, disputed claims: 2-5, 8, 11-14, 16, 19, 21, 24-27, 29, 33,
36, 37, 38, 39, 41, 45, 48, 49, 50, 51, and 53. See RIB at 29-37; RRB at 15-16; RX-0381C at Q/A
540-599. 	In view of the testimony of Dr. Rockstraw that the DI Canisters include the limitations
recited in these claims, and there being no clear disagreement from Respondents as to that fact, I find
6 	In view of this lack of dispute, Ingevity’s representation is accepted. However, the 31400-
S2500 allegedly contains BAX-LBE and HCA, whereas the 31400-S9000 contains only BAX-
LBE. CX-0909C at Q/A 2051 (Table 8).

124
that use of the DI Canisters meets the limitations of these dependent claims as alleged by Ingevity. See
CX-0909C at Q/A 2131-3205; CIB at 40-43.
The above determination is subject to some exceptions, however. Respondents claim “Dr.
Rockstraw admitted that several DI Products do not practice [dependent] claims 2, 3, 4, and/or 5.”
RIB at 37 (citing CX-0909C at Q/A 2055, 2110, 2129). As noted above, Ingevity acknowledges
that two Leehan models, 31400-D5600 and 31400-M7600 do not practice claims 2 or 4, and so
these products have been removed from the summary table above.
Regarding all other models, more explanation from Respondents would have been helpful,
as the testimony they cite consists of collections of tables, not easily comparable to determine
which products Ingevity may have incorrectly claimed practice claims 2, 3, 4, “and/or” 5. It would
also have been helpful if Ingevity had been more forthright in its reply post-hearing brief
concerning where its expert’s testimony was inconsistent with its own contentions. For instance,
Respondents cite Q/A 2055 of Dr. Rockstraw’s testimony (CX-0909C). This question and answer
consists entirely of a summary table outlining which products from Futaba, Leehan, and Stant
practice which claims of the 844 patent. It clearly contains assertions inconsistent with Ingevity’s
post-hearing briefing. To note just one example, Ingevity contends all DI Canisters practice claim
4 of the 844 patent (CIB at 40-41), yet Dr. Rockstraw’s testimony leaves out many models,
including: Futaba 17300TLC A022M1, Futaba 17300TLA A022M1, Leehan 31400-F3500,
Leehan 31400-S2500, Leehan 31400-D5500, Leehan 31400-H9500, and Leehan 31400-H9600
(CX-0909C at Q/A 2055).
There are also discrepancies, however, between the table and the approximately 900
questions and answers which follow and discuss, on a claim by claim basis, the evidence in support
of each practiced claim. For example, Dr. Rockstraw’s summary table lists claims 3 and 5 as not

125
practiced by the Leehan 31400-D5600 canister. 	CX-0909C at Q/A 2055. 	Yet, he claims in
questions and answers that there is such practice. Id. at Q/A 2656-2659.
Considering this conflict between Dr. Rockstraw’s summary table and his own questions
and answers, it is more appropriate to consider the latter as what Dr. Rockstraw contends or
“admits” to, as the former is simply a summary (in this case, an incorrect one). I therefore disregard
that summary table entirely as unreliable.
Respondents also cite to Q/A 2110 and 2129 of Dr. Rockstraw’s witness statement. RIB
at 37. This testimony concerns products from Kayser. Q/A 2129 states clearly in table form “what
claims are [practiced] by these Kayser canisters,” and this table fails to list two Kayser GSV
models (42698919 and 42702737) which Ingevity contends in its brief practice the 844 patent. See
CIB at 34-43; CX-0909C at Q/A 2129 (mentioning only E2XX, JL, and JT models). Unlike the
summary table of Q/A 2055 discussed above, however, there is no additional, claim-by-claim
testimony from Dr. Rockstraw to show whether this Kayser summary table is inaccurate or not. I
am therefore left to conclude that the 42698919 and 42702737 models have not been shown to
practice any claim of the 844 patent. This too is reflected in the summary table above. For what
it is worth, eliminating these models makes no appreciable difference, because it appears from
production records provided by Kayser that these models only arrived in 2019. 	See CX-0668C
(year 2016); CX-0669C (year 2017); CX-0670C (year 2018); CX-0671C (year 2019). 	As
explained in the economic prong discussion below, 2019 investments are not counted, because
they occurred after the filing of the complaint in this investigation.
Ingevity contends the remaining Kayser models—belonging to E2XX, JL, and JT
groupings—practice claim 5 (CIB at 40-41), but Dr. Rockstraw’s testimony at Q/A 2110, 2129
shows these canisters have just one subsequent adsorbent volume in contravention of claim 5,

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(requiring multiple subsequent volumes). See 844 patent at cl. 5. Similarly, Ingevity contends all
Kayser models practice claim 4 (CIB at 40-41). Yet, again, Dr. Rockstraw leaves out claim 4 for
these products. CX-0909C at Q/A 2129. Thus, these models have not been shown to practice this
claim, as reflected in the summary table above.
Lastly, various models from Futaba, Leehan, and Stant have admittedly not been mapped
by Dr. Rockstraw to any claims of the 844 patent, but generalized to nonetheless practice the
independent claims by virtue of their known adsorbent content. See CX-0909C at Q/A 2071. For
reasons explained below in the context of claim 1, these models have been determined not to
practice any dependent claims of the 844 patent.
c. 	Disputed Claims
Respondents do contest Ingevity’s claims of direct practice for the following independent
claims: 1, 18, 31, and 43. See RIB at 29-37; RRB at 15-16. Ingevity has shown direct practice of
each.
i. 	Claim 1
The full text of method claim 1 of the 844 patent is reproduced above in the discussion of
infringement. Ingevity contends each DI Canister houses an “initial adsorbent volume” of BAX
1100, 1100LD, 1500, or 1700, which have IACs greater than 35 g/L. CIB at 37 (citing, inter alia,
CX-0909C at Q/A 85-97, 2032-2046). 	Ingevity also contends each DI Canister houses a
“subsequent adsorbent volume” of BAX LBE, H[CA], or HCA LBE, which have IACs less than
35 g/L. Id. at 38 (citing, inter alia, CX-0909C at Q/A 2046).
The methods by which Ingevity’s expert, Dr. Rockstraw, determined IAC for BAX 1100,
1100LD, and 1500 volumes are discussed above in the infringement context for the same “initial
adsorbent volume” claim limitation. In sum, Dr. Rockstraw combined PTA adsorption capacity
testing data with apparent density values taken from commercial product specification sheets. See

127
generally CX-0909C at Q/A 91-98, 2032. Dr. Rockstraw explains the same process was used for
BAX 1700 and BAX LBE, where the former is an “initial adsorbent volume” used in some DI
Canisters but not in the Accused Products, and the latter is a “subsequent adsorbent volume” used
in some DI Canisters but not in the Accused Products. See id. at Q/A 2032-2039.
HCA and HCA LBE (i.e., Ingevity’s honeycombs) were also sent to third-party PTA for
adsorption capacity testing. 	CX-0909C at Q/A 2033-2037. 	Dr. Rockstraw correctly explains,
however, that these products do not have specification sheet apparent density values and are
otherwise not appropriate for ASTM D2854 due to their structure. Ingevity provides a sample of
a “29x100 HCA” honeycomb as CPX-0001, which is a single carbon cylinder piece, approximately
four inches in length and one inch in diameter, hollow, with an internal lattice creating over 100
channels through which air can pass end-to-end. Clearly, it is not a “granular” activated carbon as
contemplated by ASTM D2854. JX-0222 at *1.
In place of ASTM D2854, Dr. Rockstraw explains he “simply measured the relevant
dimensions (length and diameter) and mass and computed the density. CX-0909C at Q/A 2040.
He reasons this calculated amount is the same as what would be found in-canister because “HCA
and HCA LBE, as solid monoliths, will not change size or shape when they are loaded into the
canisters. 	Thus, their out-of-canister and in-canister apparent densities are the same for the
purposes of the ’844 Patent.” Id. at Q/A 2041. This is reasonable and is adopted.
Dr. Rockstraw opines that the IACs of the BAX 1500, 1100, and 1100LD “initial adsorbent
volume[s]” in the DI Canisters are the same as they are for the Accused Products (CX-0909C at
Q/A 2032); namely, 80.33 g/L, 51.40 g/L, and 44.74 g/L, respectively (id. at Q/A 97). For BAX
1700, BAX LBE, HCA, and HCA LBE, Dr. Rockstraw’s multiplying of the PTA adsorption

128
capacity values (expressed in g/g) with apparent density values (expressed in g/L) yields IACs of
87.32 g/L, 25.05 g/L, 19.05 g/L, and 6.85 g/L, respectively. CX-0909C at Q/A 2044.
Accordingly, Ingevity has shown the DI Canisters include an “initial adsorbent volume”
with an IAC of greater than 35 g/L, and a “subsequent adsorbent volume” with an IAC less than
35 g/L, such that the limitations of claim 1 are met in the DI Canisters.
While Respondents contest the reliability of all these IAC values, their opposition to Dr.
Rockstraw’s analysis of BAX 1500, 1100, and 1100LD has already been addressed in the context
of infringement, and determined not to be persuasive. 	See RIB at 27 (“Respondents’ non-
infringement positions for BAX as an alleged initial adsorbent volume are fully described below
in Section III.C.1. For the reasons described therein, the Accused (and DI) Products do not infringe
any Asserted Claim, because BAX does not meet the initial adsorbent volume limitations.”), 30
(discussing Accused Products in technical prong section). Respondents dispute Dr. Rockstraw’s
findings on BAX 1700 and BAX LBE on the same grounds. See generally RIB at 30-36; RRB at
15-16. But for the same reasons discussed above, Dr. Rockstraw has reliably shown the IAC for
BAX 1700 in the DI Canisters is above 35 g/L, and the IAC for BAX LBE is below 35 g/L.
As to the HCA and HCA LBE-containing volumes in the DI Canisters, Respondents do not
assert, in contrast to the BAX-containing volumes, that Dr. Rockstraw failed to account for
volumetric dilution. See RIB at 31-35 (discussing possible, unaccounted for dilution only in the
identified BAX volumes); RRB at 15-16 (discussing same). Further, with respect to Respondents’
universal criticism that two samples (used by PTA for adsorption capacity) have not been shown
to be “sufficient to establish that any DI Carbon will, in all instances, meet the IAC values specified
in the claims, or why any of these samples are representative of any non-tested sample of DI
Carbon” (RIB at 35), although this would apply to HCA and HCA LBE, there is no contradicting

129
evidence. Similarly, Respondents’ complaint that the IAC values reported in the 844 patent cannot
be trusted to reflect the IAC of either HCA or HCA LBE as it exists today (RIB at 35-36 (citing
RX-0381C at Q/A 504-505)) is again of little import because Dr. Rockstraw does not rely solely
on these values; he also relies (if not primarily) on the testing data obtained from PTA. CX-0909C
at Q/A 2036-2037.
Accordingly, Dr. Rockstraw has reliably shown the IACs for HCA and HCA LBE volumes
in the DI Canisters are below 35 g/L.
As to Respondents’ “Other Failures of Proof,” Respondents first argue:
In order to practice the method claims (i.e., claims 1, 18, and their dependent
claims), all method steps must be performed in the U.S. NTP, Inc. v.
Research In Motion, Ltd., 418 F.3d 1282, 1318 (Fed. Cir. 2005). However,
several DI Canisters have markings and documentation associated with
foreign design, manufacturing, and/or sale. (RX-0381C, Q/A 522, 527.)
Similarly, multiple DI Canisters appear to contain BAX made by Ingevity
in China. (Id., Q/A 527.) Ingevity does not perform the steps of the claimed
methods, they are left to Ingevity’s end customers, if they are performed at
all. (Id., Q/A 528.) But Ingevity and Dr. Rockstraw have no evidence where
or how the DI Canisters are used, or that Ingevity even induces or
contributes to its end customers’ direct infringement. (Id., Q/A 529-531;
JX-0252C at 378:15-379:1, 388:2-6, 464:20-465:3.) Thus, Ingevity did not
prove technical prong for any of the method claims.
RIB at 36-37.
From the cited expert testimony, it appears that the complaint over foreign “markings and
documentation” applies only to certain canisters from Leehan and Kayser. See RX-0381C at Q/A
52-527. Ingevity does not dispute that these canisters would not practice claim 1 (or claim 18, as
discussed below) or those dependent therefrom, because they would only be practiced outside the
United States, but argues this only affects claims 1 and 18. See CRB at 19-20. These claims are
contrasted with apparatus claim 43, which would not be affected because, as alleged by Ingevity
and not contested by Respondents, “Leehan’s and Kayser’s subpoena responses specify that all
these canisters are manufactured in the U.S. . . . .” 	CRB at 20 (citing CX-0676C at *12; CX-

130
0326C). 	Nevertheless, Respondents are correct that Leehan model numbers 31400-D5600 and
31400-M7600 (RX-0381C at Q/A 522) have not been shown to have been used with the method
of claim 1 within the United States—i.e., they are not “protected” by claim 1 under 19 U.S.C. §
1337. “A method claim is directly infringed when someone practices every step of the patented
method.” Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1219 (Fed. Cir. 2014) (citing DSU
Med. Corp. v. JMS Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006)). This is reflected in the summary
table above.
The Kayser models are more difficult to evaluate because Mr. Lyons does not identify them
by model number. See RX-0381C at Q/A 527. But he references Dr. Rockstraw’s testimony at
Q/A 2116 (see RX-0381C at Q/A 526), and that testimony includes images of lists of Kayser
models with the “POAI-Korea” “GMCCA” and “GM Korea” descriptors. CX-0909C at Q/A 2116.
Thus, with no opposition from Ingevity on this issue, models corresponding to these three
descriptors (Kayser Model Nos. 42698919, 42702737, 84493688, 84359221, 84316430, and
84413230) have not been shown to be “protected” by claim 1. 	If other Kayser models are
unprotected, Respondents have not adequately specified them.
As to Respondents’ mention of BAX made by Ingevity in China, Ingevity explains this
refers to BAX 1100LD. 	CRB at 20. 	This foreign source is immaterial to the technical prong
because canisters containing this adsorbent are still manufactured within the United States.
Further, and as explored below, Ingevity rightly does not count this foreign investment in BAX
1100LD in its economic prong calculus.
Lastly, as mentioned above, Respondents complain that “Dr. Rockstraw’s table correlating
DI Products with the claims they allegedly practice (CX-0909C, Table 9) does not match his claim-
by-claim analysis (CX-0909C, Q/A 2131-3205)” for a handful of DI Canisters. RIB at 37 (listing

131
bulleted examples). Three of Respondents’ examples have been addressed above (Leehan 31400-
S9000; Leehan 31400-D5600; Leehan 31400-M7600). 	Additionally, the Table 9 Respondents
speak of has been disregarded in its entirety for the reasons discussed above. What remains is an
observed lack of claim-by-claim analysis for: the Futaba 17300TLC A022M1, the Leehan 31400-
H9600; the Leehan VW Atlas 3QF201797A; and eleven of twelve canister models from Stant. In
response, and as excerpted above, Dr. Rockstraw contends these uninspected models nonetheless
practice the 844 patent independent claims because each “has one or more high IAC adsorbent
volumes (i.e., BAX 1500, 1100, or 1100LD) and one or more low IAC adsorbent volumes (i.e.,
BAX LBE, HCA, or HCA LBE).” CX-0909C at Q/A 2071.
The evidence shows that if a canister includes an initial adsorbent of BAX 1500, 1100, or
1100LD, and a subsequent adsorbent of BAX LBE, HCA, or HCA LBE, it will satisfy the
independent claims’ IAC limitations. 	As the evidence provided by Futaba, Leehan, and Stant
identifying the content of the adsorbent volumes of their canisters (CX-0909C at Q/A 2050-2054)
stands uncontroverted (see RIB at 37), these canisters meet the limitations of claim 1. 	This is
limited, however, to the independent claims, as suggested by Dr. Rockstraw (CX-0909C at Q/A
2071), such that these models are not determined to practice any dependent claims. 	This is
reflected in the summary table above.
ii. 	Claim 18
The full text of method claim 18 of the 844 patent is reproduced above in the discussion of
infringement. The parties largely treat claim 18 the same as claim 1. Ingevity acknowledges claim
18 includes additional language reciting, generally, a step of removing a volatile organic
compound from fuel vapor (CIB at 39), but claims this is nonetheless met as “the DI Canisters
have multiple volumes of activated carbon that function to adsorb hydrocarbons, volatile organic
compounds, from fuel and air vapor mixtures emitted from fuel tanks of vehicles in which the

132
canisters are installed” (id. (citing CX-0909C at Q/A 27, 245, 349; RX-0380C at Q/A 97-99)).
Respondents do not dispute this. See generally RIB; RRB.
Although claim 18’s use of “subsequent adsorbent material-containing volume” renders
this claim indefinite, if that term is not found indefinite and given the same scope as similar
language in claim 1, then Ingevity has shown 18 is met. Accordingly, I find the use of those DI
Canisters leading to practice of claim 1 also results in the practice of claim 18.
iii. 	Claim 31
The full text of system claim 31 of the 844 patent is reproduced above in the discussion of
infringement. The parties largely treat claim 31 the same as claim 1. Ingevity acknowledges claim
31 includes additional language reciting, generally, that the subsequent adsorbent volume
comprises between 1 and 100% of the first (i.e., initial) volume and is located in one of two
positions relative to the canister (CIB at 39), but claims this is nonetheless met as in “each DI
Canister, all volumes of adsorbent material are located inside the same canister” with reference to
its discussion of claims 4, 5, and 19 (see id.). Respondents do not dispute this. See generally RIB;
RRB.
Ingevity also acknowledges claim 31, distinct from claim 1, “include[s] claim elements
related to parts of an automobile as well as the flow of fuel vapor and purge air through the
canister” (CIB at 39) but claims this is nonetheless met, primarily citing expert testimony (id. at
39 n.27 (citations omitted)). Respondents do not dispute this. See generally RIB; RRB.
As determined above, these additional preamble limitations are limiting, but it is more
likely than not that the placement of the DI Canisters within a fuel-consuming automobile meets
all of these additional limitations. 	Accordingly, practice of claim 31 has been shown for those
evaporative emissions control systems which include the DI Canisters whose use would practice
claim 1. This excludes (as excluded for claim 1) those Leehan and Kayser models Respondents

133
have identified as intended for foreign automobile markets. While Ingevity argues the domestic
manufacture of these canisters constitutes a practice of system claim 31 (CRB at 20), this position
can only be rooted in a non-limiting treatment of claim 31’s preamble—which, for reasons
explained above, is not the case.7
iv. 	Claim 43
The full text of apparatus claim 43 of the 844 patent is reproduced above in the discussion
of infringement. The parties largely treat claim 43 the same as claim 1. Ingevity acknowledges
claim 43 includes additional language reciting, generally, that the subsequent adsorbent volume
comprises between 1 and 100% of the first (i.e., initial) volume and is located in one of two
positions relative to the canister (CIB at 39), but claims this is nonetheless met as in “each DI
Canister, all volumes of adsorbent material are located inside the same canister” with reference to
its discussion of claims 4, 5, and 19 (see id.). Respondents do not dispute this. See generally RIB;
RRB.
Ingevity also acknowledges claim 43, distinct from claim 1, “include[s] claim elements
related to parts of an automobile as well as the flow of fuel vapor and purge air through the
canister” (CIB at 39), but claims this is nonetheless met, primarily citing expert testimony (id. at
39 n.27 (citations omitted)). Respondents do not dispute this. See generally RIB; RRB.
As determined above, these additional preamble limitations are limiting, but it is more
likely than not that the placement of the DI Canisters within a fuel-consuming automobile meets
all of these additional limitations. 	Accordingly, practice of claim 43 has been shown for those
evaporative emissions control systems which include the DI Canisters whose use would practice
7 	Specifically, if the fuel vapor canister is shipped out of the United States after manufacture,
then it is likely combined into the automobile’s evaporative emissions control system, as required
for claim 31, outside of the United States.

claim 1—additionally including those Leehan and Kayser models excluded from practice of claim
1 due to their foreign automobile market destination. As discussed above, this foreign distribution
does not impact their domestic origin, which satisfies apparatus claim 43.

F. Validity and Enforceability

Respondents’ post-hearing briefings identify the following invalidity and unenforceability

theories against the following claims of the 844 patent:

Claims Theory

1-5, 8, 11-14, 16, 18, 19, 21, 24-27, | Anticipated under 35 U.S.C. § 102(g)(2) by the Delphi
Prior Invention or rendered obvious under 35 U.S.C. §
29, 31, 33, 36, 37, 38, 39, 41, 43, 45, | 103 by the Delphi Prior Invention in view of Meiller
(RX-0004) and/or Tennison (RX-0208)

48-51 and 53

1-5, 8, 11-14, 16, 18, 19, 21, 24-27, | Anticipated under 35 U.S.C. § 102(a) by the Williams
Publication (RX-0067) or rendered obvious under 35
29, 31, 33, 36, 37, 38, 39, 41, 43, 45, | U.S.C. § 103 by the Williams Publication (RX-0067) in
view of Park (RX-0209) and/or Tennison (RX-0208)
48-51 and 53 and/or McCue (RX-088) and/or Meiller (RX-0004)

1-5, 8, 11-14, 16, 18, 19, 21, 24-27, | Rendered obvious under 35 U.S.C. § 103 by Meiller
(RX-0004) and/or Park (RX-0209) and/or Tennison
29, 31, 33, 36, 37, 38, 39, 41, 43, 45, | (RX-0208)

48-51 and 53

1, 2, 3, 4, 5, 7, 8, 11, 12, 13, 14, 15, | Indefinite under 35 U.S.C. § 112, 92
16, 18, 19, 20, 21, 24, 25, 26, 27, 28,
29, 31, 33, 36, 37, 38, 39, 40, 41, 43,

45, 48, 49, 50, 51, 52, 53

1, 2, 3, 4, 5, 7, 8, 11, 12, 13, 14, 15, | Lack of enablement under 35 U.S.C. § 112, 4 1

16, 18, 19, 20, 21, 24, 25, 26, 27, 28,

134

135
29, 31, 33, 36, 37, 38, 39, 40, 41, 43,
45, 48, 49, 50, 51, 52, 53
1, 2, 3, 4, 5, 7, 8, 11, 12, 13, 14, 15,
16, 18, 19, 20, 21, 24, 25, 26, 27, 28,
29, 31, 33, 36, 37, 38, 39, 40, 41, 43,
45, 48, 49, 50, 51, 52, 53
Lack of written description 35 U.S.C. § 112, ¶ 1
1, 2, 3, 4, 5, 7, 8, 11, 12, 13, 14, 15,
16, 18, 19, 20, 21, 24, 25, 26, 27, 28,
29, 31, 33, 36, 37, 38, 39, 40, 41, 43,
45, 48, 49, 50, 51, 52, 53
Invalid and/or unenforceable based upon improper
inventorship
All claims 	Unenforceable due to patent misuse
All claims 	Infringement barred due to patent exhaustion
See generally RIB at 38-98.
Before reaching the specifics of Respondents’ challenges, a few preliminary points should
be made. First, it is acknowledged that patent exhaustion is not technically a ground of invalidity
or unenforceability, but it is discussed in this larger section out of convenience. 	Further, as is
evident, Respondents’ indefiniteness theory has already been discussed in the context of claim
construction, above. I also observe Respondents describing the invalidity theory surrounding the
Meiller reference as based in obviousness (RIB at 59) but also anticipation and/or obviousness (id.
at 60). I do not see an anticipation theory in their expert’s testimony, however. RX-0380C at Q/A
544-632. Lastly, to the extent Respondents challenge the validity of claims 15, 28, 40, and 52 of
the 844 patent, I decline to make that determination as these claims are not asserted under

infringement nor technical prong domestic industry. To do otherwise would amount to an
improper advisory opinion.
1. Delphi Prior Invention

Respondents’ first prior art-based invalidity theory surrounds a device referred to as the

“Delphi Epsilon Canister System” (hereafter, “DECS”) created by engineers at non-party Delphi,

Po RIB at 59-60. Respondents set the dates for reduction to practice
of this device as between and (id. at 61), where P|

at 61-63 (citing, inter alia, RX-0896C; RX-0902C; Hr’g Tr. at 116:22-118:8, 153:13-154:21,
155:2-9, 155:24-156:12, 736:17-21; JX-0239C at 60:9-13, 67:14-68:4, 74:20-76:5, 258:2-18; RX-
0034C)).

The auxiliary canister of the DECS is shown below, produced at the deposition of a Delphi

witness, Dr. LaBine, along with the honeycombs removed therefrom:

136

137

RX-0389 at *1; RX-0903 at *3, 5; see JX-0239C at 86:5-97:24. Respondents describe the DECS

n

218 at 61 (citing IX-0239C at 75:6-76:5, 258:2-18). Importantly, the auxiliary
canister shown has a tag which indicates the honeycombs inside are sample number 445-S-99.

Respondents observe this sample number

RIB at 61; RX-0902C at *1.

Additionally,

RX-0902C at *1. Respondents argue the po referred to here were po

RIB at 61

(iting RX-0896C at *1). Thos I

138

RX-0896C at *1-2. As shown, one of the listed properties is a Po

Po It is a reasonable inference that the BWC of the honeycombs
contained in the DECS would also have been 3.7 g/dL. Respondents then argue that a BWC of
3.7 g/dL necessarily correlates to an IAC of under 35 g/L. RIB at 66-67 (citing Hr’g Tr. at 116:22-
117:21, 673:3-13; JX-0239C at 187:17-188:6; RX-0380C at Q/A 447-477). For the reasons
explained below, the evidence supports this determination.

Taken altogether, Respondents contend the DECS qualifies as prior art to the 844 patent
under 35 U.S.C. § 102(g)(2), and anticipates at least claim 1, because “the Delphi Inventors built

the canister described above and shown in the Record of Invention and attached it to a conventional

carbon canister with an initial volume of 11 or 15 BWC base carbon (BAX 1100 or 1500)” and

139

140
tested it for bleed emissions. See RIB at 65. Respondents add that the Delphi inventors determined
(i.e., appreciated) that they had constructed a canister system that
and “did not abandon, suppress, or conceal
their invention; in fact, they filed a patent application (issuing as Meiller) and worked with
to commercialize the invention.” 	Id. at 65-66 (referring, inter alia, to RX-0034C).
Assuming these assertions as true, Respondents have clearly and convincingly shown anticipation
of claim 1.
Ingevity resists this determination on a number of grounds, none of which are persuasive.
First, Ingevity argues the DECS is not prior art under section 102(g)(2) because it was not “made.”
CIB at 75. Specifically, Ingevity argues “a purported prior inventor can neither conceive of nor
reduce to practice a claimed invention for the purposes of Section 102(g)(2) unless he or she
appreciated the subject matter recited in the claims.” 	Id. (citing, inter alia, Invitrogen Corp. v.
Clontech Labs, Inc., 429 F.3d 1052, 1063-64 (Fed. Cir. 2005)). 	Ingevity argues, through the
characterization of Respondents’ expert, that the invention of the 844 patent is “‘flat isotherms and
IAC.’” Id. at 76 (citing Hr’g Tr. at 535:16-18). Yet, according to Ingevity, the
(id. at 76 (citing Hr’g Tr. at 513:6-9, 513:11-12, 513:23-514:1),
77 (citing RX-0034C at *3)), and there is “no evidence that the Delphi Employees were aware that
the material they were allegedly using had a flat isotherm” (id. (citing Hr’g Tr. at 514:11-20)).
Ingevity further argues that any alleged appreciation of the BWC of the honeycombs in the DECS
cannot constitute the requisite appreciation because “Delphi did not even understand IAC, let alone
its alleged relationship to BWC” (id. (citing Hr’g Tr. at 513:10-514:1); see id. at 77-78 (citing,
inter alia, JX-0239C at 95:13-21, 113:18-25, 116:4-6); CRB at 39-40)) and “BWC and IAC are

141
not synonymous” (CIB at 76-77 (citing CX-0909C at Q/A 58-65); see CRB at 39 (“BWC and IAC
measure different physical properties”), 45).
The record shows that the individuals associated with the DECS sufficiently appreciated
their invention under 102(g)(2). 	Ingevity analogizes between the DECS, the Delphi Inventors’
knowledge of BWC in the DECS, and the prior art at issue in Invitrogen (see CIB at 75-76; CRB
at 39-40), but the circumstances here more closely align with those in Teva Pharm. Indus., Ltd. v.
AstraZeneca Pharms. LP, 661 F.3d 1378 (Fed. Cir. 2011), cited by Respondents (RIB at 75; RRB
at 38 n.7). 	In that case, the asserted claim required a compound with, inter alia, “a stabilizing
effective amount of at least one amido-group containing polymeric compound or at least one
amino-group containing polymeric compound.” Teva, 661 F.3d at 1380. AstraZeneca’s prior art
product 	included 	such 	an 	“amido-group 	containing 	polymeric 	compound” 	even 	though
AstraZeneca “did not understand [it] to have a stabilizing effect” as required by the claim. Id. at
1381. In its analysis, the court discussed Invitrogen, alongside other cases also cited by the present
parties, and held:
Dow, Mycogen Plant Science, and Invitrogen are consistent applications of
the same rule. To establish prior invention, the party asserting it must prove
that it appreciated what it had made. The prior inventor does not need to
know everything about how or why its invention worked. Nor must it
conceive of its invention using the same words as the patentee would later
use to claim it. In this light, it is apparent that the district court correctly
entered summary judgment.
Teva's entire argument turns on the phrase “stabilizing effective amount.”
As stated in Invitrogen, this court must resolve questions of priority “using
a properly defined invention.” 429 F.3d at 1062. There is no question that
AstraZeneca appreciated that AstraZeneca's drug contained an “amount” of
crospovidone. 	And because 	of 	AstraZeneca's 	limited 	concession 	of
infringement, there is no question that the amount of crospovidone
AstraZeneca's drug contained falls within the scope of the asserted claims
as defined by the limitation “stabilizing effective amount.”
AstraZeneca had to appreciate that the compound it asserted as its invention
was stable and what the components of this formulation were. There is no

question that AstraZeneca had this appreciation. However, AstraZeneca did
not need to appreciate which component was responsible for the
stabilization. Teva effectively asks this court to fault AstraZeneca for not
first conceiving of its drug in the same words in which Teva later chose to
claim it. This case therefore falls squarely within the holdings
of Dow and Silvestri. Because “[t]he invention is not the language of the
[claim] but the subject matter thereby defined,” Teva's argument must
fail. Dow, 267 F.3d at 1341 (quoting Si/vestri, 496 F.2d at 599).

Teva, 661 F.3d at 1384-85. Directly applicable here is the holding “AstraZeneca had to appreciate
that the compound it asserted as its invention was stable and what the components of this
formulation were. There is no question that AstraZeneca had this appreciation. However,
AstraZeneca did not need to appreciate which component was responsible for the stabilization.”
In the case of the DECS, Ingevity relies heavily on the idea that the Delphi Inventors “were
unaware of, and indeed agnostic to, the BWC of the honeycombs” as demonstrated by their
Po and the deposition of Dr. LaBine (JX-0239C). See CIB at 77; CRB at
39-40. Yet Teva shows that the Delphi Inventors need not be aware of the property of the

honeycombs if they appreciate the benefit the honeycombs contributed to the DECS. The evidence

shows they did. Specifically, in an answer to a question on competitive benefits, their

P| states:

RX-0034C at *4. Dr. LaBine was asked at deposition about the meaning of this answer. JX-

0239C at 71:6-22. She testified:

142

Id. At another point in the deposition, she repeated her team’s PO

similar to the benefit the 844 patent discloses is contributed by a subsequent adsorbent with a flat
isotherm. The 844 patent states:

One common feature for all of these approaches is to have a vent-side
adsorbent with a relatively flat-shaped isotherm. This isotherm shape is
important for reasons related to purge efficiency across the adsorbent bed
depth. For an adsorbent with a flat adsorption isotherm, the concentration
of hydrocarbon vapor in equilibrium with adsorbed hydrocarbon, by
definition, decreases further as the adsorbed hydrocarbon is removed
compared with an adsorbent with a more steeply sloped isotherm. Thus,
when such a material is employed as an adsorbent volume on the vent-side
region of a canister, purge is able to reduce the vapor concentration in the
area of the purge inlet to a very low level. Since it is the vapor near the
purge inlet that eventually emerges as bleed, decreasing this concentration
reduces the bleed emission level. The degree of removal of adsorbed
hydrocarbon during purge is determined by the difference between the
concentration of hydrocarbon picked up in the purge gas and the
concentration in equilibrium with the adsorbent at any point in the bed.
Thus, adsorbent in the immediate vicinity of the purge inlet will be most
thoroughly regenerated. At points deeper in the adsorbent bed, less
hydrocarbon will be removed because the purge gas will already contain
hydrocarbon removed from previous points in the bed. An adsorbent with a
flatter adsorption isotherm will give up less vapor into the purge stream and
this purge will then be more efficient in reducing vapor concentrations
deeper into the bed. Therefore, for a given quantity of purge gas, it will be
possible to reduce the vapor concentration in a volume of adsorbent with a

143

flat adsorption isotherm to a lower level than the concentration in the same
volume of an adsorbent with a steep adsorption isotherm. Bleed emission
from such a volume will therefore be lower when the adsorbent has a flatter
adsorption isotherm.

844 patent at 4:31-63 (emphasis added). 844 patent inventor Dr. Hiltzik testified similarly to the
benefit of eliminating hydrocarbons in the adsorbent closest to the vent port:

Q64. Why are flat isotherms, on a volumetric basis, critical to bleed
emissions controls?

A64. As we explain in the ’844 Patent, adsorbents with flat or flattened
isotherms on a volumetric basis can be more thoroughly purged than
isotherms with a steep isotherm, especially to a lower equilibrium vapor
pressure towards the atmosphere vent port of the canister system. This is
because pairing a flat isotherm adsorbent volume and a steep isotherm
adsorbent volume as the bulk adsorbent can reduce the bulk phase diffusion
between the two adsorbent volumes following a purge cycle.

CX-1147C at Q/A 64 (emphasis added). The benefit is also shown in Dr. Hiltzik’s laboratory

pte,

144

JX-0005C at *130: see JTX-0005C at 1?) Ei

Thus, there is clear, convincing, and consistent evidence that the Delphi Inventors not only

appreciated the benefit from introduction of an auxiliary honeycomb to a fuel vapor canister, but
appreciated the same benefit as the 844 patent inventors. This fits squarely with AstraZeneca in
Teva, who appreciated its prior art drug was stable and contained some amount of the claimed
“amido-group containing polymeric compound,” even though it did not appreciate that it was that
compound which led to the stability in satisfaction of the patented claims. 661 F.3d at 1385. Here,
the Delphi Inventors certainly appreciated the bleed emissions benefit a honeycomb in a
subsequent, auxiliary position gave the DECS, even if they did not appreciate which property of
the honeycomb to credit. In contrast, the prior art inventor in Jnvitrogen was unable to show
appreciation of the beneficial effect its mutated enzyme possessed, as required by that patent’s
claims (a lack of RNase H activity). 429 F.3d at 1058-59. Thus, the requisite appreciation is met

under section 102(g)(2).

146
Ingevity also contends the DECS was not “by another inventor” in accordance with 35
U.S.C. § 102(g)(2). 	CIB at 78. 	Ingevity views the 	as deficient
corroborating evidence “because it 	Id.
(citing JX-0239C at 6:2-12). 	Ingevity continues,
and
suggests that this is because
See id. at 79-80 (citing, inter alia, Hr’g Tr. at 511:11-13; RX-0034C; CX-1148C at Q/A 66; JX-
0239C at 35:6-13, 55:12-57:10, 67:24-68:4); CRB at 40-41.
This argument requires Westvaco personnel to have conceived the invention first, before
and then to have communicated it to the Delphi Inventors.
But Ingevity concedes that 	See CX-
0604C at *69; CRB at 49. 	Nevertheless, it is possible, given the above determination that
recognition of IACs of the adsorbents is not necessary to appreciate when the invention had been
accomplished, that “conception” by Ingevity occurred prior to 	Ingevity has not,
however, provided any evidence that it appreciated the benefit that an auxiliary honeycomb would
provide beyond mere supposition. 	Indeed, Ingevity
suggesting that Ingevity had not appreciated the benefit of an auxiliary honeycomb. See CIB at
73 (citing CX-1148C at Q/A 29; CX-1146C at Q/A 29); RIB at 64
(citing Hr’g Tr. at 153:3-20; 727:14-24; 740:4-25, 734:28-20 [sic], 739:9-14).
According to Ingevity’s account,

2 7:
(iting 15-0180 ot * 12
here is 20 evidence ta

a had any more of the requisite appreciation under section 102(g)(2) than Ingevity.
To the extent Ingevity contends its position on deficient corroboration stands on its own

from its theory that Westvaco had earlier conceived of an auxiliary honeycomb (see CRB at 43-
44), that is not persuasive. Delphi’s Po (RX-0034) was written and signed by

hi TT thus, it serves as contemporaneous corroboration for the
otherwise oral testimony from Dr. LaBine tha This document
is no different, or at least no less reliable, than the notebook of Dr. Hiltzik (TX-0005C), on which
Ingevity relies to show mm itstsi—siSY (see CX-0604C at *109).

Accordingly, clear and convincing evidence supports conception of the 844 patent
invention, “by another inventor,” under 35 U.S.C. § 102(g)(2).

Ingevity further challenges whether the honeycombs present in the DECS had an IAC

below 35 g/L, on two grounds. First, Ingevity argues the language, “as the previous parts you

sted” in I ss 101 in reference 10 th Il
Po based on the testimony of Mr. Miller. CIB at 78

(citing, inter alia, CX-1146C at Q/A 52-54); CRB at 39-40 (citing, infer alia, CX-1146C at 41-
54). Mr. Miller testified:

52.

A52. No. I don’t think that would be a correct conclusion.

147

Q53. Why is that?

Ga in,

AS4.

CX-1146C at Q/A 52-54; CX-1146C at Q/A 2 (“Q2. Who is your current employer? A2.

Ingevity.”). But he iii does not claim that hii
says that the two honeycomb sets have the same “carbon, formulation, and cell density.” Jd. And
at that time Westvaco was Po its low-BWC honeycombs, at least to P|
| | E.g., TX-0180C at *12. So even assuming that he iT were a

different product, there is good reason to think that, like every other Ingevity/Westvaco
honeycomb described in the record, they had an IAC below 35 g/L and a BWC below 8 g/dL.
Certainly their operation resulted i i _ as Dr. LaBine
testified, which demonstrates that they were low capacity. JX-0239C at 71:21-22.

Next, Ingevity views Respondents’ section 102(g)(2) theory as dependent on treating IAC
and BWC as “different measures for the same thing” (CRB at 45 (citing RIB at 67)), and thus
meritless because “BWC and IAC measure different physical properties” (id. (citing CX-0909C at
Q/A 58-65); see CIB at 80 (citing CX-1143C at Q/A 303-316)). Respondents’ use of a rough
correlation between a BWC of 8 g/dL and IAC of 35 g/L is thoroughly supported by the record,

however.

148

149
First, at a basic engineering level, the units for the two measures are the same. BWC is
expressed as grams of adsorbate per deciliter of adsorbent volume, which is explained in both the
844 patent (844 patent at 2:1-12) and the ASTM D5228-92 standard (JX-0009 at *3). As shown,
for example, by Ingevity’s presentation of infringement, IAC is also expressed as grams of
adsorbate per liter of adsorbent volume. CIB at 16; CX-0909C at Q/A 99; see 844 patent at cl. 1.
And the calculations to arrive at the two measures are nearly the same. 	BWC is the
multiplicative product of three values: (1) apparent density; (2) activity level (grams of adsorbate
per grams of adsorbent); and (3) butane ratio. 844 patent at 2:1-12; JX-0009 at *3. IAC comes
from the same multiplication of (1) apparent density and (2) activity level (grams of adsorbate per
grams of adsorbent), but without BWC’s unit-less “butane ratio” of ASTM D5228-92. See CIB at
19; CX-0909C at Q/A 145 (Table 7). 	Indeed, Dr. Rockstraw admits that BWC measurement
begins with the same isotherm as IAC—the only difference being it is taken at 100% vapor
concentration instead of 5% and 50%. CX-0909C at Q/A 60; see CX-0909C at Q/A 58-65.
That “BWC and IAC measure different physical properties” is both hypertechnical and
beside the point. CRB at 45. It is the same property measured—adsorption capacity expressed as
grams of adsorbate per grams of adsorbent, at a given temperature and vapor concentration (i.e.,
pressure). 	IAC takes two such measurements and subtracts them. 	BWC takes one level and
multiplies it by a unit-less (and always some fraction of one) “butane ratio.” These are the only
real differences between the two metrics. 	CX-0909C at Q/A 60 (“IAC is not dependent on
purgeability”). 	If IAC is “non-standard,” it is a non-standard mathematical operation on an
otherwise standard measurement.
This correlation between BWC and IAC finds further support throughout the record,
including in Ingevity’s representations on the 844 patent invention. 	Dr. Hiltzik’s laboratory

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notebook, which Ingevity relies on for conception (CX-0604C at *108-110) describes a successful
embodiment of the invention as a “‘6 BWC’ on the vent side,” “provid[ing] better purge inside the
bed and lowers equilibrium vapor pressures across the bed depth” (JX-0005C at *132; see CX-
0604C at *110). 	In the prosecution of U.S. Patent No. 6,540,815 (which reissued as the 844
patent), the applicants described the invention in comparison to prior art at times as simply having
“high adsorption capacity” material as the initial volume and the same carbon “but distributed in
space” as the subsequent:

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CX-1061 at *104-105. Notably, BWC, like IAC, is expressed on a volumetric basis (g/dL) (see,
e.g., 844 patent at 2:1-12), and there is no mention of incremental capacity, capacity difference, or
flat isotherm.
Consistent with these representations, when Ingevity later sought reissue, it explained to
the USPTO: (1) that the present invention differed from the prior art because it included “a lower
activity carbon adsorbent in the canister in an after-position (in relation to vapor flow through the
canister) to the higher activity carbon adsorbent therein” (CX-1060 at *88); (2) the problem is
“diurnal breathing emissions,” which are solved with a “combination of high working capacity
carbons on the fuel-source side and preferred lower working capacity adsorbent on the vent-side”
(id. at *94); and (3) prior art from co-inventor Dr. Tolles was distinguishable because it did “not
even suggest [high BWC carbons] in an auto canister in conjunction with an activated carbon of
reduced activation” (id. at *97). Again, in none of these descriptions is a mention of incremental
capacity, capacity difference, or flat isotherm—just higher or lower working capacity or “reduced
activation.”
The strongest evidence supporting a rough correlation between 8 g/dL BWC and 35 g/L
IAC is, of course, the actual correlation table created by co-inventor Dr. Hiltzik and presented to
the EPO. See RX-0380C at Q/A 448-452 (citing RDX-0001C.29); RX-0314. As shown below,
with the exception of one outlier, nearly every carbon tested fell along a linear fit, with an
intersection between ~8 g/dL BWC and 35 g/L IAC:

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RX-0314 at *1; RX-0084 at *1; RX-0133C at *20. Dr. Rockstraw’s opinion that the one outlier
makes all the difference (CX-0909C at Q/A 63-65) to discount the entire table is not persuasive in
light of this R2 =0.99 linear fit. 	Moreover, Respondents provide a bevy of additional evidence
regarding Ingevity’s own reliance on the correlation (see RIB at 24 (citing, inter alia, RX-0133C
at *3
RX-0156C at *1
RX-0164C at *3), to which Ingevity has
effectively no response (see CIB at 80-81 (citing CX-1143C at Q/A 303-316); CRB at 15-16, 45-
46; see, e.g., CX-0913C at Q/A 149 (“I have seen an analysis performed by Ingevity that attempts
to shows [sic] a correlation, but in my mind . . . .”)).
With that rough correlation between 8 g/dL BWC and 35 g/L IAC in place, it is clear a
honeycomb with a BWC of 3.7 g/dL would have an IAC of above 35 g/L. This is not nearly as

153
close a question as, for example, the IAC of MPAC and its “8.20 +0.40/-0.20” target BWC (JX-
0029C at *2).
Mr. Lyons testifies as to why the remaining limitation of claim 1 (“[a] method . . .
comprising the steps of contacting the fuel vapor with . . . . “) is met by the DECS. RX-0380C at
Q/A 362-365. Dr. Rockstraw’s opposition here is limited to uncertainty as to whether such “rig”
testing occurred (CX-1143C at Q/A 258-260), but 	and Dr. LaBine’s
deposition testimony provide convincing evidence
(RX-0034C at *4 (referencing 	and
see JX-0239C at 71:6-77:1). Accordingly, Respondents have established anticipation
of claim 1 of the 844 patent by the DECS under section 102(g)(2).
As to claims 2-5, 8, 11-14, 16, 18, 19, 21, 24-27, 29, 31, 33, 36, 37, 38, 39, 41, 43, 45, 48-
51, and 53, Ingevity does not dispute the substance of Mr. Lyons’s obviousness rationales (see
CIB at 73-81; CRB at 36-46; CX-1143C at Q/A 219-326), but only argues that Order No. 35
precludes the DECS from invalidating claims 7, 13, 38, and 50 (see CIB at 73 n. 45; CRB at 45).
The point is well taken, inasmuch as Order No. 35 did preclude Mr. Lyons from offering an opinion
on the DECS invalidating claim 13. Order No. 35 at 2. Considering that Mr. Lyons’s discussions
of claims 38 and 50 depend directly on the stricken testimony of claim 13 (RX-0380C at Q/A 532,
540), those opinions are unsupported. 	Nonetheless, Respondents are correct that there is no
requirement for expert testimony when the evidence speaks for itself. See, e.g., Meyer Intellectual
Props. Ltd. v. Bodum, Inc., 690 F.3d 1354, 1374 (Fed. Cir. 2012) (citations omitted). Claims 13,
38, and 50 are all directed to volumetric dilution accomplished by forming the adsorbent into, for
example, a “hollow cylinder.” 844 patent at cls. 13, 38, 50. Based on the photographs presented

154
above, it is clear that the honeycombs contained inside the DECS are hollow cylinders, thus
meeting the limitations of these claims.
Accordingly, given the lack of dispute from Ingevity or its expert, I find Respondents have
established anticipation under section 102(g)(2) and prima facie obviousness under section 103,
as credibly testified to by Mr. Lyons (RX-0380C at Q/A 485-543) and argued in their briefing
(RIB at 67-68) for claims 2-5, 8, 11-14, 16, 18, 19, 21, 24-27, 29, 31, 33, 36, 37, 38, 39, 41, 43,
45, 48-51, and 53.
2. 	Williams
Respondents contend “claims 1-5, 8, 11-14, 16, 18-19, 21, 24-27, 29, 31, 33, 36-39, 41, 43,
45, 48-51 and 53 [of the 844 patent] are anticipated or rendered obvious for the reasons in Mr.
Lyons’ unrebutted claim-by-claim analysis” with respect to an article published in March 2001,
“months before Ingevity’s alleged August 2001 conception date.” See RIB at 80-81 (citing RX-
0380C at Q/A 633-688). Respondents claim the article, RX-0067, “is prior art to the ’844 patent
since it is a printed publication in the U.S. before Ingevity’s alleged August 2001 conception.” Id.
at 80. The authors of the article are Mr. Williams, co-inventor on the 844 patent, and non-inventor
C. Reid Clontz. 	RX-0067 (hereinafter “Williams Publication”). 	Respondents incorporate their
expert’s testimony to explain how the Williams Publication discloses or renders obvious the
limitations of the claims.
Ingevity argues “Respondents failed to meet their burden to establish that the Williams
Publication is prior art.” CIB at 81. Specifically, Ingevity argues the reference does not qualify
under pre-AIA section 102(b) because it was published less than one year to the ’844 patent’s
priority date, and not under sections 102(a) or 102(g) because it is not “by others” or “by another
inventor.” Id. Respondents do not dispute the first point, and I agree with the second.

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Respondents bear the burden of showing the Williams Publication is prior art (Allergan,
Inc. v. Apotex, Inc., 754 F.3d 952, 967 (Fed. Cir. 2014)) but they have not met that burden. Ingevity
provided notice in its pre-hearing brief that if Respondents pursued section 102(a) for the Williams
Publication, it would be challenged as not “by others” under the statute. CPB at 299. Respondents
did not present any argument on this in their pre-hearing brief. RPB at 40, 247-283. Respondents
have thus waived any argument that the Williams Publication is “by others” under section 102(a)
per Ground Rule 9.2, and they cannot meet their clear and convincing burden. Order No. 2 at G.R.
9.2; Certain Robotic Vacuum Cleaning Devices and Components Thereof Such as Spare Parts,
Inv. No. 337-TA-1057, Comm’n Op. at 51-52 (Feb. 1, 2019). Even if not waived, their burden is
not met. Respondents present no evidence to contradict Mr. Williams’ testimony that he was the
author of the innovative aspects of the Williams Publication as opposed to Mr. Clontz. CX-1145C
at Q/A 69-99. Indeed Respondents do not offer to contradict any fact asserted by Mr. Williams in
the discussion of the issue. See RRB at 43-44. Rather, they attempt to cast doubt on his credibility.
See id. This is not persuasive and it, alone, would not otherwise meet their clear and convincing
burden. Accordingly, Respondents have not shown the Williams Publication to be prior art to the
844 patent, and it cannot therefore invalidate under 35 U.S.C. § 102 or 103.
3. 	Meiller
Respondents contend “claims 1-5, 8, 11-14, 16, 18-19, 21, 24-27, 29, 31, 33, 36-39, 41, 43,
45, 48-51 and 53 [of the 844 patent] are anticipated or rendered obvious” “in view of the Meiller
and/or Park References.” RIB at 82, 81. Respondents’ overall theory is that “a PHOSITA would
combine the fuel vapor canister described in Meiller with the method of making honeycombs
described in Park; select any Formulations A-D (most likely B or D), use any of the five
commercially available automotive grade carbons sold by Ingevity at the time, and invariably
obtain a honeycomb with IAC below 35 g/L.” RRB at 47; see RIB at 82 (citing RX-0380C at Q/A

156
544-632). Respondents characterize the combination of Meiller and Park as an “obvious to try”
theory and involving the premise that “activated carbon honeycombs inherently have IAC below
35 g/L.” RRB at 47. As to this inherency, Respondents observe “[t]hough there are many tunable
features of a honeycomb, Ingevity failed to present any evidence that its experimentation ever
resulted in a honeycomb with a BWC above 8 g/dL or an IAC above 35 g/L.” Id. at 50. As noted
above, only obviousness is at issue because anticipation was not supported in Respondents’ expert
testimony.
Nevertheless, clear and convincing evidence supports Respondents’ combination of
Meiller, Park, and an additional reference describing adsorbents commercially available at the
time. Meiller, as a primary reference, discloses most of the 844 patent’s invention. Respondents’
expert, Mr. Lyons, shows that Meiller discloses a fuel vapor canister system consisting of initial
and subsequent adsorbent volumes of adsorbent—where the subsequent volume is a monolith
honeycomb. 	RX-0380C at Q/A 548-552, 554; see RX-0004 at Figs. 4, 10, 1:61-2:5, 4:36-5:47.
This is shown below:
RX-0004 at Figs. 1-4.

157
Although Meiller does not disclose the IAC or BWC of its adsorbents, Mr. Lyons
persuasively argues the initial volume obviously would have had a high IAC, over 35 g/L, as
Meiller describes this volume as “granular or pelletized carbon” and the 844 patent describes such
adsorbents as ordinary at the time. RX-0380C at Q/A 553 (citing 844 patent at 2:[1]-27, 5:[46-
55], 8:10, 8:[61-67]). 	Dr. Rockstraw does not dispute Mr. Lyons’s reasoning on the initial
adsorbent volume, focusing only on the subsequent volume IAC (CX-1143C at Q/A 327-398), and
it is therefore accepted.
And clear and convincing evidence shows the combined device would have a subsequent
adsorbent volume with an IAC of less than 35 g/L. First, Mr. Lyons persuasively explained why
a POSITA seeking to construct the device in Meiller, specifically, the honeycomb-containing
auxiliary canister, would have looked to the honeycombs disclosed in Park (RX-0209). 	While
Park is directed to monolith honeycombs used to adsorb “volatile organic compounds from
automobile engine air intake systems” (RX-0209 at Abstract), Mr. Lyons presents prior art
reference Scardino (RX-0087), which explicitly discloses to use a monolith activated carbon
element “such as that described in U.S. patent No. 5,914,294 to Park et al” (RX-0087 at 2:46-49;
RX-0380C at Q/A 317, 545) with a “base canister for evaporative emissions from the fuel tank”
(RX-0087 at 6:16-18; RX-0380C at Q/A 318). Further contributing to a motivation to combine
Meiller and Park is the fact that both Meiller and Scardino are assigned to Delphi on their faces
(RX-0004 at *1; RX-0087 at *1), and Meiller actually lists Park in its list of references cited (RX-
0004 at *1). Thus, clear and convincing evidence supports the prima facie obviousness of using
the honeycombs disclosed in Park with the fuel vapor canister system of Meiller.
As to Ingevity’s argument that a POSITA would not have looked to Park because of its
application in engine intake systems as opposed to evaporative emissions systems (see, e.g., CIB

158
at 86), the purge cycle in an evaporative emissions system is effectively an engine intake air flow
path—the purged air is fed to the engine for combustion (see, e.g., CX-0909C at Q/A 279 (“[T]he
purpose of the adsorbents in these canisters is to adsorb fuel vapors that emit from the fuel tank
that can later be purged for use in the engine. Thus, the storage of fuel vapors in the adsorbent
volume is temporary as it will later be removed and ingested in the engine.”), 288-295.
Second, Mr. Lyons persuasively explains why a honeycomb made pursuant to Park would
have low enough BWC values to be clearly below the 35 g/L IAC threshold of claim 1 of the 844
patent. 	Admittedly, Park does not disclose the types of carbon used in each of its honeycomb
Formulations A-D, or, by extension, the BWCs of those honeycombs. Rather, Park discloses the
amount of activated carbon by weight and apparent density for each formulation. 	RX-0209 at
9:30-40, Fig. 4; see RX-0380C at Q/A 569-571. Despite this omission, it cannot be disputed that
the honeycombs have BWC values, and to determine what those values would have been, Mr.
Lyons consults a prior art textbook (RX-0147) which lists “Properties of Westvaco automotive
grade activated carbons” including BAX 1100, BAX 1500, and BAX 950. RX-0380C at Q/A 572-
574 (citing RX-0147 at *31). Among the properties listed are BWC (g/dL) and apparent density
(g/mL). RX-0147 at *31. These two tables and figure from Park and RX-0147 relied upon by Mr.
Lyons are shown below:

TABLE 1
Formulation in parts by weight
Ingredient
A
B
C
D
activated carbon1
50
50
30
30
ball clay2
42
36
58
50
calcined kaolin3
8
7
12
10
nepheline syenite4
7
-
10
sodium silicate5
4.5
2.8
(solids from aqueous
solution)
methyl cellulose6
3
3
2.5
2.5
water
83
102
66
75
APPARENT DENSITY VERSUS TEMPERATURE
0.4
0.35
A
30% CARBON WITH FLUX
APPARENT DENSITY (g/ml)
0.3
+50% CARBON WITH FLUX
-A30% W/O FLUX
£ 50% W/O FLUX
0.25
0
0.2
1400
1600
1800
2000
TEMPERATURE (deg. F)
RX-0209 at 9:30-40, Fig. 4;
Table 5. Properties of Westvaco automotive grade activated carbons [19]
Grade
WV-A 900 BAX 950 WV-A 1100
BAX 1100
BAX 1500
Shape
Granular
Pelleted
Granular
Pelleted
Policted
Mesh Sizc
10×25
2mm
10×25
2mm
2mm
BET Surface Area (m2/g) 1400-1600 1300-1500
1600-1900
1400-1600
1800-2000
Butanc Working
9.0 min
9.5 min
11.0 min
11.0 min
15.0 min
Capacity (g/100ml)
Apparent Density (g/cm3) 0.2-0.32
0.3-0.4
0.2-0.32
0.3-0.4
0.27-0.35
Moisture, as Packed (%)
10 max
5 max
10 max
5 max
5 max
Particle Size (U.S.Sieve Series)
Oversize (%)
8 max
2 max
8 max
2 max
2 max
Undersize (%)
5 max
5 max
5 max
5 max
5 max
159
FIG. 4

160
RX-0147 at *31.
Mr. Lyons uses the weight percent of activated carbon and apparent density of honeycombs
provided by Park, and the BWC and apparent density values of known Westvaco carbons provided
by RX-0147, in a calculation he designed to show what the BWC would have been of a honeycomb
made out of, for example, BAX 1100, 1500, or 950. RX-0380C at Q/A 578. That equation is:
RX-0380C at Q/A 578. 	Consistent with Mr. Lyons’s description, I understand this equation to
simply swap out the apparent density of the pellet adsorbent (ADC ) with the apparent density of a
honeycomb (ADM ), with the latter being modified by the weight percent of carbon reported in Park
(gC /gM ). 	In this way, Mr. Lyons does not disturb the other two elements of the standard BWC
formula: butane activity (grams of adsorbate per grams of adsorbent) and butane ratio (unitless
ratio of adsorbate released during purge to adsorbate gained during saturation). Mr. Lyons presents
a table reflecting his calculated BWC values under this equation for Park’s Formulations B and D
(which Mr. Lyons explains would be tried first due to their improved strength). RX-0380C at Q/A
574, 578. The highest BWC reported is 5.8 g/dL (Formulation B, BAX 1500) and the lowest is
2.6 g/dL (Formulation D, BAX 950). 	Id. at Q/A 578. 	Considering the now-established rough
correlation between 8 g/dL BWC and 35 g/L IAC, each of these honeycombs would meet the
“subsequent adsorbent volume” limitation of claim 1.
As to this invalidity theory, Ingevity describes it as a “backup” to a similar Meiller/Park
theory unsuccessfully attempted before the PTAB in two inter partes reviews by non-party BASF
and respondent MAHLE. 	See CIB at 84-87 (citing, inter alia, JX-0207; CX-1150; CX-1149).
Ingevity and its expert, Dr. Rockstraw, thus dedicate much of their discussions on the perceived
strength of those PTAB decisions. 	See CIB at 84-87; CX-1143C at Q/A 327-358. 	But

161
Respondents’ explain why the Meiller/Park theory presented in this investigation differs from what
was used in those IPR proceedings (RRB at 46-47), and upon review of Ingevity’s summaries of
the IPR decisions as compared to Mr. Lyons’s present testimony, I agree.
Ingevity argues four points in opposition. First, there is no “motivation to use air intake
honeycombs in fuel vapor canisters.” CIB at 86 (citing CX-1143C at Q/A 361-369). As discussed
above, this is not persuasive, because the fuel vapor canister effectively becomes an air intake path
during purge. Second, Ingevity argues there is no “motivation to choose Formulations B and D”
from Park under an “obvious to try” approach to invalidity. Id. at 86-87 (citing, inter alia, CX-
1143C at Q/A 370-386; Hr’g Tr. at 524:3-526:8). 	I disagree. 	Dr. LaBine, an acknowledged
canister designer in the relevant time frame, testified that development of honeycombs involved
“ISO static strength [because] if these are very brittle, it becomes an assembly problem because
they shatter.” 	JX-0239C at 26:12-25. 	She also testified that in a certain monolith-containing
canister, the monolith is bounded by a foam insert “so it doesn’t shake itself to death.” JX-0239C
at 149:2-21. These design needs support Mr. Lyons’s conclusion that Formulations B and D from
Park would be obvious to try, as they are stronger than Formulations A and C. See RX-0380C at
Q/A 559, 569-571. Obviously, resistance to vibration is important in automotive applications.
Third, Ingevity disputes that a POSITA would have selected a Westvaco-supplied carbon
to create the honeycombs of Park. CIB at 87 (citing CX-1143C at Q/A 387-393). Setting aside
the apparently undisputed contention that Westvaco was, at the time and in its own words, the
“world’s leading supplier of activated carbons for automotive emissions controls” (see CX-1143C
at Q/A 393; RX-0380C at Q/A 576; RX-0050C at *6), Park is assigned to Westvaco on its face
(RX-0209 at *1). 	It surely would have been obvious for a POSITA to try a Westvaco-supplied
carbon if they sought to create the honeycombs disclosed in Westvaco’s patent (Park).

162
Fourth and finally, Ingevity and Dr. Rockstraw challenge the reliability of Mr. Lyons BWC
conversion equation. CIB at 87 (citing CX-1143C at Q/A 395-398). Dr. Rockstraw testified in
relevant part as follows:
Q396. Do you agree with Mr. Lyons’s opinion?
A396. 	No. 	Mr. Lyons has provided no support for his assertion that a
POSITA would have estimated the expected BWC using the equation that
he sets forth in his testimony. See RX-0380C at Q/A 578. For example, Mr.
Lyons does not identify the source of the formula he cites, nor does he opine
that a POSITA would have known of the formula. Nor does Mr. Lyons
describe what level of accuracy a POSITA would have expected from the
formula he provides. In addition, Mr. Lyons states that “I have used the
minimum BWCC and midpoint ADC values from Table 5 along with
weight percentages of carbon given in Table 4 and the midpoint of the ADM
from Figure 4 of Park for Formulations B and D.” RX-0380C at Q/A 578.
But Mr. Lyons has not explained why these values he used are appropriate
or pertinent to his evaluation. Accordingly, in my opinion, Mr. Lyons has
not established that the formula that he relies on would accurately calculate
BWC.
Q397. Any other reasons why you disagree with Mr. Lyons?
A387. Yes. As I explained earlier, Formulations B and D are incomplete
relating to inputs needed for creating a honeycomb. For example, they do
not identify the cell density, cell wall thickness, open frontal area, or skin
thickness. These inputs will affect adsorptive characteristics, including IAC
and BWC. Mr. Lyons’s formula does not take these factors into account.
Moreover, Mr. Lyons’s formula likewise does not account for other factors
such as the drying process and firing temperatures, which also affect
adsorptive characteristics including IAC and BWC. Thus, in my opinion,
Mr. Lyons’s “formula” is necessarily incomplete and cannot accurately
determine BWC as he asserts.
CX-1143C at Q/A 396-397. These arguments are not persuasive.
The record is clear that three elements and three elements alone contribute to a BWC
calculation: apparent density (g/dL), butane activity (grams of adsorbate per grams of adsorbent),
and butane ratio (unitless ratio of grams of adsorbate purged to grams of adsorbate taken up in
saturation). JX-0009 at *3; 844 patent at 2:1-12; see RX-0047C (calculating row “BWC, g/100ml”
from rows “Butane Activity, wt%,” “Butane Ratio,” and “Piece Density, g/ml”). 	It is logical,

163
therefore, that any manufacturing process (drying and firing temperature) or resulting structure
(cell density, cell wall thickness, open frontal area, skin thickness) which does not affect any one
of these elements, does not affect BWC. 	Dr. Rockstraw’s failure to identify how any of his
“inputs” or “factors” affect an element of BWC, apart from generalizing that they would, greatly
diminishes the weight of his opinion.
Moreover, Mr. Lyons’s calculated BWC values are consistent with honeycomb BWC
values determined by Ingevity in is normal course of business. In his testimony, Ingevity witness
Dr. Miller described RX-0047C as “a spreadsheet that shows a variety of different sample activated
carbon honeycombs that were created and tested during our development of the honeycomb for an
evaporative emissions canister.” 	CX-1146C at Q/A 82-83. 	The document shows that two
honeycombs produced with 30% by-weight BAX 1500 had BWC values of 3.8 and 3.6 g/dL, and
one honeycomb produced with 50% by-weight of WV-A 1100 had a BWC value of 4.6 g/dL. RX-
0047C; see CX-1146C at Q/A 82-83 (identifying specific carbons BAX 1500 and WV-A 1100 in
RX-0047C).
Mr. Lyons, on the other hand, calculated that a honeycomb made with BAX 1500 and
Park’s Formulation D (30% carbon by-weight), would have a BWC of 4.6 g/dL; and a honeycomb
made with WV-A 1100 and Formulation B (50% carbon by-weight) would have a BWC of 5.1.
Not only are these calculated amounts consistent with Ingevity’s own data using the same carbon-
types and concentrations, they are in fact higher, and yet still far below the approximate 8 g/dL
threshold determined above as correlating to 35 g/L IAC. Thus, for Dr. Rockstraw’s criticism to
have any merit, there must exist options for cell density, cell wall thickness, open frontal area, skin
thickness, drying process, and firing temperatures which, when used, can increase BWC by 50%
more than whichever parameters would have already been used to cause Mr. Lyons’s BWC values

164
to be higher than Ingevity’s.8 Without explanation from Dr. Rockstraw (see CX-1143C at Q/A
301-325, 395-398) or any Ingevity witness (see generally CX-1146C at Q/A 79-89; CX-1147C at
Q/A 122-135; CX-1148C at Q/A 112-122 (stating effectively same points as CX-1146C)), such
testimony is simple speculation. Indeed, Respondents note:
In 	fact, 	Dr. 	Rockstraw 	testified 	that 	despite 	reviewing 	Ingevity’s
documentation showing the IAC or BWC values of honeycombs made by
Westvaco during the time of its development work with Delphi, he does not
recall seeing any document showing honeycomb with an IAC of 35 g/L or
higher or BWC of 8 g/dL or higher, or any experimental data showing that
Ingevity produced such a honeycomb. (HT 673:20-675:2.) Instead, the
average BWC of all the honeycombs that Dr. Rockstraw has seen data for
is around 4 g/dL. (HT 675:6-15.)
RIB at 70.
Accordingly, clear and convincing evidence shows that a honeycomb with a BWC of
significantly less than 8 g/dL and, by extension, significantly less than 35 g/L IAC, would have
been obvious to use in the fuel vapor canister system of Meiller in view of Park and RX-0174.
Therefore, Respondents have established the obviousness of claim 1 of the 844 patent under
section 103.
As to claims 2-5, 8, 11-14, 16, 18, 19, 21, 24-27, 29, 31, 33, 36, 37, 38, 39, 41, 43, 45, 48-
51, and 53, Ingevity does not dispute these are invalid as alleged by Mr. Lyons. See CIB at 84-87;
CRB at 48-49; CX-1143C at Q/A 327-398. Given this lack of dispute, and the credible testimony
from Mr. Lyons (RX-0380C at Q/A 580-632), Respondents have established prima facie
obviousness under section 103 for these claims as well.
4. 	Secondary Considerations
Ingevity’s discussion of secondary considerations of non-obviousness do not move me
from the above determination that the claims of the 844 patent are obvious. Essentially, Ingevity’s
8 	Here, “50% more” assumes a BWC of 5.1 as in the WV-A 1100, Formulation B example.

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considerations are not particularly relevant to the specific obviousness issue presented by the prior
art—as opposed to features and benefits already disclosed. Meiller explicitly discloses the use of
a subsequent honeycomb in combination with an initial conventional canister. See, e.g., RX-0004
at Figs. 1-4. 	What Meiller leaves out from its teachings are the BWC or IAC properties of its
adsorbents. Given that any adsorbent must have an IAC value (it is an unavoidable property), and
the 844 patent’s use of a single IAC value to divide the entire spectrum of adsorbents, the
obviousness question for Meiller is a narrow one—whether it would have been obvious to use a
low-IAC honeycomb as opposed to a high-IAC honeycomb. Ingevity’s secondary considerations,
on the other hand, are directed to the basic auxiliary honeycomb concept Meiller already discloses,
and are not therefore probative of the actual issue. “Where the offered secondary consideration
actually results from something other than what is both claimed and novel in the claim, there is no
nexus to the merits of the claimed invention.” In re Kao, 639 F.3d at 1068 (emphasis added).
For example, Ingevity presents the commercial success and copying by others of its
honeycombs. CIB at 88, 89-90. Again, given that Meiller already discloses the use of a subsequent
honeycomb, the only value these considerations can offer is if they show the non-obviousness of
using a low-IAC honeycomb over a high-IAC honeycomb. Outstanding commercial success of
low-IAC honeycombs could do this, but the record in this investigation lacks any evidence that
high-IAC honeycombs were in existence, so as seriously to give a POSITA this choice. See, e.g.,
CX-1143C at Q/A 316 (“Q316. Are you aware of any carbon honeycomb products that have an
IAC about 35 g/L? A316. Yes. I understand that Mr. John Jackson testified during his deposition
”); CX-
1148C at Q/A 120 (finding one example in RX-0047 that could potentially be made to have over

166
8 g/dL BWC); CX-1146C at Q/A 87 (describing same example in almost same words). 	Thus,
these considerations are worth little weight to the analysis.
Ingevity’s unexpected results and satisfaction of a long-felt need fall into a similar
predicament. 	The inventors of Meiller already combined a subsequent auxiliary volume of
honeycomb with an initial conventional canister, and appreciated the resulting improvement in
diurnal breathing emissions. RX-0004 at Figs. 1-4, 2:58-60. Thus, evidence that the 844 patent
also supplied this benefit (CIB at 87, 88) is not noteworthy. As to the unexpectedness of using a
low-IAC honeycomb, this too is tempered by the absence of any high-IAC honeycombs at the time
of the invention in the record.
As to praise from others and industry respect (CIB at 88-89), these have even less
connection to the narrow obviousness question presented by Meiller, as Ingevity largely describes
respect and praise for the 844 patent as a whole based on its ability to provide the aforementioned
improvement in diurnal breathing emissions (id. at 88 (citing CX-1143C at Q/A 465-480; CX-
1144C at Q/A 39-83; CX-1145C at Q/A 137-160; JX-0172; JX-0007; JX-0174; CX-1076C at *1-
2; CX-0976C at *15; JX-0188C), 89 (citing CX-1143C at Q/A 481-493; CX-1046 at 2:15-19; CX-
1047 at 2:4-7; CX-1048 at 7:44-47; CX-1049 at 1:44-57; JX-0175 [sic] at 0076)). As Meiller also
provides the same improvement with effectively the same apparatus, this praise does little to
distinguish the 844 patent, especially, again, with regard to the selection of a low-IAC honeycomb
over a high-IAC honeycomb. 	Although not in any way dispositive, one cited memorandum
actually evinces a frustrated customer’s challenge to the novelty of the 844 patent and its value to
industry. JX-0188C at *1

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Accordingly, secondary considerations do not sufficiently support a finding of non-
obviousness of the 844 patent.
5. 	35 U.S.C. § 112, ¶ 1 (Enablement)
In addition to indefiniteness, Respondents contend all asserted claims of the 844 patent are
invalid for lack of enablement. Specifically, Respondents argue the claims recite “a high IAC with
no upper bound and a low IAC with no lower bound,” yet the 844 patent fails to teach how to
obtain values higher than 80 g/L or lower than 16 g/L. RIB at 57 (citing RX-0380C at Q/A 238,
249). Respondents view this discrepancy between the claims and the specification as in conflict
with the rule that “[t]o be enabling, the specification of a patent must teach those skilled in the art
how to make and use the full scope of the claimed invention without ‘undue experimentation.’”
Id. (citing, inter alia, Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997));
RRB at 31-32. Respondents hold up MagSil Corp. v. Hitachi Glob. Storage Techs., Inc., 687 F.3d
1377, 1380-1384 (Fed. Cir. 2012) as an on-point example of an unbounded claimed range (i.e. “up
to infinity” (RIB at 58)) resulting in lack of enablement (see RIB at 58-59). Respondents note that
when Ingevity achieved an IAC of 100 g/L, it was a viewed as a considerable feat—only achieved
years after the 844 patent’s 2001 filing date. Id. at 58 (citing Hr’g Tr. at 99:3-100:19; Rx-0380C
at Q/A/ 246).
Respondents refer to a second ground for lack of enablement as well. Respondents contend
it would take undue experimentation “for a PHOSITA to determine the proper method for
measuring IAC (assuming that it is even possible to do so)” in light of the indefiniteness problems
mentioned above. RIB at 59.

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In response, Ingevity argues two points of law: first, “[a] patent claim written to cover more
than one embodiment can be enabled based on a single embodiment” (CIB at 72 (citing Invitrogen
Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1070-71 (Fed. Cir. 2005))); and second, “it is the
novel aspect of an invention that must be enabled” as opposed to “hypothetical variant[s] of
limitations that are tangential to the inventive concept” (id. (citing Memo. Opinion, Delaware
Display Group LLC v. Vizio, Inc., Case No. 13-2112, at 8-10 (D. Del. Mar. 1, 2007; Auto. Techs.
Int’l v. BMW of North America, Inc., 501 F.3d 1274, 1283 (Fed. Cir. 2007)). 	Ingevity argues the
point of novelty of the 844 patent is the configuration of adsorbents in a canister and “not adsorbent
volumes with adsorption capacity of infinity or absolute zero.” Id.
Respondents have not shown lack of enablement with clear and convincing evidence. With
respect to the low-IAC range of less than 35 g/L, this would not be beyond the ability of those of
ordinary skill in the art, because the 844 patent teaches that incremental adsorption capacity can
be reduced through the use of diluents such as non-adsorbing fillers. See, e.g., 844 patent at 3:55-
57 (“One approach is to use a filler and/or bed voidages as a volumetric diluent for flattening an
isotherm.”). It is not hard to imagine a near zero IAC achieved through the use of, perhaps, one
pellet of adsorbing carbon buried within non-adsorbing filler. Thus, the low end of the range is
enabled.
Nor does the high-IAC range of greater than 35 g/L suffer from lack of enablement. 	In
both MagSil and the case it compares itself to, Fisher, 427 F.2d 883, the claimed range which was
found to lack enablement was the heart of the invention. In MagSil, the invention was rooted in
the achievement of a resistive change between electrodes in a magnetic read head of 10% wherein
only lower percentages had been achieved before. See 687 F.3d at 1379-80. The claims attempted
to capture this innovation with the limitation “an electrical insulator between the first and second

169
electrodes, wherein applying a small magnitude of electromagnetic energy to the junction reverses
at least one of the magnetization directions and causes a change in the resistance by at least 10%
at room temperature.” Id. at 1379. Similarly, in Fisher the invention concerned a treatment for
arthritis and was rooted in the achievement of a substance with high potency as to the beneficial
effects while maintaining low harmful effects. See 427 F.2d at 830. The claims in that case used
the limitation “containing at least 1 International Unit of ACTH per milligram and containing no
more than 0.08 units of vasopressin and no more than 0.05 units of oxytocin per International Unit
of ACTH” to capture this innovation. Id. at 835. In both cases, the courts invalidated the claims
due to a lack of enablement for the unbounded upper ranges in these limitations. See MagSil, 687
F.3d at 1383; Fisher, 427 F.2d at 839-840. In relevant part, the Fisher court explained:
The issue thus presented is whether an inventor who is the first to achieve a
potency of greater than 1.0 for certain types of compositions, which potency
was long desired because of its beneficial effect on humans, should be
allowed to dominate all such compositions having potencies greater than
1.0, including future compositions having potencies far in excess of those
obtainable from his teachings plus ordinary skill.
It is apparent that such an inventor should be allowed to dominate the future
patentable inventions of others where those inventions were based in some
way on his teachings. Such improvements, while unobvious from his
teachings, are still within his contribution, since the improvement was made
possible by his work. It is equally apparent, however, that he must not be
permitted to achieve this dominance by claims which are insufficiently
supported and hence not in compliance with the first paragraph of 35 U.S.C.
§ 112. That paragraph requires that the scope of the claims must bear a
reasonable 	correlation 	to 	the 	scope 	of 	enablement 	provided 	by 	the
specification to persons of ordinary skill in the art. In cases involving
predictable factors, such as mechanical or electrical elements, a single
embodiment provides broad enablement in the sense that, once imagined,
other embodiments can be made without difficulty and their performance
characteristics predicted by resort to known scientific laws. In cases
involving unpredictable factors, such as most chemical reactions and
physiological activity, the scope of enablement obviously varies inversely
with the degree of unpredictability of the factors involved.
427 F.2d at 839.

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Unlike MagSil and Fisher, the 35 g/L metric in the 844 patent is central to the invention in
that it delineates between what would be considered low-IAC and high-IAC adsorbents, yet no
party argues achievement of an adsorbent with an IAC greater than 35 g/L was the contribution to
the art. Rather, the contribution is as Ingevity has written it (see CRB at 35)—the use of otherwise
known adsorbents, one with an IAC greater than 35 g/L and one with an IAC less than 35 g/L,
arranged in a certain sequence with respect to the flow of fuel vapor. See, e.g., 844 patent at cls.
1, 18, 31, 43. Respondents do not contend that this arrangement is not disclosed in the 844 patent
specification, nor do they contend it would take undue experimentation to achieve it. A person of
ordinary skill’s inability to create adsorbent volumes with an IAC greater than 80 g/L, 100 g/L, or
even 1000 g/L without undue experimentation is simply irrelevant.
With respect to Respondents’ additional contention that the claims are not enabled
“because, as discussed with respect to indefiniteness, a PHOSITA would not know how to measure
IAC given the ’844 patent’s deficient disclosure, including regarding which ‘volume’ to measure”
(RIB at 59; RRB at 33 (“Ingevity also failed to enable the full scope of its claims based on the
indefiniteness arguments made above.”)), Respondents have not adequately explained how this
indefiniteness theory somehow translates into a lack of enablement. Crown Oper. Int’l v. Solutia
Inc., 289 F.3d 1367, 1378 n.5 (Fed. Cir. 2002) (“[D]efiniteness and enablement are analytically
distinct requirements.”) (citation omitted).
Accordingly, Respondents have not shown by clear and convincing evidence that the
asserted claims of the 844 patent are not enabled.
6. 	35 U.S.C. § 112, ¶ 1 (Written Description)
In addition to enablement and indefiniteness, Respondents contend the 844 patent is invalid
by way of lack of written description in that “[t]he claims of the ’844 patent are impermissibly
broader than the supporting disclosure with respect to IAC ranges.” 	RIB at 56. 	Specifically,

171
Respondents identify the 844 patent specification as disclosing a highest IAC of 80 g/L and a
lowest of 16 g/L, yet the claims would cover values that exceed both this maximum and minimum.
See id. at 56-57. 	Respondents again cite the example of an absorbent with an IAC of 100 g/L as
a considerable feat achieved by Ingevity but only years after the 844 patent’s 2001 filing date. Id.
at 57 (citing Hr’g Tr. at 99:3-100:19; RX-0380C at Q/A/ 246). 	As with enablement, Respondents
add in that the indefiniteness surrounding “which ‘volume’ to measure” for the recited adsorbent
volumes is another ground of invalidity for lack of written description. See id.
Respondents have not adequately explained a written description theory of invalidity as
opposed to enablement (regarding bounds of claimed IAC ranges (see RIB at 56-57; RRB at 31-
32)) or indefiniteness (regarding identification of volumes for IAC evaluation (see RIB at 57; RRB
at 31)). Accordingly, Respondents have not shown the 844 patent claims are invalid for lack of
written description.
7. 	Improper Inventorship
Another of Respondents’ affirmative defenses is improper inventorship: “[t]he ’844 patent
does not name the correct inventors, and is thus invalid and unenforceable” under 35 U.S.C. §
102(f) and 35 U.S.C. § 116. RIB at 96. Specifically, Respondents contend the novel aspect of the
844 patent was the placement of a low-IAC adsorbent subsequent to a high-IAC adsorbent in the
flow path of vapors from a fuel tank, and this idea belonged to Dr. Hiltzik alone and apart from
any other named inventor. Id. at 96-97. Respondents then discuss particular activities of named
inventor Roger Williams, and argue none rise to an inventive contribution. 	Id. at 97-98 (citing
CX-1145C at Q/A 10, 17, 20-30; JX-0251C at 24:16-25, 43:9-21; JX-0250C at 107:7-110:7,
114:2-9, 118:25-119:24; CX-1143C at Q/A 508; Hr’g Tr. at 691:14-694:14; RX-0325; RX-0034C;
RX-0067).

172
In response, Ingevity criticizes Respondents for a “dissect-and-evaluate-novelty approach”
in which each alleged contribution from, in relevant part, Mr. Williams, is tested “to see if it is
novel alone” with a credibility evaluation from Respondents’ technical expert. See CIB at 91-92.
Ingevity contends “[a]n inventor can contribute to only one claim and collaboration with other
inventors is sufficient so long as it is not insignificant and does not involve merely explaining well-
known concepts.” Id. at 90 (citing Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998);
Ethicon v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998)). 	Ingevity points to
testimony from Dr. Hiltzik and Mr. Williams on how the inventions of the 844 patent “resulted
from all four inventors that enabled his discovery of the importance of a flat isotherm.” Id. (citing
CX-1147C at Q/A 66, 77-79, 84, 88-91; CX-1145C at Q/A 3-21). Specifically, Ingevity argues
Mr. Williams “identif[ied] adsorption capacity as the key carbon property for bleed emissions”
which then “enabled the team, including Dr. Hiltzik, to discover the need for flat isotherms.” Id.
at 90-91. Ingevity also provides additional examples of collaboration efforts from Mr. Williams,
in addition to the two inventors other than Dr. Hiltzik. See id. at 91 (citations omitted).
Respondents have failed to show by clear and convincing evidence that Mr. Williams,
although engaged in a collaborative effort with Dr. Hiltzik, only provided Dr. Hiltzik with well-
known principles or statements on the state of the art. See RIB at 98 (citing Ethicon, 135 F.3d at
1460; Caterpillar, 387 F.3d at 1377); RRB at 60. 	For example, Respondents do not dispute
Ingevity’s evidence that Mr. Williams made contributions relating to materials, material shapes,
and material locations that would meet both the claimed IAC limits and practical emissions
requirements. See RRB at 60; CIB at 91; JX-0250C at 110:9-25, 114:2-22; CX-1145C at Q/A 17-
30; CX-1147C at Q/A 66, 78-79, 81. These efforts have a link to, at least, dependent claim 17,
which recites “[t]he method of claim 12 wherein the non-adsorbing filler is volatized or combusted

173
to form voidages larger than 50 Å width within the shaped particle or monolith” (844 patent at cl.
17; CIB at 91), or claims 32 and 44, which place the second (i.e., subsequent) adsorbent volume
in a separate canister (844 patent at cls. 32, 44; CIB at 91). The fact that voidages larger than 50
angstroms or auxiliary canisters may have been known or even well-known in a standalone manner
does not clearly show Mr. Williams only supplied Dr. Hiltzik with statements on the state of the
art. 	The evidence suggests that Mr. Williams’ contributions were provided in furtherance of a
“total inventive concept.” CX-1147C at Q/A 66, 74-79; Pannu, 155 F.3d at 1351 (“During the
meeting with Link, Pannu was doing more than simply providing Link with well-known principles
or explaining the state of the art; he was contributing his ideas concerning the snag-resistant
elements to a total inventive concept.”). 	And Mr. Williams’ choice of testing procedure design
contributed to the inventors’ alleged discovery “that isotherm shape was related to performance.”
See CX-1147C at Q/A 81, 70. This, of course, is the core of the 844 patent’s independent claims.
As to inventors Jagiello and Tolles, they receive effectively no discussion in Respondents’
briefs. See RIB at 96-98; RRB at 60. Accordingly, Respondents’ affirmative defense of improper
inventorship is rejected.
8. 	Patent Misuse
Another of Respondents’ affirmative defenses is patent misuse, manifested in either of two
ways: Ingevity “illegally [tying] the sales of its unpatented carbon products to allowing its
customers to practice the ’844 patent”; and Ingevity
RIB at 90, 92. I discuss each in turn, below.9
9 	Respondents make reference in a footnote to Ingevity committing “further” patent misuse
(RIB at 96 n. 25), but this is not adequately presented and is therefore rejected.

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a. 	Tying Arrangements
Respondents contend Ingevity has committed patent misuse through its requirement that
RIB at 90-91
(citing Princo Corp. v. Int’l Trade Comm’n, 616 F.3d 1318, 1327 (Fed. Cir. 2010)), 96; RRB at
52-54, 56. 	Respondents argue that Ingevity’s reliance on Dawson Chem. Co. v. Rohm & Haas
Co., 448 U.S. 176, 179 (1980) (“Rohm & Haas”) to justify its conduct of
is inapposite, as that case was limited
to customers who engage in contributory infringement, while Ingevity’s customers “would be
engaged in direct infringement by manufacturing and selling fuel vapor canisters covered by the
’844 patent.” RRB at 54. Respondents add that “[i]t is undisputed that Ingevity has market power
in the carbon adsorbent market for fuel vapor canisters” and cite to evidence indicating “Ingevity
is the largest supplier in the U.S. of carbon adsorbents used in fuel vapor canisters” including the
“pelletized carbon market” and honeycombs. See RIB at 96 (citing CX-0295C at ¶ 4; Hr’g Tr. at
67:24-68:2, 68:3-6, 476:6-477:11). In response to certain of Ingevity’s arguments, Respondents
dispute that the relevant market for a determination on market power is fuel vapor canisters, as
opposed to the constiuent carbon adsorbents. RRB at 56.
In opposition, Ingevity argues primarily that its conduct is no different from the patentee
in Rohm & Haas who was not held to engage in patent misuse (CIB at 92-93; CRB at 53), and
Respondents have not shown the requisite “market power” under 35 U.S.C. § 271(d)(5). On the
latter point, specifically, Ingevity contends Respondents “do not explain why market power in the
alleged tied product is relevant when Congress and the Supreme Court have stated that a defendant
must show market power in the tying product, which Respondents never show.” CRB at 53 (citing
Ill. Tool Works, Inc. v. Indep. Ink, Inc., 547 U.S. 28, 42-46 (2006)). Ingevity adds that even if it
“had conditioned a license on the purchase of a staple product during a time in which it had market

175
power in a relevant market—which Respondents have not shown—[it] purged any alleged misuse
by abandoning the conduct and allowing any consequences to dissipate.” CIB at 94 (citing C.R.
Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1372 (Fed. Cir. 1998); Va. Panel Corp. v. MAC Panel
Co. (“Va. Panel II”), 133 F.3d 860, 871 (Fed. Cir. 1997)). Ingevity further adds, “[i]f it somehow
had market power, it would have developed that market power only recently because the
widespread use of LEV-III standards did not occur until recently, so any alleged tying by Ingevity
in previous years would not constitute patent misuse under 35 U.S.C. § 271(d)(5).” Id. (citing CX-
0062C).
Ingevity’s sale of honeycombs does not constitute patent misuse via tying. The Supreme
Court has held, in its Rohm & Haas decision, that subsections (1) through (3) of 35 U.S.C. § 271(d)
reflect a “grant[] to patent holders of a statutory right to control nonstaple goods that are capable
only of infringing use in a patented invention, and that are essential to that invention’s advance
over prior art.” 448 U.S. 176 at 213.10 In Rohm & Haas, the patentee sold a herbicide known as
propanil, itself not patented and not patentable, and with those sales granted a license to its patented
method of applying propanil to crops. Id. at 176. The Court acknowledged that subsections (1)
through (3) did not expressly cover the patentee’s “linkage” of the sale with the license as a
protected activity, but nonetheless held the tying fell within these subsections. 	Id. at 213 (“We
find nothing in this legislative history to support the assertion that [patentee’s] behavior falls
outside the scope of § 271(d).”).
Similar to propanil in Rohm & Haas, there is no dispute that Ingevity’s honeycombs have
no non-infringing uses, making them nonstaple goods. It is clear, therefore, that any tying between
10 	At the time of the Rohm & Haas decision, 35 U.S.C. § 271(d) did not include subsections
(4) and (5), as they were added in a 1988 amendment to the statute. Ill. Tool Works Inc. v. Indep.
Ink, Inc., 547 U.S. 28, 41–42 (2006); Princo, 616 F.3d at 1329.

176
a sale of honeycombs and a license to the 844 patent is protected by 35 U.S.C. § 271(d), subsections
(1) through (3), and does not constitute patent misuse. Respondents’ attempt to distinguish Rohm
& Haas on the basis of the nature of the conduct by Ingevity’s customers (RRB at 54
(distinguishing contributory infringement from direct infringement)) is not persuasive; method
patent claims and allegations of contributory infringement are at issue in both cases. 	Rohm &
Haas, 448 U.S. at 182; 844 patent at cls. 1, 18.
Ingevity’s tying of BAX sales to a license of the 844 patent is a different matter, however,
because Ingevity acknowledges that BAX has non-infringing use and does not substantially
embody the 844 patent. CIB ta 97 (citations omitted). It therefore falls outside of the protection
afforded by 35 U.S.C. § 271(d)(1)-(3). The issue then becomes whether it is otherwise protected
by 35 U.S.C. § 271(d)(5):
(d) No patent owner otherwise entitled to relief for infringement or
contributory infringement of a patent shall be denied relief or deemed guilty
of misuse or illegal extension of the patent right by reason of his having
done one or more of the following: ... (5) conditioned the license of any
rights to the patent or the sale of the patented product on the acquisition of
a license to rights in another patent or purchase of a separate product, unless,
in view of the circumstances, the patent owner has market power in the
relevant market for the patent or patented product on which the license or
sale is conditioned.
35 U.S.C. § 271(d)(5). Pursuant to this subsection, and given that BAX is not itself patented, the
determination on Ingevity’s tying of BAX sales to a license under the 844 patent turns on whether
Ingevity “has market power in the relevant market for the patent or patented product on which the
license or sale is conditioned.” The Federal Circuit has made clear that this market power must
exist at the time the tying conduct occurred. U.S. Philips Corp. v. Int'l Trade Comm'n, 424 F.3d
1179, 1186 (Fed. Cir. 2005) (“According to the administrative law judge, the patent package
arrangements were instituted in the early 1990s. Yet Princo did not enter into its agreement until
June of 1997, and GigaStorage did not enter into its licensing agreement until October of 1999.

177
Thus, any lack of market power that Philips and its colicensors may have had in the early 1990s is
irrelevant to the situation in the late 1990s, when the parties entered into the agreements at issue
in this case.”).
Respondents have not met their burden to show the requisite market power. See Princo,
616 F.3d at 1326; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1375 (Fed. Cir. 2003). It is
crucial to clearly explain or define the market in which the patentee allegedly has power (Hodosh
v. Block Drug Co., 833 F.2d 1575, 1577 (Fed. Cir. 1987)), and, as mentioned above, the timeframe
of this power in comparison to the allegedly improper tying activity (Philips, 424 F.3d at 1186).
Respondents have defined the market with a general descriptor of “carbon adsorbent market for
fuel vapor canisters.” RIB at 96; see RRB at 526 (“market power in the carbon adsorbent market”).
Even accepting this description, as opposed to Ingevity’s defined market as the canisters
themselves (CIB at 93-94), Respondents have not associated the market power with those points
in time when the tying behavior occurred. 	For example, Respondents describe
(RIB at 92-93), and
(id. at 93-95),
but Respondents do not sufficiently identify what Ingevity’s market power was at each of those
times (see generally id. at 92-96).
Accordingly, I do not find Respondents have shown patent misuse through tying.
b. 	Supply Agreements
Respondents contend Ingevity has also committed patent misuse through
which “maintain the price charged to customers at levels close to the pre-patent
expiration rates.” RIB at 91; see RIB at 92-95; RRB at 52, 54-56. However, “Respondents do not
cite a single case or otherwise provide a legal basis for their theory.” CRB at 54; see RIB at 91-
95. Respondent do not cite any law demonstrating a basis for their patent misuse claim in their

178
initial post-hearing brief (RIB at 91-95) and only discuss Brulotte v. Thys Co., 379 U.S. 29 (1964)
in their reply brief (RRB at 54) to dispute the idea that a supply agreement is not a license if it does
not use the word “license” (see id. at 54-56). This discussion, however, does not carry their burden
to show that
is misuse. See
RRB at 55. It is also unclear exactly which agreements Respondents contend constitute the misuse.
Respondents’ reply brief mentions no agreement in particular (see RRB at 54-55) and in the direct
discussion of the issue in their initial brief, Respondents cite JX-0002C, an agreement with
and JX-0003, an agreement with 	(RIB at 91). Yet Ingevity explains the 	and
agreements are 	“not 	and do not
CRB at 54 n. 31.
The only other agreements mentioned by Respondents, albeit in a separate section entitled
“Evidence of Illegal Anticompetitive Conduct by Ingevity” (RIB at 92), that could be pertinent to
this misuse theory as extending past the 844 patent’s expiration date, are with 	and
(see RIB at 93-94 (discussing JX-0004C with 	, 95 (discussing RX-0063C with
Respondents do not even attempt to discuss the content of the 	agreement, however (see
RIB at 95), which is understandable because it
RX-0063C at *1-2. Respondents have therefore
not shown this agreement constitutes patent misuse. As to the 	agreement, it too contains a
(JX-0004C at *1), and again, Respondents otherwise fail to discuss why the
remaining terms of the agreement constitute misuse other than their base allegation that the
agreement’s term extends past the 844 patent’s expiration. 	Given the flexibility in contract
negotiation afforded to patentees and customers, as explained in, for example, Kimble v. Marvel

179
Entm’t, LLC, 135 S. Ct. 2401, 2408 (2015), Respondents have not met their burden to show either
of these agreements constitute misuse.
Accordingly, Respondents have not shown patent misuse through
9. 	Patent Exhaustion
Respondents present patent exhaustion as an affirmative defense. 	Respondents first
observe that every Accused Product “includes at least one Ingevity BAX base carbon (i.e., BAX
1500, BAX 1100, or BAX 1100LD), and multiple Accused Products include Ingevity’s HCA
honeycomb (CX-0909C.40-41, Table 3). RIB at 86. Respondents then argue that Ingevity’s sale
of these carbons to MAHLE exhausted Ingevity’s rights in the 844 patent over those canisters that
include BAX and HCA carbons (id. at 87-88) as well as those canisters that only include BAX
with no HCA (id. at 88-90). To show this exhaustion, Respondents principally apply the tests from
Quanta Comp., Inc. v. LG Elecs., Inc., 553 U.S. 617, 625 (2008) and LifeScan Scotland, Ltd. v.
Shasta Techs., LLC, 734 F.3d 1361, 1368 (Fed. Cir. 2013) (“The critical issue, whether a method
or product patent is involved, is whether the product ‘substantially embodies the patent’—i.e.,
whether the additional steps needed to complete the invention from the product are themselves
‘inventive’ or ‘noninventive.’”). See id. at 85-86.
As to HCA, Respondents highlight that an Ingevity witness, Mr. Ed Woodcock, has
effectively admitted that HCA substantially embodies the 844 patent. RIB at 87 (citing JX-0252C
at 377:4-378:3; Hr’g Tr. at 68:13-25; CX-0911C at Q/A 17). As to BAX, Respondents principally
argue that Ingevity’s characterization of BAX as a “DI Product,” and reliance thereon for domestic
industry economic prong, must mean it is a “specifically tailored, significant aspect” of an article
that practices the patent under Motorola Mobility, LLC v. Int’l Trade Comm’n, 737 F.3d 1345
(Fed, Cir. 2013). 	Id. at 88. 	Respondents reason, “if Ingevity’s BAX carbons are a specifically

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tailored, significant aspect of a canister protected by the Asserted Patent under Motorola, they
likewise satisfy the similar exhaustion standard under Quanta.” Id. Alternatively, Respondents
contend BAX adsorbents “embody an essential feature of the ’844 patent and their only reasonable
and intended use is to practice the patent,” and that any non-infringing uses “are not intended by
Ingevity or its business model.” Id. at 89.
Ingevity acknowledges that the HCA it sells substantially embodies the invention of the
844 patent, but argues that that sale only results in exhaustion with respect to the HCA sold—
where such HCA is not part of any infringement theory. 	See generally CIB at 98-99 (citing
Quanta, 553 U.S. at 625; Lexmark Int’l, Inc. v. Impression Prods., Inc., 816 F.3d 721, 742 (Fed.
Cir. 2016) (en banc); United States v. Univis Lens Co., 316 U.S. 241, 251 (1942)). With respect
to BAX, Ingevity argues these adsorbents have non-infringing uses and thus do not substantially
embody the 844 patent. Id. at 97-98 (citing Hr’g Tr. at 69:18-22; CX-0911C at Q/A 86; CX-1144C
at Q/A 96; CX-1143C at Q/A 537; RX-0382C at Q/A 193; CX-1052C at *42-43). Even though a
product with a non-infringing use may still substantially embody a patent, Ingevity argues BAX
still does not do this because it does not constitute an inventive feature of the 844 patent. See id.
at 98 (citing, inter alia, 844 patent at 5:46-49).
Patent exhaustion has not been demonstrated against any of the Accused Products. As a
product which substantially embodies the 844 patent, exhaustion only applies to HCA and not any
larger product HCA might end up in. 	The Supreme Court in Quanta was quite clear. 	“The
authorized sale of an article that substantially embodies a patent exhausts the patent holder’s rights
and prevents the patent holder from invoking patent law to control postsale use of the article.” 553
U.S. at 638. Ingevity’s theory of infringement does not implicate HCA, so it is in no way an effort

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to control postsale use of HCA. Thus, that theory of infringement is not affected by any HCA-
triggered exhaustion.
Contrary to Respondents’ assertion, the facts of this case are markedly different from those
in Quanta. There, the infringement theory pursued by the patentee, LGE, was based on the use of
the very same Intel processor alleged to trigger exhaustion. 	Quanta, 553 U.S. at 624 (“LGE filed
a complaint against Quanta, asserting that the combination of the Intel Products with non-Intel
memory and buses infringed the LGE Patents.”), 637 (“LGE points out that the License Agreement
specifically disclaimed any license to third parties to practice the patents by combining licensed
products with other components.”). 	Ingevity’s infringement theory is not based on HCA—it is
based on MPAC—so exhaustion does not apply. See Drager Med. GMBH v. Allied Healthcare
Prod., Inc., 2015 WL 1457954, at *2-3 (D. Del. Mar. 27, 2015) (finding exhaustion against an
infringement claim that involved the patent-embodying adapter sold by the patentee).
As for BAX, it is implicated by Ingevity’s theories of infringement. Respondents have not
shown it substantially embodies the inventions of the 844 patent, however. Respondents’ evidence
on Ingevity’s business model (RIB at 89; RRB at 57) has little nexus to this test, as opposed to
Ingevity’s presentation of the 844 patent itself, which describes how high-BWC adsorbents, like
BAX, were common in the prior art fuel vapor canisters, which the 844 patent seeks to improve
upon. 	See, e.g., 844 patent at 1:27-2:33, 2:56-3:3, 3:45-47, 3:60-64, 4:64-5:2. 	Moreover,
Respondents’ use of Motorola is misplaced. In that case, the Federal Circuit did not hold that any
component whose investments are sought to be relied upon for economic prong must be a
“significant aspect of the [patented] article.” See RIB at 88. Rather, the court held only that “[t]he
investments or employment must only be ‘with respect to the articles protected by the patent.’ 19
U.S.C. § 1337(a)(3). 	An investment directed to a specifically tailored, significant aspect of the

182
article is still directed to the article,” in resolution of a dispute over whether economic prong
investments needed to be in support of that same portion of the article used to satisfy technical
prong. See Motorola, 737 F.3d at 1348, 1351. Thus, Ingevity’s decision to rely on its investments
in BAX to satisfy economic prong does not automatically translate to an admission that BAX
substantially embodies the 844 patent.
Respondents’ patent exhaustion affirmative defense therefore fails.
V. 	DOMESTIC INDUSTRY - ECONOMIC PRONG
In a patent-based complaint, a violation of Section 337 can be found “only if an industry
in the United States, relating to the articles protected by the patent ... concerned, exists or is in the
process of being established.” 	19 U.S.C. § 1337(a)(2). 	Under Commission precedent, this
“domestic industry requirement” of Section 337 consists of an economic prong and a technical
prong. Stringed Instruments, Inv. No. 337-TA-586, Comm’n Op. at 12-14. The complainant bears
the burden of establishing that the domestic industry requirement is satisfied. See Certain Set-Top
Boxes and Components Thereof, Inv. No. 337-TA-454, Initial Determination at 294 (June 21,
2002) (not reviewed in relevant part).
The economic prong of the domestic industry requirement is defined in subsection (a)(3)
of Section 337 as follows:
(3) For purposes of paragraph (2), an industry in the United States shall be
considered to exist if there is in the United States, with respect to the articles
protected by the patent, copyright, trademark or mask work concerned --
(A) Significant investment in plant and equipment;
(B) Significant employment of labor or capital; or
(C) Substantial investment in its exploitation, including engineering,
research and development, or licensing.

183
19 U.S.C. § 1337(a)(3). The economic prong of the domestic industry requirement is satisfied by
meeting the criteria of any one of the three factors listed above. Importantly, the Commission has
clarified that investments in plant and equipment, labor, and capital that may fairly be considered
investments in research and development are eligible for consideration under subsections (A) and
(B), in addition to subsection (C). See Solid State Storage Drives, Comm’n Op. at 14.
As alluded to above, and in consideration of subsections (A) and (B), Ingevity presents
several sources of investment towards its satisfaction of the economic prong of domestic industry;
specifically: investments it has made within the United States in plant, equipment, labor, and
capital; investments made by third parties Futaba, Leehan, Stant, and Kayser in plant, equipment,
labor, and capital; and investments made by respondent MAHLE in plant, equipment, labor, and
capital. Ingevity also relies on its own investments in research and development under subsection
(C). As determined below, Ingevity has not shown “significant” expenditures under subsections
(A) and (B), but has shown “substantial” investment under subsection (C), such that economic
prong domestic industry is satisfied.
A. 	Qualifying Expenditures
1. 	Subsection (A), Plant and Equipment
a. 	Ingevity Investments
As to subsection (A), the evidence shows Ingevity manufactures the honeycomb, low-IAC,
adsorbents used in the DI Canisters at a plant located in 	CX-0910C at Q/A 68;
CX-0911C at Q/A 70. Ingevity’s expert calculated that Ingevity invested the following amounts
at this location reflecting what he calls the “change in gross PP&E [(i.e., plant, property, and
equipment)]” which would be relevant to subsection (A): 	in 2015; 	in 2016;
in 2017; and 	in 2018. CX-0910C at Q/A 70; CDX-0002C.5; JX-0018C.
The expert, Dr. Vander Veen, notes that the 	is

P| of the honeycombs used in the DI Canisters, however. CX-0910C at Q/A 71. To
accommodate this, the expert applied the following allocation percentages to these investments
based on the amount of “honeycomb products” produced at the location: a in 2015, | | in
2016, in 2017, and in 2018. Jd.; see CIB at 104 (citing Hr’g Tr. at 332:6-333:4, 303:22-
[3]04:14; CX-0911C at Q/A 74-75; CX-0914C at Q/A 81-83; CX-0063C). The resulting

investments become:

2015 2016 2017 2018

See CX-0910C at Q/A 72. In its initial post-hearing brief, Ingevity then applies further allocations
to these amounts to “remove investments made in the U.S. to manufacture honeycombs
incorporated into vehicles for the Canadian market” for years 2015-2018, and “to remove
honeycombs incorporated into vehicles for the Chinese and European markets” for 2018. CIB at
105 (citing CX-0910C at Q/A 117-118; TX-0013C; JX-0026C). Ingevity applies another allocation
to remove the honeycomb which is incorporated into MAHLE’s Domestic Accused Products for
2015-2018. Jd. (citing CX-0190C at Q/A 126; Hr’g Tr. at 341:4-345:16; TX-0044C; JX-0046C).
Finally, to the extent necessary, Ingevity applies an allocation to investments in 2018 to remove
those that would have been after the complaint was filed in this investigation. /d. at 108 (referring
to a 10/12 allocation to remove November 2018 and December 2018 investments). In total, the

alleged investment in PP&E for the Waynesboro, GA plant becomes:

Ingevity | 2015 | 2016 | 2017 | 2018

184

Subsection (A) — Plant and
Equipment

: UE
i ce i

Ingevity refers to similar analyses done by Dr. Vander Veen for its P| and
ES I (6: p:ec10:
thereto). See CIB at 104, 109-111 (citing, inter alia, CX-0910C at 56-67). Again, the analyses
start with an identification of the “year-over-year change in gross PP&E,” and then apply various
allocation percentages to arrive at the investment amount for the “DI Products used in canisters
practicing the Patent.” CIB at 109, 110. These allocation percentages for and i
differ from those applied to the po and from each other, because of the nature of
the respective activities and product manufactured.

ro iii a first allocation was applied to the “year-over-year gross change in gross

PP&E” to capture the production of “DI Products” compared to other carbons; and a second

allocation was applied to represent how much of the DI Product investment went into “Tier 3

canisters practicing the patent with an Ingevity honeycomb.” CIB at 109-110 (citing CX-0190C

at Q/A 61-62; CX-0065C; JX-0018C; CX-0062C; CX-0911C at Q/A 86-100). To be consistent

with the calculations for Po above, I further add the same Canada, China, Europe,

MAHLE Domestic Accused Product, and post-complaint allocation percentages, as suggested by

Ingevity. See CIB at 108 (discussing 10/12 allocation for 2018), 111 n.48 (“All of these

investments can be allocated to address Canada, China, Europe, and MAHLE’s Accused

Canisters”). The result is shown in the following table:

Ingevity

Equipment

Subsection (A) — Plant and

2015

2016

2017

2018

ro iii a first allocation was applied to the “year-over-year change in gross PP&E”

to capture the percentage of overall production attributable to BAX precursors; and a second

allocation was applied to that amount to represent the proportion of precursor products which went

186

into “Tier 3 canisters practicing the Patent with a honeycomb purchased from Ingevity.”

Additionally, a third allocation was applied to the original “year-over-year change in gross PP&E”

to capture the percentage of overall production attributable to honeycomb precursors. These BAX-

precursor and honeycomb-precursor amounts are then added together, resulting in the following

table:

Ingevity
Subsection (A) — Plant and
Equipment

2015

2016

2017

2018

|_|
||

187

Thus, the alleged investment by Ingevity under subsection (A), plant and equipment, is as follows:

Ingevity 2015 2016 2017 2018
Subsection (A) — Plant and
Equipment

An evidentiary deficiency exists, however, that precludes consideration of the above plant
and equipment expenses. As is explicit in the statute, otherwise qualifying economic investments

must be “with respect to the articles protected by the patent.” 19 U.S.C. § 1337(a)(3). In this

188

189
investigation, the “articles protected by the patent” are Ingevity’s DI Canisters—and not simply
any canister in existence that includes an Ingevity honeycomb. Yet Ingevity’s allocations stop at
this latter category of products. This is not sufficient because the record shows that there are many
additional customers of Ingevity’s honeycombs beyond the entities producing the DI Canisters—
the only products established as “protected by the patent.”
To begin, Respondents fault Ingevity’s expert, Dr. Vander Veen, for not “allocat[ing]
investments to the individual DI Products” as opposed to “on a plant-level.” RIB at 112-113 (citing
RX-0382C at Q/A 177-198). 	Respondents give examples of “[t]he expenses at 	were
allocated, in the aggregate to multiple BAX and HCA precursors,” “[t]he expenses at
were allocated, in the aggregate, to multiple types of BAX,” and “[t]he expenses at
were allocated, in the aggregate, to both types of HCA.” Id. at 113. These specific criticisms are
not especially relevant. The ultimate purpose of any allocation is to isolate those investments that
are related to articles that practice the patent under the statute (19 U.S.C. § 1337(a)(2), (3)) from
those that are not so related. Assuming the “aggregate” BAX and “aggregate” HCA produced at
each location are shown to be put in articles which practice the 844 patent (i.e., the DI Canisters),
then it does not matter that investment amounts have been broken out “product-by-product” (RIB
at 112) for each BAX and each HCA model, individually.
Based on review of Ingevity’s briefing, witness testimony, and documentary evidence,
however, that assumption is not supported. 	To repeat, the only articles which Ingevity has
attempted to show practice the 844 patent are those models of fuel vapor canisters which are the
DI Canisters from Leehan, Stant, Futaba, Kayser, and MAHLE. 	See CIB at 35-36 (third-party
canisters); CIB at 35 (citing CX-0909C at Q/A 2072-2079 (MAHLE canisters)). 	Thus, any

190
investment, whether it be from Ingevity or licensee, must “relat[e] to” these specific articles to be
cognizable for the economic prong calculus. 19 U.S.C. § 1337(a)(2), (3).
Ingevity’s allocations do not reach this required level of specificity. For the honeycomb
products produced at 	and as shown above, Ingevity’s allocations remove investments
related to: non-HCA produced at the facility; honeycomb destined for the Canada, China, and
Europe markets; honeycomb used in MAHLE accused products; and activities following the filing
of the complaint. See generally CIB at 104-105, 108. What is left over are investments directed
to honeycombs (i.e., HCA or HCA-LBE) as a whole to any customer. 	This is not the same as
honeycombs attributable to those specific canister models which are the DI Canisters from Leehan,
Stant, Kayser, Futaba, and MAHLE.
As shown above, it is the same situation for the honeycomb precursors manufactured at the
facility; after all allocations, the investments reflect HCA to any customer. It is the same
situation for the BAX precursors produced at 	and the BAX pellets produced at
the products are not limited to the DI Canisters. 	While Ingevity’s BAX allocations
differ from its honeycomb allocations through the use of “Tier 3” canister percentage—an
approximate allocation meant to remove non-844 patent practicing canisters—this still fails to
remove any BAX not ending up in the specific list of DI Canisters from Leehan, Stant, Kayser,
Futaba, and MAHLE.
But 	Ingevity’s 	sales 	records 	show 	that 	not-insignificant 	amounts 	of 	DI 	Products
(honeycombs and BAX) are sold to entities other than Leehan, Stant, Kayser, Futaba, and
MAHLE. 	Ingevity witness William Hamilton testified that JX-0021C is a “sales and business
planning document” which “provides a sales performance summary for the Performance Materials
business.” CX-0914C at page 16. The “data” tab of this spreadsheet contains all of the “source

data” for the summaries listed in other tabs. Jd. at 17. The entries in this data tab can be filtered
to show sales of DI Products made in the USA. JX-0021C at tab “data,” columns O, AG. When

this is done, there are many customers listed (“Sold-to name,” column M) who are not Leehan,

a «

these are just a few examples. Additional sales spreadsheets, JX-0022C, JX-0024C, JX-0026C,
confirm the existence of many other customers of the DI Products.

p | in particular, appears to be a major customer. See, e.g., JX-0021C at “data” tab;
JX-0026C at “data” tab. Indeed, a purchase of honeycombs is discussed at length in the

rebuttal witness statement of Mr. Woodcock (CX-1144C at Q/A 113-159), and Ingevity’s initial

brief describes [I «: |
ee
ee CIB at 73 (citations omitted). But
Ingevity’s allocations do not remove honeycomb sales to | | even though none of the DI
Canisters are fom

po is just one example. Further supporting the existence of honeycomb customers
other than Leehan, Stant, Kayser, Futaba, or MAHLE is the following testimony from Ingevity
witness Ed Woodcock:

Q. Which OEMs and Tier 1 manufacturers practice the claims of the 844
Patent without a license agreement?

A.

191

CX-1144C at Q/A 173 (emphasis added).
The evidence also suggests that Leehan, Stant, Kayser, Futaba, or MAHLE may themselves

be using Ingevity carbons for products that are not protected by the 844 patent. At the deposition

of Kayser’s witness, Mr. Clark, for example, he testified both that Po
EE ()X-0229C at 33:17-19), and tha
ee
BN 05151522), 1s, rs
I i:
just one example.

Overall, no statements or arguments in Ingevity’s briefs, witness testimony, or evidence
refute this observation that Ingevity’s claimed investments capture more than can be attributed to
the DI Canisters. Indeed, several of Ingevity’s contentions on this topic leave the door open for
this possibility. One contention in its opening brief reads “Dr. Vander Veen’s product-based
allocations on a plant-by-pant basis for the DI Products used to practice the Patent is consistent
with the flexible approach used by the Commission and is reasonable because it narrowed the
investments to capture on/y those directed to the DI Products used in canisters practicing the ’844
Patent.” CIB at 106 (emphasis added). Notably, the emphasized language does not read “only
those directed to the DI Canisters” which it must to satisfy Ingevity’s burden. This hedging as to
which products Ingevity’s investments relate to appears in Ingevity’s reply brief as well. CRB at
64 (“The Federal Circuit directly rebuts Respondents’ position because automotive honeycombs
are significant components specifically tailored for use in canisters practicing the Patent.”), 65

(“Dr. Vander Veen allocated the investments to address only investments relating to

192

193
automotive honeycombs, which are specialty products manufactured only for use in practicing the
Patent.”), 70 (with respect to licensee data, “Dr. Vander Veen also found the investments
significant based on the percentage of investments made in the U.S. for canisters that practice the
Patent as opposed to those that do not practice the Patent.”).
Due to these over-inclusive allocations, the amount of Ingevity’s own investment that
“relat[es] to” the DI Canisters under the statute—i.e., the articles protected by the patent—are
insufficiently reliable. 	Undoubtedly, this investment is non-zero; it is undisputed that the DI
Canisters contain adsorbents from Ingevity, and that these adsorbents are manufactured in the
United States. And it is likely this investment is 	given the volumes of
adsorbent and canisters at issue. 	See, e.g., CX-0910C at Q/A 102 	of
canisters incorporating the DI Products from Leehan), 105 	of canisters
incorporating the DI Products from Stant), 108-109 (likely 	of canisters
incorporating the DI Products from Futaba), 113 	of canisters incorporating
the DI Products from Kayser). Without a grasp on what the number is, however, it is not proper
to consider Ingevity’s own investments in the economic prong “significance” analysis.
In their initial and post-hearing briefs, Respondents raise a number of other criticisms
towards Ingevity’s plant and equipment calculus. Although some of these have merit, they do not
undermine Ingevity’s analysis to the same degree as Ingevity’s failure to allocate to the DI
Canisters. I nonetheless discuss each below to aid the Commission’s analysis.
Respondents argue that the subsidiaries Ingevity Virginia Corp. and Ingevity Georgia LLC
are neither complainants nor licensees of the 844 patent, such that the investments made in
conjunction with their facilities cannot be counted for economic prong purposes. RIB at 106. This
would include all three of the 	locations.

194
This is hypertechnical and otherwise unpersuasive. While Respondents argue that “neither
Complainant owns or operates the three domestic manufacturing facilities” (RIB at 106), Ingevity
Corp. own these entities and their facilities. CX-0911C at Q/A 30-41. It is permissible to allow
Ingevity Corp. to treat the investments at the subsidiaries’ locations as its own under Commission
precedent. Certain Products Containing Interactive Program Guide and Parental Control Tech.,
Inv. No. 337-TA-845, Initial Determination at 277-278 (June 7, 2013) (affirmed in relevant part)
(citing Certain Liquid Crystal Display Devices and Products Containing the Same, Inv. No. 337-
TA-631, Order No. 18 at 7 (Sept. 23, 2008) (unreviewed); Certain Electronic Imaging Devices,
Inv. No. 337-TA-726, Order No. 18 at 8-19 (Feb. 7, 2011)).
Respondents argue Dr. Vander Veen’s calculations improperly include investments related
to BAX 1700 because “no DI Canisters include BAX 1700.” RIB at 109 (citing, inter alia, Hr’g
Tr. at 189:10-190:8; RX-0381C at Q/A 536; RX-0382C at Q/A 212). 	Relatedly, Respondents
challenge the reliability of a certain exhibit, CX-0062 (RX-0144C), used by Dr. Vander Veen to
approximate the portion of Ingevity’s carbons that are used in non-Tier 3 canisters, and thus
practice the 844 patent. RIB at 113-114 (citing, inter alia, RX-0382C at Q/A 191-192; JX-0252C
at 420:23-24). 	Neither position is persuasive. 	Given that a precise accounting is not necessary
(Stringed Instruments, Inv. No. 337-TA-586, Comm’n Op. at 26 (“[a] precise accounting is not
necessary; as most people do not document their daily affairs in contemplation of possible
litigation.”)), and the data contained within CX-0062C (RX-0144C) is collected and maintained
for Ingevity’s business purposes (CX-0911C at Q/A 89-98), it is sufficiently reliable to estimate
how many BAX-containing canisters are not Tier 3 (or Tier 3 but not otherwise patent practicing,
as in the case of Toyota’s sealed tank technology), even though the data for 2018 may be based on
predictions. Thus, Ingevity’s use of this document to remove BAX 1700 containing canisters (used

195
only in Toyota’s non patent-practicing sealed tanks) is acceptable, and has been incorporated in
the tables above for the 	and 	locations.
Respondents argue that Dr. Vander Veen “relied upon untested estimates or assumptions
when applying allocations,” such as an assumption that 10-20% of U.S.-manufactured BAX base
carbons are used in non-Tier 3 canisters. RIB at 114 (citing RX-0382C at Q/A 193-194; JX-0252C
at 368:11-370:6). Again, like CX-0062C, the assumption is not problematic, given it is a research
figure likely developed in the course of Ingevity’s business. 	See JX-0252C at 367:14-373:12
(discussing applications and markets for various adsorbents). 	Indeed, Respondents’ expert
criticizes the assumption merely for being an assumption but does not otherwise refute it in any
way. 	RX-0382C at Q/A 193. 	Moreover, Respondents rely on the figure under their patent
exhaustion theory. RIB at 89.
Respondents also argue that canisters including another BAX product, BAX 1100LD,
should not be counted as “proper DI Products” because BAX 1100LD is made in China. RIB at
110. Respondents, however, acknowledge that “Dr. Vander Veen did not rely on investments in
BAX 1100LD.” Id. And the fact that one component of a DI Canister is made overseas does not
necessarily take away from that canister’s status as an authorized, patent-practicing product (i.e.,
a product which can be relied on to satisfy technical prong).
Respondents argue Ingevity has improperly counted investments that occur after the filing
of the complaint in this investigation. RIB at 110-111. They also argue in their reply brief that
Ingevity’s offer to allocate any 2018 amounts by 10/12 (83.3%) is untimely and cannot be
accepted. RRB at 66. Such a simple and straightforward adjustment should not be disregarded in
this way; it reliably reduces any entity’s 2018 investments to avoid post-complaint expenditures,
and has been employed throughout this economic prong analysis.

196
Respondents also argue that expenses related “general and administrative” (G&A)
functions and “finance and IT business functions” have been improperly included. 	RIB at 110
(citing Certain Dynamic Random Access Memories, Components Thereof, and Prods. Containing
Same, Inv. No. 337-TA-242, 1987 ITC LEXIS 170, at *103-104 (Nov. 1987)). I disagree. The
more typical non-cognizable activities are sales, marketing, and other activities that would be
expected of mere importers of products. 	See, e.g., Certain Clidinium Bromide & Prods.
Containing Same, Inv. No. 337-TA-1109, Order No. 11 at 5-6 (“Paying wholesalers to distribute
pharmaceutical products is a cost of sale borne by pharmaceutical manufacturers selling to those
entities, regardless of whether or not the pharmaceutical is imported or made domestically. . . .
[The] fees are nothing more than standard U.S. expenses of a mere importer, which should not be
considered in a domestic industry analysis.”). Even then, the Commission has shown latitude in
including sales, marketing, or general administrative investments when they are provided in
support of other qualifying activities:
In the case at hand, PopSockets is not relying solely on marketing and sales
expenditures to satisfy the economic prong. While PopSockets has included
sales 	and 	marketing 	expenditures, 	it 	has 	also 	provided 	evidence of
significant expenditures in its employment of labor in other qualifying
activities, such as engineering, product development, product assembly,
supply chain and operation management, and customer service, as well as
capital expenditures for fixtures, furniture, software, and equipment used
for design, engineering, and operation management, which are sufficient to
establish the existence of a domestic industry under subsection (B).
Certain Collapsible Sockets for Mobile Electronic Devices and Components Thereof, Inv. No.
337-TA-1056, Comm’n Op. at 19-20 (July 9, 2018) (public version) (“Collapsible Sockets”).
Given the undisputed evidence that qualifying manufacturing activities occur at each of Ingevity’s
and 	locations, and G&A, IT, and finance activities are
understandably connected thereto, they may be counted for economic prong purposes under the
Commission’s flexible analysis.

197
Similar to their disputes on BAX 1700 and BAX 1100LD, Respondents argue Dr. Vander
Veen’s investment base improperly includes BAX 1500E and BAX 950, as these were not claimed
as “DI Carbons” (RIB at 109), and there is no evidence they are contained within a DI Canister
(id.). 	Respondents contend BAX 1500E and BAX 950 “form a large portion of the allocation
base.” Id. at 110 (citing Hr’g Tr. at 297:24-299:2, 324:5-328:22, 329:14-331:9; CX-0065C; CX-
0532C; RX-0382C at Q/A 112, 117, 149). 	Ingevity successfully refutes this: 	“Respondents []
ignore Dr. Vander Veen’s testimony that BAX 1500E is the same product as 1500, with the E
indicating that certain quality controls were not met so the product is sold at a lower price” (CRB
at 69 (citing Hr’g Tr. at 328:23-329:6)), and they “ignore Dr. Vander Veen’s testimony that he did
not include BAX 950 in his calculations” (id. (citing Hr’g Tr. at 329:14-25)). Compare CX-0065C
with CDX-0002C.3.
In sum, Ingevity’s own investment in the production of the DI Products cannot be counted
in the economic prong analysis because no connection has been shown between the adsorbents
produced (i.e., the DI Products) and the adsorbents included in the exact set of canisters relied on
to show practice of the patent (i.e., the DI Canisters). 	On review, the Commission may permit
Ingevity to show this connection using the evidence of record, but it is not discernible in Ingevity’s
post-hearing briefing. Ingevity’s own investments are therefore not included in the subsection (A)
significance analysis below.
b. 	Licensee Investments
In addition to its own investments, Ingevity also presents the plant and equipment expenses
of four of its implied licensees—Leehan, Kayser, Stant, and MAHLE—towards the manufacture

198
of each licensee’s respective portion of the DI Canisters for economic prong consideration.11 CIB
at 113-114.
For Leehan, Ingevity’s expert, Dr. Vander Veen, reports total plant and equipment
investments for making canisters in 	of: 	in 2016; 	in 2017;
in 2018. CX-0910C at Q/A 102-103. He then applied allocation percentages of
and 	(for years 2016-2018) to these amounts to reflect, according to Ingevity, those
“practicing the Patent using DI Products.” CIB at 113 (citing CX-0910C at Q/A 102-103; CX-
0160C). 	The expert notes
CX-0910C at Q/A 103 (citing CX-0676C and CX-0156C). The foregoing reference
to “honeycomb” is material because Ingevity claims one type of non-honeycomb adsorbent
nonetheless qualifies as a low-IAC adsorbent—BAX-LBE. See CIB at 113. Although Dr. Vander
Veen offers to use an allocation to remove Mexico-shipped canisters using exhibit JX-0013C (CX-
0910C at Q/A 103), this is unnecessary; the products are still manufactured in the United States,
which is a practice of claim 43 of the 844 patent. Dr. Vander Veen’s calculus also provides data
on 2019 (CX-0910C at Q/A 103), but I decline to consider these investments as they are after the
November 8, 2018 filing date of Ingevity’s complaint. For that same reason, it is appropriate to
apply the same post-complaint allocation used in consideration of Ingevity’s own investments
above.
The investments made by Leehan are nevertheless over-inclusive. 	Dr. Vander Veen
testified that he used allocations of 	and 	as “percentage of Revenue for Canisters
11 	Ingevity does not present plant and equipment investment for licensee Futaba in its initial
post-hearing brief. See CIB at 113-114.

Incorporating Ingevity Content” to arrive at how much of Leehan’s total investment is “related to
the Domestic Industry Products.” CX-0910C at Q/A 103. These percentages come from CX-
0676C, which is email correspondence between Leehan and Ingevity counsel. Several tables are
included within CX-0676C, two of which can be combined to show which Leehan model numbers
are captured by the andi allocations, for the relevant time frame of 2016-2018. As

shown below, two models, 31400-H9700 and 31400-M7000, are captured in these allocations but

are not DI Canisters:
Leehan Models Captured By Dr. | Leehan DI Canisters
Vander Veen’s Allocation for 2016-
2018
(CX-0676C; CX-0910C at Q/A 103) | (CIB at 36)
31400-F3500 (Ada), (BDm) 31400-F3500
31400-S2500 (TMa) 31400-S2500
31400-D5500 (Jfa) 31400-D5500
31400-D5600 (Jfa) 31400-D5600
31400-H9500 (SC/HC) 31400-H9500
31400-H9600 (SC/HC) 31400-H9600
31400-H9700 (SC/HC)
31400-M7600 (BDm) 31400-M7600
31400-M7000 (BDm)
31400-S9000 (no
production prior to 2019)
3QF201797A (no
production prior to 2019)

Unlike this issue with Ingevity, however, Leehan’s over-inclusive allocation is easily remedied.
The allocation can be reduced to eliminate the canister product categories which include the 31400-
H9700 and the 31400-M7000—“SC/HC” and “BDm.” CX-0676C at *3. Thus, the allocations
become fj for 2016, || for 2017, and Jj for 2018. Respondents’ additional challenges to

the Leehan investments (RIB at 111; RX-0382C at Q/A 222-224) are not persuasive.

199

200
For licensee Kayser, Dr. Vander Veen again reports overall investment for making
canisters in 	of: 	in 2016; 	in 2017; and 	in
2018. CX-0910C at Q/A 113-114. He then applies allocation percentages of 	and
(for years 2016-2018) to these amounts to reflect those “contain[ing] honeycombs (HCA
and BAX carbons)” and are therefore “practicing the Asserted Patent.” Id. at Q/A 114. As with
Leehan and Ingevity above, no 2019 expenditures are considered and the same post-complaint
allocation is applied.
As with Leehan and Ingevity, Dr. Vander Veen’s allocations for Kayser are over-inclusive.
Dr. Vander Veen applies allocations of 	in 2016, 	in 2017, and 	in 2018, in order
to capture the amount of honeycomb-containing canisters out of all canisters produced. CX-0910C
at Q/A 113-114. Although he does not explain his calculation, it seems these percentages come
from the per-model production volumes reported in CX-0668C (2016), CX-0669C (2017), and
CX-0670C (2018). 	See generally CX-0910C at Q/A 114. 	Based on my own calculations from
these spreadsheets, it appears Dr. Vander Veen included models which are listed as containing a
BAX Product and a honeycomb product, but are not among the Kayser DI Canisters. For example,
in 2016, the only BAX and honeycomb product is E2XX 23212909, and this canister indeed makes
up 	of the total canister production volume for that year, consistent with Dr. Vander Veen’s
percentage above. See CX-0668C. E2XX 23212909 is not a DI Canister, however, and there is
no explanation in the deposition of Kayser’s witness (JX-0229C) that suggests mislabeling or that
it goes by a different model number. This canister appears to have been included in the same way
for 2017, again, where my own calculations show Dr. Vander Veen’s 	percentage comes not
from adding up the DI Canister models, but from simply adding up all canisters listed which
contain BAX and honeycomb adsorbents. See CX-0669C.

201
Thus, Dr. Vander Veen’s allocations are over-inclusive, resembling the same deficiency
affecting Ingevity and Leehan. To reiterate, economic prong must be tied to the products that have
been shown (or, at a minimum, alleged) to practice the 844 patent (i.e., the DI Canisters), and not
just any canister that happens to have BAX and a honeycomb.
Respondents’ expert, Dr. Akemann, also observes that the overall investment amounts Dr.
Vander Veen relies on (see CX-0910C at Q/A 114; CX-0025C) are overall amounts for Kayser’s
—which also include, at least, 	(RX-0382C at Q/A
252; JX-0229C at 33:17-34:10, 112:6-113:17, 118:16-120:6). Yet no allocation has been applied
to remove investments allocable to these non-canister activities.
Thus, there are at least two grounds showing an over-inclusive allocation for licensee
Kayser. While the inclusion of canister models that are not DI Canisters could be rectified with a
line-by-line elimination of models from CX-0668C, CX-0669C, and CX-0670C, the record is
insufficient to allow for this. So Dr. Vander Veen’s opinion regarding Kayser investments cannot
be considered in the significance analysis below.
For licensee Stant, Dr. Vander Veen again reports overall investment for making canisters
in 	of: 	in 2016; 	in 2017; and 	in 2018. CX-
0910C at Q/A 106 (citing CX-0012C; CX-0017C). To these amounts, Ingevity alleges he applied
allocation percentages of: 	and then 	for 2016; 	and 	for 2017; and
and 	for 2018. CIB at 113-114; see CX-0910C at Q/A 106. According to Ingevity, each of
the former percentages reflect “using Ingevity DI Products” and the latter, “containing a
honeycomb.” CIB at 113-114. The same process was applied to the canister manufacture taking
place at 	facility. Dr. Vander Veen reports investment of 	in 2016,
with allocation percentages of 	and then 	See CIB at 113-114; CX-0910C at Q/A

202
106. As with all prior investments above, no 2019 expenditures are considered the post-complaint
allocation removes November and December 2018 amounts.
Unlike the previous entities, however, the investments from licensee Stant are not over-
inclusive. The two levels of allocation Dr. Vander Veen applied to Stant’s total investments (see
CX-0910C at Q/A 105-106; CX-0017C) capture the same twelve models which are listed in
Ingevity’s list of DI Canisters (CIB at 36). 	Respondents’ additional challenges to the Stant
investments (RIB at 111; RX-0382C at Q/A 231-233) are not persuasive.
Lastly, for the licensed activity of respondent MAHLE, Ingevity applies a “book value of
MAHLE’s plant and equipment for production lines without MPAC for making canisters
which are production lines manufacturing only canisters with an Ingevity honeycomb
to practice the Patent . . . .” of 	CIB at 114 (citing CX-0910C at Q/A 111; CX-0144C at
337:10-340:21, 342:2-7); see CX-0553C. For this authorized activity, Dr. Vander Veen applies
no allocation but draws the 	figure directly from CX-0553C, which is the combined book
value (column G) of canister production lines that do not include MPAC (with the exception of
the “8 and 20” line). CX-0910C at Q/A 111.
This, however, does not match the list of MAHLE DI Canisters. As determined above,
the MAHLE DI Canisters include, as recited in Ingevity’s brief, those manufactured for the
CIB at 35
(citing, inter alia, CX-0641C at *3-4; CX-0909C at Q/A 2072-2077; JX-0095). This includes the
top table of models listed in CX-0641C (along with the one 	canister that includes
MPAC but is subject to written license), but not the bottom table of “service” canisters. But at the
deposition of John Jackson, it was explained that the

Ingevity’s own identification of the MAHLE DI Canisters (CIB at 35), the allocation is over-
inclusive and there is no discernible way to rectify this problem given the evidence. So Dr. Vander
Veen’s opinion regarding MAHLE investments cannot be considered in the significance analysis
below.

Respondents present an overarching argument that “Ingevity . . . identifies no legal
authority for relying on a Respondent’s [(i.e., MAHLE’s)] activities to prove DI.” RIB at 102. In
fact, Respondents themselves provide the legal authority, stating “[o]nly the products and activities
of a patentee or its licensee(s) can satisfy the domestic industry requirement” (id. at 101-102 (citing
Certain Audiovisual Components and Products Containing Same, Inv. No. 337-TA-837, Initial
Determination at 318-319 (July 19, 2013)). There is no logical reason why a respondent’s licensed
domestic activity may be not be used for domestic industry, at the same time the respondent’s
unlicensed activity may be used to prove infrmgement. Respondents state “[t]he purpose of
Section 337 is to protect and encourage investments in domestic industries.” RIB at 102 (citation
omitted). Indeed, an exclusion order against such a respondent would serve that exact purpose—
encourage the respondent to invest in their licensed domestic activity over the unlicensed
infringing activity.

Taken together, it is appropriate to consider the following licensee investments in plant and

equipment for purposes of subsection (A):

2015 2016 2017 2018

Leehan
Subsection (A) — Plant and
Equipment

| = mE

203

Stant
Subsection (A) — Plant and
Equipment

It is also helpful at this time to discuss the plant and equipment investments from licensee
Futaba, even though these are not presented in Ingevity’s initial post-hearing brief. Dr. Vander
Veen’s analysis of these investments suffers not so much from an over-inclusive allocation, but an
allocation that is far removed from Futaba’s business. The business and canister data received

from Futaba and relied on by Dr. Vander Veen is contained in CX-0041C/RX-0366C. See CX-

204

205
for years 2016-2018. CX-0041C at *2.
The document does not actually report how many of the three Futaba DI Canisters (see CIB at 35)
were produced during 2016-2018 as a percentage of all canisters (it has such forecast data for
2019); nor does it contain any indication that any amount of the three canisters were made during
this time. See id. at *2-3. At the deposition of Futaba’s witness, however, it was confirmed that
those production volume numbers listed in CX-0041C (corresponding to the labor and production
investments mentioned above) represent “only those canisters” listed at CX-0041C at *3. 	JX-
0227C at 35:23-36:8.
This is far from an ideal set of information from which to determine how much of Futaba’s
2016-2018 investment can properly be attributed to the three Futaba DI Canisters, as it lumps these
canisters in with three others that do not contain HCA, HCA-LBE, or BAX-LBE. See CX-0041C
at *3 (identifying 17300-TMB-H013, 42035AL00C, 14950-9FT0A). 	This is perhaps why Dr.
Vander Veen was only able to apply Ingevity’s own “Tier 3” forecast data as surrogate allocation.
CX-0910C at Q/A 109 (citing CX-0062C). Respondents challenge the use of this allocation (see
generally RIB at 111-112; RX-0382C at Q/A 241), but it is not so problematic as to justify
discounting all of Futaba’s investments. As noted below in the labor and capital discussion, the
Tier 3 allocation consists of percentages of: 	in 2016, 	in 2017, and 	in 2018.
See CX-0910C at Q/A 61, 92; CX-0062C. 	These values are conservative, given Futaba’s 2019
projections which would have the three Futaba DI Canisters consisting of at least
See CX-0041C at *3 (percentage assuming no contribution from the 42035AL01C DI
Canister). 	Dr. Vander Veen’s calculations for the Futaba investments, discussed now but only

206
counted in the labor and capital context below per Ingevity’s briefing, are therefore sound. See
CIB at 113-114.
2. 	Subsection (B), Labor and Capital
a. 	Ingevity Investments
For subsection (B), Ingevity considers its employment of labor and capital at each of the
and 	locations. See CIB at 114-118. Similar to its subsection
(A) analyses, it begins with overall investments in labor and capital for each location, then allocates
those amounts down to reflect that which can allegedly be attributed to canisters practicing the 844
patent. 	See id. 	This allocation, however, suffers in the same way as the plant and equipment
allocations—no connection has been shown between the investments and the specific set of
products, which are the DI Canisters as opposed to any product in which an Ingevity honeycomb
(or BAX LBE) might end up. 	For this reason alone, it is not proper to count these expenses.
Nevertheless, to aid the Commission, I address Dr. Vander Veen’s labor and capital analysis
below.
For 	Dr. Vander Veen calculated overall labor expenses of: 	in
2015; 	in 2016; 	in 2017; and 	in 2018. CX-0910C at Q/A 96.
Dr. Vander Veen describes this labor force as “working in operations, performance materials,
finance, and IT business functions,” “manufacturing employees,” and those
See id. at Q/A 94-95. 	He also identifies overall
capital expenses of 	in 2015; 	in 2016; 	in 2017; and
in 2018. 	Id. at Q/A 96. 	Onto these amounts he applied the same
and 	allocation percentages identified above in the subsection (A) analysis to
estimate the amount attributable to the production of honeycomb adsorbent at this location. Id. at
Q/A 97-99; CX-0062C; CX-0063C. Ingevity notes, as it did for plant and equipment, that these

labor and capital investment amounts “can be allocated to address Canada, China, Europe, and
MAHLE’s Accused Canisters.” CIB at 115 n. 49. It is helpful, in an abundance of caution, to
similarly apply an allocation percentage to remove post-complaint expenditures as well. In sum,

the alleged investments in labor and capital for the Waynesboro location are as follows:

Ingevity 2015 2016 2017 2018

Subsection (B) — Labor and
Zz
a
a
|
a

Capital

Ingevity also presents investments related to labor and capital at the Po and

po P| Dr. Vander Veen describes the P| and p | labor force

roughly as “working in operations, performance materials, finance, and IT business functions,”

P| CX-0910C at Q/A 84; see id. at Q/A 89. He identifies labor expenses iim
EE 2200s os

207

a =: ER iv 2015-2018 for RR ia. at QA 91, 86. He
identifies capital expenses for I of EE EE GE ac
GE iv the same timeframe; and those for I «> RE
«(see ic. at V/A 86, 91.

Applying the same procedures outlined above under subsection (A) to the labor and capital

expenditures for the P| and p | locations, yields the following even though, for

reasons explained above, the amounts are not considered for economic prong purposes:

Ingevity 2015 2016 2017 2018

Subsection (B) — Labor and
|
ZZ
=
Zz
=

Capital

See CIB at 116-117 (citing CX-0910C at Q/A 84-88; JX-0027C; JX-0018C).

Ingevity | 2015 | 2016 | 2017 | 2018

208

Subsection (B) - Labor and Capital
%
%
%
A
%
%
%
%
%
%
%
%
209

Attributable
PP&E

See CIB at 117 (citing CX-0910C at Q/A 89-93; JX-0027C; JX-0018C).

In addition to the foregoing amounts of labor and capital, Ingevity also claims it “employs
| | R&D employees working on the DI Products in South Carolina” who “have worked on
for the DI Products. CIB at 117 (citing CX-0910C at Q/A 75-76); see CX-0910C at Q/A 77. Dr.

Vander Veen calculates salary and benefits for these R&D employees as: po in 2015;

PE iv 2016 in 2017, and RR in 2018. cx-09100 at QA 79; IX-
0011C. Dr. Vander Veen testified that Pp spent between | | and ii

of their time on the Domestic Industry Products, ad employees spent || of their
time on the Domestic Industry Products,” based on project logs, conversations with Ingevity
personnel, and other witness testimony. Jd. at Q/A 80-81. He thus applied varying allocation
percentages to each of the employees to capture the amount of their salaries attributable to
products which would be understood as practicing the 844 patent.

Unlike the calculations i ii and i Ingevity does not offer
to further allocate these labor expenses to remove canisters destined for the Canada, China, and
Europe Markets, or MAHLE’s accused canisters. See CIB at 117-118. It is appropriate to do so,
however, given the lack of any indication that the research and development efforts do not apply
to such products. See CX-0910C at Q/A 76-77 (describing nexus between research and

development and all “Domestic Industry Products” as a whole), 80-81 (describing same). An

210

allocation removing any post-complaint expenditures is warranted as well.!? The resulting
investment with all of these allocations applied is shown below, even though the amounts are not

considered for economic prong purposes due to a lack of connection to the DI Canisters:

Ingevity 2015 2016 2017 2018
Subsection (B) — Labor and
Capital

Apart from those criticisms from Respondents discussed above, which apply to both
subsection (A) and (B) analyses (see RIB at 109-114), Respondents raise a number of criticisms

specific to Ingevity’s R&D labor and capital calculus. They do not, however, undermine the

R Dr. Vander Veen removes a December salary for || employees on the grounds that they

no — worked at Ingevity by that time (CX-0910C at Q/A 79), so a post-complaint allocation

of is redundant for their salaries. This duplication cannot easily be undone,
however, and is otherwise not a significant loss given the overall amounts at issue.

211

212
claimed investments beyond Ingevity’s consistent failure to allocate down to the DI Canisters. I
discuss each below to aid the Commission’s analysis.
Respondents argue an Ingevity 	has been improperly
included as this group, as confirmed by Ingevity witness, Mr. Williams, to do
in an 	RIB at 114 (citing RX-0382C at Q/A 166-168;
RX-0746C at 638:22-640:3; Hr’g Tr. at 169:24-170:10; CX-0911C at Q/A 5-6). This activity need
not be excluded in a subsection (A) or (B) analysis, however, given the Commission’s general
guidance that technical customer service, or even technical sales staff, may be cognizable when it
supports otherwise qualifying domestic activities. See Collapsible Sockets, Inv. No. 337-TA-1056,
Comm’n Op. at 17-20; Certain Non-Volatile Memory Devices and Products Containing Same,
Inv. No. 337-TA-1046, Initial Determination at 185-186 (Apr. 27, 2018) (“Non-Volatile Memory”)
(aff’d in relevant part); Certain Marine Sonar Imaging Devices, Including Downscan and Sidescan
Devices, Products Containing the Same, and Components Thereof, Inv. No. 337-TA-921, Comm’n
Op. at 57-58 (Jan. 6, 2016). Notably, the efforts of the 	include
CX-0913C at Q/A 57-73.
With that said, Ingevity’s contention that while this group was included in the labor
allocation base, it would have been excluded by Dr. Vander Veen’s allocation of “time spent by
each R&D employee to include only the R&D specific to DI products while removing other
projects unrelated to DI Products,” is unpersuasive. CRB at 71 (citing CX-0910C at Q/A 80-81;
CX-0912C at Q/A 240-253). The allocation percentages provided in CDX-0002C.7 are so high
that to view them as excluding 	is to leave almost no time for personnel

213
to fulfill this role. See CX-0913C at Q/A 36 (noting 	42-73
(variety of services offered), 75 (activities are “frequent and regular”).
Respondents argue that Ingevity’s R&D expenses cannot possibly apply to the “claimed
DI Product” because the DI Products (BAX and honeycombs) are not new or in development and
have been established for some time (see RIB at 115-116 (citing RX-0382C at Q/A 170-171, 201-
202; CX-0910C at Q/A 77; JX-0250C at 38:12-25, 406:11-407:19, 425:9-429:5, 483:11-
484:10629:17-646:1; JX-0252 at 373:18-376:21, 447:3-448:15, 451:13-16; JX-0001 at 8:10-18).
But Ingevity has presented credible testimony that despite the long term offerings of BAX and
honeycomb products,
See CX-0912C at Q/A 240-253; compare
JX-0252C at 373:18-24 with JX-0252C at 374:4-376:8. Further, Ingevity has adequately explained
Respondents’ cited example of 	(RIB at 116 (citing RX-0382C at Q/A 173;
JX-0250C at 631:1-18)) as
(see CRB at 71 (citing JX-0250C at 631:1-14)).
I am similarly not moved by Respondents’ insistence that a certain spreadsheet, excluded
from evidence via Order No. 21, is critical to support the claims of these R&D efforts such that its
absence means Ingevity’s witness testimony is unreliable. 	See RIB at 116. 	It is not seriously
disputed that Mr. Williams has personal knowledge of the same information that spreadsheet
would have contained.
b. 	Licensee Investments
In addition to its own investments, Ingevity presents the labor and capital expenses of its
licensees—Leehan, Kayser, Stant, Futaba, and MAHLE—for economic prong consideration. CIB
at 118-120.

214
For Leehan, Ingevity’s expert, Dr. Vander Veen, reports total labor investments for making
canisters in 	of: 	in 2016; 	in 2017; and 	in
2018. CX-0910C at Q/A 103; see CX-0160C. He reports total capital investments as:
in 2016; 	in 2017; and 	in 2018. 	CX-0910C at Q/A 103; see CX-0160C.
Ingevity notes that the same allocation percentages as for plant and equipment can be applied (CIB
at 119), and this is done in the table that follows, taking into account those allocation adjustments
deemed necessary in the plant and equipment analysis above.
For Futaba, Dr. Vander Veen reports it manufactures fuel vapor canisters in
which make up about 	of the factory’s output. See CIB at 119 (citing CX-0910C at
Q/A 108). 	He explains that those canisters in turn make up about 	of all canisters Futaba
produces. 	CX-0910C at Q/A 108. 	He identifies labor investments of: 	in 2016;
in 2017; and 	in 2018. Id. at Q/A 109. He also identifies capital investments
“specifically related to the canister business – which includes operational costs such as utilities,
materials, depreciation, overhead, and equipment” of: 	in 2016; 	in 2017;
and 	in 2018. Id. He and Ingevity note that these amounts should be then allocated to
reflect “the percentage of vehicles meeting Tier 3 emissions standards as estimated by Ingevity (in
the same way as above).” 	Id.; CIB at 119. 	Through division of Dr. Vander Veen’s ultimate
investment figures, this appears to mean those allocation percentages identified in Q/A 61 of his
witness statement: 	in 2016, 	in 2017, and 	in 2018. See CX-0910C at Q/A 61,
92; CX-0062C. For reasons explained above in the plant and equipment context, these allocation
percentages are reliable, even conservative. As with all other calculations of the DI Canisters, a
post-complaint allocation for year 2018 is applied, as well.

215
For Stant, Dr. Vander Veen reports total “direct manufacturing labor and indirect support
labor” for making canisters in 	of: 	in 2016; 	in 2017;
and 	in 2018. CX-0910C at Q/A 106. He also reports “operations (including supplies
used for manufacturing, utility expenses, etc.)” expenses of: 	in 2016; 	in
2017; and 	in 2018. 	Id. 	For 	he reports labor investments of:
in 2016; and 	in 2017. 	Id. 	For capital investment at the same location he
reports: 	in 2016; and 	in 2017. Id. To these figures, he applies the same
allocations as in plant and equipment, and these allocations are adopted.
For respondent MAHLE, Dr. Vander Veen reports “direct labor” involved in the
manufacture of canisters that do not contain MPAC at
in 2017; and 	in 2018. 	CX-0910C at Q/A 111. 	He further identifies operating
expenditures “includ[ing] machine costs that are allocated to each unit produced, freight costs, as
well as material overhead costs” of: 	Id. As with
plant and equipment, he applies no further allocations, but the same post-complaint allocation as
with all other similar activities that stretch into 2018 is applied. As explained above in the plant
and equipment context, however, Dr. Vander Veen’s allocations are over-inclusive, as they
encompass more canister models than those identified as DI Canisters. As this cannot be remedied
using the available record, it is inappropriate to consider MAHLE’s labor and capital investments
for economic prong purposes.
For Kayser, Dr. Vander Veen reports total labor investment for making canisters in
of: 	in 2016; 	in 2017; and 	in 2018. CX-0910C at
Q/A 114. 	He also reports capital investment of: 	in 2016; 	in 2017; and
in 2018. Id. To these figures he applies the same allocations as in plant and equipment,

and these are accepted. Again, however, Dr. Vander Veen’s Kayser allocations are over-inclusive

as they encompass more canister models than those identified as DI Canisters, and more business

activity than can be attributed to canister production. As this cannot be remedied using the

available record, it is inappropriate to consider Kayser’s labor and capital investments for

economic prong purposes.

Respondents do no present any disputes over labor and capital investments from these

entities, apart from those discussed above in the plant and equipment context. Taken altogether

then, the available licensee investments in labor and capital for economic prong consideration are

below:

2015

2016

2017

2018

Leehan
Subsection (B) — Labor and
Capital

%

%

BS OE

Futaba
Subsection (B) — Labor and
Capital

216

b
|

.

L
|

Stant
Subsection (B) — Labor and
Capital

|

3. Subsection (C), Research and Development

Alongside subsections (A) and (B), Ingevity contends it satisfies economic prong under
subsection (C) due it its own research and development efforts “on projects relating to the DI

Products.” CIB at 120. Ingevity references the same | | scientists and engineers discussed

217

above for the Po location, and references Dr. Vander Veen’s calculations
of attributable salary as: p in labor for 2015; P| in 2016; cy in 2017;

and BM in 2018. Jd. at 120-121 (citing CX-0910C at Q/A 77-82, 127-128; JX-0011C).
Unlike the evaluation of this labor in the subsection (B) context, only one additional allocation is
necessary here—removal of efforts occurring after the filing of the complaint. The “nexus”
requirement for subsection (C) can be met through allocation to patent-practicing articles, but it is
not necessary, as there is only a need to have a nexus to the asserted intellectual property.
Integrated Circuit Chips, Inv. No. 337-TA-859, Comm’n Op. at 36-37. For this reason, the lack
of a connection between Ingevity’s plant, equipment, labor, and capital expenses, and the actual
set of DI Canisters, does not apply for subsection (C) purposes.

With respect to that required “nexus,” Ingevity argues “[t]he included R&D projects have
a nexus to the ’844 Patent because they involve R&D relating to DI Products used to practice the
patent.” CIB at 121 (citing CX-0912C at Q/A 240). Ingevity continues, “[t]hese R&D activities
include improvements in po and in the PO
practicing the ’844 Patent.” Jd. (citmg CX-0912C at Q/A 243-245; CX-0910C at Q/A 130-131).
Given that the research and development efforts funded by Dr. Vander Veen’s calculated
investments are related to adsorbents which would serve either as the “initial adsorbent volume”
or the “subsequent adsorbent volume” in, for example, claim 1 of the 844 patent, the requisite
nexus is met. The resulting investments in exploitation of the 844 patent are shown in the table

below:

Ingevity 2015 2016 2017 2018
Subsection (C) — Research and
Development

218

On this topic, the majority of Respondents’ concerns have already been addressed above
under subsection (B). See RIB at 115-116. As to subsection (C) specifically, Respondents
complain that “Dr. Vander Veen’s nexus analysis is based entirely on conversations with
Ingevity,” and not on any expertise. RIB at 117 (citing RX-0382C at Q/A 199; CX-0910C at Q/A
129-132). Respondents also contend the age of the 844 patent must mean the R&D efforts from
2015-2019 cannot be in relation to it, and are otherwise “not tied to the ’844 patent or any DI
Product.” Jd. (citing RX-0382C at Q/A 200). Respondents also highlight a Po
PF as one mentioned by Dr. Vander Veen in support of nexus, but admitted to relate
to yl which is not one of the DI Products. See id. (citing Hr’ g Tr. at 337:2-338:12).

None of these points affects the determination that Ingevity’s cited R&D has a connection
to adsorbents that would serve either as the “initial adsorbent volume” or the “subsequent
adsorbent volume” according to the 844 patent claims. Subsection (C) research and development
is not limited to the development of the patent itself, as Dr. Akemann would suggest. See RX-
0382C at Q/A 200. With respect to Dr. Vander Veen’s reliance on conversations with Mr.
Williams on this topic (CX-0910C at Q/A 131), Mr. Williams testified to the same information

(CX-0912C at Q/A 245) and there is no reason to question its reliability. Further, Dr. Vander Veen

explained at the hearing that Po was a project excluded from his subsequent

219

220
second-round allocation, based on his conversations with Mr. Williams. 	Hr’g Tr. at 336:23-
338:12; see CX-0912C at Q/A 246-253.
B. 	“Significant” or “Substantial”
The next step in the evaluation of domestic industry is to determine if the investment
amounts identified above are “significant,” as in subsections (A) and (B), or “substantial,” as in
subsection (C). 	The most recent precedential decision by the Court of Appeals for the Federal
Circuit addressing this determination is Lelo, which restated law applicable to a number of issues
surrounding the economic prong of domestic industry. See 786 F.3d at 883-85. In particular, the
Federal Circuit held that the statutory terms “‘significant’ and ‘substantial’ refer to an increase in
quantity, or to a benchmark in numbers” and “[a]n ‘investment in plant and equipment’ therefore
is characterized quantitatively, i.e., by the amount of money invested in the plant and equipment.”
Lelo, 786 F.3d at 883. 	Continuing, the Federal Circuit held “[a]ll of the foregoing requires a
quantitative analysis in order to determine whether there is a ‘significant’ increase or attribution
by virtue of the claimant’s asserted commercial activity in the United States.” 	Id. 	In short,
“[q]ualitative factors cannot compensate for quantitative data that indicate insignificant investment
and employment.” Id. at 885. The Commission has since made clear that some sort of comparative
analysis must be made before significant or substantial can be found. See, e.g., Certain Gas Spring
Nailer 	Products 	and 	Components 	Thereof, 	Inv. 	No. 	337-TA-1082, 	Notice 	of 	Comm’n
Determination at 3 (Dec. 12, 2019) (“Gas Spring Nailers”); Certain Carburetors and Products
Containing Such Carburetors, Inv. No. 337-TA-1123, Comm’n Op. at 17-19 (Oct. 28, 2019)
(“Carburetors”)
As explained above, Ingevity’s own investments under subsections (A) and (B) are not
sufficiently tied to the DI Canisters to warrant consideration of significance. The same is true for

licensees Kayser and MAHLE. What remains are: the plant and equipment expenses of licensees
Leehan and Stant under subsection (A); the labor and capital expenses of Leehan, Stant, and Futaba
under subsection (B); and the research and development expenses of Ingevity under subsection
(C). Whether each has been shown to be “significant” (for subsections (A) and (B)), or
“substantial” (for subsection (C)) is discussed below.

Although made in a context where all of the alleged investment from all of the licensees is
accepted and considered, Ingevity’s initial post-hearing brief argues the investments “are between
} | and | | of manufacturing production in 2018 at the identified plants, making [them]
significant.” CIB at 114 (citing CX-0910C at Q/A 138). Ingevity’s reply post-hearing brief
phrases the rationale slightly differently, stating, “Dr. Vander Veen also found the investments
significant based on the percentage of investments made in the U.S. for canisters that practice the
Patent as opposed those that do not practice the patent.” CRB at 70 (citing CX-0910C at Q/A
138). In both discussions, the same explanation from Dr. Vander Veen is cited, however, and that
testimony reads:

Q138. Did you form an opinion as to whether the investments third party
manufacturers have made in the domestic industry are significant?

A138. Yes. As discussed above, third party manufacturers have also made
domestic investments related to the articles protected by the Asserted Patent
. Based _on the

(CX-0156C, CX-
eposition of Dong Yoon Kwak, July
9, 2019, at page 29; Deposition of Julien Chemali, July 8, 2019, at pages
43-44; Deposition of James Freyman, July 9, 2019, at Exhibit 5;
KAYSER0001]]). Furthermore, the third party manufacturing related to the
Domestic Industry Products accounts for between = and of
overall production in 2018 (based on information produced by Leehan,
Stant, and Kayser). These investments totaled between and
in 2018 and further support the significance of the domestic
industry investments in plant, equipment, and the employment of labor and
capital.

221

CX-0910C at Q/A 138. In contrast, Respondents’ expert, Dr. Akemann, offers no opinion on
whether such customers’ investments are significant or not. See CRB at 70 (citing Hr’g Tr. at
803:24-804:24); see RX-0382C at Q/A 213-255.

Dr. Vander Veen’s reference to || and i of overall production seems to mean the
allocation percentages he used for Stant in 2018 (see CX-0910C at Q/A 106 (product of |
and 7) and Kayser in 2018 (see id. at Q/A 114). Leehan’s respective percentage, under the
same approach, would be | Id. at Q/A 103. I understand these percentages to reflect the
percentage of overall facility activity. See CX-0676C at *3 (Leehan); CX-0017C at *3 (Stant).
Dr. Vander Veen’s reference to P| is explained as the sum of plant, equipment, labor,
and capital from Leehan, Stant, and Kayser, together. Jd. at Q/A 115. The iii figure is
the same sum but, with MAHLE and Futaba added. Jd. at Q/A 115.

In keeping with the same analytical framework as Dr. Vander Veen (which is limited to
evaluating only year 2018), and considering those allocation and evidentiary issues discussed
above, the relevant manufacturing percentages of products practicing the patent as compared to
total facility production for Leehan, Futaba, and Stant become | | and S|
respectively.'? Further, the combined plant, equipment, labor, and capital expenses for the same
year becomes a As to this latter calculation, the Commission typically determines
“significant” or “substantial” investment for each of subsections (A), (B), and (C), individually

(see Certain Robotic Vacuum Cleaning Devices and Components Thereof such as Spare Parts,

13 For Futaba, the

figure is based on the product of Dr. Vander Veen’s assertion “that

|| of the business is dedicated to cannister related business,” and

Ingevity’s tier 3 canister proportion of| for the year 2018.

4 This is the sum of (Leehan 2018 plant and equipment), (Stant 2018
(Leehan 2018 labor and capital), —_ 2018 labor

plant and equipment),
and capital), and (Stant 2018 labor and capital).

222

223
Inv. No. 337-TA-1057, Comm’n Op. at 11 (July 16, 2018) (“Given that these [subsections] are
listed in the disjunctive, satisfaction of any one of them will be sufficient to meet the domestic
industry requirement.”) (“Robotic Vacuums”)), but Dr. Vander Veen’s combination of them is
reasonable. A significant sum spread across domestic plant and labor has the same beneficial value
to the United States as a significant sum directed to labor alone. Thus, there is no obvious error in
a combined subsection (A) and (B) approach, and Respondents have not raised one either.
But significance has nonetheless not been adequately shown through these metrics. The
Commission recently made clear that the absolute value of investment, devoid of any context, is
insufficient to show significance. Carburetors, Inv. No. 337-TA-1123, Comm’n Op. at 17-18; see
Gas Spring Nailers, Inv. No. 337-TA-1082, Notice of Comm’n Determination at 3. 	The
Commission also stated that “[s]ignificance is based on the marketplace conditions regarding the
articles protected by the Asserted Patents. The fact that a complainant may have substantial sales
of other products is not pertinent to this analysis.” Carburetors, Inv. No. 337-TA-1123, Comm’n
Op. at 28. A natural extension of this rule is that an entity’s activities or investments in support of
other products (i.e., that which would lead to sales) are also not pertinent to the analysis.
As discussed, Dr. Vander Veen proposes to evaluate significance using the percentage of
manufacturing output for each licensee. See CX-0910C at Q/A 138. This equates to a comparison
of activity in support of articles protected by the 844 patent and activity in support of “other
products.” According to the Commission’s instruction in Carburetors, this is not pertinent. As
this is the only context Dr. Vander Veen proposes (see id.), he has not sufficiently explained
significance. Thus, the domestic industry requirement has not been shown under subsections (A)
and (B).

224
As to subsection (C), Ingevity argues its research and development labor expenditures of
between 	and 	per year between 2015 and 2018 occurs
CIB at 121 (citing CX-0910C at Q/A 137). Ingevity reasons that
these domestic investments are substantial
compared to Ingevity’s foreign investments.” 	Id. (citing Carburetors, Inv. No. 337-TA-1123,
Comm’n Op. at 18-19). Ingevity adds that it represents
“further demonstrating its substantiality.” Id. Dr. Vander Veen’s testimony, cited
by Ingevity, is slightly different. 	He explains
CX-0910C at Q/A 137. 	Respondents’ expert, Dr. Akemann, calls
substantiality into question based on 2018’s reported R&D expense of 	as being only
of “Ingevity’s total ‘Research and technical expenses’” for that year, and 	of Ingevity’s
Net Sales. RX-0382C at Q/A 208.
The record supports finding Ingevity has invested 	in research and development
in exploitation of the 844 patent between 2015-2018. This is substantial, especially in view of Dr.
Vander Veen’s uncontested statement that 	occurs
overseas (CX-0910C at Q/A 137). 	Dr. Akemann’s metrics, comparing DI Product R&D to all
other R&D (for all products/projects) or overall sales are effectively comparisons to “other
products” and are thus “not pertinent” given Carburetors. Additionally, while the instruction in
Carburetors was given in regard to “significant” under subsections (A) and (B), the Federal Circuit
has held “substantial” under subsection (C) is an analogous concept. Lelo, 786 F.3d at 884 (“the
terms "significant" and "substantial" refer to an increase in quantity, or to a benchmark in

225
numbers”). Accordingly, I find economic prong domestic industry is satisfied under subsection
(C).
VI. 	CONCLUSIONS OF LAW
1. 	The Commission has in rem jurisdiction over the accused products, fuel vapor
canisters containing MPAC.
2. 	The importation or sale requirement of Section 337 is satisfied for all respondents.
3. 	Ingevity, its customers, and operators of the domestic industry articles have been
shown to practice claims 1-5, 8, 11-14, 16, 18, 19, 21, 24-27, 29, 31, 33, 36, 37, 38,
39, 41, 43, 45, 48, 49, 50, 51, and 53 of U.S. Patent No. RE 38,844.
4. 	The domestic industry requirement is satisfied with respect to the 844 patent.
5. 	Respondent MAHLE directly and/or indirectly infringes claims 1-5, 8, 11, 13, 18,
19, 21, 24, 31, 33, 36, 38, 43, 45, 48, and 50 of the 844 patent.
6. 	Respondents Kuraray and Nagamine indirectly infringe claims 1-5, 8, 11, 13, 18,
19, 21, 24, 31, 33, 36, 38, 43, 45, 48, and 50 of the 844 patent.
7. 	Claims 1-5, 8, 11-14, 16, 18, 19, 21, 24-27, 29, 31, 33, 36, 37, 38, 39, 41, 43, 45,
48-51, and 53 of the 844 patent have been shown to be invalid under 35 U.S.C. §
102 and/or 35 U.S.C. § 103.
8. 	Independent claim 18, and those depending therefrom, have been shown to be
invalid under 35 U.S.C. § 112.
9. 	Independent claims 1, 31, and 43, and those depending therefrom, have not been
shown to be invalid under 35 U.S.C. § 112.
10. 	The 844 patent has not been shown to be unenforceable.
11. 	Patent exhaustion does not bar Ingevity’s sought relief.
12. 	There is no violation of Section 337 with respect to the 844 patent.

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VII. 	RECOMMENDED DETERMINATION ON REMEDY AND BOND
The Commission’s Rules provide that subsequent to an initial determination on the
question of violation of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, the
administrative law judge shall issue a recommended determination concerning the appropriate
remedy in the event that the Commission finds a violation of section 337, and the amount of bond
to be posted by respondent during Presidential review of the Commission action under section
337(j). See 19 C.F.R. § 210.42(a)(1)(ii).
The Commission has broad discretion in selecting the form, scope, and extent of the
remedy in a section 337 proceeding. 	Viscofan, S.A. v. Int’l Trade Comm’n, 787 F.2d 544, 548
(Fed. Cir. 1986). 	Under Section 337(d)(1), if the Commission determines as a result of an
investigation that there is a violation of section 337, the Commission is authorized to enter either
a limited or a general exclusion order. 19 U.S.C. § 1337(d)(1). A limited exclusion order instructs
the U.S. Customs and Border Protection (“CBP”) to exclude from entry all articles that are covered
by the patent at issue and that originate from a named respondent in the investigation. A general
exclusion order instructs the CBP to exclude from entry all articles that are covered by the patent
at issue, without regard to source. 	Certain Purple Protective Gloves, Inv. No. 337-TA-500,
Comm’n Op. at 5 (Dec. 22, 2004). Under section 337(f)(1), the Commission may issue a cease
and desist order in addition to, or instead of, an exclusion order. 	19 U.S.C. § 1337(f)(1). 	The
Commission generally issues a cease and desist order directed to a domestic respondent when there
is a “commercially significant” amount of infringing, imported product in the United States that
could be sold, thereby undercutting the remedy provided by an exclusion order. 	See Certain
Crystalline Cefadroxil Monohydrate, Inv. No. 337-TA-293, USITC Pub. 2391, Comm’n Op. on
Remedy, the Public Interest and Bonding at 37-42 (June 1991); Certain Condensers, Parts Thereof

227
and Prods. Containing Same, Including Air Conditioners for Automobiles, Inv. No. 337-TA-334
(Remand), Comm’n Op. at 26-28, 1997 WL 817767, at *11-12 (U.S.I.T.C. Sept. 10, 1997).
Additionally, during the 60-day period of Presidential review under 19 U.S.C. § 1337(j),
“articles directed to be excluded from entry under subsection (d) . . . shall . . . be entitled to entry
under bond prescribed by the Secretary in an amount determined by the Commission to be
sufficient to protect the complainant from any injury.” 	See 19 U.S.C. § 1337(j)(3). 	“The
Commission typically sets the bond based on the price differential between the imported infringing
product and the domestic industry article or based on a reasonable royalty. However, where the
available pricing or royalty information is inadequate, the bond may be set at one hundred (100)
percent of the entered value of the infringing product.” 	Certain Industrial Automation Systems
and Components Thereof Including Control Systems, Controllers, Visualization Hardware,
Motion and Motor Control Systems, Networking Equipment, Safety Devices, and Power Supplies,
Inv. No. 337-TA-1074, Comm’n Op. at 13 (Apr. 23, 2019) (“Automation Systems”) (public
version) (citation omitted).
A. 	Limited Exclusion Order
Should a violation be found, Ingevity argues limited exclusion orders should issue against
all Respondents and their affiliates “based on their ability to import and distribute those products.”
CIB at 122 (citing, inter alia, 19 U.S.C. § 1337(d)(1); Spansion, Inc. v. Int’l Trade Comm’n, 629
F.3d 1331, 1359-60 (Fed. Cir. 2010)). 	Ingevity continues, “[n]o exemptions to the limited
exclusion order are warranted,” as Respondents have known of the 844 patent for many years. See
id. at 123. Ingevity adds that no certification provision is appropriate because “no canister system
that uses MPAC avoids infringement 100% of the time but if one is used, Respondents should be
required to certify MPAC would be used in canister systems that never infringe.” Id.

228
Respondents oppose the entry of limited exclusion orders against each of MAHLE,
Kuraray, and Nagamine, on the same grounds they disputed the importation requirement discussed
above. 	See RIB at 119-120. 	As determined above, the importation requirement is satisfied for
each of MAHLE, Kuraray, and Nagamine. 	Further, the Commission has instructed that limited
exclusion orders are intended to prevent importation of infringing products as well as components
of those products, as “any other rule would allow manufacturers of infringing products to
circumvent the order by simply importing the components instead of the finished products and
assembling the finished products once the components are already in the United States.” Certain
Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067, Comm’n Op. at 13
(Aug. 7, 2019) (citation omitted). 	As MPAC is a significant imported component of MAHLEs
finished infringing products, there is no reason a limited exclusion order should not apply to
importers of MPAC (i.e., Kuraray) or those who sell it for importation (i.e., Nagamine).
Accordingly, under 19 U.S.C. § 1337(d)(1), it is my recommended determination that limited
exclusion orders should issue against each respondent should a violation be found.
Respondents also request a delay of 12-18 months for any exclusion order to take affect
“so non-Respondent automobile manufacturers can design and certify replacement canisters and
avoid unintended adverse consequences, particularly here where environmental pollution is at
stake.” RIB at 124 (citing RX-0449; JX-0252C at 225:9-15). 	Respondents further request a
“grandfather clause” to “mitigate the adverse impact to third parties using Respondents’ products,
or who ordered a product from Respondents prior to the entry of a remedial order.” Id. at 125. 	It
seems clear each of these requests is based on public interest grounds, but the Commission has not
directed me to make findings on the public interest. See 83 Fed. Reg. 64,356 (Dec. 14, 2018); RIB

229
at 124 (citing RX-0449 (respondent MAHLE Public Interest Statement)). 	Thus, I decline to
determine whether a delay or grandfather clause is warranted.
Last, Respondents argue any exclusion order should include a certification provision,
because “Respondents import unaccused products, including canisters that do not use MPAC and
MPAC lots for which it is impossible to determine infringement.” RIB at 125 (citing RX-0370C
at Q/A 92-112; Hr’g Tr. at 196:25-197:13). 	Ingevity argues a certification is not appropriate
because “no canister system that uses MPAC avoids infringement 100% of the time, but if one is
used, Respondents should be required to certify MPAC would be used in canisters systems that
never infringe.” CIB at 123.
The Commission has instructed that “[c]ertification provisions aid U.S. Customs and
Border Protection (‘CBP’) in enforcing Commission orders but ‘do not mandate that CBP accept
certification as proof that the articles in question are not covered’ by the limited exclusion order.”
Certain Robotic Vacuum Cleaning Devices and Components Thereof Such as Spare Parts, Inv.
No. 337-TA-1057, Comm’n Op. at 55 (Feb. 1, 2019). Additionally, according to the Commission,
“[t]he standard provision does not allow an importer to simply certify that it is not violating the
exclusion order. 	Rather, CBP only accepts a certification that the goods have been previously
determined by CBP or the Commission not to violate the exclusion order” and “it has been
Commission practice for the past several years to include certification provisions in its exclusion
orders to aid CBP.” See Road Milling Machines, Inv. No. 337-TA-1067, Comm’n Op. at 15, 15
n. 5 (citations omitted). As Respondents do not appear to argue for any non-standard certification
provision, it is my recommendation that any limited exclusion order should include the
Commission’s standard certification provision.

230
B. 	Cease and Desist Order
Ingevity contends “[a] cease-and-desist order is necessary because it is undisputed that
See CIB
at 123 (citing CX-0296C; CX-0297C; CX-0910C at Q/A 143). 	Ingevity adds that “there is no
requirement that any inventory be maintained or that any inventory be ‘commercially significant.’”
Id. (citing Certain Digital Models, Digital Data, and Treatment Plans for Use in Making
Incremental Dental Positioning Adjustment Appliances, the Appliances Made Therefrom, and
Methods of Making the Same, Inv. No. 337-TA-833, Comm’n Op. at 147 (Apr. 10, 2014); Certain
Table Saws Incorporating Active Injury Mitigation Technology and Components Thereof, Inv. No.
337-TA-965, Comm’n Op. at 6-7 n.2 (Feb. 1, 2017)). 	Ingevity argues it cannot be faulted for
failing to provide sales information as Respondents failed to provide it (see id. at 123-124), and,
in the event a violation is found, Kuraray, through CCC, has an incentive “to ramp up production
overseas and stockpile [] additional volume and [it] has the capacity to do so” (id. at 124 (citing
JX-0230C at 420:23-25, 421:2-19)). Ingevity also suggests respondents MAHLE NA, MAHLE
Mexico, and MAHLE Canada maintain inventory because OEM agreements require them “to have
a certain amount of replacement parts” (id. (citing JX-0230C at 300:5-18; CX-0641C at *3-4; JX-
0232C at 38:13-24, 39:1-3, 39:5-13)).
In opposition, and as to respondent MAHLE, Respondents highlight that Ingevity’s remedy
expert, Dr. Vander Veen, “admitted he presented no opinion or discussion regarding MAHLE’[s]
inventory of MPAC or any Accused Canister” (RIB at 120 (citing Hr’g Tr. at 312:10-18)), while
their own expert, Dr. Akemann, “testified that MAHLE’s small inventory levels of Accused
Products is not, in his opinion, commercially significant” (id. at 120-121 (citing RX-0382C at Q/A
267-272)). 	Respondents also allege the evidence rebuts the accusation that “MAHLE is

231
stockpiling, or even would or could stockpile.” 	Id. at 121 (citing RX-0382C at Q/A 284; JX-
0224C at 29:23-30:2; JX-0241C at 94:21-95:9; JX-0040C; JX-0226C at 53:13-24; RX-0733C;
RX-0734C).
As to Nagamine, Respondents state flatly “Nagamine has no U.S. presence, and thus, no
U.S. inventory.” RIB at 121 (citing, inter alia, RX-0378C at Q/A 44; RX-0379C at Q/A 30; RX-
0382C at Q/A 80, 287; JX-0134C; JX-0242C at 74:19-21). 	As to Kuraray, Respondents admit
Kuraray, through its subsidiary CCC, “is the only Respondent that imports MPAC or holds U.S.
inventory,” yet this inventory is
and, therefore, not commercially significant. See id. at 121-122 (citing,
inter alia, RX-0382C at Q/A 275-277). 	Again, Respondents dispute Kuraray, through CCC, is
stockpiling MPAC in the United States or has an incentive to, based on the Supply Agreement
with MAHLE. 	Id. at 122-123 (citing RX-0382C at Q/A 284-286; RX-0733C; RX-0734C; JX-
0226C at 53:13-24; RX-0200C).
Complainants bear the burden on the issue of cease and desist orders. Certain Microfluidic
Devices, Inv. No. 337-TA-1068, Comm’n Op. at 23 (Jan. 10, 2020). Such orders “are generally
issued when, with respect to the imported infringing products, respondents maintain commercially
significant inventories in the United States or have significant domestic operations that could
undercut the remedy provided by an exclusion order.” Id. at 22-23 (citations omitted). Ingevity
does not argue a cease and desist order should apply to Nagamine, and I similarly do not
recommend one because it simply sells its product to Kuraray in Japan. 	As to Kuraray, and its
subsidiary CCC, Respondents have admitted that they hold 	of their annual MPAC
production in the United States, which amounts to approximately 	RIB at 122 (citing RX-
0382C at Q/A 277). 	Further, despite Respondents’ characterization (RIB at 122), Ingevity’s

232
expert, Dr. Vander Veen, did provide a standard to evaluate commercial significance—the number
of months worth of inventory. CX-0910C at Q/A 143. Whether the 	of MPAC comprises
of inventory is of little significance; as Respondents’
expert, Dr. Akemann, testified, 	is “in line with overall average manufacturing industry
levels” and “consistent with modern business practices.” RX-0382C at Q/A 276 (citing RX-0761;
RX-0762). Although this latter observation was given, presumably, as evidence that
of inventory is not commercially significant, it is actually persuasive evidence of significance. If
one competitor in the market does not have 	of inventory on-hand, and all others do,
that one actor is at a commercial disadvantage compared to the others (i.e., commercial
significance). And 	of MPAC is surely not trivial. Accordingly, it is my recommendation
that a cease and desist order should issue against Kuraray and its wholly-owned subsidiary CCC.
As to MAHLE, Ingevity has not met its burden to show a commercially significant
inventory, or really, a meaningful inventory at all. Ingevity cites deposition testimony of MAHLE
witness Mr. Lau, for support (CIB at 124 (citing JX-0232C at 38:13-39:13)), but Mr. Lau also
testified that MAHLE 	even for canister models
that are 15-25 years old. JX-0232 at 39:18-41:14. This 	testimony is
consistent with the only other evidence Ingevity cites for this issue (see CIB at 124 (citing JX-
0230C at 300:1-18)) and does not show a commercially significant inventory. Further, given the
limited exclusion order keeping out any further importations of MPAC or the Foreign Accused
Products, and the cease and desist order controlling Kuraray MPAC stockpile in the United States,
there is little room left for MAHLE to continue manufacturing and selling any infringing Accused
Product. “A complainant seeking a cease and desist order must demonstrate, based on the record,
that this remedy is necessary to address the violation found in the investigation so as to not

233
undercut the relief provided by the exclusion order.” Road Milling Machines, Inv. No. 337-TA-
1067, Comm’n Op. at 20 (citations omitted). Accordingly, it is my recommendation that a cease
and desist order not issue against MAHLE.
C. 	Bond
As to the amount of bond during the presidential review period, Ingevity seeks a 100%
rate. 	CIB at 124. 	Ingevity contends “[a] price comparison is not appropriate” because
“Respondents produced limited pricing information for MPAC and none for the Accused
Canisters” and “Respondents use varying weights of MPAC in the Accused Canisters to replace
Ingevity’s honeycomb, so an MPAC-HCA price comparison would vary from canister to canister
and is not possible on this record.” Id. at 124 (citing CX-0910C at Q/A 146-149; CX-1151C at
*61-62), 125 (citing CX-0910C at 146-149). Ingevity contends a reasonably royalty rate is also
not appropriate because “this record [] does not enable a comparison between per-canister royalty
rates in licenses with a weight of imported MPAC.” Id. at 125 (citing Hr’g Tr. at 804:25-506:19).
Ingevity argues and attempts to support both of these positions, but avers there is no requirement
that it do so in the first place. See CRB at 75 (citing Certain Rubber Antidegradants, Components
Thereof, and Products Containing Same, Inv. No. 337-TA-533, Comm’n Op. at 40 (July 21,
2006)).
Respondents argue the bond “should be set at zero, or a negligible amount.” RIB at 123.
Specifically, Respondents propose a reasonable royalty rate of $1.00 per canister,
and more reasonable than
See id. (citing, inter alia, RX-0382C at Q/A 294; JX-
0136C).

234
“The complainant bears the burden of establishing the need for a bond.” Robotic Vacuums,
Inv. No. 337-TA-1057, Comm’n Op. at 68. “When reliable price information is available in the
record, the Commission has often set the bond in an amount that would eliminate the price
differential between the domestic product and the imported, infringing product.” 	Id. (citations
omitted). Ingevity takes a confusing approach to this issue, as it argues a 100% bond is appropriate
because of the impracticality of a price comparison (CIB at 124-125; CRB at 75), while also
presenting expert testimony that a price differential would warrant the same 100% rate (CX-0910C
at Q/A 148 (using average MPAC weight per-canister, per-weight MPAC pricing, and honeycomb
pricing to calculate price differential). 	In fact, the expert’s price comparison is appropriate and
practical. MAHLE’s interrogatory responses reveal MPAC was designed to be a replacement for
Ingevity’s more-expensive honeycombs. 	CX-0638C at *46; see JX-0236C at 55:23-56:12; JX-
0244C at 93:2-96:23, 106:22-108:10
Dr. Vander
Veen’s testimony (CX-0910C at Q/A 148) reflects a sufficiently reliable method for determining
the value of MPAC needed to replace an Ingevity honeycomb. 	As his calculations result in
approximately $2 worth of MPAC serving as a replacement “subsequent adsorbent volume” for
approximately $9 worth of Ingevity honeycomb, the price differential is over 100%. Moreover,
100% of $2 is $2, which is not far off from Respondents’ proposal of a $1 royalty fee per canister.
RIB at 123-124 (citing RX-0382C at Q/A 298-299). Accordingly, it is my recommendation that
a bond be set at 100% during the presidential review period.

235
VIII. 	INITIAL DETERMINATION AND ORDER
Based on the foregoing,15 it is my Initial Determination that there is no violation of Section
337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, in the importation into the United
States, the sale for importation, or the sale within the United States after importation of certain
multi-stage fuel vapor canister systems and activated carbon components thereof, in connection
with the asserted claims of U.S. Patent No. RE 38,844.
Furthermore, it is my determination that a domestic industry in the United States exists that
practices or exploits the asserted patent.
The undersigned hereby certifies to the Commission this Initial Determination, together
with the Record of the hearing in this investigation consisting of the following: the transcript of
the evidentiary hearing, with appropriate corrections as may hereafter be ordered; and the exhibits
accepted into evidence in this investigation as listed in the appendices hereto.16
Pursuant 	to 	19 	C.F.R. 	§ 	210.42(h), 	this 	Initial 	Determination 	shall 	become 	the
determination of the Commission unless a party files a petition for review pursuant to 19 C.F.R.
§ 210.43(a) or the Commission, pursuant to 19 C.F.R. § 210.44, orders on its own motion a review
of the Initial Determination or certain issues therein.
15 	The failure to discuss any matter raised by the parties or any portion of the Record herein
does not indicate that said matter was not considered. Rather, any such matter(s) or portion(s) of
the Record has/have been determined to be irrelevant, immaterial or meritless. Arguments made
on brief which were otherwise unsupported by Record evidence or legal precedent have been
accorded no weight.
16 	The pleadings of the parties filed with the Secretary need not be certified as they are already
in the Commission’s possession in accordance with Commission rules.

Confiderrtialig Notice:
This Initial Determination is being issued as confidential, and a public version will be
issued pursuant to Commission Rule 210.5(f). Within seven (7) days of the date of this Initial
Determination, the parties shall jointly submit: (l) a proposed public version of this opinion with
any proposed redactions bracketed in red; and (2\) a Written justification for any proposed
redactions specifically explaining why the piece of information sought to be redacted is
confidential and why disclosure of the infonnation would be likely to cause substantial harm or
likely to have the effect of impairing the Commission’s ability to obtain such information as is
necessary to perform its statutory ftmctions. '7
SO ORDERED.
Cameron Elliot
Administrative Law Judge
17 Under Commission Rules 210.5 and 20l.6(a), confidential business information includes:
information which concerns or relates to the trade secrets, processes, operations, style of works, or
apparatus, or to the production, sales, shipments, purchases, transfers, identification of customers,
inventories, or amount or source of any income, profits, losses, or expenditures of any person,
finn, partnership, corporation, or other organization, or other infonnation of commercial value, the
disclosure of which is likely to have the effect of either impairing the Commission’s ability to
obtain such information as is necessary to perform its statutory functions, or causing substantial
harm to the competitive position of the person, firm, partnership, corporation, or other organization
from which the infonnation was obtained, unless the Commission is required by law to disclose
such information. See 19 C.F.R. § 20l.6(a). Thus, to constitute confidential business infonnation
the disclosure of the infonnation sought to be designated confidential must likely have the effect
of either: (1) impairing the Commission’s ability to obtain such infonnation as is necessary to
perform its statutory functions; or (2) causing substantial harm to the competitive position of the
person, finn, partnership, corporation, or other organization from which the infonnation was
obtained.
236

CERTAIN MULTI-STAGE FUEL VAPOR CANISTER
SYSTEMS AND ACTIVATED CARBON COMPONENTS
THEREOF
INV. NO. 337-TA-1140
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached Initial Determination has been served upon
the following parties as indicated, on 	E Z||Z|| 	.
I
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street SW, Room 112A
Washington, DC 20436
FOR COMPLAINANTS INGEVITY CORP. & INGEVITY SOUTH CAROLINA, LLC
JeffreyT.Thomas,Esq. 	- 	(Hand 	Delivery	GIBSON, DUNN & CRUTCHER LLP 	( Express Delivery
3161 Michelson Dr. 	( ) Via First ClassMail
Irvine, CA 92612 	( ) Other:
FOR RESPONDENTS MAHLE FILTER SYSTEMSNORTH AMERICA, INC.,
MAHLE FILTER SYSTEMS JAPAN CORP., MAHLE SISTEMAS DE FILTRACION
DE MEXICO S.A. DE C.V., and MAHLE FILTER SYSTEMS CANADA, ULC '
DavidA. Hickerson,Esq. 	' 	Efia HandDelivery	FOLEY & LARDNER LLP 	Express Delivery
3000 K Street NW 	( ) Via First Class Mail
Washington, DC 20007 	( ) Other:
FOR RESPONDENTS KURARAY CO., LTD., KURARAY AMERICA, INC.,
NAGAMINE MANUFACTURING CO., LTD., & CALGON CARBON
CORPORATION
Goutam Patnaik, Esq. 	(‘/{Via Hand Delivery	PEPPER HAMILTON LLP 	( Express Delivery
600 14"‘Street, NW 	( ) Via First Class Mail
Washington, DC 20005 	( ) Other:

UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN MULTI-STAGE FUEL
VAPOR CANISTER SYSTEMS AND
ACTIVATED CARBON COMPONENTS
THEREOF i
l 	Investigation No. 337-TA-114,0
NOTICE OF COMMISSION DETERMINATION NOT TO REVIEW AN
INITIAL DETERMINATION GRANTING IN PART A MOTION FOR
SUMMARY DETERMINATION"
AGENCY: U.S. Intemational Trade Commission.
ACTION: Notice. 	'
SUMMARY: Notice is hereby given that the U.S. International Trade Commission has
determined not to review an initial determination (“ID”) (Order No. 29) issued by the
presiding administrative law judge (“ALJ”), granting in part a motion for summary
determination. - _ '
' 	. 	9
FOR FURTHER INFORMATION CONTACT: Robert Needham, Office of the
General Counsel, U.S. Intemational Trade Comrnission, 500 E Street, SW., Washington,
D.C. 20436, telephone (202) 708-546.8. Copies of non-confidential documents filed in
connection with this investigation are or will be available for inspection during official
business hours (8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S. International
Trade Commission, 500 E Street, SW., Washington, D.C. 20436, telephone (202) 205
2000. General information conceming the Commission may also be obtained by
accessing its Intemet server (httgs://www.usitc.gov). The public record for this
investigation may be viewed on the Commission’s electronic docket (EDIS) at
httgs://edis.usitc. gov. Hearing-impaired persons are advised that information on this
matter can be obtained by contacting the Comrnission’s TDD terminal on (202) 205
1810. 	T 	’
SUPPLEMENTARY INFORMATION: The Commission instituted this investigation
on December 14, 2018, based on a complaint filed by Ingevity Corp. and Ingevity South
Carolina, LLC, both of North Charleston, South Carolina (together, “Ingevity”). 83 FR
64356 (Dec. 14, 2018). The complaint, as supplemented, alleges violations of section
337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337, in the importation into the
United States, the sale for importation, and the sale within the United States after
importation of certain multi-stage fuel vapor canister systems and activated carbon
components thereof by reason of infringement of certain claims of U.S. Patent No.
1

RE38,844. Id. The Commission’s notice of investigation named as respondents MAHLE
Filter Systems North America, Inc. of Murfreesboro, Tennessee; MAHLE Filter Systems
Japan Corp. of Saitama, Japan; MAHLE Sistemas de Filtracion de Mexico de C.V. of
Monterrey, Mexico; MAHLE Filter Systems Canada, ULC of Tilbury, Canada; Kuraray
Co., Ltd. of Tokyo, Japan and Kuraray America, Inc. of Houston, Texas (together,
Kuraray); and Nagamine Manufacturing Co., Ltd. of Manno, Japan. Id. The
Commission subsequently amended the notice of investigation to add Calgon Carbon
Corporation as a respondent and to remove Kuraray. Order N0. 5 (Feb. 26, 2019), not
reviewed Notice (Mar. 21, 2019). The Office of Unfair Import Investigations is not
participating in this investigation. Id. .
On September 19, 2019, lngevity moved for summary determinations on many
issues, including summary determination that the respondents failed to show that certain
prior art rendered invalid any asserted claims under 35 U.S.C. 102(a), (b), and (t), and
that respondents failed to establish their asserted defenses of unclean hands, waiver,
estoppel, laches, and acquiescence. 	»
On October 10, 2019, the ALJ issued the subject ID and granted-in-part Ingevity’s
motion for summary detennination. The ALJ found that the respondents failed to present
evidence under 35 U.S.C. 102(1),and did not oppose Ingevity’s motion for summary
determination with respect to the remaining defenses set forth above. Accordingly, the
ALJ granted summary determination of legal insufficiency with‘respect to the following
defenses: (1) invalidity under 35 U.S.C. l02(a), (b) and (f); (2) unclean hands;
(3) waiver; (4) estoppel; (5) laches; and (6) acquiescence. The ALJ denied the remainder
of the summary determination motion. No party petitioned for review of the subject ID.
The Commission has determined not to review the subject ID.
The authority for the Commission’s determination is contained in section 337 of
the TariffAct of 1930, as amended (19 U.S.C. 1337), and in part 210 ofthe
Commission’s Rules of Practice and Procedure (19 CFR part 210).
By order of the Commission.
WWLisa R. Barton 	.
' 	Secretary to the Commission
Issued: October 31, 2019 	_
2

CERTAIN MULTI-STAGE FUEL VAPOR CANISTER 	Inv. No. 337-TA-1140
SYSTEMS AND ACTIVATED CARBON COMPONENTS 	'
THEREOF
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached NOTICE has been served upon the '
following parties as indicated, on 11/1/2019.
W@@Lisa R. Barton, Secretary 	'
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Ingevity Corp. and Ingevitv South
Carolina, LLC:
Jeff Thomas, Esq.
GIBSON, DUNNN & CRUTCHER LLP
1050 Connecticut Avenue, N.W.
Washington, DC 20036-5306
III Via Hand Delivery
III Via Express Delivery
Via First Class Mail
l:| Other:
On Behalf of Respondents MAHLE Filter Svstems North A
America. Inc., MAHLE Filter SvstemsJapan Corp, MAHLE
Sistemas de Filtracion de Mexico S.A. de C.V.. and MAHLE
Filter Svstems Canada. ULC: _
David A. Hickerson, Esq.
FOLEY & LARDNER LLP
Washington Harbour 3000 K Street, N.W.
Washington, D.C-.20007
El Via Hand Delivery
E] Via Express Delivery
Via First Class Mail
II Other:
On Behalf of Respondents Nagamine Manufacturing Co.,
Ltd.. Kuraray C0.. Ltd.. and Calgon Carbon Corporation:
Goutam Patnaik, Esq.
PEPPER HAMILTON LLP
2000 K Street, NW '
Suite 600
Washington, D.C. 20006
III Via Hand Delivery
El Via Express Delivery
El Via First Class Mail
I] Other:

\
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of 	_
CERTAIN MULTI-STAGE FUEL VAPOR 	Inv. No. 337-TA-1140
CANISTER SYSTEMS AND ACTIVATED
CARBON COMPONENTS THEREOF
ORDER NO. 29: INITIAL DETERMINATION GRANTING-IN-PART
COMPLAINANTS’ MOTION FOR PARTIAL SUMMARY
DETERMINATION
(October 10, 2019)
On September 19, 2019, complainants Ingevity Corp. and Ingevity South Carolina, LLC
(“Ingevity”) moved (1140-022) for partial summary detennination on a variety of issues.
Respondents MAHLE Filter Systems North America, Inc., MAHLE Filter Systems Japan Corp.,
MAHLE Sistemas de Filtracién de Mexico S.A. de C.V., and MAHLE Filter Systems Canada
ULC (collectively, “MAHLE”), Kuraray Co., Ltd. and Calgon Carbon Corporati/on (collectively,
“Kuraray”), and Nagamine Manufacturing Co., Ltd. (“Nagamine”) (collectively, “Respondents”)
opposed the motion on October 1, 2019. On October 2, 2019, Respondents moved (1140-026)
for leave to file two exhibits to their opposition out of time, with a representation that the
requested leave is unopposed. Respondents’ unopposed motion for leave (1140-026) is granted.
Ingevity’s motion for partial summary detennination (1140-022) is granted-in-part.
Summary determination shall be rendered if there is no genuine issue of material fact and
the moving party is entitled to summary determination as a matter of law. 19 C.F.R. § 210.18(b).
A motion for summary determination may be supported by pleadings, depositions, interrogatory
answers, admissions, and affidavits.‘ 19 C.F.R. § 210.18(b)-(c). In order to raise a genuine issue

l
of material fact, a party must submit conflicting evidence in the form of affidavit or other
admissible evidence. Ferring B.l/T v. Barr Labs., Inc., 437 F.3d 1181, 1193 (Fed. Cir. 2006);
Amgen v. ULS.Int ’l Trade Comm ’n, 565 F.3d 846, 849 (Fed. Cir. 2009) (Commission summary
determinations are governed by the criteria of summary judgment). Where the moving party
bears the burden of proof on a particular issue, the moving party must show that there is no
genuine issue of material fact as to every element. See Meyers v. Asics Corp., 974 F.2d 1304,
1307 (Fed. Cir. 1992). Where the nonmoving party bears the burden of proof on a particular
issue, the moving party must show that the nonmoving party failed to produce evidence on an
essential element of its claim or defense. See Eli Lilly and Co. v. Barr Labs., Inc., 251 F.3d 955,
962 (Fed. Cir. 2001). V
Ingevity first argues that it is entitled to summary determination that a domestic industry
exists. (See generally Mot. Mem. at 2-23.) In order to satisfy the technical prong of this
requirement, it is sufficient to show that the domestic industry practices any claim of the patent
in suit. Certain Ammonium Octamolybdate Isomers, Inv. No. 337-TA-477, Comm’n Op. at 55
(Aug. 28, 2003). In order to satisfy the economic prong, the domesticindustiy must involve: (1)
significant investment in plant or equipment; (2) significant employment of labor or capital; or
(3) substantial investment in the invention’s exploitation, including engineering, research and
development, or licensing. Id. (citing l9 U.S.C. § l337(a)(3)).
Respondents correctly note that Ingevity’s expert reportsfiwhich form theyprincipal
factual bases for 1ngevity’s arguments—were not executed under oath. (Opp’n at 4-5.)
Although this is an easily-remedied defect, and the law is not entirely clear that unswom expert
reports are incompetent for summary determination purposes, the reports’ unswom status
-1

counsels against granting summary determination. See GASAInc. v. United States, 79 Fed. Cl.
325, 362 n.6l (Fed. Cl. 2007). On the technical prong more specifically, not all disputed claim
terms have been construed, so it is impossible to determine whether any particular claim is
practiced. (See Opp’n at 14.) In particular, all asserted claims possess either the term “adsorbent
volume” or the term “vapor adsorbent material,” neither of which have been construed. (Order
No. 15 at 25, 30.) Oddly, Ingevity’s expert report, provided as the evidentiary basis for summary
determination, noted that “vapor adsorbent material” had not been construed but nonetheless
purported to adopt that term’s construction and then opined that over 25 different domestic
industry canisters practice claims possessing that limitation. (Mot., Ex. 1 at 28, 98-99.) As for
the economic prong, Respondents’ expert report is also not sworn. (See Opp’n, Ex. 2.) Even
treating both sides’ expert reports as competent evidence, however, Respondents’ expert
evidence raises genuine issues of material fact; for example,’issues as to whether the domestic
industry is sufficiently “significant” and/or “substantial,” and whether it has been allocated
correctly. (See, e.g., Opp’n, Ex. 2 at 6.) For at least the above reasons, the domestic industry
portion of Ingevity’s motion is denied.
Ingevity next argues that a “Hydrocarbon Bleed Emission Scrubber with Low
Restriction,”	documented	on— 	ina“Record	ofInvention”	by‘ 	of
third-party Delphi (the “Delphi Canister”), is not prior art under 35 U.S.C. § 102. (Mot. Mem. at
24; Mot., Ex. 10.) The Record of Invention states that the Delphi Canister was conceived on
— 	(Mot.,Ex.10atDELPHI-002119.)	TheDelphiCanisteristhesubjectofU.S.
Patent No. 6,896,852, which issued on May 24, 2005, based on a provisional application filed
March 29, 2000. (Mot., Ex. ll at 86:8-17; Mot., Ex. 15.) The patent in suit, the 844 patent, was
- 3 _

re-issued on October 25, 2005, based on a non-provisional application filed March 18, 2002, and
for present purposes-Ingevity adopts March 18, 2002, as the 844 patent’s conception date. (Mot.
Mem. at 28, 28 n.7.)
Ingevity asserts that the Delphi Canister does not satisfy four statutory prior art
provisions; namely, 35 U.S.C. § 102, paragraphs (a), (b), (t), and (g)(2). (Mot. Mem. at 23-35.)
These provisions correspond to the four recited by Respondents in their contention interrogatory
responses as grounds for invalidating the 844 patent. (Mot., Ex. 23 at 66-75.) In their
Opposition, however, Respondents represent they “will not pursue invalidity under 35 U.S.C. §
l02(a) or (b)” (Opp’n at l) and thus do not contest Ingevity’s motion on these two paragraphs.
As for paragraph (f), Respondents do not cite any evidence in support of their Section l02(f)
defense. (Compare Mot. Mem. at 27 (citing Mot., Ex. 23 at 67-70) with Opp’n at 30.) _
Moreover, Respondents’ Opposition fails to provide any legal analysis whatsoever of 35‘
U.S.C. § l02(f). (See Opp’n at 19-31.) Respondents bear the ultimate burden of persuasion
regarding invalidity and also a burden of production in summary proceedings to show a genuine
issue of material fact on the issue. See Apotex USA, Inc. v. Merck & Co., lnc., 254 F.3d 1031,
1037-38 (Fed. Cir. 2001). Viewing the evidence on which Respondents rely regarding prior art
provisions (a), (b),»and (f) even in the light most favorable to them, they have either failed to
meet their burden or simply not contested Ingevity’s assertions, so it is appropriate to grant
summary determination that the Delphi Canister is not prior art under 35 U.S.C. § 102,
paragraphs (a), (b), and (fl I
The same cannot be said, however, of 35 U.S.C. § 102(g)(2), which as of 2002 required
proof that the invention had been previously “made in this country by another inventor who had
_ 4 _

not abandoned, suppressed, or concealed it.” Ingevity points to two elements as lacking
evidence: (1) the Delphi Canister inventors did not appreciate What they had conceived, that is,
the invention was not “made” by another; and (2) the identity of the Delphi Canister inventors is
unclear, that is, the invention was not made by “another.” (Mot. Mem. at 24-26.) As to the first
element, even assuming that the Delphi Canister inventors did not appreciate what they had
conceived, Respondents have produced evidence that the Delphi Canister was successfully
tested, that is, the inventionit embodieswas actuallyreduced to practice,no later thanI
- 	more than two yearsbeforethe 844 patent’sconceptiondate. (Opp’nat 20-21(citing
Opp’n, Ex. 10 at DELPHI-002120).) Viewing such evidence in the light most favorable to
Respondents, the precise conception date of the Delphi Canister is immaterial; even if in this
instance “conception [was] delayed until a reduction to practice,” the invention embodied by the
Delphi Canister was still “made” before conception of the claims of the 844 patent. See
Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1061, 1064 (Fed. Cir. 2001) (citing 35
U.S.C. § 102(g)(2)). As to the second element, the Record of Invention identifies the Delphi
Canister inventors, and is sufficient evidence to at least raise a triable issue of fact. (Mot., Ex. 10
at DELPHI-00211-18.) Summary determination on this issue is therefore not warranted.
Ingevity’s next argument pertains to the knowledge requirement for proof of indirect
infringement. (See Mot. Mem. at 35-37.) Specifically, Ingevity contends that a subjective belief
of patent invalidity cannot defeat a claim of indirect infringement. (See id. (citing Life Techs.
Corp. v. Promega C0rp., 137 S. Ct. 734, 742 n.7 (2017), Commil USA, Inc. v. Cisco Sys., 1nc.,
135 S. Ct. 1920, 1926 (2015); Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 764
(2011)).) Respondents do not explicitly dispute this contention. (See Opp’n at 31-33.) Ingevity
_5_

as
therefore reasons that at least some respondents’ reception of a legal opinion stating ‘all claims
of the 844 patent are invalid”’ (Mot. Mem. at 36 (citing Mot., Ex. 12 at 13-15)) “is not a defense
to” indirect infringement in light of the case law (id. at 36-37 (citing Mot., Ex. 12 at 13-15)).
Respondents also do not explicitly dispute this contention. (See Opp’n at 31-33.)
Nonetheless, summary determination on this issue .is inappropriate. Respondents’
Opposition points to evidence that they subjectively believed they were not infringing any claim
of the 844 patent, including an additional “oral” opinion from “legal counsel” of
noninfringement, that is, “that MAHLE’s MPAC product could not [have] been covered by the
claims.” (See Opp’n at 32-33 (citing Opp’n, Ex. 24 at Q/A 73).) So there exists a genuine issue
material fact regarding the knowledge element of indirect infringement. E.g., Omega Patents,
LLC v. CalAmp C0rp., 920 F.3d 1337, 1349 (Fed. Cir. 2019) (discussing the knowledge element
of induced infringement). And a mere declaration that counsel’s invalidity opinion is not a
defense to a claim of indirect infringement, which is seemingly the only other relief lngevity
seeks, is not an appropriate subject for summary detennination, even if such a declaration is
uncontested. (See Mot. Mem. at 36-37.)
Ingevity’s next_contention, pertaining to patent misuse, is similarly inappropriate for
summary dctennination. lngevity argues that its “exclusive supply agreements” do not constitute
patent misuse because the agreements do not qualify as licenses, and that its allegedly
discriminatory pricing policy does not qualify as patent misuse. (Mot. Mem. at 39-41 (citing
Kimble v. Marvel Entm 't, LLC, 135 S. Ct. 2401, 2411 (2015)).) Admittedly, Kimble seemingly
permits any sort of commercial contract after patent expiration other than one involving royalty
payments, and Respondents point to no evidence that lngevity’s supply agreements include such
-5

post-expiration royalties. (See Opp’n at 41-43.) But Ingevity cites no authority for the
proposition that discriminatory pricing is irrelevant to a patent misuse defense, and in any event
adjudication of narrow legal theories, as opposed to claims or defenses (see Mot. Mem. at 39
41), is more suitable for post-hearing proceedings than for summary determination.
Otherwise, Respondents have raised genuine issues of material fact regarding their patent
misuse defense. Respondents admit that the statutory term “market power” does not appear
verbatim in their contention interrogatory responses, but they do assert the equivalent in those
responses—namely, that Ingevity has “substantially foreclosed others from access to the
customer base necessary to effectively grow and compete.” (Compare Mot. Mem. at 37-39
(citing 35 U.S.C. § 271(d)) with Opp’n at 37-38 (citing Opp’n, Ex. 29 at 131), 37 n.l2.) And in
Support, the contention responses and Opposition cite sworn testimony by an Ingevity employee
that is sufficient to raise a genuine issue of material fact regarding market power. (Opp’n at 37
38, 39-40; Opp’n, Ex. 29 at l3l (citing Mot., Exs. 3 and 43); Mot., Ex. 31 at 31-32.)
Ingevity further contends that Respondents.’ patent exhaustion defense is ripe for
sunmiary detennination. (Mot. Mem. at 41-42.) The patent exhaustion doctrine providestthat
the initial sale of a patented item tenninates, or exhausts, the patent rights to that item. Quanta
Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617, 625 (2008). Exhaustion is triggered when
the only reasonable and intended use of an item is to practice a patent, and the item embodies
essential features of the invention. Id. at 631. Ingevity argues that its base carbon products have
noninfringing uses, that is, the practicing of the 844 patent is not their “only reasonable and
intended use." (Mot. Mem. at 41-42 (citing Quanta, 553 U.S. at 625, 631).) But as Respondents
point out, Ingevity “‘intends that is Base Carbon products . . . be used in fuel vapor canister
-7

an
systems, and according one of its executives, at least one Ingevity customer possesses an
implied license to practice the 844 patent because of its purchase of Ingevity adsorbents. (Opp’n
at 46 (citing Mot., Ex. 5 at 147; Mot., Ex. 31 at 194:l7-19511).) This is sufficient to raise a
genuine issue of material fact as to whether the only reasonable and intended use of Ingevity’s
products is to practice the 844 patent.
Lastly, Ingevity argues that various non-patent specific defenses asserted by Respondents
fail as a matter of law. (Mot. Mem. at 42-43.) Here again, Respondents have represented they
are not asserting these defenses (see Opp’n at 1) and otherwise do not contest Ingevity’s position
(see generally Opp’n), so it is appropriate to grant summary determination that the defenses of
unclean hands, waiver, estoppel, laches, and acquiescence are unproven.
I In summary, it is my determination that Ingevity’s motion (1140-022) be granted-in-part
in that the following defenses are summarily determined to be‘legally insufficient and will not be
considered at the hearing:
1. Invalidity under 35 U.S.C. § 102(a).
2. Invalidity under 35 U.S.C. § 102(b).
3. Invalidity under 35 U.S.C. § 102(1E).
4. Unclean hands, waiver, estoppel, laches, and acquiescence.
Ingevity’s motion is otherwise denied. This Initial Determination is hereby certified to the
Commission. .
Pursuant to l9 C.F.R. § 2l0.42(h), this Initial Determination shall be the determination of
the Commission thirty (30)'days after the date of sen/ice of the initial determination, Lmlessa
party files a petition for review of the Initial Determination within five (5) business days after
_ 3 _

service of the initial detennination pursuant to 19 C.F.R. § 2lO.43(a), or the Commission,
pursuant to 19 C.F.R. § 210.44, orders, on its own motion, a review of the Initial Determination
or certain issues herein. Any issue or argument not raised in a petition for review, or response
thereto, will be deemed to have been abandoned and may be disregarded by the Commission in
reviewing the Initial"Determination pursuant to 19 C.F.R. §§ 210.43(b) and (c).
Within seven days of the date of this document, the parties shall submit to the Office of
the Administrative Law Judges a joint statement as to whether or not they seek to have any
portion of this document deleted from the public version. If the parties do seek to have portions
of this document deleted from the public version, they must submit to this office a copy of this
document with red brackets indicating the portion or portions asserted to contain confidential
business infonnation. The submission may be made by email and/or hard copy by the
aforementioned date and need not be filed with the Commission Secretary.
SO ORDERED.
wanCameron Elliot A
Administrative Law Judge
_9_

CERTAIN MULTI-STAGE FUEL VAPOR CANISTER
SYSTEMS AND ACTIVATED CARBON COMPONENTS
THEREOF
Q INV. NO. 337-TA-1140
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached Order N0. 29 has been served upon
the following parties as indicated, on OCT 1 8 ZMQ . .
GL2-7 l 	~~
Lisa R. Barton, Secretary
U.S. Intemational Trade Commission '
500 E Street SW, Room 112A
Washington, DC 20436
‘FOR COMPLAINANTS INGEVITY CORP. & INGEVITY SOUTH CAROLINA, LLC
_Jeffrey T. Thomas, Esq. 	( ) iV'a Hand Delivery
GIBSON, DUNN& CRUTCHER LLP 	(\)/érpress Delivery
3161 Michelson Dr. 	( ) Via First Class Mail
Irvine, CA 92612 	( ) Other:
FOR RESPONDENTS MAHLE FILTER SYSTEMS NORTH AMERICA, INC.,
MAHLE FILTER SYSTEMS JAPAN CORP., MAHLE SISTEMAS DE FILTRACION
DE MEXICO S.A. DE C.V., and MAHLE FILTER SYSTEMS CANADA, ULC
David A. Hickerson, Esq. 	(V3)/41 Hand Delivery	FOLEY & LARDNER LLP 	( Express Delivery
3000 K Street NW 	( ) Via First Class Mail
Washington, DC 20007 	( ) Other:
FOR RESPONDENTS KURARAY CO., LTD., KURARAY AMERICA, INC.,
NAGAMINE MANUFACTURING CO., LTD., & CALGON CARBON
CORPORATION.
Goutam Patnaik, Esq. 	ia Hand Delivery
PEPPER HAMILTON LLP 	Express Delivery
600 14"‘Street, NW 	Via First Class Mail
Washington, DC 20005 " 	Other:

UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington,D.C.
In the Matter of
CERTAIN MULTI-STAGE FUEL VAPOR
CANISTER SYSTEMS AND ACTIVATED
CARBON COMPONENTS THEREOF
Inv. No. 337-TA-1140
ORDER NO.15: CONSTRUING TERMS OF THE ASSERTED CLAIMS
(June 21,2019)

TABLE OF CONTENTS
I. INTRODUCTION 1
II. RELEVANT LAW 2
III. LEVEL OF ORDINARY SKILL 6
IV. THE ASSERTED PATENT 7
V. CLAIM CONSTRUCTION 14
A. Construction ofthe Agreed-Upon Claim Terms 14
B. Construction ofthe Disputed Claim Terms 15
1. "incremental adsorption capacity" /"adsorption capacities" 15
2. "initial adsorbent volume"/ "initial volume of adsorbent material" / "initial
volume of vapor adsorbent material" / "initial volume offuel vapor
adsorbent material" /"subsequent adsorbent volume"/"subsequent volume
of adsorbent"/"subsequent volume of vapor adsorbent material" / "second
volume of vapor adsorbent material" 25
3. "vapor adsorbent material" 29
4. "cylinder"/"hollow cylinder" 30
5. "trapped air spaces" 33
VI. PROCEDURAL ISSUES 34

I. INTRODUCTION
This Investigation was instituted by the Commission on December 14, 2018 to determine
whether certain multi-stage fuel vapor canister systems and components thereofinfringe U.S. Patent
No. RE38,844 ("the '844 patent"). See 83 Fed. Reg. 64356-7(Dec. 14, 2018). The complainants
are Ingevity Corp. and Ingevity South Carolina, LLC(together,"Ingevity" or"Complainants"). The
respondents are MAHLE Filter Systems North America, Inc., MAHLE Filter Systems Japan Corp.,
MAHLE Sistemas de Filtracion de Mexico S.A. de C.V., MAHLE Filter Systems Canada, ULC,
Kuraray Co., Ltd., Kuraray America, Inc., and Nagamine Manufacturing Co., Ltd. (together,
"Respondents")(all collectively,"the Parties").
Pursuant to Ground Rule 8, a Markman hearing was held June 4, 2019 regarding the
interpretation of certain terms of the patent at issue. Prior to the hearing, the Parties filed a joint
claim construction chart setting forth a limited set of terms to be construed, with an updated joint
chart after the hearing, and a corrected updated joint chart thereafter(EDIS Doc. No.678649). The
Parties also filed initial and reply claim construction briefs, wherein each party offered its
construction for the claim terms in dispute, along with support for its proposed interpretation.' In
lieu of a live presentation, and per my request, the Parties further prepared and filed a joint tutorial
on the technology at issue. (EDIS Doc. No.677977.)
For convenience, the briefs and amended chart submitted by the Parties are referred to hereafter
as:
CIMB Complainants' Initial Markman Brief
CRMB Complainants' Reply Markman Brief
RIMB Respondents' Initial Markman Brief
RRMB Respondents' Reply Markman Brief
JC Corrected Updated Joint Claim Construction Chart
Hr'g Tr. Markman hearing transcript
Tutorial Joint Technology Tutorial
1

RELEVANT LAW
"An infringement analysis entails two steps. The first step is determining the meaning and
scope of the patent claims asserted to be infringed. The second step is comparing the properly
construed claims to the device accused of infringing." Markman v. Westview Instruments, Inc., 52
F.3d 967, 976 (Fed. Cir. 1995)(en banc)(internal citations omitted), affd, 517 U.S. 370 (1996).
Claim construction is a "matter oflaw exclusively for the court." Id at 970-71. "The construction
of claims is simply a way of elaborating the normally terse claim language in order to understand
and explain, but not to change, the scope of the claims." Embrex, Inc. v. Serv. Eng'g Corp., 216
F.3d 1343, 1347(Fed. Cir. 2000).
Claim construction focuses on the intrinsic evidence, which consists of the claims
themselves, the specification, and the prosecution history. See Phillips v. AWH Corp., 415 F.3d
1303, 1314(Fed. Cir. 2005)(en banc); see also Markman, 52 F.3d at 979. As the Federal Circuit
in Phillips explained, courts must analyze each ofthese components to determine the "ordinary and
customary meaning ofa claim term" as understood by a person ofordinary skill in the art at the time
of the invention. 415 F.3d at 1313. "Such intrinsic evidence is the most significant source of the
legally operative meaning of disputed claim language." Bell AtL Network Servs., Inc. v. Covad
Commc'ns Grp., Inc., 262 F.3d 1258, 1267(Fed. Cir. 2001).
"It is a 'bedrock principle' of patent law that 'the claims of a patent define the invention to
which the patentee is entitled the right to exclude." Phillips,415 F.3d at 1312(quoting Innova/Pure
Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115(Fed. Cir. 2004)). "Quite apart
from the written description and the prosecution history, the claims themselves provide substantial
guidance as to the meaning of particular claims terms." Id. at 1314; see also Interactive Gift
Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001)("In construing claims, the
analytical focus must begin and remain centered on the language of the claims themselves, for it is
2

that language that the patentee chose to use to 'particularly point[]out and distinctly claim[]the
subject matter which the patentee regards as his invention."). The context in which a term is used
in an asserted claim can be "highly instructive." Phillips, 415 F.3d at 1314. Additionally, other
claims in the same patent, asserted or unasserted, may also provide guidance as to the meaning of a
claim term. Id. "Courts do not rewrite claims; instead, we give effect to the terms chosen by the
patentee." K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364(Fed. Cir. 1999).
The specification "is always highly relevant to the claim construction analysis. Usually it is
dispositive; it is the single best guide to the meaning ofa disputed term." Phillips, 415 F.3d at 1315
(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). "[T]he
specification may reveal a special definition given to a claim term by the patentee that differs from
the meaning it would otherwise possess. In such cases, the inventor's lexicography governs." Id. at
1316. "In other cases,the specification may reveal an intentional disclaimer, or disavowal, ofclaim
scope by the inventor." Id. As a general rule, however, the particular examples or embodiments
discussed in the specification are not to be read into the claims as limitations. Id. at 1323. In the
end, "[t]he construction that stays true to the claim language and most naturally aligns with the
patent's description of the invention will be ... the correct construction." Id. at 1316 (quoting
Renishaw PLC v. Marposs Societa'per Azioni, 158 F.3d 1243, 1250(Fed. Cir. 1998)).
In addition to the claims and the specification, the prosecution history should be examined,
if in evidence. Phillips at 1317;see Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898,913(Fed.
Cir. 2004). The prosecution history can "often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and whether the inventor limited the
invention in the course of prosecution, making the claim scope narrower than it would otherwise
be." Phillips, 415 F.3d at 1317; see Chimie v. PPG Indus. Inc., 402 F.3d 1371, 1384 (Fed. Cir.
3

2005)("The purpose of consulting the prosecution history in construing a claim is to exclude any
interpretation that was disclaimed during prosecution.").
When the intrinsic evidence does not establish the meaning of a claim, then extrinsic
evidence (i.e., all evidence external to the patent and the prosecution history, including dictionaries,
inventor testimony, expert testimony, and learned treatises) may be considered. Phillips, 415 F.3d
at 1317. Extrinsic evidence is generally viewed as less reliable than the patent itself and its
prosecution history in determining how to define claim terms. Id. "The court may receive extrinsic
evidence to educate itself about the invention and the relevant technology, but the court may not use
extrinsic evidence to arrive at a claim construction that is clearly at odds with the construction
mandated by the intrinsic evidence." Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973,977(Fed. Cir.
1999).
If, after a review of the intrinsic and extrinsic evidence, a claim term remains ambiguous,
the claim should be construed so as to maintain its validity. Phillips, 415 F.3d at 1327. Claims,
however, cannot be judicially rewritten in order to fulfill the axiom of preserving their validity. See
Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999). Thus,"if the only claim construction
that is consistent with the claim's language and the written description renders the claim invalid,
then the axiom does not apply and the claim is simply invalid." Id.
The construction of a claim term is generally guided by its ordinary meaning. However,
courts may deviate from the ordinary meaning when:(1) "the intrinsic evidence shows that the
patentee distinguished that term from prior art on the basis of a particular embodiment, expressly
disclaimed subject matter, or described a particular embodiment as important to the invention"; or
(2)"the patentee acted as his own lexicographer and clearly set forth a definition of the disputed
claim term in either the specification or prosecution history." Edwards Lifesciences LLC v. Cook
Inc., 582 F.3d 1322, 1329(Fed. Cir. 2009); see also GE Lighting So/s., LLC v. AgiLight, Inc., 750
4

F.3d 1304, 1309(Fed. Cir. 2014)("the specification and prosecution history only compel departure
from the plain meaning in two instances: lexicography and disavowal."); Omega Eng'g, Inc, v.
Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003)("[W]here the patentee has unequivocally
disavowed a certain meaning to obtain his patent, the doctrine of prosecution disclaimer attaches
and narrows the ordinary meaning ofthe claim congruent with the scope ofthe surrender."); Rheox,
Inc. v. Entact, Inc., 276 F.3d 1319, 1325 (Fed. Cir. 2002)("The prosecution history limits the
interpretation of claim terms so as to exclude any interpretation that was disclaimed during
prosecution."). Nevertheless, there is a "heavy presumption that a claim term carries its ordinary
and customary meaning." CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir.
2002) (citations omitted). The standard for deviating from the plain and ordinary meaning is
"exacting" and requires "a clear and unmistakable disclaimer." Thorner v. Sony Computer Entm't
Am. LLC,669 F.3d 1362, 1366-67(Fed. Cir. 2012); see Epistar Corp. v. Int1 Trade Comm 'n, 566
F.3d 1321, 1334 (Fed. Cir. 2009) (requiring "expressions of manifest exclusion or restriction,
representing a clear disavowal of claim scope" to deviate from the ordinary meaning)(citation
omitted). As the Federal Circuit has explained,IN* do not read limitations from the specification
into claims; we do not redefine words. Only the patentee can do that." Thorner,669 F.3d at 1366.
A claim must also be definite. Pursuant to 35 U.S.C. § 112, second paragraph: "The
specification shall conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112,¶ 2. In
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,2129(2014),the Supreme Court held that
§ 112,if 2requires "that a patent's claims, viewed in light ofthe specification and prosecution history
inform those skilled in the art about the scope ofthe invention with reasonable certainty." A claim
is required to "provide objective boundaries for those of skill in the art," and a claim term is
indefinite if it "might mean several different things and no informed and confident choice is among
5

the contending definitions." Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir.
2014). A patent claim that is indefinite is invalid. 35 U.S.C. § 282(b)(3)(A).
Courts are not required to construe every claim limitation of an asserted patent. See 02
Micro Intern. Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008)
(citations omitted); Vanderlande Indus. Nederland BV v. Intl Trade Comm 'n, 366 F.3d 1311, 1323
(Fed. Cir. 2004)(noting that the administrative law judge need only construe disputed claim terms).
Rather,"claim construction is a matter of resolution of disputed meanings and technical scope, to
clarify and when necessary to explain what the patentee covered by the claims." Id. at 1362(quoting
US. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)); see also Embrex, 216
F.3d at 1347("The construction of claims is simply a way of elaborating the normally terse claim
language in order to understand and explain, but not to change, the scope ofthe claims.")(citation
omitted).
In addition, "[a] determination that a claim term 'needs no construction' or has the 'plain
and ordinary meaning' may be inadequate when a term has more than one 'ordinary' meaning or
when reliance on a term's 'ordinary' meaning does not resolve the parties' dispute." 02 Micro, 521
F.3d at 1361. Claim construction, however, is not an "obligatory exercise in redundancy." US.
Surgical Corp., 103 F.3d at 1568. "[M]erely rephrasing or paraphrasing the plain language of a
claim by substituting synonyms does not represent genuine claim construction." C.R. Bard, Inc. v.
US. Surgical Corp., 388 F.3d 858, 863(Fed. Cir. 2004).
III. LEVEL OF ORDINARY SKILL
In its opening brief, Ingevity contends:
A person of ordinary skill in the art as of the filing date of the '844
Patent would have at least a Bachelor of Science degree in chemistry
or chemical engineering, or the equivalent, and at least one year of
experience working with adsorbents, adsorption measurements, or
adsorption-related processes, or the equivalent.
6

(CIMB at 3.)
In their opening brief, Respondents contend:
[A]PHOSITA of the Asserted Patent at or around the time of filing
would have: at least a bachelor's degree in chemistry or chemical or
mechanical engineering; at least one year of experience working
primarily on issues related to the control of automotive evaporative
emissions; and, based on their education, background, and
experience, understand the chemistry and physics associated with the
phenomena offuel vapor adsorption, desorption, and diffusion.
(RIMB at 8-9(citing RIMB,Ex. A at ¶ 51).)
These proposed levels of skill are sufficiently similar that they can be readily combined. It
stands to reason that a mechanical engineer working in the automotive industry could possess
ordinary skill in the art, and familiarity with adsorption measurement is important to every asserted
claim. So I find that one of ordinary skill in the art would have a bachelor's degree in chemistry,
chemical engineering, or mechanical engineering, and at least one year of experience working with
automotive emissions such that they are familiar with the phenomena of vapor adsorption and
desorption and their measurement.
IV. THE ASSERTED PATENT
The '844 patent, entitled "Method for Reducing Emissions from Evaporative Emissions
Control Systems," was re-issued on October 25, 2005 to Laurence H. Hiltzik, Jacek Z. Jaqiello,
Edward Don Tolles, and Roger S. Williams. The '844 patent reports an assignment on its face to
MeadWestvaco Corporation.
A. Technical Background
Gasoline evaporation from motor vehicle fuel systems "is a major potential source of
hydrocarbon air pollution." ('844 patent at 1:28.) Such emissions may occur when "a vehicle has
been parked and subjected to diurnal temperature changes over a period of several days." (Id. at
2:45-46.) These temperature changes cause pressure fluctuations in the vehicle's fuel tank, which
7

in turn cause gases to flow in and out ofthe fuel tank vent. (Tutorial at 11.) Vapor emissions arising
from this process are known as diurnal breathing loss emissions. (Id.;'844 patent at 2:49.)
Diurnal breathing loss emissions can be reduced by "canister systems" placed in the vent
conduit "that employ activated carbon to adsorb and hold the vapor." ('844 patent at 1:33-34.)
Adsorption is the process by which,in this case, gasoline vapor molecules weakly attach themselves
to the adsorbent material in the canister. (Tutorial at 7.) The adsorbent material is not limited to
activated carbon, but may consist of various organic and inorganic materials. (See '844 patent at
9:5-63.) Vapor molecules are released, or desorbed, from the adsorbent material when fresh air
flows from the atmosphere into the canister via the fuel tank vent. (Tutorial at 7, 9.) Although
desorption occurs on a daily cycle in the case of diurnal breathing losses, it may also occur when
the vehicle engine is operating. (See Tutorial at 5.) This is because the canister system contains a
"vacuum purge connection" which pulls air through the canister and into the engine air intake, and
in the process causes vapor molecules to diffuse into the purge air. (Id. at 5, 9;'844 patent at 1:62-
63.)
The'844 patent discloses the use of multiple layers, or stages,ofadsorbents, with successive
stages possessing distinct adsorption characteristics. ('844 patent at Abstract.) In particular:
On the fuel source-side of the canister, standard high working
capacity carbons are preferred. On the vent-side, the preferred
adsorbent volume exhibits a flat or flattened adsorbent isotherm on a
volumetric basis in addition to certain characteristically desirable
adsorptive properties across broad vapor concentrations, specifically
relatively low incremental capacity at high concentration vapors
compared with the fuel source-side adsorbent volume.
(Id. at 3:46-53.) Two approaches to achieving such "a flat or flattened adsorbent isotherm on a
volumetric basis" are taught. (Id. at 3:43-64.) One approach, which is seemingly not a substantial
concern for claim construction purposes, comprises "employ[ing] an adsorbent with the desired
isotherm properties" near the vent, that is, using a vent-side adsorbent material having a "relatively
8

low incremental capacity at high concentration vapors compared with the fuel source-side adsorbent
volume." (Id. at 3:46-53, 3:57-58.)
The disputed claim terms generally pertain to the other approach: "a filler and/or bed
voidages as a volumetric diluent." ('844 patent at 3:55-56.) The '844 patent refers to this approach
as "volumetric dilution." (Id. at 7:7.) Volumetric dilution may be accomplished by adding a non-
adsorbing filler to the adsorbent material, forming the adsorbent into a "high voidage shape," or
using inert spacer particles, foams, fibers, and screens external to the adsorbent material, among
other techniques. (Id. at 10:6-24.)
B. The Asserted Claims
The '844 patent has 54 claims. As ofthe date ofthis order, claims 1-5, 8, 11, 13, 15, 18, 19,
21,24,28, 31, 33, 36, 38,40,43,45,48,50, and 52 are asserted in this Investigation. The asserted
claims read as follows (with the first instance of the agreed-upon terms in italics and the first
instance ofthe disputed terms highlighted in bold):
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 of5 vol % and 50 vol % h-butane.
2. The method of claim 1 comprising a single subsequent adsorbent volume.
3. The method of claim 1 comprising multiple subsequent adsorbent volumes.
4. The method of claim 2 wherein the initial adsorbent volume and the subsequent
adsorbent volume are located within a single automotive evaporative emission control
canister.
9

5. The method of claim 3 wherein the initial adsorbent volume and the subsequent
adsorbent volumes are located within a single automotive evaporative emission control
canister.
8. The method of claim 1 wherein the initial adsorbent volume and the subsequent
adsorbent volume are activated carbon derived from materials selected from the group
consisting of wood, peat, coal, coconut, lignite, petroleum pitch, petroleum coke, coal tar
pitch, fruit pits, nut shells, sawdust, wood flour, synthetic polymer, and natural polymer
having been activated by a process selected from the group consisting ofchemical,thermal,
and combined chemical/thermal activation methods.
11. The method ofclaim 1 wherein the subsequent adsorbent volume exhibits adsorption
capacities achieved by volumetric dilution.
13. The method of claim 11 wherein the volumetric dilution is accomplished by forming the
adsorbent into high voidage shapes selected from the group consisting of stars, hollow
cylinders, asterisks, spirals, cylinders, and configured ribbons.
15. The method of claim 11 wherein the volumetric dilution is accomplished by the use ofinert
spacer particles, trapped air spaces,foams,fibers, and screens external to the adsorbent.
18. In a method ofreducing fuel vapor emissions in an automotive evaporative emissions control
system comprising removing at least one volatile organic compound from a volatile organic
compound-containing fuel vapor by routing the fuel vapor through a vapor adsorbent, the
improvement comprising sequentially routinithe fuel vapor through an initial adsorbent
material-containing volume wherein the initial adsorbent material is characterized by an
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 before routing the fluid stream through at
least one subsequent adsorbent-containing volume prior to venting to the atmosphere
10

wherein the subsequent adsorbent-containing volume is characterized by an incremental
adsorption capacity at 25° C. of less than 35 g n-butane/L between vapor concentrations of
5 vol % and 50 vol % n-butane.
19. The method of claim 18 wherein the initial adsorbent volume and the subsequent
adsorbent volume are located in a single automotive evaporative emissions canister.
21. The method ofclaim 18 wherein the initial adsorbent volume and the subsequent
adsorbent volume are activated carbon derived from materials selected from the group
consisting of wood, peat, coal, coconut, lignite, petroleum pitch, petroleum coke, coal tar
pitch, fruit pits, nut shells, sawdust, wood flour, synthetic polymer, and natural polymer and
activated by chemical and/or thermal activation methods.
24. The method of claim 18 wherein the subsequent adsorbent volume exhibits adsorption
capacities achieved by volumetric dilution.
28. The method of claim 24 wherein the volumetric dilution is accomplished by the use ofinert
spacer particles, trapped air spaces,foams,fibers, and screens external to the adsorbent.
31. In an evaporative emissions control system for a vehicle comprising, in combination, a fuel
tank for storing a volatile fuel, an engine having an air induction system and adapted to
consume the fuel, a canister containing an initial volume offuel vapor adsorbent material
for temporarily adsorbing and storing fuel vapor from the tank, a conduit for conducting fuel
vapor from the tank to a canister vapor inlet, a fuel vapor purge conduit from a canister purge
outlet to the induction system of the engine, and a vent/air opening for venting the canister
and for admission of air to the canister during operation of the engine induction system,
wherein the canister is defined by a fuel vapor flow path via the canister vapor inlet through
the initial volume of vapor adsorbent within a first region of the canister toward the
vent/air opening, and an air flow path through a subsequent volume of adsorbent within a
11

second region of the canister at the vent/air opening and the first region at the purge outlet,
such that fuel vapor formed in the tank flows through the vapor inlet into the initial volume
of adsorbent where it is adsorbed and, during operation of the engine induction system,
ambient air flows in a path to and through the vent/air opening and along the air flow path
in the canister through the initial volume and the purge outlet to the induction system ofthe
engine, the flow of air removing a portion of the adsorbed fuel vapor but leaving a residue
offuel in the initial volume,
the improvement wherein at least one subsequent volume of vapor adsorbent material
comprises a volume of 1 % to 100% of the first volume and is located either inside of the
canister within the second region thereof or outside of the canister, and wherein the initial
volume ofvapor adsorbent material is characterized by an incremental adsorption capacity
at 25° C. of greater than 35 g n-butane/L-bed between vapor concentrations
of5 vol % and 50 vol % n-butane before routing the air flow through at least one subsequent
volume of vapor adsorbent material wherein the subsequent volume of vapor adsorbent
material is characterized by an incremental adsorption capacity at 25° C. ofless than 35 g n-
butane between vapor concentrations of5 vol % and 50 vol % n-butane.
33. The system of claim 31 wherein the initial volume of vapor adsorbent material and the
subsequent volume of vapor adsorbent material are activated carbon derived from
materials selected from the group consisting of wood,peat, coal, coconut, lignite, petroleum
pitch, petroleum coke, coal tar pitch, fruit pits, nut shells, sawdust, wood flour, synthetic
polymer, and natural polymer having been activated by a process selected from the group
consisting ofchemical, thermal, and combined chemical/thermal activation methods.
36. The system of claim 31 wherein the subsequent volume of vapor adsorbent material
exhibits adsorption capacities achieved by volumetric dilution.
12

38. The system of claim 36 wherein the volumetric dilution is accomplished by forming the
adsorbent material into high voidage shapes selected from the group consisting of stars,
hollow cylinders, asterisks, spirals, cylinders, and configured ribbons.
40. The system of claim 36 wherein the volumetric dilution is accomplished by the use of inert
spacer particles, trapped air spaces,foams, and screens external to the adsorbent.
43. A canister operative for use in automotive systems for emission control defined by a canister
vapor inlet to permit a fuel vapor flow path through an initial volume of vapor adsorbent
within a first region of the canister toward a canister vent/air opening to permit a continued
air flow path through a subsequent volume of adsorbent within a second region of the
canister at the vent/air opening and the first region at a canister purge outlet, such that fuel
vapor formed in a tank for storing volatile fuel flows through the canister vapor inlet into the
initial volume of adsorbent where it is adsorbed and, during operation of an engine
induction system, ambient air is caused to flow in a path to and through the vent/air opening
and along the air flow path in the canister through the initial volume and the purge outlet to
the induction system of the engine, wherein the flow of air removing a portion of the
adsorbed fuel vapor but leaving a residue of fuel in the initial volume, and wherein at least
one subsequent volume of vapor adsorbent material comprises a volume
of 1% to 100% of the initial volume and is located either inside of the canister within the
second region thereof or outside of the canister, and wherein the initial volume of vapor
adsorbent material is characterized by an incremental adsorption capacity at 25° C. of
greater than 35 g n-butane/L-bed between vapor concentrations of5 vol % and 50 vol% n-
butane before routing the air flow through at least one subsequent volume of vapor adsorbent
material wherein the subsequent volume of vapor adsorbent material is characterized by an
13

incremental adsorption capacity at 25° C. of less than 35 g n-butane between vapor
concentrations of5 vol % and 50 vol % n-butane.
45. The canister of claim 43 wherein the initial volume of vapor adsorbent material and the
subsequent volume of vapor adsorbent material are activated carbon derived from
materials selected from the group consisting of wood,peat, coal, coconut, lignite, petroleum
pitch, petroleum coke, coal tar pitch, fruit pits, nut shells, sawdust, wood flour, synthetic
polymer, and natural polymer having been activated by a process selected from the group
consisting of chemical, thermal, and combined chemical/thermal activation methods.
48. The canister of claim 43 wherein the subsequent volume of vapor adsorbent material
exhibits adsorption capacities achieved by volumetric dilution.
50. The canister of claim 48 wherein the volumetric dilution is accomplished by forming the
adsorbent material into high voidage shapes selected from the group consisting of stars,
hollow cylinders, asterisks, spirals, cylinders, and configured ribbons.
52. The canister of claim 48 wherein the volumetric dilution is accomplished by the inclusion
ofinert spacer particles, trapped air spaces,foams, and screens external to the adsorbent.
V. CLAIM CONSTRUCTION
A. Construction of the Agreed-Upon Claim Terms
Prior to the Markman hearing, the Parties reached agreement regarding the construction of
one term:
Claim Term Relevant Claims Agreed Construction
"high voidage shapes" '844 patent claims 13, 26, 38,
50
"the Markush group consisting
of stars, hollow cylinders,
asterisks, spirals, cylinders,
and configured ribbons"
(JC at 1.)
14

B. Construction of the Disputed Claim Terms
1. "incremental adsorption capacity"/"adsorption capacities"
The Parties disagree on the proper claim construction and have proposed the following
constructions:
Relevant
Claims
Ingevity Respondents
'844 patent at No construction required: terms Claim terms are indefinite and not
claims 1, 11,
18, 24, 31,
36,43,48
should be given their plain and
ordinary meaning as understood by a
person of ordinary skill in the art in
susceptible to construction.
Respondents'Alternative Positionfor
light ofthe intrinsic record. claim term "incremental
adsorption capacity":
To the extent the plain and ordinary
meaning is not apparent on the face of If the AUJ does not find that
the claims themselves, "incremental "incremental adsorption capacity" is
adsorption capacity" should be indefinite, then Respondents offer the
understood, in the context of the following construction:
claims, as "the difference in
adsorption capacity of the adsorbent "a property of an adsorbent substance
volume between the conditions recited measuring the increase in
in the claims and expressed in the mass offuel vapor adsorbed at
recited units." equilibrium by the adsorbent
substance at two different vapor
And, "adsorption capacities," which concentrations based on the
appears only in claims 11, 24, 36, and density ofthe adsorbent substance
48, refers to the "incremental determined using ASTM
adsorption capacity" recited in the
independent claim from which these
claims depend.
D2854"
(JC at 1-2.)
a. Meaning ofthe Terms
Complainants agreed at the hearing that the quantity labeled on the y-axis of Figure 3 of
the '844 patent, "Mass adsorbed, g/L," is equivalent to "adsorption capacity." (Hr'g Tr. at 111;
see '844 patent at 7:17(describing the "Example 1" curve in Figure 3 as an "adsorption isotherm").)
Respondents also agreed, with the qualification that the labeled quantity was "purportedly"
"adsorption capacity." (Hr'g Tr. at 94; see RIMB,Ex. A at 12("adsorption capacity for a specific
15

gas (e.g., n-butane) can be defined as the amount(mass)of the gas that a unit(volume or mass)of
the adsorbent can adsorb")) According to Figure 3 and its explanatory text, this quantity varies
with n-butane vapor concentration, measured in percent by volume, and is isothermal, that is, the
temperature (here, 25°C)is "fixed." (RIMB,Ex. A at 12;'844 patent at Figure 3, 8:40(referencing
25°C), 9:35-40 (same).) And it is apparently measured at equilibrium, that is, when the rates of
adsorption and desorption are equal. (Id. at 2:17; see RIMB,Ex. A at 11.) Therefore,"adsorption
capacity" is the mass of a particular gas adsorbed at a particular vapor concentration and
temperature, at equilibrium, by a particular adsorbent volume.
By extension,"incremental adsorption capacity" is the difference in "adsorption capacity,"
at constant temperature and between two different vapor concentrations. Complainants' proposed
construction is substantially the same and I generally adopt their language. (See JC at 1-2.)
However, "adsorption capacity" may be determined without also determining "incremental
adsorption capacity," so I reject Complainants' contention that "adsorption capacities" means
"incremental adsorption capacity." (See id.) Instead,"adsorption capacities" is simply the plural of
"adsorption capacity," and need not otherwise be construed.
Respondents' proposed construction generally includes the language defining "adsorption
capacity," and refers to the difference between two different vapor concentrations. (See JC at 1-2.)
However, Respondents' proposed construction is otherwise inappropriate because it includes
additional language not found in the claims,including "property,""adsorbent substance,""based on
the density," and "ASTM D2854." (Id.) Respondents' proposed construction also reads the term
"adsorbent volume" completely out of the claims. (See RIMB at 34 (arguing that incremental
adsorption capacity should not consider "canister hardware,inert spacer particles,foams,fibers, and
screens external to the adsorbent in its determination.")) And Respondents place too much weight
on an information disclosure statement distinguishing the claims ofthe '844 patent's parent over the
16

prior art by referencing "the properties of the adsorbent contained therein." (See RIMB at 33-34
(citing RIMB, Ex. AA at 2).) Respondents offer no evidence that the examiner relied on this
statement, and in any event the applicants seemingly could just as easily have referenced "the
properties ofthe adsorbent volume contained therein." (See id.)
b. Indefiniteness in General
Respondents present several unpersuasive arguments for the indefiniteness of"incremental
adsorption capacity." For example, Respondents point out that the patent does not "explain what
'incremental adsorption capacity' means and does not disclose any method to determine" that
quantity. (RIMB at 10.) But Respondents' own expert understands the meaning of "adsorption
capacity," and describes multiple procedures for measuring it. (See RIMB,Ex. A at 11-13, 33-42,
50-51.) This strongly suggests the term has a plain meaning. Phillips, 415 F.3d at 1313 (the
"ordinary and customary meaning of a claim term" is the one understood by a person of ordinary
skill in the art at the time of the invention).) Indeed,"incremental adsorption capacity" is simply
the difference between two "adsorption capacities" under certain conditions.
I find the '844 patent was not required to disclose a particular method for measuring that
quantity because one skilled in the art would have known how to measure "adsorption capacity"
under two sets of conditions, and then subtract one measurement from the other. (See Hr'g Tr. at
93 ("I would agree that a person of skill would have known or heard of the term 'adsorption
capacity,' and would have been familiar with some of the many methods.").) That multiple
measurement methods produce different results, and with different degrees of precision, accuracy,
and consistency, does not change this conclusion. (See generally RIMB at 14-25.) Indeed, it is
hardly surprising that "two methods us[ing] different means... can produce different results even
for the same sample." Takeda Pharm. Co. Ltd v. Zydus Pharms. USA, Inc., 743 F.3d 1359, 1366
17

(Fed. Cir. 2014). Therefore, "[t]hat there is more than one way of determining [the claimed
parameter] does not render that clear claim language indefinite." Id. at 1367.
The case law on which Respondents rely is not to the contrary. In Dow Chemical Co. v.
Nova Chemicals Corp. (Canada), 803 F.3d 620, 631 (Fed. Cir. 2015), the quantities requiring
laboratory measurement were the tensile force applied to a material sample and the resultant
lengthening ofthat sample. The claim language,however,required determination ofa more abstract
quantity that apparently could not be directly measured in the laboratory, namely, the maximum
value ofthe "slope of strain hardening," or the maximum change in length divided by the change in
force causing it. Id. at 633. Because this more abstract quantity required, in essence, estimation by
interpolation or curve-fitting, and there was no standard method for such estimation known to one
skilled in the art, the claim language was held indefinite. Id. at 634-35. Here, by contrast, there is
no dispute that "adsorption capacity" is a physical parameter that may be measured in the laboratory,
and "incremental adsorption capacity" is easily determined by subtraction. (See generally RIMB at
14-25.)
Similarly, in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1338 (Fed.
Cir. 2015), the claims used the term "molecular weight," without specifying whether that referred
to "peak average molecular weight," "number average molecular weight," or "weight average
molecular weight," all of which are calculated differently. Here, there is no ambiguity about the
definition of "adsorption capacity," notwithstanding that it can be measured using different
techniques. (See RIMB,Ex. A at 11 (defining adsorption capacity).)
Respondents also argue that the '844 patent's disclosure is "deficient" because a later patent
assigned to Complainants has a different specification and more detail regarding "incremental
adsorption capacity." (RIMB at 25-26 (citing U.S. Patent No. 9,732,649("the '649 patent")).) To
be sure, the '649 patent's disclosure appears to be more fulsome on the meaning of "incremental
18

adsorption capacity" than the '844 patent's, but this does not mean that the '844 patent's claims are
so lacking as to be indefinite, nor does it amount to a concession of that point by Complainants.
(See RIMB,Ex.Z at 13:38-14:32.)
Respondents further argue that the European Patent Office rejected the '844 patent's
European counterpart on grounds equivalent to indefiniteness. (See RIMB at 27-29.) This is
immaterial, because the European Patent Office does not apply U.S. indefiniteness rules. (See
RIMB,Ex. E at 8.)
Respondents' final unpersuasive argument is that because there are "[n]o specific test points
within th[e] range" of vapor concentrations recited in the claims, the "incremental adsorption
capacity" can vary depending on the test points selected. (RIMB at 26-27.) This argument is
foreclosed by the definition of "incremental adsorption capacity," where the test points are the
parameters recited in the claims; in this case,5% and 50% vapor concentration.
c. Potential Indefiniteness of"adsorbent volume"
All that said, Respondents do raise one substantial question of indefiniteness: the meaning
of"adsorbent volume." This issue was raised most clearly during the hearing, when Respondents'
counsel asked, "if [the adsorbent volume] is supposed to include something more than just the
carbon,...[h]ow do I know where it ends and where it begins?" (Hr'g Tr. at 136.) One concrete
example ofthis ambiguity was shown with reference to Figure 2 ofthe '844 patent:
If you have a foam insert separating region 9 into two separate regions, what's to say
that that's still a single volume under [Complainants'] proposed construction[?]
Why would that not now become two separate subsequent adsorbent volumes[?]
(Id. at 146-47.) Complainants' counsel asserted that column 7 of the '844 patent discloses "foam
layers as part ofthe adsorbent volume 9." (Id. at 145.) In fact, column 7 ofthe'844 patent discloses
volumetric dilution by addition of filler pellets and by a honeycomb with an "open cell structure,"
19

but it does not disclose foam layers, or volumetric dilution by any other method. ('844 patent at
7:6-67.)
Similarly, Respondents' counsel argued that:
[A] person of ordinary skill trying to understand what the adsorbent volume would
be could not determine whether region 8, if they are trying to determine the
incremental adsorption capacity in region 8, whether it should include whatever
volume would be taken up by the support screen or whether it should include that air
that's reflected in the bottom ofthat canister. Should that be attributed to the volume
of the adsorbent material in region 8 or should it be attributed to the adsorbent
materials as shown in region 9?
(Hr'g Tr. at 135-36.) In response, Complainants' counsel "[took] the position that the space with 2,
that seems to link 8 and 9 past the dividing wall,... that's not a volumetric diluent for either 8 or
9," but gave no specific reason for taking that position; later in the hearing, however, Complainants'
counsel took the position that that region was a "trapped air space," which is undeniably a species
of volumetric diluent according to the '844 patent. (Id. at 145, 174-75; '844 patent at 7:24-25,
11:35.) In any event, the '844 patent's description of Figure 2 is silent as to whether the air space
shown at the bottom of the depicted canister is a volumetric diluent, and if so, which adsorbent or
adsorbents it dilutes. ('844 patent at 6:30-42.)
This presents a serious question ofindefiniteness for at least some ofthe asserted claims. A
hypothetical adapted from the scenarios discussed at the hearing illustrates the severity of the
problem. Assume a system configuration like that shown in Figure 1 ofthe '844 patent, comprising
canister 1,connections 4, 5, and 6,and two bodies ofadsorbent material 7. (See '844 patent at 1:58-
64.) The interior of the canister is configured so that the two adsorbent bodies consist ofthe same
material, they are separated by an impermeable dividing wall 3, and a support screen 2 holds them
in place, with air in the space below the support screen external to, but communicating with,the two
adsorbent bodies; I refer to this air space as the "air gap." With diurnal breathing loss emissions,
vapor flows out of the fuel tank, into canister 1 via vapor source connection 5, through the first
20

adsorbent body 7,then through the air gap and the second adsorbent body 7, and finally out the vent
port 4.
If the effect of the air gap is ignored, the material of the two adsorbent bodies is identical,
and the size and shape ofthe two adsorbent bodies are identical,then this system does not fall within
the scope of any claim of the '844 patent, because the "incremental adsorption capacities" of the
two adsorbent bodies are necessarily the same. But assume instead that the first body of adsorbent
material has an "incremental adsorption capacity" in excess of35 g/L, and the second body is made
of the same adsorbent material and it is volumetrically diluted with a "non-adsorbing filler," as
recited in claim 12. ('844 patent at 11:19-20.) If the "non-adsorbing filler" is sufficient to reduce
the "incremental adsorption capacity" of the second adsorbent body to less than 35 g/L, then the
system would seemingly fall within the scope of claim 12(and claims 1 and 11, from which claim
12 depends). And the measurement of the "incremental adsorption capacity" of the second
adsorbent body is straightforward, because the volume ofthat body is readily determined.
There is no clear reason, however, why the effect ofthe air gap should be ignored. Assume
again that the two adsorbent bodies are the same material and the same shape and size. Assume
further that the air gap is the same volume as both ofthe two adsorbent bodies,and that the adsorbent
material without dilution has an "incremental adsorption capacity" in excess of35 g/L. Under these
assumptions, the air gap would volumetrically dilute one or both of the adsorbent bodies. The
specification explicitly discloses "simply trapped air space between layers of adsorbent" as a
"method for diluting the vent-side region." ('844 patent at 7:18, 7:24-25.) And claim 15 expressly
recites "trapped air spaces .. . and screens external to the adsorbent" as means for accomplishing
volumetric dilution. (Id. at 11:35-36.) "Trapped air spaces" is construed below, and in such a way
that the air gap falls within its scope.
21

Ifthe air gap in its entirety volumetrically dilutes the second adsorbent body, it seems likely
the second adsorbent body's "incremental adsorption capacity" would be approximately halfthat of
the first adsorbent body (because the effect ofthe air gap is to double the second adsorbent body's
effective volume in g/L units). In this case, the system could easily fall within the scope of claim
15(and claims 1 and 11,from which claim 15 depends)ifthe resulting "adsorption capacity" ofthe
second adsorbent body is less than 35 g/L. Conversely, if the air gap in its entirety volumetrically
dilutes the first adsorbent body, the system would seemingly not fall within the scope of claim 15,
because the "incremental adsorption capacity" of the first body would be too low, and the
"incremental adsorption capacity" of the second body would be too high. And if the air gap
volumetrically dilutes both bodies at the same time, whether the system falls within the scope of
claim 15 depends on how that volumetric dilution is apportioned.
The patent is silent on such apportionment, that is, on how the hypothesized air gap dilutes
the adsorbent bodies with which it communicates; there is no apparent reason that the air gap will
only volumetrically dilute the "subsequent adsorbent volume" and not the "initial adsorbent
volume." This problem is not merely hypothetical. One preferred embodiment, depicted in Figure
3, appears to possess just such an air gap, but the description ofthat preferred embodiment does not
even label it. So unless one skilled in the art would already know how to apportion the volumetric
dilution,achieved by the air gap, it is not clear that a person of ordinary skill would be able to
determine whether even the preferred embodiment falls within the scope ofclaims 1, 11, and 15. In
other words, it appears that these claims, "viewed in light of the specification and prosecution
history," do not "inform those skilled in the art about the scope of the invention with reasonable
certainty." Nautilus, 134 S. Ct. at 2129.
22

j
d. 	Deferral of the Issue
Nonetheless, it is in~ppropriate to rule on this issue yet, for three ~easons. First, as noted by
Complainants' counsel at the hearing, this partic\llar hypothetical was "not something that's been
briefed per se." 	(Hr'g Tr. at 145.) 	In fact, Respondents' argument on the indefiniteness of
accounting for volumetric dilution in the.mea,&urementof "increitiental adsorption capacity" appears.
to ha,ve evolved over time. 	The first explicit mention o(this issue in the parties' claim construction
briefs is a short argument by Respondents· regarding. a different claim term, "vapor adsorbent
. 	"
nraterial." {RIMB at 40 ("it is not app~ent whether any voidage betweeμ. carbons or incidental
components 	constitute 	'vapor 	adsorbent 	matedal."').) 	As 	noted, 	Respondents 	argue 	that
"incremental adsorption capacity," if not indefinite,.should be limited to the "incremental adsorption	~, 	jl 	~
capacity" of the adsorbent substance alone, "as opposed to, e.g., a property ·of the region <;:>fa fuel
vapor canister." (Id. at 31.) Bμt th~y do not argue in their initial brief that "incremental adsorption
capacity"•is indefinite for the same reasorr"vijpor adsorbent material" is indefinite.
In their reply brief, by contrast, Respondents flatly assert that "nothing in the "844 patent
instructs a PHOSITA where the relevant volume begins and ends" for purpose.s of measuring
'•
"incremental adsorption capacity." (RRMB at 13-14.) ComplainanJs hav,e not, of course, had an_,,
opportunity to respond to this prior to the.hearing, and they pointed out at the hearing that they were
"addressing this on the fly." (Hr'g Tr. ~t 145.) This may explain why their position at the hearing
was conclusory and unsupported by the '844 patent. 	(See.id.) 	In short, .this issue has not been
adequately litigated yet.,
A second reason to defer resolution of this issue is the dearth of extrinsic ~vidence supporting
indefiniteness. Whether a claim is indefinite must normally be evaluated from the standpoint of one
skilled in the art. See Nautilus, 134 S. Ct. at 2129. It may ht that there is a standard method, known
to one skilled in the art bμt not disclosed in the '844 patent, for measuring the effect of volumetric
23

dilution on "adsorption capacity"; or there may be no such standard method. But Respondents' best
extrinsic evidence of this is the declaration of their expert, Mr. James Lyons, who essentially does
not discuss the issue at all. (See generally RIMB, Ex. A.) In particular, Mr. Lyons' opinion that
"there was no industry standard method for measuring adsorption capacity" is based on an analogy
to measuring a different parameter(butane working capacity) and is otherwise conclusory, and his
opinion regarding the meaning of"vapor adsorbent material" does not allude to the uncertainty over
how to apportion the effect of an air gap or other volumetric diluent external to the adsorbent.
(RIMB, Ex. A at 33, 52-53, 66; see RIMB at 40.) Nor does Complainants' expert, Dr. David
Rockstraw, address this issue in his declaration. (See CRMB, Ex. 11.) On balance, I cannot
conclude by clear and convincing evidence at this time that Respondents have proven the
indefiniteness ofthe term "adsorbent volume."
Thirdly, even if there were such evidence, the parties have not identified which asserted
claims are indefinite. For example, claims 1, 11, and 15 might be indefinite because the claimed
volumetric dilution is accomplished by air gaps and screens"external to the adsorbent." ('844 patent
at 11:35-36.) But in claim 13, volumetric dilution is "accomplished by forming the adsorbent into
high voidage shapes," that is, the volumetric dilution does not involve use of spaces external to the
adsorbent. (Id. at 11:26-27.) Such shapes may avoid the problem presented by air gaps and screens,
and claim 13 therefore may not be indefinite. But at the hearing Respondents' argument was
presented only in the context of "vapor adsorbent material," a term found only in claims 31 and
higher, and not "adsorbent volume," a term found in the lower-numbered claims. (See Hr'g Tr. at
135-36, 146-47.)
As another example, claim 18 recites an "initial adsorbent material [] characterized by an
incremental adsorption capacity. .. of greater than 35 g n-butane/L" but a "subsequent adsorbent-
containing volume []characterized by an incremental adsorption capacity. .. of less than 35 g n-
24

butane/L." ('844 patent at 11:35-36 (emphasis added).) This difference may suggest that any
calculation of adsorption capacity should not apportion volumetric dilution to the initial adsorbent
volume at all. If so, that apportionment method may only apply to claim 18 and its dependent
claims. Overall, further briefing is required regarding which specific claims may be indefinite.
In sum, it is premature to hold any claims implicated by the term "adsorbent volume"
indefinite. I therefore defer ruling on this indefiniteness issue. All other indefiniteness arguments
are rejected.
e. Construction
The term "adsorption capacity" is hereby construed as "the mass ofa particular gas adsorbed
at a particular vapor concentration and temperature, at equilibrium, by a particular adsorbent
volume."
The term "incremental adsorption capacity" is hereby construed as "the difference in
adsorption capacity of the adsorbent volume between the conditions recited in the claims and
expressed in the recited units."
Inasmuch as "adsorbent volume" requires construction, I decline to construe it at this time.
2. "initial adsorbent volume"/"initial volume of adsorbent material"/"initial
volume of vapor adsorbent material" / "initial volume of fuel vapor
adsorbent material"/"subsequent adsorbent volume"/"subsequent volume
of adsorbent"/"subsequent volume of vapor adsorbent material"/"second
volume of vapor adsorbent material"
The Parties disagree on the proper claim construction. They have proposed the following
constructions ofthe "initial" claim language:
Relevant
Claims
Ingevity Respondents
'844 patent at
claims 1, 4-
10, 18-23, 31,
33-35, 43,45-
47
No construction required: terms
should be given their plain and
ordinary meaning as understood by a
person of ordinary skill in the art in
light ofthe intrinsic record.
"an adsorbent substance located in the
fluid stream ofthe fuel
source-side region ofthe canister that
first receives the fuel vapor
from the fuel source"
25

To the extent the plain and ordinary
meaning is not apparent on the face of
the claims themselves, these terms
refer to "a volume containing an
adsorbent that comes before, with
respect to the flow of fuel vapors, the
subsequent adsorbent volume."
(JC at 2.)
They have proposed the following constructions of the "subsequent" claim language:
Relevant
Claims
Ingevity Respondents
'844 patent at No construction required: terms "an adsorbent substance located in the
claims 1-11, should be given their plain and fluid stream ofthe vent-side
18-24, 28, ordinary meaning as understood by a region ofthe canister that receives the
31-36, 43-48 person of ordinary skill in the art in fuel vapor after it passes
light ofthe intrinsic record. through the fuel source-side region of
the vapor canister"
To the extent the plain and ordinary
meaning is not apparent on the face of
the claims themselves, these terms
refer to "a volume containing an
adsorbent that comes after, with
respect to the flow of fuel vapors, the
initial adsorbent volume."
(JC at 2-3.)
These meaning of these two sets of claim terms, which are interrelated and are properly
considered together, was greatly clarified by the parties' tutorial. Referring to Figure 3 ofthe '844
patent, it may be inferred from the tutorial that:
[D]uring the day,the tank heats up,pressure increases in the fuel tank, and the vapors
and the air will flow from the tank [via vapor source connection 5] through the
canister [and its contents, including adsorbent regions and bodies 7-12], and out to
the air [via vent port 4].
(Hr'g Tr. at 11:10-13.) Conversely:
[Alt night, when the temperature goes down, the pressure drops, and so air comes
back in the opposite direction from the atmosphere [via vent port 4] through the
canister [and its contents, including adsorbent regions and bodies 7-12]. And then
into the fuel tank [via vapor source connection 5], presumably.
26

(Id at 11:14-17.) During the flow of purge air, the air flow follows this second path, except that it
exits the canister via vacuum purge connection 6 and then flows to the engine air intake. (Id. at
13:7-10, 13:19-22.)
Claim 1 covers a method "comprising the steps of contacting the fuel vapor with an initial
adsorbent volume. . . and at least one subsequent volume." ('844 patent at 10:37-42.) Claim 2
covers a single "subsequent adsorbent volume," and claim 3 covers multiple "subsequent adsorbent
volumes." (Id. at 10:45-48.) The initial and subsequent volumes may be in the same canister(claims
4 and 5) or separate canisters that are "connected to permit sequential contact by the fuel vapor"
(claims 6 and 7). (Id. at 10:49-64.) Independent claim 18 and its dependent claims are to similar
effect, however,as claim 18 covers "sequentially routing the fuel vapor through an initial adsorbent-
containing volume... before routing the fluid stream through at least one subsequent adsorbent-
containing volume prior to venting to the atmosphere." (Id. at 11:47-54.) Independent claims 31
and 43 and their dependent claims recite "routing the air flow through at least one subsequent
volume." (Id. at 13:5-6, 14:14-15.) Dependent claim 32 recites "the second volume of vapor
adsorbent material," which surely corresponds to a "subsequent volume." (Id. at 13:12-13.)
The parties agree that the "initial" and "subsequent" language should be construed
consistently in all pertinent claims. (See CIMB at 24; RIMB at 36 nn.15-16.) And the parties agree
that these terms impose a temporal limitation, that is, they "should be construed to identify [] the
relative interaction-order with the fuel vapor." (RIMB at 36; see CIMB at 22-23.) Given the
requirement in claim 18 that the vapor contact with all volumes be "prior to venting to the
atmosphere," and the preferred embodiment shown in Figure 2, where the "fluid stream flow [is]
from the primary canister body 1 to the supplemental canister body 12," and then to the atmosphere
27

via vent port 4, the relative interaction order is the one corresponding to daytime vapor venting.
('844 patent at 6:38-40.)
Respondents, however, contend that the construction should further include a limitation on
"the adsorbent volume's location in the canister system." (RIMB at 36;see JC at 2-3 (reciting "fuel
source-side" and "vent-side" regions of the canister).) It is true that claim 31 recites a "system,"
and claim 43 recites a "canister," suggesting some spatial configuration might be appropriate. ('844
patent at 12:40, 13:58.) It is also true that in describing the "subsequent adsorbent volume," the
specification repeatedly refers to it as the "vent-side" volume, which also suggests a spatial
configuration. (Id. at 3:47,4:40, 5:57,6:44; see id. at 4:42-44("Since it is the vapor near the purge
inlet that eventually emerges as bleed, decreasing this concentration reduces the bleed emission
level.").)
But nothing in the language of the claims imposes any spatial limitations, nor do
Respondents identify any such language. (See RIMB at 36-39.) That the "effectiveness of the
invention" (id at 39) may depend to some extent on the proximity of a "subsequent adsorbent
volume" to the vent port does not mean proximity should be read into the claims when the claims
are by their own terms silent on the issue. Phillips, 415 F.3d at 1323 (holding that particular
examples or embodiments discussed in the specification are not to be read into the claims as
limitations).
Therefore, the claim terms refer solely to interaction order, and more precisely to the
interaction order when vapor flows out of the fuel tank, through the adsorbent material system or
canister, and out to the atmosphere. I therefore adopt Complainants' proposed construction, except
that, for clarity, I use the expression "flow of vapors from the fuel tank" rather than "flow of fuel
vapors." Complainants have stated they have no objection to this amendment. (Hr'g Tr. at 119.)
28

Accordingly, "initial adsorbent volume," "initial volume of adsorbent material," "initial
volume of vapor adsorbent material," and "initial volume of fuel vapor adsorbent material," are
hereby construed as "a volume containing an adsorbent that comes before, with respect to the flow
of vapors from the fuel tank, the subsequent adsorbent volume."
"Subsequent volume ofadsorbent,""subsequent volume ofadsorbent,""subsequent volume
of vapor adsorbent material," and "second volume of vapor adsorbent material" are hereby
construed as "a volume containing an adsorbent that comes after, with respect to the flow of vapors
from the fuel tank, the initial adsorbent volume."
And again, inasmuch as "adsorbent volume" requires its own construction, I decline to
construe it at this time.
3. "vapor adsorbent material"
The Parties disagree on the proper claim construction and have proposed the following
constructions:
Relevant
Claims
Ingevity Respondents
'844 patent at
claims 31-36,
43-48
No construction required: term
should be given its plain and ordinary
meaning as understood by a person of
ordinary skill in the art in light ofthe
intrinsic record.
"substance useful for adsorbing fuel
vapor"
(JC at 3.)
In every instance where this term appears in the claims, it is preceded by the term "volume
of'or "volume offuel." ('844 patent at 12:40-14:42;see CIMB at 29 n.10.) The parties' dispute is
over whether "incremental adsorption capacity" measurements are "limited to volumes of'vapor
adsorbent material,' [or should include] additional diluent volumes." (RRMB at 20; see CRMB at
21 ("Volume is a key concept that Respondents improperly attempt to write out of the claims.").)
As explained above, volumetric dilution is a feature of many claims — e.g., claims 36 and 48 both
29

explicitly recite "volumetric dilution" — but I decline to construe the term "adsorbent volume" at
this time. The term "volume of vapor adsorbent material" or "volume of fuel vapor adsorbent
material" appears to mean the same as "adsorbent volume," and I similarly decline to construe the
terms "vapor adsorbent volume,""volume of vapor adsorbent material," or "volume of fuel vapor
adsorbent material" at this time.
4. "cylinder"/"hollow cylinder"
The Parties disagree on the proper claim construction and have proposed the following
constructions:
Relevant
Claims
Ingevity Respondents
'844 patent at No construction required: terms Cylinder: "a geometric solid with two
claims 13, 26,
38,50
should be given their plain and
ordinary meaning as understood by a
circular bases and a curved surface"
person of ordinary skill in the art in
light ofthe intrinsic record.
Hollow Cylinder:"an empty tube"
To the extent the plain and ordinary
meaning of"hollow cylinder" is not
apparent on the face ofthe claims
themselves, it is "a cylinder with one
or more voids in it."
(JC at 3.)
The parties have two basic disputes over these terms. First, they dispute whether the term
"cylinder" is limited to a shape having a cross section that is "essentially perfectly circular," or can
include a shape having a cross section that is "substantially" circular. (Hr'g Tr. at 164:17, 167:1-
4.) Second, they dispute whether, on the one hand, a "cylinder" must be solid and a "hollow
cylinder" an empty tube (Respondents' position), or whether, on the other hand, a "cylinder" is
simply a cylinder and a "hollow cylinder" is a cylinder with one or more voids in it(Complainants'
position). (See Hr'g Tr. at 161:11-17; CRMB at 25.)
30

Extrinsic evidence is unnecessary to construe the term "cylinder," except for one undisputed
point from the tutorial. Specifically, it is undisputed that one skilled in the art would have known
that cylindrical pellets, which are expressly disclosed in the specification and surely fall within the
scope ofthe pertinent claims, are substantially cylindrical but not necessarily perfectly cylindrical.
(See Tutorial at 6.) And the terms "cylindrical" and "pellet," which are found in several places in
the specification, imply a shape that is substantially, but not necessary perfectly, cylindrical.
(E.g.,'844 patent at 2:26, 7:62.) The term "cylinder" therefore means a shape that is substantially
cylindrical.
As for "hollow cylinder," the specification discloses volumetric dilution by "form[ing] the
extrusion paste into high voidage shdpes such as hollow cylinders, asterisks, stars, or twisted, bent,
or spiral ribbon pieces"; the use of the adjective "hollow" at the beginning of the list of shapes
suggests that all the shapes might be hollow. ('844 patent at 7:20-22.) However, according to the
claims a solid "cylinder" may also be a high voidage shape: "volumetric dilution is accomplished
by forming the [adsorbent or adsorbent material] into high voidage shapes selected from the group
consisting of. . . cylinders." (E.g., '844 patent at 14:49-53.) The specification discloses "high
voidage" in at least four circumstances: (1)the objects are solid but voids are created by the gaps
between them,as with pellets or granules;(2)the objects are "thin-walled cross-section shapes";(3)
the objects have some interior structure that nonetheless permits air flow through the object, such
as a "monolith" possessing "voidages larger than 50A"; and(4)the objects are honeycombs. (Id. at
2:26-27, 4:22-23, 7:26, 10:28-30.) "High voidage" may therefore be accomplished by how the
shapes are arranged, for example, by shaping them and making them small enough so that there are
gaps between them, or by making the shapes either partially hollow (as with a honeycomb) or
completely hollow (as with an entirely hollow cylinder). So it may not be especially significant
whether any particular shape — here, a "cylinder" — is completely hollow or completely solid or
31

something in between,so long as there is both volumetric dilution and adequate air flow. (See, e.g.,
id. at 3:14-20(describing the "drawback" of"excessive flow restriction").)
On the other hand,it may be very significant, because the use of"hollow" in the claims only
to modify "cylinders," and not other shapes, suggests that "cylinders" and "hollow cylinders" are
distinct categories. (See RIMB at 41-42.) The parties cite extrinsic evidence to resolve this question,
but there is intrinsic evidence that should also be considered, yet apparently has not. (See CIMB at
34; RIMB at 42-46.) Specifically, there are at least three unaddressed questions posed by the
intrinsic evidence. First, does the fact that the Markush group includes cylinders and hollow
cylinders, but not honeycombs or monoliths with voidages, mean that even cylindrical honeycombs
or monoliths are not part of the Markush group? See Multilayer Stretch Cling Film Holdings, Inc.
v. Berry Plastics Corp., 831 F.3d 1350, 1360-61 (Fed. Cir. 2016)(holding that "selected from the
group consisting of' means the claim element is closed to species other than those recited). Second,
and relatedly, what is the significance of the fact that cylinders and hollow cylinders are found in
one set of claims, but honeycombs and monoliths (even, perhaps, cylindrical ones) are found in a
different set ofclaims, where neither set ofclaims depend from the other? (Compare '844 patent at
11:30-32 (claim 14) with id. at 11:33-36 (claim 15).) Third, does the specification's disclosure of
"voidages larger than 50A within the shaped particle" have any bearing on whether shaped particles
not specifically claimed as"hollow" —i.e.,stars, asterisks, spirals, cylinders, and configured ribbons
— may be partially hollow or otherwise possess some internal structure? (See id. at 10:29-30.)
Although there was some discussion ofthese matters in the briefs and at the hearing, and the
parties specifically disagreed on whether honeycombs qualified as hollow cylinders, on the whole
more briefing is needed on the intrinsic evidence before it is appropriate to rely heavily on extrinsic
evidence. (Hr'g Tr. at 157, 163.) Therefore,I will defer construing the term "hollow cylinder" until
after fuller briefing.
32

Accordingly, "cylinder" is hereby construed as "a substantially cylindrical shape."
Inasmuch as "hollow cylinder" requires construction, I decline to construe it at this time.
5. "trapped air spaces"
The Parties disagree on the proper claim construction and have proposed the following
constructions:
Relevant
Claims
Ingevity Respondents
'844 patent at
claims 15, 28,
40, 52
No construction required: term
should be given its plain and ordinary
meaning as understood by a person of
ordinary skill in the art in light ofthe
intrinsic record.
"spaces where air or fuel vapors are
prevented from escaping"
.
(JC at 4.)
Respondents' proposed construction takes an overly narrow view of "trapped." The
specification discloses a "trapped air space" as a "method[]for diluting the vent-side region." ('844
patent at 7:18-26.) Dilution requires "contacting the fuel vapor" with adsorbent volumes,as recited
in claim 1, where the adsorbent volumes "exhibit[] adsorption capacities achieved by volumetric
dilution," as recited in claim 11. (Id. at 10:38, 11:16-17.) That is, the claims require air flow at
least between initial and subsequent adsorbent volumes. (E.g., id. at 12:51 (reciting a "fuel vapor
flow path")) So Respondents' proposed construction is plainly incorrect, because a space where
air or fuel vapor is prevented from escaping has no air flow, and necessarily cannot act as a
volumetric diluent.
The specification sheds light on the issue. Volumetric dilution can be achieved "simply
[with] trapped air spaces between layers of adsorbent." (Id at 7:24-25.) "[S]imply trapped . . .
between layers" suggests, first, simplicity — there is nothing in the space other than the vapor/air
mixture — and second, that the vapor/air mixture is sandwiched between two objects — here, layers
of adsorbent. And although the "trapped air space" must volumetrically dilute at least the
33

"subsequent adsorbent volume," nothing in the pertinent claims requires contact with layers of
adsorbent, as opposed to, for instance, layers of inert foam. So one embodiment of a "trapped" air
space is an air space that falls between two layers of material, either adsorbent or inert. Additionally,
the space shown in Figure 2 below screen 2 may volumetrically dilute either or both adjacent
adsorbent bodies, and it may thus constitute an embodiment of a "trapped air space" even though it
is sandwiched between the canister wall and the adsorbents. Other configurations may also qualify
as embodiments, so long as the "trapped air spaces" are:(1)otherwise empty, that is, air spaces;(2)
located between two other components of the claimed system or canister, that is, internal to the
system or canister; and (3)volumetric diluents.
Accordingly, "trapped air spaces" is hereby construed as "internal air spaces operative as
volumetric diluents."
VI. PROCEDURAL ISSUES
I have construed the term "trapped air spaces" independently and have not relied on
Complainants' points and authorities. And I have not considered patents assigned to Respondents
in construing the claims. Respondents' objections to Complainants' arguments on these issues, to
the extent they constitute motions to strike, are therefore denied as moot. (Hr'g Tr. at 169, 177.)
SO ORDERED.
Cameron Elliot
Administrative Law Judge
34

CERTAIN MULTI-STAGE FUEL VAPOR CANISTER
SYSTEMS AND ACTIVATED CARBON COMPONENTS
THEREOF
INV. NO.337-TA-1140
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached Order No. 15 has been served upon
the following parties as indicated, on JUN 2 1 7019
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street SW,Room 112A
Washington, DC 20436
FOR COMPLAINANTS INGE'VITY CORP.& INGEVITY SOUTH CAROLINA,LLC
Jeffrey T. Thomas,Esq.
GIBSON,DUNN & CRUTCHER LLP
3161 Michelson Dr.
Irvine, CA 92612
( ) Via Hand Delivery
( ),Express Delivery
( Via First Class Mail
( ) Other:
FOR RESPONDENTS MAME FILTER SYSTEMS NORTH AMERICA,INC.,
IVIAHLE FILTER SYSTEMS JAPAN CORP.,MAME SISTEMAS DE FILTRACION
DE MEXICO S.A.DE C.V.,and IVIAHLE FILTER SYSTEMS CANADA,ULC
David A. Hickerson, Esq.
FOLEY & LARDNER LLP
3000 K Street NW
Washington, DC 20007
( )Via Hand Delivery
( Express Delivery
( Via First Class Mail
( )Other:
FOR RESPONDENTS ICURARAY CO.,LTD.,ICURARAY AMERICA,INC.,
NAGAMINE MANUFACTURING CO.,LTD.,& CALGON CARBON
CORPORATION
Goutam Patnaik, Esq.
PEPPER HAMILTON LLP
600 14th Street, NW
Washington, DC 20005
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( )/Express Delivery
(16 Via First Class Mail
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