Ingevity Corporation v. Itc ( 2021 )

Case: 20-1800 Document: 87-2 Page: 1 Filed: 07/21/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
INGEVITY CORPORATION, INGEVITY SOUTH
CAROLINA, LLC,
Appellants
v.
INTERNATIONAL TRADE COMMISSION,
Appellee
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, KURARAY CO., LTD., CALGON CARBON
CORPORATION,
Intervenors
______________________
2020-1800
______________________
Appeal from the United States International Trade
Commission in Investigation No. 337-TA-1140.
______________________
SEALED OPINION ISSUED: July 21, 2021
Case: 20-1800 Document: 87-2 Page: 2 Filed: 07/21/2021
2 INGEVITY CORPORATION v. ITC
PUBLIC OPINION ISSUED: August 6, 2021 *
______________________
MARK ANDREW PERRY, Gibson, Dunn & Crutcher LLP,
Washington, DC, argued for appellants. Also represented
by BRIAN BUROKER; TAYLOR KING, JEFFREY T. THOMAS, Ir-
vine, CA.
RONALD TRAUD, Office of the General Counsel, United
States International Trade Commission, Washington, DC,
argued for appellee. Also represented by DOMINIC L.
BIANCHI, WAYNE W. HERRINGTON.
JEANNE MARIE GILLS, Foley & Lardner LLP, Chicago,
IL, argued for intervenors 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. Also represented by
DANIEL FLAHERTY, RICHARD SPENCER MONTEI; JUSTIN
SOBAJE, Los Angeles, CA.
RAYMOND ALAN MILLER Troutman Pepper Hamilton
Sanders LLP, Pittsburgh, PA, for intervenors Kuraray
Co., Ltd., Calgon Carbon Corporation.
______________________
Before MOORE, Chief Judge **, SCHALL and TARANTO,
Circuit Judges.
SCHALL, Circuit Judge.
* This opinion was originally filed under seal and has
been unsealed in full.
** Chief Judge Kimberley A. Moore assumed the po-
sition of Chief Judge on May 22, 2021.
Case: 20-1800 Document: 87-2 Page: 3 Filed: 07/21/2021
INGEVITY CORPORATION v. ITC 3
DECISION
Ingevity Corp. and Ingevity South Carolina, LLC (col-
lectively, “Ingevity”) are the owners of U.S. Patent No.
RE38,844 (“the ’844 patent”). On November 8, 2018, Ingev-
ity filed a complaint before the International Trade Com-
mission (“the Commission”) alleging a violation of 19
U.S.C. § 1337 (“section 337”) due to the importation of
products that infringed one or more claims of the ’844 pa-
tent. In an amended complaint filed on March 28, 2019,
Ingevity named MAHLE Filter Systems North America,
Inc., MAHLE Filter Systems Japan Corp., MAHLE Siste-
mas de Filtración de México S.A. de C.V., MAHLE Filter
Systems Canada, ULC, Kuraray Co., Ltd., and Calgon Car-
bon Corporation (collectively, “Intervenors”) as Respond-
ents. 1 Thereafter, following proceedings that included an
evidentiary hearing before an administrative law judge
(“ALJ”), on April 7, 2020, the Commission determined that
Intervenors did not violate section 337 because the as-
serted claims of the ’844 patent were invalid under 35
U.S.C. § 102(g)(2) and/or 35 U.S.C. § 103(a) 2 in view of a
prior invention by engineers at non-party Delphi Technol-
ogies, Inc., or over the combination of that prior invention
and other prior art. In the Matter of Certain Multi-Stage
Fuel Vapor Canister Systems and Activated Carbon Com-
ponents Thereof, Inv. No. 337-TA-1140, 2020 WL 17003371 Nagamine Manufacturing Co., Ltd. was also
named as a respondent in Ingevity’s amended complaint,
but is not a party to this appeal.
2 This appeal is governed by 35 U.S.C. §§ 102(g)(2)
and 103(a) as they existed prior to changes made by the
America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat.
284 (2011). See Polara Eng’g Inc. v. Campbell Co., 894 F.3d
1339, 1344 n.2 (Fed. Cir. 2018); Solvay S.A. v. Honeywell
Int’l Inc., 742 F.3d 998, 1000 n.1 (Fed. Cir. 2014); 35 U.S.C.
§§ 102(g)(2), 103(a) (2002).
Case: 20-1800 Document: 87-2 Page: 4 Filed: 07/21/2021
4 INGEVITY CORPORATION v. ITC
(U.S.I.T.C. Apr. 7, 2020) (Not. of Comm’n Determination to
Review in Part, Take No Position on the Issues Under Re-
view, and Affirm in Part) (“Commission Determination”);
see also In the Matter of Certain Multi-Stage Fuel Vapor
Canister Systems and Activated Carbon Components
Thereof, Inv. No. 337-TA-1140, 2020 WL 1026313(U.S.I.T.C. Jan. 28, 2020) (Initial Determination) (“Initial
Determination”). Ingevity now appeals the Commission’s
final determination. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(6). Because we are unpersuaded by In-
gevity’s arguments, we affirm.
BACKGROUND
I.
The ’844 patent is directed to a method for reducing
emissions resulting from gasoline evaporation from auto-
mobile fuel systems. ’844 patent col. 1 ll. 27–34; col. 3 ll.
43–64. These emissions, which sometimes are referred to
as “bleed emissions,” typically occur when a vehicle has
been parked and subjected to diurnal temperature changes
over a period of several days. Id. col 2 ll. 45–46; col. 4 ll.
42–44. These temperature changes cause pressure fluctu-
ations in the vehicle’s fuel tank, which in turn cause gases
to flow in and out of the fuel tank vent. Initial Determina-
tion, 2020 WL 1026313, at *6. One way to control bleed
emissions is via “adsorption” and the storage of hydrocar-
bon vapors in a canister, followed by “desorption,” facili-
tated by passing fresh air through the canister to purge the
adsorbed hydrocarbons back into the fuel system, where
they are burned in the internal combustion process. See id.at *6–7; ’844 patent col. 1 ll. 32–38. In the relevant time
period, adsorbents were commonly characterized in terms
of their “butane working capacity,” or “BWC.” BWC de-
scribes the inherent ability of materials to adsorb and de-
sorb hydrocarbons. See id. col. 2 ll. 1–16.
The ’844 patent describes a method for controlling
bleed emissions that uses two adsorbents. The first
Case: 20-1800 Document: 87-2 Page: 5 Filed: 07/21/2021
INGEVITY CORPORATION v. ITC 5
adsorbent is closer to the fuel source (from which the va-
pors are coming) than the second adsorbent, which is closer
to the vent (from which the vapors are being emitted). The
’844 patent generally describes the adsorption abilities of
its two adsorbents in terms of “incremental adsorption ca-
pacity” (“IAC”), as opposed to BWC. Although there are
differences between how IAC and BWC are calculated, both
measure the mass of adsorbate that is adsorbed by a unit
of adsorbent at a particular temperature and vapor concen-
tration. Initial Determination, 2020 WL 1026313, at *95.
The adsorptive properties of an adsorbent can be charac-
terized using an “isotherm,” a series of measured adsorp-
tion capacities of an adsorbent for various concentrations
of an adsorbate at a specific temperature, which can be rep-
resented graphically. See id. at *53.
The ’844 patent describes the first, fuel-side adsorbent
as preferably being a “standard high working capacity car-
bon[].” ’844 patent col. 3 ll. 46–47. The second, vent-side
adsorbent preferably “exhibits a flat or flattened adsorbent
isotherm on a volumetric basis[,] in addition to certain
characteristically desirable adsorptive properties across
broad vapor concentrations.” Id. col. 3 ll. 47–51. These
properties include “relatively low incremental capacity at
high concentration vapors compared with the fuel source-
side adsorbent volume.” Id. col. 3 ll. 51–53. According to
the ’844 patent, using a vent-side adsorbent with a flatter
adsorption isotherm results in “giv[ing] up less vapor into
the purge stream and this purge will then be more efficient
in reducing vapor concentrations deeper into the bed.” Id.col. 4 ll. 31–55.
Claim 1 of the ’844 patent is representative. 3 It recites:
3 Ingevity makes no arguments for claims other than
claim 1, so the case rises or falls on that claim.
Case: 20-1800 Document: 87-2 Page: 6 Filed: 07/21/2021
6 INGEVITY CORPORATION v. ITC
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 incremen-
tal adsorption capacity at 25º C. of greater than
35 g n-butane/L between vapor concentrations of 5
vol % and 50 vol % n-butane and at least one sub-
sequent adsorbent volume having an incremental
adsorption capacity of less than 35 g n-butane/L be-
tween vapor concentrations of 5 vol % and 50 vol %
n-butane.
’844 patent col. 10 ll. 36–44. We refer to the two steps of
claim 1 as the “first adsorbent step” and the “second adsor-
bent step,” respectively.
II.
In the 1999–2000 timeframe Delphi was working on re-
ducing evaporative emissions. This work led to the devel-
opment of Delphi’s own fuel canister system (variously
referenced in the record as the “Delphi Prior Invention,”
“Delphi Epsilon Canister System,” or “DECS”). The parties
agree that the Delphi Prior Invention was reduced to prac-
tice prior to the ’844 patent’s priority date. The Delphi
Prior Invention included a conventional carbon canister
and an auxiliary canister containing carbon honeycombs.
Initial Determination, 2020 WL 1026313, at *89. The Del-
phi engineers, Thomas Meiller, Susan LaBine, and Charles
Covert, determined that the Delphi Prior Invention im-
proved bleed emissions, and sought and received their own
patent. Id. at *89, 93; see U.S. Patent No. 6,896,852 to
Meiller et al. (“Meiller”). We refer to Mr. Meiller, Dr. La-
Bine, and Mr. Covert as the “Delphi Inventors.”
III.
In its complaint, Ingevity alleged violation of section
337 based upon infringement of claims 1–5, 8, 11, 13, 18,
Case: 20-1800 Document: 87-2 Page: 7 Filed: 07/21/2021
INGEVITY CORPORATION v. ITC 7
19, 21, 24, 31, 33, 36, 38, 43, 45, 48, and 50 4 of the ’844
patent. 5 As noted, Ingevity subsequently amended the
complaint to include Intervenors as Respondents. In due
course, the Commission instituted proceedings, and the
matter was assigned to an ALJ.
In the Initial Determination, dated January 28, 2020,
the ALJ held that the asserted claims of the ’844 patent
were anticipated by the Delphi Prior Invention and/or ob-
vious in view of the Delphi Prior Invention or the combina-
tion of the Delphi Prior Invention and other references.
2020 WL 1026313, at *97. The ALJ also held, inter alia,
that the asserted claims were rendered obvious over
Meiller and/or U.S. Patent No. 5,914,294 to Park et al.
(“Park”) and other references. Id. at *103.
Before the ALJ, the parties do not appear to have dis-
puted that the Delphi Prior Invention met the first adsor-
bent step limitation of claim 1. Considering the second
adsorbent step limitation of claim 1, in view of evidence
suggesting that the Delphi Inventors were supplied with
honeycombs having a BWC of 3.7 g/dL, the ALJ found it to
be “a reasonable inference that the BWC of the honeycombs
contained in the DECS would also have been 3.7g/dL,”
which the ALJ found to correlate “to an IAC of under 35
g/L,” thereby satisfying the requirements of the second ad-
sorbent step limitation of claim 1. Initial Determination,
4 Initially, Ingevity also asserted claims 15, 28, 40,
and 52 of the ’844 patent. Ingevity later withdrew its as-
sertions of infringement with respect to those claims.
5 Section 337 prohibits the “importation into the
United States, the sale for importation, or the sale within
the United States after importation” of articles that “in-
fringe a valid and enforceable United States patent.” 19
U.S.C. § 1337(a)(1)(B).
Case: 20-1800 Document: 87-2 Page: 8 Filed: 07/21/2021
8 INGEVITY CORPORATION v. ITC
2020 WL 1026313, at *89, 96. 6 The ALJ also determined
that the Delphi Inventors appreciated that they had con-
structed a canister system that improved bleed emissions
performance relative to conventional carbon canisters and
did not “abandon, suppress, or conceal their invention.” Id.at *89–93.
Both Ingevity and Intervenors petitioned for the Com-
mission to review various aspects of the ALJ’s Initial De-
termination. In addition to other issues, Ingevity
petitioned for review of the ALJ’s determination that the
Delphi Prior Invention rendered the asserted claims inva-
lid and the ALJ’s determination that the asserted claims
were invalid over the combination of Meiller, Park, and/or
other references. The Commission determined to review
the issue of obviousness over Meiller, Park, and/or other
references, as well as six other issues. However, the Com-
mission determined not to review the ALJ’s ruling of inva-
lidity based on the Delphi Prior Invention. Commission
Determination, 2020 WL 1700337, at *2–3. Ultimately, the
Commission decided “to take no position on the issues un-
der review.” Id. The Commission found no violation of sec-
tion 337 “based on the unreviewed findings of the [Initial
Determination] 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 [P]rior [I]nvention, or the combina-
tion of the Delphi [P]rior [I]nvention with other refer-
ences.” Id. at *3. This appeal followed.
DISCUSSION
I.
We review the Commission’s final determination under
the standards of the Administrative Procedure Act, 5
6 For purposes of this appeal, Ingevity does not chal-
lenge the ALJ’s finding that a BWC of 8 g/dL roughly cor-
relates with an IAC of 35 g/L. Appellant’s Br. 55 n.5.
Case: 20-1800 Document: 87-2 Page: 9 Filed: 07/21/2021
INGEVITY CORPORATION v. ITC 9
U.S.C. § 706; Mayborn Grp., Ltd. v. Int’l Trade Comm’n,
965 F.3d 1350, 1353 (Fed. Cir. 2020). We review the Com-
mission’s legal determinations de novo and its factual find-
ings for substantial evidence. Id. “Priority of invention
and its constituent issues of conception and reduction to
practice are questions of law predicated on subsidiary fac-
tual findings.” Singh v. Brake, 317 F.3d 1334, 1350 (Fed.
Cir. 2003). Patent invalidity is an affirmative defense to
an action for infringement before the Commission. May-
born, 965 F.3d at 1355 (citations omitted). “All factual
propositions and inferences underlying an invalidity de-
fense must be proven by clear and convincing evidence.”
Id. (citing Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95
(2011)).
II.
As noted, the pre-AIA version of 35 U.S.C. § 102(g)(2)
governs this appeal. Pre-AIA § 102(g)(2) provided:
A person shall be entitled to a patent unless—
...
(g) . . . (2) before such person’s invention thereof,
the invention was made in this country by another
inventor who had not abandoned, suppressed, or
concealed it. In determining priority of invention
under this subsection, there shall be considered not
only the respective dates of conception and reduc-
tion to practice of the invention, but also the rea-
sonable diligence of one who was first to conceive
and last to reduce to practice, from a time prior to
conception by the other.
In order to establish an actual reduction to practice, the
prior inventor must have (1) constructed an embodiment or
performed a process that met all the limitations of the
claim(s) at issue and (2) determined that the invention
would work for its intended purpose. Mycogen Plant Sci. v.
Case: 20-1800 Document: 87-2 Page: 10 Filed: 07/21/2021
10 INGEVITY CORPORATION v. ITC
Monsanto Co., 243 F.3d 1316, 1332–33 (Fed. Cir 2001). 7
Consistent with this second requirement and the require-
ment of conception that inventors must form in their minds
a “definite and permanent idea of the complete and opera-
tive invention,” Hybritech Inc. v. Monoclonal Antibodies,
Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986), an alleged prior
invention will not anticipate under 35 U.S.C. § 102(g) un-
less the alleged prior inventors “appreciated” the inven-
tion. See Dow Chem. Co. v. Astro-Valcour, Inc., 267 F.3d
1334, 1341 (Fed. Cir. 2001). Specifically, “the inventor
must contemporaneously appreciate that the embodiment
worked and that it met all the limitations of the [claims].”
Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998).
However, it is not required that “[a prior inventor] estab-
lish that he recognized the invention in the same terms as
those recited in the [claims]. The invention is not the lan-
guage of the [claims] but the subject matter thereby de-
fined.” Dow Chem., 267 F.3d at 1341 (quoting Silvestri v.
Grant, 496 F.2d 593, 597 (C.C.P.A. 1974)).
For purposes of its appeal, Ingevity does not argue that
the Delphi Prior Invention did not satisfy the limitations of
claim 1 of the ’844 patent. 8 Ingevity also does not dispute
7 We refer to the claims of the ’844 patent as repre-
senting the invention at issue, as opposed to an interfer-
ence “count,” because this is not an interference proceeding
under pre-AIA 35 U.S.C. § 135. Mycogen, 243 F.3d at
1332–33.
8 To the extent that counsel for Ingevity suggested
otherwise at oral argument, see, e.g., Oral Arg. at 39:13–
40:35 (Mar. 4, 2020), available at http://oralarguments.
cafc.uscourts.gov/default.aspx?fl=20-1800_03042021.mp3,
we find this argument to have been waived because it was
not set forth in Ingevity’s opening brief. See SmithKline
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1319 (Fed.
Cir. 2006).
Case: 20-1800 Document: 87-2 Page: 11 Filed: 07/21/2021
INGEVITY CORPORATION v. ITC 11
that Delphi did not abandon, suppress or conceal its inven-
tion. And finally, as noted above, there is no dispute that
Delphi’s reduction to practice of the Delphi Prior Invention
was prior to Ingevity’s earliest priority date. Instead, In-
gevity argues that Intervenors did not meet their burden
of establishing, by clear and convincing evidence, that the
Delphi Inventors appreciated that the Delphi Prior Inven-
tion included all the limitations of claim 1 of the ’844 patent
for purposes of establishing a prior reduction to practice,
and thus an anticipating prior invention under § 102(g)(2).
III.
As seen, claim 1 of the ’844 patent is a method claim
having two steps. The first adsorbent step involves con-
tacting the fuel vapor “with an initial adsorbent volume
having incremental adsorbent capacity . . . of greater than
35 g n-butane/L.” In pertinent part, the second adsorbent
step is contacting the fuel vapor with “at least one subse-
quent adsorbent volume having an incremental adsorption
capacity of less than 35 g n-butane/L.” ’844 patent col. 10,
ll. 37–44. Ingevity’s principal contention on appeal is that
the ALJ erred in determining that the Delphi Inventors ap-
preciated that the Delphi Prior Invention performed the
second adsorbent step. According to Ingevity, without hav-
ing contemporaneously recognized and appreciated that
step, the Delphi Inventors merely accidentally duplicated
the invention defined by the claims of the ’844 patent. Spe-
cifically, Ingevity argues that nowhere in his Initial Deter-
mination did the ALJ “find (or even suggest)” that the
Delphi Inventors appreciated that the honeycombs in the
auxiliary canister of the Delphi Prior Invention had an IAC
below 35 g/L. See Appellant’s Br. 30 (“Because the Delphi
engineers never appreciated the claimed limitations—par-
ticularly the IAC of the honeycombs in the secondary can-
ister—they did not conceive of the invention claimed in the
’844 Patent.”); id. at 49–50 (“[N]ot having appreciated a
subsequent adsorbent volume with an IAC below 35 g/L,
the Delphi engineers did not conceive of or appreciate the
Case: 20-1800 Document: 87-2 Page: 12 Filed: 07/21/2021
12 INGEVITY CORPORATION v. ITC
entirely different invention disclosed and claimed by Ingev-
ity”); id. at 51 (“In sum . . . the prior inventor must have
appreciated a subsequent adsorbent volume with an IAC
below 35 g/L.”); id. at 54 (“Nowhere in its discussion of Re-
spondents’ Section 102(g)(2) invalidity defense did the ALJ
find (or even suggest) that the Delphi engineers appreci-
ated that the DECS’s honeycombs had an IAC below 35
g/L.”); id. at 55 (“The ALJ did not find that the Delphi en-
gineers appreciated that the BWC of the DECS’s honey-
combs was below 8 g/dL.”). 9
IV.
We agree with Ingevity that Intervenors were required
to prove by clear and convincing evidence that the Delphi
Inventors appreciated that the auxiliary canister of the
Delphi Prior Invention included an adsorbent that had an
IAC of less than 35 g/L, or its correlative for purposes of
this appeal: a BWC of less than 8 g/dL. See Mycogen, 243
F.3d at 1336. We conclude, however, that substantial evi-
dence supports the finding that Intervenors carried that
burden.
There are several critical pieces of evidence bearing on
this point. First is a letter dated October 28, 1999, from
James R. Miller, Ph.D., Technical Manager for New
9 At oral argument, counsel for Ingevity also argued
that the Delphi Inventors needed to appreciate the causa-
tive role played by the Delphi Prior Invention’s honey-
combs in reducing bleed emissions. See, e.g., Oral Arg. at
10:05–11:48. Ingevity waived this argument, however, be-
cause its briefing was limited to the argument that the Del-
phi Inventors did not appreciate that the honeycombs in
the Delphi Prior Invention’s auxiliary canister had an IAC
below 35 g/L. See SmithKline Beecham, 439 F.3d at 1319(“Our law is well established that arguments not raised in
the opening brief are waived.”).
Case: 20-1800 Document: 87-2 Page: 13 Filed: 07/21/2021
INGEVITY CORPORATION v. ITC 13
Product Development at Westvaco Corporation (“West-
vaco”) to Mr. Meiller, one of the three Delphi Inventors.
J.A. 11160. Dr. LaBine and Mr. Covert, the other two Del-
phi Inventors, are copied on the letter. Id. In the letter,
Dr. Miller informs Mr. Meiller that he is shipping “two de-
velopmental honeycomb samples for your work on reducing
canister bleed emissions,” and he lists as an attachment to
the letter the “basic properties” that Westvaco had meas-
ured for the two honeycomb samples. Id. Among the “basic
properties” listed is “Volumetric Butane Working Capacity,
g/[dL]” of “3.7.” J.A. 11161. A second piece of evidence is a
letter dated December 7, 1999, from Dr. Miller to Mr.
Meiller, and again copying Dr. LaBine and Mr. Covert.
J.A. 11162. The letter indicates that “[a]s requested,”
Westvaco had “shipped to [Mr. Meiller’s] attention six hon-
eycomb parts [that] have been given the Sample Number
445-S-99.” J.A. 11162–63. The letter states that the hon-
eycomb parts “were made with the same carbon, formation
and cell density as the previous parts [Mr. Meiller] tested.”
Id. The last piece of evidence is the physical auxiliary can-
ister of the Delphi Prior Invention, which was produced at
the deposition of Dr. LaBine. The canister has a tag indi-
cating that the honeycombs inside are sample number 445-
S-99. 2020 WL 1026313, at *89.
As noted, based upon this evidence, the ALJ found it
to be a “reasonable inference” that the honeycombs con-
tained in the Delphi Prior Invention also would have had a
BWC of 3.7 g/dL, Initial Determination, 2020 WL 1026313,
at *89, which the ALJ found to correlate to the IAC of below
35g/L required in the second adsorbent step limitation of
claim 1. Id. at *96. We believe that the two letters and the
physical auxiliary canister constitute substantial evidence
that the Delphi Inventors appreciated that the honeycombs
of the Delphi Prior Invention had the pertinent adsorptive
capacity, regardless of whether they were defined in terms
of BWC or IAC. See Dow Chem., 267 F.3d at 1341. That
is, the inventors had before them, and knowingly utilized
Case: 20-1800 Document: 87-2 Page: 14 Filed: 07/21/2021
14 INGEVITY CORPORATION v. ITC
in a method that they knew worked to reduce fuel vapor
emissions, an adsorbent that they had been informed met
in substance the second adsorbent step of claim 1. See My-
cogen, 243 F.3d at 1337 (“Although the amount of evidence
regarding appreciation of each specific claim limitation is
not extensive, we find that it is legally satisfactory, partic-
ularly in light of the extensive evidence establishing that
Monsanto performed a process that met all of the limita-
tions of the claims, and that the resulting product was suc-
cessfully tested and appreciated to work for its intended
purpose.”); see also Invitrogen Corp. v. Clontech Labs., Inc.,
429 F.3d 1052, 1064 (Fed. Cir. 2005) (“The priority deter-
mination requires evidence that the inventor actually first
made the invention, and that he understood his creation to
have the features that[] comprise the inventive subject
matter at bar.”).
Ingevity asserts that the ALJ did not expressly find
that the Delphi Inventors appreciated that the honeycombs
of the Delphi Prior Invention’s auxiliary canister had the
pertinent adsorptive capacity. But we think that the ALJ
did so find. The ALJ found: “The record shows that the
individuals associated with the DECS sufficiently appreci-
ated their invention under 102(g)(2).” Initial Determina-
tion, 2020 WL 1026313, at *90; see also id. at 93. In view
of the substantial evidence illustrating the Delphi Inven-
tors’ appreciation that the honeycombs of the Delphi Prior
Invention’s auxiliary canister had the pertinent adsorptive
capacity discussed above, we read the ALJ’s statement as
making the finding that Ingevity says is missing.
V.
In its second argument on appeal, Ingevity requests
that we “make clear” that the determinations of the ALJ
that the Commission chose to review, but with respect to
which the Commission ultimately took no position, are va-
cated by operation of law. Appellant’s Br. 56–61. Because
it cannot now seek further review of the ALJ’s
Case: 20-1800 Document: 87-2 Page: 15 Filed: 07/21/2021
INGEVITY CORPORATION v. ITC 15
determinations due to “happenstance,” Ingevity argues, we
should follow the “equitable tradition” that unreviewable
decisions should be vacated. Id. at 59 (quoting U.S. Ban-
corp Mortgage Co. v. Bonner Mall Partnership, 513 U.S. 18,
25 (1994) and United States v. Munsingwear, Inc., 340 U.S.
36, 39–40 (1950)). Specifically, Ingevity states that it “is
concerned that its opponents may attempt to use the ALJ
ruling [of obviousness over Meiller, Park, and/or other ref-
erences] against it in the district court.” Appellant’s Br.
58–59.
We do not agree that the ALJ’s determinations that the
Commission chose to review but on which it took no posi-
tion should be vacated by operation of law. That a judg-
ment may be vacated where the case becomes moot by
happenstance while on appeal is a matter “not of constitu-
tional necessity but of remedial discretion.” LSI Corp. v.
U.S. Int’l Trade Comm’n, 604 F. App’x 924, 930 (Fed. Cir.
2015). We decline to exercise that discretion here. Even if
the ALJ’s Initial Determination were treated as a final
Commission determination, it would “have no preclusive
effect in other forums.” Tex. Instruments Inc. v. Cypress
Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996);
see Appellant’s Br. 58. And, to the extent a litigant invokes
the ALJ’s decision in another tribunal for the persuasive-
ness of its reasoning, “the success of that invocation de-
pends on the decision’s content, not its status.” LSI Corp.,
604 F. App’x at 930. That tribunal may “decide what if any
effect the decision should have.” Id.CONCLUSION
We have considered Ingevity’s other arguments on ap-
peal and find them to lack merit. For the foregoing rea-
sons, we affirm the Commission’s final determination.
AFFIRMED