Automobiles are constantly under review in patent investigations at the U.S. International Trade Commission. That’s surely due to the fact that automakers and parts manufacturers operate complex cross-border supply chains where everything is imported at some point.
But automobiles are also at the ITC a lot because they are a high-value product—the threat of an import ban gives a patent owner more leverage if the import is more valuable.
It’s no surprise then that autos, auto parts, and parts of auto parts are the subject of two recent developments in the ITC’s patent docket.
Activated Carbons Reduce Gas Release
On November 8, Ingevity filed a Section 337 complaint—Multi-Stage Fuel Vapor Canister Systems And Activated Carbon Components Thereof—alleging infringement of one patent related to the use of multiple layers of carbon filters to reduce the release of fuel vapors from vehicle gas tanks.
The respondent, Mahle, is a multinational auto parts maker based in Germany. The complainant is a U.S.-based chemical manufacturer that, among other things, sells carbon filters used by auto parts manufacturers to make emission-control components.
One interest facet of this complaint is that the patent is set to expire in early 2022, and the patent holder is apparently worried that competitors will jump the gun. Ingevity has already filed lawsuits against both Mahle and BASF based on the companies' research and testing activities as they design competing products in expectation of the patent's expiration.
It's also worth noting that if Mahle's fuel canisters are infringing, then some automobile importers are likely violating Section 337 as well. The complaint provides a partial list of vehicles that incorporate the accused products, including the "2017 Chrysler Pacifica, 2018 Honda Accord, 2018 Nissan Altima, 2018 Nissan Versa, 2018 Nissan Sentra, 2018 Nissan Rogue, and 2018 Nissan City Express."
Some of those Nissan models are assembled in Tennessee, but others come from Mexico, and the Chrysler Pacifica is imported from Canada. However, Ingevity is not seeking to exclude downstream automobiles containing the accused canisters and has not named any automakers as respondents.
Automakers Saved by Monetizer's Underachieving Licensee
The ITC issued a notice on November 13 that an administrative law judge found no violation of Section 337 in Thermoplastic-Encapsulated Electric Motors (Inv. 1073). That investigation was based on a September 2017 complaint filed by Intellectual Ventures, a prominent patent assertion entity. Unlike Ingevity, IV included a number of automakers—Honda, Toyota, and BMW—as respondents along with parts suppliers.
It will be some time before we can see a public version of the Final Initial Determination, but we know from the notice that the ALJ found respondents had infringed one of the two asserted patents—but the complainant failed to satisfy the domestic industry test.
During the hearing the ALJ revealed his belief that IV's licensee had not yet successfully designed a product that was fully encapsulated in thermoplastic as required to practice the claims of the patent.