Ingevity Corporation v. Basf Corporation

CourtCourt of Appeals for the Federal Circuit
DecidedFebruary 11, 2026
Docket24-1577
StatusPublished

This text of Ingevity Corporation v. Basf Corporation (Ingevity Corporation v. Basf Corporation) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Ingevity Corporation v. Basf Corporation, (Fed. Cir. 2026).

Opinion

Case: 24-1577 Document: 51 Page: 1 Filed: 02/11/2026

United States Court of Appeals for the Federal Circuit ______________________

INGEVITY CORPORATION, INGEVITY SOUTH CAROLINA, LLC, Plaintiffs-Appellants

v.

BASF CORPORATION, Defendant-Appellee ______________________

2024-1577 ______________________

Appeal from the United States District Court for the District of Delaware in No. 1:18-cv-01391-RGA, Judge Richard G. Andrews. ______________________

Decided: February 11, 2026 ______________________

WES EARNHARDT, Cravath Swaine & Moore LLP, New York, NY, argued for plaintiffs-appellants. Also repre- sented by SHARONMOYEE GOSWAMI.

PAUL ALESSIO MEZZINA, King & Spalding LLP, Wash- ington, DC, argued for defendant-appellee. Also repre- sented by ALEXANDER KAZAM, CHRISTOPHER YOOK; BRIAN EUTERMOSER, Denver, CO; THOMAS FRIEL, Palo Alto, CA. ______________________ Case: 24-1577 Document: 51 Page: 2 Filed: 02/11/2026

Before LOURIE, PROST, and CUNNINGHAM, Circuit Judges. LOURIE, Circuit Judge. Ingevity Corporation and Ingevity South Carolina, LLC (together, “Ingevity”) sued BASF Corporation (“BASF”) in the United States District Court for the Dis- trict of Delaware for infringement of U.S. Patent RE38,844 (“the ’844 patent”). The district court granted summary judgment of invalidity of the asserted claims (1, 4, 11, 18, 19, 24, 43 and 48) of the ’844 patent. See Ingevity Corp. v. BASF Corp., 501 F. Supp. 3d 274 (D. Del. 2020). It later denied both parties’ motions for partial summary judgment on BASF’s antitrust and tortious interference counter- claims and then held a jury trial on those claims. J.A. 39– 43. At trial, the jury found, in relevant part, that Ingevity had engaged in unlawful tying and awarded damages ac- cordingly. J.A. 9087–90, 51–52. The district court subse- quently denied Ingevity’s renewed motion for judgment as a matter of law and motion for a new trial. See Ingevity Corp. v. BASF Corp., No. 18-cv-1391-RGA, 2024 WL 579667 (D. Del. Feb. 13, 2024) (“JMOL Decision”). Ingevity timely appealed. For the following reasons, we affirm In- gevity’s antitrust liability and the corresponding damages award and therefore need not reach the remaining issues raised on appeal. BACKGROUND Ingevity and BASF both manufacture carbon honey- combs, an activated carbon structure that can be used to filter airborne pollutants in a variety of applications. Both companies market carbon honeycombs for use in automo- bile air-intake systems and fuel vapor canisters. Air-in- take products control emissions by filtering incoming air before it enters the engine, while fuel vapor canisters con- trol emissions by capturing gasoline vapors released from a vehicle’s gas tank before they escape into the atmosphere. Case: 24-1577 Document: 51 Page: 3 Filed: 02/11/2026

INGEVITY CORPORATION v. BASF CORPORATION 3

Ingevity owns the ’844 patent, which describes and claims systems and methods for reducing emissions from a car’s gas tank. ’844 patent col. 1 ll. 14–23. Specifically, the ’844 patent is directed to a dual-stage fuel-vapor canister system that combines a higher-capacity gas-tank-side ad- sorbent with a lower-capacity vent-side adsorbent. See, e.g., id. at col. 10 ll. 36–44 (claim 1). Notably, carbon hon- eycombs used in air-intake systems do not come within the scope of the ’844 patent, but honeycombs used in fuel vapor canisters do. See JMOL Decision, 2024 WL 579667, at *2; Ingevity Op. Br. 20. In 2016, BASF began marketing its EvapTrap XC, a carbon honeycomb with dimensions and cell density com- parable to Ingevity’s honeycomb products but produced us- ing different materials and manufacturing processes. In 2018, Ingevity sued BASF, asserting infringement of the ’844 patent by testing and marketing EvapTrap XC. BASF responded by arguing that the patent was not infringed, was invalid on multiple grounds, and was unenforceable due to patent misuse. BASF also brought counterclaims for unlawful tying and exclusive dealing under the federal antitrust laws and tortious interference under Delaware law. As relevant here, regarding its unlawful tying claim, BASF alleged that Ingevity conditioned licenses to the ’844 patent (the tying product) on customers’ agreements to fulfill their honey- comb product needs by exclusively purchasing Ingevity’s unpatented honeycomb products (the tied products) in vio- lation of the Sherman Act, 15 U.S.C. §§ 1 or 2 (1988). The infringing or non-infringing use of Ingevity’s unpatented honeycomb products is the key issue in this appeal, as will be seen hereinbelow. I At summary judgment on patent validity, the district court ruled that Ingevity’s ’844 patent is invalid based on prior invention “by another” under pre-AIA 35 U.S.C. Case: 24-1577 Document: 51 Page: 4 Filed: 02/11/2026

§ 102(g).1 J.A. 37. Both parties then filed motions for par- tial summary judgment on BASF’s counterclaims. J.A. 39. Ingevity argued that its conduct alleged to be tying and ex- clusive dealing did not violate the antitrust laws because its honeycomb products were “nonstaple goods,” i.e., goods lacking substantial non-infringing uses, and therefore pro- tected from antitrust liability under the patent laws. The district court explained that whether Ingevity’s honey- combs had substantial non-infringing uses beyond the ’844 patent was “a jury issue.” J.A. 41. It observed that while “Ingevity’s records . . . suggest that Ingevity has sold the same articles to others for [non-infringing] uses[,]” Ingevity “says the records are inconclusive, contain mistakes, etc.,” which, to the court, created a “disputed issue of material fact.” Id. Ingevity also asserted immunity under the Noerr-Pen- nington doctrine, which shields certain conduct from anti- trust liability when it involves petitioning the government. J.A. 4291. It argued that its tying conduct merely consisted of “threat[s] to sue [customers] for patent infringement” and nothing more. Id. The district court declined to resolve the immunity issue on the existing record, explaining that it could not decide the matter “more than tentatively” and that a definitive ruling would have to await trial. J.A. 42– 43. The court nevertheless previewed its view, stating that “Noerr-Pennington will [not] help Ingevity if BASF proves the Ingevity product . . . is a staple” because “the Noerr- Pennington doctrine [does not] eradicate[] the boundaries that the Supreme Court has described in similar contexts.”

1 In a separate proceeding, the International Trade Commission ruled that all claims of the ’844 patent as- serted here were invalid on the same ground, and we af- firmed that decision. Ingevity Corp. v. Int’l Trade Comm’n, No. 20-1800, 2021 WL 3440786, at *1 (Fed. Cir. July 21, 2021). Case: 24-1577 Document: 51 Page: 5 Filed: 02/11/2026

INGEVITY CORPORATION v. BASF CORPORATION 5

J.A. 43 (citing Zenith Radio Corp. v. Hazeltine Rsch., Inc., 395 U.S. 100, 136 (1969) (“[T]he patentee . . . may not con- dition the right to use his patent on the licensee’s agree- ment to purchase, use, or sell, or not to purchase, use, or sell, another article of commerce not within the scope of his patent monopoly.”)). The district court therefore denied both parties’ summary judgment motions. J.A. 39. II BASF’s antitrust and tortious interference counter- claims were then tried to a jury. See J.A. 51–52. The jury heard evidence of unlawful tying, including testimony from Ed Woodcock, president of Ingevity’s automotive-products division, who admitted at trial that “in order to obtain a license [to the ’844 patent,] Ingevity requires that custom- ers buy the honeycombs only from Ingevity.” J.A. 9476.

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