Evapco Dry Cooling v. SPG Dry Cooling: Federal Circuit Appeal Voluntarily Dismissed
Evapco Dry Cooling, Inc. brought two air cooled condenser patents — US10551126 and US10527354 — to the Federal Circuit against SPG Dry Cooling USA, LLC in an invalidity/cancellation appeal. After 482 days, the parties jointly agreed to dismiss all appeals under Fed. R. App. P. 42(b), with each side bearing its own costs.
A mutual exit: Federal Circuit appeal ends without merits adjudication
Evapco Dry Cooling, Inc. filed this Federal Circuit appeal on 2 November 2022, challenging a patentability/invalidity ruling concerning two patents — US10551126 and US10527354 — both directed to modular air cooled condenser apparatus and method technology. The appellee, SPG Dry Cooling USA, LLC, was represented by Finnegan Henderson, while Evapco retained Latham & Watkins. The underlying dispute centred on an invalidity or cancellation action, suggesting the patents were challenged through an administrative or district court proceeding before reaching the Federal Circuit.
The appeal closed on 27 February 2024 when the Federal Circuit entered an order dismissing the case under Fed. R. App. P. 42(b) — the voluntary dismissal rule at the appellate level — by agreement of the parties. Notably, each side was ordered to bear its own costs, a term that typically signals a negotiated resolution rather than a unilateral withdrawal. Because the public record is silent on any stipulated financial terms or licensing arrangement, the precise commercial outcome cannot be confirmed from available filings.
The 482-day duration suggests the parties invested meaningful resources in briefing before reaching their agreement, which is consistent with complex inter partes or post-grant proceedings where settlement often follows significant procedural development. The absence of a merits ruling preserves legal uncertainty around the validity of both patents: neither their invalidity nor their enforceability was adjudicated by the Federal Circuit. What drove the parties to settle at this stage — whether claim amendments, licensing discussions, or commercial shifts — remains undisclosed in the public record.
Filing to Voluntary dismissal in 482 days
482 days — above the median Federal Circuit appeal duration of ~350 days
Appeal voluntarily dismissed: what the Rule 42(b) order means for both parties
Fed. R. App. P. 42(b): a consensual exit with no merits ruling
Rule 42(b) allows Federal Circuit appeals to be dismissed by agreement of the parties. Unlike a court-ordered dismissal on the merits, a Rule 42(b) dismissal leaves the underlying validity question unanswered. The Federal Circuit made no finding on whether the challenged claims of US10551126 or US10527354 were valid or invalid. This procedural posture means neither party obtained a final appellate judgment that could be cited as binding precedent on patentability.
No merits adjudicationWith or without prejudice? The public record is silent
The dismissal order states only that the appeals are dismissed under Rule 42(b) with each side bearing its own costs. It does not specify whether the dismissal is with or without prejudice. This distinction matters: a with-prejudice dismissal could bar re-filing of the same appeal, while a without-prejudice dismissal may preserve certain rights. Patent professionals should treat the enforceability of US10551126 and US10527354 as legally unresolved pending further public disclosure.
Prejudice status unconfirmedSPG Dry Cooling avoids an adverse Federal Circuit ruling
As appellee, SPG Dry Cooling USA, LLC faced the risk of an appellate decision affirming invalidity findings or reversing in Evapco’s favour. The voluntary dismissal means no such ruling was entered. SPG avoids an adverse merits judgment at the Federal Circuit level, though it also foregoes any precedential ruling that might have definitively invalidated the asserted patents. The symmetric cost-bearing term suggests neither party extracted a clear concession from the other.
No adverse ruling enteredValidity of air cooled condenser patents remains judicially unresolved
For competitors and licensees operating in the modular air cooled condenser market, the absence of a Federal Circuit merits ruling means the validity of US10551126 and US10527354 has not been conclusively settled by appellate authority. Parties designing or deploying similar cooling apparatus should treat these patents as potentially enforceable and consider freedom-to-operate analysis accordingly. Settlement at this stage is consistent with a commercial resolution that may include licensing terms not visible in the public record.
FTO analysis recommendedFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Evapco Dry Cooling, Inc. | Company | Industrial dry cooling equipment manufacturer — holder of US10551126 and US10527354Search in Eureka ↗ |
| Defendant | Spg Dry Cooling USA, LLC | Company | SPG Dry Cooling USA, LLC — dry cooling systems provider, appellee in patentability challengeSearch in Eureka ↗ |
| Plaintiff counsel | Adam Michael Greenfield | Attorney | Counsel for Evapco Dry Cooling, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Brian Michael Weissenberg | Attorney | Counsel for Evapco Dry Cooling, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Gabriel K. Bell | Attorney | Counsel for Evapco Dry Cooling, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Jonathan M. Strang | Attorney | Counsel for Evapco Dry Cooling, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Matthew J. Moore | Attorney | Counsel for Evapco Dry Cooling, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Richard A. Lowry | Attorney | Counsel for Evapco Dry Cooling, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Ruth Davila | Attorney | Counsel for Evapco Dry Cooling, Inc.Search in Eureka ↗ |
| Plaintiff law firm | Latham & Watkins, LLP | Law Firm | Representing Evapco Dry Cooling, Inc.Search in Eureka ↗ |
| Defendant counsel | Houtan K. Esfahani | Attorney | Counsel for Spg Dry Cooling USA, LLCSearch in Eureka ↗ |
| Defendant counsel | J. Michael Jakes | Attorney | Counsel for Spg Dry Cooling USA, LLCSearch in Eureka ↗ |
| Defendant counsel | Joseph M. Myles | Attorney | Counsel for Spg Dry Cooling USA, LLCSearch in Eureka ↗ |
| Defendant counsel | Joshua Goldberg | Attorney | Counsel for Spg Dry Cooling USA, LLCSearch in Eureka ↗ |
| Defendant law firm | Finnegan, Henderson, Farabow, Garrett & Dunner, LLP | Law Firm | Representing Spg Dry Cooling USA, LLCSearch in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | Court of Appeals for the Federal CircuitSearch in Eureka ↗ |
Official order — verbatim text
The dismissal order is brief and procedural: it confirms mutual consent under Fed. R. App. P. 42(b) and imposes symmetric cost-bearing, but issues no substantive finding on patentability. Because no merits ruling was entered, the order carries no precedential weight on the validity of the asserted claims. The symmetric cost allocation is notable — it is consistent with a negotiated resolution and suggests neither party conceded the underlying merits. The Federal Circuit applied no appellate standard of review, as no substantive issue was decided.
US10551126 & US10527354 — Modular Air Cooled Condenser Apparatus
US10551126 and US10527354 are both directed to modular air cooled condenser (ACC) apparatus and methods, a technology used in power generation and industrial facilities to condense steam without water — a critical capability in water-scarce environments. Both patents originate from application numbers in the US16/xxx range, suggesting they were filed in the 2018–2019 period and granted relatively quickly, which is consistent with a mature but commercially active technology sector where differentiated modular designs attract meaningful patent protection.
Air cooled condenser technology sits at the intersection of power infrastructure, water conservation, and industrial plant engineering — sectors under increasing regulatory and environmental pressure. A dual-patent assertion covering the same product category suggests Evapco has built layered claim coverage around its modular ACC design, potentially capturing both apparatus and method claims to maximise enforcement options. For competitors in the dry cooling market — including international players entering the US market — these patents represent a meaningful freedom-to-operate risk that was not eliminated by this litigation’s outcome.
Should your team run an FTO against US10551126 and US10527354?
Any manufacturer, EPC contractor, or equipment supplier working with modular air cooled condenser systems in the United States should evaluate exposure to US10551126 and US10527354. The Federal Circuit’s dismissal without a merits ruling means both patents retain their presumption of validity. If your product roadmap includes ACC modules, dry cooling skids, or related condenser apparatus, a targeted FTO analysis is warranted — particularly given that Evapco has demonstrated a willingness to assert these patents through appeal-level proceedings.
PatSnap Eureka’s FTO Search Agent can map the independent and dependent claims of US10551126 and US10527354 against your product specifications, flag overlapping prior art, and identify design-around opportunities. Eureka’s claim-charting workflow accelerates the analysis that would otherwise require weeks of manual review, delivering a structured risk assessment that your IP and engineering teams can act on before product launch or next procurement cycle.
Run a freedom-to-operate analysis on US10551126 to assess your product’s exposure
Run FTO in Eureka →Similar Federal Circuit appeals in air cooling and heat exchanger patent disputes
Explore Federal Circuit appeals involving air cooled condenser, heat exchanger, and industrial cooling patents with comparable patentability and invalidity postures.
What this case signals for the industrial dry cooling IP landscape
A Rule 42(b) dismissal at the Federal Circuit level rarely signals a complete capitulation — it typically reflects a negotiated realignment of commercial interests.
Mutual cost-bearing terms signal a negotiated, not one-sided, exit
When both sides agree to bear their own costs under Rule 42(b), it typically indicates a bilateral agreement rather than one party simply walking away. For competitors monitoring Evapco and SPG Dry Cooling, this suggests a possible licensing or commercial arrangement that resolved the dispute commercially without requiring a precedential ruling.
No Federal Circuit ruling leaves validity legally uncertain for the market
The patents US10551126 and US10527354 were never adjudicated valid or invalid at the appellate level. Any party manufacturing or selling modular air cooled condenser products should note that these patents retain their presumption of validity under 35 U.S.C. § 282. An FTO analysis remains a commercially prudent step before product launch or expansion in this technology space.
Evapco v Spg — key questions answered
The Federal Circuit dismissed the appeal by mutual agreement under Fed. R. App. P. 42(b) on 27 February 2024. No merits ruling was issued on the validity of US10551126 or US10527354. Each party was ordered to bear its own costs, and the public record does not disclose any financial settlement terms.
Two patents were asserted: US10551126 (application no. US16/196840) and US10527354 (application no. US16/515363). Both are directed to modular air cooled condenser apparatus and method technology used in industrial and power generation cooling applications.
A dismissal under Fed. R. App. P. 42(b) is procedural and consensual — it carries no merits finding. The patents in question retain their statutory presumption of validity under 35 U.S.C. § 282. No Federal Circuit precedent on the patentability of the challenged claims was established. Third parties cannot rely on this dismissal as evidence that the patents were found valid or invalid.
Evapco Dry Cooling was represented by Latham & Watkins, LLP, with attorneys including Matthew J. Moore, Gabriel K. Bell, and Jonathan M. Strang among the team. SPG Dry Cooling USA, LLC was represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, with J. Michael Jakes and Houtan K. Esfahani among the named counsel.
Yes, the dismissal without a merits ruling means US10551126 and US10527354 remain enforceable as issued. Companies manufacturing or supplying modular air cooled condenser equipment in the US should conduct a freedom-to-operate analysis against both patents before commercialisation. The absence of an invalidity ruling at the Federal Circuit preserves Evapco’s ability to assert these patents in future proceedings.
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