Fina Oil and Chemical Co. v. Ewen, 96-1179

• Citation: 123 F.3d 1466,43 USPQ2d 1935
• Decision Date: 02 September 1997
• Docket Number: No. 96-1179,96-1179
• Parties: FINA OIL AND CHEMICAL CO. and Fina Technology, Inc., Plaintiffs-Appellees, v. John A. EWEN, Defendant-Appellant, v. Abbas RAZAVI, Intervenor-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1466

123 F.3d 1466

43 U.S.P.Q.2d 1935

FINA OIL AND CHEMICAL CO. and Fina Technology, Inc., Plaintiffs-Appellees, v. John A. EWEN, Defendant-Appellant, v. Abbas RAZAVI, Intervenor-Appellee.

No. 96-1179.

United States Court of Appeals, Federal Circuit.

Sept. 2, 1997.

William D. Harris, Jr., Harris, Tucker & Hardin, Dallas, TX, argued, for plaintiffs-appellees. With him on the brief was Roy W. Hardin. Of counsel on the brief were Robert H. Mow, Jr. and David H. Judson, Hughes & Luce, L.L.P., Dallas TX.

Jim L. Flegle, Bracewell & Patterson, L.L.P, Dallas, TX, argued, for defendant-appellant. With him on the brief was Gregory J. Sachnik, Dallas, TX.

David L. Joers, Crutsinger & Booth, Dallas, TX, argued, for intervenor-appellee. With him on the brief were John F. Booth and Todd E. Albanesi, Dallas, TX. Of counsel was Kevin L. Smith.

Before ARCHER, Chief Judge, MICHEL, and CLEVENGER, Circuit Judges.

CLEVENGER, Circuit Judge.

The United States District Court for the Northern District of Texas determined on summary judgment that Dr. Abbas Razavi is the sole inventor of the subject matter of U.S. Patent No. 4,892,851 (the '851 patent), owned by Fina Oil & Chemical Co. and Fina Technology, Inc. (collectively Fina). The court also directed Fina to seek correction of the '851 patent by removing Dr. John A. Ewen as a named inventor. We hold that the district court applied the wrong legal standard in determining Dr. Ewen's contribution to the subject matter claimed in the '851 patent, and that under the proper standard, there exist genuine issues of material fact regarding inventorship. We therefore vacate and remand.

I

The '851 patent lists Drs. Ewen and Razavi as co-inventors and discloses a metallocene catalyst used to produce syndiotactic polypropylene (SPP) and methods for making the catalyst. A metallocene compound is formed by chemically combining an organic ligand with a metal. Specifically, the patent describes and claims two methods for making a syndiospecific metallocene catalyst. ¹ The first method, known as Method A, synthesizes a catalyst using the metal tetrachloride-THF complex and a ligand which is prepared using fluorene, methyl lithium and 6,6-dimethylfulvene. In the second method, known as Method B, the ligand is dissolved in a non-coordinating solvent, such as pentane, toluene or methylene chloride. ²

Dr. Ewen began working for Fina in 1984 and started efforts to produce syndiospecific metallocene catalysts as early as 1985 or 1986. According to his summary judgment submissions and reasonable inferences therefrom, in 1986, Dr. Ewen, with the assistance of Fina technician Michael Elder, produced a complex that was similar to, but not the same as, the catalyst claimed in the '851 patent. In June 1987, Fina technician Larry Jones, acting under Dr. Ewen's direction, purportedly performed the process described as Method A in the '851 patent to synthesize the ligand used to make the claimed catalysts (hereinafter "the Jones experiment"). However, Jones never determined for certain whether he had produced the desired ligand because under Dr. Ewen's instruction, he treated the substance he had produced with hydrochloric acid, and it was destroyed as a result.

In early September 1987, Fina hired Dr. Razavi, and Dr. Ewen assigned the catalyst project to him. On October 21, 1987, Dr. Razavi successfully synthesized the ligand. Within a month, Dr. Razavi also synthesized a syndiospecific hafnium catalyst and a zirconium metallocene catalyst. In March 1988, Dr. Razavi successfully synthesized a metallocene catalyst using a methylene chloride noncoordinating solvent (i.e., Method B of the '851 patent). It is undisputed that Dr. Razavi's experiments actually resulted in the catalysts disclosed and claimed in the '851 patent. The parties, however, hotly dispute Dr. Ewen's role in the experiments and Dr. Razavi's inventive contribution to the experiments' success.

Soon after Dr. Razavi's successful synthesis of the metallocene catalysts, Dr. Ewen and Dr. Razavi became mutually contentious, each claiming that he was the sole inventor of the subject matter claimed in the '851 patent and that the other stole the credit for the invention. As their relationship began to deteriorate, Dr. Ewen submitted an invention disclosure to Fina's outside patent counsel with a detailed description of the procedure for making the ligand and catalyst as performed by Dr. Razavi, and successful polymerization tests that showed the catalysts were useful for producing SPP. That disclosure led to the filing, on July 15, 1988, of the patent application that matured into the '851 patent. Both Dr. Ewen and Dr. Razavi signed the joint assignment for the application and the declaration under penalty of perjury. In 1989, Dr. Razavi resigned from Fina.

In 1990, Dr. Ewen and Fina became embroiled in a lawsuit in Texas state court against Exxon Corporation, Dr. Ewen's previous employer. Exxon brought suit claiming that Dr. Ewen disclosed Exxon's confidential information to Fina, and used that information to apply for patents claiming subject matter that belonged to Exxon. Dr. Ewen filed a cross-claim against Fina, seeking, inter alia, to have a constructive trust placed on the proceeds from technology covered by the '851 patent. During discovery in the state court suit, Fina learned of Dr. Ewen's contention that several patents and patent applications relating to the SPP technology had various inventorship defects and other statutory defects. In December 1993, Fina brought this action in federal court to correct the inventorship, under 35 U.S.C. § 256, of several patents issued to inventors other than Razavi and Ewen relating to SPP technology. With respect to several other related patents, including the '851 patent, Fina asked for a declaratory judgment that inventorship was properly recorded or, alternatively, for correction of inventorship under section 256. Dr. Ewen filed a motion to dismiss for lack of subject matter jurisdiction, which the court denied.

The state court case was settled among Exxon, Fina, and Dr. Ewen, and dismissed on May 5, 1995. In the meantime, the federal district court had ruled on partial summary judgment that Dr. Razavi was at least a co-inventor of the technology claimed in the '851 patent. Dr. Razavi subsequently intervened in this action and moved for partial summary judgment that he was the sole inventor of the subject matter claimed in the '851 patent. After the settlement of the state court case, the federal district court granted Dr. Razavi's motion. The court then denied Dr. Ewen's motion for reconsideration, and, after the parties entered into stipulations regarding the remaining claims, entered a final judgment on January 22, 1996. Dr. Ewen appeals.

II

Before we may examine the merits of this case, we must consider a challenge by Dr. Ewen to the district court's jurisdiction. Dr. Ewen argues that the district court did not have jurisdiction over Fina's declaratory judgment claim because Fina had no reasonable apprehension that Dr. Ewen would bring a suit for infringement of the '851 patent and therefore there was no jurisdiction-conferring "actual controversy." ³

Because the federal courts do not sit to render advisory opinions, the Declaratory Judgment Act, 28 U.S.C. § 2201 (1994), "requires an actual controversy between the parties before a federal court may exercise jurisdiction over an action for a declaratory judgment." EMC Corp. v. Norand Corp., 89 F.3d 807, 810, 39 USPQ2d 1451, 1453 (Fed.Cir.1996), cert. denied, --- U.S. ----, 117 S.Ct. 789, 136 L.Ed.2d 730 (1997); see Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 239-41, 57 S.Ct. 461, 463-64, 81 L.Ed. 617 (1937). A declaratory judgment action permits a threatened party to resolve its potential liability, but only when the situation has progressed to an actual controversy, as required by Article III of the Constitution. Phillips Plastics Corp. v. Kato Hatsujou Kabushiki Kaisha, 57 F.3d 1051, 1053, 35 USPQ2d 1222, 1223 (Fed.Cir.1995). Thus, a declaratory judgment action affords a measure of relief to a party who is under the shadow of threatened litigation arising under federal law. See Serco Servs. Co. v. Kelley Co., 51 F.3d 1037, 1038, 34 USPQ2d 1217, 1218 (Fed.Cir.1995). "The declaratory plaintiff need only satisfy the jurisdictional requirement 'that the conflict be real and immediate, i.e., that there be a true, actual "controversy" required by the Act.' " Id. (quoting Arrowhead Indus. Water, Inc. v. Ecolochem, Inc., 846 F.2d 731, 735, 6 USPQ2d 1685, 1688 (Fed.Cir.1988)).

We determine whether there is jurisdiction in a declaratory judgment action by applying the well-pleaded complaint rule. See Skelly Oil Co. v. Phillips Petroleum Co., 339 U.S. 667, 672, 70 S.Ct. 876, 879, 94 L.Ed. 1194 (1950). We apply that rule not to the declaratory judgment complaint but to the hypothetical action the declaratory defendant would have brought. Cedars-Sinai Med. Center v. Watkins, 11 F.3d 1573, 1578, 29 USPQ2d 1188, 1192 (Fed.Cir.1993).

In the classic patent declaratory judgment suit, i.e., where the declaratory plaintiff is laboring under the threat of litigation for alleged infringement of a patent, the "actual controversy" requirement means that there is jurisdiction over the action if: (1) the declaratory plaintiff has acted, or has made preparations to act, in a way that could constitute infringement, and (2) the patentee has created in the declaratory plaintiff a reasonable apprehension that the patentee will bring suit if the activity in question continues. See EMC Corp., 89 F.3d at 811, 39 USPQ2d at 1453-54; Arrowhead, 846 F.2d at 736, 6 USPQ2d at 1688-89. Satisfaction of this traditional two-part test is not, however, a prerequisite to jurisdiction in every possible patent declaratory judgment action. Indeed, the two elements merely assure that the declaratory plaintiff has enough interest in the subject matter of the suit and...