Union Oil Co v. Atlantic Richfield Co.

Citation54 USPQ2d 1227,208 F.3d 989
Parties(Fed. Cir. 2000) UNION OIL COMPANY OF CALIFORNIA, Plaintiff-Appellee, v. ATLANTIC RICHFIELD COMPANY, CHEVRON U.S.A. INC., EXXON CORPORATION, MOBIL OIL CORPORATION, SHELL OIL PRODUCTS COMPANY and TEXACO REFINING AND MARKETING, INC., Defendants-Appellants. 99-1066 DECIDED:
Decision Date29 March 2000
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Michael V Ciresi, Robins, Kaplan & Ciresi, L.L.P., of Minneapolis, Minnesota, argued for plaintiff-appellee. With him on the brief were Martin R. Lueck, David W. Beehler, Tracy A. Sykes, and Diane L. Simerson.

E. Edward Bruce, Covington & Burling, of Washington, DC, argued for defendants-appellants. With him on the brief was Christopher N. Sipes. Of counsel on the brief were Donald R. Dunner, and J. Michael Jakes, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC. Also of counsel on the brief were Harry C. Marcus, and Bartholomew Verdirame, Morgan & Finnegan, L.L.P., of New York, New York.

Opinion for the court filed by Circuit Judge Rader. Circuit Judge Lourie dissents in part.

Before MAYER, Chief Judge, LOURIE and RADER, Circuit Judges.

RADER, Circuit Judge.

The United States District Court for the Central District of California denied the appellants' motion for Judgment as a Matter of Law (JMOL) which sought to overturn the jury verdicts of patent validity and willful infringement. See Union Oil Co. of Cal. v. Atlantic Richfield Co., No. CV-95-2379-KMW, slip op. at 1 (C.D. Cal. Mar. 10, 1998) (Unocal I). In their JMOL motion, the Atlantic Richfield Company and other appellant refiners asserted that Union Oil Company of California's (Unocal) United States Patent No. 5,288,393 ('393 patent) is invalid under 35 U.S.C. §§ 102 and 112 (1994). The district court also held that Unocal did not commit inequitable conduct before the U.S. Patent and Trademark Office (PTO). See Union Oil Co. of Cal. v. Atlantic Richfield Co., 34 F. Supp. 2d 1208, 1222 (C.D. Cal. 1998) (Unocal II). Because the appellant refiners did not show a reversible flaw in the jury's verdict, this court affirms the district court's denial of JMOL on §§ 102 and 112 issues. Similarly, this court affirms the trial court's discretionary judgment of no inequitable conduct.1

I.

Unocal owns the '393 patent, which claims automotive gasoline compositions that reduce automobile tailpipe emissions. Unocal's original patent application contained 82 claims. As is often the case during the course of prosecution, the inventor added and canceled many claims. Ultimately, 155 claims issued, but Unocal later disclaimed all but the forty-one at issue in this case: claims 20, 53, 54, 56, 57, 71-75, 78, 79, 81, 112-16, 117 (multiply dependent on claims 53, 73, 78, 112, 116, and 125), claim 120 (multiply dependent on claims 55, 78, 79, and 124), claim 121 (dependent on claim 120 and therefore multiply dependent on claims 55, 78, 79 or 124), 125-27, 133-35, 137, 153, and 155. Each claim appears in dependent or multiple dependent form, and has from four to six limitations describing ranges for several of the fuel characteristics. Each claim effectively begins either with the preface "[a]n unleaded gasoline fuel suitable for combustion in an automotive engine" or "[a]n unleaded gasoline fuel suitable for combustion in a spark ignition automotive engine." As an example, Claim 117, as dependent upon claim 116, states:2

117. [An unleaded gasoline fuel suitable for combustion in an automotive engine, said fuel having a Reid Vapor pressure no greater than 7.0 psi, and a 50% D-86 distillation point no greater than 200 F., and a 90% D-86 distillation point no greater than 300 F., and a paraffin content greater than 85 volume percent, and an olefin content less than 4 volume percent] wherein the maximum 10% distillation point is 158 F (70 C.).

'393 patent, col. 24, ll. 24-27.

As illustrated above, the claims do not describe each gasoline product in terms of molecular structures or lists of ingredients. Instead, the claims specify the chemical properties of the gasolines, reflecting the way oil refiners formulate gasoline. When oil refiners formulate new gasoline products, they do so by mixing petroleum stocks. Different stocks have different properties that are known to oil refiners. The record shows that oil refiners of ordinary skill in the art change the chemical properties of gasoline by varying the proportions of different petroleum stocks. Thus the claims which define the invention in terms of various characteristics also inform those of skill in the art of the composition of the claimed gasoline fuels.

Unocal researched extensively the production of automotive gasoline with reduced combustion emissions. Unocal's scientists, Drs. Jessup and Croudace, ultimately filed a patent application based on their findings. Their research taught ways to produce cleaner gasoline by varying the following chemical properties in automotive gasolines: Reid Vapor Pressure (RVP), T10, T50, T90, Olefins, Paraffins, Aromatics,3 and Octane.

RVP measures the partial pressure of a gasoline sample when heated to 100 F in a sealed container. See id. at col. 18, ll. 43-47. T10, T50 and T90 are abbreviations for percentage distillation points, as measured according to an industry standard procedure called "D-86." Each corresponds to the temperatures at which a given percentage of the gasoline sample enters a gaseous phase under specific experimental conditions. Thus, T10 is the 10% D-86 distillation point; T50 the 50% D-86 distillation point; and T90 the 90% D-86 distillation point. The olefins value describes the percentage of the gasoline comprised of olefins measured by volume. Olefins, otherwise known as alkenes, are open-chain hydrocarbons that contain at least one double bond. The paraffins value describes the percentage of the gasoline comprised of paraffins measured by volume. Paraffins, otherwise known as alkanes, are open-chain hydrocarbons that contain only single bonds. The aromatics value describes the percentage of the gasoline comprised of aromatics measured by volume. Aromatics, are compounds whose properties resemble those of 6-carbon ring molecules that have an average of three intra-ring carbon-carbon double bonds (i.e., benzene). Octane, as used in the '393 patent, describes the knocking or detonation characteristics of a gasoline sample as compared with a reference fuel. The octane value is derived by testing gasoline in a special engine under specified experimental conditions, and comparing those results to identically tested reference blends of Isooctane and n-heptane.

Drs. Jessup and Croudace sought to reduce the levels of carbon monoxide (CO), nitrous oxide (NOx), and hydrocarbons (HC) emitted from automobile tailpipes. After considerable experimentation, Drs. Jessup and Croudace discovered relationships between the various petroleum characteristics described above and tailpipe emissions. Drs. Jessup and Croudace then patented their innovative fuel compositions, describing the new compositions by their characteristics.

The specification of the '393 patent describes relationships among automotive gasoline characteristics and fuel emissions, including the following:

1. Decreasing RVP is of primary importance, and decreasing T10 and olefin content are of secondary importance for reducing NOx emissions. See '393 patent, col. 2, ll. 21-29.

2. Decreasing T50 is of primary importance for reducing CO and HC emissions. See id. at ll. 7-11.

3. Increasing paraffin content and decreasing T50 are most effective for reducing CO emissions. See id. at col. 6, ll. 12-28.

4. Decreasing both olefin content and RVP are most effective for reducing NOx emissions. See id. at ll. 28-31.

5. HC emissions are most practically reduced by decreasing olefins and/or T50. See id. at ll. 46-50.

6. Any combination of the eight characteristics can be increased or decreased as described, and that the greater any individual characteristic is changed in the directions indicated, the better the result. See id. at col. 15, ll. 20-28.

The specification also provides specific numerical ranges for each characteristic. For example, the specification teaches:

1. CO and HC emissions can be minimized by reducing T50 below 215 F, preferably below 195 F. See id. at col. 2, ll. 7-20.

2. NOx emissions can be minimized by (a) decreasing RVP to 8.0 psi or less (preferably below 7.0 psi); (b) decreasing olefins below 15% (preferably to essentially zero); or (c) decreasing T10 below 140 F. See id. at ll. 21-34.

3. The best NOx reductions are obtained when the olefins are below 15%, RVP is 7.5 psi or less, and T10 is below 140 F. See id. at ll. 44-50.

4. All three pollutants are reduced when T50 is 215 F or less and RVP is 8.0 psi or less, with greater reductions when olefins are below 10% or T10 is below 140 F, and still greater reductions when both olefins and T10 are reduced. See id. at ll. 54-64.

5. Further pollution reductions are possible when T50 is below 195 F, olefins are below 5% (preferably at essentially zero), T10 is below 120 F, and/or when RVP is below 7.0 psi. See id. at l. 64 - col. 3, l. 3.

Elsewhere the specification describes the optimal ranges for five of the eight fuel characteristics in similar terms.

The specification also states that the gasolines are preferably unleaded, have an octane rating of at least 90, and fall most preferably within one or more of five volatility classes in American Society for Testing and Materials (ASTM) publication D4814-89 (included in Table 1 of the patent). See id. at col. 4, l. 66 - col. 5., l. 13. Beyond the optimal ranges for individual characteristics, the '393 patent also discloses preferred fuel mixtures. In sum, the '393 disclosure describes with detail the benefits and methods of varying gasoline characteristics. The specification describes 1) the relationships among the eight individual fuel characteristics and CO, NOx,...

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