483 F.2d 858 (5th Cir. 1973), 71-2650, Ziegler v. Phillips Petroleum Co.

Docket Nº:71-2650.
Citation:483 F.2d 858, 177 U.S.P.Q. 481
Party Name:Karl ZIEGLER, Plaintiff-Appellant-Cross-Appellee, v. PHILLIPS PETROLEUM COMPANY, Defendant-Appellee-Cross-Appellant.
Case Date:April 13, 1973
Court:United States Courts of Appeals, Court of Appeals for the Fifth Circuit

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483 F.2d 858 (5th Cir. 1973)

177 U.S.P.Q. 481

Karl ZIEGLER, Plaintiff-Appellant-Cross-Appellee,


PHILLIPS PETROLEUM COMPANY, Defendant-Appellee-Cross-Appellant.

No. 71-2650.

United States Court of Appeals, Fifth Circuit.

April 13, 1973

Certiorari Denied Dec. 3, 1973.

See 94 S.Ct. 597.

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Jerry L. Buchmeyer, Dallas, Tex., Pendleton, Neuman, Williams & Anderson, Sidney Neuman, Michael O. Warnecke, James R. Dowdall, Chicago, Ill., for appellee.

Before BELL and RONEY, Circuit Judges, and BREWSTER, District Judge.

RONEY, Circuit Judge:

This patent infringement suit involves two patents claiming chemical catalysts. We affirm the District Court's finding of noninfringement as to one patent, but reverse as to the other.

Catalysts are chemical substances that affect the rate or course of a given chemical reaction in some manner without becoming a significant part of the resulting product. In this case, both catalysts find wide application in the petrochemical field and are used to cause small molecules of gases or liquids to react together to form solid plastics and synthetic rubbers from which commercially useful articles and objects may be fabricated for use in everyday living.

The nature of these patents and the processes involved in their application pose especially difficult decisions for nonchemist judges. Although patent cases often present complex and technical questions, suits involving chemical patents present a complexity of a higher order. Unlike mechanical patents, the workings of which may at least be visualized and conceptualized by the lay mind, chemical patents take us into a realm of symbolic analysis. The reactions occurring in these processes cannot be appreciated by the independent senses: they cannot be seen, felt, or heard. Hence, chemists must describe them in terms of symbols, including letters and numbers.

Because the scientific underpinnings of chemical patents are so complex, trial courts must depend heavily upon expert witnesses for both explanation and evaluation of the patent disclosures and the accused infringing operations. Similarly, appellate courts must rely heavily upon the findings and credibility choices made by trial courts. Otherwise, we would be thrust into the position of reconsidering credibility and re-resolving conflicts in expert testimony, a position that mistakes this Court's function. American Seating Co. v. Southeastern Metals Co., 412 F.2d 756 (5th Cir. 1969); compare Rule 52(a), F.R.Civ.P. Nonetheless, our review of the District Court's findings is not limited to an examination of the expert testimony. Appellant raises a serious legal contention about the proper construction of a patent on a chemical catalyst, posing questions of law that go beyond the scope of expert testimony and this contention must be resolved before we can turn to the construction of the specific patents in suit.

I. Background

Before submerging ourselves in an examination of the various contentions put

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forth by the parties, a brief review of the relevant principles of organic chemistry will be helpful. Both patents here in suit are directed to polymerization catalysts used in the chemical reaction processes that produce synthetic polymers.

A catalyst is defined as a substance which affects the rate or course of a given chemical reaction in some manner without becoming a significant part of the reaction product. Normally, catalysts are used in relatively small amounts as compared with the reactants.

Synthetic polymers are produced by causing hydrocarbon molecules, called monomers, which are generally in liquid or gaseous form, to link together in long chains. These long chains are called polymers. The linking of the monomers is termed a polymerization reaction, and the polymerization catalyst is what causes the monomers to link together to form polymers.

Ethylene, propylene, and butadiene, related gases generally obtained from the petroleum industry, are the monomers involved in this suit. These monomers have at least one double bond between two carbon atoms in their small chains, called an olefinic bond, and are known as olefins. Ethylene has two carbon atoms, propylene three, and butadiene four. 1 When these monomers are

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polymerized, they yield synthetic polymers of primary concern in this suit, polyetheylene, polypropylene, and polybutadiene, the solid material of commercially useful plastic and synthetic rubbers. Prior to the invention of the catalysts covered by the patents in suit, the polymerization of these olefins was difficult. Harsh reaction conditions of extremely high pressure and elevated temperatures were required, and the olefins combined in disorderly arrays with many branched sidechains. "Unlike these inferior polymers, though, the polymers formed with Ziegler's catalysts have a higher density, greater rigidity and strength, and higher flow and melt temperatures."

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The chemical catalyst patents in suit were developed by Karl Ziegler, the plaintiff, a citizen and resident of West Germany. In 1953, Ziegler and three coworkers at the Max-Planck-Institute in Mulheim, West Germany, discovered that several combinations of an organo aluminum compound and a compound of a metal of Groups IV-B, V-B, or VI-B of the Periodic System of Elements, produced polymerization catalysts that polymerized olefins much more effectively than was previously possible. The catalysts caused monomers to combine in a linear fashion, forming straight and not branched chains, without requiring the formation process to include high pressures or excessive temperatures. These various polymerization catalysts were recognized as a great scientific achievement and were named, and are universally known as, "Ziegler catalysts." For this discovery, Ziegler, and his co-workers were awarded the Nobel Prize. This suit asks us to define the breadth of two of the many United States patents protecting Ziegler's research.

Ziegler brought this patent infringement suit against Phillips Petroleum Company, charging infringement of United States Letters Patent Nos. 3,113,115 of December 3, 1963, and 3,257,332

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of June 21, 1966. Phillips counterclaimed for a declaratory judgment of invalidity with respect to both patents. After a trial requiring twelve days of extensive oral testimony and 140 exhibits, the District Court denied both Ziegler's claim of infringement and Phillips' counterclaim by adjudging the patents valid but not infringed. Both parties appeal from the District Court judgment.

II. The Patents in Suit

Patent No. 3,257,332 (the '332 patent), entitled "Polymerization of Ethylene," was issued June 21, 1966, on an application filed November 15, 1954. The fourteen claims in the '332 patent are set out in the margin. 2

Although the complaint asserts nine of these claims against the alleged infringing process, it is only necessary to deal with claim Number 1 since it describes in general terms the compounds which are more specifically named in the other claims. An infringement of any of the claims asserted would necessarily infringe claim Number 1.

Claim Number 1 states that the '332 patent is directed toward a

"[p]olymerization catalyst, comprising the product formed by mixing an effective amount of an aluminum trialkyl with a compound of a metal selected from the group consisting of salts, freshly precipitated oxides and hydroxides of metals of Groups IV-B, V-B and VI-B of the Periodic System, including thorium and uranium."

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In this patent, the organo-aluminum compound part of the catalyst is an aluminum trialkyl.

The other patent, No. 3,113,115, entitled "Polymerization Catalyst," (the '115 patent), was issued December 3, 1963, on an application filed October 29, 1958. It is directed at catalysts in which the organoaluminum compound is dialkyl aluminum instead of trialkyl aluminum as in the '332 patent. Of the eighteen claims in the '115 patent, nine are in suit, and these claims are set out in the margin. 3

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  1. The Alleged Infringing Phillips Processes

This case was commenced on September 6, 1967, when Ziegler filed suit on the '332 patent. Ziegler charged specifically that the catalyst employed in Phillips' polybutadiene polymerization operation at Borger, Texas, infringed the '332 patent.

On August 12, 1969, Ziegler amended his original complaint to include the '115 patent. Ziegler charged that the catalyst employed in Phillips' polypropylene operation at its Adams Terminal and Monument plants in Texas infringed the '115 patent.

In the polymerization of butadiene at the Borger plant, Phillips mixed and reacted three components, aluminum triethyl, titanium tetrachloride, and iodine, in the presence of butadiene to produce polybutadiene. The evidence showed that a stream of butadiene and toluene and a stream of aluminum triethyl and toluene are first combined and then introduced into a mix pot. Then separate streams of titanium tetrachloride diluted in toluene and free iodine diluted in toluene are introduced into the mix pot. These materials are then mixed together in the mix pot and the mixture is passed into a reactor where the butadiene polymerizes into high cis 1,4-polybutadiene rubber.

In the polymerization of propylene at the Adams Terminal and Monument plants, Phillips mixed and reacted three components, diethyl...

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