Environmental Designs, Ltd. v. Union Oil Co. of California
| Decision Date | 25 July 1983 |
| Docket Number | No. 83-554,83-554 |
| Citation | 218 USPQ 865,713 F.2d 693 |
| Court | U.S. Court of Appeals — Federal Circuit |
| Parties | ENVIRONMENTAL DESIGNS, LTD. and the Trentham Corporation, Appellants, v. UNION OIL COMPANY OF CALIFORNIA and Ralph M. Parsons Co., Appellees. Appeal |
B.R. Pravel, Houston, Tex., argued for appellants. With him on the brief were John R. Kirk, Jr., and Charles M. Cox, Houston, Tex., of counsel.
Andrew J. Belansky, Pasadena, Cal., argued for appellees. With him on the brief were John P. Grinnell and Leo J. Young, Pasadena, Cal., of counsel.
Before MARKEY, Chief Judge, and DAVIS and BALDWIN, Circuit Judges.
Appeal from a judgment of the District Court for the Central District of California holding claims 1-8 and 12 valid and infringed. We affirm.
In early 1975, Trentham Corporation (Trentham), the sole general partner of Environmental Designs, Ltd. (Environmental), announced the construction of an effluent gas treating plant using the Trencor process. On March 22, 1976, Environmental sought a declaratory judgment that U.S. Patent 3,752,877 ('877) for an effluent gas treating process known as the Beavon process, owned by Ralph M. Parsons Co. (Parsons) and licensed through the Union Oil Co. of California (Union), was invalid. Parsons and Union counterclaimed for infringement of claims 1-8 and 12. Trentham was joined as counterclaim defendant on March 17, 1978. Judge Pfaelzer tried the case during August and September of 1979 and entered judgment on August 18, 1982, holding the '877 patent valid and claims 1-8 and 12 infringed, enjoining Environmental and Trentham from infringing the claims of the '877 patent, and awarding Parsons and Union damages of $14,000.00. 1 Environmental and Trentham appeal from the holding of validity and infringement.
The established Claus process removes about 97% of an atmospheric pollutant (sulfur) from a gas stream. The Beavon process of the '877 patent in suit and the accused Trencor process remove the remaining 3% of the sulfur from the Claus process effluent.
The sulfur in the effluent includes elemental sulfur (S), hydrogen sulfide (H sub2 S), sulfur dioxide (SO sub2 ), carbonyl sulfide (COS), and carbon disulfide (CS sub2 ). The Beavon process uses hydrogenation in catalytically converting sulfur dioxide and elemental sulfur into hydrogen sulfide and simultaneously uses hydrolysis in catalytically converting carbonyl sulfide and carbon disulfide into hydrogen sulfide. The resulting effluent is then treated for removal of a single compound, hydrogen sulfide, rather than for the removal of several compounds present before the Beavon process is performed. The total amount of sulfur removed by the Claus and Beavon processes is 99.5% or more.
The '877 patent contains 12 claims of which claim 1 is representative:
1. A continuous process for reducing the sulfur content of effluent gas streams containing water, sulfur dioxide, carbonyl sulfide and carbon disulfide which comprises the steps of:
(iv) whereby contained water and water formed in the hydrogenation of sulfur dioxide to hydrogen sulfide are utilized for the hydrolysis of carbonyl sulfide and carbon disulfide (b) cooling the hydrogenated gas stream to at least the dew point of water to condense water;
(c) separating condensed water from the hydrogenated gas stream; and
(d) treating the cooling hydrogenated gas stream to remove hydrogen sulfide.
Did Judge Pfaelzer err: (1) in holding the '877 patent valid; (2) in holding that the '877 patent is not unenforceable for fraud on the Patent and Trademark Office (PTO); or (3) in finding that the Trencor process infringes the '877 patent?
OpinionJudge Pfaelzer entered 104 findings of fact and 18 conclusions of law. Environmental has failed to show that any of those findings were clearly erroneous or that any of those conclusions were either unsupported in the record or contrary to law.
The sole basis for Environmental's attack on validity of the '877 patent lies in its assertion that the invention would have been obvious under 35 U.S.C. § 103. 2
Obviousness is a conclusion of law based upon fact determinations. As set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693, 15 L.Ed.2d 545, 148 USPQ 459, 467 (1966), and in Stevenson v. U.S. International Trade Commission, 67 Cust. & Pat.App. 109, 612 F.2d 546, 549, 204 USPQ 276, 279 (1979), those fact determinations involve (1) the scope and content of the prior art, (2) the differences between the prior art and the claimed invention, (3) the level of ordinary skill in the pertinent art, and (4) additional evidence, which may serve as indicia of non-obviousness. As is or should be true with every performance of the judicial process, all relevant evidence on each dispositive issue must be fully considered and evaluated. When a patent is challenged on the ground that the claimed invention would have been obvious, all evidence relevant to the obvious-nonobvious issue must be considered. In re Sernaker, 702 F.2d 989, 996, 217 USPQ 1, 7 (Fed.Cir.1983).
It is undisputed that the prior art consists of that considered by the PTO and the eleven U.S. and foreign patents, and six technical articles and brochures cited by Environmental at trial. Of the art cited by the PTO, the most pertinent are U.S. Patent 2,361,825 ('825) to Doumani, an article by Doumani in Industrial and Engineering Chemistry, and Australian Patent No. 223,904 ('904) to Thumm. Of the art cited at trial, the most pertinent are British patents 952,555 ('555) and 1,018,630 ('630), chapter 13 of the book Gas Purification by Kohl and Riesenfeld, and an article entitled "Hydrogen Sulfide Production from Sulphur and Hydrocarbons" by Bacon and Boe.
The Doumani references disclose the reduction of sulfur dioxide with hydrogen and that all sulfur dioxide will be converted to hydrogen sulfide when the ratio of hydrogen to sulfur dioxide is three or greater.
The Thumm '904 patent discloses treatment of a Claus process effluent containing sulfur dioxide, hydrogen sulfide, carbonyl sulfide, carbon disulfide and water vapor to vaporize elemental sulfur for discharge from the reactor with the gas stream. Thumm describes addition of steam to the effluent to hydrolyze carbonyl sulfide and carbon disulfide to hydrogen sulfide, and teaches that the hydrolysis occurs simultaneously with the Claus reaction.
The PTO thus had before it prior art which disclosed the hydrogenation of sulfur dioxide to hydrogen sulfide (Doumani); the hydrolysis of carbonyl sulfide and carbon disulfide to hydrogen sulfide (Thumm); simultaneity of certain chemical reactions (Thumm); and the composition of the Claus effluent (Thumm).
The '555 patent discloses hydrolysis of carbonyl sulfide and a simultaneous conversion of carbon monoxide with water to form hydrogen and carbon dioxide.
The '630 patent discloses hydrolysis of carbonyl sulfide and hydrogenation or hydrogenative decomposition of other, unspecified impurities present in gases "obtained by partial combustion of carbonaceous combustible materials".
The Kohl and Riesenfeld book generally discloses hydrolysis of organic sulfur compounds and the basic reactions for hydrolysis of carbonyl sulfide and carbon disulfide. It includes a passing reference to hydrogenation of sulfur dioxide.
The Bacon and Boe article discloses a process for commercial production of hydrogen sulfide. At one point in the reaction, the hydrolysis of carbon disulfide and a reaction involving methane and sulfur proceed simultaneously.
The Doumani references deal with a sulfur dioxide feed stream containing none of the other sulfur compounds found in the Claus effluent. It provides no indication that hydrogenation of sulfur dioxide and sulfur would or could proceed simultaneously with hydrolysis of carbonyl sulfide and carbon disulfide.
The Thumm reference discloses simultaneous hydrolysis of carbonyl sulfide and carbon disulfide, but says nothing about hydrogenation of sulfur dioxide and sulfur.
The teachings of the Thumm and Doumani references provide no indication that the specific hydrogenation and hydrolysis reactions of the '877 patent will occur simultaneously or that those reactions should be used in treating a Claus effluent.
The feed stream disclosed in the '555 patent contains neither sulfur dioxide nor sulfur. There is no suggestion in the '555 patent that hydrogenation of sulfur dioxide and sulfur would be essentially complete as required by the Beavon process.
The feed stream disclosed in the '630 patent contains no sulfur dioxide. There is no suggestion in that patent of essentially complete hydrogenation of sulfur dioxide, coupled with hydrolysis of carbonyl sulfide and carbon disulfide, as required by the Beavon process.
The feed materials of the Bacon and Boe article are only methane and sulfur. The feed materials of the Beavon process include no methane but include sulfur dioxide, hydrogen sulfide, carbonyl sulfide, and carbon disulfide.
Judge Pfaelzer found the prior art cited by Environmental cumulative, adding nothing to the art cited by the PTO. Environmental has not shown error in that finding. 3
Factors that may be considered in determining level of ordinary skill in the art...
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