Hoechst Celanese Corp. v. BP Chemicals Ltd.

Decision Date19 March 1996
Docket NumberNo. 94-1472,94-1472
Citation38 USPQ2d 1126,78 F.3d 1575
PartiesHOECHST CELANESE CORPORATION, Plaintiff-Appellee, v. BP CHEMICALS LIMITED and Sterling Chemicals, Inc., Defendants-Appellants.
CourtU.S. Court of Appeals — Federal Circuit

John F. Lynch, Arnold, White & Durkee, Houston, Texas, argued for plaintiff-appellee. With him on the brief were Michael Macklin, Melinda L. Patterson, Richard L. Stanley and Russell L. Sandidge. Also on the brief were Kenneth A. Genoni, Hoechst Celanese Corporation, Somerville, New Jersey, and Michael W. Ferrell, Hoechst Celanese Corporation, Summit, New Jersey. Of counsel were Stephen D. Dellett and Stephen E. Edwards.

Clyde F. Willian, Willian Brinks Hofer Gilson & Lione, Chicago, Illinois, argued for defendants-appellants. With him on the brief were Jack C. Beringweig, Cynthia A. Homan, Richard A. Kaplan and Dominic P. Zanfardino. Also on the brief were Harold Haidt and G.T. Delahunty, Brooks Haidt Haffner & Delahunty, New York City, and Robins C. Gibbs and John Christopher Reynolds, Gibbs & Bruns, L.L.P., Houston, Texas.

Before PAULINE NEWMAN, CLEVENGER, and RADER, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

BP Chemicals Limited and Sterling Chemicals, Inc. (together "BP") appeal the judgment of the United States District Court for the Southern District of Texas, 1 entered on the jury verdict that BP had infringed, willfully, United States Patent No. 4,615,806 (the '806 patent) owned by Hoechst Celanese Corporation (herein "Celanese"). On re-determination of the issues of claim interpretation, as mandated by Markman v. Westview Instruments, Inc., 52 F.3d 967, 34 USPQ2d 1321 (Fed.Cir.) (en banc ), cert. granted, --- U.S. ----, 116 S.Ct. 40, 132 L.Ed.2d 921 (1995), and on review of the other issues on appeal, the judgment is affirmed.

I INFRINGEMENT
A. The Invention

The '806 patent, inventor Dr. Charles B. Hilton, is directed to a method of reducing iodide contamination in organic medium, particularly acetic acid. When the acetic acid is catalytically converted to vinyl acetate, the presence of iodide in more than about one part per billion poisons the catalyst. Such iodide contamination was known to be removable by contacting the acetic acid with silver-charged gel ion exchange resins, but the process was slow and impractical in large commercial volume. In seeking to improve the Celanese commercial process, Dr. Hilton discovered that by using a macroreticulated (sometimes described as macroporous) silver-charged cation exchange resin having specified characteristics, he obtained effective, rapid, large-volume removal of minute traces When BP encountered iodide contamination in the commercial production of acetic acid BP sought other methods of removal before adopting the method, using a macroreticulated silver-charged cation exchange resin, that is charged with infringement. Celanese brought suit, asserting that the BP method infringed claims 2 and 6 of the '806 patent. Claim 2 is shown, with claim 1 from which it depends:

of iodine, to a degree of effectiveness, practicality, and utility not previously available.

1. A method for removing iodide compounds from a non-aqueous organic medium comprising contacting the medium containing said iodide compounds with an ion exchange resin characterized in that the resin is a macroreticulated strong-acid cation exchange resin which is stable in the organic medium and has at least one percent of its active sites converted to the silver or mercury form.

2. The method of claim 1 wherein the non-aqueous organic medium is acetic acid and from about 25 to about 75 percent of the active sites are in the silver form.

The question of infringement turns on the meaning of the word "stable" in the claims. It is no longer disputed that all of the other claim elements and limitations are present in the BP method.

B. Review Procedure

Trial was to a jury, lasting for seven days. The jury found that the '806 patent was infringed and that the infringement was willful. The district court, denying duly made motions for a new trial and for judgment as a matter of law, entered judgment on the jury verdict. In its opinion the court identified the evidence in support of the jury verdict, identified the evidence supporting each party's theory of the meaning of certain disputed terms in the patent, and stated its own view of the meaning of these terms. In following this procedure the court relied on Read Corp. v. Portec, Inc., 970 F.2d 816, 822 n. 3, 23 USPQ2d 1426, 1432 n. 3 (Fed.Cir.1992), as requiring or advising that a judicial statement be made of the meaning of disputed claim terms.

BP points out that Read v. Portec has been superseded by the decision in Markman v. Westview Instruments, Inc., 52 F.3d 967, 34 USPQ2d 1321 (Fed.Cir.) (en banc ), cert. granted, --- U.S. ----, 116 S.Ct. 40, 132 L.Ed.2d 921 (1995), and that Markman requires the Federal Circuit to decide de novo disputed questions of claim interpretation without deference to the trier of fact. BP points out that the disputed question of the meaning of the claim term "stable" is dispositive of the issue of infringement, and therefore that no deference need be given to the jury's finding of infringement. We agree that Markman so requires, and that the issue of infringement is decided by the meaning of "stable" as used in the claims. See Markman, 52 F.3d at 999, 34 USPQ2d at 1346 (Pauline Newman, J., dissenting) (pointing out that the disputed meaning of technical terms often decides the fact of infringement).

"Stable" is defined in the body of the specification as turning on the meaning of "dimension." Although "dimension" appears in the specification, not in the claims, implementation of the Markman decision appears to require that the meaning of "dimension" be given the same de novo determination by the Federal Circuit as the meaning of "stable" in the claims, lest we add further complexities to the trial of patent cases.

C. Construction of the Terms "Stable" and "Dimension"

A technical term used in a patent document is interpreted as having the meaning that it would be given by persons experienced in the field of the invention, unless it is apparent from the patent and the prosecution history that the inventor used the term with a different meaning. ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1579, 6 USPQ2d 1557, 1560 (Fed.Cir.1988); Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387, 21 USPQ2d 1383, 1386 (Fed.Cir.1992).

The meaning of "stable" as used in the claims is defined in the specification, col. 4, lines 31-35, as follows:

By the term "stable," it is meant that the resin will not chemically decompose, or change more than about 50 percent of its Thus the meaning of "stable" depends on the meaning of "dry physical dimension." On the BP position that "dry physical dimension" refers to volume, the BP process does not infringe; but on the Celanese position that "dimension" is a linear measure, there is literal infringement. Celanese states that linear dimension is the plain meaning of "dimension" as understood by persons of skill in this field and as used by the inventor. The BP position is that the term "stable" refers to volume as the physical dimension being measured, pointing out that the resin is in the shape of spherical beads and that the inventor in his research measured volume change. BP states that since its resin changes by more than 50% in volume when exposed to acetic acid, there can not be infringement.

dry physical dimension upon being exposed to the organic medium containing the iodide compounds.

The parties have provided us with photographs and experimental data, the testimony of the scientists who produced the data and interpreted it, and the testimony of experts in the field. Markman limits appellate reliance on extrinsic evidence to evidence in explanation of the technology and technical terms:

Through this process of construing claims by, among other things, using certain extrinsic evidence that the court finds helpful and rejecting other evidence as unhelpful, and resolving disputes en route to pronouncing the meaning of claim language as a matter of law based on the patent documents themselves, the court is not crediting certain evidence over other evidence or making factual evidentiary findings. Rather, the court is looking to the extrinsic evidence to assist in its construction of the written document, a task it is required to perform.

52 F.3d at 981, 34 USPQ2d at 1331. However, we have found it necessary to rely on the evidence presented at the trial and credit certain evidence over other evidence, for we are not personally qualified to know the scientific meanings of "stable" and "dimension" as applied to macroreticulated cation-exchange resins in organic medium.

The evidence was sharply in conflict. The technical expert presented by Celanese testified as follows:

Q. The second part of this has to do with its dimension. What does that mean?

A. For the case of a spherical resin, it typically means its diameter.

Q. The word "dimension," does it mean volume dimension?

A. There is no such thing as volume dimension.

In turn, the BP expert testified that "dimension" meant volume dimension, stating that volume is what one skilled in the art would understand the term to mean:

Q. Okay. Is that all the reasons [why you believe the term "stable" refers to volume]?

A. There are at least two, perhaps three, additional very important reasons. One is that really it is the common practice of measuring changes that a resin experiences as it swells in a solvent in terms of volume percentage swelling. That is very amply documented in the literature. It is the easiest thing to do. Conversely, it is rather difficult to pick a single bead, measure the change in diameter of that bead, for example, because not...

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