E.I. Du Pont de Nemours & Co. v. Phillips Petroleum Co.

Citation7 USPQ2d 1129,849 F.2d 1430
Decision Date15 June 1988
Docket Number87-1284,Nos. 87-1259,s. 87-1259
Parties, 7 U.S.P.Q.2d 1129 E.I. DU PONT de NEMOURS & COMPANY, Plaintiff-Appellant, v. PHILLIPS PETROLEUM COMPANY, Phillips 66 Company, and Phillips Driscopipe, Inc., Defendants-Cross-Appellants. Appeal
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

John O. Tramontine, Fish & Neave, New York City, argued, for plaintiff-appellant. With him on the brief, were Edward F. Mullowney, Glenn A. Ousterhout and Thomas J. Vetter.

Philip S. Beck, Philip C. Swain, Kirkland & Ellis, Chicago, Ill., argued, for defendants-cross-appellants. With him on the brief, were Harry J. Roper and George S. Bosy, Neuman, Williams, Anderson and Olson, Chicago, Ill.

Before BISSELL, Circuit Judge, and MILLER, Senior Circuit Judge. *

BISSELL, Circuit Judge.

E.I. du Pont de Nemours & Company ("Du Pont") appeals from a judgment of the United States District Court for the District of Delaware, see E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 656 F.Supp. 1343, 2 USPQ2d 1545 (1987), that Du Pont failed to prove that the infringement of claims 1, 2, 5, 10, 12 and 14 of its U.S. Patent No. 4,076,698 ('698) was willful. Phillips Petroleum Company, Phillips 66 Company, and Phillips Driscopipe, Inc. (collectively, "Phillips"), the alleged infringers, cross-appeal from the district court's judgment that Du Pont proved infringement and that Phillips failed to prove invalidity under 35 U.S.C. Secs. 102(g), 103 (1982 & Supp. III 1985), and unenforceability due to inequitable conduct. We affirm in part, reverse in part, vacate in part, and remand for further proceedings consistent with this opinion.

BACKGROUND

Polymers are large molecules formed when a smaller molecule, known as a monomer, joins chemically to itself in a repeating fashion. Forming a copolymer 1 involves joining different monomers. In Du Pont's invention, ethylene, a monomer, is copolymerized with a "higher alpha-olefin." This is a hydrocarbon having between 5 The copolymers of the six claims at issue are in part defined by their properties. Consider, for example, claim 5:

and 18 carbon atoms with a single double bond at one end. 2

5. An interpolymer of ethylene and a higher olefinic hydrocarbon having 5 to 10 carbon atoms per molecule, said higher olefinic hydrocarbon having one terminal -CH = CH2 per molecule and no other olefinic unsaturation, said interpolymer being further characterized in that it has an X-ray crystallinity in the range of 40 to 70%, a melt index in the range of 0.3 to 20, a density in the range of 0.9 to 0.95 and said interpolymer being further characterized in that its density is not less than 0.93 unless the content of said higher olefinic hydrocarbon in the interpolymer is at least 3% by weight.

The remaining claims are similar, though claim 1 requires a certain "Elmendorf tear strength," and claim 12 requires as specified hoop stress. All six claims are reproduced in the Appendix below.

Du Pont filed its original patent application on March 1, 1956, and a continuation-in-part (CIP) application, S.N. 632,416, on January 4, 1957. The '698 patent issued from the CIP application on February 28, 1978, to Anderson and Stamatoff. The delay in issuance was partially due to an interference proceeding before the Board of Patent Interferences at the United States Patent & Trademark Office (PTO). As originally filed, the application contained both product and process claims. However, the process claims were cancelled following the interference proceeding, leaving 15 product claims in the '698 patent.

In 1981, Du Pont filed the infringement suit now on appeal. Phillips in its Answer and Counterclaim alleged invalidity, unenforceability, and noninfringement. In a bifurcated trial, the court tried the liability issues from July 21, 1986 through August 18, 1986. During the district court proceedings, the PTO conducted a merged reissue/reexamination proceeding of the '698 patent that culminated, on May 12, 1986, with a final rejection of all the claims. On June 11, 1986, Du Pont appealed that rejection to the PTO Board of Patent Appeals and Interferences but that appeal was stayed as of August 6, 1986.

Included in the prior art Phillips relied on at trial were the three items relied on in the appeal: (1) the 1955 work of Witt and Leatherman--researchers for Phillips; (2) Vandenberg U.S. Patent No. 3,058,963; and (3) Brown U.S. Patent No. 2,728,752.

At trial, Du Pont conceded that Phillips, through the work of Witt and Leatherman, made ethylene/higher alpha-olefin copolymers in the United States before the date of the claimed invention. However, Du Pont claimed that its copolymers could be distinguished from those of Phillips because of two properties disclosed in its patent specification but not expressly written into the claims. The district court accepted Du Pont's argument, incorporated those two properties as limitations into the six claims at issue, and determined that the claims were not invalid, not unenforceable, and infringed but not willfully.

ISSUES

1. Whether the district court erred in incorporating two extraneous property limitations into the claims.

2. Whether the district court erred in holding that the claims were not invalid under 35 U.S.C. Sec. 102(g).

3. Whether the district court erred in holding that the claims were not invalid under 35 U.S.C. Sec. 103.

4. Whether the district court erred in holding that the patent was not unenforceable.

5. Whether the district court clearly erred in finding that the claims were infringed.

6. Whether the district court applied the incorrect standard of proof regarding willful infringement.

OPINION
I. Validity
A. Claim Interpretation

The district court believed that the essence of Du Pont's invention is that its copolymers, when compared with "free-radical polyethylene, with linear polyethylene and with comparable copolymers of ethylene ... and the lower alpha-olefins," possess superior (1) environmental stress crack resistance and (2) impact strength. Du Pont, 656 F.Supp. at 1350, 2 USPQ2d at 1547. The district court interpreted the claims as including those two properties. In doing so, it erred.

The significance of claims in defining an invention was clearly expressed by our predecessor court in Autogiro Co. of America v. United States, 181 Ct.Cl. 55, 384 F.2d 391, 395-96, 155 USPQ 697, 701 (1967):

The claims of the patent provide the concise formal definition of the invention. They are the numbered paragraphs which 'particularly [point] out and distinctly [claim] the subject matter which the applicant regards as his invention.' 35 U.S.C. Sec. 112. It is to these wordings that one must look to determine whether there has been infringement. [Footnote omitted.] Courts can neither broaden nor narrow the claims to give the patentee something different than what he has set forth. [Footnote omitted.] No matter how great the temptations of fairness or policy making, courts do not rework claims. They only interpret them.

In accordance with that instruction, this court has consistently adhered to the proposition that courts "cannot alter what the patentee has chosen to claim as his invention." SSIH Equipment S.A. v. U.S. Int'l Trade Comm, 718 F.2d 365, 378, 218 USPQ 678, 689 (Fed.Cir.1983) (citing Autogiro ); see also Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 867, 228 USPQ 90, 93 (Fed.Cir.1985) ("Generally, particular limitations or embodiments appearing in the specification will not be read into the claims."). Indeed, neither Du Pont nor the district court cites any case of this court reading extraneous limitations into a claim.

It is entirely proper to use the specification to interpret what the patentee meant by a word or phrase in the claim. See, e.g., Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 867, 228 USPQ 90, 93 (Fed.Cir.1985). But this is not to be confused with adding an extraneous limitation appearing in the specification, which is improper. By "extraneous," we mean a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim. "Where a specification does not require a limitation, that limitation should not be read from the specification into the claims." Specialty Composites v. Cabot Corp., 845 F.2d 981, 987 (Fed.Cir.1988) (emphasis in original), citing Lemelson v. United States, 752 F.2d 1538, 1551-52, 224 USPQ 526, 534 (Fed.Cir.1985).

Although the district court cited as support United States v. Adams, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572, 148 USPQ 479 (1966), Adams does not support reading into the claims extraneous limitations from the specification. Adams involved claims to a battery comprising a combination of various claimed elements, none of which was water. Adams argued that the battery, unlike prior art batteries, could be successfully and unexpectedly operated with water. Though using water was not expressly included in the claims, that unexpected feature was relevant to the Court's decision on nonobviousness. See, e.g., Graham v. John Deere, 383 U.S. 1, 17-18, 86 S.Ct. 684, 693-94, 15 L.Ed.2d 545, 148 USPQ 459, 467 (1966) (objective indicia are probative of nonobviousness).

It was not necessary for the Court in Adams to read, and the Court did not read, a "water" limitation into the claims. The Court discussed the water feature only when considering rebuttal of defendant's argument of obviousness. Properly interpreted, Adams does not deviate from this language in a Supreme Court precedent that Adams refers to for authority:

[W]e know of no principle of law which would authorize us to read into a claim an element which is not present, for the purpose of making out a case of novelty or infringement. The difficulty is that if we once begin to include elements not mentioned in the claim in order to limit such claim and avoid a defense or anticipation we should never know where to...

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