Amstar Corp. v. Envirotech Corp.

• Decision Date: 27 March 1984
• Docket Number: No. 83-1090,83-1090
• Citation: Amstar Corp. v. Envirotech Corp., 730 F.2d 1476, 221 USPQ 649 (Fed. Cir. 1984)
• Parties: AMSTAR CORPORATION, Plaintiff/Appellant, v. ENVIROTECH CORPORATION and Energy Fuels Nuclear, Inc., Defendants/Appellees. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1476

730 F.2d 1476

221 U.S.P.Q. 649

AMSTAR CORPORATION, Plaintiff/Appellant, v. ENVIROTECH CORPORATION and Energy Fuels Nuclear, Inc. Defendants/Appellees.

Appeal No. 83-1090.

United States Court of Appeals Federal Circuit.

March 27, 1984.

Gerald W. Griffin, New York City, for plaintiff/appellant. With him on the brief were Norman H. Zivin, New York City, and Donald B. Holbrook, Salt Lake City, Utah.

V. Bryan Medlock, Jr., Dallas, Tex., for defendants/appellees. With him on the brief was Ray G. Wilson, Dallas, Tex.

Before MARKEY, Chief Judge, and FRIEDMAN and DAVIS, Circuit Judges.

MARKEY, Chief Judge.

Appeal from that part of a judgment of the United States District Court for the District of Utah finding non-infringement of U.S. Patent No. 3,523,889 ('889 patent). We reverse and remand.

Background

In January 1979, Amstar Corporation (Amstar) sued Envirotech Corporation (Envirotech) and Energy Fuels Nuclear, Inc. (EFN), charging infringement of process and apparatus claims 1 through 10 of the '889 patent, active inducement of others to infringe, and contributory infringement. Envirotech and EFN asserted defenses of non-infringement, invalidity under 35 U.S.C. Sec. 103, and unenforceability for failure to disclose certain prior art to the Patent and Trademark Office (PTO), and counterclaimed for a declaratory judgment of invalidity, non-infringement, and unenforceability.

The action was tried to the court from June 22 through June 30, 1981. The trial transcript ran over 1,150 pages. Some 300 exhibits totaled over 4,000 pages of technical diagrams, photos, and articles. In-court and videotaped experiments were demonstrated, and the court conducted an on-site inspection of a laboratory version of Envirotech equipment. After submission of counsels' supplemental memoranda, the court issued a Memorandum Decision and judgment on May 3, 1983.

Validity

In its 66-page Memorandum Decision, the district court devoted 59 pages to a thorough discussion of the facts and law governing the validity issue. Though the court confessed to a felt inadequacy respecting the involved technology, much of its discussion thereof was flawless. Finding that the inventions claimed in the '889 patent (Eis inventions) clearly survived certain nonstatutory (and thus erroneous) tests, the court held the patent valid and enforceable. ¹

The subject matter of the inventions in suit and the real-world milieu surrounding their nature, their birth and growth, and the reaction of experts to these inventions, and the reactions of the industry and of Envirotech, were set forth in the court's Memorandum Decision.

The court generally described the subject matter of the '889 patent:

[A] process and apparatus designed to enable industrial enterprises to separate solids from a large volume of liquid over a relatively short period of time. Far from letting muddy waters settle in their own good time, [the '889 patent discloses] a continuous flow process that takes advantage of the efficacy of chemical flocculating agents in separating solids--especially finely-divided solids--out of a liquid suspension or emulsion, enhanced further by the design of the apparatus and by the specific steps taken in the process.

Citing 29 internal memoranda in evidence as illustrating the skepticism of Envirotech's engineers ("re-written the laws of gravity"; "a new concept ... verdict ... undecided"), and the "great effort" of Envirotech's engineers, technicians, and specialists to gather and analyze data in an attempt "to discern the mechanism by which the Enviro-clear ² clarifier/thickener operates", the district court stated:

Having expended such great efforts to discover if and how the Enviro-Clear method works, it is ironic at least to some extent for Envirotech to now assert that the Eis process was obvious to those skilled in the art. Perhaps, like a brilliant move in a game of chess, it seems so obvious and simple--after you have once seen it played. ³

The district court: carefully made the findings required by Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545, 148 USPQ 459 (1966); avoided the hindsight approach on which it said Envirotech depended; rejected the improper each-element-is-old approach; found that the Eis inventions passed the erroneously "required" tests of "synergism" or "unexpected results"; found that the Eis inventions filled a long felt need unmet by others who tried and failed, caused abandonment of long standing traditional testing methods for this type of equipment, achieved commercial success and trade acceptance, and ran contrary to the teachings of the prior art as synthesized in Envirotech's Manual just before Eis made his inventions; found that Eis proceeded "afoul of the rule" taught by the prior art against introduction of feed into the settling zone; found (without designating) that some of the non-PTO considered prior art was cumulative and some was not; and reached the conclusion that the Eis inventions would not have been obvious "based upon a preponderance of all the evidence as independently weighed and considered by this court". ⁴

The Claims

Though claims 1-10 were asserted, the appeal can be determined on consideration of independent claims 1, 8, and 9:

1. A continuous process for rapidly separating finely divided suspended solid materials from liquids at a predetermined controlled rate, comprising the steps of forming a slurry of solid agglomerates in an influent feed of liquid containing finely divided and suspended solids by the addition of a settling aid, forming a settling zone having a relatively stationary upper boundary and containing previously formed solid agglomerates, introducing said influent liquid slurry at a central position within said settling zone and centrally of said previously formed solid agglomerates, arresting the motion of the influent feed and displacing the same outwardly through said previously formed agglomerates to cause additional agglomeration of the solids and the formation without additional agitation of a dense settleable mass of the solids and agglomerates, continuously removing a dense underflow from beneath said settling zone at a rate to maintain said relatively stationary upper boundary, and continuously removing an overflow of clarified liquid from above said upper boundary of said settling zone, whereby separation of the solids and liquids rapidly occurs in said settling zone.

8. A continuous process for treating liquids to remove substances therefrom in the form of solid particles and agglomerated solid particles, which comprises forming and maintaining a settling zone of concentrated slurry containing suspended solid particles and agglomerated solid particles of like nature to those to be formed and sep [sic] separated, mixing solids-containing liquid to be processed with a settling and agglomerating agent, said mixing producing a liquid slurry containing freshly agglomerating solids, introducing said liquid slurry as an influent feed at a central position within said settling zone, arresting the motion of said influent feed and displacing the same outwardly through the concentrated slurry in said settling zone to effect additional agglomerations of the solid particles, whereby relatively large agglomerates of solid particles are formed which settle rapidly without additional agitation to form a dense underflow of agglomerates and entrained solid particles, the point of arresting said influent feed being close to said central point of introduction of the influent feed, controlling the depth of said settling zone by withdrawal of said dense underflow so that said settling zone of concentrated slurry is provided with a relatively stationary upper boundary, the rate of withdrawal of said dense underflow being such that said upper boundary of the settling zone is above the point of arresting the motion of the influent feed, and withdrawing clarified liquid from above said settling zone of concentrated slurry.

9. In an apparatus for rapidly and continuously separating finely divided and suspended solid materials from liquids at a predetermined and controlled rate, a settling vessel having top on bottom outlet means, inlet means including conduit means extending to a centralized position within said settling vessel, means for introducing a substantally [sic] vertical flow of influent feed of liquid containing freshly agglomerating solid materials to said centralized point of entry established by said conduit means, unitary substantially horizontal baffle means adjacent the point of entry established by said conduit means for arresting and altering the direction of motion of said influent feed whereby the influent feed is directed in a horizontally outward direction with respect to said centralized point of entry, means controlling the rate of discharge of solid materials through said bottom outlet means to control and thereby establish settling and sludge zones above and below said centralized point of entry of influent feed, and means for withdrawing a clarified effluent through said top outlet.

INFRINGEMENT

As shown by unchallenged evidence, the accused product performs each of the process steps set forth in claims 1 and 8 and contains each of the elements set forth in claim 9. The district court's attention, however, became focused on a mechanical mixer inserted in the feedwell of the accused product, and on the process step performed by it, namely mechanical pre-mixing of the slurry. Led to the erroneous belief that Amstar had argued for patentability on the basis that Eis avoided all mechanical mixing anywhere in the system, under the apparent impression that infringement is avoided when an element of an accused device is not found in the claims, and failing to note the presence in claim 8 of the step of pre-mixing in the slurry, the district court stated:

The combinative nature of Amstar's patent rights effectively limits the scope of...