Atofina v. Great Lakes Chemical Corp.

• Citation: 441 F.3d 991
• Decision Date: 23 March 2006
• Docket Number: No. 05-1359.,05-1359.
• Parties: ATOFINA, Plaintiff-Appellant, v. GREAT LAKES CHEMICAL CORPORATION, Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

441 F.3d 991

ATOFINA, Plaintiff-Appellant, v. GREAT LAKES CHEMICAL CORPORATION, Defendant-Appellee.

No. 05-1359.

United States Court of Appeals, Federal Circuit.

March 23, 2006.

Thomas G. Rowan, Jones Day, of New York, New York, argued for plaintiff-appellant. With him on the brief were Daniel L. Malone, Eric C. Stops, and Gasper J. LaRosa.

Richard D. Harris, Greenberg Traurig LLP, of Chicago, Illinois, argued for defendant-appellee. With him on the brief was Brad R. Bertoglio.

Before LOURIE, RADER and DYK, Circuit Judges.

Opinion for the Court filed by Circuit Judge LOURIE.

Opinion concurring in part and dissenting in part filed by Circuit Judge DYK.

LOURIE, Circuit Judge.

Atofina appeals from the final decision of the United States District Court for the District of Delaware granting judgment in favor of Great Lakes Chemical Corporation ("Great Lakes") that Great Lakes did not literally infringe U.S. Patent 5,900,514 (the "'514 patent"); claims 1, 2, 6, 7, 9, and 10 of the '514 patent were anticipated by Japanese publication 51-82206 ("JP 51-82206"); and the '514 patent was unenforceable because of inequitable conduct. Atofina v. Great Lakes Chem. Corp., Civ. No. 02-1350 (D.Del. March 23, 2005) ("Final Judgment"). We affirm the district court's claim construction of the term "chromium catalyst" and hence its determination of no literal infringement. However, because the district court clearly erred in finding that JP 51-82206 was an anticipatory reference meeting all the limitations of claims 1, 2, 6, 7, 9, and 10 of the '514 patent and also clearly erred in finding that the applicants of the patent intended to deceive the United States Patent and Trademark Office ("PTO"), we reverse its holdings of invalidity because of anticipation and unenforceability because of inequitable conduct.

BACKGROUND

The '514 patent is entitled "Synthesis of Difluoromethane," and was issued to Elf Atochem, which subsequently became Atofina, as assignee. The invention is directed to a method of synthesizing difluoromethane (CH₂F₂) through the gas phase fluorination of methylene chloride (CH₂Cl₂), with hydrogen fluoride (HF), in the presence of an amount of oxygen (O₂), within a particular temperature range, and with a chromium (Cr) catalyst. Claim 1 requires that the process be conducted in the presence of 0.1 to 5 moles of oxygen per 100 moles of methylene chloride, at a temperature of between 330 and 450°C, with a "bulk or supported chromium catalyst." '514 patent, col. 7, ll. 20-25. The remaining asserted claims, 2, 5, 6, 7, 9, and 10, add further limitations: claim 2 further narrows the range of oxygen to methylene chloride ratios; claim 6 adds a requirement that the methylene chloride, oxygen, and hydrogen fluoride be in contact with the catalyst for a time between 0.01 and 10 seconds; claim 7 adds a pressure limitation requiring between 1 and 20 bars absolute; claim 9 is the same as claim 1 but with a different transition phase; and claim 10 is the same as claim 1 but with the addition of the contact time limitation from claim 6. Id., col. 7, ll. 26-27, col. 8, ll. 3-11, 14-28.

In 1993, Great Lakes began manufacturing difluoromethane using a mixed metal catalyst consisting of a chromium compound with another element that the district court referred to as Agent X,¹ carried out in the presence of 1.1 to 1.2 moles of oxygen per 100 moles of methylene chloride at a temperature of 150 to 350 °C, and at a pressure between 5.5 and 7.6 bars absolute. Atofina v. Great Lakes Chem. Corp., Civ. No. 02-1350, slip op. at 18 (D.Del. Feb. 23, 2005) ("Opinion"). The reactants in the process are in contact with the catalyst for approximately 10 seconds. Id. Agent X apparently enhances the selectivity of Great Lakes' fluorination reaction, as well as the catalyst life, but the process would not work in the absence of chromium. Id., slip op. at 18, 20.

On July 1, 2002, Atofina filed a complaint in the United States District Court for the District of Delaware accusing Great Lakes of infringing of the '514 patent. Great Lakes filed an answer and a counterclaim, alleging noninfringement, invalidity, and unenforceability because of inequitable conduct. After a bench trial, the court concluded that (1) Great Lakes did not infringe the '514 patent; (2) claims 1, 2, 6, 7, 9, and 10 were anticipated by JP 51-82206; (3) claim 5 of the '514 patent would not have been obvious in view of the prior art; (4) the '514 patent was not invalid for lack of enablement or failure to disclose the best mode; and (5) the '514 patent was unenforceable because of inequitable conduct. Id., slip op. at 68. The court's holdings as to infringement, invalidity because of anticipation, and unenforceability because of inequitable conduct are at issue in this appeal.

First, the district court relied on the specification, the prosecution history, and dictionaries to construe the term "chromium catalyst" to mean "a substance that alters the velocity of a chemical reaction without itself being consumed, where the only catalytically active material is chromium without the addition of metal oxides, alkali metal fluorides, or non-inert additives." Id., slip op. at 28-29. The court then determined that Great Lakes' catalyst did not meet the "bulk or supported chromium catalyst" limitation because it contained a non-chromium substance, Agent X, that was catalytically active or at the very least a non-inert additive that had been disclaimed in the specification. Id., slip op. at 35-36. In addition, the court found that Great Lakes' catalyst contained a metal oxide other than chromium oxide that had been disclaimed by the applicants of the '514 patent during prosecution. Id., slip op. at 36-37.

Second, the district court held that claims 1, 2, 6, 7, 9, and 10 were anticipated by JP 51-82206. Id., slip op. at 39-45. Relying on Titanium Metals Corporation v. Banner, 778 F.2d 775, 782 (Fed.Cir. 1985), the court determined that the broader temperature range of 100 to 500 °C recited in JP 51-82206 anticipated the narrower temperature range of 330 to 450 °C disclosed in the '514 patent. Opinion, slip op. at 41. The court also found that the additional limitation in claim 2, that the oxygen to methylene chloride molar ratio be between 0.5 percent and 3 percent, was anticipated by JP 51-82206's disclosure of part of that range (0.001 to 1 percent oxygen to methylene chloride molar ratio), again relying on Titanium Metals. Id., slip op. at 42. Furthermore, the court determined that although JP 51-82206 does not mention the contact times disclosed in claims 6 and 10, it nevertheless anticipates those claims because the "contact times may be calculated based on the information provided in the examples of JP 51-82206." Id., slip op. at 43-44. The court also held that JP 51-82206 provides an enabling disclosure of the claimed process. Id., slip op. at 45-47.

Finally, the district court held that the '514 patent was unenforceable because of inequitable conduct. Id., slip op. at 58-67. The court first found that the fully translated version of JP 51-82206, which was not submitted to the PTO, was highly material "because it anticipate[d] all the limitations of claims 1, 2, 6, 7, 9, and 10 of the '514 patent." Id., slip op. at 62, 66. The court then determined that Atofina intended to deceive the PTO based on its failure to disclose the full English translation of JP 51-82206, which it had in its possession. Id., slip op. at 64. The court also based its finding of intent on Atofina's alleged misrepresentations to the PTO that JP 51-82206 disclosed a catalyst containing "chromium oxide and optionally other metal oxides" without mentioning that JP 51-82206 disclosed a catalyst of pure chromium oxide, as well as Atofina's alleged mischaracterizations of JP 51-82206 with respect to the scope of the reference and the contact times used in the reference. Id., slip op. at 64-65. After balancing materiality and intent, the court concluded that the '514 patent was unenforceable because of inequitable conduct. Id., slip op. at 67.

The district court entered judgment in favor of Great Lakes on March 23, 2005. Atofina timely appealed, and we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

Claim construction is an issue of law, Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed.Cir.1995) (en banc), that we review de novo, Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed.Cir.1998) (en banc). The district court's determination of infringement, in contrast, is a question of fact that we review for clear error. Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361, 1367 (Fed.Cir.2004). Anticipation is also a question of fact that we review for clear error. Hoover Group, Inc. v. Custom Metalcraft, Inc., 66 F.3d 299, 302 (Fed.Cir. 1995). Finally, we review a district court's ultimate determination of inequitable conduct for abuse of discretion, and its threshold findings regarding materiality and intent to mislead for clear error. Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp., 267 F.3d 1370, 1379 (Fed.Cir.2001). "A finding is `clearly erroneous' when although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed." United States v. U.S. Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 92 L.Ed. 746 (1948).

I. Infringement

On appeal, Atofina argues that the district court incorrectly construed the term "chromium catalyst." Atofina asserts that the correct construction of "chromium catalyst" is a substance which causes the reaction to take place in which chromium is the catalytically active metal. Atofina also contends that the court erred in excluding all "metal oxides" and "non-inert additives" from the meaning of "chromium catalyst" based on statements in the specification and in the prosecution history. According to Atofina, the court read those statements out...