Bayer Aktiengesellschaft v. Duphar Intern. Research B.V., 84-600

• Decision Date: 28 June 1984
• Docket Number: No. 84-600,84-600
• Citation: 738 F.2d 1237,222 USPQ 649
• Parties: BAYER AKTIENGESELLSCHAFT, Appellee, v. DUPHAR INTERNATIONAL RESEARCH B.V., Appellant. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1237

738 F.2d 1237

222 U.S.P.Q. 649

BAYER AKTIENGESELLSCHAFT, Appellee, v. DUPHAR INTERNATIONAL RESEARCH B.V., Appellant.

Appeal No. 84-600.

United States Court of Appeals, Federal Circuit.

June 28, 1984.

Donald R. Dunner, Washington, D.C., argued for appellant. With him on the brief were Allen M. Sokal, Washington, D.C.

Ellsworth H. Mosher, Alexandria, of counsel.

Arnold Sprung, New York City, argued for appellee. With him on the brief were Leonard Horn and Ira J. Schaefer, New York City.

Before KASHIWA, Circuit Judge, COWEN, Senior Circuit Judge, and BENNETT, Circuit Judge.

KASHIWA, Circuit Judge.

This is an appeal from a judgment of the United States District Court for the District of Columbia (No. 80-3123), entered September 30, 1983. 221 USPQ 1056. The district court, after ruling in favor of appellee, Bayer Aktiengesellschaft ("Bayer"), awarded attorney fees to Bayer pursuant to 35 U.S.C. Sec. 285. We vacate and remand.

Background

In the district court, Bayer filed a declaratory judgment suit, seeking a declaration that its compound, SIR-8514, does not infringe the claims of appellant's, Duphar International Research B.V. ("Duphar"), patents. Duphar in turn filed a counterclaim that asserted infringement of five of its United States patents. ¹ Shortly before trial, Duphar withdrew, with prejudice, its counterclaims for infringement regarding all but its U.S. Patent No. 3,989,842 (the " '842 patent"). It stated that judgment should be entered declaring that Bayer's SIR-8514 does not infringe the claims of the other four patents.

The parties consented to a trial before a United States magistrate pursuant to 28 U.S.C. Sec. 636(c) (1982). ² The parties narrowed the case to a single issue: the scope of claim 1 of Duphar's original application ("original claim 1"), which was a grandparent of the '842 patent application. The parties agreed that if original claim 1 literally encompassed Bayer's allegedly infringing compound, SIR-8514, then the doctrine of file history estoppel (prosecution history estoppel or file wrapper estoppel) would be

applicable to prevent Duphar from expanding the scope of the claims of its '842 patent. Such a finding would entitle Bayer to a declaration of noninfringement of Duphar's '842 patent.

The Invention

The '842 patent relates to certain substituted benzoyl ureas, and insecticidal preparations containing them. Original claim 1 reads:

1. Compounds of the formula

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where

A is a hydrogen atom, a halogen atom, a methyl group or a methoxy group,

B also represents a hydrogen atom, a halogen atom, a methyl group or a methoxy group, with the proviso that A and B do not both represent a hydrogen atom,

X and Y each represent an oxygen atom or a sulfur atom,

R is a hydrogen atom, an alkyl group, a hydroxy group, an alkoxy group, an alkoxymethyl group, an ocyl group or an alkoxycarbonyl group,

R1 is a hydrogen atom, an alkyl group which may be substituted with halogen, with alkoxy, with alkylthio or with cyano, a 1-cycloalkenyl group, a benzyl group which may be substituted with halogen, a hydroxy group, an alkoxy group, an acyl group, an alkoxycarbonyl group, an alkoxythiocarbonyl group, an alkylsulfonyl group or a phenylsulfonyl group, whilst furthermore R and R1 together with the group

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indicated in the above formula may form a ring system, and R2 represents a substituted or non-substituted phenyl group or a pyridyl group which may be substituted with halogen, with nitrocyano or with halogenated alkyl. [Emphasis added.]

The specification of the '842 patent, as well as the specification of the original application, includes the following disclosure:

If R2 is a substituted phenyl group, the phenyl group contains at least one substituent chosen from the group consisting of:

a. 1-3 halogen atoms,

b. 1-2 alkyl groups, possibly substituted with halogen, hydroxy, alkoxy, alkylthio, dialkyl amino, alkylsulphonyl [sic] and phenyl,

c. tri- or tetramethylene,

d. a cycloalkyl group, possibly substituted with halogen or cyano,

e. 1-2 nitro groups or cyano groups or alkoxy groups,

f. a dioxymethylene or dioxyethylene group,

g. an acyl group, which may be substituted with halogen,

h. an alkyl sulfonyl, phenyl sulfonyl, alkylthio, phenylthio or phenoxy group, which groups may be substituted with halogen,

i. a sulfonamide group, which may alkylated, and

[j. not used]

k. a phenyl group, which may be substituted with halogen, nitro, cyano and halogenated alkyl. [Emphasis added.]

During prosecution of the application that matured into the '842 patent, as well as its parent and grandparent applications, original claim 1 and other generic claims were repeatedly rejected under 35 U.S.C. Sec. 121. ³ Duphar contends that the section

121 rejections were traversed, ⁴ and the appropriate generic claims were cancelled in order to permit the continued examination of the elected claims. ⁵

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The Allegedly Infringing Compound

Bayer's compound, SIR-8514, (N-(2-chlorobenzoyl)-N'-(4-trifluoromethoxyphenyl)) urea, has the following formula:

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It differs from the compounds disclosed in the '842 patent and those disclosed in the prior art in that its phenyl group is substituted with a -OCF3 group.

District Court Proceeding

At trial, Duphar asserted that Bayer's SIR-8514 compound infringed the claims of the '842 patent. Although it admitted that there was no literal infringement of any of the claims of its '842 patent in view of the fact that SIR-8514 is a 2-mono-substituted benzoyl urea and not a 2,6-di-substituted benzoyl urea, as claimed, Duphar nonetheless asserted infringement under the doctrine of equivalents. In countering Duphar's contentions, Bayer asserted that Duphar had narrowed its '842 claims during prosecution to include only 2,6-di-substituted benzoyl ureas and thus, the doctrine of file history estoppel would preclude the application of the doctrine of equivalents.

To resolve this case, the parties agreed to a determination of a single issue: the scope of original claim 1. The parties agreed that if original claim 1 literally encompassed Bayer's SIR-8514 compound, then the doctrine of file history estoppel would apply. In a colloquy between the magistrate and Duphar's trial counsel, the trial counsel admitted that the issue was the scope of its original claim 1. The colloquy, in pertinent part, is as follows:

Duphar's Trial Counsel: "What is relevant at the present separate trial, of course, is the various things that Mr. Sprung [Bayer's trial counsel] will bring out through his witness and which I will attempt to controvert through maybe cross-examination and through our documentation. His objective, as I understand it, is to show that claim 1, therefore possibly claim 1-75, reads upon--reads upon the prior compound, SIR-8514. We contend that it does not and never did.

We have already admitted that if claim 1 and claim 75 and claim 152--if it read squarely upon the OCF3 , then we could not recapture that."

Magistrate: "And that file wrapper estoppel would then apply?"

Duphar's Trial Counsel: "File wrapper estoppel would then apply."

Magistrate: "And that would end the case."

Duphar's Trial Counsel: "That would end the case."

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Bayer's Trial Counsel: "As long as we are in agreement that the issue being tried here is whether claim 1 by its language was broad enough to encompass SIR-8514, if we can show factually it was, that we win, we will limit our proof to that aspect." (Emphasis added.)

Magistrate: "All right. Very well."

Duphar's Trial Counsel: "We agree, Your Honor."

At another instance during the trial, Duphar's Trial Counsel conceded that if Bayer's compound were encompassed by original claim 1, then file history estoppel would apply. He stated:

If this court should conclude that the language "substituted phenyl" in the definition of R2 meant open-ended, as unlimited substitution, then I think we would have to concede that there would be file wrapper estoppel, because, with no limitation on the substitution of the phenyl side, then, obviously, OCF3 , like any one of a thousand other--a million other substituents, would cover it nominally, or literally.

Duphar, at trial, argued that the substituted phenyl group in original claim 1 can only be substituted with three substituents--halogen, nitrocyano, and halogenated alkyl. If this interpretation were correct, then Bayer's compound with a -OCF3 substituent would not be encompassed within original claim 1 and the doctrine of file history estoppel could not be used to limit Duphar's expansion of its '842 claims to include Bayer's compound under the doctrine of equivalents. This interpretation was based on Duphar's reading of the last phrase of original claim 1 which states that "R2 represents a substituted * * * phenyl group or a pyridyl group which may be substituted with halogen, with nitrocyano or with halogenated alkyl."

Bayer, on the other hand, interpreted the phrase to mean that the three enumerated substituents referred only to the possible substituents for the pyridyl group. It contended that the substituted phenyl group had no limitations as to substituents.

The magistrate, after hearing arguments and expert testimony, found for Bayer. He found that R2 , as defined in original claim 1, broadly defined a substituted phenyl group that is open-ended with respect to substituents, and was not limited to halogen, nitrocyano or halogenated alkyl. He, therefore, found that Bayer's SIR-8514 compound was encompassed within the literal language of original claim 1.

In his Conclusions of Law, the magistrate recited the doctrine of file history estoppel. He stated in pertinent part:

File...