Biotec Biologiche Naturverpackungen v. Biocorp Inc.
| Citation | 249 F.3d 1341,58 USPQ2d 1737 |
| Decision Date | 14 May 2001 |
| Docket Number | DEFENDANTS-APPELLANTS,-1094,No. 99-1578,PLAINTIFF-CROSS,00-1093,99-1578 |
| Parties | (Fed. Cir. 2001) BIOTEC BIOLOGISCHE NATURVERPACKUNGEN GMBH & CO. KG,APPELLANT, v. BIOCORP, INC. AND NOVAMONT, S.P.A., |
| Court | United States Courts of Appeals. United States Court of Appeals for the Federal Circuit |
Larry R. Laycock, Workman, Nydegger & Seeley, of Salt Lake City, Utah, argued for plaintiff-cross appellant. With him on the brief were David R. Wright and David R. Todd.
Chester T. Kamin, Jenner & Block, of Chicago, Illinois, argued for defendants-appellants. With him on the brief were F. Scott Kieff and Katherine J. Strandburg of Chicago, Illinois, and Paul M. Smith and Marc A. Goldman, of Washington, Dc.
Before Mayer, Chief Judge, Newman and Schall, Circuit Judges.
Biocorp, Inc. and Novamont S.p.A. (together "defendants") appeal the judgment of the United States District Court for the Central District of California, 1 entered upon a jury verdict that certain biodegradable starch-based products infringe United States Patents Nos. 5,362,777 (the '777 patent) and 5,280,055 (the '055 patent). The patents are owned by Biotec Biologische Naturverpackungen GmbH, and cover certain inventions of Dr. Ivan Tomka relating to a product called "thermoplastically processable starch" (TPS). According to these inventions starch such as that of wheat, potatoes, or corn is modified to produce TPS, a biodegradable polymeric material that can be shaped into plastic-type articles by standard thermoplastic processing techniques, typically injection molding or extrusion. The patented product is described as an important improvement on prior starch-based plastics, a witness calling the Tomka TPS "a landmark in starch polymer material."
Biotec charged the defendants with infringement and inducing infringement of the '777 and '005 patents, based on Novamont's production in Italy of starch-based polymeric products and their importation and sale by the defendants in the United States. The defendants responded that the Biotec patents are not infringed, are invalid, and are unenforceable. On motions for summary judgment the district court decided the issues of validity and enforce ability in Biotec's favor. The issues of infringement were tried to a jury, which found the defendants liable for infringement or inducement of infringement, but not willful infringement. The jury awarded compensatory damages, assessing $750,000 against Novamont and $250,000 against Biocorp. The district court entered the judgment, enjoined further infringement, and denied the duly made post-trial motions. This appeal followed. Biotec cross-appeals the judgment that the infringement was not willful.
It was known to make plastic-forming starch, called "destructurized starch," by swelling and kneading native starch at elevated temperatures to produce a thermo mechanically transformed starch. This procedure was conducted in the presence of added water, for native starch, which contains 10-20% water, chars at the high temperatures needed to transform the starch. However, the resultant high water content is disadvantageous for further processing using standard plastic-forming equipment and temperature conditions, for the water foams as steam and leaves undesirable bubbles in the final plastic product.
To solve this problem, the thermoplastically processable starch of the '777 patent is produced by preparing destructurized starch without added water, instead conducting the destructurizing transformation in the presence of a plasticizer or other additive, thereby lowering the melting point of the composition. According to the '777 patent the starch/additive composition is melted at a temperature below the decomposition temperature of the starch, and mixed until the product is substantially free of water and the crystalline content is reduced to below 5%. Crystalline content is a measure of the mechanical transformation of the starch, and the removal of water from the product eliminates the disadvantageous foaming and bubbling during further plastic processing.
Claims 1 and 20 are representative of the claims in suit of the '777 patent, with emphases added to terms that were construed in connection with the charges of infringement:
1. A method of preparing thermoplastically processable starch which is a substantially water free combination of starch with at least one additive, the method comprising admixing starch with at least 5 weight percent based on the weight of the mixture of at least one additive, said additive being such that it reduces the melting point of the starch in the mixture to below the decomposition temperature of the starch, said additive having a solubility parameter of more than 15 cal2cm- 2/3, said additive having a vapor pressure of less than 1 bar in said mixture at a temperature of about the melting point of said mixture, and melting and mixing said admixture until it is substantially water free and until the crystalline content is less than 5%.
20. A thermoplastically processable starch comprising a substantially water free, homogeneous mixture having a crystalline content of less than 5% of starch and at least 5 weight % of at least one additive having a solubility parameter of more than 15 cal2cm-2/3, said additive having a vapor pressure in the mixture of less than +1 bar at about the melting point of the homogeneous mixture, and the melting point of the mixture being lower than the decomposition temperature of the starch.
The '055 patent is directed to an interactive blend of the thermoplastically processable starch of the '777 patent, a cellulose derivative, and a phasing agent. The product of the '055 patent is described as having advantageous resistance to moisture and to be more readily processed in standard plastic molding machinery. Claim 1 is the broadest claim:
1. Biodegradable mould material or polymer blend with a high resistance to moisture, containing at least thermoplastically processable starch and a cellulose derivative and 5-25% by volume of a phasing agent, which by physical interaction or chemical reaction or both with the cellulose derivative phase and the phase of the thermoplastically processable starch makes it possible to improve the adhesion of both phases.
Neither side argues the '055 patent separately. Thus its fate accompanies that of the '777 patent.
The evidence and argument relating to the meaning and scope of the claims were presented at trial, in the presence of the jury. The district court construed the disputed claim terms in the court's instructions to the jury. The defendants argue that the district court incorrectly construed the terms "substantially water free," "thermoplastically processable starch," and "crystalline content." They state that on the correct construction of these terms no reasonable jury could have found infringement of these patents. The district court, however, sustained the verdict.
"Substantially Water Free"
The district court instructed the jury that "substantially water free" means that "the resulting mixture has a total water content of less than 5%, as measured by dividing the weight of the water in the resulting mixture by the weight of the starch, water, and additives." The defendants argue that the prosecution history requires not simply less than 5% water content, but substantially less than 5%, pointing to various statements in the prosecution history discussing a water content of 1% or 3%. The defendants state that a 3% limit would exclude all or most of the Novamont production.
The term "substantially water free" is not given a numerical limit in the specification of the '777 patent. The term was explained during prosecution as distinguishing the water content of the '777 product from that produced in the cited reference to Lay. Lay describes producing destructurized starch in the presence of additives such as glycerine and sorbitol (also used in the '777 patent), wherein the starch used as starting material has "a water content of 5 to 30% [by weight] based on the starch/water component."
The examiner of the '777 patent had initially objected to the usage in the claims of "substantially water free," stating that "nothing appears on the record which is clearly indicative as to what may be embraced by the term 'water free.'" In response Dr. Tomka filed two declarations, one by Jean Pierre Mercier, a professor of polymer science at Louvain University, and the other by Ulrich W. Suter, a professor of macromolecular chemistry at ETH-Zurich Instutut fhr Polymere. Both declarants were described as experts in the field of starch chemistry. Both stated that "those skilled in the art would not consider starch containing 5% water as being 'substantially water free,'" and that "it is necessary for the water content to be less than 5% before starch can be considered 'substantially water-free.'"
The defendants argue that the declarants worked with water contents of 1% or 3%, not 5%, and that they stated that water content above 3% resulted in brittleness on aging. Biotec responds that the 1% referred to in the declarations related to water content for processing of the TPS by any conventional processing methods, and the 3% related to processing by certain injection molding units. Biotec states that these figures do not affect the support in the declarations and elsewhere in the prosecution history for the construction that "substantially water free" means, simply, less than the 5% water in the Lay reference. Biotec states that the patent examiner accepted that "substantially water free" means less than 5% water, in accepting that this term distinguished the '777 invention from the Lay reference. Biotec also points to claim 24 (not in suit) which is specific to a "moisture content less...
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