Dow Chemical Co v. Astro-Valcour

• Decision Date: 28 September 2001
• Docket Number: No. 01-1003,INC,ASTRO-VALCOU,01-1003
• Citation: 267 F.3d 1334,60 USPQ2d 1519
• Parties: (Fed. Cir. 2001) THE DOW CHEMICAL COMPANY, Plaintiff-Appellant, v., Defendant-Appellee
• Court: U.S. Court of Appeals — Federal Circuit

Page 1334

267 F.3d 1334 (Fed. Cir. 2001)

THE DOW CHEMICAL COMPANY, Plaintiff-Appellant, v. ASTRO-VALCOUR, INC., Defendant-Appellee.

No. 01-1003

United States Court of Appeals for the Federal Circuit

September 28, 2001

Appealed from: United States District Court for the Northern District of New York

Keith D. Nowak, Lieberman & Nowak, LLP, of New York, New York, argued for plaintiff-appellant. With him on the brief were Arthur M. Lieberman, James P. Lynn, and Dawn L. Rudenko. Of counsel on the brief was Bruce M. Kanuch, The Dow Chemical Company, of Midland, Michigan.

Robert T. Tobin, Kenyon & Kenyon, of New York, New York, argued for defendant-appellee. With him on the brief were Robert F. Perry and Linda D. Mettes. Of counsel on the brief was Sheila Ann Ozalis, Smith & Ozalis, LLP, of Easton, Connecticut. Of counsel was Anita Pamintuan Fusco, Kenyon & Kenyon, of New York, New York.

Before MICHEL, BRYSON, and DYK, Circuit Judges.

DYK, Circuit Judge.

This case presents the question of whether, when challenging the validity of a patent under 35 U.S.C. § 102(g), a prior inventor must have known that he was an inventor. We conclude that such a state of mind is not required. Accordingly, we agree that the invention covered by the contested claims of U.S. Patent Nos. BI 4,640,933 (the "'933 patent"), 4,694,027 (the "'027 patent"), and 4,663,361 (the "'361 patent") assigned to the Dow Chemical Company ("Dow") was first invented by defendant Astro-Valcour, Inc. ("AVI"). Also, we agree that AVI did not abandon, suppress, or conceal its invention. Accordingly, we affirm the district court's decision invalidating claim 3 of the '933 patent, claim 1 of the '027 patent, and claim 1 of the '361 patent. Dow Chem. Co. v. Astro- Valcour, Inc., 110 F. Supp. 2d. 104 (N.D.N.Y. 2000).

I.

Plastic foam products may be made by using a blowing agent to expand a polystyrene, polyethylene, or other polymer resin. A blowing agent is a chemical that produces an above atmospheric pressure inside the cells of a polymer, causing the individual cells to grow, thus transforming the polymer from a high density solid to a low density cellular product. Prior to the middle 1980s foam manufacturers commonly used chlorofluorocarbon ("CFC") blowing agents to produce polyethylene foam, but environmental concerns prompted the search for more environmentally sensitive, cost-effective blowing agents that could produce high-quality foam.

Non-party Japanese Styrene Paper Company ("JSP") held a patent claiming a process for producing foam using non-CFC blowing agents. JSP filed a patent application for a patent on the process in the United States Patent and Trademark Office ("PTO") on April 19, 1968, which resulted in U.S. Patent No. 3,808,300 issued to Miyamoto, et al. (the "Miyamoto patent").

In 1983, AVI began to develop alternatives to the CFC blown foams. An AVI employee, Mr. Fred Collins, became aware of the Miyamoto patent and initiated negotiations for a license to use the patented invention. On March 3, 1984, in a laboratory in Glens Falls, New York, AVI tested the feasibility of making foam by following the teachings of the Miyamoto patent and using isobutane as the non-CFC blowing agent. On March 14, 1984, AVI purchased a license to the Miyamoto patent from JSP. On August 22, 1984, at its Glens Falls, New York production facility, AVI made foam by following the teachings of the Miyamoto patent, again using isobutane as a blowing agent.

Subsequently, AVI began to develop a commercially viable process of producing foam using isobutane as a blowing agent. Because of safety concerns due to the flammability of isobutane, AVI abandoned the implementation of the process at its Glens Falls facility and, in the winter of 1985-86, built a new facility in Plymouth, Indiana. AVI began commercial production of isobutane-blown foam by September 1986, and by October 13, 1986, had sold 190 rolls of isobutane-blown polyethylene sheet foam.

Dr. Chung Park, a scientist at Dow, also developed a process for producing isobutane-blown foam, which resulted in the '933 patent, the '027 patent, and the '361 patent (collectively the "Park patents"), of which Dow is the assignee. The inventions claimed in the Park patents are directed to plastic foam products and methods of making the foam. The '933 patent claims the finished foam; the '361 patent claims the chemical composition that may be expanded to form the finished foam; and the '027 patent claims the process for making the foam from the precursor chemical composition. Dr. Park recognized that the choice of blowing agent was an important factor in the quality and long-term stability of the finished foam product. His recognition that the use of isobutane as a blowing agent in conjunction with a stability control agent known as glycerol monostearate ("GMS") could be used to make quality foam led to the patents in suit. The parties agree, for purposes of this appeal, that Dr. Park conceived the claimed inventions in late August 1984.¹ Dr. Park actually reduced the claimed inventions to practice on September 13-14, 1984, and constructively reduced the claimed inventions to practice on December 24, 1985, by filing patent applications.

The Miyamoto patent was not considered by the PTO during the prosecution of the applications leading to the Park patents. In 1994, however, both Dow and AVI filed requests for Reexamination of the '933 patent with the PTO, citing the Miyamoto patent, among other references. The PTO merged the two requests, with the Miyamoto patent being the primary reference of concern, and on September 10, 1996, issued Reexamination Certificate No. BI 4,640,933, thus concluding that that the Park invention claimed in the '933 patent was patentable over the Miyamoto patent under 35 U.S.C. §§ 102, 103, and 112. Reexamination of the '361 and the '027 patents was not requested.

II.

Dow commenced the present action on September 21, 1995, by filing suit against AVI for infringement of two unrelated patents.² On October 2, 1996, while the action was pending, and shortly after issuance of the Reexamination Certificate by the PTO, AVI filed a counterclaim for a declaratory judgment of invalidity with respect to all the claims of the '933 patent. On December 30, 1996, Dow filed an amended complaint alleging infringement of the '933, '027, and '361 patents, and on January 17, 1997, AVI amended its counterclaims to seek additional declaratory judgments of invalidity of all of the claims of the '027 and '361 patents. On November 9, 1999, AVI moved for summary judgment that claim 3 of the '933 patent, claim 1 of the '027 patent, and claim 1 of the '361 patent were invalid under 35 U.S.C. § 102(g) based on AVI's making of the foam claimed in the Park patents prior to Park's conception and reduction to practice of the invention. The United States District Court for the Northern District of New York found that AVI presented clear and convincing evidence that it had made the inventions prior to Park's inventive efforts and that Dow raised no genuine issue of material fact to dispute this. Accordingly, the district court granted AVI's motion for summary judgment of invalidity. Dow Chem. Co. v. Astro-Valcour, Inc., 110 F. Supp. 2d 104 (N.D.N.Y. 2000).

The district court found that it was not disputed that AVI had "manufactured a physical embodiment of the Miyamoto invention, meeting the limitations of the Park patents, as early as March 3, 1984, and in any event no later than August 22, 1984." Id. at 106 (footnote omitted). The court also found that AVI used isobutane as a blowing agent and a GMS stability control agent on both dates. Id. at 107. Although Dow questioned whether AVI used normal butane (n-butane) rather than isobutane during the March 3, 1984, production, the district court found that, as he testified, an AVI employee had ordered and installed a tank of isobutane for use as the blowing agent in the testing, that test records showed that AVI had used isobutane as a blowing agent, and that AVI employees witnessed the production of isobutane-blown foam. The court therefore found that no genuine issue of material fact existed regarding whether AVI used isobutane in March and August 1984. Id. The district court additionally found that AVI had produced isobutane-blown foam using a GMS stability control agent that met the limitations of the Park patents prior to Dow's reduction to practice on September 13-14, 1984. Id. at 108.

Dow argued that the foam produced by AVI in March and August of 1984 could not constitute an invention made in this country by AVI under § 102(g) because JSP had already constructively reduced the invention to practice by filing the Miyamoto patent application in 1968, but the district court found no support for the "proposition that the actual reduction to practice by a licensee of a United States patent holder, undertaken prior to conception by a later inventor, is ineffective to constitute prior art. To the contrary, such reduction to practice anticipates the later concept." Id. at 107-08.

Next, the district court addressed the issue of whether AVI abandoned, suppressed, or concealed the invention that it made, and found that the invention had been disclosed to the public by the issuance of the Miyamoto patent in 1974. Id. at 108. Thus, the district court found that AVI's activities subsequent to its making isobutane-blown foam in 1984 were irrelevant to the issue of abandonment, suppression, and concealment, since the invention had already been disclosed to the public in 1974.

The district court concluded that AVI's production of foam using isobutane as a blowing agent and GMS as a stability control agent anticipated the Park patents. The district court granted AVI's motion for summary judgment that the claims-at-issue ³ of the Park patents were invalid under 35 U.S.C. §102(g), dismissed Dow's claims for infringement of the Park patents, and entered final judgment...