Dow Chemical Co. v. Mee Industries, Inc.
| Decision Date | 05 September 2003 |
| Docket Number | No. 03-1117.,03-1117. |
| Citation | 341 F.3d 1370 |
| Parties | The DOW CHEMICAL COMPANY, Plaintiff-Appellant, v. MEE INDUSTRIES, INC. and Florida Power Corporation, Defendants-Appellees. |
| Court | U.S. Court of Appeals — Federal Circuit |
Arthur M. Lieberman, Dickstein Shapiro Morin & Oshinsky LLP, of New York, NY, argued for plaintiff-appellant. With him on the brief were Keith D. Nowak and Abbey Green. Of counsel on the brief were William J. Schramm and Andrew M. Grove, Reising, Ethington, Barnes, Kiselle, Learman & McCullouch, PC, of Troy, MI. Also of counsel on the brief was Bruce M. Kanuch, The Dow Chemical Company, of Midland, MI.
Harold E. Wurst, Christie, Parker & Hale, LLP, of Pasadena, CA, argued for defendants-appellees. With him on the brief were Stephen D. Burbach and Brian L. Yates.
Before CLEVENGER, BRYSON, and DYK, Circuit Judges.
Dow Chemical Company ("Dow") appeals the judgment by the United States District Court for the Middle District of Florida in favor of Mee Industries, Inc. ("Mee") and Florida Power Corporation ("Florida Power") (collectively "appellees"). Dow Chem. Co. v. Mee Indus., 65 USPQ2d 1876 (M.D.Fla.2002). We affirm as to the judgment of invalidity of claims 14-16, 21, and 22 of U.S. Patent No. 5,867,977 ("the '977 patent") and claim 30 of U.S. Patent No. 5,930,990 ("the '990 patent"), but reverse as to the judgment of invalidity of claims 23 and 24 of the '977 patent. We also affirm the judgment of no infringement by Florida Power and Mee as to claims 35, 37, and 38 of the '977 patent. As to the infringement of claims 23 and 24 of the '977 patent, we affirm the judgment of no direct infringement by Mee and Florida Power, but vacate and remand for further proceedings as to contributory and induced infringement by Mee. Finally, we hold that the district court erred in concluding that Dow did not carry its burden to establish damages because it failed to provide expert testimony on the damages issue.
Dow is the assignee of the '977 and '990 patents ("the patents-in-suit"), both entitled "Method and Apparatus for Achieving Power Augmentation in Gas Turbines Via Wet Compression." The '977 patent was filed as a continuation-in-part based on the application that issued as the '990 patent. Substantial changes were made in the text of the application that led to the issuance of the '977 patent. However, the differences between the two specifications are not pertinent to this appeal. Reference will be made to the specification of the '977 patent as exemplary of the disclosures of the patents-in-suit.
The patents-in-suit are directed to improving the efficiency of gas turbines by increasing their power output. The improved efficiency results from modifying a turbine to employ an effect called "wet compression," which operates by permitting liquid water particles to enter the compressor of a gas turbine. The patents-in-suit explain wet compression as follows:
Wet compression enables power augmentation in gas turbine systems by reducing the work required for compression of the inlet air. This thermodynamic benefit is realized within the compressor of a gas turbine through "latent heat intercooling", where water (or some other appropriate liquid) added to the air inducted into the compressor cools that air, through evaporation, as the air with the added water is being compressed. The added water can be conceptualized as an "evaporative liquid heat sink" in this regard.
'977 patent, col. 2, ll. 3-12.
The inventors did not purport to have discovered power augmentation through wet compression, admitting in the Background of the Invention section that "[t]he power augmentation benefits of wet compression have been generally understood for some time." Id. at col. 2, ll. 35-36. However, the inventors asserted that they were the first to comprehend that a large amount of water could be added to an operational compressor without destroying the compressor by adding the water in increments. Thus, the invention was directed at achieving the beneficial effects of wet compression while minimizing its potentially deleterious side effects.
On April 5, 2000, Dow filed a complaint alleging patent infringement of the '977 and '990 patents by Mee and Florida Power. Dow, inter alia, asserted infringement of claims 14-16, 21-24, 35, and 37-38 of the '977 patent and claim 30 of the '990 patent.1 Claim 14 of the '977 patent was the sole asserted independent claim of the '977 patent, although asserted dependent claims 35, 37, and 38 depended either directly or indirectly from independent claim 29, which was not directly asserted. Independent claim 30 was the only claim of the '990 patent at issue. On May 10 and 11, respectively, Mee and Florida Power answered the complaint and asserted invalidity, unenforceability, and noninfringement counterclaims against Dow.2 Following an August 2, 2001, hearing, the district court issued an order on August 17, 2001, construing disputed claim terms.
The district court held a six-day bench trial between December 10 and 18, 2001, addressing the claims of infringement and the counterclaims. During trial, the court excluded the testimony of Dow's expert on damages, citing Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993). On September 19, 2002, the court issued a memorandum opinion finding that Dow was not entitled to damages as a matter of law because it "had not carried its burden to establish damages." Dow, 65 USPQ2d at 1879. The court also held claims 14-16 and 21-24 of the '977 patent and claim 30 of the '990 patent invalid under 35 U.S.C. § 103. Id. at 1897. Finally, the court held claims 14-16, 21-24, 35, and 37-38 of the '977 patent and claim 30 of the '990 patent not infringed by Mee or Florida Power. Id.
The court concluded that two pieces of prior art supported the obviousness determination. The first was a 1990 article entitled "Gas Turbine Performance Direct Mixing Evaporative Cooling System, American Atlas Cogeneration Facility, Rifle, Colorado," by J.P. Nolan and V.J. Twombly ("the Nolan Article"). The Nolan article described "the design, installation, operation and performance of a direct mixing evaporative cooling system." Nolan Article at 1. As found by the district court, this reference taught the use of 16 gallons per minute of "overspray" (wet compression), which resulted "in an increase in output due to the mass flow." Dow, 65 USPQ2d at 1884. The court also found that "[t]he system as operated did not ... use increments." Id.
The second piece of prior art relied upon by the court was a May 1, 1995, document entitled "Fog System Proposal for Fern Engineering Company: Gas Turbine Overspray Cooling System" ("the Mee proposal") sent by Mee to Fern Engineering. The court found this document to be an offer to sell the system described in the Mee proposal. Dow, 65 USPQ2d at 1890. The Mee proposal was sent in response to an equipment specification entitled "Duct Water Spray Delivery System Specification for a Gas Turbine Inlet Water Overspray Cooling System" sent by Fern Engineering to Mee on January 17, 1995. (J.A. 10306) ("the Fern Specification"). The court relied upon the Fern Specification when determining what was offered for sale in the Mee proposal. Dow, 65 USPQ2d at 1884-85. The court found that the system as proposed would incrementally introduce up to one percent water uniformly into a gas turbine "assuming a fully humidified day." Id. at 1893.
On the issue of infringement, the court found that Dow "ha[d] not met its burden of proof to show that Mee or Florida Power infringed Claims 35, 37, and 38 of the '977 patent." Id. at 1895. As to claims 14-16, 21-24 of the '977 patent and claim 30 of the '990 patent, the court found that Florida Power did not infringe because it failed to increase water flow over time, but rather added "water for overspray purposes... at once." Id. at 1896. As to defendant Mee, the court found that Mee did not directly infringe Dow's method claims because Mee only sold equipment, and therefore, did not itself practice the patented methods. On the issues of contributory and induced infringement of Dow's asserted method claims, the court found that Mee did not infringe, because the systems sold by Mee did not adjust water volume for the purpose of avoiding thermal stress, and because the amount of water utilized in those systems was insufficient to cause destructive thermal stresses. Id. at 1897.
On October 10, 2002, the district court entered judgment in favor of Mee and Florida Power in accordance with the memorandum opinion. Dow filed a timely appeal. We have jurisdiction pursuant to 28 U.S.C. § 1295(a).
This court reviews the judgment of a district court following a bench trial "for errors of law and clearly erroneous findings of fact." Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1343-44 (Fed. Cir.2002). For issues of obviousness, "[w]e review [the] district court's underlying findings of fact for clear error, while we rule de novo on the ultimate issue of obviousness." Oakley, Inc. v. Sunglass Hut Int'l, 316 F.3d 1331, 1339 (Fed.Cir. 2003).
The district court held all eight of the method claims asserted by Dow invalid on the ground of obviousness in view of the Nolan reference and the Mee proposal.
The first issue is whether the Mee proposal is, in fact, prior art against the claims of either of the patents-in-suit. The district court found that the Mee proposal constituted prior art as an "invention ... on sale in this country, more than one year prior to the date of the application for patent in the United States." 35 U.S.C. § 102(b) (2000). The ultimate determination of whether an invention was on sale is a question of law based on underlying issues of fact. Allen Eng'g Corp., 299 F.3d at 1344.
Dow argues that the district court erroneously considered the Fern...
To continue reading
Request your trial
-
Kaneka Corp. v. SKC Kolon PI, Inc.
...orders. In two other cases, the district court below had acted as a factfinder during a court trial. SeeDow Chemical Co. v. Mee Indus., Inc., 341 F.3d 1370, 1381 (Fed.Cir.2003) (reversing a district court's finding of zero damages after a court trial); Lindemann Maschinefabrik GmbH v. Ameri......
-
E2interactive, Inc. v. Blackhawk Network, Inc.
...must be awarded if there has been a determination of both infringement and validity. 35 U.S.C. §284 (2006); Dow Chem. Co. v. Mee Indus., Inc., 341 F.3d 1370, 1381-82 (Fed. Cir. 2003); Grain Processing Corp. v. American Maize-Prod. Co., 185 F.3d 1341, 1349 (Fed. Cir. 1999); Rite-Hite Corp. v......
-
Apple, Inc. v. Samsung Elecs. Co.
...from N.D. Cal. Model Patent Jury Instr. B.5.1.Authorities35 U.S.C. § 284 (no reference to causation); Dow Chem. Co. v. Mee Indus., Inc., 341 F.3d 1370, 1381-82 (Fed. Cir. 2003); Grain Processing Corp. v. Am. Maize-Prod. Co., 185 F.3d 1341, 1349 (Fed. Cir. 1999); Maxwell v. J. Baker, Inc., 8......
-
Apple, Inc. v. Samsung Elecs. Co.
...from N.D. Cal. Model Patent Jury Instr. B.5.1.Authorities35 U.S.C. § 284 (no reference to causation); Dow Chem. Co. v. Mee Indus., Inc., 341 F.3d 1370, 1381-82 (Fed. Cir. 2003); Grain Processing Corp. v. Am. Maize-Prod. Co., 185 F.3d 1341, 1349 (Fed. Cir. 1999); Maxwell v. J. Baker, Inc., 8......
-
Exclusion Of Patentee's Damages Evidence Is Insufficient To Justify SJ Of No Damages
...than a reasonable royalty' even if the plaintiff[] has no evidence to proffer." Id. at 11-12 (quoting Dow Chem. Co. v. Mee Indus., Inc., 341 F.3d 1370, 1381 (Fed. Cir. 2003)). The Court thus reversed the district court's grant of SJ of zero damages and remanded for further Second, the Court......
-
Table of cases
...81 F. Supp. 167 (N.D. Ill. 1948), 337 In re Dow Chem. and Union Carbide Corp., 131 F.T.C. 600 (2001), 290 Dow Chem. Co. v. Mee Indus., 341 F.3d 1370 (Fed. Cir. 2003), 9 Dr. Miles Med. Co. v. John D. Park & Sons, 220 U.S. 373 (1911), 78, 451 DSM Desotech Inc. v. 3D Systems Corp., 749 F.3d 13......
-
Tesla, Marconi, and the great radio controversy: awarding patent damages without chilling a defendant's incentive to innovate.
...supra note 197, at 163. (214.) 35 U.S.C. [section] 284 (2000) (damages). (215.) See generally Dow Chem. Co. v. Mee Indus., Inc., 341 F.3d 1370, 1381-82 (Fed. Cir. 2003); Integra Lifesciences I, Ltd. v. Merck KGaA, 331 F.3d 860, 870 (Fed. Cir. 2003); Grain Processing Corp. v. Am. Maize-Prods......
-
Introduction
...at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, 48. See, e.g., Dow Chem. Co. v. Mee Indus., 341 F.3d 1370, 1382 (Fed. Cir. 2003) (citing Ga.-Pac. Corp. v. United States Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970)). 49. The word “profits” ......