Ecolochem, Inc. v. Mobile Water Technology Co., LR-C-85-834.

• Decision Date: 30 June 1988
• Docket Number: No. LR-C-85-834.,LR-C-85-834.
• Citation: 690 F. Supp. 778
• Parties: ECOLOCHEM, INC., Plaintiff, v. MOBILE WATER TECHNOLOGY CO., Defendant.
• Court: U.S. District Court — Eastern District of Arkansas

690 F. Supp. 778

ECOLOCHEM, INC., Plaintiff, v. MOBILE WATER TECHNOLOGY CO.,^* Defendant.

No. LR-C-85-834.

United States District Court, E.D. Arkansas, W.D.

June 30, 1988.

Clifton E. McCann, Richard L. Aitken, Lane & Aitken, Washington, D.C., Thomas B. Staley, Robinson, Staley & Marshall, Little Rock, Ark., for plaintiff.

John R. Walker, III, Larry W. McKenzie, Walker & McKenzie, Memphis, Tenn., N.M. Norton, Jr., Wright, Lindsey & Jennings, Little Rock, Ark., for defendant.

MEMORANDUM OPINION

HENLEY, Senior Circuit Judge, Sitting by Designation.

This is an action brought by Ecolochem, Inc., a Virginia corporation, against Memphis Mobile Water Technology Co., an Arkansas corporation, to recover for Mobile Water's alleged infringement of Ecolochem's United States Patent No. 4,556,492 ('492 Patent). 35 U.S.C. § 271. Mobile Water stipulated that it has infringed several claims of the '492 Patent if it is valid. Mobile Water has asserted as its defense to Ecolochem's action that the '492 Patent is invalid. This court has original jurisdiction of this action pursuant to 28 U.S.C. § 1338(a). Further, this court also has jurisdiction pursuant to 28 U.S.C. § 1332(a) as the parties are diverse and the amount in controversy exceeds $10,000.00.

At the parties' request, the court has ordered separate trials on the issues of Mobile Water's defense of invalidity and damages. See Fed.R.Civ.P. 42(b). The issue of invalidity has been tried to the court,¹ and this memorandum incorporates the court's findings of fact and conclusions of law. Fed.R.Civ.P. 52.

I. THE INVENTION.

The '492 Patent is for a process to remove dissolved oxygen (O2) from water.² Water that is exposed to air becomes saturated with oxygen containing concentrations measured in parts per million. The removal of this dissolved oxygen is important to the electric power generating industry because the dissolved oxygen in the water used to run the generating turbines and circulated throughout the system promotes corrosion in the system. It is also important that other contaminants (such as the minerals found in hard water) not be introduced into the system as they will also have a deleterious effect. As early as 1955 dissolved oxygen concentrations as low as five parts per billion were recommended.

In the day-to-day operation of the power plant the feedwater is typically deoxygenated by a deaerating feedwater heater. This device, however, requires the use of steam which must be drawn off the system. Consequently, when the plant is initially starting up, or is restarting after a shutdown for maintenance, some other method of deoxygenating the feedwater is necessary. Ecolochem's process, which is the subject of the '492 Patent, was introduced to meet this need.

The '492 Patent is a combination of several well known processes. The first step is the addition of hydrazine (N2H4) to the water to be deoxygenated. The hydrazine reacts with the dissolved oxygen to yield water and nitrogen gas. Because this reaction does not proceed quickly at low temperatures, the '492 Patent includes a second step of passing the water and hydrazine through a bed of activated carbon. The activated carbon catalyzes the hydrazineoxygen reaction allowing it to proceed quickly at low temperatures. This two-step process was well known in the literature. See Houghton & Cuerdon, The Use of Active Carbon with Hydrazine in the Treatment of Boiler Feed Water, International Water Conference, Bournemouth, England pp. 54-58 (1957) (Def. Ex. 16) (throughout the record the parties refer to these first two steps of the '492 Patent as the Houghton process).

The inventors of the '492 Patent, Ecolochem employees, analyzed the effluent from the Houghton process and determined that impurities were introduced by the process. Further analysis revealed a variety of ionic contaminants which the inventors concluded leached from the activated carbon.³ Ecolochem experimented with a mixed bed ion exchange resin⁴ downstream from the Houghton process in an effort to remove the ionic contaminants. The addition of the mixed bed resin achieved the desired result of removing the ionic contaminants. Ecolochem then tested the process on a larger commercial scale and decided to implement the process for commercial use. The entire apparatus was designed to be installed on a semi tractor-trailer so the process would be mobile and could be transported between cities as Ecolochem's deoxygenation services were needed.⁵

Ecolochem first used the process commercially in the summer of 1983, under a secrecy agreement, at Southern California Edison's San Onofre nuclear generating facility. Southern California Edison was very pleased with the quality of water supplied by Ecolochem's process, and it proved to be both commercially feasible and profitable.

On December 16, 1983, the inventors filed a patent application on the deoxygenation process. After being initially rejected, the '492 Patent was awarded on December 1, 1985.

Mobile Water has commercially marketed a deoxygenation process which it admits infringes claims one through six, eight, nine, fifteen and sixteen of the '492 Patent. Ecolochem commenced this suit to enjoin the infringement and recover damages for past infringement. Mobile Water defends its activity, alleging the '492 Patent is invalid on the basis of anticipation and obviousness.

II. THE VALIDITY OF THE '492 PATENT.

Ecolochem enjoys a presumption of validity in its patent. 35 U.S.C. § 282. The burden of proving invalidity rests on the challenger, Mobile Water, and that burden is one of clear and convincing evidence. Id.; Medtronic, Inc. v. Intermedics, Inc., 799 F.2d 734, 741 (Fed.Cir.1986), cert. denied, ___ U.S. ___, 107 S.Ct. 882, 93 L.Ed.2d 836 (1987). In determining whether the challenger has met its burden, it is not the duty of this court to assume the role of "Super Patent Examiner" and determine whether the judge personally thinks the invention should or should not have been patented. Markey, On Simplifying Patent Trials, 116 F.R.D. 369, 375-76 (1987). Rather, it is the court's obligation to determine whether Mobile Water has carried its burden of clear and convincing proof of invalidity either by anticipation or obviousness.

A. ANTICIPATION. A patent is invalid if "the invention was ... described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent...." 35 U.S.C. § 102(a). Appearance in a prior publication is termed anticipation. "Anticipation requires the disclosure in a single prior art reference of each element of the claim under consideration." W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed.Cir.1983), cert. denied, 469 U.S. 851, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984). Mobile Water points to three prior art references as being anticipatory. The court will discuss each seriatim.

1. The Martinola Article. In an article aimed at promoting a deoxygenation process utilizing hydrogen gas and palladium as a catalyst, deoxygenation with hydrazine was discussed in a section devoted to cost comparison of three methods of deoxygenation. Martinola, et al., "Saving Energy by Catalytic Reduction of Oxygen in Feedwater" in Proceedings 41st International Water Conference, Engineering Society of Western Pennsylvania, 77-83 (1980) (Def. Ex. No. 45). The Martinola article states, "When applying activated carbon as a catalyst in the removal of oxygen with hydrazine at ambient temperatures it has to be taken into account that the carbon releases salts into the demineralized water." Id. at 81. On the following page the authors diagram several applications including the following:

Id. at 82.

Mobile Water argues that this diagram refers back to the prior discussion of carbon catalyzed hydrazine deoxygenation. Thus, every aspect of the '492 Patent would be anticipated because it includes the passage of the effluent from the carbon catalyst through a mixed bed resin to remove ionic impurities. The court concludes otherwise.

The diagram found on page 82 of the Martinola article is under the bold-faced heading "Application of oxygen reduction in water with hydrogen." Id. at 81 (emphasis supplied). Thus, the diagram refers to applications of the process the authors are trying to promote — the palladium/hydrogen catalysis — and not the hydrazine process which is discussed in a separate section. This conclusion is buttressed by the fact that the palladium/hydrogen process may also release ionic impurities into the effluent, see id. at 79 ("traces of chlorides or other ions may be released"), thus necessitating a downstream ion exchange resin when high purity deoxygenated water is required.⁶ Nothing in the Martinola reference expressly teaches the use of a mixed bed ion exchange resin following the hydrazine/carbon process. Accordingly, the court finds that the Martinola article is not anticipatory. See Akzo N.V. v. U.S. International Trade Commission, 808 F.2d 1471, 1479 (Fed.Cir.1986) (anticipation is a question of fact), cert. denied, ___ U.S. ___, 107 S.Ct. 2490, 96 L.Ed.2d 382 (1987).

2. The Bechtel Publication. Mobile Water also argues that a tome put out by the Bechtel Group in 1982 anticipates the claims of the '492 Patent. Bechtel Group, Inc., Guide to the Design of Secondary Systems and Their Components to Minimize Oxygen Induced Corrosion (1982) (Def. Ex. No. 4). Unremarkably, the Bechtel publication discloses the well-known process of catalyzing the oxygen-hydrazine reaction with activated carbon. Id. at 4-18 & 4-29. Thus, the inquiry is whether the publication teaches that mixed bed ion exchange should follow the carbon catalyzed reaction to remove ionic impurities leached from the activated carbon. The Bechtel publication does recommend testing if activated carbon is utilized as a catalyst because some contaminants may be released due to leaching. Id. at 4-30. No reference is made, however, to the nature of the...