Ecolochem, Inc. v. Southern California Edison Co.

• Decision Date: 01 September 1994
• Docket Number: No. CV 92-3436 RG (JGX).,CV 92-3436 RG (JGX).
• Citation: 863 F. Supp. 1165
• Court: U.S. District Court — Central District of California
• Parties: ECOLOCHEM, INC., Plaintiff, v. SOUTHERN CALIFORNIA EDISON COMPANY, Defendant.

863 F. Supp. 1165

ECOLOCHEM, INC., Plaintiff, v. SOUTHERN CALIFORNIA EDISON COMPANY, Defendant.

No. CV 92-3436 RG (JGX).

United States District Court, C.D. California.

September 1, 1994.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Lane, Aitken & McCann, Clifton E. McCann, Andrew C. Aitken, David D'Zurilla, Washington, DC, Bonne, Bridges, Mueller, O'Keefe & Nichols, Peter R. Osinoff, Los Angeles, CA, for plaintiff.

Gregory P. Stone, Ted G. Dane, Munger, Tolles & Olson, Los Angeles, CA, Russell C. Swartz, Douglas Ditonto, Law Dept., Southern California Edison Co., Rosemead, CA, for defendant Southern California Edison Co.

Memorandum and Order Regarding Edison's Motions for Summary Judgment

GADBOIS, District Judge.

In June 1992, Ecolochem, Inc. ("Ecolochem") sued Southern California Edison Company ("Edison") for patent infringement. Edison moved for partial summary judgment, arguing that it does not infringe as a matter of law, and that some of Ecolochem's claims are anticipated by, or obvious in light of, a prior publication.¹

I. Background

A. Ecolochem's Patents.

Ecolochem owns U.S. Patents No. 4,556,492 ('492 Patent) and No. 4,818,411 ('411 Patent). These patents describe similar deoxygenation processes which include:

adding hydrazine N2H4 to a liquid containing dissolved oxygen 02, passing the liquid through a bed of activated carbon to catalyze a reaction between the dissolved oxygen and hydrazine N2H4 + 02 - > 2H20 + N2 whereby carbon contaminants are added to the liquid, and removing the contaminants. In another embodiment, unreacted hydrazine that remains in the liquid following the catalysis is removed by passing the liquid through an ion exchange resin.

'492 Patent Abstract. Figure 1 illustrates the three main steps of this process.

The patents acknowledge that step 1, the use of hydrazine to eliminate oxygen, is not in and of itself new — "in prior art deoxygenation processes, hydrazine has been used as a strong reducing agent to prevent corrosion and other problems associated with oxygenated water." '411 patent, column 1. Step 2, using activated carbon as a catalyst, is not new either — "it is known that the reaction of hydrazine with dissolved oxygen can be catalyzed by passing the hydrazine and water mixture through a bed of activated carbon." Id.

According to Ecolochem, these two steps were imperfect, however:

one disadvantage of the catalyzed deoxygenation processes of the prior art arises from the introduction of impurities, such as unreacted hydrazine and carbon contaminants, into the deoxygenated liquid. In the process of removing dissolved oxygen, the prior art systems leave levels of unreacted hydrazine that cannot be tolerated when a liquid such as water is used in certain sophisticated equipment or for the production of refined products.

'411 columns 1-2. Thus, Ecolochem's patent claims a third step — passing the deoxygenated liquid through an ion exchange resin to remove carbon contaminants and excess hydrazine.

B. The Demmitt Reference.

In 1960, more than twenty years before the '492 and '411 applications were filed,² T.F. Demmitt wrote a report on a similar deoxygenation process, Preliminary Report on the Use of Activated Carbon As A Catalyst for the Dissolved Oxygen — Aqueous hydrazine Reaction (1960) ("Demmitt reference"). Demmitt was concerned that "the hydrazine/oxygen reaction proceeds rather slowly in low-temperature systems", and wondered whether activated carbon would hasten the process.

To determine if his experiment was a success, Demmitt measured the oxygen levels in the effluent using the Winkler method. However, because hydrazine interferes with this technique, Demmitt removed the hydrazine by adding a column of acid-regenerated cation resin. Although Demmitt did not discuss carbon contaminants, his cation resin removed at least some of them. Figure 2 shows Demmitt's experimental system in schematic form.

C. The Mobile Water Case.

In 1988, Ecolochem sued Mobile Water Technology Co. ("Mobile Water"), alleging that Mobile Water had infringed the '492 patent. Mobile Water countered that Ecolochem's invention was obvious, but did not, however, provide the court with the Demmitt reference. After a bench trial, Judge Henley found the '492 patent valid and non-obvious. Ecolochem, Inc. v. Mobile Water Technology Co., 690 F.Supp. 778 (E.D.Ark.1988), aff'd 871 F.2d 1096 (Fed.Cir.1989).

D. Edison's Process.

Defendant Southern California Edison Company ("Edison") runs the San Onofre Nuclear Generating Station ("SONGS"). SONGS contains three nuclear reactors, each of which contains two water circulation systems. The primary water circulation system removes heat from the nuclear reactor. The heat from the primary system boils water in a secondary system, turning it into steam. The steam rotates a turbine, which produces electricity. The steam then condenses and recirculate through the secondary system. Because the secondary system loses approximately 1% of its water each cycle, SONGS requires make-up water. Impurities in water circulated through the secondary system can damage steam generators, turbines, and pipes, however, so Edison passes the makeup water through the high-flow make-up demineralizer ("HFMUD"). HFMUD passes the make-up water through a strong acid cation resin bed, a predominantly weak base anion resin bed, an activated carbon bed, a second strong acid cation resin bed, a strong base anion bed, and, finally, a vacuum deareator. This process removes suspended, undissolved solids and dissolved impurities, including salt, mineral ions, organic chemicals, and oxygen.

Ecolochem maintains that Edison's HFMUD infringes '492 claims 1, 2, 5, 6, 7, 8, 9, 10, 15, 16, 17, and 18, and '411 claims 1, 3, 4, 7, 8, 9, 10, 11, 13, 15, 17, 20, and 21. On April 12, 1994, this Court held that the Demmitt reference anticipated '492 claims 1, 5, 6, 8, and 9, and '411 claim 21. Edison now seeks partial summary judgment of non-infringement and patent invalidity. This opinion amends this Court's previous order regarding anticipation, denies Edison's motion for summary judgment of non-infringement, and grants Edison's motion for summary judgment of invalidity due to obviousness.³

II. Analysis

A. Motion for Summary Judgment of Non-infringement

In a patent case, as in any other, summary judgment is appropriate where there are no genuine issues as to any material fact and the movant is entitled to judgment as a matter of law. Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575 (Fed.Cir.1994); Johnston v. IVAC Corp., 885 F.2d 1574, 1577 (Fed.Cir.1989); F.R.Civ.P. 56(c). To resolve a motion for summary judgment of non-infringement, courts must first determine the scope of the claims, a question of law. In re Donaldson Co., Inc., 16 F.3d 1189, 1192 (Fed. Cir.1994); Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1561 (Fed.Cir.1991); Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 1283 (Fed.Cir. 1986). Next, courts must determine whether any reasonable trier of fact could conclude that the accused process falls within the scope of the claims. SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1116 (Fed.Cir. 1985) (en banc). In doing so, "the district court must view the evidence in a light most favorable to the nonmovant and draw all reasonable inferences in its favor." Id.

1. CLAIM INTERPRETATION: "Deoxygenation Process".

Ecolochem's patents describe a "deoxygenation process." Edison contends that a deoxygenation process eliminates, not merely reduces, oxygen from a liquid, and that the patented process therefore requires more than a stoichiometric amount of hydrazine. Ecolochem disagrees, arguing that the claims do not require complete oxygen elimination, and thus do not require more than a stoichiometric amount of hydrazine. To determine which party is correct, this Court reviews (a) the words' ordinary meaning, (b) the patent specification, (c) the other claims, (d) the patent's file history, and (e) expert testimony. Although claim interpretation is a question of law, if "the meaning of a term of art in the claims is disputed and extrinsic evidence is needed to explain the meaning, construction of the claims could be left to a jury." McGill Inc. v. John Zink Co., 736 F.2d 666, 672 (Fed.Cir.), cert. denied, 469 U.S. 1037, 105 S.Ct. 514, 83 L.Ed.2d 404 (1984).

(a) Ordinary Meaning.

The words of a claim "will be given their ordinary and accustomed meaning, unless it appears that the inventor used them differently." Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 759 (Fed.Cir.1984) (quoting Universal Oil Products Co. v. Globe Oil & Refining Co., 137 F.2d 3, 6 (7th Cir.1943), aff'd, 322 U.S. 471, 64 S.Ct. 1110, 88 L.Ed. 1399 (1944). Ecolochem contends that the ordinary meaning of "deoxygenate" is "to remove oxygen," not necessarily to remove all oxygen. Webster's Ninth New Collegiate Dictionary (1990). Ecolochem's expert, James K. Rice, agrees, stating that "the term `deoxygenation process' as used in the water treatment industry would mean a process that removes a substantial amount of dissolved oxygen, not necessarily all of it." Rice Decl. ¶ 13. Citing Webster's, Edison argues that "remove" means "get rid of; eliminate" and thus necessarily implies complete elimination.

(b) Specification.

Courts often use the specification to help define the terms in the claims. Jonsson v. Stanley Works, 903 F.2d 812, 819 (Fed.Cir. 1990); D.M.I., Inc. v. Deere & Co., 755 F.2d 1570, 1574 n. 2 (Fed.Cir.1985); Tandon Corp. v. U.S. Int'l Trade Comm'n, 831 F.2d 1017, 1024 (Fed.Cir.1987); McGill, 736 F.2d at 674. Although the '411 and '492 specification do not explicitly define "deoxygenation process," several passages suggest that more than a stoichiometric amount of hydrazine is "needed" or "necessary" to practice the invention.⁴ See '492 patent col. 4:3-5 (emphasis added) (noting that it is "necessary ... to use enough hydrazine to completely react...