EI DuPont de Nemours v. Phillips Petroleum

• Decision Date: 21 March 1989
• Docket Number: Civ. A. No. 81-508-JLL.
• Citation: 711 F. Supp. 1205
• Court: U.S. District Court — District of Delaware
• Parties: E.I. DuPONT de NEMOURS & COMPANY, Plaintiff, v. PHILLIPS PETROLEUM COMPANY, Phillips 66 Company, and Phillips Driscopipe, Inc., Defendants.

711 F. Supp. 1205

E.I. DuPONT de NEMOURS & COMPANY, Plaintiff, v. PHILLIPS PETROLEUM COMPANY, Phillips 66 Company, and Phillips Driscopipe, Inc., Defendants.

Civ. A. No. 81-508-JLL.

United States District Court, D. Delaware.

March 6, 1989.

Order on Consent March 21, 1989.

William O. La Motte, III of Morris, Nichols, Arsht & Tunnell, Wilmington, Del., and John O. Tramontine, Edward F. Mullowney, Glenn A. Ousterhout and Thomas J. Vetter of Fish & Neave, New York City, of counsel, for plaintiff.

C. Waggaman Berl, Jr., Wilmington, Del., and Harry J. Roper, George S. Bosy, Raymond N. Nimrod, and Steven R. Trybus of Neuman, Williams, Anderson & Olson, Chicago, Ill., Philip S. Beck and Philip C. Swain of Kirkland & Ellis, Chicago, Ill., of counsel, for defendants.

OPINION

LATCHUM, Senior District Judge.

I. INTRODUCTION

This patent infringement action is on remand from the Court Of Appeals for the Federal Circuit (the "Federal Circuit") in accordance with its June 15, 1988 opinion, E.I. duPont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430 (Fed.Cir.), cert. denied, ___ U.S. ___, 109 S.Ct. 542, 102 L.Ed.2d 572 (1988). The Federal Circuit affirmed in part, reversed in part, and vacated in part this Court's judgment after trial which held that Claims 1, 2, 5, 10, 12 and 14 of the patent in suit, U.S. Serial No. 4,076,698 (the "'698" patent), were not proved invalid and were infringed.¹

The case has been remanded for reconsideration of the validity and infringement of Claims 1 and 12 of the '698 patent. More particularly, this Court must now consider whether defendant ("Phillips")² has proved that Claims 1 and 12 as defined by the Federal Circuit are invalid, and if not whether plaintiff ("DuPont") has proved infringement by Phillips of Claims 1 and 12 as defined on remand.

II. THE FEDERAL CIRCUIT'S OPINION

The '698 patent relates, generally, to copolymers of ethylene and higher alpha-olefins.³ This Court previously held that Phillips had not made out its defense of invalidity, and had infringed Claims 1, 2, 5, 10, 12 and 14 of the patent by making and selling approximately 80 copolymer resins or products made from the resins. See DuPont, 656 F.Supp. at 1392.

On appeal the Federal Circuit held that it was legal error for this Court to have interpreted the claims of the patent to include two limitations which were disclosed in the specification but not expressly written into the claims. DuPont, 849 F.2d at 1434. The two improperly included limitations were "superior environmental stress crack resistance" and "superior impact strength." Id. at 1433. Interpreting the claims without these limitations, the Federal Circuit held that Claims 2, 5, 10 and 14 were invalid as anticipated under 35 U.S.C. § 102(g) ("§ 102(g)"), because DuPont conceded at trial that certain copolymers made by Phillips in this country before the date of DuPont's invention (the "Witt and Leatherman products") satisfied the remaining limitations of those claims. Id. & n. 3.

However, the Federal Circuit concluded that Claims 1 and 12 each had a limitation which DuPont did not concede was satisfied by the Witt and Leatherman products. Id. at 1434. Therefore, Claims 1 and 12 were remanded with instructions for this Court to address their validity and infringement without the improperly included limitations. Id.

A. Validity of Claims 1 and 12

The Federal Circuit ruled that to find anticipation of Claims 1 and 12 under § 102(g), this Court must determine that Phillips has proved by clear and convincing evidence that the Witt and Leatherman products satisfied the express limitations of Claims 1 and 12 which were not conceded by DuPont. Id. at 1435. The express limitations which were not conceded are "an Elmendorf tear strength in the range of 150 to 400 grams per mil," ("Elmendorf tear strength") in Claim 1, and impact strength in terms of "hoop stress of 750 psi" at 60°C. for 3000 hours ("hoop stress resistance") in Claim 12. Id. at 1434-35.⁴

The Federal Circuit also found that it was improper for this Court to have not considered certain notebook data presented at trial on the issue of anticipation under § 102(g). Id. Therefore, on remand Phillips is entitled to rely on the Witt and Leatherman U.S. and foreign patent applications, as well as the notebook data it presented at trial. Id. It need not prove that Witt and Leatherman were aware that their products possessed the properties embodied by the limitations of Claims 1 and 12. Id.

The Federal Circuit also concluded that it was appropriate for this Court to reassess the nonobviousness of Claims 1 and 12 under 35 U.S.C. § 103 ("§ 103") without the improperly included limitations, and provided guidance with respect to the "scope and content of prior art." Id. The Federal Circuit held that the prior work of another under § 102(g), except as qualified by § 103 with respect to certain commonly owned subject matter,⁵ can be used as § 103 prior art so long as it has not been abandoned, suppressed, or concealed. Id. at 1436-37. However, the Federal Circuit apparently concluded that DuPont conceded that the Witt and Leatherman products were not abandoned, suppressed or concealed. Id. at 1436-37 n. 5. Therefore, the Witt and Leatherman products will be considered as § 103 prior art on remand.

B. Infringement of Claims 1 and 12

The Federal Circuit has directed this Court to ascertain the meaning of a density of "0.95" and a crystallinity of "70%" as these terms are used in Claims 1 and 12, and if necessary then to reassess infringement of Claims 1 and 12. Id. at 1439.⁶ The Federal Circuit concluded that it appeared that this Court had disregarded statements made by DuPont during prosecution of the patent when interpreting the claims. Id. Therefore, the prosecution history of the patent, including arguments made during reissue/reexamination proceedings, are to be considered relevant in determining the meaning of the terms at issue on remand. Id. at 1438-39. Noted, particularly, were statements made by DuPont during prosecution of the '698 patent that certain densities and crystallinities were not within the claims. Id.⁷

If, in light of the prosecution history this Court decides to redefine density as 0.950 and crystallinity as 70% without variance, infringement must be reassessed under the doctrine of equivalents for the Phillips products having a density over 0.950 or a crystallinity over 70%. Id. at 1439.⁸

III. MOTION BY PHILLIPS ON REMAND

After some maneuvering by the parties,⁹ this Court entered an order on November 7, 1988, concluding that the matters to be determined on remand could be performed properly from the present trial record taking into account all exhibits introduced and testimony presented at trial. (Docket Item "D.I." 302.) Notwithstanding this order, on December 7, 1988, Phillips moved for summary judgment on the invalidity of Claims 1 and 12, or in the alternative, for this Court to reopen the record and take certain additional evidence directed to the invalidity of Claims 1 and 12. (D.I. 305.) The Court will address this motion before turning squarely to the matters remanded.

A. Summary Judgment

Phillips has moved for summary judgment under Rule 56, Fed.R.Civ.P., on the invalidity of Claims 1 and 12. (D.I. 305.) However, determination of whether Phillips has carried its burden of proving the invalidity of Claims 1 and 12 requires this Court to make further factual findings from the record. See DuPont, 849 F.2d at 1435, 1436.¹⁰ These findings will not be made on a motion for summary judgment. See DeLong Corp. v. Raymond Int'l, Inc., 622 F.2d 1135, 1138 n. 2 (3d Cir.1980); Florham Park Chevron, Inc. v. Chevron U.S.A., Inc., 680 F.Supp. 159, 161 (D.N.J. 1988); see also Shipley v. First Federal Savings & Loan Ass'n, 703 F.Supp. 1122, 1125 (D.Del.1988). Therefore, Phillips' motion for summary judgment will be denied.

B. Reopen the Record

As an alternative to summary judgment, Phillips has moved for this Court to reopen the record so that it may introduce additional evidence on the issue of whether the Witt and Leatherman products satisfied the limitations of Claims 1 and 12. (D.I. 305.) The evidence consists of three affidavits which Phillips asserts "report reproductions of the Witt and Leatherman ethylene-hexene copolymers" and evaluations of the reproductions. (D.I. 306 at 2.) Phillips argues that admission of this evidence is required by the Federal Circuit's mandate in this case, and by the controlling authorities. (D.I. 306 at 8.)

This Court reads neither the Federal Circuit's mandate nor controlling authority as requiring the record to be reopened in this case.¹¹ While the Federal Circuit did rule that Phillips can rely on the notebook data presented at trial, DuPont, 849 F.2d at 1436, it did not direct this Court to take additional evidence.¹² The Federal Circuit's failure to specifically direct the taking of additional evidence can, "at most," be construed as leaving the matter to the sound discretion of this Court. Skehan v. Board of Trustees of Bloomsburg State College, 590 F.2d 470, 478 (3d Cir.1978), cert. denied, 444 U.S. 832, 100 S.Ct. 61, 62 L.Ed.2d 41 (1979); accord Hartford Accident and Indemnity Co. v. Gulf Ins. Co., 837 F.2d 767, 773 (7th Cir.1988); see also Adelson v. United States, 782 F.2d 1010, 1012 (Fed.Cir.1986); Noble v. National Mines Corp., 774 F.2d 144, 149 (6th Cir. 1985); Air Et Chaleur, S.A. v. Janeway, 757 F.2d 489, 495 (2d Cir.1985); Spring Mills, Inc. v. Ultracashmere House, Ltd., 724 F.2d 352, 355 (2d Cir.1983); Pittsburgh Press Club v. United States, 579 F.2d 751, 755 (3d Cir.1978); Rochez Bros., Inc. v. Rhoades, 527 F.2d 891, 894 n. 6 (3d Cir. 1975), cert. denied, 425 U.S. 993, 96 S.Ct. 2205, 48 L.Ed.2d 817 (1976). Cf. Littlejohn v. BIC Corp., 851 F.2d 673, 686 (3d Cir. 1988) (whether to reopen discovery on remand is within trial court's discretion).

The Third Circuit has enumerated three factors which should concern ...