Exxon Chemical Patents, Inc. v. Lubrizol Corp., s. 93-1275

• Decision Date: 01 September 1995
• Docket Number: 94-1309,Nos. 93-1275,s. 93-1275
• Citation: 35 USPQ2d 1801,64 F.3d 1553
• Parties: EXXON CHEMICAL PATENTS, INC., Exxon Corporation and Exxon Research and Engineering Co., Plaintiffs-Appellees, v. LUBRIZOL CORPORATION, Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1553

64 F.3d 1553

35 U.S.P.Q.2d 1801

EXXON CHEMICAL PATENTS, INC., Exxon Corporation and Exxon

Research and Engineering Co., Plaintiffs-Appellees, v. LUBRIZOL CORPORATION, Defendant-Appellant.

Nos. 93-1275, 94-1309.

United States Court of Appeals, Federal Circuit.

Sept. 1, 1995.

William C. Slusser, Baker & Botts, L.L.P., Houston, Texas, and Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C., argued for plaintiffs-appellees. With them on the brief were Lawrence F. Scinto, Hugh C. Barrett, Fitzpatrick, Cella, Harper & Scinto, New York, New York, Thomas Gibbs Gee, Lee L. Kaplan, and David Hricik, Baker & Botts, L.L.P., Houston, Texas, and George E. Glober, Jr., Exxon Chemical Co., Houston, Texas and Allen M. Sokal, Finnegan, Henderson, Farabow & Garrett, Washington, D.C.

S. Leslie Misrock, Pennie & Edmonds, New York, New York, and Timothy B. Dyk, Jones, Day, Reavis & Pogue, Washington, D.C., argued for defendant-appellant. With them on the brief were George J. Moscarino, John W. Edwards, II, Jones, Day, Reavis & Pogue, Cleveland, Ohio, Stanton T. Lawrence, III, Paul J. Zegger, Pennie & Edmonds, New York, New York, and Kenneth R. Adamo, Jones, Day, Reavis & Pogue, Dallas, Texas.

Before NIES, PLAGER, and CLEVENGER, Circuit Judges.

CLEVENGER, Circuit Judge.

Lubrizol Corporation (Lubrizol) appeals the February 5, 1993 judgment of the United States District Court for the Southern District of Texas, Houston Division, inter alia holding that U.S. Patent No. 4,867,890 assigned to Exxon Chemical Patents, Inc. (Exxon) is not invalid under 35 U.S.C. Sec. 102 or Sec. 103 (1988) and is enforceable, and that Lubrizol willfully infringed the claims of the '890 patent. We reverse the judgment of infringement. ¹ We vacate the award of attorneys' fees and costs to Exxon, the injunction entered against Lubrizol, and the damage award entered on February 15, 1994.

I

After extensive discovery, this patent infringement case was tried to a jury. Following the jury's verdict of willful infringement, the judge concluded that the case was exceptional under 35 U.S.C. Sec. 285 (1988) and awarded Exxon its attorneys' fees and costs. Lubrizol's post trial motion for judgment as a matter of law or for a new trial was denied by the judge, and Lubrizol timely brought this appeal. We have jurisdiction under 28 U.S.C. Sec. 1295(a)(1) (1988).

The central issue in this appeal is claim interpretation. Exxon's claims are to a lubricating oil composition suitable for use as a crankcase lubricant in internal combustion engines. The claimed composition is defined as comprising--meaning containing at least--five specific ingredients. Exxon contends that its patent claims a "recipe" of ingredients that extends to any product made by using the claimed ingredients, even if the product itself--as a result of chemical complexing--fails to include one of the claimed ingredients. Lubrizol argues that since Exxon claims a composition product--not a process for making a product or a product made by a claimed process--the '890 patent only extends to final products that include the specified claimed ingredients.

The trial judge, candidly expressing considerable difficulty in understanding the chemistry and law involved in the case, treated the issue of claim interpretation as a matter of deciding which of the two parties offered the correct meaning of the claims. The jury was charged according to Exxon's preferred claim interpretation.

The duty of the trial judge is to determine the meaning of the claims at issue, and to instruct the jury accordingly. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970 (Fed.Cir.1995). In the exercise of that duty, the trial judge has an independent obligation to determine the meaning of the claims, notwithstanding the views asserted by the adversary parties. The pursuit of that obligation in this case would have resulted in a determination that Exxon's preferred claim interpretation is incorrect, and that Lubrizol's is only partly correct. As we explain below, under a jury charge stating the correct interpretation of the claims, no jury could reasonably have found--on the evidence submitted by Exxon--that Lubrizol's accused products literally infringe Exxon's claims. Because of Exxon's failure of proof, Lubrizol is entitled to judgment as a matter of law. See Zenith Labs., Inc. v. Bristol-Myers Squibb Co., 19 F.3d 1418, 1424, 30 USPQ2d 1285, 1290 (Fed.Cir.1994). Accordingly, we reverse the final judgment on liability entered on the jury verdict and vacate the order awarding attorneys' fees and costs and the injunction entered against Lubrizol. The judgment of the District Court which is the subject of Lubrizol's companion appeal challenging the award of damages is vacated. ²

II

Exxon and Lubrizol manufacture crankcase lubricating oil compositions and concentrate compositions which are mixed with oil basestock to produce lubricating oils for motor vehicle engines. Such products typically contain the following components as additives: (1) a dispersant, which suspends impurities to prevent sludge and varnish deposits on engine parts, (2) ZDDP, a zinc-containing compound that inhibits engine wear and produces antioxidant results for the oil, (3) a detergent, which helps prevent engine deposits, and (4) a supplemental antioxidant, necessary because use of ZDDP is limited by environmental concerns. Oxidation of the oil component substantially shortens the life of lubricating oils. Oxidation results in increased acidity of the lubricant, which can enhance corrosion of engine parts and increase viscosity of the product, thereby degrading its lubricant qualities.

Exxon's '890 patent seeks enhanced antioxidant results by the addition of a small amount of copper as the supplemental antioxidant to the other typical ingredients of the product. The prosecution history of Exxon's patent emphasized the beneficial synergistic effects caused by the added copper when in the presence of an ashless dispersant.

III

We have recently concluded in banc that claim interpretation is a matter of law, and that the trial judge alone has the duty and responsibility to interpret the claims at issue. Markman, 52 F.3d at 970. After close of the evidence in this case, the judge heard argument from the parties on the meaning of Exxon's claims. During that argument, Lubrizol argued that the meaning of the claims should be left to the jury for decision, if the court failed to agree with Lubrizol's preferred claim interpretation. The judge correctly refused to submit the issue to the jury, and instead decided which of the two proffered interpretations seemed most correct. It may well be that in some cases one side or the other will offer the correct claim interpretation to the judge. More often, however, it is likely that the adversaries will offer claim interpretations arguably consistent with the claims, the specification and the prosecution history that produce victory for their side. In any event, the judge's task is not to decide which of the adversaries is correct. Instead the judge must independently assess the claims, the specification, and if necessary the prosecution history, and relevant extrinsic evidence, and declare the meaning of the claims. No matter when or how a judge performs the Markman task, on appeal we review the issue of claim interpretation independently without deference to the trial judge.

IV

Representative of the claims of the '890 patent, claim 1 is directed to "[a] lubricating oil composition suitable as a crankcase lubricant in internal combustion engines comprising" (1) a major amount of lubricating oil, (2) an ashless dispersant (i.e. one that neither contains nor is complexed with metal) in specified amounts of "about 1 to 10 wt. %", (3) from about 0.01 to 5.0 parts by weight of oil soluble ZDDP, (4) 5 to 500 parts per million by weight of added copper in the form of an oil soluable copper compound, and (5) magnesium or calcium detergent. ³

The subject of claim interpretation was argued to the judge at the close of Exxon's case and was considered again in extensive argument at the close of all the evidence. At the conclusion of the arguments, the judge decided that Exxon was correct in its view of the claims' meaning. The parties did not contend that the claims of the '890 patent are process claims drawn to a specified manner of manufacture, and the claims as written could not have such meaning. Nor are the claims said to be, or could they be, product-by-process claims. The claims of the '890 patent are drawn to a particular composition: they are product claims. According to Exxon, its claims cover any product that is made by using the specific ingredients identified in the limitations of claim 1. ⁴ During the trial, Exxon's claims were thus said to be to a "recipe" for making the composition. Whether the specified ingredients could be found in the actual composition produced by mixing the ingredients is, according to Exxon, simply irrelevant to the meaning of the claims. To emphasize this point, Exxon's counsel stated--both to the trial judge and this court--that Exxon's claims will cover a composition that has the added copper regardless of whether any ashless dispersant can be found in the mixture. In short, in Exxon's view the claimed "recipe" for making the claimed product is the claimed product.

The trial judge charged the jury accordingly:

I instruct you that Exxon's claims cover the ingredients which go into the composition. If you find that Exxon has proved that a Lubrizol product is made by using the starting ingredients in the amounts called for in one or more of Exxon's claims, then that product directly infringes.

The issue of claim interpretation had been raised first by Lubrizol in its motion for a directed verdict at the close of Exxon's case, which the judge denied. The issue was raised again by Lubrizol's motion for judgment as a matter of law at the close...