Hilton Davis Chemical Co. v. Warner-Jenkinson Co., Inc., WARNER-JENKINSON

• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
• Writing for the Court: R. William Ide, III, President, American Bar Ass'n, Chicago, IL, was on the brief, for amicus curiae, American Bar Ass'n. Of counsel were Douglas W. Wyatt, Stanley L. Amberg, Tom Arnold, Frederick J. Dorchak, Donald R. Dunner; Before ARCHER; PER CURI
• Citation: 62 F.3d 1512,35 USPQ2d 1641
• Decision Date: 08 August 1995
• Docket Number: No. 93-1088,WARNER-JENKINSON
• Parties: , 35 U.S.P.Q.2d 1641 HILTON DAVIS CHEMICAL CO., Plaintiff-Appellee, v.COMPANY, INC., Defendant-Appellant.

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62 F.3d 1512 64 USLW 2109, 35 U.S.P.Q.2d 1641 HILTON DAVIS CHEMICAL CO., Plaintiff-Appellee,
v.
WARNER-JENKINSON COMPANY, INC., Defendant-Appellant. No. 93-1088. United States Court of Appeals,
Federal Circuit. Aug. 8, 1995.

Page 1514

David E. Schmit, Frost & Jacobs, Cincinnati, OH, argued, for plaintiff-appellee. Of counsel were Martin J. Miller and Jayadeep R. Deshmukh.

J. Robert Chambers, Wood, Herron & Evans, Cincinnati, OH, argued, for defendant-appellant.

Roger W. Parkhurst, Parkhurst, Wendel & Rossi, Alexandria, VA, Harold C. Wegner, Wegner, Cantor, Mueller & Player, Washington, DC, Nancy J. Linck, Cushman, Darby & Cushman, Washington, DC, Kenneth E. Krosin, Lowe, Price, LeBlanc & Becker, Alexandria, VA, and Gary L. Newtson, President, American Intellectual Property Law Ass'n, Arlington, VA, were on the brief, for amicus curiae, American Intellectual Property Law Ass'n.

Stanley L. Amberg, Davis Hoxie Faithfull & Hapgood, New York City, was on the brief, for amicus curiae, Stanley L. Amberg.

Donald Chisum, Morrison & Foerster, Seattle, WA, and William Alsup, Morrison & Foerster, San Francisco, CA, were on the brief, for amicus curiae, Acuson Corp.

R. Carl Moy, Asst. Professor, William Mitchell College of Law, St. Paul, MN, and Roy E. Hofer, President, Federal Circuit Bar Ass'n, of Washington, DC, were on the brief, for amicus curiae, Federal Circuit Bar Ass'n.

R. William Ide, III, President, American Bar Ass'n, Chicago, IL, was on the brief, for amicus curiae, American Bar Ass'n. Of counsel were Douglas W. Wyatt, Stanley L. Amberg, Tom Arnold, Frederick J. Dorchak, Donald R. Dunner, J. Michael Jakes, Joseph R. Re, William C. Rooklidge and Harrie R. Samaras.

Edmund J. Sease, Zarley, McKee, Thomte, Voorhees & Sease, Des Moines, IA, was on the brief, for amicus curiae, Iowa State Bar Ass'n.

Timothy B. Dyk, Jones, Day, Reavis & Pogue, Washington, DC, was on the brief, for amicus curiae, California Ass'n for the Advancement of Technology and Invention.

Michael F. Heim and Leslie V. Payne, Conley, Rose & Tayon, Houston, TX, were on the brief, for amicus curiae, The Houston Intellectual Property Law Ass'n. Also on the brief was Jeffrey W. Tayon, President, Houston Intellectual Property Law Ass'n, Houston, TX, of counsel.

Donald J. Harrington and Frank A. Angileri, Brooks & Kushman, P.C., Southfield, MI, were on the brief, for amicus curiae, Intellectual Property Law Institute.

Before ARCHER, Chief Judge, ^* RICH, Circuit Judge, COWEN, Senior Circuit Judge, NIES, NEWMAN, MAYER, MICHEL, PLAGER, LOURIE, CLEVENGER, RADER, and SCHALL, Circuit Judges. ^**

Opinion of the court filed PER CURIAM. Concurring opinion filed by Circuit Judge NEWMAN. Dissenting opinion filed by Circuit Judge PLAGER, in which Chief Judge ARCHER and Circuit Judges RICH and LOURIE join. Dissenting opinion filed by Circuit Judge LOURIE, in which Circuit Judges RICH and PLAGER join. Dissenting opinion filed by Circuit Judge NIES, in which Chief Judge ARCHER joins in part.

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PER CURIAM.

Hilton Davis Chemical Co. sued Warner-Jenkinson Co., Inc. for infringement of U.S. Patent No. 4,560,746 (the '746 patent). The jury found that the '746 patent was not invalid and that Warner-Jenkinson infringed under the doctrine of equivalents. The trial court entered judgment on the jury verdict. Hilton Davis Chem. Co. v. Warner-Jenkinson Co., No. C-1-91-218 (S.D.Ohio June 22, 1992). Because substantial evidence supports the jury verdict of infringement, the court en banc affirms. ¹

BACKGROUND

Hilton Davis and Warner-Jenkinson manufacture dyes, including FD & C (food, drug, and cosmetic) Red Dye # 40 and Yellow Dye # 6. The process of making these dyes yields impurities as byproducts. Manufacturers must remove these impurities from the dyes to meet stringent governmental requirements for food and drug purity. Historically, Hilton Davis and Warner-Jenkinson used an expensive and wasteful process known as "salting out" to purify the dyes. The '746 patent, assigned to Hilton Davis, discloses an improved purification process that replaces salting out with "ultrafiltration." Ultrafiltration uses osmosis to separate components of a solution by drawing some of the components, but not others, through a membrane. Thus, the '746 process filters impure dye solution through a membrane at certain pressures, pHs, and pore diameters. Impurities, but not dye molecules, pass through the membrane, leaving a high purity dye product.

Hilton Davis began its search for an alternative to the salting out process in 1982. The co-inventors of the '746 process, Drs. Cook and Rebhahn, led this project for Hilton Davis. The inventors decided to investigate a membrane separation process. Dr. Cook then hired Osmonics, Inc., a filtration equipment manufacturer, to test the process on a Hilton Davis Red Dye # 40 solution which had been disclosed to Osmonics under a secrecy agreement. The first test, in August 1982, did not succeed. Dr. Cook then instructed Osmonics to perform a second Red Dye # 40 test with specified changes in the test membrane and filtration procedures. This second test, in October 1982, succeeded. Osmonics successfully purified Hilton Davis Yellow Dye # 6 under Dr. Cook's instructions in January 1983.

The inventors filed their initial patent application based on the October 1982 and January 1983 test results. After further in-house testing by Dr. Cook, the inventors filed a continuation-in-part application claiming a broader range of membrane pore sizes. The '746 patent issued in 1985.

The '746 patent claims a process for purifying commercial dyes including Red Dye # 40 and Yellow Dye # 6. Claim 1, the only independent claim at issue, appears in Jepson form. See In re Jepson, 1917 C.D. 62, 243 O.G. 525 (Ass't Comm'r Patents 1917). Claim 1 recites:

In a process for the purification of a dye selected from [a group including Red Dye # 40 and Yellow Dye # 6] ... the improvement which comprises: subjecting an aqueous solution ... to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approximately 200 to 400 p.s.i.g., at a pH from approximately 6.0 to 9.0, to thereby cause separation of said impurities from said dye, said impurities of a molecular size smaller than the nominal pore diameter passing [through] said membrane and said dye remaining in the concentrate, and when substantially all said impurities have been removed from said concentrate ... recovering said dye, in approximately 90% purity from said concentrate by evaporation of said concentrate to dryness.

(Emphasis added.) The inventors added the phrase "at a pH from approximately 6.0 to 9.0" during prosecution to distinguish U.S.

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Patent 4,189,380 to Booth et al. (the Booth patent). The Booth patent discloses an ultrafiltration process that, among other differences from the '746 process, operates at a pH above 9 and preferably between 11 and 13.

Warner-Jenkinson developed its accused ultrafiltration process for Red Dye # 40 and Yellow Dye # 6 in 1986. Like the '746 process, Warner-Jenkinson's accused process included ultrafiltration through a membrane. At trial, Hilton Davis showed that Warner-Jenkinson's process operated at pressures somewhere in a range of 200 to nearly 500 p.s.i.g. and a pH of 5. While Hilton Davis did not present actual pore size measurements for Warner-Jenkinson's membrane, several experts testified that a membrane collecting Red Dye # 40 and Yellow Dye # 6 would have a nominal pore diameter of 5 to 15 Angstroms.

In 1982, Warner-Jenkinson had tested a membrane separation process on a dye solution that had already been salted out. Warner-Jenkinson, like Hilton Davis, hired Osmonics under a secrecy agreement to perform its test. Osmonics performed the Warner-Jenkinson test in August 1982, one week before it performed the first Hilton Davis test. The Warner-Jenkinson test was not successful, however, because it did not produce a sufficiently pure dye. After the unsuccessful test, Warner-Jenkinson ceased work on filtration of Red Dye # 40 and Yellow Dye # 6 until 1986.

Warner-Jenkinson did not learn of the '746 patent until October 1986, after it had begun commercial use of its ultrafiltration process to purify Red Dye # 40. Hilton Davis learned of Warner-Jenkinson's process in 1989 and sued Warner-Jenkinson for patent infringement in 1991.

After considering extensive evidence offered over nine days, the jury found that the '746 patent was not invalid and that Warner-Jenkinson infringed under the doctrine of equivalents. The jury found that Warner-Jenkinson did not willfully infringe, however, and awarded only 20% of Hilton Davis' request in damages. The district court then denied Warner-Jenkinson's post-trial motions, and entered a permanent injunction prohibiting Warner-Jenkinson from practicing ultrafiltration except at pressures above 500 p.s.i.g. and pHs above 9.01.

Warner-Jenkinson appealed the infringement and validity findings. After a panel of this court heard oral argument on July 9, 1993, the court en banc decided to rehear the appeal to consider the important issues raised concerning the doctrine of equivalents. This court asked the parties to brief three questions:

1. Does a finding of infringement under the doctrine of equivalents require anything in addition to proof of the facts that there are the same or substantially the same (a) function, (b) way, and (c) result, the so-called triple identity test of Graver Tank [ & Manufacturing Co.] v. Linde Air Products Co., 339 U.S. 605 [70 S.Ct. 854, 94 L.Ed. 1097] (1950), and cases relied on therein? If yes, what?

2. Is the issue of infringement under the doctrine of equivalents an equitable remedy to be decided by the court, or is it, like literal infringement, an issue of fact to be submitted to the jury in a jury case?

3. Is application of the doctrine of equivalents by the trial court to find infringement of...