Hoechst Celanese Corp. v. BP Chemicals Ltd.

• Decision Date: 24 February 1994
• Docket Number: Civ. A. No. G-92-499.
• Citation: 844 F. Supp. 336
• Parties: HOECHST CELANESE CORPORATION and Hoechst Celanese Chemical Group Inc. v. BP CHEMICALS LIMITED.
• Court: U.S. District Court — Southern District of Texas

844 F. Supp. 336

HOECHST CELANESE CORPORATION and Hoechst Celanese Chemical Group Inc. v. BP CHEMICALS LIMITED.

Civ. A. No. G-92-499.

United States District Court, S.D. Texas, Galveston Division.

February 24, 1994.

COPYRIGHT MATERIAL OMITTED

John F. Lynch, Arnold White & Durkee, Houston, TX, for plaintiff.

Edward J. Patterson, Jr., Robert Stevens De Lange, Royston Rayzor Vickery & Williams, Galveston, TX, for defendant.

ORDER ON MOTIONS FOR SUMMARY JUDGMENT

KENT, District Judge.

The Plaintiffs (collectively, "Celanese") brought this suit for a declaration that their operations for the production of acetic acid do not infringe United States Patent No. 5,003,104 ("the '104 patent"). The '104 patent is owned by Defendant BP Chemicals ("BP"). BP has counterclaimed for infringement, seeking over $180,000,000 in damages. Before the Court are Celanese's motions for summary judgment on the grounds that (1) the patent is invalid, and (2) they are licensed to use the patent, and BP's motion to open and close the evidence at trial. The Court DENIES summary judgment based on the validity of the '104 patent, but GRANTS summary judgment based on Celanese's license, rendering all other issues of substantive liability and trial procedure MOOT.

I. Background

In 1975 Celanese entered a license agreement with the Monsanto Company, whereby Celanese acquired the right to use certain technical information in order to construct its Clear Lake City plant for the production of acetic acid. In general, the license granted Celanese the right to make acetic acid by carbonylating methanol with carbon monoxide in the presence of a rhodium and iodine catalyst system. In particular, Monsanto granted Celanese the right to use the processes claimed in various categories of patents and pending patent applications which Monsanto owned at the time of the agreement, in exchange for a royalty on acetic acid produced with those processes. There is no dispute that Celanese has paid the specified royalty on all of the acetic acid production relevant to this case.

In 1984, Celanese altered its technique for making acetic acid at the Clear Lake plant, adding a lithium iodide catalyst to the procedure. In 1986, BP purchased Monsanto's intellectual property rights related to acetic acid manufacture. BP filed the application for the '104 patent in 1988, claiming as an effective filing date the 1973 filing date of a patent application which had been assigned to Monsanto ("the '73 application"). The '104 patent issued in 1991, claiming patent rights over the same lithium iodide process that Celanese uses. BP now asserts, over Celanese's denial, that the patent is valid, that Celanese does not have a license to use the patent, and that Celanese's use of the lithium iodide process infringes the patent.

II. Validity

Although the Court finds Celanese's motion with respect to validity to be unsustainable, a detailed discussion of the issue is necessary in order to understand the Court's reasoning with respect to the license issue.

By the 1988 filing date of the '104 patent, the relevant processes claimed therein were definitively anticipated under 35 U.S.C. § 102. Accordingly, BP has conceded — by deposition testimony and through arguments to the United States Patent and Trademark Office—that the '104 patent is valid only if it can obtain the benefit of the filing date of Monsanto's '73 application. In order to do so, BP asserts here, as it did before the Patent Office, that the application for the relevant claims of the '104 patent constituted a continuation of the '73 application, through four intervening patent applications, under 35 U.S.C. § 120.

A. Pre-Dating the '104 Patent

Section 120 provides that a patent application obtains the benefit of the filing date of an earlier application by the inventor if the prior application sufficiently disclosed the invention now claimed, in the manner specified by the first paragraph of 35 U.S.C. § 112. Section 112 ¶ 1, in turn, provides:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains ... to make and use the same....

This paragraph imposes two distinct requirements for a patent application: a written description of the invention, and the more narrow "enablement" specifications. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed.Cir.1991). The "enablement" criteria, which teach one skilled in the art how to "make and use" the invention, are not at issue here. Rather, Celanese claims that the "written description" of the '73 application does not support the claims of the '104 patent.

The written description requirement under § 120 is clearly established: for the written description of an earlier "parent" application to support later claims, the parent's description must have reasonably conveyed to an artisan that the inventor had possession, at that time, of the later claimed invention. Id.; Wang Laboratories, Inc. v. Toshiba Corp., 993 F.2d 858, 865 (Fed.Cir.1993); Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed.Cir.1985).

Monsanto's '73 application described:

... an improved process for the production of carboxylic acid anhydrides by contacting carbon monoxide with an ether and/or an ester in the presence of a rhodium compound and a halogen component. The halogen component is iodine, bromine, an iodide compound or a bromide compound. The contacting is carried out under substantially anhydrous conditions....

The specification of the '73 application further describes alcohols as contaminants, which should be removed from the feed components to ensure successful use of the process, and teaches that "the reaction of this invention must be carried out under substantially anhydrous (water-free) conditions to maximize the production of the desired carboxylic anhydride product."

Claim 1 of the '104 patent claims:

a process for the carbonylation of a carbonylatable reactant selected from the group consisting of alkyl esters, dialkyl ethers, alkyl alcohols, and olefins by reacting same with carbon monoxide ... in the presence of a solution containing a rhodium compound and lithium iodide....

The '104 patent's other independent claim, Claim 9, differs from Claim 1 in that the suitable carbonylatable reactants are not specified, and methyl acetate is added to the solution. Claim 1 describes the process used by Celanese to make acetic acid: the carbonylation of an alcohol in the presence of rhodium and lithium iodide.

Superficially, at least, the '104 patent appears to claim an invention substantially different from that described in the '73 application. Unlike the '73 application, the '104 patent is not limited to the production of carboxylic acid anhydrides, and in fact covers the production of carboxylic acids, such as acetic acid. Claim 1 of the '104 patent adds alcohols (and olefins) as possible reactants, whereas alcohols were described as contaminants in the '73 application. Conversely, Claim 9 does not limit the type of reactant at all, while the '73 application described only esters and ethers. The '104 patent does not require anhydrous conditions for its optimal use, as did the '73 application; in fact, in Example 18 the '104 application describes the addition of water as beneficial for the production of acetic acid.

Nonetheless, the patent examiner presumptively concluded that one skilled in the art would have recognized that the '73 application clearly disclosed that Monsanto had invented those claims ultimately included in the '104 patent. Cf. Ralston Purina, 772 F.2d at 1573-74 (presumption of validity extends to compliance with § 112).

To support this conclusion, BP has offered the opinion of a distinguished chemist, Dr. F.A. Cotton. As to Claim 9, Dr. Cotton points out that all of the specific elements of Claim 9 are described in the '73 application. However, Dr. Cotton's analysis neglects to address the fact that the '73 application limits itself to esters and ethers as the carbonylatable reactants, and limits its function to the production of anhydrides, whereas Claim 9 permits the use of any reactant, for any type of carbonylation process. That Claim 9 is so broad as to encompass the process described in the '73 application does not mean that the application described the breadth of Claim 9. Rather, the Federal Circuit and its predecessor courts have repeatedly stated that, while the description of an invention using a given species may enable the practice of an invention using any of the genus to which that species belongs, it does not necessarily describe the broader invention. Vas-Cath, 935 F.2d at 1561-62. In fact, a parent application's disclosure of the use of a chemical species can even be prior art against a subsequent claim to the encompassing genus, while still not describing the genus so as to allow the later claim to assert the parent's filing date. Chester v. Miller, 906 F.2d 1574, 1577 (Fed.Cir.1990); In re Gosteli, 872 F.2d 1008 (Fed.Cir.1989); In re Lukach, 442 F.2d 967, 968-70 (C.C.P.A. 1971); see In re DiLeone, 436 F.2d 1033, 1034 (C.C.P.A.1971) (DiLeone I) (affirming rejection of claim encompassing broad chemical class, where specification described only a species); In re Ahlbrecht, 435 F.2d 908, 910-12 (C.C.P.A.1971) (affirming rejection of § 120 claim because later application described broader class of esters than that described in parent application); In re Ruscetta, 255 F.2d 687 (C.C.P.A.1958) (affirming rejection of § 120 claim because parent description of method of etching tantalum did not describe use of method with other metals of same class, even though such use would have been obvious to try).

Dr. Cotton's analysis of the '73 application with respect to Claim 1 also ignores the relevant legal test, confusing the description requirement for the...