E.I. Du Pont De Nemours v. Macdermid Printing

• Decision Date: 14 May 2008
• Docket Number: No. 2007-1568.,2007-1568.
• Citation: 525 F.3d 1353
• Parties: E.I. DU PONT DE NEMOURS AND COMPANY, Plaintiff-Appellant, v. MacDERMID PRINTING SOLUTIONS, L.L.C., Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

525 F.3d 1353

E.I. DU PONT DE NEMOURS AND COMPANY, Plaintiff-Appellant, v. MacDERMID PRINTING SOLUTIONS, L.L.C., Defendant-Appellee.

No. 2007-1568.

United States Court of Appeals, Federal Circuit.

May 14, 2008.

Lindley J. Brenza, Bartlit Beck Herman Palenchar & Scott LLP, of Denver, CO, argued for plaintiff-appellant. With him on the brief was Allison Freedman, of Chicago, IL. Of counsel on the brief was John T. Gallagher, Morgan & Finnegan, LLP, of New York, NY. Of counsel was Richard D. Catenacci, Connell Foley LLP, of Roseland, NJ.

John R. Horvack, Jr., Carmody & Torrance LLP, of New Haven, CT, argued for defendant-appellee. With him on the brief was Fatima Lahnin.

Before MICHEL, Chief Judge, PROST, Circuit Judge, and POGUE,^* Judge.

MICHEL, Chief Judge.

E.I. du Pont de Nemours & Company ("DuPont") appeals from the district court's denial of its motion for preliminary injunction. Memorandum Opinion, E.I. du Pont de Nemours & Company v. MacDermid, Inc., Case No. 06-CV-3383 (MLC/TJB), 2007 WL 2332161 (D.N.J. Aug. 13, 2007) ("Preliminary Injunction Opinion"). We heard oral argument on April 9, 2008. We hold that the district court abused its discretion in finding that a substantial question as to validity existed because of uncertainty regarding the priority date. Because the district court did not reach the parties' remaining arguments as to validity and enforceability as well as the remaining preliminary injunction factors, we vacate and remand for the district court to consider these issues in light of the correct priority date.

I.

DuPont is the assignee of U.S. Patent No. 6,773,859 B2 ("the '859 patent"), titled "Process for Making a Flexographic Printing Plate and a Photosensitive Element for Use in the Process." The application for this patent was filed on February 27, 2002, and the patent issued on August 10, 2004. According to DuPont, its Cyrel FAST digital thermal technology is its commercial embodiment of the invention of the '859 patent.

In prosecuting the '859 patent, DuPont originally filed a provisional application on March 6, 2001, and on February 27, 2002, it filed a non-provisional application. The Application Data Sheet ("ADS") filed with the non-provisional application stated: "Continuity Data: This application is a non-provisional of provisional 60/273669 2001-03-06 WHICH IS PENDING." The patent as issued, however, did not reference the provisional application due to an oversight by the Patent and Trademark Office ("PTO"). After issuance, DuPont sought a certificate of correction pursuant to 35 U.S.C. § 254 to add a reference to the provisional application on the title page of the '859 patent. The PTO issued the Certificate of Correction on July 26, 2005, adding to the title page, "Related U.S. Application Data, Provisional application No. 60/273,669, filed on March 6, 2001."

In April 2006, DuPont sued MacDermid Inc. and MacDermid Printing Solutions, LLC ("MacDermid") in the District of Colorado for patent infringement, alleging that MacDermid's Magma, MLT, and Lava products infringed DuPont's '859 patent as well as another patent not at issue in this appeal.¹ In July 2006, the case was transferred from the District of Colorado to the District of New Jersey.

In October 2006, DuPont moved for a preliminary injunction, seeking to enjoin MacDermid from continuing to infringe claim 1 of the '859 patent. DuPont argued that MacDermid's MLT and Magma plates infringe claim 1 and that MacDermid induces infringement of claim 1 by encouraging customers to use its Lava system and MLT and Magma plates in an infringing manner. DuPont also argued that its patent is valid, noting the presumption of validity, evidence of commercial success, and MacDermid's offer to take a license. DuPont further argued that it had not committed inequitable conduct in prosecuting its patent.

In response, MacDermid raised a number of validity and enforceability challenges. Relevant to this appeal, MacDermid argued that the '859 patent was invalid under Section 102(b) because the invention was on sale or in public use before the critical date. According to MacDermid, that date was February 27, 2001, or one year before the filing date of the non-provisional application.

In reply, DuPont argued that MacDermid had not created a substantial question of validity based on the public use or on sale bars of Section 102(b). In particular, DuPont argued that MacDermid's evidence of sales prior to the critical date were actually of prior technology not claimed in the '859 patent (analog and not digital technology). DuPont also responded to MacDermid's other invalidity and unenforceability arguments. In support of its reply, DuPont filed witness declarations that either said that the filing date for the '859 patent was February 27, 2002 or suggested that February 27, 2001 was the critical date.

On February 16, 2007, the district court held a hearing on DuPont's motion for preliminary injunction. At the hearing, DuPont's counsel addressed a September 2000 trade show at which it "gave a general demonstration of the workflow for a digital thermally developed plate." DuPont's counsel stated that the critical date was February 27, 2001 and that the September 2000 trade show was before the critical date.

The court then agreed to allow each party to submit a letter brief regarding whether the use at that trade show was a public use. Both MacDermid and DuPont submitted letter briefs that presented substantive arguments on this point. In its letter brief, DuPont still appeared to accept that the critical date was one year before the filing date of the non-provisional application.

Two days later, DuPont submitted a letter to the court, for the first time identifying an earlier critical date. The letter stated:

Further investigation has revealed that the '859 patent was based upon, and claims priority to a provisional patent application, 60/273,669, filed on March 6, 2001. This means that only activities prior to March 6, 200[0](sic) can invalidate the '859 patent under 35 U.S.C. [§] 102(b).... Accordingly, the demonstration at Label Expo in September 2000 is not an invalidating bar under 35 U.S.C. [§] 102(b).

J. App'x at 3007.

The next day, the parties had a telephone conference with the court regarding DuPont's letter. At the hearing, the district court denied MacDermid's oral motion to expunge DuPont's letter. In doing so the court stated:

Well, from where my role is positioned as opposed to your adversarial roles, what strikes me is that if I were to rule let's say adverse to du Pont based upon a set of facts that is on its face fact-wise inescapable, then the Circuit Court could well find plain error, and this would be not a service to either party or the Circuit Court. Having been alerted to this problem and simply to judicially exclude any consideration of it, it's true that we're still in briefing on this supplemental issue. I just ... don't see that the positions have hardened to the point where I can ignore the import of this fact.

J. App'x at 3252. The court then allowed the parties to each file a letter brief explaining their positions both on procedural and substantive bases.

MacDermid then filed a letter brief opposing DuPont's argument that the critical date should be based on the provisional rather than the non-provisional application. MacDermid argued that DuPont's statements detailed above that the critical date was February 27, 2001, were binding judicial admissions and that DuPont was estopped from taking a contrary position. If not judicial admissions, then MacDermid argued that they were evidentiary admissions which "are more than sufficient to create a substantial question concerning the validity of the '859 patent." MacDermid also argued that the non-provisional application was not entitled to the filing date of the provisional because: (1) the non-provisional application names inventors not named in the provisional application; (2) DuPont did not use the "proper language" in claiming priority to the provisional; (3) the filing receipt, published application, and issued patent did not reference the provisional, showing that the PTO did not recognize priority to the provisional; (4) DuPont did not alert the PTO that the priority information was missing until the patent issued; and (5) the Certificate of Correction that added the priority information was wrongly issued. MacDermid also argued that it would be unfairly prejudiced by DuPont's change of position.

DuPont submitted a letter in response, stating that it had promptly notified the court of its discovery that the '859 patent was entitled to an earlier effective filing date, and that MacDermid admitted it had been aware of the provisional application. DuPont also argued that its non-provisional application had properly claimed priority to the provisional application, thus entitling it to a March 6, 2001 effective filing date, and that it did not make binding judicial admissions.

On August 13, 2007, the district court entered a memorandum opinion construing various terms and denying DuPont's motion for a preliminary injunction. Preliminary Injunction Opinion at 1, 3. The district court first noted that MacDermid had not disputed infringement in opposing DuPont's motion for a preliminary injunction, and so the court held that DuPont had shown a reasonable likelihood of prevailing on infringement. Id. at 47.²

Next, the court addressed whether MacDermid had raised a substantial question of validity under Section 102(b). Id. at 48. After laying out the parties' arguments as to the various prior uses, the court addressed DuPont's argument that the critical date should be based on the filing date of the provisional application rather than the non-provisional application. Id. at 51. The district court held that "DuPont [had] not shown that MacDermid's asserted defense that the '859 patent is invalid under either the public use or on-sale bars of ...