Morton Intern., Inc. v. Cardinal Chemical Co., s. 91-1174

• Decision Date: 22 September 1993
• Docket Number: 91-1175,Nos. 91-1174,s. 91-1174
• Parties: MORTON INTERNATIONAL, INC., Plaintiff-Appellant, v. CARDINAL CHEMICAL COMPANY, a partnership, W.M. Quattlebaum, Jr., Dorothy Quattlebaum, and W.M. Quattlebaum, III, individuals, Cardinal Manufacturing Co., and Cardinal Stabilizers, Inc., Defendants/Cross-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1464

5 F.3d 1464

28 U.S.P.Q.2d 1190

MORTON INTERNATIONAL, INC., Plaintiff-Appellant, v. CARDINAL CHEMICAL COMPANY, a partnership, W.M. Quattlebaum,

Jr., Dorothy Quattlebaum, and W.M. Quattlebaum, III,

individuals, Cardinal Manufacturing Co., and Cardinal

Stabilizers, Inc., Defendants/Cross-Appellants.

Nos. 91-1174, 91-1175.

United States Court of Appeals, Federal Circuit.

Sept. 22, 1993.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

Nov. 29, 1993.

Gordon R. Coons, Leydig, Voit & Mayer, of Chicago, IL, argued for plaintiff-appellant. With him on the brief were John E. Resenquist and Jeffrey S. Ward. Also on the brief was Gerald K. White, Morton Intern., Inc., of Chicago, IL.

Charles F. Schill, Adduci, Mastriani, Meeks & Schill, of Washington, DC, argued for defendants/cross-appellants. With him on the brief were William O. Sweeny, III, Arthur L. Coleman, Nelson Mullins and Elizabeth R.P. Bowen, Riley & Scarborough, of Columbia, SC.

Jerome G. Lee, of Arlington, VA, was on the brief for amicus curiae, American Intellectual Property Law Ass'n. With him on the brief were William C. Rooklidge and Joseph R. Re, Knobbe, Martens, Olson & Bear, of Newport Beach, CA. Also on the brief were Walter N. Kirn and William L. LaFuze, of counsel.

Brian G. Brunsvold, Finnegan, Henderson, Farabow, Garrett & Dunner, of Washington, DC, was on the brief for amicus curiae, Atochem North America, Inc. With him on the brief were Herbert H. Mintz, Richard B. Racine and Michael D. Kaminski. Also on the brief was Stanley A. Marcus, Deputy Gen. Counsel--Patents, Atochem North America, Inc., Philadelphia, PA, of counsel.

Before MAYER, LOURIE, and CLEVENGER, Circuit Judges.

LOURIE, Circuit Judge.

This case is before us on remand from a decision of the United States Supreme Court vacating our judgment in Morton International, Inc. v. Cardinal Chemical Co., 959 F.2d 948, 22 USPQ2d 1231 (Fed.Cir.), reh'g denied, (Fed.Cir.) and reh'g in banc denied, 967 F.2d 1571, 23 USPQ2d 1362 (Fed.Cir.1992). Cardinal Chem. Co. v. Morton Int'l, Inc., --- U.S. ----, 113 S.Ct. 1967, 124 L.Ed.2d 1, 26 USPQ2d 1721 (1993). The case was first decided by this court on March 20, 1992, when we affirmed the December 14, 1990 judgment of the United States District Court for the District of South Carolina, No. 6:83-889-OK, holding Morton International, Inc.'s U.S. Patents 4,062,881 ('881) and 4,120,845 ('845) not infringed by Cardinal Chemical Company, and invalid. The majority of the panel concluded that the issue of patent invalidity need not be reached, since the court affirmed the district court's finding of lack of infringement and under precedents of this court and the United States Supreme Court, the issue of validity was then moot. One judge of the panel concurred in the result, but dissented from the conclusion of mootness. The court denied a petition for reconsideration and did not accept a suggestion for hearing in banc, although three judges of the court dissented from the decision not to hear the case in banc.

The Supreme Court granted certiorari on the question of mootness and, on May 17, 1993, reversed the decision of this court, holding that the issue of validity is not mooted when a finding of noninfringement is affirmed because "the Federal Circuit is not a court of last resort," --- U.S. at ----, 113 S.Ct. at 1975, 26 USPQ2d at 1727, and because "[e]ven if it may be good practice to decide no more than is necessary to determine an appeal, it is clear that the Federal Circuit had jurisdiction to review the declaratory judgment of invalidity." Id., --- U.S. at ----, 113 S.Ct. at 1976, 26 USPQ2d at 1728. The Court concluded that it was an abuse of discretion not to consider validity in light of the fact that "[t]he two patents at issue here have been the subject of three separate lawsuits, and both parties have urged the Federal Circuit to resolve their ongoing dispute over the issue of validity." Id., --- U.S. at ----, 113 S.Ct. at 1978, 26 USPQ2d at 1730. The Court thus remanded the case to our Morton has suggested that, on remand, we hear the case in banc. Upon circulation of that suggestion to the full court, the court did not accept the suggestion. In addition, Morton moved for reargument. The panel denied that motion, the case having been thoroughly argued earlier. The case is now back to us on remand for redecision on the merits in light of the Supreme Court's holding that the question of validity is not moot when a holding of noninfringement is affirmed.

court for consideration of the issue of validity.

Morton contends that the district court erred in holding its patents not infringed and invalid. Cardinal contends that the district court erred in failing to award attorney fees for an exceptional case under 35 U.S.C. Sec. 285 and that we should sanction Morton's appeal as frivolous. We affirm the court's judgment in all respects. We also reject Cardinal's assertion that this appeal is frivolous.

BACKGROUND

The patents in suit are directed to a family of compounds which are used as additives or heat stabilizers for polyvinyl chloride (PVC). The heat stabilizers protect the PVC from decomposition, discoloration, and loss of strength. The particular heat stabilizers disclosed in the '881 and '845 patents are directed to organotin compounds, in particular to organotin mercaptoalkyl carboxylic acid ester sulfides. Only Claim 1 of each patent is at issue. ¹ The key limitations of the claims are (1) the bonding of the organotin compound, referred to by the parties as "partial connectivity," wherein a tin atom is bonded to a sulfur atom, the sulfur atom is bonded to a second tin atom, and the second tin atom is bonded to a mercaptoalkyl ester (referred to by the parties as a "reverse ester"); and (2) "the organotin compound [has] an amount of tin within the range from 10 to 42% by weight and an amount of sulfur within the range from 8 to 42% by weight."

The '881 and '845 patents, as noted, have had considerable exposure to the courts, as Morton has filed infringement actions in three separate district courts against different defendants. In the first, Morton filed suit against Argus Chemical Corporation in the United States District Court for the Eastern District of Louisiana. After trial, the district court entered judgment, holding the patents invalid and not infringed. Morton Thiokol, Inc. v. Witco Chemical Corp., et al. No. 84-5685 (E.D.La., filed November 28, 1984).

On appeal, we affirmed the district court's judgment of non-infringement and vacated the invalidity judgment, ruling that the affirmance made it unnecessary to review the issue of invalidity. Morton Thiokol, Inc. v. Argus Chemical Corp., 873 F.2d 1451, 11 USPQ2d 1152 (Fed.Cir.1989) (non-precedential).

In the second action, the appeal of which is now before us, Morton again filed suit, this time against Cardinal, alleging that Cardinal sold mixtures containing the claimed compounds. After trial, the district court made lengthy findings and conclusions and held that the claims were invalid under 35 U.S.C. Sec. 112 because the specification was not enabling and the claims were indefinite. It further held that Cardinal's heat stabilizer products did not infringe those claims, either literally or under the doctrine of equivalents. Morton and Cardinal appealed and cross-appealed. ²

DISCUSSION

I. Infringement

A finding of literal infringement requires that the asserted claims, as properly construed, read on the accused product. Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 758, 221 USPQ 473, 477 (Fed.Cir.1984). The patentee has the burden of proving infringement by a preponderance of the evidence. SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 889, 8 USPQ2d 1468, 1477 (Fed.Cir.1988). The first step in determining infringement is thus to construe the claims. Fonar Corp. v. Johnson & Johnson, 821 F.2d 627, 631, 3 USPQ2d 1109, 1112 (Fed.Cir.1987), cert. denied, 484 U.S. 1027, 108 S.Ct. 751, 98 L.Ed.2d 764 (1988). The second step is to decide whether each limitation in the properly construed claims is found, either literally or equivalently, in the allegedly infringing compounds. Id. Although claim interpretation is a question of law, subject to de novo review on appeal, the district court's ultimate finding on infringement, as well as subordinate findings relating to proper claim construction, are issues of fact, reviewed under a clearly erroneous standard. See H.H. Robertson, Co. v. United Steel Deck, Inc., 820 F.2d 384, 389, 2 USPQ2d 1926, 1929 (Fed.Cir.1987) (interpretation of a claim may depend on evidentiary material about which there is a factual dispute); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1269-70, 229 USPQ 805, 811 (Fed.Cir.1986) (determination of infringement is a question of fact), cert. denied, 479 U.S. 1030, 107 S.Ct. 875, 93 L.Ed.2d 829 (1987).

Morton argues that the district court erred in interpreting Claim 1 and that the court's misinterpretation resulted in errors in the court's conclusions as to infringement and invalidity. More particularly, Morton claims that the district court misconstrued the claims by restricting the type of evidence Morton could use to show the existence of the claimed compound in Cardinal's mixture to: (1) isolation and (2) nuclear magnetic resonance (NMR) data showing simultaneous tin-tin coupling and Carbon-13 splitting as the only method to prove the partial connectivity of Claim 1. We disagree.

On review of the record, it is clear that the district court did not construe Claim 1 to require isolation. The court merely required Morton to identify the claimed compounds in Cardinal's mixtures to confirm their existence. The court specifically found that "[n]o amount of testing by equipment or methods available [ ] can identify, isolate or separate any compound claimed by the '881 or '845 patents." Morton's reliance on In re Breslow, 616 F.2d 516, 205 USPQ 221 (CCPA 1980),...