Phillips Petroleum Co. v. United States Steel Corp.

• Decision Date: 08 March 1985
• Docket Number: 83-801 and 84-79 MMS.,83-547,83-148,Civ. A. No. 83-143
• Citation: 604 F. Supp. 555
• Parties: PHILLIPS PETROLEUM COMPANY, Shell Oil Company, Northern Petrochemical Company, and El Paso Products Company, Plaintiffs, v. UNITED STATES STEEL CORP., Hercules Incorporated and Phillips Petroleum Company, Defendants.
• Court: U.S. District Court — District of Delaware

604 F. Supp. 555

PHILLIPS PETROLEUM COMPANY, Shell Oil Company, Northern Petrochemical Company, and El Paso Products Company, Plaintiffs, v. UNITED STATES STEEL CORP., Hercules Incorporated and Phillips Petroleum Company, Defendants.

Civ. A. Nos. 83-143, 83-148, 83-547, 83-801 and 84-79 MMS.

United States District Court, D. Delaware.

March 8, 1985.

C. Waggaman Berl, Jr., Wilmington, Del. (Harry J. Roper, Sidney Neuman, George S. Bosy, Nicholas A. Poulos, and James P. Naughton, Neuman, Williams, Anderson & Olson, Chicago, Ill., of counsel), for Phillips Petroleum Co. and Shell Oil Co.

Charles S. Crompton, Jr., Potter, Anderson & Corroon, Wilmington, Del. (Francis T. Carr, and Kenneth E. Madsen, Kenyon & Kenyon, New York City, of counsel), for Northern Petrochemical Co., U.S. Steel Corp. and Hercules Inc.

Arthur G. Connolly, Jr., Connolly, Bove, Lodge & Hutz, Wilmington, Del. (Thomas F. Reddy, Jr., and Stanton T. Lawrence, III, Pennie & Edmonds, New York City, of counsel), for El Paso Products Co.

OPINION

MURRAY M. SCHWARTZ, District Judge.

The invention of solid crystalline polypropylene has given rise to protracted litigation spanning several decades. In this action, Phillips Petroleum Company ("Phillips"), awarded a product patent in March, 1983 for crystalline polypropylene, has filed a suit against United States Steel Corporation ("U.S.Steel") and Hercules Incorporated for patent infringement. Separate actions have been brought against Phillips by Shell Oil Company, Northern Petrochemical Company, and El Paso Products Company ("El Paso") to obtain a declaratory judgment that the patent is invalid. These actions have been consolidated by orders of this Court dated September 26, 1983, December 22, 1983, and October 5, 1984. All parties adverse to Phillips, except El Paso, ("the movants") have filed a Motion for Summary Judgment urging the patent is invalid because of double patenting. The material facts, largely undisputed, are set forth below. A more comprehensive discussion of the history of the polypropylene patent litigation may be found in Judge Wright's opinion in Standard Oil Co. (Indiana) v. Montedison, S.p.A., 494 F.Supp. 370 (D.Del.1980), aff'd, 664 F.2d 356 (3d Cir.1981), cert. denied, 456 U.S. 915, 102 S.Ct. 1769, 72 L.Ed.2d 174 (1982).

Background

In the early 1950's, several companies in the United States and abroad were experimenting with methods of polymerizing¹ various olefins,² including ethylene and propylene. By 1953, Phillips Petroleum had developed a new chromium oxide catalyst³ for use in the polymerization process. Phillips discovered that use of the chromium oxide catalyst in the polymerization of ethylene permitted the production of polyethylene at lower pressures and less cost than had previously been possible.⁴ The process had the added advantage of producing polyethylene of higher density and therefore greater commercial utility than was available at the time.⁵

Phillips also employed its new catalyst in the polymerization of propylene, yielding a solid product. Through fractionation⁶ of that solid, Phillips was able to isolate a "hard, crystalline translucent solid," later known as solid crystalline polypropylene.⁷ The resulting polypropylene, consisting essentially of recurring propylene units, had a high melting point and high density.⁸ The present record indicates that prior to that time, the production of crystalline polypropylene was thought impossible.⁹

These discoveries led Phillips to file several related patent applications over the course of three years.¹⁰ All were filed in the names of John P. Hogan and Robert L. Banks, and were assigned to Phillips. Application No. 333,576, entitled a "Process for Polymerizing Olefins and Catalyst Therefor," was filed on January 27, 1953 ("the 1953 application").¹¹ A continuation-in-part ("CIP") of that application, Application No. 476,306, was filed on December 20, 1954.¹² Both of these applications disclosed the chromium oxide catalyst and referenced, inter alia, polypropylene as one of the many products which could be made with the catalyst.

In 1955, Guilio Natta and others working on behalf of Montedison, S.p.A., published a series of articles describing crystalline polypropylene in terms different than those contained in Phillips' 1953 application.¹³ Montedison filed Application No. 514,099 on June 8, 1955, teaching the manufacture of solid crystalline polypropylene through the use of its newly developed organometallic catalysts.¹⁴ On January 11, 1956, in an effort to provoke an interference with the Montedison application and to secure its patent rights to crystalline polypropylene,¹⁵ Phillips filed another CIP of its 1953 application, Application No. 558, 530 ("the '851 application"), specifically claiming the product of crystalline polypropylene.¹⁶ That application disclosed that crystalline polypropylene could be made both with Phillips' chromium oxide catalyst and with the organometallic catalysts developed by Montedison.¹⁷

While the '851 application was pending, Phillips filed yet another CIP—Application No. 573,877, filed on March 26, 1956 containing forty-four process claims utilizing the chromium oxide catalyst. On March 4, 1958, Patent No. 2,825,721 ("the '721 patent"), entitled "Polymers and Production Thereof," issued on that process patent application.¹⁸ In September, 1958, the Patent Office instituted Interference No. 89,634 involving Phillips' product patent application and the applications of Montedison and others to determine the priority of invention of the product, crystalline polypropylene.¹⁹ The Board of Patent Interference ("the Board") granted priority to Montedison and on February 6, 1973, the Patent Office issued Patent No. 3,517,344 to Montedison.²⁰ Review of that determination followed in the federal courts. On January 11, 1980, Judge Wright overruled the decision of the Board and awarded priority to Phillips.²¹ Judge Wright assigned Phillips a priority date of at least as early as January 27, 1953, based, inter alia, on Phillips' constructive reduction to practice as evidenced by the 1953 parent application. In addition, Judge Wright held, in the limited context of the interference proceeding, that the product of the Count was patentable to Phillips. 494 F.Supp. at 461.

Judge Wright's rulings in the interference proceeding were affirmed by the Court of Appeals for the Third Circuit in Standard Oil Co. (Indiana) v. Montedison, S.p.A., 664 F.2d 356 (3d Cir.1981), cert. denied, 456 U.S. 915, 102 S.Ct. 1769, 72 L.Ed.2d 174 (1982), and the matter eventually moved back to the patent office for issuance of a new product patent on solid crystalline polypropylene. At that point, U.S. Steel, one of the movants in this action, filed a protest with the Patent Office pursuant to 37 C.F.R. § 1.291, alleging that the claim involved in the interference action had already received protection under claim 16 of Phillips' '721 patent.²² The Patent Office considered and denied U.S. Steel's protest²³ and on March 15, 1983, issued Patent No. 4,376,851 ("the '851 patent") on Phillips' product claim.²⁴ The sole claim of the '851 product patent tracks the claim of Interference No. 89,634. The claim protects the product of:

"normally solid polypropylene, consisting essentially of recurring propylene units, having a substantial crystalline polypropylene content."²⁵

Movants have now raised the identical argument that U.S. Steel brought before the Patent Office—that the '851 patent must be declared invalid for double patenting in light of claim 16 of Phillips' '721 patent. Claim 16 recites:

a process which comprises polymerizing propylene at a polymerization temperature in the range 150 to 250° F. with a catalyst comprising, as the sole essential effective catalytic ingredients thereof, chromium oxide supported on silica-alumina, said catalyst containing at least 0.1 weight percent hexavalent chromium at the initial contacting of hydrocarbon with said catalyst, and recovering a resulting solid polymer.²⁶

The movants contend that the "resulting solid polymer" of claim 16 of the '721 patent and the product described in the single claim of the '851 patent are the same, as evidenced by their common origin in the 1953 patent application.²⁷ As a result, they argue that the extension of monopoly afforded by the issuance of the '851 patent should be overturned.

The Law of Double Patenting

Stripped of all its verbiage, movants urge the Court to invalidate the '851 product patent because it represents either the same invention or an obvious variation of claim 16 of the '721 patent. The Court's inquiry must begin with the presumption, set forth in 35 U.S.C. § 282 (1984),²⁸ that the product patent is valid. In light of that presumption, the burden falls on the challenger to prove the patent's invalidity. See, e.g., American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1358 (Fed.Cir.1984); Astra-Sjuco, A.B. v. United States International Trade Commission, 629 F.2d 682, 688 (C.C.P.A.1980); Aluminum Co. of America v. Amerola Products Corp., 552 F.2d 1020, 1024 (3d Cir.1977); Chicago Rawhide Manufacturing Co. v. Crane Packing Co., 523 F.2d 452, 458 (7th Cir.1975), cert. denied, 423 U.S. 1091, 96 S.Ct. 887, 47 L.Ed.2d 103 (1976); Griswold v. Oil Capital Valve Co., 375 F.2d 532, 537 (10th Cir.1966). In double patenting cases, that burden is a heavy one. See Carman Industries, Inc. v. Wahl, 724 F.2d 932, 940 (Fed.Cir.1983); Transmatic, Inc. v. Gulton Industries, 601 F.2d 904, 913 (6th Cir.1979); Reynolds Metals Co. v. Continental Group, Inc., 525 F.Supp. 950, 972 (N.D.Ill.1981).

In this action, movants' double patenting challenge involves a comparison of the claim of Phillips' `851 product patent with claim 16 of the expired `721 patent. Both patents have as their genealogical parent the 1953 application. The parties agree that the parent application and the two patents each disclose the invention of normally...