Rohm and Haas Co. v. Brotech Corp.
| Decision Date | 20 October 1997 |
| Docket Number | 97-1063,Nos. 97-1024,s. 97-1024 |
| Citation | 44 USPQ2d 1459,127 F.3d 1089 |
| Parties | ROHM AND HAAS COMPANY, Plaintiff/Cross-Appellant, v. BROTECH CORPORATION, Defendant-Appellant. |
| Court | U.S. Court of Appeals — Federal Circuit |
Rudolf Eric Hutz, Connolly, Bove, Lodge & Hutz, of Wilmington, DE, argued for plaintiff/cross-appellant. With him on the brief were N. Richard Powers and Jeffrey B. Bove.
Raphael V. Lupo, McDermott, Will & Emery, Washington, DC, argued for defendant-appellant. With him on brief were Jack Q. Lever, Jr., Donna M. Tanguay, and Robert W. Zelnick. Of counsel on brief were Paul R. Rosen, Spector Gadon & Rosen, P.C., Philadelphia, PA, and Herbert B. Keil, Keil & Weinkauf, Washington, DC. Of counsel was Robert K. Payson, Potter Anderson, Wilmington, DE.
Before RICH, RADER, and BRYSON, Circuit Judges.
Rohm & Haas Company (R & H) sued Brotech Corporation for infringement of U.S. Patents Nos. 4,256,840 (the '840 patent), 4,382,124 (the '124 patent), and 4,224,415 (the '415 patent). Brotech asserted defenses of noninfringement and inequitable conduct. After a three-week bench trial, the district court determined that R & H did not prove infringement, and that Brotech did not prove by clear and convincing evidence that R & H had conducted itself inequitably before the Patent and Trademark Office.
Both parties appeal. R & H complains that the trial court did not accord proper weight to its expert's opinion testimony about literal infringement of the '124 and '840 patents. Brotech argues that the trial court did not consider the overall pattern of misconduct over the 25-year course of patent prosecution. Brotech also seeks attorney fees. Because the trial court carefully analyzed the proffered evidence to verify the presence in the accused products and processes of each limitation of the claims and did not abuse its discretion by refusing to declare the Rohm & Haas patents unenforceable or to award attorney fees, this court affirms.
On July 18, 1958, R & H filed a patent application related to macroreticular copolymer beads and processes for their preparation. After preparation, such beads may be derivatized to obtain ion exchange resins used in various chemical processes, such as water conditioning. Following several prolonged interference proceedings and a complex prosecution history, two divisional applications from this parent issued as the '840 and '124 patents in 1981 and 1983 respectively. These patents contain both process and product by process claims.
Before the mid-1950s, chemists employed the process of suspension copolymerization to obtain ion exchange resins. This process involves dispersing a water insoluble mixture of monomer and crosslinking agent into small droplets suspended in water. After polymerization is initiated, the crosslinking agent connects and entangles the growing linear polymer chains, forming a water insoluble aggregate. Suspension polymerization conducted in this manner produces small polymer beads (described as gel beads) that have a glassy appearance and relatively small pores (.
In the mid 1950s chemists at a number of companies devised a modified suspension polymerization process, embodiments of which are disclosed in the '124 and '840 patents. In this process, a cosolvent, also called the precipitant, is added to the mixture of the monomer and the crosslinking agent. This precipitant forms a homogeneous solution with the monomer and crosslinking agent, but the three-component mixture is not a solvent for the growing polymer chains. This three-component mixture is used in a standard suspension polymerization process to produce a superior result. The growing polymer chains precipitate at multiple sites within the droplets and grow into microgels. Eventually the microgels grow sufficiently large that they contact each other. Thus, the new process produces an opaque or translucent bead that is an agglomeration of microgels permeated by a network of large (40-200,000) interconnected channels. Polymer beads having such a structure are called macroreticular beads. These beads have a much higher surface-area-to-volume ratio and, consequently, a greater ion exchange capacity than gel beads.
Claim 1 of the '124 patent is representative of the claims at issue. It reads:
(b) is a solvent for the monomer mixture and
(c) does not appreciably swell the copolymer of said polyvinylidene monomer and said monovinyl aromatic hydrocarbon monomer, said liquid precipitant and said polyvinylidene monomer each being present in an amount exceeding the critical concentration of each needed for phase separation of the copolymer from the monomer phase as the copolymer is formed, and recovering the copolymer beads so formed.
(Paragraphing and emphasis added).
R & H sued Brotech for infringement of claims 1, 4, 8, and 9 of the '124 patent and claims 1, 2, and 6 of the '840 patent. Brotech stipulated that its process generally utilized suspension polymerization to produce its products. Brotech, however, contended that its process used a cosolvent that was not a precipitant as defined in the claims. At trial, the parties focused their dispute on whether Brotech's third component was a precipitant within the terms of the claims.
In a thorough opinion, the trial court determined that R & H had proven that Brotech's process used a precipitant within the meaning of that term in the claims. However, the trial court also determined that R & H did not satisfy its burden of proof as to two other limitations that appear in the claims. 1 In particular, it determined that R & H had not shown either that Brotech's process produced beads with an "apparent density of at least about 0.02 density units less than the apparent density of gel-type copolymer beads of the same composition made in absence of liquid precipitant" or that Brotech's precipitant did not "appreciably swell the copolymer" beads. Because all of the asserted claims contained at least one of these elements, the trial court granted judgment of noninfringement in favor of Brotech.
On appeal, R & H asserts that the conclusory opinion of its expert witness supplied adequate evidence to show Brotech's process included the apparent density and swelling limitations of the claims. R & H's technical expert, however, had only testified in general terms that the accused processes and products infringe the asserted patents. R & H argues that this summary expert opinion served to establish a prima facie case of infringement and placed a burden of production on Brotech to rebut this case. In support of this position, R & H points to this court's decision in Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241 (Fed.Cir.1991). In Symbol Technologies, this court upheld a finding of infringement where the patentee's expert witness presented a claim chart identifying particular components of the accused device with each claimed element. Beyond the claim chart, the expert in Symbol Technologies presented no detailed analysis linking the particular parts of the accused device with the claimed elements.
To show literal infringement of a patent, a patentee must supply sufficient evidence to prove that the accused product or process meets every element or limitation of a claim. See Lemelson v. United States, 752 F.2d 1538, 1551, 224 USPQ 526, 533 (Fed.Cir.1985) (); Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535, 19 USPQ2d 1367, 1369 (Fed.Cir....
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