Scaltech Inc. v. Retec/Tetra, L.L.C., Nos. 97-1365
| Court | United States Courts of Appeals. United States Court of Appeals for the Federal Circuit |
| Writing for the Court | Before RICH, PLAGER and GAJARSA; RICH |
| Citation | 51 USPQ2d 1055,178 F.3d 1378 |
| Docket Number | Nos. 97-1365,97-1480 |
| Decision Date | 04 June 1999 |
| Parties | SCALTECH INC., Plaintiff-Appellant, v. RETEC/TETRA, L.L.C., Defendant-Appellee. |
v.
RETEC/TETRA, L.L.C., Defendant-Appellee.
Federal Circuit.
Rehearing Denied; Suggestion for Rehearing
En Banc Declined June 16, 1999.
Robert M. Hardy, Jr., of Seabrook, Texas, for plaintiff-appellant. With him on the brief were Jeffrey W. Tayon and Robert M. Gray, Conley, Rose & Tayon, of Houston, Texas.
David J. Brody, Hamilton, Brook, Smith & Reynolds, P.C., of Lexington, MA, argued for defendant-appellee. With him on the brief was Deirdre E. Sanders.
Before RICH, PLAGER and GAJARSA, Circuit Judges.
RICH, Circuit Judge.
Retrec/Tetra, L.L.C. petitions for rehearing of our decision of September 10, 1998 vacating the district court's summary judgment ruling that U.S. Patent No. 5,433,717 is invalid under 35 U.S.C. § 102(b) (1994) and remanding for further proceedings.
To clarify certain issues, and to take account of the intervening Supreme Court decision in Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 119 S.Ct. 304, 142 L.Ed.2d 261 (1998),
IT IS ORDERED THAT:
The petition for rehearing is granted to the extent that we amend our opinion of September 10, 1998. The amendments are incorporated into new Part III of the opinion and the opinion is reissued as of this date.
Scaltech, Inc. (Scaltech) appeals from the judgment of the United States District Court for the Southern District of Texas, H-95-4190, granting a motion for summary judgment in favor of Retec/Tetra, L.L.C. (Retec), holding U.S. Patent No. 5,433,717 invalid because an embodiment of the claimed invention was "on sale" within the meaning of 35 U.S.C. § 102(b) (1994). We vacate and remand.
Scaltech is in the business of recycling industrial waste produced during the refining of petroleum products. Retec is in the business of producing delayed coker quench streams for use in producing delayed petroleum coke. Their paths crossed when they both used waste products from the petroleum refinery process to produce coke, albeit apparently for different purposes--Retec for producing coke and Scaltech for disposing of waste.
Scaltech is the assignee of record of U.S. Patent No. 5,433,717 (the '717 patent) issued 22 August 1995 on the application of Robert M. Scalliet, filed on 19 January 1993 and entitled "Recycle of Waste Streams." The '717 patent is generally directed to a process for the disposal of oil refinery waste in conjunction with a "delayed coking" process by which oil refiners produce coke. Coke is a porous solid that is produced as a by-product in the oil refining process. It is frequently burned as a fuel.
Production of coke by the "delayed coking" method involves heating the crude oil residue and introducing it into a vessel called a coker drum under specified conditions that result in transformation of the crude oil residue into coke. The coke is then cooled, or "quenched," by the controlled introduction of an aqueous slurry of solids, or "quench stream," into the coker drum. According to the '717 patent, quantities of refinery waste may be successfully disposed of in the quench stream of the delayed coker unit if the waste introduced to the quench stream is comprised of greater than seventy percent of the solids having a particle size less than 15 microns. The '717 patent teaches that this may be accomplished by the treatment of the waste before it is introduced into the quench stream to remove most of the free oil or mobile organic material and reduce the solid particle size. This leaves the de-oiled waste solids suspended in water, or an aqueous slurry of the waste solids, which is then introduced into the delayed coker quench stream.
Claims 1 and 6 are the only independent claims in the '717 patent. Claim 1 reads:
In a process for producing delayed petroleum coke, wherein a liquid hydrocarbon feed stream is introduced into a delayed coking vessel under delayed coking conditions and the coke produced is quenched, the improvement comprising:
treating a waste stream containing water, organic compounds and solids so as to cause attrition of said solids to produce a delayed coker quench stream containing from about 5 to about 35% by weight solids, water and less than about 6% by weight mobile organics, said solids in said coker quench stream having a particle size distribution such that greater than about 70% of the total solids volume comprises solids having a particle size of less than about 15 microns; and
introducing said coker quench stream into said coking vessel during quenching.
Claim 6, the broadest claim, reads:
A process for producing delayed coker quench stream for use in producing delayed petroleum coke wherein a liquid hydrocarbon feed stream is introduced into a delayed coking vessel under delayed coking conditions and the coke produced is quenched, comprising:
treating a waste stream containing water, organic compounds and solids so as to cause attrition of said solids to produce a delayed coker quench stream containing from about 5 to about 35% by weight solids, water and less than about 6% by weight mobile organics, said solids in said coker quench stream having a particle size distribution such that greater than about 70% of the total solids volume comprises solids having a particle size of less than about 15 microns.
Scaltech brought suit against Retec for infringement of the '717 patent. After completing a modicum of discovery, Retec raised the affirmative defense of patent invalidity under 35 U.S.C. § 102(b), alleging that Scaltech sold or offered for sale a process embodying the claimed invention of the '717 patent more than one year before its filing date. On 24 February 1997, Retec filed a motion for summary judgment seeking a holding of patent invalidity.
The district court granted summary judgment in favor of Retec, holding the patent invalid under 35 U.S.C. § 102(b) as a result of an "on sale" bar. This appeal followed.
On summary judgment, the district court found the invention claimed in the '717 patent was "on sale" within the meaning of 35 U.S.C. § 102(b). Summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to a judgment as a matter of law. Fed.R.Civ.P. 56(c). We undertake plenary review of a grant of summary judgment. See KeyStone Retaining...
To continue reading
Request your trial
-
Ortho-Mcneil Pharmaceutical v. Kali Laboratories, Civil Action No. 02-5707 (JCL).
...Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d 728, 737 (Fed. Page 533 Cir.2002) (quoting Scaltech Inc. v. Retec/Tetra, L.L.C., 178 F.3d 1378, 1383 (Fed. Cir.1999)). As the Court concluded above, the "Pharmaceutical composition" limitation of Claim 6 requires a medicinal preparation compri......
-
Dow Chemical Co. v. Mee Industries, No. 6:00CV437-ORL-31DAB.
...the subject of the offer to sell must satisfy each of the limitations of the patent claims. Scaltech, Inc. v. Retec/Tetra, Page 1037 LLC, 178 F.3d 1378, 1383-84 Based on the Court's findings of fact above, the Court concludes the Defendants have not demonstrated by clear and convincing evid......
-
Allen Engineering Corp. v. Bartell Industries, No. 01-1238.
...an objective evaluation of the facts surrounding the transaction, was to conduct experimentation. Scaltech, Inc. v. Retec/Tetra, L.L.C., 178 F.3d 1378, 1384 n. 1, 51 USPQ2d 1055, 1059 n. 1 (Fed. Cir.1999). As noted, once the invention is reduced to practice, there can be no experimental use......
-
Honeywell Intern. v. Universal Avionics Systems, No. 02-359-MPT.
...of the limitations of the claim, and thus was an embodiment of the claimed invention"); see also, Scaltech Inc. v. Retec/Tetra, L.L.C., 178 F.3d 1378, 1383 (Fed.Cir.1999); KeyStone Retaining Wall Sys. Inc. v. Westrock, Inc., 997 F.2d 1444, 1451-52 (Fed.Cir.1993); Orthokinetics, Inc. v. Safe......
-
Ortho-Mcneil Pharmaceutical v. Kali Laboratories, Civil Action No. 02-5707 (JCL).
...Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d 728, 737 (Fed. Page 533 Cir.2002) (quoting Scaltech Inc. v. Retec/Tetra, L.L.C., 178 F.3d 1378, 1383 (Fed. Cir.1999)). As the Court concluded above, the "Pharmaceutical composition" limitation of Claim 6 requires a medicinal preparation compri......
-
Dow Chemical Co. v. Mee Industries, No. 6:00CV437-ORL-31DAB.
...the subject of the offer to sell must satisfy each of the limitations of the patent claims. Scaltech, Inc. v. Retec/Tetra, Page 1037 LLC, 178 F.3d 1378, 1383-84 Based on the Court's findings of fact above, the Court concludes the Defendants have not demonstrated by clear and convincing evid......
-
Allen Engineering Corp. v. Bartell Industries, No. 01-1238.
...an objective evaluation of the facts surrounding the transaction, was to conduct experimentation. Scaltech, Inc. v. Retec/Tetra, L.L.C., 178 F.3d 1378, 1384 n. 1, 51 USPQ2d 1055, 1059 n. 1 (Fed. Cir.1999). As noted, once the invention is reduced to practice, there can be no experimental use......
-
Honeywell Intern. v. Universal Avionics Systems, No. 02-359-MPT.
...of the limitations of the claim, and thus was an embodiment of the claimed invention"); see also, Scaltech Inc. v. Retec/Tetra, L.L.C., 178 F.3d 1378, 1383 (Fed.Cir.1999); KeyStone Retaining Wall Sys. Inc. v. Westrock, Inc., 997 F.2d 1444, 1451-52 (Fed.Cir.1993); Orthokinetics, Inc. v. Safe......