Studiengesellschaft Kohle mbH v. Northern Petrochemical Co.
| Decision Date | 10 February 1986 |
| Docket Number | No. 85-1054,85-1054 |
| Citation | 228 USPQ 837,784 F.2d 351 |
| Parties | , 228 U.S.P.Q. 837 STUDIENGESELLSCHAFT KOHLE mbH, as Trustee for the Max-Planck-Institut fur Kohlenforschung, Appellant, v. NORTHERN PETROCHEMICAL COMPANY, Appellee. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Arnold Sprung, Sprung, Horn, Kramer & Woods, New York City, for appellant. With him on brief was Nathaniel D. Kramer.
Edmund J. Sease, Zarley, McKee, Thomte, Voorhees & Sease, Des Moines, Iowa, for appellee. With him on brief was Dennis L. Thomte; Donald F. Haas, Omaha, Neb., of counsel.
Thomas F. Reddy, Jr., Stanton T. Lawrence, III, and Joseph V. Colaianni, Pennie & Edmonds, New York City, were on brief, for amicus curiae, El Paso Products Co.
Gordon R. Coons and Bruce M. Gagala, Leydig, Voit, Osann, Mayer & Holt, Ltd., Chicago, Ill., were on brief, for amicus curiae, Union Carbide Corp. Thomas I. O'Brien and Paul W. Leuzzi, II, Danbury, Conn., also on brief.
Before NEWMAN, Circuit Judge, COWEN, Senior Circuit Judge, and BISSELL, Circuit Judge.
The judgment of the United States District Court for the Northern District of Illinois, Studiengesellschaft Kohle mbH v. Northern Petrochemical Company, 225 USPQ 194 (N.D.Ill.1984), which held invalid all the claims of United States Patent No. 4,125,698 (the '698 process patent) on the basis of double patenting with United States Patent No. 3,113,115 (the '115 catalyst patent), is reversed.
The ruling of the district court that the appellant had not been guilty of laches or other inequitable delay in obtaining the '698 process patent is affirmed.
In 1980 Studiengesellschaft Kohle mbH (SGK), as trustee for the Max-Planck-Institut fur Kohlenforschung, filed suit against Northern Petrochemical for infringement of both the '698 process patent and the '115 catalyst patent. The issue of infringement of the '115 catalyst patent was settled by agreement, and Northern Petrochemical paid damages for its two years of operation from 1978 until the expiration of the '115 catalyst patent in 1980.
The parties stipulated that the '698 patent was infringed if valid, and that validity was not challenged under 35 U.S.C. Secs. 102 and 103. The affirmative defenses of double patenting, patent misuse, and laches were raised, and the district court established that the burden of proof was with Northern Petrochemical. Following a bench trial, the court held for Northern Petrochemical on the issue of double patenting and for SGK on the issues of misuse and laches. SGK appeals the judgment of invalidity based on double patenting, and Northern Petrochemical reasserts the issue of laches.
The '698 process patent, entitled "Polymerization of Ethylenically Unsaturated Hydrocarbons", is the invention of Karl Ziegler, Heinz Brell, Heinz Martin, and Erhard Holzkamp (the applicants). The claims are directed to a process for polymerizing alpha-olefins to produce high molecular weight polymers. For details of prosecution within the Patent and Trademark Office (PTO), reference is made to the district court's opinion. In brief, the '698 process patent issued on application Serial No. 770,484, a continuation-in-part of three prior applications including application Serial No. 482,412 filed January 17, 1955.
The 482,412 application as filed contained claims directed to a process for polymerizing ethylene, and also to a novel catalyst composition used in the polymerization process. On September 21, 1955 the examiner required restriction between the process and composition claims, as follows:
Restriction is required to one of the following inventions:
I. Claims 1-23, which pertain to a process for polymerizing ethylene, and which are classified like the Larson patent in 260-94.9.
II. Claims 24-28, 30 and 31, which pertain to a catalyst containing an organometallic composition, and which are classified like the Gehrke patent in Class 252-431.
III. Claim 29 which pertains to organic compounds of aluminum, and which are classified in Class 260-448, like the Coates patent.
The reason for requiring division lies in the fact that the catalysts of Group II are not limited in utility to polymerizing ethylene as in Group I, nor need any catalysts at all be formed from the pure compounds of Group III.
In response, the applicants elected the process claims of Group I, reserving the right to the other claims. On October 29, 1958 applicants filed Serial No. 770,484 as a continuation-in-part of Serial No. 482,412, containing the process claims of Group I plus additional process disclosures and claims from two related patent applications, Serial Nos. 514,068 and 527,413.
On the same date, October 29, 1958, applicants also filed application Serial No. 770,413 as a continuation-in-part of Serial No. 482,412, containing the catalyst claims of Group II plus additional catalyst disclosures and claims from the same two related patent applications. The 770,413 application issued as the '115 catalyst patent on December 3, 1963. Claim 1 of the '115 catalyst patent is as follows:
in which R" is as given above, with a heavy metal compound selected from the group consisting of salts, freshly precipitated oxides and hydroxides of metals of groups IV-B, V-B, and VI-B of the periodic system, including thorium and uranium, metals of group VIII of the periodic system and manganese.
Meanwhile three patent interferences were proceeding in the PTO, involving related patent applications of SGK including Serial No. 514,068. On February 10, 1961 prosecution of the 770,484 process application was stayed by the Patent Office, the examiner having refused SGK's offer to avoid overlap with various claims in interference if the Office would allow the 770,484 application to issue. In 1977 the Office reopened prosecution of the 770,484 application, resulting in the grant on November 14, 1978 of the '698 process patent.
Claim one, the broadest claim of the '698 process patent, is as follows:
1. Method for the production of high molecular polymers which comprises contacting an alpha-olefin with a catalyst formed by a mixture of a first and second component, said first component essentially consisting of an aluminum compound of the general formula RR'AlX, in which R and R' are each a member selected from the group consisting of hydrogen, alkyl radicals and aryl radicals, and X is a member selected from the group consisting of hydrogen, halogen atoms, alkoxy radicals, and aryloxy radicals, said second component essentially consisting of a non-ionized heavy metal compound selected from the group consisting of salts and freshly precipitated oxides and hydroxides of metals of Groups IV-B, V-B and VI-B of the Periodic System including thorium and uranium, metals of Group VIII of the Periodic System and manganese, and recovering the high molecular polymer formed.
The district court determined that "[e]very definitional limit of the two components of the catalyst defined in the process claims of the '698 patent are included in the basic catalyst composition '115 patent." 225 USPQ at 201. The court observed that there was "no known disclosed utility for the '115 catalyst except for the polymerization of ethylenically unsaturated hydrocarbons, such as alpha-olefins". Id. at 198.
In response to SGK's argument that the two patents were obtained because of a restriction requirement by the patent examiner, the court held that 35 U.S.C. Sec. 121 did not insulate the '698 process patent from double patenting because the catalyst of the '115 patent and the process for polymerizing olefins using that catalyst are "the same invention". Id. at 199-201.
The district court held that the protection of 35 U.S.C. Sec. 121, third sentence, did not apply, because the catalyst patent claims could be used to show that the catalyst and process patents claimed the same invention without being "used as a reference" against the process patent claims. Id. at 200. Referring to the restriction requirement, the court said Id. at 198.
In challenging the district court's holding that the catalyst and process patents claim the same invention, SGK asserts that the inventions are not the same and that there was no double patenting in any event because of 35 U.S.C. Sec. 121.
SGK emphasizes that the '115 patent claims a catalyst composition, independent of its use. SGK also points out that the catalyst as claimed in the '115 patent is of broader scope than the catalyst in the '698 process claims: catalyst component X in the '115 patent claims includes certain secondary amino radicals, secondary acid amide radicals, mercapto radicals, and carboxylic acid radicals, none of which is included in the catalyst component of the '698 process claims.
SGK asserts that the invention of the '115 catalyst patent can be practiced in non-infringing ways: that one can make and sell the catalyst without infringing the '698 process patent, and that one can use the catalyst...
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