U.S. Steel Corp. v. Phillips Petroleum Co., s. 88-1166

• Decision Date: 10 January 1989
• Docket Number: Nos. 88-1166,s. 88-1166
• Parties: , 9 U.S.P.Q.2d 1461 UNITED STATES STEEL CORPORATION, Hercules, Inc., Shell Oil Company, Northern Petrochemical Company, Himont, U.S.A., Inc., Aristech Chemical Corporation, National Distillers and Chemical Corporation, and El Paso Products Company, Appellant, v. PHILLIPS PETROLEUM COMPANY, Appellee. to 88-1171
• Court: U.S. Court of Appeals — Federal Circuit

Page 1247

865 F.2d 1247

57 USLW 2436, 9 U.S.P.Q.2d 1461

UNITED STATES STEEL CORPORATION, Hercules, Inc., Shell Oil

Company, Northern Petrochemical Company, Himont, U.S.A., Inc., Aristech Chemical Corporation, National Distillers and Chemical Corporation, and El Paso Products Company, Appellant, v. PHILLIPS PETROLEUM COMPANY, Appellee.

Nos. 88-1166 to 88-1171

United States Court of Appeals, Federal Circuit.

Jan. 10, 1989.

Kenneth E. Madsen, Kenyon & Kenyon, New York City, and Stanton Lawrence, Pennie & Edmonds, New York City, argued for appellant. Francis T. Carr, Alan T. Bowes and James Galbraith, Kenyon & Kenyon, New York City, were on the brief, for appellant, of counsel. Also James A. Power, Jr., Pennie & Edmonds, of New York City, was on the brief, for appellant.

Harry J. Roper, Neuman, Williams, Anderson & Olson, Chicago, Ill., argued for appellee. With him on the brief, were Sidney Neuman, Nicholas A. Poulos and George S. Bosy, Chicago, Ill.

Before MARKEY, Chief Judge, NIES and MICHEL, Circuit Judges.

MARKEY, Chief Judge.

Consolidated appeals from a judgment of the United States District Court for the District of Delaware, Phillips Petroleum Co. v. United States Steel Corp., 673 F.Supp. 1278, 6 USPQ2d 1065 (D.Del.1987) (Longobardi J.), that defendants United States Steel Corporation and its successor in interest, Aristech Chemical Corporation; Hercules Inc.; Shell Oil Company; Northern Petrochemical Co. and its successor in interest, National Distillers and Chemical Corporation; Himont, U.S.A., Inc.; and El Paso Products Company (collectively defendants) had not proved United States Patent No. 4,376,851 ('851 patent) invalid or unenforceable, and that Phillips Petroleum Company (Phillips) had "met the burden required to prove that each of the consolidated defendants['] propylene homopolymer products infringe[s] the claim of the '851 patent." We affirm the district court in all respects.

BACKGROUND

The basic concepts of polymer chemistry, the history of polypropylene, and the interference and court proceedings leading to Phillips' '851 patent are exhaustively explored and explicated in Judge Longobardi's full-service opinion. See Phillips Petroleum, 673 F.Supp. at 1278, 6 USPQ2d at 1065; see also Standard Oil Co. v. Montedison S.p.A., 494 F.Supp. 370, 207 USPQ 298 (D.Del.1980) (Wright, J.), aff'd, 664 F.2d 356, 212 USPQ 327 (3d Cir.1981), cert. denied, 456 U.S. 915, 102 S.Ct. 1769, 72 L.Ed.2d 174 (1982). Familiarity with those opinions being assumed, we discuss only the dispositive facts in conjunction with

defendants' arguments to which they relate.

The Claim

The sole claim of the '851 patent, which had been the count of the interference, reads:

Normally solid polypropylene, consisting essentially of recurring propylene units, having a substantial crystalline polypropylene content. ¹

The '851 patent issued on an application filed in 1956 as a continuation-in-part of application Serial No. 333,576 filed by Hogan and Banks on January 27, 1953 (the 1953 application) and of application Ser. No. 476,306 also filed by Hogan and Banks on December 20, 1954 (the 1954 application). ²

Defendants' Presentation of the Appeal

I. In attacking the holding that they had not proved the '851 patent invalid, defendants state several grounds for invalidity: (1) anticipation by U.S. Patent No. 3,112,300 (the '300 patent) to Montecatini (an Italian Corporation) as assignee of Guilio Natta et al.; (2) inadequate disclosure of specific utility under 35 U.S.C. Secs. 101 and 112; (3) obviousness in light of Patent No. 2,692,257 ('257 patent) to Standard Oil Company (Indiana) as assignee of Alex Zletz; (4) double patenting (same-invention and obviousness types).

II. Defendants attack the finding of infringement on grounds that the district court erred in: (1) concluding that defendants admitted literal infringement; (2) construing the prosecution history, determining the scope of the claim, and treating interference estoppel; and (3) considering the reverse doctrine of equivalents.

III. Defendants say the district court erred in not finding Phillips guilty of inequitable conduct in the PTO.

OPINION

I. Validity

(1) Anticipation

It is undisputed that the '300 patent ³ would anticipate the '851 patent if Phillips were not entitled to rely on the filing date of the 1953 application. See 35 U.S.C. Sec. 120 (1982). ⁴ Defendants argue that Phillips is not so entitled because the 1953 specification neither describes nor enables (35 U.S.C. Sec. 112) what they call the "broad" claim of the '851 patent.

(a) The 1953 Specification

The 1953 specification says the invention relates to the polymerization of olefins and that one "aspect of the invention is concerned with the production of novel tacky and solid polymers." That specification was before our predecessor court in In re Hogan, 559 F.2d 595, 598, 194 USPQ 527, 530 (CCPA 1977), where the court said the "application discloses solid polymers made from 1-olefin monomers having a maximum chainlength of eight carbon atoms and no branching nearer the double bond than the 4-position." The specification discloses that polymerization of propylene in the presence of a chromium oxide catalyst yields a solid polymer having a melting point in the range of 240 to 300? F, density in the range of 0.90 to 0.95, an intrinsic viscosity in the range of 0.2 to 1.0, and a weight average molecular weight range of approximately 5,000 to 20,000. The specification also discloses that the polypropylene compounds produced had individual molecular weights ranging from about 200 to about 50,000.

(b) District Court Opinion

The district court concluded that Phillips could rely on the filing date of the 1953 application (removing the '300 patent as prior art) because "[t]he properties described [in the 1953 specification] would indicate to one skilled in the art that Phillips was in possession of a new, crystalline form of propylene," 673 F.2d at 1290, 6 USPQ2d at 1072, and because undisputed evidence "demonstrated that [the specification] enable[d] the production of [the] polypropylene of the '851 claim." Id. at 1292, 6 USPQ2d at 1073.

In the district court's view, defendants' arguments and evidence missed the point:

[W]ith respect to both the written description and enablement requirements, [d]efendants have misconstrued the inquiry under section 112. They have sought to read into the '851 claim a molecular weight/intrinsic viscosity limitation which simply is not there. Nearly thirty-five years after Phillips' application was filed, they fault Phillips for not describing a polypropylene of high molecular weight/intrinsic viscosity, a property which we now know to be extremely important. A patent applicant is not required, however, to predict every possible variation, improvement[,] or commercial embodiment of his invention.

Id. at 1292, 6 USPQ2d at 1074 (citations & footnote omitted) (emphasis in original). Further evaluating the evidence, the district court noted that the "great deal of [defendants'] evidence designed to demonstrate the differences in physical and mechanical properties of their commercial polypropylenes, on the one hand, and polypropylene having an intrinsic viscosity within the range specified in the 1953 application," was such that it "in no way aids [d]efendants in their attempt to establish the inadequacy of Phillips' 1953 application." Id. at 1290 n. 5, 6 USPQ2d at 1072 n. 5. ⁵

(c) Defendants' Arguments on Anticipation

Defendants do not dispute that: (1) the properties reported in the 1953 specification indicate that the polypropylene has substantial crystallinity; (2) the 1953 specification described crystalline polypropylene; (3) Hogan and Banks were the first to polymerize crystalline polypropylene; (4) polypropylene prepared by Hogan and Banks before the 1953 filing date contained the same crystalline isotactic structure exhibited by the Natta polypropylene made with a Ziegler catalyst; and (5) the 1953 specification enabled one skilled in the art to practice the claimed invention, i.e., to make recurring units of polypropylenes "having a substantial crystalline polypropylene content."

Challenging no finding of the district court, defendants argue that the court misstated the law. Per defendants, "[t]he question is not what the claim 'sets forth,' but what it embraces. If it embraces subject matter for which no adequate basis exists in the underlying disclosure, the claim is too broad." Pointing to differences in intrinsic viscosity and average molecular weight, defendants argue that the 1953 disclosure does not "reasonably convey[ ] to the artisan that the inventor had possession at the time [1953] of all of the later-claimed subject matter," and that "the scope of enablement provided to that artisan by the prior application was [not] reasonably commensurate with the full scope of protection sought by the later claim." (Emphasis defendants'). Stripped to its basics, defendants' argument is one of "overbreadth", but that word alone has long ago been discredited as a basis for determining sufficiency of a specification. See In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369, 58 CCPA 1069 (1971) (Patent Office should be concerned with support or non-support of a generic term, not its breadth); In re Hogan, 559 F.2d 595, 605-06, 194 USPQ 527, 537 (CCPA 1977) ("Rejections under Sec. 112, first paragraph, on the ground that the scope of enablement is not commensurate with the scope of the claims, orbit about the more fundamental question: To what scope of protection is the applicant's particular contribution to the art entitled?").

It is true that adequacy of support is judged in relation to the scope of the claims, see In re Moore, 439 F.2d 1232, 1236, 169 USPQ 236, 239, 58 CCPA 1042 (1971); In re Borkowski, 422 F.2d 904, 909, 164 USPQ 642, 646, 57 CCPA 946 (1970), but defendants fail to recognize that "application sufficiency under Sec. 112, first paragraph,...