Union Carbide Chemicals v. Shell Oil Co.

• Decision Date: 28 August 2001
• Docket Number: No. CIV A 99-CV-274-SLR.,No. 99-CV-846-SLR.,CIV A 99-CV-274-SLR.,99-CV-846-SLR.
• Court: U.S. District Court — District of Delaware
• Parties: UNION CARBIDE CHEMS. & PLASTICS TECH. CORP. Plaintiff, v. SHELL OIL CO., Shell Chemical Co., and Cri Catalyst Co., Defendants, Shell Oil Co., Plaintiff, v. Union Carbide Corp. and Union Carbide Chems. & Plastics Tech. Corp. Defendants,

163 F.Supp.2d 426

UNION CARBIDE CHEMS. & PLASTICS TECH. CORP. Plaintiff, v. SHELL OIL CO., Shell Chemical Co., and Cri Catalyst Co., Defendants, Shell Oil Co., Plaintiff, v. Union Carbide Corp. and Union Carbide Chems. & Plastics Tech. Corp. Defendants,

No. CIV A 99-CV-274-SLR.

No. 99-CV-846-SLR.

United States District Court, D. Delaware.

August 28, 2001.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Jeffrey B. Bove, Esquire, R. Eric Hutz, Esquire, and Thomas A. Stevens, Esquire of Connolly, Bove, Lodge & Hutz, Wilmington, Delaware. Counsel for plaintiff, counter-defendant. Steven J. Glassman, Esquire, Benjamin C. Hsing, Esquire, and Kimberly D. Branch, Esquire of Kaye, Scholer, Fierman, Hays & Handler, New York, New York. Of counsel for plaintiff, counter-defendant.

Allen M. Terrell, Jr., Esquire and Jeffrey L Moyer, Esquire of Richards, Layton & Finger, Wilmington, Delaware. Counsel for defendant, counter-plaintiff. William C. Slusser, Esquire of Slusser & Frost, Houston, Texas and John D. Norris, Esquire of Howrey, Simon, Arnold & White, Houston, Texas. Of counsel for defendant, counter-plaintiff.

OPINION

SUE L. ROBINSON, Chief Judge.

I. INTRODUCTION

Union Carbide Chemicals & Plastics Technology Corporation is the assignee of all rights, title, and interest in and to U.S. Patent Nos. 4,916,243 ("the '243 patent"); 4,908,343 ("the '343 patent"); and 5,057,481 ("the '481 patent"). These patents relate to improved catalysts used to produce ethylene oxide. Ethylene oxide is a building block chemical used to make numerous household products including shampoo, antifreeze, and laundry detergent.

Generally speaking, ethylene oxide is made by combining ethylene and oxygen. When ethylene and oxygen are chemically combined, three main products result — ethylene oxide, carbon dioxide, and water. The carbon dioxide and water are undesirable byproducts of the chemical reaction. The efficiency of the reaction is measured by comparing the amount of ethylene oxide produced to the amount of ethylene and oxygen used in the process. Scientists, including those employed by the parties in this litigation, have tried for years to improve the efficiency of the reaction. Simply put, they want to produce more ethylene oxide and less carbon dioxide and water.

One well known technique of increasing the efficiency of the reaction is to combine the ethylene and oxygen in the presence of a silver catalyst. When a silver catalyst is present, oxygen combines with the silver and, through that combination, oxygen is caused to react with ethylene to form ethylene oxide. See the '343 patent, col. 2, lns. 10-15. Since at least the 1930s, scientists have been trying to improve the silver catalysts to increase the efficiency of the reaction and the life of the catalyst. One way to improve the silver catalysts is to add other metals to the silver. These other metals are referred to as "promoters."

Union Carbide Chemicals & Plastics Technology Corporation filed this patent infringement action on May 3, 1999 against defendant Shell Oil Company, Shell Chemical Company, and CRI Catalyst Company (collectively, "Shell"), alleging that Shell infringes the '243 patent, the '343 patent, and the '481 patent (collectively, "the patents-in-suit").¹ Shell countered that all three patents-in-suit were invalid and not infringed. Union Carbide Corporation joined this litigation on January 4, 2000. Union Carbide Chemicals & Plastics Technology Corporation and Union Carbide Corporation are referred to collectively as "Union Carbide."

Shell Oil Company had filed suit against Union Carbide in April 1999 in Houston, Texas. That case was transferred here and consolidated with this action. The consolidated action was tried to a jury over twelve days. After two and one-half days of deliberations, the jury found that Shell did not infringe any claims of the patents-in-suit and that each asserted claim was invalid. The jury also answered willful infringement and damages interrogatories, checking "No" for all three willful infringement questions and finding $0.00 in damages based upon a 0% royalty.

Union Carbide is incorporated in Delaware and has its principal place of business in Connecticut. (D.I.75, ¶¶ 4-5) Shell is a Delaware corporation with its principal place of business in Texas. (D.I. 75, ¶¶ 7-9; D.I. 78 ¶¶ 7-9) The court has jurisdiction over this action under 28 U.S.C. §§ 1331 and 1338. Venue is proper in this judicial district by virtue of 28 U.S.C. §§ 1391(c) and 1400(b).

II. BACKGROUND

A. The Patents-in-Suit and Asserted Claims

The three patents-in-suit can be better understood by grouping them into two categories. Throughout this litigation, the parties referred to the '243 patent as "the synergy patent" and the '343 and '481 patents as "the salt patents."

The application leading to the '243 patent was a continuation of prior U.S. application Ser. No. 763,273 filed August 7, 1985, which was a continuation of application, now abandoned, Ser. No. 497,231 filed May 23, 1983, which was a continuation of application, now abandoned, Ser. No. 116,292 filed February 13, 1980, now abandoned, which was a continuation-in-part of Ser. No. 021,727 filed Mar. 20, 1979, now abandoned. As described in its specification, the '243 patent comprises a supported silver catalyst containing

a combination of (a) cesium and (b) at least one other alkali metal selected from the group consisting of lithium, sodium, potassium and rubidium, wherein (a) and (b) are present in amounts in relation to the amount of silver therein sufficient to increase the efficiency of the ethylene oxide manufacture to a value greater than the efficiencies obtainable under common operating conditions from respective catalysts which are the same as said catalyst except that instead of containing both (a) and (b), one contains the respective amount of (a), and the other contains the respective amount of (b).

('243 patent, col. 1, lns. 19-28)

Claim 4, which is dependent of claim 1, is the only asserted claim of the '243 patent.

1. In the continuous process for the production of ethylene oxide by the vapor phase oxidation of ethylene with molecular oxygen provided as an oxygen-containing gas at a temperature of from about 200~C. to 300~C. in the presence of at least about one mole percent of carbon dioxide and an organic chloride in the gaseous feed stream and in the presence of a supported, silver-containing catalyst in a fixed bed, tubular reactor used in commercial operations to form ethylene oxide, wherein said supported, silver-containing catalyst contains 2 to 20 weight percent silver deposited on a support which is in a form and size for use in the reactor, wherein (i) the specific reaction conditions of the ethylene oxide process; (ii) the specific catalyst support characteristics and (iii) the specific silver deposition method comprise an ethylene oxide production system, the improvement in which the catalyst comprises silver deposited on an alpha-alumina macroporous support in a first amount having a surface area less than 10 m2/ g and contains a combination of (a) cesium in a second amount and (b) at least one other alkali metal selected from the group consisting of lithium, sodium, potassium and rubidium in a third amount, which combination comprises (a) and (b) in amounts in relation to the amount of silver in the catalyst sufficient to provide an efficiency of ethylene oxide manufacture that is greater than the efficiencies obtainable in the same ethylene oxide production system, including the same conversions, than (i) a second catalyst containing silver in the first amount and cesium in the second amount, and (ii) a third catalyst containing silver in the first amount and the alkali metal in the third amount, wherein the combination of silver, cesium and alkali metal in said catalyst is characterizable by an efficiency equation:

efficiency % = b₀ ÷ b₁(BG) + b₂ (BCs) +

                    — b3j BAj + b4(BG)2 + b5(BCs)2
                    +
                    — b6j BAj2 ÷ b7 (BG • BCs) ÷
                      (BG)—b8j BAj + (BCs)—b9j BAj
                  where BA1 =BRb
                  BA2=BK
                

BA₃=BNa,

BA₄=BLi, and where the coefficient b₀ through b_9j and BG, BRb, BK, BNa, BLi and BCs are determined from a composite design set of experiments using the same ethylene oxide production system for the independent variables silver, cesium and alkali metal, and wherein BG is the difference of the average value of the silver content from the silver content used in the design set, BCs is the difference of the average value of the cesium content from the cesium content used in the design set ... and BLi is the difference of the average value of the lithium content from the lithium content used in the design set.

4. The process of claim 1 wherein said alkali metal is lithium.

('243 patent, col. 29, In. 53 — col. 30, In. 54)

In other words, the invention is directed to a continuous process for the production of ethylene oxide in the presence of a silver-containing catalyst, wherein the catalyst contains (i) silver in a first amount, (ii) cesium in a second amount, and (iii) at least one other alkali metal selected from the group consisting of lithium, sodium, potassium and rubidium in a third amount. Cesium and lithium² are combined in sufficient amounts, relative to the amount of silver, so as to provide an efficiency for ethylene oxide production that is greater than the efficiency obtained by a catalyst which contains silver in the first amount and cesium in the second amount, or a catalyst that contains silver in the first amount and lithium in the third amount. The '243 patent describes the use of a design set of experiments and the use of a corresponding efficiency equation to determine which combinations of alkali metals achieve a synergistic combination.

The '343 and '481 patents are both continuations-in-part of prior U.S. application Ser. No. 18,809, filed Feb. 20, 1987, now abandoned, which was a continuation of U.S. Ser. No. 640,269, filed ...