Wellman Inc. v. Eastman Chem. Co.
| Decision Date | 11 August 2011 |
| Docket Number | No. 2010–1249.,2010–1249. |
| Citation | 98 U.S.P.Q.2d 1505,642 F.3d 1355 |
| Parties | WELLMAN, INC., Plaintiff–Appellant,v.EASTMAN CHEMICAL COMPANY, Defendant–Appellee. |
| Court | U.S. Court of Appeals — Federal Circuit |
OPINION TEXT STARTS HERE
Barbara L. Moore, Edward Angell Palmer & Dodge LLP, of Stamford, CT, argued for plaintiff-appellant. With her on the brief was Scott D. Wofsy, Barry Kramer, and Brian R. Pollack; Denise Seastone Kraft, John Reed and Aleine Porterfield, of Wilmington, DE.Kenneth R. Adamo, Jones Day, Cleveland, OH, of argued for defendant-appellee. With him on the brief were Regan J. Fay, Thomas R. Goots, Leozino Agozzino, Anthony T. Jacono and Peter D. Siddoway; and Lawrence D. Rosenberg, of Washington, DC. Of counsel on the brief was Mary B. Graham, Morris, Nichols, Arsht & Tunnell, of Wilmington, DE.Before RADER, Chief Judge, LOURIE, Circuit Judge, and WHYTE, District Judge.1RADER, Chief Judge.
The United States District Court for the District of Delaware granted Eastman Chemical Company's (“Eastman's”) motion for summary judgment of invalidity of U.S. Patent Nos. 7,129,317 (the “'317 patent”) and 7,094,863 (the “'863 patent”) (collectively, the “Wellman patents”) for indefiniteness and granted-in-part Eastman's motion for summary judgment of invalidity for failure to disclose the best mode. Because the specifications of the Wellman patents do not set forth the best mode of carrying out the invention contemplated by at least one of the inventors, this court affirms the district court's judgment with respect to best mode. Because a person of ordinary skill could understand the bounds of the patent claims, however, this court reverses the district court's judgment with respect to indefiniteness.
The Wellman patents disclose polyethylene terephthalate (“PET”) resins for use in plastic beverage containers. The patents claim priority to the same applications and share similar specifications. The patents state that prior art PET resins produced bottles that shrank or grew hazy from crystallization when “hot-filled” with product at temperatures of between about 180° C and 205° C. '317 patent col.2 ll.1–9; '863 patent col.2 ll.9–17. To overcome these problems, the Wellman patents disclose “slow-crystallizing” PET resins that purportedly retain exceptional clarity by delaying the onset of crystallization relative to conventional PET resins. '317 patent col.3 ll.15–25; '863 patent col.3 ll.25–35. The disclosed resins also purportedly reduce haze formed during the production process. '317 patent col.8 ll.39–47; '863 patent col.3 ll.46–54.
The Wellman patents define “slow-crystallizing” PET resins as those possessing a significantly higher heating crystallization exotherm peak temperature (T CH s compared with conventional PET resins, which use the metallic element antimony as a catalyst. '317 patent col.3 ll.16–20; '863 patent col.3 ll.25–30. T CH is the temperature at which the sample crystallizes the fastest during heating in a differential scanning calorimetry (“DSC”) machine. '317 patent col.7 ll.55–58, col.8 ll.48–53; '863 patent col.7 ll.62–65, col.8 ll.55–65. Thus, Figure 1 of each patent shows a slow-crystallizing, titanium-catalyzed PET resin with a T CH of 144.2°C. By comparison, Figure 3 shows a conventional antimony-catalyzed PET resin with a T CH of 130.6°C. '317 patent col.8 ll.7–22; '863 patent col.8 ll.14–29.
By the time Wellman filed the application leading to the '317 patent in May 2004, it had commercialized a slow-crystallizing, hot-fill PET resin called Ti818. According to Dr. Steven Nichols, an inventor of the Wellman patents, Ti818 had the following composition as of May 2004:
+-----------------------------------------+
¦Parameter ¦Amount ¦
+------------------------------+----------¦
¦Isophthalic Acid ¦1.4 mol % ¦
+------------------------------+----------¦
¦Diethylene Glycol ¦1.9 mol % ¦
+------------------------------+----------¦
¦Trimellitic Anhydride (“TMA”) ¦500 ppm ¦
+------------------------------+----------¦
¦Carbon–Black reheat agent ¦7.5 ppm ¦
+------------------------------+----------¦
¦Elemental Cobalt ¦30 ppm ¦
+------------------------------+----------¦
¦Titanium-based catalyst ¦7 ppm (Ti)¦
+------------------------------+----------¦
¦Phosphorus ¦5 ppm ¦
+------------------------------+----------¦
¦Potassium ¦25 ppm ¦
+-----------------------------------------+
Wellman did not disclose the recipe for Ti818 in its patents. Nor did Wellman disclose any other specific PET resin recipes. Instead, Wellman provided ranges of concentrations for categorized lists of possible ingredients. For example, the patents identify a preferred range of isophthalic acid, a raw ingredient used to synthesize PET, of between about 1.6 and 2.4 mole percent. '317 patent col.20 l.65–col.21 l.2; '863 patent col.22 ll.30–34. Ti818 contained 1.4 mole percent isophthalic acid. Similarly, the Wellman patents identify a preferred concentration of 1.6 mole percent for diethylene glycol, another raw ingredient used to synthesize PET. '317 patent col.20 l.65–col.21 l.2; '863 patent col.22 ll.30–34. Ti818 contained 1.9 mole percent diethylene glycol.
The Wellman patents disclose optional heat-up rate (“HUR”) additives for the PET resin that improve the resin's reheating profile during bottle blow molding. 317 patent col.11 ll.42–47; '863 patent col.13 ll.1–2. In contrast, the Wellman patents describe carbon-based HUR additives as “one embodiment” of the invention. '317 patent col.11 ll.1–2; '863 patent col.12 ll.23–24. The patents state that “suitable” carbon-based additives include carbon black, and note that U.S. Patent No. 4,408,004 (“Pengilly”) discloses “satisfactory” carbon black HUR additives. '317 patent col.11 ll.8–12; '863 patent col.12 ll.30–34. Pengilly discloses a preferred average particle size for carbon black in a range of between about 15 to about 30 nm. Pengilly col.4 ll.21–22. Wellman's Ti818 recipe includes a HUR additive called N990, which is a specific type of carbon black with a 290 nm particle size.
Notably, two provisional applications in the chain of applications leading to the Wellman patents, respectively filed May 21, 2003 and April 6, 2004, characterize carbon-based HUR additives as “preferabl[e]” and copper chromite spinels as “suitable.” On May 20, 2004, the day before Wellman filed the nonprovisional application leading to the '317 patent, Wellman filed a third provisional application changing its preference from a carbon-based HUR to a spinel.
Claim 1 of the '317 patent is representative of the asserted claims and states as follows:
1. A polyethylene terephthalate resin, comprising:
less than about 25 ppm of elemental antimony, if any; and
more than about 5 ppm of elemental phosphorus; and
wherein the polyethylene terephthalate resin has a heating crystallization exotherm peak temperature (T CH ) of more than about 140° C. at a heating rate of 10° C. per minute as measured by differential scanning calorimetry; wherein the polyethylene terephthalate resin has an absorbance (A) of at least about 0.18 cm –1 at a wavelength of 1100 nm or at a wavelength of 1280 nm; and
wherein the polyethylene terephthalate resin has an L* luminosity value of more than about 70 as classified in the CIE L*a*b* color space.
'317 patent col.26 ll.9–23 (emphasis added). All of the asserted claims include T CH limitations.
Wellman alleges that Eastman directly infringes claims 1–5, 7, 8, 11–14, 16–21, 24, 32, 33, 36, 38, 39, 44, 93, 94, 96–102, and 104 of the '317 patent. Wellman further alleges that Eastman indirectly infringes claims 1, 3–6, 8, 9, 11, 15, 17, 24, and 62 of the '863 patent.
On August 14, 2009, Eastman moved for summary judgment of invalidity on the grounds of indefiniteness and failure to set forth the best mode of practicing the claimed invention. The district court granted-in-part Eastman's best mode summary judgment motion, holding invalid all of the asserted claims except dependent claims 5, 17, and 94 of the '317 patent and claims 6 and 9 of the '863 patent—the five claims that Wellman contends do not encompass Ti818. Wellman, Inc. v. Eastman Chem. Co., 689 F.Supp.2d 705, 712, 716 (D.Del.2010).
The district court found that at least inventor Dr. Nichols viewed Ti818 as the best mode of practicing the invention at the time of filing. The district court also found that inventor David Thompson preferred carbon black N990 as the HUR additive for practicing the invention. Id. at 715–16. The court further found that the Wellman patents do not disclose Ti818 sufficiently to enable one of ordinary skill in the art to identify it. Id. The court emphasized that the Wellman patents do not disclose either the formula or tradename of Ti818, even though it was Wellman's operative PET resin formula at the time of filing its patents. Id. The district court acknowledged that the disclosure of ranges of ingredients encompassing the best mode can satisfy the best mode requirement, but found that the patents disguise Ti818 by disclosing “preferred” ranges for certain ingredients that do not encompass the actual concentrations of those ingredients in the Ti818 formula. Id. at 714–15.
Additionally, the district court found that the Wellman patents do not disclose the use of carbon black N990. Id. at 715. Based on testimony of inventor Thompson and his supervisor James Bruening, the court found that Wellman instead sought to maintain the use of N990 as a trade secret. Id. at 710, 715–16...
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