Opinion
No. 2:97-CV-450
October 31, 2000
MEMORANDUM
This patent infringement action was originally brought by Eastman Chemical Company ("Eastman") against BASF Aktiengesellschaf and BASF Corporation (collectively "BASF") seeking a declaratory judgment that Eastman did not infringe a BASF patent. BASF then filed a counterclaim against Eastman for infringement of the BASF Patent. BASF also filed third party claims against Valent U.S.A. Corporation ("Valent") and Tomen Agro, Inc. ("Tomen") alleging these companies are also infringing the BASF patent.
Before the Court are the Motions for Summary Judgment of Non-Infringement filed by Eastman, Tomen and Valent (Court File Nos. 249, 247, 246). BASF has filed a response to each motion (Court File Nos. 274, 275, 276). Eastman, Tomen and Valent have each replied to BASF's opposing brief (Court File Nos. 289, 290, 285). After carefully considering the excellent arguments advanced in the respective briefs, and the applicable law, the Court has concluded BASF has failed to establish a genuine issue of material facts exists. For the following reasons, the Court will therefore GRANT all three motions.
I. Standard of Review
Under Fed.R.Civ.P. 56(c), the Court will render summary judgment if there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Patent cases are subject to summary judgment just as are other cases. Phillips Petroleum Co. v. Huntsman Polymer Corp., 157 F.3d 806, 870 (Fed. Cir. 1998). The burden is on the moving party to conclusively show no genuine issue of material fact exists, Lansing Dairy, Inc. v. Espy, 39 F.3d 1339, 1347 (6th Cir. 1994); Kentucky Div., Horsemen's Benev. Prot. Assoc., Inc. v. Turfway Park Racing Assoc., Inc., 20 F.3d 1406, 1411 (6th Cir. 1994), and the Court must view the facts and all inferences drawn therefrom in the light most favorable to the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986); Oakland Gin Co., Inc. v. Marlow, 44 F.3d 426, 429 (6th Cir. 1995); City Management Corp. v. U.S. Chemical Co., Inc., 43 F.3d 244, 250 (6th Cir. 1994).
Once the moving party presents evidence sufficient to support a motion under Rule 56, the nonmoving party is not entitled to a trial merely on the basis of allegations. The nonmoving party may not rest on its pleadings, but must come forward with some significant probative evidence to support its claim. Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986); Lansing Dairy, 39 F.3d at 1347; Horsemen's Benev., 20 F.3d at 1411; see also Guarino v. Brookfield Township Trustees, 980 F.2d 399, 404-06 (6th Cir. 1992) (holding courts do not have the responsibility to search sua sponte the record for genuine issues of material fact); Sweats Fashions, Inc. v. Pennill Knitting Co., Inc., 833 F.2d 1560, 1562-63 (Fed. Cir. 1987). If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to summary judgment. Celotex, 477 U.S. at 323.
The Court determines whether sufficient evidence has been presented to make the issue of fact a proper jury question, but does not weigh the evidence, judge the credibility of witnesses, or determine the truth of the matter. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986); 60 Ivy Street Corp. v. Alexander, 822 F.2d 1432, 1435-36 (6th Cir. 1987). The standard for summary judgment mirrors the standard for directed verdict. The Court must decide "whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law." Anderson, 477 U.S. at 251-52. There must be some probative evidence from which the jury could reasonably find for the nonmoving party. If the Court concludes a fair-minded jury could not return a verdict in favor of the nonmoving party based on the evidence presented, it may enter a summary judgment. Id.; Lansing Dairy, 39 F.3d at 1347; Horsemen's Benev., 20 F.3d at 1411.
II. Relevant Facts
A. BASF's Patent
On June 2, 1992, United States Patent No. 5,118,856 ("`856 patent") issued and was assigned to BASF. The `856 patent concerns a process for preparing cyclohexanedione derivatives, referred to throughout this Memorandum as Triones. BASF alleges Valent, Eastman, and Tomen have acted (and continue to act) to make and sell a product which infringes the `856 patent. Specifically, BASF believes Valent sells a grass herbicide in which the active ingredient is a chemical compound referred to as Clethodim. BASF claims Clethodim is made using a Trione obtained from Tomen or Eastman.
Triones are an intermediate class of organic compounds. Triones have no know use except as an intermediate chemical compound to be further reacted with other chemical agents to produce herbicides.
BASF alleges Eastman and Tomen make this Trione using the `856 patent process, or a process that infringes upon the `856 patent.
B. The BASF Patent's Claims
Triones have been known in the chemical field for many years and this knowledge precedes BASF's patent. Moreover, processes for making Trione were known prior to BASF's invention. Finally, the individual steps involved in BASF's claimed process were known to the prior art. Perhaps partly because of the existence of this prior art and knowledge of processes for making Trione, BASF encountered some difficulty in obtaining its patent. BASF's patented invention is the unique process described in its patent. Claim 1 of the `856 patents reads as follows:
1. In the process for the preparation of cyclohexanedione derivatives of the formula I
where R is C2-C8-alkenyl, C5-C12-cycloalkyl with 0-4 olefinically unsaturated bonds. C2-C8-alkylthioalkyl 2-chloropehenylthionethyl, C6-C12-bicyclo-alkyl with 0-3 olefinically unsaturated bonds, unsubstituted phenyl or phenyl substituted with 1 to 2 halogens and/or lower alkyl groups, and R2 is alkyl of 1-6 carbon atoms, by reaction of an alpha-beta unsaturated ketone with a dialkyl malonate in the presence of a solvent, which process includes the addition of a base, a decarboxylation step, a hydrolyzation step and an acylation step, the improvement comprising: the reaction of an beta-unsaturated ketone of the formula II
with a dialkyl malonate in the presence of a base to give the alkoxycarbonylcyclohexenolone or its salt (III)
and acylation hydrolysis and decarboxylation of (III), R being the alcohol radical of the malonate and R1 having the above meaning, the process steps comprising:
(a) reacting the beta-unsaturated ketone (ii) in the presences of a base, with the dialkyl malonate in a solvent from which the alcohol liberated from the malonate can be distilled off,
(b) distilling to eliminate the alcohol,
(c) reacting the salt of the alkoxycarbonylcyclohexenolone with a carboxylic acid halide having the structural formula R2COHal, where R2 is alkyl of not more than 6 carbon atoms to form a product
(d) treating the product of step (c), where appropriate, after removal of excess acyl halide, with an acylation catalyst, to form a further product, and
(e) hydrolyzing and decarboxylating the product of step (d) to form the compound of formula I.
(Court File No. 274, Ex. A, United States Patent No. 5,118,856 ("`856 Patent"), Col. 7, Ln. 29 — Col. 8, Ln. 29).
C. The Eastman Process
According to Dr. Thomas M. Harris, Ph.D., BASF's expert, in Eastman's process, an beta-unsaturated ketone is reacted with dialkyl malonate in the presence of a base (Exh. to Court File No. 274, Expert Report of Dr. Thomas M. Harris, Ph.D. ("Harris Report"), p. 13). Because the posture of the case requires the Court to construe the evidence in the light most favorable to BASF, to the greatest extent possible the Court will utilize Dr. Harris's description of the Eastman process as contained in his report. This first reaction takes place in toluene, a solvent from which the alcohol liberated from the malonate can be distilled (Id. at 13-15).
Dr. Harris is the Centennial Professor of Chemistry and Associate Director, Center in Molecular Toxicology at Vanderbilt University. He has authored or coauthored over 225 publications, including many in the area of enolate chemistry. He holds a Ph.D. in Organic Chemistry from Duke University and a B.S. with High Distinction in Chemistry from the University of Rochester.
According to Dr. Harris, the sodium salt or enolate of the alkoxycarbonylcyclohexenolone is produced (Id. at 17). At the end of this first step, Eastman then adds water and aqueous hydrochloric acid (Id. at 17; BASF's Markman Hearing Exh. No. 15, Rebuttal Expert Report of Dr. David C. Baker, Ph.D. ("Baker Report"), p. 7). This procedure neutralizes the reaction mixture, "killing" the reaction, and gives as a product the neutral alkoxycarbonylcyclohexenolone ("cyclohexenolone") compound with a free hydroxy group. The addition of water and HCl creates a two-phase system, comprised of an aqueous layer and an organic layer. The neutral cyclohexenolone moves into the organic layer, which is then dried. Any salt present at this point would be extracted into the aqueous layer and washed away (Harris Report at p. 17; Baker Report. at p. 8).
After the formation of the two-phase system, Eastman uses a combination of decantation and distillation to remove the methanol present in the reaction mixture as completely as possible (Harris Report at pp. 18-19). A carboxylic acid anhydride, the acylating agent, and 4-dimethylaminopyridine (DMAP), a catalyst, are then added to the toluene mixture containing the free-hydroxy form of the cyclohexenolone (Baker Report at pp. 9-10). This results in the formation of C-acylated esters which are then hydrolized and decarboxylated to give the end product, Trione (Baker Report at pp. 17; Harris Report at pp. 25-27).
BASF's expert contends addition of DMAP to the toluene mixture containing the neutral cyclohexenolone yields a cyclohexenolone salt or enolone that may be extracted into water (Harris Report at p. 21). Dr. David C. Baker, Ph.D., Eastman's expert, concedes that, in the absence of the acid anhydride (also referred to as "propionic anhydride"), addition of DMAP will result in substantial salt formation (Baker Report pp. 8-9). The salt thus formed, however, is chemically different from the sodium salt formed when an beta-unsaturated ketone is reacted with dialkyl malonate in the presence of a base during the first step of Eastman's process. Specifically, instead of an alkali metal ion, the cation for the species of salt produced when DMAP is added would be the 4-dimethylaminopyridinium ion. Such a salt would be more soluble in an organic solvent such as toluene than an alkali metal salt, and reactivity would be expected to differ between the two species (Id.). BASF's expert concluded the resultant enolate anion, formed when DMAP is added to the toluene mixture containing the neutral cylclohexenolone compound, is then directly acylated using the propionic anhydride to yield O-acylated esters, that, under the influence of DMAP, are rearranged to form C-acylated esters (Harris Report at pp. 21, 25). These C-acylated esters then undergo decarboxylation and hydrolysis to produce Trione (Id. at p. 27).
D. Eastman's Claim for Summary Judgment
Eastman claims it is entitled to summary judgment "because its accused process is missing a step having two limitations of BASF's claimed process," (Eastman's Memorandum In Support of Its Motion For Summary Judgment, p. 1). Eastman focuses its claim for summary judgment on step (c) of BASF's patent. Eastman contends its process "does not use a carboxylic acid halide and does not react the salt of the alkoxycarbonylcyclohenenolone with a carboxylic acid halide or any other carboxylic compound" (Id. at p. 3).
As Eastman has narrowed its challenge to step (c) of the claims, the Court has focused its discussion on this claim but, for the sake of completeness, has also discussed the other steps albeit in an abbreviated fashion.
III. Discussion
A. Infringement Analysis
Patent infringement actions are wholly statutory. Deepsouth Packing Co. v. Laitram Corp. 406 U.S. 518 (1972). In this case, BASF maintains Eastman is liable for direct infringement pursuant to 35 U.S.C. § 271(a), which provides:
Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.
BASF's creative innovation is in the process or arrangement of steps previously known in the art, and this process constitutes the protected invention. Because the `856 patent claims a chemical process for making Trione, Eastman is liable for infringement if it produces Trione using the same process or its "equivalent."
"An infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be infringed. The second step is comparing the properly construed claims to the device accused of infringing." Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (Markman I). Claim construction is a matter of law, for the Court to decide. Id. at 979. The United States Court of Appeals for the Federal Circuit has directed trial courts to consider three sources, the claims, the specification and the prosecution history, when construing the meaning of claim language. Id. "The general rule is that terms in the claim are to be given their ordinary and accustomed meaning:"
But claim construction is not philosophy; we need not wring our hands when considering the implications of a metaphysical analysis of claim terms. Instead, we need only recognize that claim construction is firmly anchored in reality by the understanding of those of ordinary skill in the art.
K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1362, 1365 (Fed. Cir. 1999). Claim interpretation has previously been decided in an earlier issued opinion (Court File No. 475 (the "Markman decision" or the "Markman opinion")), and the construction given in that decision to key disputed terms is used here in deciding the infringement issue.
Once the Court has properly construed disputed claim language, the Court then "compares the properly construed claim to the accused device to determine, as a matter of fact, whether all of the claim limitations are present in the accused device, either literally or by a substantial equivalent." Id. at 1362. A determination of non-infringement is only appropriate for summary judgment where the moving party demonstrates, even when all evidence in the record is viewed in the non-movant's favor, the allegedly infringing process clearly lacks an essential limitation of the patented process. K-2 Corp., 191 F.3d at 1366. "Often . . . the composition of the allegedly infringing process or product is undisputed. In such a case, literal infringement collapses into claim construction — a matter of law — amenable to summary judgment." Desper Prod., Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1332-1333 (Fed. Cir. 1998).
Because BASF bears the burden of proving infringement at trial, and because BASF is the non-moving party on this motion, BASF is the party responsible for coming forward with evidence that, if true and accepted by the trier of fact, would support a finding of literal infringement or infringement under the doctrine of equivalents. SmithKline Diagnostics Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988).
BASF contends Eastman's process literally infringes all the steps of its protected process including step (c) (BASF's Memorandum of Law In Opposition To Eastman's Motion For Summary Judgment, Court File No. 274). Since step (c) is the disputed step, BASF devotes most of its argument to this step. BASF argues "there is no dispute that Eastman's Trione process employs an acylation step, in which an acylating agent (propionic anhydride) is used to give the product intended as a result of step (c) of claim 1 (Id. at p. 13). According to BASF, Eastman's process literally meets the first limitation recited in step (c) because Eastman ultimately executes an acylation step using propionic anhydride to give the same product, O-acylated esters, formed by the acylation reaction in step (c) of BASF's process. Alternatively, BASF argues "even assuming that Eastman's contention that it acylates a neutral compound rather than an enolone salt were true, there still are no `substantial differences' between the Eastman process and step (c) of claim 1." (Id. At 15). BASF argues, therefore, if Eastman does not literally infringe, it infringes under the doctrine of equivalents.
Using the two step analysis stated above, the Court has examined each step of the claim, addressing steps (a), (b), (d), and (e) first. After considering these steps, the Court's discussion turns to the most hotly disputed step, step (c). Where the Court has concluded a jury could find the Eastman process literally infringes the patent, discussion of the doctrine of equivalents has been omitted as unnecessary.
Claim 3, the only other claim, is dependent upon Claim 2 and therefore cannot be infringed if Claim 2 is not infringed. Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989).
When viewed in the light most favorable to BASF, the record would support a finding Eastman's process literally meets every limitation of step (a) of Claims 1 and 2. This step involves reacting an "beta-unsaturated ketone (II) in the presences of a base, with the dialkyl malonate in a solvent from which the alcohol liberated from the malonate can be distilled off," to give either the alkoxycarbonylcyclohexenolone or its salt. In his report, BASF's expert provides evidence Eastman begins with an beta-unsaturated ketone reacted with dialkyl malonate in a solvent, toluene, from which the alcohol liberated from the malonate may be removed by distillation. The same report also provides evidence allowing a conclusion the expected product of this reaction is the sodium salt of the alkoxycarbonylcyclohexenolone, one of the expected products of the reaction taught in the `856 patent.
In its Markman opinion, the Court determined the term "solvent," as used in the patent, contained an additional restriction limiting the class of available solvents to those which are not solvents for the salt of the alkoxycarbonylcyclohexenolone, represented by formula III in the patent.
Toluene, as taught by the `856 patent, meets this limitation. Similarly, the Court determined formula III of the patent represents a metal salt of the cyclohexenolone. The sodium salt allegedly produced during the initial phase of the Eastman process qualifies as a "metal salt," or more specifically an alkali metal salt. The evidence in the record would therefore support a finding the first reaction step in the Eastman process meets all of the limitations identified in step (a) of Claims 1 and 2 of the `856 patent.
C. Claims 1 2, Step (b)
1. Literal Infringement
Eastman's process does not literally meet the limitations imposed in step (b) of Claims 1 and 2 of the `856 patent. The Court has previously construed the phrase "distilling to eliminate the alcohol" to literally mean all of the alcohol present in the reaction mixture at this point, from whatever source derived, must be removed by distillation (Court File No. 475, pp. 16-17). The Court based this construction largely on two factors: 1) the alcohol must be removed to avoid a detrimental reaction between the alcohol and the carboxylic acid halide in step (c); and 2) distillation is the only means of removing the alcohol taught in the patent. In Eastman's process, most of the alcohol is removed by decantation prior to the "distillation" step observed by BASF's expert during his tour of Eastman's Trione production facility. Because Eastman employs a different method, decantation followed by distillation, than the method employed in BASF's process, distillation only, and the language of the `856 patent literally contemplates removal of all the alcohol by distillation, no reasonable juror could find Eastman's process does literally meets all of the limitations set forth in step (b).
2. Doctrine of Equivalents
Absent literal infringement, Eastman's process might still infringe the `856 patent under the doctrine of equivalents. Warner-Jenkinson v. Hilton Davis Chem. Co., 520 U.S. 17, 28-29 (1997). A determination of whether infringement under the doctrine of equivalents exists involves an objective, element-by-element inquiry. Id. That inquiry should focus on whether the differences, if any, between each limitation in the patent claim and the corresponding aspect of the accused process or device are "insubstantial" in nature. Id. at 40; Fonar Corp. v. General Elec. Co., 107 F.3d 1543, 1555 (Fed. Cir. 1997). "Infringement under the doctrine is a question of fact. . . ." Fonar, 107 F.3d at 1555. At the summary judgment phase, the Court must address the question of whether BASF has presented evidence that would allow a rational juror to conclude the differences between the methods of alcohol removal employed by the two processes are so insubstantial as to render them equivalents. When viewed from a scientific standpoint, distillation and decantation are fundamentally different. The Court seriously doubts a rational juror could find insubstantial difference between these two methods. However, giving BASF the benefit of the doubt and resolving this issue in the light most favorable to BASF, the Court will leave it to the trier of fact to determine whether the method employed in the Eastman process for removing alcohol from the reaction mixture is the equivalent of the distillation-only method taught in the `856 patent.
Traditionally, the doctrine of equivalents analysis requires application of a tripartite test.
Warner-Jenkinson, 520 U.S. at 24-28, 39-40. The trier of fact must determine whether the element under scrutiny in the accused device or process performs the same function, in substantially the same way, to give substantially the same result, as the allegedly equivalent element in the patented device or process. Id. In this case, the Court has doubts as to whether the record would actually support a finding Eastman's process meets all the limitations of step (b) under an equivalents theory.
In BASF's process, step (b) performs the function of removing the alcohol from the reaction mixture by way of distillation. In Eastman's process, the same function is performed by way of a combination of decantation and distillation. The result of step (b) is a suspension of the alkoxycarbonylcyclohexenolone salt in toluene. Eastman's process, however, requires neutralization of the cyclohexenolone salt to prevent its extraction, along with the alcohol, during decantation.
Thus, the "result" of the alcohol removal method employed in Eastman's process is the neutral cyclohexenolone compound in toluene. As discussed in the Court's Markman opinion, the patent specification indicates neutralization of the salt is undesirable, and BASF unequivocally stated, during prosecution, that formation, in step (a), and direct acylation, in step (c), of the cyclohexenolone salt was one of the advantages of the `856 process over cited prior art.
Because the undisputed facts in the record appear to indicate Eastman's methodology gives a different, and according to the patent itself as well as the prosecution history, undesirable result from the methodology employed in the `856 patent, it appears to fail the final prong of the traditional test for equivalence. The doctrine of equivalents issue is, however, one that, in most cases, must be addressed by the trier of fact after trial. Consequently, the Court cannot grant summary judgment on this basis.
D. Claims 12, Steps (d) (e)
The evidence, when viewed in the light most favorable to BASF, would support a finding the Eastman process contains all of the limitations set forth in steps (d) and (e) of Claims 1 and 2. Step (d) involves using a rearrangement catalyst to change the O-acylated esters produced in step (c) into C-acylated esters. In his report, BASF's expert presented evidence acylation and rearrangement are performed simultaneously with the addition of DMAP and propionic anhydride during Eastman's process. In construing the claims, the Court held, although step order is an implicit limitation in the `856 patent, the express language did nothing to exclude a situation where steps (c) and (d) might be performed simultaneously. In fact one of the preferred embodiments seemed to allow for overlap between the two steps (See Court File No. 475, pp. 22-24, n. 2). As a result, the facts might allow a jury to conclude Eastman's process meets the limitations set forth in step (d) either literally or under the doctrine of equivalents. The last step in Eastman's reaction involves hydrolysis and decarboxylation of the C-acylated esters to produce Trione. This is also the last step in the `856 process, and both processes appear to use the same type of chemical reaction to achieve that result. Consequently, one could reasonably conclude Eastman's process meets all of the limitations of step (e) as well.
E. Claims 1 2, Step (c)
As stated earlier, all of the parties have focused most of their attention on this step. After considering Eastman's claim, BASF's submitted proof, and the applicable law, the Court concludes Eastman's process does not literally meet all of the limitations of step (c) in Claims 1 and 2, and BASF is precluded, as a matter of law, from extending the scope of the `856 claims to include Eastman's process under the doctrine of equivalents.
1. Literal Infringement
In the `856 process, step (c) involves reacting "the salt of the alkoxycarbonylcyclohexenolone with a carboxylic acid halide having the structural formula R2COHal, where R2 is alkyl of not more than 6 carbon atoms to form a product." The Court's Markman decision explained principles of claim drafting and portions of the prosecution history dictated interpreting the term "the salt" as it is used in this step to mean the metal salt of the alkoxycarbonylcyclohexenolone formed during step (a) and represented by formula (III). The Court also concluded the term "carboxylic acid halide" should be given its ordinary and accustomed meaning, and would not, therefore, literally cover another, chemically distinct acylating agent such as an acid anhydride.
Claim 2 calls for "reacting the alkali metal salt of the alkoxycarbonylcyclohexenolone . . .," in step (c). Alkali metal salts are a narrower subset of metal salts.
Eastman's process, like the `856 process, also includes an "acylation step" during which DMAP and propionic anhydride, an acid anhydride, are added to the reaction mixture containing toluene and the neutral free-hydroxy form of the alkoxycarbonylcyclohexenolone. Although BASF's expert has offered evidence a cyclohexenolone salt may be formed during this phase of Eastman's process, that salt, if it is in fact formed, would not be a metal salt, nor would it be the same salt produced during the first step in the process. Because the Court has previously construed the term "the salt" to literally cover only the metal salt, represented by formula III in the patent and produced during step (a) of the patented process, Eastman's acylation of another, chemically distinct, salt of the alkoxycarbonylcyclohexenolone would not literally meet that limitation. Nor does the term "carboxylic acid halide" literally cover an "acid anhydride" as the two compounds have different chemical structures and reactive properties. Consequently Eastman's process does not literally meet the limitations imposed in step (c) of claims 1 and 2.
2. Doctrine of Equivalents
The limitations contained in the language of step (c) also preclude, as a matter of law, a finding Eastman's process infringes under the doctrine of equivalents. See Warner-Jenkinson, 520 U.S. at 28-29. Two principles of patent law prevent BASF from expanding the scope of the limitations set in step (c) to cover the acylation reaction performed in Eastman's process. First, BASF is precluded from claiming acylation with an anhydride because anhydrides are disclosed as a potential acylating agent in the specification but are not claimed in the patent itself. The second relevant limitation on the doctrine of equivalents is that application of the doctrine is not allowed such broad play as to effectively eliminate an element in its entirety. See Warner-Jenkinson, 520 U.S. at 29.
Under the doctrine of "dedication" or "surrender," BASF, is precluded, as a matter of law, from claiming a process using an acid anhydride as the acylating agent. "Particular subject matter disclosed in the specification but not claimed is deemed to have been surrendered." K-2 Corp., 191 F.3d at 1368, citing Maxwell v. J. J. Baker, Inc., 86 F.3d 1098, 1106-07 (Fed. Cir. 1996); see also Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562-63 ("[S]ubject matter disclosed but not claimed in a patent application is dedicated to the public."). The `856 patent specification discloses, as relevant prior art, an acylation reaction described in L. De Buyck, N. Schamp, R. Verhé, An Unusual Reaction of Dimedone With Acid Anhydrides, 29 TET. LETT. 2491 (1975). The article discusses the possibility of using an acid anhydride as the acylating agent in a similar reaction. In the claims, however, the inventors chose to claim only the acid halide reaction, describing their invention in terms of specific chemical reactants as opposed to using functional language encompassing more than just a single means. By disclosing but not claiming the anhydride reaction, BASF surrendered any right to have its claim read upon, either literally or under the doctrine of equivalents, a process employing such a reaction. K-2 Corp., 191 F.3d at 1368; Maxwell, 86 F.3d at 1106-07.
In addition to limitation via "dedication" or "surrender," the rule, announced by the Supreme Court in Warner-Jenkinson, that the doctrine of equivalents may not be extended to entirely vitiate an essential claim limitation also circumscribes the scope of equivalents covered by the `856 patent. See Warner-Jenkinson, 520 U.S. at 29 ("It is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety."). The doctrine of equivalents prevents an accused infringer from avoiding liability by changing only minor or insubstantial details of a claimed invention while retaining their essential functionality. See Hilton Davis, 62 F.3d at 1517, ("The Supreme Court in Graver Tank thus made insubstantial differences the necessary predicate for infringement under the doctrine of equivalents." (citing Graver Tank Mfg. v. Linde Air Prods. Co., 339 U.S. 605 (1950)); Charles Greiner Co. v. Mari-Med Mfg., Inc., 962 F.2d 1031, 1036 (Fed. Cir. 1992) (discussing role of doctrine in preventing "fraud on a patent"); Texas Instruments, Inc. v. United States Int'l Trade Comm'n, 805 F.2d 1558, 1572 (Fed. Cir. 1986) ("The doctrine of equivalents . . . exists solely for the equitable purpose of `prevent[ing] an infringer from stealing the benefit of an invention.'" (internal citations omitted)). A patentee may not use the doctrine to undermine the primary purpose of the claims — defining the scope of a patentee's exclusive rights. See Warner-Jenkinson, 520 U.S. at 29 ("[T]he doctrine of equivalents, when applied broadly, conflicts with the definitional and publicnotice functions of the statutory claiming requirement."); Charles Greiner, 962 F.2d at 1036, 22 USPQ2d at 1529 (discussing the inherent conflict between the role of the doctrine in preventing "fraud on a patent" and the primacy of the claims in defining the scope of a patentee's exclusive rights).
For example, in Sage Prod., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1421 (Fed. Cir. 1997), the Federal Circuit upheld the district court's granting of the parties' cross motions for summary judgment of non-infringement. The patents in that case involved a system for safely disposing of sharp medical instruments. Id. at 1422. Sage's invention claimed a "disposal container comprising . . . an elongated slot at the top of the container body for permitting access to the interior of the container body." Id. The district court correctly interpreted "`top of the container body' to mean the `highest point, level, or part of.'" Id. The claims also limited the claimed device to one with "a first constriction extending over said slot," and one constriction extending beneath it. Id. Devon's patent disclosed a container where, in the opinion of the district court, the "elongated slot" was not near enough to the top of the device to allow a rational trier of fact to conclude it was at the "top" as the term was used in the patent, Id. at 1423, nor did it have one constriction extending over said slot and one extending below. Id. at 1424.
On appeal, Sage argued the Devon device, which might be seen as having two constrictions below an elongated slot near the top, was equivalent to the Sage device because the two constrictions below the slot performed the same function, in substantially the same way, to give substantially the same result. Id. In affirming the district court, the Federal Circuit held, "the doctrine of equivalents does not grant Sage license to remove entirely the "top of the container" and "over said slot" limitations from the claim." Id. (citing Warner-Jenkinson, 520 U.S. at 29). Even though the two devices might be "equivalent" under the traditional tripartite test for equivalents, the doctrine could not be used to get around a design limitation set forth in the claims. In Ethicon Endo-Surgery v. U.S. Surgical Corp., 149 F.3d 1309 (Fed. Cir. 1998), the Federal Circuit explained that Sage did not eviscerate the continuing viability of the doctrine of equivalents by requiring an exact correlation between every claim element. Id. at 1318. Instead, Sage stood for the proposition that, on the facts presented in that case, "no reasonable finder of fact could have found infringement by equivalents because the differences between the allegedly infringing devices and the claimed inventions were plainly not insubstantial." Id.
At the summary judgment stage, the Court must focus on whether a reasonable trier of fact could find the differences between the `856 process and Eastman's process are "insubstantial" or "minor." The doctrine simply does not allow an inventor to extend the patent monopoly to cover "equivalents" not contemplated by the plain meaning of the claim language. Consequently, an inventor who uses narrow language in drafting the claims risks losing coverage under the doctrine of equivalents in many cases, even though the claims might have been allowed had they been drafted broadly. Sage Products, 126 F.3d at 1424. To allow a broader scope of protection under the doctrine would reduce claims to functional abstracts, devoid of meaningful structural limitations on which the public could rely. Id; see, e.g., Conopco, Inc. v. May Dep't Stores Co., 46 F.3d 1556, 1562 (Fed. Cir. 1994) ("The doctrine of equivalents cannot be used to erase `meaningful structural and functional limitations of the claim on which the public is entitled to rely in avoiding infringement.'" (internal citations omitted)). In this case, the evidence, even when viewed in the light most favorable to BASF, fails to offer any support for a reasonable conclusion Eastman's process represents only a minor or insubstantial variation on the process disclosed in the `856 patent.
As previously discussed by the Court in its Markman opinion, the term "the salt" as used in step (c) of Claims 1 and 2 refers to the metal salt of the alkoxycarbonylcyclohexenolone that is produced in step (a) and is represented by formula (III) in the patent. During prosecution, the PTO rejected the `856 claims as unpatentable over U.S. Patent No. 3,950,420 issued to Sawaki ("Sawaki `420). The Sawaki `420 patent also discloses a method for making Trione. The Sawaki process involves a reaction between beta-unsaturated ketones and dimethyl malonate in the presence of sodium methoxide, to form a condensation product and methanol. The condensation product is then hydrolyzed and decarboxylated to remove the alkoxycarbonyl group. After hydrolyzation and decarboxylation, the product is then reacted with a carboxylic acid halide to form a Trione.
The `856 patent's prosecution history was submitted as an exhibit during the Markman hearing. During that hearing the Court also heard testimony about the prosecution history and the Sawaki `420 process. Citations to the record indicating where this evidence can be found are provided in the Court's claims construction opinion (See Court File No. 475).
In responding to rejection by the PTO based on the Sawaki `420 patent, BASF submitted a declaration of Dr. Richarz, one of the named inventors, to the PTO in November 1985, June 1986, and November 1991. In the Richarz declaration, Dr. Richarz represented to the PTO one benefit of the `856 patent process over the prior art, namely the Sawaki `420 patent process, was that the methanol produced during the first phase of the reaction could be liberated by distillation allowing for direct acylation of the reaction product with an acid chloride without having to first isolate the intermediate product in a anhydrous form, as is required in the Sawaki `420 patent process:
1. The [claimed process] employs aromatic or aliphatic hydrocarbons from which the methanol is easily removable (eg. as an azeotrope) in the course of the first stage. In this way it is possible to carry out the acylation directly with an acid chloride, utilizing the sodium methylate, employed in the first stage, as an auxilliary base.
1. In the case of the Sawaki route, the cyclohexanedione-1,3-dione formed upon decarboxylation in an aqueous medium must be isolated in an anhydrous form to make it suitable for reaction with the particular acid chloride. For industrial-scale operation, this is expensive and involved.
Additionally, the Richarz declaration emphasizes the `856 process allows the product formed by the Michael addition in step (a) to be carried through to the acylation reaction with carboxylic acid chloride in step (c). As a result, step (c) could be performed using the sodium methylate employed during step (a) without the addition of an auxilliary base, and the entire reaction, not just the acylation phase, could occur without the isolation of an intermediate product:
The [claimed process] avoids all these disadvantages. None of the intermediates involved need be isolated. The end product can be isolated simply by filtration. A vital advantage is the use of an inert solvent, by means of which the methanol formed in the first stage is easily removable, thus permitting direct acylation of the sodium salt formed, without having to use an auxilliary base.
Before the PTO, BASF distinguished its process from prior art, which produced the same end compound using the same steps in a different order, in part on the basis the `856 process, unlike the prior art, maintains the presence, in the reaction mixture, of the salt formed in step (a) so it may be reacted with an acid halide in step (c).
Of equal relevance is the fact BASF, in a certificate of correction, changed Claim 1, Column 7, Line 29 to read "the process" instead of "a process." This tends to indicate BASF realized the existence of a difference between language that would have laid claim to a reaction with "a," or "any," salt of the alkoxycarbonylcyclohexenolone, and language that claimed only a reaction with "the" specific salt produced during step (a). BASF's choice of "the salt" instead of "a salt" in step (c) apparently had significance to the claim drafters, and their deliberate choice of "the" over "a" indicated to the public BASF intended to claim a narrower scope for its invention.
In Eastman's process, the cyclohexenolone salt, if it is in fact present, is neutralized by the addition of water and hydrochloric acid at the end of the first step. Although BASF's expert has presented evidence indicating the addition of DMAP, during the acylation phase of Eastman's process, may cause a cyclohexenolone salt to form at that point, the salt thus formed is chemically different from the salt formed by the condensation reaction in the first step. Furthermore, the salt formed with DMAP would not be a metal salt, and would not, therefore, fall within the group of compounds represented by formula (III) of the patent. During prosecution, BASF relied on the reaction, in step (c), between the product of step (a) and a carboxylic acid halide as a basis for distinguishing its invention from another comprised of the same basic elements, essentially disclaiming a process where this particular reaction did not occur. The PTO, the public, and the courts are entitled to rely on this statement in determining the scope of the `856 patent claims.
Like the plaintiff in Sage, if BASF attempts an impermissible use of the doctrine of equivalents to read out express limitations contained in the claims. Instead of describing step (c) in functional terms or providing a broad category of reactants, BASF claimed a specific acylation reaction between the metal salt, of formula III produced in step (a), with a carboxylic acid halide. In argument to the PTO, BASF described this specific reaction as one of the "novel" or "inventive" elements of its invention. Finally, BASF, knowing the difference between the two words, chose the specific article "the" over the more general article "a." The language of the claim limits the reaction in step (c) to one involving precisely identified reactants, in the same way the patent in Sage specifically limited the location of key elements on the patented device.
Allowing BASF to read out a limitation, by operation of the doctrine of equivalents, that it represented to the PTO was an important part of its invention would work an unfairness upon the system. Eastman's process does not include the reaction described in step (c). Rather, Eastman's method for producing Trione precludes entirely a reaction which BASF represented to the PTO was one advantage of its process over the prior art. BASF distinguished its process from the Sawaki process by pointing to an attribute, consisting of the specific reaction between the product of step (a) and a carboxylic acid halide, not present in the cited process. BASF may not now use the doctrine of equivalents to read that limitation out of the claims. Because reading the `856 patent to include Eastman's process would allow such a result, the Court concludes, as a matter of law, the claim language limits the scope of equivalents to those processes wherein the metal salt of the alkoxycarbonylcyclohexenolone, produced by reacting an beta-unsaturated ketone with dialkyl malonate in the presence of a base, is acylated directly, using a carboxylic acid halide as the source of the acyl group.
Because Eastman's process is entirely missing one of the essential limitations set out in step (c) of claims 1 and 2, Eastman is entitled to summary judgment of non-infringement. Sage Prod., 126 F.3d at 1424; see also Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 936 (Fed. Cir. 1987) ("[If] even a single function required by a claim or an equivalent function is not performed [by the accused device], the [district] court's finding of no infringement must be upheld."). Even though the evidence supports a triable issue of fact on every other element, the undisputed evidence indicates Eastman does not, at any point, react the metal salt produced during the condensation reaction in the first step, or its equivalent, with a carboxylic acid halide or other acylating agent. The plain language of step (c), understood in the context of the patent and the prosecution history, calls for a specific reaction between clearly described reactants. BASF distinguished the specific reaction called for in step (c) as part of the improvement of its process over prior art. As a legal matter, BASF may not now claim, under the doctrine of equivalents, a process in which that reaction, or its equivalent, does not take place, and Eastman is entitled to summary judgment of non-infringement. Warner-Jenkinson, 520 U.S. at 29. Because the Court has concluded, as a matter of law, that Eastman's process for making Trione does not infringe the `856 patent, Tomen and Valent are also entitled to summary judgment at this time as all parties are in agreement the liability if these two parties hinges on the question of Eastman's infringement (See generally Court File Nos. 246, 247, 275, 276, 285, 290).
IV. Conclusion
For the foregoing reasons, the Motions for Summary Judgment of Non-Infringement filed by Eastman, Tomen and Valent (Court File Nos. 249, 247, 246), will be GRANTED. Pursuant to its authority under 28 U.S.C. § 2201, the Court will enter a declaratory judgment of non-infringement in Eastman's favor. As no other issues will then remain for adjudication, the Court will direct the Clerk of Court to CLOSE this case.
An Order shall enter.
ORDER
In accordance with the accompanying Memorandum, Motions for Summary Judgment of Non-Infringement filed by Eastman, Tomen and Valent (Court File Nos. 249, 247, 246) are GRANTED. Pursuant to its authority under 28 U.S.C. § 2201, the Court hereby enters a declaratory judgment of non-infringement in Eastman's favor. As no other claims remain for adjudication, the Court directs the Clerk of Court to CLOSE this case.
SO ORDERED.