Wellman v. Eastman Chemical (CAFC 2010-1249) precedential; Judges Rader (author), Lourie, Whyte

Best Mode

This court reviews a grant of summary judgment without deference. Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1273 (Fed. Cir. 2004). Summary judgment is appropriate if the movant can show both the absence of genuine issues of material fact and entitlement to judgment as a matter of law. Fed. R. Civ. P. 56(c). This court reviews the evidence in the light most favorable to the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).

A patent specification "shall set forth the best mode contemplated by the inventor of carrying out his invention." 35 U.S.C. § 112 ¶ 1. The best mode inquiry proceeds on a claim by claim basis. Pfizer, Inc. v. Teva Pharms. USA, Inc., 518 F.3d 1353, 1365 (Fed. Cir. 2008). "Best mode issues can arise if any inventor fails to disclose the best mode known to him or her" as of the date the application for patent is filed. Pannu v. Iolab Corp., 155 F.3d 1344, 1351 n.5 (Fed. Cir. 1998). "The best mode requirement creates a statutory bargained-for-exchange by which a patentee obtains the right to exclude others from practicing the claimed invention for a certain time period, and the public receives knowledge of the preferred embodiments for practicing the claimed invention." Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 963 (Fed. Cir. 2001). "A violation of the best mode requirement must be proved by clear and convincing evidence." AllVoice Computing PLC v. Nuance Commc'ns, Inc., 504 F.3d 1236, 1240 (Fed. Cir. 2007).

The best mode requirement has two parts. Green Edge Enters., LLC v. Rubber Mulch Etc., LLC, 620 F.3d 1287, 1296 (Fed. Cir. 2010). First, the court must determine whether, at the time of patent filing, the inventor possessed a best mode of practicing the claimed invention. Id. (citing U.S. Gypsum Co. v. Nat'l Gypsum Co., 74 F.3d 1209, 1212 (Fed. Cir. 1996)). This first prong is subjective, focusing on the inventor's personal preferences as of the application's filing date. N. Telecom Ltd. v. Samsung Elecs. Co., 215 F.3d 1281, 1286 (Fed. Cir. 2000). Second, if the inventor has a subjective preference for one mode over all others, the court must then determine whether the inventor "concealed" the preferred mode from the public. Green Edge, 620 F.3d at 1296 (quoting Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 928 (Fed. Cir. 1990)). The second prong inquires into the inventor's disclosure of the best mode and the adequacy of that disclosure to enable one of ordinary skill in the art to practice that part of the invention. Id. This second inquiry is objective, depending on the scope of the claimed invention and the level of skill in the relevant art. Id.

The district court nominally made a procedural error - granting best mode violation without construing claims first, but this lapse fell into the "no harm, no foul" realm.

At the outset, this court notes that the district court did not construe the claims before engaging in the best mode inquiry. This court has explained that "[t]he best mode inquiry is directed to what the applicant regards as the invention, which in turn is measured by the claims." Engel Indus., Inc. v. Lockformer Co., 946 F.2d 1528, 1531 (Fed. Cir. 1991). Because "[s]ubject matter outside the scope of the claims falls outside of the best mode requirement," a "threshold step in a best mode inquiry is to define the invention by construing the claims." Ajinomoto Co., Inc. v. Int'l Trade Comm'n, 597 F.3d 1267, 1272-73 (Fed. Cir. 2010).

While the best mode inquiry typically requires a claim construction, claim terms need only be construed "to the extent necessary to resolve the controversy." Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In this case, the parties dispute only whether claims 5, 17, and 94 of the '317 patent and claims 6 and 9 of the '863 patent encompass Ti818--the parties agree that the remaining asserted claims encompass Ti818. Because the district court limited its best mode holding to the uncontroverted claims, Wellman, 689 F. Supp. 2d at 713, the district court had no need to construe the disputed terms. See, e.g., EMI Grp. N. Am., Inc. v. Intel Corp., 157 F.3d 887, 895 (Fed. Cir. 1998) (holding that the construction of a given claim term was "irrelevant" because it did not affect the underlying controversy between the parties). In these unusual circumstances, this court detects no need for a claim construction prior to engaging in the best mode inquiry.

The worm at the bottom of the bottle was an inventor admitting not disclosing what he thought the best mode for practicing the invention.

This court turns next to the first prong of the test for best mode. There is no genuine dispute that at least one inventor subjectively believed that Ti818--which contains carbon black N990--was the best resin available for hotfill packaging at the time of filing the applications for the '317 and '863 patents. Specifically, Dr. Nichols testified that his preferred PET recipe at the time of filing was "the first run of the product that we called Ti818 which was done at our Pearl River plant in the fall of 2003." J.A. 297 11:11-24. Nichols further admitted that, before filing, he believed there was no PET recipe better than that Ti818 recipe from 2003. J.A. 300 23:21-24:9. Another inventor, Dr. Tony Moore, also appears to have believed that Ti818 was the preferred PET resin. Although he did not refer to Ti818 by name, he testified that as of the filing date of the '317 patent, the best way of making PET in the research laboratory to achieve the claimed TCH, absorbance, and luminosity values used a combination of titanium catalysts, cobalt, and carbon black as the HUR additive. Ti818 contains each of these ingredients.

Although the record shows that Dr. Nichols preferred the 2003 recipe of Ti818, the district court found that Dr. Nichols believed that the 2004 recipe of Ti818 was the best mode of practicing the invention. Wellman, 689 F. Supp. 2d at 713. This harmless misstatement does not rescue the relevant claims from a best mode violation. Rather than a nullifying conflict, this only shows that Dr. Nichols had an obligation to disclose the recipe he believed to be the best mode at the time of patent filing--the 2003 recipe. The applicant did not do so. See Dana Corp. v. IPC Ltd. P'ship, 860 F.2d 415, 418 (Fed. Cir. 1988) (requiring disclosure of the best mode contemplated by the inventor at the time of filing).

On summary judgment, this court must resolve factual inferences in favor of the non-movant. Anderson, 477 U.S. at 255. In this context, an evolving recipe potentially means that the inventors had no best mode of practicing the invention. See Bruning v. Hirose, 161 F.3d 681, 687 (Fed. Cir. 1998) (finding inventor had no best mode because of concern about certain characteristics of his invention). However, even when viewed in the light most favorable to Wellman, this evidence cannot overcome the testimony of the inventors, including Dr. Nichols' testimony regarding his subjective belief that the 2003 recipe of Ti818 was the best method of practicing the invention at the time of filing. Put simply, at the time of filing, an inventor believed that the 2003 recipe of Ti818 was the best mode. Subtle changes in the recipe in 2004 to accommodate specific customer demands does not excuse the applicant's obligation to disclose what Dr. Nichols-- and every other inventor--contemplated was the best mode of practicing the invention at the time of filing. The district court's assessment of changes in the Ti818 recipe therefore does not affect substantial rights of the parties and was at most harmless error.

Wellman did not disclose carbon black N990 in its patent applications. Instead, Wellman chose to protect this ingredient of Ti818 as a trade secret.

Wellman's counter arguments were belated.

These arguments have both procedural and substantive shortcomings on appeal. As to the procedural deficiencies, Wellman did not raise the significance of the additional disclosure concerning absorption ratios in its best mode briefing or oral arguments before the district court. Wellman also did not explain this disclosure's connection to the alleged preference for spinels... Wellman has therefore forfeited its right to argue the significance of these absorption ratios on appeal.

Even without this procedural obstacle, these contentions do not create a genuine issue of material fact for the best mode inquiry.

Egregiously, the "Wellman patents lead away" from what the inventors actually thought was best mode.

With a record showing that at least one inventor possessed a subjective preference for Ti818 and at least one inventor possessed a subjective preference for N990, this court must determine whether there is any issue of material fact concerning concealment of the best mode, the second prong of the best mode inquiry. Go Medical Indus. Pty., Ltd. v. Inmed Corp., 471 F.3d 1264, 1271 (Fed. Cir. 2006). The Wellman patents do not expressly disclose the Ti818 recipe, but instead describe many possible ingredients with varied ranges of concentrations. While an inventor may represent his contemplated best mode just as well by a preferred range of conditions as by a working example, In re Honn, 364 F.2d 454, 462 (CCPA 1966), some of the ingredients for Ti818, namely isophthalic acid and diethylene glycol, fall outside of the disclosed preferred ranges and therefore lead away from the Ti818 recipe.

The Wellman patents lead away from the use of carbon black N990 in Ti818. Specifically, the patents characterize carbon black merely as a "suitable" HUR additive without any discussion of particle sizes. The Pengilly patent, the sole source of carbon black HUR additives identified in the Wellman patents, states that carbon black HUR additives have "typical" particle sizes "from 10 to 100 nm" and "preferred" average particle sizes from "about 15 to about 30 [nm]." '317 patent col.11 ll.10-12; Pengilly col.2 ll.54-60, col.4 ll.18-24. Carbon black N990 has a particle size of 290 nm. While there is no requirement under 35 U.S.C. § 112 ¶ 1 to identify which disclosed mode is the best mode, In re Bosy, 360 F.2d 972, 976 (CCPA 1962), and best mode may be represented by a preferred range of conditions or group of ingredients, Honn, 364 F.2d at 462, Wellman concealed the best mode by not disclosing the recipe for Ti818, by identifying preferred concentration ranges for certain ingredients that excluded those used in Ti818, and by identifying preferred particles sizes for the HUR additive other than that used in Ti818.

The CAFC panel went beyond the call of duty to reify the resin of judgment, by considering the need for undue experimentation. The result was further damnation by intentional concealment.

Despite these facts of record, this court goes on to examine Wellman's disclosure to discern whether it enabled a person of skill in the art to practice the best mode without undue experimentation. Dr. Schiavone, a named inventor, admitted he could not derive the recipe for Ti818 from the disclosure in the Wellman patents. Dr. Nichols, another inventor, testified that a series of design experiments could be developed to identify a resin meeting the claimed limitations, but did not state that those experiments would yield Ti818. Moreover, "[e]ven where there is a general reference to practicing the claimed invention, the quality of the disclosure may be so poor as to effectively conceal it." Transco Prods. Inc. v. Performance Contracting, Inc., 38 F.3d 551, 560 (Fed. Cir. 1994) (citing Randomex Inc. v. Scopus Corp., 849 F.2d 585, 587 (Fed. Cir. 1988)). By masking what at least one inventor considered the best of these slow-crystallizing resins, Wellman effectively concealed its recipe for Ti818. Wellman admittedly spent millions of dollars and thousands of hours developing its claimed slow-crystallizing PET resins. Dr. Nichols declared that the inventors "unlocked in our research . . . the secret to making an effective slow-crystallizing bottle resin by understanding the proper balance of the parameters of catalyst concentration, comonomer concentration, intrinsic viscosity, and heat-up-rate [HUR] additive in order to make high clarity bottles." J.A. 5117. Wellman had an obligation to adequately disclose the best mode of practicing this "unlocked secret" under the best mode requirement, yet did not do so.

The record also shows that Wellman intentionally concealed the best mode. "Invalidation based on a best mode violation requires that the inventor knew of and intentionally concealed a better mode than was disclosed." High Concrete Structures, Inc. v. New Enter. Stone & Lime Co., 377 F.3d 1379, 1384 (Fed. Cir. 2004). As shown by the testimony of Thompson and Bruening, Wellman intended to conceal carbon black N990, an ingredient in Ti818, by choosing to maintain it as a trade secret. As the district court correctly stated, this choice "does not excuse Wellman's compliance with the best mode requirement." Wellman, 689 F. Supp. 2d. at 716. Accordingly, this court affirms the invalidity of claims 1-4, 7, 8, 11-14, 16, 18-21, 24, 32, 33, 36, 38, 39, 44, 93, 96-102, and 104 of the '317 patent and claims 1, 3-5, 8, 11, 15, 17, 24 and 62 of the '863 patent for failure to comply with the best mode requirement.

Other claims survived from Eastman's lackadaisical lawyering.

The district court correctly declined to invalidate the remaining asserted claims. Id. at 712-13. Despite having the burden of proof, Eastman offered no affirmative evidence that Ti818 is encompassed by these claims.

Indefiniteness

The CAFC holds to its high bar for finding indefiniteness under § 112 ¶ 2.

"The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112 ¶ 2. "The review of indefiniteness under 35 U.S.C. § 112, paragraph 2, proceeds as a question of law without deference." SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1338 (Fed. Cir. 2005). "The question of whether the claims meet the statutory requirements of § 112 ¶ 2 is a matter of construction of the claims, and receives plenary review on appeal. . . . The claims as granted are accompanied by a presumption of validity based on compliance with, inter alia, § 112 ¶ 2." S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1367 (Fed. Cir. 2001) (citations omitted).

Claims need not be plain on their face in order to avoid condemnation for indefiniteness; rather, claims must only be amenable to construction. Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). "[B]ecause claim construction frequently poses difficult questions over which reasonable minds may disagree, proof of indefiniteness must meet 'an exacting standard.'" Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 783 (Fed. Cir. 2010) (quoting Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008)). Thus, "[a]n accused infringer must . . . demonstrate by clear and convincing evidence that one of ordinary skill in the relevant art could not discern the boundaries of the claim based on the claim language, the specification, the prosecution history, and the knowledge in the relevant art." Id. "By finding claims indefinite only if reasonable efforts at claim construction prove futile, we accord respect to the statutory presumption of patent validity . . . and we protect the inventive contribution of patentees, even when the drafting of their patents has been less than ideal." Exxon, 265 F.3d at 1375 (citation omitted).

The district court erred in concluding that the Wellman patents do not provide sufficient guidance for construing the TCH claim term. The patents support a construction that limits the claimed TCH measurement to those occurring on a sample of "amorphous" PET material. "[C]laims 'must be read in view of the specification, of which they are a part.'" Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). "[T]he specification 'is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'" Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).

Chef America Inc. v. Lamb Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004), among other cases, prohibits courts from rewriting claims instead of interpreting the claims as written. In Chef America, the court refused to redraft the claims to replace the term "to" with the term "at," even though that refusal produced a nonsensical result. Id. Unlike in Chef America, however, construing the claim to require testing on an "amorphous PET material" does not replace any claim term with a different term, but instead interprets the claimed DSC measuring technique in light of the specifications, which clearly, repeatedly, and unambiguously state that such tests should be performed on amorphous PET material.

Claim terms must provide a discernible boundary between what is claimed and what is not claimed--in this case, between an amorphous PET material and a crystalline material. Consistent with this, the Wellman patents twice state that an amorphous material has "less than about 4 percent crystallinity." '317 patent col.12 ll.48-50, col.23 l.67-col.24 l.4. Wellman's expert, Dr. David Schiraldi, testified that "less than four percent crystallinity would typically be referred to as an amorphous PET [material] by people in the PET industry," thus supplying a link between the specification and the understanding in this field. J.A. 333 61:9-19. Thus, the Wellman patents define an amorphous material consistent with the teachings in this field, and a person of ordinary skill in this art could readily discern the boundary between amorphous and crystalline materials as these terms are defined in the specifications.

In holding the claims indefinite, the district court focused on the lack of specific moisture conditions for DSC testing, reasoning that the absence of intrinsic guidance would prevent a person of ordinary skill from understanding the bounds of the claims. Wellman, 689 F. Supp. 2d at 719-20. However, an inventor need not explain every detail because a patent is read by those of skill in the art. Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1156 (Fed. Cir. 2004) (citing In re Howarth, 654 F.2d 103, 105 (CCPA 1981)). Well known industry standards need not be repeated in a patent. See id. In this case, the record shows that a person of ordinary skill in the art in this field would follow standard industry guidance for conditioning plastics for DSC.

The dénouement -

For the foregoing reasons, this court affirms the district court's summary judgment holding that all but five of the asserted claims of the '317 and '863 patents are invalid for failure to disclose the best mode. However, this court reverses the district court's summary judgment that the asserted claims are indefinite under 35 U.S.C. § 112 ¶ 2 and remands for further proceedings in accordance with this opinion.

Affirmed-in-part, reversed-in-part, and remanded.