*1 Wright, 569 (Fed.Cir.2004); In re accord (C.C.P.A.1977). 1124, 1127
F.2d
III. CONCLUSION findings underlying the factual
Because findings analysis, including the Board’s combine, supported are motivation
on evidence, conclude that
by substantial rejecting did not err
the Board Because obvious. prima
1-20 as facie prima the Board’s
Khan did rebut case, Board’s decision is
facie
AFFIRMED.
ATOFINA, Plaintiff-Appellant, LAKES CHEMICAL
GREAT
CORPORATION, Defendant-
Appellee.
No. 05-1359. Appeals, States Court of
United
Federal Circuit.
March *2 Rowan,
Thomas G. Day, Jones of New York, York, New argued for plaintiff-ap- pellant. himWith on the brief were Dan- Malone, anticipation unenforceability Stops, Gasper Eric J. because C. L. iel n conduct. LaRosa. Harris, Greenberg Traurig D. Richard BACKGROUND Illinois, LLP, Chicago, argued for de- “Synthesis is entitled him on brief fendant-appellee. With *3 Difluoromethane,” and was to Elf issued Bertoglio. Brad R. was Atochem, subsequently Ato- which became fina, assignee. as The invention direct- DYK, LOURIE, and RADER Before a synthesizing ed to of difluoro- method Judges. Circuit (CH2F2) through gas phase methane the by the filed Circuit Opinion for Court (CH2C12 methylene of chloride fluorination Judge LOURIE. ), (HF), hydrogen pres- with fluoride in the oxygen (02), of a ence an amount of within and concurring part Opinion and with a particular temperature range, dissenting part by Judge filed Circuit (Cr) catalyst. requires 1 chromium Claim DYK. pres- that the process be conducted LOURIE, Judge. Circuit oxygen per ence of to 5 moles of 100 0.1 chloride, methylene tempera- moles of at a the final appeals Atofina from decision °C, ture of and a between 330 450 with the States District Court for of the United cata- supported “bulk judgment in granting of Delaware District lyst.” patent, ’514 col. 11.20-25. The Corpora- of Great Lakes Chemical favor claims, 2, 5, 6, 7, 9, and remaining asserted Lakes”) (“Great that Great Lakes did tion limitations: add 2 further further claim 5,900,514 Patent literally infringe U.S. “ range oxygen methylene narrows of (the 1, 2, 6, 7, 9, and patent”); ’514 ratios; 6 require- chloride claim adds a anticipated patent by ’514 10 of the were chloride, methylene oxygen, ment that the (“JP publication 51-82206 51- Japanese with hydrogen and fluoride in contact 82206”); patent and the was unen- 10 catalyst for a time between 0.01 and because of conduct. forceable seconds; a limita- pressure claim 7 adds Corp., v. Great Lakes Chem. Civ. Atofina 1 20 bars abso- requiring tion between (“Fi- 2005) (D.Del. No. 02-1350 March lute; claim 1 but claim is the same as 9 affirm district Judgment”). nal We phase; transition with different claim term court’s construction 10 as 1 but with claim is the same claim its catalyst” and hence deter- “chromium the contact time limitation the addition of infringement. of no literal How- mination 7,11. 8,11. Id., col. col. from claim 6. ever, clearly court because the 3-11,14-28. an that JP erred began all In Lakes manufactur- meeting the limi- Great anticipatory reference 6, 7, 9, using mixed metal 1, 2, ing difluoromethane of claims tations com- catalyst consisting of a chromium erred in the ’514 and also element that the dis- pound with another applicants X,1 carried Agent trict court referred to States Pat- intended deceive United (“PTO”), of 1.1 to 1.2 moles presence we out and Trademark Office ent chlo- per moles of holdings invalidity oxygen because of reverse lyst Agent X. Throughout opinion, this we will refer to formulation component proprietary cata- of Great Lakes' ride, °C, at a temperature of 150 to catalyst” limitation because it pressure and at a between 5.5 and 7.6 substance, bars contained a non-chromium v. Great Lakes Chem. Agent X, absolute. that was catalytically active or at 02-1350, slip op. Civ. No. at very 18 the least a non-inert additive that had (D.Del. 2005) ”). (“Opinion Feb. Id., been disclaimed in the specification. process reactants in the are contact with slip op. at 35-36. court catalyst for approximately 10 seconds. found that Great Lakes’ contained Id. Agent X apparently enhances the selec- a metal oxide other than chromium oxide tivity reaction, of Great Lakes’ fluorination that had been disclaimed life, as well as the Id., process but the patent during prosecution. would not work the absence of slip op. chromi- at 36-37. *4 Id., 18,
um. slip op. at 20. Second, the district court held that 1, 2002, July On 1, 2, 6, 7, 9, Atofina filed a com- claims and 10 anticipated were plaint in the United Id., States District Court JP 51-82206. slip op. at 39-45. for the District of on Titanium accusing Relying Delaware Corporation Metals Banner, Great infringing (Fed.Cir. Lakes of pat- the ’514 782 ent. 1985), Great Lakes filed an answer and a the court determined that counterclaim, alleging noninfringement, in- broader temperature range of 100 to 500 validity, and unenforceability because of °C recited anticipated trial, conduct. After a bench temperature narrower range of to 330 450 (1) the court concluded that Great Lakes °C disclosed in Opinion, patent. the ’514 (2) did infringe the ’514patent; slip op. claims at 41. The court also found that 1, 2, 6, 7, 9, and 10 anticipated by were JP the additional limitation in claim that the (3) 51-82206; claim 5 of the ’514 oxygen methylene to chloride molar ratio would not have been obvious in view of the percent be between 0.5 percent, and 3 was (4) art; the ’514 patent anticipated by was not JP 51-82206’s disclosure invalid (0.001 for lack of enablement or failure to part of that range 1 percent to (5) mode; disclose the best oxygen the ’514 to ratio), chloride molar patent was ineq- unenforceable because of Id., on Titanium Metals. again relying Id., uitable conduct. slip op. at slip op. 68. The Furthermore, at 42. the court holdings court’s as to infringement, inval- determined that although JP 51-82206 idity because of anticipation, and unen- does not mention the contact times dis forceability because of inequitable conduct closed in claims 6 and it nevertheless are at issue in appeal. this anticipates those claims because the “con tact times be calculated based on the First, the district court relied on the provided information examples of JP specification, history, and Id., slip 51-82206.” op. at 43-44. The dictionaries to construe the term “chromi- court also held that provides um catalyst” to mean “a substance that an enabling disclosure of the pro claimed velocity alters the of a chemical reaction Id., cess. slip op. at 45-47. without being consumed, itself where the only catalytically active material is chromi- Finally, the district court held that um without the oxides, addition of metal the ’514 was unenforceable because fluorides, alkali metal or non-inert addi- of inequitable Id., conduct. slip op. at 58- Id., tives.” slip op. at 28-29. The court 67. The court first found that fully then determined that Great Lakes’ cata- 51-82206, translated version of JP which lyst did not meet the “bulk or supported PTO, was not submitted to the highly
995 discretion, for abuse of and its thresh all duct anticipate^ material “because 2,1, 6, 7, 9, materiality 10 of findings regarding old in limitations of Id., Brasseler, at to mislead for error. slip op. tent clear patent.” I, that Atofina L.P. v. Stryker then determined Sales 267 The court U.S.A. (Fed.Cir.2001). 1370, 1379 on its “A finding the PTO based F.3d intended to deceive full transla- English ‘clearly although erroneous’ when failure to disclose there it, in its which it had support reviewing tion of is evidence Id., op. The court the entire left with slip at 64. court on evidence is possession. Atofina’s firm that a also intent on definite and conviction mistake based the PTO alleged misrepresentations has been committed.” United States v. Co., 364, 395, catalyst con- Gypsum disclosed a that JP 51-82206 U.S. U.S. (1948). optionally oxide and 92 L.Ed. taining “chromium S.Ct. mentioning other oxides” without metal Infringement I.
that JP 51-82206 disclosed
oxide, as
as Atofina’s
pure chromium
well
appeal,
argues
that the dis-
On
of JP 51-
alleged miseharacterizations
incorrectly
trict court
construed the term
scope
respect
with
catalyst.”
“chromium
Atofina asserts that
contact
used
reference and the
times
the correct construction of “chromium cat-
*5
Id.,
op.
After
slip
at 64-65.
reference.
alyst” is a substance which causes the
intent,
and
the court
materiality
balancing
place
to take
in which chromium
reaction
patent
unen-
that the ’514
was
concluded
eatalytically active metal. Atofina
is the
conduct.
inequitable
forceable because
in
court erred
ex-
also contends
the
Id.,
at 67.
slip op.
all “metal
and
cluding
oxides”
“non-inert
the meaning
additives” from
of “chromium
in
judgment
court entered
speci-
catalyst” based on statements
Lakes on March
favor of Great
history.
in
ju-
fication and
the
have
timely appealed,
Atofina
and we
Atofina,
to
court read
According
the
those
pursuant
28 U.S.C.
risdiction
they
and
did not
1295(a)(1).
out
context
§
statements
a “clear
amount to
and unmistakable” sur-
subject
matter.
DISCUSSION
render
contends that
court misread
is an issue
Claim construction
reference,
Buckman
Patent
U.S.
Instruments,
law,
Markman Westview
3,644,545,
excluding
in
alkali metal fluor-
(Fed.Cir.1995)
Inc.,
967, 970-71
52 F.3d
under
argues
Atofina then
its
ides.
(en
novo,
banc),
Cybor
that we review de
catalyst,”
of “chromium
Great
construction
Techs., Inc.,
Corp.
138 F.3d
v. FAS
patent
process infringed the
Lakes’
(en banc).
(Fed.Cir.1998)
The dis
process
would
have
because
infringement,
trict
determination of
court’s
chromium.
without
Atofina fur-
worked
contrast,
we
question
of fact that
is
asserts that the
covers cata-
ther
Centricut, LLC v.
review for clear error.
derivatives,
from
lysts made
Inc.,
Esab
390 F.3d
Group,
catalyst
uses
Lakes
is
Great
(Fed.Cir.2004). Anticipation
also a
is
chromium derivative.
for clear
question of fact that
review
that the district
responds
Lakes
Group,
error.
Inc. v. Custom
Great
Hoover
(Fed.Cir.
Inc.,
correctly
“chromium cata-
66 F.3d
court
construed
Metalcraft,
oxides,
1995).
non-inert
lyst”
court’s
to exclude metal
Finally, we review a district
additives,
fluorides. Ac-
con-
and alkali metal
ultimate determination
Lakes,
cording to Great
Atofina disclaimed cumstances where reference to dictionaries
catalysts containing catalytically
appropriate,
active
task
[court’s]
is to scru
than
substances other
chromium and cata-
tinize the intrinsic
evidence
order to
lysts containing
appropriate
non-inert
determine the most
additives. As
defini
”
Fitness,
support
for
tion.’
Free Motion
argument,
Cybex
Great Lakes
Inc. v.
t'l,
Inc.,
points to
In
specification
statements
(Fed.Cir.2005) (citing Phillips,
We argument Atofina’s It Second, is not erroneous. the district court erred in its construction discern no clear error in the court’s alter catalyst” of “chromium because the appli X, native Agent determination that if not a cants’ statements regarding “metal ox catalyst, Id., was a non-inert additive. slip ides” distinguish were intended to only Thus, op. at n. because the district catalysts, nickel-chromium Agent X- court made no clear error in catalysts. That the that Great Lakes did not infringe only Atofina’s needed to surrender nickel-chromium properly claims, construed we affirm its catalysts to avoid a prior art reference judgment non-infringement. does not mean that its disclaimer was lim subject ited to that matter. “To con II. Anticipation trary, frequently happens that paten tees surrender through more appeal, amendment argues On that JP 51- than absolutely have been necessary 82206 does not anticipate any claim of *8 particular to avoid prior art. In such the ’514patent because it does not disclose cases, we have held patentees the to difluoromethane, the the manufacture of recit- scope claim, of what they ultimately and ed in preamble 1; the of claim its disclo- we have not allowed them to assert that sure of a temperature broader range does claims interpreted should be if they anticipate specific not the temperature had only they surrendered what had to.” range claimed in ’514 patent; the its dis- Norian Corp. Stryker v. Corp., 432 F.3d oxygen closure of an molar 1356, (Fed.Cir.2005) 1361-62 (citing Fan ratio of 0.001 to 1.0 is not a disclosure of tasy Sports Props., Inc. Sportsline.com, v. the claimed range of 0.1 to 5.0 percent;
999
genus.
Petering,
times
In re
disclose the contact
within the
49
and it
not
does
993,
676,
(1962);
According
301
claims 6
10.
F.2d
682
.see
required in
C.C.P.A.
Atofina,
Bristol-Myers
on
Squibb
the court’s reliance
Titanium also
Co. Ben Ven
(Fed.
Labs., Inc.,
that case
because
246
misplaced
Metals was
ue
F.3d
1380
Cir.2001) (“[T]he
species
proposition
the
that a
stands for
disclosure of a small ge
reverse.
genus,
a
not the
anticipate
may anticipate'
can
of that
species
ge
nus
the
if
species
nus even
the
are not themselves
that
51-82206
responds
Great Lakes
JP
recited.”).
here,
That is not the case
how
2, 6,
7, 9,
of
anticipates
and 10
temperature
A
of over
range'
ever.
ranges
’514
because the claimed
patent
the
not a
degrees
genus
range
is
small
and the
in the
ranges
are within the disclosure of
temperatures
of
of
does
JP 51-82206
not
Lakes,
According to
JP
prior art.
Great
range.
Atofina’s temperature
disclose
temp-
a preferred
disclosure of
51-82206’s
encompass-
of 150 to 350
range
erature
°C
here,
anticipation
To find
the district
in
the
disclosed
temperature
range
es
court relied on our
opinion
Titanium
330 to 450 °C. Great
patent
the ’514
The court
that “the
Metals.
stated
’514
that
51-82206’s
Lakes also contends
JP
patent’s claim
to 450 °C
limitation of 330
is
oxygen methylene
chlo-
disclosure of the
entirely
temperature
within JP 51-82206’s
to 1.0
percent
ride molar ratios of 0.001
100 and
range
Consequently,
500 °C.
the
percent encompasses
ratios claimed
limitation of
this
claim is also disclosed
percent
per-
the ’514
of 0.1
to 5.0
at
by
Opinion, slip op.
JP 51-82206.”
argues
Great Lakes
cent.
However,
for
Titanium Metals stands
the
that
JP
does not
though
even
species
that an
proposition
earlier
refer-
required by
times
disclose the contact
claim,
anticipates
genus
a
ence
later
not
patent,
claims 6 and 10 of
’514
genus anticipates
an
a
earlier
narrow-
easily de-
“typically
contact times are
Here,
species.
er
1001 withholding regarding full also information because the inequitable conduct ing of pilot testing poor during phase of JP 51-82206 results English translation not to the PTO was patent process. not submitted of the ’514 Great Lakes was was no basis for material and there highly also contends that there was no evidence to deceive PTO. inferring an intent faith Atofina in good by of its failure to Atofina, court’s sole basis According to English disclose the full translation of JP of English translation for 51-82206. highly material was was We with Atofina that the claims of anticipated several
the reference district court abused its discretion (its materiality for obvious- patent the ’514 inequitable conclusion that conduct oc decided). Thus, not purposes was ness patent may curred. “A be rendered unen the court’s contends that because Atofina inequitable ap conduct if an forceable for clear- anticipation to was determination as with intent to mislead or deceive erroneous, materiality plicant, finding of ly intent, examiner, fails to disclose material in Atofina also the erroneous. As also materially failed to consider false infor that the court formation submits contends faith, as Atofina’s good during of such prosecution.” evidence mation the PTO history to prosecution Control, reference Digital Inc. v. Charles Mach. (Fed.Cir.2006). full translation of JP Works, numbers of the page 437 F.3d 1313 that the Derwent Atofina notes 51-82206. party asserting inequitable “The conduct of 51-82206 was disclosed Abstract prove materiality must a threshold level of and JP 51-82206 was cited the examiner by convincing and intent clear and evi patent specification. Further, “materiality does not dence.” Id. intent, presume separate which is that the district responds Great Lakes con component essential materiali- findings high of a level of court’s GFI, Inc. v. Franklin duct.” supported by clear and ty and intent were (Fed.Cir.2001) (quoting F.3d evidence, the court convincing and thus Corp. Sys., v. Paramount Manville Sales was correctly patent held that (Fed.Cir.1990)). Inc., 917 F.2d argues that unenforceable. Great Lakes English the full translation The issue here is whether Great it was antici- highly was material because and convinc proved Lakes intent clear of a patory and it teaches the use district court inferred ing evidence. The Lakes also catalyst. Great applicants’ failure to dis intent from application for a points out that Atofina’s of JP 51- English close the full translation counterpart to the ’514 European alleged and its mischaracterizations rejected novelty lack of over JP for However, appli that reference. 51-82206, only and issued after English full failure to disclose the cants’ to include an additional amended its claims not in and of translation of JP 51-82206 is Lakes, the According to Great limitation. intent, if the full enough to infer even itself counterpart European beyond the Der English translation went mate- is evidence of the to the Abstract, far from clear. went which is English full translation of JP riality of the Energy Lab. Co. Semiconductor See Lakes ar- Great 51-82206. Co., 1368, 1378 Elecs. Samsung to de- that Atofina acted with intent gues (“The (Fed.Cir.2000) at in this duty issue to disclose the full failing ceive the PTO candor, duty not the duty mis- case is of JP English translation translation.”). references, to deceive can “Intent characterizing prior art *11 infor that solely inferred from the fact that Derwent Abstract was disclosed disclosed; a catalyst not there must be to the also states that the mation was PTO finding deceptive “mainly comprising factual for a trivalent chromium ox- basis “Mainly” “chiefly” intent.” Hebert Lisle ide.” and are words (Fed.Cir.1996). 1109, 1116 Thus, meanings. similar with there no real difference between the disclosed in finding The district court’s Derwent Abstract and the undisclosed full additionally on three statements tent rests English translation of JP 51-82206 in this (1) to the PTO: made context. statement that 51-82206 applicants’ While the dissent catalyst “chiefly states that containing a “some discloses parts majority opinion optionally appear and other metal chromium oxide (2) hold there was no oxides”; misdescription applicants’ statement that because pure JP 51-82206 does not disclose art, chro- “person looking a skilled who is oxide,” mium that is incorrect. JP 51- fluorinating specific for a means of H catalyst 82206 does disclose'the use of a (CH2CI2) good containing halocarbon with oxide, containing pure chromium JP 51- selectivity not prompted is therefore (“Not only pure 82206 at but also teachings ... 51- consider the Cr203 (3) 82206”; mainly comprising chromium oxides applicants’ statement Cr203 invention.”), are present usable that ef specific process conditions “[t]hese Moreover, we do not state otherwise. fect a contact time of 10 or less seconds did, characterizing catalyst, as Atofina .... taught The short contact time is not containing “chiefly op- chromium oxide and in the applied references. Contact time tionally other metal oxides” is not inconsis- indicated in the references are substantial possibly being tent with it ly pure chromium Opinion, slip op. excess of this.” at Further, oxide. the dissent that (emphasis 64-65 states original). The court “chiefly chromium oxide” does not mean determined that the first statement mis “chiefly because “JP represented to the PTO Cr203” clearly used the term ‘chromium oxides’ to catalyst failed to disclose a of pure chromi oxide, than um include oxides other the second statement miseharac While Cr203.” “chiefly the language chromium oxide” by failing identify terized JP 51-82206 encompass does oxides other .preferred chloride was a Cr203, expressly than reference, discloses starting material and the Cr203. Therefore, no reasonable fact finder could third statement mischaracterized JP 51- applicants misrepresen- conclude that the by failing to mention the inherent ted to the PTO that JP 51-82206 failed to allegedly “contact times” disclosed in JP catalyst disclose a chromium oxide. 51-82206. applicants’ Because the statement was con- We conclude the district court English sistent with both the full transla- clearly erred in these three tion of JP 51-82206 and the Ab- Derwent statements were prove sufficient to intent. stract, the district court erred in First, applicants’ statement that JP supported that it an inference of 51-82206 discloses a containing intent. “chiefly optionally oxide and Second, other metal oxides” is applicants’ consistent with the that a statement English art, text of the full “person translation of JP skilled in looking who is 51-82206, which fluorinating asserts for a means of H specific “mainly comprising (CH2CI2) chromic oxide.” containing good And halocarbon with have prompted parties’ to We considered the remain- selectivity is therefore ing arguments unpersua- find them ... teachings of JP 51-82206” consider the *12 sive. of the fact not an omission that was in JP starting material 51-82206
preferred CONCLUSION chloride. The seven start- methylene was in JP ing materials disclosed We affirm court’s the district conclusion chloride, methylene dis- including are of no literal infringement. The district pat- closed in the first column court, however, in clearly erred finding 1, 11. col. 58-59. The patent, ent. ’514 anticipatory that JP an 51-82206 was ref- applicants stated to the examiner that also erence all limitations of meeting claims “mentions, among JP 51-82206 the reac- 1, 2, 6, 7, and 10 of the ’514 and tions, CCI4, CHCI3, of the fluorination clearly finding also in that erred CH2 chloride], CCI3F, [methylene C2CI6, intended to so as to sup- deceive PTO C2 CI2 that the CI4, “preferred port inequitable and and a determination of con- C2H3CI3” contemplated 51- duct. We therefore affirm the court’s starting [in materials JP judgment infringement, of no literal and perhalogenated ... include mole- 82206] holdings invalidity we reverse of its be- molecules,” containing as H cules well as cause of anticipation unenforceability and methylene Based which include chloride. inequitable for conduct. record, on the we conclude that district finding clearly ap- court erred that the IN AND AFFIRMED PART an hide
plicants’ attempt statement was REVERSED IN PART. fact that chloride was starting material 51- preferred DYK, concurring in Judge, part Circuit dissenting part. join opinion I insofar court’s Third, that applicants’ statement finding affirms the court’s of no effect a specific process “[t]hese conditions infringement literal and reverses as in- contact time of 10 seconds less ... The validity. I also the district taught time is not in the short contact inequitable court’s conduct determination applied Contact time indicat- references. view, that my cannot stand. In determina- substantially ed the references are finding of tion rests on an erroneous mate- support excess an infer- of this” does-not riality finding based on a of As ence an intent to deceive. discussed 1, 2, 6, 7, 9, anticipated 51-82206 does not previously, JP disclose patent. I would vacate re- Therefore, any “contact times.” the dis- mand this that the district court issue so clearly finding trict erred court inequitable can reconsider conduct applicants’ misleading. statement was my view claim free this error. majority deciding errs in to reverse with- Thus, clearly the district because court out remand. findings relating erred in of fact to an its PTO, we
intent to deceive the conclude not address the is- majority does inequitable conduct holding reverses the dis- materiality, sue but an findings based on was those abuse court’s conduct determi- trict therefore discretion. We reverse the district ground nation on the holding. in- clearly Inasmuch as we reverse on court’s intent errone- tent, materiality. disagree majori- I do with the not discuss ous. do
ty’s mainly comprising that the district court’s chromium oxides determination in grounds second and third for are usable present inven- Cr2Os However, tent were erroneous. tion. A metal oxide other than chromi- key question on the issue of intent was um oxide such as an alkaline earth metal whether misdescribed oxide can be added to the by stating that JP 51-82206 dis another constituent. catalyst “containing chiefly closed a chro added). (emphasis J.A. 3037 JP 51- While mium optionally oxide and other metal may not disclose the use of Cr2 opposed describing oxides” as JP 51- 03, certainly *13 it pure discloses the use of disclosing pure 82206 as chromium ox presence “chromium oxides” without the of (If catalyst. pure ide it disclosed chromi metals, required by other as is highly um oxide it would be material to patent.1 patent, of this even What a art reference discloses or though anticipatory.) parts not Some a question teaches is of fact. Novo Nor majority to hold opinion appear Pharm., Inc. v. Corp., disk Bio-Tech. Gen. misdescription there was no because JP (Fed.Cir.2005); 424 F.3d 1355 Win pure 51-82206 does not disclose chromi Royalty Corp. Wang, ner Int’l accurately um oxide and the (Fed.Cir.2000). record, 1349 On this “chiefly stated that it contained chromium I disturbing see no basis for the district oxide optionally other metal oxides.” court’s factual that JP 51-82206 The district court stated that 51- “JP “pure” disclosed chromium oxide. specifies that the chromium catalyst majority ultimately The agrees can that JP ‘pure’ either be chromium oxide or mainly pure 51-82206 does disclose chromium ox- chromium oxide.” v. Great Atofina ide, 02-1250, slip Lakes Chem. Civ. No. but nonetheless that- the concludes (D.Del. 23, 2005); op. description at 4 Feb. see also id. is mislead- ing. agree. at 42. The I cannot JP 51-82206 dis The district court pure supported Atofina, closes chromium oxide is found as a factual matter by the text of possession which states: which was in full-length of a English 51-82206, translation of JP mis- present
The usable in the Cr203 represented aspect Japanese invention can this prepared various processes [Describing patent, .... to the PTO. In the ’514 calcinations processes]. PTO, prepared by calcining representations to the Atofina de- Cr203 compound containing chromium chro- claiming catalyst scribed JP 51-82206 as hydroxide mium particularly pre- “containing chiefly chromium oxide and ferred. prepared by pro- optionally these other metal oxides.” J.A. 1129 Cr2Os added). pure cesses is not (emphasis but it contains a at 1:48-49 The district small amount other chromium oxides court determined that Atofina’s use of the and has an atomic ratio “chiefly” of about term misleading in that it O/Cr 1.4 only pure to 1.7. Not implied Japanese but also that the patent only dis- Cr2Oz appears argue "chiefly naiy chro- and Technical Terms 390 of Scientific (6th ed.2003); mium oxide" —which is how it described the see also Van Nostrand’s Scien- (9th ed.2002) (describ- Encyclopedia disclosed in JP 51-82206 —means tific "chiefly misleading. ing This is Chromi- three "[t]he oxides of chromium” Cr203.” "CrO, Further, compound um oxide is Cr203, "[a] chromium and and Cr03”). JP 51- +2, +3, oxygen; be in the used the term "chromium ox- + 6 oxidation state.” McGraw-Hill Dictio- ides” to include oxides other than Cr203. partial translation included reference because catalyst which closed a disclosing a portions” rather than “on less material components, focused other Ato- chromium oxides. catalyst containing impression “left the examiner with slip op. at 64. No. fina, any Civ. the examiner did not need to conduct inter rejects the district court’s majority investigation”). further translation or “characterizing a stating that pretation, context, withholding of information did, containing catalyst, as Atofína did in disclose that JP 51-82206 fact oth optionally oxide and ‘chiefly chromium a find- support chromium oxide could itself with it is not inconsistent er metal oxides’ ing of intent. oxide.” being pure chromium possibly circumstances, possible these it is Under added). The Maj. (emphasis at 1002 Op. properly that the court could find to hold that majority appears thus withholding intent in connection with this misleading because description is not I would afford the dis- JP 51-82206. I fail to see not a direct misstatement. opportunity trict court the to reconsider its rule as a matter of majority can how the inequitable conduct determination. court could not find that the district law *14 misleading be that Atofina’s reference conveys. implication cause Samsung Lab. v. Energy
See Semiconductor (Fed. Co., 1368, 1377 ecs.
El Cir.2000) inequita (affirming a submitted patentee where the
ble conduct foreign of a partial translation one-page,