*2 CLEVENGER, Circuit Judges. making product CLEVENGER, cess for Judge. Circuit patent only process—the a claimed ’890 (Lubrizol) appeals Corporation to final include extends 5,1993 judgment the United February specified claimed Dis- for the Southern District Court *3 States Division, Texas, alia candidly Houston inter judge, expressing of The trial con- trict 4,867,890 as- holding difficulty understanding that Patent No. U.S. siderable Patents, Inc. case, chemistry to Chemical signed Exxon and law involved treat- (Exxon) § 102 interpretation is under 35 U.S.C. not invalid issue claim as a ed the of (1988) enforceable, and parties § and is deciding of which of the two or matter of infringed willfully meaning claims. Lubrizol the correct of the offered of judgment patent. jury charged according reverse the to Exxon’s the ’890 We The was at- award of infringement.1 We vacate the preferred interpretation. claim Exxon, injunc- torneys’ to fees and costs duty judge The of the trial is to de dam- and the against tion entered issue, meaning of the claims at termine 15, February 1994. age award entered on jury accordingly. Mark and to instruct the Instruments, Inc., 52 F.3d man v. Westview I (Fed.Cir.1995). In the exercise of discovery, patent in- this After extensive independent duty, judge has an trial jury. Follow- tried to a fringement case was meaning obligation to determine infringement, jury’s of willful ing the verdict claims, notwithstanding the asserted views excep- judge that the concluded case adversary parties. pursuit The § and under 35 U.S.C. tional obligation in this case have result would attorneys’ costs. and awarded Exxon its fees preferred in a determination Exxon’s ed as a post judgment motion for Lubrizol’s trial incorrect, interpretation is and that claim a new trial was denied matter of law or for only partly is correct. As we ex Lubrizol’s brought timely judge, Lubrizol below, jury stating charge a plain under jurisdiction appeal. have under We jury no correct (1988). 1295(a)(1) § U.S.C. reasonably found—on the evi have by Exxon—that Lubrizol’s in this is claim dence submitted The central issue literally infringe Exxon’s a lubri- accused interpretation. Exxon’s claims are to proof, Exxon’s a Because of failure use as claims. cating composition oil suitable for judgment a matter to Lubrizol entitled in internal combustion crankcase lubricant Labs., Inc. v. Bristolr- of law. See Zenith engines. is defined The claimed 1418, 1424, Co., containing Myers Squibb comprising—meaning (Fed.Cir.1994). Accord USPQ2d con- Exxon least—five judgment on liabil “recipe” ingly, we reverse the a tends that its jury verdict and vacate ity on the any product to entered ingredients that extends attorneys’ fees costs awarding ingredients, if the order by using the claimed even The injunction against Lubrizol. com- entered a result of chemical product itself—as is the judgment of District Court which one plexing—fails include to companion appeal chal subject Exx- argues Lubrizol’s ingredients. Lubrizol that since damages vacated.2 lenging product—not pro- a the award on claims opinion question of Exxon is infringement raises is limited literal 1. solely infringement under charged on entitled to a trial now claims. infringement, directly equivalents. was not respect or That issue literal the doctrine of contribution, consequently argued panel, such and whether inducement or to the briefed Nies, Although we, express infringement Judge was willful. view on literal initially proposed jury unlike charge infringement on question. equivalents, counsel doctrine damages was reserved for issue of 2. The doctrine deletion of the consented to the damage liability. The award the trial on after charge given equivalents from the February against entered on jury. “Exxon brief notes that Lubrizol’s 94-1309, argument appealed oral in No. infringement”, and Exxon asserted literal We dissenting March have was heard on which that statement. The does contest preferred interpretation. II judge correctly refused submit the Exxon and crank- Lubrizol manufacture jury, issue to the and instead decided which lubricating compositions case oil and concen- proffered interpretations the two seemed compositions which trate are mixed with may most correct. It well be that some produce lubricating basestock oils for mo- cases one side or the other will offer the engines. products typically tor vehicle Such judge. correct following components contain the as addi- often, however, likely More it is (1) dispersant, suspends impu- tives: interpretations adversaries will offer claim prevent sludge deposits rities to and varnish arguably spec- with the consistent (2) ZDDP, engine parts, zinc-containing *4 prosecution history pro- ification and the compound engine pro- that inhibits wear and victory event, duce for In their side. the (3) oil, duces antioxidant results for the judge’s task is not to decide which of the detergent, helps prevent engine depos- judge adversaries is correct. Instead the its, (4) antioxidant, supplemental and nec- independently must assess the the essary of by because use ZDDP is limited specification, if necessary prosecu- the environmental concerns. Oxidation of the oil history, evidence, and relevant extrinsic component substantially life shortens the of meaning and declare of the the claims. No lubricating oils. in Oxidation results in- judge matter when performs or how a the acidity lubricant, creased of the which can task, appeal Markman we review the engine parts enhance corrosion and in- interpretation issue of claim independently viscosity product, thereby crease of the de- judge. without deference to the trial grading qualities. its lubricant patent ’890 Exxon’s seeks antiox- enhanced IV by idant results the addition of a small copper supplemental amount of the antiox- Representative claims of typical to the ingredients idant other of the patent, ’890 1 is directed to “[a] prosecution history of Exxon’s lubricating composition oil suitable as a patent emphasized synergistic the beneficial crankcase lubricant in internal combustion by copper effects caused (1) added when in engines comprising” major amount of presence dispersant. an ashless (2) lubricating oil, (ie. one eomplexed that neither nor contains metal)
Ill
with
specified
in
amounts of “about 1
(3)
to 10
parts
wt.
from about 0.01
5.0
to
recently
We have
concluded
banc
by
(4)
ZDDP,
weight of oil soluble
5 to claim law,
is a matter of
parts
by
per
weight
million
copper
added
judge
and that the trial
duty
alone has the
oil
form an
soluable
com
responsibility
interpret
the claims at
deterg
pound,
magnesium
or calcium
Markman, 52
issue.
970. After
ent.3
ease,
close of the
judge
evidence
this
argument
parties
heard
from
subject
on the
of claim
meaning of
During
Exxon’s claims.
argued
judge
that ar
to the
at the close of Exxon’s
gument,
argued
meaning
that the
again
case and was considered
in extensive
claims should
left
argument
be
to the
for
at the close of all the evidence. At
decision, if the
agree
court
failed
arguments,
conclusion of the
judge
consolidated the
appeal
No. 94-1309 with the
preparing
suitable for use in
crank-
light
in No.
claim,
93-1275.
of our
reversal
case lubricants. That
like claim has
Lubrizol,
liability judgment against
specific quantity
ingredients,
for
limitations
damage judgment against
basis remains for a
including
ingredient.
the ashless
Lubrizol,
damage
and we therefore vacate the
However,
require
"major
claim 61 does not
judgment entered
case.
(it
lubricating
requires
amount" of
"a lubri-
oil,”
cating
amount),
specific
without
and it re-
text
full
of claim
set
1 is
forth in the
quires
dispersant.
to10
60 wt. of ashless
Both
appendix
opinion.
to this
Claim 61 of the '890
juiy.
claims were submitted to the
patent
lubricating
is drawn to a
oil concentrate
before
by
both
challenged
also
view of
in its
correct
Exxon was
decided
to the
submitted
the case was
parties did
meaning. The
claims’
mat-
judgment as a
trial motion
post
patent are
’890
claims
that the
contend
of law.
ter
manner
specified
to a
drawn
claims
process
as written
manufacture,
and the
above,
drawn
Exxon’s claims are
As noted
meaning.
are
Nor
such
particularly
have
could not
has
specific product which
to a
be, product-
be,
they
Nothing
or could
claims said
defined
’890
history
The claims
prosecution
claims.
or the
by-process
specification,
composition:
particular
are
drawn
to a
Exxon’s claims
suggests
drawn
patent are
According
Exx-
ingredi
particular
contains
claims.
they
to a
Indeed,
contrary,
the title
any product that
on,
cover
ents.
reads,
emphasis
with the
identified
’890
using
trial,
added,
Compositions Con
“Lubricating Oil
During the
l.4
the limitations
[ZDDP], Metal
Dispersant,
taining
to a
to be
Ashless
thus said
claims were
See
Compound”.
Copper
Detergent and
composition.
making
“recipe”
Banner,
Am. v.
Corp.
Titanium Metals
Whether
USPQ
777-78
produced
the actual
found in
*5
as
(Fed.Cir.1985)
patent’s title
(referring to
is, according to Exx-
ingredients
mixing the
aid).
language of claim
The
interpretative
meaning
the
to the
on,
irrelevant
simply
detergent
a
copper and to
to
refers
“added”
Exxon’s
point,
this
emphasize
To
claims.
specification demonstrates
“additive.”
judge and
to the
stated —both
counsel
at a
aim
chemical
references
that those claim
a
cover
claims will
Exxon’s
this court —that
being
ingredients
composition to
copper re-
added
has the
that
composition
meaning to all the
give
must
We
introduced.
dispersant
any ashless
gardless
Sabatino,
In re
in
claims.
Exxon’s
words
short, in
In
in
mixture.
the
be found
can
(CCPA
911, 913, 178 USPQ
F.2d
making
“recipe” for
the claimed
view
Exxon’s
subject
1973) (“Claim
defining the
limitations
product.
claimed
is the
product
claimed
the
disregard
are never
the invention
matter
jury accord-
charged the
judge
The trial
specifi
ed.”)
addition,
the ’890
the text
In
ingly:
twenty references
over
cation includes
cover
Exxon’s claims
you that
I instruct
to the
in reference
“containing”
composi-
go into the
Furthermore,
ingredients which
the
composition.
in the
claimed
proved
has
Exxon
you find that
If
that
applications
tion.
prosecution
during
by using
is made
product
patent,
repeatedly
that a
Exxon
’890
in the
resulted
in
amounts
the
starting ingredients
of its invention
genius
emphasized
claims,
of Exxon’s
synergism
more
for in one or
called
unknoum
lay
previously
“in the
infringes.
directly
ZDDP
product
[copper]
then
material
type
dispersant of the
an ashless
presence of
had been
interpretation
of claim
The issue
application....”
described
a
in its motion
by Lubrizol
raised first
specifi-
ease,
sum,
review
Exxon’s
a
close of
at the
verdict
directed
point
history all
cation,
prosecution
issue was
judge denied.
which the
prod-
a
that Exxon
judg-
the conclusion
motion
by
again
Lubrizol’s
raised
making
uct,
recipe for
whatever
merely a
not
all the
at
close
matter of law
aas
ment
recipe
use of the
from the
results
product
judge. The
evidence,
by the
also denied
respects
conclusion
This
ingredients.
interpretation
claim
jury on
charge to the
(Fed.Cir.1991); see
1535, USPQ2d
starting
solely by claim defined
If the
Chisum,
§
at 8-79
8.05
Patents
containing
S.
actually
all the
also Donald
product
ingredients, a
view,
cases).
escape
(1994) (collecting
at
Under Exxon’s
ingredients would seem
prod-
produced by the com-
a
to reach
infringement if
not
would seem
also
least literal
its claims
at odds
ingredients.
starting
Such
of different
bination
with a nonashless
uct
infring-
product
a
dur-
doctrine that
with the
rendered ashless
ingredient that is somehow
containing every claim limita-
any product
manufacture,
rendering
ed
is chemical-
a
ing
if such
tion,
product
See
is made.
regardless of how
ly possible.
Rexnord, Inc.,
Corp.
Laitram
claimed, namely
composi-
product
which is
chemical
occurs when the Lubrizol
is in the
process
being
product.
tion. The chemical
exists
made into the final
together.
moment the
are mixed
witnesses,
According to
that reaction
Exxon’s
mixture,
ingredi-
creation of
Before
complete
did
result
elimination
ash-
independently.
particular
ents exist
less
Exxon thus
proportions specified
simply
in the claims
product
did
on Lubrizol’s final
not focus
define the characteristics of
claimed com-
prove infringement.
adopted
position.
infringing
broader
and described the
view
activity
occurring
ingre-
while the claimed
Under Lubrizol’s
view
reactions,
undergoing
dients were
chemical
appeal,
composi-
trial and
asserted at
necessarily
product,
a time before the final
Exxon is
limited
sale,
ready for
exists.
ready
made and
for use in the en-
gine environment. Lubrizol is correct that
judge
thus hold
We
that the
erred as
simply
product,
the claims read on a
giving
preferred
matter of law in
recipe,
thinking
but
Lubrizol errs
that the
jury,
using
composi-
on end
read
ruling
on Lubrizol’s
meaning
tions. Lubrizol thus asserts a claim
post
proper charge,
trial motion.
Under
depends upon
the time at which one
would not have
if
been asked Lubri-
specifi-
views the
claimed. The
starting
zol used Exxon’s
In-
whole,
particu-
cation as
and the claims in
stead,
would have been asked to find
lar,
temporal
contain no
limitation to the
proved
preponder-
whether Exxon had
“composition.” Indeed,
term
claim 61 reads
ance of the
evidence
lubricants,
on a
preparing
concentrate for
at some
contained each of
time
the claimed
*6
hardly product ready
which is
a
for consumer
recipe ingredients in the
specifically
amounts
1,
composition
end use. The
of claim once its
claimed.
mixed,
ingredients
ais
exist-
ing during
being
manufacture that is
used to
V
product.
produce
Consequently,
the end
as
properly interpreted, Exxon’s claims are to a
interpretation
Given the correct
ingre-
that
specified
contains the
claims,
dispositive question
Exxon’s
be
any
dients at
from the
time
moment at which
any jury
reasonably
fore us is whether
could
together.
are mixed
This
products
have found that Lubrizol’s accused
interpretation
preserves
of Exxon’s claims
literally infringe
the claims of the ’890
identity
their
as
recog-
and
properly
as
Jamesbury Corp.
construed.
nizes
chemistry
as a matter of
that the com-
Prods.,
1556, 1560-61,
Litton Indus.
position exists from the moment created.
253,
(Fed.Cir.1985).
USPQ
Our au
Although
is
taking
Lubrizol
correct in
Exx-
thority
question
to decide this
been
has
ex
on’s
to
on product,
interpre-
claims
read
a
its
plicitly
Supreme
stated
Court:
tation
Exxon’s claims is too
Exx-
narrow.
If
presented
the evidence
in the first trial
scope
on
entitled to a broader
that is not
suffice,
law,
would not
as a matter of
to
time-limited,
any product
one that reads on
support
properly
verdict under the
at
time
propor-
that contains the claimed
defense, judgment
formulated
prop-
tions of
interpreta-
The correct
erly
once,
respondent
be entered for the
at
simply
range
affords Exxon a wider
without a new trial.
that
And
is so even
product on which to
infringement.
assert
In-
(as
claims)
petitioner
though
respondent
deed,
advantage
Exxon even took
of the cor-
object
failed to
to
instructions that
during
rect
trial. When de-
expressed
differently,
the defense
and
fending its case under Lubrizol’s claim inter-
support
fashion that
would
verdict.
pretation, Exxon did not introduce evidence
Boyle
that Lubrizol’s final
infringed.
Technologies
In-
v. United
Corp., 487 U.S.
offering
500, 513-514,
2510,
analyzed
stead
evidence that
108 S.Ct.
components
(1988).
final product,
may
Lubrizol’s
Exx- L.Ed.2d 442
Lubrizol thus
on’s witnesses testified to the reaction that
entitled to
aas matter of law. Id.
rebonding
unbonding and
bonding,
moleeules
evidence
question
“The
vari-
described
was
process
constantly. The
for the
of fact
issue
an
create
sufficient
with
dance
square
to a
analogous
ously
law,
we will
as
question
itself
jury is
hand-holding
around, to
swapping
partners
at
Jamesbury, 756
decide.”
now
on
being taken
hats
unholding,
re-
and
infringement
and
Literal
USPQ 257.
at
also
unbonding,
bonding and
in Exxon’s
off.
every limitation
that
quires
Laitram,
occurs
“dynamic equilibrium,”
as a
product.
described
accused
be found
According to
Exx-
of times.
number
USPQ2d at
infinite
F.2d at
re-
its constant
by preponder-
Exxon,
bond—with
prove
weak
thus
burden
on’s
things,
Lubrizol’s
that
evidence,
rebonding proved
other
among
versal
ance
—
always
nonashless, and
at some
contained
products
dispersant was
Lubrizol’s
that
spe-
proof
amounts
Exxon’s
ashless.
dispersant
sometimes
ashless
time
therefore
did
opinion and
expert
cifically claimed.
supplied
was
resulting
measurements
any scientific
trial, Exxon
include
of the
beginning
From
products.
accused
Lubrizol’s
of claim from tests
view
Lubrizol’s
on notice
was
infringement
relate
did not
proof
Exxon
required
Instead,
its
products.
disper-
by Lubrizol’s
contained
products
Lubrizol’s
of ashless
presence
aimed
proof
specified.
amounts
sant
end
during manufacture
Lubrizol
dispersant
discovery that
from
aware
also
infringe-
charge of
against
defend
would
manufac-
its
by proof
ment
countered
expert witnesses
Lubrizol’s
Exx-
dispersant.
no ashless
contained
tured
between
created
the bond
opinion
their
simply proving
choice of
thus had
on
strong
awas
dispersant
and the
the zinc
claims, or
view of
infringement under
remained
complex,
under Lu-
proving
in addition
testi-
time.
99.999%
non-ashless
to do
chose
well. Exxon
view
brizol’s
on nucle-
relied
Lubrizol’s witnesses
mony of
its view
defense
Lubrizol’s
both.
performed
tests
resonance
magnetic
ar
that, when
evidence
on its
is based
concluded
products,
on its
in Exx-
mixes
one
no ashless
there is
compound
soluble
on’s
start-
blending their
products after
accused
*7
compound
zinc
to form
ZDDP
with
reacts
ing
to
the
bonds
zinc then
and
CuDDP
and
ap-
this
of
purposes
it non-
render
dispersant
may
to
assume
formerly
We
ashless
could
reaction,
isit
evidence
hearing
as,
such
jury
the
ashless,
after
that
inasmuch
peal
some
According to Lu-
that —at
a metal.
concluded
reasonably have
with
complexed
product
and the
the
of
immediate
brizol,
during the manufacture
reactions
the
time —
disper-
and zinc
dispersant
state —ashless
the
between
formed
in its manufactured
bond
or
lacks the
That
result,
product
product.5
its
firm,
as a
in Lubrizol’s
found
is
is
sant
necessary
of
dispositive
as a
however,
specified
is
dispersant
assumption,
ashless
as a
claims.
motion
in Exxon’s
post trial
ingredient
Lubrizol’s
to
Exxon
enough for
It is not
law.
of
matter
case,
its
prove
to
trial,
sought
Exxon
At
in Lubri-
dispersant
the
of
some
that
prove
with
interpretation,
Lubrizol’s
under
momentarily.
if
even
ashless
is
zol’s
the
between
formed
bond
testimony
the
that
if Exxon
only thwarted
is
motion
Lubrizol’s
one.
weak
was a
dispersant
and the
zinc
a reason-
testimony
which
from
supplied
unstable,
has
the
with
as
described
was
bond
Un-
evidence,
simply irrelevant.
is
court,
ic resonance
not clear
it is
this
before
the record
5. On
given, there
charge
der the
jury
consider
to
for the
judge meant
the trial
evi-
the
jury to consider
for the
reason
no
be-
bond
testimony
nature
about
Lubrizol
whether
going to
parties
of both
dence
infringes
dispersant.
ashless
and the
zinc
tween
find
To
the claims.
of
view
under
clearly
counsel,
judge stated
with
discussions
find
jury
to
had
charged, all
wanted,
infringement as
juiy as Exxon
charge the
he would
starting
Exxon's
used
Lubrizol
"hap-
is that
claims what
of
view
Exxon's
under
claimed,
essentially
the amount
ingredients in
manufacture
during or after
pot”
pens in the
fact.
magnet-
uncontested
nuclear
and Lubrizol's
composition,
jury
prod-
able
could
conclude
below without remand for
second trial on
dispersant
ucts
contain ashless
law. That what
to
correct
we did
Rexnord,
amounts claimed. Exxon
offered
testimo-
Corp.
bench trial
Laitram
v.
ny
dispersant
Inc.,
(Fed.Cir.1991),
on the amounts of ashless
939 F.2d
cit-
present
products.
in Lubrizol’s
Nor did ing
support
very language
from the
provide
jury
Exxon
with direct evidence Supreme
Boyle
Court
decision
we
from
it
could have inferred that
rely upon
deny
herein to
Exxon the second
required percentages
com-
are found in the
Judge
provide.
trial
Nies would
We
position
after
is created out of its
ordinarily
thing in
appellate
do the same
starting ingredients.
In its briefs
this
to
cases,
typically
trial
explaining
review
court,
emphasized
Exxon’s failure of
duty
our
as follows:
regard
proof
quantities
Accordingly, we must determine wheth-
prod-
contained in the accused
upon
er there exists evidence of record
respond
ucts. Exxon did not
with assertions
jury might properly
which a
have returned
proofs
quanti-
that the record included
verdict Litton’s favor when the correct
present
ties
the accused
legal
applied.
not,
standard is
If there is
Instead,
products.
argued only
Exxon
Jamesbury
ques-
was entitled to have the
requisite
“Lubrizol started with the
amount
removed from the
decided as
and,
dispersant
of ashless
even under its
a matter of law.
theory,
present
still
Prods.,
Jamesbury Corp. v. Litton Indus.
product,
ever-chang-
Lubrizol’s final
albeit in
Inc.,
(Fed.Cir.1985).
1556, 1560
756 F.2d
See
ing
prevail
form.” In
proper-
order
Corp.
Partnership,
also Dana
Ltd.
IPC
ly interpreted
obliged
Exxon
(Fed.Cir.1988).
judi
Such
prove
presence
both the
of ashless
cial
extraordinary.
events are not
presence
required quantity.
Exx-
case,
perceive
On the-
facts
we
on’s
requires
failure as to the latter
tous
from,
reject,
no reason to deviate
or
conclude
a matter of law in Lubrizol’s
compels
settled law that
reversal.
cor
favor.
rect meaning
slight
of Exxon’s claims but
entails,
Post-trial
practice
motion
in
urged vigorously
variance from that
and con
alia,
ter
ascertainment of whether correct
tinuously by
sought
Lubrizol. That Lubrizol
applied
presented
law has been
to the facts
proof
hold Exxon to
in reaching
judgment.
at trial
a verdict or
comes,
hardly
came,
out
judge
post-
When a
determines on a
fully
the blue. Exxon was
that Lubri-
aware
is,
correctly
verdict motion what the law
zol
meaning
stood on a claim
that would
judge then
any juror
determines require
presence
spec
reasonably
have reached—on the evi
*8
ingredients
ified
of
amounts
claimed
in some
presented
dence
at trial—the verdict chal
product.
fact,
attempted
Lubrizol
In
Exxon
lenged by
post-verdict
the
motion.
If the
prove infringement
to
interpreta
under the
no,
judge
answer is
the trial
reverses the
give
to
we
its claims. We have noted
jury
proof
verdict for failure of
on the correct
that Exxon
not
proofs
chose
to introduce
of
legal standard, and denies the
a
loser
second
the
products.
contents of Lubrizol’s final
hap
trial on the
law.
correct
That is what
Rather,
proof
presence
its
of some
Markman,
pened
in
at trial
and we affirmed
dispersant,
evidence that we
in
credit
banc,
disposition
that
in
52 F.3d
testing
post
motion,
the denial of the
verdict
989.
product
to
pre-final
relates
in
states. Noth
ing
When we
on appeal,
precluded
determine
as a
arguing
Exxon from
and seek
law,
judge
matter of
that
ing
a trial
prove
product,
has misinter
to
that a Lubrizol
at some
claim,
preted
independently
creation,
a
we
con
time after its
speci
contained the
strue the claim to determine its correct
ingredients
fied
in the claimed amounts. We
meaning, and then
emphasized
determine if the facts
have
Exxon’s
that
error was in
presented
support
appealed
at trial can
proof
amounts,
the
of
failure
as to the claimed
judgment.
not,
If
judgment
we
prove
reverse the
without
it
infringe-
could not
meaning
cry foul in not
claim
The Lubrizol’s
meaning.
claim
under Lubrizol’s
ment
prove
chance to
what it was
having a second
until
the claims
interpret
judge did not
trial
Consequently,
at
on the
prove
to
trial.
free
in,
the case
just before
was
evidence
all the
case,
no
to
discern
reason
facts of this
we
knowing
jury.
the
to
submitted
was
Exxon —
law in
exception into the settled
carve an
it
lose
would
defense —knew
Lubrizol’s
opportunity
to
provide
to
Exxon
order
meaning unless it could
on Lubrizol’s
(as
drafting
in
escape from the flaws
its
claimed
presence of the
the
show
opin-
Judge Plager’s concurring
described
in some Lubrizol
claimed amounts
ion)
therefore
strategy.
We
dis-
the mo-
to choose
Exxon was free
product.
that our
agree
Judge Nies’s view
rever-
with
proof
identify with
at which would
ment
trial is
remand for a second
im-
sal without
Thus,
infringed.
product
Lubrizol
a
proper.6
sought
to
argued and
have
could
present
that ashless
prove
VI
along
the other
percentages,
claimed
to a
entitled
Because Lubrizol is
their
of law and
noninfringement
a matter
of
of
amounts,
moment
any time from the
at
awarding Exxon
of
order
can-
thus to vacation
product. Exxon
of Lubrizol’s
creation
and of the in-
attorneys’ fees and costs
on
its
our variation
surprise from
now claim
Inc.,
Chairs,
direct-
a
motion for
Orthokinetics,
tion was whether
barebones
Safety Travel
Inc. v.
evidence,
verdict,
(Fed.Cir.1986),
of all the
ed
at
close
and Malta
F.2d 1565
Inc.,
(Fed.
Carillons,
grounds that the evi-
noninfringement “on the
fringement inor the alternative for a new (b) copolymers of olefin with C2 C20 trial. Because there is damage no basis for a mono- or dicarboxylic acid C3 C10 against award we vacate the dam- amine, neutralized with hydroxy age award in No. 94-1309. alcohols, amine or and
No costs. (c) polymers ethylene with a toC3 olefin further by reacted either C20 REVERSED. grafting unsaturated nitro- C4 C2o gen containing monomers thereon or APPENDIX by grafting an unsaturated acid onto polymer backbone Claim 1 and then of the ’890 react- reads as follows: ing carboxylic said groups acid 1. A lubricating oil suitable amine, hydroxy alcohol; amine or and as a crankcase lubricant in internal com- (3)mixtures (1) (2); and wherein engines bustion comprising: when said lubricating (1) oil major A. a oil; amount of lubricating present, then dispersing said amount B. a dispersing amount of lubricating (1) is %, about 1 to 10 wt. and when said oil dispersant selected from group lubricating (2) present, of: consisting then (2) said dispersing amount of nitrogen from %; ester about 0.3 contain- to 10 wt. ing dispersant compounds selected from C. from about 0.01 to parts by 5.0 the group consisting of: weight of oil soluble zinc dihydroearbyl dithiophosphate wherein hydroearbyl (a) oil salts, amides, imides, soluble groups contain from 1 to 18 carbon at- oxazolines, esters, and mixtures there- oms; of, long hydrocarbon chain substi- D. an antioxidant amount, effective tuted mono- and discarboxylic acids or within the range of from about 5 to anhydrides; their parts per about 500 million weight, of (b) long chain aliphatic hydrocarbons added copper in form of an oil solu- having polyamine directly attached ble compound; and thereto; E. lubricating oil detergent additive (e) Mannieh condensation comprises at least magnesium one formed condensing about molar or calcium salt of a material selected proportion of long hydrocarbon chain from the group consisting of sulfonic phenol substituted with from about 1 acids, alkyl phenols, alkyl sulfurized phe- to 2.5 moles of formaldehyde nols, alkyl from salicylates naphthenates, about 0.5 to 2 moles of polyalkylene wherein parts by said weight are based polyamine; upon wherein said long parts chain weight of said lubri- hydrocarbon group cating composition is a polymer of a weight said is % to monoolefin, on weight said based polymer C2 hav- lubricating said C5 ing composition. a molecular weight of from about 5000; to about PLAGER, Judge, Circuit concurring. (2) nitrogen or containing poly- ester join I in the reversal of court’s meric viscosity improver index disper- infringement, based I what sants which are selected from group consider to be the correct interpreta- consisting of: tion as advanced by Judge Clevenger, and (a) the consequences polymers that flow comprised therefrom. toC4 *10 C24
unsaturated vinyl esters of alcohol or There testimony in the record that indi- Cjo unsaturated mono- or C3 cates that is not known exactly how the dicarboxylic acid with unsaturated ni- chemical complexing, described in opin- the prepare a so, the disclosure to Exx- tion and used ion, If this is then actually works. ingre- companies now burden, competitive product. chemical Both prove that the on’s point majority pas- in the accused in of their copper some the vast exist at use dients may proportions, Following in claimed senger the car motor oil formulations. accomplishment. That impossible litigation finding phase be of the of an alternative argue in favor said to Pat- infringement be of Exxon’s U.S. liable for claims, what was the 4,867,890, $48,- construction Exxon was awarded ent No. product-by-process process meant was 000,000 damages were doubled for in which claim. $8,700,000 plus in interest willfulness and $23,700,000 attorney in fees.1 argument difficulty with
The demonstrates, claims, opinion well essentially issue of matter composition of unquestionably are to whether Exxon drafted comes down appear retrospect, it would claims. patent in that covers its inven- claim its U.S. product-by-process it had Exxon wishes claims to majority interprets the tion. The “recipe.” But we are and thus a to a require that each of the listed additives they might have claims as free to read the pre-mix identity, to must retain its motor oil drafted, they do not if as drafted even been in present be the extent that each must may have in- inventor accomplish what the mix- proportions point at some after claimed tended. Exxon failed to ing. Because art, an art on drafting is itself an Claim (in pro- those additives remained identifiable system today de- patent the entire which time portions) product in at some through language pends. The mixing, majority reverses during or after a nose of wax to expressed is not are infringement. agree I judgment of pleases into a form pushed and shoved infringes. Lu- that Lubrizol the trial court a court produces particular result and that required addi- motor oil contains brizol’s generally, and may public desire. required To hold that in the amounts. tives patentee’s competitors, particular, “comprise” those product does not specific notice of what entitled clear possible their reaction ingredients because of That is as his invention. the inventor claims mixing to me upon other seems with each draft easy assignment for those who not an nothing speak. The short of double it, duty requires and our but the law majority interpreted as the does can be requirement. that we enforce the demands from the context by reading them in isolation interpreta- patent no room in There is Moreover, majority’s in- patent. of the cy pres doc- equivalent of the tion for grounds provides terpretation gratuitously trine; claiming process leave the that would section for invalidation purposes which lie too indefinite serve not de- specification does because the patent system. of the at the heart art to skilled nor enable one scribe ingre- containing claimed make a NIES, dissenting. Judge, Circuit except as in the claimed amounts dients in the Contrary wisdom to conventional ingredients.2 mixed starting ingredients, not art, that small amounts Exxon discovered majority principally on focuses as an motor oil acts automobile re- which must dispersant” “ashless antioxidant, developed highly suc- and it required main in its view “ashless” using that discov- commercial cessful interpret I “ash- composition. amount in the ery. that Lubrizol The record discloses desig- simply name or dispersant” less copper in Exxon’s presence learned of the ingredient required as one patent applica- nation of Exxon’s U.K. motor oil from it, making using process challenging manner and Appeal the amount of No. 94-1309 1. concise, full, clear, exact terms as to damages decision. mooted such art which it any person skilled enable states, § Paragraph U.S.C. 1 of 35 nearly connect- pertains it is most or with which ” specification part: shall contain relevant "The ed, and use the same.... to make invention, description a written *11 1564
additives. It ingredient does not mean the product then that directly must remain inert. infringes. States, As stated Adams v. United argues that Lubrizol instruction is 39, 49, 708, 713, 15 U.S. S.Ct. L.Ed.2d wrong. that, It regardless maintains of what USPQ 479, (1966), “it is fundamental ingredients together, are mixed there is in- that claims are to be light construed in fringement only if the final lubricant compo- specifications and both are to be read awith sition contains the five ingredients, claimed
view to ascertaining the invention.” More Thus, claimed amounts. although it is over, “construed, claims possible, should be if essentially uncontested that Lubrizol adds as to sustain validity.” their North Ameri dispersant ashless and the other in- Vaccine, can Inc. v. Cyanamid American gredients in the claimed amounts to its motor Co., 1333, 1337 USPQ2d oil, argues Lubrizol that there is no infringe- (Fed.Cir.1993). ment because it proved was not that “ash- dispersant, less” amount, in the claimed Applying precepts those warrants affir- present in products. mance in My is, this it however, Specifically, case. concern urges, the dispersant ashless merely this case. uses majority The man- admixture with other ingredients technical dates rules speci- for how chemical com- fied in the positions complexes must be metal moi- claimed which I reject.
eties from ingredients those so that the dis- persant in the final I. longer can no considered “ashless.” Infringement here turns on interpreting Claim 1 Exxon, 61. is directed to “a hand, on the other urges that the lubricating composition” (a) comprising: judge’s instruction the proper reflects major oil; (b) amount lubricating a speci- dispersant ashless (either fied dispersant amount of about 1-10 starting identifies a ingredient, and under wt. percent of an dispersant3 ashless interpretation, it does not matter what percent about 0.3-10 wt. “polymeric aof complex forms between metal and the disper- viscosity (c) improver”4); index about sant. 0.01 parts by 5.0 weight of zinc dihydrocarbyl majority opinion interprets the claims (d) dithiophosphate (“ZDDP”); about to5 somewhere interpretations between the about parts per million weight of Exxon and covering any mixed copper added in the form anof oil soluble product or otherwise —in which the —final (e) compound; and a calcium or mag- ingredients five specified in the claims exist detergent. nesium Claim 61 claims a “lubri- in the claimed amounts. majority ac- cating oil composition” concentrate compris- cepts proof Lubrizol’s that at least some ing the ingredients same five different, converted nonashless specified amounts. production during of Lubrizol’s The trial judge interpreted those claims products, that, and because of proving that jury, instructing them as follows: required amounts of the five I you instruct that Exxon’s claims cover were mixed is enough prove infringe- go into the composi- ment. Consequently, to infringement, show you tion. If find that a Lubrizol believes that it was Exxon’s using the starting ingredients in that, burden point at during some the amounts called for in one or production more products, mixing
3. "Ashless'' denotes an absence Typically, combined or dispersants most are made ashless complexed metal. Lubrizol’s Dr. manufacturing Salomon point testi- from view.” fied "it is from a manufacturing easier point of view to manufacture it in the ashless form.” polymeric viscosity improver index formulator, She added that “[a]s I don't (“PVII”) [if care here, is not issue inasmuch as the it is ashless or product] non-ashless in the where challenged alleged to use I surprising have some discovery that affects dispersant, the ashless not the PVII. Hence- performance. forth, But it doesn't matter to opinion me.... will not mention PVII.
1565 produced by combining the of “ash- ucts claimed amounts pot contained the claims, specified the other four claimed or of their amounts. dispersant” and less concludes, And, omissions, light say the that one of of those in enough evidence ordinary not introduced in Exxon has skill the art would nevertheless that burden. record to meet proportions the that the must be mea- conclude pot reality. sured in the is divorced from judge’s agree I with the trial art, upon in that one skilled the of the claims interpretation that the claims list claims, patent specification, reviewing the starting ingredients by compar- is bolstered testimony, in- history, and would prosecution nonborated, ing many dispersants the ashless covering a lubri- 1 and 61 as terpret claims patent, disclosed at columns 6-8 of the comprising the cating oil claims, expressly in one included the required resulting from a combination of the type borated version —the amounts, re- ingredients, in the claimed five dispersants parties certain ashless —that reactions, or metal gardless unknown agree complex does not with the metal moiet- those complexes formed between ingredients specified ies from other interpre- upon mixing. With that that occurs nonborated, the claims. Because the ashless tation, literal is admitted. dispersants completely do not remain ingredients speci- when mixed with the other Interpretation In A. Claim General claims, majority’s inter- fied meaning we To determine pretation the claims would not cover use of patent specification, other must examine the if dispersants such a sufficient amount there- history. Mark prosecution and the complexed to form nonashless with metal Instruments, Inc., F.3d 52 man Westview Yet, dispersants. it is those nonborated dis- (Fed.Cir. 967, 979, 1321, USPQ2d 1329 persants specification and to which the (in 1995) banc). testimony of Resort primarily Consequent- claims are directed.5 might knowledgeable in the art also be those ly, majority interpretation limits cover- claims are helpful to the court inasmuch as age dispersants far than indicated fewer perspective of one of interpreted from the specification and claims. Diag ordinary in the art. SmithKline skill nostics, Corp., F.2d Inc. v. Helena Lab. Moreover, specification the ’890 does (Fed.Cir. 1468, USPQ2d contemplat- describe nor teach the invention 1988). i.e., majority’s interpretation, ed types dispersant, it does not teach the Specification and Claims B. The thereof, or the conditions needed amounts containing com- specification the in- attain a discusses —after ingredients speci- plexation amounts of an additive for motor vention terms —the Although, under the ma- function of fied in the claims. does not interfere with the jority’s interpretation, specification particular is on would additives. The focus other enabling disper- borated compound anti- for the claimed as an addition (because complex), they those of it that is em- sants do oxidant and the amount Moreover, portion a small dispersants constitute ployed. the amounts dispersants. the disclosed and claimed working examples parts and other Hence, formulating composition as inter- amount of specification are identified as the majority, if additives, preted by the even within ordi- amounts in the final not the art, require analysis nary extensive mixing. skill would product after There is identity suggested in the experimentation not even anywhere specification patent, thereby rendering the claims invalid.6 “eomplexation” prod- of intermediate or final Genentech, generally v. The Wellcome dispersants 6. See Inc. are discussed 5. Borated ashless 1555, 1564-65, Ltd., 8, specification Foundation lines 43-50 of the '890 column 1994) (Fed.Cir. (rejecting USPQ2d working examples. Of and are used in the four '890, 7, 14-24, 30, 37-60, many inopera covers the 83 claims in borated, permutations); Co. v. E.I.d uP Atlas Powder specifically tive and 72-82 mention 1576-77, Co., other, & dispersants. ont De Nemours well as C. History however, Prosecution argued that can “[o]ne have a solu- dispersant complexed of a with an oil specification, As does the prosecution *13 copper compound, insoluble or can have an history focuses on the starting additives as [copper] compound” soluble (emphasis ingredients, products not on reaction added). transpired Similar debate during (and the in amounts a final or intermediate prosecution Application 177, 367, SN product). As example, the Examiner’s 362,114. parent of SN agreed The Board prepared Answer respect with with applicants.8 rejection the examiner’s Ap- in claims (which plication 362,114 Ser. No. was the argument during prosecution grandparent Application 49,712, Ser. No. some the claims read on embodiments application resulting patent), in the ’890 copper wherein the complexes with the ash- states: less dispersant probative of Exxon’s claim The claims are believed to be directed to interpretation as well as the examin- comprising known addi- Specifically, er. it shows the claim is direct- tives, combined at conventional levels of ed to a with dispersant “ashless” additions for their combined attendant a starting ingredient, inasmuch as some of functions. the claims covered complex formation of a And in the Reply Brief to that Examiner’s metal, between that and a forma- Answer, the applicants state: tion that would render “non- question should be specif- whether the Significantly, ashless”. the examiner found ic combination of by Ap- additives claimed claiming no flaw in motor oil pellants novel, gives it unobvious additives as set out in Exxon’s claim here results. The answer is the combination is (and I in foreign note applications as novel and the give combination does unex- well). pected results.
And during elsewhere prosecution of that D. Other Considerations application, 049,712, and of SN the examiner refers to “the various additives The record includes testimony (dispersants ...).” ... dithiophosphates that it witnesses is not copper known how serves as an in interpretation is antioxidant supported by also environment following 362,114 episode. composition, claimed SN included that certain reac- 37, both predictable tions which referred are not “copper environment, to a compound,” 38, though they even might which predictable was to a be in a “composition model, according 37, to claim cop- is uncertain said whether zinc or per compound being phosphorus oil soluble.” Claim of ZDDP undergoes interaction, 38 rejected was duplicated because it general, and in claim 37.7 that no one was certain of the position examiner took the cop- identity exact per compound hence, must be oil what happening pot. Despite soluble— “copper compound” that, and “oil majority soluble holds applicants responsi- compound” are the same. The applicants, knowing ble for about the formation of a 409, (Fed.Cir.1984) (“if USPQ the num Paragraph (1988), § 2 of 35 U.S.C. 112 states: inoperative ber of signifi specification combinations "The becomes shall conclude with one or cant, effect, particularly and in more ordinary pointing forces one of skill in out and dis- tinctly claiming subject experiment the art unduly matter which practice order to applicant regards invention, as his invention.” the claimed might the claims indeed invalid”); Raytheon be Roper Corp., Co. v. 8. The noted yet Board that the examiner had not (Fed.Cir. USPQ (un- raised rejection an "insufficient disclosure" 1983) ("Because it is for the invention ¶ 112, 1). § der 35 rejection U.S.C. That exist,
that enablement must
the im
because
raised,
subsequently
rejecting
context of
enabled,
possible cannot
containing
be
a claim
049,712
claims 15-17 of SN
on the
impossible
may
limitation
to meet
invalid
held
ground
support
specification
insufficient
112.”),
denied,
§
cert.
469 U.S.
for an
copper compound.
oil insoluble
Those
(1984).
S.Ct.
helped “additives,” the claim by listing five because Exxon, stated: coverage for a mixture of implies this looking an invention like at [When Thus, “composi- claiming a Exxon is those. components, to deter- a number of matter,” which: tion of you ... look at infringement] what mine formed “... is an instrument rea- product. The combined to make ingredients, more of two or intermixture doesn’t patent law that is son for belong properties which possessing happens you what require understand separate ingredients in their these none necessary All that is final to that The intermixture state.... And is sort result. you obtain the is how pro- may be of matter mix to- You them baking a cake. of like opera- or chemical by mechanical duced chemically happens And gether. what compound tions, may be and its result oven, with. you not concerned its constituent into resolvable substance compositions, happens what these With processes, or a really it is mechanical knows and elements engine no one destroyed can new not a consideration. substance analysis.” [Footnote only by chemical proba- that he has “seen stated Johmann Mr. omitted.] patents of lubricant bly literally thousands this is like standard years, over very is a “this class notes that Walker Thus, claim- composition.” Id. format com- chemical and embraces broad one in terms of amounts ing the mixtures, physical pounds, mechanical in con- typical way it is done is “a additives things.” variety of great alloys Id. oil additives.” with motor nection omitted.] [Footnote practi- was a Though Mr. Johmann PATENTS, § Chisum, 1.02[2] 1-10 tioner, opposed a scientist skilled Robinson, The Law from W. (quoting perspective of art, to the record he adds of Patents for Useful Inventions 278-79 ll.
(1890)).
majority’s
I would add that the
reversal
extraordinary disposition
E.
assuming
Conclusion
its in
terpretation were
correct. This
chal
ingredi-
Lubrizol added to its motor oil the
lenges
ruling
the district court’s
on Lubri-
taught by
specification,
ents
and articu-
zol’s
motion
renewed
for JMOL under Fed.
lated in
patent.
of Exxon’s ’890
majority
R.Civ.P. 50. The
holds that
sought
Lubrizol then
to avoid
district
ruling
court’s
on the merits of Lubri-
by arguing at trial that the claims are not
zol’s motion was correct.
argu
literally infringed because metal ions from
ment for JMOL —that the claims define the
ingredients complex
some of the
with the
rejected.
If Lubrizol had
—is
attempted
position
to advance the
converting
dispersant”
“ashless
nonashless
appeal,
reject
we would have
dispersant.
argument
That
was unsuccessful
argument
ed the
grounds
as outside the
as
under the district
interpreta-
court’s claim
*15
motions,
serted in the JMOL
before
tion,
submis
but it
appeal
has succeeded on
jury,
sion to the
as well as after the
majority’s
verdict
interpretation.
claim
Orthokinetics,
was returned.
Safety
Inc. v.
majority
concurring
The
opinions
Chairs, Inc.,
1565, 1579,
Travel
806 F.2d
1
that,
seem to be of the view
if Exxon wanted USPQ2d 1081,
(Fed.Cir.1986) (“A
1091
spe
lubricating
to claim a
formed
cific reference to an issue in a
for
motion
by combining
the five
specified in
preserve
JNOV
cannot
issue for appeal
it made a technical error in writ-
where that issue
specifically
was not
included
ing the
majority
claims. The
require
would
in a motion for directed verdict made before
product by
a
process
product
claim to
a
cover
verdict.”);
retired to consider its
comprising a
formula of starting
Carillons, Inc.,
Malta v. Schulmerich
952
though
even
requires
particular
the claim
no
1320, 1324, USPQ2d 1161,
21
1164
mixing
particular
method of
process
steps.
(Fed.Cir.1991)
(“
50(b)
‘Fed.R.Civ.P.
allows
en
It is
“recipe”
specific
not a
directions for
try
‘only
JNOV
accordance with the
making
product.
Certainly the examiner
party’s
”),
for a
motion
directed verdict.’
cert.
nothing technically
found
wrong with the
denied,
504
U.S.
S.Ct.
claim as
list of additives for
In
motor oil.
(1992).10
L.Ed.2d 566
The issue on
experienced
drafter,
of an
view
Mr.
global question
not the
Johmann,
“What do Exxon’s
this is a standard form for such a
but
mean?”
rather
product.
“Did the
that,
I am
district
of the view
to one of
denying
court err in
ordinary
art,
skill in
Lubrizol’s JMOL?”
It
claims as written
product,
is not
cover
not a
unusual to see a
Consequent-
party
method.9
case where a
ly, I disagree with
failed to
majority
raise a
might
would
defense on which it
affirm the
judgment
district
prevailed. However,
court’s
have
liabili-
our review of a
ty.
ruling
court’s
on a motion for
JMOL
majority,
9.
questions
The
jority
its footnote
support
finds
in Malta because the broader
interpreted
the claims as so
would be
meaning gives
it
the claim
by
than that advanced
literally infringed
"starting ingredi-
if one of the
spread
Lubrizol is smaller than the
between the
us,
ents” is made in situ. That issue is not before
general
specific
motions in Malta.
I read
appears
it
but
to me that there would be literal
say
general
Malta to
that the
motion
infringement in such a
because the
circumstance
event,
in that
any
case were the same.
In
product formed "in situ” itself can be considered
majority's premise
prejudiced
that Exxon is not
"starting ingredient”.
by denial
a new
trial is flawed
because
majority
advanced a broader claim
majority
dispute
proposition
The
does not
by
than that
Infringement
advanced
Lubrizol.
quoted
of law
from Orthokinetics but relies on an
a narrower claim
would
ground
establish
alternative
objection
of decision
invention,
of a broader
grounds
made
claim to the
same
post-
stated in
but the
Malta,
verdict
prove
motion.
In
converse is
infringe-
held
not
Failure to
court
that a
true.
general post-trial
incorporated
JMOL motion
ment of the
narrower claim does not establish
specifics of the earlier JMOL
non-infringement
The ma-
motion.
of the broader claim.
asserted,
therefore,
au-
grounds
escape
is not entitled to
the flaw of
limited to the
judg
thority
appellate
drafting by
of an
court to enter
its claim
a second trial. This
severely
view,
circum
majority’s
Exxon’s,
ment rather than remand
reflects the
If no motion for JMOL on the issue
scribed.
a list of additives for motor oil is an invention
“appellate
pow
court [is]
is made an
without
process
by
for a
or for a
judg
the District Court to enter
er to direct
process. Exxon never asserted that its claim
contrary
permitted
ment
to the one
had
anything
was for
but a
Without
Virginia Pulp
v.
& Pa
stand.” Cone West
pointing
set
rule
the statute or a
Co.,
212, 218,
752, 756,
per
67 S.Ct.
U.S.
regulation
byor
Patent Ex-
MANUALof
(1947);
Corp.
amining
cannot have waived the issue of
infringement majority’s under the broader construction, majority as the rules. of an proposed deletion instruction on
infringement by equivalents in the final ver- instructions,
sion of the but this revision
occurred adopted after the district court interpretation
Exxon’s claim in its instruc-
tions. Exxon did not waive this issue majority’s
connection Lubrizol’s or the
different of the claim. The say,
most the aas matter of
law, possibility proof there is no However, infringement.
literal question infringement equiva- under the doctrine of jury question
lents is a under the recent
decision of this court in banc. Hilton Davis Co.,
Chem. Co. v. Warner-Jenkinson curiam) (Fed.Cir.1995). (per 1520-21 majority simply cuts Exxon off from its
right to have the issue of majority’s tried to
jury- reasons, foregoing
For the I dissent to the procedure and to the adopted by
merits
majority.
ALLIED COLLOIDS INC. and Allied Limited,
Colloids Plaintiffs-
Appellants, COMPANY,
AMERICAN CYANAMID
Defendant-Appellee.
No. 93-1407.
United States Appeals, Court of
Federal Circuit.
Sept. 1995. Denied;
Rehearing Suggestion for
Rehearing In Banc Declined
Oct.