In Re Basell Poliolefine Italia S.P.A.

dаmages provided by Because the 1592(c)(4)(B) primarily punitive

remain until uncertain the final decision of Trade,

the Court of International we con-

clude that prejudgment interest on such an

award improper. Accordingly, we re-

verse the Court International Trade’s prejudgment

award of interest.

III. CONCLUSION reasons, foregoing

For the we affirm the

Court of International penalty Trade’s

award prejudg- and reverse the award of

ment interest.

COSTS party

Each shall bear its own costs.

AFFIRMED-IN-PABT AND RE-

VERSED-IN-PART.

In re BASELL POLIOLEFINE

ITALIA S.P.A.

No. 2007-1450. Appeals,

United States Court of

Federal Circuit.

Nov. Appellee’s Br. 23. We do find applied by these cases SEC and the district court [was] however, persuasive, unreasonable”); because while the values SEC v. Commonwealth ill-gotten gains may have been Sec., difficult Inc., (2d Chem. 574 F.2d Cir. calculate, they were nevertheless deter- 1978) (rejecting argument defendant's See, according objective mined standards. charts, data, the SEC's and mathematical er- e.g., Bancorp, SBC v. First Pac. damages rors resulted in an incorrect calcula- (9th Cir.1998) (affirming disgorge- 1192 n. 6 tion). contrast, 1592(c)(4)(B) analy- approximation prof- ment of "a reasonable Complex requires sis under Machine Wоrks violation”) causally (quo- its connected to the penalty by the trial court to determine Patel, omitted); tation marks SEC v. F.3d subjectively weighing primari- factors that are (2d Cir.1995) (rejecting defendant’s ly unquantifiable. argument suggested "the formula LLP, MacRae, Loeb K. Loeb &

Warren NY, York, argued appellant. of New Solicitor, Krause, ti Associate are named inventors and Basell is the Thomas W. Solicitor, States Pat- assignee. Office United priority The '687 Office, Arlington, and Trademark ent 25,109, Application from Italian No. filed VA, argued for the Director of the United (“the 27, July application”).1 Italian States Patent and Trademark Office. process The invention relates to “a him on the brief was Heather F. With copolymerizing hydrocarbons unsaturated Auyang, Associate Solicitor. Of counsel of the formula in which R ais CH2=CHR Johnson, Jr., Sydney Acting were O. Solic- aliphatic saturated radical with two or itor, Hansen, A. Shannon M. and Janet more atoms or a cycloaliphatic carbon rad- Gongola, Associate Solicitors. ical, in the presence catalyst compris- of a catalytic a alkyl aluminum compound NEWMAN, LOURIE, Before and catalytic and a titanium compound.” halide LINN, Judges. Circuit 9, '687 Abstract. Claims 1 and LOURIE, Opinion by for the court filed claims, representative which are both read Judge. Dissenting opinion Circuit filed as follows:

NEWMAN, Judge. Circuit 1. A process comprises polymer-

LOURIE, Judge. Circuit izing ethylene alpha-olefin, with an CH2 =CHR, wherein R is a alip- saturated (“Basell”) Italia, Poliolefine Basell S.P.A. hatic radical with or more at- carbon appeals from two decisions of the United radical, cycloaliphatic oms or a in the States Patent and Trademark Office presence of a obtained react- (“PTO”) Appeals Board of Patent and In- aluminum, ing an (“Board”) alkyl compound with resulting terferences from a Di- catalytic compound. titanium halide rector-ordered reexamination of Pat- U.S. (“the 6,365,687 patent”). ent '687 A process preparing 9. a copolymer rejections Board affirmed ‍‌‌​​‌​​‌​​‌​​​​‌‌​‌​​‌‌​​​​‌‌‌‌​‌‌‌​‌‌​​‌‌​‌​​​‌‍the of all the comprising copolymerizing monomeric unpatentable claims of the '687 as molecules a mоnomer- comprising olefin 102(b) §§ under 35 U.S.C. and vinyl hydrocarbon ic the formula having doctrine of CH2=CHR, wherein R is a saturated patenting. Because the Board did not err aliphatic having radical at least carbon in concluding pending claims were radical, cycloaliphatic atoms or is barred under the doctrine of obviousness- presence catalyst comprising of a type patenting, we affirm. catalytic alkyl compound aluminum a catalytic titanium halide com- BACKGROUND pound. The '687 entitled “Process for (emphases claims 1 & 9 add- Polymerization Copolymerization ed). Thus, pending generally claims Hydrocarbons,” of Certain Unsaturated 2, April polymerizing any alpha-olefin was issued on Natta involve Giulio C4 (“Natta”), (in Pino, claims, Giorgio any Piero Mazzan- higher with olefin some 10, abandoned, 1986, applica- Sep. 1. The '687 issued from U.S. filed now which is 07/883,912 ("the 06/498,699, applica- tion Ser. No. '912 12, May a continuation of filed tion”), May abandoned, which was filed on 1992 and 1983, now which is a continua- continuation, is "a of U.S. Ser. 24, 1958, 04/710,840, tion of filed Jan. now 07/719,666, 24, 1991, No. filed Jun. now abandoned, 04/514,- which is a divisional of abandoned, which is a continuation of 8, 1955, filed Jun. now abandoned.” 07/607,215, 29, 1990, filed Oct. now aban- col.l 11.5-14. doned, 06/906,600, which is continuation of Vandenberg held that using a titanium hal- ethylene) specifically alkyl catalyst. ide aluminum available as art under 35 U.S.C. 102(b) §§ and 103. The Board found initiated a PTO On June 15, 21-26, 28, 31, 32, 35, 1-4, 8-13, The re- reexamination. Director-ordered 39-44, anticipated by all claims based on and 48-52 were Van- was for examination expired of two in view 1-52 would have been denberg and claims Natta, viz., Patents 103(a).2 U.S. patents issued Vandenberg under obvious over (“the 3,403,139 3,256,235 patent”) and 29, 2007, appeal, In a second on March (“the During the course of patent”). 102(b) §§ the Board affirmed the reexamination, double the Examiner added 103(a) rejections Vandenberg on based rejections on two other based patenting obviousness-type finalized all of the double Natta, viz., issued to U.S. expired patents that, rejections. patenting The Board held (“the 3,317,496 '496 patent”) Patents though previously even the PTO cited Van- (“the 3,582,987 patеnt”). '987 a substan- denberg, that reference raised 30, 2005, the Board affirmed On March question patentability tial of under the new rejections. The patenting the double the previous 35 U.S.C. based on paten- determined whether Board first particular particular, facts of this case. one-way two-way or entitled to tees were the Board found that “the examiner never Board patenting. test double fully considered the substantive issues of dic- that the circumstances did not found of claims over patentability [Vanden- two-way application of a test tate berg] the incorrect assess- as result of The Board concluded patenting. double In re filing ment of the effective date.” “significantly controlled patentees No.2007-0111, Poliolefine, slip op. Basell throughout prosecution the rate (B.P.A.I. 2007). such, at 47 Mar. As and thus applications,” chain ancestor original in the Vandenberg the citation of one-way applied. test In re Basell rejections examination did not bar based No.2004-1390, Poliolefine, slip op. at 15 2005) (“2005 (B.P.A.I. Vandenberg during on reexamination. Board De- Mar. ”). appealed that the reviewing After the examiner’s The Board further held cision rejections, up- the Board patenting entitled to the benefit of claims were not rejections ground. on each held the filing an earlier date under 35 U.S.C. §§ finding 119 and 120 and reaffirmed its rejection grounds to the new Turning anticipated that the claims were either or §§ 102 and the Board deter- based Vandenberg. rendered obvious view of (“Van- 3,058,963 Patent mined that U.S. denberg”) ques- raised a substantial new deci- timely appealed Basell Board’s patentability meaning tion of within the jurisdiction pursuant to 28 sion. We have the reexamination statute in effect on June 1295(a)(4)(A). U.S.C. paten- 2002. The Board found tees failed to establish that the '687 DISCUSSION filing was entitled to the earlier date of the Because we conclude that Italian sufficient to antedate decision can be affirmed based on Board’s Id. at 126. Vandenberg reference. re obviousness-type patenting its patentees Because the werе not entitled focus jection in view of the '987 we priority under 35 U.S.C. benefit appear patent, and tion. 2. Claims 1-34 in the '687 during 35-52 were added reexamina- analysis inquiry patent- patenting always require on that issue. Double does not

our question is a of law that we review de a full analysis Graham obviousness to be Emert, novo. In re F.3d 1460 performed as of the priority date of the (Fed.Cir.1997). The determination of pending Lastly, claims. the Director con- one-way two-way analysis whether properly tends that applied a applies question is also a of law we one-way obviousness-type double patenting Id. review without deference. We review analysis because effectively Basell con- findings factual for lack of the Board’s prosecution. trolled the rate of substantial evidence. Id. agree We with the Director that argues that the Board appeal, On Basell the claims of the unpatent rejecting the claims for erred in obvious- able based on pat patenting in view of the ness-type double enting in view of the '987 patent. “The First, argues that the Basell doctrine of double is intended to during original was considered prevent patentee obtaining a time- and thus prosecution patent wise extension of for the same [a] during cannot reexamination be considered invention or an obvious modification there previous the version of under 35 U.S.C. Lonardo, 960, of.” In re 119 F.3d 965 holdings and our in In re Portola (Fed.Cir.1997). judicially The created doc Inc., (Fed.Cir. Packaging, 110 F.3d 786 trine of obviousness-type patenting double 1997) Technologies and In re Recreative ‍‌‌​​‌​​‌​​‌​​​​‌‌​‌​​‌‌​​​​‌‌‌‌​‌‌‌​‌‌​​‌‌​‌​​​‌‍“prohibit[s] party a from obtaining an ex (Fed.Cir.1996). Corp., 83 F.3d 1394 Sec- right through tension of the to exclude ond, that the in Basell asserts Board erred in a patent pat claims later that are not Next, dismissing declaration evidence. entably in commonly distinct from claims a argues that Board Basell the erred be- patent.” owned earlier Eli Lilly & Co. v. an analysis cause failed to conduct under Labs., Inc., (Fed. Barr 251 F.3d Co., v. John Deere Graham U.S. Cir.2001). In determining patent double (1966), 15 L.Ed.2d 545 as of the S.Ct. ing, one-way normally a in applied, test filing earliest date claimed the '687 ap which “the examiner asks whether the Lastly, ent. Basell contends that the plication pat claims are obvious over the by failing apply two-way Board erred to Berg, ent claims.” In re obviousness-type patenting analy- (Fed.Cir.1998). unusual circum Basell, delay in According any sis. to the stances, un applicant where has been prosecution patent was attributable application, able to issue its first-filed to the PTO. two-way may apply, test in which “the In response, argues the Director that examiner also asks whether the properly the Board considered the '987 claims application are obvious over the Director, to the According the claims.” Id. during was never considered matter, As a preliminary we the original prosecution of the '687 unpersuaded Basell’s assertion that the only application but in another in- by failing two-way Board erred to apply volved claims that were unrelated to the patenting. two-way test for double rejected claims. The Director also asserts exception general “a test is narrow to the properly considered the one-way rule of the test.” Id. The test declaration found it evidence but insuffi- rejec prevent arose out of the concern “to support cient to claims. The Di- Basell’s that, аrgues contrary obviousness-type patent rector further to Ba- tions for assertion, an applicants sell’s when the filed first for previously during origi- considered improve- and later for an was basic invention but, ment, through appli- no fault of the prosecution. nal The record demonstrates cants, applications decided the the PTO during that the '987 was cited rejecting the filing, order of basic reverse prosecution patent applica- of a different have although would application tion, viz., 06/498,699, application no. applications if the had been decid- allowed ultimately Notably, abandoned. Thus, filing.” their Id. ed in the order of differ applicatiоn claims of that “in two-way appropriate test claims of the in that the recited that the PTO is the unusual circumstance catalyst contained a titanium chloride limi- delay causing for the solely responsible tation, patent encompass- whereas the '687 application to issue second-filed [a] catalysts generally encompass es first.” Id. at 1437. [a] attempting titanium generic halides. circumstances, however, Those are not rejection overcome the double present here. The record shows during applica- of the '699 prosecution any claim resem- patentees present did not tion, Natta al. that it argued et would not at issue nine bling the claims until have been obvious to use the titanium chlo- appli- filed the first years after Natta U.S. ride recited in the claims of the priority cation in the chain of and well Thus, application. rejection based application filed the that re- after Natta during prosecution Moreover, those sulted of the '699 involved different filed for appear to have been inter- such, claims than the claims at issue. As addition, only. purposes ference the agree we with the Director that the Board patentees found that since the Board precluded not under Portola or Recre- directed to repeatedly submitted claims Technologies relying аtive on the inventions, covering urged other claims patent patenting rejec- '987 in its double for examiner to declare interferences unre- tion.3 inventions, repeatedly filed con- lated inquiry The critical before us is Dur- tinuing applications appeal. without patent whether the claims of the '687 de ing co-pendent period the critical of the an of claims applications patent for the '687 and the fine obvious variation '987 Natta could have filed the it concluding actions, present claims. Natta’s or inac- does, the relied on claim 1 of Board tions, prosecu- a had direct effect which recites: responsible any tion and thus were for A process polymerizing for monom- find no delay prosecution. We error group eric materials selected from the findings with to the Board’s regard (a) consisting hydrocar- unsaturated two-way agree with the Board test bons of the formula CH2=CHR apply. for double does not R group which is selected from the consisting aliphatic of saturated radi- unpersuaded by areWe likewise 1 containing cals to carbon atoms and that the '987 can Basell’s assertion k by phenyl poly- radical to solid linear upon not be relied because (Fed.Cir.2008). 3. We note that Portola was overruled F.3d 1379-80 The dou- 303(a) by legislation "any for determi- patenting rejection during U.S.C. ble the reexamina- nation of the Director of United States thereby on June tion was made and Trademark that is made Patent Office making subject new statute [Novem- under section ... on or after Portola. See, e.g. ber In re Swanson 540 2002].” process comprises polymer- a mixture of sub- 1. A comprising merizates linear, head-to-tail stantially regular izing ethylene alpha-olefin, with an CH2 homopolymers, =CHR, atactic sub- amorphous, R a alip- wherein saturated linear, regular head-to-tail stantially hatic radical with or more carbon at- crystalline homopolymers, and partially radical, cycloaliphatic oms or a in the consisting of isotactic homopolymers presence сatalyst of a obtained react- as defined and which macromolecules alkyl an aluminum compound with succession regular show catalytic titanium compound. of—CH2— halide long linear CHR—groups and — process 9. A preparing copolymer assume, at for long chains which least comprising copolymerizing monomeric sections, regular macromolecule comprising molecules a monomer- olefin structure vinyl hydrocarbon having ic the formula CH2=CHR, wherein R ais saturated H23SIHHH "i. nnn (cid:127) * aliphatic having radical at least 2 carbon ./.i." Cl. radical, atoms a cycloaliphatic or is I 1 I 1 1 ! I of a presence comprising a catalytic aluminum alkyl comрound significance R has the as wherein same catalytic and a titanium halide com- asymmetric and the carbon atoms above pound. of the main chains have identical steric (emphases claims & 9 add- configurations on the same chain at least ed).4 sections, long and which macromo- agree with the We Board’s conclusion (b) erystallizable; lecules are mixtures are not hydrocarbons of said unsaturated to ‍‌‌​​‌​​‌​​‌​​​​‌‌​‌​​‌‌​​​​‌‌‌‌​‌‌‌​‌‌​​‌‌​‌​​​‌‍sol- patentably distinct from claim 1 (c) mix- copolymerizates; id linear Claim of the '687 covers hydrocarbons tures of said unsaturated 1) polymerizing alpha-olefin orC4 containing to to 10% another [sic] 2) 3) higher, ethylene, using with a titani- copolymerizable monomer olefinic alkyl catalyst. um halide aluminum theAs copolymeri- therewith to a solid linear noted, correctly Director and the Board zate, process comprises contacting which the claim encompassing those limitations is the monomeric material with a 1 an variant of claim of the '987 a obvious prepared bringing halide a tran- patent. Specifically, regard with to the belonging Groups sition metal to IV to 1 alpha higher, inclusive of the Mendeleeff Periodic olefin of claim of the VI C4 a valency Table which the metal has mo- patent provides '987 that one higher than into intimate with 3 contact may nomeric materials include “unsaturat- alkyl compound of an element be- hydrocarbons of the ed formula CH2 longing Groups to II to III inclusive of R from the =CHR which is selected said mixed table with monomeric group consisting aliphatic rad- saturated polymerized. material to be containing icals 1 to 4 atoms.” carbon Thus, added). patent both claims of the '987 patent (emphases '987 claim As earlier, patent alpha the '687 cover olefins of to independent indicated claims 1 and C4 addition, ethylene, regard with to patent, typical 9 of the '687 which are C6. patent claim 1 of the '987 recites “another patent, recite: 1-8, 16-21, representative 4. claims 1 and 9 of the '687 Basell states that claims 29-52 together, stand or fall as do claims 9-15 and analysis 22-28. We therefore focus our monomer,” Thus, ge- propylene squarely and thus covers a is within the olefinic ethylene. Similarly, with scope patent’s nus that includes to scope. C3 C6 halide aluminum regard to the titanium polymerization 9 is directed to Claim C4 patent alkyl catalyst, claim of olefins, higher just as is the '987 genus parties that do not covers ent. halide, titanium as well as dispute includes Moreover, specification of the '987 alkyl. aluminum genus includes ethylene, propylene, itself refers to 1 of the is thus not Claim butene, and other olefins indicates from claim 1 of the '987 patentably distinct olefins intended to fall those were Thus, meaning within the of the claims. Similarly, claim 9 of the '687 good PTO had basis for its conclusion that starting not limit one of the which does the claims of the '987 rendered ethylene materials to but in- monomeric the claims of the '687 obvious of olefin mole- stead covers broader class claims are invalid for latter obvi- cules, patentably distinct from claim is ousness-type patenting. that claim 1 of the '987 because Relying Kaplan, on In re 789 F.2d 1574 of olefinic likewise covers broad class (Fed.Cir.1986), Basell asserts that the re monomers. jection must be reversed because the essence, the claims of the '987 and improperly Board read limitations from permuta- consist of patents various specificаtion into the claims in polymerization tions of of olefins with vari- concluding that the patent- claims are not using of carbon atoms cata- ous numbers ably disagree. distinct. We While we aluminum lysts of titanium halides and Kaplan impermissible stated in that it to alkyls. expressions generic to Some “patent though treat a disclosure as it generic others. is true that a While were art” in a double in expression does not render obvious all of quiry, holding we further reaffirmed the encompasses, species these Vogel, In re 422 F.2d C.C.P.A. generic specific claims are both (CCPA 1970), may that certain instances interchangeable ways, each other in involv- patent’s may exist where a disclosurе groups species. the same Indeed, Kaplan, at used. polymer- The '987 claims are directed to predecessor pat our court stated that a ization of with mix- olefins other C3 C6 ent’s disclosure be used to determine hydrocarbons. tures of unsaturated As merely whether an claim is an homologs presumptively obvious over obvious variation of an invention claimed compounds, known these claims render ob- patent. Vogel, at 441-42. The F.2d patent vious the claims of the '687 directed may court stated that the disclosure polymers homologous, to of the well-known meaning used to learn the of terms and in 1) (claim ethylene and olefins C4 “interpreting coverage оf claim.” [a] (claim 9). It copolymerization olefins C4 Id. at 441. It also be used to answer that, worthy of note while claim 1 of the merely question whether claims define ethylene, specifica- recites its an obvious variation of what is earlier dis entirely propy- tion is almost directed to closed and claimed. The court stated that lene, encompassed by which is '987 claim at the disclosure “sets forth least one 1; ethylene the discussion of is limited and claim, tangible embodiment within the briefly it in a is mentioned statement meaningful it is difficult and more to ethylene a small amount of does not inter- less polymerization propylene. judge [something] fere with the whether has modi- remaining in an mаnner.” Id. at 442. We have considered Basell’s fied obvious arguments stated that “use of the and find none that justify The court further in contravention of the Having disclosure is not reversal. concluded that art, nor forbidding properly rejection cases its use as is Board affirmed the applying as a reference under claims 1-52 of the '687 based on only since the disclosure patenting 35 U.S.C. in view patent may claimed in the of the invention of the '987 we need not address the such, conclude remaining by be examined.” Id. As we issues regard- raised Basell 102(b) in referring §§ that the Board did not err rejections, as specification of the '987 when it well as the additional double patenting re- pat- whether the claims were jections. Accordingly, determined the Board’s deci- entably from the distinct '687 sion is affirmed. AFFIRMED disagree argu- further with We Basell’s that the ment Board failed consider the NEWMAN, Judge, Circuit dissenting. experts, declaration evidence of its Drs. on appeal is directed to the Indeed, in Floyd and Porri. its 2005 deci- production .crystalline copolymers of al- sion, expressly considered those pha-olefins having four or more carbon unper- declarations and found them to be atoms, using obtained react- suasive. 2005 Board Decision at 100-03. ing an aluminum alkyl with a titanium regard find no error with to the

We (the halide; the inventor is Natta et al. consideration of declara- Board’s those рatent”). applica- “Natta '687 The initial tions. tion was filed in flowing discov- unpersuaded by We are also Basell’s eries that polymerization started with the rejec- assertion ethylene produced have new tion should be reversed because the Board materials that continue to revolutionize the expressly failed to conduct a full Graham packaging and several other industries. analysis determining that the '687 The scientific achievements reflected ent claims were an obvious variant of claim these discoveries won a Nobel Prize in Indeed, 1 of court “this Dr. 1963 for Dr. Giulio Natta and Karl has endorsed obviousness determina- Ziegler. to, necessarily tion similar but not аs, dissent, that undertaken I same under 35 U.S.C. write first because the reex- in determining propriety of a amination here conducted was in violation rejection for patenting.” re of the reexamination law as then existed. (Fed.Cir.1991). Braat, condoned, 592-93 Such violation should not be Hence, reversing we find no the PTO is as bound the law as are basis If im- merely practice Board’s decision because the Board those who before it. this tolerated, expressly proper failed to set forth each of the reexamination were to be analysis. my panel, in it at colleagues Graham factors its The Board as do this carefully scrutiny. claim 1 Yet the considered of the '987 leаst warrants strict majority unsupported of the defers to find- panel and the claims person ordinary ings, permits ignore and determined that a all of the PTO evidence, expert joins skill in the art would have found the in the PTO’s patent claims to have been obvious. unfair allocation to the inventors of blame We analysis. delays in find no error the Board’s for the extreme here illustrated. appeal The brief on does not at- PTO’s No- Statute before The Reexamination justify tempt to the reexamination on dou- 2, vember patenting grounds, argues ble but instead 35 U.S.C. before Reexamination only ground an alternative related to enti- 2, 2002, November effective was amended filing tlement to the initial date and the grounds certain only on was available intervening of an reference. This effect the initial examination. during considered ini- ground during was also considered patentees from purpose protect The was to tial Natta examination of the reexamination, the harassment of too-facile with the examiner’s Reasons for Allowance outweigh the benefits.1 lest the abuses stating: rejections “The art are with- Reexamination of the Natta '687 of the right drawn because the to benefit by any per- interested requested was not filing priority date of the Italian [’109] son, by but was ordered the Director of established, been and thus has fail- for the stated rеason: “The the PTO Vandenberg patents and Anderson to consider the entire ure Office sum, has antedated.” no valid basis family potential patent- for provided for this reexamination. extraordinary created an ing issues has My only colleagues now review the dou- or- situation for which Commissioner patenting rejection, ignore underly- ble appropriate ‍‌‌​​‌​​‌​​‌​​​​‌‌​‌​​‌‌​​​​‌‌‌‌​‌‌‌​‌‌​​‌‌​‌​​​‌‍is an dered reexamination ing impropriety, patentee and chastise the remedy.” Director Initiated Order for Re- delays responsible. for for which was not 2002). (Jun. examination, However, at 2 had delay the issue of double been The issue of examination; during the initial considered long criticizes the period PTO fоund, examiner had as stated and the initial filing to issuance of the Natta '687 Allowance, that: for “The Reasons extraordinarily long. It is indeed rejection statutory double-patenting has However, the reexamination examiner ac- amendments set been obviated knowledged delays that there were “PTO response ... The obvi- forth the latest multiple due to interferences which oc- patenting rejection is ousness-type double 1985,” up curred from the 1950’s to 1984 or 804(I)(B).” MPEP per withdrawn as stating applicant while also Allowance, Application/Control Reason for delays “caused a number of substantial 2001). 07/883,912, (Sept. at 3 No. Answer, from 1985 to 2000.” Examiner’s 90/006,297, apparently recognized Application The PTO Number: at 30 (Jan. 2004). initiation problem period there was a with its The latter included court, reexamination, appeal during this stated this which the if court were to find that the PTO moved remand in order to con- this improperly initi- reexamination had been duct additional examination. The record ated, simply the PTO would no applicant on remand shows violation procedures, any signifi- reexamination under the PTO’s rules and institute another Basell, parte Appeal departure practices, statute. Ex cant from standard amended No.2004-1390, participating time-consuming Reexamination Control No. Natta’s 2004). 90/006,297, (Aug. procedures. at 122 n. 37 Swanson, question prevent In re new standard to substantial (Fed.Cir.2008), this court commented on cases of abusive tactics and harassment of 303, stating amended section that "we are patentees through (citing reexamination.’" Congress that the mindful that intended 107-120, (2002)). H.R.Rep. No. at 3 interpret ‘judiciously courts to continue

1381 in system, interferences olefins would behave this or delays The due to three, notorious, there were catalysts are and here would be effective. Pro- multiple involving multiple parties fessor Lido Porri testified that “Claim 1 of delays generally Interference countries. ... the '987 is too broad and incom- of the only complexity flow from not plete to have motivated one of skill in the subject requisite prоofs, matter and but in attempt prepare art 1954 to to such a process procedures the due that PTO also catalyst and to have had reasonable ex- complex partes pro- in these inter assure copolymer that a pectation as recited could ceedings, including rights appeal of Declaration of prepared.” Professor judicial proceedings. and the authorized ¶ (Oct. 2002). Expert Lido Porri It well be that the PTO has been polymer Joseph Floyd scientist Dr. de- C. unfairly lengthy pendency criticized for the mid-1954, clared: “In the reference to the however, it is patent; illustrated this component catalyst system new two of patеntee, unfair to chastise this equally patent] claim the '987 would have [of delay by the agreed when most of the too to have been broad motivated one of procedures. to to its PTO be due ordinary attempt prepare skill to to such a prolonged catalyst system for the and have had a

Whatever reasons reasonable pendency, delay ground is not a of double that a expectation copolymer as recited patenting. prepared.” could have been of Declaration ¶ (Nov. 2002). Joseph Floyd C. The double issue that expert explained witnesses be- consistently The PTO had found that the fore the invention claimed patent- claims of the Natta '687 ent, attempts copolymerize ethylene ably from the claims of the distinct higher with a olefin had been unsuccessful. In both the examination and the Porri Dr. Floyd Both Professor so reexamination, the examiners found stated. Second Declaration of Professor copolymers catalysts classes ¶ 24, 2005); (May Lido Porri Third patentably the '687 claims were distinct ¶ Floyd Dr. Joseph Declaration of C. from those claimed in the '987 2005). Indeed, (May the PTO does not agreed subject The PTO matter subject matter of dispute the claimed not an claimed the Natta '687 is patents patentably the '687 and the '978 variant of the '987 claims. obvious presence overlapрing distinct. The sub- history prosecution of the Natta matter, ject specific and the choice of cata- explained Dr. Natta had lyst, present technological questions involving higher issues olefins of the experts, without were answered '687 invention: contradiction. The record contains no con- any presence substantial [T]he trary authority, no citations or references higher po- amount of the olefins inhibits arguments, pre- other than the flawed lymerization ethylene while the by my created sumption “homology” olefins, all, higher they if react at do so colleagues. and, very only at the low reaction rates case, any yielding polymers without experts All of the testified as to the type with which this invention is ethy- inability copolymerize at that time to concerned. butylene, and that it was not lene possible predict any adaptation whether history Applica- of Natta Prosecution U.S. systems would of these new 03/710,840, Expert polymer at 5. tion No. The reex- long-sought achieve this result. testified that it would not have scientists pres- that “The higher amination examiner wrote predicted whether or how the ( 1,11. col. 62-65 was not developed ground-break- See '687 coinventors ent in invention, agents one skilled the art apparent so those [reaction] by their ac- astounded polymerization would have been would useful in the be time the invention at the complishments hydrocarbons containing the unsaturated Answer, Applica- Examiner’s made.” at col. vinyl group.”); id. 54-58 90/006,297,at 38. tion Number: (“In foregoing, view of the could ethylene, predicted, from the work with patenting is in terms of double The law polymerization agents that our would be claimed is the later invention of whether production higher for the molecu- useful the earlier claimed variant of an obvious vinyl hydrocar- lar weight polymers Corp. v. Stu In Foods invention. General mbH, as defined 972 F.2d bons of formula Kohle diengesellschaft CH2=CHR herein.”) (Fed.Cir.1992), addition, criti- the court stressed the the claims must be in distinction obvi- patentable entirety, including cal role of in considered their ousness-type patenting: in specific catalysts, spe- whose use these deciding in determining systems agreed factor cific is not to be shown

[T]he patenting is double whether or not there the earlier patentable non of is the existence vel sum, recognition view of the sets of claims. difference between two process patentably the '687 claims is actually opinion used in the phrases claims, distinct from the '987 distinguishable,” “patentably include enting Application can not lie. See distinctions,” and “whether “patentable Sarett, 327 F.2d C.C.P.A. would have been obvi- such differences (C.C.P.A.1964) (reversing rejections ordinary in the art.” to one of skill ous be- They equivalent. are all generic spеcific cause Although at 1278-79. the Board ruled Id. distinct); patently ‍‌‌​​‌​​‌​​‌​​​​‌‌​‌​​‌‌​​​​‌‌‌‌​‌‌‌​‌‌​​‌‌​‌​​​‌‍gen- nonetheless be see irrelevant whether it was (Fed. Jones, erally In re guidance polymeriza- patent provided Cir.1992) that a (explaining disclosure of a than alpha-olefins higher propylene, tion of automatically genus chemical does not ren- guidance such lack of or absence of enable- any species genus). der obvious within the ment is indeed relevant whether irregularity In view of the of the reex- been later invention would have obvious rulings amination and the flawed on this earlier, whether light of the the assert- must, I appeal, respectfully, dissent. patent- ed obvious variant could have patents. ed in both As reinforced,

states, the witnesses and as hydrocarbons behave differ-

longer chain catalysis unpredictable.

ently, and their

Case Details

Case Name: In Re Basell Poliolefine Italia S.P.A.

Court Name: Court of Appeals for the Federal Circuit

Date Published: Nov 13, 2008

Citation: 547 F.3d 1371

Docket Number: 2007-1450

Court Abbreviation: Fed. Cir.