*1 therefore and inseparable are elements AN- THE and CORPORATION KAO re- not have should examiner that COMPANY, DREW JERGENS contends She a disclaimer. quired Appellants, Plaintiffs-Cross evi- solely on relying by erred Board registered separately Slokevage dence v. to determine dress the trade of words STATES, UNITED UNILEVER She unitary. not is dress trade INC., CONOPCO, and INC. elements asserts further Defendants-Appellants. being capable of not are mark dress trade closely connected are separated 05-1038, 05-1049. Nos. other. to each proximity physical Appeals, Court of States United uni- is not mark responds PTO Federal Circuit. by as shown separable, and is tary, mark the word of registration separate 21, 2006. March element. design and the substantial PTO that agree with We finding that Board’s supports
evidence of display unitary. is the mark dress, trade drawing of the in the elements registration earlier applicant’s appli- DARE!,” and the “FLASH words area cut-out on the design cant’s dress trade Slokevage’s are evidence dress, by Moreover, trade unitary. is not elements nature, distinct contains vari- combination as the is characterized impres- overall an create ous elements the elements cases in some While sion. inseparable, to be combined so may be here, as shown cáse not the that is design the words separate locations registration separate elements elements. CONCLUSION supports evidence Because substantial Slokev- determinations the Board’s design and is is trade dress age’s the Board decision unitary, the affirmed.
AFFIRMED *2 “Unilever”) Plaintiffs-Cross
lectively, The An- Corporation Appellants (collectively, Company Jergens drew Dis- U.S. “Kao”) judgment appeal Delaware District Court trict *3 6,306,382 No. U.S. Patent ruling that “ Patent”) and enforce- valid was (the ’382 ac- by Unilever’s infringed but able v. Unilever Corp. product. cused (D.Del.2004). U.S., Inc., jurisdiction exercised The district This court § 1338. to 28 U.S.C. pursuant to 28 U.S.C. pursuant jurisdiction has forth be- 1295(a)(1). set the reasons For § judgment low, we affirm court.
BACKGROUND over the dispute involves
This case prod- skin-care to a cosmetic rights patent plugs”— “keratotie remove used uct Obion, Spivak, Neustadt, I. Arthur fa- as blackheads —from commonly known P.C., Neustadt, McClelland, & Maier a keratotie the owner Kao is skin. cial plaintiffs- for argued Alexandria, Virginia, holder and removing product plug brief him on With appellants. cross al- produces in suit. patent L. Richard and Baxter G. Stephen were Clear Pond’s product, infringing legedly Chinn. Strips. Pore Burling, & Covington Pappas, F. George defendants- DC, for argued Washington, In Suit Patent The A. brief on him With appellants. into matured application C. Scott were Of counsel B. Collins. Kevin 12, November filed ’382 McKelvie. R. Roderick and Weidenfeller Plug Rem- “Keratotie entitled and MAYER, NEWMAN, and on Octo- issued Before patent, over.” Judges. GAJARSA, Circuit claims. 23, 2001, seven contains ber de- 1 and claim only independent asserted by Circuit filed Court for the Opinion Claim Unilever. against claim 3 pendent concurring Opinion Judge GAJARSA. follows: recites as by Circuit filed part dissenting in and part plugs removing keratotie for A method concurring Opinion NEWMAN. Judge article, which a cosmetic skin from by Circuit filed dissenting part part comprises: MAYER. Judge arti- cosmetic or said skin wetting the Judge. GAJARSA, Circuit cos- said skin cle; onto applying said cos- article; peeling metic infringe- off an action This wherein drying; article metic after Defendants-Appellants ment. comprises: article (col- cosmetic said Inc. States, Inc., Conopeo, United i) a substrate selected from the Example 1.” Id. col. 11.21-23. Simi- group consisting cloth, larly, woven Example appears liquid describe non-woven cloth plastic film; and a formulations applied that were as de- scribed in Example Examples 4-8 do not expressly state that the keratotie plug ii) on substrate, said a layer com- remover was applied as liquid formula- prising a copolymer, in an amount tion, but offer formulations in terms of effective to remove keratotie plugs, percent weight, like the formulations de- wherein said copolymer is a poly(al- scribed in Examples 1-3. kyl vinyl acid) copo- ether/maleic lymer or a written description of polyalkylvinyl the ’382 Pat- ether/ma- ent does not anhydride) leic define the copolymer.1 term “cosmetic *4 article” as used in Instead, claim 1. the Patent, 12,11. ’382 col. 58-66; 13,11. col. 1- written description states that “[t]he kera- added). 9 (emphasis Claim 3 recites “The totic plug remover according to inven- 1, method of claim wherein said substrate may tion take a poultice form of a using is a non-woven cloth.” 13,11.12- Id. at col. cloth, cotton rayon cloth, cloth, tetron ny- 13. cloth, lon either non-woven, woven or or The underlined language in claim 1 is using a plastic sheet, film pack beside central to this controversy. It was added preparations.” 5,11. Id. at col. 19-22. The as an amendment to the claim. Kao ex- written description further states plained: “[t]he manner of removing keratotie plugs [t]he claim has further been amended to by the use of the keratotie plug remover of clarify the steps of the method. The the invention is the same as the manner of addition of the wetting step is fur- not using ordinary packs poultice. and Name- ther limiting since the wetting step was ly, when a pack preparation used, is it is implied in the previously submitted first applied to part the of the skin which claim. No new matter would be by added has keratotie plugs, particularly likely to entry of this amendment. nose, chin, forehead, and and after dried, it peeled off.” Id. at 5,11. col. 26- The written description provides eight 31. examples relating preparation to the and of a liquid use or district court concluded, semi-solid copolymer and the preparation. parties do not examples dispute, do not that “[i]n men- the con- text of cosmetics, tion drying liquid ‘pack’ or term semi-solid means ‘a copo- cosmetic lymer paste onto substrate, applied a but skin instead and discuss “ allowed dry’ ”; applying the ‘poultice’ term copolymer directly to the moist, means ‘a face. soft Example bread, mass of meal, specifically states: “A clay, cloth, or panel other substance, adhesive washed their [sic] face and used the usually heated, preparation spread cloth, on ap- their faces at application an plied warm, moisten, rate or of 0.1 stimulate an 6, Id. at ml/em2.” col. 11.6-8. ” aching or part inflamed Example 2 the body.’ states: “The polymers were Kao Corp., 334 F.Supp.2d at individually 534 n. 4. prepared into aqueous an 20- by weight 30% solution, and members of The district court also construed what it the panel used the same manner in termed the “copolymer limitation” of claim court, 1. Like the district we abbreviate anhydride) copolymer” as in this "PVM/MA” terms "poly(alkyl vinyl acid) ether/maleic co- opinion. polymer” and "poly(alkylvinyl ether/maleic dropped later ’382 Patent. co- said “wherein stating language 1—the 2003, In October damages. claim vinyl ether/maleic poly(aIkyl is a polymer three-day bench a held court district polyalkylvinyl a or acid) copolymer dismissed it trial, at the close copolymer” anhydride) —to ether/maleie Sep- On claim. infringement willful vinyl ether/maleic poly(alkyl “either mean a court issued the district tember poly(alkylvinyl or acid) copolymer valid Patent the ’382 ruling that copolymer, anhydride) acid ether/maleic by- the infringed enforceable, not but Id. at form thereof.” salt not but found, product. Pond’s is a copolymer “a salt Concluding adequately alia,- ’382 inter acid an from both entity chemical distinct wetting a step of described copolymer,” anhydride an it to applying before preparation dried plain broaden “to declined the court out had made skin; although a salt reading claim language obviousness, Kao cited It also at 546. Id. into it.” limitation evi- that case successfully. rebutted in fa- history prosecution elements results; pf unexpected dence limitation, including of such vor —but conduct in inequitable engage did filing the after fact that to—the limited *5 it with- patent when itsof prosecution the Patent, filed the ’382 for application examiner. the from data negative held specifical- claims “with application another copolymers the of salts ly directed dis- The Id. DISCUSSION patent.” the ’382 in
claimed as evidence this took court trict Require- Description Written A. The cover salt-forms. does not Patent the ’382 ment court concluded Prod- Infringing Accused B. Unilever’s re description written the complied with uct § 35 U.S.C. set forth quirement Strips are Pore Clear Pond’s de written the compliance-with Because unc- blackheads to remove advertised fact, of question ais requirement scription a coated of consist strips pores. log determination court’s trial review ingredients fabric, list the non-woven Am. Pow v. Corp. Lampi for clear error. aminomethyl as PVM/MA (Fed. 1365, 1378 Inc., Prods., er for the coating (“AMP”). The propanol “does review Cir.2000). error Clear mixing 98% by prepared strips is Pond’s the district to reverse court entitle with of a solution PVM/MA of by weight would it simply because finding court’s reacts AMP AMP. The weight by 2% differently.” Miles have decided form what PVM/MA 870, Inc., F.2d 997 Labs., v. Shandon Inc. a salt. describe the district Cir.1993). uphold must (Fed. We accused on the provided instructions “plausible if isit determination court’s trial applying strip, wetting the involve product it where or record the entire light of fifteen for dry it face, letting toit views permissible two one chooses removing it. minutes, and then Id. evidence.” Court in the District Proceedings C. Act 112 of Section contain shall “specification states and in- damages Kao sued invention.” description 2001, a written alleg- November relief in junctive “[t]o held have We § 112. infringed U.S.C. the Pond’s ing that fulfill the written description requirement, a contrary draw conclusion. Although Un- specification must describe an arguments ilever’s are not force, without invention in sufficient detail that one we conclude that the district judg- court’s skilled in the art can clearly conclude that ment that Kao complied with the written the inventor invented what is claimed.” description requirement was not clearly Corp. Cordis AVE, Inc., Medtronic v. 339 erroneous. 1352,
F.3d
We have
cautioned, however, that “[t]he disclosure
B. Obviousness
as originally
does
filed
... have to
provide in haec verba support
for the
Section 103 of the Patent Act pro
subject
matter at issue.” Id.
vides that
patent may
“[a]
not be obtained
...
if the differences between
subject
Here, the district court based its
sought
matter
to be patented and
prior
conclusion that Zao satisfied the written
art are such that
subject
matter as a
description requirement on two premises.
whole would have been obvious at the time
First, it stated that the words of the claim
the invention was made to person
having
itself “plainly and directly satisfy the stan
ordinary skill
in the art.”
35 U.S.C.
employed
dard
by the Federal Circuit in
103(a).
§
Because patents
presumed
are
assessing written description,” because
valid,
to be
see
§
35 U.S.C.
an alleged
phrase
“the
‘wetting the skin or said cos
infringer seeking to invalidate a patent on
metic article’ fairly appraises persons of
grounds
obviousness
must establish its ob
ordinary
skill
the cosmetic field that
viousness
supported
facts
by clear and
either the cosmetic article or the skin ...
convincing evidence. Apotex USA, Inc. v.
must be
prior
wet
to application.” Kao
Co.,&Merck
*6
Corp., 334
F.Supp.2d at
Second,
it
Here, the district court concluded
that,
stated
upon
based
the sequence of
that Unilever had not met its burden of
events described
specification,
in the
“[t]he
proof. Kao Corp.,
We disagree.
argues
Unilever
primarily
et
patent
’552
and the Gangadharan ’107
that
“packs”
because
“poultices”
patent.”
Corp.,
Kao
334 F.Supp.2d
—the
at 558.
only embodiments identified in the de- The district court
concluded,
also
however,
scription
already wet, the references
that
—are
“secondary considerations”—in partic-
to drying are insufficient to alert
person
ular, the discovery by Kao of “unexpected
having ordinary skill in the art
results” —were sufficient to rebut
pri-
wetting step. The district
rejected
court
ma
case, such that “the ’382patent is
that argument below, and we
poorly
are
not invalid for obviousness”
light
in
positioned, relative to the
fact,
finder of
to Gueret and Gangadharan prior art.
Id.
However,
only
upon
relied
ness.
challenges
the trial
Here, Unilever
it demonstrated
results
unexpected
re-
“unexpected
findings regarding
court’s
during
prosecution
to the examiner
procedural
both
raises
sults.”
Uni-
non-obviousness.
history
prove
to
alleging
arguments,
substantive
prose-
of this
certainly aware
was
lever
unexpected
finding
in
erred
court
and,
trial,
in-
history
Unilever
cution
first,
notified
because,
never
“Kao
results
n
into evidence.
it
troduced
unexpect-
rely
intent to
of its
Unilever
proof
Unilever’s
challenge
to
results
ed
brief,
devotes
Unilever
In
initial
its
second,
obvious”;
was
argument
to its
one sentence
precisely
claim,
results
unexpected
assessing
in
it: “Unilever
prejudiced
Kao’s actions
use “the clos-
failed to
the district
argu
any evidence or
develop
to
unable
third,
art”;
the district
prior
est
unexpect
assertion
rebut Kao’s
ment to
totali-
“the
to assess
properly
court failed
trial.”
discovery or at
during
ed results
which,
to
evidence,”
according
ty of
in the
response
insubstantial
Despite Kao’s
the ’382
Unilever,
establishes
brief,
reply brief does
red
Unilever’s
unexpect-
light
in
even
obvious
challenge.
procedural
all to
refer at
ed results.
arguments
paucity Unilever’s
Given the
fact,
particular
regard—and
in this
because
argues that
unex
by implication,
conceded
to use
intention
its
it of
notified
never
in the
by Kao were
relied on
results
pected
the obvi
defending
unexpected
was introduced
history, which
prosecution
“im
court’s
challenge, the district
ousness
no
have
by Unilever—we
into evidence
request
grant
refusal
plicit
trial
that the
to conclude
on which
basis
constitutes
be barred
that such evidence
managing
its discretion
court abused
claims
discretion.”
an abuse of
See Trs.
procedures.
trial
own
and sub
surprise
“both
suffered
to have
Co.,
Ins.
Lexington
v.
Penn.
Univ.
of Kao’s
as a result
prejudice”
stantial
Cir.1987)
(3d
(stating
911 n.
which,
failure,
according Unilev
alleged
only interfere
“will
Third Circuit
Rule of Civil
er,
Federal
both
violated
of its
management
court’s
a district
16(e)
pretrial
(stating
Procedure
abuse
is a clear
there
order where
pretrial
course
subsequent
control the
“shall
order
*7
discretion”) (internal
omitt
quotation
aby
subse
unless modified
of the action
ed).2
16.4(d) (stat
order”)
rule
and local
quent
“a
shall contain
order
pretrial
a
ing that
that the dis
argues
next
Unilever
any
of law which
issues
of the
statement
unexpected
judging
in
erred
trict court
litigated”).
to be
remain
contends
party
art—
prior
wrong
light
results
ap-
The district
allegations
patent.
to these
the Gueret
response
namely,
Kao’s
reads,
of “a
in its
evidence
footnote,
Kao’s
court,
finding
pears
a
con
ratio
23%”
removal
entirety,
plug
follows:
keratotic
results,
compared
82)
unexpected
(at
stituted
it was
asserts
Unilever
polyvi
using
achieved
ratio
ratio
the 4%
to
at Kao’s reliance
surprised
somehow
patent.
in the Gueret
nyl alcohol
non-obvious-
prove
to
unexpected results
1344,
S.A.;
Objects,
429 F.3d
gy,
v. Bus.
rulings
evidentiary
are
Inc.
court's
2. The district
(holding
(Fed.Cir.2005)
that “this
issues,
patent law.
to
not related
procedural
rulings
evidentiary
look
we therefore
resolving
questions
a district court's
such
In
reviews
circuit”).
regional
regional
circuit—
of the relevant
to the law
the law
under
See,
here,
e.g., MicroStrate-
Circuit.
the Third
Corp.,
sufficient to a prima rebut of Unilever’s argument real facie is that the 23% obviousness. stated, haveWe for example, removal figure ratio by the cited trial court that rebuttal of a case “can as the “unexpected result” unreliable, is consist of a comparison of test data show- and an therefore inappropriate basis for 3. argue Unilever does that the figure 23% is inequitable section on conduct below. exaggerated. That claim is discussed the however, indicates, and the record ad- case. We the rebutting prima facie found, Uemura that the Second court trial of our discussion allegation dress only the selectively disclosed Declaration below. issue conduct inequitable to It failed data. available positive most first, that facts: significant several reveal Conduct Inequitable .C. molecular a low also tested the inventors AN-119, variant, alleged that trial, weight At PVM7MA 14.4%; of ratio a removal only unenforcea achieved was rendered the ’382 did not second, inventors conduct inequitable and allegedly Kao’s ble for their of error margins inequi disclose alleged prosecution. during for the AN-169 tests, 7.1% which were the one grounds; two on conduct table depositions, In AN-119. for 5.2% that Kao claim here is relevant any expla- to offer unable were inventors misleading examiner “provid[ed] report all to failure for their nation copolymer the claimed for results test Moreover, at 539-40. Id. results. Corp., Kao declaration.” Uemura the 1998 contains Declaration also Uemura Second Unilev Specifically, at 561. to is no reason “there a statement re willfully failed Kao charges that er in kera- difference significant any expect of variant one for results the test port with- polymers other for removal plug totic AN-119, those because PVM/MA, Gantretz points As Unilever genus.” in the re substantially weaker indicated results AN-119 results out, untrue: this was vari for another reported than were sults a differ- such precisely of evidence provide ant, AN-169. ence. argu- clearly understand In order failure to argues necessary. In is ment, background some consti- testing of its the full report rejec- facing Patent was 1998, the ’328 late that renders conduct inequitable tutes including that its multiple grounds, on tion The district unenforceable. entire with” the commensurate “not were claims although concluding that disagreed, court point. to that had submitted evidence “material,” it was the omission the examin- provided ofMay In Id. 563. to deceive. with intent made from inventor declaration a second er with inequitable conduct of The determination Declara- (the Uemura “Second Uemura the discretion within squarely Declaration tion”). Uemura The Second determina- court, review its trial samples for showing results contained data discretion. abuse only for tion particular aof solution aof Pharms., v. Endo L.P. Pharma Purdue AN-169, molecu- high Gantretz weight: (Fed.Cir.2006). We Inc., alcohol variant, polyvinyl weight lar determina- underlying factual any review prior the Gueret representative solution error, trial court’s and the clear tions data submitted at 539. Id. art. be disturbed findings “will factual solution AN-169 showed examiner a definite has unless appeal [sic]” ration removal a “keratotic achieved has been a mistake conviction firm solution polyvinyl 23.3%, while Id. at made.” Id. only 3.7%. a ratio achieved *9 con inequitable allegation An became those between discrepancy proponent if its be sustained will duct re- results” “unexpected for the basis convincing evi by clear demonstrates overcome court to trial by the upon lied in- was information material “that dence of obviousness. Unilever’s tentionally withheld for the purpose of dence differently. Given the limited scope misleading or deceiving the patent examin review, however, our we cannot second- Colloids, er.” Allied Inc. v. Cyanam Am. guess the trial court’s decision. Co., id (Fed.Cir.1995). question, then,
The first is whether the D. Infringement information withheld was “material.” See Digital Control, Inc. v. Charles Mach. district court concluded that Unilev- Works, product er’s did literally not infringe The district court found that the informa the ’382Patent it because did not meet the tion at issue material, here was and the “copolymer” limitation of claim 1. The parties do not dispute finding. court construed that limitation “to mean district court then addressed the second poly(alkyl either vinyl acid) maleic ether/ question: whether Kao omitted the infor copolymer or poly(alkyvinyl ether/maleic mation with intent to mislead or deceive. anhydride) copolymer, but not the salt The trial judge found that it did not. Kao form thereof.” Corp., 334 F.Supp.2d Corp., 334 563. In drawing at 548. It then stated that it “uncon- conclusion, she noted that the omitted tested” that there were “differences in AN-119 not margins data^—-but of er chemical composition between the claimed ultimately ror —was presented to the ex and the PVM/MA acid-salt” used PVM/MA aminer, “albeit year over one after” the by product. Unilever’s Id. The primary Second Uemura Declaration was submit difference was that product Unilever’s con- ted. Id. “Based upon this submission,” the tains by 98% weight of copolym- PVM7MA trial court plaintiffs “inferred] were er and 2% weight AMP, not trying to conceal the lower ratio from “reacts with the form salt.” PVM/MA the examiner.” Id. Id. at 541. The trial court noted that Unilever alleges that in so ruling the experts “[t]he agree also that the claimed trial court abused discretion. We dis- PVM/MA and the PVM/MA agree. Intent to deceive “cannot be in- acid-salt have different chemical composi- solely ferred from the fact that information tions which can be characterized by differ- disclosed; there must be a factual ences in their solubility, viscosity, and in- basis for a finding of deceptive intent.” spectra frared data.” Id. at 548. This Pharma, Purdue Here, F.3d at 1134. provided evidence the basis for the trial although there certainly was evidence from court’s finding of noninfringement: Kao which the trial court could have concluded “failed to carry [its] burden of proving by that Kao acted with deceive, intent to a preponderance of the evidence that the very are question reluctant the judg- product accused literally meets copo- ment of fact, the finder of who appears to lymer limitation of claim 1.” Id. at 549. have considered the relevant evidence—
including the rather glaring cross-appeals failure of the trial court’s find- inventors to any offer ing rationale noninfringement, for the arguing primarily omission—in rendering the product decision. See literally infringed id. (declining to infer intent to Patent, deceive in the ’382 because, first, Unilever’s circumstances). similar product trial court ev- fact uses acid, PVM/MA idently placed weight considerable salt; on the second, even if Unilever’s fact that Kao eventually did submit most salt, does use the prec- court’s of the omitted data to the examiner. Giv- provides edent that a salt can infringe an en a slate, blank we might weigh evi- acid claim “if the salt provides the same
973 that, if the even Unilev also argues Kao We ad- the acid.”4 effect beneficial salt, it nevertheless the er uses in turn. issues these dress Patent because infringes the ’382 literally by the effected slight “the neutralization” that, contrary to the argues Kao “has no af of to addition AMP PVM/MA not does finding, “Unilever court’s the claimed ability the of fect on PVM/MA PVM/MA, but the of the salt” form use this Kao cites plugs.” keratotic to remove on the conclusion this It acid form. bases Teva Co. v. decision Merck & court’s to the of 2% AMP that the addition fact USA, Inc., F.3d 1367 347 Pharmaceuticals acid, neutralizes slightly only PVM/MA (Fed.Cir.2003), that “a proposition for the not groups do the acid of that “85.5% such “liter may be an acid” recite[s] claim that the acid only 14.5% of a salt and include acid” salt of the by the ally infringed as repeats its include salt.” a groups func and its salt “both the acid where to by any reference unsupported sertion — Here, argues, even Kao similarly.” tioned authority any other or record —that the chemi dispute does only slightly “a is compound resulting combining effected changes cal a salt.” acid and neutralized at all have no effect with AMP PVM/MA is, invention, that on of the on the ex- of “[a]ll retorts function plugs. keratotic ability to remove reaction be- a chemical perts agree in the AMP a similar tween Merck and reliance on PVM/MA International, supports record case, of a salt.” v. Tech Stephens formation (Fed.Cir.2004), misplaced. to response no is offers Kao F.3d 1269 this assertion. addressing the testimony those cases portions record of account patent claims assertion, both involve unsupport- issue conclusory acid/salt beyond forms. salt to include record, that were held that Unilev- by citation to ed 1371-72; Stephens, 393 Merck, at 347 F.3d note also “not correct.” We account is er’s claim court’s The district F.3d at 1274-75. limitation reads claim relevant exclud- expressly in this construction form of either to mean “copolymer” PVM/MA, rendering of salt ed the form thereof.” the salt form “but not PVM/MA distinguish- readily Stephens Merck and F.Supp.2d 545. at Corp., 334 Kao other, this, grounds. among on able not whether Unilever’s question relevant “a in Sun salt, it is but whether on our decision is a Kao also compound relies Funding Kao has offered v. Research Tiger, Inc. of’ form salt PVM/MA. Scientific Group, which to conclude court no basis and an lens patent involved a SunTiger it is not.5 challenge district court’s any an consider glancing to references also makes 4. Kao construc- claim construction. court’s claim appeal of the district that claim conclusion specifically, tion — acids, not "the to limited addition, subsequent PVM/MA to fil- note In Corp., Kao form thereof.” salt Patent, ap- separate filed ing the '382 this claim only to references 545. The directed to specifically claims plication "with however, appear argument, construction in the '382 copolymers salts "Statement appellee’s brief's sections Corp., F.Supp.2d at 546. If patent.” Nei- "Standard Review.” Facts” and forms claim salt Kao had intended presented, nor of issues the statement ther Patent, subsequent the '382 argument sec- summary argument, nor superflu- been application would have any discussion substantive sets forth tion ous. decline We therefore construction. claim *11 alleged infringing product featured, that in Attorney E. Fees addition to a lens similar to the claimed The Patent Act permits a trial lens, a gray coating over most of the lens court to award attorney fees to the prevail that allegedly altered light transmis- ing party “in exceptional circumstances.” sion properties of the lens. The district § 35 U.S.C. 285. This court has stated granted summary judgment of non- “exceptional that such may circumstances” infringement, concluding that the addition exist, “[i]n the case of awards to prevailing of the coating “changed an inherent prop- accused infringers,” where patentee erty” of the lens and thereby in- engaged avoided in “bad faith litigation” or in fringement despite the fact that a “fraud or portion inequitable conduct” in securing did, product fact, patent. McNeil-PPC, accused in all Inc. v. L. meet Perri Co., go (Fed.Cir. patent’s claim 1371-72 limitations. Id. at 1336. 2003) (internal reversed, quotation omitted). We stating that “we have never Whether a exceptional case is for required purposes that claima read on the entirety §of 285 is question fact, which we of an accused device in order to infringe,” review clear error. Deering Precision and that one cannot “avoid infringement Instruments, LLC v. Sys., Vector Dist. merely by adding if elements each element Inc., in recited the claims is in found the ac- Here, cused device.” Id. the district court that concluded “the case at bar is not exceptional such analogizes to our ruling in SunTig- that defendants merit an award of attor- er, arguing here, that case, as in that fees,” neys because “[njothing in the rec- addition of a novel here, element — suggests ord plaintiffs engaged in bad AMP —does fully “not eliminate an inher- litigation.” faith Kao Corp., 334 F.Supp.2d ent feature of the here, “the abili- claim”— at 564. Unilever charges that the district ty of the to remove PVM7MA keratotic court’s refusal to award attorney fees was plugs.” Kao’s analogy is unhelpful. The erroneous because Kao “engaged in bad core principle SunTiger is that fail- litigation faith by pursuing ure of portion some of an product accused claim” in the face of knowledge that, given to meet all the claim limitations is insuffi- the ’382 Patent does not cover salt cient sustain summary judgment of non- copolymer, forms of it could not possibly infringement where portion be infringed another product, Unilever’s product accused does meet uses salt all the form of claim polymer. It further alleges limitations. That is Kao engaged not the here, situation bad faith liti- gation by pursuing a where —because the claim for willful in- court did not fringement err in was “so devoid of determining merit product that during trial the salt, district court used a took the claimed por- acid—no rare step of dismissing this allegation at tion of the accused meets all the the close of Kao’s case-in-chief.” Finally, claim Where, here, limitations. no part Unilever alleges, above, as discussed of the accused infringing product meets all engaged inequitable conduct. the claim limitations of patent, remedy available patentholder is an mayWe dispose, first, of the no action under the doctrine of equivalents. tion that this case merited “exceptional” Kao has not raised a equiva- doctrine of status on the basis of Kao’s inequitable lents argument, and its literal infringe- conduct, because we have concluded that argument ment fails. the trial court did not abuse its discretion Mayer, Judge and dissent concurrence occurred. such conduct that no finding *12 of the district judgment the affirm we no fare arguments bad-faith noninfringement. as to court position litigation Although better. did issue infringement respect with AFFIRMED. in merit lacking so not it was prevail, not costs. No We status. “exceptional” warrant to decision court’s the district conclude NEWMAN, Judge, Circuit PAULINE “exceptional” to declare
not dissenting part. part, concurring in clearly erroneous. not correctly court the district agree
I valid, and that there to be the held CONCLUSION obtaining conduct inequitable opinion in this set forth reasons the For majority However, panel the patent. the May- Judge and Judge Newman’s and chemistry, in hold- the misunderstood has dissents, we and concurrences partial er’s the ma- of of 14.5% that neutralization ing court as district judgment the affirm totality is a means that groups acid leic descrip- written and conduct inequitable to science flawed This not an acid. and salt in this forth the reasons set For tion. of law. incorrect conclusion to an led concurrence partial in the opinion copolymer has acid maleic The claimed Newman, affirm also Judge of dissent polymer from dangling groups acid as to court the district of judgment district in the backbone, as illustrated set the reasons Finally, for obviousness. opinion: court’s partial in the opinion in this forth original is the salt, for 85.5% (words into add- “Acid” copolymer: ed). but, identical, is copo- copolymer ii) accused said ... wherein 1 ... Claim of amount base a small addition vinyl poly(alkyl ether/maleic is lymer 14.5% (AMP, methyl propanol), amino vinyl acid) poly(alkyl aor copolymer form a are neutralized groups acid copolymer. anhydride) ether/maleic to state incorrect simply salt. is same, or whether is the copolymer salt, for is copolymer accused are neutralized. groups acid 14.5% remaining unchanged, the acid 85.5% purpose testified Indeed, Unilever disputed. is not This acid. as the plasticizer act as was to AMP colleagues have been my district shown As less brittle. product make “expert” indi- error into scientific led accused opinion, court’s in the re- the acid rection, 85.5% when following structure. has converted been mains, has not *13 ” (words added.)
Id. “Acid” and “Salt” salt.’ Maj. op. at 972. Of course a reac- tion between an acid and a produces base panel majority states that it is “un- salt. But a reaction between 14.5% of the supported by any reference to the record acid and matching amount of pro- base any or authority other the resulting —that salt, duces 14.5% leaving 85.5% unreacted compound only ‘a slightly neutralized ” acid. my From colleagues’ inaccurate sci- acid and not a Maj. salt.’ op. at 973. ence, and the conclusion therefrom, drawn That is inaccurate. The record includes must, I respectfully, dissent. the following testimony of Professor Wil- liam Brittain, J. a chemist expert wit- MAYER, Circuit Judge, eoncurring-in- ness: part and dissenting-in-part. Q: you Were able to any make conclu- agree I U.S. 6,306,382 Patent No. satis- sion about the amount of acid groups fies the written description requirement, which are by neutralized AMP? Kao did not commit inequitable conduct, Yes, A: I was. Unilever does not infringe, and the trial Q: And what your conclusion? court’s decision not to award attorney fees A: My conclusion that approximately was not an abuse of However, discretion. 15 percent of the acid groups were neu- because Kao’s showing of unexpected re- tralized. sults was insufficient as a matter of law to Q: What happens to remaining prima overcome the facie case of obvious- percent of the groups in the PVM/MA ness by established Unilever, I dissent groups? acid from this court’s affirmance of nonobvious-
A: They remain unchanged. ness. addition, In witness, Phillip Gangadharan, U.S. Patent 5,811,107, No. Miner, testified pH before addi- Gueret, U.S. 5,026,552, No. re- tion of the 2.0, AMP was and after addition cite different Indeed, inventions. Ganga- AMP was 3.5. These are acidic pH dharan discloses the use the copolymers values,1 reflecting that only 14.5% of the poly(alkylvinyl acid) and ether/maleic acid groups have been neutralized. poly(alkylvinyl anhydride) ether/maleic My colleagues appear to have been tak- “PVM/MA”) (collectively to remove kero- en in by the carefully phrased Unilever totic plugs a method different from “ statement that of the experts agree ‘[a]ll invention; Kao’s and Gueret discloses that a chemical reaction between method, Kao’s PVM/MA but not the use of PVM/MA. and AMP results the formation of a See Corp. U.S., Inc., v. Unilever pH at neutrality is 7.0.
9.77 (D.Del. & 553-55 533-35 Therefore, invention 2004). because prior either under obvious other, see id. in view reference
art examiner’s (discussing the n. 18 at under Kao’s invention rejection 103(a) Gangadharan light § U.S.C. 557-58, Kao had alone); also id. see unexpected to demonstrate burden Johnson, references, In re see over both However, its inven- no evidence introduced better unexpectedly plugs tion removed *14 if sufficient Even Gangadharan. than as to so unexpected results demonstrate (a reference prior art Gueret overcome limitation), the tests without PVM/MA pro- Gueret invention to comparing Gangadharan, to overcome no basis vided limitation. contains PVM/MA Labs., 952 F.2d Travenol In re Baxter See Co., (Fed.Cir.1991); Inc. Merck & 388, 392 Labs., Inc., 806-9 v. Biocraft Johnson, F.2d at (Fed.Cir.1989); legal- was no Accordingly, there 1459-61. to conclude upon which cognizable basis ly unexpect- performed invention that Kao’s and Kao Gangadharan, than edly better facie case overcome did not Gangadharan established obviousness in view of Gueret. R. KAHN.
In re Leonard 04-1616. No. Appeals, Court States United Circuit. Federal 22, 2006. March