Sinorgchem Co., Shandong v. International Trade Commission

DYK, water used in the donors. The amount of Circuit Before NEWMAN YEAKEL, nitrobenzene with Judge.* condensation reaction of Judges, and District * Texas, Yeakel, designation. Judge, sitting by United Honorable Lee District Court for the Western District States District 10 to 15%water through- private parties at least particularly

aniline is focus on a portion out the reaction. that states: “A ‘controlled amount’ of material is an Sinorgehem’s is whether The issue up to that which inhibits the reac- 6PPD producing and 4-ADPA method tion of e.g., aniline with up method infringes the asserted claims of to about 4% on the based volume of H20 patents, and '111 owned '063 Flex- the reaction mixture when aniline is uti- sys. '111 issued from a patent The contin- lized as the solvent.” Id. at col.4 11.48-52. uation-in-part application application to the 23, 2005, February On Flexsys filed a patent subject that and led to the '063 is to complaint alleging, among with the ITC a terminal disclaimer based on the earlier things, Sinorgchem that infring- was patent. filed '063 The ing claims 30 or 61 of the patent '063 patent Examples '111 includes additional 7 or 11 patent, claims of the '111 and had through but is otherwise substantial- (a)(1)(B) violated subsection of section 337 ly specification. identical patent of the Tariff Act of which makes parties agree that the term “con- importation unlawful the of articles that patents trolled amount” in both should re- infringe either a valid patent U.S. or are ceive the same construction. produced by process covered At independent issue are claims 30 and claims of a valid patent. U.S. 19 U.S.C. 61 of the '063 and claims 7 and 1337(a)(1)(B)(2000). § The administrative patent. of the '111 These claims describe (“ALJ”) law judge issued a final initial producing methods 4-ADPA and (“final ID”) February 17, determination 6PPD. rep- Claim of 2006, holding Sinorgchem infring- had resentative: ed the claims violated section In producing alkylated 61. A p- method re Certain Rubber Antidegradants, No. phenylenediamines comprising [6PPD] (I.T.C. 2006) (final 337-TA-533 Feb. the steps of: determinations). initial and recommended a) bringing aniline and nitrobenzene Central to dispute before the ALJ into reactive contact a suitable solvent was the claim construction of the term system; “controlled material” b) reacting the aniline and nitroben- found in each of the asserted independent zene in a confined zone at a suitable claims. Sinorgchem urged the ALJ to temperature, presence of a adopt a construction of “controlled amount suitable base and controlled amount of material” “up to about 4% produce material to one or more the reaction mixture when aniline intermediates; 4-ADPA is the solvent.” J.A. at 108-09. Under e) reducing the 4-ADPA intermedi- construction, Sinorgchem this does not in- 4-ADPA; produce ates to fringe process because its uses more than d) reductively alkylating the 4-ADPA 4% water. c) 6PPD], Step produces [which Flexsys argued that “controlled amount”

'063 patent col.15 11.34-46. The central meant “that the amount question Sinorgehem’s whether method should be controlled between an lim- upper of producing limit,” 4-ADPA intermediates satis- it and a lower upper where the limit (b). fies the claim step limitations of beyond was “that amount which the reac- There is no dispute Sinorgchem uti- tion between nitrobenzene and aniline is (d). (a), lizes steps (c), inhibited,” The ITC and and the lower limit was “that J.A. at and that selectivity longer significant,” which the desired below in turn meant that the “mini- “significant” main- is not intermediates for 4-ADPA rate acceptable mum conversion would Flexsys’s Under at 108. tained.” J.A. 63%,” than more than 12% but less J.A. construction, pro- Sinorgchem determining “signifi- what was 233-34. infringe. cess would cant,” 8 for the the ITC looked con- rejected Sinorgchem’s The ALJ at which a conversion rate of nitrobenzene construc- Flexsys’s adopted struction significant. would be considered reaction amount.” of the term that when DMSO was the It found construction, ALJ con- Based on this drops rate of the conversion nitrobenzene (1) processes for Sinorgchem’s cluded the amount of water from 63 to 12% when literally in- making 4-ADPA 6PPD Sinorgchem’s increases from 6 to 9.75%. (2) claims, claims fringed the asserted determined, yields a con- process, the ITC indefinite, were not invalid as construed as version rate of around 85%. Under this (3) not invalid as the claims were disputed construction of the term new art. prior in view of the obvious amount,” the ITC likewise “controlled infringement. rejected the con- found the ITC appeal, On urged by amount” of “controlled struction The next concluded the claims ITC by the ALJ. It found adopted not invalid as indefinite. as construed were specification had patentee that the rejected the 4% water Although the ITC ex- lexicographer and acted as his own limit, amount” it found meaning of “controlled pressly defined upper an limit— was not indefinite since yields material as “an amount material protic protic amount” of where the amount of rate acceptable an conversion between the reaction of to that which inhibits up specifica- found and 63%—could be at 227. with nitrobenzene.” J.A. aniline this definition of “controlled tion. Given However, that construc- it excluded from amount,” rejected Sinorgchem’s the ITC sentence, second clause of tion the indefinite. argument that the claims were 4% “e.g., up to about which stated H20 obviousness, reaction mix- on the volume of the the ITC held based As to art —a 1903 Ger- prior the sol- while the asserted when aniline is utilized as ture (the by “Wohl” published man article Wohl limit read the 4% water vent.” The ITC reference) ani- the reaction of lan- general with other —disclosed as inconsistent nitrobenzene, of a the formation line with (quot- paragraph found in the same guage intermediate, small amount below), as interpreted which the ITC ed material, protic it presence of water as material teaching that the amount how or teach “whether or failed to disclose on other reaction condi- change based affects any material water or tions, aniline is used as the even where J.A. the conversion of nitrobenzene.” the 4% Similarly, the ITC read solvent. reaction in limit as inconsistent with the the ITC’s Sinorgchem timely appealed calculated where a jurisdic- have to our court. We decision level was utilized. 1295(a)(6). § pursuant to 28 U.S.C. amount” The ITC construed “controlled limit determined specifying upper DISCUSSION material “inhibits the reaction when I at 227. nitrobenzene.” J.A. aniline meaning inhi- appeal found that “inhibits” meant main on The ITC The issue amount.” the claim term “controlled the reaction is no bits “to the extent where agree cases, here that “controlled parties The sess. such lexicog- inventor’s any have well-accepted raphy governs.” amount” does not Id. at 1316. chemistry. field of meaning in the Si- Here, just the drafters have done that. that the ITC miscon- norgchem contends states: “controlled amount” and strued the term A “controlled amount” of in finding infringement. on that erred basis is an amount up to that which inhibits question construction is a of law Claim the reaction of aniline with Cybor Corp. which we review de novo. e.g., up to about 4% based Techs., Inc., 138 F.3d FAS volume of the reaction mixture when (en banc). (Fed.Cir.1998) aniline is utilized the solvent. repeatedly opinions Our have encour col.4 11.48-52.The term “con aged claim drafters who choose to act as trolled amount” is set off quotation lexicographers clearly their own define strong marks —often a indication that what terms in the claims in the specifica used See, follows is a definition. e.g., Cultor See, Fitness, e.g., tion. CCS Inc. v. Bruns Corp. Co., v. A.E. Staley Mfg. 224 F.3d (Fed.Cir. Corp., wick 288 F.3d 1328, 1331 (finding that the 2002) (“[A] claim term will not receive its claim term polydextrose” “water-soluble ordinary meaning patentee if the acted as was expressly defined in specification). lexicographer clearly his own set forth Moreover, “is,” the word again a term a disputed definition of the claim term in used specification, may here “signify ”); ... specification.... Vitronics patentee that a serving as its own lexi Inc., Corp. 1576, v. Conceptronic, 90 F.3d cographer.” Abbott Labs. v. Andrx (Fed.Cir.1996) (“The specification 1582 Pharms., Inc., (Fed. 1196, 473 F.3d dictionary acts a it expressly as when de Cir.2007). such, patentee As must be fines terms used the claims or when it by bound the express definition. See Du defines implication.”). terms Corp. Inc., rel v. Sylvania Osram 256 F.3d (Fed.Cir.2001). The approach of those cases was en 1303-04 Here the dorsed in v. Phillips Corp., 415 F.3d clearly, AWH drafter deliberately, precisely (Fed.Cir.2005) (en banc). 1303, 1316 In defined the term “controlled amount” of Phillips, specification we described the material as “an amount up to that “the single guide best to the meaning of a which inhibits the reaction of aniline with disputed term.” Id. at 1315 (citing Vitron e.g., up to about 4% H20 ics, 1582). 90 F.3d at We confirmed that based on the volume of the reaction mix “our recognize cases specification ture when aniline is utilized as the sol may special given reveal a definition to a vent.” Elsewhere in para the same the patentee term graph, differs specification again refers to the meaning it pos- would otherwise 4% limit.2 Conoco, Inc., here, cites application have no Energy & Envi where the numeri- International, L.C., 460 F.3d cal limit is included ronmental express within an defini- (Fed.Cir.2006), specification. tion set forth in the Renishaw PLC v. Mar Azioni, poss 158 F.3d per Societa’ specification 2. The (Fed.Cir. states: 1998), and Manufacturing Modine Commission, Co. v. International Trade Control of the amount of material propo for the present important. in the reaction is Gen- sition that a claim construction should not erally, when the reaction is conducted in import numerical limits aniline, into claim that does present in the reaction in an not contain such limits. But like (based cases these greater amount H<¿0, than about 4%

H37 tolerated will amount patentee that the agreed The ITC base, base, type the term amount vary defined with expressly had but held that specification cation, in the various amount” used in the and base to about 4% “e.g., up language However, it is within systems. solvent mix of the reaction the volume based art, utilizing in the the skill of one the solvent” utilized as aniline is ture when invention, to teachings present of the that defi part of considered should not be limit of the specific upper determine Neither of these two reasons. nition for material for First, the ITC dis persuasive. reasons is base, base and amount of type merely example an limit as the 4% missed the like. cation and in which all situations apply not that did added). (emphasis col.4 11.58-68 The ITC used as the solvent. aniline was made language this The ITC found emphasized lan on the particularly relied “e.g., up that the to about 4% clear following passage: in the H20” guage was used language with as a solvent aniline is utilized When example and not definition [TMAH], limit upper the same base aniline is permitted when amount of water on the volume based is 4% H20 addition, the solvent.3 In mixture. reaction addition, mixture) protic material inhibits on volume of base, vary type tolerated will the nitroben- the aniline with the reaction of cation, used in and base is no where the reaction to an extent zene However, systems. it is Reducing the various solvent the amount longer significant. art, utilizing within the skill of one the reac- level causes water to below 4% invention, teachings of the acceptable manner. proceed in an tion to specific upper limit of the the hydroxide is determine tetramethylammonium When protic material for a amount of as the sol- with aniline utilized as base base, solvent, base ca- vent, type and amount of of water is reduced as the amount further, The minimum amount tion and the like. based on e.g., down to about 0.5% mixture, necessary to maintain selec- protic material the total the volume of the reaction products de- tivity will also of the desired 4-nitrodiphenylamine and 4-ni- amount of solvent, type and amount of pend on the trosodiphenylamine increases with some like, base, uti- cation and the that is 2-nitrodiphe- base selectivity more in so that loss determined one minor can also be produced but still in lized and nylamine is Thus, art. present reaction could skilled in the the amounts. (emphases anhydrous 1.4 patent conditions. col.4 1.31—col.5 under be conducted added). material A “controlled amount” of the up to that which inhibits an amount expert testimo- appeal, the ITC relies on 3. On e.g., up aniline with reaction of art would person of skill in the ny that "a based on volume to about 4% HzO example of water to recognize the aniline is as mixture when reaction utilized temperature conditions of room limited to the upper limit for the amount the solvent. Appellee at pressure.” Br. of and ambient present protic material in testimony weight to that We attribute no example, when For varies with the solvent. identify any experts evi- did not because the solvent and tetram- utilized as the DMSO is art would rec- skilled in the dence that those hydroxide is uti- ethylammonium [TMAH] amount,” any term or ognize that "controlled upper limit on lized as the accepted specification, has an in the used in protic material chemistry. Under meaning field of in the on the based reaction is about 8% H20 circumstances, testimony to how one as When ani- such reaction mixture. volume of the language interpret the in the art would skilled with the same line is solvent utilized or no specification is entitled to little [TMAH], upper limit is base 4% H<fi weight. reaction mixture. based on the volume of 1138 disagree. vague This language

We statements our case law that we do express cannot override definitional “not normally interpret a claim term to language. frequently haveWe found that embodiment,” Primos, exclude a preferred specification a definition set forth Inc., Inc., v. Specialties, Hunter’s 451 F.3d See, governs meaning of the claims. (Fed.Cir.2006), as would be the e.g., Corp., Cultor 224 F.3d at 1330. if case the 4% limit applied were to the specification explains “When the and de claims. This rule particular has force claims, fines term used in the without where the claims as construed do not en- ambiguity incompleteness, or there is no compass any disclosed embodiments. See need to meaning search further for the CellPro, Inc., Hopkins Johns Univ. v. Desiccants, the term.” Inc. v. Multiform (Fed.Cir.1998) (“A F.3d patent Medzam, Ltd., (Fed. 133 F.3d claim should be construed to encompass at Cir.1998). aniline is When used as the least one disclosed embodiment express definition is neither written description portion ambiguous incomplete nor “con —the added). specification.”) (emphasis This is trolled “up amount” is to about 4% H20 not the case here. merely 10 is based on the volume the reaction mix one of twenty-one examples distinct set out ture” —and we need look no further for its specifications, in the two all of which are meaning. specification Nor is the passage “preferred described as embodiments].” relied on by the ITC inconsistent with the 'Ill col.8 11.5-8. express amount,” definition of “controlled Where, here, multiple passage since the embodiments generally refers to at disclosed, are we previously have least six different inter solvents while the defini preted claims to specifically exclude refers to reactions embodiments where Moreover, which aniline is those the solvent. embodiments are inconsistent specification unambiguous sets forth a language different limit patent’s of “about specification 8% water” for the history. Tele amount” Telecom, when DMSO is mac Corp. Inc., Cellular v. Topp Quite solvent. tellingly, aniline and (Fed.Cir.2001); see DMSO were the only two solvents of the Container, N. also Am. Inc. Plastipak six solvents mentioned in the Inc., (Fed.Cir. Packaging, 415 F.3d 1335 for which an express numerical limit 2005). was Telemac, In the district court given for the “controlled amount.” The looked to the to determine the quoted vary” language “will appears to meaning of the claim term “communication refer to the four other solvents for which a means,” since that term was in written the specific percentage provided. was not claim in “means-plus-function” form. 247 F.3d at 1324. Telemac

Second, challenged the dis the ITC found that the lan- trict court’s guage construction on the was basis that Example inconsistent 10 (which it left certain appears identically inoperable. embodiments both the '063 Id. at and the '111 1326. patents), “preferred We held that the description embod- iment,” of which uses than those more 10% water embodiments did not call for a in a reaction where aniline is different Instead, the construction. Id. solvent. we Despite high the level of water held that used in those embodiments “could not Example yields provide high the equivalent structure or struc (92.8%) percentage of 4-ADPA intermedi- ture for performing the claimed function” ates. appeal, On both the ITC and Flex- and were therefore outside of scope the of sys support the by relying ITC’s decision Rheox, the claims. Id. See also Inc. v. “the (Fed.Cir. er, is to illustrate purpose its stated Inc., 1327 Entact, F.3d aniline, and tet- nitrobenzene history re reaction 2002) (“where hydroxide dihydrate ramethylammonium that excludes construction a claim quires embodi conditions 50°C.” preferred anaerobic but not all under some permissible”) ments, Examples 11 11.61-63. a construction col. such added). hand, explicitly are directed (emphasis on the other amount of the control toward Example significant moreover It material: disclose specifically not 10 does illustrates that control of “[Example In- 3] in the reaction. used of water amount present material in that stead, of water used the amount by a com- important.” the reaction is only be determined reaction contrast, In stark plex calculation.4 6, accompanying in Tables

patentees illustrates the effect “[Example 8] respectively, specifically and 8 Examples 3 material in those used amount of water disclose has on the to the reaction added 11.32^18,col.ll patent col.9 reactions. yields of 4- conversion and extent of example, the Example 11.25-33. p-NDPA.” NDPA and to the reaction added of water amount 11.20-21, 11.10-13. at col.9 col.ll Under Id. ranges the solvent aniline is where circumstances, that the cal- the fact these 4.7%, effect of and illustrates 2.2 to amount water culated p- 4-NDPA and yield aniline is used as 4% where exceeds yield Table shows NDPA. weight, to and can- is entitled little solvent mmole, to 0.05 from 0.18 mmole dropped language the clear not override definitional level, the amount low unacceptably an specification.5 forth in the set from 3.45 added was increased of water argues that the doctrine Flexsys further Similarly, Example 8 illustrates 4.7%. supports the ITC’s claim differentiation to a of water added of the amount effect the 4% into the claims to read refusal Wa- DMSO is solvent. where reaction characterized limit. have We 14.7%, water ranged from 2.3 added there ter generally of claim differentiation doctrine dropped to yield that the again shows in a each claim “presumption that than low when more unacceptably level scope.” different Curtiss- has a Exam- Significantly, is added. 8% water Inc., Velan, Corp. Wright Flow Control illustrat- toward not even directed ple 10 is (inter 1374, 1380 of the amount the control ing omitted). Flexsys points out citation Rath- nal in the reaction. to be used by the total reaction of water in the filing response to supplemental Flexsys’s argument described mixture. at oral of the reaction question raised volume Letter calculation is conducted. how First, Davis, Sept. 2007. Mark G. agreed the ITC parties before All 5. reac- the total volume of the determines one amount” must be disputed "controlled term ani- volumes of from the known mixture thing in the same to mean the construed nitrobenzene, added, line, and base. water pat- '063 patent as in the the '111 claims of Next, water total mass of determines the one examples included in ent. Additional that number to vol- and converts the base appli- continuation-in-part specification of the summing By the volume of of water. ume patent cannot alter that led to '111 cation water in the added to volume water appears in the meaning term as it volume of can determine the total one patent. '063 percent- Water volume in the reaction. water dividing the total age determined is thus claim 30 of independent pat- generally the '063 to “a system,” suitable solvent which, ent specify does not a numerical limit for specification indicates, as the can material,” “controlled amount of “dimethylformamide, include aniline, pyri- dine, while claim 41 dependent “up nitrobenzene, recites to nonpolar hydrocarbon hexane, about % water.”6 Claim 30 solvents such states: as toluene and ethy- v/v leneglycol ether, dimethyl diisopropyl producing 30. A method of 4-aminodi- ethylamine, like, and the as well mix- (4-ADPA) phenylamine comprising the tures thereof.” 'Ill col.4 11.24-27. steps of: Because claim 41 merely refers to a subset a) bringing aniline and nitrobenzene systems of the solvent described in claim into reactive contact in a suitable solvent 30, and significantly scope, narrower in system; the claims are not rendered identical and b) reacting the aniline and nitroben- present no claim problem. differentiation zene in a confined zone a suitable Therefore, Flexsys’s claim differentiation temperature, presence and in the of a argument is without merit. suitable base and controlled amount of reasons, For these we hold that produce one or more correct claim construction of the term intermediates; 4-ADPA “controlled amount” is that defined ex- c) reducing the 4-ADPA intermedi- pressly in specification, namely: “an produce ates under conditions which 4- up to that which inhibits the reac- ADPA. tion of nitrobenzene, aniline with e.g., up (emphases col.14 11.16-26 add- to about 4% based on the volume of H20 ed). Claim states: the reaction mixture when aniline is uti- Method claim 30 wherein said solvent lized as the solvent.” system up includes aniline and to about Ip % based on the total volume v/v II of the reaction mixture. light of the correct claim construction added). Id. at (emphasis col. 11.50-52 of “controlled amount” it is clear that there

Thus, according Flexsys, interpreting is no literal infringement. Based on the “controlled amount” in claim 30 to have an specification’s express definition of “con- upper limit “e.g., up to about amount,” trolled each claim asserted ... when aniline is utilized as the only solvent” encompass processes that utilize at scope would render the independent most 4% water when aniline is the solvent. dependent and the claim identical. dispute There is no Sinorgchem al- Flexsys’s argument might have some merit ways uses more than 4% water when it if only claim 30 referred to aniline sol- reacts aniline with and thus vents. But it does not. Claim 30 refers there can be no literal infringement any Flexsys points material, relationship also to the same trolled amount” of states that independent between non-asserted claims 1 pro "the amount of tic material at the dependent and 61 and claims 12 and 72 of the beginning up of the reaction is to about 13.8 patent. For the reasons described in the volume water based on the % total volume of text, dependent the existence of these claims reaction mixture.” has not ex- persuasive. also not plained presence how the water at 13.8% ITC, Flexsys, but passing not the relies in beginning the of the necessarily reaction is which, patent, on claim 29 of the '111 in inconsistent awith "controlled amount” of specifying addition to process that the in- during operative part the of the reaction. "reacting” presence volves in the aof "con- NEWMAN, Judge, dissenting. Circuit the ITC Because claims. the asserted of literally infringed Sinorgchem found that in its join panel the I do not the not reach it did Flexsys’s patents, finding of of the Commission’s reversal process Sinorgchem’s whether question error of fact or infringement. No literal equiv- of the doctrine infringe under would in the Commission’s has shown been law argued below Flexsys Although alents. determination; the Commission’s indeed of construction Sinorgchem’s that under Instead, scarcely mentioned. findings are amount,” pro- Sinorgchem the “controlled contrary findings have made my colleagues of the doctrine under infringe cess would text of unchallenged neither at the detailed J.A. equivalents, Sinorgch- contends here con- ITC and have patent specifications, nor the the equiva- the of under doctrine infringes em they exclude the claims so strued construed claims are the lents when in the described major part of invention to 4% water amount limit controlled the must, respectfully, I dissent. patents. the On as the solvent. is used when aniline determining the principle of The basic claim the remand, should address the ITC that the claims claims is scope of infringement equivalents of of doctrine no the legal there was the definition of invention holding provide of our light Exxon Chem. infringement. descriptive See literal patented, that is based Patents, Corp., 137 v. Lubrizol Inc. his- and controlled text (Fed.Cir.1998). 1475, 1479 art. A prior of the tory, cognizance or disclaim can reduce patentee Ill than what is described to cover less scope that the assert- argues also Sinorgchem Here, however, there specification. and obvi- are invalid indefinite ed claims forth scope set no disclaimer was Chemical, ap- in an Cardinal ous. Under claims; there specifications action, once we court from a district peal the claims art to limit prior no generally we infringement have addressed majority; and panel way selected address counterclaims must nonetheless reason to insert absolute is no there Chem. Co. invalidity. Cardinal See limit of 4%” mate- “about numerical Int’l, Inc., 113 S.Ct. 508 U.S. Morton not contain claims that do into the rial (1993). Since L.Ed.2d limit, specifications when numerical the ITC were before invalidity issues significantly demonstrate patents both defenses, deci- only as affirmative raised no evi- There was percentages. higher necessary issues would these sions on the evidence contradicting dence there determina- only if on remand was protic ma- concerning range experts infringe- equivalents tion of doctrine specifications’ in the text set forth Materials, terial Inc. v. Elec. MEMC ment. See examples. illustrated Corp., 248 Materials Silicon Mitsubishi 199, 205, 2007 WL Fed.Appx. correctly construed the The Commission (Fed.Cir.2007). circum- these Under *5 material” to invalidity stances, do not address we specifications content of match appeal. this issues in findings con- The Commission’s claims. cerning CONCLUSION the amount supported are specifications shown reasons, the decision foregoing For the evidence, statutory stan- by substantial REMANDED. below is VACATED findings, agency’s for review dard No costs. 1337(c), § and its claim patents construc- The explain presence U.S.C. that the of a panel tion is in accordance with law. The controlled amount of protic pro- material seriously in discarding has erred duces the advantage environmental conclusions, findings the Commission’s and avoiding products, halide waste and re- they only supportable are not on the duces manufacturing and material costs review, required they standard of but also permits because it the direct reaction of nitrobenzene, are correct. aniline and instead requir- ing the preparation of intermediate com- N-(l,3-dime- products The issue are pounds in prior art. thylbutyl)-N’-phenyl-p-phenylenediamine The in claims suit do not include numeri- (6-PPD) (4- 4-aminodiphenylamine cal limits for the “controlled amount” of ADPA), 6-PPD which is derived. material, protic specifications de- complaint charged The that the 4-ADPA fine the amount varying with the sol- produced using and 6-PPD are a process vent, base, cation, base and the like. The is covered claims 30 and 61 of (with added): patent states emphases 5,117,063 Patent No. and claims 7 and 11 A 5,608,111. “controlled amount” of protic of Patent No. The '111 material is an amount up to that which applica- issued from a continuation of an inhibits (not 5,453,541 the reaction of tion that led to Patent No. aniline with here), e.g., up suit to about which was a continuation-in- based on the H20 volume of the part application to the that led reaction mixture to the '063 when aniline is utilized as patent. patents The describe the solvent. The upper limit for the conducting process by protic the direct amount of reac- present material tion of aniline and nitrobenzene in varies with presence of a the solvent. For example, base and a “con- when protic trolled amount” DMSO is utilized as material as the solvent and set (b) tetramethylammonium step hydroxide forth in process. overall is uti- base, lized as the upper Claim 61 of the '063 limit on representa- amount of present tive: material reaction is about 8% based on the A producing alkylated p- 61. method of volume of the reaction mixture. When phenylenediamines comprising steps aniline is utilized as a solvent with the of: base, same upper limit is 4% H20 a) bringing aniline and nitrobenzene based on the volume of the reaction into reactive contact a suitable solvent addition, mixture. system; vary material tolerated will b) reacting the aniline and nitroben- type base, base, and base in a zene confined zone at a suitable cation, sys- used in the various solvent temperature, presence of a However, tems. it is within the skill of suitable base and controlled amount of art, utilizing one teachings produce material to one or more invention, to determine intermediates; 4-ADPA specific upper limit of the amount c) reducing the 4-ADPA intermedi- for a sol- produce ates under conditions which 4- vent, type and amount of base ADPA; and cation and the like. d) reductively Id., alkylating the 4-ADPA col. lines “teachings 48-68.. c). Step the present invention” are extensive temperature, using conducted at room “con- defined was The Commission

detailed. (TMAH) up to that hydroxide “an amount tetramethylammonium as trolled amount” and of aniline inhibits Example which 2 shows dihydrate1 as the base. in accord This definition is nitrobenzene.” varying temperature. the effect of the it but is specifications, the with varying the amount of Example 3 shows limit who panel majority, the rejected 4.7%, 2.2 to and also from uses water the part of to the amount” material. In Ex- protic as the methanol 4% using up to about statement patentee’s 0, 10, 3, of 50 and ample water in amounts and no is aniline there excess water where pH is added the reaction. The to solvent, all of the other and exclude other in- in the reaction of water percentage water, the of that affect variables and the water both this added wa- cludes text specifications’ in the as demonstrated dihydrate. TMAH introduced the ter majority panel examples. The specific and 9, 2 note. The patent, col. tbl. See described number that is the promotes show that the Examples condition, all condi- a limit under one dihydrate part in of present the water It is tions, contrary specifications. to the present material that is change the inven- judicial role to not the 11, id. col. lines as such. See calculated ac- Although panel tion. & tbl.6. 14-18 4% “could be that limits above knowledges so and were specification” in the found the use of Example shows various Commission, major- panel by the found solvents; Example is directed various fact. undisputed this ity discards bases; comparison 6 is a Example in conditions describe the patents method; Example 7 varies the art prior pro- are 4-ADPA intermediates which reactants; 8 shows Example ratios reaction of aniline by the direct duced steps in total amount of water varying the specifica- The '063 nitrobenzene. 14.7%; 3.5%, 6%, 9.75%, 2.3%, Ex- examples, twelve includes varying ample 9 shows amount and varying the nature maintaining dihydrate while base TMAH material, cation, material con- amount of added Additional reaction conditions. and the anaerobic Example 10 shows at 4.7%. stant continuing patent, in the examples are at 50°C and contains wa- conditions further variation illustrating the Commission dihydrate; Example 1 patent, ter In the '063 material. water in the percentage of calculate the dihydrate two molecules of contains 1. TMAH Example 10 of reaction disclosed tetramethylammonium per molecule water patents-in-suit. pat- specific Examples in the hydroxide. The "the Example reaction form, 10 discloses liquid variously add ents aniline, tetramethylam- nitrobenzene together. dihydrate, or both ('TMAH dihydrate hydroxide dih- monium “complex colleagues it a calcula- My call conditions at ydrate') under anaerobic percentage of water 12, calculate the 11, tion” to line 64-Col. Col. 50°C.” JA 000269. reactants, maj. op. n. volume of the total “dihydrate” means that line 1. The term evidence; to consider this and decline for each two water molecules there are Commission, AU, everyone else 13-22. JA lines molecule of TMAH. briefs treat this calculation the record and that 0.42 moles 10 discloses response question from the to a dihydrate routine. in the reac- are TMAH argument, submit- during oral counsel bench are two moles of water Because there tion. TMAH, following explanation: ted (dihydrate) mole of there for one the reaction. JA are .84 moles water question was asked of how Specifically, the the amount Because lines 4-20. would be able to in the art skilled one example preferred as a describes this em- method this invention.” Id. col. Example 11 bodiment. demonstrates the lines 35-43. tetramethylammonium production of panel The majority, in discussing some p-NDPA; and ion salt of 4-NDPA Exam- examples, of the ignores dihydrate that ple 12 illustrates the conversion of 4- is throughout examples, and produce ADPA to 6-PPD. only finds that Example 10 of the '063 '111 patent, examples, In the additional patent can having be viewed as than more 15, particularly Examples 13 again and majority’s water. The complaint that presence significantly show the more Example 10 “is not even directed toward than panel majority 4% water. The de- illustrating the control of the amount of clines to consider the additional examples, protic reaction,” to be used in the show Example

which 10.8% water for 13, maj. op. inapt, is Example for Example and 13.8% water for 15. The yield shows 92.8% of the desired 4-ADPA rely had Commission no need to on the intermediates in conditions that include 9- examples additional because it found the 10% of patent, material. '063 col. examples sufficient. Nor is the issue 12, my lines 11-13. colleagues Thus find matter,” one of “new in using the continua- “clear definitional language a [of 4% limit] tion-in-part to construe claims of an ances- set forth in specification” although that patent, tor charge infringement for the number is signal sentence with the patent. of both or either “for example,” ignore the text and specifications explain The the effect of examples showing higher range. These variable, each that state “the amount appellate erroneous findings of scientific vary material tolerated will fact directly contradict findings of the base, type of and base Commission, upon made extensive and de- cation, sys- used n the various solvent tailed argument evidence and on the con- patent, tems.” col. 4 lines 61-63. tent of specifications, including the var- specifications explain The further iables discussed and exemplified in the successfully reactions can be per- “[T]he Instead, '063 and '111 patents. panel formed conventional modifications parts selects the specifica- art, e.g., by known to those skilled tions that show water in range, the 4% adjustments appropriate temperature, ignores like, description pressure examples by changing and the to alter- show other native amounts of water. reagents majori- conventional such as The bases, ty’s ruling solvents or other de novo contrary routine modifi- to the testi- conditions, like, mony cation of reaction experts sides, and the contrary both or other reactions disclosed herein or oth- expertise, Commission and contrary to the conventional, erwise will applicable rules of claim construction. The Commis- and of aniline and nitrobenzene and mination at JA Sinorgchem's 000137-138. 10, Example TMAH are disclosed in experts agreed Example 10 has 9 to 10 percentage water in the reaction can be water, percent and that it could be calculat- using calculated 000568, the method described at JA ed. JA 000151. 000569, through line 6 JA line 21. Letter from counsel Mark Sep- G. Davis dated calculating The method of 14, experts tember agree- were in water in a reaction where the amount of ment that presence 10 shows the dihydrate, TMAH aniline and nitrobenzene undisputed water. It is person 9-10% that a are known is also found in the ordinary skill in the field of the invention history patent, of the '111 as is discussed in readily calculate the amount of water. the Final Initial and Recommended Deter- (“We Cir.2007) normally interpret do not defer appropriate finding warrants sion’s dis way that excludes terms See, Power Comm’n e.g., Federal ence. Co., In examples specification.”); 404 U.S. Light & closed Fla. Power (“The (1972) L.P., Mfg., 30 L.Ed.2d v. Biocrest vitrogen Corp. S.Ct. (district the conclusions may ignore not ... court put and the Commission experts erroneously ex construction court’s claim substituting position absurd itself in an ex an embodiment described cluded for theirs on controverted judgment its Har specification); Budde v. ample in the (quot engineering.” hydraulic of matters Inc., 1369, 1379-80 250 F.3d ley-Davidson, Fed. Chapman rel. v. States ex ing United (Fed.Cir.2001) (the be specification should (4th 796, Comm’n, F.2d 808 191 Power “if possi a and read considered as whole 609, 153, Cir.1951), 73 S.Ct. aff'd, 345 U.S. ble, patent in a manner that renders (1953))). 97 L.Ed. 918 consistent”). internally they would are construed Claims majority justification by the The labored in the field of the by persons understood is the maxi- ruling its that “about 4%” by and invention, persons are the for those permitted mum per written. Such patents are for whom suggest how specifications does not specification, charged sons are erred, explain a claim the Commission history, general knowl much of the that excludes construction Phillips invention. in the field of the edge con- and is specifications content 1303, Corp., 415 F.3d 1316-17 v. AWH testimony. For exam- expert trary to the (en banc). (Fed.Cir.2005) beyond It is testified, expert witness David ple, Crich must specification the entire debate ordinary person that a dispute, without construing the claims. be consulted description recognize that the skill would USA, Inc., v. Pharms. Pfizer, Inc. Teva reactions with is directed to of 4% water (“It (Fed.Cir.2005) 1364, is 429 F.3d of am- aniline as the solvent conditions aas necessary specification consider pan- temperature pressure. bient wriU whole, portions all and to read “no inexplicably majority attributes el in a manner description, possible, if ten argu- testimony by expert to this weight” internally consis that renders has no “controlled amount” ing that In since tent.”); v. Mfg. Co. Kinkead Slimfold (Fed. chemistry, the court meaning in Inc., 1113, universal dustries, 810 F.2d Cir.1987) (“Claims in this field interpreted persons in a how ignore are not skilled vacuum, and are read the term part chemistry are would understand but specification.”). Phil- light of the this field. As resolved applied in 1313, inquiry into “[t]he F.3d at lips, 415 including specification the entire When in the art ordinary person a skill how consulted, rather examples is an ob- provides a claim term understands correct claim snippets, the than selected begin from which jective baseline specifications. apparent is scope starting point is That interpretation. Pharms., Inc., 473 v. Abbott Labs. Andrx understanding the well-settled based on (Fed.Cir.2007) (declin- 1196, 1210-11 skilled typically persons are that inventors fol- description term to ing to limit claim pat- and that of the invention in the field specification lowing the word “is” to be addressed to intended ents are so would exclude disclosed where to do pertinent skill in the by others of read Corp. Vonage v. Servs. examples); Verizon omitted.) (Fed. (Citations art.” Holdings Corp., 503 F.3d The cases on which the relies scope, contrary to the content of speci- do not support, See, indeed Conoco, contravene the fications. e.g., Inc. v. Energy majority’s to claim approach construction. Int’l, L.C., & Envtl. 460 F.3d Inc., In Corp. Sylvania, Durel v. Osram (Fed.Cir.2006) (it generally improper for (Fed.Cir.2001) 256 F.3d 1303-04 courts to import a numerical limitation into entirety court that the specifi- held claim that contains no numerical cation, including specific examples, limit); Mfg. Modine Co. v. U.S. Int’l Trade in determining must be considered the Comm’n, (Fed.Cir.1996) 75 F.3d scope of the “oxide coating,” term and not (“Ordinarily a claim element single broader statement. Multiform in general words, claimed descriptive when Desiccants, Medzam, Ltd., Inc. 133 F.3d range numerical appears in specifica- 1473, 1478 the court stated claims, is not limited to patentee’s that the lexicography could not numbers or the enlarged by resort to extrinsic dictio- claims.”) patents’ The teachings definitions, nary when the scope intended vary material can clearly was forth in the entirety set of the with conditions, teachings ambiguity “without or incom- heavily by reinforced experimental actual pleteness,” a sound rule that emphasizes examples, readily were understood by the the controlling specification. role of the show, Commission to patentee stat- These support cases the Commission’s ed, that the invention practiced can be holding, not that of the panel majority. over a range of conditions. The extensive Equally is the inapplicable majority’s cita- data in the patent specifications were not Rheox, Entact, Inc., tion of Inc. v. 276 challenged. No error has been shown (Fed.Cir.2002), F.3d for unlike the Commission’s conclusion that “con- Rheox, prosecution here the history does trolled amount” is not limited to 4%. require preferred not exclusion embodi- appellate Our obligation is to impart ments. consistency, predictability, guidance The also relies on Telemac Cel patent claiming, whereby patent-user Telecom, Corp. Topp Inc., lular 247 F.3d community rely on technologically (Fed. Cir.2001) and North American correct legally interpreta- consistent Container, Plastipak Inc. v. Packaging, tion of patent claims. The health of inno- Inc., as sup technology vative requires confidence in porting its claim construction. These are objective construction, rules of claim cases where the construction of claims is judicial application uniform of the rules. narrower than the breadth of specifica panel majority adds inconsistency and tion, facts where such narrow unpredictability by arbitrarily limiting the ing required, was such as “means-plus- scope claimed way invention in a construction, function” express that conflicts with teachings disclaimer during inas North specifications and knowledge Container, American 415 F.3d at 1345 - field of the inventions. I respectfully dis- contrast, 1348. In case the sent. words “controlled amount” do not have an unambiguous meaning that dictates the ex

clusion embodiments, of disclosed nor is

there any suggestion of disclaimer. These

decisions do support not majority’s

arbitrary appellate limitation of claim

Case Details

Case Name: Sinorgchem Co., Shandong v. International Trade Commission

Court Name: Court of Appeals for the Federal Circuit

Date Published: Dec 21, 2007

Citation: 511 F.3d 1132

Docket Number: 2006-1633

Court Abbreviation: Fed. Cir.