UNION OIL COMPANY OF CALIFORNIA, Plaintiff-Appellee,
v.
ATLANTIC RICHFIELD COMPANY, CHEVRON U.S.A. INC., EXXON CORPORATION, MOBIL OIL CORPORATION, SHELL OIL PRODUCTS COMPANY аnd TEXACO REFINING AND MARKETING, INC., Defendants-Appellants.
United States Court of Appeals for the Federal Circuit
99-1066
DECIDED: March 29, 2000
[Copyrighted Material Omitted]
Michael V Ciresi, Robins, Kaplan & Ciresi, L.L.P., of Minneapolis, Minnesota, argued for plaintiff-appellee. With him on the brief were Martin R. Lueck, David W. Beehler, Tracy A. Sykes, and Diane L. Simerson.
E. Edward Bruce, Covington & Burling, of Washington, DC, argued for defendants-appellants. With him on the brief was Christopher N. Sipes. Of counsel on the brief were Donald R. Dunner, and J. Michael Jakes, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC. Also of counsel on the brief were Harry C. Marcus, and Bartholomew Verdirame, Morgan & Finnegan, L.L.P., of New York, New York.
Opinion for the court filed by Circuit Judge Rader. Circuit Judge Lourie dissents in part.
Before MAYER, Chief Judge, LOURIE and RADER, Circuit Judges.
RADER, Circuit Judge.
The United States District Court for the Central District of California denied the appellants' motion for Judgment as a Matter of Law (JMOL) which sought to overturn the jury verdicts of patent validity and willful infringement. See Union Oil Co. of Cal. v. Atlantic Richfield Co., No. CV-95-2379-KMW, slip op. at 1 (C.D. Cal. Mar. 10, 1998) (Unocal I). In their JMOL motion, the Atlantic Richfield Company and other appellant refiners asserted that Union Oil Company of California's (Unocal) United States Patent No. 5,288,393 ('393 patent) is invalid under 35 U.S.C. §§ 102 and 112 (1994). The district court also held that Unocal did not commit inequitable conduct before thе U.S. Patent and Trademark Office (PTO). See Union Oil Co. of Cal. v. Atlantic Richfield Co.,
I.
Unocal owns the '393 patent, which claims automotive gasoline compositions that reduce automobile tailpipe emissions. Unocal's original patent application contained 82 claims. As is often the case during the course of prosecution, the inventor added and canceled many claims. Ultimately, 155 claims issued, but Unocal later disclaimed all but the forty-one at issue in this case: claims 20, 53, 54, 56, 57, 71-75, 78, 79, 81, 112-16, 117 (multiply dependent on claims 53, 73, 78, 112, 116, and 125), claim 120 (multiply dependent on claims 55, 78, 79, and 124), claim 121 (dependent on claim 120 and therefore multiply dependent on claims 55, 78, 79 or 124), 125-27, 133-35, 137, 153, and 155. Each claim appears in dependent or multiple dependent form, and has from four to six limitations describing ranges for several of the fuel characteristics. Each claim effectively begins either with thе preface "[a]n unleaded gasoline fuel suitable for combustion in an automotive engine" or "[a]n unleaded gasoline fuel suitable for combustion in a spark ignition automotive engine." As an example, Claim 117, as dependent upon claim 116, states:2
117. [An unleaded gasoline fuel suitable for combustion in an automotive engine, said fuel having a Reid Vapor pressure no greater than 7.0 psi, and a 50% D-86 distillation point no greater than 200 F., and a 90% D-86 distillation point no greater than 300 F., and a paraffin content greater than 85 volume percent, and an olefin content less than 4 volume percent] wherein the maximum 10% distillation point is 158 F (70 C.).
'393 patent, col. 24, ll. 24-27.
As illustrated above, the claims do not describe each gasoline product in terms of molecular structures or lists of ingredients. Instead, the claims specify the chemical properties of the gasolines, reflecting the way oil refiners formulate gasoline. When oil refiners formulate new gasoline products, they do so by mixing petroleum stocks. Different stocks have different properties that are known to oil refiners. The record shows that oil refinеrs of ordinary skill in the art change the chemical properties of gasoline by varying the proportions of different petroleum stocks. Thus the claims which define the invention in terms of various characteristics also inform those of skill in the art of the composition of the claimed gasoline fuels.
Unocal researched extensively the production of automotive gasoline with reduced combustion emissions. Unocal's scientists, Drs. Jessup and Croudace, ultimately filed a patent application based on their findings. Their research taught ways to produce cleaner gasoline by varying the following chemical properties in automotive gasolines: Reid Vapor Pressure (RVP), T10, T50, T90, Olefins, Paraffins, Aromatics,3 and Octane.
RVP measures the partial pressure of a gasoline sample when heated to 100 F in a sealed container. See id. at col. 18, ll. 43-47. T10, T50 and T90 are abbreviations for percentage distillation points, as measured according to an industry standard procedure called "D-86." Each corresponds to the temperatures at which a given percentage of the gasoline sample enters a gaseous phase under specific experimental conditions. Thus, T10 is the 10% D-86 distillation point; T50 the 50% D-86 distillation point; and T90 the 90% D-86 distillation point. The olefins value describes the percentage of the gasoline comprised of olefins measured by volume. Olefins, otherwise known as alkenes, are open-chain hydrocarbons that contain at least one double bond. The paraffins value describes the percentage of the gasoline comprised of paraffins measured by volume. Paraffins, otherwise known as alkanes, are open-chain hydrocarbons that contain only single bonds. The aromatics value describes the percentage of the gasoline comprised of aromatics measured by volume. Aromatics, are compounds whose properties resemble those of 6-carbon ring molecules that have an average of three intra-ring carbon-carbon double bonds (i.e., benzene). Octane, as used in the '393 patent, describes the knocking or detonation characteristics of a gasolinе sample as compared with a reference fuel. The octane value is derived by testing gasoline in a special engine under specified experimental conditions, and comparing those results to identically tested reference blends of Isooctane and n-heptane.
Drs. Jessup and Croudace sought to reduce the levels of carbon monoxide (CO), nitrous oxide (NOx), and hydrocarbons (HC) emitted from automobile tailpipes. After considerable experimentation, Drs. Jessup and Croudace discovered relationships between the various petroleum characteristics described above and tailpipe emissions. Drs. Jessup and Croudace then patented their innovative fuel compositions, describing the new compositions by their characteristics.
The specification of the '393 patent describes relationships among automotive gasoline characteristics and fuel emissions, including the following:
1. Decreasing RVP is of primary importance, and decreasing T10 and olefin content are of secondary importance for reducing NOx emissions. See '393 patent, col. 2, ll. 21-29.
2. Decreasing T50 is of primary importance for reducing CO and HC emissions. See id. at ll. 7-11.
3. Increasing paraffin content and decreasing T50 are most effective for reducing CO emissions. See id. at col. 6, ll. 12-28.
4. Decreasing both olefin content and RVP are most effective for reducing NOx emissions. See id. at ll. 28-31.
5. HC emissions are most practically reduced by decreasing olefins and/or T50. See id. at ll. 46-50.
6. Any combination of the eight characteristics can be increased or decreased as described, and that the greater any individual characteristic is changed in the directions indicated, the better the result. See id. at col. 15, ll. 20-28.
The specification also provides specific numerical ranges for each characteristic. For example, the specification teaches:
1. CO and HC emissions can be minimized by reducing T50 below 215 F, preferably below 195 F. See id. at col. 2, ll. 7-20.
2. NOx emissions can be minimized by (a) decreasing RVP to 8.0 psi or less (preferably below 7.0 psi); (b) decreasing olefins below 15% (preferably to essentially zero); or (c) decrеasing T10 below 140 F. See id. at ll. 21-34.
3. The best NOx reductions are obtained when the olefins are below 15%, RVP is 7.5 psi or less, and T10 is below 140 F. See id. at ll. 44-50.
4. All three pollutants are reduced when T50 is 215 F or less and RVP is 8.0 psi or less, with greater reductions when olefins are below 10% or T10 is below 140 F, and still greater reductions when both olefins and T10 are reduced. See id. at ll. 54-64.
5. Further pollution reductions are possible when T50 is below 195 F, olefins are below 5% (preferably at essentially zero), T10 is below 120 F, and/or when RVP is below 7.0 psi. See id. at l. 64 - col. 3, l. 3.
Elsewhere the specification describes the optimal ranges for five of the eight fuel characteristics in similar terms.
The specification also states that the gasolines are preferably unleaded, have an octane rating of at least 90, and fall most preferably within one or more of five volatility classes in American Society for Testing and Materials (ASTM) publication D4814-89 (included in Table 1 of the patent). See id. at col. 4, l. 66 - col. 5., l. 13. Beyond the optimal ranges for individual characteristics, the '393 patent also discloses preferred fuel mixtures. In sum, the '393 disclosure describes with detail thе benefits and methods of varying gasoline characteristics. The specification describes 1) the relationships among the eight individual fuel characteristics and CO, NOx, and HC emissions, 2) characteristics most important for emissions, and 3) specific desirable ranges for RVP, T10, T50, olefins, paraffins, and aromatics.
The appellant refiners originally sued Unocal in district court, seeking a declaratory judgment to invalidate the '393 patent. Unocal counterclaimed, alleging willful infringement of the '393 patent. The district court then construed the claims of the '393 patent, effectively converting the refiners' declaratory judgment action into an infringement defense. Then the district court tried those invalidity issues to a jury. During forty-nine days of trial, the jury heard the testimony of numerous witnesses and considered hundreds of exhibits and demonstrations. See Unocal I, slip op. at 6. At the close of all evidence, the district court properly instructed the jury on the law, and presented the jury with a special verdict form. The verdict form required the jury to decide validity under § 102 and § 112 separately for each of the forty-one аsserted claims. With respect to the § 112 questions, the trial court asked the jury to consider the '393 patent's specification, including the original claims of the application, as filed. See Northern Telecom, Inc. v. Datapoint Corp.,
The appellant refiners then moved the district court to overturn the jury's verdict with a motion for JMOL based on anticipation, obviousness, and lack of written description. After reviewing arguments of both parties and the record, the district court found that "substantial evidence exists in the record regarding the written description to support the verdict that Drs. Jessup and Croudace had possession of the claimed subject matter." Unocal I, slip op. at 6. The district court similarly considered and rejected appellant refiners' arguments on anticipation and obviousness. See id. at 3-5.
The appellant refiners also argued that the '393 patent was unenforceable for inequitable conduct. The district court tried that issue itself and held that the refiners did not meet their burden of showing inequitable conduct by clear and convincing evidence. See Unocal II,
The appellant refiners now appeal the district court's denial of JMOL on anticipation and written description. They also appeal the district court's inequitable conduct decision.
II.
This court reviews the district court's JMOL ruling after a jury verdict by reapplying the district court's own standard. See Applied Med. Resources Corp. v. United States Surgical Corp.,
A district court may overturn a jury's vеrdict on a motion for JMOL only if, upon the record before the jury, reasonable persons could not reach the verdict returned by that jury. See Perkin-Elmer Corp. v. Computervision Corp.,
A.
This court requires that a party seeking to invalidate a patent under § 102 show that the allegedly invalidating prior art contains "each and every element of [the] claimed invention." Lewmar Marine, Inc. v. Barient, Inc.,
This court reviews a finding of anticipation as a question of fact. See In re Graves,
"The first step in any invalidity . . . analysis is claim construction." See Rockwell Int'l Corp. v. United States,
The claims of the '393 patent recite either "[a]n unleaded gasoline suitable for combustion in an automotive engine" or "[a]n unleaded gasoline fuel suitable for combustion in a spark ignition automotive engine." Thus, the '393 patent claims compositions of mattеr. The scope of these composition claims cannot, as the appellant refiners argue, embrace only certain uses of that composition. See In re Spada,
The district court read each claim in light of the specification, and concluded that the claims cover "fuels that will regularly be used in autos, not that conceivably could be." Union Oil Co. of Cal. v. Atlantic Richfield Co., No. CV-95-2379-KMW, slip op. at 7 (C.D. Cal. May 19, 1997) (Unocal III). The district court thus construed the claims to cover only a narrow class of fuel compositions, namely only standard automotive gasoline. The district court correctly excluded from claim scope a broader class of petroleum formulations such as aviation fuels or racing fuels. The claim language confirms the district court's reading of the claims to cover mass market automotive gasoline. The claim language specifies fuels for an "automotive engine," not an aviation engine. See, e.g., '393 patent, col. 18, l. 65. Moreover the explicit reference to "unleaded gasoline" again invokes standard automotive fuels, rather than specialized fuels. See, e.g., id. at col. 18, l. 64.
The district court's interpretation also finds extensive support in the specification. The patentees described the problem that their invention addressed:
One of the major environmental problems confronting the United States and other countries is atmospheric pollution (i.e., "smog") caused by the emission of gaseous pollutants in the exhaust gases from automobiles. This problem is especially acute in major metropolitan areas, such as Los Angeles, Calif., where the atmospheric conditions and the great number of automobiles account for aggravated air pollution.
Id. at col. 1, ll. 9-16. Similarly, the patentees describe their testing procedures and results in the specification. Specifically, the patentees used ordinary passenger аutomobiles in their tests. The '393 patent records the results of testing certain fuels in a 1989 Oldsmobile Calais, a 1988 Oldsmobile 98, a 1985 Ford Tempo, a 1990 Lincoln, a 1984 Chevrolet Caprice, a 1988 Honda Accord, a 1989 Ford Taurus, a 1990 Plymouth Shadow, a 1985 Chevrolet Suburban, and a 1990 Toyota Camry. See id. at fig. 9. None of these are aviation or racing vehicles.
Similarly, another passage provides context for the trial court's claim construction. The patentees describe their choice of test vehicles as follows:
A total of 22 different unleaded gasoline fuels was tested in a 1988 Oldsmobile Regency 98 automobile equipped with a 3800 cc V-6 engine. This automobile was selected because it represented a high sales volume product with close to the current state-of-the-art emission technology.
Id. at col. 7, ll. 61-6. The patentees tailored their research and their patent to ordinary fuels for use in standard passenger cars. Thus, the claim language, further informed by the specification, shows that the district court correctly read the claims to cover ordinary automotive fuel.
Beсause the '393 patent covers only standard automotive fuel, the district court correctly determined that specialty fuels within other limitations of the claims do not anticipate under 35 U.S.C. § 102. In other words, the aviation and racing fuels that allegedly invalidate the '393 claims do not anticipate because they do not contain each and every limitation of the claims. See Verdegaal,
Moreover, the record does not show that the aviation and racing fuels otherwise have the claimed characteristics of the particular standard automotive fuels recited in the '393 patent. While the record shows that some properties of the aviation and racing fuels coincide with the properties of the '393 patent's claims, the record does not show the presence of each and every limitation. An expert for the refiner appellants stated that the allegedly anticipatory Phillips B-35 racing fuel "is very different from tyрical [automotive fuel]." Tr. at 4782. When asked, "Is Unocal unleaded racing gasoline very different from typical motor gasoline?", the expert again answered "Yes." Id. at 5047. This expert similarly answered "yes" when questioned about whether the asserted aviation fuels were "very different" from typical motor gasoline. See id. at 5060.
The district court did not err in construing the claims of the '393 patent. Furthermore the record does not show each and every element of the asserted claims of the '393 patent present in any single prior art reference. Therefore, this court affirms the district court's denial of JMOL on anticipation.
B.
The first paragraph of § 112 states that: "The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same." 35 U.S.C. § 112. In written description cases, "[t]he primary consideration is factual and depends on the nature of the invention and thе amount of knowledge imparted to those skilled in the art by the disclosure." In re Wertheim,
The written description requirement does not require the applicant "to describe exactly the subject matter claimed, [instead] the description must clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed." In re Gosteli,
In the course of the lengthy jury trial, the district court heeded this court's counsel to use special verdicts in complex cases. See Comark Communications, Inc. v. Harris Corp.,
After the jury's verdict, the appellant refiners renewed their motion for JMOL to overturn the jury's verdict. See Fed. R. Civ. P. 50(b). The district judge then reconsidered the patent documents independently in light of all the evidence and denied the JMOL motion, thus upholding the jury's verdicts. Like the district court, this court must accord deference to the jury findings on written description. This court will not substitute its judgment for that of the fact finder. See General Electro Music Corp. v. Samick Music Corp.,
On the record in this appeal, substantial evidence amply supports the jury's findings and the trial judge's JMOL ruling. The '393 patent teaches the effects of varying the properties of automotive gasolines to reduce harmful tailpipe emissions. In the art of gasoline production, skilled refiners obtain raw petroleum products and mix them together to achieve a desired product. Each product is the mixture of many chemicals in varying proportions. The '393 patent teaches that changes in the proportions of different hydrocarbon-containing streams mixed to produce gasoline with specific properties reduces the amount of NOx, CO, and hydrocarbons emitted from an automobile engine. Varying one or more properties in turn affects other properties of a gasoline product. Therefore, the patent claims its inventive products in terms of ranges of chemical properties, which work in combination with ranges of other chemical properties to produce a gasoline that reduces emissions.
Appellant refiners assert that the specification does not describe the exact chemical component of each combination that falls within the range claims of the '393 patent. However, neither the Patent Act nor the case law of this court requires such detailed disclosure. See In re Hayes Microcomputer Prods., Inc.,
Drs. Jessup and Croudace described their invention in terms of ranges. That form of description does not offend § 112, ¶ 1. In fact, this invention lends itself to description in terms of ranges and variance of those ranges to achieve particular properties of the gasoline products. The inquiry for adequate written description simply does not depend on a particular claim format, but rather on whether the patent's description would show those of ordinary skill in the petroleum refining art that the inventors possessed the claimed invention at the time of filing.
In this case, the patent teaches one of ordinary skill that reducing T50 progressively reduces CO and hydrocarbons; reducing olefins progressively reduces NOx and hydrocarbons; increasing paraffins progressively reduces CO and NOx; and so forth with several other relationships. Then the patent claims ranges for these properties that provide cleaner gasoline emissions. The Background and Abstract portions of the specification discuss thoroughly the claimed ranges and the combinations of multiple properties.
For example, the written description supporting a single claim - claim 117 -- follows:
Claim limitation Support in '393 patent T50 at £ 200 Col. 14, ll. 9-15: "no greater than 210 F.,. . . but preferably . . . less than 200 F. . . ." RVP at £ 7.0 psi Col. 14, ll. 36-40: "Reid Vapor Pressure specification of 8.0 psi . . . even more preferably no greater than 7.0 psi . . . " Olefin at 4.0 volume percent Col. 14, ll. 23-30: "varying the olefin content, this value is generally maintained less than 15 volume percent, with decreasing values providing progressively improved results. Thus, it is contemplated that each unit reduction, e.g., to values below . . . 4 . . . providing progressively better results. . . ." Paraffin at 85 volume percent Col. 14, ll. 49-64: "progressively increasing the paraffin content progressively decreases the CO emitted. Accordingly . . . the paraffin content would be increased to . . . and most preferably of all above 85 volume pеrcent. . . ." T90 at £ 300 laimed exactly in original claim 294 T10 at £ 158 Col. 5, lls. 6-30: Table 1 shows maximum T10 distillation temperatures for all five volatility classes at 158 or below.
(Emphasis added.)
The specification further guides the skilled artisan in combining the above properties: "It will also follow that one can increase or decrease any combination of the eight properties listed above, i.e., at least two, at least three, at least four, etc., of the properties can be increased or decreased in the direction indicated above, as well as all eight." '393 patent, col. 15, ll. 20-25. The record of the trial contains testimony and exhibits showing in similar terms the written description and support for each of the forty-one claims.
To reiterate, this court supplies the written description supporting another claim, claim 125, as follows:
Claim limitation Support in '393 patent T50 at £ 205 Col. 2, ll. 17-18: "Preferred fuels have a 50% D-86 Distillation Point of 205 F. (96.1 C) or less." RVP at £ 7.0 psi Col. 14, ll. 36-40: "Reid Vapor Pressure specification of 8.0 psi . . . even more preferably no greater than 7.0 psi . . . " Olefin at 6.0 volume percent Col. 14, ll. 23-30: "varying the olefin content, this value is generally maintained less than 15 volume percent, with decreasing values providing progressively improved results. Thus, it is contemplated that each unit reduction, e.g., to values below . . . 6 . . . providing progressively better results. . . ." Paraffin at 75 volume percent Col. 14, ll. 49-59: "progressively increasing the paraffin content progressively decreases the CO emitted. Accordingly . . . the paraffin content would be increased to . . . [and] even more preferably above 75 volume percent. . . ."
(Emphasis added.)
Beyond this evidence from the patent itself, skilled refiners testified that the specification taught them that the inventor possessed the emission-reducing gasolines at the time of filing. For example, when questioned, Richard Stellman, an expert in the field, stated:
Q: Does the patent teach one of ordinary skill in the art such as yourself to alter two or more of the properties in a particular - in the prescribed fashion in order to affect all three of the criteria pollutants?
A: Yes, it does.
Q: And does the patent set forth values from which one of ordinary skill in the art can practice the invention?
A: Yes, it does.
Tr. at 2515.
The patent unmistakably informs skilled refiners to increase or decrease the various components to arrive at preferred combinations. In fact, the written description usually labels both preferred and most preferred levels within each range. Skilled refiners testified that they knew the composition of the claimed combinations based on this written description. Contrary to appellant refiners' arguments to this court, the record shows that refiners of ordinary skill understood and applied the '393 patent's teachings. In sum, the record shows that the inventors possessed the claimed invention at the time of filing in the assessment of those of ordinary skill in the petroleum refining art.5 Moreover, the jury in this case reached the same conclusion as a matter of fact - a proposition that this court cannot disturb on this record which supplies substantial evidence to support that finding.
The appellant refiners attempt to rescue their written description argument by focusing on the T90 levels cited in claims 74, 81, 116, 117, and 127. Appellant refiners allege that the "specification provides nо specific T90 values . . . [and that a]lthough five of the original application claims recited combinations including a T90 limitation, they bear no resemblance to the remaining claims with T90 limitations." Appellants' Br. at 46. Appellant refiners misapprehend the teachings of T90 levels. The '393 patent teaches that lowering the T90 distillation point below prior art standards for automotive gasolines creates the desired effect. See '393 patent, col. 2, l. 1. The standards set forth in Table 1 of the '393 patent describe the ASTM standards for gasolines that have T90 distillation points between 365 and 374 F. The T90 distillation points in the originally filed claims were less than or equal to either 315 or 300 F, thus substantially lower than in the prior art gasolines. The claimed ranges of the originally filed claims are the same as those set forth in the six claims of the issued '393 patent that contain T90 limitations. In other words, the disclosure at the time of filing taught one of skill in the art that the inventors possessed the subject matter of the later claims. Even if appellant refiners' argument were correct, that analysis only addresses the validity of five clаims, leaving the remaining thirty-six claims.
Appellant refiners argue that In re Ruschig,
Second, as this court's predecessor explained in distinguishing Ruschig in another case involving ranges:
If lack of literal support alone were enough to support a rejection under § 112, then the statement of In re Lukach . . . that "the invention claimed does not have to be described in ipsis verbis in order to satisfy the description requirement of § 112," is empty verbiage.
Wertheim,
Our predecessor court in Ruschig expressed concern over the extent to which the patentee relied on variables in describing structures, leading that court to explain that rather than blaze marks on trees, the patentee had simply provided the public with a forest of trees. Artisans skilled in petroleum refining, in contrast, are aware of the properties of raw petroleum sources and know how to mix streams of such sources to achieve a final product with desired characteristics. Thus the patentee in this case taught the desired сharacteristics of the final automotive fuels, realizing that those of skill in this art know that those characteristics define the claimed products.
A closer case for assessing the facts of written description in these forty-one verdicts - one which dealt with ranges and combinations - is Ralston Purina Co. v. Far-Mar-Co, Inc.,
The written description requirement does not require identical descriptions of claimed compounds, but it requires enough disclosure in the patent to show one of skill in this art that the inventor "invented what is claimed." Vas-Cath,
III.
Applicants for U.S. patents and their representatives before the PTO are subject to a duty of candor, good faith and honesty in their prosecution of patent applications. See 37 C.F.R. § 1.56 (1999). "A breach of this duty constitutes inequitable conduct." Molins PLC v. Textron, Inc.,
In this case, the district court issued a thorough and well reasoned opinion that shows consideration of the fundamental issues of inequitable conduct. Specifically, the district court noted that the allegedly withheld test data would not have been material to the patentability of the claims. See Molins,
IV.
Because the record contains substantial evidence to support the jury's verdicts of no anticipation and sufficient written description, this court affirms the district court's denial of JMOL. Similarly, this court affirms the district court's inequitable conduct determination.
COSTS
Each party shall bear its own costs.
AFFIRMED
NOTES:
Notes
Because the appellant refiners did not question the district court's willfulness determination in their appeal, this court does not address that issue.
Because the claims are written in multiple dependent form, the claim elements that are incorporated from other claims have been paraphrased in brackets.
Although the '393 patent teaches increasing the aromatic content of automotive gasoline to reduce tailpipe emissions, the claims do not mention aromatic content.
One of this court's predecessor courts clarified that disclosure in an originally filed claim satisfies the written description requirement. See In re Gardner,
The dissent contends that the specification does not show that the inventors possessed the amended claims at the time of filing. In its arguments, the dissent discounts the skill in this art, which, the jury found, knows the composition of gasolines from the specification's description of characteristics. Further, the dissent discounts the jury's role in finding, as a matter of fact, that the inventor satisfied the written description requirement, preferring instead its own "findings" about the knowledge of skilled artisans and about the sufficiency of the disclosures.
LOURIE, Circuit Judge, dissenting in part.
Because the jury's verdict that the claims are not invalid for lack of written description is not supported by substantial evidence, I would reverse the district court's deniаl of the motion for JMOL, hold the relevant claims to be invalid, and vacate the damages and attorney fees awarded to Unocal. Because the district court did not abuse its discretion in concluding that Unocal did not engage in inequitable conduct, I would affirm that decision. I would not reach the anticipation issue.
Unocal's '393 patent is directed to specific gasoline compositions, albeit compositions defined by ranges of properties. No matter how an invention is claimed, it must be described in the specification. The claimed compositions were not so described. The majority supports its affirmance of the denial of the JMOL using enablement reasoning. It points to the numerous references in the specification to teachings of the various ways one may obtain particular combinations of properties for the fuels. These are general descriptions of how to make fuel compositions, not descriptions of the claimed compositions. They may also constitute descriptions of processes for obtaining various characteristics of fuel compositions, but it is specific compositions that are claimed here, not processes. There are written descriptions of other particular compositions in the specification, but they are not written descriptions of the inventions claimed here. It is in fact undisputed that the specification discloses no distinct embodiments corresponding to any claim at issue.
The majority supports its decision in part with two charts purporting to show detailed support in the specification for claims 117 and 125. However, the description that the majority provides, with commendable thoroughness, shows the weakness of its conclusion. The claimed compositions do not appear in the specification as such. The charts were synthesized by pulling together various directions in the specification in order to constitute the claimed compositions. Note the references to different parts of the specification for the various components. The patent does not contain such completе descriptions of those compositions; they were presumably prepared after the grant of the patent for purposes of litigation by Unocal. Erroneously, they were accepted by the jury, the trial judge, and the appellate majority.
Unocal's original application contained 82 claims. During the course of prosecution, 161 claims were added and 47 canceled. Ultimately, 196 claims issued, but Unocal later disclaimed all but the 41 at issue in this case. None of these claims were in the original application; all were added by amendment.
The written description requirement ensures that, at the time a patent application is filed, the inventor has possession of the invention claimed. See Vas-Cath v. Mahurkar,
It is true that a patent need not describe the claimed subject matter in precisely the same terms as used in the claims, see Vas-Cath,
It is clear beyond peradventure that there is no written description of any of the claimed compositions as such. There surely is a description of most of the particular claim limitations of the various claims, but that is not the same as a description of a specific composition described by a particular selection of those characteristics. If the written description does not use precisely the same terms used in a claim, the question then is whether the sрecification directs or guides one skilled in the art to the subject matter claimed. See, e.g., Fujikawa v. Wattanasin,
Each of the claims at issue here recites a fuel having a specific combination of different fuel characteristics. Although the specification separately describes most of the individual characteristics of the combinations, it is undisputed that none of the claims at issue is matched in the specification by the combination of characteristics required by that claim. A reasonable juror could not find that the application shows possession of those combinations of characteristics by blazing a clear trail to them.
Unocal points to descriptions of individual fuel characteristics at column 14 of the specification, as well as to the prosecution history. However, column 14 simply outlines the range of variation of T10 and T50, olefin content, and RVP in order to obtain emission reductions. This is an enablement disclosure, not a description of particularly claimed compositions. Describing these individual fuel characteristics in broad terms is not the same as describing an invention reciting specific combinations of fuel characteristics. The question is not whether each of the claim limitations finds support in the spеcification but whether the inventions claimed, fuels having specific combinations of characteristics, finds such support. The simple direction to adjust more than one fuel characteristic at a time does not direct one to, and thus does not show possession of, any of the claimed combinations of fuel characteristics. One must pick and choose among eight different types of fuel characteristics, broadly described, in order to arrive at any of the claimed combinations.
For example, as indicated earlier, to arrive at one of the combinations described in claim 117, Unocal had to pick through the specification to find the claimed limitations. Four of the limitations--the T50, RVP, olefin, and paraffin limitations--fell within ranges broadly described, but there is no direction to a composition having all of these limitations in the particular ranges claimed. Furthermore, no specific T90 ranges are described anywhere in the specification except in Table 1, which recites only certain general ASTM standards. Unocal had to point to an original, canceled claim to support the T90 value chosen, but that characteristic was part of a composition no longer claimed and no longer part of the specification. Lastly, the specification repeatedly describes fuels with a T10 less than 140 F, but the claim recites a fuel with a maximum T10 of 158 F. The specification's only recitation of a fuel with a T10 of 158 F is one of the ASTM standards in Table 1, not a part of a described embodiment of the invention. By picking and choosing, one can thus find all of the limitations, but the specification gives no direction, let alone the "full, clear, concise, and exact" direction required, to the claimed combination. The same picking and choosing is required to arrive at all of the claims asserted. When one has to pick and choose among a wide range of variables to construct a claim, the subject matter of that claim has not been described as required by the statute; possession has not been demonstrated.
Unocal makes numerous references to what the specification teaches. It does so by referring to general descriptions of the possible variables. The specification does in fact contain a written description of methods for lowering auto emissions. It also teaches how to make various types of compositions and methods, but does not contain a written description of the specifically claimed compositions. It is well settled that the enablement requirement is separate and distinct from the written description requirement of § 112, ¶ 1, see Vas-Cath,
Unocal's reference to the broad ranges of the characteristics of the various gasolines also may be an adequate written description of a generic group of gasolines defined broadly by those characteristics. However, such a generic claim is not before us. We only have claims defining compositions by a specific set of claim limitations, none of which compositions finds a specific description in the patent specification. In Ruschig, the Court of Customs and Patent Appeals held that a general formula containing variables that each include a number of possible groups does not describe each composition within its scope. The court stated that "[s]pecific claims to single compounds require reasonably specific supporting disclosure . . . ." Ruschig,
Attempting to distinguish Ruschig, the majority asserts that this is a Ralston Purina case, but the Ralston Purina opinion itself states that written description cases must be decided on a case-by-case basis. See Ralston Purina Co. v. Far-Mar-Co, Inc.,
I recognize that this is a jury trial and that the written description requirement is a question of fаct concerning which we owe considerable deference. However, jury verdicts are not irreversible if substantial evidence is lacking. Substantial evidence is that minimum quantum of evidence from which a reasonable jury might afford relief. See Anderson v. Liberty Lobby, Inc.,
This is a highly complicated case, involving a patent that is difficult to fathom. One needs to analyze these claims the way one plans a trip, with a road map, in detail, on paper. Multiple claim dependencies and multiple claim limitations make the task difficult. The complexity of the case is further increased by the way in which the рatent application was prosecuted, with wholesale cancellation and addition of claims seemingly irrespective of whether their subject matter was properly disclosed. It is easy to see how one could go astray.
A reasonable juror is one who has done his or her homework, as described above, in order to determine what each claim covers, and where in the specification there is support for such claims. The result here speaks for itself. When such analysis is performed here, it is plain that the claimed compositions are not described in the patent. No reasonable jury, carefully reading and examining the patent specification, could conclude otherwise, i.e., that the patent specification's descriptions of individual fuel characteristics or the teachings that multiple fuel characteristics can be varied in particular ways constitutes a sufficient written description of the compositions of any of the claims. I therefore respectfully dissent from the conclusion of the majority that the claims have not been shown to be invalid.