Saturday, April 30, 2011

Eastman Chemical win on "best mode" affirmed by CAFC

The CAFC decision was a mixed bag as to the Wellman patents:

Because the specifica-
tions of the Wellman patents do not set forth the best
mode of carrying out the invention contemplated by at
least one of the inventors, this court affirms the district
court’s judgment with respect to best mode. Because a
person of ordinary skill could understand the bounds of
the patent claims, however, this court reverses the district
court’s judgment with respect to indefiniteness.

The technology relates to polyethylene terephtha-
late (“PET”) resins for use in plastic beverage containers.

The problem related to lack of disclosure:

By the time Wellman filed the application leading to
the ’317 patent in May 2004, it had commercialized a
slow-crystallizing, hot-fill PET resin called Ti818. (...)
Wellman did not disclose the recipe for Ti818 in its pat-
ents. Nor did Wellman disclose any other specific PET
resin recipes. Instead, Wellman provided ranges of con-
centrations for categorized lists of possible ingredients.

At district court:

On August 14, 2009, Eastman moved for summary
judgment of invalidity on the grounds of indefiniteness
and failure to set forth the best mode of practicing the
claimed invention. The district court granted-in-part
Eastman’s best mode summary judgment motion, holding
invalid all of the asserted claims except dependent claims
5, 17, and 94 of the ’317 patent and claims 6 and 9 of the
’863 patent—the five claims that Wellman contends do
not encompass Ti818. Wellman, Inc. v. Eastman Chem.
Co., 689 F. Supp. 2d 705, 712, 716 (D. Del. 2010).


The district court found that at least inventor Dr.
Nichols viewed Ti818 as the best mode of practicing the
invention at the time of filing.


The district court ac-
knowledged that the disclosure of ranges of ingredients
encompassing the best mode can satisfy the best mode
requirement, but found that the patents disguise Ti818 by
disclosing “preferred” ranges for certain ingredients that
do not encompass the actual concentrations of those
ingredients in the Ti818 formula.

Of the legal background on best mode:

The best mode inquiry pro-
ceeds on a claim by claim basis. Pfizer, Inc. v. Teva
Pharms. USA, Inc., 518 F.3d 1353, 1365 (Fed. Cir. 2008).
“Best mode issues can arise if any inventor fails to dis-
close the best mode known to him or her” as of the date
the application for patent is filed. Pannu v. Iolab Corp.,
155 F.3d 1344, 1351 n.5 (Fed. Cir. 1998). “The best mode
requirement creates a statutory bargained-for-exchange
by which a patentee obtains the right to exclude others
from practicing the claimed invention for a certain time
period, and the public receives knowledge of the preferred
embodiments for practicing the claimed invention.” Eli
Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 963 (Fed.
Cir. 2001). “A violation of the best mode requirement
must be proved by clear and convincing evidence.” All-
Voice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d
1236, 1240 (Fed. Cir. 2007).

The best mode requirement has two parts. Green
Edge Enters., LLC v. Rubber Mulch Etc., LLC, 620 F.3d
1287, 1296 (Fed. Cir. 2010). First, the court must deter-
mine whether, at the time of patent filing, the inventor
possessed a best mode of practicing the claimed invention.
Id. (citing U.S. Gypsum Co. v. Nat’l Gypsum Co., 74 F.3d
1209, 1212 (Fed. Cir. 1996)). This first prong is subjec-
tive, focusing on the inventor’s personal preferences as of
the application’s filing date. N. Telecom Ltd. v. Samsung
Elecs. Co., 215 F.3d 1281, 1286 (Fed. Cir. 2000). Second,
if the inventor has a subjective preference for one mode
over all others, the court must then determine whether
the inventor “concealed” the preferred mode from the
public. Green Edge, 620 F.3d at 1296 (quoting Chemcast
Corp. v. Arco Indus. Corp., 913 F.2d 923, 928 (Fed. Cir.
1990)). The second prong inquires into the inventor’s
disclosure of the best mode and the adequacy of that
disclosure to enable one of ordinary skill in the art to
practice that part of the invention. Id. This second
inquiry is objective, depending on the scope of the claimed
invention and the level of skill in the relevant art. Id.

Of claim construction:

At the outset, this court notes that the district court
did not construe the claims before engaging in the best
mode inquiry. This court has explained that “[t]he best
mode inquiry is directed to what the applicant regards as
the invention, which in turn is measured by the claims.”
Engel Indus., Inc. v. Lockformer Co., 946 F.2d 1528, 1531
(Fed. Cir. 1991). Because “[s]ubject matter outside the
scope of the claims falls outside of the best mode require-
ment,” a “threshold step in a best mode inquiry is to
define the invention by construing the claims.” Ajinomoto
Co., Inc. v. Int’l Trade Comm’n, 597 F.3d 1267, 1272-73
(Fed. Cir. 2010).
While the best mode inquiry typically requires a claim
construction, claim terms need only be construed “to the
extent necessary to resolve the controversy.” Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999). In this case, the parties dispute only
whether claims 5, 17, and 94 of the ’317 patent and claims
6 and 9 of the ’863 patent encompass Ti818—the parties
agree that the remaining asserted claims encompass
Ti818. Because the district court limited its best mode
holding to the uncontroverted claims, Wellman, 689 F.
Supp. 2d at 713, the district court had no need to construe
the disputed terms.

Best mode at the time of filing:

Although the record shows that Dr. Nichols preferred
the 2003 recipe of Ti818, the district court found that Dr.
Nichols believed that the 2004 recipe of Ti818 was the
best mode of practicing the invention. Wellman, 689 F.
Supp. 2d at 713. This harmless misstatement does not
rescue the relevant claims from a best mode violation.
Rather than a nullifying conflict, this only shows that Dr.
Nichols had an obligation to disclose the recipe he be-
lieved to be the best mode at the time of patent filing—the
2003 recipe. The applicant did not do so. See Dana Corp.
v. IPC Ltd. P’ship, 860 F.2d 415, 418 (Fed. Cir. 1988)
(requiring disclosure of the best mode contemplated by the inventor at the time of filing).

Inventor testimony sank Wellman:

On summary judgment, this court must resolve fac-
tual inferences in favor of the non-movant. Anderson, 477
U.S. at 255. In this context, an evolving recipe potentially
means that the inventors had no best mode of practicing
the invention. See Bruning v. Hirose, 161 F.3d 681, 687
(Fed. Cir. 1998) (finding inventor had no best mode be-
cause of concern about certain characteristics of his
invention). However, even when viewed in the light most
favorable to Wellman, this evidence cannot overcome the
testimony of the inventors, including Dr. Nichols’ testi-
mony regarding his subjective belief that the 2003 recipe
of Ti818 was the best method of practicing the invention
at the time of filing. Put simply, at the time of filing, an
inventor belibest mode.

Trade secrets and patents don't mix:

Wellman did not disclose carbon black N990 in its
patent applications. Instead, Wellman chose to protect
this ingredient of Ti818 as a trade secret. Thompson
testified that his boss, James Bruening, instructed him to
maintain carbon black N990 as a trade secret


Bruening acknowledged that he
instructed his department to maintain N990 as a trade
secret. Wellman continued to protect the use of N990 in
its PET resin products as a trade secret from its discovery
in 2002 through February of 2010. Indeed, Wellman
requested that the district court seal the courtroom dur-
ing the arguments on summary judgment expressly to
maintain the confidentiality of N990.

Wellman ran into problems fighting the carbon black


Third Circuit law holds that in chal-
lenging a summary judgment order on appeal, a party
cannot “advance new theories or raise new issues in order
to secure a reversal of the lower court’s determination.”
Union Pac. R.R. Co. v. Greentree Transp. Trucking Co.,
293 F.3d 120, 126 (3d Cir. 2002). Wellman has therefore
forfeited its right to argue the significance of these ab- sorption ratios on appeal.

Substantively, no comparison was made:

The disclosure added to the nonprovi-
sional application does not suggest a new-found prefer-
ence for spinels relative to carbon black N990, because the
additional disclosure does not compare PET recipes
containing spinels to those containing carbon black N990.
Instead, it compares PET resins containing spinels to
those without a HUR additive. ’317 patent col.16 ll.4-9;
’863 patent col.17 ll.35-40. Moreover, while Dr. Moore’s
belatedly filed declaration states that he believes spinels
would produce “better color characteristics” than PET
using thermal carbon black, he testified that as of filing
date of the ’317 patent, he preferred using carbon black as
the best way of making PET to achieve the claimed TCH, absorbance, and luminosity values.

Wellman's patent attorney showed up:

Wellman’s patent attorney testified that Wellman
would have revised its commercial PET resins to include
spinels instead of carbon black N990, but for concerns
over a third-party patent. A party’s failure to disclose its
commercial mode does not ipso facto result in a § 112
violation because the focus of a best mode inquiry remains
on the claimed invention rather than the marketed prod-
uct. Zygo Corp. v. Wyko Corp., 79 F.3d 1563, 1567 (Fed.
Cir. 1996). In this case, however, Wellman concedes that
its commercial Ti818 PET resin is within the scope of the
claims invalidated by the district court.

Wellman's problem:

The Wellman patents do not expressly disclose the
Ti818 recipe, but instead describe many possible ingredi-
ents with varied ranges of concentrations. While an
inventor may represent his contemplated best mode just
as well by a preferred range of conditions as by a working
example, In re Honn, 364 F.2d 454, 462 (CCPA 1966),
some of the ingredients for Ti818, namely isophthalic acid
and diethylene glycol, fall outside of the disclosed pre-
ferred ranges and therefore lead away from the Ti818

The bottom line:

Moreover, “[e]ven where
there is a general reference to practicing the claimed
invention, the quality of the disclosure may be so poor as
to effectively conceal it.” Transco Prods. Inc. v. Perform-
ance Contracting, Inc., 38 F.3d 551, 560 (Fed. Cir. 1994)
(citing Randomex Inc. v. Scopus Corp., 849 F.2d 585, 587
(Fed. Cir. 1988)). By masking what at least one inventor
considered the best of these slow-crystallizing resins,
Wellman effectively concealed its recipe for Ti818.
Wellman admittedly spent millions of dollars and thou-
sands of hours developing its claimed slow-crystallizing
PET resins. Dr. Nichols declared that the inventors
“unlocked in our research . . . the secret to making an
effective slow-crystallizing bottle resin by understanding
the proper balance of the parameters of catalyst concen-
tration, comonomer concentration, intrinsic viscosity, and
heat-up-rate [HUR] additive in order to make high clarity
bottles.” J.A. 5117. Wellman had an obligation to ade-
quately disclose the best mode of practicing this “unlocked
secret” under the best mode requirement, yet did not do
The record also shows that Wellman intentionally
concealed the best mode. “Invalidation based on a best
mode violation requires that the inventor knew of and
intentionally concealed a better mode than was disclosed.”
High Concrete Structures, Inc. v. New Enter. Stone &
Lime Co., 377 F.3d 1379, 1384 (Fed. Cir. 2004). As shown
by the testimony of Thompson and Bruening, Wellman
intended to conceal carbon black N990, an ingredient in
Ti818, by choosing to maintain it as a trade secret. As the
district court correctly stated, this choice “does not excuse
Wellman’s compliance with the best mode requirement.”
Wellman, 689 F. Supp. 2d. at 716. Accordingly, this court
affirms the invalidity of claims 1-4, 7, 8, 11-14, 16, 18-21,
24, 32, 33, 36, 38, 39, 44, 93, 96-102, and 104 of the ’317
patent and claims 1, 3-5, 8, 11, 15, 17, 24 and 62 of the
’863 patent for failure to comply with the best mode

Eastman Chemical did not win on 112 P 2:

Claims need not be plain on their face in order to
avoid condemnation for indefiniteness; rather, claims
must only be amenable to construction. Exxon Research
& Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed.
Cir. 2001). “[B]ecause claim construction frequently poses
difficult questions over which reasonable minds may
disagree, proof of indefiniteness must meet ‘an exacting
standard.’” Haemonetics Corp. v. Baxter Healthcare
Corp., 607 F.3d 776, 783 (Fed. Cir. 2010) (quoting Halli-
burton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008)).


Chef America Inc. v. Lamb Weston, Inc., 358 F.3d
1371, 1374 (Fed. Cir. 2004), among other cases, prohibits
courts from rewriting claims instead of interpreting the
claims as written. In Chef America, the court refused to
redraft the claims to replace the term “to” with the term
“at,” even though that refusal produced a nonsensical
result. Id. Unlike in Chef America, however, construing
the claim to require testing on an “amorphous PET mate-
rial” does not replace any claim term with a different
term, but instead interprets the claimed DSC measuring
technique in light of the specifications, which clearly,
repeatedly, and unambiguously state that such tests
should be performed on amorphous PET material.


this court reverses the district court’s summary judgment
that the asserted claims are indefinite under 35 U.S.C. §
112 ¶ 2 and remands for further proceedings in adance with this opinion.


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