Petition for Writ of Certiorari — GS Cleantech Corporation, et al., Petitioners v. Adkins Energy LLC, et al.

Supreme Court briefNov 27, 2020

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No.

In The

Supreme Court of the United States

GS CLEANTECH CORPORATION and GREENSHIFT CORPORATION,

Petitioners,

– v. –

ADKINS ENERGY LLC, BIG RIVER RESOURCES GALVA, LLC, BIG RIVER

RESOURCES WEST BURLINGTON, LLC, LINCOLNLAND AGRI-ENERGY,

LLC, IROQUOIS BIO-ENERGY COMPANY, LLC, CARDINAL ETHANOL,

LLC, LINCOLNWAY ENERGY, LLC, ICM, INC., BUSHMILLS ETHANOL,

INC., AL-CORN CLEAN FUEL. LLC FKA AL-CORN CLEAN FUEL, LLC,

CHIPPEWA VALLEY ETHANOL COMPANY, LLP, HEARTLAND CORN

PRODUCTS, GEA MECHANICAL EQUIPMENT US, INC., AS SUCCESSOR-ININTEREST TO GEA WESTFALIA SEPARATOR, INC. PURSUANT TO THE

NOTICE OF MERGER FILED ON 4/28/2011, ACE ETHANOL, LLC, BLUE

FLINT ETHANOL LLC, UNITED WISCONSIN GRAIN PRODUCERS, LLC,

FLOTTWEG SEPARATION TECHNOLOGIES, INC., ADKINS ENERGY LLC,

AEMETIS, INC., AEMETIS ADVANCED FUELS KEYES, INC., LITTLE SIOUX

CORN PROCESSORS, LLLP, GUARDIAN ENERGY, LLC, WESTERN NEW

YORK ENERGY, LLC, SOUTHWEST IOWA RENEWABLE ENERGY, LLC,

PACIFIC ETHANOL MAGIC VALLEY LLC, PACIFIC ETHANOL

STOCKTON, HOMELAND ENERGY SOLUTIONS, LLC, PACIFIC ETHANOL,

INC., and DAVID J. VANDER GRIEND,

-----------------------------

Respondents.

On Petition for a Writ of Certiorari to the United States Court of Appeals

for the Federal Circuit

--------------------------PETITION FOR A WRIT OF CERTIORARI

--------------------------LAWRENCE M. HADLEY (COUNSEL OF RECORD) (LHADLEY@GLASERWEIL.COM)

STEPHEN UNDERWOOD (SUNDERWOOD@GLASERWEIL.COM)

GLASER WEIL FINK HOWARD AVCHEN & SHAPIRO LLP

10250 Constellation Blvd., 19th Floor

Los Angeles, CA 90067

(310) 553-3000

November 25, 2020

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Counsel for Petitioners

QUESTION PRESENTED

Until the Federal Circuit’s decision in this patent case, every Circuit had held that an issue

resolved on partial summary judgment, and not reopened at trial, must be reviewed de novo. Here,

the district court resolved the issue of patent invalidity on partial summary judgment, and did not

reopen it at trial. Yet, the Federal Circuit expressly refused to review the issue de novo, and instead

reviewed it under the “abuse of discretion” standard governing review of the decision at trial.

The question presented is:

Whether the Federal Circuit, in cases arising under the Patent Act, may depart from the

uniform rule of the other Circuit Courts that an issue resolved on partial summary judgment, and

not reopened at trial, must be reviewed de novo on appeal.

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PARTIES TO THE PROCEEDING

The parties to the proceeding are listed in the caption.

RULE 29.6 STATEMENT

Viridis Asset Management, LLC owns more than 10% of GreenShift Corporation.

Greenshift Corporation owns 100% of GS CleanTech Corporation.

RELATED PROCEEDINGS

GS CleanTech Corp. v. Adkins Energy, LLC, Nos. 16-2231 and 17-1838, United States

Court of Appeals for the Federal Circuit. Judgment entered March 2, 2020.

GS CleanTech Corp. et al. v. Big River Resources Galva, LLC et al., No. 17-1832, United

States Court of Appeals for the Federal Circuit. Judgment entered March 2, 2020.

GS CleanTech Corp. v. Adkins Energy, LLC, No. 10-cv-04391, United States District Court

for the Northern District of Illinois. Judgment entered May 20, 2016.

In re: Method of Processing Ethanol Byproducts and Related Subsystems (‘858) Patent

Litigation, No. 10-ml-02181, United States District Court for the Southern District of

Indiana. Judgment entered Sept. 15, 2016.

GS CleanTech Corp. v. Cardinal Ethanol, LLC, No. 10-cv-00180, United States District

Court for the Southern District of Indiana. Judgment entered Sept. 15, 2016.

ICM, Inc. v. GS CleanTech Corp. et al., No. 10-cv-08000, United States District Court for

the Southern District of Indiana. Judgment entered Sept. 15, 2016.

GS CleanTech Corp. v. Amazing Energy Atlantic, LLC et al., No. 10-cv-08001, United

States District Court for the Southern District of Indiana. Judgment entered Sept. 15, 2016.

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GS CleanTech Corp. v. Blue Flint Ethanol, LLC, No. 10-cv-08002, United States District

Court for the Southern District of Indiana. Judgment entered Sept. 15, 2016.

GS CleanTech Corp. v. United Wisconsin Grain Prods., LLC, No. 10-cv-08003, United

States District Court for the Southern District of Indiana. Judgment entered Sept. 15, 2016.

10.

GS CleanTech Corp. v. Bushmills Ethanol, Inc., No. 10-cv-08004, United States District

Court for the Southern District of Indiana. Judgment entered Sept. 15, 2016.

11.

GS CleanTech Corp. v. Iroquois Bio-Energy Co., LLC, No. 10-cv-08005, United States

District Court for the Southern District of Indiana. Judgment entered Sept. 15, 2016.

12.

GEA Westfalia Separator, Inc. v. Greenshift Corp., No. 10-cv-08006, United States District

Court for the Southern District of Indiana. Judgment entered Sept. 15, 2016.

13.

GS CleanTech Corp. v. GEA Westfalia Separator, Inc. et al., No. 10-cv-08007, United

States District Court for the Southern District of Indiana. Judgment entered Sept. 15, 2016.

14.

GS CleanTech Corp. v. Center Ethanol, LLC et al., No. 10-cv-08008, United States District

Court for the Southern District of Indiana. Judgment entered Sept. 15, 2016.

15.

GS CleanTech Corp. v. Big River Resources Galva, LLC et al., No. 10-cv-08009, United

States District Court for the Southern District of Indiana. Judgment entered Sept. 15, 2016.

16.

GS CleanTech Corp. v. Flottweg Separation Tecs. Inc., et al., No. 10-cv-08010, United

States District Court for the Southern District of Indiana. Judgment entered Sept. 15, 2016.

17.

GS CleanTech Corp. v. Adkins Energy, LLC, No. 10-cv-08011, United States District Court

for the Southern District of Indiana. Judgment entered Sept. 18, 2015.

18.

GS CleanTech Corp. v. Guardian Energy, LLC, No. 13-cv-08013, United States District

Court for the Southern District of Indiana. Judgment entered Sept. 15, 2016.

19.

GS CleanTech Corp. v. Aemetis, Inc. et al., No. 13-cv-08014, United States District Court

iii

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for the Southern District of Indiana. Judgment entered Sept. 15, 2016.

20.

GS CleanTech Corp. v. Western New York Energy, LLC, No. 13-cv-08015, United States

District Court for the Southern District of Indiana. Judgment entered Sept. 15, 2016.

21.

GS CleanTech Corp. v. Southwest Iowa Renewable Energy, LLC, 13-cv-08016, United

States District Court for the Southern District of Indiana. Judgment entered Sept. 15, 2016.

22.

GS CleanTech Corp. v. Homeland Energy Solutions, LLC, No. 13-cv-08017, United States

District Court for the Southern District of Indiana. Judgment entered Sept. 15, 2016.

23.

GS CleanTech Corp. v. Pacific Ethanol, Inc., No. 13-cv-08018, United States District

Court for the Southern District of Indiana. Judgment entered Sept. 15, 2016.

24.

GS CleanTech Corp. v. Pacific Ethanol Stockton, LLC, No. 14-cv-08019, United States

District Court for the Southern District of Indiana. Judgment entered Sept. 15, 2016.

25.

GS CleanTech Corp. v. Pacific Ethanol Magic Valley, LLC et al., 14-cv-08020, United

States District Court for the Southern District of Indiana. Judgment entered Sept. 15, 2016.

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TABLE OF CONTENTS

QUESTION PRESENTED .............................................................................................................. i

PARTIES TO THE PROCEEDING ............................................................................................... ii

RULE 29.6 STATEMENT ............................................................................................................. ii

RELATED PROCEEDINGS .......................................................................................................... ii

TABLE OF CONTENTS .................................................................................................................v

TABLE OF APPENDICES ........................................................................................................... vi

TABLE OF AUTHORITIES ........................................................................................................ vii

PETITION FOR A WRIT OF CERTIORARI.................................................................................1

OPINIONS BELOW ......................................................................................................................1

JURISDICTION ..............................................................................................................................2

STATUTORY PROVISIONS INVOLVED....................................................................................2

STATEMENT OF THE CASE........................................................................................................2

Jurisdiction Below ...................................................................................................5

Factual Background .................................................................................................5

Proceedings Below...................................................................................................7

Discovery of the Proposal; First and Second Cantrell

Declarations .................................................................................................7

The Summary Judgment of Invalidity Due to an On-Sale Bar ..................11

The Bench Trial on Inequitable Conduct ...................................................12

The Federal Circuit Appeal ........................................................................17

ARGUMENT ................................................................................................................................22

This Court Should Grant Certiorari to Reaffirm that Issues Decided on

Partial Summary Judgment Must Be Reviewed De Novo, Based on the

Record As It Existed at the Time of Summary Judgment .....................................24

This Court Should Grant Certiorari to Reaffirm that Issues Resolved on

Partial Summary Judgment Are Conclusively Established, Unless the

District Court Expressly Reopens Them................................................................27

This Court Should Grant Certiorari to Confirm that “Predicate” Issues

Must Be Reviewed First, Under the Appropriate Legal Standard .........................33

CONCLUSION ..............................................................................................................................39

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TABLE OF APPENDICES

APPENDIX A – OPINION OF THE UNITED STATES COURT OF APPEALS FOR

THE FEDERAL CIRCUIT, FILED MARCH 2, 2020

APPENDIX B – CORRECTED MEMORANDUM OPINION & ORDER OF THE

UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT

OF INDIANA, INDIANAPOLIS DIVISION, FILED SEPTEMBER 15, 2016

APPENDIX C – REDACTED ORDER OF THE UNITED STATES DISTRICT

COURT FOR THE SOUTHERN DISTRICT OF INDIANA, INDIANAPOLIS

DIVISION, FILED NOVEMBER 13, 2014

APPENDIX D – DENIAL OF REHEARING OF THE UNITED STATES COURT OF

APPEALS FOR THE FEDERAL CIRCUIT, FILED JUNE 30, 2020

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TABLE OF AUTHORITIES

Page(s)

Cases:

Alberty-Velez v. Corporacion De Puerto Rico Para La Difusion Publica,

242 F.3d 418 (1st Cir. 2001) ........................................................................................28, 29

Allen Eng’g Corp. v. Bartell Indus., Inc.,

299 F.3d 1336 (Fed. Cir. 2002)..........................................................................................11

Am. Council of the Blind v. Paulson,

525 F.3d 1256 (D.C. Cir. 2008) .........................................................................................24

Amdahl Corp. v. Profit Freight Sys., Inc.,

65 F.3d 144 (9th Cir. 1995) ...............................................................................................24

Amerinet, Inc. v. Xerox Corp.,

972 F.2d 1483 (8th Cir. 1992) ...........................................................................................25

Burns v. Exxon Corp.,

158 F.3d 336 (5th Cir. 1998) .............................................................................................24

Carlson v. Bos. Sci. Corp.,

856 F.3d 320 (4th Cir. 2017) .............................................................................................24

Chapman v. AI Transp.,

229 F.3d 1012 (11th Cir. 2000) .........................................................................................25

Ciarlante v. Brown & Williamson Tobacco Corp.,

143 F.3d 139 (3d Cir. 1998)...............................................................................................25

Clinton v. Jones,

520 U.S. 681 (1997) ...........................................................................................................37

Coach, Inc. v. Goodfellow,

717 F.3d 498 (6th Cir. 2013) .......................................................................................24, 25

Cross Med. Prod., Inc. v. Medtronic Sofamor Danek, Inc.,

424 F.3d 1293 (Fed. Cir. 2005)..........................................................................................38

Day v. Celadon Trucking Servs., Inc.,

827 F.3d 817 (8th Cir. 2016) .............................................................................................24

Dillon v. Cobra Power Corp.,

560 F.3d 591 (6th Cir. 2009) .............................................................................................28

vii

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eBay Inc. v. MercExchange, L.L.C.,

547 U.S. 388 (2006) ...........................................................................................................24

Evitts v. Lucey,

469 U.S. 387 (1985) .............................................................................................................4

Freeland v. Enodis Corp.,

540 F.3d 721 (7th Cir. 2008) .............................................................................................25

Friends for All Children, Inc. v. Lockheed Aircraft Corp.,

746 F.2d 816 (D.C. Cir. 1984) ...........................................................................................38

Glaros v. H.H. Robertson Co.,

797 F.2d 1564 (Fed. Cir. 1986)....................................................................................25, 28

GS CleanTech Corp. v. Adkins Energy, LLC,

CAFC Case No. 16-2231 .............................................................................................17, 18

GS CleanTech Corp. v. Adkins Energy, LLC,

N.D. Ill. No. 10-cv-04391, 2016 WL 1019672, 2018 WL 1469001 ............................... 1-2

Halo Elecs., Inc. v. Pulse Elecs., Inc.,

136 S. Ct. 1923 (2016) .......................................................................................................24

Hayduk v. City of Johnstown,

386 F. App’x 55 (3d Cir. 2010) .........................................................................................28

In re: Method for Processing Ethanol Byproducts and Related Subsystem

(‘858) Patent Litigation,

S.D. Ind. Case No. 10-ml-02181................................................................................ passim

Invitrogen Corp. v. Clontech Labs., Inc.,

429 F.3d 1052 (Fed. Cir. 2005)..........................................................................................24

John F. Harkins Co. v. Waldinger Corp.,

796 F.2d 657 (3d Cir. 1986)...............................................................................................35

Leddy v. Standard Drywall, Inc.,

875 F.2d 383 (2d Cir.1989)........................................................................................ passim

Liberty Mut. Ins. Co. v. Wetzel,

424 U.S. 737 (1976) ...........................................................................................................12

Lippi v. City Bank,

955 F.2d 599 (9th Cir. 1992) .............................................................................................25

Lovell v. Chandler,

303 F.3d 1039 (9th Cir. 2002) ...........................................................................................37

viii

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Martin v. Associated Truck Lines, Inc.,

801 F.2d 246 (6th Cir. 1986) .............................................................................................36

Mohammadi v. Nwabuisi,

605 F. App’x 329 (5th Cir. 2015) ................................................................................30, 31

Morgan v. Covington Twp.,

648 F.3d 172 (3d Cir. 2011)...............................................................................................24

Nat’l R.R. Passenger Corp. (Amtrak) v. Rountree Transp. & Rigging, Inc.,

422 F.3d 1275 (11th Cir. 2005) .........................................................................................24

Nelson v. Adams USA, Inc.,

529 U.S. 460 (2000) .....................................................................................................21, 22

Nissho-Iwai Am. Corp. v. Kline,

845 F.2d 1300 (5th Cir. 1988) ...........................................................................................25

Octane Fitness, LLC v. ICON Health & Fitness, Inc.,

572 U.S. 545 (2014) ...........................................................................................................24

Patlex Corp. v. Mossinghoff,

758 F.2d 594 (Fed. Cir. 1985)..............................................................................................4

Pfaff v. Wells Elecs., Inc.,

525 U.S. 55 (1998) ..................................................................................................... passim

Plumtree Software, Inc. v. Datamize, LLC,

473 F.3d 1152 (Fed. Cir. 2006)................................................................................9, 20, 22

Qwest Corp. v. AT & T Corp.,

479 F.3d 1206 (10th Cir. 2007) .........................................................................................24

Rogath v. Siebenmann,

129 F.3d 261 (2d Cir. 1997)...............................................................................................24

Roland v. Langlois,

945 F.2d 956 (7th Cir. 1991) .............................................................................................24

Sands, Taylor & Wood Co. v. Quaker Oats Co.,

978 F.2d 947 (7th Cir. 1992) ...........................................................................28, 30, 31, 36

Scaltech Inc. v. Retec/Tetra, L.L.C.,

178 F.3d 1378 (Fed. Cir. 1999)..........................................................................................11

Sears, Roebuck & Co. v. Mackey,

351 U.S. 427 (1956) ...........................................................................................................23

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Singh v. George Washington Univ. Sch. of Med. & Health Scis.,

508 F.3d 1097 (D.C. Cir. 2007) ...................................................................................25, 28

Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,

537 F.3d 1357 (Fed. Cir. 2008)........................................................................19, 21, 22, 33

Straights & Gays for Equal. v. Osseo Area Sch.-Dist. No. 279,

540 F.3d 911 (8th Cir. 2008) .......................................................................................36, 37

Therasense, Inc. v. Becton, Dickinson & Co.,

649 F.3d 1276 (Fed. Cir. 2011)....................................................................................13, 32

U.S. E. Telecommunications, Inc. v. US W. Commc’ns Servs., Inc.,

38 F.3d 1289 (2d Cir. 1994)...............................................................................................25

United States v. Hardage,

982 F.2d 1436 (10th Cir. 1992) .........................................................................................25

Variety Stores, Inc. v. Wal-Mart Stores, Inc.,

888 F.3d 651 (4th Cir. 2018) .............................................................................................25

Velez v. Awning Windows, Inc.,

375 F.3d 35 (1st Cir. 2004) ................................................................................................24

Voutour v. Vitale,

761 F.2d 812 (1st Cir. 1985) ..............................................................................................25

Statutes & Other Authorities:

U.S. Const., Amend. VII ............................................................................................................4, 27

28 U.S.C. § 1254(1) .........................................................................................................................2

28 U.S.C. § 1295(a)(1) .....................................................................................................................5

28 U.S.C. § 1331 ..............................................................................................................................5

28 U.S.C. § 1338(a) .........................................................................................................................5

35 U.S.C. § 102(b) .................................................................................................................2, 8, 11

35 U.S.C. § 284 ..............................................................................................................................24

35 U.S.C. § 285 ........................................................................................................................12, 24

37 C.F.R. § 1.56(a)...........................................................................................................................8

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37 C.F.R. § 1.56(b) ..........................................................................................................................8

David Hricik, “The Many Mistakes in the Panel Decision in GS CleanTech Corp v. Adkins”,

https://patentlyo.com/hricik/2020/03/mistakes-decision-cleantech.html ..........................16

David Hricik, “Will the Court Correct the Mess that is GS CleanTech Corp. v. Adkins Energy

LLC”, https://patentlyo.com/hricik/2020/04/correct-cleantech-adkins.html .....................16

De novo scope of review, Summary Judgment: Federal Law and Practice

(E. Brunet, J. Parry and M. Redish, Nov. 2020) § 11:1 .......................................................4

Fed. R. Civ. P. 54(b) ......................................................................................................................23

Fed. R. Civ. P. 56(a) ......................................................................................................................11

Law 360 article, “Fed. Circ. Inequitable Conduct Case Alarms IP Ethics Attys’,

https://www.law360.com/appellate/articles/1252427/fed-circ-inequitable-conduct-casealarms-ip-ethics-attys .........................................................................................................16

Sup. Ct. R. 10(a) ........................................................................................................................4, 22

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PETITION FOR A WRIT OF CERTIORARI

Petitioners GS CleanTech Corporation and Greenshift Corporation (collectively,

“Petitioners” or “CleanTech”) respectfully petition for a writ of certiorari to review the opinions

and judgments of the United States Court of Appeals for the Federal Circuit.

OPINIONS BELOW

The opinion of the court of appeals in GS CleanTech Corp. v. Adkins Energy, LLC is

reported at 951 F.3d 1310, and is included in the Appendix at App. A. The court of appeals’

decision denying Petitioners’ request for rehearing is not reported, but is provided in the Appendix

at App. D.1 The opinion of the district court granting summary judgment in In re: Method of

Processing Ethanol Byproducts and Related Subsystems (‘858) Patent Litigation, S.D. Ind. Case

No. 10-ml-02181, is reported at 303 F. Supp. 3d 791, and is provided in the Appendix at App. C.

The opinion of the district court finding inequitable conduct in that case is not officially reported,

but is provided in the Appendix at App. B, and is available on Westlaw at 2016 WL 4919980.

Other opinions of the district court in In re: Method of Processing Ethanol Byproducts and

Related Subsystems (‘858) Patent Litigation, S.D. Ind. No. 10-ml-02181, are available at: 2010

WL 3152744, 2011 WL 4538085, 2012 WL 952809, 2012 WL 396867, 2012 WL 13028098, 2012

WL 13029392, 2012 WL 13029397, 2012 WL 13029754, 2012 WL 5844746, 2013 WL 372240,

2013 WL 1909484, 2013 WL 3820593, 2014 WL 12754939, 2014 WL 12774227, 2014 WL

12805047, 2014 WL 2938183, 2014 WL 12753784, 2014 WL 12753785, 2015 WL 12977449,

2015 WL 13639448, 2015 WL 13642258, 2020 WL 1433856, and 2020 WL 240944.

Opinions of the district court in GS CleanTech Corp. v. Adkins Energy, LLC, N.D. Ill. No.

Citations to “App. ___” are to the Appendix to this Petition

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10-cv-04391, are available at: 2016 WL 1019672 and 2018 WL 1469001.

JURISDICTION

The Federal Circuit entered its original decision and judgment on March 2, 2020. App. A.

CleanTech filed a timely petition for rehearing on April 15, 2020. CleanTech’s petition for

rehearing was denied on June 30, 2020. App. D at 3. On March 19, 2020, this Court ordered that

all petitions for writs of certiorari are due 150 days after an order denying a timely petition for

rehearing. 150 days from June 30, 2020 is November 27, 2020. Thus, this Petition is timely.

This Court has jurisdiction to review the decision below under 28 U.S.C. § 1254(1).

STATUTORY PROVISIONS INVOLVED

35 U.S.C. § 102(b) (pre-America Invents Act (AIA), effective Nov. 2, 2002):

“A person shall be entitled to a patent unless--(b) the invention was patented or described

in a printed publication in this or a foreign country or in public use or on sale in this country, more

than one year prior to the date of the application for patent in the United States.”

STATEMENT OF THE CASE

This case presents an important question regarding the proper standard of review for issues

resolved on summary judgment. Until the Federal Circuit’s decision below, the standard had been

clear: Every Circuit reviewed every issue resolved on summary judgment de novo. And for good

reason. A litigant loses its Seventh Amendment right to a jury trial on any issues decided against

it on summary judgment. But now, for cases arising under the Patent Act, the Federal Circuit has

adopted “abuse of discretion” review for issues resolved on summary judgment; even when those

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issues are never reopened at trial. This new split between the Federal Circuit in patent cases, and

every other Circuit Court in non-patent civil cases, warrants review by this Court.

Below, a case-dispositive issue—patent invalidity—was conclusively resolved against

Petitioners on summary judgment. Under this Court’s precedent, and the precedent of every other

Circuit Court, the Federal Circuit should have reviewed the summary judgment of patent invalidity

de novo. It did not. Instead, it held—for the first time by any federal appellate court—that it could

review the issue under the “abuse of discretion” standard governing review of the district court’s

separate, later bench trial finding of inequitable conduct. This deprived Petitioners of the review

to which they were entitled, effectively ending the case.

The Federal Circuit’s justification for departing from de novo review was that, allegedly,

the invalidity issue was “reopened” during the bench trial. But every Circuit that has addressed the

issue has held that, once an issue is conclusively resolved on summary judgment, it is removed

from the case, unless the district court expressly notifies the parties that it is being reopened, and

gives them an opportunity to present new evidence. Here, the district court never notified the

parties that the issue was being reopened, and never gave them an opportunity to present new

evidence. At trial, the parties did not treat the issue as reopened. Indeed, prior to trial, the district

court granted a motion in limine excluding all evidence on the issue, based on Respondents’

argument that the issue had been conclusively resolved on summary judgment.

The Federal Circuit’s decision (in a footnote) to deem the issue “reopened” at trial—when

neither the parties nor the district court treated it as reopened—was pure judicial fiat; an attempt

to rewrite the record of the case below, so that the Federal Circuit could apply its preferred, morelenient standard of review. But neither the Federal Circuit, nor any other appellate court, has the

authority to rewrite the record to reach a preferred result. Once a right to appeal has been created,

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“the procedures used in deciding appeals must comport with the demands of the Due Process . . .

Clause[] of the Constitution.” Evitts v. Lucey, 469 U.S. 387, 393 (1985). The Federal Circuit’s

actions in this case fall far short of meeting those standards.

“The de novo standard, when applied to appellate review of grants of summary judgment,

protects Seventh Amendment values” by acting as a “safeguard against wayward summary

judgment orders.” § 11:1.De novo scope of review, Summary Judgment: Federal Law and Practice

(E. Brunet, J. Parry and M. Redish, Nov. 2020). De novo review ensures that parties receive the

jury trial to which they are entitled, unless the district judge and an appellate court both conclude,

as a matter of law, that no reasonable jury could find for the non-movant. Id. CleanTech demanded

a jury trial (Appx100000), and under Federal Circuit precedent, CleanTech was entitled to a jury

trial on Respondents’ invalidity defense. Patlex Corp. v. Mossinghoff, 758 F.2d 594, 603 (Fed. Cir.

1985). Yet, CleanTech was denied that jury trial, first by the district court’s erroneous summary

judgment of invalidity, and then by the Federal Circuit’s erroneous refusal to review the summary

judgment de novo. This amounted to a denial of CleanTech’s Seventh Amendment rights.

Unless the decision below is reversed, many future litigants face the prospect of having

their Seventh Amendment Rights similarly denied. The Federal Circuit is the only appellate court,

apart from this Court, with nationwide jurisdiction. The Federal Circuit hears all appeals from all

patent cases nationwide. Patent cases constitute one of the largest groups of cases (by amount in

controversy) of all federal civil cases. Unless reversed, the Federal Circuit’s erroneous decision

will bind all future patent litigants, and will likely lead many of them to lose their Seventh

Amendment rights. This will cause untold harm to such litigants, and the patent system as a whole.

The decision below is “in conflict with the decision of another United States court of

appeals on the same important matter,” and “has so far departed from the accepted and usual course

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of judicial proceedings . . . as to call for an exercise of this Court’s supervisory power.” Sup. Ct.

R. 10(a). Thus, certiorari is respectfully requested.

Jurisdiction Below

The district court had original jurisdiction over this case under 28 U.S.C. §§ 1331 and

1338(a). The Federal Circuit had appellate jurisdiction under 28 U.S.C. § 1295(a)(1).

Factual Background

Petitioners own U.S. Pat. Nos. 7,601,858 (“the ‘858 patent”), 8,008,516 (“the ‘516

patent”), 8,008,517 (“the ‘517 patent”), 8,168,037 (“the ‘037 patent”) and 8,283,484 (“the ‘484

patent”) (collectively, the “Patents-in-Suit”). App. A at 5. The Patents-in-Suit describe and claim

a novel method of extracting corn oil from the byproducts of ethanol distillation. Id. at 5-7. The

Patents-in-Suit all claim priority to a provisional application filed on August 17, 2004. Id. at 12.

The patented technology was invented by two veterans of the agricultural and extraction

industries: David Cantrell and David Winsness (the “inventors”). Appx314172; Appx35734-35.

In the early 2000s, the inventors learned that there was valuable corn oil in two byproducts of the

ethanol distillation process: “thin stillage,” and “syrup.” Id. The inventors realized that, if they

could find a way to economically extract corn oil from thin stillage or syrup, this would add a

significant new revenue stream to ethanol plants. Appx35735-36, ¶ 8.

In 2003, the inventors began investigating ways to extract corn oil from thin stillage or

syrup. Appx31417-18; Appx35738. In June 2003, the inventors asked Agri-Energy, an ethanol

plant in Minnesota, for two five-gallon samples of thin stillage and syrup. App. A at 8-9. The

inventors tasked Greg Barlage, an employee of centrifuge maker Alfa Laval, to test the samples

with a bench-top centrifuge, and see if oil could be extracted. Id. at 7-9. Barlage deemed the syrup

Citations to “Appx” are to the Joint Appendix from the Federal Circuit case below.

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sample too viscous, so he only attempted to extract oil from the thin stillage sample. Appx3141718, ¶¶ 18-23; Appx110088. The test was a failure, because the centrifuge quickly clogged. Id.

In July 2003, Barlage traveled to Agri-Energy with a small laboratory test centrifuge, to

attempt to extract corn oil from samples of Agri-Energy’s syrup. App. A at 9. That test also failed,

because the centrifuge quickly clogged. Appx31418, ¶¶ 18-23.

The inventors realized, from the testing failures, that the only way to determine if corn oil

extraction would work was to conduct exploratory tests in a live ethanol plant, during full-scale

operations. Appx31418, ¶¶ 28-30. Accordingly, on August 1, 2003, Cantrell emailed a three-page

proposal to Agri-Energy (the “Proposal”), asking for permission to conduct in-plant tests. App. A

at 9-10. The Proposal asked Agri-Energy to participate in a confidential “trial process” using a

“test module.” App. C at 132-133. To incentivize Agri-Energy to participate in the test, the

inventors proposed to install the “test module” (a centrifuge owned by Alfa Laval) at Agri-Energy,

at the inventors’ sole expense, and for Agri-Energy to operate the unit for 60 days. Id. Agri-Energy

would be permitted to retain any oil extracted during this period. Id. To further incentivize AgriEnergy, the inventors gave Agri-Energy the option to either return the test unit “no questions

asked,” or to purchase it, at the end of the 60 days. Id. The Proposal explicitly stated that “[a]ll

discoveries . . . shall remain the property of [the inventors’ company] and [be] confidential.”

On August 18 and 19, 2003, Cantrell traveled to Agri-Energy to meet with its Board of

Directors. App. C at 135-136. Cantrell hand-delivered a copy of the Proposal to the Agri-Energy

Board, who responded favorably. Id. However, shortly thereafter, Alfa Laval sold the centrifuge

the inventors had intended to use as the “test unit.” Id. at 137. Thus, the project went cold. Id.

By May 2004, the inventors located another centrifuge. App. C at 138-139. Agri-Energy

agreed to let the inventors install that centrifuge at their facility, and run tests. Id. The inventors

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did so. Id. The tests were a success; they proved that, under counter-intuitive conditions specific

to operating ethanol plants, a centrifuge could be used, in the process envisioned by the inventors,

to successfully extract corn oil from syrup in an ethanol plant. Id. at 139-140; Appx35738. This

was the first time the inventors knew they had a working invention. Id.

Shortly thereafter, the inventors retained a patent attorney, Andrew Dorisio. App. B at 1617. Dorisio prepared a provisional patent application directed to the invention, and filed it on

August 17, 2004. App. B at 20; Appx900. On May 5, 2005, he filed a nonprovisional application,

claiming priority to the provisional application. Id. That application issued as the ‘858 patent. Id.

In March 2008, prosecution of the ‘858 patent family was transferred to the firm of Cantor

Colburn LLP. App. B at 22. Cantor Colburn prosecuted all of the patents in the family to issuance.

Prior to the invention, no ethanol plants in the U.S. were extracting corn oil. Appx3189131892, ¶15. By February 2013, 70% of plants were doing so, by way of the patented technique.

Id. Indeed, the ability to extract corn oil via the patented technique was the primary factor that

allowed many ethanol distilling facilities to remain profitable. Appx35735-36, ¶ 8.

Many ethanol facilities agreed to take licenses to the Patents-in-Suit. Appx26356, ¶ 196.

However, many others did not. The inventors (through CleanTech) sued the companies that

adopted the patented technology, but refused to take a license, for patent infringement.

Proceedings Below

CleanTech sued a number of ethanol facilities for infringement of the ‘858 patent in district

courts throughout the United States. On August 6, 2010, the Panel on Multidistrict Litigation

(“MDL”) consolidated the cases into a single MDL in the Southern District of Indiana.

Discovery of the Proposal; First and Second Cantrell Declarations

Starting in 2010, the parties engaged in discovery. Cantor Colburn represented CleanTech

in the litigation. In March 2010, Winsness traveled to Cantrell’s house to collect documents for

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the litigation. Appx63882, ¶¶ 15-19. While doing so, Winsness saw, for the first time, ink-signed

and color-printed versions of the Agri-Energy Proposal. Id. Neither Winsness nor Cantrell saw the

August 1, 2003 emailed version of the Proposal at that time, because Cantrell’s email account in

2003 was set to automatically delete all emails after 90 days. Appx40202-03.

Winsness sent the ink-signed and color-printed version of the Agri-Energy Proposal to

Cantor Colburn in March 2010. Appx63882, ¶¶ 18-20. Cantor Colburn attorneys reviewed the

Proposal. Id. At that point, several members of the ‘858 patent family were still undergoing

prosecution at the USPTO. Thus, Cantor Colburn had to decide whether to submit the Proposal to

the patent office. Under patent office rules, a patent applicant must submit, during prosecution, all

documents they are aware of that are “material to patentability.” 37 C.F.R. § 1.56(a). A document

is “material to patentability” if it: “(1) establishes, by itself or in combination with other

information, a prima facie case of unpatentability of a claim; or (2) [i]t refutes, or is consistent

with, a position the applicant takes” during prosecution. 37 C.F.R. § 1.56(b).

The date on the face of the Agri-Energy Proposal was “July 31, 2003.” Appx63882, ¶19.

That was more than one year earlier than the August 17, 2004 priority date of the Patents-in-Suit.

Thus, there was a possibility that the Proposal could invoke an “on-sale bar” against the Patentsin-Suit under 35 U.S.C. § 102(b) (pre-America Invents Act, effective November 2, 2002) and this

Court’s decision in Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998). Under Pfaff, “the on-sale

bar applies when two conditions are satisfied before the critical date” – i.e., more than one year

before the priority date of the patent. Id. “First, the [invention] must be the subject of a commercial

offer for sale.” Id. “Second, the invention must be ready for patenting.” Id.

Cantor Colburn reviewed the Proposal, and prepared several memoranda (in the form of

draft submissions to the patent office), outlining why the Agri-Energy Proposal did not invoke an

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on-sale bar under Pfaff. App. B at 37. The most detailed memorandum was prepared on August

16, 2010. Appx110830-43. That memorandum outlined four reasons why the Proposal did not

invoke an on-sale bar under Pfaff, i.e.,: (i) because the Proposal was for an “experimental use,”

rather than a commercial purpose (Appx110835-39); (ii) because the Proposal was not a

“commercial offer for sale” in the contract sense (Appx110839-40) (iii) because the Proposal was

not an offer “of the Patented Invention,” since (at most) it was an offer to deliver a “test module,”

but the patented claims are all method claims, and an offer for sale of a method claim only occurs

if the offeror offers to perform the method for consideration (Appx110840-42) (citing Plumtree

Software, Inc. v. Datamize, LLC, 473 F.3d 1152 (Fed. Cir. 2006)); and (iv) the invention was not

“ready for patenting” at the time of the Proposal (Appx110842-43).

In early September 2010, Cantrell told Cantor Colburn that, to the best of his recollection,

the first time he delivered the Proposal to Agri-Energy was when he hand-delivered it to the AgriEnergy Board seven years earlier, on August 18, 2003. App. B at 37-38. Cantrell’s recollection

was incorrect. As stated above, he had also emailed a copy of the Proposal to Agri-Energy on

August 1, 2003. But Cantrell had forgotten about that email. At trial, Cantrell consistently testified

that he had no recollection of sending the August 1, 2003 email, and that he truly believed he did

not send the Proposal until August 18, 2003. Appx70146-70148; Appx70584-70585.

Cantor Colburn was skeptical of Cantrell’s “hand delivery” narrative. App. B at 37-38. If

Cantrell did not deliver the Proposal until August 18, 2003—one day after the August 17, 2003

critical date—then the Proposal would not be prior art, and it could not invoke an on-sale bar. Id.

That seemed too convenient. So, Cantor Colburn investigated. They asked Cantrell to pull his

credit card receipts, to prove that he was in Luverne, Minnesota (Agri-Energy’s location) on

August 18, 2003. He did. The receipts confirmed that Cantrell was in Luverne, and did meet with

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Agri-Energy, on that date. App. B at 38; Appx63882-3. Cantor Colburn also spoke with Cantrell’s

business associates, including Winsness, who confirmed that hand-delivery of letters was “how

Cantrell conducted business.” App. B at 38. Between the credit card receipts, and the confirmation

that hand-delivery was Cantrell’s usual practice, Cantor Colburn was satisfied. Id.

Accordingly, Cantor Colburn drafted a Declaration for Cantrell to sign (the “First Cantrell

Declaration”), in which Cantrell testified to his hand delivery of the Proposal. App. B at 39-41.

The Declaration stated what everyone at the time (counsel and client) believed to be true: that the

first time the Proposal was delivered was when it was hand-delivered on August 18, 2003. Id. On

November 16, 2010, Cantor Colburn submitted the First Cantrell Declaration, along with a copy

of the Agri-Energy Proposal, to the USPTO, in prosecution of the ‘516 and ‘517 patents. Id. at 4142. Cantor Colburn’s submissions argued that the Proposal could not be “material” to patentability,

because it was delivered one day after the critical date of August 17, 2003. Id.

The ‘516 and ‘517 patents issued on August 30, 2011. App. A at 16. CleanTech

subsequently amended its complaints to assert infringement of the ‘516 and ‘517 patents.

On September 21, 2011, Respondents deposed Cantrell in the litigation. App. B at 43.

There, Respondents confronted Cantrell with the August 1, 2003 email, which they had apparently

obtained from Agri-Energy. Id. Cantrell was shocked; his firm recollection had been that the first

time he delivered the Proposal was when he hand-delivered it on August 18, 2003. Appx7014670148. The deposition was the first time Cantor Colburn saw the email. Appx63883, ¶ 36.

When Cantrell was deposed, the ‘516 and ’517 patents had already issued; thus, there was

nothing CleanTech could do to “cure” the incorrect hand-delivery statement as to those patents.

However, the application for the ‘484 patent was still pending. Accordingly, in 2012, Cantor

Colburn drafted a second declaration for Cantrell to sign (the “Second Cantrell Declaration”), to

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correct the mistake in the first. App. B at 46-47. Cantrell signed the Second Declaration on July

10, 2012, and Cantor Colburn filed it at the USPTO. Id. at 47-48. The Second Declaration attached

a copy of the August 1, 2003 email (with the Proposal), and admitted the mistake in the First

Declaration. Appx121695, ¶¶ 1-2. The ‘484 patent issued on October 9, 2012. App. B at 51.

The Summary Judgment of Invalidity Due to an On-Sale Bar

In September 2013, Respondents moved for summary judgment of invalidity due to an onsale bar. Respondents argued that the Agri-Energy Proposal was a commercial offer for sale of the

invention, more than one year prior to the critical date, and that the invention was ready for

patenting at the time of the Proposal. App. C at 166. Thus, Respondents argued, the Proposal

invalidated the Patents-in-Suit under 35 U.S.C. § 102(b) and Pfaff. Id.

CleanTech vigorously opposed Respondents’ motion for summary judgment. Appx2635726373. Both prongs of Pfaff (i.e., “commercial offer” and “ready for patenting”) are, or involve,

questions of fact, on which Respondents bore the burden of proof by “clear and convincing

evidence.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1352 (Fed. Cir. 2002)). Thus,

summary judgment was proper only if CleanTech failed to establish any “genuine dispute [of]

material fact” as to either Pfaff prong. Fed. R. Civ. P. 56(a).

CleanTech adduced abundant evidence to avoid summary judgment. CleanTech submitted

deposition testimony, declarations, documents, and other evidence to show that the Proposal was

not a “commercial offer for sale,” in the contract sense, as required by law. Appx26362. CleanTech

submitted testimony, declarations, documents and other evidence to show that the Proposal did not

anticipate the claimed inventions (as required by Scaltech Inc. v. Retec/Tetra, L.L.C., 178 F.3d

1378, 1383 (Fed. Cir. 1999)), because it did not require performance of every step of the claimed

methods. Appx26363-26364. CleanTech submitted documents, testimony, and other evidence to

show that the Proposal was for an “experimental,” rather than a “commercial,” purpose.

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Appx26364-26368. And CleanTech submitted abundant evidence—including testimony,

Declarations from both inventors, and numerous documents—to show that the invention was not

“ready for patenting” at the time of the Proposal, because the inventors did not know whether it

would work until they performed the in-plant tests in May 2004. Appx26369-26373.

Despite this abundant evidence; despite Respondents’ “clear and convincing” burden of

proof; and despite that the district court was supposed to view all facts in the light most favorable

to CleanTech, the district court grant summary judgment of invalidity, because the Proposal

invoked an “on-sale bar” against almost all claims3 of the Patents-in-Suit. App. C at 164-174. The

summary judgment was clearly erroneous. CleanTech has no doubt that, if the Federal Circuit had

reviewed the summary judgment under the proper de novo standard, it would have reversed,

because there were clearly genuine disputes of material fact on both prongs of the Pfaff analysis.

The Bench Trial on Inequitable Conduct

The district court’s summary judgment of on-sale bar was actually a partial summary

judgment, because it did not dispose of all the claims in the case. App. C at 233. Most significantly,

Respondents’ counterclaim for a declaration of inequitable conduct remained pending.4 Because

the summary judgment of on-sale bar was only a partial summary judgment, CleanTech could not

appeal it as a matter of right. Liberty Mut. Ins. Co. v. Wetzel, 424 U.S. 737, 744 (1976).

The district court set the inequitable conduct counterclaim for a bench trial. App. B at 1.

“Inequitable conduct” is a judicially-created doctrine, under which a patent (or patent family) can

Although not all claims of the Patents-in-Suit were found invalid under the on-sale bar, the

summary judgment order was fully case-dispositive, because the district court found the remaining

claims invalid or not infringed for different reasons. See generally App. C.

Even though the summary judgment order was fully case-dispositive, Respondents insisted on

pursuing their inequitable conduct claim, presumably to bolster their claim that this was an

“exceptional case” for attorney’s fees purposes under 35 U.S.C. § 285.

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be held unenforceable if the patent applicant committed fraud on the patent office in obtaining the

patent. The en banc Federal Circuit promulgated the current standards governing inequitable

conduct in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011).

Under Therasense, to prove inequitable conduct, a defendant must prove two separate

factors by “clear and convincing evidence.” Id. First, it must prove that the patent applicant “acted

with the specific intent to deceive the PTO.” Id. at 1290. Second, it must generally prove “but-for

materiality:” i.e., that “the PTO would not have allowed a claim had it been aware of the

undisclosed prior art,” based on the “preponderance of the evidence” standard applied by the PTO

in making validity determinations. Id. at 1291-92.

Because the Federal Circuit adopted “but-for materiality” in Therasense, it noted that

“[o]ften,” the “materiality” determination “will be congruent with the validity determination.” Id.

Specifically, it held: “if a claim is properly invalidated in district court based on the deliberately

withheld reference, then that reference is necessarily material because a finding of invalidity in a

district court requires clear and convincing evidence, a higher evidentiary burden than that used in

prosecution at the PTO.” Id. (emphases added).

Respondents argued that CleanTech and Cantor Colburn committed inequitable conduct in

connection with the Agri-Energy Proposal. App. B at 57-58. Specifically, Respondents argued that

the inventors (Cantrell and Winsness) committed inequitable conduct during prosecution of the

‘858 patent—the first Patent-in-Suit to issue, on October 13, 2009 (Appx900)—by failing to

submit the August 1, 2003 email and Agri-Energy Proposal to the patent office. Id. Respondents

further argued that Cantor Colburn and the inventors committed inequitable conduct during

prosecution of the ‘516 and ‘517 patents by submitting the First Cantrell Declaration, which

incorrectly stated that the Proposal was first delivered to Agri-Energy by “hand delivery,” after the

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critical date. Id. Finally, Respondents argued that Cantor Colburn and the inventors committed

inequitable conduct during prosecution of the ‘484 patent by submitting the Second Cantrell

Declaration, which they alleged was an inadequate cure of the First Declaration. Id.

The district court set a bench trial on inequitable conduct for October 2015. App. B at 2.

Due to the Federal Circuit’s holding that “if a claim is properly invalidated in district court based

on [a] deliberately withheld reference, then that reference is necessarily material,” the district

court’s summary judgment of invalidity conclusively (albeit wrongly) established that the AgriEnergy Proposal was “material” to patentability. Therasense, 649 F.3d at 1292. Thus, the only

issue remaining for the bench trial was “intent”—i.e., whether the inventors or Cantor Colburn

“specifically intended” to deceive the PTO with respect to the Proposal. Id.

The record of proceedings leading up to, and during, trial demonstrates that all parties, and

the district court, understood that the “materiality” of the Proposal was not at issue at trial. The

district court asked the parties to submit pre-trial briefs. Respondents’ pre-trial brief could not have

been clearer. It stated: “Because the Court’s summary judgment order resolved the issue of

materiality, the only issue to be decided at trial is whether Applicants acted with deceptive intent

when they made false statements to the PTO and omitted material facts from their disclosures to

it.” In re: Method for Processing Ethanol Byproducts and Related Subsystem (‘858) Patent

Litigation, S.D. Ind. Case No. 10-ml-02181, ECF 1576 at 33 of 35 (emphasis added). Thus,

Respondents clearly understood—indeed, argued—that the only issue to be tried was intent.

CleanTech also submitted a pretrial brief. The vast majority of CleanTech’s argument—19

of 20 pages—was directed to the issue of intent. In re: Method for Processing Ethanol Byproducts

and Related Subsystem (‘858) Patent Litigation, S.D. Ind. Case No. 10-ml-02181, ECF 1574 at

5-23 of 35. That is because CleanTech also understood the materiality issue to have been resolved

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on summary judgment. CleanTech also included a short, one-page section seeking to offer new

evidence. Id. at 23-24 of 26. That section did not attempt to reargue the summary judgment

decision that had already been made. It simply argued that new evidence which emerged after the

summary judgment—namely, the allowance of CleanTech’s related U.S. App. No. 13/450,997,

which claimed very similar subject matter to the invalidated claims, and which was allowed even

though the Examiner was fully aware of the Agri-Energy Proposal—should be considered at trial,

as evidence that the Agri-Energy Proposal was not, in fact, material to patentability. Id.

Respondents vehemently objected to CleanTech’s attempt to introduce this evidence.

Respondents filed a motion in limine, titled “Motion to Exclude Evidence Relating to the

Prosecution of Patents Not in Suit,” on September 17, 2015, seeking to exclude the evidence of

the allowance, and any other evidence of materiality. Appx64380-64385. Respondents argued:

Plaintiff’s pre-trial filings indicate it intends to ignore this Court’s

summary judgment decision and argue the offer and surrounding

facts concerning the on-sale bar were immaterial. In particular, it

seeks to introduce evidence of the PTO’s December 2014 allowance

of a continuance application to the ’858 family. Materiality having

been decided on summary judgment, this Court should exclude

this evidence and any other argument that the Agri-Energy offer

and surrounding facts are not material.

Appx64381 (emphasis added). Respondents argued that any attempt “to argue the sale offer was

immaterial is to challenge this Court’s summary judgment findings and refuse to accept the law of

the case.” Appx64382. Respondents concluded, at Appx64385 (emphasis added):

In granting summary judgment for invalidity on the basis of the

inventors’ 2003 dealings with Agri-Energy, this Court decided that

the Offer Letter and the 2003 testing and sales diagram were

material. Summary judgment having already been decided on this

issue in Defendants’ favor, this Court should exclude any evidence

that the offer was immaterial, including the PTO’s allowance of

claims in a continuation application.

On September 24, 2015, the district court granted Respondents’ motion in limine, ordering:

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“Defendants’ Motion to Exclude Evidence Relating to the Prosecution of Patents Not in Suit . . .

is GRANTED.” Appx64556, ¶ 4. And the district court reaffirmed this ruling at trial: when

CleanTech tried to introduce evidence of the ‘997 Application allowance, the district court did not

allow it, referring back to its earlier in limine ruling. In re: (‘858) Patent Litigation, S.D. Ind. Case

No. 10-ml-02181, ECF 1648 at 100-104 of 234.5 Indeed, Respondents even stated, in their closing

argument at trial: “the materiality prong is met, Your Honor . . . because quite simply [of] the

information that Your Honor relied upon in deciding summary judgment,” and thus, “what this

case is really about is intent to deceive.” In re: (‘858) Patent Litigation, S.D. Ind. Case No. 10-ml02181, ECF 1649 at 23-24 of 79. Accordingly, it was clear, from the record before and during trial,

that the “materiality” of the Proposal was not at issue, and the only issue to be tried was intent.

The district court issued its decision after the bench trial on September 15, 2016. App. B.

The district court found inequitable conduct during the prosecution of the ‘858, ‘516, ‘517, and

‘484 patents. App. B at 65-77. As to the ‘858 patent, the district court found that there was

inequitable conduct because the inventors “intentionally allowed Hagerty,”6 a patent prosecution

The Federal Circuit stated that CleanTech did not “contest[]” the exclusion of this evidence

“before the District Court.” App. A at 38. Not so; immediately after the ruling, CleanTech’s

counsel stated: “[I] take exception, Your Honor,” to which the court replied, “[t]he ruling I just

made is clearly there for the record, to be reviewed.” In re: (‘858) Patent Litigation, S.D. Ind. Case

No. 10-ml-02181, ECF 1648 at 104 of 234.

The finding that Hagerty acted culpably during prosecution of the ‘858 patent was unsupportable,

because the parties stipulated that he did not learn of the Agri-Energy Proposal until March 2010,

after the ‘858 patent issued. Appx63882, ¶ 19. Commentators have criticized the Federal Circuit’s

decision for failing to discriminate between alleged misconduct by counsel and client. See

https://www.law360.com/appellate/articles/1252427/fed-circ-inequitable-conduct-case-alarmsip-ethics-attys (Law360 article, “Fed. Circ. Inequitable Conduct Case Alarms IP Ethics Attys’);

https://patentlyo.com/hricik/2020/03/mistakes-decision-cleantech.html (article by professor

David Hricik, “The Many Mistakes in the Panel Decision in GS CleanTech Corp v. Adkins”);

https://patentlyo.com/hricik/2020/04/correct-cleantech-adkins.html (second article by Professor

Hricik, “Will the Court Correct the Mess that is GS CleanTech Corp. v. Adkins Energy LLC”).

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attorney from Cantor Colburn, not to submit the Agri-Energy Proposal to the PTO. App. B at 6568. As to the ‘516 and ‘517 patents, the district court found inequitable conduct because “the

inventors and the attorneys misrepresented to the PTO that the July 31 offer letter 7” was first

delivered after the critical date, in the First Cantrell Declaration. App. B at 68-73. And as to the

‘484 patent, the district court found inequitable conduct because the Second Cantrell Declaration

did not adequately cure the inaccurate statement in the First Cantrell Declaration. App. B at 7477. Accordingly, the district court held the ‘858, ‘516, ‘517 and ‘484 patents unenforceable, and

entered final judgment for Respondents. Appx318. CleanTech then appealed. Appx72482.

In its inequitable conduct decision, the district court did not enter an independent “finding”

that the Agri-Energy Proposal was “material” to patentability. Instead, it simply “adopt[ed] herein

by reference the findings of fact and conclusions of law in the Summary Judgment Order . . .

Master Docket No. 1351, at 164 to 175,” i.e., the section of the summary judgment order resolving

invalidity under the on-sale bar. App. B at 59. This confirms that “materiality” and the “on-sale”

issues were not reopened at trial, and the only issue tried to the court was intent.

The Federal Circuit Appeal

CleanTech filed its Opening Appeal Brief on August 29, 2018. Therein, CleanTech argued

that the summary judgment of on-sale bar was error, for all the reasons stated above. GS CleanTech

Corp. v. Adkins Energy, LLC, CAFC Case No. 16-2231, Dkt. 62 at 35-45. CleanTech further

argued that, because the only finding of “materiality” in the record was the summary judgment of

on-sale bar, but the summary judgment decision should be reversed, the finding of inequitable

conduct should also be reversed, and the case remanded for trial. Id. at 104-106.

The district court referred to the Proposal as the “July 31 offer letter” because, while it was

emailed on August 1, 2003, the face of the document bore the date “July 31, 2003.” App. B at 133.

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Respondents filed a Response Brief on December 18, 2018. In it, they urged the Federal

Circuit to “skip over” reviewing the summary judgment of on-sale bar, and review only the

inequitable conduct decision for “abuse of discretion.” CAFC Case No. 16-2231, Dkt. 81-1 at 5560. Respondents urged that such a review would more “efficiently resolve th[e] case,” because it

would obviate the need to address the district court’s summary judgment decisions. Id. at 50.

Respondents argued that it was proper to skip reviewing the summary judgment decisions, and

review only the inequitable conduct decision, because “the District Court held an eight-day bench

trial on inequitable conduct, placing materiality squarely before it.” Id. (emphasis added).

That argument was stunning, to say the least. Respondents expressly argued to the district

court that because “[m]ateriality ha[d] been decided on summary judgment, this Court should

exclude . . . any other argument that the Agri-Energy offer and surrounding facts are not material,”

and they prevailed on that argument. Appx64385; Appx64556, ¶ 4. Respondents’ new argument

that materiality had been “at issue” was not just false; it was knowingly false.

CleanTech filed a Reply Brief on February 26, 2019. In it, CleanTech advised the Federal

Circuit that Respondents had taken the exact opposite position on materiality, successfully, before

the district court. CAFC Case No. 16-2231, Dkt. 100 at 4-9. Thus, CleanTech argued, Respondents

should be judicially estopped from asserting that materiality had been “at issue” during the bench

trial. Id. Apart from any estoppel, CleanTech argued, it was manifest from the record that

materiality had not been “at issue” during the trial. Id. Thus, CleanTech argued, the Federal Circuit

was required to conduct a de novo review of the summary judgment rulings. Id.

The Federal Circuit panel issued its decision on March 2, 2020. App. A. In footnote 15, the

panel accepted Respondents’ invitation to more “efficiently” resolve the case by skipping review

of the summary judgment decision, and reviewing only the inequitable conduct decision, for

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“abuse of discretion.” App. A at 25-26, n. 15 (“Despite CleanTech’s arguments to the contrary, .

. . we will address the issue of inequitable conduct without first conducting a de novo review of

the District Court’s summary judgment [of] on-sale bar”). The panel’s justification for this was a

single sentence taken near-verbatim out of Respondents’ brief, and reproduced without citation:

i.e., that “[t]he District Court held an eight-day bench trial in which materiality was squarely before

it.” Id. at 25. The panel ignored the fact that the district court excluded all evidence of materiality

from the trial; ignored the fact that Respondents successfully argued, prior to trial, that materiality

was not at issue at trial; and completely ignored CleanTech’s argument that Respondents should

be judicially estopped from taking such clearly inconsistent positions. Id.

Having decided to deprive CleanTech of de novo review, the panel proceeded to review

the on-sale bar decision for “abuse of discretion.” App. A at 26 (“The District Court Did Not Abuse

Its Discretion in Determining the Claimed Invention Was the Subject of a Pre-Critical Date Offer

for Sale”), 27 (“The District Court did not abuse its discretion in determining that the claimed

invention was the subject of an offer for sale in the summer of 2003”); 28 (“The District Court did

not abuse its discretion in determining the claimed invention was ready for patenting in June or

July 2003”) (emphases added). This was not only improper for the reasons set forth below; it was

a violation of the Federal Circuit’s own standards. Under Federal Circuit precedent, the “ultimate

decision” of inequitable conduct is reviewed for “abuse of discretion,” but the “underlying factual

determinations,” including materiality, are reviewed “for clear error.” Star Sci., Inc. v. R.J.

Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008). “If the district court's determination

of inequitable conduct is based on a clearly erroneous finding of materiality and/or intent, it

constitutes an abuse of discretion and must be reversed.” Id. Thus, even if it were proper to “skip”

reviewing the summary judgment decision, and review only the inequitable conduct decision

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(which it was not), the “materiality” and “intent” prongs of that decision should have been

reviewed for “clear error.” The Federal Circuit’s decision to review those prongs for “abuse of

discretion” violated its own standards—and ensured that CleanTech had no chance of success.8

Under abuse of discretion review, the panel easily affirmed the district court’s finding of

an on-sale bar. App. A at 26-31. On the “commercial offer” prong of Pfaff, the panel found that

the district court “did not abuse its discretion” in determining that the Proposal was not for an

“experimental purpose,” which would have negated a “commercial offer” under Pfaff, 525 U.S. at

64. App. A at 30. The panel effectively ignored all of CleanTech’s evidence that the Proposal was

for an experimental purpose. Id.; see also CAFC Case No. 16-2231, Dkt. 62 at 39-45 (outlining

this evidence). Incredibly, the panel also found that CleanTech waived reliance on the dispositive

Plumtree case—a case directly supporting CleanTech’s position that the Proposal’s offer to install

Moreover, the inequitable conduct decision is materially inconsistent with recent developments

at the patent office. On May 19, 2020, the USPTO issued U.S. Pat. No. 10,655,083 (the “’083

patent”), a continuation of the Patents-in-Suit. The ‘083 patent’s claims have substantially the same

scope as those of the Patents-in-Suit. See ‘083 patent at 6:22-66. The ‘083 patent was examined

by the same Examiner who examined the Patents-in-Suit, Deborah Carr. On April 17, 2019,

Examiner Carr issued an office action, rejecting the claims due to the “on-sale bar” raised by the

Proposal. See April 17, 2019 Office Action at 3-5. Examiner Carr cited the district court’s

inequitable conduct ruling to support the rejection. Id. On July 24, 2019, Petitioners held an

interview with Examiner Carr, to review why the invention was not ready for patenting in 2003

(i.e., because the 2003 bench testing failed and the inventors did not know if the process would

work), why the 2003 Proposal was not originally submitted (i.e., because Petitioners, the inventors,

and Cantor Colburn did not believe it was material to patentability), and why the 2003 Proposal

did not invoke an on-sale bar (i.e., because there was no commercial offer for sale, because of

Plumtree, and because the invention was not ready for patenting). Examiner Carr was persuaded.

She withdrew the rejection, and allowed the claims. Thus, the very Examiner whom the district

court determined was “misled” by the inventors and Cantor Colburn reviewed the district court’s

rulings and Respondents’ materials, and determined that she was not misled; that the invention

which gave rise to the Patents-in-Suit was not ready for patenting in 2003, that the 2003 Proposal

did not raise an on-sale bar, and that none of the information that was allegedly withheld from the

USPTO was material to patentability. Examiner Carr’s decision to issue the ’083 patent directly

contradicts the district court’s and Federal Circuit’s rulings that the 2003 Proposal invoked an “on

sale” bar, and that there was inequitable conduct during prosecution of the Patents-in-Suit.

1933580.1

equipment, and not to perform the claimed methods, could not trigger the “on-sale” bar—because

“CleanTech cited to Plumtree only once in its summary judgment opposition.” App. A at 27

(emphasis added). The panel cited no authority (and there is none) for its apparent position that a

party must cite a case “more than once” to preserve reliance upon it on appeal.9

On the “ready for patenting” prong of Pfaff, the panel found that the “District Court did not

abuse its discretion in determining the claimed invention was ready for patenting in June or July

2003.” App. A at 28. The panel ignored all the evidence showing that CleanTech did not know

whether the invention would work—and, thus, that the invention was not “ready for patenting”—

until the in-plant tests in May 2004, after the critical date. CAFC Case No. 16-2231, Dkt. 62 at 4547 and Dkt. 100 at 14-19 (outlining this evidence). The panel then found that the district court did

not “abuse its discretion” (again, using the wrong standard under Star Scientific) in finding

deceptive intent. App. A at 31-38. Thus, the panel affirmed the district court’s judgment that the

‘858, ‘516, ‘517 and ‘484 patents were unenforceable for inequitable conduct. Id. at 38. Because

that was case-dispositive as to those patents, the panel did not review any other part of the district

court’s opinion as to those patents, including the summary judgment of on-sale bar. Id., n. 16.

One patent was not covered by the inequitable conduct decision—the ‘037 patent. The

panel dispensed with that patent in a single footnote. App. A at 20, n. 13. In the footnote, the panel

“conclude[d] that the District Court properly determined” that the asserted claims of the ‘037

patent were obvious. Id. (emphasis added). But the district court did not “determine” anything—it

ruled, on summary judgment, that there were no genuine disputes of fact, and that the ‘037 claims

The panel’s “waiver” decision directly conflicted with Nelson v. Adams USA, Inc., 529 U.S. 460,

469 (2000), in which this Court held that an issue is preserved when “the lower court [is] fairly put

on notice as to [its] substance.” CleanTech clearly put the district court on “fair notice” of its

Plumtree argument, because it cited Plumtree for that exact argument below. Appx26364.

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were obvious as a matter of law. App. C at 214-217. That summary judgment of obviousness was

clearly erroneous. See CAFC Case No. 16-2231, Dkt. 62 at 70-77; Dkt. 100 at 41-42. More

importantly, however, the panel applied the wrong standard of review. The footnote never

mentions that obviousness was decided on summary judgment, and never mentions the de novo

standard. To the contrary, the panel purported to review the district court’s “determin[ation]”—

i.e., finding—of obviousness, which suggests that the panel applied clear error, or abuse of

discretion, review. This was error, for the same reasons as the failure to conduct de novo review

of the summary judgment of on-sale bar. This error also warrants review and correction.

CleanTech petitioned for en banc rehearing on April 15, 2020. CleanTech raised four

grounds for rehearing: (i) that the panel improperly refused to review the summary judgment of

on-sale bar de novo (CAFC Case No. 16-2231, Dkt. 175 at 6-11); (ii) that the panel’s “waiver”

finding as to the Plumtree case violated Nelson (id. at 11-13); (iii) that the panel violated Star

Scientific by reviewing for abuse of discretion, rather than clear error (id. at 13-15); and (iv) that

the panel improperly failed to review the ‘037 summary judgment de novo (id. at 15-17).

The Federal Circuit denied rehearing on June 30, 2020. App. D. This Petition followed.

ARGUMENT

The Federal Circuit’s decision below “conflict[s] with the decision[s] of []other United

States Court[s] of appeals on the same important matter[s],” and “has so far departed from the

accepted and usual course of judicial proceedings . . . as to call for an exercise of this Court’s

supervisory power” (Sup. Ct. R. 10(a)), because: (i) it violated the uniform rule of all circuits that

an issue decided on partial summary judgment is reviewed de novo; (ii) it violated the rule of the

First, Second, Third, Fifth, Sixth, Seventh, and DC Circuits that an issue resolved on partial

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summary judgment is conclusively established unless the district court expressly notifies the

parties that it is being reopened; and (iii) it violated the rule of the Third, Sixth, Seventh, Eighth,

Ninth, and DC Circuits that a “predicate” decision must be reviewed first, under the appropriate

appellate standard, before any later decision depending on the predicate decision is reviewed.

All of these issues are matters of great import. Unless the Federal Circuit’s erroneous

precedential decision is reversed, every patent litigant in the nation (and all other litigants who

appear before the Federal Circuit, such as litigants in the Court of Federal Claims, the Court of

International Trade, etc.) will be bound by it. This would severely burden all such litigants, by

subjecting them to an appellate regime in which the Federal Circuit—when it suits its interests—

can effectively deny meaningful review, by reviewing issues that should be reviewed de novo

under a far stricter standard (such as the virtually insurmountable “abuse of discretion” standard).

This would incentivize—indeed, compel—all such litigants to seek immediate interlocutory

review of all partial summary judgment orders under Fed. R. Civ. P. 54(b), because that would be

the only way to ensure the Federal Circuit actually reviews the summary judgment decision de

novo. Such incentives directly violate “the historic federal policy against piecemeal appeals.”

Sears, Roebuck & Co. v. Mackey, 351 U.S. 427, 438 (1956). Moreover, unless reversed, the Federal

Circuit’s decision will lead many future litigants to lose their Seventh Amendment rights, by

denying them the important safeguard of de novo review of an adverse summary judgment.

Thus, this Court should review the case on certiorari, to alleviate the pernicious effects of

the panel’s decision, and to remind the Federal Circuit that—although it has unique competence

in matters of patent law—on issues of procedural law, it must conform its jurisprudence to the

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prevailing standards in this Court and the other courts of appeal.10

This Court Should Grant Certiorari to Reaffirm that Issues Decided on

Partial Summary Judgment Must Be Reviewed De Novo, Based on the

Record As It Existed at the Time of Summary Judgment

Prior to the Federal Circuit’s decision in this case, every Circuit had held that an issue

decided on partial summary judgment must be reviewed de novo. See Velez v. Awning Windows,

Inc., 375 F.3d 35, 41 (1st Cir. 2004) (“We review the merits of the entry of partial summary

judgment de novo”); Rogath v. Siebenmann, 129 F.3d 261, 263 (2d Cir. 1997) (same); Morgan v.

Covington Twp., 648 F.3d 172, 177 (3d Cir. 2011) (same); Carlson v. Bos. Sci. Corp., 856 F.3d

320, 324 (4th Cir. 2017) (same); Burns v. Exxon Corp., 158 F.3d 336, 340 (5th Cir. 1998) (same);

Coach, Inc. v. Goodfellow, 717 F.3d 498, 502 (6th Cir. 2013) (same); Roland v. Langlois, 945 F.2d

956, 960 (7th Cir. 1991) (same); Day v. Celadon Trucking Servs., Inc., 827 F.3d 817, 826 (8th Cir.

2016); Amdahl Corp. v. Profit Freight Sys., Inc., 65 F.3d 144, 146 (9th Cir. 1995) (same); Qwest

Corp. v. AT & T Corp., 479 F.3d 1206, 1209 (10th Cir. 2007) (same); Nat'l R.R. Passenger Corp.

(Amtrak) v. Rountree Transp. & Rigging, Inc., 422 F.3d 1275, 1282 (11th Cir. 2005) (same); Am.

Council of the Blind v. Paulson, 525 F.3d 1256, 1272 (D.C. Cir. 2008) (same). Indeed, the Federal

Circuit itself had previously held that a partial summary judgment must be reviewed de novo.

Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1062 (Fed. Cir. 2005).

Meanwhile, prior to the Federal Circuit’s decision in this case, every Circuit (including the

Federal Circuit itself) had held that a partial summary judgment must be reviewed based on the

This Court has been required to send this message to the Federal Circuit several times in the

recent past. See, e.g., eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 392 (2006) (reversing

Federal Circuit’s special rule that permanent injunction is presumed after finding of patent

infringement); Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 553 (2014)

(reversing Federal Circuit’s “unduly rigid” test for “exceptional case” under 35 U.S.C. § 285);

Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1932 (2016) (reversing Federal Circuit’s

“unduly rigid” test for entitlement to enhanced damages under 35 U.S.C. § 284).

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record as it existed at the time of summary judgment. Voutour v. Vitale, 761 F.2d 812, 817 (1st

Cir. 1985) (“Our review is confined to an examination of the materials before the court at the time

the [partial summary judgment] rulings were made. Neither the evidence offered subsequently at

the trial nor the verdict is relevant”); U.S. E. Telecommunications, Inc. v. US W. Commc'ns Servs.,

Inc., 38 F.3d 1289, 1301 (2d Cir. 1994) (same); Ciarlante v. Brown & Williamson Tobacco Corp.,

143 F.3d 139, 147 (3d Cir. 1998) (same); Variety Stores, Inc. v. Wal-Mart Stores, Inc., 888 F.3d

651, 657 (4th Cir. 2018) (same); Nissho-Iwai Am. Corp. v. Kline, 845 F.2d 1300, 1307 (5th Cir.

1988) (same); Coach, Inc. v. Goodfellow, 717 F.3d 498, 502 (6th Cir. 2013) (same); Freeland v.

Enodis Corp., 540 F.3d 721, 738 (7th Cir. 2008) (same); Amerinet, Inc. v. Xerox Corp., 972 F.2d

1483, 1489–90 (8th Cir. 1992) (same); Lippi v. City Bank, 955 F.2d 599, 604 (9th Cir. 1992)

(same); United States v. Hardage, 982 F.2d 1436, 1444–45 (10th Cir. 1992) (same); Chapman v.

AI Transp., 229 F.3d 1012, 1026-27 (11th Cir. 2000) (same); Singh v. George Washington Univ.

Sch. of Med. & Health Scis., 508 F.3d 1097, 1106 (D.C. Cir. 2007) (same); Glaros v. H.H.

Robertson Co., 797 F.2d 1564, 1568–69 (Fed. Cir. 1986) (same).

The Federal Circuit’s decision below violated both rules. The issue of whether the AgriEnergy Proposal invoked an invalidating on-sale bar was conclusively decided on partial summary

judgment. App. C at 164-174. Respondents admitted as much, by arguing to the district court:

In granting summary judgment for invalidity on the basis of the

inventors’ 2003 dealings with Agri-Energy, this Court decided that

the Offer Letter and the 2003 testing and sales diagram were

material. Summary judgment having already been decided on this

issue in Defendants’ favor, this Court should exclude any evidence

that the offer was immaterial.

Appx64385. Because the on-sale bar issue was decided on partial summary judgment, the Federal

Circuit should have reviewed it de novo, based on the record at summary judgment.

It did not. Instead, it expressly reviewed the on-sale bar decision—i.e., both prongs of the

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Pfaff analysis—for abuse of discretion. App. A at 26 (“District Court Did Not Abuse Its Discretion

. . . [in finding] a Pre-Critical Date Offer for Sale”), 28 (“District Court Did Not Abuse Its

Discretion . . . [in finding] Ready for Patenting”). Moreover, the Federal Circuit’s analysis

expressly relied on evidence that was not before the district court on summary judgment. See App.

A at 25, n. 15 (relying on “other relevant evidence during the trial”), 30 (relying on the fact that

certain “testimony . . . was discredited by the District Court” at trial). Thus, the Federal Circuit

violated both rules that are uniformly followed by the courts of appeal: i.e., that partial summary

judgment is reviewed de novo, and that such review is confined to the summary judgment record.

The impropriety of the Federal Circuit’s analysis is confirmed by noting that, while the

Federal Circuit purported to be reviewing a “materiality” decision made after trial, virtually every

citation in its “on-sale bar” analysis was to the district court’s summary judgment decision. The

summary judgment decision was Joint Appendix pages 1-233 (with pages 164-174 directed to the

on-sale bar); the inequitable conduct decision was pages 236-313. In the Federal Circuit’s analysis

of the “On-Sale Bar” (App. A at 26-31), every single citation to the decisions below, except one,

was to pages in the range of J.A. 1-233; i.e., to the summary judgment decision. See, e.g., App. A

at 26 (citing “J.A. 167”), 27 (citing “J.A. 169,” “J.A 167,” and “J.A. 170-72”), 28 (citing “J.A.

126-27” and “J.A. 125-26”), 29 (citing “J.A. 125-26, 171,” “J.A. 127,” and “J.A. 130-32”), 30

(citing “J.A. 172,” “J.A. 167,” and “J.A. 172-73”), and 31 (citing “J.A. 173”).

Thus, clearly, the Federal Circuit was not reviewing a “bench trial finding” (because there

was none)—it was reviewing the summary judgment of on-sale bar. Based on the uniform rules

of the courts of appeal, that summary judgment had to be reviewed de novo. It was not. Instead,

the Federal Circuit reviewed it under the insurmountable “abuse of discretion” standard. And, in

so doing, the Federal Circuit improperly relied on evidence not in the summary judgment record.

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Certiorari should be granted to correct these manifest violations of the rules of appellate practice,

and to ensure that future litigants are not deprived of the important Seventh Amendment safeguard

provided by de novo review of an adverse summary judgment.

This Court Should Grant Certiorari to Reaffirm that Issues Resolved on

Partial Summary Judgment Are Conclusively Established, Unless the

District Court Expressly Reopens Them

The Federal Circuit panel justified its “abuse of discretion” review of the on-sale bar

decision by claiming that the on-sale issue had been “squarely before” the district court during the

bench trial. App. A at 25, n. 15. But every Circuit that has addressed the issue has held that, once

an issue is resolved on partial summary judgment, it is out of the case, and the parties are entitled

to treat it as conclusively established, unless the district court expressly reopens it. Here, the district

court never “expressly reopened” the on-sale issue: to the contrary, it granted Respondents’

motion in limine to exclude all evidence relating to that issue from the trial. Thus, this Court should

grant certiorari, to reaffirm and adopt the salutary rule that issues resolved on partial summary

judgment are out of the case, absent express reopening by the district court.

The first Circuit to adopt this rule was the Second Circuit, in Leddy v. Standard Drywall,

Inc., 875 F.2d 383, 386 (2d Cir.1989). There, the Second Circuit held:

Once a district judge issues a partial summary judgment order

removing certain claims from a case, the parties have a right to rely

on the ruling by forbearing from introducing any evidence or crossexamining witnesses in regard to those claims. If, as allowed by

Rule 54(b), the judge subsequently changes the initial ruling and

broadens the scope of the trial, the judge must inform the parties

and give them an opportunity to present evidence relating to the

newly revived issue. Failure to do so might in some circumstances

cause substantial prejudice.

Id. (emphasis added). The rule of Leddy is sound. Once a district court enters partial summary

judgment on an issue, no reasonable litigant would think she needs to spend precious trial time relitigating that issue, on the off-chance that the district court (or, here, the appellate court) might

1933580.1

deem the issue “reopened” at trial. Indeed, in most cases, the district court would preclude any

attempt to re-litigate the issue. That is exactly what happened here, when the district court granted

Respondents’ motion in limine to exclude all evidence on “materiality” (i.e., on whether the AgriEnergy Proposal invoked an on-sale bar). Appx64556, ¶ 4.

It is manifestly unfair to preclude a party from re-litigating an issue at trial, only to rule

after the fact that the issue had been “reopened” at trial, such that it can be reviewed under the

more-lenient standard governing review of the trial decision. Yet, that is exactly what happened

here. The rule of Leddy ensures this will not happen, by ensuring that an issue is “reopened” only

if the district court expressly notifies the parties it is being reopened. This Court should grant

certiorari to adopt Leddy as the law of the land, so that future litigants do not find themselves in

the unfortunate (and plainly prejudicial) position CleanTech finds itself in here.

Recognizing its salutary effects, many Circuits have adopted Leddy; none have rejected it.

See Alberty-Velez v. Corporacion De Puerto Rico Para La Difusion Publica, 242 F.3d 418, 422

(1st Cir. 2001) (citing Leddy to adopt rule that “if the judge ‘subsequently changes the initial ruling

and broadens the scope of trial, the judge must inform the parties and give them an opportunity to

present evidence relating to the newly revived issue’”); Hayduk v. City of Johnstown, 386 F. App'x

55, 61-62 (3d Cir. 2010) (same); Dillon v. Cobra Power Corp., 560 F.3d 591, 597 (6th Cir. 2009)

(same); Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 952 (7th Cir. 1992) (same);

Singh v. George Washington Univ. Sch. of Med. & Health Scis., 508 F.3d 1097, 1106 (D.C. Cir.

2007) (same). Indeed, even the Federal Circuit—while not expressly adopting Leddy—has noted

that “[a]n order granting [partial summary] judgment on certain issues is a judgment on those

issues. It forecloses further dispute on those issues at the trial stage.” Glaros, 797 F.2d at 1573.

The First Circuit’s analysis of the issue in Alberty-Velez was particularly astute. There,

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prior to trial, the district court granted partial summary judgment that the plaintiff, in an

employment discrimination case, was an employee of the defendant. Alberty-Velez, 242 F.3d at

421. At the end of trial, the defendant moved for judgment as a matter of law, on the grounds that

the evidence at trial showed that the plaintiff was not an employee. Id. at 422. The district court

granted the motion. Id. This amounted to a reversal of the partial summary judgment ruling. Id.

Plaintiff objected. Id. at 423. Plaintiff argued that the unexpected reversal fatally prejudiced her

case, because if she had known a reversal was possible, she would have put on evidence to show

that she was an employee. Id. at 424-5. The district court rejected this argument, but the First

Circuit accepted it. Id. It held that “[t]he prejudice to her case could not be more palpable,” because

she expressly relied on the partial summary judgment to forbear from adducing any evidence on

the question of whether she was an employee. Id. at 425-6. The First Circuit adopted the rule of

Leddy, and held that the district court violated that rule by failing to notify the plaintiff it was

planning to reverse its partial summary judgment. Id. The First Circuit held that the only effective

remedy was to vacate the judgment and remand for a new trial, which it did. Id.

Here, CleanTech was at least as prejudiced as the plaintiff in Alberty-Velez. CleanTech

expressly relied on the summary judgment of on-sale bar to forebear from re-litigating that issue

at trial. Indeed, the one effort CleanTech made to introduce new evidence on the on-sale question

(i.e., the allowance of the ‘997 application) was rejected, based on Respondents’ motion in limine,

which argued that the issue was conclusively resolved. Thus, certiorari is warranted, to correct the

injustice done to CleanTech, and to ensure that future litigants do not suffer from similar injustice.

This case is indistinguishable from Leddy, even given the district court’s post-trial

statement that the “evidence at trial only buttresse[d] the Court’s earlier conclusion . . . [of an] onsale bar.” App. B at 59. While the Federal Circuit relied heavily on this statement, App. A at 26,

1933580.1

n. 15, it does not distinguish this case from Leddy. Under the salutary rule of Leddy, the district

court was not entitled to make new findings on the on-sale bar after trial, because that issue was

decided on summary judgment, and the district court never notified CleanTech it was being

reopened. Thus, the district court’s comment that the trial evidence “buttressed” the summary

judgment decision did not, and could not, retroactively “convert” the summary judgment decision

(reviewed de novo) into a bench trial decision (reviewed for abuse of discretion).

The Seventh Circuit faced this same argument in Quaker Oats. There, in a trademark

infringement case, the district court granted partial summary judgment prior to trial, rejecting the

defendant’s “fair use” defense. 978 F.2d at 951. The district court subsequently held a bench trial

on the remaining issues, including infringement and damages. Id. After trial, the district court

entered an order finding infringement, and awarding damages. Id. The defendant appealed. Id. On

appeal, the plaintiff argued that the “fair use” decision should be reviewed “under the clearly

erroneous standard,” rather than de novo, even though the issue had been decided on summary

judgment. Id. at 952, n. 5. The proffered justification was that, “[i]n its opinion following the bench

trial, the district court reaffirmed its holding that ‘defendant's use . . . did not constitute fair use.’”

Id. (emphasis added). The plaintiff argued that this statement of “reaffirmance” converted the

summary judgment of no fair use into “a factual finding subject to review under the clearly

erroneous standard.” Id. The Seventh Circuit disagreed. Citing Leddy, it held that “once the district

court granted summary judgment on the issue of fair use it could not thereafter try that issue

without notice to the parties.” Id. Thus, the Seventh Circuit reviewed the issue de novo. Id. at 952.

A similar situation occurred in the Fifth Circuit in Mohammadi v. Nwabuisi, 605 F. App'x

329 (5th Cir. 2015). There, in a Fair Labor Standards Act (FLSA) case, the district court granted

partial summary judgment to the plaintiff on “liability, liquidated damages, and the applicable

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limitations period.” Id. at 331. The district court then held a bench trial on the remaining issues.

Id. After the bench trial, the district court entered a decision, awarding damages. Id. Defendant

appealed. Id. The plaintiff argued that the pre-trial partial summary judgments should be reviewed

for clear error, rather than de novo, because the post-trial decision “stated that [defendant] failed

to present any evidence during the trial to call into question the summary judgment.” Id. Plaintiff

argued that this “statement” converted the pre-trial summary judgment to a bench trial finding,

reviewed for clear error. Id. The Fifth Circuit disagreed. Id. It held: “These comments . . . do not

establish [that the summary judgment issues] were re-tried in the bench trial. Accordingly, the

above-discussed de novo review applies for the partial summary judgment.” Id.

This case is indistinguishable from Quaker Oats and Mohammadi. For the reasons stated

in those cases, the district court’s statement below that the trial evidence “buttressed” its earlier

summary judgment of on-sale bar did not, and could not, convert the summary judgment (reviewed

de novo) into a bench trial finding (reviewed for abuse of discretion). Thus, this Court should grant

certiorari, to correct the manifestly incorrect standard of review applied by the Federal Circuit.

Nor does the Federal Circuit’s statement below that “the District Court admitted other

relevant evidence during the trial, including . . . previously unheard testimony . . . all relating to

the materiality of the July 2003 Proposal,” App. A at 25, n. 15, justify a departure from de novo

review. That statement—made without citation—was simply not true. While new evidence,

including new testimony, was indeed admitted at the trial, that evidence was not admitted on the

question of materiality—it was admitted on the question of intent. In re: (‘858) Patent Litigation,

S.D. Ind. Case No. 10-ml-02181, ECF 1649 at 23-24 of 79 (Appellees’ closing argument: “what

this case is really about is intent to deceive.”) The Federal Circuit’s inaccurate, and unsupported,

statement that new evidence was entered “on materiality” cannot, and does not, rewrite the actual

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record, in which no new evidence on materiality was entered, and the only new evidence on that

issue CleanTech sought to adduce—the ‘997 allowance—was expressly excluded. Appx64556.11

Likewise, while the Federal Circuit’s opinion stated that “CleanTech itself raised

materiality in its pre-trial briefing,” App. A at 37, the only new evidence CleanTech sought to

introduce relevant to materiality was the ‘997 allowance, which occurred after the district court

entered its summary judgment decision. Appx63467-63468. And, critically, CleanTech was

precluded from introducing that evidence, because the district court granted Respondents’ motion

in limine, which was expressly predicated on the argument that the on-sale bar issue had been

conclusively decided on summary judgment.

Finally, “materiality” cannot be separately found under the Federal Circuit’s “exception”

to but-for materiality “in cases of affirmative egregious misconduct.” Therasense, 649 F.3d at

1292. Neither the district court nor the Federal Circuit applied this exception; thus, it would not be

proper for this Court to do so in the first instance. Moreover, the language in Therasense relating

to this “exception” was dicta, because in Therasense, there was no “affirmative” misconduct,

merely a failure to disclose materials to the patent office. Id. at 1295-96. CleanTech is not aware

of any case in which the Federal Circuit applied the “affirmative egregious misconduct” exception

to find an “affirmative” act that had no effect on patentability to be “material.”

The Federal Circuit cited a portion of the pre-trial conference transcript in which the district

court stated that the motion in limine raised “I think, [a Rule] 403 kind of circumstance.” App. A

at 38. But that was merely colloquy; the district court’s order granting the motion in limine made

no reference to Rule 403 (Appx64556, ¶ 4), and Respondents’ motion in limine also made no

mention of Rule 403 (Appx64380-64385). In any event, it is clear that the reason the district court

found the ‘997 allowance had little “probative value” was because the materiality issue was no

longer in the case, and the subsequent allowance had little relevance to the inventors’ (and Cantor

Colburn’s) state of mind at the time of prosecution. In re: (‘858) Patent Litigation, S.D. Ind. Case

No. 10-ml-02181, ECF 1648 at 100-104 of 234. Thus, the district court’s reference to Rule 403 (in

colloquy) does not change the fact that the on-sale bar issue was not reopened at trial.

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Here, the only “affirmative” alleged misconduct—the incorrect statement in the First

Cantrell Declaration as to the delivery date—had no effect on patentability, because under any

proper analysis, the Agri-Energy Proposal did not invoke an on-sale bar regardless of the delivery

date. Examiner Carr herself, the Examiner who examined the Patents-in-Suit, recently

acknowledged this, by withdrawing objections based on the Proposal, and allowing claims in the

‘083 patent having substantially the same scope as the claims in the Patents-in-Suit. See n. 7 supra.

Moreover, there was no alleged “affirmative” misconduct during prosecution of the ‘858 patent:

the only alleged misconduct there was the failure to disclose the Proposal to the patent office.

Under Federal Circuit precedent, events that occur after a patent has already issued cannot render

that patent unenforceable for inequitable conduct. Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 537

F.3d 1357, 1370, n. 10 (Fed. Cir. 2008). Here, the ‘858 patent issued on October 13, 2009

(Appx900), well before the First Cantrell Declaration was submitted to the USPTO, in prosecution

of the ‘516 and ‘517 patents, on November 16, 2010. App. B at 41-42. Thus, even if materiality

could be found under the “affirmative egregious misconduct” exception (which it cannot), that

finding would not apply to the ‘858 patent, and it would still be necessary to remand to the Federal

Circuit for de novo review of the summary judgment as to that patent.

Accordingly, for the foregoing reasons, this Court should grant certiorari to adopt Leddy,

and to affirm that issues resolved on partial summary judgment are withdrawn from the case, unless

the district court expressly notifies the parties otherwise. This salutary rule will protect future

litigants from the unfair surprise of issues being retroactively deemed “reopened” at trial.

This Court Should Grant Certiorari to Confirm that “Predicate” Issues Must

Be Reviewed First, Under the Appropriate Legal Standard

Logic, fairness and precedent dictate that, when a district court’s earlier decision “A”

underlies, or forms an essential basis for, its subsequent decision “B,” and decision A is reviewed

1933580.1

under a more favorable standard than decision B, decision A must be reviewed first, and if it is

reversed, decision B must also be reversed. This is essential to ensure that the appellant actually

receives the favorable standard of review on decision A to which they are entitled.

This case falls exactly into this paradigm. Here, the district court’s partial summary

judgment of on-sale bar—decision “A”—formed an essential basis for its bench trial finding of

inequitable conduct—decision “B.” That is because, as Respondents admitted, the summary

judgment of on-sale bar conclusively established the “materiality” prong of inequitable conduct,

leaving only the “intent” prong to be decided. See In re: Method for Processing Ethanol

Byproducts and Related Subsystem (‘858) Patent Litigation, S.D. Ind. Case No. 10-ml-02181, ECF

1576 at 33 of 35 (Respondents’ pretrial brief: “Because the Court’s summary judgment order

resolved the issue of materiality, the only issue to be decided at trial is whether Applicants acted

with deceptive intent.”) Thus, the district court’s decision A—the summary judgment of on-sale

bar—should have been reviewed first, under the proper de novo standard. If the summary judgment

of on-sale bar had been reversed, then the inequitable conduct decision would also have to be

reversed, because it logically depended on the summary judgment of on-sale bar. App. B at 59.

The Federal Circuit did the exact opposite. It expressly refused to review the summary

judgment of on-sale bar—decision A—first. App. A at 25, n. 15 (“Despite CleanTech’s arguments

to the contrary . . . we will address the issue of inequitable conduct without first conducting a de

novo review of the District Court’s summary judgment [of] on-sale bar.”) Instead, it jumped

straight to reviewing decision B, the inequitable conduct decision. In doing so, it treated the onsale issue as though it had been decided at the inequitable conduct trial—when it had not—and

erroneously reviewed that issue for abuse of discretion, even though it had been decided on

summary judgment, which requires de novo review. App. A at 26-31. All of the prejudice and error

1933580.1

that resulted flowed from the Federal Circuit’s erroneous refusal to review the on-sale summary

judgment decision first, under the proper standard of review (de novo).

Every Circuit that has addressed the issue has held that, when decision A forms an essential

predicate for decision B, decision A must be reviewed first, under the proper standard of review.

For instance, in John F. Harkins Co. v. Waldinger Corp., 796 F.2d 657 (3d Cir. 1986), the

Third Circuit reviewed a district court’s injunction staying arbitration between two contractors. Id.

at 658-9. The district court had granted the injunction because it found, based on its interpretation

of the contract language, that the dispute between the contractors was not arbitrable. Id. On appeal,

the Third Circuit noted that “terms of an injunction are normally reviewed for abuse of discretion.”

Id. However, it also noted that “any determination that is a prerequisite to the issuance of an

injunction, i.e., the [interpretation of a] term of a contractual arbitration provision, is reviewed

according to the standard applicable to that particular determination.” Id. (emphases added).

Thus, before the Third Circuit could conduct an “abuse of discretion” review of the injunction, it

had to determine whether “the district court erred in construing the contract's arbitration language.”

Id. The Third Circuit held that the district court’s contract interpretation should be reviewed for

“clear error,” because the district court considered “extrinsic evidence that went to the issue of [the

parties’] intent.” Id. at 660. Applying that standard, the Third Circuit affirmed the district court’s

interpretation of the contract. Id. at 663. Based on that affirmance, the Third Circuit automatically

found there was no “abuse of discretion” in granting the injunction, because the only alleged error

was the district court’s interpretation of the contract language. Id. at 663. Thus, the Third Circuit

reviewed the underlying “decision A”—the interpretation of the contract language—first, under

the proper “clear error” standard, before reviewing the ultimate “decision B”—the decision

enjoining the arbitration—under the “abuse of discretion” standard. Id.

1933580.1

Similarly, in Martin v. Associated Truck Lines, Inc., 801 F.2d 246 (6th Cir. 1986), the Sixth

Circuit reviewed a district court’s denial of a plaintiff’s motion to amend its complaint. Id. at 248249. The Sixth Circuit noted that a denial of a motion to amend is typically reviewed “under an

abuse of discretion standard.” Id. However, in this case, the district court’s denial was based

“solely on a legal conclusion that the amended pleading would not withstand a motion to dismiss,”

i.e., that the amendment would be futile. Id. The Sixth Circuit held:

Whether an abuse of discretion occurred in such a case depends in

whole upon the correctness of the district court's predicate legal

conclusion [of futility]. Therefore, in this case we must review the

district court's conclusion that plaintiffs' state law claims are

preempted by federal law de novo. If the district court's conclusion

was proper, we must find no abuse of discretion.

Id. Thus, the Sixth Circuit held that it was required to review the “predicate” decision A—

the decision of futility—de novo, before reviewing the ultimate decision B—the decision to deny

leave to amend the complaint—under the “abuse of discretion” standard.

The same rule was followed by the Seventh Circuit in Quaker Oats. There, the district

court’s summary judgment denying defendant’s “fair use” defense was a necessary predicate to

the ultimate judgment of liability, because if the fair use defense had succeeded, there would have

been no liability. Quaker Oats, 978 F.2d at 951. Because fair use was a necessary predicate, the

Seventh Circuit reviewed fair use first, under the proper de novo standard. Id. at 951-954. Only

after affirming the summary judgment of no fair use did the Seventh Circuit proceed to review the

review the bench trial findings for “clear error.” Id. at 955-963. Thus, once again, the appeals court

reviewed the predicate decision A, de novo, before proceeding to review ultimate decision B.

The Eighth Circuit did the same thing in Straights & Gays for Equal. v. Osseo Area Sch.Dist. No. 279, 540 F.3d 911 (8th Cir. 2008). There, the Eighth Circuit reviewed a district court’s

permanent injunction. Id. at 913. The Eighth Circuit noted its general rule that it “review[s] the

1933580.1

district court's grant of injunctive relief for abuse of discretion.” Id. However, it also noted that

“[t]he district court predicated the injunction on its determination”—on summary judgment—that

“certain student groups receiving more favorable access than SAGE were noncurricular.” Id. The

Eighth Circuit determined that it must “examine first whether this conclusion was correct.” Id. The

Eighth Circuit further held that that decision must be “review[ed] de novo,” because it was resolved

on “partial summary judgment.” Id. The Eighth Circuit affirmed the summary judgment decision,

and then ultimately affirmed the injunction. Id. at 913-916. Thus, once again, the Eighth Circuit

reviewed the predicate decision A—the summary judgment on “more favorable access”—de novo,

before reviewing the ultimate decision B—granting the injunction—for abuse of discretion.

The Ninth Circuit followed this rule in Lovell v. Chandler, 303 F.3d 1039 (9th Cir. 2002).

There, the Ninth Circuit heard an appeal from two bench trials in which Americans with

Disabilities Act (ADA) plaintiffs were awarded damages against the state of Hawaii. Id. at 1047.

Prior to the bench trials, the district court had granted partial summary judgment, in an underlying

class action, that Hawaii was liable for ADA violations. Id. at 1044-45. The district court then

ordered the plaintiffs to file individual actions on the amount of damages. Id. The appeal was from

two of those individual actions. Id. The Ninth Circuit held that, before it could review the bench

trial findings in the individual cases, it had to review the partial summary judgment of liability in

the class action, because “[r]eview of the substance of that order [was] ‘necessary to ensure

meaningful review’ of the [bench trial] judgments.” Id. at 1049 (quoting Clinton v. Jones, 520 U.S.

681, 707 n. 41 (1997)). Thus, the Ninth Circuit first reviewed, “de novo,” the partial summary

judgment of liability. Id. at 1052-58. It affirmed the summary judgment. It then reviewed, for

“abuse of discretion,” the district court’s decision to award expert witness fees to the plaintiffs in

the bench trials, and affirmed. Id. at 1058-59. Thus, once again, the appeals court reviewed the

1933580.1

predicate decision A, de novo, before proceeding to the ultimate decision B (the damages award).

The DC Circuit did the same in Friends for All Children, Inc. v. Lockheed Aircraft Corp.,

746 F.2d 816 (D.C. Cir. 1984). There, the court heard an appeal from a grant of a preliminary

injunction. Id. at 823-824. The preliminary injunction was based on an earlier partial summary

judgment of liability. Id. at 818-23. On appeal, the DC Circuit held:

The District Court's entry of interim relief requires us to undertake a

two-step analysis. First, we will review the grant of partial summary

judgment with respect to the issue whether Lockheed is liable for the

cost of diagnostic examinations. Then we will review the propriety of

entering a mandatory preliminary injunction for which the grant of

summary judgment served as necessary predicate.

Id. at 824 (emphases added). Thus, the court reviewed the underlying predicate decision A

(summary judgment) before reviewing the dependent ultimate decision B (preliminary injunction).

Finally, the Federal Circuit itself followed this rule in Cross Med. Prod., Inc. v. Medtronic

Sofamor Danek, Inc., 424 F.3d 1293 (Fed. Cir. 2005). There, the Federal Circuit heard an appeal

from a permanent injunction forbidding infringement of a particular patent claim. Id. at 1299. The

injunction was predicated on an earlier “partial summary judgment order[]” finding that claim

infringed and valid. Id. The Federal Circuit held: “Because Cross Medical's success on the

merits”—an element of the permanent injunction inquiry—"turns on the propriety of the summary

judgment rulings, our review of the grant of the permanent injunction requires that we rule on the

summary judgment orders.” Id. at 1301 (emphasis added). Thus, the Federal Circuit began its

review by reviewing the partial summary judgment, “de novo.” Id. at 1302-24. The Federal Circuit

reversed the summary judgment of infringement, because there were genuine disputes of fact. Id.

The Federal Circuit then automatically vacated the injunction, because it was premised on the

summary judgment ruling. Id. at 1324. Thus, once again, the appeals court reviewed underlying

decision A (infringement), de novo, before proceeding to ultimate decision B (injunction).

1933580.1

As shown above, the Third, Sixth, Seventh, Eighth, Ninth, DC, and even Federal Circuits

have held that when decision A underlies subsequent decision B, decision A must be reviewed

first, under the appropriate standard. The Federal Circuit’s decision below violated that rule. Thus,

certiorari should be granted, to reaffirm the common-sense rule that underlying, predicate

decisions must be reviewed first, under the appropriate standard of review. Failure to adopt this

rule will likely lead future litigants, like CleanTech, to be deprived of the proper review.

CONCLUSION

The Federal Circuit’s decision ignored well-established precedent and violated several

uniformly-applied rules of appellate practice, thereby depriving CleanTech of its Seventh

Amendment right to a jury trial, improperly invalidating otherwise-valid patents, and establishing

a dangerous new national precedent that threatens untold harm to future litigants. Unless reversed,

the Federal Circuit’s decision will have pernicious effects in every patent case, and every other

case within the Federal Circuit’s jurisdiction. In order to avoid those pernicious effects, and to

correct the injustice done to CleanTech, certiorari should be granted.

Dated: November 25, 2020

Respectfully submitted,

LAWRENCE M. HADLEY (COUNSEL OF RECORD) (LHADLEY@GLASERWEIL.COM)

STEPHEN UNDERWOOD (SUNDERWOOD@GLASERWEIL.COM)

GLASER WEIL FINK HOWARD AVCHEN & SHAPIRO LLP

10250 Constellation Blvd., 19th Floor

Los Angeles, CA 90067

(310) 553-3000

Counsel for Petitioners

1933580.1

APPENDIX A

Case: 16-2231

Document: 164

Page: 1

Filed: 03/02/2020

United States Court of Appeals

for the Federal Circuit

______________________

GS CLEANTECH CORPORATION,

Plaintiff-Appellant

ADKINS ENERGY LLC,

Defendant-Cross-Appellant

______________________

2016-2231, 2017-1838

______________________

Appeals from the United States District Court for the

Northern District of Illinois in No. 1:10-cv-04391, Judge

Larry J. McKinney.

-------------------------------------------GS CLEANTECH CORPORATION, GREENSHIFT

CORPORATION,

Plaintiffs-Appellants

CANTOR COLBURN LLP

Interested Party

BIG RIVER RESOURCES GALVA, LLC, BIG RIVER

RESOURCES WEST BURLINGTON, LLC,

LINCOLNLAND AGRI-ENERGY, LLC, IROQUOIS

BIO-ENERGY COMPANY, LLC, CARDINAL

ETHANOL, LLC, LINCOLNWAY ENERGY, LLC,

Case: 16-2231

Document: 164

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Filed: 03/02/2020

GS CLEANTECH CORP. v. ADKINS ENERGY LLC

ICM, INC., BUSHMILLS ETHANOL, INC., AL-CORN

CLEAN FUEL, LLC, CHIPPEWA VALLEY

ETHANOL COMPANY, LLP, HEARTLAND CORN

PRODUCTS, GEA MECHANICAL EQUIPMENTUS,

INC., AS SUCCESSOR-IN-INTEREST TO GEA

WESTFALIA SEPARATOR, INC. PURSUANT TO

THE NOTICE OF MERGER FILED ON 4/28/2011,

ACE ETHANOL, LLC, BLUE FLINT ETHANOL LLC,

UNITED WISCONSIN GRAIN PRODUCERS, LLC,

FLOTTWEG SEPARATION TECHNOLOGY, INC.,

ADKINS ENERGY LLC, AEMETIS, INC., AEMETIS

ADVANCED FUELS KEYES, INC., LITTLE SIOUX

CORN PROCESSORS, LLLP, GUARDIAN ENERGY,

LLC, WESTERN NEW YORK ENERGY, LLC,

SOUTHWEST IOWA RENEWABLE ENERGY, LLC,

PACIFIC ETHANOL MAGIC VALLEY LLC,

PACIFIC ETHANOL STOCKTON, HOMELAND

ENERGY SOLUTIONS, LLC, PACIFIC ETHANOL,

INC., DAVID J. VANDER GRIEND,

Defendants-Appellees

______________________

2017-1832

______________________

Appeal from the United States District Court for the

Southern District of Indiana in Nos. 1:10-cv-00180-RLMDML, 1:10-cv-08000-RLM-DML, 1:10-cv-08001-RLMDML, 1:10-cv-08002-RLM-DML, 1:10-cv-08003-RLMDML, 1:10-cv-08004-RLM-DML, 1:10-cv-08005-RLMDML, 1:10-cv-08006-RLM-DML, 1:10-cv-08007-RLMDML, 1:10-cv-08008-RLM-DML, 1:10-cv-08009-RLMDML, 1:10-cv-08010-RLM-DML, 1:10-cv-08011-RLMDML, 1:10-ml-02181-RLM-DML, 1:13-cv-08012-RLMDML, 1:13-cv-08013-RLM-DML, 1:13-cv-08014-RLMDML, 1:13-cv-08015-RLM-DML, 1:13-cv-08016-RLMDML, 1:13-cv-08017-RLM-DML, 1:13-cv-08018-RLM-

Case: 16-2231

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GS CLEANTECH CORP. v. ADKINS ENERGY LLC

Filed: 03/02/2020

DML, 1:14-cv-08019-RLM-DML, 1:14-cv-08020-RLMDML, Judge Larry J. McKinney.

______________________

Decided: March 2, 2020

______________________

STEVEN B. POKOTILOW, Stroock & Stroock & Lavan

LLP, New York, NY, argued for plaintiffs-appellants. Also

represented by BINNI N. SHAH.

JOHN M. WEYRAUCH, Dicke, Billig & Czaja, PLLC, Minneapolis, MN, argued for defendants-appellees Big River

Resources Galva, LLC, Big River Resources West Burlington, LLC, Lincolnland Agri-Energy, LLC, Cardinal Ethanol, LLC, Lincolnway Energy, LLC, ICM, Inc., Flottweg

Separation Technology, Inc., Blue Flint Ethanol, LLC, David J. Vander Griend. Defendants-appellees Big River Resources Galva, LLC, Big River Resources West Burlington,

LLC, Lincolnland Agri-Energy, LLC, Cardinal Ethanol,

LLC, ICM, Inc., Flottweg Separation Technology, Inc., Little Sioux Corn Processors, LLLP, Guardian Energy, LLC,

Western New York Energy, LLC, Southwest Iowa Renewable Energy, LLC, Pacific Ethanol Magic Valley LLC, David J. Vander Griend also represented by PETER R.

FORREST.

MICHAEL BUCHANAN, Patterson Belknap Webb & Tyler

LLP, New York, NY, argued for defendants-appellees ACE

Ethanol, LLC, Aemetis Advanced Fuels Keyes, Inc.,

Aemetis, Inc., Al-Corn Clean Fuel, LLC, Big River Resources Galva, LLC, Big River Resources West Burlington,

LLC, Blue Flint Ethanol LLC, Bushmills Ethanol, Inc.,

Cardinal Ethanol, LLC, Chippewa Valley Ethanol Company, LLP, Flottweg Separation Technology, Inc., GEA Mechanical Equipment US, Inc., Guardian Energy, LLC,

Heartland Corn Products, Homeland Energy Solutions,

LLC, ICM, Inc., Iroquois Bio-Energy Company, LLC,

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GS CLEANTECH CORP. v. ADKINS ENERGY LLC

Lincolnland Agri-Energy, LLC, Lincolnway Energy, LLC,

Little Sioux Corn Processors, LLLP, Pacific Ethanol Magic

Valley LLC, Pacific Ethanol Stockton, Pacific Ethanol, Inc.,

Southwest Iowa Renewable Energy, LLC, United Wisconsin Grain Producers, LLC, David J. Vander Griend, Western New York Energy, LLC, Adkins Energy LLC.

KEITH DAVID PARR, Locke Lord LLP, Chicago, IL, for

defendant-cross-appellant. Also represented by HUGH S.

BALSAM, WASIM K. BLEIBEL, JAMES THOMAS PETERKA.

SPIRO BEREVESKOS, Woodard Emhardt Henry Reeves &

Wagner, LLP, Indianapolis, IN, for defendant-appellee Iroquois Bio-Energy Company, LLC. Also represented by

DANIEL JAMES LUEDERS, LISA A. HIDAY.

GLENN JOHNSON, McKee, Voorhees & Sease, P.L.C.,

Des Moines, IA, for defendant-appellee Lincolnway Energy, LLC.

JOHN DONALD BEST, Michael Best & Friedrich, LLP,

Madison, WI, for defendants-appellees Bushmills Ethanol,

Inc., Chippewa Valley Ethanol Company, LLP, Heartland

Corn Products, United Wisconsin Grain Producers, LLC.

Also represented by KENNETH M. ALBRIDGE, III, JOHN C.

SCHELLER.

MARC ANDRE AL, Stoel Rives LLP, Minneapolis, MN,

for defendant-appellee Al-Corn Clean Fuel, LLC.

RUTH RIVARD, Stinson LLP, Minneapolis, MN, for defendant-appellee Blue Flint Ethanol LLC.

CAMILLE L. URBAN, Brown, Winick, Graves, Gross, Baskerville & Schoenebaum, PLC, Des Moines, IA, for defendants-appellees Aemetis, Inc., Aemetis Advanced Fuels

Keyes, Inc., Pacific Ethanol Stockton, Homeland Energy

Case: 16-2231

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GS CLEANTECH CORP. v. ADKINS ENERGY LLC

Solutions, LLC, Pacific Ethanol, Inc. Also represented by

MICHAEL A. DEE.

______________________

Before REYNA, WALLACH, and HUGHES, Circuit Judges.

WALLACH, Circuit Judge.

The U.S. District Court for the Southern District of Indiana (“District Court”) found Appellants GS CleanTech

Corporation and Greenshift Corporation’s (together,

“CleanTech”) U.S. Patent Nos. 7,601,858 (“the ’858 patent”), 8,008,516 (“the ’516 patent”), 8,008,517 (“the ’517

patent”), and 8,283,484 (“the ’484 patent”) (together, “the

Patents-in-Suit”) unenforceable due to inequitable conduct. Corrected Memorandum Opinion & Order after

Bench Trial, In re: Method of Processing Ethanol Byproducts & Related Subsystems (’858) Patent Litig., No. 1:10ml-02181-LJM-DML (S.D. Ind. Sept. 15, 2016), ECF

No. 1653 (J.A. 236–313) (Opinion and Order); see J.A. 314–

15 (Judgment).

CleanTech appeals. We have jurisdiction pursuant to

28 U.S.C. § 1295(a)(1) (2012). We affirm.

BACKGROUND

I. The Patents-in-Suit 1

The Patents-in-Suit are directed to the recovery of oil

from a dry mill ethanol plant’s byproduct, called thin stillage. ’858 patent, Abstract. 2 The Patents-in-Suit disclose

The Patents-in-Suit share a specification. For the

ease of reference here, we will refer to the ’858 patent’s

specification.

Stillage treatment relates to the process of treating

“‘whole stillage[,]’” which is the “waste stream comprised of

byproducts” that is a result of the dry milling process. ’858

patent col. 1 ll. 35–41. Dry milling is “a popular method of

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a method of “successful” “recover[y] [of] the valuable oil

from th[e] [thin stillage] byproduct,” id. col. 1 ll. 52–53, by,

for example, “evaporating the thin stillage to form a concentrate,” id. col. 2 ll. 23–25, or syrup, and then “separating the oil from the concentrate using a disk stack

centrifuge,” id. col. 2 ll. 25–27.

Independent claim 8 of the ’858 patent recites:

A method of recovering oil from thin stillage, comprising, in sequence: evaporating the thin stillage to create

a concentrate having a moisture content of greater

than 30% by weight and less than about 90% by

weight; and centrifuging the concentrate to recover oil.

Id. col. 6 ll. 26–30. 3 Independent claims 1, 10, and 16 include a separate post-evaporation heating step. Id. col. 5

l. 65–col. 6 l. 7 (Independent Claim 1), col. 6 ll. 34–42 (Independent Claim 10), col. 6 ll. 59–64 (Independent

Claim 16). All dependent claims recite various combinations of temperature, pH, or moisture content ranges for

the syrup or the use of the centrifuge. Id. col. 6 ll. 8–33,

43–58. Independent claim 30 of the ’484 patent similarly

recites a “method of recovering oil from thin stillage[,]” except it is by “mechanically processing the thin stillage concentrate” instead of centrifugation. ’484 patent col. 8

ll. 29–37.

producing ethanol . . . [and] is typically practiced using

corn.” Id. col. 1 ll. 35–37. Whole stillage, which has commonly been treated as waste, “may be further separated

into products known as distillers wet grains and ‘thin stillage.’” Id. col. 1 ll. 41–43.

Independent claim 8, which is illustrative, broadly

recites the claimed invention. The remaining claims recite

additional limitations beyond those recited in independent

claim 8.

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Independent claim 1 of the ’516 patent provides the additional step of “evaporating water from the thin stillage to

form a thin stillage concentrate.” ’516 patent col. 6 ll. 11–

19. Independent claim 7 includes the additional step of

“separating distiller wet grains and thin stillage from the

whole stillage” and using a disk stack centrifuge to separate the “oil from the thin stillage concentrate.” Id. col. 6

ll. 34–42. Independent claim 1 of the ’517 patent also recites the creation of the thin stillage concentrate, within a

broader moisture content range. ’517 patent col. 6 ll. 32–

37.

II. Factual History 4

A. Development of the Ethanol Oil Recovery System

In 2000, David Cantrell founded Vortex Dehydration

Technology (“VDT”), J.A. 117, with the purpose of selling

products and methods of processing factory waste for resale, J.A. 118. In 2002, David Winsness joined VDT as its

Chief Technology Officer. J.A. 117. Later in 2002, Messrs.

Cantrell and Winsness (collectively, “the Inventors”) met

Greg Barlage, a “market unit manager for equipment

sales” at the company Alfa Laval AB, which sold animal

and vegetable oil processing equipment. J.A. 117, 118.

Mr. Barlage approached the Inventors with the proposal

that VDT use Alfa Laval oil processing equipment—such

as evaporators and centrifuges—in its processes. J.A. 119.

Soon, the Inventors began developing an oil recovery product specifically designed for animal processing waste products, using centrifuges provided by Alfa Laval. J.A. 119.

Relevant here, VDT maintained a business relationship with Agri-Energy LLC (“Agri-Energy”), J.A. 121,

which operated a dry-mill ethanol plant in Minnesota,

We will rely on the District Court’s factual recitation where it is uncontested by the parties. Where certain

facts are disputed, we will refer to the record evidence.

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J.A. 120. 5

Starting sometime before June 2003,

Mr. Cantrell shifted his focus from meat and fish byproduct

processing to the creation of an ethanol oil recovery system

and hired employees from Alfa Laval and Agri-Energy, as

well as a marketing team. J.A. 122. In June 2003,

Mr. Cantrell sent an email to two Agri-Energy employees,

including one named George Winter, that included information about how VDT’s oil recovery system for processed

animal waste might be applicable in an ethanol plant, as

well as an image of an oil recovery system with a centrifuge

and an operational cost spreadsheet. J.A. 123. Subsequently, Mr. Cantrell informed Mr. Barlage that Agri-Energy would send Mr. Barlage a sample of its “thin stillage

The District Court discounted testimony provided

by Mr. Cantrell at the bench trial, determining that

Mr. Cantrell’s testimony “on any topic [to be] of little credible value.” J.A. 242. The District Court noted that

Mr. Cantrell made “inconsistent statements,” “had some

difficulty staying focused,” and “was argumentative and

unclear about facts when questioned by [Appellees’] counsel.” J.A. 242–43. The District Court stated that this was

in sharp contrast to Mr. Cantrell’s “fortuitously remember[ing] when events took place and recall[ing] the ‘real’

meaning of documents when questioned by CleanTech’s

lawyers.” J.A. 243. The District Court concluded that

“[Mr.] Cantrell’s testimony sounded carefully scripted rather than genuine and generally dismissive of the contemporaneous documentary evidence.” J.A. 243. Accordingly,

the District Court determined that it would “rel[y] primarily on the documents and testimony from other witnesses

about the relationship between Agri-Energy and inventors

during this period[.]” J.A. 243. “[We] give[] great deference

to the district court’s decisions regarding [the] credibility

of witnesses.” Ecolochem, Inc. v. S. Cal. Edison Co., 227

F.3d 1361, 1378–79 (Fed. Cir. 2000) (internal quotation

marks and citation omitted).

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and syrup” for oil recovery testing using a centrifuge.

J.A. 124. 6

In June 2003, Mr. Barlage performed oil recovery tests

on the Agri-Energy samples by heating each sample to a

temperature of 176 ºF and running them through an Alfa

Laval centrifuge. J.A. 125. The syrup had a pH of “approximately 4” and a “moisture content between 70% and 80%.”

J.A. 125. Based on the tests, Mr. Barlage concluded that it

was easier to divest oil from syrup than from thin stillage.

J.A. 125. In his report (“June 2003 Report”), Mr. Barlage

concluded that “[s]omething in the evaporation process allows for the product to breakdown to a level where the oil

can be taken out easily[,]” and recommended additional

testing at a plant. J.A. 110092.

In early July 2003, Mr. Barlage traveled to Agri-Energy and tested VDT’s oil recovery system, including a centrifuge, with Agri-Energy’s ethanol syrup (“July 2003

Test”). J.A. 128–29. Again, the test included a syrup with

a pH of around 4, with a moisture content between 70% and

80%, and the test was conducted at a temperature of

180 ºF. J.A. 128–29. During the test, the centrifuge separated the oil from the syrup, but the centrifuge repeatedly

clogged. J.A. 129. Around this time, Mr. Winsness directed a VDT employee to prepare a drawing of the ethanol

oil recovery system, J.A. 130–31, which was completed by

the end of July 2003, J.A. 132; see J.A. 110044 (Ethanol Oil

Recovery System Diagram). The employee understood that

the Ethanol Oil Recovery System Diagram “was intended

to become a sales drawing.” J.A. 17278.

On August 1, 2003, Mr. Cantrell emailed several AgriEnergy employees (“August 2003 Email”) and attached a

proposal, dated July 31, 2003.

J.A. 132–33; see

Ethanol syrup is concentrated thin stillage.

J.A. 124.

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J.A. 110021–22 (“July 2003 Proposal”). The July 2003 Proposal stated that VDT “would like to offer Agri-Energy a

No-Risk trial [of the] ‘Oil Recovery System.’” J.A. 110021.

The proposal stated that “[t]he test module is designed to

process 18,000 [pounds] per hour of evaporator condensate

and recovers 16,000 [pounds] of oil per day adding annual

profits of $312,000 to $530,000 per year.” J.A. 110021 (emphasis omitted). The proposal went on to detail the “NoRisk Trial,” which “allow[ed] Agri-Energy [sixty] days to

operate the unit and confirm its value[,]” at which point

Agri-Energy could “purchase the system” for $423,000 or

“return the skid to [VDT] (no questions asked).”

J.A. 110021 (emphasis omitted). According to the Inventors, the purpose of the letter was to seek an opportunity to

run in-plant tests and obtain data on how the test module

ran. J.A. 31418–19. Agri-Energy understood the July

2003 Proposal as an offer for purchase. J.A. 248.

On August 18, 2003, Mr. Cantrell traveled to Agri-Energy and, the following day, presented his proposal to the

Agri-Energy Board of Directors. J.A. 135. In the meeting,

Mr. Cantrell described VDT’s ethanol extraction system as

“a process where the corn oil is pulled off[,]” and he asserted

that the system “worked” and that it “would generate additional income[.]” J.A. 135–36. On the same day, Mr.

Winsness informed VDT shareholders that Mr. Cantrell

was “meeting with an ethanol plant” and the Inventors “expect[ed] to have an order in the near future ($400K).”

J.A. 136. On August 27, 2003, Mr. Cantrell informed

VDT’s chairman that “‘we have made an offer to Agri-Energy.’” J.A. 136. Agri-Energy did not accept the July 2003

Proposal, and no centrifuge system was installed at AgriEnergy’s facility at that time. J.A. 137; see J.A. 70656 (Testimony by Mr. Cantrell) (stating that Agri-Energy did not

accept the July 2003 Proposal). In early 2004, Agri-Energy

and VDT again communicated regarding the installation of

an oil recovery system, J.A. 137, and in May 2004, a centrifuge was installed in the Agri-Energy plant, J.A. 139.

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B. Patent Prosecution History

In February 2004, the Inventors contacted attorney

Andrew Dorisio about preparing a patent application for,

inter alia, their method of separating corn oil from concentrated thin stillage using a centrifuge. J.A. 251–52. Specifically, the Inventors sought to patent a method whereby

“[a]n evaporator would be used to concentrate thin stillage”

to a syrup with “a moisture content between 60% and 85%,”

and the syrup would then be mechanically processed to

separate out the oil, using a disk stack centrifuge. J.A. 251.

The temperature and pH of the thin stillage—150 ºF to

212 ºF and with a pH range from 3 to 6—would be the

standard values of thin stillage in an ethanol plant.

J.A. 251. Mr. Dorisio informed the Inventors about the onsale bar of 35 U.S.C. § 102 (2000), which required that the

claimed invention not be sold or offered for sale more than

one year before the application filing date, and inquired if

such an offer had been made. J.A. 252; see J.A. 111059; see

also 35 U.S.C. § 102(b) (“A person shall be entitled to a patent unless . . . the invention was . . . on sale . . . more than

one year prior to the date of the application for patent in

the United States[.]”). 7

Contemporaneous to their

Congress amended 35 U.S.C. § 102 when it passed

the Leahy-Smith America Invents Act (“AIA”), and AIA

§ 4(e) made those changes applicable to “any patent application that is filed on or after” September 16, 2012. Pub.

L. No. 112-29, § 4(e), 125 Stat. 284, 297 (2011). Because

the application that led to the Patents-in-Suit was filed before September 16, 2012, pre-AIA § 102 applies. Under

pre-AIA § 102, a person shall be entitled to a patent unless

the claimed invention was on sale more than one year before the application’s filing date. 35 U.S.C. § 102(b). A patent is invalid under the on-sale bar if, before the filing

date, the invention was both (1) the subject of a commercial

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discussion with Mr. Dorisio, the Inventors also conducted

research on the U.S. Patent and Trademark Office’s

(“USPTO”) website, which included information about provisional patent applications and the on-sale bar. J.A. 252.

Subsequently, the Inventors provided Mr. Dorisio with

test results from June 2003 and described the July 2003

Tests. J.A. 255. Mr. Dorisio, apparently without being told

about the July 2003 Proposal or the Ethanol Oil Recovery

System Diagram, filed U.S. Provisional Patent Application

No. 60/602,050 (“the ’050 provisional application”) on August 17, 2004, with the USPTO, J.A. 140, 151; see J.A. 900,

setting the critical date for the on-sale bar at August 17,

2003, J.A. 164. See Helsinn Healthcare S.A. v. Teva

Pharm. USA, Inc., 855 F.3d 1356, 1360 (Fed. Cir. 2017)

(“The critical date for the on-sale bar is one year earlier[.]”),

aff’d, 139 S. Ct. 628 (2019). In May 2005, Mr. Dorisio filed

a non-provisional application, U.S. Patent Application

No. 11/122,859 (“the ’859 application”). The’859 application included a letter stating that a separate patent application, entitled “Substantially Fat Free Products From

Whole Stillage Resulting from the Production of Ethanol

from Oil-Bearing Agricultural Products,” U.S. Patent Application No. 10/619,833 (“Prevost”), “may be found to claim

the same invention as at least one claim of the instant application.” J.A. 256 (internal quotation marks omitted).

In July 2005, Mr. Dorisio provided the Inventors with

a draft clearance opinion, based on his understanding that

the Inventors had reduced their claimed invention to practice in June 2003, and argued that the Inventors could

swear behind Prevost, which was filed on July 15, 2003.

J.A. 256; see J.A. 111060–74 (Draft Clearance Opinion); see

also J.A. 111065 (“Past correspondence indicates [the] actual reduction to practice of the [claimed invention] during

sale or offer for sale and (2) “ready for patenting.” See Pfaff

v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998).

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experiments conducted in early to mid-June 2003. If accurate, this date of invention precedes the filing date

of . . . [Prevost] by at least one month[.]”), 18286 (Prevost)

(providing a filing date of July 15, 2003). In 2006, the Inventors joined CleanTech, J.A. 35686, which acquired

VDT’s ethanol oil recovery method applications, J.A. 8–10. 8

In March 2008, Mr. Winsness transferred the prosecution of CleanTech’s ethanol oil recovery method applications from Mr. Dorisio to the law firm Cantor Colburn LLP

(“Cantor Colburn”). J.A. 257. An attorney at Cantor Colburn, Peter Hagerty, explained to at least one of the Inventors the on-sale bar and the Inventors’ obligation of candor

toward the USPTO. J.A. 54666. In June 2008, a USPTO

patent examiner rejected the ’859 application, based in

part on Prevost. J.A. 258. Cantor Colburn amended the

’859 application’s claims. J.A. 258. By at least September 2008, Cantor Colburn was aware of Mr. Barlage’s testing in June and July 2003. J.A. 111075; see J.A. 111075

(Mr. Winsness’s Email to Mr. Hagerty) (explaining that the

“testing we did in June 2003” showed that “a sequence of

evaporation followed by centrifugation allows for oil recovery”).

In May 2009, a potential investor in CleanTech conducted due diligence and sought information on the company’s pending patent applications; specifically, the

potential investor requested from the Inventors “‘pre-filing

disclosures of the inventions’” or “‘pre-filing offers for

sale[,]’” among other information.

J.A. 261; see

J.A. 111023. The Inventors denied having any such

The ’858 patent issued from the ’859 application,

J.A. 900, and all the remaining patents of the Patents-inSuit issued from applications that were continuations of

the ’859 application, J.A. 910, 921, 953. The Patents-inSuit claim effective filing dates of August 17, 2004.

J.A. 900, 910, 921, 953.

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information, although, in 2010, “Mr. Cantrell had retained

a ‘signed version’ of the July 2003 Proposal in his ‘home

files,’ and ‘an unsigned version was on [Mr.] Winsness’[s]

computer[.]’” J.A. 262; see J.A. 63882. In June 2009, Cantor Colburn withdrew the pending ’859 application from issue. J.A. 264; see J.A. 71338.

On the same day as the withdrawal, Cantor Colburn

filed a letter with the USPTO in the ’859 application file

disclosing that “[s]ometime in May 2004, feasibility testing

of a process and system for recovering oil from thin stillage

was performed[.]” J.A. 110380. The letter was also filed

with the USPTO in the prosecution of the ’516, ’517, and

’484 patents. J.A. 264–65; see J.A. 110371–78, 110697–99.

No reference was made to Mr. Barlage’s June and

July 2003 testing, the June 2003 Report, the Ethanol Oil

Recovery System Diagram, or the July 2003 Proposal. See

generally J.A. 110371–74, 110375–78, 110379–81, 110697–

99. In October 2009, the USPTO issued the ’858 patent.

J.A. 900.

C. The Two Cantrell Declarations

In March 2010, Mr. Winsness provided a signed copy of

the July 2003 Proposal to Cantor Colburn. J.A. 267; see

J.A. 63882. 9 Around June 2010, Mr. Hagerty drafted a

At trial, evidence showed that Mr. Winsness provided Cantor Colburn with two letters in March 2010: an

ink-signed original dated July 31, 2003, and an ink signed

original dated August 19, 2003. J.A. 63882. The two letters differed from the electronic versions sent by

Mr. Cantrell to Agri-Energy, such as by presenting a different letterhead. J.A. 266–67. The parties presented evidence about when each letter was signed, but the District

Court “f[ound] the results of the experts’ analyses inconclusive with respect to the dating” of the two letters. J.A. 267.

Additionally, the District Court concluded that “[i]f it had

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two-page Information Disclosure Statement (“IDS”) to be

submitted to the USPTO, attaching the July 2003 Proposal. J.A. 110793–95; see J.A. 270. In the IDS, Mr.

Hagerty claimed that the ’858 patent’s method was “never

disclosed, carried out, or performed” more than one year

before the filing date and that the July 2003 Proposal was

irrelevant. J.A. 110793–95.

In May and June 2010, Mr. Winsness met with a company that stated that it had reason to believe the ’858 patent, as well as the other Patents-in-Suit, were invalid due

to an offer in violation of the on-sale bar. J.A. 268. In late

June 2010, Mr. Winsness made an “unannounced” trip to

Agri-Energy and offered to provide Agri-Energy with a royalty-free license for CleanTech’s ethanol oil recovery system, which Agri-Energy refused. J.A. 146–47. AgriEnergy’s maintenance manager testified that he felt that

Mr. Winsness was offering “a royalty-free license in exchange for admitting the patent was valid.” J.A. 146.

Mr. Winsness testified that he had offered a royalty-free

system to Agri-Energy in 2004 and an “early adopter advantage” at an unspecified point in time. J.A. 269. Subsequently, in July 2010, Cantor Colburn attorney Michael

Rye provided Agri-Energy with a letter, asking Agri-Energy to “confirm” certain facts, including that VDT had not

provided Agri-Energy with drawings or diagrams “for the

not questioned [Mr.] Winsness’[s] veracity on other issues,

the [District] Court could certainly conclude from this that

[Mr.] Winsness has a propensity to evade the truth.”

J.A. 266. For the purposes of our analysis, this point is ancillary—albeit concerning regarding the candor of counsel

and their clients—to the significant fact that Mr. Cantrell

provided Agri-Energy with a version of the July 2003 Proposal by email on August 1, 2003, a fact that is now not

disputed. J.A. 155; see J.A. 110274 (Second Cantrell Declaration).

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proposed system in 2003” and that the system proposed to

Agri-Energy was for testing purposes. J.A. 147; see

J.A. 110322–23. Agri-Energy refused to verify the assertions, as it believed most of them to be “untrue.” J.A. 148.

Soon after, Mr. Cantrell claimed to Cantor Colburn that he

hand-delivered the July 2003 Proposal to Agri-Energy on

August 18, 2003, despite the letter bearing a date weeks

earlier. J.A. 148; see J.A. 70601.

In November 2010, Cantor Colburn filed a declaration

executed by Mr. Cantrell with the USPTO for the ’516 and

’517 patent applications and attached a copy of the

July 2003 Proposal. The declaration explained that Mr.

Cantrell had hand delivered the July 2003 Proposal to

Agri-Energy on August 18, 2003. J.A. 148; see J.A. 110016–

19 (First Cantrell Declaration). Cantor Colburn informed

the USPTO that the July 2003 Proposal did not violate the

on-sale bar, as it occurred less than a year before the application filing date. J.A. 148. Omitted from the disclosure

was Mr. Barlage’s Test Report, the Ethanol Oil Recovery

System Diagram, and Mr. Barlage’s June and July 2003

testing. See generally J.A. 110016–19. The USPTO issued

the ’516 and ’517 patents on August 30, 2011. See J.A. 910,

921.

In September 2011, Mr. Cantrell was deposed regarding the infringement lawsuit of the instant case. J.A. 148;

see J.A. 20185–249. Mr. Cantrell was shown the July 2003

Proposal emailed to Agri-Energy on August 1, 2003, and

Mr. Cantrell testified that the email was not authentic.

J.A. 278; see J.A. 20207–08. Mr. Cantrell later admitted

that it was “possible” that he sent the August 1 email.

J.A. 70601. Mr. Hagerty, when deposed in 2011, stated

that “‘it sent a chill up his spine’” when he learned that the

letter was sent on August 1, 2003. J.A. 278. The parties,

however, had stipulated during the March to August 2010

timeframe that Cantor Colburn was working under the impression that the July 2003 Proposal was sent on or near

August 1, 2003. J.A. 278–79. Mr. Hagerty testified that he

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was unconcerned about the July 2003 Proposal because it

did not “disclose anything or amount to an offer.” J.A. 279.

In July 2012, Cantor Colburn withdrew the ’484 patent

application, which also contained the First Cantrell Declaration, and filed a second declaration from Mr. Cantrell

with the USPTO, which stated that Mr. Cantrell had forgotten about sending the August 2003 Email with the

July 2003 Proposal attached. J.A. 155, see J.A. 110274

(Second Cantrell Declaration).

Notably, the Second

Cantrell Declaration did not provide any retractions of the

false information provided in the First Cantrell Declaration—that it misstated that the first delivery of the

July 2003 Proposal was on August 18, 2003—and did not

explain the significance of the email in the Second Cantrell

Declaration, which indicated a pre-critical date offer for

sale. See generally J.A. 110274. In October 2012, the ’484

patent issued. J.A. 953.

III. Procedural History

Starting in 2009 and continuing through 2014, CleanTech filed lawsuits against the Appellees 10 and Adkins

The Appellees are: Big River Resources Galva,

LLC; Big River Resources West Burlington, LLC; Lincolnland Agri-Energy, LLC; Iroquois Bio-Energy Company,

LLC; Cardinal Ethanol, LLC; Lincolnway Energy, LLC;

ICM, Inc.; Bushmills Ethanol, Inc.; Al-Corn Clean Fuel,

LLC; Chippewa Valley Ethanol Company, LLP; Heartland

Corn Products; GEA Mechanical Equipment US, Inc., as

Successor-in-Interest to GEA Westfalia Separator, Inc.;

Ace Ethanol, LLC; Blue Flint Ethanol, LLC; United Wisconsin Grain Producers, LLC; Flottweg Separation Technologies, Inc.; Aemetis, Inc.; Aemetis Advanced Fuels

Keyes, Inc.; Little Sioux Corn Processors, LLLP; Guardian

Energy, LLC; Western New York Energy, LLC; Southwest

Iowa Renewable Energy, LLC; Pacific Ethanol Magic

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Energy, LLC (“Adkins”) for infringement of the Patents-inSuit and CleanTech’s U.S. Patent No. 8,168,037 (“the ’037

patent”) in a number of actions that were subsequently

combined into a multidistrict litigation case. In 2013,

CleanTech moved for summary judgment. J.A. 1, 4–5. The

Appellees and Adkins moved for, inter alia, summary judgment on invalidity. J.A. 3–5. The District Court found

there was no infringement. J.A. 83, 86–87, 88, 90–91, 96.

The District Court determined that specified claims in the

lawsuit were invalid because of the on-sale bar, J.A. 174;

anticipation, J.A. 181; obviousness, J.A. 192, 217; incorrect

inventorship, J.A. 202; inadequate written description,

J.A. 195; lack of enablement, J.A. 197, 219; and indefiniteness, J.A. 205.11

Relevant here, the District Court determined that “undisputed contemporaneous evidence supports only one conclusion, the on-sale bar applies and invalidates the

[Patents-in-Suit] because,” first, “the July [2003] Proposal

was the culmination of a commercial offer for sale and,”

second, “the method described in the [Patents-in-Suit] had

either or both been reduced to practice or/and there was

sufficient description of the patented method” by the critical date to allow for the implementation of the patent.

J.A. 167. 12 The District Court explained that the July 2003

Valley LLC; Pacific Ethanol Stockton; Homeland Energy

Solutions, LLC; Pacific Ethanol, Inc.; and David J. Vander

Griend.

Notably, the August 2003 Email and the accompanying July 2003 Proposal were not produced during discovery in the infringement litigation before the District Court.

J.A. 134.

The District Court initially determined that the onsale bar did not apply to the ’484 patent, J.A. 174, but later

clarified its ruling, explaining that independent claim 30 of

the ’484 patent was invalid under the on-sale bar because

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Proposal contained the “major elements of a contract for

the sale of a system that could perform the patented

method . . . : [namely] all items necessary to recover oil

and the price.” J.A. 167. The District Court stated that the

“dealing between the parties” leading up to the July 2003

Proposal evidences both parties’ understanding that it was

an offer for sale. J.A. 168. The District Court relied upon

the communications between VDT and Agri-Energy, as

VDT had advised Agri-Energy about the system, how it

would work, what it was comprised of, where it should be

placed, what it would accomplish, and the cost of operation.

J.A. 168–69. The District Court concluded that, under the

Uniform Commercial Code (“UCC”), the signed proposal

would have constituted a commercial contract. J.A. 169.

Further, the District Court explained that other evidence

regarding VDT and Agri-Energy’s contact surrounding the

July 2003 Proposal corroborated its conclusion. J.A. 169–

70 (referencing the creation of the Ethanol Oil Recovery

System Diagram and Mr. Winsness’s announcement to

shareholders that VDT had made an offer to sell and that

the sale would lead to other sales). The District Court explained that a reasonable jury would not have concluded

that the July 2003 Proposal was an offer to test its claimed

invention as the Inventors knew the method could be successfully reduced to practice, J.A. 170–71 (listing evidence),

and had been reduced to practice, J.A. 172 (citing Mr. Barlage’s two instances of practicing the method in 2003); see

J.A. 172–73 (referencing other communications between

the Inventors, Agri-Energy, and others implicating a reduction to practice). Accordingly, the District Court invalidated all of the claims of the ’859, ’516, and ’517 patents,

it required the same steps as the claims of the ’859, ’516,

and ’517 patents that were also invalid, J.A. 234–35.

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and independent claim 30 of the ’484 patent pursuant to

the on-sale bar.13

Following its summary judgment determinations, the

District Court held an inequitable conduct bench trial.

In addition to the Patents-in-Suit, the District

Court addressed the ’037 patent, which was not included in

the subsequent inequitable conduct bench trial. J.A. 237–

38. The District Court determined that the ’037 patent was

obvious over Prevost and the Patents-in-Suit. J.A. 215–16;

see J.A. 214 (explaining that it was undisputed that the Patents-in-Suit served as prior art to the ’037 patent). Specifically, the District Court explained that Prevost and the

Patents-in-Suit teach the oil recovery method for concentrated thin stillage, which is used with evaporators, as is

disclosed by the ’037 patent. J.A. 215–16. Compare ’858

patent col. 5 ll. 28–30, with ’037 patent col. 10 ll. 56–67.

The District Court stated that a person having ordinary

skill in the art (“PHOSITA”) would have been “familiar

with the prior art ethanol plant processes,” like Prevost,

that “includ[e] evaporation of thin stillage to reduce the

moisture content before mixing it with wet distiller

grains[.]” J.A. 215. The District Court explained that the

Patents-in-Suit disclose dryer efficiencies that can be

achieved from the removal of oil from syrup prior to any

mixing with wet distiller grains. J.A. 215–16. Compare

’858 patent col. 4 ll. 54–56, col. 5 ll. 28–30, with ’037 patent

col. 10 ll. 61–67. Because Prevost and the Patents-in-Suit

disclose the drying of syrup after the oil extraction process

but before it is added back to the dried distiller wet grains,

we conclude that the District Court properly determined

that a PHOSITA would have been motivated to lower the

moisture content of the syrup, as disclosed in the ’037 patent. See Regents of Univ. of Cal. v. Broad Inst., Inc., 903

F.3d 1286, 1291 (Fed. Cir. 2018); see also 35 U.S.C.

§ 103(a).

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J.A. 237. Following the bench trial, in which the Inventors

and attorneys from Cantor Colburn testified, the District

Court concluded that additional evidence at trial supported

the District Court’s previous determination that the Patents-in-Suit were ready for patenting when the Inventors

provided the July 2003 Proposal to Agri-Energy. J.A. 294.

The District Court concluded that CleanTech committed

inequitable conduct through a “complete lack of regard for

their duty to the [USPTO].” J.A. 261. Moreover, the District Court determined that “the [I]nventors made a mistake” by “offer[ing] their invention for sale to Agri-Energy”

in “July/August 2003,” and “[l]ater, they took affirmative

steps to hide that fact from their lawyers, then, later [from]

the [US]PTO when they learned that it would prevent

them from profiting from the [Patents-in-Suit].” J.A. 299.

The District Court stated that the Inventors “purposefully

withheld the information about their dealings with AgriEnergy[,]” J.A. 263, and that they “acted to deceive the

[US]PTO about the facts of the discovery process of the invention[,]” J.A. 261. In discussing the Inventors’ “inten[t]

to deceive the [US]PTO,” the District Court stated that the

conclusion was evidenced by the fact that the Inventors “allowed [Mr.] Hagerty to file the feasibility testing letter during prosecution of the [’]858 patent, but [did] not tell the

whole story about their 2003 successes and the [July 2003

Proposal].” J.A. 292. Moreover, “[w]ith respect to the

[’]516, the [’]517, and the [’]484 patents,” the District Court

determined that “the [I]nventors allowed [Mr.] Hagerty to

file a false affidavit notwithstanding their knowledge that

[Mr.] Barlage had practiced the method in June 2003 and

they had made an offer to sell the method to Agri-Energy

in July or early August of 2003.” J.A. 292–93.

Additionally, the District Court concluded that Cantor

Colburn either “purpose[fully] eva[ded]” disclosing or failed

to seek out relevant information and so participated in the

inequitable conduct, J.A. 264, “cho[o]s[ing] advocacy over

candor[,]” J.A. 308. The District Court explained that Mr.

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Hagerty “never asked the [I]nventors key questions about

their invention or the meaning of contemporaneous documents and, after the litigation started, [Mr. Hagerty] relied

on the litigation team to do all the investigation.” J.A. 296.

The District Court stated that Cantor Colburn’s focus on

“pre-critical date documents” “was purposefully and, in

[the District] Court’s view improperly narrow.” J.A. 300

(internal quotation marks omitted). The District Court

also found that “[i]n the face of [Mr.] Cantrell’s poor health,

[Mr.] Winsness’[s] and Cantor Colburn’s reliance on [Mr.]

Cantrell’s recollection of the events surrounding the

[July 2003 Proposal] . . . , as well as their lackluster investigation of events is solid evidence of purposeful behavior.”

J.A. 307. The District Court determined that Cantor Colburn “ignored the red flags [waving] before them[,]” such

as the fact that Mr. Winsness “threatened Agri-Energy

with legal action if it did not corroborate his and

[Mr.] Cantrell’s story[,]” which Cantor Colburn supported

by sending Agri-Energy a “thinly-veiled threat[.]” J.A. 307,

308. 14 The District Court concluded that “[t]he only reasonable inference is that [Cantor Colburn] believed the

[I]nventors had made an offer and, with the feasibility testing letter already before the [US]PTO in both

At the bench trial, Mr. Hagerty testified that he

had learned about the Inventors’ interactions with AgriEnergy around September 2008, including, significantly,

the occurrence of the July 2003 testing. J.A. 263. When

asked why he failed to provide the potential CleanTech investor with that information, Mr. Hagerty “seemed perplexed that [the] request should have covered the 2003

testing because [Mr.] Hagerty had determined it was irrelevant to patentability.” J.A. 263. We conclude, as the District Court found, “[t]his conclusion is problematic in light

of the fact that the written information [Mr.] Hagerty received from [Mr.] Winsness about the 2003 bench test

stated that it worked[.]” J.A. 263.

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prosecutions, . . . which implied a later reduction to practice date, they chose advocacy over candor.” J.A. 308. The

District Court held the Patents-in-Suit unenforceable due

to inequitable conduct. J.A. 313.

DISCUSSION

I. Standard of Review and Legal Standard

“Inequitable conduct is an equitable issue committed to

the discretion of the trial court and is, therefore, reviewed

by this court under an abuse of discretion standard.” Energy Heating, LLC v. Heat On-The-Fly, LLC, 889

F.3d 1291, 1299 (Fed. Cir. 2018) (citations omitted). We

leave undisturbed the trial court’s inequitable conduct decision unless the appellant establishes “that the ruling is

based upon clearly erroneous findings of fact or a misapplication or misinterpretation of applicable law or that the

ruling evidences a clear error of judgment on the part of the

[trial] court.” Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 876 (Fed. Cir. 1988) (citation omitted) (en banc in relevant part).

To prevail on a claim of inequitable conduct in a patent

case, the accused infringer must prove by clear and convincing evidence that the patentee: (1) “knew of the reference” or prior commercial sale; (2) “knew that it was

material”; and (3) “made a deliberate decision to withhold

it.” See Therasense, Inc. v. Becton, Dickinson & Co., 649

F.3d 1276, 1290 (Fed. Cir. 2011) (en banc). “Proving that

the [patentee] knew of a reference, should have known of

its materiality, and decided not to submit it to the [US]PTO

does not prove specific intent to deceive.” Id. Instead, “the

specific intent to deceive must be the single most reasonable inference able to be drawn from the evidence.” Id. (internal quotation marks and citation omitted).

The inequitable conduct claim here relates to whether

the patentee failed to disclose information that would have

implicated the on-sale bar under 35 U.S.C. § 102(b). A

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patent is invalid under the on-sale bar if, before the critical

date, the invention was: (1) the subject of a commercial

sale or offer for sale; and (2) “ready for patenting.” Pfaff,

525 U.S. at 67. First, whether the claimed invention was

the subject of an offer for sale is an inquiry based on “contract law principles.” Linear Tech. Corp. v. Micrel, Inc., 275

F.3d 1040, 1048 (Fed. Cir. 2001). “It also involves an assessment of whether the circumstances surrounding the

transaction show that the transaction was not primarily for

purposes of experimentation.” Allen Eng’g Corp. v. Bartell

Indus., Inc., 299 F.3d 1336, 1352–53 (Fed. Cir. 2002). “A

use may be experimental only if it is designed to (1) test

claimed features of the invention or (2) . . . determine

whether an invention will work for its intended purpose[.]”

Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1317, 1327

(Fed. Cir. 2009) (involving a question of public use and not

the on-sale bar but stating that “[t]hough a prior commercial sale and not a prior public use was at issue in Allen

Engineering, the factors explicated are equally relevant to

an analysis of experimental use”). To determine if a transaction was conducted primarily to experiment, a district

court may look to the Allen factors to assess the transaction’s experimental nature. See Allen Eng’g, 299 F.3d

at 1352–53. These factors include: “(1) the necessity for

public testing, . . . (3) the nature of the invention,

[and] . . . (10) whether the invention reasonably requires

evaluation under actual conditions of use[.]” Id. (citation

omitted). If a prior commercial sale was primarily for purposes of experimentation, the sale will not serve as a bar.

See Clock Spring, 560 F.3d at 1327. “In making this patentability determination, the [trial] court should apply the

preponderance of the evidence standard[.]” Therasense,

649 F.3d at 1291–92.

Second, “[a]n invention is ‘ready for patenting’ when

prior to the critical date: (1) the invention is reduced to

practice; or (2) the invention is depicted in drawings or described in writings of sufficient nature to enable a

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[PHOSITA] to practice the invention.” Hamilton Beach

Brands, Inc. v. Sunbeam Prods., 726 F.3d 1370, 1375 (Fed.

Cir. 2013) (citation omitted) (emphases added).

II. The District Court Did Not Abuse Its Discretion in Determining that the Patents-in-Suit Are Unenforceable

Due to Inequitable Conduct 15

After a bench trial, the District Court concluded that

CleanTech and its attorneys at Cantor Colburn engaged in

Despite CleanTech’s arguments to the contrary, see

Appellant’s Reply Br. 4, we will address the issue of inequitable conduct without first conducting a de novo review

of the District Court’s summary judgment on-sale bar determination. A finding of a reference’s or prior sale’s materiality is required for an inequitable conduct

determination, see Therasense, 649 F.3d at 1290, which is

reviewed for abuse of discretion, see Energy Heating, 889

F.3d at 1299. CleanTech contends that materiality may

not be reviewed in the context of the inequitable conduct

claim, as materiality was not properly raised before and

addressed by the District Court during the inequitable conduct bench trial. Appellant’s Reply Br. 4–5. This argument

is jejune. The District Court held an eight-day bench trial

in which materiality was squarely before it. In addition to

incorporating the evidence and findings of materiality that

had been presented at the summary judgment stage,

J.A. 237, the District Court admitted other relevant evidence during the trial, including documents relating to the

June and July 2003 testing, J.A. 40144–45, 40153–54, and

previously unheard testimony from the Inventors and attorneys with Cantor Colburn, J.A. 294, all relating to the

materiality of the July 2003 Proposal. Moreover, following

the bench trial, the District Court determined that “its conclusion [from the Summary Judgment Order] that [the

July 2003 Proposal] evidence both elements of the on-sale

bar” was “confirm[ed]” and, after incorporating “by

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inequitable conduct in obtaining the Patents-in-Suit, rendering the patents unenforceable. J.A. 313. On appeal,

CleanTech argues that the District Court made clearly erroneous findings of fact and misapplied the law with respect to its on-sale bar determination, as well as its

conclusions regarding the parties’ knowledge of materiality

and their intent to deceive. Appellant’s Br. 104, 109–10.

We disagree with CleanTech.

A. On-Sale Bar

The District Court “conclude[d] that the undisputed

contemporaneous evidence supports only one conclusion,

[that] the on-sale bar applies and invalidates the [Patentsin-Suit] because” the claimed invention was the subject of

an offer for commercial sale and it was ready for patenting.

J.A. 167. We address each determination in turn.

1. The District Court Did Not Abuse Its Discretion in Determining the Claimed Invention Was the Subject of a

Pre-Critical Date Offer for Sale

The District Court concluded that the July 2003 Proposal constituted a pre-critical-date offer for sale. J.A. 299.

reference the findings of fact and conclusions of law in the

Summary Judgment Order,” the District Court determined

that “[f]urther evidence at trial only buttresse[d] the [District] Court’s earlier conclusion, particularly with respect

to the ready for patenting element of the on-sale bar.” J.A.

294. Additionally, despite CleanTech’s suggestions to the

contrary, see Appellant’s Br. 105, inequitable conduct’s materiality requirement does not provide the patentee with

the right to a jury and instead must be resolved by the trial

court, see Am. Calcar, Inc. v. Am. Honda Motor Co., Inc.,

651 F.3d 1318, 1333 (Fed. Cir. 2011) (“Inequitable conduct

is equitable in nature, with no right to a jury, and the trial

court has the obligation to resolve the underlying facts of

materiality and intent.”).

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CleanTech contends that it was not an offer as it “did not

in fact perform the method for Agri-Energy, before the critical date, for a promise of future compensation.” Appellant’s Br. 37 (internal quotation marks and emphasis

omitted) (citing Plumtree Software, Inc. v. Datamize, LLC,

473 F.3d 1152, 1162–63 (Fed. Cir. 2006)). We disagree with

CleanTech.

The District Court did not abuse its discretion in determining that the claimed invention was the subject of an offer for sale in the summer of 2003. First, relying on the

UCC, the District Court concluded that the July 2003 Proposal was a “sale on approval” that was made before the

critical date. J.A. 169 (citing U.C.C. § 2-326); see U.C.C.

§ 2-326(1)(a) (“[I]f delivered goods may be returned by the

buyer even though they conform to the contract, the transaction is . . . a ‘sale on approval’ if the goods are delivered

primarily for use[.]”); see also Linear, 275 F.3d at 1052 (explaining “that the [UCC] should inform the [district court’s]

analysis of the contractual issues[,]” such as the on-sale

bar). The July 2003 Proposal provides an offer of “all items

necessary to recover oil and the price,” J.A. 167, and the

Inventors understood the offer to Agri-Energy was a “first

sale” that would lead to additional sales, J.A. 170–72. Accordingly, the District Court properly concluded that the

July 2003 Proposal was an “offer for sale.” Pfaff, 525 U.S.

at 67.

CleanTech’s primary counterargument is unavai

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