Appendix — Exxon Chemical Patents, Inc. v. Lubrizol Corp.

Supreme Court brief1996

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ail

iis’ fir THE CLERK

IN THE

Supreme Court of the United States

OCTOBER TERM, i995

EXXON CHEMICAL PATENTS, IN‘

EXXON CORPORATION, AND

EXXON RESEARCH AND ENGINEERING CoO..

Petitioners.

LUBRIZOL CORPORATION

Respondent

Petition for a Writ of Certiorari

to the United States Court of Appeals

for the Federal Circuit

APPENDIX

Charles Alan Wright E. Edward Bruce*

727 East 26th Street Robert A. Long, Jr

Austin, TX 78705 John F. Duffy

(512) 471-7188 COVINGTON & BURLING

1201 Pennsylvania Avenue, N.W

P.O. Box 7566

Washington, DC 20044

(202) 662-6000

Counsel for Petitioners

May 1996 * Counsel of Record

TABLE OF CONTENTS

Page

Opinion of the United States Court of Appeals

for the Federal Circuit (Sept. 1, 1995) .... | la

Permanent Injunction entered by the

United States District Court for the

Southern District of Texas (Jan. 7, 1993) ... 38a

Final Judgment on Liability entered by the

United States District Court (Feb. 5, 1993) . 42a

Order of the United States District Court

Denying Motion for Judgment as a Matter

OF gs EO | | 46a

Order of the United States District Court

Granting Motion for Attorney’s Fees

ES ee GMa pee el ela eos 49a

Memorandum and Order of the United States

District Court Awarding Enhanced Damages

Ce OE ee ee ee uF 59a

Final Judgment on Damages entered by the

United States District Court (Feb. 17, 1994) 66a

Order of the United States Court of Appeals

Denying Petition for Rehearing and Suggestion

of Rehearing in Banc (Feb. 23, 1996) ... 68a

Excerpts from Official Gazette of the

United States Patent and Trademark

GRE ee ke ee pee A 85a

Rule 29.6 Listing stata a Se 95a

United States Court of Appeals for the Federal Circuit

93-1275, 94-1309

EXXON CHEMICAL PATENTS, INC.,

EXXON CORPORATION and EXXON RESEARCH

AND ENGINEERING CO.,

Plaintiffs-Appellees,

Vv.

LUBRIZOL CORPORATION,

Defendant-Appellant

DECIDED: September 1, 1995

Before Nies, Plager, and Clevenger, Circuit Judges.

Opinion for the court filed by Circuit Judge

CLEVENGER, with whom Circuit Judge PLAGER joins

Concurring opinion filed by Circuit Judge Plager. Dissenting

opinion filed by Circuit Judge Nies.

CLEVENGER, Circuit Judge.

Lubrizol Corporation (Lubrizol) appeals the February 5,

1993 judgment of the United States District Court for the

Southern District of Texas, Houston Division, inter alia

holding that U.S. Patent No. 4,867,890 assigned to Exxon

Chemical Patents, Inc. (Exxon) is not invalid under 35 U.S.C

§ 102 or § 103 (1988) and is enforceable, and that Lubrizol

willfully infringed the claims of the *890 patent. We reverse

(la)

‘"y

the judgment of infringement.' We vacate the award of

attorneys’ fees and costs to Exxon, the injunction entered

against Lubrizol, and the damage award entered on

February 15, 1994.

After extensive discovery, this patent infringement case

was tried to a jury. Following the jury’s verdict of willful

infringement, the judge concluded that the case was

exceptional under 35 U.S.C. § 285 (1988) and awarded Exxon

its attorneys’ fees and costs. Lubrizol’s post trial motion for

judgment as a matter of law or for a new trial was denied by

the judge, and Lubrizol timely brought this appeal. We have

jurisdiction under 28 U.S.C. § 1295(a)(1) (1988).

The central issue in this appeal is claim interpretation.

Exxon’s claims are to a lubricating oil composition suitable

for use as a crankcase lubricant in internal combustion

engines. The claimed composition is defined as comprising —

meaning containing at least — five specific ingredients.

Exxon contends that its patent claims a "recipe" of ingredients

that extends to any product made by using the claimed

ingredients, even if the product itself — as a result of

chemical complexing — fails to include one of the ciaimed

The judgment is limited to literal infringement of Exxon’s claims.

The jury was charged solely with respect to literal infringement, directly

or by inducement or contribution, and whether such literal infringement

was willful. Although Exxon initially proposed a jury charge on

infringement under the doctrine of equivalents, its counsel consented to the

deletion of the doctrine of equivalents from the infringement charge given

to the jury. Lubrizol’s brief notes that "Exxon asserted only literal

infringement", and Exxon does not contest that statement. The dissenting

opinion raises a question of whether Exxon is now entitled to a jury trial

on infringement under the doctrine of equivalents. That issue was not

briefed or argued to the panel, and consequently we, unlike Judge Nies,

express no view on that question.

ingredients. Lubrizol argues that since Exxon claims a

composition product — not a process for making a product or

a product made by a claimed process — the °890 patent only

extends to final products that include the specified claimed

ingredients.

The trial judge, candidly expressing considerable

difficulty in understanding the chemistry and law involved in

the case, treated the issue of claim interpretation as a matter

of deciding which of the two parties offered the correct

meaning of the claims. The jury was charged according to

Exxon’s preferred claim interpretation.

The duty of the trial judge is to determine the meaning of

the claims at issue, and to instruct the jury accordingly.

Markman v. Westview Instruments, Inc., 52 F.3d 967, 970

(Fed. Cir. 1995). In the exercise of that duty, the trial judge

has an independent obligation to determine the meaning of the

claims, notwithstanding the views asserted by the adversary

parties. The pursuit of that obligation in this case would have

resulted in a determination that Exxon’s preferred claim

interpretation is incorrect, and that Lubrizol’s is only partly

correct. As we explained below, under a jury charge stating

the correct interpretation of the claims, no jury could

reasonably have found — on the evidence submitted by Exxon

— that Lubrizol’s accused products literally infringe Exxon’s

claims. Because of Exxon’s failure of proof, Lubrizol is

entitled to judgment as a matter of law See Zenith Labs.,

Inc. v. Bristol-Myers Squibb Co., 19 F.3d 1418, 1424, 30

USPQ2d 1285, 1290 (Fed. Cir. 1994). Accordingly, we

reverse the final judgment on liability entered on the jury

verdict and vacate the order awarding attorneys’ fees and costs

and the injunction entered against Lubrizol. The judgment of

the District Court which is the subject of Lubrizol’s

companion appeal challenging the award of damages is

vacated .*

Exxon and Lubrizol manufacture crankcase lubricating oil

compositions and concentrate compositions which are mixed

with oil basestock to produce lubricating oils for motor vehicle

engines. Such products typically contain the following

components as additives: (1) a dispersant, which suspends

impurities to prevent sludge and varnish deposits on engine

parts, (2) ZDDP, a zinc-containing compound that inhibits

engine wear and produces antioxidant results for the oil, (3) a

detergent, which helps prevent engine deposits, and (4) a

supplemental antioxidant, necessary because use of ZDDP is

limited by environmental concerns. Oxidation of the oil

component substantially shortens the life of lubricating oils.

Oxidation results in increased acidity of the lubricant, which

can enhance corrosion of engine parts and increases viscosity

of the product, thereby degrading its lubricant qualities.

Exxon’s ’890 patent seeks enhanced antioxidant results by

the addition of a small amount of copper as the supplemental

antioxidant to the other typical ingredients of the product.

The prosecution history of Exxon’s patent emphasized the

beneficial synergistic effects caused by the added copper when

in the presence of an ashless dispersant.

The issue of damages was reserved for trial after the trial on

liability. The damage award against Lubrizol entered on February 15,

1994, is appealed in No. 94-1309, oral argument in which was heard on

March 8, 1995. We have consolidated the appeal in No. 94-1309 with the

appeal in No. 93-1275. In light of our reversal of the liability judgment

against Lubrizol, no basis remains for a damage judgment against Lubrizol,

and we therefore vacate the damage judgment entered in this case.

We have recently concluded in banc that claim

interpretation is a matter of law, and that the trial judge alone

has the duty and responsibility to interpret the claims at issue.

Markman, 52 F.3d at 970. After close of the evidence in this

case, the judge heard argument from the parties on the

meaning of Exxon’s claims. During that argument, Lubrizol

argued that the meaning of the claims should be left to the

jury for decision, if the court failed to agree with Lubrizol’s

preferred claim interpretation. The judge correctly refused to

submit the issue to the jury, and instead decided which of the

two proffered interpretations seemed most correct. It may

well be that in some cases one side or the other will offer the

correct claim interpretation to the judge. More often,

however, it is likely that the adversaries will offer claim

interpretations arguably consistent with the claims, the

specification and the prosecution history that produce victory

for their side. In any event, the judge’s task is not to decide

which of the adversaries is correct. Instead the judge must

independently assess the claims, the specification, and if

necessary the prosecution history, and relevant extrinsic

evidence, and declare the meaning of the claims. No matter

when or how a judge performs the Markman task, on appeal

we review the issue of claim interpretation independently

without deference to the trial judge.

Representative of the claims of the ’890 patent, claim |

is directed to "[a] lubricating oil composition suitable as a

crankcase lubricant in internal combustion § engines

comprising" (1) a major amount of lubricating oil, (2) an

ashless dispersant (i.e. one that neither contains nor is

complexed with metal) in specified amounts of "about 1 to 10

wt. %", (3) from about 0.01 to 5.0 parts by weight of oil

soluble ZDDP, (4) 5 to 500 parts per million by weight of

added copper in the form of an oil soluble copper compound,

and (5) magnesium or calcium detergent.’

The subject of claim interpretation was argued to the

judge at the close of Exxon’s case and was considered again

in extensive argument at the close of all the evidence. At the

conclusion of the arguments, the judge decided that Exxon

was correct in its view of the claims’ meaning. The parties

did not contend that the claims of the ’890 patent are process

claims drawn to a specified manner of manufacture, and the

claims as written could not have such meaning. Nor are the

claims said to be, or could they be, product-by-process claims.

The claims of the ’890 patent are drawn to a particular

composition: they are product claims. According to Exxon,

its Claims cover any product that is made by using the specific

ingredients identified in the limitations of claim 1.‘ During

the trial, Exxon’s claims were thus said to be to a "recipe" for

> The full text of claim | is set forth in the appendix to this opinion.

Claim 61 of the °890 patent is drawn to a lubricating oil concentrate

composition suitable for use in preparing crankcase lubricants. That claim,

like claim 1, has specific quantity limitations for the ingredients, including

the ashless dispersant ingredient. However, claim 61 does not require a

"major amount" of lubricating oil (it requires "a lubricating oil,” without

specific amount), and it requires 10 to 60 wt. of ashless dispersant. Both

claims were submitted to the jury.

* If the claim is defined solely by the starting ingredients, a product

actually containing all the specified ingredients would seem to escape at

least literal infringement if produced by the combination of different

ingredients. Such is at odds with the doctrine that a product claim is

infringed by any product containing every claim limitation, regardless of

how the product is made. See Laitram Corp. v. Rexnord, Inc., 939 F.2d

1533, 1535, 19 USPQ2d 1367, 1369 (Fed. Cir. 1991); see also 2 Donald

S. Chisum, Patents § 8.05, at 8-79 (1994) (collecting cases). Under

Exxon’s view, its claims also would seem not to reach a product made with

a nonashless dispersant starting ingredient that is somehow rendered ashless

during manufacture, if such a rendering is chemically possible.

making the composition. Whether the specified ingredients

could be found in the actual composition produced by mixing

the ingredients is, according to Exxon, simply irrelevant to the

meaning of the claims. To emphasize this point, Exxon’s

counsel stated — both to the trial judge and this court — that

Exxon’s claims will cover a composition that has the added

copper regardless of whether any ashless dispersant can be

found in the mixture. In short, in Exxon’s view the claimed

"recipe" for making the claimed product is the claimed

product.

The trial judge charged the jury accordingly:

I instruct you that Exxon’s claims cover the ingredients

which go into the composition. If you find that Exxon

has proved that a Lubrizol product is made by using the

starting ingredients in the amounts called for in one or

more of Exxon’s claims, then that product directly

infringes.

The issue of claim interpretation has been raised first by

Lubrizol in its motion for a directed verdict at the close of

Exxon’s case, which the judge denied. The issue was raised

again by Lubrizol’s motion for judgment as a matter of law at

the close of all the evidence, also denied by the judge. The

charge to the jury on claim interpretation was also challenged

by Lubrizol, both before the case was submitted to the jury

and by the post trial motion for judgment as a matter of law.

As noted above, Exxon’s claims are drawn to a specific

product which has particularly defined ingredients. Nothing

in the claims, the specification, or the prosecution history

suggests that Exxon’s claims are not drawn to a product that

contains particular ingredients. Indeed, to the contrary, the

title to the ’890 patent reads, with the emphasis added,

"Lubricating Oil Compositions Containing Ashless Dispersant,

[ZDDP], Metal Detergent and a Copper Compound". See

Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 780,

227 USPQ 773, 777-78 (Fed Cir. 1985) (referring to patent’s

title as interpretative aid). The language of claim 1 refers to

"added" copper and to a detergent "additive." The

specification demonstrates that those claim references aim at

a chemical composition to which ingredients are being

introduced. We must give meaning to all the words in

Exxon’s claims. Jn re Sabatino, 480 F.2d 911, 913, 178

USPQ 357, 358 (CCPA 1973) ("Claim limitations defining the

subject matter of the invention are never disregarded.") In

addition, the text of the 890 specification includes over

twenty references to "containing" in reference to the

ingredients claimed in the composition. Furthermore, during

prosecution of the applications that resulted in the ’890 patent,

Exxon repeatedly emphasized that the genius of its invention

lay "in the previously unknown synergism of this material

[copper] with ZDDP in the presence of an ashless dispersant

of the type described in the application...."

In sum, a review of the claims, the specification, and the

prosecution history all point to the conclusion that Exxon

claims a product, not merely a recipe for making whatever

product results from the use of the recipe ingredients. This

conclusion respects that which is claimed, namely a chemical

composition. The chemical composition exists at the moment

the ingredients are mixed together. Before creation of the

mixture, the ingredients exist independently. The particular

proportions specified in the claims simply define the

characteristics of the claimed composition.

Under Lubrizol’s view of the claims, as asserted at trial

and on appeal, the composition claimed by Exxon is limited

to the final product made and ready for use in the engine

environment. Lubrizol is correct that the claims read on a

product, not simply a recipe, but Lubrizol errs in thinking that

the claims read only on end product compositions. Lubrizol

thus asserts a claim meaning that depends upon the time at

which one views the composition claimed. The specification

as a whole, and the claims in particular, contain no temporal

limitation to the term "composition." Indeed, claim 61 reads

on a concentrate for preparing lubricants, which is hardly a

product ready for consumer end use. The composition of

claim 1, once its ingredients are mixed, is a composition

existing during manufacture that is being used to produce the

end product. Consequently, as properly interpreted, Exxon’s

claims are to a composition that contains the specified

ingredients at any time from the moment at which the

ingredients are mixed together. This interpretation of Exxon’s

claims preserves their identity as product claims, and

recognizes as a matter of chemistry that the composition exists

from the moment created. Although Lubrizol is correct in

taking Exxon’s claims to read on a product, its interpretation

of Exxon’s claims is too narrow. Exxon is entitled to a

broader scope that is not time-limited, one that reads on any

product at any time that contains the claimed proportions of

ingredients. The correct interpretation simply affords Exxon

a wider range of product on which to assert infringement.

Indeed, Exxon even took advantage of the correct

interpretation during trial. When defending its case under

Lubrizol’s claim interpretation, Exxon did not introduce

evidence that Lubrizol’s final product infringed. Instead of

offering evidence that analyzed the components of Lubrizol’s

final product, Exxon’s witnesses testified to the reaction that

occurs when the Lubrizol product is in the process of being

made into the final product. According to Exxon’s witnesses,

that reaction did not result in complete elimination of ashless

dispersant in the product. Exxon thus did not focus on

Lubrizol’s final product to prove infringement. Exxon

adopted the broader view and described the infringing activity

as occurring while the claimed ingredients were undergoing

chemical reactions, necessarily a time before the final product,

ready for sale, exists.

10a

We thus hold that the judge erred as a matter of law in

giving Exxon’s preferred claim interpretation to the jury, and

in using that interpretation in ruling on Lubrizol’s post trial

motion. Under the proper charge, the jury would not have

been asked if Lubrizol used Exxon’s starting ingredients.

Instead, the jury would have been asked to find whether

Exxon had proved by a preponderance of the evidence that

Lubrizol’s products at some time contained each of the

claimed recipe ingredients in the amounts specifically claimed.

Given the correct interpretation of Exxon’s claims, the

dispositive question before us is whether any jury could

reasonably have found that Lubrizol’s accused products

literally infringe the claims of the *890 patent as properly

construed. Jamesbury Corp. v. Litton Indus. Prods. , 756 F.2d

1556, 1560-61, 225 USPQ 253, 257 (Fed. Cir. 1985). Our

authority to decide this question has been explicitly stated by

the Supreme Court:

If the evidence presented in the first trial would not

suffice, as a matter of law, to support a jury verdict under

the properly formulated defense, judgment could properly

be entered for the respondent at once, without a new trial.

And that is so even though (as petitioner claims)

respondent failed to object to jury instructions that

expressed the defense differently, and in a fashion that

would support a verdict.

Boyle v. United Technologies Corp., 487 U.S. 500, 513-514

(1988). Lubrizol thus may be entitled to judgment as a matter

of law. Jd. "The question of whether the evidence is

sufficient to create an issue of fact for the jury is itself a

question of law, which we will now decide.” Jamesbury, 756

F.2d 1560, 225 USPQ at 257. Literal infringement requires

that every limitation in Exxon’s claims be found in the

accused product. Laitram, 939 F.2d at 1535, 19 USPQ2d at

lla

1369. Exxon’s burden is thus to prove by a preponderance of

the evidence, among other things, that Lubrizol’s products

contained at some time ashless dispersant in the amounts

specifically claimed.

From the beginning of the trial, Exxon was on notice that

Lubrizol’s view of claim interpretation required Exxon to

prove that Lubrizol’s products contained ashless dispersant in

the amounts specified. Exxon was also aware from discovery

that Lubrizol would defend against the charge of infringement

by proof that its products as manufactured contained no

ashless dispersant. Exxon thus had the choice of simply

proving infringement under its view of the claims, or in

addition proving infringement under Lubrizol’s view as well.

Exxon chose to do both. Lubrizol’s defense on its view of the

claims is based on its evidence that, when one mixes the

ingredients specified in Exxon’s claims, (1) the soluble copper

compound reacts with ZDDP to form a zinc compound and

CuDDP and (2) zinc then bonds to the formerly ashless

dispersant to render it non-ashless, inasmuch as, after the

reaction, it is complexed with a metal. According to

Lubrizol, the reactions are immediate and the bond formed

between the dispersant and zinc is firm, and as a result, its

product lacks the ashless dispersant specified as a necessary

ingredient in Exxon’s claims.

At trial, Exxon sought to prove its case, under Lubrizol’s

claim interpretation, with testimony that the bond formed

between the zinc and the dispersant was a weak one. The

bond was described as unstable, with the molecules bonding,

unbonding and rebonding constantly. The process was

described variously as analogous to square dance with partners

swapping around, to hand-holding and unholding, and to hats

being taken on and off. The bonding and unbonding, also

described as a "dynamic equilibrium," occurs an infinite

number of times. According to Exxon, the weak bond —

with its constant reversal and rebonding — proved that

12a

Lubrizol’s dispersant was not always nonashless, and therefore

sometimes ashless. Exxon’s proof was supplied by expert

opinion and did not include any scientific measurements

resulting from tests of Lubrizol’s accused products. Exxon’s

proof did not relate to infringement by Lubrizol’s final

products. Instead, its proof was aimed at the presence of

ashless dispersant during manufacture of the end product.

Lubrizol’s expert witnesses countered with their opinion

that the bond created between the zinc and the dispersant was

a strong complex, and that the dispersant remained non-ashless

99.999% of the time. The testimony of Lubrizol’s witnesses

relied on nuclear magnetic resonance tests performed by

Lubrizol on its products, and concluded that there is no

ashless dispersant in Lubrizol’s accused products after

blending their starting ingredients.

We may assume for purposes of this appeal that a jury

hearing such evidence could reasonably have concluded that

— at some time — during the manufacture of the product o1

in its manufactured state — ashless dispersant is found in

Lubrizol’s product.° That assumption, however, is not

dispositive of Lubrizol’s post trial motion for judgment as a

matter of law. It is not enough for Exxon to prove that some

of the dispersant in Lubrizol’s product is ashless even if

> On the record before this court, it is not clear that the trial judge

meant for the jury to consider the testimony about the nature of the bond

between the zinc and the ashless dispersant. In discussions with counsel,

the judge stated clearly that he would charge the jury as Exxon wanted,

and under Exxon’s view of the claims what “happens in the pot” during or

after manufacture of the composition, and Lubrizol’s nuclear magnetic

resonance evidence, is simply irrelevant. Under the claim interpretation

charge given, there was no reason for the jury to consider the evidence of

both parties going to whether Lubrizol infringes under its view of the

claims. To find infringement as charged, all the jury had to find is that

Lubrizol used Exxon’s claimed starting ingredients in the amount claimed,

an essentially uncontested fact.

13a

momentarily. Lubrizol’s motion is only thwarted if Exxon has

supplied testimony from which a reasonable jury could

conclude that Lubrizol’s products contain ashless dispersant in

the specific amounts claimed. Exxon offered no testimony on

the amounts of ashless dispersant present in Lubrizol’s

products. Nor did Exxon provide the jury with direct

evidence from which it could have inferred that the required

percentages are found in the composition after it is created out

of its specified starting ingredients. In its briefs to this court,

Lubrizol emphasized Exxon’s failure of proof with regard to

the quantities of the ingredients contained in the accused

products. Exxon did not respond with assertions that the

record included proofs of the quantities of ingredients present

in the accused products. Instead, Exxon argued only that

"Lubrizol started with the requisite amount of ashless

dispersant and, even under its theory, ashless dispersant is still

present in Lubrizol’s final product, albeit in ever-changing

form." In order to prevail under properly interpreted claims,

Exxon was obliged to prove both the presence of ashless

dispersant and presence of the required quantity. Exxon’s

failure as to the latter requires us to conclude as a matter of

law in Lubrizol’s favor.

Post-trial motion practice entails, inter alia, ascertainment

of whether correct law has been applied to the facts presented

at trial in reaching a verdict or judgment. When a trial judge

determines on a post-verdict motion what the law correctly is,

the judge then determines whether any juror could reasonably

have reached — on the evidence presented at trial — the

verdict challenged by the post-verdict motion. If the answer

is no, the trial judge reverses the jury verdict for failure of

proof on the correct legal standard, and denies the loser a

second trial on the correct law. That is what happened at trial

in Markman, and we affirmed that disposition in banc, 52

F.3d 967, 989.

l4a

When we determined on appeal, as a matter of law, that

a trial judge has misinterpreted a patent claim, we

independently construe the claim to determine its correct

meaning, and then determine if the facts presented at trial can

support the appealed judgment. If not, we reverse the

judgment below without remand for a second trial on the

correct law. That is what we did to the bench triaJ in Laitram

Corp. v. Rexnord, Inc., 939 F.2d 1533, 1539 (Fed. Cir.

1991), citing as support the very language from the Supreme

Court decision in Boyle that we rely upon herein to deny

Exxon the second trial that Judge Nies would provide. We

ordinarily do the same thing in the appellate review of jury

trial cases, typically explaining our duty as follows:

Accordingly, we must determine whether there exists

evidence of record upon which a jury might properly have

returned a verdict in Litton’s favor when the correct legal

standard is applied. If there is not, Jamesbury was

entitled to have the question removed from the jury and

decided as a matter of law.

Jamesbury Corp. v. Litton Indus. Prods., Inc. , 756 F.2d 1556,

1560 (Fed. Cir. 1985). See also Dana Corp. v. IPC Ltd.

Partnership, 860 F.2d 415, 419 (Fed Cir. 1988). Such

judicial events are not extraordinary.

On the facts of this case, we perceive no reason to deviate

from, or reject, the settled law that compels reversal. The

correct meaning of Exxon’s claims is but a slight variance

from that urged vigorously and continuously by Lubrizol.

That Lubrizol sought to hold Exxon to proof of infringement

of product claims hardly comes, or came, out of the blue.

Exxon was fully aware that Lubrizol stood on a claim meaning

that would require Exxon to prove the presence of specified

amounts of claimed ingredients in some Lubrizol product. In

fact, Exxon attempted to prove infringement under the

interpretation we give to its claims. We have noted that

1Sa

Exxon chose not to introduce proofs of the contents of

Lubrizol’s final products. Rather, its proof of the presence of

some ashless dispersant, evidence that we credit in testing the

denial of the post verdict motion, relates to product in pre-

final states. Nothing precluded Exxon from arguing and

seeking to prove that a Lubrizol product, at some time after

its creation, contained the specified ingredients in the claimed

amounts. We have emphasized that Exxon’s error was in

failure of proof as to the claimed amounts, without which it

could not prove infringement under Lubrizol’s claim meaning.

The trial judge did not interpret the claims until all the

evidence was in, just before the case was submitted to the

jury. Exxon — knowing Lubrizol’s defense — knew that it

would lose on Lubrizol’s claim meaning unless it could show

the presence of the claimed ingredients in the claimed amounts

in some Lubrizol product. Exxon was free to choose the

amount at which it would identify with proof that a Lubrizol

product infringed. Thus, Exxon could have argued and sought

to prove that ashless dispersant is present in the claimed

percentages, along with the other claimed ingredients in their

specified amounts, at any time from the moment of creation

of Lubrizol’s product. Exxon cannot now claim surprise from

our variation on Lubrizol’s claim meaning and cry foul in not

having a second chance to prove what it was free to prove at

trial. Consequently, on the facts of this case, we discern no

reason to carve an exception into the settled law in order to

provide Exxon an opportunity to escape from the flaws in its

claim drafting (as described in Judge Plager’s concurring

opinion) and trial strategy. We therefore disagree with Judge

Nies’s view that our reversal without remand for a second trial

is improper.°

6 Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565

(Fed. Cir. 1986), and Malta v. Schulmerich Carilions, Inc., 952 F.2d 1320

(Fed. Cir. 1991), do not stand in the way of our decision. Each case

l6a

raised the question whether a party seeking to upset a jury verdict on a

post verdict motion had failed to preserve the ground for the post verdict

motion by failing to specify that ground in earlier directed verdict motions.

In Orthokinetics, the specific question was whether a motion for directed

verdict of simply non-infringement embraced a later post verdict motion

seeking to upset a jury verdict of willful infringement. The trial court had

granted the motion, holding the evidence insufficient to support a jury

verdict of willful infringement. This court concluded that the movant had

failed to preserve the issue of willful infringement for the post verdict

motion. 806 F.2d at 1579. This court, however, did not reverse the grant

of the post verdict motion for failure to have preserved its ground. Indeed,

this court did not conclude that the district court was even required to

reject the post verdict motion. We only noted that the “district court might

well have refused consideration of willfulness on the motion for JNOV in

light of Rule 50(b)." /d. at 1580. Dispositively, this court held the ruling

on the post verdict motion ripe for appellate review because the non-

movant had not objected to the grounds stated in the post verdict motion.

It is difficult to understand how Orthokinetics in Judge Nies’s hands

helps the cause she advocates for Exxon. This is so because Orthokinetics

teaches that even a legally insufficient post verdict motion may be acted

upon by the trial judge with that action preserved for appellate review, if

the non-movant has not objected to the content of the post verdict motion.

We note, in passing, that Exxon did not object to the content of Lubrizol’s

post verdict motion.

Malta sheds interesting light on what can be devined from

Orthokinetics. In Malta, the question was whether a barebones motion for

directed verdict, at the close of all the evidence, of noninfringement "on

the grounds that the evidence is insufficient.” 952 F.2d at 1324, was

sufficient to support a post verdict motion challenging the verdict of

infringement under the doctrine of equivalents for lack of “particularized

function/way/result testimony and linking argument.” Jd. at 1325. This

court concluded that the earlier general motion of noninfringement

embraced all the particular arguments in support of the post verdict

motion. In the light of Malta, we cannot fault the failure of Lubrizol, in

its post verdict motion, to have argued that Exxon could prove

infringement under Lubrizol’s theory by proving not only that Lubrizol’s

final product infringed, but that any product made by Lubrizol that existed

after the moment of creation also could infringe. Indeed, the spread

between the general and the specific in Malta is enormous, compared to the

17a

Because Lubrizol is entitled to a judgment of

noninfringement as a matter of law and thus to vacation of the

order awarding Exxon its attorneys’ fees and costs and of the

injunction entered against Lubrizol, we need not reach the

other grounds asserted by Lubrizol for reversal of the

judgment of infringement or in the alternative for a new trial.

Because there is no basis for a damage award against

Lubrizol, we vacate the damage award in appeal No. 94-1309.

No costs.

REVERSED

distance between the meaning we give Exxon’s claims on appeal and that

advanced by Lubrizol to the trial judge. Lubrizol’s view of the claims is

less generous to Exxon than ours. If only Lubrizol’s final product could

infringe Exxon’s claims, Exxon’s proofs fail completely since it produced

no evidence of the content of any Lubrizol final product. Only under the

interpretation we give Exxon’s claims does Exxon’s evidence of

infringement of a product claim have any relevance. This is so because the

only evidence Exxon put on to show the presence of ashiess dispersant in

a Lubrizol product was evidence of the reaction that occurs during the

manufacture of the Lubrizol final product. This evidence was offered

when Exxon did not know if the trial court would accept its, or Lubrizol’s

proffered claim interpretation. Exxon thus focussed on a product of

Lubrizol that was not its final product, but, as we have noted, Exxon fell

short of demonstrating that the ashless dispersant, when present, was

present in the claimed amounts

18a

APPENDIX

Claim 1 of the ’890 patent reads as follows:

1. A lubricating oil composition suitable as a crankcase

lubricant in internal combustion engines comprising:

A. a major amount of lubricating oil;

B. a dispersing amount of lubricating oil dispersant

selected from the group consisting of:

(1) ashless nitrogen or ester containing

dispersant compounds selected from the group

consisting of:

(a) oil soluble salts, amides, imides,

oxazolines, esters, and mixtures thereof, of

long chain hydrocarbon substituted mono-

and dicarboxylic acids or their anhydrides;

(b) long chain aliphatic hydrocarbons

having a polyamine attached directly thereto;

and

by condensing about a molar proportion of

long chain hydrocarbon substituted phenol

with from about 1 to 2.5 moles of

formaldehyde and from about 0.5 to 2 moles

of polyalkylene polyamine; wherein said

long chain hydrocarbon group is a polymer

of a C, to C; monoolefin, said polymer

having a molecular weight of from about

700 to about 5000;

(2) nitrogen or ester containing polymeric

viscosity index improver dispersants which are

selected from the group consisting of:

19a

(a) polymers comprised of C, to C,,

unsaturated esters of vinyl alcohol or of C,

to Cy) unsaturated mono- or dicarboxylic

acid with unsaturated nitrogen containing

monomers having 4 to 20 carbons,

(b) copolymers of C, to C,, olefin with C,

to Ci. mono- or dicarboxylic acid

neutralized with amine, hydroxy amine or

alcohols, and

olefin further reacted either by grafting C,

to C,, umsaturated nitrogen containing

monomers thereon or by grafting an

unsaturated acid onto the polymer backbone

and then reacting said carboxylic acid

groups with amine, hydroxy amine or

alcohol; and

(3) mixtures of (1) and (2); wherein when said

lubricating oil dispersant (1) is present, then said

dispersing amount of (1) is about 1 to 10 wt. %,

and when said lubricating oil dispersant (2) is

present, then said dispersing amount of (2) is

from about 0.3 to 10 wt. %;

C. from about 0.01 to 5.0 parts by weight of oil soluble

zinc dihydrocarbyl dithiophosphate wherein the

hydrocarbyl groups contain from | to 18 carbon atoms;

D. an antioxidant effective amount, within the range of

from about 5 to about 500 parts per million by weight, of

added copper in the form of an oil soluble copper

compound; and

E. a lubricating oil detergent additive which comprises

at least one magnesium or calcium salt of a material

selected from the group consisting of sulfonic acids, alky!

20a

phenols, sulfurized alkyl phenols, alkyl salicylates and

naphthenates, wherein said parts by weight are based

upon 100 parts by weight of said lubricating composition

and said weight % is based on the weight of said

lubricating composition.

2la

PLAGER, Circuit Judge, concurring.

I join in the reversal of the trial court’s judgment of

infringement, based on what I consider to be the correct claim

interpretation as advanced by Judge Clevenger, and the

consequences that flow therefrom.

There is testimony in the record that indicates that it is

not known exactly how the chemical complexing, described in

the opinion, actually works. If this is so, then Exxon’s

burden, to prove that the chemical ingredients exist at some

point in the accused composition in the claimed proportions,

may be impossible of accomplishment. That could be said to

argue in favor of an alternative construction of the claims, that

what was meant was a process or product-by-process claim.

The difficulty with that argument is that the claims, as the

opinion well demonstrates, are unquestionably composition of

matter claims. In retrospect, it would appear that Exxon

wishes it had product-by-process claims, and thus a "recipe."

But we are not free to read the claims as they might have been

drafted, even if as drafted they do not accomplish what the

inventor may have intended.

Claim drafting is itself an art, an art on which the entire

patent system today depends. The language through which

claims are expressed is not a nose of wax to be pushed and

shoved into a form that pleases and that produces a particular

result a court may desire. The public generally, and in

particular, the patentee’s competitors, are entitled to clear and

specific notice of what the inventor claims as his invention.

That is not an easy assignment for those who draft claims, but

the law requires it, and our duty demands that we enforce the

requirement. There is no room in patent claim interpretation

for the equivalent of the cy pres doctrine; that would leave the

claiming process too indefinite to serve the purposes which lie

at the heart of the patent system.

22a

NIES, Circuit Judge, dissenting.

Contrary to conventional wisdom in the art, Exxon

discovered that small amounts of copper in automobile motor

oil acts as an antioxidant, and it developed ahighly successful

commercial product using that discovery. The record

discloses that Lubrizol learned of the presence of copper in

Exxon’s motor oil from Exxon’s U.K. patent application and

used the disclosure to prepare a competitive product. Both

companies now use copper in the vast majority of their

passenger car motor oil formulations. Following this phase of

the litigation finding Lubrizol liable for infringement of

Exxon’s U.S. Patent No. 4,867,890, Exxon was awarded

$48,000,000 in damages which were doubled for willfulness

and $8,700,000 in interest plus $23,700,000 in attorney fees. '

The issue of infringement essentially comes down to

whether Exxon drafted a claim in its U.S. patent that covers

its invention. The majority interprets the claims to require

that each of the listed additives to a motor oil must retain its

pre-mix identity, to the extent that each must be present in the

claimed proportions at some point after mixing. Because

Exxon failed to prove that the additives remained identifiable

(in those proportions) in Lubrizol’s product at some time

during or after mixing, the majority reverses the judgment of

infringement. I agree with the trial court that Lubrizol

infringes. Lubrizol’s motor oil contains the required additives

in the required amounts. To hold that the final product does

not "comprise" those ingredients because of their possible

reaction with each other upon mixing seems to me nothing

short of double speak. The claims can be interpreted as the

majority does only by reading them in isolation from the

context of the patent. Moreover, the majority’s interpretation

' Appeal No. 94-1309 challenging the amount of damages is mooted

by the majority decision.

23a

gratuitously provides grounds for invalidation of the patent

under section 112, because the specification does not describe

nor enable one skilled in the art to make a product containing

the claimed ingredients in the claimed amounts except as

starting ingredients, not mixed ingredients.’

The majority focuses principally on the claimed "ashless

dispersant" which must remain in its view "ashless" in the

required amount in the composition. I uuiterpret "ashless

dispersant" as simply the name or designation of an ingredient

required as one of the additives. It does not mean the

ingredient must remain inert.

As stated in Adams v. United States, 383 U.S. 39, 49,

148 USPQ 479, 482 (1966), "it is fundamental that claims are

to be construed in light of the specifications and both are to be

read with a view to ascertaining the invention." Moreover,

claims should be "construed, if possible, as to sustain their

validity." North American Vaccine, Inc. v. American

Cyanamid Co., 7 F.3d 1571, 1577, 28 USPQ2d 1333, 1337

(Fed. Cir. 1993).

Applying those precepts warrants an affirmance in this

case. My concern is, however, not merely this case. The

majority mandates technical rules for how chemical

compositions must be claimed which I reject.

Infringement here turns on interpreting claims 1 and 61.

Claim 1 is directed to "a lubricating oil composition"

Paragraph 1 of 35 U.S.C. § 112 (1988) states, in relevant part:

"The specification shall contain a written description of the invention, and

of the manner and process of making and using it, in such full, clear,

concise, and exact terms as to enable any person skilled in the art to which

it pertains or with which it is most nearly connected, to make and use the

Same...

24a

comprising: (a) a major amount of lubricating oil; (b) a

specified amount of dispersant (either about 1-10 wt. percent

of an ashless dispersant’ or about 0.3-10 wt. percent of a

"polymeric viscosity index improver"*); (c) about 0.01 to 5.0

parts by weight of zinc dihydrocarbyl dithiophosphate

("ZDDP"); (d) about 5 to about 500 parts per million by

weight of added copper in the form of an oil soluble copper

compound, and (e) a calcium or magnesium detergent. Claim

61 claims a “lubricating oil concentrate composition"

comprising the same five ingredients in different, specified

amounts.

The trial judge interpreted those claims for the jury,

instructing them as follows:

I instruct you that Exxon’s claims cover the ingredients

which go into the composition. If you find that a

Lubrizol product is made by using the starting ingredients

in the amounts called for in one or more of Exxon’s

claims, then that product directly infringes.

Lubrizol argues that that instruction is wrong. It

maintains that, regardless of what ingredients are mixed

together, there is infringement only if the final lubricant

composition contains the five claimed ingredients, in the

"Ashless" denotes an absence of combined or complexed metal.

Lubrizol’s Dr. Salomon testified that "it is easier from a manufacturing

point of view to manufacture it in the ashless form.” She added that "[a]s

a formulator, I don’t care [if it is ashless or non-ashless in the product]

where I have some surprising discovery that affects performance. But it

doesn’t matter to me.... Typically, most dispersants are made ashless from

a manufacturing point of view."

* The polymeric viscosity index improver ("PVII") is not at issue

here, inasmuch as the challenged Lubrizol products are alleged to use the

ashless dispersant, not the PVII. Henceforth, this opinion will not mention

PVII

25a

claimed amounts. Thus, although it is essentially uncontested

that Lubrizol adds ashless dispersant and the other claimed

ingredients in the claimed amounts to its motor oil, Lubrizol

argues that there is no infring-ment because it was not proved

that “ashless" dispersant, in the claimed amount, was present

in its final products. Specifically, it urges, the ashless

dispersant that it uses in admixture with the other ingredients

specified in the claims complexes with metal moieties from

those ingredients so that the dispersant in the final product can

no longer be considered “ashless."

Exxon, on the other hand, urges that the trial judge's

instruction reflects the proper claim interpretation that ashless

dispersant identifies a starting ingredient, and under that

interpretation, it does not matter what complex forms between

metal and the dispersant.

The majority opinion interprets the claims somewhere

between the interpretations of Exxon and Luwubrizol, as

covering any mixed product-—final or otherwise—in which the

five ingredients specified in the claims exist in the claimed

amounts. The majority accepts Lubrizol’s proof that at least

some ashless dispersant is converted to nonashless dispersant

during production of Lubrizol’s products, and because of that.

proving that the required amounts of the five ingrecients were

mixed is not enough to prove infringement. Conse.zuently, to

show infringement, the majority believes that it was Exxon’s

burden to prove that, at some point during production of

Lubrizol’s products, the mixing pot contained the claimed

amounts of “ashless dispersant" and the other four claimed

ingredients. And, the majerity concludes, Exxon has not

introduced enough evidence in the record to meet that burden

I agree with the trial judge’s interpretation of the claims

that one skilled in the art, upon reviewing the patent

specification, claims, prosecution history, and testimony

would interpret claims 1 and 61 as covering a lubricating oil

26a

composition comprising the product resulting from a

combination of the required five ingredients, in the claimed

amounts, regardless of any unknown reactions, or metal

complexes formed between those ingredients that occurs upon

mixing. With that interpretation, literal infringement is

admitted.

A. Claim Interpretation in General

To determine the meaning of claims, we must examine

the patent specification, other claims, and the prosecution

history. Markman v. Westview Instruments, Inc., 52 F.3d

967, 979, 34 USPQ2d 1321, 1329 (Fed. Cir. 1995) (in banc).

Resort to testimony of those knowledgeable in the art might

also be helpful to the court inasmuch as claims are interpreted

from the perspective of one of ordinary skill in the art.

SmithKline Diagnostics, Inc. v. Helena Lab. Corp. , 859 F.2d

878, 882, 8 USPQ2d 1468, 1471 (Fed. Cir. 1988).

B. The Specification and Claim

The patent specification discusses the invention in terms

of an additive for motor oil which does not interfere with the

function of other additives. The particular focus is on

addition of the copper compound as an antioxidant and the

amount of it that is employed. Moreover, the amounts

specified in the working examples and other parts of the

specification are identified as the amount of the additives, not

the amounts in the final product after mixing. There is no

analysis anywhere in the specification of the identity of

intermediate or final "complexation" products produced by

combining the ingredients specified in the claims, or of their

amounts. In light of those omissions, to say that one of

ordinary skill in the art would nevertheless conclude that the

proportions must be measured in the pot is divorced from

reality.

27a

The interpretation that the claims list starting ingredients

is bolstered by comparing the many nonborated, ashless

dispersants disclosed at columns 6-8 of ‘the patent, and

expressly included in the claims, with the one type of

dispersant—the borated version of certain ashless

dispersants—that the parties agree does not complex with the

metal moieties from the other ingredients specified in the

claims. Because the nonborated, ashless dispersants do not

remain completely ashless when mixed with the other

ingredients specified in the claims, under the majority's

interpretation the claims would not cover use of such

dispersants if a sufficient amount thereof complexed with

metal to form nonashless dispersants. Yet, it is those

nonborated dispersants to which the specification and claims

are primarily directed.” Consequently, the majority

interpretation limits coverage to far fewer dispersants than

indicated by the specification and claims.

Moreover, the ’890 specification does not describe nor

teach the invention contemplated by the majority's claim

interpretation, i.e., it does not teach the types of dispersant,

the amounts thereof, or the conditions needed to attain a

composition containing—after complexation—the amounts of

ingredients specified in the claims. Although, under the

majority’s interpretation, the specification would be enabling

for the claimed borated dispersants (because they do not

complex), those dispersants constitute only a small portion of

the disclosed and claimed dispersants. Hence, formulating the

composition as interpreted by the majority, even if within

ordinary skill in the art, would require extensive

5 Borated ashless dispersants are discussed at column 8, lines 43-50

of the ’890 specification and are used in the four working examples. Of

the 83 claims in °890, claims 7, 14-24, 30, 37-60, 65, and 72-82

specifically mention the borated, as well as other, dispersants.

28a

experimentation not even suggested in the patent, thereby

rendering the claims invalid.°

C. Prosecution History

As does the specification, the prosecution history focuses

on the additives as starting ingredients, not on any reaction

products (and the amounts in a final or intermediate product).

As an example, the Examiner’s Answer prepared with respect

to appeal of the examiner’s rejection of the claims in

Application Ser. No. 362.114 (which was the grandparent of

Application Ser. No. 49,712, the application resulting in the

"890 patent), states

The claims are believed to be directed to the composition

comprising known additives, combined at conventional

levels of additions for their combined attendant functions.

And in the Reply Brief to that Examiner’s Answer, the

applicants state:

The question should be whether the specific combination

of additives claimed by Appellants is novel, and gives it

unobvious results. The answer is the combination is

novel and the combination does give unexpected results.

° See generally Genetech, Inc. v. The Wellcome Foundation Lid. , 29

F.3d 1555, 1564-65, 31 USPQ2d 1161, 1168 (Fed. Cir. 1994) (rejecting

a claim interpretation that covers many inoperative permutations); Ailas

Powder Co. v. E.I. duPont De Nemours & Co., 750 F.2d 1569, 1576-77,

224 USPQ 409, 414 (Fed. Cir. 1984) ("if the number of inoperative

combinations becomes significant, and in effect, forces one of ordinary

skill in the art to experiment unduly in order to practice the claimed

invention, the claims might indeed be invalid"); Raytheon Co. v. Roper

Corp., 724 F.2d 951, 956, 220 USPQ 592, 596 (Fed. Cir. 1983)

("Because it is for the invention as claimed that enablement must exist, and

because the impossible cannot be enabled, a claim containing a limitation

impossible to meet may be held invalid under § 112."), cert. denied, 469

U.S. 835 (1984).

Milde...

29a

And elsewhere during prosecution of that application, and of

SN 049,712, the examiner refers to "the various additives of

the claims (dispersants ... dithiophosphates ...)."

Exxon’s interpretation is also supported by the following

episode. SN 362.114 included both claim 37, which referred

to a "copper compound,” and claim 38, which was to a

"composition according to claim 37, said copper compound

being oii soluble." Claim 38 was rejected because it

duplicated claim 37.’ The examiner took the position that the

copper compound must be oil soluble—hence, “copper

compound” and "oil soluble copper compound” are the same.

The applicants, however, argued that "[oJ]ne can have a

solution of a dispersant complexed with an oil insoluble copper

compound, or can have an oil soluble [copper] compound"

(emphasis added). Similar debate transpired during

prosecution of Application SN 177, 367, the parent of SN

362,114. The Board agreed with applicants.*

The argument made during prosecution that some of the

claims read on embodiments wherein the copper complexes

with the ashless dispersant is probative of Exxon’s claim

interpretation as well as that of the examiner. Specifically, it

shows the claim is directed to a product with “ashless”

dispersant as a starting ingredient, inasmuch as some of the

claims covered formation of a complex between that dispersant

’ Paragraph 2 of 35 U.S.C. § 112 (1988), states: “The specification

shall conclude with one or more claims particularly pointing out and

distinctly claiming the subject matter which the applicant regards as his

invention.”

® The Board noted that the examiner had not yet raised an “insufficient

disclosure” rejection (under 35 U.S.C. § 112, 4 1). That rejection was

subsequently raised, in the context of rejecting claims 15-17 of SN 049,712

on the specific ground of insufficient support in the specification for an oil

insoluble copper compound. Those claims were eventually dropped by

applicants

30a

and the metal, a formation that would render the dispersant

"non-ashless". Significantly, the examiner found no flaw in

claiming a motor oil product with additives as set out in

Exxon’s Claim here (and I note in its foreign applications as

well).

D. Other Considerations

The record includes testimony by Exxon witnesses that it

is not known how copper serves as an antioxidant in the

environment of the claimed composition, that certain reactions

are not predictable in that environment, even though they

might be predictable in a model, that it is uncertain whether

zinc or phosphorus of ZDDP undergoes interaction, and in

general, that no one was certain of the exact identity of the

final composition or what was happening in the pot. Despite

that, the majority holds applicants responsible for knowing

about the formation of a complex between the five ingredients

required by the claims. In effect, therefore, the majority

opinion penalizes applicants for not knowing or caring about

exactly how their invention works.

But, “it is axiomatic that an inventor need not

comprehend the scientific principles on which the practical

effectiveness of his invention rests." Fromson v. Advance

Offset Plate, Inc., 720 F.2d 1565, 1570, 219 USPQ 1137,

1140 (Fed. Cir. 1983); accord In re Isaacs, 347 F.2d 887,

892, 146 USPQ 193, 197 (CCPA 1965). As stated in

Diamond Rubber Co. v. Consolidated Rubber Tire Co., 220

U.S. 428, 435-36 (1911):

And how can it take from his merit that he may not know

all of the forces which he has brought into operation? It

is certainly not necessary that he understand or be able to

state the scientific principles underlying his invention, and

it is immaterial whether he can stand a successful

examination as to the speculative items involved.

[Citations omitted. ]

3la

In that respect, Frank Johmann, who helped prosecute the

relevant applications for Exxcn, stated:

[When looking at an invention like this with a number of

components, to determine infringement] ... you look at

what is combined to make the product. The reason for

that is that the patent law doesn’t require that you

understand what happens to that final product. All that is

necessary is how you obtain the result. And it is sort of

like baking a cake. You mix them together. And what

happens chemically in the oven, you are not concerned

with. With these compositions, what happens in the

engine no one really knows and it is not a consideration.

Mr. Johmann stated that he has “seen probably literally

thousands of lubricant patents over the years, and this is like

a standard format for a composition." Jd. Thus, claiming the

composition in terms of amounts of additives is "a typical way

it is done in connection with motor oil additives." /d.

Though Mr. Johmann was a patent practitioner, as opposed to

a scientist skilled in the art, he adds to the record the

perspective of one who has seen many patents in this field,

and by shedding some light on how claims have been written

in the field, he helps illuminate how one skilled in the art

would read the *890 claims.

Furthermore, when Lubrizol asked its own employee,

Mr. Pindar, in 1988 to determine whether certain of its

products infringed the European counterpart of °890, he

performed the analysis by comparing the starting ingredients,

not the final or intermediate products. Mr. Pindar, who was

a scientific advisor to Lubrizol, read the claims as a person of

skill in the art would read the claims. Moreover,

Dr. Salomon, a lubricant formulator working for Lubrizol,

testified (although not in the specific context of interpreting

claim language) that her concern as a formulator is "what goes

in the pot.”

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iS an mstrument formed by the imtermixture of

two or more ingredients, and possessing properties which

belong to none of these ingredients in their separate

stale lhe intermixture of ingredients in a composition

of matter may be produced by mechanical or chemical

operations, and is result may be a compound substance

resoivanie wio ws consent eiemens by mechanical

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Lubrizol added to its motor oil the ingredients taught by

the specification, and articulated in the claims, of Exxon’s

‘890 patent. Lubrizol then sought to avoid infringement by

arguing at trial that the claims are not literally infringed

because metal ions from some of the ingredients complex with

the ashless dispersant specified in the claims, converting

"ashless dispersant” to nonashless dispersant. That argument

was unsuccessful under the district court's claim

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ngredients even

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startups

though the Claim requires mo particular

mixing or particular process steps. It is not a

with specific directions for making the product

Certainly the examiner found nothing technically wrong with

the claim as a list of additives for motor oil

an expereiy ed claim drafter, Mi

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in the view of

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claims define the final product

lf Lubrizol had attempted to advance the position of

the majority in this appeal, we would have rejected the

The majority, in its footnote 3, questions whether the claims as so

interpreted would be literally infringed if one of the “starting ingredients

is made in situ. That issue is not before us, but it appears to me that there

vould be literal infringernent in such a circumstance because the product

farmer “in eit” Weelt wm he coneiferel a tarting ingreciert

pe f evrigard “a fihowte ‘we r. remte wopr af a he Mr J

Ot pea Bor bet eee, ae “ge io “ mtiw Ad VW

Aetd wa +*tvrdhiddA 4 AAAS Ad dod iy OF ee ee

(tia 7? BAF AK ty yw) Me ify JDe

( tis ho AKAM UMMA WY ab ieee ob 6 UIA

“)) Vall! ploseree Gal ion Ul ae WURLE Wud! tbo

wad OV! specifically muciuGe? wo 2 MGU0D for GuoCle? verdic

mace betore the jury retarted © Consider Ms verdict"); Malic

vy. Schulmerich Carillons, Inc., 952 F.24 1320, 1324, 21)

USPQ 1161, 1164 (Fed. Cir. 1991) ("*Fed_. R.Civ.P. 50(b)

allows for entry of JNOV ‘only in accordance with the party's

motion for a directed verdict.’"), cert. denied, 504 U.S. 974

(1992)." The issue on appeal is not the global question

What do Exxon’s claims mean?” but rather "Did the district

court err in denying Lubrizol’s JMOL?" It is not unusual to

ee 4 case where a party failed to raise a defense on which il

might have prevailed. However, Our feview Of a tial Court

wing Of 4 Moen for TALL, We ohied Wb the Bou:

a. ; fi/ve ity : ; ; dh sth FPe4 Aes URAL ao tae hyieyt met UD

Shithinbinel ive =6feTie Wh aft atterrnarrye ary i AE ABR ae Oe

Wieetion wae fade i the aeinde stated iff (he peet-verdiet mietien.—§= it

Malia, thie court held that 4 general post-trial IMOL motion incorporated

ihe specifics of the earlier IMOL motion. The majority finds support it

Malta because the broader meaning it gives the claim than that advanced

by Lubrizol is smaller than the spread between the general and specific

motions in Malta. | read Malta to say that the general and specific motion

in that case were the same. In any event, the majority's premise that

Exxon is not prejudiced by denial of a new trial is flawed because the

majority advanced a broader claim interpretation than that advanced by

Lubrizol. Infringement of a narrower claim would establish infringement

of a broader claim to the same invention, but the converse is not true

Failure to prove infringement of the narrower claim does not establish non

infringement of the broader claim

Are a - A-“@r ge vei see AA - , - ering wrAA

4.4 0 “# ie 7 us tev @# 7 riuvAg oe at a tthe A

(uss {fi / mea, ’ “uut~A Ud Ditth bd 4 April * Ahed aed Pe

AAA thy AW Gh AU big YAMA WK daAlA ‘iis yy. Wa

“ oa /

Ad Adase Uy “ Figs (4 JY hike, beth > a tA

Gi BOGE COI). ¥. Latéaah Biomedical, ln., OF 74 BD

654, ZV" SPOZE 1292, 1299 (ree. Cu Lyi) ( (Jule Vitaliy

the omy avaliable remedy upon finding error wm 2 judgment

entered on a jury verdict where [issue not preserved by proper

JMOL] is limited to a remand for a new trial.”), cert. denied

504 U.S. 980 (1992)

rhe precedent cited by the majority for reversal is inapt

In Laitram Corp. v. Kexnord, Inc., 939 P.dd 1533, 19

USPOld 1367 (Ped. Civ. 1991), Us court agreed with the

appellant’ s posilion raised below by MAUL, and on appeal. No

iaieiial sue OF faci p/ih ys ied wie y of VAR He Mitt masta ai

Mi /aieehiity Lain LA bids. ide /O0 fF 48 1008

tion) 4 (en. ft i tao), ae TDALTL, Wee IVR Vi

A MUHA BAA BH Te hee W/8e feiHA Til tial Hi

biked jeeidd Sinn ba WP LAM Paes, PL oe

| af PIPIN (DAA Fi LR Lal Melle, Ae by]

Sle, sire. To ei a hl nL lL AL Le Bd pit j

bid

Fea BR Civ. P. SO: Notes of Advisory Committee on Rules (1991

Amendment) state

The second sentence of paragraph (a)(2) does impose a

requirement that the moving party articulate the basis on which :

judgment as a matter of law might be rendered. The articulation is

necessary to achieve the purpose of the requirement that the motion

be made before the case is submitted to the jury, so that the

responding party may s¢ ek to correct anv overlooked deficiencies in

the proof

36a

The wisdom of Rule 50 cannot be gainsaid. By

advocating a different interpretation of the claim sua sponte,

the majority required Exxon to litigate during trial not only its

opponent’s position but also the unknowable position of the

appellate court. Exxon has been deprived of a jury trial on an

unasserted and untried theory. The majority decision comes

out of the blue. The majority opines that the requirement that

Exxon prove infringement of a product claim does not come

out of the blue, and that Exxon, therefore, is not entitled to

escape the flaw of its claim drafting by a second trial. This

reflects the majority's view, not Exxon’s, that a list of

additives for motor oil is an invention for a process or for a

product made by a process. Exxon never asserted that its

claim was for anything for a product. Without pointing to any

rule set by the statute or a regulation or by the MANUAL OF

PATENT EXAMINING PROCEDURE, the majority decides

that Exxon’s standard type of claim is poorly drafted.

The majority then states that Exxon attempted to prove

infringement under the majority’s claim interpretation by

evidence of what happened chemically in the pot in pre-final

states. This evidence "is credited" in determining the post-

trial motion. The record discloses that Lubrizol attempted to

prove that its final product did not contain ashless dispersant

because of what happened in the pot. Lubrizol’s theory was

that its dispersant, although ashless to begin with, complexed

with metal so as to become non-ashless in the final product.

Exxon countered with evidence that such complexation was

transient. To rule for Lubrizol, the majority must assume that

the absence of proof by Exxon, for example, that for a few

moments after mixing no complexation occurred—which

would satisfy the majority’s claim interpretation—means that

that fact could not be proved. Whether or not Exxon was

precluded from such proof is debatable. That issue was not

part of Exxon’s or Lubrizol’s theory of the case. But

AES Le heal ract

37a

precluded or not, there was no reason for Exxon to evaluate

any intermediate product.

The majority notes its claim interpretation is broader than

that of Lubrizol and, therefore, it is easier to prove

infringement, but Exxon is denied that opportunity. In my

view this is untenable. I read nothing in Markman v.

Westview Instruments, Inc., 52 F.3d 967, 34 USPQ2d 1321

(Fed. Cir. 1995) which sanctions this procedure. Markman

upheld a ruling on a JMOL motion. Exxon cannot

conceivably have waived the issue of infringement under the

majority’s broader claim construction, as the majority rules.

Exxon proposed deletion of an instruction on infriagement by

equivalents in the final version of the instructions, but this

revision occurred only after the district court adopted Exxon’s

claim interpretation in its instructions. Exxon did not waive

this issue in connection with Lubrizol’s or the majority’s

different interpretation of the claim. The most the majority

could say, as a matter of law, is that there is no possibility of

proof of literal infringement. However, the question of

infringement under the doctrine of equivalents is a jury

question under the recent decision of this court in banc.

Hilton Davis Chem. Co. v. Warner-Jenkinson Co., No. 93-

1088, 1995 U.S. App. Lexis 21069, at *24 (per curiam) (Fed.

Cir. Aug. 8, 1995). The majority simply cuts Exxon off from |

its right to have the issue of infringement under the majority’s

claim interpretation tried to a jury.

For the foregoing reasons, I dissent to the merits and to

the procedure adopted by the majority.

38a

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF TEXAS

HOUSTON DIVISION

EXXON CHEMICAL PATENTS, §

INC., EXXON CORPORATION, §

and EXXON RESEARCH AND §

ENGINEERING COMPANY, §

Plaintiffs and §

Counter-Defendants §

VS. § CIVIL ACTION

§ NO. H-89-3203

THE LUBRIZOL CORPORATION, §

Defendant and §

Counter-Plaintiff. §

PERMANENT INJUNCTION

On December 23, 1992 after a multi-week trial, the jury

returned a verdict finding (a) that Exxon’s U.S. Letters Patent

4,867,890 is valid and enforceable, (b) that Lubrizol has

directly infringed Claim 61 of the patent, and has

contributorily-infringed and induced the infringement of Claim

1 of the patent, (c) that such infringement was willful and (d)

that Lubrizol has acted in bad faith. On the basis of the full

record at trial, the jury verdict, and the applicable law, this

Court finds and holds that the patent is valid, willfully

infringed and enforceable, and that Lubrizol has acted in bad

faith. The Court also finds and holds that the provisions of

this Permanent Injunction are appropriate and necessary to

protect Plaintiffs’ rights under this patent. Accordingly, the

Court grants Exxon’s application for an Order of Permanent

Injunction.

39a

IT IS ORDERED:

1. The Lubrizol Corporation, its subsidiaries, divisions

and affiliates, and their directors, officers, agents, servants,

representatives, employees, successors and assigns, and all

persons in active concert or participation with any of them

who receive notice of this injunction, are enjoined:

a. from making, using or selling the following

products in the United States:

3577X 7888 8855 8870

6529 7888N 8855C 8870A

6589U 8385A 8855D 8875D

7574H 8385F 8855E 8887

7574L 8805 8855F 8887A

7574X 8805F 8855G 8889

7608P 8818 8855K 8908

7808C 8821 8855W 8909

7882 8850A 8865 8910

7884 8852 8866 8912

or any other products no more than colorably different from

one or more of the products listed above;

b. from making, using or selling any lubricating oil

concentrate composition that infringes Claim 61 of U.S.

Letters Patent No. 4,867,890;

c. from inducing infringement or contributorily

infringing Claim 1 of U.S. Letters Patent No. 4,867,890, by

manufacture, use or sale of lubricating oil concentrate

compositions; and

d. from otherwise directly infringing, contributorily

infringing, or inducing infringement of the claims of U'S.

Letters Patent No. 4,867,890.

2. Within twenty-four hours from the signing of this

Permanent Injunction, Lubrizol shall contact all customers

40a

who have purchased from Lubrizol any infringing product

within the last sixty days and advise those customers of the

terms of this permanent injunction order.

3. Within fourteen days of the signing of this Permanent

Injunction, Lubrizol shall file with the Court and provide to

Exxon an accounting of all infringing products shipped or sold

since December 23, 1992 to any United States customer or

sold or shipped by Lubrizol from anywhere in the United

States to any customer, regardless of where the customer is

located.

4. During the terms of U.S. Letters Patent No.

4,867,890, prior to selling in the United States any copper-

containing lubricating oil composition suitable as a crankcase

lubricant in internal combustion engines, or any copper

containing component intended therefor, or any copper-

containing lubricating oil concentrate composition suitable for

use in preparing a crankcase lubricant in internal combustion

engines, Or any copper containing component intended

therefor, Lubrizol shall submit to Exxon or its designee

specification sheets, formula cards, blend cards, recommended

treat rates and any other information necessary for Exxon to

determine whether such composition would infringe the claims

of the patent. Such information shall be subject to an

appropriate Protective Order to be entered.

5. This Permanent Injunction includes without limitation

the prohibitions set out in 35 U.S.C. § 271(f)(1) and (2).

6. This Court retains jurisdiction to interpret and enforce

the provisions of this Permanent Injunction, including any

future question of its violation or of infringement by Lubrizol

of U.S. Letters Patent No. 4,867,890.

4la

Signed at 2:00 p.m. this 7th day of January, 1993 at

Houston, Texas.

s/ Norman Black

NORMAN W. BLACK

CHIEF JUDGE

42a

ENTERED FEB. 5 1993

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF TEXAS

HOUSTON DIVISION

EXXON CHEMICAL PATENTS,

INC., EXXON CORPORATION,

and EXXON RESEARCH AND

ENGINEERING COMPANY,

Plaintiffs and

Counter-Defendants,

CIVIL ACTION

NO. H-89-3203

THE LUBRIZOL CORPORATION,

Defendant and

Counter-Plaintiff.

CO? COP CO? COP CO? CO? (CO? CO? CO? 4? CO? (CO? CO?

FINAL JUDGMENT ON LIABILITY

On December 23, 1992, the Jury returned its verdict on

the Court’s written questions. On the basis of the Jury’s

findings, the evidence at trial, the findings of this Court and

the applicable law

It is ORDERED, ADJUDGED AND DECREED as

follows:

1. This Court has jurisdiction over the subject matter of

this action and of the parties. Venue is proper. Each plaintiff

has standing.

2. U.S. Patent No. 4,867,890 issued September 19,

1989.

oh ¢ RESET si IR OM We oe BS ES Se

43a

3. Lubrizol has not carried its burden of overcoming the

presumption of validity of U.S. Patent No. 4,867,890. It is

not invalid under 35 U.S.C. § 102(a), (b), (e), (f) or (g), nor

would it have been obvious under 35 U.S.C. § 103.

4. U.S. Patent No. 4,867,890 is enforceable and Exxon

did not commit inequitable conduct in obtaining that patent.

5. Lubrizol has directly infringed claims 61, 62, 63 and

72 of U.S. Patent No. 4,867,890 by the manufacture, use and

sale of its product 8855G and the products identified on

Appendix A (except 8385A and 8385F).

6. Lubrizol has induced infringement of claims 1, 25, 27

and 37 of U.S. Patent No. 4,867,890 by the manufacture, use

and sale of its product 8855G and its products identified on

Appendix A by inducing its customers to directly infringe

these claims.

7. Lubrizol has contributorily infringed claims 1, 25, 27

and 37 of U.S. Patent No. 4,867,890 by the manufacture, use

and sale of its product 8855G and the products identified on

Appendix A to its customers who directly infringed these

claims.

8. Lubrizol’s infringement of U.S. Patent No. 4,867,890

was willful.

9. Lubrizol has acted in bad faith throughout this entire

litigation.

10. Lubrizol is permanently enjoined from infringing

U.S. Patent No. 4,867,890 as set out in the Permanent

Injunction, signed January 7, 1993, and shall obey all terms

of that Injunction.

11. Lubrizol’s First and Third Counterclaims of Its

Amended Answer and Counterclaim, seeking certain

declaratory relief and asserting antitrust allegations, are

dismissed with prejudice.

tha

Plaintiff's motion for attorneys’ fees and sanctions (entry

481) is taken under advisement.

IT IS SO ORDERED.

Signed this 5th day of February, 1993 at Houston, Texas.

s/ Norman Black

NORMAN W. BLACK

CHIEF JUDGE

3577X

6529

6589U

7574H

7574L

7574X

7608P

7808C

7882

7884

45a

Appendix A

LUBRIZOL PRODUCTS

7888

7888N

8385A

8385F

8805

8805F

8818

8821

8850A

8852

8855

8855C

8855D

8855E

8855F

8855K

8855W

8865

8866

8870

8870A

8875D

8887

8887A

8889

8908

8909

8910

8912

40a

ENTERED FEB. 16 1993

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF TEXAS

HOUSTON DIVISION

EXXON CHEMICAL PATENTS, §

INC, et al,, §

Plaintitts S

\ § CIVIL ACTION

8 NO. Het 4004

MHh LURRIZOL CORPORATION, §

Lrefeuntant N

ORDER

Pending before the Court are several motions in the above

matter. Responses and reply briefS have been filed. A trial

on liability was held in December 1992 and after hearing all

the evidence a jury found for Plaintiff. Defendant, The

Lubrizo! Corporation ("Lubrizol") has moved for judgment in

its favor, amended findings and judgment or, alternatively, a

new trial. Defendant contends the evidence presented at trial

establishes that the verdict was inconsistent with the law

governing the case and believes all claims against it should be

dismissed, the permanent injunction vacated and that the

Court’s findings and judgment on the issue of the "890 Patent

should be amended. In the alternative, Defendant asserts the

rulings and charges by the Court were contrary to both the

law and the weight of the evidence resulting in an unfair mal

The Court has again reviewed Lubrizol’s argument that &

did not infringe the “S90 Patent or that the “S90 Patent is

invalid. There was extensive testimony at trial regarding

LeSuer "493 Patent and its possible relationship to the ‘890

Patent. The jury heard Defendant's expert witnesses testify

and had an opportunity to assess their credibility and

determine what weight to give their testimony. Their rejection

of Lubrizol’s position can easily be supported by the evidence

Lubrizol continues to assert that Exxon Corporation is not

4 proper party, This issue was resolved early in this litigation

and the Court found The Exxon Corporation is the sole legal

entity with the right to license the patent and bring suit againat

infvingers. Defendant aleo asserta a new trial ia warranted

aed OF Chala Conatruetion. This argument lacks merit as

well

Th AHIR, ~Larieel Gantends there Wak af erfanenus

YUEY VASEFMROHIOR On Ee Feeue CUROOFIE feguitattie comdiet

The Court meticulously reviewed the Airy dvetructions before

they were piven. After reevalating [ewe No. § the Cour

fimais & Clearly set forth the Durden of proof and the jury was

thoroughly instructed on inequitable conduct. Parthermore.

Lubrizol failed to properly object or preserve error on this

poimt. Lubrizol also complains that it was prejudiced because

of additional errors in the jury instructions. Once again, the

Court finds these arguments are meritless.

Finally, Lubrizol contends the Court erred by unduly

limiting trial time and the number of expert witnesses.

Lubrizol had a full and fair trial and was not deprived of due

process. The Court has broad discretion in determining how

a trial shall proceed. This claim is frivolous. Based on the

above, it is

ORDERED that Defendant Lubrizol’s motion for

yadgment in s favor, amended findings and judgment or.

ahernatively, a new trial (entry 491) is DENTED. It is farther

45a

ORDERED that Defendant Lubrizol’s motion for

judgment as a matter of law at the close of all the evidence

(entry 464) is MOOT as this motion was denied on the record

during trial. It is further

ORDERED that Defendant Lubrizol’s motion in limine to

exclude Magistrate-Judge Botley’s January 30, 1991

Memorandum and Order (entry 406) is MOOT. It is further

ORDERED that Defendant Lubrizol's motion to protect

the parties’ confidential information during and after trial

(entry 427) ia MOOT. §$ Tt ta further

ORDERED that Plaiatiils motions concerning attorneys

fees, Ooate A Sanetinns (entries 422) and 481) are wieter

nt bemennennd

IT TS SO ORDERED

Sigmed tis 12th Gay Of FPetrwary, [985 at Houston

Texas

NORMAN W. BLACK

CHIEF JUDGE

FILED FEB. 17 1993

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF TEXAS

HOUSTON DIVISION

EXXON CHEMICAL PATENTS, §

INC,, EXXON CORPORATION, §

and EXXON RESEARCH AND §

ENGINEERING CO.,, 5

;

Phaiatitts

\ § CIVIL ACTION

§ NO, Heat

THE LURBRIZOL CORPORATION, = §

St LF

Lreferdant

ORDER

This case was filed on September 19, 1989 as part of the

continuing saga of the two leading oil additive manufacturers’

use of the judicial process to try to obtain market advantage

over each other. Plaintiffs ("Exxon") and Defendant

("Lubrizol") have attacked each other in the courts of Canada

and the United States over a number of issues and over a long

period of time.

When this Judge became aware fairly early in this case

that there was a very high likelihood that the fact finder would

conclude that the patent had been infringed and that settlement

was in the best interests of the shareholders of the parties,

every effort was made to encourage resolution of the issues

short of a jury tial. The Judge held frequent conferences

with counsel and resolved as many of the complex disputes as

time permitted. When the discovery disputes began to drive

50a

the case, Magistrate Judge Calvin Botley provided excellent

service to the parties in helping to resolve those disputes. It

soon became evident that Lubrizol was not at all interested in

settlement, but preferred a war of attrition by resisting

reasonable discovery and by continuously injecting into the

case extraneous and inflammatory issues calculated solely to

embarrass Exxon and cause as much expense and delay as its

counsel couid invent. The Magistrate Judge soon lost patience

with Lubrizol, and the Judge began to assume as much control

over the case as possible.

After becoming convinced that the best interests of both

parties was in settlement, the Judge assigned the case for

mediation to Alan F. Levin, Esquire, who possessed every

qualification for mediating this dispute including a degree in

psychology. Unfortunately, Mr. Levin did not major in

abnormal psychology, and the mediation ultimately failed.

When counsel presented the Judge for in camera

inspection thousands of pages of complex documents

containing reference to this particular chemical patent and

other chemistry-related matters, the Mediator was named

Special Master to attempt to resolve the confidentiality

questions. Mr. Levin worked literally night and day for an

extended period of time and resolved those disputes to the

Court’s satisfaction.

During and after Mr. Levin’s work, the Judge held a

number of face-to-face meetings with the attorneys and the

highest officials of both Exxon Chemicals and Lubrizol to

explore the issues and to lend his services to bring the case to

a conclusion fair to both sides. These settlement efforts are

mentioned only to help explain why this case began to take on

a life of its own, and neither party is being penalized in any

way for refusing to settle.

After concluding that the case had reached the point

where it had to be tried, the Court (with the agreement of

5la

counsel) bifurcated the trial, and the issue of liability only was

submitted to a jury. On the tenth day of trial, December 23,

the Jury found for Exxon on all issues including a finding of

"willful infringement." The Order denying Lubrizol’s motion

for entry of judgment in its favor was docket entry number

505.

Pending before the Court are Exxon’s motions for the

recovery of attorneys’ fees and related costs, for sanctions and

for enhancement of damages. Plaintiffs have briefed four

provisions of law to sustain their claim for attorneys’ fees and

costs: 1) 35 U.S.C. § 285, 2) 28 U.S.C. § 1927, 3) Rule 11,

Fed. R. Civ. P. and 4) the Court’s inherent power.

Responses have been filed as well as reply briefs. In addition,

Plaintiffs have submitted voluminous billing records in support

of their request. After consideration of the jury verdict, the

briefs, and the detailed and voluminous billing records of

Exxon’s counsel, the Court finds that an award of attorneys’

fees and costs is appropriate in this case. The Court has also

considered Lubrizol’s submission of its attorneys’ fees and

costs.

To award attorneys’ fees under § 285 and § 1927 the

Court must ascertain whether this is an exceptional case.

Factors to consider are willful infringement, bad faith,

vexatious litigation and/or litigation misconduct. See, e.g.,

Alyeska Pipeline Co. v. Wilderness Society, 421 U.S. 240,

257-59 (1975); Bott v. Four Star Corp., 807 F.2d 1567, 1574

(Fed. Cir. 1986). This is a factual finding. See Reactive

Metals Alloys Corp. v. E.S.M., Inc., 769 F.2d 1578 (Fed.

Cir. 1985).

In this case, the jury determined that the infringement was

willful and it is the duty of this Court to verify that this

factual determination is supported by substantial evidence.

"[W]hen a trial court denies attorney fees in spite of a finding

of willful infringement, the court must explain why the case

52a

is not, "exceptional" within the meaning of the statute."

Modine Manufacturing Company v. Allen Group, Inc., 917

F.2d 538, 543 (Fed. Cir. 1990), cert. denied, 111 S.Ct. 2017

(1991) citing S.C. Johnson & Son, Inc. v. Carter-Wallace,

Inc. , 781 F.2d 198, 201 (Fed. Cir. 1986). “The trial judge is

in the best position to weigh consideratiens such as the

closeness of the case, the tactics of counsel, the conduct of the

parties, and any other factors that may contribute to a fair

allocation of the burdens of litigation as between winner and

loser. . . ." Id. at 201.

Defendant’s primary defense to willfulness is that it could

not willfully infringe because it was sued on the day the ’890

patent issued. It is possible to have willful infringement

before a patent issues. See Milgo Electric Corp. v. United

Business Communications, Inc., 623 F.2d 645, 665 (10th

Cir.), cert. denied, 449 U.S. 1066 (1980). The evidence

shows that Defendant was not an innocent manufacturer

unaware of Exxon’s forthcoming patent rights and the jury

properly found willful infringement. The patent at issue was

in the Patent Office for some nine years before it was granted,

and Exxon had previously obtained a very similar patent in the

European Patent Office.

It is impossible for the Court to list all the incidents of

willfulness, vexatious litigation, and bad faith that has

occurred to date, but a few illustrations will be given.

Immediately following the filing of this lawsuit, Defendant

filed a declaratory judgment action in Ohio and failed to

inform that Court of the pending Texas litigation. This Court

was forced to confer with the Judge handling that case and

both judges decided that justice demanded that the litigation

remain in Texas.

Every issue raised was disputed and thoroughly

overbriefed. | There were motions, responses, replies,

responses to the replies, and exhibits flowed like oil. Lubrizol

aia

CE IRD pied ee eA

53a

filed many unnecessary motions. For example, a motion to

reconsider was filed after essentially every ruling.

Defendant’s filing of its second counterclaim asserting the

alleged infringement of the LeSuer ’493 patent, which had

expired mor: than six years before, was time-barred and

clearly frivolous at the time it was filed. Defendant also went

through a period of time where it filed all its pleadings under

seal claiming privilege where there was no legitimate

argument for such claim. While a few of these documents

should remain confidential, Lubrizol abused this process far

more than Exxon did.

The discovery disputes in this case were beyond compare

and to document them would require a law review article to

supplement this memorandum. The record is replete with

warnings by the Court and the Magistrate Judge followed by

broken promises by Defendant to discontinue such conduct.

The only part of this litigation that withstands scrutiny for

violation of the canons of ethics and the Federal Rules of Civil

Procedure is the conduct of William C. Slusser and Lee

Kaplan for Exxon and Carol Vance for Lubrizol. They did

their best to control the cost and delay of this litigation and

performed according to the highest standards of their

profession. Unfortunately for Lubrizol, it was evident early

in this case that Mr. Vance was not being permitted to control

Lubrizol. The Lubrizol pre-trial and trial strategy was under

the control of its other counsel.

The court has reviewed Plaintiffs’ request for attorneys’

fees and costs in light of the factors set forth in Johnson v.

Georgia Highway Express, Inc. , 488 F.2d 714, 720 (Sth Cir.

1974) and makes the following findings:

1. The time and labor required. This suit was filed in

September 1989 in the Southern District of Texas. Defendants

immediately filed a declaratory judgment action in Ohio then

moved to dismiss the Texas case. Defendant concurrently

54a

claimed this Court lacked jurisdiction alleging the patent had

not issued. That issue was taken to the United States Court of

Appeals for the Federal Circuit. This was only the beginning.

Every point became a hotly contested issue, and the discovery

became so unmanageable that even the Special Master had to

suspend his busy law practice to review the large number of

documents submitted for in camera review. Numerous

hearings were held on various topics.

Plaintiffs retained the services of the law firms of Baker

& Botts and Fitzpatrick, Cella, Harper & Scinto to assist them

in this litigation. Exxon is not seeking recovery of the fees it

paid to the Cleveland law firm for defending the duplicative

Ohio suit or for fees for in-house counsel which may be

recoverable where the work performed would otherwise be

done by outside counsel.

After careful review the Court accepts as reasonable the

documentation of Exxon’s counsel as to time required by the

attorneys involved and finds no reason to adjust these amounts

up or down.

2. The novelty and difficulty of the questions. This case

involved many complicated issues and unique problems. The

analytical effort involved, especially during discovery, made

this case exceptional and difficult. The introductory part of

this i::: morandum spells out these matters in detail.

3. The skill requisite to perform the legal service

properly. This is a complex patent infringement case.

Plaintiffs’ counsel capably presented and pursued their case.

The Court found all issues ably briefed by Exxon’s counsel

and finds that their excesses were mandated by the action of

Lubrizol’s counsel.

4. The preclusion of other employment by the attorney

due to acceptance of the case. Plaintiffs’ counsel did not

mention whether work on this case precluded other

5Sa

employment, but the Court knows that both Mr. Slusser and

Mr. Kaplan had to have ::;oted 100% of their time to this

case over a substantial pexixxi of time.

5. The customary fee. Exxon counsel have submitted to

the Court in camera severs| bound volumes concerning the

fees it charged its clients ia this litigation. The Court finds

these rates to be within the expected range for attorneys of

these experience levels in the Houston legal community and,

in absence of any contrary evidence, concludes that they are

reasonable.

6. Whether the fee is fixed or contingent. The fee here

was apparently fixed. The Court finds no basis in this factor

to adjust the award upward or downward.

7. Time limitations imposed by the client or the

circumstances. Counsel did not spell out any particular

problems, but it is obvious that this case monopolized a

substantial portion of their time.

8. The amount involved and the results obtained. The

amount of fees and costs involved in this case by both sides

are, to use a word that barely suffices, astronomical.

Although the damages portion of the trial has not yet taken

place, it is obvious from the amount of money spent by both

sides on the issue of liability that the product covered by the

"890 patent is extremely profitable.

9. The experience, reputation, and ability of the

attorneys. All of the law firms involved in this case are

sizable and well respected. The Court is personally familiar

with the excellent reputation of many of the individual

attorneys. For the purposes of this analysis, the Court finds

that all of the attorneys for Exxon were highly experienced,

possessed excellent reputations and showed great ability.

10. The “undesirability" of the case. Counsel did not

claim any element of undesirability attached to this case, but

56a

the Court finds that the only "desirable" factor was that both

clients had deep pockets and understanding general counsel.

11. The nature and length of the professional relationship

with the client. Plaintiff has retained the services of Baker &

Botts for several decades and that firm often retains additional

counsel when necessary. This factor does not suggest

adjustment of the fee upward or downward.

12. Awards in similar cases. Neither party has presented

evidence of other awards in analogous cases, and the Court

seriously doubts that there is a "similar" case. The Court’s

experience and research indicate that the amount claimed by

Exxon’s counsel is at least proportionate to that awarded in

large, complex cases.

Although Plaintiffs’ fees and costs are far and away more

than they should have been, they were necessarily incurred

because of Lubrizol’s conduct. Defendants, though vigorously

opposed to Plaintiffs’ request for attorneys’ fees and costs,

have failed to challenge the reasonableness of the time spent

or fees charged. It is interesting that Lubrizol’s attorneys’

fees and costs closely approximate Exxon’s. The thrust of

their opposition is that Plaintiff's application for attorneys’

fees lacks sufficient specificity to allow this Court to make a

fair award. While the summary sent to Defendant may not

contain the detail desired, the Court has been given four

bound volumes in camera of supporting material and billing

records.

Plaintiff requests prejudgment interest at the rate of 8.5%,

compounded daily, on any award of attorneys’ fees. Under §

285 the Court is authorized to make such an award if it finds

"bad faith or other exceptional circumstances. .. ." Matis v.

Spears, 857 F.2d 749, 761 (Fed. Cir. 1988). The Court does

not choose to award prejudgment interest.

57a

Plaintiffs also seek a finding that they will be entitled to

enhanced damages pursuant to 35 U.S.C. § 284 which

provides that, in a patent infringement case, a trial court "may

increase the damages up to three times the amount found or

assessed." "The decision to increase damages is committed to

the discretion of the trial judge. . . .". Modine, 917 F.2d at

543. However, "[a] finding of willful infringement merely

authorizes, but does not mandate, an award of increased

damages." Rite-Hite Corp. v. Kelley Co., Inc., 819 F.2d

1120, 1126 (Fed. Cir. 1987). This was clearly an exceptional

and hard-fought case with a great deal of personal animosity

expressed by certain of Lubrizol’s counsel. However,

damages have not yet been determined, and the Court finds

that a ruling on enhancement at this point in time would be

premature.

Plaintiffs have also moved that sanctions be imposed

against Defendant in addition to an award of attorneys’ fees

under 35 U.S.C. § 285 as a punishment for Lubrizol’s abuse

of the federal courts. Trial in this matter was bifurcated and

is not yet complete. The Court finds that a review of the

merits of Plaintiffs’ motion at this point in the litigation could

result in a duplication of efforts, and that a ruling on sanctions

would best be made once litigation is complete. Therefore,

the motion for sanctions is being denied at this time subject to

being reurged after the conclusion of the trial on damages.

Finally, Plaintiff requests that the Court utilize its inherent

power and award attorneys’ fees and impose additional

sanctions against Defendant to restore equity. The attorneys’

fees and costs awarded pursuant to 35 U.S.C. § 285 are more

than adequate to restore equity and hopefully ensure that such

abuses are not repeated. Based on the above, it is

ORDERED that Plaintiffs’ motion for attorneys’ fees

(entry 481) is GRANTED and Plaintiffs shall recover

58a

reasonable fees in the amount of $17,890,557.38 and costs of

$235,693.11. It is further

ORDERED that Plaintiffs’ motion for sanctions (entry

481) is DENIED subject to being reurged after the trial on

damages and a final judgment entered. It is further

ORDERED that Plaintiffs’ motion for enhancement of

damages is DENIED subject to being reurged. Again the

Court finds it would be best to consider this motion once the

trial process is complete. It is further

ORDERED that Plaintiffs’ motion for recovery of

attorneys’ fees and related costs and expenses (entry 422)

which was filed prior to trial is MOOT based on the ruling on

the motion for attorneys’ fees filed after the trial on liability.

It is further

ORDERED that Plaintiff’s motion to enforce this Court’s

instructions concerning submission of attorneys’ fees (entry

497) is MOOT. It is further

ORDERED that the parties abide by the following

schedule: all motions must be filed and discovery on damages

completed by June 1, 1993; the joint pretrial order shall be

filed on or before July 5, 1993 and is limited to a total of

thirty pages; and the remainder of this case is set for docket

call on August 30, 1993 in Courtroom 11B, United States

Courthouse, 515 Rusk, Houston, Texas. |

IT IS SO ORDERED.

Signed this 17th day of February, 1993 at Houston,

Texas.

s/Norman Black

NORMAN W. BLACK

CHIEF JUDGE

59a

ENTERED FEB. 17 1994

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF TEXAS

HOUSTON DIVISION

THE LUBRIZOL CORPORATION,

EXXON CHEMICAL PATENTS, §

INC., EXXON CORPORATION, §

and EXXON RESEARCH & §

ENGINEERING COMPANY, §

Plaintiffs, §

VS. § CIVIL ACTION

§ NO. H-89-3203

Defendant.

MEMORANDUM AND ORDER

Following a bifurcation of this case, a final judgment on

liability was signed on February 5, 1993, and an order signed

on February 17, 1993 awarded Plaintiffs ("Exxon") attorneys’

fees of $17,890,557.38 and costs of $235,693.11. Both the

judgment on liability and order granting the motion for

attorneys’ fees were duly entered.

Now that a trial on the issue of damages has resulted in

a jury verdict finding Exxon to have been damaged in the

amount of $48,000,000, Exxon has moved for the award of

attorneys’ fees incurred after the liability trial; for

prejudgment interest; and for enhanced damages under 28

U.S.C. § 284.

60a

Both Exxon and Defendant ("Lubrizol") have thoroughly

briefed the issues, and the Court heard oral arguments on

February 11, 1994.

I. ENHANCEMENT OF DAMAGES

Exxon is seeking $144,000,000 in damages exclusive of

attorneys’ fees and costs as authorized by the laws relating to

patents and not as a sanction.

Since the Court has already found willful infringement

and bad faith, an award of enhanced damages is permitted.

Beatrice Foods Co. v. New England Printing and

Lithographing Co., 923 F.2d 1576 (Fed. Cir. 1991). The

statute, 28 U.S.C. § 284, which authorizes enhancement has

been held to be a matter of discretion and to be based upon

the nine factors in Read Corp. v. Portec, Inc., 970 F.2d 816

(Fed. Cir. 1992):

1. WHETHER LUBRIZOL DELIBERATELY COPIED

EXXON’S PATENT.

Despite Lubrizol’s attempts to prove otherwise at trial,

this case contained an unusual "smoking gun." After Exxon

obtained its European patent for its copper-containing

formulation, a Lubrizol memo with a copy of that patent

contained language indicating a plan to "exploit" the process

in the United States. The memo contains references to

Lubrizol ingredients which mimic the Exxon components.

Before Exxon showed that copper could be an anti-oxidant,

Lubrizol considered it an oxidant, and the effectiveness of

Exxon’s formulation was a surprise.

6la

2. WHETHER LUBRIZOL INVESTIGATED THE

SCOPE OF EXXON’S PATENT AND FORMED A GOOD-

FAITH BELIEF THAT IT WAS INVALID OR THAT

LUBRIZOL’S FORMULATION DID NOT INFRINGE.

The jury in the liability trial did not believe Lubrizol’s

story that it relied on opinions of counsel. The opinions of

both Dr. Boisselle and Mr. Pindar, Lubrizol experts, showed

that as early as 1985, Lubrizol knew the problems caused by

the Exxon patent and substantially ignored the advice of

counsel. At trial, Lubrizol tried to argue that its products did

not contain ashless dispersants and that Exxon’s patent was

directed to a composition defined by its final components

rather than starting ingredients. This "in-the-pot" argument

was contrary to Dr. Pindar’s "infringement chart." Lubrizol

did not even obtain Dr. Boisselle’s opinion on the ’890 patent

until 18 months after the suit was filed.

3. LUBRIZOL’S CONDUCT AS A PARTY TO THE

LITIGATION.

The Court’s order of February 17, 1993 makes it clear

that Lubrizol exceeded the bounds of adversarial litigating at

every turn through the conclusion of the liability phase of this

suit. They dragged into the case numerous red herrings,

including attempts to smear Exxon with irrelevant engine-test

problems; stretched the discovery to unreasonable lengths; and

misrepresented the law to the Court.

4. SPECIFICATIONS OF LUBRIZOL’S DISCOVERY

ABUSES.

Both the trial judge and the magistrate judge found that

Lubrizol engaged in obstructive behavior prior to the liability

trial. Counsel made unnecessary and lengthy objections and

interjections during depositions and made so many excessive

discovery requests that the cost and delay was substantial.

Lubrizol’s accounting expert, Mr. Miller, and their marketing

62a

expert, Mr. Long, even contradicted each other on the proper

method for analyzing cost data on comparable products.

Lubrizol made many unnecessary objections, for example,

complaining about a definition of "power of incumbency"

when they had used that exact term in their own 1992 annual

report.

The Court feels that Lubrizol’s liability-trial counsel

misrepresented patent law in their first proposed charge on the

law and in their statement of the state of the law concerning

a stay pending appeal. Exxon continuously showed that the

statements of the law set out by Lubrizol in this District were

diametrically opposed to Lubrizol’s statement of the law in

prior litigation with Exxon.

The Court finds that other examples set out in Exxon’s

damages trial brief were true. It was especially egregious for

Lubrizol to make a key issue out of the fact that Exxon did

not report every engine-test failure when that should never

have been an issue. Both Exxon and Lubrizol were dropping

certain failed tests, and it was legitimate for both to do so.

5. A COMPARISON OF RELATIVE SIZE OF THE

PARTIES.

In considering how multiplying the damages would affect

Lubrizol, the Court notes that Lubrizol sold over

$333 ,000,000 of infringing products and had total revenues in

1992 of over $1.5 billion. Its net income was over

$124,000,000.

6. THIS WAS NOT A CLOSE CASE.

The case was subjected to extremely thorough discovery

and was presented to the jury fully and completely. The jury

spent three hours finding willful infringement and bad faith,

and the verdict was well supported by the evidence and the

weakness of Lubrizol’s defenses.

63a

7. LUBRIZOL’S INFRINGEMENT INCREASED

AFTER THE LIABILITY VERDICT.

Lubrizol sold infringing products for more than three

years after suit was filed, and substantially increased its

production afier the verdict and before the injunction issued.

That conduct further justifies enhancement. Bott v. Four Star

Corp., 807 F.2d 1567 (Fed.Cir. 1986).

8. LUBRIZOL TOOK NO REMEDIAL ACTION.

Instead of switching to non-infringing formulations after

suit was filed, Lubrizol continued to use Exxon’s formulation

and produced marketing material claiming that those products

were the cornerstone of its product line.

9. LUBRIZOL WAS MOTIVATED TO HARM

EXXON.

Lubrizol claimed at the trial on damages that it could have

used non-infringing products instead of Exxon’s formulation

at little additional cost, but instead continued to infringe. If

Lubrizol had not set out to harm Exxon, it would have not

engaged in the costly and obstructive discovery and conflicting

pleading of contradictory theories which this case contained.

Lubrizol showed no motive for its conduct other than to harm

its major competitor, the Paramins division of Exxon.

10. LUBRIZOL ATTEMPTED TO HIDE ITS

MISCONDUCT.

After deciding to "exploit" Exxon’s patent, Lubrizol tried

to hide that conduct by seeking to exclude the memo by a

motion in limine and by dropping copying from its proposed

jury charge. It created an unsupportable theory that it had not

copied because it used a different copper compound even

though the U.K. patent application referenced the same copper

compounds used by both Exxon and Lubrizol. Lubrizol’s "in-

the-pot" argument was a transparent attempt to conceal its

64a

copying, and Lubrizol’s entire confusing approach to claim

interpretation was a subterfuge.

The Court finds that an enhancement of $48,000,000 is

fair, reasonable, and appropriate.

Il. ATTORNEYS’ FEES AND COSTS

Exxon seeks recovery of $4,462,944 in attorneys’ fees,

expenses of $1,392,649 and taxable costs of $37,037 in

addition to the sums already awarded by the Court’s previous

order.

Exxon has submitted as an exhibit an itemization of the

hours and hourly rates of Baker & Botts and Fitzpatrick,

Cella, Harper & Scinto. The former had seven partners,

sixteen associates, and a number of legal assistants working on

the damages phase of this case excluding the hours covered by

the previous award and hours spent on the appeal of the

liability judgment. The latter firm had four partners, six

associates, and a number of paralegals working on the same

phase also excluding hours covered by the previous award and

hours spent on the appeal of the liability judgment. The

schedule is attached to this order, and the Court finds that the

hours and hourly rate were reasonable and necessary

considering the complexity of the damages case; the delay and

obfuscation by Lubrizol; and the importance of this litigation.

The costs and expenses as well as taxable costs were

reasonable.

The time records of both Exxon and Lubrizol are sealed

and made a part of the record.

Il. PREJUDGMENT INTEREST

Exxon is not seeking an award of prejudgment interest on

its attorneys’ fees, and the court is ordinarily to award

prejudgment interest on actual damages. Lam, Inc. v. Johns-

65a

Manville Corp. , 718 F.2d 1056 (Fed.Cir. 1983). Lubrizol has

not shown an adequate basis for not awarding such interest.

The Court has wide latitude in determining the interest

rate and the frequency of compounding. Uniroyal, Inc. v.

Rudkin-Wiley Corp., 939 F.2d 1540, 1545 (Fed. Cir. 1991).

The Court ueems it proper to apply the prime rate

compounded quarterly. It is, therefore,

ORDERED that a final judgment reflect the results of this

memorandum. It is

ORDERED that the trial transcripts no longer be

restricted.

Signed this 15th day of February, 1994 at Houston,

Texas.

s/Norman Black

NORMAN W. BLACK

CHIEF JUDGE

[Schedule of Attorney Hours and Hourly Rates Omitted. ]

66a

ENTERED FEB. 17 1994

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF TEXAS

HOUSTON DIVISION

EXXON CHEMICAL PATENTS,

INC., EXXON CORPORATION,

and EXXON RESEARCH &

ENGINEERING COMPANY,

Plaintiffs,

CIVIL ACTION

NO. H-89-3203

VS.

THE LUBRIZOL CORPORATION, §

Defendant.

FINAL JUDGMENT ON DAMAGES

On November 18, 1993, the Jury returned its verdict on

the Court’s written question. On the basis of the Jury’s

finding, the evidence at trial, the findings of the Court and the

applicable law,

It is ORDERED that

1. Plaintiffs shall recover actual damages of

$48,000,000,

2. Plaintiffs shall recover enhanced damages of

$48,000,000, and

3. Plaintiffs shall recover their attorneys’ fees, expenses,

and costs of court, of $5,892,630 in addition to the sums

67a

already ordered on February 17, 1993 of $17,890,557.38 in

fees, and $235,693.11 in costs, and

4. Plaintiffs shall recover $8,768,459 in prejudgment

interest on the actual damages awarded by the Jury.

IT IS SO ORDERED.

Signed this 15th day of February, 1994 at Houston,

Texas.

s/Norman Black

NORMAN W. BLACK

CHIEF JUDGE

68a

United States Court of Appeals for the Federal Circuit

93-1275, 94-1309

EXXON CHEMICAL PATENTS, INC.,

EXXON CORPORATION and EXXON RESEARCH

AND ENGINEERING CO.,

Plaintiffs-Appellees,

LUBRIZOL CORPORATION,

Defendant-Appellant.

Appealed from: U.S. District Court for the

Southern District of Texas

Judge Black

ORDER

A combined petition for rehearing and suggestion for

rehearing in banc having been filed by the appellee, and a

response thereto having been invited by the court and filed by

the appellant, and the petition for rehearing having been

referred to and acted upon by the panel that heard the appeal,

and, thereafter, the suggestion for rehearing in banc, the

response and a reply to the response, having been referred to

the judges authorized to request a poll whether to rehear the

appeal in banc, and a poll having been requested, taken, and

failed, it is

ORDERED that the petition for rehearing be, and the

same hereby is DENIED; and it is further

ORDERED that the suggestion for rehearing in banc be,

and the same hereby is, DECLINED.

69a

Circuit Judge Mayer concurs in a separate opinion.

Circuit Judge Clevenger, with whom Circuit Judge Plager

joins, concurs in a separate opinion.

Circuit Judge Newman dissents in a separate opinion.

Chief Judge Archer, Circuit Judge Rich, and Circuit

Judge Schall did not participate in the poll.

FOR THE COURT,

FRANCIS X. GINDHART, CLERK

February 23, 1996 By Diane M. Frye

Chief Deputy Clerk

Cc: S. Leslie Misrock

William C. Slusser

Donald R. Dunner

70a

MAYER, Circuit Judge, concurring.

This is another example of the predicted mischief of

Markman v. Westview Instruments, Inc., 52 F.3d 967, 34

USPQ2d 1321 (Fed. Cir.), cert. denied, 116 S. Ct. 40 (1995).

Two judges have divined an interpretation of the claim that

occurred to no one else in this extensive litigation. None of

the parties or the trial court offered the interpretation that

these two judges chose, and none of the extensive evidence

about how those skilled in the art would understand the claim

supports it. After Markman, apparently the meaning of a

claim has very little to do with the parties’ theories of the case

and the record made in support, and everything to do with

what at least two judges here prefer regardless of the record.

CLEVENGER, Circuit Judge, with whom PLAGER, Circuit

Judge, joins, concurring in the court’s denial of the petition

for rehearing in banc.

Because more than twelve thousand pages will separate

the decision of the court in this case, found at 64 F.3d 1553

(Fed. Cir. 1995), from the comments of Judges Newman and

Mayer, we shall quickly bridge the gap to ease the mind of

any concerned reader.

Judge Newman’s general views on how to read the claims

in suit reduce themselves to a simple proposition. Although

Exxon’s patent is on a specifically defined chemical product

(a "lubricating oil composition suitable as a crankcase

lubricant"), Judge Newman treats Exxon’s claims differently,

as if they were drawn to a formula (or recipe) for making

whatever product results from mixing the ingredients named

in the formula. Were such the case, Exxon would have won

on its proofs in this case. Instead, Exxon sued Lubrizol on a

chemical product claim. To win, Exxon had to prove that

Lubrizol’s product contains, in the specific amounts stated in

the patent, the chemicals named in Exxon’s patented formula.

Tla

Although Exxon proved that Lubrizol’s product contained the

named chemicals, it failed to prove that those chemicals are

present in Lubrizol’s product in the specific required amounts.

So Exxon lost.

The basic claim interpretation theory adopted by the court

was put forth by Lubrizol in its defense to Exxon’s suit, as

explained in the court’s opinion, which amply demonstrates

the respects in which our colleagues have misread the opinion

and the record in this case.

NEWMAN, Circuit Judge, dissenting from the denial of

rehearing en banc.

The court’s decision in the case of Exxon Chem. Patents,

Inc. v. Lubrizol Corp. , 64 F.3d 1553, 35 USPQ2d 1801 (Fed.

Cir. 1995), creates important new law governing the claiming

of chemical compositions. Adopted by split panel decision, it

is gravely incorrect. It is incorrect as a matter of law, as a

matter of chemistry, and as a matter of patent practice. The

panel majority’s new rule of "claim construction" will cast a

cloud upon many thousands of existing patents, and major

classes of chemical invention will confront unclear,

unnecessary, confusing, expensive, and perhaps impossible

scientific requirements.

The panel majority holds that a claim to a chemical

formulation composition can not be infringed if there is

interaction between any of the ingredients after they are added

to the composition, such that any ingredient changes in

chemical form or ratio from that listed in the claim. Thus any

chemical change or interaction within the composition, even

loose "complexing" as appears to happen between ingredients

of this composition, renders the claim useless. The panel

majority holds that it does not matter that the Lubrizol

composition is identical to the claimed composition; the

72a

purported changes inside the composition after it is made is

held by the panel majority to negate infringement.

This is a new and incorrect rule of claim construction. It

is not necessary to state the myriad interactive changes that

occur in chemical solutions or dispersions, in order to describe

this lubricant formulation clearly and unambiguously. Many

thousands of chemical patents are written in the simple

combination style here found fatally wanting. Consider

Exxon’s claim 1 shows in the margin,’ a straightforward list

' 1. A lubricating oil composition suitable as a crankcase lubricant

in internal combustion engines comprising:

A. a major amount of lubricating oil;

B. a dispersing amount of lubricating oil dispersant selected from the

group consisting of:

(1) ashless nitrogen or ester containing dispersant compounds

selected from the group consisting of:

(a) oil soluble salts, amides, imides, oxazolines, esters, and

mixtures thereof, of long chain hydrocarbon substituted mono-

and discarboxylic acids or their anhydrides;

(b) long chain aliphatic hydrocarbons having a polyamine

attached directly thereto; and

a molar proportion of long chain hydrocarbon substituted phenol

with from about 1 to 2.5 moles of formaldehyde and from about

0.5 to 2 moles of polyalkylene polyamine; wherein said long

chain hydrocarbon group is a polymer of a C, to C, monoolefin,

said polymer having a molecular weight of from about 700 to

about 5000;

(2) nitrogen or ester containing polymeric viscosity index improver

dispersants which are selected from the group consisting of:

(a) polymers comprised of C, to C,, unsaturated esters of vinyl

alcohol or of C, to C,) unsaturated mono- or dicarboxylic acid

with unsaturated nitrogen containing monomers having 4 to 20

carbons.

(b) copolymers of C, to Cx olefin with C, to C,, mono- or

dicarboxylic acid neutralized with amine, hydroxy amine or

alcohols, and

73a

of the ingredients of the composition, all of which are known

lubricating oil additives except the copper component, which

is listed at "D" in the claim.

Most or all chemicals interact to some extent in solution,

wherein ions and molecules rearrange based on forces of

various kinds. Under the court’s new law, table salt dissolved

in water will not be an adequate description of the

composition for infringement purposes, since the sodium

chloride molecule no longer "exists": in dissolution the sodium

and chloride ions will have broken their bonds to each other,

in interaction with molecules of water. For the Exxon

lubricant composition the interactions in the pot were

exceedingly complex. However, like salt in water, there is no

uncertainty as to what was made and what was infringed.

When the invention is adequately described and claimed by

either by grafting C, to C,, unsaturated nitrogen containing

monomers thereon or by grafting an unsaturated acid onto the

polymer backbone and then reacting said carboxylic acid groups

with amine, hydroxy amine or alcohol; and

(3) mixtures of (1) and (2); wherein when said lubricating oil

dispersant (1) is present, then said dispersing amount of (1) is about

1 to 10 wt. %, and when said lubricating oil dispersant (2) is present,

then said dispersing amount of (2) is from about 0.3 to 10 wt. %;

C. from about 0.01 to 5.0 parts by weight of oil soluble zinc

dihydrocarbyl dithiophosphate wherein the hydrocarbyl groups contain

from 1 to 18 carbon atoms;

D. an antioxidant effective amount, within the range of from about 5 to

about 500 parts per million by weight, of added copper in the form of an

oil soluble copper compound; and

E. a lubricating oil detergent additive which comprises at least ‘one

magnesium or calcium salt of a material selected from the group consisting

of sulfonic acids, alkyl phenols, sulfurized alkyl phenols, alkyl salicylates

and naphthenates, wherein said parts by weight are based upon 100 parts

by weight of said lubricating composition and said weight % is based on

the weight of said lubricating composition.

74a

listing the ingredients of the composition, and is understood

by persons of skill in the field of the invention, the law

demands no more. To require inventors to identify and

include in their claims the chemical interaction products

formed in such a complex mixture is not necessary in order

distinctly to state what the inventor regards as his invention.

35 U.S.C. § 112, 42:

The specification shall conclude with one or more claims

particularly pointing out and distinctly claiming the

subject matter which the applicant regards as his

invention.

The court’s holding that a chemical composition claim that is

written by listing the ingredients can not be enforced against

the identical composition made by combining the identical

ingredients in the identical ratio, unless none of the ingredients

interact when they are placed together, is simply bad law. It

is without precedent, and it is contrary to the way that

chemical formulation composition claims are understood

within the chemical and the legal communities. This sua

sponte transformation of the patent law does not bode well for

this court’s implementation of its Markman role as de novo

construer of patent claims.

Despite the serious disruption of chemical patent-

dependent activity flowing from this decision and the massive

taint upon existing property rights, the court has declined en

banc review. Thus I write to explain why I believe that the

panel majority has made an error of major consequence, an

error that transcends the interests of these parties and this

patent.

Chemical Formulation Compositions Are Correctly Claimed by

Their Ingredients

The standard way of claiming chemical compositions is by

their ingredients. Naming the chemicals and their amounts is

75a

the clearest, most accurate, and most comprehensive way of

describing such inventions. Often there is no other way of

describing chemical compositions. In Robert C. Faber,

Landis on Mechanics of Patent Claim Drafting (3d ed. 1990)

the author explains the pervasiveness of this type of claim in

chemical inventions:

As in the other classes, most composition claims are

combination claims except where a new compound or

molecule per se is claimed.

Composition of matter claims list the chemical ingredients

(compounds, elements, or radicals) making up the

composition or compound. The ingredients or elements

may be claimed narrowly (specific named components),

with intermediate scope (a group of similar elements

functionally equivalent), or broadly as to function

performed, where the prior art permits. Where necessary

to novelty, etc., the proportions or other conditions or

parameters of the compound are stated, usually in ranges

of concentration of ingredients.

Id. at 145, 148 (emphasis added). Chemical compositions that

are mixtures of ingredients are routinely claimed by listing the

ingredients. Such a composition is easy to describe with

precision, easy to search and to examine for patentability, easy

to understand, and unambiguous in content and scope.

Whether there is interaction among the ingredients after they

are placed in the container does not affect the specificity of

the description of what has been invented. It is not necessary

to know what physical or chemical interactions occur in the

container in order to describe this invention, which resides in

the combination of listed ingredients.

The law requires that the claims "reasonably apprise those

skilled in the art both of the utilization and scope of the

invention,” and that "the language is as precise as the subject

76a

matter permits." Shatterproof Glass Corp. v. Libbey-Owens

Ford Co. , 758 F.2d 613, 624, 225 USPQ 634, 641 (Fed. Cir.

1985). That requirement was plainly met by the claims in

suit, for they were written as lubricant formulators would

write them and understand them, by listing the ingredients of

the composition. Whatever the scientific nature of the

chemical interactions inside the container, the established and

probably only way of describing such formulations is by their

ingredients. The court creates a scientific burden that is

totally unnecessary and perhaps impossible? to meet. There

was extensive evidence at trial, presented by witnesses on

behalf of both Exxon and Lubrizol, concerning what happens

when these ingredients are put in the same container. Noted

scientists debated the issue. The trial judge recognized that it

was not possible to know what was happening inside the pot.

The court’s holding that such claims are not infringed if

changes occur within the composition after the ingredients are

combined, simply means that such compositions can no longer

be patented in this way. The court’s requirement that the

patentee must state in the claim the products of chemical

interaction that occur in the mixing pot, simply means that

failure to do so leaves a useless patent that can not be

enforced against the identical composition made from the

identical ingredients in the identical ratios.

2 Exxon’s expert witness, Dr. Ingold, testified as to the scientific

possibility of proving what the panel requires:

Q. Do you know of any other technique which would allow a

chemist to determine precisely what is going on with respect to

these hand-holding type interactions [the witness’ description of

the loose bonds the parties referred to as complexing] in a

modern motor oil package?

A. Dr. Barrett, there is no such technique available today, nor

is there any combination of techniques available today that

would let one say what was present after you have mixed all

four of those components.

77a

The court’s ruling will impose disorder and uncertainty

upon many fields of applied chemistry, for this claim form is

the standard way of claiming new formulation inventions.

The treatises teach the routine nature of such claims,

recognizing that the components of a chemical composition are

not a "mere aggregation," but cooperate in "joint action":

A composition or product is patentable when it involves

(1) a new and useful result and this result is a product of

the combination and not the mere aggregation of several

results; (2) a different result in the combined forces or

processes from that given by their separate parts and a

new result is produced by their union; (3) a result which

is not the mere aggregate of separate contributions but is

due to the joint and cooperating action of all the

elements; and (4) several elements which produce by their

Joint action a new and useful result.

3 Anthony W. Deller, Patent Claims (2d ed. 1971) § 456, at

48 (citing Colgate-Palmolive Co. v. Carter Products, Inc. , 230

F.2d 855 (4th Cir. 1956)) (emphasis added). Deller’s and

other treatises provide many examples of such compositions,

all claimed by listing their ingredients.

I conducted a rough survey in the Official Gazette of the

Patent and Trademark Office for December 26, 1995, which

announced the issuance during the preceding week of 608

patents classified as "chemical." About a hundred of these

patents were for chemical compositions that were claimed by

listing their ingredients. For example, there were patents on

a pollution control composition, a dye transfer inhibiting

composition, a shampoo composition, a paint stripper

composition, a polyol composition for polyurethane foams, a

cold water detergent compositicn, a granular detergent

composition, a wood preservative, an adhesive composition,

photosensitive and radiation-sensitive resin compositions, an

x-ray film developer composition, a radiation-absorbing glass

78a

composition, and many more. All were claimed by listing the

ingredients.

The invention of all such compositions is well described

by the ingredients that are combined. Whatever interactions

occur within the container holding the composition is

irrelevant to the specificity and clarity of the claim and its

understanding by persons in the field of the invention. The

patent statute requires that the subject matter be described so

that persons in the field know what has been invented. 35

U.S.C. § 182, Ti:

The specification shall contain a written description of the

invention and of the manner and process of making and

using it, in such full, clear, concise, and exact terms as

to enable any person skilled in the art to which it

pertains, or with which it is most nearly connected, to

make and use the same, and shall set forth the best mode

contemplated by the inventor of carrying out his

invention.

It is basic chemistry that most organic and inorganic

molecules when placed in solution interact in various ways.

Such interactions may produce improved properties, thus

providing the commercial value that inventors seek to secure

through the patent system. Indeed, as stated by Deller in

Patent Claims, supra, the patent office will not grant a patent

on compositions where the properties are simply an

aggregation of the known properties of the separate

ingredients.

It was interesting to learn that the distinguished chemists

who testified for both sides did not know with scientific

certainty the interactions occurring in this complex lubricant

formulation. The following exchange occurred during

argument to the trial judge concerning "claim construction":

79a

Exxon Counsel: . . . We have Dr. Ingold’s testimony about

them [the chemical ingredients] coming

together and breaking apart. We have Dr.

Schroeck admitting that was true. But under

cross, he admitted yes, they break apart.

These phantom compounds that nobody can

find.

ok Ok

LeSuer, although Mr. Adelman didn’t

remember it, says I don’t know exactly what

this is but it is definitely a stable linkage....

That is totally different from Dr. Schroeck

saying that they are breaking apart all the

time and Dr. Cotton saying these

compounds are going back and forth, they

are complexing and uncomplexing.

ok OK ek

District Court: ...I1 wanted to know if there is any way to

find out what is in that composition, and

you can’t. Only a fool would try.

A lubricant composition described and claimed by listing

the ingredients is appropriate to an invention that is indeed a

combination of ingredients. A patent attorney testified that he

has seen "literally thousands of lubricant patents" described

and claimed, as in the Exxon patent in suit, by listing the

ingredients. The panel majority’s new requirement is contrary

to chemical and practical reality, as is its speculation that

Exxon could not prove infringement even under the court’s

new theory: the reason given for denying Exxon the chance to

do so. Chemists know that all chemical reactions have a

reaction time and a reaction threshold. Chemists understand

the concepts of chemical reactivity and measurement of

activity coefficients. Studies of chemical equilibria and

thermodynamic principles as applied to chemical reactions, the

basics of ionic forces in solution, and principles such as the

80a

Law of Mass Action (relating chemical equilibrium and

concentration), are elementary tools of classical chemistry.

Chemists know that when chemicals are placed in solution or

dispersion they interact with the solvent or dispersant; they

may form new bonds, or respond to attractive or repulsive

forces, or form loose or tight complexes, or be subject to a

variety of other interactions, often a combination of

interactions in dynamic equilibrium, in a constantly

fluctuating swirl of chemical complexity. Dr. Ingold

explained these interactions at the trial:

And the thing to try and remember about this is these

weak [interactions] can break apart quite easily. So that

this association between the dispersants and some

molecule X can simply come apart and give you the

detergent again plus the molecule X in free solution. And

X can, of course, recombine. And this can happen

thousands of millions of times. You don’t in any way

destroy the molecule in the dispersant nor do you affect

He further explained these interactions as they occur among

the constituents of the additive packages:

Q Dr. Ingold, do all of these components interact in the

same associated way that we have discussed for the

ZDDP and the ashless dispersant? Do they all interact

that way?

A Yes, Dr. Barrett, they interact with one another.

They also interact with themselves. Everything is

interacting with everything else. It is associating. They

are associating and breaking up. It is a grand mixture as

the molecules come together and associate and then fall

apart again and — or take a new partner and reassociate.

Dr. Cotton, Lubrizol’s chemistry expert, analogized these

kinds of bonds to a square dance, where molecules release one

8la

partner and reattach to another and continue releasing and

reattaching in a condition of equilibrium.

When the invention is the combination of ingredients, the

occurrence of interactions in the pot does not defeat the

adequacy of the description of the invention to persons in the

art. The patenting of formulation compositions by identifying

the components of the composition is legally sound, simple,

and serviceable, and permits infringement or noninfringement

to be readily determined, for it is necessary only to ascertain

whether the listed ingredients are combined in the listed ratios.

The Patent Grant Encompasses Making, Using, or Selling the

Patented Invention

The patent act states that "whoever without authority

makes, uses, Offers to sell or sells any patented invention," 35

U.S.C. §271(a), infringes the patent. That statutory

requirement is satisfied when the "recipe" of the claims is

followed. Thus the panel majority has erred in applying the

law, for the patented composition is made when the

ingredients are combined.

The Exxon specification states that "modern lubricants are

complex mixtures of various additives each serving a

particular purpose." Col. 1 line 67 to col. 2 line 5. The

specification describes the purpose of the various additives that

are listed in the claim. It was testified at trial that the concern

of lubricant formulators is "what goes into the pot," in the

words at trial of Lubrizol’s formulation chemist Dr. Salomon.

An inventor need not understand the scientific mechanism in

order to place an invention into the patent system. See

Newman v. Quigg, 877 F.2d 1575, 1581, 11 USPQ2d 1340,

1345 (Fed. Cir. 1989) (observing that "it is not a requirement

of patentability that an inventor correctly set forth, or even

know, how or why the invention works"); Fromson v.

Advance Offset Plate, Inc., 720 F.2d 1565, 1570, 219 USPQ

1137, 1140 (Fed. Cir. 1983) ("[I]t is axiomatic that an

82a

inventor need not comprehend the scientific principles on

which the practical effectiveness of his invention rests."). The

suggestion by the panel majority that Exxon’s patent attorney

did not know how to write claims is misdirected. These

claims are written in the clearest, simplest, and most accurate

way in which a formulation can be described: by listing the

ingredients. I can discern no justification for the court’s

departure from this long-standing and reasonable claim

practice.’

Indeed, the panel majority’s concurring opinion suggests

that if Exxon’s ingredients remain sufficiently uncomplexed or

unreacted for a period of time after mixing (an hour? a

minute? a nanosecond?) the claim would be infringed even on

the majority’s interpretation. However, the majority denied

Exxon the opportunity to prove such fact.

Justice Requires Remand When this Court Creates a New Law

of Claim Construction

Having adopted a ciaim construction that neither party

proposed and that is without legal precedent, the panel

majority nonetheless declined the patentee’s request for

remand so that the patentee could present factual evidence or

argument relevant to this new "law" as applied to this case.

* The panel majority recognized that compliance with its new “law"

of claim construction may not be scientifically feasible, and suggested that

claim-writing gimmickry should have been invoked. Thus the panel

majority proposes that a patentee might overcome the court’s newly created

obstacles with a "product-by-process" claim — although this invention is

neither a process nor a product, but a mixture of ingredients to form a

composition. I will not speculate on whether the court’s ruling can be

made less pernicious by creative claim-writing, or how the patent

examining process will implement this new law governing composition

claims.

FT re

83a

Fair procedure has been compromised by the court’s

refusal to remand to the trial court for the presentation of

evidence or argument on the new factual issues raised by this

court’s new law of claim construction. See Weade v.

Dichmann Wright & Pugh Inc., 337 U.S. 801, 808-09 (1949)

(remand required to consider alternative theory of liability).

It is inappropriate for the appellate court to make its own

scientific finding that such proof is not possible on the court’s

new criterion. Although the district court stated during

discussion of the jury charge that what is in the composition

can not be determined, see supra, apparently there was no

discussion concerning whether there was a transient existence

in the mixture of the uncombined ingredients, for that was not

an issue. The district court did not discuss whether the

"complexing and uncomplexing" described by Dr. Cotton, and

the other interactions postulated by other witnesses, might

permit the patentee to prove that the ingredients have at least

a transient existence in the ratios stated in the claim. The rate

of association or complexing is not discussed in the portion of

the record provided us, and does not appear to have been at

issue.

As a matter of procedural justice, a litigant is entitled to

present its case when the court changes the law. See Neely v.

Martin K. Eby Constr. Co., 386 U.S. 317, 325 (1968)

(appellate court "may not order judgment where ... the record

reveals a new trial issue which has not been resolved");

Brinley v. Commissioner of Internal Revenue, 782 F.2d 1326,

1336 (Sth Cir. 1986) (justice requires the opportunity to

present evidence in light of new legal rule established on

appeal). Although the appellate court need not remand for a

futile trial, Boyle v. United Technologies Corp., 487 U.S.

500, 513-514 (1988), it is apparent from the record that such

a condition does not here exist. Thus, on the claim

84a

construction of the panel majority,* the patentee is entitled to

develop the facts for application of our new law. Even as this

court declined to correct en banc the panel’s claim construc-

tion, the case should have been remanded for application of

this new rule of law to the evidence. Thus, respectfully, I

dissent from the court’s denial of rehearing en banc.

* I can not reconcile the Response’s suggestion of today that the

theory it adopted was presented at the trial, with the statement in the

majority opinion "that Exxon’s preferred claim interpretation is incorrect,

and that Lubrizol’s is only partly correct." 64 F.3d at 1555, 35 USPQ2d

at 1802.

85a

5,478,385

SEALING COMPOSITIONS

James Washbourne, Long Handborough, England,

assignor to Oxford Brookes University,

Oxford, England Filed Jan. 18, 1994, Ser. No. 183,409

Claims priority, application United Kingdom,

Jan. 15, 1993, 9300753

Int-Cl.° CO9K 3/10; CO9D 191/06; 191/08

U.S. Cl. 106--33 19 Claims

1. A sealing composition, comprising:

10-55% by weight of: a petroleum based wax; or

hydrogenated vegetable oil; hydrogenated anima! or

fish oil, fat, or grease; or polyisobutane; or

combinations thereof;

0.5-15% by weight of a lipophilic emulsifier;

an emulsion stabilizer or thickener;

a water gellant/viscosifier;

a void-blocking additive;

a corrosion inhibitor in an amount sufficient to minimize

the possibility of corrosion of ferrous metallic

compounds with which the sealing composition makes

contact; and

at least 20% by weight water, in an amount sufficient to

inhibit combustion of the sealing composition.

Reproduced from: 1181 Off. Gaz. Pat. Office 2472 (1995).

86a

5,478,389

POLLUTION REMEDIAL COMPOSITION AND ITS

PREPARATION

Richard E. Loomis, Texarkana, Ark., assignor to Loomis

Family Trust, Texarkana, Ark.

Continuation of Ser. No. 766,424, Sept. 25, 1991,

abandoned.

This application Apr. 28, 1994, Ser. No. 234,273

Int. Cl.° CO9K 3/32; BO1J 13/00; C04B 18/04; C11D 3/36

U.S. Cl. 106--630 27 Claims

1. A pollution remedial composition comprising:

from about 40 to about 75 volume % of a soluble silicate;

from about 0.25 to about 5 volume % of a surfactant;

from about 1 to about 5 volume % of a polyol; and

the remainder water.

26. A pollution remedial composition comprising:

about 57.5 volume % of sodium silicate;

about 0.5 volume % of an ester of organo-phosphoric

acid; about 1.5 volume % of ethylene glycol;

about 0.25 weight % of sodium chloride;

about 0.25 weight % of citric acid; and

the remainder water.

Reproduced from: 1181 Off. Gaz. Pat. Office 2473 (1995).

87a

5,478,489

DYE TRANSFER INHIBITING COMPOSITIONS

COMPRISING BLEACHING AGENTS AND A

POLYAMINE N-OXIDE POLYMER

Abdennaceur Fredj, Brussels, Belgium; James P. Johnston,

Overijse, United Kingdom, and Christiaan A. J. Thoen,

Haasdonk, Belgium, assignors to The Procter & Gamble

Company, Cincinnati, Ohio

Filed Jan. 17, 1995, Ser. No. 373,197

Claims priority, application European Pat. Off., Jul. 15,

1992, 92202168; Nov. 6, 1992, 92870181; May 26, 1993,

93201198; Jun. 9, 1993, 93870195

The Portion of the term of this patent subsequent

to Oct. 17, 2012, has been disclaimed.

Int. Cl.° C11D 3/37, 3/39; 3/395; DO6L 3/02

U.S. Cl. 252--99 15 Cie

1. A dye transfer inhibiting composition for use in

aqueous wash solutions comprising

(a) a dye transfer inhibiting amount of poly(4-

vinylpyridine-N-oxide) having ratio of amine to

amine N-oxide of from about 2:3 to about

1:1,000,000; and

(b) a cleaning effective amount of a bleaching agent

selected from percarboxylic acids, halogen bleaching

agents, perborates, persulfates, percarbonates,

peroxydisulfates, perphosphates, peroxyhydrates,

bleach activators, hydrogen peroxide-generating

enzymes, enzymes, mnon-oxygen-type bleaching

agents, or mixtures thereof.

8. A detergent composition which comprises a dye

transfer inhibiting composition according to claim 1 further

comprising one or more of the following ingredients:

surfactants, builders, chelants, suds suppressor, soil release

agents, antiredeposition agents, optical brighteners, abrasives,

88a

bactericides, tarnish inhibitors, coloring agents, perfumes, or

mixtures thereof.

Reproduced from: 1181 Off. Gaz. Pat. Office 2504 (1995)

89a

5,478,494

POLYOL COMPOSITION HAVING GOOD FLOW

AND FORMIC ACID BLOWN RIGID

POLYURETHANE FOAMS MADE THEREBY

HAVING GOOD

DIMENSIONAL STABILITY

Thomas B. Lee, Southgate; Thomas L. Fishback,

Gibraltar;

Curtis J. Reichel, Southgate, and Donald L. Christman,

Grosse Ile, all of Mich., assignors to BASF Corporation,

Mt. Olive, N.J.

Filed: Sep. 22, 1993, Ser. No. 125,464

Int. Cl.° CO8J 9/08; CO8G 18/18; 18/20; 18/48

U.S. Cl. 252--182.25 45 Claims

1. A polyol composition comprising a polyol component,

said polyol component comprising:

a) a polyoxyalkylene polyether polyol having an

equivalent weight of 130 or less, and an average

functionality of 3.1 or greater;

b) a polyoxyalkylene polyether polyol having an average

functionality of 1.8 to less than 3.1, a viscosity of

800 cP or less at 25°C., and an equivalent weight

within the range of from greater than 130 to 1500;

c) a polyoxyalkylene polyether polyol having an average

functionality of greater than 3.1 and an equivalent

weight of greater than 130.

Reproduced from: 1181 Off. Gaz. Pat. Office 2505 (1995).

90a

5,478,552

LIQUID COSMETIC COMPOSITION

Tomoko Hasegawa, Maebashi, Japan, assignor to

Mitsubishi

Pencil Kabushiki Kaisha, Tokyo, Japan

Filed: Jul. 7, 1994, Ser. No. 271,857

Claims priority, application Japan, Jul. 16, 1993, 5-177031

Int. Cl.° A61K 7/021;7/025;47/00

U.S. Cl. 424--63 9 Claims

1. A liquid cosmetic composition comprising from 0.2 to

50 parts, by weight, of trimethylsiloxysilicic acid, from 5 to

80 parts, by weight, of a volatile silicone, from 1 to 20 parts,

by weight, of a sucrose fatty acid ester selected from the

group consisting of monoesters, diesters, triesters, tetraesters,

pentaesters, hexaesters, heptaesters, octaesters, and mixtures

thereof the fatty acids in said esters being selected from

saturated and unsaturated fatty acids having from 1 to 28

carbon atoms; and a member selected from the group

consisting of silicic anhydride having hydrophobic-treated

surface, a clay mineral having organic-treated surface and

mixtures thereof, the liquid cosmetic composition having a

viscosity of 100,000 cp or less.

Reproduced from: 1181 Off. Gaz. Pat. Office 2523 (1995).

9la

5,478,556

VACCINATION OF CANCER PATIENTS USING

TUMOR-ASSOCIATED ANTIGENS MIXED WITH

INTERLEUKIN-2 AND

GRANULOCYTE-MACROPHAGE

COLONY STIMULATING FACTOR

Robert L. Elliott, 17310 Masters Pointe Ct., Baton Rouge,

La.

70810 and Jonathan F. Head, 6144 Hagerstown Dr.,

Baton Rouge, La. 70817

Filed: Feb. 28, 1994, Ser. No. 202,516

Int. Cl.° A61K 45/05;39/00; COTK 14/535; 14/55

U.S. Cl. 424--852 3 Claims

2. A breast tumor vaccine comprising:

a suspension of a tumor associated antigen from 2 human

breast tumor;

one million colony forming units of granulocyte-

macrophage colony stimulating factor; and

ten thousand international units of interleukin 2.

Reproduced from: 1181 Off. Gaz. Pat. Office 2524 (1995).

92a

5,478,565

TREATMENT OF SINUS HEADACHE

Navin M. Geria, Warren, N.J., assignor to Warner-

Lambert Company, Morris Plains, N.J.

Filed: Mar. 27, 1990, Ser. No. 500,610

Int. Cl.° A61K 9/12

U.S. Cl. 424--434 13 Claims

1. A topically applicable nasal composition capable of

relieving mammalian sinus headache which comprises (i) an

anaesthetically effective amount of an acid addition salt of

dyclonine or pramoxine and (ii) an adrenergically effective

amount of an acid addition salt of a sympathomimetic amine

decongestant selected from the group consisting of an

arylalkylamine, imidazoline and a _ cycloalkylamine

incorporated in a pharmaceutically acceptable carrier.

Reproduced from: 1181 Off. Gaz. Pat. Office 2525 (1995).

93a

5,478,587

DESSERT COMPOSITION

Armand Mingione, Escondido, Calif., assignor to Henry G.

Kohimann

Filed: Aug. 20, 1993, Ser. No. 109,707

Int. Cl.° A23G 9/02

U.S. Cl. 426--565 34 Claims

1. A non-dairy composition useful in the preparation of a

frozen dessert containing a non-dairy creamer comprising:

(a) from about 14.00% to 78.26% by dry weight of a

non-dairy creamer,

(b) from about 3.48% to 52.17% by weight of a sweetener,

(d) from about 0.14% to 6.96% by weight of a stabilizer,

and

(e) from about 0.01% to 0.29% by weight of a smoother.

Reproduced from: 1181 Off. Gaz. Pat. Office 2531 (1995).

94a

5,478,706

ALKALINE BLACK-AND-WHITE DEVELOPER FOR

SILVER HALIDE PHOTOGRAPHIC MATERIAL

Carlo Marchesano; Filippo Faranda, both of Savona, and

Franco Buriano, Carcare, all of Italy, assignors to

Minnesota Mining And Manufacturing Company,

St. Paul, Minn.

Contination of Ser. No. 858,313, Mar. 25, 1992,

abandoned.

This application Mar. 3, 1994, Ser. No. 206,196

Claims priority, application Italy, Apr. 3, 1991 MI91A0925

Int. Cl.° GO3C 5/46

U.S. Cl. 430--486 21 Claims

1. An alkaline black-and white x-ray film photographic

developer composition having a pH of greater than 10

comprising:

(1)

(2)

(3)

(4)

(5)

(6)

(7)

(8)

2 to 100 grams per liter of at least one

black-and-white developing agent,

0.1 to 20 grams per liter of at least one

black-and-white auxiliary developing agent,

0.61 to 5 grams per liter of at least one antifoggant,

1 to 60 grams per liter of at least one sequestering

agent,

a sulfite antioxidant capable of generating 0.1 to 1.25

moles per liter of sulfite ions,

at least one buffering agent in a molar ratio of

greater than 0.5:1 with respect to said sulfite

antioxidant,

a tone agent,

a tone promoting agent, wherein said tone agent is 1

x 10° to 2 moles per liter of a primary organic amine

compound and said tone promoting agent is 0.01 to

50 mMoles per liter of a silver halide solvent.

Reproduced from: 1181 Off. Gaz. Pat. Office 2560 (1995).

95a

RULE 29.6 LISTING

Exxon Corporation is the parent of Exxon Chemical

Patents, Inc. and Exxon Research and Engineering Co.

Exxon Chemical Patents, Inc. and Exxon Research and

Engineering Co. have no subsidiaries other than wholly-owned

subsidiaries. Exxon Corporation’s subsidiaries, other than

wholly-owned subsidiaries, are:

165550 Canada Limited

172965 Canada Limited

2849518 Canada Limited

AFSC Management Limited

AFSC Operations Limited

AGA Progas a.s.

AGES Arbeitsgemeinschaft Gebuehrenerhebungssystem GbR,

Dusse

ASHCO Ltd.

Abu Dhabi Petroleum Company Limited

Ace Polymer Co., Ltd.

Acquifund Resources Limited

Aditivos Orinoco, C. A.

Adria-Wien Pipeline Gesellschaft mit beschraenkter Haftung

Advanced Elastomer Systems Do Brasil Ltda.

Advanced Elastomer Systems Japan Limited

Advanced Elastomer Systems Limited

Advanced Elastomer Systems Marketing Pte. Ltd.

Advanced Elastomer Systems NV/SA

Advanced Elastomer Systems Singapore Pte. Lid.

Advanced Elastomer Systems, Canada, Inc.

Advanced Elastomer Systems, Inc.

Advanced Elastomer Systems, L.P.

Air Tankdienst Koeln GbR

Aircraft Fuel Supply B. V.

Al-Jubail Petrochemical Company

Alberta Products Pipe Line Lid.

Alyeska Pipeline Service Company

AquaAir, Inc.

Aramco Services Company

Asakawa Sekiyu K.K.

Awaji Gas Nenryo Kabushiki Kaisha

Azuma Sekiyu K.K.

BEB Erdgas und Erdoel GmbH, Hannover

BFS Berlin Fuelling Services GbR

BRIGITTA Erdgas und Erdoel GmbH, Hannover

Bangkok Aviation Fuel Services Limited

Banshu Ekika Gas K.K.

Bayerische Erdoelleitung G.m.b.H.

Brickwood Holdings Pty. Ltd.

Canada Imperial Oil Limited

Canadian Reserve Oil & Gas Lid.

Castle Peak Power Company Limited

CeraMem Separations, Inc.

Cerafilter Systems, Inc.

Cerafilter Systems, L.P.

Changi Airport Fuel Hydrant Installation Pte. Ltd.

Changi Into-Plane Services (Pte) Lid.

Chuo Sekiyu Hanbai K.K.

Compagnie Industrielle des Polyethylenes de Normandie, GIE

Compania Minera Disputada de Las Condes S.A.

Comptoir Auxiliaire du Petrole

Comptoir Oyonnaxien des Combustibles (C.O.C.)

Computer Centrum Groningen B.V.

Cynthia Gas Gathering Company Limited

DFTG Deutsche Fluessigerdgas Terminal GmbH

Daihatsu Sekiyu K.K.

Daito Gas K.K.

Depot Petrolier du Gresivaudan

Depots Petroliers de la Corse

Depots de Petrole Cotiers

Deudan-Holding GmbH

Deutsche Advanced Elastomer Systems GmbH

Deutsche Erdgas Transport G.m.b.H.

97a

Deutsche Transalpine Oelleitung G.m.b.H.

Devon Estates Limited

Disma S.r.1.

Dixie Pipeline Company

E S F Limited

EPDMCO, L.P.

ETD Tankdienst Gesellschaft Duesseldorf GbR

Eagle Kenso K.K.

Eagle Reinsurance Co. Ltd.

East Asia Response Private Limited

East Texas Salt Water Disposal Company

Eastern Canada Response Corporation Ltd.

Eco Lubrifiants

Eiko Sekiyu K.K.

Elwerath Erdgas und Erdoel GmbH, Hannover

Elwerath Erdoel und Erdgas AG

Emirates National Chemicals Company Ltd.

Emori Sekiyu K.K.

Emsland-Erdoelleitung G.m.b.H.

Energie Marketing Services GmbH

Enterprise Housing Partners 1992 Limited Partnership

Entrepot Petrolier de Mulhouse (E.P.M.)

Erdgas-Verkaufs-Gesellschaft m.b.H.

Erdoel-Raffinerie Deurag-Nerag GmbH

Esso (Overseas) Pension Trust Limited

Esso Antilles-Guyane, S. A.

Esso Energie G.1.E.

Esso Exploration and Production Angola Inc.

Esso Exploration and Production Ireland Limited

Esso France S.A.

Esso Lub’Services

Esso Malaysia Berhad

Esso Raffinage S.A.F.

Esso Societe Anonyme Francaise

Esso Standard Thailand Lid.

Esso Standard Tunisie S. A.

98a

Esso Technologies et Services (E.T.S.)

Etablissements Cloarec

Exxon Asset Funding Company

Exxon Asset Management Company

Exxon Chemical Asset Management Partnership

Exxon Chemical France

Exxon Chemical Middle East Holdings Inc.

Exxon Chemical Paraffins Limited

Exxon Chemical Polymeres SNC

Exxon Chemical S.A.

Exxon Mobile Bay Limited Partnership

Exxon de Colombia S.A.

F.T. Giken Kabushiki Kaisha

Federated Pipe Lines (Western) Ltd.

Federated Pipe Lines Ltd.

Ferngas Nordbayern G.m.b.H.

Ferngas Salzgitter GmbH

Fernkaelte Geschaeftsstadt Nord G.b.R.

Flughafen Schwechat Hydranten-Gesellschaft

Fuji Kogyo K.K.

Full Cycle Plastics Pty. Ltd.

Gl6a (Groep) B.V.

GVOE Gebinde-Verwertungesellschaft der

Mineraloelwirtschaft

Gas Direct Limited

Gasunie Engineering B.V.

Gasunie Warmte/Kracht Emmen B.V.

General Bussan K.K.

General Highway K.K.

General Petrochemical Industries Limited

General Sekiyu K.K.

General Sekiyu Okinawa Hanbai K.K.

General Sekiyu Overseas, Ltd.

General Shipping Co. Ltd.

General Unyu Kabushiki Kaisha

George Lavera

99a

Ges. fur Mineraloelveredlung und Distribution Rhaesa mbH

Gewerkschaft Brassert Erdoel und Erdgas GmbH

Gewerkschaft Gute Hoffnung Erdgas und Erdoel GmbH

Gewerkschaft Kuechenberg Erdgas und Erdoel GmbH

Glen Park Gas Pipe Line Company Limited

Grande Ecaille Land Company, Inc.

Great Lakes Response Corporation of Canada

Groupement Immobilier Petrolier

Groupement Petrolier Aviation

Groupement Petrolier de Nantes (G.P.N.)

Groupement Petrolier de Saint-Pierre des Corps (G.P.S.P.C.)

Groupement Petrolier de la Cote D’ Azur

Groupement Petrolier du Finistere G.1.E.

Groupement Petrolier du Val-de-Marne (G.P.V.M.)

Groupement d’Exploitation du Depot de Reception de

Chennevie

Guam Response Services Ltd.

Hambrecht & Quist Environmental Technology

Hamburger Gaswerke GmbH

Hannoversche Erdoelleitungs-G.m.b.H.

Hanshin Kyowa Sekiyu K.K.

Heinrich Schneider Spedition GmbH

Hiroshima General Gas Juten Kabushiki Kaisha

Hoei Sekiyu K.K.

Hokkai Sanshi Co., Ltd. (Chemical)

Hokuyu Sekiyu K. K.

Hong Kong Pumped Storage Development Company, Limited

Hong Kong Response Limited

Houston Regional Monitoring Corporation

Hydrant Refuelling System, S.A.

Hydranten-Betriebs-Gesellschaft, G.b.R.

Hydrierwerke Poelitz Aktiengesellschaft

Imperial Oil (an Ontario General Partnership)

Imperial Oil Limited

Imperial Oil Resources N.W.T. Limited

Imperial Oil Resources Ventures Limited

100a

Imperial Oil Resources an Alberta limited partnership

Industria Acqua Siracusana S.p.A.

Industry Promotion Enterprises Limited

Iraq Petroleum Company. Limited

Japan Butyl Company Limited

Jersey Nuclear-Avco Isotopes, Inc.

K. K. Momose Shiojiri Stand

K. K. Toresen

K.K. Aizu General

K.K. Auto

K.K. Daimaru

K.K. Eastern Gas Terminal

K.K. General Gas Butsuryu Kansai

K.K. General Gas Butsuryu Kanto

K.K. General Sekiyu Hanbaisho

K.K. Genet

K.K. Genetech

K.K. Genex

K.K. Heian Sekiyu

K.K. Kyoei Shosha

K.K. Marugo Izumasa Shoten

K.K. Marutaka Sekiyu

K.K. Momose Sekiyu

K.K. Standard Sekiyu Osaka Hatsubaisho

K.K. Tama General

K.K. Toko

K.K. Uwano Sekiyu Shokai

K/S Statfjord Transport A/S & Co.

KX Industries, L.P.

Kabushiki Kaisha Sankyo Plastics

Kabushiki Kaisha Serubisu

Kai Tak Refuellers Company Limited

Kansai Chuo Sekiyu K.K.

Kanto Kygnus K.K.

Karlsruhe-Stuttgart Rohrleitung Gesellschaft mbH

Kawasaki Kygnus Sekiyu Hambai Kabushiki Kaisha

10la

Keiyo Sekiyu Hanbai K.K.

Kemcor Australia Pty. Lid.

Kemcor Elastomers Lid.

Kemcor Olefins Ltd.

Kemcor Plastics Pty. Ltd.

Kent Gas Company Limited, The

Kenya Petroleum Refineries Limited

Kibo Sekiyu Hanbai K.K.

Kimura Sekiyu Kabushiki Kaisha

Kinwa Sekiyu K.K.

Kobe Standard Sekiyu K. K.

Korea Perchem Company Limited

Kosxon Chemical Company Limited

Kowa Sekiyu K.K.

Kumho E.P. Rubber Co., Ltd.

Kygnus Ekika Gas Kabushiki Kaisha

Kygnus Kosan Kabushiki Kaisha

Kygnus Sekiyu K. K.

Kygnus Sekiyu Seisei Kabushiki Kaisha

Kygnus Trading Kabushiki Kaisha

Kyushu Eagle K.K.

L-Net East K.K.

L-Net West K.K.

L12A (Groep) B.V.

L12B/L15B (Groep) B.V.

L14 (Groep) B.V.

L15A (Groep) B.V.

L2 (Groep) B.V.

L5a (Groep) B.V.

LEAG Aktiengesellschaft fuer luzernisches Erdoel

Les Docks des Petroles d’ Ambes

Les Emulsions de Feyzin et du Dauphine

Liants Routiers de la Vallee de la Loire (LRVL)

Liants Routiers de la Vallee du Rhin (L R.V.R.)

Liants Routiers du Gard (L.R.G.)

Lilac Sekiyu Kabushiki Kaisha

1024

Lily Sekiyu K.K.

Lithcon Petroleum International (Bahamas) Inc.

Lithcon Petroleum Taiwan Inc.

MEGAL FINCO

MEGAL GmbH

Maasvlakte Olie Terminal C.V.

Maasvlakte Olie Terminal N.V.

Magota Sekiyu K.K.

Mainline Pipelines Limited

Malaysian Energy Chemical & Services Sdn Bhd

Manchester Airport Storage and Hydrant Company Limited

Marugo Gas K.K.

McCann Plastics Inc. (Chemical)

McColl-Frontenac Inc.

McColl-Frontenac Petroleum Inc./Petroliere McColl-Frontenac

Meiji Sekiyu K.K.

Mikawa Bussan K.K.

Mitake Unso K.K.

Mittelrheinische Erdgas Transport Gesellschaft mit beschrank

Mode Wheel Property Limited

Montreal Pipe Line Limited/Les Pipe-Lines Montreal Limitee

Mount Thorley Coal Loading Limited

Multi Tank Card B.V.

Mytex Polymers (General Partnership)

N. V. Nederlandse Gasunie

NAM - K 14 B.V.

NAM - K 15 B.Y.

NAM -K7B.V.

NAM Pipeline B.V.

NAM-K17 B.V.

NAM/CLOMS - K 8/K 11 B.V.

NAM/CLOMS - L 13 B.V.

NAM/Mobil M9a B.V.

NPC Services, Inc.

Nakabayashi Sekiyu K.K.

Nalco/Exxon Energy Chemicals Argentina S.A.

103a

Nalco/Exxon Energy Chemicals Brasil LTDA.

Nalco/Exxon Energy Chemicals Colombia S.A.

Nalco/Exxon Energy Chemicals Limited

Nalco/Exxon Energy Chemicals, Inc.

Nalco/Exxon Energy Chemicals, L.P.

Name: EDE

Name: IORL

Nansei Oil Terminal K.K.

Nansei Sekiyu Kabushiki Kaisha

Nanseki Kaihatsu K.K.

Near East Development Corporation

Nederlandse Aardolie Maatschappij B. V.

Netra AG

Netra GmbH

New Cure, Inc.

Newcastle Coal Shippers Pty. Limited

Nichiei Kogyo Kabushiki Kaisha

Nichimo Oil (Bermuda) Co., Lid.

Niedersaechsische Energie Agentur GmbH

Nikko Sangyo K.K.

Nippon Unicar K.K.

Nissei Sekiyu Kabushiki Kaisha

Nogat B.V.

Norddeutsche Erdgas-Aufbereitungs G.m.b.H.

Norddeutsche Mineraloelwerke Stettin G.m.b.H.

Nordrheinische Erdgas Transport Gesellschaft mit

beschrankte

Noroxo

Northward Developments Ltd.

OSLO Alberta Limited

Office Prive d’ Assurances et de Courtages

Oil Field Chemicals Company (Saudi Arabia) Ltd.

Oil Spill Holdings Private Limited

Oil Spill Response Limited

Oldenburgische Erdoel Gesellschaft m.b.H.

Osaka General Gas K.K.

104a

Osaka Kygnus K.K.

P.A.C. $.A.R.L. (Pinson-Allegret-Causse)

Pacesetter Enterprises Limited

Pars Investment Corporation

Petrosvibri S.A.

Plantation Pipe Line Company

Port-Jerome Gaz (P.J. Gaz)

Portland Pipe Line Corporation

Primaeroel GmbH

Prince William Sound Oil Spill Response Corporation

Progas Limited

Projectbureau W/K B.V.

Q16a (Groep) B.V.

Quadrant Gas Limited

Raffinerie du Midi S.A.R.L.

Rainbow Pipe Line Company, Ltd.

Redwater Water Disposal Company Limited

Refineria Petrolera Acajutla, S.A.

Regulus Holding (Singapore) Pte. Ltd.

Rexplas Sdn Bhd

Rheingas Erdgasleitungs-Gesellschaft m.b.H.

Rotterdam Antwerpen Pijpleiding (Belgie) N.V.

Rotterdam Antwerpen Pijpleiding C.V.

Rotterdam-Antwerpen Pijpleiding (Nederland) N. V.

Rubiatec Sendirian Berhad

Ruhrgas Aktiengesellschaft

S.A. du Pipeline a Produits Petroliers sur Territoire Geneve

SEAG Aktiengesellschaft fuer schweizerisches Erdoel

SERAM S.p.A.

SOVEXOIL Oil Field

Saitama Sekiyu Hanbai K.K.

Sanyo Sekiyu K.K.

Saraco S. A.

Saudi Arabian Lube Additives Company Limited

Schubert K.G.

Senboku Oil Kikoh K.K.

105a

Service Aviation Paris (S.A.P.)

Shehtah Drilling Limited

Shimizu LNG K. K.

Shimoyama Sekiyu K.K.

Shin-Nihon Yukagaku Kogyo K. K.

Shinohara Oil K.K.

Singapore Aromatics Company Private

Smiley Gas Conservation Limited

Sociedad Nacional de Oleoductos Ltda.

Sociedad de Inversiones de Aviacion Limitada

Societa Italiana per |’Oleodotto Transalpino S.p.A.

Societa per Azioni Raffineria Padana Olii Minerali-SARPOM

Societe "Geomines-Caen"

Societe Anonyme "Produits Lubrifiants de Madagascar" —

PROLU

Societe Anonyme de Gestion de Stocks de Securite (SAGESS)

Societe Anonyme de la Raffinerie des Antilles

Societe Anonyme des Hydrocarbures

Societe Civile de Mustapha Algerie

Societe Civile de Participation pour la Destruc

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