Petition for Writ of Certiorari — Micron Separations, Inc. v. Pall Corp.
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IN THE
SUPREME COURT OF THE UNITED STATES 3
OCTOBER TERM, 1995 ss
MICRON SEPARATIONS, INC.,
Petitioner,
Vv.
PALL CORPORATION,
Respondent.
On Petition for a Writ of Certiorari
to the United States Court of Appeals
for the Federal Circuit
PETITION FOR A WRIT OF CERTIORARI
STEVEN M. BAUER
Counsel of Record
JOHN J. COTTER
TESTA, HURWITZ
& THIBEAULT
125 High Street
Boston, MA 02110
(617) 248-7000
Attorneys for Petitioner,
Micron Separations, Inc.
i
QUESTIONS PRESENTED
1. Ina patent infringement action in which the accused
product is clearly outside the literal scope of the patent
claim (i.e. where the patent claim requires a nylon resin to
have a ratio in the range of “about 5:1 to about 7:1,” and
the accused product has a ratio of 4:1), whether the court
can ignore the express limitations of the claim to conclude
that the product infringes under the “doctrine of
equivalents.”
2. On an appeal from an action to recover patent
infringement damages, whether an appellate court can issue
an order vastly increasing the damages award based solely
on evidence that the trial court excluded and that the
defendant never had an opportunity to rebut.
li
LIST OF PARTIES TO THE PROCEEDING
PURSUANT TO RULES 14(1)(b) and 29.1
The names of all parties in the court whose judgment is
sought to be reviewed appear in the caption of this Petition
for Writ of Certiorari.
LIST OF PARTIES PURSUANT TO RULE 29.1
Petitioner Micron Separations, Inc. does not have any
parent companies or subsidiaries.
PR ne ie 2
iil
TABLE OF CONTENTS
Page
QUESTION PRESENTED.............-.. NE Se i
LIST OF PARTIES TO THE PROCEEDING
PURSUANT TO RULES 14(1)(b) AND 29.1 ........02cce020+: il
LIST OF PARTIES PURSUANT TO RULE 29.1..........-. ii
TABLE OF CONTENTS. ........::ccccceeeseesseneeenensseenenenennenens iil
TABLE OF AUTHORITIES ...........-::ccscsseeceeerserreeeenennennes vi
OPINIONS BELOW............:ccccccsecsscesseeeessneeneesserssenneneneenns 3
JURISDICTION ............cccccssccsssscsssseercenrcsnscssccssnsssnrssenneenes 3
STATUTORY PROVISIONS INVOLVED...........---0-:20+0: 4
STATEMENT OF THE CASE.\.........-:ccssssseesserssesennsenennnens 7
1. Procedural History.............-:-sssssssseeseeseeenees 7
A. The Court Agreed MSI's Product
Does Not Fall Within The Literal
Claim Scope .............ceccsrssrssrcssesseees 8
B. The Damages Award .............::s+++++ 9
4 Similarities Between This Case
And Hilton Davis ...........:csscsessseesseseeseeees 10
iV
REASONS FOR GRANTING THE WRIT..................... 15
I. THE DOCTRINE OF EQUIVALENTS ISSUE
PRESENTS A FUNDAMENTAL QUESTION
OF PATENT LAW THAT REQUIRES
SUPREME COURT RESOLUTION ............ 16
I]. IN INCREASING DAMAGES, THE
FEDERAL CIRCUIT IGNORED THIS
COURT’S PROHIBITION AGAINST
RULING ON EVIDENCE NOT
INTRODUCED AT TRIAL .....0.........:ceeceeeees 21
CL A AFI cnccnsecnienscnatvcsnsitiblipdiisibadiaiiehatiideissbiopedibuiniaida 23
APPENDIX
A. Opinions of United States Court of Appeals for
the Federal Circuit (September 26, 1995)...... la
B. Memorandum and Orders of United
States District Court for the District of
Massachusetts in Favor of Plaintiff and
Against Defendant (May and June, 1991) ... 30a
C. Order of United States Court of Appeals
for the Federal Circuit denying Petition
for Rehearing (October 24, 1995).......... ... 112a
D. Judgment, United States Court of
Appeals for the Federal Circuit
to , __. | Renna eee On 113a
v
E. Excerpts from United States Patent and
Trademark Office file history for
United States Patent No. 4,340,479 ........... 114a
vi
TABLE OF AUTHORITIES
Cases Page
Ballard Medical Products v. Wright, 821 F.2d 642
CPOE. Cir. IGG7). sccsccsccssnssuciccniteesesinnensnieaiiemiieieatasten aa
Graver Tank & Mfg. Co. v. Linde Air Products Co..,
339 UB. GBS (0GGOD sccniscistiicssdiitapimmaaiiliaii 11,20
Hilton Davis Chem. Co. v. Warner-Jenkinson Co..,
62 F.3d 1512 (Fed. Cir. 1995) (en banc) (petition for
cert. pending, Warner Jenkinson Co. v. Hilton Davis
Chem. Co., No. 95-728, filed Nov. 6, 1995)............. passim
Markman v. Westview Instr., Inc., 52 F.3d 967
(Fed. Cir.) (en banc), cert. granted, 64 U.S.L.W.
3238 (No. 95-26, granted Sept. 27, 1995) .........cccseseeeeee 18
Quantum Corp. v. Rodime, PLC, 65 F.3d 1577
(Fed. Cat, 1996) .casscsscisinnicsticsecatisiiimenaniatiiiteiannts 15, 18
Singleton v. Wulff, 428 U.S. 106 (1976) . .....c.cccccceeseeeeeee 22
Statutes
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3S USC. § B11 .ccccccsscsicsinvcsssscesttietinenssaiicbenssdssininainaaeain -
35 U.S.C. 8 12%..<cccccsccsnceee 4,15, 17
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IN THE
SUPREME COURT OF THE UNITED STATES
OCTOBER TERM, 1995
MICRON SEPARATIONS, INC.,
Petitioner,
v.
PALL CORPORATION,
Respondent.
PETITION FOR WRIT OF CERTIORARI
Micron Separations, Inc. (“MSI”) respectfully petitions
for a writ of certiorari to review the judgment of the United
States Court of Appeals for the Federal Circuit, which
judgment relies on the Federal Circuit’s recent decision in
Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d
1512 (Fed. Cir. 1995) (en banc) (petition for cert. pending,
Warner Jenkinson Co. v. Hilton Davis Chem. Co., No. 95-
728, filed Nov. 6, 1995). The present case, like the Hilton
Davis case for which a petition for certiorari is now
pending, involves a question of fundamental importance to
patent law -- how far may infringement under the doctrine
of equivalents go when the accused device clearly does not
fall within the literal meaning of the patent claim at issue?
The petition for a writ of certiorari now pending before
this Court from the Hilton Davis case raises and fully
identifies many of the same doctrine of equivalents issues
2
that apply in this case. This case, and Hilton Davis, each
involve (i) membrane technology, (ii) a chemical patent
claim limitation specifying a range of values which was
narrowed during the patent application process, and (iii) an
accused product or process well outside the claimed range.
In view of the similar facts and identical legal issues in the
two cases, if this Court grants certiorari in the Hilton Davis
case, it should also grant certiorari in the present case. If
certiorari is granted in Hilton Davis, but not in this case, a
multimillion dollar judgment against Petitioner MSI
threatens its existence, and a subsequent reversal of Hilton
Davis would come too late to save it.
In addition, this case involves an important question of
the scope of an appellate court’s power to make findings
based on a one-sided testimonial record, without the benefit
of either trial court findings or rebuttal evidence on the
issue. The appellate court here, based on evidence that the
trial court excluded, ordered that damages for lost profits be
recalculated upward. This result is unfair because the
defendant will now be required to pay substantial additional
_ damages based solely on evidence it never had the chance
to rebut. Once again, the Federal Circuit has confused its
role regarding facts and law. This Court should grant
certiorari to review the proper role of the appellate court
regarding “facts” that have not been proven below.
OPINIONS BELOW
The Court of Appeals opinions are reported at 66 F.3d
1211 (Fed. Cir. 1995), and are reproduced beginning at
Appendix page la. The district court opinion reviewed by
the Court of Appeals is not reported, and is reproduced
beginning at Appendix page 30a. The district court issued
a subsequent written opinion after the appeal was filed and
briefed, reported at 792 F. Supp. 1298 (D. Mass. 1992).
JURISDICTION
The Court of Appeals judgment was entered on
September 26, 1995. A petition for rehearing was denied
on October 24, 1995. The jurisdiction of this Court is
invoked under 28 U.S.C. § 1254(1).
STATUTORY PROVISIONS INVOLVED
35 U.S.C. § 111(a) provides in pertinent part:
(1) Written application. -- An application for patent
shall be made, or authorized to be made, by the
inventor, except as otherwise provided in this title,
in writing to the Commissioner.
(2) Contents. -- Such application shall include --
(A) a specification as prescribed by section 112 of
this title...
35 U.S.C. § 112 provides in pertinent 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, and shall set
forth the best mode contemplated by the inventor of
carrying out his inverition.
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.
*e ee EE *
An element in a claim for a combination may be
expressed as a means or step for performing a
specified function without the recital of structure,
5
material, or acts in support thereof, and such claim
shall be construed to cover the corresponding
structure, material, or acts described in the
specification and equivalents thereof.
Ka DR oR UAE RR gah PR OD
35 U.S.C. § 251 provides in pertinent part:
Whenever any patent is, through error without any
deceptive intention, deemed wholly or partly
inoperative or invalid, by reason of a defective
specification or drawing, or by reason of the
: patentee claiming more or less than he had a right to
claim in the patent, the Commissioner shall, on the
surrender of such patent and the payment of the fee
required by law, reissue the patent for the invention
disclosed in the original patent, and in accordance
with a new and amended application, for the
unexpired part of the term of the original patent. No
new matter shall be introduced into the application
for reissue.
*e+*#** * *
No reissued patent shall be granted enlarging the
scope of the claims of the original patent unless
applied for within two years from the grant of the
original patent.
35 U.S.C. § 271 provides in pertinent part:
(a) Except as otherwise provided in this title,
whoever without authority makes, uses or sells any
patented invention, within the United States during
the term of the patent therefor, infringes the patent.
35 U.S.C. § 305 provides in pertinent part:
In any reexamination proceeding under this chapter,
the patent owner will be permitted to propose any
amendment to his patent and a new claim or claims ©
thereto.... No proposed amended or new claim
enlarging the scope of a claim of the patent will be
permitted in a reexamination proceeding under this
chapter...
Ayn OIE
4
é
STATEMENT OF THE CASE
This case presents two important questions. First,
whether an accused product can be deemed an infringement
of a patent when the accused product is clearly not within
the literal scope of any patent claim. In this case, the patent
claims in issue require a nylon resin to have a ratio of two
chemical units of between about 5:1 and 7:1, but the
accused product has a ratio of only 4:1. Although the trial
court explicitly held 4:1 was not “about 5:1,” a panel of the
United States Court of Appeals for the Federal Circuit,
relying upon its sharply divided en banc decision in Hilton
Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512
(Fed. Cir. 1995) (for which a petition for certiorari is now
pending), held that a product with a 4:1 ratio is
“equivalent” to one with an about 5:1 ratio and thus
infringes regardless of the claim limitations.
Second, this case presents the question of whether the
appellate court, based on evidence that had been excluded
at trial and that the accused infringer had no opportunity to
rebut, can make findings and order that damages be
recalculated upward. Based on such excluded evidence, the
Federal Circuit ordered recalculation to increase the
multimillion dollar damages award against a defendant who
never had an opportunity to offer any evidence on the key
damages issue. ee
1. Procedural History: Respondent Pall Corporation
(“Pall”) brought this lawsuit under 35 U.S.C. § 281 against
Petitioner MSI, charging that MSI’s nylon microfiltration
membranes and method for making them infringed the
8
product and process claims of Pall’s U. S. Patent
No. 4,340,479 (the “Pall Patent’). Pet. App. 2a.’
A. The Court Agreed MSI's Product Does Not Fall
Within The Literal Claim Scope. When the suit was filed,
MSI’s accused membranes were made with a material
known as Nylon-66, which has a ratio of certain chemical
units of 5:1. After the lawsuit began, MSI converted most
of its accused product line to a chemically distinct nylon,
Nylon-46, which has a ratio of 4:1, and which is not
literally covered by the claims. Pet. App. 8a, lla. During
the liability trial, MSI contended that its Nylon-46 products
did not infringe Pall's patent because they were made from
Nylon-46, a material which not only was not literally
covered by the claims, but also which MSI contended Pall
had disclaimed during the prosecution of the application
which resulted in issuance of the Pall patent. Pet. App. | la,
12a.
Nylon “membranes” are thin sheet-like objects with very small
“pores” which allow fluid to pass through the membrane, while
retaining bacteria and other materials that are larger than the pores.
Pet. App. 2a. One set of Pall's patent claims refers to a membrane
made from any of three specific nylon polymers, the commercial
names of which are Nylon-66, Nylon-610, and Nylon-6. Pet. App. 3a,
5a-6a. Another set of claims refers to nylons having a ratio of certain
chemicals of 5:1 to 7:1. Pet. App. 8a.
> The district court found that because of the chemical differences
between the claimed nylons and Nylon-46, Nylon-46 is not the type of
nylon required by the invention of the patent-in-suit, because it is not
one of the three named nylons and its 4:1 ratio falls outside the claimed
range in the ratio claims. Pet. App. 8a, lla. The ratio claims require
“a ratio CH;:NHCO of methylene CH, to amide NHCO groups within
the range of about 5:] to about 7:1. . .”, and the district court found
that the 4:1 ratio of Nylon-46 is not “about 5:1.” Pet. App. 8a, 1 la.
-
During prosecution of its patent application, Pall had
narrowed its claims from covering all nylons (with no ratio
range) to covering only those within a narrow range of
chemical ratios. Pet. App. 12a? At trial, although the
district court agreed with MSI that none of the patent
claims literally covered Nylon-46 products, it still found
that MSI’s products infringed the ratio claims under the
doctrine of equivalents. Pet. App. 16a.
B. The Damages Award. The district court
awarded Pall over $4 million in damages, including lost
profits. See Pet. App. 110a. In deciding the amount of lost
profits, a key issue before the district court was whether a
third party's product that Pall had licensed in settlement
also infringed the Pall patent. Pet. App. 20a-21a. The
district court excluded all of Pall's evidence offered to
prove infringement, and without making any findings on
was licensed. Pet. App. 21a, 100a. MSI then had no reason
or opportunity to rebut the excluded evidence of
infringement. Based on the license alone, the district court
basis for a narrow subclass of polyamide resins disclosed...”
phasis added). Pet. App. 54a, 1 15a. Pall also argued that “([t}he
range of CH;:NHCO ratios within the range from about 5:1 to about
7:1 is actually rather narrow. . - These limits constrain a rather
narrow range of CH,:NHCO ratios, and clearly exclude the vast
majority of polyamide resins. . ” (Emphasis added). Pet. App. 156a,
see 12a-13a. In response to these arguments, the Patent Office allowed
the narrowed ratio claims. Pet. App. 55a.
10
then denied Pall lost profits damages for the entire period
during which the third party’s product was offered. See
Pet. App. 21a.
After the district court stayed the injunction against
MSI's Nylon-46 products pending appeal, MSI appealed the
finding that its Nylon-46 product infringed, and both
parties appealed the damages award. Pet. App. 2a, 24a.
The Federal Circuit affirmed the liability decision, and
reversed and remanded on damages. Pet. App. 16a, 22a.
The court’s remand ordered recalculation of damages,
based purely on the assumption that the third party’s
product infringed, without having any evidence of record
from MSI on the infringement issue. See Pet. App. 21a-
22a. The Federal Circuit then denied MSI’s petition for
rehearing. Pet. App. 112a.
2. Similarities B This C and Hilton Davis.
There are remarkable similarities between the facts of this
case relating to the doctrine of equivalents and those of the
Hilton Davis case, for which a petition for certiorari is now
pending, Warner Jenkinson Co. v. Hilton Davis Chem. Co.,
‘No. 95-728. Those similarities provide sufficient grounds
to grant certiorari in this case and remand it to the Federal
Circuit, should the Court’ decide to review the same
important doctrine of equivalents issues raised in Hilton
Davis.
Most importantly, this case, like Hilton Davis, involves
the fundamental question of the scope of the doctrine of
equivalents. Pet. App. 11a; Hilton Davis, 62 F.3d at 1516.
This case and Hilton Davis also involve strikingly similar
facts. Each involves a patent on membrane technology,
with claims directed to certain narrow ranges of properties.
In Hilton Davis, the patentee narrowed its claims during the
11
patent application process to require the use of a pH range
of "from approximately 6.0 to 9.0." 62 F.3d at 1515-16.
Similarly, in this case Pall narrowed its claims to require
use of a nylon having a specific chemical ratio within a
range of "about 5:1 to about 7:1." Pet. App. 12a-13a. In
Hilton Davis, the court held that a process with a PH of 5.0
infringed even though the lower limit of the claim was
“approximately 6.0,” while the court in this case held that a
ratio of 4:1 infringed even though the lower limit of the
claim was “about 5:1.” See Hilton Davis, 62 F.3d at 1524:
Pet. App. 16a. In both Hilton Davis and this case, the court
found infringement even though the accused processes and
products were well below the claimed lower limit of the
ranges of the respective patents.
In ruling against Petitioner MS] in this case, the Federal
Circuit relied on Hilton Davis, which was a Closely divided
decision heard en banc in order “to consider the important
issues raised concerning the doctrine of equivalents.”
Hilton Davis, 62 F.3d at 1516.4 The court’s struggle to
resolve those issues in Hilton Davis produced wide
disagreement in five separate opinions.° Recognizing the
* The court of appeals in Hilton Davis sought briefing on two key
questions: “Does a finding of infringement under the doctrine of
equivalents require anything in addition to proof of the facts that there
are the same or substantially the same (a) function, (b) way, (c) result,
the so-called triple identity test of Graver Tank [& Manufacturing Co. ]
v. Linde Air Products Co., 339 U.S. 605 (1950), and cases relied on
therein?... Is application of the doctrine of equivalents by the trial
court to find infringement of the patentee's right to exclude, when there
is no literal infringement of the claim, discretionary in accordance with
the circumstances of the case?” 62 F.3d at 1516.
* Observing that this Court had “mapped the modern contours of the
doctrine of equivalents in its landmark Graver Tank decision”, Hilton
Davis, 62 F.3d at 1517, the court concluded that the doctrine gave a
iis i
12
fundamental nature of the issues, Judge Newman's
concurring opinion and several dissents suggested that it
would be appropriate for the Supreme Court to review the
doctrine of equivalents through that case. Hilton Davis, 62
F.3d at 1529 (Newman, J., concurring), 1545 (Plager, J.,
dissenting), and 1549 n.3 (Lourie, J., dissenting). Because
these issues are recurring, and indeed because the same
wrong committed in Hilton Davis is committed here, the
circuit judges’ suggestion for Supreme Court review is
particularly ripe.
Judge Plager’s dissent noted that the doctrine of
equivalents “is regularly used by patentees to seek greater
coverage for their patents than the patent statute grants,”
and argued that the doctrine “is a virtually uncontrolled and
unreviewable license to juries to find infringement if they
so choose.” Hilton Davis, 62 F.3d at 1537, 1538 (Plager,
J., dissenting). Judge Plager objected that the expansion of
the patent “is done largely without regard to and
independent of the express limitations of the patent claims
which may have brought about their allowance by the
[Patent Office] in the first place,” Hilton Davis, 62 F.3d at
1538 (Plager, J., dissenting), and he found no basis for a
doctrine broad enough to rescue patent holders from their
own failure to claim all that they lawfully might have
patent holder the right to establish infringement whenever a fact finder
determined that the differences between an accused product and the
product claimed in the patent were “insubstantial.” See Hilton Davis,
62 F.3d at 1521-22. As a result, “those who make only insubstantial
changes to a patented product or process are liable for infringement,
regardless of their awareness of the patent and its disclosure.” Hilton
Davis, 62 F.3d at 1520. The Hilton Davis court also held that although
the patent applicant had narrowed its patent claims in order to win
Patent Office approval, the doctrine of equivalents still would reach
into the surrendered area. See Hilton Davis, 62 F.3d at 1525.
ee _
13
claimed -- “[tJhe solution to the problem of inadequate or
incomplete claim drafting is not arbitrary after-the-fact
‘interpretation’ under the guise of ‘equivalents,’ whether by
judge or jury, that goes beyond anything in the claims
themselves.” Hilton Davis, 62 F.3d at 1541-42 (Plager, J.,
dissenting).
Judge Lourie’s dissent challenged the majority's
disregard of claim limitations, stating that “the
substantiality of the differences [between the patented and
accused processes] is still only one of the factors according
to Graver, arguably the most important factor, which a
court should consider in deciding whether to apply the
[doctrine of equivalents.” Hilton Davis, 62 F.3d at 1547
(Lourie, J., dissenting). Noting that “[t]he whole purpose
of the doctrine [of equivalents] is to defeat piracy and to do
justice to a patentee,” Judge Lourie said that “[i)ntent to
misappropriate someone-else’s invention is the hallmark of
a pirate, and intent must therefore not be excluded if a
suitable judgment is to be made concerning the
applicability of the [doctrine of equivalents].” Hilton
Davis, 62 F.3d at 1548 (Lourie, J., dissenting). The
majority, however, dismissed this theory, concluding that
“[iJnfringement is, and should remain, a strict liability
offense.” Hilton Davis, 62 F.3d at 1527.
Finally, Judge Nies’s dissent challenged the Hilton
Davis majority’s view that the patentee could reclaim under
the doctrine of equivalents what it had surrendered before
the Patent Office. Judge Nies pointed out that, “[iJn view
of the liberality in current claiming practice, the need for
the doctrine of equivalents because of difficulties in
drafting claims to cover an invention in all possible forms
is a rare case.” Hilton Davis, 62 F.3d at 1560 (Nies, J.,
dissenting). Judge Nies reasoned that “(hjaving narrowed
14
the claim’s range of pH to secure the Examiner’s
withdrawal of his prior rejection, [the patentee] may not
now resort to the doctrine to cover equivalents thereof.”
Hilton Davis, 62 F.3d at 1582 (Nies, J., dissenting). Judge
Nies also pointed out that a patentee could resort to the
statutory reissue procedure of 35 U.S.C. §§ 251, 252 to
seek protection beyond the patentee’s own agreed to claim
language in the original patent. Because the reissue statute
allows competitors to invoke “intervening rights,” however,
Judge Nies noted that “[t]he patentee is much better off
evading the reissue procedure which Congress had
provided, and resorting to its counterpart, the doctrine of
equivalents, created out of the judiciary's sense of
‘fairness."” Hilton Davis, 62 F.3d at 1560 (Nies, J.,
dissenting).
As in Hilton Davis, in the present case Pail narrowed its
claims before the Patent Office to cover only a membrane
prepared from a nylon resin having a chemical ratio “of
about 5:1 to about 7:1.” The Patent Act does not allow it to
now stretch its claims to cover a membrane prepared from a
resin having a 4:1 ratio.
a a
15
REASONS FOR GRANTING THE WRIT
This Court should grant certiorari to decide a
fundamental question of patent law in this case -- the scope
of protection against patent infringement. See 35 U.S.C. §
271(a). Although the appeals court here relied on the
recent Hilton Davis decision to conclude that MSI’s
product infringes, although it falls outside the terms of the
plaintiff's patent claim, the court has violated the Clearly
expressed statutory policy of the Patent Act (i) requiring
precise claiming to put the world on notice of the scope of
protection (35 U.S.C. § 112); (ii) specifying “equivalents”
protection only for a particular class of patents (35 U.S.C. §
112); (iii) requiring that reissue applications to broaden
claims can only be filed within two years of patent grant
(35 U.S.C. § 251); and (iv) requiring that claims broadened
in reexamination be held invalid (see 35 U.S.C. § 305).
The Hilton Davis petition for certiorari establishes
many sound reasons for Supreme Court review. Petitioner
MSI here also raises additional arguments, namely that the
Federal Circuit’s ruling in this case warrants review
because that ruling legitimizes after-the-fact enlargement of
the scope of a patent claim, in direct contradiction to the
Patent Act’s Statutory policy against enlarging claims in a
patent reexamination. See Quantum Corp. y. Rodime, PLC.
65 F.3d 1577, 1584 (Fed. Cir. 1995) (claims enlarged
during reexamination are invalid). Under the guise of the
doctrine of equivalents, the circuit court now allows
enlargement of a claim wel] beyond its literal terms,
without invalidating the enlarged claim. Failing to grant
certiorari in this case along with Hilton Davis allows the
multimillion dollar judgment against MSI to threaten its
existence, and Subsequent review and reversal of Hilton
Davis alone potentially would come too late to save it.
16
In addition, the Federal Circuit improperly resolved the
damages issue on appeal despite the absence of necessary
record evidence, exercising its power without consideration
of its proper role in the judicial process. At the damages
trial, Pall sought to prove it was entitled to lost profits
damages, and attempted to introduce evidence relating to a
third party product’s infringement in order to demonstrate
the absence of a non-infringing substitute. See Pet. App.
100a. The district court excluded that evidence and MSI
therefore never had a reason or an opportunity to introduce
rebuttal evidence. On appeal, the Federal Circuit reversed
and remanded, ordering recalculation of damages based
upon an assumed absence of non-infringing substitutes --
without any evidence that the third party’s product
infringed the patent and without allowing MSI an
opportunity to introduce rebuttal evidence that the third
party product did not infringe. In short, what the Federal
Circuit did was rule based on what the plaintiff hoped its
evidence might prove to the trial court, rather than based on
what the evidence actually was. This case needs review to
correct this improper exercise of judicial power, and
remand to require district court inquiry into whether the
third party products actually infringed, before damages can
be substantially increased based on an assumption that
remains unproven.
I. THE DOCTRINE OF EQUIVALENTS ISSUE
PRESENTS A FUNDAMENTAL QUESTION
OF PATENT LAW THAT REQUIRES
SUPREME COURT RESOLUTION
The decision in this case is of extraordinary, widespread
importance in the field of patent law. The recently filed
17
petition for certiorari in Warner-Jenkinson Co. v. Hilton
Davis Chem. Co., No. 95-728 (Nov. 6, 1995), fully
addresses most of the reasons that support granting
certiorari in this case also, and those reasons are not
repeated in detail here. Briefly, the Federal Circuit itself
has recognized the significance of the issues presented,
having ordered an en banc hearing in order “to consider the
important issues raised concerning the doctrine of
equivalents.” Hilton Davis, 62 F.3d at 1516. In addition,
one concurring opinion and two dissents in Hilton Davis
recognized that the doctrine of equivalents is appropriate
for this Court’s review. Hilton Davis, 62 F.3d at 1529
(Newman, J., concurring), 1545 (Plager, J., dissenting), and
1549 n.3 (Lourie, J., dissenting).
The Federal Circuit’s recent decisions in this case and
Hilton Davis give broad protection against “substantial”
“equivalents”, and are inconsistent with the Patent Act. In
addition to the reasons persuasively articulated in the
Hilton Davis petition, the decisions violate the statutory
policy embodied in the Patent Act. First, 35 U.S.C. § 112
requires that a patentee precisely draft its patent claims to
put the world on notice of the scope of protection. Using
the doctrine of equivalents to effectively expand claims
beyond their written scope frustrates that statutory
provision and defeats the purpose of the patent application
process, which allows a patent applicant ample
opportunities to obtain claims which adequately cover what
the applicant believes to be the invention. Second, 35
U.S.C. § 112 also specifies that only one particular class of
patents is to receive protection from “equivalents.” Third,
35 U.S.C. § 251, on patent reissue proceedings, provides
only a limited two year period in which to apply for claims
broader than those in the original patent. Allowing
18
subsequent broadening through the doctrine of equivalents
neutralizes that provision.
The absurdity of the Federal Circuit’s expansive
doctrine of equivalents is further shown by contrasting that
court’s recent treatment of a patent claim from a patent
reexamination proceeding with the enlarged patent claim at
issue here.° In Quantum Corp. v. Rodime, PLC, 65 F.3d
1577 (Fed. Cir. 1995), the patentee during reexamination
added the word “approximately” to the phrase “at least
600” tracks per inch, to make the patent claim read "at least
approximately 600” tracks per inch. Quantum, 65 F.3d at
1579. The Federal Circuit reviewed the reexamined claim |
against the language of section 305 and its policy, and held
that adding the word “approximately” impermissibly |
broadened the claim, making it invalid and unenforceable. |
Quantum, 65 F.3d at 1582, 1584. In contrast, the Federal |
Circuit here followed an entirely different policy, and
allowed the lower court to read “about 5:1” to mean “4:].”
Such a reading clearly broadens Pall's claim and permits
enforcement of what in a reissue proceeding doubtless
would be an invalid claim.
In addition, the decision here is at odds with another
recent en banc Federal Circuit decision for which this Court
has granted certiorari. In Markman v. Westview Instr., Inc.,
52 F.3d 967, 979 (Fed. Cir.) (en banc), cert. granted, 64
° In a reexamination proceeding, the Patent Office considers whether a
prior art patent or printed publication has any bearing on the
patentability of a claim or claims in an issued patent. 35 U.S.C. §§
304-305. The Patent Act permits the patent owner in a reexamination |
to amend its claims to avoid the prior art, but in doing so the patent |
owner may not "enlarg[e] the scope of a claim..." 35 U.S.C. § 305. |
That policy against enlargement of claims is frustrated by the Federal
Circuit’s broad doctrine of equivalents.
19
U.S.L.W. 3238 (No. 95-26, granted Sept. 27, 1995), the
Federal Circuit decided that interpreting claims to
determine whether they are infringed is a question of law
for the court. In contrast, in this case under the doctrine of
equivalents, the Federal Circuit ruled that determining
infringement is a question of fact. Pet. App. lla; see
Hilton Davis, 62 F. 3d at 1523. This inconsistent treatment
of infringement provides no logical guidance for businesses
legitimately seeking to market products free from claims of
patent infringement.
Because the doctrine of equivalents is now being
interpreted to permit patent holders te claim protections far
beyond the terms of the patent itself, its definition will
impact most if not all patent infringement lawsuits. The
Federal Circuit’s definition will promote great uncertainty
about the scope of patent protection, which can be expected
to spur additional patent litigation as patentees decide to
pursue suits against defendants who have not literally
infringed their patents, and will require the parties and
courts to undertake extensive inquiry into whether
“substantial differences” exist between the accused and
patented products or processes. That definition also may
adversely affect the ability of competitors to “design
around” a claimed invention, which is “one of the
important public benefits that justify awarding the patent
owner exclusive rights to his invention.” Hilton Davis, 62
F.3d at 1520. The uncertainty about the precise scope of
the protected invention to be “designed around” created by
a broad doctrine of equivalents inhibits a new inventor’s
ability and willingness to try to invent in the area of the
patent.
As pointed out in the petition in Hilton Davis, it is not
appropriate to leave the Federal Circuit to its own devices
20
in settling such an important question of patent law. The
Federal Circuit itself plainly acknowledged that it did not
feel empowered to solve the problems presented by the
doctrine of equivalents -- instead, in this case and in Hilton
Davis it invoked what it regarded as binding Supreme
Court precedent, thus conceding that it was constrained to
reach its interpretation of the doctrine of equivalents by this
Court’s Graver Tank decision and predecessor decisions.
See Pet. App. lla (citing Graver Tank as authority for
“substantial difference” test); Hilton Davis, 62 F.3d at
1517-20 (Graver Tank established “substantiality of the
differences” test, determined elements of “substantiality”
inquiry, and determined factual character of “equivalents”
question).
The dissents in Hilton Davis noted that authoritative
resolution of the continuing force of Graver Tank and of
the continuing role and contours of the doctrine of
equivalents must come from this Court. See Hilton Davis,
62 F.3d at 1539 (Plager, J., dissenting) (“in today’s opinion,
the majority abdicates this responsibility [to address the
problems caused by its readings of Supreme Court
decisions], leaving to the Supreme Court the obligation of
attending to the problem if it is to be attended to at all”).
Judge Lourie bluntly stated that “in light of Graver, it may
be that only the Supreme. Court, writing without the
confining strictures of Graver, can deal cleanly with this
issue.” Hilton Davis, 62 F.3d at 1549 n.3 (Lourie, J.,
dissenting).’ In fact, a member of the majority concluded
: Judge Lourie pointed to “the greater complexity of today’s patented
high technology inventions compared with those made 50 or more
years ago” as a reason for his conclusion that “Graver speaks to a time
that is long past.” Hilton Davis, 62 F.3d at 1549 n.3 (Lourie, J.,
dissenting).
21
that “any change in the legal and factual fundamentals so
explicitly laid out by the Supreme Court is beyond our
judicial authority.” Hilton Davis, 62 F.3d at 1529
(Newman, J., concurring).
Clearly, the Federal Circuit’s broad view of the doctrine
of equivalents goes far beyond what the doctrine was
intended to do, and stymies rational attempts at predicting
what infringes and what does not. Accordingly, this case
requires Supreme Court review.
II. IN INCREASING DAMAGES, THE FEDERAL
CIRCUIT IGNORED THIS COURT’S
PROHIBITION AGAINST RULING ON
EVIDENCE NOT INTRODUCED AT TRIAL
This case also involves the important question of
whether an appellate court may order that damages be
recalculated below based on a theory for which there was
no evidentiary support, because all evidence on that theory
was excluded by the trial court, and the defendant therefore
had no opportunity for rebuttal at trial. If the Federal
Circuit’s damages decision is allowed to stand, Petitioner
MSI will be required to pay millions of dollars in additional
damages when it has been denied the opportunity to offer
evidence on the key damages issue.
At trial in this case, Respondent Pall sought to prove
that it was entitled to lost profits damages, which required
proof of an absence of noninfringing substitutes. Pet App.
20a. To meet that requirement, Pall sought to introduce
evidence that a third party’s product was infringing, but the
district court excluded that evidence on the grounds that
Pall licensed the third party’s product pursuant to a
22
settlement agreement. Pet. App. 100a. Because the
evidence on infringement was excluded, MSI never had an
opportunity to introduce rebuttal evidence that the third
party’s product did not infringe. Accordingly, on appeal
the trial record was insufficient to establish whether or not
the third party’s product actually met the Pall patent claim
limitations and infringed the patent.
The Federal Circuit, however, ruled that the third
party’s product was in fact infringing, even though the trial
court never considered any evidence on that issue.
Pet. App. 21a. Clearly, the appellate court overstepped its
role, which is not to make rulings on what one party
expects or hopes the evidence will prove -- rather, the
appellate court’s role is to make rulings based on what the
evidence is.
Allowing this damages decision to stand frustrates the
requirement that appellate courts rule only on evidence
introduced into the record. This Court has held that it is
reversible error for an appeals court to rule upon evidence
never introduced into the trial record. See Singleton v.
Wulff, 428 U.S. 106, 120-21 (1976) (appellate court
improperly ruled on merits against petitioner where
petitioner had no opportunity to offer opposing evidence or
argument below); see also Ballard Medical Products v.
Wright, 821 F.2d 642, 643 (Fed. Cir. 1987) (appellate court
may consider only record as made before district court).
Because remanding for a recalculation of damages (rather
than an inquiry into the nature of the evidence) was
improper, this Court should grant certiorari on this issue
also.
23
CONCLUSION
The Petition for a Writ Certiorari should be granted.
Dated: December 21, 1995
Respectfully submitted,
STEVEN M. BAUER
Counsel of Record
JOHN J. COTTER
TESTA, HURWITZ
& THIBEAULT
125 High Street
Boston, MA 02110
(617) 248-7000
Attorneys for Petitioner,
Micron Separations, Inc.
INDEX TO APPENDIX
Opinions of United States Court of Appeals for
the Federal Circuit (September 26, 1995)...... la
Memorandum and Orders of United
States District Court for the District of
Massachusetts in Favor of Plaintiff and
Against Defendant (May and June, 1991) ... 30a
Order of United States Court of Appeals
for the Federal Circuit denying Petition
for Rehearing (October 24, 1995)......00...... 112a
Judgment, United States Court of
Appeals for the Federal Circuit
(September 26, 1995).........ccescscscoesssesseess 113a
Excerpts from United States Patent and
Trademark Office file history for
United States Patent No. 4,340,479 ........... 114a
la
United States Court of Appeals for the Federal Circuit
91-1393, -1394, -1409
PALL CORPORATION,
Plaintiff/Cross-Appellant,
V.
MICRON SEPARATIONS, INC.,
Defendant-Appelliant.
DECIDED: September 26, 1995
Before RICH, NEWMAN, and MAYER, Circuit Judges.
Opinion for the court filed by Circuit Judge NEWMAN.
Separate opinion, concurring in the judgment, filed by
Circuit Judge MAYER.
NEWMAN, Circuit Judge.
2a
Both parties appeal aspects of the judgment of the
United States District Court for the District of
Massachusetts, wherein Micron Separations, Inc. ("MSI")
was adjudged to have infringed a patent owned by Pall
Corporation ("Pall") relating to polyamide membranes that
are used in microfiltration. We affirm the judgment of
infringement, reverse as to willful infringement, modify the
damages award, and remand for recalculation of damages.
Background
Microfiltration membranes have an extremely small
pore size, and are used to remove unwanted microscopic
substances such as bacteria from fluids, or to separate and
retain desired microscopic substances such as antibodies.
Microfiltration membranes are used, for example, by
pharmaceutical companies in bacteria-free drug production,
by electronics manufacturers to purify water for chip
manufacture, by hospitals to filter contaminants from fluids
that are administered to patients, in diagnostics to detect the
presence of antibodies or antigens, and as transfer
membranes for identification of genetic characteristics. A
particularly useful pore size for microfiltration membranes
is about 0.22 micron, for this pore size yields the highest
flow rate consistent with retention of the 0.3 micron
' Pall Corp. v. Micron Separations, Inc., No. 86-1427-Y
(D. Mass. June 24, 1991). On Nov. 5, 1993 the-court decided to
hear this case en banc in order to consider the questions set forth
in the court's order of Jan 7, 1994. Having resolved those
questions in the case of Markman v. Westview Instruments, Inc.,
52 F.3d 967, 34 USPQ2d 1321 (Fed. Cir. 1995) (en banc), the
case has been returned to the panel for disposition in accordance
therewith.
3a
Pseudomonas diminutia bacteria; removal of these bacteria
is the standard criterion for sterilization by microfiltration.
Microfiltration membranes are not new, although
membranes of the prior art were generally subject to
deficiencies such as brittleness, excessive shrinkage, poor
solvent resistance, limited flow rate, excessive clogging,
and limited sterilizing ability. Microfiltration membranes
had previously been made from organic polymers, but those
membranes generally required the use of wetting agents for
filtration, for water does not flow well through microporous
membranes that are not instantly wettable. The addition of
wetting agents to facilitate flow is undesirable because it
adds impurities to the system.
In accordance with United States Patent No.
4,340,479, inventicn of Dr. David B. Pall ("the Pall
patent"), microfiltration membranes are made from organic
polymers called polyamides. The particular polyamides of
this invention are sometimes called "nylons," the generic
term for linear aliphatic polyamides. The polyamide
membranes at issue were made from the commercially
available polymers nylon 66 and nylon 46. The method of
making these membranes and the membranes themselves
are described in the Pall patent and in the district court's
opinion, and will be repeated only as necessary to explain
our decision.
2 In this common nomenclature for nylon
polyamides, integers signify the number of carbon atoms in
the monomers from which the polymer is made. For
example, in nylon 66 the first 6 represents the number of
carbon atoms derived from the diamine monomer, and the
second 6 represents the number of carbon atom in the
diacid monomer. Nylon 46 has 4 carbon atoms in the
diamine and 6 carbon atoms in the diacid.
4a
Membranes had been made of polyamides before
Dr. Pall's invention, but the prior membranes were either
soluble in alcohol or required the use of wetting agents for
efficient filtration. The membranes of the prior art also had
a surface skin of reduced porosity that retarded wettability
of the membrane material and increased the flow time. The
Pall patented membranes are naturally and instantaneously
wettable and alcohol-insoluble, with uniform pore size
throughout the membrane. They achieve efficient flow
without the use of wetting agents. The Pall membranes,
due to their improved properties and _ increased
effectiveness in microfiltration, achieved not only
commercial success but also scientific recognition. The
trial court found:
Dr. Pall and his associates were pioneers
both in the invention, development, and
commercialization of functional nylon
microfiltration membranes and in _ the
theory of microfiltration.
The Pall microfiltration membranes were made of nylon 66,
and were introduced into commerce in 1978. The Pall
patent issued in 1982. In 1983 MSI introduced a
microfiltration membrane made of nylon 66. Pall filed suit-
in 1986. In 1989 MSI converted most but not all of its
nylon 66 membrane production to nylon 46. The case came
to trial in 1991.
The district court held that the Pall patent was valid,
that MSI's nylon 66 membranes literally infringed the
patent's product claims, that MSI's nylon 46 membranes
infringed the product claims under the doctrine of
equivalents, and that MSI's process for producing the nylon
membranes infringed the patent's process claims under the
doctrine of equivalents. The court held that MSI's
Sa
infringement was willful to the limited extent of MSI's
continued manufacture of some nylon 66 membranes after
it had shifted most of its production to nylon 46. Although
MSI declared bankruptcy after the adverse district court
judgment,’ it remains operating under a stay of injunction
granted by the district court as to MSI's nylon 46
membranes."
MSI appeals the rulings of infringement and willful
infringement. Pall cross-appeals aspects of the damage
award.
INFRINGEMENT
Nylon 66 Membranes
A representative product claim of the Pall patent is:
34. A hydrophilic skinless alcohol-insoluble
polyamide resin membrane sheet of alcohol-
insoluble hydrophobic polyamide resin
selected from the group consisting of
polyhexamethylene adipamide,
polyhexamethylene sebacate, and poly-e-
caprolactam, and capable when completely
immersed in water of being wetted through
within no more than one second, and
reverting when heated to a temperature just
* In re Micron Separations, Inc., No. 91-41885-JFQ (Bankr.
D. Mass.).
* Pall Corp, v. Micron Separations, Inc., No. 86-1427-Y,
slip op. at 1.
i eT ee ee ee eee |
6a
below the softening temperature of the
membrane to a hydrophobic material which
is no longer wetted by water.
Nylon 66 is polyhexamethylene adipamide, named
in claim 34. It was not disputed that all of the limitations of
claim 34 were met by MSI's nylon 66 membranes, except
for the term "skinless," the meaning of which received
extensive attention at trial. MSI argued that the plain
meaning of "skinless" eliminated the MSI products from
infringement, because a photomicrograph showed a "skin"
on the MSI membranes. Pall’s position was that "skinless"
as used in the specification and claims should be
understood as a performance characteristic, for a skin is a
nonporous layer that impedes filtration.
Claim interpretation is a question of law Markman
v. Westview Instruments, Inc., 52 F.3d 967, 34 USPQ2d
1321 (Fed Cir. 1995) (en_banc). We review the
construction of the claims without deference to that of the
district court. Id. at 979, 34 USPQ2d at 1329 ("Because
claim construction is a matter of law, the construction given
the claims is reviewed de novo on appeal.") In construing
the claims we look to the language of the claims, the
specification, and the prosecution history. Id. Extrinsic
evidence may also be considered, if needed to assist in
determining the meaning or scope of technical terms in the
claims. Id. at 980, 34 USPQ2d at 1330.
At trial both sides presented support for their
conflicting positions concerning the term "skinless." Pall
presented data showing "bubble point," "flow time,” and
"KL curve" measurements of the membranes in suit. These
measurements were described in the Pall patent
specification as tests for determining the presence or
absence of a skin on a membrane. The bubble point test
measures the pressure applied to a membrane whose pores
7a
are filled with water in order to force the water through the
pores; the larger the bubble point value, the smaller the
pores in the membrane. Flow time is the time required for
a certain amount of water to pass through a given area of
membrane; the smaller the pores the longer the flow time.
The KL curve depicts the flow of water through a
membrane at constant pressure; skinless membranes
characteristically show an initially level KL curve followed
by a sharp rise in the curve as flow commences, whereas
KL curves for skinned membranes show a gradual upward-
sloping curve. These are generally accepted tests of
whether a membrane is skinned or skinless, for a non-
porous skin impedes the passage of water through the
membrane, and is detected by all three tests. The district
court defined "skinless" as a performance characteristic in
accordance with the parameters of these tests. We too
conclude, based on the specification and the data in
evidence, that "skinless" is properly construed as a
performance characteristic, and that a surface that does not
impede flow is "skinless" as that term is used in the art of
filtration membranes.
The district court then applied the construed claims
to MSI's membranes. The court found that the MSI
. membranes had bubble points, flow times, and KL curves
characteristic of skinless membranes. The court also
observed that MSI's product literature described its
membranes as of uniform pore size or having precise
porosity, which the court found were necessary
characteristics of skinless membranes. The court thus
found, on the totality of the evidence, that the MSI
membranes did not have a barrier layer that blocked fluid
flow, and that the MSI membranes were skinless as the Pall
patent used that term. We discern no clear error in this
finding.
8a
Literal infringement is found when every limitation
of a claim is met in the accused structure. Applying its
interpretation of the term "skinless," which we have
confirmed, the district court found that the MSI nylon 66
membranes literally infringed the Pall patent. The
judgment of infringement by MSI's nylon 66 membranes is
affirmed.
Nylon 46 Membranes
Three years after Pall filed this suit, MSI converted
most of its membrane manufacture from nylon 66 to nylon
46. Nylon 46 is made not from hexamethylenediamine and
adipic acid, but from tetramethylenediamine and adipic
acid. Claim 34, quoted supra, does not name
polytetramethylene adipamide (nylon 46). However, claim
116 of the Pall patent describes the polyamide resins in
terms of their methylene to amide ratio:
116. A hydrophilic skinless alcohol-
insoluble polyamide resin membrane sheet
of alcohol-insoluble hydrophobic polyamide
resin having a ratio CH,:NHCO of
methylene CH, to amide NHCO groups
capable when completely immersed in water
of being wetted through within no more than
one second, and reverting when heated to a
temperature just below the softening
temperature of the membrane to a
hydrophobic material which is no longer
wetted by water. [Emphasis added. ]
Nylon 66 has a ratio of methylene to amide groups
of 5:1. Nylon 46 has a ratio of 4:1. Pall asserts that the
9a
term "about 5:1 to about 7:1 " is infringed by the ratio of
4:1, either literally or by the doctrine of equivalents.
A. Literal Infringement
The district court, construing the term “about 5:1 to
about 7:1," observed that the word "about" does not have a
universal meaning in patent claims, and that the meaning
depends on the technological facts of the particular case.
We have so held. Eg. Andrew Corp, vy. Gabriel
Electronics, Inc., 847 F.2d 819, 821-22, 6 USPQ2d 2010,
2013 (Fed. Cir.), cert. denied, 488 U.S. 427 (1988); W.L.
Gore & Assoc, Inc, v. Garlock, Inc,, 842 F.2d 1275, 1280,
6 USPQ2d 1277, 1282 (Fed. Cir. 1988).
The determination of whether the literal meaning or
scope of "about 5:1 to about 7:1” includes 4:1 is a matter of
claim construction, a question of law for decision de novo
by this court. The use of the word "about," avoids a strict
numerical boundary to the specified parameter. Its range
must be interpreted in its technologic and stylistic context.
We thus consider how the term "about 5:1 to about 7:1"
was used in the patent specification, the prosecution
history, and other claims. It is appropriate to consider the
effects of varying that parameter, for the inventor's intended
meaning is relevant. Extrinsic evidence of meaning and
usage in the art may be helpful in determining the criticality
of the parameter, and may be received from the inventor
and others skilled in the field of the invention. See
Markman, 52 F.3d at 980, 34 USPQ2d at 1330 ("The court
may, in its discretion, receive extrinsic evidence in order to
aid the court in coming to a correct conclusion’ as to the
‘true meaning of the language employed’ in the patent.")
(quoting Seymour v. Osbome, 78 U.S. (11 Wall.) 516, 546,
(1871)).
10a
Dr. Pall, the inventor, explained his usage of "about
5:1 to about 7:1 " as deriving from his tests of the
performance of various nylon resin membranes. He
explained that the ratios change in half integers, ¢. ¢.., WH,
6.5:1, 6:1, etc., depending on the total number of methylene
groups in the acid and amine components of the polymer.
For example, each recurring unit of nylon 66 contains 10
methylene groups and 2 amide groups, for a ratio of 10:2,
which reduces to 5:1. Each recurring unit of nylon 46
contains 8 methylene groups and 2 amide groups, for a ratio
of 4:1. The Pall patent also illustrated a mixture having the
ratio of 5.3:1.
Dr. Pall testified that he conducted experiments
with several commercially available nylon resins. He
found that a nylon resin having a methylene:amide ratio
higher than 7:1 produced membranes that were less readily
wettable, such that use of a wetting agent was required for
optimum results. He therefore placed the upper limit of
"about 7:1 " in the claims. Dr. Pall stated that the only
commercially available nylon resin with a ratio lower than
5:1 was a nylon with the ratio of 3:1, and that he made a
membrane of the 3:1 nylon and found it to be soluble in
alcohol and therefore unacceptable. No experiments were
conducted with a nylon between 3:1 and 5:1, he testified,
because none was commercially available. He placed the
lower limit at "about 5:1." The reasons for these claim
limitations also appear in the patent specification.
The district court found that Dr. Pall's use of the
word “about” was “appropriate.” We agree that the
evidence showed that an exact limitation would have been
inappropriate. However, the evidence showed that while a
ratio of 7:1 was satisfactory, higher ratios were not,
suggesting that the upper limit was close to 7:1, and did not
extend to, for example, 8:1. At the lower ratios, although
Dr. Pall conducted no tests with resins between 3:1 and 5:1,
lla
the 3:1 resin was clearly unsatisfactory. Reviewing all the
evidence, the district court held that a literal reading of
“about 5:1 to about 7:1" did not include the ratio of 4:1. On
plenary review we reach the same conclusion.
Since the claim is construed more narrowly than
would literally encompass the ratio of 4:1, the district
court's finding that MSI's nylon 46 membranes do not
literally infringe the Pall patent is affirmed.
B. Infringement by Equivalents
When literal infringement is not established,
infringement may be proved under the doctrine of
equivalents when there is not a substantial difference
between the claimed invention and the accused product.
, 339 US.
605, 85 USPQ 328 (1950); Hi j
Wamer-Jenkinson Co., F.3d_, 35 USPQ2d 1641 (Fed.
Cir. 1995) (en banc). The determination of whether the
accused product is substantially the same as the claimed
invention is a question of fact, and the district court's
determination thereof is reviewed for clear error. ]d. at Po.
35 USPQ2dat_.
The district court found that MSI's nylon 46
membranes had substantially the same chemical and
physical structure, performed the same function in the same
way, and achieved the same result, as Pall's claimed
membranes. The court thus found that claim 116 was
infringed under the doctrine of equivalents.
MSI does not argue on this appeal that the nylon 46
and nylon 66 membranes are not equivalent instead, MSI
argues that Pall is estopped to establish infringement based
on equivalency because during patent prosecution Pal]
voluntarily gave up claim scope that would have literally
included nylon 46. MSI asserts that Pall is estopped from
12a
obtaining that scope under the doctrine of equivalents, even
if the products are in fact equivalent.
Prosecution history estoppel limits infringement by
otherwise equivalent structures, by barring recapture by the
patentee of scope that was surrendered in order to obtain
allowance of the claims. Mannesmann Demag Corp. v.
Engineered Metal Products Co,, 793 F.2d 1279, 1285, 230
USPQ 45, 48 (Fed. Cir. 1986); Thomas and Betts Corp. v.
Litton Sys., Inc., 720 F.2d 1572, 1579, 220 USPQ 1, 6
(Fed. Cir. 1983). Thus, by actions taken during patent
prosecution the patentee can be estopped from reaching
subject matter that otherwise meets the criteria of
equivalency.
Pall states that there is no estoppel with respect to
nylon 46, because no claim scope covering nylon 46 was
yielded due to prior art or based on any requirement of
patent examination. We outline the circumstances: Pall's
initial patent application contained broad claims, wherein
the only limit placed on the nylon polyamide resin was that
it be insoluble in alcohol. These claims stated no upper or
lower limit to the methylene:amide ratio. Dr. Pall testified
that upon continuing his research while his patent
application was pending, he discovered that his view of the
nylon resins usable in his invention was too broad. He
eventually refiled the patent application with additional
data, and claims to nylon resins "within the range of about
5:1 to about 7:1." Dr. Pall stated, and the prosecution
record is in accord, that the refiling was based not on prior
art or any requirement by the patent examiner, but on his
own research.
The examiner for the continuation-in-part
application at first rejected the new ratio claims under 35
U.S.C. §112, stating that the claimed range was too broad
and unsupported by the disclosure. No prior art was cited.
Dr. Pall responded that the claimed range was "actually
l3a
rather narrow" and that the claims "clearly exclude the vast
majority of polyamide resins." MSI relies on this statement
as the basis of estoppel. MSI states that whether polyamide
resins having a ratio below about 5:1 were required by the
€xaminer to be surrendered, or were voluntarily not claimed
by Pall, resins having a 4:1 ratio are excluded by estoppel
because of this response to the examiner. Pall states that
“about 5: 1" was simply descriptive of the inventor's
knowledge at the time the continuation-in-part application
was filed, and that there is no estoppel against the
admittedly equivalent 4:1 resin.
Prosecution history estoppel normally arises when a
change of claim scope is made in order to overcome an
examiner's rejection based on prior art. Estoppel may arise
whether the change is made by amendment of the claims
during prosecution, or by refiling the patent application
with changed claims. Thus a patentee is estopped from
recovering through equivalency that which was deemed
unpatentable in view of the prior art. However, when a
rejection based on prior art did not dictate the claim change
that was made, it is necessary to look at the specific change
and the reason, in ascertaining whether an estoppel has
arisen by virtue of the change. Diversitech Corp. v,
Century Steps, Inc,, 850 F.2d 675, 681, 7 USPQ2d 1315,
1320 (Fed. Cir. 1988). See Bayer Aktienizesellschaft v.
Duphar Int'l Research B.V., 738 F.2d 1237, 1243, 222
USPQ 649, 653 (Fed. Cir. 1984) ("a close examination
must be made as to not only what was surrendered, but also
the reason for such a surrender”); i
United States, 717 F.2d 1351, 1363, 219 USPQ 473, 481
(Fed. Cir. 1983) (an amendment to a claim may “have a
limiting effect within a spectrum ranging from great to
small to zero"). We take note that in the course of patent
examination claims are often amended and rewritten and
added and subtracted. A non-substantive change or a
l4a
change that did not in fact determine patentability does not
create an estoppel. Laitram Corp, v. NEC Corp., 952 F.2d
1357, 1361, 21 USPQ2d 1276, 1279 (Fed. Cir. 1991).
The estoppel asserted by MSI arose not from prior
art but from Pall's statement to the examiner, in response to
the rejection that the claims were too broad and
unsupported by the disclosure, that the claims were
"actually rather narrow." There were no changes made in
the claims in response to this rejection. A rejection for lack
of support in the specification is deemed a rejection under
35 U.S.C. §112, first paragraph. In re Borkowski, 422 F.2d
904, 909, 164 USPQ 642, 646 (CCPA 1970). Section 112,
first paragraph, states in 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, to make and use the same
Whether amendment or argument made in response
to a rejection under §112 produces an estoppel, as does an
amendment made to obtain allowance in view of cited
references, is dependent on the particular facts. There is no
all-encompassing rule that estoppel results from all claim
changes, or all arguments, whatever their cause or purpose.
Laitram v. NEC, 952 F.2d at 1361, 21 USPQ2d at 1280:
Hi-Life Products, Inc. v. American National WaterMattress
Corp., 842 F.2d 323, 325, 6 USPQ2d 1132, 1134 (Fed. Cir.
1988).
As we have observed, a concession made or
position taken to establish patentability in view of prior art
on which the examiner has relied, is a substantive position
15a
on the technology for which a patent is sought, and will
generally generate an estoppel. In contrast, when claim
changes or arguments are made in order to more
particularly point out the applicant's invention, the purpose
is to impart precision, not to overcome prior art. Such
prosecution is not presumed to raise an estoppel, but is
reviewed on its facts, with the guidance of precedent. See,
2 | , 872
F.2d 978, 990, 10 USPQ2d 1338, 1348 (Fed. Cir. 1989)
(rejection for lack of enablement, withdrawn based on the
patentee’s arguments did not serve as a basis for estoppel
“in these events"); Moeller v, Jonetics, Inc., 794 . F.2d 653,
659-60, 229 USPQ 992, 996-97 (Fed. Cir. 1986) ("on this
record" prosecution history estoppel not applicable to
amendment to more particularly point out the invention);
Mannesmann Demag, 793 F.2d at 1285, 230 USPQ at 48
(estoppel not necessarily created, by an amendment
designed only to remove a §112 indefiniteness rejection);
, 714 F.2d 1110,
1115, 219 USPQ 185, 187-88 (Fed. Cir. 1983) (prosecution
history estoppel not found where rejection based on
indefiniteness under 1 12, since prior art did not dictate the
limitation at issue).
MSI argues that even if prosecution history estoppel
does not limit Pall's claims to precisely the 5:1 to 7:1 range,
the doctrine of equivalents can be invoked only for subject
matter that is disclosed and enabled in the patent
specification but not claimed. That is incorrect. The
doctrine serves to guard against "fraud on a patent," Graver
Tank, 339 U.S. at 608, 85 USPQ at 330, by enabling fair
protection of the patentee's contribution. It is not
controlling whether the inventor foresaw and described this
potential equivalent at the time the patent application was
filed. See, eg,,
16a
Nemours & Co., 750 F.2d 1569, 1581, 224 USPQ 409, 417
(Fed. Cir. 1984).
The district court applied these principles. The
court found that Pall had not:surrendered or abandoned
patent protection outside of the 5:1 to 7:1 range, and that
Pall's voluntary restriction of the claims in the continuation-
in-part application, and the response to the examiner's
rejection under §112, did not produce an estoppel with
respect to the 4:1 product. The court found that although
nylon 46 had been known chemically since 1942, nylon 46
was not commercially available at the time of Dr. Pall's
invention. The court stated: "I do not find that nylon 46
was known in the sense that there was any requirement that
Pall experiment with nylon 46 to understand its properties."
Observing the close similarity in chemical structure and the
identity of function, way, and result to the claimed
membranes, the district court found infringement by MSI's
nylon 46 membranes under the doctrine of equivalents.
We discern no reversible error in the application of
the law of estoppel to the facts of this case, or in the court's
finding that the nylon 46 membranes infringed under the
doctrine of equivalents. The judgment of infringement is
affirmed.
The Process Claims
In view of our affirmance of infringement of the product
claims for the nylon 66 and nylon 46 membranes, we need
not reach the process claims. A patent is infringed if any
claim is infringed, Intervet America, Inc, v. Kee-Vet Lab.
Inc., 887 F.2d 1 050, 1055, 12 USPQ2d 1474, 1477-78
(Fed. Cir. 1989), for each claim is a separate statement of
the patented invention. 35 U.S.C. 282: Jones v. Hardy, 727
F.2d 1524, 1528, 220 USPQ 1021, 1024 (Fed. Cir. 1984).
17a
Willfulness
In the context of patent infringement, a distinction
is drawn between infringement that is not deemed "willful"
because the accused infringer had a reasonable basis for
believing that its actions did not infringe the patent, and
infringement that deliberately disregarded the property
rights of the patentee. i j , 716
F.2d 1550, 1565, 219 USPQ 377, 388 (Fed. Cir. 1983).
Willfulness of infringement is a question of fact, for
it includes elements of intent, reasonableness, and belief.
., 868 F.2d 1226, 1250,
9 USPQ2d 1913, 1932 (Fed. Cir. 1988); King Instrument
Corp. v. Otari Corp., 767 F.2d 853, 867, 226 USPQ 402,
412 (Fed. Cir. 1985);
ison- » 717 F.2d 1380, 1390, 219 USPQ
569, 576-77 (Fed. Cir. 1983). The boundary between
unintentional and culpable acts is not always bright, see
jte-Hi Co., 819 F.2d 1120, 1125-26, 2
USPQ2d 1915, 1919 (Fed. Cir. 1987), for the facts often
include subjective as well as objective elements. Thus
willful infringement must be established by clear and
convincing evidence,
ili » 849 F.2d 1430, 1440, 7 USPQ2d
1129, 1137 (Fed. Cir.), cert. denied, 488 U.S. 986 (1988),
for it is a punitive findin , and can have the consequence of
multiplication of damages.
The district court found that MSI's infringement
was not willful at its inception and for several years
thereafter. The court found that although MSI failed to
obtain an infringement opinion of counsel before producing
its nylon 66 membranes. MSI made "significant efforts to
avoid the claims of the patent." Thus the district court
found that MSI's infringing production of nylon 66
membranes from 1983 until October 1989 was not willful.
:
:
18a
The court also found that MSI's production of nylon 46
membranes after October 1989 did not constitute willful
infringement. Pall does not appeal these findings.
In October 1989 MSI shifted most of its production
to nylon 46 membranes. However, MSI continued to
manufacture some membranes using nylon 66. The district
court referred to MSI's shift to nylon 46 as evidence that
MSI knew that it had an alternative to its nylon 66 product,
and found that MSI should have known by that time that its
nylon 66 product infringed the Pall patent. The court stated
that it assumed that MSI had acquired competent patent
counsel, after three years of litigation. On these grounds
the district court found that MSI's failure to shift to nylon
46 for all of its production showed the requisite culpability
to sustain willfulness, from that time forward, with respect
to MSI's continuing nylon 66 membrane production. The
court doubled the damages for MSI’s infringing sales of
nylon 66 after October 1989. MSI appeals these rulings.
MSI argues that the district court violated Federal
Rule of Evidence 407 in finding that MSI's continued
production of nylon 66 membranes after MSI switched to
nylon 46, was willful infringement. Rule 407 bars evidence
of subsequent remedial action in proving culpability for a
prior act or event.’ The policy implemented by Rule 407 is
’ Rule 407. When, after an event, measures are taken which, if
taken previously, would have made the event less likely to
occur, evidence of the subsequent measures is not admissible to
prove negligence or culpable conduct in connection with the
event. This rule does not require the exclusion of evidence of
subsequent measures when offered for another purpose, such as
proving ownership, control, or feasibility of precautionary
measures, if controverted, or impeachment.
19a
to avoid inhibiting post-accident repair, lest additional
injury occur. j :
716 F.2d 1322, 1327 (10th Cir. 1983), cert. denied, 466
U.S. 958 (1984). Here MSI's conversion to nylon 46 was
not relied on as evidence of culpability for the prior
infringement by nylon 66 membranes, and the court
declined to find willfulness for that prior infringement.
Thus by its terms Rule 407 was not violated.
However, patent infringement is a continuing tort,
and an action even if innocently begun does not
automatically retain its purity as circumstances change.
The filing of a lawsuit does not stop the clock insofar as
culpability may arise from continuing disregard of the legal
rights of the patentee. The district court relied on the fact
that MSI switched to an alternative product three years into
the litigation, yet continued to produce some of the nylon
66 membranes.
- Willfulness of infringement after October 1989 is
determined on the totality of the evidence. We do not hold
that because the infringement was found not to be willful
when begun, there is a greater burden on the patentee to
prove willfulness as circumstances change. The
requirement of law-abiding respect for the property of
others is not reduced simply because lesser transgressions
were overlooked. However, upon the ruling that
willfulness was not established for MSI's activities during
the initial six years of infringement, the partial conversion
to the nylon 46 product while continuing some of the nylon
66 production is not probative of willfulness for the nylon
66 continuing production. Attempts to avoid or mitigate
infringement, whether or not successful, do not of
themselves enlarge the culpability of the continuing
activity.
The finding of willful infringement for the
continuing production of nylon 66 is clearly in error.
TSE Oe ee ee,
20a
Absent other grounds for the finding of willfulness, this
ruling and the award of damages attributed thereto are
reversed.
DAMAGES
A
The district court awarded damages measured by
Pall's lost profits on 25% of MSI's infringing sales, and a
royalty of 8% on the remaining 75% of MSI's infringing
sales. The district court relied on the presence in the
marketplace of nylon membranes sold by Cuno
Corporation, with whom Pall had settled worldwide
litigation with respect to the patent here in suit and several
Cuno patents, each having charged the other with
infringement. Pall states that it is entitled to lost profits on
all of MSI's infringing sales, at least until May 9, 1990,
when Pall granted immunity to Cuno under the Pall patent.
In order to recover lost profits damages the patentee
"must show a reasonable probability that, ‘but for' the
infringement, it would have made the sales that were made
by the infringer." Rite-Hite Corp. v. Kelley Co., 56 F.3d
1538, 1545, 35 USPQ2d 1065, 1069 (Fed. Cir. 1995) (en
banc); Yarway Corp, v, Eur-Control USA, Inc., 775 F.2d
268, 275, 227 USPQ 352, 357 (Fed. Cir. 1985); Kiniz
Instrument, 767 F.2d at 863, 226 USPQ at 409. In a market
with only two suppliers, the patentee and the infringer, this
requirement is readily met, for example by applying the
guideline set forth in Panduit Corp. v. Stahlin Bros. Fibre
Works, Inc., 575 F.2d 1152, 1156, 197 USPQ 726, 730 (6th
Cir. 1978). To establish lost profits by applying the
evidentiary guideline of Panduit the patentee must show (1)
that there was a demand for the patented product, (2) the
absence of acceptable noninfringing substitutes, (3) that the
2la
patentee was capable of meeting the demand, and (4) the
amount of profits lost. This guideline facilitates the
determination of damages by stating conditions which
allow the inference that the patentee would reasonably have
made the infringer's sales. See Del Mar Avionics, Inc. v.
‘at Quinton Instrument Co., 836 F.2d 1320, 1327, 5 USPQ2d
1255, 1260 (Fed. Cir. 1987).
The district court, applying this guideline, held that
the Cuno membranes were "acceptable noninfringing
substitutes" for the Pall membranes. Pall states that this is
incorrect, that the Cuno membranes were the subject of
ongoing infringement litigation until May 1990, when they
were licensed. The district court should have recognized
the distinction between the legal and market situation
before and after the licensing of the Cuno products. During
the period before the Cuno products were licensed their
presence in the marketplace did not defeat Pall's entitlement
to lost profits damages for all of MSI's infringing sales, for
the Cuno products were not "noninfringing substitutes."
It was not necessary for Pall to continue the Cuno
litigation to judicial decision of the issue of infringement,
as MSI argues. The voluntary settlement of litigation does
not retrospectively transform an accused infringing product
into a "noninfringing substitute." See State Indus., Inc. v.
Mor-Flo Indus., Inc., 883 F.2d 1573, 1578, 12 USPQ2d
1026, 1029 (Fed. Cir. 1989) (if the other suppliers “were
likely infringers," State would have been entitled to their
shares of the market in determining damages based on lost
sales), cert. denied, 493 U.S. 1022 (1990); Micro Motion,
Inc. v. Kane Steel Co., 894 F.2d 1318, 1322, 13 USPQ2d
1696, 1699 (Fed. Cir. 1990) (there’is precedent for finding
causation for lost profits damages if the alternative source
of supply is an infringer); Datascope Corp. vy. SNEC, Inc..
879 F.2d 820, 824-25, 11 USPQ2d 1321, 1323-24 (Fed.
Cir. 1989) (the finding that there was an acceptable
22a
noninfringing alternative can not be supported by the
ongoing litigation between Datascope and a third party),
cert. denied, 493 U.S. 1024 (1990).
However, after Pall settled with Cuno, the district
court correctly held that Cuno's presence in the marketplace
could not be ignored, and limited the award of lost profits
to the share of MSI's sales that Pall would reasonably have
made. For the remaining share the court viewed Pall as a
hypothetical willing licensor, and accordingly assessed
damages as an 8% royalty. This holding implements the
reasoning that the purpose of compensatory damages is not
to leas the infringer, but to make the patentee whole.
See Aro Mfg. Co, v. Convertible Top Replacement Co.,
377 U.S. 476, 507, 141 USPQ 681, 694 (1964) (the
question to be asked is "Had the infringer not infringed,
what would the patent holder... have made?"); State
Industries, 883 F.2d at 1577, 12 USPQ2d at 1028 (damages
shall compensate the patentee for its pecuniary loss because
of the infringement). Pall argues that this result provides a
windfall to the infringer, for when there are multiple
infringers the infringement will be profitable to the
remaining infringers as soon as the patentee settles with any
one of them. We doubt that injustice is inevitable, for the
setting of the royalty rate and the discretion to multiply
damages can assist in achieving a just remedy.
In summary, for MSI's sales after Pall settled with
Cuno, we affirm the damages award based on recovery of
Pall's lost profits for 25% of MSI's infringing sales, and a
royalty of 8% for the remaining 75% of MSI's infringing
sales. For the period before the grant of immunity to Cuno,
Pall shall recover damages measured as its lost profits for
ali of MSI's infringing sales. We remand for the
recalculation of damages.
23a
B
The district court selected 45% as the rate of Pall's
lost profits. MSI does not challenge this rate on appeal.
However, Pall appeals this determination, stating that the
court selected an arbitrary rate that was lower than the
actual rate that Pall had proved.
Among its reasons for reducing the rate from that
presented by Pall's accountants, the district court
considered that MSI's prices were lower than Pall's,
concluded that some of MSI's customers would have
shifted to membranes other than nylon, and factored this
into its reduction of Pall's estimated profits. Pall disputes
the presence as well as the significance of asserted price
differentials, and challenges the other premises of the
district court's decision.
In general, an infringer's sales at a lower price do
not defeat the patentee's recovery of its losses at the
patentee's price, for the principle of patent damages is to
return the patentee to the pecuniary position it would have
been in but for the infringement. Aro Manufacturing, 377
U.S. at 507, 141 USPQ at 694. See also Rite-Hite, 56 F.3d
at 1544, 35 USPQ2d at 1068 ("The statute thus mandates
that a claimant receive damages ‘adequate’ to compensate
for infringement.”) However, in view of the complex of
financial factors presented at trial, we discern no clear error
in the district court's finding of the rate of Pall's lost profits.
The district court's ruling on this aspect is affirmed.
Motions
MSI moves to strike the opinion of the district court
that was written on April 14, 1992. That opinion was an
edited form of the court's prior opinion from the bench, the
district court having reserved the right to present a written
24a
opinion. Although MSI objected to Pall's proposed
substitute opinion, and to the transmittal to this court of a
"substitute opinion, of any kind," it made no objection to
that opinion after it was forwarded by the district court and
did not move to strike it until two years after the district
court's edited opinion was issued. MSI offers no
explanation for the delay. The motion is denied.
Pall in turn states that the court should strike MSI's
argument on the merits, raised in MSI's motion to strike the
opinion of the district court. In view of our disposition
herein, the motion is dismissed as moot.
laid
The stay of injunction pending appeal is vacated.
25a
Costs
Each party shall bear its costs.
ps a eit ale
26a
United States Court of Appeals for the Federal Circuit
91-1393, -1394, -1409
PALL CORPORATION,
Plaintiff/Cross-Appellant,
V.
MICRON SEPARATIONS, INC.,
Defendant-Appellant.
MAYER, Circuit Judge, concurring in the judgment.
Claim interpretation demands an objective inquiry
into how one of ordinary skill in the relevant art at the time
of the invention would comprehend the disputed word or
phrase in view of the patent claims, specification, and
prosecution history. A patent, however, is written for a
person of ordinary skill in an art; it is not written for a
court. Because it is beyond argument that "[a] judge is not
usually a person conversant in the particular technical art
involved and is not the hypothetical person skilled in the art
to whom a patent is addressed," Markman v. Westview
Instruments, Inc., 52 F.3d 967, 986, 34 USPQ2d 1321,
1335 (Fed. Cir. 1995), a disputed word or phrase in a patent
claim, as well as the technology disclosed in the
specification and prosecution history, is often far beyond
the court's unaided understanding. “Extrinsic evidence,
therefore, may be necessary to inform the court about the
language in which the patent is written." Id.
27a
In this case, infringement hinged on the definition
of the word "skinless". The patentee and supporting expert
witnesses who were membranologists testified that in light
of the specification and prosecution history, one of ordinary
skill would understand "skinless" in terms of specific pore
size, shape, and resulting way in which fluid flows through
the membrane. Micron's experts countered that "skinless"
refers to a visible physical characteristic of the membrane
that could be viewed with an electron microscope, and
requires that a membrane not visually appear to have a skin.
Both of these interpretations are plausible and are
adequately supported. After a lengthy trial, the district
court found in favor of Pall's definition as a matter of
underlying fact.
On appeal this panel unanimously agreed on an
opinion which held that those findings of fact were not
clearly erroneous. Then Markman intervened and this case
was revisited by direction of the court en banc. Now,
without explanation, where it was prepared to sustain the
interpretation of "skinless" based on the findings of fact,
the court says it is correct as a matter of law. I continue to
believe Markman was wrongly decided, see 52 F.3d at 989,
34 USPQ at 1337, and this case is an example of why. I
see no principled basis on which the court may rest its
conversion of what once was mutable fact into immutable
law. I can sustain the judgment of the district court as not
based on clear error. Otherwise there is little for the
uninitiated to choose between the contending
interpretations. As far as I can see, this court’s action is
based on mere preference, thus illustrating the artificiality
of Markman. How it fosters greater predictability and
consistency in the law or a certainty that a judge will
“arrive at the true and consistent scope of the patent owner's
rights", id. at 978, 34 USPQ3d at 1329, is beyond my
understanding.
28a
Judge Learned Hand put it cogently: "The question
was of how the art understood the term, which was plainly
a question of fact; and unless the finding was ‘clearly
erroneous,’ we are to take this definition as controlling. It
is an issue which we are altogether incompetent to decide
upon the merits; even the terminology is beyond our
acquaintance . . . indeed the very elements themselves are
in dispute among those who have made them their life
study, as the merest smattering of modern physics quickly
discloses to a lay reader. While Congress sees fit to set
before us tasks which are so much beyond our powers,
suitors must be content that we shall resort to the testimony
of experts, though they are concededly advocates with the
inevitable bias that advocacy engenders. " Harries v. Air
King Prods, Co,, 183 F.2d 158, 164 (2d Cir. 1950).
These cases often deal with the interpretation of
complex scientific terms in areas of cutting edge
technology. But science is not absolute, it is dynamic; and
what is “truth” today is often shown to be error tomorrow.
The fact finder may or may not arrive at the "true" meaning
of the claims, but that problem is inherent in any judicial
undertaking because an undisputed knowledge of fact is
largely unobtainable. To suggest that appellate judges,
precious few of whom are trained in science, will always
arrive at the "true" meaning of words embodying complex
concepts endows them with knowledge and enlightenment
far beyond those who have training and experience in the
field. They are in no position to declare the state of
knowledge in the art or that scientific hypotheses are
correct as a matter of law. Those who provide conflicting
testimony and other evidence about scientific or technical
matters should be evaluated as are any other expert
witnesses and the finder of fact should decide what is the
best, most reasonable result in light of the evidence
presented. The trial court is the proper forum for such an
29a
exercise. This court should review according to traditional
standards.
30a
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
PALL CORPORATION, )
)
Plaintiff, ) CIVIL ACTION
) NO. 86-1427-Y
V. )
)
MICRON SEPARATIONS, )
INC., )
)
Defendant. )
MEMORANDUM OF ORDERS
YOUNG, D.J. June 18, 199]
On May 15, 1991, the Court entered the following
injunctive order at the close of the first phase of the liability
case:
... the claim of MSI that the Pall patent is
unenforceable by reason of inequitable
conduct is not proved; that MSI has not
proved that the claims of the patent are
indefinite, invalid due to the 1978
commercialization of the Pall nylon
membrane, invalid by reason of
anticipation by the disclosure of the
Marinaccio patent, invalid by reason of
obviousness over the prior art, invalid by
reason of the work by AMF. The Pall
patent is declared to be valid.
Further, it’s declared that MSI’s
infringed by virtue of its products made
Se ne eer ee ee
7
3la
from Nylon 66. It has infringed the claims
of the Pall patent, and its process for
making membranes out of Nylon 66
infringes the Pall patent. The Court makes
no finding on the state of the record as it
now stands that MSI has willfully infringed
the Pall patent, and it makes no finding that
Pall is entitled to attorneys’ fees.
Accordingly, MSI, its agents,
servants, employees, and all persons acting
in concert with it are hereby enjoined, for
the life of the Pall patent, from engaging in
the process in which they are now engaged
to make nylon membranes out of Nylon 66.
Transcript, pp. 2261-62.
On June 6, 1991, at the close of the liability phase
of the case, the Court immediately made findings and
rulings from the bench, including the following injunctive
order:
Accordingly, the Court finds that
although there is no literal infringement in
this case, given its peculiar facts, the
Doctrine of Equivalents is not trumped or
made inapplicable by the file wrapper
history. Therefore, since Nylon 46 infringes
the Pall patent under the Doctrine of
Equivalents, that patent, even as to Nylon
46, is valid and infringed; and MSI is
forthwith, its agents, servants, and counsel,
and all persons acting in concert therewith,
are enjoined immediately from any further
production or sale of any items involving
Nylon 46 to the same extent that the Court
has already enjoined Nylon 66.
32a
Transcript, p. 2758.
Later that same day, the Court stayed the injunction
as to Nylon 46 upon the following terms:
Accordingly, the injunction as to 46,
not as to 66, but as to 46 just entered, is
stayed pending an appeal on the following
terms: That an appeal bond in the sum of
$1,700,000 is filed with the Court, which
provides that it will increase by a further
$1,700,000 on January 1, 1992, and a further
$1,700,000 on June 30, 1932 (sic), and that
this stay is vacated by it’s own terms if MSI
files for reorganization or bankruptcy or at
the moment -- I guess this goes without
saying -- that an appeal of the Court’s
judgment is dismissed.
Since this is an increasing bond,
there has to be another provision. I expect
that MSI will seek expedited hearing from
the Court of Appeals of the Federal Circuit,
and the increase which is to take place on
January 1 and on June 30, 1991, is of no
force and effect should Pall object to any
advancement of the appeal, accelerated
briefing schedule, or other accelerated
appellate determination of the matter. Pall
has to press just as hard to hang on to its
judgment as Micron is pressing to have the
judgment reversed. That’s the only way the
bond stays in effect.
Transcript, p. 2777.
On June 10, 1991, after hearing, the Court modified
the stay order just quoted by 1.) reducing the initial sum of
aa
33a
the bond from $1,700,000 to $1,000,000; 2.) permitting the
stay to take effect if the reduced bond were filed on or
before Noon, Tuesday, June 11, 1991; and 3.) omitting
from the stay order any reference to its being vacated
should MSI seek the protection of the bankruptcy laws.
Transcript, pp. 2918-19.
There the matter presently stands as the Court
concludes the damages phase of the trial.
/s/
WILLIAM G. YOUNG
UNITED STATES DISTRICT JUDGE
34a
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
PALL CORPORATION,
CIVIL ACTION
NO. 86-1427-Y
Plaintiff,
v.
MICRON SEPARATIONS,
INC.,
Defendant.
ORDER OF JUDGMENT
In accordance with the findings and rulings
announced in open court on May 15, 1991, June 5, 1991,
June 6, 1991, and June 20, 1991, it is hereby ORDERED:
1) that the judgment be entered for the plaintiff,
Pall Corporation, in the amount of $4,434,291 .00;
2) — that defendant, Micron Separations, Inc., its
officers, agents, servants, employees, and attorneys and all
persons acting in concert with them are permanently
ENJOINED for the life of United States Letters Patent No.
4,340,479 from infringing any asserted claim of said patent
by the manufacture, use or sale of nylon microporous
membrane products from nylon 4-6 or nylon 6-6; and
3) that the foregoing injunction with respect to
nylon 4-6 microporous membrane products only is
STAYED pending appeal of this judgment, provided that
defendant, Micron Separations, Inc., has filed and
maintains in the custody of the Clerk of this Court a bond
35a
or cash deposit in the following increasing total amount:
$1,000,000 on and after June 11, 1991; $3,400,000 on and
after January 1, 1992; and $5,100,000 on and after July 1,
1992.
/s/
WILLIAM G. YOUNG
June 24, 1991 UNITED STATES DISTRICT JUDGE
228 NO REE ISAS i
CORTE SINR OE SRR NET MPR
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36a
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
Civil Action
No. 86-1427-Y
KEKE KREKKEKEEEKERSES
PALL CORPORATION, ¢
.
Plaintiff, * DAILY TRIAL
* TRANSCRIPT
Vv. : .
*
MICRON SEPARATIONS, *
INC., *
a
Defendant. *
KKREKEEEKEEKEEAKEREE SE EK EEE
BEFORE: The Honorable William G. Young,
District Judge
June 5, 6, and 20, 1991
37a
THE CLERK: Calling Case no. 86-1427-Y,
Pall Corporation v. Micron Separations, Incorporated.
Court is in session. Please be seated.
THE COURT: Good morning, everyone.
COUNSEL: Good morning, your Honor.
THE COURT: Give me just a second to set
my papers up here, and as I’m doing it let me explain how
we’re going to proceed.
I’m going to deliver my findings and rulings
on the, on all aspects of the liability portion of the case
from the bench. I reserve the right to take the bench
opinion and revise it grammatically. I reserve the right to
find additional subsidiary facts consistent with the facts as I
describe them from the bench, as I have found them. I
reserve the right to make additional and more detailed
exposition of the law.
To that end, you are invited, once you
review the transcript of my findings and rulings, to submit
transcript and exhibit citations which any of you believe
support the findings made herein. You're not precluded
from moving for consideration, reconsideration obviously
to point out what you think are inconsistencies and the like,
but I invite you to point out those specific transcript and
exhibit references in this lengthy case that you think
support the findings and rulings.
This is a patent case which involves United
States Patent 4,340,479 issued July 20, 1982 to the Pall
Corporation involving a process for preparing hydrophilic
polyamide membrane filtered media and product. The
plaintiff Pall Corporation is a New York corporation having
a principal place of business in Glen Cove, New York, and
offices on Route 25A in Roslyn, New York. It was
founded by Dr. David B. Pall of Roslyn Estates, New York,
in the late 1940’s. Dr. Pall is designated as the inventor of
the patent-in-suit.
38a
The action is brought against the defendant
Micron Separations, Incorporated, which I'll call MSI, a
Massachusetts corporation having a principal place of
business in Westboro, Massachusetts. The company was
formed, MSI was formed in 1981 when certain employees
of a filtration company known as Millipore, named James
S. Johnson and John M. Greenwood left that company and
along with Edward J. Ackley decided to start their own
company with, decided to start their own company and
enter into competition with Pall, Millipore and others in the
microporous filtration industry.
The compleint in this action was filed on
May 7, 1986. It seeks a judgment that MSI has willfully
infringed the patent. I'll sometimes refer to the patent as
the Pall patent. It also seeks damages for past infringement
and an injunction against future infringement.
Analysis starts not with the Pall patent but
with the prior art, more specifically, a patent referred to in
this lawsuit as the Marinaccio patent.
Pall J. Marinaccio was hired as a research
chemist by AMF Company to make reverse osmosis
membranes and serendipitously embarked upon
microporous membrane research after it occurred to him
that microporous membranes -- strike that -- after it
occurred to him by looking at his polystyrene coffee cup
that it might be possible to make microporous membranes
out of related materials.
Marinaccio devised a process which he
believed was a breakthrough in that it -allowed the
manufacture of microporous membranes rapidly, far more
rapidly than was then the case. Marinaccio knew that at the
time in the late 1960’s and early 1970’s when he was
performing these experiments that no one else in the
industry had such a process.
39a
One of AMF’s subsidiaries is a company
known as Cuno. Cuno, within the AMF Corporation, a
large corporation with 80 divisions, one of which is Cuno,
research and development was largely centered in AMF
itself. Cuno sought to have the AMF research chemists
develop a microfiltration fiber filter and Mr. Marinaccio
and others commenced work on such a project. They
abandoned this work and instead devoted their efforts to the
development of a microporous membrane. Mr. Marinaccio
believed that the key to the process as he developed it were
devices which prevented any air contact during the quench
process, an aspect of his claimed invention which he called
zero quench. I should say generally, at this point, that the
general steps, the general mechanical steps for making
microporous membranes were, by the time of the early
1970’s, largely known to those skilled in the art of making
such membranes. To the extent there are developments,
they are developments in particular materials used and the
manner of their use. But the developments are not in the
mechanical aspects of the membrane process.
Marinaccio sought, and received, United
States Patent 3,876,738 dated April 8, 1975. I°ll call this
_ the Marinaccio patent. The Marinaccio patent described
this so-called zero quench process for the continuous
formation deposit of membrane so as to form large sheets
of microporous membranes.
Now, while Marinaccio had obtained a patent on his
invention, a patent presumed to be valid, he had a number
of problems within his company. Marinaccio believed that
his patented process had significant commercial viability.
But, as is the plaint of investors everywhere, he considered
himself starved for money and that that the business leaders
at AMF didn't adequately support his research efforts.
He testified, and I credit, that at AMF they were
literally holding the machines together with wire and tape.
AE SAR 22 GASTRO ER LTT PET REN IS EIN
£
4
40a
Marinaccio's concept of commercialization of his process
was to make an idiot-proof membrane; that is, he constantly
sought for a simple, readily understandable, generally
applicable approach. Marinaccio, through the use of his
invention, was able to manufacture, albeit not commercially
for sale, but was able to manufacture sheets of microporous
membrane which looked, as I will say all these sheets in
this case look like typewriter paper, they all look to the
naked eye identical. On the materials that he manufactured
he ran bubble point tests and flow tests and came to believe
that the material manufactured pursuant to his process was
as good for microfiltration purposes as anything then
commercially available.
A gentleman named Ostricher at Cuno was very
enthusiastic about the samples which Marinaccio had
produced, was evaluating those membrane samples against
standard Cuno product with the result that the Marinaccio
samples were thought to be by Marinaccio and Ostricher
considerably better.
The trouble came in the commercialization of the
Marinaccio process. The chief executive officer of Cuno
was one Ray Tritten. Cuno, at that time, made only
unsophisticated paint filters. Tritten's idea of
commercialization of microporous filters was a process
which resulted in long runs of membrane sheets. While
certain of his subordinates thought that the sheets prepared
by the Marinaccio process were good enough for
commercial application, Tritten said no. Tritten was
concerned in tests that Cuno ran with tap water that the
filters prepared by the Marinaccio process had only a very
short life. Marinaccio believed that the short life showed
nothing more than the remarkable benefits to be derived
from his filter inasmuch as it filtered everything out of the
tap water retaining it on the filter face and quickly clogging
the filter.
4la
The rejection by Cuno of, really by Tritten, and then
confirmed by AMF, the rejection of Marinaccio's efforts to
commercialize the Marinaccio process as set forth in his
patent did not daunt Marinaccio. He went right on testing it
in an underground fashion. He, though no one had asked
him, he kept on testing it.
The zero quench process that is referred to in the
Marinaccio patent was assisted in the development thereof
by one Rodney A. Knight who's also listed as an inventor
thereof. That process was able to make short runs of .2
micron material. Long runs were not made in Marinaccio's
view because he did not have the money to develop the
machinery sufficiently to actually make long runs, though
he believed, and indeed still believes, that he could have
made long runs by his process had he only been adequately
supported.
Marinaccio believed that his only failure was the
equipment limitation failure. His process involved the
dissolving of pellets of Nylon 66 -- strike that. Strike that.
His process involved the dissolving of nylon pellets in
formic acid. Marinaccio, however, recognized the
problems with the long-term reproducibility of the
materials formed by his process. He further recognized that
the most critical test for microporous membrane is the
bacteria retention test and that in ways that he was never
satisfactorily able to explain various of his prototype
production runs failed to meet the bacteria challenge test.
Cuno did not sell any of the rolls of membranes material
developed by, or developed pursuant to the Marinaccio
patent.
The Marinaccio patent does not contain any
indication that the products obtained by its process are
hydrophilic, as that term is used in the Pall patent, and
skinless. Marinaccio does not claim, the Marinaccio patent
does not claim that the products produced are inherently
——_
42a
hydrophilic as that term is used in the Pall patent, and
further teaches that the products produced should be
“treated with a wetting agent." The Marinaccio patent is
silent with respect to skinlessness. It comments only that a
person of ordinary skill in the art may, ought recognize that
a skin may result on the casting solution and therefore is
likely on the final product after quenching. The Marinaccio
produced at or near room temperature. In fact, temperature
plays an important role in the preparation and casting of a
pore size control but not, thought Knight, absolutely
__ essential to the preparation of the microporous membrane
itself. The Marinaccio patent does not disclose that control
of the esterification reaction resulting from the order in
which the reagents are added to form the casting solution is
silent regarding the manner in which the membrane film
that's produced is dried. It makes no mention of controlled
nucleation.
Now, wholly apart from the claim anticipation of
the Pall patent by the Marinaccio patent, MSI here claims
43a
concealed by not being made public. So, a brief analysis
need be made of this issue.
If a prior invention is made public or is used
commercially it has not been abandoned. Friction Division
Products v. E.I. DuPont de Nemours, 658 F.Supp. 998,
1014, District of Delaware (1987). The law does not
require any disclosure of the actual invention to the public
nor any commercial use for an invention to qualify as prior
art. Hazeltine Research v. Brenner, 382 U.S. 252 at 254-
256 (1965). Nor does 35 U.S.C., Section 102(g) carry a
"personal knowledge. requirement" on the part of the
infringer. E.I. DuPont De Nemours and Co. v. Phillips
Petroleum, 649 F.2d 1430, 1437, Federal Circuit (1988).
Indeed, the invention need only benefit the public, that is, it
must be reduced to practice. Friction Division, supra, at
1013 and 14. Reduction to practice means something less
than commercialization, 1013, but requires an exposure of
‘the benefits to the public, 1014. An invention is deemed
publicly known if the public enjoys the benefits or use of
the prior invention. Friction Division again at 1013-1014;
see also Schreiber Manufacturing Co., Incorporated v. Saft
America, 704 F.Supp. 759, 762, Eastern District of
Michigan (1989). "Public use of an invention under
Section 102(b) is any nonexperimental use by an inventor
or by an individual. A commercial use by the inventor will
bar a patent, even if that commercial use is kept secret. The
determination of whether a ‘public use’ has occurred can
only be made upon consideration of all surrounding
circumstance."
In the circumstance of this case the Court finds that
the rolls of material made by Mr. Marinaccio for Cuno
were experimental only, never benefited the public, never
were disclosed publicly, never were in use, and in fact did
not anticipate the patent-in~suit, the Pall patent, as any sort
of prior art.
a
44a
Now let's turn to the Pall patent. Coincident, and
indeed even earlier than Marinaccio, Pall was -- and now
I'm referring to Dr. Pall and that's how I'll distinguish him
from Pall Corporation; when I'm talking about the
individual I'll refer to him as Dr. Pall-- Dr. Pall was
conducting research on microporous filters made from
polymeric materials, including nylon, in the mid- to late-
1960's. He set aside that project in 1969 because
developments in other areas were believed to be more
promising. In mid-1974, Dr. Pall reactivated his research
program in microporous polymeric membranes. By
November '74 he made a promising microporous membrane
from Nylon 11 and Nylon 612. By September 1975 he
made a pliant, alcohol-insoluble, skinless microporous
membrane from Nylon 66. And by November 1975 he had
repeated this result on a larger scale.
Now, Dr. Pall considered the membrane that he had
developed to be naturally hydrophilic. At least that's what
he says in his patent application and that's what he defines
in his patent. Now, a patent applicant, as the cases make
clear, can be his own lexicographer, but it's important to
pause for a moment and discuss what Dr. Pall says when he
uses the word hydrophilic.
The general use of the word in industries beyond
this industry is in a manner different from the way Dr. Pall
uses it. Generally, a material is thought to be hydrophilic if
the contact angle of a drop of water with the surface of the
material is less than 90 degrees, and hydrophobic if the
contact angle of the drop of water with the surface of the
material is greater than 90 degrees. And these concepts of
hydrophilicity, attractiveness to water, hydrophobicity,
repelling water, are confirmed by a variety of formulas and
tests involving capillary action of the material and water.
Now, it's very important to a microporous membrane that it
be naturally hydrophilic and the more hydrophilic the
AT PR er
45a
better. Naturally hydrophilic, that is, attractive to water
itself without the addition of wetting agents, because the
wetting agents themselves may interact with the material
being passed through the membrane and make the
membrane not commercially usable. So, natural
hydrophilicity is desirable. And the more hydrophilic a
material is, the better it is for microporous membrane
filtration in view of the need, of course, to pass the water
through the material filtering out whatever is sought to be
filtered out.
Dr. Pall uses the term, and the patent I find uses the
term in a readily understandable fashion, but his use of the
term hydrophilic is different than that term is used
generally in the mechanical sciences and in chemistry. For
Dr. Pall, at least by the time his patent is issued, a matter
we will come back to, a material is naturally hydrophilic
only if it is so readily wetted with water that no contact
angle at all can be measured between the material and the
drop of water because the water has gone into the material
in less than one second. Now, one can understand that
definition, but arguable confusion results since he defines
everything else as hydrophobic, whereas in fact certain
nylon blocks, pellets, solid materials, most important, as we
will see further on, Nylon 46, have contact angles, in their
natural states have contact angles of less than 90 degrees.
This aspect of skinlessness should also be
mentioned. When he comes to obtain the patent-in-suit he
makes an important point of claiming that the membranes
produced through the Pall patent are skinless.
Now, skinlessness is never specifically defined in
the Pali patent but it clearly is a significant parameter and
it's discussed at some length, as follows, reading from
Column 9 of the patent: The conditions under which the
polyamide resin is precipitated determine the skinless
nature of the membrane, as well as its physical
|
46a |
characteristics, i.e., the size, length and shape of the
through pores of the membrane. Under certain conditions a
membrane is formed which has through pores extending
from surface to surface that are substantially uniform in
shape and size. Under other conditions, the through pores
are tapered, being wider at one surface and narrowing
towards the other surface of the membrane.
Under conditions outside the scope of the invention,
still another form of the membrane is obtained, having a
dense skin penetrated by pores of smaller diameter than the
pores in the remainder of the sheet. This skin is normally |
on one side of the membrane sheet, but it can be on both
sides of the membrane sheet. Such skinned membranes are
conventional in the art, exhibit relatively higher pressure
drop and other poor filtration characteristics, and are
undesirable.
Then in Column 26 of the patent, starting at
Line 34, it says: Skinned membranes behave very
differently; when water wetted and their air flow-pressure
drop relationship is determined, the curve is not flat -- and
the curve that is referred to here, I'm interpolating, is what's
called a KL curve used in the industry -- and now going
back to the quote: -- the curve is not flat initially, but slopes
upward, indicating presence of large pores; transition to a
more nearly vertical line is slow, with a large radius, and in
the vertical area, instead of the sharp rise of Figure 3 -- the
reference is to Figure 3 in the patent -- going back to the
quote: a sloping line is obtained, reflecting a wide pore
size range. Such membranes are poorly suited to obtain
sterile filtrates when challenged by bacteria; either a
nonsterile fluid is obtained, or, if sterility is gotten, it is at
the cost of very high pressure drop to achieve a low
throughput rate.
Stated another way, the skinlessness of the
membranes was important for filtration applications
47a
because it assured a good flow rate and acceptable pressure
drops and avoided functional imperfections typically
associated with skinned membranes which rendered such
membranes unsuitable for use in critical filtration
applications where absolute removal of all particles larger
than a predetermined size must be assured. Skinlessness is
also an important attribute of nylon membranes in
biotechnological applications.
Dr. Pall found the immediate zero contact angle
aspect of the nylon membranes produced by the process
with which he was working, which he had invented, to be
unexpected since he considered the source material, that is,
the pellet form of the starting nylon resins, each to have a
contract angle much greater than zero. This immediate
natural zero contact angle occurring within one second,
which Dr. Pall defines in his patent as natural
hydrophilicity, was .a tremendous advantage over most
known commercial filtration materials which had to be
treated with a surfactant to make them hydrophilic. Such
surfactants invariably contaminated the filtered fluids when
they shed off to one degree or another.
A pliancy of the material produced by Pall process
likewise was important to facilitate handling, including
pleating into high surface area cartridges.
The alcohol-insolubility is important to permit the
~use of nylon membranes with a wide variety of liquids.
Between 1976 and 1977 Dr. Pall developed a
manufacturing process for making commercial quantities of
nylon membrane. On May 15, 1978, Dr. Pall filed a parent
patent application covering the products and the process for
making the nylon membrane. The parent application was
drafted broadly enough to encompass all alcohol-insoluble
nylons which produced hydrophilic, that is, Dr. Pall defines
it, skinless microporous membranes.
48a
At the same time, Dr. Pall prepared and filed a
related application which ultimately matured into United
States Patent 4,340,480, not at issue herein, directed to the
range of nylon which he considered useful for making
liquophilic membranes, that is, those which, though not
wettable by water, were wettable by certain organic liquids.
Reference must now be had to the file wrapper.
My reference is to Page 112 of Exhibit 545, the date of
which I know we discussed in the transcript but I don’t
have it before me right now.
The examiner -- and the principal examiner
throughout was one Frank A. Spear, Jr. -- initially took the
position that Claims 1 through 97, which were the claims in
the initial application, were all subject to certain restrictions
which he listed. In response to his direction that the claims
be restricted, on May 15, 1978, a document entitled
“Amendment” was filed seeking reconsideration of the
requirement for a restriction in which Pall claimed that the
claims of Group Roman numerals I, II and III are drawn to
one indivisible invention based on the process which is
defined in Claims 1 to 31, 56 to 66, 96 and 97. As a result
of this process it has been found possible to prepare a
skinless, hydrophilic, alcohol-insoluble polyamide
membrane, which itself is new and patentable because it
was never before made available, and indeed no process
was known for preparing it. The words skinless,
hydrophilic, alcohol-insoluble are underlined for emphasis.
And, indeed, that is the thrust of the patent applicant, that
he had, and his concern with restriction that what had been
invented here was this skinless, hydrophilic, alcohol-
insoluble polyamide membrane.
Nevertheless, in an action mailed on June 4th, 1979,
Claims | through 86 and 96 and 97 were rejected by the
patent examiner, Claims 87 through 95 having been
withdrawn. The ground of the rejection is significant. The
49a
examiner took issue with the use of the word “hydrophilic”
in the original application, quoting now, quote, because it
has no absolute meaning, close quote. Well, stop the close
quote. Because it has no absolute meaning. It is a relative
term, close quote. In this the examiner was precisely
correct and indeed focused on the point that Dr. Pall, as a
patent applicant, was defining hydrophilic in a manner
somewhat different than it had generally been understood.
Other claims were rejected because the use of the support
for the membrane had already been revealed in the prior art,
including the Marinaccio patent. Claims 3 and 4 were
rejected as unpatentable over Marinaccio with respect to the
manner in which Marinaccio had filtered the casting dope.
Claims 56 through 66 were rejected as unpatentable over
Marinaccio and others on the ground that it was obvious to
use multiple layers in a membrane and that had been shown
in Marinaccio as modified by other patents. Claims 75
through 86 were rejected on the ground that it, that, quote,
it would be obvious to use a solution ready to precipitate in
Marinaccio, close quote, and reference is made to other
patents.
Well, that did not slow Dr. Pall down. He came
back requesting in a document entitled “Amendment” and
in response to the action of June 4, 1979, he states, at
Page 129 of Exhibit 545, that the applicant agrees that the
term hydrophilic is perhaps susceptible of being
misunderstood because it is not precise. And then he goes
on to explain exactly what he means, saying, in relevant
part, on Page 129 of the exhibit, a very high angle of
contact indicates very poor wetting, while a zero angle of
contact defines complete or perfect wetting. While the
polyamide resins from which the membranes of this
invention are made have a high angle of contact and are not
wetted by water, the membranes of the invention have a
substantially zero contact angle because they are readily
50a
wetted by water, and an amendment is made to Claim 27
accordingly.
It’s pointed out that all claims, including the claims
objected to by the examiner, which use the term
hydrophilic have now been further amended so as to
indicate either that the membrane has a substantially zero
angle of contact with water or that the membrane is readily
wetted by water. This defines hydrophilicity in a precise
way and also distinguishes the applicant’s membranes from
the membranes of the prior art. The fact is that the
polyamide resins from which the membranes of this
invention are made have a high angle of contact with water
and are not wetted by water.
At this stage in the application process, Dr. Pall
then goes on, at Page 130, to make the statement, however,
when in dealing with the examiner’s concern as to which
nylons are, and whether particular types of nylons are
critical elements of the process, goes onto say, quote,
However, there is nothing critical in the polyamide resin
apart from its being alcohol-insoluble. The applicant
believes that the invention is applicable to any alcohol-
insoluble polyamide resin, and has said so, not only in the
broad claims but also in the broad statements of the
invention at Pages 15 to 21. Throughout this portion of the
specification, the term “polyamide resin” is used
generically to encompass the entire class of alcohol-
insoluble hydrophobic polyamide resins. The word
hydrophobic is used there, I infer, in the sense of being
opposite to the way Dr. Pall has defined hydrophilic.
And, on Page 131 he says: This being so, and there
being no prior art requiring a narrowing of the claims in
this respect, the applicant proposes to maintain the present
scope of polyamide in the claims.
Well, then on a date that has been discussed in the
transcript, but I can’t figure it out from this particular
5la
exhibit, on Page 165, of Exhibit545, the examiner
nevertheless rejects all the claims and he’s somewhat more,
his rejection is in somewhat more detail.
Now, one of the key elements of Dr. Pall’s claimed
invention is what he calls, and what has been called in this
trial, controlled nucleation. But the examiner, at least at
this stage of the application, rejects the claims, stating that
it would be obvious, putting, aside support now -- strike
that. He rejects them on Page 166, saying it would be
obvious to use the support of Brown and others in
Marinaccio, and by support I infer he means there the
polyester support for the membrane sheet. But now he goes
on, the examiner does, it is submitted that there is some
nucleation in Marinaccio and others. For instance, during
the addition of small amounts of nonsolvent there would
come a time when a small amount of precipitate would
form temporarily and immediately redissolve. In fact, the
applicant’s specification, Pages 43 to 44, suggests there is
some nucleation in Marinaccio. Then, he continues to
believe that it would be obvious to filter the casting dope
and that’s not an advance over Marinaccio. It would be
obvious to use multiple layers. Not an advance over
Marinaccio and others. He makes reference to the Sharp
membrane being hydrophilic in the sense that they have
produced membranes, and so has Marinaccio, which are
“more readily wettable than prior art films.” And he makes
the statement one would obviously expect a very thin, very
porous film to be completely wettable throughout as
claimed. He, the examiner, anyway, obviously didn’t think
there was very much to this invention, at least at this time.
The rejection for multilayers is maintained. And then,
again significantly, the examiner rejects the application,
saying it would be obvious to use a solution ready to
precipitate in Marinaccio as shown by Lovell, and to filter
it as shown by Jamison.
52a
Well, that didn’t stop Pall and his people, either.
And on an examiner interview dated May 2nd, 1980, it’s
indicated that all claims were discussed, Marinaccio,
Brown, Sharp, identified as prior art, and the examiner then
says, he’s received what he terms a, quote, impressive
demonstration, close quote. Examiner, quote, examiner
will consider 132 declarations in detail while reflecting on
the demonstration. Check examples for support of 6-10,
and I can’t make out the next word, but I assume, I infer
that that has to do with -- oh, 6-10 carbon atoms. And then
he quotes, Markush looks promising, close quote.
Now, it appears that they had discussed at this
interview a new approach to defining what it was that’s
claimed. Because in a document entitled “Amendment”
dated May 5, 1980, three days after the interview to which
reference was just had, the initial claim is amended, as
follows. And I'll highlight the amendment. It’s claimed
that, the invention is in Claim 1, a process for preparing
skinless, hydrophilic, alcohol-insoluble polyamide
membranes that are readily wetted by water which
comprises preparing a solution of an alcohol-insoluble
polyamide resin, and now I’m adding the amendment,
selected form the group consisting of polyhexamethylene
adipamide, polyhexamethylene sebacate, and poly-e-
caprolactam -- that’s the addition -- in a polyamide and
then add the word resin solvent, inducing nucleation of the
solution by controlled addition to the solution of a
nonsolvent for the polyamide resin, et cetera. And these
same limitations, selected for the group that I just read,
follow on. Then in the remarks section, reading from
Page 178 of Trial Exhibit 545, it is stated that: As
indicated at the interview, Claims 1, 32, 56, 67, 75,
although not rejected on the grounds of undue breadth, are
amended because on the basis of research done since this
application was filed, the applicant now considers that the
53a
process described and claimed herein is actually applicable
only to polyamide resins which are polymers of
hexamethylene diamine and aliphatic saturated dicarboxylic
acids having from six to ten carbon atoms. As indicated at
Page 22, Lines 12 to 14, the preferred polyamide resins
now recited in these claims in a Markush group are
polyhexamethylene adipamide, Nylon 66, poly-e-
caprolactam, Nylon 6, and polyhexamethylene sebacamide,
Nylon 610. These embrace the limits of the class of
saturated aliphatic dicarboxylic acids having from six
adipic to ten sebacic carbon atoms.
Then, with respect to the rejection for, with
reference to nucleation in the Marinaccio patent, over on
Page 213, the applicant states, omitting -- well, no, I won’t
omit anything. These claims, Claims 75 to 86, the
reference is to, are directed to a casting resin solution for
forming hydrophilic skinless microporous polyamide
membranes that have a visible precipitate of polyamide
resin formed during the addition of the nonsolvent, and that
is nucleated by virtue of the addition of the nonsolvent
under controlled conditions of solvent, of nonsolvent, and
of resin concentration, temperature, mixing intensity,
addition time, and system geometry, resulting in this visible
precipitate. This rejection is accordingly answered by the
discussion above of the phenomenon of nucleation vis-a-vis
the disclosure of the Marinaccio patent in connection with
the rejection of Claim 1 on Marinaccio. The Marinaccio
disclosure clearly teaches one not, underline the not, to use
a solution which contains a visible precipitate. The
solution with nonsolvent cannot proceed this far, but only
up to the point of incipient precipitation of the nylon. This
is before a visible precipitate is formed, not after. Note
Column 6, Line 6 to 9 of the reference. Thus, to use a_
solution that contains a visible precipitate is to proceed
contrary to the Marinaccio disclosure as noted above.
54a
Now, there matters stood until a continuation-in-
part was filed on a date I can’t quite figure out, but I’m sure
it’s not in dispute and you can supply it. And in the
continuation-in-part the full abstract of the disclosure is
discussed. My reference now is to trial Exhibit 544 of the
continuing application. Oh, here it is. Filed October 20,
1980. So the last reference I had was in May, now here in
October the continuation is filed. And the continuation-in-
part now goes on to define the invention, or redefine it, get
at it in a different way, by what we have called in this
litigation the ratio claims. And I read from Page 123 of
Exhibit 544.
The application Serial No. 905,698, has been refiled
to provide basis for a narrow subclass of polyamide resins
disclosed in Serial No. 905,698 that forms such skinless
hydrophilic membranes. All members of this class have a
ratio CH2 to NHCO of methylene, CH2 to amide NHCO
groups within the range from about five to one to about
seven to one, including polyhexamethylene adipamide,
Nylon 66, poly-e-caprolacatam, Nylon 6,
polyhexametehylene sebacamide, Nylon610, poly-7-
aminoheptanoamide, Nylon 7, polyhexamethylene
azeleamide, Nylon 69, and mixtures of two or more thereof,
as well as mixtures thereof with higher polyamide
homologues such as polyhexamethylene dodecandiamide,
Nylon 612, in portions such that the mixture has an average
of CH2 to NHCO ratio within the stated range. The first
three polyamides, Nylon 66, Nylon 6 and Nylon 610, are
preferred.
The other polyamides disclosed in _ Serial
No. 905,698 have been found not to form hydrophilic
skinless membranes. Such of them, those that have a ratio
CH2 to NHCO of methylene CH2 to amide NHCO groups
within the range from about seven to one to about twelve to
55a
one, form skinless liquophilic hydrophilic membranes. The
others form hydrophobic skinned membranes.
Now, then, on August24, 1981, the examiner
allows Claims 1 through 76, 111 through 115; rejects
claims 77 through 110, 116 through 172. He makes the
following note at Page 168: The broadly recited amide
having the claimed ratio of CH2 to NHCO groups in
unwarranted in view of the disclosure. The various
mixtures in that range are particularly unsupported. Only
one mixture appears in the examples, Exhibit 68. Most of
the examples involve only Nylon 66. The interview of the,
the summary record of the examiner interview shows that
all the rejected claims were discussed, that there was no
rejection based on prior art, and then he says amide looks
promising. No strike that. Amendment looks promising.
Discussed three options. All would clear up Claim 87.
And the amendment to which exhibit, to which reference is
made is the amendment that follows on Page 172, and the
most significant language therein is under remarks and it
reads, as follows. Well, I’m going to save time by not
reading it but simply by inserting in the opinion the last
three liens of Page 173 down through the entire Page 174.
The patent issues on July 20, 1982.
And I think this is a good time to take a recess and
we’ll recess for about, we'll recess until 11:30, and we'll go
on until 1:00 if I’m not done prior to 1:00. We'll recess.
(Recess.)
THE COURT: Now, at this juncture it’s helpful to
put these matters in some perspective.
Polymeric membranes are thin, sheet like materials
with very small interconnected pores. The pores usually
range in size from about one-tenth of a micron to ten
microns. The members are made from a chemical material
that has many thousands of repeating units, a polymer.
56a
There are many such materials, many methods for making
them into membranes, and many uses for such membranes.
Polymeric membranes, in the strictest sense of the
word, may be fibrous or non-fibrous. Usually, however,
when the term polymeric membrane is employed, the non-
fibrous type is meant. Non-fibrous membranes are usually
made directly from a solution or melt of the polymer.
Fibrous polymeric membranes are made by first converting
the polymer into fibers, and then making a thin web from
those fibers. Potassium titanate is a good example of a
fibrous polymeric membrane.
Prior to the development of the Pall nylon
membrane, fibrous filter media, made, for example, from
potassium titanate or asbestos, were commonly employed
as filtration medium. At the present time, the two most
commonly used microfiltration membranes are Pall’s nylon
membrane and Millipore’s PVDF membrane, both made
from non-fibrous polymers. They are employed mainly in
the filtration of liquids to remove very small particles,
including bacteria, a process known as microfiltration.
Depending upon their use, polymeric membranes
may have a skin on them, or they may be without a skin.
Certain processes, reverse osmosis, for example, require the
presence of a continuous~skin, while in other processes
microfiltration, for example, the complete absence of any
skin is necessary. ;
Microfiltration is one of the most common
applications for polymeric membranes at this time. It is,
however, by no means the only application. Membranes
are also used in reverse osmosis, electrophoresis, dialysis,
electrodialysis, gas separation, and immobilization and
transfer of substances.
Microfiltration is the regime with pores between
about one-tenth of a micron and 10 microns. The most
important pore size is .2 microns because this is the largest
ania RR” RRR aa be
aT «ia ai
57a
pore and hence gives the highest flow rates and throughputs
consistent with the retention of the approximately .3 micron
Pseudomonas diminutia bacteria which is the criterion for
sterilizing pore size rating. | Today microfiltration
membranes are skinless and macrovoid-free and have a
narrow pore size distribution which maximize their
efficiency at removing bacteria, and other particulate matter
of equivalent size, from fluids.
I’m going to amend that sentence simply to add the
words commercially acceptable today microfiltration
membranes, and then the rest of the sentence.
Other uses for microfiltration membranes are now
found more and more in the biotechnology area. Polymeric
membranes are there employed, for example, to hold
certain substances such as antibodies, antigens or other
proteins while blood or other body fluids are passed
through the membrane.
Over the years, many different polymers have been
investigated as possible membrane media in a number of
different applications. By the late 1970’s, the list included
the following, without any attempt to be exhaustive, and
here I’m inserting Page7 of the direct testimony of
Dr. Kesting.
By 1978, many methods had been investigated for
making the polymers mentioned above, and many other
polymers not here mentioned in porous membranes. They
included: casting membranes from a melt of the polymer,
casting from a polymer solution into an evaporative
atmosphere; casting from a polymer solution into a
nonsolvent liquid; stretching semi-crystalline films; thermal
gelling by decreasing the temperature of the polymer
solution; inducing porosity by irradiation of polyester
and/or polycarbonate films, binding the polymer into a thin
sheet structure by sintering.
58a
In 1978, the leading manufacturers of
microfiltration media were Pall with its fibrous potassium
titanate product, and Millipore with its membrane made of
a mixture of cellulose nitrate and cellulose acetate. Several
other membrane products were on the market, but none had
any significant market share. Most, if not all, of the
polymeric non-fibrous membranes were made by a process
that involved casting from a solution following by
evaporation or quenching in a liquid.
Pre-1978 filter media, fibrous and non-fibrous,
suffered from one or another of a number of deficiencies, as
follows: Brittleness. Unless highly plasticized, they could
not be pleated and incorporated into a cartridge.
Marginal Thermal Stability. The membrane shrank
excessively while being sterilized with steam.
High Extractables. The surfactants employed to
render the membranes hydrophilic so that they could be
used with aqueous fluids and plasticizers required to permit
the membranes to be made into useful products leached out
of the membrane while in use.
Poor Solvent Resistance. The membranes softened
or dissolved when used in certain solvents.
Limited Flowrate. The amount of liquid per unit
time capable of flowing across the membranes was limited.
Limited Throughput. The membranes clogged
easily and thus had to be exchanged frequently.
Limited Sterilizing Ability. The membranes could
not consistently produce bacteria-free fluids.
Poor Dimensional Stability. The membranes
swelled in water.
Danger of Fiber Sloughing into the Permeate.
Unless specially treated, fibrous materials tend to slough
off fibers into the permeate.
By 1978, the industry had recognized the
desirability for a new type of membrane and had pursued
59a
many avenues of reaching that goal. All such attempts had
failed.
Dr. Pall invented the first naturally and
instantaneously wettable, completely skinless, and alcohol-
insoluble polymeric membrane and a process for making it.
The membrane was suitable for service in severe solvent
environments and for sterile filtration. It was strong and
pleatable so that within plasticizers it could be made into a
cartridge. It met all of the criteria the industry had long
sought. And remarkably, it was made of nylon, a material
that had been investigated several times before without
success.
The process invented by Dr. Pall, and described in
his patent,’ to prepare the membrane involved the
preparation of a precisely nucleated casting solution made
up of solvent, nonsolvent and nylon, casting that solution
into a film and quenching the film in a bath containing
solvent and nonsolvent. While it had been know to prepare
membranes by casting solutions of polymers, the step of
precisely controlling the nucleation of the solution prior to
casting thereby to achieve certain properties such as
particular pore sizes, or skinlessness, was altogether new
and represented a breakthrough in the art.
Dr. Pall was the first to recognize the connection
between true skinlessness, pore size distribution, and the
titre reduction of bacteria passage. This is now recognized
to be one of the main advantages of skinlessness in
microfiltration membranes. Prior to Dr. Pall’s invention, a
titre reduction of 7 was the standard, and few besides
Dr. Pall strove to increase the titre reduction. Millipore, for
example, spoke in terms of such erroneous concepts as
absolute retention and pore sizes of .22 microns.
Clearly the understanding of microfiltration at that
time was vastly less sophisticated than it is now. The
efforts of Dr. Pall and his colleagues were of great
60a
importance to the theoretical aspects of microfiltration and
helped moved microfiltration from an art to a science.
Pall’s papers described the first studies which addressed the | §
theory of microfiltration in a thoroughly scientific and at | 4
the same time practical manner. Pall and his associates )
were pioneers both in the invention, development and
commercialization of functional nylon microfiltration
membranes and in the theory of microfiltration. Such
practices as the determination of the KL curve rather than
the bubble point as an integrity test were introduced by
Pall.
To a person of ordinary skill in the art, setting out in
1974 to development a new polymeric membrane free of all
the then-existing disadvantages, there was little guidance as
to what polymers and that methods for membrane
formation should be pursued. A great number of polymers
and casting methods had been tried without success. Such
a person faced initially two broad choices:
Either improve the properties of the conventional
membrane polymers especially those of the cellulosics and
mixed cellulosics. This approach was a good one in that
the materials were already accepted by the market place and
the processing characteristics of these materials was well
‘ understood.
The other general approach was to look to polymers
other than cellulocics which had intrinsic properties
superior to those of the cellulosics. It was a reasonable
assumption -- but by no means a certainty -- that superior
bulk polymer property could be transferred at least in part 4
to the high porosity, high surface area bodies which
constitute microfiltration membranes.
A worker skilled in the field in 1974 could not have
predicted what processing steps would be required to
achieve the Pall membrane, or even how the various
required processing steps would affect the starting material.
™
6la
The controlled nucleation in the Pall process is
critically important to the pore size and pore size
distribution of the resultant membranes. The composition
of the gel bath will determine the rate of gelation and the
presence or absence of skinning which in turn can influence
wettability as much as the intrinsic polarity of the nylon
material itself.
In the Pall process, the rate of nucleation and of
crystallite growth is precisely regulated. The end effect is
to provide for sufficient surface area and hence non-
polymer-to-polymer-hydrogen-bonded amorphous amide
(CONH) groups which are free to hydrogen-bond with
water molecules and hence render the membrane
instantaneously wettable. The restraint of the membrane
during drying ensures that the pores remain open and the
concentration of non-polymer-to-polymer-hydrogen-
bonded to amorphous amide groups remains high enough to
ensure spontaneous wetting.
Nylon was not considered as a candidate by most
membranologists in the mid 1970’s for a number of
reasons. Nylon 6,6 was known to be very sensitive to
oxidation by, for example, sodium hypochlorite (chlorine)
solutions.. Since most membranologists entered the
microfiltration membrane field via reversion osmosis where
chlorine resistance was an important desideratum, it tended
to be dismissed out of hand. The fact that chlorine was not
typically encountered in microfiltration was not considered.
Nylon 6, 6 was known to be somewhat polar, but many
indices suggested that it was less so than the cellulosics
which did yield spontaneously wettable membranes without
surfactants. There was little understanding of how to
control the dope formulating, casting and quenching
processes for nylon membranes.
Marinaccio, of course, was one of the individuals
who appreciated at least in part the potentiality of nylon as
62a
a use, aS a membrane product. Marinaccio’s patent was
known after 1975 and it was also known there was no
corresponding commercial microfiltration product. It was,
therefore, concluded that Nylon 6, the Marinaccio referred
embodiment, was, for some unknown reason, not an
adequate membrane polymer.
The very poor quality of the Marinaccio disclosure
and the inclusion therein of polystyrene, a substance which
may have led him down the right track but for which no
membrane could possibly ultimately be constructed,
suggested that the Marinaccio patent was simply a closeout
of a failed product.
Formic acid is not a pleasant casting solvent. It has
a highly acrid odor and is corrosive. It also leads to
scarring of skin tissue and, therefore, must be handled
carefully. At that time, more innocuous solvents such as
acetone were employed.
There was no way a worker in the field in 1974 or
later -- well, I'll say 1974. Strike that. -- could have
predicted the properties of the final membrane product,
particularly its natural and instantaneous wettability and the
absence of any skinning.
The hydrohilicity of the Pall patent, defined as the
. complete and very rapid penetration of water to the entire
thickness of the membrane, is a property of great
importance to the membrane user because the membrane
filtration system must be subjected to an integrity test,
either a KL or bubble point test, prior to filtration to
guarantee the sterility of the filtrate. The presence of even
a single small unwetted portion of the membrane will
permit the flow of air through this demain, and lower the
apparent KL curve or bubble point of the membrane
element. Thus a membrane with an actual bubble point of
50 psi, which would suffice for sterile filtration, may only
exhibit a value of 30 psi, which is inadequate for sterile
i
63a
filtration. The user would have no choice but to dissemble
his filtration system and replace the membranes or
membrane cartridge. This would have adverse economic
consequences to the user - labor, cartridge replacement,
cost, and to the membrane producer - loss of credibility.
Therefore, instantaneous and complete membrane
wettability is a practical product property necessity. It is
also essential that wettability be a permanent property
which will not change with the storage time at ambient
conditions, temperature and relative humidity within the
range normally encountered during storage and transport.
It was not possible in 1978, or even in 1989 for that
matter, to predict wettability of a nylon microfiltration
membrane of a given pore size from its intrinsic properties.
Any prediction of complete wettability within one
second through the, or two seconds through the entire
thickness of a porouc membrane is impossible by
extrapolation from the bulk properties of nylon polymers.
The presence of skinning on microfiltration
membrane greatly reduces the concentration of accessible
surface area and hence the concentration of accessible
CONH groups. This in turn retards spontaneous and instant
wettability.
The microporous filtration industry reacted very
favorably to the claims of the Pall patent and its
commercial application since wettability with no
surfactants was an extraordinarily desirable result.
Scientists in the area, however, continue to express doubt
that Nylon 66 could be used to form a sufficiently
hydrophilic membrane to be spontaneously wettable in the
membrane form without a surfactant. This is an example of
the advance of the Pall patent over the prior art.
The nylon membranes covered by the Pall patent
have numerous applications, primarily in filtration and as
‘mmobilization media in biotechnological applications. To
64a
date, Pall alone has sold about $400 million worth of its
nylon membrane products in the aggregate.
Typical filtration applications include use by
pharmaceutical companies to assure that drugs, that the
drugs they make are free of bacteria contamination, use by
electronic companies which require highly purified water
for chip manufacture, and use by hospitals to assure that the
fluids administered to patients are free from bacteria and
other contaminants. Typical biotechnological applications
include use in diagnostics to detect the presence of
antibodies and the so-called transfer membranes for
identification of genetic characteristics.
In 1978 Pall, at a time following the initial filing of
its patent application, but prior to the filing of its
continuation-in-part, Pall sold its membrane product
commercially. It is claimed that this commercial sale of the
membrane product produced by the process for which Pall
later was issued a patent is an anticipation violative of
Section 102(b) in that the ratio claims of the patent added in
the continuation-in-part are not entitled to the filing date of
the parent application and, therefore, are invalid under
Section 102(b) due to Pall’s earlier sales of nylon
membranes.
MSI, to support that conclusion, must prove by
clear and convincing evidence that the ratio claims are not
entitled to the filing date of the parent application. Ralston
Purina Company v. Far-Mar-Co., Inc., 772 F.2d, 1579,
1573, 74, Federal Circuit (1985). The ratio claims are
entitled to the filing date of the parent application under
35 U.S.C., Section 120 if the disclosure of the parent
application complies with the enablement description and
best mode requirements of Section 112. Compliance with
the best mode enablement requirements are not contested in
this case. The description requirement is met if the
disclosure of the parent application would have reasonably
65a
conveyed to one of ordinary skill that Dr. Pall had invented
the subject matter of the ratio claims when he filed the
patent. In re Smith, 481 F.2d 910-914, Court of Claims and
Patent Appeals (1973). The methylene to amide ratio was
well-recognized as an inherent property of nylons at the
time of the original application in 1978. Accordingly, the
Court finds that the methylene to amide ratio was impliedly
disclosed in the parent application and the addition of the
express language in the continuation-in-part application did
not constitute new matter. Since the ratio claims recite an
inherent property of the group of nylons disclosed and
claimed in the parent application, for use in membrane
manufacture, the description requirement is satisfied.
Kennecott Corporation v. Kyocera International, Inc.,
835 F.2d 1419, 1421-23, Fed. Cir. (1987), cert. denied 446
U.S. 1008 (1988).
Accordingly, MSI has failed to prove by clear and
convincing evidence that the ration claims are not entitled
to the filing date of the parent application, and since the
filing date of the parent applicaticn is prior to the alleged
invalidating sales of membranes the assertion of invalidity
under Section 102(b) fails.
I’ve already spoken about the prior invention
disclosure under 102(g). Let’s talk about the anticipation
of the Pall patent by Marinaccio.
In order for a prior art reference to anticipate a
claim of the Pall patent, two conditions must be met. First,
all of the elements that claim must be found either
expressly or inherently in that single reference. Second,
that single reference must enable one skilled in the art to
practice the claimed invention without undue
experimentation. Akzo v. United States International Trade
Commission, 808 F.2d 1471, 1479, Federal Circuit (1986),
cert. denied, 482 U.S. 909 (1987).
66a
For a process to anticipate a product the process
must consistently reproduce the product. W.L. Gore and
Associates, Incorporated v. Garlock 842 F.2d 1275. Strike
that. W.L. Gore and Associates, Incorporated v. Garlock,
Incorporated, 721 F.2d 1540, at 1554, Federal Circuit
(1983), cert. denied, 469 U.S. 851 (1984).
In this case, the Court finds that the Marinaccio
patent, though certainly an advance, fails to disclose to one
skilled in the art all of the elements of any of the claims at
issue in the Pall patent. More specifically, it fails to
disclose in a manner which would allow a person skilled in
the art to practice the aspects of controlled nucleation, the
concern over temperature, the concern over skinlessness,
the inherent wettability, and therefore the Court rules that
the Marinaccio patent is not an anticipatory reference such
as to invalidate the Pall patent. United States v. Adams,
388 U.S. 39, at 50 (1966).
Moreover, the Marinaccio patent is silent with
respect to what, if anything, happens to a product made in
accordance with its processes when heated to a temperature
just below the softening temperature of the product. The
work that Dr. Johnson did on Nylon 66 while at Millipore, I
am not convinced that there was any public disclosure
thereof or commercial embodiment thereof, or that in fact
there was an invention which would anticipate the Pall
patent.
MSI claims that the Pall patent failed because it is
obvious. The issue with respect to obviousness is whether
MSI has established by clear and convincing evidence that
the differences in the asserted claims of the Pall patent over
the prior art would have been obvious to a person of
ordinary skill in the art when Dr. Pall made his invention
embodied in those ciaims. 35U.S.C., Section 103.
Obviousness is a question of law. It’s based on factual
67a
inquiries and factual evidence. Graham v. John Deere
Company, 383 U.S. 1, at 17 (1966).
The issue of obviousness requires inquiry into the
following areas: the scope and content of the prior art; the
differences between the prior art and the patent claims at
issue; the level of ordinary skill in the art at the time the
invention was made; and objective evidence that may
indicate obviousness or non-obviousness. Graham,
383 U.S. at 17-18.
The issue of obviousness is determined entirely
with reference to a hypothetical person having ordinary
skill in the art. Standard Oil Co. v. American Cyanamid
Co., 774 F.2d 448, 454, Federal Circuit (1985).
Factors that may be considered in determining the
level of ordinary skill and the pertinent art include: the
educational level of the inventor; types of problems
encountered in the art; prior art solutions to these problems;
the rapidity with which innovations are made; the
sophistication of the technology; and the educational level
of active workers in the field.
Environmental Designs Limited v. Union Oil
Company 713 F.2d 693, 696, 697, Federal Circuit (1983),
cert. denied, 464 U.S. 1043 (1984).
A person of ordinary skill is presumed to be one
who thinks along the line of conventional wisdom in the art
and is not one who undertakes to innovate. Standard Oil,
supra, at 454.
The Court has made the findings relevant on this
issue with the exception of objective evidence of non-
obviousness and objective evidence of non-obviousness
may well be the most pertinent probative and revealing
evidence available to aid in reaching a conclusion with
respect to this issue. Demaco Corporation v. F. Von
Langsdorff Licensing Limited, 851 F.2d 1387, 1391-92,
Federal Circuit, cert. denied, 488 U.S. 956 (1988).
68a
Both the Pall and the MSI product literature
emphasize the sales of nylon membranes by both of them,
MSI having some $17 million worth of such sales, are
directly attributable to the advantages offered by the
invention of the Pall patent, including its natural
vettability, uniform porosity and skinlessness. MSI indeed
considered Pall’s nylon membrane to be revolutionary in
the art. MSI's marketing information characterized its
Nylon 66 product as, quote, the first innovative product to
be introduced to this market in 20 years. The nylon
membrane has no extractables because of its natural
wettability and is virtually indestructible, close quote. The
introduction of nylon membrane permitted Pall to surpass
Millipore as the leader in microfiltration membranes. The
industry was surprised by Pall’s introduction of a skinless
nylon membrane which was naturally wettable without the
presence of surfactants because others had failed to achieve
such a membrane. The introduction of Pall’s nylon
membrane represented a major breakthrough in the
filtration industry. As recited above, AMF/C had
abandoned its nylon membrane project because of te¢hnical
problems. Other investigators and scientists in field,
including Dr. Kesting, were surprised by Pall’s introduction
of nylon membrane because they had been unsuccessfully
trying to obtain a membrane that was naturally wettable
without the presence of surfactants for many years.
Commercial success is a strong factor favoring
non-obviousness. Akzo, 808 F.2d, supra, at 1481. MSI
has failed to prove by fair and clear and convincing
evidence that any of the claims in issue in the Pall patent
would have been obvious in light of the prior art.
It's claimed that the Pall patent is not sufficiently
definite. Of course, it's unquestioned that in accordance
with 35 U.S.C., Section 282 the Pall patent is presumed
69a
valid. Roper Corporation v. Litton Systems, Incorporated,
757 F.2d 1266, 1270, Federal Circuit (1985.)
MSI has the burden of proving all of its allegations
of invalidity and unenforceability by clear and convincing
evidence. American Hoist and Derrick Company v. Sowa
and Sons, Incorporated, 725 F.2d, 1350, 1358, 1360,
Federal Circuit (1984), cert. denied, 469 U.S. 821 (1984).
The clear and convincing evidence standard is one
that has received a great degree of criticism in the law
generally. This Court has heard it referred to by an
appellate court as well, it's a fe preponderance of the
evidence standard, but we mean it. The Federal Circuit
does somewhat, is sornewhat more precise and defines clear
and convincing evidence in Buildex, Incorporation Vv.
Kason Industries, Incorporated 849 F.2d, 1461 at 1463,
Fed. Circuit (1988) as an abiding conviction that the truth
of the factual assertions are highly probable.
Here, to the extent MSI relies upon prior art that has
previously been considered by the patent office during the
prosecution of the patent application, MSI's burden of
proving invalidity is especially heavy. Polaroid
Corporation v. Eastman Kodak Company, 789 F.2d, 1556,
1560 Federal Cireuit, cert. denied, 479 U.S. 850 (1986).
Now with respect to the definiteness of the Pall
patent. What's required are claims which, when read in
light of the specifications, reasonably apprise those skilled
in the art both of the utilization and scope of the invention
and are as precise as the subject matter permits. Such
claims are not indefinite. Hybritech, Incorporated v.
Monoclonal Antibodies, Incorporated 802 F. 2d 1367,
1384, 1385, Federal Circuit (1986), cert. denied, 480 U.S.
947 (1987).
I mentioned above that there are many cases that
confirm that every patentee may be his own lexicographer
citing W.L. Gore Associates, supra, at 1569. This means
70a
that a patentee can choose his own terms and vse them as
he wishes so long as he remains consistent in their use and
makes their meaning reasonabiy clear. Ellipse Corporation
v. Ford Motor Company, 452 F.2d 163, 171, Seventh
Circuit (1971), cert. denied, 406 U.S. 948 (1972).
With respect to the challenges raised in this case,
the use of the terms about, hydrophilic and skiniess does
not impart invalidity to the claims of the patent but the
meaning of those terms is to be considered in determining
infringement. Andrew Corporation v. Gabriel Electronics,
Incorporated, 847 F.2d 819, 821, 822, Federal Circuit, cert.
denied, 488 U.S. 927 (1988).
Now, I think that takes care of the defenses. What |
said about the, that there was no new matter in the
continuation-in-part means that the claims of fraud on the
paient office is inappropriate and that claim falls, a matter
which was decided earlier in the lawsuit but which I've now
explained.
Likewise, the Court finds that the Pall patent is
adequately definite; that it is not anticipated by virtue of its
own 1978 commercialization of its nylon membrane; the
Marinaccio patent does not anticipate the Pall patent; the
Pall patent is not obvious when tested against the
AMF/Cuno nylon membrane project which was terminated
with no disclosure or benefit to the public, or when tested
with respect to the Millipore Nylon 66 project which is
likewise of, had no disclosure or benefit to the public.
The prior art that was known, the Pall patent was
not obvious in light of that prior art, and I have detailed the
level of skill in the prior art, the commercial success of the
Pall patent, the surprise and recognition of the industry, and
failure by others.
So let's come to the issue of infringement. And
with respect to infringement the first finding, the first series
of findings relate only to the process insofar as it results in
Via
MSI products made, sales of microporous membrane made
by MSI from Nylon 66. And I'll incorporate in the opinion
the specific parallel claims set out in the requested findings
of fact as found in the Pall patent on Pages 6, 7, 8, 9 and
requested finding of fact 22 in Pall’s proposed findings of
fact filed on May 15, 1991 without reciting them here.
Now, all of this is with respect to Nylon 66 only.
Now, I've mentioned the definition of hydrophilicity as that
term is used in the Pall patent. Under that term, MSI's
Nylon 66 membranes are hydrophilic as matter of fact. The
matter of skinlessness is a matter of significant import here.
If you look in the naked eye at the Pall membrane and the
MSI membrane they look and feel identical. If, however,
you blow the -- I guess that's -- I'll strike that. You're not
blowing it up. If you magnify the cross-sectional view of a
Pall membrane and an MSI membrane, or you magnify a
top down or bottom up view of both those membranes,
thousands of times by a scanning electron microscope, they
look substantially different. And if you look at the Pall
membrane it seems clear to this Court that under a
magnification of thousands of times under a scanning
electron microscope the, at least one surface of the MSI
membrane frequently has, has, when compared to the
interior of that membrane, a surface where the pore size
looks significantly different. And I don't intend to strain at
the point. As one would commonly understand the term, if
you look at MSI membranes they look like they have a
skin, or a lot of them look like they have a skin, if skin is 4,
as one takes the analogy from the epidermis of the human
body, a coating that is of substantially, what appears to be
substantially less porosity than the interior.
Now, one would have to sneeze at the, at the
obvious photographic evidence to say that at 2,000, 5,000,
10,000 times magnification the MSI membranes look like
the Pall membranes. They don't. What's more, in the
72a
interior of the MSI membranes, there are voids, what
appear to be bubbles. And sometimes these appear on the
surface. Sometimes the, a bubble captured on the surface
has a, in a membrane that is supposedly rated .2 microns
voids, if you will, that are as big as ten microns, I think the
transcript will support. So they look different.
And as the term is colloquially used, they look
skinned. However, the definition of skinlessness as used in
the Pall patent is one which does not depend on visual
inspection, although scanning electron microscope
examples of a Pall membrane are included in the Pall
patent. The definition, rather, depends upon the
characteristics. And skinlessness is defined -- well, I take
that back. In part, it does depend on how it looks; that is, in
part it's defined as having pores which are substantially
uniform in size and shape. And then in part skinlessness is
defined as the characteristics which allows the passage of
water through the membrane in specific fashion as
measured by the KL curve, all, in my judgment, adequately
defined in the patent.
Now, in this case Pall contends that the actual
functioning of the MSI membrane is the same as the Pall
membrane. And at least insofar as that functioning helps
. define skinlessness, I find that Pall's correct. The KL
curves of the MSI membranes tested, I find, under adequate
and standard scientific fashion, are so sufficiently similar
that the KL curves of the Pall membrane, especially those
portions of the curve that show that the pressure is flat or
some substantially increase in pressure and then abruptly,
abruptly curves upward rather than a gradual curve upward,
which is explained by the fact that the pores of the
membrane itself, that is, the through pores, the pores that go
from one side of the membrane to the other, are all
substantially the same size. I find that these membranes, as
so defined in light of their characteristics, the MSI
73a
membranes are skinless. It does appear that the art as
practiced by MSI is less perfect that Pall, but an infringer
cannot take refuge in the fact that he has a sloppy product.
This sloppiness, after all, is visible only to one who has a
scanning electron microscope which he can turn up to a
thousand time magnification. The MSI product serves the
same goal, serves it in the same way, and in fact, as the
language is used in the Pall patent, it infringes it. It's
skinless. But there's no doubt that it looks different.
With respect to the Pall patent itself, references to
skinlessness which are significant here, skin is mentioned
‘n Column 2 at Lines 10 through 24 and the skin that it's
suggested you're trying to avoid is an exceedingly thin but
relatively dense barrier layer, or, quote, skin, close quote,
from about one-tenth to five microns thickness of a
micropor
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