Inventor's Failure to Understand Claim Term Does Not Invalidate Claim
December 21, 2001
Last Month at the Federal Circuit - January 2002
Judges: Rader (author), Newman, and Bryson
In LNP Engineering Plastics, Inc. v. Miller Waste Mills, Inc., No. 00-1501 (Fed. Cir. Dec. 21, 2001), the Federal Circuit affirmed several findings of JMOL concerning infringement, willfulness, and inequitable conduct, and reversed one finding on JMOL concerning validity of a patent.
LNP Engineering Plastics, Inc. ("LNP") owns U.S. Patent Nos. 5,019,450 ("the '450 patent") and 5,213,889 ("the '889 patent"). The patents relate to plastic products produced with long fiber reinforced thermoplastics ("LFRTs"). Three inventors at Imperial Chemical Industries, PLC ("ICI") discovered that the use of lower molecular weight thermoplastics produces a less viscous melt bath and better wetting of fibers for plastics. Their techniques lead to more flexible and stronger LFRTs. The inventors initially applied for a patent in 1983, which issued as U.S. Patent No. 4,559,262 ("the '262 patent"), and assigned their rights to the invention to ICI. In 1989, ICI filed a continuation of the '262 patent, which issued as the '450 patent. The '889 patent issued out of the same family of patents in 1993.
In 1991, ICI granted Kawasaki Chemical Holding Company, Inc. ("Kawasaki") a license to the '262 and '450 patents. Kawasaki then granted LNP a license to these patents. In 1995, ICI assigned its interest in all three patents to Kawasaki. Kawasaki then requested a reexamination of the '450 and '889 patents. The reexamination was granted in 1996.
In September 1996, LNP sued RTP Company ("RTP") for infringement of all three patents. After a nine-day trial, the jury returned its verdict. A year later, the district court reversed the jury's verdict, determining that: (1) RTP's accused products infringe the '450 and '889 patents; (2) claim 1 of the '889 patent is not invalid for obviousness; (3) the asserted claims are not invalid for indefiniteness; and (4) claim 1 of the '889 patent is invalid for failure to meet the written description requirement.
Thereafter, a jury found that RTP did not willfully infringe, and the district court rejected RTP's inequitable-conduct defense.
Initially, the Federal Circuit reviewed certain claim-construction issues and, after affirming the district court's construction, affirmed the finding of infringement since the record (1) contained substantial evidence to support the finding and no evidence to the contrary to support RTP's position based on the improper claim construction; and (2) contained substantial evidence to support a finding of infringement based on the proper claim construction.
Concerning invalidity, the Federal Circuit reviewed the prior art and determined that certain processes disclosed in the prior art would have motivated one of ordinary skill in the art to use those processes in a normal operation to create the claimed product. Thus, the claimed products were obvious over the disclosed processes. The Court concluded that the record provided substantial evidence to support the jury's finding that claim 1 of the '889 patent was obvious over the prior art.
Concerning indefiniteness of the claims, one of the inventors had testified that he did not know what the phrase "substantially completely wetted" meant. The Federal Circuit agreed with the district court, however, that an inventor's inability to understand this claim phrase does not automatically mean that the claim is indefinite. The Court concluded that the full disclosure of the patent and testimony by other parties and experts sufficiently informed one of ordinary skill in the art as to the bounds of the claims such that they were not indefinite.
Concerning willful infringement, RTP relied on opinions of counsel obtained in 1994, two years after the alleged notice of potential infringement. On appeal, LNP asserted that opinions of counsel obtained two years after such notice are insufficient to rebut an accusation of willful infringement and are therefore inadmissible. The Federal Circuit rejected this argument because LNP did not make it at the district court level, and, in fact, LNP had moved the opinion letters into evidence itself.
Finally, the Court refused to disturb the district court's finding of no inequitable conduct. The prosecuting attorney had received a Japanese publication in a related Japanese application. He had a portion of the Japanese publication translated and determined that it was merely cumulative of other prior art before the PTO. Thus, he did not submit it. Although the Federal Circuit agreed with the district court's determination that the omitted prior art was material and noncumulative, it refused to reevaluate the district court's assessment of the prosecuting attorney's credibility and motives from the trial. Thus, the Court found no clear error with the district court's finding of no intent to deceive the PTO.