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Failure to Disclose a Full Translation of a Material Reference Did Not Show Deceptive Intent

05-1359
March 23, 2006

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Last Month at the Federal Circuit - April 2006

Judges: Lourie (author), Rader, Dyk

In Atofina v. Great Lakes Chemical Corp., No. 05-1359 (Fed. Cir. Mar. 23, 2006), the Federal Circuit affirmed the district court’s construction of the term “chromium catalyst” and its finding of noninfringement, but reversed the court’s holdings of patent invalidity and unenforceability. Atofina owns U.S. Patent No. 5,900,514 (“the ’514 patent”) directed to a method of synthesizing difluoromethane (CH2F2) in the presence of a chromium (Cr) catalyst. Claim 1 requires that the process be conducted in the presence of an oxygen to methylene chloride molar ratio of 0.1 percent to 5 percent, at a temperature of between 330 and 450°C with a “bulk or supported chromium catalyst.”

After a bench trial, the district court construed the claims of the ’514 patent. Most notably, it construed “chromium catalyst” as a catalyst where the only catalytically active material is chromium without the addition of metal oxides or noninert additives. On appeal, the Federal Circuit agreed with this construction, relying on the specification, the prosecution history, and technical dictionaries. The Court gave particular weight to Atofina’s arguments over the asserted prior art in the prosecution history. Specifically, Atofina argued that its invention excluded the utilization of a combination catalyst, and that it was critical to use the chromium catalyst “alone rather than in combination with other metal components.” These arguments led the Court to conclude that Atofina disclaimed coverage of metal oxides and noninert additives. As such, the Court agreed that Great Lakes Chemical Corporation’s (“Great Lakes”) process, which included a noninert additive, did not literally infringe the ’514 patent.

Japanese publication 51-82206 (“JP 51-82206”) played a prominent role in the Federal Circuit’s anticipation and inequitable conduct analyses. During prosecution of the ’514 patent, Atofina disclosed to the PTO an English language Derwent Abstract of JP 51-82206, but did not disclose the full translation, which it possessed. Moreover, the European counterpart of the ’514 patent was rejected for lack of novelty over JP 51-82206, and issued only after Atofina amended its claims to include an additional limitation. Finally, Atofina characterized JP 51-82206 in several ways, most notably, as claiming a catalyst “containing chiefly chromium oxide and optionally other metals.”

The district court ruled that the ’514 patent was anticipated by JP 51-82206. Specifically, the district court determined that the broader temperature range of 100 to 500°C recited in JP 51-82206 anticipated the narrower temperature range of 330 to 450°C disclosed in the ’514 patent. Further, the district court found that the Japanese reference’s oxygen to methylene chloride ratio of 0.001 to 1 percent anticipated the ’514 patent’s claimed ratio of 0.5 to 3 percent. The district court found the full translation to be highly material because, in its view, the full translation of JP 51-82206 15 Last disclosed ranges that anticipated the ’514 patent. As such, Atofina’s failure to disclose the full translation of JP 51-82206 and its alleged mischaracterizations led the district court to declare the ’514 patent unenforceable due to inequitable conduct.

The Federal Circuit disagreed with the district court and reversed its findings of anticipation and inequitable conduct. Regarding the finding of anticipation, the Court noted that “a species can anticipate a genus, not the reverse.” Slip op. at 12. Thus, while the temperature ranges overlapped, the range disclosed in JP 51-82206 failed to describe the claimed range of the ’514 patent with sufficient specificity to anticipate. Similarly, while the molar ratios overlapped slightly, no reasonable fact-finder could determine that the overlap describes the entire claimed range with sufficient specificity to anticipate the ’514 patent.

Next, in reviewing the finding of inequitable conduct, the Federal Circuit agreed with the district court that JP 51-82206 was material information, but disagreed with the finding of intent to deceive the PTO. The Court noted that Atofina’s failure to disclose the full English translation was “not in and of itself enough to infer intent, even if the full English translation went beyond the Derwent Abstract, which is far from clear.” Id. at 18. Moreover, Atofina’s alleged misrepresentations also failed to demonstrate the requisite intent to deceive. For example, the district court inferred intent because Atofina stated that JP 51-82206 disclosed a catalyst containing “chiefly chromium oxide,” while JP 51-82206, but not its abstract, disclosed a catalyst of pure chromium oxide. The Federal Circuit, however, concluded this was insufficient to find intent because one could interpret Atofina’s statement to also include pure chromium oxide. Nevertheless, Judge Dyk dissented on this point, characterizing Atofina’s statement as misleading, and would have remanded for further findings on the intent element.

In sum, while the Court affirmed the district court’s claim construction and finding of noninfringement, it reversed the findings of invalidity and inequitable conduct.