United States Court of Appeals
for the Federal Circuit
__________________________
WELLMAN, INC.,
Plaintiff-Appellant,
v.
EASTMAN CHEMICAL COMPANY,
Defendant-Appellee.
__________________________
2010-1249
__________________________
Appeal from the United States District Court for the
District of Delaware in Case No. 07-CV-0585, Judge Sue
L. Robinson.
___________________________
Decided: April 29, 2011
___________________________
BARBARA L. MOORE, Edward Angell Palmer & Dodge
LLP, of Stamford, Connecticut, argued for plaintiff-
appellant. With her on the brief was SCOTT D. WOFSY,
BARRY KRAMER, and BRIAN R. POLLACK; DENISE SEASTONE
KRAFT, JOHN REED and ALEINE PORTERFIELD, of Wilming-
ton, Delaware.
KENNETH R. ADAMO, Jones Day, Cleveland, Ohio, of
argued for defendant-appellee. With him on the brief
were REGAN J. FAY, THOMAS R. GOOTS, LEOZINO AGOZZINO,
ANTHONY T. JACONO and PETER D. SIDDOWAY; and
WELLMAN INC v. EASTMAN CHEMICAL 2
LAWRENCE D. ROSENBERG, of Washington, DC. Of counsel
on the brief was MARY B. GRAHAM, Morris, Nichols, Arsht
& Tunnell, of Wilmington, Delaware.
__________________________
Before RADER, Chief Judge, LOURIE, Circuit Judge, and
WHYTE, District Judge. 1
RADER, Chief Judge.
The United States District Court for the District of
Delaware granted Eastman Chemical Company’s (“East-
man’s”) motion for summary judgment of invalidity of
U.S. Patent Nos. 7,129,317 (the “’317 patent”) and
7,094,863 (the “’863 patent”) (collectively, the “Wellman
patents”) for indefiniteness and granted-in-part East-
man’s motion for summary judgment of invalidity for
failure to disclose the best mode. Because the specifica-
tions of the Wellman patents do not set forth the best
mode of carrying out the invention contemplated by at
least one of the inventors, this court affirms the district
court’s judgment with respect to best mode. Because a
person of ordinary skill could understand the bounds of
the patent claims, however, this court reverses the district
court’s judgment with respect to indefiniteness.
I
The Wellman patents disclose polyethylene terephtha-
late (“PET”) resins for use in plastic beverage containers.
The patents claim priority to the same applications and
share similar specifications. The patents state that prior
art PET resins produced bottles that shrank or grew hazy
from crystallization when “hot-filled” with product at
1 The Honorable Ronald M. Whyte, United States
District Court for the Northern District of California,
sitting by designation.
3 WELLMAN INC v. EASTMAN CHEMICAL
temperatures of between about 180° C and 205° C. ’317
patent col.2 ll.1-9; ’863 patent col.2 ll.9-17. To overcome
these problems, the Wellman patents disclose “slow-
crystallizing” PET resins that purportedly retain excep-
tional clarity by delaying the onset of crystallization
relative to conventional PET resins. ’317 patent col.3
ll.15-25; ’863 patent col.3 ll.25-35. The disclosed resins
also purportedly reduce haze formed during the produc-
tion process. ’317 patent col.8 ll.39-47; ’863 patent col.3
ll.46-54.
The Wellman patents define “slow-crystallizing” PET
resins as those possessing a significantly higher heating
crystallization exotherm peak temperature (TCH) as
compared with conventional PET resins, which use the
metallic element antimony as a catalyst. ’317 patent col.3
ll.16-20; ’863 patent col.3 ll.25-30. TCH is the temperature
at which the sample crystallizes the fastest during heat-
ing in a differential scanning calorimetry (“DSC”) ma-
chine. ’317 patent col.7 ll.55-58, col.8 ll.48-53; ’863 patent
col.7 ll.62-65, col.8 ll.55-65. Thus, Figure 1 of each patent
shows a slow-crystallizing, titanium-catalyzed PET resin
with a TCH of 144.2°C. By comparison, Figure 3 shows a
conventional antimony-catalyzed PET resin with a TCH of
130.6°C. ’317 patent col.8 ll.7-22; ’863 patent col.8 ll.14-
29.
By the time Wellman filed the application leading to
the ’317 patent in May 2004, it had commercialized a
slow-crystallizing, hot-fill PET resin called Ti818. Accord-
ing to Dr. Steven Nichols, an inventor of the Wellman
patents, Ti818 had the following composition as of May
2004:
WELLMAN INC v. EASTMAN CHEMICAL 4
Parameter Amount
Isophthalic Acid 1.4 mol %
Diethylene Glycol 1.9 mol %
500 ppm
Trimellitic Anhydride (“TMA”)
Carbon-Black reheat agent 7.5 ppm
Elemental Cobalt 30 ppm
Titanium-based catalyst 7 ppm (Ti)
Phosphorus 5 ppm
Potassium 25 ppm
Wellman did not disclose the recipe for Ti818 in its pat-
ents. Nor did Wellman disclose any other specific PET
resin recipes. Instead, Wellman provided ranges of con-
centrations for categorized lists of possible ingredients.
For example, the patents identify a preferred range of
isophthalic acid, a raw ingredient used to synthesize PET,
of between about 1.6 and 2.4 mole percent. ’317 patent
col.20 l.65-col.21 l.2; ’863 patent col.22 ll.30-34. Ti818
contained 1.4 mole percent isophthalic acid. Similarly,
the Wellman patents identify a preferred concentration of
1.6 mole percent for diethylene glycol, another raw ingre-
dient used to synthesize PET. ’317 patent col.20 l.65-
col.21 l.2; ’863 patent col.22 ll.30-34. Ti818 contained 1.9
mole percent diethylene glycol.
The Wellman patents disclose optional heat-up rate
(“HUR”) additives for the PET resin that improve the
resin’s reheating profile during bottle blow molding. ’317
patent col.10 ll.16-26; ’863 patent col.11 ll.38-49. The
5 WELLMAN INC v. EASTMAN CHEMICAL
patents state that “natural spinels and synthetic spinels”
are the “most preferred” HUR additives. ’317 patent
col.11 ll.42-43; ’863 patent col.12 ll.64-65. Copper chro-
mite black spinel and chrome iron nickel black spinel are
characterized as “[p]articularly outstanding spinel pig-
ments.” ’317 patent col.11 ll.42-47; ’863 patent col.13 ll.1-
2. In contrast, the Wellman patents describe carbon-
based HUR additives as “one embodiment” of the inven-
tion. ’317 patent col.11 ll.1-2; ’863 patent col.12 ll.23-24.
The patents state that “suitable” carbon-based additives
include carbon black, and note that U.S. Patent No.
4,408,004 (“Pengilly”) discloses “satisfactory” carbon black
HUR additives. ’317 patent col.11 ll.8-12; ’863 patent
col.12 ll.30-34. Pengilly discloses a preferred average
particle size for carbon black in a range of between about
15 to about 30 nm. Pengilly col.4 ll.21-22. Wellman’s
Ti818 recipe includes a HUR additive called N990, which
is a specific type of carbon black with a 290 nm particle
size.
Notably, two provisional applications in the chain of
applications leading to the Wellman patents, respectively
filed May 21, 2003 and April 6, 2004, characterize carbon-
based HUR additives as “preferabl[e]” and copper chro-
mite spinels as “suitable.” On May 20, 2004, the day
before Wellman filed the nonprovisional application
leading to the ’317 patent, Wellman filed a third provi-
sional application changing its preference from a carbon-
based HUR to a spinel.
Claim 1 of the ’317 patent is representative of the as-
serted claims and states as follows:
1. A polyethylene terephthalate resin, compris-
ing:
less than about 25 ppm of elemental anti-
mony, if any; and
WELLMAN INC v. EASTMAN CHEMICAL 6
more than about 5 ppm of elemental phospho-
rus; and
wherein the polyethylene terephthalate resin
has a heating crystallization exotherm
peak temperature (TCH) of more than about
140° C. at a heating rate of 10° C. per min-
ute as measured by differential scanning
calorimetry;
wherein the polyethylene terephthalate resin
has an absorbance (A) of at least about
0.18 cm−1 at a wavelength of 1100 nm or
at a wavelength of 1280 nm; and
wherein the polyethylene terephthalate resin
has an L* luminosity value of more than
about 70 as classified in the CIE L*a*b*
color space.
’317 patent col.26 ll.9-23 (emphasis added). All of the
asserted claims include TCH limitations.
Wellman alleges that Eastman directly infringes
claims 1-5, 7, 8, 11-14, 16-21, 24, 32, 33, 36, 38, 39, 44, 93,
94, 96-102, and 104 of the ’317 patent. Wellman further
alleges that Eastman indirectly infringes claims 1, 3-6, 8,
9, 11, 15, 17, 24, and 62 of the ’863 patent.
On August 14, 2009, Eastman moved for summary
judgment of invalidity on the grounds of indefiniteness
and failure to set forth the best mode of practicing the
claimed invention. The district court granted-in-part
Eastman’s best mode summary judgment motion, holding
invalid all of the asserted claims except dependent claims
5, 17, and 94 of the ’317 patent and claims 6 and 9 of the
’863 patent—the five claims that Wellman contends do
not encompass Ti818. Wellman, Inc. v. Eastman Chem.
Co., 689 F. Supp. 2d 705, 712, 716 (D. Del. 2010).
7 WELLMAN INC v. EASTMAN CHEMICAL
The district court found that at least inventor Dr.
Nichols viewed Ti818 as the best mode of practicing the
invention at the time of filing. The district court also
found that inventor David Thompson preferred carbon
black N990 as the HUR additive for practicing the inven-
tion. Id. at 715-16. The court further found that the
Wellman patents do not disclose Ti818 sufficiently to
enable one of ordinary skill in the art to identify it. Id.
The court emphasized that the Wellman patents do not
disclose either the formula or tradename of Ti818, even
though it was Wellman’s operative PET resin formula at
the time of filing its patents. Id. The district court ac-
knowledged that the disclosure of ranges of ingredients
encompassing the best mode can satisfy the best mode
requirement, but found that the patents disguise Ti818 by
disclosing “preferred” ranges for certain ingredients that
do not encompass the actual concentrations of those
ingredients in the Ti818 formula. Id. at 714-15.
Additionally, the district court found that the
Wellman patents do not disclose the use of carbon black
N990. Id. at 715. Based on testimony of inventor Thomp-
son and his supervisor James Bruening, the court found
that Wellman instead sought to maintain the use of N990
as a trade secret. Id. at 710, 715-16. The district court
therefore granted-in-part Eastman’s motion for summary
judgment for failure to disclose the best mode as required
by 35 U.S.C. § 112 ¶ 1, invalidating the asserted claims of
the ’317 and ’863 patents except for the five dependent
claims that Wellman argued do not encompass Ti818. Id.
at 721.
The district court also granted Eastman’s motion for
summary judgment of invalidity for indefiniteness. Id. at
720-21. Although all of the claims asserted by Wellman
contain a limitation to a PET resin having a certain TCH
as measured by DSC, the district court found that the
WELLMAN INC v. EASTMAN CHEMICAL 8
Wellman patents do not disclose sample conditions and
testing parameters essential for obtaining consistent DSC
measurements. Id. at 717, 720. In particular, the district
court found that the patents do not disclose or suggest the
desired moisture content for the claimed PET resins, even
though variations in moisture content can affect TCH
measurements. Id. The district court also found that the
Wellman patents are ambiguous as to whether the DSC
measurement should be determined via a second scan
(which erases the thermal history of the sample prior to
measurement) or a first scan (which does not). Id. Ther-
mal history, like moisture content, can affect TCH meas-
urements. Given these “multitude of choices,” the district
court found that the TCH limitations in the asserted claims
were not amenable to construction, rendering all of the
asserted claims invalid as indefinite under 35 U.S.C.
§ 112 ¶ 2. Id. at 719-20.
Wellman appeals the grants of summary judgment.
This court has jurisdiction pursuant to 28 U.S.C. §
1295(a)(1).
II
This court reviews a grant of summary judgment
without deference. Dynacore Holdings Corp. v. U.S.
Philips Corp., 363 F.3d 1263, 1273 (Fed. Cir. 2004).
Summary judgment is appropriate if the movant can show
both the absence of genuine issues of material fact and
entitlement to judgment as a matter of law. Fed. R. Civ.
P. 56(c). This court reviews the evidence in the light most
favorable to the non-moving party. Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 255 (1986).
III
A patent specification “shall set forth the best mode
contemplated by the inventor of carrying out his inven-
9 WELLMAN INC v. EASTMAN CHEMICAL
tion.” 35 U.S.C. § 112 ¶ 1. The best mode inquiry pro-
ceeds on a claim by claim basis. Pfizer, Inc. v. Teva
Pharms. USA, Inc., 518 F.3d 1353, 1365 (Fed. Cir. 2008).
“Best mode issues can arise if any inventor fails to dis-
close the best mode known to him or her” as of the date
the application for patent is filed. Pannu v. Iolab Corp.,
155 F.3d 1344, 1351 n.5 (Fed. Cir. 1998). “The best mode
requirement creates a statutory bargained-for-exchange
by which a patentee obtains the right to exclude others
from practicing the claimed invention for a certain time
period, and the public receives knowledge of the preferred
embodiments for practicing the claimed invention.” Eli
Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 963 (Fed.
Cir. 2001). “A violation of the best mode requirement
must be proved by clear and convincing evidence.” All-
Voice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d
1236, 1240 (Fed. Cir. 2007).
The best mode requirement has two parts. Green
Edge Enters., LLC v. Rubber Mulch Etc., LLC, 620 F.3d
1287, 1296 (Fed. Cir. 2010). First, the court must deter-
mine whether, at the time of patent filing, the inventor
possessed a best mode of practicing the claimed invention.
Id. (citing U.S. Gypsum Co. v. Nat’l Gypsum Co., 74 F.3d
1209, 1212 (Fed. Cir. 1996)). This first prong is subjec-
tive, focusing on the inventor’s personal preferences as of
the application’s filing date. N. Telecom Ltd. v. Samsung
Elecs. Co., 215 F.3d 1281, 1286 (Fed. Cir. 2000). Second,
if the inventor has a subjective preference for one mode
over all others, the court must then determine whether
the inventor “concealed” the preferred mode from the
public. Green Edge, 620 F.3d at 1296 (quoting Chemcast
Corp. v. Arco Indus. Corp., 913 F.2d 923, 928 (Fed. Cir.
1990)). The second prong inquires into the inventor’s
disclosure of the best mode and the adequacy of that
disclosure to enable one of ordinary skill in the art to
WELLMAN INC v. EASTMAN CHEMICAL 10
practice that part of the invention. Id. This second
inquiry is objective, depending on the scope of the claimed
invention and the level of skill in the relevant art. Id.
At the outset, this court notes that the district court
did not construe the claims before engaging in the best
mode inquiry. This court has explained that “[t]he best
mode inquiry is directed to what the applicant regards as
the invention, which in turn is measured by the claims.”
Engel Indus., Inc. v. Lockformer Co., 946 F.2d 1528, 1531
(Fed. Cir. 1991). Because “[s]ubject matter outside the
scope of the claims falls outside of the best mode require-
ment,” a “threshold step in a best mode inquiry is to
define the invention by construing the claims.” Ajinomoto
Co., Inc. v. Int’l Trade Comm’n, 597 F.3d 1267, 1272-73
(Fed. Cir. 2010).
While the best mode inquiry typically requires a claim
construction, claim terms need only be construed “to the
extent necessary to resolve the controversy.” Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999). In this case, the parties dispute only
whether claims 5, 17, and 94 of the ’317 patent and claims
6 and 9 of the ’863 patent encompass Ti818—the parties
agree that the remaining asserted claims encompass
Ti818. Because the district court limited its best mode
holding to the uncontroverted claims, Wellman, 689 F.
Supp. 2d at 713, the district court had no need to construe
the disputed terms. See, e.g., EMI Grp. N. Am., Inc. v.
Intel Corp., 157 F.3d 887, 895 (Fed. Cir. 1998) (holding
that the construction of a given claim term was “irrele-
vant” because it did not affect the underlying controversy
between the parties). In these unusual circumstances,
this court detects no need for a claim construction prior to
engaging in the best mode inquiry.
11 WELLMAN INC v. EASTMAN CHEMICAL
This court turns next to the first prong of the test for
best mode. There is no genuine dispute that at least one
inventor subjectively believed that Ti818—which contains
carbon black N990—was the best resin available for hot-
fill packaging at the time of filing the applications for the
’317 and ’863 patents. Specifically, Dr. Nichols testified
that his preferred PET recipe at the time of filing was
“the first run of the product that we called Ti818 which
was done at our Pearl River plant in the fall of 2003.”
J.A. 297 11:11-24. Nichols further admitted that, before
filing, he believed there was no PET recipe better than
that Ti818 recipe from 2003. J.A. 300 23:21-24:9. An-
other inventor, Dr. Tony Moore, also appears to have
believed that Ti818 was the preferred PET resin. Al-
though he did not refer to Ti818 by name, he testified that
as of the filing date of the ’317 patent, the best way of
making PET in the research laboratory to achieve the
claimed TCH, absorbance, and luminosity values used a
combination of titanium catalysts, cobalt, and carbon
black as the HUR additive. Ti818 contains each of these
ingredients.
Although the record shows that Dr. Nichols preferred
the 2003 recipe of Ti818, the district court found that Dr.
Nichols believed that the 2004 recipe of Ti818 was the
best mode of practicing the invention. Wellman, 689 F.
Supp. 2d at 713. This harmless misstatement does not
rescue the relevant claims from a best mode violation.
Rather than a nullifying conflict, this only shows that Dr.
Nichols had an obligation to disclose the recipe he be-
lieved to be the best mode at the time of patent filing—the
2003 recipe. The applicant did not do so. See Dana Corp.
v. IPC Ltd. P’ship, 860 F.2d 415, 418 (Fed. Cir. 1988)
(requiring disclosure of the best mode contemplated by
the inventor at the time of filing).
WELLMAN INC v. EASTMAN CHEMICAL 12
The district court also suggested that the record did
not show a changed recipe for Ti818 between 2003 and
2004. See Wellman, 689 F. Supp. 2d at 709 n.4. However,
Wellman’s declarations of record indicate that in early
2004, the concentration of carbon black was reduced from
11.3 ppm to 7.5 ppm and the branching agent TMA was
included, purportedly to accommodate specific customer
requirements. Additionally, the record includes declara-
tions from two of the inventors (belatedly submitted after
the best mode oral arguments but prior to entry of sum-
mary judgment) contending that at least four different
recipes of Ti818, each with differing concentrations of
carbon black, underwent testing leading up to May 2004.
Dr. Nichols also testified that the inventors had made
numerous samples and declared he was unsure whether
Wellman had a single preferred resin.
On summary judgment, this court must resolve fac-
tual inferences in favor of the non-movant. Anderson, 477
U.S. at 255. In this context, an evolving recipe potentially
means that the inventors had no best mode of practicing
the invention. See Bruning v. Hirose, 161 F.3d 681, 687
(Fed. Cir. 1998) (finding inventor had no best mode be-
cause of concern about certain characteristics of his
invention). However, even when viewed in the light most
favorable to Wellman, this evidence cannot overcome the
testimony of the inventors, including Dr. Nichols’ testi-
mony regarding his subjective belief that the 2003 recipe
of Ti818 was the best method of practicing the invention
at the time of filing. Put simply, at the time of filing, an
inventor believed that the 2003 recipe of Ti818 was the
best mode. Subtle changes in the recipe in 2004 to ac-
commodate specific customer demands does not excuse
the applicant’s obligation to disclose what Dr. Nichols—
and every other inventor—contemplated was the best
mode of practicing the invention at the time of filing. The
13 WELLMAN INC v. EASTMAN CHEMICAL
district court’s assessment of changes in the Ti818 recipe
therefore does not affect substantial rights of the parties
and was at most harmless error.
There is no genuine dispute that at least one inventor
subjectively believed that the specific HUR additive used
in Ti818, carbon black with a 290 nm particle size, was
essential. In October 2002, after testing a variety of HUR
additives, inventor Thompson wrote that “carbon black
with a 290 nm particle size had clearly the best reheat
rate . . . .” J.A. 436 (emphasis added). Thompson charac-
terized carbon black with a 290 nm particle size as an
“invention,” while characterizing the other tested HURs
as “prior art.” J.A. 437. Additionally, a table comparing
tests on various HUR additives states that “7.5 ppm code
5056” is the “HUR Needed for hotfill,” while the spinel
Cr2O3 is described as “Green.” J.A. 439 (emphasis added).
“Code 5056” is Wellman’s internal name for carbon black
with a 290 nm particle size, indicating a clear preference
for this HUR. Notably, inventor Dr. Moore forwarded this
table to Wellman’s patent counsel less than two months
before Wellman filed the application leading to the ’317
patent.
Wellman did not disclose carbon black N990 in its
patent applications. Instead, Wellman chose to protect
this ingredient of Ti818 as a trade secret. Thompson
testified that his boss, James Bruening, instructed him to
maintain carbon black N990 as a trade secret:
Q. Was Wellman trying to keep N990 as
a trade secret?
...
A. Yes.
...
WELLMAN INC v. EASTMAN CHEMICAL 14
Q. And were you instructed by anybody
at Wellman on maintaining the trade se-
cret nature of N990?
A. Yes.
Q. Who?
A. Mr. Bruening.
J.A. 357 71:18-72:6. Bruening acknowledged that he
instructed his department to maintain N990 as a trade
secret. Wellman continued to protect the use of N990 in
its PET resin products as a trade secret from its discovery
in 2002 through February of 2010. Indeed, Wellman
requested that the district court seal the courtroom dur-
ing the arguments on summary judgment expressly to
maintain the confidentiality of N990.
Notwithstanding the admissions in Wellman’s inter-
nal documents, the use of carbon black N990 in Wellman’s
commercial product, and the mandate to maintain N990
as a trade secret, Wellman argues that experimental work
performed by Dr. Moore shortly before May 2004 creates a
genuine dispute of material fact as to whether the inven-
tors believed that carbon black N990 was the most pre-
ferred HUR additive as of the time of filing. Additional
disclosure in Wellman’s non-provisional application
purportedly shows that spinels displayed superior absorp-
tion selectivity to unenhanced PET. Furthermore, a
declaration of Dr. Moore, submitted after the hearing on
summary judgment, states that his absorption data shows
that PET using a spinel reheat agent has superior color
characteristics than PET using carbon black.
These arguments have both procedural and substan-
tive shortcomings on appeal. As to the procedural defi-
ciencies, Wellman did not raise the significance of the
additional disclosure concerning absorption ratios in its
best mode briefing or oral arguments before the district
15 WELLMAN INC v. EASTMAN CHEMICAL
court. Wellman also did not explain this disclosure’s
connection to the alleged preference for spinels. This
court looks to the law of its sister circuit, the United
States Court of Appeals for the Third Circuit, to deter-
mine the implications of these deficiencies. In re Cygnus
Telecomm. Tech., LLC, Patent Litig., 536 F.3d 1343, 1351-
52 (Fed. Cir. 2008). Third Circuit law holds that in chal-
lenging a summary judgment order on appeal, a party
cannot “advance new theories or raise new issues in order
to secure a reversal of the lower court’s determination.”
Union Pac. R.R. Co. v. Greentree Transp. Trucking Co.,
293 F.3d 120, 126 (3d Cir. 2002). Wellman has therefore
forfeited its right to argue the significance of these ab-
sorption ratios on appeal.
Even without this procedural obstacle, these conten-
tions do not create a genuine issue of material fact for the
best mode inquiry. The disclosure added to the nonprovi-
sional application does not suggest a new-found prefer-
ence for spinels relative to carbon black N990, because the
additional disclosure does not compare PET recipes
containing spinels to those containing carbon black N990.
Instead, it compares PET resins containing spinels to
those without a HUR additive. ’317 patent col.16 ll.4-9;
’863 patent col.17 ll.35-40. Moreover, while Dr. Moore’s
belatedly filed declaration states that he believes spinels
would produce “better color characteristics” than PET
using thermal carbon black, he testified that as of filing
date of the ’317 patent, he preferred using carbon black as
the best way of making PET to achieve the claimed TCH,
absorbance, and luminosity values.
Significantly, Dr. Nichols also testified that a recipe
containing carbon black was his preferred PET resin prior
to patent filing. In contrast, no inventor identified a PET
resin containing a spinel as a preferred embodiment of
the invention. Wellman’s contemporaneous internal
WELLMAN INC v. EASTMAN CHEMICAL 16
documents also undermine these arguments, as they
praise carbon black N990 as “clearly the best” and as the
HUR “[n]eeded for hotfill.” J.A. 436; J.A. 439. No con-
temporaneous document in the record similarly praises
spinels.
Wellman contends that one of its inventors, Dr.
Robert Schiavone, believed that tungsten-based HUR
additives were preferred over all others, at least prior to
the absorption ratio research disclosed in the nonprovi-
sional application purportedly showing the superiority of
spinels. Dr. Schiavone did not state or suggest that any
other inventor shared this view. Additionally, Wellman
represented to the district court that Dr. Schiavone con-
tinues “to this very day” to view tungsten-based reheat
agents as superior to spinels—further undermining its
theory that the additional disclosure in the nonprovisional
application demonstrated a new-found preference for
spinels.
Wellman’s patent attorney testified that Wellman
would have revised its commercial PET resins to include
spinels instead of carbon black N990, but for concerns
over a third-party patent. A party’s failure to disclose its
commercial mode does not ipso facto result in a § 112
violation because the focus of a best mode inquiry remains
on the claimed invention rather than the marketed prod-
uct. Zygo Corp. v. Wyko Corp., 79 F.3d 1563, 1567 (Fed.
Cir. 1996). In this case, however, Wellman concedes that
its commercial Ti818 PET resin is within the scope of the
claims invalidated by the district court. Coupled with the
additional evidence set forth above, this court concludes
that Ti818 and its HUR additive carbon black N990 were
considered the best mode of practicing the invention by
one or more inventors at the date of filing.
17 WELLMAN INC v. EASTMAN CHEMICAL
With a record showing that at least one inventor pos-
sessed a subjective preference for Ti818 and at least one
inventor possessed a subjective preference for N990, this
court must determine whether there is any issue of mate-
rial fact concerning concealment of the best mode, the
second prong of the best mode inquiry. Go Medical Indus.
Pty., Ltd. v. Inmed Corp., 471 F.3d 1264, 1271 (Fed. Cir.
2006). The Wellman patents do not expressly disclose the
Ti818 recipe, but instead describe many possible ingredi-
ents with varied ranges of concentrations. While an
inventor may represent his contemplated best mode just
as well by a preferred range of conditions as by a working
example, In re Honn, 364 F.2d 454, 462 (CCPA 1966),
some of the ingredients for Ti818, namely isophthalic acid
and diethylene glycol, fall outside of the disclosed pre-
ferred ranges and therefore lead away from the Ti818
recipe.
The Wellman patents lead away from the use of car-
bon black N990 in Ti818. Specifically, the patents charac-
terize carbon black merely as a “suitable” HUR additive
without any discussion of particle sizes. The Pengilly
patent, the sole source of carbon black HUR additives
identified in the Wellman patents, states that carbon
black HUR additives have “typical” particle sizes “from 10
to 100 nm” and “preferred” average particle sizes from
“about 15 to about 30 [nm].” ’317 patent col.11 ll.10-12;
Pengilly col.2 ll.54-60, col.4 ll.18-24. Carbon black N990
has a particle size of 290 nm. While there is no require-
ment under 35 U.S.C. § 112 ¶ 1 to identify which disclosed
mode is the best mode, In re Bosy, 360 F.2d 972, 976
(CCPA 1962), and best mode may be represented by a
preferred range of conditions or group of ingredients,
Honn, 364 F.2d at 462, Wellman concealed the best mode
by not disclosing the recipe for Ti818, by identifying
preferred concentration ranges for certain ingredients
WELLMAN INC v. EASTMAN CHEMICAL 18
that excluded those used in Ti818, and by identifying
preferred particles sizes for the HUR additive other than
that used in Ti818.
Despite these facts of record, this court goes on to ex-
amine Wellman’s disclosure to discern whether it enabled
a person of skill in the art to practice the best mode
without undue experimentation. Dr. Schiavone, a named
inventor, admitted he could not derive the recipe for
Ti818 from the disclosure in the Wellman patents. Dr.
Nichols, another inventor, testified that a series of design
experiments could be developed to identify a resin meet-
ing the claimed limitations, but did not state that those
experiments would yield Ti818. Moreover, “[e]ven where
there is a general reference to practicing the claimed
invention, the quality of the disclosure may be so poor as
to effectively conceal it.” Transco Prods. Inc. v. Perform-
ance Contracting, Inc., 38 F.3d 551, 560 (Fed. Cir. 1994)
(citing Randomex Inc. v. Scopus Corp., 849 F.2d 585, 587
(Fed. Cir. 1988)). By masking what at least one inventor
considered the best of these slow-crystallizing resins,
Wellman effectively concealed its recipe for Ti818.
Wellman admittedly spent millions of dollars and thou-
sands of hours developing its claimed slow-crystallizing
PET resins. Dr. Nichols declared that the inventors
“unlocked in our research . . . the secret to making an
effective slow-crystallizing bottle resin by understanding
the proper balance of the parameters of catalyst concen-
tration, comonomer concentration, intrinsic viscosity, and
heat-up-rate [HUR] additive in order to make high clarity
bottles.” J.A. 5117. Wellman had an obligation to ade-
quately disclose the best mode of practicing this “unlocked
secret” under the best mode requirement, yet did not do
so.
The record also shows that Wellman intentionally
concealed the best mode. “Invalidation based on a best
19 WELLMAN INC v. EASTMAN CHEMICAL
mode violation requires that the inventor knew of and
intentionally concealed a better mode than was disclosed.”
High Concrete Structures, Inc. v. New Enter. Stone &
Lime Co., 377 F.3d 1379, 1384 (Fed. Cir. 2004). As shown
by the testimony of Thompson and Bruening, Wellman
intended to conceal carbon black N990, an ingredient in
Ti818, by choosing to maintain it as a trade secret. As the
district court correctly stated, this choice “does not excuse
Wellman’s compliance with the best mode requirement.”
Wellman, 689 F. Supp. 2d. at 716. Accordingly, this court
affirms the invalidity of claims 1-4, 7, 8, 11-14, 16, 18-21,
24, 32, 33, 36, 38, 39, 44, 93, 96-102, and 104 of the ’317
patent and claims 1, 3-5, 8, 11, 15, 17, 24 and 62 of the
’863 patent for failure to comply with the best mode
requirement.
The district court correctly declined to invalidate the
remaining asserted claims. Id. at 712-13. Despite having
the burden of proof, Eastman offered no affirmative
evidence that Ti818 is encompassed by these claims.
Eastman contends that Dr. Nichols and Wellman’s expert,
Dr. David Schiraldi, admitted that Ti818 and N990 sat-
isfy the TCH, absorbance, and L* limitations of these
additional claims. Because these terms are contested,
have not been construed, and are essential to resolving
the controversy over best mode, Eastman’s position is
untenable. Additionally, the alleged admissions do not
address the cooling crystallization exotherm peak tem-
perature (TCC) term recited in claim 17 of the ’317 patent.
Thus, this court perceives that the trial court gave the
proper consideration and weight to this evidence. This
court therefore declines to extend the holding of invalidity
on best mode grounds beyond those claims invalidated by
the district court.
WELLMAN INC v. EASTMAN CHEMICAL 20
IV
“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.” 35 U.S.C. § 112 ¶ 2. “The review of indefi-
niteness under 35 U.S.C. § 112, paragraph 2, proceeds as
a question of law without deference.” SmithKline
Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1338 (Fed.
Cir. 2005). “The question of whether the claims meet the
statutory requirements of § 112 ¶ 2 is a matter of con-
struction of the claims, and receives plenary review on
appeal. . . . The claims as granted are accompanied by a
presumption of validity based on compliance with, inter
alia, § 112 ¶ 2.” S3 Inc. v. NVIDIA Corp., 259 F.3d 1364,
1367 (Fed. Cir. 2001) (citations omitted).
Claims need not be plain on their face in order to
avoid condemnation for indefiniteness; rather, claims
must only be amenable to construction. Exxon Research
& Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed.
Cir. 2001). “[B]ecause claim construction frequently poses
difficult questions over which reasonable minds may
disagree, proof of indefiniteness must meet ‘an exacting
standard.’” Haemonetics Corp. v. Baxter Healthcare
Corp., 607 F.3d 776, 783 (Fed. Cir. 2010) (quoting Halli-
burton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244,
1249 (Fed. Cir. 2008)). Thus, “[a]n accused infringer
must . . . demonstrate by clear and convincing evidence
that one of ordinary skill in the relevant art could not
discern the boundaries of the claim based on the claim
language, the specification, the prosecution history, and
the knowledge in the relevant art.” Id. “By finding
claims indefinite only if reasonable efforts at claim con-
struction prove futile, we accord respect to the statutory
presumption of patent validity . . . and we protect the
inventive contribution of patentees, even when the draft-
21 WELLMAN INC v. EASTMAN CHEMICAL
ing of their patents has been less than ideal.” Exxon, 265
F.3d at 1375 (citation omitted).
The district court erred in concluding that the
Wellman patents do not provide sufficient guidance for
construing the TCH claim term. The patents support a
construction that limits the claimed TCH measurement to
those occurring on a sample of “amorphous” PET mate-
rial. “[C]laims ‘must be read in view of the specification,
of which they are a part.’” Phillips v. AWH Corp., 415
F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (quoting
Markman v. Westview Instruments, Inc., 52 F.3d 967, 979
(Fed. Cir. 1995) (en banc)). “[T]he specification ‘is always
highly relevant to the claim construction analysis. Usu-
ally, it is dispositive; it is the single best guide to the
meaning of a disputed term.’” Id. (quoting Vitronics Corp.
v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
The specifications of the Wellman patents support
construing the TCH term to require testing of amorphous
materials. Every example of DSC testing in the patents
features amorphous materials, with “FIGS. 1, 3, 5, and 7
correspond[ing] to the heating of amorphous polymer and
FIGS. 2, 4, 6, and 8 correspond[ing] to the cooling of the
same polymer from the melt phase.” ’317 patent col.8 ll.4-
6; ’863 patent col.8 ll.11-13. The patents expressly state
that “[t]hose having ordinary skill in the art will recognize
that heating crystallization exotherm peak temperature
(TCH) is determined on a non-crystalline [PET] resin.”
’317 patent col.8 ll.55-58; ’863 patent col.8 ll.62-65. East-
man’s expert, Dr. Donna Quillen, confirmed that “there’s
no crystallinity” in an amorphous material. J.A. 7552
21:13-19. Additionally, the Wellman patents specifically
disclose a four-step DSC protocol useful for measuring
TCH on amorphous materials. ’317 patent, col.7 l.64-col.8
l.4; J.A. 7054; J.A. 7071. Interpreted in light of the speci-
WELLMAN INC v. EASTMAN CHEMICAL 22
fication, the claimed TCH measurement occurs on amor-
phous PET material.
Chef America Inc. v. Lamb Weston, Inc., 358 F.3d
1371, 1374 (Fed. Cir. 2004), among other cases, prohibits
courts from rewriting claims instead of interpreting the
claims as written. In Chef America, the court refused to
redraft the claims to replace the term “to” with the term
“at,” even though that refusal produced a nonsensical
result. Id. Unlike in Chef America, however, construing
the claim to require testing on an “amorphous PET mate-
rial” does not replace any claim term with a different
term, but instead interprets the claimed DSC measuring
technique in light of the specifications, which clearly,
repeatedly, and unambiguously state that such tests
should be performed on amorphous PET material.
Claim terms must provide a discernible boundary be-
tween what is claimed and what is not claimed—in this
case, between an amorphous PET material and a crystal-
line material. Consistent with this, the Wellman patents
twice state that an amorphous material has “less than
about 4 percent crystallinity.” ’317 patent col.12 ll.48-50,
col.23 l.67-col.24 l.4. Wellman’s expert, Dr. David
Schiraldi, testified that “less than four percent crystallin-
ity would typically be referred to as an amorphous PET
[material] by people in the PET industry,” thus supplying
a link between the specification and the understanding in
this field. J.A. 333 61:9-19. Thus, the Wellman patents
define an amorphous material consistent with the teach-
ings in this field, and a person of ordinary skill in this art
could readily discern the boundary between amorphous
and crystalline materials as these terms are defined in
the specifications.
Eastman argues that an equation furnished by
Wellman to the district court for estimating the amount of
23 WELLMAN INC v. EASTMAN CHEMICAL
crystallinity in test samples based on DSC scans yields
crystallinity percentages above four percent for the scans
shown in Figures 1, 3, 5, and 7 of the patents. The actual
crystallinity present in test samples, however, can be
readily determined by a person of skill in the art using
standardized test methods. The equation merely provides
an estimate, and may overestimate or underestimate the
amount of crystallinity present in the sample prior to
testing. For example, one sample tested using this for-
mula purportedly showed negative crystallinity, which is
not possible. Thus, this unpersuasive and conflicting
extrinsic evidence does not override the clear description
in the specification of an amorphous PET material.
In holding the claims indefinite, the district court fo-
cused on the lack of specific moisture conditions for DSC
testing, reasoning that the absence of intrinsic guidance
would prevent a person of ordinary skill from understand-
ing the bounds of the claims. Wellman, 689 F. Supp. 2d at
719-20. However, an inventor need not explain every
detail because a patent is read by those of skill in the art.
Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142,
1156 (Fed. Cir. 2004) (citing In re Howarth, 654 F.2d 103,
105 (CCPA 1981)). Well known industry standards need
not be repeated in a patent. See id. In this case, the
record shows that a person of ordinary skill in the art in
this field would follow standard industry guidance for
conditioning plastics for DSC. Specifically, the record
shows that (1) the 1997 International Standard for Differ-
ential Scanning Calorimetry of Plastics (“ISO 11357-1)
(the “1997 ISO”) provides a person of skill in the art with
an objective standard for moisture conditioning; (2) a
person of skill in the art would have been aware of the
1997 ISO prior to the filing of its patent applications; and
(3) a person of skill in the art would have interpreted the
Wellman patents in view of the 1997 ISO.
WELLMAN INC v. EASTMAN CHEMICAL 24
Wellman’s expert, Dr. Schiraldi, declared that a per-
son of skill in the art would have interpreted the Wellman
patents in view of the internationally recognized 1997
ISO. In a section entitled “[c]onditioning of test speci-
mens,” the 1997 ISO recommends conditioning test
specimens for DSC in accordance with ISO 291, unless
other conditions are specified. J.A. 7049. ISO 291, enti-
tled “Plastics - Standard atmospheres for conditioning
and testing,” defines specific temperature and humidity
conditions for specimen testing. Id. The record suggests
no reason that a person of skill in the art would have been
incapable of applying those moisture conditioning stan-
dards to the claimed invention to achieve consistent,
repeatable TCH measurements.
Wellman stated before the district court that moisture
“predictably” affects TCH. This simply acknowledges the
well known fact within the relevant scientific community
that moisture conditions can influence DSC testing—
which is precisely why standard parameters are set forth
in the guidance. Similarly, both parties’ experts agreed
that moisture conditioning affects the measured TCH of
PET resins within the scope of the asserted claims.
However, nothing suggests that a person of skill in the art
would fail to account for moisture or otherwise deviate
from the standard conditions set forth in the 1997 ISO.
Eastman argues that ISO 291 should not be relied
upon, because that document was allegedly not part of the
summary judgment record. To the contrary, Wellman
argued in its summary judgment opposition brief before
the district court that the inventors need not have dis-
closed sample preparation details set forth in the 1997
ISO guidelines for conducting DSC tests, as these were
readily available to those having ordinary skill in the art
at the time the Wellman patents were filed. Wellman
also included the 1997 ISO as an exhibit to its summary
25 WELLMAN INC v. EASTMAN CHEMICAL
judgment brief, and that document specifically references
and incorporates ISO 291 as defining the atmospheric
conditions for conditioning and testing DSC specimens.
Because the argument was before the district court,
Wellman properly refers to the industry guidance on
appeal. See Union Pacific R.R., 293 F.3d at 126.
The district court relied on Honeywell International,
Inc. v. International Trade Commission, 341 F.3d 1332,
1339 (Fed. Cir. 2003), a case also involving DSC testing of
PET products, but Honeywell is inapposite. In Honeywell,
a person of skill in the art had to choose among four
different sample preparation methods, with each method
influencing whether the accused products fell within the
scope of the asserted claims. Id. at 1336. This court
concluded that the claims were insolubly ambiguous, and
hence indefinite, because no intrinsic or extrinsic guid-
ance indicated a single preferred method of sample prepa-
ration. Id. at 1340-41. Notably, the patentee’s preferred
construction in that case favored an unpublished method
documented only in the patentee’s proprietary files. Id. at
1336, 1341.
This case is very different. While the claims do not
recite specific moisture conditions, the well-known prac-
tice in this field as illustrated in the 1997 ISO made this a
routine concern to a person of ordinary skill in the art.
This court has repeatedly stated that a patent applicant
need not include in the specification that which is already
known to and available to a person of ordinary skill in the
art. See, e.g., Koito, 381 F.3d at 1156. Because a person
of ordinary skill in the art would have followed published
industry standards, the asserted claims of the Wellman
patents are not indefinite for failing to specify moisture
conditions.
WELLMAN INC v. EASTMAN CHEMICAL 26
The district court also erred in concluding that disclo-
sure about the thermal history of a resin is necessary to
maintain the definiteness of the asserted claims. Ther-
mal history refers to the sample’s exposure to heat and
stress before DSC testing. Heat and stress can cause
polymeric PET strands to orient, which potentially influ-
ences TCH measurements.
In this case, the patents disclose that TCH is deter-
mined on “amorphous” PET materials. Within the con-
text of the patents at issue, an “amorphous” material is in
the same physical state as a material that initially had a
thermal history but was then subjected to a first scan that
melted the PET polymer to remove the thermal history.
Thus, according to Wellman, an amorphous PET material
will produce equivalent DSC results regardless of whether
one uses a four-step “first scan” protocol or six-step “sec-
ond scan” protocol.
The 1997 ISO recommends obtaining both a first scan
and a second scan when testing polymeric materials.
Because the first scan eliminates the thermal history of
the polymer, it creates a common baseline for the com-
parison of each sample tested on a second scan. Thus, the
1997 ISO recommends that second scan results “should be
used.” J.A. 7054; J.A. 7071. However, it further provides
that first scan results “may be taken” to evaluate the
properties of “specially pre-conditioned samples.”
J.A. 7054; J.A. 7071. Accordingly, if a person of ordinary
skill in the art knew that a resin was already amorphous
by virtue of its manufacture, removing the thermal his-
tory of the sample would be unnecessary and a first scan
protocol could be used. The Wellman patents make
precisely that disclosure in Figures 1, 3, 5, and 7, which
show DSC scans obtained using first scan protocols on
amorphous materials. ’317 patent col.7 l.64-col.8 l.6; ’863
patent col.8 ll.4-13. However, if the amorphous material
27 WELLMAN INC v. EASTMAN CHEMICAL
had been subjected to heat or stress, then a person of
ordinary skill in the art would use second scan results in
accordance with the 1997 ISO to remove the potential
influence of that thermal history.
Eastman nevertheless argues that disclosure about
thermal history is important, because some Wellman
internal documents and prior art of record show that
amorphous PET materials can have orientation. As a
preliminary matter, this argument conflicts with the
testimony of Eastman’s expert, Dr. Quillen, who stated
that “[i]n an amorphous polymer, the chains are not
oriented.” J.A. 8756 21:13-32. More fundamentally, if an
amorphous PET material had some orientation due to its
thermal history, a person of skill in the art would know to
use second scan results to resolve the concern in accor-
dance with industry practice. This court therefore re-
verses the district court’s judgment with respect to
indefiniteness.
V
For the foregoing reasons, this court affirms the dis-
trict court’s summary judgment holding that all but five
of the asserted claims of the ’317 and ’863 patents are
invalid for failure to disclose the best mode. However,
this court reverses the district court’s summary judgment
that the asserted claims are indefinite under 35 U.S.C. §
112 ¶ 2 and remands for further proceedings in accor-
dance with this opinion.
AFFIRMED-IN-PART, REVERSED-IN-PART, AND
REMANDED.
COSTS
Each party shall bear its own costs.