NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
EQUISTAR CHEMICALS, LP, MSI TECHNOLOGY
LLC,
Plaintiffs-Appellants
v.
WESTLAKE CHEMICAL CORPORATION,
Defendant-Cross-Appellant
______________________
2017-1548, 2017-1549
______________________
Appeals from the United States District Court for the
Eastern District of Texas in No. 6:14-cv-00068-KNM,
Magistrate Judge K. Nicole Mitchell.
______________________
Decided: July 3, 2018
______________________
MICHAEL A. BITTNER, Winston & Strawn LLP, Dallas,
TX, argued for plaintiffs-appellants. Also represented by
THOMAS M. MELSHEIMER; ROBERT P. COURTNEY, CONRAD
GOSEN, Fish & Richardson P.C., Minneapolis, MN.
DARYL JOSEFFER, King & Spalding LLP, Washington,
DC, argued for defendant-cross-appellant. Also repre-
sented by JOHN HANSON BARR, JR., JEFFREY L. OLDHAM,
2 EQUISTAR CHEMICALS, LP v. WESTLAKE CHEMICAL
CORPORATION
RICHARD WHITELEY, STACIANNE WILSON, Bracewell LLP,
Houston, TX.
______________________
Before DYK, MOORE, and O’MALLEY, Circuit Judges.
DYK, Circuit Judge.
Equistar Chemicals, LP and MSI Technology, LLC
(collectively “Equistar”) brought suit for infringement of
U.S. Patent No. 7,064,163 (“the ’163 patent”) against
Westlake Chemical Corporation (“Westlake”) in the
District Court for the Eastern District of Texas. Westlake
asserted various counterclaims of invalidity. We affirm
the judgment of noninfringement and the judgment of no
invalidity with respect to anticipation and obviousness.
We vacate the grant of summary judgment rejecting the
on-sale bar defense, and remand for further proceedings.
BACKGROUND
Adhesive resins are used to bind different layers of
polymers together. In food packaging, for example, adhe-
sive resins bind a layer of ethylene vinyl alcohol, which
serves as an oxygen barrier, between two layers of food-
safe polyethylene. The asserted claims cover a method for
producing adhesive resins. This process requires first
making a polymer called a polyolefin. Then, the polyolefin
is mixed with other ingredients, such as a graft polymer,
in a heated mixer, which creates an adhesive resin.
Equistar asserted independent claim 1 and dependent
claims 2, 9, and 10, and Westlake asserted various inva-
lidity counterclaims. Claim 1, which is representative,
reads:
1. A method for producing improved polyolefin-
based adhesive resin, comprising:
a. polymerizing a monomer composition of at
least one olefin to a pelletizable polyolefin;
EQUISTAR CHEMICALS, LP v. WESTLAKE CHEMICAL 3
CORPORATION
b. mixing with shear mixing, while minimizing
cross-linking, at least 50% by weight based on
the polyolefin-based adhesive resin of the
polymerization product following polymeriza-
tion without first pelletizing the pelletizable
polyolefin with at least one graft polymer or
copolymer in a heated mixing device at a tem-
perature above the melting point of the com-
ponents; and
c. recovering the resulting polyolefin-based adhe-
sive resin.
’163 pat., col. 8, ll. 28–40.
Of relevance to this dispute, all the asserted claims
require that the accused process “minimize cross-linking.”
Cross-linking refers to a phenomenon where polymer
chains link with each other during the production of
organic compounds. Cross-linking is problematic in the
manufacture of adhesive resins because it can cause poor
performance, clarity, and color. The claims also require
mixing “following polymerization without first pelletizing
the pelletizable polyolefin.” ’163 pat., col. 8, ll. 35–36. In
prior manufacturing processes, the polymer was extruded
into pellets and moved to a separate production facility
before proceeding to the next step. These two limitations
are the only limitations disputed.
Before trial, the district court granted Equistar’s mo-
tion for summary judgment of no invalidity with respect
to the on-sale bar defense. At trial, the jury determined
that Westlake had not infringed the asserted claims and
that Westlake had not established that the asserted
claims were anticipated or obvious. After trial, both
parties filed judgment as a matter of law (“JMOL”) mo-
tions. Equistar also filed a Rule 60(b)(3) motion, contend-
ing that Westlake’s expert made misrepresentations in
his testimony. The district court denied the parties’ JMOL
4 EQUISTAR CHEMICALS, LP v. WESTLAKE CHEMICAL
CORPORATION
motions and Westlake’s Rule 60(b)(3) motion and entered
judgment. Equistar appeals the judgment of no infringe-
ment, and Westlake cross-appeals the judgment of no
invalidity. We have jurisdiction pursuant to 28 U.S.C. §
1295(a)(1).
DISCUSSION
I
We first consider the judgment of noninfringement. In
this respect, Equistar contends that the district court
erred in denying its Rule 60(b)(3) motion. Federal Rule of
Civil Procedure 60(b)(3) provides that the court may
relieve a party from a final judgment for “fraud (whether
previously called intrinsic or extrinsic), misrepresenta-
tion, or misconduct by an opposing party.”
We review the denial of the Rule 60(b) motion for
abuse of discretion. Bailey v. Cain, 609 F.3d 763, 767 (5th
Cir. 2010). Equistar argues that the evidence that
Westlake’s expert presented to the jury misrepresented
Westlake’s typical production process by falsely stating
that a particular production run was representative.
Equistar makes this argument based on documents that
Westlake produced during discovery long before trial.
There was no newly discovered evidence. Equistar had all
of the documents before it, and cross-examined the wit-
ness. Equistar extensively argued to the jury that the
production evidence Westlake relied upon was not repre-
sentative. The jury then assessed credibility. There is no
basis for granting a Rule 60(b) motion or for second-
guessing the jury. As the district court concluded, “[a]t
best, the allegations here amount to inconsistencies or
discrepancies in the evidence. There is no evidence of
forgery, lies or perjury.” J.A. 9. The district court did not
abuse its discretion in denying Rule 60(b) relief.
EQUISTAR CHEMICALS, LP v. WESTLAKE CHEMICAL 5
CORPORATION
Equistar alternatively argues that either JMOL or a
new trial is warranted because the jury verdict was not
supported by substantial evidence. We review the denial
of JMOL de novo. Olibas v. Barclay, 838 F.3d 442, 448
(5th Cir. 2016). We review the denial of a new trial for
abuse of discretion. Id. Here, the jury’s verdict is support-
ed by substantial evidence. The only disputed limitation is
whether the accused process “minimizes cross-linking.”
Westlake’s expert testified that Westlake’s production
process does not minimize cross-linking because it exposes
its products to higher temperatures and introduces oxy-
gen, both of which cause cross-linking. Westlake further
provided evidence that rather than minimizing cross-
linking during the process, it removes cross-linking after
the process has occurred. This is sufficient evidence to
support a jury verdict that Equistar did not prove non-
infringement. Thus, the district court did not err in deny-
ing JMOL and the motion for a new trial.
II
The jury found that Westlake had not proven by clear
and convincing evidence that any of the asserted claims
was invalid as anticipated or obvious. Westlake argues
that the district court erred in denying its JMOL motion.
Westlake argues that the record established that the
asserted claims were anticipated as a matter of law by
U.S. Patent No. 5,705,565, referred to as “Hughes.” The
parties only dispute whether Hughes discloses the “mini-
mizing cross-linking” and the “following polymerization”
limitations. Equistar’s witness, Dr. Mirabella, testified at
trial that Hughes does not disclose the limitation of
“minimizing cross-linking” because Hughes only disclosed
minimizing cross-linking with respect to making graft
polymers, which are different than adhesive resins. The
’163 patent, in contrast, only claims minimizing cross-
linking while making adhesive resins. Dr. Mirabella
6 EQUISTAR CHEMICALS, LP v. WESTLAKE CHEMICAL
CORPORATION
testified that graft polymers are produced using different
chemicals and different processes than adhesive resins.
Based on this evidence, a reasonable jury could conclude
that Hughes did not disclose “minimizing cross-linking”
when making adhesive resins.
As to the “following polymerization” limitation, Dr.
Mirabella testified that Hughes does not disclose mixing a
graft polymer and a polyolefin “following polymerization
without first pelletizing” the polyolefin because a person
of ordinary skill would understand “following polymeriza-
tion” to require a single, continuous process. Dr. Mirabella
testified that Hughes does not disclose a single, continu-
ous process. Based on this testimony, a reasonable jury
could conclude that Hughes does not disclose the “follow-
ing polymerization” limitation. Therefore, the jury verdict
that Westlake did not prove anticipation is supported by
substantial evidence.
Westlake also argues that the asserted claims were
obvious in view of Hughes or U.S. Patent No. 5,969,050,
referred to as “Vandevijver.” Both Hughes and
Vandevijver disclose minimizing cross-linking with re-
spect to making graft polymers. First, Westlake argues
that this disclosure renders obvious “minimizing cross-
linking” while manufacturing adhesive resins. However,
as noted earlier, Dr. Mirabella testified that making a
graft polymer uses different chemicals and different
processing conditions than making an adhesive resin.
Second, Equistar’s experts testified that it would be
nonobvious to introduce graft polymers into the continu-
ous manufacturing process because graft polymers react
differently than other additives. In particular, the experts
testified that there were concerns that introducing a graft
polymer into a continuous process would cause contami-
nation. Based on this testimony, substantial evidence
supports the jury verdict that Westlake did not prove that
the asserted claims would have been obvious.
EQUISTAR CHEMICALS, LP v. WESTLAKE CHEMICAL 7
CORPORATION
In sum, we conclude that the district court did not err
in denying Westlake’s motion for judgment of invalidity
as a matter of law as to anticipation and obviousness.
III
Westlake argues that the district court erred in grant-
ing summary judgment of no invalidity based on the on-
sale bar, and that, instead the district court should have
granted summary judgment of invalidity. 1
Equistar manufactured an adhesive resin, labeled
PX3236, which could be made using either a conventional
process or the patented process. It is undisputed that
Equistar produced 345,000 pounds of PX3236 using the
patented process prior to the critical date. However,
Equistar did not fill orders with PX3236 until after the
critical date, and there is no contention here that
Equistar actually sold any product made by the patented
process before the critical date.
Mere stockpiling of a product made by the patented
process is not enough to trigger the on-sale bar. Medicines
Co. v. Hospira, Inc., 827 F.3d 1363, 1377 (Fed. Cir. 2016)
(en banc). Yet an offer before the critical date to sell a
product made by the patented method can create an on-
sale bar. Scaltech, Inc. v. Retec/Tetra LLC, 269 F.3d 1321,
1328 (Fed. Cir. 2001); D.L. Auld Co. v. Chroma Graphics
Corp., 714 F.2d 1144, 1148 (Fed. Cir. 1983). The primary
issue is whether Equistar made an invalidating offer to
sell a product made by the patented method before the
critical date. Westlake also contends that under our
decision in Plumtree Software, Inc. v. Datamize, LLC, 473
F.3d 1152, 1162 (Fed. Cir. 2006), Equistar “performed the
1 The ’163 patent was filed on July 2, 2003, so the
pre-America Invents Act version of 35 U.S.C. § 102 ap-
plies.
8 EQUISTAR CHEMICALS, LP v. WESTLAKE CHEMICAL
CORPORATION
patented method for a promise of future compensation,”
i.e., to enable Equistar to offer products made by the
patented method before the critical date.
We conclude that the district court erred in granting
summary judgment because the record is not sufficient to
grant summary judgment for either side. Contrary to both
parties’ positions, it is readily apparent that there are
disputed issues of fact. The record does not disclose the
exact nature of the allegedly invalidating offers or the
circumstances surrounding the offers, and we think that
in this case the on-sale bar issue is best addressed on a
full record. On remand, the record should be developed
addressing the following questions:
1. What were the offers for sale of the product, and
when were they made?
2. Did the offers require the product to be made by
the patented method?
3. If the offers were accepted, was Equistar obligated
to supply product made by the patented method?
4. Before the critical date, did Equistar decide to fill
orders with the patented method?
5. Before the critical date, could orders be filled with
products produced by the conventional process or
was only product produced by the patented method
available?
6. Was the product produced before the critical date
by the patented method made to enable the pa-
tentee to make offers before the critical date?
In identifying these questions, we express no view as
to the ultimate resolution of the merits, or even whether
the answer to each question is material. The case is
remanded for further proceedings, which could include
EQUISTAR CHEMICALS, LP v. WESTLAKE CHEMICAL 9
CORPORATION
consideration of a renewed motion for summary judgment
or a trial as appropriate.
CONCLUSION
We affirm the judgment of noninfringement and the
judgment of no invalidity based on anticipation and
obviousness. We vacate the grant of summary judgment
as to the on-sale bar defense, and remand for further
proceedings.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.