United States Court of Appeals for the Federal Circuit
2006-1633
SINORGCHEM CO., SHANDONG,
Appellant,
v.
INTERNATIONAL TRADE COMMISSION,
Appellee,
and
FLEXSYS AMERICA L.P.,
Intervenor.
Carter G. Phillips, Sidley Austin LLP, of Washington, DC, argued for appellant.
With him on the brief were Stephen B. Kinnaird, Stanton T. Lawrence, III, and Paul J.
Zegger. Of counsel was Ruthanne Mary Deutsch. Of counsel on the brief were Manni Li,
Perkins Coie LLP, of Santa Monica, California, and Joan Ellis, Venable LLP, of
Washington, DC.
James A. Worth, Attorney, Office of the General Counsel, United States
International Trade Commission, of Washington, DC, argued for appellee. With him on the
brief were James M. Lyons, General Counsel, and Wayne W. Herrington, Assistant
General Counsel. Of counsel was Neal J. Reynolds, Attorney.
Mark G. Davis, McDermott, Will & Emery LLP, of Washington, DC, argued for
intervenor. With him on the brief were Bureden J. Warren, of Washington, DC, and
Leonard D. Conapinski, of Chicago, Illinois. Of counsel on the brief was Eric C. Cohen,
Katten Muchin Rosenman LLP, of Chicago, Illinois. Of counsel were Raphael V. Lupo,
and Natalia V. Blinkova, McDermott, Will & Emery LLP, of Washington, DC; and David C.
Minc, Flexsys America L.P., of Akron, Ohio.
Appealed from: United States International Trade Commission
United States Court of Appeals for the Federal Circuit
2006-1633
SINORGCHEM CO., SHANDONG,
Appellant,
v.
INTERNATIONAL TRADE COMMISSION,
Appellee,
and
FLEXSYS AMERICA L.P.,
Intervenor.
___________________________
DECIDED: December 21, 2007
___________________________
Before NEWMAN and DYK, Circuit Judges, and YEAKEL, District Judge. *
Opinion for the court filed by Circuit Judge DYK. Dissenting opinion filed by Circuit
Judge NEWMAN.
DYK, Circuit Judge.
Appellant Sinorgchem Co., Shandong (“Sinorgchem”) appeals from a limited
exclusion order of the International Trade Commission (“ITC”) based on a finding that
Sinorgchem infringed four method claims of U.S. Patents 5,117,063 (“the ’063 patent”)
and 5,608,111 (“the ’111 patent”) owned by intervenor Flexsys America L.P. (“Flexsys”).
*
Honorable Lee Yeakel, District Judge, United States District Court for the
Western District of Texas, sitting by designation.
In re Certain Rubber Antidegradants, Components Thereof, and Products Containing
Same, No. 337-TA-533 (I.T.C. July 13, 2006) (commission opinion). Because the ITC’s
determination of infringement was based on an erroneous construction of the term
“controlled amount” in the claims at issue, and under the correct construction
Sinorgchem does not literally infringe, we vacate and remand.
BACKGROUND
Sinorgchem produces in China and sells for importation to the United States a
compound known as 6PPD, a rubber antidegradant that counters the deteriorative effect
of various environmental factors on tires. 6PPD is made from an intermediate
compound, 4-aminodiphenylamine, or 4-ADPA, which Sinorgchem also makes in China.
In turn, Sinorgchem makes the intermediates of 4-ADPA using a process that reacts
aniline and nitrobenzene. In that reaction, aniline is a solvent, tetramethylammonium
hydroxide (“TMAH”) is a base, and water is a protic material. The term “protic material”
refers to proton donors. The amount of water used in the condensation reaction of
nitrobenzene with aniline is at least 10 to 15% water throughout the reaction.
The issue is whether Sinorgchem’s method for producing 6PPD and 4-ADPA
infringes the asserted method claims of the ‘063 and ’111 patents, owned by Flexsys.
The ‘111 patent issued from a continuation-in-part application to the application that led
to the ‘063 patent and is subject to a terminal disclaimer based on the earlier filed ‘063
patent. The specification of the ‘111 patent includes additional Examples 13 through 21
but is otherwise substantially identical to the ‘063 patent specification. The parties
2006-1633 2
agree that the term “controlled amount” in both patents should receive the same
construction.
At issue are independent claims 30 and 61 of the ‘063 patent and claims 7 and
11 of the ‘111 patent. These claims describe methods for producing 4-ADPA and
6PPD. Claim 61 of the ‘063 patent is representative:
61. A method of producing alkylated p-phenylenediamines [6PPD]
comprising the steps of:
a) bringing aniline and nitrobenzene into reactive contact in a
suitable solvent system;
b) reacting the aniline and nitrobenzene in a confined zone at a
suitable temperature, and in the presence of a suitable base and
controlled amount of protic material to produce one or more 4-ADPA
intermediates;
c) reducing the 4-ADPA intermediates to produce 4-ADPA; and
d) reductively alkylating the 4-ADPA of Step c) [which produces
6PPD].
‘063 patent col.15 ll.34-46. The central question is whether Sinorgchem’s method of
producing 4-ADPA intermediates satisfies the claim limitations of step (b). There is no
dispute that Sinorgchem utilizes steps (a), (c), and (d). The ITC and the private parties
particularly focus on a portion of the specification that states: “A ‘controlled amount’ of
protic material is an amount up to that which inhibits the reaction of aniline with
nitrobenzene, e.g., up to about 4% H2O based on the volume of the reaction mixture
when aniline is utilized as the solvent.” Id. at col.4 ll.48-52.
On February 23, 2005, Flexsys filed a complaint with the ITC alleging, among
other things, that Sinorgchem was infringing claims 30 or 61 of the ‘063 patent or claims
7 or 11 of the ‘111 patent, and had violated subsection (a)(1)(B) of section 337 of the
Tariff Act of 1930, which makes unlawful the importation of articles that either infringe a
valid U.S. patent or are produced by a process covered by the claims of a valid U.S.
2006-1633 3
patent. 19 U.S.C. § 1337(a)(1)(B) (2000). The administrative law judge (“ALJ”) issued
a final initial determination (“final ID”) on February 17, 2006, holding that Sinorgchem
had infringed the claims and violated section 337. In re Certain Rubber Antidegradants,
No. 337-TA-533 (I.T.C. Feb. 17, 2006) (final initial and recommended determinations).
Central to the dispute before the ALJ was the claim construction of the term
“controlled amount of protic material” found in each of the asserted independent claims.
Sinorgchem urged the ALJ to adopt a construction of “controlled amount of protic
material” as “up to about 4% water in the reaction mixture when aniline is the solvent.”
J.A. at 108-09. Under this construction, Sinorgchem does not infringe because its
process uses more than 4% water.
Flexsys argued that “controlled amount” meant “that the amount of protic material
should be controlled between an upper limit and a lower limit,” where the upper limit
was “that amount beyond which the reaction between nitrobenzene and aniline is
inhibited,” and the lower limit was “that amount below which the desired selectivity for 4-
ADPA intermediates is not maintained.” J.A. at 108. Under Flexsys’s claim
construction, the Sinorgchem process would infringe.
The ALJ rejected Sinorgchem’s construction and adopted Flexsys’s construction
of the term “controlled amount.” Based on this construction, the ALJ concluded that (1)
Sinorgchem’s processes for making 4-ADPA and 6PPD literally infringed the asserted
claims, (2) the claims as construed were not invalid as indefinite, and (3) the claims
were not invalid as obvious in view of the prior art.
On appeal, the ITC rejected the construction of “controlled amount” urged by
Flexsys and adopted by the ALJ. It found that the patentee in the specification had
2006-1633 4
acted as his own lexicographer and expressly defined the meaning of “controlled
amount” of protic material as “an amount up to that which inhibits the reaction of aniline
with nitrobenzene.” J.A. at 227. However, it excluded from that construction the second
clause of the sentence, which stated “e.g., up to about 4% H2O based on the volume of
the reaction mixture when aniline is utilized as the solvent.” The ITC read the 4% water
limit as inconsistent with other general language found in the same paragraph (quoted
below), which the ITC interpreted as teaching that the amount of protic material can
change based on other reaction conditions, even where aniline is used as the solvent.
Similarly, the ITC read the 4% limit as inconsistent with the reaction in Example 10,
where a calculated 10% water level was utilized.
The ITC construed “controlled amount” as specifying an upper limit determined
by when protic material “inhibits the reaction of aniline with nitrobenzene.” J.A. at 227.
The ITC found that “inhibits” meant inhibits “to the extent where the reaction is no longer
significant,” J.A. at 232, and that “significant” in turn meant that the “minimum
acceptable conversion rate would be more than 12% but less than 63%,” J.A. at 233-34.
In determining what was “significant,” the ITC looked to Example 8 for the conversion
rate of nitrobenzene at which a reaction would be considered significant. It found that
when DMSO was the solvent, the conversion rate of nitrobenzene drops from 63 to 12%
when the amount of water increases from 6 to 9.75%. Sinorgchem’s process, the ITC
determined, yields a conversion rate of around 85%. Under this new construction of the
disputed term “controlled amount,” the ITC likewise found infringement.
2006-1633 5
The ITC next concluded that the claims as construed were not invalid as
indefinite. Although the ITC rejected the 4% water limit, it found that “controlled
amount” was not indefinite since an upper limit – where the amount of protic material
yields an acceptable conversion rate between 12 and 63% – could be found in the
specification. Given this definition of “controlled amount,” the ITC rejected
Sinorgchem’s argument that the claims were indefinite.
As to obviousness, the ITC held that while the asserted prior art – a 1903
German article published by Wohl (the “Wohl” reference) – disclosed the reaction of
aniline with nitrobenzene, the formation of a small amount of intermediate, and the
presence of water as a protic material, it failed to disclose or teach “whether or how
water or any other protic material affects the conversion of nitrobenzene.” J.A. at 245.
Sinorgchem timely appealed the ITC’s decision to our court. We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(6).
DISCUSSION
I
The main issue on appeal is the meaning of the claim term “controlled amount.”
The parties here agree that “controlled amount” does not have any well-accepted
meaning in the field of chemistry. Sinorgchem contends that the ITC misconstrued the
term “controlled amount” and on that basis erred in finding infringement. Claim
construction is a question of law which we review de novo. Cybor Corp. v. FAS Techs.,
Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc).
Our opinions have repeatedly encouraged claim drafters who choose to act as
their own lexicographers to clearly define terms used in the claims in the specification.
2006-1633 6
See, e.g., CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)
(“[A] claim term will not receive its ordinary meaning if the patentee acted as his own
lexicographer and clearly set forth a definition of the disputed claim term in . . . the
specification . . . .”); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996) (“The specification acts as a dictionary when it expressly defines terms used in
the claims or when it defines terms by implication.”).
The approach of those cases was endorsed in Phillips v. AWH Corp., 415 F.3d
1303, 1316 (Fed. Cir. 2005) (en banc). In Phillips, we described the specification as
“the single best guide to the meaning of a disputed term.” Id. at 1315 (citing Vitronics,
90 F.3d at 1582). We confirmed that “our cases recognize that the specification may
reveal a special definition given to a claim term by the patentee that differs from the
meaning it would otherwise possess. In such cases, the inventor's lexicography
governs.” Id. at 1316.
Here, the drafters have done just that. The specification states:
A “controlled amount” of protic material is an amount up to that which
inhibits the reaction of aniline with nitrobenzene, e.g., up to about 4% H2O
based on the volume of the reaction mixture when aniline is utilized as the
solvent.
‘063 patent col.4 ll.48-52. The term “controlled amount” is set off by quotation marks—
often a strong indication that what follows is a definition. See, e.g., Cultor Corp. v. A.E.
Staley Mfg. Co., 224 F.3d 1328, 1331 (Fed. Cir. 2000) (finding that the claim term
“water-soluble polydextrose” was expressly defined in the specification). Moreover, the
word “is,” again a term used here in the specification, may “signify that a patentee is
serving as its own lexicographer.” Abbott Labs. v. Andrx Pharms., Inc., 473 F.3d 1196,
1210 (Fed. Cir. 2007). As such, the patentee must be bound by the express definition.
2006-1633 7
See Durel Corp. v. Osram Sylvania Inc., 256 F.3d 1298, 1303-04 (Fed. Cir. 2001). Here
the drafter clearly, deliberately, and precisely defined the term “controlled amount” of
protic material as “an amount up to that which inhibits the reaction of aniline with
nitrobenzene, e.g., up to about 4% H2O based on the volume of the reaction mixture
when aniline is utilized as the solvent.” 1 Elsewhere in the same paragraph, the
specification again refers to the 4% limit. 2
1
Flexsys cites Conoco, Inc., v. Energy & Environmental International, L.C.,
460 F.3d 1349, 1358 (Fed. Cir. 2006), Renishaw PLC v. Marposs Societa’ per Azioni,
158 F.3d 1243, 1249 (Fed. Cir. 1998), and Modine Manufacturing Co. v. International
Trade Commission, 75 F.3d 1545, 1551 (Fed. Cir. 1996) for the proposition that a claim
construction should not import numerical limits into a claim that does not contain such
limits. But cases like these have no application here, where the numerical limit is
included within an express definition set forth in the specification.
2
The specification states:
Control of the amount of protic material present in the reaction is
important. Generally, when the reaction is conducted in aniline, water
present in the reaction in an amount greater than about 4% H2O, (based
on volume of the reaction mixture) inhibits the reaction of the aniline with
the nitrobenzene to an extent where the reaction is no longer significant.
Reducing the amount of water to below the 4% level causes the reaction
to proceed in an acceptable manner. When tetramethylammonium
hydroxide is utilized as a base with aniline as the solvent, as the amount
of water is reduced further, e.g., down to about 0.5% based on the volume
of the reaction mixture, the total amount of 4-nitrodiphenylamine and 4-
nitrosodiphenylamine increases with some loss in selectivity so that more
2-nitrodiphenylamine is produced but still in minor amounts. Thus, the
present reaction could be conducted under anhydrous conditions. A
"controlled amount" of protic material is an amount up to that which
inhibits the reaction of aniline with nitrobenzene, e.g., up to about 4% H2O
based on the volume of the reaction mixture when aniline is utilized as the
solvent. The upper limit for the amount of protic material present in the
reaction varies with the solvent. For example, when DMSO is utilized as
the solvent and tetramethylammonium hydroxide [TMAH] is utilized as the
base, the upper limit on the amount of protic material present in the
reaction is about 8% H2O based on the volume of the reaction mixture.
When aniline is utilized as a solvent with the same base [TMAH], the
upper limit is 4% H2O based on the volume of the reaction mixture. In
2006-1633 8
The ITC agreed that the patentee had expressly defined the term “controlled
amount” in the specification but held that the language “e.g., up to about 4% H2O based
on the volume of the reaction mixture when aniline is utilized as the solvent” should not
be considered part of that definition for two reasons. Neither of these reasons is
persuasive. First, the ITC dismissed the 4% limit as merely an example that did not
apply to all situations in which aniline was used as the solvent. The ITC relied
particularly on the emphasized language in the following passage:
When aniline is utilized as a solvent with the same base [TMAH], the
upper limit is 4% H2O based on the volume of the reaction mixture. In
addition, the amount of protic material tolerated will vary with type of base,
amount of base, and base cation, used in the various solvent systems.
However, it is within the skill of one in the art, utilizing the teachings of the
present invention, to determine the specific upper limit of the amount of
protic material for a specific solvent, type and amount of base, base cation
and the like.
‘063 patent col.4 ll.58-68 (emphasis added). The ITC found that this language made
clear that the “e.g., up to about 4% H2O” language was used in the specification as an
example and not a definition of the amount of water permitted when aniline is the
solvent. 3
addition, the amount of protic material tolerated will vary with type of base,
amount of base, and base cation, used in the various solvent systems.
However, it is within the skill of one in the art, utilizing the teachings of the
present invention, to determine the specific upper limit of the amount of
protic material for a specific solvent, type and amount of base, base cation
and the like. The minimum amount of protic material necessary to
maintain selectivity of the desired products will also depend on the
solvent, type and amount of base, base cation and the like, that is utilized
and can also be determined by one skilled in the art.
‘063 patent col.4 I.31 – col.5 l.4 (emphases added).
3
On appeal, the ITC relies on expert testimony that “a person of skill in the
art would recognize the example of 4% water to be limited to the conditions of room
2006-1633 9
We disagree. This vague language cannot override the express definitional
language. We have frequently found that a definition set forth in the specification
governs the meaning of the claims. See, e.g., Cultor Corp., 224 F.3d at 1330. “When
the specification explains and defines a term used in the claims, without ambiguity or
incompleteness, there is no need to search further for the meaning of the term.”
Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998).
When aniline is used as the solvent, the express definition is neither ambiguous nor
incomplete – the “controlled amount” is “up to about 4% H2O based on the volume of
the reaction mixture” – and we need look no further for its meaning. Nor is the
specification passage relied on by the ITC inconsistent with the express definition of
“controlled amount,” since the passage refers generally to at least six different solvents
while the definition refers specifically to reactions in which aniline is the solvent.
Moreover, the specification sets forth a different limit of “about 8% water” for the
"controlled amount" of protic material when DMSO is the solvent. Quite tellingly, aniline
and DMSO were the only two solvents of the six solvents mentioned in the specification
for which an express numerical limit was given for the “controlled amount.” The quoted
“will vary” language appears to refer to the four other solvents for which a specific
percentage was not provided.
temperature and ambient pressure.” Br. of Appellee at 22. We attribute no weight to
that testimony because the experts did not identify any evidence that those skilled in the
art would recognize that “controlled amount,” or any term used in the specification, has
an accepted meaning in the field of chemistry. Under such circumstances, testimony as
to how one skilled in the art would interpret the language in the specification is entitled
to little or no weight.
2006-1633 10
Second, the ITC found that the 4% language was inconsistent with Example 10
(which appears identically in both the ‘063 and the ‘111 patents), a “preferred
embodiment,” which uses more than 10% water in a reaction where aniline is the
solvent. Despite the high level of water used in Example 10, the reaction yields a high
percentage (92.8%) of 4-ADPA intermediates. On appeal, both the ITC and Flexsys
support the ITC’s decision by relying on statements in our case law that we do “not
normally interpret a claim term to exclude a preferred embodiment,” Primos, Inc., v.
Hunter’s Specialties, Inc., 451 F.3d 841, 848 (Fed. Cir. 2006), as would be the case if
the 4% limit were applied to the claims. This rule has particular force where the claims
as construed do not encompass any disclosed embodiments. See Johns Hopkins Univ.
v. CellPro, Inc., 152 F.3d 1342, 1355 (Fed. Cir. 1998) (“A patent claim should be
construed to encompass at least one disclosed embodiment in the written description
portion of the patent specification.”) (emphasis added). This is not the case here.
Example 10 is merely one of twenty-one distinct examples set out in the two
specifications, all of which are described as “preferred embodiment[s].” ‘111 patent
col.8 ll.5-8.
Where, as here, multiple embodiments are disclosed, we have previously
interpreted claims to exclude embodiments where those embodiments are inconsistent
with unambiguous language in the patent’s specification or prosecution history. Telemac
Cellular Corp. v. Topp Telecom, lnc., 247 F.3d 1316, 1326 (Fed. Cir. 2001); see also N.
Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335 (Fed. Cir. 2005). In
Telemac, the district court looked to the specification to determine the meaning of the
claim term “communication means,” since that term was written in the claim in “means-
2006-1633 11
plus-function” form. 247 F.3d at 1324. Telemac challenged the district court’s
construction on the basis that it left certain embodiments inoperable. Id. at 1326. We
held that the description of those embodiments did not call for a different construction.
Id. Instead, we held that those embodiments “could not provide the structure or
equivalent structure for performing the claimed function” and were therefore outside of
the scope of the claims. Id. See also Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1327
(Fed. Cir. 2002) (“where the prosecution history requires a claim construction that
excludes some but not all of the preferred embodiments, such a construction is
permissible”) (emphasis added).
It is moreover significant that Example 10 does not specifically disclose the
amount of water used in the reaction. Instead, the amount of water used in that reaction
can only be determined by a complex calculation. 4 In stark contrast, the patentees in
Tables 2 and 6, accompanying Examples 3 and 8 respectively, specifically disclose the
amount of water used in those reactions. ‘063 patent col.9 ll.32-48, col.11 ll.25-33. In
Example 3, for example, the amount of water added to the reaction where aniline is the
solvent ranges from 2.2 to 4.7%, and illustrates the effect of water on the yield of 4-
NDPA and p-NDPA. Table 2 shows that the yield dropped from 0.18 mmole to 0.05
mmole, an unacceptably low level, as the amount of water added was increased from
4
Flexsys’s supplemental filing in response to a question raised at oral
argument described how the calculation is conducted. Letter from Mark G. Davis, Sept.
14, 2007. First, one determines the total volume of the reaction mixture from the known
volumes of aniline, nitrobenzene, water added, and base. Next, one determines the
total mass of water in the base and converts that number to volume of water. By
summing the volume of the water added to the volume of water in the base, one can
determine the total volume of water in the reaction. Water volume percentage is thus
determined by dividing the total amount of water in the reaction by the total volume of
the reaction mixture.
2006-1633 12
3.45 to 4.7%. Similarly, Example 8 illustrates the effect of the amount of water added to
a reaction where DMSO is the solvent. Water added there ranged from 2.3 to 14.7%,
and again shows that the yield dropped to an unacceptably low level when more than
8% water is added. Significantly, Example 10 is not even directed toward illustrating the
control of the amount of protic material to be used in the reaction. Rather, its stated
purpose is to illustrate “the reaction of aniline, nitrobenzene and tetramethylammonium
hydroxide dihydrate under anaerobic conditions at 50° C.” ‘063 patent col.11 ll.61-63.
Examples 3 and 8, on the other hand, are explicitly directed toward the control of the
amount of protic material:
“[Example 3] illustrates that control of the amount of protic material
present in the reaction is important.”
...
“[Example 8] illustrates the effect that the amount of protic material
present in or added to the reaction has on the extent of conversion and
yields of 4-NDPA and p-NDPA.”
Id. at col.9 ll.20-21, col.11 ll.10-13. Under these circumstances, the fact that the
calculated amount of water in Example 10 exceeds 4% where aniline is used as the
solvent is entitled to little weight, and cannot override the clear definitional language set
forth in the specification. 5
Flexsys further argues that the doctrine of claim differentiation supports the ITC’s
refusal to read into the claims the 4% water limit. We have characterized the doctrine of
5
All parties agreed before the ITC that the disputed term “controlled
amount” must be construed to mean the same thing in the claims of the ‘111 patent as
in the ‘063 patent. Additional examples included in the specification of the continuation-
in-part application that led to the ‘111 patent cannot alter the meaning of the term as it
appears in the ‘063 patent.
2006-1633 13
claim differentiation generally as the “presumption that each claim in a patent has a
different scope.” Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380
(Fed. Cir. 2006) (internal citation omitted). Flexsys points out that independent claim 30
of the ‘063 patent does not specify a numerical limit for “controlled amount of protic
material,” while dependent claim 41 recites “up to about 4 v/v % water.” 6 Claim 30
states:
30. A method of producing 4-aminodiphenylamine (4-ADPA)
comprising the steps of:
a) bringing aniline and nitrobenzene into reactive contact in a
suitable solvent system;
b) reacting the aniline and nitrobenzene in a confined zone at a
suitable temperature, and in the presence of a suitable base and
controlled amount of protic material to produce one or more 4-ADPA
intermediates; and
c) reducing the 4-ADPA intermediates under conditions which
produce 4-ADPA.
‘063 patent col.14 ll.16-26 (emphases added). Claim 41 states:
Method of claim 30 wherein said solvent system includes aniline and
up to about 4 v/v % water based on the total volume of the reaction
mixture.
Id. at col.14 ll.50-52 (emphasis added).
Thus, according to Flexsys, interpreting “controlled amount” in claim 30 to
have an upper limit of “e.g., up to about 4% H2O . . . when aniline is utilized as the
6
Flexsys also points to the same relationship between non-asserted
independent claims 1 and 61 and dependent claims 12 and 72 of the ‘063 patent. For
the reasons described in the text, the existence of these dependent claims is also not
persuasive.
Flexsys, but not the ITC, relies in passing on claim 29 of the ‘111 patent,
which, in addition to specifying that the process involves “reacting” in the presence of a
“controlled amount” of protic material, states that “the amount of protic material present
at the beginning of the reaction is up to about 13.8 volume % water based on the total
volume of the reaction mixture.” Flexsys has not explained how the presence of 13.8%
2006-1633 14
solvent” would render the scope of the independent claim and the dependent claim
identical. Flexsys’s argument might have some merit if claim 30 referred only to
aniline solvents. But it does not. Claim 30 refers generally to “a suitable solvent
system,” which, as the specification indicates, can include “dimethylformamide,
aniline, pyridine, nitrobenzene, nonpolar hydrocarbon solvents such as toluene and
hexane, ethyleneglycol dimethyl ether, diisopropyl ethylamine, and the like, as well
as mixtures thereof.” ‘111 patent col.4 ll.24-27. Because claim 41 refers merely to a
subset of the solvent systems described in claim 30, and is significantly narrower in
scope, the claims are not rendered identical and present no claim differentiation
problem. Therefore, Flexsys’s claim differentiation argument is without merit.
For these reasons, we hold that the correct claim construction of the term
“controlled amount” is that defined expressly in the specification, namely: “an
amount up to that which inhibits the reaction of aniline with nitrobenzene, e.g., up to
about 4% H2O based on the volume of the reaction mixture when aniline is utilized
as the solvent.”
II
In light of the correct claim construction of “controlled amount” it is clear that
there is no literal infringement. Based on the specification’s express definition of
“controlled amount,” each asserted claim can only encompass processes that utilize at
most 4% water when aniline is the solvent. There is no dispute that Sinorgchem always
uses more than 4% water when it reacts aniline with nitrobenzene, and thus there can
be no literal infringement of any of the asserted claims. Because the ITC found that
water at the beginning of the reaction is necessarily inconsistent with a “controlled
2006-1633 15
Sinorgchem literally infringed Flexsys’s patents, it did not reach the question whether
Sinorgchem’s process would infringe under the doctrine of equivalents. Although
Flexsys argued below that under Sinorgchem’s construction of “controlled amount,” the
Sinorgchem process would infringe under the doctrine of equivalents, J.A. at 236,
neither Flexsys nor the ITC contends here that Sinorgchem infringes under the doctrine
of equivalents when the claims are construed to limit the controlled amount to 4% water
when aniline is used as the solvent. On remand, the ITC should address the claim of
doctrine of equivalents infringement in light of our holding that there was no literal
infringement. See Exxon Chem. Patents, Inc. v. Lubrizol Corp., 137 F.3d 1475, 1479
(Fed. Cir. 1998).
III
Sinorgchem also argues that the asserted claims are invalid as indefinite and
obvious. Under Cardinal Chemical, in an appeal from a district court action, once we
have addressed infringement we generally must nonetheless address counterclaims of
invalidity. See Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83 (1993). Since the
invalidity issues before the ITC were raised only as affirmative defenses, decisions on
these issues would be necessary only if on remand there was a determination of
doctrine of equivalents infringement. See MEMC Elec. Materials, Inc. v. Mitsubishi
Materials Silicon Corp., No. 2006-1305, -1326, slip op. at 11, 2007 WL 2728376, at *5
(Fed. Cir. Sept. 20, 2007). Under these circumstances, we do not address the invalidity
issues in this appeal.
amount” of 4% during the operative part of the reaction.
2006-1633 16
CONCLUSION
For the foregoing reasons, the decision below is VACATED and REMANDED.
No costs.
2006-1633 17
United States Court of Appeals for the Federal Circuit
2006-1633
SINORGCHEM CO., SHANDONG,
Appellant,
v.
INTERNATIONAL TRADE COMMISSION,
Appellee,
and
FLEXSYS AMERICA L.P.,
Intervenor.
NEWMAN, Circuit Judge, dissenting.
I do not join the panel majority in its reversal of the Commission's finding of literal
infringement. No error of fact or law has been shown in the Commission's determination;
indeed the Commission's findings are scarcely mentioned. Instead, my colleagues have
made findings contrary to the detailed and unchallenged text of the patent specifications,
and have construed the claims so that they exclude a major part of the invention described
in the patents. I must, respectfully, dissent.
The basic principle of determining the scope of patent claims is that the claims
provide the legal definition of the invention that is patented, based on the descriptive text
and controlled by the prosecution history, with cognizance of the prior art. A patentee can
reduce or disclaim claim scope to cover less than what is described in the specification.
Here, however, there was no disclaimer of the scope set forth in the patent specifications
and claims; there is no prior art to limit the claims in the way selected by the panel majority;
and there is no reason to insert an absolute numerical limit of "about 4%" protic material
into the claims that do not contain a numerical limit, when the specifications of both patents
demonstrate significantly higher percentages. There was no evidence contradicting the
evidence of the experts concerning the range of protic material set forth in the
specifications' text and illustrated in the specific examples.
The Commission correctly construed the "controlled amount of protic material" to
match the content of the specifications and claims. The Commission's findings concerning
the amount of protic material shown in the specifications are supported by substantial
evidence, the statutory standard for review of the agency's findings, 19 U.S.C. '1337(c),
and its claim construction is in accordance with law. The panel majority has seriously erred
in discarding the Commission's findings and conclusions, for they are not only supportable
on the required standard of review, but they also are correct.
The products at issue are N-(1,3-dimethylbutyl)-N'-phenyl-p-phenylenediamine (6-
PPD) and 4-aminodiphenylamine (4-ADPA), from which 6-PPD is derived. The complaint
charged that the 4-ADPA and 6-PPD are produced using a process that is covered by
claims 30 and 61 of Patent No. 5,117,063 and claims 7 and 11 of Patent No. 5,608,111.
The '111 patent issued from a continuation of an application that led to Patent No.
5,453,541 (not in suit here), which was a continuation-in-part to the application that led to
the '063 patent. The patents describe and claim conducting the process by the direct
reaction of aniline and nitrobenzene in the presence of a solvent, a base and a "controlled
2006-1633 2
amount" of protic material as set forth in step (b) of the overall process. Claim 61 of the
'063 patent is representative:
61. A method of producing alkylated p-phenylenediamines comprising the
steps of:
a) bringing aniline and nitrobenzene into reactive contact in a suitable
solvent system;
b) reacting the aniline and nitrobenzene in a confined zone at a
suitable temperature, and in the presence of a suitable base and controlled
amount of protic material to produce one or more 4-ADPA intermediates;
c) reducing the 4-ADPA intermediates under conditions which
produce 4-ADPA; and
d) reductively alkylating the 4-ADPA of Step c).
The patents explain that the presence of a controlled amount of protic material produces
the environmental advantage of avoiding halide waste products, and reduces
manufacturing and material costs because it permits the direct reaction of aniline and
nitrobenzene, instead of requiring the preparation of intermediate compounds as in the prior
art.
The claims in suit do not include numerical limits for the "controlled amount" of protic
material, and the specifications define the amount as varying with the solvent, base, base
cation, and the like. The '063 patent states (with emphases added):
A "controlled amount" of protic material is an amount up to that which inhibits
the reaction of aniline with nitrobenzene, e.g., up to about 4% H2O based on
the volume of the reaction mixture when aniline is utilized as the solvent. The
upper limit for the amount of protic material present in the reaction varies
with the solvent. For example, when DMSO is utilized as the solvent and
tetramethylammonium hydroxide is utilized as the base, the upper limit on the
amount of protic material present in the reaction is about 8% H2O based on
the volume of the reaction mixture. When aniline is utilized as a solvent with
the same base, the upper limit is 4% H2O based on the volume of the
reaction mixture. In addition, the amount of protic material tolerated will vary
with type of base, amount of base, and base cation, used in the various
solvent systems. However, it is within the skill of one in the art, utilizing
the teachings of the present invention, to determine the specific upper
2006-1633 3
limit of the amount of protic material for a specific solvent, type and
amount of base, base cation and the like.
Id., col. 4, lines 48-68. The "teachings of the present invention" are extensive and detailed.
The Commission defined "controlled amount" as "an amount up to that which inhibits the
reaction of aniline and nitrobenzene." This definition is in accord with the patent
specifications, but it is rejected by the panel majority, who limit "controlled amount" to the
part of the patentee's statement about using up to 4% water where there is excess aniline
and no other solvent, and exclude all of the other variables that affect the amount of water,
as demonstrated in the specifications' text and specific examples. The panel majority
promotes the number that is described for one condition, to a limit under all conditions,
contrary to the specifications. It is not the judicial role to change the invention. Although
the panel majority acknowledges that limits above 4% "could be found in the specification"
and were so found by the Commission, the panel majority discards this undisputed fact.
The patents describe the conditions in which 4-ADPA intermediates are produced by
the direct reaction of aniline and nitrobenzene. The '063 patent specification includes
twelve specific examples, varying the amount and nature of the base, the solvent, the
cation, the protic material, and the reaction conditions. Additional examples are in the
continuing '111 patent, illustrating further variation in the protic material. In the '063 patent,
Example 1 was conducted at room temperature, using tetramethylammonium hydroxide
(TMAH) dihydrate 1 as the base. Example 2 shows the effect of varying the temperature.
Example 3 shows varying the amount of water from 2.2 to 4.7%, and also uses methanol
1 TMAH dihydrate contains two molecules of water per molecule of
tetramethylammonium hydroxide. The specific Examples in the patents variously add water
in liquid form, or as the dihydrate, or both together.
2006-1633 4
as the protic material. In Example 3, water in amounts of 0, 10, 50 and 100 μL is added to
the reaction. The percentage of water in the reaction includes both this added water and
the water introduced by the TMAH dihydrate. See '063 patent, col. 9, tbl.2 note. The other
Examples show that the amount of water present in the dihydrate is part of the protic
material that is present and is calculated as such. See id. col. 11, lines 14-18 & tbl.6.
Example 4 shows the use of various solvents; Example 5 is directed to various
bases; Example 6 is a comparison with a prior art method; Example 7 varies the ratios of
the reactants; Example 8 shows varying the total amount of water in steps of 2.3%, 3.5%,
6%, 9.75%, and 14.7%; Example 9 shows varying the amount of the TMAH dihydrate base
while maintaining the amount of added protic material constant at 4.7%. Example 10
shows anaerobic conditions at 50EC and contains 10% water 2 from the dihydrate; the
2 My colleagues call it a "complex calculation" to calculate the percentage of
water in the total volume of reactants, maj. op. n.7, and decline to consider this evidence;
the ALJ, the Commission, and everyone else in the record and briefs treat this calculation
as routine. In response to a question from the bench during oral argument, counsel
submitted the following explanation:
Specifically, the question was asked of how one skilled in the art would be
able to calculate the percentage of water in the reaction disclosed in Example
10 of the patents-in-suit.
Example 10 discloses "the reaction of aniline, nitrobenzene and
tetramethylammonium hydroxide dihydrate ("TMAH dihydrate") under
anaerobic conditions at 50°C." JA 000269. Col. 11, line 64-Col. 12, line 1.
The term "dihydrate" means that there are two water molecules for each
molecule of TMAH. JA 000561, lines 13-22. Example 10 discloses that 0.42
moles of TMAH dihydrate are present in the reaction. Because there are two
moles of water (dihydrate) for one mole of TMAH, there are .84 moles of
water in the reaction. JA 000567, lines 4-20. Because the amount of water
and of aniline and nitrobenzene and TMAH are disclosed in Example 10, the
percentage of water in the reaction can be calculated using the method
described at JA 000568, line 6 through JA 000569, line 21. The method of
calculating the amount of water in a reaction where the amount of TMAH
2006-1633 5
Commission describes this example as a preferred embodiment. Example 11
demonstrates the production of the tetramethylammonium ion salt of 4-NDPA and p-NDPA;
Example 12 illustrates the conversion of 4-ADPA to produce 6-PPD.
In the '111 patent, additional examples, particularly Examples 13 and 15, again show
the presence of significantly more than 4% water. The panel majority declines to consider
the additional examples, which show 10.8% water for Example 13 and 13.8% water for
Example 15. The Commission had no need to rely on the additional examples because it
found the '063 examples sufficient. Nor is the issue one of "new matter," in using the
continuation-in-part to construe claims of an ancestor patent, for the charge is infringement
of both or either patent.
The specifications explain the effect of each variable, and state that "the amount of
protic material tolerated will vary with type of base, amount of base, and base cation, used
n the various solvent systems." '063 patent, col. 4 lines 61-63. The specifications further
explain that "[T]he reactions can be successfully performed by conventional modifications
known to those skilled in the art, e.g., by appropriate adjustments in temperature, pressure
and the like, by changing to alternative conventional reagents such as other solvents or
other bases, by routine modification of reaction conditions, and the like, or other reactions
dihydrate, aniline and nitrobenzene are known is also found in the
prosecution history of the '111 patent, as is discussed in the Final Initial and
Recommended Determination at JA 000137-138. Sinorgchem's experts
agreed that Example 10 has 9 to 10 percent water, and that it could be
calculated. JA 000151.
Letter from counsel Mark G. Davis dated September 14, 2007. The experts were in
agreement that Example 10 shows the presence of 9-10% water. It is undisputed that a
person of ordinary skill in the field of the invention can readily calculate the amount of
water.
2006-1633 6
disclosed herein or otherwise conventional, will be applicable to the method of this
invention." Id. col. 6, lines 35-43.
The panel majority, in discussing some of the examples, ignores the dihydrate that is
present throughout the examples, and finds that only Example 10 of the '063 patent can be
viewed as having more than 4% water. The majority's complaint that Example 10 "is not
even directed toward illustrating the control of the amount of protic material to be used in
the reaction," maj. op. at 13, is inapt, for Example 10 shows 92.8% yield of the desired 4-
ADPA intermediates in conditions that include 9-10% of protic material. '063 patent, col.
12, lines 11-13. Thus my colleagues find "clear definitional language [of a 4% limit] set
forth in the specification" although that number is in a sentence with the signal "for
example," and ignore the text and examples showing a higher range. These erroneous
appellate findings of scientific fact directly contradict the findings of the Commission, made
upon extensive and detailed evidence and argument on the content of the specifications,
including the variables discussed and exemplified in the '063 and '111 patents. Instead, the
panel majority selects the parts of the specifications that show water in the 4% range, and
ignores the description and examples that show other amounts of water. The majority's de
novo ruling is contrary to the testimony of experts for both sides, contrary to Commission
expertise, and contrary to the rules of claim construction. The Commission's finding
warrants appropriate deference. See, e.g., Federal Power Comm'n v. Fla. Power & Light
Co., 404 U.S. 453, 466 (1972) ("The court may not . . . ignore the conclusions of the
experts and the Commission and put itself in the absurd position of substituting its judgment
for theirs on controverted matters of hydraulic engineering." (quoting United States ex rel.
2006-1633 7
Chapman v. Fed. Power Comm'n, 191 F.2d 796, 808 (4th Cir. 1951), aff'd, 345 U.S. 153
(1953))).
Claims are construed as they would be understood by persons in the field of the
invention, for those are the persons by and for whom patents are written. Such persons
are charged with the specification, the prosecution history, and general knowledge in the
field of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1316-17 (Fed. Cir. 2005) (en
banc). It is beyond debate that the entire specification must be consulted in construing the
claims. Pfizer, Inc. v. Teva Pharms. USA, Inc., 429 F.3d 1364, 1373 (Fed. Cir. 2005) ("It is
necessary to consider the specification as a whole, and to read all portions of the written
description, if possible, in a manner that renders the patent internally consistent."); Slimfold
Mfg. Co. v. Kinkead Industries, Inc., 810 F.2d 1113, 1116 (Fed. Cir. 1987) ("Claims are not
interpreted in a vacuum, but are part of and are read in light of the specification.").
When the entire specification including the specific examples is consulted, rather
than selected snippets, the correct claim scope is apparent from the specifications. Abbott
Labs. v. Andrx Pharms., Inc., 473 F.3d 1196, 1210-11 (Fed Cir. 2007) (declining to limit
claim term to description following the word "is" in the specification where to do so would
exclude disclosed examples); Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d
1295, 1305 (Fed. Cir. 2007) ("We normally do not interpret claim terms in a way that
excludes disclosed examples in the specification."); Invitrogen Corp. v. Biocrest Mfg., L.P.,
327 F.3d 1364, 1369 (Fed. Cir. 2003) (district court's claim construction erroneously
excluded an embodiment described in an example in the specification); Budde v. Harley-
Davidson, Inc., 250 F.3d 1369, 1379-80 (Fed. Cir. 2001) (the specification should be
2006-1633 8
considered as a whole and read "if possible, in a manner that renders the patent internally
consistent").
The labored justification by the majority of its ruling that "about 4%" is the maximum
amount of protic material permitted by the specifications does not suggest how the
Commission erred, or explain a claim construction that excludes much of the content of the
specifications and is contrary to the expert testimony. For example, expert witness David
Crich testified, without dispute, that a person of ordinary skill would recognize that the
description of 4% water is directed to reactions with aniline as the solvent at conditions of
ambient temperature and pressure. The panel majority inexplicably attributes "no weight"
to this expert testimony by arguing that since "controlled amount" has no universal meaning
in chemistry, the court can ignore how persons skilled in this field of chemistry would
understand the term as applied in this field. As resolved in Phillips, 415 F.3d at 1313, "[t]he
inquiry into how a person of ordinary skill in the art understands a claim term provides an
objective baseline from which to begin claim interpretation. That starting point is based on
the well-settled understanding that inventors are typically persons skilled in the field of the
invention and that patents are addressed to and intended to be read by others of skill in the
pertinent art." (Citations omitted.)
The cases on which the majority relies do not support, and indeed contravene the
majority's approach to claim construction. In Durel Corp. v. Osram Sylvania, Inc., 256 F.3d
1298, 1303-04 (Fed. Cir. 2001) the court held that the entirety of the specification, including
the specific examples, must be considered in determining the scope of the term "oxide
coating," and not a single broader statement. In Multiform Desiccants, Inc. v. Medzam,
Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998) the court stated that the patentee's lexicography
2006-1633 9
could not be enlarged by resort to extrinsic dictionary definitions, when the intended scope
was clearly set forth in the entirety of the specification "without ambiguity or
incompleteness," a sound rule that emphasizes the controlling role of the specification.
These cases support the Commission's holding, not that of the panel majority. Equally
inapplicable is the majority's citation of Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1327
(Fed Cir. 2002), for unlike Rhoex, here the prosecution history does not require exclusion of
preferred embodiments.
The majority also relies on Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d
1316 (Fed. Cir. 2001) and North American Container, Inc. v. Plastipak Packaging, Inc., 415
F.3d 1335 (Fed. Cir. 2005) as supporting its claim construction. These are cases where
the construction of claims is narrower than the breadth of the specification, on specific facts
where such narrowing was required, such as by "means-plus-function" construction, or by
an express disclaimer during prosecution as in North American Container, 415 F.3d at
1345-46, 1348. In contrast, in the present case the words "controlled amount" do not have
an unambiguous meaning that dictates the exclusion of disclosed embodiments, nor is
there any suggestion of disclaimer. These decisions do not support the majority's arbitrary
appellate limitation of claim scope, contrary to the content of the specifications. See, e.g.,
Conoco, Inc. v. Energy & Envtl. Int'l, L.C., 460 F.3d 1349, 1358 (Fed. Cir. 2006) (it is
generally improper for courts to import a numerical limitation into a patent claim that
contains no numerical limit); Modine Mfg. Co. v. U.S. Int'l Trade Comm'n, 75 F.3d 1545,
1551 (Fed. Cir. 1996) ("Ordinarily a claim element that is claimed in general descriptive
words, when a numerical range appears in the specification and in other claims, is not
limited to the numbers in the specification or the other claims.") The patents' teachings that
2006-1633 10
the amount of protic material can vary with the reaction conditions, teachings heavily
reinforced by actual experimental examples, were readily understood by the Commission to
show, as the patentee stated, that the invention can be practiced over a range of
conditions. The extensive data in the patent specifications were not challenged. No error
has been shown in the Commission's conclusion that "controlled amount" is not limited to
4%.
Our appellate obligation is to impart consistency, predictability, and guidance to
patent claiming, whereby the patent-user community can rely on a technologically correct
and legally consistent interpretation of patent claims. The health of innovative technology
requires confidence in objective rules of claim construction, and in uniform judicial
application of the rules. The panel majority adds inconsistency and unpredictability by
arbitrarily limiting the scope of the claimed invention in a way that conflicts with the
teachings of the specifications and the knowledge in the field of the inventions. I
respectfully dissent.
2006-1633 11