Docket No. 2015-2086
PROST, LOURIE, TARANTO
May 27, 2016
Brief Summary: DC claim construction and grant of SJ of no infringement affirmed based on that construction.
Summary: Netzer appealed DC grant of SJ of noninfringement of US 6,667,496 to Shell. The ‘496 patent is directed to a four-step “process for the coproduction of ethylene and purified benzene”. In granting SJ, the DC “implicitly agreed with Shell that ‘fractionating’ [step 4] does not include extraction” and found no literal infringement (“[t]o infringe, Shell would have to eliminate the extraction step and still produce benzene purified to at least 80%” (as required by the claims)). It also found no infringement under the DOE because “Netzer is barred by ‘specific exclusion, prosecution history estoppel [PHE], and prior art”. The FC panel first confirmed Netzer had standing even though it changed its name as it did not change patent ownership. Claim construction was addressed de novo since the DC “did not make any factual findings to support any claim construction”. It agreed with Shell that “fractionating” does not include “extraction” because “the patentee made clear and unmistakable statements in the intrinsic record, distinguishing the claimed invention from and disclaiming conventional extraction methods that produce 99.9% pure benzene” (e.g., the specification “uses ‘fractionation’ to refer to distillation specifically, not to generic ‘separation’”, “distinguished conventional extraction from fractionation”, and “clearly disclaimed conventional extraction, characterizing it as expensive and not required due to a shift in market demand, and distinguishing it from the ‘present invention’” (“the intrinsic record here points in only one direction”); and the preferred embodiment is not excluded by this construction). The FC panel noted that it “only conclude that the patentee disclaimed conventional extraction, such as [Shell’s] Sulfolane process” but not “other unconventional distillation methods”. It also explained that “extrinsic evidence may not be used to contradict claim meaning that is unambiguous in light of the intrinsic record” (Summit 6, FC 2015). And since Shell’s process “relies on conventional extraction” and not “distillation” (i.e., “fractionating”), it was found not to literally infringe. This is so even though the use of “comprising” in the claims allows for additional, unclaimed steps…each claimed step must nevertheless be performed as written” (Dippin’ Dots, FC 2007) (rejecting Netzer’s argument that the FC panel concluded would “require rewriting the claimed step to read ‘fractionating…and forming’ rather than ‘fractionating…to form’”). And the patentee’s disclaimer of “conventional extraction…applies equally to the” DOE analysis (SciMed, FC 2001) and Shell’s process does not purify benzene in the same way as that claimed (“almost all the of the purification in [Shell’s] process is done through extraction” (Warner-Jenkinson, US 1997)). Thus, the DC decision was affirmed.