The Dow Chemical Co. v. American Cyanamid Co., 615 F. Supp. 471 (E.D. La. 1985)
Subject
Patent Infringement, patent validity (obviousness, best mode), inequitable conduct and remedies.
Procedural History
Dow Chemical sued American Cyanamid in the United States District Court for the Eastern District of Louisiana. The court in a bench trial found that 4 Dow patents were valid and infringed, that 2 Dow patents were valid but not infringed, that Dow was entitled to an injunction but that treble damages and attorney fees were not warranted.
Subsequent to this decision, Cyanamid appealed to the Federal Circuit on the question of obviousness. The Federal Circuit affirmed. 816 F.2d 617 (Fed. Cir. 1987) (cert. denied, 108 S. Ct. 149).
Summary
Dow sued for infringement of 4 patents on a process they had invented using a reduced copper oxide catalyst to convert acrylonitrile to acrylamide and for infringement of 2 patents on a process they had invented using a catalyst prepared by reduction of copper salt to convert acrylonitrile to acrylamide. Dow asked for an injunction to prevent American Cyanamid from continuing to use the infringed process for acrylamide production
Analysis
Dow refused to license its technology to Cyanamid. Dow claimed that Cyanamid used a catalyst supplied by BASF at their production facility in Louisiana that infringed the Dow process. Cyanamid claimed the catalyst used in its process was not the same as the catalyst in the Dow patents and did not infringe the Dow patents. After considerable technical discussion involving chemical analysis by Dow of the catalyst used by Cyanamid and involving testimony by expert witnesses on both sides, the court concluded that the catalyst used by Cyanamid infringed some of the Dow patents both literally and by the doctrine of equivalents (performs substantially in the same way, to yield substantially the same results).
The validity of those Dow patents survived arguments about Obviousness, Best Mode, and Inequitable Conduct.
The Obviousness discussion involved prior art from a German patent, U.S. patents, and several Japanese publications. After a technical discussion of the prior art references and the Dow patents, the court concluded that the differences in the subject matter between the Dow patents and the prior art when taken as a whole would not be obvious to those skilled in the art.
Cyanamid argued that Dow did not disclose the best mode in that Dow did not disclose the solution to some production scale problems with the process. The court said those problems occurred after the filing date of the patents and that selected operating conditions need not be disclosed because one of ordinary skill in the art would know how to select those operating conditions.
Cyanamid claimed that Dow breached its duty of candor to the PTO with gross negligence or bad faith. The court concluded without explanation that Cyanamid failed to establish inequitable conduct by the required clear and convincing evidence of materiality and intent.
The court concluded that because Dow’s patents had been infringed, an injunction was appropriate to protect Dow’s right to exclude Cyanamid from practicing its invention and to prevent any continuation of the infringement in the future. There was no detailed discussion of the reasoning behind the injunction decision.
Damages were not addressed in this action.
The court also concluded, with little explanation, that the infringement did not reach the degree of calculated and willful infringement to award treble damages and attorney fees. The court did hint in several places in the opinion that the court’s perception of the quality of the testimony of the Dow experts and the Cyanamid experts influenced those decisions that were made in Dow’s favor.
Subject
Patent Infringement, patent validity (obviousness, best mode), inequitable conduct and remedies.
Procedural History
Dow Chemical sued American Cyanamid in the United States District Court for the Eastern District of Louisiana. The court in a bench trial found that 4 Dow patents were valid and infringed, that 2 Dow patents were valid but not infringed, that Dow was entitled to an injunction but that treble damages and attorney fees were not warranted.
Subsequent to this decision, Cyanamid appealed to the Federal Circuit on the question of obviousness. The Federal Circuit affirmed. 816 F.2d 617 (Fed. Cir. 1987) (cert. denied, 108 S. Ct. 149).
Summary
Dow sued for infringement of 4 patents on a process they had invented using a reduced copper oxide catalyst to convert acrylonitrile to acrylamide and for infringement of 2 patents on a process they had invented using a catalyst prepared by reduction of copper salt to convert acrylonitrile to acrylamide. Dow asked for an injunction to prevent American Cyanamid from continuing to use the infringed process for acrylamide production
Analysis
Dow refused to license its technology to Cyanamid. Dow claimed that Cyanamid used a catalyst supplied by BASF at their production facility in Louisiana that infringed the Dow process. Cyanamid claimed the catalyst used in its process was not the same as the catalyst in the Dow patents and did not infringe the Dow patents. After considerable technical discussion involving chemical analysis by Dow of the catalyst used by Cyanamid and involving testimony by expert witnesses on both sides, the court concluded that the catalyst used by Cyanamid infringed some of the Dow patents both literally and by the doctrine of equivalents (performs substantially in the same way, to yield substantially the same results).
The validity of those Dow patents survived arguments about Obviousness, Best Mode, and Inequitable Conduct.
The Obviousness discussion involved prior art from a German patent, U.S. patents, and several Japanese publications. After a technical discussion of the prior art references and the Dow patents, the court concluded that the differences in the subject matter between the Dow patents and the prior art when taken as a whole would not be obvious to those skilled in the art.
Cyanamid argued that Dow did not disclose the best mode in that Dow did not disclose the solution to some production scale problems with the process. The court said those problems occurred after the filing date of the patents and that selected operating conditions need not be disclosed because one of ordinary skill in the art would know how to select those operating conditions.
Cyanamid claimed that Dow breached its duty of candor to the PTO with gross negligence or bad faith. The court concluded without explanation that Cyanamid failed to establish inequitable conduct by the required clear and convincing evidence of materiality and intent.
The court concluded that because Dow’s patents had been infringed, an injunction was appropriate to protect Dow’s right to exclude Cyanamid from practicing its invention and to prevent any continuation of the infringement in the future. There was no detailed discussion of the reasoning behind the injunction decision.
Damages were not addressed in this action.
The court also concluded, with little explanation, that the infringement did not reach the degree of calculated and willful infringement to award treble damages and attorney fees. The court did hint in several places in the opinion that the court’s perception of the quality of the testimony of the Dow experts and the Cyanamid experts influenced those decisions that were made in Dow’s favor.