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LENZING AKTIENGESELLSCHAFT v. COURTAULDS FIBERS

November 28, 1995

LENZING AKTIENGESELLSCHAFT, Plaintiff, against COURTAULDS FIBERS, INC. and COURTAULDS PLC, Defendants.


The opinion of the court was delivered by: STANTON

 Lenzing Aktiengesellschaft ("Lenzing"), an Austrian corporation, sues Courtaulds Fibers, Inc., a Delaware corporation, and Courtaulds PLC, a British corporation with a controlling interest in Courtaulds Fibers, Inc. (collectively "Courtaulds"), alleging infringement of U.S. Patent No. 5,094,690 ("the '690 patent" or "Zikeli's patent"), which Lenzing owns.

 Courtaulds moves for summary judgment that the '690 patent is invalid and unenforceable.

 BACKGROUND

 Zikeli's patent concerns a process patented in 1969 by Dee Lynn Johnson. *fn1" Johnson discovered that a natural polymer such as cellulose -- e.g., wood pulp -- could be dissolved in a solution of water and a chemical called a "tertiary amine oxide." Fibers for making nylon, polyester, and such materials may be spun from the resulting solution -- a solution of cellulose in an "aqueous tertiary amine oxide."

 In 1980, Neal Franks and Julianna Varga patented a particular method for dissolving the cellulose in the tertiary amine oxide solution. *fn2" The "Franks and Varga method" involves using a tertiary amine oxide called N-methylmorpholine N-oxide, or "NMMO." In that method cellulose, aqueous NMMO, and water are combined to make an undissolved mixture, or "suspension." Excess water in the suspension prevents the cellulose from dissolving into the aqueous NMMO. When the suspension is exposed to heat and reduced pressure, the excess water evaporates, allowing the cellulose to dissolve into the aqueous NMMO.

 On August 16, 1988, Stefan Zikeli, an employee of Lenzing, filed an application in the Austrian Patent Office for a patent on a process disclosing steps for carrying out the Franks and Varga method. He filed a corresponding application in the United States Patent and Trademark Office on August 4, 1989, claiming priority based on the filing in Austria, and was granted the '690 patent.

 The scope of Zikeli's patented invention is limited by one independent claim and eight dependent claims. Claim 1, the independent claim upon which all the dependent claims directly or indirectly depend, claims:

 
1. A process for preparing a solution of cellulose in aqueous tertiary amine oxide from a suspension of cellulose in an aqueous solution of said tertiary amine oxide by supplying heat at a reduced pressure, comprising the steps of
 
providing an elongated heating surface having an input end and an output end,
 
continuously supplying said suspension to the input end of said heating surface,
 
mechanically spreading all of said suspension to form a coat or layer as it is supplied to said input end of said heating surface, said coat or layer having one surface in contact with the heating surface and an opposed surface which is exposed to reduced pressure, thereby enabling water to evaporate from said opposed surface,
 
transporting said formed coat or layer of said suspension along said heating surface from said input end to said output end while simultaneously intensively mixing said suspension, and
 
continuously discharging said homogeneous solution from the output end of said heating surface.

 (col. 5, lines 27-37; col. 6, lines 1-11). *fn3"

 In 1993, Lenzing sued Courtaulds for infringement of this patent.

 DISCUSSION

 A. Summary Judgment

 Courtauld claims that Zikeli's patent is invalid on four grounds: that it was obvious, already invented, and anticipated by a prior publication, and that it failed to set forth the best mode contemplated by the inventor of carrying out the invention. Courtaulds also claims that the patent is unenforceable on the ground that Lenzing's conduct in prosecuting the patent was inequitable.

 Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c). An issue is "genuine" if there is sufficient evidence from which a jury could find for the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986). All justifiable inferences must be drawn in favor of the non-movant, but conclusory allegations are not enough to defeat summary judgment. Anderson, 477 U.S. at 255-56. Although Courtaulds has the burden of proof on its defenses that Zikeli's patent is invalid or unenforceable, see 35 U.S.C. § 282, Lenzing may not rest on mere allegations in its pleading, but must "set forth specific facts showing that there is a genuine issue for trial." Anderson, 477 U.S. at 256.

 There are no genuine issues of material fact regarding Courtaulds' claim that Lenzing's patent is invalid for its failure to set forth the best mode.

 B. Best Mode

 The best mode requirement is set forth in 35 U.S.C. § 112, the first paragraph of which provides:

 The United States Court of Customs and Patent Appeals long ago distinguished between portion [A], "enablement," and portion [B], "best mode":

 
The essence of portion [A] is that a specification shall disclose an invention in such a manner as will enable one skilled in the art to make and utilize it. Separate and distinct from portion [A] is portion [B], the essence of which requires an inventor to disclose the best mode contemplated by him, as of the time he executes the application, of carrying out his invention. Manifestly, the sole purpose of this latter requirement is to restrain inventors from applying for patents while at the same time concealing from the public preferred embodiments of their inventions which they have in fact conceived.

 In re Gay, 50 C.C.P.A. 725, 309 F.2d 769, 772 (C.C.P.A. 1962). In other words, "there must be no concealment of a mode known by the inventor to be better than that which is disclosed." Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1210 (Fed. Cir.), cert. denied, 502 U.S. 856, 116 L. Ed. 2d 132, 112 S. Ct. 169 (1991).

 The best mode analysis has two components, a subjective one and an objective one: in rough terms, whether the inventor had a best mode in mind, and whether he adequately disclosed it. Chemcast Corp. v. Arco ...


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