Talk:Atlas Powder v. E.I. du Pont de Nemours, 750 F2d 1569 (1984)

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Courtney

Patent infringement action was brought. The United States District Court for the Northern District of Texas, Patrick E. Higginbotham, J., 588 F.Supp. 1455, found the patent at issue valid and infringed, and appeal was taken. The Court of Appeals, Baldwin, Circuit Judge, held that product claims 1-5, 7, 12-14, and 16-17 of U.S. Patent No. 3,447,978, relating to blasting agent, chemical mixtures that are relatively insensitive to normal modes of detonation but can be made to detonate with high strength explosive primers, were valid and infringed.

The District Court Proceedings A non-jury trial was held between January 28 and February 2, 1982. Du Pont asserted invalidity of the '978 patent under sections 102(a), 103, and 112, “fraud” on the Patent and Trademark Office (PTO), and noninfringement. The district court rejected those assertions for the product claims at issue, holding that: (1) the claimed invention was not anticipated by the prior art; (2) the claimed invention would not have been obvious in view of the prior art; (3) the claims were not invalid for the patent's failure to comply with the “best mode”, enablement, and “overclaiming” requirements of 35 U.S.C. § 112; (4) the patent was not procured by “fraud” on the PTO; and (5) Du Pont's products infringed the claims under the doctrine of equivalence. On appeal, Du Pont contests those holdings, except for the one on best mode.

The district court denied Atlas increased damages and attorney fees because Du Pont had not willfully infringed the '978 patent claims and the case was not “exceptional”. The district court also held that product claims 6, 13, and 15 were not infringed and that process claims 18-30 were invalid. Atlas has not appealed those holdings.

Issues (1) Whether the district court was clearly erroneous in finding the invention of the patent claims at issue not anticipated by the prior art.

(2) Whether the district court erred in holding that the invention of the patent claims at issue would not have been obvious.

(3) Whether the district court erred in holding the patent claims at issue not invalid because of nonenablement.

(4) Whether the district court erred in holding no “fraud” on the PTO, i.e., no inequitable conduct.

(5) Whether the district court was clearly erroneous in finding that Du Pont's products infringed the '978 claims under the doctrine of equivalents.

Under 35 U.S.C. § 282, a patent is presumed valid, and the one attacking validity has the burden of proving invalidity by clear and convincing evidence.

Du Pont argues that, because its emulsion product was patented after the '978 patent issued, its product avoids infringement by equivalence. According to Du Pont, “ so long as direct infringement is lacking, the grant of a patent to an accused infringer constitutes a prima facie determination of non-equivalence and, accordingly, of non-infringement” (Du Pont's emphasis). Atlas disagrees. So do we.

Du Pont concedes that, if Atlas patents A + B + C and Du Pont then patents the improvement A + B + C + D, Du Pont is liable to Atlas for any manufacture, use, or sale of A + B + C + D because the latter directly infringes claims to A + B + C. Du Pont urges, however, that it is not liable for manufacture, use, or sale of patented improvement A + B + C', even though A + B + C' is “equivalent” to A + B + C. We reject Du Pont's attempted distinction. Whether Du Pont makes A + B + C + D or A + B + C', Du Pont has used the gist of Atlas' invention to devise a patentable composition. There is no compelling reason to hold Du Pont liable for infringement in one instance but not the other.[3]

A patent is not the grant of a right to make or use or sell. It does not, directly or indirectly, imply any such right. It grants only the right to exclude others. The supposition that a right to make is created by the patent grant is obviously inconsistent with the established distinctions between generic and specific patents, and with the well-known fact that a very considerable portion of the patents *1581 granted are in a field covered by a former relatively generic or basic patent, are tributary to such earlier patent, and cannot be practiced unless by license thereunder.

Having considered all of Du Pont's arguments, the district court's decision that the '978 patent claims on appeal (1-5, 7, 12-14, and 16-17) are not invalid under 35 U.S.C. §§ 102, 103, and 112, that there was no inequitable conduct before the PTO, and that the claims on appeal were infringed, is affirmed.