Nalco v. Chem-Mod (Fed. Cir. 2018)
The district court dismissed Nalco’s patent infringement complaint with prejudice on a R. 12(b)(6) motion for failure to state a claim upon which relief can be granted. On appeal, the Federal Circuit has reversed – finding that the patentee had properly stated a claim of direct infringement, infringement under the doctrine of equivalents, indirect infringement, and willful infringement.
Nalco’s asserted U.S. Patent No. 6,808,692 covers a method of removing most of the elemental mercury from the smoke emitted by a coal plant (before it is released into the atmosphere). Although Nalco’s approach is no better than prior methods, it is cheaper and thus more likely to be adopted. The claimed method requires injection of a halide precursor that is then converted to a halide (by the heat of the furnace) which then binds to mercury in a form that can be easily filtered from the flue gas.
In U.S. Federal Court, a lawsuit begins with the filing of a complaint that must include sufficient allegations of fact that make the claim for relief plausible. A complaint with factual deficiencies is can then be dismissed. Usually, a court will dismiss the case without prejudice (allowing it to be refiled with more complete factual assertions) or even informally suggest the plaintiff file an amended complaint. Here, the Nalco has filed five different complaints (original plus four amended). The first and third amended complaints were dismissed without prejudice. Finally, at the fourth complaint the court dismissed with prejudice — leading to the appeal here.
In the complaints, Nalco explained in detail its theory of infringement. For its part, the district court appears to have conducted an informal claim construction that led to its ruling of no possible infringement. The basic problem is that the patent suggests (but does not expressly claim) that a mixing of the halide precursor with other materials occurs within the flue, while the accused system pre-mixes prior to injection into the flue.
Thus, this is a case where direct infringement will likely be resolvable as a question of law following claim construction. Here, however, the Federal Circuit rejected the lower court’s informal claim construction as premature at the pleading stage:
As Nalco explained, these disputes between the parties hinge on where “flue gas” may be located within the power plant and what limitations are appropriate on where “injecting” may occur. It is not appropriate to resolve these disputes, or to determine whether the method claimed in the ’692 patent should be confined to the preferred embodiment, on a Rule 12(b)(6) motion, without the benefit of claim construction. The purpose of a motion to dismiss is to test the sufficiency of the complaint, not to decide the merits. (internal quotes removed)
What does this mean – although claim construction is an issue of law, the court here holds that claim construction is not the type of legal question that should normally be resolved on the pleadings without the due consideration given in the Markman process.
Walking through the complaint, the appellate panel also found improper dismissal of the patentee’s claims of infringement under the doctrine of equivalents, indirect infringement, and willful infringement.
What does this mean – although claim construction is an issue of law, the court here holds that claim construction is not the type of legal question that should normally be resolved on the pleadings without the due consideration given in the Markman process.
Claim construction disputes tend to be the most decisive issues litigated in the patent case. It is one thing to say that these issue should be decided by a court. Is another thing to say that these are issues of law implying that there are no material disputed issues of fact.
It would be ideal if claims were written clearly and did in fact reasonably inform one of ordinary skill of their scope. But in point of fact, the way patent attorneys write claims – trying to abstract and generalize to the principles involved rather than the details of the invention – there will always be a battle the carve back the scope of the claims to what is actually invented. The somewhat of a balancing act depending on the scope of the disclosure and the skill in the art.
Clearly, in my humble opinion, a court should not resolve these issues either on the pleadings or on summary judgment. There should be a trial. Most Markman hearings are in fact minitrials; and I think it would be improper to dispose of the case without having a Markman hearing if the case depends upon claimed construction.
How much longer, and how much more expensively, need it take to dispose of a patent suit for non-infringement with a combined Markman and S.J. motion hearing, rather than what this judge initially tried to do at the 12(b)(6) motion stage?
Disputed Claim Construction Should Not Ordinarily Be Decided on 12(b)(6) Motion
I’ll remind Dennis and others here about a basic fact of life: what’s “ordinary” depends on the patent being asserted, who’s asserting it, and why they are asserting it.
For better or worse, we live in a time with an exceptionally large number of non-ordinary patentees with non-ordinary patents who are happy to create non-ordinary disputes out of thin air, where those disputes relate to claim terms that should never appear in an “ordinary” patent claim.
In short, this sort of temperature testing by courts (or law professors) is a very silly exercise when it’s performed without any acknowledgment of reality on the ground. It’s no different than the extremely silly (and extremely tired) suggestion that “findings of ineligibility should be rare.” Well, sure, they should be rare and they would be rare if the system hadn’t opened the gates up to the worst junk possible, i.e., claims that protect information and logic. But that’s not the world we live in.
What is ordinary has NO tie to the “who” or the “why asserted.”
An objective fact (your supposed favorite kind) has no bearing whatsoever on whomever may be stating that fact, or on any reason why the fact is being stated.
The fact remains the fact in all such cases.
You have no business in law or anywhere near innovation if you believe what you state.
I will add that ALL such factual predicate matters must be properly accounted for in ANY Means used to reach whatever Ends may be desired.
I know that that is a difficult concept for you Malcolm, even as it should be a foundational view of your (supposedly) being an attorney.
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