Not a Lexis Advance subscriber? Try it out for free.

Ecolochem, Inc. v. Southern Cal. Edison Co.

United States Court of Appeals for the Federal Circuit

September 7, 2000, Decided

99-1043

Opinion

 [***1066]   [*1363]  MICHEL, Circuit Judge.

Ecolochem, Inc. ("Ecolochem") filed suit in 1992, alleging that Southern California Edison Company ("Edison") infringed Ecolochem's U.S. Patent Nos. 4,556,492 ("the '492 patent") and 4,818,411 ("the '411 patent") when deoxygenating water in the High-Flow Makeup Demineralizer ("HFMUD") at Edison's San Onofre Nuclear Generating Station ("SONGS"). Edison denied infringement, counterclaimed for declaratory judgment of invalidity, and asserted equitable defenses. By grant of partial summary judgment to Edison, the United States District Court for the Central District of California invalidated claims 1, 2, and 5-10 of the '492 patent and claims [**2]  20-21 of the '411 patent, holding the subject matter of each of these claims to be either anticipated under 35 U.S.C. § 102 and/or obvious under 35 U.S.C. § 103. On appeal to this court, we reversed the holding by the district court that there was no genuine issue of material  [*1364]  fact that the invention of claim 20 of the '411 patent would have been obvious at the time of the invention, and remanded the case for a trial on invalidity in light of Ecolochem's evidence of secondary considerations. As to the invalidation of the other appealed claims, we affirmed. Ecolochem continued to assert infringement of claims 1, 3-13, 15, 17, 18, and 20 of the '411 patent after remand, but dropped its suit as to the remaining claims of the '492 patent. After a bench trial, the district court found that Edison had willfully infringed claims 1, 3-13, 15, 17, 18, and 20 of Ecolochem's '411 patent and rejected Edison's equitable defenses. The court then went on to invalidate all of the claims found to be infringed. Ecolochem appeals the holdings of invalidity as to claims 1, 3-13, 15, 17, 18, and 20 of the '411 patent here. Edison does not cross-appeal the district [**3]  court's finding that Edison willfully infringed those claims of the '411 patent.

We affirm the district court's finding that claim 20 of the '411 patent was proven invalid by clear and convincing evidence both as anticipated under 35 U.S.C. § 102 and obvious under 35 U.S.C. § 103. We reverse its findings of invalidity for anticipation for claims 1, 4, and 7-12 because we discern clear error in the district court's finding that the prior art was proven by clear and convincing evidence to have recited every limitation of claims 1, 4, and 7-12. We also reverse the district court's conclusions that the subject matter of claims 1, 3-13, 15, 17, and 18 of the '411 patent was proven invalid for obviousness by clear and convincing evidence, as we discern clear error in the district court's implicit finding that there was motivation to combine the teachings of the prior art references. As the district court's findings of willful infringement stand unchallenged, we remand for a determination of damages.

Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.

Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.

227 F.3d 1361 *; 2000 U.S. App. LEXIS 22681 **; 56 U.S.P.Q.2D (BNA) 1065 ***

ECOLOCHEM, INC., Plaintiff-Appellant, v. SOUTHERN CALIFORNIA EDISON COMPANY, Defendant-Appellee.

Subsequent History:  [**1]  Rehearing Denied and Suggestion for Rehearing En Banc Declined December 13, 2000, Reported at: 2000 U.S. App. LEXIS 34050. Certiorari Denied April 16, 2001, Reported at: 2001 U.S. LEXIS 2957.

Prior History: Appealed from: United States District Court for the Central District of California. Judge Richard A. Paez.

Disposition: AFFIRMED-IN PART, REVERSED-IN-PART, and REMANDED.

CORE TERMS

district court, deoxygenation, invention, hydrazine, carbon, bed, prior art, contaminants, resin, teaching, combine, references, secondary, hydrogen, oxygen, patent, anticipated, activated, invalidity, ion exchange, dissolved, mixed, demineralization, liquid, infringement, articles, removing, copying, presentation, guidelines

Civil Procedure, Appeals, Standards of Review, Clearly Erroneous Review, Patent Law, Anticipation & Novelty, Prior Knowledge & Use of Invention, General Overview, Nonobviousness, Elements & Tests, Claimed Invention as a Whole, Specifications, Enablement Requirement, Ordinary Skill Standard, Prior Art, Hindsight, Evidence, Inferences & Presumptions, Claims, Claim Language, Duplication & Multiplicity, Energy & Utilities Law, Nuclear Power Industry, Graham Test, Secondary Considerations, Standards of Review, De Novo Review, Defenses, Inequitable Conduct, Patent Invalidity, Criminal Law & Procedure, Deferential Review, Evidence, Procedural Matters, Preliminary Questions, Types of Evidence, Testimony, Ownership, Patents as Property