Dystar Textilfarben Gmbh & Co Deutschland Kg v. C.H. Patrick, Co.

464 F.3d 1356, 80 U.S.P.Q. 2d (BNA) 1641, 2006 U.S. App. LEXIS 24642, 2006 WL 2806466
CourtCourt of Appeals for the Federal Circuit
DecidedOctober 3, 2006
Docket2006-1088
StatusPublished
Cited by109 cases

This text of 464 F.3d 1356 (Dystar Textilfarben Gmbh & Co Deutschland Kg v. C.H. Patrick, Co.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Dystar Textilfarben Gmbh & Co Deutschland Kg v. C.H. Patrick, Co., 464 F.3d 1356, 80 U.S.P.Q. 2d (BNA) 1641, 2006 U.S. App. LEXIS 24642, 2006 WL 2806466 (Fed. Cir. 2006).

Opinions

MICHEL, Chief Judge.

DyStar Textilfarben GmbH & Co. Deutschland KG (“DyStar”) sued defendants C.H. Patrick Co. and Bann Química Ltda. (collectively, “Bann”) in the United States District Court for the District of South Carolina, alleging direct, contributory, and induced infringement of U.S. Patent No. 5,586,992 (“the '992 patent”),1 which discloses a process for dyeing textile materials with catalytically hydrogenated leuco indigo. DyStar and Bann Química Ltda. are large chemical manufacturers [1358]*1358that, inter alia, sell prereduced indigo for use in dyeing processes; C.H. Patrick Co. purchased prereduced indigo solution from Bann Química Ltda. in 2002 and used it to dye yarn in a process alleged to infringe.

The parties agreed to a jury trial before a magistrate judge. Prior to charging the jury and in open court, the magistrate judge granted DyStar’s motion for judgment as a matter of law (“JMOL”) that it had not engaged in inequitable conduct before the United States Patent and Trademark Office (“PTO”). The jury rendered a verdict that “Bann Química and/or C.H. Patrick” had infringed each of claims 1-4, assessed damages at $90,000, and declined to hold the '992 patent claims invalid for lack of enablement, anticipation or obviousness. DyStar Textilfarben GmbH & Co Deutschland KG v. C.H. Patrick Co., Civ. No. 6:02-2946-WMC (D.S.C. Sept. 16, 2005).

Following briefing, the magistrate judge denied Bann’s motions for JMOL or, alternatively, a new trial on the question of invalidity of the '992 patent for anticipation, obviousness, and lack of enablement. DyStar Textilfarben GmbH & Co Deutschland KG v. C.H. Patrick Co., Civ. No. 6:02-2946-WMC (D.S.C. Nov. 1, 2005). The magistrate judge did not issue an opinion. His order stated:

The jury diligently considered the evidence presented and found for the plaintiff. This court concludes that the jury’s verdict was reasonable and was supported by evidence in the record. Therefore, as this court has great respect for trial by jury and the right of the parties to request a jury trial, this court will not substitute its findings for those of the jury as the jury’s decision was clearly supported by the trial record and was reasonable.

Id.

Bann appeals from the denials of its motions on anticipation and obviousness, and the grant of JMOL to DyStar regarding inequitable conduct. For the reasons explained below, we reverse the district court’s denial of Bann’s motion for JMOL of invalidity of claims 1-4 for obviousness.

I

Indigo has been used in dyeing textile materials for thousands of years. Because indigo pigment is insoluble in water, it must be de-oxidized, or “reduced,” to a water-soluble white form known as “leuco indigo” before it can be used in dyeing. Leuco indigo is unstable; it oxidizes and returns to its blue pigment form when exposed to oxygen. Thus, leuco indigo solution needs to be kept in an oxygen-free environment, or otherwise stabilized, if it is not being used immediately for dyeing.

For many years, dyehouses commonly reduced indigo in-house through a process known as hydrosulfite reduction. Dyers created a “stock vat,” in which indigo is reduced in water with sodium hydrosulfite and solubilized with an alkali, e.g., sodium hydroxide. The resulting leuco indigo solution is then transferred into a feed tank and fed into the dyebath. After the dye-bath is prepared, the textile material is dyed through a process known as “dipping” and “skying.” In “dipping,” the textile material is contacted with leuco indigo in the dyebath; in “skying,” the dyed textile material is introduced to the air, causing the indigo to convert back to its blue pigment form.

A second common method of indigo reduction, catalytic hydrogenation, was patented by Andre Brochet in 1917. See U.S. Patent No. 1,247,927 (“Brochet”). The superficial difference between hydro-sulfite reduction and catalytic hydrogenation is that the latter uses gaseous hydro[1359]*1359gen, rather than sodium hydrosulfite, as a reducing agent. Catalytic hydrogenation allowed “economical production of concentrated solutions of leuco derivatives free from impurities and mineral salts”; when left to settle, the solution naturally separates from nickel or another catalytic metal and can be “drawn off and is ready for use”. Brochet, 11.88-90, 109-110. Most important to the dyehouses, however, was the fact that Brochet’s leuco indigo solution could be stabilized in solid form, usually powder or paste, and coated with molasses or glue to protect the reduced indigo from air and prevent premature oxidation. This allowed the indigo reduction process to shift out of the dye-houses and into chemical manufacturers, which began to produce and sell prere-duced indigo to dyehouses in the early 1900s. Rather than create a stock vat, dyers needed only to dissolve the prere-duced indigo into a preparation tank, add caustic soda (i.e., sodium hydroxide) and sodium hydrosulfite to remove oxygen from the water, and transfer the resulting solution from the preparation tank to the dyebath. This significantly reduced the time necessary to prepare a dyebath, the dyehouses’ expenditures on sodium hydro-sulfite and caustic soda, and the level of pollution in dyehouse waste water and on dyehouse floors.

The process of dyeing textile materials with catalytically hydrogenated leuco indigo traditionally has involved six steps: (1) reducing indigo to its leuco form in solution; (2) stabilizing the leuco indigo solution, usually in paste or powder form; (3) creating a preparation tank in which the dried leuco indigo is re-converted to solution form; (4) adding the solution to the dyebath; (5) dipping; and (6) skying.

Claim 1 of the '992 patent, the only independent claim at issue, recites:

A process for dyeing cellulose-containing textile material with indigo which comprises
a) introducing into a dyebath an aqueous solution of leuco indigo solution prepared by catalytic hydrogenation;
b) contacting the textile material with the dyebath; and, after the leuco indigo has gone onto the textile material,
c) converting said leuco indigo back into the pigment form in a conventional manner by air oxidation.

’992 patent, eol.6, 1.66-eol.7, 1.6. The '992 patent thus improved upon the prior art by eliminating steps two and three of the traditional process: stabilizing the leuco indigo solution into a paste or powder form, and then reconstituting the solution in a preparation tank. Instead, it allowed a dyer to pour prereduced indigo solution directly into a dyebath and commence dyeing immediately.

II

Bann appeals from the denials of its motions on anticipation of claim 1 and obviousness of claims 1-4, and the grant of DyStar’s JMOL of no inequitable conduct. We review decisions on motions for JMOL and motions for a new trial under the law of the regional circuit. MicroStrategy, Inc. v. Bus. Objects, S.A., 429 F.3d 1344, 1348 (Fed.Cir.2005) (JMOL); EMI Group N. Am., Inc. v. Cypress Semiconductor Corp., 268 F.3d 1342, 1348 (Fed.Cir.2001) (new trial). In the Fourth Circuit, the grant or denial of JMOL is reviewed de novo, which requires us to step into the shoes of the trial judge and reapply the JMOL standard. Johnson v. MBNA Am.

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464 F.3d 1356, 80 U.S.P.Q. 2d (BNA) 1641, 2006 U.S. App. LEXIS 24642, 2006 WL 2806466, Counsel Stack Legal Research, https://law.counselstack.com/opinion/dystar-textilfarben-gmbh-co-deutschland-kg-v-ch-patrick-co-cafc-2006.