Claim for "Chromium Catalyst" Limited by Specification and Disclaimers in Prosecution History

Case: Atofina v. Great Lakes Chemical Corp., No. 05-1359 (Fed Cir. 3/23/06)

The One Sentence Summary: The panel affirmed non-infringement findings, but reversed findings of anticipation and inequitable conduct.


What They Were Fighting About: After a bench trial, the district court ruled that there was no literal infringement of a patent for synthesizing difluoromethane, that the claims were anticipated and that the applicant committed inequitable conduct.

Federal Circuit Holdings:

• The district court properly found non-infringement due to a claim construction of the term "chromium catalyst" as excluding active ingredients other than chromium. The specification referred to pure chromium as the catalyst. The prosecution history included disclaimers of catalysts other than pure chromium in response to rejections based on prior art showing mixed catalytic compounds. Even though a narrower disclaimer would have been sufficient to distinguish the prior art, the actual disclaimer was broader than necessary and thereby narrowed the claims.
• The district court clearly erred in finding anticipation of a narrower range of ingredients by a reference showing a broader range. The narrow species was not anticipated by the prior art reference disclosure of a broad genus. Overlapping ranges of the prior art reference and the claimed invention did not anticipate the claims.
• The district court erred in finding inequitable conduct due to failure to submit a full translation of a Japanese patent. There was an insufficient factual basis for finding intent to deceive. The abstract that was disclosed was similar to the full translation.