EXHIBIT 24
if Case 1:04-cv—00833-KAJ Document 124-22 Filed 10/05/2005 Page 2 of 4
Not Reported in F.Supp.2d » Page 1
Not Reported in F.Supp.2d, 2000 WL 1481015 (D.Del.)
(Cite as: 2000 WL 1481015 (D.Del.))
H 4, 2000. (D.I.75)
Only the Westlaw citation is currently available.
Defendant, in its answer to plaintiffs amended
complaint, has denied infringement of all three
United States District Court D Dclawarc patents-in-suit and filed affirmative defenses and
UNION CARBIDE CHEMS & i,LAS.l-ICS TECH counterclaims alleging that all three patents are
CORP and UNION CARBIDE CORP ` invalid, unenforceable, and not infringed.
élamtiff COumcr_Dd-cndam " Specifically, defendant alleges that the '243 patent is
’ V unenforceable because it was procured by
SHELL OIL CO Shell Chemical CO and CRI misrepresentations to the Patent and Trademark
Catalyst Co., Defendants, Counter- Omcc ("PTO") (DJ'78) .
Pl ` 'ff.
No 99_;£,1;7;_SLR Plaintiff |FNl] is incorporated in Delaware and has
` ` its principal place of business in Connecticut. (D.I.75,
Sept 29 2000 1] 1] 4-5) Defendant is a Delaware corporation with its
Jcmc B- BOVC Esqu{m énd R·`EI_iC Hutz Esquire principal place ofbusiness in Texas. (D.I. 75, 1] 1] 7-
of Connolly Bgvc Lodge & Hutz Wilhlmgton 9; D.I. 78 1] 1] 7- 9) The court has jurisdiction over
J ) · · 9 5 · · I · · gs » I
Delaware. Counsel for plaintiff, counter-defendant. this aclmn undér 2g SQ _ _ 1331 amd L8
Steven J. Glassman Esquim and Ban-amin C' Hsin Venue IS proper 11'1 thlsjudlclal district by virtue of@
**"—‘“‘—’ . ’ . . .§§ ( ) .
» Esquire of Kaye, Scholer, Flerman, Hays & Handler, U S C 1391 C and @(m
N YkN Yk.Of lf l`“ff`, . . . .
c(i;;t€r_(;fgn (1;;): or ‘ cmmsc Or p amtl FN1. Umon Carbide Chemicals & Plastics
` Technology Corporation and Union Carbide
Allen M. Terrell, Jr., Esquire arra Jersey L MON, C<]]1¤<>{¤¤]>¤ are] _hq;=fr]¤¤ft¢r r¤f<=rr<=d to
Esquire of Richards, Layton & Finger, Wilmington, CO ccuvc Y as p amu '
Delaware. Counsel for defendant, counter-plaintiff _ _ _
william Slusscr Esquire Of Slusscr & Frost Currently before the court IS defendants motion to
’ - · - ’ ' . . ' . . gf] '
Houston, Texas and John D. Noms, Esquire of smkc lmdcr Fed R CW P 12 _ defendants
Howmy Simon Arnold & White Houston Texas. affirmative defense, and under Fed.R.Clv.P. 12]b]]6)
Ofcoungcl for dgfcudam coumcpplaimiff ° to dismiss defendant's counterclaim with respect to
’ ` allegations of inequitable conduct. (D.I.84) Because
MEMORANDUM OPINION defendant's subsequent filings with this court clarify
its pleadings, plaintiffs motion is denied.
N h` f J.
·K@@’C '° 1l.BAcKoRoUND
I. INTRODUCTION .
Plaintiff brings this motion claiming that defendant's
,,1 Plaintiff Umon Carbide Chemicals & Plastics inequitable conduct allegation fails to meet the
Technology Corporation filed this patent pamcularity mquifcmcnt ll`;]
infringement action on May 3 1999 against and leaves plaintiff g\.1€SSiI1g as to the details Of its
defendant Shell Oi] Company ’ShCu Chemical alleged wrongdoing. Plaintiff specifically complains
Company, and CRI Catalyst Company (collectively, apout the affmnatfvc defense lp pfuagmph *h¤*Y·
..dcfcndam..) alleging that defendant infringes U S eight of defendants answer which is repeated and
Pererrt NO. 4,908,343 ("the ere _earerrr··;— U.e.‘rr._renr mllcgcd as 3 ¤¤¤¤*¤¤=l¤lm t¤ paragraph my-
H No. 5,057,481 ]"the '48l patent"]. The '343 and QQ _ _ __
patents relate to particular types of catalysts and PmVldCS' In all avcrmcms
processes for making ethylene oxide. The '481 patent 0 _au_ or mlstakci the circumstances
relates to eempesrrrrms used rr. eearrngr apprrearrerrs. ¤9¤]j*¤¤¤*·vgfr¤d__¤r mistake Shall be md
Plaintiff Union Carbide Corporation joined this Wn pamcu amy
litigation through an amended complaint on January
© 2005 Thomson/W est. No Claim to Orig. U.S. Govt. Works.
Case 1:04-cv—00833-KAJ Document 124-22 Filed 10/05/2005 Page 3 of 4
__ Not Reported in F.Supp.2d Page 2
Not Reported in F.Supp.2d, 2000 WL 1481015 (D.Del.)
(Cite as: 2000 VVL 1481015 (D.Del.))
The '243 patent is unenforceable because it was defendant refers. In its opposition to plaintiffs
procured by misrepresentations to the PTO motion to strike, defendant contends that plaintiff
regarding the materiality of Union Carbide's own submitted only two declarations that purported to
commercial activities to the patentability of claims duplicate examples in the prior art cited by the
pending in the prosecution of patent applications examiner as a basis for rejecting pending claims.
leading to the issuance of the patent and by Defendant attached those two declarations and
misrepresentations regarding data submitted to the claimed that the prior art references and tests they
PTO to support the patentability of pending claims. refer to in the pleadings are consistently referred to
During the prosecution of the '243 patent, a throughout the declarations. |FN3[
continuation—in—part application was filed
containing claims barred under 35 U.S.C. § 102gb) § The defendant is referring to two 37
as a result of Union Carbide's commercial use of C.F.R. § 132 declarations signed by: (1) the
the processes of these claims more than one year inventor, Dr. Madan Bhasin, on December
before their effective filing date. In a statement to 28, 1979 ("the Bhasin declaration"), and (2)
the PTO, the applicants, through their attomeys, Dr. Thomas Notermarm on December 29,
acknowledged the commercialization of the 1979 ("the Notermann declaration"). (D.I.
invention, but did so in a mamier that obscured and 97 at 6)
misrepresented the significance of the event to the
patentability of then pending claims. Additionally, Plaintiff argues that it submitted not two, but seven
during the prosecution of the '243 patent, Union declarations during the prosecution of the '243 patent-
Carbide, on its own initiative, conducted tests -four of which discuss testing of catalysts prepared
based on the teachings of cited prior artreferences from the teachings of the prior art. In the four
in an effort to distinguish the claimed invention declarations, eighteen catalysts were prepared based
from the teachings of these references. During this on five prior art references and twenty tests were
testing, Union Carbide deviated from the teachings conducted to determine whether the catalysts were
of the prior art in ways yielding results that synergistic. Plaintif`f` claims that even if defendant
inaccurately portrayed the claimed invention as limited their inequitable conduct allegations to the
falling outside the teachings of the prior art. Union two declarations cited in defendant's opposition briefQ
Carbide also selectively submitted data tending to they would still be guessing about the specifics of the
support the patentability of claims while not inequitable conduct allegations. In the two cited
submitting data tending to show the contrary. All declarations, fifteen catalysts were prepared based on
these misrepresentations were highly material to four prior art references and fifteen tests were
the PTO proceedings, were made with reckless or conducted to determine whether those catalysts were
intentional disregard of the duty of candor required synergistic.
in proceedings before the PTO, and were made
with an intent to deceive the PTO. III. DISCUSSION
*2 (D.I.78,1] 38)
The purpose of Fed.R.Civ.P. 9gb) is "to place the
Plaintiff contends the above paragraph does not [parties] on notice of the precise misconduct with
satisfy Rule 9{b) because the allegations: (1) fail to which they are charged, and to safeguard [the parties]
identify what Union Carbide tests are alleged to have against spurious charges of immoral and haudulent
deviated Eom the teachings of the prior art, (2) fail to behavior." Seville Indus. Mach. Corg. v. Sauthmast
state how any such tests purportedly deviated Eom Mach. Corg., 742 F.2d 786, 791 (3d Cir.l984[. The
the prior art to yield misleading results, (3) fail to particularity requirement of Rule 9 applies to
identify what data is alleged to have been "selectively inequitable conduct charges. See EMC Corg. v.
submitted" to the PTO in support of the patentability Storage Tech. Corp., 921 F.Supp. 1261, 1263
of the claims, or what "data tending to show the §D.Del.1996). Pleadings that disclose the relevant
contrary" is alleged to have been withheld, and (4) prior art and alert the patentee to the alleged fraud
fail to state how any such data tended to support or satisfy the requirements of Rule 9(b[. Id. Rule 9(b)
refute patentability. does not require that the pleadings allege the time,
date, and place of the alleged misconduct. Ia'.
Defendant claims that plaintiff reads the Rule Qglg)
requirements too broadly. Defendant claims there is Here, the defendant's pleadings do appear to be
no requirement to identify particular tests and, in any "bare-boned" on their face. However, its brief
event, plaintiff is aware of the tests to which submitted in opposition to the present motion
© 2005 Thomson/West. No Claim to Orig. U.S. Govt. Works.
_ Case 1:04-cv—00833-KAJ Document 124-22 Filed 10/05/2005 Page 4 of 4
. Not Reported in F.Supp.2d 4 Page 3
Not Reported in F.Supp.2d, 2000 WL 1481015 (D.De1.)
(Cite as: 2000 WL 1481015 (D.De1.))
sufficiently clarified its pleadings to overcome Rule on notice of the precise misconduct with which they
_9(b_)'s requirements. (D.I.97) In that brief} defendant are charged. Defendant will still carry the burden at
cites two specific 37 C.F.R. § 132 declarations that trial to show that plaintiff did indeed engage in that
were part of the '243 patent's prosecution history. In conduct.
the Bhasin declaration, the inventor, through his
attomey, responded to a rejection based on U.S. IV. CONCLUSION
Patent Nos. 3,548,018; 4,038,175; 4,014,913;
4,096,164; and 4,162,262. gD.I. 97, Ex. A at 115) Plaintiffs motion to strike defendant's affirmative
The examiner contended that the above references defense and to dismiss defendant's counterclaim with
disclosed combinations of potassium and cesium in respect to allegations of inequitable conduct is
silver catalysts for ethylene oxide manufacture to denied. Defendant shall have thirty days to amend its
provide the synergism which Bhasin claimed to be answer to include the clarifications laid out in its
his invention. (Q) To overcome the rejection, Bhasin opposition brief.
selected examples from four of the five cited
references to show the use of a silver catalyst Not Reported in F.Supp.2d, 2000 WL 1481015
containing bot.h potassium and cesium which would (D.Del.)
demonstrate whether such synergism is inherently
taught by the references. {Ia'. at 116) Bhasin then END OF DOCUMENT
prepared several catalysts and conducted several tests _
to determine whether the catalysts were synergistic.
*3 When defendant pleads that plaintiff "conducted
tests based on the teachings of cited prior art
references in an effort to distinguish the claimed
invention from the teachings of these references,"
defendant is, in the court's opinion, referring to the
five prior art references cited above. When defendant
pleads that plaintiff "deviated from the teachings of
the prior art" and "selectively submitted data tending
to support the patentability of claims," defendant is
suggesting that Bhasin did not select representative
samples from the prior art references as he
proclaimed in his declaration.
The Notermann declaration explains that Notermann
evaluated the catalysts prepared by Bhasin.
Noterrnarm concurred with Bhasin's opinion that the
catalysts he selected were the best choices in
determining whether the cited references showed a
synergistic combination of silver, cesium, and
potassium for the manufacturing of ethylene oxide.
(D.I. 97, Ex. B at 105)
This court has allowed a party to clarify its pleadings
through responses to interrogatories. See Scriggs
Clinic & Research Found. v. Baxter Travenol Labs.,
Inc., 7 U.S.P.Q.2d 1562, 1564 §D.Del.1988[.
Likewise, the court will allow defendant to clarify its
affirmative defenses and counterclaims through its
opposition brief Note, however, insufficiently pled
allegations of inequitable conduct shall not be used to
justify subsequent discovery into such allegations.
See EMC Corp., 921 F.Supp. at 1263.
Defendant's clarification has sufficiently put plaintiff
© 2005 Thomson/West. No Claim to Orig. U.S. Govt. Works.
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