By George Basharis, J.D.
A divided Federal Circuit affirmed the Patent Trial and Appeal Board’s award of priority of invention.
A method of abruptly separating impurities from crude oil was properly construed to fall within a claimed method of "gradually and continuously" extracting solvents from oil, the U.S. Court of Appeals for the Federal Circuit determined, affirming a decision by the Patent Trial and Appeal Board to award priority of invention to the University of Wyoming in an interference proceeding brought under the pre-AIA Patent Act. In a dissenting opinion, Circuit Judge Newman argued that the University’s method did not describe and was not supported by claims it copied from a pending Chevron U.S.A. Inc. patent application (Chevron U.S.A. Inc. v. University of Wyoming Research Corp., November 4, 2020, Schall, A.).
The University of Wyoming Research Corporation (Wyoming) and Chevron both have extensive histories studying methods of extracting impurities from crude oil. Chevron filed U.S. Patent Application No. 12/833,814 (the ’814 application) for a method of "gradually and continuously" removing asphaltene impurities from crude oil. The application defined "gradually and continuously" to mean that the "alkane mobile phase solvent is incrementally removed from the column over a period of time by continuously adding a final mobile phase solvent ..." Wyoming copied Chevron’s claimed method into its own pending application for a solvent extraction patent in order to initiate an interference proceeding. An interference proceeding—established by provisions of the Patent Act that were eliminated by the America Invents Act—is a trial-like administrative proceeding in which the competing inventors prove their dates of invention. Under the pre-AIA law, the patent for a commonly claimed invention was awarded to the party who was the first to invent, rather than the first to file the patent application. The Board conducted the hearing and awarded priority of invention to Wyoming.
The Board recognized that Wyoming’s method differed from Chevron’s in that the Wyoming method required an abrupt and discontinuous solvent change. However, the Board gave the term "gradually and continuously changing" the "broadest reasonable interpretation" and determined that Chevron’s claimed method was the same as Wyoming’s method. The Board rejected Chevron’s argument that the term referred to the act of feeding solvent into the inlet of a column until the solvent reaches its final phase and instead found that the term referred to the change of solvents within the column itself.
On appeal, Chevron argued that the Chevron and Wyoming methods were not the same and that "gradually and continuously" meant that the solvent changed at the inlet of a column as one solvent went "from 0% to 100%" and the other "from 100% to 0%" rather than mixing abruptly inside the column. Chevron also argued that the Board improperly considered expert witness testimony. and its claim limitation of a gradual solvent switch was rendered meaningless by the Board’s construction.
The Federal Circuit rejected Chevron’s arguments. The Board used expert testimony only to confirm its construction of the term "gradually and continuously" and did not turn to extrinsic evidence to construe the claim limitation. Moreover, the Board’s construction was based on the definition of the term in Chevron’s own patent application. According to Chevron’s definition, the term required only incremental removal and continuous additions of solvent and could encompass, as the Board determined, Wyoming’s claimed method of abrupt and immediate solvent switches.
Dissenting opinion. Circuit Judge Pauline Newman argued that Wyoming’s method encompassed Chevron’s claimed limitation only because Wyoming copied the claim into its application. The dissent noted that never during Wyoming’s longstanding study of solvents and the purification of crude oil did Wyoming describe or put into practice Chevron’s method of a gradual and continuous solvent change. Without support for the copied claim, Wyoming could not satisfy its burden of establishing conception and reduction to practice of the common invention, a required element of priority in an interference proceeding.
This case is No. 19-1530.
Attorneys: Patrick Joseph Coyne (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP) for Chevron U.S.A. Inc. Luke Santangelo (Santangelo Law Offices, PC) for the University of Wyoming Research Corp.
Companies: Chevron U.S.A. Inc.; University of Wyoming Research Corp.
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