Saes Getters S.p.A. v. Ergenics, Inc.

Citations: 816 F. Supp. 987; 1992 U.S. Dist. LEXIS 21570; 1992 WL 456731Docket: Civ. A. No. 89-649

Court: District Court, D. New Jersey; June 15, 1992; Federal District Court

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Defendant Ergenics, Inc. sought to amend the Final Pretrial Order to challenge the validity of U.S. Patent No. 4,312,669 (the "Boffito patent"), while plaintiffs Saes Getters S.P.A. filed a cross-motion for summary judgment on the patent's validity. The court, having received consent to address these motions from both parties, ruled in favor of the plaintiffs, granting their motion for summary judgment and deeming the defendant's motions moot.

The case began on February 17, 1989, when Saes accused Ergenics of infringing U.S. Patent No. 3,926,832 (the "Barosi patent"). The complaint was later amended to include allegations of infringement of the Boffito patent, leading to a preliminary injunction against Ergenics regarding its products HY-STOR 402 and HY-STOR 402(C). The court previously rejected Ergenics' motion for summary judgment that claimed the Boffito patent was invalid.

The Boffito patent, issued in 1982, pertains to a gas gettering process using a ternary alloy of Zirconium, Vanadium, and Iron, utilized for maintaining vacuum conditions in electron tubes by converting gases into solids. The patent allows for the sorption of water vapor at low temperatures without hydrogen release and outlines specific activation and temperature reduction steps. Claims 1 and 3 detail the process involving the introduction of a specific ternary alloy, evacuation of the vessel, activation through heating, and subsequent cooling.

The defendant claims that the patent in question is invalid on two grounds: first, that its claims are anticipated by prior art from Daniel Shaltiel, and second, that the Boffito process is obvious under section 103 of Title 35 of the U.S. Code. These arguments were previously rejected by the Patent and Trademark Office during re-examination and by Judge Ackerman during the preliminary injunction phase. Notably, the defendant's earlier report indicated that it did not contest the validity of the Boffito patent. The current submission does not introduce any new evidence that would lead to a different conclusion than that reached by the patent office and Judge Ackerman.

The applicable standard for granting summary judgment requires the court to assess whether there is no genuine issue of material fact when considering the evidence in favor of the non-moving party. The moving party must first make a prima facie case for summary judgment, after which the burden shifts to the non-moving party to demonstrate that summary judgment is not warranted. The moving party retains the burden of persuasion throughout the process, and if there is any uncertainty regarding the necessity for a trial, summary judgment should not be granted.

Additionally, it is noted that each patent claim is presumed valid, placing the burden on the challenger to prove invalidity by clear and convincing evidence, especially if the prior art was considered by the Patent and Trademark Office during issuance.

Ergenics opposed the preliminary injunction by asserting that the Boffito patent was anticipated by prior publications from Daniel Shaltiel, which were available to the Patent and Trademark Office at the time of the patent's grant. To establish anticipation, a single prior art reference must disclose every element of the claimed invention. Judge Ackerman ruled that Shaltiel did not anticipate the Boffito process, despite describing the alloy composition, because he failed to address the gettering process itself. Specifically, Shaltiel's work involved high-pressure hydrogen sorption (5 to 61 atmospheres), while the Boffito process operates at low pressures (below 10^-2 torr). Shaltiel’s focus was solely on hydrogen, neglecting the necessity for a getter to function in the presence of other gases, thereby contradicting the claimed element of reduced pressure. Consequently, Shaltiel does not anticipate the Boffito patent.

In addition to anticipation, Ergenics claimed the Boffito patent was obvious under 35 U.S.C. § 103, which requires an assessment of prior art, differences between the art and the claims, the skill level in the relevant field, and secondary considerations. Judge Ackerman outlined that a prima facie case of obviousness can be rebutted if the claimed invention significantly exceeds prior art in a common property. Ergenics argued that Shaltiel and Giorgi's works made the Boffito claim obvious; however, the Giorgi paper merely highlighted a longstanding industry need for lower-temperature bulk getters, suggesting that the Boffito process was not obvious but rather a response to an unmet demand.

Judge Ackerman determined that Shaltiel's paper did not invalidate Giorgi's proposal, emphasizing that Shaltiel's disclosures failed to describe a "getter" process. The defendant did not challenge the plaintiffs' scholarly references defining a "getter" as a material that absorbs gases at low pressure. Shaltiel only presented an alloy that absorbs hydrogen, which Judge Ackerman reasoned did not conclusively imply its utility as a getter, as effective getters require low pressure and must function in the presence of other gases. Mendelsohn further clarified that simply finding an alloy that absorbs hydrogen does not guarantee its effectiveness under necessary conditions.

Judge Ackerman concluded that the claims in the patent were not obvious, especially considering the patent's commercial success and long-felt need. The defendant attempted to introduce new evidence, including testimonies from Dr. Philip Danielson and Dr. Bruno Ferrario, regarding the activation of getters and routine experimentation in determining activation parameters. The defendant argued that because Shaltiel described a hydrogen-sorbing getter and Boffito's process utilized Shaltiel's alloy with a novel low-temperature activation, it would have been routine to discover this activation through experimentation. Thus, the defendant contends this creates a disputed fact regarding the validity of the Boffito patent in light of the Shaltiel and Giorgi references.

The evidence presented is deemed insufficient to establish a contested material fact regarding the validity of the patent in question. Patents are presumed valid, and the burden to prove invalidity lies with the defendant, requiring clear and convincing evidence, especially when relying on prior art previously examined by the patent office. The testimony from Dr. Danielson lacks support, relying solely on an unsupported opinion regarding Shaltiel's disclosure of a "getter" for hydrogen without demonstrating how this conclusion was reached or providing scientific backing. Scholarly sources indicate that a getter must sorb various gases, contradicting Dr. Danielson's claim that Shaltiel's alloy qualifies as a getter since it only addresses hydrogen. Additionally, Dr. Danielson acknowledged that determining whether a compound could sorb other gases involves a rudimentary examination of the Periodic Table and a trial-and-error method, which does not meet the criteria for obviousness under legal standards. Both Dr. Danielson's and Dr. Ferrario’s testimonies describe an "obvious to try" scenario, which does not suffice to prove obviousness in light of prior art. Thus, their assertions do not create a genuine issue of material fact and are considered unsubstantiated. A trier of fact cannot rely on this testimony for support, as it lacks evidential backing or analytical depth.

A minimal amount of evidence presented is deemed insufficient to establish a genuine issue of fact regarding the validity of the Boffito patent. The court concludes that the evidence does not meet the required clear and convincing standard for invalidity. As a result, partial summary judgment will be granted to uphold the validity of the Boffito patent, and the defendant's motion to amend the Final Pretrial Order to challenge this validity is rendered moot. The court previously issued a preliminary injunction against Ergenics for infringing the Barosi patent, with detailed factual background available in prior rulings by Judge Ackerman.

The Boffito patent encompasses eight claims related to varying percentages of composition metals and activation temperatures. The plaintiff contends that judicial estoppel should prevent the defendant from contesting the patent's validity due to prior concessions made. Judicial estoppel is intended to maintain the integrity of the judicial process by prohibiting contradictory positions that could yield an unfair advantage. The court finds that the current ruling on the merits makes this issue moot.

Defendant's expert, Dr. Gary Sandrock, acknowledged in depositions that the Boffito process was the first commercially viable metal getter that could be activated at low temperatures. Dr. Danielson, who provided testimony regarding the defendant’s patent misuse defense, is noted for his failed attempt to acquire gettering alloy from Saes, raising questions about the validity of his expert testimony. No evidence has been presented to refute the established characteristics of a "getter," which includes the ability to sorb gases rapidly at low pressure.