David Netzer Consulting Engineer LLC v. Shell Oil Company et al

Filing 45

Opinion on Summary Judgment. (Signed by Judge Lynn N. Hughes) Parties notified.(amwilliams, 4)

UNITED STATES DISTRICT COURT

David Netzer Consulting Engineer LLC,
Plaintiff,
versus
Shell Oil Company,

et

al.,

Defendants.

SOUTHERN DISTRICT OF TEXAS

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Civil Action H-r4-r66

Opinion on Summary Judgment
1.

Introduction.
An engineer patented a method for producing benzene. His company, to whom he

assigned the patent, says that an oil company is infringing the patent. The engineer restricted
his claim to the production of benzene between 80 and 98 percent purity by weight. Because
the oil company's method produces benzene that is 99.9% pure, the engineer's company will
take nothing.

2.

Background.
David Netzer Consulting Engineer, LLC, holds the '496 patent for producing benzene.

Claim one purifies benzene to at least 80% by fractionating pyrolysis gas. Pyrolysis gas - a
byproduct of oil and gas refining - is rich in benzene, and it is a common precursor for
producing purified benzene. Netzer says that fractionating is a term that includes all methods
that separate a mixture into its components; these are illustrative: distillation, liquid-liquid
extraction, centrifugation, gel filtration, and foam fractionation. In the '496 patent, components
are separated based on their differing boiling points.
Shell Chemical employs a six-step method that purifies benzene to 99.9 %. The first five
steps are similar to Netzer's patent, except that they produce benzene that is only 50 to 7 0 %
pure. In the final step, Shell extracts benzene that is 99.9% pure. This last extraction step had
been patented by Shell as the Sulfolane method. Extraction separates the components of the

mixture based on solubilities. Unlike Net:z:er, Shell says that fractionating does not encompass
extraction and that fractionating specifically means separating a mixture by its components'
boiling points.
Net:z:er sued Shell Chemical LP, Shell Oil Company, and Shell Oil Products Company
LLC.

No Literal Infringement.

3.

Literal infringement of a method claim means that the infringer performed every step
of the method. I A critical step in Shell's method is extraction because this step increases the
benzene yield from 50-70% to 99.9%. Net:z:er's method does not include extraction and does
not yield benzene of 99.9% purity. To infringe, Shell would have to eliminate the extraction
step and still produce benzene purified to at least 80%. There is no literal infringement.

No EqUivalence.

4.

Net:z:er is barred from claiming infringement under the doctrine of equivalents by
specific exclusion, prosecution-history estoppel, and prior art.
Traditionally, high-purity benzene was required to produce ethylbenzene, a precursor
to plastics. Recent technology has made it possible to create ethylhen:z:ene from low-purity
benzene, which is cheaper. In its patent, Net:z:er expressly excludes a method that produces
benzene of 99.9% purity. The specification says that his purpose is to take advantage of the
recent demand for cheaper, lower-purity benzene. He names Shell's patented Sulfolane method
as one of the conventional, more expensive methods, that his patent avoids. No claims mention
benzene higher than 97%. The summary of the invention suggests an ideal method that
produces benzene that is 98% pure.
Netzer's claim is also barred by prosecution-history estoppel. 2 In response to the United
States Patent and Trademark Office, Net:z:er explicitly said that the '496 patent is useful for
producing benzene that does not need to exceed a purity of 99 percent by weight.

I

2

Joy Technologies, Inc. v. Flakt, Inc., 6 F'3d 770,775 (Fed. Cir. I993)'
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 7 22 , 733-34

(U.s.

2002).

Finally, Netz;er's claim is barred by prior art. The '857 patent by Tokuhisa is a method
for producing benz;ene that is higher than 99.5%. To overcome a prior-art rejection during
prosecution, Netz;er distinguished the '496 patent by saying that he was not concerned with
the high-purity levels of the' 8 57 patent. IfN etz;er' s patent had claimed benz;ene that was 99.9 %
pure, it would have been invalidated by the '857 patent. Matter that would have invalidated the
patent is necessarily excluded from the patent's scope. 3

5.

Conclusion.
In this suit, Netz;er is trying to expand its patent's coverage of methods and yields,

despite having disclaimed the product and been barred from claiming the method. Infringement
of a method patent means that the infringer performs every single step of the method and yields
the same product. Shell's method performs the methods in Netz;er' s patent, but adds a distinct
step that yields a nearly pure product. Netter will take nothing.

Signed on August 26,2015, at Houston, Texas.

~ '* ~'4Lynn N. Hughes

United States DistrictJudge

3

Wilson Sporting Goods Co. v. David Geoffrey
(Fed. Cir. 1990).

fry- Associates,

904 F.2d 677,684