Disputed Claim Construction Should Not Ordinarily Be Decided on 12(b)(6) Motion

Nalco v. Chem-Mod (Fed. Cir. 2018)

The district courtroom dismissed Nalco’s patent infringement complaint with prejudice on a R. 12(b)(6) motion for failure to point out a declare upon which reduction can be granted. On enchantment, the Federal Circuit has reversed – getting that the patentee had adequately said a declare of direct infringement, infringement below the doctrine of equivalents, oblique infringement, and willful infringement.

Nalco’s asserted U.S. Patent No. 6,808,692 addresses a process of eradicating most of the elemental mercury from the smoke emitted by a coal plant (just before it is unveiled into the environment).  While Nalco’s method is no better than prior approaches, it is less expensive and thus a lot more probably to be adopted.  The claimed process involves injection of a halide precursor that is then transformed to a halide (by the heat of the furnace) which then binds to mercury in a sort that can be conveniently filtered from the flue gasoline.

In U.S. Federal Court, a lawsuit commences with the filing of a complaint that have to involve ample allegations of point that make the declare for reduction plausible.  A complaint with factual deficiencies is can then be dismissed. Usually, a courtroom will dismiss the case devoid of prejudice (letting it to be refiled with a lot more entire factual assertions) or even informally counsel the plaintiff file an amended complaint.  Right here, the Nalco has submitted 5 diverse issues (unique furthermore 4 amended).  The to start with and third amended issues were dismissed devoid of prejudice.  Last but not least, at the fourth complaint the courtroom dismissed with prejudice — major to the enchantment right here.

In the issues, Nalco spelled out in element its principle of infringement. For its part, the district courtroom appears to have done an casual declare development that led to its ruling of no possible infringement.  The standard difficulty is that the patent implies (but does not expressly declare) that a mixing of the halide precursor with other supplies occurs inside of the flue, while the accused system pre-mixes prior to injection into the flue.

As a result, this is a case where direct infringement will probably be resolvable as a concern of regulation adhering to declare development.  Right here, even so, the Federal Circuit turned down the decreased court’s casual declare development as premature at the pleading phase:

As Nalco spelled out, these disputes between the parties hinge on where “flue gas” might be located  inside of the energy plant and what constraints are ideal on where “injecting” might manifest. It is not ideal to solve these disputes, or to figure out no matter whether the process claimed in the ’692 patent ought to be confined to the preferred embodiment, on a Rule 12(b)(6) motion, devoid of the gain of declare development. The intent of a motion to dismiss is to take a look at the sufficiency of the complaint, not to decide the deserves. (interior prices removed)

What does this indicate – despite the fact that declare development is an problem of regulation, the courtroom right here holds that declare development is not the form of lawful concern that ought to generally be settled on the pleadings devoid of the due consideration provided in the Markman system.


Walking as a result of the complaint, the appellate panel also observed improper dismissal of the patentee’s claims of infringement below the doctrine of equivalents, oblique infringement, and willful infringement.

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