                     NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
                       is not citable as precedent. It is a public record.

 United States Court of Appeals for the Federal Circuit

                                         2005-1542



                               DOW AGROSCIENCES LLC,

                                                                 Plaintiff-Appellee,

                                              v.

                           CROMPTON CORPORATION and
                        UNIROYAL CHEMICAL COMPANY, INC.,

                                                                 Defendants-Appellants.
                             __________________________

                             DECIDED: May 5, 2006
                             __________________________


Before SCHALL, Circuit Judge, CLEVENGER, Senior Circuit Judge, and GAJARSA,
Circuit Judge.

CLEVENGER, Senior Circuit Judge.


        Defendants-Appellants Crompton Corporation and Uniroyal Chemical Company,

Inc. (collectively, Crompton) appeal the decision of the United States District Court for

the Southern District of Indiana, granting summary judgment in favor of Plaintiff-

Appellee Dow AgroSciences LLC (Dow).               Dow AgroSciences LLC v. Crompton

Corp., 381 F. Supp. 2d 826 (S.D. Ind. 2005) (Summary Judgment). We agree with the

district court that Dow's products do not infringe any of the claims of Crompton's

patents, U.S. Patent No. 4,607,044 (the '044 patent), U.S. Patent No. 4,833,151 (the

'151 patent), and U.S. Patent No. 5,142,064 (the '064 patent) (collectively, the patents-

in-suit).   Crompton also appeals the district court's denial of its motion to transfer,
requesting that we transfer this case upon remand to the United States District Court for

the   District   of   Connecticut.   Dow     AgroSciences    LLC     v.   Crompton   Corp.,

No. 1:03-CV-654 (S.D. Ind. April 14, 2004) (Motion to Transfer). However, because we

affirm the district court's grant of summary judgment, we need not determine whether

transfer would be appropriate on remand. Thus, we affirm.

                                             I

       The patents-in-suit claim compounds derived from urea or thiourea for use as

insecticides. Representative claim 1 of the '044 patent,1 recites:




       wherein

       A is a hydrogen atom, a halogen atom, a methyl group, or a methoxy
       group;

       B also is a hydrogen atom, a halogen atom, a methyl group, or a methoxy
       group, with the proviso that A and B are not both a hydrogen atom;

       R is a hydrogen atom, an alkyl group, a hydroxy group, an alkoxy group,
       an alkoxy methyl group, an acyl group, or an alkoxycarbonyl group;
       X and Y each are an oxygen atom or a sulfur atom;



       1
               Of the three patents in suit, the '044 and '151 patents expired during this
action on August 19, 2003, while the '064 patent remains active until August 25, 2009.
However, the district court, in its decisions, primarily discussed representative claim 1 of
the '044 patent. Neither party argues that there is any relevant distinction between the
language of claim 1 of the '044, '151 and '064 patents. Further, each of the asserted
claims depends on claim 1 of the relevant patent. Thus, unless otherwise noted, we will
refer to the same claim language as the district court, namely, claim 1 of the '044 patent.
In addition, as the three patents-in-suit have a common specification, all references are
to the specification of the '044 patent.



2005-1542                                2
      R1 is a hydrogen atom, an alkyl group that may be substituted with
      halogen, with alkoxy, with alkylthio, or with cyano, a 1-cycloalkenyl group,
      a benzyl group that may be substituted with halogen, a hydroxy group, an
      alkoxy group, an acyl group, an alkoxycarbonyl group, an
      alkoxythiocarbonyl group, an alkylsulfonyl group, or a phenylsulfonyl
      group; and

      R2 is a substituted or non-substituted phenyl group of a pyridyl group
      that may be substituted with halogen, with nitro, with cyano, or with
      halogenated alkyl;

      with the proviso that the active ingredient comprises a compound that is
      not included in either of the following paragraphs:

      (1) A and B are each independently selected from the group consisting of
      chlorine, fluorine, and methyl, R1 is selected from the group consisting of
      hydrogen and lower alkyl, R2 is a phenyl group substituted at at least one
      position with a moiety selected from the group consisting of halogen, alkyl
      of 1-15 carbons, halogen derivatives of said alkyl, cycloalkyl, and
      halogenated cycloalkyl, nitro, and phenyl, X and Y are both oxygen atoms,
      and R is a hydrogen atom;

      (2) N-(2,6-dichlorobenzoyl)-N'-(4-cyanophenyl) urea.

'044 patent, col. 28, ll. 1-53 (emphasis added)

      The accused chemicals are hexaflumuron and noviflumuron.            The chemical

structure of hexaflumuron, which is undisputed, is as follows:




                                      Hexaflumuron




2005-1542                                3
The chemical structure of noviflumuron, which is undisputed, is as follows:




                                      Noviflumuron

       As a preliminary note, it is helpful to understand several chemistry terms. First of

all, a "phenyl group" refers to a functional group with formula C6H5.




                         Phenyl group (attached to molecule R)

       Each carbon on a phenyl group has one hydrogen atom; if any hydrogen atom is

substituted with other atoms or groups, the phenyl group becomes a "substituted phenyl

group." Both of the compounds in suit, hexaflumuron and noviflumuron, substitute one

or more of the hydrogen atoms on their respective phenyl groups with another functional

group. In particular, hexaflumuron substitutes two of its hydrogen atoms with chlorine

and one of its hydrogen atoms with OC2HF4.




2005-1542                                4
                Hexaflumuron phenyl group, substituted in three places

      Noviflumuron substitutes two of its hydrogen atoms with chlorine, one of its

hydrogen atoms with fluorine, and one of its hydrogen atoms with OC3HF6 .




                 Noviflumuron phenyl group, substituted in four places

      Secondly, an alkoxy group is an alkyl group linked to oxygen. An alkyl group is a

univalent radical containing only carbon and hydrogen atoms; it has a general formula

CnH2n+1. Thus, CH3, C2H5, and C3H7 are all alkyls.




2005-1542                               5
                                         Alkyls




      CH3                        C2H5                              C3H7

      Correspondingly, OCH3, OC2H5, and OC3H7 are alkoxy groups.

                                    Alkoxy groups




             OCH3                OC2H5                     OC3H7

      As with the phenyl groups described above, it is possible to substitute other

atoms or chains of atoms for the hydrogen atoms in an alkyl or an alkoxy group to form

substituted alkyls or substituted alkoxy groups. For example, the hydrogen atoms in

OCH3 and OC2H5 can be substituted with fluorine to create the substituted alkoxy

groups OC2HF4 and OC3HF6, respectively.




2005-1542                               6
                                Substituted alkoxy groups




                                  OCH3                 OC2H5

       Hexaflumuron substitutes one of the hydrogen atoms on its phenyl group with

OC2HF4, a substituted alkoxy group.      Similarly, noviflumuron substitutes one of the

hydrogen atoms on its phenyl group with OC3HF6, a substituted alkoxy group.

                                             II

       On May 6, 2003, Dow filed a declaratory judgment action requesting that the

district court declare that all claims of the patents-in-suit are invalid and that no Dow

product infringes any valid claim of the patents-in-suit. On January 30, 2004, Crompton

filed a motion to transfer venue pursuant to 28 U.S.C. § 1404(a). That motion was

denied on April 14, 2004, following a Markman hearing on claim construction. Motion to

Transfer, slip op. at 1.

       Claim 1 of each of the patents-in-suit, upon which each of the asserted claims

depends, provides that "R2 is a substituted or non-substituted phenyl group . . . ." The

claims themselves do not define a "substituted phenyl group" or otherwise indicate what

atoms or groups of atoms may be used as substituents on the phenyl group. However,

during the Markman proceeding, the parties stipulated to define the term "substituted

phenyl group" by including the recitation of substituents in column 2 of the patents:

       If R2 is a substituted phenyl group, the phenyl group contains at least one
       substituent chosen from the group consisting of:




2005-1542                                7
       (a) 1-3 halogen atoms,2
       (b) 1-2 alkyl groups, possibly substituted with halogen, hydroxy, alkoxy,
       alkylthio, diaIkyl amino, alkylsulphonyl and phenyl,
       (c) tri- or tetramethylene,
       (d) a cycloalkyl group, possibly substituted with halogen or cyano,
       (e) 1-2 nitro groups or cyano groups or alkoxy groups,
       (f) a dioaymethylene or dioxycthylene group,
       (g) an acyl group, which may be substituted with halogen,
       (h) an alkyl sulfonyl, phenyl sulfony|, alkylthio, phenylthio or phenoxy
       group, which groups may be substituted with halogen,
       (i) a sulfonamide group, which may alkylated, and
       (k) a phenyl group, which may be substituted with halogen.

'044 patent, col. 2, ll. 30-49.

       Shortly after the Markman hearing, on April 28, 2004, Crompton filed

counterclaims asserting that Dow's sale of hexaflumuron and noviflumuron infringed

claims 1, 2, 3, 4, 6, and 7 of the '044 patent, claims 1, 2, 4, 5, and 6 of the '151 patent,

and claims 1, 2, 3, and 4 of the '064 patent. Crompton further alleged that Dow

breached a 1994 Settlement Agreement granting a license under the patents-in-suit to

one of Dow's compounds and that Dow engaged in unfair competition.

       The district court entered its initial claim construction on May 13, 2004, in which it

construed the phrase: "If R2 is a substituted phenyl group, the phenyl group contains at

least one substituent chosen from the group consisting of: . . ." In particular, the court

found that this language requires that each and every substituent on a substituted

phenyl group must come from the enumerated list. First Claim Construction Order, slip

op. at 28.




       2
              The '064 patent specifically recites "1-13 halogen atoms" but the parties
agree that this was a typo and that consistent with the other patents-in-suit, the
specification should read "1-3 halogen atoms."



2005-1542                                 8
         On June 28, 2004, both parties moved for summary judgment on the issue of

infringement. On July 6, 2005, the court granted Dow's motion and denied Crompton's

motion.    Summary Judgment, slip op. at 1-2.       As part of its opinion on summary

judgment, the court elaborated upon its initial claim construction by construing the term

"alkoxy" as used in the enumerated list of phenyl group substituents. The court found

that the term "alkoxy" refers only to unsubstituted alkoxy groups and does not refer to

substituted alkoxy groups. Id., slip op. at 10-22. The court noted that the structures of

the accused chemicals, hexaflumuron and noviflumuron, were not disputed. Id., slip op.

at 22. In addition, the court noted that both hexaflumuron and noviflumuron contain

phenyl groups substituted with alkoxy substituents, which are in turn substituted with a

halogen, fluorine. As the court had determined that the term "alkoxy" in the enumerated

list does not refer to a substituted alkoxy group, the substituted alkoxy group

substituents on the accused compounds were not among the enumerated list of

possible substituents for the phenyl group. Because the court's initial claim construction

required that all substituents on the phenyl group be on the enumerated list, the court

determined that neither product literally infringed the patents-in-suit. Id, Further, the

court determined that the doctrine of equivalents was not applicable. Id., slip op. at

23-24.

         Thus, the court granted Dow's motion for summary judgment of noninfringement

and denied Crompton's cross-motion for summary judgment of infringement. Pursuant

to Fed. R. Civ. P. 54(b), the court entered final judgment on its summary judgment

determination and its denial of the motion to transfer. Crompton timely appealed both

decisions to this court and we have jurisdiction under 28 U.S.C. § 1295(a)(1).




2005-1542                               9
                                            III

      Claim construction is a question of law, reviewed de novo. Cybor Corp. v. FAS

Techs. Inc., 138 F.3d 1448, 1451 (Fed. Cir. 1998). Infringement is a question of fact.

Biovail Corp. Int'l v. Andrx Pharms., Inc., 239 F.3d 1297, 1300 (Fed. Cir. 2001). When a

district court grants summary judgment, we review de novo both whether there are

disputed material facts and whether the prevailing party is entitled to judgment as a

matter of law. SunTiger, Inc. v. Scientific Research Funding Group, 189 F.3d 1327,

1333 (Fed. Cir. 1999) (citing Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575 (Fed. Cir.

1994)).

      Summary judgment is appropriate when no genuine issue of material fact exists

and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c).

"In determining whether there is a genuine issue of material fact, the evidence must be

viewed in the light most favorable to the party opposing the motion, with doubts

resolved in favor of the opponent." Chiuminatta Concrete Concepts, Inc. v. Cardinal

Indus., 145 F.3d 1303, 1307 (Fed. Cir. 1998).

                                            IV

      On appeal, Crompton argues that the district court improperly construed the

claim language in two respects. First, Crompton argues that the phrase "If R2 is a

substituted phenyl group, the phenyl group contains at least one substituent chosen

from the group consisting of: . . ." does not require that all of the substituents on the

phenyl group be from the enumerated list. Rather, Crompton argues that only one of

the substituents on the phenyl group must come from the enumerated list and that all

other substituents are unbounded.     It is undisputed that other than the substituted




2005-1542                              10
alkoxy groups, all the substituents on the phenyl groups of hexaflumuron and

noviflumuron are on the enumerated list. Thus, Crompton argues that under its claim

construction, both compounds literally infringe the patent.

       Second, Crompton argues that the term "alkoxy" refers to both substituted and

unsubstituted alkoxy groups. As such, Crompton argues that the substituted alkoxy

groups on each compound are "alkoxy[s]" as referred to on the enumerated list. Again,

because it is undisputed that the remaining substituents on the phenyl groups of

hexaflumuron and noviflumuron are on the enumerated list, Crompton argues that under

its claim construction, both compounds literally infringe the patent.

       However, we agree with the district court with regard to both claim construction

issues. First of all, the phrase "the phenyl group contains at least one substituent

chosen from the group consisting of: . . . " requires that all substituents on the phenyl

group be chosen from the enumerated list. Crompton itself proffered this construction in

connection with the similarly phrased provisos of the claim. The proviso of claim 1 of

the '044 patent serves to exclude certain compounds from the claim language, stating

that a compound is not included in the claim if "R2 is a phenyl group substituted at least

one position with a moiety selected from the group consisting of . . . ." Crompton

argued before the district court that this meant "compounds wherein all moieties

substituted onto the R2 phenyl group are selected from the group consisting of . . . ."

First Claim Construction Order, slip op. at 21-22.

       Further, as the district court noted, this construction gives meaning to the

numerical limitations on substituents contained within the enumerated list. Id., slip op.

at 19-20. The relevant language states that "the phenyl group contains at least one




2005-1542                                11
substituent chosen from the group consisting of: (a) 1-3 halogen atoms, (b) 1-2 alkyl

groups . . . (e) 1-2 nitro groups or cyano groups or alkoxy groups . . . ." '044 patent, col.

2, ll. 30-49. Under Crompton's proposed construction, a compound would infringe if the

phenyl group was substituted with four or five halogen atoms, even though the

enumerated list limits the number of halogen substituents to three. Because at least

one of the substituents (the first halogen atom) would be on the enumerated list, it

would not matter that two of the other substituents (the fourth and fifth halogen atoms)

are not on the enumerated list. As a result, Crompton's proposed claim construction

would render the "1-3" limitation on halogen atoms surplusage. As such, we agree with

the district court that phrase "the phenyl group contains at least one substituent chosen

from the group consisting of: . . . " requires that all substituents on the phenyl group be

chosen from the enumerated list.

       Secondly, we agree with the district court that the term "alkoxy" refers only to

unsubstituted alkoxy groups. Neither the claim language nor the specification explicitly

indicates whether the term "alkoxy" includes substituted as well as unsubstituted

variations. However, throughout both the claims and the specification, the patentee

explicitly indicated which functional groups can be substituted. Thus, those functional

groups which are not explicitly indicated as being capable of substitution cannot be

substituted.

       For example, claim 1 of the '064 patent distinguishes between substituted and

unsubstituted variations of functional groups such as alkyl, cycloalkyl, benzyl, and

phenyl groups. Claim 1 states:

       R1 is a hydrogen atom, an alkyl group, a halogen substituted alkyl groupk
       [sic], an alkoxy substituted alkyl group, an alkythio substituted alkyl group,



2005-1542                                12
       a cyano substituted alkyl group, a 1-cycloalkenyl group, a benzyl group, a
       halogen substituted benzyl group, an acyl group . . .

'064 patent, col. 29, ll. 9-14. Thus, claim 1 indicates that R1 may be an alkyl group

substituted with certain substituents, an unsubstituted benzyl group, or a halogen

substituted benzyl group.       Similarly, claim 1 of the '064 patent states that "R2 is a

substituted or non-substituted phenyl group." Id. at col. 29, ll. 15. Continuing this

pattern, claim 2 of the '064 patent distinguishes between those groups which may be

substituted (i.e., "a halogenated cycloalkyl group") and those which are not substituted

(i.e., "a cycloalkyl group"). Id. at col. 30, ll. 11-30.

       In addition, the enumerated list setting out the possible substituents for the

substituted phenyl group, the list in which the term "alkoxy" is found, repeatedly

distinguishes between those functional groups which may be substituted and those

which may not be substituted. Six of the ten substituent groups, (a)-(k), list potential

substitutions. '044 patent, col. 2, ll. 30-50. If the phenyl group is substituted with an

alkyl, acyl, alkyl sulfonyl, phenyl sulfonyl, alkythio, phenylthio, phenoxy, or phenyl

functional group, that functional group may itself be substituted. However, if the phenyl

group is substituted with a nitro, cyano, dioxymethylene, dioxyethylene, or alkoxy

functional group, that group may not be substituted.

       Further, substituent group (h) states that a "phenoxy" group can be substituted

with halogen. Id. at col 2, ll. 44-47. A phenoxy group is an oxygen with a phenyl group

attached. Thus, it is similar in structure to an alkoxy group; both have the same oxygen-

connected-to-hydrocarbon structure and both may be substituted in a similar manner.

The patentee explicitly noted when and in what manner a phenoxy group serving as a

substituent on the phenyl group may itself be substituted. Therefore, the lack of an



2005-1542                                   13
express recitation of possible substituents for an alkoxy group serving as a substituent

on the phenyl group indicates that the alkoxy group must be unsubstituted.

                                             V

       Having determined that the district court's claim construction was correct, we

must   determine   whether    the   court    properly   granted   summary    judgment   of

noninfringement under that claim construction. Hexaflumuron and noviflumuron both

contain phenyl groups substituted with alkoxy substituents, which in turn are substituted

with halogens. Because an alkoxy group substituted with halogens is not an "alkoxy" as

the term is used in the enumerated list of substituents, at least one of the substituents

on the phenyl group of both hexaflumuron and noviflumuron is not on the enumerated

list of possible substituents for the phenyl groups. The phenyl groups on the accused

compounds are not "substituted phenyl group[s]" within the meaning of the claim

language. As a result, we agree with the district court that there can be no literal

infringement of the claims.

       On appeal, Crompton argues that the district court erroneously granted summary

judgment of noninfringement, claiming that there are genuine issues of material fact as

to whether the accused products infringe under the doctrine of equivalents. However,

Crompton's arguments as such are essentially a restatement of its claim construction

arguments.     Crompton does not explain how the accused products "perform[]

substantially the same function in substantially the same way to obtain the same result,"

such that we might find the accused products are the equivalent of the claimed

invention. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950).

Rather, Crompton relies on mere allegations that there are genuine issues of material




2005-1542                               14
fact regarding infringement by equivalents. Such allegations are insufficient to survive a

motion for summary judgment. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-

49 (1986). Thus, we discern no error in the district court's grant of summary judgment

on the issue of infringement.

      Finally, Crompton argues that the district court erred in denying its motion to

transfer. However, the only relief sought by Crompton is a transfer upon remand to the

United States District Court for the District of Connecticut. Because we are affirming the

decision of the district court granting summary judgment of noninfringement to Dow, we

need not determine whether a transfer is appropriate on remand.




2005-1542                               15
