86
Opinion of the Court
United States District Court for the District of South Carolina alleging that petitioners, Cardinal Chemical Company and its affiliates (Cardinal), had infringed those patents. Cardinal filed an answer denying infringement and a counterclaim for a declaratory judgment that the patents are invalid. While this case was pending in the District Court, Morton filed two other actions against other alleged infringers of the same patents. One was filed in the Eastern District of Louisiana, the other in the District of Delaware. The defendants in both cases, like Cardinal, filed counter-claims for declaratory judgments that the patents were invalid. Of the three, the Louisiana case was tried first and, in 1988, resulted in a judgment for the defendant finding no infringement and declaring the patents invalid.2 On appeal, the Federal Circuit affirmed the finding of no infringement but vacated the judgment of invalidity.3 The Delaware case is still pending.
In 1990 this case proceeded to a 5-day bench trial. The South Carolina District Court concluded, as had the Louisiana District Court, that the patentee had failed to prove infringement and that the defendant-counterclaimant had proved by clear and convincing evidence that both patents were invalid.4 Accordingly, the court mandated two sepa-2 Morton Thiokol, Inc. v. Witco Chemical Corp., No. 84-5685 (ED La., June 22, 1988), App. 10, 24-31, 36.
3 Morton Thiokol, Inc. v. Argus Chemical Corp., 11 USPQ 2d 1152 (CA Fed. 1989), judgt. order reported at 873 F. 2d 1451 (CA Fed. 1989) (nonprecedential). The court explained its disposition of the judgment of invalidity as follows: "We hold that the finding of no literal infringement is not clearly erroneous and on that basis we affirm the portion of the judgment of the district court that determined that the patents are not infringed and dismissed the suit. We therefore find it unnecessary to reach the district court's determination that the patents are invalid, and vacate the portion of the judgment that so determined." 11 USPQ 2d, at 1153, App. 39.
4 "The evidence clearly and convincingly establishes that a person skilled in the art is unable to ascertain the claimed structures in order to avoid infringement . . . . Therefore, this court concludes that the lan-
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