Guidance on the standard for “reasonable certainty” in an indefiniteness evaluation

Bernadette McGann | February 4, 2016

Akzo Nobel Coatings, Inc. v. Dow Chemical Co.

January 29, 2016

Before Lourie, Reyna and Chen. Opinion by Lourie.

Summary

The CAFC affirmed the District Court’s holding that the claims of the ‘956 patent are valid and not indefinite and affirmed the holding that the process of Dow does not infringe, either literally or DOE, the ‘956 patent. This case provides additional guidance on the reasonable certainty standard of Nautilus.


Details

I. Background

Akzo owns patent 6,767,956 (herein after ‘956) directed towards an extrusion process for generating low viscosity aqueous polymer dispersions. A novel feature of the extrusion process is that while the mixture is heated, it is never allowed to boil, which would negatively affect the resulting product, i.e. impossible to disperse the polymer. (The boiling point of a liquid varies depending upon the surrounding environmental pressure.) Akzo sued Dow alleging that the BLUEWAVE process by Dow infringed claims 1-8 of ‘956.

Claims 1 and 2 of ‘956

1. A process for producing a dispersion of a polymer in an aqueous medium in which the polymer is dispersed in an aqueous medium in an extruder at a temperature above 100° C. in an extruder having an outlet

wherein the pressure in the extruder is maintained above atmospheric so that the aqueous medium does not boil characterized by maintaining the pressure above atmospheric for the

extruder at the outlet with a pressurized collection vessel and

wherein aqueous dispersion from the extruder has at least 25% by weight of the aqueous medium

where the aqueous medium has less than 40% by weight of organic solvent and

wherein the aqueous dispersion enters the outlet and pressurized collection vessel at a pressure above atmospheric so that the aqueous medium does not boil and is subjected to the action of a cooling zone to lower the temperature of the aqueous dispersion to below 100° C. to have an aqueous dispersion with a viscosity below 10 Pa·s.

Claim 2 further requires: “[a] process according to claim 1 which is carried out at a temperature of from about 5 to 150° C. above the melting point of the polymer.” Id. col. 8 ll. 5–7 (emphasis added).

Id. at pages 2 and 3.

The District Court for the District of Delaware granted summary judgment, holding that Dow did not infringe the claims of ‘956, either literally or under the doctrine of equivalents (hereinafter DOE) and held that the claims of ‘956 are not indefinite. Akzo appeals the granting of summary judgment for Dow and Dow cross-appeals the court’s conclusion of definiteness.

Regarding the claim construction of claim 1, the District Court concluded that “pressurized collection vessel” means “tubing, piping or other container where a desired material accumulates, which is maintained above atmospheric pressure.” The District Court relied on the specification, specially Examples 2 and 3, which state “[t]he dispersion was collected into a water-cooled pressurized vessel maintained under nitrogen at 7 bar and from which the dispersion, once cooled to below 100oC., could be periodically removed…”. Id. at page 4. The District Court concluded that the claim term “viscosity below 10 Pa·s” is not indefinite. Dow argued that since the temperature at which viscosity was determined was not disclosed, the claim term was indefinite. The District Court held that “in context one of ordinary skill in the art would know with reasonable certainty that viscosity is to be measured at room temperature.” Id. at page 5. Next, the District Court held that the feature of claim 2 was not indefinite in view of the disclosure of the specification, i.e. “finding that the specification explains that only a subset of steps in the claimed process occurs at elevated temperatures…and therefore ‘the limitation in claim 2 refers to the elevated temperature phase’.” Id. at page 5. Lastly, the District Court found that the process of Dow comprises a valve and allows continuous flow of the polymer dispersion. That is, it does not accumulate and thus, due to the lack of accumulation, no reasonable juror could find that Dow’s accused process uses a pressurized collection vessel. The District Court held that there cannot be infringement, either literal or DOE.

II. On Appeal

Claim Construction

Akzo argued that the District Court narrowly construed the term “pressurized collection vessel’ to require accumulation, and rather should have given the ordinary meaning of “gather or receive.” Dow cites Examples 1 and 2 of the specification in support of the District Court interpretation and argues that the allegedly meaning “gather or receive” would render the term superfluous. The CAFC agreed with Dow and affirmed the District Court’s interpretation. The CAFC stated that “allowing ‘collection’ to mean ‘receive’ would render ‘collection’ entirely superfluous and allow any pressurized vessel to constitute a ‘pressurized collection vessel’; such a result is disfavored.” Id. at page 8. Furthermore, the CAFC held that the specification supports the District Court’s interpretation.

Infringement – Literal Infringement

Akzo argues that that it raised a genuine issue of material fact as to literal infringement under the courts’ construction of “pressurized collection vessel” in light of the expert declaration by Dr. Mount. Akzo argued that there is an issue regarding the function of the control valve in the Dow process and dispersion ‘accumulates’ in Dow’s heat exchange equipment. Dow argues that the declaration fails to create a genuine issue of material fact because it is “ambiguous at best about whether dispersion ‘accumulates’ in the heat exchangers.” Id. at page 10. The CAFC agreed with Dow and affirmed the District Court’s holding “that Akzo failed to raise a genuine issue of material fact as to literal infringement.” Id. at page 10.

“As the movant [for summary judgment], Dow had “the initial responsibility of identifying the legal basis of its motion, and of pointing to those portions of the record that it believes demonstrates the absence of a genuine issue of material fact.” Novartis Corp. v. Ben Venue Labs., Inc., 271 F.3d 1043, 1046 (Fed. Cir. 2001).” Id. at page 10. Dow argued that its’ process lacks a “pressurized collection vessel” and in its’ process the material is continuously passing through the heat exchanger, a large open-to-the-atmosphere plastic crate or an even larger, open-to-the-atmosphere storage tank, neither of which is pressurized. “Accordingly, ‘the burden shift[ed] to [Akzo] to designate specific facts showing that there is a genuine issue for trial.’ Novartis, 271 F.3d at 1046.” Id. at page 10. CAFC held that Akzo did not meet its burden. “Dr. Mount’s statement [in the Declaration] is ambiguous at best as to whether accumulation occurs in Dow’s accused process. It does not recite ‘accumulation’, nor does it expressly refute Dow’s contention that dispersion flows continuously throughout its process and does not accumulate.” Id. at page 11. The CAFC held that Akzo’s reliance on the phrase “resident for a period of time”, in the Declaration, does not meet signify an accumulation.

Infringement – DOE

Akzo argues that the there is a genuine issue of material fact as to whether Dow’s equipment performed the same function in substantially the same way to reach the same result. Akzo argues that the District Court erroneous applied the wrong standard for evaluating DOE, the “concept of vitiation, and impermissibly creating a ‘binary choice’ in which an element is either present or not present.” Id. at page 12. Dow argues that the District Court correctly applied the function-way-result standard and correctly determined that the Akzo failed to meet is burden of showing a genuine issue of material fact.

The CAFC agreed with Dow and affirmed the District Court’s holding. CAFC cited the Warner-Jenkinson holding, “if a theory of equivalence would entirely vitiate a particular claim element, partial or complete judgment should be rendered by the court….” Id. at page 13. The CAFC then noted that “saying that a claim element would be vitiated is akin to saying that there is no equivalent to the claim element in the accused device based on the well established ‘function-way-result’ or ‘insubstantial differences’ tests.’ Brilliant Instruments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1347 (Fed. Cir. 2013) (emphasis added).” Id. at page 13.

The CAFC noted that for Akzo to survive summary judgment, Akzo was required to establish that the valve and a series of pipes and heat exchangers, where the dispersion flows continuously, generates backpressure in the extruder in substantially the same way so as to increase the boiling point of the carrier fluid. Id. at page 14. The CAFC held that the Declaration failed to articulate how Dow’s accused process operates in substantially the same way.

Indefiniteness

Dow argues that terms “viscosity below 10 Pa·s” (claims 1-8) and “carried out at a temperature of from 5 to 150oC above the melting point of the polymer” (claims 2-6) are indefinite.

“A patent claim is invalid for indefiniteness if its language, when read in light of the specification and prosecution history, “fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. ____, 134 S. Ct. 2120, 2124 (2014).” Id. at page 15.

The District Court relied on extrinsic evidence to construe the term “viscosity below 10 Pa·s.” There were two pieces of extrinsic evidence, declaration by Dr. Mount and the ASTM protocol. The declaration states that “the standard practice in analytical chemistry dictates that if a temperature is not specified for a given measurement, room temperature is implied.” Id. at page 16. The ASTM protocol states that “test method [for] the determination of the apparent viscosity of hot melt adhesives…at temperatures up to 175oC.” Id. at page 16.

The CAFC affirmed that the District Court correctly relied on the declaration over the ASTM protocol because the ASTM protocol is directed only to hot melt adhesives. The CAFC held that “Dow ‘fail[ed] to establish by clear and convincing evidence that a person skilled in the art would not know with reasonable certainty at what temperature to measure viscosity.” Id. at page 16. The CAFC then held that the intrinsic record further supports this District Court’s claim interpretation. “Granted, neither the claim language nor the specification indicates a temperature for the final viscosity measurement. But room temperature is the only temperature mentioned at all in the ’956 patent in connection with a viscosity measurement.” Id. at page 17. The CAFC affirmed the holding of the District Court and held that there is “no clear error in that fact finding here, and it does not conflict with the intrinsic record….” Id. at page 16.

The District Court relied on intrinsic evidence to construe the term “carried out at a temperature of from 5 to 150oC above the melting point of the polymer.” It was noted that the specification “teaches that the dispersing step necessarily takes place before the dispersion exits the extruder; it is during that dispersing step when the temperature exceeds the melting point of the polymer. Indeed, the specification describes a typical process where the polymer ‘is melted in the initial melt zone of the extruder at a temperature above the melting point of the polymer, preferably from 5 to 150° C, typically 10 to 130° C, above the melting point.” Id. col. 2 ll. 36–41. Thus, as the district court found, “the specification supports a construction which indicates that the limitation in claim 2 refers to the elevated temperature phases and not to the stages that follow.’ Decision at 14.” Id. at page 17. The District Court held and the CAFC affirmed that Dow did not present evidence to establish that a skilled artisan in the art would not know with reasonable certainty that the steps to which the limitation in claim 2 applies. Absent any evidence contrary to the clear meaning of the intrinsic record, the court did not err in finding that one of skill in the art would understand which steps the elevated temperature range applied to. Id. at page 18.

Dow argues that the District Court’s claim construction amounts to a redrafting of the claim to sustain validity. The CAFC dismisses this argument and cites Eidos Display, LLC v. AU Optronics Corp., 779 F.3d 1360, 1367–68 (Fed. Cir. 2015), which holds “[D]etermining how a person of ordinary skill in the art would understand the limitation, however, is different from rewriting the limitation.”); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1366–67 (Fed. Cir. 2011).” Id. at page 18.

Take Away

Under claim construction, each term of a claim will be given a meaning. It is best to avoid using potentially redundant or otherwise superfluous words in a claim.

Indefiniteness is evaluated under a reasonable certainty standard, which may be satisfied with either intrinsic evidence or extrinsic evidence. However, if using extrinsic evidence, said evidence must not be contradicted by the claims and specification.

Full Opinion

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