Lockformer and TruSeal assert numerous defenses of patent invalidity and unenforceability. Generally, a party asserting these defenses bears the burden of establishing them. See 35 U.S.C. § 282 (a patent is presumed valid and "[t]he burden of establishing invalidity.., shall rest on the party asserting such invalidity."); ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546-47 (Fed. Cir. 1998) (unenforceability must be established by clear and convincing evidence). PPG argues that these defenses are unsupported in the record, and therefore seeks summary judgment on indefiniteness, patent misuse, oath of inventorship, and various other defenses of invalidity and unenforceability.*fn3 Because PPG alleges a lack of evidence in the record to establish these affirmative defenses, the burden has shifted Lockformer and TruSeal to produce sufficient facts to show that a reasonable trier of fact could find in its favor on invalidity and unenforceability. See Anderson, 477 U.S. at 250, 106 S.Ct. at 2511. Loekformer and TruSeal have filed cross-motions to hold the patent invalid for indefiniteness,
I. Lockformer And TruSeal's Indefiniteness Defense Fails
The parties have filed opposing summary judgment motions on the issue of definiteness. Lockformer and TruSeal claim that the patent claims are indefinite because of the term "adhesive." Specifically, Lockfomer and TruSeal argue that the claims are indefinite because they do not identify the length of time the adhesive must be secured to the metal strip.
To be definite, a patent must "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112, ¶ 2. The primary purpose of the definiteness requirement is to allow competitors to make a determination as to whether or not they infringe. All Dental Prodx. LLC., v. Advantage Dental Prods., Inc., 309 F.3d 774, 780 (Fed. Cir. 2002). A claim is definite even when reasonable persons can disagree over the meaning of the claim. Exxon Research & Eng'g v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). The Federal Circuit favors narrowing a claim construction in order to avoid invalidating it for indefiniteness. Smithkline Beecham Corp. v. Apotex Corp., — F. Supp.2d — No. 98 C 3952, 2003 WL 728889, at *17 (N.D. Ill. 2003) (Posner, J.) (citing Exxon Research & Eng'g, 265 F.3d at 1375-77; ACS Hospital Systems, Inc. v. Montefiore Hospital,. 732 F.2d 1572, 1577 (Fed. Cir, 1984)). A patent is only indefinite if its claims are "insolubly ambiguous" and impossible to properly construe. Id. Clear and convincing evidence is required to invalidate a patent. Kegel Co. v. AMF Bowling, Inc., 127 F.3d 1420, 1429 (Fed. Cir. 1997).
Whether a patent claim is definite is a question of law, Exxon Research & Eng'g Co., 265 F.3d at 1376, and extrinsic evidence is disfavored. Stiftung v. Renishaw PLC, 945 F.2d 1173, 1180 (Fed. Cir. 1991) ("Extrinsic evidence may not be relied upon during claim construction when the intrinsic evidence unambiguously defines the disputed claim language"); Markman v. Westview Instruments, Inc., 52 F.3d 967, 985 (Fed, Cir. 1995) (en banc) (holding that litigationderived testimony of the inventor is accorded little to no weight), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). The most important tool to determine definiteness is the claim language itself, but a court may also consider the patent specification and prosecution history. All Dental Prodx, 309 F.3d at 380.
Normally, the first step in the analysis of whether the claim is definite is to construe the claim itself See id. There is no need for this Court to construe the '916 patent, however, because Judge Coar has already done so. See Lockformer, 2001 WL 940555 at *3-4. in construing the patent, Judge Coar also held that the term "adhesive" limited the claim to where "the material stick[s] to the metal strip, at a minimum, throughout the process of shaping the strip into spacer stock and fixing glass to the spacer." Id. at *4, This construction is binding on the Court as the law of the case. Williams v. C.I.R., 1 F.3d 502, 503 (7th Cir. 1993). Judge Posner, presiding over a bench trial by designation in this district in Smithkline Beecham Corp., recently addressed an identical situation where he was generally bound by the decisions of Chief Judge Kocoras, the original judge in the case:
When. . . judges in a case are switched in midstream,
as happened here, the successor judge may not
reconsider his predecessor's rulings with the same
freedom that he may reconsider his own rulings. . . .
"[T]he law of the case doctrine in these circumstances
reflects the rightful expectation of litigants that a
change of judges mid-way through a case will not mean
going back to square one. See also Christianson v.
Colt Industries Operating Corp., 486 U.S. 800,
816-17, 108 S.Ct. 2166, 100 L.Ed.2d 811 (1988).
Although the second judge may alter previous rulings
if he is convinced they are incorrect, "he is not free
to do so. . . merely because he has a different view
of the law or facts from the first judge.' Williams, 1
F.3d at 503. Instead the presumption is that the
earlier rulings will stand, even though it can be
overcome for compelling reasons (such as new
controlling law or clear error)."