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MARLEY MOULDINGS LIMITED v. MIKRON INDUSTRIES

April 29, 2003

MARLEY MOULDINGS LIMITED, A NEVADA CORPORATION, PLAINTIFF,
v.
MIKRON INDUSTRIES, INC., A WASHINGTON CORPORATION, DEFENDANT.



The opinion of the court was delivered by: John W. Darrah, United States District Judge.

MEMORANDUM OPINION AND ORDER

Plaintiff, Marley Mouldings Limited ("Marley"), commenced a patent infringement action against Mikron Industries, Inc. ("Mikron") for the infringement of United States Patent 5,921,927 ("927 Patent"). Before this Court are Mikron's Motion for Summary Judgment of Noninfringement and Mikron's Motion for Summary Judgment of No Infringement.

BACKGROUND

Claim 1 of the 927 Patent states:

A method of forming a solid elongated member of predetermined profile for use as a door, window or frame molding, comprising the steps of:
encapsulating wood flour particles with a polymer resin in an extrudable material by high intensity mixing, said extrudable material consisting essentially of, in parts (volume):
polymer resin: in an amount of up to 100 wood flour: 15-140 stabilizers: in an amount up to 5 lubricants: in an amount up to 5 process aids: in an amount up to 10,
extruding and cutting said extrudable material to form pellets of said extrudable material,
mixing additional polymer resin and a non-aqueous blowing agent with said pellets to form an extrudable foam material,
compressing said extrudable foam material at a compression stage by passage through an orifice, said orifice having at one end thereof a predetermined of, in parts (volume):
polymer resin: in an amount up to 100 wood flour: 15-140 stabilizers: in an amount up to 5 lubricants: in an amount up to 5 process aids: in an amount up to 10 blowing agents: .2 to 5
expanding said foam material through a shaper, said shaper having an internal solid surface defining a channel for said foam material, and
solidifying said foam material to form a solid elongated member.
(Def.'s 56.1(a)(3) Statement ¶ A1)*fn1.

Mikron manufactures or has manufactured polymer resin/wood flour composite extrusions for use in windows, brick molding, slats and window blinds. (Def.'s 56.1(a)(3) Statement ¶ B5). These composite structures are sold under the product name Mikronwood XTR (Id., ¶ B6). Mikron's combined materials are extruded to form the Mikronwood XTR extrusion profiles. (Id., ¶ B9). Mikronwood XTR is not sold as a retail product. Mikron sells Mikronwood XTR to window manufacturers who combine the Mikronwood XTR components with other components to make a window system. (Plaint.'s 56.1(a)(3)(B) Statement ¶ 13).

Mikron purchases "pre-made" polymer/wood flour pellets from North Wood Plastics, Inc., ("North Wood") which is located in Sheboygan, Wisconsin. (Def.'s 56.1(a)(3) Statement ¶¶ A3). Mikron's polymer/wood flour pellets are "made to order" by North Wood. North Wood manufactures the wood flour pellets for Mikron with a fixed quantity by weight of wood flour and polymer pellets. However, North Wood can vary the quantities of process aids and other additives. (Plaint.'s 56.1(a)(3)(B) Statement ¶ 3; Def.'s Response to ¶ 3). Mikron dictates the specific recipe that North Wood must use to produce Mikron's polymer/wood flour pellets to the extent that North Wood cannot vary the quantity by weight of wood flour and polymer pellets. (Plaint.'s 56.1(a)(3)(B) Statement ¶ 5; Def.'s Response to ¶ 5). Mikron also provides North Wood with the formulation for the pellets, and North Wood sets its equipment to produce a pellet with the provided formulation. (Plaint.'s 56.1(a)(3)(B) Statement ¶ 6; Def.'s Response to ¶ 6).

Mikron supplies the polymer resin that North Wood must use to produce Mikron's polymer/wood flour pellets. (Plaint.'s 56.1(a)(3)(B) Statement ¶ 7). Mikron defines the size of the wood flour particles that North Wood must use to produce Mikron's polymer/wood flour pellet. (Id., ¶ 8). Mikron also specifies the moisture content in the pellets. (Id., ¶ 9).

ANALYSIS

Summary judgment is proper if "the pleadings, depositions, answers to interrogatories, and admissions on file, together with affidavits, if any, show that there is no genuine issue as to any material fact." Fed.R.Civ.P. 56(c). All the evidence and the reasonable inferences that may be drawn from the evidence is viewed in the light most favorable to the nonmovant. Miller v. American Family Mutual Ins. Co., 203 F.3d 997, 1003 (7th Cir. 2000). Summary judgment may be granted when no "reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).

I. Motion for Summary Judgment of Noninfringement

Pursuant to 35 U.S.C. § 271 (a), a party literally infringes a patent that "without authority makes, uses, offers to sell, or sells any patented invention . . . during the term of the patent. . . ." The claims define the scope of the patented invention. See Johnson & Johnson Assoc. Inc. v. R.E. Service Co., 285 F.3d 1046, 1052 (Fed. Cir. 2002). A process or method claim is directly infringed only when the process is performed. See Joy Tech., Inc. v. Flakt, 6 F.3d 770, 773 (Fed. Cir. 1993). Each claim of a patent is an entity that must be considered as a whole. See General Foods Corp. v. Studiengesellschaft Kohle, 072 F.2d 1272, 1274 (Fed. Cir. 1992).

Mikron argues that it does not infringe the 927 Patent because it does not perform the initial step of mixing the particles of wood flour with plastic and subsequent encapsulation to form the pellet. Instead, Mikron purchases pre-made pellets from a third-party vendor, North Wood. Because Mikron does not perform every step of the claimed method, it cannot, and does not, directly infringe the 927 Patent because the "patented invention" includes the combination of each and every step of the claimed method.

Neither the Supreme Court nor the Federal Court of Appeals has addressed the issue of whether a party who does not perform every step of a method claim may be liable for direct infringement of a method claim where separate entities perform separate steps of a method claim. The Fifth Circuit has "question[ed] whether a method claim can be infringed when two separate entities perform different operations and neither has control of the other's activities." See Mobil Oil Corp. v. Filtrol Corp., 501 F.2d 282, 291-92 (5th Cir. 1974). However, several district courts have found that a party directly infringes a method or process patent where the various steps in the patent are performed by distinct entities. See Cordis Corp. v. Medtronic Ave, Inc., 194 F. Supp.2d 323, 349 (D. Del. 2002) (Cordis); Faroudja Lab., Inc. v. Dwin Electronics, Inc., 1999 WL 111788 (N.D. Cal. Feb. 24, 1999) (Faroudja); Avery Dennison Corp. v. UCB Films, 1997 WL 567799 (N.D. Ill. Sept. 4, 1997); E.I. Dupont De Nemours & Co. v. Monsanto Co., 903 F. Supp. 680, 734 (D. Del. 1985) (Dupont); Ralston Purina Co. v. Far-Mar-Co., Inc., 586 F. Supp. 1176, 1226 (D. Kan. 1984); Shields v. Halliburtron Co., 493 F. Supp. 1376, 1389 (W.D. La. 1980); see also, Crowell v. Baker Oil Tools, 143 F.2d 1003, 1004 (9th Cir. 1944) ("one may infringe a patent if he employ[s] an agent for that purpose or has the offending particles manufactured for him ...


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