United States District Court, N.D. Illinois
February 19, 2004.
MARLEY MOULDINGS LIMITED, a Nevada corporation, Plaintiff,
MIKRON INDUSTRIES, INC., a Washington corporation, Defendant
The opinion of the court was delivered by: JOHN W. DARRAH, 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 5,951,927 ("927 Patent"). Presently
before the Court are Mikron's Motion for Summary Judgment of Invalidity,
Mikron's Motion for Partial Summary Judgment of Noninfringement, and
Marley's Motion for Summary Judgment of Literal Infringement.
The 927 Patent is directed to a method for making plastic extrusions
that contain, wood flour as set forth in the single independent claim 1.
Claim 1 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 up to 100
wood flour: 15-140
stabilizers: in an amount up to 5
lubricants: in an amount up to S
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
compressing said extrudable foam material at a
compression stage by passage through an orifice, said
orifice having at one end thereof a predetermined
profile, said foam material consisting of, in parts
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 ¶ 1).
Mikron manufactures or has manufactured polymer resin/wood flour
extrusions which are cut to specified lengths for use in windows,
frames, slats for window coverings, and window blinds. (Def.'s 56.1(a)(3)
Statement ¶ 2). The composite extrusions are currently sold under the
product name Mikronwood® XTR. (Id., ¶ 3). Marley asserts that Mikron's
manufacture of its Mikronwood® XTR foamed wood flour and polymer
extrusions constitutes infringement of Claims 1, 2, 3, and 5 of the 927
Patent. (Id., ¶ 4).
Claim 1 of the 927 Patent identifies a "foam material consisting
essentially of, in parts (volume): polymer resin: in an amount up to
100. . . ." (Def.'s 56.1(a)(3) Statement ¶ 5). Claim 1 also
recites that wood flour particles are encapsulated with polymer resin.
(Plaint's 56.1(3)(b) Statement ¶ 1). The parties' technical experts
disagree whether the lower bound of resin quantity to obtain a foamed
extrudable product can be determined without undue experimentation.
(Def.'s 56.1(a)(3) Statement ¶ 7). However, there must be some minimum
quantity of polymer resin greater than zero parts by volume to obtain a
foamed extrudable product. (Id., ¶ 8).
The 927 Patent does not specifically recite a method for calculating
the volume of wood flour ingredient in the foam material. (Def.'s
56.1(a)(3) Statement ¶ A11; Plaint's Response to ¶ 11). The weight or
mass of the wood flour listed in Claim 1 can vary in volume, depending on
the bulk density. (Id., ¶ 12). The 927 Patent also does not specifically
recite a method for measuring bulk density of wood flour ingredients.
(Id., ¶ 13). Volume can be calculated by dividing bulk density by weight
or mass. The minimum percent volume of wood flour the final formulation
required for literal infringement of claim of the 927 Patent stays the
same, 10.7 percent. (Plaint's 56.1(3)(b) Statement ¶ 5).
Experimentation, such as mixing a batch of a test formulation and
running it through the extruder, is common in the extrusion industry to
determine whether a given formulation will achieve the required
characteristics of the end product. Such experimentation may take from
several days to several weeks to determine the appropriate formula for a
satisfactory product (Plaint's 56.1(3)(b) Statement ¶ 2).
Marley's technical expert, Dr. Giacomin, stated that infringement can
be evaluated by calculation of volume using both the highest and lowest
bulk density values provided on a specification sheet from a wood flour
supplier. (Def.'s 56.1(a)(3) Statement ¶ 16).
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); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322-23
(1986). All the evidence and the reasonable inferences that may be drawn
from the evidence are 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). However, a party cannot defeat
summary judgment by relying on unsubstantiated facts. See Greer v. Board
of Educ. of the City of Chicago, 267 F.3d 723, 729 (7th Cir. 2001).
Mikron argues that the 927 Patent is invalid for failing to meet the
requirements of the first and second paragraphs of 35 U.S.C. § 112: the
specification does not "enable any person skilled in the art to which it
pertains . . . to make or use the [invention]," 35 U.S.C. § 112, ¶ 1; and
the claims do not "particularly [point] out and distinctly [claim] the
subject matter which the applicant regards as his invention,"
35 U.S.C. § 112, ¶ 2. Enablement and definiteness are questions of law.
See BY Serv. Co. v. Halliburton Energy Serv., Inc., 338 F.3d 1368, 1371
(Fed. Cir. 2003) (Halliburton).
The enablement requirement set forth in paragraph l "is satisfied when
one skilled in the art, after reading the specification, could practice
the claimed invention without undue experimentation." AK Steel Corp., v.
Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003) (AK Steel). The
specification need not "describe how to make and use every possible
variant of the claimed invention, the artisan's knowledge of the prior
art and routine experimentation can often fill gaps, interpolate between
embodiments, and perhaps even extrapolate beyond the disclosed
embodiments, depending upon
the predictability of the art." AK Steel, 344 F.3d at 1244. However,
"when a range is claimed, there must be reasonable enablement of the
scope of the range." AK Steel, 344 F.3d at 1244.
Whether a patent satisfies the enablement requirement depends upon the
factual intensive inquiry regarding the amount of experimentation
required. See AK Steel, 344 F.3d at 1244. Determining "what constitutes
undue experimentation in a given case requires the application of a
standard of reasonableness, having due regard for the nature of the
invention and the state of the art." In re Wands, 858 F.2d 731, 737
(Fed. Cir. 1988) (Wands). The quantity of testing is not determinative
because a considerable amount of experimentation is permissible if such
testing is routine or if the specification provides a reasonable amount
of guidance to the direction in which the experimentation should
proceed. See Wands, 858 F.2d at 737.
The definiteness requirement set forth in paragraph 2 "focuses on
whether those skilled in the art would understand the scope of the claim
when the claim is read in light of the rest of the specification." Union
Pac. Res. Co. v. Chesapeake Energy Corp., 236 F.3d 684, 692 (Fed. Cir.
2001). A claim is definite if one skilled in the art would understand the
bounds of the claim when read in light of the specification. See Exxon
Res. & Eng. Co. v. United Sates, 265 F.3d 1371, 1375 (Fed. Cir. 2001)
(Exxon). A claim is indefinite if it "is insolubly ambiguous, and no
narrowing construction can properly be adopted." However, a claim is
sufficiently clear if "the meaning of the claim is discernable, even
though the task may be formidable and the conclusion may be one over
which reasonable persons will disagree." Exxon, 265 F.3d at 1375.
Words of degree in a specification often create definiteness problems.
However, some imprecise claim language does not automatically render a
claim invalid. See Halliburton, 338 F.3d
at 1372. "The question becomes whether one of ordinary skill in the
art would understand what is claimed when the claim is read in light of
the specification," Halliburton, 338 F.3d at 1372.
Mikron first contends that Claims 1, 2, 3, and 5 of the 927 Patent are
invalid because they are not enabled for the full scope of the polymer
resin quantity claimed. Specifically, Mikron contends Claim 1 of the 927
Patent is not enabled over the full range of the resin quantity for the
specification of "in parts (volume): . . . polymer resins: in an amount of
up to 100" because a foamed extrudable product cannot be obtained at the
lowest end of the claimed range-zero parts resin. Marley counters that
the claim is enabled because the range of polymer resin does not include
Mikron's argument fails because the lowest claimed range, when read
with the specification, does not include zero. Claim 1 recites that wood
flour particles are encapsulated "with a polymer resin." In order for the
wood particles to be encapsulated with polymer resin, the formulation
must consist of at least some polymer resin. Without any polymer resin,
encapsulation could not occur; and the recited claim language would be
rendered meaningless. Accordingly, the lowest claimed range of polymer
resin does not include zero resin.
Mikron concedes that the parties' technical experts dispute whether
undue experimentation is required to determine the lower bound of resin
quantity necessary to obtain a foamed extrudable product. Accordingly,
Mikron's Motion for Summary Judgment of Invalidity based on the lack of
enablement for the full scope of the polymer resin claimed is denied.
Mikron next argues that the written description is inadequate because
it fails to describe how the volume of the wood flour in the foam
material is to be measured.
Claim 1 requires that the ingredients be measured "in parts (volume)."
Mikron contends that the method of determining parts volume of wood flour
is not recited or described in the specification;
thus, the meaning of "parts (volume)" of wood flour is ambiguous
and fails to enable one skilled in the art to make or use the invention.
Previously, this Court construed "in part (volume)" to mean the
proportional volumetric quantity of one material component to all other
components. "Volume" is defined as "space occupied or enclosed by cubic
units (as inches, feet, quarts, pecks, bushels, gallons)," Webster's
Third New International Dictionary 2563 (3rd ed. 1986), "the amount of
space, measured in cubic units, that an object or substance occupies; the
measured amount that a container or other object can hold," Random House
Webster's College Dictionary 1461 (2nd ed. 1999).
The parties do not dispute that bulk density of a material can be used
in determining the volume of a material. The parties also do not dispute
that a given volume of wood flour can have a varying quantity of wood
flour weight or mass according to the bulk density of the wood flour in
the volume. Marley contends that one skilled in the art would know to use
the bulk density range provided for a given material in the calculation
to determine the volume of that material. Mikron used a range of bulk
densities in determining the volume percent of wood flour in its
products. Marley counters that it calculated the volume percent of wood
flour in its product using an average bulk density for wood flour, even
though there exists three bulk densities of wood flour-low, high and
average because the 927 Patent does not teach how to measure the
volume component of wood flour.
Based on the above, a genuine issue of material fact exists as to
whether one skilled in the art, after reading the specification, could
practice the claimed invention, as to determining the manner of measuring
or determining volume, without undue experimentation. Accordingly,
summary judgment based on this issue is denied.
Lastly, Mikron contends that the 927 Patent is invalid because the
claimed percent range of wood flour is indefinite. This Court previously
found that the 927 Patent has a theoretical minimum percentage of wood
flour in the final product of 10.7%.
Mikron asserts that the 927 Patent does not particularly point out and
claim the subject matter of the invention; in particular, the bounds of
the wood flour quantity in Claim 1 are not defined such that a person of
ordinary skill would not know with certainty whether his actions were
within the scope of Claim 1.
Both parties determined percent volume of wood flour using bulk density
of the ingredients. The 927 Patent does not specify this is the correct
method. Marley's expert evaluated the percent of wood flour in the final
product, i.e., literal infringement, by calculation of volume using both
the highest and lowest bulk density values provided on the specification
sheet from the wood flour supplier. Using Marley's expert's example of a
foam material formulation with 5% wood flour/polymer pellets, coupled
with the minimum bulk density of wood flour and the maximum bulk density
of all other components, the volumetric percentage of wood flour in the
foam material is 10.7%. In contrast, when the maximum bulk density of
wood flour and the minimum bulk density of all other components is used,
a volumetric percentage of wood flour in the foam material is 8.5%.
Therefore, depending on which bulk density is used for each of the
constituent ingredients, a different volume percentage of wood flour is
obtained one at the lower limit of the claimed range and one outside
the claimed range.
Mikron's expert evaluated literal infringement by calculation of
percent volume using the average bulk density values of the materials
used because the 927 Patent does not indicate what value for bulk density
is to be used nor how to determine the bulk density. Using the average
density for the materials, the volume percentage of wood flour is
7.83% below the minimum value of 10.71%.
In the instant case, the parties agree as to the method of determining
the bulk density and the mathematics required to calculate the percent of
the wood flour as calculated from the weight or mass and bulk density of
the material in question. However, the parties do not agree on the means
of obtaining the percent volume of wood flour, or any of the other
ingredients, given the fact that bulk densities generally have a range in
value. This disagreement is critical because the percent of wood flour is
determinative as to whether the process falls within the claim. As
demonstrated above, under two of the methods, the process does not fall
within the claim because the minimum percent of wood flour is below
The inventors did not specify the means to calculate the percent volume
of the wood flour. Furthermore, the specification does not mention the
different means of calculating the percent volume of wood flour or
provide sufficient clues to discern which method is acceptable. The
specification fails to provide any guidance as to what one of ordinary
skill in the art would interpret the claim to require. Furthermore,
because this determination is critical to discerning whether the final
product has been produced by the claimed process, knowing the proper
method of determining percent volume of wood flour is necessary to the
practice of the invention. Under similar facts, the Federal Circuit has
found invalidity pursuant to 35 U.S.C. § 112, ¶ 2. See Honeywell Int'l,
Inc, v. International Trade Comm'r, 341 F.3d 1332, 1339-40 (Fed. Cir.
2003) (patent invalid for lack of definiteness because claim limitation
could not be measured without knowing which of four different known
sample preparation methods was to be used). Cf., PPG Industries, Inc. v.
Guardian Industries Corp., 75 F.3d 1558 (Fed. Cir. 1996) (rejecting
indefiniteness argument because all of the
conventional methods of testing claim limitation produced essentially
identical results) (emphasis added). Based on the above, the 927 Patent
is invalid pursuant to 35 U.S.C. § 112, ¶ 2.
Because the Court finds that the 927 Patent is invalid, it need not
reach the issue of infringement.
For the foregoing reasons, Mikron's Motion for Summary judgment of
Invalidity is granted. In light of the finding of invalidity, the
parties' Motions for Summary Judgment are denied as moot.
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