Cot'N Wash Inc. et al v. Henkel Corporation et al

Filing 249

MEMORANDUM OPINION. Signed by Judge Sue L. Robinson on 8/26/2014. Associated Cases: 1:12-cv-00650-SLR, 1:12-cv-00651-SLR(nmfn)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

COT'N WASH, INC. and
BIG 3 PACKAGING, LLC,
Plaintiffs,
v.
HENKEL CORPORATION,
THE DIAL CORPORATION, and
HENKEL CONSUMER GOODS INC.,
Defendants.
COT'N WASH, INC. and
BIG 3 PACKAGING, LLC,
Plaintiffs,
v.
THE SUN PRODUCTS
CORPORATION,
Defendant.

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Civ. No. 12-650-SLR

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Civ. No. 12-651-SLR

Jessica Zeldin, Esquire of Rosenthal, Monhait & Goddess, P.A., Wilmington, Delaware.
Counsel for Plaintiffs. Of Counsel: Matthew L. Mustokoff, Esquire and Richard A.
Russo, Jr., Esquire of Kessler, Topaz, Meltzer & Check LLP.
J. Clayton Athey, Esquire of Prickett, Jones & Elliott, P.A., Wilmington, Delaware.
Counsel for Defendants Henkel Corporation, The Dial Corporation, and Henkel
Consumer Goods Inc. Of Counsel: Christopher T. Holland, Esquire, Kenneth E. Keller,
Esquire, and Ethan Jacobs, Esquire of Keller, Sloan, Roman & Holland LLP.
Jack B. Blumenfeld, Esquire and Regina Murphy, Esquire of Morris, Nichols, Arsht &
Tunnell LLP, Wilmington, Delaware. Counsel for Defendant The Sun Products
Corporation. Of Counsel: Errol B. Taylor, Esquire, Fredrick M. Zullow, Esquire, and
Anna Brook, Esquire of Milbank, Tweed, Hadley & McCloy LLP.

MEMORANDUM OPINION

Dated: AugustJ!D, 2014
Wilmington, Delaware

I. INTRODUCTION
On May 23, 2012, Big 3 Packaging, LLC ("B3P") and Cot'n Wash, Inc. ("Cot'n
Wash") (collectively, "plaintiffs") filed suit in this district against Henkel Corporation, The
Dial Corporation ("Dial"), and Henkel Consumer Goods, Inc. (collectively, "the Henkel
defendants") alleging infringement of United States Patent No. 6,037,319 ("the '319
patent"). (Civ. No. 12-650, D.l. 1) On the same day, plaintiffs asserted the '319 patent
against The Sun Products Corporation ("Sun") in a related case before this court. 1 (Civ.
No. 12-651, D. I. 1)
The Henkel defendants and Sun (collectively, "defendants") answered plaintiffs'
complaints on July 30, 2012 and asserted counterclaims against plaintiffs seeking
declaratory judgments of non-infringement and invalidity of the '319 patent. (Civ. No.
12-650, D.l. 11 at 18-19, ,-r,-r 17-27; Civ. No. 12-651, D.l. 9 at 12-14, ,-r,-r 13-26) On
August 21, 2012, plaintiffs answered defendants' counterclaims. (Civ. No. 12-650, D. I.
17; Civ. No. 12-651, D.l. 13) On August 15, 2013, by stipulation, the Henkel
defendants filed their first amended answer, affirmative defenses, and counterclaims,
adding affirmative defenses of patent invalidity under 35 U.S.C. § 112 and inequitable
conduct, as well as a counterclaim of patent unenforceability due to inequitable
conduct. (Civ. No. 12-650, D.l. 56 at 14-23, ,-r,-r 12-39; id. at 39-41, ,-r,-r 59-69) On
September 3, 2013, plaintiffs answered the Henkel defendants' new affirmative
defenses and counterclaim. (Civ. No. 12-650, D.l. 62)

1

The court entered a single scheduling order in both cases, which provides for
coordinated discovery and claim construction proceedings. (See Civ. No. 12-650, D. I.
22; Civ. No. 12-651, D. I. 20)

On January 31, 2014, Sun filed a motion for leave to amend its answer,
affirmative defenses, and counterclaims. (Civ. No. 12-651, D.l. 152) On February 7,
2014, the Henkel defendants filed a similar motion for leave to file a second amended
answer, affirmative defenses, and counterclaims. (Civ. No. 12-650, D. I. 145) On July
11, 2014, the court denied Sun's motion with respect to the addition of false marking
counterclaims, but granted the motion with respect to the inequitable conduct
counterclaim. (Civ. No. 12-651, D.l. 225) On the same day, the court denied the
Henkel defendants' motion. (Civ. No. 12-650, D.l. 235)
Presently before the court are defendants' motions for summary judgment of
invalidity (Civ. No. 12-650, D.l. 159; Civ. No. 12-651, D.l. 170) and non-infringement
(Civ. No. 12-650, D. I. 168; Civ. No. 12-651, D.l. 166). Defendants also filed motions to
exclude the testimony and opinions of Drs. Di Vincenzo, Kong, and Gering (Civ. No. 12650, D.l. 161) and Robertson Microlit's and Mibrobac's testing (Civ. No. 12-651, D.l.
167), as well as a motion to strike the March 6 supplemental expert reports of Drs. Di
Vincenzo and Kong (Civ. No. 12-650, D. I. 167). The court has jurisdiction pursuant to
28 U.S.C. §§ 1331 and 1338(a).
II. BACKGROUND

A. Parties
B3P is a limited liability company organized and existing under the laws of the
State of New Jersey, with its principal place of business in Philadelphia, Pennsylvania.
(Civ. No. 12-650, D.l. 1 at~ 5; Civ. No. 12-651, D.l. 1 at~ 5) B3P is the assignee of the
'319 patent. (/d.) Cot'n Wash is a corporation organized and existing under the laws of

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Pennsylvania, with its principal place of business in Philadelphia, Pennsylvania. (Civ.
No. 12-650, D. I. 1 at~ 6; Civ. No. 12-651, D. I. 1 at~ 6) Cot'n Wash is an exclusive
licensee of the '319 patent in the laundry products field. (/d.)
Henkel Corporation, a subsidiary of the German company Henkel AG & Co.
KGaA, is a corporation organized and existing under the laws of the State of Delaware
with a place of business in Rocky Hill, Connecticut. (Civ. No 12-650, D. I. 1 at~ 9)
Henkel Consumer Goods, a subsidiary of Henkel Corporation, is a corporation
organized and existing under the laws of the State of Delaware, with its principal place
of business in Scottsdale, Arizona. (ld.

at~

8) Dial, a subsidiary of Henkel Consumer

Goods, is a corporation organized and existing under the laws of the State of Delaware,
with a place of business in Scottsdale, Arizona. (/d.

at~

7) Sun is a private company

organized and existing under the laws of the State of Delaware, with its principal place
of business in Wilton, Connecticut. (Civ. No. 12-651, D.l. 1 at~ 7)

B. The Patent-in-Suit
Plaintiffs assert that certain of defendants' products infringe claims 1, 3, 6, 7, and
82 of U.S. Patent No. 6,037,319 ("the '319 patent"), titled "Water-Soluble Packets
Containing Liquid Cleaning Concentrates," filed April 1, 1997 and issued March 14,
2000. The '319 patent is directed to "[w]ater-soluble packets containing liquid cleaning
concentrates" which "are stable despite the presence of any minor amount of water in
the cleaning concentrates." ('319 patent, Abstract) Specifically, "the invention provides

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Ciaim 8 is only asserted against the Henkel defendants.

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a stable water-soluble cleaning packet comprising an uncoated, single-layered
containment system containing a liquid cleaning composition." (/d. at 2:34-37)

Ill. STANDARD OF REVIEW
"The court shall grant summary judgment if the movant shows that there is no
genuine dispute as to any material fact and the movant is entitled to judgment as a
matter of law." Fed. R. Civ. P. 56( a). The moving party bears the burden of
demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus.
Co. v. Zenith Radio Corp., 415 U.S. 574, 586 n.10 (1986). A party asserting that a fact
cannot be-or, alternatively, is-genuinely disputed must support the assertion either
by citing to "particular parts of materials in the record, including depositions, documents,
electronically stored information, affidavits or declarations, stipulations (including those
made for the purposes of the motions only), admissions, interrogatory answers, or other
materials," or by "showing that the materials cited do not establish the absence or
presence of a genuine dispute, or that an adverse party cannot produce admissible
evidence to support the fact." Fed. R. Civ. P. 56(c)(1 )(A) & (B). If the moving party has
carried its burden, the nonmovant must then "come forward with specific facts showing
that there is a genuine issue for trial." Matsushita, 415 U.S. at 587 (internal quotation
marks omitted). The court will "draw all reasonable inferences in favor of the
nonmoving party, and it may not make credibility determinations or weigh the evidence."
Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).
To defeat a motion for summary judgment, the non-moving party must "do more
than simply show that there is some metaphysical doubt as to the material facts."

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Matsushita, 475 U.S. at 586-87; see a/so Podohnik v. U.S. Postal Service, 409 F.3d
584, 594 (3d Cir. 2005) (stating party opposing summary judgment "must present more
than just bare assertions, conclusory allegations or suspicions to show the existence of
a genuine issue") (internal quotation marks omitted). Although the "mere existence of
some alleged factual dispute between the parties will not defeat an otherwise properly
supported motion for summary judgment," a factual dispute is genuine where "the
evidence is such that a reasonable jury could return a verdict for the nonmoving party."

Anderson v. Liberty Lobby, Inc., 411 U.S. 242, 247-48 (1986). "If the evidence is
merely colorable, or is not significantly probative, summary judgment may be granted."

/d. at 249-50 (internal citations omitted); see a/so Celotex Corp. v. Catrett, 411 U.S.
317, 322 (1986) (stating entry of summary judgment is mandated "against a party who
fails to make a showing sufficient to establish the existence of an element essential to
that party's case, and on which that party will bear the burden of proof at trial").

IV. DISCUSSION
A. The '319 Patent Claims
Claim 1 is directed to and recites:
A cleaning packet comprising a liquid cleaning concentrate
and a water-soluble container containing said concentrate,
wherein said cleaning concentrate comprises less than 7.5
wt. % water, and said container comprises a single layer film
having an internal surface directly contacting said
concentrate, and having an external surface which is an
outermost portion of said cleaning packet.
('319 patent, 9:9-15) Claim 3 is dependent on claim 1, and recites:
The cleaning packet according to claim 1 , wherein said
cleaning concentrate comprises less than 5.0 wt. % water.

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(/d. at 9:18-19) Claim 6 is also dependent on claim 1, and further recites:

The cleaning packet according to claim 1, wherein the single
layer film has a thickness of about 2 mils to about 4 mils.
(/d. at 9:25-27) Claim 7, also dependent on claim 1, recites:
The cleaning packet according to claim 1, wherein the single
layer film is a polyvinyl alcohol film.

(/d. at 9:28-29) Claim 8 is further dependent on claim 7, and recites:
The cleaning packet according to claim 7, wherein the
container consists essentially of said polyvinyl alcohol film.
(/d. at 9:30-31)

B. Infringement
1. Standard
A patent is infringed when a person "without authority makes, uses or sells any
patented invention, within the United States ... during the term of the patent." 35
U.S.C. § 271 (a). A two-step analysis is employed in making an infringement
determination. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.
Cir. 1995). First, the court must construe the asserted claims to ascertain their meaning
and scope. See id. Construction of the claims is a question of law subject to de novo
review. See Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1454 (Fed. Cir. 1998). The
trier of fact must then compare the properly construed claims with the accused
infringing product. See Markman, 52 F.3d at 976. This second step is a question of
fact. See Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998 ).
"Direct infringement requires a party to perform each and every step or element
of a claimed method or product." BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373,

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1378 (Fed. Cir. 2007), overruled on other grounds by 692 F.3d 1301 (Fed. Cir. 2012).
"If any claim limitation is absent from the accused device, there is no literal infringement
as a matter of law." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247
(Fed. Cir. 2000). If an accused product does not infringe an independent claim, it also
does not infringe any claim depending thereon. See Wahpeton Canvas Co. v. Frontier,
Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989). However, "[o]ne may infringe an
independent claim and not infringe a claim dependent on that claim." Monsanto Co. v.
Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed. Cir. 2007) (quoting Wahpeton
Canvas, 870 F.2d at 1552) (internal quotations omitted). A product that does not
literally infringe a patent claim may still infringe under the doctrine of equivalents if the
differences between an individual limitation of the claimed invention and an element of
the accused product are insubstantial. See Warner-Jenkinson Co. v. Hilton Davis
Chern. Co., 520 U.S. 17, 24 (1997). The patent owner has the burden of proving
infringement and must meet its burden by a preponderance of the evidence. See
SmithKiine Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988)
(citations omitted).
When an accused infringer moves for summary judgment of non-infringement,
such relief may be granted only if one or more limitations of the claim in question does
not read on an element of the accused product, either literally or under the doctrine of
equivalents. See Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1376 (Fed. Cir. 2005);
see also TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed. Cir. 2002)
("Summary judgment of non infringement is ... appropriate where the patent owner's

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proof is deficient in meeting an essential part of the legal standard for infringement,
because such failure will render all other facts immaterial."). Thus, summary judgment
of non-infringement can only be granted if, after viewing the facts in the light most
favorable to the non-movant, there is no genuine issue as to whether the accused
product is covered by the claims (as construed by the court). See Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999).
2. Analysis
a. The Henkel defendants' motion for summary judgment of
non-infringement

Plaintiffs allege that the Henkel defendants infringe independent claim 1 and
dependent claims 3, 6-8 of the '319 patent through the sale of their Purex Ultra Packs
products, which include "Free and Clear'' and "Mountain Breeze" versions. (Civ. No. 12650, D.l. 166, ex. 1 at 2, 4) Henkel moves for summary judgment on the following
grounds: (1) the reformulated products do not infringe any asserted claim; (2) the
original versions of the accused products do not infringe any asserted claim; (3) Henkel
Corporation and Henkel Consumer Goods are not proper parties to this action; and (4)
plaintiffs' inducement claim is improper. (Civ. No. 12-650, D.l. 185)

i. Reformulated products
After plaintiffs filed their complaint, Dial ceased production of the original version
of the accused products on July 18, 2012 and began producing a reformulated version
containing more than 7.5 wt.% water. There is no dispute that, under the court's claim
construction, the reformulated products do not infringe the asserted claim. The Henkel
defendants seek summary judgment as to all accused products manufactured after July

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18,2012.
Plaintiffs respond that the reformulated products are not at issue in this suit as
plaintiffs have never accused them of infringing. (Civ. No. 12-650, D. I. 217 at 9)
Plaintiffs, however, make clear that they "are not conceding that Henkel's reformulated
products do not infringe. Rather, [p]laintiffs merely have not pursued any claims
against them in this litigation, so that any disputes over those products must wait for
another day." (Id.)
The Henkel defendants respond that plaintiffs placed the reformulated products
squarely at issue. For instance, the complaint is not limited to the original Purex
UltraPacks, but broadly alleges that Henkel infringed the '319 patent by "making, using,
selling, offering for sale water-soluble laundry packets, including without limitation,
Purex UltraPacks, Mountain Breeze and Purex UltraPacks, free and clear .... " (Civ.
No. 12-650, D. I. 1 at ,-r 32) (emphasis added) Additionally, plaintiffs have not withdrawn
a request for a permanent injunction (/d. at 10), necessary only if plaintiffs considered
Henkel to still be infringing even after the introduction of the reformulated products.
Plaintiffs further pursued discovery of "Henkel Products," defined in plaintiffs' notices as
"Henkels' water-soluble laundry packets, such as Purex, Purex UltraPacks, Mountain
Breeze and Purex Ultra Packs, free and clear, and other water-soluble, liquid laundry
products." (Civ. No. 12-650, D. I. 227, ex. 6 at ,-r 4; ex. 7 at ,-r 4) In response to the
Henkel defendants' objection to this broad definition (/d. at ex. 8 at 3-4 ), plaintiffs
confirmed that "'Henkel Products' ... includes, but [is] not limited to the Purex
UltraPacks in Mountain Breeze, Free and Clear and Oxy, and all iterations in their

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formulas." (/d. at ex. 9 at 3) Plaintiffs further requested all product data sheets "from
the fall of 2012 to the present" and all documents regarding "Henkel's sales and
distribution from May 2012 to the present." (/d. at ex. 12 at 1; ex. 13 at 1, ex. 14 at 1;
ex. 15 ("batch sheets and formula cards for the Purex Ultra Packs manufactured for
commercial sale from inception of manufacturing to the present") 3 When the Henkel
defendants questioned plaintiffs as to this extensive discovery, plaintiffs responded that
"those documents go to inducement and secondary considerations of non[]obviousness." (/d. at ex. 16 at 1)4 To the extent that plaintiffs have put such products
at issue, plaintiffs must either provide the Henkel defendants with a covenant not to
sue, or the court will enter judgment based on the evidence before it.

ii. Original products
The Henkel defendants also move for summary judgement that the original
products do not infringe as plaintiffs have no admissible evidence to show such
infringement under plaintiff's construction. (Civ. No. 12-650, 0.1. 185 at 12) To the
extent that the court has construed the water content to be measured "as formulated,"
the test results obtained by Karl Fischer titration, used to test the total water content
"contained in" the final packet, are excluded as not relevant to the water content as

3

As noted, the Henkel defendants switched to the reformulated products on July
18, 2012. The Henkel defendants note that product data sheets for the reformulated
products were produced by at least May 2013. (Civ. No. 12-650, 0.1. 227 at ,-r 16)
4

Henkel argues that inducement relies on direct infringement and sales
information can only be a proper secondary consideration if the patent covers the
product.
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formulated. 5
Under the court's claim construction, the proper inquiry is the water content "as
formulated" (that argued for by defendants). As the Henkel defendants' specifications
call for a target water content near 4%, 6 there exist no genuine issues of material fact
with respect to whether the Henkel defendants' original products infringed the '319
patent. 7 The Henkel defendants' motion for summary judgment of non-infringement is
denied in this regard. (Civ. No. 12-650, D.l. 168) Moreover, consistent with the court's
claim construction and analysis, 8 the court is inclined to enter summary judgment sua

sponte in favor of plaintiffs that the Henkel defendants' original products infringed the

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1n arguing for their proposed construction of the water content, plaintiffs agreed
that under defendants' construction, "testing the accused product's water percentage is
completely irrelevant because the only testing that is relevant is that of the liquid 'to be
placed' in the container, when the liquid is not actually part of the container and not an
infringing product." (Civ. No. 12-650, D.l. 57 at 12-13) Defendants' motions to exclude
are granted with respect to plaintiffs' product testing. (Civ. No. 12-650, D.l. 161; Civ.
No. 12-651, D.l. 167) As the Henkel defendants' motion to strike the March 6
supplemental expert reports of Drs. Di Vincenzo and Kong refer to such testing, this
motion is denied as moot. (Civ. No. 12-651, D.l. 167)
6

See, e.g., specification sheets specifying water contents ranging from 3.996% to
4.0351%. (Civ. No. 12-650, D.l. 218, ex. U at HEN274574; ex. Vat HEN16770; exs. W,
X, Y, Z at HEN262600, HEN416029, HEN277 464, HEN494695; see also Civ. No. 12650, D.l. 199, ex. A at 12-15, 37 -38) The Mountain Breeze data sheets specify water
contents ranging from 3.9877% to 3.9958%. (See Civ. No. 12-650, 0.1. 218, ex. AA at
HEN16774; ex. CC at HEN262608; ex. DO at 494703; see also Civ. No. 12-650, D. I.
199, ex. A at 7-11, 38)
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1ndeed, defendants' expert, Dr. Cairns, explained that, "[r]egardless of whether
the water content of the liquid cleaning concentrate is determined at the time the liquid
cleaning concentrate is prepared or after it is placed in the packet (but at the time of
manufacture), there will be no quantitative difference in the water content." (Civ. No.
12-650, D. I. 78 at 'if48)
8

See infra as to Sun's motion for summary judgment.
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'319 patent. 9 See Anderson v. Wachovia Mortg. Corp., 621 F.3d 261, 280 (3d Cir.
201 0) (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 326 (1986)) ("[D]istrict courts are
widely acknowledged to possess the power to enter summary judgments sua sponte,
so long as the losing party was on notice that [it] had to come forward with all of [its]
evidence."); see also Talecris Biotherapeutics, Inc. v. Baxter lnt'/, Inc., 510 F. Supp. 2d
356, 362 (D. Del. 2007) (This court has held that when one party moves for summary
judgment against an adversary, Fed. R. Civ. P. 54( c) and 56, when read together, give
the court the power to render a summary judgment for the adversary if it is clear that the
case warrants that result, even though the adversary has not filed a cross-motion for
summary judgment.). The propriety of doing so will be addressed at the pre-trial
conference.

iii. Whether Henkel Consumer Goods and Henkel
Corporation are proper parties to this action
The Henkel defendants further move for summary judgment in favor of both
Henkel Consumer Goods and Henkel Corporation because they are not proper parties
(but merely have a corporate relationship to Dial) to this action, arguing that Dial alone
made, used, and sold the accused products. (Civ. No. 12-650, D.l. 185 at 18)10

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More specifically, the specifications for the original products call for water
contents that fall within the scope of independent claim 1 and dependent claim 3.
Arguments addressing dependent claims 6-8, having to do with the film of the cleaning
packets, were not included in the summary judgment briefing.
10

Defendants had previously requested that plaintiffs stipulate to summary
judgment with respect to Henkel Corporation and Henkel Consumer Goods. (Civ. No.
12-650, D. I. 186 at~ 3) "Plaintiffs did not disagree that Dial was the only entity that
'makes, uses, offers to sell, or sells' the accused products, [but] they were only willing to
consider Henkel's other requests as part of a larger stipulation on unrelated issues."
(/d.)
12

Plaintiffs argue that there is conflicting testimony as to whether Dial or Henkel
Consumer Goods manufactured and sold the products and, regardless, Henkel
Consumer Goods' personnel were thoroughly involved in marketing and branding the
accused products. Therefore, Henkel Consumer Goods may be liable for inducing
infringement even if Dial bears sole responsibility for the manufacture and sale. (See
Civ. No. 12-650, D.l. 217 at 13-17) The court agrees that there is a question of fact as
to the extent of Henkel Consumer Goods' involvement in the accused products. The
Henkel defendants' motion for summary judgment is denied with respect to Henkel
Consumer Goods. (Civ. No. 12-650, D. I. 168) As plaintiffs have stated that they do not
oppose the Henkel defendants' motion as it relates to Henkel Corporation (Civ. No. 12650, D.l. 217 at 13 n.8), 11 summary judgment is granted with respect to Henkel
Corporation. (Civ. No. 12-650, D.l. 168)

iv. Indirect infringement
The Henkel defendants move for summary judgment on the grounds that
plaintiffs can only receive one recovery on the sales of the accused products and,
because plaintiffs' theory of induced infringement relies on Dial's customers' use of the
accused products, any possible recovery under that claim would be entirely duplicative
of the recovery for the alleged direct infringement. (Civ. No. 12-650, D.l. 185 at 21)
Plaintiffs respond that questions of double recovery are for the damages phase and, at
this stage, plaintiffs may pursue multiple claims under any applicable legal theory. (Civ.

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The Henkel defendants request fees and cost associated with plaintiffs'
continued refusal to dismiss Henkel Corporation fr<?m the case until now. (Civ. No. 12650, D.l. 226 at 3 n.1)
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No. 12-650, 0.1. 217 at 17) The court agrees that the question of double recovery is
proper at the damages phase. It, therefore, declines to deprive plaintiffs of a proper
infringement contention. The Henkel defendants' motion for summary judgment is
denied in this regard. (Civ. No. 12-650, 0.1. 168)
b. Sun's motion for summary judgment of non-infringement
Plaintiffs assert that Sun infringes claims 1, 3, 6, and 7 of the '319 patent through
its unit dose laundry detergents. Sun moves for summary judgment, arguing that it
does not infringe under the proper construction (that adopted by the court) as plaintiffs
have not presented any evidence that the cleaning composition to be placed into Sun's
unit dose packets contains less than 7.5% water. (Civ. No. 12-651, 0.1. 183 at 17)
Plaintiffs argue that there are genuine issues of fact as to whether Sun infringes even
under its own construction of water content, that "the water content test results showing
water contents after packaging are circumstantial evidence of the water contents of the
detergent before packaging." (Civ. No. 12-651, 0.1. 205 at 12-16) (emphasis in brief)
Their argument continues that the "jury could reasonably infer from that evidence that
the pre-packaging water contents likewise must have been within the claimed rangethat the margins are simply too large to be explained on any other basis." (/d.) 12 As the
court has adopted a construction requiring the water content to be less than 7.5% as

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Sun argues that this argument was made for the first time on summary
judgment and should be stricken. (Civ. No. 12-651, 0.1. 214 at 1) It notes that plaintiffs'
infringement charts rely on plaintiff's post-packeting Karl Fischer tests solely to allege
that Sun's products post-packeting meet the water content limitation. (See Civ. No. 12651, 0.1. 206, exs. V, W, X) (Claim Charts mentioning Karl Fischer test results)) This
argument is further based on attorney argument and not supported by expert testimony.
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formulated, the test results are not relevant 13 (even as circumstantial evidence of
infringement) and have been excluded as noted above. As the record shows that, as
formulated, Sun's products are not infringing, 14 Sun's motion for summary judgment of
non-infringement is granted. (Civ. No. 12-651, D.l. 166)15

C. Invalidity
All defendants move for summary judgement that the '319 patent is invalid for
the following reasons: (1) the asserted claims lack novelty and are anticipated under 35
U.S.C. 102(b); (2) the claimed product was in public use more than one year prior to the
April 1, 1997 application date; and (3) the asserted claims are obvious under 35 U.S.C.

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The one relevant exception also indicates that the results were outside the
claimed water content. Sun provided plaintiffs unopened packages - after manufacture
but before shipment to customers -with each of the formulas that were then being
made and sold. (Civ. No. 12-651, D.l. 184, ex 5A at mf 152-56) Plaintiffs' expert tested
only one of the five products, which test confirmed that the water content of Sun's
products is greater than 7.5%. (Jd. at ex. 19) Sun's expert, Dr. David E. Bugay, also
tested packets from all five formulas and determined that the water content was all
above 9.0%. (See id. at ex. 6 at~~ 31-33)
14

Sun's expert, Dr. Shaun Kennedy, explained that "Sun formulates its products
to contain more than 7.5% water"- the Blue formulas requiring "a target water content
of 8.75-9.0% and a minimum water content of 8.0 %,"and the Clear formulas requiring
"a target water content of 8.0-8.8% and a minimum water content of 7.6% for some
variants and higher for others." (Jd. at ex. 5A at~ 42; see a/so ml 51, 64, 77, 90 (water
content specifications for blue products require minimum water content to be 8.0%); ~~
103, 116, 129 (water content specifications for Clear products require minimum water
content to be 7.6% or greater)) Plaintiffs' expert, Dr. Kong, when asked to assume that
Sun's construction was correct, agreed that the product is "outside the patent" and not
infringing. (Jd. at ex. 16 at 165:13-166:7)
15

As there is no direct infringement of claim 1 of the '319 patent under the court's
claim construction, and claims 3, 6, and 7 are dependent on claim 1, such claims are
not infringed as well. Additionally, as indirect infringement is predicated on a finding of
direct infringement, summary judgment under 271 (b) is granted as well.

15

103. (Civ. No. 12-650, D.l. 159; Civ. No. 12-651, D.l. 170)16 The court considers each
in turn.

1. Anticipation
a. Standard
Under 35 U.S.C. § 102(b), "[a] person shall be entitled to a patent unless the
invention was patented or described in a printed publication in this or a foreign country .
. . more than one year prior to the date of the application for patent in the United
States." The Federal Circuit has stated that "[t]here must be no difference between the
claimed invention and the referenced disclosure, as viewed by a person of ordinary skill
in the field of the invention." Scripps Clinic & Research Found. v. Genentech, Inc., 927
F.2d 1565, 1576 (Fed. Cir. 1991 ). In determining whether a patented invention is
explicitly anticipated, the claims are read in the context of the patent specification in
which they arise and in which the invention is described. Glaverbel Societe Anonyme v.
Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1554 (Fed. Cir. 1995). The prosecution

history and the prior art may be consulted if needed to impart clarity or to avoid
ambiguity in ascertaining whether the invention is novel or was previously known in the
art. /d. The prior art need not be ipsissimis verbis (i.e., use identical words as those
recited in the claims) to be anticipating. Structural Rubber Prods. Co. v. Park Rubber
Co., 749 F.2d 707, 716 (Fed. Cir. 1984).
An anticipation inquiry involves two steps. First, the court must construe the
16

Sun additionally moves for summary judgment that the claims are invalid as
indefinite should the court adopt plaintiffs' proposed constructions for certain limitations.
(Civ. No. 12-651, D.l. 170) As the court has not adopted such constructions, Sun's
motion for summary judgment is denied in this regard.
16

claims of the patent in suit as a matter of law. Key Pharms. v. Hereon Labs Corp., 161
F.3d 709, 714 (Fed. Cir. 1998). Second, the finder of fact must compare the construed
claims against the prior art. /d. A finding of anticipation will invalidate the patent.
Applied Med. Res. Corp. v. U.S. Surgical Corp., 147 F.3d 1374, 1378 (Fed. Cir. 1998).

b. Analysis
Henkel asserts that the following thirteen 17 prior art references anticipate claim 1:
(1) Freifeld; (2) U.S. Patent No. 3,528,925 ("Chapuis"); (3) U.S. Patent
No. 4,608,187 ("Chang"); (4) U.S. Patent No. 4,610,799 ("Wilsberg"); (5) U.S. Patent
No. 4,743,394 ("Kaufmann '394"); (6) U.S. Patent No. 4,929,380 ("Schulz '380"); (7)
U.S. Patent No. 5,008,031 ("Schulz '031 "); (8) U.S. Patent No. 5,362,413 ("Kaufmann
'413"); (9) published European Patent Specification EP 0339707 ("Appel"); (10)
published Japanese Patent Application JP 6-340899 ("Fujii"); (11) PCT Publication No.
W0/1994/014941 ("Bertilsson"); (12) Emballage Digest; and (13) Packaging Week, July
1, 1993 ("Packaging Week"). (Civ. No. 12-650, 0.1. 160 at 11-12) Sun similarly asserts
that the Bertilsson, Fujii, Packaging Week, Chapuis, and Schulz '380 references
anticipate the claimed invention. (Civ. No. 12-651, 0.1. 189 at 2) 18 Plaintiffs disagree
that the references disclose each limitation of the claimed invention. (See Civ. No. 12650, 0.1.196; Civ. No.12-651, 0.1.189) The court considers each limitation of claim 1

17

The court notes that the Henkel defendants will not be permitted to move
forward on thirteen anticipatory references at trial. What constitutes a reasonable
number of references will be discussed at the pre-trial conference.
18

Sun additionally argues that Appel, Chang, Kaufmann '394, Kaufmann '413,
Wilsberg, and Schulz '031 anticipate the '319 patent, attaching claim charts as exhibits.
(See Civ. No. 12-651, 0.1. 171 at 25 n.18) The court strikes this footnote and argument
in its entirety.
17

in turn.19,20,21
i. Liquid cleaning concentrate

The court has construed this limitation as "[a] composition that, when diluted, is
suitable for removing dirt or impurities, and which is in a state of matter between a solid
and a gas, and which has a definite volume but no definite shape. The composition
may include a suspension of insoluble particles." With respect to Freifeld (Civ. No. 12650, D. I. 200, ex. S), Dr. Kong, plaintiffs' expert, opines that "Freifeld's enabling
disclosure is limited to solids," and although "Freifeld discloses a 'detergent' in column
6, lines 7-15, ... that 'detergent' is a solid because most of the raw materials are
solids." (Civ. No. 12-650, D. I. 199, ex. 8 at 15) He further discusses examples
disclosed in Freifeld, "all of which are solids, not 'liquids' under either parties'

19The Henkel defendants moved to exclude Dr. Kong's expert report as it related
to anticipation on the ground that he bases his opinion on incorrect "teaching away" and
"surprising results" legal standards appropriate only in a non-obviousness analysis.
(Civ. No. 12-650, D.l. 162 at 4) The court concludes, however, that Dr. Kong applies a
proper anticipation analysis with respect to each of the asserted references. The
Henkel defendants' motion to exclude is denied in this regard. (D.I. 161)
20 Additionally defendants rely heavily on alleged admissions made by inventor
Dr. Ruck during his deposition regarding Packaging Week, Bertilsson, and Schulz '380.
(Civ. No. 12-650, D.l. 160 at 25; see, e.g., Civ. No. 12-651, D.l. 171 at 9-11) Plaintiffs
respond that defendants "seriously distort[]" Dr. Ruck's testimony and that he did not
have an adequate opportunity to properly review the references. (Civ. No. 12-650, D. I.
196 at 23; Civ. No. 12-651, D.l. 189 at 15) The court concludes that, unless Dr. Ruck
was previously given the references, along with the parties' claim constructions, and
given ample time to review each reference, Dr. Ruck's testimony is fodder for cross
examination but not sufficient to compel judgment.
21 The court has neither the energy nor the resources to address each reference
with respect to each limitation. Once it has identified an issue of fact with respect to a
certain reference, it does not further consider that reference. This does not limit the
parties from arguing any limitations at trial.
18

construction." (/d. at 16) As to Kaufman '413 (Civ. No. 12-650, D.l. 200, ex. T), Dr.
Kong opines that it discloses "a detergent composition that is [a] mull consisting of
particulate solids that is referred to as a mull," but it does not meet the claimed
limitation under either parties' construction "because the 'mull' describ[ed] in [Kaufman
'413] is more akin to a paste or a solid than a liquid." (Civ. No. 12-650, D. I. 199, ex. B
at 33-34) While the Henkel defendants' expert disagrees with this opinion, the court is
not in a position to determine which expert correctly characterizes the reference.
In response to the Henkel defendants' arguments that Chang (D. I. 200, ex. U)
discloses this limitation, Dr. Kong opines that Chang "provides no explanation of how to
make a detergent composition contained within this film" and, therefore, "fails to provide
any enabling disclosure of any detergent that is suitable for use with his 'polyvinyl
alcohol compositions.'" (Civ. No. 12-650, D.l. 199, ex. Bat 21-22) In response, the
Henkel defendants aver that Dr. Kong has not offered an explanation of "why a [person
of ordinary skill] would need to engage in undue experimentation to practice the
substantially water-free liquid detergents of Chang .... " (D.I. 215 at 3) On the record
at bar, the court will not engage in an "attempt to interpret confusing or general
testimony to determine whether a case of invalidity has been made out, particularly at
the summary judgment stage." 22 Schumer v. Laboratory Computer Systems, Inc., 308

22

With respect to Emballage Digest (Civ. No. 12-650, D.l. 201, ex. AA) and
Packaging Week (id. at ex. BB), plaintiffs allege that the two are not anticipatory
because they do not enable anything. Specifically "Emballage Digest provides no
formulations or any enabling disclosure of any detergent compositions" (D.I. 199, ex. B
at 44), and "[t]he Packaging Week article provides no disclosure of any liquid cleaning
concentrates or formulas." (/d. at 46) See, e.g., Helifix Ltd. v. 8/ok-Lok, Ltd., 208 F.3d
1339, 1346 (Fed. Cir. 2000) ("To be anticipating, a prior art reference must disclose
'each and every limitation of the claimed invention[,] ... must be enabling[,] and [must]
19

F.3d 1304, 1316 (2002).
In opining that the present limitation is not met, Dr. Kong likens the compositions
disclosed in the following references to pastes. Specifically, he opines that Wilsberg
(Civ. No. 12-650, D. I. 200, ex. V) "discloses 'thickly liquid to pasty mixtures,' ... and
"describes his example 1 as a 'paste."' (Civ. No. 12-650, D. I. 199, ex. Bat 77;

see D.l.

200, ex. Vat abstract, 2:15-21, 3:64-65, 5:24-51) The '319 patent explains that "liquid
cleaning compositions possess advantages over pastes and gels" ('319 patent, 1:5253) and, therefore, supports Dr. Kong's opinion that "[t]he '319 patent clearly
distinguishes 'liquid cleaning compositions' from 'pastes."' (Civ. No. 12-650, D.l. 199,
ex. Bat 23)23 Additionally, Dr. Kong explains that, "[a]lthough Schulz ['031] refers to
'liquids,' the specification examples are pastes, not liquids. The [e]xamples described
in column 5 have methylcellulose, which is a solid that is not water soluble .... Hence,
this formula is a paste or substance with solid particles that is not the claimed liquid
cleaning concentrate." (Civ. No. 12-650, D.l. 199, ex. Bat 32; Civ. No. 12-650, D.l.
200, ex. Y) 24 As to Kaufmann '394, Dr. Kong opines that "Kaufman '394 discloses a

describe ... [the] claimed invention sufficiently to have placed it in possession of a
person of ordinary skill in the field of the invention."').
23

Additionally, in their Petition for Withdrawal from Issue during prosecution of
the '319 patent, applicants distinguished the prior art by stating that "the allegedly
anticipating composition of the Haq patent is not a slurry as alleged, but rather is a
paste, and accordingly, is not a liquid cleaning concentrate anticipating the instant
invention." (Civ. No. 12-650, D.l. 112 at JA98-99; Civ. No. 12-651, D.l. 135 at JA98-99)
(emphasis in orginal)
24

Dr. Kong further opines that Schulz '031 "does. not disclose having a 'single
layer film"' because it discloses '"film bags based on polyvinyl alcohol' and does not
disclose that the 'film bag' is a 'single layer.'" (Civ. No. 12-650, D. I. 199, ex. 13 at 33)
20

'detergent paste composition' and 'detergent pastes' not a 'liquid cleaning concentrate."'
(Civ. No. 12-650, D. I. 199, ex. Bat 25)
ii. Water content
Plaintiffs dispute the presence of the water content imitation in the following
references: (1) Fujii discloses a "liquid cleaning agent composition ... [with] a water
content in the range of 5 wt. % to less than 25 wt. %, more preferably 12 to 22 wt. %"
(Civ. No. 12-650, D.l. 201, ex. CC

at~

11; Civ. No. 12-650, D.l. 199, ex. Bat 37); (2)

Bertilsson discloses a broad water content range of 2% to 18%, with a preferred range
of 3% to 15%, with examples of 8.3% water and 16.7% water content (Civ. No. 12-650,
D. I. 201, ex. DD at 2:11-12; 6:18-19; 7:1-12; 8:1-30; Civ. No. 12-650, D. I. 199, ex. Bat
40-41 ); and (3) Schulz '380 discloses a "detergent contain[ing] at most 5% by weight
unbound water" and "may also contain ... water which is a raw material in the
preparation of the detergent .... "25 (Civ. No. 12-650, D.l. 200, ex. Y at 2:17-25)
In support of their position, plaintiffs allege that the Federal Circuit's opinion in
Atofina v. Great Lakes Chern. Corp., 441 F.3d 991 (Fed. Cir. 2006}, is controlling. (Civ.
No. 12-650, D.l. 196 at 15; Civ. No. 12-651, D.l. 189 at 12) In Atofina, the patent

25

The experts dispute whether Schulz '380 discloses the claimed water
percentage ranges. Dr. Kong opined that it "does not disclose the claimed range
because it only discloses the free water added and says additional water can be added
by other ingredients and does not describe how much water is added ... therefore
provid[ing] no upper limit on the amount of water in his disclosed range." (Civ. No. 12650, D. I. 199, ex. Bat 28) Additionally, "Schulz ['380] discloses two examples each of
which have more than 7.5 wt% water." (/d.) Dr. Cairns, the Henkel defendants' expert,
argued that "one skilled in the art reading Schulz '380 would understand it as disclosing
detergents with a range of total water content: from near zero wt. % (when using
substantially anhydrous raw materials and no added water) to approximately 5 wt. %
(when using substantially anhydrous raw materials and 5% added water)." (Civ. No. 12650, D. I. 163, ex. Cat~ 42)
21

claimed a temperature range of 330 to 450 degrees Celsius. 441 F.3d at 993. The
prior art reference disclosed a temperature range of 100 to 500 degrees Celsius. /d. at
994. Although the claimed limitation was "entirely within" the prior art range, the Court
concluded that, "[g]iven the considerable difference between the claimed range and the
range in the prior art, no reasonable fact finder could conclude that the prior art
describes the claimed range with sufficient specificity to anticipate this limitation of the
claim." /d. at 999. The prior art reference further disclosed "a preferred temperature
range of 150 to 350 [degrees Celsius] that slightly overlap[ped] the [claimed]
temperature range." /d. at 1000. In finding that the prior art did not disclose a specific
embodiment in the claimed range, the Court determined that,

[the] "slightly overlapping range is not disclosed as such, i.e.,
as a species of the claimed generic range of 330 to 450 oc.
Moreover, the disclosure of a range of 150 to 350 oc does
not constitute a specific disclosure of the endpoints of that
range, i.e., 150 oc and 350 oc .... The disclosure is only
that of a range, not a specific temperature in that range, and
the disclosure of a range is no more a disclosure of the end
points of the range than it is of each of the intermediate
points.

/d. at 1000.
Defendants contend that the Federal Circuit's opinion in ClearValue, Inc. v. Pearl
River Polymers, Inc., 668 F.3d 1340 (Fed. Cir. 2012), more appropriately governs the

facts of the present case. (Civ. No. 12-650, D.l. 215 at 6, 13; Civ. No. 12-651, D.l. 171
at 8-9) The Court in ClearValue explained that an overlapping range may be sufficient
to anticipate a claim where the range is not "critical" to the invention. /d. at 1345. The
Federal Circuit further explained that in Atofina, "the evidence showed that one of
22

ordinary skill would have expected the synthesis process to operate differently outside
the claimed temperature range, which the patentee described as 'critical' to enable the
process to operate effectively." /d. The Court in ClearValue distinguished the facts
before it from those in Atofina, explaining that, "unlike Atofina where there was a broad
genus and evidence that different portions of the broad range would work differently,
here, there is no allegation of criticality or any evidence demonstrating any difference
across the range." /d. Additionally, "there is no 'considerable difference between the
claimed range and the range in the prior art."' /d. Under this analysis, the claim
limitation "alkalinity less than or equal to 50 ppm" was anticipated by prior art disclosing
alkalinity of 150 ppm or less. /d.
Defendants urge the court to find similarly in the present case, arguing that
plaintiffs have no actual evidence demonstrating the criticality of the claimed ranges.
For support, the Henkel defendants point to the examples of the patent where only one
example (and the only example of a laundry detergent) discloses water. ('319 patent,
5:5-9:2) The Henkel defendants argue that, as this example discloses water at 2.0 wt.
% (id. at 5:5-26), and no examples disclose water at or around 7.5 or 5.0 wt. %, it
establishes the lack of criticality of the claimed ranges. (Civ. No. 12-650, D.l. 215 at 5)
Sun directs the court to the prosecution history, where the original application focused
on "less than 10 wt. % water," to demonstrate the lack of criticality. (See Civ. No. 12651, D. I. 171 at 8-9) Additionally, unasserted claim 35 claims water above the 7.5 wt.
% limit. ('319 patent, 11 :28-31)
The court, however, declines to conclude that the water content is not "critical" to

23

the patent in light of evidence to the contrary. For instance, the prosecution history
indicates that the claimed invention was rejected as obvious over U.S. Patent. No.
4,973,416 to Kennedy ("Kennedy"). (Civ. No. 12-650, D.l. 200, ex. D at 75) In
response, applicant argued that Kennedy taught away from a cleaning concentrate
having less than 10 wt. % water. (/d.) Kennedy explained that "[r]eduction in the water
content to below about 10% is possible; however, at a level of less than about 10%

the liquid laundry detergent will absorb moisture through the vapor-permeable
water-soluble film." (/d. (emphasis in original); ex. L at 2:55-59 (Kennedy patent)) In
explaining that "it is preferred to limit the amount of water in the liquid cleaning
concentrate to less than 10 wt. % of the composition," the '319 patent distinguishes
Kennedy. (See '319 patent, 3:42-49) Specifically, it states that, "[c]ontrary to the
teachings of [Kennedy] ... the liquid cleaning concentrate packets according to the
invention are stable despite containing cleaning concentrates having less than 10 wt. %
water." (/d.) Additionally, Dr. Kong has explained that it was previously thought "that a
high water content would result in leaking and a low water content would cause
embrittlement of water soluble films such as PVOH films." (Civ. No. 12-650, D.l. 199 at
13) He further explained that "[t]he '319 [p]atent inventors found that this range of
water content was important because above 7.5% there could be too much water
causing instability or leaking with liquid cleaning concentrates." (/d.)

iii. A single layer film
Plaintiffs argue that several of the prior art references do not disclose a "film" at
all, much less a single layer film. (Civ. No. 12-650, D.l. 196 at 19) Dr. Kong opines that

24

Bertilsson (0.1. 201, ex. DO at 5), Chapuis (0.1. 200, ex. X at 1:16-17), and Appel (/d. at
ex. W at 3:44-46) disclose gelatin capsules, which would not be understood to disclose
a "film" by a person of ordinary skill in the art. (Civ. No. 12-650, 0.1. 199, ex. Bat 20,
35, 41 )26 He additionally opines that, "[t]here is no discussion of the ribbon construction
and whether it is a single layer or a multiple layer ribbon" in Chapuis. (/d. at 20) "There
is no basis to conclude that Appel was disclosing single-layer films" as "[t]here is no
disclosure of the 'ribbon' construction and how many layers they have and it cannot be
assumed that they are a single layer." (/d. at 35-36) "Further, there is nothing to
indicate, and Dr. Cairns has not shown, that the 'capsule' is comprised of a 'single layer'
as required by the asserted claims." (/d. at 41) For each of the three limitations
discussed above, defendants' experts disagree with Dr. Kong's characterization of the
prior art and interpretations thereof. Such expert disagreements present genuine
issues of material fact and defendants' motions for summary judgment of invalidity,
therefore, are denied. See Hilgraeve Corp. v. McAfee Associates, Inc., 224 F.3d 1349,
1352 (Fed. Cir. 2000) ("While disagreements do not always create genuine issues of
material fact, on this record the conflicting allegations of experts leaves material factual
questions unanswered.")Y
2. Public Use

26

The court acknowledges that Sun asserts that Dr. Kong should be disqualified
from assessing whether a capsule is made from a single layer film. (See Civ. No. 12651, 0.1. 171 at 11, 24 n.17) Should Sun wish to assert this reference, this issue can
be addressed at pre-trial or trial.
27

As the court has found genuine issues of material fact with respect to
anticipation of the independent claim, the court does not address the asserted
dependent claims of the '319 patent.
25

Defendants further argue that "the Asserted Claims are also invalid in view of Mr.
Dickler and his company Dickler Chemical's public uses of product samples embodying
the claimed inventions more than one year before the '319 Patent's April1, 1997 filing
date." (Civ. No. 12-650, D.l. 160 at 26; see also Civ. No. 12-651, 0.1. 171 at 28)

a. Standard
"A person shall be entitled to a patent unless ... (b) the invention was ... in
public use ... in this country, more than one year prior to the date of application for
patent in the United States." 35 U.S.C. § 102(b). "Public use under 35 U.S.C. § 102(b)
includes any use of the claimed invention by a person other than the inventor who is
under no limitation, restriction or obligation of secrecy to the inventor." Minnesota Min.
& Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002) (internal citations

omitted). "Whether a patent is invalid due to a§ 102(b) public use is a question of law
based on underlying questions of fact." /d. "A bar under§ 102(b) arises where, before
the critical date, the invention is in public use and ready for patenting." Invitrogen Corp.

v. Biocrest Mfg., L.P., 424 F.3d 1374, 1379 (Fed. Cir. 2005).
The proper test for the public use prong of the § 102(b)
statutory bar is whether the purported use: (1) was
accessible to the public; or (2) was commercially exploited.
Commercial exploitation is a clear indication of public use,
but it likely requires more than, for example, a secret offer
for sale. Thus, the test for the public use prong includes the
consideration of evidence relevant to experimentation, as
well as, inter alia, the nature of the activity that occurred in
public; public access to the use; confidentiality obligations
imposed on members of the public who observed the use;
and commercial exploitation.

/d. at 1380 (citations omitted) With respect to the "ready for patenting"

26

requirement,"[t]hat condition may be satisfied in at least two ways: by proof of reduction
to practice before the critical date; or by proof that prior to the critical date the inventor
had prepared drawings or other descriptions of the invention that were sufficiently
specific to enable a person skilled in the art to practice the invention." Pfaff v. Wells
Electronics, Inc., 525 U.S. 55, 67-68 (1998). Although the Supreme Court applied
Pfaff's "ready for patenting" test in the context of the 102(b) on sale bar, the test applies
equally to the public use bar as well. Invitrogen, 424 F.3d at 1379.
b. Analysis
Mr. Cicini 28 testified that by early 1995, "water-soluble pouch prototypes with
liquid concentrates in them" had been made and were being shown to customers
without a Non-Disclosure Agreement in place. (Civ. No. 12-650, D.l. 166, ex. 19 at
268:4-272:16; D.l. 172, ex. 19 at 268:4-272:16) He further testified that the film used
was a two-mil-thick single layer film and the concentrate was the low water or the
anhydrous formulas. (Civ. No. 12-650, D.l. 166, ex. 19 at 271:17-24; Civ. No. 12-651,
D.l. 172, ex. 19 at271:17-24) Mr. Dickler, inventor of the '319 patent, also testified that
as of November 1995, they had made their own prototypes at Dickler Chemical. (Civ.
No. 12-650, D.l. 166, ex. 15 at 57:19-58:6; Civ. No. 12-651, D.l. 172, ex. 20 at 57:1958:6) Additionally, he agreed that the samples being demonstrated were the lower
water content formulas that would ultimately wind up in the patent. (Civ. No. 12-650,
28

Piaintiffs identify Mr. Cicini as a lab technician employed by Dickler Chemical
"involved in taking direction from Dr. Ruck and Mr. Dickler to prepare samples [and to
conduct tests] based on the instructions provided to them." (Civ. No. 12-651, D. I. 172,
ex. 30 at 4) Plaintiffs assert that the jury would have ample reason not to believe Mr.
Cicini's testimony as he later left Dickler Chemical and began a company to market
competing products. (See Civ. No. 12-651, D.l. 190, ex. S at~ 30)
27

0.1. 166, ex. 15 at 179:23-180:5) Mr. Dickler testified that the purpose of showing the
product to customers in November 1995 was to "see what the acceptance would be so
we would know how to formulate price and quantities and size and really to see what
was marketable and what wasn't." (Civ. No. 12-650, D. I. 166, ex. 15 at 60:17-24; Civ.
No. 12-651, 0.1. 172, ex. 20 at 60:17-24)
Mr. Cicini further testified that he shipped "Revised Anhydrous Dishwashing
Detergent" to Greensol in France for commercial scale packaging into water-soluble film
on August 16, 1995. (See Civ. No. 12-650, 0.1. 166, ex 19 at 203:1-205:5, Cicini-2 at 4,
Cicini-5; Civ. No. 12-651, 0.1. 172, exs. 28-30) Greensol allegedly shipped a boxful of
the sample product back to Dickler Chemical which was stored in a lab and additional
stability work was conducted on it. (See Civ. No. 12-650, 0.1. 166, ex. 19 at 326:22328:11; Civ. No. 12-651,0.1. 172, ex. 19 at 326:22-328:11)
In contending that there are issues of fact as to whether the product shown to
customers embodied the claimed invention, plaintiffs point to Mr. Cicini's deposition
testimony where he states that he does not know which formulations were used in any
particular prototype constructed and shown to customers before April 1, 1996. (See
Civ. No. 12-650,0.1.200, ex. Bat 186:2-187:11; Civ. No. 12-651, ex. R. 186:2-187:11)
Mr. Cicini further testified that, after receiving the product back from Greensol, "[w]e did
some further stability work with it ... I could see from here that we changed the product
afterward, but we did some work with it." (D. I. Civ. No. 12-650, D. I. 166, ex. 19 at
328:6-11; Civ. No. 12-651, 0.1. 172, ex. 19 at 328:6-11) Additionally, he testified that "it
was early '96 when we had formulas that we could have gone to market with." (Civ. No.
12-650, 0.1. 200, ex. B at 221 :4-8; see a/so id. at ex. C at 5 (final formula dated
28

02/07/96); Civ. No.12-651, 0.1.190, ex. Rat221:4-8)
Plaintiffs further contend that "[t]he demonstrations involved several measures
designed to preserve the confidential and proprietary nature of the inventors' ongoing
experimentation," and that "[t]he inventors and their staff demonstrated prototypes only
for select individuals by invitation." (Civ. No. 12-650, D. I. 196 at 27; see D. I. 201, ex. JJ
at~

28; Civ. No. 12-651, 0.1. 189 at 27; see 0.1. 190, ex.

Sat~

28) Additionally, Mr.

Cicini testified that the remains of the prototypes were discarded and no attendees
were given samples to take away with them. (Civ. No. 12-650, D. I. 200, ex. 8 at 329:310; Civ. No.12-651, 0.1.190, ex. Rat329:3-10)
The court concludes, based on the above record, that there exist issues of fact
and credibility as to whether the samples were publicly demonstrated and whether they
embodied the claimed invention. Defendants' motions for summary judgment are
denied in this regard. (Civ. No. 12-650, 0.1. 159; Civ. No. 12-651, D. I. 170)
3. Obviousness
a. Standard

"A patent may not be obtained ... if the differences between the subject matter
sought to be patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person having
ordinary skill in the art." 35 U.S.C. § 103(a). Obviousness is a question of law, which
depends on underlying factual inquiries.
Under§ 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims
at issue are to be ascertained; and the level of ordinary skill
in the pertinent art resolved. Against this background the
29

obviousness or nonobviousness of the subject matter is
determined. Such secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances
surrounding the origin of the subject matter sought to be
patented.
KSR lnt'l Co. v. Te/eflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John Deere

Co., 383 U.S. 1, 17-18 (1966)).
"[A] patent composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the prior art."
KSR, 550 U.S. at 418. Likewise, a defendant asserting obviousness in view of a

combination of references has the burden to show that a person of ordinary skill in the
relevant field had a reason to combine the elements in the manner claimed. /d. at 41819. The Supreme Court has emphasized the need for courts to value "common sense"
over "rigid preventative rules" in determining whether a motivation to combine existed.

/d. at 419-20. "[A]ny need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining the
elements in the manner claimed." /d. at 420. In addition to showing that a person of
ordinary skill in the art would have had reason to attempt to make the composition or
device, or carry out the claimed process, a defendant must also demonstrate that "such
a person would have had a reasonable expectation of success in doing so."
PharmaStem Therapeutics, Inc. v. ViaCe/1, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007).

A combination of prior art elements may have been "obvious to try" where there
existed "a design need or market pressure to solve a problem and there [were] a finite
number of identified, predictable solutions" to it, and the pursuit of the "known options
30

within [a person of ordinary skill in the art's] technical grasp" leads to the anticipated
success. /d. at 421. In this circumstance, "the fact that a combination was obvious to
try might show that it was obvious under§ 103." /d. Federal Circuit precedent has also
established that "[s]tructural relationships may provide the requisite motivation or
suggestion to modify known compounds to obtain new compounds," and that particular
types of structural similarity can give rise to a case of prima facie obviousness.

Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., 655 F.3d 1291, 1312
(Fed. Cir. 2011) (citing In re Deuel, 51 F.3d 1552, 1558 (Fed. Cir. 1995)).
A court is required to consider secondary considerations, or objective indicia of
nonobviousness, before reaching an obviousness determination, as a "check against
hindsight bias." See In re Cyclobenzaprine Hydrochloride Extended-Release Capsule

Patent Litig., 676 F .3d 1063 (Fed. Cir. 2012). "Such secondary considerations as
commercial success, long felt but unsolved needs, failure of others, etc., might be
utilized to give light to the circumstances surrounding the origin of the subject matter
sought to be patented." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18
(1966).
"Because patents are presumed to be valid, see 35 U.S.C. § 282, an alleged
infringer seeking to invalidate a patent on obviousness grounds must establish its
obviousness by facts supported by clear and convincing evidence." Kao Corp. v.

Unilever U.S., Inc., 441 F.3d 963, 968 (Fed. Cir. 2006) (citation omitted). In conjunction
with this burden, the Federal Circuit has explained that,
[w]hen no prior art other than that which was considered by
the PTO examiner is relied on by the attacker, he has the
31

added burden of overcoming the deference that is due to a
qualified government agency presumed to have properly
done its job, which includes one or more examiners who are
assumed to have some expertise in interpreting the
references and to be familiar from their work with the level of
skill in the art and whose duty it is to issue only valid patents.

PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (quoting
Am. Hoist & Derrick Co. v. Sowa & Sons, 725 F .2d 1350, 1359 (Fed. Cir. 1984) ).

b. Analysis
Defendants alternatively argue that, if not anticipatory, certain combinations of
the above references render the asserted claims obvious. Dr. Cairns, the Henkel
defendants' expert, summarizes the teachings of the prior art references (Civ. No.
12-650, D.l. 163, ex. A at ~m 123-130) and concludes that "all elements of the
[a]sserted [c]laims of the '319 [p]atent were in the public domain and known to and
regularly practiced by skilled artisans." (/d. at,-[ 130) Moreover, "any differences that
might exist between the claimed subject matter and the prior art would be obvious to a
person of ordinary skill in the art, and that such differences involve merely common
sense and routine improvement." (/d. at ,-r 132)29
The court concluded above that there are disputes of fact regarding whether
certain prior art references disclose each of the three limitations of claim 1 of the '319
patent. Plaintiffs point out that the Kennedy patent discussed in the '319 patent taught
away from the inventors' approach. (Civ. No. 12-650, D. I. 196 at 32, 36) Dr. Kong

29

Sun relies on attorney argument to contend that the asserted claims are invalid
as obvious. Attorney argument, without more, is insufficient to meet Sun's burden of
persuasion on summary judgment.
32

explains that "at the time of the invention [the focus was] on multi-layer films and film
coatings, as opposed to single-layer films, because these multi-layer films had
increased durability/strength and/or improve the chemical compatibility between the
composition, the environment and the film." (Civ. No. 12-650, D.l. 199, ex. Bat 61-62)
He further explains that "[o]ne of ordinary skill in the art would not have been motivated
at the time of the invention to package a liquid cleaning concentrate in a water-soluble
film . . . . It was known that a liquid cleaning concentrate would interact with a watersoluble film and affect the packaging stability or brittleness and the liquid properties."

(/d. at 61-64)
Additionally, the parties' experts point to conflicting teachings regarding the water
content for use in water-soluble films. Dr. Kong opines that "one of ordinary skill in the
art would not have been motivated at the time of the invention to package a liquid
cleaning concentrate in a water soluble film" as the Kennedy prior art cited within the
'319 patent explains that, "at a level of less than about 10% the liquid laundry detergent
will tend to absorb moisture through the vapor-permeable water-soluble film. This
absorption of water can destabilize the liquid laundry detergent and/or lead to a
breakdown in the water-soluble film." (/d. at 63; Civ. No. 12-650, D.l. 200, ex. L at 2:5761) Dr. Cairns explains that the Fujii prior art reference "recognizes that 'when an
aqueous solution with a water content exceeding 10 wt. % is packaged inside a watersoluble film, the film dissolves' thereby teaching that water content below 10 wt. %,
such as less than 5 wt.% is desirable." (Civ. No. 12-650, D.l. 163, ex. Cat~ 164)
There remain genuine issues of material fact with respect to the obviousness
determination. Defendants' motions are denied.
33

V. MOTION TO EXCLUDE

Rule 702 of the Federal Rules of Civil Procedure allows a qualified witness to
testify in the form of an opinion if the witness' "scientific, technical, or other specialized
knowledge will help the trier of fact to understand the evidence or to determine a fact in
issue" and if his/her testimony is the product of reliable principles and methods which
have been reliably applied to the facts of the case.
The Henkel defendants filed a Daubert motion (discussed throughout above)
additionally seeking to exclude any opinions from Dr. Kong and/or Dr. Gering
concerning secondary considerations as speculative and based on incomplete data.
With respect to such opinions, the Henkel defendants allege that: (1) Dr. Kong is not
qualified 30 to testify on commercial success, industry praise, licensing, and copying; (2)
Dr. Gering bases his commercial success testimony on incomplete data; and (3) the
required nexus between the secondary considerations and the '319 patent is lacking.
(Civ. No. 12-650, D.l. 162 at 13-20) In response, plaintiffs contend that Dr. Kong's
extensive experience in detergent production qualifies him to testify on these secondary
considerations, and that any disputes of required nexus or the experts' ultimate
conclusions bear on the weight of the evidence, not admissibility. (Civ. No. 12-650, D.l.
194 at 13-20)
A. Commercial success

In order to demonstrate commercial success in the context of secondary
30

Dr. Kong is allowed to offer opinions on these secondary considerations of nonobviousness, but his opinions still need to show the requisite nexus to be admissible.
See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392-93 (Fed.
Cir. 1988).
34

considerations of non-obviousness, an expert must establish a nexus between that
commercial success and the patented technology. LadaTech, LLC v. 11/umina, Inc., Civ.
No. 09-627, 2012 WL 2153646, at *1 (D. Del. Jan. 24, 2012); see Iron Grip Barbell Co.
v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004); see a/so Brown &
Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120,1130 (Fed. Cir. 2000)

("[l]f the marketed product embodies the claimed features, and is coextensive with
them, then a nexus is presumed and the burden shifts to the party asserting
obviousness to present evidence to rebut the presumed nexus.").
In the present case, the Henkel defendants allege that plaintiffs' expert, Dr.
Kong, contradicts himself regarding whether the '319 patent has made plaintiffs'
products commercially successful. (See D.l. 166, ex. 2 at 57-58, ex. 9 at 345:18-23,
349:4-350:3) (Dr. Kong first says the commercial success is tied to the fact that the
water content prevents the products from leaking but later says that less than 7.5%
water is not necessary for commercially successful products). They further allege that
Dr. Kong admits that the commercial success of the unit-dose laundry products was
due to other industry players and that consumers do not care one way or another about
the water content of the product. (/d. at ex. 9 at 320:11-321:11) With respect to Dr.
Gering, the Henkel defendants contend that his opinions should be excluded because
he only accounted for the commercial success of the product since 2012, after Procter
and Gamble had launched its Tide Pods product, which does not account for product
sales from 1995-2005. (D.I. 162 at 18-19) They further contend that Dr. Gering's
failure to consider the lack of commercial success of plaintiffs' product compared to the

35

rest of the market renders his testimony inadmissible. (/d. at 19)
Dr. Kong's contradicting testimony, combined with the fact that the most
successful unit dose laundry product, Proctor & Gamble's Tide product, has a water
content much higher than 7.5%, illustrate that plaintiffs have not shown that there is a
nexus between the commercial success of their products and the '319 patent's 7.5%
water content limitation. (See D. I. 166, ex. 9 at 349:4-350:3) Proctor & Gamble's
success greatly weakens plaintiffs' commercial success nexus argument because it
illustrates that strong marketing campaigns and/or the general ease of use are what
make the products commercially successful and not the water content in particular.

(See D.l. 166, ex. 9 at 320:11-321:11) In other words, the products' success is not
"coextensive" with the '319 patented technology. Brown & Williamson, 229 F.3d at
1130. Additionally, Dr. Gering's report shows that, even since 2006, plaintiffs' product
has only averaged sales of approximately $1 million annually out of a nearly $7 billion
dollar laundry detergent industry. (See D.l. 198 at 5, 7) Because no nexus has been
demonstrated between the commercial success of the unit dose laundry products and
the '319 patent's 7.5% water content limitation, the court excludes Dr. Kong's and Dr.
Gering's testimony regarding commercial success. The Henkel defendants' motion is
granted in this regard.
B. Industry praise
Similarly, an expert must establish a nexus between the industry praise and the
patented technology. See Transocean Offshore Deepwater Drilling, Inc. v. Maersk

Drilling USA, Inc., 699 F.3d 1340, 1351 (Fed. Cir. 2012). The Henkel defendants allege

36

that Dr. Kong bases his nexus opinions on praise that the unit dose laundry product
received generally, not on anything specific to the features of the '319 patent. They
also point to Dr. Kong's deposition testimony where he states that the industry praise he
cited in his expert report relates to the benefits of the unit dose format generally and not
the '319 patent alone. (See D.l. 166, ex. 9 at 334:25-337:21, 343:23-345:15)
The articles that plaintiffs cite to support their claims of industry praise discuss
the benefits of the products in general, such as their biodegradable nature and the fact
that no measurement is needed, not the 7.5% water content in particular. (See D. I.
195, ex. H) Further, unlike the innovative dual-activity oil derrick patent which was

specifically praised by other experts in Transocean, here the claimed invention was
not specifically praised, the entire product in general was praised. See Transocean,
699 F.3d at 1351. Therefore, the expert testimony regarding industry praise is
inadmissible because there is no nexus between the industry praise of the unit dose
laundry products and the claimed invention. The Henkel defendants' motion is granted
in this regard.

C. Licensing
In order to properly consider licensing in the context of secondary considerations
of non-obviousness, an expert must establish a nexus between that licensing and the
patented technology. See Iron Grip Barbell, 392 F.3d at 1324. "'[T]he mere existence
of ... licenses is insufficient to overcome the conclusion of obviousness' when there is
a strong prima facie case of obviousness." /d. (citing SIB/A Neurosciences, Inc. v.
Gadus Pharm. Corp., 225 F.3d 1349, 1358 (Fed. Cir. 2000). In short, details of the

37

licenses must be provided to perform a proper nexus analysis.
The Henkel defendants contend that Dr. Kong's opinion should be excluded
because he did not provide a proper nexus analysis between the licenses and the
claimed invention. They allege that Dr. Kong did not show proof that licenses were paid
or provide any other license details31 and, therefore, he did not provide a proper
licensing nexus analysis. (D. I. 162 at 15-16) In his report, Dr. Kong provides a list of
licenses and cites to numerous exhibits regarding proof of licensing; only two of these
exhibits were submitted to the court. (D.I. 199, ex. Bat 49-50) Additionally, the exhibits
that were submitted, which were related to licensing negotiations stemming from
plaintiff B3P's parent company, Dickler Chemical, neglect to mention that Dickler made
settlement payments to resolve the licensing dispute that plaintiffs cite. (See D. I. 195,
ex. I) A proper licensing nexus analysis cannot be made without additional information
concerning the licenses that Dr. Kong lists in his report. Therefore, the court excludes
the expert testimony regarding licensing because there is no evidenced nexus between
the claimed licensing of the unit dose laundry products and the claimed invention. The
Henkel defendants' motion is granted in this regard.
D. Copying

Lastly, with respect to the secondary consideration of copying, "copying requires
the replication of a specific product" which can be illustrated in a variety of different
ways, including

31

For example, with respect to the alleged Proctor and Gamble licensing that Dr.
Kong cites in his report, he never discusses the nature of this license or the claim that
this license was agreed in exchange for $1. (See D. I. 166, ex. 9 at 334:1-20)

38

through internal documents, see Akamai Techs., Inc. v.
Cable & Wireless Internet Servs., Inc., 344 F.3d 1186,
1196-97 (Fed. Cir. 2003); direct evidence such as
disassembling a patented prototype, photographing its
features, and using the photograph as a blueprint to build a
virtually identical replica, see Advanced Display Sys., Inc. v.
Kent State Univ., 212 F.3d 1272, 1285 (Fed. Cir. 2000); or
access to, and substantial similarity to, the patented product
(as opposed to the patent), Cable Elec. Prods., Inc. v.
Genmark, Inc., 770 F.2d 1015, 1027 (Fed. Cir. 1985),
overruled on other grounds by, Midwest Indus., Inc. v.
Karavan Trailers, Inc., 175 F.3d 1356, 1359 (Fed. Cir. 1999)
(en bane).
Iron Grip Barbell Co., 392 F.3d at 1325. However, "[n]ot every competing product that
arguably falls within the scope of a patent is evidence of copying. Otherwise every
infringement suit would automatically confirm the non[-]obviousness of the patent." /d.
The Henkel defendants allege that the copying allegations are speculative
because they do not account for the fact that they already had knowledge of the unit
dose product from their German parent company and because no confidential
information regarding the unit dose product was ever exchanged between plaintiffs and
the Henkel defendants. (D.I. 162 at 16-17) Therefore, the Henkel defendants claim
that Dr. Kong's copying opinions should be excluded. (Jd. at 17)
In his report, Dr. Kong cites to numerous exhibits regarding proof of copying, yet
none of these exhibits were submitted to the court. (D.I. 199, ex. B at 50-54) Without
these exhibits it is impossible to determine the validity of the copying claims. Therefore,
the court excludes Dr. Kong's testimony regarding copying because plaintiffs have not
provided proof that the Henkel defendants copied the claimed invention in developing
their own unit dose laundry products. The Henkel defendants' motion is granted in this

39

regard. 32

VI. CONCLUSION
For the foregoing reasons, the court denies defendants' motions for summary
judgement of invalidity (Civ. No. 12-650, D. I. 159; Civ. No. 12-651, D. I. 170), grants in
part and denies in part the Henkel defendants' motion for summary judgment of noninfringement (Civ. No. 12-650, D. I. 168), and grants Sun's motion for summary
judgment of non-infringement (Civ. No. 12-651, D.l. 166). The court grants in part and
denies in part the Henkel defendants' motion to exclude the testimony and opinions by
Drs. DiVincenzo, Kong and Gering (Civ. No. 12-650, D.l. 161 ), grants Sun's motion to
exclude Robertson Microlit's and Mibrobac's testing (Civ. No. 12-651, D.l. 167), and
denies as moot the Henkel defendants' motion to strike the March 6 supplemental
expert reports of Drs. DiVincenzo and Kong (Civ. No. 12-650, D.l. 167).

32

To the extent that Sun addresses additional secondary considerations, Sun
may identify such issues at the pre-trial conference.

40