United States Gypsum Company v. New NGC, Inc.

Filing 140

MEMORANDUM AND ORDER: The report and recommendation, Filing No. 114 , is affirmed. The objections filed by defendant New NGC, Inc., Filing No. 115 , are overruled. Signed by Judge Joseph F. Bataillon on 10/17/2018. (ceg)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

UNITED STATES GYPSUM COMPANY,
1:17CV130

Plaintiff,
v.

MEMORANDUM AND ORDER

NEW NGC, INC.,
Defendant.

This matter is before the Court on the objections by New NGC, Inc., (hereinafter
“NGC”), D.I. 115, to the report and recommendations (“R&R”), D.I. 114, of the Magistrate
Judge Sherry Fallon, who denied NGC’s various requests for claim construction. This is
a patent infringement case. United States Gypsum Company (“USGC”) filed a complaint
against NGC for patent infringement. The technology in question relates to gypsumcontaining products, such as gypsum wallboard, having an increased resistance to
deformation, and to compositions and methods for producing such products.
Pursuant to 28 U.S.C. § 636(b), Fed. R. Civ. P. 72(b), and D. Del. LR 72.1, findings
and recommendations are viewed de novo by this Court. Princeton Digital Image Corp.
v. Konami Digital Entm’t Inc., 2017 WL 1196642, at *1 (D. Del. Mar. 30, 2017) (citing St.
Clair Intellectual Prop. Consultants, Inc. v. Matsushita Elec. Indus. Co., Ltd., 691 F. Supp.
2d 538, 541-42 (D. Del. 2010)); see also 28 U.S.C. § 636(b)(1).
BACKGROUND
NGC and USGC are competitors in most aspects of the gypsum wallboard
materials. The magistrate judge previously stated:

This action arises primarily from NGC’s alleged infringement of a
breakthrough patent technology in the formulation of gypsum
wallboard. The key ingredient–the “enhancing material”–refers to a
class of phosphorus-containing compounds that provide surprising
improvements in sag resistance, strength, and dimensional stability
of gypsum wallboards. USGC uses a patented method containing
sodium trimetaphosphate (“STMP”) as its enhancing material. The
use of STMP in USGC’s wallboards significantly improves the quality
of its products, virtually eliminates a long time problem of sagging
boards under moisture and humidity exposure, and reduces the
weight of USGC’s Sheetrock brand wallboard. “In addition to
improving product performance, the patented technology also
reduces manufacturing, transportation, and handling costs.”
(footnotes omitted).

D.I. 20, at 2-3 (citing D.I. 14, at 2-3).
USGC gave notice to NGC of the infringement. The parties attempted to resolve
their issues but could not reach an agreement. On February 6, 2017, USGC filed a
complaint alleging that NGC manufactures products that infringe United States Patent
Nos. 6,342,284 (“the ‘284 patent”); 6,632,550 (“the ‘550 patent”); 7,425,236 (“the ‘236
patent”); 7,758,980 (“the ‘980 patent”); 7,964,034 (“the ‘034 patent”); 8,142,914 (“the ‘914
patent”); and 8,500,904 (“the ‘904 patent”) (collectively the “patents-in-suit”). D.I. 1,
Complaint.
DISCUSSION
Claim construction determinations in an R&R are reviewed de novo. See St. Clair
Intellectual Prop. Consultants, Inc. v. Matsushita Elec. Indus. Co., 691 F. Supp. 2d 538,
542 (D. Del. 2010); 28 U.S.C. § 636(b)(1); Fed. R. Civ. P. 72(b)(3).
NGC objects to three claim constructions determined by the magistrate judge:
“Objection 1: The “Enhancing Material” Construction Contradicts And Is Not Supported
By The Specification; Objection 2: The R&R’s Construction Of “About 0.1 Inch” Improperly

2

Ignores The Intrinsic Evidence In Favor Of Extrinsic Evidence; and Objection 3: The
R&R’s Conclusion That ‘When…Cast In The Form Of ½ Inch Gypsum Board’ Is Not
Indefinite Is Erroneous.” D.I. 115 at 1, 5, 7.
The magistrate judge conducted a three-hour Markman hearing and filed her R&R.
D.I. 114; Minute entry July 18, 2018. Markman v. Westview Instruments, Inc., 517 U.S.
370, 388-90 (1996).

With regard to the defendant’s first objection, the magistrate

determined that “enhancing materials” was construed to mean: “phosphoric acids, each
of which comprises 1 or more phosphoric acid units; salts or ions of condensed
phosphates, each of which comprises 2 or more phosphate units; and monobasic salts
or monovalent ions of orthophosphates.” D.I. 114 at 10. She based this determination
on the weight of the intrinsic evidence, the language and specifications of the patents-insuit, and the applicable law. NGC objects to the findings, contending the magistrate
incorrectly included phosphoric acid which should be excluded from the list of possible
enhancing materials. USGC disagrees and contends that the magistrate judge correctly
found that Table 13 (D.I. 7, Ex. C) demonstrates that phosphoric acid in a gypsum slurry
significantly improves compressive strength.

The Court has carefully reviewed the

findings of the magistrate judge de novo and finds them to be correct as a matter of fact
and law. Accordingly, the Court will adopt the findings and recommendations of the
magistrate judge as to this term construction.
With regard to the second objection, claim construction concerning “about .1 inch,”
NGC argues that the variation between this construction instead of .11 “injects an
extraordinary degree of variation (+/- 25%) into a critical limitation.” D.I. 115 at 5. The
magistrate judge construed the claim term to include the ASTM sag resistance values of

3

less than 0.125 inch. The Court finds the magistrate’s use of “about” “avoids a strict
numerical boundary for the specified parameter,” and its meaning “depends on the
technological facts of the particular case.” Pall Corp. v. Micron Separations, Inc., 66 F.3d
1211, 1217 (Fed. Cir. 1995). The Court further finds the magistrate judge properly
reviewed the patent specifications, the intrinsic evidence, and the extrinsic evidence
where relevant and agrees with the magistrate judge’s claim construction.
As for the third objection, NGC argues that the magistrate judge credited USCG’s
expert and gave no weight to the expert of NGC. USCG argues that the magistrate judge
correctly discredited certain parts of NGC’s expert regarding board thickness.

The

magistrate judge determined that the claim did not require construction and is not
indefinite. She further determined “that a person of ordinary skill in the art would be able
to evaluate whether an accused slurry, product, or method infringes a formulation used
for 5/s inch boards.” D.I. 114 at 21. The Court has carefully reviewed the findings of the
magistrate judge de novo and finds them to be correct as a matter of fact and law.
Accordingly, the Court will adopt the findings and recommendations of the magistrate
judge as to this term construction.
THEREFORE, IT IS ORDERED THAT:
1. The report and recommendation, Filing No. 114, is affirmed;
2. The objections filed by defendant New NGC, Inc., Filing No. 115, are overruled.
Dated this 17th day of October, 2018.
BY THE COURT:

s/ Joseph F. Bataillon
Senior United States District Judge
4