Geocel LLC v. Chem Link Inc
Filing
30
OPINION AND ORDER: GRANTING 8 Defendants Motion for Judgment on the Pleadings; DENYING 11 Plaintiffs Motion for Partial Summary Judgment. The Court DISMISSES Count I of the Plaintiffs Amended Complaint 4 . This matter remains pending as to all p arties and as to Counts IIV in the Plaintiffs AmendedComplaint 4 and the Defendants Counterclaim 5 . The Court SETS thismatter for a telephonic status conference on September 29, 2011, at 11:30 AM. The Court willinitiate the call. Signed by Judge Theresa L Springmann on 8/25/11. (jld)
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF INDIANA
GEOCEL, LLC,
Plaintiff,
v.
CHEM LINK INC.,
Defendant.
)
)
)
)
)
)
)
)
)
CAUSE NO.: 3:10-CV-474-TLS
OPINION AND ORDER
This case involves United States Reissued Patent Number RE 41,586 (“the ‘586 Patent”),
issued on August 24, 2010, and entitled “Pitch Pocket and Sealant.” This matter is before the
Court on cross motions for summary judgment on the first count of the Plaintiff’s Complaint,
contesting whether the ‘586 Patent claims 21–25 violate the rule against recapture. For the
reasons stated below, the Court will grant Defendant’s Motion and deny the Plaintiff’s Motion
because the ‘586 Patent claims 21–25 do not violate the rule against recapture.
BACKGROUND
A.
Procedural Background
On November 9, 2010, the Plaintiff filed a Complaint [ECF No. 1]. On December 22,
2010, the Plaintiff filed an Amended Complaint [ECF No. 4] seeking declaratory judgment that
the ‘586 Patent claims 21–25 violate the rule against recapture, that claims 21–25 are invalid
under 35 U.S.C. §§ 102 or 103, that the reissue patent is unenforceable due to inequitable
conduct, that the Plaintiff has not infringed on claims 10, 11, and 13–20, and that it is entitled to
absolute and equitable intervening rights under 35 U.S.C. § 252. On December 30, 2010, the
Defendant filed an Answer to First Amended Complaint for Declaratory Judgment, Affirmative
Defenses, Counterclaim, and Jury Demand [ECF No. 5]. The counterclaim is for patent
infringement.
This matter is before the Court on the Defendant’s Motion for Partial Judgment on the
Pleadings as to Count I (Recapture Rule) [ECF No. 8], along with a brief in support [ECF No.
10], filed on December 30, 2010, and the Plaintiff’s Motion for Partial Summary Judgment of
Invalidity of Reissue Claims 21–25 under the Recapture Rule [ECF No. 11] filed on January 7,
2011, along with a brief in support [ECF Nos. 12 and 18], Statement of Undisputed Facts [ECF
No. 13], and an Appendix [ECF No. 14]. On January 13, the Plaintiff filed its Opposition to
Defendant’s Motion for Partial Judgment on the Pleadings [ECF No. 17] along with an Appendix
[ECF No. 19]. On January 20, the Plaintiff filed an Answer [ECF No. 21] to the Defendant’s
counterclaim. On January 20, the Defendant filed a Reply [ECF No. 22] in support of its Motion
for Partial Judgment on the Pleadings. On February 7, the Defendant filed its Opposition to the
Plaintiff’s Motion for Partial Summary Judgment of Invalidity [ECF No. 23] and Statement of
Genuine Disputes [ECF No. 24]. On February 22, the Plaintiff filed a Reply in Support of its
Motion for Partial Summary Judgment [ECF No. 26]. These motions are fully briefed and ripe
for ruling.
B.
Factual Background
2
1.
The ‘924 Patent Application
On December 12, 2000, the Defendant1 filed patent application number 09/735,265 with
the United States Patent and Trademark Office (PTO). The application included 20 claims: a set
of composition claims (1–12) and a set of method claims (13–20). On February 28, 2002, the
examiner issued the first office action with a non-final rejection to claims 1–5 and 8–20 and
objecting to claims 6 and 7. The examiner based her rejection on her finding that the claims were
obvious under 35 U.S.C. § 103(a) in light of United States Patent Number 6,077,896 (Yano). The
office action stated:
Yano discloses a curable composition comprising a silyl-group containing an
oxyalkylene polymer of the type set forth in applicant’s claims, a diol containing
ether compound and a catalyst. Said compositions are useful for forming seals in
building construction. The diol containing compound and catalyst of Yano et al
overlap with the plasticizer of the present claims See col. 1, line 45 through col. 6,
line 40. Because the components of Yano et al are essentially the same as those of
applicant’s invention, they are expected to possess essentially the same properties.
Selection of preferred weight ratios of components to achieve an optimization of
properties would have been obvious to one of ordinary skill in the art at the time
of applicant’s invention.
(Answer Ex. 1 at 35, ECF No. 5-1.) The examiner also objected to claims 6 and 7 because they
were dependent on a rejected independent claim, but stated that the claim would be allowable as
an independent claim including all of the limitations of the base claim and any intervening
claims.
On May 28, 2002, the Defendant filed its first amendment with the PTO. In addition to
amending the specification and dependent claims 6 and 8, the Defendant also presented
argument as to why the claims were not obvious in light of the prior art, specifically Yano. The
1
The inventors, Phillip C. Georgeau and Lisa A. Mulder, filed the application and assigned their rights to
the Defendant, but for simplicity the Court will refer to the Defendant as the patent applicant.
3
amendment stated that “[i]t is submitted that the cited Yano et al. patent does not teach or
suggest a composition containing the required ‘hygroscopic plasticizer present in an amount that
is effective to promote rapid and deep curing.’” (Answer Ex. 1 at 39, ECF No. 5-1.) The
argument continued that “with respect to claims 13–20, it is respectfully submitted that the Yano
et al. patent, while disclosing sealants for building or construction, does not teach or suggest a
method of forming a seal around a roof penetration.” (Id. at 40.)
On August 14, 2002, the examiner issued a second office action, with a final rejection of
claims 1–20. The examiner repeated the basis for her rejection from the first office action and
stated that “Applicant’s arguments filed 5/28/02 have been fully considered but they are not
persuasive.” (Id. at 48.) The examiner’s rejection was based only on the Defendant’s
hygroscopic plasticizer argument and did not address its argument pertaining to the roof
penetration limitation in claims 13–20.
On November 13, 2002, the examiner conducted a telephonic interview with the
Defendant. According to the examiner’s summary the Defendant further explained the
hygroscopic plasticizer limitation and the roofing material limitation. After the interview the
examiner issued an office action on November 15, 2002, clarifying that the final rejection was
not as to all claims 1–20, correcting August 14 office action which improperly included claims 6
and 7 in its final rejection.
On January 14, 2003, the Defendant filed an amendment. The amendment contained
changes to the specification, a summary of the November 13 interview, and additional argument.
In the amendment the Defendant noted that the examiner interview summary states that “Yano
does not specifically mention roofing, materials. Applicants claims 1–12 are not specifically
4
drawn to roofing materials.” (Id. at 60 (citing id. at 51).) The amendment continued by noting
that “[w]hile it is not entirely clear, it appears that the Examiner is agreeing that claims 13–20,
drawn to a method of forming a seal around a roof penetration, are patentable over the applied
Yano et al. reference.” (Id.) After providing more detailed argument again on the hygroscopic
plasticizer limitation the Defendant argued that “the composition claims (1–12) are patentable
over the applied Yano et al. reference.” (Id. at 66.) The Defendant continued in the next
paragraph by addressing the method claims 13–20, arguing that they were patentable over Yano
due to the hygroscopic plasticizer limitation and the roof penetration limitation.
On February 5, 2003, the PTO issued a Notice of Allowability, allowing all claims. After
handling fees and corrections the PTO issued patent number 6,579,924 on June 17, 2003.
2.
The Application for the ‘586 Reissue Patent
On June 14, 2005, the Defendant filed Application Number 11/152,840 with the PTO
seeking a reissue of the ‘924 patent. In addition to the original twenty claims filed as part of the
application for the ‘924 patent, the Defendant added five new claims, one independent and four
dependent. Claim 21, the independent claim, read:
A method of forming a seal around a roof penetration, comprising:
dispensing a one-part moisture curable, pourable sealer composition into a pitch
pocket formed around the roof penetration, said one-part moisture curable
pourable sealer composition containing a silyl-terminated polymer.
(ECF No. 5-5 at 15.) The Defendant’s application explained that “[t]he newly added claims are
patterned after originally issued claims 13–18, respectively, but without the unduly restrictive
limitation for ‘a hygroscopic plasticizer present in an amount that is effective to promote rapid
5
and deep curing.’” (Id. at 16.)
On June 26, 2008, the PTO mailed a non-final rejection, in which the examiner noted
that: “Claims 1–5 are rejected under 35 U.S.C. 102(b) as being anticipated by Yukimoto et al.,
U.S. Patent # 5,063,270” and that “Claims 6–25 are allowable.”2 (ECF No. 5-4 at 41.) The
Examiner noted that he “did not unearth any evidence that it had been previously contemplated
that a silane-terminated polymer could be employed as the sealant in the pitch pocket around a
roof penetration.” (Id.) On August 24, 2010, the PTO issued the ‘586 patent.
SUMMARY JUDGMENT STANDARD
As an initial matter, the Court must determine the standard in this case. The parties
present their motions under two different standards. The Defendant’s Motion is presented
pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. The Plaintiff’s Motion is
presented pursuant to Rule 56. The parties present the same issues in their briefs: whether the
patent prosecution history of the ‘586 patent improperly claims material surrendered in the
prosecution of the ‘924 patent and therefore violates the rule against recapture. Given that the
Defendant had the opportunity to fully respond to the Plaintiff’s Motion for Partial Summary
Judgment the Court will rule on both motions under the summary judgment standard instead of
under a Rule 12 dismissal standard.
2
On March 31, 2009, the examiner sent a non-final rejection in which he also rejected claims 6–9 and 12
and objected to claims 10 and 11. The examiner rejected claims 6–9 and 12 pursuant to 35 U.S.C. § 102(b) as
anticipated by Klauck et al., WO 99/48942. The examiner objected to Claims 10 and 11 because they were
dependent on a rejected claim. On July 30, 2009, the Defendant cancelled claims 1–9 and 12 and amended claim 10,
on which claim 11 depended. None of these claims are material to resolving the issue before the Court on the partial
summary judgment motions currently pending. Thus, the Court does not review the prosecution of claims 1–12 in
depth.
6
The Federal Rules of Civil Procedure state that a “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 motion should be granted so
long as no rational fact finder could return a verdict in favor of the party opposing the motion.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A court’s role is not to evaluate the
weight of the evidence, to judge the credibility of witnesses, or to determine the truth of the
matter, but instead to determine whether there is a genuine issue of triable fact. Anderson, 477
U.S. at 249–50; Doe v. R.R. Donnelley & Sons Co., 42 F.3d 439, 443 (7th Cir. 1994). The party
seeking summary judgment bears the initial burden of proving there is no genuine issue of
material fact and that it is entitled to judgment as a matter of law. Celotex Corp. v. Catrett, 477
U.S. 317, 323 (1986).
DISCUSSION
The parties do not dispute any material facts relevant to the motions currently before the
Court. Pursuant to Local Rule 56.1 the Plaintiff filed a Statement of Undisputed Facts Regarding
Its Motion for Partial Summary Judgment [ECF No. 13] and the Defendant filed a Statement of
Genuine Disputes Regarding Geocel, LLC’s Motion for Partial Summary Judgment [ECF No.
24]. Upon review, the parties utilize these filings to further their legal arguments, but do not
present any actual factual disputes. The Defendant’s Statement even notes that “[i]n general
terms, the facts relevant to Geocel’s Motion for Partial Summary Judgment are found solely in
the prosecution history of United States Patent 6,579,924 (the ‘Original Patent’), a collection of
7
written documents forming the official record of the PTO’s allowance of the Original Patent.”
(ECF No. 24 at 1.) The Defendant’s Statement also makes note of the “undisputed record.” (Id.
at 2) (emphasis added.) Because the parties do not dispute any facts the Court must only
determine if judgment is appropriate as a matter of law.
Title 35 of the United States Code, Section 251 provides in part that:
Whenever any patent is, through error without any deceptive intention, deemed
wholly or partly inoperative or invalid . . . by reason of the patentee claiming
more or less than he had a right to claim in the patent, the Director shall, on the
surrender of such patent and the payment of the fee required by law, reissue the
patent for the invention disclosed in the original patent, and in accordance with a
new and amended application, for the unexpired part of the term of the original
patent. No new matter shall be introduced into the application for reissue.
The rule against recapture “prevents a patentee from regaining through reissue subject matter
that he surrendered in an effort to obtain allowance of the original claims.” MBO Labs., Inc. v.
Becton, Dickinson & Co., 602 F.3d 1306, 1313 (Fed. Cir. 2010) (quoting Hester Indus., Inc. v.
Stein, Inc., 142 F.3d 1472, 1480 (Fed. Cir. 1998)). The “reissue statute has limits[, it] was not
enacted as a panacea for all patent prosecution problems, nor as a grant to the patentee of a
second opportunity to prosecute de novo his original application.” Id. (quoting In re Weiler, 790
F.2d 1576, 1582 (Fed. Cir. 1986)). Courts apply the rule against recapture by applying a three
step test. Id. at 1314 (citing N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335,
1349 (Fed. Cir. 2005); Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 1371 (Fed. Cir. 2001)).
First, “the court construes the reissued claims to determine whether and in what aspect the
reissue claims are broader than the original patent claims.” Id. (quoting In re Clement, 131 F.3d
1464, 1468 (Fed. Cir. 1997)). Second, “if the reissue claims are broader, the court determines
8
whether the patentee surrendered subject matter and whether the broader aspects of the reissued
claim relate to the surrendered subject matter.” Id. (quoting In re Clement, 131 F.3d 1464,
1468–69 (Fed. Cir. 1997)). Third, a court must determine whether the reissued claims were
materially narrowed in other respects to avoid the recapture rule.” Id. (quoting Pannu, 258 F.3d
at 1371).
An issued patent carries with it a presumption of validity. 35 U.S.C. § 282. “The
presumption of validity under § 282 is a procedural device, placing the burden of proving
invalidity on the party asserting it.” Fromson v. Advance Offset Plate, Inc., 755 F.2d 1549, 1555
(Fed. Cir. 1985). The determinations the examiner makes on a reissue application are not binding
on this Court, however, the Court must consider those determinations as one factor “in
determining whether the party asserting invalidity has met its statutory burden by clear and
convincing evidence.” Id.3
The parties only dispute the analysis under the second step—whether the broader aspects
of the reissue claim relate to subject matter the Defendant surrendered while prosecuting the
‘924 patent. “To determine whether a patentee surrendered subject matter, [courts] ask whether
an objective observer viewing the prosecution history would conclude that the purpose of the
patentee’s amendment or argument was to overcome prior art and secure the patent.” Id. (quoting
Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1323 (Fed. Cir. 2006)). “If the patentee surrendered
3
The parties dispute whether Fromson as cited by Interconnect Planning Corp. v. Feil, 774 F.2d 1132,
1139 (Fed. Cir. 1985), creates a heavier burden of proving invalidity. The burden on the Plaintiff of showing
invalidity in this case is not heavier, except to the extent that it must overcome the examiner’s determination as one
factor among many the Court will consider in its validity determination. This does not alter the burden the Plaintiff
faces, it simply provides one additional hurdle it must clear before satisfying its burden.
9
by argument, he must clearly and unmistakably argue that his invention does not cover certain
subject matter to overcome an examiner’s rejection based on prior art.” Id. (citing Medtronic,
Inc. v. Guidant Corp., 465 F.3d 1360, 1376 (Fed. Cir. 2006); Hester, 142 F.3d at 1482). The
main dispute that the parties address in their briefs is whether during prosecution the Defendant
clearly and unmistakably argued its invention required the hygroscopic plasticizer limitation to
overcome the Yano et al. reference, such that any attempt to reclaim subject matter by not
including this limitation would violate the recapture rule.
Subject matter cannot be clearly and unmistakably surrendered when there are alternative
basis provided to overcome prior art. Thus, when an applicant distinguishes prior art on two
alternative grounds, he does not surrender subject matter on both of the alternative grounds for
the purposes of the recapture rule. Guidant Corp. v. St. Jude Med., Inc., 409 F. Supp. 2d 543, 544
(D. Del. 2006). The Defendant argues that it provided two separate and distinct limitations that
distinguished claims 13–20 over the Yano et al. reference. First, the hygroscopic plasticizer
limitation, and second, the roof penetration limitation. The Plaintiff argues that a significant
amount of the prosecution history of the ‘924 patent relates to the hygroscopic plasticizer
limitation and that this heavy reliance on the hygroscopic plasticizer is enough to constitute a
clear and unmistakable surrender of any claimed subject matter that does not include this
limitation. Although the Plaintiff provides a thorough recitation of the discussion of the
hygroscopic plasticizer limitation in the prosecution history, it does not cite a single instance in
which the Defendant fails to mention in any filing with the PTO that claims 13–20 are also
distinguishable based on the roof penetration limitation. MBO Laboratories provides that a
10
“patentee’s arguments that emphasize one feature cannot cure arguments that clearly surrender
another.” MBO Labs., 602 F.3d at 1316. This holding in MBO Laboratories is consistent with
the alternative grounds rule in Guidant Corp. In MBO Laboratories, the applicant had at one
point during prosecution relied solely on referencing a retractable needle to overcome prior art,
only later attempting to also distinguish its claims based on a safety flange accompanying its
needle. In this case, the Defendant did not emphasize the hygroscopic plasticizer limitation as to
claims 13–20. When discussing claims 13–20 the Defendant relied on the roof penetration
limitation. (See, e.g., Answer Ex. 1 at 40, ECF No. 5-1 (arguing that “with respect to claims
13–20, it is respectfully submitted that the Yano et al. patent, while disclosing sealants for
building or construction, does not teach or suggest a method of forming a seal around a roof
penetration”.) The Defendant is not attempting to cure a clear surrender of subject matter without
the hygroscopic plasticizer limitation by emphasizing the roof penetration limitation. As to
claims 13–20, the Defendant clearly surrendered subject matter that did not contain the roof
penetration limitation, but it did not surrender subject matter containing this limitation without
the hygroscopic plasticizer limitation.
The Plaintiff makes two additional arguments that the Defendant surrendered any
claimed subject matter not including the hygroscopic plasticizer limitation. First, that the
Defendant’s failure to object to the examiner’s failure to mention the roof penetration limitation
in every office action constitutes a clear and unmistakable surrender, and second, that method
claims 13–20 are indistinguishable from composition claims 1–5 and 8–12 because claims 13–20
call for a composition that requires a hygroscopic plasticizer.
11
The Plaintiff argues that the examiner continually focused on the hygroscopic plasticizer
limitation in all of the office action rejections, and the examiner’s focus indicates a clear and
unmistakable key issue—the hygroscopic plasticizer limitation—on which the Defendant
distinguished its claims over Yano et al. The Defendant responds that the surrender by argument
standard is too high for it to have surrendered claimed subject matter solely on the basis that it
failed to respond to every examiner’s statement during prosecution, including the examiner’s
focus on the hygroscopic plasticizer limitation. The Plaintiff replies by factually distinguishing
the Board of Patent Appeals and Interferences’s holding in Ex Parte Yamaguchi, 61 U.S.P.Q. 2d
1043, 1046–47 (B.P.A.I. July 31, 2001), on which the Defendant relies. In Ex Parte Yamaguchi,
the Board ruled that the applicant’s failure to respond to the examiner’s comments during
prosecution history could not constitute surrender in the context of the rule against recapture. Id.
The Plaintiff highlights that Ex Parte Yamaguchi focuses on the examiner’s reasons for
allowance, which the examiner did not provide in this case. However, Ex Parte Yamaguchi still
provides helpful guidance for the more general proposition that the clear and unmistakable
surrender by argument requires affirmative statements by an applicant and failure to respond to
the examiner’s focus on only one of two limitations is not enough to constitute surrender.
The Defendant highlights that during prosecution of the ‘924 patent it presented two
separate sets of claims, composition claims and method claims. It highlights this distinction
because of its assertion that during prosecution it always distinguished the method claims based
upon the additional limitation that the sealant was used in a method of forming a seal around a
roof penetration. The Plaintiff responds that this distinction places form over substance because
12
all of the method claims called for a composition requiring a hygroscopic plasticizer. The Court
finds that the distinction is meaningful because claims 21-25 granted as part of the ‘586 Patent
are method claims and the independent claim 21 includes the limitation of “forming a seal
around a roof penetration.” This roof penetration limitation was consistently asserted as
distinguishable over the prior art when the Defendant was prosecuting its original method claims
13–20. Thus, the method claims with the roof penetration limitation are meaningfully different
because of their inclusion of this additional limitation, even if the claims also call for a particular
composition.
The Defendant is entitled to judgment as a matter of law on the first count of the
Plaintiff’s Amended Complaint—alleging that the new reissue claims 21–25 violate the rule
against recapture—because it did not surrender claimed subject matter containing the roof
penetration limitation but lacking the hygroscopic plasticizer limitation. The Defendant
consistently argued while prosecuting the original ‘924 Patent that its method claims were
distinguishable over the prior art on the basis of the roof penetration limitation. Even though a
greater percentage of the prosecution history discussed the hygroscopic plasticizer limitation, the
Defendant did not surrender clearly and unmistakably by argument claimed subject matter
containing only the roof penetration limitations. Because claims 21–25 in the ‘586 Reissue
Patent are based on the method claims in the original patent that did not surrender the claimed
subject matter containing only the roof penetration limitation, but omitting the hygroscopic
plasticizer limitation , claims 21–25 contained appropriate subject matter for reissue under 35
U.S.C. § 251.
13
CONCLUSION
The Court, being duly advised, GRANTS the Defendant’s Motion for Judgment on the
Pleadings [ECF No. 8] and DENIES the Plaintiff’s Motion for Partial Summary Judgment [ECF
No. 11]. The Court DISMISSES Count I of the Plaintiff’s Amended Complaint [ECF No. 4].
This matter remains pending as to all parties and as to Counts II–V in the Plaintiff’s Amended
Complaint [ECF No. 4] and the Defendant’s Counterclaim [ECF No. 5]. The Court SETS this
matter for a telephonic status conference on September 29, 2011, at 11:30 AM. The Court will
initiate the call.
SO ORDERED on August 25, 2011.
/s Theresa L. Springmann
THERESA L. SPRINGMANN
UNITED STATES DISTRICT COURT
FORT WAYNE DIVISION
14
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?