BERRY PLASTICS CORPORATION v. INTERTAPE POLYMER CORPORATION
Filing
478
ORDER granting 385 Motion for Judgment as a Matter of Law that U.S. Patent No. 7,476,416 is Invalid as Obvious. Signed by Judge Richard L. Young on 9/30/2015. (TMD)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
EVANSVILLE DIVISION
BERRY PLASTICS CORPORATION,
)
)
)
)
)
)
)
)
)
)
Plaintiff,
vs.
INTERTAPE POLYMER
CORPORATION,
Defendant.
3:10-cv-00076-RLY-WGH
ENTRY ON BERRY PLASTICS CORPORATION’S RENEWED MOTION FOR
JUDGMENT AS A MATTER OF LAW THAT U.S. PATENT NO. 7,476,416 IS
INVALID AS OBVIOUS
The court held a jury trial in this patent infringement lawsuit between Berry
Plastics Corporation and Intertape Polymer Corporation from November 3, 2014, to
November 17, 2014. The jury found, inter alia, that Intertape’s United States Patent No.
7,476,416 was not obvious. (See generally Verdict Form, Filing No. 378). On
December 15, 2014, Berry renewed its motion for judgment as a matter of law under
Federal Rule of Civil Procedure 50(b) that the ‘416 patent is invalid as obvious. The
parties orally argued their case on August 26, 2015. For the reasons set forth below, the
court GRANTS Berry’s motion.
I.
Background
Intertape is the owner by assignment of the ‘416 patent issued on January 13,
2009. (ITX-66, ‘416 patent). The asserted >416 patent describes and claims a
continuous process for preparing adhesive tape from raw materials, including non1
thermoplastic elastomers (i.e., natural rubber) and tackifying resins, using a planetary
roller extruder (“PRE”) that includes planetary mixing spindles with back-cut helical
flights. The named inventors are John K. Tynan, Jr., Richard W. St. Coeur, David M.
Kovach, and Thomas Lombardo. (‘416 patent; Filing No. 391, Tynan Tr. at 36). At the
time the patent was issued, the inventors were employees of Intertape. (Id.).
Intertape first became acquainted with a PRE when it obtained a copy of a
German patent owned by one of Intertape’s competitors, Beiersdorf 1 AG. (Id. at 38, 42).
In April 2002, Kovach and a colleague prepared an English translation of the patent.
(Kovach Tr. at 42-43; St. Coeur Tr. at 7-8). At that time, Intertape compounded natural
rubber through a Banbury or batch process, which compounds natural rubber one batch
at a time. (Tynan Tr. at 20 (describing the batch process as “kind of like making a
cake”)). Intertape decided to explore a new method of compounding natural rubber
using a continuous, as opposed to a batch, process. (Id. at 30). Intertape considered a
twin screw extruder, but later abandoned that idea because a twin screw extruder
produced too much heat, and degraded the rubber. (Id. at 30-35; see also id. at 31
(describing a twin-screw extruder as having two connected barrels with two co-rotating
screws)).
On January 14, 2003, the Beiersdorf patent issued in the United States as United
States Patent No. 6,506,447 (“‘447 patent”). (ITX-7, ‘447 patent). It generally claims a
1
Its subsidiary, Tesa SE, is a leading manufacturer of adhesive tape and is known as the “3M of
Europe.” (Tynan Tr. at 46).
2
continuous (as opposed to a batch) process for producing a pressure-sensitive adhesive
from non-thermoplastic elastomers in a PRE.
Through research, Intertape discovered that Battenfeld Extrusionstechnik GmbH,
a German multi-national manufacturer of mixing equipment, designed and manufactured
PREs. (Tynan Tr. at 39). Intertape contacted Battenfeld representatives and learned that
a PRE had “ten times the thermal-exchange capability of a twin-screw extruder . . . , so
[Intertape] was intrigued.” (Id. at 43). Therefore, in April 2003, Tynan, St. Coeur, and
Kovach traveled to Germany to fully explore the advantages of a PRE for compounding
natural-rubber-based adhesives without the use of solvent. (Id. at 41, 62; Kovach Tr. at
14). One of Intertape’s goals of the trials was to invalidate the ‘447 patent because
Intertape saw it as an “obstacle.” (Tynan Tr. at 56; St. Coeur Tr. at 59).
During the trials of Battenfeld’s PRE, Intertape used Battenfeld’s test setup,
which included standard spindles. (St. Coeur Tr. 13, 55; Kovach Tr. at 55; Tynan Tr. at
64, 198). Kovach testified they went there “for a free trial they were gracious enough to
offer us, and so we were going to let them demonstrate their equipment for us.”
(Kovach Tr. at 56). Intertape discovered that it “could take natural rubber, tackifying
resin, extender, masticate 2 the rubber in the PRE, produce an adhesive, and it had an
exceptional balance of adhesion and cohesive strength.” (Tynan Tr. at 65).
Representatives of Battenfeld introduced Intertape to different types of spindles
for use in a PRE. (St. Coeur Tr. at 56-57; see also ITX-5, St. Coeur’s European Trip
2
To masticate rubber means to break down the molecular weight of the material. See, e.g., ‘447
patent, col. 7, ll: 33-34.
3
Report). Intertape learned from Battenfeld that “you can achieve different mixing
effects when you go from a spindle, full-flight spindle without notches, to a spindle with
notches.” (Tynan Tr. at 43-44). Tynan explained that “when you put notches in them,
you get some back-slip of the material; you get some flow-back of the material. And the
material that flows back stays in the compounding zone longer than the material that
gets moved forward” resulting in “more mastication.” (Id. at 44). These notched
spindles were known as “back-cut” spindles. (Tynan Tr. at 43-44; St. Coeur Tr. at 57
(“[T]hey said you can cut notches into the spindle for different mixing dynamics.”)).
Intertape identified Entex Rust & Mitschke GmbH as a manufacturer of PREs
from reading the ‘447 patent. (Kovach Tr. at 21). In June 2003, St. Coeur, Kovach, and
Lombardo attended a National Plastics Expo in Chicago, Illinois, and met Entex sales
representative Michael Batton. (Id. at 21, 23). Kovach determined that Entex was a
suitable alternative supplier of PRE technology to Battenfeld, and that Entex could
handle equipment trials with solvents at its lab. (Id. at 25). The ability to use solvents
was important to Intertape because Intertape used solvents in several of its
manufacturing plants. (Id. at 31).
In November 2003, Intertape conducted trials at Entex’s facility in Bochum,
Germany. (Tynan Tr. at 69; St. Coeur Tr. at 26; Kovach Tr. at 28). In preparation for
the trials, Intertape and Entex discussed the features of the Entex PRE and the type of
spindles that Entex could make available to Intertape for testing. (Kovach Tr. at 36-38).
In addition, on August 29, 2003, Entex sent Intertape a series of emails describing the
4
features of its PRE and photographs of its Noppenspindel. (Kovach Tr. at 38; PTX-24;
PTX-140).
On November 24, 2003, Intertape filed a provisional application with the PTO
that included a photograph of a Noppenspindel. (ITX-2; Tynan Tr. at 74; Levy Tr. at 5,
50). One year later, Intertape filed non-provisional application no. 10/997,827 entitled
“Process for preparing adhesive using planetary extruder.” (ITX-1; Tynan Tr. at 163).
The ‘827 patent application claimed priority to the provisional application.
In 2008, during the prosecution of the ‘827 patent application (which later
became the ‘416 patent), the patent examiner rejected claims 1-33 as obvious over the
Beiersdorf patents 3 (Beiersdorf, U.S. Patent No. 6,506,447 and Burmeister, U.S. Patent
No. 6,780,271), taken in view of Hawrylko (U.S. Patent No. 5,536,462). (ITX-1 at 46162; Levy Tr. at 100-103). Intertape responded by arguing that the Beiersdorf patents
“teach away” from mastication, whereas Intertape’s process purposefully sought to
increase mastication using back-cut spindles. (ITX-1 at 488-90; Levy Tr. at 21-22).
Intertape also argued that Hawrylko disclosed the use of back-cut mixing elements in a
twin screw extruder, but did not teach the production of a pressure-sensitive adhesive in
a PRE from a non-thermoplastic elastomer. (ITX-1 at 488; Levy Tr. at 22-23). The
examiner agreed that Intertape’s claimed process was not obvious, and allowed the
claims of the ‘416 patent to issue. (ITX-1 at 497).
3
The two Beiersdorf patents have essentially the same disclosure, as they are from the same
company. (Levy Tr. at 15).
5
On May 13, 2010, Berry filed the present declaratory judgment action against
Intertape on grounds that the ‘416 patent is invalid because, inter alia, it is obvious
under 35 U.S.C. § 103.
II.
Standard of Review
If a motion for judgment as a matter of law under Federal Rule of Civil Procedure
50(a) at the close of all the evidence is not granted, the movant may renew the motion.
Fed. R. Civ. P. 50(b). The court applies the law of the regional circuit, in this case, the
Seventh Circuit. ABT Sys., LLC v. Emerson Elec. Co., No. 2014-1618, -- Fed. Cir. -- ,
2015 WL 4924160, at *3 (Fed. Cir. Aug. 19, 2015) (citing Finisar Corp. v. DirecTV
Grp., Inc., 523 F.3d 1323, 1328 (Fed. Cir. 2008)). Under Seventh Circuit law, a district
court may enter judgment against a party who has been fully heard on an issue during a
jury trial if “‘a reasonable jury would not have a legally sufficient evidentiary basis to
find for the party on that issue.’” Passananti v. Cook Cnty., 689 F.3d 655, 659 (7th Cir.
2012) (quoting Fed. R. Civ. P. 50(a) (motion for judgment as a matter of law), (b)
renewed motion for judgment as a matter of law)). In resolving a Rule 50(b) motion, the
court construes the evidence strictly in favor of the party who prevailed before the jury
and examines the evidence to determine whether the jury’s verdict could reasonably be
based on the evidence. Id. “‘Credibility determinations, the weighing of the evidence,
and the drawing of legitimate inferences from the facts are jury functions, not those of a
judge.’” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000) (quoting
Anderson v. Libery Lobby, 477 U.S. 242, 255 (1986)). “Thus, although the court should
6
review the record as a whole, it must disregard all evidence favorable to the moving
party that the jury [was] not required to believe.” Id. at 150-51.
III.
Waiver
On November 14, 2014, Berry orally moved for judgment as a matter of law
under Federal Rule of Civil Procedure 50(a) on its defense of obviousness based on the
‘447 patent (also known as the “Beiersdorf” or “Hirsch” patent) in combination with the
back-cut spindle claimed in the ‘416 patent. (See Filing No. 407, 11/14/2014 Rule 50
Tr. at 6-7). Berry did not specifically identify any other prior art or describe any other
combinations of prior art references. (See id.). In its post-verdict Rule 50(b) motion,
Berry raises a number of prior art references or combinations of references, including:
(1) Japanese Patent Application 11-216764 (“Sekisui”) (PTX-264); (2) “Rubber – the
tailor-made material, Compounding of Elastomer Masses in a Planetary Roller Extruder”
(“DIK Paper”) (PTX-37); (3) German Patent No. DE 43 08 098 (“Entex ‘098 patent”)
(PTX-291); (4) United States Patent No. 5,539,033 (“3M patent”) (PTX-266); (5)
Emails sent from Entex to Intertape on August 29, 2003 (PTX-24 and PTX, 140); (6) the
book, Understanding Extrusion, by Dr. Rauwendaal (PTX-305); (7) United States Patent
No. 4,192,617 to Spielhoff (“’617 patent”) (PTX-313); and (8) DE 1954214 (ITX-I/269354 (“Pyton AG patent”). Intertape argues that by failing to identify these prior art
references in its Rule 50(a) motion, Berry forfeited any arguments made in reliance on
those references for purposes of its Rule 50(b) motion.
Rule 50(a)(2) requires that a motion for judgment as a matter of law “specify the
judgment sought and the law and the facts on which the moving party is entitled to
7
judgment.” Because a Rule 50(a) motion made at the close of the evidence must be
brought before the court may consider a renewed motion under Rule 50(b), issues not
adequately raised in a Rule 50(a) motion may not be included in a Rule 50(b) motion.
Laborers’ Pension Fund v. A & C Envtl., Inc., 301 F.3d 768, 775-76 (7th Cir. 2002); see
also Fed. R. Civ. P. 50(a)(2) committee note (1996 amend.) (“Because the Rule 50(b)
motion is only a renewal of the pre-verdict motion, it can be granted only on grounds
advanced in the pre-verdict motion.”); i4i Ltd. P’Ship v. Microsoft Corp., 598 F.3d 831,
845 (Fed. Cir. 2010), aff’d, 131 S.Ct. 2238 (2011) (“[A] party must file a pre-verdict
JMOL motion on all theories, and with respect to all prior art references, that it wishes to
challenge with a post-verdict JMOL.”); Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d
1098, 1107 (Fed. Cir. 2003) (finding “Duro-Last’s Rule 50(a) motion on inequitable
conduct was not sufficient to alert Custom Seal to all the alleged deficiencies in its
obviousness defense”). The purpose of the rule is to afford the opposing party an
opportunity to cure any defect in its case before the jury deliberates. Petit v. City of
Chicago, 239 F.Supp.2d 761, 777 (N.D. Ill. 2002) (citing Laborers’ Pension Fund, 301
F.3d at 777). Strict application of the rule is not required, however, where “previously
presented arguments (in an earlier Rule 50(a) motion, in trial briefs, in motions in
limine, on summary judgment, or otherwise) have made the moving party’s position
clear for the court and opposing party.” Id. (citing Laborers’ Pension Fund, 301 F.3d at
777-78); Urso v. United States, 72 F.3d 59, 61 (7th Cir. 1995)).
Unlike the parties in i4i and Duro-Last, Berry orally moved for judgment as a
matter of law under Rule 50(a) on obviousness. Berry’s expert, Dr. Eldridge Mount III,
8
testified at length on November 12 and 13, 2014, regarding his opinions on anticipation
and obviousness, matching prior art to the asserted claims. Berry’s argument on its Rule
50(a) motion presented on November 14, 2014, incorporated the prior art references and
contentions presented by Dr. Mount:
Regarding the dispute or the argument that this is a process patent, as we
went through in some detail, the process steps are clearly taught in a number
of references. . . .
We have now confirmed – it’s not in dispute – that all of the spindles were
actually prior art in PREs for compounding elastomers, which renders these
claims invalid for obvious [sic] and anticipated [sic], as Dr. Mount went
through.
There’s no evidence rebutting Dr. Mount’s testimony that they’re all used
in their ordinary course, intended use, no unexpected results.
(See 11/14/2014 Rule 50 Tr. at 6-7) (emphasis added).
Ironically, Intertape’s own Rule 50(a) motion on obviousness, made the day
before Berry’s, also relied on the testimony of Dr. Mount. Intertape argued that Berry’s
only evidence of a motivation to combine prior art references came from Dr. Mount,
“and that cannot rise to the level of clear and convincing evidence.” (Filing No. 409,
11/13/2014 Rule 50 Tr. at 13). Dr. Mount’s opinion on obviousness was based on the
same prior art as his opinion on anticipation. (Id. at 11 (specifically discussing prior art
relied upon by Dr. Mount for purposes of anticipation as the ‘447 patent, the Sekisui
patent, PTX-37, and PTX-140); see also Mount Tr. at 170 (testifying that the claims of
the ‘416 patent would either be anticipated and/or obvious based on the prior art)). The
basis of Berry’s Rule 50(a) motion was therefore no surprise to Intertape. Accordingly,
the court finds that Berry did not waive argument on the prior art identified by Dr.
9
Mount as supporting his opinion on obviousness. However, as the central issue of this
motion centers on the motivation to combine references, the primary reference relied
upon by Berry is the ‘447 patent. Thus, much of Intertape’s objection is moot.
IV.
Merits
A claimed invention is unpatentable “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 to which said subject matter pertains.” 35 U.S.C. § 103. Obviousness is a
conclusion of law based on the following factual determinations: (1) the scope and
content of the prior art, (2) the differences between the claims and the prior art, (3) the
level of skill in the art, and (4) where relevant, objective evidence of non-obviousness,
i.e., the secondary considerations. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)). Relevant
secondary considerations include commercial success, long-felt but unsolved needs,
failure of others, and unexpected results. Id.; In re Soni, 54 F.3d 746, 750 (Fed. Cir.
1995).
A party seeking to invalidate a patent on the basis of obviousness must
“demonstrate ‘by clear and convincing evidence that a skilled artisan would have been
motivated to combine the teachings of the prior art references to achieve the claimed
invention, and that the skilled artisan would have had a reasonable expectation of
success in doing so.’” Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989,
10
994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir.
2007)). “The Supreme Court has warned, however, that, while an analysis of
any teaching, suggestion, or motivation to combine known elements is useful to an
obviousness analysis, the overall obviousness inquiry must be expansive and flexible.”
In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Lit., 676 F.3d
1063, 1069 (Fed. Cir. 2012) (citing KSR, 550 U.S. at 419).
A.
The Prima Facie Case
Obviousness is “determined from the vantage point of a hypothetical person
having ordinary skill in the art to which the patent pertains.” In re Rouffet, 149 F.3d
1350, 1357 (Fed. Cir. 1998). Therefore, the court begins its analysis by defining that
person.
1.
Person of Ordinary Skill in the Art
The person of ordinary skill in the art is presumed to be aware of all the pertinent
prior art. Id. This hypothetical person “‘thinks along the lines of conventional wisdom
in the art and is not one who undertakes to innovate. . . .’” Endress + Hauser, Inc. v.
Hawk Measurement Sys. Pty. Ltd., 892 F. Supp. 1107, 1120 (S.D. Ind. 1995) (quoting
Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985)); see also
KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity .
. . .”); Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed.
Cir. 1986) (a person of ordinary skill is not a genius in the art) (internal quotation marks
and citation omitted). The actual inventor’s skill and experience is not determinative.
Custom Accessories, 807 F.2d at 962.
11
At trial, Berry’s expert, Dr. Mount, defined the person of ordinary skill as:
a chemist or a mechanical engineer or a chemical engineer, say, an
undergraduate chemist; engineer, mechanical or chemical; and who has
three to five years of experience in extrusion and extrusion compounding
technology. Or it could be a person with an advanced degree, a master’s
degree and a Ph.D. in a related science, could be physics or engineering or
something like that and also the three to five years of experience in extrusion
and extrusion compounding.
(Filing No. 399, Mount Tr. at 13). Intertape argues Berry waived argument on this issue
because: (1) it did not raise the issue in its Rule 50(a) motion and (2) Dr. Mount’s
opinion on the level of ordinary skill was conclusory. Intertape’s objection is a moot
point, as Intertape’s expert, Dr. Chris Rauwendaal, did not provide a contrary definition.
On this subject, he testified as follows:
Q:
Well, a person of ordinary skill in the art at this time is an engineer;
they’ve been trained with polymers; they understand polymers; they
understand extrusion technology and compounding applications,
right, sir?
A:
I would agree with that.
***
Q:
And they would have an engineering degree such as mechanical
engineering or chemical engineering, correct?
A:
That would be fine with me.
Q:
Okay. And they would have at least three to five years’ experience
in extrusion and extrusion compounding applications, correct?
A:
Yeah, that’s fine.
(Rauwendaal Tr. at 152-53). Accordingly, because the level of ordinary skill in the art
was not contested, the issue is properly before the court.
12
2.
Scope and Content of the Prior Art and the Differences
Between the Prior Art and the Claims at Issue
As alluded to above, the Beiersdorf ‘447 patent, issued on January 14, 2003, is
prior art to the ‘416 patent. Like the ‘416 patent, the ‘447 patent discloses a process for
the continuous production of self-adhesive formulations using non-thermoplastic
elastomers and other components in a PRE, homogenizing that adhesive, discharging it,
and coating it onto a web-form material. (See ‘447 patent, claim 1). Claim 1 claims that
this process is “mastication-free.” (Id.). With respect to planetary spindles, the ‘447
patent explains, “Of course, any roll cylinder can be equipped differently in terms of the
number and nature of the planetary spindles and so can be adapted to the particular
formulation and processing requirements.” (‘447 patent, col. 8, ll:13-16).
The Sekisui Japanese patent application, filed on August 10, 1999, is also prior
art. It discloses a method for the continuous production of a rubber-based adhesive on a
PRE with several compounding sections and multiple spindles, similar to the ‘416
patent. (PTX-264; see also Rauwendaal Tr. at 166 (“Q: And you would agree that this
teaches one of ordinary skill in the art that they can use non-thermoplastic elastomers,
feeding those with tackifying resins into a feeding section of a [PRE], conveying those
materials from the feeding section to the compounding section, mixing those materials in
the compounding section where oils or other secondary materials are added to the
formulation, correct? A: I believe that’s correct.”)).
Dr. Rauwendaal testified that each of the processing steps of independent claims
1 and 21 of the ‘416 patent are taught in the ‘447 patent and the Sekisui reference with
13
the exception of the claimed back-cut spindle. (Rauwendaal Tr. at 119, 139, 160-61; see
also Tynan Tr. at 222; St. Coeur Tr. at 66-67; Kovach Tr. at 46-48).
The “DIK Paper, 4” given by Michael Batton of Entex in Hannover, Germany, on
March 23, 2003, is also prior art to the ‘416 patent. (PTX-37). It discloses that a PRE
can be used to compound rubber-based formulations. (Id., Fig. 20; Rauwendaal Tr. at
170; Mount Tr. at 62). It also discloses an exemplary process diagram, (PTX-37-12),
stating that a PRE can be fed with rubber, resin and other constituents simultaneously,
and especially mentions that the modular PRE system allows “compounding of materials
which are difficult to disperse or homogenize, as for example recycled materials,
adhesives, caoutchoucs, etc.” (PTX-37-15; Rauwendaal Tr. at 171). And it discloses
that such a system could be set up with spindles satisfying claim 1, such as the
Noppenspindel. (PTX-37-16, Fig. 20; Mount Tr. at 68-69, 143; see also Rauwendaal Tr.
at 171 (testifying that the DIK Paper discloses a PRE modular design to manufacture
adhesives and discloses the claimed spindle)).
4
Intertape objects to the admission of the DIK Paper because, it contends, Berry did not provide
independent corroborating evidence for the status of the document as prior art. The
corroboration requirement applies to witness testimony, not documentary prior art. Adenta
GmbH v. OrthoArm, Inc., 501 F.3d 1364, 1371-72 (Fed. Cir. 2007) (“We have held that a patent
cannot be invalidated based on one person’s testimony alone without corroborating evidence,
particularly documentary evidence.”). Here, Batton, testified that he disseminated the DIK
Paper during a presentation he gave in Hanover, Germany in March of 2003. (Batton Tr. at 26).
The DIK Paper is dated (“24.03.2003”) and its author is Harold Rust of Entex. (PTX-37).
Batton explained that Rust’s name was on the Paper because he was originally scheduled to do
the presentation, but because it was to be presented in English (as opposed to German), he asked
Batton to step in for him. (Id.). The court therefore finds the DIK Paper is corroborated by
Batton’s testimony and the date on the cover on the Paper. In re Morsa, 713 F.3d 104, 109
(Fed. Cir. 2013) (printed date was substantial evidence to support prior art date).
14
There is, therefore, no dispute that the PRE and the claimed back-cut spindle
were prior art to the ‘416 patent. (See, e.g., Filing No. 356, Stipulations as to the Claim
Elements at Issue at 2).
There is one additional prior art reference the court will discuss – the Entex ‘098
patent. (PTX-291, PTX-473 (English translation)). The Entex ‘098 patent, published on
September 22, 1994, “relates to a planetary roller extruder with a central spindle and
rotating planetary spindles. . . .” (PTX-473 at 1). The planetary spindles are referred to
as porcupine spindles due to the shape of the spindle’s “teeth.” (See generally id.). The
patent discloses the advantage of a spindle having porcupine teeth – “to achieve better
dispersion and better material breakdown.” (Id. at 1). This particular application is for
the use or manufacture of powder coatings or the processing of polyolefins. (Id. at 3).
The ‘416 patent gives examples of back-cut spindles; a porcupine spindle (or
Igelspindel) is one such example. (‘416 patent, col. 4, ll:33-34).
3.
Motivation to Combine References
Having determined that both the Beiersdorf ‘447 patent and the claimed spindle
were in the prior art at the time of the invention, the court next turns to whether a person
of ordinary skill in the art would have been motivated to combine the teachings in the
prior art with the claimed spindle to achieve the ‘416 patent, and whether there was a
reasonable expectation of success in doing so. The motivation to combine may be found
in the references sought to be combined and from “any number of sources, including
common knowledge, the prior art as a whole, or the nature of the problem itself.”
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356,
15
1361 (Fed. Cir. 2006) (citation omitted); In re Rouffet, 149 F.3d at 1357 (noting three
possible sources for a motivation to combine references: “the nature of the problem to be
solved, the teachings of the prior art, and the knowledge of persons of ordinary skill in
the art”). Whether there is a reason to combine references is a question of fact.
McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1355 (Fed. Cir. 2001).
Berry’s Rule 50 motion centers on the Beiersdorf ‘447 patent’s “of course”
language; specifically, “Of course, any roll cylinder can be equipped differently in terms
of the number and nature of the planetary spindles and so can be adapted to the
particular formulation and processing requirements.” (‘447 patent, col. 8, ll:13-16). On
cross examination, Berry’s counsel asked Dr. Rauwendall whether one of skill in the art
at the time of the alleged invention of the ’416 patent would understand from the
Beiersdorf patent’s “of course” language that he or she could select the claimed spindle
from any of the existing spindles, depending on his or her particular formulation and
processing requirements. (Rauwendaal Tr. at 149-151). Dr. Rauwendaal responded, “I
think a person with ordinary skill would understand that whatever spindles are available
could be used.” (Id. at 151; see also id. at 162 (“A person knowing what was available
would know that [the claimed spindle] was one of the options that could be
considered.”)).
Dr. Rauwendaal’s admission does not establish that one of ordinary skill in the art
at the time of the invention would have been motivated to combine the teaching of the
Bieresdorf ‘447 patent with the claimed spindle.
16
That all elements of an invention may have been old (the normal situation),
or some old and some new, or all new, is however, simply irrelevant.
Virtually all inventions are combinations and virtually all are combinations
of old elements. A court must consider what the prior art as a whole would
have suggested to one skilled in the art.
Envtl. Designs, Ltd. v. Union Oil Co. of California, 713 F.2d 693, 698 (Fed. Cir. 1983)
(citation omitted); see also KSR, 550 U.S. at 418 (“[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.”); Princeton Biochemicals, Inc. v. Beckman
Coulter, Inc., 411 F.3d 1332, 1338 (Fed. Cir. 2005) (“[S]imply identifying all of the
elements in a claim in the prior art does not render a claim obvious.”).
Intertape argues that one of ordinary skill in the art would not have been
motivated to combine the teachings of the ‘447 patent and the ‘416 patent because the
‘447 patent taught away from using the claimed spindle to process non-thermoplastic
elastomers. Teaching away is a corollary principle to the motivation to combine
references. KSR, 550 U.S. at 416. A reference teaches away “‘when a person of
ordinary skill, upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the path that was
taken by the applicant.’” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (quoting Ricoh Co., Ltd. v. Quanta Computer, Inc., 550
F.3d 1325, 1332 (Fed. Cir. 2008)). “A reference does not teach away, however, if it
merely expresses a general preference for an alternative invention but does not ‘criticize,
discredit, or otherwise discourage’ investigation into the invention claimed.” Id.
(quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Whether a reference
17
teaches toward or away from the claimed invention is a question of fact. Medichem, S.A.
v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2007).
The Beiersdorf ‘447 patent describes known processes for the production of
pressure-sensitive adhesives and concludes that these processes, all of which are based
on a twin-screw extruder and include a mastication step, “are characterized by extremely
severe rubber breakdown.” (See generally id., col. 3, ll: 27 – col., 4, ll: 65). The patent
distinguishes those known production processes from the one disclosed therein:
Unlike otherwise conventional production processes, in the planetary
roll[er] extruder in accordance with the process of the present invention, in
particular, there is no property-impairing mastication of the nonthermoplastic elastomers, since in this case they are not subjected separately
to the effect of high shear energy but instead are always processed together
with one or more liquid components.
(Id., col. 7, ll: 21-27). Claim 1 of the Bieresdorf patent thus claims a “mastication-free”
process for the production of rubber-based, self-adhesive compositions in a PRE. On
this subject, Dr. Rauwendaal opined:
[T]he ‘447 patent very specifically teaches that you should avoid
mastication . . . when you make a natural rubber-based adhesive. And the
‘416 patent teaches something quite different; it teaches the use of this
double-transversal spindle that is specifically designed to increase
mastication and to increase mixing. So what the two patents teach is
essentially the opposite.
(Rauwendaal Tr. at 120-21).
Berry characterizes Intertape’s teaching-away argument as a “red herring”
because mastication is not a claimed element of independent claims 1 and 21. See
Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1328 (Fed. Cir. 1998) (noting that a
district “court must consider portions of prior art references which teach away from the
18
claimed invention”); see also Rauwendaal Tr. at 162 (testifying that “[m]astication is not
a requirement with either claim 1 or claim 21 of the ‘416 patent”); Mount Tr. at 225
(testifying that claims 1 and 21 are not limited to mastication; “they’re limited to
mixing”); Tynan Tr. at 111-12; St. Coeur Tr. at 103. The claims recite “mixing” of
“primary raw materials,” not mastication. (See ‘416 patent, claims 1(c) and 21(b)).
The ‘447’s claim of a “mastication-free” process is perplexing. Based upon the
court’s reading of the prior art and its understanding of natural rubber’s high molecular
weight, the court asked counsel whether it was possible to compound rubber without
masticating it during the manufacturing process. Counsel for Berry and Intertape said
“no.” In fact, Intertape’s counsel said that some degree of mastication “has to occur.” 5
5
The testimony presented at trial supports counsel’s statement. Tynan testified:
Q:
You believed the claims of the Beiersdorf patent to be invalid because
they required mastication free, and you didn’t think that was
possible?
A:
That’s correct.
Q:
You thought that was ridiculous?
A:
I did.
Q:
You didn’t think there was any way a planetary roller extruder would
take that chunk of rubber, squeeze it through all of those gears and not
break down the molecular weight, right?
A:
I didn’t think so, but I couldn’t be certain. . . .
(Id. at 143-44). See also id. at 199-200 (“Q: Sir, whenever you looked at the Beiersdorf
process, you saw that it was manufacturing rubber-based adhesives on a PRE. You did think
that everyone knows, including Beiersdorf knows [sic] that it’s impossible not to masticate on
that PRE equipment; is that correct? A: I said that, yes.”). In addition, Dr. Mount testified that
“all of these rubber-processing machines,” including the PRE, masticate rubber because rubber
“is just a polymer” whose molecules must be mechanically broken. (Mount Tr. at 86). As a
final note, St. Coeur testified that the data from the April 2003 Battenfeld trials “showed
mastication by use of a full-flighted spindle.” (St. Coeur Tr. at 60). This further undermines
the ‘447 patent’s “mastication-free” claim because a full-flighted spindle is a standard spindle,
not a back-cut spindle.
19
According to Intertape’s counsel, the ‘447 patent teaches the advantages of slight or
minimal mastication for a better self-adhesive product through the use of a PRE. On the
other hand, the ‘416 patent discusses the advantages of “controlled” mastication for a
better self-adhesive product through the use of different types of spindles working
together in a PRE. (‘416 patent, col. 4, ll: 51-56 (“By adjusting the number of full flight
30 and open or double transversal spindles 28, the rate with which material passes
through the planetary roller extruder and hence the amount of mastication that is done on
the material can be controlled.”)). “A least one” of the planetary spindles must be the
claimed “double transversal mixing spindle comprising a plurality of back-cut helical
flights.” (‘416 patent, claims 1(c) and 21(b)).
This brings the court back to the ‘447 patent’s “of course” language. Would it
have been obvious for one of ordinary skill in the art to combine a PRE with the claimed
back cut spindle to process natural rubber into a workable self-adhesive? With respect
to this issue of spindle selection, Dr. Rauwendaal testified on cross examination as
follows:
Q:
All right. And you would agree that that one hypothetical person of
ordinary skill in the art when reading this would know that it was
obvious, depending on their formulation and processing
requirements, of which spindles to equip their planetary roller
extruder for [sic] to make rubber-based adhesives, right, sir?
A:
Well, I think it’s a little bit more complicated than that. That
person would really have to know for a particular application what
might or might not be advantageous.
(Rauwendaal Tr. at 152). From that point on, Dr. Rauwendaal’s testimony was
problematic. Although Dr. Rauwendaal was eminently qualified to give an opinion on
20
spindle selection, he did not opine from the perspective of a skilled artisan who is
presumed to be aware of all available prior art. (See id. at 152-59). Emblematic of his
testimony is the following:
Q:
Okay. And that person understanding that, all those ingredients that
we went through that are near verbatim between the [‘447 patent
and the ‘416 patent], that person of ordinary skill would know upon
reading this very statement that they could select any prior art
spindle, depending on the particular formulation and processing
requirements that they were faced with, correct?
A:
No, I don’t agree, and I explained why, because I deal with this
frequently. I deal with engineers that do compounding, that make
adhesives or other compound materials, and generally their
understanding of what specific piece of equipment is necessary,
what particular design of mixing element is necessary to achieve
some result, that is not something that many engineers know how to
do. And I know from personal experience working with hundreds
and hundreds of engineers in this industry.
(Id. at 154; see also id. at 156 (“Well, I have a little bit of trouble with this hypothetical
person. I prefer to work with reality rather than with hypotheticals.”); id. at 158 (“You
can call it a hypothetical person, but obviously when I talk about ordinary skill, I base it
on my own experience in the industry. And to me that is not necessarily a hypothetical
person; it’s based on real experience in the industry.”); id. at 159 (“Well, like I said, I
talk about a hypothetical person with ordinary skill based on my experience. If you
want to call it a hypothetical person, that’s okay, but it is based on my experience in the
industry.”)). Because the testimony of Dr. Rauwendaal regarding spindle selection was
not based on the correct legal standard, the jury was not entitled to rely on it in making
its obviousness factual determination. See Amazon.com, Inc. v. Barnesandnoble.com,
239 F.3d 1343, 1364 (Fed. Cir. 2001) (“Whatever [Barnesandnoble.com’s expert] Dr.
21
Lockwood did or did not personally realize at the time based on his actual knowledge is
irrelevant. The relevant inquiry is what a hypothetical ordinarily skilled artisan would
have gleaned from the cited references at the time that the patent application leading to
the [] patent was filed.”).
The only other expert opinion on this subject was from Dr. Mount:
Q:
What is your expert opinion as to what that [the ‘447’s “of course”
language] discloses to one of ordinary skill in the art?
A:
Well, to one of ordinary skill in the art, that says that if I want to
change the processing of the adhesive because I’m dissatisfied with
it or I’m changing the formulation, I can modify the equipment and
operate it differently by changing both the number and nature of the
planetary spindles, the nature of the spindles representing the shape.
So you can change the type of spindle, and this would include all of
the prior art spindles that were available. It says you can go get any
prior art spindle that you can find, and if I need to change the
mixing or to improve the homogeneity of the adhesive, I simply
have to pick and choose and do some experimentation to modify it
based upon any changes in the formulation or the type of rubber or
the other components of the adhesive.
Q:
Do you believe that this disclosure would have informed one of
ordinary skill in the art of the actual use of the claimed spindle in
the ‘447 process?
A:
Yes, I believe so; it was a prior art spindle.
(Mount Tr. at 31-32). See also id. at 144 (one of skill in the art would know to “change
the spindles to improve the mixing to get better homogeneity”); id. at 144-45 (“Q: What
would one of ordinary skill in the art, in your opinion, do if they started with a
formulation and all Noppenspindels, and the formulation was overworked? What might
that person do with respect to spindle selection? A: Sure. Well, if we have too much
resident time, too much mixing and you’ve maybe degraded the polymer more than you
22
want so it’s too viscous, you now want to work it less, so you take out the high-work
spindles and put in the low-work spindles, the standard spindles.”); id. at 149-50 (“[I]t
would be obvious to use the Noppenspindel as a prior art spindle because it’s available
. . . to use . . . and it would be obvious to choose because it changes the mixing
behavior.”).
The court’s analysis is not limited to the prior art ‘447 patent. Medichem, 437
F.3d at 1165 (stating that “obviousness must be determined in light of all the facts,”
including all of the relevant prior art). Entex’s DIK Paper specifically discusses the use
of a PRE to compound elastomer masses, including caoutchouc (natural rubber), and
discloses the same three spindles disclosed in the ‘416 patent – the Planetspindel (also
known as the full flight or standard spindle), the Igelspindel, and the Noppenspindel.
(PTX-37 at 2). Dr. Rauwendaal testified to this fact. (Rauwendaal Tr. at 171) (“Q: Sir,
then you would agree that PTX-37 discloses using a planetary roller extruder modular
design to manufacture adhesives and also discloses spindles that fall within the claimed
spindles of the ‘416 patent, right? A: It shows the Noppenspindel, that is correct.”).
Entex’s ‘098 patent also discloses the use of a PRE with a back cut Igelspindel to
process powder coatings. (PTX-473). It teaches that in order to avoid degradation of
the polymer, one may modify the processing time by strategically combining an
Igelspindel with standard spindles. (Id. at PTX-473-2; Mount Tr. at 79-80).
After considering the prior art in its totality, the court finds a person of ordinary
skill in the art would have been motivated to combine the Beiersdorf PRE system with
the claimed back-cut spindle. The problem with the twin screw extruder to process
23
natural rubber was its propensity to generate too much heat, resulting in severe rubber
breakdown. (Kovach Tr. at 14; Tynan Tr. at 32-33; see also ‘447 patent, col. 4, ll: 5965). The novelty of the PRE system to process natural rubber was its tremendous
mixing and thermal-exchange capabilities. (Tynan Tr. at 41, 43; ‘447 patent, col. 7, ll:
36-40 (“Furthermore, planetary roller extruders have extremely large surface areas
where material exchange and surface renewal take place, by which means it is possible
to dissipate rapidly the frictional shear energy and thus avoid undesirably high product
temperatures.”)). And while the ‘447 patent may have counseled against “propertyimpairing mastication,” a person of ordinary skill in the art would have recognized that
some degree of mastication must occur in order to process natural rubber into an
adhesive. Further, the skilled artisan would have understood that variations in tooth
geometry of spindles can modify the dwell time of materials being processed, and would
know that adding openings to spindle flights could provide beneficial processing
properties, such as increased dispersion and material breakdown. Consequently, the
skilled artisan would also know that any existing spindle, including the claimed spindle,
could be used to change the processing of the adhesive in desired manners. The number
and nature of the planetary spindles to conform to any particular formulation or
processing requirement would be, as Dr. Mount testified, a matter of routine
experimentation.
B.
Secondary Considerations
The court next considers objective evidence of non-obviousness, otherwise
known as the secondary considerations. Intertape asserts that Intertape’s process
24
produces an unexpected result – a superior non-thermoplastic adhesive. Intertape,
however, never identifies the closest prior art process that the claimed invention was
better than, nor does it provide any comparative data to show the alleged unexpected
benefits over that unnamed process. See In re Baxter Travenol Labs, 952 F.2d 388, 392
(Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior art.”). In
addition, Intertape failed to provide evidence of what was unexpected about the claimed
invention. The only evidence it cites is from Tynan, who testified to the benefits and the
advantages of the claimed invention, but not to the unexpectedness of the results. Pfizer,
480 F.3d at 1371 (“Thus, in order to properly evaluate whether a superior property was
unexpected, the court should have considered what properties were expected.”). The
court therefore finds the jury was not entitled to credit Intertape’s evidence.
Intertape also asserts that Berry’s alleged copying of the claimed invention shows
non-obviousness. As the jury found that Berry did not infringe the ‘416 patent, it
implicitly found no evidence of copying. The court finds no reason to upset that finding.
V.
Conclusion
In sum, even assuming the jury correctly resolved the pertinent factual issues in
favor of Intertape, the prior art still renders the claims of the ‘416 patent obvious as a
matter of law. Here, both the PRE and the claimed spindle were in the prior art, and the
motivation to combine the references can be found by the nature of the problem to be
solved – the process for producing a non-thermoplastic elastomer with sufficient
25
adhesive and cohesive strength. The secondary considerations do not alter the court’s
result.
The court therefore GRANTS Berry’s Renewed Motion for Judgment as a Matter
of Law that U.S. Patent No. 7,476,416 is Invalid as Obvious (Filing No. 385).
SO ORDERED this 30th day of September 2015.
__________________________________
_________________________________
RICHARD L.L. YOUNG,CHIEF JUDGE
RICHARD YOUNG, CHIEF JUDGE
United States District Court
United States District Court
Southern District of Indiana
Southern District of Indiana
Distributed Electronically to Registered Counsel of Record.
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