BERRY PLASTICS CORPORATION v. INTERTAPE POLYMER CORPORATION
Filing
538
FINDINGS OF FACT AND CONCLUSIONS OF LAW - For the reasons stated herein, the court finds that Berry has failed to prove, by clear and convincing evidence, that Intertape's '416 patent is unenforceable due to inequitable conduct. Signed by Judge Richard L. Young on 8/25/2016.(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
FINDINGS OF FACT AND CONCLUSIONS OF LAW
Plaintiff, Berry Plastics Corporation (“Berry”), is a direct competitor of Intertape
Polymer Corporation (“Intertape”), in the manufacture and sale of a variety of tapes,
including adhesive tapes. Intertape is the assignee of United States Patent No. 7,476,416
(“’416 patent”) which claims, inter alia, a manufacturing process for preparing an
adhesive using a specially modified planetary roller extruder (“PRE”) that includes
planetary mixing spindles with back-cut helical flights. On May 13, 2010, Berry filed a
declaratory judgment action against Intertape, alleging that the ‘416 patent is invalid and
unenforceable. Intertape filed a Counterclaim against Berry, alleging that Berry’s PRE
infringes independent Claims 1 and 21, and the associated dependent claims, of the ‘416
patent. The parties tried this case before a jury from November 3, 2014, to November 17,
1
2014. The jury found that, inter alia, Intertape’s ‘416 patent was valid 1 and that Berry’s
PRE did not infringe the ’416 patent. (See generally Verdict Form, Filing No. 378).
Berry’s inequitable conduct trial remained for adjudication.
The parties tried Berry’s inequitable conduct claim before the court on December
7-8, 2015. Following the trial, the parties filed proposed findings of fact and conclusions
of law. Being duly advised, the court further finds that Berry failed to prove, by clear and
convincing evidence, that the ‘416 patent is unenforceable due to inequitable conduct.
The court now issues its findings of fact and conclusions of law pursuant to
Federal Rule of Civil Procedure 52(a):
I.
1.
FINDINGS OF FACT
Intertape is the owner by assignment of the ‘416 patent issued on January 13, 2009.
(ITX-66 2 (‘416 patent)). The asserted ‘416 patent describes and claims a continuous
process for preparing adhesive tape from raw materials, including a nonthermoplastic elastomer (i.e., natural rubber) and tackifying resins, using a planetary
roller extruder (“PRE”) that includes at least one double transversal mixing spindle
comprising a plurality of back-cut helical flights. The double transversal spindles,
1
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 court
agreed. (See Filing Nos. 518, 535).
2
Exhibits from the jury trial will be cited as admitted at trial; Intertape’s exhibits are cited as
“ITX [number], and Berry’s exhibits are cited as “PTX [number].” Testimony from the jury trial
transcript will be cited by the witness’ last name followed by “Tr.” Testimony from the
inequitable conduct bench trial will be designated as “[last name], Bench Trial Tr. at [page
number].” Deposition testimony will be cited as “[last name] Dep. Tr. at [page number].” Where
applicable, initial citations will include the filing number.
2
known as “back-cut spindles,” are designed to increase the residence time of raw
materials in the extruder, which thereby increases mixing and mastication 3 of the
materials. The process claimed in the ‘416 patent uses at least one back-cut spindle
to reduce the viscosity of the adhesive mass so that the finished adhesive can be more
easily coated on to a web-form material using conventional equipment. (Id. col. 4,
ll:24-56; id. col. 7, ll:14-41).
2.
The named inventors are John Tynan, Jr., Richard St. Coeur, David Kovach, and
Thomas Lombardo. (See id.; Filing No. 391, Tynan Tr. at 36). At the time the patent
was issued, the inventors were employees of Intertape. (Id.).
3.
Mark Levy and John Kane prepared and prosecuted the 60/524,505 provisional
application and 10/997,827 non-provisional patent application that resulted in the
‘416 patent. (Filing No. 493-6, Kane Dep. Tr. at 22).
A.
4.
Intertape Learns of Planetary Roller Extruders
In the early 2000s, 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”)).
5.
In 2002, Intertape learned from a German patent publication that one of its
competitors, Tesa AG (also known as “Beiersdorf”), had developed a continuous
adhesive-making process using a PRE. (Tynan Tr. at 37). In April 2002, Kovach
3
To masticate rubber means to break down the molecular weight of the material. See, e.g., ‘447
patent, col. 7, ll: 33-34.
3
and a colleague prepared an English translation of the patent. (Kovach Tr. at 42-43;
St. Coeur Tr. at 7-8).
6.
Intertape had never heard of a PRE before reading the Beiersdorf patent. (Tynan Tr.
at 38).
7.
Intertape decided to explore this new method of compounding natural rubber. (Id. at
30).
B.
October 2002 European Trip
1.
8.
Visit to Battenfeld Extrusionstechnik GmbH
Through research, Intertape discovered that Battenfeld Extrusionstechnik GmbH, a
German multi-national manufacturer of mixing equipment, designed and
manufactured PREs. (Tynan Tr. at 39).
9.
Tynan, Lombardo, and St. Coeur traveled to Germany to meet with Battenfeld
representatives on October 16, 2002. (ITX-5). During their 2002 meeting,
Battenfeld showed the Inventors PowerPoint Presentations on PRE technology. (Id.
at 6).
10.
Intertape learned that a PRE had “ten times the thermal-exchange capability of a
twin-screw extruder . . . , so [Intertape] was intrigued.” (Tynan Tr. at 43; see also
ITX-5 at 6 (noting the PRE’s ability to “provide good mixing in materials that are
shear sensitive” and “thermally sensitive”).
11.
Representatives of Battenfeld also introduced Intertape to different types of planetary
spindles for use in a PRE. (St. Coeur Tr. at 56-57; see also ITX-5). Intertape learned
from Battenfeld that “you can achieve different mixing effects when you go from a
4
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 backslip 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; St. Coeur Tr. at 57 (“[T]hey
said you can cut notches into the spindle for different mixing dynamics.”)).
12.
The Inventors were already familiar with back-cut mixing spindles from their work
with twin-screw extruders. (See Filing No. 402, Kovach Tr. at 11 (“I used that style
extensively in my work with the twin-screw extruders”). Kovach knew from his
experience that the back-cut configuration is “designed to add more mixing and
mastication.” (Id. at 54-55).
13.
Battenfeld encouraged Intertape to run a search for U.S. patents belonging to
Beiersdorf that might impede the Inventors’ efforts to develop their own adhesive
compounding process in the U.S. (ITX-5 at 8).
2.
14.
Maris
Intertape’s European trip also included a visit to Maris, an Italian manufacturer of
twin-screw compounding extruders. (Id. at 2, 13-17; Tynan Tr. at 131). A twinscrew extruder has two connected barrels with two co-rotating screws. (Tynan Tr. at
31).
15.
Intertape wanted to meet with the Maris representatives “to identify the
advancements Maris ha[d] made on the compounding of natural-rubber-based
5
pressure-sensitive adhesives.” (ITX-6 at 1). The meeting with Maris representatives
occurred on October 21, 2002. (ITX-5 at 13).
16.
Maris “[c]laimed to have developed a process that allows for continuous
compounding of solvent-based adhesives in a twin screw compounder.” (ITX-5 at
2).
17.
Twin-screw extruders produce a lot of heat which can degrade the rubber. (Tynan
Tr. at 34-35). Maris’ “[p]rocess development focused on keeping temperatures from
running away.” (ITX-5 at 16). Intertape noted, “Solid resin adds via sidefeeders
dropped temperature.” (Id. at 16).
18.
The use of sidefeeders, solid resin, etc., “was known to [Intertape]” as a means to
“cool[] the adhesive down.” (Tynan Tr. at 137).
19.
According to Berry, Intertape learned from the Maris continuous process disclosure
that (i) introduction of solid materials in the compounding section has advantages,
(ii) all solid materials do not have to be fed all at once in the feeding section, with
downstream solids additions, (iii) the elastomer is given more time to be masticated
before addition of other materials, (iv) solid resin is easier to mix with rubber
because molten resin lubricates, and (v) the solid materials act as a heat sink to lower
the process temperature. (ITX-5 at 15-16).
20.
Furthermore, Berry argues, the Inventors had not conceived of the above ideas prior
to their meeting with Maris representatives.
21.
Berry did not plead this basis for inequitable conduct, nor was it disclosed or argued
at the inequitable conduct court trial.
6
C.
22.
The 3M Opposition to the Beiersdorf Patent
Following their European trip, Tynan requested an extensive search for Beiersdorf
patents as Battenfeld had suggested. (Tynan Tr. at 45-46, 151).
23.
Intertape learned that Beiersdorf had obtained a U.S. patent on its process of
manufacturing an adhesive using a PRE. (Id. at 43-44). Beiersdorf’s U.S. Patent No.
6,506,447 (“‘447 patent”) generally claims a continuous, solvent-free, and
mastication-free process for producing a pressure-sensitive adhesive from a nonthermoplastic elastomer in a PRE. (ITX-7, claim 1). The ‘447 patent issued from a
patent application filed in the PTO on August 17, 2000. (Id. at 1).
24.
Intertape also discovered Beiersdorf’s European application was being opposed by
3M. (Tynan Tr. at 152-53).
25.
The 3M Opposition was dated February 20, 2003, and uncovered by Intertape
sometime before May 5, 2003. (ITX-20; Tynan Tr. at 150-53; ITX-16 (“Where is
Beiersdorf’s rebuttal of 3M’s contest of Beiersdorf’s patent?”)).
26.
The 3M Opposition to the Beiersdorf patent application centered on the patent’s
assertions of ‘mastication-free’ and asserted that such claims were invalid as not
enabled. (See, e.g., ITX-20 at 3 (“According to this definition, the term ‘masticationfree’ would mean that in the process of EP ‘584 there is no molecular weight
breakdown of the elastomer at all.”); Tynan Tr. at 152-53; PTX-150; Levy Tr. at 5255)). Specifically, the Beiersdorf application claimed that there was a difference
between the mastication of elastomers and the degradation of elastomers. 3M argued
this differentiation between mastication and degradation “is artificial and not a
7
technically sound concept. How can a molecule which is broken down tell whether it
was masticated or degraded? What difference does it make if the molecular weight
breakdown of elastomers is referred to by two different terms; isn’t it still the same
process?” (ITX-20-3).
27.
At Intertape’s request, Prosecution Counsel monitored the 3M Opposition in
Germany quarterly. (Filing No. 529, Tynan Bench Trial Tr. at 55, 131; Filing No.
530, Levy Bench Trial Tr. at 9-14).
28.
Kane directly monitored the European prosecutions and provided selected documents
to Levy when they appeared to be relevant. (Kane Dep. Tr. at 28-29, 36; Levy Tr. at
52; Levy Bench Trial Tr. at 12-13). Tynan primarily interacted with Levy, and thus
any information from the 3M Opposition would have come from him. (Tynan Bench
Trial Tr. at 27, 131-32).
29.
Kane could not recall any specific documents he submitted to Levy. (Kane Dep. Tr.
at 29). Levy, in turn, could not recall any specific documents he received from Kane.
(See Levy Tr. at 52 (testifying he did not recall reviewing a specific document)).
30.
There is insufficient evidence to determine which documents or information Tynan
subsequently obtained. (Tynan Bench Trial Tr. at 52-53, 62-63).
D.
31.
2003 Trials at Battenfeld
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).
8
32.
One of Intertape’s goals of the trials was to invalidate the ‘447 patent claims because
mastication-free PRE compounding of rubber was not possible and Intertape
regarded the patent as an “obstacle.” (Tynan Tr. at 56, 143-44, 200 (“Q: You did
think that everyone knows, including Beiersdorf [,] that it’s impossible not to
masticate on the PRE equipment; is that correct? A: I said that, yes.”); St. Coeur Tr.
at 59).
33.
During the trials of Battenfeld’s PRE, Intertape used Battenfeld’s test set-up, which
included only 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).
34.
Battenfeld discussed the types of planetary spindles available for PREs, including
back-cut planetary spindles, and the Inventors took photographs of them. (Tynan Tr.
at 63-64; Kovah Tr. at 19).
35.
Intertape discovered, as a result of the trials, that it “could take natural rubber,
tackifying resin, extender, masticate the rubber in the PRE, produce an adhesive, and
it had an exceptional balance of adhesion and cohesive strength.” (Tynan Tr. at 65).
36.
Intertape performed a molecular weight analysis of samples returned from the
Battenfeld trials that confirmed mastication occurred. (ITX-18 at 2 (“There is
significant molecular weight breakdown in adhesives compounded with the PRE.”)).
9
37.
Intertape shared the molecular weight data and conclusions with Prosecution Counsel
Levy, and explained that “[t]his information refutes claims made in Beirsdorf [sic]
patents.” (ITX-18 at 1).
38.
Following the Battendorf trials, Intertape determined that it was not infringing the
Beiersdorf’s “mastication-free” process, and “decided [to] move ahead with [its]
better process.” (Tynan Tr. at 67).
E.
Entex Rust & Mitschke GmbH
1.
39.
The DIK Paper
Intertape identified Entex Rust & Mitschke GmbH as a manufacturer of PREs from
the specification of the ‘447 patent. (Kovach Tr. at 21).
40.
In June 2003, St. Coeur, Kovach, and Lombardo attended a National Plastics Expo
(“NPE”) in Chicago, Illinois, to find out whether Entex’s processing lab could handle
flammable solvents. (Tynan Bench Trial Tr. at 88-89).
41.
Of the three Inventors who attended the NPE, only Kovach and Lombardo met with
Entex sales representative Michael Batton. (St. Coeur Bench Trial Tr. at 204).
42.
Batton testified that he handed Kovach and Lombardo a copy of a speech that he
gave and distributed to the attendees of a DIK seminar in Hannover, Germany on
March 23, 2003. (Filing No. 410, Batton Tr. at 26, 67, 72). The speech is titled
“Rubber – the tailor-made material” and subtitled “Compounding of Elastomer
Masses in a Planetary Roller Extruder.” (PTX-37 (“DIK Paper”)).
43.
The DIK Paper 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
10
discloses an exemplary process diagram, (PTX-37 at 12), and states that a PRE can
be fed with rubber, resin and other constituents simultaneously. It 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 at 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 at 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)).
44.
Kovach testified that Batton did not give him a copy of the DIK Paper. (Kovach Tr.
at 27).
45.
Kovach memorialized the Inventor’s meeting with Batton in a memo he prepared and
distributed a few days after the NPE. (ITX-22 (Kovach’s memo); Kovach Tr. at 2425, 82). The DIK Paper is not mentioned in the memo. Kovach testified that, if he
had received the DIK Paper, it would have been issued a document number and filed
along with the memo. (Kovach Tr. at 27, 82-83; see also Filing No. 493-8,
Lombardo Dep. Tr. at 106 (confirming that “it [was] the practice of [the Inventors] to
circulate information with each other that was relevant to the PRE work [they] were
doing”); Tynan Bench Trial Tr. at 161 (same)).
46.
Lombardo does not recall receiving the DIK Paper from Batton. (Filing No. 493-7,
Lombardo Dep. Tr. at 45-46).
11
47.
St. Coeur testified that he did not receive any materials from the Entex booth at the
NPE, did not see any materials that were available for visitors to take from the Entex
booth, and did not see any materials received by Lombardo or Kovach from the
Entex booth. (St. Coeur Tr. at 15, 61-62). He further testified that it would have
been “odd” if Lombardo or Kovach had received materials from Batton but did not
share those materials with him. (St. Coeur Bench Trial Tr. at 205).
48.
Tynan and Prosecution Counsel testified that they never saw or had possession of the
DIK Paper during prosecution of the ‘416 patent. (Tynan Bench Trial Tr. at 161;
Filing No. 493-6, Kane Dep. Tr. at 80; Filing No. 401, Levy Tr. at 28-29).
Furthermore, Intertape searched its files for the DIK Paper, but did not find it.
(Tynan Bench Trial Tr. at 161-62).
2.
49.
Entex Trials
After discussions with Batton, Intertape learned that Entex had a lab-scale PRE that
was capable of processing solvents. (Kovach Tr. at 25; St. Coeur Tr. at 15). The
ability to use solvents was important to Intertape because Intertape used solvents in
several of its manufacturing plants. (Kovach Tr. at 31). Therefore, Intertape
arranged for trials at Entex. (St. Coeur Tr. at 15).
50.
In November 2003, Intertape conducted trials at Entex’s facility in Bochum,
Germany. (Tynan Tr. at 69, 71; St. Coeur Tr. at 26; Kovach Tr. at 28). In
preparation for the trials, Intertape communicated with Batton and with two other
Entex employees, Karl Roewer and Siegfried Luechtefeld, in August 2003. (Id. at 17
(discussing ITX-26 (Entex questionnaire)), 22).
12
51.
Luechtefeld has a degree in engineering with an emphasis on polymer extrusion, and,
at all relevant times, served as Entex’s technical laboratory engineer. (Filing No.
405, Luechtefeld Tr. at 4).
52.
On August 6, 2003, Intertape filled out a Questionnaire for Test Preparation for
Entex, which included information regarding the material to be tested, transport of
the material, and operating parameters. (ITX-26). The following day, Intertape
responded with its own questions for Entex, including the types of planetary
elements (spindles) available, the type of solvent used, and the length of the
laboratory extruders. (ITX-27).
53.
On August 28, 2003, Intertape and Entex had a telephone call to discuss the features
of the Entex PRE and the types of spindles that Entex could make available to
Intertape for testing. (Kovach Tr. at 36-37, 83-84; St. Coeur Tr. at 23-25).
54.
On August 29, 2003, Roewer sent Kovach a series of eight (8) emails between 11:56
a.m. and 11:58 a.m. German time which described the features of its PRE and
included photographs of various spindles, including the Noppenspindel. (Kovach Tr.
at 38; PTX-24; PTX-140). Roewer copied Luechtefeld and Batton on the emails.
(PTX-24; PTX-140).
55.
The August 29 emails to Kovach explained the Entex technology and expressly
pointed out that “[f]or processing elastomers, [Entex] had developed a special
version of planetary spindles” and attached a photo of the Entex Noppenspindel.
(PTX-24 at 1-2). Although Intertape was familiar with back-cut spindles, they had
13
never seen an image of Entex’s proprietary back-cut spindle—the Noppenspindel—
prior to their contact with Entex. (Tynan Tr. at 168; St. Coeur Tr. at 74).
56.
The August 29 emails further described “transversal mixing planetary spindles” and
included photographs of the Entex Igelspindel. (PTX-24 at 1, 3, 16, 20-21). The
Igelspindel includes openings in the flights that “increase the resting time of the
material inside the extruder and this leads to better homogenization.” (Id. at 16).
Entex specifically noted that the “transversal mixing planetary spindles” were for
processing elastomers. (Id.).
57.
In addition, Luechtefeld testified that he sent a ninth email to Roewer at 12:04 p.m.
on August 29, 2003, after Roewer had sent the other eight emails to Intertape.
(Filing No. 406, Luechtefeld Tr. at 4 (discussing PTX-140); see also Filing No. 33510, Roewer Decl. ¶ 6; Filing No. 335-2, Luechtefeld Decl. ¶ 10). The email, known
as the “Test Set-Up Email,” included an image from an excel spreadsheet entitled
“Test Set Up” and showed Luechtefeld’s proposal for the test set-up using double
transversal spindles (or Noppenspindles) as the planetary spindles to be installed in
the PRE for compounding Intertape’s formulation. (Luechtefeld Tr. at 4-5; PTX140). The email was forwarded by Roewer to Kovach forty-five (45) minutes later.
(Roewer Decl. ¶ 7; PTX-140).
58.
At the jury trial, Kovach testified that he did not recall seeing that email in August
2003. (Kovach Tr. at 78-79).
59.
The parties also presented conflicting evidence regarding whether this email reflected
Luechtefeld’s ideas or ideas that Intertape had conveyed to Luechtefeld during the
14
August 28 phone call. For example, Kovach testified that Intertape designed the
trials, set up the parameters, and determined the objective of the trials. (Kovach Tr.
at 28). Kovach explained:
They were trials. They were our adhesive. We are adhesive experts.
We understand our products, our adhesives and what it takes to mix
them. So Entex is an equipment manufacturer; they’re not an
adhesives expert. We would design our own trials and our own
processes and then try to utilize their equipment expertise to make that
happen.
(Id.). He also testified that Entex never made a recommendation or suggestion about
what type of spindle to use during the trials. (Id. at 41). St. Coeur confirmed his
testimony. (St. Coeur Tr. at 6 (testifying Entex did not suggest how trials should be
set up because “we were going to take control of these trials. We already had
worked up a plan . . . we’d already had formulations in mind; we already had a
process in mind . . .”); see also id. at 25 (testifying Entex did not recommend during
conference call to use back-cut spindles)).
60.
Luechtefeld testified that he alone decided to use back-cut spindles during Intertape’s
trials at Entex and that he prepared the test set-up shown in PTX-140 without any
input from Intertape other than basic information Intertape provided in response to
the Entex questionnaire. (Luechtefeld Tr. at 15-16).
61.
Luechtefeld could not recall whether he participated in the telephone call with
Kovach and St. Coeur the day before the proposed test set-up depicted in PTX-140
was emailed to Intertape. (Filing No. 404, Luchtefeld Cross-Exam Tr. at 9).
62.
Roewer did not testify about the August 28 call at trial.
15
F.
63.
Patent Application
On November 24, 2003, Intertape filed a provisional application with the United
States Patent and Trademark Office (“PTO”) that included a photograph of a
Noppenspindel. (ITX-2; Tynan Tr. at 74; Levy Tr. at 5, 50).
64.
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 and
was published on August 4, 2005. (ITX-66 at 1).
G.
April 2004 Beiersdorf Visit
65.
Tynan, St. Coeur and Lombardo visited Beiersdorf in April 2004. (PTX-132).
66.
Dr. Robert Gereke, the Executive Vice President of Tesa, informed Intertape that, in
his opinion, “‘mastication’ is a process that one conducts intentionally through the
use of chemical, oxygen, or mechanical energy. . . . [It] is not a must in the
[Beiersdorf] process. It is not a purpose of the processs. [Dr. Gereke] admitted that
with the [Beiersdorf] process, some mastication is experienced, as it cannot be
completely avoided.” (Id. at 6).
H.
67.
Batton’s Inventorship Challenges
In October 2005, Batton sent an email to Tynan stating: “I just received word of your
patent concerning our extruder. John[,] you told me that you made a release
concerning our production process so that no one would be able to patent this.
Please confirm.” (ITX-49 at 1).
68.
Tynan responded:
16
Just to be clear, the patent application is directed specifically to the
use of the Noppen Spindeln in the PRE for the compounding of
pressure-sensitive adhesives from non-thermoplastic elastomers.
[Intertape] filed the patent application to protect its investment in
bringing this technology on line. It has not yet been determined
whether or not the patent will actually be granted. While I mentioned
to you, Herr Rust, and Entex’s patent counsel during our meeting in
Herr Rust’s office that [Intertape] had previously employed the
strategy of anonymous disclosure for a previous invention, thereby
preventing others from using it[,] I also stated that this strategy was
also an option for disclosing the PRE adhesive compounding process.
However, I made it clear that while this strategy was an option, I was
not authorized to make the strategy determination for [Intertape]. As
a consequence, I could make no promises on [Intertape’s] behalf. . . .
(PTX-17 at 1).
69.
Tynan copied Prosecution Counsel Levy to make him aware of Batton’s email. (Id.;
Tynan Bench Trial Tr. at 101 (“Anything that might harm the process or harm our
chances of getting our patent would have concerned me and I would have wanted to
make counsel aware of it.”)).
70.
More than a year later, in March of 2007, Ralf Quack, principal of Entex’s U.S. sales
representative, Triad Sales, LLC, accompanied Batton to a meeting with Tynan
during which Batton raised the issue of Intertape’s pending application for the ‘416
patent. (ITX-52; Tynan Bench Trial Tr. at 157).
71.
At that meeting, Batton argued to Tynan that Intertape was trying to patent Entex’s
process because, before Intertape ran trials with Entex in 2003, Entex had already
used back-cut spindles to masticate rubber. Batton also argued that he had
introduced this technology to Kovach and Lombardo at the 2003 NPE. (ITX-52 at 2;
17
Tynan Bench Trial Tr. at 157-58). Batton accused Tynan of stealing Entex’s
technology. (Filing No. 493-9, Quack Dep. Tr. at 114-15; Tynan Bench Trial Tr. at
158).
72.
Tynan retorted that Intertape was the first to come up with the idea of compounding
pressure-sensitive adhesives in a PRE using a back-cut spindle. (ITX-52 at 2; Tynan
Bench Trial Tr. at 158 (“[W]e’re not trying to patent protect the processing or
compounding of elastomers in a PRE. What we’re trying to do is protect the
compounding of a pressure-sensitive adhesive in a PRE with a non-thermoplastic
elastomer. So the scope of our work was much more narrower [sic] than what Entex
had apparently been doing before us.”)). He also mentioned that Intertape previously
learned of PREs and back-cut spindles at Battenfeld, and that Battenfeld had
designed back-cut spindles that Entex did not have. (Tynan Bench Trial Tr. at 15859; ITX-52 at 2).
73.
Quack, who witnessed the disagreement between Tynan and Batton, testified that
both Tynan and Batton “are very honest, sincere, and they mean absolutely what they
say.” (Quack Dep. Tr. at 117).
74.
Batton did not offer any evidence, either during or after the March 2007 meeting, to
support his accusation that Entex had first conceived of the invention claimed in the
‘416 patent and that Intertape had stolen it. (Tynan Bench Trial Tr. at 160). Tynan,
therefore, did not believe that Batton’s inventorship argument had merit. (Id.).
75.
Intertape continued to work with Entex to conduct PRE tests after the 2007 meeting
among Tynan, Batton, and Quack, but neither Batton nor anyone else from Entex
18
questioned the Inventors’ status as inventors or took issue with Tynan’s explanation
until after the dispute at issue in this case arose. (Id.). As explained by Quack,
Entex’s position was that, until the PTO granted or rejected the patent, Entex could
do nothing. (Quack Dep. Tr. at 120-21).
76.
At the bench trial, Tynan testified that when he signed the Inventor’s Declaration in
the ‘416 patent application, it “never crossed his mind” to name anyone from Entex
as a co-inventor. (Tynan Tr. at 151).
I.
‘416 Patent Prosecution
1.
77.
Prior Art Status of PREs with Back-Cut Spindles
During the prosecution of the ‘416 patent, Intertape submitted five information
disclosure statements (“IDS statements”). (Levy Tr. at 30; ITX-1 at 104-06, 245-46,
356-58, 444-46, 449-53). None of the IDS statements mention that the Entex PRE
including the double transversal mixing spindles comprising a plurality of back-cut
helical flights is actually prior art for processing elastomers. (Id.).
78.
The PRE, as set forth in the claims, which includes at least one back-cut spindle, is
not listed on the cover of the ‘416 patent as a cited reference. (ITX-66 (cover page
and “References Cited”)).
79.
The specification of the ‘416 patent provides that PREs “have been known and have
typically been used in processing of thermoplastics such as PVC. . . .” (Id., col. 1, ll:
39-40).
80.
The specification of the ‘416 patent does not use the words “prior art” in its
description of back-cut planetary spindles, but it does state that: “Planetary roller
19
extruders having double transversal spindles 28 are commercially available from
Rust-Mitschke-Entex.” (Id., col. 4, ll:50-52; Tynan Tr. at 87).
81.
Levy thought the sentence in the patent specification stating that PREs with the
claimed back-cut spindles were commercially available from Entex put the Examiner
on notice that the claimed spindle was in the prior art. (Levy Tr. at 24). Levy also
stated:
I have prosecuted many patent applications through the Patent Office,
and the examiners almost routinely, when they come across a sentence
in a patent application that says this element is – this piece of
equipment is commercially available, they will use that as a basis for
rejection. So I think that, again, the examiners interpret the disclosure
in the application as an indication that it is prior art and then shift the
burden to the patent applicant to prove it is not.
(Id. at 8).
82.
Intertape’s expert, Dr. Rauwendaal, opined, “It’s clearly commercially available, so
if it’s commercially available, clearly it’s prior art.” (Rauwendaal Tr. at 133).
83.
The ‘416 patent also uses the words “commercially available” to describe other prior
art equipment in addition to PREs. For example, the ‘416 patent states, “One
example of such a [slot die] is commercially available from SIMPLAS and is shown
in Fig. 4.” (‘416 patent, col. 5, ll:49-52; Tynan Bench Trial Tr. at 169-70).
2.
Prior Art References
a.
84.
D4 Reference
The D4 reference (DE 2719095), a German patent reference, was submitted by 3M in
September 7, 2007, during the opposition proceedings addressed above. (See
Findings of Fact, § B). The D4 reference illustrates a PRE with spindles having
20
openings in the flights, and is prior art to the ‘416 patent claims. (PTX-150 at 1819). U.S. Patent No. 4,192,617 (“Spielhoff”) is the U.S. equivalent of D4.
85.
D4 was not listed as prior art in the ‘416 patent application.
86.
The Applicants did not recall ever seeing D4. (Kane Dep. Tr. at 66-67; Tynan Bench
Trial Tr. at 62, 64-65; Levy Bench Trial Tr. at 14-15).
87.
Berry failed to establish, through testimony or documentary evidence, that anyone
from Intertape, including the Applicants, were aware of D4 or Spielhoff during the
prosecution of the ‘416 patent application.
b.
88.
The Hawrylco and Beiersdorf Patents
The Hawrylco patent, U.S. Patent No. 5,536,462, and the Beiersdorf patents 4 were
disclosed to the Examiner by an IDS statement. (ITX-1 at 105 (IDS sheet listing
Beiersdorf patents), 358 (IDS sheet listing Hawrylco)).
89.
Hawrylco discloses a twin screw extruder for the processing of a thermoplastic
elastomer, polyvinyl chloride resin. (PTX-273, Hawrylco patent). Hawrylco teaches
that the use of back-cut slots in the helical flights “allow back flow of the masticating
melt, increase the shear action and turbulence of mixing.” (Id., col. 6, ll:40-43).
90.
As addressed above, 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).
4
The two Beiersdorf patents, U.S. Patent No. 6,506,447 and U.S. Patent No. 6,780,271, have
essentially the same disclosure. (Levy Tr. at 16).
21
91.
Claim 1 claims that this process is “mastication-free.” (Id.).
92.
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).
3.
93.
Examiner’s Rejection of the ‘827 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, taken in view of Hawrylko. (ITX-1 at 461-62; Levy Tr. at 100103).
94.
Intertape responded by arguing to the patent Examiner that the Beiersdorf patents
“teach away” from mastication, whereas Intertape’s process purposefully sought to
increase mastication by using back-cut spindles. (ITX-1 at 488-90; Levy Tr. at 2122).
95.
Intertape also argued that Hawrylko “is limited to the processing of thermoplastic
materials and fails to provide any teaching with respect to processing of nonthermoplastic materials.” (ITX-1 at 489). And although Hawrylco disclosed the use
of back-cut mixing elements in a twin screw extruder, Intertape asserted the teaching
was not sufficient to prove obviousness because the reference was not directed to the
production of pressure-sensitive adhesives from a non-thermoplastic elastomer in a
PRE. (Id. at 489-90; Levy Tr. at 22-23).
22
96.
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).
II.
1.
CONCLUSIONS OF LAW
To the extent any of the foregoing findings of fact is a conclusion of law, it is
hereby adopted as a conclusion of law. To the extent any of the conclusions of
law set forth below is a finding of fact, it is hereby adopted as a finding of fact.
2.
“Inequitable conduct is an equitable defense to patent infringement that, if proved,
bars enforcement of a patent.” Therasense, Inc. v. Becton, Dickinson and Co., 649
F.3d 1276, 1285 (Fed. Cir. 2011).
3.
“Inequitable conduct includes affirmative misrepresentations of material fact,
failure to disclose material information, or submission of false material
information, coupled with an intent to deceive.” Novo Nordisk Pharms., Inc. v.
Bio-Tech. Gen. Corp., 424 F.3d 1347, 1359 (Fed. Cir. 2005) (internal quotation
marks and citations omitted).
4.
“‘To prove inequitable conduct, the challenger must show by clear and convincing
evidence that the patent applicant (1) misrepresented or omitted information
material to patentability, and (2) did so with the intent to deceive the PTO.’”
Network Signatures, Inc. v. State Farm Mut. Auto. Ins. Co., 731 F.3d 1239, 1242
(Fed. Cir. 2013) (quoting In re Rosuvastatin Calcium Patent Litig., 703 F.3d 511,
519 (Fed. Cir. 2012)).
23
5.
Prior art is material to patentability if it is “but-for material.” Therasense, 649
F.3d at 1291. “When an applicant fails to disclose prior art to the PTO, that prior
art is but-for material if the PTO would not have allowed the claim had it been
aware of the undisclosed prior art.” Id. In making this assessment, the court in a
sense steps into the shoes of the PTO and applies the preponderance of the
evidence standard and gives claims their broadest reasonable construction. Id. at
1291-92.
6.
A reference is not but-for material if it is merely cumulative. See, e.g., Dig.
Control, Inc. v. Charles Mach. Works, 437 F.3d 1309, 1319 (Fed. Cir. 2006).
7.
A reference is cumulative if it “teaches no more than what a reasonable examiner
would consider to be taught by the prior art already before the PTO.” Regents of
the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1575 (Fed. Cir. 1997).
8.
The accused infringer must also prove that the patentee acted with a specific intent
to deceive. Thersasense, 649 F.3d at 1290.
9.
“[A] finding that particular conduct amounts to ‘gross negligence’ does not of
itself justify an inference of intent to deceive; the involved conduct, viewed in
light of all the evidence, including evidence indicative of good faith, must indicate
sufficient culpability to require a finding of intent to deceive.” Kingsdown Med.
Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 876 (Fed. Cir. 1988).
10.
“‘In a case involving nondisclosure of information, clear and convincing evidence
must show that the applicant made a deliberate decision to withhold a known
material reference.’” Therasense, 649 F.3d at 1290 (quoting Molins PLC v.
24
Textron, Inc., 48 F.3d 1172, 1181 (Fed. Cir. 1995)) (emphasis in Therasense).
11.
Stated differently, the accused infringer must prove “by clear and convincing
evidence that the applicant knew of the reference, knew that it was material, and
made a deliberate decision to withhold it.” Id.
12.
Specific intent to deceive may be inferred from indirect and circumstantial
evidence. Id.
However, to meet the clear and convincing evidence standard, the
specific intent to deceive must be the single most reasonable inference
able to be drawn from the evidence. Indeed, the evidence must be
sufficient to require a finding of deceitful intent in the light of all the
circumstances. Hence, where there are multiple reasonable inferences
that may be drawn, intent to deceive cannot be found.
Id. at 1290-91 (internal citations and quotation marks omitted) (emphasis in
original).
A.
13.
The Prior Art Status of PREs with Back-Cut Spindles
The PRE as set forth in the claims of the ‘416 patent is prior art to the claims and
is material to patentability. (Filing No. 356 at 2 (Stipulations)). The prior art
PRE’s were not made of record before the PTO and are thus not cumulative of any
prior art before the ‘416 patent Examiner.
14.
Berry’s inequitable conduct claim hinges on the “commercially available”
sentence in column 4 of the ‘416 patent specification: “Planetary roller extruders
having double transversal spindles 28 are commercially available from RustMitschke-Entex.” (‘416 patent, col. 4, ll: 50-52). Berry argues that the
“commercially available” statement did not put the patent Examiner on notice that
25
PREs with back-cut spindles were in the prior art. This is best exemplified, Berry
argues, in the Examiner’s rejection of the ‘416 patent as obvious in light of the
Beiersdorf patents “taken in view of Hawrylco.” (ITX-1 at 461).
15.
The Examiner found that the lone element of the ‘416 patent independent claims
not expressly taught by the Beiersdorf patents was the claimed spindle. (Id.
(finding all steps present in the Beiersdorf patents, but they “lack a teaching that at
least one of the planetary spindles is a double transversal mixing spindle
comprising a plurality of back-cut helical flights.”)). The Examiner pointed to the
“of course” teaching of the Beiersdorf patents and the twin-screw Hawrylco
reference arguing it “would have been obvious for one having ordinary skill in the
art to have added slots/back-cuts in the helical flights of at least one of the
planetary spindles in the process of [the Beiersdorf patents], upon seeing the prior
art Hawrylco, in order to increase mixing and shear action . . . .” (Id. at 461-62).
16.
The Applicants responded to the Examiner as follows:
The [Hawrylco] reference is limited to the processing of thermoplastic
materials and fails to provide any teaching with respect to processing
of non-thermoplastic materials. Furthermore, the reference fails to
provide any teaching with respect to the use of a planetary roll[er]
extruder as set forth in the claims of the pending application.
(Id. at 489).
17.
According to Berry, the Examiner would not have cited the inferior Hawrylco
reference if the Examiner had known that PREs with back-cut spindles were prior
art for rubber compounding applications; instead, the Examiner would have relied
on the prior art PREs with back-cut spindles to find the invention claimed in the
26
‘416 patent application obvious.
18.
The court rejects Berry’s argument for three reasons. First, had Prosecution
Counsel and the Inventors (collectively the “Applicants”) sought to conceal the
existence of PREs with back-cut spindles from the Examiner’s knowledge, they
would not have inserted the “commercially available” statement in column 4 of the
‘416 patent specification. Indeed, “[t]he Federal Circuit has consistently held that
disclosure of a reference to the PTO within the specification of a patent
application is indicative of lack of intent to deceive.” TecSec, Inc. v. Int’l Bus.
Machs. Corp., 763 F.Supp.2d 800, 813 (E.D. Va. 2011); see Bayer AG v. Housey
Pharm., Inc., 128 Fed. Appx. 767, 770 (Fed. Cir. 2005) (patentee did not
knowingly withhold references, but rather disclosed them in specification);
Andrew Corp. v. Gabriel Elec., Inc., 847 F.2d 819, 823-24 (Fed. Cir. 1988)
(patentee disclosed prior art generically in the patent application, thus showing no
intent to withhold); Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1568 (Fed.
Cir. 1984) (The patentees “describe[d the PX-15 device] in column 1 of their
patent application as prior art . . . . This disclosure is inconsistent with intent to
perpetrate fraud on the PTO.”); Grantley Patent Holdings, Ltd. v. Clear Channel
Commc’ns, Inc., 540 F.Supp.2d 724, 730 & n.4 (E.D. Tex. 2008) (no evidence that
patentee made deliberate decision to withhold a reference—the “Maxagrid
inventory management system”—because he disclosed this system in his patent
specification and described it as “[c]ommercially available”).
19.
Second, patent Examiners are “persons of scientific competence in the fields in
27
which they work,” In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003), and they “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,” PowerOasis, Inc. v. T-Mobile
USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (internal quotation marks and
citation omitted). The Examiner, therefore, was likely not led astray from the
Applicants’ use of the word “commercially available” as opposed to “prior art.”
20.
Lastly, the Examiner’s reliance on Hawrylco is not indicative of her failure to
appreciate that PREs can be equipped with back-cut spindles. The basis of her
rejection assumes that PREs can be fitted with back-cut spindles. The issue before
her was whether a person of ordinary skill in the art would read the ‘447 patent’s
“of course” language and be motivated to combine the teaching of the ‘447 patent
with a back-cut spindle for purposes of compounding rubber-based adhesives.
The Applicants’ response, therefore, was based on the motivation to combine, and
not on whether back-cut spindles were or were not available as prior art.
21.
Consequently, the court cannot conclude that the only reasonable inference from
the evidence is that the Applicants intended to deceive the PTO regarding the prior
art status of PREs with back-cut spindles.
22.
Based on the foregoing, Berry has failed to prove, by clear and convincing
evidence, that the Applicants withheld the prior art status of PREs with back-cut
spindles with the specific intent to deceive the PTO.
B.
23.
The Alleged Misconduct Involving the Beiersdorf Patents
In response to the Examiner’s rejection of the ‘827 application, the Applicants
28
argued that the Beiersdorf patents “clearly teach away from any process that
involves mastication,” and that “the importance of the process being masticationfree is evidenced throughout the ‘447 patent.” (ITX-1 at 488-89). The Applicants
also stated, “In fact, one of ordinary skill in the art considering the teachings of
these references would never consider adding a double transversal planetary
spindle to a standard planetary roller extruder to increase mastication because of
the repeated references in these documents emphasizing that the process should be
mastication-free.” (Id. at 490). Thus, Intertape asserted, “Applicants’ inclusion of
a double transversal planetary spindle to induce additional mastication goes
counter to the teachings in the prior art and represents a novel and non-obvious
advancement in the art.” (Id.).
24.
Berry asserts the Applicants’ response to the Examiner’s rejection was based on a
false premise, as the Applicants knew the Beiersdorf patents’ claimed process was
not “mastication-free.” The Applicants knew the process was not masticationfree, Berry continues, because the Applicants monitored the 3M Opposition,
conducted their own tests, and learned from Dr. Gereke what the Beiersdorf
patents meant by the term “mastication-free.” Had the Examiner been informed of
this error in the Beiersdorf patents, Berry continues, she would have rejected the
Applicants’ assertions and maintained the rejection of the claims. Intertape asserts
that the Applicants’ response was mere attorney argument, and thus, does not
constitute an affirmative misrepresentation of a material fact.
25.
Under Federal Circuit law, where a patentee has submitted a reference for the PTO
29
to review, the patentee “is free to advocate its interpretation of its claims and the
teachings of the prior art,” and the Examiner “is free to accept or reject the
patentee’s arguments” based on the Examiner’s own review of the prior art.
Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1379 (Fed. Cir. 2008)
(affirming summary judgment in favor of patent holder on inequitable conduct
claim); accord Young v. Lumenis, Inc., 492 F.3d 1336, 1349 (Fed. Cir. 2007)
(“The Examiner had the [reference] to refer to . . . and the Examiner was free to
reach his own conclusions and accept or reject [the patentee’s] arguments.”); Akzo
N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1482 (Fed. Cir. 1986) (“The
Examiner was free to reach his own conclusion regarding the [invention] based on
the prior art in front of him.”).
26.
A patentee’s arguments regarding the teachings of the reference are not factual
representations upon which a claim of inequitable conduct can be based. Young,
492 F.3d at 1349 (“We . . . fail to see how the statements in the October 2005
Response, which consist of attorney argument and an interpretation of what the
prior art discloses, constitute affirmative misrepresentations of material fact.”);
Life Techs., Inc. v. Clontech Labs., Inc., 224 F.3d 1320, 1326 (Fed. Cir. 2000)
(“[T]he inventors merely advocated a particular interpretation of the [prior art] . . .
. This argument did not contain any factual assertions that could give rise to a
finding of misrepresentation.”); Akzo, 808 F.2d at 1482 (“The mere fact that
DuPont attempted to distinguish the [invention] from the prior art does not
constitute a material omission or misrepresentation.”).
30
27.
Berry asserts the Applicants’ false representations about the Beiersdorf patents’
“mastication-free” process “exceeded the bounds of acceptable argument by
misrepresenting the content of the prior art during prosecution of the ‘416 patent
and thus what one skilled in the art would understand.” See Parkervision, Inc. v.
Qualcomm Inc., 2013 WL 230179, at *4 (M.D. Fla. Jan. 22, 2013) (representations
to the PTO about the prior art may “exceed […] the bounds of acceptable
argument if they were based on distorted facts or were contrary to what a person
of skill in the art would understand a reference to disclose.”).
28.
A patentee, however, does not commit inequitable conduct by making arguments
about what certain references teach, while simultaneously failing to disclose
information that shows the teaching of the reference is wrong. See Ortho-McNeil
Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358 (Fed. Cir. 2008).
29.
In Ortho-McNeil, supra., Mylan (the alleged infringer) argued that Ortho-McNeil
(the patentee) made a misrepresentation to the PTO by stating that the Kochetkov
reference taught that certain compounds had no utility even though OrthoMcNeil’s in-house test results demonstrated that the compounds had useful
anticonvulsive properties. Id. at 1363. The district court found, and the Federal
Circuit agreed, that Ortho-McNeil did not make any misrepresentations on that
basis:
The quoted passage merely accurately characterizes the references as
claiming limited utility for the Kochetkov compounds. Ortho-McNeil
made no assertions about the compounds themselves, but only
repeated the disclosures of the Kochetkov references. . . . Read in
context, the Kochetkov references do not disclose any utility. On this
31
point, [Ortho-McNeil] is correct. Moreover, [Ortho-McNeil] did not
assert that the compounds themselves possessed no utility. Thus,
Ortho-McNeil made no misrepresentations to the Patent Office.
Id.
30.
Here, the Applicants disclosed the Beiersdorf patents to the PTO and made
arguments about the teachings of the Beiersdorf patents—not about the Beiersdorf
process as practiced. Under Ortho-McNeil, such conduct does not constitute
inequitable conduct. Moreover, the Applicants’ arguments about the teachings of
the Beiersdorf patents do not constitute factual misrepresentations upon which a
claim of inequitable conduct can be based. The court finds the Applicants’
arguments in response to the Examiner’s rejection were proper and are supported
by the text of the Beiersdorf patent.
31.
Based on the authorities cited above, Berry has failed to prove, by clear and
convincing evidence, that the Applicants committed inequitable conduct by
making arguments for patentability based on the teachings of the Beiersdorf
patents or by failing to disclose their suspicions that the Beiersdorf patents, as
practiced, produce some level of mastication.
C.
The Failure to Disclose the DIK Paper
32.
The DIK Paper is prior art to the ‘416 patent.
33.
It discloses that a PRE can be used to compound rubber-based formulations, and
also discloses that such a system can be equipped with spindles that fall within the
claimed spindles of the ‘416 patent. (See PTX-37).
34.
The Applicants disclosed this same information in the ‘416 patent specification
32
and through disclosure of the Beiersdorf patents.
35.
The information is cumulative and, therefore, not material.
36.
But even if the DIK Paper was but-for material, the Applicants were unaware of
the reference. Although Batton testified that he handed a copy of the DIK Paper
along with other materials to Kovach and Lombardo at the NPE in Chicago,
Illinois, the Inventors deny ever having received the document. Likewise,
Prosecution Counsel deny having possession of any written materials from Entex,
including the DIK Paper, during the prosecution of the ‘416 patent. The court
finds no reason to doubt the Applicants’ testimony.
37.
Berry has thus failed to prove, by clear and convincing evidence, that the
Applicants committed inequitable conduct by making a deliberate decision to
withhold a copy of the DIK Paper from the PTO with the specific intent to
deceive.
D.
38.
Failure to Name Luechtefeld as a Co-Inventor and to Disclose the
August 29 Emails
An “inventor” is the person who conceived of the patented invention. C.R. Bard,
Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352 (Fed. Cir. 1998).
39.
“Patent issuance creates a presumption that the named inventors are the true and
only inventors.” Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed.
Cir. 1998).
40.
Berry asserts the ‘416 patent is invalid because the Inventors derived the claimed
subject matter from Luechtefeld of Entex, as exemplified by the August 29 emails.
33
Pannu v. Iolab Corp., 155 F.3d 1344, 1349-50 (Fed. Cir. 1998) (“[T]he naming of
the correct inventor or inventors [is] a condition of patentability; failure to name
them renders a patent invalid.”). To establish derivation, a party challenging the
patent’s validity must establish two elements: (1) prior conception of the invention
by another, and (2) communication of the conception to the patentee. Gambro
Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1576 (Fed. Cir. 1997).
41.
Conception is “the completion of the mental part of the invention,” and occurs
“only when the idea is so clearly defined in the inventor’s mind that only ordinary
skill would be necessary to reduce the invention to practice, without extensive
research or experimentation.” Burroughs Wellcome Co. v. Barr Labs., Inc., 40
F.3d 1223, 1227-28 (Fed. Cir. 1994).
42.
“[W]hen a party seeks to prove conception through the oral testimony of a putative
inventor, the party must proffer evidence corroborating that testimony.” Shu-Hui
Chen v. Bouchard, 347 F.3d 1299, 1309 (Fed. Cir. 2003). Corroborating evidence
is preferably shown by a contemporaneous disclosure. Burroughs Wellcome, 40
F.3d at 1228.
43.
A person qualifies as a joint-inventor, and should be named as such under 35
U.S.C. § 116, if he or she contributes in some significant manner to the conception
or reduction to practice of the invention, and the contribution is not insignificant in
quality and does more than merely explain to the real inventors well-known
concepts or the current state of the art. Pannu, 155 F.3d at 1351. In making this
determination, the “court must determine what [the alleged co-inventor’s]
34
contribution was and then whether that contribution’s role appears in the claimed
invention.” Ethicon, 135 F.3d at 1461.
44.
According to Berry, Leuchtefeld’s machine test set-up, as shown in the “Test SetUp Email” dated August 29, 2003 (PTX-140), is the first corroborated conception
of the idea of PRE compounding of a natural rubber-based adhesive using multiple
barrel sections with each including at least one back-cut spindle. The email,
Berry continues, provided more than enough information to enable one skilled in
the art to make and use the Entex PRE to compound rubber-based adhesives as
described and claimed in the ‘416 patent. Thus, Berry asserts, Leuchtefeld is the
true inventor or, at the very least, should have been named as a co-inventor. As
further support for its argument, Berry maintains that the Inventors knew they
were not the true inventors of the ‘416 patent as evidenced by Batton’s complaints
“and the admission that the heart of the ‘416 patent was prior art to the applicants
that had been developed by Entex.” (Filing No. 517, Berry’s Conclusion of Law ¶
311).
45.
On August 29, Intertape received the first eight emails, which described the
features of the Entex PRE and included photographs of various planetary spindles,
including the Noppenspindel.
46.
Berry presented no evidence that the Applicants considered the first eight emails
material to patentability.
47.
The ninth email—the Test Set-Up Email—is material to patentability because it
disclosed a PRE with back-cut spindles for the purpose of manufacturing
35
adhesives from natural rubber.
48.
The parties presented conflicting evidence over whether Kovach, or anyone else at
Intertape, received the ninth email, known as the “Test Set-Up Email.” The email,
admitted as PTX-140, reflects that Roewer forwarded the email to Kovach, and
Roewer testified that he in fact forwarded the email to Kovach. Kovach testified
at the jury trial that he did not recall receiving it.
49.
The parties also presented conflicting evidence as to who conceived of the test set
up disclosed in the Test Set-Up Email. Luechtefeld testified that he alone
conceived of the test set-up. Kovach and St. Coeur testified that Intertape
designed the trials and that Entex did not make any recommendation or suggestion
about the type of spindle to use during the trials.
50.
Both Berry’s and Intertape’s witnesses were credible.
51.
Given this conflict in the evidence, the court finds that Berry failed to prove, by
clear and convincing evidence, that the Applicants’ believed Luechtefeld was the
true inventor and made a deliberate decision to withhold that information from the
PTO.
52.
And for the same reason, the court finds that Berry failed to prove, by clear and
convincing evidence, that Intertape failed to disclose the August 29 emails,
including Test Set-Up Email, from the PTO with intent to deceive.
E.
53.
Failure to Disclose D4 and Spielhoff
The Applicants testified that they were not aware of the D4 reference during the
prosecution of the ‘416 patent application.
36
54.
Berry did not develop any testimony or present any evidence to show that the
Applicants knew about Spielhoff during prosecution of the ‘416 patent.
55.
Berry has therefore failed to prove, by clear and convincing evidence, that the
Applicants made a deliberate decision to withhold D4 and its U.S. equivalent,
Spielhoff, from the PTO.
F.
56.
Failure to Disclose Prior Art Information from Maris
Berry asserts the ‘416 patent is not only invalid for Intertape’s failure to disclose
to the PTO the prior art status of PREs with back-cut spindles, but also for
Intertape’s failure to disclose the information it derived from Maris regarding
downstream solids addition which form the basis for dependent claims 7 and 3133.
57.
Berry, however, did not plead this as a basis for its inequitable conduct claim, it
was not disclosed in discovery, and it was not argued at the inequitable conduct
trial. Berry first raised this argument in its post-trial briefing.
58.
Allegations of inequitable conduct must be pled with particularity under Federal
Rule of Civil Procedure 9(b). See Exergen Corp. v. Wal-Mart Stores, Inc., 575
F.3d 1312, 1326-27 (Fed. Cir. 2009) (“Rule 9(b) requires identification of the
specific who, what, when, where, and how of the material misrepresentation of
omission committed before the PTO.”).
59.
Because Berry failed to plead any allegations regarding Maris, and failed to raise
the argument until a post-trial motion, Berry’s argument based on the information
Intertape learned from its visit to Maris in 2002 is waived. See Lazare Kaplan
37
Int’l, Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359, 1376 (Fed. Cir. 2010)
(“[L]itigants waive their right to present new claim construction disputes if they
are raised for the first time after trial.”); Cordis Corp. v. Boston Scientific Corp.,
561 F.3d 1319, 1331 (Fed. Cir. 2009) (“Raising this argument for the first time in
a motion for judgment as a matter of law . . . was too late.”).
60.
Even if Berry had raised the Maris allegations in a timely manner, the information
allegedly derived from Maris relates only to dependent claims 7 and 31-33.
61.
A dependent claim is necessarily patentable over the prior art if the independent
claim from which it depends is patentable. Ortho-McNeil, 520 F.3d at 1365.
62.
Here, Berry failed to prove, by clear and convincing evidence, that the Examiner
would not have allowed the independent claims of the ‘416 patent to issue if the
PTO had been aware of the prior art at issue. Consequently, if independent claims
1 and 21 would have issued notwithstanding the Maris information, then
dependent claims 7 and 31-33 would have issued as well, regardless of whether
any information relating to Maris had been disclosed.
63.
Furthermore, Berry did not offer any evidence that anyone associated with the
prosecution of the ‘416 patent made a deliberate decision to withhold information
relating to Maris.
64.
Therefore, even if the court were to consider the information allegedly derived
from the Maris 2002 visit, the court would still find that Berry had not proven, by
clear and convincing evidence, that the Applicants committed inequitable conduct
by failing to disclose the Maris information.
38
III.
CONCLUSION
For the reasons stated herein, the court finds that Berry has failed to prove, by
clear and convincing evidence, that Intertape’s ‘416 patent is unenforceable due to
inequitable conduct.
SO ORDERED this 25th day of August 2016.
__________________________________
RICHARD L. YOUNG, CHIEF JUDGE
United States District Court
Southern District of Indiana
Distributed Electronically to Registered Counsel of Record.
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