Recticel Automobilesysteme GmbH et al v. Automotive Components Holdings, LLC
Filing
55
OPINION AND ORDER Construing Disputed Claim Terms. Signed by District Judge Sean F. Cox. (JHer)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
RECTICEL AUTOMOBILESYSTEME
GMBH, AND RECTICEL INTERIORS
NORTH AMERICA, INC.,
Case No. 2:10-cv-14097-SFC
HON. SEAN F. COX
PLAINTIFFS,
v.
AUTOMOTIVE COMPONENTS
HOLDINGS, LLC
DEFENDANT.
OPINION AND ORDER CONSTRUING DISPUTED CLAIM TERMS
I.
INTRODUCTION
This is a patent infringement case. On December 6, 2011, the Court held a hearing to construe
the claim terms identified by the parties as being in dispute pursuant to Markman v. Westview
Instruments, 517 U.S. 370 (1996). The parties submitted written briefs in support of their positions
both before and after the hearing. Through conferences with the Court’s Technical Advisor, the
parties were able to agree on constructions for a number of claim terms. In this Opinion, the Court
will construe the six claim terms identified by the parties as being in dispute.
II.
BACKGROUND
Plaintiffs Recticel Automobilesysteme GmbH and Recticel Interiors North America, Inc.
(collectively “Recticel” or “Plaintiffs”) allege that Defendant Automotive Components Holdings LLC
(hereinafter “ACH”) has infringed U.S. Patent No. 6,071,619, entitled “Method and Spray Mould
Assembly for Manufacturing an Elastomeric Skin of at Least Two Elastomeric Materials and
Elastomeric Skin.”
The patent generally relates to a method for molding two-color interior
1
automotive trim parts out of plastic (such as a dashboard) that can be made to look like leather. The
patent generally describes a process of covering one side of a mold with a cover, called a “mask,” and
spraying the other side of the mold with an elastomer of a first color. The mask is then removed and
the other side of the mold is sprayed with a different color elastomer.
The patent describes a problem that existed in the prior art with the above type of molding
method. When the liquid elastomer that is sprayed is in contact with both the mask and the mold
surface, a problem arises when the mask is removed. As the mask is pulled away, liquid elastomer
that is touching both the mask and the mold surface starts to string or form threads. As the mask is
pulled farther away from the mold surface, some of the threads drop into the side of the mold that was
previously covered by the mask resulting in a scrap part. As an analogy, one can think of the strings
or filaments of elastomer being akin to the cheese on a slice of pizza when the slice is removed from
the whole pizza. (‘619 Pat. col. 2 ll. 5-7.)
The patent teaches a solution to prevent or decrease the problem of stringing or threading. The
patent teaches having the edge of the mask not be in contact with the mold surface so that when
elastomeric material is sprayed on the mold, the elastomeric material sprayed on the mold does not
bridge or connect the surface of the mold and the mask. In other words, there is a gap or area between
the edge of the mask and the surface of the mold where no elastomer is sprayed. This concept can
be seen in the highlighted figures of the ‘619 Patent reproduced below, where the gap or area free of
elastomer is shown in red. By having this design, the elastomer does not bridge or connect the mask
and surface of the mold. When the mask is pulled away from the mold, threading or stringing does
not occur, or is at least less likely to occur.
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III.
LAW OF CLAIM CONSTRUCTION
Claims of a patent are short and concise statements, expressed with great formality, of the
metes and bounds of the patented invention. Each claim is written in the form of a single sentence.
Claim construction is the manner in which courts determine the meaning of the terms in the claim.
“The construction of claims is simply a way of elaborating the normally terse claim language: in order
to understand and explain, but not to change, the scope of the claims.” Scripps Clinic & Research
Foundation v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991).
The construction of key terms in patent claims plays a critical role in nearly every patent
infringement case. Claim construction is central to both a determination of infringement and validity
3
of a patent.
The judge, not a jury, is to determine the meaning of the disputed claim terms as a matter of
law. Markman v. Westview Instruments, 517 U.S. 370 (1996).
A judge has two primary goals in construing the disputed claim terms. The first goal is to
determine the scope of the patent by interpreting the disputed claim terms to the extent needed to
resolve the dispute between the parties. The second goal is to provide a construction that will be
understood by the jury who might otherwise misunderstand a claim term in the context of the patent
specification and prosecution history of the patent. See, e.g., Power-One, Inc. v. Artesyn Techs., Inc.,
599 F.3d 1343, 1348 (Fed. Cir. 2010) (“The terms, as construed by the court, must ‘ensure that the
jury fully understands the court’s claim construction rulings and what the patentee covered by the
claims.’”); U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim
construction is a matter of resolution of disputed meanings and technical scope, to clarify and when
necessary to explain what the patentee covered by the claims, for use in the determination of
infringement.”). The Court’s claim construction ruling forms the basis for the ultimate jury
instructions, although that is not to say that the Court cannot modify its wording for the jury
instructions at a later date. See IPPV Enters., LLC v. Echostar Commc’ns Corp., 106 F. Supp. 2d
595, 601 (D. Del. 2000).
The seminal case setting forth the principles for construing disputed claim terms is Phillips
v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). According to Phillips, the words of the
claim are generally given their ordinary and customary meaning – the ordinary and customary
meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the
art in question at the time of the invention. Id. at 1312-1313. The person of ordinary skill in the art
views the claim term in context of the entire intrinsic record, which is the entire claim, the other parts
4
of the patent, and, if in evidence, the prosecution history of the patent before the United States Patent
and Trademark Office. Id. at 1313-1314. Although a claim must be construed in context of the entire
patent and its prosecution history, the court should normally not read limitations or features of the
exemplary and preferred embodiments discussed in the patent’s written description and drawings into
the claims. Id. at 1323-1324.
The prosecution history of the patent can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and whether the inventor limited the
invention during the course of prosecution by his statements, making the claim scope narrower than
it would otherwise be. However, because the prosecution history is an ongoing negotiation between
the patent office and the patent owner, rather than the final product of that negotiation, it often lacks
the clarity of the patent itself and is generally less useful for claim construction purposes. Id. at 1317.
In discerning the meaning of claim terms, resorting to dictionaries and treatises may also be
helpful. Id. at 1320-1323. However, undue reliance on extrinsic evidence, such as dictionaries,
poses the risk that the dictionary definition will be used to change the meaning of claims in derogation
of the indisputable public records consisting of the claims, the specification of the patent and the
prosecution history, thereby undermining the public notice function of patents. Id.
In the end, the construction that stays true to the claim language and most naturally aligns with
the patent’s description of the invention will be the correct construction. Id. at 1316.
IV.
CLAIM CONSTRUCTION ANALYSIS FOR DISPUTED CLAIM TERMS
The parties have requested that the Court construe a number of claim terms. The Court will
address each disputed claim term in the following sections.
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A.
“ELASTOMERIC” IN CLAIMS 1-5, 19, AND 22
Disputed Claim
Term
Plaintiff’s Proposed
Construction
Defendant’s
Proposed
Construction
Court’s Construction
“elastomeric”
(Claims 1-5, 19,
22)
“Elastomeric” is a
property of a substance
such that the substance
is able to
approximately resume
its original shape when
a deforming force is
removed.
Stretchable and
light-stable
reaction product
of polyol and
isocyanate.
“Elastomeric” is a
property of a polymer or
rubber substance such that
the substance is able to
approximately resume its
original shape when a
deforming force is
removed.
The parties request that the Court construe the claim term “elastomeric” in Claims 1-5, 19,
and 22 of the ‘619 Patent.
By way of example, Claim 1 states as follows with the disputed claim language underlined:
1. A method for manufacturing an elastomeric skin with surface portions of at least
two elastomeric materials by spraying said elastomeric materials against a mould
surface, in which method a portion of said mould surface is shielded off by means of
a mask having at least one edge delimiting said mould surface portion, a layer of a
first elastomeric material is sprayed onto said mould surface and onto said mask edge,
said mask is removed, and a layer of a second elastomeric material is sprayed onto
said mould surface portion, characterized in that said mask edge is placed on top of
at least one upstanding edge on the mould surface, said upstanding edge delimiting
together with said mask edge said mould surface portion and said first elastomeric
material is sprayed onto one side of said upstanding edge.
Recticel argues that this “elastomeric” should be construed as follows: “‘Elastomeric’ is a
property of a substance such that the substance is able to approximately resume its original shape
when a deforming force is removed.”
ACH proposes the following construction: “Stretchable and light-stable reaction product of
polyol and isocynate.”
Recticel argues that ACH’s proposed construction violates the rule of claim construction
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that preferred embodiments from the written description section of the patent should not be read into
the claims. Recticel argues that “elastomeric” is a broader term than a reaction product of polyol and
isocyanate and may include other types of elastomers not made from a polyol and isocyanate.
Recticel points to dictionary definitions of “elastomer” or “elastic.” Those related dictionary
definitions include “any of various elastic substances resembling rubber;” “capable of recovering
shape or size after being stretched, pressed or squeezed together;” “a natural synthetic polymer having
elastic properties, e.g. rubber;” and “an elastic rubber like substance.”
ACH agrees that the root “elast” in “elastomeric” or “elastomer” refers to a “stretchable
property of a material.” (ACH’s resp. br. at 7, Dkt. No. 33.)
ACH also quotes from various
dictionaries that define “elastomer”, for example, to mean “elastic rubber like substance” and
“elastic” to mean “capable of being easily stretched or expanded and of snapping back or resuming
former shape.” However, ACH argues that Recticel’s proposed construction for “elastomeric” is
overly broad and encompasses thousands of materials with rubber like properties, while the written
description of the ‘619 Patent describes the elastomeric material as being a light stable reaction
product of a polyol and isocyanate.
The first issue that must be addressed is whether the elastomer should be limited to a “reaction
product of polyol and isocynate” as argued by ACH.
In coming to the proper construction for a disputed claim term, the Court starts with the
language of the claim itself. The disputed claim term “elastomeric” is used in the claims as an
adjective to describe the type of materials sprayed into the mold (i.e., “elastomeric materials”) and
the ultimate end product (i.e., an “elastomeric skin”). The claim term “elastomeric” on its face is not
limited to a reaction product of a polyol and isocyanate. The term simply describes the component
materials and end product as a polymer or rubber having elastic properties (stretchable, flexible, etc.).
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Next, in order to interpret the disputed claim term, the Court turns to see how the disputed
claim term is used in the written description section of the patent. According to the Federal Circuit,
the written description, along with the claims, “is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.”
Phillips, 415 F.3d at 1315. The written description of the ‘619 Patent uses the term “elastomeric”
generally to refer to stretchable or elastic type of materials, but states that the typical material will be
polyurethane elastomers. For example, the introductory section of the written description states:
The present invention relates to a method for manufacturing an elastomeric skin
comprising surface portions of at least two elastomeric materials, in particular two
differently coloured polyurethane materials, by spraying said elastomeric materials
against a mould surface, . . . .
A first object of the present invention is to provide a method for manufacturing an
elastomeric skin of at least two elastomeric materials which allows to achieve an
aesthetic visual parting line between the elastomeric materials, for example in order
to produce dash-boards or other interior trim parts for the automotive industry in two
or more different colours.
*
*
*
A problem arising when using the masking technique for spraying viscous elastomeric
materials, in particular polyurethane reaction mixtures, is the formation of filaments
or threads of elastomeric material upon removing the mask due to the fact that the
sprayed layer of elastomeric material extends from the mould surface up to the mask.
(‘619 Pat. col. 1 ll. 6-23 and col. 1-2 ll. 66-4.)
The ‘619 patent also discusses “elastomeric” when describing its preferred or exemplary
embodiment:
As to the elastomeric materials used in the method according to the present invention,
reference is made in particular to the light-stable polyurethane elastomeric materials
disclosed in EP-A-0379246 of the present applicant, which is incorporated herein by
way of reference.
8
(‘619 Pat. col. 5 ll. 21-25.) None of the above language would signal to a person of ordinary skill in
the art that the term “elastomeric” should be understood to be limited to a reaction product of a polyol
and isocyanate. The above language is simply describing a preferred or exemplary embodiment of
the invention.
The ‘619 Patent sets forth a very specific example in a separate “example” section of the
patent. However, before discussing the example, the ‘619 Patent specifically states this embodiment
is an “example” and that the “skilled person will be able to conceive many different examples” based
on the teachings of the patent. (‘619 pat. col. 5 ll. 42-49.) The ‘619 Patent then goes on to disclose
the specific example. Specifically, the patent states:
In this position, a first elastomeric material 7, in particular a polyol-isocyanate
reaction mixture was sprayed on the uncovered mould surface and partially onto the
mask 4, at a flow rate of 25 g/sec., the polyol component pressure being 150 bars and
the pressure of the isocyanate component being 100 bars.
*
*
*
As soon as the first polyurethane reaction mixture was sprayed onto the mould surface
2, the mask 4 was removed and a second polyurethane reaction mixture 9, having the
same composition as the first one, except for the presence of 5 parts of grey colour
paste instead of black colour paste in the polyol component, was sprayed onto the
remaining portion 3 of the mould surface 2 and partially onto the layer of first reaction
mixture.
(Id. at col. 5-6 ll. 65-42.) It is clear that this section of the patent is simply describing an example and
is not limiting the scope of the claim to the product of a polyol and isocyanate.
The Court next turns to the prosecution history to see if the prosecution history sheds light
on how a person of ordinary skill in the art would understand the disputed claim term. As Recticel
points out, during prosecution, the Examiner of the United States Patent Office cited and discussed
prior art references which teach using elastomers that are not a reactive product made from a polyol
and isocyanate. For example, Recticel points out that the Examiner rejected the pending claims in
9
the first Office Action mailed October 19, 1998 as obvious based on U.S. Patent No. 5,370,831 and
U.S. Patent No. 5,328,723. The ‘831 Patent discloses spraying onto a mold surface particles selected
from “any powdered thermoplastic or thermosetting polymeric material,” which includes materials
that are not a reactive product of a polyol and isocyanate. (‘831 Pat. col. 3 ll. 40-46.) Likewise, the
‘723 Patent does not teach limiting the elastomer to a “reaction product of a polyol and an
isocyanate.” This evidence implies that the Examiner and Recticel understood that the term
“elastomer” was not limited to a reactive product of a polyol and isocyanate. The Court finds that the
prosecution history supports Recticel’s position that the term “elastomeric” is not limited to the
“reactive product of a polyol and isocyanate.”
Accordingly, after considering all of the parties’ arguments and the evidence presented, the
Court will not limit the claim term “elastomeric” to the product of a polyol and isocyanate.
The next issue that must be addressed is whether the term “elastomeric” should be limited to
“light-stable” materials. At the outset, the term elastomeric is used many times in the specification
without any mention that the material must be light-stable. In support of its argument that elastomeric
materials should be limited to light-stable materials, ACH points to the following statement in the
written description, which describes an optional foam backing layer: “This further layer may be a
light-stable elastomeric layer like the first and second elastomeric materials or it may be a not [sic]
light-stable elastomeric layer.” (Id. at col. 3 ll. 15-17.) ACH argues that this language, by
implication, means that the “elastomeric materials” must be light-stable materials. The Court finds
that this statement in the written description describes a preferred embodiment and does not
intentionally limit the claim language. The Court finds that using a light-stable elastomer is a
preferred embodiment, but the specification as a whole does not signal that the elastomers must be
light-stable.
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Accordingly, the Court adopts Recticel’s proposed construction: “Elastomeric” is a property
of a polymer or rubber substance such that the substance is able to approximately resume its original
shape when a deforming force is removed.
B.
“SKIN” IN CLAIMS 1, 5, 19, AND 22
Disputed Claim
Term
Plaintiff’s
Proposed
Construction
“skin”
“Skin” means the
(Claims 1, 5, 19, 22) outer layer(s) of a
product, including
the surface,
particularly for
automotive trim
components.
Defendant’s
Proposed
Construction
A self-supporting
layer capable of
being de-molded.
Court’s
Construction
The Court finds that
this claim term does
not need to be
construed as it will
be understood by a
jury in the context
of the claimed
invention.
The parties request that the Court construe the claim term “skin” in Claims 1-5, 19, and 22
of the ‘619 Patent.
By way of example, Claim 1 states as follows with the disputed claim language underlined:
1. A method for manufacturing an elastomeric skin with surface portions of at least
two elastomeric materials by spraying said elastomeric materials against a mould
surface, in which method a portion of said mould surface is shielded off by means of
a mask having at least one edge delimiting said mould surface portion, a layer of a
first elastomeric material is sprayed onto said mould surface and onto said mask edge,
said mask is removed, and a layer of a second elastomeric material is sprayed onto
said mould surface portion, characterized in that said mask edge is placed on top of
at least one upstanding edge on the mould surface, said upstanding edge delimiting
together with said mask edge said mould surface portion and said first elastomeric
material is sprayed onto one side of said upstanding edge.
Recticel argues that “skin” should be construed as follows: “the outer layer(s) of a product,
including the surface, particularly for automotive trim components.”
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ACH proposes the following construction: “A self-supporting-layer capable of being demolded.”
Recticel argues that the ‘619 Patent uses the term “skin”, or “elastomeric skin,” to simply
describe the outer layer or layers of the product. Recticel argues that ACH’s proposed construction
is improper and argues that ACH is trying to read a limitation or feature of the examples from the
written description section of the patent into the claims.
ACH argues that its construction is correct because in order for the elastomeric skin to be
removable from the mold, the outer surface layer of elastomeric materials must be thick enough to
be self-supporting (i.e., “a self-supporting layer capable of being demolded”). ACH appears to be
arguing that a skin layer itself must be sufficiently self-supporting so as to be removable from the
mold. Under ACH’s proposed construction, the claim language would not appear to cover a
configuration having a thin non-demoldable outer elastomeric layer that is combined with some other
non-elastomeric layer which allows the combination to be demoldable.
After considering the arguments and evidence of the parties, the Court finds that the intrinsic
and extrinsic evidence as a whole does not weigh in favor of limiting the term “skin” to “a selfsupporting layer capable of being demolded” as argued by ACH. The Court finds that the
specification of the ‘619 Patent uses “skin” in a general way to describe the outer elastomeric layer(s)
of the manufactured product.
According to the Federal Circuit’s precedent on claim construction, in construing a disputed
claim term, the Court is to start with the language of the claim itself. The Court finds that the claims
use the term “skin” in a general way and do not support limiting the term “skin” to “a self-supporting
layer capable of being demolded” as argued by ACH. For example, independent Claim 1 begins by
stating: “A method for manufacturing an elastomeric skin with surface portions of at least two
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elastomeric materials. . . .”
(‘619 Pat. col. 6 ll. 66-67.) By using the language “surface portions,”
this claim implies that the term “skin” is not limited to a single layer contrary to what appears to be
ACH’s position (“a self-supporting layer capable of being demolded”).1 Moreover, this claim
language uses the term “skin” in a general way and does not support limiting the term “skin” to
products that are demoldable as argued by ACH.
Next, according to the Federal Circuit’s rules for interpreting claim language, the Court will
consider how the disputed claim term is used in the written description. The Court finds that the
written description uses the term “skin” in general terms and does not limit skin to “a self-supporting
layer capable of being demolded” as argued by ACH. The written description describes the invention
generally as a method for manufacturing an elastomeric skin for use in interior trim components of
automobiles. The written description makes clear that the elastomeric skin comprises “surface
portions of at least two elastomeric materials,” which again implies that the skin is not limited to a
single layer, but may be comprised of multiple layers. Specifically, the written description states:
The present invention relates to a method for manufacturing an elastomeric skin
comprising surface portions of at least two elastomeric materials, in particular two
differently coloured polyurethane materials, by spraying said elastomeric materials
against a mould surface, . . . .
A first object of the present invention is to provide a method for manufacturing an
elastomeric skin of at least two elastomeric materials which allows to achieve an
aesthetic visual parting line between the elastomeric materials, for example in order
to produce dash-boards or other interior trim parts for the automotive industry in two
or more different colours.
(Id. at col. 1 ll. 6-23.)
1
The Court assumes that ACH is not using the indefinite article “a” in its proposed claim
construction to mean “one or more,” which is patent parlance. KCJ Corp. v. Kinetic Concepts,
Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (stating that indefinite article “a” in patent claims
normally means “one or more”). A jury would not understand such patent parlance. The Court
assumes that ACH means to limit the scope of this claim term to a single layer.
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Other portions of the written description make clear that the additional layers of plastic can
be added to the back of the elastomeric layers and that the surface layer and the additional layers
together form the skin. Specifically, the ‘619 Patent states:
Both elastomeric materials 7,9 are usually applied in a layer of .1 to 5 mm, and
preferably in a layer of .2 to .5 mm. Subsequently, a further layer of plastic material,
whether coloured or not, can be applied against the back of the first elastomeric
materials to obtain a skin of the desired thickness and the thus produced skin can be
demoulded.
(Id. at col. 3 ll. 11-14.) This section of the written description of the patent clearly indicates that the
skin does not need to be a single layer. ACH argues that the previous above quoted section of the
written description supports its argument that the molded skin must be thick enough such that it is
self-supporting and can be removed from the mold. The Court disagrees. The above quoted section
of the written description discusses a preferred way for making a skin, but does not define the scope
of the word “skin” as being sufficiently thick that it is self-supporting and demoldable.
ACH also cites to a section of the written description entitled “EXAMPLE” to support its
proposed construction. In this section of the written description, the patent sets forth a very specific
example of the invention including the exact chemical formulation of the components, thicknesses
of the various layers, and the method used to make the invention. In this example, the patentee makes
clear that the optional additional plastic layers can be added to the back of the outer elastomeric
surface layers to make the skin. Specifically, the written description states:
In the present example, both elastomeric materials were applied in a layer of about 0.4
mm. Subsequently, a backing layer of a further elastomeric material 19 was sprayed
against the back of the first and second elastomeric materials to obtain a total skin
thickness of about 1 mm. This backing layer 19 was achieved by means of a lightstable uncoloured polyurethane reaction mixture having the same composition as the
first and the second polyurethane reaction mixture, the polyol component containing
however no colour paste.
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The thus produced skin was processed further to a dashboard by applying a
polyurethane foam layer 20 against the back thereof and a rigid support 21.
(Id. at col. 6 ll. 45-56.)
ACH argues that the above statements in the written description support its proposed
construction because they infer that the skin must be thick enough and self-supporting so that it can
be removed from the mold without damaging the skin. The Court disagrees. The Court finds that
the above quoted language was not intended to limit the meaning of the term “skin.” This language
is an example of a particular preferred way of using the invention. Moreover, this plastic backing
layer discussed in the above quoted section is set forth in dependent Claim 4 and is not required by
independent Claim 1.
The Court now turns to the extrinsic evidence. ACH argues that the prosecution history of
a separate Recticel European patent (EP-0379246) supports the understanding that the skin must be
sufficiently thick so that it can demolded. In the prosecution history of EP-0379246, Recticel made
a statement to the European Patent Office, which ACH argues shows that Recticel understood “skin”
to mean sufficiently thick to be “demoldable” as opposed to a coating which is not demoldable.
(ACH br. ex. G at p. 65, dkt. no. 33-8.) Although the Court has considered this extrinsic evidence
and has given it the appropriate weight in the claim construction analysis, the Court does not believe
that this extrinsic evidence is particularly strong. While the ‘619 Patent incorporates by reference EP0379246 for a type of elastomeric material that can be used in the invention, the ‘619 patent does not
incorporate the prosecution history of EP-0379246 to limit or define the meaning of “skin.” (‘619
Pat. col. 5 ll. 21-25.) See Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir.
2007) (“To incorporate material by reference the host document must identify with detailed
particularity what specific material it incorporates and clearly indicate where that material is found
15
in the various documents.”). Moreover, the claim in the then pending European patent application
explicitly stated that the skin is demoldable. (ACH br. ex. G at p. 67, dkt. no. 33-8.) In addition,
while the ‘619 Patent and EP-0379246 patent were commonly owned by Recticel, the patents are
otherwise unrelated, do not have common inventors, and it appears that the patent attorney who
drafted the European patent is not the same. See Goldenberg v. Cytogen, Inc., 373 F.3d 1158, 116768 (Fed. Cir. 2004) (holding that unrelated patents or prosecution histories are given little, if any,
weight).
After carefully considering the parties’ arguments and all the evidence presented, the Court
finds that the term “skin” as used in the disputed claims does not need to be construed. The term
“skin” as used in this automotive technology will be understood by the jury. The Court will not limit
the term “skin” to a “a self-supporting-layer capable of being de-molded.”
C.
“PLASTIC BACKING LAYER” IN CLAIM 4
Disputed Claim
Term
“Plastic backing
layer”
(Claim 4)
Plaintiff’s
Proposed
Construction
Defendant’s
Proposed
Construction
Court’s
Construction
“Plastic backing
layer” means one or
more layers of
plastic applied to the
back of the
elastomeric layers.
A backing layer of
foam, rigid material
or elastomeric
material.
This claim term will
be understood by a
jury and does not
need to be
construed.
The parties request that the Court construe the claim language “plastic backing layer” in Claim
4 of the ‘619 Patent. Claim 4 is a dependent claim that depends from Claim 1.
Claims 1 and 4 are reproduced below. The disputed claim language is Claim 4 is underlined:
1. A method for manufacturing an elastomeric skin with surface portions of at least
two elastomeric materials by spraying said elastomeric materials against a mould
surface, in which method a portion of said mould surface is shielded off by means of
16
a mask having at least one edge delimiting said mould surface portion, a layer of a
first elastomeric material is sprayed onto said mould surface and onto said mask edge,
said mask is removed, and a layer of a second elastomeric material is sprayed onto
said mould surface portion, characterized in that said mask edge is placed on top of
at least one upstanding edge on the mould surface, said upstanding edge delimiting
together with said mask edge said mould surface portion and said first elastomeric
material is sprayed onto one side of said upstanding edge.
4. A method according to claim 1, characterized in that a plastic backing layer is
applied against said layers of elastomeric materials.
Recticel argues that the term “plastic backing layer” should be construed as follows: “Plastic
backing layer means one or more layers of plastic applied to the back of the elastomeric layers.”
ACH proposes the following construction: “A backing layer of foam, rigid material or
elastomeric material.”
Neither side fully addressed this disputed claim term in their briefs.
Two particular sections of the written description of the patent, which are reproduced below,
discuss the plastic backing layer. These sections of the ‘619 Patent explain that after the initial
surface layers of elastomeric materials are sprayed in the mold, another layer of plastic material can
be sprayed or applied on the back of the first elastomeric materials. Specifically, the written
description of the ‘619 Patent states:
Both elastomeric materials 7, 9 are usually applied in a layer of 0.1 to 5 mm, and
preferably in a layer of 0.2 to 0.5 mm. Subsequently, a further layer of plastic material,
whether coloured or not, can be applied against the back of the first elastomeric
materials to obtain a skin of the desired thickness and the thus produced skin can be
demoulded. This further layer may be a light-stable elastomeric layer like the first and
second elastomeric materials or it may be a not [sic] light-stable elastomeric layer. The
density of this layer may even be reduced through the use of blowing agents and may
consequently consist of a foam layer for example as disclosed in WO 93/23237. This
PCT patent application moreover discloses to apply further layers, such as rigid
supports into the same mould 1 to manufacture an entire moulded piece therein. Of
course, such a rigid support could also be applied afterwards.
*
*
17
*
In the present example, both elastomeric materials were applied in a layer of about 0.4
mm. Subsequently, a backing layer of a further elastomeric material 19 was sprayed
against the back of the first and second elastomeric materials to obtain a total skin
thickness of about 1 mm. This backing layer 19 was achieved by means of a lightstable uncoloured polyurethane reaction mixture having the same composition as the
first an the second polyurethane reaction mixture, the polyol component containing
however no colour paste.
The thus produced skin was processed further to a dashboard by applying a
polyurethane foam layer 20 against the back thereof and a rigid support 21.
(Id. at col. 3 ll. 9-25 and col 6 ll. 45-56.)
Figure 13 of the patent illustrates one embodiment of a plastic backing layer 19 that forms part
of the elastomeric skin along with the first and second elastomeric layers 7 and 9.
After considering the parties’ arguments, the Court finds that “plastic backing layer” does not
need to be construed because this claim term will be readily understood by even a lay jury. The
parties have not explained why this claim term is relevant to the infringement or invalidity arguments
that may be made at trial. As the Court currently understands the issues in the case, this claim term
does not need to be construed.
18
D.
“MEANS FOR MAINTAINING . . . MASK EDGE AT A DISTANCE” IN CLAIM 19
Disputed Claim
Term
Plaintiff’s
Proposed
Construction
Defendant’s
Proposed
Construction
Court’s Construction
“Means for
maintaining…mask
edge at a distance”
(Claim 19)
The term “means for
maintaining …
mask edge at a
distance” is written
in 35 U.S.C. §112,
sixth paragraph
form.
This phrase is
incapable of
being construed
and is indefinite.
The Court finds that the
function set forth in the claim
is: “maintaining said mask
edge at a distance from said
mold surface such as to avoid
contact between the layer of
said first elastomeric material
sprayed onto the mold surface
and said mask.”
The corresponding structures
disclosed in the specification
for accomplishing the claimed
function are: (1) where an
edge of the mask projects
over an upstanding edge of
the mold surface such that a
gap is formed between the
mask edge and the surface of
the mold which remains
substantially free of the first
elastomeric material (e.g.,
Figures 2 and 4-9 of the ‘619
Patent), or (2) where there is a
mold surface having a raised
edge that is curved and there
is a mask located above the
raised edge of the mold
surface such that a gap is
formed between the mask
edge and the surface of the
mold that remains
substantially free of the first
elastomeric material as shown
in Figure 3 of the ‘619 Patent.
The function:
Maintaining a mask
edge apart from the
mould surface.
The structure: Any
of (1) an arm, (2)
centering supports,
(3) a portion of the
mask projecting
over an upstanding
edge or (4) a
curvature of the
mould surface, and
equivalents.
19
The parties request that the Court construe the claim language “means for maintaining . . .
mask edge at a distance” in Claim 19 of the ‘619 Patent.
Claims 19 is reproduced below. The disputed claim language and other corresponding claim
language are underlined:
19. A spray mould assembly for manufacturing an elastomeric skin with surface
portions of at least two elastomeric materials comprising a mould, defining a mould
surface, and at least one mask for shielding off a portion of said mould surface and
having at least one edge delimiting said portion, said mould surface comprising at
least one upstanding edge, said assembly comprising means for maintaining said mask
edge at a distance from said mould surface upon spraying said first elastomeric
material to avoid contact between said layer of said first elastomeric material sprayed
onto said mould surface and said mask, said mask and said at least one upstanding
edge together delimiting said shielded off portion of said mould surface.
Recticel and ACH agree that this disputed claim limitation is a means-plus-function claim
limitation according to 35 U.S.C. § 112 ¶ 6.
Construing a means-plus function claim limitation is a two step process: (1) identify the
function set forth in the claim language; and (2) identify the corresponding structure disclosed in the
entire specification section of the patent that accomplishes the claimed function.
Medical
Instrumentation & Diagnostics Corp., 344 F.3d 1205, 1210 (Fed. Cir. 2003).
Recticel argues that the function set forth in the claim language is: “maintaining a mask edge
apart from the mold surface.” Recticel identifies the corresponding structure from the specification
as: “Any of (1) an arm, (2) centering supports, (3) a portion of the mask projecting over an upstanding
edge or (4) a curvature of the mould surface, and equivalents.”
Although agreeing that this claim limitation is a means-plus-function claim limitation, ACH
argues that this claim language is incapable of being construed and therefore the claim is invalid for
being “indefinite” under 35 U.S.C. § 112 ¶ 2. ACH’s argument appears to be that while the claim
20
language states that the mask edge is kept apart from the mold surface, the drawings only show a
mask touching the mold surface. In other words, ACH’s argument is that the drawings and written
description do not support or match up with the claim language. Therefore, ACH argues that the
claim is invalid.
In its reply brief, Recticel argues that ACH misunderstands the claim language. Recticel
points out that the claim language only requires that the mask edge, not the entire mask, be
maintained at a distance from the mold surface. When the claim language is properly understood,
Recticel argues that the claim is definite and valid.
To understand the parties’ arguments and the claimed invention, it is helpful to look at the
drawings in the ‘619 Patent. For example, Figure 2 is reproduced below:
Claim 19 states that the mask edge 11 is maintained at a distance from the surface of the mold 13 such
as to avoid contact between the layer of said first elastomeric material sprayed onto the mold surface
and the mask. The written description explains that this results in a gap being created between the
21
mask edge and the surface of the mold where there is an absence of elastomer (shown in red in the
above reproduction of Figure 2). Specifically, the written description states as follows:
In the embodiment of FIG. 2, this gap is mainly achieved by the fact that the edge 11
of the mask 4 projects over the upstanding edge 13. In this way, the distance between
the edge 11 of the mask 4 and the mould surface 2, measured in the spray direction 14
of the spray beam next to the edge 11, comprises in particular 0.5 to 20 mm, and more
particularly 1 to 6 mm. The distance A over which the edge 11 projects over the
upstanding edge 13 is usually smaller than the height H of the upstanding edge 13.
(Id. at col. 3 ll. 54-62.)
This disputed claim limitation is similar to a term in Claim 3 on which the parties have agreed
on a construction. Claim 3 contains the term “maintained at a distance.” The parties have agreed that
“mask edge is maintained at distance” should be construed as follows:
The mask edge and mould surface define a gap therebetween that remains substantially
free of the first elastomeric material when sprayed.
(Modified Meet and Confer Agreed Constructions.)
“A determination that a patent claim is invalid for failure to meet the definiteness requirement
of 35 U.S.C. § 112 ¶ 2 is a legal conclusion that is drawn from the court’s performance of its duty as
a construer of patent claims. . . . ” Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 949 (Fed.
Cir. 2007) (quotations omitted). A claim is sufficiently definite if “one skilled in the art would
understand the bounds of the claims when read in light of the specification.” Exxon Research & Eng’g
Co. v. U.S., 265 F.3d 1371, 1375 (Fed. Cir. 2001).
The Court disagrees with ACH’s arguments that this claim limitation is indefinite. ACH’s
argument appears to be that while the claim language states that the mask edge is kept apart from the
mold surface, the drawings only show a mask touching the mold surface. (ACH br. at p. 16 (“in every
figure of the ‘619 Patent, the mask is in direct contact with the mold surface.”)) ACH is confusing
“mask edge” with “mask.” The figures of the ‘619 Patent show the edge of the mask 11 not touching
22
the mold surface. This can be seen in the above highlighted version of Figure 2 of the ‘619 Patent,
which shows a distance “A” colored in red between the edge of the mask and surface of the mold
measured along the spray direction. Accordingly, the Court rejects ACH’s indefiniteness argument.
The Court finds that the function set forth in the claim is the following: “maintaining said mask
edge at a distance from said mold surface such as to avoid contact between the layer of said first
elastomeric material sprayed onto the mold surface and said mask.” (‘619 Pat. col. 8 ll. 30 and col.
2 ll. 15-18.) This function identified by the Court is different than the function identified by the
parties. The parties failed to include the functional claim language “to avoid contact between said
layer of said first elastomeric material sprayed onto said mould surface and said mask. . . .” The Court
finds that this functional language forms part of the claimed function. This additional functional
language is a key part of the claimed invention.
Next, the Court must identify the corresponding structure disclosed in the written description
that accomplishes the function set forth in the claim. The written description discloses two ways to
maintain a distance between the mask edge and the mold surface measured along the spray direction
such as to avoid having the first layer of elastomer that is sprayed on the mold surface touch the mask.
First, the written description describes having the mask edge hang over an upstanding edge of the mold
surface (see Figures 2 and 4-9 of the ‘619 Patent). Second, the written description states that the
upstanding edge can be curved to create a distance between the edge of the mask and the upstanding
portion of the mold (see Figure 3 of the ‘619 Patent). Specifically, the relevant portion of the written
description states:
According to a further aspect of the method according to the invention, the mask 4 is
placed with its edges 11 on top of upstanding edges 13 on the mould surface 2, in
particular at the parting line between the two elastomeric materials where this line
remains visibly important. At the other locations, where the parting line between both
23
elastomeric materials will be less important, for example hidden behind strips, such
upstanding edges 13 may be omitted or reduced. When indicating that the edges 11 are
placed on top of the upstanding edges 13, this does not mean that the mask 4 has to
actually contact these edges 13 but could also be placed on a certain distance above
these edges 13 as it will be clear hereinafter.
At the upstanding edges 13, the first elastomeric material 7 is sprayed onto one side
thereof and partially onto the edges 11 of the mask 4, with a gap being preferably
achieved between the elastomeric material 7 sprayed onto the upstanding edge 13 and
the mask 4, as can be seen clearly in FIGS. 2 to 9.
In the embodiment of FIG. 2, this gap is mainly achieved by the fact that the edge 11
of the mask 4 projects over the upstanding edge 13. In this way, the distance between
the edge 11 of the mask 4 and the mould surface 2, measured in the spray direction 14
of the spray beam next to the edge 11, comprises in particular 0.5 to 20 mm, and more
particularly 1 to 6 mm. The distance A over which the edge 11 projects over the
upstanding edge 13 is usually smaller than the height H of the upstanding edge 13.
As shown in FIG. 3, the edge 11 of the mask 4 does not always have to project over the
upstanding edges 13, but a distance between the edge 11 of the mask 4 and the mould
surface 2 could possibly also be obtained in accordance with the first aspect of the
invention by an appropriate curvature of the mould surface 2, more particularly of the
top of the upstanding edges 13.
(Id. at col. 3-4 ll. 54-2). Figure 2, reproduced above, and Figure 3, reproduced below, show
examples of the structures.
Accordingly, the Court finds that the corresponding structures disclosed in the specification
for performing the function set forth in the claim are: (1) where an edge of the mask projects over an
upstanding edge of the mold surface such that a gap is formed between the mask edge and the surface
24
of the mold which remains substantially free of the first elastomeric material (e.g., Figures 2 and 4-9
of the ‘619 Patent), or (2) where there is a mold surface having a raised edge that is curved and there
is a mask located above the raised edge of the mold surface such that a gap is formed between the
mask edge and the surface of the mold that remains substantially free of the first elastomeric material
as shown in Figure 3 of the ‘619 Patent. The Court’s construction is similar and consistent with the
parties’ agreed upon construction for the claim term “mask edge is maintained at a distance” in Claim
3.
The Court also notes that the ‘619 patent makes clear that the mask can be physically
maintained in place by using an “arm 5, and possibly through the intermediary of centering supports
12. . . .” (‘619 Pat. col. 3 ll. 30-34.) However, the parties have not made clear if the physical structure
maintaining the mask surface in place above the mold surface is material to the infringement and
invalidity issues at issue in this case. To the extent that this is material, the Court will address this as
part of the dispositive motions or before trial if the parties bring the issue to the Court’s attention.
E.
“PARTING LINE” IN CLAIM 22
Disputed Claim
Term
“Parting line”
(Claim 22)
Plaintiff’s Proposed
Construction
“Parting line” means
the visual border
between adjacent
elastomeric materials
on the surface of an
elastomeric skin.
Defendant’s
Proposed
Construction
Court’s Construction
This phrase is
incapable of being
construed and is
indefinite.
“Parting line” means the
visual border between
adjacent elastomeric
materials on the surface of
an elastomeric skin.
The parties request that the Court construe the claim language “parting line” in Claim 22 of the
‘619 Patent.
Claim 22 is reproduced below. The disputed claim language is underlined:
25
22. An elastomeric skin with surface portions of at least two elastomeric materials and
made by the method according to claim 3, wherein said first and second elastomeric
materials form a first and respectively a second sprayed layer, and wherein said first and
second elastomeric materials are adhered to each other along a parting line which is
formed by a gradual transition zone between these materials and at least a portion of
which is located in an outer recess of the elastomeric skin, the first and second layers
being curved inwards into said outer recess.
This claim language makes clear that the first and second elastomeric materials are adhered to
each other along a visual dividing line, called “a parting line,” at a recess in the surface of the skin
where the colors of the two plastic materials transition. (Id.)
Recticel argues that “parting line” in Claim 22 “means the visual border between adjacent
elastomeric materials on the surface of an elastomeric skin.”
ACH argues that “parting line” is incapable of being construed and is therefore indefinite. It
appears that ACH’s argument is that the claim term is indefinite because there is no reference numeral
23 in Figure 13 actually pointing to an example of a parting line. (ACH Resp. br. at p. 21-22.)
The Court finds that Recticel’s proposed construction is correct. The parting line is described
in the patent as the visual dividing line between the two colors of plastic materials. The following
sections from the written description describe the parting line:
In this method the transition between the different elastomeric materials is
achieved on the upstanding edge of the mould surface or, when seen from the
outside of the elastomeric skin, in a recess of the skin. The actual transition
between the elastomeric materials is therefore hidden from view resulting in a
nicely finished parting line between the different elastomeric materials and this
in an industrially suited way.
*
*
*
Referring to FIG. 13, the obtained two-colour skin had a nicely finished parting
line between the differently coloured portions since the actual transition between
the different materials in the recess 23 at this parting line, forming in fact a
gradual transition zone 22, was well hidden from view. If desired, this recess can
of course be filled up afterwards or be closed by pressing and/or gluing the sides
26
thereof together.
(Id. at col. 1 ll. 58-65 and col. 6 ll. 57-64.) Figure 13, reproduced below, depicts the general
parting line at the recess area where the first elastomer (7) and second elastomer (9) overlap or
come together.
Accordingly, the Court construes “parting line” as the visual border between adjacent
elastomeric materials on the surface of an elastomeric skin.”
ACH argues that this claim term “parting line” is indefinite at least in part because there
is no reference numeral 23 in Figure 13 actually pointing to an example of a parting line. (Resp.
br. at p. 21-22.) The Court disagrees. The fact that Figure 13 does not contain a specific
reference number 23 does not make the term “parting line” unclear and indefinite. A person of
ordinary skill in art who has read the claim and the specification as a whole would understand
the concept and limits of a parting line.
27
F.
“GRADUAL TRANSITION ZONE” IN CLAIM 22
Disputed Claim
Term
“Gradual transition
zone”
(Claim 22)
Plaintiff’s
Proposed
Construction
Defendant’s
Proposed
Construction
“Gradual transition
zone” means an area
between separate
layers of elastomeric
material on the
surface of an
elastomeric skin that
shows a change
from one material to
another across the
area in degrees.
This phrase is
incapable of being
construed and is
indefinite.
Court’s
Construction
“Gradual transition
zone” means an “an
area between
separate layers of
elastomeric material
on the surface of an
elastomeric skin
where a gradual
change from one
elastomeric material
to another occurs.”
The parties request that the Court construe the claim language “gradual transition zone”
in Claim 22 of the ‘619 Patent.
Claim 22 is reproduced below. The disputed claim language is underlined:
22. An elastomeric skin with surface portions of at least two elastomeric materials
and made by the method according to claim 3, wherein said first and second
elastomeric materials form a first and respectively a second sprayed layer, and
wherein said first and second elastomeric materials are adhered to each other along
a parting line which is formed by a gradual transition zone between these materials
and at least a portion of which is located in an outer recess of the elastomeric skin,
the first and second layers being curved inwards into said outer recess.
This claim language makes clear that the visible parting line, or dividing line, between
the two colors of elastomers, occurs at “a gradual transition zone” in a recess of the elastomeric
skin (Id.) This is shown in Figure 13 of the ‘619 Patent, reproduced below, and explained
below in the following section of the written description:
In this method the transition between the different elastomeric materials is
achieved on the upstanding edge of the mould surface or, when seen from the
outside of the elastomeric skin, in a recess of the skin. The actual transition
between the elastomeric materials is therefore hidden from view resulting in a
28
nicely finished parting line between the different elastomeric materials and this
in an industrially suited way.
*
*
*
Referring to FIG. 13, the obtained two-colour skin had a nicely finished parting
line between the differently coloured portions since the actual transition between
the different materials in the recess 23 at this parting line, forming in fact a
gradual transition zone 22, was well hidden from view. If desired, this recess can
of course be filled up afterwards or be closed by pressing and/or gluing the sides
thereof together.
(Id. at col. 1 ll. 58-65 and col. 6 ll. 57-64.)
Recticel argues that “gradual transition zone” in Claim 22 “means an area between
separate layers of elastomeric material on the surface of an elastomeric skin that shows a change
from one material to another across the area in degrees.”
ACH argues that “gradual transition zone” partly is incapable of being construed and is
therefore indefinite. It appears that ACH’s argument is that Figure 13 does not actually show a
gradual transition from the first elastomer to the second elastomer in the recess. However, ACH
is relying upon an old, incorrect version of Figure 13. The United States Patent Office issued
a corrected Figure 13 in a “Certificate of Correction.” This corrected Figure 13, reproduced
above, shows a transition from one color of elastomer to the other elastomer in the recess at
29
reference numeral 22. This corrected Figure 13 also provides context for the meaning of
“gradual.”
The Federal Circuit has held that words of degree such as “gradual” are not indefinite if
a person of ordinary skill in the art would understand what was claimed. See Andrew Corp. v.
Gabriel Electronics, Inc., 847 F.2d 819, 821-22 (Fed. Cir. 1988) (reversing the district court’s
decision that claim terms “closely approximate” and “substantially equal” were indefinite); LNP
Eng’g Plastics, Inc. v. Miller Waste Mills, Inc., 275 F.3d 1347, 1359-60 (Fed. Cir. 2001)
(affirming JMOL that claim limitation “substantially completely wetted” was not indefinite);
Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002) (vacating summary
judgment decision that claims to a hollow push rod reciting a “substantially constant wall
thickness” were indefinite).
Based on the limited arguments and evidence before the Court at the claim construction
stage of this case, the Court finds that a person of ordinary skill in the art who has read the claim
and the specification as a whole would understand the concept and limits of the disputed claim
language. Accordingly, the Court rejects ACH’s indefiniteness argument.
Given the limited space in the briefs devoted this indefiniteness argument and ACH’s
reliance on an incorrect version of Figure 13, the Court finds that this particular indefiniteness
argument would be better addressed at the summary judgment stage of the case should ACH
believe that this argument needs to be revisited. However, based on the evidence presented, the
Court finds that this claim language would be sufficiently understood by a person of ordinary
skill in the art. See, e.g., Waddington N. Am., Inc. v. Sabert Corp., 2010 WL 4363137, at *2
(D.N.J. 2010) (holding that indefiniteness was properly deferred until the summary judgment
stage of the case).
30
The Court construes “gradual transition zone” as “an area between separate layers of
elastomeric material on the surface of an elastomeric skin where a gradual change from one
elastomeric material to another occurs.”
IV.
CONCLUSION
The Court will schedule a status conference on May 22, 2012 at 2:00 p.m. Before the
status conference, the parties shall meet and propose a schedule for this case (e.g., through
dispositive motions). The parties may work with the Court’s Technical Advisor Christopher G.
Darrow in preparing the proposed schedule.
SO ORDERED
S/Sean F. Cox
Sean F. Cox
United States District Judge
Dated: April 16, 2012
I hereby certify that a copy of the foregoing document was served upon counsel of record
on April 16, 2012, by electronic and/or ordinary mail.
S/Jennifer Hernandez
Case Manager
31
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