3M Company et al v. Avery Dennison Corporation
Filing
230
MEMORANDUM OPINION AND ORDER. (Written Opinion). Signed by Chief Judge Michael J. Davis on 3/22/12. (GRR)
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
3M Company and 3M Innovative
Properties Company,
Plaintiffs,
MEMORANDUM OPINION
AND ORDER
Civil No. 10‐2630
v.
Avery Dennison Corporation,
Defendant.
_________________________________________________________________
John C. Adkisson, Ann N. Cathcart Chaplin and Geoff D. Biegler, Fish &
Richardson P.C., Kevin H. Rhodes and William D. Miller, 3M Innovative
Properties Company and M. Sean Royall, Gavin S. Martinson, Michael L. Raiff,
Daniel S. Floyd, Samuel G. Liversidge and Daniel M. Flores, Gibson, Dunn &
Crutcher, LLP, Counsel for Plaintiffs.
Kurt J. Niederluecke and Lora M. Friedemann, Fredrikson & Byron, P.A.
and Charles K. Verhoeven, David Bilsker, Christopher E. Stretch, James E. Baker
and Emily O’Brien, Quinn Emanuel Urquhart & Sullivan, LLP, Counsel for
Defendant.
_________________________________________________________________
This matter is before the Court for claim construction on a number of
disputed claim terms.
I.
Background
This action involves five patents, the rights, title and interest having all
1
been assigned to Plaintiffs 3M Company and 3M Innovative Properties Company
(“3M”), which cover different aspects of retroreflective sheeting that is used on
roadways. In the Amended Complaint, 3M alleges that Defendant Avery
Dennison Corporation (“Avery”) makes, uses, and sells a product called the
OmniCube T‐11500 Prismatic Reflective Film that embodies the inventions
claimed in the patents‐in‐suit. Retroreflective sheeting is sheeting which reflects
light emitted from a vehicle’s headlights back towards the driver, making the
sign or marker conspicuous and easy to read. (Declaration of Dr. Kenneth L.
Smith ¶ 9.)
II.
Patents in Suit
The patents at issue in this case are U.S. Patent Nos. 5,936,770 (“the ‘770
patent”), 6,318,987 (“the ‘987 patent”), 7,152,983 (“the ‘983 patent”), and 7,261,426
(“the ‘426 patent”). 3M asserts the ‘770 patent, or Nestegard patent, discloses a
cube corner retroreflective sheeting with alternating zones of cube corner
elements disposed at approximately ninety degree angles to each other, which in
turn creates two principal planes of improved reflection of light. 3M further
asserts the ‘770 patent features embodiments of sheeting that have alternating
arrays of cube corners that are canted in different directions.
2
The ‘987 patent, or Luttrell patent, discloses laminae, which are small
plates used at the beginning of the manufacturing process to form molds that can
be used to form sheeting with cube corners. This patent also discloses methods
that reduce the number of laminae necessary to produce cube corner element
molds.
The ‘983, ‘426 and ‘386 patents, collectively referred to as the Smith patents,
stem from the same patent application. The Smith patents disclose full cube
corner geometries for controlling the divergence profile of retroreflective
sheeting; the divergence profile referring to the spread of retroreflected light
relative to the source. The cube corners include three faces that join at three
edges, forming a dihedral angle. In a perfect cube corner, the angles are at 90E.
The Smith patents teach that introducing errors from 90E right angles to two
specific edges of the cube corner element yields optimal divergence of the light
reflecting from the cube corners. If the angles remain at 90E, the light reflects
directly back to the light’s source, which is not ideal for sign applications because
the driver’s eyes are not in exactly the same position as the headlights of the car.
III.
Standard for Claim Construction
Words in a claim are generally given their ordinary and customary
3
meaning as to one skilled in the art at the time of the invention. Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). “In some cases, the ordinary meaning
of claim language as understood by a person of skill in the art may be readily
apparent even to lay judges, and claim construction in such cases involves little
more than the application of the widely accepted meaning of commonly
understood words.” Id. at 1314. When the ordinary and customary meaning of
claim language is not readily apparent, however, the Court must look to “those
sources available to the public that show what a person of a skill in the art would
have understood disputed claim language to mean.” Id. (citation omitted). Such
sources include the words of the claims themselves, the specification, the
prosecution history and extrinsic evidence concerning relevant scientific
principles, the meaning of technical terms, and the state of the art. Id.
A claim is to be read in view of the specification, yet the Court cannot read
a limitation into a claim based on the specification. Renishaw PLC v. Marposs
Societa’ Per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998) (citing Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.1996); Markman v. Westview
Instruments, Inc., 52 F.3d 967, 979‐80 (Fed. Cir. 1995) (en banc), affʹd, 517 U.S. 370
(1996)). The same is true with regard to the prosecution history, which can be
4
used to understand the claim, but not to enlarge, diminish or vary the limitations
in the claim. Markman, 52 F.3d at 980. Similarly, extrinsic evidence, such as
inventor or expert testimony, dictionaries and treatises, cannot be used to vary or
contradict the terms of the claims. Id. at 981. Finally, a patentee is free to be
his/her own lexicographer, but any special definition given to a word must be
clearly defined in the specification. Id.
A.
The ‘770 Patent
3M is asserting claims 45, 46 and 48 of the ‘770 patent.
Claim 45 reads as follows:
A retroreflective sheeting comprising a substrate having a base
surface and a structured surface opposite the base surface, the structured
surface comprising:
a first array of cube corner elements;
a second array of cube corner elements, optically opposing the cube
corner elements of the first array, the optical axes of the cube corner
elements in the first and second arrays, canted to define a first primary
plane of improved retroreflective performance at increased entrance
angles, the first primary plane extending substantially parallel with
longitudinal edge of the sheeting;
a third array of cube corner elements; and
a fourth array of cube corner elements optically opposing the cube
corner elements of the third array, the optical axes of the cube corner
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elements in the third and fourth arrays canted to define a second primary
plane of improved retroreflective performance at increased entrance
angles, the second primary plane being perpendicular to the first primary
plane.
(Adkisson Decl., Ex. A (the ‘770 patent).)
Claim 48 depends on claim 45 and reads:
wherein: the retroreflective sheeting comprises substantially similar
retroreflective performance in response to light incident on the sheeting
across a range of entrance angles in the first primary plane and the second
primary plane.
(Id.)
The parties seek construction of the following claim terms.
1.
“Perpendicular”
3M asserts that this term does not need to be construed. Avery asserts the
term must be construed as “intersects at 90E.” The Court finds that this term
need not be construed, as it is a common term that is being used consistent with
its ordinary meaning. Avery’s proposed construction provides for a rigid
definition that is not supported by the intrinsic evidence. See Stryker Trauma
S.A. v. Synthes, No. Civ. A. 01CV3879, 2005 WL 2245385, at *4 n.3 (D. N.J. Sept. 8,
2005) (court did not adopt a rigid definition of “perpendicular” as it would have
required a bar insertion angle at a perfect 90%).
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2.
“Primary Plane of Improved Retroreflective Performance at
Increased Entrance Angle”
3M proposes that this phrase be construed as “the first/second primary
plane of improved retroreflective performance at increased entrance angles
results from the canting.” In addition, 3M proposes the following construction of
the word “primary” ‐ “first in importance, chief, principal, main.” Avery
proposes the following construction “the plane(s) (direction) with the highest
performance at particular angles.”
The crux of the dispute between the parties as to this claim term is how to
define “primary.” 3M relies on a dictionary definition, and Avery asserts that
such dictionary definition is vague, and does not address itself to the subject
matter of the claim. Avery argues its proposed construction defines primary,
with respect to plane, as that which shows the highest retroreflective
performance at a particular increased entrance angle. 3M believes Avery’s
construction is unclear as it could cover planes other than the first/second
primary plane.
Taking into consideration the claim language and the specification, as well
as the parties’ arguments, the Court will adopt the following construction: “the
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first/second primary plane of improved retroreflective performance at increased
entrance angles results from the canting, wherein ‘primary’ refers to the plane
with the highest retroreflective performance at a particular angle.”
3.
“Extending Substantially Parallel with a Longitudinal Edge”
3M proposes the following construction: “extending substantially parallel
with an edge of a length of sheeting.” Avery proposes the following
construction: “cube corners of the claimed array with their primary groove
aligned without interruption parallel to off parallel by 1E along the entire
longitudinal edge.” 3M asserts that Avery’s construction is too narrow and is
contradicted by the other words of claim 45 and it seeks to introduce limitations
that are inconsistent with the plain meaning of the claim language and with the
intrinsic record.
It is Avery’s position that during the prosecution of the parent application
to the ‘770 patent, 3M distinguished its invention by amending the claims to
require a zone “extending substantially parallel with a longitudinal edge of said
sheeting” in order to avoid a finding of anticipation in light of the Van Arnam
patent. (O’Brien Decl., Ex. 23 at AVERY 0000916.) Avery asserts that 3M took the
position that the claim covered parallel strips which ran the entire length of the
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sheeting, and in doing so, 3M rejected “tiles” of cube corners, and argued its
patent covered “strips” of cube corners.
The Court has reviewed the prosecution history, and finds no evidence
that 3M sought to disclaim all tiled sheeting during the prosecution of the parent
patent. Rather, the prosecution history demonstrates that the patent examiner
rejected the original claim 1 as anticipated by Arnam, but noted that the prior art
did not teach or fairly suggest the structure defined in the original claim 3, which
was written as dependent on claim 1. (Biegler Decl., Ex. H.) The patent examiner
further noted that claim 3 would be allowed if rewritten in independent form.
(Id.) 3M responded to the examiner’s actions, by rewriting claim 3 as an
independent claim.
The Court further finds that the term at issue relates to the “primary
plane”, which the parties do not dispute is an optical feature rather than a
structural feature. Avery’s proposed construction, however, addresses structural
features, and inserts limitations that are not supported by either the claim
language or the specification. The Court will thus adopt 3M’s proposed
construction of this term.
B.
The ‘987 Patent
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This patent is entitled “Cube Corner Sheeting Mold and Method of Making
the Same.” (Adkisson Decl., Ex. B (the ‘987 patent).) This invention is described
as “providing a master mold suitable for use in forming retroreflective sheeting
from a plurality of laminae and methods of making the same.” (Id. col. 3:46‐48.)
In addition, the invention provides “[e]fficient, cost‐effective methods of making
molds formed from a plurality of laminae.” (Id. col. 3: 60‐61.) In this action, 3M
is asserting claims 12 and 18‐20 of the ‘987 patent.
Claim 12 reads as follows:
A lamina suitable for use in a mold for use in forming retroreflective
cube corner articles, the lamina having opposing first and second major
surfaces defining therebetween a first reference plane, the lamina further
including a working surface connecting the first and second major
surfaces, the working surface defining a second reference plane
substantially parallel to the working surface and perpendicular to the first
reference plane and a third reference plane perpendicular to the first
reference plane and the second reference plane, the lamina comprising:
a first groove set including at least two parallel adjacent V‐Shaped
grooves in the working surface of the lamina defining a first groove surface
and a second groove surface that intersect substantially orthogonally to
form a first reference edge;
a second groove set including at least two parallel adjacent V‐shaped
grooves in the working surface of the lamina defining a third groove
surface and a fourth groove surface that intersect substantially
orthogonally to form a second reference edge; and
a third groove set including at least one groove in the working
surface of the lamina defining a fifth groove surface and a sixth groove
surface, the fifth groove surface intersecting substantially orthogonally
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with the first and second groove surface to form at least one first cube
corner element disposed in a first orientation and the sixth groove surface
intersecting substantially orthogonally with the third and fourth groove
surfaces to form at least one second cube corner element disposed in a
second orientation different than the first orientation;
wherein the at least one first cube corner element comprises a
plurality of nonidentical cube corner elements.
Claim 18 recites:
The lamina of claim 12 where at least one of the groove sets comprises
grooves of differing depths in the working surface of the lamina.
Claim 19 recites:
A mold comprising the lamina of claim 18.
1.
“Lamina” and “Laminae”
3M proposes that “lamina” be construed as “a thin plate” and that
“laminae” be construed as “more than one lamina.” Avery proposes that
“lamina” be construed as “a single plate as depicted in Figure 1 into which rows
of cube corner elements are cut onto the edge”1 and that “laminae” should be
construed as “collection of single thin plates as depicted in Figure 1 into which
rows of cube corner elements are cut onto the edge.”
1
This construction was included in the First Revised Claim Construction report filed by
Avery on December 12, 2011, which is different than the construction included in Avery’s
Markman Hearing Presentation that was submitted to the Court on December 13, 2011. [Doc.
No. 200]
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Avery asserts its construction is necessary to distinguish between the
lamina and the tool used to form the cube corners on the sheeting. The lamina is
a part of the method used for manufacturing a mold, and the mold is duplicated
by one of several techniques to produce tooling for forming cube corner sheeting.
Because lamina are used to make the mold, which is then used to make the
tooling, multiple lamina cannot be the same as the tool.
3M asserts that its construction of lamina/laminae does not broaden the
asserted claims to encompass the tool or belt used to form cube corners on
retroreflective sheeting. The asserted claims required the lamina to be suited for
use in a mold, and that a series of grooves be formed on the working surface of
the lamina. These requirements prevent the asserted claims from encompassing
a tool.
The Court finds that Avery’s construction improperly imports additional
limitations into the terms lamina/laminae without any support. Claim 12
expressly recites what Avery is seeking to import through its definition of
lamina, when it speaks to a “working surface.” Claim 12 further requires
“groove sets . . . in the working surface” that define groove surfaces that intersect
to form “at least one cube corner element” in the lamina. Thus, the plain
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language of claim 12 already expresses that cube corner elements are formed in
the working surface of the lamina, making Avery’s construction superfluous.
Accordingly, the Court will adopt 3M’s proposed construction of lamina and
laminae.
2.
“Substantially Orthogonally”
3M proposes “substantially orthogonally” be construed as “approximately
90 degrees” while Avery proposes “perpendicular to 1E off perpendicular.”
3M asserts that as used in the asserted claims, this term refers to the
intersection of groove surfaces that form cube corner elements. The specification
provides:
As used herein, the terms “substantially orthogonally” or “approximately
orthogonally” shall mean that the dihedral angle between the respective
surfaces measures approximately 90E; slight variations in orthogonality as
disclosed and claimed in U.S. Pat. No. 4,775,210 to Appeldorn are
contemplated.
(Adkisson Decl., Ex. B col. 9:25‐30.) 3M argues that because the inventor acted as
his own lexicographer, such definition controls. 3M Innovative Prop. Co. v.
Avery Dennison Corp., 350 F.3d 1365, 1374 (Fed. Cir. 2003).
Avery points out that the definition of “substantially orthogonally” also
includes “slight variations in orthogonality as disclosed and claimed in U.S. Pat.
13
No. 4,775,219 to Appeldorn are contemplated.” The ‘219 patent states that
variations are generally between 15 and 30 arc minutes or less, though they can
be somewhat more. (O’Brien Decl., Ex. 18 col. 8:23‐27.) Avery thus asserts that
through its incorporation of the ‘219 patent, the ‘987 specification demonstrates
that words like “substantially” and “approximately” can be quantified. Avery’s
construction ‐ as up to one degree ‐ is consistent with the intrinsic evidence.
Avery further asserts the testimony of the inventor, Kevin Smith, supports
its construction. When asked questions about the definition of substantially,
Smith testified “generally speaking I would say the patent talks about the issue. I
think it’s about a degree.” (Doc. No. 192‐1 at 165‐66.)
The Court finds that the intrinsic evidence does not support Avery’s
position that “substantially” be quantified as 1E off perpendicular. As noted
above, the ‘219 patent speaks of variations that are generally between 15 and 30
arc minutes or less, and the inventor testified in generalities. Accordingly, the
Court will adopt 3M proposed construction.
3.
“Substantially Parallel”
3M asserts that the term need not be construed, and that substantially be
given its ordinary meaning ‐ a term of approximation. Avery responds that this
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term should be construed as “parallel to 1E off parallel” which is consistent with
the intrinsic and extrinsic evidence as discussed above. For the reasons discussed
with respect to “substantially orthogonally” the Court will construe this term as
“approximately parallel.”
4.
“Parallel” and “Perpendicular”
3M asserts these words should be given their ordinary meaning. Avery
asserts that parallel be construed as “two lines in a plane that do not intersect or
meet” and perpendicular be construed as “intersects at 90E.” Avery asserts these
constructions are necessary to distinguish “parallel” from “substantially parallel”
and “perpendicular” from “substantially perpendicular.”
The Court finds that these terms need not be construed, as they are
common terms that are being used consistent with their ordinary meaning.
Avery’s proposed construction provides for a rigid definition that is not
supported by the intrinsic evidence. See Stryker, 2005 WL 2245385, at *4 n.3
(court did not adopt a rigid definition of “perpendicular” as it would have
required a bar insertion angle at a perfect 90E).
5.
“Nonidentical Cube Corner Elements”
3M provides the following proposed construction: “cube corner elements
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that intentionally do not have the same size, shape, geometry and/or orientation.”
Avery’s proposed construction is: “cube corner elements that are not
substantially identical in size, geometry or orientation to other cube corner
elements on a row in a lamina.”
With respect to this claim term, the dispute centers on whether such term
should be construed to require that the variations in the cube corners be
intentional. 3M asserts that “intentional” should be included in the construction,
as the specification provides that the user of the patent can choose to have
identical or nonidentical cube corner elements. “The plurality of laminae can
include substantially identical cube corner elements or may include cube corner
elements of varying size, geometries, or orientations.” (‘987 patent, col. 18:16‐18.)
First, the Court notes that nowhere in the specification is there specific
language that requires the variations in the cube corners be intentional. The
portion of the specification cited to by 3M does not include the word
“intentional.” Rather, the specification merely provides that a plurality of
laminae may include elements of varying size, geometries, or orientations.
Generally, intent is not relevant to whether an accused product infringes a
patent. Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991).
16
The Federal Circuit has held that importing a subjective intent into a claim may
render the claim invalid for indefiniteness. See Datamize, LLC v. Plumtree
Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) (finding that the scope of claim
language cannot depend solely on the unrestrained, subjective opinion of a
particular individual practicing the invention). See also, Rackable Sys., Inc. v.
Super Micro Computer, Inc., No. C ‐5‐3561, 2006 WL 3065577, at *8 (N.D. Cal.
Oct. 27, 2006) (finding a claim term indefinite because such term depended on a
user’s purpose); Halliburton Energy Servs., Inc. v. M‐I, LLC, 456 F. Supp. 2d 811,
816‐18 (E.D. Tex. 2006) (finding terms, such as “more liquid‐like” and “less gel‐
like” indefinite as they do not provide an objective standard for determining their
scope).
3M argues that the Federal Circuit has also recognized that patentees may
properly incorporate an intent requirement into patent claims. Koito Mfg. Co. v.
Turn‐Key‐Tech, LLC, 381 F.3d 1142, 1150 n.2 (Fed. Cir. 2004) (finding that
construction of a claim term may require an actor to have knowledge of certain
facts); Combined Sys., Inc. v. Defense Tech. Corp. of Am., 350 F.3d 1207, 1214
(Fed. Cir. 2003) (finding that district court’s construction of claim that required
“forming folds” as a distinct step in a claimed method). Both Koito and Defense
17
Tech. are distinguishable from this case, however.
Koito involved construction of the term “predetermined general direction”
with respect to a mold design, where the district court found “predetermined”
required intent or foreknowledge. Id. 381 F.3d at 1150. Here, neither the claim
language or the specification includes the word “intentional.” Also, like Koito,
Defense Tech. involved a method claim, whereas this case involves an apparatus
claim. Although the Federal Circuit has not specifically differentiated its decision
in Koito from cases involving apparatus claims, other courts have done so. See,
e.g., ADC Telecommunications, Inc. v. Switchcraft, Inc., Civ. No. 04‐1590, 2005
WL 2206115, at *9 (D. Minn. Sep. 9, 2005) (“The terminology at issue in Koito is
distinguishable from ‘waveguide’ at issue in the instant case. First, Koito dealt
with a method claim rather than the apparatus claim as in the case at bar.
Second, and more importantly, the term ‘predetermined’ inherently requires
foreknowledge in a manner completely absent from ‘waveguide.’”).
The Court finds that neither the claim language or the specification in this
case requires that the variations that make cube corner elements nonidentical be
intentional. Accordingly, the Court will adopt Avery’s construction of this claim
term.
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C.
The Smith Patents ‐ ‘983, ‘426 and ‘386 Patents
The Smith patents all stem from the same patent application, and all are
entitled “Lamina Comprising Cube Corner Elements and Retroreflective
Sheeting.”
1.
The ‘983 Patent
In this action, 3M is asserting claims 19, 20, 22 and 26 of the ‘983 patent.
Claim 19 reads:
A lamina comprising a row of cube corner elements on an edge of the
lamina, the cube corner elements having face formed from a side groove
set wherein the grooves are nominally parallel to each other and range
from being greater than nominally parallel to non‐parallel to within 1 E to
reference plane (28).
Claim 20 recites:
The lamina of claim 19 wherein the cube corner elements are preferred
geometry cube corner elements.
Claim 22 recites:
Retroreflective sheeting comprising a row of preferred geometry cube
corner elements having faces defined by a side groove set wherein at least
two grooves within the set are nonparallel by amounts ranging from
greater than nominally parallel to about 1E.
Claim 26 reads:
Retroreflective sheeting comprising a row of preferred geometry cube
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corner elements having face defined by a side groove set wherein the
grooves are nominally parallel to each other and range from being greater
than nominally parallel to non‐parallel to within 1E to reference plane (28).
2.
The ‘426 Patent
With respect to the ‘426 patent, 3M is asserting claims 1 and 10. Claim 1
recites:
An article comprising preferred geometry cube corner elements wherein at
least one cube comprises a 1‐2 dihedral angle error and a 1‐3 dihedral
angle error; wherein the dihedral angle errors vary in opposition.
Claim 10 depends on claim 7, which in turn depends on claim 5. Claim 5
reads as follows:
An article comprising at least one preferred geometry cube corner elements
having three dihedral angle errors wherein the dihedral angle errors are
different from each other.
Claim 7 reads:
The article of claim 5 comprising a plurality of the elements in a row
wherein at least one dihedral edge of the elements range from being
nominally parallel to nonparallel by less than 1E.
Claim 10:
The article of claim 7 wherein the elements each have a first face and the
first faces define a primary groove face.
3.
The ‘386 Patent
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As to the ‘386 patent, 3M is asserting claims 1‐4 and 9‐11. Of these claims,
the parties dispute terms found in claims 1, 3, 9 and 11. Claim 1 recites:
Retroreflective sheeting comprising an array of preferred geometry cube
corner elements wherein at least one cube comprises a 1‐2 dihedral angle
error and a 1‐3 dihedral angle error varied in opposition and the sheeting
exhibits an average brightness at 0E and 90E orientation according to
ASTM D4596‐1a of at least 375 candelas/lux/m² for an entrance angle of ‐4E
and an observation angle of 0.5E.
Claim 3 reads:
The sheeting of claim 1 wherein the elements are in a row having dihedral
edges that range from being nominally parallel to nonparallel by less than
1E.
Claim 9 reads:
Retroreflective sheeting comprising a row of preferred geometry cube
corner elements wherein a plurality of elements in the row have three
dihedral angle errors that are different from each other and the sheeting
exhibits an average brightness at 0E and 90E orientation according to
ASTM D4596‐1a of at least 375 candelas/lux/m² for an entrance angle of ‐4E
and an observation angle of 0.5E.
Claim 11 recites:
The sheeting of claim 9 comprising a plurality of the elements in a row
wherein at least one dihedral edge of the elements range from being
nominally parallel to nonparallel by less than 1E.
The parties request construction of the following terms.
a.
“Preferred Geometry Cube Corner Element”
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3M proposes that this term be construed as “a cube corner that has at least
one non‐dihedral edge that: (1) is nonparallel to the reference plane; and (2) is
substantially parallel to an adjacent non‐dihedral edge of a neighboring cube
corner, where the reference plane is a plane or other surface that approximates a
plane in the vicinity of a group of adjacent cube corner elements or other
geometric structures, the cube corner elements or geometric structures being
disposed along the plane.”
Avery offers this construction: “cube corner retroreflecting elements that
have at least one non‐dihedral edge that 1) is nonparallel to a plane along which
the cube corner elements are disposed and 2) is up to 1E off parallel to an adjacent
(next to without an intervening edge of the same type) non‐dihedral edge on a
neighboring (next to or adjoining) cube corner.”
The specification defines this term as follows: “a PG [preferred geometry]
cube corner element means a cube corner element that has at least one non‐
dihedral edge that : (1) is nonparallel to the reference plane; and (2) is
substantially parallel to an adjacent non‐dihedral edge of a neighboring cube
corner element . . . ‘Reference Plane’ with respect to the definition of a PG cube
corner element refers to a plane or other surface that approximates a plane in the
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vicinity of a group of adjacent cube corner elements or other geometric
structures, the cube corner elements or geometric structures being disposed along
the plane.” (‘983 patent, col. 7:23‐27, 29‐35.) Because the inventors have acted as
their own lexicographer by including a clear definition of this term in the
specification, such definition should control. Avery, however, seeks to further
define terms within that definition: “substantially parallel”, “adjacent” and
“neighboring.”
For those reasons discussed with respect to the ‘987 patent, Avery argues
that “substantially parallel” should be construed as “up to 1E off parallel.” The
Court rejected this argument as to the ‘987 patent, and will reject it with respect
to the ‘983 patent. Accordingly, the Court will construe “substantially parallel”
as “approximately parallel.”
Avery further asserts that “adjacent” and “neighboring” should be
construed, and that its proposed construction is consistent with the dictionary
definitions of these words.
The Court finds that “adjacent” and “neighboring” should be given their
ordinary meaning, and that such ordinary meaning is not limited by “next to
without an intervening edge of the same type.” The dictionary definition of
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“adjacent” is as follows: “a: not distant: nearby b: having a common endpoint or
border c: immediately preceding or following.” Merriam‐Webster’s Collegiate
Dictionary 14 (10th Ed. 1999). “Neighboring” is defined as “to adjoin
immediately or lie relatively near to.” Id. at 777. Both definitions provide that
objects near to each other can properly be described as adjacent or neighboring ‐
the definitions do not require that objects lie next to each other without an
intervening edge. Further, there is nothing in the specification that requires such
a construction. Accordingly, the Court will adopt 3M’s proposed construction.
b.
“1‐2 Dihedral Angle Error” and “1‐3 Dihedral Angle
Error.”
3M proposes that 1‐2 dihedral angle error be construed as “a dihedral
angle error of a dihedral angle formed between a side groove face and the
primary groove face of the cube corner element.” Avery proposes the following
construction “the dihedral angle error formed by the two out of three cube faces
in a retroreflector that are designated as face ‘1ʹ and ‘2ʹ.”
As to the 1‐3 dihedral angle error, 3M proposes “the dihedral angle error of
a dihedral angle formed between the other side groove face and the primary
groove face of the cube corner element.” Avery proposes “the dihedral angle
error formed by the two out of three cube faces in a retroreflector that are
24
designated as face ‘1ʹ and ‘3ʹ.”
The dispute involves whether the faces of a cube corner can be arbitrarily
assigned the designations “1ʺ “2ʺ or “3ʺ. 3M argues such assignment is not
allowed, while Avery argues the specification suggests that arbitrary assignment
is contemplated.
It is 3M’s position that the significance of the “1‐2ʺ and “1‐3ʺ elements in
terms of defining specific dihedral angle is apparent by looking to other claims,
which refer generally to “dihedral angle errors.” Further, 3M asserts its
construction is supported by the specification, which notes that “[c]ube corners in
general have three dihedral angles attributed to the intersections of the three cube
faces. The deviation of these angles from 90E is commonly termed the dihedral
angle error and may be designated by dihedral 1‐2, dihedral 1‐3, and dihedral 2‐
3.” (‘426 patent, col. 17:37‐41.) The specification goes on to describe “one naming
convention” that is depicted in Figure 22. The “cube dihedral angle error 1‐3 is
formed by the intersection of groove surface 82 with the primary groove face, and
cube dihedral angle error 1‐2 is formed by the intersection of groove surface 84
with primary groove face 50.” (Id., col. 17:49‐52.) Further, “cube dihedral 2‐3 is
formed by the intersection of groove surface 84 with groove surface 82.” (Id., col.
25
17:53‐54.) 3M asserts that in each of the working examples discussed in the
specification, reference is made to Figure 22. By contrast, 3M argues that nothing
in the specification supports Avery’s position that “1‐2ʺ or “1‐3ʺ can refer to any
cube face.
Finally, 3M asserts that the designation of the dihedral angle errors is
critical to the invention. As evidenced in the specification, the 1‐2 and 1‐3
dihedral angle errors are affected by the introduction of skew or inclination into a
preferred geometry cube corner and thus such dihedral angle errors are critical to
controlling the light divergence created by the retroreflective sheeting. (Id. col.
17: 16‐20; 18:20‐23.)
It is Avery’s position that the specification refers to more than one naming
convention. One such naming convention is that discussed by 3M, as depicted in
Figure 22. Avery asserts the specification later refers to another naming
convention, without reference to Figure 22. “In one possible naming convention,
positive inclinations results in decreasing both dihedral 1‐3 and dihedral 1‐2 for a
given side groove while negative inclination results in increasing both dihedral 1‐
3 and dihedral 1‐2” (Id. col. 18:20‐22). Because the specification contemplates
more than one naming convention, neither the claim language or the specification
26
requires the construction proposed by 3M.
The Court cannot accept Avery’s construction. If the faces of a cube corner
were meant to be arbitrarily assigned the designations “1ʺ “2ʺ or “3ʺ, there would
be no need to refer to dihedral angle errors generally in some claims, yet
designate the angle errors in other claims. See Phillips, 415 F.3d at 1314
(recognizing that other claims in patent can be a valuable source as to the
meaning of a claim term). For example, in the ‘426 patent, claim 1 recites “[a]n
article comprising preferred geometry cube corner elements wherein at least one
cube comprises a 1‐2 dihedral angle error and a 1‐3 dihedral angle error, wherein
the dihedral angel errors vary in opposition.” Claim 5, however, recites “[a]n
article comprising at least one preferred geometry cube corner element having
three dihedral angle errors where the dihedral angle errors are different from
each other.” If the 1‐2 and 1‐3 dihedral angle errors are not specifically
designated, as proposed by 3M, claims 1 and 5 of the ‘426 patent cover the exact
same subject matter.
In addition, while the claim itself does not specifically assign the cube
corner faces, the Court may look to the specification. As 3M points out, the eight
working examples described in the specification provides the dihedral angles are
27
identified as defined in Figure 22. (‘426 patent, col. 29:49‐51.) The Court will
thus adopt 3M’s construction of this term.
c.
“Varied/Vary in Opposition”
3M proposes this term be construed as “to intentionally provide within a
given cube corner element a ‘1‐2 dihedral angle error’ and a ‘1‐3 dihedral angle
error’ that are different in magnitude and/or sign.” Avery proposes the
following construction: “different in magnitude and/or sign.” Avery argues that
including “intentional” in the construction violates a fundamental tenant of claim
construction, as it renders the term indefinite.
The specification includes a definition of this term as follows: “‘Varied in
opposition’ as used herein is defined as intentionally providing within a given
cube corner on a lamina dihedral 1‐2 and 1‐3 errors (differences from 90E) that
differ in magnitude and/or sign.” (‘983 patent, col. 18: 37‐40; ‘426 patent, col.
18:30‐33; ‘386 patent, col. 18:11‐14.) As discussed above, generally the Court
should not impose an element of intent into a claim, unless specifically set forth
in the claim or specification. See Intel Corp., 946 F.2d at 832 (finding that intent is
not relevant to whether an accused product infringes a patent). Here, the
inventors acted as their own lexicographer, and included a clear definition of
28
“varied in opposition” in the specification, which included “intentionally”.
Accordingly, the Court will adopt 3M’s construction as consistent with the
definition as provided in the specification.
d.
“Row” and “Row of Cube Corner Elements”
3M asserts these terms need no construction. Avery proposes that “row”
be construed as “uninterrupted and having a common edge aligned on the same
plane” and that “row of cube corner elements” similarly be construed as
“uninterrupted cube corner elements having a common edge aligned on the same
plane.”
3M asserts that while there are embodiments that feature an uninterrupted
row, neither the claim or the specification requires that the row be uninterrupted.
In fact, the specification provides only that “[r]egardless of whether the third face
is a working surface . . . of the lamina or a primary groove face, the third face of
each element within a row preferably share a common plane.” (‘983 patent, col.
9:57‐60) (emphasis added).
Avery responds that the specification supports its construction, citing that
portion of the specification that recites “[w]ith respect to the sheeting, the row is
defined by the elements wherein a face of each element within the row shares a
29
common plane.” (Id., col. 27:65‐28:1.) Avery further asserts that its construction
is consistent with the testimony of 3M’s expert, Duncan Moore, who testified that
a row of preferred geometry cube corners is “two or more preferred corner cubes
such that they’re aligned with their common face, the groove face.” (O’Brien
Decl., Ex. 7 at 68.) Moore further testified that if the preferred geometry cube
corners share a primary groove, they would all be in the same row. (Id. at 72.)
The Court finds that Avery’s proposed construction imposes limitations
that are not supported by either the intrinsic or extrinsic evidence. As the parties
have pointed out, the specification discusses embodiments where the elements of
a cube corner do share a common plane, and where the elements preferably share
a common plane ‐ from which one can infer that elements are not required to
have a common plane. As to the limitation that the row be “uninterrupted” the
Court finds no support for this limitation in either the intrinsic or extrinsic
evidence. In the context of the asserted claim language, the Court finds that
these terms can be given the plain and ordinary meaning.
e.
“Reference Plane (28)”
3M proposes the following construction of this term as used in claim 19 of
the ‘983 patent: “‘Reference plane (28)’ corresponds to the y‐z plane in a Cartesian
30
coordinate system where the x‐z plane corresponds to and is centered between the
major surfaces of the lamina and the x‐y plane extends substantially coplanar with
the working surface of the lamina on which the cube corner elements are formed.”
3M proposes the following construction of the term as used in claim 26:
“‘Reference plane (28)’ corresponds to the y‐z plane in a Cartesian coordinate
system where the x‐z plane corresponds to the primary groove and the x‐y lane
extends substantially coplanar with the sheeting along which the cube corner
elements are located.”
Avery proposes the following: “the plane identified in Figure 1.”
Asserted claim 19 of the ‘983 patent is directed to “lamina.” The
specification provides that the lamina can be characterized in three‐dimensional
space through use of a Cartesian coordinate system, referencing Figure 1. (‘983
patent, col. 8:13‐23.) As to reference plane (28), the specification provides that “a
third reference plane 28 referred to as the y‐z plane, is centered between first end
surface 20 and second end surface 22 and has the x‐axis as its normal vector.” (Id.
col. 8:20‐23.) The specification further provides that “[f]or the sake of clarity,
various geometric attributes of the present invention will be described with
reference to the Cartesian reference planes as set forth herein. However, it will be
31
appreciated that such geometric attributes can be described using other coordinate
systems or with reference to the structure of the lamina.”
(Id. col. 8:26031.)
3M asserts that its proposed construction of “reference plane (28)” as it
relates to claim 19 is basically the textual description of the alignment of the
planes that is shown in Figure 1. Therefore, it appears the parties agree as to what
“reference plane (28)” relates to in claim 19, which relates to a lamina.
Asserted claim 26 of the ‘983 patent, however, refers to “retroreflective
sheeting” as opposed to lamina. While the specification clearly describes
reference plane (28) by superimposing a Cartesian coordinate system onto the
structure of a lamina, there is no similar description of this term by superimposing
a Cartesian coordinate system onto sheeting. While sheeting may be made from a
master tool created by laminae, it is not required. (‘983 patent, col. 27:54‐59.) As a
result, 3M asserts that Avery’s construction, which simply refers to a lamina in
Figure 1, does not translate to sheeting, as the reference plane must be described
with reference to attributes of sheeting. For example, 3M asserts that as to lamina,
reference plane (28) is describes in relation to the major working surface of the
lamina. There is no major working surfaces on sheeting, however, therefore a
32
construction of reference plane (28) as to sheeting, with reference to a major
working surface of lamina, is nonsensical. 3M asserts that its construction of
reference plane (28) with respect to sheeting, describes the term by superimposing
a Cartesian coordinate system onto sheeting, and positioning the x‐z plane to
correspond to the primary groove, and the x‐y plane to extend substantially
coplanar with the sheeting along which the cube corner elements are located.
Avery asserts that the Court cannot adopt 3M’s proposed construction,
which provides different meanings to the same claim term. FinControl Sys. Pty,
Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001). The law does recognize
that terms can be given different meanings, however, if it is clear from the
specification and prosecution history that different meanings apply. PODS, Inc. v.
Porta Stor, Inc., 484 F.3d 1359, 1366 (Fed. Cir. 2007).
The Court finds that with respect to the asserted claims and patents at issue,
it is appropriate to provide different constructions to the claim term “reference
plane (28).” Claim 19 of the ‘983 patent describes a lamina with certain
dimensions. Claim 26 of the same patent describes sheeting with certain
dimensions. Figure 1 provides a helpful visual to understand the reference planes
as to a lamina. However, because Figure 1 depicts reference planes (24) and (28)
33
based on the dimensions of a single lamina, Figure 1 would not translate to
sheeting, which is typically made from a tool using multiple lamina.
Avery nonetheless argues 3M’s construction adds limitations that are not
required by the specification or the claims themselves. 3M’s construction as to
claim 26 defines reference plane (28) with respect to reference plane (24), and
provides that reference plane (24) corresponds to the primary groove. Avery
argues that nowhere in the specification is there language which suggests that the
x‐z plane, or reference plane (24), correspond with or line up to the primary
groove. Figure 1, which defines the reference planes, includes no grooves.
The Court acknowledges that the specification does not provide a separate
description of the reference planes with respect to sheeting. Nonetheless, the
Court finds that 3M’s construction of reference plane (28) with respect to sheeting
is supported by the intrinsic evidence. As depicted in Figure 1, reference plane
(24) is that plane that is centered between the major working surfaces of the
lamina. As depicted in Figures 6 and 9, the primary groove corresponds to
reference plane (24). Further, the specification describes “primary groove” as
follows: “
A single lamina may have a single primary groove face, a pair of groove
34
faces on opposing sides and/or a primary groove along the intersection of
working surface 16 with reference plane 24 that concurrently provides a
pair of primary groove faces (e.g., FIG. 4). The primary groove is preferably
parallel to reference plane 26 to within 1E.
(Id. col. 9:67 ‐ 10:6.)
Further, the pairs of laminae having opposing orientation are positioned
such that their respective primary groove faces 50 form primary groove 52.
(Id. col. 10:18‐20.) Because the intrinsic evidence supports the alignment of the x‐z
plane/reference plane (24) with the primary groove, the Court finds it is
appropriate to construe reference plane (28) with respect to sheeting by reference
to the primary groove. The Court will thus adopt 3M’s proposed constructions of
reference plane (28).
f.
“Nominally Parallel”
3M proposes the following construction: “parallel within the degree of
manufacturing precision of the relevant manufacturing process.” Avery’s
proposed construction reads: “no purposeful variation from parallel using a
groove‐forming machine with a degree of precision of at least 1/4 arc minute.”
The specification provides: “Nominally parallel grooves are grooves
wherein no purposeful variation has been introduced within the degree of
precision of the groove‐forming machine.” (‘983 patent, col. 9:2‐4.) 3M asserts its
35
definition of nominally parallel follows from this definition and generalizes such
definition for all structures.
Avery asserts its definition is faithful to the definition of “nominally
parallel grooves” but also provides guidance as to the meaning of “degree of
manufacturing precision.” To that end, the specification provides: “[t]he
difference in magnitude is typically at least 1/4 arc minutes, more preferably at
least ½ arc minutes, and most preferably at least 1 arc minutes. Hence the grooves
are nonparallel by amount greater than nominally parallel.” (Id., col. 18:40‐44.)
Avery asserts this language means that the side grooves differing in angle by at
least 1/4 arc minute are not nominally parallel. Avery asserts this level of
precision was common in the art and was recognized in much earlier 3M patents.
(See, e.g., O’Brien Decl., Ex. 18, U.S. Patent No. 4,775,219, col. 8:31‐35.) Avery
further asserts that without numerical precision, there will be no way to
differentiate between “parallel”, “nominally parallel” and “substantially parallel.”
3M responds that the language cited by Avery as to “degree of precision” is an
exemplary embodiment, not a definition.
The Court finds that Avery’s proposed construction is supported by the
intrinsic evidence, and is favored over 3M’s proposed construction as to provides
36
guidance as to what is “nominally parallel” versus “non‐parallel” as those terms
are used in the asserted claims. The Court thus adopts Avery’s proposed
construction of “nominally parallel.”
g.
“Primary Groove Face”
3M proposes the following construction: “a face defined by the faces of
multiple preferred geometry cube corner elements that lie in a common plane.”
Avery’s proposed construction reads as follows: “a face defined by the faces of
multiple cube corner elements that lie in the common plane.” As is clear from the
parties’ proposed construction, the dispute concerns whether the term should be
construed with regard to “preferred geometry” cube corner elements.
The term “primary groove face” appears in asserted claim 10 of the ‘426
patent, which depends on claim 5, which recites “[a]n article comprising preferred
geometry cube corner elements.” Thus, for purposes of this action, the term
“primary groove face” should be construed as referring to the “preferred
geometry” cube corner elements.
IT IS SO ORDERED.
Date: March 22, 2012
s/ Michael J. Davis
Michael J. Davis
37
Chief Judge
United States District Court
38
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