ICI UNIQEMA INC. v. KOBO PRODUCTS, INC.

Filing 263

OPINION filed. Signed by Judge Joel A. Pisano on 2/13/2015. (kas, )

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY

____________________________________
:
:
ICI UNIQEMA, INC.,
:
:
:
Plaintiff,
:
:
v.
:
:
KOBO PRODUCTS, INC.,
:
:
:
Defendant.
:
____________________________________:

Civil Action No. 06-2943 (JAP)

OPINION

PISANO, District Judge.
This is a patent infringement action brought by plaintiff ICI Uniqema, Inc., now
known as Croda, Inc. (hereinafter “Croda” or “Plaintiff”) against defendant Kobo Products,
Inc. (“Kobo” or “Defendant”). Presently before the Court are two motions for summary
judgment by Kobo. For the reasons below, Kobo’s motions are denied.
I. BACKGROUND
A. Procedural History
Croda filed its complaint in this action in June 2006, alleging that Kobo infringed
three of its patents, U.S. Patent Nos. 5,068,056 (the “’056 Patent”); 5,366,660 (the “’660
Patent”); and U.S. Patent No. 5,599,529 (the “‘529 Patent”). Only the ‘529 Patent remains at

1

issue in this case. 1 The ’529 Patent is entitled “Dispersions,” and relates to dispersions of
titanium dioxide particles in oil. It contains twenty-eight claims.
A number of claim terms from the patent were disputed, and in December 2008 the
Court held a Markman hearing to resolve those issues. See D.I. 125 (Markman Opinion).
Construction of the relevant terms are discussed in more detail below.
Shortly after the Court held the claim construction hearing, on December 31, 2008,
Kobo submitted to the PTO a request to reexamine the ’660 Patent. Certification of Peter A.
Sullivan (“Sullivan Cert.”) Ex. D. Kobo asserted that the ‘660 Patent should not have been
granted over the prior art pursuant to 35 U.S.C. § § 102 and 103. Subsequently, on November
3, 2009, Kobo submitted a request to the PTO to reexamine the ‘529 Patent. On motion by
Kobo, this Court stayed the instant proceedings pending reexamination of these patents.
By mid-2011 the reexamination proceedings had concluded and Plaintiff moved to
reopen these proceedings. On June 1, 2011, this action was reopened for further proceedings.
Presently before the Court are two motions for summary judgment by Kobo. In the
first, Kobo alleges that the ‘529 Patent is invalid for failure to meet the written description and
enablement requirements of 35 U.S.C. § 112(a) regarding the claim term “substantially
transparent to visible light.” The second motion alleges that the ‘529 Patent is unenforceable
due to alleged inequitable conduct by Plaintiff in reexamination proceedings before the PTO.
B. Background of the Technology
The products at issue in this case are mixtures of titanium dioxide particles and oils
known as dispersions. Dispersions of titanium dioxide are used in the manufacture of, for

1

The parties have indicated that Plaintiff is no longer pursuing its claims as to the ‘056 Patent, and all of the
claims of the ‘660 Patent have been rejected by the United States Patent and Trademark Office (“PTO”) on
reexamination.

2

example, sunscreens and sunscreen cosmetics. Sunscreens are applied topically to the skin to
reduce sunburn and other damage (such as premature aging) associated with ultra violet
(“UV”) radiation, both UVA radiation and UVB radiation.
There are two common classes of sunscreen – chemical and physical. Chemical
sunscreens contain chemical compounds that absorb UV light. Physical sunscreens, on the
other hand, contain materials such as titanium dioxide that scatter light. Some of the
challenges involved in creating physical sunscreens include difficulties in mixing a sufficient
amount of active ingredient, e.g., titanium dioxide particles, to provide adequate UV
protection while avoiding the whitening effect associated with increased levels of that
ingredient. Said another way, with respect to physical sunscreens, the sunscreen dispersion
should have enough active ingredient to shield the skin from UV light while allowing visible
to pass through (and, thus, appear invisible -- not white 2 -- on the skin).
C. The ‘529 Patent
The ‘529 Patent was issued by the PTO on February 4, 1997. The specification
identifies the invention as relating to dispersions of titanium dioxide particles with the
following ingredients: an oil, particles of titanium dioxide having an average size from 0.01 to
0.15 micron (or 10 to 150 nm), and an organic dispersing agent for the particles. The claimed
dispersions have a solids contents of greater than 40% by weight. The dispersions of the ‘529
Patent are “substantially transparent to visible light” and substantially absorbent to UV light
(that is, it has a maximum extinction coefficient in the UV range of wavelengths of at least 40
liters per gram per centimeter). Thus, according to the specification, the dispersions of the

2

Such as the sunscreen seen on a white-nosed lifeguard at the beach.

3

‘529 Patent are suitable for use in a sunscreen formulation. In this regard, the ability to
maintain transparency to visible light while blocking UV light is an important feature.
Of the ‘529 Patent’s twenty-eight claims, twenty-one are directed to a dispersion of
titanium dioxide in oil, and the remaining seven are directed to a method of creating the
dispersion.
Independent claim 1, directed to an oil dispersion, reads as follows:
An oil dispersion comprising an oil, particles of titanium dioxide having an
average size of from 0.01 to 0.15 micron and an organic dispersing agent for
said particles, the amount of said particles being such that the dispersion has a
solids content of greater than 40 percent by weight and said dispersion being
substantially transparent to visible light and substantially absorbent to UV light
so that the dispersion has a maximum extinction coefficient (E(max)) in the ultra
violet range of wavelengths of at least 40 liters per gram per cm.
‘529 Patent, claim 1. Dependent claims 2 through 21 all ultimately depend on claim 1. ‘529
Patent, col. 14, line 32 to col. 16, line 3.
Independent claim 22, directed to a method for the manufacture of an oil dispersion,
reads as follows:
A method for the manufacture of an oil dispersion which comprises milling
particulate titanium dioxide in the presence of a particulate grinding medium in
an oil and in the presence of an organic dispersing agent for said titanium
dioxide in said oil in which the amount of said titanium dioxide is such that the
dispersion has a solids content of greater than 40 percent by weight and
continuing said milling for a period of time such that the particulate titanium
dioxide has an average of 0.01 to 0.15 micron and that the dispersion obtained
has a maximum extinction coefficient in the ultra violet range of wavelength of
at least 40 liters per gram per cm.
‘529 Patent, col. 16, lines 4-16. Dependent claims 23-28 all ultimately depend on
claim 22. Id. at col. 16, lines 17-33.
According to Plaintiff’s expert, a person of ordinary skill in the art would understand
that an oil dispersion in the context of the ‘529 Patent claims refers to a stable dispersion of

4

titanium dioxide particles in an oil. The dispersions claimed in the ‘529 Patent can be used as
intermediates for final products such as sunscreens and sunscreen cosmetics. Tooley Decl. at
¶ 11. The oil dispersions are more easily and uniformly introduced into cosmetic products as
opposed to simply adding titanium dioxide powders, as the powders tend to agglomerate and
are more difficult to handle. Id. at ¶¶ 11-13.
The dispersions of the ‘529 Patent were sold under the trade names Solaveil and
Tioveil. Id. ¶ 12. The first generation was initially sold under the Tioveil name and was
launched at the beginning of the 1990s. 3 Tioveil was a 40% titanium dioxide dispersion.
Kobo 56.1 at ¶ 69. The next generation of products were sold under the name Tioveil 50,
which, according to Croda, were developed to improve upon the existing transparency of the
original Tioveil product. This was followed by the third generation of commercial products
that sold under the trade name Solaveil Clarus. Clarus, according to Croda, was similarly
developed to improve upon the transparency of the then-existing products.
Croda’s development of the Clarus line of products gave rise to United States Patent
No. 7,101,427 (the “’427 Patent”), which claims particulate metal oxides suitable for use in
sunscreen products. The ‘427 Patent claims an advance in dispersion transparency by
narrowing the particle size distribution. Specifically, while the ‘529 Patent discloses a
preferred embodiment having a size distribution of 80-100% of particles within the range of
10 nm to 150 nm (thus, 20% of the particles could exceed 150 nm), the ‘427 Patent states that
it is preferred that none of the particles exceed 150 nm. According to the inventors of the
‘427 Patent, this patent represented an improvement in transparency and tighter particle size
distribution control than the ‘529 Patent.

3

To the extent there is any dispute about the date it is irrelevant to the motion.

5

C. Claim Construction
At the Markman hearing in this case, the parties contested the meanings of several
terms, including the terms “substantially transparent to visible light,” “particles of titanium
dioxide,” “organic dispersing agent,” and “oil.” Id. at 4, 7, 13, 15. The Court construed the
term “substantially transparent to visible light” to mean “light in the visible range of the
spectrum can transmit through the dispersion when applied in use.” Id. at 17. The Court
noted that the dispersion must be substantially transparent to visible light when applied in use
on skin as opposed to its appearance in a jar, finding that “[i]t is clear that the transparency
during use, not necessarily transparency in the jar, is a significant feature of the invention.”
Id. at 16-17. The Court adopted Plaintiff’s proposed construction of “particles of titanium
dioxide,” construing the term broadly as “particles that include titanium and oxygen” and
without limitations such as hydrophilic or hydrophobic and regardless of the type of coating
employed on the particle. Id. at 7-12. The disputed term “organic dispersing agents” was
construed to cover all organic dispersing agents without limitation as to type. Id. at 15. The
Court also construed the term “oil” to include all cosmetically acceptable oils, including
synthetic fluids like silicone. Id. at 6-7.
D. The Reexamination of the ‘529 Patent
As noted above, on November 3, 2009, Kobo submitted to the PTO a request for ex
parte reexamination of the ‘529 Patent in light of the prior art including several Japanese
patents (“Sunstar”, “Ishihara” and “Pola Chem II”), several U.S. patents (“Inoue”, Iwaya”,
Tiejen”, and “Fukui”), and a British patent (“Stansfield”). Sullivan Aff. (D.I. 234) Ex. E.
The PTO reexamined the ‘529 Patent, and the examiner initially rejected all of its claims as
obvious over the Sunstar reference in view of the prior art listed above. Id. In particular, the

6

examiner reviewed the various components and titanium dioxide in the Sunstar composition
and concluded that the 40% or greater titanium dioxide as recited in claim 1 of the ‘529 Patent
would have been obvious to one skilled in the art. While the examiner recognized that
Sunstar did not expressly state that the compositions were substantially transparent to visible
light, substantially absorbent to UV light and having and extinction coefficient value as
recited in the claims, the examiner asserted that these were inherent properties of the titanium
dioxide dispersions of Sunstar. Sullivan Aff. Ex. F at 4.
The Examiner’s rejection occurred in April 2012. Shortly thereafter in June, the
examiner conducted an interview with Croda representatives and Dr. Tooley. Hutz Decl. Ex.
3. The examiner’s interview summary noted that “[t]he discussion was on the differences
between the claimed dispersion and Sunstar’s cosmetic composition, which did not
necessarily possess the combination of the properties recited in claim 1.” Id. On June 26,
2012, in response to the non-final rejection, Croda submitted material to the PTO seeking
withdrawal of the rejection. The response included the declaration of one of its scientists, Dr.
Ian Tooley, discussed in more detail infra. Id. at Ex. F. The PTO thereafter withdrew the
rejections on the claims and issued a reexamination certificate. In the Reasons for Allowance,
the examiner stated as follows:
The claimed oil dispersion with its unique properties recited in the
claims is a useful and flexible intermediate product for making
final products including sunscreen cosmetics (Tooley Decl. ¶¶ 1113). Sunstar only teaches a sunscreen cosmetic prepared by the
conventional method of mixing silicone oil, fine particulate
titanium dioxide and 12-hydroxystearic acid. Since Sunstar's
composition requires the presence of a cosmetic powder (such as
pigments), which would mask the fine particulate titanium dioxide,
the sunscreen cosmetic of Sunstar would not possess the
substantial transparency to visible light and absorbance to UV light
that the dispersion has a E(max) in the UV range of wavelengths of

7

at least 40 1/g/cm as recited in the instant claims, especially when
the fine particulate titanium dioxide is not dispersed correctly
(Tooley Decl. ¶¶ 14-24). As such, it would not have been obvious
for one of ordinary skill in the art to modify Sunstar's semi-solid
sunscreen cosmetic, particularly excluding the essential cosmetic
powder, to form the oil dispersion as claimed.
Sullivan Aff. Ex. R. at 2.
II. ANALYSIS
A. Legal Standard – Summary Judgment
Summary judgment is governed by Federal Rule of Civil Procedure 56, and is
appropriate “if the pleadings, depositions, answers to interrogatories, and admissions on file,
together with the affidavits, if any, show that there is no genuine issue as to any material fact
and that the moving party is entitled to a judgment as a matter of law.” Celotex Corp. v.
Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Under Rule 56, a fact is
material if it influences the outcome of the action under the governing substantive law. See
Anderson v. Liberty Lobby, 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A
material fact raises a “genuine” issue “if the evidence is such that a reasonable jury could
return a verdict” for the nonmoving party. Healy v. N.Y. Life Ins. Co., 860 F.2d 1209, 1219 n.
3 (3d Cir.1988).
The moving party bears the initial burden of proving that no genuine issue of material
fact is in dispute. Celotex, 477 U.S. at 323. Once the moving party has carried this burden,
the non-moving party must present evidence that a genuine fact issue compels a trial. Id. at
324. The non-moving party must offer admissible evidence that establishes a genuine issue of
material fact, id., not just “some metaphysical doubt as to the material facts.” Matsushita
Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538

8

(1986). Its opposition must rest on “facts in the record and cannot rest solely on assertions
made in the pleadings, legal memoranda, or oral argument.” Berckeley Inv. Group, Ltd. v.
Colkitt, 455 F.3d 195, 201 (3d Cir. 2006).
In determining whether there is a disputed material fact, “[t]he nonmoving party's
evidence is to be believed, and all justifiable inferences are to be drawn in [that party's]
favor.” Hunt v. Cromartie, 526 U.S. 541, 552, 119 S.Ct. 1545, 143 L.Ed.2d 731 (1999)
(quoting Anderson, 447 U.S. at 255). The Court shall not “weigh the evidence and determine
the truth of the matter,” but need only determine whether a genuine issue necessitates a trial.
Anderson, 477 U.S. at 249. If the non-moving party fails to demonstrate proof beyond a
“mere scintilla” of evidence that a genuine issue of material fact exists, then the Court may
grant summary judgment. Big Apple BMW v. BMW of North America, 974 F.2d 1358, 1363
(3d Cir. 1992).
B. Legal Standard – Written Description and Enablement
One of the statutory conditions for patentability under the Patent Act is adequate
disclosure of the invention. As set forth in Section 112 of Title 35,
[t]he specification shall contain a written description of the invention, and of
the manner and process of making and using it, in such full, clear, concise, and
exact terms as to enable any person skilled in the art to which it pertains, or
with which it is most nearly connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor of carrying out his invention.
35 U.S.C. § 112. The Federal Circuit has interpreted § 112 as imposing a number of separate
disclosure requirements, two of which are relevant here. The first is known as the written
description requirement, found in the first sentence of Section 112, which requires that the
specification contain an adequate “written description of the invention.” 35 U.S.C. § 112; see
also Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353–54 (Fed. Cir. 2010) (en

9

banc) (“[A] separate requirement to describe one’s invention is basic to patent law. Every
patent must describe an invention. It is part of the quid pro quo of a patent; one describes an
invention, and, if the law’s other requirements are met, one obtains a patent. The specification
must then, of course, describe how to make and use the invention (i.e., enable it), but that is a
different task.”).
“[T]he purpose of the written description requirement is to ‘ensure that the scope of
the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's
contribution to the field of art as described in the patent specification.’” Id. It “serves both to
satisfy the inventor’s obligation to disclose the technologic knowledge upon which the patent
is based and to demonstrate that the patentee was in possession of the invention that is
claimed.” Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005).
As stated by the Federal Circuit, “[t]he test for sufficiency of a written description is
whether the disclosure clearly allow[s] persons of ordinary skill in the art to recognize that
[the inventor] invented what is claimed.” Crown Packaging Technology, Inc. v. Ball Metal
Beverage Container Corp., 635 F.3d 1373, 1380 (Fed. Cir. 2011) (internal quotations omitted,
alterations in original). The “hallmark of written description is disclosure,” and a court
examining the sufficiency of a written description must make “an objective inquiry into the
four corners of the specification from the perspective of a person of ordinary skill in the art.”
Ariad, 598 F.3d at 1351. To pass muster under that inquiry, “[t]he disclosure must reasonably
convey[ ] to those skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date.” Crown, 635 F.3d at 1380 (internal quotations omitted, alteration
in original). Said another way, “the specification must describe an invention understandable

10

to that skilled artisan and show that the inventor actually invented the invention claimed.”
Ariad, 598 F.3d at 1351.
“[D]etermining whether a patent complies with the written description requirement
will necessarily vary depending on the context.” Id. The requirement “must be applied in the
context of the particular invention and the state of the knowledge.” Capon v. Eshhar, 418
F.3d 1349, 1358 (Fed. Cir. 2005). The inquiry into the written description requirement is a
question of fact, however, it is “amenable to summary judgment in cases where no reasonable
fact finder could return a verdict for the non-moving party.” Boston Scientific Corp. v.
Johnson & Johnson, 647 F.3d 1353, 1361 (Fed. Cir. 2011) (quoting PowerOasis, Inc. v. TMobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008)). A party challenging a patent based
upon the written description requirement must provide clear and convincing evidence that
persons skilled in the art would not recognize in the disclosure a description of the claimed
invention. Centocor Ortho Biotech, Inc. v. Abbott Laboratories, 636 F.3d 1341, 1347 (Fed.
Cir. 2011) (presumption of validity overcome only by clear and convincing evidence).
Separate from the written description requirement is the “enablement” requirement
codified in § 112. “To be enabling, the specification of a patent must teach those skilled in the
art how to make and use the full scope of the claimed invention without ‘undue
experimentation.’” ALZA Corp. v. Andrx Pharmaceuticals, LLC, 603 F.3d 935, 940 (Fed. Cir.
2010) (quoting Genentech Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997).
“Enablement is not precluded where a ‘reasonable’ amount of routine experimentation is
required to practice a claimed invention, however, such experimentation must not be
‘undue.’” Id. In In re Wands, 858 F.2d 731, 735 (Fed. Cir. 1988), the Federal Circuit set

11

forth the following factors that a court may consider when determining if a disclosure requires
undue experimentation:
(1) the quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4) the
nature of the invention, (5) the state of the prior art, (6) the relative skill of
those in the art, (7) the predictability or unpredictability of the art, and (8) the
breadth of the claims.
858 F.2d at 737. A court need not consider all of the Wands factors in its analysis, but rather,
a court is only required to consider those factors relevant to the facts of the case. See Amgen,
Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1213 (Fed. Cir. 1991).
Importantly, to fulfill the enablement requirement, the full scope of each claim must
be enabled. Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008).
Enabling the full scope of each claim is part of the quid pro quo of the patent
bargain. A patentee who chooses broad claim language must make sure the
broad claims are fully enabled. The scope of the claims must be less than or
equal to the scope of the enablement to ensure that the public knowledge is
enriched by the patent specification to a degree at least commensurate with the
scope of the claims.
Id. It is not sufficient for the specification to provide merely “a starting point, a direction for
further research”; it must provide “reasonable detail” sufficient to enable a person of ordinary
skill in the art to make or use the invention. Automotive Technologies Intern., Inc. v. BMW of
North America, Inc., 501 F.3d 1274, 1284 (Fed. Cir. 2007). Whether the enablement
requirement has been satisfied is a question of law based upon underlying facts, and is
determined as of the patent’s effective filing date. Sitrick, 516 F.3d at 999. A party must
prove invalidity by non-enablement by clear and convincing evidence. Microsoft Corp. v. i4i
Ltd., -- U.S. --, 131 S.Ct. 2238, 2242, 180 L.Ed.2d 131 (2011).

12

D. Legal Standard – Inequitable Conduct
Inequitable conduct, a judge-made doctrine, is an equitable defense to patent
infringement that, if proved, prevents enforcement of a patent. Therasense, Inc. v. Becton,
Dickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011) (en banc). The Federal Circuit has
described the remedy for inequitable conduct as the “atomic bomb” of patent law, as it is not
claim specific (that is, inequitable conduct as to a single claim renders the entire patent
unenforceable), it cannot be cured by reissue or reexamination, it can potentially spread to
render related patents unenforceable, it may spawn anti-trust or unfair competition claims, and
prevailing on a claim of inequitable conduct often makes a patent case “exceptional,” possibly
leading to an award of attorneys fees to the prevailing party. Id. at 1288.
The party asserting inequitable conduct bears the burden of proof and must prove
inequitable conduct “by clear and convincing evidence that the patent applicant (1)
misrepresented or omitted information material to patentability, and (2) did so with specific
intent to mislead or deceive the PTO.” Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d
1333, 1344 (Fed. Cir. 2013). Intent and materiality are separate requirements and both must
be established. Therasense, 649 F.3d at 1290. A court must weigh the evidence of each
independently and, importantly, cannot infer intent from materiality. Id.
With respect to intent, the Federal Circuit has noted that “direct evidence of deceptive
intent is rare,” and, therefore, a court may infer intent from indirect and circumstantial
evidence. Id. Nevertheless, under the clear and convincing standard, the court must find that
the specific intent to deceive is “the single most reasonable inference able to be drawn from
the evidence.” Id. If multiple reasonable inferences may be drawn, a specific intent to

13

deceive cannot be found. Id. at 1290-91. Further, the mere absence of a good faith
explanation for the accused conduct does not, alone, prove an intent to deceive. Id. at 1291.
“[T]he materiality required to establish inequitable conduct is but-for materiality.” Id.
Typically, “but-for materiality” is established by providing “proof that the patentee withheld
or misrepresented information that, in the absence of the withholding or misrepresentation,
would have prevented a patent claim from issuing.” Ohio Willow Wood Co. v. Alps S, LLC,
735 F.3d 1333, 1345 (Fed. Cir. 2013). However, a court may presume materiality upon
evidence that “the patentee has engaged in affirmative acts of egregious misconduct, such as
the filing of an unmistakably false affidavit.” Therasense, 649 F.3d at 1292.
E. Burden of Proof
Clear and convincing evidence is a higher burden of proof than preponderance of the
evidence. See Colorado v. New Mexico, 467 U.S. 310, 316, 104 S.Ct. 2433, 81 L.Ed.2d 247
(1984). To be clear and convincing, evidence must “place[ ] in the factfinder ‘an abiding
conviction that the truth of [the] factual contentions are highly probable.’ ” Procter & Gamble
Co. v. Teva Pharma. USA, Inc., 566 F.3d 989, 994 (Fed.Cir.2009) (quoting id.)). Clear and
convincing evidence should “instantly tilt[ ] the evidentiary scales” in favor of its proponent
when weighed against the opposing evidence. Colorado, 467 U.S. at 310.
F. Whether Kobo Is Entitled To Summary Judgment Based On Lack Of Enablement
Kobo argues that Croda did not enable the ‘529 Patent because the patent does not
teach a skilled artisan how to achieve substantial transparency, particularly in an end-use
product, without undue experimentation. Kobo further asserts that the ‘529 Patent claims
would cover any dispersion that achieves substantial transparency by whatever means, be it
through advances in coating technology, discoveries with respect to superior pairings of

14

particular fluid carriers and particular dispersants, or advances and refinements in particle size
ranges and particle size distribution, but it does not teach how to achieve transparency for the
broad range of particle size, titanium dioxide concentrations and the multitude of dispersantcarrier combinations covered under the claims.
In support of its argument, Kobo points to a litany of items the specification allegedly
lacks. These include the following allegations:
• The specification does not show how to formulate with a greater weight percentage
of titanium dioxide in an end-use product without altering the appearance on skin, nor does it
show how to create a sunscreen with optical properties in the visible region comparable to
those of organic UV absorbers. Kobo Br. at 9.
• There are no measurements at all in the ’529 Patent of the visible appearance as
applied on skin of either the dispersions or the end-use product examples described in the
specification. Id.
• The term “substantially transparent to visible light” is used in the patent only a few
times. Id. at 10.
• The specification lists applications such as cosmetics and sun creams, but fails to
teach the steps to be taken in an end-use formulation to measure substantial transparency for
the range of dispersions claimed. Id.
• There is no instruction or suggestion of actions to avoid doing to obtain the claimed
UV attenuation and substantial transparency. Id.
• There is no benchmark spelled out for an ordinarily skilled worker to reference,
against which to measure whether the degree of transparency rises to the level of
“substantially transparent.” Id.

15

• The disclosure in the specification pertaining to the optical properties for dispersions
in each example is limited to three extinction coefficient values. Id.
• The specification only records two data points in the UV range of wavelengths, at
308 nm and at the λ(max), the wavelength where the extinction coefficient of UV light is
greatest. The value of the extinction coefficient at λ(max) must be above 40 l/g/cm for the
dispersion to meet the value specified in claim 1. The specification only records one data
point, 524 nm, in the visible range of wavelengths (400 nm-700 nm). Id. at 10-11.
• The specification also does not describe the transparency of any finished sunscreen
formulation. Id. at 11.
• There are no claims to end-use formulations, and the disclosure of finished
formulations in the specification is confined to Examples 9-11. Id.
• The specification does not disclose any finished sunscreen with 20% or more
titanium dioxide. Id.
• There are no measurements of the dispersion after incorporation into the end-use
sunscreen to show an advance in transparency beyond what was already achievable in the
prior art. Id.
• The ’529 Patent does not show a transparency comparison in formulations using
various particle sizes of titanium dioxide dispersions or with organic UV absorbers at any
concentration.
• The ’529 Patent specification refers only generally to milling “using a particulate
grinding medium” of a type known to those skilled in that art at the time of the patent filing
without any instruction on how the operation may affect transparency. Id.

16

• The specification discloses a preferred embodiment having a “narrow size
distribution” of 80-100% spherical particles within the range of 10 nm to 150 nm but fails to
disclose how to calculate this distribution and is silent as to why this distribution is
“preferred.” Id. at 11-12.
• The specification teaches nothing about coating titanium dioxide particles in relation
to reducing agglomeration and achieving transparency. Id. at 12.
• The ’529 Patent does not speak at all to the issue of agglomeration. Id.
• The specification provides no guidance on whether the inventor’s references to
“particle” in claim 1 meant primary particles or secondary particles, which would be
understood to include aggregates and agglomerates and does not discuss when particle
measurement is to take place. Id.
While, if nothing else, the list is impressive in its length, the Court agrees with Croda
that merely identifying a laundry list of alleged defects in the ‘529 Patent is not sufficient to
entitle Kobo to the summary judgment it seeks. With regard to enablement, Kobo’s initial
burden on this motion is to present evidence that shows that at the time of the filing of the
patent application one skilled in the art, having read the specification, could not practice the
invention without undue experimentation. See MagSil Corp. v. Hitachi Global Storage
Techs., Inc., 687 F.3d 1377, 1381 (Fed.Cir. 2012) (“The specification must contain sufficient
disclosure to enable an ordinarily skilled artisan to make and use the entire scope of the
claimed invention at the time of filing.”). As Croda points out, Kobo has not met its burden.
As an initial matter, the Court finds evidence lacking as to how the disclosures of the ‘529
Patent would be understood by one of skill in the art and, additionally, to what extent the
allegedly missing items from the specification would not already be part of the knowledge of

17

a person skilled in the art. Kobo further fails to adequately explain how or why the allegedly
missing information would be necessary for a person of ordinary skill in the art to practice the
claimed invention. Importantly, although Kobo alleges that a skilled artisan would not have
been able to practice the full scope of the claims without undue experimentation, Kobo has
not established the extent of the experimentation that is required and why such
experimentation would be anything other than routine.
Also, there are issues of material fact that preclude summary judgment on many of the
issues raised in Kobo’s motion. For example, much of Kobo’s argument is built on the
assertion that Croda’s development of Tioveil and Solaveil and the refinement of the
technology and its advances in transparency in the decade after the filing of the ‘529 Patent
establishes that the dispersions of the ‘529 Patent were not substantially transparent.
However, giving the Croda the benefit of all reasonable inferences, this argument ignores that
the claims require only “substantial” transparency and not complete transparency, and that
there my be differing degrees of transparency. At best, the record shows that there is are
genuine issues of material fact in this regard. In short, Kobo has failed to meet its burden to
show that it is entitled to judgment as matter of law on the question of enablement.
G. Whether The Written Description Requirement Is Met
Kobo argues that the ‘529 Patent fails the written description requirement regarding
the claim limitation “substantially transparent to visible light.” In particular, Kobo asserts that
the ‘529 Patent provides no indication that the dispersions tested achieved substantial
transparency in use.
Compliance with the written description requirement is a question of fact and is only
amenable to summary judgment “in cases where no reasonable fact finder could return a

18

verdict for the non-moving party.” PowerOasis, Inc. v. T–Mobile USA, Inc., 522 F.3d 1299,
1307 (Fed. Cir. 2008). Thus, given the applicable clear and convincing standard, Kobo has a
particularly heavy burden on these motions, which it simply has not met with respect to
written description. First, many of its written description arguments suffer from the same
defects as its enablement contentions. Furthermore, disputes of fact preclude summary
judgment on the question. For example, in response to Kobo’s arguments that there is no
indication in the patent that the dispersions tested achieved substantial transparency in use,
Croda points to evidence that substantial transparency was measured using an extinction
coefficient. Although Kobo contends that this is an inappropriate measure, the issue is one for
the factfinder to decide. Consequently, Kobo’s motion is denied as to written description.
H. Whether Patentee Engaged In Inequitable Conduct
Kobo moves for summary judgment declaring the ‘529 Patent unenforceable on the
grounds that Croda committed inequitable conduct before the PTO during the reexamination
of the ‘529 Patent. Specifically, Kobo alleges that the declaration of Dr. Tooley, upon which
the examiner relied in allowing the claims, was misleading and was submitted with an intent
to mislead the examiner. Kobo alleges that Croda, through Dr. Tooley’s declaration, misled
the examiner as to (1) the importance of the method of making the claimed dispersion; (2) the
state of the prior art on transparency and the ‘529 Patent’s contribution to the art with respect
to substantial transparency; and (3) whether Sunstar used substances that functioned as
dispersants and whether Sunstar’s ultrafine titanium dioxide was properly dispersed. The
parties’ positions as to each of these are summarized below.

19

1. Importance of the Method of Making the Claimed Dispersion
Kobo alleges that Dr. Tooley misled the examiner as to whether “high shear milling”
was required to make the claimed dispersions. Dr. Tooley distinguished the dispersions of the
‘529 Patent from Sunstar based on, among other things, the high shear bead milling used to
make the claimed oil dispersion. See Tooley Decl., Sullivan Aff. Ex. O. Kobo claims Dr.
Tooley led the examiner to believe that high speed milling was required to make a “proper
dispersion,” but offered no support for his position that the Sunstar product was not dispersed
correctly. According to Kobo, Dr. Tooley represented that one skilled in the art would
understand from a review of the ‘529 Patent that because of “high speed milling and the
presence of an organic dispersing agent,” the oil dispersion of the ‘529 Patent would be
intrinsically stable and would result in dispersions with the high extinction coefficient and
substantial transparency claimed in the ‘529 Patent. Kobo Br. at 8. Kobo claims that later Dr.
Tooley “recanted” and admitted that using a dispersant does not necessarily make a dispersion
stable and, further, he also disclaimed the need to use a high speed process by acknowledging
at his deposition that it may be possible to create a suitable dispersion suing a milling process
other than that described in the ‘529 Patent.
In response, Croda contends that Kobo has failed to establish any unmistakably false
statements in the Tooley declaration regarding the method of making the claimed invention.
Croda argues that the Tooley declaration accurately describes the claimed invention and did
not distinguish the claimed invention solely on how the claimed oil dispersions were made.
Further, Croda points out that high shear milling was discussed in the context of Sunstar to
identify and explain reasons why the claimed optical properties were not necessarily present
in the Sunstar cosmetic formulations. See Sullivan Aff., Ex. O. Croda also argues that taken

20

in the proper context, nothing later said by Dr. Tooley was a contrary admission or disclaimer
of anything said in his declaration.
2. The ‘529 Patent’s Contribution to the Prior Art
Kobo contends that Croda, through the declaration of Dr. Tooley, misled the examiner
with respect to the Sunstar’s optical properties and misled the examiner with respect to the
‘529 Patent’s contribution to the art with respect to substantial transparency.
As to the latter, Kobo claims Dr. Tooley misled the PTO when he stated that the
dispersion of the ‘529 Patent “does not add its own color or pigmentation to the end-use
product,” as the words “color” or “pigmentation” or similar words do not appear in the ‘529
Patent. Kobo then goes on to argue, similar to its arguments with respect to its invalidity
motion, that the claimed invention and subsequent commercial embodiments were not
substantially transparent. In response, Croda argues that the evidence is more than sufficient
to establish that the claimed invention and its commercial embodiments were substantially
transparent as required by the claims of the ‘529 Patent. Dr. Tooley, for example, testified to
that effect at his deposition. Tooley Dep. 192:10 to 193:22.
With regard to Sunstar’s optical properties, Kobo alleges that Dr. Tooley made
misstatements in representing the inability to measure the transparency and UV properties of
Sunstar. Croda responds that Kobo distorts the meaning of Dr. Tooley’s declaration and
mischaracterizes his deposition testimony.
3. Sunstar Dispersants and Dispersion of Particles
Kobo claims that Dr. Tooley misled the examiner on the proper construction of the
term “organic dispersing agent” and asserted that 12-hydroxystearic acid, used in Sunstar was
not an organic dispersing agent even though Croda argued (and prevailed) in claim

21

construction for a very broad functional definition of dispersing agent and Dr. Tooley never
did any tests to determine if 12-hydroxystearic acid functioned as a dispersant. Croda
responds that, consistent with its argued-for claim construction, Dr. Tooley described the
dispersing agent based on its function, and further explained why the agents in Sunstar were
not the same as the claimed dispersing agents.
4. Whether Plaintiff Engaged In Inequitable Conduct
Having carefully reviewed the evidence of record, the Court finds that Kobo has not
met its exceedingly high burden to show that it is entitled to judgment as a matter of law on its
claim of inequitable conduct. See Ohio Willow Wood Co., 735 F.3d at 1344 (must show “by
clear and convincing evidence that the patent applicant (1) misrepresented or omitted
information material to patentability, and (2) did so with specific intent to mislead or deceive
the PTO.”) As an initial matter, the Court finds that there are issues of fact regarding alleged
falsity of many of the statements to which Kobo points that must be resolved by the
factfinder. Viewing the alleged misstatements in the appropriate context and in light of other
evidence, and drawing all justifiable inference in favor of Croda as the Court must, Hunt, 526
U.S. at 552, the Court finds issues of fact exist precluding summary judgment.
Furthermore, as Croda points out, Kobo’s materiality and intent arguments are based
solely on the alleged falsity of the statements in Dr. Tooley’s declaration. With respect to
intent in particular, the Court finds that fact issues preclude summary judgment. For example,
in his declaration, Dr. Tooley asserted that he believed the facts therein to be true at the time
he executed the declaration, Tooley Decl. at 9, and there is no evidence that he or anyone at
Croda actually believed them to be false. See Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d
1317, 1332 (Fed. Cir. 2009) (“[R]egardless of whether the statement is actually false,

22

[declarant] believed the statement to be true at the time that he made it. With no other
evidence in the record, the district court correctly found that [movant] made no genuine
showing of deceptive intent.”). Kobo’s motion for summary judgment is, therefore, denied.
III. CONCLUSION
For the reasons above, Kobo’s motions are denied. An appropriate Order
accompanies this Opinion.

/s/ Joel A. Pisano
JOEL A. PISANO, U.S.D.J.

Dated: February 13, 2015

23