BASF AGRO B.V., ARNHEM (NL), WADENSWIL BRANCH et al v. MAKHTESHIM AGAN OF NORTH AMERICA, INC. (MANA) et al
Filing
235
MEMORANDUM OPINION AND ORDER signed by JUDGE WILLIAM L. OSTEEN JR. on 1/9/2012 that Defendants' Modified Motion for Summary Judgment Based on Non-Infringement (Doc. 188 ) is GRANTED and Counts II and III of Plaintiffs' Complaint (Doc. 1 ) are DISMISSED WITH PREJUDICE. A judgment dismissing Counts II and III of Plaintiffs' Complaint with prejudice will be forthcoming. (Wilson, JoAnne)
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
BASF AGRO B.V., ARNHEM (NL),
WADENSWIL BRANCH, BAYER S.A.S.
Plaintiffs,
v.
MAKHTESHIM AGAN OF NORTH
AMERICA, INC. (MANA),
CONTROL SOLUTIONS, INC.
Defendants.
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1:10CV276
MEMORANDUM OPINION AND ORDER
OSTEEN, JR., District Judge
Presently before the court is Defendants’ Modified Motion
for Summary Judgment Based on Non-Infringement (Doc. 188).
Defendants Makhteshim Agan of North America, Inc. (“MANA”) and
Control Solutions, Inc. (“CSI”) have filed a brief in support of
the motion (Doc. 189).
Plaintiffs BASF Agro B.V., Arnhem (NL),
Wädenswil Branch (“BASF”) and Bayer S.A.S. (“Bayer”) have filed a
response in opposition (Doc. 195), and Defendants have filed a
reply (Doc. 211).
Further, this court held a hearing regarding
the motion on October 20, 2011.
Defendants’ modified motion for
summary judgment is now ripe for adjudication, and for the
reasons set forth herein, this court will grant the motion.
I.
BACKGROUND
Plaintiffs BASF and Bayer brought this patent infringement
action, alleging that Defendants MANA and CSI will infringe
United States Patent Nos. 6,414,010 (“the ‘010 patent”) and
6,835,743 (“the ‘743 patent”), in violation of 35 U.S.C. § 271.
Inventor Yasuo Kimura (“Mr. Kimura”) acquired the ‘010
patent in 2002 and the ‘743 patent in 2004.
Both patents are
entitled “Pesticidal Pyrazoles and Derivatives,” and both teach a
method of using certain insecticidal compounds in order to
protect a building or future building against damage caused by
insects.1
Bayer is the assignee and owner of both the ‘010
patent and the ‘743 patent (collectively, “the Kimura patents”),
and BASF is the exclusive licensee of the Kimura patents in the
United States with respect to the insecticidal compound Fipronil.
(See Compl. (Doc. 1) ¶¶ 13, 15.)
Plaintiffs assert that Defendants will infringe claims 1, 2,
6, 8, 9, 10, 18, 19, 21, and 23 of the ‘010 patent and claims 1,
2, 5, 6, 7, and 14 of the ‘743 patent.
(Doc. 133) at 2.)2
(Joint Pre-Hr’g Statement
This court has already construed the disputed
1
It is undisputed that the ‘743 patent is a divisional
patent with the same priority date and specification as the ‘010
patent. (See Markman Hr’g Tr. (Doc. 148) at 10-11.)
2
All citations in this Order to documents filed with the
court refer to the page numbers located at the bottom right-hand
corner of the documents as they appear on CM/ECF.
2
terms of the Kimura patents in an order entered on June 30, 2011
(“Markman Order”) (Doc. 183).
II.
LEGAL STANDARD
Summary judgment is appropriate where an examination of the
pleadings, affidavits, and other proper discovery materials
before the court demonstrates that no genuine issue of material
fact exists and that the moving party is entitled to judgment as
a matter of law.
See Fed. R. Civ. P. 56.
The moving party bears
the burden of initially demonstrating the absence of a genuine
issue of material fact.
323 (1986).
Celotex Corp. v. Catrett, 477 U.S. 317,
If the moving party has met that burden, then the
nonmoving party must persuade the court that a genuine issue
remains for trial by “go[ing] beyond the pleadings” and
introducing evidence that establishes “specific facts showing
that there is a genuine issue for trial.”
Id. at 324 (internal
quotation marks omitted).
In considering a motion for summary judgment, the court is
not to weigh the evidence, but rather must determine whether
there is a genuine issue for trial.
Inc., 477 U.S. 242, 249 (1986).
Anderson v. Liberty Lobby,
The court must view the facts in
the light most favorable to the nonmovant, drawing all
justifiable inferences in that party’s favor.
Id. at 255.
A
mere factual dispute is insufficient to prevent summary judgment;
the fact in question must be material, and the dispute must be
3
genuine.
Fed. R. Civ. P. 56; Anderson, 477 U.S. at 247-48.
Material facts are those facts necessary to establish the
elements of a party’s cause of action.
248.
Anderson, 477 U.S. at
A dispute is only “genuine” if “the evidence is such that a
reasonable jury could return a verdict for the nonmoving party.”
Id.
III. ANALYSIS
In support of their motion for summary judgment, Defendants
argue, inter alia, that the accused label for Defendants’ Taurus
SC product instructs users to apply that product in a manner that
was disclaimed during prosecution of the Kimura patents.
Br. Supp. Modified Mot. Summ. J. (Doc. 189) at 15.)
(Defs.’
Because Mr.
Kimura disclaimed that application method, Defendants contend,
the Taurus SC label does not infringe, or induce infringement of,
the Kimura patents.
(Id. at 15-16.)
Plaintiffs argue that Defendants’ Taurus SC label instructs
users to practice the Kimura patents’ invention and merely adds
prior art to that invention.
(Pls.’ Br. Opp’n Defs.’ Modified
Mot. Summ. J. (Doc. 195) at 10-11.)
Plaintiffs argument is
premised upon their brief that the claims of the Kimura patents
are open-ended “comprising” claims and that “the addition of
elements or steps to [such a] claim is still an infringement.”
(Id. at 11.)
4
Each of the asserted claims of the Kimura patents contains
in its preamble, or depends from a claim whose preamble contains,
the phrase “comprising the steps of.”
(See Compl. Ex. B (Doc. 1-
3) at 5, col. 5, l. 52; id. at 6, col. 7, ll. 45-46; Compl. Ex. C
(Doc. 1-4) at 5, col. 5, l. 55.)
When a patent claim uses the word “comprising” as
its transitional phrase, the use of “comprising”
creates a presumption that the body of the claim is
open. In the parlance of patent law, the transition
“comprising” creates a presumption that the recited
elements are only a part of the device, that the claim
does not exclude additional, unrecited elements.
Crystal Semiconductor Corp. v. TriTech Microelecs. Int’l, Inc.,
246 F.3d 1336, 1348 (Fed. Cir. 2001); see also Free Motion
Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343, 1347 (Fed.
Cir. 2005) (“The addition of unclaimed elements does not
typically defeat infringement when a patent uses an open
transitional phrase such as ‘comprising.’”); Gillette Co. v.
Energizer Holdings, Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005)
(“The word ‘comprising’ transitioning from the preamble to the
body signals that the entire claim is presumptively
open-ended.”).
The Kimura patents’ use of the word “comprising”
thus creates a presumption that the patents’ claims do not
exclude unrecited elements and that infringement cannot be
avoided through the simple addition of unclaimed elements.
However, a patentee can rebut the presumption stemming from
use of the word “comprising” by clearly disavowing certain
5
unrecited elements and thereby actively excluding those elements
from the scope of the patent’s claims.
See Free Motion Fitness,
Inc., 423 F.3d at 1353 (“The presence of an undesirable prior art
feature in addition to the elements recited in the claim . . .
does not limit the claim unless there is a clear and unmistakable
disclaimer of claim scope.” (emphasis added)).
When a patentee
clearly disclaims particular elements, an accused device or
method that adds those very disclaimed elements to the patented
invention will be deemed noninfringing.
N. Telecom Ltd. v.
Samsung Elecs. Co., 215 F.3d 1281, 1296-97 (Fed. Cir. 2000)
(“[I]f a patent requires A, and the accused device or process
uses A and B, infringement will be avoided only if the patent’s
definition of A excludes the possibility of B.”); RFID Tracker,
Ltd. v. Wal-Mart Stores, Inc., 342 F. App’x 628, 630-32 (Fed.
Cir. 2009) (per curiam) (affirming summary judgment of
noninfringement based on a finding that the patentee’s disavowal
of claim scope rebutted the presumption arising from use of an
open-ended term).
In its Markman Order, this court has already found that Mr.
Kimura made “an express, intrinsic disclaimer of subject matter”
when he stated in the Kimura patents’ specifications that
“‘[a]nother object of the instant invention is to provide a
termite treatment without barrier.’”
(Doc. 183 at 14 (quoting
Compl. Ex. B (Doc. 1-3) at 3, col. 1, ll. 43-44).)
6
More
specifically, after examining what Mr. Kimura meant by “without
barrier,” this court found that Mr. Kimura “disclaimed applying
insecticide without loopholes around a building, under a
building, and both around and under a building.”
(Id. at 19-20.)
This court also noted that Mr. Kimura’s disclaimer of barrier
treatments affects all the asserted claims of the Kimura patents.
(Id. at 26 n.10.)
Thus, even assuming arguendo that Defendants’
Taurus SC label instructs users to practice the invention that is
claimed in the Kimura patents, this court must find the Taurus SC
label to be noninfringing if that label also instructs users to
apply the product without loopholes around a building, under a
building, or both around and under a building.
See Free Motion
Fitness, Inc., 423 F.3d at 1353; N. Telecom Ltd., 215 F.3d at
1296-97; RFID Tracker, Ltd., 342 F. App’x at 630-32.
There is no dispute that Defendants’ Taurus SC label
instructs users, at least in part, to apply the product in a
manner that falls within the disclaimer that this court found in
its Markman Order.
The “General Information” portion of the
label states: “This product must be applied in manner [sic] which
provides a continuous treated zone to effectively prevent
termites from infesting wood.”
(Defs.’ Br. Supp. Modified Mot.
Summ. J. Ex. I (Doc. 189-9) at 4 (emphases added).)
Further, the
“Exterior Perimeter/Localized Interior” (“EP/LI”) portion of the
label, which is the particular portion that Plaintiffs contend
7
infringes the Kimura patents, (e.g., Pls.’ Br. Opp’n Defs.’
Modified Mot. Summ. J. (Doc. 195) at 12-14), calls for “the
establishment of a continuous treated zone along the exterior of
the foundation” and states that “[t]o prevent termite infestation
of a structure, exterior perimeter applications of Taurus SC must
be made in a manner which will create a continuous treated zone.”
(Defs.’ Br. Supp. Modified Mot. Summ. J. Ex. I (Doc. 189-9) at 10
(emphases added).)
The Taurus SC label thus directs users to
apply the product without loopholes around a building, a method
that Mr. Kimura specifically disclaimed.
Indeed, although
Plaintiffs disagree with this court’s construction of the term
“barrier” as used by Mr. Kimura, Plaintiffs concede that
Defendants’ Taurus SC label instructs users to apply the product
in a manner that falls within that construction of Mr. Kimura’a
disclaimer is construed by this court.
(E.g., Pls.’ Br. Opp’n
Defs.’ Modified Mot. Summ. J. (Doc. 195) at 10-11 (“While
Plaintiffs respectfully disagree with this [court’s] definition
that a prior art ‘barrier’ exists on one side of the boundary,
Defendants’ use of that prior art on the outside as part of their
application does not avoid the Kimura claims . . . .” (emphasis
added)); Prelim. Inj. Hr’g Tr. (Doc. 149) at 90 (admission by
Plaintiffs’ expert, Dr. Michael F. Potter, that “the Taurus label
. . . provide[s] instructions for providing a continuous barrier
around the exterior of the building”).)
8
Because Defendants’
Taurus SC label instructs users to apply the product without
loopholes around a building and thus requires a treatment method
that Mr. Kimura specifically disclaimed, this court concludes as
a matter of law that the label does not infringe, or induce
infringement of, the Kimura patents.
See Free Motion Fitness,
Inc., 423 F.3d at 1353; N. Telecom Ltd., 215 F.3d at 1296-97;
RFID Tracker, Ltd., 342 F. App’x at 630-32.
Plaintiffs contend that “[t]he law is settled that the
addition of elements or steps to an open-ended comprising claim
is still an infringement.”
Summ. J. (Doc. 195) at 11.)
(Pls.’ Br. Opp’n Defs.’ Modified Mot.
This position does not give due
consideration to the crucial distinction between elements that a
patentee merely fails to claim and elements that the patentee
specifically disclaims.
Plaintiffs rely heavily on Gillette Co.
v. Energizer Holdings, Inc.
In that case, the objective of the
patented invention at issue was “to reduce drag forces in safety
razors with more than two blades.”
405 F.3d at 1371.
The
accused infringing device was a safety razor with four blades.
Id. at 1369.
Primarily because the patent at issue made
reference only to “a group of first, second, and third blades,”
the district court concluded that the patent covered only a
three-bladed razor.
omitted).
Id. at 1369-70 (internal quotation marks
The Federal Circuit vacated the district court’s
decision, id. at 1368, in large part because the patent claim at
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issue was an open-ended “comprising” claim.
Id. at 1371 (“The
word ‘comprising’ transitioning from the preamble to the body
signals that the entire claim is presumptively open-ended.”).
However, the Federal Circuit also acknowledged that a
patentee can disavow claim scope through “words or expressions of
manifest exclusion.”
omitted).
Id. at 1374 (internal quotation marks
The court considered the possibility of a disclaimer
and found that, “[d]espite the numerous cites to three-bladed
razors plucked from the written description, no statement in the
patent surrenders or excludes a four-bladed razor.”
Id.
In
other words, the Federal Circuit found nothing to rebut the
presumption that “[t]he addition of elements not recited in [an
open-ended] claim cannot defeat infringement.”
See id. at 1372.
Unlike the patentee in Gillette Co., Mr. Kimura used words
of manifest exclusion when he stated that an object of his
invention “is to provide a termite treatment without barrier.”
(Compl. Ex. B (Doc. 1-3) at 3, col. 1, ll. 43-44 (emphasis
added).)
In so doing, Mr. Kimura rebutted the presumption that
the claims of his patents do not exclude, inter alia, applying
insecticide without loopholes around a building.
See Free Motion
Fitness, Inc., 423 F.3d at 1353; N. Telecom Ltd., 215 F.3d at
1296-97; RFID Tracker, Ltd., 342 F. App’x at 630-32.
Markman Order (Doc. 183) at 19-20.)
10
(See also
The differences between Gillette Co. and the instant case do
not end there.
The Federal Circuit stated in Gillette Co. that
“[t]he inventive contributions of the [patent at issue] are
varying progressively the exposure and spacing parameters of the
blades to overcome the undesired drag forces produced by razors
with multiple blades, not simply limiting the number of blades to
three.”
405 F.3d at 1369.
The court stated further that
“[t]hese principles of progressive blade exposure and progressive
blade span could apply equally to four or five blades.”
1371.
Id. at
Meanwhile, among the stated objectives of the Kimura
patents are the following: “to provide an improved process of
protection of houses,” “to protect the building with the minimum
amount of insecticidally active ingredient,” and “to have a good
level of protection of buildings against termites while reducing
the amount of applied insecticide.”
3, col. 1, ll. 18-19, 23-28.)
(Compl. Ex. B (Doc. 1-3) at
Part of the inventive contribution
of Mr. Kimura’s patented loophole method is to improve on the
prior art by limiting the amount of applied insecticide.
This
principle cannot apply equally to an insecticide application that
fully incorporates what Mr. Kimura understood to be the prior art
and then adds a loophole application on the other side of the
outer walls of the building to be protected.
Simply put, it is
not possible to, in Mr. Kimura’s words, “provide a termite
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treatment without barrier,” (id. at 3, col. 1, ll. 43-44), if the
treatment utilizes what Mr. Kimura defined as a barrier.
Other Federal Circuit precedents likewise bear out the
importance of the distinction between unclaimed elements and
disclaimed elements.
In Free Motion Fitness, Inc. v. Cybex
International, Inc., the Federal Circuit began its analysis by
stating that “[t]he addition of unclaimed elements does not
typically defeat infringement when a patent uses an open
transitional phrase such as ‘comprising.’”
(emphasis added).
423 F.3d at 1347
During prosecution of the patent at issue in
that case, the patentee was required to distinguish its invention
from a prior art patent that “discloses an exercise device
wherein the axes of rotation of the adjustable arms are
transverse to the axes of rotation of the pulleys.”
Id. at 1352.
The patentee “overcame the rejection to the prior art . . .
patent by amending the claims to include a ‘rotating about an
axis substantially parallel to the second axis’ limitation” and
by arguing that the transverse orientation of the pulley
disclosed in the prior art was “undesirable.”
Id.
The Federal Circuit concluded that the plaintiff patentee
was not “estopped to assert infringement by a device
that—although including extension arms with axes of rotation
substantially parallel to the pulleys—also has the undesirable
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[transverse pulley orientation].”
Id. at 1353.
The court
reasoned:
The presence of an undesirable prior art feature in
addition to the elements recited in the claim, even
when the undesirability of that feature formed the
basis of an amendment and argument overcoming a
rejection during prosecution, does not limit the claim
unless there is a clear and unmistakable disclaimer of
claim scope.
Id. (emphasis added).
Unlike the patentee in Free Motion Fitness, Inc., Mr. Kimura
did not merely distinguish his invention from the prior art
barrier method or describe that method as undesirable.
Rather,
Mr. Kimura disavowed the barrier treatment method by describing
his invention as “a termite treatment without barrier.”
Ex. B (Doc. 1-3) at 3, col. 1, ll. 43-44.)
(Compl.
Mr. Kimura’s “clear
and unmistakable disclaimer of claim scope” limits his claims
such that a treatment method that incorporates a barrier, as
defined by Mr. Kimura, must be found not to infringe the Kimura
patents.
See Free Motion Fitness, Inc., 423 F.3d at 1353.
Another noteworthy Federal Circuit case is Northern Telecom
Ltd. v. Samsung Electronics Co., in which the defendants argued
that the accused process was noninfringing because it included an
element that was not claimed in the patent at issue.
1292.
215 F.3d at
However, both the defendants and the Federal Circuit
recognized that an accused infringer’s addition of unclaimed
elements to a claimed process “will not ordinarily prevent a
13
finding of infringement.”
Id.
Thus, the issue before the court
was not whether the asserted patent contemplated the presence of
the unclaimed element, but whether the patent contemplated that
element and specifically excluded it.
Id. at 1292-93.
The Federal Circuit considered the patent’s specification
and prosecution history, as well as extrinsic evidence, and found
that although the patent described the element in question as
undesirable and did not explicitly claim that element, neither
did the patent specifically state the exclusion of that element
as a necessary part of the invention.
Id. at 1293-96.
The court
thus concluded that the defendants’ addition of the undesirable
element to the plaintiff’s patented process did not render the
defendants’ process noninfringing.
Id. at 1296.
In closing, the
Federal Circuit stated:
[I]f a patent requires A, and the accused device or
process uses A and B, infringement will be avoided only
if the patent’s definition of A excludes the
possibility of B. Statements simply noting a
distinction between A and B are thus unhelpful: what
matters is not that the patent describes A and B as
different, but whether, according to the patent, A and
B must be mutually exclusive.
Id. at 1296-97 (citations omitted).
Unlike the patentee in Northern Telecom Ltd., Mr. Kimura did
not simply distinguish his patented method from the prior art
barrier method and then fail to claim a barrier as an additional
element of his invention.
Rather, in describing his invention as
“a termite treatment without barrier,” (Compl. Ex. B (Doc. 1-3)
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at 3, col. 1, ll. 43-44), Mr. Kimura declared that his method and
the barrier method “must be mutually exclusive.”
Ltd., 215 F.3d at 1297.
See N. Telecom
Thus, a treatment method that
incorporates a barrier, as defined by Mr. Kimura, must be found
not to infringe the Kimura patents.
See id. at 1296-97.
This court notes Plaintiffs’ contention that summary
judgment is unwarranted because “[t]he Court did not rule that
Kimura disclaimed the combination of using (1) a prior art
‘barrier’ (as the Court construed ‘barrier’ . . . ) on one side
of a building’s boundary and (2) Kimura’s inventive ‘loopholes’ .
. . on the other side.”
(Pls.’ Br. Opp’n Defs.’ Modified Mot.
Summ. J. (Doc. 195) at 9-10.)
Plaintiffs cite no authority in
support of the proposition that Mr. Kimura’s disclaimer of
barrier treatments does not also serve to disclaim the
combination of a barrier treatment on one side of a building’s
boundary and Mr. Kimura’s loopholes on the other side.
Indeed,
this court finds that the relevant case law is contrary to
Plaintiffs’ position.
In Northern Telecom Ltd., the Federal
Circuit indicated that a patentee’s exclusion of a particular
element from the invention is sufficient to disclaim not only the
disavowed element, but also the combination of that element and
the claimed invention.
The court stated: “[I]f a patent requires
A, and the accused device or process uses A and B, infringement
will be avoided only if the patent’s definition of A excludes the
15
possibility of B.”
215 F.3d at 1296-97.
See also, e.g., id. at
1294 (implying that intrinsic evidence “specifically stat[ing an
element’s] exclusion as part of the invention” is sufficient to
disclaim the combination of that element and the claimed
invention); id. at 1296 (implying that an inventor’s statement
that a claimed process “must exclude” an element is sufficient to
disclaim the combination of that element and the claimed
invention).
This court finds that Mr. Kimura’s description of
his invention as “a termite treatment without barrier,” (Compl.
Ex. B (Doc. 1-3) at 3, col. 1, ll. 43-44), excludes barrier
treatments from the invention and therefore disclaims not only
barrier treatments, but also the combination of a barrier
treatment and Mr. Kimura’s loopholes.
The Kimura patents’ use of the word “comprising” as a
transitional phrase creates a presumption that the patents’
claims are open-ended.
However, Mr. Kimura specifically
disclaimed the barrier method of insecticide application.
This
court therefore finds that Mr. Kimura rebutted the presumption
that the claims of his patents do not exclude the prior art
barrier method.
It is undisputed that Defendants’ accused Taurus
SC label consistently requires users to apply Defendants’ product
in a manner that falls within Mr. Kimura’s definition of
“barrier.”
Thus, even assuming arguendo that Defendants’ label
also instructs users to practice the invention that is claimed in
16
the Kimura patents, this court concludes as a matter of law that
Defendants’ label does not infringe, or induce infringement of,
the Kimura patents.
IV.
CONCLUSION
For the reasons stated herein, IT IS ORDERED that
Defendants’ Modified Motion for Summary Judgment Based on NonInfringement (Doc. 188) is GRANTED and Counts II and III of
Plaintiffs’ Complaint (Doc. 1) are DISMISSED WITH PREJUDICE.
A
judgment dismissing Counts II and III of Plaintiffs’ Complaint
with prejudice will be forthcoming.
This the 9th day of January 2012.
United States District Judge
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