Ball Metal Beverage Container Corporation v. Crown Packaging Technology, Inc. et al

Filing 224

DECISION AND ENTRY (1) OVERRULING DEFENDANTS/ COUNTERCLAIM PLAINTIFFS CROWN PACKAGING TECHNOLOGY, INC., AND CROWN CORK & SEAL, USA., INC.'S MOTION FOR LEAVE TO FILE A MOTION FOR PARTIAL SUMMARY JUDGMENT ON PLAINTIFF/COUNTERCLAIM DEFENDANT BALL METAL BEVERAGE CONTAINER CORPORATION AND COUNTERCLAIM DEFENDANT REXAM BEVERAGE CAN COMPANY'S INDEFINITENESS DEFENSE REGARDING THE "SECOND POINT" OR "TRANSITION" (DOC. # 195 ); (2) SUSTAINING PLAINTIFF/COUNTERCLAIM DEFENDANT BALL METAL BEVERAGE CONTAINER CORPORATION AND COUNTERCLAIM DEFENDANT REXAM BEVERAGE CAN COMPANY'S RENEWED MOTION FOR SUMMARY JUDGMENT ON INDEFINITENESS (DOC. # 196 ); AND (3) OVERRULING AS MOOT PLAINTIFF/COUNTERCLAIM DEFENDANT BALL METAL BEVERA GECONTAINER CORPORATION'S AND COUNTERCLAIM DEFENDANT REXAM BEVERAGE CAN COMPANY'S MOTION FOR LEAVE TO SUBSTITUTE FOR EXPERT WITNESS ANDREW CARTER (DOC. # 210 ) AND MOTION FOR LEAVE TO SUBSTITUTE FOR EXPERT WITNESS EDMUND GILLEST (DOC. # 209 ); JUDGEMENT TO BE ENTERED ACCORDINGLY; TERMINATION ENTRY. Signed by Judge Walter H. Rice on 8/2/2023. (srb)

Case: 3:12-cv-00033-WHR Doc #: 224 Filed: 08/03/23 Page: 1 of 16 PAGEID #: 11513

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION
BALL METAL BEVERAGE
CONTAINER CORP.,

Plaintiff/Counterclaim Defendant,
vs.
CROWN PACKAGING TECHNOLOGY,
INC. AND CROWN CORK & SEAL USA, INC., :

Case No. 3:12-cv-033
JUDGE WALTER H. RICE

Defendant/Counterclaim Plaintiffs,
vs.
REXAM BEVERAGE CAN COMPANY,

Counterclaim Defendant.

DECISION AND ENTRY (1) OVERRULING DEFENDANTS/ COUNTERCLAIM
PLAINTIFFS CROWN PACKAGING TECHNOLOGY, INC., AND CROWN CORK &
SEAL, USA., INC.'S MOTION FOR LEAVE TO FILE A MOTION FOR PARTIAL
SUMMARY JUDGMENT ON PLAINTIFF/COUNTERCLAIM DEFENDANT BALL
METAL BEVERAGE CONTAINER CORPORATION AND COUNTERCLAIM
DEFENDANT REXAM BEVERAGE CAN COMPANY'S INDEFINITENESS DEFENSE
REGARDING THE "SECOND POINT" OR "TRANSITION" (DOC. #195); (2)
SUSTAINING PLAINTIFF/COUNTERCLAIM DEFENDANT BALL METAL
BEVERAGE CONTAINER CORPORATION AND COUNTERCLAIM DEFENDANT
REXAM BEVERAGE CAN COMPANY'S RENEWED MOTION FOR SUMMARY
JUDGMENT ON INDEFINITENESS (DOC. #196); AND (3) OVERRULING AS
MOOT PLAINTIFF/COUNTERCLAIM DEFENDANT BALL METAL BEVERAGE
CONTAINER CORPORATION'S AND COUNTERCLAIM DEFENDANT REXAM
BEVERAGE CAN COMPANY'S MOTION FOR LEAVE TO SUBSTITUTE FOR
EXPERT WITNESS ANDREW CARTER (DOC. #210) AND MOTION FOR LEAVE TO
SUBSTITUTE FOR EXPERT WITNESS EDMUND GILLEST (DOC. #209);
JUDGEMENT TO BE ENTERED ACCORDINGLY; TERMINATION ENTRY

Case: 3:12-cv-00033-WHR Doc #: 224 Filed: 08/03/23 Page: 2 of 16 PAGEID #: 11514

This matter is before the Court pursuant to the following motions: (1)
Motion for Leave to File a Motion for Partial Summary Judgment filed by Crown
Packaging Technology, Inc. ("Crown Technology"), and Crown Cork & Seal USA,
Inc. ("Crown USA") (collectively "Crown"), on the Indefiniteness Defense
Regarding the "Second Point" or "Transition" asserted by Plaintiff/ Counterclaim
Defendant Ball Metal Beverage Container Corp. ("Ball") and Counterclaim
Defendant Rexam Beverage Can Company ("Rexam"), Doc. #195; (2) Ball and
Rexam's Renewed Motion for Summary Judgment on Indefiniteness, Doc. #196;
and (3) Ball and Rexam's Motion for Leave to Substitute for Expert Witness
Andrew Carter, Doc. #210, and Motion for Leave to Substitute Expert Witness
Edmund Gillest. Doc. #209. The parties have filed responses opposing the
motions, Doc. ##198, 199,211 and 212, replies, Doc. ##200, 201,213 and 214 and,
concerning the Renewed Motion, a sur-reply, Doc. #203, and a response. Doc.
#206.
For the reasons set forth below, Crown's Motion for Leave to File a Motion
for Partial Summary Judgment on the Indefiniteness Defense Regarding the
"Second Point" or "Transition" asserted by Ball and Rexam, Doc. #195, is
overruled, Ball and Rexam's Renewed Motion for Summary Judgment on
Indefiniteness, Doc. #196, is sustained and their Motions for Leave to Substitute
for Expert Witness Andrew Carter, Doc. #210, and Edmund Gillest, Doc. #209, are
overruled as moot.

2

Case: 3:12-cv-00033-WHR Doc #: 224 Filed: 08/03/23 Page: 3 of 16 PAGEID #: 11515

I.

Procedural Background

On September 25, 2019, the Court issued a Decision and Entry, entering
judgment in favor of Ball Metal, a manufacturer and seller of metal beverage can
components, including can ends and can bodies, and Rexam, Ball's wholly owned
subsidiary, and against Defendants Crown Technology and Crown USA, the
assignee and exclusive licensee, respectively, of two patents, to wit: U.S. Patent
No. 6,848,875 (the "'875 Patent") and U.S. Patent No. 6,935,826 (the "'826 Patent")
(collectively, "asserted patents."). 1 Ball and Crown are competitors in the
business of manufacturing and selling the metal can ends and the can body to
"fillers," companies that would then fill the cans. Ball's Complaint sought a
declaratory judgment on the validity of the '875 Patent and the '826 Patent. Doc.
#1. The Court found that the "second point" in the '826 Patent and the "transition"
in the '875 Patent were invalid for indefiniteness pursuant to 35 U.S.C.

§

112 and,

therefore, the manufacture, sale, seaming and related activity of CDL-W and New
COL+ Can Ends did not infringe the said patents. Judgment was entered in favor
of Ball Metal and Rexam on Crown's infringement counterclaims, "given that one

1

The asserted patents " ... relate to the ends of metal beverage cans [the '826 Patent] used
for beer and soft drinks and the method of securing the ends of the cans onto the bodies
of the cans [the '875 Patent], [a process] which the parties and the patents refer to as
seaming." Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corporation, 662
F. Supp. 2d at 941-942 rev'd, 635 F.3d 1373 (Fed. Cir. 2011). The metal can ends and the
can body are manufactured separately and sold to fillers who fill and seal the beverage
cans and can ends.

3

Case: 3:12-cv-00033-WHR Doc #: 224 Filed: 08/03/23 Page: 4 of 16 PAGEID #: 11516

cannot infringe upon patents that are invalid for indefiniteness." Doc. #166. 2 Ball
and Rexam's Motion for Summary Judgment that the asserted claims 3 of the '875
and '826 Patents were invalid for obviousness pursuant 35 U.S.C. § 103 were
rendered moot. 4
Crown appealed the Court's Decision and on December 31, 2020, the
Federal Circuit vacated this Court's "grant of summary judgment "and remanded
"for further proceedings consistent with this opinion." Ball Metal Beverage
Container Corporation v. Crown Packaging Tech. Inc., 838 Fed. Appx. 538, 544
(Fed. Cir. 2020). It stated the following as the test for determining when a claim is
invalid for being indefinite:
Under our case law, then, a claim may be invalid as indefinite when
(1) different known methods exist for calculating a claimed
parameter, (2) nothing in the record suggests using one method in
particular, and (3) application of the different methods result in
materially different outcomes for the claim's scope such that a
product or method may infringe the claim under one method but not
infringe when employing another method. Such a claim lacks the

2

Crown filed a Second Amended Answer and Counterclaims alleging infringement
against Ball and Rexam. It sought a judgment holding that Ball and Rexam infringed the
asserted patents pursuant to 35 U.S.C. § 271, damages for the infringement, including
willfulness and treble damages, and attorney fees as provided by 35 U.S.C. §§ 284 and
285. Doc. #56. Crown's Counterclaims alleged that Ball's New CDL+ and the Rexam CDL
can ends infringe claims 16, 18, 20, 24, 28, 29, 50, 52, 54, 56, 58 and 59 of the '875 Patent
and claim 14 of the '826 Patent. Doc. #56, PagelD##5834-5839.
3

Ball and Rexam have defined "asserted claims" in their Reply to the Motion for
Summary Judgment on Validity, Doc. #104, PagelD#8162, as consisting of claims 50, 52,
54, 56, 58 and 59 of the '875 Patent and claim 14 of the '826 Patent.
4

Crown's Counterclaims, Doc. #56, PAGEID# 5831, do not allege infringement as to Ball's
CDL-W can end referenced in Ball's declaratory judgment complaint. Doc. #56.

4

Case: 3:12-cv-00033-WHR Doc #: 224 Filed: 08/03/23 Page: 5 of 16 PAGEID #: 11517

required degree of precision 'to afford clear notice of what is claimed,
thereby apprising the public of what is still open to them.'"
Id at p. 542-543 {quoting Nautilus Inc. v. Biosig Instruments, Inc., 572 U.S. 898,
909, 134 S.Ct. 2120, 189 L.Ed.2d 37 (2014).
As stated in the opinion by the Federal Circuit, this Court's analysis was
"incomplete" since it did not address the third element of the test.
The district court's opinion states '[b]ecause all asserted claims
require measuring the angle, from vertical, of a hypothetical line that
connects two points, one of which is a second point/transition, and
because the methods do not always produce the same results, the
method chosen for locating the second point/transition could affect
whether or not a given product infringes the claims.' ... This analysis
is incom plete, however, because it does not establish in any
meanin gful wa y what material difference in angle ran ge outcome. if
any. exists among Mr. Hi gham's different methodologies.
Ball Metal, 838 Fed. Appx at 543-544 {emphasis added).
Importantly, the Federal Circuit agreed with this Court on the first point, that
Crown's expert, Martin J. Higham, used different methodologies to determine the
location of the second point in various cases. It specifically rejected Crown's
argument to the contrary and cited three examples from the record of Crown's
expert using different methodologies to determine the location of the second
point. It further noted that "contrary to Crown's argument" these different
methodologies of Crown's expert "do not necessarily result in selection of the
same location for the second point." Id at 542.
The Federal Circuit stated it was vacating the Court's decision because it did
not "establish in any meaningful way what material difference in angle range
outcome, if any, exists among Mr. Higham's different methodologies." Id at 544.

5

Case: 3:12-cv-00033-WHR Doc #: 224 Filed: 08/03/23 Page: 6 of 16 PAGEID #: 11518

The decision concluded with the following statement: "[W]e emphasize that on
remand the [D]istrict [C]ourt should review Mr. Higham's methodologies and
analyze whether the methods lead to materially different results for the angle."
Based on the limited remand issued by the Federal Circuit to which this
Court is bound, United States v. Campbell, 168 F.3d 263,265,269 (6th Cir. 1999)
("The court cannot go beyond the scope of the remand and reexamine previously
decided issues unless one of the narrow exceptions to the mandate rule applies),
on August 25, 2021, the Court filed an "Entry and Order Reopening the Record for
Limited Discovery on Issue of What, if any, Material Difference in Angle Range
Outcome Exists among Different Methodologies." Doc.#181. Following further
briefing by the parties, on August 30, 2022, a Scheduling Order was filed. Doc.
#188. The Order stated, inter alia, "Ball shall file its renewed motion for summary
judgment on indefiniteness within 21 days following the close of the expert
deposition period" and that the Court will issue its decision on Ball's renewed
motion for summary judgment on indefiniteness by June 13, 2023. Id
Unfortunately, that date has passed and no decision has yet to be rendered. Trial
is scheduled for September 11, 2023. Id

6

Case: 3:12-cv-00033-WHR Doc #: 224 Filed: 08/03/23 Page: 7 of 16 PAGEID #: 11519

II.

Legal Analysis
A. Crown's Motion for Leave to File a Motion for Partial Summary
Judgment, Doc. #195

On March 1, 2023, Crown filed a Motion for Leave to File a Motion Partial
Summary Judgment pursuant to F. R. Civ. P. 16(b)(4), on Ball and Rexam's
indefiniteness defense "regarding the "second point" or "transition" limitations
recited in asserted claims." Doc. #195. Such motion, if granted, would, of
necessity, impact the presently operative scheduling order.
A motion to modify the scheduling order is granted if "good cause" is
shown, the Court consents and consideration is given as to whether the other
party will be prejudiced. Good cause is established if there is diligence in
attempting to meet the case management order's requirements. Inge v. Rock Fin,
Corp., 281 F3d 613, 625 (6th Cir 2002). Crown argues that discovery was reopened

on "what, if any, material difference in angle range outcome exists among the
different methodologies" for locating the second point, Doc. No. 181,
PagelD#10467-68, and was concluded on February 20, 2023. It asserts that
following discovery it realized "Ball cannot show, by clear-and-convincing
evidence, that the different supposed methodologies for determining the second
point lead to any material difference." Crown further contends that it could not
have foreseen this lack of evidence when the parties previously filed dispositive
motions or submitted briefing concerning the remand schedule, and, further, has
only recently discovered that "Ball has no evidence that any of the ten drawings
supposedly depicting can ends was drawn to scale" which it alleges is "a

7

Case: 3:12-cv-00033-WHR Doc #: 224 Filed: 08/03/23 Page: 8 of 16 PAGEID #: 11520

requirement of black-letter Federal Circuit jurisprudence in situations like this."
Doc. #195, PageID#10513. It has attached its proposed Motion for Partial
Summary Judgment, which, itself, has been fully briefed.
Ball and Rexam oppose Crown's motion and argue primarily that Crown
waited too long to file this motion, stating it had "plenty of occasions to make that
desire known" and therefore cannot establish "good cause." Doc. #198,
PagelD#10992. It argues Crown could have filed a motion before the case went
up on appeal or after the case was remanded and that "nothing in the Federal
Circuit's decision suggested that, on remand, this Court should reopen the
summary judgment deadline to give Crown another chance to file its own motion
on indefiniteness." Id Ball and Rexam also argue that Crown's reason that it
could not have foreseen that "any of the can end drawings [Ball and Rexam] are
relying on to show materiality are 'drawn to scale"' is not well-taken, since "Ball
and Rexam advised the Court and Crown that they were going to be relying, in
part, on patent drawings as early as April 2021, when they filed their reply
statement on how the case should proceed on remand. Id, PageID#10993. Doc.
179, Ball/Rexam Remand Reply Br., PagelD 10400-01. Thus, Crown has been on
notice for at least two years of this allegedly "new" issue. Crown's response to
this particular issue is somewhat confusing:
But even if Crown had given Ball's earlier submissions any thought in
this regard, Crown was not on notice that Ball's reliance on patent
drawings would run afoul of binding law. When performing the types
of angle measurements that Ball's expert performed on patent
drawings, the law requires confirmation from within the patents
8

Case: 3:12-cv-00033-WHR Doc #: 224 Filed: 08/03/23 Page: 9 of 16 PAGEID #: 11521

themselves that such drawings are dimensionally accurate. Krippelz
v. Ford Motor Co., 667 F.3d 1261, 1268 (Fed. Cir. 2012) (noting the
Federal Circuit's repeated caution "against overreliance on drawings
that are neither expressly to scale nor linked to quantitative values in
the specification."); see also Doc. No. 195-2, Gillest Tr., PagelD 1057475 (42:7-43:19) ... Crown does not have a crystal ball and had
perceived no intent on Ball's part to flout this clear and binding law.
(emphasis in original).
Doc. #200, PagelD#11223.
Ball and Rexam filed their Renewed Motion for Summary Judgment on
Indefiniteness ("Ball's Renewed Motion"), Doc. #196, nine days after Crown's
Motion for Leave to File Motion for Partial Summary Judgment and addressed
Crown's argument that the patent drawings relied on by them are not to scale and
cannot be relied by them in their invalidity argument. Crown also addresses this
issue in its Response to Ball and Rexam's Renewed Motion. Doc. #199.
The standard of review for denial of Crown's motion is abuse of discretion.
Here, Crown could have requested leave to file a motion for partial summary
judgment in the scheduling order, since Ball and Rexam did disclose in their Reply
Brief Regarding Remand Procedures, Doc. #179, filed April 21, 2021, that they
would be using patent drawings and devoted several pages to not only explaining
the tests that would be used to show materially different angle measurements, 5
but also identified two of the examples, LOF+, the "Kraska" patent, including the

5

"In fact, while this Court found three different tests for locating the second point, Doc.
No. 162, PAGEID 10301, Ball and Rexam's supplemental submission would focus only on
two: the "across-from-the-center-panel" test and the "change-in-geometry" test. Doc.
#179, PagelD#10438.

9

Case: 3:12-cv-00033-WHR Doc #: 224 Filed: 08/03/23 Page: 10 of 16 PAGEID #: 11522

measurements and diagrams. Doc. #179, PagelD##10438-10441. Additionally, the
remand order of the Federal Circuit only directed this court to consider one issue,
i.e., whether a "material difference in angle range outcome ... exists among Mr.
Highman's different methodologies." Ball Metal, 838 fed. Appx at 543-544
(emphasis added). Accordingly, Crown has failed to demonstrate that, with due
diligence, it could not have reasonably met the dates set from the Scheduling
Order. Ross v. Am. Red Cross, 567 F. App'x 296 (6th Cir. 2014). Finally, as noted
above, Crown has briefed this issue in their Response, Doc. #199, and Sur-Reply,
Doc. #203, to Ball and Rexam's Renewed Motion. 6
Accordingly, Crown's Motion for Leave to File a Motion for Partial Summary
Judgment, Doc. #195, is overruled.

B. Ball and Rexam's Renewed Motion for Summary Judgment on
Indefiniteness, Doc. #196

1. Standard of Review

Summary judgment must be entered "against a party who fails to make a
showing sufficient to establish the existence of an element essential to that party's
case, and on which that party will bear the burden of proof at trial." Celotex
Corp.v. Catrett, 477 U.S. 317,322 (1986). The moving party always bears the

6

Additionally, by permitting Crown to file its Motion for Partial Summary Judgment, both
parties would be prejudiced since the trial date scheduled for September 11, 2023, would
need to be continued.

Case: 3:12-cv-00033-WHR Doc #: 224 Filed: 08/03/23 Page: 11 of 16 PAGEID #: 11523

initial responsibility of informing the court of the basis for its motion and
identifying those portions of the record which it believes demonstrate the absence
of a genuine issue of material fact. Id at 323; see also Boretti v. Wiscomb, 930
F.2d 1150, 1156 (6th Cir. 1991).
"Once the moving party has met its initial burden, the nonmoving party
must present evidence that creates a genuine issue of material fact making it
necessary to resolve the difference at trial." Talley v. Bravo Pitino Rest., Ltd., 61
F.3d 1241, 1245 (6th Cir. 1995); see also Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 250 (1986). Once the burden of production has so shifted, the party opposing
summary judgment cannot rest on its pleadings or merely reassert its previous
allegations. It is not sufficient to "simply show that there is some metaphysical
doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
475 U.S. 574, 586 (1986). Rule 56 "requires the nonmoving party to go beyond the
[unverified] pleadings" and present some type of evidentiary material in support
of its position. Celotex, 477 U.S. at 324. "The plaintiff must present more than a
scintilla of evidence in support of his position; the evidence must be such that a
jury could reasonably find for the plaintiff." Michigan Prot. & Advocacy Serv., Inc.
v. Babin, 18 F.3d 337,341 (6th Cir. 1994).
Summary judgment shall be granted "if the movant shows that there is no
genuine dispute as to any material fact and the movant is entitled to judgment as
a matter of law." Fed. R. Civ. P. 56(a). "Summary judgment will not lie if the
dispute about a material fact is 'genuine,' that is, if the evidence is such that a
11

Case: 3:12-cv-00033-WHR Doc #: 224 Filed: 08/03/23 Page: 12 of 16 PAGEID #: 11524

reasonable jury could return a verdict for the nonmoving party." Anderson, 477
U.S. at 248. In determining whether a genuine dispute of material fact exists, a
court must assume as true the evidence of the nonmoving party and draw all
reasonable inferences in favor of that party. Id. at 255. If the parties present
conflicting evidence, a court may not decide which evidence to believe.
Credibility determinations must be left to the fact-finder. 10A Wright, Miller &
Kane, Federal Practice and Procedure Civil 3d

§

2726 (1998).

In determining whether a genuine dispute of material fact exists, a court
need only consider the materials cited by the parties. Fed. R. Civ. P. 56(c)(3). "A
district court is not ... obligated to wade through and search the entire record for
some specific facts that might support the non moving party's claim." lnterRoyal
Corp. v. Sponseller, 889 F.2d 108, 111 (6th Cir. 1989), cert. denied, 494 U.S. 1091
(1990). If it so chooses, however, the Court may also consider other materials in
the record. Fed. R. Civ. P. 56(c)(3).
2. Ball Has Established Material Differences in Angle Range Outcome
Through Two of Mr. Higham's Different Methodologies

Ball and Rexam's Renewed Motion, Doc. #196, argues that the '826 Patent
and the '875 Patent are invalid for indefiniteness pursuant to 35 U.S.C.

§

112.

Consistent with the scope of the remand from the Federal Circuit and through
their expert Mr. Gillest, they have applied two of Mr. Higham's methods, the
change-in-geometry and across the center point(" ACP") methods, to the
following asserted claims: (1) claim 54 of the '875 Patent requiring a 40°-45° range;

12

Case: 3:12-cv-00033-WHR Doc #: 224 Filed: 08/03/23 Page: 13 of 16 PAGEID #: 11525

(2) claim 52 of the '875 Patent requiring a 30°-50° range; (3) claims 50, 56, 58, and
59 of the '875 Patent requiring a 20°-60° range; and (4) claim 14 of the '826 Patent
requiring a 30°-60° range. Doc. #196-3, PagelD##10709-10729. Ball and Rexam's
Renewed Motion identifies each claim and indicates the measurements for each
using the two methods of Mr. Higham. As asserted by Ball and Rexam in the
Renewed Motion, "materially different" results exist for the angle of the
hypothetical depending on which of Mr. Higham's methods is used. Doc. #193,
PagelD##10662-10671. Mr. Gill est opined in his Supplemental Report as follows:
The angle measurements clearly show the dependence of the
infringement outcome upon the location of the second
point/transition and upon which method is used to locate it. When
the second point/transition is located using one of methods, the angle
is within the claims. When it is located using another one of Mr.
Highams's methods, the angle is outside the claims. Thus, using one
method versus the other leads to materially different measurement
results for the angle. Therefore, in my opinion, after applying the
instructions from the Court of Appeals, the asserted claims of the
'826 and '875 Patents are indefinite.
Doc. #196-3, PagelD#10708.
In response, Crown argues that there is no clear and convincing evidence of
indefiniteness. Specifically, they assert that none of the can-end drawings are
operational, the drawings used by Ball and Rexam are not "dimensionallyaccurate renderings of a can end," and that material factual issues exist because
Crown's new expert, Scott Biondich ("Mr. Biondich"), disputes the measurements
of Mr. Gillest.

13

Case: 3:12-cv-00033-WHR Doc #: 224 Filed: 08/03/23 Page: 14 of 16 PAGEID #: 11526

As stated by the Federal Circuit in its decision, "[T]he ultimate conclusion
that a claim is indefinite under 35 U.S.C.

§

1121f 2 is a legal conclusion" reviewed

de novo. Eidos Display, LLC v. AU Optronics Corp., 779 F.3d 1360, 1364 (Fed. Cir.
2015) (emphasis added). '[A] patent is invalid for indefiniteness if its claims, read
in light of the specification delineating the patent, and the prosecution history, fail
to inform, with reasonable certainty, those skilled in the art about the scope of the
invention."' Nautilus Inc. v. Biosig Instruments, Inc., 572 U.S. 898,901, 134 S.Ct.
2120, 189 L.Ed.2d 37 (2014). Because "general principles of claim construction
apply to the question of indefiniteness," Biosig Instruments, Inc. v. Nautilus, Inc.,
783 F.3d 1374, 1377 {Fed. Cir. 2015) (internal quotation marks omitted), any
"subsidiary factual determinations made by the district court based on extrinsic
evidence" such as expert testimony are reviewed for clear error. Id; see also Teva
Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1341-42 (Fed. Cir. 2015).
Here, the Court finds that Ball and Rexam have sufficiently addressed and
satisfied the remand order of the Federal Circuit by showing through Mr. Gill est
that "application of the different methods" of Mr. Higham "result in materially
different outcomes for the claim's scope such that a product or method may
infringe the claim under one method but not infringe when employing another
method." Ball Metal, 838 Fed. Appx. at 542-543. Crown, through its new expert,
Mr. Biondich, disputed these "materially different outcomes" by using
measurements that were different from those originally made by Mr. Higham. In
doing so, however, Crown's expert did not create a genuine issue of material fact
14

Case: 3:12-cv-00033-WHR Doc #: 224 Filed: 08/03/23 Page: 15 of 16 PAGEID #: 11527

but, instead, effectively disregarded the earlier finding by the Federal Circuit that
different methodologies were used to determine the location of the second point
and that the only remaining issue was whether they resulted in materially
different outcomes. Crown's arguments that the can ends are not operational is
also without merit. At a minimum the LOF+ is an "operational" end and, Mr.
Gillest has defined operational as something that is capable of being
manufactured, filled and seamed, a definition not contradicted by Mr. Biondich.
Finally, Crown's argument that Ball and Rexam's use of patent drawings in certain
examples and not others, does not address the issue on remand, i.e., whether the
different methodologies of Mr. Higham result in materially different outcomes.
Following discovery by the parties of their respective experts and further
briefing, the Court finds there is no genuine issue of material fact on the sole issue
presented to the Court on remand. Accordingly, the Renewed Motion of Ball and
Rexam, Doc. #196, is sustained .

C. Ball and Rexam's Motion for Leave to Substitute for Expert Witness
Andrew Carter, Doc. #210, and Motion for Leave to Substitute Expert
Witness Edmund Gillest Doc. #209

Because the Court has sustained the Renewed Motion of Ball and Rexam,
the Motions of Ball and Rexam for Leave to Substitute for Expert Witness Andrew
Carter, Doc. #210, and Motion for Leave to Substitute Expert Witness Edmund
Gillest, Doc. #209, are overruled as moot.

15

Case: 3:12-cv-00033-WHR Doc #: 224 Filed: 08/03/23 Page: 16 of 16 PAGEID #: 11528

Ill.

Conclusion

For the reasons set forth above, the Motion for Leave to File a Motion for
Partial Summary Judgment filed by Crown on the Indefiniteness Defense
Regarding the "Second Point" or "Transition" asserted by Plaintiff/ Counterclaim
Defendant Ball and Counterclaim Defendant Rexam, Doc. #195, is OVERRULED;
Ball and Rexam's Renewed Motion for Summary Judgment on Indefiniteness,
Doc. #196, is SUSTAINED; and Ball and Rexam's Motion for Leave to Substitute
for Expert Witness Andrew Carter, Doc. #210, and Motion for Leave to Substitute
Expert Witness Edmund Gillest, Doc. #209, are OVERRULED as moot.

Judgment is entered in favor of Plaintiff/Counterclaim Defendant Ball Metal
Beverage Container Corp., and Counterclaim Defendant Rexam Beverage Can
Company and against Crown Packaging Technology, Inc., and Crown Cork & Seal
USA, Inc.

The captioned cause is hereby ordered terminated upon the docket records
of the United States District Court for the Southern District of Ohio, Western
Division, at Dayton.

AUGUST 2, 2023

WALTER H. RICE
UNITED STATES DISTRICT JUDGE

16