Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corporation

Filing 208

ORDER ON CLAIM CONSTRUCTION FOR WHEREIN EACH OF SAID TWO OUTER LAYERS AND EACH OF SAID FIVE INNER LAYERS HAVE DIFFERENT COMPOSITIONAL PROPERTIES WHEN COMPARED TO A NEIGHBORING LAYER. Signed by Judge Jon Phipps McCalla on 2/9/2017. (McCalla, Jon)

IN THE UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF TENNESSEE
WESTERN DIVISION

MULTILAYER STRETCH CLING FILM
HOLDINGS, INC.,
Plaintiff,
v.
BERRY PLASTICS CORPORATION,
Defendant.

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No. 12-cv-2108-JPM-cgc

ORDER ON CLAIM CONSTRUCTION FOR “WHEREIN EACH OF SAID TWO OUTER
LAYERS AND EACH OF SAID FIVE INNER LAYERS HAVE DIFFERENT
COMPOSITIONAL PROPERTIES WHEN COMPARED TO A NEIGHBORING LAYER”

This action arises from allegations by Plaintiff
Multilayer Stretch Cling Film Holdings, Inc. (“Multilayer”)
against Defendant Berry Plastics Corporation (“Berry”) for
patent infringement of U.S. Patent No. 6,265,055, entitled
Multilayer Stretch Cling Film (“the ‘055 Patent”).

This case

comes before the Court on remand from the United States Federal
Circuit Court of Appeals.

Multilayer Stretch Cling Film

Holdings, Inc. v. Berry Plastics Corp., No. 2015-1420, 2016 WL
4137673 (Fed. Cir. Aug. 4, 2016).
I. BACKGROUND
Before the Court is the parties’ request for claim
construction pursuant to Markman v. Westview Instruments, Inc.,
1

52 F.3d 967 (Fed. Cir. 1995) (en banc).

On October 17, 2012,

the Court consolidated four patent-infringement actions for the
purpose of claim construction and set a consolidated claim
construction schedule. 1

(Multilayer Stretch Cling Film

Holdings, Inc. v. MSC Marketing & Technology, Inc. d/b/a Sigma
Stretch Film, No. 2:12-cv-2112-JPM-tmp, ECF No. 49 at PageID
378; see also id., ECF No. 95 at PageID 3353 n.1.) 2 On November
20, 2013, the Court entered its Order Following Claim
Construction Hearing.

(ECF No. 95 at PageID 3350.)

In that

Order, the Court did not construe the disputed term “wherein
each of said two outer layers and each of said five inner
layers have different compositional properties when compared to
a neighboring layer,” a term found in Claim 1 and Claim 28 of
the ’055 Patent.

(See ’055 Patent, Second Ex Parte

Reexamination Certificate (Apr. 7, 2009), ECF No. 1-4 at PageID
25; Certificate of Correction (Apr. 7, 2009), ECF No. 1-4 at
PageID 22.) In a separate Order filed on November 8, 2013, the
Court entered its Proposed Construction for “wherein each of
1

The consolidated cases are as follows: Multilayer Stretch Cling
Film Holdings, Inc. v. Inteplast Group Ltd., No. 2:12-cv-2107-WGY-dkv;
Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., No.
2:12-cv-2108-WGY-cgc; Multilayer Stretch Cling Film Holdings, Inc. v.
Intertape Polymer Group, Inc., No. 2:12-cv-2109-JPM-cgc; and Multilayer
Stretch Cling Film Holdings, Inc. v. MSC Marketing & Technology, Inc. d/b/a
Sigma Stretch Film, No. 2:12-cv-2112-JPM-tmp.
2
The majority of documentation related to claim construction was
filed in Multilayer Stretch Cling Film Holdings, Inc. v. MSC Marketing &
Technology, Inc. d/b/a Sigma Stretch Film, No. 2:12-cv-2112-JPM-tmp;
therefore, unless otherwise noted, all ECF citations refer to that case.
Any citation specifically related to filings in the instant case,
Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., No.
2:12-cv-2108-JPM-cgc, will be designated as (No. 12-2108, ECF No. __.)

2

said two outer layers and each of said five inner layers have
different compositional properties when compared to a
neighboring layer” and “Compositional Properties.”
96.)

(ECF No.

The parties were required to submit supplemental briefing

on the Court’s proposed construction within fourteen (14) days.
(Id. at PageID 3476.)

The parties did not file such briefs in

this case; rather, they submitted briefs in the parallel action
in response to the same order. (See ECF Nos. 98-99.)
On October 19, 2016, after the Federal Circuit’s remand,
the Court held a telephonic scheduling conference.
2108, ECF No. 176.)

(No. 12-

During the conference, the parties

requested that the Court construe “wherein each of said two
outer layers and each of said five inner layers have different
compositional properties when compared to a neighboring layer”
and “compositional properties”, which the Court did not
finalize prior to the appeal to the Federal Circuit.

On

October 21, 2016, the Court ordered the parties to file
responsive briefs to its November 2013 proposed construction.
(ECF No. 179.)
2016.

The parties filed timely briefs on October 28,

(ECF Nos. 181-82.)

3

For the reasons stated herein, the Court construes the
claim terms as follows: 3
CLAIM TERM

COURT’S CONSTRUCTION

Wherein each of said two
outer layers and each of
said five inner layers
have different
compositional properties
when compared to a
neighboring layer

“wherein each of said two outer
layers and each of said five
inner layers has a different
composition and end-use
properties than each immediately
adjacent layer”

Compositional property

“an end-use property after
processing the combined resin(s)
and/or resin(s) and resin
additive(s)”

II. CLAIM CONSTRUCTION STANDARD
“In conducting an infringement analysis, a court must
first determine the meaning of any disputed claim terms and
then compare the accused device to the claims as construed.”
Proveris Sci. Corp. v. Innovasystems, Inc., 739 F.3d 1367,
1371-72 (Fed. Cir. 2014) (citing Wavetronix LLC v. EIS Elec.
Integrated Sys., 573 F.3d 1343, 1354 (Fed. Cir. 2009)); accord
Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir.
1995) (en banc).

Regarding the first step, claim construction

is a question of law with “evidentiary underpinnings” to be
determined by the court.

Teva Pharm. USA, Inc. v. Sandoz,

3

A comparison between the Court’s construction and the parties’
proposed constructions can be found in Appendix A.

4

Inc., 135 S. Ct. 831, 835, 838 (2015); Markman v. Westview
Instruments, Inc., 517 U.S. 370, 390 (1996)).

Where terms or

phrases are “not commonly understood,” a court may make
subsidiary findings of fact based on evidence extrinsic to the
patent to assist the court in its task of claim interpretation.
See Teva Pharm., 135 S. Ct. at 837–38.

These factual

determinations precede the court’s ultimate legal construction
of the patent’s claims.

Id.

A. Claims
Patent claims generally fall into two broad categories:
product claims and method claims.

A product claim describes

the invention of a physical product, such as a machine or
pharmaceutical tablet.

A method claim describes a series of

steps, or processes, constituting the claimed invention. In
construing patent claims, courts “must generally take care to
avoid reading [method] limitations into [product] claims . . .
because the process by which a product is made is irrelevant to
the question of whether that product infringes a pure [product]
claim.”

Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d

1338, 1344 (Fed. Cir. 2008).

That being said, some patent

claims describe a product by the process used to achieve it.
See Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1291 (Fed.
Cir. 2009).

Additionally, an applicant may disclaim products

created using certain processes if the applicant “overcomes a
5

rejection against [both] product and process claims by
indicating that the process is necessary to produce the claimed
product” and, in doing so, fails to “limit the disclaimers to
[only] the process claims.”

AstraZeneca LP v. Breath Ltd., 542

F. App'x 971, 977 (Fed. Cir. 2013), as amended on reh'g in part
(Dec. 12, 2013).

Such “product-by-process” claims should be

read to require use of the claimed process.

Baldwin, at 1294.

Claim construction begins with the language of the claims
themselves.

Braintree Labs., Inc. v. Novel Labs., Inc., 749

F.3d 1349, 1354–55 (Fed. Cir. 2014) (citing Interactive Gift
Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed.
Cir. 2001)).

Claim terms in the patent “are generally given

their ordinary and customary meaning, which is the meaning that
the term would have to a person of ordinary skill in the art in
question at the time of the invention.”

Ethicon Endo-Surgery,

Inc. v. Covidien, Inc., 796 F.3d 1312, 1323 (Fed. Cir. 2015)
(citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed.
Cir. 2005) (en banc)).

This general rule has two known

exceptions: (1) “when a patentee sets out a definition and acts
as his own lexicographer,” or (2) “when the patentee disavows
the full scope of the claim term either in the specification or
during prosecution.”

Hill-Rom Servs., Inc. v. Stryker Corp.,

755 F.3d 1367, 1371 (Fed. Cir. 2014) (quoting Thorner v. Sony
Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).
6

Where a claim term has more than one “ordinary” meaning, or
when reliance on a term’s “ordinary” meaning does not resolve
the parties’ dispute, a determination that a claim term “needs
no construction” or has the “plain and ordinary meaning” may be
inadequate.

O2 Micro Int’l Ltd. v. Beyond Innovation Tech.

Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008).
“To determine the scope and meaning of a claim, we
examine the claim language, written description, prosecution
history, and any relevant extrinsic evidence.”

InTouch Techs.,

Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1339 (Fed. Cir.
2014) (citing Phillips, 415 F.3d at 1315–19); Markman, 52 F.3d
at 978-79.
Apart
from
the
claim
language
itself,
the
specification is the single best guide to the meaning
of a claim term. And while the prosecution history
often lacks the clarity of the specification, it is
another established source of intrinsic evidence.
After considering these three sources of intrinsic
evidence, a court may also seek guidance from
extrinsic evidence. However, extrinsic evidence may
be less reliable than the intrinsic evidence.
Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1382 (Fed. Cir.
2014) (citations and internal quotation marks omitted).
B. Intrinsic Record
1. Specification
“The specification is fundamental to claim construction,
as it is the single best guide to the meaning of a disputed
term.”

Trading Techs. Int’l, Inc. v. Open E Cry, LLC, 728 F.3d
7

1309, 1319 (Fed. Cir. 2013) (quoting Phillips, 415 F.3d at
1315).

In determining the meaning to be given to claim terms,

a court must read the terms in the context of the specification
as it is the patent specification which, by statute, must
contain a “full, clear, concise, and exact” description of the
invention.
1311.

35 U.S.C. § 112(a); accord Phillips, 415 F.3d at

Consequently, “claim terms must be construed in light of

the specification and prosecution history, and cannot be
considered in isolation.”

GE Lighting Sols., 750 F.3d at

1308-09 (citing Phillips, 415 F.3d at 1313).
Although claim terms are normally given their ordinary and
customary meaning, a patentee may depart from this rule by
acting as his own lexicographer or by disavowing the claim
scope in the specification.

Phillips, 415 F.3d at 1316.

“Idiosyncratic language, highly technical terms, or terms
coined by the inventor are best understood by reference to the
specification.”

3M Innovative Props. Co. v. Tredegar Corp.,

725 F.3d 1315, 1321 (Fed. Cir. 2013) (citing Phillips, 415 F.3d
at 1315–16).

To use a special definition of a claim term, the

patentee must “clearly” redefine the term and have an “express
intent” to do so within the patent.

Thorner, 669 F.3d at 1365–

66; Elekta Instrument S.A. v. O.U.R. Sci. Int’l, Inc., 214 F.3d
1302, 1307 (Fed. Cir. 2000).

8

Courts must “not read limitations from the embodiments in
the specification into the claims.”

Hill-Rom, 755 F.3d at 1371

(citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904
(Fed. Cir. 2004)).

This requirement prevents a court from

limiting the scope of the claims to only the preferred
embodiment or specific examples disclosed in the specification.
Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1341
(Fed. Cir. 2014) (“[I]t is improper to read limitations from a
preferred embodiment described in the specification—even if it
is the only embodiment—into the claims absent a clear
indication in the intrinsic record that the patentee intended
the claims to be so limited.” (quoting Liebel-Flarsheim, 358
F.3d at 913)).

“By the same token, the claims cannot ‘enlarge

what is patented beyond what the inventor has described in the
invention.’”

Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288

(Fed. Cir. 2009) (quoting Biogen, Inc. v. Berlex Labs., Inc.,
318 F.3d 1132, 1140 (Fed. Cir. 2003)).
2. Prosecution History
“A court should also consider the patent’s prosecution
history, if it is in evidence.

The prosecution history

consists of the complete record of the proceedings before the
[U.S. Patent and Trademark Office].”

InTouch Techs., 751 F.3d

at 1341 (citations and internal quotation marks omitted).
“[P]rosecution history can often inform the meaning of the
9

claim language by demonstrating how the inventor understood the
invention and whether the inventor limited the invention in the
course of prosecution, making the claim scope narrower than it
would otherwise be.”

Plantronics, Inc. v. Aliph, Inc., 724

F.3d 1343, 1350 (Fed. Cir. 2013) (alteration in original)
(quoting Phillips, 415 F.3d at 1317).

A court “does not rely

on the prosecution history to construe the meaning of the claim
to be narrower than it would otherwise be unless a patentee
limited or surrendered claim scope through a clear and
unmistakable disavowal.”

3M, 725 F.3d at 1322 (citing Trading

Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed.
Cir. 2010)).
C. Extrinsic Evidence
“Although it is less significant than intrinsic evidence,
a court can consider extrinsic evidence in the record, which
‘consists of all evidence external to the patent and
prosecution history, including expert and inventor testimony,
dictionaries, and learned treatises.’”

Aristocrat Techs.

Austl. PTY Ltd. v. Int’l Game Tech., 709 F.3d 1348, 1355 (Fed.
Cir. 2013) (quoting Phillips, 415 F.3d at 1317).

Although such

evidence is generally considered less reliable than the
intrinsic record, a court is free to consider it and may do so
at any stage of its inquiry.

Phillips, 415 F.3d at 1317-19.

court may rely on extrinsic evidence so long as the evidence
10

A

does not contradict the intrinsic record.

Advanced Fiber

Techs. (AFT) Trust v. J & L Fiber Servs., Inc., 674 F.3d 1365,
1374–75 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1319).
III. ANALYSIS
A.

The Disputed Claims

The parties disagree on the proper construction of
language found in nine claims in the ‘055 Patent.

The claims

containing disputed language are as follows, with the contested
language underlined.
1.

Claims 1 and 28

Claim 1 and Claim 28 are the two independent claims of the ‘055
Patent, on which the remaining claims depend.
1.

A multi-layer, thermoplastic stretch wrap film
containing seven separately identifiable polymeric
layers, comprising:
(a) two identifiable outer layers, at least one of
which having a cling performance of at least 100
grams/inch, said outer layer being selected from the
group consisting of linear low density polyethylene,
very low density polyethylene, and ultra low density
polyethylene resins, said resins being homopolymers,
copolymers, or terpolymers, or ethylene and alphaolefins; and
(b) five identifiable inner layers, with each layer
being selected from the group consisting of linear
low density polyethylene, very low density
polyethylene, ultra low density polyethylene, and
metallocene-catalyzed linear low density polyethylene
resins; said resins are homopolymers, copolymers, or
terpolymers, or ethylene and C3 to C20 alpha-olefins;

11

wherein each of said two outer layers and each of
said five inner layers have different compositional
properties when compared to a neighboring layer.
(Claim 1, ‘055 Patent, ECF No. 1-4 at PageID 26 (emphasis
added).)
28.

A multi-layer, thermoplastic stretch wrap film
containing seven polymeric layers, comprising:
(a)
two outer layers, at least one of which
having a cling performance of at least 100
grams/inch, said outer layer being selected from
the group consisting of linear low density
polyethylene, very low density polyethylene, and
ultra low density polyethylene resins, said
resins
being
homopolymers,
copolymers,
or
terpolymers, of ethylene and alpha-olefins; and
(b)
five inner layers, with each layer being
selected from the group consisting of linear low
density
polyethylene,
very
low
density
polyethylene, ultra low density polyethylene,
and metallocene-catalyzed linear low density
polyethylene
resins;
said
resins
being
homopolymers, copolymers, or terpolymers, of
ethylene and C3 to C20 alpha-olefins,
wherein at least one of said inner layers
comprises a metallocene catalyzed linear low
density polyethylene resin with a melt index of
0.5 to 3 dg/min and a melt index ratio of 16 to
80; and
wherein each of said two outer layers and each
of said five inner layers have different
compositional properties when compared to a
neighboring layer.

(Claim 28, ‘055 Patent, ECF No. 1-4 at PageID 26 (emphasis
added).)
2. Claim 32
32. The film in claim 1, wherein the compositional
property is the presence of a resin additive.
12

(Claim 32, ‘055 Patent, ECF No. 1-4 at PageID 26 (emphasis
added).)

The same underlined term is found in dependent claims

29-31 and 33-35.

(Id.)

B. The Disputed Terms
“wherein each of said two outer layers and each of said five
inner layers have different compositional properties when
compared to a neighboring layer” and “compositional properties”
The Court’s November 2013 proposed construction construed
“wherein each of said two outer layers and each of said five
inner layers have different compositional properties when
compared to a neighboring layer” as “wherein each of said two
outer layers and each of said five inner layers is a different
composition than each immediately adjacent layer, which, in
turn, yields a different end-use property.”
No. 96 at PageID 3476.)

(No. 12-212, ECF

The Court also construed

“compositional properties” as “an end-use property which is a
result of the combined ingredients.”

(Id.)

Multilayer asserts that the Court’s construction
improperly narrows the claims by describing the end-use
property of the layers by their composition prior to
processing.

(See No. 12-2108, ECF No. 182 at PageIDs 4174-77.)

Multilayer concedes “that [while] the inherent properties of
the ingredients selected for the films impact the compositional

13

properties of the finished film,” so does the subsequent
processing.

(Id. at PageID 4176.)

Multilayer argues that

whether “the inherent properties of the ingredients or the
processing conditions affect the compositional properties of
each layer in the finished film is not relevant to the claims,
because the claims only relate to the finished film.”

(Id.)

Multilayer, therefore, proposes the following construction:
“wherein each of said two outer layers and each of said five
inner layers have different end-use properties than each
immediately adjacent layer.”

(Id. at PageID 4178.) Multilayer

further proposes that “compositional properties” mean “an enduse property.”

(Id.)

Multilayer argues that these

constructions, divorced from the ingredients chosen or
processes used, adequately describe the finished film’s
attributes.

(See id.)

Berry initially argues that the claim term “compositional
properties” is indefinite because it is not found in the ‘055
Patent specification.

(ECF No. 181 at PageID 4164-65.)

Berry

asserts that the ‘055 Patent “fails to inform how one of
ordinary skill in the art is to determine such [compositional]
properties of individual film layers separate from the film as
a whole.”

(Id. at PageID 4166.)

Berry further argues that

Multilayer’s construction would allow it to “accuse films of

14

infringement even if the adjacent layers are of the same resins
but the layers arguable [sic] undergo any difference during
processing conditions such that the patentee can argue the
undefined ‘compositional properties’ have been altered one
relative to the other.”

(Id. at PageID 4167.)

Although the

Court takes note of Berry’s indefiniteness argument, pursuant
to its November 1, 2016 Order, the Court’s “determination [on
such matters] will be made in accordance with the required
filings set out in the Scheduling Order, filed on October 21,
2016.”

(ECF No. 185 at PageID 4189.)

Berry next argues that if the Court were to construe the
terms, it agrees with the Court’s proposed construction for
“wherein each of said two outer layers and each of said five
inner layers have different compositional properties when
compared to a neighboring layer” as “wherein each of said two
outer layers and each of said five inner layers is a different
composition than each immediately adjacent layer, which, in
turn, yields a different end-use property.”
PageID 4170-71.)

(ECF No. 181 at

Berry proposes a different construction for

“compositional properties,” however, as “an end-use property
which yields a desired, physically distinguishable and material
effect as a result of the combined ingredients.”
PageID 4171.)

(Id. at

Berry contends that its “desired, physically

15

distinguishable” language is consistent with intrinsic evidence
cited by the Court.

(Id.)

After reviewing the language of the claims and intrinsic
evidence, as stated in the Order Following Claim Construction
Hearing (Pt. IV.B., ECF No. 95), the Court first finds the
patent specification and prosecution history teach that, prior
to processing, the resin(s) and/or resin(s) and resin
additive(s) of each layer are chosen for their “specific film
end-use properties,” and that each layer’s composition and enduse properties should differ from immediately adjacent layers.
The language of the patent, the prosecution history, and
extrinsic evidence support this conclusion.

Secondly, the

Court finds that the parties’ constructions are not supported
by intrinsic evidence.
1. The Court’s Construction
The patent specification and prosecution history teach
that, prior to processing, the resin(s) and/or resin(s) and
resin additive(s) of each layer are chosen for their “specific
film end-use properties,” and that each layer’s composition and
end-use properties should differ from immediately adjacent
layers.

(See ‘055 Patent col. 2, ll.44-54, ECF No. 1-4 at

PageID 14.)

16

The ‘055 Patent teaches, and the prosecution history
supports, that resins are chosen prior to processing for their
“specific film end-use properties.”

When the patentee amended

its claims to include the disputed terms, it specifically cited
support for its amendment in the specification.

The patentee

relied on the Detailed Description of the Invention, which
provides that the individual layers or “combinations of said
layers may be the same or different polymer resins selected for
specific end-use properties.”

(‘055 Patent col. 2, ll.42-44,

47-49, 52-54, ECF No. 1-4 at PageID 14.)

This description does

not indicate that resins are processed and thereafter exhibit
the end-use properties for which they were selected; rather,
this indicates the resins were selected before processing for
their end-use properties.

Additionally, the ‘055 Patent does

not indicate that processing conditions create the
compositional properties expressed in dependent Claims 29-35,
e.g., “tensile strength,” “melt index,” “density,” and “resin
additive.”
PageID 26.)

(See ‘055 Patent, Claims 29-35, ECF No. 1-4 at
The ‘055 Patent instead indicates that the

specific resins chosen dictate the finished layer’s end-use
properties.

For example, the ‘055 Patent explains that

specific resins are preferable based on their melt indexes and
densities.

(See, e.g., ‘055 Patent, col. 6, ll. 5-25, ECF No.

1-4 at PageID 16.)

The ‘055 Patent further states that “[i]t
17

is understood by those skilled in the art that the lower the
melt index or flow index, the higher the molecular weight”
(‘055 Patent, col. 5, ll. 50-52, ECF No. 1-4 at PageID 16), a
measurement independent of processing.

The patent thus

concedes that those skilled in the art understand that the melt
index of each layer is changed by manipulating the resin(s)
and/or resin(s) and resin additive(s) to alter the molecular
weight of the layer before processing.

Additionally, because

the presence of a resin additive constitutes a “compositional
property” (Claim 32, ‘055 Patent, ECF No. 1-4 at PageID 26) the
patent conveys that the finished product layers are
distinguished by resin(s) and/or resin(s) and resin additive(s)
used, irrespective of process.

In short, the patent

specification and patent prosecution teach that the differing
end-use properties among the layers hinge on the resin(s)
and/or resin(s) and resin additive(s) chosen prior to
processing.
The ‘055 Patent specification and prosecution history also
teach that each layer differs in its makeup from each
immediately adjacent layer.

For example, the patentee

specifically found support for its amendment to include the
disputed terms in the specification where it states, “[i]t is
preferred that the inner five layers are different one to the

18

other in that at least two different polymer resins are used in
any combination to make up the five layers.”
col. 4, ll. 29-32, ECF No. 1-4 at PageID 15.)

(‘055 Patent,
This language

indicates that it is not simply the end-use properties that
ought to differ between layers, but also the composition, i.e.,
the resin(s) and/or resin(s) and resin additive(s) and the
amount of such ingredients.

Further, before amending the

patent to include the disputed terms, the patentee sought to
differentiate its patent from the Miro Patent, and in doing so
explained compositionally and structurally different layers:

4

To better understand the argument against the
anticipation rejection, the Patentees believe it to
be
beneficial
to
specifically
point
out
the
distinction between “structural” and “compositional”
layers.
The stretch wrap film claimed by the
Patentees has seven structurally identifiable layers,
but it is not important whether it has seven
compositionally different layers.
In other words,
the claimed stretch wrap film may be represented by
both of the following:
(1) A/A/A/A/A/A/A, a film
having seven structurally identifiable layers which
are not compositionally different (i.e., it may be
described as having seven structural layers, but only
one compositional layer); and (2) A/B/C/D/E/F/G, a
film having seven structurally distinct layers which
are also compositionally different (i.e., it may be
described as having seven structural layers and seven
compositional layers).

4

The Court reiterates that it does not find that the patentee made an
“unambiguous” disavowal of claim scope during prosecution, but finds that
the prosecution history indicates a significant back-and-forth between the
patentee and the Examiner’s Office focusing on the way layers were to be
distinguished in the seven-layer stretch-film wrap. For this reason, the
Court references the prosecution history as support for the scope of the
specification and claims. (See ECF No. 95 at PageID 3383-84.)

19

(ECF No. 55-7 at PageID 1172.)

The Examiner rejected the

‘055 Patent over the Miro Patent, which disclosed an
A/C/B/B/B/C/A film, having “seven structurally
identifiable layers,” because the ‘055 Patent did not
require adjacent layers to have different compositions.
(ECF No. 55-11 at PageID 1554.)

To overcome this

rejection, the patentee amended the ‘055 Patent to include
the disputed terms.

The patentee’s explanation regarding

structurally and compositionally different layers in
conjunction with the amended language included to overcome
the Miro Patent, indicates that the claimed seven-layer
film requires that each layer differ in its makeup from
each immediately adjacent layer.

The Court also finds

that this definition comports with extrinsic evidence.
The Eastern District of Tennessee, in construing the same
terms, determined that “different compositional
properties” required “different compositions on a
molecular level, and that composition would then yield a
desire effect.”

(See ECF No. 59-3 at PageID 2756

(attaching Claim Construction Order (Aug. 6, 2010), ECF
No. 282, Quintec Films Corp v. Pinnacle Films, Inc., No.
4:06-cv-00078 (E.D. Tenn. 2010) as Exhibit 12.)
Finally, the ‘055 Patent specification and
prosecution history teach that each layer’s end-use
20

properties differs from each immediately adjacent layer.
The patent specification emphasizes the use of particular
resin(s) and/or resin(s) and resin additive(s) to create
various end-use properties among layers.

For example, the

patent specification disclosed that the claimed sevenlayer film, having differing end-use properties between
adjacent layers, is preferable over prior art.
Patent, Figs. 1-2, ECF 1-4 at PageID 13.)

(‘055

Dependent

Claims 29-35 also explicitly teach that “compositional
properties” include end-use properties.

(‘055 Patent,

Claims 29-35, ECF No. 1-4 at PageID 26.)

The parties

agree that the end-use properties between immediately
adjacent layers differs.
82.)

(See No. 12-2108, ECF Nos. 181-

Thus, the ‘055 Patent specification and prosecution

history teach that each layer’s end-use properties differs
from each immediately adjacent layer.
Multilayer attempts to argue for a construction that
would cover a compositionally indistinguishable sevenlayer film (e.g., A-A-A-A-A-A-A) whose end-use properties
differ among each immediately adjacent layer (e.g.,
Adensity-Aflexibility-Athickness-Aelongation-Adensity-Athickness-Aflexibility).
(No. 12-2108, ECF No. 182 at PageID 4179.)

This result

would require processing each immediately adjacent layer

21

differently.

The patentee explained during prosecution

that unprocessed
B/B/B [layers would] ‘bond[] to create a single
layer’ for many reasons, including the fact that the
B/B/B material is all the identically same material,
processed through the same extruder under one set of
processing conditions, and all experiencing the same
processing post extruder until they are separated in
the feedblock. Furthermore, during the period of
separation in the feedblock . . . each polymer stream
experiences similar shear stresses and process
temperatures.
(No. 21-2112, ECF No. 53-10 at PageID 531.)
If these unprocessed layers bond together after
processing, patentee argued, they become a single layer.
(ECF No. 55-7 at PageID 1174.)
Appeal Board agreed.

The Patent Trial and

(See ECF No. 53-8 at PageID 503.)

To remain separate layers, the processing of immediately
adjacent, identical layers must differ.
For the ‘055 Patent to cover a compositionally
indistinguishable seven-layer film whose end-use
properties differ among each immediately adjacent layer,
the patent would need to teach how “compositionally and
physically identical [unprocessed layers], freshly
extruded and still hot, do not fuze [sic] to become a
single layer when they come into contact with one another”
after processing.

(Id.)

But the ‘055 Patent does not

teach processing immediately adjacent, identical layers

22

differently.

At most, the ‘055 Patent describes the use

of extruders with differing barrel diameters among layers
(see, e.g., ‘055 Patent, col. 9 ll. 1-2, ECF No. 1-4); but
the use of multiple extruders alone, patentee argued, does
not prevent identical, adjacent layers from bonding.

(ECF

No. 55-7 at PageID 1178 (“[I]t is not necessarily uncommon
to have seven extruders feeding a five-layer feedblock.”)
One skilled in the art would then understand the ‘055
Patent as only covering a processed, seven-layer film
whose immediately adjacent layers differ both in
composition and end-use properties (e.g., Adensity-BflexibilityCelongation-Dthickness-Eelongation-Fdensity-Gflexibility).

Because the patent specification and prosecution history
teach that the resin(s) and/or resin(s) and resin additive(s)
of each layer are chosen for their “specific film end-use
properties” prior to processing, and that each layer’s
composition and end-use properties should differ from
immediately adjacent layers, the Court construes “wherein each
of said two outer layers and each of said five inner layers
have different compositional properties when compared to a
neighboring layer” as “wherein each of said two outer layers
and each of said five inner layers has a different composition
and end-use properties than each immediately adjacent layer.”

23

The Court further construes “compositional properties” to
mean “an end-use property after processing the combined
resin(s) and/or resin(s) and resin additive(s).”

As stated

above, the Court concludes that the ‘055 Patent does not teach
that the extrusion process imparts different compositional
properties to a polymeric layer within the polymeric structure.
Nevertheless, the Court acknowledges the patentee’s prosecution
argument that differing processing between layers can convey
different end-use properties, even on layers of the same
composition. (ECF No. 55-12 at PageID 1659.)

The Court also

acknowledges that courts “must generally take care to avoid
reading [method] limitations into [product] claims . . .
because the process by which a product is made is irrelevant to
the question of whether that product infringes a pure [product]
claim.”

Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d

1338, 1344 (Fed. Cir. 2008).

The Court thus concludes that an

end-use property is the result after processing the combined
resin(s) and/or resin(s) and resin additive(s).
2. The Parties’ Constructions
The Court rejects Multilayer’s proposed construction as an
improper attempt to capture uncovered technology.

Under

Multilayer’s construction, the ‘055 Patent may cover a sevenlayer film, wherein each layer is of the exact same composition

24

but has undergone a process different than the immediately
adjacent layer.

The Court finds that the patent specification

fails to describe such a technology.
“The claims are directed to the invention that is
described in the specification; they do not have meaning
removed from the context from which they arose.”

Netword, LLC

v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001).
“‘Claim construction’ is the judicial statement of what is and
is not covered by the technical terms and other words of the
claims.”

Id.

For the reasons stated above, neither the patent
specification nor prosecution history indicates that the sevenlayer film claimed in the ‘055 Patent contemplates a film
wherein each layer is of the exact same composition but has
undergone a process different than the immediately adjacent
layer.

Rather, the intrinsic evidence supports a seven-layer

film wherein each layer has a different composition and end-use
properties than the immediately adjacent layer, irrespective of
the processing history.
The Court also rejects Berry’s construction.

Berry seeks

to add “desired, physically distinguishable and material
effect” into the Court’s previously proposed construction.
(No. 12-2108, ECF No. 181.)

First, Berry improperly seeks to
25

read “intent” into the claim by including the term “desired.”
Second, the Court finds that the term “material effect” is not
found in the patent’s specification, nor is this term used in
the claims.

Without intrinsic evidence to define this term, it

is vague and potentially unhelpful to a jury.

See Funai Elec.

Co., Ltd. v. Daewoo Elecs. Corp., 616 F.3d 1357, 1366 (Fed.
Cir. 2010) (“The criterion is whether the explanation aids the
court and the jury in understanding the term as it is used in
the claimed invention.”).

Third, the Court rejects Berry’s

inclusion of “physically distinguishable” as redundant.

The

intrinsic evidence and claims make clear that immediate
adjacent layers must be physically distinguishable, i.e.,
identifiable, from one another.

These distinctions, the Court

has concluded, are the composition as well as the end-use
properties of each layer.

The Court, therefore, finds the

addition of “physically distinguishable” to the construction
unnecessary.
IV. CONCLUSION
For the reasons stated above, the Court construes “wherein
each of said two outer layers and each of said five inner
layers have different compositional properties when compared to
a neighboring layer” as “wherein each of said two outer layers
and each of said five inner layers has a different composition

26

and end-use properties than each immediately adjacent layer”;
and construes “compositional properties” as “an end-use
property after processing the combined resin(s) and/or resin(s)
and resin additive(s).”
IT IS SO ORDERED, this 9th day of February, 2017.
/s/ Jon P. McCalla
JON P. McCALLA
UNITED STATES DISTRICT COURT JUDGE

27

APPENDIX A
CLAIM TERM

MULTILAYER’S PROPOSED
CONSTRUCTION

BERRY’S PROPOSED
CONSTRUCTION

COURT’S CONSTRUCTION

Wherein each of
said two outer
layers and each
of said five
inner layers
have different
compositional
properties when
compared to a
neighboring
layer

“wherein each of said
two outer layers and
each of said five
inner layers has
different end-use
properties than each
immediately adjacent
layer”

“wherein each of said
two outer layers and
each of said five
inner layers is a
different composition
than each immediately
adjacent layer, which,
in turn, yields a
different end-use
property”

“wherein each of said two
outer layers and each of
said five inner layers has
a different composition
and end-use properties
than each immediately
adjacent layer”

“an end-use property”

“an end-use property
which yields a
desired, physically
distinguishable and
material effect as a
result of the combined
ingredients”

“an end-use property after
processing the combined
resin(s) and/or resin(s)
and resin additive(s)”

Compositional
properties

28