Multilayer Stretch Cling Film Holdings, Inc. v. MSC Marketing and Technology, Inc. et al

Filing 96

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". Signed by Judge Jon Phipps McCalla on 11/8/13. (McCalla, Jon)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TENNESSEE
WESTERN DIVISION
MULTILAYER STRETCH CLING FILM
HOLDINGS, INC.,

)
)
)
Plaintiff,
)
)
v.
)
)
INTEPLAST GROUP LTD. and AMTOPP
)
CORP.;
)
)
BERRY PLASTICS CORPORATION;
)
)
INTERTAPE POLYMER GROUP, INC.;
)
)
and
)
)
MSC MARKETING AND TECHNOLOGY,
)
INC. d/b/a SIGMA STRETCH FILM, and )
ALPHA INDUSTRIES, INC.,
)
)
Defendants.
)

JURY TRIAL DEMANDED

No. 2:12-cv-2107-WGY-dkv

No. 2:12-cv-2108-WGY-cgc
No. 2:12-cv-2109-JPM-cgc

No. 2:12-cv-2112-JPM-tmp

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”
Before the Court is the parties’ request for claim
construction pursuant to Markman v. Westview Instruments, Inc.,
52 F.3d 967 (Fed. Cir. 1995) (en banc).

On October 17, 2012,

the Court consolidated the four remaining patent-infringement
actions for the purpose of claim construction and set a
consolidated claim construction schedule.
ECF No. 95 at 1 n.1.)

(ECF No. 49; see also

On November 8, 2013, the Court entered

its Order Following Claim Construction Hearing.
1 

(ECF No. 95.)

The Court incorporates by reference the Court’s Order Following
Claim Construction Hearing.
In its 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 patent-in-suit, U.S. Patent 6,265,055 (the “‘055
Patent”).

(See ‘055 Patent, Second Ex Parte Reexamination

Certificate (Apr. 7, 2009), Claim 1 and Claim 28 at PageID 26,
ECF No. 1-4; Certificate of Correction (July 14, 2009) at PageID
22, ECF No. 1-4.)

In the interest of clarity, and because the

Court proposes a construction neither Plaintiff Multilayer
Stretch Cling Film Holdings, Inc. (“Multilayer”) nor Defendants
Inteplast Group Ltd. and Amtopp Corp., Berry Plastics Corp., and
MSC Marketing and Technology, Inc. (doing business as Sigma
Stretch Film, and Alpha Industries, Inc.) (collectively
“Defendants”) proposed, the Court enters the instant Proposed
Construction separately.
The Court addresses the term below.
“wherein each of said two outer layers and each
of said five inner layers have different compositional
properties when compared to a neighboring layer”
(‘055 Patent, Second Ex Parte Reexamination Certificate
(Apr. 7, 2009), Claim 1 and Claim 28 at PageID 26, ECF No.
1-4; Certificate of Correction (July 14, 2009) at PageID
22, ECF No. 1-4)

2 

Multilayer’s proposed construction of the term is “wherein
each of said two outer layers and each of said five inner layers
has a different arrangement or combination of ingredients than
each immediately adjacent layer, which, in turn, yields one or
more different characteristics.”

(Pl.’s Claim Construction Br.

(“Pl.’s Br.”) at 16, ECF No. 53.)
Defendants’ proposed construction of the term is “wherein
each of said two outer layers and each of said five inner layers
is a different composition than each adjacent layer, which, in
turn, yields a different, useful functional property.”

(Defs.’

Claim Construction Br. (“Defs.’ Br.”) at 15, ECF No. 54.)
Multilayer argues that “the written description teaches
that a layer may differ from a neighboring layer through the use
of different polymer resins or through the use of the same
polymer resins arranged differently to achieve specific end-use
properties.”

(Pl.’s Resp. at 13, ECF No. 57.)

Multilayer

asserts that the examiner’s rejection of the proposed amendment,
“different compositional or mechanical properties when compared
to a neighboring layer,” was based on the examiner’s conclusion
that “mechanical properties” was included within, and therefore
redundant to, “compositional properties.”

(Id. at 14 (citing

ECF No. 53-11 at PageID 544-45); see ECF No. 53-11 at PageID 544
(“In claims 1-15, 17 and 21-28 the recitation of ‘different
mechanical properties’ is considered the same as, and thus
3 

redundant, [sic] to the recitation of a different composition
than a neighboring layer.”)

Multilayer argues that this

amendment simply clarified the claims and neither narrowed nor
disavowed their scope.

(Pl.’s Resp. at 14, ECF No. 57.)

Additionally, Multilayer asserts that the “proper scope of the
claims must include films having layers that differ based on
their composition (the polymer resin(s) used) and based on their
arrangement (the processing conditions implemented).”
15.)

(Id. at

Multilayer contends that dependent Claims 29 through 35

“were added to explain that differences in compositional
properties may be attributable to the unique polymer resin(s)
used in the layer or to the properties impacted by the
processing of the polymer resin(s).”

(Id. at 14.)

Defendants argue that Multilayer’s proposed construction is
improperly based on “general-use dictionary definitions that are
not supported by intrinsic evidence.”
No. 58.)

(Defs.’ Resp. at 23, ECF

Defendants assert relying on such extrinsic evidence

is improper as it ignores the intrinsic evidence of the claims
themselves and the prosecution history of the ‘055 Patent.
(Id.)

Defendants also assert that Multilayer’s “substitution of

‘characteristics’ for ‘properties’” in its proposed construction
“fails to acknowledge the intrinsic evidence that the
‘compositional properties’ be useful and functional.”
25.)

Defendants also argue that Multilayer, in its proposed
4 

(Id. at

definition, is attempting to reclaim the previously disclaimed
claim scope with regard to whether layers can be distinguished
by the processing conditions under which they were manufactured.
Reviewing the language of the claims and the intrinsic
evidence, and as stated in the Order Following Claim
Construction Hearing (Pt. IV.B., ECF No. 95), the Court agrees
that the ‘055 Patent does not teach that the extrusion process
imparts different compositional properties to a polymeric layer
within the polymeric structure.
supports this conclusion.

The language of the patent

The Detailed Description of the

Invention provides that the individual layers or “combinations
of said layers may be the same or different polymer resins
selected for specific end-use properties.”
2:42-44, 47-49, 52-54, ECF No. 1-4.)

(‘055 Patent col.

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 for their end-use properties
before processing.

Further, the addition of dependent Claims 29

through 35 define the different compositional properties
contemplated in the stretch wrap film of the ‘055 Patent.

The

Court finds no indication in the language of the patent that
processing conditions of the chosen resins create the
compositional properties of “tensile strength,” “melt index,”

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“density,” or the “presence of a resin additive.”1

Additionally,

Claims 29 through 35 are dependent upon independent Claims 1 and
28, which by their language require the layers to “have
different compositional properties when compared to a
neighboring layer,” therefore the dependent claims cannot
broaden the scope of the independent claims.
Regarding Defendants’ proposed construction, the Court
finds that the intrinsic evidence does not support Defendants’
argument that the “compositional properties” of each layer must
be useful and functional.

The terms “useful” and “functional”

are not found in the patent’s specification, nor are these terms
used in the claims.

The ‘055 Patent teaches that resins are

chosen for their “specific film end-use properties.”

Further,

Defendants’ proposed construction including “useful functional
property” 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.”).

1

The Court recognizes that processing conditions may affect the degree of
tensile strength. (See ECF No. 57-3 ¶ 9.)

6 

Regarding Multilayer’s proposed construction, the Court
finds Multilayer’s proposed construction is overly broad.

As

used in Multilayer’s proposed construction, the term
“characteristic” could encompass more than a resin’s “end-use
properties.”
In construing the term “compositional properties” as used
in the ‘055 Patent, the United States District Court for the
Eastern District of Tennessee stated, “‘[C]omposition’ of matter
means a mixture or compound of two or more ingredients, and
‘compositional properties’ refer to the useful functions which
are the result of the intrinsic character of these combined
ingredients.”2

(ECF No. 59-3 at PageID 2755 (Claim Construction

Order at 20 (Aug. 6, 2010), ECF No. 282, Quintec Films Corp. v.
Pinnacle Films, Inc., No. 4:06-cv-00078 (E.D. Tenn. 2010)
(citing Lane v. Levi, 21 App. D.C. 168, 175 (D.C. App. Ct.
1903))).)3
The Eastern District of Tennessee’s construction of the
term at issue here is not binding on the Court, but the Court
will consider the Eastern District’s construction and

2

The Eastern District of Tennessee’s Claim Construction Order in the Quintec
Films Corp. case is attached as an exhibit to Defendants’ Responsive Claim
Construction Brief. (See ECF No. 59-3.)
3
After the Eastern District of Tennessee issued its claim construction order
on August 6, 2010, Defendant Pinnacle Films, Inc., filed for bankruptcy in
September 2010. See Notice of Filing for Chapter 11 Bankruptcy, ECF No. 298,
Quintec Films Corp., No. 4:06-cv-00078 (E.D. Tenn. Sept. 28, 2010). On
September 24, 2012, the parties filed a stipulation of dismissal, dismissing
with prejudice Plaintiff’s claims and dismissing without prejudice
Defendant’s counterclaims. See Stipulation of Dismissal, ECF No. 305,
Quintec Films Corp., No. 4:06-cv-00078 (E.D. Tenn. Sept. 24, 2012).

7 

accompanying reasoning.

See Amgen, Inc. v. F. Hoffmann-La Roche

Ltd., 494 F. Supp. 2d 54, 60 (D. Mass. 2007) (“[A] court is
bound to follow a higher court’s applicable holding, but need
only give consideration and careful analysis to a sister court’s
decision where applicable to a similar fact pattern.”); Tex.
Instruments, Inc. v. Linear Techs. Corp., 182 F. Supp. 2d 580,
589 (E.D. Tex. 2002) (“[W]hile courts may defer to previous
claim constructions . . . , such decisions are made on a case by
case basis, at the discretion of the court.”).
The Eastern District of Tennessee determined that
“compositional properties” would refer to the polymer
combination in the individual layers of the claimed
invention. Thus, in the context of this invention, it
is apparent that “different compositional properties
when compared to the neighboring layers” means that
each layer in the claimed invention will have
different compositions on a molecular level, and that
composition would then yield a desired effect. Under
this construction, two layers could have “identical
functions” (for instance, tensile strength) but be
composed
of
different
polymer
compositions
that
achieve this desired function.
(ECF No. 59-3 at PageID 2756 (Claim Construction Order at
21 (Aug. 6, 2010), ECF No. 282, Quintec Films Corp., No.
4:06-cv-00078).)
The Court finds this definition comports with the
specification of the patent, which states that resins are
selected for their specific film end-use properties (see ‘055

8 

Patent col. 2:43-44 (“said layers may be the same or different
polymer resins selected for specific end-use properties”), 3:5559 (describing “[s]uitable polyethylene resins for cling use”),
4:33-37 (describing “[s]uitable polyethylene resins for
strength”)), which in turn give the stretch-wrap film its
desired characteristics.

These “functions” are therefore

determined by the intrinsic character of the chosen ingredients.
Therefore, the Court’s proposed construction of the phrase
“wherein each of said two outer layers and each of said five
inner layers have different compositional properties when
compared to a neighboring layer” is “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”; and the proposed
construction for the term “compositional property” is “an enduse property which is a result of the combined ingredients.”
The parties may submit supplemental briefing on this
proposed construction within fourteen (14) days of entry of this
Order, not to exceed fifteen (15) pages in length.

IT IS SO ORDERED, this 8th day of November, 2013.
/s/ Jon P. McCalla
U.S. DISTRICT COURT JUDGE

9 

APPENDIX A
CLAIM TERM

MULTILAYER’S PROPOSED
CONSTRUCTION

DEFENDANTS’ PROPOSED
CONSTRUCTION

PROPOSED 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”
(‘055 Patent, Second
Ex Parte
Reexamination
Certificate (Apr.7,
2009), Claim 1 and
Claim 28 at PageID
26, ECF No. 1-4;
Certificate of
Correction (July 14,
2009) at PageID 22,
ECF No. 1-4)

“wherein each of said
two outer layers and
each of said five
inner layers has a
different arrangement
or combination of
ingredients than each
immediately adjacent
layer, which, in
turn, yields one or
more different
characteristics”

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

“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”;
and the term
“compositional
property” to mean “an
end-use property
which is a result of
the combined
ingredients”

10