INEOS USA LLC v. Berry Plastics Corporation
Filing
101
MEMORANDUM AND ORDER Granting 45 MOTION for Summary Judgment Determination that U.S. Patent No. 6,846,863 is Invalid as Anticipated (Signed by Judge Gregg Costa) Parties notified.(lusmith, 3)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF TEXAS
GALVESTON DIVISION
INEOS USA LLC,
§
§
Plaintiff,
§
VS.
§
§
BERRY PLASTICS CORPORATION, §
§
Defendant.
§
CIVIL ACTION NO. 3:13-CV-00017
MEMORANDUM AND ORDER
Plaintiff Ineos USA, LLC owns all rights and interest in United States Patent
No. 6,846,863 (“the ’863 patent”) entitled “Polyethylene Composition and Method
of Making Shaped Objects From Same”—essentially a patent for making bottle
caps. The application for the ’863 patent was filed in 2001, and the patent issued
in 2005. Inoes sued Defendant Berry Plastics Corporation alleging that Berry has
infringed the ’863 patent by producing bottle caps for use on Coca Cola’s Dasani
brand water bottles. In response, Berry filed a Motion for Summary Judgment
(Docket Entry No. 45) seeking to have Ineos’s ’863 patent declared invalid as
anticipated by two prior art references. One of those is United States Patent No.
5,948,846 (the ’846 Patent), the application for which was filed in 1996; the other
is Japanese Patent Application No. Sho-57 (1982)-170944A (the “Murakami
application”) which was filed in the early 1980s. Having considered the Parties’
briefing, technology tutorials, oral argument, and the applicable law, the Court now
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decides whether the prior art anticipated the ’863 Patent.
I.
BACKGROUND
Ineos is the American subsidiary of INEOS, a multinational chemicals
company headquartered in Switzerland. Barry Plastics Corporation is a company
headquartered in Evansville, Indiana that manufactures and markets plasticpackaging products.
On January 25, 2005, United States Patent 6,846,863 (“the ’863 patent”) was
issued to two inventors, Denis Plume and Pascal Vanden Berghe.
Ineos
subsequently purchased all rights and interest in the ’863 patent. The ’863 patent
focused on a method for manufacturing bottle caps that avoided the issues of bad
odor and flavor that came with the use of a common slip agent named docosemide.
Such lubricating or slip agents are integrated into bottle caps to reduce “torque,” or
the force necessary to twist the cap off a bottle. Fatty acid amides are regularly
used as slip agents in polyethylene compositions such as bottle caps. These fatty
acid amides are formed by combining a fatty acid and an amine. Fatty acid amides
can be either “unsaturated” or “saturated.”
Whether a fatty acid amide is “unsaturated” or “saturated” depends on if its
long carbon chain contains carbon-carbon double bonds. Saturated fatty acid
amides contain no such carbon-carbon double bonds in their long carbon chains.
Conversely, unsaturated fatty acid amides must contain at least one carbon-carbon
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double bond in their long carbon chains.
The fatty acid amides used in the packaging industry are formed from fatty
acids isolated from natural sources of fats and oils (that is, plants and animals).
Four of the more common fatty acid amides are erucamide, behenamide, oleamide,
and stearamide.
Figure 1: Structural Depictions of Fatty Acid Amides. Docket Entry No. 45-3 at ¶ 7.1
1
In these structural depictions of the fatty acid amides, the carbon-carbon bonds are represented
by
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which by itself represents three carbon atoms bonded together. Docket Entry No. 45-3
Stearamide and behenamide are both primary, linear, saturated, fatty acid
amides, which Ineos refers to as PLSFAAs. Stearamide and behenamide have 18
and 22 carbon atoms, respectively. Screw caps like those used on water bottles are
often made of polyethylene, including high-density polyethylene. As defined by
McGraw-Hill’s Dictionary of Scientific and Technical Terms, high-density
polyethylene is “[a] thermoplastic polyolepfin with a density of 0.941–0.9602 gram
per cubic centimeter (0.543–0.555 ounce per cubic inch). Abbreviated HDPE.”
McGraw-Hill Dictionary of Scientific and Technical Terms 935 (5th ed. 1994),
available at Docket Entry No. 77-20 at 4.
Previously, some manufacturers—including Ineos—had sought to address
the flavor and odor issue caused by the use of slip agents through the addition of
zeolite to act as a “flavor and odor trap.” Docket Entry No. 1 ¶ 8. The ’863 patent
sought to address the flavor and odor problem through use of a lubricating agent
without the negative flavor and odor characteristics that prompted the use of
zeolite. The ’863 patent contains 12 claims, of which only one—claim 1—is an
independent claim.
Berry began to manufacture, sell, and distribute bottle caps using a method
that Ineos alleges infringes claims 1–7 and 9–11 of the ’863 patent.2 Because of
at ¶ 7. Double carbon-carbon bonds are represented by
which by itself represents two
carbons with a double bond in between. Id.
2
The parties filed a Joint Claim Construction Statement with the Court on September 9, 2013,
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Berry’s allegedly infringing activity, Ineos brought suit under 35 U.S.C. § 271.
Docket Entry No. 1. Berry then moved for summary judgment seeking a ruling
that the ’863 patent is invalid as anticipated by two pieces of prior art—Ineos’s
own “’846 patent and the Murakami Application.” Docket Entry No. 45 at 36.
Specifically, Berry alleges that the ’846 patent anticipates each of the ’863 patent’s
asserted claims 1–7 and 9–11 and that the Murakami Application anticipates
claims 1–6 and 9–11. Docket Entry No. 45. After extensive briefing by both
sides, the Court heard oral argument on Berry’s Motion on December 5, 2013.
Ineos and Berry then submitted their proposed findings of fact and conclusions of
law.
II.
SUMMARY JUDGMENT STANDARD FOR INVALIDITY CLAIM
When a party moves for summary judgment, the reviewing court shall grant
the motion “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). A dispute about a material fact is genuine “if the evidence is such that a
reasonable jury could return a verdict for the nonmoving party.” Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). All reasonable doubts on questions
of fact must be resolved in favor of the party opposing summary judgment. See
Evans v. City of Houston, 246 F.3d 344, 348 (5th Cir. 2001) (citation omitted).
and there is no dispute between Ineos and Berry as to the correct construction of any claim terms,
phrases, or clauses in the ’863 Patent. Docket Entry No. 60.
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The ’863 patent enjoys a rebuttable presumption of validity under 35 U.S.C.
§ 282. Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1260 (Fed. Cir. 2012)
(quoting Chore–Time Equip., Inc. v. Cumberland Corp., 713 F.2d 774, 780 (Fed.
Cir. 1983)).
A “party asserting invalidity due to anticipation must prove
anticipation, a question of fact, by clear and convincing evidence.” Orion IP, LLC
v. Hyundai Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010); see also Microsoft
Corp. v. i4i Ltd. P’ship, --- U.S. ----, 131 S. Ct. 2238, 2245–46 (2011). As with
other issues of fact, however, a court may rule on anticipation at the summary
judgment stage if, viewing any disputed facts in favor of the nonmovant, no
reasonable jury could find that the patent was not anticipated by the prior art. See
Iovate Health Scis., Inc. v. Bio-Engineered Supplements & Nutrition, Inc., 586
F.3d 1376, 1383 (Fed. Cir. 2009) (affirming the district court’s grant of summary
judgment on the ground that an advertisement constituted an anticipatory printed
publication that invalidated the claims of the patent at suit); Telemac Cellular
Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1327 (Fed. Cir. 2001) (“Although
anticipation is a question of fact, it still may be decided on summary judgment if
the record reveals no genuine dispute of material fact.” (citation omitted)). The
fact that USPTO considered the ’846 patent as prior art during the ’863 patent’s
prosecution does not impose a higher burden on Berry: “As the Supreme Court
explained in i4i, there is no heightened burden of proof when a reference was
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previously considered by the PTO, and no lowered burden of proof if a defendant
raises a new reference or argument during litigation.” Sciele, 684 F.3d at 1260
(citing i4i, 131 S. Ct. at 2250).
III.
INVALIDITY
A. The ‘846 Patent Is Prior Art
Prior art includes “a patent granted on an application . . . by another filed . . .
before the invention by the applicant.” 35 U.S.C. § 102(e) (2) (2011) (pre-America
Invents Act).3 The earliest claimed priority date of the ’863 patent is March 22,
2000. The application leading to the issuance of the ’846 patent (No. 08/770,891)
was filed on December 20, 1996, and its date of patent is September 7, 1999. The
Murakami Application was filed on April 14, 1981 and published on October 21,
1982. Both parties agree that the ’846 patent is prior art to the ’863 patent. The
Parties dispute whether the Murakami Application’s publication meets the
requirements for it to be prior art to the ’863 patent under § 102(b), but the Court
need not decide this question because it can resolve the core issues while limiting
its analysis to the ’846 patent.
3
The America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011), applies only to claimed
inventions having an effective filing date on or after March 16, 2013. The Court therefore
applies the pre-America Invents Act version of § 102 to the patents in this case.
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B. Anticipation
Because the ’846 patent is prior art, it will anticipate—and therefore render
invalid—a claim of the ’863 patent if “each and every element as set forth in the
claim is found, either expressly or inherently described” in its specifications. In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation and internal quotation
marks omitted). Anticipation analysis is at its core an inquiry into whether the
claimed invention is new. See Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075,
1082 (Fed. Cir. 2008) (“Claimed subject matter is ‘anticipated’ when it is not new;
that is, when it was previously known.”); see also Donald S. Chisum, Anticipation,
Enablement and Obviousness: An Eternal Golden Braid, 15 AIPLA Q.J. 57, 58
(1987) (“Anticipation is a conclusion as to the failure of the invention to meet the
patent law requirement of novelty. Simply put, one cannot claim a patent right in
what is old, ‘old’ meaning identically described or disclosed in the prior art. A
claim is said to be ‘anticipated’ by such a description or disclosure.”). As the
Federal Circuit has put it, “that which would literally infringe if later anticipates if
earlier.” Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1378
(Fed. Cir. 2001). An element is described if it “is necessarily present in the thing
described in [a prior art] reference, and . . . would be so recognized by persons of
ordinary skill.” In re Robertson, 169 F.3d at 745 (citation and internal quotation
marks omitted).
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1. Claim 1
As mentioned above, claim 1 of the ’863 patent is its only independent
claim. In describing a polyolefin-based composition containing polyethylene and a
lubricating agent, the ’846 patent either expressly or inherently discloses every
element of claim 1 of the ’863 patent, which describes:
1. Composition comprising at least 94.5% by weight of a
polyethylene with a standard density of more than 940
kg/m3, 0.05 to 0.5% by weight of at least one saturated fatty
acid amide represented by CH3(CH2)nCONH2 in which n
ranges from 6 to 28[,] 0 to 0.15% by weight of a subsidiary
lubricant selected from fatty acids, fatty acid esters, fatty
acid salts, mono-unsaturated fatty acid amides, polyols
containing at least 4 carbon atoms, mono- or poly-alcohol
monoethers, glycerol esters, paraffins, polysiloxanes,
fluoropolymers and mixtures thereof, and 0 to 5% by weight
of one or more additives selected from antioxidants,
antacids, UV stabilizers, colorants and antistatic agents.
Docket Entry No. 45-6 at 6:5–17.
The ’846 patent describes a polyolefin-based composition consisting of
polyolefin and—per 100 parts by weight of polyolefin—0.1 to 5 parts by weight of
lubricating agent and from 0.05 to 2 parts by weight of zeolite. Docket Entry No.
45-7 at 1:38–45.
It further describes the preferred polyolefin, recommending
polyethylene as the “most advantageous” if having a density of at least 940 kg/m3.
Id. at 3:24–29. The ’846 patent also describes use of a lubricating agent that may
be chosen from several compounds including saturated fatty acid amides—
specifically naming stearamide—and explains that “amides of saturated or
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unsaturated fatty acids containing from 12 to 35 carbon atoms, and mixtures
thereof” give “good results.” Id. at 2:48–65. It describes the quantity of the
lubricating agent as being at least .1 and no more than 5 parts per 100 parts by
weight of polyolefin, and refines the preferred range to 0.2–1 parts by weight,
explaining that quantities of at least 0.4 parts by weight are the most common. Id.
at 2:66–3:7. In addition to the polyolefin and lubricating agent, the ’846 patent
provides that the composition “may also contain usual additives such as
stabilizers[,] . . . colorants[,] [or] antistatic agents.” Id. at 3:43–50.
For ease of analysis, the Court breaks claim 1 of the ’863 patent into
subclaims and examines whether the ’846 patent anticipates each in turn. These
subclaims are:
1. Composition comprising at least 94.5% by weight of a
polyethylene with a standard density of more than 940 kg/m3;
2. 0.05 to 0.5% by weight of at least one saturated fatty acid amide
represented by CH3(CH2)nCONH2 in which n ranges from 6 to 28;
3. 0 to 0.15% by weight of a subsidiary lubricant selected from fatty
acids, fatty acid esters, fatty acid salts, monounsaturated fatty acid
amides, polyols containing at least 4 carbon atoms, mono- or polyalcohol monoethers, glycerol esters, paraffins, polysiloxanes,
fluoropolymers and mixtures thereof; and
4. 0 to 5% by weight of one or more additives selected from
antioxidants, antacids, UV stabilizers, colorants and antistatic
agents.
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a. The prior art ’846 patent discloses subclaim 1 of claim 1 of the
’863 patent
The ’846 patent discloses a number of compositions, including one calling
for an amount of polyethylene ranging from roughly 93.45% to 99.85% of the total
weight, disclosing polyethylenes “of at least 930 kg/m3, in most cases of at least
935 kg/m3, [those having] values of at least 940 kg/m3 being the most
advantageous ones.” Docket Entry No. 45-7 at 1:38–44; 3:24–33. Ineos does not
dispute that the ’846 patent discloses 94.5% by weight of a polyethylene with a
standard density of more than 940 kg/m3. See Docket Entry No. 95. And the
Court is satisfied that this portion of claim 1 of the ’863 patent is anticipated by the
’846 patent.
b. The prior art ’846 patent discloses subclaim 2 of claim 1 of the
’863 patent
Ineos contends that the ’863 patent’s genus of the “23 Primary Linear
Saturated Fatty Acid Amides” (PLSFAA) is novel over the prior art. Ineos points
out that the lubricant in claim 1 is more limited than the lubricant in the ’846
patent; it limits the selection to 23 PLSFAAs rather than a choice between
“glycerol esters, polysiloxanes, amides of saturated or unsaturated fatty acids
containing from 12 to 35 carbon atoms, and mixtures thereof.” Docket Entry No.
45-7 at 6:8–12.
But a prior art reference that discloses a particular species
anticipates the genus (in this case, all saturated fatty acid amides) to which the
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species belongs. In re Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989); In re Slayter,
276 F.2d 408, 411 (C.C.P.A. 1960). Ineos does not dispute that the ’846 patent
discloses stearamide, a compound Ineos identifies as a “PLSFAA.”
Ineos’s
argument that the prior art expresses no “specific preference” for stearamide is of
no avail.
For prior art to anticipate a patent, it need not exhibit preference.
Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376 (Fed. Cir. 2005) (“This
court rejects the notion that one of these ingredients cannot anticipate because it
appears without special emphasis in a longer list. To the contrary, the disclosure is
prior art to the extent of its enabling disclosure.” (citing Hewlett–Packard Co. v.
Mustek Sys., Inc., 340 F.3d 1314, 1324 n.6 (Fed. Cir. 2003))); Hewlett–Packard
Co., 340 F.3d at 1324 n.6 (“The anticipation analysis asks solely whether the prior
art reference discloses and enables the claimed invention, and not how the prior art
characterizes that disclosure or whether alternatives are also disclosed.” (citing
Celeritas Techs. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998))).
At its core, Ineos’s argument for “specific preference” is nothing more than a
different spin on calling the Court to limit its analysis to the “preferred
embodiment” of the prior art—something rejected time and time again by the
Federal Circuit. See Arthrocare Corp. v. Smith & Nephew, Inc., 406 F.3d 1365,
1371–72 (Fed. Cir. 2005) (“[I]t was error for the district court to limit the
disclosure of the prior art reference to a preferred embodiment.”); Ultradent
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Products, Inc. v. Life-Like Cosmetics, Inc., 127 F.3d 1065, 1068 (Fed. Cir. 1997)
(“The district court thus erred by construing the scope of the [the prior art]
disclosure as limited to the preferred embodiment.”). In fact, even if the prior art
“teaches away” from the patent’s claim, it can anticipate as a matter of law. See,
e.g., Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir.
1998) (a prior art reference is no less anticipatory when it discloses the invention
and then disparages it). The identities of different preferences limiting its broader
disclosures can be found throughout the ’846 patent. The specific identification of
stearamide within a list of potential lubricating agents is no different. Because the
’846 patent discloses the species of stearamide, the genus of saturated fatty acid
amides—which subsumes Ineos’s preferred “subgenus” of the 23 PLSFAAs—is
anticipated.
Relying heavily on the Federal Circuit’s holding in OSRAM Sylvania, Inc. v.
American Induction Technologies, Inc., 701 F.3d 698, 706 (Fed. Cir. 2012)
(“[H]ow one of ordinary skill in the art would understand the relative size of a
genus or species in a particular technology is of critical importance.”), Ineos argues
that claim 1’s identification of the lubricating agent’s range from 0.05 to 0.5% is
not anticipated because the ’846 patent discloses and claims the larger, overlapping
range of 0.1 to 5 parts by weight. Were the ’846 patent’s disclosure solely of a
range, Ineos may be correct. This argument, however, ignores the ’846 patent’s
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disclosure of “at least 0.1 part by weight per 100 parts by weight of polyolefin, in
particular of at least 0.2 parts by weight, quantities of at least 0.4 parts by weight
being the most common ones.” Docket Entry No. 45-7 at 2:67–3:3. Unlike in
OSRAM, the prior art patent in this case makes specific disclosures along with the
broader disclosure of the full range.
Allowing the patenting of a range that
encompasses “the most common” weights disclosed by prior art would effectively
bar even the holder of the original patent from utilizing the most common
applications of the prior art by causing them to infringe the later patent. Again,
disclosure of a species within a range anticipates the entire claimed range.
Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985) (“It is
also an elementary principle of patent law that when, as by a recitation of ranges or
otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of
them is in the prior art.” (citing In re Petering, 301 F.2d 676, 682 (C.C.P.A. 1962)
(emphasis in original)).
c. The prior art ’846 patent discloses subclaim 3 of claim 1 of the
’863 patent
Ineos argues that claim 1’s disclosure of 0 to 0.15% weight of a subsidiary
lubricant is not anticipated by the ’846 patent. This argument fails for two reasons.
First, in the ’846 patent’s disclosure of lubricating agents giving “good results,” it
includes “glycerol esters, polysiloxanes and amides of saturated or unsaturated
fatty acids containing from 12 to 35 carbon atoms, and mixtures thereof.” Docket
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Entry No. 45-7 at 2:59–62 (emphasis added). “And mixtures thereof” implies the
use of more than one lubricating agent, making one agent the subsidiary.
Furthermore, the ’846 patent discloses both the optional use of subsidiary
lubricants as well as additives. See, e.g., id. at 1:48–50 (“[The] lubricating agent
[is] intended to denote . . . one or more lubricating agents . . . .”).
Second, when the acceptable range of a component includes zero, that
component is by its nature discretionary. If one were to practice every portion of
claim 1, he could still infringe by not including a subsidiary lubricant at all.
Recalling the maxim that what “would literally infringe if later anticipates if
earlier,” it follows that prior art need not include a subsidiary lubricant to
anticipate claim 1. Bristol-Myers Squibb, 246 F.3d at 1378. In Titanium Metals,
along with the two limitations of a certain percentage of nickel and molybdenum,
the claim sought to be patented included “up to 0.2% maximum iron.” 778 F.2d at
776. The Federal Circuit found that the claim was anticipated by a reference that
disclosed a composition that included nickel, molybdenum, and the balance
titanium—that is, a composition without iron.
Id. at 780–81.
The optional
limitation of “up to 0.2% maximum iron” was satisfied by the prior art, which
made no mention of including iron. That optional limitation of “up to 0.2%
maximum iron” in Titanium Metals is strikingly similar to the ’863 patent’s
disclosure of 0 to 0.15% weight of a subsidiary lubricant. Just as the prior art’s
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disclosure of a composition without iron in Titanium Metals anticipated the
optional limitation there, so too do the ’846 patent’s disclosures of “mixtures
thereof” and “one or more lubricating agents” anticipate the ’863 patent’s optional
limitation here.
d. The prior art ’846 patent discloses subclaim 4 of claim 1 of the
’863 patent
Ineos argument that subclaim 4 is not anticipated by the ’846 patent fails for
the same basic reasons as with subclaim 3.
Claim 1 discloses the use of
additives—such as stabilizers, colorants, and antistatic agents—in a range of 0 to
5% by weight. Docket Entry No. 45-6 at 6:15–17. The ’846 patent discloses that
“the composition according to the invention may also contain usual additives such
as stabilizers . . . colorants . . . or antistatic agents . . . [in an amount] generally
lower than 10 parts by weight per 100 parts by weight of polyolefin.” Docket
Entry No. 45-7 at 3:43–50. The ’863 patent’s inclusion of zero in the acceptable
range is simply a numerical expression of the phrase “may also contain” found in
the ’846 patent. Because the ’846 patent discloses the same optional use of
additives as claim 1 of the ’863 patent, the prior art ’846 patent anticipates
subclaim 4 of claim 1 of the ’863 patent.
e. Summary of findings as to the prior art ’846 patent’s
anticipation of claim 1 of the ’863 patent
Given the above discussion, the Court is convinced that a person of ordinary
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skill in the art reading the ’846 patent in its entirety would have understood it to
disclose a method for making bottle caps consisting of polyethylene, a saturated
fatty acid amide lubricant, and optional subsidiary lubricants and additives within
the same ranges claimed by claim 1 of the ’863 patent. Each component of the
’846 patent that claim 1 of the ’863 patent reads on is clearly and unambiguously
disclosed to a person of ordinary skill in the art who reads through the ’846 patent
in a normal manner “without any need for picking, choosing, and combining
various disclosures not directly related to each other.” In re Arkley, 455 F.2d 586,
587 (C.C.P.A. 1972) (emphasis removed).
Ineos argues that the ’846 patent’s inclusion of a zeolite—compared to ’863
patent’s statement that “[t]he composition of the invention is free of zeolites”—is
so significant that the result is “the ’846 patent disclos[ing] very different
compositions than those of the [’863] patent.” Docket Entry No. 95 ¶¶ 86–87. But
the presence of a zeolite does not change the anticipation analysis here. Prior art
that includes an extra component anticipates a patent that claims the same elements
but excludes the extra component. See 1 Donald S. Chisum, Chisum on Patents,
§3.02(1)(f) (“For anticipation purposes, as for infringement purposes, it does not
matter that the anticipatory (or infringing) item contains elements in addition to
those specified in the patent claim in question.”).
Tellingly, Ineos does not dispute that the ’846 patent discloses all of the
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components of claim 1 of the ’863 patent. Asked at the summary judgment
hearing to explain which elements of claim 1 were not disclosed in the prior art
’846 patent, counsel for Ineos said only that “[i]t’s the combination that’s new.”
Docket Entry No. 92 at 59:13. But—as demonstrated above—the ’846 patent lays
out each component of the final composition along with instructions for
assembling them into a final amalgamation; the fact that they are not presented in a
manner as concise as claim 1 is irrelevant.
f. Berry need not provide expert testimony to oppose that of
Ineos’s experts
The proffered testimony of Dr. Chris Scott and Dr. Denis Plume by Ineos
does not contradict the plain meaning of the claims—a meaning which neither
party disputes. The conclusions of one party’s experts are not binding on the
Court. And Berry need not offer its own experts on the question of anticipation
because “expert witnesses are not required, and normally are not expected, to offer
legal conclusions.”
Promega Corp. v. Applied Biosystems, LLC, 2013 WL
2898260, at *8 (N.D. Ill. June 12, 2013) (Posner, J., sitting by designation).4
Whether the ’846 patent anticipates the ’863 patent based on the undisputed factual
record is a legal question. The Court is convinced that the answer is “yes.”
4
Ineos filed a Motion to Strike the Declaration of Berry Plastics Corporation’s Undesignated
Expert, Dr. Mark Rule (Docket Entry No. 70). The Court did not rely on Dr. Rule’s declaration
in reaching its holding and does not rule on that Motion at this time.
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2. Claims 2–7 and 9–11
Having concluded that the ’846 patent anticipates claim 1 of the ’863 patent
in its entirety, the Court turns to the ’863 patent’s dependent claims.
See
Wahpeton Canvas Co., Inc. v. Frontier Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989)
(“It is axiomatic that dependent claims cannot be found infringed unless the claims
from which they depend have been found to have been infringed.”). Ineos elected
not to brief the validity of the ’863 patent’s dependent claims, and analysis of these
claims is straightforward.
a. Claim 2
Claim 2 provides a “[c]omposition according to claim 1, in which the
saturated fatty acid amide is selected from linear saturated fatty acid amides
containing at least 12 carbon atoms, and mixtures thereof.” Docket Entry No. 45-6
at 6:18–21. Stearamide is a “linear saturated fatty acid amide” containing at least
12 carbon atoms. The ’846 patent’s disclosure of stearamide is thus a disclosure of
the genus of claim 2, which is anticipated.
b. Claim 3
Claim 3 provides a “[c]omposition according to claim 2, in which the
saturated fatty acid amide is behenamide.” Id. at 6:22–23. Because behenamide is
a common saturated fatty acid amide lubricating agent, the Court finds that the
’846 patent’s disclosure of the genus of saturated fatty acid amides—through its
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species disclosure of stearamide—prevents the patenting of the well-recognized
PLSFAA species of behenamide. See In re Petering, 301 F.2d at 682–83 (finding
generic disclosure of chemical formula encompassing 20 compounds anticipated a
species within that disclosed genus); see also MPEP § 2131.02 (discussing In re
Petering and related cases). Accordingly, claim 3 is invalid as anticipated.
c. Claim 4
Claim 4 provides a “[c]omposition according to claim 1, wherein the
saturated fatty acid amide content is at least 0.07% by weight, and does not exceed
0.4% by weight.” Docket Entry No. 45-6 at 5:24–27. As set forth in this Court’s
discussion of claim 1, the prior art ’846 patent discloses points within this range:
specifically 0.1, 0.2, and 0.4 parts per 100 of a saturated fatty acid amide
lubricating agent. Therefore, claim 4 is also invalid as anticipated.
d. Claim 5
Claim 5 provides a “[c]omposition according to claim 1, in which the
polyethylene has a standard density of 948 to 960 kg/m3.” Id. at 6:28–29. The
’846 patent discloses a range of densities from 930 kg/m3, to “at most equal to 960
kg/m3, values of not more than 955 kg/m3 being recommended.” Docket Entry No.
45-7 at 3:26–33. There is no meaningful distinction between the ranges claimed in
the ’863 patent and the prior art disclosure. Claim 5 is also invalid as anticipated.
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e. Claim 6
Claim 6 provides a “[c]omposition according to claim 1, in which the
polyethylene has a melt index MI2 of at least 0.05 g/10 min and which does not
exceed 10 g/10 min.”
Docket Entry No. 45-6 at 6:29–32. The ’846 patent
discloses the exact range of the melt index claimed by claim 6: “at least 0.05 g/10
min” to “10 g/10 min.” Docket Entry No. 45-7 at 3:34–42. Claim 6 is therefore
also invalid as anticipated
f. Claim 7
Claim 7 provides a “[c]omposition according to claim 1, in which the
antioxidant content is at least 0.01% by weight.” Docket Entry No. 45-6 at 6:33–
34. This range is also disclosed by the prior art ’846 patent. Example 1 sets forth
antioxidants in the amount of “0.025 parts by weight of antioxidant.” Docket
Entry No. 45-7 at 4:66. This satisfies the “at least 0.01% by weight” range of the
’863 patent and, thus, anticipates and invalidates this claim.
g. Claims 9 & 10
Claim 9 provides for a “[c]omposition according to claim 1, wherein the
subsidiary lubricant content does not exceed 0.1% by weight.” Docket Entry No.
45-6 at 6:38–39. Claim 10 provides for a “[c]omposition according to claim 1,
which is free of subsidiary lubricant.” Id. at 6:40–41. The prior art ’846 patent
contemplates subsidiary lubricant amounting to zero percent by weight through its
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instruction that a subsidiary lubricant is optional. Docket Entry No. 45-7 at 1:48–
50 (“[L]ubricating agent [is] intended to denote . . . one or more lubricating
agents.” (emphasis added)); id. at 2:48–65 (“Lubricating agents which give good
results are glycerol esters, polysiloxanes and amides of saturated or unsaturated
fatty acid . . . and mixtures thereof.” (emphasis added)).
Subsidiary lubricant
totaling zero percent is necessarily not in excess of “0.1% by weight” and would
make the composition “free of a subsidiary lubricant.” Thus, both Claims 9 and 10
are invalid as anticipated.
h. Claim 11
Claim 11 provides a “[m]ethod for producing shaped items from a
polyethylene-based composition according to claim 1.” Docket Entry No. 45-6 at
42–43. The ’846 patent describes a method for producing shaped objects from a
polyethylene-based composition, as discussed in depth supra. See Docket Entry
No. 45-7 at title and 4:13–19. Due to the prior art ’846 patent’s disclosures, claim
11 is also invalid as anticipated.
i. All dependent claims are invalid as anticipated
Accordingly, the Court finds the ’863 patent’s dependent claims 2–7 and 9–
11 are also invalid as anticipated by the prior art ’846 patent.
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V.
CONCLUSION
For the foregoing reasons, Defendant Berry Plastics Corporation’s Motion
for Summary Judgment (Docket Entry No. 45) is GRANTED. The Court finds
that there is no genuine issue of material fact with respect to the ’846 patent’s
disclosure of each and every element set forth in the asserted claims of the ’863
patent in a manner recognizable to a person of ordinary skill in the art. Therefore
Berry has proven by clear and convincing evidence that the asserted claims of the
’863 patent are invalid as anticipated by the ’846 patent.
SIGNED this 15th day of April, 2014.
___________________________________
Gregg Costa
United States District Judge
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