Meadwestvaco v. Rexam Beauty: Obviousness during Summary Judgment; Battle of the Experts

Category: Infringement  
By: Jesus Hernandez, Blog Editor/Contributor
TitleMeadwestvaco Corp. v. Rexam Beauty and Closures, Inc. No. 2012-1518, -1527 (Fed. Cir. Sept. 26, 2013).
Issues[1] Valois and Rexam both opposed summary judgment [of nonobviousness], arguing that material issues of fact necessitated a trial [because of the district court's nonobviousness finding was limited to EFEP use in a fragrance product].
Meadwestvaco, at *7 (text added).
[2] Rexam argues […] that [Dr. Reibenspies' expert] testimony should have been excluded because Dr. Reibenspies did not follow all of the XRD parameters listed in the ’132 patent. Therefore, according to Rexam, his testimony is legally irrelevant [and therefore inadmissable] to proving infringement.
Id. at *17 (text added).
Holding[1] Valois’s evidence created material issues of fact inappropriate for resolution on summary judgment, which necessitates a remand [because the secondary considerations analysis was limited to a field that was not recited in the claims, and because material issues of fact were resolved in favor of the moving party].
Meadwestvaco, at *11 (text added).
[2] We agree with MWV that Rexam’s arguments go to infringement and not admissibility [because] Dr. Reibenspies’s testimony was not an attempt to apply a new claim construction to the XRD crystallinity terms [but instead a way of showing infringement and that any deviation by Dr. Reibenspies' test from the XRD parameters in the specification were minor].
Id. at *17-18 (text added).

Procedural HistoryRexam Beauty and Closures, Inc. and Rexam Dispensing Systems S.A.S. (collectively “Rexam”) and Valois of America, Inc. and Valois S.A.S. (collectively “Valois”) appeal from a final judgment of the United States District Court for the Eastern District of Virginia based on: (1) the construction of several terms in U.S. Patent Nos. 7,718,132 (“’132 patent”) and 7,722,819 (“’819 patent”); (2) the district court’s grant of summary judgment of nonobviousness; (3) the district court’s denial of summary judgment of indefiniteness; (4) the district court’s denial of Rexam’s motion to exclude expert testimony; (5) and the district court’s finding, after a bench trial, of infringement of claims 15 and 19 of the ’132 patent.
Meadwestvaco, at *2.
Legal Reasoning (Prost, O'Malley, Taranto)
Claims at Issue
Claim 15A dispenser assembly for dispensing a liquid comprising:
a transport assembly; and,
a tube connected to the transport assembly;
wherein the tube consists essentially of an extruded and quenched crystalline fluoropolymer having an XRD crystallinity not greater than about 13%, the tube has a transparency of about 80% or more, and the tube has a refractive index of from about 1.36 to about 1.38.
Meadwestvaco, at *5.
Claim 1919. The dispenser assembly of claim 15, wherein the fluoropolymer is ethylene tetrafluoroethylene.
Id. at *5.
[1] Summary Judgment Not Proper if Obviousness Analysis Too Narrowly Focused and Material Issues of Fact Resolved in Favor of Movant
Legal StandardSummary judgment is appropriate 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. The court draws all reasonable inferences in favor of the nonmovant. Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH, 139 F.3d 877, 880 (Fed. Cir. 1998). We review the grant of a summary judgment motion de novo. Abbott Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d 1274, 1277 (Fed. Cir. 2003).
Meadwestvaco, at *8.
District Court Limited Obviousess Analysis to Fragrance Products
[T]he court’s obviousness analysis repeatedly emphasized that it would not have been obvious to use EFEP in a fragrance product. For example, the court pointed to evidence of some belief that fluoropolymers were carcinogenic and therefore should not be used with a fragrance product. […] The court also credited evidence advanced to show long-felt need and commercial success specific to the perfume industry. […] Finally, the court pointed to evidence that Valois and Rexam reverse-engineered their own invisible tubes from MWV’s NoC® tube. […]
Meadwestvaco, at *8-9.
The central problem with the district court’s analysis is that it fails to treat claims 15 and 19, which are not limited to fragrance products, differently from […] fragrance-specific claims. Obviousness, like other grounds of invalidity, must be analyzed on a claim-by-claim basis. The district court’s analysis of the secondary considerations of nonobviousness involved only fragrance-specific uses, but the claims now at issue are not fragrance-specific, and “‘objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’”
Id. at *9.
Improper to Resolve Material Issues of Fact in Favor of Moving Party during SJ
In addition to not analyzing claims 15 and 19 separately from the fragrance-specific claims, the district court resolved material issues of fact in favor of MWV, which is inappropriate at the summary judgment stage. […] For example, Valois presented evidence contradicting MWV’s claims of commercial success. Valois Br. 47 (explaining that at least one large customer elected not to use the more expensive invisible tube). Valois also cast doubt on MWV’s teaching away evidence by presenting evidence that EFEP was marketed for use in “water purification systems, biomedical tubing, catheters, and food products.” Id. at 43- 44 (citing Daikin presentation materials). Finally, Valois put forth evidence that one of ordinary skill in the art—a polymer engineer—would not have believed EFEP was carcinogenic. Id. (noting that MWV’s evidence of teaching away did not come from polymer scientists, but frommarketing and business executives, and presenting documents that Valois’s and Rexam’s engineers did not perceive a carcinogen risk).
Meadwestvaco, at *10-11.
[2] Expert Testimony Slightly Deviating from a Standard Measuring Test may be Introduced to Show Infringement
Backdrop: XRD TestClaim 15 requires a fluoropolymer tube “having an XRD crystallinity not greater than about 13%.” A brief discussion of X-ray diffraction (XRD) crystallinity is necessary to understand Rexam’s infringement arguments. XRD testing is one method of measuring the crystalline content of a material. An XRD test is conducted by striking a sample of the material with a monochromatic X-ray beam and examining the pattern of X-rays formed on a detection surface as the X-rays are scattered by the electrons of the atoms within the sample.
Meadwestvaco, at *15.
Battle of the Experts
At trial on the issue of infringement, Rexam and MWV engaged in a battle of the experts on XRD crystallinity. Rexam’s expert, Dr. Ortega, placed his samples 15 cm away from the XRD detector and used the TOPAS software to analyze his results. Trial Op. at 38. MWV’s expert, Dr. Reibenspies, placed his samples 5 cm away from the XRD detector and used the GADDS Full Method software to analyze his results. Trial Op. at 41. Unsurprisingly, the experts arrived at different conclusions. Dr. Reibenspies found that Rexam’s V1 and V2 tubes had an XRD crystallinity of 8 to 9%, and therefore infringed the ’132 patent. Dr. Ortega opined that the crystallinity was 23 to 24%, and therefore concluded Rexam did not infringe the ’132 patent. Trial Op. at 38, 41.
Meadwestvaco, at *16.
Rexam asked the district court to exclude infringement testimony from Dr. Reibenspies. […] The court allowed the testimony, finding it “relevant and admissible.” […] Rexam argues again that this testimony should have been excluded because Dr. Reibenspies did not follow all of the XRD parameters listed in the ’132 patent. Therefore, according to Rexam, his testimony is legally irrelevant to proving infringement.
Id. at *17.
Legal Standard onn Evidentiary Rulings
Evidentiary rulings are reviewed under the law of the regional circuit. Advanced Cardiovascular Sys., Inc. v. Medtronic, Inc., 265 F.3d 1294, 1308 (Fed. Cir. 2001). In the Fourth Circuit, the denial of an evidentiary motion in limine is reviewed for abuse of discretion.
Meadwestvaco, at *17.
The trial court is given “broad discretion in determining credibility because the court saw the witnesses and heard their testimony.”
Id. at *18.
Providing Expert Testimony to Show Infringement Is not Tantamount to a New Claim ConstructionDr. Reibenspies’s testimony was not an attempt to apply a new claim construction to the XRD crystallinity terms. Dr. Reibenspies opined that using his testing parameters, which differed slightly from the claim construction, he was able to conclude that the V1 and V2 tubes infringed the ’132 patent when applying the court’s construction. Dr. Reibenspies’s deviations from the claim construction […] gave Rexam an opportunity to cast doubt upon his infringement conclusions, which Rexam did through cross-examination and opposing expert testimony. But it did not make Dr. Reibenspies’s testimony legally irrelevant.
Meadwestvaco, at *17-18.
Infringement Can be Proven by an Alternative Test with Minor Deviations
[T]he XRD crystallinity limitation came down to a battle of the experts. The district court credited MWV’s expert and found Rexam’s expert unreliable.
Meadwestvaco, at *18.
The testimony revealed that Dr. Reibenspies used alternate equipment to mimic the results achieved by claim parameters. For example, the combination of the 0.3 mm slit and Goebel mirror produce parallel X-ray beams 0.3 mm apart. Dr. Reibenspies used a graphite monochromator with a fixed slit to produce the same X-ray arrangement. […] The same is true with regard to oscillation. Dr. Reibenspies’s XRD machine did not have an oscillator, so he manually repositioned the samples to mimic oscillation.
Id. at *18-19.
The court found that Dr. Reibenspies’s testing “deviations were insignificant and could not have substantially affected the test results.” […] MWV did present testimony that Dr. Reibenspies’s protocol “would have had only a minor effect on the test results.” Trial Op. at 42. The court credited this testimony as “reasonable,” id., and Rexam has not pointed to any clear error in that conclusion.
Id. at *19.
For the reasons set forth above, we vacate the district court’s grant of summary judgment of nonobviousness; affirm the district court’s […] denial of Rexam’s motion to exclude, and findings of infringement; […] and remand for further proceedings consistent with this opinion. Meadwestvaco, at *12.
Editor Note
This case also dealt with claim construction ("transparency" and "quenched"), as well as with definiteness. For further reading on these issues, click here.
Image Attribution Statement: Unknown, "Durers Frechbuch Longsword," 13th Century, available as Public Domain Image due to expired Copyright, http://commons.wikimedia.org/wiki/File:Durers_Frechbuch_longsword.jpg (Last visited Sept. 30, 2013).  
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