Frans Nooren Afdichtingssystemen B.V. v. Stopaq Amcorr Inc.: Insufficient Exploration in the Record Vacates Summary Judgment of Non-Infringement

Category: Claim Construction  
By: John Kirkpatrick, Contributor 
TitleFrans Nooren Asdichtingssystem v. Stopaq Amcorr, Inc., No. 2013-1200 (Fed. Cir. Feb. 21, 2014).
[1] [T]he limitation at issue is a claim construction—that “a filler” in [U.S. Patent No. 5,898,044] can contain only “one material.” Frans Nooren at *6 (citations removed, text added).
[2] Second, Amcorr argued, polypropylene in the accused products is not a “filler” at all. Id. at *5 (text added).
There has been insufficient exploration in the record, both here and in the district court, of too many questions of apparent relevance to identifying a proper construction of the limitation, which requires, among other things, that the construction itself supply “a meaningfully precise claim scope.” Frans Nooren at *11-12 (citations removed).
[1] We see no basis in the language or specification for limiting “a filler” to “one material.” We have been pointed to nothing about a customary usage of the term itself, and nothing in the specification’s use of it, that excludes from being “a filler” a mixture of two different “materials.” Id. at *7 (citations removed, text omitted).
[2] [The district court] does not state a claim construction of “a filler,” let alone justify a particular construction by addressing the parties’ respective contentions about the term’s meaning through the usual analysis. Id. at *9 (text added).

Procedural HistoryNooren brought the present action against Amcorr in the United States District Court for the Southern District of Texas, alleging infringement of the '044 patent. [T]he district court issued an opinion [adopting Amcorr's grounds] and order granting summary judgment of non-infringement in favor of Amcorr. Frans Nooren at *4-5 (text added, citation removed).
Legal Reasoning (Rader, TARANTO, Chen)
Representative Claim[A] shaped article comprising a substrate having on at least one portion of at least one surface a coating composition comprising an apolar, non-thermosetting fluid polymer having a glass transition temperature lower than -20° C. and a surface tension of less than 40 mN/m at a temperature above its glass transition temperature, and a filler comprising a plurality of fractions each comprising different size particles, and wherein said different fractions have different particle size distributions. Frans Nooren at *2 (text added).
Polypropylene as a "Filler"[Defendant's products contain] a mix of polybutene, polypropylene, and aluminum trihydrate [or] a mix of polybutene, polypropylene, and calcium carbonate. [In the district court] Nooren contended that the [filler] limitation is met by the combination of polypropylene and aluminum trihydrate [...] and by the combination of polypropylene and calcium carbonate. [...] [Nooren] noted that the specification identifies polypropylene [as a possible filler]. Id. at *3-5 (text added).
[1] No Basis for Limiting “a filler” to “one material.”
The district court did not rely on the claim term or the specification to draw its conclusion. Instead, the court based its one-material construction entirely on its conclusion that, during prosecution of the ’044 patent, “the examiner rejected the claims and requested amendments, citing [U.S. Patent No. 5,221,575 (Nakano)] and other prior art indicating that polymer-based coatings with two fillers have already been patented.” [...] This history does not establish exclusion of dual-material fillers. Applicants never said anything that states or implies such an exclusion. And even the examiner’s language regarding Nakano does not clearly focus on the number of materials in what constitutes a filler. Frans Nooren at *7 (text added).
[2] The District Court's Reasoning Does not State a Claim Construction of “a filler”
The court’s sole explanation [that polypropylene is not a filler] is the statement that, in the accused products, “[p]olypropylene mixes with polybutene to form a homogenous polymer mixture.” [...] [T]he claim-construction portion of the district court’s opinion includes nothing about “a filler” except that it must consist of only one material. The opinion thus does not explain the connection between its finding about a “homogenous polymer mixture” and any construction of “a filler.”  Frans Nooren at *9 (text added).
Vacating Summary Judgement - Insufficient Exploration in the Record and Examples Thereof
[As] it remains an open question whether polypropylene can be a filler, [...] [it] is [...] unnecessary to decide whether either the aluminum trihydrate or the calcium carbonate in the accused products can by itself meet that limitation. [...] If we agreed with the district court that each of those two conceded “fillers” itself has only one “fraction” meeting the limitation’s requirements, as a matter of law, we still could not affirm the judgment of non-infringement, because we leave open whether polypropylene might supply a second such “fraction.” [...] [W]e exercise our discretion not to proceed to the question of infringement as a matter of law. There has been insufficient exploration in the record, [to] supply “a meaningfully precise claim scope.” Frans Nooren at *11-12 (text added, citations removed).
Construction of the Parts of the Clause NeededIt is the usual (though not invariable) rule that [...] the construction of a clause as a whole requires construction of the parts, with meaning to be given to each part so as to avoid rendering any part superfluous. [...] The district court did not separately construe “fraction,” “different size particles,” and “different particle size distributions.” It is not clear that the court gave “different size particles” a meaning that avoids redundancy with “different particle size distributions.” Id. at *13 (text added, citations removed).
Possible Redefinition or Disclaimer in the Specification The claim language requires that each fraction [...] have [...] “different particle sizes” [and] its “particle size distribution” must differ from that of the other fractions that make up the required plurality. Given [...] the presumptive need to avoid redundancy with the first requirement, that requirement suggests that the mix of different-size particles within a fraction must show a pattern that differs from the pattern shown by the mix of different-size particles within the other fractions. [...] [T]he specification, in contrast to the claim’s requirement that an individual fraction have “different particle sizes” (a plural phrase), speaks of “each fraction having a different particle size” (a singular phrase) “and a different particle size distribution.” [...] The singular phrase [...] suggests, contrary to the claim language, a comparison of the particle sizes between fractions rather than within a fraction—so that there is no overlap in size (e.g., diameter) between particles in one fraction and particles in another. A proper claim-construction analysis would have to consider whether this disparity affects the proper construction, which depends on [...] the clarity of the claim language and whether a specification statement rises to the level of redefinition or disclaimer. Id. at *15 (text added, citation removed).
[T]he judgment of the district court is vacated, and the case is remanded for further proceedings consistent with this opinion. Frans Nooren at *18 (text added). 
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