MeadWestVaco Corp. v. Rexam Beauty & Closures, Inc. ( 2013 )

United States Court of Appeals
for the Federal Circuit
______________________
MEADWESTVACO CORPORATION AND
MEADWESTVACO CALMAR, INC.,
Plaintiffs-Appellees,
v.
REXAM BEAUTY AND CLOSURES, INC. AND
REXAM DISPENSING SYSTEMS S.A.S.,
Defendants-Appellants,
AND
VALOIS OF AMERICA, INC.,
Defendant-Appellant,
AND
VALOIS S.A.S.,
Defendant.
______________________
2012-1518, -1527
______________________
Appeals from the United States District Court for the
Eastern District of Virginia in No. 10-CV-0511, Judge
Gerald Bruce Lee.
______________________
Decided: September 26, 2013
______________________
2 MEADWESTVACO CORPORATION v. REXAM BEAUTY
ANTHONY J. VIOLA, Edwards Wildman Palmer, LLP, of
New York, New York, argued for plaintiffs-appellees.
With him on the brief were SCOTT D. WOFSY, of Stamford,
Connecticut and ADAM P. SAMANSKY, of Boston, Massa-
chusetts. Of counsel was PETER CUOMO, of Boston, Mas-
sachusetts.
GENE S. WINTER, St. Onge Steward Johnston &
Reens, LLC, of Stamford, Connecticut, argued for defend-
ant-appellant Rexam Beauty and Closures, Inc., et al.
With him on the brief were BENJAMIN J. LEHBERGER and
MICHAEL J. KOSMA.
CONSTANTINE L. TRELA, JR., Sidley Austin, LLP, of
Chicago, Illinois, argued for defendant-appellant Valois of
America, Inc. With him on the brief was HUGH A.
ABRAMS. Of counsel was SCOTT BORDER, of Washington,
DC.
______________________
Before PROST, O’MALLEY, and TARANTO, Circuit Judges.
PROST, Circuit Judge.
Rexam Beauty and Closures, Inc. and Rexam Dis-
pensing 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 nonob-
viousness; (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 in-
fringement of claims 15 and 19 of the ’132 patent. See
MeadWestVaco Corp. v. Rexam PLC, 807 F. Supp. 2d 537MEADWESTVACO CORPORATION v. REXAM BEAUTY 3
(E.D. Va. 2011) (“Claim Op.”), MeadWestVaco Corp. v.
Rexam PLC, 809 F. Supp. 2d 463 (E.D. Va. 2011) (“Summ.
J. Op.”); MeadWestVaco Corp. v. Rexam PLC, No. 1:10-cv-
511, ECF No. 597 (E.D. Va. April 12, 2012) (“Trial Op.”).
We find that the district court erred in granting summary
judgment of nonobviousness in favor of plaintiffs
MeadWestVaco Corporation and MeadWestVaco Calmar,
Inc. (collectively “MWV”), the assignees of the ’132
and ’819 patents, and therefore vacate the summary
judgment of nonobviousness. However, we affirm the
district court’s claim constructions, denial of Rexam’s
motion to exclude, and findings of infringement. We also
find that Rexam and Valois waived their indefiniteness
arguments by failing to pursue them at trial. According-
ly, we affirm-in-part, vacate-in-part, and remand for
further proceedings consistent with this opinion.
BACKGROUND
I. Technology
Rexam, Valois, and MWV are competitors in the per-
fume packaging industry. Each company designs, manu-
factures, and assembles custom-made “dispenser
assemblies,” i.e., spray pumps with an attached dip tube, 1
for dispensing fragrances. Each of these companies sells
spray pumps to its customers, fragrance houses such as
Estee Lauder and Chanel, who in turn incorporate the
pumps into bottles of perfume for sale to retailers and
consumers.
1 The dip tube extends from the pump into the liq-
uid fragrance in a perfume container and draws liquid
from the container into the pump.
4 MEADWESTVACO CORPORATION v. REXAM BEAUTY
A. MWV’s Patented Dip Tubes
MWV developed an “invisible” dip tube for perfumes
that appears to disappear when immersed in liquid,
enhancing the aesthetic appearance of the perfume bottle.
The inventors of the ’132 and ’819 patents investigated
various materials that had the properties necessary for an
invisible dip tube. In doing so, they recognized the need
for a transparent material with a refractive index 2 close
to that of the perfume liquid so that the tube would
appear invisible. For the most part, perfumes have a
refractive index of 1.37 to 1.39.
In 2003, Daikin Industries, a plastics supplier, began
promoting the fluoropolymer EFEP. 3 EFEP is a highly
transparent fluoropolymer with a refractive index of 1.38.
The inventors experimented with using EFEP, but their
original tubes were hazy and brittle. To improve the
tubes, they tried different production techniques, includ-
ing a quenching process. Quenching, which is typically
performed by immersing extruded plastic into a cool
water bath, is a well-known manufacturing technique.
Over the course of several months, the inventors opti-
mized their manufacturing processes to produce a dip
tube with their desired properties, which they called the
NoC® (pronounced “no-see”) tube. In 2005, they filed
patent applications claiming fluid pumps with invisible
dip tubes. The patent applications eventually issued as
the ’819 and ’132 patents. The ’132 patent is a continua-
tion of the ’819 patent. All of the claims of the ’819 patent
are specific to fragrance dispensers; some of the claims of
2 The refractive index of a material is a measure of
how much light bends as it passes through the material.
3 A polymer is commonly thought of as a plastic. A
fluoropolymer is a polymer that includes fluorine within
its chemical structure.
MEADWESTVACO CORPORATION v. REXAM BEAUTY 5
the ’132 patent are specific to fragrance dispensers and
others are directed to generic dispensers. See ’819 patent
col. 7 l. 40-col. 8 l. 65; ’132 patent col. 7 l. 24-col. 8 l. 59.
Claims 15 and 19 of the ’132 patent, the generic dis-
penser claims at issue, read:
15. A dispenser assembly for dispensing a liquid
comprising:
a transport assembly; and,
a tube connected to the transport assem-
bly;
wherein the tube consists essentially of an
extruded and quenched crystalline fluoro-
polymer 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.
19. The dispenser assembly of claim 15, wherein
the fluoropolymer is ethylene tetrafluoroethylene.
’132 patent col. 8 ll. 14-22, 56-57 (emphasis added).
B. Rexam’s V1 and V2 Tubes
After MWV began marketing the NoC® tube in late
2005, Rexam obtained a sample from one of its customers.
Rexam analyzed the sample and obtained the commercial-
ly available EFEP from Daikin. In May 2006, Rexam
launched its first invisible tube, the “V1” tube. In 2008,
after learning of MWV’s patent applications, and in
particular the claims’ crystallinity limitations, Rexam
worked to develop a tube with an XRD crystallinity high-
er than 13%. It eventually settled on blending together
different grades of EFEP to produce the “V2” tube, which
Rexam contends has an XRD crystallinity of greater than
13%. See Trial Op. at 24-26.
6 MEADWESTVACO CORPORATION v. REXAM BEAUTY
C. Valois’s “Old” and “New” Tubes
Valois learned about the NoC® tube from a customer
in March 2006. It then sent samples of the NoC® tube to
its tube supplier, who then began making EFEP tubes
using a water-quenching process. The water-quenched
tubes are referred to as the “Old” tubes. Once Valois
learned about MWV’s patent applications, it instructed its
supplier to investigate ways to design around the patents.
Eventually, Valois and the supplier concluded that ex-
truding the tubes without water quenching was the best
option. The redesigned “New” tube is cooled by running
the tube through an air chamber. In the bottom of the
chamber, below the tube, a pump recirculates chilled
water to maintain the air temperature in the chamber.
Summ. J. Op., 809 F. Supp. 2d at 471.
II. Procedural history
MWV brought suit against Valois and Rexam in May
2011, accusing each defendant of infringing the ’819
and ’132 patents. In response, Valois and Rexam counter-
claimed for declaratory judgments of noninfringement
and invalidity. On August 17, 2011, the district court
issued its claim construction opinion, construing seven
terms including “quenched,” “transparency,” “XRD crys-
tallinity,” and “crystalline content.” Claim Op., 807 F.
Supp. 2d 537. Thereafter the court decided various sum-
mary judgment motions filed by the parties. The court
granted MWV summary judgment of nonobviousness and
denied Rexam’s and Valois’s motions for summary judg-
ment of indefiniteness. Summ. J. Op., 809 F. Supp. 2d
463.
MWV waived its right to seek monetary damages, and
after a thirteen-day bench trial, the district court found
that Valois and Rexam did not infringe the asserted
perfume-specific claims of the ’819 and ’132 patents, but
did infringe the generic dispenser claims of the ’132
patent. Trial Op. at 36. The district court then entered a
MEADWESTVACO CORPORATION v. REXAM BEAUTY 7
permanent injunction against Valois of America, Inc. and
Rexam Beauty and Closures, Inc. MeadWestVaco Corp. v.
Rexam PLC, No. 1:10-cv-511, 2012 WL 2153165 (E.D. Va.
June 12, 2012) (“Inj. Op.”). Valois and Rexam appeal. We
have jurisdiction under 28 U.S.C. §§ 1292 and 1295.
DISCUSSION
This appeal presents a variety of issues. First, both
defendants argue that the district court erred in granting
summary judgment of nonobviousness. Second, Valois
argues that the court erred in construing the term
“quenched” and in finding that the “New” tubes are
quenched under the court’s or Valois’s construction.
Third, Valois also argues that the court erred in constru-
ing the term “transparency” and in finding infringement
under a correct construction. Fourth, Rexam argues that
the court erred in allowing MWV’s expert to testify on the
“XRD crystallinity” limitation and in finding infringement
based on XRD crystallinity. Finally, both Valois and
Rexam argue that the district court erred in its opinion
denying their motions for summary judgment of indefi-
niteness. We address each of these issues in turn.
I. Obviousness
Prior to trial, MWV moved for, and the district court
granted, summary judgment of nonobviousness of the
asserted claims of both patents. Summ. J. Op., 809 F.
Supp. 2d at 474. Valois and Rexam both opposed sum-
mary judgment, arguing that material issues of fact
necessitated a trial.
A patent claim is invalid as obvious “if the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter would have
been obvious at the time the invention was made to a
person having ordinary skill in the art to which said
subject matter pertains.” 35 U.S.C. § 103(a). Obvious-
ness is a question of law based on specific factual findings,
8 MEADWESTVACO CORPORATION v. REXAM BEAUTY
including (1) the scope and content of the prior art;
(2) differences between the claimed invention and the
prior art; (3) the level of ordinary skill in the art; and
(4) any relevant secondary considerations, including
commercial success, long-felt but unsolved needs, and the
failure of others. Graham v. John Deere Co., 383 U.S. 1,
17-18 (1966). To establish invalidity, the supporting facts
must be shown by clear and convincing evidence. WMS
Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355
(Fed. Cir. 1999).
Summary 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).
The district court found that Valois and Rexam “can-
not establish that Plaintiffs’ patents are obvious through
clear and convincing evidence because the Graham factors
weigh in favor of MWV.” Summ. J. Op., 809 F. Supp. 2dat 474. Notably, the court’s obviousness analysis repeat-
edly 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. Id. at 475 (“[F]luoropolymers were
unsafe for use in personal beauty products because such
materials were thought to be carcinogenic.”). The court
also credited evidence advanced to show long-felt need
and commercial success specific to the perfume industry.
Id. (“Plaintiffs fulfilled a need because the visibility of a
dip tube detracted from the overall aesthetics of a per-
fume bottle for perfume manufacturers. Plaintiffs have
won industry-wide acclaim for the invisible dip
MEADWESTVACO CORPORATION v. REXAM BEAUTY 9
tube . . . .”). Finally, the court pointed to evidence that
Valois and Rexam reverse-engineered their own invisible
tubes from MWV’s NoC® tube. Id. (“Both Defendants
attempted to create an invisible dip tube, but succeeded
only after . . . Defendants obtained samples of MWV’s
tube from perfume manufacturers.”).
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 the assert-
ed fragrance-specific claims. 4 Obviousness, like other
grounds of invalidity, must be analyzed on a claim-by-
claim basis. Ortho Pharm. Corp. v. Smith, 959 F.2d 936,
942 (Fed. Cir. 1992) (concluding that all grounds of inva-
lidity must be evaluated against individual claims, as
required by the plain language of 35 U.S.C. § 282). 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 commen-
surate in scope with the claims which the evidence is
offered to support.’” Asyst Techs., Inc. v. Emtrak, Inc., 544
F.3d 1310, 1316 (Fed. Cir. 2008) (quoting In re Grasselli,
713 F.2d 731, 743 (Fed. Cir. 1983)). MWV did not present
evidence teaching away from using EFEP in general
purpose liquid-dispenser tubing or showing that EFEP
4 While it is true that at the summary judgment
phase the court had not yet concluded that the fragrance-
specific claims were not infringed, Valois called claim 15
to the court’s attention by separately arguing that claim
15 was anticipated by various Daikin sales presentations
related to EFEP.
10 MEADWESTVACO CORPORATION v. REXAM BEAUTY
tubing enjoyed commercial success or met any long-felt
need. 5
In addition to not analyzing claims 15 and 19 sepa-
rately 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. See
Transocean Offshore Deepwater Drilling, Inc. v. Maersk
Contractors USA, Inc., 617 F.3d 1296, 1305 (Fed. Cir.
2010) (reversing grant of summary judgment of nonobvi-
ousness for failure to view facts in the light most favora-
ble to the nonmoving party). For example, Valois
presented evidence contradicting MWV’s claims of com-
mercial 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, bio-
medical 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 from
5 That is not to say that Valois and Rexam will nec-
essarily prevail on obviousness on remand. MWV has
argued that the only Daikin EFEP tubing disclosed in the
prior art is a multilayer tube. J.A. 4553, 4561, 6527.
Claim 15 requires a tube “consisting essentially of” a
fluoropolymer having specific properties, and dependent
claim 19 limits the fluoropolymer to ethylene tetrafluoro-
ethylene. At trial, MWV will have the opportunity to
argue that it would not have been obvious to one of ordi-
nary skill in the art to make a tube “consisting essentially
of” extruded and quenched material meeting the claims’
requirements.
MEADWESTVACO CORPORATION v. REXAM BEAUTY 11
marketing and business executives, and presenting doc-
uments that Valois’s and Rexam’s engineers did not
perceive a carcinogen risk).
In sum, Valois’s evidence created material issues of
fact inappropriate for resolution on summary judgment,
which necessitates a remand. Because the district court
erred in granting summary judgment of nonobviousness,
we vacate and remand for a trial on that issue.
II. Quenching
Claim 15 requires an “extruded and quenched” crys-
talline fluoropolymer tube. Valois disputes the construc-
tion of “quenched” and the district court’s finding that
Valois’s “New” tube is quenched. 6
A. Claim Construction
Claim construction is a question of law reviewed de
novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,
1451 (Fed. Cir. 1998) (en banc). The words of the claim
‘‘are generally given their ordinary and customary mean-
ing,’’ which ‘‘is the meaning that term would have to a
person of ordinary skill in the art in question at the time
of the invention.’’ Phillips v. AWH Corp., 415 F.3d 1303,
1312-13 (Fed. Cir. 2005) (en banc).
Below, Valois and MWV submitted competing con-
structions for the term “quenched.” Valois proposed “a
process by which a plastic tube is subjected to rapid
cooling by immersion into a cooling liquid” and MWV
proposed “rapidly cooled.” Claim Op., 807 F. Supp. 2d at
541. The district court adopted MWV’s construction,
finding that “rapidly cooled” is consistent with the ordi-
6 Valois conceded that the water-quenched “Old”
tube infringes the ’132 patent. Summ. J. Op., 809 F.
Supp. 2d at 471.
12 MEADWESTVACO CORPORATION v. REXAM BEAUTY
nary meaning of quenched and that nothing in the pa-
tents limited the cooling medium to a liquid instead of air.
Id. Valois now argues that the district court should have
construed quenching as “rapid cooling by immersion in a
cooling medium.” Valois Br. 51. 7
As noted by the district court at the claim construc-
tion stage, “[t]he term ‘immersion’ is immaterial because
the tube can either be immersed in either air or water;
the cooling medium restriction is the material argument
set forth by Valois.” Claim Op. at 541 n.1. We agree with
the district court that “quenching” is not limited to “rapid
cooling by immersion into a cooling liquid” but encom-
passes rapid cooling “by any cooling medium.” Id. at 541.
Despite Valois’s protests, there is no dispute that the
“New” tube is “immersed” in air; Valois’s dispute is over
whether the air in the tank is a “cooling medium,” an
issue relevant to infringement, not claim construction.
We therefore affirm the court’s construction of “quenched”
as “rapidly cooled.”
B. Infringement
On appeal from a bench trial, this court reviews the
district court’s conclusions of law de novo and findings of
fact for clear error. Brown & Williamson Tobacco Corp. v.
Philip Morris Inc., 229 F.3d 1120, 1123 (Fed. Cir. 2000).
A determination of infringement, whether literal or under
the doctrine of equivalents, is a question of fact and is
7 On appeal, Valois also argues that the district
court “redefined” the term “quenched” post-trial. Valois
Br. 53. We are not persuaded. The court was merely
comparing different examples of quenching in its in-
fringement analysis and providing further support of its
decision to credit MWV’s expert over Valois’s, not adopt-
ing a new construction of the term “quenched.” See Trial
Op. at 46.
MEADWESTVACO CORPORATION v. REXAM BEAUTY 13
reviewed under the clearly erroneous standard. Golden
Blount, Inc. v. Robert H. Peterson Co., 365 F.3d 1054,
1058 (Fed. Cir. 2004).
Applying the construction of quenched used at trial,
“rapidly cooled,” we find no clear error in the district
court’s finding of infringement.
Valois’s primary argument is that the “New” tube is
“freely extruded into warm ambient air,” Valois Br. 52,
and cools substantially more slowly than the quenching
process disclosed in the ’132 patent.
First, we reject Valois’s position that the air surround-
ing the extruded tube is merely “warm ambient air.” As
discussed above, Valois’s “New” tube is extruded and then
passed through a “‘cooling tank,’ which uses a constant
flow of chilled water that removes heat from the tube via
the air in the tank.” Summ. J. Op., 809 F.Supp.2d at 471.
We also note that although the air in the tank is hotter
than ambient air, the water used in the quenching pro-
cess disclosed in the ’132 patent is kept at 80ºF to
90ºF. ’132 patent col. 5 ll. 7-17. This is essentially the
same temperature as the air in Valois’s chamber.
Second, we note that “rapidly cooled” does not require
a specific cooling rate. Trial Op. at 47. We see no clear
error in the district court’s conclusion that a tube is
“rapidly cooled” when it cools from a temperature of 500
degrees to 75 degrees in 3.5 seconds. Summ. J. Op., 809
F. Supp. 2d at 481 (denying Valois’s motion for summary
judgment of noninfringement).
Because Valois has failed to point to any clear error in
the district court’s infringement analysis regarding
“quenching,” we affirm the court’s finding that Valois’s
“New” tube infringes claims 15 and 19 of the ’132 patent.
14 MEADWESTVACO CORPORATION v. REXAM BEAUTY
III. Transparency
Claim 15 requires a tube having “a transparency of
about 80% or more.” Valois argues that the district court
erred in construing the term “transparency” and that
under Valois’s proposed construction MWV did not prove
infringement. Valois Br. 55-56.
Valois argues that “transparency” should be construed
as “a measurement of the percent transmission of light
having a wavelength of 500 microns passing through a
3 mm thick sample,” based on an alleged definition in the
specification. Claim Op., 807 F. Supp. 2d at 542; ’132
patent col. 4 ll. 33-36. The district court rejected Valois’s
argument and construed “transparency” using the Cam-
bridge Dictionary of American English’s definition of the
adjective ‘‘transparent,’’ to wit, “allowing visible light
through so that objects can be clearly seen through it.”
Claim Op., 807 F. Supp. 2d at 542.
MWV defends the district court’s plain meaning con-
struction and accuses Valois of attempting to limit the
claims to a specific embodiment. See Phillips, 415 F.3d at
1323.
We agree with MWV that the ’132 patent does not de-
fine transparency, and that the district court correctly
construed the term using its plain meaning. See Claim
Op., 807 F. Supp. 2d at 542 (finding that the court’s
construction “is the ordinary and plain meaning of the
term.”). The passage of the specification cited by Valois is
not a special definition. The passage refers to “one em-
bodiment” of the dip tube, and other portions of the speci-
fication discussing transparency are not tied to Valois’s
purported definition. Compare ’132 patent col. 4 l. 33
(“according to one embodiment”) with col. 2 ll. 5-17 (dis-
cussing “substantially transparent” perfume containers)
and col. 5 ll. 6-25 (discussing “high transparency” tubes).
MEADWESTVACO CORPORATION v. REXAM BEAUTY 15
Because the district court did not err in construing
the term “transparency,” we need not address Valois’s
noninfringement arguments based on its overly narrow
construction.
IV. XRD Crystallinity
Claim 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 argu-
ments.
XRD testing is one method of measuring the crystal-
line 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. The X-ray
scattering is dependent on the atomic arrangement within
the sample, and a more ordered pattern indicates a more
ordered atomic structure. X-rays that diffract off of a
crystalline polymer produce a ring-like pattern on the
detection surface. X-rays that diffract off of an amor-
phous, or noncrystalline, structure appear as a “relatively
broad amorphous ‘halo’” on the detection surface. Trial
Op. at 18. The crystalline content of the polymer is then
measured by comparing the relative intensities of the
diffraction patterns.
The construction of the terms “XRD crystallinity” and
“crystalline content” is not in dispute. Rexam and MWV
stipulated to construing the XRD terms as “crystallinity
as measured by x-ray diffraction (XRD) using at least the
XRD characterization parameters identified in the ’132
patent at column 4, line 66 to column 5, line 6.” Claim
Op., 807 F. Supp. 2d at 543. The parameters referenced
in the patent are:
16 MEADWESTVACO CORPORATION v. REXAM BEAUTY
Voltage: 45 kV, Current: 40 mA, XRD Machine:
Bruker D8 Discover w/Gadds Detector, 0.3 mm
slit, 0.3 mm collimation, Cu Radiation, Goebel
Mirror (parallel beams), 0.5 mm oscillation along
tube length, 5 frames (~15°/frame), 72 sec-
onds/frame, Omega=7°, midpoint for detection
frames=14°, 29°, 44°, 59°, 74°.
’132 patent col. 5 ll. 1-6. The parties agree that the pa-
rameters listed in the ’132 patent are inadequate to fully
describe an XRD test. For example, “[t]he patent specifi-
cation does not provide the sample-to-detector distance,
nor does it specify the software for the analysis of the
XRD data and the calculation of the XRD crystallinity.”
Trial Op. at 22.
At trial on the issue of infringement, Rexam and
MWV engaged in a battle of the experts on XRD crystal-
linity. 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. Unsur-
prisingly, 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.
On appeal, Rexam argues that the district court erred
in allowing testimony from MWV’s expert, Dr. Reiben-
spies, because he did not follow all of the testing parame-
ters set forth in the ’132 patent. Rexam also argues that
the court erred in finding infringement based on Dr.
Reibenspies’s testimony. Finally, Rexam argues that the
XRD crystallinity terms, as construed, are indefinite. We
MEADWESTVACO CORPORATION v. REXAM BEAUTY 17
address Rexam’s first two arguments below. Indefinite-
ness is addressed at Part V, infra.
A. Expert Testimony
Rexam asked the district court to exclude infringe-
ment testimony from Dr. Reibenspies. MeadWestVaco
Corp. v. Rexam PLC, 1:10-cv-511, ECF No. 411 (E.D. Va.
Aug. 22, 2011) (Rexam Mot. to Exclude). The court al-
lowed the testimony, finding it “relevant and admissible.”
J.A. 7712. Here, 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. Rexam Br. 55;
see also Rexam Mot. to Exclude 3 (citing cases precluding
testimony which tends to contradict a court’s claim con-
struction). MWV counters that any differences between
Dr. Reibenspies’s testing and the claims goes to proof of
infringement, not admissibility. MWV Br. 59.
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. United States
v. White, 405 F.3d 208, 212 (4th Cir. 2005); Malone v.
Microdyne Corp., 26 F.3d 471, 480 (4th Cir. 1994) (review-
ing ruling on motion in limine for abuse of discretion).
We agree with MWV that Rexam’s arguments go to
infringement and not admissibility. Dr. Reibenspies’s
testimony was not an attempt to apply a new claim con-
struction to the XRD crystallinity terms. Dr. Reibenspies
opined that using his testing parameters, which differed
slightly from the claim construction, he was able to con-
clude that the V1 and V2 tubes infringed the ’132 patent
when applying the court’s construction. Dr. Reibenspies’s
deviations from the claim construction, discussed in more
detail below, gave Rexam an opportunity to cast doubt
18 MEADWESTVACO CORPORATION v. REXAM BEAUTY
upon his infringement conclusions, which Rexam did
through cross-examination and opposing expert testimo-
ny. But it did not make Dr. Reibenspies’s testimony
legally irrelevant. Rexam does not raise any other basis
for excluding Dr. Reibenspies’s testimony. Because
Rexam failed to show that the district court abused its
discretion in allowing Dr. Reibenspies to testify, we affirm
the court’s denial of Rexam’s motion to exclude.
B. Infringement
Rexam’s noninfringement case centered solely on the
XRD crystallinity limitation. The district court found
that Rexam’s V1 and V2 tubes had an XRD crystallinity of
less than 13%, and therefore infringed claims 15 and 19 of
the ’132 patent. Trial Op. at 57.
As discussed above, the XRD crystallinity limitation
came down to a battle of the experts. The district court
credited MWV’s expert and found Rexam’s expert unreli-
able. Trial Op. at 39-40. The trial court is given “broad
discretion in determining credibility because the court
saw the witnesses and heard their testimony.” Energy
Capital Corp. v. United States, 302 F.3d 1314, 1329 (Fed.
Cir. 2002). Rexam makes no effort to dislodge the court’s
credibility findings. Instead, Rexam urges us to disregard
Dr. Reibenspies’s testimony as legally irrelevant to in-
fringement. We decline to do so.
The court found that Dr. Reibenspies did not use the
0.3 mm slit, Goebel mirror or oscillator as required by the
claim construction. Trial Op. at 41. At trial, Rexam
cross-examined Dr. Reibenspies on each of differences
between his test protocol and the claims. 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. See MWV
MEADWESTVACO CORPORATION v. REXAM BEAUTY 19
Br. 56 (citing Dr. Reibenspies’s testimony); Trial Op. at
42. 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 oscilla-
tion. Trial Op. at 41.
The court found that Dr. Reibenspies’s testing “devia-
tions were insignificant and could not have substantially
affected the test results.” Trial Op. at 42. Rexam coun-
ters that “MWV presented no evidence quantifying how
much the differences impacted the XRD crystallinity
results.” Rexam Reply Br. 12. While it is true that MWV
did not quantify the differences, MWV did present testi-
mony 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 conclu-
sion. We find no reversible error in the district court’s
analysis, and therefore affirm the finding of infringement.
V. Indefiniteness
Rexam and Valois moved for summary judgment of
indefiniteness based on the terms “XRD crystallinity” and
“quenched,” respectively. The district court denied both
motions, stating that “Plaintiff’s patent is not indefinite
as a matter of law . . . .” Summ. J. Op., 809 F. Supp. 2d at
478 (XRD crystallinity), 484 (quenched).
The district court’s holding that the “patent is not in-
definite as a matter of law” can be interpreted in one of
two ways. First, the court could mean that the moving
party failed to meet the summary judgment standard. In
other words, they failed to show that the patents were
“indefinite as a matter of law.” On the other hand, the
court could mean that “as a matter of law the claims are
not indefinite,” sua sponte granting summary judgment of
definiteness in favor of MWV.
20 MEADWESTVACO CORPORATION v. REXAM BEAUTY
We construe the court’s denial of Rexam’s motion for
summary judgment of indefiniteness as a denial for the
failure to meet the summary judgment standard. The
court listed six reasons for its ruling on this point, the
concluding one being that “there are material issues of
fact remaining for the jury, and it will be the finder of
fact’s responsibility to determine whether there was
sufficient information to test for crystallinity.” Summ. J.
Op. at 477-78. 8
This reading is also supported by the parties’ sum-
mary judgment briefing on the issue. MWV’s Brief in
Opposition Summary Judgment begins by noting “MWV
need only show that there are genuine issues of material
fact which would preclude a finding by this Court that the
patents are indefinite as a matter of law.” MeadWestVaco
Corp. v. Rexam PLC, No. 1:10-cv-511, ECF No. 318 at 7
(E.D. Va. June 27, 2011) (MWV Br. in Opp. to Summ. J.
by Rexam). MWV’s argument section begins with the
statement that “[t]here is no question that there are
disputed facts . . . that preclude summary judgment.” Id.
at 16. MWV’s conclusion contains a similar statement.
Id. at 33 (“[T]here are numerous genuine fact issues that
8 We also note that the district court seems to have
relied heavily on the proposition that the claims “are
amenable to construction because the parties have al-
ready stipulated to their meaning.” Summ. J. Op., 809 F.
Supp. 2d at 478-480. This is not an accurate statement of
our law on indefiniteness. “The fact that [a patentee] can
articulate a definition supported by the specification . . .
does not end the inquiry. Even if a claim term’s definition
can be reduced to words, the claim is still indefinite if a
person of ordinary skill in the art cannot translate the
definition into meaningfully precise claim scope.” Halli-
burton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244,
1251 (Fed. Cir. 2008).
MEADWESTVACO CORPORATION v. REXAM BEAUTY 21
preclude a finding that Rexam has met its heavy burden
of proving indefiniteness as a matter of law.”).
We reach the same resolution regarding the court’s
denial of Valois’s motion for summary judgment. Here,
the court again stated that “Plaintiffs’ patent is not indef-
inite as a matter of law . . . .” Summ. J. Op., 809 F. Supp.
2d at 484. The court identified four reasons for denying
the motion “after viewing the evidence in the light most
favorable to the nonmovant.” Id. MWV, not Valois, was
the nonmoving party. If the court were sua sponte grant-
ing summary judgment to MWV, it would have been
legally erroneous to view the facts in favor of MWV.
Thus, we can only conclude that the court again found
that Valois failed to meet the summary judgment stand-
ard and left the issue open for trial. 9
9 Regardless of waiver, on appeal, Valois’s primary
argument in support of indefiniteness is that the district
court’s construction “‘does not restrict the actual cooling
rate or cooling medium.’” Valois Br. 60 (quoting Trial Op.
at 47). The district court however is not required to place
a numerical limit (i.e., a cooling rate) on the claims where
it is not warranted by the specification. Exxon Research
& Eng’g Co. v. United States, 265 F.3d 1371, 1381 (Fed.
Cir. 2001). Similarly, the court correctly declined to limit
the “cooling medium” because the specification did not so
require. Valois’s surprise that its design-around failed
does not render the claim indefinite. SmithKline Bee-
cham Corp. v. Apotex Corp., 403 F.3d 1331, 1340-41 (Fed.
Cir. 2005) (“The test for indefiniteness does not depend on
a potential infringer’s ability to ascertain the nature of its
own accused product to determine infringement, but
instead on whether the claim delineates to a skilled
artisan the bounds of the invention.”).
22 MEADWESTVACO CORPORATION v. REXAM BEAUTY
Although the parties proffered Findings of Fact and
Conclusions of Law suggesting that the indefiniteness
issue was final, the district court did not adopt those
findings. Following the bench trial, the district court
never entered final judgment on the issue of indefinite-
ness, suggesting that it believed the matter was not
pursued by either party during trial and was abandoned.
At the summary judgment stage, MWV clearly believed
there were issues to be resolved by the fact-finder, and the
district court appeared to agree. Because it is improper to
appeal a denial of summary judgment, see, e.g., Glaros v.
H.H. Robertson Co., 797 F.2d 1564, 1573 (Fed. Cir. 1986)
(“a denial of summary judgment is not properly reviewa-
ble on an appeal from the final judgment entered after
trial”), we conclude that Rexam and Valois waived the
issue of indefiniteness by failing to raise it at the bench
trial.
CONCLUSION
For the reasons set forth above, we vacate the district
court’s grant of summary judgment of nonobviousness;
affirm the district court’s claim constructions, denial of
Rexam’s motion to exclude, and findings of infringement;
find that indefiniteness was waived; and remand for
further proceedings consistent with this opinion.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED