E.I. Du Pont De Nemours & Co. v. MacDermid Printing Solutions, L.L.C. ( 2016 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
E.I. DU PONT DE NEMOURS AND COMPANY,
Plaintiff-Appellant
v.
MACDERMID PRINTING SOLUTIONS, L.L.C.,
Defendant-Appellee
______________________
2015-1777
______________________
Appeal from the United States District Court for the
District of New Jersey in No. 3:06-cv-03383-MLC-TJB,
Judge Mary L. Cooper.
______________________
Decided: August 19, 2016
______________________
CHARLES E. LIPSEY, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Reston, VA, argued for plaintiff-
appellant. Also represented by HOWARD WARREN LEVINE,
AARON GLEATON CLAY, Washington, DC; MARY K.
FERGUSON, Boston, MA; JENNIFER SWAN, JEFFREY DANIEL
SMYTH, Palo Alto, CA; MATTHEW JOSEPH RICCIARDI,
CHARLES D. OSSOLA, Vinson & Elkins LLP, Washington,
DC.
2 E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS.
JOHN RICHARD HORVACK, JR., Carmody Torrance San-
dak & Hennessey LLP, New Haven, CT, argued for de-
fendant-appellee. Also represented by FATIMA LAHNIN.
______________________
Before PROST, Chief Judge, PLAGER and LOURIE, Circuit
Judges.
LOURIE, Circuit Judge.
E.I. du Pont de Nemours & Co. (“DuPont”) appeals
from the decision of the United States District Court for
the District of New Jersey granting summary judgment
that claims 1, 6, 22, 30, 33, 36, 39–41, and 48 of U.S.
Patent 6,773,859 (“the ’859 patent”) are invalid as obvi-
ous, and that claims 1, 3–4, and 7–8 of U.S. Patent
6,171,758 (“the ’758 patent”), as construed by the district
court, were not infringed by MacDermid Printing Solu-
tions, L.L.C. (“MacDermid”). See E.I. du Pont de Nemours
& Co. v. MacDermid Printing Sols., L.L.C., No. 06-3383,
2014 WL 4657300 (D.N.J. Sept. 17, 2014) (“Summary
Judgment Order”); E.I. du Pont de Nemours & Co. v.
MacDermid Printing Sols., L.L.C., No. 06-3383, 2010 WL
988549 (D.N.J. Mar. 15, 2010) (“Claim Construction
Order”). Because the district court did not err in granting
summary judgment of invalidity of the ’859 patent or in
granting summary judgment of noninfringement of the
’758 patent, we affirm.
BACKGROUND
A
DuPont owns the ’859 patent, directed to a process of
making a flexographic printing plate used to print images
on flexible materials. The ’859 patent claims priority
from a provisional application filed on March 6, 2001, ’859
patent, Certificate of Corr. dated July 26, 2005; see also
E.I. du Pont de Nemours & Co. v. MacDermid Printing
Sols., L.L.C., 525 F.3d 1353, 1362–63 (Fed. Cir. 2008), and
E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS. 3
was considered by the district court to have a date of
invention on or before June 9, 1999, Summary Judgment
Order, 2014 WL 4657300, at *9.
A flexographic printing plate bearing the image to be
printed is typically prepared from an “imaging” process
and a “development” process. As shown below, a flexo-
graphic printing plate consists of multiple layers, includ-
ing a base support layer and a photopolymerizable layer,
which contains photoinitiators, monomers, and elastomer-
ic binders. During the imaging process, selected areas of
the photopolymerizable layer are exposed to ultraviolet
(“UV”) light, which causes the exposed areas to polymer-
ize. The unpolymerized material is then removed in the
development process, leaving the polymerized material on
the plate, which forms the relief image to be printed.
Joint App. (“J.A.”) 3692.
As of June 1999, there existed two methods for imag-
ing: analog and digital. Summary Judgment Order, 2014
WL 4657300, at *16. Analog imaging was first developed
in the 1950s. In analog imaging, a sheet bearing a nega-
tive of the image to be printed is placed on top of the
photopolymerizable layer. A transparent coversheet is
then placed over the negative. The plate is then exposed
to UV light, which passes through the transparent areas
of the negative and causes the exposed portions of the
photopolymerizable layer to polymerize. The opaque
areas of the negative block the UV light and thus prevent
the photopolymerizable layer underneath those areas
from polymerizing. After the removal of the coversheet
and negative, the unpolymerized portions of the photo-
polymerizable layer are removed in the development
4 E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS.
process, leaving only the relief image. The analog imag-
ing process is illustrated below.
J.A. 3692–93.
In 1992, DuPont developed the digital imaging tech-
nology, in which a thin, opaque infrared ablation layer is
applied over the photopolymerizable layer. That ablation
layer can block UV light, but can be removed by an infra-
red laser. Thus, one difference between a digital plate
and an analog plate is that a digital plate has an ablation
layer. In digital imaging, the image to be printed is
digitized and stored in a computer. The computer then
guides an infrared laser to imagewise remove, or ablate,
E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS. 5
select portions of the ablation layer. That process creates
an in-situ mask directly on top of the photopolymerizable
layer. The plate is then exposed to UV light, and the
openings in the in-situ mask allow the UV light to pass
through, such that the exposed portions of the photopoly-
merizable layer undergo polymerization. The unpoly-
merized material, together with the ablation layer above
it, is then removed in the development process. The
digital imaging process is illustrated below.
J.A. 3697–99.
The “development” process follows the “imaging” pro-
cess. As of June 1999, there existed the following devel-
opment techniques: solvent, water, air knife, and thermal.
6 E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS.
Summary Judgment Order, 2014 WL 4657300, at *16.
According to DuPont, solvent and thermal development
methods have been known since at least the 1960s.
Appellant’s Br. 2. The solvent development method uses
chemical solvents to wash and remove the unpolymerized
portions of the photopolymerizable layer. According to
DuPont, although solvent development requires the use of
chemical solvents, which posed certain environmental
risks, the combination of analog imaging and solvent
development has been widely used for decades. Id. at 11–
12. When DuPont developed digital imaging in the 1990s,
it initially used the solvent method to develop the digital-
ly imaged plates. That combination of digital imaging
and solvent development is described in DuPont’s U.S.
Patent 5,262,275 (“Fan”), J.A. 2421–29, which is prior art
to the ’859 patent.
In contrast, the thermal development method uses
heat to soften or liquefy the unpolymerized portions of the
photopolymerizable layer, and then uses absorbent mate-
rial, such as paper or felt, to blot away the unpolymerized
material. The prior art, including U.S. Patent 5,175,072
(“Martens”), J.A. 2182–99, describes the combination of
analog imaging and thermal development.
DuPont’s ’859 patent claims a process for making a
flexographic printing plate that combines digital imaging
and thermal development techniques. Claim 30 is illus-
trative of the ’859 patent claims at issue in this appeal.
Reproduced in independent form, claim 30 reads:
30. A process for making a flexographic printing
plate comprising:
1) providing a photosensitive element com-
prising: at least one photopolymerizable
layer on a support comprising an elasto-
meric binder, at least one monomer, and a
photoinitiator, and at least one thermally
removable layer disposed above the photo-
E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS. 7
polymerizable layer, wherein the thermal-
ly removable layer is
(a) an actinic radiation opaque layer com-
prising (i) at least one infrared absorb-
ing material, (ii) a radiation opaque
material, wherein (i) and (ii) can be
the same or different, and at least one
binder having a softening or melting
temperature less than 190º C;
2) imagewise exposing the photopolymeriza-
ble layer to actinic radiation forming poly-
merized portions and unpolymerized
portions; and
3) thermally treating the element of step 2)
by heating to a temperature sufficient to
remove the thermally removable layer and
to remove the unpolymerized portions of
the photopolymerizable layer and form a
relief.
’859 patent col. 43 ll. 14–40, col. 46 ll. 26–27 (emphases
added). Thus, step 1(a) of the claimed method requires a
digital plate with an ablation layer that is thermally
removable. Step 2 refers to the digital imaging process,
and step 3 refers to the thermal development process, in
which both the unpolymerized photopolymerizable mate-
rial and the ablation layer above it are thermally re-
moved. According to DuPont, it commercialized its digital
thermal technology as Digital Cyrel® FAST in 2001.
Appellant’s Br. 21.
B
DuPont also owns the ’758 patent, directed to a flexo-
graphic printing plate having a very low degree of distor-
tion during thermal development, the plate comprising a
“dimensionally stable” polymeric substrate. ’758 patent,
at [57] (abstract); id. col. 1 ll. 51–60. The ’758 patent
8 E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS.
issued in January 2001 from an application filed in 1994.
Claim 1 reads as follows:
1. A photosensitive plate suitable for use as a
flexographic printing plate comprising a
dimensionally stable, flexible, polymeric sub-
strate and a photosensitive elastomer layer,
wherein the plate has a thermal distortion in
both the machine and the transverse direc-
tions which is less than 0.03% when the plate
is exposed to actinic radiation and, after ex-
posure, is developed at temperatures between
100 and 180º C.
Id. col. 8 ll. 18–25 (emphases added). Claims 3–4 and 7–8
all depend, directly or indirectly, from claim 1.
The specification of the ’758 patent teaches that the
dimensional stability of the polymeric substrate “may be
controlled through a special annealing process,” id. col. 2
ll. 56–59 (emphasis added), and then describes the an-
nealing process in detail, id. col. 2 l. 59–col. 3 l. 40. The
specification also describes four examples, in which all of
the annealed plates showed less thermal distortion than
the unannealed control plates. Id. col. 5 l. 26–col. 7 l. 67.
Moreover, the specification teaches that the substrate
“optionally may be surface treated for better adhesion”
and cites two prior art patents as disclosing such an
optional adhesive bonding process. Id. col. 3 l. 66–col. 4
l. 5 (emphasis added). During prosecution, the patentee
relied on the special annealing process, and characterized
it as “critical” and “important” in order to overcome
inherent anticipation and obviousness rejections. E.g.,
J.A. 2303–04, 2346–47, 2348, 2365, 2367.
C
In April 2006, DuPont sued MacDermid in the United
States District Court for the District of Colorado, alleging
that MacDermid infringed the ’859 and ’758 patents.
E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS. 9
DuPont, 525 F.3d at 1355; Summary Judgment Order,
2014 WL 4657300, at *1. In July 2006, the case was
transferred from the District of Colorado to the District of
New Jersey. DuPont, 525 F.3d at 1355.
The district court construed the “dimensionally sta-
ble” limitation in claim 1 of the ’758 patent. Claim Con-
struction Order, 2010 WL 988549, at *5–9. The parties
disputed whether “dimensionally stable” should be con-
strued as requiring the “special annealing process” de-
scribed in the ’758 patent, and the court agreed with
MacDermid that “dimensionally stable” is so limited. Id.
at *5, *7. The court reasoned that the specification “re-
peatedly highlights the importance of annealing” in
achieving the claimed dimensional stability, and that
during prosecution, the applicants “repeatedly empha-
sized the whole notion of annealing” in order to overcome
prior-art-based rejections. Id. at *7. The court therefore
adopted MacDermid’s proposed construction of “dimen-
sionally stable,” which is:
A flexible polymeric substrate whose dimensional
stability has been controlled through a special an-
nealing process, namely an annealing process
that: (1) is in addition and subsequent to the heat
treating steps associated with manufacturing the
polymeric film, (2) is not the process of bonding
the photosensitive elastomer layer to the polymer-
ic substrate, and (3) comprises: (i) heating the
substrate to a temperature above its glass transi-
tion temperature but below its melting tempera-
ture and at or greater than the temperature to
which the substrate is later subjected during
thermal development, (ii) at tensions of less than
200 psi, and (iii) for a time greater than the time
required to bring the film to the annealing tem-
perature, such that a specially annealed substrate
has less thermally induced distortion than a non-
specially annealed substrate.
10 E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS.
Id. at *5, *9.
MacDermid then filed motions for summary judgment
of, inter alia, invalidity of the ’859 patent and nonin-
fringement of the ’758 patent. The district court granted
summary judgment in favor of MacDermid on both issues.
Summary Judgment Order, 2014 WL 4657300, at *1.
The district court granted summary judgment that
claims 1, 6, 22, 30, 33, 36, 39–41, and 48 of the ’859 patent
would have been obvious over the cited prior art, includ-
ing Martens and Fan. 1 Id. at *9–20. The court found that
Martens teaches a process for developing an analog plate
using heat, id. at *10, and that Fan “was the first digital
imaging patent,” which teaches developing a digital plate
using solvents, id. at *11. The court found that the pro-
cess claimed in the ’859 patent utilizes not only “the same
technology and processes pertaining to digital imaging” as
disclosed in Fan, but also “the same process of thermal
development” as disclosed in Martens. Id. at *13.
The district court then found that there were “several
reasons that would have prompted a person of ordinary
skill to combine digital imaging technology and thermal
development technology in the same way as the ’859
patent.” Id. at *16. In particular, the court found that:
1 In the district court, MacDermid also cited the fol-
lowing patent references to support its obviousness mo-
tion: (1) European Patent EP 0 741 330, U.S. Patent
5,888,697, and U.S. Patent 5,925,500, as purportedly
teaching digital imaging; and (2) European Patent EP
0 665 471, International Patent Application Publication
WO96/14603, U.S. Patent 3,264,103, U.S. Patent
5,279,697, U.S. Patent 5,322,761, and U.S. Patent
5,925,500, as purportedly teaching thermal development.
J.A. 2937–38. But the district court primarily relied on
Fan and Martens in its obviousness analysis.
E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS. 11
(1) there existed only two imaging and four development
techniques, id.; (2) the prior art taught that digital imag-
ing has certain benefits over analog imaging, and that
thermal development has certain advantages over solvent
development, id.; (3) thus, a person of ordinary skill would
have been motivated “to combine digital imaging and
thermal development in one sequential process to gain the
benefits of both,” id.; (4) DuPont detailed the benefit of
digital imaging in a 1997 article, describing digital plates
as “truly superior,” and also detailed the benefit of ther-
mal development at an April 1999 tradeshow, touting
thermal development as “revolutionary,” id. at *16–17
(internal quotation marks omitted); and (5) thus, market
forces would have “created a strong incentive” for a person
of ordinary skill to combine “the revolutionary thermal
process . . . with the truly superior digital plates,” and
“one only needed to place a truly superior digital plate
(after imagewise exposure) into a revolutionary thermal
process,” or alternatively, “to upgrade an analog-thermal
plate in a known manner to . . . a digital-thermal plate,”
id. at *17 (internal quotation marks omitted).
The district court considered objective evidence of
nonobviousness in the record, but found such evidence
insufficient to preclude summary judgment. Id. at *18–
19. The court criticized DuPont for “sensationaliz[ing]”
the commercial success of its digital thermal Cyrel prod-
uct because its own expert stated in his declaration that
“marketplace acceptance of Cyrel was not immediate,”
and that “only through working with initial customers . . .
DuPont was able to develop a market for thermally devel-
oped plates over time.” Id. at *18 (internal quotation
marks omitted). The court also criticized DuPont’s com-
mercial success evidence on the bases that (1) DuPont
provided percentage growth of yearly sales, “but fail[ed] to
put those figures into context”; (2) DuPont presented
evidence that Cyrel generated over $90 million in sales
from 2001 to 2006, but failed to “document more revealing
12 E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS.
statistics, such as its profits”; (3) DuPont failed to men-
tion that all thermally developed plates, including those
other than Cyrel, accounted for only 13% of the overall
U.S. market for flexographic printing plates; and
(4) DuPont’s dominant position in the flexographic print-
ing plate market “reduce[d] the impact” of its proffered
evidence of commercial success. Id. at *18–19. The court
thus concluded that DuPont failed to adequately establish
a nexus between the claimed invention and its purported
commercial success. Id. at *19.
The district court also rejected DuPont’s argument of
long-felt (seven years from 1992 to 1999) but unmet need
because DuPont failed to establish a palpable need for
digital thermal plates that existed for a long time. Id.
Lastly, the court considered DuPont’s evidence of industry
praise, namely, the Flexographic Technical Association’s
Technical Innovation Award for DuPont’s Cyrel product.
The court acknowledged that the award “may be at least
some evidence of industry praise,” but nevertheless con-
cluded that it was “vastly insufficient to overcome Mac-
Dermid’s strong showing of obviousness.” Id. The court
therefore concluded that the asserted claims of the ’859
patent are invalid as obvious. Id. at *20.
The district court next considered MacDermid’s mo-
tion for summary judgment of noninfringement of the ’758
patent. Id. at *20–25. MacDermid argued that its ac-
cused Digital CST plate did not contain a “dimensionally
stable” substrate because the manufacturing process of
the accused plate did not involve the “special annealing
process” required by the claims under the district court’s
construction. Id. at *20. DuPont sought to rely on an
adhesive drying process used by MacDermid’s contractor,
Kimoto, to establish that the “dimensionally stable”
limitation was met, but MacDermid introduced evidence
to show that the adhesive drying process was not a “spe-
cially annealing process” that “controls” the “dimensional
stability” of the substrate. Id.
E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS. 13
The district court reasoned that under its construction
of “dimensionally stable,” the process of bonding the
photosensitive layer to the polymeric substrate is not a
“special annealing process.” Id. at *23. It then found that
Kimoto’s adhesive drying process is part of the bonding
process, and thus not an annealing process. Id. The court
therefore granted summary judgment of noninfringement
of claims 1, 3–4, and 7–8 of the ’758 patent. Id.
Following the district court’s grant of summary judg-
ment, DuPont moved for entry of final judgment under
Federal Rule of Civil Procedure 54(b). The district court
granted DuPont’s motion and entered final judgment.
DuPont timely appealed to this court. We have jurisdic-
tion under 28 U.S.C. § 1295(a)(1).
DISCUSSION
When reviewing a district court’s grant of summary
judgment, we apply the law of the regional circuit in
which the district court sits, here, the Third Circuit. Teva
Pharm. Indus. Ltd. v. AstraZeneca Pharm. LP, 661 F.3d
1378, 1381 (Fed. Cir. 2011). The Third Circuit “review[s]
an order granting summary judgment de novo, applying
the same standard” used by the district court. Azur v.
Chase Bank, USA, Nat’l Ass’n, 601 F.3d 212, 216 (3d Cir.
2010) (quotation omitted). Summary judgment is appro-
priate when, drawing all justifiable inferences in the
nonmovant’s favor, “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); Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 247–48 (1986). DuPont chal-
lenges the district court’s grants of summary judgment of
invalidity of the ’859 patent and of noninfringement of the
’758 patent. We review each of those decisions in turn.
A
Obviousness is ultimately a question of law premised
on underlying issues of fact, including: (1) the scope and
14 E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS.
content of the prior art; (2) the level of ordinary skill in
the pertinent art; (3) the differences between the claimed
invention and the prior art; and (4) objective evidence
such as commercial success, long-felt need, and the failure
of others. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 427
(2007); Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966). A patent claim is invalid as obvious if an alleged
infringer proves that the differences between the claimed
subject matter and the prior art are such that the subject
matter as a whole would have been obvious at the time of
invention to a person having ordinary skill in the art. 35
U.S.C. § 103(a) (2006). Patents are presumed to be valid,
and overcoming that presumption requires clear and
convincing evidence. 35 U.S.C. § 282; Microsoft Corp. v.
i4i Ltd. P’ship, 564 U.S. 91, 95 (2011).
DuPont argues that the district court failed to draw
reasonable inferences in its favor. DuPont asserts that
the district court improperly relied on “market forces” and
hindsight in finding a reason to combine digital imaging
and thermal development. DuPont contends that digital
imaging generated high quality plates, but that prior art
thermal processes yielded poor quality plates. DuPont
notes that Fan, the first digital imaging patent, teaches
only solvent development. Thus, DuPont continues, a
skilled artisan would not have had a reason to use digital
imaging to obtain a high quality image and then degrade
that image with thermal development. DuPont also
contends that Martens’s thermal process is not the same
as the claimed process because Martens does not describe
a thermally removable ablation layer. DuPont argues
that one would not have reasonably expected that the
thermal process would successfully remove the ablation
layer bound to the photopolymerizable layer necessary for
digital imaging. DuPont additionally argues that the
district court failed to properly consider the objective
evidence, including unexpected results, copying by Mac-
E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS. 15
Dermid, commercial success, long-felt but unmet need,
and industry praise.
MacDermid responds that the district court correctly
found “several reasons” for a skilled artisan to combine
digital and thermal technologies, including market forces,
limited prior art options of the imaging and development
processes, and known benefits of digital imaging and
thermal development. MacDermid also points to printed
publications prior to March 6, 2000, the § 102(b) critical
date, which explicitly describe combining digital imaging
and thermal development. MacDermid notes, moreover,
that DuPont’s digital-solvent plates sold before the
§ 102(b) critical date contain the same opaque infrared
ablation layer as its later-marketed digital-thermal
plates. Finally, MacDermid responds that the district
court properly considered the objective evidence before
reaching its ultimate conclusion of obviousness, and that
DuPont’s objective evidence was sparse and without the
required nexus.
We agree with MacDermid that the asserted claims of
the ’859 patent would have been obvious at the time of the
invention over the cited prior art. It is undisputed that
digital imaging and thermal development are techniques
known in the prior art. In the district court, DuPont
conceded that “the prior art contained various ‘digital
solvent’ references (e.g., [Fan] . . . , DuPont’s DPU plate,
and MacDermid’s CBU plates) that disclosed steps 1(a)
and 2” of the claimed method, and also “contained various
‘analog thermal’ references (e.g., [Martens] . . . ) that
disclosed one or more layers above a photopolymerizable
layer.” J.A. 7397. DuPont maintains, however, that the
prior art does not teach or suggest the thermally remova-
ble ablation layer of step 1(a). DuPont also argues that a
person of ordinary skill in the art would not have had a
reason to carry out the claimed process of thermally
developing a digitally imaged plate, and would not have
16 E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS.
had a reasonable expectation of success in doing so. We
disagree.
The district court correctly found that a person of or-
dinary skill in the art would have had a reason to combine
digital imaging and thermal development in the same
way as claimed in the ’859 patent. DuPont does not
dispute that there were a finite number of options of
imaging and development methods. Thus, a person of
ordinary skill only needed to traverse finite prior art
options by substituting one known technique for another.
More importantly, the prior art highlights the ad-
vantages of digital imaging over analog imaging. In a
1997 article, entitled “The Digital Difference,” J.A. 4193,
published five years after the digital-solvent technology
was invented, DuPont’s inventors reported that “digital
plates print with finer highlights while retaining deeper
shadows, and with lower dot gain than conventional
printing throughout the tonal range,” J.A. 4196. They
described digital imaging as “truly superior,” “gaining
worldwide acceptance,” and “a fundamental technology
improvement that enables expansion of the flexographic
printing process into . . . new markets,” noting that orders
for digital plates and digital exposure devices were “stead-
ily increasing.” J.A. 4193, 4196, 4197.
The prior art also describes the advantages of thermal
development over solvent development. Martens, a
patent issued in December 1992, teaches that those
advantages include “a substantial reduction of plate
making steps, plate making process time, and the elimi-
nation of potentially toxic by-product waste streams in
plate making.” Martens at 4:23–34. Martens also de-
scribes actual examples that produced “excellent” images
after thermal development. Id. at 21:67–22:2, 26:21–22.
Moreover, in April 1999, DuPont detailed the benefits of
its Cyrel® FAST thermal technology at a U.S. tradeshow,
describing the technology as “revolutionary,” “a great leap
E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS. 17
forward,” and a “breakthrough technology” that “reduce[s]
platemaking time.” J.A. 3420. DuPont emphasized that,
as compared to solvent development, the thermal method
reduced platemaking time from over 3 hours to 1 hour
and produced “high quality” plates. Id.
Accordingly, the prior art teaches significant benefits
of both digital imaging and thermal development over
their counterparts, providing a reason for a person of
ordinary skill to combine them in one sequential process.
Indeed, in a January 2000 article, published more than
one year before the earliest application filing date, and
thus qualifying as prior art under 35 U.S.C. § 102(b)
(2006), 2 a DuPont consultant stated that “[d]igitally
imaged plates will become the standard for high-quality
flexo,” and that “Next on the horizon is Cyrel FAST,
reportedly the first thermal, dry-processed flexo plate-
maker on the market. Regular or digitally imaged plates
are processed without solvents or liquids.” J.A. 3427
(emphases added). That article thus explicitly and unam-
biguously teaches combining digital and thermal technol-
ogies, thus laying to rest any doubt whether there would
have been a reason to combine those technologies.
We are unpersuaded by DuPont’s arguments to the
contrary. DuPont only relies on its expert’s declaration
and identifies no prior art that disparages the claimed
combination. DuPont argues that the thermal method
produced poor quality images, and thus it had languished
2 This court and our predecessor court have held
that art considered to be a statutory bar under § 102(b)
qualifies as prior art under § 103(a). See, e.g., Dippin’
Dots, Inc. v. Mosey, 476 F.3d 1337, 1344 (Fed. Cir. 2007);
LaBounty Mfg., Inc. v. ITC, 958 F.2d 1066, 1071 (Fed. Cir.
1992); In re Kaslow, 707 F.2d 1366, 1374 (Fed. Cir. 1983);
In re Ownby, 471 F.2d 1233, 1236 (CCPA 1973); In re
Foster, 343 F.2d 980, 988–90 (CCPA 1965).
18 E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS.
for decades since the 1960s. But, as the record shows, in
the 1990s, right before the 1999 date of invention, several
prior art references, including Martens and DuPont’s own
public disclosures, promoted the thermal process. Even if
it were true that the thermal process was not the best
method for producing high quality images, the legally
proper question is whether the thermal process would be
a suitable option in some respects, not necessarily in every
respect. Here, the prior art teaches the benefits of ther-
mal development over solvent development, including
environmental and time-saving benefits. There is there-
fore no genuine issue of material fact that a person of
ordinary skill would have had a reason to combine digital
imaging and thermal development.
We also agree with MacDermid that a person of ordi-
nary skill in the art would have had a reasonable expecta-
tion of success in combining digital imaging and thermal
development as claimed by the ’859 patent. As indicated,
DuPont conceded that the prior art “digital” references
teach steps 1(a) and 2 of the claimed method, and that the
prior art “thermal” references teach the thermal removal
of multiple layers. DuPont also admitted that its prior-
art digital-solvent plates have the same chemical compo-
sition as its digital-thermal plates. J.A. 3384–85, 3237.
Although the prior art did not explicitly teach the thermal
removal of the ablation layer in a digital plate, the record
shows that prior art digital plates already included abla-
tion layers with binders that softened and flowed at
thermal development temperatures, and thus are in fact
thermally removable. Accordingly, there would have been
a reasonable expectation that the thermal process would
successfully remove the ablation layer bound to the photo-
polymerizable layer.
This is not a case where a skilled artisan needed “to
vary all parameters or try each of numerous possible
choices until one possibly arrived at a successful result,
where the prior art gave either no indication of which
E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS. 19
parameters were critical or no direction as to which of
many possible choices is likely to be successful.” In re
O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988). Nor is this
a case where a skilled artisan “was to explore a new
technology or general approach that seemed to be a prom-
ising field of experimentation, where the prior art gave
only general guidance as to the particular form of the
claimed invention or how to achieve it.” Id.
Notably, the claims at issue do not require any special
condition for digital imaging or thermal development.
With a reason to combine digital and thermal technolo-
gies, a skilled artisan needed only to begin from an exist-
ing digital plate, to imagewise expose it, and then to
thermally develop the plate in known ways to practice the
claimed process. Thus, the claimed process would at least
have been obvious to try. There is therefore no genuine
issue of material fact that a person of ordinary skill in the
art would have had a reasonable expectation of success in
combining digital and thermal techniques.
DuPont lastly contends that secondary considerations
created a triable issue precluding summary judgment.
Because this appeal arises from a grant of summary
judgment, as with other issues, we review the objective
evidence de novo, drawing all justifiable inferences in
favor of DuPont. Fed. R. Civ. P. 56(a). In district court
litigation, courts must consider all objective evidence
before reaching the ultimate conclusion of obviousness. In
re Cyclobenzaprine Hydrochloride Extended-Release
Patent Litig., 676 F.3d 1063, 1076 (Fed. Cir. 2012). “The
objective considerations, when considered with the bal-
ance of the obviousness evidence in the record, guard as a
check against hindsight bias.” Id. at 1079. The burden of
persuasion remains on the patent challenger to prove
obviousness. Id. at 1077–78.
DuPont argues that the district court failed to proper-
ly consider the objective evidence, including unexpected
20 E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS.
results, copying, commercial success, long-felt but unmet
need, and industry praise. On a careful review of the
record, we agree with MacDermid that DuPont’s purport-
ed evidence of unexpected results, copying, and long-felt
but unmet need is sparse. Moreover, drawing all justifia-
ble inferences in favor of DuPont, we conclude that the
proffered objective evidence, including commercial success
and industry praise, is insufficient to create a genuine
issue of material fact to preclude summary judgment.
As discussed, the record contains strong evidence that
a skilled artisan would have had a reason to combine two
known technologies and would have had a reasonable
expectation of success in doing so. Indeed, DuPont itself
promoted the digital and thermal technologies as techno-
logical breakthroughs in prior art publications. Thus, in
view of the record as a whole, even drawing all justifiable
inferences in favor of DuPont, the objective evidence is
insufficient to preclude summary judgment on the ulti-
mate legal conclusion of obviousness.
We therefore affirm the grant of summary judgment
of invalidity of the ’859 patent.
B
We now turn to the district court’s grant of summary
judgment of noninfringement of the ’758 patent. To
determine infringement, a court first construes the scope
and meaning of the asserted patent claims, and then
compares the construed claims to the accused product or
process. Absolute Software, Inc. v. Stealth Signal, Inc.,
659 F.3d 1121, 1129 (Fed. Cir. 2011). “The proper con-
struction of a patent’s claims is an issue of Federal Circuit
law.” Id. We review a district court’s ultimate claim
construction de novo and any underlying factual determi-
nations involving extrinsic evidence for clear error. Teva
Pharm. U.S.A., Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841–
42 (2015). Here, because the district court relied solely on
the intrinsic record in construing the challenged claim
E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS. 21
term, and because the intrinsic record alone determines
the proper construction, we review the district court’s
construction de novo. See Shire Dev., LLC v. Watson
Pharm., Inc., 787 F.3d 1359, 1364, 1368 (Fed. Cir. 2015)
(citing Teva, 135 S. Ct. at 840–42).
Infringement is a question of fact. Absolute Software,
659 F.3d at 1129–30. “On appeal from a grant of sum-
mary judgment of non-infringement, we determine
whether, after resolving reasonable factual inferences in
favor of the patentee, the district court correctly conclud-
ed that no reasonable jury could find infringement.” Id.
1
The words of a claim “are generally given their ordi-
nary and customary meaning” as understood by a person
of ordinary skill in the art at the time of the invention.
Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
2005) (en banc). The court looks to the intrinsic record,
including “the words of the claims themselves, the re-
mainder of the specification, [and] the prosecution histo-
ry,” as well as to extrinsic evidence when appropriate, to
construe a disputed claim term. Id. at 1314.
DuPont argues that the district court erred in con-
struing “dimensionally stable” by importing a “special
annealing” process limitation into a product claim and by
imposing further requirements that the annealing process
take place after the manufacturing of the polymeric film
and be separate from the bonding process. DuPont argues
that there was no disclaimer or disavowal during prosecu-
tion because it merely discussed the annealing process to
show that the inherency rejection was improper.
MacDermid responds that the district court did not
impermissibly read process limitations into the product
claims. MacDermid argues that the “special annealing
process” is a necessary limitation because the patentee
emphasized during prosecution that the “special anneal-
22 E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS.
ing process” is essential to the claimed invention. Mac-
Dermid argues, moreover, that the specification makes
clear that the annealing process is the invention, whereas
the bonding process is optional and disclosed by the prior
art.
We agree with MacDermid that the district court did
not err in construing “dimensionally stable” as requiring a
“special annealing process” that controls the dimensional
stability of the polymeric substrate, as described in the
patent specification. During prosecution, the applicants
relied solely on that annealing process to overcome prior-
art-based anticipation and obviousness rejections and
repeatedly characterized the annealing process as “im-
portant” and “critical.” J.A. 2303, 2348, 2367. Those
statements constitute a disclaimer of the claim scope.
We are unpersuaded by DuPont’s argument that its
prosecution statements were made merely to show that
the examiner failed to establish that the prior art plates,
which were not annealed, inherently possess the claimed
dimensional stability. As noted, the applicants sought to
overcome both inherency and obviousness rejections, and
it repeatedly emphasized that the annealing process is
“important” and “critical.” The applicants did so to secure
issuance, and succeeded. In view of the disclaimer in the
publicly available intrinsic record, DuPont cannot now
attempt to recapture the disclaimed subject matter.
We therefore conclude that the “dimensionally stable”
limitation requires that the polymeric substrate be pre-
pared from the special annealing process that controls the
dimensional stability of the substrate. We need not, and
do not, address whether the district court erred in requir-
ing that the annealing process be separate from the
bonding process because, as indicated infra, our affir-
mance of the grant of summary judgment of noninfringe-
ment does not turn on that issue.
E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS. 23
2
DuPont next argues that, even under the district
court’s construction, the court erred in granting summary
judgment of noninfringement because it resolved factual
disputes in favor of MacDermid as to whether the accused
process, namely, Kimoto’s adhesive drying process, is a
“special annealing process.” MacDermid responds that it
was entitled to summary judgment because DuPont relied
solely on one sentence in its expert report, stating that
the Kimoto process is not a bonding process, to establish
that the Kimoto process is an annealing process. Mac-
Dermid notes that DuPont’s expert later conceded that
the Kimoto process is for bonding, not other purposes.
MacDermid additionally argues that the record sup-
ports alternative grounds for affirming the grant of sum-
mary judgment of noninfringement, including DuPont’s
failure to establish that the dimensional stability of the
accused substrate is “controlled” by a “special annealing
process.” DuPont responds that MacDermid’s alleged
alternative grounds involve disputed issues of fact, not
law, and thus must be decided by a jury on remand.
We agree with MacDermid and affirm the grant of
summary judgment of noninfringement on the alternative
ground that DuPont failed to establish that the dimen-
sional stability of the accused substrate is controlled by
the accused Kimoto adhesive drying process.
In the district court, MacDermid presented evidence
that the dimensional stability of the accused substrate
was not improved by Kimoto’s adhesive drying process.
DuPont did not put forth any contrary evidence on this
issue. In opposition to MacDermid’s motion for summary
judgment, DuPont filed an expert declaration attempting
to provide, for the first time, an analysis and opinion that
the Kimoto process controlled dimensional stability. J.A.
7275–79. The district court struck DuPont’s newly dis-
closed evidence, J.A. 13283–94, and DuPont does not
24 E.I. DU PONT DE NEMOURS v. MACDERMID PRINTING SOLS.
challenge that evidentiary ruling on appeal. Thus, with-
out evidence that the Kimoto process controls the dimen-
sional stability of the accused substrate, no reasonable
jury could find that MacDermid infringes the asserted
claims.
We therefore affirm the grant of summary judgment
of noninfringement of the ’758 patent.
CONCLUSION
We have considered DuPont’s remaining arguments
and find them unpersuasive. For the foregoing reasons,
we conclude that the asserted claims of the ’859 patent
would have been obvious in view of the prior art and that
the asserted claims of the ’758 patent were not infringed.
We therefore affirm the judgment of the district court.
AFFIRMED