Ineos USA LLC v. Berry Plastics Corporation

United States Court of Appeals
for the Federal Circuit
______________________
INEOS USA LLC,
Plaintiff-Appellant
v.
BERRY PLASTICS CORPORATION,
Defendant-Appellee
______________________
2014-1540
______________________
Appeal from the United States District Court for the
Southern District of Texas in No. 3:13-cv-00017, Judge
Gregg Costa.
______________________
Decided: April 16, 2015
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DONALD ROBERT DUNNER, Finnegan, Henderson,
Farabow, Garrett & Dunner, LLP, Washington, DC,
argued for plaintiff-appellant. Also represented by ALLEN
MARCEL SOKAL.
DEBORAH POLLACK-MILGATE, Barnes & Thornburg
LLP, Indianapolis, IN, argued for defendant-appellee.
Also represented by JESSICA M. LINDEMANN.
______________________
Before DYK, MOORE, and O’MALLEY, Circuit Judges.
2 INEOS USA LLC v. BERRY PLASTICS CORPORATION
MOORE, Circuit Judge.
Ineos USA LLC accused Berry Plastics Corporation of
infringing U.S. Patent No. 6,846,863. Ineos appeals from
the district court’s summary judgment that the ’863
patent is invalid as anticipated under 35 U.S.C. § 102
(2006). We affirm.
BACKGROUND
The ’863 patent is directed to polyethylene-based
compositions which can be used to form shaped products,
such as screw caps for bottles. ’863 patent col. 1 ll. 5–8.
Prior art polyethylene bottle caps incorporated a lubricant
to optimize the cap’s slip properties and to facilitate
unscrewing of the cap. Id. col. 1 ll. 9–14. However, these
compositions suffered the disadvantage of imparting bad
odor and flavor to food products stored in contact with the
compositions. Id. col. 1 ll. 15–17. The ’863 patent ex-
plains that its compositions having specific amounts of
polyethylene, lubricants, and additives solve this problem.
Id. col. 1 ll. 24–35. Claim 1 is the only independent claim
and is illustrative:
1. Composition comprising at least [1] 94.5% by
weight of a polyethylene with a standard density
of more than 940 kg/m3,
[2] 0.05 to 0.5% by weight of at least one saturated
fatty acid amide represented by CH3(CH2)nCONH2
in which n ranges from 6 to 28[,]
[3] 0 to 0.15% by weight of a subsidiary lubricant
selected from fatty acids, fatty acid esters, fatty
acid salts, mono-unsaturated fatty acid amides,
polyols containing at least 4 carbon atoms, mono-
or poly-alcohol monoethers, glycerol esters, paraf-
fins, polysiloxanes, fluoropolymers and mixtures
thereof, and
INEOS USA LLC v. BERRY PLASTICS CORPORATION 3
[4] 0 to 5% by weight of one or more additives se-
lected from antioxidants, antacids, UV stabilizers,
colorants and antistatic agents.
For ease of reference, we refer to the various limitations
by the respective bracketed numbers inserted into the
claim.
Ineos alleged that Berry Plastics infringes claims 1–7
and 9–11 of the ’863 patent. Berry Plastics moved for
summary judgment that the asserted claims are antici-
pated independently by various prior art references,
including U.S. Patent No. 5,948,846. The parties do not
dispute that the ’846 patent discloses 94.5% by weight of a
polyethylene with a standard density of more than
940 kg/m3 as described in limitation 1 of claim 1 of the
’863 patent. Ineos USA LLC v. Berry Plastics Corp., No.
13-cv-0017, slip op. at 11 (S.D. Tex. Apr. 15, 2014), ECF
No. 101 (Summary Judgment Order). Likewise, there is
no dispute that stearamide, disclosed in the ’846 patent, is
a compound within the class of saturated fatty acid am-
ides represented by CH3(CH2)nCONH2 in which n ranges
from 6 to 28 (“primary lubricant”) described in limitation
2. The court found that the ’846 patent’s disclosure of a
lubricant, which could be stearamide, in amounts from 0.1
to 5 parts by weight, 1 and more specifically of “at least 0.1
part by weight per 100 parts by weight of polyolefin, in
particular of at least 0.2 parts by weight, quantities of at
least 0.4 parts by weight being the most common ones”
describes specific values (e.g., 0.1 part by weight) along
with the broader disclosure of the full range (0.1 to 5
parts by weight). Id. at 13–14. It therefore concluded
that the ’846 patent’s disclosure of stearamide in these
amounts met limitation 2. Id. at 11–14. It then deter-
1 The parties agree for purposes of this appeal that
measurements in “% by weight” are equivalent to meas-
urements in “parts by weight.”
4 INEOS USA LLC v. BERRY PLASTICS CORPORATION
mined that the subsidiary lubricant of limitation 3 and
the additive of limitation 4 are optional in the claimed
composition because limitations 3 and 4 set forth ranges
beginning with 0%. Id. at 14–16. It therefore found that
the ’846 patent’s disclosure of an optional subsidiary
lubricant and an optional additive satisfied limitations 3
and 4. Id. The court concluded that the ’846 patent
anticipates the asserted claims. Ineos appeals. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
We review the grant of summary judgment under the
law of the relevant regional circuit. See Accenture Global
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1340 (Fed. Cir. 2013). The Fifth Circuit reviews grants of
summary judgment de novo. Triple Tee Golf, Inc. v. Nike,
Inc., 485 F.3d 253, 261 (5th Cir. 2007). Summary judg-
ment is appropriate when there is no genuine issue of
material fact and the moving party is entitled to judgment
as a matter of law. Fed. R. Civ. P. 56(a). To anticipate a
patent claim under 35 U.S.C. § 102, “a reference must
describe . . . each and every claim limitation and enable
one of skill in the art to practice an embodiment of the
claimed invention without undue experimentation.” Am.
Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d 1318,
1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331,
1334 (Fed. Cir. 2009)).
I. Independent Claim 1
Ineos argues that the court erred in finding claim 1 of
the ’863 patent anticipated by the ’846 patent and in
concluding that Ineos failed to raise a genuine dispute of
material fact in opposing summary judgment. Ineos
asserts that the ’846 patent discloses no single species
within the genus of claim 1. It asserts that although the
’846 patent discloses stearamide—one of the primary
lubricants of limitation 2—the ’846 patent does not dis-
close or suggest that stearamide or any other primary
INEOS USA LLC v. BERRY PLASTICS CORPORATION 5
lubricant “should be included as a lubricant in an amount
between 0.05 and 0.5% by weight while entirely excluding
or severely limiting any other lubricant to no more than
0.15% by weight.” Appellant’s Br. 28. Ineos argues that,
contrary to the court’s conclusion, the ’846 patent disclos-
es ranges for amounts of lubricants, not particular indi-
vidual point values. Relying on Atofina v. Great Lakes
Chemical Corp., 441 F.3d 991 (Fed. Cir. 2006), Ineos
argues that because the ranges concerning the amounts of
lubricants disclosed in the ’846 patent only slightly over-
lap with the ranges of limitations 2 and 3 in claim 1 of the
’863 patent, the ’846 patent does not disclose these limita-
tions. Appellant’s Br. 28–32. Ineos contends that, at the
very least, under OSRAM Sylvania, Inc. v. American
Induction Technologies, Inc., 701 F.3d 698, 706 (Fed. Cir.
2012), the court should not have granted summary judg-
ment in light of Ineos’s proffered testimony that the
ranges claimed in the ’863 patent are critical. Appellant’s
Br. 33–35.
Berry Plastics responds that the court properly grant-
ed summary judgment. It argues that the description in
the ’846 patent of stearamide in amounts of “at least 0.1
part by weight per 100 parts by weight of polyolefin, in
particular at least 0.2 parts by weight, quantities of at
least 0.4 parts by weight being the most common ones”
discloses particular points (i.e., 0.1, 0.2, and 0.4 parts by
weight) within the range claimed in limitation 2 of claim 1
of the ’863 patent (i.e., 0.05 to 0.5% by weight). Similarly,
Berry Plastics argues that the court correctly concluded
that because the compositions of the ’846 patent contain
“one or more lubricating agents,” the ’846 patent discloses
that a subsidiary lubricant is optional. Berry Plastics
asserts that the court therefore correctly found that the
’846 patent met limitation 3 of claim 1 of the ’863 patent.
Finally, Berry Plastics asserts that the court did not err
in declining to consider the purported criticality of the
claimed ranges in limitations 2 and 3 because such in-
6 INEOS USA LLC v. BERRY PLASTICS CORPORATION
quiry is not necessary where, as here, the prior art dis-
closes particular points within the later claimed range.
We hold that the district court correctly granted
summary judgment of anticipation. When a patent claims
a range, as in this case, that range is anticipated by a
prior art reference if the reference discloses a point within
the range. Titanium Metals Corp. v. Banner, 778 F.2d
775, 782 (Fed. Cir. 1985). If the prior art discloses its own
range, rather than a specific point, then the prior art is
only anticipatory if it describes the claimed range with
sufficient specificity such that a reasonable fact finder
could conclude that there is no reasonable difference in
how the invention operates over the ranges. Atofina, 441
F.3d at 999; ClearValue, Inc. v. Pearl River Polymers, Inc.,
668 F.3d 1340, 1345 (Fed. Cir. 2012). Limitation 2 is met
by the disclosure of the ’846 patent. The ’846 patent
specification states:
The composition according to the invention in-
cludes the lubricating agent in a total quantity of
at least 0.1 part by weight per 100 parts by weight
of polyolefin, in particular of at least 0.2 parts by
weight, quantities of at least 0.4 parts by weight
being the most common ones; the total quantity of
lubricating agents does not exceed 5 parts by
weight, more especially 2 parts by weight, maxi-
mum values of 1 part by weight per 100 parts by
weight of polyolefin being recommended.
’846 patent col. 2 l. 66–col. 3 l. 7 (emphasis added). The
phrases “at least” and “does not exceed” set forth corre-
sponding minimum and maximum amounts for the pri-
mary lubricant. This portion of the specification clearly
discloses ranges, not particular individual values. As we
stated in Atofina, “the disclosure of a range . . . does not
constitute a specific disclosure of the endpoints of that
range.” 441 F.3d at 1000. The court therefore erred in
INEOS USA LLC v. BERRY PLASTICS CORPORATION 7
concluding that the ’846 patent discloses particular points
within the range recited in limitation 2.
This conclusion is not fatal to Berry Plastics’ case,
however, because Ineos failed to raise a genuine question
of fact about whether the range claimed is critical to the
operability of the invention. Ineos has not demonstrated
that Atofina or OSRAM requires reversal in this case.
In Atofina, we reversed the district court’s finding of
anticipation where the patent-in-suit claimed a tempera-
ture range that was critical to the operability of the
invention and the range disclosed in the prior art was
substantially different. Atofina involved a patent claim-
ing a method of synthesizing difluoromethane at a tem-
perature between 330–450 ˚C. Atofina, 441 F.3d at 993;
U.S. Patent No. 5,900,514 col. 3 ll. 61–62. Atofina’s
patent and its prosecution history described the claimed
temperature range as critical to the invention, and stated
that the synthesis reaction would not operate as claimed
at a temperature outside the claimed range. See Atofina,
J.A. 1304, 1306, 1311–12; ’514 patent col. 3 ll. 61–65; see
also ClearValue, 668 F.3d at 1344–45. The prior art at
issue in Atofina disclosed a broad temperature range of
100–500 ˚C. Atofina, 441 F.3d at 999. The patent-in-suit
was not anticipated because there was a “considerable
difference” between the prior art’s broad disclosure and
the claimed “critical” temperature range, such that “no
reasonable fact finder could conclude that the prior art
describes the claimed range with sufficient specificity to
anticipate this limitation of the claim.” Id. at 999; see also
ClearValue, 668 F.3d at 1345. Key to this conclusion was
the fact that the evidence showed that a person of ordi-
nary skill in the art would have expected the synthesis
reaction to operate differently, or not all, outside of the
temperature range claimed in the patent-in-suit. Atofina,
441 F.3d at 999; see also ClearValue, 668 F.3d at 1345.
8 INEOS USA LLC v. BERRY PLASTICS CORPORATION
In ClearValue, we further explained the importance of
establishing the criticality of a claimed range to the
claimed invention in order to avoid anticipation by a prior
art reference disclosing a broader, overlapping range. The
patent at issue in ClearValue claimed a method “for
clarification of water of raw alkalinity less than or equal
to 50 ppm by chemical treatment.” 668 F.3d at 1342
(emphasis added). After a jury found ClearValue’s patent
not anticipated by prior art disclosing clarifying water
with alkalinity of “150 ppm or less,” we reversed and held
the patent invalid as anticipated. Id. at 1342–46. Nota-
bly, ClearValue did not argue that the claimed range was
critical to the invention or that the claimed method would
work differently within the prior art range of 150 ppm or
less. Id. “[U]nlike Atofina where there was a broad genus
and evidence that different portions of the broad range
would work differently,” in ClearValue “there [was] no
allegation of criticality or evidence demonstrating any
difference across the range.” Id. at 1345. There was no
considerable difference between how the method would
operate within the claimed range and within the range
disclosed in the prior art. Id.
We have, however, reversed a grant of summary
judgment of anticipation where the patentee raised a
genuine dispute of material fact concerning the criticality
of a claimed range. In OSRAM, the patentee argued that
the claimed pressure range “less than 0.5 torr” was criti-
cal to the operation of its claimed lamp assembly.
OSRAM, 701 F.3d at 701, 705–06. There, the patentee
presented expert testimony and evidence supporting its
assertion that the “less than 0.5 torr” limitation was
“central to the invention claimed” and “that a lamp would
operate differently at various points within the range
disclosed” in the prior art reference at issue. Id. at 706.
This evidence was unrebutted. Id. We emphasized that
“how one of ordinary skill in the art would understand the
relative size of a genus or species in a particular technolo-
INEOS USA LLC v. BERRY PLASTICS CORPORATION 9
gy is of critical importance.” Id. Noting the district
court’s failure to justify its rejection of OSRAM’s expert
testimony and the lack of support for the court’s conclu-
sion that the claimed range was narrowly encompassed
within the prior art range, we reversed. Id.
In this case, Ineos argues that because the prior art
’846 patent discloses a range that overlaps with the range
recited in limitation 2, the court should not have found
claim 1 anticipated. Ineos asserts that it presented
unrebutted evidence that the range recited in limitation 2
is critical to the invention and therefore, under OSRAM,
the court erred in granting summary judgment in Berry
Plastics’ favor.
The court’s conclusion that limitation 2 was met by
the ’846 patent was correct because Ineos did not raise a
genuine question of fact about whether the range recited
in limitation 2 is critical to the invention. The ’863 patent
specification indicates that the lubricants included in the
invention function to improve the caps’ slip properties and
ability to be unscrewed from a bottle. ’863 patent col. 1
ll. 10–12. It then describes the novelty of the invention as
eliminating the odor and taste problems associated with
prior art bottle caps while still maintaining good slip
properties. Id. col. 1 ll. 20–23, col. 3 l. 66–col. 4 l. 2. Ineos
has not established that any of these properties would
differ if the range from the prior art ’846 patent is substi-
tuted for the range of limitation 2.
Ineos relies on the testimony of one of the inventors of
the ’863 patent stating that the range claimed in limita-
tion 2 is critical to avoid unnecessary manufacturing costs
and the appearance of undesirable blemishes on the bottle
caps. Appellant’s Br. 33–34. But even if true, this has
nothing to do with the operability or functionality of the
claimed invention. Ineos has not established any rela-
tionship between avoided cost and prevention of undesir-
able blemishes, and the claimed invention’s slip
10 INEOS USA LLC v. BERRY PLASTICS CORPORATION
properties or elimination of odor and taste problems.
Ineos does not suggest that the claimed invention’s slip
properties or improved odor and taste properties would
not have been expected based on the prior art. While we
do not rule out the possibility that testimony concerning
reduced manufacturing costs could be relevant where a
method of manufacture claim is at issue, this is not the
case before us. 2
Ineos is correct that with regard to limitation 2, the
’846 patent discloses a range, and not a point within the
range. Ineos is also correct that when the prior art dis-
closes a range, rather than a point, the court must evalu-
ate whether the patentee has established that the claimed
range is critical to the operability of the claimed inven-
tion. Here, however, Ineos failed to put forth facts in
opposition to summary judgment that created a genuine
issue of material fact about the criticality of the range of
limitation 2. There is no evidence that the operability of
the bottle cap would be improved by the claimed range.
Limitation 3 is also met by the ’846 patent and Ineos’s
argument concerning the criticality of limitation 3 does
not save the claim. The ’846 patent discloses composi-
tions containing a single lubricating agent (“one”) and
allows for additional lubricating agents. ’846 patent col. 1
ll. 48–50. We, like the district court, interpret this lan-
guage as expressly disclosing a composition with only one
lubricating agent—the primary lubricant—and zero
subsidiary lubricant. Limitation 3 requires a subsidiary
lubricant present in an amount between 0 and 0.15% by
weight. Because the ’846 patent discloses 0% of subsidi-
2 Ineos also cited an expert who testified about crit-
icality, but Ineos agrees that expert testimony was limited
to the criticality of the range recited in limitation 3. Oral
Arg. at 33:15–28, available at http://oralarguments.cafc.
uscourts.gov/default.aspx?fl=2014-1540.mp3.
INEOS USA LLC v. BERRY PLASTICS CORPORATION 11
ary lubricant, limitation 3 is satisfied. Ineos’s criticality
evidence is not relevant because that inquiry is appropri-
ate only where the prior art discloses a range, not a
particular value within the later claimed range. We see
no error in the district court’s analysis on this point. 3
II. Dependent Claim 3
Claim 3, which depends from claim 1, specifies that
the primary lubricant is the saturated fatty acid amide
behenamide. The court found that because behenamide is
one of a few common saturated fatty acid amide lubricat-
ing agents, the ’846 patent’s disclosure of the genus of
saturated fatty acid amides anticipates claim 3. Sum-
mary Judgment Order at 19–20 (citing In re Petering, 301
F.2d 676 (C.C.P.A. 1962)).
Ineos argues that the court erred in finding claim 3
anticipated. It argues that the ’846 patent does not
explicitly disclose behenamide and that the court incor-
rectly concluded that the genus of saturated fatty acid
amides disclosed in the ’846 patent describes behenamide.
It asserts that the court incorrectly concluded that behen-
amide is a common saturated fatty acid amide lubricating
agent. It asserts that the only pertinent record evidence
is Ineos’s inventor declaration stating that behenamide
was not recognized as “as one of the more effective lubri-
cants for products.”
We affirm the court’s conclusion that claim 3 is antic-
ipated. With respect to claim 3, the ’846 patent specifica-
tion discloses the genus of saturated fatty acid amides
3 Dependent claim 10 recites the composition of
claim 1 that is free of a subsidiary lubricant (i.e., 0%
subsidiary lubricant). The court concluded that the ’846
patent’s disclosure of an optional subsidiary lubricant
anticipates claim 10. Summary Judgment Order at 21–
22. We affirm.
12 INEOS USA LLC v. BERRY PLASTICS CORPORATION
and states that good results are achieved with the nar-
rower genus of saturated fatty acid amides having 12 to
35 carbon atoms. ’846 patent col. 2 ll. 48–52, 59–61.
Behenamide falls within the narrower preferred genus
because it is a saturated fatty acid amide with 22 carbon
atoms. Berry Plastics asserted that behenamide is a
common lubricating agent, and supported that contention
with an expert declaration stating that behenamide is a
common fatty acid amide used in the packaging industry.
From this evidence we cannot conclude that the court
erred in finding that the ’846 patent discloses behena-
mide. Ineos has not demonstrated that it raised a genu-
ine dispute of material fact with respect to claim 3.
Verbatim disclosure of a particular species is not required
in every case for anticipation because disclosure of a small
genus can be a disclosure of each species within the
genus. See Atofina, 441 F.3d at 999 (citing In re Petering,
301 F.2d at 682). Ineos does not dispute that behenamide
falls within the narrow genus of saturated fatty acid
amides having 12 to 35 carbon atoms. And Ineos provided
no detailed information on how large this genus is to
support its contention that this genus does not disclose
behenamide. Ineos’s inventor declaration does not state
that behenamide is not a common lubricant within this
species. We conclude that Ineos did not raise a genuine
dispute of material fact with respect to claim 3.
CONCLUSION
We affirm the grant of summary judgment of antici-
pation.
AFFIRMED
COSTS
No costs.