INVISTA NORTH AMERICA S.A.R.L. and AURIGA POLYMERS INC., Plaintiffs,
M&G USA CORPORATION and M&G POLYMERS USA, LLC, Defendants.
William J. Marsden, Jr., Esquire, Douglas E. McCann, Esquire, A. Martina Hufnal, Esquire, and Robert M. Oakes, Esquire of Fish & Richardson P.C., Wilmington, Delaware. Counsel for Plaintiff INVISTA North America S.á.r.l. Of Counsel: Jonathan E. Singer, Esquire of Fish & Richardson P.C.
John W. Shaw, Esquire, and Jeffrey T. Castellano, Esquire of Shaw Keller LLP, Wilmington, Delaware. Counsel for Plaintiff Auriga Polymers Inc. Of Counsel: William Cory Spence, Esquire, and Reid P. Huefner, Esquire of Kirkland & Ellis LLP.
Richard L. Horwitz, Esquire, David E. Moore, Esquire, and Bindu A. Palapura, Esquire of Potter Anderson & Corroon LLP, Wilmington, Delaware. Counsel for Defendants. Of Counsel: Megan D. Dortenzo, Esquire, Arthur Licygiewicz, Esquire, and Michael P. Sherban, Esquire of Thompson Hine LLP.
SUE L. ROBINSON, District Judge.
Plaintiffs INVISTA North America S.a.r.l. ("Invista NA") and Auriga Polymers Inc. ("Auriga Polymers") (collectively, "Invista") are suing M&G USA Corporation ("M&G Corp.") and M&G Polymers USA, LLC ("M&G LLC") (collectively, "M&G") for infringement of United States Patent Nos. 7, 919, 159 ("the '159 patent), 7, 943, 216 ("the 216 patent"), and 7, 879, 930 ("the '930 patent") (collectively, "the patents-in-suit"). (D.I. 1; D.I. 7) M&G has asserted counterclaims seeking declaratory judgment of non-infringement and invalidity of the patents-in-suit. (D.I. 42)
The patents-in-suit relate to plastic materials with applications in packaging for oxygen-sensitive foods and beverages. The court has construed, in a separate memorandum opinion and order, the disputed limitations of the patents-in-suit and has resolved, in a separate memorandum order, various motions by Invista and M&G to strike or exclude certain expert testimony and filings. Currently before the court are several summary judgment motions: Invista's motion for partial summary judgment of infringement (D.I. 231); M&G's cross-motion for summary judgment of non-infringement (D.I. 265); M&G's motion for summary judgment of invalidity (D.I. 233); and Invista's cross-motion for partial summary judgment of validity (D.I. 262). The court has jurisdiction over these matters pursuant to 28 U.S.C. § 1338.
A. The Parties
Invista NA, one of the world's largest integrated producers of polymers, is a corporation organized under the laws of Luxembourg, with its headquarters in Wichita, Kansas. (D.I. 7 at ¶ 2) It sold off its North American business, which became Auriga Polymers. (D.I. 368 at 6:8-10) Invista NA owns the patents-in-suit, while Auriga Polymers is the exclusive licensee. ( Id. at 6:2, 6:10-11)
M&G Corp. and M&G LLC are both Delaware corporations. (D.I. 7 at ¶¶ 3-4; D.I. 42 ¶¶ 3-4) M&G Corp. has its principal place of business in Ohio, and M&G LLC has its principal place of business in West Virginia. (D.I. 7 at ¶¶ 3-4; D.I. 42 ¶¶ 3-4)
B. Technology Overview
Plastic polymers are commonly used for making food and beverage containers and offer several advantages over the use of glass or metal. They are lighter in weight, have less breakage, and can potentially lower costs. (216 patent, col. 1:25-27) Polymers are synthesized by reacting monomers to form a larger polymer chain, and they can be made into bottles by a method called stretch blow molding. In stretch blow molding, a polymer resin is typically dried, melted and extruded into preforms. ( Id., col. 7:56-58) The preforms are then heated and blown-molded into bottles of desired shape and size. ( Id., col. 7:62-64)
One type of polymer, polyester, has been widely used in the bottling industry for many years. Polyethylene terephthalate ("PET") is a common example of a polyester. ( Id., col. 2:34, 8:16) Polyesters can be prepared by reacting diesters (e.g., dicarboxylic ester) or diacids (e.g., terephthalic acide) with ethylene glycol ("EG"). ( Id., col. 3:27-31) However, polyesters have inferior gas-barrier properties. Because they are not impervious to gas, they limit the shelf life of oxygen-sensitive foods, condiments, and beverages (such as juice, soda, or beer). ( Id., col. 1:27-33)
In the prior art, it was known that the use of low-gas permeable polymers, known as partially aromatic polyamides (or "nylons"), with polyesters increases barrier properties. ( Id., col. 1:31-38) Partially aromatic polyamides have non-scavenging, or "passive, " barrier properties - they restrict carbon dioxide leakage from, and oxygen intrusion into, a container by obstructing the paths of gas molecules. ( Id., col. 1:21; 930 patent, col. 2:22) However, partially aromatic polyamides are not miscible - they do not mix well - with polyesters like PET, and they also give containers an undesirable yellow and hazy appearance. (216 patent, col. 1:44-46)
It was commonly known in the art that combining a thin layer of a partially aromatic polyamide, like MXD6,  with one or more layers of polyester in multilayer bottles increased barrier properties. ( Id., col. 1:35-43; '930 patent, col. 2:18-25) This multilayer system, however, produced bottles with undesirable haze. (216 patent, col. 1:33-35)
It was also known in the art that the addition of a transition metal catalyst, such as cobalt salt, improved the gas barrier properties of polyamide multilayer containers and blends with PET by promoting active oxygen scavenging. ( Id., col. 2:32-48; '930 patent, col. 1:30-31, 1:51-5-55) As opposed to a passive barrier, this "active" barrier reacts with oxygen in the process of traversing the package barrier. (930 patent, col. 1:33-38)
C. The Inventions and Patents-in-Suit
1. The '159 and '216 patents
According to the patentee, no prior art disclosed a monolayer container with a desirable balance of high gas barrier properties and low yellowness and haze, as taught by the '159 and '216 patents. (216 patent, col. 2:55-61, 2:65-3:13) The inventions are useful as packaging for oxygen-sensitive foods that require a long shelf life. ( Id., col. 2:55-67)
The '159 patent discloses a four-component composition. Claim 1 of the '159 patent provides:
1. A composition for containers comprising: polyester, partially aromatic polyamide, ionic compatibilizer, and a cobalt salt; wherein said ionic compatibilizer is a copolyester containing a metal sulfonate salt.
As discussed, the partially aromatic polyamide provides a passive barrier. The cobalt salt is a transition metal catalyst that "activates" the partially aromatic polyamide to form an active barrier that scavenges oxygen, thereby improving barrier properties. The patentee reports that the ionic compatibilizer allows a "synergistic reduction" in yellowness and haze and "surprisingly" increases barrier properties even further. ('159 patent, col. 5:22-25, 9:58-61)
The '216 patent is a division of the '159 patent and shares the same specification. (See '216 patent, col. 1:8-9) The '216 patent discloses a threecomponent composition. Claim 1 of the '216 patent recites:
1. A composition for containers comprising:
a copolyester comprising a metal sulfonate salt;
a partially aromatic polyamide;
and a cobalt salt.
The composition of the '216 patent differs from that of the '159 patent in that it replaces the polyester and ionic compatibilizer components and recites, in their place, "a copolyester comprising a metal sulfonate salt." The other claims of the '216 and '159 patents disclose more specific compositions, as well as articles and containers made from the compositions.
2. The '930 patent
Invista is asserting indirect infringement of claims 1, 3-6, 8, 10, and 11 of the '930 patent, which relates to colored oxygen scavenging polymers and articles made from such polymers, such as green, blue, or amber bottles. ('930 patent, col. 1:7-8, 2:20) In the prior art, it was not problematic to use colorants because there would be no reaction between the colorant, which was added to the non-scavenging (or passive barrier) layers and the transition metal catalyst, which was contained in the oxygen scavenging (or active barrier) layer. ( Id., col. 2:20-25) However, in monolayer articles, such as those taught in the '159 and '216 patents, the colorant is intimately mixed in a melt phase with the transition metal catalyst. ( Id., col. 2:35-38) Some colorants deactivate the transition metal catalyst after melt blending, which makes the transition metal catalyst less effective as a catalyst. ( Id., col. 2:32-34)
The '930 patent relates to the use of certain colorants that do not completely deactivate the catalyst and, thus, are suitable for use with a transition metal catalyst in monolayer scavenging systems. ( Id., col. 2:42-44) The specification of the '930 patent describes the methods used to determine the catalyst deactivation properties of colorants. The oxygen permeability of each specimen was measured at zero percent relative humidity, one atmosphere pressure, and 230 C, and was expressed in the units (cc(STP) cm)/(m2 atm day). ( Id., col. 6:58-59) Then the catalyst deactivation factor ("CDF") was defined as: "(oxygen permeability of base polymer, oxidizable organic polymer, transition metal catalyst and 0.25 weight % colorant) / (oxygen permeability of base polymer and oxidizable organic polymer)." ( Id., col. 6:59-64) In other words, the CDF is the oxygen permeability of the activated polymer blend with 0.25 weight % colorant, expressed as a fraction of the oxygen permeability of the passive polymer blend without any colorant. A CD. 1 corresponds to complete deactivation (such that the composition containing the active barrier and colorant has the same oxygen permeability as the passive barrier), whereas a CD. 0 corresponds to no deactivation of the oxidation catalyst. ( Id., col. 6:65-67)
The '930 patent claims a melt blended resin, monolayer film or article comprising a base polymer, an oxidizable organic polymer, a transition metal catalyst, and a colorant. ( Id., col. 2:44-63) The colorant of the claimed invention has a CD. less than about 0.25, preferably less than 0.15, more preferably less than 0.1, and most preferably less than 0.05. ( Id., abstract, col. 8:2-4) The blend may also optionally include a compatibilizer and other additives. ( Id., col. 2:47-48, 5:33-44) There is one independent claim among the asserted claims of the '930 patent:
1. A melted blended resin for packaging articles comprising:
a base polymer;
oxidizable organize polymer;
transition metal catalyst; and
such that an article made from said melt blended resin has a catalyst deactivation factor of less than 0.25, and further wherein said base polymer is selected from the gorup consisting of polyethylene, polyester, polyvinyl chloride, polyvinylidene chloride, ethylene copolymers, and blends thereof.
D. The Accused Products
Invista accuses M&G's PoliProtect APB and PoliProtect JB products (collectively, the "PoliProtect products"), resins sold in the form of pellets, of infringing the patents-in-suit. ( See D.I. 42 at ¶ 12) The PoliProtect products are suitable for applications in food and beverage packaging. (D.I. 237 at PA284) Each pellet has a "passive barrier" inner layer, or core, made of nylon and an outer layer made of a copolyester with antimony, cobalt, phosphorus, lithium, and sulfur; the outer layer catalyzes the "activation" of the inner core into an "active" oxygen scavenging barrier. ( Id. at PA151-54, PA251, PA264, PA283-85, PA453-54 86:13-87:13; D.I. 266 at 5, 12) M&G markets the bilayer feature of the PoliProtect products as BICOPETTM technology. ( See D.I. 237 at PA151-53, PA251, PA264, PA283-85) The parties agree that the primary difference between PoliProtect APB and PoliProtect JB is the amount of oxidizable components in each (5.0 weight % in PoliProtect APB and 2.9 weight % in PoliProtect JB). (D.I. 232 at 9; 266 at 5)
"The court shall grant summary judgment 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(a). The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 415 U.S. 574, 586 n.10 (1986). A party asserting that a fact cannot be - or, alternatively, is - genuinely disputed must demonstrate such, either by citing to "particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for the purposes of the motions only), admissions, interrogatory answers, or other materials, " or by "showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact." Fed.R.Civ.P. 56(c)(1)(A) & (B). If the moving party has carried its burden, the nonmovant must then "come forward with specific facts showing that there is a genuine issue for trial." Matsushita, 415 U.S. at 587 (internal quotation marks omitted). The court will "draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence." Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).
To defeat a motion for summary judgment, the non-moving party must "do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586-87; see also Podohnik v. U.S. Postal Serv., 409 F.3d 584, 594 (3d Cir. 2005) (stating party opposing summary judgment "must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue") (internal quotation marks omitted). Although the "mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment, " a factual dispute is genuine where "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 411 U.S. 242, 247-48 (1986). "If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 411 U.S. 317, 322 (1986) (stating entry of summary judgment is mandated "against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial").
A patent is infringed when a person "without authority makes, uses or sells any patented invention, within the United States... during the term of the patent." 35 U.S.C. § 271(a). To prove direct infringement, the patentee must establish, by a preponderance of the evidence, that one or more claims of the patent read on the accused device literally or under the doctrine of equivalents. See Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 261 F.3d 1329, 1336 (Fed. Cir. 2001). A two-step analysis is employed in making an infringement determination. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995). First, the court must construe the asserted claims to ascertain their meaning and scope. See id. Construction of the claims is a question of law subject to de novo review. See Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1454 (Fed. Cir. 1998). The trier of fact must then compare the properly construed claims with the accused infringing product. See Markman, 52 F.3d at 976. This second step is a question of fact. See Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998).
"Direct infringement requires a party to perform each and every step or element of a claimed method or product." BMC Res., Inc. v. Paymentech, LP, 498 F.3d 1373, 1378 (Fed. Cir. 2007). "If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). If an accused product does not infringe an independent claim, it also does not infringe any claim depending thereon. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989). However, "[o]ne may infringe an independent claim and not infringe a claim dependent on that claim." Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed. Cir. 2007) (quoting Wahpeton Canvas, 870 F.2d at 1552) (internal quotation marks omitted). A product that does not literally infringe a patent claim may still infringe under the doctrine of equivalents if the differences between an individual limitation of the claimed invention and an element of the accused product are insubstantial. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 24 (1997).
To establish indirect infringement, a patent owner has available two theories: active inducement of infringement and contributory infringement. See 35 U.S.C. § 271(b) & (c). To establish active inducement of infringement, a patent owner must show that an accused infringer "knew or should have known [its] actions would induce actual infringements." DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006). To establish contributory infringement, a patent owner must show that an accused infringer sells "a component of a patented machine... knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use." Golden Blount, Inc. v. Robert H. Peterson Co., 365 F.3d 1054, 1061 (Fed. Cir. 2004) (quoting 35 U.S.C. § 271(c)). Liability under either theory, however, depends on the patent owner having first shown direct infringement. Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 774 (Fed. Cir. 1993).
When an accused infringer moves for summary judgment of non-infringement, such relief may be granted only if one or more limitations of the claim in question does not read on an element of the accused product, either literally or under the doctrine of equivalents. See Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1376 (Fed. Cir. 2005); see also TechSearch, LLC v. Intel Corp., 286 F.3d 1360, 1369 (Fed. Cir. 2002) ("Summary judgment of non-infringement is... appropriate where the patent owner's proof is deficient in meeting an essential part of the legal standard for infringement, because such failure will render all other facts immaterial."). Thus, summary judgment of non-infringement can only be granted if, after viewing the facts in the light most favorable to the non-movant, ...