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INVISTA North America S.A.R.L. v. M&G USA Corp.

United States District Court, D. Delaware

March 31, 2014


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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.à.r.l. Of 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 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 Megan D. Dortenzo, Esquire, and Arthur Licygiewicz, Esquire of Thompson Hine LLP.

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SUE L. ROBINSON, United States District Judge.


Plaintiffs INVISTA North America S.à.r.l. (" Invista" ) and Auriga Polymers Inc.[1] (" Auriga" ) (collectively, " plaintiffs" ) sued M& G USA Corporation and M& G Polymers USA, LLC (collectively, " defendants" ) for infringement of U.S. 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) Defendants asserted counterclaims seeking declaratory judgment of non-infringement and invalidity of the patents-in-suit. (D.I. 42)

In a memorandum opinion and order dated June 25, 2013, the court resolved several summary judgment motions.[2] (D.I. 382; D.I. 383) The parties proceeded to trial on July 18, 2013 on infringement of claim 4 and on the validity of several asserted claims of the '216 patent. At the close of evidence, the court granted plaintiffs' motion for judgment as a matter of law (" JMOL" ) regarding infringement of claim 4. On July 24, 2013, the jury returned a verdict that the '216 patent was valid. Currently before the court are several motions: defendants' renewed motions for JMOL on invalidity and non-infringement (D.I. 470; D.I. 473); plaintiffs' motion for an injunction (D.I. 467); defendants' motion for leave to file amended pleadings (D.I. 365); defendants' motion for reargument of the court's July 16, 2013 oral order (D.I. 444); and the parties' motions for attorney fees (D.I. 451; D.I. 452; D.I. 455). The court has jurisdiction over these matters pursuant to 28 U.S.C. § 1338.


A. Technology Overview

Plastic polymers are commonly used for making food and beverage containers and

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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, 1:25-27) Polymers are synthesized by reacting monomers to form a larger polymer chain, and made into bottles by a method called stretch blow molding, wherein the polymer resin is typically dried, melted and extruded into preforms. (7:56-58) The preforms are then heated and blown-molded into bottles of desired shape and size. (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. (2:34, 8:16) Polyesters can be prepared by reacting diesters (e.g., dicarboxylic ester) or diacids (e.g., terephthalic acid) with ethylene glycol (" EG" ). (3:27-31). Because of polyesters' inferior gas-barrier properties, these materials limit the shelf life of oxygen-sensitive foods, condiments, and beverages (such as juice, soda, or beer). (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. (1:31-38) Partially aromatic polyamides have non-scavenging, or " passive," barrier properties, meaning they restrict carbon dioxide leakage from, and oxygen intrusion into, a container by obstructing the paths of gas molecules. (1:21) However, partially aromatic polyamides are not miscible with polyesters like PET, and they also give containers an undesirable yellow and hazy appearance. (1:44-46)

It was commonly known in the art that combining a thin layer of a partially aromatic polyamide, like MXD6,[3] with one or more layers of polyester in multilayer bottles increased barrier properties. (1:35-43) This multilayer system, however, produced bottles with undesirable haze. (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. (2:32-48)

B. The '216 Patent

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, 2:55-61, 2:65-3:13) The invention is useful as packaging for oxygen-sensitive foods that require a long shelf life. (2:55-67) The '216 patent discloses a three component composition. Claim 1 of the '216 patent recites:

A composition for containers comprising:
a copolyester comprising a metal sulfonate salt;
a partially aromatic polyamide;
and a cobalt salt.

Dependant claim 4 recites " [t]he composition of claim 1, wherein said cobalt salt is present in a range from about 20 to about 500 ppm of said composition."

The " copolyester comprising a metal sulfonic salt" is termed a " compatibilizer." A metal sulfonate salt discussed in the '216 patent is 5-sulfoisophthalic acid (" SIPA" ). (8:41)


A. Renewed Motion for Judgment as a Matter of Law

To prevail on a renewed motion for judgment as a matter of law following a

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jury trial, the moving party " 'must show that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusions implied [by] the jury's verdict cannot in law be supported by those findings.'" Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed. Cir.1998) (quoting Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893 (Fed. Cir.1984)). " 'Substantial' evidence is such relevant evidence from the record taken as a whole as might be acceptable by a reasonable mind as adequate to support the finding under review." Perkin -Elmer Corp., 732 F.2d at 893. In assessing the sufficiency of the evidence, the court must give the non-moving party, " as [the] verdict winner, the benefit of all logical inferences that could be drawn from the evidence presented, resolve all conflicts in the evidence in his favor, and in general, view the record in the light most favorable to him." Williamson v. Consol. Rail Corp., 926 F.2d 1344, 1348 (3d Cir. 1991); Perkin -Elmer Corp., 732 F.2d at 893. The court may not determine the credibility of the witnesses nor " substitute its choice for that of the jury between conflicting elements of the evidence." Perkin -Elmer Corp., 732 F.2d at 893. In sum, the court must determine whether the evidence reasonably supports the jury's verdict. See Dawn Equip. Co. v. Kentucky Farms Inc., 140 F.3d 1009, 1014 (Fed. Cir. 1998).

B. Motion for a New Trial

Federal Rule of Civil Procedure 59(a) provides, in pertinent part:

A new trial may be granted to all or any of the parties and on all or part of the issues in an action in which there has been a trial by jury, for any of the reasons for which new trials have heretofore been granted in actions at law in the courts of the United States.

Fed. R. Civ. P. 59(a). The decision to grant or deny a new trial is within the sound discretion of the trial court and, unlike the standard for determining judgment as a matter of law, the court need not view the evidence in the light most favorable to the verdict winner. See Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 36, 101 S.Ct. 188, 66 L.Ed.2d 193 (1980); Olefins Trading, Inc. v. Han Yang Chem. Corp., 9 F.3d 282 (3d Cir. 1993); LifeScan Inc. v. Home Diagnostics, Inc., 103 F.Supp.2d 345, 350 (D. Del. 2000) (citations omitted); see also 9A Wright & Miller, Federal Practice and Procedure § 2531 (2d ed. 1994) (" On a motion for new trial the court may consider the credibility of witnesses and the weight of the evidence." ). Among the most common reasons for granting a new trial are: (1) the jury's verdict is against the clear weight of the evidence, and a new trial must be granted to prevent a miscarriage of justice; (2) newly-discovered evidence exists that would likely alter the outcome of the trial; (3) improper conduct by an attorney or the court unfairly influenced the verdict; or (4) the jury's verdict was facially inconsistent. See Zarow-Smith v. N.J. Transit Rail Operations, 953 F.Supp. 581, 584-85 (D.N.J.1997) (citations omitted). The court must proceed cautiously, mindful that it should not simply substitute its own judgment of the facts and the credibility of the witnesses for those of the jury. Rather, the court should grant a new trial on the basis that the verdict was against the weight of the evidence only where a miscarriage of justice would result if the verdict were to stand. See Williamson, 926 F.2d at 1352; EEOC v. Del. Dep't of Health & Soc. Servs., 865 F.2d 1408, 1413 (3d Cir. 1989).

C. Motion for Reconsideration or Amendment of the Judgment

A motion for reconsideration is the " functional equivalent" of a motion to

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alter or amend judgment under Federal Rule of Civil Procedure 59(e). See Jones v. Pittsburgh Nat'l Corp., 899 F.2d 1350, 1352 (3d Cir. 1990) (citing Fed. Kemper Ins. Co. v. Rauscher, 807 F.2d 345, 348 (3d Cir. 1986)). The standard for obtaining relief under Rule 59(e) is difficult to meet. The purpose of a motion for reconsideration is to " correct manifest errors of law or fact or to present newly discovered evidence." Max's Seafood Cafe ex rel. Lou-Ann, Inc. v. Quinteros, 176 F.3d 669, 677 (3d Cir. 1999). A court should exercise its discretion to alter or amend its judgment only if the movant demonstrates one of the following: (1) a change in the controlling law; (2) a need to correct a clear error of law or fact or to prevent manifest injustice; or (3) availability of new evidence not available when the judgment was granted. See id. A motion for reconsideration is not properly grounded on a request that a court rethink a decision already made and may not be used " as a means to argue new facts or issues that inexcusably were not presented to the court in the matter previously decided." Brambles USA, Inc. v. Blocker, 735 F.Supp. 1239, 1240 (D. Del. 1990); see also Glendon Energy Co. v. Borough of Glendon, 836 F.Supp. 1109, 1122 (E.D. Pa. 1993).


A. Defendants' Renewed JMOL Motion on Non-Infringement

1. Standard

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." Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1320 (Fed. Cir. 2009) (internal quotation marks omitted). " 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 quotations omitted). The patent owner has the burden of proving infringement and must meet its burden by a preponderance of the evidence. See SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988) (citations omitted).

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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 [their] actions would induce actual infringements." DSU Med. Corp. v. JMS Co., Ltd., 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 Technologies, Inc. v. Flakt, Inc., 6 F.3d 770, 774 (Fed. Cir. 1993).

2. Analysis

A motion for JMOL will be granted when " a party has been fully heard on an issue and there is no legally sufficient evidentiary basis for a reasonable jury to find for that party on that issue." Fed.R.Civ.P. 50(a). Defendants renew their motion for JMOL on the issue of non-infringement [4] (D.I. 473), arguing that the court improperly granted plaintiff's motion for JMOL at trial, as it was clear error of law to: (1) exclude the testimony of defendants' witness, Steven Ryba; (2) prohibit defendants from rebutting plaintiffs' expert, Dr. Turner's testimony; and (3) allow Dr. Turner to testify as to the FDA documents. Defendants also assert that plaintiffs did not introduce any evidence for a reasonable juror to find indirect infringement.

With respect to infringement of claim 4, plaintiffs sought to prove whether defendants' accused products satisfied the additional limitation of claim 4, that the cobalt salt be present in a range from about 20 to about 500 ppm of the composition. ('216 patent, 13:39-41) Plaintiffs' expert testified regarding the range of cobalt salt in the accused products. (D.I. 543 at 441:24-445:13, 447:4-449:3, 449:5-450:12) Defendants moved for JMOL of non-infringement, alleging that plaintiffs had not offered evidence (only conclusory statements) on the amount of salt. (D.I. 543 at 515:24-518:20) The court then heard argument and requested statements from the parties on the admissibility of defendants' anticipated defense and evidence. (D.I. 543 at 518:21-540:21) After reviewing the statements, the court excluded certain testimony and evidence. (D.I. 431; D.I. 432; D.I. 544 at 548:7-549:12) Pursuant to the exclusions, defendants' expert testified that he had no opinion as to the amount of cobalt salt in the final accused products. (D.I. 544 at 612:13-16)

At the close of evidence, the court granted plaintiffs' motion for JMOL, finding that defendants indirectly infringed claim 4. The court declines to revisit the evidentiary decisions made during the course of

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trial as to the evidence allowed or excluded. The court did not arrive at these decisions lightly, indeed, the court entertained both argument and briefing on these issues. The court reached its decision based on the admissible evidence described above. (D.I.545 at 977:8-978:23) Defendants now offer attorney argument to analyze plaintiffs' expert testimony at trial and argue that it does not support the conclusion that the cobalt salt is present in the specified range. However, plaintiffs' expert testified based on defendants' core technical documents, which defendants confirmed were accurate.

Defendants rely on the same arguments described above to move for reconsideration or amendment of the judgment. Defendants request that the court rethink its decisions on the evidentiary issues at trial, precisely the type of request that is not properly the grounds for such a motion. Neither have defendants shown a " manifest injustice." Defendants' renewed motion for JMOL of non-infringement is denied.

B. Defendants' Renewed JMOL Motion on Invalidity

Defendants advance several arguments in support of the renewed motion for JMOL. Defendants assert that " a reasonable jury considering all of the evidence would find by clear and convincing evidence that each of the [a]sserted [c]laims are invalid under 35 U.S.C. § 103 as obvious in view of the cited prior art." Defendants also argue that each of the limitations was present in the prior art and a person of ordinary skill [5] would have been motivated to combine the prior art references. Further, according to defendants, plaintiffs did not " rebut [defendants] strong showing of obviousness," relying on expert testimony that was " conclusory, outside the scope of his expert report, or unsupported by the evidence." Finally, plaintiffs allegedly did not show any secondary considerations of nonobviousness, including a nexus between the claimed features and any unexpected results or commercial success. (D.I. 471 at 6)

Defendants' motion focuses on three combinations: (1) European Patent Application No. 0301719 (DTX 268, " the '719 reference" ) and Japanese Patent No. 2663578 (DTX 314, " the '578 patent" ); (2) International Patent Application No. WO 98/13266 (DTX 109, " the '266 reference" ) and the '578 patent; and (3) International Application No. WO 91/17925 (DTX 9, the '925 reference" ) and International Application No. WO 03/080731 (DTX 107, " the '731 reference" ). The prior art references were before the U.S. Patent and Trademark Office (" PTO" ) during prosecution, with the exception of the '925 reference. The full ...

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