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Plastic Omnium Advanced Innovation and Research v. Donghee America, Inc.

United States District Court, D. Delaware

November 6, 2017


          Chad S.C. Stover and Regina S.E. Murphy, BARNES & THORNBURG LLP, Wilmington, DE Robert C. Mattson, Eric W. Schweibenz, Frank J. West, Vincent K. Shier, Christopher Ricciuti, and Katherine D. Cappaert, OBLON, McCLELLAND, MAIER & NEUSTADT, L.L.P., Alexandria, VA Attorneys for Plaintiff.

          Philip A. Rovner and Jonathan A. Choa, POTTER ANDERSON & CORROON LLP, Wilmington, DE Alyssa Caridis, ORRICK, HERRINGTON & SUTCLIFFE LLP, Los Angeles, CA Nicholas H. Lam, ORRICK, HERRINGTON & SUTCLIFFE LLP, New York, NY Attorneys for Defendants.


          STARK, U.S. District Judge

         Plaintiff Plastic Omnium Advanced Innovation and Research ("Plastic Omnium" or "Plastic") brought this patent infringement suit against Defendants Donghee America, Inc. and Donghee Alabama, LLC (together, "Donghee"), alleging that Donghee's manufacture and sale of certain automotive fuel tanks infringes Plastic's U.S. Patent Nos. 6, 814, 921 (the "'921 patent"); 6, 866, 812 (the "'812 patent"); 7, 166, 253 (the '"253 patent"); 8, 122, 604 (the "'604 patent")[1]; 8, 163, 228 (the "'228 patent"); 9, 079, 490 (the "'490 patent"); 9, 399, 326 (the "'326 patent"); and 9, 399, 327 (the "'327 patent"). (See generally D.I. 1, 14) The asserted patents generally relate to methods for manufacturing automotive fuel tanks; they describe and claim processes "known in the industry as 'twin-sheet blow molding' or 'TSBM.'" (D.I. 14 at 3)

         Presently before the Court is the issue of claim construction. The parties submitted technology tutorials (see D.I. 81, 86), and claim construction briefs (see D.I. 84, 85, 102, 105). The Court held a claim construction hearing on September 6, 2017, at which both sides presented oral argument. (See D.I. 184 ("Tr."))


         The ultimate question of the proper construction of a patent is a question of law. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 837 (2015) (citing Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-91 (1996)). "It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Phillips v. AWHCorp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotation marks omitted).

         "[T]here is no magic formula or catechism for conducting claim construction." Id. at 1324. Instead, the court is free to attach the appropriate weight to appropriate sources "in light of the statutes and policies that inform patent law." Id.

         "[T]he words of a claim are generally given their ordinary and customary meaning ... [which is] the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a claim term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1321 (internal quotation marks omitted). The patent specification "is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).

         While "the claims themselves provide substantial guidance as to the meaning of particular claim terms, " the context of the surrounding words of the claim also must be considered. Phillips, 415 F.3d at 1314. Furthermore, "[o]ther claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment... [b]ecause claim terms are normally used consistently throughout the patent. ..." Id. (internal citation omitted).

         It is likewise true that "[differences among claims can also be a useful guide .... For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Id. at 1314-15 (internal citation omitted). This "presumption is especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is urging that the limitation in the dependent claim should be read into the independent claim." SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).

         It is also possible that "the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs." Phillips, 415 F.3d at 1316. It bears emphasis that "[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction." Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (quotingLiebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)) (internal quotation marks omitted).

         In addition to the specification, a court "should also consider the patent's prosecution history, if it is in evidence." Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996). The prosecution history, which is "intrinsic evidence, " "consists of the complete record of the proceedings before the PTO [Patent and Trademark Office] and includes the prior art cited during the examination of the patent." Phillips, 415 F.3d at 1317. "[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id.

         In some cases, "the district court will need to look beyond the patent's intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period." leva, 135 S.Ct. at 841. Extrinsic evidence "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980. For instance, technical dictionaries can assist the court in determining the meaning of a term to those of skill in the relevant art because such dictionaries "endeavor to collect the accepted meanings of terms used in various fields of science and technology." Phillips, 415 F.3d at 1318. In addition, expert testimony can be useful "to ensure that the court's understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field." Id. Nonetheless, courts must not lose sight of the fact that "expert reports and testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence." Id. Overall, while extrinsic evidence "may be useful" to the court, it is "less reliable" than intrinsic evidence, and its consideration "is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." Id. at 1318-19. Where the intrinsic record unambiguously describes the scope of the patented invention, reliance on any extrinsic evidence is improper. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Or. 1999) (citing Vitronics, 90 F.3datl583).

         Finally, "[t]he construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Renishaw PLC v. Marposs Societa'per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would exclude the inventor's device is rarely the correct interpretation." Osram GmbH v. Int'l Trade Comm % 505 F.3d 1351, 1358 (Fed. Cir. 2007) (quoting Modine Mfg. Co. v. U.S. Int'l Trade Comm'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).


         A. Parison Terms

         (1) "extruded parison of closed cross section"[2]

         (2) "extruding a [multilayered] parison"[3]

Plastic Omnium

(1) "an extruded plastic body having a closed cross section"

(2) "extruding a [ multilayered] plastic body having a closed cross section"


(1) "a plastic tube with a closed cross section formed by forcing plastic through a die"

(2) "forcing plastic through a die head to form a plastic tube [of multiple layers] with a closed cross section"


(1) "a tubular preform with a closed cross-section that has been forced through a die, and is cut or split as it exits the die or at some time thereafter"

(2) "a [ multilayered] tubular preform with a closed cross-section that has been forced through a die, and is. cut or split as it exits the die or at some time thereafter"

         There is no disagreement between the parties as to the "ordinary and customary" meaning of the term "parison." (See, e.g., D.I. 85 at 5-6, D.I. 105 at 2) As Plastic states, the term refers to a "hollow plastic tube exiting the die of an extrusion head." (D.I. 105 at 2) Donghee, citing the two patents' disclosures, as well as technical encyclopedias and dictionaries, contends that this definition should play a prominent role here. (See D.I. 85 at 4-6) In Plastic's view, however, Donghee "conflat[es] the use of the term 'parison' in conventional blow molding with the use of the term 'parison' in Plastic Omnium's improved and novel... process." (D.I. 84 at 3) Plastic urges the Court to find that the "conventional definition of 'parison' does not apply to the asserted patents." (D.I. 105 at 2)

         More specifically, Plastic argues that here the term "parison" should not be construed to require that "a traditional, plastic test-tube like structure ... be formed outside of the extrusion head/die." (D.I. 84 at 3) Instead, according to Plastic, the relevant technology "uses a traditional extrusion head to form a parison that is split or cut into two sheets of plastic as it is being extruded."" (Id.) (emphasis added) Thus, the "extruded parison" here "refers to the preform shape that is intended to be split or cut into two sheets." (D.I. 105 at 5)

         "To act as its own lexicographer, a patentee must clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning." Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012) (internal quotation marks omitted). This "clear expression" may be "inferred from clear limiting descriptions of the invention in the specification or prosecution history." Id.; see also Phillips, 415F.3datl313 ("Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.").

         The Court agrees with Plastic that the '921 and '812 patents do not use the term "parison" is its conventional, plain and ordinary meaning. Instead, among other things, the patents specify that the "parison" is cut in two as it leaves the die at the end of the extrusion head. (See, e.g., '921 patent at 3:24-27; '812 patent at 2:46-47) In this context, this "parison" cannot be strictly limited ...

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