United States District Court, D. Delaware
MEMORANDUM AND ORDER
F. BATAILLON SENIOR UNITED STATES DISTRICT JUDGE
matter is before the Court on the objections by New NGC,
Inc., (hereinafter “NGC”), D.I. 115, to the
report and recommendations (“R&R”), D.I. 114,
of the Magistrate Judge Sherry Fallon, who denied NGC's
various requests for claim construction. This is a patent
infringement case. United States Gypsum Company
(“USGC”) filed a complaint against NGC for patent
infringement. The technology in question relates to
gypsum-containing products, such as gypsum wallboard, having
an increased resistance to deformation, and to compositions
and methods for producing such products.
to 28 U.S.C. § 636(b), Fed. R. Civ. P.
72(b), and D. Del. LR 72.1, findings and
recommendations are viewed de novo by this Court.
Princeton Digital Image Corp. v. Konami Digital
Entm't Inc., 2017 WL 1196642, at *1 (D. Del. Mar. 30,
2017) (citing St. Clair Intellectual Prop.
Consultants, Inc. v. Matsushita Elec. Indus. Co., Ltd., 691
F.Supp.2d 538, 541-42 (D. Del. 2010)); see also
28 U.S.C. § 636(b)(1).
USGC are competitors in most aspects of the gypsum wallboard
materials. The magistrate judge previously stated:
This action arises primarily from NGC's alleged
infringement of a breakthrough patent technology in the
formulation of gypsum wallboard. The key ingredient-the
“enhancing material”-refers to a class of
phosphorus-containing compounds that provide surprising
improvements in sag resistance, strength, and dimensional
stability of gypsum wallboards. USGC uses a patented method
containing sodium trimetaphosphate (“STMP”) as
its enhancing material. The use of STMP in USGC's
wallboards significantly improves the quality of its
products, virtually eliminates a long time problem of sagging
boards under moisture and humidity exposure, and reduces the
weight of USGC's Sheetrock brand wallboard. “In
addition to improving product performance, the patented
technology also reduces manufacturing, transportation, and
handling costs.” (footnotes omitted).
D.I. 20, at 2-3 (citing D.I. 14, at 2-3).
gave notice to NGC of the infringement. The parties attempted
to resolve their issues but could not reach an agreement. On
February 6, 2017, USGC filed a complaint alleging that NGC
manufactures products that infringe United States Patent Nos.
6, 342, 284 (“the ‘284 patent”); 6, 632,
550 (“the ‘550 patent”); 7, 425, 236
(“the ‘236 patent”); 7, 758, 980
(“the ‘980 patent”); 7, 964, 034
(“the ‘034 patent”); 8, 142, 914
(“the ‘914 patent”); and 8, 500, 904
(“the ‘904 patent”) (collectively the
“patents-in-suit”). D.I. 1, Complaint.
construction determinations in an R&R are reviewed de
novo. See St. Clair Intellectual Prop.
Consultants, Inc. v. Matsushita Elec. Indus. Co., 691
F.Supp.2d 538, 542 (D. Del. 2010); 28 U.S.C. §
636(b)(1); Fed. R. Civ. P. 72(b)(3).
objects to three claim constructions determined by the
magistrate judge: “Objection 1: The “Enhancing
Material” Construction Contradicts And Is Not Supported
By The Specification; Objection 2: The R&R's
Construction Of “About 0.1 Inch” Improperly
Ignores The Intrinsic Evidence In Favor Of Extrinsic
Evidence; and Objection 3: The R&R's Conclusion That
‘When…Cast In The Form Of ½ Inch Gypsum
Board' Is Not Indefinite Is Erroneous.” D.I. 115 at
1, 5, 7.
magistrate judge conducted a three-hour Markman
hearing and filed her R&R. D.I. 114; Minute entry July
18, 2018. Markman v. Westview Instruments, Inc., 517 U.S.
370, 388-90 (1996). With regard to the defendant's
first objection, the magistrate determined that
“enhancing materials” was construed to mean:
“phosphoric acids, each of which comprises 1 or more
phosphoric acid units; salts or ions of condensed phosphates,
each of which comprises 2 or more phosphate units; and
monobasic salts or monovalent ions of orthophosphates.”
D.I. 114 at 10. She based this determination on the weight of
the intrinsic evidence, the language and specifications of
the patents-in-suit, and the applicable law. NGC objects to
the findings, contending the magistrate incorrectly included
phosphoric acid which should be excluded from the list of
possible enhancing materials. USGC disagrees and contends
that the magistrate judge correctly found that Table 13 (D.I.
7, Ex. C) demonstrates that phosphoric acid in a gypsum
slurry significantly improves compressive strength. The Court
has carefully reviewed the findings of the magistrate judge
de novo and finds them to be correct as a matter of fact and
law. Accordingly, the Court will adopt the findings and
recommendations of the magistrate judge as to this term
regard to the second objection, claim construction concerning
“about .1 inch, ” NGC argues that the variation
between this construction instead of .11 “injects an
extraordinary degree of variation ( 25%) into a critical
limitation.” D.I. 115 at 5. The magistrate judge
construed the claim term to include the ASTM sag resistance
values of less than 0.125 inch. The Court finds the
magistrate's use of “about” “avoids a
strict numerical boundary for the specified parameter,
” and its meaning “depends on the technological
facts of the particular case.” Pall Corp. v. Micron
Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995).
The Court further finds the magistrate judge properly
reviewed the patent specifications, the intrinsic evidence,
and the extrinsic evidence where relevant and agrees with the
magistrate judge's claim construction.
the third objection, NGC argues that the magistrate judge
credited USCG's expert and gave no weight to the expert
of NGC. USCG argues that the magistrate judge correctly
discredited certain parts of NGC's expert regarding board
thickness. The magistrate judge determined that the claim did
not require construction and is not indefinite. She further
determined “that a person of ordinary skill in the art
would be able to evaluate whether an accused slurry, product,
or method infringes a formulation used for 5/s inch
boards.” D.I. 114 at 21. The Court has carefully
reviewed the findings of the magistrate judge de novo and