KNAUF INSULATION LLC KNAUF INSULATION KNAUF INSULATION SPRL v. JOHNS MANVILLE CORPORATION JOHNS MANVILLE INC (2024)

ORDER ON CROSS-MOTIONS FOR PARTIAL SUMMARY JUDGMENT AND TO ADOPT CLAIM CONSTRUCTIONS, AND PARTIES’ MOTIONS TO RECONSIDER

This patent infringement case is before the Court on cross-motions for partial summary judgment and to adopt the construction of patent terms relevant to the design and manufacture of fiberglass insulation (the “Cross-Motions”) (Filing No. 825; Filing No. 842). Plaintiffs Knauf Insulation, LLC, Knauf Insulation GmbH, and Knauf Insulation SPRL (collectively, “Knauf”) brought this patent infringement action against Defendants Johns Manville Corporation and Johns Manville, Inc.’s (together, “JM”), alleging that fiberglass insulation products sold by JM infringe Knauf's patents. The parties submitted comprehensive briefs and exhibits concerning the issues on which they seek partial summary judgment and the proper construction of disputed terms and phrases of the patents at issue: U.S. Design Patent No. D631,670 (the “’670 Patent”); U.S. Patent No. 8,114,210 (the “’210 Patent”); U.S. Patent No. 8,940,089 (the “’089 Patent”); U.S. Patent No. 9,039,827 (the “’827 Patent”); U.S. Patent No. 9,464,207 (the “’207 Patent”); U.S. Patent No. 9,828,287 (the “’287 Patent”); U.S. Patent No. 9,926,464 (the “’464 Patent”). Following the parties’ submission of briefs and exhibits, the Court held a combined summary judgment and Markman hearing, during which both parties presented oral argument on all issues raised in their briefs.

Also before the Court are the parties’ Motions to Reconsider the Court's March 31, 2023 Entry on Plaintiffs’ Motion in Limine (Filing No. 1086; Filing No. 1099). For the reasons explained below, Knauf's Cross-Motion is granted in part and denied in part, JM's Cross-Motion is granted in part and denied in part, and the parties’ Motions to Reconsider are both denied without prejudice to refile.

I. RELEVANT BACKGROUND 1

Knauf and JM are competitors in the fiberglass insulation industry. Fiberglass insulation, broadly speaking, is made from glass fibers held together by a binder. In 2008, Knauf launched its patented ECOSE® insulation products (Filing No. 826 at 10). Whereas earlier fiberglass insulation binders contained formaldehyde, the binder in ECOSE® products is formaldehyde-free. The type of binder used by Knauf results in its ECOSE® products having a swirly, brownish appearance. Id.; (Filing No. 843 at 25). Knauf owns several patents related to its ECOSE® insulation products, six of which are utility patents (the ’210, ’089, ’827, ’207, ’287, and ’464 Patents) and one of which is a design patent for the ornamental appearance of the insulation (the ’670 Patent).

In 2012, JM began producing fiberglass insulation products that also use formaldehyde-free binders (Filing No. 843 at 28). On January 27, 2015, Knauf initiated the instant litigation alleging that JM's insulation products infringe Knauf's patents in suit (Filing No. 1). Knauf is asserting eleven patent claims from the six utility patents and the sole claim of the design patent. JM has asserted affirmative defenses to Knauf's claims and counterclaims seeking declaratory judgments as to non-infringement, invalidity, unenforceability, false marking, and bad faith assertion of a patent infringement claim.

Following initiation of the lawsuit, JM petitioned for numerous inter partes review (“IPR”), reexamination proceedings, and appeals before the Patent Trial and Appeals Board (“PTAB”) and the Federal Circuit Court of Appeals related to the patents in suit, which resulted in stays of these proceedings (Filing No. 826; see, e.g., Filing No. 40; Filing No. 154; Filing No. 674; Filing No. 713). On June 19, 2015 and November 2, 2015, JM petitioned to initiate IPR proceedings regarding the ’670 Patent (Filing No. 843 at 27). The petitions were granted, and the PTAB issued a written claim construction for the ’670 Patent and held that the ’670 Patent was not invalid based on the prior art presented during the proceedings. Id. On appeal, following oral argument, the Federal Circuit affirmed the PTAB's decision. Id.

In its September 30, 2019 Order, the Court noted that certain issues of claim construction and invalidity were inextricably intertwined and therefore directed the parties to file motions and briefing addressing both claim construction issues and any summary judgment issues (Filing No. 578). Pursuant to the Court's order, the parties submitted their combined motions and briefing in March, April, and May 2022 (Filing No. 826; Filing No. 843; Filing No. 862). On June 17, 2022, the Court held a combined summary judgment and Markman hearing (the “Markman hearing”) (Filing No. 897). In support of its Cross-Motion, and for purposes of trial, JM cites several prior art references, which Knauf challenges on a variety of grounds.

The Court has also recently ruled on several pre-trial motions, including several motions in limine. On March 31, 2023, the Court granted in part and denied in part a Motion in Limine filed by Knauf to preclude certain opinions by two of JM's experts, Dr. Christopher Pastore and Dr. Susan Kare (Filing No. 1062). Both parties have moved the Court to reconsider parts of that entry.

II. LEGAL STANDARDS

A. Summary Judgment

The purpose of summary judgment is to “pierce the pleadings and to assess the proof in order to see whether there is a genuine need for trial.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). Federal Rule of Civil Procedure 56 provides that summary judgment is appropriate if “the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.” Hemsworth v. Quotesmith.com, Inc., 476 F.3d 487, 489–90 (7th Cir. 2007). In ruling on a motion for summary judgment, the court reviews “the record in the light most favorable to the non-moving party and draw[s] all reasonable inferences in that party's favor.” Zerante v. DeLuca, 555 F.3d 582, 584 (7th Cir. 2009) (citation omitted). “However, inferences that are supported by only speculation or conjecture will not defeat a summary judgment motion.” Dorsey v. Morgan Stanley, 507 F.3d 624, 627 (7th Cir. 2007) (citation and quotation marks omitted). Additionally, “[a] party who bears the burden of proof on a particular issue may not rest on its pleadings, but must affirmatively demonstrate, by specific factual allegations, that there is a genuine issue of material fact that requires trial.” Hemsworth, 476 F.3d at 490 (citation omitted). “The opposing party cannot meet this burden with conclusory statements or speculation but only with appropriate citations to relevant admissible evidence.” Sink v. Knox Cnty. Hosp., 900 F. Supp. 1065, 1072 (S.D. Ind. 1995) (citations omitted).

“In much the same way that a court is not required to scour the record in search of evidence to defeat a motion for summary judgment, nor is it permitted to conduct a paper trial on the merits of [the] claim.” Ritchie v. Glidden Co., 242 F.3d 713, 723 (7th Cir. 2001) (citations and quotation marks omitted). “[N]either the mere existence of some alleged factual dispute between the parties nor the existence of some metaphysical doubt as to the material facts is sufficient to defeat a motion for summary judgment.” Chiaramonte v. Fashion Bed Grp., Inc., 129 F.3d 391, 395 (7th Cir. 1997) (citations and quotation marks omitted).

These same standards apply even when each side files a motion for summary judgment. The existence of cross-motions for summary judgment does not imply that there are no genuine issues of material fact. R.J. Corman Derailment Serv., LLC v. Int'l Union of Operating Eng'rs, 335 F.3d 643, 647 (7th Cir. 2003). The process of taking the facts in the light most favorable to the non-moving party, first for one side and then for the other, may reveal that neither side has enough to prevail without a trial. Id. at 648. “With cross-motions, [the Court's] review of the record requires that [the Court] construe all inferences in favor of the party against whom the motion under consideration is made.” O'Regan v. Arb. Forums, Inc., 246 F.3d 975, 983 (7th Cir. 2001) (citation and quotation marks omitted).

B. Claim Construction

“Victory in an infringement suit requires a finding that the patent claim covers the alleged infringer's product or process, which in turn necessitates a determination of what the words in the claim mean.” Markman v. Westview Instruments, Inc., 517 U.S. 370, 374 (1996) (citation and quotation marks omitted). The construction of patent claims, which requires determining the meaning and scope of the claims, is a matter of law for the court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 988 (Fed. Cir. 1995), aff'd 517 U.S. 370. The Federal Circuit has explained, “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. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (citations and quotation marks omitted); see also Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“First, we look to the words of the claims themselves ․ to define the scope of the patented invention.”).

The words in patent claims are “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.” Phillips, 415 F.3d at 1312–13 (citations omitted); see also Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004) (“customary meaning” refers to the “customary meaning in [the] art field”). “In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words.” Phillips, 415 F.3d at 1314.

There are two exceptions to the general rule of applying the ordinary meaning to claim terms: “1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). To become one's own lexicographer, “a patentee must clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning.” Id. (citation and quotation marks omitted). “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments[;] the patentee must ‘clearly express an intent’ to redefine the term.” Id. (citation omitted). Additionally, “[t]he patentee may demonstrate an intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002).

When interpreting claim terms, the court first looks to the intrinsic evidence, which includes the claims themselves, the specification, and the prosecution history. See Interactive Gift Express, Inc. v. CompuServe Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (“[I]n interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history. Such intrinsic evidence is the most significant source of the legally operative meaning of disputed claim language.”). And within that intrinsic evidence, courts first “look to the claim language.” Id. When reviewing the claims, the specification, or the prosecution history, if these intrinsic sources define a claim term, that definition shall apply even if it differs from the term's ordinary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366–67 (Fed. Cir. 2002). Although claims must be read in light of the specification, the court should not limit a claim by restricting its scope based on a preferred embodiment within the specification. Phillips, 415 F.3d at 1323. “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.” Id. at 1313.

In addition to relying on intrinsic evidence in ascertaining the scope of an invention's claim, the court also may look to extrinsic evidence, which includes evidence outside of the patent and prosecution history such as expert testimony, dictionaries, and learned treatises. Id. at 1317; see also Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999). Courts may “rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents.” Phillips, 415 F.3d at 1322–23 (internal citation omitted).

III. DISCUSSION

Both parties request summary judgment on several issues related to their respective claims and defenses and request that the Court adopt certain constructions for several disputed claim terms. The parties have also asked the Court to reconsider, in part, its March 31, 2023 Entry on Plaintiffs’ Motion in Limine. The Court will address all of the parties’ disputes in the following order: (A) Knauf's Motion to Exclude Evidence; (B) the parties’ arguments related to the ’670 Design Patent, including dispositive claim construction issues; (C) the parties’ summary judgment arguments related to the ’210, ’089 and ’827 Patents; (D) the parties’ arguments related to the ’207 and ’464 Patents, including dispositive claim construction issues; (E) Knauf's motion for summary judgment on JM's counterclaim for false marking; (F) the construction of remaining disputed claim terms; and (G) the parties’ Motions to Reconsider.

A. Knauf's Motion to Exclude Design Prior Art

Within its Cross-Motion, Knauf moves to exclude certain prior art references cited by JM because these references were purportedly not included in JM's Final Election of Asserted Prior Art and violate the Court's September 30, 2019 Order (“Final Election Order”), which states “Defendant shall file a Final Election of Asserted Prior Art, which shall identify no more than six asserted prior art references per patent from among the previously identified claims” (Filing No. 578 at 2). Knauf states that “JM initially complied and cited only six references for the D’670 patent,” but has improperly cited several more in its Cross-Motion (Filing No. 826). Specifically, Knauf seeks to exclude 16 references:

JM Cerachrome felt 1 and 2, JM's Cerachrome board, JM Foil-Faced Fiberglass, JM Microlite, JM SpinGlass 1997, JM SpinGlass 2000, Knauf Timberframe, Owens Corning Propink, Soundproof Handyman, Knauf Crown Floor Slabs, Owens Corning OC2006 report, Owens Corning OC2007 report, Isover, Foltz website, JM's Aerospace 1993 Brochure.

(Filing No. 826 at 11–12).

JM responds that the Final Election Order applies only to prior art references that JM asserts to invalidate the asserted patent claims, and that JM's Final Election of Asserted Prior Art asserts no more than six prior art references for purposes of arguing invalidity of the ’670 Patent. JM argues that it may assert the additional prior art cited in its Statement of Claims and Defenses “for any other permissible purpose,” including “ ‘background material relevant to the technology at issue’ and the ‘state of the art’ as well as to ‘establish what one of skill in the art would have known at the time of the invention’ ” (Filing No. 843 at 68–69). JM further argues that the additional prior art is admissible in arguing non-infringement of the ’670 Patent to “highlight the distinctions between the claimed design and the accused design as viewed by the ordinary observer.” Id. at 69.

On reply, Knauf contends that the Final Election Order limits the number of prior art references regardless of purpose (Filing No. 862 at 23–24). Knauf further states that it will be prejudiced if the Court allows the additional prior art references to be admitted because “Knauf focused its discovery efforts on those six [references] until the close of discovery.” Id.

As JM notes, several district courts have declined to strike undisclosed prior art references when those references are used only as “background” material, including references offered to provide historical context, to explain how disclosed references disclose required limitations, and to show the knowledge of personal or ordinary skill in the art (“POSITA”). See Fujifilm Corp. v. Motorola Mobility LLC, No. 12-cv-03587, 2015 WL 757575, at *30 (N.D. Cal. Feb. 20, 2015) (citing cases; distinguishing between prior art references offered “as background material, but not as anticipation or obviousness references”). This court, too, recently held that prior art references used for “background” purposes do not count toward a court-imposed limitation on prior art references. Boston Scientific Corp. v. Cook Grp. Inc., No. 17-cv-03448, 2022 WL 656907, at *2 (S.D. Ind. Mar. 3, 2022) (citing Fujifilm Corp., 2015 WL 757575, at *29 –30; British Telecomms. PLC v. IAC/InterActiveCorp, No. 18-366, 2020 WL 3047989, at *6 (D. Del. June 8, 2020)).

The United States Supreme Court has cautioned against limiting the use of prior art for purposes of establishing the knowledge and perspective of a POSITA. In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007), “the Supreme Court criticized a rigid approach to determining obviousness based on the disclosures of individual prior-art references, with little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). The Federal Circuit has also repeatedly noted that background prior art is important in establishing the knowledge and perspective of a POSITA. Randall Mfg., 733 F.3d at 1362 (describing prior art references used to establish knowledge and perspective of POSITA as “background references” and finding that the PTAB “failed to account for critical background information” by “narrowly focusing on the four prior-art references cited by the Examiner and ignoring the additional record evidence”).

In recognizing the role of common knowledge and common sense, [the court has] emphasized the importance of a factual foundation to support a party's claim about what one of ordinary skill in the relevant art would have known. One form of evidence to provide such a foundation, perhaps the most reliable because not litigation-generated, is documentary evidence consisting of prior art in the area.

Randall Mfg., 733 F.3d at 1362.

Background prior art references is likewise important in understanding the knowledge and perspective of an ordinary observer. Columbia Sportswear N. Am., Inc. v. Serius Innovative Accessories, Inc., 80 F.4th 1363, 1370 (Fed. Cir. 2023) (“In a design-patent infringement analysis, comparison prior art serves as background when comparing a claimed and accused design.”). Design patent infringement is considered from the perspective of “an ordinary observer, familiar with the prior art,” and “[t]he context in which the claimed and accused designs are compared, i.e., the background prior art, provides such a frame of reference and is therefore often useful in the process of comparison.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 677 (Fed. Cir. 2008) (emphasis added); Hangzhou Chic Intelligent Tech. Co. v. Gyoor, --- F. Supp. 3d ---, No. 20 C 4806, 2024 WL 148966, at *1 (N.D. Ill. Jan. 12, 2024) (describing comparison prior art as “contextual ‘background’ or a ‘frame of reference’ ” in design patent infringement dispute) (citing Egyptian Goddess, 543 F.3d at 678).

For all these reasons, the Court finds that to the extent JM uses the undisclosed prior art references for background purposes—including establishing the knowledge of a POSITA or ordinary observer—those prior art references do not count toward the limit in the Court's Final Election Order. The alleged prejudice to Knauf does not warrant exclusion of the undisclosed references, particularly in light of the significant value ascribed to those references by the Supreme Court and Federal Circuit. Accordingly, Knauf's Motion to Exclude the undisclosed prior art references is denied.

B. The ’670 Design Patent

Knauf alleges that thirty-three JM products (the “Accused Products”) infringe the ’670 Patent, which are referred to as JM Physical Sample (“PS”) 1–10, 12–17, 29–31, 33–38, 40–42, 44–48. JM contends that its Accused Products do not infringe the ’670 Patent and that the ’670 Patent is invalid. Both parties move for partial summary judgment on several issues. Knauf seeks summary judgment that JM is estopped by two IPR proceedings from using certain prior art references, including several physical samples of insulation, and that JM has not adequately shown that certain references constitute “prior art.” Knauf also seeks summary judgment on JM's affirmative defenses of improper inventorship and inequitable conduct. JM seeks summary judgment that the Accused Products do not infringe the ’670 Patent; that, if the Accused Products do infringe, that the ’670 Patent is invalid for anticipation and/or obviousness; and that the ’670 is invalid because its design is not patentable.

The Court will first address Knauf's arguments regarding the prior art references, then JM's arguments as to infringement, and lastly the parties’ arguments as to validity.

1. Knauf's Motions for Summary Judgment as to JM's Prior Art References

Knauf argues on summary judgment that IRP estoppel precludes JM from asserting several prior art references, and that JM has not adequately shown that the physical prior art references qualify as “prior art.”

a. IPR Estoppel

Knauf contends JM is estopped by two IPRs from relying on any prior art references actually raised in the IPRs, prior art brochures and advertising showing the appearance of JM's own products, and physical prior art products “where JM had brochures or advertisements for those products that either were or could have been asserted in the IPR proceedings” (Filing No. 826 at 25–26). IPR estoppel precludes a patent challenger from asserting that a claim is “invalid on any ground that the petitioner raised or reasonably could have raised during ․ inter partes review.” 35 U.S.C. § 315(e)(2). The party asserting estoppel bears the burden to show that estoppel applies. Wi-LAN Inc. v. LG Elecs., Inc., 421 F. Supp. 3d 911, 925 (S.D. Cal. 2019); CliniComp Int'l, Inc. v. Athenahealth, Inc., No. A-18-CV-00425-LY, 2020 WL 7011768, at *2 (W.D. Tex. Oct. 28, 2020) (“The moving party bears the burden of showing IPR estoppel.”).

JM asserts several arguments in response. First, physical prior art products cannot be used as prior art references in IPRs, so JM cannot be estopped from using prior art products here. Second, Knauf has failed to show that the brochures and advertisements at issue were reasonably available to JM at the time of the IPR. Third, even if the brochures could have been asserted in the IPR, they are not appropriate substitutes for the prior art products themselves. And fourth, Section 315(e)(2) applies only to anticipation and obviousness arguments, so “to the extent that JM relies on prior art references for any other purpose, it cannot be estopped on the basis of any IPR proceedings.” The Court agrees with JM that it is not estopped, but for slightly different reasons.

Starting with JM's second argument, the Court agrees that Knauf has failed to show that the brochures and advertisements were reasonably available to JM at the time of the IPRs. On reply, Knauf simply asserts that JM was “obviously aware of its own manuals” and thus could have reasonably raised them in the IPR. In making this argument, Knauf relies on Palomar Technologies, Inc. v. MRSI Sys., LLC, a case from the District of Massachusetts. 373 F. Supp. 3d 322 (D. Mass. 2019). In Palomar, the court stated that “Palomar contends that ․ because MRSI was obviously aware of its own manuals, it reasonably could have raised them as grounds for invalidity in the IPR.” Id. at 332 (emphasis added). The Palomar court never adopted Palomar's argument, though, and it ultimately found the IPR estoppel issue to be moot and declined to rule on it. Id. Knauf has offered no evidence showing that the specific brochures and advertisements at issue were reasonably available to JM in the IPRs, nor has Knauf offered any authority stating that a company's written materials are always “reasonably available” to that company simply because they are the company's own materials.

As to JM's first and third arguments, the Court concludes that IPR estoppel does not apply to the prior art products in this case, even though IPR estoppel may apply to prior art products in other circumstances. “Undisputedly, physical products ‘cannot be raised during IPR proceedings.’ ” Willis Elec. Co., Ltd. v. Polygroup Macau Ltd. (BVI), 649 F. Supp. 3d 780, 813 (D. Minn. 2023) (quoting Wasica Fin. GmnH v. Schrader Int'l, Inc., 432 F. Supp. 3d 448, 453 (D. Del. 2020)). IPR estoppel, then, at least generally, does not apply to physical device prior art. CliniComp, 2020 WL 7011768, at *2 (“Estoppel does not extend to other types of prior art, such as prior-art devices.”); SPEX Techs. Inc. v. Kingston Tech. Corp., No. SACV 16-01790 JVS (AGRx), 2020 WL 4342254, at *15 (C.D. Cal. June 16, 2020); IOENGINE, LLC v. PayPal Holdings, Inc., 607 F.Supp.3d 464, 489 (D. Del. 2022) (citation omitted) (“In general, IPR estoppel does not apply to device art, because ‘a petitioner cannot use an IPR to challenge the validity of a patent claim ․ based on prior art products or systems.’ ”).

Neither the Federal Circuit nor the Supreme Court has specifically addressed whether, or to what extent, IPR estoppel applies to physical products. District courts have applied different standards for IPR estoppel of prior art devices or products. See, e.g., Prolitec Inc. v. ScentAir Techs., LLC, No. 20-984, 2023 WL 8697973, at *22 (D. Del. Dec. 13, 2023) (describing the split among district courts as to whether IPR estoppel extends to device art that is materially identical to prior art in the form of patents or printed publications that were or could have been raised in the IPR). This court recently announced its position on the issue in Boston Scientific Corp. v. Cook Group Inc., 653 F. Supp. 3d 541 (S.D. Ind. 2023). In Boston Scientific, Judge Sweeney held that IPR estoppel applies to prior art products where: (1) the patent challenger relies “solely on otherwise estopped printed publications or patents to describe how a physical device works and then argue[s] that they are actually relying on a physical device”; or (2) the patent challenger is “relying on a physical device at the district court that is fully disclosed in an estopped patent or publication, [and] there is truly no substantive difference between the ground to be argued before the district court and the ground that was or reasonably could have been argued at the IPR.” Id. at 593–94 (emphasis in original) (citing Medline Indus., Inc. v. C.R. Bard, Inc., No. 17 C 7216, 2020 WL 5512132 (N.D. Ill. Sept. 14, 2020); and Wasica Fin. GmbH, 432 F. Supp. 3d 448).

In this case, JM is not using the prior art products as pretext for relying on otherwise estopped brochures and advertisements. To the contrary, JM refers to the prior art products precisely because their appearance cannot adequately be conveyed through the printed materials (Filing No. 843 at 70). For that same reason, the Court concludes that the physical device products are not fully disclosed in otherwise estoppel prior art references (Filing No. 826-17) (showing Spintex from a distance, installed in a wall, with paper labelling facing out); Filing No. 826-22) (describing Spintex as “light-colored”); Filing No. 826-2) (showing only corners of prior art product samples)).

In its fourth argument, JM contends it is not estopped under Section 315(e)(2) from using prior art references for purposes other than arguing anticipation and obviousness (Filing No. 843 at 71). On reply, Knauf argues that IPR estoppel applies more broadly to “all ‘grounds’ ” that were or could have been raised in the IPR proceedings, not just “arguments” that were or could have been raised (Filing No. 862 at 27). The parties’ dispute focuses on the definition of “ground” in Section 315, which extends estoppel to “any ground that the petitioner raised or reasonably could have raised during the inter partes review.” 35 U.S.C. § 315.

The term “grounds” can be interpreted in two ways.

One interpretation is that ‘grounds’ refers to the underlying legal arguments, which incorporate patents, printed publications, and cumulative device art. The other is that ‘grounds’ are the particular patents and printed publications on which invalidity arguments are based, and that the supporting affidavits, declarations, and the like are evidence, not ‘grounds.’

Prolitec Inc., 2023 WL 8697973, at *22. JM favors the first interpretation, and Knauf favors the second. The Federal Circuit has also not yet weighed in on this specific question, leading to another district court split. In Boston Scientific, the court held that “[a] ‘ground’ in not necessarily equivalent to a reference. Rather, ․ an invalidity “ground” before the PTAB is the basis or bases on which a petition challenges a claim.” Boston Scientific Corp., 653 F. Supp. 3d. at 589 (quotation marks and citation omitted). A defendant may therefore raise “grounds” that “rely on ․ known references in combination with other references that Defendants did not know about that that a skilled searcher conducting a diligent search reasonable could not have found․ This would, after all, be a unique ground that Defendants could not have reasonably raised during the IPR.” Id.

Under Boston Scientific, whether JM is estopped from asserting prior art does not depend on what invalidity arguments JM could have raised in the IPR, or what evidence JM could have offered in support of those arguments. Rather, JM is estopped from relying on any combination of prior art references that JM raised or could have raised in the IPRs. Knauf offers no evidence that JM is relying exclusively on prior art references, or a combination thereof, that JM did or could have relied on in the IPRs.

Knauf has not met its burden of proving that IPR estoppel applies, so Knauf's motion for summary judgment that JM is estopped on the ’670 Patent prior art challenge is denied. If, under the above-recited standard, Knauf believes that JM is estopped from raising certain prior art references or combination of references at trial, Knauf may file a motion in limine seeking to preclude those references.

b. Physical Products as Prior Art

Knauf argues that the physical insulation products asserted by JM as prior evidence “lack the corroboration required by law to qualify as prior art” (Filing No. 826 at 27). Knauf focuses on products purportedly sold by JM as Spintex, Cerafelt, and Cerachrome products. Knauf concedes that JM sold insulation before 2008 “under the Cerafelt and Spintex brand names” and that the Cerafelt samples marked as Trial Exhibits 167–170 have been shown to constitute prior art (Filing No. 862 at 28), but Knauf alleges JM has failed to show that the physical samples have the same appearance that was shown to the public, prospective customers, or customers before 2008. Id.

Under 35 U.S.C. § 102, “a document is prior art only when published before the invention date.” Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576 (Fed. Cir. 1999). In asserting affirmative defenses under Section 102, the alleged infringer must show by clear and convincing evidence that an asserted reference is prior art that was published before the invention date at issue. Id.; see ATEN Int'l Co., Ltd. v. Uniclass Tech. Co., Ltd., 932 F.3d 1364, 1368 (Fed. Cir. 2019) (“To establish that an asserted reference is prior art under § 102(b), the patent challenger must prove, by clear and convincing evidence, that it predates the critical date.”); Sandt Tech, Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350 (Fed. Cir. 2001) (describing heavy burden to “introduce clear and convincing evidence on all issues relating to the status of a particular reference as prior art”).

The Court will address Knauf's challenge to the Spintex product samples first and then the Cerafelt and Cerachrome product samples.

i. Spintex

Knauf argues that “[t]here is no disinterested corroboration as to what the particular Spintex Items looked like when purchased or installed” and that an advertisement of Spintex contradicts witnesses’ description of Spintex (Filing No. 826 at 29). JM offers declarations from six witnesses regarding Spintex, which the Court briefly summarizes below.

Craig Mazzolini and Ross Pippen are homeowners who in 2020 found Spintex insulation in their homes’ walls (Filing No. 844-15 at 2; Filing No. 844-17 at 2). Monroe Shumate is a consultant retained by JM who visited Mr. Pippen's home to collect the Spintex samples (Filing No.844-25 at 2). Mr. Shumate took photographs of the samples, placed the samples in labeled bags, and shipped the samples to JM. Id. at 2–3. Sara Dunham is another homeowner who found Spintex insulation in her walls during home renovations in 2015 (Filing No. 844-16 at 2). During the renovations, Ms. Dunham removed the Spintex insulation and “took photos of some of the insulation for [her] blog post on or around October 28, 2015.” Id. Tesha Kroll is a JM employee and, as of 2020, had worked for JM for thirteen years (Filing No. 844-26 at 2). While Ms. Kroll's husband was assisting with a home remodel for John Knapp, Ms. Kroll learned that Spintex insulation was found in Mr. Knapp's attic. Ms. Kroll went to Mr. Knapp's home and removed the Spintex from the attic. Id. Ms. Kroll photographed, bagged, and shipped the Spintex to JM. Id. at 2–3. JM's sixth witness, Riley Rose, worked for JM between 1948 and 1991 packaging insulation (Filing No. 826-39 at 2). His job consisted of “operating the press machine, bagging and packaging the insulation product as it came off the manufacturing line, and then loading the packaged insulation in the shipping department onto the trucks to be delivered to customers.” Id. Mr. Rose recalls packaging “brown-colored insulation called Spintex at JM” during the 1950s or 1960s. He recalls packaging “thousands, if not millions of bags” of Spintex. Id. Mr. Rose was shown the photographs taken by Ms. Kroll and stated that those photographs show how the Spintex product looked when he worked at JM. Id.

Knauf raises several arguments applicable to all (or most) of the declarations, as well as specific arguments as to certain declarations. The Court will start with the broadest arguments. Knauf first contends that the declarations contain inadmissible hearsay (Filing No. 862 at 35). It is well-settled that declarations are admissible evidence at the summary judgment stage so long as the content is “admissible in content.” Harney v. City of Chicago, 702 F.3d 916, 922 (7th Cir. 2012); Fed. R. Civ. P. 56(c)(4). Knauf fails to identify any hearsay within the declarations that would be inadmissible in content. The declarations will not be excluded on hearsay grounds.

Knauf next argues that many of the declarations refer to photographs that are not true and accurate depictions of the insulation in the photographs. Knauf relies on a declaration from its expert, Professor Lance Rake, who viewed the actual insulation and the photographs and in a conclusory manner, states that the photographs are not true and accurate. A sufficient foundation for a photograph may be laid “by testimony of any person or group of persons with personal knowledge at the time relevant to the issues of the subject matter depicted in the photograph sufficient to support a finding that the photograph is a fair and accurate representation of the subject matter depicted at that time.” Black & Decker Corp. v. Positec USA Inc., No. 11-cv-5426, 2015 WL 5612340, at *11 (N.D. Ill. Sept. 22, 2015). Testimony of the person who took the photograph is not required. The declarations cited by JM are sufficient to authenticate the photographs.

Further, Professor Rake's declaration fails to raise a genuine dispute of material fact as to the authenticity. While the burden for making a prima facie showing of genuineness is relatively low, a party challenging genuineness on summary judgment cannot rest solely on a conclusory rebuttal. Without more, Knauf fails to raise a genuine dispute as to the photographs’ authenticity. See Elias v. Vill. of Spring Valley, 81 F. Supp. 3d 312, 321 n.69 (S.D.N.Y. 2015) (“Evidence calling into question the authenticity of the photographs ․ as well as myriad other types of possible circumstantial evidence might well be sufficient to create a genuine dispute of material fact, but no such evidence has been presented.”); Rith v. United States, No. 19-cv-01582, 2020 WL 7398750, at *10 (W.D. Wash. Dec. 17, 2020) (finding that disputes regarding authenticity of inventory lists and photographs precluded summary judgment); citing United States v. Harvey, 117 F.3d 1044, 1049 (7th Cir. 1997)) (finding there was sufficient evidence of authenticity of document to consider it in summary judgment analysis); see also Rodgers v. Gary Cmty. Sch. Corp., 167 F. Supp. 3d 940, 947–48 (N.D. Ind. 2016) (finding sufficient evidence of genuineness of documents and therefore declining to exclude exhibits at summary judgment stage).

Professor Rake lacks personal knowledge to challenge the photographs’ truth or accuracy. Photographs are authentic if they fairly and accurately depict the subject matter “at that time.” Black & Decker Corp., 2015 WL 5612340, at *11. Professor Rake was not present when the photographs were taken, so he ostensibly lacks personal knowledge as to whether the photographs are true or accurate. By way of example, insulation depicted in a photograph taken outside on a sunny day would surely look different than insulation viewed in person in a poorly lit warehouse, but a person viewing the dimly lit insulation could not say that the sunny photograph is not a true and accurate depiction of the insulation simply because the viewing conditions have changed. But even if Professor Rake had such personal knowledge, his declaration fails to raise a genuine dispute as to authenticity of the photographs.

Knauf next argues that several of the witnesses are “interested” and thus cannot corroborate the physical samples. Knauf argues that Mr. Rose, for one, is interested because he “draws a pension” from JM (Filing No. 902 at 49–52). But that assertion appears to be based in speculation, and, in any event, the fact that Mr. Rose might receive retirement income from JM does not indicate an interest in the outcome of this litigation. Mr. Rose is an entirely different type of witness than, for example, an inventor who claims that this invention predates a patent in suit, or a witness who receives royalties from a patent in suit. See Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1999) (stating that rules requiring corroboration “arose out of a concern that inventors testifying in patent infringement cases would be tempted to remember facts favorable to their case by the lure of protecting their patent or defeating another's patent”); see also Ohio Willow Wood Co. v. Alps South, LLC, 813 F.3d 1350, 1356 (Fed. Cir. 2016). Knauf likewise argues that Mr. Shumate is “interested” because he has been “retained” by JM. But like with Mr. Rose, Knauf fails to explain how Mr. Shumate is interested in the outcome of this litigation. The potential bias of these witnesses is certainly an appropriate topic for cross-examination. However, bias does not make a witness unable to corroborate prior art, and it is not a basis for excluding testimony.

Additionally, Knauf complains that “no testimony is cited for the alleged description of Spintex as being ‘generally brown and cream in appearance with cloudlike swirls’ as being its appearance during its marketing during the 1950s to 1970s” (Filing No. 862 at 36). That is because JM has offered the insulation itself to show that Spintex was “generally brown and cream in appearance with cloudlike swirls,” and JM has offered witness testimony to prove that the physical insulation's present appearance is the same as when it was sold before 2008. Knauf's argument is inapposite.

Knauf next challenges Mr. Rose's ability to accurately recall the appearance of Spintex from the 1950s and 1960s. But Mr. Rose's testimony that he viewed and handled “thousands, if not millions” of bags of Spintex cuts against Knauf's argument, which is again unsupported by any evidence as to Mr. Rose's recall ability. Knauf asserts that the paper covering the Spintex in the photographs viewed by Mr. Rose says “brown-colored,” so Mr. Rose's memory could have been “easily influenced to think of ‘brown’ ” (Filing No. 862 at 37). This argument is speculative and unpersuasive. Knauf's additional assertion that Mr. Rose described Spintex as “brown-colored,” whereas advertising materials described it as “light-colored,” is insufficient to cast doubt on Mr. Rose's testimony (Filing No. 826 at 29). Knauf lastly argued that Mr. Rose did not view the actual physical Spintex insulation and only viewed photographs, “and who knows where those photographs came from” (Filing No. 902 at 50). The photographs were taken and authenticated by Ms. Kroll, and as the Court previously held, JM has offered adequate evidence to authenticate those photographs.

Knauf contends Ms. Dunham's declaration “does not state that the attached photographs are true and accurate of the appearance of the Spintex,” and “only states that the photographs are ‘true and accurate’ of what [s]he posted on [her] blog” (Filing No. 862 at 35). A closer reading of Ms. Dunham's declaration reveals that Knauf is simply incorrect. Ms. Dunham clearly authenticated both the blog post and the photographs themselves (Filing No. 844-16 at 2).

Knauf's last argument, that some of Mr. Schumate's opinions should be excluded as “quasi-scientific opinion testimony” lacks support. As JM notes, Schumate's opinion is based on his firsthand knowledge and observations working in the insulation industry, not based on specialized training or skill (Filing No. 870 at 21). See Donlin v. Philips Lighting N. Am. Corp., 581 F.3d 73, 81 (3d Cir. 2009) (stating that witnesses may give lay testimony on specialized or technical topics). His opinions are therefore appropriate lay opinions.

ii. Cerafelt and Cerachrome

Knauf also argues that the Cerafelt and Cerachrome samples should be excluded for two primary reasons. First, the “Cerafelt Items are not corroborated by the JM Cerafelt brochures and datasheet because they have a markedly different appearance” (Filing No. 826 at 28). However, prior art need not be corroborated with written materials and may be corroborated through witness testimony. Id. at 27.

Second, JM's witnesses fail to adequately corroborate the samples. JM offers the testimony of three former JM employees: Sarah Tholen, who worked for JM for thirty-six years, including as a sales and marketing representative; Russell Smith Jr., who worked for JM from 1974 to 1988 as a process engineer and production supervisor for products including Cerafelt; and Patrick Heller, who worked for JM from 1986 to 1995 as a product development engineer. JM also offers testimony from Sieg Borck, who founded a company called Hi-Temp in 1974 and began purchasing Cerafelt from JM at that time.

Ms. Tholen testified that she and other sales representative would travel with physical insulation samples to show prospective customers. Ms. Tholen also reviewed brochures and several samples of Cerafelt and Cerachrome products, which she either had traveled with or which were representative of samples she traveled with (Filing No. 888 (noticing manual filing of Exhibit 209)). Ms. Tholen stated that the samples and brochures represented how Cerafelt was shown to the public prior to 2008 (Filing No. 843 at 23). Mr. Smith testified that he could “quite vividly” recall the appearance of Cerafelt during his time working at JM and that he could recount customers who bought Cerafelt in the 1980s. Id. at 23 (citing Filing No. 844-30)). Mr. Smith was shown the same physical samples shown to Ms. Tholen, and he confirmed that their appearance was the same as what he observed while working in Cerafelt production in the 1980s. Mr. Smith also opined that he would not have expected the samples’ appearance to have changed over time. Mr. Heller testified that part of his job entailed selling Cerafelt products to customers and that he, like Ms. Tholen, would travel with a briefcase of samples to show to prospective customers. Id. at 843 (citing Filing No. 844-14)). Mr. Heller stated that the samples in Trial Exhibit 209 were representative of the samples that were found in his carrying case, and that the physical samples had retained their same appearance from 1988–89. Mr. Borck testified that his company purchased Cerafelt from JM as early as the 1970s, and he produced multiple boxes of Cerafelt that he had in his possession since 1991, as well as a brochure from 1985. Id. (citing Filing No. 844-31)).

As to the witness testimony, Knauf raises many of the same arguments it raised with respect to the Spintex samples, including unauthenticated photographs, witness “interest,” and “quasi-scientific” opinions. For the same reasons given above, the Court rejects those arguments and will address only the additional arguments specific to Ms. Tholen, Mr. Smith, and Mr. Heller's declarations.

Knauf argues that none of the declarations from Ms. Tholen, Mr. Smith, or Mr. Heller establish that Cerafelt and Cerachrome were shown to the public, prospective customers, or customers prior to 2008, and that the samples have retained their pre-2008 appearance. But all three witnesses’ testimonies, taken together, provide sufficient corroboration. Ms. Tholen provided actual samples of Cerafelt, which she herself handled and testified were used to show to customers and prospective customers. Mr. Smith, though he had never seen the exact samples provided by Ms. Tholen, testified that their appearance was consistent with what he saw being produced by JM and that he sold to customers in the 1980s. Mr. Heller further confirmed that the appearance of the samples obtained from Ms. Tholen was the same as when he sold Cerafelt in the late 1980s. The Court therefore finds that JM's witness testimony adequately corroborates the physical Cerafelt and Cerachrome samples as prior art.

Lastly, Knauf argues that certain Cerachrome samples should be excluded because they were not marked as deposition exhibits (Filing No. 862 at 28). However, Knauf does not dispute that these samples were contained within a briefcase that was marked as an exhibit, and, moreover, Knauf fails to offer any authority supporting the proposition that a piece of evidence should be excluded if it was not marked as an exhibit during a deposition.

Having considered and rejected each of Knauf's objections to the evidence offered by JM related to the physical Spintex, Cerafelt, and Cerachrome samples, the Court concludes that such evidence clearly and convincingly shows that the samples have the same appearance that was shown to the public, prospective customers, or customers prior to 2008. Knauf's motion for summary judgment that physical insulation products samples are not “prior art” is denied.

2. JM's Motion for Summary Judgment of Non-Infringement

JM moves for summary judgment of non-infringement of the ’670 Patent. JM argues that under the “ordinary observer” test, no reasonable jury could conclude that any of the Accused Products infringe the claimed design in the ’670 Patent. “Whether a design patent is infringed is determined by first construing the claim to the design, when appropriate, and then comparing it to the design of the accused device.” OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1404–05 (Fed. Cir. 1997). The Court will construe the claim in the ’670 Patent before discussing whether JM is entitled to summary judgment of non-infringement.

a. Claim Construction

Tabular or graphical material not displayable at this time.

(Filing No. 826 at 38; Filing No. 843 at 34–46; Filing No. 844-7 at 36).

The parties dispute the construction of the claim of the ’670 Patent, which is an ornamental design for insulation as depicted in the Patent's sole figure, a color photograph (Filing No. 194 (noting manual filing of certified copy of ’670 Patent, marked as Trial Exhibit 139)). Both parties propose a verbal construction of the claim based on the one given by the PTAB during IPR proceedings. Knauf argues that its proposed construction “tracks the PTAB's decision,” but JM contends that Knauf is judicially estopped from asserting any construction other than the exact one given by the PTAB. JM therefore proposes adopting the PTAB's construction.

The Supreme Court and Federal Circuit have both recognized that “a design is better represented by an illustration ‘than it could be by any description and a description would probably not be intelligible without the illustration.’ ” Egyptian Goddess, 543 F.3d at 679 (quoting Dobson v. Dornan, 1178 U.S. 10, 14 (1886), superseded by statute on other grounds, as recognized in Samsung Elecs. Co., Ltd. v. Apple Inc., 580 U.S. 53, 56–57 (2016)). The Federal Circuit has further cautioned that “[g]iven the recognized difficulties entailed in trying to describe a design in words, the preferable course ordinarily will be for a district court not to attempt to ‘construe’ a design patent claim by providing a detailed verbal description of the claimed design.” Id. A court is therefore not obligated to issue a detailed verbal description of a design if that description would not be “necessary or helpful.” Id. “[I]n deciding whether to attempt a verbal description of the claimed design,” courts should “recognize the risks entailed in such a description, such as the risk of placing undue emphasis on particular features of the design and the risk that a finder of fact will focus on each individual described feature in the verbal description rather than on the design as a whole.” Id.

Under this guidance, district courts have regularly declined to verbally construe design patent claims. See, e.g., Graphic Packaging Int'l, LLC v. Inline Packaging, LLC, No. 15-cv-03476, 2019 WL 4786148, at *5 (D. Minn. Oct. 1, 2019); Apple, Inc. v. Samsung Elecs. Co., Ltd., No. 11-CV-01846, 2012 WL 3071477, at *10 (N.D. Cal. July 27, 2012); Yao-Hung Huang v. Marklyn Grp. Inc., No. 11-CV-01765-REB-BNB, 2012 WL 4856720, at *2 (D. Colo. Oct. 11, 2012); 180s, Inc. v. Gordini U.S.A., Inc., 699 F. Supp. 2d 714, 728–49 (D. Md. 2010); HR U.S. LLC v. Mizco Int'l, Inc., No. CV-07-2394(DGT)(JO), 2009 WL 890550, at *9 (E.D.N.Y. Mar. 31, 2009). Yet in deciding whether a verbal construction should be adopted, courts have also declined to ignore already existing constructions. See Minka Lighting, Inc. v. Maxim Lighting Int'l, Inc., No. 3:06–cv–995–K, 2009 WL 691594, at *4 (N.D. Tex. Mar.16, 2009) (“[T]he Court finds that the claimed designs are best represented by the illustrations contained in each patent. But because the Court has already made such a description, it would be incongruent to completely ignore this previous effort to adequately reduce the patents to words.”); Dexas Int'l, Ltd. v. Tung Yung Int'l (USA) Inc., No. 6:07cv334, 2009 WL 838174, at *3 (E.D. Tex. Feb.25, 2009).

Here, neither party discusses whether a verbal description of the ’670 Patent claim is necessary or helpful. The Court does not believe a verbal construction is strictly necessary. A verbal construction is necessary when the court must parse out a design's functional and nonfunctional aspects, but here, neither party contends that the sole figure of the ’670 Patent has any functional aspects.² However, the Court agrees with the PTAB that a verbal construction is helpful because “the single color photographs depicting ‘insulation material’ is, on its face, visually amorphous, lacking clear structure, form, and environment in which to give context to the design” (Filing No. 844-7 at 28). The Court also agrees with the PTAB that a verbal construction would be helpful in comparing the instant claim to the prior art. Id. In a field like insulation, which is crowded with prior art, a verbal construction is helpful in pointing out “various features of the claimed design as they relate to the accused design[s] and the prior art.” Egyptian Goddess, 543 F.3d at 680. Additionally, it would be inappropriate to discount the verbal description that the PTAB has crafted, and to which the parties bound themselves before the Federal Circuit (Filing No. 870-3). For all of these reasons, the Court believes a verbal construction based on the PTAB's construction should be adopted.

Between Knauf's and JM's proposed constructions, JM's is preferable because it strictly recites the PTAB's construction. Knauf's construction reformats the PTAB construction into a sort of checklist and focuses on individual elements of the claim rather than its overall design and appearance. Egyptian Goddess, 543 F.3d 665 at 670 (stating that focusing on individual elements or points of novelty would be inappropriate). Additionally, Knauf's use of semicolons results in the misstatement of portions of the PTAB's construction. For example, the PTAB construction describes “a cloud-like appearance with variations in a swirl pattern” (Filing No. 844-7 at 36 (emphasis added)), whereas Knauf omits “with” and splits the phrase into two elements: “a cloudlike appearance; variations in a swirl pattern” (Filing No. 826 at 38). The PTAB's description states that “color is an element of the claimed design; this element includes colors as shown in the sole figure of the ’670 patent that sufficiently impart or convey a variation of distinct hues including ‘brown and cream’ ” (Filing No. 844-7 at 36 (emphasis added)), but Knauf's construction breaks the cohesive color elements into three separate elements: “color is an element of the claimed design; color as shown in the sole figure of the ’670 patent; colors that sufficiently impart or convey a variation of distinct hues including ‘brown and cream’ ” (Filing No. 826 at 38). Knauf's proposed construction therefore does not “track” the PTAB's construction, and the Court declines to adopt it. Since Knauf offers no reason why a jury could not understand and adopt the PTAB's construction, as written, the Court adopts that construction.

In applying this verbal construction, the Court keeps in mind that the color photograph in the ’670 Patent is the touchstone of the claim. The Federal Circuit has emphasized “the decisive importance of drawings in a design patent․ [D]esign patents are typically claimed according to their drawings, and claim construction must be adapted to a pictural setting.” Richardson v. Stanley Works. Inc., 597 F.3d 1288, 1294 (Fed. Cir. 2010). The final phase of the verbal construction—“as shown in the sole figure”—is therefore of central importance. Id. (finding no error in district court's construction of design patent that “was based on what was ‘shown and described in the ’167 patent’ ”). The Court is cautious not to expand the claim beyond the photograph through verbal construction, which would risk broadening the claim scope to encompass an entire design concept or all products of a specific manufacturing process. See, e.g., Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694, 702 (Fed. Cir. 2014) (“[I]n design patents, unlike utility patents, the claimed scope is defined by drawings rather than language ․”); In re Daniels, 144 F.3d 1452, 1456 (Fed. Cir. 1998) (“It is the drawings of the design patent that provide the description of the invention.”); In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988) (“The claim at bar, as in all design cases, is limited to what is shown in the application drawings.”); see also Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100, 104 (Fed. Cir. 1996) (finding district court erred by construing claimed design to cover design concept instead of visual appearance of claimed design); Waldman v. Swanfeldt, 66 F.2d 294, 295–96 (9th Cir. 1933) (“If it may be said that the claim of the patent in question covers any composite design where the different characters forming the same are so arranged as to produce an effect which will be free from lanes or aisles which would separate the characters or groups of characters so as to avoid a patterned effect, it is apparent that there would be no limit to the number of designs which might be devised within such prescribed limitations.”); Harmon Paper Co. v. Prager, 287 F. 841, 843 (2d Cir. 1923) (“But plaintiff did not patent a wall paper, but a ‘design for wall paper,’ ․ But what plaintiff really seeks is to cover with this design patent all paper resulting from the method of manufacture described above. This cannot be done. If it be said that the design covers all paper looking in pattern (to speak loosely) like the design (i.e. marbleized paper), and possessing ‘visionary depth,’ and also ‘soft and impressionistic rather than glaring,’ it is enough to note that no such possibilities or scope can be spelled out of the design specification.”).

The Court further acknowledges the importance of maintaining a narrow construction that is strictly tied to the color photograph in the ’670 Patent in light of the Patent's prosecution history. On appeal of the IPR in which the PTAB applied the above verbal construction, the Federal Circuit noted how narrow the ’670 Patent claim must be to have avoided anticipation or obviousness:

THE COURT [to JM]: I don't - - I mean, if that's the case - - let's assume we don't disagree with that claim construction - - it doesn't anticipate, does it?

What gets me about this, what's being asserted in the District Court? What products are being infringed?

Because if we give the Board claim construction or if we affirm it, it's a very narrow claim construction.

It is this particular swirl pattern with this particular constellation of brown and creams.

[JM]: Yes.

THE COURT: I mean, I don't see how - - I mean, unless you've exactly copied this, I don't see how anything else infringes, because they've stuck themselves with a very narrow claim construction to get this patent held valid, and is it really going to matter for them?

* * *

THE COURT [to JM]: I have to agree with Judge Hughes that in any case, it appears to me that the Board has written your opponent out of District Court, as far as any actual claim they make of infringement.

THE COURT: I mean, are they asserting it against the picture on the right, of your product? Because if they are, you certainly don't infringe. I mean, you can't infringe if you don't anticipate, can you?

[JM]: No. We would agree with that. Your Honor, but it's leaving to the District Court and a court proceeding and a jury to sort this out, whereas in this context, the claim construction is simply wrong.

THE COURT: Well, you'll have this transcript.

* * *

THE COURT [to Knauf]: Sure, but you've nailed yourself down to a very narrow claim construction, so uniform swirls aren't going to cut it because there are uniform swirls in the prior art. This is un-uniform.

[KNAUF]: Yes, Your Honor.

Knauf accepts that the claim, as is black letter design patent law, the claim is the photograph itself.

* * *

THE COURT [to Knauf]: Can you agree that for infringement purposes, you're going to have to show all the specific elements that you propose as part of the claim construction hereto?

[KNAUF]: Yes, correct, Your Honor.

THE COURT: Are you going to go into District Court now and say, oh, you don't need a claim construction let's just put up the pictures and say they're the same?

[KNAUF]: No, Your Honor.

THE COURT: And have an expert argue, well, they have swirls. They may not be cloudlike, but they're still swirls.

[KNAUF]: Knauf's view is that the photograph is the ultimate touchstone of what the claim is.

THE COURT: Well, that's what worries me because I don't want you to try to argue two different things.

If you have bound yourself to these specific claim constructions in order to avoid an invalidity finding, then you shouldn't be able to go into District Court and say, we don't need verbal claim construction anymore, just show our picture to the jury.

THE COURT: You agree that JM and anyone else is going to be able to say that you bound yourself to that position in the Court of Appeals, am I not correct?

[KNAUF]: Yes, Your Honor.

This is the claim construction. This verbalization of the claim is, in our view, an appropriate way to describe what's shown in that picture.

THE COURT: And you are bound by it.

[KNAUF]: And we are bound by it, particularly when this court affirms the Board's decision that that's the appropriate claim construction.

(Filing No. 870-3 at 7–22).

The Court construes the claim of the ’670 Patent as:

Insulation material having a cloud-like appearance with variations in a swirl pattern and that color is an element of the claimed design; this element includes colors as shown in the sole figure of the ’670 patent that sufficiently impart or convey a variation of distinct hues including ‘brown and cream’ and the claimed design includes a ‘waffle pattern’ as shown in the sole figure.

b. Whether JM is Entitled to Summary Judgment of Non-Infringement

The sole test for determining whether a design patent has been infringed is the “ordinary observer” test, originally announced in the United States Supreme Court decision Gorham Co. v. White, 81 U.S. 511 (1871). The applicable standard was later clarified by the Federal Circuit in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008). There, the Federal Circuit held that the test for design patent infringement is whether an ordinary observer,³ familiar with the prior art and giving such attention as a purchaser would usually give, “would be deceived into thinking that the accused design was the same as the patented design.” Id. at 672; see Crocs, Inc. v. Int'l Trade Comm'n, 598 F.3d 1294, 1303 (Fed. Cir. 2010). “Design patent infringement is a question of fact, to be proven by a preponderance of the evidence.” L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1124 (Fed. Cir. 1993). Although patent infringement is a question of fact, “summary judgment may be appropriate when there is no genuine issue of material fact or when, drawing all factual inferences in favor of the nonmoving party, no reasonable jury could return a verdict for the nonmoving party.” Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326, 1332 (Fed.Cir.2001) (internal citations and quotation marks omitted).

JM argues that the Accused Products and the claimed design are “plainly dissimilar,” and for that reason alone, JM is entitled to summary judgment. Egyptian Goddess, 543 F.3d at 678 (“In some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear ‘substantially the same’ to the ordinary observer, as required by Gorham.”). JM further argues that even if the Accused Products and claimed design are not plainly dissimilar, a comparison between the two in light of the prior art products shows that no reasonable jury could find infringement under the ordinary observer test.

In support of its motion, JM relies on expert reports from Dr. Christopher Pastore ⁴ (Filing No. 846; Filing No. 846-3) and Dr. Susan Kare (Filing No. 844-35) discussing infringement of the Accused Products,⁵ and deposition testimony from Knauf's expert, Professor Rake (Filing No. 845-32). For purposes of its non-infringement analysis, JM places each of the Accused Products into one of five groups: Group 1 (PS-1, 2, 3, 9, 10, 13, 14, 38, 40, 42); Group 2 (PS-4, 5, 7, 44); Group 3 (PS-30, 31, 36, 41, 47); Group 4 (PS-6, 8, 15, 16, 29, 33, 34, 35, 37, 48); and Group 5 (PS-12, 17, 45, 46). The Court will briefly discuss the evidence presented by JM as to each Group then proceed with its summary judgment analysis.

i. Group 1 (PS-1, 2, 3, 9, 10, 13, 14, 38, 40, 42)

Dr. Pastore describes the overall appearances of the Group 1 Accused Products as distinct from the ’670 Patent in texture, color, and pattern. Specifically, Dr. Pastore describes PS-1, 2, 3, 9, 10, 13, and 14 as presenting an “overall visual appearance” of a “shaggy mix of brown fibers, predominantly medium to dark, arrayed chaotically throughout the mat” that looks like “those on a German Shephard dog” (Filing No. 846-3 at 16, 18, 20, 31–33, 35–38). The samples “show[ ] a texture like fur or shag carpet, with fibers sticking in all directions in tufts, rather than the cloudlike appearance of the D’670 image.” Id. Dr. Pastore opines that an ordinary observer would readily distinguish these Accused Products from the ’670 Patent, which has, by comparison, a much lighter appearance overall, “with the darkest portions being a reddish-brown color immediately adjacent to lighter yellow-cream colors.” Id. An ordinary observer would also readily notice “the different textures between the overall appearances.” Whereas the ’670 Patent shows “an overall marbled look, with a visually prominent light-colored bean shape near the middle that is in contrast with the darker areas surrounding it,” giving the ’670 Patent its “cloud-like appearance with variation in a swirl pattern,” these Accused Products “show[ ] a texture like fur or shag carpet.” Id. Dr. Pastore further notes that none of these Accused Products contains a visible “waffle pattern,” as shown in the sole figure of the ’670 Patent.

Further, Dr. Pastore notes that despite the fact that PS-2, 3, and 13 exhibits these distinguishing features to a lesser extent than PS-1, 8, 10, or 14, they still give an overall different visual appearance than the ’670 Patent. Specifically, even though one side of PS-2 shows oven marks, those marks exhibit a “regular pattern that [gives] the appearance of light, parallel lines running lengthwise through the insulation due to the oblong hole in the oven plates” instead of a “waffle” pattern. Id. at 18. PS-3, though “somewhat less dark than PS-1 and, to a lesser extent, PS-2, ․ is still noticeably darker overall than the D’670 image and has a different mix of browns and other colors than that of either the prior art or the D’670 image.” Id. at 20. And while the “shaggy” texture of PS-13 appears flatter due to more significant pressing during the curing process, “an ordinary observer viewing the designs side by side would not be deceived into thinking the PS-13 insulation had the same design as the D’670 image.” Id. at 35–36.

As to PS-38 and 42, Dr. Pastore states that overall, these Accused Products lack the type of contrast between light and dark areas or variation of distinct hues shown in the ’670 Patent, which has “large relative areas of light and dark.” Id. at 57–58, 61–62. PS-38 and 42 also did not convey “a cloud-like appearance with variations in a spiral pattern” and instead had fibers that were mixed “much more chaotically.” Id. Dr. Pastore opines that PS-38 also lacks the “thicker clumps of insulation fiber as in the D’670 image that coveys a fluffier cloud-like appearance with variations in a swirl pattern,” id. at 57–58, and that “[t]he overall color scheme of PS-42 is also a different mix of browns than the D’670 image.” Id. at 61–63. Additionally, one side of PS-30 and 42 shows no oven marks, and the other side displays a “diamond pattern,” but no “waffle” pattern. Id. at 57–58, 61–63.

Dr. Pastore states that a three-way comparison of the Group 1 Accused Products, the D’670 Patent, and the prior art Spintex, Cerafelt, and Cerachrome products highlights the differences in “color, texture, and effect” between the Group 1 Accused Products and the ’670 Patent. “[T]he different colors and darker overall appearance of the of the [PS-1, 2, 3, 9, 10, 13, and 14] sample[s] as well as the shaggy array of fibers and the scoring marks on one side, are a noticeable departure from both the prior art and the D’670 image.” Id. at 17. An ordinary observer would also more readily “detect that the D’670 image has larger areas of relatively light colors directly adjacent to darker areas, creating the so-called cloud-like appearances with variations in a swirl pattern,” whereas the colors of PS-38 and 42 are “much more mixed in,” more similar to Cerafelt 204-A or Cerachrome 207. Id. at 57–58, 61–63.

Dr. Kare also conducted a “side-by-side visual comparison between the D’670 patent figure and certain JM insulation,” which she found “show[ed] a variety of distinct and dissimilar colors, textures, patterns and so on that give each an overall visual appearance that is distinct from the D’670 patent figure.” (Filing No. 844-35 at 4). As to Group 1, Dr. Kare opines that “instead of a “cloud-like appearance with variations in a swirl pattern,” the Accused Products had a “hint of a ‘furry’ appearance” with “visible thin strands”; instead of “colors as shown in the sole figure that sufficiently impart or convey a variation of distinct hues including brown and cream,” they had “no explicit pattern that repeats distinct but different hues—less red, more taupe”; and they also all had “no ‘waffle pattern’ apparent.” Id. at 4–5, 9.

Knauf's expert, Professor Rake, was shown unlabeled photographs of PS-2 and 10 and asked whether those images looked substantially similar to the ’670 Patent image ⁶ (Filing No. 845-32 at 10). Professor Rake stated that the photograph of PS-2 did not look like the claimed design and looked “farther off” from the claimed design than an image of a Spintex sample. Id. Professor Rake explained that the image of PS-2 was not substantially similar to the image of the claimed design because the PS-2 image had “[d]ifferent colors, darker, less white ․ [d]ifferent texture, pattern” (Filing No. 845-32 at 8; Filing No. 844-8 at 3). Professor Rake also stated that the image of PS-10 exhibited “major differences” compared to the ’670 Patent image in that “[t]he hues are different, pattern's different, texture is different, contrast different” (Filing No. 845-32 at 9–10; Filing No. 844-8 at 4).

ii. Group 2 (PS-4, 5, 7, 44)

Dr. Pastore similarly describes the overall appearances of the Group 2 Accused Products as distinct from the ’670 Patent in texture, color, and pattern. He states “[a]n ordinary observer would note that the PS-4 insulation lacks the same color palette as the D’670 image, with the PS-4 insulation being lighter overall, and having predominantly tan and beige coloring with a greyish undertone.” (Filing No. 846-3 at 22). He further states PS-4 “has more gradual and less pronounced changes in color,” compared to the ’670 Patent, in which “[t]he range of lighter and darker colors ․ is also more pronounced, as are the borders between light and dark areas.” Id. The fibers in PS-4 also exhibit a “latticed” appearance “with long strands of fibers overlapping at different angles, rather than being bunched in spirals or clumps, as in the appearance in the D’670 image.” Id. “The PS-4 insulation also has a texture that appears fuzzy, like a furry animal, whereas the D’670 image has a flat appearance that could be described as marbled.” And lastly, Dr. Pastore notes that PS-4 has no visible oven marks or a “waffle” pattern. Id. Dr. Pastore states that PS-5 has an overall different visual appearance than the ’670 Patent for many of the same reasons as PS-4. “In addition, the PS-5 insulation had small clumps of fibers on its surface, similar to the appearance of matted wool or fur or an animal or the piling on a sweater. That particular waffle pattern of the D’670 image is also missing in PS-5, which has no visible over markings.” Id. at 24.

Dr. Pastore also opines that PS-7 gives a different overall visual appearance because it has “small clumps of fibers on its surface, similar to the appearance of matted wool or fur,” has a “lack of the sharp contrast between light clumps and dark adjacent areas that typify the so-called cloudlike appearance of the D’670 image,” lacks the “reddish-brown and yellow-ish cream colors,” “marbled appearance,” or “constellation of elements” of the ’670 Patent, and lacks a “waffle” pattern. Id. at 28.

As to PS-44, Dr. Pastore states that it “lacks the same color palette as the D’670 image” and has a “predominantly tan and beige coloring, with the D’670 image being more reddish-brown and yellowish-cream.” Id. at 63–64. As to texture, PS-44 appears fuzzy or wispy, like a furry animal, whereas the D’670 image has a flat, marbled appearance.” And PS-44 lacks a “waffle” pattern or discernible oven markings. Id.

When compared to the prior art, Dr. Pastore opines an ordinary observer would notice that the Group 2 Accused Products are more similar to the prior art than the ’670 Patent. PS-4 appears “closer in color and in color distribution to prior art references such as the Spintex references, Cerafelt 204-A, and Cerachrome Felt 2.” Id. at 23. “The texture and color gradation of PS-5 is more similar to prior art such as the Spintex references, Cerafelt Exhibits 212 and 213, and Cerachrome Felts 1 and 2 than PS-5 is to the D’670 image.” Id. at 24–25. And PS-44 appears “closer in color to prior art like Cerafelt 204 and having an overall texture more like those references that appear like lamb's wool, such as the Spintex and Cerafelt samples.” Id. at 64

In her analysis, Dr. Kare opines that the Group 2 Accused Products have several distinguishing factors that give them an overall visual appearance different than that of the ’670 Patent (Filing No. 844-35 at 4–5, 10). Instead of a “cloud-like appearance with variations in a swirl pattern,” they have “angled streaks—evocative of painterly brushstrokes” and “no explicit pattern—no apparent swirl”; instead of “colors as shown in the sole figure that sufficiently impart or convey a variation of distinct hues including brown and cream,” they include “taupes with smaller deep grayish-brown areas”; and none has a “ ‘waffle pattern’ apparent.” Id.

During his deposition, Professor Rake was shown an unlabeled photograph of PS-4, which he stated was not deceptively similar to an image of the ’670 Patent (Filing No. 844-35 at 4–5, 7) Professor Rake stated that compared to the photograph of the claimed design, the texture, pattern, range of hues, and contrast were different in the photograph of PS-4. Professor Rake described the photograph of PS-4 as “pretty far off in every respect.” Id. at 7; (Filing No. 844-8 at 1).

iii. Group 3 (PS-30, 31, 36, 41, 47)

In Dr. Pastore's report, he describes the Group 3 Accused Product has having overall visual appearances distinct from the ’670 Patent for many of the same reasons identified in Groups 1 and 2. Dr. Pastore opines that PS-30 and 31 have an “overall lighter color” than the claimed design and lack “the larger areas of reddish-brown color in the D’670 image” (Filing No. 846-3 at 45–48). “The contrast between light and dark areas (or the variation of distinct hues) is also more pronounced in D’670,” and neither PS-30 nor 31 conveys “a cloud-like appearance with variations in a spiral pattern” or has a “waffle” pattern. Id. As to texture, the PS-30 and 31 fibers “have the consistent overall appearance of being like clumped or matted fur, rather than clustered in a way that conveys a cloud-like appearance with variations in a swirl pattern.” Id.

The PS-36 and 47 insulations similarly have predominantly “tan and beige coloring,” instead of the “reddish-brown and yellowish-cream” coloring in the claimed design (Filing No. 846-3 at 53–54, 69–70). PS-36 also exhibits a less pronounced contrast in light and dark areas than the claimed design, lacks a “cloud-like swirl,” and lacks an apparent “waffle” pattern. Id. at 53–54. Further, PS-47 has a texture “more like wool, with small tufts of fiber clumped together, whereas the D’670 image has a flat, marbled appearance.” Id. at 69–70.

Dr. Pastore additionally opines that PS-41 has an “overall lighter appearance with less contrast between light and dark areas” than the claimed design (Filing No. 846-3 at 59–60). He describes one side of PS-41 as having “significant matting of the fibers,” which gives that side “an overall mottled or blotchy appearance between the tan matted fibers and the light beige fibers,” and the other side also having a “mottled” appearance with even less contrast between distinct hues, and predominantly light overall color, in contrast to the claimed design. Id. Dr. Pastore notes that the lighter side of PS-41 exhibits a diamond pattern imprinted on it, distinct from the claimed design's “waffle” pattern. Id.

When compared to the prior art, Dr. Pastore states that an ordinary observer would more readily notice distinctions between the Group 2 Accused Products and the claimed design. For example, as to PS-36, “the ordinary observer would perceive colors and variations in hues in PS-36 that are closer to the prior art ․ The overall wool appearance of the PS-36 is also closer to much of the prior art compared to the more marbled appearance of the D’670 image.” Id. at 54 – 55. The “overall mottled appearance” of PS-41 is more similar to various pieces of prior art. The colors of PS-47 are more similar to prior art like Cerafelt 204, and its texture is “more like those references that appear like lamb's wool, such as Spintex and Cerafelt.” Id. at 70.

Dr. Kare describes the Group 3 Accused Products as having a “granular textured appearance that evokes a dry riverbed” with “no explicit pattern,” as opposed to a “cloud-like appearance with variations in a swirl pattern” (Filing No. 844-35 at 4–11). She describes Group 3 as having “monochromatic taupe tones” with no yellow, as compared to the colors shown in the claimed design that “impart or convey a variation of distinct hues including brown and cream.” Id. And Dr. Kare notes that the Group 3 Accused Products have no apparent “waffle” pattern. Id.

iv. Group 4 (PS-6, 8, 15, 16, 29, 33, 34, 35, 37, 48)

Dr. Pastore's report describes the overall appearance of PS-6 as distinct from the claimed design for largely the same reasons that PS-5 (and, in turn, PS-4) are distinct (Filing No. 846-3 at 25–26). Dr. Pastore specifically notes that PS-6 shares the same “hues of brown” as PS-4 and 5, which he describes as “tan and beige” with “a greyish undertone,” instead of the reddish-brown and yellowish-cream colors of the claimed design, and that it lacks the distinction between light and dark areas and “constellation” of elements found in the claimed design. Id. at 22, 25–26. PS-6 “also had small clumps of fibers on its surface, similar to the appearance of matted wool or fur on an animal or the piling of a sweater,” as compared to a “cloud-like” design, and has a “visible diamond pattern on it” instead of a “waffle” pattern. Id. at 26. Dr. Pastore opines that PS-15, 16, and 48 have largely the same distinguishing features as PS-4, 5, and 6. Id. at 39–41, 71–72. “The PS-15 product had the additional visual distinction of oven plate and chain marks. On one side, a chevron pattern is noticeably visible throughout, due to the imprint of the chain of the oven conveyor belt.” Id. at 39. PS-6 had “the added noticeable differences of being even darker in overall appearance and having a heavy chevron pattern on one side due to the chain marks from the curing oven's conveyor belt” Id. at 40–41. And PS-48 also “lacked the sharp contrast between light clumps and dark adjacent areas typifying the D’670 image, with color changes that were more gradual throughout the material.” Id. at 71–72.

Dr. Pastore describes PS-8 and 35 as having an “overall appearance of light, medium, and dark brown colors that generally resembled the color scheme of mocha almond fudge ice cream,” rather than the colors in the claimed design. Id. at 29–30, 52–53. Additionally, one side of PS-35 “had the fibers arrayed in long, stretched out patterns, like gauze pulled apart, rather than a cloudlike appearance,” and the other side “had a more monotone color scheme than either the first side of the D’670 image” and “a regular zig-zag pattern of chain marks,” distinct from the variation of distinct hues, cloud-like appearance, and waffle pattern in the claimed design. Id. at 52 –53. Additionally, neither sample has a “waffle” pattern, though PS-8 has a “predominant diamond pattern imprinted on it.” Id. at 29–30, 52–53.

As to PS-33, 34, and 37, Dr. Pastore identifies a “noticeabl[y] lighter ․ appearance than the D’670 image, with dark areas being a much smaller percentage of the overall appearance” (Filing No. 846-3 at 48–51, 55–56). “PS-33 also had a noticeable diamond pattern on one side from the curing process, distinct from the circular waffle pattern on D’670․ [N]either side of PS-33 had elements like the bean shape in the D’670 image or the other constellation of elements that gave the impression of a cloud-like appearance in a swirl pattern.” Id. at 48–49. In addition, on one side of PS-34, “there was a visible pattern of speckles that appeared like dark spots against the background of the lighter insulation, unlike the D’670 image.” Id. at 50–51. PS-37 also had “the overall appearance of groups of fibers stretched over one another in a haphazard crisscross pattern” with “few noticeable dark spots like the freckles or moles on an otherwise lighter and more monotone surface,” as compared to the cloud-like appearance of the claimed design.

When considering the prior art, Dr. Pastore opines that an ordinary observer would readily notice the differences in color, gradation between dark and light, texture, surface finish, and oven curing pattern. Dr. Pastore also contends that an ordinary observer would notice that any commonalities shared between the Group 3 Accused Products and the claimed design are more closely shared between the Group 3 Accused Products and the prior art. Id. at 26, 49–53, 56, 72.

Dr. Kare considered the Group 3 Accused Products and concluded that they each have an overall visual appearance distinct from the claimed design. As to PS-6, 8, 15, 16, 33, 34, and 48, Dr. Kare opines that each Accused Product has “dominant linear elements” and “no explicit swirl pattern / lacks circular forms,” rather than a “cloud-like appearance with variations in a swirl pattern”; a “light ‘background’ with darker ‘markings’ (unlike D’670)” instead of “colors as shown in the sole figure that sufficiently impart or convey a variation of distinct hues including brown and cream”; and a “textured diagonal pattern of diamond shapes” instead of a “waffle” pattern (Filing No. 844-35 at 4–5). Dr. Kare also opines that PS-37 has “diagonal elements reminiscent of a relief map” instead of a “cloud-like appearance with variations in a swirl pattern”; “pink undertones/gray brown” that are “much less yellow than D’670”; and no “waffle” pattern. Id. at 4–5, 11.

v. Group 5 (PS-12, 17, 45, 46)

As to the Group 5 Accused Products, Dr. Pastore opines that each Product has an overall appearance “akin to a messy cobweb of fibers strung out in all directions in the blanket and then pressed together.” (Filing No. 846-3 at 34–35, 42–43, 65–68). He describes the Accused Products as “overall lighter in color than the D’670 image, lacking the larger areas of reddish-brown color in the D’670 image,” and having a less pronounced “contrast between light and dark areas (or the variation in distinct hues)” than in the claimed design.” Id. Dr. Pastore also notes the lack of “waffle” pattern visible in the Group 5 Accused Products. Id. Dr. Pastore asserts that when compared to the prior art, the overall lighter color and “cobwebbed” or “crisscross” pattern of the Group 5 Accused Products becomes more pronounced, and an ordinary observer would therefore not find the overall appearance of the Group 5 Accused Products to be substantially similar to the ’670 Patent. Id.

In Dr. Kare's report, she describes PS-17 as having “diagonal elements reminiscent of a relief map” instead of a “cloud-like appearance with variations in a swirl pattern”; “pink undertones/gray brown” that are “much less yellow than D’670”; and no “waffle pattern” (Filing No. 844-35 at 11). Dr. Kare also describes PS-12, 17, 45, and 46 as having “predominant linear vein-like striations” with “no explicit pattern” instead of a “cloud-like appearance with variations in a swirl pattern”; an “overall darker, less reddish palette than D’670”; and no “ ‘waffle pattern’ apparent.” Id. at 4–5, 14.

During Professor Rake's deposition, he was shown an unlabeled photograph of PS-46 and asked if it appeared “substantially the same” as an image of the claimed design, to which he answered “no” (Filing No. 845-32 at 7; Filing No. 844-8 at 2). Professor Rake stated the images of PS-46, the claimed design, and a Spintex sample were all “definitely different in color, definitely different in contrast,” and had “[s]ome different swirl as well” (Filing No. 845-32 at 8). Professor Rake further stated that the PS-46 photograph was “so far away that the [Spintex photograph] may be marginally closer, but it's still different in so many respects that I wouldn't have seen them as being substantially similar, that's for sure.” Id. at 10.

vi. Summary Judgment Analysis

In moving for summary judgment on an issue as to which [the patentee bears] the burden of proof, [the alleged infringer] discharge[s] its initial responsibility by stating the basis for its motion and pointing out that the evidence in the record would be insufficient to avoid a directed verdict against [the patentee]. In response, [the patentee is] required to designate specific facts showing that there was a genuine issue for trial.

Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1046 (Fed. Cir. 2000).

The Court finds that JM has met its burden of proof as the summary judgment movant on the issue of infringement. As Dr. Pastore and Dr. Kare described in their expert reports, none of the Accused Products has the same overall visual appearance as the claimed design. The Group 1 Accused products are noticeably darker, have the texture of tufted dog fur, and lack a variation of distinct hues giving a cloud-like appearance. The Group 2 Accused Products are characterized by a subtle gradation between light and dark areas, with predominant medium hues and only smaller streaks of lighter or dakers hues. The Group 2 Accused Products feature cooler-toned colors like tan and beige instead of the warm reddish-browns and yellow-ish creams as in the claimed design. In Group 3, the Accused Products have either an overall lighter coloration or a predominantly medium coloration featuring tan and beige, as distinct from the warmer colors in the claimed design. The texture of the Group 3 products is “mottled,” with only a subtle distinction between areas of light and dark areas, and, to the extent the Group 3 Accused Products feature oven markings, they are a diamond pattern instead of a “waffle” pattern. The Group 4 Accused Products also exhibit colors, gradation, patterns, and imprints distinct from the claimed design. Many of the Accused Products in Group 4 exhibit either an overall lighter or overall darker appearance with a less noticeable color gradation than the claimed design, or a more even distribution of light, medium, and dark colors like “mocha almond fudge ice cream” instead of the claimed design's variation between distinct light and dark areas. The fibers in the Group 4 Accused Products are also characterized by a fibrous or gauze-like texture instead of a cloud-like swirl, and the Group 4 Accused products with oven markings have a diamond design. Lastly, the Group 5 Accused Products are characterized by a cobwebbed, crisscross, or vein-like pattern with an overall darker coloration than the claimed design. The Group 5 Accused Products have a less pronounced contrast between light and dark areas and lack a “waffle” pattern.

Based on these descriptions, the Accused Products and the ’670 Patent are plainly dissimilar. The color, texture, gradation, pattern, and oven design element of each the Accused Products contributes to overall appearances that are plainly distinct from the claimed design, particularly as to the claimed design's novel elements, which are the basis for the verbal construction. The deposition testimony of Professor Rake supports this conclusion. The Court recognizes that Professor Rake was not comparing the actual Accused Products to a certified copy of the ’670 Patent and was instead using photographs that could have appeared slightly different than the actual products and ’670 Patent. Nevertheless, the fact that Professor Rake concluded that the photographs of the Accused Products were markedly distinguishable from the claimed design in nearly every describable way—i.e., hues, pattern, color, texture, contrast—shows how plainly distinct the accused designs are from the claimed design.

A comparison to the prior art, though not necessary to the Court's analysis, serves to highlight the distinctions between the overall appearance of the Accused Products and the claimed design. A three-way comparison between the prior art, Accused Products, and claimed design demonstrates that any ornamental characteristics shared by the Accused Products and claimed design are also shared between the Accused Products and prior art, often with the Accused Products more closely resembling the prior art than the claimed design. For example, the Accused Products and claimed design both contain various shades of brown colors and an irregular pattern, but so do the prior art samples. In particular, Cerafelt 204-A and the Spintex products have a variety of brown hues and an irregular pattern that resemble many of the Accused Products. What is more, a comparison to the prior art confirms that that Accused Products are not similar to the claimed design in any of the ways that make the claimed design unique from the prior art. Egyptian Goddess, 543 F.3d 665 at 677 (stating that viewing infringement according to an ordinary observer “familiar with the prior art” serves “ ‘to focus on those aspects of a design which render the design different from prior art designs,’ ” which was a purpose served by the now-outdated “point of novelty” test) (quoting Sun Hill Indus., Inc. v. Easter Unlimited, Inc., 48 F.3d 1193, 1197 (Fed. Cir. 1995))); see Fanimation, Inc. v. Dan's Fan City, Inc., No. 08-cv-1071, 2010 WL 5285304, at *2 (S.D. Ind. Dec. 16, 2010) (“[A] robust array of similar prior art may magnify ostensibly small differences between designs.”).

At the Markman hearing, counsel for Knauf posed a hypothetical scenario in which an ordinary observer “go[es] to Menards,” and sees “Owens Corning pink” insulation, “Certain Teed” insulation, which is “kind of yellowish,” a brand of JM insulation that is white, and then the Accused Products” (Filing No. 902 at 9). Counsel for Knauf posited that “the chances of ․ making a mistake or being deceived in thinking the JM product is a Knauf product are very high” in those circumstances. Id. This hypothetical, however, ignores the narrow scope of the ’670 Patent claim. The issue before the Court is not whether two products look substantially similar when compared to several other obviously dissimilar products. The question is whether an accused product looks deceptively similar to a claimed design in light of the prior art. Here, the answer as to each Accused Product must be “no.”

To conclude that the Accused Products had the “same general appearance and effect” as the ’670 Patent, the ’670 Patent’s claim limitations would need to be read out entirely. A “cloud-like appearance with variations in a swirl pattern” would need to mean “any irregular pattern”; “colors as shown in the sole figure of the ’670 patent that sufficiently impart or convey a variation of distinct hues including ‘brown and cream’ ” would need to mean “the presence of light and dark hues” and the presence of ‘brown’ and ‘cream’ ” divorced from any reference to the ’670 Patent’s sole figure; and “includes a ‘waffle pattern’ ” would need to mean “with or without some imprinted pattern.” If the ’670 Patent were construed this broadly, then Knauf would be permitted to do exactly what the Federal Circuit feared—to ignore the narrow verbal claim construction adopted by the PTAB (and accepted by Knauf) and to argue that the Accused Products infringe the ’670 Products because they are all, at a base level, brown swirly insulation.

Based on the above evidence, and drawing all reasonable inferences in favor of Knauf, no reasonable jury could conclude that the Accused Products infringe the ’670 Patent under the ordinary observer test. Additionally, the Court finds that JM's evidence, if undisputed, adequately establishes that the Accused Products are also not a “colorable imitation” of the ’670 Patent—i.e., that JM has not committed equivalents infringement. Pac. Coast Marine Windshields Ltd., 739 F.3d at 701 (“For design patents, the concepts of literal infringement and equivalents infringement are intertwined․ We have held that the ‘colorable imitation’ standard of the design patent statute involves the concept of equivalents.”). Based on JM's evidence, the overall visual appearance of the Accused Products is so distinct from that of the claimed design that no reasonable jury could conclude that any Accused Product is a “colorable imitation” of the ’670 Patent without improperly broadening the scope of the Patent. To avoid summary judgment, then, Knauf must raise a genuine dispute of material fact for trial.

Knauf argues that summary judgment of non-infringement should be denied because: (1) JM misapplies the ordinary observer test; (2) Professor Rake did not admit during his deposition that the Accused Products themselves looked dissimilar to the ’670 Patent; (3) JM fails to “acknowledge the actual insulation that would be considered at the purchase [sic] and instead fabricate a ‘prior art’ comparison with the images it has created”; and (4) the prior art cited by JM should be excluded. As to Knauf's second argument, the Court has already explained that it is not considering Professor's Rake deposition testimony as an admission that the Accused Products are not substantially similar to the claim design, but merely to emphasize that Accused Products and claimed design share almost no common ornamental features. And the Court has already addressed Knauf's fourth argument and held that the prior art should not be excluded.

With respect to its first argument, Knauf contends that JM is misapplying the “ordinary observer” test by “argu[ing] that the infringing product must be essentially identical for there to be infringement,” instead of deceptively similar or a colorable imitation thereof (Filing No. 862 at 46). Knauf also argues that JM has failed to show that an ordinary observer, “giving such attention as a purchaser usually gives,” would not be deceived. Id. at 47 (emphasis in original). The Court disagrees. JM does not argue that the Accused Products must be “identical” to infringe the ’670 Patent, or that an ordinary observer in this case would give more attention to the design at issue than a purchaser would normally give. Instead, JM argues that an ordinary observer would not be deceived by the Accused Products due to the distinctiveness and narrow construction of the claimed design. Knauf does not have a patent over all brown swirly insulation, nor could it obtain such a patent in light of the crowded field of prior art. Accordingly, the Court may not assume that an ordinary observer would ignore all novel, ornamental elements of the claimed design and only notice the very general appearance of the claimed design. Crocs, Inc., 598 F.3d at 1303 “The ordinary observer test applies to the patented design in its entirety, as it is claimed.” (emphasis added)). Such an assumption would be contrary to law and inappropriately expand the scope of Knauf's patent.

The Court also disagrees with Knauf's third argument, that JM has failed to “acknowledge the actual insulation that would be considered at the purchase [sic] and instead fabricate a ‘prior art’ comparison with the images it has created.” Id. at 862. It is well settled that

for purposes of design patent infringement, the ‘ordinary observer’ analysis is not limited to those features visible during only one phase or portion of the normal use lifetime of an accused product. Instead, the comparison must extend to all ornamental features visible during normal use of the product, i.e., ‘beginning after completion of manufacture or assembly and ending with the ultimate destruction, loss, or disappearance of the article.’

Contessa Food Products, Inc. v. Conagra, Inc., 282 F.3d 1370, 1380 (Fed. Cir. 2002) (citations omitted) (quoting In re Webb, 916 F.2d 1553, 1557–58 (Fed. Cir. 1990)); see also (Filing No. 846-3 at 7 (disagreeing with Professor Rake's infringement conclusions because they are based on appearance at the point of sale)). The Federal Circuit has “counseled against limiting the design patent infringement analysis to the point of sale.” Contessa Food Products, Inc., 282 F.3d at 1380. Focusing an infringement analysis on the point of sale, especially if some ornamental features are not visible to consumers at that point, “ ‘only serves to blur the otherwise clear line that exists between the test for infringement of a design patent and the ‘likelihood of confusion’ test for infringement of a trademark.’ ” Id. (quoting Unette Corp. v. Unite Pack Co., 785 F.2d 1026, 1029 (Fed. Cir. 1986)); see Int'l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1241 (Fed. Cir. 2009) (stating that the Federal Circuit has “emphasized that normal use should not be limited to only one phase or portion of the normal use lifetime of an accused product”); Arminak & Assocs., Inc. v. Saint-Gobin Calmar, Inc., 501 F.3d 1314, 1324 (Fed. Cir. 2007) abrogated on other grounds by Egyptian Goddess, 543 F. 3d 665 (“Under our case law, the ordinary observer test requires, as the district court recognized, the comparing of the accused and patented designs from all views included in the design patent, not simply those views a retail customer seeking to buy would likely see when viewing the product at the point of sale.”)). As JM argues, the design of the Accused Products is hardly visible at the point of sale. Focusing the infringement analysis in this case to the point of sale would be contrary to law.

Finally, the Court explains why Professor Rake's May 13, 2022 Declaration ⁷ does not create a genuine dispute of material fact precluding summary judgment. In his Declaration, Professor Rake makes two primary assertions. First, Professor Rake opines that the photographs used in Dr. Pastore's and Dr. Kare's reports “are not true and accurate of the actual-in-person appearance of the items” (Filing No. 863-4 at 4). Several issues underlie this assertion. As explained in the Court's discussion of prior art products, this conclusory assertion is insufficient to create a genuine dispute of material fact as to authenticity of the photographs. Additionally, Professor Rake was not present when the photographs were taken, does not know the circumstances under which they were taken, and acknowledges that as to some of the physical samples, he based his opinion on a viewing of the samples in a different location. Id. Additionally, this assertion is immaterial as to Dr. Pastore's report because he explicitly based his opinions on both his in-person inspection of the insulation and the representative photographs (Filing No. 846-3 at 13–14 (“I inspected each of the JM products in person during my July 2020 trip to Knauf's warehouse in Shelbyville, Indiana․ My visual analysis and opinions are therefore informed by my first-hand physical inspection of the insulation as well as my use of the professional photographs. The images I have selected below are meant to be representative of my analysis and illustrative of my descriptions and opinions. In each instance I inspected the full piece of insulation.”)).

Second, Professor Rake offers the following opinion on infringement:

In my opinion, for the accused product samples ․ they all had an overall general appearance and gestalt substantially similar to the color photograph of the D’670 patent. More specifically, each of them was “insulation material” that had “a cloudlike appearance” substantially similar to the one in the D’670 patent's color photograph; “variations in a swirl pattern” substantially similar to the ones in the D’670 patent's color photograph; had colors substantially similar to the “color elements of the claimed design” “as shown in the sole figure of the ’670 patent”; had “colors that sufficiently impart or convey a variation of distinct hues including ‘brown and cream,’ ” substantially similar to what is shown by the D’670 patent's color photograph[; and either did or did not have a] ‘waffle pattern’ substantially similar to the one shown in the D’670 patent's color photograph․

It is my expert opinion that the relevant ordinary observers would find the general overall appearance of the accused JM products to be the same as the design of the ’670 patent under the Gorham test. Under the Gorham test, an ordinary observer seeking to purchase insulation and knowing of the distinctiveness of D’670 insulation vis-à-vis the prior art in [sic] would be deceived into purchasing any of ․ Accused Products samples thinking that he or she was purchasing D’670 insulation․ In other words, it is my opinion that each of the accused products represented by the numbered samples infringe the D’670 patent under the ordinary observer test.

(Filing No. 863-4 at 5–6).

This opinion states only that the Accused Products have elements substantially similar to most or all of the claim limitations and that the Accused Products therefore infringe the ’670 Patent. It contains no analysis or discussion of the ornamental features of any Accused Product. This opinion is entirely conclusory and does not provide the detail needed to create a genuine dispute of material fact. “[I]t is well settled that an expert's unsupported conclusion on the ultimate issue of infringement is insufficient to raise a genuine issue of material fact. A party may not avoid that rule by simply framing the expert's conclusion as an assertion that a particular critical claim limitation is found in the accused device.” Arthur A. Collins, Inc., 216 F.3d at 1046 (citations omitted; finding that expert offered “nothing more than an unsupported assertion that the accused device contains a critical claim limitation and clearly would be insufficient, standing alone, to create a genuine issue of material fact.”); see Advanced Tech. Materials, Inc. v. Praxair, Inc., 228 F. App'x 983, 985 (Fed. Cir. 2007) (“ATMI essentially argues that its expert testimony nevertheless creates a genuine issue of material fact. This argument rests on the quality of its expert report. While ATMI presented an expert report disputing the teaching in the asserted prior art, the report lacks the detail necessary to avoid summary judgment. In particular, ATMI's expert lacked logical continuity, leaving on a conclusory record to oppose summary judgment of obviousness. We find the district court's decision well supported by the record, and agree that no issues of material fact remain [as to obviousness].”); Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1277–78 (Fed. Cir. 2004) (stating “[s]ummary judgment of non-infringement was fully warranted” where patent owner offered only “conclusory opinion[s]” of two experts, which were not sufficient to raise a genuine issue for trial); OddzOn Products, Inc., 122 F.3d at 1405–06 (“[T]he court held that the expert's opinion was wholly conclusory and devoid of any analysis regarding whether the ornamental features create the overall similarity. Thus, the district court held that the expert testimony was insufficient to support a jury verdict in OddzOn's favor․ The court therefore did not err by affording little probative weight to the expert's testimony.”); Phillips Petroleum Co. v. Huntsman Polymers Corp., 157 F.3d 866, 877 (Fed. Cir. 1998) (finding that patent owner failed to raise genuine disputes of material fact as to non-infringement by citing “expert declarations that were] wholly conclusory, [and] devoid of facts upon which the affiant[s’] conclusions, as experts, were reached,” and granting summary judgment of infringement in favor of accused infringer) (quotation marks and citation omitted)); Ross v. Sonax Furniture Mfg., Ltd., 217 F.3d 860 (Table), 1999 WL 1072242, at *2 (Fed. Cir. Nov. 16, 1999) (finding that district court properly granted summary judgment of non-infringement “[n]otwithstanding the conclusory assertions of infringement by [patent owner's] expert”); Zelinski v. Brunswick Corp., 185 F.3d 1311, 1317 (Fed. Cir. 1999) (finding that district court properly characterized statement by expert regarding infringement “as conclusory due to the expert's assertion without any further explanation,” and appropriately granted summary judgment of non-infringement in favor of accused infringer because patent owner had not raised a genuine issue for trial).

Accordingly, Knauf has failed to offer evidence creating a genuine dispute of material fact as to infringement of the ’670 Patent, and JM, having met its burden as the movant, is entitled to summary judgment. See Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337, 1345 (Fed. Cir. 2020) (finding district court correctly granted summary judgment of non-infringement in finding “that no reasonable fact finder could find that an ordinary observer, taking into account the prior art, would believe the accused design to be the same as the patented design”). JM's motion for summary judgment of non-infringement of the ’670 Patent is granted.

3. JM's Motion for Summary Judgment of Invalidity

JM seeks summary judgment as to invalidity of the ’670 Patent on the grounds of anticipation and obviousness, and for lack of a patentable ornamental design.

a. Invalidity for Anticipation and Obviousness

JM's anticipation and obviousness arguments are expressly conditioned on the Court finding that a reasonably jury could conclude that the Accused Products infringe the ’670 Patent (Filing No. 843 at 44–46). Because the Court has held that the ’670 Patent is not broad enough such that a reasonable jury could find infringement, JM's conditional motion for summary judgment as to anticipation and obviousness is denied as moot.

b. Invalidity for Lack of Ornamental Design

JM also argues that the ’670 Patent is invalid “because it is not an ornamental or aesthetic invention and is therefore not eligible for design patent protection” (Filing No. 843 at 46). JM argues, in short, that the design of the ’670 Patent is the randomized result of Knauf's manufacturing process, and the design's named inventor, Dr. Brian Swift, was not “aiming at any preconceived ornamental design.” Id. at 46. Knauf responds that an ornamental design is patentable “ ‘no matter by what agency caused’ ” and the fact that the ornamental design originated from a manufacturing process does not preclude patentability (Filing No. 862 at 50 (quoting Gorham, 81 U.S. at 524–25). The Court agrees with Knauf.

In older cases, designs were occasionally held unpatentable because the inventor did not exhibit forethought as to a resultant design. See In re Stirling, 47 F.2d 809, 809 (P.T.A.B. 1931) (finding wallpaper design was not patentable for lack of invention because “the design itself is not the result of a definitely preformed conception in [the inventor's] mind of what it would be or is. The lines, streaks, blotches and stippled portions of the design and their fixation with reference to each other, as they appear therein, were not the children of his brain, but resulted haphazardly from certain movements or operations purely mechanical in nature.” (emphasis added)). However, the enactment of Section 103 clarified that “[p]atentability shall not be negated by the manner in which the invention was made.” 35 U.S.C. § 103. See Thaler v. Vidal, 43 F.4th 1207, 1212 (Fed. Cir. 2022) (stating that Graham v. John Deere Co., 383 U.S. 1, 15 (1966) explains “that the second sentence of § 103 was intended to clarify that ‘flash of creative genius’ is unnecessary for patentability”); Life Techs., Inc. v. Clontech Lab'ys, Inc., 224 F.3d 1320, 1325 (Fed. Cir. 2000) (“[T]he path that leads an inventor to the invention is expressly made irrelevant to patentability by statute.”); Oscar Mayer Foods Corp. v. ConAgra, Inc., 45 F.3d 443, 1994 WL 712488, at *4 (Fed. Cir. 1994) (“The discovery may be by design, by accident, by a vision in a dream, by a sudden flash of genius, or by any other conceivable means. ‘Patentability shall not be negatived by the manner in which the invention was made.’ ” (citing 35 U.S.C. § 103 (1988))); In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“The patentability of a product does not depend on its method of production.”).

Dr. Swift could therefore “invent” a patentable design so long as he conceived of the design as novel simultaneously with its creation, which Knauf's evidence states he did (Filing No. 826 at 17); Blue Genetian, LLC v. Tristar Products, Inc., 70 F.4th 1351, 1358 (Fed. Cir. 2023) (defining “conception” as “the definite and permanent idea of the invention”); Durdin v. Kuryakyn Holdings, Inc., 440 F. Supp. 2d 921, 936–37 (W.D. Wis. 2006) (“Conception, or the formation of a definite and permanent idea of the complete invention, is the touchstone of inventorship ․” (citing Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998))); Solvay S.A. v. Honeywell Int'l, Inc., 742 F.3d 998, 1000 (Fed. Cir. 2014) (“Making the invention requires conception and reduction to practice. While conception is the ‘formation, in the mind of the inventor, of a definite and permanent idea of a complete and operative invention,’ reduction to practice ‘requires that the claimed invention work for its intended purpose.’ ” (quoting Solvay v. Honeywell Int'l, Inc., 622 F.3d 1367, 1375 n.3 (Fed. Cir. 2010))).⁸ The fact that Dr. Swift's alleged invention came about by accident or through a randomized manufacturing process does not preclude patentability under Section 103.

JM's additional arguments that the ’670 Patent is dictated by its “function” are misplaced. Caselaw makes clear that “function” refers to the use of the item with the claimed design, not the function by which the claimed design is made. See Columbia Sportswear N. Am., Inc., 80 F.4th at 1380 (“It is true that valid design patents cannot be directed to designs that are primarily functional, as opposed to ornamental. But it is also true that design patents are granted only for a design applied to an article of manufacture. And articles of manufacture have functions. An article's function must not be confused with the ‘functionality’ of the design of the article. Concern with the latter is what has featured prominently in our case law. The idea is to preclude design-patent protection for something that, though purported to be an ‘ornamental’ design, is really dictated by function.” (quotation marks and citations omitted) (emphasis in original)); see also Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1329 (Fed. Cir. 2015) (finding that design of key was not ornamental because it was dictated by function and, specifically, no other key blade design could accomplish the intended function); L.A. Gear, Inc., 988 F.2d at 1123 (“An article of manufacture necessarily serves a utilitarian purpose, and the design of a useful article is deemed to be functional when the appearance of the claimed design is ‘dictated by’ the use or purpose of the article․ If the particular design is essential to the use of the article, it cannot be the subject of a design patent․ When there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose.”). In determining whether an element of a design is “dictated by functional considerations,” courts consider several factors, including “whether the protected design represents the best design; whether alternative designs would adversely affect the utility of the specified article; whether there are any concomitant utility patents; whether the advertising touts particular features of the design as having specific utility; and whether there are any elements in the design or overall appearance clearly not dictated by function.” PHG Techs., LLC v. St. John Cos., Inc., 469 F.3d 1361, 1366 (Fed. Cir. 2006). Here, the appearance of the insulation serves no insulation-related functions, so despite being the result of a functional manufacturing process, the design itself is not “functional” or dictated by “functional considerations.” JM's motion for summary judgment that the ’670 Patent is invalid because it is the random result of a manufacturing process is denied.

4. JM's Motion to Bar Pre-Suit Damages as to the ’670 Patent

JM moves for summary judgment as to whether pre-suit damages for infringement of the ’670 Patent are barred. In light of the Court's summary judgment ruling that JM has not infringed the ’670 Patent, the Court need not reach this argument and declines to do so. JM's motion for summary judgment as to pre-suit damages for the ’670 Patent is denied as moot.

5. Knauf's Motion for Summary Judgment on JM's Affirmative Defenses of Improper Inventorship and Inequitable Conduct

Knauf has moved for summary judgment on JM's affirmative defenses of improper inventorship and inequitable conduct.⁹ In light of the Court's summary judgment ruling that JM has not infringed the ’670 Patent, the Court need not reach these arguments and therefore declines to do so. See Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1481 (Fed. Cir. 1998) (finding that district court, in its discretion, could decline to decide affirmative defense following trial in light of dispositive non-infringement ruling). Knauf's motion for summary judgment as to JM's affirmative defenses of improper inventorship and inequitable conduct is denied as moot.

C. The ’210 Patent, ’089 Patent, and ’827 Patent

The parties cross-move for partial summary judgment on several issues related to the ’210, ’089, and ’827 Patents, collectively referred to as the “Hampson Patents.” Specifically, Knauf seeks summary judgment that: JM is estopped from contesting the novelty and non-obviousness of the ’210 Patent; JM's affirmative defense that the Hampson Patents omit Dr. Swift as an inventor does not invalidate the Hampson Patents; and the Hampson Patents are not invalid under 35 U.S.C. § 185 due to a foreign filing license defect. JM only seeks summary judgment that the Hampson Patents are invalid under 35 U.S.C. § 185. The Court will first address the foreign filing issue under 35 U.S.C. § 185, as that issue is dispositive of the parties’ disputes as to the Hampson Patents.

1. Cross-Motions for Summary Judgment on Invalidity under 35 U.S.C. § 185

Title 35 of the United States Code, Chapter 17, also known as the Invention Secrecy Act (the “Act”), governs the filing of patent applications in foreign countries. Congress enacted the Act in 1952, not too long after the end of World War II and the start of the Cold War. Its “fundamental purpose ․ was to continue in peacetime the authority to prevent the dissemination of information contained in patent applications whenever the disclosure of such information by the issuance of a patent would jeopardize the national security.” Halpern v. United States, 258 F.2d 36, 38 (2d Cir. 1959). The Act, in part, ensured that the United States government would have the first opportunity to review all patents in respect of inventions made in the United States and ensure that those patents, if filed abroad, would not endanger national security. Section 184 and 185 of the Act are the subject of the parties’ cross-motions. Section 184 provides:

Except when authorized by a license obtained from the Commissioner of Patents a person shall not file ․ in any foreign country prior to six months after filing in the United States an application for a patent ․ in respect of an invention made in this country․ The license may be granted retroactively where an application has been filed abroad through error and the application does not disclose an invention within the scope of section 181.

35 U.S.C. § 184(a). In other words, under Section 184 a person may not file abroad any patent application for an invention made in the United States unless the applicant has first: (1) obtained a foreign filing license from the USPTO Commissioner; or (2) waited six months after filing the application in the United States.

Section 185 describes the penalties for failing to comply with Section 184:

Notwithstanding any other provisions of law any person ․ shall not receive a United States patent for an invention if that person ․ shall, without procuring the license prescribed in section 184, have made ․ application in a foreign country for a patent ․ in respect of the invention. A United States patent issued to such person, his successors, assigns, or legal representatives shall be invalid, unless the failure to procure such license was through error, and the patent does not disclose subject matter within the scope of section 181.

35 U.S.C. § 185. Stated differently, if an applicant fails to comply with Section 184, then the applicant shall not receive a United States patent. And if a United States patent is nevertheless issued, then that patent shall be invalid unless the noncompliance was “through error,” and the patent does not disclose a subject matter affecting national security under 35 U.S.C. § 181.

Most of the facts material to the application of Section 185 are undisputed: Knauf failed to comply with Section 184; the Hampson Patents do not disclose a subject matter within the scope of section 181 ¹⁰ ; and Knauf has still not sought or obtained a retroactive foreign filing license for the Hampson Patents (Filing No. 843 at 56).

Knauf argues that it is entitled to summary judgment that Section 185 does not invalidate the Hampson Patents. Knauf contends that to invalidate the Hampson Patents under Section 185, JM would need to show by clear and convincing evidence that Knauf did not fail to obtain a foreign filing license through “error,” and that Knauf intentionally sought to disclose matters of national security by filing the Hampson Patents abroad (Filing No. 826 at 37). In its Cross-Motion, JM seeks summary judgment that the Hampson Patents are invalid under Section 185. JM contends that the burden is on Knauf to show that Section 185’s “through error” savings clause applies, which Knauf cannot do, and that in any event, JM can show by clear and convincing evidence that Knauf did not fail to obtain a foreign filing license through “error.”

The parties’ cross-motions regarding the foreign filing license issue can be distilled down to four primary disputes: (a) whether Section 185’s savings clause applies only if the patentee acted through “error” and its patent does not fall within the scope of Section 181, or if it applies when either prong is met; (b) which party bears the burden of proof in showing that the savings clause applies; (c) whether this Court may decide whether Section 185’s savings clause applies; and (d) whether, in this case, the party bearing the burden of proof has met that burden.

a. Whether the Savings Clause Requires that the Patentee Acted Both “Error” and Subject Matter Affecting National Security, or a Showing of Either

The parties first dispute the interpretation of Section 185’s savings clause, which invalidates a patent unless the violation of Section 184 “was through error, and the patent does not disclose subject matter within the scope of section 181.” (35 U.S.C. § 185). In its Cross-Motion, Knauf argues that to invalidate the Hampson Patents under Section 185, JM must prove both that Knauf did not violate Section 184 through error, and that the Hampson Patents disclosed information detrimental to national security (Filing No. 826 at 37). JM responds that it must only show one prong or the other; that “[b]y using ‘and’ instead of ‘or,’ Congress required that both prongs be met to avoid invalidity” (Filing No. 843 at 53). On reply, Knauf does not dispute JM's interpretation of the savings clause (Filing No. 862 at 58–59) (“Clearly, the statute we cite and quote is in the conjunctive ․ Knauf's point is that JM provides no evidence for either of the two prongs.”). JM's position is well-supported by caselaw and undisputed by Knauf on reply. The Court therefore agrees with JM. The plain language of Section 185 provides that a patent is invalid for noncompliance with Section 184 unless the noncompliance was through error “and” the patent did not disclose information detrimental to national security. Stated differently, if a patentee violates Section 184, its patent is invalid if either the violation was not through error or the patent discloses information within the scope of 35 U.S.C. § 181.

b. Which Party Bears the Burden of Proof

The parties next dispute which of them bears the burden of proof in showing whether Section 185’s savings clause applies to Knauf. Knauf argues that Section 185 provides an invalidity defense to infringement, and JM therefore bears the burden of proof in asserting that invalidity defense (Filing No. 826 at 35). JM, on the other hand, argues that while it must show Knauf's violation of Section 184, Knauf must show that Section 185’s savings clause applies (Filing No. 843 at 54).

The Federal Circuit has clearly stated that Section 185, like 35 U.S.C. §§ 102 or 103, provides an invalidity defense to infringement. See Aristocrat Techs., Australia PTY Ltd. v. Int'l Game Tech., 543 F.3d 657, 662–63 (Fed. Cir. 2008). And like any other invalidity defense, the burden of persuasion as to that defense always lies with JM. See, e.g., Genes Indus., Inc. v. Custom Blinds & Components, Inc., No. 15-0476, 2016 WL 11744807, at *6 (C.D. Cal. Sept. 26, 2016) (placing burden on defendant to show lack of inadvertence); Torin Corp. v. Philips Indus., Inc., 625 F. Supp. 1077, 1094 (S.D. Ohio 1985) (same).

While it may initially seem counter-intuitive to require JM to bear the burden of proving a negative—namely, that Knauf did not violate Section 184 through “error”—it is not inherently unfair or unreasonable to place this burden on JM. Invalidity is an affirmative defense. See, e.g., Commil USA, LLC v. Cisco Sys., Inc., 575 U.S. 632, 644 (2015) (“Invalidity is an affirmative defense that can preclude enforcement of a patent against otherwise infringing conduct.” (quotation marks and citation omitted)). JM was not required to raise this (or any) affirmative defense to defend against Knauf's infringement claims, but in choosing to raise this defense, JM must accept the burden of proving every element of that particular affirmative defense, including the negative elements.

JM cites Application of Gaertner, 604 F.2d 1348, 1351 (C.C.P.A. 1979) and 37 C.F.R. § 5.25(a)(3)(iii), in support of its position that Knauf must prove that it violated Section 184 through “error.” However, both authorities discuss the burden of proof a patentee carries in seeking a retroactive foreign filing license, not the burden in establishing invalidity under Section 185. Application of Gaertner, 604 F.2d at 1350–51 (“The PTO Group ․ denied Gaertner's petition for a retroactive license for foreign filing under 35 U.S.C. § 184, finding that he had not provided the required Verified showing of facts and that his showing indicated no inadvertence in filing abroad without a license.”); 37 C.F.R. § 5.25(a)(3)(iii) (establishing standard for seeking retroacting foreign filing license). Additionally, as Knauf notes in its reply, when the Gaertner decision was issued, Section 185 had not yet been amended to add the savings clause, making Gaertner inapplicable for that additional reason.

JM also cites TP Laboratories Inc. v. Professional Positioners, Inc., 724 F.2d 965 (Fed. Cir. 1984), which states that “the patent owner must be able to point to or come forward with convincing evidence to counter” a showing of invalidity (Filing No. 843 at 53). However, TP Laboratories does not hold that the patentee ever bears the burden of proving that an exception to an invalidity defense applies. Rather, TP Laboratories discusses the more nuanced distinction between the burden of persuasion and the burden of production, which the Supreme Court and Federal Circuit have discussed at greater length.

In Microsoft Corp. v. i4i Ltd., 564 U.S. 91, 96–104 (2011), the Supreme Court “differentiated between the concepts of burden of proof, burden of production, burden of persuasion, and standard of proof.” In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, 676 F.3d 1063, 1078 (Fed. Cir. 2012) (internal citations omitted) (quoting i4i Ltd., 564 U.S. at 96–104).

[T]he commonly used term ‘burden of proof encompasses the concepts of ‘burden of persuasion’ and ‘burden of production.’ The burden of persuasion specifies ‘which party loses if the evidence is balanced,’ while the burden of production specifies ‘which party must come forward with evidence at various stages in the litigation.’ The standard of proof, the court further explained, specifies ‘how difficult it will be for the party bearing the burden of persuasion to convince the jury of the facts in its favor.’ ”

Id. (internal citations omitted) (quoting i4i Ltd., 564 U.S. at 96–104).

The Federal Circuit has further explained that for invalidity defenses, the burden of persuasion always rests on the challenger, but the burden of production shifts between the challenger and the patentee. “[O]nce a challenger has presented a prima facie case of invalidity, the patentee has the burden of going forward with rebuttal evidence.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1360 (Fed. Cir. 2007); Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1322 (Fed. Cir. 2013) (“After an accused infringer has put forth a prima facie case of invalidity, the burden of production shifts to the patent owner to produce sufficient rebuttal evidence to prove entitlement to an earlier invention date. The ultimate burden of proving invalidity by clear and convincing evidence—i.e., the burden of persuasion—however, remains with the accused infringer.”); Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008) (“Neither TLC's burden to prove infringement nor Gennum's burden to provide invalidity, both ultimate burdens of persuasion, ever shifts to the other party—the risk of decisional uncertainty stays on the proponent of the position. A quite different burden is that of going forward with evidence—sometimes referred to as the burden of production—a shifting burden the allocation of which depends on where the process of trial the issue arises.” (citations omitted)); Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1573–74 (Fed. Cir. 1985) (explaining that party asserting invalidity always bears the burden of persuasion, though the “procedural burden of going forward with evidence” shifts to the patentee once the challenging party establishes a prima facie case of invalidity); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 291–92 (Fed. Cir. 1985) (“The presumption of validity is a procedural device that mandates that the party asserting invalidity bears the initial burden of establishing a prima facie case of obviousness under 35 U.S.C. § 103. Once a prima facie case has been established, the burden shifts to the patentee to go forward with rebuttal evidence showing facts supporting nonobviousness. The party asserting invalidity, however, always retains the burden of persuasion on the issue of obviousness until a final judgment has been rendered.”).

“However, this requirement does not ‘in substance shift the burden of persuasion,’ because ‘the presumption of validity remains intact and the ultimate burden of proving invalidity remains with the challenger throughout the litigation.’ ” Pfizer, Inc., 480 F.3d at 1360 (quoting Cable Elec. Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1022 (Fed. Cir. 1985)) (internal citation omitted). “[A]ll that means is that even though a patentee never must submit evidence to support a conclusion by judge or jury that a patent remains valid, once a challenger introduces evidence that might lead to a conclusion of invalidity—what we call a prima facie case—the patentee ‘would be well advised to introduce evidence sufficient to rebut that of the challenger.’ ” Id. (internal citations omitted) (quoting Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1570 (Fed. Cir. 1986)).

Once both parties have submitted their evidence regarding the challenger's invalidity, defense, “[t]he trial court has the responsibility to determine whether the challenger has met its burden by clear and convincing evidence by considering the totality of the evidence, including any rebuttal evidence presented by the patentee.” Pfizer, Inc., 480 F.3d at 1360 (citations omitted); In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, 676 F.3d 1063, 1078 (Fed. Cir. 2012) (“[T]he Supreme Court has never imposed nor even contemplated a formal burden-shifting framework in the patent litigation context. It has, instead, required that all evidence relevant to obviousness or nonobviousness be considered, and be considered collectively.”); Ralston Purina Co., 772 F.2d at 1573–74 (“ ‘Before rendering judgment, the court must determine whether “all of the evidence establishes that the validity challenger so carried his burden as to have persuaded the decisionmaker that the patent can no longer be accepted as valid.’ ” (quoting Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 885 (Fed. Cir. 1984))).

In context of summary judgment, “the burden is upon the movant in support thereof to demonstrate an absence of genuine issues of material fact and then the entitlement to judgment at law.” Cable Elec., 770 F.2d at 1022–23. If that showing is made, “then Fed. R. Civ. P. 56(e) states that the nonmovant has the burden to show that such a contradiction is possible; it cannot rest upon its allegations and pleadings.”). Id. Specifically, if the movant is asserting an invalidity defense, once the movant overcomes the presumption of validity by clear and convincing evidence, “it [falls] upon [the patentee] to submit evidence setting forth specific facts raising a genuine issue for trial.” The Federal Circuit has held that “[t]he avoidance of summary judgment as to patent invalidity does not represent a shift of the burden of going forward to establish a case for invalidity or the burden of persuasion on the issue of invalidity.” Instead, it merely reflects the duty imposed on nonmovants by Federal Rule of Civil Procedure 56(e).

In this case, then, JM always bears the burden of persuasion as to its invalidity defense under Section 185. To obtain summary judgment, JM must establish a prima facie case of invalidity under a clear and convincing standard of proof, as well as the absence of genuine disputes of material facts. More specifically, JM must establish that the undisputed facts show, by clear and convincing evidence, that Knauf violated Section 184 and that Section 185’s savings clause does not apply. Once JM establishes its prima facie case of invalidity, the burden of production shifts to Knauf, who is not required to submit any evidence, but ‘would be well advised to” do so. And to avoid summary judgment, Knauf is required to establish a genuine issue for trial, despite not bearing the burden of persuasion as to invalidity. Pfizer, Inc., 480 F.3d at 1360 (internal citations omitted) (quoting Orthokinetics, Inc., 806 F.2d at 1570).

c. Whether this Court May Decide Whether Section 185’s Savings Clause Applies

JM argues that in cases like this one, where the patentee has not obtained a retroactive foreign filing license, the Court may only determine whether the patentee violated Section 184, and if so, must hold the patent(s) invalid (Filing No. 843 at 53–54). JM asserts that only the USPTO may decide whether a patentee's failure to obtain a foreign filing license was through “error.” Id. In support, JM cites Twin Disc, Inc. v. United States, 10 Cl. Ct. 713 (Cl. Ct. 1986), which stated that “[i]n assessing the asserted violations of sections 184 and 185 ․ the court is constrained ․ to find a violation of section 184.” JM also cites other older cases in which federal courts invalidated patents procured in violation of Section 184 (Filing No. 843 at 52). Knauf responds that Section 185’s savings clause, which post-dates the cases cited by JM, allows courts to decide whether a patentee violated Section 184 “though error,” and that JM's interpretation of Section 185 would improperly require all patentees to first obtain retroactive foreign filing licenses from the USPTO to avoid invalidity under Section 185 (Filing No. 862 at 56).

Before 1988, Section 184 only allowed the USPTO to grant a retroactive foreign filing license if noncompliance occurred through “inadvertence,” and Section 185 contained no exceptions to the rule that a violation of Section 184 rendered a patent invalid. Under this “draconian” statutory language, the only way for patentees who violated Section 184, through error or otherwise, to avoid invalidity was to obtain a retroactive foreign filing license from the USPTO Commissioner. Twin Disc, Inc., 10 Cl. Ct. at 756. In trying to apply this strict yet amorphous statutory language, “court decisions made correction of licensing errors difficult by setting forth various strict interpretations of the standard of ‘inadvertence,’ ” which sometimes meant that “[a]n inventor could fail to meet the standard of ‘inadvertence’ even if the information disclosed was not significant in nature and did not contain any sensitive national security information.” Patent Law Foreign Filing Amendments, 56 Fed. Ref. 1924-01 (proposed Jan. 18, 1991) (to be codified at 37 C.F.R. pt. 5). Congress's 1988 amendments to Sections 184 and 185 were intended, in part, to remedy the widespread invalidation of patents due to improper filings of patent amendments abroad by applicants who, in good faith, believed that a license for the amendment was unnecessary. Id. The 1988 amendments were intended to both replace the malleable “inadvertence” standard with “through error and without deceptive intent”, and add a savings clause to Section 185. Id. In 2011, Congress struck the “without deceptive intent” language, leaving “through error” as the sole standard for addressing reissuance under Section 184 and invalidity under Section 185. Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284.

Based on this legislative history, the Court concludes that by enacting the 1988 amendments to Section 185, Congress intended for courts to have the authority to determine whether noncompliance with Section 184 was “through error.” If only the USPTO could make this determination, then courts would once again be left to enforce the “draconian” rule that any patent (or amendment) filed without a foreign filing license is invalid. Such a result would make superfluous the purpose and language of the 1988 amendment to Section 185. Additionally, the USPTO has clarified in its Rules and Regulations that Section 185 “affect[s] matters outside its jurisdiction,” and has thereby disclaimed any authority to apply Section 185’s savings clause. Patent Law Foreign Filing Amendments, 56 Fed. Ref. 1924-01 (proposed Jan. 18, 1991) (to be codified at 37 C.F.R. pt. 5). This disclaimer by the USPTO confirms the Court's conclusion that it may decide what is “error” under Section 185.

The Court therefore concludes that it may properly decide whether Knauf failed to comply with Section 184 “through error.” However, for reasons the Court explains below, Knauf's continued failure to obtain a retroactive foreign filing license from the USPTO is not irrelevant to the Court's “error” analysis.

d. Whether Either Party is Entitled to Summary Judgment on Invalidity under Section 185

Having clarified the scope of Section 185, the parties’ burdens of proof, and whether this Court may decide whether the savings clause applies, the Court now turns to whether either party is entitled to summary judgment on the issue of invalidity under Section 185. The Court begins with JM's Cross-Motion.

i. JM's Cross-Motion for Summary Judgment that the Hampson Patents are Invalid under Section 185

In reviewing JM's Cross-Motion for invalidity under Section 185, the Court considers all the evidence submitted by both partis, though the Court will draw all reasonable inferences in favor of Knauf as the non-movant. See Fed. R. Civ. P. 56(c)(3) (“A court need consider only the cited materials, but it may consider other materials in the record.”); Torry v. City of Chicago, 932 F.3d 579, 584 (7th Cir. 2019) (“The court was ․ free to consider evidence submitted in response to one motion when it decided the other. Indeed, it would have been odd for the court to ignore the [opposing cross-movant's evidence] because they were obviously relevant to the ․ cross-motion on the very same issues.”); see also Las Vegas Sands, LLC v. Nehme, 632 F.3d 526, 532 (9th Cir. 2011) (“Where the parties file cross-motions for summary judgment, the court must consider each party's evidence, regardless under which motion the evidence is offered.”).

JM argues that it can adequately show Knauf's lack of “error” through Knauf's sworn discovery responses and Knauf's failure to obtain a retroactive foreign filing license. In JM's Eleventh Set of Interrogatories, JM asked Knauf to “[d]escribe in detail any efforts that were made to obtain any foreign filing license(s)” prior to filing its Patent Cooperation Treaty application PCT/EP2008/060185, an ancestor of the Hampson Patents, with the European Patent office (the “PCT Application”) “or state such efforts were not made and explain the reasons why such efforts were not made” (Exhibit 2631, Filing No. 845-9). In its sworn response, dated February 2020, Knauf stated: “Such efforts were not made, for at least the following reasons․ With respect to any PCT applications, such applications designated the United States and are therefore considered U.S. national filings pursuant to 35 U.S.C. § 363, so no foreign filing license(s) are or were required.” (Id. at 3).

Section 363 states that “[a]n international application designating the United States shall have the effect, from its international filing date under article 11 of the [PCT], of a national application for patent regularly filed in the Patent and Trademark Office.” 35 U.S.C. § 363. However, 35 U.S.C. § 368 clarifies that “International applications filed in the Patent Trademark Office shall be subject to the provisions of chapter 17,” and that the filing of a patent application “in a country other than the United States on the invention made in this country shall be considered to constitute the filing of an application in a foreign country within the meaning of chapter 17, whether or not the United States is designated in that international application.” Id. §§ (a)–(b).

In May 2020, JM's supplemental invalidity contentions explained that Section 363 does not excuse an applicant from seeking a foreign filing license under Section 184 (Filing No. 845-3 at 13). Then, in its June 2020 responses to JM's Twelfth Set of Interrogatories, Knauf stated:

To the extent foreign filing licenses were required, the failure was made through error. Later foreign filing licenses were issued in U.S. applications, confirming that the subject matter does not qualify for secrecy under § 181. Therefore, “the failure to procedure such license was through error, and the patent does not disclose subject matter within the scope of section 181,” and thus the patent is not invalid under § 185. Retroactive licenses may be obtained if necessary.

(Filing No. 826-48 at 4). As of the filing of JM's Cross-Motion in April 2022—almost ten years after Knauf filed the PCT Application, and nearly two years after JM filed its supplemental invalidity contentions—Knauf has not sought a retroactive foreign filing license for the PCT Application (Filing No. 843 at 49, 54).

JM argues that this evidence shows clearly and convincingly that Knauf did not fail to obtain a foreign filing license “through error.” Specifically, Knauf was required during discovery to identify the error, if any, leading to its violation of Section 184 but did not do so (Filing No. 843 at 54 (“If there was error, Knauf had to disclose it in appropriate detail when JM asked.”)). Knauf instead “took the legally incorrect position” that a foreign filing license was not required under Section 363 and then, later, simply stated that to the extent a foreign filing license was required, it was not obtained “through error.” Id. JM contends that Knauf's misreading of the law does not constitute “error” under Section 185. Id. at 55–56. JM further argues that Knauf has failed to act with requisite diligence in applying for a retroactive foreign filing license, so the USPTO would undoubtedly deny any application; and the Court should not “condone Knauf's failure to act with ․ diligence” by refusing to invalidate Knauf's patents, where the USPTO would not. Id. at 56.

On reply, Knauf argues that JM has failed to meet its burden of proof in two ways. First, JM concedes that Knauf committed “error” in failing to obtain a foreign filing license (Filing No. 862 at 59). Second, JM has not shown that Knauf's mistake of law cannot constitute “error” under Section 185.

Having reviewed all the evidence and drawn all reasonable inferences in favor of Knauf, the Court finds that JM has met its burden of proof and is entitled to summary judgment. The Court agrees with JM that Knauf's interrogatory responses show that it did not fail to obtain a foreign filing license “through error.” Knauf's February 2020 responses clearly state that Knauf did not obtain a foreign filing license because it believed no license was required under Section 363. JM contends that a mistake of law can constitute an “error,” citing Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 595 U.S. 178, 187–88 (2022). In Unicolors, the Supreme Court discussed the scope of a “safe harbor” provision under 17 U.S.C. § 411, which stated that copyright registrations would remain valid despite the inclusion of inaccurate information, “as long as the copyright holder lacked ‘knowledge that it was inaccurate.’ ” Id. at 182. The court explained that the “legal maxim that ‘ignorance of the law is no excuse’ ․ does not apply in this civil case concerning the scope of a safe harbor that arises from ignorance of collateral legal requirements.” Id. at 187. The court therefore held that under § 411, “[l]ack of knowledge of either fact or law can excuse an inaccuracy in a copyright registration.” Id. at 182.

Neither the Federal Circuit nor the Supreme Court has clarified what constitutes an “error” for purposes of Section 185. In a few instances, the Federal Circuit has interpreted the phase “through error” as used in 35 U.S.C. §§ 251, 256. The Court finds these cases persuasive, given that these statutes also govern patents and use the same “through error” standard. The cases interpreting Sections 251 and 256 show that the Federal Circuit interprets the phrase “through error” broadly to include “ ‘all varieties of mistakes—honest and dishonest’—rather than only unintentional inaccuracy.” Egenera, Inc. v. Cisco Sys., Inc., 972 F.3d 1367, 1376 (Fed. Cir. 2020) (quoting Stark v. Advanced Magnetics, Inc., 119 F.3d 1551, 1554 –56 (Fed. Cir. 1997)); see In re Weiler, 790 F.2d 1576, 1582 (Fed. Cir. 1986) (“Though the term ‘error’ is to be interpreted liberally, Congress did not intend to alter the test of ‘inadvertence, accident, or mistake’ established in relation to the pre-1952 statutes.”).

The Federal Circuit has further described “error” as “accident, inadvertence, or mistake,” but has clarified that intentional actions, as compared to unintentional mistakes, may still constitute “error.” “A drafting choice that rested on ‘no cognizable false or deficient understanding of fact or law,’ but that was, say, an eyes-open choice made to secure the patent, ‘is not “error” as required by section 251.’ ” Fleming v. Escort Inc., 774 F.3d 1371, 1380 (Fed. Cir. 2014) (internal citation omitted) (quoting In re Dinsmore, 757 F.3d 1343, 1347–48 (Fed. Cir. 2014)); Ball Corp. v. United States, 729 F.2d 1429, 1435 & n.9 (Fed. Cir. 1984) (“ ‘Error’ is interpreted in the same manner as under section 64 of the old law, i.e., accident, inadvertence, or mistake.”); Application of Wadlinger, 496 F.2d 1200, 1207–08 (P.T.A.B. 1974) (“We would be hard-pressed to think of examples of situations which would be ‘error’ and not be encompassed by one or the other of ‘inadvertence, accident, or mistake.’ ‘Inadvertence’ and ‘accident’ may imply something other than deliberate action, but ‘mistake’ has a ‘broad sweet and is certainly inclusive of actions taken in full consciousness.” (citations omitted)).

Based on the Supreme Court's analysis in Unicolors and the Federal Circuit's interpretation of “error” in two sister statutes—35 U.S.C. §§ 251, 256—the Court finds that in Section 185, “error” may include mistakes of law. However, this finding does not resolve the parties’ issue. Knauf's assertions in response to interrogatories that no foreign filing license was required under Section 363, and its conclusory assertion that “to the extent” a foreign filing license was required, do not automatically establish that Knauf violated Section 184 “through error,” nor does it preclude summary judgment in JM's favor.

While the Unicolors court held that a mistake of law may constitute error, it also stated that a court need not “automatically accept” a claim that a copyright holder lacked certain legal knowledge. Id. at 187–88. “Circumstantial evidence, including the significance of the legal error, the complexity of the relevant rule, the applicant's experience with copyright law, and other such matters, may also lead a court to find that an applicant was actually aware of, or willfully blind to, legally inaccurate information.” Unicolors, Inc., 595 U.S. at 187–88. The Court of Federal Claims has likewise held that a conclusory assertion of a legal mistake is not sufficient to withstand summary judgment, and that the court may consider circumstantial evidence in deciding whether to accept the claim of legal mistake. In re Dinsmore, 757 F.3d at 1347–48 (“In the authorities that the applicants here feature, false or inadequate understandings about then-existing facts or law evidently underlay the aspects of the original patent sought to be altered by reissue․ Here, the applicants have not identified any deficient understanding as leading to the issuance of the original claims ․ Thus, the applicants simply have not alleged or shown that they had a mistaken belief as to the invalidity of those claims ․”); HEALTHeSTATE, LLC v. United States, 168 Fed. Cl. 624, 651 (Fed. Cl. 2023) (“Mr. Greene merely asserts that he did the best he could. Assuming this is a denial about his knowledge of the law, it is conclusory at best and thus not sufficient to raise an issue of fact. Moreover, under Unicolors, that denial would not necessarily resolve the issue ․ Reference to circumstantial evidence, including the resources available to Mr. Greene, is therefore appropriate.” (citations omitted)).

Here, based on the circumstantial evidence, it is clear that Knauf did not fail to obtain a foreign filing license “through error.” The failure to obtain a foreign filing license is significant and serious; it is grounds to completely invalidate a patent. Knauf's purported misapplication of Section 363 is also called into question by the plain language of its sister statute, Section 368, which states that all international applications are subject to Chapter 17, and that the filing of an international application “shall be considered to constitute the filing of an application in a foreign country within the meaning of chapter 17, whether or not the United States is designated in that international application.” 35 U.S.C. § 368(b). It is difficult to image clearer statutory language to refute Knauf's sworn statement that “such applications designated the United States ․ so no foreign filing license(s) are or were required” (Filing No. 845-9 at 3). Additionally, Knauf has been a sophisticated and well-established manufacturer of insulation for decades, see, e.g., Johns-Manville Corp. v. Guardian Indus. Corp., 586 F. Supp. 1034, 1045 (E.D. Mich. 1983) (identifying Knauf and JM as competitors)), and Knauf has been filing patents and engaging in patent litigation for nearly as long, see, e.g., Owens-Corning Fiberglass Corp. v. Knauf Fiber Glass GmbH, 912 F.2d 466 (6th Cir. 1990); Knauf Fiber Glass, GmbH v. Certainteed Corp., No. 02-CV-1215, 2004 WL 771257, at *3 (S.D. Ind. Mar. 24, 2004) (discussing Knauf's claims for infringement of patent with 1993 priority date).

To the extent Knauf argues that it acted “through error” because it misapplied Section 363, that argument is rejected. In light of the plain language of Section 368 and Knauf's sophistication and years of experience, no reasonable jury could conclude that Knauf had any mistaken beliefs as to the application of Section 363 or acted “through error.” Additionally, to the extent Knauf's February 2020 interrogatories do not cite Knauf's “error,” and instead only assert a now-abandoned legal position, Knauf has likewise failed to create any genuine dispute of material fact as to any “error.” The assertion that “[t]o the extent foreign filing licenses were required, the failure was made through error,” is entirely conclusory and insufficient to create a genuine dispute for trial. (Filing No. 826-48 at 4); HEALTHeSTATE, LLC, 168 Fed. Cl. At 660 (granting summary judgment in favor of defendants and against plaintiff).

Knauf's failure to apply for a retroactive foreign filing license is likewise persuasive evidence that Knauf did not originally fail to obtain the license “through error.” An “error,” regardless of how it is specifically defined, is a thing that needs correction. Knauf, however, has taken no steps toward any correction, which is convincing evidence that Knauf did not act in “error.” It is possible that Knauf has avoided seeking a retroactive foreign filing license because it believes that the USPTO would not issue one, considering how much time has passed since the PCT Application was filed. See In re Rosuvastatin Calcium Patent Litigation, 703 F.3d 511, 526 (Fed. Cir. 2012) (citing cases in which reissue was rejected due to absence of diligence in correcting patent after detection of error).

In sum, the lack of any believable grounds for “error” in Knauf's sworn interrogatory responses, combined with Knauf's ongoing failure to apply for a retroactive foreign filing license, show by clear and convincing evidence that Knauf did not violate Section 184 “through error.” Knauf's interrogatory responses likewise do not create a genuine issue of material fact as to its purported “error.”

As a final matter, the Court briefly addresses Knauf's mootness arguments. Knauf contends that this issue is moot “for at least two reasons”: “JM admits there are no national security concerns”; and “the USPTO did review and approve the subject matter for each of these Hampson U.S. patents” (Filing No. 862 at 58). Neither reason is persuasive. First, as explained above, to show that the savings clause does not apply to the Hampson Patents, JM must show either that the patents did not violate Section 184 “through error” or that the Hampson Patents did not jeopardize national security. JM is not required to show both prongs. And second, the USPTO's later-issued foreign filing licenses do not serve as retroactive foreign filing licenses for the period between the Hampson Patents’ original filing and the date of the amendments. Each of the Hampson Patent amendments granting a foreign filing license specifically state “This license ․ may be used at any time on or after the effective date thereof unless it is revoked․ This license is not retroactive” (Filing No. 826-25; Filing No. 826-26; Filing No. 826-26). Based on the undisputed material facts, the Hampson Patents were issued without a foreign filing license and therefore violate Section 184, notwithstanding the USPTO's later issuance of a foreign filing license for an amendment.

JM has established that the undisputed material facts show, by clear and convincing evidence, that Knauf violated Section 184 not through “error.” The Court therefore grants JM's motion for partial summary judgment that the Hampson Patents are invalid under Section 185.

ii. Knauf's Cross-Motion for Summary Judgment that the Hampson Patents are Not Invalid under Section 185

Based on the above analysis and conclusion, Knauf is not entitled to summary judgment that the Hampson Patents are not invalid under Section 185. The undisputed evidence, even when drawing all reasonable inferences in favor of Knauf, shows by clear and convincing evidence that the Hampson Patents are invalid under Section 185. Knauf therefore cannot carry its burden as the summary judgment movant, and the Court therefore denies Knauf's request for summary judgment that the Hampson Patents are not invalid under Section 185.

2. Knauf's Motion for Summary Judgment on Estoppel from Contesting Novelty and Non-Obviousness of ’210 Patent, and on JM's Inventorship Challenge

Knauf moves for summary judgment on three additional issues related to the Hampson Patents: whether JM is estopped from contesting novelty of the ’210 Patent; whether JM is estopped from contesting non-obviousness of the ’210 Patent; and that the Hampson Patents are not invalid for improper inventorship (Filing No. 826 at 24–26, 33–36). In light of the Court's ruling that the Hampson Patents are invalid under Section 185, the Court need not reach these additional arguments regarding JM's invalidity defenses and declines to do so.

3. JM's Motion to Bar Pre-Suit Damages as to the ’210 Patent

JM also moves for summary judgment as to whether pre-suit damages for infringement of the ’210 Patent are barred. In light of the Court's ruling that the Hampson Patents are invalid under Section 185, the Court need not reach this infringement argument and declines to do so.

D. The ’207 Patent and ’464 Patent

In its Cross-Motion, JM contends that based on a proper construction of Claim 1 of the ’207 and ’464 Patents, JM is entitled to summary judgment of non-infringement and invalidity as to both of those Patents. Claim 1 of the ’207 and ’464 Patents is:

1. A method of making a thermal or acoustical fiberglass insulation product, wherein the thermal or acoustical fiberglass insulation product comprises glass fibers, said glass fibers being present in the fiberglass insulation product in the range from about 80% to 99% by weight, wherein the method comprises:

spraying an uncured aqueous binder solution onto a mat of glass fibers during production of the fiberglass insulation product such that, once the aqueous binder solution is in contact with the glass fibers, residual heat from the glass fibers and flow of air through the mat evaporates water from the aqueous binder solution, the aqueous binder solution comprising: Maillard reactants including (i) an amine reactant and (ii) a carbohydrate reactant, wherein the carbohydrate reactant is selected from one or more carbohydrate reactants having one or more reducing sugars, one or more carbohydrate reactants which yield one or more reducing sugars in situ under thermal curing conditions, and combinations thereof, wherein the percent by dry weight of the reducing sugar from the carbohydrate reactant with respect to the total weight of reactants in the aqueous binder solution ranges from about 73% to about 96%;

transferring the binder coated mat to and through a curing oven;

heating the binder coated mat in the curing over and curing the binder so as to produce the thermal or acoustical fiberglass insulation product, wherein i) heated air is passed through the mat to cure the binder in contact with the glass fibers, ii) flights above and below the mat slightly compress the mat to give the fiberglass insulation product a predetermined thickness and surface finish, and iii) fibrous glass having a cured, rigid binder matrix emerges from the curing oven so as to product the fiberglass insulation product in the form of a batt; and

compressing the batt for packaging and shipping to a thickness of less than about 90% of its end of line thickness,

wherein curing of the binder consists essentially of a Maillard reaction, and wherein the cured binder is a formaldehyde-free, water resistant, thermoset binder comprising nitrogen-containing polymers that attach the glass fibers of the mat together.

(Filing No. 100-1 at 38; Filing No. 161-2 at 39) (emphasis added).

1. JM's Motion for Summary Judgment of Non-Infringement

JM moves for summary judgment on three issues with respect to Claim 1 of the ’207 and ’464 Patents. First, JM argues that under the proper construction of the phrase “spraying ․ onto a mat,” JM is entitled to summary judgment of non-infringement because the accused products do not meet this claim limitation. Second, JM contends that the phrase “slightly compress” is indefinite, so JM is also entitled to summary judgment of invalidity. Third, JM argues that the claims of the ’207 and ’464 patents are invalid under 35 U.S.C. § 112, ¶ 1 because the patent specifications do not contain a written description to support a “water resistant” binder solution with a “96%” sugar concentration. Because the construction of “spraying ․ onto a mat” is dispositive of JM's motion for summary judgment of non-infringement, the Court will decide the construction of that claim phrase and then analyze whether JM is entitled to summary judgment on non-infringement based on that construction, and before discussing the construction of additional disputed claim terms/phrases.

a. Construction of “spraying ․ onto a mat” [’207 and ’464 Patents, claim 1]11

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The disputed portions of the claim phrase are “uncured aqueous binder solution” and “onto a mat of glass fibers during production of the fiberglass insulation product.”¹² Knauf suggests that the phrases, respectively, should be construed as “uncured binder solution containing water” and “onto glass fibers during formation of the mat to result in a distribution of the binder within the formed mat of fibrous glass” (Filing No. 826 at 42). JM does not oppose Knauf's construction of “uncured aqueous binder solution” but contends that the phrase “onto a mat” should be afforded its plain meaning and does not require construction.

Knauf suggests that “onto a mat” should be interpreted “as a whole to give effect to the interrelationship of the sub-phrases in the claim” and the language in the specification. Specifically, Knauf cites Example 8 of the specification, which describes the “conventional fiberglass manufacturing process:

Typically, a binder is applied to glass fibers as they are being produced and formed into a mat, water it volatized from the binder, and the high-solids binder-coated fibrous glass mat is heated to cure the binder and thereby produce a finished fibrous glass bat ․

A porous mat of fibrous glass was produced by fiberizing molten glass and immediately forming a fibrous glass mat on a moving conveyor. Glass was melted in a tank and supplied to a fiber forming device such as a spinner or a bushing. Fibers of glass were attenuated from the device and then blown generally downwardly within a forming chamber․ The glass fibers were deposited onto a perforated, endless forming conveyor. A binder was applied to the glass fibers, as they were being formed, by means of suitable spray applicators so as to result in a distribution of the binder throughout the formed mat of fibrous glass. The glass fibers, having the uncured binder adhered thereto, were gathered and formed into a mat on the endless conveyor within the forming chamber with the aid of a vacuum drawn through the mat from below the forming conveyor. The residual heat contained in the glass fibers as well as the air flow through the mat caused a majority of the water to volatize from the mat before it exited the forming chamber.

(Filing No. 100-1 at 26). Knauf argues that the claim phrase “onto a mat” should be construed to conform to this description of “convention[al]” fiberglass insulation manufacturing. Knauf also cites sworn testimony from Dr. Strauss, who described how spraying the binder on the glass fibers just after they have been formed, and before they pile up on a conveyor, is ideal to produce “commercial satisfactory products” (Filing No. 826 at 42). Knauf notes that “JM's expert, Dr. Hirsekorn, did not know of any conventional process that sprayed the fibers after forming the mat on the conveyor.” Id. at 43.

JM asserts that “onto a mat” is presumed to have its plain and ordinary meaning, and that no intrinsic or extrinsic evidence warrants a departure from that meaning. JM argues that Knauf's proposed construction attempts to rewrite the claim language because the claim, as written, describes a less than desirable method of producing fiberglass insulation—namely, applying a binder once the glass fibers have already fallen on a conveyor and formed a mat, rather than applying the binder just after the fibers exit the spinner and as they are falling on to the conveyor (Filing No. 843). JM further argues that Dr. Strauss’ Declaration (Filing No. 826-5) does not show that the phase “onto a mat” should be afforded special meaning, but instead that Knauf should have written its claim differently.

JM's position is well taken and supported by both intrinsic and extrinsic evidence. The claim itself distinguishes between a “mat” and “glass fibers,” showing that Knauf did not intend to define “mat” as “glass fibers,” as proposed by Knauf's construction. The claim describes “spraying an uncured aqueous binder solution onto a mat of glass fibers,” which implies that the mat is an object made from, and distinct from, the glass fibers themselves (Filing No. 100-1 at 38) (emphases added). The claim likewise directs “transferring the binder coated mat to and through a curing oven” and “heating the binder coated mat in the curing over ․ where i) heated air is passed through the mat.” Id. These references to a “mat” confirm that a “mat” is an object formed on the conveyor and not loose glass fibers as they come together to form the mat. Further, the Summary distinguishes between a “mat” and “glass fibers” when it states “[o]ne way of using the binders is to bind glass fibers together such that they become organized into a fiberglass mat.” Id. at 16 (emphasis added). These references to a “mat” would be nonsensical if “mat” meant glass fibers as they form a mat. Zircon Corp. v. Stanley Black & Decker, Inc., 452 F. App'x 966, 976 (Fed. Cir. 2011) (noting that “adopting [the patentee's] construction would introduce even more inconsistency into other claims”); Generation II Orthotics Inc. v. Med. Tech. Inc., 263 F.3d 1356, 1365 (Fed. Cir. 2001) (“[C]laims can only be construed to preserve their validity where the proposed claim construction is ‘practicable,’ is based on sound claim construction principles, and does not revise or ignore the explicit language of the claims.”).

Additionally, Example 8, on which Knauf heavily relies, describes how a “mat” is formed and clarifies that it is separate and distinct from the glass fiber as they are forming a mat.” Example 8 describes how:

[t]he glass fibers were deposited onto a perforated, endless forming conveyor. A binder was applied to the glass fibers, as they were being formed, by means of suitable spray applicators so as to result in a distribution of the binder throughout the formed mat of fibrous glass. The glass fibers, having the uncured binder adhered thereto, were gathered and formed into a mat on the endless conveyor within the forming chamber with the aid of a vacuum drawn through the mat from below the forming conveyor.

(Filing No. 100-1 at 26 (emphases added)).

The available extrinsic evidence supports JM's argument that “mat” should be given its plain and ordinary meaning. In his expert report, Dr. Michael Pellegrin opines that the phrase “spraying an uncured aqueous binder solution onto a mat of glass fibers” does not need any construction because “the language is fully descriptive on its own to a POSITA” (Filing No. 845-7 at 2). The dictionary definition designated by Knauf also states that a “mat” is “something made up of many strands thickly intertwined or knotted so as to form a tangled often impenetrable mass” (Filing No. 554-12 at 4 (emphases added)).

On reply, Knauf argues that under Phillips, the claim term must be read in context of the particular claim and the entire patent. Knauf continues that “[t]he only other recitation of ‘sprayed onto the mat’ in the specification refers to ‘applied to a mat of glass fibers ․ during production of fiberglass products,’ but that ‘production’ process is what is described in Example 8 and is the basis for Knauf's construction” (Filing No. 862 at 67). Knauf's reliance on the specification's other use of “sprayed on the mat” is misplaced. While the claim phrase does appear elsewhere in the patent, it does not show that Knauf intended to define “spray onto a mat” to mean sprayed onto glass fibers during formation of the mat. The specification states:

[a]ny number of well known techniques can be employed to lace the aqueous binder in contact with the material to be bound. For example, the aqueous binder can be sprayed on (for example during the binding glass fibers) or applied via roll-coat apparatus.

These aqueous binders can be applied to a mat of glass fibers (e.g., sprayed onto the mat), during production of fiberglass insulation products.

(Filing No. 100-1 at 14 (emphasis added)).this language is not at 100-1 at 14 and I can't find it on the following pages

The phrase “sprayed onto the mat” as used in this specification is preceded by “e.g.,” and used as a mere example of the variety of ways in which a binder could be applied to “the material to be bound,” in this case glass fibers. Compare I.e., Black's Law Dictionary (11th ed. 2019) (“That is”); with E.g., Black's Law Dictionary (11th ed. 2019) (“For example”). “The Latin abbreviations ‘e.g.,’ and ‘i.e.,’ have very different meanings and should not be equated when construing claims.” Carrum Techs., LLC v. Unified Patents, LLC, No. 2020-2204, 2021 WL 3574209, at *4 n.5 (Fed. Cir. Aug. 13, 2021); see Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373–74 (Fed. Cir. 2014) (“Had the phrase been cast as a definition instead of as an example—if the phrase had been preceded by ‘i.e.,’ instead of ‘e.g.,’—then it would help provide the clarity that the specification lacks.”); Contra Doyle v. Crain Indus., Inc., 243 F.3d 564 (Table), 2000 WL 1608826, at *3 (Fed. Cir. Oct. 25, 2000) (“[T]he use of ‘i.e.,’ as opposed to ‘e.g.’ demonstrates that the patentee did not intend this numerical range to be merely exemplary of ‘ambient temperatures.’ ”). There is nothing in the ’207 or ’464 Patent that would indicate “e.g.” was meant to indicate a definition, rather than an example, and indeed, the Patents use “e.g.” and “i.e.” in distinct contexts throughout. Accordingly, the specification's use of the phrase “sprayed onto the mat” does not, as Knauf contends, show that the phrase “spraying ․ onto a mat” should be defined to refer to any other method of applying binder to glass fibers other than “spraying ․ onto a mat.”

Knauf's citation to Example 8 of the specification is likewise unavailing because this single embodiment is insufficient to show that Knauf intended to define “mat” as glass fibers as they are forming a mat throughout the Patent. “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.” Thorner, 669 F.3d at 1365–66 (quoting CCS Fitness, Inc., 288 F.3d at 1366). “It is not enough for the patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must ‘clearly express an intent’ to redefine the term.” Thorner, 669 F.3d at 1365–66 (quoting Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008)); see C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004) (“[T]he inventor's written description of the invention, for example, is relevant and controlling insofar as it provides clear lexicography ․” (emphasis added)).” Even where the parties do not dispute that a patent's written description discloses a limitation different than the claim, “the unambiguous language of the ․ claim controls over any contradictory language in the written description.” Elekta Instruments S.A. v. O.U.R. Scientific Int'l, Inc., 214 F.3d 1302, 1308 (Fed. Cir. 2000).

JM contends that Knauf's proposed claim construction is similar to the patentees’ proposed construction in Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004) (“Chef America”). The Court agrees. In Chef America, the patent in suit covered a process for producing a certain type of dough that, upon completion of cooking via oven or microwave, will have a flaky, crispy texture. Id. at 1372. The claim at issue disclosed “ ‘heating the resulting batter-coated dough to a temperature in the range of about 400° F. to 850° F.’ The question [was] whether the dough itself is to be heated to that temperature ․ or whether the claim only specifies the temperature at which the dough is to be heated, i.e., the temperature of the oven.” Id.at 1371–72. The district court construed the temperature limitation as applying to the dough temperature. “The problem is that if the batter-coated dough is heated to a temperature of 400° F. to 850 ° F., as the claim instructs, it would be burned to a crisp.” Id. at 1373.

The patentee argued that the claim referred to the temperature of the oven, citing two examples in the specification and an expert declaration. The patent's two examples illustrated the “ ‘preparation of various dough products according to the process of the present invention.’ Each example states that the dough product is placed in a multi-layered convection over and baked ‘at temperatures’ or ‘at a temperature’ of 680° F. to 850° F.” Id. at 1372. But despite these examples, the district court and the Federal Circuit concluded that “nothing in the claims, the specification, or the prosecution history ․ indicates that the patentees here defined ‘to’ to mean ‘at.’ To the contrary, the prosecution history suggests that the patentees intentionally used ‘to’ rather than ‘at’ in drafting the temperature requirements of the claim.” The court concluded that the patentees “argue only that ‘to’ should be construed to mean ‘at’ because otherwise the patented process could not perform the function the patentees intended. As we have noted, however, we have repeatedly declined to rewrite unambiguous patent claim language for that reason.” Id. at 1375.

The Chef America court also rejected the patentees’ arguments as to how a POSITA would interpret the claim phrase. The patentees cited the declaration of a baking expert who stated that the claim phrase meant to him, as a POSITA, “that the batter-coated dough is placed in an oven that has been set to a temperature in the range of about 400° F to 850° F.” Id. at 1375. The expert further opined that the two examples showed that the heating limitation applied to oven temperature and not product temperature. Id. The court noted, however, that the expert declaration did not support a conclusion that the claim words themselves had any special meaning.

Instead, [the] declaration makes it clear that, while he may read the claim in accordance with the construction proffered by plaintiff, he does so not because the words have special meaning to him, but because it “is well known[ ] that raising the temperature of a dough product itself to such high temperatures would result in an unusable product.

Id. The court concluded that the patentees’ argument was “but a restatement of its basic contention that unless [the court] rewrite[s] the claim, the patented process cannot perform its intended function. We have already declined, however, to take such action, and we follow the same course in response to this additional argument.” Id. at 1375–76. “Even ‘a nonsensical result does not require the court to redraft the claims of the ․ patent․ Where, as here, the claim is susceptible to only one reasonable construction,” the court must set aside canons of claim construction that aim to preserve validity and “must construe the claims based on the patentee's version of the claim as he himself drafted it.’ ” Id. at 1374 (quoting Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999)).

Knauf argues that “JM's reliance on Chef America is misplaced” because “[t]he argument that ordinary words have ordinary meanings and therefore are not construed is contradicted by the seminal” case Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), “which requires that claim terms be read in context of the claim and entire patent.” (Filing No. 862 at 67.) However, Chef America does not stand for the proposition that claim terms must be given “ordinary meanings,” nor is it inconsistent with Phillips. Rather, Chef America holds only that claims cannot be construed to conform to how they should be (or should have been) written; and that unambiguous claim terms should be given their ordinary meaning, absent evidence that the patentee intended to ascribe a special meaning to that term. And the Phillips court confirms that “the words of a claim ‘are generally given their ordinary and customary meaning,’ ” and that “the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art, who is deemed to read the claim term in context of the claim and the entire patent.

Here, JM has offered evidence from Dr. Pellegrin that a POSITA would understand the disputed claim phrase does not require any additional construction to be understood by a POSITA. Knauf, however, has not offered any evidence to show either that a POSITA would ascribe a different ordinary meaning to “onto a mat,” or that it intended to ascribe a special meaning to “onto a mat”. To the contrary, Knauf's reliance on a dictionary definition of “mat” indicates that it intended to define “mat” pursuant to its ordinary, dictionary definition (Filing No. 554-12). Instead, Knauf's evidence shows only that a POSITA would understand the preferable method of making fiberglass insulation is to spray binder onto glass fibers as they are forming a mat, and that spraying binder onto an already-formed mat is a less preferrable method. Dr. Strauss stated in his Declaration “[i]t is well known in the industry that it is not desirable to directly spray at the bottom of the forming chamber because that binder spray will not sufficiently penetrate to coat and bind together the glass fibers,” and that a POSITA “would conclude that the claim includes spraying during mat formation in the manufacturing process, and not just direct spray onto a finished mat” (Filing No. 826-5 at 15–16). Dr. Strauss also explains that as part of another claim element, the binder must be heated to achieve “a cured rigid binder matrix” that allows the mat to be compressed for packaging and expanded once removed from the packaging, but “[t]he commercial reality of producing such a product is ․ that property will be compromised if not sprayed to result in a distribution of the binder throughout the mat.” Id. at 16. Dr. Strauss’ Declaration is not helpful to Knauf. The declaration does not state that a POSITA does not understand the phrase “onto a mat” as meaning anything other than “onto a mat,” or that the ’207 and ’464 Patents ascribe a different meaning to “onto a mat,” either of which might support Knauf's proposed construction. Instead, Dr. Strauss’ Declaration states only that a POSITA would read the claim as disclosing “spraying an uncured aqueous binder solution onto glass fibers during formation of the mat” because that reading reflects the conventional and optimal method of producing fiberglass insulation. Eidos Display, LLC v. AU Optronics Corp., 779 F.3d 1360, 1367–68 (Fed. Cir. 2015) (“Determining how a person of ordinary skill in the art would understand the limitation ․ is different from rewriting the limitation.”).

Example 8 of the specification, similarly, only explains that the “conventional” method of making fiberglass insulation involves spraying binder on glass fibers, not a mat. Unfortunately, the Court must “construe the claim as written, not as the patentees wish they had written it.” Chef Am., Inc., 358 F.3d at 1375. “The fact that the claims do not appear in the patent as, perhaps, they were originally intended is not a problem this court has the authority to remedy.” Zircon Corp., 452 F. App'x at 974–76; see Amazin’ Raisins Int'l, Inc. v. Ocean Spray Cranberries, Inc., 306 F. App'x 553, 560 (Fed. Cir. 2008) (“[T]he claim language expressly states that the acidulant's purpose is to remove the natural flavor from the fruit. Remove means remove, it does not mean merely mask. The specification repeatedly draws a distinction between adding flavor and removing flavor even with respect to the acidulant itself. With this distinction in mind, the patentee chose to use ‘remove’ when claiming the invention.”).

In another analogous case, Elekta Instruments S.A. v. O.U.R. Scientific Int'l, Inc., 214 F.3d 1302, 1308 (Fed. Cir. 2000), the Federal Circuit declined to construe unambiguous claim language to reflect the (perhaps) intended elements of the patented invention. In Elekta, claim 1of the patent in suit referred to an arrangement of radiation beams directed radially from the beam source out across a plane “only within a zone extending between latitudes 30°–45°>>, as seen from a diametrical plane.” Id. at 1304. The written description explained that the beams were meant to extend “within an annular curved zone extending maximally up to latitudes 30°>>–45°.” The district court interpreted the claim to include beam channels located “beginning at the edge of the helmet (0°) and extending to a point between 30°–45°.” Id. at 1307. On appeal, the defendant argued that the district court erred, and that the claim unambiguously excluded bean channels located between 0° and 30°. Id. at 1306. The patentee argued that the defendant's “proposed claim construction should not be adopted because it would exclude the preferred and only embodiment disclosed in the specification.” Id. at 1308. The Federal Circuit noted that “[s]uch an interpretation is rarely, if ever, correct and would require highly persuasive evidentiary support.’ ” Id. at 1308 (quoting Vitronics Corp., 90 F.3d at 1583). But the court nevertheless concluded that “in light of the prosecution history and unambiguous language of the amended claim, ․ this is the rare case in which such an interpretation is compelled.” Id.

By contrast, in Ecolab, Inc. v. FMC Corp., 569 F.3d 1335 (Fed. Cir. 2009), the Federal Circuit held that the claim term “sanitize” had two reasonable meanings, so the court could properly adopt a proposed construction that clarified the ambiguity. The patent in Ecolab, which directed to a “method for sanitizing fowl,” stated that the term “sanitize” denoted “a bacterial population reduction to a level that is safe for human consumption.” Id. at 1344. The defendant argued that it could not infringe the patent because “it does not and cannot make raw poultry safe for human consumption; cooking is required.” Id. At trial, the district court instructed the jury that in context of the patent “the ‘sanitized’ meat was not safe for consumption until it was cooked.” The defendant argued that the district court improperly injected a cooking element into the term “sanitize” and effectively rewrote the claim language. The Federal Circuit disagreed, affirming the district court and explaining that “the definition of ‘sanitize’ is ambiguous in that it does not indicate when consumption is to take place,” and the claim language in Ecolab was therefore distinguishable from the unambiguous claim language in Chef America. Id. Importantly, the Ecolab court did not construe “sanitize” to incorporate a cooking element simply because the preferred (and only) method of preparing poultry for human consumption is by cooking it. Instead, the court construed “sanitize” because it was ambiguous and required construction. See cf. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1366–67 (Fed. Cir. 2011) (“Unlike in Chef America, however, construing the claim to require testing on an ‘amorphous PET material’ does not replace any claim term with a different term, but instead interprets the claimed DSC measuring technique in light of the specifications, which clearly, repeatedly, and unambiguously state that such tests should be performed on amorphous PET material.”).

And in Akzo Nobel Coatings, Inc. v. Dow Chemical Co., 811 F.3d 1334, 1345 (Fed. Cir. 2016), another distinguishable case, the Federal Circuit adopted a construction that avoided indefiniteness because the claim was contained ambiguity as to when a certain claim limitation would take place. The patent in suit directed to an extrusion process that generated low-viscosity aqueous polymer dispersions. Claim 1 of the patent in suit described a specific process, some steps of which were carried out at elevated temperatures and some steps of which were not. Claim 2 required “[a] process according to claim 1 which is carried out at a temperature of from about 5 to 150° C. above the melting point of the polymer.” The district court adopted the patentee's proposed construction of claim 2, which indicated that claim 2's temperature limitation applied only the steps of claim 1 occurring at elevated temperatures. Id. at 1344–45. On appeal, the defendants argued that claim 2 was indefinite for failing to identify whether claim 2's temperature limitation applied to all steps of claim 1 or, if only some steps, which ones. Id. at 1345. The defendants contended that the district court (and the Circuit court, in affirming the district court) “r[a]n afoul of the principle that courts may not redraft claims to sustain their validity” as announced in Chef America. Id. The Federal Circuit stated that the defendant's reliance on Chef America was “misplaced” because the court was “not redacting the claims, but rather construing the claims to require the heightened temperature range to apply to the elevated temperature phases in accordance with the specification.” Id.

The present dispute is similar to the disputes in Chef America and Elekta Instruments and distinguishable from those in Ecolab and Akzo. The phrase “onto a mat” is not ambiguous. Its meaning is clear based on the language of the patent claim and specifications, and it is not subject to more than one reasonable interpretation. Astellas Pharma Inc. v. Actavis Elizabeth LLC, No. 16-905, 2018 WL 4776372, at *18 n.26 (D. Del. June 18, 2018) (distinguishing the court's decision in Astellas from Chef America because in Astellas, “the claim language, standing alone, could be reasonably interpreted as both parties posit, so the Court's decision does not amount to re-writing the claim language.”). Additionally, the prosecution history for the ’207 and ’464 Patents shows that Knauf has consistently used the claim phrase “onto a mat,” instead of “onto glass fibers”.

Further, nothing in the Patents indicates that Knauf intended to act as its own lexicographer and define the phrase “onto a mat” to have any meaning other than its plain meaning. Rather, Knauf's cited evidence shows only that it wishes to rewrite the claim to disclose a preferable method of making fiberglass insulation. The Court may not do this. The Federal Circuit “has repeatedly held that courts may not redraft claims to cure a drafting error made by the patentee, whether to make them operable or to sustain their validity. To do so ‘would unduly interfere with the function of claims in putting competitors on notice of the scope of the claimed invention.’ ” Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1215 (Fed. Cir. 2008) (citations omitted) (quoting Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951 (Fed. Cir. 1993)). And while a court “may construe claims to sustain their validity when the claims are amenable to more than one reasonable construction; when the claims are susceptible to only one reasonable construction, we will construe the claims as the patentee drafted them.” Id.; see Amazin’ Raisins Int'l, Inc., 306 F. App'x at 559–60 (“The claim requires that the acidulant ‘substantially remove’ the natural flavor from the fried fruit—not that it ‘mask,’ ‘cover,’ or ‘conceal’ it. ‘[W]e have repeatedly declined to rewrite unambiguous patent claim language’ and will decline to do so here.” (alteration in original) (quoting Chef Am., 358 F.3d at 1375).

The Federal Circuit has limited the application “of the maxim that claims should be construed to preserve their validity to situations in which [the court] concludes, after reviewing all the intrinsic evidence, that the claim language is ambiguous.” Where the language is unambiguous, the Federal Circuit has gone so far as to “construe[ ] the claims to exclude all disclosed embodiments.” Lucent Techs., Inc., 525 F.3d at 1215–16 (citing Chef Am., 358 F.3d at 1373–74; Elekta Instruments, 214 F.3d at 1308–09).

Because JM does not dispute the portion of Knauf's proposed construction of “uncured aqueous binder solution” as “uncured binder solution containing water,” the Court will adopt that portion of Knauf's proposed construction. However, the Court concludes that the remaining disputed portions of the claim should be given their ordinary meaning and do not require construction. Therefore, the Court construes the following claim phrase:

spraying an uncured aqueous binder solution onto a mat of glass fibers during production of the fiberglass insulation product such that, once the aqueous binder solution is in contact with the glass fibers, residual heat from the glass fibers and flow of air through the mat evaporates water from the aqueous binder solution

as:

spraying an uncured binder solution containing water onto a mat of glass fibers during production of the fiberglass insulation product such that, once the aqueous binder solution is in contact with the glass fibers, residual heat from the glass fibers and flow of air through the mat evaporates water from the aqueous binder solution.

b. Whether JM Is Entitled to Summary Judgment of Non-Infringement

JM argues that under the proper claim construction for “spraying ․ onto a mat,” in which that phrase is given its ordinary meaning, JM is entitled to summary judgment of noninfringement as to the ’207 and ’474 Patents (Filing No. 843 at 61–64). JM has designated evidence that in JM's manufacturing process, “binder is sprayed onto glass fibers just after they are formed and as those fibers are falling through the air,” not once the fibers are formed into a mat of glass fibers (Filing No. 843 at 61). JM contends that Knauf has no evidence that JM infringes on the ’207 or ’464 Patents under JM's proposed construction of the phrase “onto a mat.”

Knauf responds that even if its proposed construction is not adopted, “ ‘mat’ includes tangled glass fibers, which are sprayed immediately after formation,” so “there is, at minimum, a genuine dispute of material fact which prevents summary judgment to JM.” Id. at 67–68. Though the argument is entirely undeveloped, Knauf appears to be arguing that because JM's manufacturing process resulting in binder being applied via spraying through a mat of glass fibers, there remains a genuine dispute as to whether JM's process infringes on the ’207 and ’464 Patents. However, Knauf acknowledges in its reply brief that the ordinary meaning of “onto” means “to a position or point on,” not “throughout,” or “within” or “among.” “Onto” means “onto,” and the undisputed evidence shows that JM does not spray binder “onto a mat of glass fibers.” Amazin’ Raisins Int'l, Inc., 306 F. App'x at 560 (“[T]he claim language expressly states that the acidulant's purpose is to remove the natural flavor from the fruit. Remove means remove, it does not mean merely mask.”).

Knauf designates two pieces of evidence that purportedly create a genuine dispute of material fact precluding summary judgment. First, Knauf cites a thirty-six-page letter from JM's counsel to Knauf's counsel regarding discovery. On page thirty-five, JM's counsel explained that no two pieces of JM's insulation were identical because certain aspects of the production process were randomized. Specifically, JM's counsel noted that “[a]s [glass fibers] form and come together randomly, they are sprayed with a binder solution, resulting in varying amounts of binder on individual fibers” (Filing No. 863-6). This letter from JM's counsel is not admissible evidence regarding JM's manufacturing process; Knauf does not offer it in a form that would be admissible at trial, so it is not proper evidence on summary judgment. Moreover, even if the letter were admissible, Knauf fails to explain how fibers “forming and coming together” would constitute a “mat” for purposes of infringement.

Second, though not cited in its briefs, Knauf argued at the summary judgment and Markman hearing that as shown in a video, JM sprays its binder onto the glass fibers above the conveyor belt, and “the binder spray is raining down along with the fibers onto the mat,” resulting in JM “spraying ․ onto a mat” (Filing No. 901 at 168). Knauf did not cite the video to which it referred at the hearing, and the only video offered into evidence at the hearing is a video of Knauf's process for making fiberglass insulation. Accordingly, Knauf has not identified any admissible evidence that would create a genuine dispute as to whether JM's process infringes on Knauf's patents. See Jones v. United States, 49 Fed. Cl. 516, 521 (Cl. Ct. 2001) (“As the Seventh Circuit noted, ‘[r]oughly speaking,’ a motion for summary judgment ‘is the put up or shut up’ moment in a lawsuit, when a party must show what evidence it has that would convince a trier of fact to accept its version of events.’ Here ․ plaintiff simply has not ‘put up’ and now cannot ‘bet on the come,’ speculating that he might yet cure his patently weak evidentiary hand.” (quoting Schacht v. Wis. Dep't of Corrs., 175 F.3d 497, 504 (7th Cir. 1999))).

Knauf has therefore failed to sustain its burden in response to JM's motion for summary judgment on the issue of non-infringement. “In moving for summary judgment of non-infringement, ‘all that is required is “notice to the party with the burden of proof that [it] had to come forward with all of [its] evidence.’ ”” Ross-Hime Designs, Inc. v. United States, 151 Fed. Cl. 241, 254 (Fed. Cl. 2020) (quoting Exigent Tech., Inc. v. Atrana Solutions, Inc., 442 F.3d 1301, 1308 (Fed. Cir. 2006) (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 326 (1986)))). “Nothing more is required than the filing of a summary judgment motion stating that the patentee had no evidence of infringement and pointing to the specific ways in which accused systems did not meet the claim limitations.” Exigent Tech., Inc., 442 F.3d at 1309. If the moving party makes such a showing, the nonmoving party “must do more than simply show that there is some metaphysical doubt as to the material facts” and come forward with “specific facts showing that there is a genuine issue for trial.” Matsushita Elec. Indus. Co., 475 U.S. at 586–87. “A nonmoving party's failure of proof concerning the existence of an element essential to its case on which the nonmoving party will bear the burden of proof at trial necessarily renders all other facts immaterial and entitles the moving party to summary judgment as a matter of law.” Dairyland Power Co-op v. United States, 16 F.3d 1197, 1202 (Fed. Cir. 1994) (citing Celotex Corp., 477 U.S. at 323).

JM has met its burden as the summary judgment movant in showing that it does not infringe the “spraying onto a mat” step of Claim 1 of the ’207 and ’464 Patents. Because the ’207 and ’464 Patents are method patents, and because Claim 1 is the sole independent claim of those Patents, JM is entitled to summary judgment of non-infringement as to the ’207 and ’464 Patents in their entirety. Mirror Worlds, LLC v. Apple Inc., 692 F.3d 1351, 1358 (Fed. Cir. 2012) (“To infringe a method claim, all steps of the claimed method must be performed.”); Holtz v. Conexant Sys., Inc., 56 F. App'x 470, 473 (Fed. Cir. 2002) (“It is axiomatic, of course, that in order for infringement of a method patent to lie, all claimed steps of a method must be performed.”); Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989) (“One who does not infringe an independent claim cannot infringe a claim dependent on (and thus containing all the limitations of) that claim.”).

The Court further finds that Knauf has failed to create a genuine dispute of material fact as to infringement under the doctrine of equivalents. Boston Scientific Corp., 653 F. Supp. 3d at 581 (finding no genuine dispute of material fact regarding infringement under the doctrine of equivalents; “Plaintiffs have presented no evidence in support of infringement on this claim limitation under the doctrine of equivalents.”). “Summary judgment of noninfringement under the doctrine of equivalents is proper if no reasonable jury could determine that a claim limitation is met in the accused device by an equivalent.” Optical Disc Corp. v. Del Mar Avionics, 208 F.3d 1324, 1336 (Fed. Cir. 2000); see Sage Prods. Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1423 (Fed. Cir. 1997) (“Although equivalence is a factual matter normally reserved for a fact finder, the trial court should grant summary judgment in any case where no reasonable fact finder could find equivalence.”). The undisputed evidence shows that JM sprays its binder on glass fibers as they are being formed and while falling through the air, which is not insubstantially different from spraying a mat once it has already formed on a conveyor. There is no admissible evidence in the record showing that JM practices a method insubstantially different from the “spraying ․ onto a mat” step of Knauf's ’207 and ’464 Patents. Holtz, 56 F. App'x at 473–74 (“It is equally axiomatic that equivalency is assessed for each claim limitation, and application of the doctrine of equivalents cannot eliminate any limitation in its entirety.”) (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997)); Charles E. Hill & Assocs., Inc. v. CompuServe, Inc., 33 F. App'x 527, 2002 WL 535806, at *6 (Fed. Cir. Apr. 10, 2002) (affirming the district court granting summary judgment of non-infringement because patentee “failed to introduce evidence that [defendant] practiced a method that included steps relating to the claimed use of contrast and variable data, as the district court defined those terms,” and also “failed to show that [the defendant] practiced the claimed method, but also failed to show that [the defendant] employed a method insubstantially different from [the patentee's]”)

The Court therefore grants JM's motion for summary judgment as to non-infringement of the ’207 and ’464 Patents.

2. JM's Motion for Summary Judgment of Invalidity Due to Indefiniteness

JM next argues that the phase “slightly compress” in Claim 1 of the ’207 and ’464 Patents is indefinite, and that JM is therefore entitled to summary judgment of invalidity of those Patents. Because the construction of this one claim phase is dispositive of JM's motion for summary judgment of invalidity of the ’207 and ’464 patents, the Court will decide the construction of “slightly compress,” before addressing construction of other disputed claims, and analyze whether JM is entitled to summary judgment of invalidity for the ’207 and ’464 Patents.

a. Construction of “slightly compress” [’207 Patent, claims 12, 51, 61 (1); ’464 Patent, claims 6, 17 (1)]

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The parties dispute the construction of the claim phase “slightly compress”. JM contends that the claim is indefinite, and Knauf contends that the claim should be construed as “compress at least slightly.”

Knauf appears to acknowledge that its proposed construction of “compress at least slightly” adds an additional element to the phrase “slightly compress,” but argues that “the preamble of this claim uses the term ‘comprising’ [so] it is an open ended claim and, therefore, covers additional compression beyond slight compression. Adding ‘at least’ makes this clear” (Filing No. 826 at 44). Knauf also contends that the specification's Example 8, which describes a product being compressed from nine inches to six inches, supports its proposed construction. Id. JM responds that Knauf's proposed construction “impermissibly read the word ‘slightly’ entirely out of the claims” and is “contrary to basic tenets of claim construction” (Filing No. 843 at 95).

JM argues that the phase “slightly compress” is indefinite because neither the ’207 nor ’464 Patent provides guidance as to the scope of the term “slightly”. KM also contends that none of the expert witnesses in this case could state how much is “slightly” versus more than “slightly,” confirming that the phrase is indefinite. Knauf replies that the phrase “slightly compress” is not indefinite because the patents clarify that the term “slightly” “is not infinitesimal and is sufficient to give ‘a predetermined thickness and surface finish’ ” (Filing No. 862 at 68).

As to Knauf's proposed construction, the Court agrees with JM that it is contrary to the claim language and should be rejected. By construing “slightly compress” as “compress at least slightly,” the limitation “slightly” would become superfluous; the claim would include more than “slight” compression and would contradict its plain language. See Akzo Nobel Coatings, Inc, 811 F.3d at 1340 (“[S]uch a result is disfavored.”); Bicon, Inc. v. Straumann Co., 441 F.3d 945, 951 (Fed. Cir. 2006) (“In sum, the effect of adopting Diro's proposed claim construction would be to read [certain] limitations ․ out of the claim. Not only would that be contrary to the principle that claim language should not be treated as meaningless, but it would be contrary to the specification ․”).

Knauf's reliance on the term “comprising” likewise does not convince the Court that it may adopt a contradictory construction. “In the patent claim context the term ‘comprising’ is well understood to mean ‘including but not limited to.’ ” CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 811 (Fed. Cir. 1999)). “ ‘Comprising’ is a term of art used in the claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.” Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997); see Crystal Semiconductor Corp. v. TriTech Microelectonics Int'l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001) (stating that “ ‘comprising’ creates a presumption that the recited elements are only a part of the device, that the claim does not exclude additional, unrecited elements”). In other words, the term “comprising” indicates that the recited claim elements are not exhaustive, and “an accused method cannot escape infringement by including additional steps not recited in the claims” (Filing No. 843 at 66). The term “comprising” does not, as Knauf suggests, mean that recited claim elements are simply a lower threshold of those elements, or that the Court may adopt a construction of a recited claim element that is inconsistent with the recited element's plain meaning.

The Court also agrees with JM that the phrase “slightly compress” is indefinite. “[I]ndefiniteness is a question of law and in effect a part of claim construction.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012). Terms of degree, including “slightly,” are not inherently indefinite. Interval Licensing LLC, 766 F.3d at 1370. “Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention. As the Supreme Court recognized in Nautilus, ‘absolute precision’ in claim language is ‘unattainable.’ ” Id. quoting Nautilus, Inc. v. Biosid Instruments, Inc., 572 U.S. 898, 899 (2014) (“Some modicum of uncertainty ․ is the ‘price of ensuring the appropriate inventive for innovation.’ ” (quoting Festo Corp. v. Shoketsku Kinzoku Kogyo Kabushuki Co., Ltd., 535 U.S. 722, 731 (2002))).

But still, “it is not enough ․ to identify some standard for measuring the scope of the phrase․ The Supreme Court explained that a patent does not satisfy the definiteness requirement of § 112 merely because ‘a court can ascribe some meaning to a patent's claims.” Id. (emphasis in original) (quotation marks and citation omitted); Nautilus, 572 U.S. at 911); Nautilus, 572 U.S. at 911 (“A patent must be precise enough to afford clear notice of what is claimed, thereby apprising the public of what is still open to them. Otherwise, there would be a zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims.” (alterations, citations, and quotation marks omitted)); Guagdong Alison Hi-Tech Co. v. Int'l Trade Comm'n, 936 F.3d 1353, 1360 (Fed. Cir. 2019) (“[P]atents with claims involving terms of degree ‘must provide objective boundaries for those of skill in the art’ in the context of the invention.” (quoting One-E Way, Inc. v. Int'l Trade Comm'n, 859 F.3d 1059, 1062 (Fed. Cir. 2017))). “[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, 572 U.S. at 901. Definiteness is to be measured from the perspective of a person skilled in the relevant art at the time the patent was filed, “not that of a court viewing matters post hoc.” Id. at 908, 911. “Indefiniteness must be proven by clear and convincing evidence.” Sonix Tech. Co. v. Publ'ns Int'l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017).

JM cites the declarations of Drs. Pellegrin and Hirsekorn, who both opined that a POSITA would not understand the scope of the claim limitation at issue (Filing No. 845-6 at 2; Filing No. 845-8 at 33–34). Dr. Pellegrin explained that to a POSITA, it would be “unclear how much compression can take place and have the mat still be ‘slightly’ compressed as claimed” because “the term ‘slightly compress’ does not have any specific meaning or connate a specific compression amount or range” (Filing No. 845-6 at 3). Dr. Pellegrin also opined that Example 8 in the specification did not provide enough information to delimit “slight” compression. Id. at 3–4.

One of Knauf's experts, Dr. Strauss, previously opined in a declaration that “slightly compress” has a defined meaning to a POSITA, although Knauf appears to have abandoned this opinion and does not cite it in its briefing. In his declaration, Dr. Strauss stated that “slightly compress”:

has a plain meaning of compress some but not to a very large degree. With references to the quantified measurements in Example 8, ‘slightly compress’ includes the compression from 9 inches to 6 inches, and in my opinion would include compression of additional amounts, up to about half of its thickness prior to entering the oven.

(Filing No. 826-5 at 18 (emphasis added)). However, during Dr. Strauss’ deposition, he acknowledged that even with the benefit of Example 8, the phase “slightly compress” does not contain objective, identifiable boundaries. Instead, Dr. Strauss opined that “slight” compression “would be a range that would be less than 50 percent. And it would be something more than zero percent,” which would be no compression (and thus not “slight” compression), “but I cannot give you a specific figure” (Filing No. 555-2 at 10 (emphasis added)). What is more, Dr. Strauss could not determine whether compression more than fifty percent (fifty-one percent) would be “slight compression.” Id. at 12 –13 (stating that “51 percent is so close to 50, I don't know whether that's sufficient ․” but also that “[i]f it were compressed from 12 inches to below six inches, then that would be a different scenario”). Dr. Strauss explained that the amount of compression varies depending on the specific insulation product being produced. Id. at 12

The ’207 and ’464 Patents do not contain sufficient information to provide a POSITA with objective boundaries as to the claimed invention. The only example of “slight” compression is provided in Example 8 of the specification, which describes “[b]y way of example,” a mat of glass fibers with “a vertical thickness of about 9 inches in the transfer zone” being “slightly compressed to a vertical thickness of about 6 inches in the curing oven” (Filing No. 100-1 at 26). This sole example of “slight” compression discloses only that “slightly compress” includes compression of three inches, or possibly one third. It does not give any hint as to what the lower or upper boundaries are of “slight compression.”

The Federal Circuit has previously found claim language to be indefinite despite patent specifications providing examples of those limitations. In Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014), the Federal Circuit discussed whether the claim phase “in an unobtrusive manner that does not distract a user” was indefinite. The court found that the phrase was “highly subject and, on its face, provide[d] little guidance to one of skill in the art․ As the district court observed, whether something distracts a user from his primary interaction depends on the preferences of the particular user and the circumstances under which any single user interacts with the display.” Id. at 1371 (quotation marks and citation omitted). The patent owner argues that the phrase “unobtrusive manner” was sufficiently defined by relation to one of two primary embodiments in the patent and that even if the court were not persuaded by the embodiment, that the court “must at least adopt a ‘narrow example’ from the specification.” Id. at 1372–74. The court held that the embodiment was “at best muddled” and “fail[ed] to provide the clarity that the subjective claim language needs.” Id. at 1372. As to the example, the court acknowledged that “a patent which defines a claim phrase though examples may satisfy the definiteness requirement,” but nevertheless found that the single example failed to satisfy that requirement. Id. at 1372–73. The example was found in the Summary of Invention portion of the patent and stated: “in an unobtrusive manner that does not distract the user from the primary interaction with the apparatus (e.g., the information is presented in areas of a display screen that are not used by displayed information associated with the primary interaction with the apparatus).” Id. at 1373. The Interval Licensing court declined to adopt this single example as the definition of a facially subjective claim term.” Id. The court noted if the specification's language had been

cast as a definition instead of an example ․ then it would help provide the clarity that the specification lacks. But as the specification is written, ․ a person of ordinary skill in the art would not understand the ‘e.g.’ phrase to constitute an exclusive definition of ‘unobtrusive manner that does not distract a user.

Id. at 1373–74.

In Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1351–52 (Fed. Cir. 2005),¹³ the defendant contended that a patent in suit, which disclosed a software program for the authoring of electronic kiosks, was invalid because the claim phrase “aesthetically pleasing” was indefinite. The claim itself used the phrase “aesthetically pleasing three times,” but, despite being “helpful in terms of identifying the components of the claimed invention that must be ‘aesthetically pleasing,’ ” did not “suggest or provide any meaningful definition for the phase ‘aesthetically pleasing’ itself.” Id. at 1349. The Datamize court explained that “[m]erely understanding that ‘aesthetically pleasing’ relates to the look and feel of interface screens, or more specifically to the aggregate layout of elements on interface screens, fails to provide one of ordinary skill in the art with any way to determine whether an interface screen is ‘aesthetically pleasing.’ ”

The Datamize court then explained that the patent's illustrative embodiment likewise did not adequately define the scope of “aesthetically pleasing” because, despite using the terms “aesthetic” and “aesthetically” several times, did not “set forth any objective way to determine whether an interface screen is ‘aesthetically pleasing.” Id. at 1351–52. And lastly, the Datamize court explained why the “Summary of Invention” portion of the patent did not define the claim phrase. The summary stated that “major aesthetic or functional design choices ․ may be built into the system taking into account the considered opinions of aesthetic design specialists, database specialists, and academic studies on public access kiosks systems and user preferences and problems.” Id. at 1351. “Simply put,” the court held, “the definition of ‘aesthetically pleasing’ cannot depend on an undefined standard,” and “the definition of ‘aesthetically pleasing’ cannot depend on the undefined views of unnamed persons, even if they are experts, specialists, or academics.” Id. at 1352–53.

Here, Example 8 of the specification does not provide any definition of “slightly compress” or indicate any objective boundaries that would inform a POSITA, with reasonable certainty, about the scope of the invention. Example 8 provides only one potential variation of “slightly compressed,” and is expressly offered only “[b]y way of example” (Filing No. 100-1).

The Patents’ reference to a “predetermined thickness and surface finish” also fails to provide the necessary objective boundaries. Without knowing the starting thickness of the mat or insulation or the “predetermined thickness” for the type of product being made, there is no way to discern how much compression would be needed. One percent compression could be needed to achieve one “predetermined thickness and surface finish” for one product, and ninety-nine percent compression could be needed for another. This claim limitation describes when in the manufacturing process the compression takes place; but it does not disclose how much compression would be needed for the insulation to be “slightly compressed.” See Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1335 (Fed. Cir. 2010) (finding that intrinsic evidence provided “a general guidance and example sufficient to enable a person of ordinary skill in the art to determine the scope of the claims” (internal quotation marks and citation omitted)); Interval Licensing LLC, 766 F.3d at 1374 (“With this lone example, a skilled artisan is still left to wonder what other forms of display are unobtrusive and non-distracting.”). Indeed, Dr. Strauss confirmed that “each product has a different amount of compress” that depends on “the product that's being produced” (Filing No. 555-2 at 10).

b. Whether JM is Entitled to Summary Judgment of Invalidity

JM argues summary judgment of invalidity of the ’207 and ’464 Patents should be granted because “slightly compress” is indefinite. Because the Court agrees that “slightly compress” is indefinite, and because Knauf has offered no evidence creating a genuine dispute for trial, the Court grants JM's motion for summary judgment as to invalidity of the ’207 and ’464 Patents.

E. JM's Motion for Summary Judgment of Invalidity under 35 U.S.C. § 112, ¶ 1

JM lastly argues that the ’207 and ’464 Patents are invalid under 35 U.S.C. § 112, ¶ 1, because the patent specifications do not disclose one of the claim limitations—namely, a water-resistant binder with a 96% sugar concentration. However, the Court concludes that JM is entitled to summary judgment of invalidity with respect to the ’207 and ’464 Patents because the claim phrase “slightly compress” is indefinite. As such, the Court need not reach the issue of whether the ’207 and ’464 Patents are also invalid under 35 U.S.C. § 112 and thus declines to address the issue. JM's Motion for summary judgment as to invalidity of the ’207 and ’464 Patents under 35 U.S.C. § 112, ¶ 1, is denied as moot.

F. JM's False Marking Counterclaim

Knauf has moved for summary judgment on JM's Counterclaim IV for false marking, but at the combined summary judgment and Markman hearing, the parties advised the Court that JM agreed with withdrawal of this counterclaim. JM's Counterclaim IV is therefore WITHDRAWN.

G. Construction of Remaining Disputed Claim Terms/Phrases

The Court has already construed the sole claim in the ’670 Patent and the claim phrases “spraying ․ onto a mat” and “slightly compress” in the ’207 and ’464 Patents. This section therefore addresses only those remaining disputed claim terms.

1. Remaining Disputed Claim Terms in Hampson Patents and ’207 and ’464 Patent

Several remaining disputed claim terms and phrases are found exclusively in the Hampson Patents (the ’210, ’089, and ’827 Patents), the ’207 Patent, or the ’464 Patent, all of which the Court has held are invalid for the reasons explained above. The Court therefore need not reach the issue of construction of these claims and declines to do so. See Tech. Licensing Corp., 545 F.3d at 1334 (finding that in light of the invalidity holding, the court did not need to reach claim construction issues). The Court will only address the remaining claim terms or phrases in the ’287 Patent.

H. Remaining Disputed Claim Terms in ’287 Patent

1. The parties dispute two phrases in Claim 1 of the ’287 Patent, which are:

A thermal or acoustical fiberglass insulation material comprising:

(a) a collection of glass fibers; and

(b) a binder disposed on the collection of glass fibers wherein the binder comprises i) at least one reaction product of a reducing sugar reactant and an amine reactant, wherein the percent by dry weight of the reducing sugar reactant with respect to the total weight of reactants ranges from about 73% to about 96%, ii) a silicon-containing coupling agent, and iii) optionally, a corrosion inhibitor, wherein the fiberglass material comprises less than 99% by weight and more than 75% by weight glass fibers, and wherein the fiberglass material has a density of from about 0/4 lbs/ft3 to about 6 lbs/ft3.

(Filing No. 161-1 at 60 (emphasis added)).

a. “binder disposed on the collection of glass fibers” [’287 Patent, claim 1]

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The parties dispute the phrase “binder disposed on the collection of glass fibers.” Knauf argues that the phrase should be construed, consistent with its ordinary meaning and the specification, as “binder being disposed on two or more glass fibers that have been grouped or accumulated” (Filing No. 826 at 40). JM contends that no construction is necessary (Filing No. 843 at 79–80). The parties’ dispute focuses more specifically on the proper construction of “disposed on” and “collection of glass fibers.” The Court will discuss each phrase in turn.

Knauf argues that “disposed on” has an “ordinary meaning, consistent with the specification, of ‘being on’ ” (Filing No. 826 at 40). JM responds that Knauf's proposed construction would replace the active word “disposed” with the passive “being,” and that Knauf does not contend that a jury would be unable to understand the plain meaning of “disposed” (Filing No. 843 at 80). “The claim does not recite that binder simply exists on the collection of glass fibers ․; the claim recites binder disposed on the collection.” Id. (emphasis in original)).

JM's position is well taken and supported by intrinsic evidence. The use of the term “disposed” and “disposing” throughout the ’287 Patent shows that the term involves an action of disposing binder. Figure 7, in particular, shows “one embodiment of a process for disposing a binder of the present invention onto a substrate such as glass fibers,” and describes binder actively “being disposed on glass fibers” via a sprayer (Filing No. 161-1 at 22; id. at 26 (“disposed (e.g., sprayed)). The Court therefore agrees with JM that replacing “disposed on” with “being” would improperly read out the term “disposed” from the claim limitation. See Centillion Data Systems, LLC v. Convergys Corp., 551 F. Supp. 2d 743, 746–47 (S.D. Ind. 2008) (declining to construe “as specified by the user” as “specific to the user” because the proposed construction would “change[ ] the verb of the phrase and change[ ] the subject of the phrase as well,” which “would do exactly what the Federal Circuit has cautioned against: it would rewrite the claim language.”). The Court declines to adopt Knauf's proposed construction of “disposed on,” and, absent any evidence that “disposed on” has more than one “ordinary meaning” or otherwise does not resolve a dispute between the parties, the Court finds that “disposed on” should be given its plain and ordinary meaning, and that no construction is needed for those terms.

As to “collection of glass fibers,” Knauf argues that a POSITA would understand a “collection” to ordinarily mean “two or more components” (Filing No. 826 at 39). The specification refers, for example, to “a collection of loose fibers” that have been “collected” using an air curtain as they fall onto a conveyor. JM responds that Knauf cites no support for the position that “collection” includes things that are falling through the air “before they are collected with other glass fibers on the conveyor below” (Filing No. 843 at 79 (emphasis in original)). JM contends that “because the glass fibers are formed in the spinner and collected on the conveyor below the spinner,” the “collection” is present only when the glass fibers are on the conveyor. Id. JM's expert, Dr. Pellegrin further opines that Knauf's construction would improperly ignore and rewrite claim elements because for a binder to be “disposed” on a collection of glass fibers, the “collection” must first exist, but Knauf's proposed construction would encompass disposing binder on individual glass fibers before they are collected on a conveyor.

The intrinsic evidence supports Knauf's proposed construction. While the claim itself does not provide must useful information in the way of defining “collection of glass fibers,” the specification does. Most notably, the Summary states “A collection includes two or more components” (Filing No. 161-1). This sentence is clear evidence that Knauf intended to act as its own lexicographer in defining “collection” as “two or more components.” Thorner, 669 F.3d at 1365–66 (“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.” (quoting CCS Fitness, Inc., 288 F.3d at 1366)). A “collection of glass fibers,” by extension, would mean “two or more glass fibers.”

The Summary further states that binder will “produce or promote cohesion in at least two of the compounds of the collection.” Id. The ’287 Patent’s references to “a collection of non-assembled or loosely-assembled matter” shows that a “collection,” in context of the Patent, need not necessarily be assembled to be a “collection.” Id. at 18. Knauf's proposed construction is therefore not consistent with the claim language, as posited by Dr. Pellegrin. Example 8 of the specification contains further evidence that a “collection of glass fibers” includes two or more accumulated or grouped fibers that are falling through the air, before they have fallen onto a conveyor. Example 8 describes that “[t]ypically, a binder is applied to glass fibers as they are being produced and formed into a mat,” and that a “mat” is formed once the glass fibers fall onto the conveyor (Filing No. 161-1 at 47). Just as with the Court's construction of “spraying ․ onto a mat” for the ’207 and ’464 Patents, this distinction between “glass fibers” and a “mat” is important for the construction of “collection of glass fibers.” This distinction shows that a “collection of glass fibers,” in context of the Patent, is distinct from the “mat” or glass fibers, which is formed when the fibers fall onto the conveyor.

The Court notes that Figure 7 of the ’287 Patent refers to a “collection” as a collection of glass fibers on and moving along the conveyor (Filing No. 161-1 at 16, 22). However, Figure 7's use of “collection” is not inconsistent with the Patent's definition of a “collection” as “two or more components.” Nor does Figure 7 suggest, as JM argues, that a “collection of glass fibers” is only formed once the glass fibers fall onto the conveyor. Alloc, Inv. v. Int'l Trade Comm'n, 342 F.3d 1361, 1370 (Fed. Cir. 2003) (“[The court] must interpret the claims in light of the specification, yet avoid impermissibly importing limitations from the specification. That balance turns on how the specification characterizes the claimed invention. In this respect, the court looks to whether the specification refers to a limitation only as a part of less than all possible embodiments or whether the specification reads as a whole suggests that the very character of the invention requires the limitation be a part of every embodiment.” (citations omitted)).

Based on ample intrinsic evidence in the ’287 Patent, the Court agrees with Knauf that “collection of glass fibers,” as used in the disputed claim term, should be construed as “two or more glass fibers that have been grouped or accumulated.” Therefore, the Court construes “binder disposed on a collection of glass fibers” as “binder disposed on two or more glass fibers that have been grouped or accumulated.”

b. “amine reactant,” “amine,” and “reactant”

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The parties’ dispute over the construction of “amine reactant,” and its component terms “amine” and “reactant” stem from a dispute as to whether certain chemical compounds used by JM during its manufacturing process are “amine reactants” under the ’287 Patent (Filing No. 901 at 145).

Knauf contends that “amine reactant” should be construed as a single phrase as “one or more of the following compounds that are a nitrogen source in a Maillard reaction: ammonia, ammonium, primary amines, conjugate acids of primary amines, secondary amines, conjugate acids of secondary amines, proteins, peptides, and/or amino acids.” Knauf does not believe that a separate construction of “amine” or “reactant” is necessary. JM argues that “amine reactant” should be construed as the sum of its two parts, to mean a “reactant”—“a chemical substance, (a) that will be consumed as part of a chemical reaction with another substance (b) for the purpose of creating a new chemical (c)”—that is an “amine”—a “compound that is derived from ammonia by replacing one or more of the hydrogen atoms with an alkyl or aryl group.”

In preparing to address the parties’ arguments, the Court engaged in a high-level chemistry overview. The Court believes that sharing this brief overview will be helpful. The Court does not base its decision on this overview discussion and only engages in it to make the parties’ arguments and the Court's analysis more digestible to those unfamiliar with polymer chemistry. Ammonia is a chemical compound that consists of one nitrogen atom and three hydrogen atoms; the chemical is written as “NH3” with the subscript number indicating the number of hydrogen (H) molecules present. Ammonia, Stedmans Medical Dictionary (2014 ed.). An “amino group” consists of one nitrogen atom and two hydrogen atoms. Amines and amides (in layman's terms and only for purposes of this overview) chemical compounds derived from ammonia. Amines are formed when one or more of the three hydrogen atoms from ammonia is replaced by another “radical” (another chemical or compound). A “radical” in a chemical structure is denoted using an “R,” with a superscript number indicating which number radical it is where there is more than one radical. When one hydrogen atom is replaced, a “primary amine” is formed; replacing two hydrogen atoms creates a “secondary amine,”; and replacing all three creates a “tertiary amine” (R1-NH2, NHR1R2, or NR1R2R3). Amine, Stedmans Medical Dictionary (2014 ed.). The Amides can be derived from ammonia by replacing a hydrogen atom with a specific type of chemical compound (an acyl group), or they can be derived from another type of compound (a carboxylic acid). Amide, Stedmans Medical Dictionary (2014 ed.). Peptides and proteins are chemical compounds consisting of amino acids. Peptide, Stedmans Medical Dictionary (2014 ed.).

A “conjugate acid” of a chemical compound is formed when a positively charged hydrogen atom (a hydrogen ion) is added to the compound. Conjugate acid-base pair, Stedmans Medical Dictionary (2014 ed.). Ammonium is formed when a hydrogen ion is added to ammonia (NH3 (ammonia) combined with H+ (hydrogen ion) to make NH3+ (ammonium)). Ammonium, Stedmans Medical Dictionary (2014 ed.). A “salt,” in chemistry is a compound formed by the interaction between an acid and base, in which a hydrogen atom in the acid is replaced by the positive ion of the base. Salt, Stedmans Medical Dictionary (2014 ed.).

With this basic understanding in mind, the Court turns to the parties’ arguments. Knauf argues that intrinsic evidence shows that the ’287 Patent’s definition of “amine reactant” differs from the ordinary meanings of “amine” and “reactant”:

The ordinary meaning of an ‘amine group’ is R1-NH2. However, when a second hydrogen from R1-NH2 is replaced, compounds with the formed NHR1R2 are referred to as “secondary amine” or a “secondary amino group.” Secondary amines are also referenced as amine reactants. Other examples of “amine reactants” in the patent are ‘proteins, peptides, amino acids, ammonium salts of polymeric polycarboxylic acids, and ammonium salts of monomeric polycarboxylic acids. Ammonium, +NH4, is the conjugate acid of ammonia. “Amine reactants” as described above therefore include the conjugate acids of amines, such as “ammonium salts of monomeric polycaboxylic acids” in the patents.

The POS[IT]A would understand from reading the specification that the ․ chemical compounds [listed in Knauf's proposed construction]․ Thus, the patent specification teaches a POS[IT]A that the term ‘amine reactant’ includes ammonia and ammonium ions or salts which are not ordinarily within an “amine” as well as excludes certain amines that do not participate in the Maillard reaction (e.g., tertiary amines which lack an active hydrogen atom bonded to the nitrogen).

(Filing No. 826 at 49). Stated differently, Knauf argues that the ’287 Patent explicitly identifies compounds as “amine reactants” that are not “amines” under the ordinary definition of “amine,” so the phrase “amine reactant” should be construed using the list of compounds identified by the Patent instead of by its ordinary definition.

Knauf's argument is well taken. Figure 1 of the ’287 Patent contains a list of “amine reactants,” none of which are strictly “amines” under its ordinary definition (ammonia (NH3) with one or more of the three hydrogen atoms replaced) (Filing No. 161-1 at 10). Ammonium (+NH4), for one, is listed as an “amine reactant” but is not an “amine” under its ordinary definition because ammonium contains four hydrogen atoms attached to the nitrogen atom, none of which are replaced. The list also includes “proteins, peptides, amino acids, ammonium salts of polymeric polycarboxylic acids, and ammonium salts of monomeric polycarboxylic acids,” where “ammonium” is defined as not only its standard structure of +NH4, but also structures in which one or two of the four hydrogen atoms have been replaced (+NH3R1 and +NH2R1R2), where R is an “alkyl, cycloalkyl, alkenyl, cycloalkenyl, heretocycl, aryl, and heretoaryl,” or may further be substituted with another chemical group enumerated in the Patent's specification.” (Filing No. 161-1 at 19, 21).

Figure 2 also shows “a schematic of a Maillard reaction,” which “involves condensing the carbohydrate reactant (e.g., a reducing or aldose sugar) with an amine reactant, e.g., an amino compound possessing an amino group” (Filing No. 161-1 at 21–22 (“The compound possessing a free amino group in a Maillard reaction, which compound serves as the amine reactant, may be present in the form of an amino acid. The free amino group can also come from a protein․ Alternatively, as described herein, an ammonium salt of a polycarboxylic acid may serve as the amine reactant in a Maillard reaction.”). So in reference to Figure 2, the ’287 Patent refers to an “amine reactant” as having a broader definition than its ordinary definition.

Further, the specification notes “[w]ith respect to exemplary reactants,” “[a]mmonium salts of polycarboxylic acids can be generated by neutralizing the acid groups with an amine base,” which is in turn defined to include “but is not limited to, ammonia, a primary amine, i.e., NH2R’, and a secondary amine, i.e., NHR1R2” (Filing No. 21, 23). “[I]t should be understood that ․ any compound possessing a primary or secondary amino group which will act as a reactant in a Maillard reaction, can be utilized in the binders of the present invention.” Id. at 23.

Testimony from Knauf's expert, Dr. Coates, confirms that a POSITA understands the phrase “amine reactant,” in context of the ’287 Patent, to mean “one or more of the following compounds that are a nitrogen source in a Maillard reaction: ammonia, ammonium, primary amines, conjugate acids of primary amines, secondary amines, conjugate acids of secondary amines, proteins, peptides, and/or amino acids” (Filing No. 832-1 at 15). Knauf also notes that during his deposition, JM's expert, Dr. Hirsekorn, acknowledged that Knauf was “try[ing] to define ‘amine’ as something other than what it means traditionally” in the ’287 Patent (Filing No. 826-54 at 4). Accordingly, Knauf's argument that the ’287 Patent defines “amine reactant” different than its ordinary meaning is well-supported by intrinsic evidence. Medytox, Inc. v, Galderma S.A., 71 F.4th 990, 997 (Fed. Cir. 2023) (““Typically, intrinsic evidence, such as the specification, is the most important consideration in a claim construction analysis.”).

In its Cross-Motion, JM contends that “amine” should be construed to mean “compounds that are derived from ammonia by replacing one or more of the hydrogen atoms with an alkyl or aryl group.” JM contends that there is no support for Knauf's proposed construction and that “Knauf's experts have unambiguously conceded that amides like DHEU and urea are not “amine reactants” in the context of Knauf's patents.” Neither argument dissuades the Court from adopting Knauf's proposed construction or persuades it to adopt JM's. For the reasons stated immediately above, Knauf's proposed construction is well supported by the Patent language. And the deposition testimony on which JM relies does not speak to whether Knauf's construction is appropriate. Instead, in both depositions Drs. Wedzicha and Strauss were asked whether certain compounds were “amine reactants” under Knauf's construction of that term. The “concessions” that JM cites, then, relate to infringement, not claim construction. See Biotec Biologische Naturverpackungen GmbH & Co. KG b. Biocorp, Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001) (“The defendants state that the district court ‘failed to discharge its duty under Markman’ when the court declined to construe ‘melting.’ They state that the correct construction of ‘melting would avoid infringement․ Despite this debate, the meaning of ‘melting’ does not appear to have required ‘construction,’ or to depart from its ordinary meaning. The issue in dispute was the application of the melting step in the accused process, a factual question of infringement.”). The Court finds that JM's proposed constructions of “amine reactant” and “amine” find no basis in the language of the ’287 Patent and therefore declines to adopt them. The Court additionally notes that a separate construction of “amine” would be unnecessary, as the term “amine” does not appear in claim 1 except in the phrase “amine reactant.” See O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd, 521 F.3d 1351, 1362–63 (Fed. Cir. 2008) (“We, however, recognize that district courts are not (and should not be) required to construe every limitation present in a patent's asserted claims. Rather, ‘[c]laim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement.’ ” (alteration in original) (quoting U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)).

JM also seeks a separate construction of “reactant.” Though the term “reactant” appears in the claim outside the phrase “amine reactant,” the parties’ briefing and oral argument make clear the parties’ dispute regarding the construction of “reactant” relates to the term's use in “amine reactant,” not in any other context in claim 1. The Court therefore finds that while the separate construction of the term “reactant” is unwarranted, the Court will consider the parties’ arguments and evidence as to the term “reactant” in deciding the construction of “amine reactant.”

JM contends that a “reactant” should be construed to mean “a chemical substance (a) that will be consumed as part of a chemical reaction with another substance (b) for the purpose of creating a new chemical product․” (Filing No. 843 at 89). JM's proposed construction seeks to avoid a construction of “amine reactant” that would include compounds used as catalysts—compounds that facilitate chemical reactions but do not otherwise participate in the chemical reaction.¹⁴ JM relies primarily on a purported prosecution disclaimer made by Knauf during prosecution of U.S. Patent 7,888,445 (the “’445 Patent”). In avoiding prior art during the ’445 Patent prosecution history, Knauf stated that the prior art “does not teach or fairly suggest ammonia, or an ammonium salt of polycarboxylic acid as a reactant in the binder composition. Requester does not, and cannot, point to any express teaching in [the prior art] concerning the use of ammonia as a reactant in forming a binder composition” (Filing No. 555-12 at 10). The Court has reviewed the prosecution history for the ’445 Patent and concludes that it does not constitute a prosecution disclaimer or support the adoption of JM's proposed construction of “reactant.” However, the Court does find that the prosecution history statement should be considered in construing “amine reactant.”

The Court disagrees with JM that the above statement constitutes a prosecution disclaimer for two reasons. First, the statement was not made during the prosecution of an ancestor patent to the ’287 Patent. The ’445 Patent is a parent to only the ’207 and ’464 Patents. Compare (Filing No. 100-1 at 2; Filing No. 161-2 at 2) with (Filing No. 161-1 at 2). So although the ’287, ’207, and ’464 Patents relate to the same subject matter, the ’445 Patent’s prosecution history is simply not binding on the ’287 Patent in the way it is binding on the ’207 and ’464 Patents. See Profoot, Inc. v. Merck & Co., Inc., 663 F. App'x 928, 933 n.2 (Fed. Cir. 2016) (“[W]e have recognized that prosecution history disclaimer in a parent application may bind continuation or continuation-in-part applications, if they involve the same claim limitations.”); Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1333 (Fed. Cir. 2003) (“As long as the same claim limitation is at issue, prosecution disclaimer made on the same limitation in an ancestor application will attach.”); E.I. du Pont De Nemours & Co., 921 F.3d 1060, 1069 (Fed. Cir. 2019) (considering specification of parent patent application in construing patent issued from continuation-in-part application, where both applications claimed inventions comprised of common subject matter). Second, Knauf's single reference to a “reactant” in quoting the Patent Examiner is not clear enough evidence to demonstrate a disclaimer. See MasterMine Software, Inc. v. Microsoft Corp., 874 F.3d 1307, 1311 n.2 (Fed. Cir. 2017) (agreeing with the district court that a patent prosecution statement demonstrated that a “pivot table” is created when filled with data but also “that this statement is not ‘so clear as to show reasonable clarity and deliberateness, and so unmistakable as to be unambiguous evidence of disclaimer’ ” (quoting district court proceedings)).

A statement made by the patentee during patent prosecution, even if not a disclaimer, may nevertheless by “relevant to claim construction, ‘for the role of claim construction is to “capture the scope of the actual invention” that is disclosed, described, and patented.’ ” MasterMine Software, Inc., 874 F.3d at 1311 n.2 (quoting Fenner Invs., Ltd. v. Cellco P'ship, 778 F.3d 1320, 1323 (Fed. Cir. 2015) (quoting Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011))). The Federal Circuit has “often held that the meaning of claim terms in one patent can be informed by statements made during prosecution of other patents in the same family. We have explained, for example, that ‘past and future prosecution of related patents may be relevant to construction of a given claim term.’ ” MasterMine Software, Inc., 874 F.3d at 1311 n.2 (quoting Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 n.5 (Fed. Cir. 2015)). The statement made by Knauf in prosecuting the ’445 Patent is therefore relevant in construing “amine reactant” in the ’287 Patent because the ’287 Patent is related to the ’207 and ’464 in that they share the same subject matter.

In prosecuting the ’445 Patent, the Patent examiner found that the claim was not anticipated by prior art that “teaches the presence of ammonia but as an agent to change the pH of the aqueous solution and/or to solubilize components and does not teach or fairly suggest ammonia, or an ammonium salt of a polycarboxylic acid as a reactant in the binder compound.” U.S. Patent App. 95/000,672, July 18, 2023, Right of Appeal Notice at 37. The Examiner's reference to “reactant,” and thus JM and Knauf's references to “reactant” in subsequent briefing, refers to a substance that is not a catalyst (an agent to change the pH of the aqueous solution and/or to solubilize components), not a substance that is “consumed” in a reaction, as JM suggests in its proposed construction. The Court therefore agrees with Knauf that nothing in the ’287 Patent specification or in the ’445 Patent prosecution history suggests that a “reactant” necessarily must be “consumed” in a reaction. All that the ’445 Patent prosecution history suggests is that a “reactant” is not a catalyst.

JM does not explain how Knauf's proposed construction fails to clarify that an “amine reactant” is not a catalyst. Indeed, the proposed construction clarifies that an “amine reactant” serves a non-catalytic purpose—it is “a nitrogen source in a Maillard reaction.” The Court therefore declines to adopt a proposed construction of “amine reactant” that limits that phrase to compounds that “will be consumed as part of a chemical reaction with another substance.” Such a limitation is not adequately supported by the Patent's language or extrinsic evidence. Knauf's proposed construction is well-supported by intrinsic and extrinsic evidence, and it adequately accounts for Knauf's statement regarding “reactants” in prosecuting the ’445 Patent.

The Court therefore adopts Knauf's construction and construes “amine reactant” as “one or more of the following compounds that are a nitrogen source in a Maillard reaction: ammonia, ammonium, primary amines, conjugate acids of primary amines, secondary amines, conjugate acids of secondary amines, proteins, peptides, and/or amino acids.”¹⁵ The Court finds that no separate construction of “amine” or “reactant” is warranted and declines to construe those terms.

I. Parties’ Motions to Reconsider Entry on Motion in Limine

In the Court's March 31, 2023 Entry on Plaintiffs’ Motion in Limine (Filing No. 1062), the Court granted in part and denied in part Knauf's motion to preclude Dr. Susan Kare and Dr. Christopher Pastore from offering testimony at trial regarding the invalidity of the ’670 Patent. Specifically, the Court granted the motion in that Drs. Kare and Pastore could not offer opinion testimony at trial regarding aesthetics or that the ’670 Patent is not ornamental and denied the motion in that Drs. Kare and Pastore could offer testimony at trial as to the way the invention came about and the intent of the inventors, and Dr. Pastore could offer testimony at trial on the issue of functionality. Knauf asks the Court to reconsider the portion of its ruling denying the Motion in Limine (Filing No. 1086), and JM asks the Court to reconsider the portion of its ruling granting the Motion in Limine (Filing No. 1099).

However, in light of the Court's ruling on the parties’ Cross-Motions as to the ’670 Patent, some or all of Drs. Kare's and Pastore's anticipated testimonies might no longer be relevant or admissible at trial. The Court therefore DENIES both parties’ Motions to Reconsider, without prejudice as to refiling, if appropriate.

IV. CONCLUSION

For the reasons discussed above, Knauf's Cross-Motion (Filing No. 825) and JM's Cross-Motion (Filing No. 842) are each GRANTED IN PART and DENIED IN PART, and the parties’ Motions to Reconsider Entry on Motion in Limine (Filing No. 1086; Filing No. 1099) are DENIED without prejudice, and may be refiled if appropriate. Further, pursuant to agreement of the parties, JM's Counterclaim VI for false marking is WITHDRAWN.

The Court GRANTS JM's request for summary judgment on: noninfringement of the ’670 Patent; invalidity of the ’210 Patent, ’089 Patent, and ’827 Patent under 35 U.S.C. § 185; non-infringement of the ’207 Patent and ’464 Patent; invalidity of the ’207 Patent and ’464 Patent for indefiniteness; and DENIES JM's request for summary judgment on invalidity of the ’670 Patent for lack of patentable ornamental design; and DENIES as moot JM's remaining requests for summary judgment. (Filing No. 842)

The Court DENIES Knauf's Motion to Exclude Prior Design Art contained within its Cross-Motion; DENIES Knauf's request for summary judgment on invalidity of the Hampson Patents under 35 U.S.C. § 185, IPR estoppel regarding the ’670 Patent, and that device art is not prior art; and DENIES as moot Knauf's remaining requests for summary judgment. (Filing No. 825);

Further, the following disputed claim terms and phrases have the following meanings:

Tabular or graphical material not displayable at this time.

Because of the nature of some of the matters in this Order, this Order shall be docketed as a SEALED order, accessible only to the Court and the parties. The parties are ordered to confer and agree on a redacted version of this Order that can be filed on the public docket within fourteen (14) days of this Order.¹⁶

SO ORDERED.

DISTRIBUTION:

Brett J. Arnold

QUINN EMANUEL URQUHART & SULLIVAN LLP

brettarnold@quinnemanuel.com

Melissa J. Baily

QUINN EMANUEL URQUHART & SULLIVAN, LLP

melissabaily@quinnemanuel.com

Brent R. Baughman

DENTONS BINGHAM GREENEBAUM LLP (Louisville)

brent.baughman@dentons.com

Kevin M. Bell

KILPATRICK TOWNSEND & STOCKTON LLP

kbell@kilpatricktownsend.com

Spiro Bereveskos

WOODARD EMHARDT HENRY REEVES & WAGNER, LLP

sslama@uspatent.com

David Bilsker

QUINN EMANUEL URQUHART & SULLIVAN, LLP

davidbilsker@quinnemanuel.com

Briana Lynn Clark

DENTONS BINGHAM GREENEBAUM LLP (Indianapolis)

briana.clark@dentons.com

Lindsay Cooper

QUINN EMANUEL URQUHART & SULLIVAN, LLP

lindsaycooper@quinnemanuel.com

Hannah Elizabeth Dawson

QUINN EMANUEL URQUHART & SULLIVAN, LLP

hannahdawson@quinnemanuel.com

Duane R. Denton

DENTONS BINGHAM GREENEBAUM LLP (Indianapolis)

rusty.denton@dentons.com

Jaclyn Michelle Flint

RILEY BENNETT EGLOFF LLP

jflint@rbelaw.com

Matthew M. Gardlik

WOODARD EMHARDT HENRY REEVES & WAGNER, LLP

mgardlik@uspatent.com

Meaghan Klem Haller

DENTONS BINGHAM GREENEBAUM LLP (Indianapolis)

meaghan.haller@dentons.com

Ella K. Hallwass

QUINN EMAUEL URGUHART & SULLIVAN LLP

ellahallwass@quinnemanuel.com

Blake R. Hartz

WOODARD EMHARDT HENRY REEVES & WAGNER, LLP

bhartz@uspatent.com

Lisa A. Hiday

WOODARD EMHARDT HENRY REEVES & WAGNER, LLP

lhiday@uspatent.com

Valerie Anne Lozano, I

QUINN EMANUEL URQUHART & SULLIVAN

valerielozano@quinnemanuel.com

Daniel James Lueders

WOODARD EMHARDT HENRY REEVES & WAGNER, LLP

lueders@uspatent.com

Brice C. Lynch

QUINN EMANUEL URQUHART & SULLIVAN, LLP

bricelynch@quinnemanuel.com

Duane Lyons

QUINN EMANUEL URQUHART & SULLIVAN

duanelyons@quinnemanuel.com

Edward J. Mayle

KILPATRICK TOWNSEND & STOCKTON LLP

TMayle@kilpatricktownsend.com

Kristopher L. Reed

KILPATRICK TOWNSEND & STOCKTON LLP

kreed@kilpatricktownsend.com

James W. Riley, Jr.

RILEY BENNETT EGLOFF LLP

jriley@rbelaw.com

Owen Fullerton Roberts

QUINN EMANUEL URQUHART & SULLIVAN LLP

owenroberts@quinnemanuel.com

Scott Watson

QUINN EMANUEL URQUHART OLIVER & HEDGES

scottwatson@quinnemanuel.com

Travis D. Whitsitt

KILPATRICK TOWNSEND & STOCKTON LLP

twhitsitt@kilpatricktownsend.com

Lance Yang

QUINN EMANUEL URQUHART & SULLIVAN, LLP

lanceyang@quinnemanuel.com

FOOTNOTES

2.   As the Court will discuss later in this Order, JM argues that the design of the ’670 Patent is dictated by its “function” and by “functional considerations,” meaning that the design is dictated by its method of manufacture, but JM does not assert that the design itself serves any insulation-related functions.

3.   Knauf contends that the ordinary observer is “regular people, do-it-yourselfers who will go to Lowe's, go to Menards, and buy insulation to put in their home” (Filing No. 902 at 84). JM does not define an ordinary observer, but JM also does not dispute Knauf's definition, and the expert report on which JM relies considered Knauf's definition of ordinary observer in forming his opinions (Filing No. 846-3 at 6). Therefore, it appears the parties do not dispute whether the Accused Products infringe the ’670 Patent based on differing definitions of the “ordinary observer,” so the Court does not decide such a definition before proceeding with its summary judgment analysis.

4.   Knauf argues that Dr. Pastore's report is not sworn and verified (Filing No. 862 at 34). The Court disagrees. Dr. Pastore's declaration (Filing No. 846) to which his reports are attached verifies that “a true and correct copy” of each report is attached to his declaration, which is in turn verified to be true and accurate. See City of Gary v. Shafer, No. 07-CV-56, 2009 WL 1370997, at *6 n.8 (finding declaration admissible and properly sworn “under penalty of perjury” and verified as “true and correct”). In any event, JM has submitted supplemental declarations to cure any potential defect (Filing No. 870-14), and Knauf does not cite any prejudice suffered as a result of this purported, now-cured defect. See Jenkins v. Bartlett, 487 F.3d 482 (7th Cir. 2007) (finding district court did not err in finding that any later-cured defect in expert disclosure was harmless). The Court therefore finds that Dr. Pastore's report was originally submitted as a sworn report, but that any defect in his report was harmless.

5.   Dr. Pastore's infringement report does not discuss Accused Product PS-40, and Dr. Kare's infringement report does not discuss Accused Product PS-29 or PS-35. Otherwise, both experts discuss every other Accused Product.

6.   During Professor Rake's deposition, Knauf objected to the form of JM's questions on the grounds that the photographs were just photographs and not the actual insulation samples themselves. The Court notes Knauf's objection and notes that Professor Rake was comparing photographs, and not the certified ’670 Patent to the Accused Products themselves.

7.   JM argues that Professor Rake's Declaration should be stricken from the record because it was prepared and filed after the close of expert liability discovery (Filing No. 870 at 13). However, the Court declines to strike the Declaration because Professor Rake's opinions regarding the photographs appears to be a lay opinion, because his opinions regarding infringement appears to be a conclusory restatement of previous, timely disclosed opinions (though those original opinions were not offered by Knauf and have been stricken from the summary judgment record (Filing No. 1059)), and because JM has not cited any prejudice suffered as a result of this late-filed Declaration.

8.   The Court does not presently make any ruling as to inventorship of the ’670 Patent.

9.   Knauf's Cross-Motion and briefing specifies that it is moving for summary judgment as to JM's affirmative defenses, and not JM's Counterclaim for Declaratory Judgment on Invalidity. The only Counterclaim on which Knauf moves for summary judgment is Counterclaim IV for false marking (Filing No. 826 at 37).

10.   JM does not dispute that the substance of the Hampson Patents falls within the scope of 35 U.S.C. § 181 but more broadly argues that only the USPTO—and not the Court—may decide whether the Hampson Patents fall within the scope of 35 U.S.C. § 181. (Filing No. 843 at 54); see Application of Gaertner, 604 F.2d at 1355 (“Congress clearly denied applicants the right to determine for themselves whether a particular disclosure was detrimental to national security ․ Neither [the applicant] nor this court has authority to determine whether the disclosure abroad ․ would be detrimental to national security. Section 184 assigns that right and duty to the PTO.”). However, the Court finds that this dispute does not raise a genuine issue of fact precluding summary judgment and, in any event, this dispute of law is immaterial in light of the Court's analysis of Sections 184 and 185 infra.

12.   The Court will refer to this phrase as “onto a mat” for brevity.

13.   Though the definiteness standard used in Datamize was replaced by the Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014), this Court finds Datamize applicable only to the extent that its analysis explains how certain intrinsic evidence may fail to adequately define the scope of a claim limitation. The Court does not cite Datamize for its application of a now-outdated standard for indefiniteness, or the Datamize court's conclusion.

14.   Catalyst, Stedmans Medical Dictionary (2014 ed.) (“A substance that accelerates a chemical reaction but is not consumed or changed permanently thereby.”).

15.   Though the parties disputed the phase “Maillard reaction” in other Patent claims, neither party disputed the use of the phrase “Maillard reaction” in the construction of “amine reactant,” and “the terms courts use to enunciate the proper construction of a claim are not themselves limitations that require interpretation.” E-Pass Techs., Inc. v. 3Com Corp., 473 F.3d 1213, 1220 (Fed. Cir. 2007) (finding that district court committed error by construing claim constructions); see also Trading Techs. Int'l, Inc. v. CQG, Inc., No. 05-cv-4811, 2014 WL 1645838, at *4–5 (N.D. Ill. Apr. 24, 2014) (“[T]he terms that CQG is looking to construe are not part of the claim, but are part of the construction that the [other district] court used to ‘enunciate the proper construction of a claim.’ ․ [T]his Court declines to construe the construction.”).

16.   Recognizing that it may take up to 14 days to read this lengthy Order, if needed, the parties may request--and the Court will allow--more time for the parties to agree upon file a redacted version of the Order.

Hon. Tanya Walton Pratt, Chief Judge United States District Court Southern District of Indiana