Opposition Brief — Sascho, Inc. v. DAP Products, Inc.

No. 97-436 = 2 oN

MHC. IO —

IN THE

Supreme Court of the United States

OCTOBER TERM, 1997

SASHCO, INC.,

Petitioner,

¥.

DAP Propucts INC.,

Respondent.

On Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

RESPONDENT'S BRIEF IN OPPOSITION

JEFFREY T. Cox

Counsel of Record

PAUL G. HALLINAN

THOMAS R. KRAEMER

FARUKI GILLIAM & IRELAND

P.L.L.

600 Courthouse Plaza, S.W.

10 North Ludlow Street

Dayton, Ohio 45402

(937) 227-3704

Counsel for Respondent

DAP Products Inc.

WILSON - Eras Printinc Co., Inc. - 789-0096 - WASHINGTON, D.C. 20001

QUESTION PRESENTED

Whether certiorari is warranted to review the decision

of the United States Court of Appeals for the Federal

Circuit affirming the district court’s finding that two pat-

ents owned by Petitioner are not infringed by any product

made, used or sold by Respondent where:

(1) the district court issued a lengthy opinion setting

forth with particularity the methodology it used to inter-

pret the claims of Petitioner’s patents;

(2) the district court did not depart from the proper

methodology for interpreting patent claims and, in fact,

followed the methodology urged by Petitioner;

(3) the Court of Appeals found that Petitioner had

failed utterly to raise an issue on appeal necessitating a

written opinion and, accordingly, affirmed the district

court’s decision without opinion pursuant to Fed. Cir. R.

36;

(4) there is nothing in the record to suggest that the

Court of Appeals did not review the district court’s deci-

sion de novo; and

(5) the Court of Appeals denied Petitioner’s combined

petition for rehearing and suggestion for rehearing in

banc.

(i)

ii

RULE 29.6 STATEMENT

The parent company of DAP Products Inc. is Wassall

Netherlands, B.V. The parent company of Wassall

Netherlands, B.V. is Wassall PLC.

TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES .......... Vv

STATEMENT OF THE CASE .. ' leita 1

A. The ‘458 Patent Covers Only the Combination of

Clear Caulk in a Clear Cartridge Such that the

User Can See Completely Through the Cartridge

from One Side to the Other ........ 2

B. Sashco’s Admissions During the Prosecution of

the ‘458 Patent Application Confirm Its Narrow

" of Clear Caulk in a Clear Squecee Tube that

Contains a Region of Reduced Thickness in a

Uniform, Flattened Configuration... 6

D. The Accused DAP Products Do Not Fall Within

the Scope of Sashco’s Patents... 7

E. The District Court Determined that Sashco’s

Patents Are Not Infringed by Any Product

Made, Used or Sold by DAP, and the Federal

ce eee 9

REASONS FOR DENYING THE PETITION 9

I. THE DISTRICT COURT CORRECTLY CON-

STRUED SASHCO’S PATENTS USING

PROPER CLAIM CONSTRUCTION METH-

ar SS ea 9

A. The District Court Correctly Found No In-

fringement of the ’458 Patent... 10

1. DAP’s cartridge product is not covered by

ee 10

2. The district court did not err in consulting

dictionaries during its claim construction... 11

(iii)

ee

iv

TABLE OF CONTENTS—Continued

Page

8. Even if the district court looked first at

dictionary definitions (which it did not),

a dictionary may be consulted at any time

during claim construction ......................... 13

4. The district court did not err in analyzing

the ‘458 Patent as a tubular cartridge...... 14

B. The District Court Correctly Found No In-

fringement of the ’014 Patent .........0002 2... 15

II. SASHCO HAS RAISED NO SIGNIFICANT

LEGAL ISSUE OF GENERAL APPLICATION

BUT, RATHER, ASKS THE COURT TO

CORRECT CLAIM CONSTRUCTION WITH

WHICH IT DISAGREES ..............2..2......... 17

III. SASHCO HAS NO “RIGHT” TO AN OPINION

ON APPEAL, AND SASHCO CAN POINT TO

NO EVIDENCE THAT THE FEDERAL CIR-

CUIT DID NOT REVIEW THE DISTRICT

COURT'S DECISION DE NOVO ....._............-..- 19

CSNY is essrierainsinsnistniestiticacsenicetalinnilitetiniadaiapliliendatlgpiinde 20

v

TABLE OF AUTHORITIES

CASES Page

Furman v. United States, 720 F.2d 263 (2d Cir.

eNO a ETON ENT CRT ate AN NTN ne L5) e N 19

Hoechst Celanese Corp. v. B P Chem., 78 F.3d 1575

(Fed. Cir.), cert. denied, U.S. ——, 117

SS 3 RO ra ee 13

Layne & Bowler Corp. v. Western Well Works,

Inc., 261 U.S. 387, 48 S. Ct. 422 (1928) 18

Magnum Import Co. v. Coty, 262 U.S. 159, 43

Sn setae oes ae 17

Markman v. Westview Instruments, 52 F.3d 967

(Fed. Cir. 1995), aff’d, —— U.S. , 1168S. Ct.

ear a a EY FETT de A a 13

NLEB v. Amalgamated Clothing Workers of Am.,

430 F.2d 966 (5th Cir. 1970) 0... 19

North Am. Vaccine v. American Cyanamid Co., 7

F.3d 1571 (Fed. Cir. 19938), cert. denied, 511

U.S. 1069, 114 S. Ct. 1645 (1994) 0 17

Taylor v. McKeithen, 407 U.S. 191, 92 S. Ct. 1980

I aa 19

United States Surgical Corp. v. Ethicon, Inc., 103

F.3d 1554 (Fed. Cir. 1997) 0000 19

United States v. Baynes, 548 F.2d 481 (3d Cir.

SIG dies teh cil iit ee ree ee 19

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576

ent tL Norns Amit ern Oe 13

STATUTES

Re TE BR ca cetacean ee ee 4

RULES

eee eee me Re Rat 18

ee ee 9,19

OTHER AUTHORITY

Taft, C.J., in Hearings Before the House Committee

on the Judiciary, 67 Cong., 2d Sess., ser. 33

EE icnusared pantie thdineetaaicie egies: et me 17-18

Vinson, C.J., Address to the American Bar Ass’n

(Sept. 7, 1949), 69 S. Ct. v, vi 2.0.00... 18

Roget’s International Thesaurus (4th ed. 1977 ta, 14

Webster’s New Collegiate Dictionary (1981 ed.).... 14

IN THE

Supreme Court of the United States

OCTOBER TERM, 1997

No. 97-436

SASHCO, INC.,

7 Petitioner,

DAP Propuwcts INC.,

Respondent.

On Petition for a Writ ef Certiorari te the

United States Court of Appeals

for the Federal Circuit

RESPONDENT'S BRIEF IN OPPOSITION

STATEMENT OF THE CASE

This is not a case worthy of Supreme Court review.

This is a commercial dispute between Petitioner Sashco,

Inc. (“Sashco”) and Respondent DAP Products Inc.

(“DAP”) that involves, inter alia, the issue of whether

United States Patent Nos. 4,776,458 (the “’458 Patent”)

and 4,863,014 (the “’014 Patent”), owned by Sashco,

are infringed by any product made, used or sold by DAP.

Having had this question answered in the negative by both

the United States District Court for the Southern District

of Ohio and the United States Court of Appeals for the

Federal Circuit, Sashco simply seeks a third bite of the

apple by asking this Court to interpret the claims of its

patents.

The question that Sashco urges this Court to address—

the scope of its patents—is unique to this case and pre-

sents no legal issue of general applicability. Simply put,

this is a case where Sashco urged a narrow interpretation

of its claimed inventions to the patent examiner in order

to obtain its patents, and then asserted a broader inter-

pretation of its patents as to competitors. Unhappy that

its attempt to expand the scope of its patents was rejected

both by the district court and by the Federal Circuit,

Sashco now seeks to have this Court engage in claim

construction. As demonstrated below, Sashco understands

neither thé scope of its patents nor the role of this Court,

and the petition should be denied.

A. The-’458 Patent Covers Only the Combination of Clear

Caulk in a Clear Cartridge Such that the User Can

See Completely Through the Cartridge from One Side

to the Other

The ’458 Patent claims a caulking cartridge that differs

from a conventional caulking cartridge only in that the

cartridge is substantially transparent and is filled with a

substantially transparent caulking compound. Claim 1,

the only independent claim of the “458 Patent, reads as

follows:

“A product for use in the building industry, com-

prising a cartridge formed as an elongated tubular

housing having a longitudinal axis and surrounding

sidewall fabricated of a transparent material, said

housing having a hollow interior, a nozzle member

enclosing a downstream end of said cartridge, a sub-

stantially transparent caulking compound contained

in said cartridge, said caulking compound adapted

to be placed on a substrate, and a piston member

slidably received in the interior of said cartridge and

enclosing an upstream end thereof so that the piston

member may be pressed against the caulking com-

pound to force the caulking compound out of said

nozzle member as said piston member is moved

downstream through said housing to dispense said

caulking material onto said substrate whereby the

combination of said housing and said caulking com-

3

pound is substantially transparent in the transverse

direction so as to allow a user to see completely

through the surrounding sidewall and through the

caulking compound from one side of the cartridge

to the other whereby the substrate may be viewed

through the combination of the housing and the

caulking material placed therein so that the appe[a]r-

ance of the substrate as affected by the caulking

material may be seen prior to application of the

caulking material and whereby the position of the

piston member may be viewed as the caulking ma-

terial is dispensed from the housing.”

D-6, col. 7, In. 27—col. 8, In. 7. The limitations of

Claim 1 consist of:

(a) a cartridge formed as an elongated tubular hous-

ing that includes:

(i) a longtitudinal axis;

(ii) a transparent sidewall;

(iii) a hollow interior;

(iv) a nozzle at one end;

(v) a piston at the end opposite the nozzle

end;

(b) a substantially transparent caulking compound

in the cartridge; and

(c) the result that:

(i) the combination of cartridge and caulking

compound is substantially transparent in

the transverse direction;

(11) the user can see completely through the

cartridge from one side to the other;

(iii) the substrate is visible through the com-

bination of cartridge and caulking com-

pound; and

(iv) the piston may be viewed as the caulking

material is dispensed from the cartridge.

4

Sashco did not invent, and does not purport to have

invented, a substantially transparent caulking product. In

fact, Sashco admitted in the “458 Patent application that

transparent caulking products already were commercially

available. D-3; L-6. Similarly, Sashco does not contend

that clear plastic containers were new to the art. Id.

Accordingly, the “invention” claimed by the ’458 Patent

application is the combination of a known substantially

clear cartridge and a known substantially clear caulking

compound. However, not every such combination is cov-

ered; the “458 Patent claims only a device that is sub-

stantially transparent in the transverse direction such that

the user can see completely through from one side of the

cartridge to the other.

B. Sashco’s Admissions During the Prosecution of the

‘458 Patent Application Confirm its Narrow Scope

Not surprisingly, Sashco experienced significant difficul-

ties in obtaining a patent for its claimed invention. The

application that became the ’458 Patent originally con-

tained 29 claims. L3. Claims 1-21 were withdrawn from

consideration by Sashco, and Claim 22 was redesignated

as Claim 1. Original Claim 22 was directed to a cartridge

having a surrounding sidewall made of a transparent ma-

terial and called for the “combination of said housing and

said caulking compound being substantially transparent

along a transverse axis of said cartridge.” L20.

Claim 22 was rejected by the patent examiner as being

unpatentable for obviousness over the prior art, pursuant

to 35 U.S.C. § 103. L24. Following the rejection of

Claim 22, the patent examiner conducted an interview

of Sashco’s counsel. In his interview summary record, the

patent examiner stated that “Claim 22 may be allowable

if the motivation and the advantage of placing transparent

caulk in a transparent container is set forth in the claim

other than for viewing contents purposes.” L26 (emphasis

added).

5

Sashco responded to the patent examiner’s action by

amending Claim 22 to state that:

“the combination of said housing and said caulking

compound is substantially transparent in the trans-

verse direction so as to allow a user to see com-

pletely through the surrounding sidewall and through

the caulking compound from one side of the cartridge

to the other.” (Emphasis added. )

L29. In remarks accompanying the amendment, Sashco’s

counsel argued:

“Claim 22 has been amended to reflect that the prod-

uct is substantially transparent in the transverse di-

rection across its longitudinal axis so as to allow

a user to completely see through the surrounding side-

wall and through the caulking compound from one

side of the cartridge to the other.” (Emphasis added. )

L31.

Sashco then filed a supplemental amendment to Claim

22 further limiting that claim to a combination cartridge

and caulking compound that is substantially transparent:

“whereby the substrate may be viewed through the

combination of the housing and the caulking material

placed therein so that the appearance of the substrate

as affected by the caulking material may be seen prior

to application of the caulking material.”

L35. The amendments to Claim 22 limited the claimed

invention to the combination of a transparent cartridge

and a transparent caulking compound that allows the user

to see completely through the cartridge across its longi-

tudinal axis, from one side of the cartridge to the other,

and to preview the effect of the caulking compound on

the substrate to which the compound is to be applied.

In other words, a cartridge product that allows the user

to see into, but not completely through, the combination

of cartridge and caulking compound is not covered by the

‘458 Patent.

6

C. The ‘014 Patent Covers Only the Combination of Clear

Caulk in a Clear Squeeze Tube that Contains a Region

of Reduced Thickness in a Uniform, Flattened Con-

figuration

Sashco’s ’014 Patent generally covers a substantially

transparent sealant compound in a substantially trans-

parent squeeze tube. The application that led to the

issuance of the ‘014 Patent was filed as a continuation-

in-part of the ’458 Patent application. As in the case of

the “458 Patent, the only independent claim of the ‘014

Patent is Claim 1. That claim requires:

“said container having a region of reduced thickness

in a direction transverse to the longitudinal axis

longitudinally adjacent the upstream end of the con-

tainer so that the caulking compound in the region

of reduced thickness has a substantially uniform,

flattened configuration and wherein said sidewall has

facing sidewall portions on opposite sides of said

region of reduced thickness that are fabricated of

substantially transparent material whereby the sub-

strate surface may be viewed through the combina-

tion of the facing sidewall portions and the caulking

material therebetween so that the appearance of the

substrate surface as affected by the caulking material

may be seen prior to the application of the caulking

material.”

E-8, col. 7, In. 5-18.

As with the 458 Patent, Sashco does not claim to have

invented either a substantially transparent caulking com-

pound or a substantially transparent squeeze tube; the

‘014 Patent covers only the combination of the two.

Moreover, the patentability of the “invention” claimed by

the ‘014 Patent was based upon the squeeze tube con-

tainer having a specified region of reduced thickness in a

uniform, flattened configuration opposite the nozzle end

of the tube.

The necessity of the region of reduced thickness was

emphasized by the patent examiner during a re-examination

7

of the ‘014 Patent. During the re-examination proceed-

ing, the patent examiner concluded that “[t]he combina-

tion of the transparent caulking compound contained in

a transparent type of squeezable container is old and con-

ventional as clearly evidenced by the references.” L43.

The patent examiner affirmed patentability only because

“none of the prior art fairly teaches or suggests the

combination as a whole that a transparent type of squeez-

able container including transparent caulking compound

in a region of a reduced thickness . . . . Such limitation

is clearly defined at lines 15 to 28 o[f] claim 1.” L43.

Thus, the making, using or selling of a transparent caulk-

ing compound in a conventional, wedge-shaped trans-

parent squeeze tube falls outside of the scope of the ’014

Patent.

D. The Accused DAP Products Do Not Fall Within the

Scope of Sashco’s Patents

DAP and Sashco are competitors that supply a variety

of caulking, sealant and weatherproofing products to the

consumer and building industries. DAP formerly was a

wholly-owned subsidiary of USG Corporation (“USG”).

While owned by USG, DAP was known as DAP, Inc.

(“Old DAP”). In the early 1970’s, Old DAP began

marketing a clear rubber-based sealant compound in an

opaque cardboard caulking cartridge. In approximately

1990, Old DAP began to sell its clear sealant in a clear

plastic cartridge, and subsequently marketed the product

in a clear squeeze tube, as well.

On or about March 26, 1990, Sashco filed an action

against Old DAP in the United States District Court for

the District of Colorado (“the Old DAP litigation”) alleg-

ing that the Old DAP cartridge product infringed its ’458

Patent. Sashco later amended its complaint in that action

to allege that the Old DAP squeeze tube product infringed

the ‘014 Patent.

During the Old DAP litigation, Old DAP changed the

design of its clear cartridge product to include a non-

8

transparent portion, or mask, that extended around ap-

proximately 58% of the cartridge. The redesigned cart-

ridge thus contained a transparent window that allowed

a user to see into, but not completely through, the cart-

ridge. Nonetheless, Sashco erroneously continued to assert

that the redesigned old DAP cartridge product infringed

the ‘458 Patent.

Sashco’s infringement claim with respect to the ’014

Patent was equally specious. The squeeze tube product

made and sold by Old DAP, like DAP’s squeeze tube

products, was marketed in a conventional wedge-shaped

or toothpaste-type squeeze tube. Because a toothpaste-

type squeeze tube tapers continuously from the nozzle end

to the sealed end, it does not include a region of reduced

thickness in a uniform, flattened configuration, as required

by Claim 1 of the ’014 Patent.

Effective September 20, 1991, during the pendency of

the Old DAP litigation, USG sold Old DAP to a new

parent company.’ For a period of time following the

sale, DAP continued to sell the redesigned clear cartridge

product and clear squeeze product that Sashco alleged

infringed its patents in the Old DAP litigation.*

In late 1992, DAP again changed the design of its

clear cartridge product to include a non-transparent mask

that extends around substantially all of the cartridge,

except for a narrow transparent window. At the same

time, DAP redesigned its squeeze tube product to provide

a non-transparent mask except for a transparent window

similar to the window found on the redesigned cartridge

1 After the sale, USG (which no longer had an interest in defend-

ing the products at issue) settled the Old DAP litigation with

Sashco.

2 Although DAP was not a party to the settlement agreement

between Sashco and USG, Sashco attempted to have DAP held in

contempt for somehow violating that settlement agreement. The

District Court for the District of Colorado found that Sashco’s

argument was meritless and discharged the show cause order.

9

product. Sashco does not contend that the new DAP

cartridge product or the new DAP squeeze tube product

infringes the “458 Patent or the ’014 Patent.

E. The District Court Determined that Sashco’s Patents

Are Not Infringed by Any Product Made, Used or Sold

by DAP, and the Federal Circuit Affirmed

In December 1995, the parties filed cross-motions for

partial summary judgment. In its motion, DAP demon-

strated that there are no genuine issues of material fact

and that it is entitled to judgment as a matter of law

declaring that neither the ’458 Patent nor the ‘014 Patent

is infringed by any product made, used or sold by DAP.

In its motion, Sashco sought a declaration that the old

DAP cartridge product and the old DAP squeeze tube

product infringed the 458 Patent and the ’014 Patent.

In an opinion issued July 17, 1996, the district court

held that Sashco’s patents are not infringed by any prod-

uct made, used or sold by DAP; accordingly, DAP’s

motion for partial summary judgment was sustained on

those issues, and Sashco’s motion for partial summary

judgment was overruled. Sashco appealed the district

court’s decision. ~

Following oral argument, the United States Court of

Appeals for the Federal Circuit affirmed the decision of

the district court without opinion, pursuant to Fed. Cir.

R. 36. Sashco’s subsequent combined petition for rehear-

ing and suggestion for rehearing in banc was denied by

the Federal Circuit.

REASONS FOR DENYING THE PETITION

I. THE DISTRICT COURT CORRECTLY CONSTRUED

SASHCO’S PATENTS USING PROPER CLAIM CON-

STRUCTION METHODOLOGY

Sashco attempts to manufacture a legal issue of signifi-

cance where there is none by accusing the district court

of relying “first and foremost” on certain extrinsic evi-

10

dence—dictionary definitions—in construing the claims

of Sashco’s patents. Petition, p. 13. Sashco’s argument

(1) misrepresents the district court’s claim construction

methodology; (2) misstates the law regarding the use of

dictionaries in claim construction; and (3) omits to in-

form this Court that, in its motion for partial summary

judgment, Sashco itself urged the district court to begin

its claim interpretation by resorting to a dictionary.

A. The District Court Correctly Found No Infringe-

ment of the ‘458 Patent

1. DAP’s cartridge product is not covered by the

'458 Patent

The district court correctly found, and the Federal

Circuit agreed, that a functionality required by Claim 1

of the ‘458 Patent was missing from DAP’s accused

caulk cartridge. Claim 1 describes the patented device

as a product consisting of a substantially transparent

tubular housing containing a substantially transparent

caulking compound, and further describes the required

functionality, which is missing from DAP’s accused prod-

uct, as follows:

“the combination of said housing and said caulking

compound is substantially transparent in the trans-

verse direction so as to allow a user to see completely

through the surrounding sidewall and through the

caulking compound from one side of the cartridge to

the other whereby the substrate may be viewed

through the combination of the housing and the

caulking material placed therein so that the appe[a]r-

ance of the substrate as affected by the caulking ma-

terial may be seen prior to application of the caulk-

ing material... .”

D-6, col. 7, In. 41—col. 8, In. 5.

This required functionality is not found in DAP’s car-

tridge because more than 50% of the exterior of its car-

tridge was covered with an opaque mask; accordingly,

instead of being “substantially transparent”, DAP’s car-

Il

tridge was substantially non-transparent. Thus, the ques-

tion for the district court was whether the functionality

set forth in Claim 1 covers devices that do not permit a

view through the center of the cartridge, such as DAP’s

accused cartridge product. The primary language in the

claim that needed construction was the requirement of

transparency “in the transverse direction so as to allow

a user to see ... from one side of the cartridge to the

other.” D-6, col. 7, In. 43-46. (Emphasis added).

Considering the plain language of the claim, the dis-

trict court logically found that the requirement of seeing

“from one side of the cartridge to the other” must mean

that the user can see either (1) from a point on the car-

tridge to an opposite point or (2) from a point on the

cartridge to any other point, even a point an infinitesimal

distance away. App. A-27. The district court found

(correctly, in the view of the Federal Circuit) that the

former interpretation is proper because the phrase “in the

transverse direction” suggests that the view must be to

an opposite point. App. A-26—A-27.

The district court also noted that a contrary interpreta-

tion would result in the “458 Patent encompassing a sub-

stantially opaque cartridge with a viewing window just

wide enough to allow the user to see from one point

to any other. App. A-27. That construction, of course,

is impossible in light of the “458 Patent’s prosecution

history. App. A-28—-A-29. Since the mask on the DAP

cartridge covers over 50% of the circumference, the user

cannot see through the cartridge from any point on the

cartridge to an opposite point, and there is no infringe-

ment of the 458 Patent.

2. The district court did not err in consulting dic-

tionaries during its claim construction

Although Sashco now takes issue with the district

court’s use of dictionaries as an- aid in claim construc-

tion, Sashco fails to mention that when it asked the

12

district court to adopt its erroneous construction of the

‘458 Patent, the first “evidence” Sashco presented was

extrinsic evidence—a dictionary definition of the word

“transverse”. Respondent’s Appendix at 13a-14a. Sashco

then provided the district court with a brief excerpt from

the prosecution history to support its construction based

on that dictionary definition, followed immediately by an-

other dictionary definition—the meaning of the word

“across”—in order to explain the prosecution history. Id.

Moreover, the district court did not rely “first and

solely” upon extrinsic evidence in construing the claims

of Sashco patents (even though Sashco invited the district

court to look “first” at dictionary definitions). What the

district court did was to look at dictionary definitions of

critical words used in the patent claims in the course of

construing the patents. The district court did this only

after it already had considered the language of the claims

at issue, and had explained critical parts of the prosecu-

tion history of each patent, in the earlier sections of its

opinion. App. A-14—A-19: Thus, the district court re-

sorted to intrinsic evidence initially and, following the

references to dictionary definitions, it again consulted

intrinsic evidence in the specifications and prosecution

history as aids in construction. App. A-26—A-30.

By employing dictionary definitions of such words as

“transverse” and “across”, as well as by consideration of

such intrinsic evidence as the claims and the prosecution

history, the district court properly construed the ’458

Patent and correctly held that an off-center view— into

the cartridge at one point on its surface and then out at

any other point (e.g., including those points just an in-

finitesimal distance away on the surface of the cartridge)

—would be inconsistent both with the specification of a

“transverse direction” of view in the patent claim, and

with prosecution history limitations against the patentabil-

ity of a mere viewing window (that allows a user to see

into, but not through, the cartridge). App. A-27—A-28.

13

3. Even if the district court looked first at diction-

ary definitions (which it did not), a dictionary

may be consulted at any time during claim

construction

Neither Markman v. Westview Instruments, 52 F.3d

967 (Fed. Cir. 1995), aff'd, US. , 116 S. Ct.

1384 (1996), nor Hoechst Celanese Corp. v. B P Chem.,

78 F.3d 1575 (Fed. Cir.), cert. denied, USS. ,

117 S. Ct. 275 (1996), place any particular sequence

upon the use of extrinsic evidence by the district court.

The district court may not use extrinsic evidence to alter

claim language, Markman, 52 F.3d at 981, but intrinsic

evidence also may not be used for such purposes. Id.

at 980. Beyond that, Markman and Hoechst place no

limitation on the sequencing of evidence in the claims

construction calculus.

In Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,

1584-85 (Fed. Cir. 1996), the case primarily relied upon

by Sashco, the Federal Circuit held that certain kinds of

extrinsic evidence should not be considered in construing

a claim unless that claim construction question cannot be

resolved solely by reference to intrinsic evidence. How-

ever, the extrinsic evidence at issue in Vitronics was depo-

sition testimony of an engaged expert. Jd. at 1585. With

respect to dictionary definitions, Vitronics held:

“Although technical treatises and dictionaries fall

within the category of extrinsic evidence, as they

do not form a part of an integrated patent document,

they are worthy of special note. Judges are free to

consult such resources at any time in order to better

understand the underlying technology and may also

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.”

Id. at 1584 n.6 (emphasis added).

eee

14

Thus, although the district court looked to the diction-

ary only after first analyzing the language of the claims,

it was free to resort to dictionary definitions at any time.

Accordingly, the district court did not depart from Mark-

man or Hoechst, and faithfully adhered to proper claim

construction methodology (i.e., reading dictionary defini-

tions) originally proposed by Sashco and recently ap-

proved in Vitronics.

4. The district court did not err in analyzing the

‘458 Patent as a tubular cartridge

Sashco mistakenly asserts that the district court’s analy-

sis was flawed because it focused on a cylindrical car-

tridge even though the word “cyclindrical” is not found in

Claim 1. Petition, p. 17. However, the word “tubular”

as used in Claim 1 of the ‘458 Patent is synonymous with

the word “cylindrical.”* Sashco’s apparent belief that

all cylinders are “circular”, is incorrect; any “cylinder”,

just like any “tube”, may have a non-circular cross-

section,* a fact of which the district court was aware and

so indicated.°

When the district court analyzed Sashco’s cartridge

as a “circular cylinder,” it expressly did so not as a

limitation on the scope of the patent but because in this

case “it is most helpful to think about [the patent’s] de-

8 Roget’s International Thesaurus (4th ed. 1977) at Category

255.4 (p. 161) (classifying “tube’’ as an included synonym of

“cylinder”) ; Webster’s New Collegiate Dictionary (1981 ed.) p. 1247

(defining “tube” as “a hollow elongated cylinder’).

*A “cylinder” typically is defined as “the surface traced by a

straight line moving parallel to a fixed straight line and intersecting

a fixed curve.” Webster’s New Collegiate Dictionary, p. 281. The

“fixed curve” intersected by a cylinder’s surface, which defines the

cylinder’s cross-section, need not be circular.

5 See App. A-24, where the district court distinguishes between

a “cylindrical cartridge”, generally, and a “circular cylinder’, defin-

ing the latter as “a cylinder whose bases are circles”.

a en ee

15

scription in terms of circles.” App. A-24. Indeed, in the

‘014 Patent, the same inventor and draftsman as were

involved in the ’458 Patent repeatedly used the terms

“tubular” and “circular” interchangeably in describing the

devices covered by the ’014 Patent.* Thus, there was no

error in the district court’s claim construction.

B. The District Court Correctly Found No Infringe-

ment of the ‘014 Patent

With respect to the ‘014 Patent, no claim construction

or interpretation is or was required. Claim 1 (the only

independent claim) requires a specific structure that sim-

ply does not exist in DAP’s accused squeeze tube. That

specific structure is set forth in the claim language as

follows:

“said container having a region of reduced thickness

in a direction transverse to the longitudinal axis

longitudinally adjacent the upstream end of the con-

tainer so that the caulking compound in the region

of reduced thickness has a substantially uniform,

flattened configuration... .”

E-8, col. 7, In. 5-10.

Because DAP’s squeeze tube gradually tapered from one

end to the other, like a wedge or “toothpaste-type” squeeze

tube, it had no identifiable “region of reduced thickness”

that was “substantially uniform” and “flattened” at the

sealed end of the tube (or anywhere on the tube). Al-

though the district court consulted a dictionary and looked

for related, explanatory language in the patent’s specifica-

tion, App. A-36—A-37, the district court ultimately reached

the obvious conclusion that “flattened” means “flattened,”

i.é., a region that has “less slope” than the rest of the

tube. App. A-37. With that “interpretation” in hand, the

district court then reached the further, equally obvious,

* E-6, col. 3, In. 10-16; E-6, col. 4, In. 49-58; E-8, col. 7, In. 39-41.

16

non-infringement conclusion, stating that “upon even a

cursory examination of [DAP’s] squeeze tube, it becomes

quite clear that there is no flattened region at the end

of the tube.” App. A-38.

Sashco’s argument that the district court’s construction

reads Sashco’s disclosed preferred embodiment out of the

patent, Petition, p. 23, is meritless. The textual disclosure

of the preferred embodiment in the specification of the

‘014 Patent requires the same “substantially uniform” and

“flattened” region of reduced thickness adjacent to the

upstream end of the patented device as is required by

Claim 1. E-6, col. 4, In. 68—col. 5, In. 6. Figures 1,

2 and 3 of the ‘014 Patent, E-2, E-3 (renderings of the

preferred embodiment), each illustrate by shading, stria-

tions or annotation (referred to as “region 34” with longi-

tudinal dimension “d”) a physically distinct, “flattened”

region of reduced thickness—in the district court’s words,

an area with “less slope’—at the upstream end of the

tube. It is this marked reduction in thickness or change

in slope found in the disclosure of the preferred embodi-

ment that is required by Claim 1 but which does not

exist in DAP’s accused device. Accordingly, the district

court’s construction of the ‘014 Patent, and the finding of

non-infringement, does not read Sashco’s preferred em-

bodiment out of the patent.’

Finally, Sashco asserts that Claims 8 and 9 of the ‘014

Patent cover toothpaste-type tubes. Petition, p. 23. How-

ever, whatever devices are encompassed by Claims 8 and

9, those claims are dependent on Claim 1 and, accord-

™The patent examiner, in fact, expressly found that the ‘014

Patent does not extend to “toothpaste-type” squeeze tubes. The

examiner on re-examination found that clear caulk in clear plastic

squeeze tubes was “old and conventional.” L43. According to the

patent examiner, the feature of the ‘014 Patent that made it patent-

able over toothpaste-type squeeze tubes was the addition of this

“substantially uniform” and “flattened” “region of reduced thick-

ness”. Jd.

17

ingly, contain the limitations of Claim 1, including the

“substantially uniform” and “flattened” “region of reduced

thickness” recited in Claim 1, and not found in an ordi-

nary toothpaste-type tube.*

II. SASHCO HAS RAISED NO SIGNIFICANT LEGAL

ISSUE OF GENERAL APPLICATION’ BUT,

RATHER, ASKS THE COURT TO CORRECT

CLAIM CONSTRUCTION WITH WHICH IT DIS-

AGREES

Even if the district court’s claim construction was erro-

neous (which it was not), this Court does not sit to

correct errors where the Court’s decision will affect only

the parties before it. Sashco has no legitimate argument

with the district court’s claim construction methodology,

and its petition is a thinly-veiled attempt to gain another

bite of the apple after its attempts to expand the scope of

its patents were rejected by the district court and the

Federal Circuit. Moreover, any error below can hardly

impact “the law of claim construction to be applied in the

future”, Petition, p. 13, where the district court’s opinion

is unpublished and the Federal Circuit affirmed without

opinion.

“The jurisdiction [of the Supreme Court to review cases

by way of certiorari] was not conferred upon this Court

merely to give the defeated party in the Circuit Court of

Appeals another hearing.” Magnum Import Co. v. Coty,

262 U.S. 159, 163, 43 S. Ct. 531, 532 (1923). As Chief

Justice Taft noted long ago,

8 Sashco cannot expand an independent claim beyond its explicit

limitations by pointing to dependent claims that are said to be of

the same or a broader scope:

“While it is true that dependent claims can aid in interpreting

the scope of claims from which they depend, they are only an

aid to interpretation and are not conclusive. The dependent

claim tail cannot wag the independent claim dog.”

North Am. Vaccine v. American Cyanamid Co., 7 F.3d 1571, 1577

(Fed. Cir. 1993), cert. denied, 511 U.S. 1069, 114 S. Ct. 1645 (1994)

(emphasis added).

~18

“No litigant is entitled to more than two chances,

namely, to the original trial and to a review, and the

intermediate courts of review are provided for that

purpose. When a case goes beyond that, it is not

primarily to preserve the rights of the litigants. The -

Supreme Court’s function is for the purpose of ex-

pounding and stabilizing principles of law for the

benefit of the people of the country, passing upon

constitutional questions and other important ques-

tions of law for the public benefit. It is to preserve

uniformity of decision among the intermediate courts

of appeal.”

Taft, C.J., in Hearings Before the House Committee on

the Judiciary, 67th Cong., 2d Sess., ser. 33, at 2 (1922).

Accord, Layne & Bowler Corp. v. Western Well Works,

Inc., 261 U.S. 387, 393, 43 S. Ct. 422, 423 (1923)

(“[I]t is very important that we be consistent in not

granting the writ of certiorari except in cases involving

principles the settlement of which is of importance to

the public as distinguished from that of the parties, and

in cases where there is a real and embarrassing conflict

of opinion and authority between the circuit courts of

appeal.” )

This case presents no issues that affect any person

other than the parties. It involves no constitutional issues

or any split in authority among the circuits. Instead,

Sashco alleges an error in patent claim construction con-

cerning the specific patents owned by Sashco. Standing

alone, these alleged errors do not warrant Supeme Court

review. This Court “is not, and never has been, primarily

concerned with the correction of errors in lower court

decisions.” Vinson, C.J., Address to the American Bar

Ass’n (Sept. 7, 1949), 69 S. Ct. v, vi. Accordingly,

Sashco’s petition should be denied.

®In 1995, Supreme Court Rule 10 was amended to state:

“A petition for a writ of certiorari is rarely granted when the

asserted error consists of . . . the misapplication of a properly

stated rule of law.”

Sup. Ct. R. 10.

19

III. SASHCO HAS NO “RIGHT” TO AN OPINION ON

APPEAL, AND SASHCO CAN POINT TO NO EVI-

DENCE THAT THE FEDERAL CIRCUIT DID NOT

REVIEW THE DISTRICT COURT’S DECISION DE

NOVO

Sashco complains that the Federal Circuit did not issue

a written opinion of its affirmance of the district court

and, therefore, it cannot determine whether the district

court’s decision was reviewed de novo. Petition, pp. 8-13.

“There is no requirement in law that a federal appellate

court’s decision be accompanied by a written opinion.”

Furman v. United States, 720 F.2d 263, 264 (2d Cir.

1983). The increasing caseload of the federal judiciary

demands that courts issue summary dispositions in cases

with no precedential value and where no dissenting views

exist among the judges hearing the case. United States

v. Baynes, 548 F.2d 481, 483-84 (3d Cir. 1977); NLRB

v. Amalgamated Clothing Workers of Am., 430 F.2d

966, 971-72 (Sth Cir. 1970).

Furthermore, Sashco cannot complain that it did not

receive the proper standard of review. “Appeals whose

judgments are entered under [Federal Circuit] Rule 36

receive the full consideration of the court, and are no

less carefully decided than the cases in which we issue

full opinions.” United States Surgical Corp. v. Ethicon,

Inc., 103 F.3d 1554, 1556 (Fed. Cir. 1997). Thus,

Sashco’s question as to whether it received a de novo

review of the district court’s decision already has been

answered in the affirmative by the Federal Circuit.

10 This Court has itself sanctioned this procedure:

“We, of course, agree that the courts of appeals should have

wide latitude in their decisions of whether or how to write

opinions. That is especially true with respect to summary

affirmances.”

Taylor v. McKeithen, 407 U.S. 191, 194 n.4, 92 S. Ct. 1980, 1982

n.4 (1972).

20

CONCLUSION

For the foregoing reasons, the petition should be denied.

Respectfully submitted,

JEFFREY T. Cox

Counsel of Record

PAUL G. HALLINAN

THOMAS R. KRAEMER

FARUKI GILLIAM & IRELAND

P.L.L.

600 Courthouse Plaza, S.W.

10 North Ludlow Street

Dayton, Ohio 45402

(937) 227-3704

Counsel for Respondent

DAP Products Inc.

APPENDIX

la

APPENDIX

IN THE UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF OHIO

WESTERN DIVISION ( DAYTON)

Case No.: C-3-92-407

Judge Rice

DAP Propucts, INc.

855 North Third Street

Tipp City, Ohio 45471

Plaintiff,

V.

SASHCO, INC.

3900 East 68th Avenue

Commerce City, Colorado 80022

Defendant.

DEFENDANT SASHCO’S MOTION FOR

PARTIAL SUMMARY JUDGMENT

Defendant, Sashco, Inc. (“Sashco”) by and through its

attorneys, hereby moves this Court, pursuant to Fed. R.

Civ. P. 56, for partial summary judgment in its favor on

the First and Second Counterclaims for Relief (and

against DAP Products on its converse declaratory judg-

ment claims) that the DAP Clear Cartridge Product in-

fringes Sashco’s U.S. Patent 4,776,458, (the “’458

Patent”) that the DAP Clear Squeeze Tube Product in-

fringes Sashco’s U.S. Patent No. 4,863,014 (the “’014

Patent”). Sashco also requests summary judgment that

DAP Products’ claims against Sashco for alleged false ad-

vertising and unfair competition are limited in time to

2a

acts after September 20, 1991. In support of its motion,

Sashco states as follows:

1. Sashco is the owner of the ‘458 Patent, issued on

October 11, 1988. A true and correct copy of the “458

Patent is attached to the Memorandum in Support of

Sashco’s Motion for Partial Summary Judgment as Ex-

hibit A.

2. Sashco is the owner of the ’014 Patent, issued on

September 5, 1989. A true and correct copy of the ’014

Patent is attached to the Memorandum in Support of

Sashco’s Motion for Partial Summary Judgment as Ex-

hibit B.

3. On May 2, 1994, Sashco filed its Answer to DAP

Products’ Complaint, in which Sashco counterclaimed that

DAP Products had infringed the “458 Patent through its

manufacture and sale of the “DAP Clear Cartridge Prod-

uct”. Sashco also counterclaimed that DAP Products had

infringed the ‘014 Patent through its mnaufacture and

sale of the “DAP Clear Squeeze Tube Product”.

4. In addition, Sashco raised the affirmative defense

that damages for claims arising prior to September 20,

1991 are barred.

5. By this motion, Sashco seeks partial summary judg-

ment in its favor and against DAP Products, asking the

Court to rule that DAP Products, activities with respect to

these two products infringe upon both the ’458 Patent

and the ‘014 Patent. Sashco also asks this Court to find

that any claims alleged against Sashco by DAP Products

in this action can only extend from September 20, 1991.

6. Plaintiff asserts that the undisputed facts herein jus-

tify the granting of Sashco’s present motion.

7. Plaintiff's Memorandum in Support of Its Motion

for Partial Summary Judgment is filed simultaneously

herewith.

Dated this 30th day of November, 1995.

By: /s/

3a

Respectfully submitted,

Timothy J. Martin

TIMOTHY J. MarTIN, Eso.

TIMOTHY J. MarTIN, P.C.

9250 W. Sth Ave., Suite 200

Lakewood, Colorado 80226

(303) 232-3388

JEROME C. RANDOLPH

(0021808)

1800 Provident Tower

One East Fourth Street

P.O. Box 1800

Cincinnati, Ohio-45202

(513) 579-6431

Attorney for Defendant,

Sashco, Inc.

Of Counsel:

KEATING, MUETHING & KLEKAMP

1800 Provident Tower

One East Fourth Street

P.O. Box 1800

Cincinnati, Ohio 45202

(513) 579-6431

TIMOTHY J. MarTIN, Eso.

TIMOTHY J. Martin, P.C.

9250 W. Sth Avenue, Suite 200

Lakewood, Colorado 80226

(303) 232-3388

4a

CERTIFICATE OF SERVICE

I hereby certify that a copy of the foregoing DEFEND-

ANT SASHCO’S MOTION FOR PARTIAL SUMMARY

JUDGMENT was served upon J. Faruki and David A.

Shough, Attorneys for Plaintiff, Faruki Gilliam & Ireland,

600 Courthouse Plaza, S.W., 10 North Ludlow Street,

Dayton, Ohio 45402 by ordinary U.S. mail, this 30th day

of November, 1995.

/s/ Cherise L. Knox

—

5a

IN THE UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF OHIO

WESTERN DIVISION (DAYTON)

Case No.: C-3-92-407

Judge Rice

DAP ProDucts, INc.

855 North Third Street

Tipp City, Ohio 45471

Plaintiff,

v.

SASHCO, INC.

3900 East 68th Avenue

Commerce City, Colorado 80022

Defendant.

DEFENDANT SASHCO’S MEMORANDUM IN

SUPPORT OF ITS MOTION FOR

PARTIAL SUMMARY JUDGMENT

Comes Now Sashco, Inc. (“Sashco”) and submits the

following as its memorandum in support of its Motion

For Partial Summary Judgment filed concurrently here-

with:

I. Background

Sashco is a manufacturer of building industry products,

specifically caulks and sealants, which began as a family

enterprise during the 1930’s. In 1972, Lester Burch, the

son of the company’s founder, graduated from college with

his degree in chemical engineering and became the chief

executive of Sashco. In about 1976, he was joined by

Wayne Summons who had graduated with Mr. Burch and

who also holds a degree in chemical engineering.

6a

Until the mid-1980’s, Sashco primarily marketed its

products on a regional basis, primarily in Colorado and

the surrounding states. In the early 1980's, however,

Burch and Summons conceived a product now known

under the federally registered mark Lexel. The introduc-

tion and subsequent marketing of the Lexel product pro-

pelled Sashco into the national arena.

The sealant compound in the Lexel product is a block

copolymer rubber (a sealant is a type of caulk). The

primary version of the Lexel product is a transparent

sealant that is marketed in a transparent container, namely

a transparent cartridge and a transparent “toothpaste-

type” squeeze tube.’ These transparent products will here-

inafter be referred jointly as the Clear Lexel Product and

separately as the Clear Lexel Cartridge Product and the

Clear Lexel Squeeze Tube Product.

The marketing appeal of the Clear Lexel product is its

see-through presentation. That is, a customer can see

completely through the combination of the container side-

wall and the sealant from one side to the other in a direc-

tion that is transverse to the container’s longitudinal axis.

The Clear Lexel Products garnered six industry packaging

awards in the late 1980’s.

Sashco had the foresight to patent its innovative pack-

aging combinations. In 1988, the United States Patent

Office issued U.S. Patent No. 4,776,458 (the “’458

Patent”) covering the Clear Lexel Cartridge Product, and

in 1989, the Patent Office issued U.S. Patent No. 4,863,014

(the “’014 Patent”) to Sashco for the Clear Lexel Squeeze

Tube product. Copies of the ’458 Patent and the ’014

Patent are attached hereto as Exhibits A and B. The

Clear Lexel Products are shown in Exhibit C.

Neither of Sashco’s patent is directed to the chemical

formulation of the sealant compound. Rather, each of

1Sashco also markets an opaque white version of the Lexel

product.

a em eT ee

7a

these patents claims the combination of a clear caulking

material as packaged in a see-through container. Sashco

specifically pointed out to the Patent Examiner that it did

not invent clear caulks or clear containers. (Exhibit A,

col. 1, lines 32-58; Exhibit B, col. 1, lines 5-31)

Sashco was prudent in taking the effort to gain patent

protection for its Clear Lexel Products. In the fall of

1988, one of the largest competitors in the industry, Red

Devil, Inc., introduced a copycat cartridge product and

later a copycat squeeze tube product. Sashco sued upon

issuance of the ’458 Patent.* Red Devil subsequently con-

fessed its infringement of the ’458 Patent and changed its

packaging.®

The history of the present controversy dates to 1989/

1990. At that time, the entity known as Dap, Inc. (“Old

Dap”) was a subsidiary of USG Corporation. Old Dap’s

product manager, David Groene, who was in charge of

developing new products for the company had seen the

success of the Lexel Clear Products and decided that Old

Dap should capitalize on Sashco’s invention, as well.

Exhibit D. Thus, in 1990, Old Dap introduced the Dap

Clear product, and Sashco again was forced to defend its

patents in court (the “Old Dap Litigation”).

In the Old Dap Litigation, Sashco sued for infringe-

ment of the ‘458 Patent and the ’014 Patent for Old Dap’s

variations of its Clear products, including the ones that

are the subject of this suit. These will be referred to

jointly as the DAP Clear Products and separately as the

2 Sashco, Inc. v. Red Devil, Inc., Civ. Act. No. 88-C-1639 (Dist.

Colo.)

3In 1993 Sashco filed a motion for contempt on a redesigned

version of the Red Devil Cartridge product. Concurrently, Red

Devil filed a declaratory judgment action in New Jersey seeking

a declaration of non-infringement by the redesigned cartridge

product and the Red Devil squeeze tube product. These matters

were settled by the parties.

8a

DAP Clear Cartridge Product and the DAP Clear Squeeze

Tube Product. Old Dap counterclaimed for noninfringe-

ment and invalidity on the same grounds raised in this

action. In discovery, Old Dap also raised as relevant to

the suit the same alleged false advertising and unfair

competition claims that are at issue in this action.

During the pendency of the Old Dap Litigation, specifi-

cally on September 20, 1991, the majority of the assets

of Old Dap were sold to Wassall Acquisitions, Inc.. On

that day, Wassall apparently changed its name to Dap

Products, Inc. (“Dap Products”), Plaintiff in this action

and Old Dap contemporaneously changed its name to La

Mirada, Inc. Dap Products continued the business of Old

Dap without interruption. This included the continued

manufacture and sale of the infringing DAP Clear

Products.

Old Dap (La Mirada) finally did confess its infringe-

ments of both of Sashco’s patents about one year later,

Exhibit E, and was enjoined from the manufacture of the

infringing products. Old Dap also released Sashco from

any claims it had related to the Old Dap Litigation. This

release is shown in Exhibit F. During this time, though,

Dap Products continued its manufacture and marketing

of the infringing DAP Clear Products and instituted this

action for declaratory judgment; DAP Products also at-

tacked Sashco for alleged acts of unfair competition.

Sashco filed a motion for contempt against Dap Prod-

ucts in the Old Dap Litigation, arguing that Dap Products

was merely a successor in interest who took the assets

pendente lite and was therefore bound by the consent

decree of Old Dap. Dap Products asserted that it was a

completely new and legally unrelated entity. See, Exhibit

G. The Colorado Court agreed with Dap Products and

ruled that the injunction against Old Dap did not enjoin

Dap Products.

9a

Accordingly, Sashco has again been compelled in this

Court to sue yet again for infringement by the same DAP

Clear Products found to be infringing in the Old Dap

Litigation. Sashco seeks summary judgment on these in-

fringement claims as well as a ruling that any damages

for claims alleged against Sashco in this action by Dap

Products can only extend from September 20, 1991, and

not before. Sashco does not in this motion and memoran-

dum address the lack of basis for DAP Products’ claims.

II. Issues

1. Does the Dap Clear Cartridge Product Infringe

Sashco’s ’458 Patent?

2. Does the Dap Clear Squeeze Tube Product infringe

Sashco’s ‘014 Patent?

3. Are Dap Products claims against Sashco for alleged

false advertising and unfair competition limited in

time to acts after September 20, 1991?

II. Legal Argument

A. General Guidelines Governing Motions for Summary

Judgment

The primary principles governing motions for Summary

Judgment are well established. Pursuant to Rule 56, Fed.

R.Civ.P., Summary Judgment is appropriate in cases

where no genuine issue of material fact exists, and the

moving party shows that it is entitled to judgment as a

matter of law. It is the moving party’s burden to estab-

lish the absence of a genuine issue of material fact by

Showing that there is an absence of evidence to support

the non-moving party’s case, Celotex Corp. v. Catrett, 477

U.S. 317, 106 S.Ct. 2548, 2554, 91 L.Ed.2d 265 (1986).

Any doubt is to be resolved against the moving party.

Petersen Manufacturing Co. v. Central Purchasing, Inc.,

740 F.2d 1541, 1546, 222 U.S.P.Q. 562, 565-66 (Fed.

Cir. 1984).

10a

While the Federal Circuit has cautioned that a Motion

for Summary Judgment on the issue of infringement must

be approached carefully by the District Court, See gener-

ally, Palumbo v. Don-Joy Co., 762 F.2d 969, 226 U.S.P.Q.

5 (Fed. Cir. 1985), the Court has also recognized that a

comparison of a properly interpreted claim with a stipu-

lated or uncontested description of an accused device

would reflect such an absence of material fact issues as to

warrant Summary Judgment on the matter of infringe-

ment. Chemical Engineering Corp. v. Essef Industries,

Inc., 795 F.2d 1565, 230 U.S.P.Q. 385 (Fed. Cir. 1986).

Moreover, a dispute as to the legal issue of claim interpre-

tation does not preclude Summary Judgment because the

function of applying claims to the accused device is within

the province of the District Court. Molinaro v. Fannon/

Courier Corp., 745 F.2d 651, 654, 223 U.S.P.Q. 706,

708 (Fed. Cir. 1984). Moreover, Summary Judgment is

quite appropriate where it is clear what the truth is.

Sartor v. Arkansas Natural Gas Corp., 321 U.S. 620, 627,

64 S.Ct. 724, 728-29, 88 L.Ed. 967 (1944).

B. Framework for Patent Infringement Analysis

A proper resolution of the patent infringement issue in-

volves a two-step analysis. First and foremost, the pa-

tented invention, as it is defined by the language of the

patent’s claims, must be defined. Panduit Corp. v. Denni-

son Mfg. Co., 810 F.2d 1561, 1 U.S.P.Q. 2d 1593 (Fed.

Cir. 1987). Improper claim construction can distort the

entire infringement analysis. Moeller v. lonetics, Inc., 794

F.2d 653, 656 (Fed. Cir. 1986). Once the claims have

been properly construed, then the next step is to deter-

mine whether the accused product(s) falls within those

claims. Moleculon Research Corp. v. CBS, Inc., 793 F.2d

1261, 1269-70, 229 U.S.P.Q. 805 (Fed. Cir. 1986). This

second analytical step is a question of fact. Jd. at 1270.

With respect to the first analytical step, patent claims

need be clear enough to provide reasonable guidance to

———Ee

ee

lla

those whom the patent affects, but the patent system can-

not fairly achieve this purpose if there is an unreasonably

high standard of particularly in claim draftsmanship. If

the language of a claim is undisputed, then its scope is

construed as a matter of law. E.g., Windsurfing Interna-

tional, Inc. v. AMF, Inc., 782 F.2d 994, 228 U.S.P.Q.

562 (Fed. Cir. 1986). Words are to be given their ordi-

nary and accustomed meaning unless it appears that the

inventor intended otherwise. Universal Oil Products Co.

v. Globe Oil & Refining Co., 137 F.2d 3, 6, 54 U.S.P.Q.

504 (7th Cir. 1943), aff'd, 322 U.S. 471, 64 S.Ct. 1110,

88 L.Ed. 1399 (1944); E.g., Advanced Cardiovascular

Systems, Inc. v. Scimed Life Systems, Inc., 887 F.2d 1070,

1073-74, 12 U.S.P.Q. 2d 1539 (Fed. Cir. 1989) (diction-

ary definitions are relevant but not conclusive). However,

consistency in claim interpretation is important, and words

defined in a specification must be given the same meaning

when used in a claim. General Electric Co. v. United

States, 572 F.2d 745, 753, 198 U.S.P.Q. 65, 71 (Ct.Cl.

: 1978); Howes v. Medical Components, Inc., 814 F.2d

) 638, 644 and 647, 2 U.S.P.Q. 2d 1271 (Fed. Cir. 1987)

(it is error to construe a claim in a manner inconsistent

)

)

‘ith the specification).

With respect to the second analytical step, it is axio-

matic that because each element of a claim is material

and essential, the patentee must show the presence of

every element of the claim, or its substantial equivalent,

in the accused device. See, Panduit Corp. v. Dennison

Manufacturing Co., 774 F.2d 1082, 227 U.S.P.Q. 337

(Fed. Cir. 1985). Thus, a claim reads on a product or

process if that product or proces has every element or

limitation of the claim. Builders Concrete, Inc. v. Brem-

erton Concrete Products Co., 757 F.2d zoe, 257, 225

U.S.P.Q. 240, 241 (Fed. Cir. 1985).

12a

C. The Claims of the Patents at Issue Are Easily Con-

strued.

1. The ’458 Patent.

Sashco’s ‘458 Patent relates to a product for use in

the building industry. Claim 1 appears at columns 7 and

8 of the ’458 Patent, as follows:

Column 7

1. A product for use in the building industry,

comprising a cartridge formed as an elongated tubu-

lar housing having a longitundinal axis and sur-

rounding sidewall fabricated of a transparent mate-

rial, said housing having a hollow interior, a nozzle

member enclosing a downstream end of said car-

tridge, a substantially transparent cauking compound

contained in said cartridge, said caulking compound

adapted to be placed on a substrate, and a piston

member slideably received in the interior of said

cartridge and enclosing an upstream end thereof so

that the piston member may be pressed against the

caulking compound to force the caulking compound

out of said nozzle member as said piston member is

moved downstream through said housing to dispense

said caulking material onto said substrate whereby

the combination of said housing and said caulking

compound is substantially transparent in the trans-

verse direction so as to allow a user to see com-

pletely through the surrounding sidewall and through

the cauking compound from one side of the car-

tridge to the other

Column 8

whereby the substrate may be viewed through a

combination of the housing and the caulking mate-

rial placed therein so that the appearance of the

substrate as affected by the caulking material may

be seen prior to application of the caulking material

13a

and whereby the position of the piston member may

be viewed as the caulking material is dispensed from

the housing.

Claim 1 of this patent includes four main structural

components: (1) a cartridge formed as an elongated

tubular housing having a longitudinal axis and a surround-

ing sidewall fabricated from a transparent material; (2) a

nozzle member which encloses a downstream end of the

cartridge; (3) a substantially transparent caulking com-

pound contained in the cartridge; and (4) a piston mem-

ber which is slideably received in the interior of the

cartridge to dispense the caulking compound out of the

nozzle member.

Claim 1 further recites that the combination of the

housing and the caulking compound is substantially trans-

parent in the transverse direction with the claimed advan-

tage of this feature being that it permits a user to see

completely through the surrounding sidewall and the

caulking compound from one side of the cartridge to the

other, thereby allowing a user to both see the substrate’s

appearance before application of the caulking compound

and to view the position of the piston member during

application.

The longitudinal direction of the cartridge product

claimed in the ’458 Patent is not disputed—it is the direc-

tion of the length of the cartridge in the elongated dimen-

sion. That is, from the piston end to the nozzle end. The

transverse direction, then, is simply a direction that is

cross-wise to a longitudinal axis since “transverse” means:

“I. Lying situated, placed, etc. across; crossing from

side to side; crosswise.’ Webster's New Universal

Unabridged Dictionary, 2d Ed. (1983).

Claim 1 does not require that the transparency be

absolute since absolute transparency is only obtained in

a vacuum; rather, the combination must be substantially

transparent. Thus, proper claim construction requires that

the viewer be able to see crosswise through the substan-

tially transparent combination of the sidewall and the com-

l4a

pound from one side to the other. That is, in through one

sidewall portion of the housing, through the compound

and out through another sidewall portion of the housing.

This view must allow the viewer to see a substrate prior

to application and permit viewing of the piston member

during dispensing of the caulking compound from the

housing.

The claim requires nothing more. It does not require

that the view line be diametric, that it be perpendicular

to the sidewall or that it intersect any particular longi-

tudinal axis. This is supported by the test of the ’458

Patent as well as the prosecution history. In the file

wrapper, the relevant portion of which is attached hereto

as Exhibit H, this claim 1 (then listed as claim 22) was

amended to reflect:

That the product is substantially transparent in the

transverse direction across its longitudinal axis so as

to allow a user to completely see through the sur-

rounding sidewall and through the cauking com-

pound from one side of the cartridge to the other.

Exhibit H.

“Across”, of course, means: “l. from one side to the

other side of; athwart; as, a bridge is laid across a river.”

Webster's New Universal Unabridged Dictionary, 2d Ed.

(1983).

2. The ’014 Patent.

Sashco’s ‘014 Patent also relates to a product for the

building industry utilizing a collapsible tube as the hous-

ing. Claim 1 of this patent is found at Columns 6 and 7

and recites:

Column 6

1. A product for the building industry, compris-

ing an elongated container having a longitudinal

axis and an interior, said container including a sur-

rounding sidewall, a first closure forming a down-

—————————EEE

15a

stream end of container and a second closure form-

ing an upstream end of the container, a dispensing

nozzle extending outwardly from said container at

the downstream end thereof and having a flow

passageway in fluid communication with the interior,

and a substantially transparent caulking compound

contained in the interior of the container,

Column 7

said sidewall being fabricated out of a flexible mate-

rial whereby the container may be manually squeezed

to dispense the caulking compound as an applied

bead out of the dispening nozzle and onto a selected

substrate surface, said container having a region of

reduced thickness in a direction transverse to the

longitudinal axis longitudinally adjacent the up-

stream end of the container so that the cauking com-

pound in the region of reduced thickness has a

substantially uniform, flattened configuration and

wherein said sidewall has facing sidewall portions

On Opposite sides of said region of reduced thickness

that are fabricated of substantially transparent mate-

rial whereby the substrate surface may be viewed

through the combination of the facing sidewall por-

tions and the caulking material therebetween so that

the appearance of the substrate surface as affected by

the caulking material may be seen prior to the appli-

cation of the caulking material.

This claim, therefore, again relates to a product which

comprises a substantially transparent caulking compound

packaged in a substantially transparent elongated con-

tainer, but this container has a nozzle and a surrounding

sidewall formed out of a flexible material that may be

manually squeezed to dispense the compound onto a

substrate.

A limitation in claim 1 is that the container has a

region of reduced thickness in a direction transverse to

16a

the longitudinal axis longitudinally adjacent the upstream

end of the container so that the caulking compound in

this region of reduced thickness has a substantially, uni-

form flattened configuration. The specification and figures

of the drawings provide a single disclosed embodiment of

this container in the form of a toothpaste-type squeeze

tube, as conceded by Dap Products’ patent expert, Mr.

Killworth. Relevant portions of this deposition are at-

tached as Exhibit I, and Mr. Killworth reluctantly ac-

knowledges that the ‘014 Patent was granted based on

figures which showed a toothpaste-type tube. Exhibit I,

page 139, lines 10-24.

The text of ‘014 Patent makes it abundantly clear that

the product is preferred to be in the form of a toothpaste-

type squeeze tube. At column 4, lines 49-65 of the ‘014

Patent, Exhibit B, the construction of the toothpaste tube

is described. The preferred container is made by taking

a circular tubular member and collapsing one end into a

flat linear margin. As further explained, this formation

of the linear margin alone creates the claimed region of

reduced thickness such that the caulking compound in

that region, adjacent the upstream end, has a substantially

uniform, flattened configuration. Column 5, lines 1-6 of

the ‘014 Patent. (Exhibit B).

That claim 1 of the ‘014 Patent covers not only tooth-

paste-type squeeze tubes but also other constructions are

borne out of the legal doctrine of claim differentiation.

Claim differentiation is a claim construction rule that

requires a broader interpretation of a parent claim where

a dependent claim introduces narrower limitations. See,

Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 5

U.S.P.Q. 2d 1434 (Fed. Cir. 1988).

Claims 8 and 9 of the ‘014 Patent (Exhibit B) recite

the language that requires the container to be a standard

toothpaste-type squeeze tube. These claims state that the

second closure is formed by collapsing a second end por-

tion of said sidewall against itself along a linear region

17a

transverse to said longitudinal axis and sealing said side-

wail second end portion together to form a sealed margin

at the upstream end of the container and that the tubular

member is circular in cross-section. The doctrine of claim

differentiation requires that each claim defines a separate

invention. Jones y. Hardy, 727 F.2d 1524, 220 U.S.P.Q.

1021 (Fed. Cir. 1984). Therefore, claim 1 includes not

only toothpaste-type collapsible containers but other col-

lapsible container configurations so long as there is a

region of reduced thickness longitudinally adjacent the

upstream end so that the substrate surface may be viewed

through the combination of the facing sidewall portions

and the caulking compound in this region to allow the ap-

pearance of the substrate surface, as affected by the caulk-

ing material, to be seen prior to application of the caulk-

mg material.

D. The DAP Clear Cartridge Product Literally Infringes

the ‘458 Patent.

There is no genuine issue of fact that the Dap Clear

Cartridge Product infringes claims 1 and 2 of the ’458

Patent. For infringement to be found, of course, it is

only necessary that a single claim of the ‘458 Patent be

infringed. General Foods Corp. v. Studiegesellshaft Kohl

MbH, 972 F.2d 1272, 1282 (Fed. Cir. 1992)

DAP Products’ own patent expert admits the DAP

Clear Cartridge Product reads on every limitation in claim

1, excepting that the combination of the housing in the

compound and its product is substantially transparent in

the transverse direction. Killworth Deposition, Exhibit 1,

page 76, lines 7-11. To avoid infringement, Dap Products

urges this Court to accept that the word “transverse”

means that the line of sight must be perpendicular to the

sidewall and, thus, a user must be able to see through the

product along a line that passes through (i.e., intersects )

the central longitudinal axis of the Cartridge. Such an

improper claim construction essentially invites the Court

to distort the infringement anaysis by reading a limitation

18a

into claim 1 which is simply not present as it appears in

the patent. Nor does the prosecution history of the ’458

Patent support such a narrow intepretation. Improper

claim construction distorts Mr. Kilworth’s infringement

analysis. Moeller, supra.

The proper construction of claim 1 appears above.

Claim 2 adds to claim 1 that the caulking compound is

a. block copolymer rubber. If these claims read on the

Dap Clear Cartridge product, then there is no genuine

question of infringement. Photographs of this product

appears as Exhibit J, and this product was identified as

Exhibit DDX-4D in the discovery depositions taken in

this case. Relevant pages of the deposition of Mr. Brian

Mitchell, the head of Dap Products research and develop-

ment section, are attached hereto as Exhibit K. He un-

equivocally testified that the Dap Clear Cartridge product

was a clear sealant packaged in a clear Barex cartridge.

(Exhibit K, page 25, lines 8-14; page 28, lines 20-22);

page 29-30).

Dap Products’ own patent expert, Mr. Killworth, testi-

fied during his deposition that lines 27-41 of claim 1 of

the ‘458 Patent, read on the Dap Clear Cartridge Product.

Exhibit I, page 76, lines 7-11. Upon later questioning,

Mr. Killworth further agreed that the Claim 1 language

limitations found at column 8 lines 1-8 of the ’459 Patent

read on the Dap Clear Cartridge Product. Quoting from

the deposition:

Q_ Let me direct your attention to the Column 8,

Lines 1 through 5 which reads, “whereby the sub-

strate may be viewed through the combination of

the housing and caulking material placed therein so

that the appearance of the substrate as affected by the

caulking material may be seen prior to application of

the caulking material.” And I'll ask you, with regard

to that specific language, whether that covers the old

DAP cartridge, DDX-4D.

19a

A You mean without the language which precedes

it?

Q Yes.

A Just, can I view the substrate through that?

Maybe if I stand on my head, yeah.

Q_ Well, short of standing on your head, are you

able to view the combination of the housing and

caulking material so that the appearance of the sub-

strate may be seen prior to application if you

maneuver—or manipulate the cartridge in a certain

way?

A Yeah, you might be able to—if that’s all there

is to the question, yes, you might be able to see it

through there.

Q_ Have you ever attempted to do that?

A Yes.

Q_ And you were able to do that, weren’t you?

A Noteasily, but yes.

Q Okay. And similarly, with regard to the lan-

guage at Lines 5 through 7 of Column 8 which

reads, “whereby the position of the piston member

may be viewed as the caulking material is dispensed

from the housing,” putting aside the earlier language

of the claim, you would be able to have that view

on DDx-4D as well, wouldn’t you.

A Yes.

Dap’s patent lawyer expert, Mr. Killworth, only con-

tends that there is no infringement of claim 1 based upon

his improper claim interpretation that claim 1 requires

that the line of view through the cartridge and the trans-

parent compound be diametric through the central longi-

tudinal axis of the cartridge. To reach this conclusion,

however, Mr. Killworth relies on his own definitions of

20a

“transparent”, “transverse” and “across” which he did not

bother to even look up in a dictionary. Exhibit I, page

89, lines 15-17. Moreover, he ignores the term “substan-

tially transparent” in claim 1. He states, “Yes, I have

ignored the term substantially in the claim.” Exhibit I,

page 98, lines 10-11. Yet he has previously used this

term in patent prosecution to mean “mostly”. Exhibit I,

page 80, lines 22 through page 81, line 2.

Mr. Killworth has improperly defined “transverse” to

mean “perpendicular”. Exhibit I, page 83, lines 17-21.

However, as stated above this term actually means “lying,

situated, placed, etc., across; crossing from side-to-side;

crosswise.” Likewise, the primary definition of “across”

does not limit the term to require intersection, as Mr.

Killworth defines it. Exhibit I, page 100, lines 1-3. As

noted above, “across” simply means “from one side to the

other side of; athwart; as, a bridge is laid across a river.”

(In certain instances, of course, “across” includes “inter-

secting”).

In their respective depositions, appended hereto,

Messrs. Burch and Dr. Hauser had no difficulty in reading

printed text through the Dap Clear Cartridge product in

the transverse direction in the window area of the product.

Exhibits M and O. Mr. Summons in his Expert Report

likewise had no difficulty. Exhibit N. As noted above,

Dap’s own expert, Mr. Killworth, was able to undertake

such viewing himself.

In the photographic Exhibit J, the Court may likewise

observe that one can easily see transversely through the

Dap Clear Cartridge product in the manner called for by

Claim 1 of the ’458 Patent.

Dap concedes that its sealant compound is a block

copolymer rubber. Therefore, claim 2 is infringed. Ex-

hibit K, page 26.

Thus, there is no real, genuine issue of disputed fact on

which Dap may rely in arguing non-infringement of the

lle ee

eT eT

2la

‘458 Patent, and Sashco is entitled to summary judgment

on this issue as a matter of law as to claims 1 and 2

of the ‘458 Patent.

E. DAP’s Clear Squeeze Tube Product Literally In-

fringes the ‘014 Patent.

Here, again, Dap Products argues that it does not in-

fringe based solely on a misconstruction of the claims of

the ‘014 Patent. In his deposition, Dap Products’ patent

expert, Mr. Killworth, concedes that all of the limitations

of claim 1 of the ‘014 Patent are present in the Dap Clear

Squeeze Tube product, Exhibit I, page 135, lines 9 through

page 136, line 4, except that Mr. Killworth believes that

Claim 1 requires there to be a specially (that is, not merely

formed by collapsing a tubular squeeze tube) formed or

molded region of reduced thickness in claim 1. This, of

course, improperly construes claim 1 of the ’014 Patent

and therefore distorts his infringement analysis. DAP

Products’ endeavor to read limitations into claim 1 which

are not conveyed in its plain meaning should fail because

. a patent’s claims are not limited to specific embodiments

in the specification or illustrative examples. E.g., Laitram

Corp. v. Cambridge Wire Cloth Co.., 863 F.2d 555, 9

U.S.P.Q. 2d 1289, 1299 (Fed. Cir. 1988), cert. denied,

490 U.S. 1068 (1989). As properly construed, the old

‘014 Patent undeniably covers toothpaste-type flexible

housings. Section II.C.2. supra.

Attached hereto as Exhibit P are photographs of the

Dap Clear Squeeze Tube product in the configurations of

figures 1,2,3 and 5 of the 014 Patent. There can be no

genuine question that this product is exactly what is talked

about in the patent. Mr. Bross, an expert patent draftsman

having drawn over 2500 sheets of patent drawings (in-

cluding the formal drawings for the ‘014 Patent) testified

without qualification that these figures represent a tooth-

paste-type squeeze tube and that he would depict the Dap

22a

Clear Squeeze Tube product with drawings the same as

those in the ‘014 Patent. Exhibit L, page 63-65.

Therefore, the Court may readily appreciate from a

proper reading of the language of the claims of the ‘014

Patent that there is no genuine, real issue of material fact

that the Dap Clear Squeeze Tube product infringes at

least claims 1, and 8-15 of the ‘014 Patent.* Accord-

ingly, Sashco is entitled to judgment as a matter of law

on infringement of its ‘014 Patent.

F. DAP Products Cannot Claim for Damages Before

September 29, i991.

DAP Products acquired the general assets of Old DAP

on September 20, 1991. Prior to that time, DAP Products

was not in the business of selling caulk and sealant prod-

ucts and therefore couldot have been damaged by lost

sales of silicone products assuming arguendo that Sascho

has unfairly competed with DAP Products, a claim which

Sascho vigorously denies. DAP Products has vigorously

and successfully contested that it is an entirely differ-

ent entity that Old DAP. Exhibit G. Consistent with

DAP Products position taken in 1993, Old DAP in 1992

clearly believed that it retained, after September 20, 1991,

its claims against Sashco. Exhibit F.

In Exhibit F, Old DAP (La Mirada) unequivocally

released Sashco from any liability that occurred prior to

September 20, 1991. Exhibit F at para. 6.01. That claims

of unfair competition could have been brought in the Old

DAP Litigation is borne out by the very fact that DAP

Products has raised this in this, a substantially similar

action. Therefore, Old DAP’s release bars any claim for

damages prior to September, 1991.

Sashco is entitled to summary judgment in its favor

against any claim for damages by DAP Products prior

to September 20, 1991.

* Sashco also believes that the evidence would show infringement

of claims 2-4 and 6 of the 014 Patent.

23a

IV. Conclusion

Based on the foregoing arguments, and in light of the

exhibits submitted herewith, it is unquestionable that DAP

Products has directly infringed the 458 and ’014 patents

by its manufacture and sale of the DAP Clear Cartridge

Product and the DAP Clear Squeeze Tube Product.

The Court should not be misled by DAP’s misconstruc-

tion of the ‘458 Patent’s claim language to require that a

user must view exactly through the middle of the cartridge

in order to infringe. Nor should the Court be misguided

by DAP’s endeavor to read into claim 1 of the ‘014

Patent unnecessary limitations which are not conveyed by

its plain meaning. Such interpretations by DAP with

respect to these two patents are not supported in the rec-

ord before the Court.

Accordingly, granting of Sashco’s Motion for Partial

Summary Judgment is entirely appropriate.

Dated this 30th day of November, 1995.

Respectfully submitted,

By: Timothy J. Martin

Of Counsel: TrMoTHY J. MARTIN, Eso.

KEATING, MUETHING TrmMoTHY J. MARTIN, P.C.

& KLEKAMP 9250 W. 5th Ave., Suite 200

1800 Provident Tower Lakewood, Colorado 80226

One East Fourth Street (303) 232-3388

P.O. Box ‘ 800 Jerome C. Randolph

Cincinnati, Ohio 45202 (0021808)

(513) 579-6431 1800 Provident Tower

TIMOTHY J. MARTIN, Esg. One East Fourth Street

Timothy J. MarTIN, P.C. P.O. Box 1800

9250 W. 5th Avenue, Cincinnati, Ohio, 45202

Suite 200 (513) 579-6431

Lakewood, Colorado 80226 Attorney for Defendant,

(303) 232-3388 Sashco, Inc.

24a

CERTIFICATE OF SERVICE

I hereby certify that a copy of the foregoing DEFEND-

ANT SASHCO’S MEMORANDUM IN SUPPORT OF

ITS MOTION FOR PARTIAL SUMMARY JUDG-

MENT was served upon J. Faruki and David A. Shough,

Attorneys for Plaintiff, Faruki Gilliam & freland, 600

Courthouse Plaza, $.W., 10 North Ludlow Street, Dayton,

Ohio 45402 by ordinary U.S. mail, this 30 day of No-

vember, 1995.

/s/ Cherise L. Knox

en ee

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LN OR TRIE 8 TERRE GPE EY