Petition for Writ of Certiorari — Avery Dennison Corp. v. 3M Innovative Properties Co.

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031461 APR 19 2004

No. 03-

; OOO OF Thal OLERK

IN THE

Supreme Court of the United States

AVERY DENNISON CORPORATION,

Petitioner,

3M INNOVATIVE PROPERTIES COMPANY and

MINNESOTA MINING & MANUFACTURING COMPANY,

Respondent.

On PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES Court OF APPEALS FOR THE FEDERAL CIRCUIT

PETITION FOR A WRIT OF CERTIORARI

RoperIck G. DoRMAN

Counsel of Record

Jay R. CAMPBELL LAWRENCE M. HADLEY

RENNER Otto BolssELLE & SKLAR HENNIGAN, BENNETT & DoRMAN LLP

1621 Euclid Avenue, 1 9th Floor 601 South Figueroa Street

Cleveland, OH 44115 Suite 3300

(216) 621-1113 Los Angeles, CA 90017

(213) 694-1200

Attorneys for Petitioner

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COUNSEL PRESS

a (800) 274-3321 + (800) 359-6859

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QUESTIONS PRESENTED

1. Is an express determination by the Patent Office

during the patent examination process regarding the format

of claims used by the applicant and the scope of patentable

rights thereby created entitled to the deference normally

accorded an administrative agency’s conclusions when

federal courts construe the scope and meaning of patent claim

terms, or may that determination be wholly ignored, as the

Federal Circuit did below, whenever the patent applicant does

not affirmatively express concurrence, in writing, during the

examination process?

2. Was the Federal Circuit correct in finding that past

tense verb terms, frequently used as adjectives in product

claims, descriptive both of structure and the way in which

the structure is created, must be construed as “entirely

structural” only, without any consideration of the process

inherent in the claim language selected by the applicant, even

when such terms communicate no identifiable structure in

addition to the structure already provided by other limitations

in the claim?

LIST OF PARTIES

The parties in the court below are listed in the caption.

Pursuant to Rule 29 4 6, petitioner Avery Dennison

Corporation has no parent corporation, and no publicly held

companies own 10 percent or more of its stock. Its subsidiary

corporations, not wholly owned, are as follows:

Avery Dennison Health Management Corporation — USA

Avery Dennison-Maxell K. K. — Japan

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TABLE OF CONTENTS

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Statement Of Jurisdiction ..................00..

Statutory Provisions Involved .................

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PERS ET ET OO CTC TT Ce eTe

Denial of 3M’s Preliminary Injunction Motion ...

The District Court’s Non-Infringement Summary

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The Federal Circuit’s Ruling ................

Reasons For Granting The Petition .............

Argument

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Contents

Page

I. This Court Should Grant Certiorari To Settle

The Question Concerning The Deference

Owed To Patent Office Determinations

Regarding Claim Format And The Scope Of

Rights Thereby Created When Courts Construe

PURE GO SOND a eed cic ccanndesccas 19

Il. This Court Should Grant Review Because

The Decision Below Conflicts With

Established Precedents And Broadens Product

Claims Beyond The Plain Meaning Of

Language Used To Define Those Rights ... 25

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TABLE OF CITED AUTHORITIES

Page

Cases:

American Hoist & Derrick Co. v. Sowa & Sons, Inc.,

725 F.2d 1350 (Fed. Cir. 1984) .............. 20

Avery v. Hilder, 99 F.2d 979 (C.C.P.A. 1938) ..... 20

Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,

400 US. 141 (19GD) 6c awk ei cass ceaeieass 6

Chevron U.S.A. Inc. v. Natural Resources Defense

Council, Inc., 467 U.S. 837 (1984) ........... 24

Chicago Rawhide Mfg. Co. v. Crane Packing Co.,

523 F.2d 452 (7th Cir. 1975), cert. denied, 423 U.S.

tt . : err ee meet een |r 21

Coca-Cola Co. v. Atchison, Topeka, and Santa Fe R.R.

Co., 608 F.2d 213 (Sth Cir. 1979) ............ 22

Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448

(Pod. Cie. 1998) «occas aduvcutaniaxs 14, 16, 17, 23

Dickinson v. Zurko, 527 U.S. 150 (1999) ...... 15-16, 23

Digital Biometrics v. Identix, Inc., 149 F.3d 1335

(Pod. Cit, 1998) 2 ncn cccccssnn stad ii bigees 24

Elf Atochem North Am., Inc. v. Libbey-Owens-Ford

Co., 894 F. Supp. 844 (D. Del. 1995) ......... 17

Energy Consumers and Producers Ass'n v. DOE, 632

F.2d 129 (TECA 1980), cert. denied, 449 U.S. 832

| ener Perr re errr tc 21

Cited Authorities )

Page

General Elec. Co. v. Brenner, 407 F.2d 1258 (D.C.

CE BOGEP sca 0n0t00'es ees see 20

Good Samaritan Hospital, Corvallis v. Mathews,

ey fo > By, rere 21

Hazani v. United States Int'l Trade Comm'n, 126 F.3d

yet: Ge 8 eer oe 12, 26, 27

In re Johnson, 282 F.2d 370 (C.C.P.A. 1960) ..... 19 |

In re Myers, 410 F.2d 420 (C.C.P.A. 1969) ....... 19 ;

In re Nelson, 280 F.2d 420, (C.C.P.A. 1969) ...... 19

In re Paulsen, 30 F.3d 1475 (Fed. Cir. 1994) ..... 8

rd ;

In re Salem, 553 F.2d 676 (C.C.P.A. 1977) ....... 19

Johnson Worldwide Assocs., Inc. v. Zebco Corp.,

175 F.3d 985 (Fed. Cir. 1999)

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ROO MARE TD dee: AAAS

Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d

968 (Fed. Cir. 1999) oo... ccc cece cece ce eeee. 23 )

Lucas Aerospace, Ltd. v. Unison Indus., L.P.,

$90 F. Supp. 329 (D. Del. 1995) ............. 17

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

(Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996) ... passim

National Bus. Sys. v. Am Intl., Inc., 743 F.2d 1227

C7) GAA, SD éioik ceeecsadsdeu eee 21

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Cited Authorities

Page

North American Van Lines, Inc. v. Interstate

Commerce Comm., 666 F.2d 1087 (7th Cir.,

NORE on dc dcnsccacncitacdncctssessscéedec 21

Parker v. Motorola, Inc., 524 F.2d 518 (Sth Cir.

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Puerto Rico Aqueduct & Sewer Auth. v. United States

EPA, 35 F.3d 600 (1st Cir. 1994) ..........--- 22

Techsearch L.L.C. v. Intel Corp., 286 F.3d 1360

(Fed. Cir. 2002) ........cceeeeeseccnccccees 26

3M Innovative Properties Co. v. Avery Dennison

Corp., 350 F.3d 1365 (2003) ......-------55: l

Vanguard Prods. Co. v. Parker Hannifin Corp.,

234 F.3d 1370 (Fed. Cir. 2000) ...........--- 12, 27

Wood v. Underhill, 46 U.S. 1, 4 (1847) .......--- 19

Statutes:

$ U.S.C. § 706.2... cc ccc ccc ccsccccnccccees 1,21

5 U.S.C. § 706(2)(A) «2... eee eee eee eee eee: 21

28 U.S.C. § 1254(1) 0... cee eee cece cece ees 1

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Cited Authorities

35 U.S.C. § 271

Act of July 4, 1836, ch. 357, § 6, 5 Stat. 117

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MPEP § 2173.05(p)

MPEP § 2181 (8th ed. 2003)

Rule:

Fed. R. Civ. P. 58(1)

Other Authorities

Christian A. Chu, Empirical Analysis of the Federal

Circuit's Claim Construction Trends, 16 Berkeley

Tech. L.J. 1075 (2001)

Dunner & Kwon, Cybor Corp. v. FAS Technologies:

The Final Say on Appellate Review of Claim

Construction, 80 J.P.T.O.S. 481 (1998)

Gwendolyn Dawson, Note: Matchmaking in the Realm

of Patents: A Call for the Marriage of Patent

Theory and Claim Construction Procedure, 79 Tex.

L. Rev. 1257 (2001)

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Hulse, Cybor Corp. v. FAS Technologies, Inc.,

14 Berkeley Tech. L.J. 87 (1999)

Richard C. Komson & Jessica L. Rando, High

Reversal Rate of Markman Decisions Weakens their

Intended Value, 10 Intellectual Property Strategist

No. 3 (Dec. 23, 2003)

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Cited Authorities

Page

Kimberly A. Moore, Are District Court Judges

Equipped to Resolve Patent Cases, 12 Fed. Cir. Bar

Ry, ewes eee errer ree, 14

Craig A. Nard, A Theory of Claim Interpretation,

14 Harv. J. Law & Tec. 2 (2000) ......------: 15

Arti K. Rai, Engaging Facts and Policy: A Multi-

Institutional Approach to Patent System Reform,

103 Colum. L. Rev. 1035 (2003) .....-------- 15

Rainey & Marshall, Cybor Trouble: Who Really

Interprets a Patent Claim? 4 Intellectual Property

Strategist No. 10 (1998) ...------++eeereeees 17

John S. Wiley, Jr., Taming Patent: Six Steps for

Surviving Scary Patent Cases, 50 U.C.L.A. L. Rev. -

Plea y Dp tee ree 15

Douglas Y’Barbo, How to Fix the Federal Circuit’

Standard of Review, 5 Intellectual Property

Strategist No. 9 (June 1999) .....------+++00: 15

TABLE OF APPENDICES

Page

Appendix A — Opinion Of The United States Court

Of Appeals For The Federal Circuit Decided

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Appendix B — Order Of The United States District

Court For The District Of Minnesota Dated October

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Appendix C — Order Of The United States District

Court For The District Of Minnesota Dated

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Appendix D — Order Of The United States Court Of

Appeals For The Federal Circuit Denying Petition

For Rehearing Filed January 20, 2004 .......... 62a

Appendix E — Relevant Statutes ............... 64a

DA pT aeY

Petitioner Avery Dennison Corporation (“Avery”)

respectfully requests that a writ of certiorari issue to review

the judgment of the United States Court of Appeals for the

Federal Circuit in 3M Innovative Properties Co. v. Avery

Dennison Corp., 350 F.3d 1365 (2003).

OPINIONS BELOW

The opinion of the Federal Circuit is reported at 350

F.3d 1365, and is reprinted in the Appendix to this Petition

(“App.”) at la. The principal opinion of the United States

District Court for the District of Minnesota is reported at

2002 WL 31628395 (D. Minn. Oct. 19, 2002), and is reprinted

at App. 24a. The other relevant opinion of the District Court

is reported at 185 F. Supp. 2d 1031, and is reprinted at

App. 39a.

STATEMENT OF JURISDICTION

The decision of the Federal Circuit in this case was

entered December 2, 2003. A timely petition for panel

rehearing and, alternatively, for rehearing en banc was denied

on January 20, 2004. App. 62a. The jurisdiction of this Court

is invoked pursuant to 28 U.S.C. § 1254(1).

STATUTORY PROVISIONS INVOLVED

The provisions of 35 U.S.C. § 112, 35 U.S.C. § 271, and

5 U.S.C. § 706 are found at App. 64a.

STATEMENT OF THE CASE

This case presents two important legal questions, each

with far-reaching ramifications for federal patent policy and

litigation, and each wrongly decided by the United States

Court of Appeals for the Federal Circuit:

(1) whether federal courts, in construing the claims of

issued patents, must give deference to conclusions

reached by the Patent Office—the administrative agency

responsible for making patentability determinations—

regarding the format of claims and the scope of exclusive

= rights thereby conveyed.

(2) what is the proper way in which federal courts should

construe product claims that have process limitations—

descriptive both of structure and the way in which the

structure is created.

The split decision below would not have occurred if the body

of patent law relating to claim construction successfully

promoted the fair notice requirement of the Patent Act.

The Federal Circuit reverses nearly one-half of all claim

construction decisions presented on appeal. This reversal rate

is symptomatic of the public’s inability to predictably

determine the legal scope of patent claims. Significantly

contributing to this uncertainty is the Federal Circuit’s refusal

to give any weight to the Patent Office’s pronouncements

upon examining patents regarding the type of claim format

used by patent applicants and the scope of the claimed

invention thereby created.' According to the Federal Circuit’s

decision below, unless a patent applicant affirmatively

expresses agreement to such a Patent Office determination

1. Types of claim formats include “product-by-process” claims,

“means-plus-function” claims, etc.

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in writing during the examination process, federal courts may

freely substitute their judgment about claim format and scope

over that of the expert agency charged with the determination

of patentability. This rule not only denies the public fair notice

of a patentee’s proprietary rights, it directly contravenes the

deference Congress and this Court demand for agency

determinations.

Representatively, and in this case, the Federal Circuit’s

refusal to give deference to the Patent Office’s conclusions

about claim format and scope directly led to an absurd result.

In allowing claim 1 of the patent at issue, the Patent Office

expressly found the claim written in the “product-by-process”

format based in part on the applicants’ use of the term

“embossed” throughout the patent specification to describe

how the claimed product—a “carrier web”—is made. Yet the

Federal Circuit gave no weight whatsoever to the Patent

Office’s conclusions. The Federal Circuit not only refused

to defer to the expert agency’s determination that the

applicants had elected the “product-by-process” claim format

(which the Patent Office then used to evaluate patentability),

it found just the opposite: that the claim language used was

“entirely structural,” without any process limitation inherent

in the selected terms. The Federal Circuit’s decision in this

regard substantially expanded the scope of the exclusive

rights that both the Patent Office believed—and the public

reasonably understood—had been conferred upon the

applicants by the Patent Office.

Factual Background

This case involves U.S. Patent No. 5,897,930 (the “’930

patent), which was issued and assigned to Minnesota Mining

and Manufacturing Company (“3M”) in 1999. [A0041.]?

2. The Appendix in the Federal Circuit is cited by page number

as “AXxxx.”

The ’930 Patent describes “multiple embossed webs” useful

as liners for pressure sensitive adhesives and for other

industrial applications. [A0044 (1:4-6).] When used for

commercial graphics, pressure sensitive adhesive products

provide a substitute for painting, signs, logos, and

advertisements. [A0002.] Similar to a large bumper sticker,

the graphic film is printed on one side. On the other, a “carrier

web” or release liner is coated with an adhesive and attached

to the film. Removing the release liner exposes the adhesive

so the film can be affixed to the intended surface. [/d.]

Like wallpaper, two features can make applying graphic

films easier: (1) the ability to position the film before the

adhesive takes hold and (ii) the ability to remove trapped

air. [A0044, (1:15-30).] 3M’s 930 patent purports to solve

these problems by embossing a carrier web twice, with

two different patterns. The first embossed pattern forms

tiny depressions or dimples in the carrier web surface.

As explained in the patent, these depressions can be filled

with small particles (such as glass beads) before the adhesive

is applied. [A0045-46.] Upon removing the carrier web from

the film, the beads transfer with the adhesive to form small

protrusions, which come into contact with the application

surface before the adhesive takes hold so the film can be

positioned more easily. [Jd.] The second embossed pattern

consists of a larger pattern of “lands and ridges.” The ridges

from the second embossed pattern form channels in the

adhesive, which allows the air to escape during application.

[A0046-47. ]

When 3M applied for the patent, it conceded that the

disclosed method for achieving positionability through

embossed depressions was already known in the art; indeed,

the same 3M inventors had patented the method. [A0044.]

Likewise, embossing or roughening surfaces to create air

egress channels was already known in the art as well—Avery

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had disclosed this feature in a patent 15 years earlier.

[A1001.] The Examiner also cited art showing embossed

patterns, made simultaneously, but occupying different levels.

[A0102-103.] Although 3M’s disclosed methods for solving

both the positionability and air egress problems were already

known, as were simultaneously-made embossments of

different patterns at different levels, 3M argued that it still

disclosed patentable subject matter. Specifically, 3M asserted

to the Patent Office that no one had earlier divined how to

emboss the same material twice, where the first embossed

pattern “survives” a subsequent embossing to form two

distinct patterns of “differing depths of embossing.”

[A0112.]* To further clarify the purported invention as a

sequentially embossed carrier web and to overcome a

vagueness objection for the product claim (claim 1), 3M

amended the product claim 1 by incorporating terms from a

parallel method claim (claim 8), which recited the two

separate-embossing steps. [A0111.]

After 3M distinguished its invention as two separately

embossed patterns from the prior art, which described two

different embossed patterns made at the same time, the

Examiner expressly concluded that 3M had drafted its

3. Oddly, the Federal Circuit, in overruling the District Court’s

finding that the ’930 patent is limited to sequential embossing of

two different patterns, dismissed these admissions by 3M as not

disavowing claim scope because 3M’s statements were “broader than

necessary to distinguish the prior art... .” App. 15a. But 3M could

not have distinguished the prior art without clarifying that its

invention was limited to sequentially embossed patterns where one

pattern survives a subsequently embossed pattern: The Examiner had

rejected the claims based on known art showing not only a single

embossed pattern, but different embossed patterns—made

simultaneously—occupying different levels of depth. Thus, merely

saying that its invention encompassed two patterns regardless of the

number of steps would not have distinguished the prior art.

product claims in the “product-by-process” format.* [A0121.]

Nonetheless, the Examiner again rejected the claims, citing

at least four prior art references showing two separately-

made embossed patterns on the same surface. [A0121-0124.]

In response, 3M did not challenge the Patent Office’s

conclusions about the “product-by-process” format.

It remained silent. 3M thereafter amended all claims by

adding a specific height limitation for the ridges formed by

the second embossed pattern. [A0128-0130.] With this

amendment, the Patent Office allowed the claims. [A0133.]

Well before 3M’s 7930 patent issued, Avery had begun

work on its own graphic film with a liner having

positionability and air egress features. Not surprisingly,

considering what was already known in the art, Avery had

experimented with double embossed liners. Avery had also

tested ways of achieving positionability through ways other

than embossing, such as printing and impressing small,

hardened, polyurethane ink “dots” into the top layer of a liner

made from polyethylene. When separating the liner from the

film, Avery found that the ink would separate from the

polyethylene, and transfer onto the adhesive surface as non-

tacky bumps to improve positionability. [A2241-42.] Avery

further determined that the liner with embedded ink could

be embossed to create air egress channels, and that the

embossing and ink embedding could occur simultaneously.

After demonstrating positionability and air egress from a

printed and single embossed liner, Avery sought patent

protection for its new invention.

When 3M’s ’930 patent issued, Avery’s engineers studied

the ’930 patent and its file history, and consulted legal counsel

about what products it could bring to market while respecting

4. A “product-by-process” claim “is one in which the product

is defined at least in part in terms of the method or process by which

it is made.” See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489

U.S. 141, 159 (1989).

3M’s patent rights. Avery took 3M at its word. 3M’s repeated

use of the word “embossed” in the product claims, 3M’s

repeated use of the word “embossed” in its ordinary and

customary usage throughout the ’930 patent specification,

3M’s express definition of embossed in the specification,

which, although ambiguous, was reasonably susceptible to

the ordinary and accustomed meaning of the term, and the

Examiner’s express statements that the product claims were

drafted in “product-by-process” format requiring two,

separately-made embossed patterns, caused Avery to

reasonably conclude its independently, developed single

embossed film did not infringe the ’930 patent. Accordingly,

Avery began selling the printed and embossed film as

“EZ Film.” [/d.]

On September 27, 2001, 3M sued Avery for infringement

of its 930 patent in the United States District Court for the

District of Minnesota based on the sale of Avery’s competing

EZ Film. [A0053.] The case was assigned to the Hon. David

S. Doty.

Denial of 3M’s Preliminary Injunction Motion

On October 15, 2001, 3M moved for a preliminary

injunction to remove Avery’s EZ Film from the market,

leaving 3M with a complete monopoly on positionable/air

egress graphic films. [A0436.] In seeking a preliminary

injunction (which 3M based solely on product claim 1 of the

’930 patent), 3M recited the law that “‘terms in the claim are

to be given their ordinary and accustomed meaning,” absent

some indication in the patent to the contrary.” [A0452, citing

Johnson Worldwide Assocs., Inc. V. Zebco Corp., 175 F.3d

985, 989 (Fed. Cir. 1999).] 3M did not say that the 930 patent

contained any indication of a meaning for claim terms such

as “embossed” and “multiple embossed” other than their

“ordinary and accustomed” meaning. To the contrary, 3M

argued that the District Court should apply the “plain

meaning” of the claim terms used, and that its motion

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presented “no difficult issues of claim construction. .. .’

[A0452.]°

Finding that 3M had no likelihood of success on the

merits, the District Court denied 3M’s motion for a

preliminary injunction. [A0001-0023.] In making that

finding, the District Court construed the relevant patent

claims. It first examined the phrase “multiple embossed

pattern.” Consistent with the Patent Office’s conclusion that

3M had elected the “product-by-process” format for claim

1, the claim language itself, the specification’s definitions,

as well as nearly a dozen statements from the specification

and file history, Judge Doty concluded that “multiple

embossed pattern” means sequential embossing patterns—

i.e., “a second embossed pattern following a first embossed

pattern.” [A0010-14.] Next, Judge Doty considered the

phrase “first embossed pattern . . . of depressions” from

claim 1. Looking at the definition of “embossed” contained

in the specification, and accepting 3M’s concession that the

ordinary and accustomed meaning applied, Judge Doty

adopted a plain, process-oriented construction of the word

“embossed,” consistent with the product-by-process format

of claim 1—“a topography created on material by impressing

a corresponding inverse topography on its surface.” [A0015-

5. The specification for the °930 patent contains definitions for

“embossed,” “pattern,” and “multiple embossed.” But just because a

patent includes definitions for terms does not mean, ipso facto, that

the patentee intended definitions different from the ordinary and

accustomed meaning. In fact, the Federal Circuit has held that

definitions differing from the ordinary and accustomed meaning must

clearly be set forth. Jn re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)

(“Although an inventor is indeed free to define the specific terms used

to describe his or her invention, this must be done with reasonable clarity,

deliberateness, and precision.”). Nonetheless, the Federal Circuit’s

decision below not only assumes, without any analysis, that the

definitions provided in the patent specification differ from the ordinary

and accustomed meaning, but overlooks 3M’s judicial admissions that

the claim terms carry no specialized meaning. App. 11a.

16.] Based on these constructions, Judge Doty concluded that

3M had no likelihood of proving infringement against Avery’s

EZ Film: Unlike 3M’s claimed web with two, sequentially-

embossed patterns, Avery’s accused EZ Film liner contains

only one embossed pattern on a composite top layer

consisting of polyethylene and embedded ink. [A0018.]

The District Court’s Non-Infringement Summary

Judgment Ruling

On October 19, 2002, Judge Doty granted Avery’s motion

| for summary judgment of non-infringement, finding that Avery’s

: EZ Film liner did not infringe 3M’s 7930 patent, as a matter of

: law, either literally or under the doctrine of equivalents. [A0025-

0039.] In considering infringement, Judge Doty applied the

constructions of “multiple embossed pattern” and “embossed”

from the order denying a preliminary injunction. [A0033.]

Applying these constructions, Judge Doty rejected 3M’s

imaginative, lawyer-created argument that embedding polymer

ink into the top polymer layer of a multilayered liner—forming

a flush copolymer top surface—created an “embossed pattern

_.. of depressions” in the liner. {A0033-34.] Likewise, Judge

Doty rejected 3M’s equally-creative argument that the

polyurethane ink itself—pre-printed on the liner surface—acts

as an “embossing tool” when embedded into the upper

polyethylene layer of the liner. [A0034-0035.] Among other

things, Judge Doty found that embedded ink lacked any

characteristic of an embossing tool, and that a composite liner

top-layer, consisting of polyethylene encasing polyurethane ink

in a flush surface, hardly resembled an “embossed” pattern of

“depressions.” [/d.] Because Avery’s EZ Film liner utterly lacked

one of the key elements recited in each claim—namely, the “first

embossed pattern” of “depressions”—Judge Doty found no

possible basis for infringement under the doctrine of equivalents.

[A0035-0038.]

Following the grant of summary judgment, the parties

stipulated to the resolution of other matters, and on December

6, 2002, the District Court entered judgment against 3M

pursuant to Fed. R. Civ. P. 58(1).

The Federal Circuit’s Ruling

On appeal, 3M attacked Judge Doty’s claim construction

rulings, which had dated from the denial of a preliminary

injunction. The Federal Circuit, m a 2-1 panel decision,

agreed that Judge Doty erred in construing the claims,

reversed the judgment and remanded for an infringement

determination under the Federal Circuit’s new claim

constructions. App. 18a. On January 20, 2004, the Federal

Circuit rejected Avery’s timely petition for Panel Rehearing

and, Alternatively, for Rehearing En Banc. App. 62a.

First, the Majority disagreed that the phrase “multiple

embossed pattern” as used in claim 1 required that the

patterns be created sequentially, or that claim 1 contained a

temporal limitation regarding the creation of the two

embossed patterns in any respect. App. 12a. Instead, the

Majority construed claim 1 as “entirely structural,” finding

no limitation on the order in which the two patterns are

created on the claimed web. App. 16a. In reaching this

decision, the Majority gave no weight whatsoever to the

Patent Office’s conclusion that the applicant had drafted

claim 1 using the “product-by-process” format. App. 15a-

16a. Further, the Majority found no acquiescence by the

applicant’s silence in response to the Examiner’s stated

conclusion that product claim 1 was written in “product-by-

process” format:

In this context, the examiner’s statement does not

constitute a clear and unmistakable surrender of

claim scope. An applicant’s silence in response

to an examiner’s characterization of a claim does

not reflect the applicant’s clear and unmistakable

acquiescence to that characterization if the claim

is eventually allowed on grounds unrelated to the

examiner’s unrebutted characterization.

Id. (citations omitted).° Under this rule, what the Patent

Office concludes and publishes to the world in the file history

about claim format as a basis for granting exclusive rights in

a patent make no difference: a patentee can later assert, and

a court can grant, broader rights so long as the patent applicant

has not affirmatively “acquiesced” in the Patent Office’s

determination.

Second, the Majority determined that J udge Doty erred

by defining “embossed” in a manner that imposed a “process”

requirement into the term. App. 16a-17a. According to the

Majority, the inventors defined “embossed” in the

specification in “entirely structural” terms. Jd. Arguably, 3M’s

patent rights could extend to any web containing a “three-

dimensional” surface “topography”—even if the web had

never been embossed.’ To support the conclusion that claim

6. 3M did not merely remain “silent” in response to the Patent

Office’s conclusions about claim format. After amending its claims

in response to prior art rejections to make the process features of its

product claims unambiguous, 3M did not dispute the Examiner's

subsequent confirmation of the “product-by-process” format. Rather,

3M tacitly accepted the Patent Office’s determination of claim format

and, to overcome additional prior art, added the height limitation for

the ridges formed by the second embossed pattern. [A0128-131.]

7. The Majority explained that “[t]he patent does not limit

how the embossed pattern, as defined in the specification, is created.”

App. 17a (emphasis in original). While the patent allows for

embossing the web in any manner known in the art, the majority’s

construction takes matters a step further: If “embossed” means only

a structural topography, without any inherent process limitation

requiring the impression of one surface upon another (as the District

(Cont'd)

1 must be read as structural only, without any consideration

of how the topography comes to exist, the Majority not only

rejected the Patent Office’s determination of product-by-

process claim format, but ruled that product claims must be

construed by “default” in their structural sense, without any

consideration of process-like language:

[ W Jords of limitation that can connote with equal :

force a structural characteristic of the product or

a process of manufacture are commonly and by

default interpreted in their structural senses, unless

the patentee has demonstrated otherwise.

App. lla (citing Hazani v. United States Int'l Trade Comm'n,

126 F.3d 1473, 1479 (Fed. Cir. 1997) and Vanguard Prods.

Co. v. Parker Hannifin Corp., 234 F.3d 1370, 1372 (Fed.

Cir. 2000)).

poe ey ee Pe eee ee ee

Circuit Judge Michel dissented. According to the Dissent,

claim 1 cannot be viewed as a “pure product” claim. Rather,

the claim language, as understood by both the Patent Office

and the District Court, and as any reasonable competitor

would understand, must be read to include a process

limitation:

I disagree with the majority’s construction

of claim 1 as a pure product claim. The majority’s

construction runs counter to the definition of claim

terms chosen by the patentee as well as the

analyses of the district court and the patent

examiner, both of whom expressly interpreted

claim 1 as a product-by-process claim. The

(Cont'd)

Court required in its construction), the patent would not only permit

any embossing method, but would not require embossing in the first

place (so long as a “topography” exists)—a remarkable result for a

patent entitled “Multiple Embossed Webs.”

majority incorrectly reads the definition of

“multiple embossed” as purely structural, when

in my view it requires process. Moreover, the

majority’s claim construction may weaken the

notice function of this claim: I believe a

reasonable competitor would read claim | as a

product claim with a process limitation.

App. 19a.

The Dissent relied not only on the language of claim 1

and the Patent Office’s conclusions, but on the definitions

recited by the patentee. Specifically, the Dissent pointed out

that both the definition of “embossed” and “muitiple

embossed” contained in the written description used verb

clauses indicative of a process, which must be “recognized

as meaningful.” App. 21a. Taking both definitions together,

the Dissent concluded that the process inherent in these terms

(both incorporated as limitations in claim 1) requires “the

superimposition of two or more topographies—each on a

tool—onto the web.” App 22a.* Finally, the Dissent found

8. Even though the Dissent recognized that claim 1 calls for

the superimposition of at least two different topographies—each on

a tool—onto the web, the Dissent disagreed that the tools need be

applied sequentially. Yet the Dissent failed to explain how two

different topographies, on two separate tools, could be applied in a

way that meets the remaining requirements of claim 1 (i.e., the first

embossed pattern be located “in” the second embossed pattern) unless

the tools were applied to the web sequentially. As a practical matter,

only a skilled illusionist could, using two tools with different

topographies, place one embossed pattern “in” a second embossed

pattern through simultaneous application of the tools. Apparently,

the Dissent overlooked the requirement that the first embossed pattern

be located “in” the second embossed pattern. Having found that claim

1 requires the process of embossing two or more topographies—each

on a tool—onto the web, the conclusion that the embossing takes

place in sequence must necessarily follow.

that Avery’s EZ Film liner cannot infringe because the pattern

on its liner results from only one embossing tool. App. 23a.

After finding that the term “embossed” does not describe

how the web is made (and may not even mean embossed),

the Majority remanded to the district court “for further

proceedings not inconsistent” with the decision. Upon

remand, Judge Doty inexplicably recused himself from

further proceedings in this case.

REASONS FOR GRANTING THE PETITION

When this Court declared in Markman y. Westview

Instruments, Inc., 517 U.S. 370 (1996), that patent claim

construction is to be decided as a matter of law by courts,

not juries, vast improvements in patent litigation were

envisioned: early certainty, reduced litigation costs, and

enhanced judicial efficiency. Those results have not been

achieved. To the contrary, the Federal Circuit—the final

arbiter of what patent claims mean in most cases—

reverses nearly one-half of all claim construction decisions

presented for appellate review.’ Because claim construction

often carries dispositive results in patent litigation, this

astonishingly high reversal rate has led to a breakdown in

the orderly resolution of patent cases. More distressingly,

the uncertainty of claim language meaning has led to the

inability of law abiding corporations to accurately forecast

9. Between April 1995 and November 1997, immediately

following the Markman decision, the claim construction reversal rate

hovered around forty percent. See Cybor Corp. v. FAS Techs., Inc.,

138 F.3d 1448, 1476 n.4 (Fed. Cir. 1998) (Rader, J., dissenting).

A study of Federal Circuit cases between April 1996 and January

2001 reveals that the Federal Circuit rejects at least one of a district

court’s claim constructions in 33% of cases, and of those cases, the

Federal Circuit reverses or remands 81% of the district court’s

decisions. Kimberly A. Moore, Are District Court Judges Equipped

to Resolve Patent Cases, 12 Fed. Cir. Bar J. 1, 10-11 (2002).

and to predictably determine when a new product will and

will not infringe the patent of another. The issues presented

for review in this case can materially promote the fair notice

requirements of the Patent Act, codified by Congress in

35 U.S.C. § 112(2), and for this reason the petition should

be granted.'°

Although Markman removed the construction of patent

terms from the province of jury determination by declaring

claim construction a question of law for the court and not a

jury, Markman did not reach the important issue of the

deference federal courts owe to factual and mixed fact and

law findings by the Patent Office during the patent

examination process after a patent issues. When the Patent

Office declines to approve a patent application, thereby

making determinations of fact and mixed fact and law

concerning patentability, this Court has held that section 706

of the Administrative Procedures Act (“APA”) requires a

reviewing court to apply a deferential standard of review to

that expert agency’s conclusions. Dickinson v. Zurko, 527

10. The implications of the claim construction reversal rate and

the corresponding lack of fair notice that the public receives of

proprietary patent rights has been examined by dozens of legal

scholars and commentators, who have proposed a variety of solutions. -

See Arti K. Rai, Engaging Facts and Policy: A Multi-Institutional

Approach to Patent System Reform, 103 Colum. L. Rev..1035 (2003);

Craig A. Nard, A Theory of Claim Interpretation, 14 Harv. J. Law &

Tec. 2 (2000); Christian A. Chu, Empirical Analysis of the Federal

Circuit's Claim Construction Trends, 16 Berkeley Tech. L.J. 1075

(2001); John S. Wiley, Jr., Taming Patent: Six Steps for Surviving

Scary Patent Cases, 50 U.C.L.A. L. Rev. 1413 (2003); Gwendolyn

Dawson, Note: Matchmaking in the Realm of Patents: A Call for the

Marriage of Patent Theory and Claim Construction Procedure, 79

Tex. L. Rev. 1257 (2001); Richard C. Komson & Jessica L. Rando,

High Reversal Rate of Markman Decisions Weakens their Intended

Value, 10 Intellectual Property Strategist No. 3, at 1, (Dec. 23, 2003);

Douglas Y’Barbo, How fo Fix the Federal Circuit's Standard of

Review, 5 Intellectual Property Strategist No. 9 at 7 (June 1999).

U.S. 150 (1999). This Court has not yet addressed whether

the Patent Office’s determinations regarding the claiming

format used by an applicant, which thereby dictate the scope

of the patent rights created, require a reviewing court to apply

a deferential standard of review to that expert agency’s

conclusions."

In patent claim construction appeals, the deference given

to prior factual findings has not been addressed by this Court

and, with respect to district court findings, has been the

subject of spirited debate among the Federal Circuit Judges.

Markman did not address the weight that the Federal Circuit

should give to factual findings—whether by lower courts or

administrative agencies—when performing the judicial task

of construing claims. Subsequent to Markman, the Federal

Circuit, in a sharply divided en banc decision, held that

district court resolution of matters extrinsic to the patent

claims when interpreting claim language are entitled to no

deference or weight. See Cybor Corp. v. FAS Technologies,

Inc., 138 F.3d 1448 (Fed. Cir. 1998)."

11. Adetermination by the Patent Office that an applicant used

a particular claiming format when seeking a patent necessarily

involves factual as well as mixed fact and law determinations.

For example, when reviewing claims expressed as a means for

performing a certain function, the Examiner must factually determine

whether certain words are used and whether the remainder of the

claim contains sufficient structure for achieving the specified

function. Manual of Examining Procedure (“MPEP”), § 2181

(8th ed. 2003) (setting forth a three-prong factual test for determining

whether a claim limitation will be interpreted to invoke 35 U.S.C.

§ 112, 4 6). Likewise, whether a claim is drafted in “product-by-

process” format involves fact and mixed fact and law determinations.

See MPEP § 2173.05(p).

12. The Cybor decision itself has been the subject of intense

debate among not only the judges of the Federal Circuit, but lower

courts and the Patent Bar as well. See Cybor, 138 F.3d at 1463, 1473,

(Cont'd)

The Federal Circuit’s decision below takes the Cybor

doctrine one step further: The Federal Circuit will not only

ignore a district court’s findings on disputed evidence in

construing claims, but will give no deference to the Patent

Office’s determinations regarding claim format absent an

affirmative statement by the applicant reflecting “clear

and unmistakable acquiescence” to the Patent Office’s

determinations. App. 16a. Requiring a patent applicant to

acquiesce to the Patent Office’s determinations before a court

will show deference to that expert agency’s conclusions turns

the Administrative Procedures Act on its head. Instead of

deferring to the expert agency charged with examining

patents, courts are instructed to ignore the agency and defer

only to the applicants upon acquiescence to the Patent

Office’s conclusions."? In the end, when the public cannot

rely on the Patent Office’s determinations regarding the

proprietary rights granted by the government in an issued

patent, the public loses.

(Cont'd)

1478 (opinions of Judges Mayer, Newman, and Rader); Lucas

Aerospace, Ltd. v. Unison Indus., L.P., 890 F. Supp. 329, 333 n.7

(D. Del. 1995) (criticizing the “no deference” rule); Elf Atochem

North Am., Inc. v. Libbey-Owens-Ford Co., 894 F. Supp. 844, 857

(D. Del. 1995) (same); Dunner & Kwon, Cybor Corp. v. FAS

Technologies: The Final Say on Appellate Review of Claim

Construction, 80 J.P.T.O.S. 481 (1998); Rainey & Marshall, Cybor

Trouble: Who Really Interprets a Patent Claim? 4 Intellectual

Property Strategist No. 10 at 6 (1998); Hulse, Cybor Corp. v. FAS

Technologies, Inc., 14 Berkeley Tech. L.J. 87 (1999).

13. Ofcourse patent applicants and their attorneys have enough

common sense to remain silent in response to the Patent Office’s

conclusions about claim format and scope, especially when an

amendment to proposed claim language can overcome a rejection.

Under the Majority’s rule, applicants seldom, if ever, will “clearly

and unmistakably” acquiesce in the Patent Office’s conclusions

because they will be free to argue for broader (or narrower) scope

and differing formats during litigation by remaining silent.

Granting review to address this important issue is

particularly appropriate here. Not only did the Federal

Circuit’s lack of deference to the Patent Office’s findings

regarding claim format lead to an incorrect result in a 2-1

decision, it resulted in a new rule of claim construction that,

if followed, would result in even less predictability in

determining the scope of patent rights. Under the new rule,

terms in product claims descriptive of both process and

-structure—often verbs used in past tense like “embossed” —

must be construed by “default” solely in their structural sense

without any consideration of the inherent process. App. 11a.

But where as here, process-like terms communicate no

identifiable structure in addition to the structure already

provided by other limitations in the claim, the process-like

terms becomes superfluous unless they are given meaning

in a process sense. Review should be granted to further

promote fair notice in our patent system: Where applicants

have chosen to draft product claims using process

limitations—descriptive both of structure and the way in

which the structure is achieved—those claims should not be

construed in a way that reads the process limitations out of

the claims.

SO ee Oe

eee

ARGUMENT

I. This Court Should Grant Certiorari To Settle The

Question Concerning The Deference Owed To Patent

Office Determinations Regarding Claim Format And

The Scope Of Rights Thereby Created When Courts

Construe Patent Claim Terms

By design, patents do not include all the information that

is relevant to the described invention, since patents speak to

those skilled in the art to whom the patent is directed, not to

laymen.'* Facts known to such skilled persons that are not

set forth in the intrinsic patent documents are presumed to

be known by persons reading and interpreting the subject

patent. Under 35 U.S.C. § 112, patent specifications must be

written to enable one skilled in the art to understand the

claimed invention enough to practice it without undue

experimentation.'* This rule reflects the technological

complexity of patents. It would be impracticable to require

14. In re Nelson, 280 F.2d 420, 425 (C.C.P.A. 1969)

(“[D]escriptions in patents are not addressed to public generally, to

lawyers or to judges, but as § 112 says, to those skilled in art to

which the invention pertains or with which it is most nearly

connected.”); Jn re Myers, 410 F.2d 420, 425 (C.C.P.A. 1969) (“[T]he

claims of a patent are to be construed in light of the specification

and the understanding thereof by those skilled in that art to whom

they are addressed.”); In re Salem, 553 F.2d 676, 683 (C.C.P.A. 1977)

(courts “must give due consideration to the interpretation that one of

ordinary skill in the art would give the terminology in question”).

15. Wood v. Underhill, 46 U.S. 1, 4 (1847) (specification had

to be in such full, clear, and exact terms as to enable any one skilled

in art to which it appertained to compound and use it without making

any experiments of his own); Jn re Johnson, 282 F.2d 370, 372

(C.C.P.A. 1960) (reference in first paragraph of 35 U.S.C. § 112 to

enable any person skilled in the art” requires that a court read and

interpret specific disclosures of utility against background of

knowledge possessed by such person).

applicants to teach all knowledge necessary to make a patent

comprehensible to a lay person. Because the law recognizes

that patents are directed toward a particular audience (those

skilled in the relevant art), the patent record need only reflect

what individuals within that audience would not know."®

Analyzing patents in the context of the relevant art begins

with the Patent Office’s examination of the patent application.

In 1836, Congress created the Patent Office and established

a system of examining patent applications for compliance

with novelty over the prior art and of clear claiming so the

public could understand the scope of a patentee’s proprietary

rights.'’ When an inventor submits a patent application, the

Patent Office assigns it to an examiner with technical training

in the pertinent technology as well as training in the

mechanics of claim format and drafting.'* Based on this

16. Avery v. Hilder, 99 F.2d 979 (C.C.P.A. 1938) (applicant did

not “need to describe and set out that which was common and well

known even though it be part of the machine which he has improved”);

General Elec. Co. v. Brenner, 407 F.2d 1258 (D.C. Cir. 1968) (“Terms

need only be reasonable with respect to art involved; they need not inform

laymen or disclose what the skilled already possesses.”).

17. Act of July 4, 1836, ch. 357, § 6, 5 Stat. 117.

18. American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d

1350, 1359 (Fed. Cir. 1984):

[The Patent Office is a] qualified government agency

presumed to have properly done its job, which includes

one or more examiners who are assumed to have some

expertise in interpreting the references and to be familiar

from their work with the level of skill in the art and whose

duty it is to issue only valid patents.

Markman v. Westview Instruments, Inc., 52 F.3d 967, 986 (Fed. Cir.

1995), aff'd, 517 U.S. 370 (1996) (“Patent applications, unlike contracts,

are reviewed by patent examiners, quasi-judicial officials trained in the

es |

_—

technical and legal training, patent examiners are uniquely

qualified to analyze claimed inventions in the context of a

person skilled in the art, and to grant claims properly defining

for the public the scope of exclusive rights. For this reason,

reviewing courts have “generally defer[ed] to the technical

expertise possessed by the Patent Office in originally issuing

a patent.” National Bus. Sys. v. Am Intl., Inc., 743 F.2d 1227,

1232 (7th Cir., 1984).'°

Judicial deference to Patent Office determinations is

grounded not only in the unique skill that examiners possess,

but in the dictates of the Administrative Procedures Act

(“APA”) as well. Under section 706 of the APA, reviewing

courts may only set aside “agency action, findings, and

conclusions found to be ... arbitrary, capricious, and

abuse of discretion, or otherwise not in accordance with

law....” 5 U.S.C. § 706(2)(A). This deferential standard

mandates that reviewing courts respect the expertise of the

agency charged with substantive administration of laws.”°

19. See also Chicago Rawhide Mfg. Co. v. Crane Packing Co.,

523 F.2d 452, 458 (7th Cir. 1975), cert. denied, 423 U.S. 1091 (1976)

(“There is an additional aspect to the presumption which relates to

the deference due to the technical expertise possessed by the Patent

Office and not generally possessed by federal judges”); Parker v.

Motorola, Inc., 524 F.2d 518, 521 (Sth Cir. 1975).

20. Good Samaritan Hospital, Corvallis v. Mathews, 609 F.2d

949, 951 (9th Cir. 1979) (“The standard of review in 5 U.S.C. § 706

frees the reviewing court of the time consuming and difficult task of

weighing evidence, gives proper respect to the expertise of the

administrative tribunal and helps promote uniform application of the

statute.”); Energy Consumers and Producers Ass'n v. DOE, 632 F.2d

129, 143 (TECA 1980), cert. denied, 449 U.S. 832 (1980) (“In the

absence of exceptional adverse circumstances this court should defer

to a reasonable exercise expertise expressed in an interpretation rule

by an administrative agency.”); North American Van Lines, Inc. v.

Interstate Commerce Comm., 666 F.2d 1087, 1093 (7th Cir., 1981)

(“Under this standard, a court must defer to agency expertise and

may not substitute its judgment for that of the administrative agency.).

Deferential review extends to both factual findings and

findings on mixed questions of fact and law.”!

Here, the District Court did just what Markman and the

APA demands: It examined the claims, the written

description, and the file history. In examining the file history,

the District Court deferred to the Patent Office’s conclusion

that the applicants elected to define their invention in terms

of a product produced by a particular process—namely,

embossing multiple patterns on a web. [A0009, 11.] Yet the

Federal Circuit failed to give the slightest weight to the Patent

Office’s conclusions. Instead, the Federal Circuit considered

only whether the applicants had “acquiesced” in the Patent

Office’s conclusions, without independently considering

whether the Patent Office reached its conclusions in an

arbitrary or capricious manner.

This lack of deference defeats the very purpose of

entrusting claim construction to judges rather than juries—

predictability and public certainty:

[W]e see the importance of uniformity in the

treatment of a given patent as an independent

reason to allocate all issues of construction to the

court. [T]he limits of a patent must be known for

the protection of the patentee, the encouragement

21. Coca-Cola Co. v. Atchison, Topeka, and Santa Fe R.R. Co.,

608 F.2d 213, 218 (Sth Cir. 1979) (“Factual findings and findings on

mixed questions of fact and law . . . are subject to a limited standard

of judicial review and are set aside only if arbitrary, capricious, and

abuse of discretion or otherwise not in accordance with law... .”)

(internal quotes omitted); Puerto Rico Aqueduct & Sewer Auth. v.

United States EPA, 35 F.3d 600, 604 (1st Cir. 1994) (“[A]n agency

deserves an extra measure of deference with regard to factual

questions involving scientific matters in its area of expertise... .

Mixed questions of law and fact, at least to the extent that they are

fact-dominated, fall under this rubric.”) (citations omitted).

of the inventive genius of others and the assurance

that the subject of the patent will be dedicated

ultimately to the public. Otherwise, a zone of

uncertainty which enterprise and experimentation

may enter only at the risk of infringement claims

would discourage invention only a little less than

unequivocal foreclosure of the field, and the

public [would] be deprived of rights supposed to

belong to it, without being clearly told what it is

that limits these rights.

Markman, 517 U.S. at 390 (internal citations and quotations

omitted). When the public cannot rely on the Patent Office’s

statements regarding claim format and scope in the public

documents made available for that very purpose, allocating

claim construction to courts merely shifts the “zone of

uncertainty” from one entity—juries—to another—the courts.

The only justification for not deferring to the Patent

Office’s conclusions is the “de novo” review standard for

claim construction. Cybor, 138 F.3d at 1448; Karlin Tech.,

Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 970-71

(Fed. Cir. 1999). But “de novo” review of claim construction

does not mean that the Patent Office’s conclusions—

particularly those expressed in the intrinsic patent documents

and inherently requiring factual determinations—must be

discarded. Indeed, this Court has held just the opposite for

factual determinations made by the Patent Office when it

rejects patent applications. In such cases, a reviewing court

must defer to the Patent Office’s conclusions unless they are

found to be arbitrary and capricious. Zurko, 527 U.S. at 163-

64. A contrary rule for Patent Office conclusions when it

approves patents not only undermines the fair notice function

of patents demanded in 35 U.S.C. § 112 and produces

bad decisions, but will increase litigation, discourage

settlement, and promote revisionism in defining a patent’s

scope. See Cybor, 138 F.3d at 1476 (Rader, J. dissenting).

Finally, other areas of the law support judicial deference

to Patent Office determinations regarding claim format and

resulting scope of patentable rights when construing claims.

For example, patent claim construction has been analogized

as a close cousin to statutory interpretation.” In reviewing

an agency’s statutory construction, this Court has held that

administrative deference applies, and has established a two

step analysis for determining the appropriate level of

deference:

When a court reviews an agency’s construction

of the statute which it administers, it is confronted

with two questions. First, always, is the question

whether Congress has directly spoken to the

precise question at issue. If the intent of Congress

is Clear, that is the end of the matter; for the court,

as well as the agency, must give effect to the

unambiguously expressed intent of Congress.

If, however, the court determines Congress has

not directly addressed the precise question at

issue, the court does not simply impose its own

construction on the statute, as would be necessary

in the absence of an administrative interpretation.

Rather, if the statute is silent or ambiguous with

respect to the specific issue, the question for the

court is whether the agency’s answer is based on

a permissible construction of the statute.

Chevron U.S.A. Inc. v. Natural Resources Defense Council,

Inc., 467 U.S. 837, 842-43 (1984) (footnotes omitted).

22. Digital Biometrics v. Identix, Inc., 149 F.3d 1335, 1344 (Fed.

Cir., 1998) (“[T]he interpretation of claims, as with the interpretation

of statutes and contracts, turns on the actual wording of the

claim. ...”); Markman, 52 F.3d at 987 (“The more appropriate

analogy for interpreting patent claims is the statutory interpretation

analogy.”).

m 25

The Federal Circuit’s failure to give the weight mandated

for statutory construction to at least the Patent Office’s

conclusions about claim format and scope of rights thereby

created in the patents it has issued deprives the public of the

same rights without telling the public “what is it that limits

these rights.” Markman, 517 U.S. at 390. It also contributes

to the unacceptably high reversal rate of claim construction

decisions by district courts. Deference to Patent Office

determinations in construing claims is important in every

patent case, and the Federal Circuit has gone very wrong.

This Court’s review is warranted.

II. This Court Should Grant Review Because

The Decision Below Conflicts With Established

Precedents And Broadens Product Claims Beyond

The Plain Meaning Of Language Used To Define

Those Rights

The decision below holds that terms connoting both a

structural characteristic and a process of manufacture must

be interpreted “by default” in their “structural sense, unless

the patentee has demonstrated otherwise.” App. 11a. But even

construed as “structural,” process limitations in a product _

claim must be given meaning in defining the required

structure. For example, under the pronounced rule, a claim

calling for “welded” metal sheets arranged in a particular

format, if construed as purely “structural,” could cover any

metal sheets, bolted or otherwise joined, so long as they were

arranged in the specified format. In applying the rule below,

the Majority decision reached just that conclusion: a claim

for a web with two embossed patterns only requires a

particular “topography” without any requirement that the web

contain impressions formed from application of an embossing

tool. App. 17a. Because the remainder of the claim at issue

already described the topography, the Majority decision

effectively read the word “embossed” out of the claim in

violation of countless decisions holding that all terms have

meaning.”

Supporting its new rule of law, the Majority cites Hazani

v. United States Int’] Trade Comm’n, 126 F.3d 1473, 1479

(Fed. Cir. 1997) for the proposition that the phrase

“chemically engraved” was not a process term. App. 12a.

But even when process terms in a product claim are

interpreted as “structural,” Hazani makes clear that neither

the process-like limitation itself nor the process required to

achieve the described structure can be ignored in defining

that structural limitation. The Hazani court construed

“chemically engraved” in light of the specification as

“asperities .. . produced by oxidation.” Hazani, 126 F.3d at

1479 (emphasis added). Then, in considering validity, the

Hazani court found the claim anticipated because the prior

art disclosed “surfaces that have asperities of the sort

produced by oxidation... .” Jd. Thus, the Hazani court

considered the process of chemical engraving as well as the

structure resulting from that process in both defining the

structural limitation and thereafter adjudicating validity.”

The Majority here did not.”

23. See e.g., Techsearch L.L.C. v. Intel Corp., 286 F.3d 1360,

1373 (Fed. Cir. 2002) (“[S]pecific claim limitations cannot be ignored

as insignificant or immaterial in determining infringement.”).

24. When structural terms in a product claim already convey to

one skilled in the art a definite structure, additional process terms,

which describe no separate physical characteristics, can only be

construed in the process sense. Take the example of “chemically

engraved” in Hazani. The term “engraved” described the physical

characteristics of the claimed surface. Adding the word “chemically”

was not superfluous—it described an oxidizing process that produces

asperities. For 3M’s claimed web, structural language—a “pattern

of depressions” and a “pattern of lands and ridges”—-conveyed a

definite structure. Adding the word “embossed” could only describe

(Cont'd)

The disparate reasoning of the Majority and Dissent

opinions, along with the opinion of the District Court,

demonstrates that existing law provides insufficient guidance

by which competitors can divine claim coverage for product

claims drafted with process and process-like limitations.

For example, the Majority found that two terms in claim 1—

“embossed” and “multiple embossed”—are “entirely

structural” and “describe[] only [a] structural relationship.”

App. lla, 17a. In contrast, both the Dissent and the District

Court agreed with the Patent Office that 3M used process

terms to define its invention. App. 19a, 48a. Likewise, the

Dissent concludes “a reasonable competitor would read claim

1 as a product claim with process limitations.” App. 19a.

No court has ever expressly delineated the circumstances and

factual indicia that differentiate a structural from a process

limitation in a product claim. If a senior district court judge

and three Federal Circuit judges cannot agree when process

(Cont’d)

how the two patterns come into existence. Yet the Majority opinion,

relying on the “default” rule of interpretation as structural (App. 11a),

apparently reads the term embossed as nothing more than a “surface

topography.” App. 16a-17a. This adds nothing to the claim because

the rest of the claim language already describes a surface

“topography.” Assuming that “embossed” has some meaning in the

claim in addition to the other language used, Avery cannot tell what

surface “topography” might fall within the meaning of “embossed”

and what surface topography would not.

25. The decision in Vanguard Prods. Co. v. Parker Hannifin

Corp., 234 F.3d 1370, 1372 (Fed. Cir. 2000), also cited in the

Majority’s opinion, App. 12a, does not differ. In fact, unlike this

case and Hazani, Vanguard did not involve a past tense verb or

adjective limiting a noun in a product claim. Rather, the claim at

issue recited two layers, and described the relationship between them

as “integral therewith”—a noun phrase. Accordingly, the Vanguard

court properly rejected an argument that “integral therewith” required

a “coextrude” manufacturing process, for a “coextrude” requirement

lacked any support in the claim language. Jd.

words in product claims constitute a process and not a

structural limitation, and vice versa, reasonable competitors

cannot know the boundaries of patent claims using process

terms in product claims. This Court should accept review

and establish the circumstances under which process terms

used in product claim are given meaning and how they should

be construed.

CONCLUSION

_ The Federal Circuit’s decision contravenes important

principles and policies, and conflicts with established patent

law precedents. A writ of certiorari should issue to review

the decision below.

Respectfully submitted,

RopERICK G. DORMAN

Counsel of Record

LAWRENCE M. HADLEY

HENNIGAN, BENNETT & DORMAN LLP

601 South Figueroa Street

Suite 3300

Los Angeles, CA 90017

(213) 694-1200

Jay R. CAMPBELL

RENNER OTTO BoIssELLE & SKLAR

1621 Euclid Avenue, 19th Floor

Cleveland, OH 44115

(216) 621-1113

Attorneys for Petitioner

APPENDIX

APPENDIX A — OPINION OF THE UNITED STATES

COURT OF APPEALS FOR THE FEDERAL

CIRCUIT DECIDED DECEMBER 2, 2003

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

No. 03-1203

3M INNOVATIVE PROPERTIES COMPANY and

Minnesota Mining and Manufacturing Company,

Plaintiffs-Appellants,

AVERY DENNISON CORPORATION,

Defendant-Appellee.

DECIDED: December 2, 2003

Before MICHEL, CLEVENGER and LINN, Circuit Judges.

Opinion for the court filed by Circuit Judge CLEVENGER.

Dissenting opinion filed by Circuit Judge MICHEL.

CLEVENGER, Circuit Judge.

Plaintiffs- Appellants 3M Innovative Properties Company

and Minnesota Mining and Manufacturing Company

(collectively “3M”) sued Defendant-Appellee Avery

Dennison (“Avery”) for infringement of claim 1 of U.S.

Appendix A

Patent No. 5,897,930 (“the ’930 patent’) in the United States

District Court for the District of Minnesota. After construing

disputed claim terms, the district court entered summary

judgment in favor of Avery, concluding that Avery did not

infringe, as a matter of law, the ’930 patent either literally or

under the doctrine of equivalents. We reverse the district

court’s claim construction, vacate its summary judgment and

remand for further proceedings not inconsistent with this

opinion.

3M and Avery compete in the market for adhesive-based

products for the commercial graphics industry. In our

increasingly image-suffused world, this industry seems to

have targeted all available surfaces in public places, including

the exterior of busses, trucks and other vehicles, as

appropriate locations for advertising images. So that these

advertisements may be efficiently and pervasively placed on

such diverse surfaces, images are pre-printed onto sheets of

adhesive-backed film. These films, like bumper stickers, have

release liners that can be stripped off to reveal a pressure

sensitive adhesive just prior to affixation of the image.

Even one of skill in the art of sticking films on surfaces

can experience difficulties. Correct positioning of a large

image may require repeated adjustments, and if the film is

not initially placed in precisely the desired position, removing

the film and repositioning it is likely to damage the film and

mar the sought-after image. Additionally, pockets of air, in

the form of bubbles or blisters, may become entrapped

between the film and the surface if the two are not mated

perfectly.

Se eee ee Te

Appendix A

The ’930 patent describes a release liner that, according

to 3M, avoids these positioning and air-entrapment

difficulties. Also according to 3M, Avery’s EZ Film liner

infringes the claims of the ’930 patent in the features it uses

to provide these benefits.

As implicated in the current litigation, the ’930 patent

“relates to embossed webs useful as liners for pressure

sensitive adhesives.” ’930 patent, col. 1, Il. 5-7. When used

as a “release liner,” the “embossed web” is the adhesive-

protective layer that is removed from the back of the film to

expose the adhesive. More specifically, the °930 patent

addresses embossed webs that are manufactured with a

particular type of three-dimensional configuration or

“topography” that are useful insofar as they fashion an

obverse topography in the exposed adhesive.

Only independent product claim 1 of the ’930 patent is

at issue in this appeal, and it reads as follows:

1. A carrier web, comprising: at least one surface

that has a multiple embossed pattern having a first

embossed pattern and a second embossed pattern,

wherein the first embossed pattern forms an array

of depressions, wherein the depressions of the first

embossed pattern are in the second embossed

pattern, wherein the second embossed pattern

comprises lands and ridges between the lands, and

wherein the height of the ridges over the lands

ranges from about 3 to about 45m.

(emphasis added).

Appendix A

In the preferred embodiment, the first and second

embossed patterns each serves a different function.

The “depressions” of the first embossed pattern in the web

enhance the film’s positionability. They result in protruding

bumps in the exposed adhesive, minimizing the surface area

of the initial points of contact between the adhesive and the

substrate and increasing the ease with which the image-

imprinted film can be positioned after initial contact but

before complete adhesion. Additionally, if nonadhesive

granules, such as glass beads, are placed in the depressions

prior to the web being coated with adhesive, the granules

stick to the adhesive when the liner is removed, creating

nonadhesive bumps and further increasing positionability.

In contrast, the “ridges” in between the “lands” of the second

embossed pattern in the web result in a network of valleys in

the exposed adhesive. Because these valleys create channels

through which air can flow even after the film has adhered

to the substrate, air that would otherwise become trapped as

air bubbles due to imperfect application of the film can

escape.

Independent method claim 6 is also relevant to this

appeal, although 3M does not allege that Avery has infringed

it. Claim 6 provides:

A method of embossing, comprising the steps of:

(a) embossing a carrier web having at least one

surface with a first pattern, to create a first pattern

of depressions;

Appendix A

(b) embossing the surface with a second pattern,

to create a second pattern of depressions

comprising lands and ridges;

wherein the depressions created from the first

embossing step are substantially preserved during

the second embossing step even though the second

embossing step superimposes the second pattern

on the depressions created by the first embossing

step, and wherein the height of the ridges over

the land ranges from about 3 to about 45m.

The specification provides several definitions for terms

used in claim 1, two of which are relevant here:

“Embossed” means a topography on a web or on

tooling having an effective three-dimensional

pattern that generates a difference in surface planar

dimension in the liner or the tooling.

* * *

“Multiple embossed” means two or more

embossing patterns are superimposed on the web

to create a complex pattern of differing depths of

embossing.

”930 patent, col. 1, ll. 61-64, col. 2, 11.1-3.

Appendix A

Ill

Avery’s accused product is its EZ Film, an adhesive-

backed graphics film with both positionability and air-egress

features. The EZ Film liner is created by first depositing or

printing polyurethane “ink” dots (the “PU dots’) on top of

the liner’s outer polyethylene layer (the “PE layer’’) and then

embossing a pattern of hexagonal ridges and lands in the

liner when the PU/PE combination passes over an embossing

roll. This hexagonal pattern in the liner creates air-egress-

enabling channels in the adhesive layer when the liner is

removed. At some point (or points) in the manufacturing

process, the PU dots are pressed into the PE layer of the

liner.' When the liner is removed from the adhesive layer,

the PU dots remain affixed to the adhesive, creating less-

adhesive, positionability-enhancing bumps.

3M alleges that the Avery EZ Film liner infringes the

930 patent because the dents in the PE layer of the liner

1. Avery alleges that, during the manufacture of its EZ Film

liner, the PU dots are imbedded only at the embossing roll, the same

point in the process at which the hexagonal pattern is created.

The district court noted that “3M present[ed] expert testimony to

support its contention that embossing occurs at the squeegee roll,” a

point in the process earlier than the embossing roll, but it concluded

that “that testimony does not create a genuine issue of material fact.”

See 3M Innovative Props. Co. v. Avery Dennison Corp., No. Civ.01-

1781 (DSD/FLN), 2002 WL 31628395, at *5 n. 5 (D.Minn. Oct.19,

2002). Because we reverse the district court’s claim construction,

we need not review the district court’s conclusion that no genuine

issue of material fact existed.

Appendix A

(created when the PU dots are embedded) constitute a “first

embossed pattern,” the hexagonal pattern constitutes a

“second embossed pattern,” and because all remaining claim

limIn its first order, the district court construed claim 1 of

the °930 patent and denied 3M’s plea for a preliminary

injunction on the ground, among other things, that 3M had

not demonstrated a likelihood of success on the merits of its

infringement claim. See 3M Innovative Props. Co. v. Avery

Dennison Corp., 185 F.Supp.2d 1031, 1037-41

(D.Minn.2002) (“3M I’). In a second order ruling on Avery’s

motion for summary judgment of noninfringement, the

district court adopted the claim construction from 3M J, see

3M Innovative Props. Co. v. Avery Dennison Corp., No.

Civ.01-1781 (DSD/FLN), 2002 WL 31628395, at *3 & n. 2

(D.Minn. Oct.19, 2002) (“3M II’), and granted Avery’s

motion, id. at *7.

In 3M IJ, the district court construed two terms from claim

1. First, construing the term “multiple embossed pattern,”

the district court held that “[w]hile the language of the claim

does not mention the word ‘sequential,’ it nevertheless

illustrates that the term ‘multiple embossed pattern’ requires

sequential embossments.” 185 F.Supp.2d at 1038. To arrive

at this conclusion, the district court relied on its view of the

plain meaning of “first” and “second” and characterized the

definition of “multiple embossed” in the specification as

evidence of the claim’s product-by-process nature. Jd. at

1038-39. Second, the court relied on the specification’s

express definition of the term “embossed,” as well as a source

that the district court treated as a technical dictionary,”

2. “The TAPPI 1993-1994 Technical Information Sheets define

‘embossing’ as ‘creating a finish or design imparted by compressing

(Cont'd)

Appenaix A

to construe it to mean “a topography created on material by

impressing a corresponding inverse topography on its

surface.” /d. at 1040-41.

In 3M II, the district court concluded that the Avery EZ

Film liner did not, as a matter of law, literally infringe claim

1 because the accused product was manufactured using an

“embedding” process and the product resulting from such

an embedding process was not “embossed” as per the

definition given to that term during claim construction.

3M II, 2002 WL 31628395, at *4. Moreover, the PU dots

printed onto the liner were softened during the embedding

process, so the PE layer of the liner was “not the inverse

topography of the hardened PU ink dot earlier

flexographically printed on the liner.” /d. at *5. The district

court also concluded that the Avery EZ Film liner did not, as

a matter of law, infringe under the doctrine of equivalents

because “[t]he doctrine of equivalents cannot be employed

in a manner that vitiates a claim limitation,” id. at *6 (citing

SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., 242

F.3d 1337, 1347 (Fed.Cir.2001); K-2 Corp. v. Salomon S.A.,

191 F.3d 1356, 1367 (Fed.Cir.1999)), and Avery had removed

“one of the steps of the °930 patent—the ‘first embossed

pattern’ forming an array of depressions,” id.

(Cont'd)

a material between matched rigid surfaces or rigid and ductile surface

having the desired raised or depressed surface pattern.’” 3M J, 185

F.Supp.2d at 1041.

Appendix A

In entering a summary judgment of noninfringement, the

district court resolved both steps of the infringement inquiry

as a matter of law; on appeal, we therefore review both de

novo: (1) the scope of the patent claims and (2) the lack of a

genuine issue of material fact in the conclusion that the device

does not contain all of the limitations, either literally or by

equivalents, that are present in the claims. See Karlin Tech.,

Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 970-71, 974

(Fed.Cir.1999). In a case such as this one, however, where

the district court’s claim construction is reversed and a new

one is given, we frequently remand for the district court to

reconsider the components of the second step—namely,

whether a genuine issue of material fact exists and whether

either party is entitled to summary judgment—using the new

claim construction. See, e.g., Rexnord Corp. v. Laitram Corp.,

274 F.3d 1336, 1338 (Fed.Cir.2001).

Claim construction begins with the language of the

claims. See Johnson Worldwide Assocs., Inc. v. Zebco Corp.,

175 F.3d 985, 989 (Fed.Cir.1999). In construing patent

claims, there is “a ‘heavy presumption’ that a claim term

carries its ordinary and customary meaning,” CCS Fitness,

Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.Cir.2002)

(quoting Johnson Worldwide Assocs., 175 F.3d at 989),

namely its meaning “amongst artisans of ordinary skill in

the relevant art at the time of the invention,” ResQNet.com,

Inc. v. Lansa, Inc., 347 F.3d 1374, 1378 (Fed.Cir.2003) (citing

Rexnord, 274 F.3d at 1342). “[D]ictionaries and treatises may

also assist the courts.” Jd. (citing Tex. Digital Sys., Inc. v.

Telegenix, Inc., 308 F.3d 1193, 1202-03 (Fed.Cir.2002));

10a

Appendix A

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

1584 n. 6 (Fed.Cir.1996) (noting that “[j]udges ... may...

rely on dictionary definitions” to construe claim terms).

A term’s ordinary meaning, however, must be considered

in the context of all intrinsic evidence, namely the claims,

the specification, and the prosecution history. See Rexnord,

274 F.3d at 1342-43 (explaining that claim terms must be

examined in light of the specification and the prosecution

history); cf. Gart v. Logitech, Inc., 254 F.3d 1334, 1339-40

(Fed.Cir.2001) (defining intrinsic evidence). While

limitations in the specification must not be routinely imported

into the claims because a patentee need not describe all

embodiments of his invention, see Rexnord, 274 F.3d at 1344,

a definition of a claim term in the specification will prevail

over a term’s ordinary meaning if the patentee has acted as

his own lexicographer and clearly set forth a different

definition, see Tex. Digital Sys., 308 F.3d at 1204 (noting

that “the inconsistent dictionary definition must be rejected”

if the specification rebuts the presumption of ordinary and

customary meaning); Rexnord, 274 F.3d at 1342. “This court

also considers the prosecution history ... to determine

whether the applicant clearly and unambiguously ‘disclaimed

or disavowed [any interpretation] during prosecution in order

to obtain claim allowance.’” Middleton, Inc. v. Minn. Mining

& Mfg. Co., 311 F.3d 1384, 1388 (Fed.Cir.2002) (quoting

Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452

(Fed.Cir.1985)) (alteration in original); see also Omega

Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324

(Fed.Cir.2003) (noting that “the doctrine of prosecution

disclaimer” does not apply “where the alleged disavowal of

claim scope is ambiguous”).

SA el ASE CTT INC Oe NE, PL

lla

Appendix A

The district court erred when it defined the term

“multiple embossed patterns” to include a limitation that the

patterns be created sequentially. The use of the terms “first”

and “second” is a common patent-law convention to

distinguish between repeated instances of an element or

limitation. See, e.g., Anchor Wall Sys., Inc. v. Rockwood

Retaining Walls, Inc., 340 F.3d 1298, 1304 (Fed.Cir.2003)

(first and second sidewall surfaces); Springs Window

Fashions LP vy. Novo Indus., L.P., 323 F.3d 989, 992

(Fed.Cir.2003) (first and second opposed ends). In the context

of claim 1, the use of the terms “first . . . pattern” and “second

. .. pattern” is equivalent to a reference to “pattern A” and

“pattern B,” and should not in and of itself impose a serial

or temporal limitation onto claim 1.

In the specification, 3M clearly acted as its own

lexicographer, and the definition provided requires only that

the “two or more embossing patterns” be “superimposed.”

‘930 patent, col. 2, Il. 1-2. Despite Avery’s arguments to the

contrary, the use of “superimposed” in this definition neither

transforms claim 1 into a product-by-process claim nor even

limits the scope of the claim to a serial method of

manufacture; it describes only the structural relationship

between the embossing patterns. See Webster’s Third New

International Dictionary 2294 (1993) (defining

“superimposed” as “layered”). Furthermore, even words of

limitation that can connote with equal force a structural

characteristic of the product or a process of manufacture are

commonly and by default interpreted in their structural sense,

unless the patentee has demonstrated otherwise. See Hanzai

12a

Appendix A

v. United States Int'l] Trade Comm’n, 126 F.3d 1473, 1479

(Fed.Cir.1997) (concluding that “chemically engraved”

was not a process term); Vanguard Prods. Co. v. Parker

Hannifin Corp., 234 F.3d 1370, 1372 (Fed.Cir.2000) (holding

that the claim term “integral” describes a structural relation,

not the particular manufacturing process related in the

specification); cf. id. (“A novel product that meets the criteria

of patentability is not limited to the process by which it was

made.” (citing 3 Donald S. Chisum, Chisum on Patents

§ 8.05, at 8-79 (2000))).

Nothing in the intrinsic evidence of the patent requires

that a limitation of sequential creation of the “multiple

embossed pattern” should be included in claim 1. The

limitation of serial embossing clearly present in method claim

6 cannot be read into claim 1; furthermore, method claim 6

creates new terms—’”the first embossing step “ and “the

second embossing step “—to carry the serial-embossing

limitation. It is true that language in the specification of the

‘930 patent recurrently recites serial application of the

two patterns. See, e.g., ‘930 patent, col. 3, ll. 16-17

(‘An advantage of the present invention is to create a means

of sequential manufacturing of articles using different depths

of depressions and same or different materials.”); id., col. 6,

ll. 66-67 (“Because the multiple embossings of the web occur

sequentially. ...”). Limitations from the specification,

however, cannot be imported into the claims, and this rule

must be strictly enforced in light of the clear definition of

“multiple embossed” provided in the specification—a

definition devoid of sequential limitation. Furthermore, the

specification also discloses the option, albeit not the preferred

option, of creating multiple embossed patterns in a single

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babel . re Fane . rae; Sa) ss egy

Kggrse tea Sb SS

13a

Appendix A

Step. See id., col. 2, ll. 11-15 (“Although the multiple

embossing steps could be combined into a single step with

the design of a suitable tool or mold, the advantage of

multiple steps is that the depressions formed by the prior

step(s) can be filled with material prior to the subsequent

embossing step(s).”).

A broadening claim amendment made during the

prosecution history of the ‘930 patent supports a plain-

meaning construction of claim 1 without a sequential-

embossment limitation. As filed in the original patent

application, claim 1 was expressly limited to a “multiple

sequentially embossed” web.’ In response to the examiner’s

§ 112, | 2 indefiniteness rejection, 3M amended claim 1 to

claim a carrier web “that has a multiple embossed pattern

having a first embossed pattern and a second embossed

pattern,” referring to definitions of “multiple embossed” and

“embossed” that were in the specification at the time of the.

original patent application. The fact that 3M broadened its

claims in response to an indefiniteness rejection and dropped

the sequential limitation is perhaps unusual, but it is entirely

permissible, and the plain language of the claim as issued

must control. Cf. Smith v. Snow, 294 U.S. 1, 16 (1935) (“It is

of no moment that in the course of the proceedings in the

Patent Office the rejection of narrow claims was followed

3. As initially filed, claim 1 read: “A carrier web, comprising:

at least one surface that is multiple, sequentially embossed with a

pattern, wherein depressions created from the prior embossing

pattern(s) are substantially preserved during the subsequent

embossing pattern(s) even though the subsequent embossing

pattern(s) are superimposed on the depressions from the prior

embossing patterns(s).”

l4a

Appendix A

by the allowance of the broader claim 1.”); United States v.

Telectronics, Inc., 857 F.2d 778, 782-83 (Fed.Cir.1988)

(concluding that adding a limitation to a claim during

prosecution and then removing it when the limitation failed

to result in allowance of the claim over the prior art does not

permit reading of limitation into claim when the claim issued

without it).

Avery also argues that claim 1 contains a sequential-

embossment limitation because of the arguments that 3M

made during prosecution to overcome section 102(b)

anticipation and section 103(a) obviousness rejections by the

examiner. To traverse an anticipation rejection of both

product claim 1 and method claim 8 (which eventually issued

as method claim 6) based on references that taught that “two

or more adhesives having different properties may be coated

into the same recesses” on the web, 3M stated that:

Applicants here are claiming two different

embossed patterns where the first embossed

pattern survives the embossing of the second

pattern. See Fig. 2, for an illustration of this

patentable point. In [the prior art reference], there

is only one embossed pattern, that can be filled

with the same or different adhesives. There are

not two embossed patterns as Applicants require

in Claims 1 and 8.

The examiner withdrew his objection in response to 3M’s

argument.‘

4. 3M made similar arguments to traverse another anticipation

and an obviousness rejection as well.

15a

Appendix A

Avery argues that 3M thus expressly disclaimed any

patent scope beyond Sequential embossment of patterns when

it used language pregnant with temporal implications—the

first pattern “survives” the embossing of the second—to

traverse the examiner’s rejections. 3M’s use of the term

“survives” in the prosecution history, however, does not

constitute the clear and unambiguous disavowal of claim

scope that is required to read a limitation into an expressly

defined term. See Middleton, 311 F.3d at 1388. To distinguish

the prior art in question, 3M needed only to argue, as it did

in the last two sentences of the quotation above, that the 930

patent claimed “two embossed patterns” rather than “one

embossed pattern.” When the patentee has expressly defined

a term in the specification and remarks made to distinguish

claims from the prior art are broader than necessary to

distinguish the prior art, the full breadth of the remark is not

a clear and unambiguous disavowal of claim scope as

required to depart from the meaning of the term provided in

the written description. Storage Tech. Corp. v. Cisco Sys.,

Inc., 329 F.3d 823, 833 (Fed.Cir.2003). Furthermore,

Figure 2 of the ’930 patent, to which 3M directed the

examiner, illustrates only the coexistence of two distinct

patterns in the final product, not the sequential embossing

of the patterns.

Finally, in explaining a subsequent anticipation rejection

under section 102(b) on the basis of other prior art, the

examiner stated that claim 1 was “drafted in the product-by-

process format.” 3M never responded to this statement during

the remainder of the prosecution because the objection was

Overcome without any need to address whether claim ] was

or was not a product-by-process claim. In this context, the

l6a

Appendix A

examiner’s statement does not constitute a clear and

unmistakable surrender of claim scope. See Middleton, 311

F.3d at 1388. [P]rosecution history ... cannot be used to

limit the scope of a claim unless the applicant took a position

before the PTO. Schwing GmbH vy. Putzmeister

Aktiengesellschaft, 305 F.3d 1318, 1324-25 (Fed.Cir.2002)

(emphasis added). An applicant’s silence in response to an

examiner’s characterization of a claim does not reflect the

applicant’s clear and unmistakable acquiescence to that

characterization if the claim is eventually allowed on grounds

unrelated to the examiner’s unrebutted characterization.

The district court also erred when it defined the term

“embossed” by imposing a limitation related to the process

by which the embossed surface is made. See 3M I, 185

F.Supp.2d at 1040-41 (defining embossed as “a topography

created on material by impressing a corresponding inverse

topography on its surface”). Because 3M expressly acted as

its own lexicographer by providing a definition of embossed

in the specification, the definition in the specification controls

the meaning of embossed, regardless of any potential conflict

with the term’s ordinary meaning as reflected in technical

dictionaries. See Tex. Digital Sys., 308 F.3d at 1204; Rexnord,

274 F.3d at 1342.

The specification expressly states that “‘[e]mbossed’

means a topography on a web or on tooling having an

effective three-dimensional pattern that generates a difference

in surface planar dimension in the liner or the tooling.”

°930 patent, col. 1, Il. 61-64. This definition defines

17a

Appendix A

“embossed” materials to include both the web and the tooling

(a device that can be used to impress a pattern into a web),

provided each has a “topography” that has “an effective three-

dimensional pattern that generates a difference in surface

planar dimension.”* This definition is entirely structural.

3M defines an “embossed” material as one that has particular

surface characteristics: a “topography” with an “effective

three-dimensional pattern,” the pattern creating “‘a difference

in surface planar dimension.”

The district court erred when it introduced a process

limitation of embossed by requiring the topography to be

created by impression of a corresponding inverse topography.

The patent does not limit how the embossed pattern, as

defined in the specification, is created.

Because the district court erred in its claim construction,

the reasoning underpinning its grant of summary judgment

5. If the district court’s definition were correct, then the

definition provided in the specification (which of course cannot be

ignored) would create a problem of infinite recursion: the tooling

itself would have to be created “by impressing a corresponding

inverse topography on [the tooling’s] surface”; the “corresponding

inverse topography” that creates the tooling, itself a meta-tooling,

would have to be created “by impressing a corresponding inverse

topography on [the meta-tooling’s] surface,” etc. At oral argument,

Avery argued that the definition in the specification must be ignored

because it is nonsensical. Cf. CCS Fitness, 288 F.3d at 1367 (noting

that a claim term will not be given its ordinary meaning if the term

deprives the claim of all clarity). The only interpretation under which

the definition of embossed provided in the specification is nonsensical

is Avery’s.

18a

Appendix A

of noninfringement to Avery is no longer relevant. We do

not reach the question of infringement under its now-vacated

claim construction. Furthermore, because the parties have

not briefed infringement under our claim construction, and

because we cannot determine whether sufficient discovery

has occurred to rule on infringement-related summary

judgment motions using this court’s claim construction, we

remand to the district court for further proceedings not

inconsistent with this opinion.

COSTS

No costs.

REVERSED-IN-PART, VACATED-IN-PART AND

REMANDED.

19a

Appendix A

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

No. 03-1203

3M INNOVATIVE PROPERTIES COMPANY and

Minnesota Mining and Manufacturing Company,

Plaintiffs-Appellants,

AVERY DENNISON CORPORATION,

Defendant-Appellee.

MICHEL, Circuit Judge, dissenting.

I respectfully dissent, because I disagree with the

majority’s construction of claim 1 as a pure product claim.

The majority’s construction runs counter to the definition of

claim terms chosen by the patentee as well as the analyses of

the district court and the patent examiner, both of whom

expressly interpreted claim 1 asa product-by-process claim.

The majority incorrectly reads the definition of “multiple

embossed” as purely structural, when in my view it requires

process. Moreover, the majority’s claim construction may

weaken the notice function of this claim: I believe a

reasonable competitor would read claim 1 asa product claim

with a process limitation.

20a

Appendix A

Claim 1 reads as follows:

1. Acarrier web, comprising: at least one surface

that has a multiple embossed pattern having a first

embossed pattern and a second embossed pattern,

wherein the first embossed pattern forms an array

of depressions, wherein the depressions of the first

embossed pattern are in the second embossed

pattern, wherein the second embossed pattern

comprises lands and ridges between the lands, and

wherein the height of the ridges over the lands

ranges from about 3 to about 45 um.

930 patent, col. 9, ll. 32-41 (emphasis added). Defendant

argues that the use of the claim term “multiple embossed

pattern” requires that the carrier web have undergone

embossing, in much the same way that a claim term “welded

joint” would mean a joint that results from the process of

welding. (Red Br. at 28.) Defendant further contends that

the required embossing must be sequential, i.e., multiple

embossing tools sequentially emboss different patterns onto

the carrier web. Although the district court accepted both of

these arguments, the majority now rejects both.

The written description states:

“Embossed” means a topography on a web or on

tooling having an effective three-dimensional

pattern that generates a difference in surface planar

dimension in the liner or the tooling.

2la

Appendix A

“Multiple embossed” means two or more

embossing patterns are superimposed on the web

to create a complex pattern of differing depths of

embossing.

"930 patent, col. 1, Il. 61-64, col. 2, ll. 1-3. The majority

interprets the definition of “multiple embossed” as “neither

transform[ing] claim 1 into a product-by-process claim nor

even limit[ing] the scope of the claim to a serial method of

manufacture; it describes only the structural relationship

between the embossing patterns.” (Maj. Op. at 1371.)

The majority interprets the definition of “embossed” to be

“entirely structural.” (/d. at 1374.) Based on its interpretations

of the two definitions—and its correct conclusion that the

patentee nowhere clearly disavowed these definitions—the

majority construes claim 1 as purely structural.

I do not think the definition of “multiple embossed”

describes only the structural relationship between the

embossing patterns. To the contrary, the definition expressly

requires that an action have taken place: “‘[ml]ultiple

embossed’ means two or more embossing patterns are

superimposed on the web to create a complex pattern of

differing depths of embossing.” ’930 patent, col. 2, Il. 1-3

(emphasis added). The highlighted text is a verb clause—

“are superimposed ... to create”—and its inclusion in the

definition must be recognized as meaningful.

Having concluded that the definition of “multiple

embossed” requires process, the next issue is what is the

meaning of the definitional language “two or more embossing

patterns are superimposed on the web to create... .” Here, I

22a

Appendix A

turn to the written description’s definition of “embossed”:

“a topography on a web or on tooling having an effective

three-dimensional pattern that generates a difference in

surface planar dimension in the liner or the tooling.”

*930 patent, col. 1, ll. 61-64 (emphasis added). Applying this

definition, I conclude that the “two or more embossing

patterns superimposed on the web” result from two or more

topographies, each on a web or on tooling. In the context of

embossing of a liner, the relevant topographies initially are

only on tooling—that is, the liner is embossed by tools. Thus,

I interpret the process in the definition of “multiple

embossed” as the superimposition of two or more

topographies—each on a tool—onto the web. This process

is incorporated as a limitation into claim 1 through the claim’s

use of the term “multiple embossed.”

Unlike the district court, however, I do not view

claim 1’s process limitation as necessarily sequential.

Nothing in the definition of “multiple embossed” compels

the conclusion that the tools are applied to the web serially,

as opposed to simultaneously. Moreover, I agree with the

majority that the prosecution history and the remainder of

the written description do not contain a clear disavowal of a

simultaneous application of the embossing tools. Indeed,

although a sequential process is repeatedly discussed, one

sentence of the written description clearly contemplates a

simultaneous process. ’930 patent, col. 2, Il. 11-12

(“Although the multiple embossing steps could be combined

into a single step . . .”). I therefore do not construe the term

“multiple embossed” in claim 1 as requiring the sequential

application of embossing tools.

23a

Appendix A

Nevertheless, because the accused product’s pattern

results from only one embossing tool, it is not “multiple

embossed.” As it therefore cannot infringe, I would affirm

the summary judgment of non-infringement, even though

several of the district court’s constructions—including the

sequential requirement—were incorrect. The judgment may

stand regardless of these errors, because under the correct

claim construction infringement by defendant’s product

cannot be shown.

24a

APPENDIX B — ORDER OF THE UNITED STATES

DISTRICT COURT FOR THE DISTRICT OF

MINNESOTA DATED OCTOBER 19, 2002

UNITED STATES DISTRICT COURT

DISTRICT OF MINNESOTA

Civil No. 01-1781(DSD/FLN)

3M INNOVATIVE PROPERTIES COMPANY and

Minnesota Mining and Manufacturing Company,

Plaintiffs,

AVERY DENNISON CORPORATION,

Defendant.

Carolyn V. Peters, Esq., 3M Company, P.O. Box 33427, St.

Paul, MN 55133; Frank P. Porcelli, Esq., Kurt L. Glitzenstein,

Esq. and Fish & Richardson, Suite 3100, 225 Franklin Street,

Boston, MA 02110; John C. Adkisson, Esq., R.J. Zayed, Esq.

and Fish & Richardson, 3300 Dain Bosworth Plaza, 60 South

Sixth Street, Minneapolis, MN 55402, counsel for plaintiffs.

David P. Pearson, Esq. and Winthrop & Weinstine, 3200

Minnesota World Trade Center, 30 East Seventh Street, St.

Paul, MN 55101; Jay R. Campbell, Esq. and Renner, Otto,

Boisselle & Sklar, 1621 Euclid Avenue, Cleveland, OH

44114; Roderick G Dorman, Esq., Lawrence M. Hadley, Esq.

and Hennigan, Bennett & Dorman, 601 Figueroa Street South,

Suite 3300, Los Angeles, CA 90017, counsel for defendant.

25a

Appendix B

ORDER

This matter is before the court upon defendant Avery-

Dennison Corporation’s motion for summary judgment.

Based upon a review of the file, record and proceedings

herein, and for the reasons stated, the court grants that motion.

BACKGROUND

This action involves the alleged infringement of a patent

relating to advanced commercial adhesive products. Plaintiff

3M Innovative Properties Company (“3M”) produces,

develops and markets adhesive-based products for the

commercial graphics industry. Defendant Avery-Dennison

Corporation (“Avery”) is a leading competitor in this market.

3M asserts that Avery’s “EZ Series F leet Marketing Films”

(“EZ Films”) infringe upon 3M’s Comply product,

specifically United States Patent No. 5,897,930 (the “ ’930

patent’’).

Commercial graphic materials are used for advertising,

logos and signs on the exterior of trucks, buses and other

large vehicles. Instead of traditionally painting the

advertisements onto the vehicles, computer generated logos

and murals are created and generated onto a layer of film.

Similar to a bumper sticker, the film has a “release liner”

that when stripped off €XpOSes a pressure-sensitive adhesive.

The large sheet of film is then placed onto the vehicle,

essentially “wrapping” the vehicle in the adhesive graphic.

The task of “wrapping” a vehicle with the film is one that

poses two problems: (1) positionability and (2) air

entrapment.

26a

Appendix B

A. Positionability

The problem of positionability occurs when the film is

not correctly situated initially. There is a risk that the product

will wrinkle, tear, or stretch when it is repositioned. In 1993,

3M addressed this problem with its Controltac products.

Conventionally, the surfaces on both the release liner and

the adhesive film are smooth. Controltac products, on the

other hand, have a shaped release liner that imparts a special

contour to the surface of the adhesive. The surface of the

Controltac adhesive is covered with bumps or protrusions

that are made of glass beads and a small amount of adhesive.

These bumps, naked to the human eye, are only a few microns

high.’

Because these bumps project out from the surface of the

aggressive adhesive, they are the first to come into contact

with the application surface. Instead of immediately adhering

to the surface, because of the glass beads, the adhesive film

can be slid over the surface until it is in the desired location.

Once in place, the installer simply presses firmly down on

the adhesive film, allowing the aggressive adhesive

surrounding the beads to come into contact with the surface

to form a permanent bond.

1. The bumps on the adhesive surface are created with a special

release liner that has micron-scale depressions. Each depression in

the release liner will form one of the bumps on the adhesive film. By

spreading the mixture of both glass and adhesive across the release

liner, molds of glass beads are formed. A screen of aggressive

adhesive is then layered over these beads. In the final step of the

application process, when the release liner is peeled off, the glass

bumps remain stuck to the adhesive layer.

27a

Appendix B

B. Air Entrapment

Installers of large scale commercial graphics also face

the problem of air entrapment. When air becomes trapped

beneath the film, the graphic’s appearance may become

blemished by blisters or bubbles. To address this issue,

3M modified the adhesive surface by adding micron-scale

channels to the release liner to allow air to “bleed” out of the

edges of the adhesive film. The surface area of the release

liner above the depressions are called “lands,” A high spot

on the release liner creates a low spot on the adhesive film.

The release liner is disclosed and claimed in the ’930 patent.

C. 3M’s Patent

3M marketed products with these two features, glass

beads to better position the film and air channels to combat

air entrapment, as “Controltac Plus Graphic Films with

Comply Performance Adhesive Technology” (“the Comply

products”). 3M received a patent for the technology included

in the Comply products, patent °930. The language of claim

1 of 3M’s ’930 patent, a relevant claim in this action, states:

A carrier web, comprising:

at least one surface that has a multiple embossed

pattern having a first embossed pattern and a

second embossed pattern, wherein the first

embossed pattern forms an array of depressions,

wherein the depressions of the first embossed

pattern in the second embossed pattern, wherein

the second embossed pattern comprises lands and

28a

Appendix B

ridges between the lands, and wherein the height

of the ridges over the lands ranges from about 3

to 45 microns.

Claim 6, also relevant to this dispute, requires a first

embossed pattern of depressions.

D. EZ Films

3M asserts that Avery’s EZ Films infringe upon the ’930

patent. Specifically relevant to this motion, 3M contends that

Avery’s EZ Films contain a “multiple embossed pattern” with

a “first embossed pattern” creating an array of “depressions.”

To make its EZ Films, Avery deposits raised liquid PU

ink dots on the surface of a liner in a process know as

flexographic printing. (McHugh Decl. at 17.) The raised

ink dots are hardened on the liner through a UV curing

process. The liner then goes through the embossing process.

The printed liner first passes over a number of guide rolls

and heating elements prior to reaching the embossing roll.

3M explains that Avery’s liner then is embossed twice, first

prior to the embossing roll at the squeegee roll and then at

the embossing roll. (See, e.g., Pl.’s Mem. in Resp. to Def.’s

Mot. for Summ. J. at 8, 14-15.) Avery, however, alleges that —

the liner is embossed only once and describes the embossing

process as follows:

At the contact area or “nip” formed between

the bed roll and the embossing roll, two events

occur simultaneously: the inverse of the hexagonal

pattern on the embossing roll is impressed into

29a

Appendix B

and then removed from the PE layer of the liner

(thus “embossing” the liner with a hexagonal

pattern), and the softened PU ink material is

pressed into the softened liner and displaces the

PE material in the liner, forming a composite

polymer liner material with a flush surface.

(Def.’s Mem. in. Supp. of Mot. Summ. J. at 7.) The parties

also dispute whether Avery’s EZ Films contain “depressions,”

as required by the ’930 patent.

Because Avery claims that it does not infringe upon the

930 patent, Avery now brings a motion for summary

judgment. Based upon a review of the file, record and

proceedings herein, and for the reasons stated, the court grants

defendant’s motion for summary judgment.

DISCUSSION

I. Standard for Summary Judgment

Rule 56(c) of the Federal Rules of Civil Procedure

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.” In order for the moving party to prevail, it must

demonstrate to the court that “there is no genuine issue as to

any material fact and that the moving party is entitled to

judgment as a matter of law.” Celotex Corp. v. Catrett, 477

U.S. 317, 322 (1986) (quoting Fed.R.Civ.P. 56(c)). A fact is

30a

Appendix B

material only when its resolution affects the outcome of the

case. Anderson yv. Liberty Lobby, Inc., 477 U.S. 242, 248

(1986). A dispute is genuine if the evidence is such that it

could cause a reasonable jury to return a verdict for either

party. See id. at 252.

On a motion for summary judgment, all evidence and

inferences are to be viewed in a light most favorable to the

nonmoving party. See id. at 255. The nonmoving party,

however, may not rest upon mere denials or allegations in

the pleadings, but must set forth specific facts sufficient to

raise a genuine issue for trial. See Celotex, 477 U.S. at 324.

Moreover, if a plaintiff cannot support each essential element

of its claim, summary judgment must be granted because a

complete failure of proof regarding an essential element

necessarily renders all other facts immaterial. /d. at 322-23.

II. Infringement Analysis

An infringement analysis requires two steps. The first is

to construe the meaning and the scope of the patent claims, a

step commonly referred to as claim construction. Southwall

Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575

(Fed.Cir.1995). The second is to determine whether the

accused invention infringes the patent claim as construed.

Markman v. Westview Instruments, Inc., 52 F.3d 967, 976

(Fed.Cir.1995). A product infringes a patent if it contains

every limitation of any one claim or an equivalent of each

limitation not literally met. Dolly, Inc. v. Spaulding & Evenflo

Cos., Inc., 16 F.3d 394, 397 (Fed.Cir.1994); Becton Dickinson

& Co. v. C.R. Bard, Inc., 922 F.2d 792, 796 (Fed.Cir.1990).

While the first step is solely a question of law to be

3la

Appendix B

determined by the court, the second step is one for the trier

of fact. Purdue Pharma L.P vy. Boehringer Ingelheim GMBH,

237 F.3d 1359, 1363 (Fed.Cir.2001); Cybor Corp. v. FAS

Techs., Inc., 138 F.3d 1448, 1454-55 (Fed.Cir.1998)

(en banc).

After the claims are construed as a matter of law, the

court must consider whether “‘a reasonable trier of fact could

find that every limitation in any construed claim at issue”

may be found in the accused device. Unidynamics Corp. v.

Automatic Prods. Int’l, Ltd., 157 F.3d 13] 1, 1316-17

(Fed.Cir.1998). While the determination of whether an

accused device infringes a claim literally or under the doctrine

of equivalents is normally a question of fact, Caterpillar Inc.

v. Deere & Co., 224 F.3d 1374, 1379 (Fed.Cir.2000), a district

court may grant summary judgment “when it is shown that

the infringement issue can be reasonably decided only in

favor of the movant, when all reasonable factual inferences

are drawn in favor of the non-movant.” Voice Tech. Group

Inc. v. VMC Sys., Inc., 164 F.3d 605, 612 (Fed.Cir. 1999);

see also Optical Disc Corp. v. Del Mar Avionics, 208 F.3d

1324, 1335-36 (Fed.Cir.2000) (“Summary Judgment of

noninfringement under the doctrine of equivalents is proper

if ne scasonable jury could determine that a claim limitation

is met in the accused device by an equivalent.”). Because

the court previously construed the relevant disputed claim

terms,’ the court now must compare the claims as construed

to the allegedly infringing device.

2. In 3M Innovative Properties Co. vy. Avery Dennison Corp.,

185 F.Supp.2d 1031 (D.Minn.2002), the court engaged in the first

step of an infringement analysis by construing the relevant disputed

claim terms in its preliminary injunction order.

32a

Appendix B

A. Infringement of the 930 Patent

The court finds that Avery’s EZ Films do not infringe

upon 3M’s ’930 patent literally or under the doctrine of

equivalents because they do not have a “multiple embossed

pattern” with a “first embossing step” as required under

claims 1 and 6.°

1. No literal infringement.

In its preliminary injunction order, the court defined the

term “multiple embossed pattern” to mean “sequential

embossing patterns” and the term “embossed” to mean

“a topography created on material by impressing a

corresponding inverse topography on its surface.”

3M Innovative Properties Co., 185 F.Supp.2d 1031, 1040

(D.Minn.2002). Based upon those definitions, Avery argues

that its liner does not literally infringe upon the ’930 patent

because, in part, its liner does not contain a “multiple

embossed pattern” or a “first embossing step.” 3M, however,

argues that Avery pre-imbeds ink dots, which constitutes a

first embossed pattern and thus that its liner contains a

“multiple embossed pattern.” After careful review, the court

3. While Avery also claims that its EZ Films do not infringe

upon the ’930 patent because they do not have a first embossed pattern

of “depressions,” the court does not address that argument because

the court finds that Avery’s EZ Films do not have a “multiple

embossed pattern.”

4. Avery requests that the court clarify its earlier claim

construction by amending the court’s construction of the term

“emboss.” The court finds that such a clarification is unnecessary.

33a

Appendix B

finds that, even assuming pre-imbedding occurs, which the

parties dispute, pre-imbedded ink dots do not constitute a

first embossed pattern under the court’s definition of

“embossed.” Thus, Avery’s EZ Films do not contain a

“multiple embossed pattern” or a “first embossing sstep”

because there are no sequential embossing steps.

a. Embedding is not embossing.

Ink dots pre-embedded in a liner do not constitute a “first

embossed pattern” because embedding is not embossing.

(McHugh Decl. at § 20.) As persons skilled in the art

recognize, embedding is “[the] complete encasement or

encapsulation, creating a composite structure,” while

embossing is “the use of an embossing roll or tool to impress

a corresponding, inverse topography in a material.” (/d.)

Technical dictionaries do not equate the two terms.

See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584

n.6 (Fed.Cir. 1996) (“Judges are free to... rely on dictionary

definitions when construing claim terms. . .”). For instance,

the Encyclopedia of Polymer Science and Technology

describes embedding as often synonymous with “casting. . . ,

potting, molding, impregnation, and encapsulation.”

(McHugh Decl., Ex. 2 at 792-93.) It does not equate

embedding with embossing. (/d.; see also McHugh Decl.,

Ex. 2 at 620.)

Nontechnical dictionaries also distinguish between

embedding and embossing. See Merriam-Webster’s

Collegiate Dictionary at 376-77 (10th ed.1998) (defining

“emboss” as “to raise the surface of into bosses. . . ; to raise

in relief from a surface ...” and defining “embed” as “‘to

34a

Appendix B

enclose closely in. . .”); The American Heritage Dictionary

at 447-48 (2d College ed.1985) (defining “emboss” as

“(t]o mold or carve in relief. . . ; raise the surface of in relief”

and defining “embed” as “to fix firmly in a surrounding mass

... To enclose in a matrix ... To enclose snugly or firmly

... To make an integral part of.’). Thus, because pre-

embedding is not embossing, pre-embedded ink dots do not

create a first embossing step.

b. No Evidence of embossed inverse topography

Moreover, contrary to 3M’s assertion, the Avery’s liner

does not undergo a first embossment at the squeegee stage

or at the embossing nip, (McHugh Decl. at § 22), when the

ink dot is allegedly pre-imbedded, because an imbedded ink

dot does not create an embossed inverse topography on a

liner’s surface. Instead, an embedded ink dot displaces a

portion of the PE liner material, forming a composite PE/PU

liner material with a flush surface.° (McHugh Decl. at] 16.)

The molten PE liner material encasing the softened,

embedded PU ink dot is not the inverse topography of the

hardened PU ink dot earlier flexographically printed on the

liner. (McHugh Decl. at {§ 17-18.) Therefore, the ink dot

does not act as an embossing tool by creating an inverse

embossed pattern and thus Avery’s liner does not literally

infringe upon the °930 patent because it does not have a

“multiple embossed pattern” with a “first embossing step.”

5. While 3M presents expert testimony to support its contention

that embossing occurs at the squeegee roll, (Strong Decl., Ex. 1),

that testimony does not create a genuine issue of material fact.

35a

Appendix B

2. No infringement under doctrine of equivalents

Further, Avery’s EZ Films do not infringe upon the ’930

Patent under the doctrine of equivalents. Under that doctrine,

“a product or process that does not literally infringe upon

the express terms of a patent claim may nonetheless be found

to infringe if there is ‘equivalence’ between the elements of

the accused product or process and the claimed elements of

the patented invention.” Warner-Jenkinson Co. v. Hilton

Davis Chem. Co., 520 U.S. 17, 21 (1997). The doctrine

applies objectively to the individual elements of a claim, not

to the invention as a whole. /d. at 21. Consequently, a claim

is infringed only if each limitation in the claim is found in

the accused devise, either literally or by a substantial

equivalent. Wooster Brush Co. v. Newell Operating Co.,

46 F.Supp.2d 713, 721 (N.D.Ohio 1999).

The key question in evaluating patent infringement under

the doctrine of equivalents is “whether a substitute element

matches the function, way, and result of the claimed element,

or whether the substitute element plays a role substantially

different from the claimed element.” Warner-Jenkinson Co.,

520 U.S. at 40; see also Festo Corp. v. Shoketsu Kinzoku

Kogyo Kabushiki Co., 122 S.Ct. 1831, 1838 (2002)

(“The doctrine of equivalents allows the patentee to claim

those insubstantial alterations that were not captured in

drafting the original patent claim but which could be created

through trivial changes.”); London v. Carson Pirie Scott &

Co., 946 F.2d 1534, 1538 (Fed.Cir.1991) ( “infringement may

be found if an accused device performs substantially the same

function in substantially the same way to achieve

substantially the same result.”). One way to determine if

36a

Appendix B

substantial differences exist is to apply the “function-way-

result” test. Under that test, the fact-finder considers whether

the disputed element of the accused device performs

substantially the same function in substantially the same way

to achieve substantially the same result as the limitation at

issue in the patent. Ethicon Endo-Surgery, Inc. v. U.S.

Surgical Corp., 149 F.3d 1309, 1315 (Fed.Cir.1998); Wooster

Brush Co., 46 F.Supp.2d at 721.

The Supreme Court and Federal Circuit have cautioned

against a broad application of the doctrine of equivalents.

Warner-Jenkinson Co., 520 U.S. at 29 (emphasizing that

“the doctrine of equivalents, when applied broadly, conflicts

with the definitional and public-notice functions of the

statutory claiming requirement’); London, 946 F.2d at 1538;

K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1367

(Fed.Cir.1999); Ethicon Endo-Surgery, 149 F.3d at 1316.

The doctrine of equivalents cannot be employed in a manner

that vitiates a claim limitation. Scimed Life Sys., Inc. v.

Advanced Cardiovascular Sys., 242 F.3d 1337, 1347

(Fed.Cir.2001); K-2 Corp., 191 F.3d at 1367.

In Wooster Brush, the Northern District of Ohio granted

summary judgment of non-infringement, finding that an

accused device using only a single application of a bonding

material did not meet the equivalents test where the patent

called for two distinct, sequential applications of the bonding

material. Wooster Brush, 46 F.Supp.2d at 722. Because the

court’s comprehensive analysis is directly on point, it is set

out in full:

Plaintiff Wooster’s process for producing paint

rollers is accomplished in one step. Defendant

37a

Appendix B

Newell argues that Wooster’s one-step process

effectively collapses the ’242 patent’s two-step

process and is therefore not significantly different

from the ’242 process... .

[T]he ’242 process as construed by this Court

contains separate elements which produce the

final product. .. . Under the terms of the patent

claims, this process must occur in sequence.

In the New Wooster process, the formation of the

core and the adhesion of the cover to the core

occur simultaneously, facilitated by one

application of liquid thermoplastic material.

Wooster’s one-step process is not a combination

of the 242 patent’s elements; it does not represent

a more efficient way of applying two strips of

liquid thermoplastic material. Rather, it represents

a new method by which one of the two steps of

the ’242 patent—the second application of the

adhesive material and relevant cooling period—

is eliminated. To interpret Wooster’s process as

equivalent to the ’242 patent’s elements would

thus fly in the face of the Supreme Court’s

admonition that equivalence does not exist when

a finding of equivalence would eliminate an

element in the patented process.

Id. at 721.

Similar to the accused device in Wooster Brush, Avery’s

printed and single embossed liner is not a combination of

38a

Appendix B

the ’930 patent elements. Rather, it represents a new method

by which one of the steps of the °930 patent—the “first

embossed pattern” forming an array of depressions—is

removed. It is a process that produces positionability and air

egress without the claimed, sequential, multiple embossed

pattern. Because the doctrine of equivalents cannot be used

to vitiate a claim limitation, the doctrine of equivalents cannot

be used to bring Avery’s EZ Films within the scope of the

930 patent claims. Thus, the court grants Avery’s motion

for summary judgment because Avery’s EZ Films do not

infringe upon the ’930 patent either literally or under the

doctrine of equivalents.°®

CONCLUSION

Accordingly, IT IS HEREBY ORDERED that

defendant’s motion for summary judgment is granted.

Dated: October 19, 2002

s/ David S. Doty

David S. Doty, Judge

United States District Judge

6. Both independent claims 1 and 6 of the ’930 patent require a

first embossed pattern of depressions. Because these claims are not

infringed, none of the dependent claims can be infringed. Wahpeton

Canvas Co. v. Frontier Inc., 870 F.2d 1546, 1553 (Fed.Cir.1989)

(“It is axiomatic that dependent claims cannot be found infringed

unless the claims from which they depend have been found to have

been infringed.”).

39a

APPENDIX C — ORDER OF THE UNITED STATES

DISTRICT COURT FOR THE DISTRICT OF

MINNESOTA DATED FEBRUARY 15, 2002

UNITED STATES DISTRICT COURT

DISTRICT OF MINNESOTA

Civil No. 01-1781(DSD/FLN)

3M INNOVATIVE PROPERTIES COMPANY and

Minnesota Mining and Manufacturing Company,

Plaintiffs,

AVERY DENNISON CORPORATION,

Defendant.

Carolyn V. Peters, Esq., 3M Company, P.O. Box 33427, St.

Paul, MN 55133; Frank P. Porcelli, Esq., Kurt L. Glitzenstein,

Esq. and Fish & Richardson, Suite 31 00, 225 Franklin Street,

Boston, MA 02110; John C. Adkisson, Esq., R.J. Zayed, Esq.

and Fish & Richardson, 3300 Dain Bosworth Plaza, 60 South

Sixth Street, Minneapolis, MN 55402, counsel for plaintiffs.

David P. Pearson, Esq. and Winthrop & Weinstine, 3200

Minnesota World Trade Center, 30 East Seventh Street, St.

Paul, MN 55101; Jay R. Campbell, Esq. and Renner, Otto,

Boisselle & Sklar, 1621 Euclid Avenue, Cleveland, OH

44114; Roderick G Dorman, Esq., Lawrence M. Hadley, Esq.

and Hennigan, Bennett & Dorman, 601 Fi gueroa Street South,

Suite 3300, Los Angeles, CA 9001 7, counsel for defendant.

40a

Appendix C

ORDER

This matter is before the court upon plaintiff’s motion

for a preliminary injunction, defendant’s motion to submit

the supplemental declaration of Anthony McHugh, and

plaintiff’s motion for leave to submit the supplemental

declaration of Charles A. Calisto. Based on a review of the

file, record and proceedings herein, and for the reasons stated,

the court denies plaintiff’s motion for a preliminary

injunction, grants defendant’s motion to submit the

supplemental declaration of Anthony McHugh, and grants

plaintiff’s motion for leave to submit the supplemental

declaration of Charles A. Calisto.

BACKGROUND

This action involves the alleged infringement of a patent

relating to advanced commercial adhesive products. Plaintiff

3M Innovative Properties Company (“3M”) produces,

develops and markets adhesive-based products for the

commercial graphics industry. Defendant Avery-Dennison

Corporation (“Avery”) is a leading competitor in this market.

3M asserts that Avery’s “EZ Series Fleet Marketing Films”

infringes upon 3M’s Comply product, specifically United

States Patent No. 5,897,930 (the “ ’930 patent’’).

Commercial graphic materials are used for advertising,

logos and signs on the exterior of trucks, buses and other

large vehicles. Instead of traditionally painting the

advertisements onto the vehicles, computer generated logos

and murals are created and generated onto a layer of film.

Similar to a bumper sticker, the film has a “release liner”

4la

Appendix C

that when stripped off exposes a pressure-sensitive adhesive.

The large sheet of film is then placed onto the vehicle,

essentially “wrapping” the vehicle in the adhesive graphic.

The task of “wrapping” a vehicle with the film is one that

poses two problems: (1) positionability and (2) air

entrapment.

A. Positionability

The problem of positionability occurs when the film is

not correctly situated initially. There is a risk that the product

will wrinkle, tear, or stretch when it is repositioned. In 1993,

3M addressed this problem with its Controltac products.

Conventionally, the surfaces on both the release liner and

the adhesive film are smooth. Controltac products, on the

other hand, have a shaped release liner that imparts a special

contour to the surface of the adhesive. The surface of the

Controltac adhesive is covered with bumps or protrusions

that are made of glass beads and a small amount of adhesive.

These bumps, naked to the human eye, are only a few microns

high.!

Because these bumps project out from the surface of the

aggressive adhesive, they are the first to come into contact

1. The bumps on the adhesive surface are created with a special

release liner that has micron-scale depressions. Each depression in

the release liner will form one of the bumps on the adhesive film.

By spreading the mixture of both glass and adhesive across the release

liner, molds of glass beads are formed. A screen of aggressive

adhesive is then layered over these beads. In the final step of the

application process, when the release liner is peeled off, the glass

bumps remain stuck to the adhesive layer.

42a

Appendix C

with the application surface. Instead of immediately adhering

to the surface, because of the glass beads, the adhesive film

can be slid over the surface until it is in the desired location.

Once in place, the installer simply presses firmly down on

the adhesive film, allowing the aggressive adhesive

surrounding the beads to come into contact with the surface

to form a permanent bond.

B. Air Entrapment

Installers of large scale commercial graphics also face

the problem of air entrapment. When air becomes trapped

beneath the film, the graphic’s appearance may become

blemished by blisters or bubbles. To address this issue,

3M modified the adhesive surface by adding micron-scale

channels to the release liner to allow air to “bleed” out of the

edges of the adhesive film. The surface area of the release

liner above the depressions are called “lands.” A high spot

on the release liner creates a low spot on the adhesive film.

The release liner is disclosed and claimed in the ’930 patent.

C. 3M’s Patent

3M marketed products with these two features, glass

beads to better position the film and air channels to combat

air entrapment, as “Controltac Plus Graphic Films with

Comply Performance Adhesive Technology” (the Comply

products). 3M received a patent for the technology included

in the Comply products, patent °930. The language of

43a

Appendix .

claim 1 of 3M’s ’930 patent, the relevant claim in this action,

states:

A carrier web, comprising:

at least one surface that has a multiple embossed

pattern having a first embossed pattern and a

second embossed pattern, wherein the first

embossed pattern forms an array of depressions,

wherein the depressions of the first embossed

pattern in the second embossed pattern, wherein

the second embossed pattern comprises lands and

ridges between the lands, and wherein the height

of the ridges over the lands ranges from about 3

to 45 microns.

D. EZ Films

A leading competitor in commercial graphics, Avery

developed a product which targets the same market as

3M’s Comply product. 3M asserts that Avery’s recently

launched “EZ Series Fleet Marketing Films” (“EZ Films”)

infringe upon the ’930 patent.

Avery’s primary product in the commercial graphics

market has been its FT1000 product. This product was in

direct competition with 3M’s Comply products. In 1998,

Avery began developing a graphics film that addressed the

problem of air entrapment that it faced with the FT1000

product. As a result of this effort, Avery created and launched

EZ Films. EZ Films have a special release liner that has a

honeycomb pattern of micron-scale ridges surrounding

44a

Appendix C

hexagonal lands. The ridges and lands create the air channels

in the adhesive sheet. Additionally, the liner also has micron-

scale depressions that correspond to the bumps on the surface

of the adhesive strip. These bumps are created by depositing

raised liquid ink dots on the liner and then hardening the

dots through a UV curing process. In July 2001, Avery began

selling its EZ Films to buyers in the commercial graphics

market.

3M argues that the release liner on Avery’s EZ Films

product infringes upon claim 1 of the ’930 patent. 3M now

seeks to enjoin Avery from making and selling its EZ Series

Fleet Marking Films (“EZ Films”). 3M moves for a

preliminary injunction. Based upon a review of the file,

record and proceedings herein, and for the reasons stated,

the court denies plaintiff’s motion.’

DISCUSSION

I. Plaintiff’s Motion for a Preliminary Injunction

The grant or denial of a preliminary injunction is within

the discretion of the district court. Amazon.com. Inc. y.

Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed.Cir.

2001). As the moving party, 3M is entitled to a preliminary

injunction if it can succeed in showing: (1) a reasonable

likelihood of success on the merits, (2) irreparable harm if

an injunction is not granted, (3) a balance of hardships tipping

2. The court also grants Avery’s motion to submit the

supplemental declaration of Anthony McHugh and plaintiff’s motion

for leave to submit the supplemental declaration of Charles A. Calisto.

45a

Appendix C

in its favor and (4) the injunction’s favorable impact on the

public interest. See, e.g., id.; Purdue Pharma L.P. y.

Boehringer Ingelheim GmbH, 237 F.3d 1359, 1363 (Fed.Cir.

2001). None of these factors is dispositive. Amazon.com. Inc.

v. Barnesandnoble.com, Inc., 239 F.3d at 1350. Rather, the

court weighs each factor against the others and against the

form and magnitude of the relief sought. /d. (quoting

Hybritech, Inc. v. Abbott Labs., 849 F.2d 1446, 1451

(Fed.Cir.1988)). The Federal Circuit, however, has

emphasized that “a preliminary injunction is a drastic and

extraordinary remedy that is not to be routinely granted.”

Intel Corp. v. ULSI Sys. Tech., Inc., 995 F.2d 1566, 1568

(Fed.Cir. 1993). Here, the court denies plaintiff’s motion for

a preliminary injunction because plaintiff cannot establish a

likelihood of success on the merits or irreparable harm.

See Amazon.com, Inc., 239 F.3d at 1350 (‘‘a movant cannot

be granted a preliminary injunction unless it establishes both

of the first two factors, i.e., a likelihood of success on the

merits and irreparable harm.”); Vehicular Techs. Corp. v.

Titan Wheel Int'l, Inc., 141 F.3d 1084, 1088 (Fed.Cir.1998)

(“[Movant] had to establish both of the first of the first two

factors, 1.e., likelihood of success and irreparable harm, to

receive a preliminary injunction.”).

A. Likelihood of Success on the Merits

To establish the likelihood of success on the merits,

plaintiff must show that, in light of the presumptions and

burdens that will inhere at a trial on the merits, (1) plaintiff

will likely prove that defendant infringes upon its patent and

(2) plaintiff’s infringement claim will likely withstand

defendant’s challenges to the validity and the enforceability

of the patent. Vehicular Tech. Corp., 141 F.3d at 1088.

46a

Appendix C

1. Infringement

A product infringes on a patent if it contains every

limitation of any one claim or an equivalent of each limitation

not literally met. Dolly, Inc. v. Spalding & Evenflo Cos., Inc.,

16 F.3d 394, 397 (Fed.Cir.1994); Becton Dickinson & Co. v.

C.R. Bard, Inc., 922 F.2d 792, 796 (Fed.Cir.1990).

An infringement analysis requires two steps. The first is to

construe the meaning and the scope of the patent claims, a

step commonly referred to as claim construction. Southwall

Tech. Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575

(Fed.Cir.1995). The second is to determine whether the

accused invention infringes the patent claim as construed.

Markman vy. Westview Instruments, Inc., 52 F.3d 967, 976

(Fed.Cir.1995). While the first step is solely a question of

law to be determined by the court, the second step is one for

the trier of fact. Purdue, 237 F.3d at 1363; Cybor Corp. v.

FAS Techs., Inc., 138 F.3d 1448, 1454-55 (Fed.Cir.1998)

(en banc)

a. Claim Construction of the 930 Patent

Plaintiff contends that defendant is infringing upon claim

1 of the °930 patent. Claim 1 of the ’930 Patent provides:

A web carrier, comprising:

at least one surface that has a multiple embossed

pattern having a first embossed pattern and a

second embossed pattern, wherein the first

embossed pattern forms an array of depressions,

wherein the depressions of the first embossed

47a

Appendix C

pattern in the second embossed pattern, wherein

the second embossed pattern comprises lands and

ridges between the lands, and wherein the height

of the ridges over the lands ranges from about 3

to 45 um.

(Decl. of Adkisson, Ex. A, Col. 9, Ln. 31-42.) The parties

dispute two critical terms in claim 1: “multiple embossed

pattern” and “first embossed pattern ... of depressions.”

Defendant contends that these terms describe a product-by-

process patent requiring sequentially-created patterns with

tools having corresponding topographies (Def.’s Opp. to 3M’s

Mot. for a Prelim. Inj. at 12), while plaintiff asserts that these

terms describe the structure of the patent, not its process (P’s

Reply Mem. in Supp. of Mot. for Prelim. Inj. at 3-4). Those

two terms therefore require construction.

Claim construction involves ascertaining the true

meaning and scope of each claim as a matter of law.

3. A “true” product claim is one in which the product is defined

by structural characteristics only. Chisum, Chisum on Patents, § 8.05

(Matthew Bender 1999). Such a claim is infringed by a product falling

within the language of the claim, even though the infringing product

is made by a process substantially different than that employed by

the patentee. /d.; see, e.g., Dunn Wire-Cut Lug Brick Co. v. Toronto

Fire Clay Co., 259 F. 258, 261 (6th Cir.1919) (“Certain it is, in view

of the weight of authority and the latest decisions, that the inventor

of a new and useful product or article of manufacture may have a

patent which covers it and gives a monopoly upon it regardless of

great variations in the method of making...”). A “product-by-process”

claim is one in which the product is defined at least in part by

describing the method or process by which it is made. Chisum,

Chisum on Patents, § 8.05.

48a

Appendix C

See Markman v. Westview Instruments, Inc., 517 U.S. 370,

386 (1996). In determining the meaning of the terms of a

claim, the court considers “intrinsic” evidence, which

consists of the language of the claims, the specification of

the patent and the prosecution history. See Vitronics Corp. v.

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996).

If the meaning of the claim terms is not ambiguous and can

be determined from the intrinsic evidence, the court need

not rely on extrinsic evidence in rendering its claim

construction. See id. at 1583. Courts should give the words

of a claim their ordinary and accustomed meaning, unless it

appears that the inventor used them differently. See ZMI/

Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1579

(Fed.Cir.1988). Here, intrinsic evidence illustrates that the

terms “multiple embossed pattern” and “first embossed

pattern ... of depressions” describe a product-by-process

patent requiring sequential embossments.

(1) “Multiple Embossed Pattern”

As discussed, there is a hierarchy to the evidence to be

considered in claim construction: the claim language first,

then the patent specification and finally the file history.

Vitronics Inc., 90 F.3d at 1582-85. In this case, the language

of the claim, the patent specification and the file history

clearly show that the term “multiple embossed pattern”

defines a product-by-process patent requiring sequential

embossing patterns.

While the language of the claim does not mention the

word “sequential,” it nevertheless illustrates that the

term “multiple embossed pattern” requires sequential

49a

Appendix C

embossments. In particular, the claim provides for [a] web

carrier, comprising:

at least one surface that has a multiple embossed

pattern having a first embossed pattern and a

second embossed pattern... .”

(Adkisson Decl., Ex. A, Col. 9, Ins. 33-36.) The fact that

the language of claim 1 expressly refers to two separately-

created embossed patterns as “‘a first embossed pattern” and

a “second embossed pattern” clearly establishes from the

language of the claim alone that the term “multiple embossed

pattern” requires multiple embossments which are applied

one after the other. (/d. (emphasis added).)

Moreover, even if the claim’s language is ambiguous,

which it is not, the patent specification makes absolutely clear

that the term “multiple embossed pattern” mean sequential

embossments. As the court in Vitronics stated, and as plaintiff

cites, the patent specification is “[u]sually . . . dispositive;

it is the single best guide to the meaning of a disputed claim.”

Vitronics, 90 F.3d at 1582; (P’s Reply Mem. in Supp. of Mot.

for Prelim. Inj. at 2.); see also, United States v. Adams, 383

U.S. 39, 49 (1966) (“[w]hile the claims ... limit the

invention, and the specifications cannot be utilized to expand

the patent monopoly, . . . claims are to be construed in the

light of the specifications and both are to be read with a view

to ascertaining the invention.”); Autogiro Co. v. United States,

181 Ct.Cl. 55, 384 F.2d 391, 397-398 (1967) (“the

specification aids in ascertaining the scope and meaning of

the language employed in the claims inasmuch as words must

be used in the same way in both the claims and the

50a

Appendix C

specification.... The use of the specification as a

concordance for the claim is accepted by almost every court,

and is a basic concept of patent law.”’).

The specification defines the term “multiple embossed:”

“Multiple embossed” means two or more

embossing patterns that are superimposed on the

web to create a complex pattern of differing depths

of embossing.

(Adkisson Decl., Ex. A, Col. 2, In. 1-3.) Not only does that

definition on its face describe a product-by-process patent,

the definition specificaily requires two or more embossing

patterns. Moreover, that term read in the context of the rest

of the specification is consistent with the understanding that

“multiple embossed pattern” describes a product-by-process

requiring sequential steps. In fact, the language of the

sentence in the specification immediately following the

definition of the term “multiple embossed pattern” provides:

“Another aspect of the present invention is a carrier web

having at least one surface that is multiple, sequentially

embossed, wherein depressions created from the prior

embossing pattern(s) are substantially preserved during the

subsequent embossing pattern(s) . . .” Jd. (emphasis added).

Other language in the specification further emphasizes that

the term “multiple embossed pattern” in claim 1 means

sequential embossing steps:

« “Although the multiple embossing steps could

be combined into a single step with the design

of a suitable tool or mold, the advantage of

Sla

Appendix C

multiple steps is that the depressions formed

by the prior step(s) can be filled with a material

prior to the subsequent embossing step(s).

The number of same or different materials can

be as many as the number of sequential step(s)

or can be any subset of them.” (Adkisson

Decl., Ex. A., Col. 2, Ins. 11-17 (emphasis

added)).

—=—

‘An advantage of the present invention is to

create a means of sequential manufacturing

of articles using different depths of

depressions of the same or different

materials.” (Adkisson Decl., Ex. A, Col. 3, Ins.

16-18 (emphasis added)).

“A sequential manufacturing process for the

web 10 or liner 20 determines the order of the

embossings. The manufacturing of the double

embossed liner 20 actually requires the

formation of the smaller embossing pattern 26

first, followed by the formation of the larger

embossing pattern 24, second.” (Adkisson

Decl., Ex. A, Col. 5, Ins. 5-9.(emphasis

added)).

“Because the embossing of the pattern 26

occurs before the embossing of pattern 24, the

depths identified here are the cumulative

effects of both embossings, not necessarily

the height of the embossing tool.” (Adkisson

Decl., Ex. A, Col. 6, Ins. 16-24.(emphasis

added)).

52a

Appendix C

« “A multiple embossed web of the present

invention can be used for the formation of

materials that utilize the complex topography

of the surface of the web. Because the

multiple embossings of the web occur

sequentially, material can be placed in the

depressions caused by first pattern being

formed before the second embossing pattern

is applied.” (Adkisson Decl., Ex. A, Col. 6,

In. 64-Col. 7, In. 2.(emphasis added)).

The prosecution history further illustrates this

understanding. Plaintiff argues that because it took the word

“sequential” out of claim 1, the court would commit an error

of law pursuant to the theory of file wrapper estoppel to read

“sequential” back into the claim. Plaintiff’s argument is

unpersuasive, given the context of the prosecution history.

The examiner rejected the original claim 1, finding the claim

confusing. (Adkisson Decl., Ex. A, No. 4. at p. 3.) In response,

plaintiff filed claim | as “a multiple embossed pattern having

a first embossed pattern and a second embossed pattern. .. .”

In contrast to plaintiff’s assertion, the file history makes

absolutely clear that plaintiff’s patent requires a second

embossed pattern following a first embossed pattern.

The court therefore rejects plaintiff’s file wrapper estoppel

argument and finds that the term “multiple embossed pattern”

means sequential embossing patterns.‘

4. The court is well aware of the cannon of claim construction

providing that the court cannot import a limitation from the

specification’s general discussion. See, e.g., Transmatic, Inc. v.

Gulton Indus., Inc., 53 F.3d 1270, 1278 (Fed.Cir.1995) (finding the

(Cont’d)

53a

Appendix C

(2) “First Embossed Pattern ... of

Depressions”

The parties also dispute the meaning of the term

“first embossed pattern . . . of depressions.” While defendant

claims that the first embossed pattern consists of depressions

in the liner surface and that its ink deposits are embedded

rather than embossed into the liner surface (Def.’s Opp. to

3M’s Mot. for a Prelim. Inj. at 14), plaintiff fails to define

this term. Instead, plaintiff states that “the point is that Avery

subs quently presses these ‘ink deposits’ into the deformable

release liner, and from that point on, the liner has a ‘first

embossed pattern of . . . depressions.’” (P’s Reply Mem. in

Supp. of Mot. for Prelim. Inj. at 2.) Here, the specification

of the ’930 Patent expressly defines “embossed:”

“Embossed” means a topography on a web or on

tooling having an effective three-dimensional

(Cont’d)

district court “erred by importing unnecessary functional limitations

into the claim.”). The court, however, does not import a limitation

from the specification into the claim but instead reads the term

“multiple embossed pattern” in light of the specification’s language,

including the language about sequential embossing patterns, to

interpret the term “multiple embossed pattern.” See Young

Dental Mfg. Co. v. Q3 Special Prods., Inc., 112 F.3d 1137, 1143

(Fed.Cir.1997) (“Although limitations may not be read into the claims

from the specification, claims are to be read in view of the

specification of which they are a part.”); Ethicon Endo-Surgery, Inc.

v. United States Surgical Corp., 93 F.3d at 1578 (“the district court

did not import an additional limitation into the claim; instead, it

looked to the specification to aid its interpretation of a term already

in the claim, an entirely appropriate practice.”).

54a

Appendix C

pattern that generates a difference in surface planar

dimension in the liner or the tooling.

(Adkisson Decl., Ex. A., Col. 1, In. 60-64.) Based upon this

definition in the specification, the court concludes that the

meaning of the term “embossed” is a topography created on

material by impressing a corresponding inverse topography

on its surface.

While the court need not look to extrinsic evidence to

construe the term “embossed,” technical dictionaries support

this understanding of the term. See Bell Atlantic v. Covad

Communs. Group, Inc., 262 F.3d 1258, 1267 (Fed.Cir.2001)

(providing that courts may rely upon scientific dictionaries).

The TAPPI 1993-1994 Technical Information Sheets define

“embossing” as “creating a finish or design imparted by

compressing a material between matched rigid surfaces or

rigid and ductile surface having the desired raised or

depressed surface pattern.” (Hadley Decl., Ex. 6.) Moreover,

as defendant argues, plaintiff’s own witness agrees with that

definition of embossing:

Q. So embossing means creating a series of

impressions which are the inverse of a pattern

on the embossing tool?

A. That’s the way I would define it.

(Hadley Decl., Ex. 7, Calisto Dep. at p. 101.)

55a

Appendix C

b. Infringement

After the claims are construed as a matter of law, the

court must consider whether “a reasonable trier of fact could

find that every limitation in any construed claim at issue”

may be found in the accused devise. Unidynamics Corp. v.

Automatic Products Int’l, Ltd., 157 F.3d 1311, 1316-17

(Fed.Cir. 1998).

(1) Literal Infringement

Literal infringement of a claim occurs when every

limitation recited in the claim appears in the accused device,

or put differently, when “the properly construed claim reads

on the accused device exactly.” DeMarini Sports Inc. v.

Worth, Inc., 239 F.3d 1314, 1331 (Fed.Cir.2001) (quoting

Amhil Enters. Ltd. v. Wawa, Inc., 81 F.3d 1554, 1562

(Fed.Cir.1996)); Dolly, Inc., 16 F.3d at 397 (an accused device

must include every claim limitation of the claim). If just one

limitation is missing or is not met as claimed, there is no

literal infringement. London vy. Carson Pirie Scott & Co.,

946 F.2d 1534, 1539 (Fed.Cir.1991); Mas-Hamilton Group

v. La Gard, Inc., 156 F.3d 1206, 1211 (Fed.Cir.1998).

Here, the court finds that there is no literal infringement

because defendant’s liner does not have a “multiple embossed

pattern having a first embossed pattern and a second

embossed pattern.”° Instead, defendant deposits ink dots onto

5. The court need not address whether defendant’s liner contains

a “first embossed pattern ... of depressions” because defendant’s

liner does not contain “multiple embossed patterns” and thus no

infringement exists.

56a

Appendix C

the surface of a liner in a process know as “flexographic

printing.” Those ink dots are hardened on the liner through

UV curing. Defendant then uses a single embossing roller.

The liner with the ink dots passes through that single

embossing roller only once. The single roller, which has a

hexagonal pattern on its roller surface, simultaneously

embosses the hexagonal pattern into the liner and embeds

the ink dots into the liner. Because defendant’s liner contains

no multiple embossed pattern with a second embossed pattern

following a first embossed pattern, the court concludes that

plaintiff’s infringement claim fails.°

B. Irreparable Harm

The movant for a preliminary injunction must

demonstrate not only a reasonable likelihood of success on

the merits, but also a lack of adequate remedy at law or other

irreparable harm. H.H. Robertson Co. v. United Steel Deck

Inc., 820 F.2d 384, 390 (Fed.Cir.1987). Irreparable injuries

are those that are impossible to measure in monetary terms.

Atlas Powder Co. v. Ireco Chem., 773 F.2d 1230, 1233

(Fed.Cir.1985). A presumption of irreparable harm exists

“when a clear showing has been made of patent validity and

infringement.” H.H. Robertson Co., 820 F.2d at 390. Absent

this clear showing, the patentee must submit evidence and

reasoned analysis to support the argument that money

damages will be an inadequate remedy. Nutrition 21, 930

F.2d at 872.

6. Because plaintiff does not claim infringement under the

doctrine of equivalents, the court does not address this issue.

57a

Appendix C

Here, 3M does not have a presumption of irreparable

harm because it did not make a strong showing of patent

infringement. See Eli Lilly and Co., 82 F.3d at 1578 (finding

that movant is not entitled to presumption of irreparable harm

because movant “has not made a strong showing on the issue

of infringement.”). Since 3M did not meet its burden, 3M

must provide an independent showing of irreparable harm

in order to be entitled to a preliminary injunction. Roper

Corp. v. Litton Sys., Inc., 757 F.2d 1266, 1271 (Fed.Cir. 1985).

The court addresses each of 3M’s claims of irreparable harm

in turn and concludes that 3M cannot establish irreparable

harm.

1. Loss of Reputation, Good Will and Market

3M argues that it will suffer irreparable harm to its

reputation, good will and market share if Avery’s EZ Film is

allowed to remain on the market until trial. Loss of sales,

profits, and market share does not constitute irreparable harm,

absent special circumstances. Eli Lilly and Co. v. American

Cyanamid Co., 896 F.Supp. 851, 860 (S.D.Ind.1995).

Potential sales loss alone during pretrial litigation cannot

establish “manifest irreparable harm.” Such a position would

require a finding of irreparable harm to every patentee,

regardless of the circumstances. //linois Tool Works v. Grip-

Pak Inc., 906 F.2d 679, 683 (Fed.Cir.1990). Moreover, the

court.is not persuaded by 3M’s argument that its reputation

and goodwill will be damaged as 3M provides only

speculative evidence in the record to support this claim.

See Tech Wear, Inc. v. Acme Laundry Prods., Inc., 38

F.Supp.2d 1147, 1152 (C.D.Cal. 1998) (stating that allegations

58a

Appendix C

regarding lost market share and diminished reputation,

without supporting facts, are insufficient to establish

irreparable harm); Quickie Mfg. Corp. v. Libman Co., 180

F.Supp.2d 636 (D.N.J. 2002).

3M also asserts that the potential injury will be

difficult to calculate. “Neither the difficulty in calculating

losses in market share, nor speculation that such losses might

occur, amount to proof of special circumstances justifying

the extraordinary relief-of an injunction prior to trial.”

Nutrition 21, 930 F.2d at 871. Furthermore, the practical

reality of the commercial graphics market is that if 3M were

to bid for a particular project during the course of the action

and Avery won, the loss by 3M would be easily ascertainable

and compensable in monetary terms.

3M also argues that it will have fewer dollars to invest

in the research and development of its products if it is forced

to continue to compete with Avery throughout the litigation.

This argument is not compelling. It is difficult to imagine

any manufacturer with a research and development program

that could not make the same claim and thus be equally

entitled to preliminary relief. Eli Lilly, 82 F.3d at 1578.

2. Permanent Discounts

3M claims that it will be forced to permanently lower its

prices unless a preliminary injunction is immediately granted.

Because this kind of harm can be measured by monetary

damages, it does not constitute irreparable injury.

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Appendix C

3. Ability to Pay Monetary Damages

The court has found that an alleged infringer’s ability to

pay money damages for infringement during litigation is

strong evidence against a finding of irreparable harm.

Eli Lilly, 896 F.Supp. at 860; Nutrition 21, 930 F.2d at 871.

There is no basis for concluding that Avery will be unable to

satisfy an adverse judgment. In the record before the court,

there is the undisputed declaration of one of Avery’s

executives attesting to the company’s financial soundness

and ability to satisfy a monetary damage award. (Karavolos

Decl. at § 11.) 3M has not presented the court with clear

evidence that Avery is unable to meet possible future financial

obligations. In sum, the record before the court fails to

support 3M’s claim of irreparable injury or the inadequacy

of monetary damages.

C. Balance of Hardships

‘Plaintiff’s weak showing of likelihood of success on the

merits clearly tips the balance of hardships in defendant’s

favor. Moreover, granting a preliminary injunction may

damage defendant’s reputation, causing irreparable harm,

which may keep defendant’s product out of the market

permanently. See Alliance Research Corp. v. Telular Corp.,

859 F.Supp. 400, 405 (C.D.Cal.1994) (“The hardship on a

preliminarily enjoined manufacturer who must withdraw its

product from the market before trial can be devastating.”’)

(quoting Jilinois Tool Works, 906 F.2d at 683).

Conversely, plaintiff will suffer less harm if the court

denies its motion for a preliminary injunction than defendant

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Appendix C

will suffer if the court grants its motion. In light of the

relatively smaller hardship plaintiff will suffer if the court

denies plaintiff’s motion, the court concludes that the balance

of hardships titles in defendant’s favor.

D. Public Policy

Finally, public policy favors denying the preliminary

injunction. Public interest favors patent rights and

competitive markets. J/linois Tool Works, 906, F.2d at 684.

Allowing defendant to continue to sell its product encourages

competitive markets. It does so without sacrificing plaintiff’s

patent rights because, as the court has noted, plaintiff has

failed to show the likelihood of success on the merits. Public

policy therefore favors denying plaintiff’s motion for a

preliminary injunction. Thus, based on an analysis of all four

preliminary injunction factors, the court denies plaintiff’s

motion for a preliminary injunction.

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Appendix C

CONCLUSION

For the foregoing reasons, IT IS HEREBY ORDERED

that:

1. Plaintiff’s motion for a preliminary injunction

[Docket No. 19] is denied;

2. Defendant’s motion to submit the supplemental

declaration of Anthony McHugh [Docket No. 41] is granted;

and

3. Plaintiff’s motion for leave to submit the

supplemental declaration of Charles A. Calisto [Docket No.

46] is granted.

Dated: February 15, 2002

s/ David S. Doty

David S. Doty, Judge

United States District Court

62a

APPENDIX D — ORDER OF THE UNITED STATES

COURT OF APPEALS FOR THE FEDERAL CIRCUIT

DENYING PETITION FOR REHEARING FILED

JANUARY 20, 2004

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

(DCT — 01-CV-1781)

03-1203

3M V AVERY DENNISON

ORDER

A combined petition for panel rehearing and for rehearing

en banc having been filed by the APPELLEE, and the petition

for rehearing having been referred to the panel that heard

the appeal, and thereafter the petition for rehearing en banc

having been referred to the circuit judges who are in regular -

active service,

UPON CONSIDERATION THEREOF, it is

ORDERED that the petition for panel rehearing be, and

the same hereby is, DENIED and it is further

ORDERED that the petition for rehearing en banc be,

and the same hereby is, DENIED.

The mandate of the court will issue on January 27, 2004.

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Appendix D

Circuit Judge SCHALL did not participate in the vote.

_ FOR THE COURT,

s/ Jan Horbaly

Jan Horbaly

Clerk

Dated: January 20, 2004

cc: Frank P. Porcelli

Roderick G Dorman

64a

APPENDIX E — RELEVANT STATUTES

UNITED STATES CODE ANNOTATED

TITLE 35. PATENTS

PART II —- PATENTABILITY OF INVENTIONS AND

GRANT OF PATENTS

CHAPTER 11 —- APPLICATION FOR PATENT

35 U.S.C.A. § 112. — Specification

The specification shall contain a written description of

the invention, and of the manner and process of making and

using it, in such full, clear, concise, and exact terms as to

enable any person skilled in the art to which it pertains, or

with which it is most nearly connected, to make and use the

same, and shall set forth the best mode contemplated by the

inventor of carrying out his invention.

The specification shall conclude with one or more claims

particularly pointing out and distinctly claiming the subject

matter which the applicant regards as his invention.

A claim may be written in independent or, if the nature

of the case admits, in dependent or multiple dependent form.

Subject to the following paragraph, a claim in dependent

form shall contain a reference to a claim previously set forth

and then specify a further limitation of the subject matter

claimed. A claim in dependent form shall be construed to

incorporate by reference all the limitations of the claim to

which it refers.

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Appendix E

A claim in multiple dependent form shall contain a

reference, in the alternative only, to more than one claim

previously set forth and then specify a further limitation of

the subject matter claimed. A multiple dependent claim shall

not serve as a basis for any other multiple dependent claim.

A multiple dependent claim shall be construed to incorporate

by reference all the limitations of the particular claim in

relation to which it is being considered.

An element in a claim for a combination may be

expressed as a means or step for performing a specified

function without the recital of structure, material, or acts in

support thereof, and such claim shall be construed to cover

the corresponding structure, material, or acts described in

the specification and equivalents thereof.

PART III - PATENTS AND PROTECTION OF

PATENT RIGHTS

CHAPTER 28 —- INFRINGEMENT OF PATENTS

35 U.S.C. § 271(a). — Infringement of patent

(a) Except as otherwise provided in this title, whoever

without authority makes, uses, offers to sell, or sells

any patented invention, within the United States or

imports into the United States any patented

invention during the term of the patent therefor,

infringes the patent.

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Appendix E

UNITED STATES CODE ANNOTATED

TITLE 5. GOVERNMENT ORGANIZATION AND

EMPLOYEES

PART I - THE AGENCIES GENERALLY

CHAPTER 7 —- JUDICIAL REVIEW

5 U.S.C. § 706. — Scope of review

To the extent necessary to decision and when presented,

the reviewing court shall decide all relevant questions of law,

interpret constitutional and statutory provisions, and

determine the meaning or applicability of the terms of an

agency action. The reviewing court shall —

(1) compel agency action unlawfully withheld or

unreasonably delayed; and

(2) hold unlawful and set aside agency action, findings,

and conclusions found to be —

(A) arbitrary, capricious, an abuse of discretion, or

otherwise not in accordance with law;

(B) contrary to constitutional right, power;

privilege, or immunity;

or limitations, or short of statutory right;

- (D) without observance of procedure required by

law;

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Appendix E

(E) unsupported by substantial evidence in a case

subject to sections 556 and 557 of this title or

otherwise reviewed on the record of an agency

hearing provided by statute, or

(F) unwarranted by the facts to the extent that the

facts are subject to trial de novo by the

reviewing court.

In making the foregoing determinations, the court shall

review the whole record or those parts of it cited by a party,

and due account shall be taken of the rule of prejudicial error.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.