Opinion
00 Civ. 5960 (RMB)(AJP)
July 30, 2003
REPORT AND RECOMMENDATION
Revlon Consumer Products Corp. ("Revlon") brought this action alleging that certain makeup products sold by Estee Lauder Companies Inc., Estee Lauder, Inc., and Origins Natural Resources, Inc. (collectively, "Estee Lauder") infringe Revlon's patent entitled "Cosmetic Makeup Compositions Comprising Water-in-Oil Emulsions Containing Pigment," U.S. Patent No. 5,143,722 (the "'722 Patent" or the "Patent"). (Dkt. No. 1: Compl. ¶¶ 7-20; Dkt. No. 41: Joint Pretrial Order ["JPTO"] at 1.) Estee Lauder has moved for summary judgment dismissing all claims, alleging that: (1) its products do not literally infringe the '722 Patent, and (2) Revlon has not properly alleged infringement under the doctrine of equivalents, and, in any event, a claim of equivalence would be meritless. (Dkt. No. 50: Estee Lauder Br. at 1-3; Dkt. No. 57: Estee Lauder Reply Br. at 9-10.) Estee Lauder also has moved to strike the summary judgment affidavit of Revlon's expert. (Estee Lauder Reply Br. at 8.) Revlon has cross-moved for summary judgment on the ground that Estee Lauder's products infringe the '722 Patent (either literally or under the doctrine of equivalents), and has requested a Markman hearing to construe certain disputed language in the '722 Patent claims. (Dkt. No. 54: Revlon Br. at 1-3.)
The key issue in this case is construction of Revlon's claims for "a coated pigment . . . whose surfaces are chemically bonded to, and physically completely coated by, polysiloxane which coating renders the particles hydrophobic," and specifically the phrase "completely coated." Estee Lauder interprets the relevant language to mean 100% coated, while Revlon's interpretation only requires the pigments to be sufficiently coated so as to render the particles hydrophobic. For the reasons discussed below, the Court construes the claim language "completely coated" to have its ordinary meaning, i.e., 100% coated. As another court said in a similar patent case:
[Patent owner] argues that such an interpretation creates a situation wherein a [competitor] may avoid infringement by simply leaving a small portion of the [item] uncovered by coating material. However, the Court may not consider the fact that the patentee in retrospect would have inserted qualifying terms had he considered the implications of employing absolute language. No matter how great the temptations of fairness or policy making, courts are limited to interpreting claims, and are not permitted to redraft them.
Nichols v. Strike King Lure Co., No. Civ. A.3:99-CV-1950, 2000 WL 1593616 at *8 (N.D.Tex. Oct. 25, 2000); see also cases cited at pages 47-48 below.
For the reasons discussed below, this Court recommends: (1) granting Estee Lauder's motion to strike portions of the summary judgment affidavit of Revlon's expert; (2) construing the claim language at issue to mean that the pigment surfaces must be 100% coated with polysiloxane; (3) granting Estee Lauder summary judgment of non-infringement; and (4) denying Revlon's summary judgment motion.
BACKGROUND
"The '722 Patent describes an invention wherein significant amounts of pigments are incorporated in a water-in-silicone oil emulsion" (Dkt. No. 52: Revlon 56.1 Stmt. ¶ 4), resulting in "makeup compositions [that] have a rich feel, spread easily, dry quickly and leave skin soft and natural to the touch" (Dkt. No. 1: Compl. ¶ 8). "The cosmetic compositions of the present invention are useful in a variety of makeup products such as foundations, eyeshadows, blushes, and the like." (Compl. Ex. 1: '722 Patent at Col. 2, Lns. 22-24.)
"The '722 patent issued from a series of five patent applications, the first of which was filed with the United States Patent Trademark Office ['PTO'] on December 19, 1986. . . ." (Dkt. No. 41: JPTO Ex. 1: Joint Stmt. of Undisputed Facts ["Joint Facts"] ¶ 5; see Dkt. No. 60: Revlon Reply Br. Ex. W: 12/19/86 Patent Application.) The '722 Patent ultimately issued on September 1, 1992 (Joint Facts ¶¶ 2, 13), and was assigned to Revlon (Revlon 56.1 Stmt. ¶ 3). (See '722 Patent.) Based on an amendment dated October 9, 1998 (Dkt. No. 55: Estee Lauder 56.1 Obj. Ex. M), a Reexamination Certificate was issued by the PTO on August 24, 1999 (Joint Facts ¶ 4; see Compl. Ex. 3:8/24/99 Reexamination Certificate).
Revlon has limited its assertion of infringement to claims 1, 5, and 7 of the '722 Patent. (Dkt. No. 46:1/22/02 Order; Joint Facts ¶ 3.) Claim 1 of the '722 Patent reads in relevant part:
1. A cosmetic make-up composition which is a water-in-oil emulsion comprising
a) an oil phase which comprises
i) About 2 to 50% by weight of the oil phase of a coated pigment consisting essentially of finely divided particles of pigment whose surfaces are chemically bonded to, and physically completely coated by, polysiloxane which coating renders the particles hydrophobic. . . .
('722 Patent at Col. 9, Lns. 17-26, emphasis added; see also Compl. Ex. 3: '722 Reexamination at Col. 1, Lns. 24-32.)
Claim 5 of the '722 Patent reads in relevant part:
5. A cosmetic make up composition which is a water-in-oil emulsion comprising
(a) an oil phase which comprises
(i) about 2-50% by weight of the oil phase of a coated pigment consisting essentially of finely divided particles of talc, mica, titanium dioxide, ferric oxide, ferrous oxide, kaolin, ultramarine, chromium oxide, chromium hydroxide, zinc oxide, silica, manganese violet, organic pigments, or mixtures thereof; whose surfaces are chemically bonded to and physically completely coated by a polysiloxane selected from the group consisting of polymethyl hydrogen siloxane and mineral oil, polydimethylsiloxane, methyltrimethyoxysilane, polymethyl hydrogen siloxane, or mixtures thereof, which coating renders the particles hydrophobic. . . .
('722 Patent at Col. 10, Lns. 26-42, emphasis added; see also '722 Reexamination at Col. 2, Lns. 23-39.) Claim 7 of the '722 Patent incorporates the above language from Claim 5. ('722 Patent at Col. 10, Lns. 58-61; see also '722 Reexamination at Col. 2, Lns. 57-60.)
Whether Estee Lauder infringed the Patent turns on construction of the following language from Claim 1, which is substantially repeated in Claims 5 and 7: "a coated pigment . . . whose surfaces are chemically bonded to, and physically completely coated by, polysiloxane which coating renders the particles hydrophobic." ('722 Patent, Claim 1.)
Estee Lauder construes this language "to mean that the surfaces of the pigment are chemically bonded to and physically completely covered by the coating material (polysiloxane) that is bonded to the pigment surfaces so that no portion of the pigment's surfaces is uncovered and that this full coating renders that pigment hydrophobic." (Dkt. No. 49: Estee Lauder Proposed Order at 1; see also Dkt. No. 50: Estee Lauder Br. at 2-3.) In other words, according to Estee Lauder, the Patent requires both that the pigment particle surfaces be 100% coated by polysiloxane and that such coating render the pigment particle hydrophobic.1/ Estee Lauder asserts that since it is undisputed that the surfaces of the pigment particles in Estee Lauder's products are not 100% coated by polysiloxane, Estee Lauder does not infringe the Patent. (Dkt. No. 50: Estee Lauder Br. at 6; see Dkt. No. 55: Estee Lauder 56. Obj. ¶ 20: "The accused products are coated with polysiloxane and they are hydrophobic. The accused products do not contain pigments physically completely coated by polysiloxane.").
Hydrophobic is defined as "[n]ot capable of uniting with or absorbing water." Webster's New World Dictionary Third College Edition at 662 (1994); see also American Heritage Dictionary of the English Language at 861 (4th ed. 2000) ("Repelling, tending not to combine with, or incapable of dissolving in water.").
By contrast, Revlon asserts that the disputed claim language means that the pigment particles are "physically completely coated by polysiloxane so as to render the particles hydrophobic, consistent with the hydrophobicity test provided within the patent specification. . . ." (Dkt. No. 53: Revlon Proposed Order at 2.) Under Revlon's interpretation, the Patent does not require that the pigments be 100% coated, but merely "that the pigments be coated by polysiloxane, to render the particles hydrophobic." (Dkt. No. 54: Revlon Br. at 3.)
In support of their positions, both parties reference the '722 Patent specification, which provides in relevant part:
The hydrophobic coated pigments useful in the present invention have one of the following formulas:. . . .
The number of polysiloxane chains of formulas (3), (4), and (5) that are bonded to the pigment surface is not known but is sufficiently high to coat the pigment completely and render it completely hydrophobic. Hydrophobicity can readily be determined by placing the coated pigment into water and observing whether any becomes dispersed or suspended in the water.
Suitable pigments include all inorganic and organic pigments or fillers which are usable in cosmetic formulations. . . .
The pigment (or a mixture of two or more pigments) can be coated by placing it in dry, finely divided form in a mixer and adding a silicone material. . . .
. . . .
. . . The relative amounts of fluid: pigment should be sufficient to coat the pigment particles. Generally a fluid pigment weight ratio is satisfactory for which 1-4 weight percent of the final product is silicone. The pigment and fluid are intimately mixed thoroughly to obtain a uniform dispersion of the fluid on the pigment, in which the fluid completely coats the particles of pigment. The slurrying operation is advantageously carried out at a temperature of 25° C. to 160° C. effective to promote hydrolysis and reaction of the silicone with the pigment. As an alternative to synthesis, satisfactory coated pigments usable in this invention are commercially available from a variety of sources.
('722 Patent at Col. 2 Ln. 42 through Col. 3 Ln. 65, emphasis added.)
ANALYSIS
I. "NEW" PORTIONS OF THE SUMMARY JUDGMENT AFFIDAVIT OF REVLON'S EXPERT SHOULD BE STRICKEN AS A DISCOVERY VIOLATION
At a hearing held on January 15, 2002, this Court precluded the "supplemental" expert report of Revlon's expert, Dr. Robert Lochhead, because the report was submitted in January 2002, more than five months after the expert discovery cutoff date. (Dkt. No. 56:1/15/02 Conf. Tr. 10:12-19, reproduced in Dkt. No. 55: Estee Lauder 56.1 Obj. Ex. J.) The Court also precluded Revlon from submitting, on any summary judgment motion, expert affidavits outside the scope of Dr. Lochhead's deposition testimony and his previously-submitted "preliminary" and "rebuttal" expert reports. (Id. at 10:20-11:1.) Revlon did not file objections to my ruling, thus waiving any such objections. See 28 U.S.C. § 636(b)(1); Fed.R.Civ.P. 72(a). (See also 1/15/02 Conf. Tr. 11:24-12:14, advising parties of rules re objections.)
The Court ruled that "[t]o the extent that . . .[Dr. Lochhead's] prior material[,] deposition or otherwise[,] covers any opinions, that is material that can be used on a summary judgment motion along with any affidavit from Dr. Lochhead that is consistent with his original and rebuttal report[,] but I am not going to allow an expansion of his opinions or the bases for his opinions at this late date in the case." (Id.)
Despite the Court's ruling, Revlon submitted a February 22, 2002 summary judgment affidavit by Dr. Lochhead (Dkt. No. 52: Revlon 56.1 Stmt. Ex. G) that asserts opinions beyond those contained in his earlier reports (Revlon 56.1 Stmt. Exs. G1 G2) and deposition testimony (see Dkt. No. 60: Revlon Reply Br. Exs. T, U V: Lochhead Dep.).
Revlon defends this by arguing that Estee Lauder included "new opinions" in the July 23, 2001 rebuttal report of its expert, Dr. Gerd H. Dahms, and that Dr. Lochhead's February 22, 2002 summary judgment affidavit merely responded to Dr. Dahms' new opinions. (Dkt. No. 60: Revlon Reply Br. at 5-6, citing Dkt. No. 48: Estee Lauder 56.1 Stmt. Ex. H: Dahms Rebuttal Expert Report.) Revlon's argument, however, is unavailing. Estee Lauder properly served Dr. Dahms' rebuttal report on July 23, 2001, prior to the close of expert discovery. (Estee Lauder 56.1 Stmt. Ex. H: Dahms Rebuttal Expert Report at 19 aff. of service; see Dkt. No. 31:5/21/01 Conf. Tr. at 3 (expert cutoff date of July 27, 2001).) Had Revlon wished to submit a surreply expert report in response to Dahms' rebuttal report (or to move to strike any allegedly new and improper material in Dr. Dahms' rebuttal report), Revlon should have done so prior to the expert discovery cutoff. Instead, Revlon waited until January 2002 — over five months after the close of expert discovery and on the eve of the deadline for filing summary judgment motions — to submit Dr. Lochhead's "supplemental" expert report, which report this Court precluded as untimely. (1/15/02 Conf. Tr. 10:12-19.) Moreover, the Court's January 15, 2002 order expressly prohibited just the sort of "end run" summary judgment affidavit that Dr. Lochhead ultimately submitted on February 22, 2002. (Id. at 10:20-11:1.)
Notably, Revlon has not moved to strike Dahms' rebuttal report.
The Court therefore grants Estee Lauder's motion to strike those portions of Dr. Lochhead's February 22, 2002 summary judgment affidavit that go beyond his preliminary report, rebuttal report and deposition testimony.
Estee Lauder moved to strike solely on the ground that Dr. Lochhead's affidavit contained new material, not on the ground that the affidavit contradicted his earlier deposition testimony or expert reports. Compare, e.g., Palazzo v. Corio, 232 F.3d 38, 43-44 (2d Cir. 2000) ("[I]n opposing summary judgment, a party who has testified to a given fact in his deposition cannot create a triable issue merely by submitting his affidavit denying the fact.").
The more difficult task is determining what portions of Dr. Lochhead's affidavit cover new ground — especially with respect to the "completely coated" issue — as Dr. Lochhead's reports appear to ignore the issue and his deposition testimony is often ambiguous. After carefully reviewing Dr. Lochhead's reports and deposition testimony, the Court finds that the following portions of Dr. Lochhead's summary judgment affidavit should be precluded as "new" opinions: (1) "one of ordinary skill would acknowledge that there would be uncoated surfaces on the molecular level" on pigment particles (Revlon 56.1 Stmt. Ex. G: Lochhead 2/22/02 Aff. ¶ 16); (2) "one of ordinary skill in the art would understand that pigment particles might agglomerate and break apart, and that such actions could create uncoated surfaces on a pigment" (id. ¶ 17); (3) "technical documents from manufacturers recognize that the treatment process by which the pigments are coated does not result in 100% coated pigments, and [Dr. Lochhead] would expect one of ordinary skill in the art to have the same understanding" (id. ¶ 18); (4) Dr. Lochhead is "not aware that there were any commercially available pigments that could be deemed 100% coated in 1986, nor [is he] aware of the existence of such products today" (id. ¶ 19); and (5) "[p]igments 'coated with polysiloxane so as to be rendered hydrophobic' were commercially available in 1986, and are commercially available today" (id. ¶ 20).
By contrast, the remainder of Dr. Lochhead's affidavit (relevant to the "completely coated" issue) appears to have been covered in his prior reports or testimony. For example, at his deposition, Dr. Lochhead testified that an incompletely coated pigment particle "could . . . still be hydrophobic" (Revlon Reply Br. Ex. T: Lochhead Dep. 363-66), which is similar to the opinion in his affidavit that "[a] person of 'ordinary skill in the art' relevant to the '722 patent would . . . know that an item that was less than 100% coated with polysiloxane could still be hydrophobic" (Lochhead 2/22/02 Aff. ¶ 15). Accordingly, the portions of Dr. Lochhead's affidavit (relevant to the "completely coated" issue) not itemized above as precluded may be considered on the summary judgment motions.
The parties dispute whether Dr. Lochhead's affidavit contains new analysis of certain product "batch cards." (Dkt. No. 57: Estee Lauder Reply Br. at 8, citing Lochhead 2/22/02 Aff. ¶ 6; Revlon Reply Br. at 6.) Given that Revlon submitted the (precluded) supplemental expert report for the express purpose of amending Dr. Lochhead's testimony as to the batch reports (see 1/15/02 Conf. Tr. at 4-7), Dr. Lochhead's most recent affidavit likely contains new information on that subject. The Court need not, however, decide whether that portion of his affidavit relating to the batch cards should be struck, as it is not relevant to the issues on the cross-motions being decided by this Court.
The Court notes, however, that the stricken portions of Dr. Lochhead's summary judgment affidavit merely adopt Estee Lauder's expert's opinions, which this Court has considered, and thus even if these portions of Dr. Lochhead's summary judgment affidavit were not stricken, the Court's construction of the Patent claims would not change, and the Court still would recommend granting summary judgment for Estee Lauder.
II. APPLICABLE SUMMARY JUDGMENT STANDARDS AND CHOICE OF LAW IN PATENT INFRINGEMENT CASES
A. Summary Judgment Standards
For additional decisions authored by this Judge discussing the summary judgment standard (for nonpatent cases) in language substantially similar to this section of this Report Recommendation, see, e.g., Fleet Capital Corp. v. Yamaha Motor Corp., 01 Civ. 1047, 2002 WL 31174470 at *10-11 n. 16 (S.D.N.Y. Sept. 26, 2002) (Peck, M.J.) ( cases cited therein); Viruet v. Citizen Advice Bureau, 01 Civ. 4594, 2002 WL 1880731 at *8-9 (S.D.N.Y. Aug. 15, 2002) (Peck, M.J.); Brown v. Cushman Wakefield, Inc., 01 Civ. 6637, 2002 WL 1751269 at *12-13 (S.D.N.Y. July 29, 2002) (Peck, M.J.), report rec. adopted, 235 F. Supp.2d 291 (S.D.N.Y. 2002) (Berman, D.J.); Hogan v. Metromail, 99 Civ. 11204, 2002 WL 373245 at *11-13 (S.D.N.Y. Mar. 8, 2002) (Peck, M.J.); Kennebrew v. New York City Housing Auth., 01 Civ. 1654, 2002 WL 265120 at *6-7 n. 4 (S.D.N.Y. Feb. 26, 2002) ( cases cited therein); Williams v. New York City Dep't of Sanitation, 00 Civ. 7371, 2001 WL 1154627 at *8-9 n. 4 (S.D.N.Y. Sept. 28, 2001) (Peck, M.J.); Gonzalez v. New York City Transit Auth., 00 Civ. 4293, 2001 WL 492448 at *6 (S.D.N.Y. May 9, 2001) (Peck, M.J.); Cobian v. New York City, 99 Civ. 10533, 2000 WL 1782744 at *7 (S.D.N.Y. Dec. 6, 2000) (Peck, M.J.), aff'd, No. 01-7575, 2002 WL 4594 at *1 (2d Cir. Dec. 21, 2001); Austin v. Ford Models, Inc., 95 Civ. 3731, 2000 WL 1752966 at *6 (S.D.N.Y. Nov. 29, 2000) (Peck, M.J.), aff'd, No. 01-7030, 2001 WL 1562070 at *1 (2d Cir. Dec. 4, 2001), cert. denied, 123 S.Ct. 189 (2002).
The court applies the same summary judgment standards to motions involving patent claims as it does to motions involving other types of claims. See, e.g., Becton Dickinson Co. v. C.R. Bard, Inc., 922 F.2d 792, 795-96 (Fed. Cir. 1990); Avia Group Int'l, Inc. v. L.A. Gear Calif., Inc., 853 F.2d 1557, 1560-61 (Fed. Cir. 1988); see also authorities cited in fn. 7 below.
Rule 56(c) of the Federal Rules of Civil Procedure provides that summary judgment "shall be rendered forthwith 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." Fed.R.Civ.P. 56(c); see also, e.g., Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 2509-10 (1986); Weinstock v. Columbia Univ., 224 F.3d 33, 41 (2d Cir. 2000), petition for cert. filed, No. 02-1524, 71 U.S.L.W. 3680 (U.S. Apr. 17, 2003); Lang v. Retirement Living Pub. Co., 949 F.2d 576, 580 (2d Cir. 1991).
The burden of showing that no genuine factual dispute exists rests on the party seeking summary judgment. See, e.g., Adickes v. S.H. Kress Co., 398 U.S. 144, 157, 90 S.Ct. 1598, 1608 (1970); Chambers v. TRM Copy Ctrs. Corp., 43 F.3d 29, 36 (2d Cir. 1994); Gallo v. Prudential Residential Servs., Ltd. P'ship, 22 F.3d 1219, 1223 (2d Cir. 1994). The movant may discharge this burden by demonstrating to the Court that there is an absence of evidence to support the non-moving party's case on an issue on which the non-movant has the burden of proof. See, e.g., Celotex Corp. v. Catrett, 477 U.S. at 323, 106 S.Ct. at 2552-53.
To defeat a summary judgment motion, the non-moving party must do "more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 1356 (1986). Instead, the non-moving party must "set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e); accord, e.g., Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. at 587, 106 S.Ct. at 1356; see also, e.g., Weinstock v. Columbia Univ., 224 F.3d at 41 (at summary judgment, "[t]he time has come . . . 'to put up or shut up'") (citations omitted).
In evaluating the record to determine whether there is a genuine issue as to any material fact, "[t]he evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor." Anderson v. Liberty Lobby, Inc., 477 U.S. at 255, 106 S.Ct. at 2513; accord, e.g., Chambers v. TRM Copy Ctrs. Corp., 43 F.3d at 36; Gallo v. Prudential Residential Servs., Ltd. P'ship, 22 F.3d at 1223. The Court draws all inferences in favor of the non-moving party only after determining that such inferences are reasonable, considering all the evidence presented. See, e.g., Apex Oil Co. v. DiMauro, 822 F.2d 246, 252 (2d Cir.), cert. denied, 484 U.S. 977, 108 S.Ct. 489 (1987). "If, as to the issue on which summary judgment is sought, there is any evidence in the record from any source from which a reasonable inference could be drawn in favor of the nonmoving party, summary judgment is improper." Chambers v. TRM Copy Ctrs. Corp., 43 F.3d at 37.
In considering a motion for summary judgment, the Court is not to resolve contested issues of fact, but rather is to determine whether there exists any disputed issue of material fact. See, e.g., Donahue v. Windsor Locks Bd. of Fire Comm'rs, 834 F.2d 54, 58 (2d Cir. 1987); Knight v. United States Fire Ins. Co., 804 F.2d 9, 11 (2d Cir. 1986), cert. denied, 480 U.S. 932, 107 S.Ct. 1570 (1987). To evaluate a fact's materiality, the substantive law determines which facts are critical and which facts are irrelevant. See, e.g., Anderson v. Liberty Lobby, Inc., 477 U.S. at 248, 106 S.Ct. at 2510. While "disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment[,] [f]actual disputes that are irrelevant or unnecessary will not be counted." Anderson v. Liberty Lobby, Inc., 477 U.S. at 248, 106 S.Ct. at 2510 (citations omitted); accord, e.g., Knight v. United States Fire Ins. Co., 804 F.2d at 11-12.
"The same standard applies where, as here, the parties filed cross-motions for summary judgment. . . . Moreover, even when both parties move for summary judgment, asserting the absence of any genuine issues of material fact, a court need not enter judgment for either party. Rather, each party's motion must be examined on its own merits, and in each case all reasonable inferences must be drawn against the party whose motion is under consideration." Morales v. Quintel Entm't, Inc., 249 F.3d 115, 121 (2d Cir. 2001) (citation omitted); accord, e.g., Barhold v. Rodriguez, 863 F.2d 233, 236 (2d Cir. 1988); Eastman Machine Co. v. United States, 841 F.2d 469, 473-74 (2d Cir. 1988). In this case, where plaintiff and defendants have cross-moved on the same claims, all factual inferences on a particular issue have been drawn in favor of the party against whom judgment is being entered.
B. Federal Circuit Law Applies to Patent Issues
When deciding issues in a patent case, a district court applies the law of the circuit in which it sits to nonpatent issues and the law of the Federal Circuit to issues of substantive patent law. In re Cambridge Biotech Corp., 186 F.3d 1356, 1368 (Fed. Cir. 1999); Amana Refrigeration, Inc. v. Quadlux, Inc., 172 F.3d 852, 856 (Fed. Cir. 1999). A "procedural issue that is not itself a substantive patent law issue is nonetheless governed by Federal Circuit law if the issue 'pertain[s] to patent law,' if it 'bears an essential relationship to matters committed to [the Federal Circuit's] exclusive control by statute,' or if it 'clearly implicates the jurisprudential responsibilities of [the Federal Circuit] in a field within its exclusive jurisdiction.'" Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359 (Fed. Cir.) (en banc) (citations omitted), cert. denied, 528 U.S. 1019, 120 S.Ct. 527 (1999); accord, e.g., Advanced Cardiovascular Sys., Inc. v. Medtronic, Inc., 265 F.3d 1294, 1303 (Fed. Cir. 2001) (the Federal Circuit "appl[ies] the law of the regional circuit to which the district court appeal normally lies unless 'the issue pertains to or is unique to patent law,' in which case [the Federal Circuit] will apply [its] own law to both substantive and procedural issues 'intimately involved in the substance of enforcement of the patent right.'").
C. Two Step Analysis: Claims Construction Then Determination of Infringement
"A two-step process is used in the analysis of patent infringement: first, the scope of the claims are determined as a matter of law, and second, the properly construed claims are compared to the allegedly infringing device to determine, as a matter of fact, whether all of the limitations of at least one claim are present, either literally or by a substantial equivalent, in the accused device." Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1323 (Fed. Cir. 2002); accord, e.g., CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1365 (Fed. Cir. 2002); Techsearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369-70, 1371 (Fed. Cir.), cert. denied, 123 S.Ct. 436 (2002); Renishaw PLC v. Marposs S.p.A., 158 F.3d 1243, 1247-48 (Fed. Cir. 1998); see, e.g., Markman v. Westview Instr., Inc., 517 U.S. 370, 384, 116 S.Ct. 1384, 1393 (1996). "Summary judgment of noninfringement is . . . appropriate where the patent owner's proof is deficient in meeting an essential part of the legal standard for infringement, because such failure will render all other facts immaterial." Techsearch, L.L.C. v. Intel Corp., 286 F.3d at 1369-70.
See generally Kenneth R. Adamo, et al., Survey of the Federal Circuit's Patent Law Decisions in 2000: Y2K In Review, 50 Am. U. L. Rev. 1435, 1441 (Aug. 2001) ("[O]ne reason for the prevalence of summary-judgment determinations may be the recent clarifications that claim construction is an issue of law, thereby making many infringement disputes amenable to summary-judgment determinations. . . . One thing is certain: the Federal Circuit has authorized, even encouraged, a liberal use of summary judgment to dispose of patent claims.").
The Court will first construe the relevant patent claim as a matter of law (Point III) and then determine whether a rational jury could find that Estee Lauder infringed the Patent either literally or under the doctrine of equivalents (Point IV).
III. CLAIM CONSTRUCTION A. Applicable Law Regarding Claim Construction
"[T]he construction of a patent, including terms of art within its claim, is exclusively within the province of the court." Markman v. Westview Instrs., Inc., 517 U.S. 370, 372, 116 S.Ct. 1384, 1387 (1996). "[T]he focus in construing disputed terms in claim language is not the subjective intent of the parties to the patent contract when they used a particular term. Rather the focus is on the objective test of what one of ordinary skill in the art at the time of the invention would have understood the term to mean." Markman v. Westview Instrs., Inc., 52 F.3d 967, 986 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384 (1996); see, e.g., Interactive Gift Exp., Inc. v. CompuServe Inc., 256 F.3d 1323, 1332 (Fed. Cir. 2001) ("Throughout the construction process, it is important to bear in mind that the viewing glass through which the claims are construed is that of a person skilled in the art.").
See Markman v. Westview Instrs., Inc., 52 F.3d at 987 ("Infringement litigation may involve multiple actions against different defendants none of whom has any personal knowledge of or participation in the PTO proceedings where the give and take that results in the negotiated claim language occurs. Thus there can be no search for the defendant party's intent. . . . [T]he subjective meaning that a patentee may ascribe to claim language is . . . not determinative. Thus, it is from the public record that a court should seek in a patent infringement case to find the meaning of claim language.").
"It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history. Such intrinsic evidence is the most significant source of the legally operative meaning of disputed claim language." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (citation omitted); accord, e.g., Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325-26 (Fed. Cir. 2002); Markman v. Westview Instrs., Inc., 52 F.3d at 979 ("'To ascertain the meaning of claims, we consider three sources: The claims, the specification, and the prosecution history.' 'Expert testimony, including evidence of how those skilled in the art would interpret the claims, may also be used.'") (citations omitted).
"[A] patent includes one or more 'claims,' which 'particularly poin[t] out and distinctly clai[m] the subject matter which the applicant regards as his invention.'" Markman v. Westview Instrs., Inc., 517 U.S. at 373, 116 S.Ct. at 1388 (quoting 35 U.S.C. § 112). "The specification contains a written description of the invention that must enable one of ordinary skill in the art to make and use the invention." Markman v. Westview Instrs., Inc., 52 F.3d at 979. The prosecution history "contains the complete record of all the proceedings before the Patent and Trademark Office." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d at 1582. "Extrinsic evidence consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman v. Westview Instrs., Inc., 52 F.3d at 980.
1. Intrinsic Evidence a. First, Look to the Claim Language
"All intrinsic evidence is not equal however." Interactive Gift Exp., Inc. v. CompuServe Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001). "First, [courts] look to the claim language." Id.; accord, e.g., Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002) ("We begin our claim construction analysis, as always, with the words of the claim."); Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1372 (Fed. Cir. 2001) ("We look first to the claim language itself, to define the scope of the patented invention."); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) ("The starting point for any claim construction must be the claims themselves."); Renishaw PLC v. Marposs S.p.A., 158 F.3d 1243, 1248 (Fed. Cir. 1998) ("the claims define the scope of the right to exclude; the claim construction inquiry, therefore, begins and ends in all cases with the actual words of the claim"); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)."As a starting point, the court gives claim terms their ordinary and accustomed meaning as understood by one of ordinary skill in the art." Hockerson-Halberstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d 951, 955 (Fed. Cir. 2000); accord, e.g., Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d at 1325 ("an inventor's claim terms take on their ordinary meaning," which "ordinary meaning must be determined from the standpoint of a person of ordinary skill in the relevant art"); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) ("Generally speaking, [courts] indulge a 'heavy presumption' that a claim term carries its ordinary and customary meaning."); Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1578 (Fed. Cir.) (the court assigns a claim term the meaning "that it would be given by persons experienced in the field of the invention"), cert. denied, 519 U.S. 911, 117 S.Ct. 275 (1996).
"If the claim language is clear on its face, then our consideration of the rest of the intrinsic evidence is restricted to determining if a deviation from the clear language of the claims is specified." Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d at 1331.
See, e.g., CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d at 1366-67 (The "heavy presumption" that terms should receive their ordinary meaning can be overcome.); cf. Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d at 1325 ("The ordinary meaning of a claim term may be determined by reviewing a variety of sources, including the claims themselves, other intrinsic evidence including the written description and the prosecution history, and dictionaries and treatises.") (citations omitted).
"[I]f the ordinary and accustomed meaning of a disputed term would deprive the claim of clarity, then further reference must be made to the intrinsic — or in some cases, extrinsic — evidence to ascertain the proper meaning." K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999); accord, e.g., CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d at 1367 ("a claim term . . . will not have its ordinary meaning if the term 'chosen by the patentee so deprive[s] the claim of clarity' as to require resort to the other intrinsic evidence for a definite meaning"); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d at 1325 ("The specification may assist in resolving ambiguity where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone."); Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d at 1331-32 ("If . . . the claim language is not clear on its face, then our consideration of the rest of the intrinsic evidence is directed to resolving, if possible, the lack of clarity.").
b. The Specification
"Claims must be read in view of the specification, of which they are a part. . . . For claim construction purposes, the description may act as a sort of dictionary, which explains the invention and may define terms used in the claims." Markman v. Westview Instrs., Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384 (1996); accord, e.g., Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) ("[A]n inventor may choose to be his own lexicographer if he defines the specific terms used to describe the invention 'with reasonable clarity, deliberateness, and precision.'") (quoting In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ("[I]t is always necessary to review the specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning. The specification acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication."). "Such a definition may appear in the written description . . . or in the prosecution history. . . ." Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d at 1325; accord, e.g., CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) ("[T]he claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history.").
The specification's "written description can provide guidance as to the meaning of the claims, thereby dictating the manner in which the claims are to be construed, even if the guidance is not provided in explicit definitional format." SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1344 (Fed. Cir. 2001) (limiting claim term based in part on statements in the specification indicating that "all embodiments" of the claimed invention used a particular structure); accord, e.g., Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d at 1325 ("The patentee may demonstrate an intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope."). Thus, a claim interpretation that excluded the preferred embodiment of the invention "is rarely, if ever, correct and would require highly persuasive evidentiary support." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d at 1583; accord, e.g., Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1377-78 (Fed. Cir. 2001); Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1343 (Fed. Cir. 2001); Modine Mfg. Co. v. United States Int'l Trade Comm'n, 75 F.3d 1545, 1550 (Fed. Cir.) ("[A] claim interpretation that would exclude the inventor's device is rarely the correct interpretation; such an interpretation requires highly persuasive evidentiary support . . ."), cert. denied, 518 U.S. 1005, 116 S.Ct. 2523 (1996); Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1581 (Fed. Cir.) ("We share the district court's view that it is unlikely that an inventor would define the invention in a way that excluded the preferred embodiment, or that persons of skill in this field would read the specification in such a way."), cert. denied, 519 U.S. 911, 117 S.Ct. 275 (1996).
"However, in looking to the specification to construe claim terms, care must be taken to avoid reading 'limitations appearing in the specification . . . into [the] claims.'" Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d at 1331 (quoting Intervet Am., Inc. v. Kee-Vet Labs., Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989)). "[T]he claims must be read in view of the specification, . . . but limitations from the specification are not to be read into the claims." Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d at 1326.
c. Prosecution History
Aside from the specification, "the prosecution history may demonstrate that the patentee intended to deviate from a term's ordinary and accustomed meaning, i.e., if it shows the applicant characterized the invention using words or expressions of manifest exclusion or restriction during the administrative proceedings before the Patent and Trademark Office." Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1326 (Fed. Cir. 2002); accord, e.g., Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001) (the prosecution history "determine[s] whether the patentee has relinquished a potential claim construction in an amendment to the claim or in an argument to overcome or distinguish a reference"); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); Markman v. Westview Instrs., Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc) (Prosecution history is of "primary significance in understanding the claims" and should be consulted to "ascertain the true meaning of language used in the patent claims. . . . Although the prosecution history can and should be used to understand the language used in the claims, it too cannot 'enlarge, diminish, or vary' the limitations in the claims."), aff'd, 517 U.S. 370, 116 S.Ct. 1384 (1996).
2. The Use of Extrinsic Evidence is Limited
"Extrinsic evidence is that evidence which is external to the patent and file history, such as expert testimony, inventor testimony, dictionaries, and technical treatises and articles." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996); accord, e.g., Markman v. Westview Instrs., Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384 (1996). Because claim construction is exclusively within the Court's province and looks to an "objective test" based on the public record rather than the subjective intent of the patent drafters, Markman v. Westview Instrs., Inc., 52 F.3d at 986, the use of extrinsic evidence in claim construction is quite limited. The Federal Circuit recently reaffirmed that:
[E]xtrinsic evidence in general, and expert testimony in particular, may be used only to help the court come to the proper understanding of the claims; it may not be used to vary or contradict the claim language. Where the patent documents are unambiguous, expert testimony regarding the meaning of a claim is entitled to no weight. Any other rule would be unfair to competitors who must be able to rely on the patent documents themselves, without consideration of expert opinion that then does not even exist, in ascertaining the scope of a patentee's right to exclude. Thus, where the patent documents are unambiguous, reliance upon the testimony of [plaintiff's] expert witness would be improper.
Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1212 (Fed. Cir. 2002) (citations internal quotations omitted), cert. denied, 123 S.Ct. 2230 (2003).
Extrinsic evidence can of course be used where the patent language itself is ambiguous: "in the rare circumstance that the court is unable to determine the meaning of the asserted claims after assessing the intrinsic evidence, it may look to additional evidence that is extrinsic to the complete document record to help resolve any lack of clarity." Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1269 (Fed. Cir. 2001); accord, e.g., Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119-20 (Fed. Cir. 2002) (district court erred by not resorting to extrinsic evidence to clear up ambiguity regarding definition of the word "substantially" to one skilled in the art).
See also, e.g., AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1248-49 (Fed. Cir. 2001) ("This case presents a good example of how extrinsic evidence can and should be used to inform a court's claim construction, and how failure to take into account the testimony of persons of ordinary skill in the art may constitute reversible error." Rather than varying or contradicting the claim language, the expert "testimony explains, corroborates, and reinforces the distinction recited in the written description between 'layer' and 'interlayer.'" "To the extent that the brief statement in the specification of the '532 patent may have been vague or ambiguous as to whether the claim term 'layer' should be defined differently than 'interlayers,' the trial court should have considered the testimony presented in the Markman hearing and set forth a definition of 'layer' that distinguishes between 'layers' and 'interlayers.'"); Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716-18 (Fed. Cir. 1998) ("[A] trial court is quite correct in hearing and relying on expert testimony on an ultimate claim construction question in cases in which the intrinsic evidence (i.e., the patent and its file history — the 'patent record') does not answer the question. . . ." "[T]he resort to and use of extrinsic evidence in this case was entirely appropriate" where intrinsic evidence did not "establish the numerical range of amounts represented by the [claim] term 'pharmaceutically effective amount.'").
A clear tension nevertheless inheres between (1) the statutory admonition that patent language be construed from the perspective of one "skilled in the art," 35 U.S.C. § 112, and (2) the rule prohibiting reliance upon extrinsic evidence to vary or contradict unambiguous claim language. Certain exceptions to the limits on use of extrinsic evidence have arisen.
a. Dictionaries
First, courts have repeatedly held that although dictionaries are "technically extrinsic evidence," they may be consulted "at any time to help determine the meaning of claim terms." Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1459 (Fed. Cir. 1998) (en banc) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 n. 6 (Fed. Cir. 1996)); accord, e.g., Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001) ("Dictionaries and technical treatises . . . hold a 'special place' and may sometimes be considered along with the intrinsic evidence when determining the ordinary meaning of claim terms."); Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1332 n. 1 (Fed. Cir. 2001) (same).
Indeed, the Federal Circuit recently implied that "[d]ictionaries, encyclopedias and treatises, publicly available at the time the patent is issued," were not actually extrinsic evidence and thus escaped the usual limitations:
As resources and references to inform and aid courts and judges in the understanding of technology and terminology, it is entirely proper for both trial and appellate judges to consult these materials at any stage of a litigation, regardless of whether they have been offered by a party in evidence or not. Thus, categorizing them as "extrinsic evidence" or even a "special form of extrinsic evidence" is misplaced and does not inform the analysis.
Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202-03 (Fed. Cir. 2002), cert. denied, 123 S.Ct. 2230 (2003).
b. Use of Extrinsic Evidence, Especially Expert Testimony, to Understand the Technology
"Extrinsic evidence may always be consulted . . . to assist in understanding the underlying technology." Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1332 (Fed. Cir. 2001) (citing cases). "[T]rial courts generally can hear expert testimony for background and education on the technology implicated by the presented claim construction issues, and trial courts have broad discretion in this regard. . . . What is disapproved of is an attempt to use extrinsic evidence to arrive at a claim construction that is clearly at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history, in other words, with the written record of the patent." Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1999); accord, e.g., Markman v. Westview Instrs., Inc., 52 F.3d 967, 986 (Fed. Cir. 1995) (en banc) ("A judge is not usually a person conversant in the particular technical art involved and is not the hypothetical person skilled in the art to whom a patent is addressed. Extrinsic evidence, therefore, may be necessary to inform the court about the language in which the patent is written. But this evidence is not for the purpose of clarifying ambiguity in claim technology. It is not ambiguity in the document that creates the need for extrinsic evidence but rather unfamiliarity of the court with the terminology of the art to which the patent is addressed."), aff'd, 517 U.S. 370, 116 S.Ct. 1384 (1996).
Tension remains over the use of expert testimony to construe seemingly unambiguous claim language, however, as it is difficult to draw a clear distinction between "hearing" expert testimony for background information and "using" such testimony to construe (and thus perhaps vary) a claim. Language that may seem perfectly unambiguous to a federal judge may, in reality, be open to different reasonable interpretations by one skilled in the art. Because claim language must be construed from the vantage of one skilled in the art, the expert's construction may be the only true meaning of the patent language, even though from a layperson's viewpoint the expert's construction clearly appears to "vary or contradict" the claim language. This would seem to require actual reliance on expert testimony to construe even seemingly unambiguous claim language.
Compare Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d at 1332 (Expert testimony may not be "relied" upon unless the "'claim language remains genuinely ambiguous after consideration of the intrinsic evidence.' 'Such instances will rarely, if ever, occur.'") (collecting cases); Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1267-69 (Fed. Cir. 2001) ("if the meaning of the claim limitation is apparent from the intrinsic evidence alone, it is improper to rely on extrinsic evidence other than that used to ascertain the ordinary meaning of the claim limitation" such as dictionaries and technical treatises); Northern Telecom Ltd. v. Samsung Elec. Co., 215 F.3d 1281, 1295 (Fed. Cir. 2000) ("extrinsic evidence is rarely, if ever, probative of a special and particular definition of a limitation found in a claim . . . because extrinsic evidence 'may not be used to vary or contradict the claim language' as discerned from the intrinsic record"); with Generation II Orthotics Inc. v. Medical Tech. Inc., 263 F.3d 1356, 1366 (Fed. Cir. 2001) ("[I]t is important to bear in mind that the viewing glass through which the claims are construed is that of a person skilled in the art. . . . 'Although the patent file may often be sufficient to permit the judge to interpret the technical aspects of the patent properly, consultation of extrinsic evidence is particularly appropriate to ensure that his or her understanding of the technical aspects of the patent is not entirely at variance with the understanding of one skilled in the art.'"); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308-09 (Fed. Cir. 1999) (Courts are not prohibited "from examining extrinsic evidence, even when the patent document is itself clear." "[I]t is entirely appropriate, perhaps even preferable, for a court to consult trustworthy extrinsic evidence to ensure that the claim construction it is tending to from the patent file is not inconsistent with clearly expressed, plainly apposite, and widely held understandings in the pertinent technical field. This is especially the case with respect to technical terms, as opposed to non-technical terms in general usage or terms of art in the claim-drafting art, such as 'comprising.' Indeed, a patent is both a technical and a legal document. While a judge is well-equipped to interpret the legal aspects of the document, he or she must also interpret the technical aspects of the document, and indeed its overall meaning, from the vantage point of one skilled in the art. . . . Although the patent file may often be sufficient to permit the judge to interpret the technical aspects of the patent properly, consultation of extrinsic evidence is particularly appropriate to ensure that his or her understanding of the technical aspects of the patent is not entirely at variance with the understanding of one skilled in the art. . . . In the instant case, therefore, had the district court relied upon the extrinsic evidence to contradict the claim construction unambiguously apparent from the intrinsic evidence it would have been error. However, we do not doubt the district court's express statements that it did not rely on extrinsic evidence in its claim construction."); Desper Prods., Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1333 (Fed. Cir. 1998) ("Extrinsic evidence, that is, evidence outside the record before the [PTO], such as expert testimony about how those skilled in the art would interpret certain language in the claim, may also be considered when appropriate as an inherent part of the process of claim construction and as an aid in arriving at the proper construction of the claim, but may not be used to vary or contradict the otherwise unambiguous meaning of the claim."); Tanabe Seiyaku Co. v. U.S. Int'l Trade Comm'n, 109 F.3d 726, 732 (Fed. Cir.) ("Extrinsic evidence, that is, evidence outside the record before the PTO, such as expert testimony about how those skilled in the art would interpret certain language in the claim, may also be considered when appropriate as an inherent part of the process of claim construction and as an aid in arriving at the proper construction of the claim."), cert. denied, 522 U.S. 1027, 118 S.Ct. 624 (1997); Markman v. Westview Instrs., Inc., 52 F.3d at 980-81 (Extrinsic "evidence may be helpful to explain scientific principles, the meaning of technical terms, and terms of art that appear in the patent and prosecution history. Extrinsic evidence may demonstrate the state of the prior art at the time of the invention. It is useful 'to show what was then old, to distinguish what was new, and to aid the court in the construction of the patent.' The court may, in its discretion, receive extrinsic evidence in order 'to aid the court in coming to a correct conclusion' as to the 'true meaning of the language employed' in the patent." "Extrinsic evidence is to be used for the court's understanding of the patent, not for the purpose of varying or contradicting the terms of the claims.") (citations omitted); cf. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1474-75 (Fed. Cir. 1998) (en banc) (Rader, C.J., dissenting) ("Under the guise of setting standards for claim construction, this court instructs experienced trial judges that they may use experts to understand, but not to interpret, the claim terms. As a matter of logic, this instruction is difficult to grasp. What is the distinction between a trial judge's understanding of the claims and a trial judge's interpretation of the claims to the jury? . . . As this court acknowledges, a trial court must often resort to experts to learn complex new technologies. . . . What happens when that learning influences a trial judge's interpretation of the claim terms? Are trial judges supposed to disguise the real reasons for their interpretation?").
See Cybor Corp. v. FAS Techs., Inc., 138 F.3d at 1475 (Rader, C.J., dissenting) ("The objective of claim interpretation is to discern the meaning of the claim terms to one of ordinary skill in the art at the time of invention. What then defeats the relevance of the testimony of one of skill in the art at the time of invention? Of course this relevant testimony must not conflict with or attempt to trump contemporaneous intrinsic evidence from the patent document itself, but both trial and appellate judges are poised to halt that abuse. . . . [I]t seems a contradiction to bar those of skill in the art at the time of invention from a search for the meaning of terms to one of skill in the art at the time of the invention. In effect, the en banc opinion has sub silentio redefined the claim construction inquiry as 'how a lawyer or judge would interpret the term.'") (citations omitted); John R. Lane Christine A. Pepe, Living Before, Through, and With Markman: Claim Construction as a Matter of Law, 1 Buff. Intell. Prop. L.J. 59, 69 (Summer 2001) ("[T]he Federal Circuit has been careful . . . to avoid too much endorsement of expert evidence, since it is inherently factual in nature and in reality requires the court to make credibility determinations. Therefore, the fiction now exists that expert testimony is acceptable to educate the court, but is not 'admissible' in the traditional sense as evidence subject to fact-based credibility determinations and standards of review."); Kenneth R. Adamo, et al., Survey of the Federal Circuit's Patent Law Decisions in 2000: Y2K in Review, 50 Am. U. L. Rev. 1435, 1602 (Aug. 2001) ("One knotty question that has continued since the Federal Circuit's 1995 Markman decision is this: Since a patent is to be interpreted (at least according to some panels) from the vantage point of one of ordinary skill in the relevant art, how should courts use extrinsic evidence, such as expert or inventor testimony, to gauge how one of ordinary skill in the art would read the claim? In other words, since a judge is not one of ordinary skill in the relevant art, can he or she rely on extrinsic evidence in order to understand how that ordinarily skilled professional might read the claims? The answer is unclear.").
Nevertheless, the Federal Circuit's cardinal rule is well-settled and governs this action: "[e]xtrinsic evidence is to be used for the court's understanding of the patent, not for the purpose of varying or contradicting the terms of the claims." Markman v. Westview Instrs., Inc., 52 F.3d at 981, 985 ("Parol or other extrinsic evidence cannot add, subtract, or vary the limitations of the claims."); accord, e.g., Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d at 1269 ("[A]dditional extrinsic evidence [such] as expert testimony, articles, and inventor testimony . . . may be used only to assist in the proper understanding of the disputed limitation; it may not be used to vary, contradict, expand, or limit the claim language from how it is defined, even by implication, in the specification or file history."); Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d at 1332 ("extrinsic evidence may never be used 'for the purpose of varying or contradicting the terms in the claims'"); Gart v. Logitech, 254 F.3d 1334, 1340 (Fed. Cir. 2001) ("extrinsic evidence cannot be used to contradict the established meaning of the claim language"), cert. denied, 534 U.S. 1114, 122 S.Ct. 921 (2002); Forest Labs., Inc. v. Abbott Labs., 239 F.3d 1305, 1311 (Fed. Cir. 2001) (Rejecting expert evidence of one skilled in the art that claimed water percentages were "irrelevant" to pharmaceutical composition. "We consider extrinsic evidence, such as how a skilled artisan would interpret [a claim] expression . . ., only when it helps the court come to a proper understanding of the claims; 'it may not be used to vary or contradict the claim language.'"); CAE Screenplates v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1318 (Fed. Cir. 2000) ("[W]hen the intrinsic evidence is unambiguous, it is improper for a court to rely on extrinsic evidence such as expert testimony when construing disputed claim limitations. . . . '[H]ad the district court relied upon the extrinsic evidence to contradict the claim construction unambiguously apparent from the intrinsic evidence it would have been error.'"); Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998) ("What is disapproved of is an attempt to use extrinsic evidence to arrive at a claim construction that is clearly at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history, in other words, with the written record of the patent. . . . Thus, if the meaning of a disputed claim term is clear from the intrinsic evidence — the written record — that meaning, and no other, must prevail; it cannot be altered or superseded by witness testimony or other external sources simply because one of the parties wishes it were otherwise."); Bell Howell Doc. Mgmt. Prods. Co. v. Altek Sys., 132 F.3d 701, 706 (Fed. Cir. 1997) ("Use of expert testimony to explain an invention may be useful. But reliance on extrinsic evidence to interpret claims is proper only when the claim language remains genuinely ambiguous after consideration of the intrinsic evidence, . . . i.e., when the intrinsic evidence is 'insufficient to enable the court to construe disputed claim terms.'. . . Accordingly, any expert testimony that is inconsistent with unambiguous intrinsic evidence should be accorded no weight."); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996) ("[E]xtrinsic evidence in general, and expert testimony in particular, may be used only to help the court come to the proper understanding of the claims; it may not be used to vary or contradict the claim language. . . . Nor may it contradict the import of other parts of the specification."); Chemical Separation Tech., Inc. v. United States, 51 Fed. Cl. 771, 780 (Fed.Cl. 2002) ("Ultimately, defendant relies upon extrinsic evidence — the testimony of its expert — to support its assertion that this element of the claim is indefinite. However, . . . it is axiomatic that extrinsic evidence may not be relied upon where intrinsic evidence unambiguously defines disputed claim language. . . . As a corollary to this rule, the Federal Circuit has repeatedly proclaimed that extrinsic evidence may not be employed to create ambiguity not found in the patent.").
3. There is No Need for A Markman Hearing In This Case
A "Markman hearing" to interpret the claim language is unnecessary in this case, because the sole disputed claim term — "completely coated" — is neither ambiguous nor highly technical. See, e.g., Aspex Eyewear, Inc. v. E'Lite Optik, Inc., No. Civ.A. 398CV2996, 2002 WL 1751381 at *11 n. 6 (N.D.Tex. Apr. 4, 2002) ("A Markman hearing is unnecessary in this case. In some patent cases, a claim construction hearing allows the court to question and evaluate attorney argument and/or witness testimony regarding the competing claim constructions. This process may be helpful when the claims are ambiguous or the technology is complex. Nothing, however, mandates the use of a Markman hearing in every patent case. Courts retain the discretion to construe the claims on the basis of a paper record alone. In a case such as the present one, where the technology is accessible to the court and the claims are relatively straightforward, a Markman hearing is unnecessary.") (citations omitted); Rogers v. Desa Int'l, Inc., 166 F. Supp.2d 1202, 1204-05 (E.D.Mich. 2001) (Court found it unnecessary to hold a Markman hearing: "Given the lack of technical and linguistic complexity and lack of conflicting factual evidence, I find the papers filed are sufficient to construe the claims.") (collecting cases); Electronic Planroom, Inc. v. McGraw-Hill Cos., 135 F. Supp.2d 805, 832 n. 25 (E.D.Mich. 2001) ("[T]he Court is satisfied that, for purposes of the present motions, the claims may be construed by resort to the plain meaning and ordinary understanding of their terms. . . . Under these circumstances, the Court finds it unnecessary to conduct a separate Markman hearing before ruling on the pending motions."); Interactive Gift Express, Inc. v. Compuserve Inc., 95 Civ. 6871, 1998 WL 247485 at *1 n. 3 (S.D.N.Y. May 15, 1998) ("The Court notes at the outset that no Markman hearing is needed in this case because the Court does not require expert or other testimony to aid it in its claim construction."), vacated on other grounds, 256 F.3d 1323 (Fed. Cir. 2001); Brosnan v. Rollerblade, Inc., No. C97-0782, C97-3258, 1998 WL 209155 at *3 (N.D.Cal. Apr. 27, 1998) (Deciding claim construction issue without Markman hearing: "Although the Court has yet to hold a formal claims construction hearing in this case, the interpretation of the claims at issue for this motion has been thoroughly briefed and argued by the parties."); LRC Elec., Inc. v. John Mezzalingua Assocs., Inc., 974 F. Supp. 171, 181-82 (N.D.N.Y. 1997) ("A Markman hearing to define the [disputed claim] term . . . would only be necessary if the Court needed expert testimony to interpret the term. . . . After carefully considering the language used in claim one, the specification, and Webster's Dictionary, the Court finds that the meaning of the [claim] term . . . is the one stated in Webster's Dictionary. . . . and hence no Markman hearing is needed in the instant case. . . .").
Here, the Court is able to interpret the claim language based on intrinsic evidence and dictionaries, and has "heard" expert testimony via written submissions. There is no need for a Markman hearing.
Indeed, Revlon appears to have sought a Markman hearing to deal with claims and infringement issues aside from the construction of "physically completely coated." (See Dkt. No. 60: Revlon Reply Br. at 7: "Only one element (the one containing the 'physically completely coated' language) . . . has been disputed. . . . Thus if Revlon's construction of 'physically completely coated' claim language is correct, judgment should be entered in favor of Revlon because there is no other genuine issue of material fact regarding infringement. In the alternative, should the Court not agree with Revlon, then a Markman hearing to construe the claims should be conducted. . . . "). Unless Revlon is engaging in a heads Revlon wins on the papers, tails Revlon gets a Markman hearing on the same issue of "physically completely coated" argument, Revlon's reply brief appears to concede that there is no need for a Markman hearing on the "physically completely coated" issue.
The relevant portion of Claim 1 of the Patent provides as follows:
1. A cosmetic make-up composition which is a water-in-oil emulsion comprising
a) an oil phase which comprises
i) About 2 to 50% by weight of the oil phase of a coated pigment consisting essentially of finely divided particles of pigment whose surfaces are chemically bonded to, and physically completely coated by, polysiloxane which coating renders the particles hydrophobic. . . .
(Dkt. No. 1: Compl. Ex. 1: '722 Patent at Col. 9, Lns. 17-26, emphasis added.) Claims 5 and 7 contain substantially similar language. ('722 Patent at Col. 10, Lns. 26-42 Lns. 57-60.) (See page 4 above.)
The sole claim construction dispute in this case is whether, as Estee Lauder contends, the Patent claims disclose a pigment whose surface is 100% coated by polysiloxane (Dkt. No. 49: Estee Lauder Proposed Order; see also Dkt. No. 50: Estee Lauder Br. at 2-3), or whether, as Revlon contends, the Patent claims merely require that the pigment be coated with polysiloxane sufficiently to render the pigment "hydrophobic," as defined in the Patent (Dkt. No. 53: Revlon Proposed Order at 2; Dkt. No. 54: Revlon Br. at 3). (See also pages 4-5 above.)
As noted above, courts commonly look to dictionaries and technical treatises to determine the "ordinary meaning" of claim language. See, e.g., Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 n. 6 (Fed. Cir. 1996) ("Judges . . . may . . . rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents."); see also cases cited in Point III.A.2.a above. While permitting reliance on dictionary definitions, the Federal Circuit also has cautioned about the dangers of relying on non-scientific dictionaries to define technical terms.
See, e.g., Lizardtech, Inc. v. Earth Resource Mapping, Inc., No. 01-1343, 35 Fed. Appx. 918, 923-24, 2002 WL 1042168 at *5-6 (Fed. Cir. May 22, 2002) (district court erred by using non-technical definition for "tiling"); Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001) (the Federal Circuit has "cautioned against the use of non-scientific dictionaries 'lest dictionary definitions . . . be converted into technical terms of art having legal, not linguistic significance.'"); AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1247-48 (Fed. Cir. 2001) ("This court has repeatedly cautioned against using non-scientific dictionaries for defining technical words. . . . This case provides a good example of why definitions from general usage dictionaries may fail to provide satisfactory constructions of technical claim terms in dispute. . . . A trial court, when construing a term of art, must define the term in a manner consistent with the scientific and technical context in which it is used in the patent. Only when the context is unclear, or it appears that the term is not being used in a technical manner, should the trial court rely upon a general purpose dictionary for construing the term."); Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299 (Fed. Cir. 1999) ("dictionary definitions of common words are often less useful than the patent documents themselves in establishing the usage of ordinary words in connection with the claimed subject matter"); Anderson v. International Eng'g Mfg., Inc., 160 F.3d 1345, 1348-49 (Fed. Cir. 1998) ("[D]ictionary definitions of ordinary words are rarely dispositive of their meaning in a technological context. A word describing patented technology takes its definition from the context in which it was used by the inventor."); Renishaw PLC v. Marposs S.p.A., 158 F.3d 1243, 1250 (Fed. Cir. 1998) ("[A] common meaning, such as one expressed in a relevant dictionary, that flies in the face of the patent disclosure is undeserving of fealty. . . . 'Indiscriminate reliance on definitions found in dictionaries can often produce absurd results. . . .'").
In this case, despite the Court's invitation to the parties to supply technical definitions for the claim terms "physically," "completely," and "coated" (Dkt. No. 64:3/13/03 Order at 1-2), neither party rose to the challenge. Since both parties have relied on non-technical dictionaries to aid in construction of the claim language, the Court will do so as well in conjunction with a plain reading of the intrinsic evidence. E.g. Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1205 (Fed. Cir. 2002) ("By examining relevant dictionaries, encyclopedias and treatises to ascertain possible meanings that would have been attributed to the words of the claims by those skilled in the art, and by further utilizing the intrinsic record to select from those possible meanings the one or ones most consistent with the use of the words by the inventor, the full breadth of the limitations intended by the inventor will be more accurately determined and the improper importation of unintended limitations from the written description into the claims will be more easily avoided."), cert. denied, 123 S.Ct. 2230 (2003); see also, e.g., Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1344-45 (Fed. Cir. 2003) (looking to non-technical dictionary for ordinary meaning of claim term "including"); Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1344 (Fed. Cir. 2001) (using Random House Unabridged Dictionary to define the ordinary meaning of "portion"); Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1459 (Fed. Cir. 1998) (en banc) (employing non-technical dictionary definition of "'to'" as "'[i]n a direction toward'").
As explained below at pages 41-43 fns.21-22, discussing extrinsic evidence, Estee Lauder did supply several examples from the technical literature using the same or similar language, but did not supply technical definitions per se. Revlon did not supply any technical definitions.
Based on dictionary definitions, the word "coat" ordinarily means, as a noun, "a layer of some substance, as paint, over a surface," and as a verb, "to cover with a layer of something." Webster's New World Dictionary Third College Edition at 267 (1994). Read in the context of the claims at issue, the term "coated" is simply the adjectival derivative of "coat," meaning the surface is covered with a layer of some substance. Id.; accord, e.g., The American Heritage Dictionary of the English Language at 354 (4th ed. 2000); McGraw Hill Dictionary of Scientific Technical Terms (2003) (defining "coating" as "any material that will form a continuous film over a surface" and "[t]he film formed by the material."). See, e.g., Astra Aktiebolag v. Andrx Pharms., Inc., 222 F. Supp.2d 423, 464 (S.D.N.Y. 2002) (in chemical context, equating "coating" with "covering"). The term "physically" emphasizes the material nature of the coating. American Heritage Dictionary at 1325; Webster's New World Dictionary at 1019. Thus, the plain meaning of the phrase "physically . . . coated" means that the surfaces of the pigment particles are physically covered with a layer of polysiloxane.
This definition of "coated," which does not appear to be disputed, is supported by the specification language: "The pigment and fluid are intimately mixed thoroughly to obtain a uniform dispersion of the fluid on the pigment, in which the fluid completely coats the particles of pigment." ('722 Patent, Col. 3, Lns. 53-56.)
The ordinary definition of the adverb "completely" is "[i]n a complete manner; fully, perfectly; entirely, wholly, thoroughly." The Compact Edition of the Oxford English Dictionary at 726 (1987), reproduced in Dkt. No. 51: Estee Lauder 56.1 Stmt. Ex. F; accord, e.g., III Oxford English Dictionary at 612 (2d ed. 1991); see also Estee Lauder 56.1 Stmt. Ex. E: Webster's Third New International Dictionary at 465 (1986) ("Completely adv: 1: so as to be complete: FULLY [a ~ furnished apartment] 2: to a complete degree: ENTIRELY [the horse rolled ~ over] [~ at fault]").
"Because these terms are not given any special definition in the specification, we must give them their ordinary meaning." Wright Med. Tech., Inc. v. Osteonics Corp., 122 F.3d 1440, 1444 (Fed. Cir. 1997). Thus the phrase "physically completely coated," when read in context, means that the surfaces of the pigment particles are fully and entirely physically coated with a layer of polysiloxane. In other words, the entire surface of each pigment particle is coated with a layer of polysiloxane. Cf. Bioscan, Inc. v. United States Int'l Trade Comm'n, No. 87-1599, 847 F.2d 842 (table), 1988 WL 33816 at *1 (Fed. Cir. Apr. 18, 1988) ("The specification and prosecution history of the . . . patent do not reveal that the patentee intended the terms in dispute ["'completely enclosed chamber'"] to have something other than their plain meaning.").
Revlon argues, to the contrary, that the language at issue should be construed to mean that the pigment particles are "physically completely coated by polysiloxane so as to render the particles hydrophobic, consistent with the hydrophobicity test provided within the patent specification. . . ." (Revlon Proposed Order at 2, emphasis added.) According to Revlon, not only does the Patent not require that the pigments be 100% coated, but the degree of coating is irrelevant as long as it renders the particles hydrophobic:
[T]he claim language at issue . . . describes finely divided particles of pigment that have the desired property of hydrophobicity, not whether, under increasingly minute analysis, one can argue that the polysiloxane coating is something less than 100%. In other words, the key is hydrophobicity — does the pigment work for its intended purpose — not whether microscopic or even electron microscopic analysis will reveal that a certain chemical reaction between polysiloxane and pigment surface has been driven to completion.
(Dkt. No. 60: Revlon Reply Br. at 2; see also JPTO Ex. 19: Revlon Pretrial Br. at 7 (The Patent "directs all reviewers to specific commercially available coated pigments, known to cosmetic formulators, that were not evaluated on a molecular level to determine the degree of actual physical coating of the pigments [be it 1% or 50% or 99%] but were evaluated as to their hydrophobicity.") (brackets in original).)
Revlon explains away the presence of the word "completely" by asserting that, rather than looking to the definition of the adverb "completely," the Court should look to one of the definitions of the noun "complete," which means "possessing all necessary parts, items, components or elements: not lacking anything necessary." (Dkt. No. 54: Revlon Br. at 18, quoting Dkt. No. 51: Estee Lauder 56.1 Stmt. Ex. E: Webster's Third New International Dictionary at 465 (1986 ed.).) According to Revlon, this "definition inherently implies that 'completeness' is a measurement of degree for a specific purpose — so as to beg the question 'complete' for what purpose (i.e., 'not lacking anything necessary' for what purpose)." (Revlon Br. at 18.) Based on this definition, Revlon reformulates the relevant claim language as follows: "finely divided particles of pigment whose surfaces are chemically bonded to, and physically coated by, polysiloxane which coating [possesses all necessary parts, items, components or elements to] render the particles hydrophobic. . . ." (Id. at 19.) Thus, Revlon claims that the disputed language "means 'physically coated by polysiloxane so as to render the particles hydrophobic.'" (Id.)
Revlon distorts the unambiguous claim language. First, the claim provides both a structural limitation (the surfaces of the particles are "physically completely coated by" polysiloxane) and an independent functional limitation ("which coating renders the particles hydrophobic"). The specification clearly supports this, as the "completely coated" structural requirement is stated as an independent conjunctive of the functional requirement that the particles be hydrophobic — the number of polysiloxane chains that are bonded must be "sufficiently high to coat the pigment completely and render it completely hydrophobic." ('722 Patent, Col. 3, Lns. 11-14 (emphasis added).) See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d at 1582 ("[T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term."). In addition, the specification elsewhere states the "completely" coated limitation without mentioning hydrophobicity, further illustrating that the complete coating of the pigment is an independent structural requirement: "The pigment and fluid are intimately mixed thoroughly to obtain a uniform dispersion of the fluid on the pigment, in which the fluid completely coats the particles of pigment." ('722 Patent, Col. 3, Lns. 53-56, emphasis added.) Revlon's proffered construction would eliminate the structural requirement that the pigment surface be "physically completely coated," thus violating the well-settled rule that structural limitations may not be eliminated simply on the ground that they are unnecessary to the invention's function. See, e.g., Wright Med. Tech., Inc. v. Osteonics Corp., 122 F.3d at 1444 (rejecting patent holder's argument that would eliminate structural limitations that were not necessary to "meet the functional objective of the invention," as such a construction "would render the contested terms surplusage," effectively "eviscerat[ing] them"); K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1360, 1363 (Fed. Cir. 1999) (in construing in-line roller skate claim which recited the "non-rigid shoe portion being permanently affixed to said base portion at least at said toe area and said heel area for substantially preventing movement therebetween at least in a horizontal plane," and thus included both structural and functional elements, the Federal Circuit refused to read the functional language "for substantially preventing movement" so as to "effectively expunge the [structural] term 'permanently' from the claim language. . . . A more natural construction reads the two clauses as complementary, recognizing that 'permanently affixed' requires an unremovable attachment, while the functional language requires that the attachment prevent sliding."); Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1582-83 (Fed. Cir. 1996) (Construing structural limitation from claim language, despite patent holder's argument that such limitation was not necessary for the successful operation of the invention: the patent holder "need not have included this limitation in its claim. Having done so, it must live with the language it chose.").
See generally 2 John Gladstone Mills III, Robert C. Highley Donald C. Reiley III, Patent Law Fundamentals, § 15:6 (2d ed. 2003) (discussing structural vs. functional limitations; "only structural language is determinative of the metes and bounds of a patent claim"); see also id. § 15:26.
See also '722 Patent, Col. 7, Lns. 36-39 ("The pigment comprised an intimate blend of the five indicated components, all of which had been thoroughly coated with a polymethyl hydrogen siloxane [which is a type of "polysiloxane," see Col. 10, Lns. 37-40] coating bonded to the pigment surface.") (emphasis added). Similarly, when Claims 10 through 15 of the Patent were later amended, the "physically coated language" was added without any mention of hydrophobicity: "wherein the surfaces of the particles of pigment are chemically bonded to, and physically completely coated by, polymethyl hydrogen siloxane." (Dkt. No. 55: Estee Lauder 56.1 Obj. Ex. M: 10/9/98 Reexamination Application at 7-12, claims 10-15) (See Point IV.B.2, infra.) This decoupling of the "completely coated" and hydrophobicity elements implies that the "completely coated" limitation must be independently satisfied, and cannot be reduced to the hydrophobicity requirement.
Had Revlon's Patent drafters wanted to eliminate the "completely coated" structural requirement and replace it with a purely functional requirement, they surely were capable of phrasing the claim to read "physically coated by polysiloxane sufficiently to render the particles hydrophobic." The drafters demonstrated familiarity with such functional terminology by providing in the specification that "[t]he number of polysiloxane chains of formulas (3), (4), and (5) that are bonded to the pigment surface is not known but is sufficiently high to coat the pigment completely and render it completely hydrophobic." ('722 Patent, Col. 3, Lns. 11-14.) The specification thus expressly renders the pigment bonding as purely functional (i.e., with no set amount, but only "sufficiently high to coat the pigment completely"), and defines the function of the bonding in terms of the structural requirement that the pigment be "completely" coated. The drafters could easily have defined both the bonding and coating as purely functional (i.e., the amount of bonding and coating must be sufficiently high to render the pigment completely hydrophobic), but instead they stated "completely" coating the pigment as an independent structural requirement. See York Prods., Inc. v. Central Tractor Farm Family Ctr., 99 F.3d 1568, 1573 (Fed. Cir. 1996) ("[T]he claim language explicitly ties substantial part' to the height of the sidewalls, not to the overall function of the invention. The language and syntax of the claim preclude a functional definition ofsubstantial part.' In other words, if substantial part' meant only ample height to accomplish a purpose, the claim would need to readonly so much height as necessary to affix a structure against movement.' This redraft would essentially strip many words in the claim of their meaning.").
See 2 John Gladstone Mills III, Robert C. Highley Donald C. Reiley III, Patent Law Fundamentals, § 15:6 (2d ed. 2003) ("[I]t is possible to expand or contract claim breadth by a concomitant change in the language used to express a structural element or component. One way of expressing such component is in terms of exact measurements, i.e., as an absolute numerical value. Not only is this often unduly restrictive, even when expressed as a range, it is sometimes not possible. It is not always possible or practical to ascertain the precise limits of efficacy. Under such circumstances, it may be permissible to express such limitation in 'functional terms.'"); id. § 15.34 ("Another possible technique of overcoming the absence of the existence of just the right word is with the aid of a functional expression. Rather than expressing a quantity as a numerical value, it may be possible to express it as 'an amount effective' (or sufficient or adequate) to produce a recited result.").
Revlon's construction effectively eliminates the term "completely" — clearly violating the rules of construction. See, e.g., Elekta Instr. S.A. v. O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000) (avoiding claim construction which would render a term superfluous); Wright Med. Tech., Inc. v. Osteonics Corp., 122 F.3d at 1444 (same). Revlon glosses over this rule by pretending that the term "completely" means something that it does not. Revlon effectively rewrites the Patent to employ the adjectival definition ("complete") rather than the adverbial ("completely"), as follows: "chemically bonded to, and physically coated by, polysiloxane which coating [is complete enough for the purpose of] render[ing] the particles hydrophobic." (Dkt. No. 54: Revlon Br. at 19.) Not surprisingly, and despite the Court's express invitation (Dkt. No. 64:3/13/03 Order), Revlon failed to provide textual examples — either from case law or elsewhere — employing the term "completely" in this manner. Estee Lauder supplied several examples from technical literature, although not from the "cosmetics field," in which "completely coated" meant entirely, i.e., 100%, coated. (Dkt. No. 65: Estee Lauder Supp. Br. at 2 n. 1, citing Tabs A-E.) The Court need not rely on Estee Lauder's evidence, however, as the ordinary meaning of the claim language is clear without it. Revlon's extraordinary construction could only prevail if it were supported by compelling evidence, which Revlon has failed to supply.
Revlon's construction is so extraordinary that it would require strong evidence to support it. The authorities Revlon cites do not even remotely support its position. In Carnegie Mellon Univ. v. Hoffman-La Roche Inc., No. C-95-3524, 1997 WL 33152823 (N.D.Cal. Mar. 31, 1997) (cited in Dkt. No. 66: Revlon Supp. Br. at 10-11), the relevant claim language stated: "'A recombinant plasmid containing a cloned complete structural gene coding region . . . for the expression of DNA polymerase I. . . .'" 1997 WL 33152823 at *10 (ellipsis in original). The court rejected defendant's assertion that the word "complete" should be construed to mean "entire," which in this particular context meant having "no missing nucleotide bases." Id. at *11. Unlike Revlon, however, which would read the word "completely" out of the '722 Patent (or render the word meaningless), the Carnegie court rejected the "entire" construction because the "claims expressly describe the structural gene coding region only as 'complete,' not as 'entire'. . . ." Id. The court derived the correct construction of the word "complete" from the "clear" language of the specification and prosecution history: "the nucleotide sequence that expresses the complete DNA polymerase I, as opposed to only the Klenow fragment." Id. at 11-12. Thus, far from the strained construction Revlon asserts here (which, to the contrary, ignores the clear language of the specification that the pigment be both completely coated and completely hydrophobic), the Carnegie court ultimately construed the term "complete" to mean something like "entire" — as in more than a fragment — just not "entire" in the special sense asserted by the Carnegie defendants. Id.
Revlon also cites National Research Dev. Corp. v. Great Lakes Carbon Corp., 410 F. Supp. 1108 (D.Del. 1975), another patent employing the adjective "complete" rather than the adverb "completely." (Revlon Supp. Br. at 11.) The case involved a patent reciting a process for producing carbon "fibers," which included "'oxidizing an organic polymer fiber by simultaneously heating the fiber in an oxidizing atmosphere . . . for a time sufficient to permit substantially complete permeation of oxygen throughout the core of the fiber while the fiber is held under longitudinal tension. . . .'" National Research Dev. Corp. v. Great Lakes Carbon Corp., 410 F. Supp. at 1111 (emphasis added). Because "[p]ermeation is distinct from oxidation," the district court did not construe the highlighted language to mean "complete oxidation." Id. at 1115-16. Further, because the patent recited permeation "throughout the core of the fiber," it was not construed to mean "complete saturation of the fiber with oxygen," but rather "permeation of some oxygen throughout the entire cross-sectional area of the fiber." Id. at 1115-16 (emphasis added). The court also remarked that the patent's "meaning varies little if at all from the same phrase absent the term 'complete,'" id. at 1116, probably because both "permeation" and "throughout" are absolute terms, like "complete."
For example, one paper described mineral aggregate particles as "partially coated" if up to 99% covered, and "completely coated" if 100% covered. (Estee Lauder Supp. Br. Tab B at 8.) Revlon complains that Estee Lauder's examples are from unrelated industries and were published well after the Patent application. (Revlon Supp. Br. at 7 n. 4.) See, e.g., Brookhill Wilk 1, LLC v. Intuitive Surgical, Inc., 326 F.3d 1215, 1221 (Fed. Cir. 2003) ("The district court also consulted a number of unrelated and non-contemporaneous authorities. . . . These references are dated well after the '003 patent, which was filed in March 1991 and issued in June 1993. They are not contemporaneous with the patent, do not reflect the meanings that would have been attributed to the words in dispute by persons of ordinary skill in the art as of the grant of the '003 patent, and for those reasons are not considered in our de novo claim construction analysis."). While this may be true, it assumes that the definition of the phrase "completely coated" changed over time, which seems highly unlikely. In any event, the Court need not rely on the technical literature supplied by Estee Lauder, as the ordinary meaning of the claim language is clear without it.
Ultimately, Revlon achieves the meaning it desires by rewriting the claim so that "completely" modifies the phrase "render the particles hydrophobic" instead of the word "coated": "the Claim itself does not require 100% coating of the pigment, but merely sufficient coating to 'completely . . . render the particles hydrophobic.'" (JPTO Ex. 19: Revlon Pretrial Br. at 6 (ellipsis in original); see also Dkt. No. 54: Revlon Br. at 19.) This reformulation, however, violates both common sense and the rules of grammar, as the word "completely" immediately precedes and thus clearly modifies the word "coated." And again, Revlon's construction is contradicted by the specification, which requires both that the pigment be coated "completely" and that it be "completely" hydrophobic: "[t]he number of polysiloxane chains of formulas (3), (4), and (5) that are bonded to the pigment surface is not known but is sufficiently high to coat the pigment completely and render it completely hydrophobic." ('722 Patent, Col. 3, Lns. 11-14.)
Revlon also argues that the Patent does not require that the pigment particles be completely coated, but merely requires that they be completely hydrophobic, because the specification contains no test for "completely coated" but does contain a test for hydrophobicity. This is nonsense. First, it makes sense that the Patent would contain a functional, rather than a structural test, because, as a practical matter, function is easier to test than chemical structure. Second, Revlon has no basis for positing a rule of construction that would eliminate all structural limitations not associated with a functional test.
"Hydrophobicity can readily be determined by placing the coated pigment into water and observing whether any becomes dispersed or suspended in the water." ('722 Patent, Col. 3, Lns. 14-17.)
In a pretrial brief, Revlon argued that the Patent could not be limited to particles that were 100% coated, "because there was no test in 1986 [the Patent's first submission date] to see if a particle was actually 100% physically coated." (JPTO Ex. 19: Revlon Pretrial Br. at 6.) According to Revlon, "Estee Lauder's argument that the '722 patent teaches pigments that are 100% physically coated ignores the fact that even today, let alone 1986, there is no way to determine whether such pigments are 100% coated." (Revlon Pretrial Br. at 7.) Revlon, however, has omitted this argument on the current motions, presumably because both Revlon's and Estee Lauder's experts described methods of testing for 100% coating. (Dkt. No. 60: Revlon Reply Br. Ex. T: Lochhead: Tr. 304-06; Dkt. No. 48: Estee Lauder 56.1 Stmt. Ex. H: Dahms Rebuttal Report at 9-10.) Nevertheless, it is reasonable to assume from Revlon's assertion that a functional test (i.e., determining hydrophobicity) is easier to perform than a structural test (i.e., measuring the degree of coating).
Revlon argues that construing the claim to require "100% coating" would read the functional hydrophobicity requirement out of the Patent:
Estee Lauder's interpretation of "physically completely coated" requires the pigments to be absolutely 100% coated with polysiloxane. Polysiloxane is a hydrophobic compound. Were it possible for a pigment's surface to be 100% coated by polysiloxane, the pigment would be, by its very nature, hydrophobic. There would be no need to utilize the hydrophobicity test set forth in the specification to make this determination.
(Dkt. No. 54: Revlon Br. at 14-15.) As a threshold matter, Revlon fails to support these assertions with evidence. More importantly, Revlon turns the argument on its head. The Court's interpretation retains both the structural and functional limitations stated in the Patent; Revlon's construction, by contrast, would excise the structural limitation.
One final point. The claim language leaves no room to interpret "completely coated" as a relative phrase, as, for example, "substantially completely coated." The Patent, after all, speaks in terms of particles. This case does not, for example, involve a wall-painting invention, with the defendant stubbornly insisting that the wall must be covered by paint to the microscopic level. Rather, the Patent itself speaks in terms of microscopic particle-coating. It should hardly surprise Revlon that Estee Lauder insists that the claim language be analyzed in the microscopic context. Moreover, Revlon has effectively disclaimed anything but a purely functional interpretation, thus waiving a relative construction such as "substantially completely coated." (See, e.g., Dkt. No. 54: Revlon Br. at 6 ("The amount of coating on the resultant pigments will fulfill the definition [in the claim] regardless of whether the polysiloxane covers 100% of the surface or some lesser amount."); Dkt. No. 60: Revlon Reply Br. at 2 ("[T]he key is hydrophobicity — does the pigment work for its intended purpose — not whether microscopic or even electron microscopic analysis will reveal that a certain chemical reaction between polysiloxane and pigment surface has been driven to completion."); Dkt. No. 52: Revlon 56.1 Stmt. Ex. G: Lochhead Aff. ¶ 12 ("For purposes of utility in the invention taught by the '722 patent, it is not necessary that a pigment be 100% coated by polysiloxane, rather only that the pigment be rendered hydrophobic to allow for its dispersal within the silicon oil phase of the emulsion described in the patent."); Dkt. No. 60: Revlon Reply Br. Ex. T: Lochhead Dep. 362-63 (Dr. Lochhead's "understanding is that physically completely coated by polysiloxane means that the particle is hydrophobic").)
Cf., e.g., LNP Eng'g Plastics, Inc. v. Miller Waste Mills, Inc., 275 F.3d 1347, 1354-56 (Fed. Cir. 2001) (affirming, based on intrinsic evidence, construction that "'substantially completely wetted'" means "'[l]argely, but not necessarily wholly, surrounded by resin'"); C.E. Equip. Co. v. United States, 17 Cl. Ct. 293, 299 (1989) (discussing difference between "substantially filling" and "substantially completely filling").
By contrast, in Intel Corp. v. U.S. Int'l Trade Comm'n, 946 F.2d 821 (Fed. Cir. 1991), the court affirmed construction of the claim phrase "'permanently programmed' to mean 'for the useful lifetime of the . . . part under normal operating conditions.'" Id. at 835-36. The difference, of course, is that because nothing about a particular invention is truly "permanent," the term must be construed in the relative sense to mean the useful life of the device — not eternity.
In short, the relevant claim language provides that the "surfaces" of the particles must be "physically completely coated" with polysiloxane — meaning 100% coated. Describing the surfaces of the pigment particles as "physically completely coated" with polysiloxane constitutes an independent and self-sufficient structural element. While it is true, as Revlon asserts, that a court must give a claim the full range of its ordinary meaning (Dkt. No. 54: Revlon Br. at 18, citing Johnson Worldwide Assoc., Inc. v. Zebco Corp, 175 F.3d 985, 989 (Fed. Cir. 1999); see also Revlon Supp. Br. at 1-6, 18-19), Revlon's interpretation is anything but ordinary. The Court may not excise the word "completely" from the Patent merely because Revlon now finds it troublesome or inconvenient. The disputed language admits of only one reasonable unambiguous construction — that "physically completely coated" means entirely, 100% coated. See, e.g., Nichols v. Strike King Lure Co., No. Civ. A.3:99-CV-1950-B, 2000 WL 1593616 at *2, 8 (N.D.Tex. Oct. 25, 2000) (rejecting patentee's assertion that the unambiguous claim language "entire outer surface" should be construed to mean the "greater part" of the outer surface. The claim "must be construed to mean that the outer surface of the body of the lure must be completely covered by the coating. In other words, no part of the external surface may be left uncovered by the resin coating.") (see also quotation from this case on page 2); accord, e.g., Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002) (The patentee "argues that one of skill in the art would understand that the term 'perpendicular' in the claim should be read to mean 'parallel.' [The patentee] stretches the law too far. It is not our function to rewrite claims to preserve their validity. We are simply tasked with determining whether the claims 'particularly point out and distinctly claim' what the inventor regards as his invention. Moreover, it is of no moment that the contradiction is obvious: semantic indefiniteness of claims 'is not rendered unobjectionable merely because it could have been corrected.'") (citations omitted); K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999) ("That the applicant could possibly have added terms other than 'permanently' to create a patentable distinction with the asserted prior art is simply irrelevant to our claim construction task. Courts do not rewrite claims; instead, we give effect to the terms chosen by the patentee."); Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999) ("[W]e do not permit courts to redraft claims. . . . Where, as here, the claim is susceptible to only one reasonable construction, the canons of claim construction cited by [patentee] are inapposite, and we must construe the claims based on the patentee's version of the claim as he himself drafted it. . . . As a result of our claim construction, clause [d] does not make 'sense' as [patentee] itself realizes and concedes. What [patentee] fails to realize is that such a nonsensical result does not require the court to redraft the claims of the '943 patent. Rather, where as here, claims are susceptible to only one reasonable interpretation and that interpretation results in a nonsensical construction of the claim as a whole, the claim must be invalidated, thus preventing unduly burdening competitors who must determine the scope of the claimed invention based on an erroneously drafted claim."), cert. denied, 529 U.S. 1037, 120 S.Ct. 1531 (2000); Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1584 (Fed. Cir. 1995) ("Although we construe claims, if possible, so as to sustain their validity, . . . it is well settled that no matter how great the temptations of fairness or policy making, courts do not redraft claims."), cert. denied, 517 U.S. 1167, 116 S.Ct. 1567 (1996).
Accord, e.g., Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d at 1203 ("Because words often have multiple dictionary definitions, some having no relation to the claimed invention, the intrinsic record must always be consulted to identify which of the different possible dictionary meanings of the claim terms in issue is most consistent with the use of the words by the inventor. . . . If more than one dictionary definition is consistent with the use of the words in the intrinsic record, the claim terms may be construed to encompass all such consistent meanings.").
b. The Patent's Preferred Embodiment Does Not Include "Commercially Available" Pigments
Revlon asserts that the following excerpt from the Patent specification is part of the "preferred embodiment": "As an alternative to synthesis, satisfactory coated pigments usable in this invention are commercially available from a variety of sources." ('722 Patent at Col. 3, Lns. 59-62.) (See Dkt. No. 54: Revlon Br. at 6.) Revlon argues that because commercially available pigments are part of the preferred embodiment, and extrinsic evidence shows that commercially available pigments cannot be entirely coated, it must follow that the Patent claims do not require that the pigments be entirely coated, as such a construction would exclude the Patent's preferred embodiment. (Revlon Br. at 12-14; Dkt. No. 60: Revlon Reply Br. at 3-4.)
Estee Lauder argues to the contrary that the "commercially available" provision constituted "merely an unclaimed satisfactory alternative to the preferred synthesized coated pigment." (Dkt. No. 57: Estee Lauder Reply Br. at 4-5 n. 5 (citing Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562-63 (Fed. Cir. 1991)). Estee Lauder thus references "the well-established rule that 'subject matter disclosed but not claimed in a patent application is dedicated to the public'" and thus cannot support a finding of infringement. See Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1106-07 (Fed. Cir. 1996) (quoting Unique Concepts, Inc. v. Brown, 939 F.2d at 1562-63), cert. denied, 520 U.S. 1115, 117 S.Ct. 1244 (1997). Further, the Federal Circuit recently confirmed en banc that patent owners cannot assert either literal infringement or the doctrine of equivalents "to cover . . . disclosed but unclaimed" subject matter. Johnson Johnston Assoc. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1051-55 (Fed. Cir. 2002) (en banc); accord, e.g., Maxwell v. Angel-Etts of Calif., Inc., Nos. 01-1601, 01-1647, 02-1198, 02-1219, 53 Fed. Appx. 561, 567, 2002 WL 31809442 at *6 (Fed. Cir. Dec. 13, 2002); Maxwell v. J. Baker, Inc., 86 F.3d at 1106-08.
This Court would ordinarily not consider an issue raised for the first time in a reply brief. See, e.g., Playboy Enters., Inc. v. Dumas, 960 F. Supp. 710, 720 n. 7 (S.D.N.Y. 1997) ("Arguments made for the first time in a reply brief need not be considered by a court.") (collecting cases), aff'd, 159 F.3d 1347 (2d Cir. 1998); see also, e.g., Fleet Capital Corp. v. Yamaha Motor Corp., U.S.A., 01 Civ. 1047, 2002 WL 31174470 at *13 n. 18 (S.D.N.Y. Sept. 26, 2002) (Peck, M.J.) ("[S]ince [plaintiff] raised the issue for the first time in its reply brief, [defendants] had no opportunity to respond. The Court therefore will not consider [plaintiff's] reply argument."); Bolanos v. Norwegian Cruise Lines Ltd., 01 Civ. 4182, 2002 WL 1465907 at *4 n. 12 (S.D.N.Y. July 9, 2002) (Peck, M.J.) (citing cases). Revlon, however, had its own subsequent reply brief in which to respond. (Dkt. No. 60.) Moreover, because of the importance of the issue, the Court ordered supplemental briefing (Dkt. No. 64:3/13/03 Order at 2-3), affording Revlon an additional opportunity to respond.
Courts have deemed as "disclosed but unclaimed" specification language similar to that found here, including specification verbiage describing "alternatives" that "may be used." In Johnson Johnston Assoc. Inc. v. R.E. Serv. Co., the Federal Circuit held that where the claim was limited to "aluminum," use of steel substrate was "disclosed but unclaimed" based on specification language providing: "'While aluminum is currently the preferred material for the substrate, other metals, such as stainless steel or nickel alloys may be used.'" 285 F.3d at 1055; see also id. at 1052 ("disclosed but unclaimed" doctrine is limited to where the "patent discloses an unclaimed alternative distinct from the claimed invention"). In Maxwell v. J. Baker, Inc., 86 F.3d at 1106-07, the Federal Circuit deemed the following as "disclosed but unclaimed": "'[a]lternatively, the tabs may be stitched into a lining seam of the shoes at the sides or back of the shoes.'" See id. at 1105 ("to accept Maxwell's claim interpretation that the inside lining of the shoe is part of the tab, we would have to ignore the claim limitations that require the tab to be separate from and extend along the shoe upper, which includes the inner shoe lining."); accord, e.g., Maxwell v. Angel-Etts of Calif., Inc., 53 Fed. Appx. at 567, 2002 WL 31809442 at *6.
Under this case law, the Court finds the alternative commercially-available pigments to be disclosed but not claimed, and thus not part of the Patent's preferred embodiment. Nevertheless, as discussed in Point III.B.2.b below, even if the Court found this to be part of the Patent's preferred embodiment, that would not change the Court's claim construction.
2. Construction Based On Extrinsic Evidence
In construing the claim language, the parties twice resort to extrinsic evidence: (1) a supposedly "related patent"; and (2) Revlon's and Estee Lauder's experts' reports.
a. Prior Art, Including the Tietjen Patent, Has No Material Effect on Construction of the '722 Patent
Estee Lauder argues that an earlier Revlon patent, U.S. Patent No. 4,578,266 (the "Tietjen Patent"; see Dkt. No. 52: Revlon 56.1 Stmt. Ex. J), should be considered intrinsic evidence when construing the '722 Patent. (Dkt. No. 57: Estee Lauder Reply Br. at 6.) The Tietjen Patent was cited as prior art during the prosecution of the '722 Patent, and the two patents are both owned by Revlon, share a common inventor (Marlene Tietjen), and recite similar claim language. (Estee Lauder Reply Br. at 6, citing Tietjen Patent, claims 1, 4 8.)
1 John Gladstone Mills III, Robert C. Highley Donald C. Reiley III, Patent Law Fundamentals, § 2:41 (2d ed.) ("Prior art denotes knowledge that was publicly available at the time an invention was made. In terms of patent law, 'prior art' is defined by 35 U.S.C. § 102.").
As Revlon points out, however, (1) each patent had three inventors, and Tietjen is the only inventor the two patents had in common, and (2) the two patents do not share the same file history. (Dkt. No. 60: Revlon Reply Br. at 4.) Revlon would therefore deem the Tietjen patent as extrinsic, not intrinsic, evidence.
"The prosecution history of a related patent can be relevant if, for example, it addresses a limitation in common with the patent in suit." Advanced Cardiovascular Sys., Inc. v. Medtronic, Inc., 265 F.3d 1294, 1305 (Fed. Cir. 2001) (collecting cases). The focus, however, is on whether the same claim limitation appears in the "parent" and the subsequent patents. See Masco Corp. v. United States, 303 F.3d 1316, 1324 (Fed. Cir. 2002) (prosecution history of parent patent may be considered intrinsic evidence in construing claims); Augustine Med., Inc. v. Gaymar Indus., Inc., 181 F.3d 1291, 1300 (Fed. Cir. 2000) ("the prosecution history of a parent application may limit the scope of a later application using the same claim term"); Wang Labs., Inc. v. America Online, Inc., 197 F.3d 1377, 1384 (Fed. Cir. 1999) (rejecting the patentee's argument that a statement made during the prosecution of the parent application should not apply to the continuation-in-part application); Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999) ("When multiple patents derive from the same initial application, the prosecution history regarding a claim limitation in any patent that has issued applies with equal force to subsequently issued patents that contain the same claim limitation."), cert. denied, 529 U.S. 1066, 120 S.Ct. 1672 (2000); Mark I Mktg. Corp. v. R.R. Donnelley Sons Co., 66 F.3d 285, 291 (Fed. Cir. 1995) (relevant prosecution history for estoppel purposes included not only the application upon which the patent issued but also the parent and grandparent applications), cert. denied, 516 U.S. 1115, 116 S.Ct. 917 (1996); Digital Privacy, Inc. v. RSA Security, Inc., 195 F. Supp.2d 771, 775 (E.D.Va. 2002) ("Given that the '440 and '981 patents are related, share the same priority date, and are both a continuation of the '497 patent, the disputed term must have a consistent meaning across both patents."); see also 2 John Gladstone Mills III, Robert C. Highley Donald C. Reiley III, Patent Law Fundamentals, § 16:10 (2d ed.) ("The earlier filed application on which a continuing application may rely for its effective filing date is often referred to as the original or parent of the continuing application.").
Estee Lauder cites Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (Dkt. No. 57: Estee Lauder Reply Br. at 6), for dictum that "[i]ncluded within an analysis of the file history may be an examination of the prior art cited therein. . . . 'In its broader use as source material, the prior art cited in the file wrapper gives clues as to what the claims do not cover.'" 90 F.3d at 1582-83 (citation omitted). Estee Lauder also cites DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1324-25 (Fed. Cir. 2001) (Estee Lauder Reply Br. at 6), in which, unlike here, the patent at issue substantively discussed the shortcomings in prior art, rendering prior art relevant to claim construction. As Revlon points out, "[n]either of these cases holds that an unrelated patent whose sole relationship to the patent at issue is that it was cited as prior art can then be consulted for claim construction purposes because it constitutes intrinsic evidence." (Dkt. No. 60: Revlon Reply Br. at 5.)
Here, because the two patents do not share the same file history, the Court cannot consider the Tietjen Patent as intrinsic evidence when construing the '722 Patent's language. See Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1211 (Fed. Cir. 2002) (rejecting as irrelevant evidence of language in unrelated patent by the same inventor), cert. denied, 123 S.Ct. 2230 (2003); Abbott Labs. v. Dey, L.P., 287 F.3d 1097, 1104-05 (Fed. Cir.) (relationship between two unrelated patents, although having similar subject matter, one common inventor out of three, and the same assignee, was "insufficient to render particular arguments made during prosecution of [one of the patents] equally applicable to the claims" of the other patent), cert. denied, 123 S.Ct. 556 (2002); cf. NCR Corp. v. Palm, Inc., 217 F. Supp.2d 491, 519 (D.Del. 2002) ("Here, the express relationship between the '478 patent and the '845 patent is beyond dispute; aside from being filed on the same date, and sharing essentially identical disclosures, the same 'means for transferring data' limitation addressed in the prosecution history of the '478 patent appears in the claims of the '845 patent."). Accordingly, because the Court has already found the claim language at issue to be unambiguous, this Court may not resort to such extrinsic evidence as the Tietjen Patent to vary the claims. (See cases cited in Point III.A.2 above.)
Even if the Court did employ this extrinsic evidence (which the Court does not), the Court's claim construction would not be materially affected. Claim 1 of the Tietjen Patent describes a "coated pigment . . . whose surfaces are chemically bonded to, and physically completely coated by a polysiloxane which coating renders the particles hydrophobic. . . ." (Revlon 56.1 Stmt. Ex. J: Tietjen Patent, Col. 8, Lns. 29-35, emphasis added.) Claim 4 of the Tietjen Patent describes the coating more broadly as "a coated pigment . . . whose surfaces are chemically bonded to and physically coated by a polysiloxane which coating renders the particles hydrophobic. . . ." (Tietjen Patent, Col. 9, Lns. 59-63, emphasis added.) Estee Lauder thus concludes that "in drafting and prosecuting the '722 patent, Revlon was fully aware of its options. . . ." (Dkt. No. 57: Estee Lauder Reply Br. at 6.) This supports the Court's conclusion that the word "completely" actually means something, and may not be excised by the Court during the process of claim construction.
Claim 8 of the Tietjen patent merely requires "sufficient polysiloxane bonded to each pigment particle to render the pigment hydrophobic," but also references Claim 7 which in turn references Claim 4, thus presumably incorporating Claim 4's "physically coated" language. (Tietjen Patent, Col. 10 Ln. 45 to Col. 11 Ln. 12.)
In its Supplemental Brief, Revlon changes positions, arguing that the Tietjen Patent "can give the Court significant guidance on the issue of 'completely coated,' though not in the manner suggested by Estee Lauder." (Dkt. No. 66: Revlon Supp. Br. at 8.) Revlon notes that the PTO originally rejected the Tietjen Patent application because, among other things, the phrases "'chemically bonded to'" and "'physically and completely coated by'" were "vague and indefinite." (Revlon Supp. Br. at 8, citing Dkt. No. 67: Brehm Aff. Ex. A: 3/7/84 Tietjen Examiner's Action at 5.) The Tietjen applicant responded that the disputed claim language was understandable to one skilled in the art, and referred to pages 7-10 of the attached Tietjen Patent specification (which is similar to the relevant specification language from the '722 Patent, discussed above). (Brehm Aff. Ex. A: 2/11/85 Tietjen Response at ¶¶ 4-5 Specification at 9-10.) Subsequently, in an "Examiner Interview Summary Record," the examiner noted in handwriting his agreement with the Tietjen applicant that the "terms 'finely divided' and 'completely coated by' are definite. See Nasuno et al., col. 3 line 21." (Brehm Aff. Ex. A: 8/21/85 Tietjen Interview Record.) This apparently referred to U.S. Patent No. 4,390,524 (the "Nasuno Patent"), which was described as prior art in the Tietjen Patent, and states, in relevant part: "the oily material-coated pigment comprising a carrier pigment in the form of finely divided particles the surfaces of which are substantially coated with a substantially water-insoluble oily material. . . ." (Brehm Aff. Ex. B: Nasuno Patent at Col. 3 Lns. 20-23.) According to Revlon, "[t]his reference [to the Nasuno Patent] shows that the [Tietjen] patent examiner understood what one skilled in the art knew — that the term 'completely' did not demand 100% coating, but that it was equivalent to 'substantially' as long as the purpose of the coating was achieved." (Revlon Supp. Br. at 9.)
The Court rejects Revlon's argument for several reasons. First, the Tietjen examiner only referred to Line 21 of the Nasuno Patent, which states only "carrier pigment in the form of finely divided particles." (Brehm Aff. Ex. B: Nasuno Patent at Col. 3 Ln. 21.) Since the examiner stated that the "terms 'finely divided' and 'completely coated by' are definite," the reference to the Nasuno Patent appears to have been solely for the purpose of explaining the Tietjen Patent's "finely divided" language.
Second, even if the Court accepted that the examiner's agreement (1) referred to Lines 20-23 and not merely Line 21, and (2) thereby explained the "completely coated" phrase and not merely the "finely divided" phrase, the examiner's agreement is far too cryptic to affect construction of the '722 Patent. The agreement may have referenced the Nasuno Patent for any number of reasons having nothing to do with construction of the terms "completely" versus "substantially." This Court would need much stronger evidence than this to support the extraordinary proposition that "completely coated" means "substantially coated."
Third, in all of its briefing, Revlon argues not that "completely" means "substantially" in the '722 Patent, but that "completely" simply means coated sufficiently to render the particles hydrophobic — a purely functional interpretation. The Nasuno Patent, however, is not purely functional, as it contains the structural requirement that the particle surface be "substantially coated." This is, of course, parallel to the '722 patent, and demonstrates that "completely," like "substantially," is a term of degree that may not be excised in favor of a functional definition. The parallel nature of the '722 and Nasuno language is shown by comparing the relevant '722 specification language ("sufficiently high to coat the pigment completely and render it completely hydrophobic"; '722 Patent, Col. 3, lines 13-14) with the Nasuno specification language ("substantially coated with a substantially water-insoluble oily material"; Nasuno, Col. 3, lines 22-23). Rather than completely coating the pigment to render it completely hydrophobic, as in the '722 Patent, the Nasuno Patent requires only substantially coating the pigment to render it substantially hydrophobic. In both cases, a structural requirement as to the degree of coating results in a functional requirement as to the same degree of hydrophobicity — i.e., completely versus substantially. Revlon's effort to excise the structural requirement as to the degree of coating, therefore, should be rejected.
In short, the Tietjen Patent and its history are not intrinsic evidence, and even if the Court employed it as extrinsic evidence, it does not change the Court's construction of the "completely coated" claim language.
b. Revlon's Impossibility Argument Based on Experts' Reports
Estee Lauder's expert, Dr. Gerd H. Dahms, opined in his rebuttal report that:
[I]t is my opinion that one of ordinary skill in the art would read the language 'whose surfaces are chemically bonded to and physically completely coated by polysiloxane, which coating renders the particles hydrophobic' to mean that the surfaces of the pigments be physically completely coated by polysiloxane. More specifically, one of ordinary skill in the art would understand this to mean that the entire surface area of the pigment is coated by polysiloxane.
(Dkt. No. 48: Estee Lauder 56.1 Stmt. Ex. H: Dahms Rebuttal Report at 7, fn. omitted.) Dr. Dahms then averred that Estee Lauder's products did not infringe the '722 Patent:
It is my opinion that the methicone coated pigments used in [Estee Lauder's] accused products are not physically completely coated by polysiloxane as required by the claims of the '722 patent. My opinion is based on what is common knowledge in the industry as well as experiments performed in my laboratory.
First, it is well known that the surfaces of particles are not smooth and even, but are rugged and include cracks and crevices. Furthermore, the pigments are not perfectly spherical. Accordingly, a person of ordinary skill would expect there to be uncoated surfaces — both external and internal — on these pigment particles.
Second, primary pigment particles generally tend to agglomerate and, when this happens, the agglomerated primary pigment particles are coated during the coating process. Once coated, however, the agglomerates often break apart during filling, drying, packing, shipment and final use, thereby creating additional uncoated pigment surfaces.
Third, technical documents from manufacturers of coated pigments recognize that the treatment process by which the pigments are coated is not complete. Revlon produced such a document from Kobo. REV 999-0042 to 999-0061. Page five of Kobo's May 2000 Treated Pigments technical brochure (REV 999-0048) discusses its technology for coating methicone-coated pigments and notes: "Kobo's proprietary technology minimizes hydrogen potential, leading to a uniform and more complete treatment of each primary particle." A coating/treatment is either complete or incomplete. Thus, the Kobo document shows that even the manufacturers of coated pigments recognize that the pigments are not completely coated.
(Dahms Rebuttal Report at 8-9.)
Dr. Dahms also performed a simple experiment based on titanium dioxide's peculiar response to light. (Id. at 9-10.) Because the coated titanium dioxide pigment in the accused products demonstrated a response to light, Dr. Dahms concluded that such pigments could not have been completely coated. (Id.)
Revlon submitted an affidavit from its own expert, Dr. Robert Lochhead, who was only too happy to concur with Dr. Dahms on this point by asserting that: (1) "one of ordinary skill would acknowledge that there would be uncoated surfaces on the molecular level"; (2) "one of ordinary skill in the art would understand that pigment particles might agglomerate and break apart, and that such actions could create uncoated surfaces on a pigment"; and (3) "technical documents from manufacturers recognize that the treatment process by which the pigments are coated does not result in 100% coated pigments, and [I] would expect one of ordinary skill in the art to have the same understanding." (Dkt. No. 52: Revlon 56.1 Stmt. Ex. G: Lochhead Aff. ¶¶ 16-18; see also Revlon 56.1 Stmt. ¶¶ 28-30.) As discussed in Point I above, while the Court has struck certain portions of Dr. Lochhead's affidavit, the Court still must discuss the extrinsic evidence issue raised by Dr. Dahms' opinions.
According to Revlon, "Dr. Dahms acknowledges that one skilled in the art would find the '100% coated' interpretation suggested by plaintiff an impossibility." (Dkt. No. 54: Revlon Br. at 8.) Revlon thus argues that
Dr. Dahms . . . would agree that one reasonably skilled in the art would realize that the process set forth [in the Patent's preferred embodiment] would not result in 100% coated pigments.
. . . .
If the very process the patent exemplifies for creating pigments that are "physically completely coated by, polysiloxane which renders the particle hydrophobic" would not result in 100% coating, then the patent's preferred embodiment in the specification would not fall within the scope of the patent claim. "Such an interpretation is rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this case."
(Revlon Br. at 13, citations omitted.) "Only Revlon's claim interpretation would render both the patent specification and the claims internally consistent and would be in accord with the understanding of a person of ordinary skill in the art." (Dkt. No. 60: Revlon Reply Br. at 4.)
Apparently as a subset of this "preferred embodiment" argument, Revlon also asserts that Estee Lauder's "100% coating" interpretation would conflict with the "commercially available" pigment alternative in the Patent's preferred embodiment. (Dkt. No. 54: Revlon Br. at 15-16.) Specifically, the Patent specification states that "[a]s an alternative to synthesis, satisfactory coated pigments usable in this invention are commercially available from a variety of sources." ('722 Patent at Col. 3, Lns. 59-62.) Revlon cites Dr. Dahms as allegedly acknowledging that despite testing more than 100 pigments, he found only two that currently meet the test for 100% coating and that both were either in a "pilot" stage or "confidential." (Revlon Br. at 6, 15-16; Revlon 56.1 Stmt. ¶ 23, citing Dkt. No. 51: Estee Lauder 56.1 Obj. Ex. Q: Dahms Dep. at 335:16-341:18.) Thus, according to Revlon, Estee Lauder's construction would result in a claim that excluded the patent's preferred embodiment calling for the use of "commercially available" pigments. (Revlon Br. at 15-16.)
Revlon's expert also asserted that "I am not aware that there were any commercially available pigments that could be deemed 100% coated in 1986, nor am I aware of the existence of such products today." (Lochhead 2/21/02 Aff. ¶ 19.) As discussed in Point I above, Dr. Lochhead's statement has been precluded.
Even if the commercially available alternative pigments were part of the preferred embodiment of Revlon's Patent — which the Court has found they are not (see Point III.B.1.b above), and even if the Court were to accept Revlon's argument that those skilled in the art would know that it is impossible to entirely coat either commercially available pigments or the synthesized pigments disclosed in the Patent, Revlon's arguments still must be rejected because extrinsic evidence may not be employed to vary or contradict unambiguous claim language.
First, as noted above (Point III.B.1.a), because neither party has offered reasonable alternative technical definitions for the claim language at issue, the intrinsic evidence is entirely unambiguous: one skilled in the art would construe "completely coated" in the context of the claim language to mean entirely or 100% coated. See York Prods., Inc. v. Central Tractor Farm Family Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996) ("Without an express intent to impart a novel meaning to claim terms, an inventor's claim terms take on their ordinary meaning." Employing non-technical definition of term "substantially."). No alternative construction is reasonable — based on the intrinsic evidence alone, there is no inconsistency between the claim language and the preferred embodiment.
Second, the only evidence Revlon has offered to the contrary is Dr. Dahms' statement that one skilled in the art would know that it is impossible to entirely coat a commercially available pigment. This is not the kind of extrinsic evidence — involving a technical definition — that might properly be relied upon when construing a patent. See, e.g., Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1378 (Fed. Cir. 2001) ("the meaning of the claim limitation is apparent from a review of the intrinsic evidence alone, and it is improper for us to rely on extrinsic evidence other than that used to determine the ordinary meaning"). (See also Point III.A.2 above.) Indeed, Revlon has offered no case authority whatsoever for relying upon such extrinsic evidence of "impossibility." Further, it is beyond dispute that Revlon offers Dr. Dahms' statement in order to "vary or contradict" the unambiguous claim language by effectively reading out the "completely coated" structural element. Reliance upon such extrinsic evidence would therefore violate a cardinal rule of patent construction. See, e.g., CAE Screenplates v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1318 (Fed. Cir. 2000) ("[W]hen the intrinsic evidence is unambiguous, it is improper for a court to rely on extrinsic evidence such as expert testimony when construing disputed claim limitations.").
Moreover, even if the Court were to accept as true the assertion — based on extrinsic evidence — that it is impossible to completely coat a pigment, the claim language and other intrinsic evidence remain unambiguous that the pigment must be completely coated. One skilled in the art would conclude that: (1) the unambiguous claim language requires completely coated pigment; and (2) because, based on extrinsic evidence, it is impossible to completely coat pigment, the recited invention is inoperable — it would not work as described. The intrinsic evidence admits no other possibility; the Court may not use extrinsic evidence to rewrite unambiguous claim language. See, e.g., Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002) (The patentee "argues that one of skill in the art would understand that the term 'perpendicular' in the claim should be read to mean 'parallel.' [The patentee] stretches the law too far. It is not our function to rewrite claims to preserve their validity. We are simply tasked with determining whether the claims 'particularly point out and distinctly claim' what the inventor regards as his invention. Moreover, it is of no moment that the contradiction is obvious: semantic indefiniteness of claims 'is not rendered unobjectionable merely because it could have been corrected.'") (citations omitted); Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357, 1372 (Fed. Cir. 2002) ("[W]here claim language is clear we must accord it full breadth even if the result is a claim that is clearly invalid."); Elekta Instr. S.A. v. O.U.R. Sci. Int'l, Inc., 214 F.3d at 1309 (Patentee "further argues that [alleged infringer's] interpretation would render claim 1 invalid, because [an invention with the stated limitations] would be inoperative. We do not reach the issue of invalidity [based on inoperability], and we note that the record is unclear as to whether such a device would be inoperative. Moreover, having concluded that the amended claim is susceptible of only one reasonable construction, we cannot construe the claim differently from its plain meaning in order to preserve its validity (upon which we do not opine)."); K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999) ("That the applicant could possibly have added terms other than 'permanently' to create a patentable distinction with the asserted prior art is simply irrelevant to our claim construction task. Courts do not rewrite claims; instead, we give effect to the terms chosen by the patentee."); Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999) ("[W]e do not permit courts to redraft claims. . . . Where, as here, the claim is susceptible to only one reasonable construction, the canons of claim construction cited by [patentee] are inapposite, and we must construe the claims based on the patentee's version of the claim as he himself drafted it. . . . As a result of our claim construction, clause [d] does not make 'sense' as [patentee] itself realizes and concedes. What [patentee] fails to realize is that such a nonsensical result does not require the court to redraft the claims of the '943 patent. Rather, where as here, claims are susceptible to only one reasonable interpretation and that interpretation results in a nonsensical construction of the claim as a whole, the claim must be invalidated, thus preventing unduly burdening competitors who must determine the scope of the claimed invention based on an erroneously drafted claim."), cert. denied, 529 U.S. 1037, 120 S.Ct. 1531 (2000); Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999) ("We . . . have consistently employed the caveat, 'if possible,' to our instruction that claims should be construed to sustain their validity. We have also admonished against judicial rewriting of claims to preserve validity. Therefore, if the only claim construction that is consistent with the claim's language and the written description renders the claim invalid, then the axiom does not apply and the claim is simply invalid. In the case before us, the court misapplied the axiom and adopted a construction of 'flashlight' that is at odds with the clear language of the claim and the written description.") (citations omitted); Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1584 (Fed. Cir. 1995) ("Although we construe claims, if possible, so as to sustain their validity, . . . it is well settled that no matter how great the temptations of fairness or policy making, courts do not redraft claims."), cert. denied, 517 U.S. 1167, 116 S.Ct. 1567 (1996); Texas Instr. Inc. v. United States Int'l Trade Comm'n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) ("[T]o construe the claims in the manner suggested by [patentee] would read an express limitation out of the claims. This, we will not do because '[c]ourts can neither broaden nor narrow claims to give the patentee something different than what he has set forth.'"); Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951 (Fed. Cir. 1993) ("It would not be appropriate for us now to interpret the claim differently just to cure a drafting error made by [patentee]. That would unduly interfere with the function of claims in putting competitors on notice of the scope of the claimed invention."); Becton Dickinson Co. v. C.R. Bard Inc., 922 F.2d 792, 799 n. 6 (Fed. Cir. 1990) ("Nothing in any precedent permits judicial redrafting of claims. At most there are admonitions to construe words in claims narrowly, if possible, so as to sustain their validity."); Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 95 Civ. 8833, 2001 WL 1334997 at *3 n. 5 (S.D.N.Y. Oct. 30, 2001) ("If the Court's construction demonstrably indicated that claims contained within the '277 patent were invalid, it would only be appropriate for the Court to construe the claims so as to preserve validity if it could do so without redrafting the claims.").
Dr. Dahms did not say that — he merely said that commercially available pigments were not 100% coated, and he also said he knew of two pigments that were 100% coated, albeit not commercially available. (See pages 57-58 above.)
Were the Court to conclude that commercially available pigments could not be completely coated and that the recited invention was impossible, a finding of invalidity would be the next logical step. (See Dkt. No. 66: Revlon Supp. Br. at 18 ("Assuming, arguendo, that the term 'completely coated' required 100% coated pigments, as hypothetically proffered by the Court, the patent would have to be found invalid. It is premature, however, to reach such a conclusion where claim construction is still at issue.").) Estee Lauder did not move for summary judgment on grounds of invalidity, however, and the Court declines to raise the issue, sua sponte, because, among other things, the factual question of impossibility has not been conclusively proven. See Elekta Instr. S.A. v. O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1309 (Fed. Cir. 2000) (after finding noninfringement, Federal Circuit declined to "reach the issue of invalidity," "not[ing] that the record is unclear as to whether [the patented] device would be inoperative").
Although not cited by either party here, the Federal Circuit's decision in Aqua-Aerobic Sys., Inc. v. Aerators Inc., 211 F.3d 1241 (Fed. Cir. 2000), is on all fours, holding that expert testimony may not be used to broaden an unambiguous claim limitation by proving that the limitation would not work in actual practice:
The experts agreed that the [patented invention in actual practice] is not air-tight. However, the district court's claim construction is in accord with the teachings of the specification, which do not permit more than a negligible or minuscule amount of air to enter and pass through the mixer. The undisputed testimony that experts would understand that the described sealing system would not produce an air-tight device, does not broaden the claims to the extent [the patentee] now proposes, that its claims should be construed to reach a system that passes a significant amount of atmospheric air. This is directly contrary to the limitations in the claims and the description in the specification.
Expert testimony is often useful to clarify the patented technology and to explain its meaning through the eyes of experience, but it may not correct errors or erase limitations or otherwise diverge from the description of the invention as contained in the patent documents. The district court correctly rejected [the patentee's] proposal that the claim should not be limited by the amount of air that passes or flows through the system but instead should be construed to cover any downflow mixer that does not suffer cavitation at the propeller. That is not the invention described and claimed by the patentee.
Id. at 1245 (citations omitted); see Williams v. General Surg. Innovs., Inc., No. 02-1474, 60 Fed. Appx. 284, 287, 2003 WL 932449 at *3 (Fed. Cir. Mar. 7, 2003) ("The '026 patent does not, on its face, disclose the removal of the tissue expander. Appellants do not contest this fact, but rather rely on expert declarations to the effect that those skilled in the art would have known that the expander could be removed as part of surgery. . . . The declarations, however, were not directed to what the patent actually disclosed, but rather what a skilled artisan could conclude therefrom.") (record cite omitted); Bioscan, Inc. v. United States Int'l Trade Comm'n, No. 87-1599, 847 F.2d 842 (table), 1988 WL 33816 at *1 (Fed. Cir. 1988) ("Where the claim is worded in such a way that the thing claimed is inoperative, the claim is invalid. . . . The administrative law judge heard testimony from several experts on whether claim 9 was enabled, and concluded that the invention set forth in claim 9 is inoperative. We agree. Although persons skilled in the art would understand what claim 9 says, as written the claim describes a device which is inoperative, and therefore the claim is invalid under 35 U.S.C. § 112."); Nichols v. Strike King Lure Co., No. Civ. A.3:99-CV-1950, 2000 WL 1593616 at *2, 8 (N.D.Tex. Oct. 25, 2000) (Construing patent for fishing lure disclosing a "resin coating over the entire outer surface." The patentee explained that fishing lures attach accessories that "create small areas on the lure body that may not be covered by the glitter-containing coating. Thus, [patentee] argues that 'entire' cannot mean that every bit of surface area is covered by the coating; instead, it must mean that only the 'greater part' of the surface of the body is covered by the coating." The court instead construed the term "entire" "in its ordinary sense" to mean "'having no element or part left out' or 'complete in degree.'" Patentee "argues that such an interpretation creates a situation wherein a lure manufacturer may avoid infringement by simply leaving a small portion of the lure uncovered by coating material. However, the Court may not consider the fact that the patentee in retrospect would have inserted qualifying terms had he considered the implications of employing absolute language. No matter how great the temptations of fairness or policy making, courts are limited to interpreting claims, and are not permitted to redraft them."); see also Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1212-16 (Fed. Cir. 2002) (holding that district court repeatedly erred by relying on "skilled in the art" expert testimony to broaden interpretation of unambiguous claim language), cert. denied, 123 S.Ct. 2230 (2003); Markman v. Westview Instrs., Inc., 52 F.3d at 983 ("[T]he extrinsic evidence of record cannot be relied on to change the meaning of the claims. In this case, as fully discussed above, the patent and prosecution history make clear that 'inventory' in claim 1 includes in its meaning 'articles of clothing.' The district court exercised its discretion in finding unhelpful Markman's testimony that he meant 'inventory,' or that one of ordinary skill in the art would understand 'inventory,' to mean something to the contrary, and furthermore the district court rejected the testimony as conflicting with the meaning derived from the patent and prosecution history. In our construction of the claim term 'inventory,' we too find unhelpful and reject Markman's testimony.").
Notably, the Aqua-Aerobic decision was written by Judge Newman, who generally favors the liberal use of extrinsic evidence. See, e.g., W. Thad Adams J. Derel Monteith, Jr. The Continuing Saga of Federal Circuit Patent Claim Construction Jurisprudence: Extrinsic Evidence and Other Stories, 8 Fed. Cir. Bar J. 83, 89-91 (1999).
The decision in AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239 (Fed. Cir. 2001), illustrates this point. There, the Federal Circuit held that the district court erred by not considering essentially undisputed testimony of one skilled in the art that the patented invention would not run absent a particular limitation that was not clearly stated in the claim language. Id. at 1248-49 ("We can't run this product without barrier layers. I mean, it just goes whacko."). In AFG, however, unlike here, the intrinsic evidence was "vague or ambiguous," thus requiring the admission of extrinsic evidence to settle the ambiguity. Id. at 1249. Further, rather than, as here, contradicting the intrinsic evidence, the expert testimony in AFG "explain[ed], corroborate[d], and reinforce[d] the distinction recited in the written description." Id.
The preferred embodiment decisions relied upon by Revlon are thus inapposite. The Federal Circuit has repeatedly held a claim interpretation that reads out a preferred embodiment "is rarely, if ever, correct and would require highly persuasive evidentiary support." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); accord, e.g., Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1349 (Fed. Cir. 2003). (See cases cited at page 20 above.) Indeed, the Federal Circuit held that "[w]e have done so only one time — in an instance where the patent applicant limited the full scope of the claim language to omit the preferred (and only disclosed) embodiment in order to overcome an examiner's rejection." Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d at 1349 (citing Elekta Instr. S.A. v. O.U.R. Sci. Int'l, Inc., 214 F.3d at 1308). In the preferred embodiment cases, however, the construction asserted by the alleged infringer would have excluded the preferred embodiment. In this case, by contrast, the unambiguous claim limitation that the pigment must be 100% coated does not inherently conflict with the preferred embodiment. A conflict would arise only if the Court violated the cardinal rule of construction by venturing outside the unambiguous intrinsic evidence and relying on extrinsic evidence that Revlon construes as opining that commercially available pigments cannot be completely coated.
As discussed above (Point III.B.1.b), although the alternative of commercially available pigments is not part of the preferred embodiment of the Patent, the result here would not change if the Court held otherwise.
The Court concludes that the claim language "completely coated" means what it says — the pigment must be 100% coated.
IV. INFRINGEMENT ANALYSIS
"An infringement analysis is 'a two-step process in which we first determine the correct claim scope, and then compare the properly construed claim to the accused device to determine whether all of the claim limitations are present either literally or by a substantial equivalent.'" TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1371 (Fed. Cir.) (citation omitted), cert. denied, 123 S.Ct. 436 (2002); see also cases cited at pages 14-15 above. "Whether the accused device contains an element corresponding to each claim limitation or its equivalent is a question of fact, which, on summary judgment, is a question we review to determine whether a material factual issue remains genuinely in dispute." TechSearch, L.L.C. v. Intel Corp., 286 F.3d at 1369-70; accord, e.g., Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 38, 117 S.Ct. 1040, 1053 (1997) (it is "for the jury to decide whether the accused process was equivalent to the claimed process"); Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1344 (Fed. Cir. 2002) ("A determination of whether properly construed claims literally read on an accused product is a question of fact, as is the question of whether an element of an accused device is the equivalent of a claim limitation.").
[I]nfringement must be shown literally or equivalently for each limitation; general assertions of facts, general denials, and conclusory statements are insufficient to shoulder the non-movant's burden. Thus, the party opposing the motion for summary judgment of noninfringment must point to an evidentiary conflict created on the record, at least by a counter-statement of a fact set forth in detail in an affidavit by a knowledgeable affiant. Mere denials or conclusory statements are insufficient.
TechSearch, L.L.C. v. Intel Corp., 286 F.3d at 1372 (citations omitted).
"A movant may prevail by pointing out the 'absence of evidence to support the nonmoving party's case' with respect to an issue on which the nonmovant bears the burden." Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1389 (Fed. Cir. 1992). Estee Lauder has pointed out the absence of evidence showing infringement as to claims 1, 5, and 7 either literally or under the doctrine of equivalents. Revlon, which bears the burden of proof at trial, thus has the burden on this motion of proving infringement. See, e.g., Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d at 1389. As detailed below, summary judgment should be granted to Estee Lauder because no reasonable jury could find infringement of claims 1, 5, or 7 either literally or by the doctrine of equivalents.
A. Literal Infringement
"To establish literal infringement, all of the elements of the claim, as correctly construed, must be present in the accused system." TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1371 (Fed. Cir.), cert. denied, 123 S.Ct. 436 (2002). The only element at issue here is the degree of coating in Estee Lauder's products. The Court has construed the Patent claims to require pigment surfaces that are 100% coated with polysiloxane. Estee Lauder's expert has opined that Estee Lauder's accused products are less than 100% coated. (See pages 57-58 above.) Revlon has submitted no evidence to the contrary. The Court thus has no choice but to reject Revlon's claim of literal infringement, as a contrary finding would improperly read out a structural element of the claims. (See cases cited at pages 39-40 above.) As the Federal Circuit noted in a similar context, patentee's "argument that it would be a simple matter for a potential infringer to avoid infringement by varying the amount of suspension in the [pharmaceutical] preparation is unavailing. The claims are the claims." See, e.g., Forest Labs., Inc. v. Abbott Labs., 239 F.3d 1305, 1312 (Fed. Cir. 2001) (affirming summary judgment in favor of accused party because patentee failed to prove that the accused pharmaceutical product contained sufficient water to fall within the patent's claimed water range).
Estee Lauder asserts that it has not conceded literal infringement or equivalence as to the remaining elements in the accused products. (Dkt. No. 57: Estee Lauder Reply Br. at 8 n. 8.) The question is moot, however, given the Court's finding of noninfringement based on the element of pigment coating.
Estee Lauder argues that Revlon should be precluded from asserting the doctrine of equivalents because it waited too long to raise the issue. (Dkt. No. 65: Estee Lauder Supp. Br. at 13-14; see also Dkt. No. 57: Estee Lauder Reply Br. at 9.) The Court disagrees.
Prior to the December 2001 Pretrial Order, Revlon gave no clear indication that it intended to assert infringement under the doctrine of equivalents as to claims 1, 5, and 7 now at issue. (See Dkt. No. 54: Revlon Br. at 20 n. 6, Dkt. No. 60: Revlon Reply Br. at 8, both citing to JPTO.) Revlon's complaint merely alleged "infringement" generally (Dkt. No. 1: Compl. ¶¶ 7-20), and Revlon's expert reports only opined that claims 1, 5, and 7 were literally infringed, while raising the doctrine of equivalents as to other claims (claims 10, 11, and 15) that Revlon has since dismissed (Dkt. No. 52: Revlon 56.1 Stmt. Ex. G1: Lochhead Prelim. Report at 4-5, 75; see also Ex. G2: Lochhead Rebuttal Report). After asserting that claims 1, 5, and 7 were literally infringed, Revlon's expert did opine that "[t]o the extent that there may be slight differences, these differences are insignificant." (Dkt. No. 60: Revlon Reply Br. at 8, citing Revlon 56.1 Stmt. Ex. G1: Lochhead Prelim. Report at 4.) Such superficial and ambiguous language, however, did not raise the doctrine of equivalents with respect to claims 1, 5, and 7, especially when contrasted with the report's express statement that (the subsequently dismissed) claims 10, 11, and 15 were governed by the doctrine of equivalents. (Lochhead Prelim. Report at 4-5, 75.) Indeed, in the report's "conclusion," Dr. Lochhead simply opined that claims 1-5 and 7-9 were literally infringed (without mentioning "insignificant differences"), and that claims 10, 11, and 15 were infringed under the doctrine of equivalents. (Lochhead Prelim. Report at 75.)
The standard for deciding whether to allow such a tardy change of theory is unclear. Estee Lauder argues that the Court should apply the same standard as that applied to amendment of pleadings, and thus argues that Revlon should be prohibited from now raising the doctrine of equivalents, because (1) amendment would be futile, and (2) Revlon unduly delayed amending until after discovery had closed. (Dkt. No. 65: Estee Lauder Supp. Br. at 13-14.) See, e.g., Missigman v. USI Northeast, Inc., 131 F. Supp.2d 495, 517-18 (S.D.N.Y. 2001) ("Courts routinely refuse to allow parties to raise additional claims or defenses, for the first time, in the pretrial order after the completion of discovery.").
Yet, as Revlon points out, the nature of the infringement — whether literal or under the doctrine of equivalents — need not be pleaded, obviating the need for an amendment to add the 72 theory. (Dkt. No. 66: Revlon Supp. Br. at 20, citing Fed.R.Civ.P. Form 16.) See Liquid Dynamics Corp. v. Vaughan Co., No. 01 C 6934, 2002 WL 1769979 at *8 (N.D.Ill. Aug. 1, 2002) (rejecting argument that because plaintiff failed to plead "an infringement claim under the doctrine of equivalents" in its complaint, the theory could not be raised when opposing summary judgment; "A patent infringement claim encompasses two different theories of infringement: literal infringement and infringement under the doctrine of equivalents." Complaint of "patent infringement" is sufficient to cover either or both claims.).
Revlon (Dkt. No. 66: Revlon Supp. Br. at 19) looks for support to Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512 (Fed. Cir. 1995) (en banc), rev'd on other grounds, 520 U.S. 17, 117 S.Ct. 1040 (1997), in which the Federal Circuit opined:
In answer to the second question posed by this court en banc, infringement under the doctrine of equivalents is an issue of fact to be submitted to the jury in a jury trial with proper instructions, and to be decided by the judge in a bench trial. The answer to the third question posed by this court en banc necessarily flows from the answer to the second question. The trial judge does not have discretion to choose whether to apply the doctrine of equivalents when the record shows no literal infringement.62 F.3d at 1522. The Hilton Court's statement as to the doctrine of equivalents seems, however, merely to be a corollary of its earlier holding in the same decision that "the Supreme Court's cases on the doctrine of equivalents foreclose a holding that the doctrine is a matter of equity to be applied at the court's discretion." Id. at 1521. See Dap Prods., Inc. v. Sashco, Inc., No. C-3-92-407, 1996 WL 1671232 at *11 n. 16 (S.D.Ohio July 17, 1996) ("Although mindful of the Federal Circuit's statement that '[t]he trial judge does not have discretion to choose whether to apply the doctrine of equivalents when the record shows no literal infringement,' [citing Hilton], and the resulting implication that courts must consider the doctrine of equivalents, this Court does not believe that the Federal Circuit would require trial courts to apply the doctrine where it is not raised or argued by the parties themselves."). Revlon's Hilton argument — that this Court must consider the doctrine of equivalents even if Revlon did not timely raise the issue — also is contradicted by Federal Circuit decisions affirming orders precluding patentees from asserting the doctrine of equivalents where such patentees had violated discovery orders or the local civil rules. See Genentech, Inc. v. Amgen, Inc., 289 F.3d 761, 773-74 (Fed. Cir. 2002) (affirming district court's preclusion of patentee from proceeding on a theory of infringement under the doctrine of equivalents, because patentee "did not expressly include that theory in a claim chart, as strictly required under" local civil rules); Nike Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 648 (Fed. Cir. 1994) (District court at a conference instructed both parties to provide full disclosure in response to discovery requests. During discovery, patentee stated that it "'ha[d] not made any contention that defendants have infringed . . . under the doctrine of equivalents'" while at the same time reserving its right to have expert testimony asserting a doctrine of equivalents claim, but did not submit any such expert report before the close of discovery. District court did not abuse its discretion in precluding equivalents claim for violation of oral discovery order.).
See also, e.g., Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1057 (Fed. Cir.) ("if there are [allegedly infringing] devices that do not literally infringe, infringement under the doctrine of equivalents must be considered."), cert. denied, 488 U.S. 825, 109 S.Ct. 75 (1988).
Estee Lauder has not asserted that Revlon violated any particular discovery order or rule. Revlon, which has the burden of proving infringement, has already been precluded from offering expert testimony as to the doctrine of equivalents regarding the claims now at issue, as
Revlon's expert failed to raise the issue in deposition testimony or in his preliminary and rebuttal reports. (See Point I above.) The only issue, therefore, is whether Revlon can oppose Estee Lauder's motion for summary judgment of non-infringement by asserting, based on facts already in the record, the doctrine of equivalents. The Court concludes that since there has been no discovery violation, Revlon can do so.
Cf. Rambus, Inc. v. Infineon Techs. AG, 145 F. Supp.2d 721 (E.D.Va. 2001) (precluding expert testimony on doctrine of equivalents as sanction for patentee's late filing of expert report raising doctrine of equivalents analysis for the first time, though patentee had earlier asserted a "reservation of rights" to assert such a theory).
2. Revlon is Not Precluded by Prosecution History Estoppel From Arguing Infringement Under the Doctrine of Equivalents
Estee Lauder asserts that pursuant to the '722 Patent's reexamination, Revlon added the "physically completely coated by" limitation to claims 10 through 15. (Dkt. No. 57: Estee Lauder Reply Br. at 9-10, citing Dkt. No. 55: Estee Lauder 56.1 Obj. Ex. M at 7-12, 14.) According to Estee Lauder, this narrowing of the Patent's claims during the prosecution history estops Revlon from asserting the doctrine of equivalents regarding the element narrowed. (Estee Lauder Reply Br. at 9-10.)
A reexamination certificate was issued by the PTO on August 24, 1999. (Dkt. No. 41: JPTO Ex. 1: Joint Facts ¶ 4.)
Prosecution history "[e]stoppel arises when an amendment is made to secure the patent and the amendment narrows the patent's scope." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736, 122 S.Ct. 1831, 1840 (2002). Absent this estoppel doctrine, "the inventor might avoid the PTO's gatekeeping role and seek to recapture in an infringement action the very subject matter surrendered as a condition of receiving the patent." Id. at 734, 122 S.Ct. at 1839. The scope of the estoppel depends on "the inferences that may reasonably be drawn from the amendment." Id. at 737-38, 122 S.Ct. at 1840. "[E]ven if the amendment's purpose were unrelated to patentability, the court might consider whether it was the kind of reason that nonetheless might require resort to the estoppel doctrine," as "a narrowing amendment made to satisfy any requirement of the Patent Act may give rise to an estoppel." Id. at 735-36, 122 S.Ct. at 1839. "If [an] amendment is truly cosmetic, then it would not narrow the patent's scope or raise an estoppel. On the other hand, if [an] amendment is necessary and narrows the patent's scope — even if only for the purpose of better description — estoppel may apply." Id. at 736-37, 122 S.Ct. at 1840. "[W]hen the court is unable to determine the purpose underlying a narrowing amendment — and hence a rationale for limiting the estoppel to the surrender of particular equivalents — the court should presume that the patentee surrendered all subject matter between the broader and the narrower language." Id. at 740, 122 S.Ct. at 1842. The patentee bears the burden of overcoming the presumption by "showing that the amendment does not surrender the particular equivalent in question." Id. at 740, 122 S.Ct. at 1842; accord, e.g., Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349-50 (Fed. Cir. 2002).
Prosecution history estoppel does not apply here. Estee Lauder is correct that each of claims 10 through 15 (which are no longer at issue) was amended to add the following language: "wherein the surfaces of the particles of pigment are chemically bonded to, and physically completely coated by," a particular silicone component. (Estee Lauder 56.1 Obj. Ex. M at 7-12.) However, the amendment itself appears to show that these claims were simply being converted from "dependent" to "independent" claims, which coincided with the addition of the coating language:
Each of Claims 10-15 has been converted from dependent form to independent form, as requested by the Examiner. In addition, a clause has been added to each of those claims, indicating that the surfaces of the particles of pigment are chemically bonded to, and physically completely coated by, a particular silicone component. Support for these limitations is found in the corresponding Examples in the specification.
See 37 C.F.R. § 1.75(c) ("One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. . . . Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim.").
(Ex. M at 14.) Originally, Claims 10 through 15 of the '722 Patent were dependent claims that incorporated Claim 6, which itself incorporated Claim 5. ('722 Patent.) The amendment to Claims 10-15 did not change the claim language from "physically coated" to "physically completely coated," but rather carried over all of the coating language from Claim 5 to claims that had previously been silent as to coating. (Compare '722 Patent Claims 5 10-15 with Ex. M at 4, 7-12.) Further, the "physically completely coated" language was always present in claims 1, 5, and 7 at issue here. ('722 Patent.) Thus, it cannot reasonably be argued that the "completely coated" language narrowed the amended claims or that the underlying purpose of the amendment should result in estoppel. Cf. Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359-60 (Fed. Cir. 2001) ("Because [the] amendment did not satisfy the 'narrowing amendment' requirement of Festo, . . . we see no need to examine the reason why the applicant amended the claim."), cert. denied, 123 S.Ct. 90 (2002).
The original application filed in 1986 (later iterations of which became the '722 Patent) contains the same "physically completely coated" language (Dkt. No. 60: Revlon Reply Br. Ex. W: Patent Serial No. 8,997 filed 12/19/86, at 23, 26), and claims 1, 5, and 7 currently at issue contain the same "physically completely coated" language in the October 9, 1998 patent amendment (Estee Lauder 56.1 Obj. Ex. M at 2, 4-6).
The Court therefore addresses infringement under the doctrine of equivalents on the merits.
3. Applicable Substantive Law Under the Doctrine of Equivalents
"Under this doctrine [of equivalents], 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, 117 S.Ct. 1040, 1045 (1997). The doctrine of equivalents recognizes that limiting causes of action to only literal infringement "would leave room for — indeed encourage — the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim. . . ." Graver Tank Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 607, 70 S.Ct. 854, 856 (1950). "The essence of the doctrine [of equivalents] is that one may not practice a fraud on a patent." Id. at 608, 70 S.Ct. at 856.
"Each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole. It is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety." Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. at 29, 117 S.Ct. at 1049. An element of an accused device is equivalent to an element of the patented invention if the differences between them are "insubstantial." Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. at 39, 117 S.Ct. at 1054; accord, e.g., Riles v. Shell Expl. Prod. Co., 298 F.3d 1302, 1309 (Fed. Cir. 2002) ("'A claim element is equivalently present in an accused device if only 'insubstantial differences' distinguish the missing claim element from the corresponding aspects of the accused device.'"). "'Whether a component in the accused subject matter performs substantially the same function as the claimed limitation in substantially the same way to achieve substantially the same result may be relevant to this determination.'" Riles v. Shell Expl. Prod. Co., 298 F.3d at 1309; accord, e.g., Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. at 39, 117 S.Ct. at 1054 (describing this alternative as the "triple identity test"); Optical Disc Corp. v. Del Mar Avionics, 208 F.3d 1324, 1335 (Fed. Cir. 2000). Whether a court applies the "insubstantial differences" test or the "triple identity" test, the "essential inquiry" remains the same: "[d]oes the accused product or process contain elements identical or equivalent to each claimed element of the patented invention?" Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. at 40, 117 S.Ct. at 1054; see Wright Medical Tech. v. Osteonics Corp., 122 F.3d 1440, 1444 (Fed. Cir. 1997) (Equivalency requires that "every limitation of the asserted claim, or its equivalent, is found in the accused subject matter, the latter differs from what is literally claimed only insubstantially, and it performs substantially the same function in substantially the same way to achieve substantially the same result.").
"There seems to be substantial agreement that, while the triple identity test may be suitable for analyzing mechanical devices, it often provides a poor framework for analyzing other products or processes. On the other hand, the insubstantial differences test offers little additional guidance as to what might render any given difference 'insubstantial.'" Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. at 39-40, 117 S.Ct. at 1054.
"The better view, and the one consistent with . . . the objective approach to infringement, is that intent plays no role in the application of the doctrine of equivalents." Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. at 36, 117 S.Ct. at 1052. "[T]he proper time for evaluating equivalency — and thus knowledge of interchangeability between elements — is at the time of infringement, not at the time the patent was issued." Id. at 37, 117 S.Ct. at 1053.
The Supreme Court has observed that "the doctrine of equivalents, when applied broadly, conflicts with the definitional and public-notice functions of the statutory claiming requirement." Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. at 29, 117 S.Ct. at 1049. "The doctrine of equivalents cannot be used to erase 'meaningful structural and functional limitations of the claim on which the public is entitled to rely in avoiding infringement.'" Conopco, Inc. v. May Dep't Stores Co., 46 F.3d 1556, 1562 (Fed. Cir. 1994), cert. denied, 514 U.S. 1078, 115 S.Ct. 1724 (1995). On the other hand, if the doctrine of equivalents is applied too narrowly, it risks being reduced "to nothing more than a repeated analysis of literal infringement," Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 149 F.3d 1309, 1317 (Fed. Cir. 1998), vitiating the doctrine's power to prevent "fraud on a patent." See, e.g., K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1366-68 (Fed. Cir. 1999) (discussing tension in doctrine of equivalents); ADC Telecom., Inc. v. Panduit Corp., No. Civ. 01-477, 2002 WL 31789473 at *14 (D.Minn. Dec. 11, 2002) (same).
In recent years, the Federal Circuit has effectively narrowed the doctrine of equivalents by expansively applying the "all elements rule" (also called the "all limitations rule"), which provides that "there can be no infringement under the doctrine of equivalents if even one limitation of a claim or its equivalent is not present in the accused device." Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1321 (Fed. Cir. 2003) (citing Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935-36 (Fed. Cir. 1987) (en banc), cert. denied, 485 U.S. 961, 1009, 108 S.Ct. 1226, 1474 (1988)). "Thus, if a court determines that a finding of infringement under the doctrine of equivalents 'would entirely vitiate a particular claim[ed] element,' then the court should rule that there is no infringement under the doctrine of equivalents." Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d at 1321; see Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. at 39 n. 8, 117 S.Ct. at 1053 n. 8 ("Where the evidence is such that no reasonable jury could determine two elements to be equivalent, district courts are obliged to grant partial or complete summary judgment. . . . [U]nder the particular facts of a case, if prosecution history estoppel would apply or if a theory of equivalence would entirely vitiate a particular claim element, partial or complete judgment should be rendered by the court, as there would be no further material issue for the jury to resolve."); Tronzo v. Biomet, Inc., 156 F.3d 1154, 1160 (Fed. Cir. 1998) ("If a theory of equivalence would vitiate a claim limitation . . . then there can be no infringement under the doctrine of equivalents as a matter of law."), cert. denied, 534 U.S. 1035, 122 S.Ct. 580 (2001). Under the Federal Circuit's interpretation of the all elements rule, accused products that seem substantially similar to patented inventions — with seemingly minor structural differences and no apparent functional differences — have been found non-infringing as a matter of law. See generally Daniel H. Shulman Donald W. Rupert, "Vitiating" the Doctrine of Equivalents: A New Patent Law Doctrine, 12 Fed. Cir. B.J. 457 (2002-2003).
For example, Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091 (Fed. Cir. 2000), cert. denied, 532 U.S. 1008, 121 S.Ct. 1734 (2001), involved a patent for a "mailer type business form" with longitudinal strips of adhesive "extending the majority of the lengths" of the mailer, 229 F.3d at 1094-95. The accused product was similar, but contained longitudinal strips of adhesive that extended only 47.8% of the lengths of the mailer. Id. at 1097, 1106. The Federal Circuit held:
[T]he applicant's use of the term "majority" is not entitled to a scope of equivalents covering a minority for at least two reasons. First, to allow what is undisputedly a minority (i.e., 47.8%) to be equivalent to a majority would vitiate the requirement that the "first and second longitudinal strips of adhesive . . . extend the majority of the lengths of said longitudinal marginal portions." '464 patent, col. 10, ll. 56-60. If a minority could be equivalent to a majority, this limitation would hardly be necessary, since the immediately preceding requirement of a "first and second longitudinal strips of adhesive disposed in said first and second longitudinal marginal portions, respectively, of said first face" would suffice. Second, it would defy logic to conclude that a minority — the very antithesis of a majority — could be insubstantially different from a claim limitation requiring a majority, and no reasonable juror could find otherwise.
In dissent, Judge Newman stated: "[t]he panel majority holds that a strip length of 47.8% can not be equivalent to a strip length of 50+%, claimed as the 'majority of the lengths' of the form. Whether 47.8% is equivalent to a majority is a question of fact, and could not be decided adversely to the patentee as a matter of law. The evidence of identity of function, way, and result, and of insubstantial difference, was not disputed on summary judgment; the question requires findings of fact, not summary disposition." Id. at 1119.
Similarly, Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1321-22 (Fed. Cir. 2002), involved application of the all limitations rule to affirm summary judgment of non-infringement under the doctrine of equivalents. Id. at 1322. The contested patent covered subsea oil wellheads having "'a workover port extending laterally through the wall of the spool tree from between the two plugs.'" Id. at 1318-19. The Federal Circuit explained that "the workover port in [the] accused device enters the wellhead assembly 'above' the two plugs, which cannot be equivalent to a connection 'between the two plugs.' Were we to ignore [patentee's] decision to claim in the '707 patent a workover port that connects to the assembly only 'between' the plugs, we would vitiate that limitation and thereby run afoul of the all-limitations rule." Id. at 1322.
Durel Corp. v. Osram Sylvania Inc., 256 F.3d 1298 (Fed. Cir. 2001), involved a patent for "encapsulated electroluminescent . . . phosphor particles used in applications such as illuminating watch faces and instrument panels in motor vehicles." Id. at 1300-01. Each of the claims at issue required that phosphor be "encapsulated by an 'oxide coating,'" id. at 1301, which the Federal Circuit construed as "primarily compris[ing] a binary compound or compounds containing only metal cations and oxygen." Id. at 1305. The accused phosphor coatings, however, primarily comprised compounds containing metal "hydroxide." Id. Accordingly, even though the district court had not reached the doctrine of equivalents question, the Federal Circuit granted judgment of non-infringement on the grounds that "no reasonable fact-finder could find such infringement":
As we have construed the claims, the "oxide coating" must primarily comprise binary compounds containing only metal cations and oxygen. [The accused product's] . . . coatings contain an additional element, hydrogen, and therefore do not meet the claim limitation that only metal cations and oxygen be present in the primary component of the oxide coating. A finding of equivalence would vitiate the limitation "oxide coating," which we have concluded is defined to primarily consist of a binary compound.
Id.; accord, e.g., Phillips Petrol. Co. v. Huntsman Polymers Corp., 157 F.3d 866, 877 (Fed. Cir. 1998) ("The accused products lack an appreciable quantity of block copolymer molecules, a necessary condition for a product to be considered a "block copolymer" as the term is used in the claims. To allow claims 1 and 2 to cover the accused products and processes would effectively read the "block copolymers" limitation out of the claims, which the Supreme Court held is not permissible.").
Estee Lauder also asserts that SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001), falls in this line of authority. (Dkt. No. 65: Estee Lauder Supp. Br. at 12.) In SciMed, however, the patent specification had expressly described the allegedly equivalent structures as having disadvantages — "a clear case of disclaimer of subject matter." 242 F.3d at 1344-45. The Federal Circuit thus held that "[h]aving specifically identified, criticized, and disclaimed the [allegedly equivalent structure], the patentee cannot now invoke the doctrine of equivalents to 'embrace a structure that was specifically excluded from the claims.'" Id. at 1345. By contrast, the '722 Patent at issue here contains no similar express disclaimer. Estee Lauder points to language in the SciMed decision stating that if a patent required that the invention be "'non-metallic,'" the patentee could not assert that a "metallic" device was equivalent. (Estee Lauder Supp. Br. at 12, quoting SciMed, 242 F.3d at 1347.) That SciMed language, however, was merely a hypothetical example divorced from the facts of the case, and thus dictum. SciMed, 242 F.3d at 1347.
Other decisions have propounded a broader view of the doctrine of equivalents. In Abbott Labs. v. Dey, L.P., 287 F.3d 1097 (Fed. Cir.), cert. denied, 123 S.Ct. 556 (2002), for example, the patent covered a respiratory drug with a "phospholipid content" of 68.6-90.7%. 287 F.3d at 1099-101. The patentee's expert testified that the accused product's phospholipid content tested at up to 94.5% — outside the patent's range — but that a drug with even 99.9% phospholipid content would perform substantially the same function in substantially the same way to achieve substantially the same result as the drug claimed in the patent. Id. at 1101. The Federal Circuit held:
[W]hile an exact number cannot be stated any more precisely than "less than 100%," an upper limit does exist. [Patentee's] expert also testified that 95% phospholipid, an amount relevant to the . . . product accused of infringement, would be exactly the same as the claimed phospholipid. Although this testimony expands the upper limit beyond the range literally recited by the claim, it does not eliminate the upper limit altogether. In addition, [the patentee] only asserts an upper limit of 94.5%. An examination of what happens in the extreme outer ranges of phospholipid content is therefore irrelevant to the scope of equivalents asserted by [patentee].
Because [patentee's] application of the doctrine of equivalents to a phospholipid upper limit of 94.5% does not eliminate the upper limit of phospholipid from the claim, [patentee] should not be precluded on this basis from relying on the doctrine of equivalents in this case.
. . . .
The fact that a claim recites numeric ranges does not, by itself, preclude [patentee] from relying on the doctrine of equivalents.
See also, e.g., Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. at 22-23, 40-41, 117 S.Ct. at 1045-46, 1054 (where patent disclosed a filtration process "at a pH from approximately 6.0 to 9.0," and the accused process was at a pH of 5.0, the Supreme Court remanded for, inter alia, a determination of whether a finding of infringement under the doctrine of equivalents would "preserv[e] . . . some meaning for each element in a claim"); Graver Tank Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 610, 70 S.Ct. 854, 857 (1950) (affirming trial court's factual finding of infringement under the doctrine of equivalents, where patent for "electric welding composition" claimed "a combination of alkaline earth metal silicate and calcium fluoride," and accused product merely substituted a non-alkaline earth metal silicate); Wright Medical Tech., Inc. v. Osteonics Corp., 122 F.3d 1440, 1445 (Fed. Cir. 1997) (case remanded where patentee had offered the testimony of the invention's designer, who stated that although the structure of the accused product differed from the patented invention, the accused product's structure "achieve[d] at least some of the functionality of the claimed" structure. Accordingly, "[t]he fact-finder might conclude that this evidence supports a finding of infringement under the doctrine of equivalents.").
4. Revlon Has Not Proven Infringement Under the Doctrine of Equivalents
Fortunately, this Court need not attempt to harmonize the above Federal Circuit authority, as Revlon has offered no evidence to support a finding of infringement of claims 1, 5, or 7 under the doctrine of equivalents.
Revlon's expert, Dr. Lochhead, offered nothing on this point. His summary judgment affidavit entirely ignored the doctrine of equivalents. (Dkt. No. 52: Revlon 56.1 Stmt. Ex. G: Lochhead Aff.) In his preliminary report, after asserting literal infringement as to claims 1, 5, and 7, Dr. Lochhead merely opined that '[t]o the extent that there may be slight differences, these differences are insignificant." (Revlon 56.1 Stmt. Ex. G1: Lochhead Prelim. Report at 4.) That statement is, of course, far too conclusory to support Revlon's burden. See, e.g., Nikken USA, Inc. v. Robinsons-May, Inc., Nos. 01-1420, 02-1006, 02-1106, 51 Fed. Appx. 874, 880, 2002 WL 31664765 at *5 (Fed. Cir. Nov. 20, 2002) (granting summary judgment because patentee made "only conclusory statements regarding equivalence"); PACTIV Corp. v. S.C. Johnson Son, Inc., No. 01-1158, 26 Fed. Appx. 943, 948 n. 5, 2002 WL 21944 at *4 n. 5 (Fed. Cir. Jan. 4, 2002) ("The testimony of [patentee's] expert . . ., which simply recites the familiar function/way/result test and concludes that the [accused product] infringes the '143 patent by the doctrine of equivalents, without further analysis or explanation, is insufficient to defeat summary judgment."); Zelinski v. Brunswick Corp., 185 F.3d 1311, 1317 (Fed. Cir. 1999) (Affirming grant of summary judgment because only evidence offered by patentee was opinion of patent attorney expert, "without any further explanation that '[b]ecause there is literal infringement, there is infringement under the doctrine of equivalents.'").
Although Dr. Lochhead is precluded from opining on the doctrine of equivalents regarding the claims now at issue (see Point I above), the Court's conclusion as to the doctrine of equivalents would not change even if the Lochhead affidavit were considered.
Dr. Lochhead did opine as to infringement of claims 10, 11 and 15 under the doctrine of equivalents. (Dkt. No. 52: Revlon 56.1 Stmt. Ex. G1: Lochhead Prelim. Report at 4-5, 75; Dkt. No. 60: Revlon Reply Br. Ex. V: Lochhead Dep. 163-65, 202-04.) His conclusory discussion ignored, however, the "completely coating" element, and thus could not affect the disposition here.
As Revlon points out, infringement under the doctrine of equivalents may be proven via documents and cross-examination of Estee Lauder's experts, and need not rely on the testimony of Revlon's expert. (Dkt. No. 60: Revlon Reply Br. at 8, quoting Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1261 (Fed. Cir. 1989) ("'A finding of equivalence is a determination of fact. Proof can be made in any form: through testimony of experts or others versed in the technology; by documents, including texts and treatises; and, of course, by the disclosures of the prior art.'") (quoting Graver Tank Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609, 70 S.Ct. 854, 857 (1950)).) Revlon's evidence from these sources, however, is similarly inadequate.
Revlon's equivalents argument must be rejected as improperly vitiating the structural element that the pigment surfaces were "physically completely coated," meaning 100% coated. As the Federal Circuit explained in Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420 (Fed. Cir. 1997), courts cannot ignore structure in favor of function:
[F]or a patentee who has claimed an invention narrowly, there may not be infringement under the doctrine of equivalents in many cases, even though the patentee might have been able to claim more broadly. If it were otherwise, then claims would be reduced to functional abstracts, devoid of meaningful structural limitations on which the public could rely. . . .
. . . If [patentee] desired broad patent protection for any container that performed a function similar to its claimed container, it could have sought claims with fewer structural encumbrances. Had [patentee] done so, then the Patent and Trademark Office (PTO) could have fulfilled its statutory role in helping to ensure that exclusive rights issue only to those who have, in fact, contributed something new, useful, and unobvious. Instead, [patentee] left the PTO with manifestly limited claims that it now seeks to expand through the doctrine of equivalents. However, as between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure. . . .
. . . [The infringing product] achieves a similar result — restricted entry to a medical disposal container — but it does so by a different arrangement of elements. Because this issued patent contains clear structural limitations, the public has a right to rely on those limits in conducting its business activities. This court will not effectively remove such a limitation under a doctrine designed to prevent "fraud on a patent."
Id. at 1424-26; accord, e.g., Zodiac Pool Care, Inc. v. Hoffinger Indus., Inc., 206 F.3d 1408, 1415-16 (Fed. Cir. 2000) (finding no infringement under the doctrine of equivalents because the structures of the patented invention and the accused product were "not even close'").
Revlon's doctrine of equivalents argument would vitiate the structural element of "100% coating" in two respects. First, Revlon has offered no evidence — from any source — establishing the degree to which the pigment surfaces in the accused products were coated. Revlon's expert testified that he did not know the degree to which the pigments in Estee Lauder's products were coated, as he "did not test [Estee Lauder's] pigments" to determine the degree of coating. (Dkt. No. 60: Revlon Reply Ex. T: Lochhead Dep. 294-97.) Estee Lauder's expert merely opined that the products were coated less than completely, without even estimating the degree of coating. (Dkt. No. 48: Estee Lauder 56.1 Stmt. Ex. H: Dahms Rebuttal Report at 9-10.) Absent some evidence of the degree of coating, the Court cannot grant Revlon the possibility of equivalence, as that would be nothing but a blank check in Revlon's favor. See, e.g., Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. at 40, 117 S.Ct. at 1054 (The Court must "focus on individual elements" with "a special vigilance against allowing the concept of equivalence to eliminate completely any such elements."); Forest Labs., Inc. v. Abbott Labs., 239 F.3d 1305, 1313 (Fed. Cir. 2001) ("A statement that water is 'irrelevant' does not establish that an unknown percentage of water is equivalent to the claimed water percentages. If we accepted this testimony and treated the water limitation as irrelevant, we would be vitiating that limitation. . . . The claims clearly set forth a limitation to specific percentages of water, and [patentee's] failure to prove that [the accused product] contains those claimed percentages or an equivalent compels our conclusion that the jury's infringement verdict was not supported by substantial evidence."); Aqua-Aerobic Sys., Inc. v. Aerators Inc., 211 F.3d 1241, 1245 (Fed. Cir. 2000) (finding no infringement under doctrine of equivalents because patentee failed to offer relevant evidence).
Revlon's expert simply relied on the assumption that the "completely coated" requirement is satisfied by the hydrophobicity test. (Lochhead Dep. 291-318, 325-26.) As Estee Lauder's expert explained: "neither Dr. Lochhead nor Revlon have performed a test on the accused products with respect to whether the coated pigments are physically completely coated by polysiloxane. Nor does the '722 patent or its prosecution history describe a methodology for performing such a test." (Dkt. No. 48: Estee Lauder 56.1 Stmt. Ex. H: Dahms Rebuttal Report at 11.)
Dahms' rebuttal report essentially asserts that the pigment surfaces are pockmarked with uncoated nooks and crannies. (Dkt. No. 48: Estee Lauder 56.1 Stmt. Ex. H: Dahms Rebuttal Report at 8-9.) While such language would seem to imply a substantial degree of coating, the Court would be improperly speculating if it guessed at a particular percentage or even a range of percentages.
Second, and more importantly, unlike the situation in Abbott Labs. v. Dey, L.P., 287 F.3d at 1107-08, where the patentee posited a specific range of equivalents that fell near the claimed range, Revlon fails to assert what range would suffice. Instead, Revlon asserts that the degree of coating is irrelevant as long as it results in hydrophobicity — effectively vitiating the structural coating element. (See, e.g., Dkt. No. 54: Revlon Br. at 6 ("The amount of coating on the resultant pigments will fulfill the definition [in the claim] regardless of whether the polysiloxane covers 100% of the surface or some lesser amount."); Dkt. No. 60: Revlon Reply Br. at 2 ("[T]he key is hydrophobicity — does the pigment work for its intended purpose — not whether microscopic or even electron microscopic analysis will reveal that a certain chemical reaction between polysiloxane and pigment surface has been driven to completion."); Dkt. No. 52: Revlon 56.1 Stmt. Ex. G: Lochhead Aff. ¶ 12 ("For purposes of utility in the invention taught by the '722 patent, it is not necessary that a pigment be 100% coated by polysiloxane, rather only that the pigment be rendered hydrophobic to allow for its dispersal within the silicon oil phase of the emulsion described in the patent."); Dkt. No. 60: Revlon Reply Ex. T: Lochhead Dep. 362-63 (Dr. Lochhead's "understanding is that physically completely coated by polysiloxane means that the particle is hydrophobic"); id. at 317. Indeed, in its pretrial memorandum, Revlon implied that hydrophobicity could be achieved with as little as 1% coating. (JPTO Ex. 19: Revlon Pretrial Br. at 7 (The Patent "directs all reviewers to specific commercially available coated pigments, known to cosmetic formulators, that were not evaluated on a molecular level to determine the degree of actual physical coating of the pigments [be it 1% or 50% or 99%] but were evaluated as to their hydrophobicity.") (brackets in original).)
Estee Lauder asserted in an unsworn statement that "a pigment could be only 40% coated by polysiloxane . . . yet still be hydrophobic." (Dkt. No. 57: Estee Lauder Reply Br. at 4 n. 4.) Absent citation to admissible evidence, this statement cannot be considered by the Court.
Revlon has quite openly and repeatedly sought to vitiate the structural coating element in favor of the functional element of hydrophobicity — a result clearly contrary to binding precedent. (See cases cited at pages 86-87 above.) In short, no reasonable jury could find equivalence here. See, e.g., Canton Bio Med., Inc. v. Integrated Liner Techs., Inc., 216 F.3d 1367, 1369 (Fed. Cir. 2000) ("The determination of equivalency vel non is a question of fact. . . . Thus summary judgment may be granted when no material fact is in dispute, or when no reasonable trier of fact could find facts whereby the nonmoving party could prevail, even when all justifiable factual inferences are drawn in favor of the nonmovant."); 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 no reasonable jury could determine that a claim limitation is met in the accused device by an equivalent.").
In its latest submission, Revlon complains that Estee Lauder raised the doctrine of equivalents issue for the first time in its opposition/reply brief. (Dkt. No. 66: Revlon Supp. Br. at 22.) Revlon thus seems to argue that the current briefing went only to Markman construction of the claim language, and that the Court should receive separate briefing on the issue of the doctrine of equivalents. (Revlon Supp. Br. at 22.)
Revlon's complaints are misguided. The parties' papers could not have been more clear: Estee Lauder moved for "judgment of non-infringement" (Dkt. No. 49: Estee Lauder Motion; Dkt. No. 50: Estee Lauder Br. at 1), and Revlon cross-moved for a Markman hearing and for a "judgment of infringement" (Dkt. No. 53: Revlon Cross-Motion; Dkt. No. 54: Revlon Br. at 1). Apparently believing that Revlon was not asserting the doctrine of equivalents, Estee Lauder noted in its opening brief that "Revlon is only asserting literal infringement." (Dkt. No. 50: Estee Lauder Br. at 2 n. 1.) The burden then fell to Revlon, in opposing Estee Lauder's summary judgment motion of non-infringement, to: (1) assert that it was claiming infringement under the doctrine of equivalents, and (2) come forward with evidence to support literal infringement or infringement under the doctrine of equivalents. See, e.g., Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1389 (Fed. Cir. 1992) (Rejecting, as "legally incorrect," patentee's argument "that as non-movant on the non-infringement issue, it had no duty to submit evidence with respect to infringement under the doctrine of equivalents. . . . [Patentee] produced no evidence of the equivalency of the function performed by the [accused products] to the function required by the means-plus-function limitation in claim 1. Such proof was an essential part of [patentee's] case on which [patentee's] would bear the burden of proof at trial.") Instead of supplying such evidence, Revlon chose to attempt to preserve the issue by noting in a footnote to its opposition brief that "Revlon has repeatedly argued and preserved the right to assert infringement under the doctrine of equivalents." (Dkt. No. 54: Revlon Br. at 20 n. 6.) While Revlon could "preserve the issue" for trial in connection with its affirmative (partial) summary judgment motion, it could not do so in opposition to Estee Lauder's summary judgment motion of non-infringement. The Federal Circuit's decision in American Seating Co. v. Transportation Seating, Inc., Nos. 02-1300, 02-1323, 62 Fed. Appx. 344, 349, 2003 WL 1795638 (Fed. Cir. Mar. 26, 2003), is on point:
[The patentee] argues that we must remand for a determination of infringement under the doctrine of equivalents. According to [patentee], [the accused party's] motion for summary judgment of noninfringement was limited to the issue of literal infringement. We disagree. [The accused party's] motion requested "summary judgment of non-infringement" — not summary judgment of no literal infringement. [Patentee's] response to [the accused party's] motion was to argue that the case turned on claim construction, saying that "a proper claim construction, an issue of law, will decide this case." [Patentee's] strategic decision to rely solely on claim construction belies its present argument that it had a doctrine of equivalents theory as well. If [patentee] had a basis for asserting infringement under the doctrine of equivalents, it should have been raised during the summary judgment proceedings, instead of representing to the district court that the case could be resolved based only on the legal issue of claim construction.
Id. at *5 n. 1.
Revlon has squandered three opportunities to document its proof under the doctrine of equivalents: an opening/opposition brief, a reply brief, and a supplemental brief. As noted above, the rule is no different in patent cases that "[s]ummary judgment must be entered against a party 'who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial.'" Schoell v. Regal Marine Indus., Inc., 247 F.3d 1202, 1207 (Fed. Cir. 2001) (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 2552 (1986)). "The doctrine of equivalents is not a talisman that entitles a patentee to a jury trial on the basis of suspicion; it is a limited remedy available in special circumstances, the evidence for which is the responsibility of the proponent." Schoell v. Regal Marine Indus., Inc., 247 F.3d at 1210. Revlon cannot simply offer conclusory statements in opposing summary judgment in the hope that better evidence will somehow turn up at trial. Summary judgment is the time "'to put up or shut up.'" Weinstock v. Columbia Univ., 224 F.3d 33, 41 (2d Cir. 2000), petition for cert. filed, No. 02-1524, 71 U.S.L.W. 3680 (U.S. Apr. 17, 2003); accord, e.g., New Paradigm Software Corp. v. New Era of Networks, Inc., 99 Civ. 12409, 2002 WL 31749396 at *16 (S.D.N.Y. Dec. 9, 2002) (Peck, M.J.) (collecting cases).
Nor can Revlon expect the Court to comb the record to find evidence not highlighted in Revlon's motion papers — summary judgment is not a game of hide and seek. See, e.g., Amnesty America v. Town of West Hartford, 288 F.3d 467, 470-71 (2d Cir. 2002) ("Fed.R.Civ.P. 56 does not impose an obligation on a district court to perform an independent review of the record to find proof of a factual dispute. . . . [N]othing in the federal rules mandates that district courts conduct an exhaustive search of the entire record before ruling on a motion for summary judgment. . . .").
Because Revlon has failed to deliver any evidence of equivalence, summary judgment should be granted dismissing the infringement claim.
CONCLUSION
For the reasons set forth above, the Court should: (1) grant Estee Lauder's motion to strike the "new" portions of the summary judgment affidavit of Revlon's expert; (2) construe the '722 Patent term "a coated pigment consisting essentially of finely divided particles of pigment whose surfaces are chemically bonded to, and physically completely coated by, polysiloxane which coating renders the particles hydrophobic" to mean that the pigment surfaces must be 100% coated with polysiloxane; (3) grant summary judgment of non-infringement in favor of Estee Lauder; and (4) deny Revlon's cross-motion for summary judgment of infringement.
FILING OF OBJECTIONS TO THIS REPORT AND RECOMMENDATION
Pursuant to 28 U.S.C. § 636(b)(1) and Rule 72(b) of the Federal Rules of Civil Procedure, the parties shall have ten (10) days from service of this Report to file written objections. See also Fed.R.Civ.P. 6. Such objections (and any responses to objections) shall be filed with the Clerk of the Court, with courtesy copies delivered to the chambers of the Honorable Richard M. Berman, 40 Foley Square, Room 201, and to my chambers, 500 Pearl Street, Room 1370. Any requests for an extension of time for filing objections must be directed to Judge Berman. Failure to file objections will result in a waiver of those objections for purposes of appeal. Thomas v. Arn, 474 U.S. 140, 106 S.Ct. 466 (1985); IUE AFL-CIO Pension Fund v. Herrmann, 9 F.3d 1049, 1054 (2d Cir. 1993), cert. denied, 513 U.S. 822, 115 S.Ct. 86 (1994); Roldan v. Racette, 984 F.2d 85, 89 (2d Cir. 1993); Frank v. Johnson, 968 F.2d 298, 300 (2d Cir.), cert. denied, 506 U.S. 1038, 113 S.Ct. 825 (1992); Small v. Secretary of Health Human Servs., 892 F.2d 15, 16 (2d Cir. 1989); Wesolek v. Canadair Ltd., 838 F.2d 55, 57-59 (2d Cir. 1988); McCarthy v. Manson, 714 F.2d 234, 237-38 (2d Cir. 1983); 28 U.S.C. § 636(b)(1); Fed.R.Civ.P. 72, 6(a), 6(e).