viva healthcare packaging usa v. ctl packaging …...viva healthcare packaging usa v. ctl packaging...

837VIVA HEALTHCARE PACKAGING USA v. CTL PACKAGING USACite as 197 F.Supp.3d 837 (W.D.N.C. 2016)

VIVA HEALTHCARE PACKAGINGUSA INC., Viva Healthcare PackagingHK Ltd, and Viva Healthcare Packag-ing Ltd, Plaintiffs,

v.

CTL PACKAGING USA INC.,and Tuboplast Hispania,

Defendants.

DOCKET NO. 3:13-cv-00569-MOC-DSC

United States District Court,W.D. North Carolina,

Charlotte Division.

Signed 07/11/2016

Filed 07/12/2016Background: Manufacturer of plastictubes and flexible tubular containers usedin cosmetics industry brought actionagainst competitor, alleging infringementof patents pertaining to methods of manu-facturing flexible plastic tubes and otherthin-walled tubular containers. Partiescross-moved for summary judgment, andto exclude proposed expert testimony.Holdings: The District Court, Max O.Cogburn Jr., J., held that:(1) manufacturer’s expert witnesses’ testi-

mony was admissible;(2) expert testimony as to meaning of

‘‘compatible polymer’’ would be exclud-ed to the extent it conflicted with Dis-trict Court’s construction of such term;

(3) expert witness’s proposed testimonythat patents were invalid as anticipatedby prior art was admissible;

(4) genuine issues of material fact existedas to whether patent claims informedthose skilled in the art about the scopeof the inventions with reasonable cer-tainty;

(5) genuine issues of material fact existedas to whether patents taught thoseskilled in the art how to make and usethe full scope of the claimed inventionswithout undue experimentation;

(6) patent was not invalid as anticipatedby academic study; and

(7) genuine issue of material fact existedas to whether prior art anticipated pat-ent claim teaching the injection mold-ing process for making thin-walledtubes.

Plaintiffs’ motions granted in part and de-nied in part, and defendants’ motions de-nied.

1. Evidence O555.2In assessing the reliability of expert

testimony, a court should consider: (1)whether the particular scientific theory canbe, and has been, tested; (2) whether thetheory has been subjected to peer reviewand publication; (3) the known or potentialrate of error; (4) the existence and mainte-nance of standards controlling the tech-nique’s operation; and (5) whether thetechnique has achieved general acceptancein the relevant scientific or expert commu-nity. Fed. R. Evid. 702.

2. Evidence O508The test for relevance, or ‘‘fit,’’ of

proposed expert testimony considerswhether the testimony proffered in thecase is sufficiently tied to the facts of thecase that it will aid the jury in resolving afactual dispute; scientific validity for onepurpose is not necessarily scientific validi-ty for other, unrelated purposes. Fed. R.Evid. 702.

3. Evidence O536While the proponent of expert testi-

mony must establish its admissibility by apreponderance of proof, the test for exclu-sion of an expert is a strict one, and thepurported expert must have neither satis-factory knowledge, skill, experience, train-ing nor education on the issue for whichthe opinion is proffered. Fed. R. Evid.702.

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838 197 FEDERAL SUPPLEMENT, 3d SERIES

4. Evidence O536One knowledgeable about a particular

subject need not be precisely informedabout all details of the issues raised inorder to offer an expert opinion. Fed. R.Evid. 702.

5. Evidence O555.2Daubert requires that a trial court

give broad consideration to all of the vari-ous factors that may illuminate the relia-bility of proffered expert testimony. Fed.R. Evid. 702.

6. Evidence O555.2A district court may exclude evidence

that is based upon unreliable principles ormethods, legally insufficient facts and data,or where the reasoning or methodology isnot sufficiently tied to the facts of the case,but the question of whether the expert iscredible or the opinion is correct is gener-ally a question for the fact finder, not thecourt.

7. Evidence O555.2Vigorous cross-examination, presenta-

tion of contrary evidence, and careful in-struction on the burden of proof are thetraditional and appropriate means of at-tacking shaky but admissible evidence.

8. Federal Civil Procedure O1278To determine whether a failure to dis-

close information required by civil proce-dure rule governing expert witnesses issubstantially justified or harmless, so asnot to warrant exclusion of evidence, theDistrict Court examines the following fivefactors: (1) the surprise to the partyagainst whom the evidence would be of-fered; (2) the ability of that party to curethe surprise; (3) the extent to which allow-ing the evidence would disrupt the trial; (4)the importance of the evidence; and (5) thenondisclosing party’s explanation for itsfailure to disclose the evidence. Fed. R.Civ. P. 26(a), 37(c)(1).

9. Federal Civil Procedure O1278, 1451Litigant need not have acted in bad

faith or in callous disregard of discoveryrules in failing to supplement its expert’sreports and deposition testimony, in orderfor its conduct to provide basis for court toexclude any new opinion offered by expert.Fed. R. Civ. P. 26(a), 37(c)(1).

10. Evidence O555.2Expert witness’s proposed testimony

that patent for method of manufacturingflexible plastic tubes and other thin-walledtubular containers was infringed with re-gard to the environmental stress crackingresistance (ESCR) test described andclaimed therein, and that patent was notindefinite was admissible, in patent in-fringement action; expert’s opinions wereprecisely the sort that could be addressedthrough vigorous cross-examination, pres-entation of contrary evidence, and carefulinstruction on the burden of proof, and leftto the fact-finder to determine credibility.Fed. R. Evid. 702.

11. Evidence O539, 555.2Expert witness’s proposed testimony

that patents pertaining to methods of man-ufacturing flexible plastic tubes and otherthin-walled tubular containers do not lackenablement with regard to their teachingon the process for the manufacture of in-jection molded tubes was admissible inpatent infringement action; expert was aperson of ordinary skill in the art andoffered opinions that were both reliableand relevant, and expert’s experience, oralleged lack thereof, with injection mold-ing, was ideal subject for exploration oncross-examination. Fed. R. Evid. 702.

12. Patents O1760(2)Expert report, which disclosed ex-

pert’s conversations with another of plain-tiff’s experts, and that other expert’s re-port adequately disclosed expert’s relianceupon the other expert’s opinions in form-


ing opinion that patents pertaining tomethods of manufacturing flexible plastictubes and other thin-walled tubular con-tainers do not lack enablement with regardto their teaching on the process for themanufacture of injection molded tubes.Fed. R. Civ. P. 26; Fed. R. Evid. 703.


that competitor infringed upon patent formethod of manufacturing flexible plastictubes and other thin-walled tubular con-tainers because the polymers used in com-petitor’s tube manufacturing process were‘‘compatible polymers,’’ as described in thepatent, was admissible in patent infringe-ment action; expert’s opinions were pre-cisely the sort that could be addressedthrough vigorous cross-examination. Fed.R. Evid. 702.


that patent for method of manufacturingflexible plastic tubes and other thin-walledtubular containers was not indefinite be-cause one of ordinary skill in the art wouldknow that a ‘‘compatible polymer,’’ as re-ferred to in the patent, was homogeneousand one that remarkably improved claritywhen blended with the other polymers inthe blend, was admissible in patent in-fringement action; fact that expert calledinventor after he submitted his expert re-ports in no way affected the reliability ofthose opinions. Fed. R. Evid. 702.

15. Patents O1848Once a district court has construed

the relevant patent claim terms, and un-less altered by the district court, then thatlegal determination governs for purposesof trial; no party may contradict thecourt’s construction to a jury.

16. Evidence O146Expert testimony as to meaning of

‘‘compatible polymer,’’ a claim term in pat-ents for methods of manufacturing flexible

plastic tubes and other thin-walled tubularcontainers, would be excluded from patentinfringement action to the extent it con-flicted with District Court’s construction ofsuch term; such testimony could only serveto complicate the issue in an already com-plicated case.

17. Patents O1760(2)Competitor’s expert witness’s pro-

posed testimony that patents pertaining tomethods of manufacturing flexible plastictubes and other thin-walled tubular con-tainers were invalid as anticipated by priorart was admissible in patent infringementaction, where competitor disclosed eachitem of prior art that allegedly anticipatedor rendered obvious the asserted patentclaims of the patents-in-suit, and specificpolymers referenced by experts were ex-amples of polymers disclosed in those priorart references. Fed. R. Evid. 702.

18. Patents O1119Overcoming the presumption of validi-

ty requires the party seeking to invalidatea patent to prove invalidity by clear andconvincing evidence. 35 U.S.C.A. § 282.

19. Patents O1934In order to prevail at the summary

judgment stage, the party seeking sum-mary judgment on the issue of patent in-validity must submit such clear and con-vincing evidence of invalidity so that noreasonable jury could find otherwise. 35U.S.C.A. § 282; Fed. R. Civ. P. 56(a).

20. Patents O1934If the decisive determination of patent

invalidity depends on resolution of materi-al factual differences, then summary judg-ment is inappropriate. 35 U.S.C.A. § 282;Fed. R. Civ. P. 56(a).

21. Patents O816A patent is invalid for indefiniteness if

its language, read in light of the specifica-


tion and prosecution history, fails to in-form, with reasonable certainty, thoseskilled in the art about the scope of theinvention. 35 U.S.C.A. § 112.

22. Patents O816A patent does not satisfy the statutory

definiteness requirement merely because acourt can ascribe some meaning to a pat-ent’s claims; rather, the claims, when readin light of the specification and the prose-cution history, must provide objectiveboundaries for those of skill in the art. 35U.S.C.A. § 112.

23. Patents O816In ruling on a claim of patent indefi-

niteness, a court must determine whetherthose skilled in the art would understandwhat is claimed when the claim is read inlight of the specification. 35 U.S.C.A.§ 282.

24. Patents O1934Where expert evidence addressing

what one skilled in the art would haveunderstood by looking at a patent is inconflict, summary judgment on issue ofdefiniteness is inappropriate. 35 U.S.C.A.§ 282; Fed. R. Civ. P. 56(a).

25. Patents O1936A moving party may provide support

for motion for summary judgment in pat-ent infringement action by submitting affi-davits from fact and expert witnesses, solong as such evidence is necessary to sup-port summary judgment in patent caseswhere the technology is not ‘‘easily under-standable without’’ expert’s explanatorytestimony. Fed. R. Civ. P. 56(a).

26. Patents O1936In a patent infringement action, non-

moving party may oppose summary judg-ment based on expert testimony by point-ing to an evidentiary conflict created onthe record at least by a counter statementof fact or facts set forth in detail in anaffidavit by a knowledgeable affiant; mere

denials or conclusory statements are insuf-ficient. Fed. R. Civ. P. 56(a).

27. Patents O1935(5)

Genuine issues of material fact as towhether claims in patents pertaining tomethods of manufacturing flexible plastictubes and other thin-walled tubular con-tainers informed those skilled in the artabout the scope of the inventions withreasonable certainty precluded summaryjudgment on competitor’s claim that pat-ents were invalid for indefiniteness. 35U.S.C.A. §§ 112, 282; Fed. R. Civ. P. 56(a).

28. Patents O908(2)To be enabling, the specification of a

patent must teach those skilled in the arthow to make and use the full scope of theclaimed invention without undue experi-mentation; undue experimentation is re-quired when there is no disclosure of anyspecific starting material or of any of theconditions under which a process can becarried out. 35 U.S.C.A. § 112.

29. Patents O908(1)While every aspect of a generic patent

claim certainly need not have been carriedout by the inventor, or exemplified in thespecification, reasonable detail must beprovided in order to enable members ofthe public to understand and carry out theinvention. 35 U.S.C.A. § 112.

30. Patents O908(1)A determination of enablement in ac-

tion challenging patent validity is not asingle, simple factual determination, butrather is a conclusion reached by weighingmany factual considerations. 35 U.S.C.A.§ 112.

31. Patents O908(6)The determination of a patent’s en-

ablement is a question of law based onunderlying factual inquiries. 35 U.S.C.A.§ 112.


32. Patents O1935(5)Genuine issues of material fact as to

whether patents pertaining to methods ofmanufacturing flexible plastic tubes andother thin-walled tubular containers taughtthose skilled in the art how to make anduse the full scope of the claimed inventionswithout undue experimentation precludedsummary judgment on competitor’s claimthat patent was invalid for non-enable-ment. 35 U.S.C.A. §§ 112, 282; Fed. R.Civ. P. 56(a).

33. Patents O1918Subjective willfulness of a patent in-

fringer, intentional or knowing, may war-rant enhanced damages, without regard towhether his infringement was objectivelyreckless. 35 U.S.C.A. § 284.

34. Patents O1824Appropriate burden of proof in prov-

ing recklessness, for purpose of establish-ing entitlement to enhanced damagesaward for willful patent infringement, is apreponderance of the evidence, not clearand convincing evidence. 35 U.S.C.A.§ 284.

35. Patents O1918Determining the issue of willful patent

infringement is more appropriate once thecourt has received findings of fact from thejury as to infringement and validity argu-ments. 35 U.S.C.A. § 284.

36. Patents O488Invalidity based on lack of novelty,

often called ‘‘anticipation,’’ requires thatthe same invention, including each elementand limitation of patent claims, was knownor used by others before it was inventedby the patentee. 35 U.S.C.A. § 102.

37. Patents O1119A party who would establish a pat-

ent’s invalidity by anticipation shouldersan especially heavy burden; to overcomethis presumption of validity, the patent’schallenger must prove facts supporting a

determination of invalidity by clear andconvincing evidence. 35 U.S.C.A. §§ 102,282.

38. Patents O582, 1848

Anticipation analysis is a two-stepprocess: the first step patent is claim con-struction, a question of law for the court,while the second step of the process in-volves a comparison of the asserted claimswith the prior art, a fact-finding endeavorfor the jury. 35 U.S.C.A. § 102.

39. Patents O489(2)

To establish patent invalidity based onanticipation, every limitation of a claimmust identically appear in a single priorart reference. 35 U.S.C.A. § 102.

40. Patents O489(1)

When more than one prior art refer-ence is required to establish unpatentabili-ty of a claimed invention, anticipation can-not be found. 35 U.S.C.A. § 102.

41. Patents O488

To establish anticipation, a party mustshow that there is no difference betweenthe patented claim and that which is dis-closed by the prior art, as viewed by aperson of ordinary skill in the field ofinvention. 35 U.S.C.A. § 102.

42. Patents O489(1)

If a prior art reference lacks anyclaimed element of a patent, then as amatter of law the court cannot find antici-pation; further, the prior art must discloseall of the claim elements arranged or com-bined in the same way as recited in thechallenged patent, clearly and unequivocal-ly disclosing the claimed invention, withoutany need for picking, choosing, or combin-ing various disclosures not directly relatedto each other by the teachings of the citedreference. 35 U.S.C.A. § 102.


43. Patents O487(2)To anticipate a patent, a prior art

reference must enable one of skill in theart to make and use the claimed invention.35 U.S.C.A. § 102.

44. Patents O489(2), 490A prior art reference may anticipate a

patent by disclosing claim limitations ei-ther expressly or inherently. 35 U.S.C.A.§ 102.

45. Patents O485Express anticipation is determined by

reading patent claims in the context of thepatent specification in which they arise andin which the invention is described. 35U.S.C.A. § 102.

46. Patents O485In determining whether a prior art

reference anticipates a patent, trier of factmust identify the elements of patentclaims, determine their meaning in light ofthe specification and prosecution history,and identify corresponding elements dis-closed in the allegedly anticipating refer-ence. 35 U.S.C.A. § 102.

47. Patents O490A prior art reference may be found to

inherently disclose a patent claim limita-tion if the limitation is necessarily presentin the reference and a person of ordinaryskill in the art would recognize its pres-ence; it is not sufficient that a personfollowing the prior art disclosure some-times obtain the result set forth in theclaim, it must invariably happen. 35U.S.C.A. § 102.

48. Patents O490, 574When a prior art reference is silent

about an asserted inherent characteristic,such a gap in the reference may be filledwith recourse to extrinsic evidence thatmakes clear that the missing descriptivematter is necessarily present in the thingdescribed; this modest flexibility in therule that anticipation requires that every

element of the claims appear in a singlereference accommodates situations wherethe common knowledge of technologists isnot recorded in the reference. 35U.S.C.A. § 102.

49. Patents O574In considering the anticipatory teach-

ing of a prior art reference, in determiningpatent validity, extrinsic evidence may onlybe considered when it is used to explain,not expand, the meaning of a reference.35 U.S.C.A. § 102.

50. Patents O580Typically, testimony concerning antici-

pation must be testimony from one skilledin the art and must identify each patentclaim element, state the witness’s interpre-tation of the claim element, and explain indetail how each claim element is disclosedin the prior art reference; the testimony isinsufficient if it is merely conclusory. 35U.S.C.A. § 102.

51. Patents O1933It is not the task of the district court

to attempt to interpret confusing or gener-al testimony to determine whether a caseof patent invalidity has been made out,particularly at the summary judgmentstage; indeed, to accept confusing or gen-eralized testimony as evidence of invalidityis improper. 35 U.S.C.A. § 282; Fed. R.Civ. P. 56(a).

52. Patents O1934Regarding the standards for summary

judgment as to anticipation in the contextof a patent case, although anticipation is aquestion of fact, it still may be decided onsummary judgment if the record revealsno genuine dispute of material fact. 35U.S.C.A. §§ 102, 282; Fed. R. Civ. P. 56(a).

53. Patents O1119, 1934Because a patent enjoys a presump-

tion of validity which can be overcome only


by clear and convincing evidence, a movingparty seeking to have a patent held notinvalid at summary judgment must showthat the nonmoving party, who bears theburden of proof at trial, failed to produceclear and convincing evidence on an essen-tial element of a defense upon which areasonable jury could invalidate the pat-ent. 35 U.S.C.A. § 282; Fed. R. Civ. P.56(a).

54. Patents O1934When a party moving for summary

judgment based on no anticipation of pat-ent points to the absence of evidence tosupport the non-moving party’s case, andthe non-moving party produces no evi-dence, the court should grant summaryjudgment to the moving party. 35U.S.C.A. § 102; Fed. R. Civ. P. 56(a).

55. Patents O1936For a non-moving party to establish a

genuine dispute of material fact as to ‘‘noanticipation’’ of patent, the non-movingparty is required to do more than establishthat the experts disagree; rather, an ac-cused infringer must point to sufficientevidence for a reasonable jury to concludeby clear and convincing evidence that theasserted claims are anticipated. 35U.S.C.A. § 102; Fed. R. Civ. P. 56(a).

56. Patents O1934Where the party alleging a patent’s

invalidity due to anticipation presents ex-pert testimony which cites to prior art bysetting forth some but not all claim ele-ments, or which makes conclusory state-ments regarding anticipation, no triableissue of fact thereby arises. 35 U.S.C.A.§ 102.

57. Patents O485If a prior art does not anticipate an

independent patent claim, it cannot, as amatter of law, anticipate associated depen-dent claims. 35 U.S.C.A. § 102; 37 C.F.R.§ 1.75(c).

58. Patents O558Academic study that did not teach

high shear, long flow length conditions forthe manufacture of test strips did not an-ticipate environmental stress cracking re-sistance (ESCR) test described by patentfor method of manufacturing flexible plas-tic tubes and other thin-walled tubularcontainers, which taught such conditions.35 U.S.C.A. § 102.

59. Patents O558Clear and convincing evidence did not

establish that metallocene limitation inclaim for patent pertaining to methods ofmanufacturing flexible plastic tubes andother thin-walled tubular containers wasanticipated by ‘‘general teaching’’ in priorart, which stated that polymers made us-ing metallocene catalysts, among a varietyof other suitable polymers, could be usedin the claimed injection molding process.35 U.S.C.A. § 102.

60. Patents O1935(6)Genuine issue of material fact as to

whether the language in academic studytaught that the injection molding processdisclosed in that prior art should be prac-ticed specifically for the manufacture oftubes precluded summary judgment on is-sue of whether patent claim teaching theinjection molding process for making thin-walled tube was invalid as anticipated byprior art. 35 U.S.C.A. § 102; Fed. R. Civ.P. 56(a).

61. Patents O1935(6)Genuine issue of material fact as to

whether prior art patent taught the manu-facture of tubes using the injection mold-ing process described in patent pertainingto method of manufacturing flexible plastictubes and other thin-walled tubular con-tainers precluded summary judgment onissue of whether patent claim was invalidas anticipated by prior art. 35 U.S.C.A.§ 102; Fed. R. Civ. P. 56(a).


Patents O20918,518,318. Valid in Part.

Patents O20916,143,818, 6,547,094. Cited.

Patents O20916,159,566. Cited as Prior Art.

Anthony T. Lathrop, Moore & Van Al-len, Charlotte, NC, Kripa Raman, MichaelFrancis Milea, Sana Chaudhry, CatherineNyarady, Michael Wu, Paul, Weiss, Rif-kind, Wharton & Garrison LLP, NewYork, NY, Damon C. Andrews, Paul,Weiss, Rifkind, Wharton & Garrison LLP,Washington, DC, for Plaintiffs.

Barry J. Herman, Kara Lacy Boyle,Womble Carlyle Sandridge & Rice, LLP,Baltimore, MD, Carl Bruce Massey, Jr.,Womble Carlyle Sandridge & Rice, LLP,Winston-Salem, NC, Christine HollemanDupriest, Womble Carlyle Sandridge &Rice, LLP, Washington, DC, Kurt E.Lindquist, II, Russ Ferguson, WombleCarlyle Sandridge & Rice, LLP, Charlotte,NC, David R. Boaz, Womble Carlyle San-dridge & Rice LLP, Raleigh, NC, for De-fendants.

ORDER

Max O. Cogburn Jr., United StatesDistrict Judge

THIS MATTER is before the court onseveral Motions of the parties. This patentinfringement action relates to two pat-ents—U.S. Patent Nos. 8,518,318 (‘‘the ’318Patent’’’) and 6,547,094 (‘‘the ’094 Patent’’’),which both pertain to methods of manufac-turing flexible plastic tubes and other thin-walled tubular containers. Plaintiffs VivaHealthcare Packaging, Ltd., Viva Health-care Packaging (HK) Ltd., and VivaHealthcare Packaging (USA) Inc., (collec-tively, ‘‘Viva’’ or ‘‘Plaintiffs’’) have allegedthat Defendants CTL Packaging USA,

Inc., and Tuboplast Hispania (collectively,‘‘CTL’’ or ‘‘Defendants’’) infringed thesetwo patents; Defendants have assertedseveral defenses to the infringement alle-gations. The court issued a Claim Con-struction Order on March 23, 2015. Afterdiscovery was complete, the parties filedthe following Motions, which have beenfully briefed and are ripe for review:

1. Defendants’ Motion for SummaryJudgment as to Indefiniteness(#178);

2. Defendants’ Motion for SummaryJudgment as to Lack of Enablement(#180);

3. Defendants’ Motion for SummaryJudgment of No Willful Infringe-ment (#182);

4. Plaintiffs’ Motion for Partial Sum-mary Judgment of No Anticipation ofUnited States Patent No. 6,547,094(#196);

5. Plaintiffs’ Motion for Partial Sum-mary Judgment of No AnticipationOf United States Patent No. 8,518,-318 (#198);

6. Defendants’ Motion to Exclude Cer-tain Opinions by Expert Witness Ste-phen Driscoll (#184);

7. Defendants’ Motion to Exclude Cer-tain Testimony of Expert Dr. MichaelRubinstein (#186);

8. Plaintiffs’ Motion to Exclude CertainPurported Expert Testimony of TimOsswald and Mukerrem Cakmak(#190);

9. Plaintiffs’ Motion to Exclude Purport-ed Expert Testimony of CynthiaSmith (#203); and

10. Plaintiffs’ Motion to Exclude Pur-ported Expert Testimony of CynthiaSmith and Tim Osswald (#208).

The court heard oral arguments on thesemotions on May 4, 2016. Having consid-

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ered the Motions, the applicable law, andthe arguments of counsel, the court entersthe following findings, conclusions, and Or-der.

I. BACKGROUND

This is an action for patent infringementrelating to U.S. Patent Nos. 8,518,318(‘‘the ‘318 Patent’ ’’) and 6,547,094 (‘‘the‘094 Patent’ ’’) (collectively, the ‘‘patents-in-suit’’). Plaintiffs have alleged that De-fendants infringed these two patents,which both pertain to methods of manufac-turing flexible plastic tubes and other thin-walled tubular containers used in the cos-metics industry. The manufacture of thesetubes is done through a process called‘‘injection molding,’’ which involves heatingup plastic and injecting it into a mold tocool and harden. Injection molding is acommon method used in plastics manufac-turing for three-dimensional objects. Injec-tion-molded tubes are typically more dura-ble and flexible in shape, nozzle, cap, andlabel than predecessor technologies.

Viva contends that injection molding wasnot a viable option for the manufacture ofthin-walled tubes before the technologycovered by the patents-in-suit was devel-oped because it was difficult to find poly-mers with the appropriate properties. Thepatents-in-suit purportedly identify physi-cal blends of polymers that can be used ininjection molding to make flexible, thin-walled plastic objects with the requisiteproperties to protect the cosmetics thatthey encase, such as crack-resistance andan ability to withstand handling. The ’094Patent teaches that blends of polymerswith certain environmental stress crackingresistance (‘‘ESCR’’) values, particularlythose with at least one polymer with cer-tain melt flow properties, can be effectivelyand feasibly used in injection molding-based manufacturing processes to makethese flexible, thin-walled plastic objects.The ’318 Patent claims to improve on thesefindings by adding that the polymer blends

benefit from containing ‘‘compatible’’ poly-mers, with at least one of such polymershaving a high melt flow index. Accordingto Viva, the patented methodology made iteasier and cheaper to develop flexible,thin-walled plastic tubes through injectionmolding, which has allowed for more vari-ety in tube shape, texture, and emboss-ment.

After the issue had been fully briefedand argued in court at a hearing, the courtentered a Claim Construction Order(#109) construing the disputed terms inthis case. Now that discovery has beencompleted, the parties have filed an arrayof Motions for Summary Judgment andMotions to Exclude proffered expert testi-mony, largely as such opinions have bear-ing on the parties’ arguments on summaryjudgment. The court will address each mo-tion in turn.

II. MOTIONS TO EXCLUDE EXPERT TESTIMONY

The parties have both filed Motionsseeking to exclude testimony from expertsin this case. Plaintiffs seek to exclude cer-tain expert testimony offered by Tim Os-swald, Mukerrem Cakmak, and CynthiaSmith. See (##190, 203, 208). Defendantsseek to exclude certain opinions of Profes-sor Stephen Driscoll and Dr. MichaelRubinstein. See (##184, 186). The courtwill address each Motion seriatim.

A. Legal Standards

[1, 2] The legal standards governingthe parties’ Motions to exclude expert tes-timony are as follows. Fed. R. Evid. 702provides:

A witness who is qualified as an expertby knowledge, skill, experience, training,or education may testify in the form ofan opinion or otherwise if:

(a) the expert’s scientific, technical, orother specialized knowledge will helpthe trier of fact to understand the

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evidence or to determine a fact inissue;(b) the testimony is based on sufficientfacts or data;(c) the testimony is the product ofreliable principles and methods; and(d) the expert has reliably applied theprinciples and methods to the facts ofthe case.

Id. The Supreme Court’s decision in Dau-bert v. Merrell Dow Pharm., Inc., 509 U.S.579, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993)clarified ‘‘that it is the duty of the trialcourt to perform the gatekeeping functionwith respect to expert testimony: ‘the trialjudge must ensure that any and all scienti-fic testimony or evidence admitted is notonly relevant, but reliable.’ ’’ United Statesv. Prince–Oyibo, 320 F.3d 494, 498 (4thCir.2003) (quoting Daubert, 509 U.S. at589, 113 S.Ct. 2786). In assessing the relia-bility of expert testimony, a court shouldconsider:

(1) whether the particular scientific the-ory can be (and has been) tested; (2)whether the theory has been subjectedto peer review and publication; (3) theknown or potential rate of error; (4) theexistence and maintenance of standardscontrolling the technique’s operation;and (5) whether the technique hasachieved general acceptance in the rele-vant scientific or expert community.

United States v. Crisp, 324 F.3d 261, 266(4th Cir.2003) (quoting Daubert, 509 U.S.at 593–94, 113 S.Ct. 2786) (quotationmarks omitted). This list of factors is notexhaustive. Id. The test for relevance, or‘‘fit,’’ considers ‘‘whether expert testimonyproffered in the case is sufficiently tied tothe facts of the case that it will aid thejury in resolving a factual dispute.’’ Dau-bert, 509 U.S. at 591, 113 S.Ct. 2786. Simi-larly, ‘‘scientific validity for one purpose isnot necessarily scientific validity for other,unrelated purposes.’’ Id.

[3–5] While the proponent of experttestimony must establish its admissibilityby a preponderance of proof, see Cooper v.Smith & Nephew, Inc., 259 F.3d 194, 199(4th Cir.2001), ‘‘the test for exclusion [ofan expert] is a strict one, and the purport-ed expert must have neither satisfactoryknowledge, skill, experience, training noreducation on the issue for which the opin-ion is proffered.’’ (Thomas J. Kline, Inc. v.Lorillard, Inc., 878 F.2d 791, 799 (4th Cir.1989)). Of particular relevance in this pat-ent case, ‘‘[o]ne knowledgeable about aparticular subject need not be preciselyinformed about all details of the issuesraised in order to offer an opinion.’’ Id.(citing Martin v. Fleissner GMBH, 741F.2d 61, 64 (4th Cir.1984)). ‘‘In short, Dau-bert requires that a trial court give broadconsideration to all of the various factorsthat may illuminate the reliability of prof-fered expert testimony.’’ United States v.Prince–Oyibo, 320 F.3d 494, 498 (4th Cir.2003).

[6, 7] Fed. R. Evid. 703 provides:An expert may base an opinion on factsor data in the case that the expert hasbeen made aware of or personally ob-served. If experts in the particular fieldwould reasonably rely on those kinds offacts or data in forming an opinion onthe subject, they need not be admissiblefor the opinion to be admitted. But if thefacts or data would otherwise be inad-missible, the proponent of the opinionmay disclose them to the jury only iftheir probative value in helping the juryevaluate the opinion substantially out-weighs their prejudicial effect.

Id. As the Federal Circuit recently sum-marized,

Under these rules, a district court mayexclude evidence that is based upon un-reliable principles or methods, legallyinsufficient facts and data, or where thereasoning or methodology is not suffi-


ciently tied to the facts of the case. Butthe question of whether the expert iscredible or the opinion is correct is gen-erally a question for the fact finder, notthe court. Indeed, [v]igorous cross-ex-amination, presentation of contrary evi-dence, and careful instruction on theburden of proof are the traditional andappropriate means of attacking shakybut admissible evidence.

Summit 6, LLC v. Samsung Elecs. Co., 802F.3d 1283, 1295–96 (Fed.Cir.2015) (internalcitations and quotation marks omitted) (al-teration in original).

Regarding written expert reports, theFederal Rules of Civil Procedure requirethat a party who intends to offer experttestimony provide an expert report con-taining ‘‘a complete statement of all opin-ions the witness will express.’’ Fed. R.Civ. P. 26(a)(2)(B)(i). A party must alsodisclose the ‘‘basis and reasons’’ for all ofthose opinions, id. as well as ‘‘the facts ordata considered by the witness in form-ing them,’’ Fed. R. Civ. P. 26(a)(2)(B)(ii).The Rules also require supplementationof disclosures, including the reports of anexpert, if such disclosures are materiallyincomplete or incorrect or it is later dis-covered the disclosures are incomplete orincorrect. Fed. R. Civ. P. 26(e).

[8, 9] Rule 37(c)(1) provides that if ‘‘aparty fails to provide information TTT asrequired by Rule 26(a) TTT the party is notallowed to use that information or witnessto supply evidence on a motion, at a hear-ing, or at trial, unless the failure wassubstantially justified or is harmless.’’ Fed.R. Civ. P. 37(c)(1). To determine whether afailure to disclose is ‘‘substantially justifiedor harmless,’’ the Fourth Circuit examinesthe following five factors:

(1) the surprise to the party againstwhom the evidence would be offered; (2)the ability of that party to cure thesurprise; (3) the extent to which allowingthe evidence would disrupt the trial; (4)

the importance of the evidence; and (5)the nondisclosing party’s explanation forits failure to disclose the evidence.

S. States Rack & Fixture, Inc. v. Sherwin–Williams Co., 318 F.3d 592, 597 (4th Cir.2003) (citation and quotation marks omit-ted). A party need not have acted in badfaith or ‘‘callous disregard of the discoveryrules’’ for the sanction to apply. Id. at 596.

B. Discussion

1. Defendants’ Motion to Exclude Cer-tain Opinions by Expert Witness Pro-

fessor Stephen Driscoll (#184)

Defendants challenge two of ProfessorDriscoll’s opinions in his expert report(#193-9) as they relate to the ’094 Patent.Professor Driscoll opines in his report thatthe ’094 Patent (1) is infringed with regardto the ‘‘ESCR as herein defined’’ test de-scribed and claimed therein, and (2) is notindefinite because one of ordinary skill inthe art could determine infringementbased on such ECSR test. See, e.g., (#193-9) at ¶¶28, 115-39. Defendants do not chal-lenge the remainder of Professor Driscoll’sopinions.

In support of their argument, Defen-dants contend that prior to this litigation,Professor Driscoll had no experience inESCR testing or any similar testing onthin-walled articles. They also argue thathe had no practical or supervisory experi-ence in injection molding, so any analysisregarding the subject is likewise suspect.They note that he has never authored anypeer-reviewed books or articles specific toESCR testing. Generally, they argue thatProfessor Driscoll opining on the reason-able certainty of the ‘‘ESCR as hereindefined’’ of the ’094 Patent as performedon injection molded articles is no differentthan any layperson opining on the subjectand that his opinions as to invalidity andindefiniteness should be excluded becausethey are unreliable.


Plaintiffs respond that Professor Dris-coll does have experience with ESCR test-ing and injection molding, and that hisqualifications 1 show that his opinions arereliable. They also note that Defendantsfail to point out how exactly he fails toqualify as an expert under the standardsarticulated in Fed. R. Ev. 702. Plaintiffsalso note that Defendants only challengecertain aspects of Professor Driscoll’s re-port even though all of the opinions there-in are based on the same expertise andexperience.

[10] The court has considered Profes-sor Driscoll’s qualifications as they relateto the offered opinions and finds no reasonto exclude the challenged expert opinionsbased on the standards articulated in Dau-bert and Fed. R. Evid. 702. As noted atthe hearing, however, the court finds thatProfessor Driscoll’s experience in ESCRtesting remains excellent fodder for crossexamination at trial. The court believesthat the opinions challenged here are pre-cisely the sort that can be addressedthrough ‘‘[v]igorous cross-examination,presentation of contrary evidence, andcareful instruction on the burden of proof,’’Summit 6, LLC v. Samsung Elecs. Co., 802F.3d 1283, 1295–96 (Fed.Cir.2015), and leftto the fact-finder to determine credibility.

The court will therefore DENY Defen-dants’ Motion to Exclude Certain ExpertTestimony of Professor Driscoll (#184).

2. Defendant’s Motion to ExcludeExpert Testimony of Dr.

Michael Rubinstein

Plaintiffs have proffered Dr. MichaelRubinstein as an expert in polymer phys-ics. Defendants do not challenge him as anexpert in that field, but challenge some ofhis opinions as beyond the scope of hisexpertise and for other reasons describedherein. Citing Daubert, Fed. R. Evid. 702,and Fed. R. Civ. P. 26(a)(2), Defendantsmove to exclude the opinions expressed byDr. Rubinstein that: (1) both Patents-in-Suit do not lack enablement with regard totheir teaching on the process for the man-ufacture of injection molded tubes, (2)CTL infringes the ’318 Patent with regardto the ‘‘compatible polymer’’ element, and(3) that the ’318 Patent is not indefinitebased on the term ‘‘compatible polymer.’’Defendants argue that Dr. Rubinstein isnot an expert in injection molding.

a. Enablement

Defendants move to exclude any testi-mony from Dr. Rubinstein that the Pat-ents-in-Suit were enabled when they were

1. Professor Driscoll set forth his qualifica-tions in his expert report and curriculum vi-tae, explaining his experience and familiaritywith the scientific issues relevant in this caseas follows. See (#193-9 at ¶¶4-8; #243-10).Professor Driscoll holds both a B.S. and M.S.degree in plastics engineering, has forty-eightyears of teaching experience in the Depart-ment of Plastics Engineering at the Universi-ty of Massachusetts Lowell. While at the Uni-versity of Massachusetts Lowell, he served asa thesis advisor for over 130 M.S. and doc-toral thesis candidates, performed researchrelated to polymer blends and alloys, dynam-ic mechanical behavior, and economic con-siderations in the commercial developmentof plastics. Professor Driscoll also teachesundergraduate and graduate courses in poly-meric materials engineering, polymer modifi-

ers and additives, and polymer characteriza-tion with emphasis on dynamic mechanicalproperties, and has decades of extensive in-structional and supervisory laboratory workin testing of materials according to variousAmerican Society for Testing and Materials(‘‘ASTM’’) standards, and injection moldingof various plastic articles. Regarding poly-mers and plastic articles made from poly-mers, he specializes broadly in materials test-ing and commercial development. He hasalso held leadership positions on ASTM com-mittees, including vice-chair of the ASTMcommittee related to ESCR testing of plas-tics, and including ESCR testing standards.Defendants do not appear to contest the exis-tence of these qualifications, but contend thatthey do not render him qualified to opineabout ESCR testing.


filed because one skilled in the art wouldknow how to select the appropriate mold-ing conditions and parameters to manufac-ture injection molded tubes. See Rubin-stein Reb. Rep. (#193-14) at ¶¶79-95, 162-66. Defendants contend that Dr. Rubin-stein is not an expert when it comes toinjection molding and that he is not quali-fied to offer any opinions as to how injec-tion molded tubes are made. They contendthat he simply relied on Professor Dris-coll—Viva’s other expert—for injectionmolding expertise and then failed to dis-close such reliance in his expert report.Defendants also take issue with the factthat Dr. Rubinstein’s opinion on use ofantiblock agents makes no mention of Pro-fessor Driscoll or any information providedby him. Dr. Rubinstein then stated at hisdeposition that the information was provid-ed by Professor Driscoll. Defendants ar-gue that the alleged failure to disclose thebasis and reasons for an opinion, as well asthe facts and data considered to arrive atit, amounts to a violation of Fed. R. Civ. P.26 that merits exclusion under Rule 37.

Plaintiffs respond that Dr. Rubensteinproperly relied on factual informationabout injection molding from ProfessorDriscoll, and that it was routine and inconformance with Fed. R. Evid. 703 be-cause ‘‘[e]xperts routinely rely upon otherexperts hired by the party they representfor expertise outside their field.’’ CarnegieMellon Univ. v. Marvell Tech. Grp., Ltd.,807 F.3d 1283, 1303 (Fed.Cir.), reh’g enbanc denied in part, 805 F.3d 1382 (Fed.Cir.2015) (quoting Apple Inc. v. Motorola,Inc., 757 F.3d 1286, 1321 (Fed.Cir.2014)).Plaintiffs maintain that Professor Driscollis an expert in injection molding and to theextent that Defendants challenge Dr.Rubinstein’s reliance on his work, that isfodder for cross-examination. Plaintiffsalso argue Dr. Rubinstein did, in fact, dis-close his reliance on Professor Driscoll inhis report, and note that Dr. Rubinsteinlisted ‘‘conversation with Driscoll’’ in an

exhibit attached to his report listing thedocuments and things considered in pre-paring his own expert report. See (#193-14) at p. 98.

[11, 12] As to Dr. Rubinstein’s opinionson enablement, the court finds no reasonto exclude them under Daubert or Fed. R.Evid. 702, as he meets both parties’ defini-tions of a ‘‘person of ordinary skill in theart,’’ see, e.g., Rubinstein Rep. (#193-11)at ¶23; Osswald Rep. (#157) at ¶37, andhas offered opinions that are both reliableand relevant. However, to the extent thatDefendants challenge Rubinstein’s experi-ence, or alleged lack thereof, with injectionmolding, the court finds such material tobe ideal for exploration on cross-examina-tion. Regarding Defendants’ argumentthat Dr. Rubinstein improperly relied onProfessor Driscoll in formulating his opin-ions, the court has reviewed the para-graphs cited by Defendants and find thatthey appropriately cite the source of infor-mation for his opinions and are otherwisein conformance with Fed. R. Evid. 703.Additionally, the expert report disclosesthe fact that Dr. Rubinstein relied on ‘‘con-versations with Stephen Driscoll’’ and Pro-fessor Driscoll’s expert report, which thecourt finds to be sufficient disclosure forthe purposes of Fed. R. Civ. P. 26. Assuch, the court need not consider whetherthe opinions are subject to exclusion pur-suant to Fed. R. Civ. P. 37.

b. Infringement

[13] Defendants also move to excludeany opinion by Dr. Rubinstein that CTLinfringes the ’318 Patent because the poly-mers used in CTL’s tube manufacturingprocess are ‘‘compatible polymers,’’ as de-scribed in the patent. Defendants claimthat Dr. Rubinstein failed to disclose in hisexpert report that to arrive at that opinionhe called polymer manufacturers to askthem whether their polymers are ‘‘compat-


ible.’’ They argue that not only is that aviolation of Rule 26, but that the opinionderived therefrom is not reliable becauseDr. Rubinstein has no recollection of howhe defined ‘‘compatible’’ in his conversa-tions, which manufacturers he called, whohe talked to, what he asked them, or whatanswers they gave. They contend that headmits to not being able to recall the basicdetails he learned from those conversa-tions.

Plaintiffs contend that exclusion is inap-propriate because Dr. Rubinstein makesclear that he did not base his opinions onthose phone calls alone, but to ‘‘doublecheck’’ the opinion he had already come upwith based on the business records of thepolymer manufacturers cited in his open-ing report. See Rubinstein Dep. (#244-8)at Tr. 190:6-19. Plaintiffs contend that De-fendants were on notice of the fact thatDr. Rubinstein relied on such business rec-ords, and that such reliance is common inthe field.

The court has considered the argumentsand relevant evidence before it. Again, thecourt finds that the issues at hand presentexcellent material for cross-examination,but that exclusion of Dr. Rubinstein’s in-fringement opinions is inappropriate de-spite the arguments provided by Defen-dants.

c. Indefiniteness

[14] Finally, Defendants move to ex-clude the opinion of Dr. Rubinstein thatthe ’318 Patent is not indefinite becauseone of ordinary skill in the art would knowthat a ‘‘compatible polymer,’’ as referredto in the ’318 Patent, is homogeneous andone that remarkably improves claritywhen blended with the other polymers inthe blend. But Defendants claim that thebasis for that opinion is a conversationwith the inventor, Ian Jacobs, that oc-curred after opening and rebuttal reportswere submitted—thus the basis is not in-cluded therein—and select portions of Ja-

cobs’ deposition transcript where he ‘‘ex-plained’’ certain statements in the Patents-in-Suit. Defendants argue that to avoid afinding of indefiniteness under Section112(2), a patent must allow any individualof skill in the art to know whether aproduct infringes the patent claims ornot—the inquiry is not limited to individu-als such as Dr. Rubinstein who had accessto the inventor in order to ‘‘verify’’ thestatements Jacobs made in his confidentialdeposition.

Plaintiffs respond that they could nothave disclosed the existence of a conversa-tion before it happened, that Dr. Rubin-stein’s opinion is based on the court’sclaim construction, and that the theorythat he sought a basis for his opinion afterforming it is completely unfounded. Theyalso argue that the conversation occurredin response to an untimely opinion by Dr.Osswald (Defendants’ expert). Having con-sidered the record, the court finds Defen-dants’ arguments unpersuasive on this is-sue. The fact that Dr. Rubinstein calledMr. Jacobs after he submitted his expertreports in no way affects the reliability ofthose opinions. The court will thereforedeny Defendants’ Motion in that regard.

3. Plaintiffs’ Motion to Exclude CertainPurported Expert Testimony of Tim

Osswald and Mukerrem Cakmak

Pursuant to Daubert and Fed. R. Evid.702, Plaintiffs move to preclude Tim Os-swald and Mukerrem Cakmak, who havebeen proffered as expert witnesses by De-fendants, from offering invalidity opinionsregarding the term ‘‘compatible polymer’’of the ’318 Patent because such opinionsdisregard the court’s claim construction.

The Claim Construction Order in thiscase construed the disputed terms of thepatents-in-suit. Regarding the term ‘‘highmelt flow compatible polymer’’ of the ’318patent, the Court ruled that the termmeans ‘‘the high melt flow polymer of the


polymer blend that is compatible with the‘at least one polymer.’ ’’ See Claim Con-struction Order (#109) at p. 26. Defen-dants did not propose a construction ofthis term, but merely relied on indefinite-ness arguments. Id. Though the court didnot adopt a specific claim construction of‘‘compatible’’ because neither party pro-posed one, the court noted in the contextof construing the disputed claim term:

extrinsic evidence also indicates that‘‘compatible polymer’’ is a term of art inthe field meaning the ‘‘tendency of dif-ferent polymers or different grades of agiven polymer to mix uniformly or ho-mogeneously and not separate into dis-crete phases.’’ Nothing in the intrinsicrecord indicates that ‘‘compatible’’ isused in a manner contrary to this plainand ordinary meaning. The court alsonotes that the patent requires that the‘‘at least one polymer’’ and the ‘‘at leastone high melt flow compatible polymer’’be compatible with one another. There isno dispute that ‘‘compatible’’ is a relativeterm used in the field to denote that aspecific polymer can be mixed uniformlywith some polymers, but not with others.Most polymers are not compatible withone another and testing is typically re-quired to determine compatibility. Assuch, common sense dictates that thecourt construe the term to mean thatthe polymers taught in the blend becompatible with one another. The courtwill therefore construe the term to mean‘‘the high melt flow polymer of the poly-mer blend that is compatible with the ‘atleast one polymer.’ ’’

Id. at 27 (internal citations omitted).Plaintiffs argue that Defendants’ invalid-

ity contentions submitted after claim con-struction refused to apply the court’sadopted claim construction of ‘‘compatiblepolymer.’’ See, e.g., Invalidity Charts(#141-6) at K-2, L-2, M-3-M-4. They fur-ther argue that Defendants’ experts Drs.Cakmak and Osswald inappropriately sub-

stitute their own definitions of ‘‘compatiblepolymer’’ for the one stated by court Or-der. Dr. Cakmak, who is a professor ofPolymer Engineering in the Polymer En-gineering Department of the College ofPolymer Science and Polymer Engineeringat the University of Akron, has offeredopinions in his expert report as to whetherthe patents-in-suit are invalid due to indef-initeness and whether the ’318 patent isinvalid as anticipated. Dr. Cakmak statesseveral times in his report that he dis-agrees with the court’s claim constructionof ‘‘compatible polymer,’’ comes up withhis own meaning of the term, and thenapplies that in his report. See, e.g., (#194–Exhibit D) at ¶84 (‘‘As an initial matter, Ido not agree that ‘compatible polymer’ is aterm of art in the field meaning the ‘‘ten-dency of different polymers or differentgrades of a given polymer to mix uniform-ly or homogeneously and not separate intodiscrete phases.’’) (citing Claim Construc-tion Order at 27); id. (‘‘The definitionadopted by the Court is also inconsistentwith the fact testimony that occurred afterthe claim construction hearing, includ-ingTTTdepositionsTTTand documents pro-duced in this case. It is also inconsistentwith the IUPAC definitionTTT’’). Notably,Dr. Cakmak states in his report that‘‘ ‘compatible’ TTT is an industry term usedto refer to a polymer that can be blendedwith others and result in a good saleableproduct,’’ id. at ¶ 92, and then bases all ofhis opinions regarding ‘‘compatible poly-mer’’ in the ’318 patent claims on thisalternative definition. Id. at ¶¶ 92-100.

Dr. Tim Osswald, another of Defen-dants’ experts, is a Professor in the De-partment of Mechanical Engineering atthe University of Wisconsin-Madison. Healso states in his invalidity opinions onthe ’318 patent that he rejects the court’sconstruction of the term ‘‘compatible poly-mer’’ of the ’318 patent. See, e.g., OsswaldRep. (#193-5) at ¶141 (‘‘I have reviewed


Dr. Cakmak’s Report, which concludesthat the ‘high melt flow compatible poly-mer’ in the ’318 Patent is indefinite. Iagree with this conclusion that the term‘compatible’ as used there is vague, ambig-uous, and ill-defined and thus does notpermit those skilled in the art to know,with reasonable certainty, whether theyare within the scope of the claims.’’); id. at¶156 (‘‘I have reviewed the testimony ofIan Jacobs and understand he testifiedthat a polymer is ‘compatible’ (as used inthe ’318 Patent) with the at least one poly-mer if it improves a number of characteris-tics of the neat polymers as seen in thefinished product (the tube). Thus, the ’318Patent requires one of skill in the art tocreate an enormous number of polymerblends (with a vast range of possible per-centages for each polymer), mold theminto tubes, and then apparently determinewhether that tube shows ‘improved prop-erties’ as compared to a tube made fromthe neat ‘at least one polymer’ (which canbe two or more polymers).’’); Osswald Rep.(# 156-3, Exs. I, J, K, L, M) (‘‘As stated in[ ] my report, I have reviewed [Dr. Cak-mak’s] expert report and agree with hisconclusionsTTTTFor purposes of this analy-sis, compatibility shall mean similarly com-patible to the examples of the ’318 pat-ent.’’).

Defendants argue that Plaintiffs are nowattempting to exclude testimony about thevery issue that they contended requiredmore discovery—the issue of indefinite-ness. They argue that expert discoveryprovided additional insight into the mean-ing of ‘‘compatible’’ that should be consid-ered by the court. They also note thatneither party proposed a definition of‘‘compatible’’ at claim construction, andthat the court adopted a ‘‘plain and ordi-nary’’ meaning of compatible.

[15] Regarding the applicability ofclaim construction to a patent proceeding,the Federal Circuit has held that ‘‘[o]nce a

district court has construed the relevantclaim terms, and unless altered by thedistrict court, then that legal determina-tion governs for purposes of trial. No par-ty may contradict the court’s constructionto a jury.’’ Exergen Corp. v. Wal–MartStores, Inc., 575 F.3d 1312, 1321 (Fed.Cir.2009). District courts routinely exclude ex-pert opinions that are inconsistent withclaim construction. See, e.g., Callpod, Inc.v. GN Netcom, Inc., 703 F.Supp.2d 815,821–22 (N.D.Ill.2010) (‘‘Expert opinionsthat conflict with a court’s establishedclaim construction tend only to create con-fusion and are thus unhelpful to the jury.’’)(citing CytoLogix Corp. v. Ventana Med.Sys., Inc., 424 F.3d 1168, 1173 (Fed.Cir.2005)); Cook Inc. v. Endologix, Inc., No.1:09–CV–01248–TWP, 2012 WL 3886204,at *3 (S.D.Ind. Sept. 6, 2012), on reconsid-eration in part on other grounds, No. 1:09–CV–01248–TWP, 2012 WL 4755361(S.D.Ind. Oct. 4, 2012). Defendants maynot use expert testimony as a means tocontradict the claim construction set forthby the court.

[16] Here, ‘‘compatible polymer’’ is notone of the six terms existing in the pat-ents-in-suit that the court was asked toconstrue. See (#84) at p. 2 (setting forththe proposed list of disputed claim terms).While ‘‘compatible polymer’’ is clearly acomponent of the term ‘‘high melt flowcompatible polymer,’’ which the court wasasked to construe, it was not, in and ofitself, a disputed claim term. However, thecourt considered the meaning of thephrase as it exists in the patent, and madea ruling as to its meaning based on theparties’ contentions and the evidence be-fore it. To the extent that Defendants ar-gue that the court’s findings on the mean-ing of ‘‘compatible polymer’’ are dicta, thecourt disagrees. The court will not allowexpert testimony on the meaning of ‘‘com-patible polymer’’ that conflicts with the


court’s findings, as such testimony canonly serve to complicate the issue in analready complicated case. Neither partyhas asked the court to reconsider the con-struction of the disputed claim term orproposed any additional terms for con-struction. The court will not reassess itsearlier finding as to the construction of‘‘high melt flow compatible polymer’’ orany term therein without being moved todo so.

While the court will not allow any experttestimony to be admitted that conflictswith its claim constructions or other find-ings, it is reluctant to exclude all indefi-niteness opinions of Drs. Osswald andCakmak relevant to the ’318 Patent, whichis what Plaintiffs seek. Thus, to the extentthat Defendants wish to introduce theirexpert opinions on the matter at trial thatconflicts with this court’s prior Order, suchtestimony shall be excluded. However, De-fendants are entitled to present expertopinion evidence on indefiniteness to theextent that it does not conflict with thecourt’s previous rulings. The Court willthus GRANT in part and DENY in partPlaintiffs’ Motion to Exclude Certain Pur-ported Expert Testimony of Tim Osswaldand Mukerrem Cakmak, as explainedherein.

4. Plaintiffs’ Motion to ExcludePurported Expert Testimony

of Cynthia Smith

Plaintiffs move pursuant to Fed. R. Civ.P. 37(c) to exclude proffered expert opin-ions of Cynthia Smith regarding the ’094Patent, arguing that such opinions rely ontesting that was not timely disclosed toPlaintiffs. They also move to exclude theopinion as unreliable under Daubert. Insupport of their invalidity contentions,namely that the ’094 patent ESCR testrenders the asserted claims of that patentinvalid because that claim element is pur-portedly (a) indefinite due to variability ofits results, and (b) taught by prior art

references, Defendants rely in part on theexpert opinions of Ms. Smith included inher November 2015 report.

Plaintiffs claim that Defendants failed todisclose the details of the sample prepara-tion for the ESCR test despite their con-sidering this information and making re-peatedly clear that it is fundamental tounderstanding and evaluating the proba-tive value of the testing at issue. Plaintiffsalso argue that Defendants failed to dis-close certain of the test results at all or ina timely manner and blocked legitimaterequests for fact discovery regarding suchtesting details. Plaintiffs maintain that allof this undisclosed information was explic-itly considered by Ms. Smith in formingher opinions relating to the ’094 patent andis key to evaluating the credibility of heropinions, which plaintiffs were denied theopportunity to do.

Regarding reliability, Plaintiffs contendthat Ms. Smith’s opinions should be ex-cluded because she failed to provide, andDefendants blocked discovery of, the prac-ticed ESCR Testing. They argue that shedid not provide sufficient information toallow other scientists to reproduce the var-ious tubes she tested. Thus, Plaintiffs con-tend that the testing and results on whichshe bases all her opinions cannot be inde-pendently verified by other scientists.Plaintiffs also complain that Ms. Smithfailed to provide any raw data recordingher purported contemporaneous observa-tions of the ESCR testing and that sherelies on only one test (instead of multiple)in rendering her opinion, which Plaintiffsargue is bad science. They also argue thatshe did not test enough strips and that sheimproperly used a microscope in combina-tion with fiber optic lighting to determinecracking, as opposed to just naked eyeobservation.

As discussed at the hearing, the courtbelieves that it has already fashioned an


appropriate remedy to the parties’ disputehere by allowing additional discovery, in-cluding depositions for Ms. Smith and a30(b)(6) representative of Tuboplast, onthe subject of how the injection-moldedarticles were made and tested, whichwould include questions about Tuboplast’ssample tube production that arise out ofany newly produced documents and/or tes-timony from Tuboplast’s 30(b)(6) represen-tative. See (#309). The court believes thatPlaintiff’s Motion to exclude the testimonyof Ms. Smith is now moot and will there-fore be DENIED without prejudice.

5. Plaintiffs’ Motion to Exclude Pur-ported Expert Testimony of Cyn-

thia Smith and Tim Osswald

Finally, Plaintiffs move to exclude testi-mony from Ms. Smith and Mr. Osswaldabout ’094 Patent invalidity that rely ontwo prior art references which Plaintiffsargue were not timely disclosed—CapileneQT 80A and PPC 9760, which Plaintiffscharacterize as polymer data sheets. See(#208). Pursuant to Local Patent Rules, onFebruary 24, 2014, Defendants submittedtheir invalidity contentions, which were todisclose ‘‘each item of prior art that alleg-edly anticipates’’ or renders obvious theasserted claims of the patents-in-suit. SeeDefs.’ Initial Invalidity Contentions (#161-3) at 4–6. Plaintiffs argue that Defendants’contentions, however, did not disclose twoprior art references—the polymers Capi-lene QT 80 and PPC 9760—relied on bytheir experts, and that Defendants againfailed to disclose them when they amendedtheir invalidity contentions in May 2015and for a second time in February 2016.

The opening report of Ms. Smith (whoopines on whether the ’094 Patent is inval-id due to indefiniteness) reveals that inMay 2015, and again in October 2015, uponDefendants’ instruction, Ms. Smith per-formed ESCR testing on Capilene QT 80and PPC 9760 that was intended to sup-port Defendants’ invalidity theories based

on these references. See Smith Rep.(#211) at Ex. D, ¶¶ 34, 49, 80-96. Dr. Os-swald, who opines on the invalidity ofthe ’094 patent on the grounds of indefi-niteness and lack of enablement, advancesinvalidity theories based on these refer-ences and by explicitly relying on Ms.Smith’s conclusions based on her testing ofthe materials discussed in the references.See Osswald Rep. (#193-5) at ¶¶ 106-07,110-11, 115, 121.

Plaintiffs argue that Defendants with-held this information and only revealed itwhen they served their opening expertreports on November 9, 2015, long afterfact discovery had closed and they soughtinformation under relevant interrogatories.They argue that this is a violation of localpatent rules, see P.R. 3.3–3.4 (requiringthat a party alleging invalidity must identi-fy ‘‘each item of prior art that allegedlyanticipates each asserted claim or rendersit obvious’’ in its invalidity contentions), aswell as Fed. R. Civ. P. 26(a)(2) and 37.Plaintiffs argue that they are prejudicedthrough the delayed disclosure becausethey were deprived of the opportunity toobtain meaningful discovery regardingthese prior art references before the closeof fact discovery. Plaintiffs also argue thatthey were likewise unable to timely devel-op rebuttal expert opinions and that thereis no available means for Defendants to‘‘cure’’ their repeated failure to amendtheir contentions without placing undueburden on Viva’s ability to defend againstDefendants’ invalidity counterclaims. Theynote that allowing Defendants to continueto rely on these references would requirereopening of fact and expert discovery topermit Viva to develop its defense theo-ries, which would require Viva to redirecttime and resources to this issue instead oftrial preparation.

[17] Defendants argue that they havenot run afoul of any rules, and that they


timely disclosed the prior art references inFebruary 2014 when they first served itsinvalidity contentions. Defendants arguethat Capilene and PPC are not prior artreferences and have not been asserted asprior art references by CTL or its experts,but that they are mere examples of poly-mers disclosed in their prior art references(Jacobs and Anon). Defendants argue thatin order to confirm that polymers fallingwithin the range of the characteristicstaught in the Prior Art References wouldpass the ’094 Patent’s ESCR test wheninjection molded, Dr. Osswald identifiedCapilene and PPC in September 2015 asexamples falling within the scope of theReferences and found that they were com-mercially available in their current formprior to the priority date for the ’094 Pat-ent. Then, in doing her testing, Ms. Smithrequested from Tuboplast in Spain (whichhad been doing preliminary ESCR testing)injection mold samples—using the samehigh sheer, long flow injection moldingprocess—from Capilene and PPC forESCR testing.

Ms. Smith then conducted the ESCRtest of the ’094 Patent on the Capilene andPPC samples (and others) in October 2015and determined that tubes made withthese polymers meet the ESCR levelsclaimed in the ’094 Patent. Based on theseresults—and because both Capilene andPPC were commercially available at thetime of the Prior Art References (andbefore the priority date of the ’094 Pat-ent)—Dr. Osswald concluded that CTL’sinvalidity theories were confirmed: the Pri-or Art References render the ’094 Patentinvalid as obvious because they teach injec-tion molding of polymers that meet theclaim limitations of having an ‘‘ESCR asherein defined.’’

Defendants also argue that Viva had fullknowledge of CTL’s invalidity theoriesbased on the range of polymer typestaught in the Prior Art References for two

years—since February 24, 2014, whenCTL served its OIC and accompanyingclaim charts. They also note that Viva didnot ask CTL’s fact witnesses any questionsabout prior art or CTL’s invalidity conten-tions during depositions. To the extentViva required information regarding howTuboplast injection molded the Capileneand PPC tube samples that Ms. Smithused in her October 2015 ESCR testing,Defendants contend that Viva receivedconsiderable information from Tuboplast’sand CTL’s 30(b)(6) witnesses on the injec-tion molding process that was used. Theyalso argue that they fully complied withthe disclosure requirements for expert re-ports and that Plaintiffs had time to re-spond and prepare for depositions. Theyalso note that Plaintiff did not attempt toconduct its own testing to confirm or un-dermine Ms. Smith’s findings.

Having considered the parties’ argu-ments, the court will not exclude any ofthe opinions challenged by Plaintiffs in theinstant motion. However, if Plaintiffs wishto request any additional discovery relatedto the issues raised herein, they may pro-pose (by motion) a specific list of the dis-covery to which they believe they are enti-tled for the court’s consideration. Thecourt will therefore DENY Plaintiffs’ Mo-tion to Exclude Purported Expert Testi-mony of Cynthia Smith and Tim Osswald.

C. Conclusion

For the reasons stated at the hearing, aswell as those stated herein, the court willDENY the Motions of the parties as toexclusion of expert testimony. The courtbelieves that all of the issues raised by theparties can be dealt with on cross-examina-tion at trial, except as specifically statedotherwise herein.

III. SUMMARY JUDGMENT MOTIONS

A. Legal Standard

Summary judgment shall be granted ‘‘ifthe movant shows that there is no genuine


dispute as to any material fact and themovant is entitled to judgment as a matterof law.’’ FED. R. CIV. P. 56(a). A factualdispute is genuine ‘‘if the evidence is suchthat a reasonable jury could return a ver-dict for the nonmoving party.’’ Anderson v.Liberty Lobby, Inc., 477 U.S. 242, 248, 106S.Ct. 2505, 91 L.Ed.2d 202 (1986). A fact ismaterial only if it might affect the outcomeof the suit under governing law. Id. Themovant has the ‘‘initial responsibility ofinforming the district court of the basis forits motion, and identifying those portionsof the pleadings, depositions, answers tointerrogatories, and admissions on file, to-gether with the affidavits, if any, which itbelieves demonstrate the absence of a gen-uine issue of material fact.’’ Celotex Corp.v. Catrett, 477 U.S. 317, 323, 106 S.Ct.2548, 91 L.Ed.2d 265 (1986) (internal cita-tions omitted). Once this initial burden ismet, the burden shifts to the nonmovingparty. That party ‘‘must set forth specificfacts showing that there is a genuine issuefor trial.’’ Id. at 322 n. 3, 106 S.Ct. 2548.The nonmoving party may not rely uponmere allegations or denials of allegationsin his pleadings to defeat a motion forsummary judgment. Id. at 324, 106 S.Ct.2548. Instead, that party must present suf-ficient evidence from which ‘‘a reasonablejury could return a verdict for the nonmov-ing party.’’ Anderson, 477 U.S. at 248, 106S.Ct. 2505; accord Sylvia Dev. Corp. v.Calvert Cnty., Md., 48 F.3d 810, 818 (4thCir.1995).

When ruling on a summary judgmentmotion, a court must view the evidence andany inferences from the evidence in thelight most favorable to the nonmoving par-ty. Anderson, 477 U.S. at 255, 106 S.Ct.2505. ‘‘ ‘Where the record taken as a wholecould not lead a rational trier of fact tofind for the nonmoving party, there is nogenuine issue for trial.’ ’’ Ricci v. DeStefa-no, 557 U.S. 557, 586, 129 S.Ct. 2658, 174L.Ed.2d 490 (2009) (quoting Matsushita v.Zenith Radio Corp., 475 U.S. 574, 587, 106

S.Ct. 1348, 89 L.Ed.2d 538 (1986)). In theend, the question posed by a summaryjudgment motion is whether the evidence‘‘is so one-sided that one party must pre-vail as a matter of law.’’ Anderson, 477U.S. at 252, 106 S.Ct. 2505.

B. Invalidity

[18–20] A patent is presumed validupon issuance from the United States Pat-ent and Trademark Office, and the ‘‘bur-den of establishing invalidity of a patent orany claim thereof shall rest on the partyasserting such invalidity.’’ 35 U.S.C. § 282.Overcoming this presumption requires theparty seeking to invalidate a patent toprove invalidity by clear and convincingevidence. Microsoft Corp. v. I4I Ltd.P’ship, 564 U.S. 91, 95, 131 S.Ct. 2238, 180L.Ed.2d 131, (2011). This standard appliesat the summary judgment stage. Invitro-gen Corp. v. Biocrest Mfg., L.P., 424 F.3d1374, 1378 (Fed.Cir.2005). Thus, in orderto prevail at the summary judgment stage,the party seeking summary judgment onthe issue of patent invalidity ‘‘must submitsuch clear and convincing evidence of in-validity so that no reasonable jury couldfind otherwise.’’ Eli Lilly & Co. v. BarrLabs., Inc., 251 F.3d 955, 962 (Fed.Cir.2001). A patent is invalid if it is indefinite,see 35 U.S.C. § 112(b), cannot be enabled,see id. § 112(a), or if it was anticipated byprior art, see id. § 102. Regarding sum-mary judgment on a motion for patentinvalidity, if the decisive determination ofinvalidity depends on resolution of materi-al factual differences, then summary judg-ment is inappropriate. See InvitrogenCorp. v. Clontech Laboratories, Inc., 429F.3d 1052, 1071 (Fed.Cir.2005).

C. Discussion

1. Defendants’ Motion for SummaryJudgment as to Indefiniteness

Defendants first move for summaryjudgment on the defense that the patent isinvalid because it is indefinite.


a. Legal Framework

[21] The Patent Act of 1952 requiresthat a patent specification ‘‘conclude withone or more claims particularly pointingout and distinctly claiming the subjectmatter which the inventor or a joint inven-tor regards as the invention.’’ 35 U.S.C.§ 112(b). A lack of definiteness rendersthe patent or any claim in suit invalid. Id.§ 282(b)(3). The Supreme Court set fortha new standard for indefiniteness under§ 112 in Nautilus, Inc. v. Biosig Instru-ments, Inc., ––– U.S. ––––, 134 S.Ct. 2120,189 L.Ed.2d 37 (2014), providing that apatent is invalid for indefiniteness if itslanguage, read in light of the specificationand prosecution history, ‘‘fail[s] to inform,with reasonable certainty, those skilled inthe art about the scope of the invention.’’Id. at 2124. The Court set forth this stan-dard in order to address the ‘‘delicate bal-ance’’ of the definiteness analysis. Id. at2128 (quoting Festo Corp. v. ShoketsuKinzoku Kogyo Kabushiki Co., Ltd., 535U.S. 722, 731, 122 S.Ct. 1831, 152 L.Ed.2d944 (2002)). The definiteness standardmust acknowledge ‘‘the inherent limita-tions of language’’ and ‘‘must allow for amodicum of uncertainty’’ to provide incen-tives for innovation, but must also require‘‘clear notice of what is claimed, therebyappris[ing] the public of what is still opento them.’’ Id. at 2128–29 (internal citationsomitted). The Court noted that ‘‘absent ameaningful definiteness checkTTTpatentapplicants face powerful incentives to in-ject ambiguity into their claims.’’ Id. at2129.

[22] Under this standard, a patentdoes not satisfy the definiteness require-ment of § 112 merely because ‘‘a court canascribe some meaning to a patent’sclaims.’’ Interval Licensing LLC v. AOL,Inc., 766 F.3d 1364, 1369 (Fed.Cir.2014)(quoting Nautilus, 134 S.Ct. at 2130). Rath-er, ‘‘the claims, when read in light of thespecification and the prosecution history,

must provide objective boundaries forthose of skill in the art.’’ Id. See alsoNautilus, 134 S.Ct. at 2130 & n. 8 (indicat-ing that there is an indefiniteness problemif the claim language ‘‘might mean severaldifferent things and ‘no informed and con-fident choice is available among the con-tending definitions’ ’’) (quoting Every Pen-ny Counts, Inc. v. Wells Fargo Bank, N.A.,4 F.Supp.3d 1286, 1291 (M.D.Fla.2014)).The Court’s decision ‘‘emphasizes ‘the defi-niteness requirement’s public-notice func-tion.’ ’’ Dow Chem. Co. v. Nova ChemicalsCorp. (Canada), 803 F.3d 620, 630 (Fed.Cir.2015) (quoting Nautilus, Inc., 134 S.Ct.at 2130).

Every issued patent enjoys a statutorypresumption of validity. 35 U.S.C. § 282.The burden of establishing invalidity of apatent or any of its claims rests on theparty asserting invalidity. Id. Governinglaw ‘‘requires patent challengers to proveinvalidity by clear and convincing evi-dence.’’ Tate Access Floors, Inc. v. Inter-face Architectural Res., Inc., 279 F.3d1357, 1367 (Fed.Cir.2002). See also Nauti-lus, 134 S.Ct. at 2130 n. 10 (citing Micro-soft Corp. v. i4i Ltd. Partnership, 564 U.S.91, 131 S.Ct. 2238, 2242, 180 L.Ed.2d 131(2011)); (Teva Pharms. USA, Inc. v. San-doz, Inc., 723 F.3d 1363, 1368 (Fed.Cir.2013)).

[23–26] ‘‘In ruling on a claim of patentindefiniteness, a court must determinewhether those skilled in the art wouldunderstand what is claimed when the claimis read in light of the specification.’’ Ban-corp Servs., L.L.C. v. Hartford Life Ins.Co., 359 F.3d 1367, 1371 (Fed.Cir.2004).While indefiniteness is a question of law, itrequires underlying factual determinationsas to what one skilled in the art wouldhave understood at the time. See BJ Servs.Co. v. Halliburton Energy Servs., Inc., 338F.3d 1368, 1372 (Fed.Cir.2003) (‘‘definite-nessTTTis amenable to resolution by the


jury where the issues are factual in na-ture.’’) (noting conflicting evidence pre-sented by the parties’ experts at trial);Teva Pharm. USA, Inc. v. Sandoz, Inc.,789 F.3d 1335, 1348 (Fed.Cir.2015) (Mayer,J.) (dissenting); Orthokinetics, Inc. v. Safe-ty Travel Chairs, Inc., 806 F.2d 1565, 1576(Fed.Cir.1986). Moreover, where, as here,‘‘expert evidence addressing what oneskilled in the art would have understoodby looking at [the] patent is in conflict,’’summary judgment is inappropriate. SeeWesternGeco L.L.C. v. ION GeophysicalCorp., 876 F.Supp.2d 857, 872 (S.D.Tex.2012); Bancorp Servs., 359 F.3d at 1375–76(reversing summary judgment of invalidityfor indefiniteness because the experts disa-greed on whether a term was indefinite);Masimo Corp. v. Philips Elecs. N. Am.Corp., No. CV 09–80–LPS, 2015 WL7737308, at *6 (D.Del. Dec. 1, 2015)(‘‘Plaintiff has also submitted an expertdeclarationTTTwhich (at minimum) shows agenuine dispute of material fact preventingthe Court from granting summary judg-ment of invalidity due to indefiniteness’’);Dow Chem. Co. v. NOVA Chemicals Corp.(Canada), 629 F.Supp.2d 397, 404 (D.Del.2009) (collecting cases as to district courtdenials of summary judgment on indefi-niteness where questions of fact remainedfor the jury to resolve). Regarding experttestimony at the summary judgment stage,a moving party may provide support forsuch motions by submitting affidavits fromfact and expert witnesses, so long as suchevidence is necessary to support summaryjudgment in patent cases where the tech-nology is not ‘‘easily understandable with-out’’ expert’s explanatory testimony. Cen-tricut, LLC v. Esab Grp., Inc., 390 F.3d1361, 1369 (Fed.Cir.2004). The nonmovingparty may oppose summary judgmentbased on expert testimony by pointing ‘‘toan evidentiary conflict created on the rec-ord at least by a counter statement of factor facts set forth in detail in an affidavit bya knowledgeable affiant. Mere denials or

conclusory statements are insufficient.’’Barmag Barmer Maschinenfabrik AG v.Murata Mach., Ltd., 731 F.2d 831, 836(Fed.Cir.1984).

b. Discussion

[27] The court has previously ex-pressed concern about the potential indefi-niteness of the patents-in-suit, noting atthe claim construction stage of the pro-ceedings:

in light of the fact that these patents doindeed claim broadly, and that CTL’sexpert witnesses testified that they wereunable to ascertain the scope of the pat-ents with reasonable certainty, the courtis troubled by the question of how mem-bers of the public are able to determinewhether they are infringing upon thesepatents. While the court requires moreevidence before making a final decisionon invalidity, it is cognizant of the pow-erful incentives for patent applicants toinject ambiguity into their claims, andwill continue to consider what, if any-thing, these patents have left open tothe public.

See (#109) at p. 12 (internal citation andquotations omitted). However, the courtfound that Defendants had not shown in-validity by clear and convincing evidenceat the claim construction stage and thatthe parties and court would benefit fromthe completion of discovery before render-ing a decision on the issue. Id. Now thatdiscovery has been completed and the par-ties have fully briefed their legal argu-ments, the issue before the court is wheth-er Defendants have shown, by clear andconvincing evidence, whether one skilled inthe art can ascertain the scope of the claimwith reasonable certainty.

Defendant argues that discovery hasconfirmed that the patents-in-suit are in-definite. Generally, they argue that thepatents state a desired outcome, but fail to


explain how to reach that outcome, whichleaves the public in the dark as to what thepatent protects. They contend that theESCR test uses subjective criteria that areinsufficient to inform one skilled in the artwhat the patent protects.

Defendants first argue that the ’094 Pat-ent is indefinite due to its reliance on ‘‘anESCR as herein defined.’’ This court con-strued that term at claim construction as‘‘The ESCR test as defined in column 2,line 62 through column 3, line 13 of U.S.Patent No. 6,547,094.’’ The patent definesa method for determining ESCR, but De-fendant argues that it fails to provide pa-rameters which can be followed, fails tonarrow the number of potential ‘‘polymerblends’’ that would have to be tested, andthus fails to accomplish its stated purpose.Defendants contend that instead, the ’094Patent simply provides a desired resultand purports to claim all blends thatachieve this result without providing anyconcrete guidance as to how to achieve it.They contend that it fails to inform aperson of skill in the art at the time ofthe ’094 Patent application how to conductthe test in a way that would determinewhether a given polymer blend falls withinthe scope of the invention with reasonablecertainty. Defendants further contend thatthe failure to define a particular stresscrack agent makes the ESCR test impossi-ble to duplicate. The specification lists sev-eral possible stress crack agents, such as‘‘mineral oils, cationic surfactants, sol-ventsTTTwhich will be apparent to thoseskilled in the art.’’ Defendants note thatMs. Smith tested two stress crack agentsagainst injection-molded tubes; one failedbut one did not. Defendants argue thatthose tests demonstrate that the choice ofstress crack agent affects whether a poly-mer blend falls within or outside of thescope of claims.

Defendants also contend that the failureto specify molding conditions and post-

molding treatments make the ESCR indef-inite. Regarding post-molding treatments,the patent requires that the test strips‘‘[incorporate] any post-molding treatmentintended for the final article.’’ (’094 Patent,2:64-65). Defendants argue that Plaintiff’sexpert admitted that molding conditionsaffect ESCR properties. Defendants arguethat the patent thus attempts to cover‘‘whatever you make and however youmake it.’’ Defendants also argue that thevast number of ‘‘polymer blends’’ wouldhave to be tested with vast numbers of‘‘ESCR as herein defined’’ parameters,which makes the possibilities for testingastronomical. Finally, Defendants also ar-gue that Claims 11-19 and 21 of the ’094Patent are indefinite due to their relianceon ‘‘compatible agent’’ as part of the poly-mer blend. Defendants argue that it is asubjective, undefined term that makes itimpossible for one skilled in the art toascertain how to act on the patent.

Regarding the ’318 Patent, Defendantsargue that it is indefinite due to its reli-ance on ‘‘High-Melt Flow CompatiblePolymer.’’ This court construed that termat claim construction to mean ‘‘the highmelt flow polymer of the polymer blendthat is compatible with the ‘at least onepolymer.’ ’’ Essentially, Defendants arguethat whether an agent or polymer is ‘‘com-patible’’ is a subjective determination thatdoes not allow one skilled in the art toascertain the scope of the patent. Defen-dants argue that its experts have re-peatedly opined that ‘‘compatible polymer’’fails to give any sort of meaning that couldbe interpreted by one of skill in the art.

Plaintiff argues that the motion shouldbe denied because Defendants have failedto show a lack of any disputed issue ofmaterial fact, that they have failed to meettheir burden, and that contradicting experttestimony on this issue renders this matterappropriate for a jury, not summary judg-


ment. Plaintiffs cite their own expert’s tes-timony, which does indeed contradict thetestimony of Defendants’ experts on eachand every point made by Defendants.

For example, as to ‘‘an ESCR as hereindefined’’ in the ’094 Patent, Defendants’expert Ms. Smith opines that various as-pects of the patent render that claim termindefinite. See Smith Rep. (#193-7) at¶¶80-94 (‘‘In light of my review of the ’094Patent, its prosecution history and specifi-cation, and the data and other informationset forth in Exhibit B hereto, togetherwith my knowledge of how such terms areused by a person having ordinary skill inthe art, the term ‘an ESCR as hereindefined,’ as it appears in claims 1, 5-7, and11 of the ’094 Patent and as construed bythe Court in the Claim Construction Or-der, does not inform those skilled in theart about the scope of the invention withreasonable certainty.’’); Osswald Reb. Rep.(#193-6) at ¶1 (agreeing with Smith’s in-definiteness opinion). On the other hand,Professor Driscoll—one of Plaintiff’s ex-perts—opines in his report that such claimis not indefinite. See Driscoll Reb. Rep.(#193-9) at ¶¶ 71-99. Both experts offerthorough and credible analyses as to theiropinions. While the court has ordered addi-tional discovery as to Ms. Smith’s opinionson the matter, it has not excluded anytestimony. As such, the court finds thatthe credibility of the experts and the factu-al determinations to be deciphered fromtheir testimony are issues that cannot beresolved by this court, but are proper forresolution by a jury.

Similarly, as to ‘‘At Least One Compati-ble Agent’’ in the ’094 Patent, Defendants’experts Cakmak and Osswald offer opin-ions that such claim is indefinite. See, e.g.,Cakmak Rep. (#193-3) at ¶¶ 78-83; Os-swald Rep. (#193-5) at ¶55; Osswald Reb.Rep. (#193-6) at ¶ 42. Plaintiffs’ expert Dr.Rubinstein opines that the term is notindefinite. See, e.g., Rubinstein Reb. Rep.

(#193-14) at ¶¶ 54–58. Finally, regardingthe ‘‘high melt flow compatible polymer’’claim limitation of the claims of the ’318patent, Defendant offers expert testimonyfrom Dr. Cakmak and Dr. Osswald thatthe term is indefinite. See, e.g., CakmakRep. (#193-3) at ¶¶92-100; Osswald Rep.(#193-5) at ¶¶141-42. On the other hand,Dr. Rubinstein opines that it is not indefi-nite. See, e.g., Rubinstein Reb. Rep.(#193-14) at ¶¶ 142-47. Once again, thecourt is faced with expert testimony thatoffers sharply contrasting opinions. Whilethe court has ruled that to the extent thatDefendants’ expert testimony conflictswith this court’s claim construction Order,such opinions are excluded, the court hasalso allowed other testimony on indefinite-ness from Defendants’ experts to be intro-duced.

Although indefiniteness is a question oflaw, resolution of that question requires afactual determination as to what oneskilled in the art would have understoodby looking at the patent. Here, the expertevidence addressing what one skilled inthe art would have understood about thescope of the invention when consideringthe patents-in-suit is in conflict. Thus, De-fendants have failed to prove indefinite-ness by clear and convincing evidence. Assuch, the determination of the factualquestions underlying this legal issue mustbe made by a jury, and the court willtherefore DENY without prejudice De-fendants’ Motion for Summary Judgmentas to Indefiniteness.

2. Defendants’ Motion for SummaryJudgment as to Lack of

Enablement

Defendants also move for summaryjudgment on the defense that the patent isinvalid because it lacks enablement. Itsarguments parallel those on indefiniteness,essentially contending that the Patents-in-Suit do not teach one skilled in the art how

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to (1) select polymers that are capable of(2) (a) passing the ESCR test (’094 Patent)or (b) being compatible with the otherpolymers (both patents); (3) being injec-tion-molded; and (4) removed from themold—even though each and every one ofthese steps is required by the claims.

a. Legal Framework

[28, 29] Under 35 U.S.C. § 112, thepatent specification must ‘‘contain a writ-ten description of the invention, and of themanner and process of making and usingit, in such full, clear, concise, and exactterms as to enable any person skilled inthe art to which it pertainsTTTto make anduse the same.’’ Id. To be enabling, ‘‘thespecification of a patent must teach thoseskilled in the art how to make and use thefull scope of the claimed invention withoutundue experimentation.’’ Genentech, Inc. v.Novo Nordisk, A/S, 108 F.3d 1361, 1365(Fed.Cir.1997) (internal quotation marksand citations omitted). Undue experimen-tation is required ‘‘when there is no disclo-sure of any specific starting material or ofany of the conditions under which a pro-cess can be carried out.’’ Id. at 1366.‘‘While every aspect of a generic claimcertainly need not have been carried outby the inventor, or exemplified in the spec-ification, reasonable detail must be provid-ed in order to enable members of thepublic to understand and carry out theinvention.’’ Id. ‘‘It is well-established, how-ever, that a specification need not disclosewhat is well-known in the art.’’ Streck, Inc.v. Research & Diagnostic Sys., Inc., 665F.3d 1269, 1288 (Fed.Cir.2012).

[30] A determination of enablement ‘‘isnot a single, simple factual determination,but rather is a conclusion reached byweighing many factual considerations.’’ Inre Wands, 858 F.2d 731, 737 (Fed.Cir.1988). The Federal Circuit has providedseveral factors that may be utilized in de-termining whether a disclosure would re-

quire undue experimentation, which arereferred to as the ‘‘Wands factors’’:

(1) the quantity of experimentation nec-essary, (2) the amount of direction orguidance presented, (3) the presence orabsence of working examples, (4) thenature of the invention, (5) the state ofthe prior art, (6) the relative skill ofthose in the art, (7) the predictability orunpredictability of the art, and (8) thebreadth of the claims.

Id.; accord Martek Biosciences Corp. v.Nutrinova, Inc., 579 F.3d 1363, 1378 (Fed.Cir.2009). A court need not review all theWands factors to find a disclosure en-abling, but only those that are relevant,because the factors ‘‘are illustrative, notmandatory.’’ Streck, 665 F.3d at 1288 (cit-ing Amgen, Inc. v. Chugai Pharm. Co., 927F.2d 1200, 1213 (Fed.Cir.1991)).

[31] The determination of enablementis a question of law based on underlyingfactual inquiries. See Green Edge Enters.,LLC v. Rubber Mulch Etc., LLC, 620 F.3d1287, 1298–99 (Fed.Cir.2010) (citationomitted); Wands, 858 F.2d at 737. Enable-ment is determined as of the filing date ofthe patent application. In re ’318 PatentInfringement Litigation, 583 F.3d 1317,1323 (Fed.Cir.2009) (citation omitted). Asnoted above, ‘‘[b]ecause patents are pre-sumed valid, lack of enablement must beproven by clear and convincing evidence.’’ALZA Corp. v. Andrx Pharm., LLC, 603F.3d 935, 940 (Fed.Cir.2010).

b. Discussion

As the moving party, Defendants bearthe burden of producing evidence to dem-onstrate that the specification of the pat-ents-in-suit do not enable one skilled in theart to practice the invention. Defendantsfirst argue that the patents-in-suits re-quire undue experimentation to selectpolymers or polymer blends for use in themanufacturing of injection molded tubes.

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They argue the selection forces one ofordinary skill in the art to: (1) engage inperpetual research and development topractice the full scope of the claims; (2)that it is only a starting point for research;and (3) that the Plaintiff’s experts areimproperly attempting to fill in gaps leftby the patent through the current litiga-tion. Next, they argue that undue experi-mentation is required to manufacture thetubes because: (1) they fail to teach mold-ing conditions; (2) they fail to teach therequired step of ‘‘demolding;’’ (3) that theclaims lack any meaningful disclosure; and(4) that the examples provided in the pat-ents do not work. They contend that Vivaand Mr. Jacobs (the inventor) have at-tempted to claim all potential current andfuture polymers and polymer blends aswithin the scope of the patents, and thatthe patents-in-suit force one of ordinaryskill in the art to engage in perpetualresearch and development to practice thefull scope of the claims. Defendants largelyrely on the statements of their expert Dr.Osswald in making their arguments thatthe patents-in-suit lack enablement. See,e.g., Osswald Rep. (#193-5) at ¶¶ 56-90,141-74 (explaining the basis for his opinionthat the patents-in-suit would require un-due experimentation). They also arguethat Ian Jacobs’ deposition testimony,which the court partially observed via vid-eo at the hearing, shows that Mr. Jacobs’attempts to cover all potential polymerblends that fit within the scope of thepatent, as opposed to teaching one skilledin the art how to manufacture the tubesunder the patent.

Plaintiffs, on the other hand, argue thatthe patents do sufficiently teach how topractice the patent and that Defendantshave failed to meet the ‘‘clear and convinc-ing’’ burden. Plaintiffs dispute Defendants’interpretation of expert testimony, as wellas the scope of the claims as taught fromthe patent. Plaintiffs rely on their expertreports opining that the patent sufficiently

teaches molding conditions and the ‘‘de-molding’’ step, and that the examples inthe patents—numbering 26 examples be-tween them—enable the scope of theclaims. For example, Plaintiffs argue thatthe claim limitations of the patents-in-suitlimit the scope of claimed polymer blends,citing opinions from Dr. Rubinstein andProfessor Driscoll. See, e.g., RubinsteinReb. Rep (#193-14) at ¶¶ 71-75, 149-61;Driscoll Reb. Rep (#193-10) at ¶45. Theynote that in the ’094 Patent, the combina-tion of claim limitations—encompassingcommercially available polymers that areinjection-moldable under long flow/highshear conditions, are flexible, and have theappropriate ESCR—makes the claimsmuch narrower that Defendants contend.Dr. Rubenstein explained, for example,that a person of ordinary skill in the artwould typically start by selecting commer-cially available polymers, of which thereare a limited number. See (Rubinstein RebRep. (#193-14) at ¶¶ 72, 97). Dr. Rubin-stein opined that of those polymers, basedon his knowledge and the guidance provid-ed in the patent, he would be restricted tothe very narrow subset of polymers thatwould meet the combination of require-ments set forth in even the broadestclaims. Id. at ¶¶ 96–101. Only polymersthat meet each of the following require-ments would be candidates: ability to flowdown a long and narrow path (since theclaims are limited to injection molded pro-cesses for making long, thin-walled flexiblearticles such as tubes under high shear,long flow length conditions where the flowof polymer is largely monodirectional forgreater than 50 mm); flexibility; and thosethat have good ESCR properties (i.e., hav-ing an ESCR value of at least 10 hours) inorder to be capable of passing a verystringent ESCR test. (Id.) Dr. Rubinsteinopined that each of these requirementsalone rules out most of the already-limitednumber of commercially available poly-

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mers and that taken together, they leave avery small number of possibilities. (Id.)

For the ’318 Patent, Plaintiff argues thatthe scope of the claims is limited by therequirement that the polymer blend beflexible and capable of flowing so as to beinjection molded to form a thin walledarticle. Id. at ¶¶ 149–61, 168–72. Addition-ally, Plaintiffs contend that the term ‘‘highmelt flow compatible polymer,’’ as con-strued by the court, requires both that thepolymer have a high MFI (at least 100g/10 min) and that it be ‘‘compatible’’ withthe ‘‘at least one polymer.’’ See Claim Con-struction Order (#109) at p. 27. Dr. Rubin-stein opined that both of the foregoing setsof limitations narrowly limit the universeof polymers that a person of ordinary skillwould and could use, since the number ofcommercially available high MFI polymersfor use in the cosmetic industry is low andbecause most polymers are not compatiblewith one another. See Rubinstein Reb.Rep. (#193-14) at ¶¶ 149–161, 168–72.

In addition, Plaintiffs argue, citing Dr.Rubinstein’s report, that the dependentclaims of both patents are even more se-verely limiting because based on require-ments of the claims, they are limited bypractical commercial considerations, whichrestrict the choice of polymers to thosepolymers that would produce tubes accept-able for use in the cosmetics industry. Seeid. at ¶ 72, 97, 149. Further, they contendthat the scope is additionally limited by thefact that a person of ordinary skill in theart would typically start working withcommercially available polymers (and therelative amounts of each of these) identi-fied in one or more of the working exam-ples and by ‘‘incrementally modify[ing] theexample to suit their needs and prefer-ences.’’ Id. ¶¶ 75, 107, 178.

Plaintiffs also argue that the limitationsimposed by the ‘‘compatible agent’’ and‘‘high melt flow compatible polymer’’ termsfurther limit the scope of the claims, and

that the many examples taught betweenthe two patents-in-suit rebut Defendants’arguments that the patents-in-suit fail tospecify the formulation of suitable polymerblends they claim. Plaintiffs also note thatthe parties’ experts dispute what wouldconstitute routine experimentation in thefield. See Osswald Rep. (#193-5) at ¶¶ 56–90; 143–174; 1/5/2016 Driscoll Dep. Tr.(#244) at 102:6–103:4, 97:23–98:10, 99:2–25,104:19–105:8; Rubinstein Reb. Rep. (#193-14) at ¶¶ 93–114; 167–185.

As to the ’318 Patent, Plaintiffs citeexpert testimony and other evidence indi-cating that the patents sufficiently teachmolding conditions and the ‘‘demolding’’step. See, e.g., Rubinstein Reb. Rep.(#193-14) ¶¶ 76–78; 96; 165); 1/5/2016 Dris-coll Dep. Tr. (#224) at 72:10–73:8, 89:11–96:4, 68:14–20, 316:13–317:4. They also ar-gue that the examples enable the patent.

[32] Having considered the evidenceand the arguments before it, the courtfinds that Plaintiffs have raised genuineissues of material fact as to the amountand type of experimentation required, andthat those facts that will determine wheth-er such experimentation is undue for oneof ordinary skill in the art. These disputedfacts affect several of the Wands factors:the quantity of experimentation necessary,the amount of direction or guidance pre-sented, the nature of the invention, and thebreadth of the claims. While ultimately atrier of fact may reach the conclusion thatthe required experimentation is undue,Plaintiffs’ experts have refuted Defen-dants’ arguments by convincingly opiningthat one of ordinary skill in the art couldmake and use the full scope of the claimedinvention without undue experimentation.It is not the role of the court to weighexpert credibility, and where qualified ex-perts on both sides of the case offer com-peting opinions as to the ability to practicethe patent, summary judgment is improp-

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er. See, e.g., Evonik Degussa GmbH v.Materia Inc., No. 09–CV–636 (NLH/JS),2016 WL 337378, at *8 (D.Del. Jan. 26,2016) (denying summary judgment due tocompeting expert testimony on the issue ofenablement). Accordingly, the court findsthat Defendants have not proven throughclear and convincing evidence that eitherpatent-in-suit is invalid for non-enable-ment, and that summary judgment istherefore inappropriate. Defendants’ Mo-tion for Summary Judgment as to lack ofEnablement is therefore DENIED.

3. Defendants’ Motion for SummaryJudgment of No Willful

Infringement

Plaintiff seeks treble damages in thisaction under 35 U.S.C. § 284, which per-mits an enhanced damages award for will-ful infringement. The Supreme Court re-cently decided in Halo Elecs., Inc. v. PulseElecs., Inc., ––– U.S. ––––, 136 S.Ct. 1923,1928, 195 L.Ed.2d 278 (2016) that the Fed-eral Circuit’s two-part test, as adapted inIn re Seagate Technology, LLC, 497 F.3d1360 (2007) (en banc), for determiningwhen a district court may increase dam-ages under § 284 was inconsistent with thestatute. Under Seagate, to establish willfulinfringement, the patentee had to show‘‘by clear and convincing evidence that theinfringer acted despite an objectively highlikelihood that its actions constituted in-fringement of a valid patent.’’ Id. at 1371.Establishing willful infringement of a validpatent required a two-prong showing in-volving both an objective and a subjectiveinquiry. Seagate held that ‘‘a patenteemust show by clear and convincing evi-dence that the infringer acted despite anobjectively high likelihood that its actionsconstituted infringement of a valid patent.’’Id. at 1368. Second, if the ‘‘threshold objec-tive standard is satisfied, the patenteemust also demonstrate that this objective-ly-defined risk (determined by the recorddeveloped in the infringement proceeding)

was either known or so obvious that itshould have been known to the accusedinfringer.’’ Id. at 1371.

[33, 34] The Supreme Court explainedin Halo:

The principal problem with Seagate’stwo-part test is that it requires a findingof objective recklessness in every casebefore district courts may award en-hanced damages. Such a threshold re-quirement excludes from discretionarypunishment many of the most culpableoffenders, such as the ‘‘wanton and mali-cious pirate’’ who intentionally infringesanother’s patent—with no doubts aboutits validity or any notion of a defense—for no purpose other than to steal thepatentee’s business. Under Seagate, adistrict court may not even consider en-hanced damages for such a pirate, un-less the court first determines that hisinfringement was ‘‘objectively’’ reckless.In the context of such deliberate wrong-doing, however, it is not clear why anindependent showing of objective reck-lessness—by clear and convincing evi-dence, no less—should be a prerequisiteto enhanced damages.

Id. at 1932 (internal citation omitted). Un-der Halo, ‘‘[t]he subjective willfulness of apatent infringer, intentional or knowing,may warrant enhanced damages, withoutregard to whether his infringement wasobjectively reckless.’’ Id. at 1933. TheCourt advised:

[a]s with any exercise of discretion,courts should continue to take into ac-count the particular circumstances ofeach case in deciding whether to awarddamages, and in what amount. Section284 permits district courts to exercisetheir discretion in a manner free fromthe inelastic constraints of the Seagatetest. Consistent with nearly two centu-ries of enhanced damages under patentlaw, however, such punishment should

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generally be reserved for egregiouscases typified by willful misconduct.

Id. at 1933–34. Finally, the Court notedthat the appropriate burden of proof inproving recklessness was preponderance ofthe evidence, not clear and convincing. Id.at 1934.

[35] While the legal standard for ana-lyzing willful infringement has changed inthe course of this litigation, the court neednot apply it to the facts of this case at thistime. Several district courts have foundthat determining the issue of willful in-fringement is more appropriate once thecourt has received findings of fact from thejury as to infringement and validity argu-ments. See, e.g., Fujitsu Ltd. v. BelkinInt’l, Inc., No. 10–CV–03972–LHK, 2012WL 4497966, at *39 (N.D.Cal. Sept. 28,2012) (‘‘While the Court denies Defen-dants’ motion for summary judgment ofinvalidity, the Court recognizes that De-fendants have raised significant invalidityarguments that are worthy of jury consid-erationTTTDefendants’ anticipation and ob-viousness arguments, at this point, turn onquestions of fact for a jury to decideTTTT

the Court determines that it would bemore appropriate to decide the legal issueof willfulness with the benefit of the jury’sfactual findings on anticipation and obvi-ousness.’’); Cook Inc. v. Endologix, Inc.,No. 1:09–CV–01248–TWP, 2012 WL3779198, at *2 (S.D.Ind. Aug. 30, 2012)).The court finds significant logic in such acourse of action and will therefore refrainfrom entering a decision on this issue untilafter the jury has made the requisite fac-tual findings as to the infringement andvalidity arguments presented by the par-ties here. See 01 Communique Lab., Inc. v.Citrix Sys., Inc., No. 1:06–CV–253, 151F.Supp.3d 778, 806-07, 2015 WL 9268913,at *23 (N.D.Ohio Dec. 21, 2015); Fujitsu,2012 WL 4497966, at *39; Cook, 2012 WL3779198, at *2. The court will thereforeDENY without prejudice Defendants’

Motion for Summary Judgment of NoWillful Infringement.

4. Plaintiffs’ Motion for Partial Sum-mary Judgment of No Anticipation of

United States Patent No. 6,547,094

Plaintiffs have moved for partial sum-mary judgment of no anticipation as toboth patents-in-suit.

a. Legal Standards

[36] ‘‘To meet the requirements of pat-entability, an alleged invention must benew.’’ TecSec, Inc. v. Int’l Bus. MachinesCorp., 763 F.Supp.2d 800, 814 (E.D.Va.2011), aff’d, 466 Fed.Appx. 882 (Fed.Cir.2012) (quoting 35 U.S.C. § 102). A patentclaim is not valid if the invention was‘‘patented, described in a printed publica-tion, or in public use, on sale, or otherwiseavailable to the public before the effectivefiling date of the claimed invention.’’ 35U.S.C. § 102(a). ‘‘Invalidity based on lackof novelty (often called ‘anticipation’) re-quires that the same invention, includingeach element and limitation of the claims,was known or used by others before it wasinvented by the patentee.’’ Hoover Groupv. Custom Metalcraft, 66 F.3d 299, 302(Fed.Cir.1995).

[37] A patent is presumed valid, andeach claim of a patent is presumed validindependently of the validity of otherclaims. 35 U.S.C. § 282. Consequently, aparty who would establish a patent’s inval-idity by anticipation shoulders ‘‘an espe-cially heavy burden.’’ Koito Mfg. Co. v.Turn–Key–Tech, LLC, 381 F.3d 1142, 1151(Fed.Cir.2004). To overcome this presump-tion of validity, the patent’s challengermust prove facts supporting a determina-tion of invalidity by clear and convincingevidence. Crown Operations Int’l, Ltd. v.Solutia Inc., 289 F.3d 1367, 1377 (Fed.Cir.2002).


[38–40] Anticipation analysis is a two-step process. The first step is claim con-struction, a question of law for the court.Helifix Ltd. v. Blok–Lok, Ltd., 208 F.3d1339, 1346 (Fed.Cir.2000). ‘‘The secondstep of the process involves a comparisonof the asserted claims with the prior art, afact-finding endeavor for the jury.’’ Free-man v. Gerber Products Co., 269F.Supp.2d 1304, 1307 (D.Kansas 2003) (cit-ing Key Pham. v. Hercon Labs. Corp., 161F.3d 709, 714 (Fed.Cir.1998)). To establishanticipation under § 102, ‘‘every limitationof a claim must identically appear in asingle prior art reference.’’ Diodem LLC v.Lumenis, Inc., 2005 WL 6225366 (C.D.Cali-fornia 2005) (quoting Gechter v. Davidson,116 F.3d 1454, 1457 (Fed.Cir.1997)).‘‘When more than one reference is re-quired to establish unpatentability of theclaimed invention[,] anticipation under§ 102 [cannot] be found.’’ Continental CanCo. v. Monsanto Co., 948 F.2d 1264, 1267(Fed.Cir.1991).

[41–43] To establish anticipation, aparty must show that there is ‘‘no differ-ence’’ between the patented claim and thatwhich is disclosed by the prior art, asviewed by a person of ordinary skill in thefield of invention. Round Rock Research,LLC v. SanDisk Corporation, 75F.Supp.3d 674, 680 (D.Delaware 2014) (cit-ing Scripps Clinic & Research Found. v.Genetech, Inc., 927 F.2d 1565, 1576 (Fed.Cir.1991) (overruled on other grounds)). Ifa prior art reference lacks any claimedelement, then as a matter of law the courtcannot find anticipation. Freeman, 269F.Supp.2d at 1308 (citing Kloster Speed-steel AB v. Crucible, Inc., 793 F.2d 1565,1571 (Fed.Cir.1986), cert. denied, 479 U.S.1034, 107 S.Ct. 882, 93 L.Ed.2d 836 (1987)(overruled on other grounds)). Further,the prior art must disclose all of the claimelements arranged or combined in thesame way as recited in the challengedpatentTTTclearly and unequivocally [dis-closing] the claimed inventionTTTwithout

any need for picking, choosing, [or] com-bining various disclosures not directly re-lated to each other by the teachings of thecited reference.’’ TecSec, Inc. v. Int’l Bus.Machines Corp., 763 F.Supp.2d 800, 814(E.D.Va.2011), aff’d, 466 Fed.Appx. 882(Fed.Cir.2012) (internal citations and quo-tation marks omitted). ‘‘To anticipate, thereference must also enable one of skill inthe art to make and use the claimed inven-tion.’’ Transclean Corp. v. Bridgewood Ser-vices, Inc., 290 F.3d 1364, 1370 (Fed.Cir.2002).

[44–46] A prior art reference may an-ticipate by disclosing claim limitations ei-ther expressly or inherently. Glaxo Inc. v.Novopharm Ltd., 52 F.3d 1043, 1043 (Fed.Cir.1995). Express anticipation is deter-mined by reading the claims ‘‘in the con-text of the patent specification in whichthey arise and in which the invention isdescribed.’’ Glaverbel Societe Anonyme v.Northlake Mktg. & Supply, Inc., 45 F.3d1550, 1554 (Fed.Cir.1995). ‘‘[T]he trier offact must identify the elements of theclaims, determine their meaning in light ofthe specification and prosecution history[,]and identify corresponding elements dis-closed in the allegedly anticipating refer-ence.’’ Lindemann MaschinenfabrikGMBH v. American Hoist and Derrick Co.,730 F.2d 1452, 1458 (Fed.Cir.1984).

[47] A prior art reference may befound to inherently disclose a claim limita-tion if the limitation is ‘‘necessarily present[in the reference] and a person of ordinaryskill in the art would recognize its pres-ence.’’ Crown Operations, 289 F.3d at 1377.‘‘[I]t is not sufficient that a person follow-ing the [prior art] disclosure sometimesobtain the result set forth in the claim, itmust invariably happen.’’ Glaxo, 830F.Supp. at 874. ‘‘[A]n inherent limitation isone that is necessarily present and not onethat may be established by probabilities or


possibilities.’’ Round Rock, 75 F.Supp.3d at681 (D.Delaware 2014).

[48, 49] ‘‘[W]hen the [prior art] refer-ence is silent about an asserted inherentcharacteristic, such [a] gap in the refer-ence may be filled with recourse to extrin-sic evidence. Such evidence must makeclear that the missing descriptive matter isnecessarily present in the thing de-scribed[.]TTTThis modest flexibility in therule that ‘anticipation’ requires that everyelement of the claims appear in a singlereference accommodates situations wherethe common knowledge of technologists isnot recorded in the reference[.]’’ Continen-tal Can, 948 F.2d at 1268. However, inconsidering the anticipatory teaching of areference, extrinsic evidence may only beconsidered when it is used to explain, notexpand, the meaning of a reference. In reBaxter Travenol Labs., 952 F.2d 388, 390(Fed.Cir.1991).

[50, 51] ‘‘Regardless of whether theprior art’s disclosure is asserted to beexpress or inherent, the Federal Circuitteaches that:

Typically, testimony concerning anticipa-tion must be testimony from one skilledin the art and must identify each claimelement, state the [witness’s] interpreta-tion of the claim element, and explain indetail how each claim element is dis-closed in the prior art reference. Thetestimony is insufficient if it is merelyconclusory.It is notTTTTthe task of the districtcourt[ ] to attempt to interpret confusingor general testimony to determinewhether a case of invalidity has beenmade out, particularly at the summaryjudgment stage. Indeed, to accept con-fusing or generalized testimony as evi-dence of invalidity is improper.

Diodem LLC v. Lumenis, Inc., 2005 WL6225366 (C.D.California) (quoting Schumerv. Lab. Computer Sys., 308 F.3d 1304,1315–16 (Fed.Cir.2002)).

[52, 53] Regarding the standards forsummary judgment as to anticipation inthe context of a patent case, ‘‘[a]lthoughanticipation is a question of fact, it stillmay be decided on summary judgment ifthe record reveals no genuine dispute ofmaterial fact.’’ Oney v. Ratliff, 182 F.3d893, 895 (Fed.Cir.1999). Because a patentenjoys a presumption of validity which canbe overcome only by clear and convincingevidence, ‘‘a moving party seeking to havea patent held not invalid at summary judg-ment must show that the nonmoving party,who bears the burden of proof at trial,failed to produce clear and convincing evi-dence on an essential element of a defenseupon which a reasonable jury could invali-date the patent.’’ Eli Lilly, 251 F.3d at 962(emphasis added).

[54, 55] When a party moving for sum-mary judgment on the issue of ‘‘no antici-pation’’ points to the absence of evidenceto support the non-moving party’s case,and the non-moving party produces no evi-dence, the court should grant summaryjudgment to the moving party. Gen–ProbeInc. v. Becton Dickinson and Co., 899F.Supp.2d 971, 983 (S.D.California 2012)(citing Intellicall, Inc. v. Phonometrics,Inc., 952 F.2d 1384, 1389 (Fed.Cir.1992)).Additionally, for a non-moving party toestablish a genuine dispute of material factas to ‘‘no anticipation,’’ the non-movingparty ‘‘is required to do more than estab-lish that the experts disagree.’’ VolterraSemiconductor Corp. v. Primarion, Inc.,796 F.Supp.2d 1025, 1092 (N.D.California2011). Rather, ‘‘an accused infringer mustpoint to sufficient evidence for a reason-able jury to conclude by clear and convinc-ing evidence that the asserted claims areanticipated.’’ Id.

[56] Under Schumer, such clear andconvincing evidence of anticipation mustgenerally consist of expert testimonywhich explains in detail how each claim


element is disclosed in the prior art refer-ence. Schumer, 308 F.3d at 1315–16.Where the party alleging a patent’s inval-idity instead presents expert testimonywhich cites to prior art by setting forthsome but not all claim elements, or whichmakes conclusory statements regardinganticipation, no triable issue of fact there-by arises. See Lucent Technologies, Inc. v.Microsoft Corp. 544 F.Supp.2d 1080, 1092(S.D.California 2008). See also Biotec Biol-ogische Naturverpackungen GmbH & Co.KG v. Biocorp, Inc., 249 F.3d 1341, 1353(Fed.Cir.2001) (upholding summary judg-ment of ‘‘no anticipation’’ where patentchallenger’s expert merely opined that pri-or art anticipated without explaining whyand further holding that it is not the trialcourt’s burden ‘‘to search through lengthytechnologic documents for possible evi-dence.’’)

On the other hand, where a non-movingparty presents an expert who ‘‘quote[s]particular portions of the references that[are] relevant for each of the claim limita-tionsTTT[does] not simply make conclusorystatement[s] that, in his opinion, the claims[are] invalidTTTand for each claim limita-tionTTTconnect[s] it with disclosures in theprior art that he believe[s] [teach] eachparticular limitation,’’ then to the extentthat such assertions conflict with similarlyspecific testimony by the patent holder’sexpert, there exists a triable issue of fact.Medical Instrumentation and DiagnosticsCorp. v. Elekta AB, 344 F.3d 1205, 1220(Fed.Cir.2003).

b. Discussion

Viva moves the court for summary judg-ment that the claims of the ’094 Patent arenot anticipated by prior art. Specifically,Viva asks the court to make a finding of noanticipation as to the following prior artreferences: Thin Walled Injection MoldingStudy: Effect of Melt Temperature onStructure-Property Relationships, an aca-demic study by Troy A. Miller (‘‘Miller’’);

and U.S. Patent No. 5,889,120 (‘‘O’Don-nell’’).

i. O’Donnell

CTL has chosen to forgo arguing thatthe asserted claims of the ’094 Patent areanticipated by prior art reference O’Don-nell. See (Defs.’ Mem. Opp’n (#221) at 7).Accordingly, the court GRANTS Viva’smotion for summary judgment of no antici-pation as to O’Donnell.

ii. Miller

[57] Next, Viva asserts that CTL hasfailed to meet its burden of showing byclear and convincing evidence that claims1-7, 11-15 and 17 of the ’094 Patent areanticipated by Miller. Of these, only claims1 and 11 are independent; the remainingclaims are dependent. A dependent claimrefers back to and further limits anotherclaim in the same patent and must beconstrued to include all the limitations ofthe claim incorporated by reference intothe dependent claim. See 37 C.F.R.§ 1.75(c). If a prior art does not anticipatean independent claim, it cannot, as a mat-ter of law, anticipate associated dependentclaims. Duhn Oil Tool, Inc. v. Cooper Cam-eron Corp., 818 F.Supp.2d 1193, 1220(E.D.California 2011) (citing RCA Corp. v.Applied Digital Data Systems, Inc., 730F.2d 1440 (Fed.Cir.1984)).

[58] Claims 1 and 11 of the ’094 Patentboth describe (1) a process for the manu-facture of flexible, thin-walled articles com-prising the steps of: (2) using a polymerblend; (3) having ‘‘an ESCR as herein de-fined’’ greater than 10 hours; (4) meltingsaid polymer blend; (5) ramming the mol-ten polymer blend into a mold having acavity that produces a thin-walled article(6) having a thin section of 1 mm or less inthickness, the thin section being substan-tially continuous for greater than 50 mm inthe direction of flow of the molten poly-mer; and (7) removing the thin-walled arti-


cle from the mold. Claim 11 also requiresthat the polymer blend include ‘‘at leastone polymer and at least one of a compati-ble agent and a nucleating agent.’’

In its Claim Construction Order, thecourt construed ‘‘an ESCR as herein de-fined’’ to mean ‘‘the ESCR test as definedin column 2, line 62 through column 3, line13 of U.S. Patent No. 6,547,094.’’ ThisESCR test provides a method for identify-ing polymers that can successfully be usedin the invention. Among other limitations,the ‘‘ESCR test as herein defined’’ re-quires that test strips be injection moldedunder ‘‘high shear, long flow length’’ condi-tions similar to those which would also beused in the manufacture of a flexible, thin-walled tube (i.e., the finished product).

In its memorandum of law in support ofsummary judgment, Viva asserts that CTLhas failed to produce evidence sufficient tocreate a triable issue of fact as to whetherMiller teaches (1) the ‘‘high shear, longflow length conditions required by theESCR test’’ and (2) ‘‘a thin-walled articlehaving a thin section of 1 mm or less inthickness, the thin section being substan-tially continuous for greater than 50 mm ina direction of flow of the molten polymer.’’

a. High shear, long flow length condi-tions

Viva argues that Miller does not ex-pressly or inherently disclose high shear,long flow length conditions for the manu-facture of test strips as required by theESCR test ‘‘as herein defined.’’ CTL re-sponds, in part, by questioning whetherthe existence of high shear, long flowlength conditions during the manufactureof test strips is pertinent to an inquiry ofwhether the ’094 Patent has been infringedby CTL or is anticipated by Miller. CTLasserts that ‘‘the claims [of the ’094 Pat-ent] themselves do not require that thefinished product be molded under ‘highshear, long flow’ conditions,’’ and that

therefore the test strips referred to by the‘‘ESCR as herein defined’’ need not existin order for the patent to be practiced orinfringed. Defs.’ Mem. Opp’n (#221) at 9-10. Accordingly, CTL would have the courtfind that Miller can anticipate the ‘‘ESCRas herein defined’’ element of claims 1 and11 of the ’094 Patent without any teachingof high shear, long flow length conditions.

The court, however, is persuaded byViva’s interpretation of ‘‘ESCR as hereindefined’’ to the extent that this claim limi-tation teaches high shear, long flow condi-tions. The ’094 Patent expressly requiresthat test strips be manufactured usinghigh shear, long flow length conditions‘‘similar to those intended for use in themanufacture of the [final product].’’ ’094Patent (#193-1) at 2:67-3:3. In otherwords, after a suitable polymer blend isidentified in ‘‘test strip’’ form, this sameblend is then injection molded under simi-lar conditions to produce the final prod-uct—a tube. Thus, the ’094 Patent wouldseem to teach that both the test strips aswell as the subsequently manufacturedtubes be injection molded under highshear, long flow length conditions.

In any case, CTL has not pointed toopinion evidence from its experts that sup-ports its position that claims 1 and 11 ofthe ’094 Patent do not require the use ofhigh shear, long flow conditions during theinjection molding of either the test stripsor the subsequently manufactured tubes.Viva correctly notes that nowhere in Milleris there any express mention of high shear,long flow length conditions. Therefore,Viva concludes, Miller must either: (1) failto disclose the high shear, long flow lengthlimitation or (2) inherently disclose it. Vivaasserts that none of CTL’s invalidity con-tentions or expert reports explicitly stateswhere in Miller the high shear, long flowlength conditions are inherently disclosed.


For a non-moving party to establish agenuine dispute of material fact as to noanticipation, the non-moving party ‘‘is re-quired to do more than establish that theexperts disagree.’’ Volterra SemiconductorCorp. v. Primarion, Inc., 796 F.Supp.2d1025, 1092 (N.D.California 2011). Rather,with respect to inherent anticipation, thenon-moving party must present evidencethat the challenged claim limitation is‘‘necessarily present [in the prior art refer-ence] and a person of ordinary skill in theart would recognize its presence.’’ CrownOperations, 289 F.3d at 1377. ‘‘[I]t is notsufficient that a person following the [priorart] disclosure sometimes obtain the resultset forth in the claim, it must invariablyhappen.’’ Glaxo, Inc. v. Novopharm, Ltd.,830 F.Supp. 871, 874 (E.D.N.C.1993), aff’d,52 F.3d 1043 (Fed. Cir. 1995).

Here, in lieu of presenting opinion evi-dence from its own experts, CTL seeks tomeet its evidentiary burden by relying onthe opinion of Viva’s expert, Dr. Driscoll.CTL argues that Dr. Driscoll has admittedthat ‘‘injection molding under ‘high shear,long flow’ conditions is inherently re-quired’’ for the manufacture of an articlehaving dimensions matching those de-scribed by the ’094 Patent. Defs.’ Mem.Opp’n (#221) at 10 (citing Driscoll Rep.(#193-9) at ¶¶149-150). Be that at is may,CTL’s task at summary judgment is topresent clear and convincing evidence thatMiller—not the ’094 Patent—teaches suchconditions. Even if CTL were to establishthat the articles manufactured in Millerprecisely matched the dimensional andflow direction limitations required bythe ’094 Patent, Dr. Driscoll’s purported‘‘admission’’ would not, by itself, be enoughfor CTL to show that the high shear, longflow conditions were necessarily present inMiller. Dr. Driscoll’s rebuttal report ex-plicitly disputes CTL’s assertion that thearticles manufactured in Miller were sub-ject to high shear, long flow conditions.See Driscoll Reb. Rep. (#193-10) at ¶¶116-

125. Specifically, Dr. Driscoll notes thatthe two-second fill time and the nine-ounceinjection molding machine used by Millerwould not be sufficient to produce highshear, long flow length conditions. Id. at¶¶124-125. CTL has presented no experttestimony which can be interpreted as re-futing this assertion by Dr. Driscoll.

At best for CTL, Dr. Driscoll’s opinionson this particular issue are contradictory.The court finds that by failing to point toany testimony from its own expert whichspecifically states where in Miller the highshear, long flow length conditions are ex-pressly or inherently disclosed, CTL hasfailed to meet its evidentiary burden. Theseemingly contradictory testimony ofViva’s expert does not constitute clear andconvincing evidence by which a reasonablejury could conclude that Miller inherentlydiscloses high shear, long flow length con-ditions. As the Federal Circuit noted inSchumer,

[t]ypically, [expert] testimony concern-ing anticipationTTTmust identify eachclaim element, state the [witness’s] in-terpretation of the claim element, andexplain in detail how each claim elementis disclosed in the prior art refer-enceTTTTIt is notTTTthe task of the dis-trict court[ ] to attempt to interpretconfusing or general testimony to deter-mine whether a case of invalidity hasbeen made out, particularly at the sum-mary judgment stage. Indeed, to acceptconfusing or generalized testimony asevidence of invalidity is improper.

Id. at 1315–16 (internal citations and quo-tation marks omitted).

In order to survive Viva’s motion forsummary judgment, CTL must presentclear and convincing evidence that eachand every limitation of claims 1 and 11 ofthe ’094 Patent are disclosed by Miller.Because CTL has failed to establish a tri-able issue of fact with respect to whether


Miller discloses high shear, long flowlength conditions as required by the‘‘ESCR as herein defined,’’ the court findsas a matter of law that Miller does notanticipate the ’094 Patent.

b. Dimensional and flow direction re-quirements

In its Summary Judgment Motion, Vivaalso argues that neither CTL’s InvalidityContentions nor its expert reports specifi-cally identify where Miller teaches the in-jection molding of an article ‘‘having a thinsection of 1mm or less in thickness, thethin section being substantially continuousfor greater than 50 mm in a direction offlow of the molten polymer blend in themold.’’ Viva asserts that CTL instead re-lies (improperly) on supplemental refer-ence Jacobs WO ’024 to show that thedimensional and flow direction limitationsof the ’094 Patent are inherently disclosedby Miller. Viva also argues that CTL isprocedurally barred from arguing thatFigure 1 of Miller discloses the requisitedimensional and directional limitations be-cause Figure 1 was not identified as thesource of these limitations in CTL’s inval-idity contentions or its expert charts.

While the court has considered the argu-ment, because Viva’s partial motion forsummary judgment succeeds due to CTL’sfailure to present clear and convincing evi-dence that Miller teaches high shear, longflow length conditions, it is unnecessaryfor the court to address the parties’ argu-ments regarding the dimensional andmono-directional flow limitations. Like-wise, the court declines to rule on therelated issues of whether it was proper forCTL and its expert Dr. Osswald to rely onsupplemental reference Jacobs WO ’024and whether CTL is procedurally barredfrom arguing that Figure 1 of Miller ex-pressly discloses the dimensional and flowdirection limitations.

c. Conclusion

For the reasons stated herein, the courtwill GRANT Plaintiffs’ Motion for PartialSummary Judgment of No Anticipation asto claims 1-7, 11-15 and 17 of the ’094Patent.

5. Plaintiffs’ Motion for Partial Sum-mary Judgment of No AnticipationOf United States Patent No. 8,518,-318

Viva asserts that CTL has failed to meetits burden of showing by clear and con-vincing evidence that claims 4-5, 8 and 10-12 of the ’318 Patent are anticipated. Spe-cifically, Viva asks the court to find onsummary judgment that (1) claims 4-5, 8,and 10-12 are not anticipated by prior artreference Jacobs WO ’409, which is thepublication of PCT application PCT/AU98/00255 that eventually matured intothe ’094 patent-in-suit, and (2) claims 5 and10-12 are not anticipated by U.S. PatentNo. 6,159,566 (‘‘Barre’’).

With regards to anticipation by JacobsWO ’409 of claims 8, 10, and 11 and antici-pation by Barre of claims 5, 10, and 11,CTL has chosen to forego argument. Ac-cordingly, the court GRANTS Viva’s par-tial motion for summary judgment thatclaims 8, 10 and 11 are not anticipated byJacobs WO ’409 and claims 5, 10 and 11are not anticipated by Barre.

Thus, what remains in dispute is wheth-er claims 4, 5 and 12 are anticipated byJacobs WO ’409 and whether claim 12 isanticipated by Barre.

a. Jacobs WO ’409

Of the ’318 Patent claims at issue, claim4 depends from claim 1; claim 5 dependsfrom claim 4; and claim 12 depends fromclaim 1. Claim 1 describes ‘‘[a] process forthe manufacture of flexible thin-walled ar-ticles including: injection molding a blendof (a) at least one polymer and (b) at least


one high melt flow compatible polymerhaving an MFI of greater than 100.’’

i. Claim 4

Claim 4 describes a process ‘‘accordingto claim 1, wherein at least one of (a) and(b) includes a polymer formed using ametallocene or similar catalyst system.’’Thus, to survive summary judgment as tono anticipation of claim 4, CTL must pres-ent clear and convincing evidence that Ja-cobs WO ’409 discloses each and everylimitation of both claim 1 and claim 4. 37C.F.R. § 1.75(c).

Viva does not contest CTL’s assertionthat claim 1 of the ’318 Patent is anticipat-ed by Jacobs WO ’409 but rather focusesits argument on the additional ‘‘metallo-cene’’ limitation found in claim 4. Specifi-cally, Viva asserts that CTL has failed toidentify, both in their invalidity conten-tions and expert reports, any ‘‘single em-bodiment or combination of directly relat-ed embodiments in Jacobs WO ’409 thatteaches both the metallocene catalyzedpolymer and a high MFI compatible poly-mer [as required by claim 1].’’ Pls.’ Mem.Supp. (#199) at 12. Instead, Viva argues,‘‘Defendants merely allege that [JacobsWO ’409 at 6:21-23] teaches the metallo-cene catalyzed polymer limitation of claim4. Defendants do not show that this disclo-sure teaches the high MFI compatiblepolymer limitation required by claim 1.Nor do Defendants show how the disclo-sure [at 6:21-23] is related to Example 1(which Defendants allege teaches the limi-tations of claim 1) such that combining thetwo would be appropriate.’’ Id.

In response, CTL argues that JacobsWO ’409 provides ‘‘general teaching’’ re-garding the use of polymers formed usinga metallocene or similar catalyst system.This general teaching, found in JacobsWO ’409 at 6:21-23, provides that a widevariety of polymers may be suitable foruse in the invention, including those which‘‘may be made by a wide variety of meth-

ods including high and low pressure pro-cesses, using a wide variety of catalystssuch as Ziegler-Natta and metallocenes.’’Jacobs WO ’409 (#193-25) at 6:21-23. BothCTL’s invalidity charts and the invaliditycharts created by its expert, Dr. Osswald,identify this language from Jacobs WO’409 at 6:21-23 as the location where themetallocene catalyst limitation of claim 4 isdisclosed by the prior art.

However, in its memorandum of law inopposition to Viva’s partial motion for sum-mary judgment, CTL seems to concedethat this language, considered alone, is notsufficient to anticipate claim 4. Rather,CTL asserts that ‘‘[t]hese teachings, whencombined with Jacobs WO ’409’s teachingson ‘compatibility’ and the use of [a particu-lar polymer called] Exact 4038 in Exam-ples 1-3 [of Jacobs WO ’409,] teach eachand every element of claim 4 of the ’318Patent.’’ Defs.’ Mem. Opp’n. (#222) at 9(emphasis added). Alternatively, CTL sug-gests that the court ‘‘need not even rely oncombination of elements within the four-corners of Jacobs WO ’409 to find that itanticipates Claim 4TTT[because] Examples1-3TTTTteach the use of Exact 4038, a 125MFI polymerTTT[which] is ‘a semicrystal-line ethylene-butene copolymer made byusing a metallocene catalyst.’’ Id. In otherwords, CTL argues, the use of Exact 4038in Examples 1-3 inherently discloses eachand every limitation of claims 1 and 4.

Thus, CTL expressly relies on the factthat Exact 4038, as used in Examples 1-3of Jacobs WO ’409, is manufactured usinga metallocene catalyst in order to showthat claim 4 is anticipated. However, CTLdoes not point to any statement by any ofits experts which establishes that Exact4038 is in fact manufactured using a metal-locene catalyst. Instead, the quotation inthe preceding paragraph which declaresExact 4038 to possess this characteristic isfound in an unrelated patent for a ‘‘hot


melt adhesive,’’ the inventors of which arenot involved in this case and may or maynot be experts about metallocene catalysts.See U.S. Patent No. 6,143,818 (#227-30) at10:44-49. CTL’s expert, Dr. Cakmak, citesto lines 10:44-49 of this unrelated patent tosupport his expert opinion that ‘‘Exact4038 is a poly(ethylene-co-1-butene) whichis an ‘‘ultra low density, very low density,low density, medium density and high den-sity polyethylene and copolymers thereof.’’Cakmak Rep. (#193-3) at ¶ 86. Dr. Cak-mak does not expressly reference the briefmention of metallocene catalysts in PatentNo. 6,143,818 and nowhere else does Dr.Cakmak opine that Exact 4038 is manufac-tured using a metallocene catalyst.

Even if the court found that, throughthis tenuous reference to an unrelated pat-ent, CTL had presented clear and convinc-ing evidence that Exact 4038 is manufac-tured using a metallocene catalyst, the factremains that none of CTL’s expert reportsidentify the use of Exact 4038 in Examples1-3 as the portion of Jacobs WO ’409where claim 4 is anticipated. Rather, thisparticular argument is made by CTL’s at-torneys in their opposition brief.

[59] As a sister court recently noted,‘‘the field of polymer chemistry is a com-plex area of technology, and where patentclaims involve complex issues of technolo-gy, expert testimony is required to aid thefact finder.’’ INVISTA North AmericaS.jA.R.L. v. M & G USA Corporation, 951F.Supp.2d 626 (D.Delaware 2013) (furtherholding that where defendant disclosed aparticular obviousness argument for thefirst time during summary judgment brief-ing, and this argument was unsupportedby expert testimony, defendant could notcarry its burden of presenting clear andconvincing evidence).

This court hereby finds that no reason-able jury could find that CTL has shownby clear and convincing evidence thatclaim 4 of the ’318 Patent is anticipated by

the ‘‘general teaching’’ in Jacobs WO ’409,where such teaching states that polymersmade using metallocene catalysts—amonga variety of other suitable polymers—maybe used in the claimed injection moldingprocess.

Furthermore, CTL has failed to presentexpert testimony or reports that show byclear and convincing evidence that Exact4038, as used in Examples 1-3, is manufac-tured using a metallocene catalyst. Andfinally, this court finds that CTL has failedto present an expert opinion that explainshow the use of Exact 4038 in combinationwith the ‘‘general teaching’’ of metallocenecatalysts in Jacobs WO ’409 discloses eachand every limitation of claim 4. Instead,Dr. Osswald’s invalidity chart simply men-tions the ‘‘general teaching,’’ and his ex-pert report makes no mention of metallo-cene catalysts.

Because CTL has failed to point to spe-cific factual allegations such that a reason-able jury could find by clear and convinc-ing evidence that claim 4 of the ’318 Patentis anticipated by Jacobs WO ’094, the courtGRANTS Viva’s partial motion for sum-mary judgment that claim 4 is not antici-pated.

ii. Claim 5

Claim 5 of the ’318 Patent depends fromclaim 4, which in turn depends from claim1. A dependent claim refers back to andfurther limits another claim in the samepatent and must be construed to includeall the limitations of the claim incorporatedby reference into the dependent claim. See37 C.F.R. § 1.75(c). Therefore, in order forCTL to defeat Viva’s motion for summaryjudgment of no anticipation as to claim 5,CTL must once again present clear andconvincing evidence that Jacobs WO ’409discloses each and every limitation ofclaims 1 and 4. As discussed above, CTLhas failed to meet this evidentiary burden.CTL has failed to present sufficient expert


testimony to create a triable issue of factas to whether claim 4 is anticipated byJacobs WO ’409. Therefore, the courtGRANTS Viva’s partial motion for sum-mary judgment that claim 5 is not antici-pated.

iii. Claim 12

Claim 12 of the ’318 Patent dependsfrom claim 1. Viva has declined to arguethat claim 1 is not anticipated by JacobsWO ’409 and instead asserts that CTL hasfailed to present clear and convincing evi-dence of ‘‘any single embodiment’’ in theprior art that teaches each limitation ofclaims 1 and 12. Claim 12 teaches theinjection molding process ‘‘according toclaim 1, wherein the flexible thin-walledarticle is a tube.’’

Both in its invalidity charts and in theexpert charts created by Dr. Osswald,CTL identifies language at 1:3-5 in JacobsWO ’409 as disclosing the ‘‘tube’’ limitationrequired by claim 12. On the first page ofthe prior art, under a heading which reads‘‘Injection Molding,’’ lines 3-5 state that‘‘[t]he present invention relates to injectionmolding processes, in particular to a pro-cess for injection molding articles havingthin sections such as thin-walled tubularcontainers as used in the cosmetics indus-try for lotions, moisturizers and the like.’’Jacobs WO ’409 (#193-25) at 1:3-5. Theprior art goes on to explain, generally, theprocess by which thin-walled tube manu-facturing takes place, the relative benefitsof injection molding such tubes, difficultiesassociated with producing such injectionmolded tubes, and the purported advancethat the claimed invention brings to thefield of thin-walled tube manufacturing.Jacobs WO ’409 at 1-3.

[60] The court finds that there is, atthe least, a genuine dispute of materialfact as to whether the language at 1:3-5 inJacobs WO ’409, which was cited by CTLand Dr. Osswald in their invalidity charts,teaches that the injection molding process

disclosed in that prior art should be prac-ticed specifically for the manufacture oftubes. A reasonable jury could find thatCTL has shown by clear and convincingevidence that claim 1 is anticipated by the‘‘process for injection molding arti-clesTTTsuch as thin-walled tubular contain-ers’’ which is referred to at lines 3-5 andtaught in more precise detail elsewhere inthe prior art. Dr. Osswald identifies themore precise teaching of claim 1 in hisinvalidity chart. Likewise, a reasonablejury could find that this same languageteaches the manufacturing of thin-walledtubes.

Accordingly, the Court DENIES Viva’spartial motion for summary judgment ofno anticipation by Jacobs WO ’409 as toclaim 12 of the ’318 Patent.

b. Barre

U.S. Patent No. 6,159,566 (‘‘Barre’’)teaches the manufacture of a ‘‘flexiblepackageTTTmade of plastic’’ which ‘‘can bean injection-molded tubeTTTsuitable forthe packaging of small volumes of cosmeticand/or dermatological products.’’ BarreAbstract (#193-24). Viva moves the courtfor summary judgment that Barre doesnot anticipate claims 5 and 10-12 ofthe ’318 Patent. CTL does not opposeViva’s motion as to claims 5, 10 and 11.Therefore, the lone claim which must besubjected to anticipation analysis is claim12.

As they did with regard to the JacobsWO ’409 prior art, Plaintiffs here arguethat CTL has failed to produce clear andconvincing evidence showing ‘‘any singleembodiment or combination of directly re-lated embodiments’’ in Barre which dis-close each and every limitation of claims 1and 12. Pls.’ Mem. Supp. at 22. As withJacobs WO ’409, Viva declines to arguethat Barre does not anticipate claim 1.

In its invalidity charts and its expertinvalidity charts, CTL identifies the ab-stract and lines 3:10-12 of Barre as the


locations where this prior art discloses thelimitations of claim 12. The abstract broad-ly states that the manufacturing processclaimed is used for the creation of a ‘‘pack-age’’ which ‘‘can be an injection-moldedtube.’’ Barre Abstract (#193-24). Immedi-ately below this language there is a graph-ic depicting a tube. Lines 3:10-12 indicatethat the tubes which are to be createdusing the claimed process are thin-walled,being between .2 mm and 1.0 mm in thick-ness.

[61] The court finds that there is, atthe least, a genuine dispute of materialfact as to whether the language in Barrecited by CTL and Dr. Osswald teaches themanufacture of tubes using the injectionmolding process described in claim 1. Areasonable jury could find by clear andconvincing evidence that claim 1 is antici-pated by language in the Barre Abstractthat describes a ‘‘method for producing the[flexible plastic] package by injection mold-ing the [plastic] blend in a suitable mold’’which ‘‘can be an injection molded tube,’’where the process this language refers tois taught in more precise detail elsewherein the prior art and identified as such byDefendants’ expert. See Osswald Rep.(#193-5) at Exhibit J-1. Likewise, a rea-sonable jury could find that this same lan-guage teaches the manufacturing of tubes.

Therefore, the court DENIES Viva’spartial motion for summary judgment ofno anticipation by Barre as to claim 12 ofthe ’318 Patent.

(c) Conclusion

For the reasons stated herein, the courtwill GRANT Plaintiffs’ Motion for PartialSummary Judgment of No Anticipation byJacobs WO ’409 as to claims 4-5, 8, and 10-11 of the ’318 Patent; GRANT Plaintiff’sMotion for Partial Summary Judgment ofNo Anticipation by Barre as to claims 5,10, and 11; and DENY Plaintiffs’ Motionfor Partial Summary Judgment of No An-

ticipation by Jacobs WO ’409 and Barre asto claim 12.

IV. CONCLUSION

For the reasons explained herein, thecourt will term the motions as stated be-low, and therefore enters the followingOrder.

ORDERIT IS, THEREFORE, ORDERED that

the following Motions are termed as fol-lows:

1. Defendants’ Motion for SummaryJudgment as to Indefiniteness(#178) is DENIED without preju-dice;

2. Defendants’ Motion for SummaryJudgment as to Lack of Enablement(#180) is DENIED without preju-dice;

3. Defendants’ Motion for SummaryJudgment of No Willful Infringe-ment (#182) is DENIED withoutprejudice;

4. Plaintiffs’ Motion for Partial Sum-mary Judgment of No Anticipation ofUnited States Patent No. 6,547,094(#196) is GRANTED;

5. Plaintiffs’ Motion for Partial Sum-mary Judgment of No AnticipationOf United States Patent No. 8,518,-318 (#198) is GRANTED in partand DENIED in part, as explainedherein;

6. Defendants’ Motion to Exclude Cer-tain Opinions by Expert Witness Ste-phen Driscoll (#184) is DENIED;

7. Defendants’ Motion to Exclude Cer-tain Testimony of Expert Dr. MichaelRubinstein (#186) is DENIED;

8. Plaintiffs’ Motion to Exclude CertainPurported Expert Testimony of TimOsswald and Mukerrem Cakmak(#190) is GRANTED in part andDENIED in part, as explained here-in;


9. Plaintiffs’ Motion to Exclude Purport-ed Expert Testimony of CynthiaSmith (#203) is DENIED withoutprejudice; and

10. Plaintiffs’ Motion to Exclude Pur-ported Expert Testimony of CynthiaSmith and Tim Osswald (#208) isDENIED.

,

MINNESOTA LAWYERS MUTU-AL, INSURANCE CO., Plain-

tiff/Counter-Defendant,

v.

PROTOSTORM, LLC, et al.,Defendants/Counterclaimants.

1:15-cv-1485 (JCC/JFA)

United States District Court,E.D. Virginia,

Alexandria Division.

Signed 06/22/2016

Background: Professional liability insurerbrought action against insured law firm,seeking a declaratory judgment that itsindemnification obligation for an underly-ing malpractice lawsuit was limited to $5million. Insured counterclaimed, seeking adeclaration that insurer was liable for $10million. Parties cross-moved for summaryjudgment.

Holding: The District Court, James C.Cacheris, J., held that policy’s $5 millionlimit of liability applied.

Insurer’s motion granted and insured’smotion denied.

1. Insurance O1813Virginia courts interpret insurance

policies, like other contracts, in accordancewith the intention of the parties gleanedfrom the words they used in the document.

2. Insurance O1810When considering the meaning of any

phrase or clause within a policy, a Virginiacourt should construe the contract as awhole.

3. Insurance O1809, 1822Under Virginia law, if the terms of a

policy are plain and clear, a court mustadhere to those terms and give them theirplain meaning.

4. Insurance O1832(1)If policy language is ambiguous, rath-

er than clear, a Virginia court must con-strue the policy against the insurer.

5. Insurance O1808, 1827Under Virginia law, the mere fact that

the parties dispute the meaning of policylanguage does not itself render the policyambiguous, and courts must not strain tofind ambiguities.

6. Insurance O1808An ambiguity exists under Virginia

law when a policy provision can reasonablyhave more than one meaning given itscontext, when two constructions are equal-ly possible, or when reasonable personscould reach reasonable, but opposite, con-clusions based on the policy’s language.

7. Insurance O2268Under Virginia law, unlike the duty to

defend, which is based on the allegations inthe underlying complaint, the duty to in-demnify relies on litigated facts.

8. Insurance O2268In evaluating whether an insurer has

a duty to indemnify under Virginia law, acourt must look to the underlying proceed-ings, the trial transcript, and the jury ver-dict to determine the facts actually discov-ered or proven.

9. Insurance O2266, 2281(1)Under Virginia law, underlying mal-

practice judgment against insured law firm

viva healthcare packaging usa v. ctl packaging …...viva healthcare packaging usa v. ctl packaging...

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