MeadWestVaco Corp. v. Rexam Beauty & Closures, Inc.
731 F.3d 1258
| Fed. Cir. | 2013Background
- MWV sued Valois and Rexam for infringing the ’819 and ’132 patents related to invisible dip tubes in perfume dispensers.
- The district court construed seven terms, including quenched, transparency, XRD crystallinity, and crystalline content.
- The district court granted MWV summary judgment of nonobviousness and denied motions of indefiniteness by Rexam and Valois.
- A thirteen-day bench trial found non-fringement of fragrance-specific claims and infringement of generic dispenser claims; MWV obtained a permanent injunction.
- Rexam and Valois appealed challenging obviousness, claim constructions, infringement proof, and indefiniteness waiver.
- On appeal, the Federal Circuit vacated the nonobviousness grant, affirmed constructions and infringement, and remanded; it held indefiniteness was waived.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Obviousness: error in grantingsummary judgment? | MWV argued district court erred by not recognizing facts favoring nonobviousness. | Valois/Rexam argued proper Graham factors supported nonobviousness. | Remanded for trial on obviousness. |
| Quenched: proper claim construction? | MWV contends quenched means rapidly cooled, not limited to immersion. | Valois argues quenched requires immersion cooling. | Quenched construed as rapidly cooled; air cooling within scope. |
| Infringement: XRD crystallinity testimonies adequate? | MWV contends expert testimony supports infringement under claim terms. | Rexam argues testimony deviates from claim parameters and is invalid. | Infringement supported; expert testimony upheld. |
| Transparency: proper construction and infringement? | MWV argues ordinary plain meaning; district court’s definition is correct. | Valois urges narrower, art-specific definition. | Plain meaning adopted; no reversible error in infringement. |
| Indefiniteness waiver: Did parties waive? | MWV argued indefiniteness should be decided at trial. | Valois/Rexam asserted indefiniteness at summary judgment stage. | Indefiniteness waived; not properly reviewable on appeal. |
Key Cases Cited
- Graham v. John Deere Co., 383 U.S. 1 (1966) (obviousness framework and secondary considerations)
- Ortho Pharm. Corp. v. Smith, 959 F.2d 936 (Fed. Cir. 1992) (claims must be evaluated claim-by-claim for invalidity)
- Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310 (Fed. Cir. 2008) (fact-specific evaluation of obviousness evidence)
- Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296 (Fed. Cir. 2010) (reversal of summary judgment where factual disputes exist)
- Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008) (definiteness and claim construction principles)
- Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371 (Fed. Cir. 2001) (definiteness not based on infringer’s ability to design around)