Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp.
831 F.3d 1350
Fed. Cir.2016Background
- Multilayer sued Berry for infringement of U.S. Patent No. 6,265,055, which claims multilayer thermoplastic stretch-wrap films with two outer layers and five compositionally distinct inner layers.
- Claim 1 lists a Markush group for each inner layer: LLDPE, VLDPE, ULDPE, and mLLDPE (language uses "selected from the group consisting of"). Claim 28 similarly requires at least one inner layer be mLLDPE; dependent claim 10 adds an inner-layer limitation to LDPE.
- The district court construed the inner-layer Markush group as closed to unlisted resins (e.g., LDPE) and as prohibiting blends of listed resins within a single layer; it invalidated claim 10 under 35 U.S.C. § 112(d) and later granted Berry summary judgment of noninfringement.
- On appeal, the Federal Circuit agreed the Markush group is closed to unrecited resins (so claim 10 is invalid) but reversed the prohibition on blends of the four listed resins, holding the claim permits blends of LLDPE, VLDPE, ULDPE, and mLLDPE.
- The court vacated the summary judgment of non-infringement and remanded for further proceedings under the corrected construction; it affirmed denial of Rule 11 sanctions against Multilayer.
Issues
| Issue | Plaintiff's Argument (Multilayer) | Defendant's Argument (Berry) | Held |
|---|---|---|---|
| Whether the Markush group in element (b) is closed to unrecited resins (e.g., LDPE) | The specification and dependent claims show the patentee intended to permit other resins (LDPE) in inner layers | "Consisting of" in the claim language creates a closed Markush group excluding unlisted resins | Closed to unrecited resins; court affirms exclusion (claim 10 invalid) |
| Whether the Markush group is closed to blends/combinations of the listed resins within a single inner layer | The patent repeatedly describes blending and includes dependent claim 24 referring to blends; overlapping taxonomy (mLLDPE ⊂ LLDPE) supports blends | Abbott presumption: a "selected from the group consisting of" Markush group excludes mixtures unless expressly opened | Open to blends of the listed resins; court reverses district court’s no-blend construction |
| Effect of claim construction on summary judgment of non-infringement | Construction should permit blends; summary judgment premature or wrong if blends allowed | Accused films contain blends; under district construction no infringement as a matter of law | District court’s summary judgment vacated and remanded for proceedings under the correct blend-permitting construction |
| Berry’s request for Rule 11 sanctions against Multilayer | Multilayer’s pre-suit and litigation positions were frivolous (esp. asserting an open meaning for "consisting of") | Positions were reasonable given close claim-construction questions | Denial of Rule 11 sanctions affirmed; constructions were not frivolous |
Key Cases Cited
- Abbott Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d 1274 (Fed. Cir.) (presumption that Markush "selected from the group consisting of" excludes mixtures)
- AFG Indus., Inc. v. Cardinal IG Co., Inc., 239 F.3d 1239 (Fed. Cir.) ("consisting of" is a closed transitional term excluding unrecited elements)
- Conoco, Inc. v. Energy & Envtl. Int’l, 460 F.3d 1349 (Fed. Cir.) (patentee can define terms atypically but must unmistakably do so in intrinsic evidence)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (claims construed in view of specification, prosecution history, and intrinsic evidence)
- Norian Corp. v. Stryker Corp., 363 F.3d 1321 (Fed. Cir.) (explaining "consisting of" as conventional limiting language)
- Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284 (Fed. Cir.) (dependent-claim limitation that contradicts independent claim can render dependent claim invalid)