Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp.
63 F. Supp. 3d 786
W.D. Tenn.2014Background
- Multilayer sued Berry for infringement of U.S. Patent No. 6,265,055 (the '055 Patent), which claims a seven-layer multilayer stretch film (two outer layers and five inner layers) with each layer selected from a closed Markush group of four resin classes and requiring each adjacent layer to have different compositional properties.
- Judge McCalla construed the Markush limitation as a closed "consisting of" group: each inner layer must contain only one of the specified resin classes (LLDPE, VLDPE, ULDPE, or mLLDPE) and rejected blends of those listed classes.
- Judge McCalla also construed "LLDPE" broadly by reference to branching architecture (short-chain branching, little/no long-chain branching), a definition that can encompass mLLDPE, VLDPE, and ULDPE in some contexts.
- Berry moved for summary judgment of noninfringement, contending the accused films' inner layers contain blends of resins (e.g., mLLDPE+LLDPE; ULDPE+LLDPE), which the closed Markush group forbids.
- Multilayer argued (1) factual disputes remain whether the accused resins all fall within the single LLDPE class as construed, so they are not "blends," and (2) the motion is premature because claim construction was not fully final and expert discovery was incomplete.
- The court found discovery sufficient, treated Judge McCalla's constructions as controlling for this motion, concluded the accused films contain prohibited blends, and granted Berry summary judgment of noninfringement.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether accused films infringe given closed Markush group for inner layers | Resins in accused layers can all be characterized as LLDPE under the Markman LLDPE definition, so combinations do not constitute forbidden "blends" | Accused layers indisputably contain blends of separately listed resin classes (e.g., mLLDPE, LLDPE, ULDPE), and the closed Markush forbids mixtures | Court: No infringement — closed Markush forbids blends; accused films fail to meet claim element requiring each inner layer be a single specified class |
| Whether summary judgment was premature due to incomplete claim construction or outstanding expert discovery | Motion premature: final Markman order not entered on one term; expert discovery incomplete; Berry uncooperative in discovery | All terms relevant to this motion were already construed; Multilayer had notice and opportunity; discovery was sufficient for the motion | Court: Motion ripe; relied on existing Markman constructions and denied prematurity objection |
| Whether permitting Multilayer's alternate reading (treat all resins as a single class) would save infringement | The broad LLDPE construction means listed resins fall within one class, so combinations are permissible | Such a reading conflicts with Markush "consisting of" limitation and the claim language | Court: That alternative reading would render claims indefinite; court declines to adopt it and instead enforces closed Markush |
| Whether the claims are indefinite under Multilayer's alternative reading | Multilayer: Broad reading avoids indefiniteness and captures accused films | Berry: Broad reading would create vagueness and fail §112(b) definiteness requirement | Court: Agrees that Multilayer's broad reading would risk indefiniteness under Nautilus, but does not invalidate claims because it enforces the Markush construction and resolves noninfringement on that basis |
Key Cases Cited
- Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264 (Fed. Cir. 1991) (summary judgment is available in patent cases)
- Markman v. Westview Instruments, Inc., 517 U.S. 370 (U.S. 1996) (claims construction is a question of law for the court)
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (U.S. 2014) (patent claims must inform those skilled in the art of the scope with reasonable certainty)
- Stewart-Warner Corp. v. City of Pontiac, Mich., 767 F.2d 1563 (Fed. Cir. 1985) (to infringe, accused device must embody every claim element)
- Celotex Corp. v. Catrett, 477 U.S. 317 (U.S. 1986) (summary judgment standard and burden)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (U.S. 1986) (genuine dispute standard for summary judgment)