E.I. DU PONT DE NEMOURS & COMPANY, Plaintiff-Appellee
UNIFRAX I LLC, Defendant-Appellant
from the United States District Court for the District of
Delaware in No. 1:14-cv-01250-RGA, Judge Richard G. Andrews.
Christopher Landgraff, Bartlit Beck LLP, Chicago, IL, argued
for plaintiff-appellee. Also represented by Sharon Desh, Mark
M. Holdreith, Robins Kaplan LLP, Minneapolis, MN, argued for
defendant-appellant. Also represented by Brenda L. Joly,
David Allen Prange.
O'Malley, Reyna, and Hughes, Circuit Judges.
appeal arises from a patent infringement suit filed in the
U.S. District Court for the District of Delaware.
Defendant-Appellant Unifrax I LLC appeals from the district
court's claim construction and denial of its motions for
judgment of non-infringement and invalidity as a matter of
law after a jury found that Unifrax I LLC's flame barrier
product infringed the asserted patent and that Unifrax I LLC
failed to prove the asserted patent was invalid. Because the
district court correctly construed "100% by weight"
and substantial evidence supports the jury's verdict, we
Patent No. 8, 607, 926 ("the '926 patent"),
entitled "Composite Flame Barrier Laminate for a Thermal
and Acoustic Insulation Blanket," issued on December 17,
2013. The '926 patent claims composite laminates that are
incorporated into thermal-acoustic blankets installed on the
interior of the fuselage in aircraft to shield passengers
from flames and reduce noise. The laminates claimed in the
'926 patent have three layers of materials: (1) a
polymeric film layer; (2) an inorganic refractory layer; and
(3) an adhesive layer between the film and refractory layer.
'926 patent col. 1 ll. 48-51; col. 9, ll. 6-17 (claim 1);
Fig. 1. The '926 patent lists Drs. Llewellyn Bentley
("Ley") Richardson, III, and Darisuz Wlodzimierz
Kawka of E.I. du Pont de Nemours & Company
("DuPont") as inventors.
application that led to the '926 patent was filed on
December 14, 2011, as a continuation-in-part of the
application that led to U.S. Patent No. 8, 292, 027
("the '027 patent"). The parent '027 patent
claims a polymeric film layer and an inorganic refractory
layer but not an adhesive layer. The '027 patent also
names Dr. Richardson as an inventor but does not name Dr.
primary dispute in this case concerns the "inorganic
refractory layer," which generally consists of
"vermic-ulite platelets" that come from the natural
mineral vermiculite. Claim 1 of the '926 patent-the only
independent claim at issue-recites the following:
1. A multilayer laminate for use as a flame barrier layer for
an aircraft comprising in order (i) a polymeric film layer
capable of withstanding a temperature of at least 200 C for
at least 10 min[;]
(ii) an adhesive layer having an areal weight of from 2 to 40
gsm capable of activation at a temperature of from 75 to 200
degrees C[;] and
(iii) an inorganic refractory layer; wherein the inorganic
refractory layer of (iii) comprises platelets in an amount of
100% by weight with a dry areal weight of 15 to 50
gsm and a residual moisture content of no greater than 10
percent by weight.
Id. col. 9 ll. 6-17 (emphasis added). The three
layers comprising the claimed multilayer laminate are
depicted in the '926 patent in Figure 1:
Fig. 1. "Fig. 1 shows a section through a burnthrough
resistant composite laminate 10 comprising a polymeric film
layer 11, an adhesive layer 12 and an inorganic refractory
layer 13." Id. col. 111. 48-50. The inorganic
refractory layer is made by pouring a "dispersion"
including vermicu-lite platelets suspended in water onto a
flat surface and then drying. Adding "dispersants"
(e.g., tetrasodium pyrophosphate) to the dispersion can
change the viscosity of the solution and improve how evenly
the dispersion spreads and the quality of the coating when
the dispersion dries. The parties dispute what constitutes a
dispersant in several instances, but there is no dispute that
tetrasodium pyrophosphate, a sodium phosphate salt, is an
example of a dispersant. Appellee Br. 11.
sued Unifrax I LLC ("Unifrax") for patent
infringement on October 1, 2014, in the District of Delaware.
DuPont alleged that Unifrax infringed claims 1, 2, and 5 of
the '926 patent by making and selling a flame barrier
product called FyreWrap® Combi-Film 3G11
("Combi-Film 3G11"). The case proceeded to a jury
trial in May 2017. The district court charged the jury with
an invention date instruction because DuPont argued the
inventors conceived of the invention of the '926 patent
and reduced it to practice before the public use date of one
of Unifrax's asserted prior art references.
jury found that the Combi-Film 3G11 product infringes the
'926 patent and that the asserted claims were not
invalid. Unifrax moved for judgment of non-infringement and
invalidity as a matter of law. The court denied Unifrax's
motions, finding that legally sufficient evidence supported
the jury's verdicts of infringement and no anticipation
or obviousness. J.A. 41-43.
central issue in this appeal is the court's construction
of the term in claim 1, "100% by weight." During
claim construction proceedings, DuPont proposed that
"100% by weight" means "[t]here is no carrier
material such as resin, adhesive, cloth or paper in addition
to the inorganic platelets. There may be some residual
dispersant arising from incomplete drying of the platelet
dispersion." E.I. du Pont de Nemours & Co. v.
Unifrax I LLC, No. 1:14-CV-1250, 2016 WL 158031, at *5-6
(D. Del. Jan. 13, 2016) ("Claim Construction
Order"). Unifrax proposed that "100% by
weight" be given its "[p]lain meaning-no
construction is necessary." Id. According to
the district court, "the parties' dispute boils down
to whether the platelets are 100% of the inorganic refractory
layer or 100% relative to carrier material in the inorganic
refractory layer." Id. at *6.
district court adopted DuPont's proposed construction. In
reaching its conclusion, the district court cited the
'926 patent's specification, which states:
The refractory layer comprises platelets. Preferably at least
85% of the layer comprises platelets, more preferably at
least 90% and most preferably at least 95%. In some
embodiments, platelets comprise 100% of the layer. The
refractory layer may comprise some residual dispersant
arising from incomplete drying of the platelet dispersion
'926 patent col. 3 ll. 21-26. The district court stated
that "[t]he grammatical and most natural reading of this
passage is that '[t]he refractory layer may comprise
residual dispersant' refers to all the embodiments
mentioned in the paragraph, including the embodiment in which
platelets comprise 100% of the layer." Claim
Construction Order, 2016 WL 158031, at *7. Therefore,
the specification supported a construction of "100% by
weight" permitting some residual dispersant.
district court also looked to the specification of the parent
'027 patent, which it considered as intrinsic evidence,
that states "[i]n one embodiment of this invention, the
inorganic platelet layer contains 100% platelets, i.e. there
is no carrier material such as resin, adhesive, cloth or
paper. However, there may be some residual dispersant arising
from incomplete drying of the platelet dispersion."
'027 patent col. 2 ll. 32-36. The district court noted
that, although the '027 patent and the '926 patent
did not share the disputed "100%" claim term, both
patents "claim inventions that comprise a layer that
comprises platelets" and the '027 patent
"illuminate[s] the meaning of '100%' as it
pertains to such a layer because the "statement relates
to common subject matter." Claim Construction
Order, 2016 WL 158031, at *8. The district court
concluded that the intrinsic evidence supports the
construction that "100% by weight" platelets refers
to "the quantity of platelets relative to carrier
material," which allows for residual disper-sant in the
inorganic refractory layer. Id. at *9.
district court also considered whether during prosecution of
the '926 patent, the patentees disclaimed refractory
layers that contain less than 100% by weight platelets to
overcome a rejection in view of the prior art-U.S. Patent No.
6, 670, 291 ("Tompkins"). The examiner rejected the
application that led to the '926 patent over Tompkins
because Tompkins taught a refractory layer with a platelet
concentration of less than 100%. Id. The patentees
amended the claim to add language reciting that the inorganic
refractory layer comprises platelets in the amount of
"100% by weight." Id. According to the
district court, DuPont did not dispute that this resulted in
disclaimer of at least "embodiments comprising an
inorganic refractory layer containing platelets in an amount
less than 100% by weight." Id.
district court further considered whether the patentees
disclaimed inorganic refractory layers that contained
residual dispersant. Noting that the amended language recited
"platelets in the amount of 100% by weight . . . and a
residual moisture content," the district court found
that the patentees had not disclaimed "refractory layers
that contain anything at all other than platelets" and
that the disclaimer had no effect on the permissibility of
non-carrier materials such as residual dis-persants or
moisture in the refractory layer. Id. In the
district court's view, the disclaimer limited the scope
of the claimed layers to those containing no carrier material
such as a resin or an adhesive. Id.
produces the accused Combi-Film 3G11 product. The
"vermiculite coating" layer shown in the figure
below is the layer that DuPont contends meets
the claimed "inorganic refractory layer" limitation
in this appeal.
Br. 10; J.A. 8033. The refractory layer in Combi-Film 3G11
consists of an HTS-SE vermiculite dispersion containing
vermiculite, a material known as DEHESIVE 480, tetrasodium
pyrophosphate, and water.
review the district court's ultimate determination on
claim construction de novo, while any underlying factual
findings related to extrinsic evidence are reviewed for clear
error. CardSoft, LLC v. VeriFone, Inc., 807 F.3d
1346, 1348, 1349-50 (Fed. Cir. 2015).
of the district court's denial of judgment as a matter of
law is governed by the law of the regional circuit, here the
Third Circuit. See Transocean Offshore Deepwater
Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d
1340, 1346-47 (Fed. Cir. 2012). The Third Circuit reviews de
novo a district court's ruling on a motion for judgment
as matter of law. Intellectual Ventures I LLC v. Motorola
Mobility LLC, 870 F.3d 1320, 1324 (Fed. Cir. 2017);
McKenna v. City of Philadelphia, 582 F.3d 447, 460
(3d Cir. 2009).
as matter of law is appropriate if "the court finds that
a reasonable jury would not have a legally sufficient
evidentiary basis to find for [a] party." Fed.R.Civ.P.
50(a)(1). Judgment as a matter of law is "sparingly
invoked" and "granted only if, viewing the evidence
in the light most favorable to the nonmovant and giving it
the advantage of every fair and reasonable inference, there
is insufficient evidence from which a jury reasonably could
find" for the nonmovant. Marra v. Phila. Hous.
Auth., 497 F.3d 286, 300 (3d Cir. 2007) (internal
quotation marks omitted). "The question is not whether
there is literally no evidence supporting the party against
whom the motion is directed but whether there is evidence
upon which the jury could properly find a verdict for that
party." Becton, Dickinson & Co. v. Tyco
Healthcare Grp., LP, 616 F.3d 1249, 1253 (Fed. Cir.
2010) (quoting Lightning Lube, Inc. v. Witco Corp.,
4 F.3d 1153, 1166 (3d Cir. 1993)).
is a question of fact, reviewed for substantial evidence when
tried to a jury. ACCO Brands, Inc. v. ABA Locks Mfrs.
Co., 501 F.3d 1307, 1311 (Fed. Cir. 2007). Similarly,
anticipation under 35 U.S.C. § 102 is a question of
fact, reviewed for substantial evidence when tried to a jury.
TI Grp. Auto. Sys. (N. Am.), Inc. v. VDO N. Am.,
L.L.C., 375 F.3d 1126, 1133 (Fed. Cir. 2004).
"Priority, conception, and reduction to practice are
questions of law which are based on subsidiary factual
findings." Cooper v. Goldfarb, 154 F.3d 1321,
1327 (Fed. Cir. 1998). We have treated the question of
whether inventor testimony asserting priority is sufficiently