E.I. Du Pont De Nemours & Co. v. Unifrax I LLC

          Appeal 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 Leslie Levine.

          Jacob M. Holdreith, Robins Kaplan LLP, Minneapolis, MN, argued for defendant-appellant. Also represented by Brenda L. Joly, David Allen Prange.

          Before O'Malley, Reyna, and Hughes, Circuit Judges.

          OPINION

          REYNA, CIRCUIT JUDGE.

         This 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 affirm.

         Background

         I. The Asserted Patent

         U.S. 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.

         The 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. Kawka.

         The 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:

         (Image Omitted)

         Id., 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.

         II. Procedural History

         DuPont 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.

         The 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.

         A 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.

         The 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 during manufacture.

'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.

         The 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.

         The 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.

         The 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.

         III.

         The Accused Product

         Unifrax produces the accused Combi-Film 3G11 product. The "vermiculite coating" layer shown in the figure below^[1] is the layer that DuPont contends meets the claimed "inorganic refractory layer" limitation in this appeal.

         (Image Omitted)

         Appellee 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.

         Discussion

         We 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).

         Review 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).

         Judgment 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)).

         Infringement 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 ...