MeadWestVaco Corp. v. Rexam Beauty & Closures, Inc.

In a decision addressing a variety of issues including obviousness, admissibility of expert testimony and waiver of an indefiniteness argument, the U.S. Court of Appeals for the Federal Circuit vacated the district court's grant of summary judgment of non-obviousness and remanded the case, but affirmed the district court's admission of disputed expert testimony. MeadWestVaco Corp. v. Rexam Beauty & Closures, Inc., Case Nos. 12-1518, -1527 (Fed. Cir., Sept. 26, 2013) (Prost, J.).

The patents-in-suit relate to perfume dip tubes that appear to disappear when immersed in liquid, enhancing the aesthetic appearance of the perfume bottle. To achieve this effect, the inventors utilized a transparent fluoropolymer with an XRD crystallinity of less than 13 percent. After MeadWestVaco (MWV) began marketing the new tubes, Rexam and Valois obtained samples and worked to design around MWV's claims.

Prior to trial, MWV moved for, and the district court granted, summary judgment of non-obviousness of the asserted claims of both patents. The district court in particular noted that there was evidence of belief that fluoropolymers should not be used in fragrance bottles and that there was both long-felt need and commercial success specific to the perfume industry.

The Federal Circuit vacated the district court's grant of summary judgment and remanded for a trial on this issue. The Federal Circuit noted that the asserted claims were not limited to fragrance products and that the district court had resolved material issues of fact in favor of MWV. For instance, co-defendant Valois had put forth evidence contradicting both MWV's claims of commercial success and of teaching away.

The Federal Circuit also analyzed the lower court's decision not to exclude expert testimony. Specifically, regarding XRD crystallinity, the patent listed several parameters to be used in the characterization, but not a complete list. The parties engaged experts at trial who used very different parameters in their analyses. Unsurprisingly, the experts came to opposite conclusions regarding infringement. Rexam moved to exclude MWV's expert on the grounds that the expert did not follow all of the XRD parameters listed in the patent, but the district court allowed the testimony.

The Federal Circuit found that Rexam's arguments went to infringement, not admissibility. The expert was not applying a new claim construction, but rather concluding that the accused products infringed under the court's claim construction, even though he used slightly different testing parameters from those listed in the patent. The Federal Circuit found that the district court did not abuse its discretion in allowing the expert's testimony.

As to infringement, the district court credited MWV's expert and found Rexam's expert unreliable at a bench trial. "The trial court is given broad discretion in determining credibility because the court saw the witnesses and heard their testimony." The district court found that MWV's expert's slightly different parameters could not have substantially affected his results, and the Federal Circuit did not find this to be reversible error.

Rexam and Valois had also moved for summary judgment of indefiniteness. The district court denied both motions, stating, "Plaintiff's patent is not indefinite as a matter of law." Valois and Rexam argued that the district court had sua sponte granted summary judgment of definiteness to MWV. The Federal Circuit disagreed, concluding that the district court had merely denied the defendants' summary judgment motions. The defendants failed to raise the issue again at the bench trial, and the Federal Circuit found that they had waived the issue.

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