United States: Objective Evidence Of Nonobviousness Must Be Commensurate In Scope With Claims

In MeadWestVaco Corp. v. Rexam Beauty & Closures, Inc., Nos. 12-1518, -1527 (Fed. Cir. Sept. 26, 2013), the Federal Circuit affirmed-in-part, reversed-in-part, and remanded the district court's decision regarding validity and infringement of patents related to dispenser assemblies for perfumes.  Specifically, the Court affirmed the district court's claim constructions, denial of a motion to exclude expert testimony, denial of a motion for SJ of indefiniteness, and finding of infringement, but reversed and remanded the district court's SJ of nonobviousness.

Plaintiffs MeadWestVaco Corporation and MeadWestVaco Calmar, Inc. (collectively "MWV") and Defendants Rexam Beauty and Closures, Inc. and Rexam Dispensing Systems S.A.S. (collectively "Rexam") and Valois of America, Inc. and Valois S.A.S. (collectively "Valois") compete in the perfume packaging industry.  U.S. Patent Nos. 7,718,132 ("the '132 patent") and 7,722,819 ("the '819 patent"), assigned to MWV, are directed to an "invisible" dip tube for perfume that enhances the aesthetic appearance of the perfume bottle by appearing invisible when immersed in liquid.  Both patents include claims specific to fragrance dispensers ("the fragrance-specific claims").  The '132 patent, which is a continuation of the '819 patent, includes additional claims (independent claim 15 and dependent claim 19) directed to generic dispensers ("the generic dispenser claims").

MWV sued Rexam and Valois for infringement of both patents, and Rexam and Valois counterclaimed for DJ of invalidity and noninfringement.  The district court construed multiple claim terms and also ruled on various SJ motions, granting MWV's motion for SJ of nonobviousness and denying Rexam and Valois's motion for SJ of indefiniteness.  Finally, the district court found that Rexam and Valois did not infringe the fragrance-specific claims of both patents, but did infringe the '132 patent's generic dispenser claims.  Rexam and Valois appealed.

On appeal, the Federal Circuit first addressed the issue of obviousness.  The Court noted that the district court's obviousness analysis did not distinguish between the fragrance-specific claims and the generic dispenser claims.  Rather, the district court credited a variety of evidence in reaching its conclusion of nonobviousness, such as (1) evidence of long-felt need and commercial success in the perfume industry; (2) evidence that Valois and Rexam had reverse-engineered their own invisible dip tubes only after obtaining samples of MWV's dip tubes; and (3) evidence of belief that fluoropolymers (including EFEP, the transparent fluoropolymer MWV used for its dip tubes) were carcinogenic and therefore not to be used in fragrance products.

"Obviousness, like other grounds of invalidity, must be analyzed on a
claim-by-claim basis."  Slip op. at 9 (citing Ortho Pharm. Corp. v. Smith,
959 F.2d 936, 942 (Fed. Cir. 1992)).

The Court rejected the district court's obviousness analysis, explaining that the district court erred in failing to treat the generic dispenser claims (claims 15 and 19) differently from the fragrance-specific claims.  The Court reasoned that obviousness, like other grounds of invalidity, "must be analyzed on a claim-by-claim basis" as required by 35 U.S.C. § 282.  Slip op. at 9 (citing Ortho Pharm. Corp. v. Smith, 959 F.2d 936, 942 (Fed. Cir. 1992)).  The Court further explained that objective evidence of
nonobviousness "must be commensurate in scope with the claims which the evidence is offered to support."  Id. (quoting Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008)).

The Court further found that the district court erred in resolving material issues of fact in favor of the moving party, MWV, at the SJ stage.  For instance, Valois presented evidence contradicting MWV's claim of commercial success, evidence casting doubt on MWV's teaching away evidence, and evidence that one of ordinary skill in the art would not have believed EFEP was carcinogenic.  The Court held that this evidence created material issues of fact inappropriate for resolution on SJ.

The Federal Circuit next considered the district court's holdings on claim construction, infringement, and indefiniteness.  Since Valois failed to show any clear error in the district court's claim construction determination and infringement analysis, the Court affirmed the district court's claim construction, and the district court's finding of infringement of the '132 patent's generic dispenser claims and noninfringement of the fragrance-specific claims of both patents. 

The Court then considered Rexam's motion to exclude expert testimony.  Rexam argued that MWV's expert failed to follow testing parameters for calculating X-ray diffraction crystallinity as per the district court's claim construction, and the expert's testimony was therefore legally irrelevant to proving infringement.  Specifically, MWV's expert testified that, using his testing parameters, which differed slightly from the district court's claim construction, he was able to conclude that Rexam's products infringed the '132 patent under the district court's construction.  Rexam used the expert's deviations from the district court's claim construction to cast doubt on his infringement conclusions, but the Court noted that this did not make MWV's expert testimony irrelevant, and that Rexam did not raise any other basis for excluding the testimony.  Because Rexam failed to show that the district court abused its discretion in allowing MWV's expert to testify, the Court affirmed the district court's denial of Rexam's motion to exclude.

Finally, the Court affirmed the district court's denial of SJ of indefiniteness, holding that Rexam and Valois had waived the issue by failing to raise it at the bench trial.

This article previously appeared in Last Month at the Federal Circuit, October 2013.

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