Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corp.

United States Court of Appeals
for the Federal Circuit
__________________________

CROWN PACKAGING TECHNOLOGY, INC.
AND CROWN CORK & SEAL USA, INC.,
Plaintiffs−Appellants,

v.
BALL METAL BEVERAGE CONTAINER
CORPORATION,
Defendant−Appellee.
__________________________

2010-1020
__________________________

Appeal from the United States District Court for the
Southern District of Ohio in Case No. 05-CV-0281, Judge
Walter H. Rice.
___________________________

Decided: April 1, 2011
___________________________

DALE M. HEIST, Woodcock Washburn LLP, of Phila-
delphia, Pennsylvania, argued for plaintiffs-appellants.
With him on the brief were ALEKSANDER J. GORANIN and
AARON B. RABINOWITZ.

JOHN D. LUKEN, Dinsmore & Shohl, LLP, of Cincin-
nati, Ohio, argued for defendant-appellee. With him on
CROWN PACKAGING v. BALL METAL 2

the brief were JOSHUA A. LORENTZ and CHARLES H.
BROWN, III.
__________________________

Before NEWMAN and DYK, Circuit Judges, and WHYTE,
District Judge. ∗
Opinion for the court filed by District Judge WHYTE.
Opinion concurring in part and dissenting in part filed by
Circuit Judge DYK.

WHYTE, District Judge.

Crown Packaging Technology, Inc. and Crown Cork
and Seal USA, Inc. (collectively "Crown") appeal from the
judgment of the United States District Court for the
Southern District of Ohio following its granting of Ball
Metal Beverage Container Corp.'s ("Ball's") motion for
summary judgment invalidating the asserted claims of
U.S. Patent Nos. 6,935,826 ("the '826 patent") and
6,848,875 ("the '875 patent") for violating the written
description requirement and because the asserted claims
were anticipated. Because the '826 and '875 patents'
common specification conveys to one of ordinary skill in
the art that the patentee was in possession of the subject
matter of the asserted claims, and because a material
dispute remains as to what the prior art inherently dis-
closes, we reverse and remand.

∗
The Honorable Ronald M. Whyte, United States
District Court for the Northern District of California,
sitting by designation.
3 CROWN PACKAGING v. BALL METAL

I. BACKGROUND

A. The '826 and '875 Patents

Crown and Ball are both in the business of selling can
ends and can bodies to fillers associated with major
beverage companies. "Can ends" are essentially the lids
affixed to the top of beverage cans, while "can bodies" are
generally cylindrical hollow containers to which the can
ends are attached for filling.

The '826 and '875 patents share a common specifica-
tion which identifies and discusses two ways to save
metal when seaming can bodies and can ends. The speci-
fication teaches that "improvements in metal usage can
be made by increasing the slope of the chuck wall and
limiting the width of the anti peaking bead." '826 patent
col.1 ll.33-35. 1 Both improvements result in significant
metal savings without reducing the overall can diameter,
meaning that the improvements could be run on existing
machinery.

The specification first describes the invention of in-
creasing the slope of the can end's chuck wall (also re-
ferred to as the "can end wall"). This new geometry is
different from prior art Figure 2, which shows a steep can
end wall that has a relatively small angle C relative to the
vertical axis:

1 References are to the '826 patent unless otherwise
indicated.
CROWN PACKAGING v. BALL METAL 4

The specification teaches that angle C in prior art can end
walls is "between 12° and 20° to the vertical." Id. col.1
ll.21-55.

In contrast to the prior art, the specification describes
a can end where the "chuck wall is inclined to axis per-
pendicular to the exterior of the central panel at an angle
between 30° and 60°" and preferably "between 40° and
45°." Id. col.2 ll.9-12. The new geometry is illustrated in
Figure 5 below:
5 CROWN PACKAGING v. BALL METAL

This change in geometry−increasing the size of angle C
relative to the vertical axis to make the chuck wall less
steep−reduces the use of metal in the manufacturing of
the can end. Id. col.2 ll.1-12.

The specification also teaches that metal can be saved
by "limiting the width of the anti peaking bead," prefera-
bly to a "bead narrower than 1.5mm" in radius. Id. col.1
ll.33-35, col.2 ll.10-11, col.4 l.19. This anti peaking
bead─also known as the reinforcing bead─is the U-shaped
structure shown in prior art Figure 2 around the location
labeled "D." In connection therewith, the specification
discusses a new seaming method employing a modified
seaming chuck to avoid causing damage to the chuck or
the reinforcing bead, damage which otherwise might
result from the narrowing of the bead. An embodiment of
the modified seaming chuck (30) is shown below in Fig-
ures 6 and 7:
CROWN PACKAGING v. BALL METAL 6

In this embodiment, the can end is placed over a can
body (12). Seaming rollers (34, 38) and modified chuck
(30) are then applied. The modified chuck (30) has a
frustoconical drive surface (32) which engages with the
chuck wall (24) of the can end (22). Id. col.4 ll.43-46.
During this seaming process, the "upper portion" of the
chuck wall (24) is deformed so as to be bent upwardly
around the chuck. Id. col.5 ll.7-12. The left-hand side of
Figure 6 shows the beginning of this deformation, and the
right-hand side of Figure 7 shows the final deformation
after seaming is complete. The upper portion of the chuck
7 CROWN PACKAGING v. BALL METAL

wall is bent upwardly so as to be substantially vertical
after seaming.

As the specification explains, this modified chuck (30)
does not drive deeply into the anti peaking bead (25). Id.
col.4 ll.59-62, col.4 l.65-col.5 l.3. The specification teaches
that a chuck with "a narrow annular flange" is "more
likely to fracture." Id. col.1 ll.65-67, col.3 ll.46-47. More-
over, there "is a risk of scuffing if this annulus slips,"
which may leave "unsightly black marks after pasteuriza-
tion." Id. col.1 ll.65-66, col.3 ll.49-50. To avoid these
problems, the modified chuck does not drive deeply into
the reinforcing bead.

The parties agree that the specification teaches that
"improvements in metal usage can be made by increasing
the slope of the chuck wall and limiting the width of the
anti peaking bead." Id. col.1 ll.33-35. However, the
parties disagree as to whether the written description
supports an invention that improves metal usage by
increasing the slope of the chuck wall without a modified
chuck that does not drive deeply into the reinforcing bead.

Claim 14 is the one asserted claim of the '826 patent.
All of the '826 product claims are directed to a can end
before it is seamed to a can body. Claim 14 depends from
claim 13 and recites a series of structural features. Both
claims are set out below:

13. A metal can end for use in packaging bever-
ages under pressure and adapted to be joined to a
can body by a seaming process so as to form a
double seam therewith using a rotatable chuck
comprising first and second circumferentially ex-
tending walls, said first and second chuck walls
CROWN PACKAGING v. BALL METAL 8

forming a juncture therebetween, said can end
comprising;

a peripheral cover hook, said peripheral cover
hook comprising a seaming panel adapted to
be formed into a portion of said double seam
during said seaming operation;

a central panel;

a wall extending inwardly and downwardly
from said cover hook, a first portion of said
wall extending from said cover hook to a first
point on said wall, said first wall portion
adapted to be deformed during said seaming
operation so as to be bent upwardly around
said juncture of said chuck walls at said first
point on said wall, a second portion of said
wall extending from said first point to a sec-
ond point forming a lowermost end of said
wall, a line extending between said first and
second points being inclined to an axis per-
pendicular to said central panel at an angle of
between 30° and 60°.

14. The end according to claim 13, further com-
prising an annular reinforcing bead connected to
said wall at said second point, said annular rein-
forcing bead connecting said wall to said central
panel.

Id. col.10 ll.37-65.

Claims 50 and 52 are the two asserted claims of the
'875 patent. All of the '875 claims are directed to methods
of seaming a can end. Claim 52 depends from claim 50
and both are reproduced below:
9 CROWN PACKAGING v. BALL METAL

50. A method of forming a double seam between a
can body and a can end intended for use in pack-
aging a carbonated beverage, said method com-
prising the steps of:

a) providing a can end having a circumferen-
tially extending peripheral cover hook, said
peripheral cover hook comprising a seaming
panel to be formed into a portion of said dou-
ble seam during a seaming operation, an an-
nular reinforcing bead, and a
circumferentially extending wall extending
from said seaming panel to said reinforcing
bead, said wall and said reinforcing bead
forming a transition therebetween;

b) placing said cover hook of said can end into
contact with a circumferentially extending
flange of a can body;

c) providing a rotatable chuck comprising first
and second circumferentially extending walls,
said second chuck wall depending from said
first chuck wall so as to form a juncture
therebetween;

d) bringing said chuck into engagement with
said can end; and

e) performing said seaming operation by plac-
ing one or more seaming rolls into contact
with said peripheral cover hook of said can
end while said can end rotates so as to deform
said seaming panel of said cover hook and to
bend a portion of said can end wall upwardly
around said juncture of said chuck walls at a
CROWN PACKAGING v. BALL METAL 10

first location on said can end wall, a straight
line extending from said first location on said
can end wall to said transition between said
can end wall and said reinforcing bead in-
clined between about 20° and about 60° with
respect to said axial centerline both before
and after said seaming operation.

52. The method according to claim 50, wherein
said line extending from said first location to said
transition is inclined between about 30° and about
50° with respect to said axial centerline of said
can end both before and after performing said
seaming operation.

'875 patent col.15 ll.8-50.

B. The District Court Proceedings

Crown filed suit against Ball in 2005, shortly after the
issuance of the '875 patent. When the '826 patent issued
several months later, in August 2005, Crown amended its
complaint to include that patent.

The district court construed the disputed claim terms
in April 2008. On September 8, 2009, the district court
granted Ball's motion for summary judgment and denied
Crown's cross motion, holding that the asserted claims
were invalid for violating the written description re-
quirement. Crown Packaging Tech., Inc. v. Ball Metal
Beverage Container Corp., 662 F.Supp. 2d 939 (S.D. Ohio
2009). Specifically, the district court held that the as-
serted claims cover driving a chuck either inside or out-
side of the reinforcing bead, but the specification only
supports driving a chuck outside of the can end's reinforc-
ing bead.
11 CROWN PACKAGING v. BALL METAL

The district court also held the asserted claims were
invalid as anticipated by Japanese Patent Application No.
57-117323 by Toyo Seikan Kaisha, Ltd. ("Toyo"). 2 In so
finding, the district court concluded that Ball had satis-
fied its burden by showing that at least one embodiment
of Toyo anticipated the asserted claims. The district court
held that the limitation of upward bending of a can end
wall was inherently disclosed by combining the unseamed
can end in Toyo's claim 2 with the seamed can end in
Toyo's Figure 4. The district court also found that
Crown's expert, Martin Higham, did not address the
anticipating embodiment referred to by Ball's expert,
Dean Scranton.

Crown timely appealed. We have jurisdiction pursu-
ant to 28 U.S.C. §1295(a)(1). The critical questions on
appeal are (1) whether the specification supports the
asserted claims and (2) whether the testimony of the
experts raises a genuine issue of material fact as to what
Toyo teaches.

II. ANALYSIS

A. Written Description

Summary judgment is appropriate "if the movant
shows that there is no genuine dispute as to any material
fact and the movant is entitled to judgment as a matter of
law." Fed. R. Civ. P. 56(a). Thus, a court may grant
summary judgment "when no reasonable jury could
return a verdict for the nonmoving party." Revolution
Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1365

2 Notably, Toyo was addressed (and overcome) in
one office action during the prosecution of the '826 patent
and in two office actions during the prosecution of the '875
patent.
CROWN PACKAGING v. BALL METAL 12

(Fed. Cir. 2009) (citations omitted). "Compliance with the
written description requirement is a question of fact but
is amenable to summary judgment in cases where no
reasonable fact finder could return a verdict for the non-
moving party." PowerOasis, Inc. v. T-Mobile USA, Inc.,
522 F.3d 1299, 1307 (Fed. Cir. 2008) (citing Invitrogen
Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1072-73 (Fed.
Cir. 2005)). A district court's grant of summary judgment
on written description is reviewed de novo. All Dental
Prods LLC v. Advantage Dental Prods., 309 F.3d 774, 778
(Fed. Cir. 2002).

Ball argues that the common specification of the '826
and '875 patents teaches seaming and cans adapted to be
seamed such that driving occurs only outside of the rein-
forcing bead. As such, Ball argues that the asserted
claims, which cover driving either inside or outside of the
can end's reinforcing bead, violate the written description
requirement.

The written description requirement is contained
within 35 U.S.C. § 112, which provides:

The specification shall contain a written descrip-
tion of the invention, and of the manner and proc-
ess of making and using it, in such full, clear,
concise, and exact terms as to enable any person
skilled in the art to which it pertains, or with
which it is most nearly connected, to make and
use the same, and shall set forth the best mode
contemplated by the inventor of carrying out his
invention.

The test for sufficiency of a written description is
"whether the disclosure clearly 'allow[s] persons of ordi-
nary skill in the art to recognize that [the inventor]
13 CROWN PACKAGING v. BALL METAL

invented what is claimed.'" Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1355, 1562-
63 (Fed. Cir. 1991)). The disclosure must “reasonably
convey[ ] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing
date." Id. at 1351. Possession means "possession as
shown in the disclosure" and "requires an objective in-
quiry into the four corners of the specification from the
perspective of a person of ordinary skill in the art." Id.
Original claims are part of the specification and in many
cases will satisfy the written description requirement. Id.
at 1349. However, certain claims, such as claims to a
functionally defined genus, will not satisfy the written
description requirement without a disclosure showing
that the applicant had invented species sufficient to
support the claim. Id.

Crown's asserted claims are not broad genus claims or
function claims simply describing the desired result of
saving metal. Therefore, the critical question is whether
the specification, including the original claim language,
demonstrates that the applicants had possession of an
embodiment that improved metal usage by increasing the
slope of the chuck wall without also limiting the width of
the reinforcing bead.

Crown relies on our decision in Revolution Eyewear
for the proposition that "[i]nventors can frame their
claims to address one problem or several, and the written
description requirement will be satisfied as to each claim
as long as the description conveys that the inventor was
in possession of the invention recited in the claim." 563
F.3d at 1367. In this case, Crown contends that the
specification teaches two separate solutions for improving
metal usage: increasing the slope of the chuck wall of the
CROWN PACKAGING v. BALL METAL 14

can end and limiting the width of the reinforcing bead.
According to Crown, nothing in the specification requires
employment of both methods in all instances. Where one
does not elect to limit the width of the reinforcing bead,
Crown contends that driving can occur either inside or
outside of the reinforcing bead.

We agree with Crown that the written description
supports the asserted claims. Ball contends that Revolu-
tion Eyewear does not apply to a specification in which the
prior art problems are related to one another. According
to Ball, for Revolution Eyewear to apply, a specification
must independently present separate solutions to inde-
pendent problems. Ball misstates our holding in Revolu-
tion Eyewear. To the contrary, we specifically held in
Revolution Eyewear that it is a "false premise that if the
problems addressed by the invention are related, then a
claim addressing only one of the problems is invalid for
lack of sufficient written description." 563 F.3d at 1367.
Ball attempts to distinguish Revolution Eyewear by
arguing that the specification here mandates that the
prior art problems (metal usage and risk of damage with
a narrower reinforcing bead) must always be solved
together. But the specification specifically ties the frac-
turing and scuffing problems to the narrower reinforcing
beads and not the increased angle of the can end wall.
See '826 patent col.3 ll.45-50. Nowhere does the specifica-
tion teach that metal savings can only be achieved by
increasing the chuck wall angle along with narrowing the
reinforcing bead. Tables 1-5 show pressure performance
of can ends with various chuck wall angles but do not
suggest that a wider chuck wall angle requires a narrower
reinforcing bead. Id. col.5 l.29-col.8 l.3. Even more to the
point, Table 6 shows that even where the reinforcing
bead's width is held constant, increasing the chuck wall's
slope relative to vertical brings about a savings in the
15 CROWN PACKAGING v. BALL METAL

diameter of the starting material (the "cut edge"). Simply
put, the specification supports the asserted claims that
achieve metal savings by varying the slope of the chuck
wall alone.

While the patents teach two independent ways to save
metal, the advantages of limiting the chuck to driving
outside the reinforcing bead only come into play when one
narrows the reinforcing bead. That is when "the chuck
bead becomes narrower and more likely to fracture." Id.
col.3 ll.47-48.

Crown's original claims clearly show that the appli-
cants recognized and were claiming an improvement in
metal usage by increasing the slope of the chuck wall over
that used in the prior art without any additional limita-
tion of narrowing the width of the reinforcing bead.
Notably, Crown adds the limitation requiring that there
be no "driving contact between said chuck and said can
end bead interior surface" in dependent claims 22 and 40
of the '875 patent. '875 patent col.12 ll.21-26, col.14 ll.31-
36. The added limitation would not be needed if the
inventors had in mind that in all cases driving would
occur outside the reinforcing bead. These claims show, as
Ariad recognized many original claims do, that the appli-
cants had in mind the invention as claimed. And while
Ball is correct in noting that the embodiment drawings in
the specification all show chuck drive outside the reinforc-
ing bead, that does not compel the conclusion that the
written description is so narrowly tailored as to preclude
Crown from claiming an embodiment that only utilizes
the angled chuck wall solution. See Lampi Corp. v. Am.
Power Prods., 228 F.3d 1365, 1378 (Fed. Cir. 2000) (con-
cluding that the drawings at issue were "merely a 'practi-
cal example' of the invention" and did not limit the patent
to identical half-shells).
CROWN PACKAGING v. BALL METAL 16

Ball also contends that increasing the slope of the can
end's chuck wall necessarily requires a frustoconical drive
surface which engages the chuck wall rather than the
reinforcing bead. Ball's argument suggests that one of
ordinary skill in the art could not seam a can end with an
increased sloped chuck wall except by driving on the can
end's chuck wall while avoiding contact with the reinforc-
ing bead. But that contention implicates enablement, not
written description. Indeed, Ball's argument here boils
down to whether the specification "describe[s] the manner
and process of making and using the invention so as to
enable a person of skill in the art to make and use the full
scope of the invention without undue experimentation."
LizardTech, Inc. v. Earth Res. Mapping, 424 F.3d 1336,
1344-45 (Fed. Cir. 2005) (also noting that enablement and
written description "usually rise and fall together").
However, Ball has never asserted an enablement chal-
lenge to the specification, nor does Ball claim to introduce
an enablement challenge on appeal. Perhaps more impor-
tantly, there is no evidence in the record to suggest that
Crown's patents are not enabled.

Ball's reliance on Tronzo v. Biomet, Inc., 156 F.3d
1154 (Fed. Cir. 1998), LizardTech, and ICU Med., Inc. v.
Alaris Med. Sys., 558 F.3d 1368 (Fed. Cir. 2008) is simi-
larly misplaced. In each of those cases, the specification
unambiguously limited the scope of the invention. In
Tronzo, the patentee in a later-filed application asserted
claims covering cup implants which were generic as to
shape despite the fact that the specification only dis-
cussed conical shaped cups, characterized the conical
shape as being "an extremely important aspect" of the
invention, and only mentioned other shapes in specifically
distinguishing the prior art as inferior. Tronzo, 156 F.3d
at 1159. Crown's patents do warn that "[a]s can ends are
developed with narrower anti peaking beads the chuck
17 CROWN PACKAGING v. BALL METAL

head . . . becomes narrower and more likely to fracture."
'826 patent col.3 ll.45-50. The '875 patent includes claims
addressing this problem (see '875 patent col.12 ll.21-26,
col.14 ll.31-37) but nowhere suggests that saving metal by
increasing the slope of a can end's chuck wall necessarily
requires that there be no driving contact with the interior
of the reinforcing bead. The problems the patents address
are related, but they are still separate, and solving one
does not necessarily require solving the other.

In LizardTech, the claims at issue were invalidated on
both written description and enablement grounds because
the specification disclosed only one specific method for
solving one particular problem─creating "seamless"
discrete wavelet transforms for use in electronic image
data compression. 424 F.3d at 1345. In contrast, Crown's
patents identify at least two ways of solving the problem
of metal usage.

Finally, in ICU Medical, the specification at issue was
clear that having a spike within the medical valve was
necessary to the use of the claimed invention. 558 F.3d at
1378-79. Again, Crown makes no such narrow disclosure
here. In fact, the specification in this case clearly shows a
chuck entering the reinforcing bead in the prior art (Fig-
ure 2). It is only when one elects to narrow the reinforc-
ing bead that the location of chuck drive becomes an
issue.

The district court also failed to distinguish in its writ-
ten description analysis between Crown's only asserted
product claim, Claim 14 of the '875 patent, and Crown's
method claims, Claims 50 and 52. Claim 14 covers a
metal can end with certain features. The district court
found the written description deficient because it failed to
include a negative limitation requiring that, during the
CROWN PACKAGING v. BALL METAL 18

process of seaming the can end to the can body, a chuck
not drive in the can end's reinforcing bead. Claim 14, as a
product claim, however, recites structural limitations as
opposed to method steps. In fact, the PTO specifically
required the inventors to file a divisional application and
separate the method and product claims. A "patentee
need only describe the product as claimed, and need not
describe an unclaimed method of making the claimed
product." Amgen Inc. v. Hoechst Marion Roussel, Inc., 314
F.3d 1313, 1331-33 (Fed. Cir. 2003). The district court,
therefore, erred in holding that there was an inadequate
written description supporting claim 14.

In sum, we hold that the district court erred in hold-
ing that the asserted claims violated the written descrip-
tion requirement. Therefore, we reverse and enter
judgment for Crown on its cross-motion. See PowerOasis,
522 F.3d at 1307 (Fed. Cir. 2008) (noting that compliance
with the written description requirement is subject to
summary judgment if no reasonable fact finder could
return a verdict for the non-moving party).

B. Anticipation

Crown also contends that the district court erred in
finding that Toyo anticipates the asserted claims. The
parties disagree as to whether Toyo inherently discloses
the upward bending of a can end wall (or chuck wall).

We review de novo grants of summary judgment
based on § 102 anticipation. Telemac Cellular Corp. v.
Topp Telecom, Inc., 247 F.3d 1316, 1327 (Fed. Cir. 2001).
To challenge the patent, Ball must prove by clear and
convincing evidence that Toyo discloses, either expressly
or inherently, every limitation as asserted in the claims:
"To anticipate a claim, a single prior art reference must
19 CROWN PACKAGING v. BALL METAL

expressly or inherently disclose each claim limitation . . . .
But disclosure of each element is not quite enough−this
court has long held that '[a]nticipation requires the pres-
ence in a single prior art disclosure of all elements of a
claimed invention arranged as in the claim.'" Finisar
Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334-35
(Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co.,
722 F.2d 1542,1548 (Fed. Cir. 1983)). Moreover, inherent
anticipation requires more than mere probabilistic inher-
ency, see Continental Can Co. USA v. Monsanto Co., 948
F.2d 1264, 1269 (Fed. Cir. 1991), and more than the
presence of an unrecognized de minimis quantity of
claimed substance in the prior art. See In re Seaborg, 328
F.2d 996 (CCPA 1964). But these cases "do not show that
inherency requires recognition" of the inherent element.
See Schering Corp. v. Geneva Pharms., Inc., 339 F.3d
1373, 1377 (Fed. Cir. 2003).

Ball contends that the district court correctly deter-
mined that Toyo disclosed more than one unseamed end
and that Ball need only demonstrate that a single em-
bodiment of Toyo anticipates the asserted claims in order
for it to be entitled to summary judgment on the basis of
anticipation. Athrocare Corp. v. Smith & Nephew, Inc.,
406 F.3d 1365, 1372 (Fed. Cir. 2005) (noting that "it was
error for the district court to limit the disclosure of the
prior art reference to a preferred embodiment"). How-
ever, Mr. Scranton (Ball's expert) and Mr. Higham
(Crown's expert) dispute whether any embodiment exists
that anticipates the asserted claims. Ball contends that
Mr. Higham addressed only Toyo's claim 1 embodiment
while Mr. Scranton focused on Toyo's claim 2. Mr.
Higham's report is not as narrow as Ball contends. While
Mr. Higham did not mention Toyo's claim 2 embodiment
specifically, he did not need to because he offered an
opinion on the category of can ends relevant to Toyo as a
CROWN PACKAGING v. BALL METAL 20

whole. Nowhere did Mr. Higham limit his opinion to any
particular embodiments. According to Mr. Higham's
opinion, any unseamed can end taught in Toyo would
require a portion of the end wall to be bent upwardly
during seaming─including the can end in Toyo's claim
2─and therefore could not have been used to arrive at the
seamed end depicted in Toyo's Figure 4. Mr. Higham
explains that it would have been impossible to bend a
portion of the can end wall upwardly around a chuck
juncture during seaming to a can body that had not been
subjected to a necking step. According to Mr. Higham,
this "neck" is created when the diameter at the top of the
can body is reduced relative to the diameter of the main
body. Toyo's Figure 4, however, does not show a can body
with a neck.

Simply put, Mr. Scranton opined that, to arrive at the
seamed can end shown in Toyo's Figure 4, the unseamed
end of claim 2 must necessarily have been bent upwardly
around an inherent chuck by more than 10 degrees. In
contrast, Mr. Higham opined that one could never arrive
at Figure 4's seamed end if starting with an unseamed
end that would require upward bending during seaming,
because that would necessitate a necked can contrary to
the one depicted in Figure 4. At bottom, Mr. Higham's
opinion suggests that Toyo does not inherently disclose
each limitation of the asserted claims.

Where there is a material dispute as to the credibility
and weight that should be afforded to conflicting expert
reports, summary judgment is usually inappropriate.
Scripps Clinic & Research Found. v. Genentech, Inc., 927
F.2d 1565, 1578 (Fed. Cir. 1991) ("To the extent that
apparent inconsistencies among the [expert's] three
declarations raise questions of credibility and weight . . .
they were improperly resolved on summary judgment.").
21 CROWN PACKAGING v. BALL METAL

Ball's various arguments regarding Mr. Higham's change
in position during the prosecution and throughout the
course of this litigation are proper matters for a jury to
weigh in making a credibility determination. Accordingly,
we reverse the district court's holding with respect to
anticipation and remand for trial.

C. Obviousness

Because the issue of obviousness has not been finally
resolved by the district court, we decline to address Ball's
assertion of that defense. See MIT v. Abacus, 462 F.3d
1344, 1359 (Fed. Cir. 2006) ("To the extent that we have
jurisdiction to consider the marking statute issues, we
decline to address them because those questions have not
been finally resolved by the district court.").

III. CONCLUSION

For the foregoing reasons, we reverse the district
court's entry of summary judgment with respect to writ-
ten description and instead enter judgment for Crown.
We reverse and remand for trial with respect to the
district court's grant of summary judgment on anticipa-
tion.

REVERSED AND REMANDED

COSTS

Costs are awarded to Crown.
 United States Court of Appeals
for the Federal Circuit
__________________________

CROWN PACKAGING TECHNOLOGY, INC.
AND CROWN CORK & SEAL USA, INC.,
Plaintiffs−Appellants,

v.
BALL METAL BEVERAGE CONTAINER
CORPORATION,
Defendant−Appellee.
__________________________

2010-1020
__________________________

Appeal from the United States District Court for the
Southern District of Ohio in Case No. 3:05-CV-281, Judge
Walter H. Rice.
__________________________

DYK, Circuit Judge, concurring-in-part and dissenting-in-
part.

I join Parts I, IIB, and IIC of the majority opinion.
However, I respectfully dissent from Part IIA. In my
view, method claims 50 and 52 of the ’875 patent and
product claim 14 of the ’826 patent are invalid for failure
to satisfy the written description requirement.

I agree with the majority that the ’875 and ’826 pat-
ents are directed to solving two problems: (1) reducing
metal usage, and (2) reducing scuffing to the can end wall.
CROWN PACKAGING v. BALL METAL 2

The metal usage problem is solved by “increasing the
slope of the chuck wall and limiting the width of the anti-
peaking bead.” ’875 Patent col.1 ll.33–34. The scuffing
problem is solved by designing a chuck that drives only
outside, and not inside, of the new, narrower anti-peaking
bead (“bead”). See id. col.4 ll.44–47 (“The chuck . . . is
designed to enter the chuck wall without scratching or
scuffing a coating on the can end; not to drive on the
concave bead surface as shown [in the prior art].”).

Claim 50, from which claim 52 depends, addresses
only the metal usage problem by increasing the slope of
the chuck wall. It provides in relevant part:

performing said seaming operation by placing one
or more seaming rolls into contact with said pe-
ripheral cover hook . . . while said can end rotates
so as . . . to bend a portion of said can end wall
upwardly around said juncture of said chuck walls
at a first location on said can end wall, a straight
line extending from said first location on said can
end wall to said transition between said can end
wall and said reinforcing bead inclined between
about 20° and about 60° with respect to said axial
centerline both before and after said seaming op-
eration.

Id. col.15 ll.30–41. Thus, claim 50 discloses an embodi-
ment in which a can end wall having an increased slope
can be combined with the wider, prior art bead, and it is
not limited to driving the chuck outside the bead. The
question, then, is whether this embodiment is disclosed in
the specification and whether claims 50 and 52 can satisfy
the written description requirement.
3 CROWN PACKAGING v. BALL METAL

Relying on Revolution Eyewear, the majority holds
that the claims are valid. However, Revolution Eyewear,
in holding that a claim may address only one of the pur-
poses disclosed in the specification, still requires explicit
disclosure of the embodiments in the claims: “Inventors
can frame their claims to address one problem or several,
and the written description requirement will be satisfied
as to each claim as long as the description conveys that the
inventor was in possession of the invention recited in that
claim.” Revolution Eyewear, Inc. v. Aspex Eyewear, Inc.,
563 F.3d 1358, 1367 (Fed. Cir. 2009) (emphasis added).
Therefore, the claims, whether directed to solving a single
problem or multiple problems, must still be grounded in
the specification.

There is no question that the specification does not
teach combining the sloped can end wall together with the
wider, prior art bead and driving the chuck into the bead
instead of the sloped can end wall. That combination is a
new and distinct invention, and our written description
jurisprudence requires that it be described in the specifi-
cation. The fact that the claims are broad enough to cover
such an invention or imply that the claims cover such an
invention is not sufficient when the invention itself is not
described either in the claims or elsewhere in the specifi-
cation. The failure of the specification to describe the
invention requires invalidation of claims 50 and 52.

Similarly, product claim 14, which depends from
claim 13, discloses a can end wall having an increased
slope in combination with a wider, prior art bead. Be-
cause this combination is a separate invention not dis-
closed in the specification, claim 14 is also invalid for
failure to satisfy the written description.
CROWN PACKAGING v. BALL METAL 4

Under our written description precedent, failure to
disclose a claimed invention is fatal to a claim’s validity.
In Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010), we held that “the hallmark of
written description is disclosure.” “[I]f the claimed inven-
tion does not appear in the specification, . . . the claim . . .
fails regardless [of] whether one of skill in the art could
make or use the claimed invention.” Id. at 1348. The
specification must convey with “reasonable clarity” to
those of skill in the art that the inventor was in posses-
sion of the claimed invention as of the filing date of the
patent application. Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1563–64 (Fed. Cir. 1991).

For these reasons, I would affirm summary judgment
that product claim 14 of the ’826 patent and method claims
50 and 52 of the ’875 patent are invalid for failure to
comply with the written description requirement.