United States Court of Appeals for the Federal Circuit
2008-1247
SÜD-CHEMIE, INC.,
Plaintiff-Appellant,
v.
MULTISORB TECHNOLOGIES, INC.,
Defendant-Appellee.
Kevin M. O’Brien, Baker & McKenzie LLP, of Washington, DC, argued for
plaintiff-appellant. With him on the brief were Kevin J. Sullivan and Thomas A. Doyle,
and James J. Dries, of Chicago, Illinois.
Michael R. McGee, McGee and Gelman, of Buffalo, New York, argued for
defendant-appellee.
Appealed from: United States District Court for the Western District of Kentucky
Judge Charles R. Simpson, III
United States Court of Appeals for the Federal Circuit
2008-1247
SÜD-CHEMIE, INC.,
Plaintiff-Appellant,
v.
MULTISORB TECHNOLOGIES, INC.,
Defendant-Appellee.
Appeal from the United States District Court for the Western District of Kentucky
in case no. 3:03-CV-29, Judge Charles R. Simpson, III.
___________________________
DECIDED: January 30, 2009
___________________________
Before RADER, FRIEDMAN, and BRYSON, Circuit Judges.
BRYSON, Circuit Judge.
Desiccant containers are frequently used to maintain a dry environment for
products during storage or shipping. Some desiccants function by absorbing water
vapor and undergoing a phase change into liquid form. Leakage of the liquid from the
desiccant container would defeat the purpose of the desiccant and could damage either
the products that are being maintained in a dry environment or the container in which the
products are being shipped. For that reason, it is important that desiccant containers
used in that manner be permeable to water vapor but impermeable to liquid water, and
water, and that they have strong, leak-proof seals, so that the seals will not fail even if a
substantial volume of liquid collects inside the container.
Süd-Chemie, Inc., owns U.S. Patent No. 5,743,942 (“the ’942 patent”), which is
directed to a desiccant container made from a water-vapor-permeable, multilayered
packaging material. The packaging material recited by the ’942 patent consists of two
films: a microporous film and a laminate film. The two films are heat-sealed to each
other around the edges to form a closed container for the desiccant material that is
placed within. Süd-Chemie manufactures commercial desiccant containers covered by
the ’942 patent.
According to the ’942 patent, many prior art desiccant packages sought to solve
the problem of water leakage from the package by creating seals from films coated with
adhesives and sealed together with heat sealers. ’942 patent, col. 1, ll. 61-64. In
contrast, the ’942 patent sought to solve the leakage problem by requiring the use of
packaging films that are not coated with adhesives but that are “compatible” with each
other. The ’942 patent explains that when they are sealed together with a heat sealer,
uncoated but compatible film materials form stronger seals than adhesive-coated films.
In addition, they are less costly and can be sealed using conventional high-throughput
heat-sealing machines that cannot readily be used with adhesive-coated films. Id. at col.
3, ll. 16-28. Claim 1 of the ’942 patent, which is the only independent claim, reads as
follows:
A desiccant container comprising a desiccant material surrounded by a
laminated, water vapor permeable desiccant packaging material, wherein
said packaging material comprises an uncoated microporous film having
an inner and outer surface heat sealed to an uncoated laminate film having
an inner and outer surface, wherein the uncoated microporous film
comprises a different composition from the uncoated laminate film, wherein
2008-1247 2
wherein edges of the inner surface of the uncoated microporous film are
sealed to edges of the inner surface of the uncoated laminate film, and
wherein the inner surface of the uncoated microporous film and the inner
surface of the uncoated laminate film are comprised of compatible
polymeric materials.
Defendant Multisorb manufactures and sells TranSorb desiccant bags, which are
also designed and marketed to protect cargo from moisture damage during shipment. In
2003 Süd-Chemie brought suit against Multisorb in the United States District Court for
the Western District of Kentucky, alleging that Multisorb’s TranSorb product line infringes
the ’942 patent. After the district court issued an order construing the disputed terms of
claim 1, the parties filed cross-motions for summary judgment on the issues of
infringement and validity.
The central issue with respect to validity was whether a prior art patent, U.S.
Patent No. 4,487,791 (“Komatsu”), rendered the ’942 patent invalid for obviousness.
The Komatsu patent is directed to an oxygen-absorbing package in which an oxygen-
absorbing material is surrounded by a gas-permeable packaging material. The
packaging material in Komatsu consists of a microporous film and a laminate film sealed
together with a conventional heat-sealing machine. Komatsu, col. 1, ll. 6-8, 57-61. The
district court found that the polymeric microporous and laminate films disclosed by
Komatsu were identical to those described in the ’942 patent and that both patents
taught heat sealing the films using conventional high-speed packaging equipment. The
court therefore concluded that “the Komatsu patent taught the same container as the
’942 patent, with the exception of the absorbent material disposed between the layers.”
According to the district court, the ’942 patent simply substituted a desiccant material for
an oxygen-absorbing material. Citing the Supreme Court’s decision in KSR International
2008-1247 3
International Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007), the court held that the
substitution of one absorbing material for another would have been obvious to a person
of skill in the art of atmospheric packaging. The district court therefore granted summary
judgment that the ’942 patent was invalid for obviousness in view of the prior art
Komatsu patent. Süd-Chemie appeals that decision to this court.
I
Süd-Chemie asserts that the district court erred in concluding that the Komatsu
and ’942 patents teach identical containers that differ only as to the absorbent substance
encapsulated by the packaging materials. Specifically, Süd-Chemie contends that
Komatsu fails to teach three of the limitations pertaining to the desiccant container that
are recited in claim 1: (1) the use of uncoated microporous and laminated films; (2) the
water-vapor-permeable character of the packaging materials; and (3) the use of
“compatible” polymeric materials (as that term is defined in the specification of the ’942
patent) on the inner surfaces of the microporous film and the laminated film. We agree
with Multisorb that Komatsu teaches the first two elements. However, we conclude that
the evidence before the district court does not support the court’s conclusion that
Komatsu discloses the use of compatible polymeric materials, and for that reason, we
conclude that the court’s summary judgment order must be vacated. We address each
of the three disputed claim limitations in turn.
A
Claim 1 of the ’942 patent requires that the desiccant packaging material be
composed of an “uncoated microporous film . . . heat sealed to an uncoated laminate
film . . . .” In its claim construction order, the district court construed the term “uncoated”
2008-1247 4
“uncoated” to mean “uncoated with an adhesive.” According to the ’942 patent,
uncoated compatible films can produce stronger seals than those formed using
incompatible films that are coated with adhesive. ’942 patent, col. 7, ll. 14-16.
Furthermore, the patent explains that adhesive-coated films are more expensive and
that using adhesives can prevent conventional heat-sealing machines from operating at
maximum efficiency. Id., col. 3, ll. 19-21, 26-28.
Komatsu refers generally to microporous “films” and laminated nonwoven fabric
“sheets.” Moreover, Komatsu repeatedly refers to the process of adhering the films and
sheets together by heat sealing, with no indication that the process contemplates the
use of adhesive coatings on the films. See Komatsu, col. 1, ll. 29-31; col. 3, ll. 42-43;
col. 4, ll. 14-15, 36-37. Süd-Chemie contends that because Komatsu does not
specifically refer to the films as “uncoated,” it fails to teach the purportedly critical
requirement of the ’942 patent that both the laminate and microporous films be
uncoated.
Süd-Chemie draws the wrong inference from Komatsu’s failure to specifically
refer to the films as uncoated. As noted, Komatsu plainly teaches that containers can be
made of films that are heat sealed without the use of adhesives, and thus without
coatings. Moreover, Süd-Chemie has not offered any evidence that a reference to a
microporous or laminate film would be understood by one of skill in the art as
contemplating a film with an adhesive coating attached. The district court was thus
correct to characterize Komatsu as teaching the use of uncoated films and not to
interpret Komatsu as disclosing only films coated with adhesives.
2008-1247 5
Süd-Chemie further asserts that Komatsu “includes no teaching or suggestion on
how the films are prepared.” In fact, Komatsu describes in fair detail how the
microporous film may be prepared:
The microporous film employed in the practice of this invention may be
prepared by: cold orientation of film; orientation of different substance-
containing film; extraction of different substance from different substance-
containing film; extraction of different substance-containing film, followed
by orientating the so-treated film; laminatings of nonwoven fabrics; cross
dispersing of bundle of fibers, followed by heat-pressing the resulting
material; and irradiation of film with an electron beam.
Komatsu, col. 2, ll. 21-30. 1 Notably, neither that description nor Komatsu’s description
of the laminated films contains any suggestion that the process described in Komatsu
requires the use of adhesive coatings. The district court therefore did not err in
concluding that Komatsu discloses the use of uncoated microporous and laminated
films.
B
Claim 1 also requires that the desiccant container be composed of “water vapor
permeable” packaging material. The district court did not specifically address that
requirement of the ’942 patent. Süd-Chemie contends that there is a disputed issue of
1
The ’942 patent contains a virtually identical description of how to produce
microporous films:
The uncoated microporous or nonwoven film may be prepared by any
conventional film forming process including cold orientation of the film,
orientation of different substance-containing films, extraction of different
substances from different substance-containing films, extraction of different
substance-containing film followed by orientation of the treated film, cross-
dispersing of a bundle of fibers followed by heat-pressing the resulting film
and any other conventional procedures utilized for the formation of a
microporous film.
’942 patent, col. 5, ll. 16-24.
2008-1247 6
fact as to whether Komatsu teaches the use of water-vapor-permeable packaging
materials. However, Komatsu describes the packaging films as permeable to air.
Komatsu, col. 2, ll. 39-41, 50-52. As Multisorb’s expert represented in his affidavit
(without any expert rebuttal from Süd-Chemie), air invariably includes water vapor.
Thus, by disclosing air-permeable films, Komatsu necessarily discloses films that are
water-vapor-permeable.
Based on Komatsu’s references to the packaging materials as “waterproof” and
“water impermeable,” Süd-Chemie contends that Komatsu does not disclose—and in
fact teaches away from—a water-vapor-permeable packaging material. That argument
is unpersuasive, however, because it erroneously equates impermeability to water with
impermeability to water vapor. A material can be both permeable to water vapor and
impermeable to liquid water, as the specification of the ’942 patent makes clear. See
’942 patent, col. 1, ll. 37-42. Although Komatsu refers to “water” without specifying its
state of matter, it is clear from context that Komatsu’s reference to “water” was to liquid
water, as opposed to water in its gaseous (water vapor) or solid (ice) states. Thus,
Komatsu explains that because the packaging films are “water impermeable,” the
container “can be packed with liquid or semi-liquid foodstuffs.” Komatsu, col. 3, ll. 60-62.
From its specification, it is therefore clear that Komatsu teaches materials that are
impermeable to liquid water, but not to water vapor. The ’942 patent similarly describes
the desiccant container as “absorbing water vapor without releasing water from the
container . . . .” ’942 patent, col. 3, line 67, through col. 4, line 1. Komatsu’s reference
to “waterproof” packaging materials therefore is not inconsistent with its disclosure of
water-vapor-permeable materials.
2008-1247 7
Even if Komatsu did not disclose water-vapor-permeable films, it would have
been obvious to a person of skill in the art to create a desiccant container with packaging
materials that are permeable to water vapor. The ’942 patent acknowledges that
desiccant containers that absorb water vapor were well known in the art at the time of
the invention. ’942 patent, col. 1, ll. 12-13. Because the containers for a desiccant must
necessarily be permeable to water vapor, it would have been obvious at the time of the
invention to design a desiccant container using water-vapor-permeable packaging
materials.
C
Finally, claim 1 of the ’942 patent requires that the inner surfaces of the
microporous and laminate films be “comprised of compatible polymeric materials.” The
district court concluded that Komatsu teaches the use of compatible films because “[t]he
Komatsu patent suggests the employment of the same materials claimed by the ’942
patent to be ‘compatible polymeric materials.’” It is true that Komatsu discloses the
same general classes of materials that are identified in the ’942 patent. Thus, both
patents state that the microporous and laminate films can be made from polyethylene,
polypropylene, and other polyolefinic materials. See Komatsu, col. 2, ll. 19-21; col. 3, ll.
12-15; ’942 patent, col. 5, ll. 12-15, 47-50. However, in concluding that Komatsu
teaches the use of compatible polymeric materials, the district court failed to
acknowledge that the specified classes of materials comprise a large number of
substances with quite different properties, and that various combinations of those
materials can be compatible or incompatible depending on how they are assembled in
layers to form the container.
2008-1247 8
The specification of the ’942 patent expressly defines the term “compatible.” It
states:
“Compatible” means that the materials mix on a molecular scale and will
crystallize homogeneously. Thus, while such layers may not have
precisely the same softening point, they should have softening points
which are consistent, so that the materials will mix on a molecular level.
’942 patent, col. 6, ll. 6-10. Thus, “compatible” materials have similar melting or
softening temperatures, while incompatible materials have dissimilar softening points.
The district court reasoned that “[t]he Komatsu patent does not identify the inner
surfaces of the films as comprised of compatible polymeric materials, but that does not
mean[] that they are not.” However, the Komatsu specification does identify the relative
softening points of the various polymeric films that constitute the package material, and
an analysis of those softening points indicates that Komatsu teaches the use of
incompatible materials for the inner surfaces of the containers, whereas the ’942 patent
requires the use of compatible materials for those surfaces.
The container disclosed in Komatsu comprises three layers: a single-layered
microporous film and a two-layered laminate film. The three layers are heat-sealed to
each other so as to create a closed container for the oxygen-absorbent material. The
preferred embodiment of the desiccant container in the ’942 patent also contains a
single-layered microporous film sealed to a two-layered laminate film. 2 Thus, the
2
The specification of the ’942 patent provides that the microporous film can
consist of either a single layer or a laminate of two or more microporous film layers. ’942
patent, col. 4, ll. 55-58; col. 5, ll. 9-12. As noted, however, the specification makes clear
that the preferred embodiment of the desiccant package contains a single-layered
microporous film. Moreover, in briefing and at oral argument the parties seemed to
assume that the container claimed in the ’942 patent has a total of three layers: a single-
layered microporous film and a two-layered laminate film. In any event, the discussion
below, which focuses on whether the inner surface of the microporous film is compatible
2008-1247 9
packages disclosed by the Komatsu and ’942 patents share a three-layered structure in
which the inner layer of the laminate film faces and seals to the inner surface of the
microporous film. Additionally, both patents provide that the outer layer of the laminate
film should be incompatible with its inner layer. The ’942 patent states that the outer
surface of the laminate film “should be manufactured from incompatible materials . . .
with a higher softening point than the inner surface of the laminate film material,” ’942
patent, col. 6, ll. 15-19, while Komatsu similarly states that the outer surface of the
laminate film should have a higher softening point than its inner surface, Komatsu, col. 3,
ll. 28-29.
Despite these similarities, the containers disclosed in Komatsu and in the ’942
patent differ in a key respect. Claim 1 of the ’942 patent requires that the inner surface
of the laminate film be compatible with the inner surface of the microporous film—that is,
the softening points of those two layers must be consistent. In contrast, Komatsu
teaches that the microporous film and the inner laminate films should have quite different
softening points; Komatsu explains that the softening point of the microporous film
should preferably be at least 20°C higher than that of the inner laminate film. Komatsu,
col. 3, ll. 16-19. Thus, Komatsu teaches the use of incompatible films precisely where
compatible with the inner laminate layer, applies with equal force to an alternative
embodiment of the container having four or more layers. The difference between the
containers described in the two patents would be even greater if the three-layered
Komatsu container were compared to a four-layered embodiment of the ’942 container.
The possibility that the microporous film can have more than one layer in the ’942 patent
therefore does not alter our conclusion that the district court erred in finding that the
Komatsu and ’942 patents teach identical containers.
2008-1247 10
precisely where the ’942 patent requires the films to be compatible. 3 That difference is
important, according to the disclosure of the ’942 patent, because the ’942 specification
asserts that uncoated films with similar softening points will mix on a molecular level to
form bonds that are significantly stronger than the bonds formed using incompatible
adhesive-coated films. See ’942 patent, col. 6, ll. 1-12.
Multisorb argues that Komatsu must be understood to teach the use of
compatible materials on the container’s inner surfaces because the two patents disclose
the same scheme of relative softening points. To support that assertion, Multisorb
points to language in the ’942 patent stating that the softening temperature of the inner
surface of the laminate film should be “lower than or equal to the softening temperature
of the inner surface of the uncoated microporous film.” ’942 patent, col. 5, ll. 54-55.
Based on that language, Multisorb argues that both Komatsu and the ’942 patent require
that the inner surface of the laminate film have the lowest softening point and that the
outer surface of the laminate film have the highest softening point of the three layers.
However, Multisorb ignores the fact that while the ’942 patent requires the inner surfaces
of the laminate and microporous films to have similar softening points, Komatsu requires
the films to have dissimilar softening points. Komatsu thus does not teach the use of a
microporous film that is compatible with the inner surface of the laminate film. The
teaching of both patents with regard to the relative softening temperatures among the
3
The container disclosed in Komatsu differs from that described in the ’942
patent in another respect. The specification of the ’942 patent provides that the outer
laminate layer should preferably be “formed from materials which are incompatible with
the microporous layer, such as materials having a higher melting or softening point.”
’942 patent, col. 5, ll. 63-67. In contrast, Komatsu permits the outer laminate layer to be
compatible with the microporous film layer. Komatsu, col. 3, ll. 24-25.
2008-1247 11
temperatures among the various surfaces does not obviate that fundamental difference.
It is therefore evident that even though the patents disclose the same classes of
polymeric materials used to form the packaging material, the containers described in
Komatsu and in the ’942 patent are different in a way that the ’942 patent treats as
important to the invention. In essence, the Komatsu container is formed by heat-sealing
a microporous layer with a high softening point to an inner laminate layer with a low
softening temperature. In contrast, the ’942 container is formed by sealing a
microporous layer with a low softening point to an inner laminate layer that also has a
low softening temperature. The district court looked only to the classes of materials
described in the patents and did not examine the softening points of the materials. It
therefore failed to recognize that Komatsu discloses the use of incompatible materials
where the ’942 patent requires compatible materials, and it therefore incorrectly
concluded that Komatsu teaches the same container as that claimed in the ’942 patent.
II
Süd-Chemie contends that secondary considerations, including unexpected
results, copying, and commercial success indicate that the invention of the ’942 patent
would not have been obvious to a person of skill in the art. The district court did not
explicitly address any of the secondary consideration evidence, other than to state that
the ’942 patent did not employ elements that worked together in an unexpected manner.
As we have repeatedly emphasized, evidence relating to secondary considerations
“constitutes independent evidence of nonobviousness” and can be quite instructive in
the obviousness inquiry. Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358,
1365 (Fed. Cir. 2008). The district court should therefore attend carefully to any
2008-1247 12
evidence of these secondary considerations of nonobviousness on remand. See Ruiz
v. A.B. Chance Co., 234 F.3d 654, 667 (Fed. Cir. 2000) (district court erred in failing to
consider or discuss evidence of secondary considerations).
Süd-Chemie focuses in particular on the evidence of unexpected results. In that
regard, Süd-Chemie argues that a person of skill in the art would not have expected
uncoated laminate and microporous films to form stronger bonds than adhesive-coated
films. In response to that argument, Multisorb contends that the ’942 patent’s mere
assertion that “[i]t has been surprisingly discovered that strong, laminated desiccant
packaging materials can be produced from uncoated microporous or nonwoven films” is
insufficient to establish an unexpected result. See ’942 patent, col. 4, line 67, through
col. 5, line 3.
Multisorb is correct that conclusory statements in a patent’s specification cannot
constitute evidence of unexpected results in the absence of factual support. See In re
Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). However, the ’942 patent provides evidence
pertaining to the allegedly unexpected advantages of uncoated over coated films beyond
its mere declaration that the results were surprising. Examples 1 and 2 of the ’942
patent describe embodiments of the desiccant container in which uncoated but
compatible laminate and microporous films formed seals with an average strength of
more than nine pounds per square inch. In contrast, Example 3 shows that coated but
incompatible films produced weaker bonds with a seal strength of only 2.77 pounds per
square inch. The specification therefore contains specific evidence pertinent to Süd-
Chemie’s contention that the use of uncoated films yields advantages over more
conventional combinations such as the incompatible surfaces disclosed in the Komatsu
2008-1247 13
patent. See Soni, 54 F.3d at 750 (specification contained more than a merely
conclusory assertion of unexpected results because it also provided data demonstrating
improved properties). The district court should consider that evidence, as well as any
contrary evidence offered by Multisorb, as it pertains to the obviousness inquiry. Of
course, evidence of unexpected results and other secondary considerations will not
necessarily overcome a strong prima facie showing of obviousness, see Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007), and we make no judgment as to the
probative value of Süd-Chemie’s evidence regarding the asserted secondary
considerations beyond emphasizing that the district court should take such evidence into
account when conducting its obviousness analysis.
III
The ’942 patent contains one independent claim and 11 dependent claims. The
district court’s summary judgment opinion only addressed claim 1, the ’942 patent’s sole
independent claim. Multisorb argues that the patent’s dependent claims are also invalid
as obvious, and Süd-Chemie challenges that assertion in its reply brief. Because Süd-
Chemie did not address the validity of the dependent claims in its summary judgment
motions below or in its opening brief on appeal, we will not consider its argument that the
patent’s dependent claims are valid regardless of the disposition of claim 1.
In summary, we hold that the district court erred in certain respects in the course
of ruling, on summary judgment, that the ’942 patent was invalid due to obviousness.
While, as indicated above, we agree with much of the district court’s treatment of the
differences between claim 1 of the ’942 patent and the prior art Komatsu patent, we
disagree with the court’s analysis in two important respects: (1) with regard to its
2008-1247 14
conclusion that Komatsu teaches using the same materials on the container’s inner
surfaces as those claimed in the ’942 patent; and (2) with regard to its treatment of the
evidence set forth in the ’942 specification that the use of compatible materials on the
container’s inner surfaces produces results that are significantly better than the
conventional sealing methods. Because our resolution of those issues may affect the
trial court’s ultimate decision whether summary judgment of obviousness is appropriate
in this case, we remand for further proceedings consistent with this opinion.
Each party shall bear its own costs for this appeal.
VACATED and REMANDED.
2008-1247 15