Crown Operations Intern., Ltd. v. Solutia Inc.
| Decision Date | 13 May 2002 |
| Docket Number | No. 01-1144.,01-1144. |
| Citation | 289 F.3d 1367 |
| Parties | CROWN OPERATIONS INTERNATIONAL, LTD. and Marshall H. Krone, Plaintiffs-Appellants, v. SOLUTIA INC., Defendant-Appellee. |
| Court | U.S. Court of Appeals — Federal Circuit |
Joseph T. Leone, DeWitt Ross and Stevens, S.C., of Madison, WI, argued for plaintiffs-appellants. With him on the brief was Joseph A. Ranney.
Gregory E. Upchurch, Thompson Coburn LLP, of St. Louis, MO, argued for defendant-appellee. With him on the brief were Kenneth R. Heineman, and Dudley W. Von Holt.
Before LOURIE, CLEVENGER, and GAJARSA, Circuit Judges.
Crown Operations International, Ltd., and Mr. Marshall H. Krone (collectively "Crown"), appeal the decision of the United States District Court for the Western District of Wisconsin denying Crown declaratory relief that Solutia's U.S. Patent No. 4,973,511 ("the '511 patent") is invalid for lack of novelty and non-obviousness, and that Solutia's U.S. Patent No. 5,091,258 ("the '258 patent") is invalid for lack of enablement and written description. Crown Operations Int'l, Ltd. v. Solutia, Inc., No. 99-C-802-S, slip op. at 8 (W.D.Wis. Aug. 30, 2000) () ("August 30 Order"); Crown Operations Int'l, Ltd. v. Solutia, Inc., No. 99-C-802-S, slip op. at 24, 27 (W.D.Wis. Aug. 22, 2000) (same) ("August 22 Order"). Because we find no error in the district court's opinion with respect to the '511 patent, we affirm that portion of the district court's decision. However, because the district court erred in its analysis of enablement for the '258 patent, and did not address the written description issue for the '258 patent, we vacate the district court's grant of summary judgment on that issue and remand for additional proceedings consistent with this opinion.
The patents at issue in this appeal relate to layered films used to create safety and solar control glass. An example is an automobile windshield. Most windshields have two layers of glass with a multi-layer film between the glass layers. The multi-layer film adds properties to the glass assembly, such as impact resistance or providing a conductive layer that facilitates defrosting the windshield. An inner layer of the film has solar control properties to selectively reflect, absorb (and thus convert to heat) or transmit defined percentages of certain wavelengths of light. This inner layer is called the solar control film. It is made of a substrate coated by one or more layers of metal or metallic substances. '511 patent, col. 3, l. 64 to col. 4, l. 2. Typically, manufacturers laminate the solar control film between layers of plasticized polyvinyl butyral ("PVB") (sometimes called the "safety film") in a process known as encapsulation. Then, the encapsulated solar control film is sandwiched between two pieces of glass for a final assembly of multi-layer glass with safety and solar control properties.
The '511 patent is directed to the problem that the metal-coated substrate, i.e., solar control film, tends to wrinkle during encapsulation causing visual distortions. The '511 patent claims to mask the wrinkles from detection by the human eye by limiting to two percent or less the visible light reflection contribution of the solar control film compared to reflection from a complete assembly of glass, PVB and solar control film. '511 patent, col. 4, ll. 46-49, col. 8, l. 66 to col. 9, l. 6, col. 14, l. 67 to col. 15, l. 2. Figure 1 from the '511 patent, set forth below, shows the layers in a complete assembly.
NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
The complete safety and solar control glass assembly 10 includes two outer glass layers 28 & 30, PVB layers 22 & 23, and the solar control film 20. The solar control film is comprised of a substrate layer 16 and solar control coating 18. '511 patent, col. 3, ll. 41-53, col. 7, ll. 2-4, col. 10, l. 15. Figure 3 from the '511 patent, set forth below, shows the sub-layers of the solar control coating 18.
NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
Layer 18 is made of multiple sub-layers. Layers 34 and 36 are metal oxide, and layer 38 is metal. '511 patent, col. 5, ll. 12-14. In addition, the '511 patent notes that "[p]rior automotive windshields have visible light reflection contributions for their solar films of three percent or greater." Further, it relates that the primary method of achieving a low solar control film reflectance contribution is by providing a specially-designed solar coating. '511 patent, col. 4, ll. 56-65.
On December 16, 1999, Crown sued Solutia (the "Initial Complaint"), seeking, among various other relief, a declaration that the '511 patent was invalid for anticipation and obviousness. Upon the parties' cross-motions for summary judgment, the district court found the '511 patent not anticipated and not invalid for obviousness. August 22 Order at 24, 27. We discuss herein only those portions of the August 22 Order relevant to the issues on appeal, which relate solely to the summary judgment finding that the '511 patent was not invalid on the grounds of anticipation and obviousness.
Claim 1, the only independent claim of the '511 patent, is set forth below, with the element numbers from Figure 1 inserted into the claim.
1. A composite solar/safety film [24] for use in a laminated window assembly [10] comprising:
a flexible, transparent plastic substrate layer [16] having a carrier surface and an opposing back surface;
a multilayer solar control coating [18] on said carrier surface, said coated substrate defining a solar control film [20]; and
at least one flexible, transparent, energy absorbing plastic safety layer [23 and/or 22] bonded to a surface of said solar control film;
wherein said solar control film contributes no more than about 2% visible reflectance, based on total visible incident radiation, in a laminated window assembly containing said composite solar/safety film laminated to at least one rigid transparent member [30 and/or 28].
'511 patent, col. 14, l. 57 to col. 15, l. 4 ().
Crown argued that U.S. Patent No. 4,017,661 to Gillery (the "Gillery patent") anticipates the '511 patent. The district court held otherwise, because, while the Gillery patent discloses the first three limitations of claim 1 of the '511 patent, it does not disclose the two percent visible reflectance limitation. The court found that neither the Gillery patent claims nor its description expressly disclose a two percent limit on reflectance contribution from the solar control film layer. Crown argued that the two percent limitation was inherently present in the Gillery patent's teachings because the Gillery patent disclosed an assembly with PVB layers, substrate layer, and substrate metal-coating — arguably of the same composition and thickness of the films disclosed by the '511 patent. Thus, Crown argued, because the structure, thickness and materials of the assembly were the same or within the same range(s), the Gillery patent must inherently disclose a two percent limitation. The district court rejected this argument because it found that none of the embodiments disclosed by the Gillery patent meet the two percent visible light reflectance limit.1
In its August 22 Order, the district court also held that the '511 patent was not rendered invalid for obviousness by Gillery or the other prior art cited by Crown because no prior art discloses: (i) that reflectance below two percent will mask wrinkles; (ii) a solar control film layer with reflectance below two percent; or (iii) any suggestion, motivation or teaching to reduce solar control film visible light reflectivity below two percent. Although the prior art generally sought to reduce visible light reflectivity, it also taught disadvantages of a very thin metal-coating on the substrate, including sacrificing infrared reflectivity. Thus, it taught that the proper compromise to achieve the conflicting goals of infrared (non-visible light) reflectance, visible light transmission and conductivity was a solar control film with a visible light reflectivity greater than two percent.
The '258 patent is directed at eliminating optical distortion, called "applesauce," in safety and solar control glass assemblies of the type discussed above for the '511 patent. The '258 patent discloses a method to control distortion otherwise caused by the safety and solar film layer by measuring and controlling the texture of the surface of the PVB layers. The method expresses texture using a "wave index" and a "roughness value." The wave index calculation is at issue in this appeal. Wave index indicates the relative waviness of the surface of the PVB. Determining wave index involves measuring the surface of the PVB and then aggregating the measurements into a single number, the wave index, through a calculation purportedly described in the '258 patent.
The '258 patent directs one to use an instrument to physically measure the waviness of the surface of the PVB and capture the measurement into an electronic "trace line" representing the contours of the PVB surface. '258 patent, col. 7, II. 54-65. Since the "trace line" is stored electronically, a computer program is used to calculate wave index from the trace. Three figures from the '258 patent, given below, provide examples of PVB surface trace lines.
The rules for calculating the wave index implement a "smoothing" function. The smoothing process seeks to eliminate minor inflection points (peaks or valleys) to simplify the calculation of wave index. '258 patent, col. 7, I. 66 to col. 8, I. 2.
In the Initial Complaint, Crown sought a...
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