3M Innovative Prop. v. Avery Dennison C.

• Decision Date: 02 December 2003
• Docket Number: No. 03-1203.,03-1203.
• Parties: 3M INNOVATIVE PROPERTIES COMPANY and Minnesota Mining and Manufacturing Company, Plaintiffs-Appellants, v. AVERY DENNISON CORPORATION, Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

350 F.3d 1365

3M INNOVATIVE PROPERTIES COMPANY and Minnesota Mining and Manufacturing Company, Plaintiffs-Appellants, v. AVERY DENNISON CORPORATION, Defendant-Appellee.

No. 03-1203.

United States Court of Appeals, Federal Circuit.

Decided: December 2, 2003.

Rehearing and Rehearing En Banc Denied January 20, 2004.

COPYRIGHT MATERIAL OMITTED

Frank P. Porcelli, Fish & Richardson, P.C., of Boston Massachusetts, argued for plaintiffs-appellants. With him on the brief were Frank E. Scherkenbach, Robert E. Hillman, Gregory A. Madera, and Kurt L. Glitzenstein; and John C. Adkisson, Fish & Richardson, P.C., of Minneapolis, Minnesota. Of counsel on the brief was Kevin H. Rhodes, 3M Innovative Properties Company, of St. Paul, Minnesota.

Roderick G. Dorman, Hennigan, Bennett & Dorman LLP, of Los Angeles, California, argued for defendant-appellee. With him on the brief were Lawrence M. Hadley and Armand F. Ayazi. Of counsel on the brief was Jay R. Campbell, Renner Otto Boisselle & Sklar, of Cleveland, Ohio.

Before MICHEL, CLEVENGER and LINN, Circuit Judges.

Opinion for the court filed by Circuit Judge CLEVENGER. Dissenting opinion filed by Circuit Judge MICHEL.

CLEVENGER, Circuit Judge.

Plaintiffs-Appellants 3M Innovative Properties Company and Minnesota Mining and Manufacturing Company (collectively "3M") sued Defendant-Appellee Avery Dennison ("Avery") for infringement of claim 1 of U.S. Patent No. 5,897,930 ("the '930 patent") in the United States District Court for the District of Minnesota. After construing disputed claim terms, the district court entered summary judgment in favor of Avery, concluding that Avery did not infringe, as a matter of law, the '930 patent either literally or under the doctrine of equivalents. We reverse the district court's claim construction, vacate its summary judgment and remand for further proceedings not inconsistent with this opinion.

I

3M and Avery compete in the market for adhesive-based products for the commercial graphics industry. In our increasingly image-suffused world, this industry seems to have targeted all available surfaces in public places, including the exterior of busses, trucks and other vehicles, as appropriate locations for advertising images. So that these advertisements may be efficiently and pervasively placed on such diverse surfaces, images are pre-printed onto sheets of adhesive-backed film. These films, like bumper stickers, have release liners that can be stripped off to reveal a pressure sensitive adhesive just prior to affixation of the image.

Even one of skill in the art of sticking films on surfaces can experience difficulties. Correct positioning of a large image may require repeated adjustments, and if the film is not initially placed in precisely the desired position, removing the film and repositioning it is likely to damage the film and mar the sought-after image. Additionally, pockets of air, in the form of bubbles or blisters, may become entrapped between the film and the surface if the two are not mated perfectly.

The '930 patent describes a release liner that, according to 3M, avoids these positioning and air-entrapment difficulties. Also according to 3M, Avery's EZ Film liner infringes the claims of the '930 patent in the features it uses to provide these benefits.

II

As implicated in the current litigation, the '930 patent "relates to embossed webs useful as liners for pressure sensitive adhesives." '930 patent, col. 1, ll. 5-7. When used as a "release liner," the "embossed web" is the adhesive-protective layer that is removed from the back of the film to expose the adhesive. More specifically, the '930 patent addresses embossed webs that are manufactured with a particular type of three-dimensional configuration or "topography" that are useful insofar as they fashion an obverse topography in the exposed adhesive.

Only independent product claim 1 of the '930 patent is at issue in this appeal, and it reads as follows:

1. A carrier web, comprising: at least one surface that has a multiple embossed pattern having a first embossed pattern and a second embossed pattern, wherein the first embossed pattern forms an array of depressions, wherein the depressions of the first embossed pattern are in the second embossed pattern, wherein the second embossed pattern comprises lands and ridges between the lands, and wherein the height of the ridges over the lands ranges from about 3 to about 45 m.

(emphasis added).

In the preferred embodiment, the first and second embossed patterns each serves a different function. The "depressions" of the first embossed pattern in the web enhance the film's positionability. They result in protruding bumps in the exposed adhesive, minimizing the surface area of the initial points of contact between the adhesive and the substrate and increasing the ease with which the image-imprinted film can be positioned after initial contact but before complete adhesion. Additionally, if nonadhesive granules, such as glass beads, are placed in the depressions prior to the web being coated with adhesive, the granules stick to the adhesive when the liner is removed, creating nonadhesive bumps and further increasing positionability. In contrast, the "ridges" in between the "lands" of the second embossed pattern in the web result in a network of valleys in the exposed adhesive. Because these valleys create channels through which air can flow even after the film has adhered to the substrate, air that would otherwise become trapped as air bubbles due to imperfect application of the film can escape.

Independent method claim 6 is also relevant to this appeal, although 3M does not allege that Avery has infringed it. Claim 6 provides:

A method of embossing, comprising the steps of:

(a) embossing a carrier web having at least one surface with a first pattern, to create a first pattern of depressions;

(b) embossing the surface with a second pattern, to create a second pattern of depressions comprising lands and ridges;

wherein the depressions created from the first embossing step are substantially preserved during the second embossing step even though the second embossing step superimposes the second pattern on the depressions created by the first embossing step, and wherein the height of the ridges over the land ranges from about 3 to about 45 m.

The specification provides several definitions for terms used in claim 1, two of which are relevant here:

"Embossed" means a topography on a web or on tooling having an effective three-dimensional pattern that generates a difference in surface planar dimension in the liner or the tooling.

* * *

"Multiple embossed" means two or more embossing patterns are superimposed on the web to create a complex pattern of differing depths of embossing.

'930 patent, col. 1, ll. 61-64, col. 2, ll.1-3.

III

Avery's accused product is its EZ Film, an adhesive-backed graphics film with both positionability and air-egress features. The EZ Film liner is created by first depositing or printing polyurethane "ink" dots (the "PU dots") on top of the liner's outer polyethylene layer (the "PE layer") and then embossing a pattern of hexagonal ridges and lands in the liner when the PU/PE combination passes over an embossing roll. This hexagonal pattern in the liner creates air-egress-enabling channels in the adhesive layer when the liner is removed. At some point (or points) in the manufacturing process, the PU dots are pressed into the PE layer of the liner.¹ When the liner is removed from the adhesive layer, the PU dots remain affixed to the adhesive, creating less-adhesive, positionability-enhancing bumps.

IV

3M alleges that the Avery EZ Film liner infringes the '930 patent because the dents in the PE layer of the liner (created when the PU dots are embedded) constitute a "first embossed pattern," the hexagonal pattern constitutes a "second embossed pattern," and because all remaining claim limitations are satisfied.

In its first order, the district court construed claim 1 of the '930 patent and denied 3M's plea for a preliminary injunction on the ground, among other things, that 3M had not demonstrated a likelihood of success on the merits of its infringement claim. See 3M Innovative Props. Co. v. Avery Dennison Corp., 185 F.Supp.2d 1031, 1037-41 (D.Minn.2002) ("3M I"). In a second order ruling on Avery's motion for summary judgment of noninfringement, the district court adopted the claim construction from 3M I, see 3M Innovative Props. Co. v. Avery Dennison Corp., No. Civ.01-1781 (DSD/FLN), 2002 WL 31628395, at *3 & n. 2 (D.Minn. Oct.19, 2002) ("3M II"), and granted Avery's motion, id. at *7.

In 3M I, the district court construed two terms from claim 1. First, construing the term "multiple embossed pattern," the district court held that "[w]hile the language of the claim does not mention the word `sequential,' it nevertheless illustrates that the term `multiple embossed pattern' requires sequential embossments." 185 F.Supp.2d at 1038. To arrive at this conclusion the district court relied on its view of the plain meaning of "first" and "second" and characterized the definition of "multiple embossed" in the specification as evidence of the claim's product-by-process nature. Id. at 1038-39. Second, the court relied on the specification's express definition of the term "embossed," as well as a source that the district court treated as a technical dictionary,² to construe it to mean "a topography created on material by impressing a corresponding inverse topography on its surface." Id. at 1040-41.

In 3M II, the district court concluded that the Avery EZ Film liner did not, as a matter of law, literally infringe claim 1 because the accused product was manufactured using an "embedding" process and the product resulting from such an embedding process was not "embossed" as per the definition given to that term during claim construction. 3M II, 2002 WL 31628395, at *4. Moreover, the PU dots printed onto...