3M Innovative Props. Co. v. Tredegar Corp.

• Decision Date: 06 August 2013
• Docket Number: No. 2012–1241.,2012–1241.
• Citation: 725 F.3d 1315
• Parties: 3M INNOVATIVE PROPERTIES COMPANY and 3M Company, Plaintiffs–Appellants, v. TREDEGAR CORPORATION and Tredegar Film Products Corporation, Defendants–Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

725 F.3d 1315

3M INNOVATIVE PROPERTIES COMPANY and 3M Company, Plaintiffs–Appellants,

v.TREDEGAR CORPORATION and Tredegar Film Products Corporation, Defendants–Appellees.

No. 2012–1241.

United States Court of Appeals, Federal Circuit.

Aug. 6, 2013.

Jonathan F. Cohn, Sidley Austin LLP, of Washington, DC, argued for plaintiffs-appellants. With him on the brief were Carter G. Phillips and Brian P. Morrissey.

Charles K. Verhoeven, Quinn Emanuel Urquhart & Sullivan LLP, of San Francisco, CA, argued for defendants-appellees. With him on the brief were Christopher E. Stretch, Emily C. O'Brien and Aaron J. Bergstrom. Of counsel on the brief was Kurt J. Niederluecke, Fredrickson & Byron, P.A., of Minneapolis, MN.

Before O'MALLEY, PLAGER, and REYNA, Circuit Judges.

Opinion for the court filed by Circuit Judge REYNA.

Concurring opinion filed by Circuit Judge PLAGER.

Concurring-in-part and dissenting-in-part opinion filed by Circuit Judge O'MALLEY.

REYNA, Circuit Judge.

This appeal deals with claim construction disputes arising out of 3M Innovative Properties Company and 3M Company's (collectively, “3M”) allegations of patent infringement brought against Tredegar Corporation and Tredegar Film Products Corporation (collectively, “Tredegar”) in the United States District Court for the District of Minnesota (“district court”). 3M competes in the elastomeric laminate industry with Tredegar. 3M is a global manufacturing company that sells laminate products such as diapers. Tredegar is a supplier of breathable and nonwoven film laminates for personal care products, including baby diapers, training pants, and adult incontinence products.

The district court construed claim terms in four asserted patents. After claim construction, the parties stipulated to noninfringement. 3M appeals the district court's construction for four of the thirty disputed claim terms or groups of terms. We affirm the appropriate scope of the claim terms “continuous contact” and “continuous microtextured skin layer over substantially the entire laminate,” but clarify the appropriate scope of those claim terms. We reverse the district court's claim constructions relating to the terms grouped as “preferential activation zone” and the term “ribbon.” Because the district court erroneously limited certain claim terms in a manner that is inconsistent with the intrinsic disclosures, we provide the appropriate constructions, vacate those constructions that are inconsistent with the analysis herein, and remand for further proceedings.

I. Background

A. Technical Overview

The patents-in-suit relate to multi-layer elastomeric laminates found in the body-hugging areas of products such as the waistband or side tabs of disposable diapers or adult incontinence products. The claims disclose stretchable films or laminates that, once affixed to the diaper, allow the product to expand to fit around the person wearing them with the laminate stabilizing to recover its shape once stretching is complete.

The elastomeric nature of the laminate is discussed in all four patents. ¹United States Patent Nos. 5,501,679 (“the '679 Patent”) and 5,691,034 (“the '034 Patent”)—the Krueger Patents—share a largely identical written description and are directed to laminates with “continuous” microtexturing over the laminate's skin layer. See ' 034 Patent col. 28 ll. 40–45; ' 679 Patent col. 3 ll. 15–45. United States Patent Nos. 5,468,428 (“the '428 Patent”) and 5,344,691 (“the '691 Patent”)—the Hanschen Patents—are directed—to laminates in which the elastic or stretching portions of the skin layer are limited to selected areas identified as “preferential activation zones,” with the adjacent regions of the skin layer remaining inelastic. See ' 691 Patent col. 8 ll. 6–59.

The internal core and surrounding skin layers are central to the claimed inventions. E.g., '679 Patent col. 4 ll. 46–51. col. 15 ll. 15–17. One or more inelastic skin layers are outside an elastic or stretchable core layer. The flanking skin layers protect the elastomers in the core from degrading when exposed to oxygen. Depicted below is a scanning electron micrograph (100x) of the core and skin layers as seen in the written description of the Hanschen Patents. See '679 Patent col. 4 ll. 15–17.

IMAGE

In the absence of stretching, the core and skin layers are intact. But, when the laminate is stretched, folds form where the skin meets the core and the folding alters the surface texture. See '034 Patent col. 11 ll. 50 to col. 12 l. 4 (describing the folds as “buckled” or as appearing “worm-like” in character). The folds in the skin give rise to a microtextured surface. A side-by-side comparison of Figures 1 and 2, cross-sectional laminate drawings, illustrates the changes that occur during stretching In Figure 1 the core and skin layers are tightly bound, while in Figure 2, stretching has resulted in microtexturing of the laminate, seen as folds between the skin and core layers:

IMAGE

'034 Patent col. 3 ll. 42–46, col. 10 ll. 62–65. The microtexturing that occurs upon stretching provides elasticity, durability, and gives the expanded garment a soft feel. Id. at col. 11 ll. 35–42, col. 13 ll. 1–8, col. 13 ll. 22–30.

Both the Krueger and Hanschen Patents address problems resulting from the inflexibility of the materials used in the prior art to manufacture a diaper waistband or the protective back sheet or top sheet of a diaper. See, e.g., ' 034 Patent col. 3 ll. 1–8; see also '691 Patent col. 2 ll. 12–14 (“Problems with these elastomeric films include the difficulties inherent in applying a stretched elastic member to a flexible substrate such as a disposable diaper.”). For example, the Krueger Patent disclosure explains that the lack of flexibility in earlier laminates results in an uncomfortable stiffness that can cause the material to “bite” or “grab” the wearer of the diaper. '679 Patent col. 3 ll. 6–11.

Additional problems were discussed with the PTO examiner during prosecution. In the application that later issued as the '679 Patent, the examiner considered U.S. Patent No. 4,880,682 (“Hazelton”) and U.S. Patent No. 5,057,097 (“Gesp”) and noted that “neither Gesp nor Hazelton et al. disclose films capable of recovering slowly over time at ambient conditions or capable of substantial heat activated recovery” as claimed in the '679 Patent application. J.A. 1257. In these prior art laminates, the outer skin layers deformed when stretched; the deformation impeding recovery because there was only intermittent contact between the skin and the core. E.g. J.A. 1526; see also J.A. 1257. 3M maintains that separated skin and core layers exposed the core to oxidation, thereby decreasing the effectiveness of earlier films.

The Krueger Patents overcome some of the problems associated with robust stretching by allowing the laminate to recover following deformation. The “continuouscontact” between the layers allows for recovery from deformation because the microtexturing— i.e. folds in the skin layer—allows the laminate to withstand the compromising effects of the skin and core being pulled apart. Claim 1 in the '034 Patent recites the arrangement of the layers:

1. An elastomeric laminate consisting essentially of at least one elastomeric layer and at least one continuous microtextured skin layer over substantially the entire laminate wherein:

(a) the microtexture on said skin layer is formed by stretching an untextured laminate past the deformation limit of at least one untextured skin layer and allowing the stretched laminate to elastically recover over the entire region stretched and

(b) said at least one elastomeric layer and said at least one continuous microtextured skin layer are in substantially continuous contact.

'034 Patent col. 28 ll. 40–45. Claim 1 of the '679 Patent provides additional detail as to the nature of the micro-texturing found on the skin layer that is in “continuous contact” with the elastic core layer:

1. A garment comprising a body engaging area said body engaging area comprising an elastomeric laminate comprising at least one discrete elastomeric layer and at least two discrete continuous skin layers at least one of which is a microtextured permanently deformed polymeric layer wherein the materials forming the elastomeric layer and the materials forming the polymeric layer are selected such that said at least one elastomeric layer and said at least one microtextured skin layer are in continuous contact.

'679 Patent col. 28 l. 61 to col. 29 l. 2.

The Hanschen Patents depart from the Krueger Patents in that they teach a laminate with “preferential activation zones.” As explained in the '691 Patent disclosure, the laminates claimed in the Hanschen Patents “are capable of becoming microtextured at specified areas along the laminate length.” ' 691 Patent col. 3 ll. 11–13. The microtextured areas correspond to sections of the laminate that have been “activated from an inelastic to an elastomeric form.” Id. col. 3 ll. 13–15. The Hanschen Patents thus limit elasticity to specific areas claimed as “preferential activation zones.” Claim 1 of the ' 691 Patent is representative of the claims relating to “preferential activation zone.” Claim 1 states:

1. A multi-layer film laminate comprising at least one nonelastomeric skin film layer and at least one core film layer, the at least one skin film layer and the at least one core film layer together forming at least one preferential activation zone where the film laminate will preferentially elongate when stretched, wherein said at least one core film layer is substantially elastomeric, each of said core and skin layers being substantially coextensive and having relatively constant average thickness over both the at least one preferential activation zone and an at least one adjacent non-preferential activation zone such that, for a given skin or core layer, the skin or core layer thickness in one zone will be substantially the same as the same skin or core layer...