Arcade, Inc. v. Minnesota Min. and Mfg. Co.

• Decision Date: 16 June 1993
• Docket Number: 91-1459,Nos. 91-1458,s. 91-1458
• Citation: 1 F.3d 1253
• Parties: NOTICE: Federal Circuit Local Rule 47.6(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order. ARCADE, INC., Plaintiff/Cross-Appellant, v. MINNESOTA MINING AND MANUFACTURING COMPANY, Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1253

1 F.3d 1253

NOTICE: Federal Circuit Local Rule 47.6(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order.

ARCADE, INC., Plaintiff/Cross-Appellant, v. MINNESOTA MINING AND MANUFACTURING COMPANY, Defendant-Appellant.

Nos. 91-1458, 91-1459.

United States Court of Appeals, Federal Circuit.

June 16, 1993.

Before ARCHER, PLAGER, and CLEVENGER Circuit Judges.

ARCHER, Circuit Judge.

DECISION

Minnesota Mining and Manufacturing Company (3M) appeals from the Order and Memorandum of the United States District Court for the Eastern District of Tennessee (CIV-1-88-141, July 2, 1991). The district court, inter alia, held U.S. Patent Reissue No. 33,299 ('299 reissue patent) owned by 3M invalid and unenforceable, sustained jury verdicts of libel and antitrust violations against 3M and awarded attorney fees to Arcade, Inc. (Arcade). Arcade cross-appeals from the same order, in so far as it granted 3M's motion for JNOV and held that the jury improperly found that one of Arcade's products did not infringe the '299 patent. We affirm. ¹

DISCUSSION

A. 3M appeals the determination that claim 20 of the '299 reissue patent is invalid under 35 U.S.C. Sec. 102(b) as anticipated by the prior art fragrance samplers. 3M asserts that the term "coated paper" as used in claim 20 does not include matte coated paper because the term is limited to glossy coated paper. It, therefore, cannot be anticipated by the prior art fragrance samplers in evidence which disclose only matte coated paper.

Claim interpretation is a matter of law, which we review de novo. Specialty Composites Corp. v. Cabot Corp. 845 F.2d 981, 986, 6 USPQ2d 1601, 1605 (Fed.Cir.1988). As the district court determined, the term "coated paper" is not defined in the patent, either in the claims or the specification, as limited to glossy coated paper. Nor has 3M pointed to anything in the prosecution history suggesting that the definition of "coated paper" is so limited. It contends only that persons skilled in the fragrance sampler art would know that glossy paper was meant by the claims term "coated paper." However, there was also evidence at trial that "coated paper" includes matte coated paper. As the district court stated:

The clear weight of the trial testimony together with the trial exhibits shows that matte-coated paper is indeed a type of coated paper, just as are glossy and dull coated papers. Furthermore, matte-coated paper is susceptible of high quality printing in the printing and advertising trade.

We are not convinced that the district court erred in holding that Claim 20 does not exclude matte coated paper from its coverage and that it is anticipated by the prior art samplers. ²

B. 3M also appeals the district court's holding that claims 28-30 are invalid as obvious in view of the prior art. The only difference between the scope and content of the prior art and the invention recited in claims 28-30 is that the prior art has only one surface of coated paper, while the claims require two surfaces of coated paper. Evidence was presented that at the time of the invention advertisers were requesting fragrance samplers produced by placing a slurry between two surfaces of coated paper. Although a problem was encountered when the slurry used for samplers with only one sheet of coated paper was placed between two sheets of coated paper, the evidence supports the conclusion that one of ordinary skill in the fragrance sampler art would have easily known how to overcome the problem. The court found that one of ordinary skill would know that weaker binders could be selected to alleviate the paper tearing and that viscosifiers could be used to make the weaker binder spread evenly. Based on these findings and conclusions we discern no error in the district court's holding that claims 28-30 would have been obvious under 35 U.S.C. Sec. 103 and are therefore invalid.

C. 3M next appeals the determination of inequitable conduct during the prosecution of the '299 reissue patent, and U.S. Patent No. 4,720,417 ('417 Patent), which was surrendered in the '299 reissue proceeding. This court reviews the district court's ultimate conclusion of inequitable conduct under an abuse of discretion standard and underlying factual findings under the clearly erroneous standard. See Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1215, 18 USPQ2d 1016, 1031 (Fed.Cir.1991).

Intent to deceive the PTO by failing to...