Polyclad v. MacDermid, et al.

2001 DNH 166

• Court: District Court, D. New Hampshire
• Decided: September 12, 2001
• Docket: CV-99-162-M
• Status: Published

Opinion

Polyclad v. MacDermid, et a l . CV-99-162-M 09/12/01 UNITED STATES DISTRICT COURT

DISTRICT OF NEW HAMPSHIRE

Polvclad Laminates, Inc., and Fry Metals, Inc., d/b/a PC Fab Division of Alpha Metals, Inc., Plaintiffs

v. Civil No. 99-162-M Opinion No. 2001 DNH 166 MacDermid, Inc., Defendant

O R D E R

This is an action for patent infringement in which

plaintiffs. Polyclad Laminates, Inc. and Fry Metals, Inc.

(collectively, "Polyclad") claim that a manufacturing process

employed by MacDermid, Inc. violates United States Patent No.

5, 800, 859 (the "''859 patent"). On August 27 and 28, 2001, the

court conducted a Markman hearing, at which the parties presented

evidence and argument in support of their respective

constructions of various terms used in claim 1 of the '859

patent. See Markman v. Westview Instruments, Inc., 517 U.S. 370

(1996) . Discussion

I. The '859 Patent.

The ''859 patent teaches a process for copper coating printed

circuit boards, in which a metal surface is treated in a manner

that promotes the adhesion of alternating layers of conducting

(e.g., copper) and non-conducting materials. It consists of 1

independent claim and 31 dependent claims. Claim 1, the sole

independent claim, teaches:

A process for treating a metal surface to promote adhesion thereto, comprising contacting the metal surface with an adhesion promotion composition comprising 0.1 to 20% by weight hydrogen peroxide, an inorganic acid, an organic corrosion inhibitor, and a surfactant to form a microroughened conversion-coated surface, and adhering a material to the microroughened conversion coated surface.

The '859 patent, claim 1 (column 9, lines 60-67) (emphasis

supplied).

The parties disagree as to the meaning of the terms

"surfactant" and "microroughened," as they are used in claim 1.

Additionally, although claim 1 specifies the use of a generic

2 "surfactant," MacDermid says it implicitly requires the use of a

cationic surfactant - that is, a surfactant bearing a positive

ionic charge.

II. Applicable Legal Standard Governing Claim Construction.

Patent infringement analysis involves two steps: first, the

proper construction of the asserted claim; and second, a

determination as to whether the accused method or device

infringes the asserted claim as properly constructed. See

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1581-82

(Fed. Cir. 1996) (citing Markman v. Westview Instruments, Inc.,

52 F .3d 967, 979 (Fed. Cir. 1995), aff'd , 517 U.S. 370 (1996)).

Step one of that process - claim construction - is a question of

law to be resolved by the court. See Pitney Bowes, Inc. v.

Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999). The

second step - the determination of whether the accused process or

device infringes the patent - is a question of fact. Id. At

this stage of the litigation, the court is focused exclusively on

3 the first step: properly construing the meaning and scope of

claim 1 of the ''859 patent.

To construe patent claims generally means to ascertain the

meaning of those claims in light of the intrinsic evidence of

record, which includes: the claims, the specification, and the

prosecution history. See Vitronics, 90 F.3d at 1582.

Occasionally, extrinsic evidence may be considered as well.

Extrinsic evidence is external to the patent, "such as expert

testimony, inventor testimony, dictionaries, and technical

treatises and articles." Pitney-Bowes, 182 F.3d at 1308 (citing

Vitronics, 90 F.3d at 1584) .

To give proper effect to disputed technical terms in a

patent, a court must construe them in the same manner that they

would be construed by those skilled in the art. See Hoechst

Celanese Corp. v. BP Chemicals Ltd., 78 F.3d 1575, 1578 (Fed.

Cir. 1996) ("A technical term used in a patent document is

interpreted as having the meaning that it would be given by

4 persons experienced in the field of the invention, unless it is

apparent from the patent and the prosecution history that the

inventor used the term with a different meaning."). Here,

nothing suggests that the term "surfactant" is used in the ''859

patent in any way other than as it is commonly understood by

those skilled in the relevant art. The parties agree that a

person skilled in the relevant art would hold a basic degree in

chemistry or chemical engineering, or have equivalent work

experience in the printed circuit board field on the chemical

formulation side.

In Vitronics, the court observed that, "In most situations,

an analysis of the intrinsic evidence alone will resolve any

ambiguity in a disputed claim term. In such circumstances, it is

improper to rely on extrinsic evidence." Id., at 1583.

Nevertheless, even when the patent language itself is

unambiguous, the court may still consider extrinsic evidence for

certain limited purposes.

5 Vitronics does not prohibit courts from examining extrinsic evidence, even where the patent document is itself clear. Moreover, Vitronics does not set forth any rules regarding the admissibility of expert testimony into evidence. Certainly, there are no prohibitions in Vitronics on courts hearing evidence from experts. Rather, Vitronics merely warned courts not to rely on extrinsic evidence in claim construction to contradict the meaning of claims discernible from thoughtful examination of the claims, the written description, and the prosecution history - the intrinsic evidence.

Pitney Bowes, 182 F.3d at 1308 (citations omitted) (emphasis

supplied). Consequently, the court concluded:

Thus, under Vitronics, it is entirely appropriate, perhaps even preferable, for a court to consult trustworthy extrinsic evidence to ensure that the claim construction it is tending to from the patent file is not inconsistent with the clearly expressed, plainly apposite, and widely held understandings in the pertinent technical field. This is especially the case with respect to technical terms, . . . . Indeed a patent is both a technical and a legal document. While a judge is well-equipped to interpret the legal aspects of the document, he or she must also interpret the technical aspects of the document, and indeed its overall meaning, from the vantage point of one skilled in the art. Although the patent file may often be sufficient to permit the judge to interpret the technical aspects of the patent properly, consultation of extrinsic evidence is particularly appropriate to ensure that his or her understanding of the technical

6 aspects of the patent is not entirely at variance with the understanding of one skilled in the art.

Id., at 1309 (emphasis supplied). See also Key Pharmaceuticals

v. Hereon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998) . In

this case, the court has relied upon the expert testimony

presented by the parties to provide a general understanding of

the chemical processes at work in the ''859 patent, as well as

information regarding how surfactants function and how they are

typically used in industrial chemistry and, more particularly, in

the field of printed circuit board manufacturing.

III. Claim Construction.

A. Surfactant.

Broadly speaking (and with some discrete exceptions), a

surfactant is any substance that, when added to a liquid,

operates to reduce the liquid's surface tension to any degree.

The question presented in this case is whether the term, as used

in the ''859 patent, has a more limited and functional definition.

Polyclad says it does not and urges the court to adopt something

7 akin to the broad definition set forth above or a similarly all-

inclusive definition that one might find in almost any non­

technical dictionary.

MacDermid, on the other hand, says that to those skilled in

the relevant art, the word "surfactant" has a generally accepted

meaning, and reliance upon a non-technical dictionary to

ascertain that meaning would be inappropriate. It argues that

while many additives of varying types will reduce the surface

tension of a liquid, when the word "surfactant" is used in this

particular field (and in industrial chemistry generally), it has

a more focused (and widely understood) meaning.1 Accordingly,

MacDermid urges the court to adopt a technical definition that

1 For example, at the Markman hearing, coffee was repeatedly discussed as a substance that will reduce the surface tension of an aqueous solution. Ethanol is another example. Critically, however, neither works to dramatically reduce the surface tension when introduced in very low concentrations. Consequently, while both exhibit "surfactant-like" behavior in that they reduce the surface tension of an aqueous solution by some modest (though measurable) amount when added in sufficient quantities, neither falls within the scope of the term "surfactant" as it is used in the ''859 patent. specifically identifies several essential characteristics it says

are shared by all industrial surfactants, and which are generally

understood by those skilled in the relevant art to be possessed

by industrial surfactants. Under MacDermid's proposed

definition, a surfactant must, among other things, have an

amphipathic structure, form micelles at sufficiently high

concentrations, and adsorb or concentrate at phase interfaces.

At a minimum, says MacDermid, the court should construe the term

surfactant in a manner that, unlike Polyclad's proposed

construction, adequately distinguishes between: (1) substances

that are widely known and employed in the relevant field to

dramatically reduce the surface tension of aqueous solutions; and

(2) the universe of substances which, when added to an aqueous

solution (in sufficiently high concentrations), will operate to

lower the solution's surface tension to some measurable degree

(including, for example, routine impurities or contaminants).

While both parties have presented plausible, well-supported

arguments, the court concludes that the proper construction of

9 the term lies closer to the position advocated by MacDermid. As

used in the ''859 patent, "surfactant" plainly has a meaning that

is more focused than that ascribed to it in non-technical

dictionaries, and more precise than a hyper technical

construction that would include virtually any additive that has

any propensity to lower the surface tension of any solution. See

generally Bell Atlantic Network Service, Inc. v. Covad

Communications Group, Inc., ___ F.3d ___, 2001 WL 931103 at *6

(Fed. Cir. Aug. 17, 2001) ("[W]e have previously cautioned

against the use of non-scientific dictionaries 'lest the

dictionary definitions . . . be converted into technical terms of

art having legal, not linguistic significance.'") (quoting

Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478

(Fed. Cir. 1998)). Having reviewed the intrinsic evidence of

record and having considered the expert testimony presented by

the parties to inform its understanding of the field of chemistry

as it relates to the printed circuit board manufacturing

industry, the court concludes that the term "surfactant," as used

10 in the ''859 patent and as properly construed, means and would be

understood by a person skilled in the relevant art to mean:

a substance that, when introduced into a liquid solution at comparatively low concentrations, dramatically reduces the surface tension of that solution or the interfacial tension between the solution and another surface. Typically, though not necessarily, surfactants have an amphipathic structure - that is, a hydrophobic tail and a hydrophilic head - and, at equilibrium, the concentration of the surfactant at a phase interface is greater than its concentration in the bulk of the solution. By way of example, when introduced at concentrations of less than one percent, "surfactants," as that term is used in the ''859 patent, will reduce the surface tension of pure water (at room temperature) to at least 45 dynes/cm or less.

The essential characteristic of a surfactant, then, is its

effect, at low concentrations, of dramatically reducing surface

tension (i.e., by an amount substantially greater than would be

expected based solely on its concentration) - a characteristic

that is most typically the product of an amphipathic structure.

11 B. Microrouqhened.

The parties also disagree as to the meaning of the word

"microroughened," as it is used in the ''859 patent. As noted

above, claim 1 of the patent teaches a means by which to treat a

metal surface to promote adhesion. It provides that by exposing

a metal surface to certain specified chemicals, a

"microroughened, conversion-coated surface" is created. The

parties agree that "conversion coated" means "a superficial layer

on a metallic surface, formed by a chemical reaction of the

surface metal, which is a complex of the metal and some portion

of the reacting media, and has altered physical and chemical

properties." See Plaintiffs' claim construction memorandum

(document no. 132) at 59. The ''859 patent repeatedly refers to

this "conversion coat" as a "film" that is formed on the surface

of the underlying metal substrate. See, e.g., ''859 patent,

column 8, lines 41-47.

MacDermid argues that microroughened should be construed to

mean, "a metallic surface on a circuit board that has undergone

12 some chemical removal of the surface metal, for a time less than

would remove all of the metal from the surface." Defendant's

claim construction memorandum (document no. 131) at 22 (emphasis

supplied). That construction of the term is, however, at odds

with the plain and unambiguous language of the ''859 patent.

While MacDermid urges the court to essentially equate

"microroughened" with "microetched," the terms are not

synonymous, and the ''859 patent unequivocally distinguishes the

two concepts. See, e.g., ''859 patent, column 8, lines 35-51

(describing the microetching process taught by prior art and

noting that the "mechanism of the process described in the

present invention is quite different.").

Rather than removing a portion, but not all, of the metal's

surface (i.e., "etching"), the process taught by the ''859 patent

(1) creates a conversion-coated surface (i.e., film) on the

metal; and (2) that film is characterized by a microroughened

topography, which the patent describes as having the appearance

of "cracked mud" when viewed under magnification. ''859 patent. column 8, line 46. Thus, the term "microroughened," as used in

the ''859 patent and as properly construed, describes the

roughened topography of the film or "conversion coat" that is

formed on the surface of the underlying metal. Contrary to

MacDermid's suggestion, it does not describe the topography of

the underlying metal itself.

C. The Surfactant's Ionic Charge.

Finally, although it did not press the argument at the

Markman hearing, MacDermid says (in its claim construction

memorandum) that the process taught by the ''859 patent implicitly

requires the use of a cationic surfactant. The court disagrees.

Claim 1 of the patent (the sole independent claim) teaches the

use of a surfactant with a non-specifled ionic charge (i.e., the

surfactant might be negatively charged or "anionic," positively

charged or "cationic," or non-ionic). While a few of the

dependent claims teach the use of a cationic surfactant and the

preferred embodiment of the patent uses a cationic surfactant,

those references do not serve to limit the scope of claim 1,

14 which plainly does not require the use of a cationic surfactant.

See, e.g., Aromed Corp. v. Sofamor Danek Group, Inc., 253 F.3d

1371, 1383 (Fed. Cir. 2001) ("This court will not limit a patent

to its preferred embodiments in the face of evidence of broader

coverage by the claims."); The Toro Company v. White Consolidated

Indus., Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999) ("It is well

established that the preferred embodiment does not limit broader

claims that are supported by the written description."); Laitram

Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, 865 (Fed. Cir.

1988) ("References to a preferred embodiment, such as those often

present in a specification, are not claim limitations.").

Conclusion

For purposes of this litigation, the disputed terms of the

''859 patent shall be construed to have the meanings ascribed to

them in this order.

15 SO ORDERED.

Steven J. McAuliffe United States District Judge

September 12, 2001

cc: Howard J. Susser, Esq. Garry R. Lane, Esq. John M. Delehanty, Esq. James K. Robertson, Esq. Steven M. Bauer, Esq. Christopher D. Hawkins, Esq.