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
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"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
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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
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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.
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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
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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
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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
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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
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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.
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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
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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,
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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.
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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.
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