Polyclad v . MacDermid, et a l . CV-99-162-M 09/27/02
UNITED STATES DISTRICT COURT
DISTRICT OF NEW HAMPSHIRE
Polyclad Laminates, Inc.,
and Fry Metals, Inc., d/b/a
PC Fab Division of Alpha Metals, Inc.,
Plaintiffs
v. Civil N o . 99-162-M
Opinion N o . 2002 DNH 173
MacDermid, Inc.,
Defendant
O R D E R
Defendant MacDermid, Inc., moves for summary judgment on
plaintiffs’ infringement claims. Plaintiffs have also moved for
summary judgment relative to infringement.
Background
Critical to resolving this dispute is the meaning of the
term “surfactant” as used in United States Patent N o . 5,800,859
(“‘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
(typically plastic or fiberglass). Claim 1 of the ‘859 patent,
the only 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% of 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.
See ‘859 patent, claim 1, column 9, lines 60-67, (emphasis
supplied).
Following a Markman hearing, the court held that the term
“surfactant,” as used 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 i s , 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
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‘859 patent, will reduce the surface tension of pure
water (at room temperature) to at least 45 dynes/cm or
less.
Order, September 1 2 , 2001 (document n o . 167). 1 See generally
Markman v . Westview Instruments, Inc., 517 U.S. 370 (1996).
Literal Infringement
Given that construction, and the absence of any dispute as
to material facts, it is apparent, as a matter of law, that
defendant has not literally infringed the ‘859 patent.
Defendant manufactures and sells a chemical composition,
called Multibond, which is used in the printed circuit board
industry to promote adhesion between layers in multi-layered
boards. Plaintiffs’ ‘859 patent covers such a process,
disclosing a similar chemical composition. However, the ‘859
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Plaintiffs sought clarification of this construction,
claiming confusion as to whether a generally accepted surfactant
would be defined out of that category because it might not cause
the requisite surface tension reduction a t , say, .00001% (i.e.,
“less than one percent”). But, perhaps obviously, the issue is
better stated a s : What effect is achieved at .99999% (i.e.,
“less than one percent”)? Under the construction adopted by the
court, surfactants would generally be expected to achieve
dramatic surface or interfacial tension reduction at .99999%.
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patent’s description of the protected chemical composition
specifically discloses the requirement that a “surfactant” be
included. Defendant’s product, Multibond, does not include a
surfactant, as the “CARBOWAX MPEG 2000"2 ingredient (claimed by
plaintiffs to qualify as a surfactant) does not act, at
comparatively low concentrations, to dramatically reduce the
surface tension of the defendant’s chemical composition or the
interfacial tension between the solution and another surface
(e.g., the copper).
Plaintiffs concede that point (but, of course, preserve
their objection to the court’s construction of the term
“surfactant” relative to the ‘859 patent).
Doctrine of Equivalents
Plaintiffs rely, alternatively, on a “doctrine of
equivalents” claim. They argue that even if MPEG used by
defendant does not literally qualify as a surfactant under the
‘859 patent (as the term has been construed by the court), it
2
“CARBOWAX MPEG 2000" is a commercial name for the
chemical compound methoxy polyethelene glycol.
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nevertheless functions like a surfactant, and it performs that
function in the same way as a surfactant, and it achieves the
same result achieved by the surfactant disclosed in the ‘859
patent process (uniformity of the desired microroughened adhesion
layer).
Although the doctrine of equivalents “is not free from
confusion,” it remains viable. Warner-Jenkinson C o . v . Hilton
Davis Chemical Co., 520 U.S. 1 7 , 21 (1997). Under the doctrine,
a product or process that does not literally infringe
upon the express terms of a patent claim may
nonetheless be found to infringe if there is
“equivalence” between the elements of the accused
product or process and the claimed elements of the
patented invention.
Id. (citing Graver Tank & Mfg. Co. v . Linde Air Products Co.,
339
U.S. 605, 609 (1950)). The Supreme Court clarified the
doctrine’s scope in Warner-Jenkinson, essentially holding that,
in order to respect the scope of patent protection, and preclude
enlargement of that scope through application of the equivalents
doctrine,
[e]ach element contained in a patent claim is deemed
material to defining the scope of the patented
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invention, and thus the doctrine of equivalents must be
applied to individual elements of the claim, not to the
invention as a whole. It is important to ensure that
the application of the doctrine, even as to an
individual element, is not allowed such broad play as
to effectively eliminate that element in its entirety.
Id. at 29 (emphasis supplied).
On this record it is clear that MPEG does not function as
the equivalent of a surfactant, as that term is used in the ‘859
patent. MPEG is not amphipathic; does not concentrate to a
greater degree at a phase interface than in the bulk of the
solution; and, critically, does not dramatically reduce surface
tension of the composition solution, or interfacial tension
between the solution and another surface, at comparatively low
concentrations (less that 1%) (and, for that matter, it does not
dramatically reduce surface tension even at comparatively high
concentrations). There is no serious dispute as to these
material facts.
As noted, literal infringement would require use of an
additive that, although not necessarily amphipathic in structure,
(1) operates to dramatically reduce surface tension of a
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solution, or interfacial tension between a solution and another
surface (here, the copper layer), (2) when introduced into the
solution at comparatively low levels. Additives that exhibit at
least one of those two qualifying attributes – i.e., that either
dramatically reduce surface or interfacial tension when added to
a solution at comparatively high concentrations, or that at
comparatively low concentrations modestly (but effectively for
purposes of the process) reduce surface or interfacial tension –
might qualify as “equivalents” of a surfactant relative to the
patented process. But, defendant’s additive, CARBOWAX MPEG 2000,
possesses neither characteristic.
Even accepting, for argument’s sake, plaintiffs’ contention
that defendants intend MPEG to function as the equivalent of a
surfactant, it does not do so. 3 It’s effect is to modestly
reduce surface or interfacial tension at comparatively high
concentrations. MPEG may well have a “wetting effect” and
defendants might intend to capitalize on that wetting effect to
promote uniformity of the resulting adhesion layer. But, MPEG is
3
Of course, since Warner-Jenkinson, “[t]he better view,
and the one consistent with . . . the objective approach to
infringement, is that intent plays no role in the application of
the doctrine of equivalents.” Warner-Jenkinson, 520 U.S. at 3 6 .
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not the equivalent of a surfactant because it functions
differently – it modestly reduces surface/interfacial tension at
comparatively high concentrations – albeit perhaps in a manner
that enhances adhesion layer uniformity to some degree.
Although different linguistic formulations have been used to
describe the applicable test in gauging “equivalence,” the
essential inquiry remains:
Does the accused . . . process contain elements
identical or equivalent to each claimed element of the
patented invention? Different linguistic frameworks
may be more suitable to different cases, depending on
their particular facts. A focus on individual elements
and a special vigilance against allowing the concept of
equivalence to eliminate completely any such elements
should reduce considerably the imprecision of whatever
language is used.
Id. at
520 U.S. 40 (emphasis supplied).
The problem plaintiffs cannot overcome is this: the patent
claims the use of a “surfactant;” it does not claim the use of
any and all “wetting agents” or “spreaders” (and, if it did,
vagueness issues would almost certainly arise). Defendant’s
additive is not a surfactant. And, while it may have some modest
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wetting or spreading effects, it could be deemed the equivalent
of a surfactant only by construing every possible additive that
might produce a wetting or spreading effect as being equivalent.
Such a construction would improperly “[allow] the concept of
equivalence to eliminate completely” the surfactant element of
the claim. Id. at 4 0 .
Now is not the time or place for plaintiffs to seek to
expand their “surfactant” claim, under the equivalents doctrine,
to include any and all additives that might have a “wetting
effect” or even to include all additives with wetting
characteristics sufficient to achieve an acceptably uniform
micro-roughened surface on a copper layer of a printed circuit
board. The universe of qualifying substances meeting either of
those rather broad descriptions is simply too large and, if
declared to be equivalent, would expand the claim well beyond its
legitimate boundary. Plaintiffs’ claim is limited to the wetting
effect occasioned by surfactants (and equivalent additives –
i.e., those that either dramatically reduce surface tension at
high concentrations or those that modestly reduce surface tension
at low concentrations), but does not reach any and all additives
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to a process solution that might have some surface tension-
reducing effect. Defendant’s MPEG additive is not the chemical
equivalent of a surfactant, as that term is used in the ‘859
patent.
Conclusion
Accordingly, for the reasons given above, and those set
forth in Defendant’s Memorandum of Law in Support of Motion for
Summary Judgment, which the court adopts, Defendant’s Motion for
Summary Judgment (document n o . 169) is granted. Plaintiffs’
Motion for Summary Judgment (document n o . 186) is denied. The
Clerk shall enter judgment in favor of defendant and close the
case.
SO ORDERED.
Steven J. McAuliffe
United States District Judge
September 2 7 , 2002
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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