No Splitting the Die – Federal Circuit Affirms Summary Judgment of Noninfringement

By on January 8, 2020
Posted In Patents

A divided panel decision of the US Court of Appeals for the Federal Circuit affirmed a summary judgment of noninfringement, finding no disputed issues of material fact to preclude summary judgement. Plastic Omnium Advanced v. Donghee America, Inc., Case No. 2018-2087 (Fed. Cir., Nov. 21, 2019) (Reyna, J) (Clevenger, J, dissenting).

Plastic Omnium filed suit against Donghee for patent infringement of patents generally relating to manufacturing plastic fuel tanks formed by blow molding. A portion of this process, as claimed, requires “cutting and opening an extruded parison of closed cross section.” The primary dispute on appeal is the meaning of the claim term “parison.” In its claim construction order, the district court found the patentee had acted as its own lexicographer, defining the key disputed term “parison” as “referring to a plastic tube with a closed cross section that is shaped by—and has reached the end of—a die and is split either immediately upon exiting the die or at some point thereafter.” Following claim construction, the district court granted Donghee’s motion for summary judgment of noninfringement as to the asserted claims. Plastic Omnium appeals the grant of summary judgment under both literally infringement and infringement under the doctrine of equivalents.

On appeal, Plastic Omnium does not dispute the district court’s construction, but rather, argues that the district court erred by misapplying its own claim construction, deviating from the claim construction order to require the claimed parison to be cut or split outside of the extrusion equipment. Upon a review of whether the district court’s claim construction excludes the accused Donghee product based on the undisputed facts, the Federal Circuit found that it did.

The Federal Circuit explained that the asserted claims require that a tubular parison is first extruded—passing through the extrusion head and die—and cut at the point of extrusion or sometime thereafter. The Court found it undisputed that in Donghee’s accused product the molten plastic is injected from the extrusion head into the die mounted directly on the extrusion head where it is split into two sheets and formed within the die. Thus, unlike in the asserted claims, in Donghee’s accused product two formed plastic sheets are extruded instead of a parison. Because there is no extruded tubular structure (or “parison,” as defined in the district court’s claim construction) in Donghee’s product, as required under the district court’s claim construction, the Court affirmed the district court’s finding of no literal infringement.

Next the Federal Circuit addressed infringement under the doctrine of equivalents. The Court found that even though Donghee’s expert admitted Donghee’s flat die tool may offer improvements over the Asserted Patents, such as independent wall thickness manipulation, Plastic Omnium failed to present evidence as to why the differences between the touted advantage of uniform wall thickness in the asserted patents and the capability of independent wall thickness manipulation in the accused product were insubstantial. Thus, the Court found Plastic Omnium failed to demonstrate a genuine dispute of material fact that would prevent the grant of summary judgment as to the doctrine of equivalents.

Judge Clevenger dissented, stating that the real dispute is not over an extruded parison and what it takes to create one, but rather, the dispute is over the term “die” and whether Donghee’s accused extrusion head contains one. He opines that the majority perpetuates the district court error of failing to consider Plastic Omnium’s double-die argument and resolve the material factual dispute related to the structure of Donghee’s accused device, precludes summary judgment.

Practice Note: In this case, there was substantial confusion over the key argument presented on appeal, as evidenced by Judge Clevenger’s dissenting opinion. Care should be taken in appeal briefing, and in oral argument, to clearly state the argument, or arguments, being presented to ensure all key issues are squarely addressed by the panel.

Rebecca Harker Duttry
Rebecca Harker Duttry focuses her practice on intellectual property, with an emphasis on patent infringement litigation. She has litigated a broad range of technologies in the biotechnological, pharmaceutical and electrical arts, including cardiac rhythm management devices, therapeutic antibodies, food supplements/vitamins, smartphones and video game consoles. Rebecca has also prepared and prosecuted US patent applications in the pharmaceutical arts. In addition, she maintains an active pro bono practice as an advocate for veterans. Read Harker Duttry's full bio.