             NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition is not
             citable as precedent. It is a public record.

 United States Court of Appeals for the Federal Circuit

                                    03-1459, -1542


                            THE LOCKFORMER COMPANY
                         (now known as Met-Coil Systems, LLC),

                                                     Plaintiff-Appellee,
                                         and

                           TRUSEAL TECHNOLOGIES, INC.,

                                                     Third Party Defendant-
                                                     Appellee,

                                          v.

                               PPG INDUSTRIES, INC.,

                                                     Defendant/Third Party Plaintiff-
                                                     Appellant,
                                         and

                            PPG INDUSTRIES OHIO, INC.,

                                                     Third Party Plaintiff-Appellant.


                             ________________________

                              DECIDED: June 30, 2005
                             ________________________


Before MICHEL, Chief Judge, MAYER and LOURIE, Circuit Judges.

LOURIE, Circuit Judge.

      PPG Industries, Inc. (“PPG”) and PPG Industries Ohio, Inc. (“PPG Ohio”) appeal

from the summary judgment of the United States District Court for the Northern District
of Illinois holding, on The Lockformer Company’s (“Lockformer’s”) motion that United

States Patent 5,177,916 was not infringed. Lockformer Co. v. PPG Indus., Inc., No. 99-

C-6799 (N.D. Ill. Mar. 25, 2003) (“Summary Judgment Order”). Because the district

court did not err in its claim construction, and because Appellants have not shown that a

genuine issue of material fact exists as to whether Lockformer’s accused device

employs an adhesive, we affirm.

                                     BACKGROUND

       Lockformer is an Illinois company that manufactures and sells roll-forming

equipment for making insulating glass units (“IGUs”), commonly known as thermally

insulated double-pane windows.         TruSeal is a company based in Ohio that

manufactures and sells products, including the desiccant matrix used in the accused

Lockformer machine, to the IGU industry.         TruSeal is the exclusive distributor of

Lockformer’s allegedly infringing machine. PPG Ohio is the owner of United States

Patents 5,177,916; 5,665,282; and 5,675,944.        PPG is licensed under PPG Ohio’s

patents and manufactures and sells glass for use in IGUs.

       An IGU is comprised of a pair of flat glass panes separated and held in a

substantially parallel relationship by a “spacer” positioned along the perimeter of each of

the glass panes. The spacer consists of a material shaped to maintain a set distance

between the glass panes. One procedure used with spacers is to include a desiccant in

the space enclosed within the panes and the spacer to prevent condensation or

“fogging.” Accordingly, the claims of PPG Ohio’s ’916 patent, which issued in January

1993, are directed to a new spacer and spacer frame, as well as a method for making




03-1459, -1542                           2
them, that use an adhesive containing a desiccant adhered to the spacer. Claim 1 is

representative of the invention and reads as follows:

        A strip to be shaped into spacer stock for maintaining adjacent glass
        sheets of an insulating unit in a predetermined spaced relationship to one
        another, the strip comprising:
               an elongated flat bendable metal substrate having opposed major
        surfaces, at least one of the surfaces being fluid impervious, said
        substrate having a structural stability sufficient to maintain adjacent glass
        sheets in the fixed relationship when said substrate is shaped into the
        spacer stock;
               an elongated bead of fluid pervious adhesive adhered directly to
        one of said major surfaces spaced from edges of said substrate, said
        adhesive having structural stability less than the structural stability of said
        substrate; and
               a desiccant in said bead.

’916 patent, col. 6, ll. 27-42. Figure 2 of the patent provides a cutaway view of the

claimed invention, wherein glass panes 14 are connected to a U-shaped spacer 20,

which houses a bead of adhesive 26 containing a dessicant 28.




Id., col. 3, ll. 45-63 & fig. 2.

        Lockformer first offered a machine for making IGU spacer frames for sale in

1995. When PPG asserted that Lockformer infringed the three aforementioned patents,




03-1459, -1542                             3
Lockformer sought a declaratory judgment of noninfringement. After the filing of the

suit, PPG conceded that there was no infringement and the case was dismissed.

       Lockformer and TruSeal, then aware of PPG’s patents, instructed one of their

chemists to design around the patents by developing a desiccant matrix that was not

adhesive and did not adhere to the closed spacer frame. As a result of their efforts, the

two companies developed a new desiccant named RL-50 for use in their IGUs, and by

May 1999, Lockformer had sold to Silver Line a roll-forming machine, R-LOCK, that

made IGUs using RL-50. Nevertheless, PPG asserted that Lockformer, TruSeal, and

Silver Line infringed PPG Ohio’s patents. Based on those threats, Silver Line later

cancelled its order.

       Consequently, in October 1999, Lockformer again sued PPG in the district court,

this time additionally alleging unfair competition, tortious interference with business

relations, and antitrust violations. Lockformer also sought a declaratory judgment that

PPG’s three patents were invalid, unenforceable, and not infringed. In response, PPG

joined PPG Ohio, filed a cross-claim against TruSeal for infringement of the ’916 patent,

and moved to dismiss Lockformer’s antitrust claims for lack of standing because

Lockformer did not actually purchase or sell glass. Lockformer then added PPG Ohio

as a defendant in an amended complaint and opposed PPG’s motion to dismiss the

antitrust claims. District Judge David Coar granted in part and denied in part PPG’s

motion to dismiss the antitrust claims. Lockformer Co. v. PPG Indus., Inc., No. 99-C-

6799 (N.D. Ill. Sept. 27, 2000). The court also granted PPG’s motion to amend its

pleadings to assert a compulsory counterclaim against Lockformer for infringement of

the ’916 patent.




03-1459, -1542                          4
       In December 2000, Judge Coar conducted a Markman hearing. At the hearing,

PPG conceded that Lockformer and TruSeal did not infringe the ’282 and ’944 patents.

Lockformer accordingly moved for summary judgment of noninfringement, and PPG

moved to dismiss the declaratory judgment action, with respect to those two patents for

lack of subject matter jurisdiction. In April 2001, the parties agreed to settle and dismiss

with prejudice Lockformer’s first eight non-patent claims.

       In August 2001, the court granted PPG’s motion to dismiss the declaratory

judgment action as to the ’282 and ’944 patents, and it issued an opinion construing

claim 1 of the ’916 patent. Lockformer Co. v. PPG Indus., Inc., No. 99-C-6799 (N.D. Ill.

Aug. 15, 2001) (“Claim Construction Order”).              Judge Coar interpreted the term

“adhesive” “to require that the adhesive stick to the strip through the process of shaping

it into spacer stock and fixing glass to the spacer.” Id., slip op. at 6. He stated that

“there is nothing in Claim 1 requiring adhesive to be placed on the entire length of the

yet-to-be-shaped strip.” Id., slip op. at 6-7. Judge Coar also stated that “[t]he metal

strip must be longer than it is wide, planer [sic], and prevent fluid from passing through it

[on] at least one of the flat sides.” Id., slip op. at 5. In September 2001, PPG filed a

motion for partial summary judgment of validity and enforceability, and Lockformer filed

a   motion   for   partial   summary    judgment     of    invalidity,   unenforceability,   and

noninfringement.

       The following year, however, the case was reassigned from Judge Coar to Judge

Amy St. Eve, and, on March 21, 2003, the court granted PPG’s motion for partial

summary judgment on the issues of validity and enforceability, finding that Lockformer

had failed to satisfy its burden of proof as to either issue.




03-1459, -1542                             5
         On March 25, 2003, the court granted Lockformer’s motion for partial summary

judgment of noninfringement.     Judge St. Eve stated that claim 1 requires that an

adhesive containing a desiccant be adhered to a flat metal strip, and she reasoned that

because RL-50 is not an adhesive and because Lockformer’s machine applies RL-50 to

a U-shaped strip, not a flat strip, Lockformer’s device did not infringe the ’916 patent.

Summary Judgment Order, slip op. at 8-9. She discounted the testimony of PPG’s

expert witness, Raymond Gallagher, as insufficient to create a genuine issue of material

fact because he did not state when or how the desiccant matrix stuck to the spacer

frame. Id. Instead, Judge St. Eve relied on the testimony of other witnesses that RL-50

was not an adhesive and did not stick to the metal strip. Id., slip op. at 8. The court

later denied PPG’s motion for reconsideration and granted in part Lockformer’s bill of

costs.

         PPG and PPG Ohio (collectively, “PPG”) now appeal from the summary

judgment of noninfringement.      Lockformer and TruSeal (collectively, “Lockformer”)

initially filed a cross-appeal that has since been withdrawn.      We have jurisdiction

pursuant to 28 U.S.C. § 1295(a)(1).

                                      DISCUSSION

         We review a district court’s grant of summary judgment without deference,

reapplying the same standard used by the district court. Ethicon Endo-Surgery, Inc. v.

U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998).       Summary judgment is

appropriate “if the pleadings, depositions, answers to interrogatories, and admissions on

file, together with the affidavits, if any, show that there is no genuine issue as to any




03-1459, -1542                          6
material fact and that the moving party is entitled to a judgment as a matter of law.”

Fed. R. Civ. P. 56(c).

I.     Infringement

       A determination of patent infringement requires a two-step analysis. “First, the

court determines the scope and meaning of the patent claims asserted . . . , then the

properly construed claims are compared to the allegedly infringing device.” Cybor Corp.

v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc) (citations omitted).

Step one, claim construction, is an issue of law, Markman v. Westview Instruments,

Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996), that we

review de novo, Cybor, 138 F.3d at 1456. Step two, comparison of the claim to the

accused device or method, requires a determination that every claim limitation or its

equivalent is found in the accused device. Warner-Jenkinson Co. v. Hilton Davis Chem.

Co., 520 U.S. 17, 29 (1997). Those determinations are questions of fact. Bai v. L & L

Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998).

       A.     “Adhesive”

       On appeal, PPG argues that the Gallagher testimony satisfactorily established a

genuine issue of material fact whether Lockformer’s accused device contained an

adhesive as required by the claims of the ’916 patent. It alleges that his statements that

the desiccant matrix “stuck” to the substrate when he shook the IGU spacers were

sufficient to require the court to submit the issue to a jury. PPG contends that the

district court failed to draw inferences in its favor as nonmovant by rejecting that

testimony and thus committed error by granting summary judgment of noninfringement

based on the alleged lack of an adhesive in Lockformer’s accused device.




03-1459, -1542                          7
      Lockformer responds that Gallagher testified merely that the desiccant matrix did

not rattle when the spacer was shaken.      It contends that he did not state that the

desiccant was adhesive or that it adhered to the spacer frame. Instead, Lockformer

argues, PPG failed to meet its burden of proof because Gallagher did not testify that the

RL-50 matrix remained “stuck” throughout the process of shaping the flat strip with the

bead of adhesive into spacer stock and fixing glass to the spacer frame. Lockformer

alleges that the court’s decision to grant summary judgment was properly based on the

fact that Gallagher did not provide any testimony as to when or how the matrix “stuck” to

the spacer frame.

      We agree with Lockformer that the court properly granted summary judgment of

noninfringement because PPG failed to establish the existence of a genuine issue of

material fact whether RL-50 was an adhesive that adhered to the spacer. The district

court properly relied on declarations from several witnesses—namely, Randy Runyan,

Louis Ferri, Gary Dickinson, and Kevin Zuege—that the TruSeal RL-50 desiccant matrix

used in Lockformer’s IGUs was not an adhesive and does not stick to the metal

substrate.   The witnesses stated unequivocally in their declarations that the RL-50

desiccant did not stick to the metal frame and was thus not an adhesive.

      On the other hand, Gallagher’s deposition testimony does not create a genuine

issue of material fact because it does not dispute that RL-50 is not an adhesive. At the

Markman hearing, Gallagher testified during cross-examination as follows:

      Q: The desiccant that you observed being used on the Lockformer
          machine at the March 2000 inspection, did that adhere to the spacer
          frame which you saw?
      ....
      A: No, it did not.
      ....



03-1459, -1542                          8
       A: Excuse me, just for – you know, you had mentioned before about if
           there was some clarity needed. I need to have that question asked
           again. Would you mind repeating the question again?
       ....
       A: Did the matrix being used, did it adhere to the spacer? Yes. I need to
           correct myself on that.
       Q: So your first answer was incorrect?
       A: Yes, it did adhere.
       Q: And what do you mean when you say that it did adhere?
       A: That the matrix stuck to the metal substrate.
       Q: What do you mean when you say it stuck?
       A: That, in picking up the spacer and shaking it, it did not rattle around
           inside the spacer.

(JA 1675-66) Thus, Gallagher testified simply that the RL-50 “stuck” to the spacer

frame, or, in other words, was rendered physically immobile inside the frame. Although

the Gallagher testimony may demonstrate that “RL-50 performed the function of the

adhesive claimed by the ’916 patent,” Appellants’ Opening Br. at 42, Gallagher never

states that RL-50 is, in fact, an adhesive.      Gallagher’s mere observation that the

desiccant matrix “did not rattle around inside the spacer” cannot be construed to be an

assertion that the desiccant is an adhesive or that it adheres to the spacer frame.*

       In sum, the district court acknowledged that PPG was “entitled to all reasonable

inferences in its favor,” Summary Judgment Order, slip op. at 8, and properly concluded

that   PPG    nevertheless    did   not   present   sufficient   evidence   to   meet   its




       *
              Additionally, the district court refused to consider PPG’s opposition to
Lockformer’s motion for summary judgment because it held that the filing was in
violation of Local Rule 56.1 for failure to cite supporting evidence in the record with
specificity. PPG asserts that the court did not consider its supplemental submission,
which included declarations by Gallagher and William Daley. We are not convinced
upon our review of the record that the district court abused its discretion in applying its
own local rule, and we discern no error in the court’s refusal to consider the Gallagher
and Daley declarations.


03-1459, -1542                            9
burden of producing evidence that shows that there is a disputed fact whether RL-50 is

an adhesive.

      B.       “Flat”

      PPG also argues that the district court erred as a matter of law by requiring that

the RL-50 desiccant matrix be applied to a flat strip. It alleges that Judge St. Eve

misconstrued the claim construction order issued previously by Judge Coar, which PPG

argues stated that claim 1 of the ’916 patent imposes no limitation on when the

adhesive bead must be applied relative to the forming of the spacer frame.           PPG

contends that Judge St. Eve improperly “redrafted” the claim to import the word “flat”

from the preamble to modify the “strip” limitation. PPG maintains that the claim was

drafted to refer not only to the beginning of the forming process, but also throughout the

entire process of shaping the substrate into spacer stock. It thus asserts that the claim

permits the application of an adhesive bead even after the metal substrate was formed

into a U shape.

      Lockformer responds that Judge Coar correctly interpreted the claim to require

the metal strip to be flat and that Judge St. Eve properly applied that construction. It

argues that the claims of the ’916 patent recite a strip to be shaped into spacer stock

and that the claims are limited to a flat metal strip. Because its accused machine roll-

forms the strip and applies the desiccant material while the strip is approximately U-

shaped, Lockformer argues, the court correctly found that Lockformer does not infringe

the ’916 patent.

      We agree with Lockformer that the district court properly construed the claim to

require application of the adhesive desiccant to a flat metal strip. Our analysis begins




03-1459, -1542                          10
with the language of the claim itself. The claim states that the invention comprises “an

elongated flat bendable metal substrate.” Also, the preamble recites, “A strip to be

shaped into spacer stock,” which indicates that the claimed strip has not yet started the

roll-forming process. Those portions of the claim support Judge Coar’s construction

that “[t]he metal strip . . . be . . . planer [sic],” a construction that apparently met with

agreement from both parties at the time. Claim Construction Order, slip op. at 5.

       The specification further supports the construction that the strip must be flat

when the adhesive is applied. For example, the “Summary of the Invention” reads as

follows:

       This invention covers a strip for shaping into spacer stock for use in the
       fabrication of insulating units. The strip includes a metal substrate having
       a bead of moisture and/or gas pervious adhesive secured to a surface of
       the substrate. The metal substrate after forming into the spacer stock,
       e.g., U-shaped spacer stock can withstand higher compressive forces
       than the bead.

’916 patent, col. 2, ll. 18-24 (emphases added). This passage reinforces the district

court’s interpretation that the “claim covers metal stock that will be formed into multi-

pane window spacers.” Claim Construction Order, slip op. at 5 (emphasis added).

       Additionally, the figures illustrate that the desiccant is adhered to the substrate

when flat and the substrate subjected to the roll-forming process after adhesion. Figure

3 of the ’916 patent shows the applied adhesive bead 26 on a flat metal substrate 40

prior to the forming process. The written description later provides that “[t]he substrate

40 having the bead 26 is advanced from left to right as viewed in FIG. 4 between roll

forming stations 180 thru 185.” Id., col 4, ll. 56-58.




03-1459, -1542                            11
Id., fig. 3. Furthermore, Figure 5 shows a roll forming station 181 that facilitates the

bending of the flat substrate 40 with the adhesive bead already in place.




Id., col. 4, ll. 61-65 & fig. 5. In contrast, Lockformer’s machine starts with a flat strip,

roll-forms the strip into a U-shaped form, and only then inserts the desiccant material

into the frame.

       We conclude that the district court properly construed the claim to require a flat

substrate.   The court then correctly applied that construction in concluding that

Lockformer’s accused device does not infringe the ’916 patent because its strip is not

flat when the RL-50 desiccant is applied.        Because Lockformer’s accused device

incorporating RL-50 does not meet all of the limitations of the ’916 patent claims,



03-1459, -1542                           12
including the “adhesive” and “flat substrate” limitations, the court properly granted

summary judgment of noninfringement.

II.    Costs

       Finally, PPG argues that the district court abused its discretion in awarding costs

to Lockformer.        Although it concedes that Lockformer prevailed on the issue of

infringement of the ’916 patent, PPG asserts that it prevailed on the majority of the

issues, including the eight non-patent counts, validity and enforceability of the ’916

patent, and issues relating to the ’282 and ’944 patents. It argues that the overall

outcome was mixed, but predominantly in PPG’s favor, so that the court should not

have awarded costs to Lockformer as the “prevailing party” in this litigation. In support

of its arguments, PPG cites Testa v. Village of Mundelein, Ill., 89 F.3d 443 (7th Cir.

1996) (affirming the district court’s decision that the parties each bear their own costs in

a case with mixed outcome) and Allen & O’Hara, Inc. v. Barrett Wrecking, Inc., 898 F.2d

512 (7th Cir. 1990) (affirming the district court’s denial of costs where both parties

prevailed in part).

       Lockformer argues that the court properly analyzed which party had prevailed as

to a substantial part of the litigation.      It asserts that the award of costs related

specifically to the litigation of the ’916 patent. Lockformer maintains that the non-patent

counts that PPG asserts were resolved in its favor were actually the subject of a

stipulated dismissal that provided that the parties bear their own costs and attorney fees

as to those claims.

       We agree with Lockformer that the court did not abuse its discretion in its award

of costs.    Lockformer ultimately prevailed on the issue of infringement, as PPG




03-1459, -1542                           13
conceded that Lockformer did not infringe the ’282 and ’944 patents and it won on the

litigated issue of infringement of the ’916 patent as well. The patent infringement issues

thus were central to the real litigation, which began as a declaratory judgment action,

and Lockformer prevailed on those issues. The cases that PPG cites as authority do

not require any particular decision on costs in mixed outcomes. Instead, they stand

only for the general proposition that “[d]istrict courts enjoy wide discretion in determining

and awarding reasonable costs.” Testa, 89 F.3d at 449 (citation omitted). We discern

no abuse of discretion here and decline to disturb the court’s award of costs to

Lockformer.

                                       CONCLUSION

       Because the district court properly construed the ’916 patent claims to require

application of adhesive to a flat metal strip, and because PPG did not present sufficient

evidence to contest that the TruSeal RL-50 desiccant is not an adhesive and is not

applied to a flat strip, the court correctly granted Lockformer’s motion for summary

judgment of noninfringement of the ’916 patent. Additionally, the court did not abuse its

discretion by awarding costs to Lockformer as the prevailing party. Accordingly, we

affirm the judgment of the district court.




03-1459, -1542                               14
