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 United States Court of Appeals for the Federal Circuit


                                         04-1441


                            MARLEY MOULDINGS LIMITED,

                                                        Plaintiff-Appellant,

                                             v.


                              MIKRON INDUSTRIES, INC.,

                                                        Defendant-Appellee.



        Hugh A. Abrams, Sidley Austin Brown & Wood LLP, of Chicago, Illinois, argued
for plaintiff-appellant. With him on the brief were Constantine L. Trela, Jr. and Jon M.
Spanbauer.

      Janice V. Mitrius, Banner & Witcoff, Ltd., of Chicago, Illinois argued for
defendant-appellee. With her on the brief were Jon O. Nelson and Wendell W. Harris.
Of counsel was Michael J. Folise, Black Lowe & Graham PLLC, of Seattle, Washington.

Appealed from: United States District Court for the Northern District of Illinois

Judge John W. Darrah
United States Court of Appeals for the Federal Circuit


                                           04-1441



                             MARLEY MOULDINGS LIMITED,

                                                          Plaintiff-Appellant,

                                              v.

                               MIKRON INDUSTRIES, INC.,

                                                          Defendant-Appellee.



                             __________________________

                             DECIDED: August 8, 2005
                             __________________________



Before NEWMAN, SCHALL, and DYK, Circuit Judges.

NEWMAN, Circuit Judge.




       Marley Mouldings Limited ("Marley") appeals the decision of the United States

District Court for the Northern District of Illinois, granting summary judgment that all of the

claims of United States Patent No. 5,951,927 ("the '927 patent") are invalid for

indefiniteness.1 We reverse the judgment.



       1     Marley Mouldings Ltd. v. Mikron Industries, Inc., No. 02-C-2855, 2004 U.S.
Dist. LEXIS 2470 (N.D. Ill. Feb. 19, 2004); Marley Mouldings Ltd. v. Mikron Industries, Inc.,
No. 02-C-2855 (N.D. Ill. May 25, 2004) ("Recons. Order").
                                      BACKGROUND

       The '927 patent is directed to a method of forming foamed composite plastic

products for use in products traditionally made of wood, such as door frames, window trim,

and moldings. It was known to form such products wherein the plastic contained wood filler

or wood flour; however, the presence of filler complicates the process of producing foamed

extrusions, and the wood flour tends to absorb moisture, which can cause rotting in the final

product. Marley states that the '927 patented method solves these problems. Marley

charged Mikron Industries, Inc. ("Mikron") with infringement, and Mikron raised various

defenses.    After a Markman hearing the district court invalidated the patent for

indefiniteness under 35 U.S.C. §112 ¶2.

       The '927 patent describes a two-stage process. In the first stage the wood flour is

mixed with other components in order to encapsulate the wood flour and extrude the

product to form pellets. In the second stage the pellets are mixed with additional resin and

a blowing agent, and compressed, expanded, shaped, and solidified.               Claim 1 is

representative with respect to the issue on appeal, which relates to the measurement of

components in parts by volume:

              1. A method of forming a solid elongated member of
              predetermined profile for use as a door, window or frame
              molding, comprising the steps of:

              encapsulating wood flour particles with a polymer resin in an
              extrudable material by high intensity mixing, said extrudable
              material consisting essentially of, in parts (volume):

                     polymer resin:       in an amount of up to 100
                     wood flour:          15-140
                     stabilizers:         in an amount up to 5
                     lubricants:          in an amount up to 5
                     process aids:        in an amount up to 10,


04-1441                                      2
              extruding and cutting said extrudable material to form pellets of
              said extrudable material,

              mixing additional polymer resin and a non-aqueous blowing
              agent with said pellets to form an extrudable foam material,

              compressing said extrudable foam material at a compression
              stage by passage through an orifice, said orifice having at one
              end thereof a predetermined profile,

              said foam material consisting essentially of, in parts (volume):

                     polymer resin:       in an amount up to 100
                     wood flour:          15-140
                     stabilizers:         in an amount up to 5
                     lubricants:          in an amount up to 5
                     process aids:        in an amount up to 10
                     blowing agents:      .2 to 5

              expanding said foam material through a shaper, said shaper
              having an internal solid surface defining a channel for said
              foam material, and

              solidifying said foam material to form a solid elongated
              member.

The parties agree that the claims require the volume of wood flour to be measured in

connection with starting ingredients instead of the finished product. Contrary to Marley's

contention, the district court correctly construed "in parts (volume)" to refer to the

"proportional volumetric quantity of one material component to all other components within

a given formulation." However, applying this construction, the district court held all of the

claims invalid on the ground of indefiniteness, summarizing its reason as "because the

means to calculate the percent volume of wood flour, a critical determination to discerning

whether the final product has been produced by the claimed process and necessary to the

practice of the invention, was not specified in the patent and could not be discerned by the

specification." Recons. Order at 1. The court relied on Honeywell International, Inc. v.


04-1441                                      3
International Trade Commission, 341 F.3d 1332, 1339-40 (Fed. Cir. 2003) and Morton

International, Inc. v. Cardinal Chemical Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993).

       The district court held that the claims could not be applied to the accused Mikron

process, wherein the components are measured by weight, not by volume. The product

specification sheets provided by the suppliers of Mikron's wood flour state a range of bulk

densities, giving upper and lower limits and average densities. The parties and the district

court agreed as to the known mathematical equation relating weight and volume, whereby

the volume of a bulk material is determined by dividing its weight by its bulk density.

However, the parties disagreed about which of the Mikron density values should be used in

the calculation, and the district court observed that the '927 patent "does not indicate what

value for bulk density is to be used nor how to determine the bulk density." Marley, 2004

U.S. Dist. LEXIS 2470, at *14.

       The district court found that infringement depended on which of the density values in

the Mikron specifications was used. The court explained:

       Marley's expert evaluated the percent of wood flour in the final product, i.e.,
       literal infringement, by calculation of volume using both the highest and
       lowest bulk density values provided on the [Mikron] specification sheet from
       the wood flour supplier. Using Marley's expert's example of a foam material
       formulation with 5% wood flour/polymer pellets, coupled with the minimum
       bulk density of wood flour and the maximum bulk density of all other
       components, the volumetric percentage of wood flour in the foam material is
       10.7%. In contrast, when the maximum bulk density of wood flour and the
       minimum bulk density of all other components is used, a volumetric
       percentage of wood flour in the foam material is 8.5%. Therefore, depending
       on which bulk density is used for each of the constituent ingredients, a
       different volume percentage of wood flour is obtained -- one at the lower limit
       of the claimed range and one outside the claimed range.

Id. at *13. The court held that because infringement depended on the bulk density used to

calculate the volumetric percentage of wood flour in the Mikron method, and because the


04-1441                                      4
'927 patent did not state whether the average bulk density or what density range value was

to be used, the claims are fatally indefinite.

                                        DISCUSSION

       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 material fact and that the moving party is entitled to a judgment

as a matter of law." Fed. R. Civ. P. 56(c). We review the grant of summary judgment using

the same criteria as did the district court. The question of claim indefiniteness is a matter of

law and receives plenary review on appeal, see Amtel Corp. v. Info. Storage Devices, Inc.,

198 F.3d 1374, 1378 (Fed. Cir. 1999), and any disputed underlying facts on summary

judgment are deemed resolved in accordance with the position of the non-movant. See

Conroy v. Reebok Int'l, 14 F.3d 1570, 1575 (Fed. Cir. 1994).

       The requirement of precision in claiming is codified as follows:

       35 U.S.C. §112 ¶2. The specification shall conclude with one or more claims
       particularly pointing out and distinctly claiming the subject matter which the
       applicant regards as his invention.

The statute is satisfied if a person skilled in the field of the invention would reasonably

understand the claim when read in the context of the specification. See Union Pac. Res.

Co. v. Chesapeake Energy Corp., 236 F.3d 684, 692 (Fed. Cir. 2001) (the definiteness

requirement set forth in §112 ¶2 "focuses on whether those skilled in the art would

understand the scope of the claim when the claim is read in light of the rest of the

specification"); Miles Labs., Inc. v. Shandon, 997 F.2d 870, 875 (Fed. Cir. 1993) (if the

claims "reasonably apprise those skilled in the art of the scope of the invention, §112

demands no more"); In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (the indefiniteness


04-1441                                          5
inquiry asks whether the claims "circumscribe a particular area with a reasonable degree of

precision and particularity").

       Marley states that the district court confused infringement with validity, and that the

relation between the weight of the Mikron wood filler and the volume criterion of the claims

is an issue in determining infringement, not validity. Mikron responds that the volume of a

given weight of wood flour will vary with its compactness, and that because the patent does

not state the density of the wood flour used in its formulation, it is impossible to determine

whether a given weight of wood flour will be of a volume that infringes the claims. Marley

responds that this determination is readily made when the bulk density of the wood flour is

known, and that the Mikron product specifications give the bulk density of the flour used in

the accused process. Mikron states that the volume can be manipulated by shaking the

wood powder in the container, and Marley states that there was no evidence of so

significant a change in volume as to render the patent's volumetric measure confusing,

misleading or unclear. Marley states that the Mikron purveyor's routine provision of a range

of bulk density values for each shipment shows that the weight/volume relationships are

readily determined and within a narrow range.

       The parties and the district court agree that in accordance with claim 1, the minimum

amount of wood flour in the first stage of the claimed process is 11.1% by volume (15 parts

of 135 total parts).2 They agree that the minimum amount of wood flour for the second



       2        The 11.1% value is obtained by calculating the lowest amount of wood flour
called for in the claims, 15 parts, as a percentage of the total materials when the highest
amount claimed for the other materials is added, 135 total parts (15 parts wood flour + 100
parts polymer + 5 parts stabilizer + 5 parts lubricant + 10 parts process aids).



04-1441                                       6
stage is 10.7% by volume (15 parts of 140 total parts).3 In connection with infringement,

Mikron's expert Professor Wolcott used the average bulk density values of the wood flour

and the other materials used in the accused Mikron process, and proposed that there was

not literal infringement. Marley's expert Professor Giacomin used the minimum bulk density

value for wood flour, the value at the lower limit of the range provided in the specification

sheet, together with the maximum values of the other materials, and proposed that there

was literal infringement. The district court held the claims indefinite because the patent

does not state which approach to use.

       In Honeywell, 341 F.3d 1332, this court held indefinite a claim that included a

specified melting parameter of a polymeric yarn but did not state which of four known

methods of preparing and testing the yarn was used. In Honeywell there was evidence that

the method of preparation and testing was critical to the measurement, and that only one of

the four methods produced a measurement within the claimed range; whereby the court

concluded that the claims were "insolubly ambiguous, and hence indefinite." Id. at 1340. In

Honeywell it was shown that persons in the field of polymer chemistry understood that

polymer melting point determinations vary significantly with the method used, rendering the

claims "insolubly ambiguous." In contrast, it was not disputed that persons of experience in

the field of the '927 invention would understand how to measure parts by volume, and how

to convert weight into volume from bulk density data. Accepting Mikron's argument that


       3       The 10.7% value is similarly calculated as a percentage of the maximum total
of 140 parts (15 parts wood flour + 100 parts polymer + 5 parts stabilizer + 5 parts lubricant
+ 10 parts process aids + 5 parts blowing agents).




04-1441                                       7
shaking the wood flour may change its compactness, and thus produce different weight

values for a given volume of wood flour, this argument relates to whether there is

infringement of the claims. Although the district court was concerned that the claims

encompass a range of volumes and thereby also of weights, §112 ¶2 is satisfied when the

relevant values can be "calculated or measured." W.L. Gore & Assoc., Inc. v. Garlock, Inc.,

721 F.2d 1540, 1558 (Fed. Cir. 1983).

       Mikron states that measurement of components by weight, not by volume, is the

standard practice in the field of polymer processing, and argues that the patentee's failure

to conform to this practice is further support for the indefiniteness of the claims. However,

non-conformity is not of itself indefiniteness. See, e.g., Orthokinetics, Inc. v. Safety Travel

Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (§112 ¶2 is satisfied when the relevant

values can be easily obtained). Marley chose to define and claim its invention based on

volume. See In re Chandler, 319 F2d 211, 225 (CCPA 1963) (a patentee's "freedom of

choice" in selecting the means to point out and define the invention "should not be

abridged").

       We conclude that the district court erred in law, in requiring that the specification

describe the relationship between volume and weight of the wood filler used or usable in

the process. When a claim "is not insolubly ambiguous, it is not invalid for indefiniteness."

Bancorp Servs., L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1372 (Fed. Cir. 2004). The

summary judgment of invalidity is reversed. We remand for further proceedings.



                              REVERSED AND REMANDED




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