                       NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit
                                          06-1010

                             CLASSIFIED COSMETICS, INC.,

                                                   Plaintiff-Appellant,

                                              v.

                               DEL LABORATORIES, INC.,

                                                   Defendant-Appellee.

                            ___________________________

                            DECIDED: December 12, 2006
                            ___________________________


Before BRYSON, Circuit Judge, CLEVENGER, Senior Circuit Judge, and GAJARSA,
Circuit Judge.

BRYSON, Circuit Judge.

       In this patent action, Classified Cosmetics, Inc., claims that Del Laboratories,

Inc., infringes U.S. Patent No. 6,589,541 (“the ’541 patent”), which Classified owns. Del

responds that the ’541 patent is invalid and not infringed, and it seeks a declaration to that

effect. The district court entered summary judgment for Del, holding the patent invalid

because of inoperability. We reverse and remand for further proceedings.

                                              I

       The ’541 patent is directed to a method and system for spraying a cosmetic

makeup composition onto skin.        Its claims recite a sprayable makeup composition

comprising several components, including a synthetic wax component and a component
containing micronized titanium dioxide. The claims require that those two components

“exhibit a synergistic film-forming effect.”

       The district court defined “synergistic film-forming effect” to mean “a film-forming

effect produced by the interaction of two components that is greater than the sum of the

film-forming effect produced by each component in the absence of the other.” The

district court permissibly looked to a dictionary to define the term “synergistic,” because

the specification did not provide a meaning and no other sources of meaning were

offered. The technical dictionary to which the district court was referred was Hawley’s

Condensed Chemical Dictionary, which defines “synergism” as requiring two chemical

components to have a “more than additive” effect. The dictionary elaborates that a

synergistic effect occurs when the effect of two components “is greater than [that of] the

equivalent volume or concentration of either component alone.” Under that definition,

the combined effect of any two components must be compared against the effect of “the

equivalent volume or concentration” of each component alone.

       While we agree with the definition taken from the technical dictionary, we note

that the district court’s definition, which requires that the synergistic film-forming effect

must be “greater than the sum of the film-forming effect produced by each component,”

could be misleading in the present context. It could suggest, for example, that if each

component is 40 percent effective in film-forming, the combination of components must

be more than 80 percent effective in order for the combination to be considered

synergistic. That is plainly not required, however, because film-forming effectiveness

expressed as a percentage does not scale with the quantity of the tested composition.

All that is required under the proper definition (and under the district court’s definition,




06-1010                                        2
as we understand it) is that the effect of the combination be greater than that of an

equivalent amount of either component by itself.

       Classified argues that the specification of the ’541 patent instructs that the

phrase “synergistic film-forming effect” requires only that the two named components

“act in concert” to produce the claimed film. Nothing in the specification requires us to

adopt that definition, and it is plainly not sufficient for two materials to simply “act in

concert,” as Classified contends. In order to satisfy the requirement of synergism, the

two components must achieve a result together that is greater than the result either

achieves separately.

                                              II

       Del moved for summary judgment that the ’541 patent is inoperable and

therefore invalid for lack of utility and enablement.       A claim is inoperable when it

contains a limitation that is impossible to meet. Process Control Corp. v. HydReclaim

Corp., 190 F.3d 1350, 1359 (Fed. Cir. 1999). Del argues that it is impossible for the

claimed methods and systems to achieve the claimed synergistic film-forming effect. As

evidence of its entitlement to summary judgment, Del submitted the report of its expert,

Mr. John E. Wild. Classified objected that the report was inadmissible and that it would

not support a finding that the ’541 patent is inoperable. The district court rejected all of

Classified’s arguments and granted summary judgment of invalidity for inoperability

based on the Wild report.

       The principal flaw in the district court’s ruling is that Del did not meet its burden of

showing prima facie entitlement to summary judgment. As the party with the burden of

proof on invalidity, Del was required to make a prima facie showing of invalidity before




06-1010                                       3
the burden shifted to Classified to offer contrary evidence. See Optivus Tech., Inc. v.

Loma Linda Univ. Med. Ctr., No. 05-1518, slip op. at 18 (Fed. Cir. Nov. 16, 2006). Del

had to point to evidence that was sufficient, if uncontroverted, to entitle it to prevail as a

matter of law. Saab Cars USA, Inc. v. United States, 434 F.3d 1359, 1369 (Fed. Cir.

2006); see also 11 James Wm. Moore, Moore’s Federal Practice § 56.13[1], at 56-135

(2006). Mr. Wild’s expert report on the tests conducted by the Hill Top company (“the

Hill Top tests”) purports to show that the claimed method and system failed to produce a

synergistic film-forming effect when compositions containing both synthetic wax and

micronized titanium dioxide were applied to test surfaces. Those tests fall short of

satisfying the applicable legal standard for two reasons.

       First, the Hill Top tests measured film-forming ability in a way that could easily

mask evidence of the operability of the claimed system and method. To measure the

degree to which the tested samples adhered to skin, Mr. Wild created five data ranges

into which the Hill Top testers placed their observations of a sample’s performance. For

example, if a tester observed that about half of a sprayed composition adhered to skin

after a water rinse, the tester would record the level of adherence as falling into the 30

percent to 60 percent range, without further determining or recording the amount that

actually adhered. The choice of the data bands used in the test appears arbitrary, and

Mr. Wild’s report contains no explanation for the selection of those particular bands. In

addition, the bands are so broad as to mask differences in efficacy of up to 30 percent.

More problematically, in one test the performances of the “control” samples—the

samples that excluded one of the named ingredients—fell entirely within the upper band

of adherence, which means that there was no possible way for the data to show that the




06-1010                                       4
samples of the claimed composition exhibited improved performance. In another test,

“almost every one of” the tested samples registered in the upper band. That evidence is

insufficient to justify any fact-finder in concluding that the claimed composition exhibited

no synergistic film-forming effect. See E. I. du Pont de Nemours & Co. v. Berkley & Co.,

620 F.2d 1247, 1260 (8th Cir. 1980) (Markey, C.J., sitting by designation) (holding that

even if an accused infringer’s invalidity tests were accurate, they did not establish

inoperability as a matter of law because they did not disprove all utility, but rather only

disproved some utility in contrived experimental conditions); see also Tenneco Chems.,

Inc. v. William T. Burnett & Co., 691 F.2d 658, 663–64 (4th Cir. 1983) (holding that

“evidence not inconsistent with inoperability” is not clear and convincing evidence that

overcomes the presumption of validity).

       Second, the Hill Top tests are insufficient to establish inoperability as a matter of

law because there is no evidence that the control samples against which Hill Top

assessed inoperability behaved like the control samples required by the properly

construed claims.    Ms. Kara Curry provided a declaration for Del establishing the

contents of the canisters that Hill Top tested.     She stated that the relevant control

samples comprised an embodiment of the composition recited in the claims with either

the synthetic wax or the micronized titanium dioxide removed. Ms. Curry stated that

upon removing either of those components, “all other components in the composition

were increased by an identical percentage . . . so that their relative concentrations

remained unchanged.” The properly construed claims, however, require comparison of

a mixture of the synthetic-wax and titanium-dioxide components against “the equivalent

volume or concentration” of each component alone. Thus, rather than increasing the




06-1010                                      5
percentages of each of the other components to make up for the removed component,

Del should have substituted enough of the remaining relevant component to create an

“equivalent volume or concentration” of it in the control samples. Del’s lack of evidence

of how the behavior of the samples prepared by Ms. Curry approximates that of properly

prepared control samples renders the tests ineffective to establish inoperability. We

therefore reverse the summary judgment of invalidity based on inoperability and remand

this case to the district court for further proceedings.

                                              III

       Del argues that we should affirm the summary judgment of invalidity on the

alternative basis that the ’541 patent is invalid because of anticipation, a theory on

which the district court did not rule. Del relies on Mr. Wild’s expert report to close the

gap between a prior art reference and Classified’s patent. For the reasons explained

above, Mr. Wild’s report does not establish the presence or absence of a synergistic

film-forming effect in either the prior art composition or the claimed composition.

Accordingly, we reject Del’s anticipation argument based on the Wild report.




06-1010                                       6
