Marley Mouldings Limited v. Mikron Industries, Inc.

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

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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.
__________________________
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").

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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,

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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.

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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

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'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

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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).

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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.
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).
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

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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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