Case 1:14-cv-02396-PGG-SN Document 244-1 Filed 01/05/21 Page 1 of 11
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`Exhibit A
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`Case: 20-1212 Document: 53 Page: 1 Filed: 12/31/2020
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`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`BALL METAL BEVERAGE CONTAINER
`CORPORATION,
`Plaintiff-Counterclaim Defendant-Appellee
`
`v.
`
`CROWN PACKAGING TECHNOLOGY, INC.,
`CROWN CORK & SEAL USA, INC.,
`Defendants-Counterclaim Plaintiffs-Appellants
`
`v.
`
`REXAM BEVERAGE CAN CO.,
`Counterclaim Defendant-Appellee
`______________________
`
`2020-1212
`______________________
`
`Appeal from the United States District Court for the
`Southern District of Ohio in No. 3:12-cv-00033-WHR,
`Judge Walter H. Rice.
`______________________
`
`Decided: December 31, 2020
`______________________
`
`JOHN DAVID LUKEN, Dinsmore & Shohl LLP, Cincin-
`nati, OH, argued for plaintiff-appellee and for counterclaim
`defendant-appellee. Also represented by LAUREN E.
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`2
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`BALL METAL BEVERAGE CONTAINER v. CROWN PACKAGING
`TECHNOLOGY
`
`INGEBRITSON, OLEG KHARITON, JOSHUA LORENTZ, BRIAN S.
`SULLIVAN; JOHN M. WHEALAN, Chevy Chase, MD.
`
` JOHN FRANK MURPHY, Baker & Hostetler LLP, Phila-
`delphia, PA, argued for defendants-appellants. Also repre-
`sented by DANIEL J. GOETTLE, ALAINA J. LAKAWICZ, AARON
`RABINOWITZ.
` ______________________
`
`Before WALLACH, TARANTO, and CHEN, Circuit Judges.
`CHEN, Circuit Judge.
`Crown Packaging Technology, Inc. and Crown Cork &
`Seal USA, Inc. (collectively, Crown) appeal a decision of the
`United States District Court for the Southern District of
`Ohio granting summary judgment in favor of Rexam Bev-
`erage Can Co. and Ball Metal Beverage Container Corp.
`(collectively, Ball Metal) finding the claim terms “second
`point” in U.S. Patent No. 6,935,826 (’826 patent) and “tran-
`sition”1 in U.S. Patent No. 6,848,875 (’875 patent) indefi-
`nite, thereby rendering the asserted claims invalid under
`35 U.S.C. § 112, ¶ 2.2 Because the district court erred in
`its indefiniteness analysis, we vacate the court’s summary
`
`
`1 The “second point” and “transition” both refer to
`the same location—the juncture where the chuck wall ends
`and the annular reinforcement bead begins. For ease of
`reading we only refer to “second point.” Additionally, for
`the sake of ease, quotation marks will be omitted from this
`term hereinafter.
`2 Paragraph 2 of 35 U.S.C. § 112 was replaced by
`§ 112(b) when the Leahy-Smith America Invents Act (AIA),
`Pub. L. No. 112–29, 125 Stat. 284 (2011) took effect on Sep-
`tember 16, 2012. Because the applications resulting in the
`’826 and ’875 patents were filed before that date, we refer
`to the pre-AIA version of § 112.
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`BALL METAL BEVERAGE CONTAINER v. CROWN PACKAGING
`TECHNOLOGY
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`3
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`judgment of invalidity and remand to the district court in
`order for it to perform the correct analysis.
`BACKGROUND
`Aluminum beverage cans have two parts—the can
`body and the can end. The ’826 and ’875 patents3 describe
`a can end, which is attached to the can body using a seamer
`machine. ’826 patent col. 1 ll. 16–19. As shown in Figure
`4 below, the outer edge of the can end, the chuck wall, is
`angled with respect to a vertical line h2 extending from the
`bottom of an annular reinforcing bead 25 and perpendicu-
`lar to the central panel 26, which purportedly saves money
`because less metal can be used without sacrificing can
`strength. Id. at col. 2 ll. 1–12, col. 4 ll. 16–24. The angle is
`shown in the figure at “Cº.”
`
`’875 patent at Fig. 4. The asserted claims require the angle
`“Cº” to fall within a certain range. Claim 50 of the ’875
`patent, for example, recites that the angle is “between
`about 20º and about 60º.” Id. at claim 50. The claimed
`
`3 Because both patents have similar written descrip-
`tions, when citing to the written description, we cite only
`to the ’826 patent.
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`BALL METAL BEVERAGE CONTAINER v. CROWN PACKAGING
`TECHNOLOGY
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`angle is defined by a first point and a second point (or a
`“first location” and a “transition”) that create a diagonal
`line, the angle of which is then calculated based on the di-
`agonal line compared to a vertical line, as illustrated by h2
`in the above figure. ’826 patent at claim 13. The first point
`is defined by the location where the wall extends from the
`peripheral cover hook, and the second point is defined by
`the location where the annular reinforcing bead extends
`from the lowermost end of the chuck wall. Id.
`Claim 14 of the ’826 patent is representative of the
`claims of both patents. Claim 14 depends from claim 13
`and the bracketed language quoted below is from claim 13.
`14. [A metal can end for use in packaging beverages
`under pressure and adapted to be joined to a can
`body by a seaming process so as to form a double
`seam therewith using a rotatable chuck comprising
`first and second circumferentially extending walls,
`said first and second chuck walls forming a junc-
`ture therebetween, said can end comprising;
`a peripheral cover hook, said peripheral cover book
`comprising a seaming panel adapted to be formed
`into a portion of said double seam during said
`seaming operation;
`a central panel;
`a wall extending inwardly and downwardly from
`said cover hook, a first portion of said wall extend-
`ing from said cover hook to a first point on said
`wall, said first wall portion adapted to be deformed
`during said seaming operation so as to be bent up-
`wardly around said juncture of said chuck walls at
`said first point on said wall, a second portion of said
`wall extending from said first point to a second
`point forming a lowermost end of said wall, a line
`extending between said first and second points
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`BALL METAL BEVERAGE CONTAINER v. CROWN PACKAGING
`TECHNOLOGY
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`being inclined to an axis perpendicular to said cen-
`tral panel at an angle of between 30º and 60º],
`further comprising an annular reinforcing bead
`connected to said wall at said second point, said an-
`nular reinforcing bead connecting said wall to said
`central panel.
`’826 patent at claim 14 (emphases added).
`On February 1, 2012, Rexam4 filed an action for declar-
`atory judgment seeking a ruling of noninfringement with
`respect to its can end and a determination of invalidity for
`the ’826 and ’875 patents. J.A. 4282–91. On July 25, 2012,
`Crown counterclaimed alleging infringement of the ’875
`and ’826 patents. JA. 4321–35. The asserted claims in-
`clude claims 50, 52, 54, 56, 58, and 59 of the ’875 patent
`and claim 14 of the ’826 patent. On September 25, 2019,
`the district court granted summary judgment of invalidity
`for the asserted claims. J.A. 6–36. The district court found
`the claims indefinite because the patents failed to reference
`any test for locating the second point and Crown’s expert
`had inconsistently presented at least three different tests
`for locating the second point. Id. at 33.
`Crown appeals the district court’s finding of indefinite-
`ness and grant of summary judgment in favor of Ball
`Metal. We have jurisdiction pursuant to 28 U.S.C.
`§ 1295(a)(1).
`
`DISCUSSION
`The ultimate conclusion that a claim is indefinite un-
`der 35 U.S.C. § 112, ¶ 2 is a legal conclusion which we re-
`view de novo. Eidos Display, LLC v. AU Optronics Corp.,
`779 F.3d 1360, 1364 (Fed. Cir. 2015). “[A] patent is invalid
`for indefiniteness if its claims, read in light of the
`
`4 Ball Metal was later added as a party to the case
`after Ball Metal acquired Rexam.
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`BALL METAL BEVERAGE CONTAINER v. CROWN PACKAGING
`TECHNOLOGY
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`specification delineating the patent, and the prosecution
`history, fail to inform, with reasonable certainty, those
`skilled in the art about the scope of the invention.” Nauti-
`lus Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901
`(2014).
`We review a district court’s grant of summary judg-
`ment under the law of the regional circuit. Lexion Med.,
`LLC v. Northgate Techs., Inc., 641 F.3d 1352, 1358 (Fed.
`Cir. 2011). The Sixth Circuit reviews an order granting
`summary judgment de novo. Savage v. Gee, 665 F.3d 732,
`737 (6th Cir. 2012).
`Crown argues that its expert, Martin J. Higham, has
`consistently used the same methodology to determine the
`location of the second point of the claimed invention over
`the course of various litigations. Appellant’s Br. at 51. We
`disagree. Mr. Higham has had a number of opportunities
`to explain how a skilled artisan would determine the
`claimed second point and has not been consistent in those
`explanations. The method Mr. Higham uses in this litiga-
`tion is the “across from the central panel test.” J.A. 5107,
`6523 (p. 156 ll. 11–19), 6213, 6250. This test calculates the
`second point by drawing a horizontal line from the top of
`the central panel to an intersection point with the chuck
`wall. J.A. 6213. In a prior litigation between Crown and
`Anheuser-Busch, however, Mr. Higham calculated the sec-
`ond point by identifying “a point along the chuck wall
`where the radius of the lower arcuate portion of the chuck
`wall deviates from” the chuck wall to become the annular
`reinforcing bead. J.A. 5129–30, 5133. Mr. Higham deter-
`mined this deviation by first calculating the radius curva-
`ture of the chuck wall and then finding where the chuck
`wall begins to deviate from this curvature. Id. Finally, in
`a prior litigation with Ball Metal, Mr. Higham used the fi-
`nite element analysis (FEA) method—a computer modeling
`method. J.A. 5123–25, 2001.
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`BALL METAL BEVERAGE CONTAINER v. CROWN PACKAGING
`TECHNOLOGY
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`The record evidence also shows, contrary to Crown’s ar-
`gument, that Mr. Higham’s different methodologies do not
`necessarily result in selection of the same location for the
`second point. Unlike the “across from the central panel
`test,” the record shows examples of the other tests identi-
`fying a location other than the point across from the central
`panel as the second point. See J.A. 5133, 5107, 6658. We
`also note that Crown’s argument that the FEA test in the
`prior Ball Metal litigation was simply confirmatory of the
`“across the central panel” test is explicitly rebutted by Mr.
`Higham’s deposition testimony. J.A. 5123–25.
`That the record evidence indicates that multiple differ-
`ent methodologies exist for measuring a parameter recited
`in a claim does not by itself render a claim indefinite. Un-
`der such circumstances, the relevant indefiniteness inquiry
`then becomes whether the differing methodologies lead to
`materially different results in defining the boundaries of
`the claim. We have explained that “the mere possibility of
`different results from different measurement techniques”
`does not render a claim indefinite. Takeda Pharms. Co.
`Ltd. v. Zydus Pharms. USA Inc., 743 F.3d 1359, 1366–67
`(Fed. Cir. 2014). In ruling that a possibility of different
`results did not render the claims indefinite in Takeda, we
`distinguished an earlier case in which held a claim to a pro-
`cess for making a product indefinite because there were
`several methods for measuring a claimed process parame-
`ter and “the particular method chosen was ‘critical to dis-
`cerning whether [a product] has been produced by the
`claimed process.’” Id. at 1367 n.4 (quoting Honeywell Int’l,
`Inc. v. Int’l Trade Comm’n, 341 F.3d 1332, 1340 (Fed. Cir.
`2003)). In Teva, the claim included a specific measurement
`of a copolymer’s “molecular weight” and the specification
`did not indicate which of three known measurement meth-
`ods used was used (Mp, Mw, or Mn) to determine the claimed
`molecular weight. Teva Pharms. USA, Inc. v. Sandoz, Inc.,
`789 F.3d 1335, 1345 (Fed. Cir. 2015). Because it was un-
`clear which measurement to use for the claimed molecular
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`BALL METAL BEVERAGE CONTAINER v. CROWN PACKAGING
`TECHNOLOGY
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`weight and those different measurements would yield dif-
`ferent results, the claim “failed to inform with reasonable
`certainty those skilled in the art about the scope of the in-
`vention.” Id. Similarly, in Dow, we concluded that the
`claims were indefinite where there were multiple methods
`of measuring a claimed parameter “leading to different re-
`sults without guidance in the patent or the prosecution his-
`tory as to which method should be used.” Dow Chem. Co.
`v. Nova Chems. Corp. (Can.), 803 F.3d 620, 634 (Fed. Cir.
`2015) (emphasis added); see also Pacific Coast Bldg Prods.,
`Inc. v. CertainTeed Gypsum, Inc., 816 F. App’x 454, 460
`(Fed. Cir. 2020) (affirming indefiniteness ruling where ev-
`idence demonstrated the existence of “at least two methods
`of converting the measurement between board thicknesses
`that produce significantly differing results”). Consistent
`with the purpose of the definiteness requirement, differ-
`ences in measurement methods must matter for determin-
`ing whether or not a claim limitation is met by those who
`might realistically be practicing the other claim limita-
`tions. Under our case law, then, a claim may be invalid as
`indefinite when (1) different known methods exist for cal-
`culating a claimed parameter, (2) nothing in the record
`suggests using one method in particular, and (3) applica-
`tion of the different methods result in materially different
`outcomes for the claim’s scope such that a product or
`method may infringe the claim under one method but not
`infringe when employing another method. Such a claim
`lacks the required degree of precision “to afford clear notice
`of what is claimed, thereby apprising the public of what is
`still open to them.” Nautilus, 572 U.S. at 909 (quoting
`Markman v. Westview Instruments, Inc., 517 U.S. 370, 373
`(1996) (internal quotation marks omitted)).
`Ball Metal relies on Amgen Inc. v. Hoechst Roussel,
`Inc., 314 F.3d 1313 (Fed. Cir. 2003), to support its argu-
`ment that Crown’s claims are indefinite simply due to the
`lack of clarity in the patent or record as to which of the
`methods should be used to identify the second point on a
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`BALL METAL BEVERAGE CONTAINER v. CROWN PACKAGING
`TECHNOLOGY
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`can end. Appellee’s Br. 32–33. We disagree with this read-
`ing of Amgen. In Amgen, the claimed glycoprotein had
`“glycosylation which differs from that of human urinary
`erythropoietin [uEPO].” Amgen, 314 F.3d at 1340. In other
`words, “one must know what the glycosylation of uEPO is
`with certainty before one can determine whether the
`claimed glyocoprotein has a glycosylation different from
`that of uEPO.” Id. at 1341. The key pivotal defect with the
`claims was that, while the claim language “presupposes
`that the glycosylation of [uEPO] is a fixed, identifiable
`marker,” the evidence established uEPO produced variable
`glycosylation patterns. Id. Because the claimed standard
`for comparison was actually a variable, a skilled artisan
`would be unable to reliably determine whether the glyco-
`sylation of a particular glycoprotein differed from that of
`uEPO. Id. Although we noted that multiple techniques
`existed for detecting the differences in glycosylation be-
`tween two glycoproteins, that observation was not the de-
`cisive factor in affirming the indefiniteness ruling. Amgen
`thus is not inconsistent with our understanding of Teva
`and Dow, discussed above.
`The relevant portion of claim 13, which provides the
`context for dependent claim 14, states “a line extending be-
`tween said first and second points being inclined to an axis
`perpendicular to said central panel at an angle of between
`30º and 60º.” ’826 patent at claim 13. The relevant inquiry
`is therefore whether the different methodologies used to
`identify the second point yield materially different angle
`ranges because the purpose of the claimed second point is
`simply for defining the angle, and it is ultimately the
`claimed angle range, not the location of the second point
`itself that matters for determining the scope of the claim
`and whether an accused product infringes it. For example,
`if the evidence established that any conceivable choice of a
`second point through the different methodologies used by
`Mr. Higham would always lead to an angle that was within
`30º to 60º for any operational can end, then whether
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`BALL METAL BEVERAGE CONTAINER v. CROWN PACKAGING
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`different methods yield different second point locations
`would be immaterial to understanding the scope of claim 1
`of the ’826 patent. On the other hand, if one of the methods
`for identifying the second point resulted in an angle outside
`of the claimed range, then that would be a materially dif-
`ference, for the selection of a particular method would alter
`the result of the infringement inquiry. In that scenario, the
`lack of clarity as to which method to choose to identify the
`second point would have a material impact on the scope of
`the claim, rendering it indefinite.
`The district court’s opinion states “[b]ecause all as-
`serted claims require measuring the angle, from vertical,
`of a hypothetical line that connects two points, one of which
`is a second point/transition, and because the methods do
`not always produce the same results, the method chosen
`for locating the second point/transition could affect
`whether or not a given product infringes the claims.” J.A.
`33 (internal quotation marks omitted). This analysis is in-
`complete, however, because it does not establish in any
`meaningful way what material difference in angle range
`outcome, if any, exists among Mr. Higham’s different meth-
`odologies. We therefore must vacate the district court’s de-
`cision. We emphasize that on remand the district court
`should review Mr. Higham’s methodologies and analyze
`whether the methods lead to materially different results
`for the angle.
`
`CONCLUSION
`We have considered the parties’ remaining arguments
`and find them unpersuasive. For the foregoing reasons, we
`vacate the district court’s grant of summary judgment and
`remand for further proceedings consistent with this opin-
`ion.
`
`VACATED AND REMANDED
`COSTS
`
`No costs.
`
`