Page4
`
`Not Reported in F.Supp.2d, 2000 WL 33906466 (W.D.Wis.)
`(Cite as: 2000 WL 33906466 (W.D.Wis.))
`
`Plaintiffs rely not on the face of the contract but
`on the alleged circumstances surrounding the Mon(cid:173)
`santo-Southwall Agreement. Plaintiffs argue that the
`Southwall Agreement and the 1994 Crown Amend(cid:173)
`ment were "intertwined", and that the contracting
`parties knew, recognized and intended that plaintiff
`fabricate the prelaminates called for in the Southwall
`Agreement. To the contrary, the circumstances sur(cid:173)
`rounding
`the 1994 Crown Amendment and
`the
`Southwall Agreement are compelling evidence that
`Crown was not an intended third party beneficiary of
`the Southwall Agreement. The 1994 Crown Agree(cid:173)
`included carefully crafted restrictions on
`ment
`Crown's right to use Monsanto technology. It defies
`common sense that Monsanto and Southwall inten(cid:173)
`tionally rendered those restrictions meaningless by
`providing Crown the unrestricted right to use the same
`technology as a third party beneficiary of the South(cid:173)
`wall Agreement.
`
`*5 Plaintiffs argue that Crown must have been an
`intended beneficiary because it was the only company
`capable of offering Southwall the necessary encapsu(cid:173)
`lation service. Acknowledging that plaintiff must be
`used or will be used for its encapsulation service is not
`the same as intending to benefit Crown with the
`promised performance under the contract. Plaintiff
`Crown is merely an incidental beneficiary. See R~.:
`~.!Q-.t\<m.<;ct!L(_S_<>:.~~)_n_r;[) ___ g_LC~)_n_l_r_;~!~t~ __ § __ J_Q2.C2).. The Re-
`statement emphasizes this:
`
`e. Incidental beneficiaries. Performance of a con(cid:173)
`tract will often benefit a third person. But unless the
`third person is an intended beneficiary, as here de(cid:173)
`fined, no duty to him is created.
`
`be an intended beneficiary.
`
`New York law requires that to enforce a contract
`as a third-party beneficiary that third-party must be an
`intended beneficiary of the performance under the
`contract. Nothing appears on the face of the Southwall
`Agreement that would indicate that plaintiff Crown
`was such an intended beneficiary. While that alone is
`sufficient under New York law, the circumstances
`surrounding the Agreement do not support a conclu(cid:173)
`sion of intent either. Plaintiffs can not show that
`Southwall or defendant intended the contract to bene(cid:173)
`fit Crown or to permit it to enforce contractual rights.
`
`WFDL
`Plaintiffs seek to invoke the aegis of the Wis(cid:173)
`consin Fair Dealership Law, alleging that defendant's
`revocation of its waiver of the Crown Agreement's
`Paragraph 13 constituted a termination that violated
`the WFDL's good cause and notice provisions. See
`Wis. Stat. ~.S 135.03 & 135.04. To be eligible for the
`protections of the WFDL a plaintiff must first estab(cid:173)
`lish that it is a "dealer" within the meaning of the
`WFDL. It is with this first step that plaintiffs' WFDL
`claim falters.
`
`The WFDL defines a "dealer" as a "grantee of a
`this state." Wis. Stat. §
`dealership situated
`in
`135.02(2). The Wisconsin Supreme Court recently
`examined what it means to be "situated in this state."
`Baldewein Co. v. Tri--Clover inc. 606 N.W.2d 145
`(Wis.2000). In Baldewein, the Supreme Court estab(cid:173)
`lished guidelines for determining whether a dealership
`was "situated in this state", including a non-exclusive
`nine factor test. 606 N.W.2d at 151-.53.
`
`17. B contracts with A to buy a new car manu(cid:173)
`factured by C. C is an incidental beneficiary, even
`the promise can only be performed if money is paid
`to C.
`
`Although recognizing that in-state sales are an
`important factor, the Supreme Court rejected a sin(cid:173)
`gular focus on the putative dealer's in-state sales. The
`Supreme Court adopted instead a dual focus:
`
`Restatemem (Second) of Comracts § 302 cmt. e,
`illus. 17. In both the illustration and the present case,
`the contracting parties understood that a third-party
`would be involved and would derive some benefit
`from their agreement. But in both agreements there
`was no indication that they intended to give the benefit
`of their performance to that third-party. Here, the
`benefit to the third-party upon performance is clear.
`However, more than the contracting parties' mere
`acknowledgment of a third-party benefit is required to
`
`*6 [The inquiry] must involve an analysis of the
`totality of the dealership investment that is special(cid:173)
`ized to the marketing of the grantor's products in
`this state; in other words, the amount of money and
`other resources the dealer has sunk into the devel(cid:173)
`opment of the Wisconsin market, in addition to the
`amount of sales the dealer derives from this state.
`
`Baldewein, 606 N.W.2d at 151-52.
`
`ME1 15062683v.1
`
`© 2013 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`DRL - EXHIBIT 1007
`DRL1301
`
`

`
`Not Reported in F.Supp.2d, 2000 WL 33906466 (W.D.Wis.)
`(Cite as: 2000 WL 33906466 (W.D.Wis.))
`
`Under this general formulation it is apparent that
`Crown has no dealership "situated in this state". It is
`undisputed that plaintiff Crown has no customers in
`Wisconsin. Consequently, it derives no revenue from
`the Wisconsin market. Moreover, there is no evidence
`that Crown has expended a single dollar to develop or
`cultivate a market in Wisconsin. Having no market in
`Wisconsin and not having attempted to develop one,
`plaintiff Crown cannot be deemed to be "situated" in
`Wisconsin under the broad principles announced in
`Baldewein.
`
`Nevertheless, the Supreme Court in Baldewein
`continued to elucidate a more specific nine factor test
`in analyzing whether a dealership is "situated" in
`Wisconsin. The court announced that:
`
`[T]o determine whether a dealership is "situated in
`this state" under the WFDL, courts should examine
`the following factors: l) percent of total sales in
`Wisconsin (and/or percent of total revenue derived
`from Wisconsin); 2) how long the parties have dealt
`with each other in Wisconsin; 3) the extent and
`nature of the obligations imposed on the dealer re(cid:173)
`garding operations in Wisconsin; 4) the extent and
`nature of the grant of territory in this state; 5) the
`extent and nature of the use of the grantor's propri(cid:173)
`etary marks in this state; 6) the extent and nature of
`the dealer's financial investment in inventory, facil(cid:173)
`ities, and good will of the dealership in this state; 7)
`the personnel devoted to the Wisconsin market; 8)
`the level of advertising and/or promotional expend(cid:173)
`itures in Wisconsin; 9) the extent and nature of any
`supplementary services provided in Wisconsin. We
`do not intend this list to be all-inclusive. The inquiry
`should focus on the nature and extent of the deal(cid:173)
`ership's development of, investment in and reliance
`upon the Wisconsin market.
`
`Plaintiffs attempt to apply these nine factors in a
`vacuum-ignoring the Supreme Court's admonition that
`the factors must be analyzed with an eye towards the
`dealer's relationship with the Wisconsin market.
`Taken in the proper context the factors show that
`plaintiff Crown has no dealership "situated in the
`state".
`
`First, plaintiff Crown makes no sales within the
`
`PageS
`
`state. Plaintiffs customers are all out-of-state or
`overseas. Plaintiffs' formalistic argument that sales to
`out-of-state customers delivered FOB Crown's Sun
`Prairie, Wisconsin plant should be counted as in-state
`sales must be rejected. This same argument was re(cid:173)
`jected when the Wisconsin Supreme Court stated that
`where title and risk passes is irrelevant under the
`WFDL. J.:ig_lfi~}::t~:iLh __ .QQ_~__I;~L}.Y,_~Q. __ i!Ll2J Sales reve(cid:173)
`nues are not derived from the Wisconsin market
`merely because the out-of-state customers took pos(cid:173)
`session of goods within the state.
`
`*7 No other factor favors plaintiffs. Although
`Crown and defendant had a commercial relationship
`spanning twelve years, that relationship is unrelated to
`the Wisconsin market; defendant imposes no obliga(cid:173)
`tions on Crown's operations affecting the Wisconsin
`market. Defendant has not granted Crown a Wisconsin
`territory and has not granted it commercial use of
`marks within Wisconsin. Plaintiff Crown has made no
`financial investments to reach the Wisconsin market,
`has no personnel devoted to it and engages in no ad(cid:173)
`vertising or promotion within it. No supplementary
`services are provided by plaintiff Crown within the
`Wisconsin market.
`
`Plaintiff Crown's only connection with Wisconsin
`is its location, which is irrelevant in the "situated in the
`state" analysis. Baldewein, 606 N.W.2d at 153. The
`WFDL focuses on protecting investments in dealer(cid:173)
`ships serving the Wisconsin market, not in businesses
`merely located in the state. Because plaintiff Crown
`can not show investment in the Wisconsin market nor
`revenue derived from it, Crown cannot be deemed to
`be a dealer with a dealership "situated" in Wisconsin.
`Accordingly, it can not invoke the protective measures
`in the WFDL.
`
`Covenant Not to Compete
`Defendant moves for summary judgment on
`plaintiffs' third claim which seeks a declaratory
`judgment that Paragraph 13 of the Crown Agreement
`is invalid and unenforceable.
`
`Plaintiff characterizes Paragraph 13 as a covenant
`not to compete. It reads:
`
`13. SECRECY PROVISIONS. [Crown] shall treat
`and maintain, and cause its employees and agents to
`treat and maintain, as Monsanto's confidential
`property, and not use or disclose to others or man-
`
`ME1 15062683v.1
`
`© 2013 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`DRL - EXHIBIT 1007
`DRL1302
`
`

`
`Not Reported in F.Supp.2d, 2000 WL 33906466 (W.D.Wis.)
`(Cite as: 2000 WL 33906466 (W.D.Wis.))
`
`ufacture a solor [sic] Saflex type product during the
`term of this Agreement and for fifteen (15) years
`thereafter, except as is necessary to perform the
`work hereunder . . . any information . . . regarding
`Monsanto's products, plans, programs, plants, pro(cid:173)
`cesses, costs, equipment, operations or customers
`which may be heretofore or hereafter disclosed to,
`or come within the knowledge of, [Crown], its em(cid:173)
`ployees or agents in the performance of this
`Agreement, without in each instance securing the
`prior written consent of Monsanto.
`
`1988 Crown Agreement <][ 13. The quoted lan(cid:173)
`guage imposes two restrictions on plaintiff Crown.
`First, it must treat as confidential specific information
`held by Monsanto and disclosed to Crown during the
`performance of the contract. Exceptions to this re(cid:173)
`quirement are set forth later in Paragraph 13. Second,
`Crown must refrain from manufacturing a solar
`"Saflex type product" for anyone except Monsanto
`during the term of the Agreement and for fifteen years
`thereafter.
`
`The parties agree that Missouri law governs the
`Crown Agreement. In Missouri, a promise not to
`compete, standing alone, is illegal and contrary to
`public policy as a restraint of trade. Renal Treatment
`Centers-I'vfissouri Inc. v. Braxton 945 S.W.2d 557
`563 (Mo.Ct.App.E.D.1997) (citing John D. Calamari
`& Joseph Perillo, Contracts, Specific Performance§§
`16-19 (1977)). However, such an agreement as part of
`a larger legitimate transaction-making it an ancillary
`restraint-may be valid if it is reasonable in duration
`and scope. !d. Agreements with such ancillary re(cid:173)
`straints have been recognized between employer and
`employees, buyers and sellers of businesses and
`partners of a partnership. !d. (citing R\<iiJ:.~L~ffi\<DJ
`f:5~-~~1.n91 __ QLC5.m.tn!~J:.~---§ ___ H3_8 ___ (1212_1). However, this
`list is not exclusive. The Restatement recognizes this
`principle is applicable in other contexts where the "a
`valid transaction or relationship gives the promisee a
`legitimate interest sufficient to sustain a promise not to
`compete." !d. (quoting R~-~!nt~m~nLL5s-,~Q.UQ) _ _g.LC9.n.:
`Imf_t;;__.§__J.8:1 cmt. e (1979)).
`
`*8 Although no Missouri state court has reached
`the issue, the law of covenants not to compete is not
`designed to reach restrictions such as the first one
`imposed by Paragraph 13. This is a confidentiality
`provision. Plaintiff Crown may not use or disclose
`certain information described by the paragraph as
`
`Page6
`
`confidential. Such an agreement cannot be character(cid:173)
`ized as a covenant not to compete nor as an unrea(cid:173)
`sonable restraint of trade. Other state courts that have
`addressed this issue have stated that a contract is not a
`restraint of trade if it does not seek to prevent a party
`from engaging in similar business in competition with
`the promisee, but instead seeks to prevent the disclo(cid:173)
`sure or use of confidential information. :i.1Q1f __ .fgJ:..rJJ..
`A'liJ..LL~JiJ..Q . .l!.h~, ___ CQo ... E, __ _Qg_mJZ,\.L<:'I.~...J.41 .. E,£g __ ::\2J_,_ __ 82cti
`l.i~J:)L<:'""'-:ltllz_iQl1 ____ .!:, _____ K&.12.?..t::.s.ki_,__ ___ JM
`(C!J-1.L.:\P.I!J.2.~2).;
`N,~Y,£g ___ 6.Q2_, __ !il.J.JMi£Jd.2.81).; GLu.G~Llt.([g, ___ ~!L_.!:,
`5:~:l.!.!:!l.i:.s.L ... £H.J:L~Y_,_J_~_Z ___ (MifJLl221).; f.::.!J.?..!!J.!M~Jg_f:.s.
`!~rQ_.;_g:.s.:.s.i.fJg,__I.IJ.:~~---x.~ __ .ltl.~:r,_!]_(!_I.J.)i.L __ 416 ___ s_J:,,.z4_J_z:±, ___ nti
`(~_,C,_CLf~.l!PJ226). The District Court for the Eastern
`District of Missouri has noted the difference between
`covenants not to compete and confidentiality agree(cid:173)
`ments: "A person bound to a covenant not to compete
`is restricted in his choice of occupation while an in(cid:173)
`dividual bound to a confidentiality agreement is
`merely prevented from disclosing certain information
`constituting 'trade secrets'." Coulter Corp. v. Leinert.
`869 F.Supp. 732,734 (E.D.Mo.l994).
`
`Barring a dramatic departure by the Missouri
`Supreme Court from the substance of the decisions of
`other states it is apparent that Missouri law would not
`subject confidentiality agreements to the same stand(cid:173)
`ards as applied to covenants not to compete. Plaintiffs
`cite no authority for such a departure. Accordingly, the
`Court finds that plaintiffs' challenge to the validity of
`Paragraph 13 of the Crown Agreement fails to the
`extent it requires plaintiff Crown not to use or disclose
`information designated as confidential.
`
`However, Paragraph 13 also forbids plaintiff
`Crown from producing a solar "Saflex type product"
`during the term of the Agreement and for fifteen years
`thereafter. Despite the absence of Missouri case law
`applying the law of non-compete covenants to con(cid:173)
`tractual arrangements between corporations,
`the
`clause constitutes a promise to refrain from competi(cid:173)
`tion which could not otherwise be valid unless it was a
`restraint ancillary to a legitimate contract. See !3&1J.0.:!.
`D::?..Q1!IH~!J..L~:~:fJJ..f!.'§., __ 21.~ __ 5._j~(-~Q.JJL~-~i; see also R.~:.
`§.!.i!!~_n:t~nHS.~~Q!!E!l.~1.LC9.UJ:.E!~t~ .. §.§.J.8.7.. & H.B.Lt~!.I~!).
`
`Covenants against competition, when properly
`identified as an ancillary restraint, must serve a proper
`interest of the promisee and must be reasonably lim(cid:173)
`ited in time and place to protect those interests. Osage
`Glass, Inc. v. Donovan. 693 S.W.2d 71, 74 (Mo.
`
`ME1 15062683v.1
`
`© 2013 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`DRL - EXHIBIT 1007
`DRL1303
`
`

`
`Page 7
`
`Not Reported in F.Supp.2d, 2000 WL 33906466 (W.D.Wis.)
`(Cite as: 2000 WL 33906466 (W.D.Wis.))
`
`l!.§I15,;_J.2B_j}; see also R\<!i1~!~.m-~n.US.\<f_QnQ}._QLC5-.m.:
`tJ:iKt!i __ § __ l8B .. .0.212J The promisees' interests protect(cid:173)
`able by such covenants are their interests in trade
`secrets and customer contacts. See S.l:!.JZ.f!..J.iQLJ..i..?..f!:.C.l?.Q.?i
`~Q.r£, ______ E, _____ ~:4J:!.:~qrd""s.. ... 3~.2 _____ s_,}Y,£g ______ n.2, ______ ~±1.:1.8
`L~1~"l.,~J,i.:\P-Id.2.~!.J)..
`
`*9 Here, Paragraph 13 and its promise not to
`compete is ancillary to the legitimate obligations in the
`Crown Agreement. Defendant has produced no evi(cid:173)
`dence as to its interest in protecting confidential in(cid:173)
`formation and customer contacts nor as to the rea(cid:173)
`sonableness of the non-compete clause in protecting
`those interests. It is unknown whether plaintiff could
`produce a competing solar "Saflex type product"
`without using or disclosing Monsanto Information and
`thereby violating the confidentiality portion of Para(cid:173)
`graph 13. Likewise it is not even clear what constitutes
`a solar "Saflex type product". The confidentiality
`provision in Paragraph 13 is designed to protect de(cid:173)
`fendant's trade secrets and customer contacts. Con(cid:173)
`sequently, an important factual issue exists as to what
`extent a non-compete provision is reasonably neces(cid:173)
`sary to protect those same trade secrets and customer
`the
`reasonableness of
`contacts. This
`issue-the
`non-compete provision-precludes defendant's motion
`for summary judgment as to the validity of the
`non-compete provision in Paragraph 13.
`
`There is no question that 1h~,_:t.i6.L_J2_<l.J~JJ1 is prior
`art, having been identified as such in the specification
`of rl!\< __ :;;;JJ .. .Pi!t\<n! at col. 1, lines 44 and 58. Accord(cid:173)
`ingly, the relevant inquiry is whether each element and
`limitation of the challenged claims is found in thl< .. ~~t.il
`P-.~l!f',n!- There is considerable dispute between the
`parties concerning whether the patent examiner con(cid:173)
`sidered !hs-,_:6.~.LP-.~t!s-,n1 and the resulting impact on the
`relevant burden of proof. As subsequent analysis re(cid:173)
`veals, tb.~-~t26.l._p_mS'ct!1 does not anticipate th.~-~2_U __ p_~:
`!s-,n! or render it obvious and this conclusion would be
`the same regardless of whether it was considered by
`the examiner. Accordingly, the Court does not reach
`that issue.
`
`The '661 patent, as well numerous other prior art
`inventions, disclose the first three elements of claim
`one. It was well known in the prior art to create a solar
`control film by coating a transparent plastic carrier
`surface with a multilayer solar control film and
`bonding it to a energy absorbing plastic safety layer.
`This is apparent from column 1 of the '511 specifica(cid:173)
`tions wherein it is recognized that these elements were
`:D-1\< .... ~~-U. ... P-.~l!f',n! further
`well known in the art.
`acknowledges that the general optical design of me(cid:173)
`tallic interference coatings was known. Column 5,
`lines 30-56. Certainly tb.~ .. :6.~.L.R.i!tl<n1 includes these
`elements.
`
`The '511 Patent-Anticipation and Obviousness
`Plaintiffs move for summary judgment that the
`'511 patent is anticipated by U.S. Patent No. 4,017,661
`to Gillery (the '661 patent), and is obvious under the
`'661 patent and other prior art. Defendant moves for
`summary judgment that tb.~-~5JJ .. P.~!~_n1 is neither an(cid:173)
`ticipated nor obvious.
`
`*10 The only real issue is whether the limitation
`"wherein said solar control film contributes no more
`than about 2% visible reflectance, based on total vis(cid:173)
`ible incident radiation" is found in the '661 patent.
`Plaintiffs concede that the '661 patent does not ex(cid:173)
`plicitly disclose this limitation but contend that the
`disclosure is inherent in the '661 teachings.
`
`'
`
`1
`
`A claim is anticipated when all the elements and
`limitations of the claim are found within a single prior
`art reference. 5'cripps Clinic & Research Foundation
`927 F.2d
`] 576
`(Jenentech.
`lnc.
`1565~
`(Fed. Cir.l991). There must be no difference between
`the reference and the patented invention as viewed by
`one of ordinary skill in the art. !d. In order to prevail
`on its anticipation defense defendant must also over(cid:173)
`come the presumption that the patent examiner
`properly applied the prior art in issuing the patent and
`prove invalidity by clear and convincing evidence.
`American Hoist & Derrick Co. v. Sowa & 5,"ons. inc ..
`725 F.2d 1350, 1359-60 (Fed.Cir.1984).
`
`To establish inherency, the extrinsic evidence must
`make clear that the missing descriptive matter is
`necessarily present in the thing described in the
`reference, and that it would be so recognized by
`persons of ordinary skill. Inherency, however, may
`not be established by probabilities or possibilities.
`The mere fact that a certain thing may result from
`given set of circumstances is not sufficient.
`
`169 F.3d
`re Robertson
`in
`(Fecl.Cir.l999) (citations omitted).
`
`743.
`
`745
`
`The disclosure of !h.<;,_:\:?.~.L.PiJ..t\<D.! surely does not
`meet this standard for the 2% visible reflectance lim-
`
`ME1 15062683v.1
`
`© 2013 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`DRL - EXHIBIT 1007
`DRL1304
`
`

`
`Not Reported in F.Supp.2d, 2000 WL 33906466 (W.D.Wis.)
`(Cite as: 2000 WL 33906466 (W.D.Wis.))
`
`itation. :Dl\< ___ :6.61 .. .Ri!t\<J:H reveals nothing about the
`desirablility of reducing solar control film reflectance
`to 2% or less. The two examples in the preferred
`embodiment suggest that the thickness of the silver
`layer in the coating stack should be 150 and 160
`Angstroms-a thickness which is recognized by !h\<
`.~69..LJ!~_t\<J:l.! itself to produce about 14% reflectance.
`This reflectance is consistent with the disclosure of !h\<
`-~~.U . .Ri!t\<!1!. at column 13, table 2 and its related text. If
`none of the disclosed preferred embodiments of the
`'661 invention meet the 2% limitation, it can hardly be
`inherent in the disclosure.
`
`While it is possible to produce a solar film as(cid:173)
`sembly incorporating the elements of claim l of the
`'661 patent which also satisfies the elements and lim(cid:173)
`itations of claim 1 of 1h~ __ :;;;JJ .. rmt~n1, a 2% reflectance
`is certainly not the necessary result of following the
`teachings of th\< .. ~69..Lp_~!~_n1. The 2% limitation is not
`inherent in th\< __ :6.61 .. P.~!~,n1. Plaintiffs have also sug(cid:173)
`gested that UK Patent Application GB 2 057 355, (the
`"GB '355 patent") which describes a solar control
`stack similar to that of 1h.~-~9..6.L.Ri!t\<J:l.!, anticipates !h\<
`-~~-U. . .Q~_t\<!1!- There is no additional disclosure in the
`GB '355 patent which would alter the preceding
`analysis. Claim 1 of .!h~--~~H .. PJJJ~1!1 is not anticipated
`by either patent. Because claim 1 is the only inde(cid:173)
`pendent claim of !h\< .. ~~-U .. 12il1~n.t, it follows that none
`of the other dependent claims can be anticipated.
`
`Relying primarily on the same prior art, plaintiffs
`argue that if the '5 11 patent is not anticipated it is at
`least rendered obvious under 35 U.S.C. .:$ 103 because
`"the differences between the subject matter sought to
`be patented and the prior art are such that the subject
`matter as a whole would have been obvious at the time
`of the invention to a person having ordinary skill in the
`art." In order to prevail defendant must demonstrate
`obviousness by clear and convincing evidence. l~9.f1if..?..
`(QI.Q, _____ _l!, _____ Jl1t!."flJ.?..g_l, _____ LL4, ______ I8.L ____ L2_Q _____ 89..1'--... 8.1.2
`.U:f',~LC!rJ.2.821 The ultimate issue of obviousness has
`been termed an issue of law. However, its determina(cid:173)
`tion is dependent on a series of factual issues as set
`forth in fd:t.:{1tW.m .. tJd.1n.12f_Q::?.. .. CQ,_,_j_8_J_ILS..,_.LG2.6.6}.
`Those inquiries are as follows: (1) determining the
`scope and content of prior art; (2) comparing the dif(cid:173)
`ferences between the prior art and the claims at issue;
`(3) determining the level of ordinary skill in the art;
`and (4) considering objective evidence of obviousness
`j}f..if.~'JL ___ Lg_lz_Q{g_(QLif,L ... lrL~:, ___ ..t,
`or nonobviousness.
`~1~!mdQ!.h..LU_(~-"--~~2.7..E2d.B7.Q __ (J:~~~LCir:.l2.~~-:u. When a
`
`Page 8
`
`defendant argues that a combination of prior art ref(cid:173)
`erences renders the patented invention obvious, the
`defendant has the burden to establish some motivation
`in the prior art for one of ordinary skill in the art to
`make the combination. !11 .. !::?.. . .BQ1dl~L.J.42..EJEU.J:;i_Q,_
`D2:Z..U:f',~LC!rJ.2.~!.8.l-
`
`*11 It was known to those skilled in the art and
`disclosed in the prior art to make a solar control film
`by coating PET with a multilayer reflective coating
`consisting of a metallic layer between two dielectric
`layers. It was also known and disclosed to design the
`film so as to maximize the reflection of infrared radi(cid:173)
`ation and the transmission of visible light, and to in(cid:173)
`clude a metal layer in the stack with conductivity
`appropriate for use in electrical resistance defrosting
`of the window. However, no prior art identified by the
`plaintiffs discloses that reflectance below 2% will
`mask wrinkles or even discloses a solar film with
`reflectance below that threshold.
`
`Perhaps more importantly, prior to the '511 patent
`there was no teaching in the prior art which provided
`motivation to reduce the solar film reflectivity con(cid:173)
`tribution below 2% because there was no disclosure of
`the impact of such a reduction on obscuring wrinkles.
`Although the prior art generally sought to reduce
`visible light reflectivity and thereby enhance visible
`light transmission, it also recognized that superior
`infrared reflectivity was generally sacrificed by a very
`thin metal layer, GB '355 patent lines 5-44, as was the
`conductivity and continuity of the metal layer for
`defrosting purposes, '661 patent at col. 4, lines 25-38.
`Furthermore, the existing art made it clear that the
`required level of visible light transmission for a
`windshield application (between 70 and 80 percent)
`could readily be achieved in a composition where the
`solar film contributed considerably more than 2%
`visible light reflectivity. Accordingly, the prior art
`(including 1h~----~66.L . .Q~1\<ntl taught that the proper
`compromise to achieve the conflicting goals of infra(cid:173)
`red reflectance, visible light transmission and con(cid:173)
`ductivity was a solar film with a visible light reflec(cid:173)
`tivity greater than 2%.
`
`The contribution of the '551 patent of both the
`desirability of reducing the visible light reflectivity
`contribution of the solar film below 2% to mask
`wrinkles and the means to accomplish that goal while
`maintaining acceptable infrared reflectance and elec(cid:173)
`trical properties was a nonobvious contribution to the
`
`ME1 15062683v.1
`
`© 2013 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`DRL - EXHIBIT 1007
`DRL1305
`
`

`
`Not Reported in F.Supp.2d, 2000 WL 33906466 (W.D.Wis.)
`(Cite as: 2000 WL 33906466 (W.D.Wis.))
`
`art.
`
`The '258 Patent-Anticipation and Obviousness
`Plaintiffs rely primarily upon a patent they iden(cid:173)
`tify as JP 59-223256A (the JP '256 patent) in support
`of their argument that the '258 patent is anticipated or
`obvious. Defendant initially objects on the basis that
`there is no foundation for the translation offered by
`plaintiffs and that they have identified the wrong pa(cid:173)
`tent in their submissions. Specifically, exhibit I to the
`Ranney affidavit referenced by plaintiffs, does not
`appear to be the document referred to in plaintiffs'
`brief. The Court does not address these preliminary
`arguments because assuming the document is cor(cid:173)
`rectly translated and identified it does not anticipate or
`render obvious the '258 patent.
`
`The critical elements of the '258 patent are the
`final element of each independent claim which re(cid:173)
`quires that the PVB layers of the patented laminate
`before bonding are "characterized by a wave index
`value, WI, of less than 15,000 square micrometers."
`This element is neither disclosed not suggested by the
`JP '256 patent. The disclosure of JP '256 recognizes
`that PVB with a surface roughened for deairing pro(cid:173)
`duced wrinkles in the laminate after bonding. It sug(cid:173)
`gests avoiding this problem by laminating smooth
`extruded PVB and embossing it after lamination with
`a prescribed roughening pattern. It teaches nothing
`about the characteristics of roughened PVB which
`causes wrinkling and suggests that PVB with a
`roughened surface before bonding will always pro(cid:173)
`duce wrinkles in a finished laminate.
`
`*12 The invention of the '258 patent is that
`pre-roughened PVB, whether extruded or embossed,
`can be incorporated in a laminate without wrinkling
`provided it falls within the wave index parameters
`prescribed and defined by the '258 specification. That
`element is clearly not disclosed or inherent in the JP
`'256 patent.
`
`Plaintiffs also argue that if the JP '256 patent does
`not anticipate the '258 patent it renders it obvious
`when combined with the teachings of European Patent
`Application 0 185 863 (EP '863 Patent) which teaches
`a method for roughening PVB. To the contrary, the JP
`'256 patent teaches not to use a pre-roughened PVB
`sheet because such a procedure will result in reflective
`distortion. Furthermore, neither patent teaches the
`means to measure waviness or the threshold of wavi-
`
`Page9
`
`ness in PVB sheeting which will produce a distortion
`free laminate after bonding. Plaintiffs have not pro(cid:173)
`duced evidence to demonstrate that it would have been
`obvious to one of ordinary skill in the art to practice
`the invention of Ih~--~~2.~_-.Pg!~!lt based on prior art at
`the time. Defendant is entitled to summary judgment
`on the claim.
`
`Invalidity for Failure to Name Inventor
`Plaintiff Krone claims that he was improperly
`excluded as a named inventor on both the '511 and
`'258 patents and therefore seeks to have them declared
`invalid or corrected to reflect that he is an inventor
`pursuant to 35 U.S.C. § 256. Defendant moves for
`summary judgment asserting that the undisputed facts
`establish that Krone was not an inventor.
`
`Section 256 provides that the non-joinder of a
`joint inventor does not invalidate a patent if the
`omitted inventor was omitted by error without decep(cid:173)
`tive intention on his part. It further provides that the
`court may order correction of the inventors named on
`the patent if appropriate. There is no suggestion by
`either party that Krone was omitted from the patent
`through any deceptive intention. Accordingly, there is
`no basis to invalidate the patent and the sole issue is
`whether the present facts viewed most favorably to
`plaintiff Krone could permit a finding that he should
`be added to the patent as a joint inventor.
`
`The undisputed facts establish that Krone is not
`an inventor within the meaning of the patent statute. In
`order to be found a co-inventor plaintiff must demon(cid:173)
`strate by clear and convincing evidence that he con(cid:173)
`tributed to the conception of at least one claim in of the
`patent. Ethicon, Inc. v. United States Surr?.ical Corp.,
`135 F.3d 1456. 1460-61 (Fed.Cir.1998). Unless there
`is a dispute of underlying facts, inventorship is a
`question of law. !d. One does not qualify as a joint
`inventor by assisting the actual inventor after concep(cid:173)
`tion of the invention, even if the specification dis(cid:173)
`closes the means to practice the invention in the pre(cid:173)
`ferred embodiment. !d.
`
`Plaintiff Krone developed a machine for lami(cid:173)
`nating PET and PVB. Neither the '511 nor the '258
`patent makes any claim relating to a laminating ma(cid:173)
`chine, even though it is clear that such a machine will
`be necessary to practice the invention of either patent.
`Under these circumstances it is impossible to conclude
`that Krone conceived of any aspect of the inventions.
`
`ME1 15062683v.1
`
`© 2013 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`DRL - EXHIBIT 1007
`DRL1306
`
`

`
`Page 10
`
`Not Reported in F.Supp.2d, 2000 WL 33906466 (W.D.Wis.)
`(Cite as: 2000 WL 33906466 (W.D.Wis.))
`
`He admittedly did not make any contribution to the
`inventive concept of !h\<_~:i.U.P.~!t~n! that a solar control
`film which contributes no more than 2% reflectance
`will mask wrinkles. He had no input into the design of
`the solar stack to achieve this result. Similarly, he did
`not conceive of the concepts of waviness or a wavi(cid:173)
`ness index and did not contribute to any experiments
`which led to the invention that PVB which met the low
`waviness standard could produce a distortion free
`laminate. Although he certainly contributed to the
`joint venture between the parties by the contribution of
`his mechanical modifications to laminating machin(cid:173)
`ery, that contribution is simply not a part of the claims
`which are the inventions of the patents in suit.
`
`ORDER
`*13 IT IS ORDERED that plaintiffs' motion for
`summary judgment is DENIED;
`
`IT IS FURTHER ORDERED that defendant's
`motion for summary judgment is DENIED concerning
`the enforceablility of the restrictive covenant at para(cid:173)
`graph 13 of the Crown Agreement and is in all other
`respects GRANTED.
`
`W.D.Wis.,2000.