Case: 20-1212 Document: 53 Page: 1 Filed: 12/31/2020
NOTE: This disposition is nonprecedential.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 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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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 patents 3 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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4 BALL METAL BEVERAGE CONTAINER v. CROWN PACKAGING
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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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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, Rexam 4 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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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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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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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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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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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.
