Multilayer Stretch Cling Film v. Berry Plastics Corporation , 831 F.3d 1350 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
MULTILAYER STRETCH CLING FILM HOLDINGS,
INC.,
Plaintiff-Appellant
v.
BERRY PLASTICS CORPORATION,
Defendant-Cross-Appellant
______________________
2015-1420, 2015-1477
______________________
Appeals from the United States District Court for the
Western District of Tennessee in No. 2:12-cv-02108-WGY-
cgc, Judge William G. Young (by designation).
______________________
Decided: August 4, 2016
______________________
MELISSA HUNTER SMITH, Stites & Harbison, PLLC,
Nashville, TN, argued for plaintiff-appellant. Also repre-
sented by JOEL T. BERES, Louisville, KY.
MARK A. HAGEDORN, Barnes & Thornburg LLP, Chi-
cago, IL, argued for defendant-cross-appellant. Also
represented by ELIZABETH A. PETERS, JONATHAN PAUL
FROEMEL.
______________________
2 MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS
Before DYK, PLAGER, and TARANTO, Circuit Judges.
Opinion for the court filed by Circuit Judge DYK.
Opinion dissenting in part filed by Circuit Judge
TARANTO.
DYK, Circuit Judge.
Multilayer Stretch Cling Film Holdings, Inc. (“Multi-
layer”) brought suit against Berry Plastics Corp. (“Ber-
ry”), alleging infringement of at least claim 1 of U.S.
Patent No. 6,265,055 (“the ’055 patent”), which relates to
multilayered plastic cling wrap films. The district court
construed the claims of the ’055 patent as not covering
(i.e., closed to) blends of the four resins expressly recited
by those claims or unlisted resins, instead requiring that
each of five inner layers within the film be composed of
only one of the listed resins. Multilayer Stretch Cling
Film Holdings, Inc. v. Inteplast Grp. Ltd. (“Multilayer v.
Inteplast”), No. 2:12-cv-2107, 2013 WL 5972195, at *27
(W.D. Tenn. Nov. 8, 2013) (claim construction order). The
court subsequently granted Berry’s motion for summary
judgment of non-infringement based on its claim con-
struction. Multilayer Stretch Cling Film Holdings, Inc. v.
Berry Plastics Corp. (“Multilayer v. Berry”), 63 F. Supp. 3d
786, 795 (W.D. Tenn. 2014). The district court also inval-
idated claim 10 of the ’055 patent under 35 U.S.C.
§ 112(d). Multilayer v. Inteplast, 2013 WL 5972195, at
*39–40. The district court denied Berry’s request for
sanctions against Multilayer under Rule 11 of the Federal
Rules of Civil Procedure (“Fed. R. Civ. P.”).
We hold that the district court erred in one aspect of
its claim construction, and we reverse in part its construc-
tion of claims 1 and 28. We vacate the court’s summary
judgment of non-infringement, which was predicated on
this aspect of its claim construction, and remand for
MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS 3
further proceedings consistent with this opinion. We
affirm the district court’s conclusion that claim 10 of the
’055 patent is invalid and the court’s decision not to
impose sanctions against Multilayer under Rule 11.
BACKGROUND
Multilayer’s ’055 patent claims multilayered thermo-
plastic stretch wrap films. In the words of the patent,
“[t]he present invention relates to multi-layer stretch
cling films having at least seven individual layers in the
film composition offering acceptable cling performance,
good balance of strength and good elongation properties.”
’055 patent col. 1 ll. 5–8. Such stretch films cling to
themselves and can be used to securely wrap boxes,
furniture, and other items. The plastic films of the ’055
patent are distinguished by their structure: the films
contain two outer layers and at least five inner layers,
each of which is compositionally distinct from its immedi-
ate neighbors. According to the patent, the outer layers
contribute “moderate to high controlled cling,” and the
inner layers “assist in producing mechanical strength and
stretchability.” Id. col. 1 ll. 55–58.
The ’055 patent underwent three rounds of ex parte
reexamination by the United States Patent & Trademark
Office (“PTO”), during which its claims were amended.
Claim 1 is the broadest claim; as amended, it recites,
1. A multi-layer, thermoplastic stretch wrap film
containing seven separately identifiable polymeric
layers, comprising:
(a) two identifiable outer layers, at least one of
which having a cling performance of at least 100
grams/inch, said outer layer being selected from
the group consisting of linear low density polyeth-
ylene, very low density polyethylene, and ultra
low density polyethylene resins, said resins being
4 MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS
homopolymers, copolymers, or terpolymers, of
ethylene and alpha-olefins; and
(b) five identifiable inner layers, with each layer
being selected from the group consisting of linear
low density polyethylene, very low density poly-
ethylene, ultra low density polyethylene, and me-
tallocene-catalyzed linear low density
polyethylene resins; said resins are homopoly-
mers, copolymers, or terpolymers, of ethylene and
C3 to C20 alpha-olefins;
wherein each of said two outer layers and each of
said five inner layers have different compositional
properties when compared to a neighboring layer.
U.S. 6,265,055 C2 col. 1 l. 43–col. 2 l. 3 (as corrected by
the Certificate of Correction of July 14, 2009).
Most of the language of claim 1 describes the multiple
layers of the film and the various types of polymeric
“resins”—plastics prepared by polymerization of one or
more olefin compounds—that are suitable for use in
preparing those layers. Claim 1 describes outer layers
that contain linear low density polyethylene (“LLDPE”),
very low density polyethylene (“VLDPE”), or ultra low
density polyethylene (“ULDPE”) resins and inner layers
that contain these three resins or a fourth resin, metallo-
cene-catalyzed linear low density polyethylene
(“mLLDPE”).
Claim 28 is the only other independent claim of the
’055 patent. Like claim 1, claim 28 recites a plastic film
that contains at least seven layers, but claim 28 further
specifies that at least one of the inner layers must com-
prise an mLLDPE resin:
28. A multi-layer, thermoplastic stretch wrap film
containing seven polymeric layers, comprising:
MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS 5
(a) two outer layers, at least one of which having a
cling performance of at least 100 grams/inch, said
outer layer being selected from the group consist-
ing of linear low density polyethylene, very low
density polyethylene, and ultra low density poly-
ethylene resins, said resins being homopolymers,
copolymers, or terpolymers, of ethylene and alpha-
olefins; and
(b) five inner layers, with each layer being select-
ed from the group consisting of linear low density
polyethylene, very low density polyethylene, ultra
low density polyethylene, and metallocene-
catalyzed linear low density polyethylene resins;
said resins being homopolymers, copolymers, or
terpolymers, of ethylene and C3 to C20 alpha-
olefins,
wherein at least one of said inner layers comprises
a metallocene catalyzed linear low density poly-
ethylene resin with a melt index of 0.5 to 3 dg/min
and a melt index ratio of 16 to 80; and wherein
each of said two outer layers and each of said five
inner layers have different compositional proper-
ties when compared to a neighboring layer.
U.S. 6,265,055 C2 col. 2 ll. 4–27.
In 2012, Multilayer sued Berry in the U.S. District
Court for the Western District of Tennessee for infringe-
ment of the ’055 patent. Multilayer’s complaint accused
various plastic stretch films manufactured by Berry of
infringing at least claim 1. The district court issued its
claim construction order on November 8, 2013. Multilayer
v. Inteplast, 2013 WL 5972195. While the court formally
construed thirteen claim terms, only three are relevant to
this appeal. The first relevant claim term is a part of
element (b) of claims 1 and 28, which the court construed
as follows:
6 MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS
Disputed part of ele- District court’s construc-
ment (b) of claims 1 and tion:
28:
five [identifiable] 1 inner each of five identifiable
layers, with each layer inner layers must contain
being selected from the only one class of the follow-
group consisting of linear ing resins, and no other
low density polyethylene resin(s): linear low density
[(LLDPE)], very low densi- polyethylene [(LLDPE)]
ty polyethylene [(VLDPE)], resins, very low density
ultra low density polyeth- polyethylene [(VLDPE)]
ylene [(ULDPE)], and resins, ultra low density
metallocene-catalyzed polyethylene [(ULDPE)]
linear low density polyeth- resins, or metallocene-
ylene [(mLLDPE)] resins catalyzed linear low density
polyethylene [(mLLDPE)]
resins
Multilayer v. Berry, 63 F. Supp. 3d at 790. Notably, the
court’s construction of element (b) required that each
inner layer “must contain only one class of [the listed]
resins, and no other resin(s),” thereby excluding blends of
more than one type of resin and all unlisted resins. Id. at
793.
The second relevant claim term is “linear low density
polyethylene” (LLDPE), which appears in claims 1 and 28.
The court construed “linear low density polyethylene” to
1 The term “identifiable” appears in element (b) of
claim 1 but not in element (b) of claim 28. Neither party
argued in the district court, or argues now, that the
presence of the word “identifiable” in claim 1 affects the
construction of element (b). See Multilayer v. Berry, 63 F.
Supp. 3d at 790 n.5.
MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS 7
mean “a class of copolymers of ethylene and alpha-olefins,
which are characterized by relatively straight polymer
chains with short chain branching and little or no long
chain branching.” Id. at 791 (emphasis omitted). The
court found that this relatively broad construction of
LLDPE encompasses the other types of resin recited in
element (b), namely, very low density polyethylene
(VLDPE), ultra low density polyethylene (ULDPE), and
metallocene-catalyzed linear low density polyethylene
(mLLDPE). Id. at 794. However, the court held that
when a particular resin qualifies as an mLLDPE, mixture
of that resin with non-metallocene-catalyzed LLDPE
creates a blend. “The fact that a resin can be described as
both an mLLDPE resin and also as a broader LLDPE
resin does not mean that the combination, in an inner
layer of a stretch film, of an mLLDPE resin and a LLDPE
resin catalyzed using an agent other than metallocene
does not constitute a prohibited blend.” Id.
The third relevant claim term is “low density polyeth-
ylene homopolymers” (“LDPE”), a resin not listed in
element (b). The district court construed this term to
mean “a class of polymer formed entirely of ethylene
monomers, the polymer chains being characterized by a
branched polymer backbone consisting of short-chain
branches and long-chain branches.” Multilayer v. In-
teplast, 2013 WL 5972195, at *40. The ’055 patent itself
differentiates “low density polyethylene (LDPE)” from
“linear low density polyethylene (LLDPE).” ’055 patent
col. 1 ll. 60–61 (emphasis added). The court held that “a
distinction between LLDPE and LDPE is necessary,”
given that “[t]he patent itself uses the terms LLDPE and
LDPE separately.” Multilayer v. Inteplast, 2013 WL
5972195, at *29.
In its claim construction order, the district court held
that dependent claim 10 is invalid under 35 U.S.C.
§ 112(d). Id. at *39–40. Claim 10 depends from claim 1
8 MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS
and further requires that “at least one said inner layer
comprises low density polyethylene homopolymers.” ’055
patent col. 10 ll. 14–15. The court found that, because
LDPE is not listed in claim 1 and is chemically distinct
from the four resins that are recited, “Claim 10 attempts
to improperly broaden the scope of the closed Markush
Group in element (b) of Claim 1.” Multilayer v. Inteplast,
2013 WL 5972195, at *39.
Thereafter, on March 14, 2014, Berry moved for
summary judgment of non-infringement. Multilayer
opposed the motion, arguing that summary judgment was
premature because claim construction and discovery had
not been completed. The district court granted Berry
summary judgment of non-infringement on November 7,
2014. Multilayer v. Berry, 63 F. Supp. 3d at 793. The
district court concluded that the case was ripe for sum-
mary judgment, as “[a]n analysis of the record does not
evidence any insufficiency in discovery undertaken” and
“all terms relevant to the instant motion have been con-
strued.” Id. at 792.
The parties had agreed that “at least one of the inner
layers of the Accused Films contains blends of resins from
the classes of mLLDPE, ULDPE, and LLDPE—all classes
of resins separately specified in claims 1 and 28.” Id. at
795. The district court consequently held that, as a
matter of law, the accused Berry films could not infringe
claims 1 and 28 because those claims had been construed
as closed to blends of listed resins within the inner layers
of the film. “[I]t is apparent that the permissibility of
blends of resins within a film’s inner layer was directly
considered and rejected during claim construction.” Id. at
794. “At this juncture, to permit blends would impermis-
sibly require the Court to ignore the specific limitations of
the ’055 Patent . . . .” Id. (internal quotation marks and
citation omitted).
MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS 9
On December 5, 2014, Berry moved for sanctions
against Multilayer under Fed. R. Civ. P. 11, arguing that
Multilayer’s infringement case relied on frivolous claim
constructions and that Multilayer improperly maintained
its infringement suit after the district court issued its
claim construction order. The district court denied Ber-
ry’s motion for sanctions on January 28, 2015, in a one-
page order. Multilayer v. Berry, No. 2:12-cv-02108, ECF
No. 162.
Multilayer appeals the judgment of non-infringement
and the invalidation of claim 10, arguing that the district
court erred in its claim constructions. Berry cross-
appeals, requesting reversal of the district court’s denial
of sanctions under Fed. R. Civ. P. 11. We have jurisdic-
tion under 28 U.S.C. § 1295(a)(1).
DISCUSSION
We review the district court’s grant of summary
judgment de novo. See Info-Hold, Inc. v. Muzak LLC, 783
F.3d 1365, 1371 (Fed. Cir. 2015); Moran v. Al Basit LLC,
788 F.3d 201, 204 (6th Cir. 2015). Claim construction is a
question of law, reviewed de novo, but any extrinsic fact-
finding by the district court in the course of claim con-
struction is reviewed for clear error. Teva Pharm. USA,
Inc. v. Sandoz, Inc., 135 S. Ct. 831, 836–37 (2015).
“[W]hen the district court reviews only evidence intrinsic
to the patent (the patent claims and specifications, along
with the patent’s prosecution history), the judge’s deter-
mination will amount solely to a determination of law,
and the Court of Appeals will review that construction de
novo.” Id. at 841; see also Williamson v. Citrix Online,
LLC, 792 F.3d 1339, 1346 (Fed. Cir. 2015) (en banc). The
district court’s denial of sanctions under Fed. R. Civ. P. 11
is reviewed for abuse of discretion. Jones v. Ill. Cent. R.R.
Co., 617 F.3d 843, 850 (6th Cir. 2010); see also Cooter &
Gell v. Hartmarx Corp., 496 U.S. 384, 402 (1990).
10 MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS
I
We first address element (b) of claims 1 and 28 of the
’055 patent. The disputed part of element (b) recites, “five
[identifiable] inner layers, with each layer being selected
from the group consisting of linear low density polyeth-
ylene [(LLDPE)], very low density polyethylene
[(VLDPE)], ultra low density polyethylene [(ULDPE)],
and metallocene-catalyzed linear low density polyethylene
[(mLLDPE)] resins.” U.S. 6,265,055 C2 col. 1 ll. 37–41 (as
corrected by the Certificate of Correction of July 14,
2009); id. col. 2 ll. 14–18. The parties agreed in the
district court and agree on appeal that element (b) of
claims 1 and 28 is written in “Markush” claim format.
A Markush claim is a particular kind of patent claim
that lists alternative species or elements that can be
selected as part of the claimed invention. See Abbott
Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d 1274, 1280
(Fed. Cir. 2003). “‘Markush’ was the name of an applicant
for patent (Eugene A. Markush) who happened to use in a
claim a type of definition of a genus or subgenus by enu-
meration of species . . . .” In re Harnisch, 631 F.2d 716,
719–20 (CCPA 1980). “[T]he name ‘Markush’ became
attached to a type of claim expression, and that is all it
connotes.” Id. at 720. Markush claims create a custom-
ized “Markush group”—a listed group of species that are
useful for the purposes of the claim. “Claim drafters often
use the term ‘group of’ to signal a Markush group. A
Markush group lists specified alternatives in a patent
claim, typically in the form: a member selected from the
group consisting of A, B, and C.” Gillette Co. v. Energizer
Holdings, Inc., 405 F.3d 1367, 1372 (Fed. Cir. 2005); see
also Abbott, 334 F.3d at 1280. “It is generally understood
that . . . the members of the Markush group . . . are alter-
natively usable for the purposes of the invention . . . .” In
re Driscoll, 562 F.2d 1245, 1249 (CCPA 1977); see also
Manual of Patent Examining Procedure (“MPEP”)
MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS 11
§ 803.02 (“Markush-type generic claims . . . recite a plu-
rality of alternatively usable substances or members.”). 2
Here, element (b) creates a Markush group that lists four
species or types of resin—LLDPE, VLDPE, ULDPE, and
mLLDPE—which are understood to be alternately usea-
ble for preparing the inner layers of the claimed film.
There are two separate issues of claim construction here:
first, whether the Markush group of element (b) is closed
to resins other than the listed four, and, second, whether
the Markush group is closed to blends of the four listed
resins.
II
The district court construed element (b) as closed to
unrecited resins—i.e., types of resin other than LLDPE,
VLDPE, ULDPE, and mLLDPE. Multilayer v. Berry, 63
2 No precise linguistic formula is required to create
a Markush claim. For example, our predecessor court
held that the claim language “‘selected from spirit soluble
azo dyes and finely divided pigmenting material,’ sets
forth a type of Markush group.” Metcalfe v. Hampel, 532
F.2d 1360, 1362 (CCPA 1976); see also Merck & Co., Inc.
v. Mylan Pharm., Inc., 190 F.3d 1335, 1339 (Fed. Cir.
1999) (characterizing a claim reciting a “polymer vehicle
comprising 0–120 mg of a water-soluble polymer selected
from [a list of six polymers]” as being in “Markush form”).
Under the PTO’s guidelines for patent examination,
“[a]lternative expressions are permitted” so long as the
claim “recites a list of alternatively useable species” with
no “uncertainty or ambiguity with respect to the question
of scope or clarity of the claims.” MPEP § 2173.05(h).
“[T]he phrase ‘Markush claim’ means any claim that
recites a list of alternatively useable species regardless of
format.” Id.
12 MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS
F. Supp. 3d at 790. Multilayer now argues that the
district court erred and that “[t]he intrinsic evidence
clearly establishes that the Markush groups in claims 1
and 28 should be construed as open” to other resins.
Appellant’s Br. at 23.
We agree with the district court that the Markush
group of element (b) must be construed as closed to resins
other than LLDPE, VLDPE, ULDPE, and mLLDPE. To
construe the inner layers of element (b) as open not only
to the four recited resins but also to any other polyolefin
resin conceivably suitable for use in a stretchable plastic
cling film would be to construe the claims to cover any
plastic film with five compositionally different inner
layers, each of which contains any amount of one of the
four recited resins. Construing element (b) in this man-
ner would render the ’055 patent’s Markush language—
“each layer being selected from the group consisting of”—
equivalent to the phrase “each layer comprising one or
more of.”
What is critical here is that the transitional phrase
that appears in element (b), “consisting of,” is a term of
art in patent law with a distinct and well-established
meaning. Use of the transitional phrase “consisting of” to
set off a patent claim element creates a very strong pre-
sumption that that claim element is “closed” and there-
fore “exclude[s] any elements, steps, or ingredients not
specified in the claim.” AFG Indus., Inc. v. Cardinal IG
Co., Inc., 239 F.3d 1239, 1245 (Fed. Cir. 2001). “‘Consist-
ing of’ is a term of patent convention meaning that the
claimed invention contains only what is expressly set
forth in the claim.” Norian Corp. v. Stryker Corp., 363
F.3d 1321, 1331 (Fed. Cir. 2004). Thus, if a patent claim
recites “a member selected from the group consisting of A,
B, and C,” the “member” is presumed to be closed to
alternative ingredients D, E, and F. By contrast, the
alternative transitional term “‘comprising’ creates a
MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS 13
presumption that the recited elements are only a part of
the device, that the claim does not exclude additional,
unrecited elements.” Crystal Semiconductor Corp. v.
TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348
(Fed. Cir. 2001).
The presumption that a claim term set off by the
transitional phrase “consisting of” is closed to unrecited
elements is at least a century old and has been reaffirmed
many times by our court and other courts. 3 We are una-
3 See, e.g., CIAS, Inc. v. All. Gaming Corp., 504 F.3d
1356, 1361 (Fed. Cir. 2007) (“It is . . . well understood in
patent usage that ‘consisting of’ is closed-ended and
conveys limitation and exclusion. . . . For patent claims
the distinction between “comprising” and “consisting” is
established . . . .”); Conoco, Inc. v. Energy & Envtl. Int’l,
460 F.3d 1349, 1359 (Fed. Cir. 2006) (“‘[C]onsisting of’ is a
term of art in patent law with its own construction . . . .”);
Norian, 363 F.3d at 1331 (quoted supra); AFG Indus., 239
F.3d at 1245 (quoted supra); Vehicular Techs. Corp. v.
Titan Wheel Int’l, Inc., 212 F.3d 1377, 1382–83 (Fed. Cir.
2000) (“The phrase ‘consisting of’ is a term of art in patent
law signifying restriction and exclusion, while, in con-
trast, the term ‘comprising’ indicates an open-ended
construction. . . . In simple terms, a drafter uses the
phrase ‘consisting of’ to mean ‘I claim what follows and
nothing else.’” (citations omitted)); Georgia-Pacific Corp.
v. U.S. Gypsum Co., 195 F.3d 1322, 1327–28 (Fed. Cir.
1999) (“The transitional phrase ‘consisting of’ excludes
any element step, or ingredient not specified in the claim.”
(quoting MPEP § 2111.03)); Parmelee Pharm. Co. v. Zink,
285 F.2d 465, 469 (8th Cir. 1961) (“[T]he word ‘consisting’
is one of restriction and exclusion.”); In re Davis and
Tuukkanen, 80 U.S.P.Q. (BNA) 448, 450 (Board of Patent Interfer-
ences 1949) (“‘[C]onsisting of’ . . . clos[es] the claim to the
14 MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS
ware of any case that has construed a patent claim’s use
of “consisting of” to have the same open meaning as
“comprising,” and Multilayer points us to none. There
may be a scenario where a patent’s specification or prose-
cution history give “consisting of” the meaning of “com-
prising”; our decision in Conoco, Inc. v. Energy &
Environmental International noted that “it is not incon-
ceivable that a patentee could break with conventional
claim construction and become his own lexicographer,” so
as to give “consisting of” an alternative, less restrictive
meaning. 460 F.3d 1349, 1359 n.4 (Fed. Cir. 2006). But
to overcome the exceptionally strong presumption that a
claim term set off with “consisting of” is closed to unrecit-
ed elements, the specification and prosecution history
must unmistakably manifest an alternative meaning. See
id. They do not here.
Multilayer contends that the specification of the ’055
patent does indeed evince an unmistakable intent to open
the Markush group of element (b) to unrecited resins.
Rather than argue that the claimed inner layers should
inclusion of materials other than those recited except for
impurities ordinarily associated therewith . . . . We regard
the meaning of the terms ‘comprising’ and ‘consisting of’
to be well settled by numerous decisions . . . .”); In re
Gray, 53 F.2d 520, 521 (CCPA 1931) (“Claim 4 uses the
term ‘consists’ and is therefore drawn to an alloy of silver
and indium without other elements.”); Hoskins Mfg. Co. v.
Gen. Elec. Co., 212 F. 422, 428 (N.D. Ill. 1913) (“‘Consist’
means to stand together, to be composed of or made up of.
It is a more specific term than [‘comprise’].”), aff’d, 224 F.
464 (7th Cir. 1915).
MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS 15
be open to any and all resins, 4 Multilayer focuses on one
resin, low density polyethylene (LDPE), which is specifi-
cally mentioned in dependent claims 10, 18, and 19. We
do not agree that the ’055 patent manifests a clear intent
to open the Markush group of element (b) to LDPE or to
any other resin not expressly listed in the claim.
It is true that several passages of the specification of
the ’055 patent describe LDPE as a resin suitable for use
in both inner and outer layers. “The resins used in the
film composition include . . . low density polyethylene
(LDPE) . . . .” ’055 patent Abstract; see also id. col. 1. ll.
58–65. A passage of the Detailed Description describing
“Inner Layers” of the invention states that “low density
polyethylene homopolymers (LDPE)” are “[a]lso suitable
for use in the inner five layers.” ’055 patent col. 4 ll. 53–
55. Two of the three embodiments of multilayered film
described in the Detailed Description include an inner
layer of composition “C,” which can contain LDPE blended
with LLDPE. Id. col. 7 ll. 36–45 & col. 8 ll. 7–12.
The specification of the ’055 patent also describes sev-
eral other types of resin as suitable for incorporation into
the inner layers—polypropylene, medium density poly-
ethylene, and high density polyethylene—which, like
LDPE, are not recited in the Markush group of element
(b). “The resins used in the film composition include
polypropylene (PP), ethylene propylene copolymers, low
density polyethylene (LDPE), linear low density polyeth-
ylene (LLDPE), medium density polyethylene (MDPE),
high density polyethylene (HDPE), metallocene-catalyzed
polyethylene (mPE), very low density polyethylene
(VLDPE), and/or ultralow density polyethylene
4 Counsel for Multilayer conceded at argument, “I
don’t believe the layers can be made out of anything.”
Oral Argument at 1:15–1:18.
16 MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS
(ULDPE).” Id. Abstract. We do not think that the listing
of these other resins in the specification is sufficient to
overcome the presumption created by the “consisting of”
claim language.
Multilayer also makes much of the fact that the ’055
patent includes dependent claims that describe inner
layers containing LDPE. Multilayer contends that
“[b]ecause claim 10 includes the additional limitation of
low density polyethylene in one of said five inner layers, it
necessarily follows that claim 1 already permits the use of
low density polyethylene in the inner layers.” Appellant’s
Reply Br. at 3. Claim 10 recites, in relevant part, “[t]he
multi-layer, thermoplastic stretch wrap film of claim 1,
wherein at least one said inner layer comprises low densi-
ty polyethylene homopolymers.” ’055 patent col. 10 ll. 13–
15. Two additional dependent claims, 18 and 19, also
describe films with inner layers that contain LDPE. Id.
col. 10 l. 57–col. 11 l. 60. Multilayer argues that recita-
tion of LDPE in dependent claims of the ’055 patent
should be determinative, citing Ortho-McNeil for the
canon that a court should “strive[] to reach a claim con-
struction that does not render claim language in depend-
ent claims meaningless.” Ortho-McNeil Pharm., Inc. v.
Mylan Labs., Inc., 520 F.3d 1358, 1362 (Fed. Cir. 2008).
It is true that “[o]ther claims of the patent in question
. . . can . . . be valuable sources of enlightenment as to the
meaning of a claim term.” Phillips v. AWH Corp., 415
F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). But the lan-
guage of a dependent claim cannot change the scope of an
independent claim whose meaning is clear on its face. We
have held that “[w]hile it is true that dependent claims
can aid in interpreting the scope of claims from which
they depend, they are only an aid to interpretation and
are not conclusive. The dependent claim tail cannot wag
the independent claim dog.” N. Am. Vaccine, Inc. v. Am.
Cyanamid Co., 7 F.3d 1571, 1577 (Fed. Cir. 1993); see also
MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS 17
Regents of Univ. of Cal. v. Dakocytomation Cal. Inc., 517
F.3d 1364, 1375 (Fed. Cir. 2008) (holding that the pre-
sumption that an independent claim should be construed
in view of its dependent claim is rebuttable). 5
We conclude that the specification of the ’055 patent,
including its dependent claims, is insufficient to overcome
the very strong presumption, created by the patent’s use
of the transitional phrase “consisting of,” that the
Markush group of element (b) is closed to resins other
than the four recited: LLDPE, VLDPE, ULDPE, and
mLLDPE. Multilayer points to nothing in the prosecution
history that supports its theory. Here, Multilayer’s use of
5 Multilayer also cites dependent claim 32 as evi-
dence that the Markush group of claim 1 should be con-
strued as open to unrecited resins. Claim 32, which was
added in reexamination, recites “[t]he film of claim 1,
wherein the compositional property is the presence of a
resin additive.” U.S. 6,265,055 C2 col. 3 ll. 34–35. The
district court construed “resin additive” to be “a substance
that by its properties is not typically by itself formed into
a stretch wrap film layer and that is compounded into a
resin”—i.e., a non-resin substance. Multilayer v. In-
teplast, 2013 WL 5972195, at *43. Multilayer does not
contest this construction on appeal. Because claim 32
merely describes incorporation of a non-resin, it is not
evidence that claim 1 should be open to incorporation of
an unrecited resin. See Conoco, 460 F.3d at 1360 (noting
that “[a]lthough ‘consisting of’ is a term of restriction, the
restriction is not absolute” and may permit impurities or
“additional components or steps that are unrelated to the
invention”); see also Norian, 363 F.3d at 1331 (holding
that “while ‘consisting of’ limits the claimed invention, it
does not limit aspects unrelated to the invention”).
18 MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS
the term of art “consisting of” restricts the scope of its
claims to the listed resins.
Disagreeing with the majority’s claim construction as
requiring a layer formed from the listed resins, the dis-
sent argues that a “layer” is an open-ended physical
structure “characterized at least by a spatial relationship
to some other physical element” and that the “layer” does
not “have to be one or more of the listed species” of resin.
Dissent at 4. But, to the extent the language of element
(b) is ambiguous, the district court resolved any ambigui-
ty, construing “layer” to be “a polymer composition within
the multilayer polymer structure lying over or under
another.” Multilayer v. Inteplast, 2013 WL 5972195, at
*19 (emphasis added). That is, the district construed
“layer” to be a chemical composition, one consisting of
resins (polymers) or, optionally, resins combined with
non-resin additives. “[O]ne skilled in the art would
understand the patent to teach that layers made from
polymers or layers made from polymers combined with
additives must be present in each of the seven layers.” Id.
at *19 (emphasis added). The resin (or the resin com-
bined with a non-resin additive) itself is the layer. Multi-
layer has not appealed this aspect of the district court’s
claim construction and has repeatedly agreed that the
claim is in Markush format, requiring a layer “made
from” the listed resins. See Multilayer’s Responsive
Claim Construction Brief, Multilayer Stretch Cling Film
Holdings, Inc. v. MSC Mktg. & Tech., Inc., No. 2:12-cv-
02112 (W.D. Tenn. Jan. 14, 2013), ECF No. 57, at 27–30;
Appellant’s Br. at 27; Appellant’s Reply Br. at 8–9; see
also Oral Argument at 29:57–30:03 (Multilayer’s counsel
stating that “the district court was led to believe this is a
Markush group because that’s what we’ve argued all
along”).
The dissent’s argument was not made by the patentee
in the district court. Indeed, in the district court Multi-
MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS 19
layer proposed that the term “each layer being selected
from the group consisting of linear low density polyeth-
ylene [(LLDPE)], very low density polyethylene
[(VLDPE)], ultra low density polyethylene [(ULDPE)],
and metallocene-catalyzed linear low density polyethylene
[(mLLDPE)] resins” should be construed to mean “made
from linear low density polyethylene [(LLDPE)], very low
density polyethylene [(VLDPE)], ultra low density poly-
ethylene [(ULDPE)], metallocene-catalyzed linear low
density polyethylene resin [(mLLDPE)], or blends there-
of.” Multilayer v. Inteplast, 2013 WL 5972195, at *26
(emphasis added). That is, Multilayer argued the very
claim construction that we now adopt. 6 Multilayer cannot
now allege that the layers of element (b) of claims 1 and
28 do not have to be “made from” the listed resins. See
Key Pharm. v. Hercon Labs. Corp., 161 F.3d 709, 715
(Fed. Cir. 1998); Transclean Corp. v. Jiffy Lube Int’l, Inc.,
474 F.3d 1298, 1307 (Fed. Cir. 2007).
The consequence of our construction of element (b) is
that claim 10 is invalid. Claim 10 recites, in relevant
part, “[t]he multi-layer, thermoplastic stretch wrap film of
claim 1, wherein at least one said inner layer comprises
low density polyethylene homopolymers [(LDPE)].” ’055
patent col. 10 ll. 13–15. In its opening brief Multilayer
conceded that LDPE is not encompassed by LLDPE or the
6 While Multilayer also argued in the district court
that this construction permitted blends that include
LDPE, see Multilayer’s Responsive Claim Construction
Brief, Multilayer Stretch Cling Film Holdings, Inc. v.
MSC Mktg. & Tech., Inc., No. 2:12-cv-02112 (W.D. Tenn.
Jan. 14, 2013), ECF No. 57, at 9 n.4, 27–30, the construc-
tion, urged by Multilayer itself, is limited to the listed
resins and “blends thereof,” which by its terms necessarily
excludes unlisted resins such as LDPE.
20 MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS
other types of resin recited in element (b). “[T]here can
be no dispute that LDPE refers to a different category of
resins than those listed in claim 1.” Appellant’s Br. at 29;
see also id. at 31 (“The intrinsic evidence thus confirms
that . . . LDPE may be blended with the resins claimed in
the inner layer Markush group.”). 7
Because we agree with the district court that the in-
ner layers of claim 1 must be construed as closed to unre-
cited resins, including LDPE, we see no error in the
district court’s conclusion that dependent claim 10 is
invalid. 8 Independent claim 1 excludes LDPE from the
inner layers, while dependent claim 10 includes it. As
such, claim 10 is inconsistent with claim 1 and, indeed,
7 In Multilayer’s reply brief, however, there is a
confusing suggestion that LLDPE, properly construed,
should encompass LDPE. See Appellant’s Reply Br. at 13
(stating that LLDPE, ULDPE, mLLDPE, polypropylene,
and LDPE all “fall within a single class of resins—
LLDPE”). We understand this to be an argument that
Berry’s description of certain resins in its accused films as
“LDPE” misrepresents the films’ true composition. This is
a factual question relevant to infringement, not an issue
of claim construction.
8 The district court held claim 10 invalid under 35
U.S.C. § 112(d) of the America Invents Act (“AIA”). See
Multilayer v. Inteplast, 2013 WL 5972195, at *40. 35
U.S.C. § 112(d) replaced the earlier (pre-AIA) 35 U.S.C.
§ 112 ¶ 4 when § 4(c) of the America Invents Act (“AIA”),
Pub.L. No. 112–29, took effect on September 16, 2012.
125 Stat. 284, 296, 297 (2011). Because the ’055 patent
was filed in 1999, long before this effective date, pre-AIA
35 U.S.C. § 112 ¶ 4 in fact controls. The district court’s
error is harmless, as the AIA did not alter the substance
of this provision.
MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS 21
contradicts claim 1. A dependent claim that contradicts,
rather than narrows, the claim from which it depends is
invalid. See 35 U.S.C. § 112(d) (requiring that “a claim in
dependent form shall contain a reference to a claim previ-
ously set forth and then specify a further limitation of the
subject matter claimed” (emphasis added)); Pfizer, Inc. v.
Ranbaxy Labs. Ltd., 457 F.3d 1284, 1291–92 (Fed. Cir.
2006) (holding a claim invalid under pre-AIA 35 U.S.C.
§ 112 ¶ 4 for claiming subject matter that was “non-
overlapping” with the claim from which it depended);
Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d
1374, 1380 (Fed. Cir. 2006) (noting that a dependent
claim can be invalid for failing to comply with pre-AIA 35
U.S.C. § 112 ¶ 4); see also Trs. of Columbia Univ. v.
Symantec Corp., 811 F.3d 1359, 1366–67 (Fed. Cir. 2016)
(holding that claims that were internally contradictory
were invalid as indefinite); Allen Eng’g Corp. v. Bartell
Indus., 299 F.3d 1336, 1349 (Fed. Cir. 2002) (holding that
claims that contradicted the specification were invalid as
indefinite). “[W]here . . . claims are susceptible to only
one reasonable interpretation and that interpretation
results in a nonsensical construction of the claim as a
whole, the claim must be invalidated . . . .” Process Con-
trol Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357 (Fed.
Cir. 1999).
We note that asserted claims 18 and 19 of the ’055 pa-
tent also depend from claim 1 and, like claim 10, recite
inner layers that include LDPE. The possible invalidity of
these claims is a question for the district court to consider
on remand.
III
We next consider whether element (b) of claims 1 and
28 is closed to blends of LLDPE, VLDPE, ULDPE, and
mLLDPE, as the district court held. In this respect, we
agree with Multilayer that the district court erred. The
22 MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS
Markush group of element (b) must be construed to per-
mit blends of the four recited resins.
By itself, the use of the transitional phrase “consisting
of” does not necessarily suggest that a Markush group is
closed to mixtures, combinations, or blends. Here, a layer
could still “consist” of the listed resins even if the layer
“consists” of a mixture of those resins. Nonetheless, we
held in Abbott that there is a presumption that a
Markush group is closed to mixtures of the listed ele-
ments. Abbott, 334 F.3d at 1281. Abbott held that if a
Markush claim recites “a member selected from the group
consisting of A, B, and C,” the claim is presumed to per-
mit the member to be one and only one of A, B, or C, and
to exclude mixtures or combinations of A, B, and C. Id.
Typically,
[i]f a patentee desires mixtures or combinations of
the members of the Markush group, the patentee
would need to add qualifying language while
drafting the claim. See Meeting Held to Promote
Uniform Practice In Chemical Divisions, [28 J.
Pat. & Trademark Off. Soc’y 849, 852 (1946)] (cit-
ing examples of qualifying language such as: “and
mixtures thereof” and “at least one member of the
group”). Thus, without expressly indicating the
selection of multiple members of a Markush
grouping, a patentee does not claim anything oth-
er than the plain reading of the closed claim lan-
guage.
Id. Incorporation of additional language—e.g., “a member
selected from the group consisting of A, B, and C, and
mixtures thereof”—expressly opens the Markush group to
mixtures of A, B, and C. Id.
The district court correctly observed that there is no
express language in element (b) permitting “mixtures,”
“combinations,” or “blends” of LLDPE, VLDPE, ULDPE,
MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS 23
and mLLDPE. Multilayer v. Inteplast, 2013 WL 5972195,
at *22–23, 27. Under Abbott, the Markush group of
element (b) is therefore presumed closed to blends. The
question is whether that presumption can be overcome by
a combination of other claim language and the specifica-
tion itself.
All patent claims, including Markush claims, must be
construed in view of “the words of the claims, the specifi-
cation, the prosecution history, and any relevant extrinsic
evidence.” SSL Servs., LLC v. Citrix Sys., Inc., 769 F.3d
1073, 1083 (Fed. Cir. 2014) (citing Phillips, 415 F.3d at
1315–17). Abbott itself reminds us that “[t]his court
interprets patent claims in light of the specification,” 334
F.3d at 1280, and Abbott looked beyond the language of
the Markush claim at issue to the patent’s prosecution
history to confirm that the patentee had not overcome the
presumption that the Markush group was closed to mix-
tures, id. at 1281. Thus, Abbott suggests that the pre-
sumptions created by Markush claim language can be
overcome by intrinsic evidence. “Court decisions construe
Markush clauses as meaning ‘closed’ unless other lan-
guage or evidence alters that meaning.” Donald S. Chi-
sum, Chisum on Patents § 8.06[2][b] (emphasis added)
(citing Abbott, 334 F.3d at 1280–81). And PTO practice is
not to the contrary. According to the MPEP, “[t]he deter-
mination of what is or is not excluded by a transitional
phrase must be made on a case-by-case basis in light of
the facts of each case.” MPEP § 2111.03. The Abbott
presumption that Markush claims are closed to blends is
distinct from, and not as strong as, the presumption that
unlisted resins are excluded, which flows from the transi-
tional phrase “consisting of.”
Here, the intrinsic evidence of the ’055 patent is une-
quivocal that the inner layers described in element (b) of
claims 1 and 28 are open, not closed, to blends of the
recited resins, LLDPE, VLDPE, ULDPE, and mLLDPE.
24 MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS
For one, it is clear on its face that the term “linear low
density polyethylene” (LLDPE) is one that encompasses
at least metallocene-catalyzed linear low density polyeth-
ylene (mLLDPE), as mLLDPE is, by its very terms, a sub-
type of LLDPE prepared with a particular kind of catalyst
(metallocenes). See Multilayer v. Inteplast, 2013 WL
5972195, at *31 (“LLDPE, as the extrinsic evidence
shows, is a broader term [than mLLDPE] and includes
polyethylenes that can be produced using various cata-
lysts.”); id. at *35 (finding that “m-LLDPE is a type of
LLDPE, only produced with a different catalyst”). Thus,
the resins listed in element (b) do not constitute four
entirely different species but instead overlap to some
extent. 9 It follows that claims 1 and 28 contemplate the
use of polyolefin resins that are classifiable both as an
LLDPE and as an mLLDPE, which supports reading
element (b) as open to “blending” LLDPE and mLLDPE
within a single layer (and open to other blends of the
listed resins). Dependent claim 24 also suggests reading
element (b) as open to blends, as it recites “[t]he multi-
layer, thermoplastic stretch wrap film of claim 1, wherein
at least one layer comprises a blend of at least two of said
resins.” 10 ’055 patent col. 12 ll. 27–29.
9 The district court also found that at least some
VLDPE and ULDPE resins can also be broadly character-
ized as LLDPE resins. Id. at *32; see also Multilayer v.
Berry, 63 F. Supp. 3d at 794 (holding that, under the
district court’s construction of “LLDPE,” “resins within
the classes of mLLDPE, VLDPE, and ULDPE can (also)
broadly be characterized as LLDPE resins”).
10 Claim 24 does not specify whether the “blend of at
least two of said resins” must be found in the inner layers
of the film (described in element (b)), the outer layers
(described in element (a)), or both.
MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS 25
The ’055 patent’s specification similarly supports con-
struing element (b) as open to blends, as it repeatedly and
consistently references blends in describing any and all
resins, including the four resins of element (b). According
to the patent’s Abstract, “[t]he resins used in the film
composition . . . may be blended to achieve a desired range
of physical or mechanical properties of the final film
product.” Id. Abstract. The Summary of the Invention
states that “at least two of the resins may be blended to
achieve a desired range of physical or mechanical proper-
ties of the final film product.” Id. col. 1 ll. 65–67. Three
embodiments of the claimed multilayered stretch wrap
film described in the Detailed Description include inner
layers of composition “C,” which can contain “blended”
LLDPE within a single layer. Id. col. 7 ll. 36–45, col. 8 ll.
7–12 & ll. 35–39. There is nothing in the prosecution
history of the ’055 patent to suggest that blends are
excluded and therefore nothing to contradict what is
apparent from the specification.
In the light of this strong intrinsic evidence, the
Markush group of element (b) must be read as open to
blends of the four listed resins, LLDPE, VLDPE, ULDPE,
and mLLDPE. 11 We reverse this aspect of the district
court’s claim construction.
11 The district court also found, based on extrinsic
evidence, that “one skilled in the art likely understands
blends of polymers to be common in the art.” Multilayer
v. Inteplast, 2013 WL 5972195, at *23 (discussing prior
art Miro, Simmons, and Eichbauer patents, which de-
scribe multilayered plastic stretch films that include
layers composed of blends of more than one resin). We
discern no error in this finding of fact, and our construc-
tion is consistent with it.
26 MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS
IV
The district court’s grant of summary judgment of
non-infringement was predicated on its incorrect con-
struction of claims 1 and 28 as closed to blends of LLDPE,
VLDPE, ULDPE, and mLLDPE. Id. at 795. We therefore
vacate the grant of summary judgment and remand for
reconsideration of infringement under the correct con-
struction. Multilayer’s briefs acknowledge that each of
Berry’s accused films has a different structure and com-
position, and Multilayer conceded at argument that some
of Berry’s products do not infringe under a construction of
claims 1 and 28 that is open to blends of LLDPE, VLDPE,
ULDPE, and mLLDPE in the inner layers but closed to
other resins. Oral Argument at 8:30–9:40. We express no
opinion on the question of whether certain resins in
Berry’s films should be classified as polypropylene (which
is outside the Markush group of element (b)), LDPE
(same), and/or LLDPE (which is within the Markush
group); that is a factual question for the district court to
consider on remand.
We do not agree that the district court’s grant of
summary judgment of non-infringement was premature.
Summary judgment is proper when “there is no genuine
dispute as to any material fact and the movant is entitled
to judgment as a matter of law.” Fed. R. Civ. P. 56(a). We
address this issue because the district court may again on
remand consider summary judgment of non-infringement.
Multilayer argues that there were unresolved issues
of fact discovery and that “[t]he district court should have
denied Berry’s premature motion at least until Berry
produced to Multilayer highly relevant information relat-
ing to the Accused Films.” Appellant’s Br. at 36. In
particular, Multilayer contends that Berry refused to
produce material documents, including the “Traveler’s
Reports” that Multilayer alleges would have provided
MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS 27
detailed compositional information on Berry’s films.
Berry points out that Multilayer had opportunity to
inspect these documents but did not do so and never
moved to compel production. Multilayer also suggests
that it identified additional potentially infringing Berry
films late in discovery, after Berry moved for summary
judgment, necessitating further discovery, but Multilayer
presents no concrete evidence that these products might
infringe. We agree with Berry that the district court was
within its discretion in addressing summary judgment
when it did, and we see no reason why the district court
should be precluded from entertaining further motions for
summary judgment on remand. Whether additional
discovery would be necessary for Multilayer to respond to
such motions is an issue for the district court in the first
instance.
V
Lastly, we consider Berry’s cross-appeal. Berry alleg-
es that “[t]he District Court abused its discretion by
denying Berry’s Motion for sanctions under Fed. R. Civ. P.
11, despite substantial evidence of violations.” Cross-
Appellant’s Br. at 46. Berry contends that Multilayer
failed to make reasonable pre-suit investigation of in-
fringement and, in particular, that Multilayer’s claim
construction positions were frivolous. “Multilayer based
its entire pre-suit investigation on a frivolous claim
construction that flies in the face of well-settled patent
law. Multilayer’s claim construction position in its al-
leged pre-suit investigation—that a Markush group claim
using the term ‘consisting of’ (with no broadening lan-
guage) is open—has no basis in law and violates Rule
11(b)(2).” Cross-Appellant’s Reply Br. at 1. Berry also
alleges that Multilayer improperly maintained its in-
fringement suit after the district court issued its claim
construction order.
28 MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS
We find Berry’s cross-appeal meritless. This case pre-
sents numerous close and difficult questions of claim
construction, as shown by the fact that we disagree (in
part) with the district court’s interpretation of the inner
layers of the claimed film. Berry has not demonstrated
that Multilayer’s proffered claim constructions were
frivolous, and the district court did not abuse its discre-
tion in declining to impose sanctions under Rule 11.
CONCLUSION
For the foregoing reasons, we reverse the district
court’s construction of claims 1 and 28 of the ’055 patent
as closed to blends of LLDPE, VLDPE, ULDPE, and
mLLDPE in the inner layers of the claimed films but
affirm its conclusion that the inner layers must be con-
strued as closed to other resins. We affirm the district
court’s conclusion that claim 10 is invalid, and we affirm
the court’s decision not to impose sanctions against Multi-
layer under Fed. R. Civ. P. 11. We vacate the court’s
summary judgment of non-infringement and remand for
further proceedings consistent with this opinion.
AFFIRMED-IN-PART, REVERSED-IN-PART,
VACATED-IN-PART, AND REMANDED
COSTS
No costs.
United States Court of Appeals
for the Federal Circuit
______________________
MULTILAYER STRETCH CLING FILM HOLDINGS,
INC.,
Plaintiff-Appellant
v.
BERRY PLASTICS CORPORATION,
Defendant-Cross-Appellant
______________________
2015-1420, 2015-1477
______________________
Appeals from the United States District Court for the
Western District of Tennessee in No. 2:12-cv-02108-WGY-
cgc, Judge William G. Young (by designation).
______________________
TARANTO, Circuit Judge, dissenting in part.
I join the court’s opinion except for Part II, which
holds that element (b) of claims 1 and 28 must be con-
strued so that the claimed layers must contain only the
listed resins, i.e., may not contain any unrecited resins (a
construction that invalidates claim 10). The court’s
opinion lays out the parts of the patent—the specification
and dependent claims—that strongly indicate intended
coverage of layers that include at least some unrecited
resins. But the court holds that such coverage is excluded
from element (b). The court reasons that the claim lan-
guage has so plain a “closed” meaning—based on patent
law’s settled approach to the “comprising”/“consisting of”
2 MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS
distinction and to the scope of Markush-group claiming
language—that a contrary reading would require support
in other intrinsic evidence so compelling that even the
strong evidence here is insufficient. I think that this is a
close call, but I would conclude that the claim language is
not so plain.
The operative claim language is “layer being selected
from the group consisting of” specified resins. That
particular language does not make plain the precise
relationship between “layer” and the listed resins—
specifically, whether the layer may contain resins (or
anything) other than the listed resins. If different lan-
guage had been used, the relationship would have been
plain based on settled patent-law (and ordinary English)
meanings. But the language actually used is a step
removed from the words that would have left no semantic
uncertainty on the issue.
If the claim had said, “layer consisting of” one or more
of the listed resins, the meaning would have been plain.
That language would have plainly conveyed that the layer
must be made out of only the listed resins, and not others.
As the court’s opinion explains, in patent law (and proba-
bly in the dominant strand of formal English), “consisting
of” means “including only” (“containing only,” “composed
of only,” “made of only”). Such language would convey the
well-established closed meaning that is the opposite of the
equally well-established open meaning of “comprising,”
which means simply “including.”
The language of element (b) in this case is different.
In element (b), “consisting of” does not follow and directly
modify “layer”; it follows and directly modifies “group.”
Thus, the phrase characterizes the relationship between
“group” and the listed resins: the latter are all the mem-
bers of the former. It does not characterize the (closed or
open) relationship between “layer” and what materials
can be ingredients of the layer. The claim phrase naming
MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS 3
that relationship is “selected from,” not “consisting of.”
The established meaning of “consisting of” therefore does
not determine the meaning of the claim language here.
The claim language here is also different from tradi-
tional Markush-group language, which does include the
phrase “selected from.” Although Markush claim lan-
guage can vary, one aspect of the language seems to be
essentially constant. Markush-group language character-
istically recites “an X [being] selected from a group con-
sisting of A, B, and C,” where A, B, and C are actually
instances of X. 1 That is, the term (X) introducing the
enumeration is a genus or generic descriptor—sometimes
not even a word but a pure variable representing the
group, e.g., In re Driscoll, 562 F.2d 1245, 1246 (CCPA
1977)—for species A, B, and C. See Merck, 190 F.3d at
1340. Here, for example, a generic term for the items
listed in element (b) would be “resin,” so if the claim here
used standard Markush-group language, it would refer to
“resins [being] selected from the group consisting of” the
listed resins. See, e.g., ’055 patent, col. 1, lines 58–65.
1 See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc.,
582 F.3d 1288, 1297 (Fed. Cir. 2009); Abbott Labs. v.
Baxter Pharm. Prods., Inc., 334 F.3d 1274, 1276 (Fed. Cir.
2003); Biovail Corp. Int’l v. Andrx Pharm., Inc., 239 F.3d
1297, 1299 (Fed. Cir. 2001); Merck & Co. v. Mylan
Pharm., Inc., 190 F.3d 1335, 1339 (Fed. Cir. 1999); In re
Emert, 124 F.3d 1458, 1460 (Fed. Cir. 1997); N. Am.
Vaccine, Inc. v. Am. Cyanamid Co., 7 F.3d 1571, 1573–74
(Fed. Cir. 1993); In re Bulloch, 604 F.2d 1362, 1363
(CCPA 1979); In re Skoll, 523 F.2d 1392, 1394 (CCPA
1975); In re Haas, 486 F.2d 1053, 1054 (CCPA 1973); In re
Rainer, 305 F.2d 505, 506–07 (CCPA 1962); In re Azor-
losa, 241 F.2d 939, 940 (CCPA 1957); Ex parte Dahlen &
Zwilgmeyer, 42 U.S.P.Q. 208 (Pat. Off. Bd. App. 1938); Ex
parte Clark & Malm, 11 U.S.P.Q. 52 (Comm’r Pat. 1930).
4 MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS
With such language, or language using a generic term like
“materials,” it would be the combination of “selected
from,” the “consisting of” group language, and the genus-
species relation that would make plain the closed nature
of the relationship: the things named before “selected
from” would have to be one or more of the listed species.
Although the label “Markush group” or “Markush form”
may be used more loosely to label “selected from the group
. . .” language, as it was in this case, the label does not
determine the interpretation. What is critical is that the
closed-nature interpretation has been judicially settled
only when the genus-species relationship has been pre-
sent, as far as I can tell.
Element (b), at issue here, is different. It requires
that a “layer,” not “resins” or “materials,” be “selected
from” the group of listed resins. A “layer” is a structure (a
“composition” in the sense of something composed) char-
acterized at least by a spatial relationship to some other
physical element, perhaps also by its shape (here it must
be part of a “film,” suggesting thinness). See Multilayer
Stretch Cling Film Holdings, Inc. v. Inteplast Grp. Ltd.,
No. 2:12-cv-2107, 2013 WL 5972195, at *19 (W.D. Tenn.
Nov. 8, 2013) (“a polymer composition within the multi-
layer polymer structure lying over or under another”)
(emphases added). The structure may be made from
various materials (e.g., polymers plus other things), and
the group here lists such materials. 2 The relationship
2 The dispute over “layer” in the district court was
not over the definitional spatial-relation requirement of
“layer” (lying over or under another), or over any equating
of the layer with what it was made from, but over wheth-
er “polymers” had to be among the materials from which
it was made. The district court both recognized the
distinction and identified the dispute when it summarized
its conclusion: “one skilled in the art would understand
MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS 5
between “layer” and the members of the specified group of
materials, therefore, is not one of genus and species, and
so is not defined by the inherent logic of the genus-species
relationship. In brief, the meaning of the language at
issue here cannot simply be borrowed from the meaning of
traditional Markush-group language.
Element (b) is distinctive, and slightly imprecise, in
calling for a spatial-relation-defined (and perhaps shape-
defined) structure to be “selected from” a list of materials
from which it can be made. The language is naturally
understood as a shorthand for what is actually a pair of
separate logical links: a link from “layer” to a generic
term for ingredients (such as “resins” or “materials”); and
a second link from the generic term to the Markush-group
list. The second link is clearly closed from the invocation
of Markush-group terminology—“resins (materials) se-
lected from the group consisting of” the listed ones. But
the first link in the expansion of element (b)’s shorthand
is not clear. The expanded, more precise phrase could be
“layer consisting of resins being selected from” the group
or “layer comprising resins being selected from” the group.
I cannot rule out either one as a way of translating the
unusual language of element (b) into more precise terms. 3
the patent to teach that layers made from polymers or
layers made from polymers combined with additives must
be present in each of the seven layers.” Multilayer v.
Inteplast, 2013 WL 5972195, at *19 (emphases added).
3 For an example of a two-link “Markush form”
phrase with the first link using open “comprising” lan-
guage (while leaving “group” implied), see Merck, 190
F.3d at 1339 (a “polymer vehicle comprising 0–120 mg of a
water-soluble polymer selected from hydroxypropyl cellu-
lose [HPC], hydroxypropyl methylcellulose [HPMC],
polyvinyl pyrrolidone, polyethylene glycol, starch and
methyl cellulose”) (emphases added). For an example
6 MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS
I am inclined to think that the former would be the
better reading if we considered the claim words alone in
light of background patent-law meanings. Indeed, I think
that “selected from” is somewhat more suggestive of a
closed concept than “made from”—which is the phrase
that Multilayer proposed in the district court in expressly
arguing for a construction open to unrecited resins.
Multilayer v. Inteplast, 2013 WL 5972195, at *26. 4 But I
do not think the meaning plain, and the claim language
does not stand alone.
Once it is seen that there really is a semantic uncer-
tainty in the claim language—that is the judgment call—
we must look to the specification and (here) dependent
with the first link using “consisting of,” see Shire Dev.,
LLC v. Watson Pharm., Inc., 787 F.3d 1359, 1362 (Fed.
Cir. 2015) (“an inner lipophilic matrix consisting of sub-
stances selected from the group consisting of unsaturated
and/or hydrogenated fatty acid, salts, esters or amides
thereof, fatty acid mono-, di- or triglycerid[e]s, waxes,
ceramides, and cholesterol derivatives with melting points
below 90° C”) (emphasis added).
4 “Made from,” which can refer to origins or compo-
nents, can have an “open” meaning in ordinary usage: e.g.,
one can say “Vicodin is made from hydrocodone” even
though it also contains acetaminophen. Moreover, “made
from” seems more open than “composed of,” which we
have held is itself not always “closed,” but depends for its
meaning in a particular patent on other intrinsic evi-
dence. See AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d
1239, 1245 (Fed. Cir. 2001). Indeed, “made from” is at
least as open as “made up of,” and the court in AFG
rejected a closed construction for “composed of” in the
particular patent partly in reliance on Cardinal’s use of
“made up of” as a term clearly permitting some unrecited
components. Id. at 1246.
MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS 7
claims to resolve the uncertainty in a way that stays true
to the range of permissible meanings of the language
actually used. See Phillips v. AWH Corp., 415 F.3d 1303,
1316 (Fed. Cir. 2005) (en banc) (approving as a succinct
summary: “‘Ultimately, the interpretation to be given a
term can only be determined and confirmed with a full
understanding of what the inventors actually invented
and intended to envelop with the claim. The construction
that stays true to the claim language and most naturally
aligns with the patent’s description of the invention will
be, in the end, the correct construction.’”). For the rea-
sons stated, I conclude that there is relevant imprecision
in the claim words used here, i.e., that they are not plain
in the respect that is disputed, and that the “open” con-
struction is a permissible one for the language used.
As the court’s opinion sets forth, the specification and
dependent claims provide strong support for the “open”
reading. See Maj. Op. at 15–17. The specification de-
scribes three embodiments, two of which have an inner
layer formed from a blend of LLDPE with LDPE, a resin
not recited in the Markush group. ’055 patent, col. 7, line
15, through col. 8, line 40. Claims 10, 18, and 19, all
depending on claim 1, claim those embodiments.
Of course, patentees sometimes write particular
claims that exclude described embodiments (e.g., when
other claims capture those embodiments) and sometimes
mistakenly write dependent claims that invalidly add
elements inconsistent with their independent claims. But
except for the argument about the plainness of element
(b)’s language, we have been pointed to no good reason to
think that the patentees in this case excluded the just-
noted embodiments from the independent claims or,
therefore, wrote dependent claims that are invalid be-
cause inconsistent with the independent claims. The only
real argument advanced for drawing those conclusions
here is that the claim language is plainly to the contrary.
8 MULTILAYER STRETCH CLING FILM v. BERRY PLASTICS
As I have explained, I am not persuaded by that argu-
ment.
For those reasons, I respectfully dissent from the
holding that the inner layers of claims 1 and 28 cannot
include unrecited resins and that claim 10 is invalid.