The opinion of the court was delivered by: Curtin, District Judge.
Currently pending before the court are defendant Standard
Register Company's ("SRC") motion for partial summary judgment
(Item 100) and plaintiff Moore North America's cross-motion for
partial summary judgment (Item 179). Both motions concern the
issue of whether defendant SRC has infringed a
pressure-sensitive adhesive that is covered by United States
Patent 4,918,128 ("the '128 patent").
The '128 patent-or the "adhesive patent" as it has come to be
known in this litigation-is directed to a pressure-sensitive
adhesive that takes the form of a latex ("the patented
adhesive").*fn1 The patented adhesive was designed for use in
the C-Fold mailer technology, which this court has addressed in
prior related motions. Apparently, the patented adhesive was a
significant improvement over the prior art of adhesives used
with C-Fold mailers.*fn2 The patented adhesive has a hard,
non-tacky quality, and it seals only when pressure is applied —
as opposed to when the adhesive comes into contact with heat or
moisture. As a result, the patented adhesive can be applied to
the face of C-Fold mailers, and the mailers can be stacked like
ordinary paper in a printing tray without causing the printer to
jam or be damaged when mailers are fed through. See Item 101,
Exh. 1, Column 1, lines 5-64.
In the context of the present motions, Moore alleges that SRC
has infringed the '128 patent through the use of three
different pressure-sensitive adhesives. The first accused
adhesive will be referred to as "SRC Adhesive 1." The second
accused adhesive will be referred to as "SRC Adhesive 2."*fn3
The third and final accused SRC adhesive will be referred to as
"SRC Adhesive 3."
I. Chemical Composition of the Patented Adhesive
Claim 1 of the '128 patent describes an adhesive composed of
natural rubber which is "graft copolymerized"*fn4 with a
combination of methyl methacrylate ("MMA") and styrene. In
addition, the patented adhesive calls for the mixing-in of a
hard, fine, non-thermoplastic matter. Claim 1 specifically
reads: "A pressuresensitive adhesive which comprises in
admixture: (a) natural rubber graft copolymerized with styrene
and methyl methacrylate in the form of a latex; and (b) a finely
divided hard particulate matter having no
thermoplasticity dispersed in the latex." Item 101, Exh. 1,
Column 4, lines 53-58.
The patent also states that the adhesive's "preferred
embodiments" involve a "polymeric constituent" of
natural rubber graft-copolymerized with styrene and
methyl methacrylate. . . . The amounts of the styrene
and methyl methacrylate with which the natural rubber
is graft-copolymerized are preferably in the ranges
of 2 to 10 parts by weight [for styrene] and 10 to 25
parts by weight [for the MMA] per 100 parts by weight
of the natural rubber. . . .
Item 101, Exh. 1, Col. 2, lines 6-15.
SRC focuses a great deal of attention on the five "examples"
and the three "comparative examples" that are set forth in the
"preferred embodiment" section of the '128 patent. See Item
101, Exh. 1, Columns 2-3. All five of the "examples" call for
graft-copolymerizing MMA and styrene onto natural rubber.
However, Comparative Example No. 2 calls for a
"pressure-sensitive adhesive . . . prepared in substantially the
same formulation as in the preparation of [the first example]
except that the modified natural rubber latex was prepared by
the graft-copolymerization of 15 parts by weight of methyl
methacrylate alone per 100 parts by weight of natural rubber
with omission of styrene as the grafting monomer." Item 101,
Exh. 1, Column 3, lines 29-35.
II. Prosecution History of the '128 Patent
Claim 1 of the '128 patent is the patent's only "independent
claim." In other words, each of the other four enumerated claims
do not stand on their own since they incorporate Claim 1 by
reference. The inventor, a Mr. Sakai of Japan, and his employer,
Toppan of Japan, first filed an application to patent the
pressure-sensitive adhesive in December 1988. On June 26, 1989,
the Patent and Trademark Office rejected their application. Item
183, p. 4. In its notice to Mr. Sakai, the PTO stated: "Claims
1-5 are rejected under 35 U.S.C. § 112, . . . as the claimed
invention is not described in such full, clear, concise and
exact terms as to enable any person skilled in the art to make
and use the same, and/or for failing to point out and distinctly
claim the subject matter which applicant regards as the
invention." Item 183, Exh. B, p. 2.*fn5
In September 1989, the applicants responded to this rejection
by adding a few key terms to Claim 1 of the application.
Specifically, the applicants offered three clarifications: that
protection for an "adhesive" was being sought; that the
"particulate matter" called for in Claim 1 should be "hard"; and
that the end product was a "latex." Item 183, Exh. C, pp. 1-2.
In their response, the applicants also stated that they were not
seeking protection of the "graft polymerization" process, since
the graft polymerization technique was "well known in the art."
The applicants went on to explain that they were seeking
protection for a "specific polymeric product" and that "the
conditions of graft copo-lymerization can be selected by one
in the art once the ingredients are specified." Item 183, Exh.
C, p. 4.
Based on these amendments and remarks, the PTO issued the '128
patent without any further substantive changes to the
application. See Item 183, p. 6 and Exh. A.
The dispute surrounding SRC Adhesive 1 is whether Moore needs
to prove that this adhesive contained styrene as part of a graft
copolymer, or whether Moore has failed by merely showing that
SRC Adhesive 1 contains styrene in some unidentified form. The
issue surrounding SRC Adhesive 2 is whether Moore has shown that
it actually was one of SRC's adhesives. The dispute surrounding
SRC Adhesive 3 — which SRC freely admits it has used since 1994
— focuses on whether SRC infringed the '128 patent by using
natural rubber graft copolymerized with only MMA, rather than
natural rubber graft polymerized with a combination of styrene
and MMA (as called for in the '128 patent).
The standard for summary judgment is well settled and need not
be set forth here.*fn6 Suffice it to say, though, that
summary judgment is as appropriate in patent infringement
actions as it is in any other area of law.
I. Literal Infringement: SRC Adhesives 1 and 2
"An infringement analysis entails two steps.
The first step is determining the meaning and scope
of the patent claims asserted to be infringed. The
second step is comparing the properly construed
claims to the device accused of infringing." While
claim construction is a question of law,