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March 22, 2001


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 skilled 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, infringement, ...

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