SJ Of Noninfringement Vacated Where Record Was Insufficient To Provide Proper Claim Constructions

In Frans Nooren Afdichtingssystemen B.V. v. Stopaq Amcorr Inc., No. 13-1200 (Fed. Cir. Feb. 21, 2014), the Federal Circuit vacated a grant of SJ of noninfringement, concluding that the district court made errors in at least one underlying claim construction. The Court remanded the case for further proceedings.

Frans Nooren Afdichtingssystemen B.V. ("Nooren") owns U.S. Patent No. 5,898,044 ("the '044 patent"), which "discloses a composition used for insulating and protecting substrates . . . from corrosion, water ingress, and mechanical stresses." Slip op. at 2. Independent claim 1 recites "[a] shaped article comprising . . . a filler comprising a plurality of fractions each comprising different size particles, and wherein said different fractions have different particle size distributions." Id. (with emphasis denoting the "filler/fractions limitation"). The '044 patent is licensed exclusively to the Dutch company, Stopaq B.V. The Dutch company, Kleiss & Co. B.V. ("Kleiss"), manufactures products that prevent corrosion and protect against leaks: ViscoWrap, which contains a mixture of polybutene, polypropylene, and aluminum trihydrate; and EZ Wrap and Hippo Patch, which contain a mixture of polybutene, polypropylene, and calcium carbonate.

Kleiss and its U.S. distributors, Amcorr Products and Services, Inc. and Dolphin Sealants LLC (collectively "Amcorr"), filed a DJ action for noninfringement in the Netherlands against Nooren. One week later, Nooren brought an action for infringement against Amcorr in the U.S. District Court for the Southern District of Texas. Amcorr asserted affirmative defenses of noninfringement and invalidity.

The parties filed cross-motions for SJ on the issue of infringement, and the district court granted Amcorr's motion, finding noninfringement as a matter of law. In doing so, the district court "adopt[ed] both of Amcorr's grounds for concluding that polypropylene cannot help meet the [filler/fractions] limitation," and "adopt[ed] Amcorr's position that neither the aluminum trihydrate nor the calcium carbonate meets the specific requirements for a plurality of 'fractions.'" Id. at 5-6. Nooren appealed.

"There has been insufficient exploration in the record, both here and in the district court, of too many questions of apparent relevance to identifying a proper construction of the limitation, which requires, among other things, that the construction itself supply a 'meaningfully precise claim scope.'" Slip op. at...