The opinion of the court was delivered by: Brown, Chief Judge
This matter comes before the Court on a motion and cross motion for summary judgment on whether two thickness ranges are supported by the written description of the patent. (Doc. Nos. 139, 154). Each party has filed an opposition. The Court has considered the parties' submissions and held oral argument on March 21, 2011. For the reasons set forth below, the Court denies Sabert's motion to invalidate based on lack of written description of the thickness ranges, but grants Waddington North American's ("WNA") cross motion that the patents are not invalid on this basis. *fn1
This is a patent infringement case involving metalized plastic cutlery. Plaintiff, WNA, is the assignee of the single patent at issue, U.S. Patent No. 6,983,542 ("the '542 patent"), for plastic eating utensils covered with a thin metallic coating that gives them the appearance of real metal cutlery. (Compl. at ¶ 12; Doc. No. 1). In order to provide background on whether the metallic thicknesses of "less than about 2000 nanometers," "less than 1000 nanometers," or "less than about 200 nanometers" are supported by the specification of the issued patent, the Court will review the description that existed at filing and then credit the additions made throughout prosecution.*fn2
This patent was originally filed as a provisional application ("the Provisional"); it was then amended when it was filed as a utility application, during prosecution, and finally after an ex-parte reexamination. In its original filing, the Provisional made several statements about the thickness of the metal coating that can be presented in three categories. First, it explained that one of the purposes of the invention was to reduce the cost of metalized plastic cutlery and "provide a method for metallization of injection-molded plastic cutlery at a reasonable incremental cost." (Provisional App. 2422, Sutton Decl. Ex. C. at 7 ("Provisional")). The Provisional spent the majority of the Background of the Invention explaining that the invention was an improvement over the prior art because the prior art processes for metalizing plastic cutlery were prohibitively expensive. (Provisional at 2-5). One way to decrease the cost was to "deposit the metal layer on only one side of the article" which would result in "metallic material savings -- approximately only one --half of the surface area of the parts is metalized." (Provisional at 11-12).
Second, the Provisional limited the available thicknesses by explaining that the Physical Vapor Deposition ("PVD") process used to deposit the metal on the cutlery was capable of producing thicknesses that "range from few nanometers to thousands of nanometers." (Id. at 12) (emphasis added). Thus, the possible thicknesses were limited somewhat by the capabilities of the process.
Third, the Provisional described preferred thicknesses and provided examples of other potential metallic thicknesses. In doing so, it described the preferred thicknesses as a certain number of nanometers "or less," which suggested that less metal was preferred to more metal. Specifically, the provisional stated that in the preferred embodiment:
(a) The cutlery items are made of a light-transmitting grade of a thermoplastic polymeric material.
(b) The metallic coating is of the same composition as the stainless steel alloy used in real tableware cutlery.
(c) The metallic coating thickness is less than 200 nanometers. (Provisional at 13) (emphasis added). In three examples, the Provisional again stressed the thinness of the metallic coating and that such coating should be less than a certain thickness, specifically:
1. Metalized plastic food service tool comprising a plastic body whereupon an extremely thin metallic coating produced by a vacuum deposition process is deposited.
8. The metalized plastic food service tool of example 1 wherein said thin metallic coating is less than 1000 [nanometers].
18. The method of example 11 wherein said thin metallic coating is less than 1000 [nanometers]. (Provisional at 16-17) (emphasis added).
Less than a year after filing the Provisional, the patentee filed a utility application claiming priority from it. The specification of that filing and the specification as it ultimately issued included the above disclosures and added substantial elaboration on the thickness limitation. First, the patent explained that vacuum deposition process, such as the PVD listed in the Provisional, were used deposit metal on the cutlery items of the invention. ('542 patent, 8:45-65). Second, it explained that cost and manufacturing time were the reasons that thicknesses under 200 nanometers were preferred:
The thickness of the metallic coating can vary depending upon the particular application, but for weight, cost and manufacturing time, a thin layer is preferred. For example, in a preferred embodiment, the thickness is approximately 200 nanometers or less. ('542 patent, 8:4-8). Finally, the specification provided that the invention's "thin metallic coating is generally less than 1000 nm. ('542 patent, 5:17-18).
The patent completed examination and ultimately issued. In the issued patent, independent claims 1 and 25 contained a limitation requiring that the thickness of the metallic layer be "less than about 2000 nanometers." ('542 patent, 11:63-65, 12:23-25). Independent claim 13 was broader, and required only that the thickness be "less than thousands of nanometers." (Id. at 12:45-47). However, several dependent claims narrowed these thickness limitations. Claim 3 narrowed this parameter to claim only products whose metallic coating was "less than 1000 nanometers in thickness," and claim 35 claimed the preferred embodiment where the thickness of the metallic coating "is less than about 200 nanometers." ('542 patent, 12:53-55, 14:33-42). When one compares these claims to the specification, the exact thickness measurement of 2000 nanometers had not appeared as an upper limit. However, the specification listed both 1000 nanometers and 200 nanometers as upper limits of embodiments, commented that the thickness of the metallic coating was "generally less than 1000 nm," and included "less than thousands of nanometers" as the thicknesses that the sputtering PVD process was able to produce.
After the '542 patent issued, Defendant Sabert Corporation ("Sabert") notified WNA of its belief that the '542 patent was anticipated by prior art and WNA filed for reexamination. (Id. at ¶13). After WNA amended its claims to the satisfaction of the examiner, the PTO issued a reexamination certificate ("Reexamination Certificate") that found the amended claims were patentable over the prior art. (Compl., Ex. A; Doc. No. 1.) The amended claims narrowed the scope of several claims' thickness requirements from "less than thousands of nanometers" to "less than about 2000 nanometers" and added several claims with the "less ...