Claim Construction Cannot Be Argued in LR 56.1 Statements

Posted on June 20, 2007 by R. David Donoghue

PSN Illinois, LLC v. Ivoclar Vivadent, Inc., No. 04 C 7232, 2006 WL 3523760 (N.D. Ill. Dec. 7, 2006) (Kendall, J.).

Judge Kendall denied plaintiff's Fed. R. Civ. P. 59 motion for reconsideration of the Court's prior ruling (discussed in the Blog's archives) construing the claims of the patent at issue and granting summary judgment of noninfringement on behalf of defendant Ivoclar Vivadent, Inc. ("Ivoclar").  The Court denied plaintiff's motion for reconsideration because it considered each of plaintiff's reconsideration arguments in its original Opinion granting summary judgment.  But the Court spent some time on one of plaintiff's claim construction arguments regarding a patent related to porcelain veneers.  On reconsideration, plaintiff argued for a different construction of "ready for mounting."  In its original papers plaintiff did not argue for the proposed construction, although it did propose it in its Local Rule 56.1 Additional Statement of Material Facts.  The Court held that because claim construction is a matter of law, proposed constructions are not material facts and, therefore, cannot be put in LR 56.1 statements.  The Court noted its obligation pursuant to LR 56.1 to disregard legal arguments and conclusions placed in statements of fact.  The Court did, however, go on to consider plaintiff's construction and explain why the Court's original construction was correct.

Practice tip:  Think carefully about what goes into your LR 56.1 statements of material fact.  Do not put arguments in your statements of fact. And by all means, do not put arguments in your statements of fact and then omit those arguments from your brief. The Court will disregard them, and you will be out of luck. 

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Summary Judgment of Noninfringement Granted for Teeth Veneer Claims

Posted on December 15, 2006 by R. David Donoghue

PSN Illinois, LLC v. Ivoclar Vivadent, Inc., No. 04 C 7232, 2006 WL 3523760 (N.D. Ill. Dec. 7, 2006) (Kendall, J.).

Judge Kendall granted defendant summary judgment of noninfringement, both literal and doctrine of equivalents.  Plaintiff alleged that Ivoclar's Empress veneer technique for making porcelain tooth veneers infringed plaintiff's patent.  The patent claimed a method for making porcelain veneers consisting of:  1) taking an impression of a tooth; 2) forming a "statue" of the tooth from the impression; 3) applying a "porcelain powder" to the statue to build a veneer restoration; 4) firing the veneer restoration on the statue; and 5) eroding the statue from the veneer restoration leaving a restoration "ready for mounting."  The Court construed each of the three terms in quotations and then held that no reasonable jury could find that defendant's Empress method produced a "ready for mounting" veneer.

 The Court construed a "ready for mounting" to require that a veneer be "ready to be fitted on and cemented to a patient's tooth."  Because the Empress method required substantial finishing after the veneer is removed from the statue and prior to being cemented to a tooth, the Empress method was held not to infringe the claim.

The Court also construed "statue" to be a "positive, substantially entire version of the tooth" and noted that "model" was a synonym of "statue."  Because the Empress method involved applying a substance including porcelain to a negative mold of a tooth, instead of a positive model or statue, the claim was not literally infringed.  But the Court found a question of fact as to whether the Empress method's combination of an original positive model of the tooth combined with the negative model used to form the veneer could infringe the claim pursuant to the doctrine of equivalents.

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