**United States Court of Appeals for the Federal Circuit**

03-1078

AFG INDUSTRIES, INC.

and ASAHI GLASS COMPANY, LTD.,

> Plaintiffs-Appellants,

v\.

CARDINAL IG COMPANY, INC.,

Defendant-Appellee,

and

ANDERSEN WINDOWS, INC.,

> Defendant.

[Richard D. Kelly]{.underline}, Oblon, Spivak, McClelland, Maier &
Neustadt, P.C., of Alexandria, Virginia, argued for
plaintiffs-appellants. With him on the brief were [Stephen G.
Baxter]{.underline}, [William T. Enos]{.underline} and [Andrew M.
Ollis]{.underline}.

[V. Bryan Medlock, Jr.]{.underline}, Sidley Austin Brown & Wood LLP, of
Dallas, Texas, argued for defendant-appellee. With him on the brief was
[Nathanael G. Barnes]{.underline}.

Appealed from: United States District Court for the Eastern District of
Tennessee

Judge Thomas Gray Hull

## United States Court of Appeals for the Federal Circuit

03-1078

AFG INDUSTRIES, INC.

and ASAHI GLASS COMPANY, LTD.,

Plaintiffs-Appellants,

v\.

CARDINAL IG COMPANY, INC.,

Defendant-Appellee,

and

ANDERSEN WINDOWS, INC.,

Defendant.

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

DECIDED: July 13, 2004

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Before NEWMAN, MICHEL, and RADER, [Circuit Judges]{.underline}.

Opinion for the court filed by [Circuit Judge]{.underline} RADER.
Dissenting opinion filed by [Circuit Judge]{.underline} NEWMAN.

RADER, [Circuit Judge]{.underline}.

On summary judgment, the United States District Court for the Eastern
District of Tennessee ruled that Cardinal IG Co. (Cardinal) did not
infringe U.S. Patent No. 4,858,532. [AFG Indus., Inc. v. Cardinal IG
Co.]{.underline}, No. 2:96-CV-244 (E.D. Tenn. Oct. 1, 2002). Because the
district court erred in granting summary judgment of noninfringement,
this court vacates and remands.

I.

This litigation began in 1996, when AFG Industries, Inc. and Asahi Glass
Co. (collectively, AFG) sued Cardinal and Andersen Windows, Inc.[^1] for
infringing the '532 patent. The '532 patent claims a glass window with a
coating to reflect infrared light and, thus, to reduce heat transfer
through the glass. The patent's sole claim recites:

> A transparent laminated product comprising
>
> a transparent substrate and
>
> a 5‑layered transparent coating composed of
>
> a first ZnO layer formed on the substrate,
>
> a second Ag layer formed on the first layer,
>
> a third ZnO layer formed on the second layer,
>
> a fourth Ag layer formed on the third layer and
>
> a fifth ZnO layer formed on the fourth layer,
>
> and having a visible ray transmission of at least 60%,
>
> wherein the thickness of each Ag layer is from 60 to 250 Å.

'532 patent, col. 10, ll. 59-67 (paragraphing added).

Cardinal markets low-emissivity glass that are known as LoE^2^ products.
To produce its LoE^2^ products, Cardinal uses magnetron sputter
deposition. This sputter deposition method moves a glass sheet through
coat zones. In each coat zone, the method deposits a thickness of
material on the glass. The deposited material may be, for example,
silver (Ag) in one zone and zinc (Zn) in another. Furthermore, this
deposition method also permits the manufacturer to control the
atmosphere in each zone to provide nonoxidized or oxidized deposition.
Zinc deposited in an oxygenated atmosphere, for instance, produces a
layer of zinc oxide (ZnO). Although discussing the method of depositing
layers of zinc oxide, this court recognizes that the '532 claim is a
product claim that covers this inventive glass structure however it is
made or however it is used. [See]{.underline} [Vanguard Prods. Co. v.
Parker Hannifin Corp.]{.underline}, 234 F.3d 1370, 1372 (Fed. Cir. 2000)
(explaining that "\[t\]he method of manufacture . . . does not of itself
convert product claims into claims limited to a particular process").

In depositing material, the manufacturer may also deposit the same
material consecutively, which would increase the thickness of deposited
material, such as zinc oxide. This appeal asks, in part, whether
sequential applications of a single material produce a single layer or
multiple layers. Cardinal's accused LoE^2^ products contain a center
thickness of zinc oxide produced by at least three separate depositions.
This appeal also asks, in part, whether certain depositions of titanium
dioxide (TiO~2~) have a thickness sufficient to qualify as a layer. Only
some of Cardinal's accused LoE^2^ products contain titanium dioxide of
disputed thickness.

Roughly a year after AFG filed suit, Cardinal moved for summary judgment
of, [inter]{.underline} [alia]{.underline}, noninfringement. AFG opposed
and cross-moved for summary judgment of literal infringement. After
holding a [Markman]{.underline} hearing, the district court granted
summary judgment of noninfringement and dismissed. AFG appealed to this
court, which vacated the grant of summary judgment and remanded. [AFG
Indus., Inc. v. Cardinal IG Co.]{.underline}, 178 F.3d 1312, 1999 U.S.
App. LEXIS 653, (Fed. Cir. Jan. 5, 1999) (nonprecedential). This court's
opinion particularly recommended that the district court precisely
determine the meaning of various disputed terms in the claim, including
"layer." On remand, the district court construed the claim terms as
necessary and granted summary judgment in favor of Cardinal. AFG again
appealed, arguing, [inter]{.underline} [alia]{.underline}, that the
district court erred in construing various terms, including "layer."

This court examined the claim and interpreted "layer" to mean "a
thickness of material of substantially uniform chemical composition, but
excluding interlayers having a thickness not to substantially affect the
optical properties of the coating." [AFG Indus., Inc. v. Cardinal IG
Co.]{.underline}, 239 F.3d 1239, 1250 (Fed. Cir. 2001). While basing its
opinion primarily on the claim language and the written description,
this court also considered the effect of a prior art patent, U.S. Patent
No. 4,943,484 to Goodman (the Goodman patent) on its reading of the
claim. [Id.]{.underline} at 1249-50. In fact, this court rejected
Cardinal's original argument that "layer" means "a thickness of a
material of uniform chemical composition bounded by a material of a
different chemical composition":

> Cardinal appears to have advocated applying this further limitation so
> that a prior art patent, U.S. Patent No. 4,943,484 to Goodman (that
> appears to disclose sequential deposits of zinc oxide/silver/zinc
> oxide/zinc oxide/silver/zinc oxide), would constitute a five layer
> coating and thus anticipate the asserted claim. However, the
> specification of the '532 patent nowhere limits the term "layer" to a
> deposit bounded by a material of a different chemical composition. We
> thus decline to include such a limitation in our construction of the
> term "layer."

[Id.]{.underline} at 1250. After construing "layer," this court remarked
that it made "no determination as to whether a chemical compound that
has been deposited in multiple separate, sequential applications,
without intervening layers or interlayers, constitutes a single
'layer.'" [Id.]{.underline} Instead, that was "a matter for the trial
court to resolve in a manner consistent with our claim construction."
[Id.]{.underline}

On remand, the district court reevaluated the claim construction in
light of this court's opinion and again held on summary judgment that
Cardinal did not infringe the '532 patent. In particular, the district
court determined, as it understood this court to have instructed, that a
"layer" was defined further by its method of formation. Because the
accused products contain multiple, sequentially deposited layers of zinc
oxide, the trial court determined that Cardinal could not infringe. The
district court separately determined that some accused products contain
a layer of titanium dioxide, which would also preclude infringement.
Although not appealed, the district court also held the Goodman patent
did not anticipate the '532 patent.

II\.

This court reviews a grant of summary judgment without deference to the
decision of the district court. [Williams v. Mehra]{.underline}, 186
F.3d 685, 689 (6th Cir. 1999); [Johns Hopkins Univ. v. CellPro,
Inc.]{.underline}, 152 F.3d 1342, 1353 (Fed. Cir. 1998). Summary
judgment is appropriate only where "there is no genuine issue as to any
material fact and . . . the moving party is entitled to judgment as a
matter of law." Fed. R. Civ. P. 56(c); [see also]{.underline} [Celotex
Corp. v. Catrett]{.underline}, 477 U.S. 317, 322 (1986). "On summary
judgment, the evidence must be viewed in the light most favorable to the
party opposing the motion, with doubts resolved in favor of the
nonmovant." [Crown Operations Int'l, Ltd. v. Solutia Inc.]{.underline},
289 F.3d 1367, 1375 (Fed. Cir. 2002) (citations omitted).

Determining infringement is a two-step process. First, the court
determines the scope and meaning of the asserted claim. Then, the court
compares the properly construed claims with the accused device or
product to reach a finding regarding infringement. [Johnson Worldwide
Assocs., Inc. v. Zebco Corp.]{.underline}, 175 F.3d 985, 988 (Fed. Cir.
1999). This court reviews the first determination without deference.
[Cybor Corp. v. FAS Techs., Inc.]{.underline}, 138 F.3d 1448, 1456 (Fed.
Cir. 1998). In the context of summary judgment, this court reviews the
second determination for genuine disputes of material facts that would
preclude a grant of summary judgment. [Hilgraeve Corp. v. McAfee
Assocs., Inc.]{.underline}, 224 F.3d 1349, 1352-54 (Fed. Cir. 2000). In
particular, a trial court cannot reach a conclusive finding of
noninfringement if the record shows some evidence supporting a finding
of noninfringement and some evidence to the contrary.

On appeal, AFG argues two main points. AFG asserts that the district
court erred by finding that the multiple adjacent depositions of zinc
oxide in Cardinal's LoE^2^ products precluded infringement. AFG also
asserts that the district court erred by finding that the deposition of
titanium dioxide in some of Cardinal's LoE^2^ products precluded
infringement.

# A. Zinc Oxide

The sole claim of the '532 patent recites, among other limitations, a
5‑layered transparent coating composed of alternating layers of zinc
oxide and silver. This court has already construed the term "layer" in
the '532 patent to mean "a thickness of material of substantially
uniform chemical composition, but excluding interlayers having a
thickness not to substantially affect the optical properties of the
coating." [AFG Indus.]{.underline}, 239 F.3d at 1250. Moreover, the '532
claim does not recite a limitation on the thickness of the zinc oxide
layers, unlike the silver layers, which must have a thickness ranging
from 60 to 250 Å.

That construction is the law of the case, which "generally bars retrial
of issues that were previously resolved." [Intergraph Corp. v. Intel
Corp.]{.underline}, 253 F.3d 695, 697 (Fed. Cir. 2001); [see
also]{.underline} [Central Soya Co. v. Geo. A. Hormel &
Co.]{.underline}, 723 F.2d 1573, 1580 (Fed. Cir. 1983). None of the
recognized exceptions to the law of the case doctrine -- "the discovery
of new and different material evidence that was not presented in the
prior action, or an intervening change of controlling legal authority,
or when the prior decision is clearly incorrect and its preservation
would work a manifest injustice" -- apply in this case.
[Intergraph]{.underline}, 253 F.3d at 698. Therefore, this court is not
free to second-guess its prior decision (and even if this court were to
reexamine the claim construction, it would reach a conclusion identical
to the prior conclusion). This court has established the meaning of
"layer." [AFG Indus.]{.underline}, 239 F.3d at 1250.[^2]

With the meaning of "layer" established by this court's earlier ruling,
this court's remand left open only the second step of the infringement
analysis, namely the application of the claim to the accused device. In
other words, this court remanded for the trial court to determine as a
matter of fact "whether a chemical compound that has been deposited in
multiple separate, sequential applications, without intervening layers
or interlayers, constitutes a single 'layer.'" [Id.]{.underline} This
court's remand did not invite further refinements in the meaning of the
term "layer," as Cardinal argues. Rather, this court requested the trial
court to apply the established claim construction to the accused
products. That inquiry requires, of course, comparison of the '532 claim
to Cardinal's LoE^2^ products. [See, e.g.]{.underline}, [Johnson
Worldwide]{.underline}, 175 F.3d at 988.

In forming the accused LoE^2^ products, Cardinal successively deposits
200 Å of zinc oxide until achieving a thickness ranging from 600 to 890
Å. Cardinal asserts that these successive depositions result in 3 to 4.5
layers of zinc oxide, which brings the accused products outside the
scope of the '532 patent's claim. In essence, Cardinal asks this court
to adopt a new construction of the claim that would impermissibly import
a process limitation into a pure product claim. [See]{.underline} [3M
Innovative Props. Co. v. Avery Dennison Corp.]{.underline}, 350 F.3d
1365, 1371-74 (Fed. Cir. 2003) (holding that "multiple embossed
patterns" did not import a process limitation into a structural claim).
Much like "multiple embossed patterns" in [3M]{.underline}, the term
"layer" in the '532 patent does not require any particular method of
manufacture. [Cf.]{.underline} [Hazani v. United States Int'l Trade
Comm'n]{.underline}, 126 F.3d 1473, 1479 (Fed. Cir. 1997) (holding that
"chemically engraved" is a process limitation meaning "asperities of the
sort produced by oxidation"); [In re Garnero]{.underline}, 412 F.2d 276,
279 (CCPA 1969) (holding that "interbonded one to another by
interfusion" is a process limitation similar to "intermixed," "ground in
place," "press fitted," "etched," and "welded"). In other words,
Cardinal's process of successive depositions does not provide conclusive
information about whether its products contain a single layer of zinc
oxide. Multiple depositions of the same material, for instance, would
form a single layer if those additional depositions have no optical
effect different than that of a single deposition of the same thickness.
On the other hand, if multiple depositions do not create a unitary
structure having the same optical properties of a single deposition of
the same thickness, the product will have not have a single layer -- not
because of the method of application but because of the structure and
optical properties resulting from the application. Thus, multiple
depositions are only relevant if they affect the structure and optical
properties.

In sum, the determination of whether a particular structure is a "layer"
within the meaning of the claim is not affected by the method of
creation of that structure. A structure that falls within the meaning of
"layer" due to its structure and optical properties remains a single
layer whether it was deposited in a single sputtering operation or
multiple operations. By the same token, that unitary structure of the
same material that constitutes a "layer" does not become multiple layers
because the manufacturer decided to deposit it in multiple passes rather
than in a single pass. The method of making is not determinative of the
structure and properties of a "layer." Because the trial court
considered the method of creating the layer dispositive of its structure
and character in the accused LoE^2^ products, this court vacates the
grant of summary judgment.

The present record before this court discloses, at the very least,
genuine issues of material fact on the question of infringement. Indeed,
a document internal to Cardinal refers to its products as containing
five layers, which would support a factual inference that the successive
depositions of zinc oxide form a single layer rather than multiple
layers. [See]{.underline} [AFG Indus.]{.underline}, 239 F.3d at 1246.
Even though that document predates this court's construction of "layer"
and is not conclusive as to the structure of the accused products, this
court notes that a fact-finder may consider it relevant in determining
whether Cardinal's LoE^2^ products meet the limitations of the '532
claim.

Moreover, the record contains analytical evidence that the accused
products contain a single middle layer of zinc oxide. Using secondary
ion mass spectroscopy, AFG proffered evidence showing no interface
between the successive depositions of zinc oxide in the accused
products. Without an interface, AFG asserts that the successive
depositions result in a thickness of material of substantially uniform
chemical composition. Cardinal correctly notes that this court's claim
construction does not require the absence of an interface between
successive depositions of the same material to meet the definition of
"layer." Nevertheless, the analytical evidence lends credence to the
position that successive depositions create a single layer. At the very
least, this evidence creates a genuine issue of material fact about
Cardinal's LoE^2^ products' infringement, particularly when considered
in combination with Cardinal's internal documents stating that the
accused products contain a single layer of zinc oxide. [See]{.underline}
[Hilgraeve]{.underline}, 224 F.3d at 1352-54.

# B. Titanium Dioxide

The five-layered transparent coating recited in the sole claim of the
'532 patent does not contain any layers of titanium dioxide sandwiched
between the alternating layers of zinc oxide and silver.
[See]{.underline} [AFG Indus.]{.underline}, 239 F.3d at 1245 (holding
that "composed of 'excludes ingredients that would materially affect the
basic and novel characteristics of the claimed composition'") (quoting
[Atlas Powder Co. v. E.I. du Pont De Nemours & Co.]{.underline}, 750
F.2d 1569, 1574 (Fed. Cir. 1984) (internal quotations omitted)). AFG
argues that the district court erred in holding that Cardinal's LoE^2^
products have a layer of titanium dioxide that would place the accused
products outside the scope of the claim. In particular, AFG argues --
and Cardinal does not contest -- that not all of the accused LoE^2^
products contain a thickness of titanium dioxide. Accordingly, this
court vacates the district court's judgment of noninfringement on the
alternative grounds of the titanium dioxide layer. On remand, the trial
court will have an opportunity, at a minimum, to examine separate and
distinct LoE^2^ products separately and distinctly, particularly
treating those products containing various thicknesses of titanium
dioxide differently from those products without titanium dioxide.
Indeed, the trial court may choose to evaluate each category of
Cardinal's LoE^2^ products individually.

AFG also argues that the district court erred in finding noninfringement
of those products that do contain a thickness of titanium dioxide
between layers of zinc oxide and silver. AFG's expert testified that a
thickness of 35 Å or more of titanium dioxide affects the optical
properties of the coating. Because such a thickness would be a "layer"
and not an "interlayer" within the meaning of the '532 patent's claim,
any of Cardinal's accused products that contain thicknesses of 35 Å or
more of titanium dioxide would not infringe the claim. In making some
(again, not all) of the LoE^2^ products, Cardinal typically deposits a
thickness of 20 Å of titanium, then exposes that thickness to oxygen to
form titanium dioxide. During the oxidation, the thickness of 20 Å can
grow to a thickness of up to 40 Å. The quantum of growth, however, does
not appear to be certain. Moreover, the record does not show
incontrovertible evidence regarding the basic inquiry, that is, whether
the thicknesses titanium dioxide -- regardless of whether it is 20 or 40
Å -- in Cardinal's LoE^2^ products affect the optical properties of the
coatings. Accordingly, this court perceives genuine issues of material
fact that preclude summary judgment on this point as well.
[See]{.underline} [Hilgraeve Corp.]{.underline}, 224 F.3d at 1352-54.

III\.

Because genuine issues of material fact preclude summary judgment of
noninfringement of the '532 patent, this court vacates and remands.

[COSTS]{.underline}

Each party shall bear its own costs.

[VACATED AND REMANDED]{.underline}.

# **United States Court of Appeals for the Federal Circuit**

03-1078

AFG INDUSTRIES, INC.

and ASAHI GLASS COMPANY, LTD.,

Plaintiffs-Appellants

v\.

CARDINAL IG COMPANY, INC.,

Defendant-Appellee,

and

ANDERSEN WINDOWS, INC.,

Defendant.

NEWMAN, [Circuit Judge]{.underline}, dissenting.

I respectfully dissent from the panel\'s decision to remand this case
for the third time on the issue of claim construction with respect to
the claim term \"layer.\" Claim construction is a matter of law, and as
such it receives [de]{.underline} [novo]{.underline} review. The purpose
is objective correctness; the record is complete, the question is ripe.
It is time for decision, not for remand.

There have been three [Markman]{.underline} hearings and now three
appeals, all directed to the meaning of the term \"layer.\" For the
first two hearings the definition was applied to the titanium dioxide
deposits, and in the second appeal this court held that a layer is a
material of optically significant uniform chemical composition. In the
third [Markman]{.underline} hearing the district court held that
Cardinal\'s multiple deposits of its center zinc oxide component
produced multiple layers. This court now appears to hold that its
definition in the previous appeal, wherein \"layer\" was defined in the
context of the \"interlayers\" of titanium dioxide, bars the district
court from considering the additional aspect of whether multiple
sputtering deposits can produce multiple \"layers,\" unless they affect
the structure and optical properties. However, when the later claim
construction is made in a different technical context from that which
was earlier considered, in the interest of correctness the court must
consider the new context.

This case was filed in 1996. Before the district court the parties
produced extensive evidence, in the form of expert and other witness
testimony, and physical exhibits and demonstrations. The district court
has three times held, on summary judgment upon deciding the legal
question of claim construction, that there is no infringement. It is a
relatively simple technical question, for which the record is fully
developed. After eight years this question of law requires finality, not
a fourth cycle of [Markman]{.underline} hearing and appeal. From my
colleagues\' remand for this purpose, I respectfully dissent.

[^1]: Under a joint stipulation, the district court severed Andersen
    Windows and stayed the action against it pending the outcome of this
    litigation between AFG and Cardinal.

[^2]: This court does not suggest that a district court should in all
    circumstances avoid refining an ambiguous claim construction. [See,
    e.g.]{.underline}, [Utah Med. Prods., Inc. v. Graphic Controls
    Corp.]{.underline}, 350 F.3d 1376, 1381-83 (Fed. Cir. 2003)
    (affirming the district court's claim construction, which was
    amended to clarify the meaning). In the precise circumstances of
    this case, however, this court perceives no ambiguity or necessity
    to amend its earlier claim construction.