IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

Illinois Tool Works, Inc. 

 Plaintiff, 

) 

) 

) 

) 

) 

 v. ) 

) 

 No. 20 C 1833 

Chicago Laminating, Inc., 

 Defendant. 

) 

)

)

) 

Memorandum Opinion and Order 

 In this patent dispute, Illinois Tool Works, Inc. (“ITW”) 

accuses Chicago Laminating, Inc. (“Chicago Laminating”) of 

infringing certain claims of a patent held by ITW. The parties 

have filed cross-motions for summary judgment on the issue of 

infringement. For the following reasons, ITW’s motion is denied 

and Chicago Laminating’s motion is granted. 

I. 

ITW and Chicago Laminating are competitors in the laminating 

business. Def.’s Stmt. of Material Facts (“DSMF”), ECF 104 ¶ 4. 

ITW holds U.S. Patent No. 7,544,266 (“the ’266 Patent”),1 titled 

“Process of making laminated sheet and product made by the 

process.” DSMF ¶ 5. Claim 1 of the ’266 Patent is an independent 

1 The ‘266 Patent can be found at ITW’s Exhibit A. ECF 97-1 at 5–

20. 

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claim that recites a multi-step method for producing a composite 

laminate sheet with a plurality of sections, including the step of 

“applying, at least one print layer or at least one overlay layer 

to an outer surface of intermediate film or foil layer.” Id. ¶ 8. 

Claim 9 of the patent is dependent on Claim 1, and is directed at 

the product made by the process of Claim 1. Id. ¶¶ 9–10. Claim 23 

is an independent claim that recites a multi-step lamination method 

that includes the step of “applying at least one print layer or at 

least one protective overlay layer to an outer surface of the 

intermediate film or foil layer.” Id. ¶ 11. Claim 28 is dependent 

on Claim 23, and it describes the product made by the process 

recited in Claim 23. Id. ¶¶ 12–13. The intermediate film or foil 

layer identified in Claims 1 and 23 must include at least one 

security, functional or decorative feature or layer. See Pl.’s 

Stmt. of Material Facts (“PSMF”), ECF 97 ¶ 13. 

ITW asserts Chicago Laminating infringes dependent Claims 9 

and 28 (the “Asserted Claims”), which--because they describe 

products made according to the processes described in independent 

Claims 1 and 23, respectively--are product-by-process claims. See 

DSMF ¶ 14. Specifically, ITW accuses Chicago Laminating of 

performing some of the steps claimed in Claims 1 and 23 and selling 

the resulting product to Chicago Laminating’s customer Valid, 

which performs the remaining steps, yielding a final product that 

infringes the Asserted Claims. PSMF ¶¶ 4–8. Chicago Laminating 

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denies that it infringes the Asserted Claims, directly or 

indirectly, and that if it does infringe the Asserted Claims, then 

those claims are invalid. Only the issue of infringement--not 

invalidity--is raised in the present motions. 

II. 

 Summary judgment is appropriate “if the movant shows that 

there is no genuine dispute as to any material fact and the movant 

is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). 

A material fact is genuinely in dispute when “the evidence is such 

that a reasonable jury could return a verdict for the nonmoving 

party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). 

The moving party’s burden “may be discharged by ‘showing’--that 

is, pointing out to the district court--that there is an absence 

of evidence to support the nonmoving party’s case.” Celotex Corp. 

v. Catrett, 477 U.S. 317, 325 (1986). “As with any summary judgment 

motion, [I] review cross-motions for summary judgment ‘construing 

all facts, and drawing all reasonable inferences from those facts, 

in favor of the non-moving party.’” Laskin v. Siegel, 728 F.3d 

731, 734 (7th Cir. 2013) (quoting Wis. Cent., Ltd. v. Shannon, 539 

F.3d 751, 756 (7th Cir. 2008)). 

 The parties agree that claim construction is unnecessary to 

resolve the pending cross-motions for summary judgment. See ECF 

71, 72 (court granted parties’ agreed motion to continue claim 

construction hearing until after resolution of summary judgment 

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motions because the parties stipulated that the summary judgment 

motions do “not depend in any way on the determination of the claim 

construction issues pending before the Court.”). Though some 

aspects of the summary judgment motions appear to hinge on claim 

construction issues, the one I find dispositive does not, so 

resolution of these motions prior to claim construction is 

appropriate. See Intellect Wireless, Inc. v. T-Mobile USA, Inc., 

735 F. Supp. 2d 928, 932–33 (N.D. Ill. 2010) (finding certain 

aspects of summary judgment motion inappropriate for consideration 

before claim construction but deciding issue of single-entity 

infringer); United States Surgical Corp. v. Ethicon, Inc., 103 

F.3d 1554, 1568 (Fed. Cir. 1997) (holding that claim construction 

is required only “when the meaning or scope of technical terms and 

words of art is unclear and in dispute and requires resolution to 

determine” the issue before the court). 

III. 

In its summary judgment motion, ITW focuses exclusively on 

contributory infringement under 35 U.S.C. § 271(c). But perhaps 

because ITW’s complaint also asserts a claim of induced 

infringement under 35 U.S.C. § 271(b), Chicago Laminating argues 

for summary judgment of non-infringement on that theory as well.2

2 ITW’s complaint also suggests a possible claim of direct 

infringement against Chicago Laminating, see Compl., ECF 1 ¶¶ 11–

12, but it has disavowed that theory. DSMF ¶ 17. 

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To prove contributory or induced infringement, a patentholder must 

demonstrate underlying direct infringement. See Linear Tech. Corp. 

v. Impala Linear Corp., 379 F.3d 1311, 1326 (Fed. Cir. 2004) 

(“There can be no inducement or contributory infringement without 

an underlying act of direct infringement.” (citation omitted)). 

ITW maintains that the composite laminate sheets produced by 

Chicago Laminating and Valid meet all the limitations of the 

Asserted Claims and, therefore, directly infringe those claims. In 

determining infringement of product-by-process claims like the 

Asserted Claims, “the focus is on the process of making the product 

as much as it is on the product itself.” Amgen Inc. v. F. HoffmanLa Roche Ltd., 580 F.3d 1340, 1370 (Fed. Cir. 2009) (citing Abbott 

Lab’ys v. Sandoz, Inc., 566 F.3d 1282, 1293 (Fed. Cir. 2009) (en 

banc)); see also Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 

1546, 1552 n.9 (Fed. Cir. 1989) (“One who does not infringe an 

independent claim cannot infringe a claim dependent on (and thus 

containing all the limitations of) that claim.”). Accordingly, 

direct infringement of the Asserted Claims requires direct 

infringement of Claims 1 and 23, which describe the process used 

to produce the claimed products. ITW does not dispute this. See

Pl.’s Mot., ECF 98 at 10 (“Admittedly, a product-by-process claim 

is only infringed if all of the steps of the process are 

performed.” (citations omitted)). 

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What ITW does dispute is that the “single entity” rule 

described in Akamai Technologies, Inc. v. Limelight Networks, 

Inc., 797 F.3d 1020 (Fed. Cir. 2015) (en banc) (“Akamai V”), and 

other cases, applies to product-by-process claims. The rule 

establishes that “[d]irect infringement under § 271(a) occurs 

where all steps of a claimed method are performed by or 

attributable to a single entity.” Id. at 1022 (citation omitted). 

It is undisputed that this rule applies to method or process 

claims. See id. Thus, ITW must prove that a single entity directly 

infringes Claims 1 and 23. 

“Where more than one actor is involved in practicing the steps 

[of a claimed method], a court must determine whether the acts of 

one are attributable to the other such that a single entity is 

responsible for the infringement.” Id. “The performance of method 

steps is attributable to a single entity” when: (1) “that entity 

‘directs or controls’ others’ performance,” or (2) “when the actors 

‘form a joint enterprise.’” Eli Lilly & Co. v. Teva Parenteral 

Meds., Inc., 845 F.3d 1357, 1364 (Fed. Cir. 2017) (quoting Akamai 

V, 797 F.3d at 1022). ITW pursues only the “direction or control” 

theory, asserting that Valid directly infringes the Asserted 

Claims as well as Claims 1 and 23 as a single entity by performing 

some of the steps itself and directing or controlling the 

performance of the remaining steps by Chicago Laminating. 

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As an initial matter, Chicago Laminating argues that under 

the single entity rule, ITW must show that Chicago Laminating, as 

the accused infringer, directs or controls Valid’s performance, 

not the other way around. I disagree. All the single-entity rule 

requires is that “the acts of one [actor] are attributable to 

[another actor] such that a single entity is responsible for the 

infringement.” Akamai V, 797 F.3d at 1022. ITW’s theory is that 

Valid is the single entity who directly infringes the Asserted 

Claims, and that this underlying direct infringement gives rise to 

Chicago Laminating’s indirect infringement. Consequently, Valid’s 

direction or control of Chicago Laminating’s performance of 

certain steps is relevant to whether the Asserted Claims are 

infringed. 

Direction or control may be shown where the direct infringer 

“acts through an agent (applying traditional agency principles) or 

contracts with another to perform one or more steps of a claimed 

method.” Id. at 1023. It may also be found “when an alleged 

infringer conditions participation in an activity or receipt of a 

benefit upon performance of a step or steps of a patented method 

and establishes the manner and timing of that performance.” Id.; 

see Int’l Bus. Machs. Corp. v. Booking Holdings Inc., 775 F. App’x 

674, 678–79 (Fed. Cir. 2019) (calling these the “agency test” and 

“benefit test,” respectively). The Federal Circuit has cautioned 

that, in addition to these tests, “other factual scenarios may 

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arise which warrant attributing others’ performance of method 

steps to a single actor.” Akamai V, 797 F.3d at 1023. ITW does not 

discuss these tests or expressly pursue one, but it focuses its 

discussion on an apparent contractual relationship between Valid 

and Chicago Laminating. 

As the patentee, ITW bears the burden to “supply sufficient 

evidence to prove that the accused product or process meets every 

element or limitation of a claim.” Rohm & Haas Co. v. Brotech 

Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). In this context, that 

means that ITW must show, for each step, either that Valid 

performed the step, or that Valid directed Chicago Laminating’s 

performance of the step. According to ITW, it satisfies this burden 

as to the steps not performed by Valid by pointing to the fact 

that “Valid asks Chicago Laminating to laminate Valid’s sheets of 

substrate with metallized film according to certain specifications 

and that Chicago Laminating fulfills Valid’s orders.” Def.’s Resp. 

to PSMF, ECF 107 ¶ 11. That statement alone, however, would not 

permit a reasonable factfinder to conclude that Valid directed or 

controlled Chicago Laminating’s performance of the following 

claimed steps: “continuously feeding a supply of generally flat 

sheets of a core substrate layer of a single material to a 

lamination nip,” “continuously feeding an intermediate film or 

foil layer to the lamination nip,” ’266 Patent at Claim 1 col. 

8:31–35, “feeding the intermediate film or foil layer to a 

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lamination nip,” or “feeding a sheet of the core substrate layer 

to the lamination nip,” id. at Claim 23 col. 11:7–10. ITW offers 

no evidence suggesting that Valid’s request that Chicago 

Laminating “laminate” Valid’s substrate somehow implies the 

performance of these steps, and to so conclude would require 

speculation.3 While Akamai V undoubtedly “broaden[ed] the 

circumstances in which others’ acts may be attributed to an accused 

infringer to support direct-infringement liability for divided 

infringement,” Mankes v. Vivid Seats Ltd., 822 F.3d 1302, 1305 

(Fed. Cir. 2016), it is still not enough to point to arms-length 

cooperation without evidence of direction or control over the 

performance of each claimed step. 

Nor is it sufficient to offer evidence that Chicago Laminating 

in fact performed the method steps that Valid did not perform, see

PSMF ¶¶ 24–28, 30–34--something Chicago Laminating disputes--

because, again, that does not speak to Valid’s direction or control 

over Chicago Laminating’s performance of the steps. The Federal 

Circuit has observed that even where “a third party actually 

performs some of the designated steps, . . . control or direction 

3 And though ITW has asked that I decide the cross-motions for 

summary judgment without claim construction, even were I to proceed 

to claim construction, ITW does not seek construction of any of 

the quoted terms. As to one of the terms, it argues that it should 

be afforded its plain meaning and that no construction is 

necessary. See ITW’s Responsive Claim Construction Brief, ECF 56 

at 4–5. The terms contain more detail than would be needed if 

simply instructing one performing the steps to “laminate.” 

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of the performance of that step by the accused infringer is 

required.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 

1329 (Fed. Cir. 2010); see also Int’l Bus. Machs. Corp. v. 

Priceline Grp., 271 F. Supp. 3d 667, 683 (D. Del. 2017) (concluding 

plaintiff “has failed to adduce evidence from which a reasonable 

factfinder could find that Defendants direct or control” 

performance of the relevant method step by third parties, even 

where evidence established the third parties actually performed 

those steps), aff’d sub nom. Int’l Bus. Machs. Corp., 775 F. App’x 

674. 

Furthermore, if ITW means to establish that Chicago 

Laminating acted as Valid’s agent in performing method steps, it 

fails to do so because it does not identify or discuss any relevant 

agency principles. See Akamai V, 797 F.3d at 1023 (noting that 

application of traditional agency principles is required for 

finding that agent’s acts can be attributed to principal as single 

entity). And to the extent ITW opts for the “benefit test,” it 

fails there too because “‘mere guidance or instruction is 

insufficient,’” Travel Sentry, Inc. v. Tropp, 877 F.3d 1370, 1379 

(Fed. Cir. 2017) (quoting Eli Lilly, 845 F.3d at 1366), and that 

is at most what ITW can establish on the evidence submitted. 

ITW has thus failed to demonstrate direct infringement of 

Claims 1 or 23--and therefore the Asserted Claims--by a single 

entity. “It is well settled that there can be no inducement or 

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contributory infringement absent an underlying direct 

infringement.” Novartis Pharms. Corp. v. Eon Labs Mfg., Inc., 363 

F.3d 1306, 1308 (Fed. Cir. 2004) (citations omitted). ITW’s 

infringement claims accordingly fail and summary judgment of noninfringement is warranted. 

Finally, ITW suggests that Chicago Laminating has admitted to 

infringement in its Final Invalidity Contentions. See Def.’s Final 

Invalidity Contentions, Pl.’s Exh. F, ECF 97-1 at 32–41. But as 

Chicago Laminating makes clear, its invalidity contentions start 

from the premise that it has infringed the Asserted Claims, and 

proceed to argue that the infringement does not matter because the 

claims are invalid. See id. at 33 (“[Chicago Laminating’s] Final 

Unenforceability and Invalidity Contentions are based on the 

apparent construction accorded by ITW in its Initial Infringement 

Contentions and do not reflect [Chicago Laminating’s] positions or 

contentions regarding the proper construction of the asserted 

claims.”); id. at 34 (“[Chicago Laminating’s] Product does not 

infringe claims 9 and 28 under a correct claim interpretation and 

proper application of indirect infringement. To the extent ITW 

incorrectly interprets claims 9 and 28 and improperly applies 

indirect infringement to assert infringement of [Chicago 

Laminating’s] Product, then under ITW’s claim interpretations 

claims 9 and 28 are anticipated and/or rendered obvious.”). Such 

arguments in the alternative are permissible and do not constitute 

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an admission. See Ocean Innovations, Inc. v. Archer, 145 F. App’x 

366, 371 n.3 (Fed. Cir. 2005) (“Before the district court, 

[defendant’s] position was that the [product] did not infringe, 

but that if the [product] was found to infringe, then the ’833 

patent is invalid under [35 U.S.C.] section 102(g) on the basis of 

prior invention of the [product]. There is nothing inconsistent in 

advancing this alternative theory for non-liability.”); Kroy IP 

Holdings, LLC v. AutoZone, Inc., No. 2:13-cv-888-WCB, 2014 WL 

7463099, at *4 (E.D. Tex. Dec. 30, 2014) (“[Defendant] is entitled 

to assert that the accused rewards program does not infringe, while 

at the same time asserting in the alternative that if the program 

is found to infringe, an earlier version of the program would 

anticipate [plaintiff’s] patent.”). 

IV. 

 For the foregoing reasons, ITW’s motion for summary judgment 

is denied and Chicago Laminating’s motion for summary judgment is 

granted. 

ENTER ORDER:

_____________________________ 

 Elaine E. Bucklo

 United States District Judge 

Dated: July 6, 2023 

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