The ’541 patent is directed to a method and system for spraying a cosmetic makeup composition onto skin. Its claims recite a sprayable makeup composition comprising several components, including a synthetic wax component and a component containing micronized titanium dioxide. The claims require that those two components “exhibit a synergistic film-forming effect.”

The definition of the key contestable claim term came from a dictionary, as there was no intrinsic evidence to point to.

The district court permissibly looked to a dictionary to define the term “synergistic,” because the specification did not provide a meaning and no other sources of meaning were offered. The technical dictionary to which the district court was referred was Hawley’s Condensed Chemical Dictionary, which defines “synergism” as requiring two chemical components to have a “more than additive” effect... While we agree with the definition taken from the technical dictionary, we note that the district court’s definition, which requires that the synergistic film-forming effect must be “greater than the sum of the film-forming effect produced by each component,” could be misleading in the present context... In order to satisfy the requirement of synergism, the two components must achieve a result together that is greater than the result either achieves separately.

As to inoperability, Del's expert witness was adjudged remiss.

Del moved for summary judgment that the ’541 patent is inoperable and therefore invalid for lack of utility and enablement. A claim is inoperable when it contains a limitation that is impossible to meet. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1359 (Fed. Cir. 1999). Del argues that it is impossible for the claimed methods and systems to achieve the claimed synergistic film-forming effect. As evidence of its entitlement to summary judgment, Del submitted the report of its expert, Mr. John E. Wild. Classified objected that the report was inadmissible and that it would not support a finding that the ’541 patent is inoperable. The district court rejected all of Classified’s arguments and granted summary judgment of invalidity for inoperability based on the Wild report.

The principal flaw in the district court’s ruling is that Del did not meet its burden of showing prima facie entitlement to summary judgment. As the party with the burden of proof on invalidity, Del was required to make a prima facie showing of invalidity before the burden shifted to Classified to offer contrary evidence. See Optivus Tech., Inc. v. Loma Linda Univ. Med. Ctr., No. 05-1518, slip op. at 18 (Fed. Cir. Nov. 16, 2006). Del had to point to evidence that was sufficient, if uncontroverted, to entitle it to prevail as a matter of law. Saab Cars USA, Inc. v. United States, 434 F.3d 1359, 1369 (Fed. Cir. 2006); see also 11 James Wm. Moore, Moore’s Federal Practice § 56.13[1], at 56-135 (2006). Mr. Wild’s expert report on the tests conducted by the Hill Top company (“the Hill Top tests”) purports to show that the claimed method and system failed to produce a synergistic film-forming effect when compositions containing both synthetic wax and micronized titanium dioxide were applied to test surfaces. Those tests fall short of satisfying the applicable legal standard for two reasons.

First, the Hill Top tests measured film -forming ability in a way that could easily mask evidence of the operability of the claimed system and method.... Second, the Hill Top tests are insufficient to establish inoperability as a matter of law because there is no evidence that the control samples against which Hill Top assessed inoperability behaved like the control samples required by the properly construed claims.

Del argues that we should affirm the summary judgment of invalidity on the alternative basis that the ’541 patent is invalid because of anticipation, a theory on which the district court did not rule. Del relies on Mr. Wild’s expert report to close the gap between a prior art reference and Classified’s patent. For the reasons explained above, Mr. Wild’s report does not establish the presence or absence of a synergistic film-forming effect in either the prior art composition or the claimed composition. Accordingly, we reject Del’s anticipation argument based on the Wild report.

This was a non-precedential ruling.