Tessenderlo Kerley, Inc. v. Or-Cal, Inc

Filing 116

TENTATIVE CLAIM CONSTRUCTION ORDER re 104 Claim Construction Statement filed by Tessenderlo Kerley, Inc.. Signed by Judge Alsup on July 26, 2012. (whalc1, COURT STAFF) (Filed on 7/26/2012)

1
2
3
4
5
6

IN THE UNITED STATES DISTRICT COURT

7
FOR THE NORTHERN DISTRICT OF CALIFORNIA
8
9
TESSENDERLO KERLEY, INC.,

11
For the Northern District of California

United States District Court

10

12
13
14

Plaintiff,
v.

TENTATIVE CLAIM
CONSTRUCTION ORDER

OR-CAL, INC.,
Defendant.
/

15
16
17

No. C 11-04100 WHA

INTRODUCTION
The parties may critique this tentative claim construction order at the August 8 hearing.

18

In this patent infringement action involving horticulture technology, the parties seek construction

19

of three terms found in two asserted patents.

20

STATEMENT

21

Plaintiff Tessenderlo Kerley, Inc. and defendant Or-Cal, Inc. are competing

22

manufacturers of sun protectants for crops. TKI asserts infringement of United States

23

Patents 6,110,867 and 6,464,995, both of which claim methods for utilizing finely divided

24

particulate materials to enhance horticulture.

25

The ’867 patent — filed in 1997, issued in August 2000, and reissued after reexamination

26

in 2006 — disclosed examples of using calcined kaolin, a particulate material, to increase carbon

27

dioxide assimilation in a few different plant species. Claim 1 is a representative claim (col. 9;

28

reexamination certificate col. 1):

1

A method for enhancing the photosynthesis of
horticultural crop by increasing carbon dioxide
assimilation of said horticultural crop which
comprises

2
3

applying to the surface of said horticultural
crop an effective amount of one or more
highly reflective particulate materials, said
particulate materials

4
5
6

being finely divided, and

7

wherein the particles as applied
allow for the exchange of gases on
the surface of said crop and

8
9

the finely divided particulate
materials have a median individual
particle size below about 3 microns.

11
For the Northern District of California

United States District Court

10

The limitation of “increasing carbon dioxide assimilation” was added during reexamination to

12

overcome a prior-art reference, Moreshet et al., “Effect of Increasing Foliage Reflectance on

13

Yield, Growth, and Physiological Behavior of a Dryland Cotton Crop,” 19 CROP SCIENCE 863

14

(1979).

15

The ’995 patent, a related patent arising out of the same parent application as the ’867

16

patent, also claimed the use of particulate materials to enhance horticultural effects via a similar

17

mechanism. Claim 23 is a representative claim (col. 12):

18

20

A method for enhancing the horticultural effect of
horticultural substrates selected from the group
consisting of fruits, vegetables, trees, flowers,
grasses, roots, and landscape and ornamental plants
which comprises

21

applying a slurry comprising water,

22

a surfactant, and

23

one or more particulate materials, selected
from the group consisting of calcium
carbonate, hydrous kaolin, calcined kaolin
and mixtures thereof,

19

24
25
26

to the surface of said substrate to form a
membrane comprised of one or more
particulate layers and the surfactant,

27
28

said layers comprising one or more
particulate materials,
2

1

said particulate materials being finely
divided, and

2
wherein said membrane allows for the
exchange of gases on the surface of said
substrate.

3
4

TKI alleges that Or-Cal infringed by manufacturing sun protectant products with calcium
5
carbonate particles.
6
ANALYSIS
7
Courts must determine the meaning of disputed claim terms from the perspective of a
8
person of ordinary skill in the pertinent art at the time the patent was filed. Chamberlain Group,
9
Inc. v. Lear Corp., 516 F.3d 1331, 1335 (Fed. Cir. 2008). While claim terms are generally given
10
claim construction analysis. Phillips v. AWH Corp., 415 F.3d 1303, 1312–15 (Fed. Cir. 2005).
For the Northern District of California

United States District Court

their ordinary and customary meaning, the patent’s specification is always highly relevant to the
11
12
Finally, courts also should consider the patent’s prosecution history, which “can often inform the
13
meaning of the claim language by demonstrating how the inventor understood the invention and
14
whether the inventor limited the invention in the course of prosecution, making the claim scope
15
narrower than it would otherwise be.” Phillips, 415 F.3d at 1317 (internal quotations omitted).
16
Where the patentee has unequivocally disavowed a certain meaning to obtain his patent, the
17
doctrine of prosecution disclaimer attaches and narrows the ordinary meaning of the claim
18
congruent with the scope of the surrender. Omega Engineering, Inc, v. Raytek Corp., 334 F.3d
19
1314, 1324 (Fed. Cir. 2003).
20
These components of the intrinsic record are the primary resources in properly construing
21
claim terms. Although courts have discretion to consider extrinsic evidence, including
22
dictionaries, scientific treatises, and testimony from experts and inventors, such evidence is “less
23
significant than the intrinsic record in determining the legally operative meaning of claim
24
language.” Phillips, 415 F.3d at 1317.
25
1.

THE ’867 PATENT: “EFFECTIVE AMOUNT.”

26
The term, “effective amount,” is found in independent claims 1 and 38 of the ’867 patent.
27
The parties dispute whether the term should be construed broadly to mean any desired amount
28
(Or-Cal’s position) or more narrowly to mean the amount sufficient to improve photosynthesis
3

1

by increasing carbon dioxide uptake (TKI’s position). Neither party has explained why their

2

proposed construction would be relevant to issues of invalidity or infringement, and this Court

3

fails to see why this dispute matters. Nonetheless, the Court will construe the disputed term, as

4

requested.

5
6
7
8

The ’867 patent specification, at two different points, defines “effective amount” as the
amount sufficient to enhance photosynthesis (col. 4):
The surface of said horticultural crop is treated with
an amount of one or more highly reflective
particulate materials that is effective in enhancing
photosynthesis of the horticultural crop.

9
*

*

*

11
For the Northern District of California

United States District Court

10

12
13

The the [sic] particle treatment may be applied as
one or more layers of finely divided particulate
material. The amount of material applied is within
the skill of one of ordinary skill in the art. The
amount will be sufficent [sic] to improve
photosynthesis of the crop to which these particles
are applied.

14
The prosecution history also supports defining “effective amount” narrowly to mean the amount
15
sufficient to enhance photosynthesis. During reexamination, the PTO examiner’s “Statement of
16
Reasons for Patentability” stated that “the only proper interpretation of ‘an effective amount’ is
17
an amount that is effective to enhance photosynthesis of horticultural crops by increasing carbon
18
dioxide assimilation of said crops” (Dkt. No. 108-6 at 7).
19
Or-Cal actually agrees that the “effective amount” is the amount that produces the
20
desired result of enhancing photosynthesis by increasing carbon dioxide assimilation (Or-Cal Br.
21
14–15). Or-Cal’s only argument in opposition of TKI’s proposed construction is that it would be
22
redundant because the limitation of “enhancing photosynthesis by increasing carbon dioxide
23
assimilation” is specified elsewhere in the claim. Or-Cal’s redundancy argument is not enough
24
to reject TKI’s proposed construction, which is admittedly accurate. A purpose of claim
25
construction is to remove ambiguity. Here, construing the term “effective amount” to mean Or26
Cal’s broader “desired result” would add ambiguity as to the patentee’s intended, narrower
27
meaning, which was “ the amount sufficient to enhance photosynthesis by increasing carbon
28
dioxide uptake.” Whether this is enabled by the disclosure is a matter for another day.
4

1

Accordingly, the term “effective amount” shall be construed to mean “an amount that is

2

sufficient to enhance photosynthesis of horticultural crops by increasing carbon dioxide

3

assimilation of said crops.”

4

2.

THE ’867 PATENT: “PARTICLES AS APPLIED ALLOW FOR
THE EXCHANGE OF GASES ON THE SURFACE OF SAID CROP.”

5
This term, “particles as applied allow for the exchange of gases on the surface of said
6
crop,” is found in independent claims 1 and 38 of the ’867 patent. TKI proposes the following
7
construction: “there is gas exchange on a treated surface which includes stomata and the
8
particles do not materially affect gas exchange such that stomatal conductance is not materially
9
reduced.” Or-Cal proposes the following construction: “the particles are applied in a manner
10
proposed constructions differ in three aspects: (1) the parties dispute whether the claimed
For the Northern District of California

United States District Court

that allows for transpiration without hindering passage of water vapor, oxygen and CO2.” The
11
12
particles have no affect on gas exchange versus, less restrictively, do not materially reduce gas
13
exchange, (2) the parties dispute whether the claimed particles reduce stomatal conductance, and
14
(3) the parties dispute whether the claimed particles must be applied to a surface with stomata.
15
These disputes are arguably relevant to invalidity contentions.
16
A.

Materially Reduce Gas Exchange.

17
The “allow for the exchange of gases” term means that the claimed particle treatment
18
does not materially reduce gas exchange on the crop. In the patent specification’s “Detailed
19
Description of the Invention” section, the patentee expressly stated that application of the
20
particles does not materially reduce gas exchange:
21
22
23
24
25
26

[T]his invention relates to horticultural crops
wherein the surface of said crop is treated with one
or more particulate materials. This treatment
should not materially affect the exchange of gases
on the surface of said crop. The gases which pass
through the particle treatment are those which are
typically exchanged through the surface skin of
living plants. Such gases typically include water
vapor, carbon dioxide, oxygen, nitrogen and volatile
organics.

27

(col. 4) (emphasis added). Moreover, the prosecution history also supports this interpretation.

28

During reexamination, the patentee argued that his invention was distinguishable over the prior
5

1

art Moreshet reference because his claimed invention “allow[ed] for the exchange of gases from

2

the plant surface” whereas the particles in Moreshet reduced carbon dioxide uptake, reduced

3

transpiration of water vapor, and reduced stomatal conductance (Dkt. No. 108-5). Logically, the

4

particles used in Moreshet still allowed for some gas exchange because the plants would have

5

died otherwise. Therefore, the patentee’s argument on reexamination, which the PTO examiner

6

ultimately accepted, was that the particles in Moreshet materially reduced gas exchange (but still

7

allowed some gas exchange) while the claimed ’867 invention did not materially reduce gas

8

exchange (Dkt. No. 108-6).

inject ambiguity into the claim because the patent does not define or describe what reduction is

11
For the Northern District of California

In its opposing brief, Or-Cal argues that adding the “materially reduce” qualifier would

10

United States District Court

9

or is not material. While this may be true, it is nonetheless possible that one of ordinary skill in

12

the art would have already understood what a material effect on gas exchange meant. For

13

example, a skilled artisan may have understood that a ten percent decrease in carbon dioxide

14

exchange rate would have adversely affected horticultural effects (such as “improved color,

15

smoother fruit surface, increased soluble solids, e.g., sugars, acidity, etc., reduced bark and fruit

16

cracking, reduced plant temperature and reduced russetting) but that a one percent decrease

17

would not have. This is an issue of patent validity that should be argued in the context of

18

enablement, indefiniteness, and written description; but this issue does not change the patentee’s

19

express, unambiguous definition of the term. Because the patent’s definition is unambiguous,

20

this is not a situation where a claim should be construed to sustain their validity. See Phillips v.

21

AWH Corp., 415 F.3d 1303, 1327–28 (Fed. Cir. 2005) (en banc).

22
23

B.

Interference with Stomatal Function.

The “allow for the exchange of gases” term also means that stomatal conductance is not

24

materially reduced. This is strongly supported by the prosecution history. During

25

reexamination, in order to distinguish the prior art Moreshet reference, the patentee expressly

26

argued that the ’867 invention did “not interfere with stomatal function” and contrasted this

27

characteristic with the Moreshet reference, where the particles “interfere[d] with stomatal

28

function resulting in reduced CO2 uptake” (Dkt. No. 108-5). The PTO examiner also noted this
6

1

distinction in an interview summary: “[the patentee] showed evidence of an experiment in

2

which Moreshet’s 25% kaolin reduced CO2 uptake and interfered with stomatal functions,

3

whereas 6% kaolin did not interfere with stomatal function” (Dkt. No. 108-7). In his “Statement

4

of Reasons for Patentability,” the PTO examiner again noted that the invention’s effect on

5

stomatal function was a distinguishing aspect: “[T]he experimental result reported by [the

6

patentee] demonstrated that the 25% kaolin as aplied [sic] to the apple leaves interfered with

7

stomatal function resulting in reduced carbon dioxide uptake” (Dkt. No. 108-6 at 7). Thus, the

8

intrinsic record is clear that “allow for exchange of gases” means that the claimed particles did

9

not materially reduce stomatal conductance.1
C.

11
For the Northern District of California

United States District Court

10

Application to a Surface with Stomatas.

“[T]he surface of said crop” term must mean at least one surface with stomatas. As an

12

initial matter, it is undisputed that gas exchange in crops occurred on a surface with stomatas

13

(Or-Cal Br. 3; see also col. 7). The ’867 patent claims a method wherein the particles are

14

“apply[ed] to the surface of said horticultural crop” and “wherein the particles as applied allow

15

for the exchange of gases on the surface of said crop” (col. 9). The use of a definitive article,

16

‘the,’ in the same claim sentence strongly suggests that the particles are applied to the surface

17

where gas exchange occurs. Therefore, the particles are necessarily applied to a surface with

18

stomatas.

19

The prosecution history also supports this interpretation. As discussed, during

20

reexamination, the patentee expressly differentiated his invention from the prior art Moreshet

21

reference by arguing that his method of applying particles “allow[ed] for the exchange of gases

22

from the plant surface” whereas the particle coating in Moreshet reduced water transpiration,

23

reduced carbon dioxide, and reduced stomatal conductance (Dkt. No. 108-5). The patentee

24

presented experimental results showing that in Moreshet, where 25% kaolin was applied to all

25

surfaces of apple leaves by applying the spray “over the top of the canopy from a standard,

26

tractor-mounted boom sprayer at a rate of approximately 400 liters/ha,” there was reduced gas

27
28

1

The patentee used the terms “stomatal conductance” and “stomatal function” interchangeably (see
Dkt. No. 108-5 at 5, 7).

7

1

exchange by the stomatas (Dkt. Nos. 108-7, 78-1). For Moreshet’s 25% kaolin treatment to

2

reduce gas exchange, including carbon dioxide uptake, the kaolin must have been applied to a

3

surface with stomata; otherwise, the kaolin would not have interfered with gas exchange. With

4

these experimental results, the patentee argued, and the PTO examiner agreed, that the ’867

5

invention was an improvement over Moreshet because 6% kaolin had improved gas exchange

6

compared to 25% kaolin when applied to all surfaces of leaves, including a surface with stomata.

7

Or-Cal’s strongest counterargument is from the ’867 patent’s specification, where there is

8

language that the claimed particles do not have to be applied to the under surface of a crop

9

(col. 4)(emphasis added):

11
For the Northern District of California

United States District Court

10

12
13
14
15
16
17

The surface of said horticultural crop is treated with
an amount of one or more highly reflective
particulate materials that is effective in enhancing
photosynthesis of the horticultural crop. The
treatment coverage of said crop is within the skill of
the ordinary artesian [sic]. Less than full crop
coverage is within the scope of this invention and
can be highly effective, for example, neither the
under surface of the crop (that which is not exposed
directly to the source of light) need be treated by
the method of this invention nor must the upper
surface of the crop be completely covered; although
full substrate coverage can provide additional
benefits such as effective disease control, smoother
fruit surface, reduced bark and fruit cracking, and
reduced russeting.

18
However, Or-Cal’s argument — that the above-quoted passage means that the claimed particles
19
need not be applied to a surface with stomata — is unpersuasive. True, it is undisputed that the
20
under surface of some crops (such as apples and peaches) have more stomata than the upper
21
surface. But importantly, Or-Cal’s own expert admits that even these crop can have some
22
stomata on the upper surface (Jubert Decl. ¶¶ 20–21). Moreover, Or-Cal’s expert also admits
23
that some plants, such as bean plants (which is arguably encompassed by the patent), have
24
similar amounts of stomata on both surfaces (Jubert Decl. ¶ 20). Therefore, simply because the
25
specification states that the claimed particles do not need to be applied to the under surface, it
26
does not necessarily follow that the particles do not need to be applied to a surface with stomata.
27
Accordingly, the term “the particles as applied allow for the exchange of gases on the
28
surface of said crop” shall be construed as “there is gas exchange on a treated surface with
8

1

stomata and the particles do not materially reduce gas exchange such that stomatal conductance

2

is not materially reduced.”

3

3.

THE ’995 PATENT: “SAID MEMBRANE ALLOWS FOR THE
EXCHANGE OF GASES ON THE SURFACE OF SAID SUBSTRATE.”

4
Both parties agree that construction of the ’995 patent term, “said membrane allows for
5
the exchange of gases on the surface of said substrate,” should mimic the already-construed ’867
6
term, “particles as applied allow for the exchange of gases on the surface of said crop.”
7
Therefore, the ’995 patent term shall also be construed to mean “there is gas exchange on a
8
treated surface with stomata and the particles do not materially reduce gas exchange such that
9
stomatal conductance is not materially reduced.”
10
The parties may critique the above tentative claim constructions at the August 8 hearing.
For the Northern District of California

United States District Court

CONCLUSION
11
12
This will be an opportunity for the parties to focus solely on their most cogent critique, not to
13
rehash every point made in the briefs.
14
15
16
Dated: July 26, 2012.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

17
18
19
20
21
22
23
24
25
26
27
28
9