Quest Integrity USA LLC v. Clean Harbors Industrial Services Inc.

Filing 137

MEMORANDUM ORDER re: claim construction. Signed by Judge Sue L. Robinson on 6/28/2016. Associated Cases: 1:14-cv-01482-SLR, 1:14-cv-01483-SLR(nmfn)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
QUEST INTEGRITY USA, LLC,

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)
Plaintiff,

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v.

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CLEAN HARBORS INDUSTRIAL
SERVICES, INC.,

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)

)
)
)

Defendant.

QUEST INTEGRITY USA, LLC,
Plaintiff,

)
)

)
)
)

v.

Civ. No. 14-1482-SLR

Civ. No. 14-1483-SLR

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COKEBUSTERS USA INC.,
Defendant.

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)

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MEMORANDUM ORDER
At Wilmington this 28th day of June, 2016, having heard argument on, and
having reviewed the papers submitted in connection with, the parties' proposed claim
construction;
IT IS ORDERED that the disputed claim language of U.S. Patent No. 7,542,874
("the '874 patent") shall be construed consistent with the tenets of claim construction set
forth by the United States Court of Appeals for the Federal Circuit in Phillips v. AWH

Corp., 415 F.3d 1303 (Fed. Cir. 2005), as follows:

1. "Bend:" 1 "A curved section of tubing." The specification explains that "a
furnace is generally comprised of several hundred to several thousand feet of
serpentine tubing that is characterized by straight tube segments ... interconnected by
angled bends .... " (1 :26-30) Moreover, the "present invention is directed to a furnace
tube inspection system for a furnace that comprises a plurality of tube segments
connected by a plurality of bends, such as the furnace shown in [figures] 1A-1 C." (4:2730)

10

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20

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I RECIEVER
30
(Figure 1C) Plaintiff criticizes the construction, 2 arguing that the angle of the bend is not
dictated by the specification. The adopted construction does not require a particular
angle; indeed, the "bends" shown in figure 1C above may be said to be at a 90° angle or
180° angle. To the extent plaintiff seeks to capture a particular type of connection of the

1

2

Found in claims 1, 11, 24, 33, 37, and 40.
Proposed by defendants and adopted by the court.

2

tube ends - "mule ears" (shown below), which internally present two 90° square turns in
immediate succession - the court concludes that the specification does not describe
these sharp turns, characterized by a lack of roundness.

(Civ. No. 14-1483, D.I. 55 at§ 48) 3
2. "Partition said inspection data at a plurality of data markers:" 4 "Divide
the inspection data into subsets of smaller size, each of which begins and ends with a
data marker." 5 "Partitioning said inspection data at said data markers:" 6 "Dividing
the inspection data into subsets of smaller size, each of which begins and ends with a
data marker." "Partitioning said inspection data at said bends:" 7 "Dividing the
inspection data into subsets of smaller size, each of which begins and ends with a
bend." The specification explains that
the inspection data and/or sensor data collected from the furnace may be
analyzed to generate a plurality of data markers each of which identifies a
physical feature of the furnace. The inspection data is then partitioned at

3

Extrinsic evidence. "Curved" means "to have or take a turn, change, or deviation
from a straight line or course or from a level surface typically with a rounded gradual
effect and without sharp breaks or angularity." Merriam-Webster Unabridged (2016).
4 Found in claims 1 and 11.
5 The court adopts defendants' proposed construction. Plaintiff proposed "dividing the
inspection data into subsets of smaller size at a plurality of data markers," which
construction only differs as to the "plurality of data markers" language.
6 Found in claims 24 and 40.
7
Found in claim 33.

3

the data markers so as to correlate the inspection data to the physical
geometry (e.g., the appropriate tube segments) of the furnace.
(4:34-40) It follows from this explanation that each "subset" would begin and end at a
data marker. 8
3. "Correlate said inspection data to said physical geometry of said
furnace:" 9 "To put in relation the inspection data to the arrangement of the tube

segments in the furnace." 10 "Correlate said inspection data to an appropriate one
of said tube segments of said furnace:" 11 "To put in relation the inspection data to

the appropriate one of the tube segments in the furnace." The specification explains
that the prior art furnace tube inspection systems were not able "to correlate the
inspection data collected from the furnace with the physical geometry of the furnace,"
because the inspection tool did not progress through the furnace at a constant rate.
This made it difficult "to identify the precise locations of the worn sections and/or hot
spots of the furnace." (1:65-2:19) The current invention uses a computer "to partition
the inspection data at the data markers so as to correlate the inspection data to the
appropriate tube segments of the furnace." (3:21-23; 4:37-40) Any type "of physical
features may ... be used to correlate the inspection data to the physical geometry of
the furnace." (4:43-57) The specification further explains that "[t]he inspection data
collected by the ultrasonic transducers may also be used to identify the locations of the

8

Plaintiff argued that the additional language was repetitive and potentially confusing to
a jury. The court is unable to discern at this juncture why the additional language in the
adopted construction would create confusion.
9 Found in claims 1, 11, and 40.
10
The court declines to construe "correlate" and "physical geometry" out of context as
requested by the parties.
11
Found in claims 24 and 33.

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bends of the furnace and, thus, assist in correlating the inspection data to the physical
geometry of the furnace." (5:29-32) The specification describes using "relational data"
(such as "a plurality of time intervals") in the storage device of the system that, along
with "inspection data," help in generating the data markers that identify the locations of,
e.g., furnace bends. (7:16-28; figures 3, 4, and 8) 12
4. "A furnace with a specified physical geometry:" 13 · 14 "Arrangement of tube
segments in the furnace." The specification explains that the inspection data is
correlated "to the physical geometry (e.g., the appropriate tube segments) of the
furnace." (4:37-40) Also, "the physical geometry of a furnace is not always consistent
such that either the wall thickness or the inside radius of the furnace may change from
one tube segment to another." (11 :5-8)

5. "Generate a display of at least a portion of said partitioned inspection
data arranged to represent said physical geometry of said tube segments:" 15 "To
create a visual representation of at least a portion of the inspection data to depict or
portray the arrangement of the tube segments." "Generating a display of at least a

portion of said partitioned inspection data arranged to represent said physical
geometry of said tube segments:" 16 "Creating a visual representation of at least a

portion of the inspection data to depict or portray the arrangement of the tube

12

Extrinsic evidence. "Correlate" is defined in the dictionary as "one of two related
things viewed in terms of its relationship to the other." Merriam-Webster Unabridged
(2016).
13 Found in claims 1, 11, and 40.
14
Having declined to construe "physical geometry" out of context, the court is left with
this limitation, which includes the term.
15 Found in claims 1 and 40.
16 Found in claims 11 and 24.

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segments." "Generating a two dimensional or three-dimensional representation of
at least a portion of said inspection data arranged to represent a physical
geometry of a plurality of said tube segments:" 17 "Creating a two dimensional or
three-dimensional visual representation of at least a portion of the inspection data to
depict or portray the arrangement of the tube segments." "Generating a twodimensional or three-dimensional representation of said inspection data collected
from a plurality of said tube segments, said data arranged to represent a physical
geometry of said tube segments:" 18 "Creating a two dimensional or threedimensional visual representation of the inspection data collected from a plurality of said
tube segments to depict or portray the arrangement of the tube segments." 19
6. The parties principally disagree on whether the limitations include "strip
charts." The specification explains that the inspection data is "partitioned at the data
markers so as to correlate the inspection data to the physical geometry (e.g., the
appropriate tube segments) of the furnace. It will also be seen that the inspection data
is displayed in a manner that enables the visual detection of problem areas within the
furnace." (4:35-42) The examples provided in the specification "illustrate different
approaches that may be used to correlate the inspection data to the physical geometry
of the furnace and display the inspection data in a manner that enables the visual
detection of problem areas within the furnace." (9:42-47)

17

18

19

Found in claim 33.
Found in claim 37.
The court declines to separately construe "represent."

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7. Example 1 of the specification describes certain strip charts, by reference to
figures 3 and 4. Figure 3 depicts the "wall thickness readings for each of the time
intervals ... plotted vertically across the height of the horizontal strips." The "various
wall thickness readings displayed on strip chart 300 are color-coded in accordance with
a color legend 302," which "wall thickness readings range from 0.15 inches (shown in
dark blue) to 0.35 inches (shown in dark red)." (10:8-14) In figure 4, "the inside radius
readings are plotted successively in time from left-to-right and bottom-to-top, and the
inside radius readings for each of the time intervals are plotted vertically across the
height of the horizontal strips." The "various inside radius readings displayed on strip
chart 400 are color-coded in accordance with a color legend 402," ranging "from 0.00
inches (shown in dark blue) to 5.00 inches (shown in dark red)." (10: 18-26) In figures 3
and 4, each horizontal strip represents a sixty second period of time. (10:36-37)
Assuming a speed of the inspection tool of 2 ft/sec, "each horizontal strip displays the
readings collected from 120 feet of furnace" tubing. (10:36-40) A data analyst identifies
the locations of the furnace bends by analyzing the strip chart. Specifically, the location
of the bends "may be identified by visually detecting one or more 'data clues' on the
strip charts," including
an increase in the variation of the wall thickness readings and/or inside
radius readings within a particular time interval (which will be depicted as
different colors across the height of a horizontal strip) and/or a decrease in
the number of wall thickness readings and/or inside radius readings within
a particular time interval (which will be depicted as white spaces or gaps
across the height of a horizontal strip).
(10:48-57) After identifying and marking the bends, the computer is programmed to
generate the data markers and mark the tube segments. "The various readings are
thus partitioned at the data markers to thereby correlate the readings to the appropriate

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tube segments of the furnace." (10:58-67) The data analyst may also use "a
mechanical drawing of the physical layout of the furnace" and "the known lengths of the
various tube segments" to help identify the bends or ends of straight tube segments.
(11: 1-19) Using the strip charts, the analyst can determine if any tube segments are
flawed and should be repaired or replaced. (11 :20-35) The specification concludes
"that strip charts 300 and 400 are merely examples of the types of displays that may be
used to visually detect problem areas within the furnace." After "generation of the data
markers, the wall thickness readings and/or inside radius readings could be displayed
as a stacked set of bars wherein each bar represents one tube segment of the furnace"
or "in a three-dimensional format in which the structure of the tube segments matches
the actual physical geometry of the furnace." (11 :36-48)
8. In example 2, the computer generates the chart shown in figure 5, "in which
all of the wall thickness readings for a plurality of time intervals are plotted across a
plurality of vertical bars. Each vertical bar displays the wall thickness readings from a
single tube segment." In example 3 and figure 6, "all of the wall thickness readings for a
plurality of time intervals are plotted across a plurality of vertical bars. Similar to the
chart of [figure] 5, each vertical bar displays the wall thickness readings from a single
tube segment." In both of these examples, "the tube segments are positioned in their
proper orientation (but with the connecting bends removed)."

(11 :52-12:55)

9. During prosecution, the independent claim was amended in April 2008 20 to
recite:
A system for displaying inspection data collected from a furnace with a
specified physical geometry, said system comprising:
20

After two prior amendments.

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a storage device for storing said inspection data; and
a computer programmed to:
partition said inspection data at a plurality of data markers
each of which identifies a location of a physical feature of said furnace so
as to correlate said inspection data to said physical geometry of said
furnace;
generate a display of said partitioned inspection data
arranged to represent said physical geometry of said furnace to
thereby enable visual detection of problem areas within said furnace; and
wherein said inspection data is collected by one or more devices
selected from the following group: an ultrasonic transducer, a laser
profilometer, and combinations thereof.
(D. I. 136 at JA268) (emphasis added) The patent office rejected such claim as obvious
in view of the prior art, U.S. Patent No. 6,359,434 ("Winslow") and U.S. Patent No.
6,978,690 ("Van der Heide"). The patentee distinguished Winslow arguing that:
Winslow is directed to approximating the location of defects in a
water pipeline with respect to joints within that pipeline. The physical
geometry of the water pipeline is not known and, as such, the defects are
not correlated to the actual physical geometry of the pipeline. Rather the
defects are merely correlated to detected pipe joints of the water pipeline
in order to provide an approximate location of such defects. Indeed,
because the segments of a water pipeline are not generally stacked, the
location of a defect in a particular segment in relation to the location of a
defect in another segment is not instructive of a global problem within the
water pipeline. As such, the claimed invention would not be necessary to
the detection of defects in a water pipeline. By contrast, in the furnace
tube inspection system and method of the present invention, the collected
inspection data is displayed such that the data is arranged to represent
the known physical geometry of the furnace. The collected inspection
data is not merely correlated to particular tube segments of the furnace.
Rather, the collected inspection data is displayed in such a manner that
the data is arranged to represent the actual physical geometry of the
furnace, which simplifies the detection of problems within a particular
region of the furnace.
(D.I. 136 at JA283-84) In December 2008, the patentee amended the claim to recite:

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A system for displaying inspection data collected from a furnace with a
specified physical geometry, wherein said furnace comprises a
plurality of tube segments interconnected by a plurality of bends so
as to allow stacking of at least a portion of said tube segments, said
system comprising:
a storage device for storing said inspection data; and
a computer programmed to:
partition said inspection data at a plurality of data markers
each of which identifies a location of a physical feature of said furnace so
as to correlate said inspection data to said physical geometry of said
furnace;
generate a display of at least a portion of said partitioned
inspection data arranged to represent said physical geometry of a
plurality of said tube segments and enable visual detection of a
problem area comprising one or more of said tube segments; and
wherein said inspection data is collected by one or more devices
selected from the following group: an ultrasonic transducer, a laser
profilometer and combinations thereof.
(D.I. 136 at JA372) (emphasis added) Addressing the examiner's continued rejection of
the claim as obvious in view of Winslow and Van der Heide, the patentee argued that:
In particular, attorney Carlson explained that the claimed invention was
directed to a system for displaying inspection data collected from a
furnace comprising a plurality of tube segments interconnected by a
plurality of bends to allow stacking of the tube segments, which
physical geometry is very different from that of a water pipeline as
disclosed in Winslow. Attorney Carlson pointed out that although
Winslow teaches the partitioning of inspection data, it does not teach or
suggest the display of partitioned inspection data that is arranged to
represent the physical geometry of plurality of tube segments of a furnace
and enable visual detection of a problem area comprising one or more of
the tube segments of the furnace.
(D.I. 136 at JA386-87) (emphasis added)
10. Winslow describes the prior art as using a remote field technique ("RFT")
measurement device to evaluate the wall thickness of water pipes. "As the

10

measurement device travels along a body of tube, the detector signal's phase and
amplitude are determined by the RFT instrument and are digitally recorded and/or
displayed in strip chart form." Figure 2 "is an example of such strip chart data." Figure
2 shows a chart of signal amplitude vs. distance and a chart of phase vs. distance, i.e.,
it is representing continuous data as determined by the RFT instrument. (Winslow,
1:67-2:4) Winslow provides a method for analyzing RFT data from a data file, including
"parsing the data file into pipe lengths, calculating a phase profile for the data points
within each pipe length, [and] locating potential defects in the pipe length using the
Phase Profiles .... " (Winslow, 4:36-44)
11. "A patentee may, through a clear and unmistakable disavowal in the
prosecution history, surrender certain claim scope to which he would otherwise have an
exclusive right by virtue of the claim language." Vita-Mix Corp. v. Basic Holding, Inc.,
581 F.3d 1317, 1324 (Fed. Cir. 2009) (citing Purdue Pharma LP. v. Endo Pharms. Inc.,
438 F.3d 1123, 1136 (Fed. Cir. 2006)). "Prosecution disclaimer does not apply to an
ambiguous disavowal." Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366,
1375 (Fed. Cir. 2008) (citations omitted). The claims of the '874 patent are each
directed to a furnace. The two claim amendments presented above focus the
"generating a display" step to the physical geometry of the inspected furnace. The
applicant distinguishes Winslow from the patent at bar, arguing that Winslow does not
teach "the display of partitioned data that is arranged to represent the physical geometry
of plurality of tube segments of a furnace and enable visual detection of a problem area
comprising one or more of the tube segments of the furnace." The focus of Winslow is
not the "generation of a particular visual representation," but data manipulation to

11

approximate the location of defects. The applicant's arguments focus on the particular
environment of Winslow, wherein the physical geometry of the water pipeline is not
known. In contrast, the applicant points out that the claim at bar is directed to a specific
environment (a furnace) with a certain physical geometry. The arguments in the
prosecution history do not use the words "strip chart," nor are strip charts described. 21
Moreover, the strip charts of example 1 contain the markings made by the data analyst,
effectively representing the location of the bends in the inspected furnace. The court
disagrees with plaintiff's representation of the prosecution history and concludes that
the applicant did not disclaim strip charts as described in example 1.
12. The court has provided a construction in quotes for the claim limitations at
issue. The parties are expected to present the claim construction consistently with any
explanation or clarification herein provided by the court, even if such language is not
included within the quotes.

>k:f .
United~

21

Judge

Plaintiff's citation to North American Container, Inc. v. Plastipak Packaging, Inc., 415
F.3d 1335 (Fed. Cir. 2005) is unhelpful. In that case, the Federal Circuit found
prosecution disclaimer when "the applicant distinguished his invention from the [prior
art] on the basis of the latter disclosing inner walls that are 'slightly concave"' in order to
overcome an obviousness rejection. "The inescapable consequence of such an
argument is that the scope of applicant's claims cannot cover inner walls that are
'slightly concave"' thus, "the scope of applicant's claims is also limited to inner walls of
the base portion with no concavity." Id. at 1345-46.
12