Genesis Alkali Wyoming, LP v. Ciner Resources LP et al

Filing 78

REPORT AND RECOMMENDATIONS re Claim Construction. Please note that when filing Objections pursuant to Federal Rule of Civil Procedure 72(b)(2), briefing consists solely of the Objections (no longer than ten (10) pages) and the Response to the Objections (no longer than ten (10) pages). No further briefing shall be permitted with respect to objections without leave of the Court. (*Objections to R&R due by 10/28/2020). Signed by Judge Jennifer L. Hall on 10/14/2020. (ceg)

Case 1:18-cv-01879-LPS-JLH Document 78 Filed 10/14/20 Page 1 of 16 PageID #: 965

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
GENESIS ALKALI WYOMING, LP,
Plaintiff,
v.
CINER RESOURCES LP, et al.,
Defendants.

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C.A. No. 18-1879-LPS-JLH

REPORT AND RECOMMENDATION
Pending before the Court are the parties’ claim construction disputes related to terms in
United States Patent No. 6,589,497 (the “’497 Patent”). I held a Markman hearing on October 5,
2020. I recommend that the Court adopt the constructions set forth below.
I recommend that the claim terms with agreed-upon constructions be construed as follows:

1

2

3

4

Term
“a concentrated brine”

Court
“a brine with an increased amount of sodium
carbonate”

(Claim 1)
“separating the sodium carbonate “separating out the sodium carbonate
monohydrate crystals from the first monohydrate crystals suspended in the first
mother liquor”
mother liquor”
(Claim 1)
“separating the sodium carbonate
decahydrate crystals from the second
mother liquor”

“separating out the sodium carbonate
decahydrate crystals suspended in the second
mother liquor”

(Claim 1)
“the recovered mine brine”

Plain and ordinary meaning.

(Claim 1)

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Further, as announced at the hearing, I recommend that the following disputed claim terms
be construed as follows:
Term

Court

1

Steps 1(a) to 1(g)

Steps 1(a) to 1(g) must be performed
sequentially.

2

(Claim 1)
“first mother liquor”

3

(Claims 1, 8, 9)
“an evaporation-stripping step”

4

(Claim 1)
“the concentrated brine”

“concentrated brine produced in step 1(a)”

5

(Claim 1)
“the crystallizable solution”

“crystallizable solution produced in step 1(b)”

Not indefinite.

“a step including
stripping”

(Claim 1)

2

evaporation

and/or

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I.

LEGAL STANDARDS
A.

Claim Construction

The purpose of the claim construction process is to “determin[e] the meaning and scope of
the patent claims asserted to be infringed.” Markman v. Westview Instruments, Inc., 52 F.3d 967,
976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). When the parties have an actual dispute
regarding the proper scope of claim terms, their dispute must be resolved by the judge, not the
jury. Id. at 979. The Court only needs to construe a claim term if there is a dispute over its
meaning, and it only needs to be construed to the extent necessary to resolve the dispute. Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
“[T]here is no magic formula or catechism for conducting claim construction.” Phillips v.
AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005). But there are guiding principles. Id.
“The inquiry into how a person of ordinary skill in the art understands a claim term provides
an objective baseline from which to begin claim interpretation.” Id. at 1313. In some cases, the
ordinary meaning of a claim term, as understood by a person of ordinary skill in the art, is readily
apparent even to a lay person and requires “little more than the application of the widely accepted
meaning of commonly understood words.” Id. at 1314. Where the meaning is not readily apparent,
however, the court may look to “those sources available to the public that show what a person of
skill in the art would have understood disputed claim language to mean.” Innova/Pure Water, Inc.
v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). Those sources include
“the words of the claims themselves, the remainder of the specification, the prosecution history,
and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms,
and the state of the art.” Id.

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“The claims themselves provide substantial guidance as to the meaning of particular claim
terms.” Phillips, 415 F.3d at 1314. For example, “the context in which a term is used in the
asserted claim can be highly instructive.” Id. Considering other, unasserted claims can also be
helpful. Id. “For example, the presence of a dependent claim that adds a particular limitation
gives rise to a presumption that the limitation in question is not present in the independent claim.”
Id. at 1314-15.
In addition, the “claims must be read in view of the specification, of which they are a part.”
Id. at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
The specification “is always highly relevant to the claim construction analysis.” Id. (quoting
Vitronics, 90 F.3d at 1582). The specification may contain a special definition given to a claim
term by the patentee, in which case, the patentee’s lexicography governs. Id. at 1316. The
specification may also reveal an intentional disclaimer or disavowal of claim scope. Id. However,
“even when the specification describes only a single embodiment, the claims of the patent will not
be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope
using words or expressions of manifest exclusion or restriction.” Hill-Rom Servs., Inc. v. Stryker
Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (internal marks omitted).
Courts should also consider the patent’s prosecution history. Phillips, 415 F.3d at 1317.
It may inform “the meaning of the claim language by demonstrating how the inventor understood
the invention and whether the inventor limited the invention in the course of prosecution, making
the claim scope narrower than it would otherwise be.” Id. Statements made by a patentee or patent
owner during inter partes review may also be considered. Aylus Networks, Inc. v. Apple Inc., 856
F.3d 1353, 1362 (Fed. Cir. 2017).

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In appropriate cases, courts may also consider extrinsic evidence, which “consists of all
evidence external to the patent and prosecution history, including expert and inventor testimony,
dictionaries, and learned treatises.” Markman, 52 F.3d at 980.

For example, dictionaries,

especially technical dictionaries, can be helpful resources during claim construction by providing
insight into commonly accepted meanings of a term to those of skill in the art. Phillips, 415 F.3d
at 1318. Expert testimony can also be useful “to ensure that the court’s understanding of the
technical aspects of the patent is consistent with that of a person of skill in the art, or to establish
that a particular term in the patent or the prior art has a particular meaning in the pertinent field.”
Id.; see also Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331-32 (2015).
B.

Indefiniteness

Section 112 of Title 35 imposes a definiteness requirement on patent claims. 35 U.S.C.
§ 112(b) (requiring that the claims “particularly point[] out and distinctly claim[] the subject matter
which the inventor . . . regards as the invention”). “The primary purpose of the definiteness
requirement is to ensure that the claims are written in such a way that they give notice to the public
of the extent of the legal protection afforded by the patent, so that interested members of the public,
e.g., competitors of the patent owner, can determine whether or not they infringe.” All Dental
Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 774, 779-80 (Fed. Cir. 2002).
“A patent is invalid for indefiniteness if its claims, read in light of the specification
delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those
skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572
U.S. 898, 901 (2014). Definiteness, like claim construction, should be assessed from the viewpoint
of a person of ordinary skill in the art at the time the patent was filed, and it should be considered
in view of the patent’s specification and prosecution history. Id. at 908.

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The party asserting indefiniteness has the burden to prove it by clear and convincing
evidence. BASF Corp. v. Johnson Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017).
II.

THE COURT’S RULING
My Report and Recommendation regarding the disputed claim terms of the ’497 Patent

was announced from the bench at the conclusion of the hearing as follows:
I want to emphasize before I announce my decisions that
while I am not issuing a separate written opinion, we have followed
a full and thorough process before making the decisions I am about
to state. We have carefully reviewed the patent-in-suit. There was
also full briefing on each of the disputed terms. The parties
submitted their briefing in accordance with Chief Judge Stark’s
procedures, which are consistent with my procedures. Each side had
the opportunity to submit two briefs, and they were combined into
one joint claim construction brief incorporating all arguments; that
is, arguments from Plaintiff’s opening brief, Defendants’ answering
brief, Plaintiff’s reply, and Defendants’ sur-reply.
The parties’ joint claim construction brief and chart also
attached several exhibits. Those exhibits included portions of the
prosecution histories relied on by the parties as well as certain
extrinsic evidence. Neither party elected to put on live expert
testimony or submit any declarations, but the Court permitted
lengthy oral argument here today. All of that has been carefully
considered.
And to be clear, while my oral ruling will cite to the intrinsic
and extrinsic evidence that I conclude best supports my
recommended constructions, my failure to cite to other evidence
provided by the parties does not mean that I ignored or failed to
consider it. As I have stated, I have considered all of the arguments
and evidence cited by the parties.
Now as to my rulings. As an initial matter, I am not going
to read into the record my understanding of the general legal
principles of claim construction. I set forth the legal standards in
my opinion in 3Shape A/S v. Align Tech., Inc., C.A. No. 18-886LPS, 2020 WL 2188857, at *1-2 (D. Del. May 6, 2020), and I
incorporate that articulation by reference. That opinion also sets
forth the legal standard governing indefiniteness. Id. at *2. I also
incorporate that recitation by reference.
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Of course, a claim term is supposed to be given the meaning
that the term would have to a person of ordinary skill in the art in
question at the time of the invention. And I note here that neither
side has argued that any difference the parties may have in defining
a person of ordinary skill in the art impacts how I should resolve the
disputes before me today.
All of the disputed terms are found in U.S. Patent No.
6,589,497, entitled “Process for Preparing Soda Ash from Solution
Mined Bicarbonate Brines.” Claim 1 is directed to a particular
process to recover sodium carbonate monohydrate from a mine
brine obtained by dissolution of an underground ore body. The
claimed process has a number of required steps, which are set forth
in elements 1(a) through 1(g). 1

1

Claim 1 reads as follows:
1. A process to optimize the recovery of sodium carbonate monohydrate from a
mine brine derived by in situ dissolution of an underground sodium bicarbonate ore body,
the mine brine containing quantities of sodium bicarbonate comprising:
a. feeding the recovered mine brine to an evaporation-stripping step to concentrate
sodium content in the mine brine and to convert at least a portion of sodium
bicarbonate therein to sodium carbonate to form a concentrated brine;
b. neutralizing at least a portion of remaining sodium bicarbonate in the
concentrated brine to form additional sodium carbonate to form a crystallizable
solution having concentrations of sodium carbonate from which monohydrate
crystals of sodium carbonate will form upon evaporation of water from the
crystallizable solution;
c. feeding the crystallizable solution to a monohydrate crystallizing step in which
water is evaporated to form a slurry comprising sodium carbonate monohydrate
crystals and a first mother liquor containing dissolved sodium carbonate in a
concentration suitable as feed to a sodium carbonate decahydrate crystallization
step;
d. separating the sodium carbonate monohydrate crystals from the first mother
liquor to form a first mother liquor and to recover monohydrate crystals;
e. feeding at least a portion of the first mother liquor to a sodium carbonate
decahydrate crystallization step to crystallize sodium carbonate decahydrate
crystals as a slurry in a second mother liquor;
f. separating the sodium carbonate decahydrate crystals from the second mother
liquor; and
g. recycling the sodium carbonate decahydrate crystals to the monohydrate
crystallization step.
(ʼ497 Patent, Claim 1.)
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The parties have agreed on the construction of a number of
terms, and I recommend to Chief Judge Stark that he adopt those
agreed-upon constructions.
1.

Order of elements 1(a)-1(g)

The first dispute between the parties has to do with whether
the steps set forth in elements 1(a) through 1(g) must occur
“sequentially.” Genesis asks for a construction that “steps 1(a) to
1(g) do not need to be performed sequentially.” Ciner asks for a
construction that “steps 1(a) to 1(g) must be performed
sequentially.”
The essence of the dispute can be summed up as follows.
Genesis acknowledges that steps 1(a) through 1(c) and 1(e) through
1(g) must occur sequentially. For example, step 1(b) uses the output
of step 1(a), and step 1(c) uses the output of step 1(b). But Genesis
argues that steps 1(c) through 1(e) do not require order because the
first mother liquor from step 1(c) may be fed directly to the sodium
carbonate decahydrate crystallizer of step 1(e) without undergoing
the separation of step 1(d). To be clear, Genesis acknowledges that,
under the law, step 1(d) must be performed to infringe the claimed
process, but Genesis’s point is that the input to step 1(e) does not
need to come from step 1(d). Rather, the input to step 1(e) can come
from step 1(c).
Ciner says that the input to step 1(e) comes from step 1(d),
and, thus, steps 1(d) and 1(e) must be performed sequentially.
As an initial matter, in making this ruling, I am cognizant of
Genesis’s point that the claimed process occurs in a continuous loop
and that the claimed steps can be performed simultaneously. I am
fully aware of that concept, as illustrated, for example, in Figure 2,
which is a simplified version of a process flow diagram. The
question I am being asked to answer and the question I am
answering is the sequence of steps in the process flow.
In Interactive Gift and Altiris, the Federal Circuit set out a
two-part test for determining if the steps of a method claim that do
not otherwise recite an order must nonetheless be performed in the
order in which they are written. 2 The Federal Circuit instructs me
2

See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369–70 (Fed. Cir. 2003); Interactive
Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1342–43 (Fed Cir. 2001); see also Apple Inc.
v. Motorola, Inc., 757 F.3d 1286, 1309 (Fed. Cir. 2014), overruled on other grounds by Williamson
v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc).
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to first look at the claim language to determine if, as a matter of
grammar or logic, they must be performed in the order written. If
the logic and grammar of the claim language do not require an order,
then I turn to step 2, and I look to the rest of the specification to
determine whether it “directly or implicitly requires such a narrow
construction.” 3 If not, the sequence in which the steps are written is
not a requirement.
In my view, the language of the claims resolves this dispute
at the first step of the Altiris test. The output of step 1(c) is a slurry.
That step goes on to say what the slurry is comprised of, namely, a
mixture of sodium carbonate monohydrate crystals and a first
mother liquor. But the result of the step is a slurry. Step 1(d) starts
with that slurry and it “separat[es] the sodium carbonate
monohydrate crystals from the first mother liquor to form a first
mother liquor.” To repeat, the claim language says that a first
mother liquor is “form[ed]” in step 1(d). Step 1(e) says that a
portion of “the first mother liquor” gets fed into the sodium
carbonate decahydrate crystallization step. Since the claim itself
says that the first mother liquor is formed in step 1(d), I agree with
Ciner that the input to step 1(e) comes from step 1(d).
I recognize, of course, that the mother liquor and the mono
crystals are created as a result of a chemical reaction that takes place
in step 1(c), but the result of that reaction is a slurry that has more
than one component: the mono crystals and the mother liquor.
Those components are physically separated in step 1(d), resulting in
what the claim refers to as the formation of the first mother liquor,
i.e., mother liquor that is separated from the mono crystals. And I
conclude that it is the separated mother liquor from step 1(d) that is
referred to in step 1(e).
While this dispute can be resolved solely with reference to
the claim language, I also note that my conclusion is consistent with
the specification, which describes the creation of a slurry in the
monohydrate crystallizer that contains mono crystals and a first
mother liquor. The crystals are then physically separated from the
first mother liquor. The first mother liquor “separated from slurry”
may be fed to a decahydrate crystallizer. (See, e.g., ʼ497 Patent,
9:18-28, 9:42-58, 13:24-32.)
Genesis points to a sentence in the specification that
discloses recovering the first mother liquor directly from the sodium
3

Altiris, 318 F.3d at 1369.
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carbonate monohydrate crystallizer. (Id., 9:64-10:5.) The parties
dispute whether that portion of the specification refers to an
embodiment that informs the construction of Claim 1. Either way,
it does not change the fact that the claim states that the mother liquor
is formed in step 1(d).
If Genesis has some infringement argument under which
recovering mono mother liquor from the monohydrate crystallizer
involves separating the mother liquor from the crystals as described
in step 1(d)—and its argument today and Footnote 3 of the joint
claim construction brief suggest that it does—my ruling today does
not foreclose that argument. The argument hasn’t been briefed by
the parties as a claim construction issue and Ciner’s proposed
construction doesn’t necessarily foreclose it. No one has asked me
to construe the separating step of step 1(d). My ruling today is only
that the mother liquor input into step 1(e) has to come from step
1(d), and for that reason, I adopt Ciner’s construction.
Again, although I think this dispute is resolved on the claim
language, I note that my construction is not inconsistent with the
cited portions of the prosecution history. A previous version of the
claim referred to the input of step 1(e) as a “substantially crystalfree mother liquor. (D.I. 51, Ex. C at GENESIS00000539.) The
“substantially crystal-free” language was rejected as indefinite as to
what the metes and bounds were, and that language was
subsequently removed from the claim. While I give that portion of
the prosecution history no weight in reaching my conclusion, I note
that my conclusion is not inconsistent with the applicant having an
understanding that the mother liquor obtained as a result of
separating it from the crystals in step 1(d) was the mother liquor that
would be fed into step 1(e).
2.

“first mother liquor”

With that, I will jump forward to the last dispute in the briefs.
That dispute is over the phrase “first mother liquor” in element 1(e)
of Claim 1, and in Claims 8 and 9. Ciner argues that the phrase is
indefinite. Essentially, Ciner argues that if I side with Genesis on
the parties’ order-of-steps dispute, that means there are actually two
“first mother liquor[s]” described in the claim: one in step 1(c) and
one in step 1(d). And because step 1(e) refers to “the first mother
liquor,” a person of ordinary skill in the art would be unable to tell
which of the two first mother liquors is being referenced.

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At page 63, Footnote 11 of the joint claim construction brief,
Ciner states that if the Court adopts its construction on the order of
steps, the “first mother liquor” in step 1(e) would not be indefinite.
(D.I 71 at 63 n.11.) As I have resolved the parties’ order-of-steps
dispute in favor of Ciner, [the “first mother liquor” in element 1(e)
is not indefinite].
As to Claims 8 and 9, Ciner says in the same footnote that
the “first mother liquor” in Claims 8 and 9 is indefinite under any
construction. But Ciner does not explain why that would be the case
for Claims 8 and 9 but not step 1(e) except in a single sentence on
page 66 of the joint claim construction brief that says, “under any
construction, Claims 8 and 9 are invalid as indefinite because they
do not inform, with reasonable certainty, to which of those first
mother liquors ‘the first mother liquor’ in Claims 8 and 9 refer.” (Id.
at 66.)
It is Ciner’s burden to prove by clear and convincing
evidence that the disputed phrase is indefinite in Claims 8 and 9. On
this record, I find that Ciner has failed to meet its burden to show
that Claims 8 and 9 are indefinite. My ruling is without prejudice
for Ciner to renew its motion as to Claims 8 and 9 at the summary
judgment stage.
3.

“evaporation-stripping step”

The next phrase is “evaporation-stripping step.” There is a
hyphen between the words “evaporation” and “stripping.” Genesis
construes the phrase as “a step including evaporation and/or
stripping.” Ciner construes the phrase as “a step including an
evaporator and a stripper.” According to Genesis, there are two
disputes here: (1) does the hyphen mean “and” or “and/or”?; and (2)
does the claim require evaporator and stripper apparatuses or just
the functions of evaporation and/or stripping? After reading the
briefs and hearing the arguments today, I agree with Genesis’s
characterization of the parties’ disputes over this term.
First, let’s look at the claim itself. Step 1(a) in its entirety
requires
a. feeding the recovered mine brine to an
evaporation-stripping step to concentrate
sodium content in the mine brine and to convert
at least a portion of sodium bicarbonate therein
to sodium carbonate to form a concentrated
brine[.]
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(ʼ497 Patent, Claim 1.) It is clear to me, and the parties do not
dispute, that step 1(a) requires two results: (1) concentrating sodium
content in the mine brine; and (2) converting at least a portion of
sodium bicarbonate to sodium carbonate. It is not clear, looking
solely at the claim language, whether both of those results can be
achieved by evaporation alone or stripping alone or whether they
require an evaporator apparatus and a stripping apparatus.
Genesis’s interpretation that the hyphen means “and/or” is
not unreasonable. Indeed, the claim refers to step 1(a) as a single
step. On the other hand, as Ciner points out, the patentee could have
said “and/or” if he meant “and/or.”
Both sides make claim differentiation arguments based on
Claim 6, but reference to dependent Claim 6 does not provide much
help. Claim 6 refers to “[t]he process of Claim 1, wherein the
evaporation-stripping step comprises a first stripping step to
decompose sodium bicarbonate to carbon dioxide and sodium
carbonate followed by an evaporation step to evaporate water to
concentrate the sodium values in the concentrated brine . . . .”
Genesis says Claim 6 supports its interpretation that Claim 1
requires evaporating and/or stripping because Claim 6 is further
limiting in that it requires both. While Ciner says Claim 6 supports
its interpretation that Claim 1 requires both evaporating and
stripping because Claim 6 is further limiting in that it specifies the
order of operations. As both are reasonable interpretations, I don’t
think reference to Claim 6 provides much help.
Turning to the specification, Genesis points to column 2,
lines 52 to 59, which states:
The invention, more specifically, provides a process
for optimizing sodium carbonate monohydrate
recovery from a mine brine containing significant
quantities of sodium bicarbonate and minimal
impurities by evaporating and/or stripping such a
mine brine to concentrate sodium values in the mine
brine and convert at least a portion of the remaining
sodium bicarbonate therein to sodium carbonate to
form a concentrated brine.
(ʼ497 Patent, 2:52-59.)
That portion of the specification
contemplates that the term “evaporation-stripping step” might refer
to a step that uses evaporation “and/or” stripping to accomplish the
claimed results.
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Genesis also points to column 6, lines 23 to 36, where it
states that a stripper is “optional, although generally preferred,” and
that “[a] combined concentrator-stripper may be utilized.” (Id.,
6:23-36.) Those portions of the specification suggest that the
evaporation-stripping step should not be construed to require both
an evaporator apparatus and a stripping apparatus, as argued by
Ciner and, for that reason, I reject Ciner’s construction.
Although a closer call, I also side with Genesis to the extent
that Ciner is arguing that the phrase requires both evaporating and
stripping. Genesis points to portions of the specification that
support its position that the processes of evaporation and stripping
are each independently capable of accomplishing the claimed
results, which are concentrating sodium content in the mine brine
(see, e.g., id., 6:55-60, 5:59-67), and converting at least a portion of
sodium bicarbonate in the mine brine to sodium carbonate (see, e.g.,
id., 6:55-57, 3:60-66, 6:1-14).
For example, Genesis points to column 5, lines 59 to 67,
which refers to a technique called flashing that can result in the
evaporation of water, thus increasing the concentration of sodium
carbonate in the brine. (Id., 5:59-67.) Genesis argues that
evaporation can happen in a stripper alone via flashing. The cited
passage refers to the evaporation of water and release of carbon
dioxide gas as “stream 111,” which, in Figure 1, is shown coming
out of the box labeled “stripping column.” 4
Accordingly, I will construe “evaporation-stripping step” as
“a step including evaporation and/or stripping.”
4.

“the concentrated brine” and “the crystallizable
solution”

That brings me to the last two terms: “the concentrated
brine” in step 1(b) and “the crystallizable solution” in step 1(c).
Genesis requests that I construe “the concentrated brine” in step 1(b)
to have its plain and ordinary meaning or, if construction is
necessary, to mean “concentrated brine produced in step 1(a).”

4

Ciner points out that Figure 2 illustrates the claimed embodiment, not Figure 1. But the
specification states the following about the relationship between Figures 1 and 2: “In comparing
FIG. 1 and FIG. 2, it is seen that process 100 and process 200 are identical through the brine
neutralization step. The numbering of the steps and streams are equivalent in FIG. 1 and FIG.
2 . . . .” (ʼ497 Patent, 12:65-13:3.)
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Ciner requests that I construe the phrase as “all of the concentrated
brine produced in step 1(a).”
Genesis requests that I construe “the crystallizable solution”
in step 1(c) to have its plain and ordinary meaning or, if construction
is necessary, to mean “crystallizable solution produced in step 1(b).”
Ciner requests that I construe the phrase as “all of the crystallizable
solution produced in step 1(b).”
The gist of the dispute is that, under Genesis’s constructions,
a portion of the outputs from steps 1(a) and 1(b) can be diverted
from the claimed process and purged or used for other things. Under
Ciner’s constructions, all of the outputs from steps 1(a) and 1(b) go
to steps 1(b) and 1(c), respectively. In support of its argument, Ciner
points out that, in step 1(e), only “at least a portion of” the first
mother liquor formed in step 1(d) is fed to the deca crystallizer.
According to Ciner, the patentee’s use of the “at least a portion of”
language in step 1(e), and the absence of such language in steps 1(b)
and 1(c), mean that the Court should construe the claims to require
that all of the outputs from steps 1(a) and 1(b) must be fed to steps
1(b) and 1(c), respectively.
Citing the Federal Circuit’s Enzo Biochem and Core
Wireless decisions, 5 Ciner argues that the patentee knew how to
craft language that would permit diverting portions of streams (as in
the first mother liquor fed into step 1(e)) and that its choice not to
use that language implies an intent not to permit the disputed
concentrated brine and crystallizable solution streams to be partially
diverted.
Genesis argues that Ciner’s reliance on Enzo Biochem and
Core Wireless is misplaced because those cases dealt with the
patentee’s use of narrowing language in other parts of the claims,
and the patentee’s choice not to use narrowing language with respect
to a disputed term implied a broader construction of that term. This
case is different, says Genesis, because Ciner wants a narrow
construction of the disputed terms. It wants to require that all of the
outputs from steps 1(a) and 1(b) go to steps 1(b) and 1(c). Genesis
says that Ciner’s argument is backwards because Ciner essentially
is arguing that because the patentee knew how to use a broader term,
as in step 1(e), the Court should adopt a narrower construction in
steps 1(b) and 1(c).
5

See Core Wireless Licensing S.A.R.L. v. L.G. Elecs., Inc., 880 F.3d 1356, 1366 (Fed. Cir.
2018); Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1333 (Fed. Cir. 2010).
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Genesis also points out that the specification shows multiple
examples of diverting portions of streams. Indeed, the specification
states that the disputed concentrated brine stream can be partially
diverted to other processes. (See, e.g., ʼ497 Patent, 7:50-59.)
I side with Genesis. Nothing in the claim requires all of the
outputs of step 1(a) and 1(b) to be fed to 1(b) and 1(c). Moreover,
the portion of the specification I just cited is consistent with
Genesis’s contention that the concentrated brine stream can be used
for other processes. 6
Ciner’s argument that the “at least a portion of” language in
step 1(e) informs the disputed constructions certainly has some
appeal. Where a claim uses language to describe a given term but
doesn’t use the same language in another term, the choice may
suggest an understanding of the patentee, and that logic applies
regardless of whether the language used in other parts of the claim
is broadening or narrowing language. But I don’t think it wins the
day here for the reasons I already discussed. And while not
dispositive, there are two other reasons why I think Genesis’s
construction is better.
First, this is a process claim that uses the word “comprising.”
Ciner’s proposed constructions essentially seek to turn this claim
into a “consisting essentially of” claim. Ciner is basically arguing
that even if it performs the claimed steps of the process, it can escape
infringement if it performs other steps in addition to those steps.
That is not the law.
Second, read in view of the rest of the specification, the
“feeding at least a portion of the first mother liquor” language in
step 1(e) might be understood to refer to what I see as one of the
improvements specific to Claim 1 and Figure 2, that is, instead of
taking the first mother liquor stream and either sending it back to the
mono feed prep or purging it, as shown in Figure 1, step 1(e) requires
that at least some of the first mother liquor stream be fed to the deca
crystallization step, as described, for example, at column 9, lines 42
to 61, and as shown in Figure 2 as line 263. The “at least a portion
of” language in step 1(e) is consistent with the specification’s
description of a particular embodiment where a portion of the mono
mother liquor is diverted to the deca crystallizer instead of put to the
other uses described in the specification. When step 1(e) is read in
6

As to Ciner’s argument that the cited portion of the specification refers to an unclaimed
embodiment, see note 4, supra.
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light of the specification, I can’t conclude that its reference to
feeding “at least a portion of” the first mother liquor outputted from
step 1(d) would suggest to a person of ordinary skill in the art that
the entire output of steps 1(a) and 1(b) must be fed to steps 1(b) and
1(c), respectively.
Finally, just to complete the record, I recognize that Claim 1
uses the “at least a portion of” language in two other places, in step
1(a) and in step 1(b), but I don’t find that particularly informative
here. Steps 1(a) and 1(b) use that phrase in the context of chemical
yield. I find that it would not inform a person of ordinary skill in
the art one way or the other about the question in dispute here, which
is whether the outputs of steps 1(a) and 1(b) must all be fed to steps
1(b) and 1(c). And that concludes my report and recommendation.
This Report and Recommendation is filed pursuant to 28 U.S.C. § 636(b)(1)(B), (C),
Federal Rule of Civil Procedure 72(b)(1), and District of Delaware Local Rule 72.1. Any
objections to the Report and Recommendation shall be filed within fourteen days and limited to
ten pages. Any response shall be filed within fourteen days thereafter and limited to ten pages.
The failure of a party to object to legal conclusions may result in the loss of the right to de novo
review in the district court.
The parties are directed to the Court’s “Standing Order for Objections Filed Under Fed. R.
Civ. P. 72,” dated October 9, 2013, a copy of which can be found on the Court’s website.

Dated: October 14, 2020

___________________________________
The Honorable Jennifer L. Hall
United States Magistrate Judge

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