Uretek Holdings, Inc. et al v. YD West Coast Homes, Inc. et al
Filing
64
ORDER on 47 48 Claim Construction. Signed by Judge Charlene Edwards Honeywell on 5/26/2016. (AHH)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
URETEK HOLDINGS, INC., URETEK
USA, INC. and BENEFIL WORLDWIDE
OY,
Plaintiffs,
v.
Case No: 8:15-cv-472-T-36JSS
YD WEST COAST HOMES, INC.,
GEOPOLYMER SINKHOLE
SPECIALIST, INC., YAMIL
DOMINIGUEZ and JOHN DOES 1-5,
Defendants.
___________________________________/
ORDER
This cause comes before the Court upon the claim construction briefs submitted by
Plaintiffs/Counter-Defendants Uretek Holdings, Inc., Uretek USA, Inc., and Benefil Worldwide
Oy (collectively, “Plaintiffs”), and Defendants/Counter-Plaintiffs YD West Coast Homes, Inc.,
Geopolymer Sinkhole Specialist, Inc., and Yamil Dominguiez d/b/a YD West Coast Homes and
d/b/a Geopolymer Sinkhole Specialist Inc. (collectively, “Defendants”) (Docs. 47, 48). Each party
responded in opposition to the other’s opening brief (Docs. 52, 50). On April 21, 2016, the Court
held a claim construction hearing. See Doc. 59; see also Doc. 61 (“Tr.”). Having reviewed the
parties’ submissions and heard the arguments of counsel, and being fully advised in the premises,
the Court now construes the disputed claim terms as set forth herein.
I.
BACKGROUND
This case concerns, inter alia, the alleged infringement of United States Patent No.
6,634,831 (the “’831 Patent”). The ‘831 Patent is entitled “Method for Increasing the Bearing
Capacity of Foundation Soils for Built Structures,” and teaches a technique for increasing the
bearing capacity of foundation soils by injecting expandable substances into foundation soils to
compact the contiguous soil. See ‘831 Patent at Abstract.
Claim 1 is representative and recites as follows:
1. A method for increasing the bearing capacity of foundation soils
for built a structures comprising:
providing a plurality of holes spaced from each other, under the
foundation of a built structure, deep in the foundation soil;
injecting into the foundation soil, through said holes, a substance
which expands as a consequence of a chemical reaction;
producing compaction of the foundation soil contiguous to the
injection zone due to the expansion of said substance
injected into the soil;
constantly monitoring level variations of the soil and/or built
structures overlying the injection zone to detect the moment
when the built structures and/or the solid surface, overlying
the injection zone, begins to raise which is the moment in
which the compaction of the foundation soil has reached
levels generally higher than a required minimum value at
which the soil lying below and around said injection zone
withstands and rejects dynamic and static weights exerted
thereon by said built structures and by overlying and
adjacent soil masses, and
wherein the expansion of the injected substance is very fast with a
potential increase in volume of the expanded substance
being at least five times the volume of the substance before
expansion.
See Doc. 1, Exh. A.
Plaintiffs allege that Defendants infringed claims 1, 2, 4, 15, 20, 21, and 22 of the ‘831
Patent. See Doc. 47 at 6. The parties now dispute the scope and meaning of four claim terms:
“deep,” “very fast,” “foundation soil,” and “immediate.”
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II.
LEGAL STANDARD
Claim construction is an issue of law reserved for the district court. See Markman v.
Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), affirmed, 517 U.S.
370 (1996). To ascertain the meaning of claims, the district court uses three primary sources
constituting the intrinsic record: (1) the claims, (2) the specification, and (3) the prosecution
history. Id. at 979.
Claim construction begins with the language of the claims. Phillips v. AWH Corp., 415
F.3d 1303, 1312 (Fed. Cir. 2005); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996) (“[w]e look to the words of the claims themselves . . . to define the scope of the patented
invention.”). “It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the
invention to which the patentee is entitled the right to exclude.’” Phillips, 415 F.3d at 1312
(quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed.
Cir. 2004)); see also Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257
(Fed. Cir. 1989) (“A claim in a patent provides the metes and bounds of the right which the patent
confers on the patentee to exclude others from making, using, or selling the protected invention.”).
The words of a claim generally are given the ordinary and customary meaning they have to persons
of ordinary skill in the art in question at the time of the invention. Phillips, 415 F.3d at 1312-13;
Vitronics, 90 F.3d at 1582. Moreover, claim terms are presumed to be used consistently throughout
the patent, such that the usage of a term in one claim can often illuminate the meaning of the same
term in other claims. Phillips, 415 F.3d at 1314-15; Vitronics, 90 F.3d at 1582.
While the language of the claims is the first source for interpretation, “[t]he claims, of
course, do not stand alone.” Phillips, 415 F.3d at 1315. Rather, they are part of a fully integrated
written instrument that includes a specification.
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Id. (citing Markman, 52 F.3d at 978).
Accordingly, “claims ‘must be read in view of the specification, of which they are a part.’” Id.
(quoting Markman, 52 F.3d at 979).
The prosecution history is another component of the intrinsic evidence used to supply the
proper context for claim construction. Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352,
1356 (Fed. Cir. 2004). The prosecution history is comprised of the complete record of the
proceedings before the United States Patent and Trademark Office (“PTO”), including prior art
cited during examination. Phillips, 415 F.3d at 1317; Vitronics, 90 F.3d at 1582-83; Markman, 52
F.3d at 980. It also includes communications between the examiner and the applicant that may
reveal if the applicant limited the invention in the course of prosecution, with the effect of making
the claim scope narrower than it would otherwise be. Phillips, 415 F.3d at 1317. The history can
indicate the inventor’s understanding of 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.
In addition to intrinsic evidence, courts may also rely on extrinsic evidence, which
“consists of all evidence external to the patent and prosecution history.” Markman, 52 F.3d at 980.
Such evidence typically includes dictionaries, treatises, and testimony of the inventor or experts.
Id. at 980. Extrinsic evidence, however, is “less significant than the intrinsic record in determining
the legally operative meaning of claim language,” and is appropriate only when the available
intrinsic evidence is not dispositive. Phillips, 415 F.3d at 1317, 1319.
III.
DISCUSSION
At the outset, the Court notes that the ‘831 Patent has been litigated through the claim
construction phase in two other instances. See Uretek USA, Inc. v. Applied Polymerics, Inc., Case
No. 3:11-cv-542 (E.D. Va.) (“Applied Polymerics”); Uretek Holdings, Inc. v. Hayward Baker, Inc.,
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Case No. 8:13-cv-430 (M.D. Fla.) (“Hayward Baker”). In Applied Polymerics, the court construed
two terms at issue here: “deep” and “foundation soil.” See Applied Polymerics, Doc. 56. In
Hayward Baker, a court in this district also construed two terms at issue here: “deep” and “very
fast.” See Hayward Baker, Doc. 52. Subsequent to the issuance of the claim construction orders
in those cases, however, the Supreme Court issued its opinion in Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S. Ct. 2120 (2014) (“Nautilus”), which announced a new standard for
evaluating the definiteness requirement of 35 U.S.C. § 112. Therefore, while the Court recognizes
the importance of uniformity in the treatment of a given patent and will afford due deference to
the constructions given by the other courts, it will also consider the parties’ positions with fresh
eyes to the extent the parties have raised new arguments concerning the construction and scope of
the previously construed terms.
A.
Terms challenged as indefinite
Defendants challenge two terms—“deep” and “very fast”—as indefinite. For the reasons
stated below, however, the Court at this stage will consider Defendants’ indefiniteness challenges
only to the extent necessary to determine whether the challenged terms are amenable to any
proposed construction.
1.
Indefiniteness standard
A patent must “conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the inventor or a joint inventor regards as the invention.” 35
U.S.C. § 112(b). A claim is invalid for indefiniteness if its language, viewed in light of the
specification and prosecution history, “fail[s] to inform, with reasonable certainty, those skilled in
the art about the scope of the invention.” Nautilus, 134 S. Ct. at 2124. A patent is presumed to be
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valid, see 35 U.S.C. § 282(a), so an invalidity defense must be proved by clear and convincing
evidence, see Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95 (2011).
Although “general principles of claim construction” apply in the face of an allegation of
indefiniteness, Biosig Instr., Inc. v. Nautilus, Inc., 783 F.3d 1374, 1377 (Fed. Cir. 2015) (quotation
marks and citation omitted), “[s]everal well-settled principles [] tend to discourage rulings on
indefiniteness at the Markman stage,” CSB-System Int’l, Inc. v. SAP America, Inc., Case No. 10cv-2156, 2011 WL 3240838, at *17 (E.D. Pa. July 28, 2011). First, the burden of proof is higher
for establishing indefiniteness than it is for establishing a term’s construction. Second, the legal
standard for evaluating indefiniteness is different from that for determining a term’s construction.
These differences arise from the fact that “unlike a Markman proceeding that gives meaning to
patent claims, indefiniteness invalidates the claims entirely.” Id. at *18. Indeed, perhaps in
recognition of these fundamental differences, the Federal Circuit has made clear that “[it has]
certainly not endorsed a regime in which validity analysis is a regular component of claim
construction.” Phillips, 415 F.3d at 1327.
In light of these considerations, numerous courts around the country, including courts in
this district, have declined to make invalidity determinations at the claim construction stage. See,
e.g., Johnson & Johnson Vision Care, Inc. v. Ciba Vision Corp., 540 F. Supp. 2d 1233, 1243 (M.D.
Fla. 2008) (“The Court must first attempt to determine what the claim means before it can
determine whether it is invalid for indefiniteness. . . . The issue of indefiniteness is not properly
before the Court when construing claims.”); Intergraph Hardware Techs. Co. v. Toshiba Corp.,
508 F. Supp. 2d 752, 773 n.3 (N.D. Cal. 2007) (“[The] indefiniteness argument is inappropriate at
the claim construction stage.”); Pharmastem Therapeutics, Inc. v. Viacell, Inc., Case No. 02-cv148, 2003 WL 124149, at *1 n.1 (D. Del. Jan. 13, 2003) (deferring ruling on the defendants’
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indefiniteness defense at the claim construction stage because “it is clear that the court must first
attempt to determine what a claim means before it can determine whether the claim is invalid for
indefiniteness.”); CSB-System Int’l, 2011 WL 3240838, at *18.
The Court agrees with those courts that have declined to rule on indefiniteness at the
Markman stage, and finds that it would be more appropriate and logical to defer the full
consideration of any potential indefiniteness challenge to the summary judgment stage, after all
fact and expert discovery has been completed. Therefore, for purposes of this order, the Court will
consider Defendants’ indefiniteness arguments “to determine only whether such claims are
amenable to construction and, if so, what construction is appropriate for the claimed ambiguous
terms in light of the present intrinsic and extrinsic evidence provided,” CSB-System Int’l, 2011
WL 3240838, at *18; see also Vapor Point LLC v. Moorhead, Case No. 11-cv-4639, 2013 WL
11275459, at *16 (S.D. Tex. Dec. 18, 2013). Any construction given by the Court shall be without
prejudice to Defendants’ ability to challenge the validity of the claims for indefiniteness at the
summary judgment stage. Accord CSB-System Int’l, 2011 WL 3240838, at *18.
2.
“deep”
The term “deep” is used in the ‘831 Patent to describe the depth of the holes through which
the expandable substance is injected. See, e.g., ‘831 Patent, Claim 1 (“providing a plurality of
holes spaced from each other, under the foundation of a built structure, deep in the foundation
soil”) (emphasis added). Plaintiffs argue that the term “deep” means “at sufficient depth within
the foundation soil and away from the immediate vicinity of the foundation so as to affect the
foundation soil,” whereas Defendants argue only that the term is indefinite.
The Court will adopt Plaintiffs’ proposed construction, because the term “deep” is
amenable to construction and Plaintiffs’ proposed construction is supported by the intrinsic
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evidence. First, the claim language makes clear that the hole is at some depth “in the foundation
soil.” ‘831 Patent, Claim 1. Second, as noted in the prosecution history, “injection[s] are provided
in depth so as to affect the foundation soil . . . .” Doc. 47-7 at 9. Because the injections are made
through the holes, the holes therefore must also be at a depth “so as to affect the foundation soil. “
Finally, in the January 21, 2002 Amendment, the inventor distinguished the invention claimed in
the ‘831 Patent from certain prior art on the basis that the prior art did not “hint[] whatsoever to an
in-depth extension, away from the immediate vicinity of the foundation in the foundation soil, of
the injection area.” Id. (emphasis added); see also Doc. 47-8 at 3 (distinguishing the ‘831 Patent
from prior art because the prior art “always teaches injection points located immediately under,
i.e. at the ‘bottom’ of the foundations”). The inventor’s position regarding the novelty of the
invention thus requires that the depth of the holes, which define the injection area, also be “away
from the immediate vicinity of the foundation.”
Defendants appear to argue (aside from the issue of indefiniteness) that Plaintiffs’ proposed
construction is incorrect because, according to Defendants, the inventor defined “deep” to be “at
least twice as deep as that of the (bottom of the) foundation,” and therefore disclaimed a scope
encompassing “sufficient depth to affect the foundation soil.” See Doc. 48 at 23-24. Defendants’
argument is unpersuasive. Although the inventor did use the specific phrase “at least twice as deep
as that of the (bottom of the) foundation” in the January 21, 2002 Amendment to describe the depth
of the holes, that phrase, when read in context, was used to describe one specific embodiment of
the claimed invention. See Doc. 47-8 at 3 (“Thus the injection depth claimed is ‘variable’, but
within the range given by at least the extension depth of the pressure bulb, as documented by
figures 5-6 of the application, where it is clearly shown as the injections/consolidation goes further
than the bottom of the foundation, for a distance being at least twice as deep as that of the (bottom
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of the) foundation.”) (emphasis added). Indeed, in the next paragraph, the inventor proceeded to
note that “deep into the foundation soil” includes depths “all through the pressure bulb covered
mass.” Id. It is thus clear that the inventor’s statement was not intended to limit the invention to
using holes that were at least twice as deep as that of the bottom of the foundation. Moreover,
even if the inventor had somehow defined “deep” to be “at least twice as deep as that of the (bottom
of the) foundation,” it does not logically follow that by doing so, he thereby disclaimed a scope
encompassing “sufficient depth to affect the foundation soil.” Rather, as noted above, it is
eminently clear that the holes must be at a depth “so as to affect the foundation soil.” Doc. 47-7
at 9.
For the reasons stated above, the Court will construe “deep” as “at sufficient depth within
the foundation soil and away from the immediate vicinity of the foundation so as to affect the
foundation soil.” Accord Hayward Baker at 8. 1
3.
“very fast”
The term “very fast” is used in the ‘831 Patent to describe the expansion of the injected
substance. See, e.g., ‘831 Patent, Claim 1 (“wherein the expansion of the injected substance is
very fast”) (emphasis added). Plaintiffs argue that the term “very fast” means “fast enough to limit
migration of injected material from the targeted foundation soil,” whereas Defendants argue only
that the term is indefinite.
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The Court recognizes that its construction is different from the one given this term by the court
in Applied Polymerics. The Court’s departure is explained by two additional reasons separate
from the discussion above. First, neither of the parties argued that this term should be given the
same construction it was given in Applied Polymerics. Second, the Court gives little weight to
the claim constructions given in Applied Polymerics, because the order fails to discuss or explain
in any way the construction given to each term and this Court has no knowledge as to the bases
for the constructions.
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The Court will adopt Plaintiffs’ proposed construction, because the term “very fast” is
amenable to construction and Plaintiffs’ proposed construction is supported by the intrinsic
evidence. First, Plaintiffs’ proposed construction is supported by the specification, which notes
that the expansion of the injected substance “prevents its migration to faraway areas,” ‘831 Patent
at 4:13-15, and that this expansion is “very fast,” id. at 5:1-4. These statements make clear that
the “very fast” nature of the expansion serves to prevent the migration of the injected substance
from the targeted area. Second, Plaintiffs’ proposed construction is supported by the claim
language, which teaches that the “expansion of said substance injected into the soil” serves to
“produc[e] compaction of the foundation soil contiguous to the injection zone,” and that “the
expansion of the injected substance is very fast.” ‘831 Patent, Claim 1. The claim language thus
requires that the “very fast” expansion must be fast enough to limit migration of the injected
material from the targeted foundation soil, because otherwise the expansion would fail to serve its
purpose of compacting the foundation soil contiguous to the injection zone.
The Court, therefore, will construe “very fast” as “fast enough to limit migration of injected
material from the targeted foundation soil.” Accord Hayward Baker at 13.
B.
Other disputed terms
1.
“foundation soil”
Plaintiffs argue that the term “foundation soil” means “the part of the soil mass affected by
the dynamic and static weights of the overlying structure.” Defendants’ proposed construction is
largely identical, but includes an additional clause—“the part of the soil mass, as contoured by the
pressure bulb, which is affected by the dynamic and static weights of the overlying structure.”
(emphasis added).
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After careful consideration, the Court agrees with Plaintiffs’ proposed construction. As
defined in the specification, “[t]he term ‘foundation soil’ is intended to designate that part of the
soil having influence on the overlying built structure or that the direct or indirect influence of the
built structure.” ‘831 Patent at 2:8-12. Further, as the claim language indicates, the foundation
soil is “that part of soil having to withstand dynamic and static weights exerted by a built structure
. . . .” ‘831 Patent, Claim 22; see also ‘831 Patent, Claims 1, 20. Finally, as noted in the February
22, 2001 Amendment, “[t]he general knowledge in the technical pertinent field . . . teaches that
the ‘foundation soil’ is that mass of soil affected by pressures, generated by static and dynamic
weights exerted by any built structure . . . .’” Doc. 47-6 at 7.
In support of their proposed construction, Defendants point to the remainder of the sentence
in the February 22, 2001 Amendment discussing the definition of “foundation soil,” which ends
by noting that the pressures affecting the soil act “according to curves of equal pressure having the
shape of a bulb called the ‘bulb of pressure.’” Id. This language, however, fails to support
Defendants’ suggestion that the “bulb of pressure” is a separate defining feature of the soil mass
comprising the foundation soil; rather, it is clear that the “bulb of pressure” is used as a descriptor
of the shape of the equal pressure curves generated by the static and dynamic weights exerted by
the built structure. Because the fact that the foundation soil is contoured by the pressure bulb is
already implicit in Plaintiffs’ proposed construction, the Court finds the additional language
proposed by Defendant—“as contoured by the pressure bulb”—to be redundant.
At bottom, it appears that the parties’ proposed constructions are the same in substance.
Defendants’ proposed construction, however, needlessly complicates the definition of “foundation
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soil” by using additional words without increasing clarity. The Court, therefore, will adopt
Plaintiffs’ proposed construction. 2
2.
“immediate”
Plaintiffs argue that the term “immediate” should be given its plain and ordinary meaning,
while Defendants argue that the term means “the onset of the chemical reaction starting without
delay.” Notably, as the parties acknowledge, this term does not appear in any of the asserted
claims.
Defendants state that they seek a construction of this term to support their claim
differentiation argument for the term “very fast.” See Tr. at 17-19. However, while it would be
entirely appropriate for Defendants to make a claim differentiation argument based on their
interpretation of the scope of Claim 7, a separate, explicit construction of the terms in Claim 7 is
not necessary for Defendants to make that argument. Accordingly, as stated during the claim
construction hearing, the Court will not construe the term “immediate.” See Tr. at 22; NTP, Inc.
v. Research In Motion, Ltd., 418 F.3d 1282, 1311 (Fed. Cir. 2005) (“Terms not used in claims in
controversy . . . need not be construed.”), abrogated on other grounds, see Zoltek Corp. v. United
States, 672 F.3d 1309, 1323 (Fed. Cir. 2012).
IV.
CONCLUSION
As stated in Section III.B.2, supra, the Court declines to construe the disputed claim term
“immediate.” The remaining disputed claim terms are hereby CONSTRUED as follows:
1.
“deep” means “at sufficient depth within the foundation soil and away from the
immediate vicinity of the foundation so as to affect the foundation soil”;
2
As with the term “deep,” the Court’s construction for the term “foundation soil” is different
from the one given by the court in Applied Polymerics. The Court’s departure is explained by
the same two reasons: neither of the parties argued that this term should be given the same
construction it was given in Applied Polymerics, and the Court affords little weight to the claim
construction order in Applied Polymerics. See fn.1, supra.
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2.
“very fast” means “fast enough to limit migration of injected material from the
targeted foundation soil”; and
3.
“foundation soil” means “the part of the soil mass affected by the dynamic and
static weights of the overlying structure.”
DONE AND ORDERED in Tampa, Florida on May 26, 2016.
Copies to:
Counsel of Record and Unrepresented Parties, if any
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